Case 6:21-cv-00569-ADA Document 173 Filed 01/19/23 Page 1 of 24
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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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`Civil Case No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANT GOOGLE LLC’S OPPOSITION TO PLAINTIFF TOUCHSTREAM
`TECHNOLOGIES, INC.’S MOTION FOR SUMMARY JUDGMENT OF VALIDITY
`UNDER 35 U.S.C. § 101 AND TO DISPOSE OF GTS “SYSTEM” THEORIES
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`FILED UNDER SEAL
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`Case 6:21-cv-00569-ADA Document 173 Filed 01/19/23 Page 2 of 24
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`TABLE OF CONTENTS
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`Page
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`A.
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`Touchstream Is Not Entitled To Summary Judgment Of Validity Under
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`1.
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`2.
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`3.
`4.
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`All Asserted Claims Are Directed To Methods Of Controlling
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`The Asserted Claims Fail Alice Step 1 As A Matter Of Law
`Because They Are Directed To The Abstract Idea Of Controlling
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`Touchstream’s § 101 Arguments Require Summary Judgment Of
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`INTRODUCTION ............................................................................................................. 1
`ARGUMENT ..................................................................................................................... 1
`§ 101....................................................................................................................... 1
`Content Over A Network ........................................................................... 2
`Media Content Over A Network ................................................................ 3
`Touchstream’s Arguments Under Alice Step 2 Fare No Better ................. 7
`Non-Infringement .................................................................................... 10
`the GTS System ................................................................................................... 12
`The GTS System Was A Working Prior Art System ............................... 12
`Touchstream on Google’s GTS System Defenses ................................... 13
`CONCLUSION ................................................................................................................ 16
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`B.
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`Touchstream Is Not Entitled to Summary Judgment Of Validity Regarding
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`1.
`2.
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`At Minimum, Disputes of Fact Regarding the “Identify a Particular
`Media Player” Limitation Preclude Summary Judgment to
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`-i-
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`I.
`II.
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`III.
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`TABLE OF AUTHORITIES
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`Page
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`CASES
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`Affinity Labs of Texas, LLC v. Amazon.com Inc.,
`838 F.3d 1266 (Fed. Cir. 2016)............................................................................................5, 10
`
`Broadband iTV, Inc. v. Amazon.com, Inc.,
`2022 WL 4703425 (W.D. Tex. 2022) (Albright, J.) ..........................................................3, 6, 7
`
`ChargePoint, Inc. v. SemaConnect, Inc.,
`920 F.3d 759 (Fed. Cir. 2019)....................................................................................................5
`
`ClearDoc, Inc. v. RiversideFM, Inc.,
`2022 WL 3355960 (D. Del. 2022) .....................................................................................4, 5, 6
`
`Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016)..................................................................................................2
`
`In re TLI Commc’ns LLC Pat. Litig.,
`823 F.3d 607 (Fed. Cir. 2016)................................................................................................5, 6
`
`Infernal Tech., LLC v. Sony Interactive Ent. LLC,
`2021 WL 405813 (E.D. Tex. 2021) ...........................................................................................7
`
`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed. Cir. 2015)..................................................................................................2
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`566 U.S. 66 (2012) .....................................................................................................................2
`
`SAP Am., Inc. v. InvestPic, LLC,
`898 F. 3d 1161 (Fed. Cir. 2018)...............................................................................................10
`
`TAGI v. Turner Sports,
`2017 WL 3469528 (N.D. Ga. 2017) ..........................................................................................6
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`VeriPath, Inc. v. Didomi,
`842 F. App’x 640 (Fed. Cir. 2021) ............................................................................................4
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`Case 6:21-cv-00569-ADA Document 173 Filed 01/19/23 Page 4 of 24
`Case 6:21-cv-00569-ADA Document 173 Filed 01/19/23 Page 4 of 24
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`PUBLIC VERSION
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`TABLE OF ABBREVIATIONS
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`Abbreviation
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`Definition
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`Touchstream
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`Touchstream Technologies,Inc.
