Case 6:21-cv-00569-ADA Document 142 Filed 01/05/23 Page 1 of 11
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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.
`
`Plaintiff
`
`v.
`
`GOOGLE LLC
`
`Defendant.
`
` Case No. 6:21-cv-569
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`JURY TRIAL DEMANDED
`
`TOUCHSTREAM’S MOTION TO EXCLUDE PORTIONS OF DEFENDANT’S
`INVALIDITY CONTENTIONS AND EXPERT REPORT, AND BRIEF IN SUPPORT
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`Case 6:21-cv-00569-ADA Document 142 Filed 01/05/23 Page 2 of 11
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`LIST OF EXHIBITS
`Google’s Final Invalidity Contentions, served September 8, 2022
`Opening Invalidity Report of Dr. Ketan Mayer-Patel, served November 11, 2022
`Google’s Reply Brief to the Patent Trial and Appeal Board, dated August 26, 2022
`Google’s Email to Touchstream Stipulating to IPR Estoppel
`PTAB Institution Decision, IPR2022-00793
`Google’s Final Invalidity Contentions, Exhibit K “Twonky System” Claim Chart
`Google’s Final Invalidity Contentions, Exhibit O “Boxee System” Claim Chart
`Google’s Final Invalidity Contentions, Exhibit J “Zelfy Peel System” Claim Chart
`Dr. Ketan Mayer-Patel Deposition
`Google’s Second Amended Initial Disclosures, Dated December 1, 2022
`Opening Invalidity Report of Dr. Ketan Mayer-Patel, Appendix D “Declaration of
`Rick Schwartz”
`Touchstream’s Preliminary Response to Google Petition, IPR2022-00793
`Google’s IPR Petitions in IPR2022-00793, IPR2022-00794, IPR2022-00795
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`Ex. 1
`Ex. 2
`Ex. 3
`Ex. 4
`Ex. 5
`Ex. 9
`Ex. 10
`Ex. 11
`Ex. 12
`Ex. 13
`Ex. 14
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`Ex. 15
`Ex. 16
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`i
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`Case 6:21-cv-00569-ADA Document 142 Filed 01/05/23 Page 3 of 11
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`Google wants to have it both ways. Google avoided dismissal of its dilatory IPR petitions
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`on Fintiv grounds by stipulating that it would not assert invalidity grounds in this case that it could
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`have asserted in the IPR. But Google is now trying to break that promise by asserting “system”
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`theories that, in truth, are just collections of documents that Google could have used (and in many
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`cases did use) in its IPR petitions. This Court should join other courts in preventing Google from
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`attempting an end-run around its Sotera stipulation. Cf., Gen. Access Sols., Ltd. v. Sprint Spectrum
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`L.P., No. 2:20-CV-00007-RWS, 2020 WL 12572917, at *3 (E.D. Tex. Dec. 1, 2020) (“When a
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`party asserts a prior art system and relies exclusively on printed subject matter that it could have
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`raised in IPR, it is not asserting a system at all.”).
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`I. FACTUAL BACKGROUND
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`In April, nearly a year after Touchstream sued Google for patent infringement, Google
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`petitioned the Patent Trial and Appeal Board (“PTAB”) to institute inter partes reviews (IPRs) of
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`each of the patents in suit. See Ex. 16 , Google’s Petitions in IPR2022-00793, IPR2022-00794,
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`IPR2022-00795. Touchstream’s preliminary response requested that the PTAB deny institution
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`because this litigation was well underway and the institution of IPRs would only result in wasteful
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`and costly duplication. Ex. 15, Touchstream’s Preliminary Response to Google Petition, IPR2022-
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`00793, at 45–50. Trial in this action was scheduled to occur about eight months before the PTAB’s
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`deadline for decision, claim construction was already complete, the parties had exchanged multiple
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`rounds of infringement and invalidity contentions, and production of documents and electronically
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`stored information was substantially complete.
