Case 6:21-cv-00569-ADA Document 121 Filed 12/16/22 Page 1 of 4
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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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`v.
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`GOOGLE LLC,
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`Plaintiff,
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`Defendant.
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`Civil Case No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANT GOOGLE LLC’S SUR-REPLY TO PLAINTIFF TOUCHSTREAM
`TECHNOLOGIES, INC.’S MOTION FOR RECONSIDERATION OF DENIAL OF
`MOTION TO COMPEL PRODUCTION OF GLOBAL USAGE METRICS
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`There is no dispute in this case that Touchstream’s motion for reconsideration seeks data
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`concerning devices that allegedly perform the accused method steps outside of the United States.
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`Dkt. 109 (Nov. 22, 2022 Hrg. Tr.) at 32-33 (conceding the “infringement” of the asserted method
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`claims is “abroad” and that the global products and revenue are sold and used “abroad”). There is
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`also no dispute that to prove infringement of method claims a patentee must show that all of the
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`steps are performed within the United States. With that backdrop, Google’s response focused on
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`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir. 2013),
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`where the Court addressed effectively the same arguments concerning foreign-damages discovery
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`as those made by Touchstream. Touchstream did not address this squarely on-point guidance in its
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`reply. Instead, Touchstream suggests that this Court should focus on Carnegie Mellon Univ. v.
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`Marvell Tech. Grp., Ltd., 807 F.3d 1283 (Fed. Cir. 2015) and WesternGeco LLC v. Ion, 138 S.Ct.
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`2129 (2018). Neither of those cases control here.
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`Google’s response in opposition to Touchstream addresses the differences between Power
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`Integrations, Carnegie Mellon, and this case, and explains why Power Integrations controls. To the
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`Case 6:21-cv-00569-ADA Document 121 Filed 12/16/22 Page 2 of 4
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`extent Touchstream maintains Power Integrations conflicts with Carnegie Mellon, however, the law
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`is clear that Power Integrations controls, because a later panel opinion cannot overturn an earlier
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`one. Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988) (“This court
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`has adopted the rule that prior decisions of a panel of the court are binding precedent on subsequent
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`panels unless and until overturned in banc. Where there is direct conflict, the precedential decision
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`is the first.” (internal citations omitted)).
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`Touchstream also argues, for the first time on reply in seeking reconsideration, that
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`WesternGeco alone decides the motion to compel. Not so. In fact, WesternGeco shows why
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`Touchstream cannot establish any error of law in Judge Gilliland’s ruling. Here, Touchstream has
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`only asserted infringement under § 271(a). WesternGeco addressed a different subsection of § 271,
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`narrowly holding that foreign damages are recoverable under § 271(f) in light of that statute’s unique
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`history and in a circumstance in which all of the relevant manufacturing and supply of the relevant
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`components originated from the United States. Section 271(f)(2) clearly contemplates foreign
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`activity by virtue its exportation component:
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`Whoever without authority supplies or causes to be supplied in or from the United States
`any component of a patented invention that is especially made or especially adapted for use
`in the invention and not a staple article or commodity of commerce suitable for substantial
`noninfringing use, where such component is uncombined in whole or in part, knowing that
`such component is so made or adapted and intending that such component will be combined
`outside of the United States in a manner that would infringe the patent if such combination
`occurred within the United States, shall be liable as an infringer.
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`In view of that, WesternGeco analyzed the focus of 35 U.S.C. 271(f) and asked “whether the
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`conduct relevant to that focus occurred in United States territory.” 138 S.Ct. at 2136. Unlike
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`§ 271(a), under the explicit text of § 271(f)(2), the focus “is on the act of exporting components from
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`the United States.” Id. at 2138. So it was the “domestic act of supplying the components that
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`infringed WesternGeco’s patents,” thus the damages awarded “were a domestic application of
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`Case 6:21-cv-00569-ADA Document 121 Filed 12/16/22 Page 3 of 4
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`§ 284.” Id. In other words, unlike in this case, WesternGeco addressed a statutory subsection that
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`focused on the foreign effect of exportation,.
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`The holding of WesternGeco with respect to § 271(f)(2)—a subsection of the statue that
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`unquestionably contemplates extraterritoriality—is therefore not applicable to Touchstream’s
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`infringement allegations under § 271(a), which is the subsection examined by Power Integrations.
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`In short, WesternGeco did not implicitly overturn Power Integrations, as Touchstream attempts to
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`suggest. As a result, Touchstream cannot establish any error of law in Judge Gilliland’s decision
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`and the motion for reconsideration should be denied.
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`Case 6:21-cv-00569-ADA Document 121 Filed 12/16/22 Page 4 of 4
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`Dated: December 7, 2022
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`Respectfully submitted,
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`By: /s/ Tharan Gregory Lanier, with
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`permission by Shaun W. Hassett
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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
`Shaun W. Hassett
`TX State Bar No. 24074372
`E-mail: shaunhassett@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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