Case 6:21-cv-00569-ADA Document 111 Filed 11/29/22 Page 1 of 8
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`
`Plaintiff,
`
`Civil Case No. 6:21-cv-569-ADA
`
`JURY TRIAL DEMANDED
`
`v.
`
`
`GOOGLE LLC,
`
`
`Defendant.
`
`
`
`
`
`
`
`
`DISCOVERY DISPUTE ORDER
`
`The Court hereby resolves the following discovery dispute submitted to the Court by email,
`
`and heard, at an in-person hearing on November 16, 2022, by United States Magistrate Judge
`
`Derek T. Gilliland.
`
`Touchstream’s Position:
`
`
`Touchstream hereby moves for an order compelling Google to produce the following
`
`information that is highly relevant to the computation of damages, proportional to the needs of the
`
`case, reasonably believed to be in Google’s possession, and not unduly burdensome to produce.
`
`Touchstream has long requested this information, including in its requests for production and
`
`interrogatories, served April 2022; its prior Motion to Compel, granted October 13, 2022; and its
`
`prior Motion to Compel, served October 28, 2022, conceded to by Google on November 2.
`
`In light of the agreed schedule requiring expert depositions to complete by December 16,
`
`Touchstream requests that Google shall use its best efforts to produce the requested information
`
`by November 14 or as soon afterward as the Court can hear our motion and as soon as possible in
`
`rolling productions thereafter, and shall produce it by November 23.
`
`Some of the requested information Google has agreed to produce, following the filing of
`
`the Motion to Compel granted on October 13. However, still Google has not produced it. In its
`1
`
`
`
`

`

`Case 6:21-cv-00569-ADA Document 111 Filed 11/29/22 Page 2 of 8
`
`email of November 4, Google’s counsel stated that Google is still “investigating” or “searching”
`
`and “will produce” some of this long-requested information. With this information, the issue to
`
`be decided by the Court is only timing of production.
`
`As to other information, Google’s counsel has flatly refused to produce it altogether,
`
`including but not limited to Play app revenue from 2,000+ cast-enabled content providers, global
`
`usage metrics, and usage metrics for Alphabet apps. However, this information is highly relevant
`
`to Touchstream’s calculation of damages.
`
`First, Play app revenue from 2,000+ cast-enabled content providers is a substantial figure
`
`and will feed directly into damages calculations. Touchstream has long sought this information,
`
`including in connection with the October 13 hearing on its October 7 Motion to Compel. 10/7
`
`Mot. to Compel (seeking financial information for Google Play); 10/13 Hr’g Tr. 10-13 (parties
`
`agreed to prioritize production of revenue for certain apps); 10/14 Dykal Email (“We further note
`
`that we maintain our request for financial information for any other video or audio streaming apps
`
`in the Google Play Store that are cast-enabled, but request prioritization for the above apps”).
`
`Second, as to global usage metrics, Touchstream intends to prove at trial that there is a
`
`sufficient nexus between Google’s infringement in the United States and damages associated with
`
`global devices. See, e.g., ECF No. 26, Google Mot. to Transfer at 2-3 (“the accused Chromecast
`
`technology was initially developed at Google’s headquarters in Mountain View, California, and
`
`development has primarily continued in or around Mountain View”); ECF No. 27-1, Golueke
`
`Decl. (Google developed Chromecast in California); Cooke Dep. Tr. 154:3-155:21 (Google
`
`developed, tested, and performed quality control on Chromecast in California). Global usage
`
`metrics are clearly relevant to damages upon such a showing. See ArcherDX, LLC v. Qiagen Scis.,
`
`LLC, 2022 WL 4597877, at *13 (D. Del. Sept. 30, 2022) (affirming verdict for foreign damages
`
`
`
`2
`
`

