Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 1 of 13 PageID #: 1187
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`CHARTER COMMUNICATIONS, INC., et
`al.,
`
`
`Defendants.
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`COMCAST CABLE COMMUNICATIONS,
`LLC, D/B/A XFINITY, et al.,
`
`
`Defendants.
`
`Lead Case No. 2:23-cv-00059-JRG
`Member Case No. 2:23-cv-00062-JRG
`
`
`JURY TRIAL DEMANDED
`
`
`TOUCHSTREAM TECHNOLOGIES, INC.’S REPLY IN SUPPORT OF
`ITS OPENING CLAIM CONSTRUCTION BRIEF
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`
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`
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`
`
`i
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`

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`Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 2 of 13 PageID #: 1188
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`DISPUTED CLAIM TERMS
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`I.
`
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`A.
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`Terms Common to Multiple Patents
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`1. “media player” (’251 Patent claims 1, 2) / “media player application”
`(’751 Patent claims 12, 13, 14, 16) / “media playing application (’934
`Patent claims 17, 18, 19)
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`
`
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`
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`Touchstream’s Proposal
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`Defendants’ Proposal
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`No construction necessary. Plain and ordinary
`meaning.
`
`“application software for playing back video
`content.” (’251 Patent)
`“application software for playing back
`content” (’751 and ’934 Patents)
`
` The terms “media player,” “media player application,” and “media playing application”
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`are not technical jargon—they are common terms. Contrary to Defendants’ arguments, the plain
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`and ordinary meaning of a “media player application” is easily understood: a “media player” is
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`simply software for playing media. And there can be no doubt that the jury will be familiar with
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`this common term and its meaning. For example, the most popular operating system in the world,
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`Microsoft Windows, named its software application for playing media “Windows Media Player.”
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`While Defendants tout Touchstream’s description of a “media player” during prosecution, the
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`prosecution description of “media player” is coextensive with the plain and ordinary meaning of
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`this term. As such, the prosecution history does not give rise to an actual claim scope dispute or
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`require instructing the jury with a judicial claim construction.
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`
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`As discussed in Touchstream’s opening brief, a juror will understand what is or is not a
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`“media player.” ECF 36 at 3. On this point, Defendants strain to justify their construction by citing
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`antiquated devices such as a VCR. But it borders on absurd to think the jury might confuse using
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`a “media playing application” to cast digital content onto a TV with playing VHS tapes on a VCR.
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`1
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`

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`Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 3 of 13 PageID #: 1189
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`Defendants’ proposed constructions are unnecessary and would serve only to confuse
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`rather than clarify. The jury is well equipped to understand the “media player” terms, and no
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`alternative definitions are necessary.
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`2. “a synchronization code” / “the synchronization code” (’251 Patent
`claims 1, 8, 9, and ’751 Patent claim 12)
`
`
`
`
`
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`Touchstream’s Proposal
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`Defendants’ Proposal
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`No construction necessary. Plain and ordinary
`meaning.
`
`“Must be the same ‘synchronization code’
`throughout the claim.”
`
`Defendants’ brief makes clear that their proposed construction is a non-infringement
`
`argument masquerading as a claim construction dispute. Defendants read a non-infringement
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`position into the claims for the express purpose of challenging the imagined testimony of
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`Touchstream’s expert witness. See ECF 40 at 9. The jury, however, does not need the Court’s aid
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`to understand that “a synchronization code” and “the synchronization code” refer to the same code.
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`
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`Nor do Defendants provide any rationale for construing this term. Claim construction “is
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`a matter of resolution of disputed meanings and technical scope….” O2 Micro Intern. Ltd. v.
`
`Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1362 (Fed. Cir. 2008). Defendants do not
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`address any dispute regarding claim scope or meaning. And Defendants offer no authority
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`supporting their contention that imagined future testimony is a basis for entering a construction.
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`Because the jury will not benefit from a construction of this term and Defendants’ proposal does
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`not resolve any actual dispute as to claim scope, a plain and ordinary construction is appropriate.
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`3. “synchronization code” (’251 Patent claims 1, 8, 9, and ’751 Patent
`claim 12)
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`
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`Touchstream’s Proposal
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`Defendants’ Proposal
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`No construction necessary. Plain and ordinary
`meaning.
