Case 6:21-cv-00569-ADA Document 149-7 Filed 01/12/23 Page 1 of 7
`Case 6:21-cv-00569-ADA Document 149-7 Filed 01/12/23 Page 1 of 7
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`EXHIBIT 7
`EXHIBIT 7
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`Case 6:21-cv-00569-ADA Document 149-7 Filed 01/12/23 Page 2 of 7
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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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`§
`§
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`§
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`Civil Case No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANT’S FINAL INVALIDITY CONTENTIONS
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`Defendant Google LLC (“Google” or “Defendant”), by their attorneys, make these Final
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`Invalidity Contentions concerning U.S. Patent Nos. 8,356,251 (the “’251 patent”), 8,782,528 (the
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`“’528 patent”), and 8,904,289 (the “’289 patent”) (collectively, the “Asserted Patents”), to Plaintiff
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`Touchstream Technologies, Inc. (“Plaintiff” or “Touchstream”) in connection with the above-
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`referenced action, pursuant to the Court’s Scheduling Order entered by the Court (Dkt. 21) and the
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`Court’s Order Governing Proceedings – Patent Case.
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`Defendant’s Final Invalidity Contentions herein reflect Defendant’s knowledge as of this
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`early date in the present action. Defendant reserves the right, to the extent permitted by the Court
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`and the applicable statutes and rules, including but not limited to the Court’s Order Governing
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`Proceedings – Patent Case, to modify and/or supplement the Final Invalidity Contentions in
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`response to becoming aware of additional prior art or information regarding prior art, any
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`modification or supplementation of Touchstream’s Infringement Contentions, any claim
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`construction by the Court, or as otherwise may be appropriate.
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`The Scheduling Order and the Order Governing Proceedings – Patent Case contemplate
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`that these Final Invalidity Contentions would be prepared and served in response to Touchstream’s
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`1
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`Case 6:21-cv-00569-ADA Document 149-7 Filed 01/12/23 Page 3 of 7
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`The references discussed in the Exhibits herein may be relied upon to show the state of the
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`art in the relevant time frame. This prior art identification is only exemplary and is not in any way
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`intended to limit the scope of what one of ordinary skill in the art would have understood at the
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`relevant time period of the alleged invention or the breadth of the state of the art to which the
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`alleged invention of the Asserted Patents relate. Defendant reserves the right to rely upon
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`additional prior art, information, testimony, and/or knowledge to demonstrate what one of ordinary
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`skill in the art would have understood prior to the date of the alleged invention of the asserted
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`claims of the Asserted Patents.
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`III.
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`IDENTIFICATION OF PRIOR ART
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`In addition to the prior art identified in the prosecution history of the Asserted Patents,
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`Defendant intend to rely upon the prior art identified below in support of these Final Invalidity
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`Contentions pursuant to the Court’s Order Governing Proceedings – Patent Case. In these
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`Contentions, Defendant provides the full identity of each item of prior art, including: (1) each
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`patent by its patent number, country of origin, and date of issue; (2) each non-patent publication
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`by its title, date of publication, and, where feasible, author and publisher; (3) 35 U.S.C. § 102(b)
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`prior art by the item offered for sale or publicly used or known, the date the offer or use took place
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`or the information became known, and the identity of the person or entity which made the use or
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`which made and received the offer, or the person or entity which made the information known or
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`to whom it was made known; (4) 35 U.S.C. § 102(f) prior art by the name of the person(s) from
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`whom and the circumstances under which the invention or any part of it was derived; and (5) 35
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`U.S.C. § 102(g) prior art by the identities of the person(s) or entities involved in and the
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`circumstances surrounding the making of the invention before the patent applicant(s), based on
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`currently available information.
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`7
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`Case 6:21-cv-00569-ADA Document 149-7 Filed 01/12/23 Page 4 of 7
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`Defendant’s identification of patents and publications as prior art herein and in the attached
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`claim charts under 35 U.S.C. §§ 102(a), (b), (e), and/or (g) and § 103 includes the publications
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`themselves as well as the use of the products, devices, and systems described therein. Although
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`Defendant’s investigation continue, information available to date indicates that such products,
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`devices, and systems were known or used in the country before the alleged invention of the claimed
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`subject matter of the asserted claims, and/or were invented by another who did not abandon,
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`suppress, or conceal, before the alleged invention of the claimed subject matter of the asserted
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`claim. Upon information and belief, these prior art products, devices, and systems and their
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`associated references anticipate and/or render obvious each of the asserted claims. Defendant
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`further intends to rely on inventor admissions concerning the scope of the prior art relevant to the
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`Asserted Patents found in, inter alia, the prosecution history of the Asserted Patents and any related
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`patents, patent applications, and/or re-examinations; any deposition testimony of the named
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`inventor on the Asserted Patents; and the papers filed and any evidence submitted by Touchstream
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`in conjunction with this litigation.
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`Defendant reserves the right to rely upon additional evidence of invalidity obtained from
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`third-parties in the future. In addition, Defendant reserves the right to assert invalidity under 35
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`U.S.C. § 102(c) or (d) to the extent that further investigation and discovery yield information
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`forming the basis for such claims.
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`A. Prior Art Patents
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`Defendant contends the following prior art patents anticipate or render obvious one or more
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`asserted claims of the Asserted Patents under 35 U.S.C. §§ 102(a), (b), and/or (e) or 35 U.S.C. §
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`103:
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`Ex.