`

`Case 6:21-cv-00569-ADA Document 111 Filed 11/29/22 Page 3 of 8
`
`based on evidence that “domestic infringement (use of the accused products) was a substantial
`
`cause of the sale of products abroad,” stating, “[i]n CMU, the Federal Circuit noted that the
`
`products ‘practice[ ] the method in its normal intended use’ and concluded that causation to
`
`domestic infringing uses was established given the design, simulation, and testing of the chips in
`
`California involved infringing uses and caused the worldwide sales”), citing Carnegie Mellon
`
`Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283, 1306-07 (Fed. Cir. 2015) (“the inquiry is whether
`
`any of the § 271(a)-listed activities with respect to that product occur domestically”); W.H. Wall
`
`Fam. Holdings LLLP v. CeloNova Biosciences, Inc., 2020 WL 1644003, at *3 & n.2 (W.D. Tex.
`
`Apr. 2, 2020) (granting motion to compel foreign sales activity, stating, “Courts have found that
`
`foreign damages may be compensable for domestic infringement under § 271(a)”); Plastronics
`
`Socket Partners, Ltd. v. Dong Weon Hwang, 2019 WL 4392525, at *5 (E.D. Tex. June 11, 2019)
`
`(denying summary judgment, stating, “a genuine dispute of fact exists as to whether [plaintiff]
`
`suffered damages abroad as a result of Defendants’ domestic acts of infringement . . . [Plaintiff]
`
`has provided evidence to create a reasonable inference that Defendants committed domestic acts
`
`of infringement, such as importation, that ultimately led to damages via sales abroad”);
`
`WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 2129, 2139 (2018) (suggesting that
`
`foreign damages are compensable for domestic infringement under § 271(a)).
`
`Third, as to the Alphabet app metrics, they are clearly related to Touchstream’s damages.
`
`Even Google’s counsel suggested during a meet and confer on October 28, 2022, that, for purposes
`
`of computing damages, Touchstream should be able to use usage “metrics” such as those already
`
`produced partially by Google and identified in no. 2 below, to “stitch together” Chromecast-
`
`apportioned versions of reports on Google’s revenues.
`
`These deficiencies in the production of damages-related information are long overdue.
`
`
`
`3
`
`

`

`Case 6:21-cv-00569-ADA Document 111 Filed 11/29/22 Page 4 of 8
`
`Requested Relief:
`
`
`Accordingly, Touchstream respectfully requests the Court to compel Google to use its best
`
`efforts to produce the following information by November 14 or as soon afterward as the Court
`
`can hear our motion and as soon as possible in rolling productions thereafter, and to produce it by
`
`November 23:
`
`1. All Google Play app revenues received from cast-enabled content providers;
`
`2. US and global usage metrics sufficient to apportion cast versus non-cast usage on Alphabet
`
`apps and Google multi-use devices;
`
`3. All of Google’s Chromecast-related contracts with content providers that contain referral
`
`fee or other bounty provisions;
`
`4. All Chromecast-related referral and other bounty payments received by Google; and
`
`5. Supplements to Google’s answers to interrogatories 7, 8, 9, and 15. If Google chooses to
`
`cite documents pursuant to Rule 33(d), then it shall provide sufficient explanation to
`
`answer the interrogatories, such as whether the documents show US versus global
`
`information, are Chromecast-specific, or account for costs of revenues.
`
`Google’s Position:
`
`
`This motion arises from Touchstream’s untimely requests for data relating to products
`
`belatedly and improperly added to this case. The materials sought in Touchstream’s five
`
`enumerated requests fall into three basic categories: (a) materials Google does not maintain in the
`
`ordinary course; (b) materials Google has already produced or told Touchstream it will produce,
`
`if they exist; and (c) materials belatedly requested with no legal relevance to this case, production
`
`of which would be unduly burdensome and not proportional to the needs of the case.
`
`
`
`4
`
`

`

`Case 6:21-cv-00569-ADA Document 111 Filed 11/29/22 Page 5 of 8
`
`Google has already produced extensive financial and metrics information. To date Google
`
`has endeavored to investigate and provide information responsive to Touchstream’s unending and
`
`ever expanding requests (tens of millions of rows of metrics data, for just one example). But
`
`discovery is closed and the requests must end if the case is ever to proceed to resolution on its
`
`alleged merits on the current schedule.
`
`Google does not intend to burden the Court with a response to Touchstream’s inaccurate
`
`presentation of the back and forth on these requests, and instead turns now to Touchstream
`
`enumerated requests:
`
`Request 1 (Google Play revenues): Google had produced documents in compliance with
`
`the Court’s direction at the October 13 hearing. When Google explained that there are “literally
`
`thousands of apps on Google Play”, Touchstream agreed to provide a “specific list” of the “main
`
`[applications]” and, in response to the Court’s question about whether that resolved the issues,
`
`expressly stated that “Yes. That works”. Dkt. #99 at 10-13. Touchstream provided the list and
`
`Google produced the revenue. Now, apparently relying on counsel’s attempt to take back the
`
`representation made to the Court and agreement reached at the previous hearing, Touchstream is
`
`requesting the data for thousands of applications that were not on that list, data that it previously
`
`told the Court it would forgo seeking. Touchstream makes a conclusory allegation that such
`
`revenue is “highly relevant” to damages but fails to explain why. The requested revenue is not
`
`relevant because it reflects fees for use of the Google Play App store platform generally, so there
`
`is simply no connection between that revenue and casting, nor is there any reason why non-US
`
`revenue (if Touchstream is seeking that) is relevant. Moreover, the burden associated with
`
`production of this information is not proportional to the needs of the case. Discovery is closed and
`
`this belated, overly burdensome request should be denied.
`
`
`
`5
`
`