`
`“a code which can be obtained by a user from
`the [display device / content presentation
`device] and provided by the user to the
`
`2
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`

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`Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 4 of 13 PageID #: 1190
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`[personal computing device / remote
`computing device]”
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`
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`Defendants argue that “synchronization code” has no plain and ordinary meaning in the
`
`art. Yet the ordinary meaning of “synchronization code” is simple—a code used in synchronizing.
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`Tellingly, Defendants do not propose to construe “synchronization code” at all, but rather seek to
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`insert unclaimed limitations regarding how a synchronization code may be communicated between
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`a display/content presentation device and a personal/remote computing device. Defendants miss
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`the mark. The ’251 and ’751 Patents do not require a user to “obtain” or “provide” the
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`synchronization code, and Defendants’ arguments improperly import limitations into the claims.
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`
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`First, Defendants sidestep the actual claim language. As discussed in Touchstream’s
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`opening brief, Claim 1 of the ’251 Patent and Claim 12 of the ’751 Patent set forth requirements
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`for the “synchronization code,” including the elements involved in “assigning,” “receiving,” and
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`“obtaining” it. See ECF 36 at 6. Notably absent from the claims is any suggestion that a “user”
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`obtain the synchronization code—or that a “user” do anything at all. Id. at 6-7. Defendants’ attempt
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`to insert a “user” is an improper attempt to concoct a joint infringement defense that is absent from
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`the claims as-written. Defendants do not even attempt to confront the dichotomy between their
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`proposed construction and the express language of the claims. See ECF 40 at 10-13.
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`
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`Second, Defendants misread the specification. Defendants argue that a user must enter the
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`synchronization code into the personal computing device. See ECF 40 at 11. But, the patents
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`disclose that a user can select a display device by entering a synchronization code, not that the user
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`must do so. ’251 Patent 5:14-16. As discussed in Touchstream’s opening brief, the specification
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`recites several embodiments where a user neither obtains nor provides the synchronization code.
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`ECF 36 at 7-8. Defendants attempt to diminish these embodiments, but in so doing they prove the
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`inaccuracy of their proposed construction and their reading of the specification.
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`3
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`Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 5 of 13 PageID #: 1191
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`
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`For example, when discussing an embodiment wherein the synchronization code is
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`represented by a QR code, Defendants state, “obviously, the user must aim the device’s camera at
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`the display in order to capture the image.”1 ECF 40 at 13. But even if a user aims a device’s camera,
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`the user does not “obtain” or “provide” the synchronization code. Rather, the device obtains the
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`synchronization code via interpreting the QR image it captures. Even in this example, the user
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`does not act as an intermediary to relay the synchronization code, as would be required by
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`Defendants’ proposed construction. Defendants’ proposed construction not only contradicts the
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`claim language but also would exclude embodiments in the specification.
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`
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`The specification also suggests that IP and MAC addresses can be used as synchronization
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`codes. ’251 Pat., at 2:24–26 (“The synchronization code can be different from an IP address
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`associated with the display device and/or a media access control [MAC] address associated with
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`the display device.”) (emphasis added). Again, Defendants’ construction improperly excludes
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`these embodiments. Dependent claim 9 explicitly contemplates this situation, reciting “[t]he
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`method of claim 8 wherein the synchronization code is different from an IP address associated
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`with the display device and is different from a MAC address associate with the display device.”
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`’251 Pat., 12:22–25; Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1376 (Fed. Cir. 2009)
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`(“claim 1 cannot be construed … without making claim 25 redundant.”). The patents plainly
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`contemplate the use of an IP or MAC address for a synchronization code, neither of which are read
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`or typed by users.
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`
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`Third, Defendants’ proposed construction improperly imports limitations from a particular
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`embodiment into the claims. “[E]ven when a patent only describes a single embodiment, the claims
`
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`1 Touchstream does not admit that Defendants’ premise has merit but discusses Defendants’
`argument on its own terms for the sake of argument.