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`Google
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`Google LLC
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`Asserted Patents
`U.S. Patent Nos. 8,356,251 (the “’251 Patent”), 8,782,528 (the
`“°528 Patent”), and 8,904,289 (the “’289 Patent”)
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`Asserted Claims
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`Claims 1, 5, and 7-9 of the ’251 Patent, claims 1-5, 8, 11, 12, 14,
`and 28 of the ’528 Patent, and claims 1, 2, 6, 7, and 8 of the ’289
`Patent
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`POSA
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`Person Of Ordinary Skill In The Art
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`*All emphasis added unless stated otherwise
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`Case 6:21-cv-00569-ADA Document 173 Filed 01/19/23 Page 5 of 24
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`PUBLIC VERSION
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`TABLE OF EXHIBITS
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`Exhibit
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`Ex. |
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`Ex. 2
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`Ex. 3
`Ex. 4
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`Ex. 6
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`Ex. 7
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`Ex. 8
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`Ex. 9
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`Ex. 10
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`Ex. 11
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`Ex. 12
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`Ex. 13
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`Ex. 14
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`Ex. 15
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`Ex. 16
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`Ex. 17
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`Ex. 18
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`Ex. 19
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`GTS-1 (https://youtube.googleblog.com/2010/11/control-youtube-on-desktop-
`or-tv-with.html, Control YouTube on the desktop, or the TV... with the
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`YouTube Remote app for your phone, by Kuan Yong, Senior Product Manager, Ex. 5
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`GTS-2 (“YouTube Remote,” available at
`,
`https://www.youtube.com/watch?v=txIPVu6
`GTS-3 (Youtube Lounge/Youbiquity Presentation, created and last modified
`Aug. 25, 2010
`GTS-4 (https://www.youtube.com/watch?v=EGdsOslqG2s, posted Nov. 14,
`2010
`GTS-8 (U.S. Patent No. 9,490,998, which claims the benefit of U.S. Provisional
`Application No. 61/411,386, which wasfiled on Nov. 8, 2010
`GTS-10 (https://palblog.fxpal.com/?p=4953, Lean back with YouTube and
`Android, by Surendar Chandra, Nov. 11, 2010, available at
`https://web.archive.org/web/20111106221315/https://palblog.fxpal.com/?p=495
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`ices.html
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`GTS-19
`(https://web.archive.org/web/20101005055322/http:/www.google.com/tv/feature
`s.html, dated October 5, 2010
`GTS-20 (https://googleblog.blogspot.com/2010/05/announcing-google-tv-tv-
`meets-web-web.html, dated May 27, 2010)
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`Google, dated October
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`GTS-26 (“Pairing GoogleTV remote App with GoogleTV”video available at
`https://www.youtube.com/watch?v=kqenKo4XH3w,posted by Jeff Leinen on
`December 15, 2010
`T-2 (TwonkyManager — Features (dated June 13, 2010), archived at
`https://web.archive.org/web/20100613103807/http://twonky.com/products/twon
`nanager/features.aspx
`T-3 (TwonkyManager — Compatibility (dated June 13, 2010), archived at
`https://web.archive.org/web/20100613103725/http://www.twonky.com/products
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`T-4 (Twonky Support Devices (dated November20, 2010), archived at
`https://web.archive.org/web/2010112002233 1/http://twonky.com/compatibledev
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`Description
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`T-9 (YouTube — PacketVideo,available at
`https://www.youtube.com/watch?v=LOdC gBdiQJO
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`Deposition of Dr. Ketan MayerPatel (““Mayer-Patel Dep. Tr.”
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`(“Levai Dep. Tr.”
`Deposition of Janos Levai
`Ex. 22
`*Exs. 1-22 refer to thosefiled with Google’s Opposition to Touchstream’s Motion to
`Exclude Expert Testimony of Dr. Ketan Mayer-Patel
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`Dr. Kevin C. Almeroth Regarding Infringement (“Almeroth Open. Rep.”
`Deposition of Dr. Kevin Almeroth (“Almeroth Dep.”
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`TS-00919352
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`Case 6:21-cv-00569-ADA Document 173 Filed 01/19/23 Page 7 of 24
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`I.
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`INTRODUCTION
`Touchstream seeks summary judgment on Google’s defenses that the Asserted Patents are
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`invalid under § 101 and in view of the prior art GTS System. Both arguments fail.
