throbber
Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 1 of 14 PageID #: 1307
`
`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
`
`COMCAST DEFENDANTS’ ANSWER TO PLAINTIFF’S
`SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendants Comcast Corporation, Comcast Cable Communications, LLC, d/b/a Xfinity,
`
`Comcast Cable Communications Management, LLC, and Comcast of Houston, LLC
`
`(collectively, “Comcast”), by their undersigned counsel, hereby respond to the Second Amended
`
`Complaint for Patent Infringement filed by Touchstream Technologies, Inc. (“Plaintiff” or
`
`“Touchstream”) on March 28, 2024 (the “Second Amended Complaint”). On April 30, 2024, the
`
`Court granted Comcast’s motion to dismiss, which resulted in the dismissal of Plaintiff’s pre-suit
`
`willful infringement claim as to U.S. Patent Nos. 11,048,751 (the “’751 Patent”) and 11,086,934
`
`(the “’934 Patent”) against Comcast with prejudice. Dkt. No. 44 at 2. Therefore, Comcast’s
`
`answer is directed solely to Plaintiff’s remaining claims for direct infringement of the ’751
`
`Patent, the ’934 Patent, and U.S. Patent No. 8,356,251 (the “’251 Patent”) (collectively, the
`
`“Asserted Patents”), pre-suit willful infringement of the ’251 Patent, and post-suit willful
`
`infringement of the Asserted Patents asserted against Comcast.
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 2 of 14 PageID #: 1308
`
`To the extent the paragraphs of the Second Amended Complaint are grouped under
`
`headings and subheadings, Comcast responds that such headings and subheadings (some of
`
`which are repeated below for reference only and which do not constitute admissions) state facts,
`
`legal conclusions, and pejorative inferences that Comcast denies.
`
`Except as expressly admitted herein, Comcast denies the allegations set forth in the
`
`Second Amended Complaint, including the introductory paragraph. Comcast further answers the
`
`numbered paragraphs in the Second Amended Complaint as follows:
`
`THE PARTIES
`
`1.
`
`Comcast lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of Paragraph 1, and therefore denies them.
`
`2.
`
`Admitted that Comcast Cable Communications, LLC, is a Delaware limited
`
`liability company with its principal place of business at One Comcast Center, 1701 John F.
`
`Kennedy Blvd., Philadelphia, Pennsylvania 19103. Except as expressly admitted, Comcast
`
`denies the allegations of Paragraph 2.
`
`3.
`
`Admitted that Comcast Corporation is a Pennsylvania corporation with its
`
`principal place of business at One Comcast Center, 1701 John F. Kennedy Blvd., Philadelphia,
`
`Pennsylvania 19103. Admitted that Comcast Corporation is registered to do business in the state
`
`of Texas. Except as expressly admitted, Comcast denies the allegations of Paragraph 3.
`
`4.
`
`Admitted that Comcast Cable Communications Management, LLC, is a Delaware
`
`limited liability company with its principal place of business at One Comcast Center, 1701 John
`
`F. Kennedy Blvd., Philadelphia, Pennsylvania 19103. Admitted that Comcast Cable
`
`Communications Management, LLC, is registered to do business in the state of Texas. Except as
`
`expressly admitted, Comcast denies the allegations of Paragraph 4.
`
`2
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 3 of 14 PageID #: 1309
`
`5.
`
`Admitted that Comcast of Houston, LLC, is a Delaware limited liability company
`
`with its principal place of business at One Comcast Center, 1701 John F. Kennedy Blvd.,
`
`Philadelphia, Pennsylvania 19103. Except as expressly admitted, Comcast denies the allegations
`
`of Paragraph 5.
`
`NATURE OF THE ACTION
`
`6.
`
`Admitted that Plaintiff purports to bring an action under 35 U.S.C. § 271 et seq.
`
`for the alleged infringement of the Asserted Patents. Admitted that a document purporting to be
`
`the ’251 Patent is attached to the Second Amended Complaint as Exhibit 1. Admitted that a
`
`document purporting to be the ’751 Patent is attached to the Second Amended Complaint as
`
`Exhibit 2. Admitted that a document purporting to be the ’934 Patent is attached to the Second
`
`Amended Complaint as Exhibit 3. Comcast denies that it infringes the Asserted Patents. Except
`
`as expressly admitted, Comcast denies the remaining allegations of Paragraph 6.