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`In these respects, Touchstream argued, the status of this action was similar to the parallel
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`litigation in Verizon Bus. Network Servs. LLC v. Huawei Techs. Co. Ltd., IPR2020-01292, 2021
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`WL 242402 (PTAB Jan. 25, 2021), where the PTAB denied institution, citing the substantial
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`investment of the parties and the court. Google responded with a so-called “Sotera stipulation,”1
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`promising that it would not assert any grounds in this litigation that Google “reasonably could have
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`raised” in its IPRs. See Ex. 3, Google’s Reply Brief to PTAB at 4; Ex. 4, Google Email to
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`Touchstream Stipulating to IPR Estoppel. Relying expressly on this stipulation, the PTAB
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`overlooked Google’s dilatory and inefficient behavior and instituted the IPRs. Ex. 5, PTAB
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`Institution Decision, IPR2022-00793, at 8–9.
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`Despite these promises, Google maintained the invalidity positions in its Final Invalidity
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`Contentions—which contend that the asserted claims are anticipated or rendered obvious by
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`various combinations of patents, patent applications, and other printed publications—and all of
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`which are eligible for assertion in IPRs. See Ex. 1 Final Invalidity Contentions, Served Sept. 8,
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`2022, at 8–9 (listing patents and printed publications). Moreover, in an obvious attempt to
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`circumvent its Sotera stipulation, Google recasts its invalidity theories as “system” theories.
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`Indeed, much of Google’s “system” prior art—specifically the Boxee, Twonky, and Zelfy Peel
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`systems—are based on patents and printed publications that Google could also have asserted (or
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`actually did assert) before the PTAB.
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`Google’s expert report on invalidity is similar, contending that the asserted claims are
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`invalid as obvious over various combinations of the following items of alleged prior art:
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`
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`
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`
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`a GTS “system”;
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`a Twonky “system”;
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`a Boxee “system”;
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`1 Referencing a precedential PTAB decision. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, 2020 WL
`7049825 (PTAB Dec. 1, 2020).
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`2
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`Case 6:21-cv-00569-ADA Document 142 Filed 01/05/23 Page 5 of 11
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` U.S. Patent No. 9,490,998, (“GTS-8”)2;
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` U.S. Publication No. 2010/0241699 (“Muthukumarasamy”);
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` U.S. Patent No. 8,060,631 (“Collart”); and
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` U.S. Patent No. 8,918,812 (“Hayward”).
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`II. ARGUMENT
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`Google seeks to assert invalidity grounds that it is precluded from raising because those
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`grounds reasonably could have been raised in the IPRs. See Ex. 4. In particular, Google seeks to
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`assert invalidity grounds based on patents and printed publications, which are permitted grounds
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`for IPR (see 35 U.S.C. § 311(b)) and which Google “reasonably could have raised” in its Petitions.
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`Google gained the benefit of its stipulation when the PTAB instituted its IPR petitions—expressly
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`based on its stipulation—and Google’s stipulation should be enforced. These grounds should be
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`excluded.
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`Under Google’s Sotera stipulation (see Ex.4), Google agreed to be bound by the same
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`limits set forth in the IPR estoppel provision of § 315—which precludes an IPR petitioner from
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`asserting “any [invalidity] ground that the petitioner raised or reasonably could have raised during
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`that inter partes review” in litigation involving the same patent and claims. 35 U.S.C. § 315(e)(2).
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`Moreover, Google’s stipulation succeeded in convincing the PTAB to institute IPRs on Google’s
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`Petitions. Accordingly, this Court should enforce the stipulation as a matter of judicial estoppel.
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`See SanDisk Corp. v. Memorex Prod., Inc., 415 F.3d 1278, 1290 (Fed. Cir. 2005) (“Judicial
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`estoppel is an equitable doctrine that prevents a litigant from ‘perverting’ the judicial process by,
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`2 Although Dr. Mayer-Patel describes GTS-8, the Danciu patent, as merely “indicative” of the
`alleged GTS system’s functionality, Ex. 2 at ¶ 79, he asserts it on multiple occasions as a prior-art
`reference in its own right. See, e.g., Ex. 2 § VIII.C (asserting combination of Twonky and GTS-
`8).
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`after urging and prevailing on a particular position in one litigation, urging a contrary position in
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`a subsequent proceeding—or at a later phase of the same proceeding—against one who relied on
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`the earlier position.”).