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`First, Touchstream contends that Google’s invalidity defense under § 101 fails as a matter
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`of law because there are no genuine issues of fact that the Asserted Claims are directed to patent-
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`eligible subject matter. The Asserted Claims all relate to methods to control content on a display
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`(or content presentation) device. Touchstream relies on seemingly technical language, but that
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`does not change the fact that the basic thrust of the claims is directed to subject matter excluded
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`under Alice Step 1—controlling content over a network. And, under Alice Step 2 the claim
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`limitations involve no more than the performance of well-understood, routine, and conventional
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`activities. Touchstream’s motion as to Google’s § 101 defense should be denied.
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`Second, Touchstream argues that Google’s invalidity defenses based on the prior art system
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`relating to the combined use of YouTube Remote, YouTube Leanback, and Google TV (the “GTS
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`System”) should be disposed of as a matter of law. Touchstream primarily argues that the GTS
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`System does not disclose the claim limitation reciting signaling or messaging that “identify the
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`particular media player.” But the GTS system (via its component Google TV) provides several
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`streaming media applications that may be remotely controlled, and YouTube and other application
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`controllers perform the claimed step of identification of the controlled media player. Touchstream
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`disagrees, but its motion shows that material disputes of fact require denial of summary judgment.
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`II.
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`ARGUMENT
`Touchstream Is Not Entitled To Summary Judgment Of Validity Under
`A.
`§ 101
`This Court is well familiar with the standard for summary judgment. Courts apply a two-
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`step process to determine whether claims cover patent-ineligible “abstract ideas.” Alice Corp. Pty.
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`Ltd v. CLS Bank Int’l, 573 U.S. 208, 217-18 (2014). First, the court determines whether the claim’s
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`“character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active
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`Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). The court looks at the claim’s “focus” or
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`“basic thrust” to determine whether it is directed to an abstract idea. Elec. Power Grp., LLC v.
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`Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Second, the court proceeds to “search for an
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`‘inventive concept’—i.e. , an element or combination of elements that is sufficient to ensure that
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`the patent in practice amounts to significantly more than a patent upon the [ineligible concept]
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`itself.” Alice, 573 U.S. at 217-18. The inventive concept must be “significantly more than” the
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`abstract idea itself, id., and must be more than “well-understood, routine, conventional activity.”
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`Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012). The Asserted
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`Claims fail under both steps and Touchstream is not entitled to summary judgment on Google’s
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`defense under § 101.
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`1.
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`All Asserted Claims Are Directed To Methods Of Controlling Content
`Over A Network
`The Asserted Claims of the Asserted Patents—all titled “Play control of content on a
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`display device”—recite methods “for presenting and controlling content on a display device.” 1
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`See ’251 Patent at Abstract. Touchstream maintains (and for this Motion, Google agrees) that
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`Claim 1 of the ’251 Patent is representative. Mot. at 1. Claim 1 of the ’251 Patent recites:
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`1. A machine-implemented method of controlling presentation of video content on a
`display device that loads any one of a plurality of different media player players, the
`method comprising:
`assigning, by a server system, a synchronization code to the display device;
`receiving, in the server system, a message from a personal computing device that is
`separate from the server system and separate from the display device, wherein the message
`includes the synchronization code;
`storing, by the server system, a record establishing an association between the personal
`computing device and the display device based on the synchronization code;
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`1 “Display device”/“content presentation device” refer to the same element in the Asserted
`Claims.
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`receiving, in the server system, one or more signals from the personal computing device,
`the one or more signals specifying a video file to be acted upon and identifying a particular
`media player for playing the video content, the one or more signals further including a
`universal playback control command for controlling playing of the video content on the
`display device by the particular media player,
`converting, by the server system, the universal playback control command into
`corresponding programming code to control playing of the video content on the display
`device by the particular media player, wherein converting the universal playback control
`command includes selecting from among a plurality of specific commands, each of which
`represents a corresponding playback control command for a respective media player; and
`storing, in a database associated with the server system, information for transmission to or
`retrieval by the display device, wherein the information specifies the video file to be acted
`upon, identifies the particular media player for playing the video content, and includes the
`corresponding programming code to control playing of the video content on the display
`device by the particular media player in accordance with the universal playback control
`command
`As seen in this representative claim, the claimed methods include three primary
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`devices/systems: (1) a personal computing device; (2) a server system; and (3) a display device
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`(’251 Patent) or “content presentation device” (’528 and ’289 Patents).