`
`JURISDICTION AND VENUE
`
`7.
`
`Admitted that Plaintiff purports to bring an action that arises under Title 35 of the
`
`United States Code. Comcast does not contest federal subject-matter jurisdiction under
`
`28 U.S.C. §§ 1331 and 1338(a).
`
`8.
`
`Comcast does not contest personal jurisdiction over it for the limited purpose of
`
`this action only. Except as expressly admitted, Comcast denies the allegations of Paragraph 8.
`
`9.
`
`Comcast does not assert improper venue for the limited purpose of this action
`
`only. Except as expressly admitted, Comcast denies the allegations of Paragraph 9.
`
`10.
`
`Admitted that Masergy Communications, Inc., has an office in Collin County,
`
`Texas. Admitted that Comcast maintains a structure in Liberty County, Texas. Except as
`
`expressly admitted, Comcast denies the allegations of Paragraph 10.
`
`3
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 4 of 14 PageID #: 1310
`
`11.
`
`Admitted that Comcast maintains an office at 6200 Bridge Point Pkwy., Austin,
`
`Texas 78730. Except as expressly admitted, Comcast denies the allegations of Paragraph 11.
`
`12.
`
`Admitted that public reporting indicated that Comcast planned to open an office
`
`in Austin, Texas in 2016. Except as expressly admitted, Comcast denies the allegations of
`
`Paragraph 12.
`
`13.
`
`Denied.
`
`14.
`
`Admitted that Comcast employed at least 100 persons in Austin as of September
`
`2016. Except as expressly admitted, Comcast denies the allegations of Paragraph 14.
`
`15.
`
`Denied.
`
`TOUCHSTREAM’S PATENTS
`
`16.
`
`Comcast lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of Paragraph 16, and therefore denies them.
`
`17.
`
`Comcast lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of Paragraph 17, and therefore denies them.
`
`18.
`
`Admitted that the Touchstream Patents are limited to their claims. Except as
`
`expressly admitted, Comcast denies the allegations of Paragraph 18.
`
`19.
`
`Admitted that the Asserted Patents have the title “Play Control of Content on a
`
`Display Device,” and each purports to claim priority to U.S. Provisional Patent Application
`
`No. 61/477,998. Except as expressly admitted, Comcast denies the allegations of Paragraph 19.
`
`20.
`
`Admitted that a notice of allowance for U.S. Patent Application No. 13/245,001
`
`purported to issue on October 10, 2012. Admitted that the ’251 Patent purported to issue on
`
`January 15, 2013 to inventor David Strober. Admitted that the ’751 Patent purported to issue on
`
`June 29, 2021 to inventor David Strober. Admitted that the ’934 Patent purported to issue on
`
`4
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 5 of 14 PageID #: 1311
`
`August 10, 2021 to inventor David Strober. Except as expressly admitted, Comcast denies the
`
`allegations of Paragraph 20.
`
`21.
`
`Comcast lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of Paragraph 21, and therefore denies them.
`
`BACKGROUND OF THE DISPUTE
`
`22.
`
`Comcast lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of Paragraph 22, and therefore denies them.
`
`23.
`
`Comcast lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of Paragraph 23, and therefore denies them.
`
`24.
`
`Comcast lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of Paragraph 24, and therefore denies them.
`
`25.
`
`Comcast denies the allegations in Paragraph 25 directed to Comcast. Comcast
`
`lacks knowledge or information sufficient to form a belief as to the truth of the remaining
`
`allegations of Paragraph 25, and therefore denies them.
`
`26.
`
`Comcast lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of Paragraph 26, and therefore denies them.
`
`27.
`
`Comcast lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of Paragraph 27, and therefore denies them.
`
`28.
`
`Comcast lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of Paragraph 28, and therefore denies them.
`
`29.
`
`Denied.
`
`5
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 6 of 14 PageID #: 1312
`
`30.
`
`Admitted that at least one Touchstream employee met with an employee of
`
`Genacast Ventures on August 19, 2011. Except as expressly admitted, Comcast denies the
`
`allegations of Paragraph 30.
`
`31.