`

`Case 6:21-cv-00569-ADA Document 111 Filed 11/29/22 Page 6 of 8
`
`Request 2 (metrics): Google produced extensive metrics associated with casting in the
`
`United States as they are kept in the ordinary course, including for applications and devices.
`
`Touchstream now requests for the same sort of metrics but for non-casting usage of cast-enabled
`
`applications and devices. But that request misapprehends the data tracked by the cast team—just
`
`because the Cast team tracks a device’s casting usage does not mean that it tracks other uses.
`
`Google’s corporate designee confirmed that the Cast team does not track non-casting usage.
`
`Google informed Touchstream that the broad new request for total usage involves numerous
`
`distinct teams at Google (i.e. not the Chromecast team), and that it would take time to investigate
`
`what responsive data exists, if any. Google is investigating if total U.S. watch time data exists for
`
`certain YouTube apps and Google TV. Additionally, Touchstream seeks global metrics data,
`
`which is irrelevant to the damages it may seek based on the method claims asserted in this case.
`
`See Meyer Intellectual Properties Ltd. v. Bodum, Inc., 690 F.3d 1354, 1371 (Fed. Cir. 2012)
`
`(infringement of a method requires performance of each step within the United States).
`
`Infringement in the US is what matters, and Touchstream has the relevant data. Bel Power
`
`Solutions v. Monolithic Power Systems, 6-21-CV-00655-ADA, Dkt. 63 (W.D. Tex. 2022) (denying
`
`request for global data and foreign sales). Touchstream’s conclusory assertion that global metrics
`
`are “clearly relevant” does not make it so. Touchstream has offered no justification for why global
`
`metrics are relevant to its claims of infringement or damages, and the request for worldwide
`
`metrics from any app or device is overly broad, belated, and unduly burdensome. The U.S. metrics
`
`data already produced is composed of tens of millions of rows of data, and the burden associated
`
`with the collection and production of global metrics data is not proportional to the needs of the
`
`case.
`
`
`
`6
`
`

`

`Case 6:21-cv-00569-ADA Document 111 Filed 11/29/22 Page 7 of 8
`
`Request 3 (referral contracts): By Friday, November 11, Google will have completed (it
`
`has already produced many) its production of contracts between Google LLC and content
`
`providers that contain referral provisions that have been located after a reasonable search; that is
`
`the first date that those agreements could be produced due to their notice provisions.
`
`Request 4 (referral fees): Google has produced all U.S. revenue associated with referral
`
`fees ascertainable from the information maintained in the ordinary course dating back to 2013.
`
`Request 5 (interrogatory responses): Google has already supplemented its responses to
`
`interrogatories Nos. 7, 8, and 9 and has agreed that if further documents are produced, it will further
`
`supplement its responses. Regarding interrogatory No. 15, Touchstream has never explained what
`
`it contends is deficient, particularly in view of the documents cited under Rule 33(d) and the
`
`witnesses (including 30b6 designees) who were made available for relevant testimony.
`
`
`Requested Relief:
`
`Touchstream’s motion to compel is denied.
`
`
`Resolution
`
`
`
`At set forth on the record at the November 16, 2022 hearing, Touchstream’s motion is
`
`granted in part and denied in part, as follows: Google shall produce by November 30, 2022, and
`
`shall use best efforts to produce as soon as possible before November 30, 2022: (a) Play app
`
`revenues from 20 cast-enabled content providers to be identified by Touchstream by November
`
`17, 2022 at 5:00 PM; (b) to the extent kept in the ordinary course of business, US usage metrics
`
`concerning cast versus non-cast usage on Google multi-use devices to be identified by
`
`Touchstream by November 17, 2022 at 5:00 PM; and (c) to the extent kept in the ordinary course
`
`of business, US usage metrics concerning cast versus non-cast usage on Alphabet apps to be
`
`identified by Touchstream by November 17, 2022 at 5:00 PM, and limited to Alphabet apps
`
`
`
`7
`
`

`

`Case 6:21-cv-00569-ADA Document 111 Filed 11/29/22 Page 8 of 8
`
`already identified in Google’s produced cast usage spreadsheets. In addition, Google shall provide
`
`any supplemental interrogatory answers by December 1, 2022. Touchstream’s remaining requests
`
`for relief are denied.
`
`
`
`SIGNED this 29th day of November, 2022.
`
`
`
`
`_________________________________________________
`DEREK T. GILLILAND
` UNITED STATES MAGISTRATE JUDGE
`
`
`
`8
`
`