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`2.
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`The Asserted Claims Fail Alice Step 1 As A Matter Of Law Because
`They Are Directed To The Abstract Idea Of Controlling Media Content
`Over A Network
`At Alice Step 1, this Court examines if the Asserted Claims as a whole are directed to an
`
`abstract idea. Broadband iTV, Inc. v. Amazon.com, Inc., 2022 WL 4703425, at *1 (W.D. Tex.
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`2022) (Albright, J.). Touchstream contends that the claims “are directed to a specific computer
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`architecture that enables a personal computing device to control the playback of videos from
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`various media players over a network through the use of a server system, while specifying the
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`precise intra-system messaging that effectuates the control.” Mot. at 7. Touchstream further
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`argues that the claims do not “preempt the field by merely claiming the result” but rather “recite a
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`series of concrete steps and specific messages exchanged between [three devices/systems to]
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`provide one way to achieve that result.” Id. Touchstream’s arguments are belied by the patents
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`and Federal Circuit precedent, and are contradicted by Touchstream’s broad infringement
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`allegations, among other things.2
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`The Asserted Claims are directed to abstract ideas. Although the claims use seemingly
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`technical language like “unique identification code,” or “action control command,” or
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`“programming code,” the Court should ignore excess verbiage and focus on the specific steps of
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`the claimed method. See VeriPath, Inc. v. Didomi, 842 F. App’x 640, 643 (Fed. Cir. 2021)
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`(“[S]tripped of excess verbiage, at its most basic level, [the] claim [] is anchored on the abstract
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`idea”); ClearDoc, Inc. v. RiversideFM, Inc., 2022 WL 3355960, at *3 (D. Del. 2022) (“The patent
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`claims add seemingly technical language, such as ‘media content,’ ‘control system,’
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`‘communication session,’ ‘mobile device,’ ‘trigger signal,’ ‘data storage device,’ and ‘control
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`signal,’ but these terms amount to no more than generic computer components.”).
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`When the analysis focuses on the specific claimed method steps without excess verbiage,
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`the basic thrust of the claims is clear. The Asserted Claims cover methods of exchanging data
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`between two associated devices and controlling playback of content in a common network
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`configuration. Figure 1 is illustrative. Two or more devices are
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`connected to the internet, and the first device exchanges data to
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`control content displayed in the second device. See ’289 Patent at
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`1:66-2:41. That is, the user uses the first device (such as a phone)
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`to control how content is played on the display device. It is thus
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`clear that the claim is directed to controlling media content
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`2 Touchstream’s characterization of its patents directly contradicts its Step 1 arguments. Ex. 25
`( “patents” are “only patents that specifically identify and claim methods for an internet-based
`‘casting’ technology”; that the “[c]ore” of their “IP claim is the ability to connect two or more
`devices for the purpose of using one device as a remote control to ‘cast’ cloud-based content to a
`second device”; that “claims represent the only method for casting content; and that “ownership
`of the[] patents protect[] . . . exclusive execution of all web-based casting technology.”).
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`between devices over a network. See ’289 Patent at 1:17-20 (stating that the Asserted Patents’
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`“disclosures relate[] to the creation, storage, manipulation and access of media playlists used in
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`conjunction with display devices and control of display the devices”).
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`The Federal Circuit has long held that the “concept of delivering user-selected media
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`content to portable devices is an abstract idea.” Affinity Labs of Texas, LLC v. Amazon.com Inc.,
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`838 F.3d 1266, 1269 (Fed. Cir. 2016); see also ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d
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`759, 770 (Fed. Cir. 2019) (holding claims directed to “abstract idea of network communication for
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`device interaction” and “communication over a network to interact with a device”). This is
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`precisely the abstract subject matter of the Asserted Claims.