`
`Admitted that a member of the Applied Research team at Comcast Labs emailed a
`
`Touchstream employee on December 14, 2011. Admitted that that member of Comcast Labs
`
`stated that he had signed up for an alpha trial, and he requested that Touchstream “expedite alpha
`
`access.” Except as expressly admitted, Comcast denies the allegations of Paragraph 31.
`
`32.
`
`Admitted that, on December 21, 2011, an executive assistant at Comcast stated
`
`that Tony Werner and Sam Schwartz wanted to meet with Shodogg at CES. Except as expressly
`
`admitted, Comcast denies the allegations of Paragraph 32.
`
`33.
`
`Denied.
`
`34.
`
`Admitted that Comcast Corporation acquired a majority interest in NBC in
`
`January 2011 and later acquired full ownership of NBC. Admitted that, in 2012, a Touchstream
`
`employee informed Tony Werner that Touchstream personnel had met with NBCU personnel.
`
`Except as expressly admitted, Comcast denies the allegations of Paragraph 34.
`
`35.
`
`Denied.
`
`36.
`
`Admitted that Neil Smit was listed on a calendar invitation to meet with
`
`Touchstream personnel at CES on January 10, 2012. Except as expressly admitted, Comcast
`
`denies the allegations of Paragraph 36.
`
`37.
`
`Admitted that Tony Werner and Sam Schwartz met with Touchstream personnel
`
`at CES on January 10, 2012. Admitted that, on April 5, 2012, an assistant to an executive at
`
`NBC emailed Touchstream to schedule a meeting between Comcast personnel and Touchstream
`
`personnel. Admitted that the NBC executive emailed Touchstream on April 18, 2012, saying
`
`6
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 7 of 14 PageID #: 1313
`
`that he had spoken with “the Comcast folks,” who “prefer[ed] to reconsider getting together.”
`
`Admitted that the NBC executive worked at Comcast prior to June 2011. Except as expressly
`
`admitted, Comcast denies the allegations of Paragraph 37.
`
`38.
`
`Comcast lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of Paragraph 38, and therefore denies them.
`
`39.
`
`Denied.
`
`40.
`
`Denied.
`
`41.
`
`Denied.
`
`42.
`
`Admitted.
`
`43.
`
`Denied.
`
`44.
`
`Denied.
`
`45.
`
`Denied.
`
`46.
`
`Denied.
`
`47.
`
`Admitted that Comcast retained the law firm Dreier, LLP. Except as expressly
`
`admitted, Comcast denies the allegations of Paragraph 47.
`
`48.
`
`Admitted that Jim Finnegan gave a presentation to Tony Werner and Art Block
`
`entitled Intellectual Property Business at Comcast on November 5, 2007. Except as expressly
`
`admitted, Comcast denies the allegations of Paragraph 48.
`
`49.
`
`Admitted that Mr. Finnegan testified that “in my first 60 days at the company,
`
`what I said was, as we are in this space, in cable and in the telecom space and my background
`
`was in telecom, we should at least be thinking about do we have a strong portfolio to use as a
`
`counter assertion should we get into any patent discussions with any of the types of companies
`
`7
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 8 of 14 PageID #: 1314
`
`listed” and that the companies listed in the presentation included Verizon, Sprint, and AT&T.
`
`Except as expressly admitted, Comcast denies the allegations of Paragraph 49.
`
`50.
`
`Denied.
`
`51.
`
`Denied.
`
`52.
`
`Denied.
`
`53.
`
`Denied.
`
`THE ACCUSED XFINITY FUNCTIONALITIES
`
`54.
`
`Admitted that Touchstream alleges that the Xfinity TV Remote mobile
`
`application infringes the Asserted Patents when used with X1 set-top boxes. Except as expressly
`
`admitted, Comcast denies the allegations of Paragraph 54.
`
`55.
`
`Admitted that an X1 set-top box may be connected to a device having a screen.
`
`Except as expressly admitted, Comcast denies the allegations of Paragraph 55.
`
`56.
`
`Admitted that a subscriber may access live TV, DVR, and certain applications
`
`using an X1 set-top box. Admitted that, as of February 7, 2020, a user interface displayed on a
`
`television screen through an X1 set-top box included “Saved”; “Guide”; “On Demand”;
`
`“Sports”; and “Apps” options. Except as expressly admitted, Comcast denies the allegations of
`
`Paragraph 56.