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`4
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`Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 6 of 13 PageID #: 1192
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`are not necessarily construed as being limited to that embodiment. We must avoid importing
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`limitations from the specification into the claims.” MasterObjects, Inc. v. Meta Platforms, Inc.,
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`No. 2023-1097, 2024 WL 630330, at *6 (Fed. Cir. Feb. 15, 2024) (citing Phillips v. AWH Corp.,
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`415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)). In MasterObjects, the Federal Circuit gave the
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`terms “query message” and “asynchronous” their plain and ordinary meanings and refused to
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`import into claim limitations that were discussed in connection with specific embodiments. Id. at
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`*6-7. Here, the specification is not even limited to a single embodiment, and Defendants wholly
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`fail to address the claim language—even admitting that their proposed construction is solely based
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`on certain disclosed embodiments. See ECF 40 at 10-13. Because Defendants fail to even consider
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`the claim language at issue and import limitations from a selection of disclosed embodiments, their
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`proposed construction is improper.
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`
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`Finally, Defendants argue that Touchstream’s plain-and-ordinary arguments rely only on
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`“unsupported attorney argument.” ECF 40 at 13. But it is the Defendants—Not Touchstream—
`
`seeking to alter the meaning of this claim term to suit their objectives without expert testimony.
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`There is simply no evidence supporting Defendants’ revisions to this claim language, and
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`“synchronization code” should be afforded its plain and ordinary meaning.
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`4. “Method claim steps” (All Asserted Patents)
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`
`
`
`
`
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`Touchstream’s Proposal
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`Defendants’ Proposal
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`The terms are not chronologically limited
`under relevant case law, and the jury does not
`need instruction on ordering of claim steps, as
`any ordering requirements are reasonably
`clear from the claims themselves.
`
`All steps of claim 12 must occur in order
`(’751 Patent)
`All steps of claim 17 must occur in order
`(’934 Patent)
`Step 2.A (“checking”) must occur after step
`1.D (“receiving, in the server system, one or
`more signals”). (’251 Patent)
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`5
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`

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`Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 7 of 13 PageID #: 1193
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`
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`Defendants misunderstand Touchstream’s argument. While courts presume that steps of a
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`method claim may be performed in any order, Touchstream recognizes that the Asserted Claims
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`logically require some steps to be performed after others and acknowledged as much in its opening
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`brief. See ECF 36 at 9 (“it is apparent from the claims themselves that some steps must be
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`performed in order”). Touchstream argues not that the claims may be performed in any order, but
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`rather that any ordering requirements are apparent from the claims themselves. Id. Where such
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`order is logically required, performing the steps in any other order is impossible. For example,
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`“providing” the synchronization code to another device before obtaining it in the first place does
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`not make any sense. ’751 Patent, 12:64–13:9. Further construing claims to exclude logical
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`impossibilities that are already apparent is not a useful exercise. For the reasons set forth in
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`Touchstream’s opening brief, an express instruction regarding the order of claim steps will not aid
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`the jury. Id. Further, such an instruction risks encouraging the jury to impose a rigid order to terms
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`such as “first message” and “second message,” which are not sent in numerical order. Id. The jury
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`is capable of determining the logical order of claims without instruction by the Court. A plain and
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`ordinary construction is appropriate.
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`B.
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`Terms in the ’251 Patent
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`5. “storing . . . based on the synchronization code” (’251 Patent claim 1)
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`
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`
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`Touchstream’s Proposal
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`Defendants’ Proposal
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`No construction necessary. Plain and ordinary
`meaning.
`
`“based on the synchronization code, storing”
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`Defendants’ proposed construction rewrites the claim language through strained
`
`misunderstanding. Defendants argue that, because they proposed a construction, the term must be
`
`construed—insisting that “parties’ dispute as to this term’s meaning shows that, at the very least,
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`6
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`

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`Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 8 of 13 PageID #: 1194
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`the term cannot be given a plain-and-ordinary meaning construction.” ECF 40, at 16. Yet
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`Defendants fail to articulate exactly what actual scope dispute their construction will resolve.
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`Defendants’ re-writing of this claim language lacks foundation in the intrinsic record, and
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`violates basic rules of grammar. The relative phrase “based on the synchronization code” modifies
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`the closest object, in this case, “an association between the personal computing device and the
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`display device.” See Chicago Manual of Style, § 5.60 (17th ed. 2017) (“The longer the separation
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`[between a relative phrase and its antecedent] the more pronounced the problem—especially when
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`one or more unrelated nouns fall between the true antecedent and the clause.”); see also id. at §
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`5.226 (“a relative clause is a subordinate clause that is introduced by a relative pronoun and
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`modifies the noun element (or sentence or clause) it follows…”) (emphasis added).
