Case 6:21-cv-00569-ADA Document 110 Filed 11/28/22 Page 1 of 10
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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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`GOOGLE LLC,
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`Defendant.
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`Plaintiff,
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`v.
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`Civil Case No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`I.
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`DEFENDANT GOOGLE LLC’S RESPONSE TO PLAINTIFF TOUCHSTREAM
`TECHNOLOGIES, INC.’S MOTION FOR RECONSIDERATION OF DENIAL OF
`MOTION TO COMPEL PRODUCTION OF GLOBAL USAGE METRICS
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`INTRODUCTION
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`On November 16, U.S. Magistrate Judge Gilliland held a hearing on Touchstream’s motion
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`to compel, which was granted-in-part and denied-in-part. Two days later Touchstream moved for
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`reconsideration of Judge Gilliland’s denial of discovery of worldwide usage metrics. Touchstream’s
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`motion is unclear on whether it appeals U.S. Magistrate Judge Gilliland’s sound decision on this
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`non-dispositive issue to U.S. District Judge Albright or, instead, asks Judge Gilliland to reconsider
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`his prior ruling. Either way, the result is the same: the motion should be denied because Touchstream
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`has not shown a clear error of law or any new facts that justify reconsideration, much less changing
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`the ruling.
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`Judge Gilliland afforded the parties the opportunity to fully argue in person each sides’
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`positions on every issue. Fact discovery has long closed, opening expert reports have already been
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`exchanged, and trial is currently set for February. As discussed at the hearing, this case cannot go
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`to trial as scheduled if Touchstream refuses to let discovery end. Mindful of the limited resources
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`Case 6:21-cv-00569-ADA Document 110 Filed 11/28/22 Page 2 of 10
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`of the Court, the stage of the case, the nearness of trial, and the fact that Touchstream has utterly
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`failed to establish any basis for reconsideration, Touchstream’s motion should be denied.
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`II.
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`LEGAL STANDARD
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`A party may object to a magistrate judge’s non-dispositive orders. FED. R. CIV. P. 72(a); 28
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`U.S.C. § 636(b)(1)(A). The reviewing court may reconsider the magistrate judge’s ruling where the
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`objecting party demonstrates that the magistrate judge’s ruling is “clearly erroneous” or “contrary
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`to law.” 28 U.S.C. § 636(b)(1)(A). Rule 4(c) of Appendix C of the Local Rules similarly provides
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`that a party may appeal a magistrate judge’s order by specifically designating the basis for the
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`objection, and the district court shall set aside orders found to be clearly erroneous or contrary to
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`law. The “clearly erroneous” standard does not empower a reviewing court to reverse a magistrate
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`judge’s finding because it would have decided the matter differently. See, e.g., Anderson v.
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`Bessemer City, N.C., 470 U.S. 564, 573-74 (1985). Instead, the “clearly erroneous” standard is met
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`when despite the existence of evidence to support the finding, the Court, upon reviewing the record
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`in its entirety, “is left with the definite and firm conviction that a mistake has been committed.” Id.
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`(quoting United States v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948)).
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`To the extent Touchstream requests Judge Gilliland to reconsider his order, to succeed it
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`must establish: “(1) an intervening change in controlling law; (2) the availability of new evidence
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`not previously available; or (3) the need to correct a clear error of law or prevent manifest injustice.”
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`In re Benjamin Moore & Co., 318 F.3d 626, 629 (5th Cir. 2002).
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`III. ARGUMENT
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`A.
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`Touchstream’s Motion For Reconsideration Is Procedurally Improper
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`Touchstream’s motion for reconsideration is procedurally improper because it is nothing
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`more than a request for a do-over. Pringle v. United States, 2018 WL 7021481, at *2 (N.D. Tex.
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`Dec. 18, 2018) (“in school yard parlance, a motion for reconsideration is not a request for a do over”
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`(cleaned up)). Indeed, motions for reconsideration cannot “be used to . . . re-urge matters that have
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`already been advanced by a party.” Tex. Instruments, Inc. v. Hyundai Elecs. Indus., Co., 50 F.