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`Google attempts to circumvent its stipulation by characterizing groups of patents and
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`printed publications as evidence of various purported “systems” (specifically, Boxee, Zelfy Peel,
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`and Twonky). But in reality, these are just convenient characterizations of patents and printed
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`publications that Google raised or reasonably could have raised in the IPRs. In fact, two of the
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`references Google is asserting in this case—Muthukumarasamy and Hayward—are the actual
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`grounds of Google’s IPRs.
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`Google is not the first IPR petitioner to try this tactic. Other courts have held that if a
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`purported prior art system “relies on or is based on patents or printed publications that [the
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`defendant] would otherwise be estopped from pursuing at trial . . . then [it] should be estopped
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`from presenting those patents and printed publications at trial.” Gen. Access Sols., Ltd. v. Sprint
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`Spectrum L.P., No. 2:20-CV-00007-RWS, 2020 WL 12572917, at *3 (E.D. Tex. Dec. 1, 2020)
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`(alterations in original) (quoting Biscotti Inc. v. Microsoft Corp., No. 2:13-CV-1015, 2017 WL
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`2526231, at *8 (E.D. Tex. May 11, 2017)); See also Avanos Medical Sales, LLC v. Medtronic
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`Sofamor Danek USA, Inc., 2021 WL 8693677, at *2 (W.D. Tenn. 2021) (granting motion in limine
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`to exclude evidence of a purported prior art product based on IPR estoppel where the relevant
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`features of the product were described in publicly available documents).
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`Two of the “systems” Google asserts in its Final Invalidity Contentions are based entirely
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`on patents and printed publications that were publically available. Every single document cited in
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`support of the supposed Boxee system is a printed publication that Google could have asserted in
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`an IPR proceeding. See Ex. 10 at 2–4. Moreover, to the extent some of those publications describe
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`Case 6:21-cv-00569-ADA Document 142 Filed 01/05/23 Page 7 of 11
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`the features of a product that was in public use (i.e., a Boxee “system” consistent with printed
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`publications asserted by Google), Google has yet to identify a witness who could testify to the
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`existence of any “Boxee” system independent of the descriptions in public documents. See Ex. 13,
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`Google’s Second Amended Initial Disclosures. The so-called “Zelfy Peel” system suffers from the
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`same defects. Google’s contentions cited six documents showing the features of the purported
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`system, and all of them qualify as “printed publications” for the purposes of an IPR. See Ex. 11 at
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`2. Moreover, nearly all of the claim mapping is directed to the Muthukumarasamy patent
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`application (U.S. Publication No. 2010/0241699) and the Arunachalam patent (U.S. Patent No.
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`9,680,886).3
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`A third purported system, Twonky, also relies primarily on patents and other printed
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`publications. The references identified as T-1, T-7 and T-8 are U.S. Patent No. 8,544,046 (Gran)
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`and Patent Cooperation Treaty applications WO 2011/078879 and WO 2010/151284. Those
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`documents provide nearly all of the support for Google’s claim mapping in the Final Infringement
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`Contentions and in Dr Mayer-Patel’s analysis. See Ex. 9; See, e.g., Ex. 2 § VIII.C.2–C.8. Google
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`attempts to transform these documents into evidence of a system with the declaration of Rick
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`Schwartz, which Google attached as an appendix to Dr. Mayer-Patel’s report. Ex. 14, Opening
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`Invalidity Report of Dr. Ketan Mayer-Patel, Appendix D “Declaration of Rick Schwartz.”
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`Although the document was submitted with Dr. Mayer-Patel’s report, he cites it only once, for the
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`proposition that a Twonky “system” really existed outside of printed publications.
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`There are two problems with this, however. First, the Schwartz declaration can be of no
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`use to Google because Google did not produce the declaration until after the close of fact discovery
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`3 Google appears to have abandoned any effort to assert the Zelfy-Peel system. See Ex. 12, Mayer-Patel Deposition,
`at 261:6-11 (conceding that the Zelfy Peel “system” had no role to play in his invalidity analysis beyond the
`Muthukumarasamy application).
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`when it served Dr. Mayer-Patel’s report. Consequently, his declaration must also be excluded due
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`to Google’s failure to comply with its obligations under Federal Rules of Civil Procedure 26(a),
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`26 (e), and 37(c). Without Schwartz and the documents he seeks to prove up, Google has no means
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`of showing that a Twonky “system” ever existed.