`
`57.
`
`Admitted that, as of February 7, 2020, a user interface displayed on a television
`
`screen through an X1 set-top box included a “Saved” menu. Except as expressly admitted,
`
`Comcast denies the allegations of Paragraph 57.
`
`58.
`
`Admitted that, as of February 7, 2020, a user interface displayed on a television
`
`screen through an X1 set-top box included a “On Demand” menu. Except as expressly admitted,
`
`Comcast denies the allegations of Paragraph 58.
`
`8
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 9 of 14 PageID #: 1315
`
`59.
`
`Admitted that, as of February 7, 2020, a user interface displayed on a television
`
`screen through an X1 set-top box included an “App” menu. Except as expressly admitted,
`
`Comcast denies the allegations of Paragraph 59.
`
`60.
`
`Admitted that, as of February 7, 2020, a user interface displayed on a television
`
`screen through an X1 set-top box included a grid guide screen. Except as expressly admitted,
`
`Comcast denies the allegations of Paragraph 60.
`
`61.
`
`Admitted that persons may download and install the Xfinity Stream mobile
`
`application to mobile devices. Admitted that the Xfinity Stream mobile application allows
`
`persons to view certain media on a mobile device. Except as expressly admitted, Comcast denies
`
`the allegations of Paragraph 61.
`
`62.
`
`Admitted that persons may download and install the Xfinity TV Remote mobile
`
`application to a mobile device. Except as expressly admitted, Comcast denies the allegations of
`
`Paragraph 62.
`
`63.
`
`Denied.
`
`64.
`
`Denied.
`
`65.
`
`Denied.
`
`66.
`
`Admitted that persons may download and open the Xfinity TV Remote mobile
`
`application on a mobile device. Except as expressly admitted, Comcast denies the allegations of
`
`Paragraph 66.
`
`67.
`
`Denied.
`
`68.
`
`Admitted that Paragraph 68 purports to show two user interface screens of the
`
`Xfinity TV Remote mobile application, which includes “Watch on TV” and “Record Options.”
`
`Except as expressly admitted, Comcast denies the allegations of Paragraph 68.
`
`9
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 10 of 14 PageID #: 1316
`
`69.
`
`Admitted that Paragraph 69 purports to show two user interface screens of the
`
`Xfinity TV Remote mobile application. Except as expressly admitted, Comcast denies the
`
`allegations of Paragraph 69.
`
`70.
`
`Denied.
`
`71.
`
`Denied.
`
`72.
`
`Denied.
`
`73.
`
`Denied.
`
`74.
`
`Denied.
`
`75.
`
`Denied.
`
`76.
`
`Denied.
`
`COUNT I
`
`U.S. PATENT NO. 8,356,251
`
`77.
`
`No response is required to Plaintiff’s reference and incorporation of the foregoing
`
`paragraphs. To the extent a response is required, Comcast repeats and incorporates by reference
`
`its answers to Paragraphs 1–76, as set forth above.
`
`78.
`
`Denied.
`
`79.
`
`Denied.
`
`80.
`
`Denied.
`
`81.
`
`Denied.
`
`10
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 11 of 14 PageID #: 1317
`
`COUNT II
`
`U.S. PATENT NO. 11,048,751
`
`82.
`
`No response is required to Plaintiff’s reference and incorporation of the foregoing
`
`paragraphs. To the extent a response is required, Comcast repeats and incorporates by reference
`
`its answers to Paragraphs 1–81, as set forth above.
`
`83.
`
`Denied.
`
`84.
`
`Denied.
`
`85.
`
`Denied.1
`
`86.
`
`Denied.
`
`COUNT III
`
`U.S. PATENT NO. 11,086,934
`
`87.
`
`No response is required to Plaintiff’s reference and incorporation of the foregoing
`
`paragraphs. To the extent a response is required, Comcast repeats and incorporates by reference
`
`its answers to Paragraphs 1–86, as set forth above.
`
`88.
`
`Denied.
`
`89.
`
`Denied.
`
`90.
`
`Denied.2
`
`91.
`
`Denied.
`
`92.
`
`No answer to Paragraph 92 is required. To the extent a response is required,
`
`Comcast denies that Touchstream is entitled to trial by jury on all issues.