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`The specification does not contradict the rules of English grammar. Defendants cite Figure
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`4 as evidence of a stored correspondence not based on the synchronization code, but that look-up
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`table is part of a switchboard of look-up tables, one of which stores the association based on the
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`synchronization code. Cf. ECF 40, at 17; ’251 Pat. 5:36-53, Figs. 1, 4. Defendants’ cited case
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`actually undermines its position: “[t]he standard for disavowal is exacting, requiring clear and
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`unequivocal evidence … Ambiguous language cannot support disavowal.” Cisco Sys., Inc. v. Int’l
`
`Trade Comm’n, 873 F.3d 1354, 1361 (Fed. Cir. 2017). Contrary to Defendants’ assertion, the
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`specification teaches the association is based on the synchronization code. ’251 Pat. 5:36-53. In
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`other words, not only does the specification not contradict the claim’s grammar, it supports it. This
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`is not undone by contrived ambiguity.
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`Defendants’ other cases also undermine their position. In Eon Corp. IP Holdings v. Silver
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`Spring Networks, the Federal Circuit reversed the District Court because it failed to resolve a bona
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`fide dispute of claim scope. 815 F.3d 1314, 1316 (Fed. Cir. 2016). There, the Plaintiff sought to
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`7
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`Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 9 of 13 PageID #: 1195
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`expand the scope of the word “portable” to encompass houses. Id. at 1317-18. A plain and ordinary
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`construction there allowed the Plaintiff to submit those questions to the jury. By contrast,
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`Touchstream asks only that the claim language be read in full and not stripped of half its words,
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`as Defendants attempt. The claim here reads, “storing, by the server system, a record establishing
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`an association between the personal computing device and the display device based on the
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`synchronization code.” ’251 Pat., 11:32-34. There is no reason to modify this language to require
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`the “storing” be “based on the synchronization code,” when the claim requires “storing” of a
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`“record establishing an association between the personal computing device and the display device
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`based on the synchronization code.”
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`C.
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`
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`Terms in the ’751 Patent
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`6. “first format” / “second format” (’751 Patent claims 12, 16)
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`Touchstream’s Proposal
`
`Defendants’ Proposal
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`No construction necessary. Plain and ordinary
`meaning.
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`Second format is different from the first
`format
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`
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`Defendants’ response indicates their true intent: they seek to exclude situations where a
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`conversion between formats results in the same substantive content. Defendants’ reliance on the
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`prosecution history shows no clear and unambiguous disavowal of claim scope with regard to the
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`content remaining parallel between two formats.2 Touchstream’s point is that “conversion” and a
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`“first” and “second” format sufficiently define the scope of the claims. But nowhere do the claims
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`2 Defendants’ citation to applicant’s traversal of the Morris reference is inapposite, as it did not
`distinguish the ’751 by a requirement that different formats contain categorically different content.
`Instead, it focused on the act of converting, which is a required step regardless of whether the
`output happens to match the input: “Morris still fails to describe that another message having a
`command in a different format is generated.” ECF 40-4, 23.
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`8
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`

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`Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 10 of 13 PageID #: 1196
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`require that the resulting contents be different each and every time. ECF 40, at 19, ’751 Pat., 13:44–
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`14:5. Defendants’ construction implies otherwise, and their response explicitly argues this.
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`Defendants position is apparent by the sentence “[i]f the two formats were the same, no
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`conversion would be necessary or, indeed, possible.” ECF 40, at 19. But just because the English
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`phrase “no construction necessary” translates to “no es necesaria ninguna construcción” in Spanish
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`does not mean the word “no” was not translated from English to Spanish. Indeed, Fig. 5 of the
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`’751 Patent (showing parallel “pause” commands between two formats) proves that the ’751
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`expressly contemplates cognates, as discussed at length in Touchstream’s opening brief.3 See ECF
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`36 at 11-12. This construction should be rejected, as the plain and ordinary meaning of “first
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`format” and “second format” teach that they are two different formats without confusing baggage.