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`Supp.2d 619, 621 (E.D. Tex. 1999). That is, “[a] motion for reconsideration is not ‘the proper
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`vehicle for rehashing old arguments or advancing legal theories that could have been presented
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`earlier.’” Helena Labs. Corp. v. Alpha Scientific Corp., 483 F. Supp. 2d 538, 539 (E.D. Tex. 2007)
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`(citation omitted); see also LeClerc v. Webb, 419 F.3d 405, 412 n.13 (5th Cir. 2005) (“A motion for
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`reconsideration may not be used to rehash rejected arguments or introduce new arguments.”).
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`Touchstream’s “[m]ere disagreement with a district court’s order does not warrant reconsideration
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`of that order.” Morgan v. Plano Ind. School Dist., 2008 WL 686711, at *1 (E.D. Tex. Mar. 10,
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`2008) (citing Krim v. pcOrder.com, Inc., 212 F.R.D. 329, 332 (W.D. Tex. 2002)).
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`Despite these rules, Touchstream’s motion for reconsideration merely re-urges the same
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`positions and case law advanced in earlier briefing submitted to the Court. Indeed, Touchstream’s
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`motion is almost a direct copy-paste from its motion to compel, and makes no showing of a clear
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`error of law or any new facts. Critically absent from the motion is any citation to intervening law or
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`any identification of new or previously unavailable evidence. Simply put, Touchstream wants a
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`mulligan on the result in contravention to the very limited purpose for a reconsideration motion, and
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`more importantly, in disregard for this Court’s decisions in effort to achieve judicial economy. See
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`eTool Dev’t, Inc. v. Nat’l Semiconductor Corp., 881 F. Supp. 2d 745, 750 (E.D. Tex. 2012) (Bryson,
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`J.) (finding reconsideration not warranted where “there has been no change in intervening law, nor
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`has [the movant] presented any new evidence not previously available to it”). The motion should
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`be denied on that basis alone.
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`B.
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`Touchstream’s Motion For Reconsideration Should Be Denied Because There
`Are No Clear Errors of Law or New Evidence
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`Touchstream’s motion cites no new evidence or facts that warrant reconsideration. Indeed,
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`Touchstream does not even cite any new cases. Instead, Touchstream cites to the same cases
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`previously submitted and considered, and on that authority, they effectively contend that Judge
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`Gilliland’s decision denying discovery of worldwide usage metrics was a clear error of law. But
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`Touchstream has not made any showing of an error of law, much less a clear one.
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`As discussed in detail at the hearing, the asserted claims in this case are method claims that
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`purportedly relate to “casting” of video—finding content on one screen and watching it on another,
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`at the most simplistic level. The motion to compel sought information on casting and non-casting
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`activity outside the US.
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`There is no dispute that “infringement of a method claim requires that each of the claimed
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`steps [be] performed within the United States.” Meyer Intell. Properties Ltd. v. Bodum, Inc., 690
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`F.3d 1354, 1371 (Fed. Cir. 2012); INVT SPE LLC v. Int’l Trade Comm’n, 46 F.4th 1361, 1371 (Fed.
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`Cir. 2022) (holding infringement of method “claims require[] actual performance of each claimed
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`step . . . in the United States”). Because damages are confined to the extent of the infringement, at
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`the hearing Judge Gilliland astutely inquired “how foreign sales data could somehow inform
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`damages on method claims practiced in the U.S.” Nov. 18 Hrg. Tr. at 31. Judge Gilliland gave
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`Touchstream every opportunity to confirm or correct the characterization of the claims at issue and
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`to argue the facts and the cases at length (the hearing lasted well over an hour). Ultimately, Judge
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`Gilliland correctly denied Touchstream’s request for foreign data concerning methods performed
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`outside of the United States. Id. at 33.
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`Touchstream’s motion seemingly takes issue with the inquiry concerning method claims.
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`The Federal Circuit, however, has long recognized that there is a “clear distinction between method
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`and apparatus claims for purposes of infringement liability.” Cardiac Pacemakers, Inc. v. St. Jude
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`Med., Inc., 576 F.3d 1348, 1363-65 (Fed. Cir. 2009) (en banc) (noting that “[s]upplying an intangible
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`step [i.e., a method] is . . . a physical impossibility” and holding that presumption against
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`extraterritoriality applies to Section 271(f)). It was therefore proper, and certainly not clearly
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`erroneous, for Judge Gilliland to have considered the kinds of asserted claims in evaluating the
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`propriety of Touchstream’s extremely broad discovery request within the bounds of the infringement
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`allegations.