`
`
`1 On April 30, 2024, the Court dismissed Touchstream’s claim of pre-suit willful infringement as to
`the ’751 Patent with prejudice (Dkt. No. 44 at 2).
`
`2 On April 30, 2024, the Court dismissed Touchstream’s claim of pre-suit willful infringement as to
`the ’934 Patent with prejudice (Dkt. No. 44 at 2).
`
`11
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 12 of 14 PageID #: 1318
`
`GENERAL DENIAL
`
`Comcast denies each and every allegation of the Second Amended Complaint, including
`
`Plaintiff’s Prayer for Relief, which herein has been neither admitted nor controverted.
`
`DEFENSES
`
`Comcast alleges and asserts the following defenses in response to Plaintiff’s allegations,
`
`undertaking the burden of proof only as to those defenses it is required to under applicable law,
`
`regardless of how such defenses are denominated herein. Comcast reserves the right to allege
`
`additional defenses as they become known through the course of discovery.
`
`FIRST DEFENSE
`
`Comcast has not infringed, and does not infringe, directly or indirectly, literally or under
`
`the doctrine of equivalents, any valid and enforceable claim of the Asserted Patents.
`
`SECOND DEFENSE
`
`The asserted claims of the Asserted Patents are invalid for failure to comply with the
`
`requirements of the patent laws of the United States, including provisions of 35 U.S.C. §§ 101,
`
`102, 103, and 112.
`
`THIRD DEFENSE
`
`To the extent that Plaintiff alleges a claim for infringement of any of the Asserted Patents
`
`based on the doctrine of equivalents, it is barred under the doctrine of prosecution history
`
`estoppel and/or other limits to the doctrine of equivalents, and Plaintiff is estopped from
`
`claiming that the Asserted Patents cover any accused Comcast method, system, and/or product.
`
`FOURTH DEFENSE
`
`On information and belief, Plaintiff has failed to comply with the requirements of
`
`35 U.S.C. § 287, based on, but not limited to, its failure to mark products covered by the claims
`
`12
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 13 of 14 PageID #: 1319
`
`of the Asserted Patents and/or its licensees’ failure to mark products covered by the claims of the
`
`Asserted Patents.
`
`FIFTH DEFENSE
`
`Plaintiff is not entitled to a reasonable royalty and has not sustained lost profits, and thus
`
`Plaintiff is not entitled to an award of damages.
`
`SIXTH DEFENSE
`
`Plaintiff’s Second Amended Complaint fails to state any claim upon which relief may be
`
`granted.
`
`SEVENTH DEFENSE
`
`Plaintiff’s claims are barred, in whole or in part, by the doctrine of unclean hands.
`
`Dated: May 14, 2024
`
`
`
`
`
`Respectfully submitted,
`
`/s/ David J. Lisson
`Deron Dacus (State Bar No. 00790553)
`THE DACUS FIRM, P.C.
`821 ESE Loop 323, Suite 430
`Tyler, TX 75701
`Tel: (903) 705-1117
`Fax: (903) 581-2543
`ddacus@dacusfirm.com
`
`Ashok Ramani (CA Bar No. 200020)
`David J. Lisson (CA Bar No. 250994)
`James Y. Park (CA Bar No. 343659)
`Micayla Hardisty (CA Bar No. 333246)
`DAVIS POLK & WARDWELL LLP
`1600 El Camino Real
`Menlo Park, CA 94025
`ashok.ramani@davispolk.com
`david.lisson@davispolk.com
`james.park@davispolk.com
`micayla.hardisty@davispolk.com
`Alena Farber (NY Bar No. 5896170)
`DAVIS POLK & WARDWELL LLP
`450 Lexington Avenue
`New York, NY 10017
`alena.farber@davispolk.com
`
`Counsel for Comcast Defendants
`
`13
`
`

`

`Case 2:23-cv-00059-JRG Document 49 Filed 05/14/24 Page 14 of 14 PageID #: 1320
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to Local Rule CV-5(c), the undersigned hereby certifies that all counsel of
`
`record who have consented to electronic service are being served with a copy of this document
`
`via ECF on May 14, 2024.
`
`
`
`
`
`
`
`
`/s/ David J. Lisson
`David J. Lisson
`
`14
`
`

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