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`Second, even if Schwartz’s declaration were proper, the Court should still exclude Twonky.
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`Although Schwartz testifies that various documents are “true and correct” copies of the originals,
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`at no point does he offer any testimony that those (or any other) documents accurately describe a
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`single, unified “Twonky” system. Rather, Google maps nearly all the claim limitations to T-1, T-
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`7, or T-9. In short, the inclusion of Schwarz’s declaration with Dr. Mayer Patel’s report is nothing
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`more than an eleventh-hour attempt to paint a group of ostensibly related printed references as
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`representative of a “system” rather than what they are: an amalgam of patents and printed
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`publications that could have been asserted in Google’s IPRs. Consequently, any invalidity
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`contentions that purport to use the Twonky system in combination with other prior art in the form
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`of patents and printed publications should also be excluded due to Google’s Sotera stipulation.
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`Google’s IPR stipulation precludes any invalidity positions that it could have brought
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`before the PTAB. That is, patents and printed publications Google could have asserted as grounds
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`for an IPR petition. Google should not be allowed to end-run around that stipulation by using those
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`patents and printed publications by characterizing them as evidence of a “systems.” Gen. Access
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`Sols., 2020 WL 12572917, at *3; Avanos Medical Sales, 2021 WL 8693677, at *2.
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`III. CONCLUSION AND PRAYER FOR RELIEF
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`For the reasons set out above, Touchstream asks the Court to exclude the following as
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`precluded by Google’s IPR stipulation:
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` The following sections of Dr. Mayer-Patel’s Invalidity Report:
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`o VIII.C (asserting combination of Twonky and GTS-8);
`o § VIII.D (asserting a combination of Twonky and Muthukumarasamy);
`o § VIII.E (asserting combination of Boxee and GTS-8);
`o § VIII.F (asserting combination of Twonky and Collart);
`o § VIII.G (asserting a combination of Boxee and Muthukumarasamy);
`o §§ IX.C, X.C, (asserting combination of Twonky, GTS-8, and Hayward);
`o §§ IX.D, X.D (asserting combination of Twonky, Muthukumarasamy, and
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`Hayward);
`o §§ IX.E, X.E (asserting combination of Boxee, GTS-8, and Hayward);
`o § VIII.C (asserting combination of Twonky and GTS-8);
`o §§ IX.F, X.F (asserting combination of Twonky, Collart, and Hayward);
`o and §§ IX.G, XG (asserting combination of Boxee, Muthukumarasamy, and
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`Hayward).
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` Any portion of Google’s Final Invalidity Contentions that purports to assert any
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`combination of these references or any other theory that purports to rely on a
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`combination of the purported Boxee, Twonky, and Zelfy Peel systems together with
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`one or more of the alleged prior-art patents and patent applications.
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`Case 6:21-cv-00569-ADA Document 142 Filed 01/05/23 Page 10 of 11
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`Dated: December 29, 2022
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`Respectfully submitted,
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`SHOOK, HARDY & BACON L.L.P.
`
`Counsel for Plaintiff Touchstream
`
`Gary M. Miller, pro hac vice
`Justin R. Donoho, pro hac vice
`111 S. Wacker Drive, Suite 4700
`Chicago, IL 60606
`(312) 704-7700
`Fax: 312-558-1195
`Email: gmiller@shb.com
`Email: jdonoho@shb.com
`
`Michael W. Gray (TX Bar No. 24094385
`Fiona A. Bell (TX Bar No. 24052288)
`Andrew M. Long (TX Bar No. 24123079)
`600 Travis Street, Suite 3400
`Houston, TX 77002
`Phone: (713) 227-2008
`Fax: (713) 227-9508
`mgray@shb.com
`fbell@shb.com
`amlong@shb.com
`
`Philip A Eckert, pro hac vice
`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
`Phone: (816) 474-6550
`Fax: (816) 421-5547
`peckert@shb.com
`rdykal@shb.com
`bwebb@shb.com
`jbergsten@shb.com
`
`Counsel for Plaintiff Touchstream
`Technologie, Inc.
`
` /s/ Ryan D. Dykal
`Attorney for Plaintiff
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`Case 6:21-cv-00569-ADA Document 142 Filed 01/05/23 Page 11 of 11
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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 13th day of December, 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
`
`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
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