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`7. “the first format of the first message” (’751 Patent claim 12)
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`
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`Touchstream’s Proposal
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`Defendants’ Proposal
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`No construction necessary. Plain and ordinary
`meaning.
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`Indefinite
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`Defendants overcomplicate this term to inject ambiguity where none exists. Stripped of
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`Defendants’ linguistic contortions, the meaning of this term is simple: a first message is sent, and
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`that message includes a command in a first format. The format of the command is necessarily
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`included in the format of the message, as the command is a piece of the message. Defendants do
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`not produce any evidence, much less clear and convincing evidence, that the ’751 Patent fails to
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`provide those of skill in the art with reasonable certainty as to the scope of the invention. See Teva
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`Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1345 (Fed. Cir. 2015). Feigned confusion and
`
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`3 Defendants’ suggest Figure 5’s “pause” is different because it is capitalized, a trivial difference
`not even recognized by many programming languages. The point remains that the specification
`does not mandate differences between the content of two formats. ’251 Pat., Fig. 5.
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`9
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`Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 11 of 13 PageID #: 1197
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`attorney argument do not constitute evidence of indefiniteness. ClearOne, Inc. v. Shure Acquisition
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`Holdings, Inc., 35 F.4th 1345, 1349–51 (Fed. Cir. 2022). Defendants offer nothing more, so their
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`invalidity bid must fail.
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`D.
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`Terms in the ’934 Patent
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`8. “a unique identifier” / “the unique identifier” (’934 Patent claim 17)
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`
`
`
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`Touchstream’s Proposal
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`Defendants’ Proposal
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`No construction necessary. Plain and ordinary
`meaning.
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`Defendants offer the same non-infringement argument here as discussed at § A(2) supra.
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`Must be the same “unique identifier”
`throughout the claim.
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`This construction is inappropriate for the same reasons discussed there.
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`9. “unique identifier” (’934 Patent claim 17)
`
`
`
`
`
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`Touchstream’s Proposal
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`Defendants’ Proposal
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`No construction necessary. Plain and ordinary
`meaning.
`
`“an identifier which can be obtained by a user
`from the media receiver and provided by the
`user to the computing device”
`
`Defendants offer the same improper limiting embodiment argument here as discussed at §
`
`A(3) supra. This construction is inappropriate for the same reasons discussed there.
`
`10. “first format” / “universal format” (’934 Patent claim 17)
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`
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`Touchstream’s Proposal
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`Defendants’ Proposal
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`No construction necessary. Plain and ordinary
`meaning.
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`Universal format is different from the first
`format.
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`Defendants offer similar implication of unsupported claim limitations discussed at § C(6)
`
`supra. This construction is inappropriate for the same reasons discussed there.
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`CONCLUSION
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`Touchstream respectfully requests that the Court adopt its proposed claim constructions.
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`10
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`II.
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`Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 12 of 13 PageID #: 1198
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`Dated: April 25, 2024
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`Respectfully Submitted,
`
`
`/s/ Ryan Dykal
`Ryan Dykal (Pro Hac Vice)
`Philip Eckert (Pro Hac Vice)
`Jordan Bergsten (Pro Hac Vice)
`Shook, Hardy & Bacon L.L.P.
`2555 Grand Boulevard
`Kansas City, MO 64108
`Phone: (816) 474-6550
`Fax: (816) 421-5547
`Email: rdykal@shb.com
`Email: peckert@shb.com
`Email: jbergsten@shb.com
`
`
`Robert H. Reckers (State Bar No. 24039520)
`Anita Liu (State Bar No. 24134054)
`Andrew M. Long (State Bar No. 24123079)
`Shook, Hardy & Bacon L.L.P.
`JPMorgan Chase Tower
`600 Travis St, Suite 3400
`Houston, TX 77002-2926
`Phone: (713) 227-8008
`Fax: (713) 227-9508
`Email: rreckers@shb.com
`Email: aliu@shb.com
`Email: amlong@shb.com
`
`Counsel for Plaintiff
`Touchstream Technologies, Inc.
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`Case 2:23-cv-00059-JRG Document 42 Filed 04/25/24 Page 13 of 13 PageID #: 1199
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 25, 2024, counsel of record for the Defendants were notified
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`via the CM/ECF System.
`
`/s/ Ryan Dykal
`Ryan Dykal
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`12
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