`
`
`
`Case 6:21-cv-00569-ADA Document 112 Filed 12/01/22 Page 1 of 5
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`GOOGLE LLC,
`
`
`Defendant.
`
`Civil Case No. 6:21-cv-569-ADA
`
`JURY TRIAL DEMANDED
`
`U.S. Magistrate Judge Derek T. Gilliland
`
`TOUCHSTREAM’S REPLY IN SUPPORT OF ITS MOTION FOR
`RECONSIDERATION OF DENIAL OF ITS MOTION TO
`COMPEL PRODUCTION OF GLOBAL USAGE METRICS
`
`Touchstream’s motion for reconsideration is directed to the Court’s purely legal basis for
`
`denying its motion to compel global usage metrics—that legal basis being, as stated at the
`
`November 16 hearing, that foreign damages are strictly prohibited when only method claims are
`
`asserted. As such, Touchstream’s motion to reconsider is brought pursuant to Rule 59(e) of the
`
`Federal Rules of Civil Procedure. See Templet v. HydroChem Inc., 367 F.3d 473, 478–79 (5th Cir.
`
`2014).1
`
`Rule 59(e) “allow[s] a party to correct manifest errors of law.” Waltman v. International
`
`Paper Co., 875 F.2d 468, 473 (5th Cir. 1989) (internal quotations omitted). A “court is within its
`
`discretion to reconsider its decision even in the absence of new evidence or an intervening change
`
`in or clarification of the substantive law.” Wilkins v. Toyotetsu America Inc., 2010 WL 986049, at
`
`*3 n.6 (W.D. Tex. Mar. 15, 2010) (granting defendant’s motion for reconsideration) (citing Saqui
`
`v. Pride Cent. America, LLC, 595 F.3d 206, 210 (5th Cir. 2010)); see also Martinez v. Boeing
`
`Aerospace Operations, Inc., 2006 WL 1788171, at *2, *4 (W.D. Tex. June 19, 2006) (granting in
`
`
`1
`Touchstream notes that its objections to Judge Albright pursuant to Rule 72(a) would be due December 13,
`but if the Court were to grant Touchstream’s motion to reconsider, then such an objection would be mooted.
`
`
`
`

`

`Case 6:21-cv-00569-ADA Document 112 Filed 12/01/22 Page 2 of 5
`
`
`
`part defendant’s motion for reconsideration, and noting that courts have “‘considerable discretion’
`
`in deciding whether to grant a rule 59(e) motion”).
`
`Respectfully, the Court should reconsider its decision here for the reasons discussed in
`
`Touchstream’s motion to reconsider, namely, that (i) all case law cited by the parties favored
`
`Touchstream; (ii) to the extent there is a conflict, Touchstream’s authorities control; and
`
`(iii) resolution of whether Touchstream’s evidence is ultimately sufficient to obtain foreign
`
`damages is not appropriate to resolve in a discovery motion. Mot at 1-3; see also McGinley v. Luv
`
`N’ Care, Ltd., 2018 WL 9814589, at *5 (W.D. La. Sept. 10, 2018) (“While [defendant]’s activities
`
`may ultimately not give rise to liability under U.S. patent law, [plaintiff] is entitled to discover the
`
`extent to which [defendant] has engaged in foreign sales activities”); Polaris Innovations Ltd. v.
`
`Kingston Tech. Co., 2017 WL 3275615, at *13 (C.D. Cal. Feb. 14, 2017) (acknowledging
`
`authorities limiting liability under U.S. patent law, but finding they did not defeat the relevance of
`
`the discovery sought).
`
`Unlike its prior briefing, which cited no cases addressing the issue of whether foreign
`
`damages can be recovered when tied to domestic infringement, Google’s response cites a single
`
`one: Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir.
`
`2013). But, Power Integrations was decided before the authoritative cases of Carnegie Mellon
`
`Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283, 1306-07 (Fed. Cir. 2015), and other cases in
`
`Touchstream’s motion to compel and motion to reconsider (all of which Google fails to cite or
`
`discuss), most notably the Supreme Court’s definitive ruling in WesternGeco LLC v. ION
`
`Geophysical Corp., 138 S. Ct. 2129, 2139 (2018) (suggesting that foreign damages are
`
`compensable for domestic infringement under § 271(a)), cited in (i) ArcherDX, LLC v. Qiagen
`
`Scis., LLC, 2022 WL 4597877, at *13 (D. Del. Sept. 30, 2022) (affirming verdict for foreign
`
`
`
`2
`
`

`

`Case 6:21-cv-00569-ADA Document 112 Filed 12/01/22 Page 3 of 5
`
`
`
`damages based on evidence that “domestic infringement (use of the accused products) was a
`
`substantial cause of the sale of products abroad”); (ii) 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)”); and (iii) 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”).
`
`Lastly, Google’s continued emphasis on a single line from Bel Power Solutions v.
`
`Monolithic Power Systems, 6-21-CV-00655-ADA, ECF No. 63 (W.D. Tex. 2022), is misplaced.
`
`In Bel Power, the Court did not address whether foreign damages are recoverable when tied to
`
`domestic infringement under 35 U.S.C. § 271(a)—which is the issue here. Instead, the Court in
`
`Bel Power Solutions denied a motion to compel foreign damages because Plaintiff’s theory was
`
`based on foreign damages tied to a “design win,” see id. at 2, not to domestic infringement. Nor
`
`did the Bel Power decision address (or have occasion to address) any of the authorities above
`
`finding that domestic infringement tied to foreign sales may warrant recovery of foreign damages.
`
`See WesternGeco, 138 S. Ct. at 2139; ArcherDX, 2022 WL 4597877, at *13; W.H. Wall, 2020 WL
`
`1644003, at *3 & n.2; Plastronics, 2019 WL 4392525, at *5; Carnegie Mellon, 807 F.3d at
`
`1306-07.
`
`
`
`3
`
`

`

`Case 6:21-cv-00569-ADA Document 112 Filed 12/01/22 Page 4 of 5
`
`
`
`For the foregoing reasons, and those stated in its motion, Touchstream respectfully requests
`
`that the Court reconsider its November 16 oral ruling (now entered at ECF No. 111) and compel
`
`Google to produce global usage metrics.
`
`Respectfully submitted,
`
`TOUCHSTREAM TECHNOLOGIES, INC.
`
`By:
`
` /s/ Justin R. Donoho
`One of Its Attorneys
`
`
`
`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
`
`
`Date: December 1, 2022
`
`
`
`
`
`
`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
`
`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
`
`
`Counsel for Plaintiff Touchstream Technologies, Inc.
`
`
`
`
`
`4
`
`

`

`Case 6:21-cv-00569-ADA Document 112 Filed 12/01/22 Page 5 of 5
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to the Federal Rules of Civil Procedure and the Local Rules for the Western
`
`District of Texas, I hereby certify that on the 1st day of December, 2022, I served the foregoing to
`
`the following counsel of record via the e-mail addresses shown below:
`
`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
`
`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
`
`Edwin O. Garcia, pro hac vice
`Jones Day
`51 Louisiana Avenue, N.W.
`Washington, DC 20001
`Tel: (202) 879-3695
`Email: edwingarcia@jonesday.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Justin R. Donoho
`Attorney for Plaintiff
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`