Case 6:21-cv-00569-ADA Document 107 Filed 11/18/22 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`TOUCHSTREAM TECHNOLOGIES, INC.,
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`Plaintiff,
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`Civil Case No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`U.S. Magistrate Judge Derek T. Gilliland
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`v.
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`GOOGLE LLC,
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`Defendant.
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`TOUCHSTREAM’S MOTION FOR RECONSIDERATION OF DENIAL OF
`MOTION TO COMPEL PRODUCTION OF GLOBAL USAGE METRICS
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`Touchstream hereby moves the Court to reconsider its oral ruling on November 16 denying
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`Touchstream’s request to compel Google to produce global usage metrics, on the basis stated by
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`the Court at the hearing that Touchstream has alleged infringement of only method claims.
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`Respectfully, it is not the type of claim asserted that controls whether foreign damages are
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`recoverable. It is whether domestic infringement can be tied to foreign sales. All cases cited by
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`the parties are in accord—two of which specifically address domestic infringement of method
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`claims that can be tied to foreign damages. See ArcherDX, LLC v. Qiagen Scis., LLC,
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`2022 WL 4597877, at *13 (D. Del. Sept. 30, 2022) (affirming verdict for foreign damages based
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`on evidence that “domestic infringement (use of the accused products) was a substantial cause of
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`the sale of products abroad,” stating, “[i]n CMU, the Federal Circuit noted that the products
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`‘practice[ ] the method in its normal intended use’ and concluded that causation to domestic
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`infringing uses was established given the design, simulation, and testing of the chips in California
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`involved infringing uses and caused the worldwide sales”) (emphasis added), citing Carnegie
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`Mellon Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283, 1306-07 (Fed. Cir. 2015) (“the inquiry
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`is whether any of the § 271(a)-listed activities with respect to that product occur domestically”).
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`Case 6:21-cv-00569-ADA Document 107 Filed 11/18/22 Page 2 of 5
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`This is the case here. In fact, Google has stated that “N.D. Cal. is where Google was
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`founded, maintains its headquarters, and researches, develops, designs, and primarily maintains
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`the accused functionality in the accused Chromecast products.” ECF No. 27 at 5. Google
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`employees have further testified that the infringing methods were “dogfooded”—that is, internally
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`tested—by Google employees in California (including by Google’s current CEO). Further, the
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`Google code that performs the infringing methods is distributed from California to the rest of the
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`world. In short, but for Google’s domestic infringement, Google could not have rolled out its
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`infringing functionality to the rest of the world.
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`Moreover, the only other cases cited by either party to address whether damages are
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`recoverable in connection with foreign sales when domestic activities listed in 35 U.S.C. 271(a)
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`occur also found that such foreign damages are recoverable. See W.H. Wall Fam. Holdings LLLP
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`v. CeloNova Biosciences, Inc., 2020 WL 1644003, at *3 & n.2 (W.D. Tex. Apr. 2, 2020) (granting
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`motion to compel foreign sales activity, stating, “Courts have found that foreign damages may be
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`compensable for domestic infringement under § 271(a)”); Plastronics Socket Partners, Ltd. v.
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`Dong Weon Hwang, 2019 WL 4392525, at *5 (E.D. Tex. June 11, 2019) (denying summary
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`judgment, stating, “a genuine dispute of fact exists as to whether [plaintiff] suffered damages
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`abroad as a result of Defendants’ domestic acts of infringement . . . [Plaintiff] has provided
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`evidence to create a reasonable inference that Defendants committed domestic acts of
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`infringement, such as importation, that ultimately led to damages via sales abroad”).
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`The two cases cited by Google are inapposite. In Bel Power Solutions v. Monolithic Power
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`Systems, 6-21-CV-00655-ADA, ECF No. 63 (W.D. Tex. 2022), the Court did not discuss any
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`distinction based on method claims versus system claims. The Court denied discovery into foreign
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`damages because the theory was not based on foreign damages tied to domestic infringement—
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`2
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`Case 6:21-cv-00569-ADA Document 107 Filed 11/18/22 Page 3 of 5
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`rather it was based on a “design win.” See id. at 2 (plaintiff argued only that defendant “is liable
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`for any infringement in connection with these ‘design wins’”). As the Court held: “Such a ‘design
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`win’ is not a sale or offer for sale that gives rise to damages.” Id. at 5. The ruling in Bel Power is
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`inapplicable here, where Touchstream seeks damages associated not with “design wins,” but with
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`sales of products that practice infringing methods. Google’s other case, Meyer Intellectual
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`Properties Ltd. v. Bodum, Inc., 690 F.3d 1354 (Fed. Cir. 2012), did not involve the issue of foreign
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`damages at all.