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`Patent No.
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`Country of Origin
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`Issue/Publication Date
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`Short Title
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`8
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`Case 6:21-cv-00569-ADA Document 149-7 Filed 01/12/23 Page 5 of 7
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`A
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`B
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`C
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`D
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`E
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`F
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`G
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`H
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`I
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`J
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`J
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`K
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`L
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`M
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`N
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`K
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`X
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`X
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`X
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`
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`2009/029853
`5
`8,060,631
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`2009/001949
`2
`2009/027008
`5
`8,789,086
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`7,551,918
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`8,238,887
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`8,014,768
`
`2011/013842
`9
`2010/024169
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`9
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`9,680,886
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`8,544,046
`
`U.S.
`
`U.S.
`
`U.S.
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`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
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`December 3, 2009
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`June 11, 2009
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`January 15, 2009
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`October 29, 2009
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`July 22, 2014
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`June 23, 2009
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`August 7, 2012
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`September 6, 2011
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`June 9, 2011
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`Klein
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`Collart
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`Grasset
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`Jones
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`McCoy
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`Bowen
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`Filipov
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`Ackley
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`Schade
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`September 23, 2010
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`Muthukumarasa
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`my
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`May 22, 2014
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`Arunachalam
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`September 24, 2013
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`Gran
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`WO
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`WIPO/PCT
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`June 30, 2011
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`Al-Shaykh
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`2011/078879
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`9,490,998
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`U.S.
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`2012/014441
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`U.S.
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`November 8, 2016
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`June 7, 2012
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`Danciu
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`Wetzer
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`6
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`WO
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`WIPO/PCT
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`December 29, 2010
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`Al-Shaykh 2
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`2010/151284
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`8,644,757
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`7,383,229
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`8,739,294
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`U.S.
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`U.S.
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`U.S.
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`February 4, 2014
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`June 3, 2008
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`May 27, 2014
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`Curcio
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`Jacoby
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`Risan
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`9
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`X
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`X
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`X
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`X
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`X
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`X
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`X
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`X
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`Case 6:21-cv-00569-ADA Document 149-7 Filed 01/12/23 Page 6 of 7
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`2006/008582
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`U.S.
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`April 20, 2006
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`Bell
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`3
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`8,614,625
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`U.S.
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`2009/032006
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`U.S.
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`5
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`8,918,812
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`61/450,472
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`(9,258,609)
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`U.S.
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`U.S.
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`December 24, 2013
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`December 24, 2009
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`Alsina
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`Sloo
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`December 23, 2014
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`Hayward
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`February 9, 2016
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`Odryna
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`2012/015150
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`U.S.
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`June 14, 2012
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`McCarthy
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`9
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`7,136,709
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`U.S.
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`November 14, 2006
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`Arling
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`WO
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`WIPO/PCT
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`June 12, 2008
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`Chapweske
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`2008/070050
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`B. Prior Art Publications
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`Defendant contends the following publications anticipate or render obvious one or more
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`asserted claims of the Asserted Patents under 35 U.S.C. §§ 102(a) and/or (b) or 35 U.S.C. § 103:
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`Author/Publisher
` Ex. Title
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`See patent publications above
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`C. Prior Art Systems
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`Publication Date Short Title
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`Defendant contends the following prior art systems anticipate or render obvious one or
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`more asserted claims of the Asserted Patents under 35 U.S.C. §§ 102(a), (b), and/or (g), or 35
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`U.S.C. §103:
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`10
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`Case 6:21-cv-00569-ADA Document 149-7 Filed 01/12/23 Page 7 of 7
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`System
`YouTube Remote
`and YouTube
`Leanback with
`Google TV
`TwonkyMedia
`and/or
`TwonkyManager
`and related products
`and systems
`Zelfy Peel
`Boxee
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`
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`Relevant Dates Persons/Entities Involved
`2010-2011
`Google
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`Short Title
`YouTube Remote
`and Leanback with
`Google TV
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`2009-2011
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`Twonky Media, PacketVideo Twonky
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`2010-2011
`2009-2011
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`Zelfy, Peel Technologies
`Boxee, Inc., D-Link
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`Zelfy Peel
`Boxee
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`D. Prior Art under 35 U.S.C. § 102(f)
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`Defendant will assert that the Asserted Patents are invalid under 35 U.S.C. § 102(f) in the
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`event Defendant obtains evidence that the named inventor of the Asserted Patents did not alone
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`invent the subject matter claimed in the Asserted Patents. Should Defendant obtain such evidence,
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`Defendant will provide the name of the person(s) from whom and the circumstances under which
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`the invention or any part of it was derived.
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`E. Prior Art under 35 U.S.C. § 102(e) and 35 U.S.C. § 102(g)
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`At present, Touchstream has neither adequately alleged nor provided sufficient evidence
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`of a conception date for the Asserted Patents earlier than the claimed priority date on the face of
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`the Asserted Patents. Should the Court permit Touchstream to provide evidence of an earlier
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`conception date, Defendant reserves the right to assert that any of the § 102(a) prior art is § 102(e)
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`and/or § 102(g) prior art.
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`Defendant contends that each of the disclosures in Sections III.A. (list of prior art patents),
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`III.B. (list of prior art publications), and III.C. (list of prior art systems) constitute prior inventions
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`to the asserted claims as detailed above.
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`IV.
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`INVALIDITY UNDER 35 U.S.C. §§ 102 AND 103
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`11
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