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`Touchstream’s position is effectively that, pursuant to the asserted method claims, it is
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`entitled to worldwide damages over methods that are limited features (which are not always used)
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`in products with multiple other uses that are made and sold outside of the United States, and which
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`are never imported, on the basis of a mere casual connection as to design of some features of those
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`products in California. That is, relying on some design occurring in California, Touchstream
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`contends it is entitled to damages for unit products that are never made, used, sold, or imported to
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`the United States. Like Judge Gilliland did here, the Federal Circuit found that argument
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`unpersuasive in Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed.
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`Cir. 2013).
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`At the hearing, Touchstream argued that it was entitled to non-US data because the infringing
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`“products” “were made in the United States.” Of course, Touchstream only asserts method claims
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`to which this argument has no relevance, if it even makes sense. As a result, in its motion,
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`Touchstream now, like the patentee in Power Integrations, appears to “argue[] that it was foreseeable
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`that [Google’s] infringement in the United States would cause” Touchstream to sustain damages
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`linked to Google’s revenues “in foreign markets.” Id. at 1370. In other words, that “but for
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`[Google’s] domestic infringement,” here alleged as the design of some product features in
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`California, Touchstream’s foreign damages would not have arose. Id. The Federal Circuit
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`recognizes that “U.S. patent law does not operate extraterritorially to prohibit infringement abroad,”
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`and, accordingly, that they “do not . . . provide compensation for a defendant’s foreign exploitation
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`of a patented invention.” Id. at 1371; accord Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 454-
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`55 (2007) (“The presumption that United States law governs domestically but does not rule the world
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`applies with particular force in patent law.”).
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`In view of that, Power Integrations held that:
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`Regardless of how the argument is framed under the facts of this case,
`the underlying question here remains whether [plaintiff] is entitled to
`compensatory damages for injury caused by [alleged] infringing
`activity that occurred outside the territory of the United States. The
`answer is no.
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`[Plaintiff] is incorrect that, having established one or more acts of
`direct infringement in the United States [i.e., here alleged design in
`California], it may recover damages for [defendant’s] worldwide sales
`of the patented invention because those foreign sales were the direct,
`foreseeable result of [defendant’s] domestic infringement. [Plaintiff]
`has not cited any case law that supports an award of damages for sales
`consummated in foreign markets, regardless of any connection to
`infringing activity in the United States. To the contrary, the entirely
`extraterritorial production, use, or sale of an invention patented in the
`United States is an independent, intervening act that, under almost all
`circumstances, cuts off the chain of causation initiated by an act of
`domestic infringement.
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`711 F.3d at 1371-72. Similarly, in no uncertain terms, this Court has held that the precise tenuous
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`domestic design that Touchstream relies on is insufficient to open up the door to worldwide data.
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`Indeed, “[t]he mere domestic design of an infringing product is not an act of infringement.” Bel
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`Power Solutions v. Monolithic Power Systems, 6-21-CV-00655-ADA, ECF No. 63 (W.D. Tex.
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`2022) (Albright, J.) (denying motion to compel foreign sales) (emphasis added).
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`Touchstream’s reliance on Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283
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`(Fed. Cir. 2015), is misplaced. The court there emphasized that to overcome the “strength of the
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`presumption against extraterritoriality,” it “was not enough” to argue “that the damages-measuring
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`foreign activity ha[s] been factually caused, in the ordinary sense, by domestic activity.” Id. 1307.
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`So, “given the ease of finding cross-border casual connections,” the court recognized it was
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`imperative that the “presumption against extraterritoriality” be “given its due.” Id. at 1307 (citing
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`Morrison v. Nat’l Australia Bank Ltd., 561 U.S. 247, 266 (2010) (noting “presumption against
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`extraterritorial application would be a craven watchdog indeed if it retreated to its kennel whenever
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`some domestic activity is involved in the case”)). To that end, even where “sales” are tied to
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`“domestic infringement as a causation matter” (i.e., here from alleged design in California), “that
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`conclusion is not enough” to use the foreign “sales as a direct measure of the royalty except as to
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`sales that are domestic.” Id.