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`To the extent the Court were to find that Google’s cases have any applicability to this case:
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`(1) They conflict with the weight of Touchstream’s authorities cited above, from the Federal
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`Circuit and elsewhere, which should be followed here. (2) Resolution of any such conflict would
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`be more appropriate on summary judgment. Indeed, the global metrics sought would be pertinent
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`to such a motion, by showing the depth and breadth to which Google’s domestic infringing
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`activities caused foreign infringement of method claims.
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`Case 6:21-cv-00569-ADA Document 107 Filed 11/18/22 Page 4 of 5
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`For the foregoing reasons, and those stated in Touchstream’s motion to compel and at the
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`November 16 hearing, Touchstream respectfully requests that the Court reconsider its
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`November 16 oral ruling, and compel Google to produce global usage metrics.
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`Respectfully submitted,
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`TOUCHSTREAM TECHNOLOGIES, INC.
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`By:
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` /s/ Justin R. Donoho
`One of Its Attorneys
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`Ryan D. Dykal, pro hac vice
`B. Trent Webb, pro hac vice
`Jordan T. Bergsten, pro hac vice
`SHOOK, HARDY & BACON L.L.P.
`2555 Grand Boulevard
`Kansas City, MO 64108
`(816) 474-6550
`Fax: (816) 421-5547
`Email: rdykal@shb.com
`Email: slaroque@shb.com
`Email: bwebb@shb.com
`Email: jbergsten@shb.com
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`Date: November 18, 2022
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`Michael W. Gray (TX Bar No. 24094385)
`Fiona A. Bell (TX Bar No. 24052288)
`Andrew M. Long (TX Bar No. 24123079)
`SHOOK, HARDY & BACON L.L.P.
`600 Travis Street, Suite 3400
`Houston, TX 77002
`(713) 227-2008
`Fax: 713-227-9508
`Email: mgray@shb.com
`Email: fbell@shb.com
`Email: amlong@shb.com
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`Gary M. Miller, pro hac vice
`Justin R. Donoho, pro hac vice
`SHOOK, HARDY & BACON L.L.P.
`111 S. Wacker Drive, Suite 4700
`Chicago, IL 60606
`(312) 704-7700
`Fax: 312-558-1195
`Email: gmiller@shb.com
`Email: jdonoho@shb.com
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`Counsel for Plaintiff Touchstream Technologies, Inc.
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`Case 6:21-cv-00569-ADA Document 107 Filed 11/18/22 Page 5 of 5
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`CERTIFICATE OF SERVICE
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`Pursuant to the Federal Rules of Civil Procedure and the Local Rules for the Western
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`District of Texas, I hereby certify that on the 18th day of November, 2022, I served the foregoing
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`to the following counsel of record via the e-mail addresses shown below:
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`Michael E. Jones
`Patrick C. Clutter
`Shaun William Hassett
`Potter Minton PC
`110 N College, Suite 500
`Tyler, TX 75702
`Tel: 903-597-8311
`Email: mikejones@potterminton.com
`Email: patrickclutter@potterminton.com
`Email: shaunhassett@potterminton.com
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`Evan M. McLean, pro hac vice
`Michael C. Hendershot, pro hac vice
`Tharan Gregory Lanier, pro hac vice
`Jones Day
`1755 Embarcadero Road
`Palo Alto, CA 94303
`Tel: (650) 739-3939
`Email: emclean@jonesday.com
`Email: mhendershot@jonesday.com
`Email: tglanier@jonesday.com
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`Edwin O. Garcia, pro hac vice
`Jones Day
`51 Louisiana Avenue, N.W.
`Washington, DC 20001
`Tel: (202) 879-3695
`Email: edwingarcia@jonesday.com
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`/s/ Justin R. Donoho
` Attorney for Plaintiff
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