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`Carnegie Mellon addressed an issue (whether certain sales of chips happened in the US) that
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`is not present in this case, involving method claims, where the question is where the method was
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`practiced:
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`In Carnegie Mellon, the defendant Marvell, a California-based
`company, was alleged to have infringed two patents relating to
`semiconductor chips. Carnegie Mellon Univ. v. Marvell Tech. Grp.,
`Ltd., 986 F. Supp. 2d 574, 582 (W.D. Pa. 2013). Marvell
`manufactured the infringing chips in Taiwan and sold them to makers
`of hard-disk drives, who incorporated the chips into the drives. Id. at
`592-93. The hard-disk drives were then incorporated into laptops, and
`some of those laptops were eventually imported back to the United
`States. Id. at 594. The jury found that Marvell had infringed both
`patents, and awarded the plaintiff, CMU, a royalty based on Marvell’s
`worldwide sales. Carnegie Mellon, 807 F.3d at 1291-92. On appeal,
`Marvell challenged the royalty base used by the jury. The Federal
`Circuit held that the chips that Marvell manufactured and sold abroad
`but were ultimately imported into the United States were properly
`included in the royalty base. Id. at 1305.
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`Opticurrent, LLC v. Power Integrations, Inc., No. 17-CV-03597-EMC, 2019 WL 2389150, at *6
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`(N.D. Cal. June 5, 2019), aff’d, 815 F. App’x 547 (Fed. Cir. 2020).1
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`In Carnegie Mellon some infringing chips were imported into the United States, and there
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`was a dispute as to whether others were sold in the United States. Unlike in Carnegie Mellon, in
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`this case it is uncontested that the foreign activities or products (once used) that allegedly infringe
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`the accused method abroad, over which Touchstream requests discovery, are not sold, used, or
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`imported into the United States.
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`Here, Touchstream has already obtained extensive discovery concerning damages from
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`products that allegedly perform the accused method domestically, and there is no basis to allow
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`discovery on foreign usage concerning products that allegedly perform the accused method outside
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`the United States. As this Court has already held, Touchstream’s bare casual-connection assertion
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`about “[t]he mere domestic design of an infringing product” is insufficient for foreign data because
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`design alone “is not an act of infringement.” Bel Power Solutions, ECF No. 63.
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`IV. CONCLUSION
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`Touchstream fails to show a clear error of law or fact, and there is no new evidence to warrant
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`reconsideration. Accordingly, Google respectfully requests that the Court deny Touchstream’s
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`motion.
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`1 The other cases cited by Touchstream from sister courts are inconsequential as none are binding
`or establish a clear error of law.
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`Case 6:21-cv-00569-ADA Document 110 Filed 11/28/22 Page 9 of 10
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`Respectfully submitted,
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`By: /s/ Tharan Gregory Lanier with
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`permission, by Michael E. Jones
` Tharan Gregory Lanier
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`JONES DAY
`Tharan Gregory Lanier (Admitted pro hac vice)
`CA State Bar No. 138784
`E-mail: tglanier@jonesday.com
`Michael C. Hendershot (Admitted pro hac vice)
`CA State Bar No. 211830
`E-mail: mhendershot@jonesday.com
`Evan M. McLean (Admitted pro hac vice)
`CA State Bar No. 280660
`E-mail: emclean@jonesday.com
`1755 Embarcadero Road
`Palo Alto, CA 94303
`Telephone: (650) 739-3939
`Facsimile:
`(650) 739-3900
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`POTTER MINTON PC
`Michael E. Jones
`TX State Bar No. 10929400
`E-mail: mikejones@potterminton.com
`Patrick C. Clutter
`TX State Bar No. 24036374
`E-mail: patrickclutter@potterminton.com
`110 N. College Ave., Suite 500
`Tyler, TX 75702
`Telephone:
` (903) 597-8311
`Facsimile:
` (903) 593-0846
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`Attorneys for Defendant
`GOOGLE LLC
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`Dated: November 28, 2022
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`Case 6:21-cv-00569-ADA Document 110 Filed 11/28/22 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing was electronically filed with the Clerk
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`of Court using the CM/ECF system, which will send a notification of such filing to all counsel of
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`record who have appeared in this case per Local Rule CV-5(b) on November 28, 2022.
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`/s/ Michael E. Jones
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`Michael E. Jones
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