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`All the extra language in the claims does not avoid this conclusion. There are three
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`devices/systems in each claim: (a) a personal computing device; (b) a server system; and (c) a
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`display device (’251 Patent) or “content presentation device” (’528 and ’289 Patents). But these
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`are not new devices or systems that are the focus of the claims. The “personal computing device”
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`“can be any type of handheld or other Internet-enabled personal computing device” such as a
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`cellphone, see, e.g., ’289 Patent at 3:57-59, and the “display device” can be a television set. Id. at
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`2:11-14. In other words, stripped of excess verbiage, the claims are directed to using a cellphone
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`to control display of a video on a TV. No extra words will change that this basic thrust of the
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`Asserted Claims fails to overcome Step 1. See In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607,
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`612 (Fed. Cir. 2016) (patent “does not describe a new telephone, a new server, or a new physical
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`combination of the two” and “fails to provide any technical details for the tangible components,
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`but instead predominately describes the system and methods in purely functional terms”).
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`Nor do the types of data exchanged among the cell phone, TV and server systems (the “one
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`or more messages”) change the analysis. The abstract idea is exchanging information that allows
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`a user to control playback of content on a TV or other display device; the messages used are
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`features intrinsic to the abstract idea itself, which is not enough to meet Step 1. Using conventional
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`components to exchange messages does not turn the abstract idea here into something sufficiently
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`inventive to meet Step 1. See id. (noting “telephone unit” and “server” were described in terms of
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`performing the abstract idea itself by doing generic functions such as “storing, receiving, and
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`extracting data”).3
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`As this Court has previously recognized, where claims “merely implement abstract ideas
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`in software without improvements to or unconventional combinations of underlying hardware,”
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`those claims are directed to an abstract idea. Broadband, 2022 WL 4703425, at *13, 14. That is
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`exactly the situation of the Asserted Claims, which merely recite features inherent in
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`accomplishing the abstract idea of controlling the playback of media content on a TV from a phone
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`over a network. Touchstream’s motion should be denied.
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`In fact, in this case, the Court should go beyond denying Touchstream’s motion and find
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`as a matter of law that the Asserted Claims are directed to an abstract idea. Touchstream brought
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`its motion and by doing so took on the burden of showing that the Asserted Claims meet Step 1,
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`which raises a question of law reserved for the Court. As shown, the claims are directed to an
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`abstract idea and the Court may and should decide that on summary judgment.
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`3 See also ClearDoc v. RiversideFM, 2022 WL 606698, at *5 (D. Del. 2022) (holding that “the
`recording, storing, delivering, and deleting of media content on a mobile device is an abstract idea”
`and that “[r]emote control is [also] an abstract idea” such that the “piling of abstract ideas upon
`each other does not save [the asserted patent] at Alice Step 1”). TAGI v. Turner Sports, 2017 WL
`3469528, at *8 (N.D. Ga. 2017) (“[M]erely arguing a patent is limited does not make it so. . . . The
`only tangible limitations in the claim are a generic ‘server,’ ‘remote computer,’ and ‘network,’
`which the specifications make clear can be any ‘computing device’ connected to any kind of
`network. [] Likewise, all of the claim steps (‘receiving,’ ‘transmitting,’ ‘assigning,’ ‘playing,’ and
`‘storing’) are stated in only generic terms, [] as is the specification’s generic reliance on data
`packets to transmit data, a method of transmission which the claim itself concedes is ‘well-
`known.’” (internal citations omitted)).
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`Touchstream’s Arguments Under Alice Step 2 Fare No Better
`3.
`Should the Court decline to resolve Step 1 against Touchstream at this time, Touchstream
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`must still show that the Asserted Claims overcome Step 2. Under Step 2, the inquiry is whether
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`“the claims contain an ‘inventive concept’ sufficient to ‘transform the nature of the claim into a
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`patent-eligible application,’” i.e., whether their “practice amounts to significantly more than” the
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`abstract idea. Broadband, 2022 WL 4703425, at *2. This question looks to “whether a claim
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`element or combination of elements is well-understood, routine and conventional to a [POSA].”
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`Id. Appending conventional steps to an abstract idea, or reciting generic computer functions, is
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`insufficient to transform the abstract idea into patent-eligible subject matter. Id.
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`Touchstream contends that the functions of the claimed components, along with their
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`organization and ordering, provide an inventive concept. Mot. at 10-11. For example,
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`Touchstream argues that the “synchronization code (or unique identification code), the
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`identification of media players, and the conversion or identification of programming code” is each
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`inventive. Id. Touchstream also contends that “organization and ordering of these functions” is
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`inventive, because it purportedly allows “the use of different media players, associate different
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`computer components, and allow a server system intermediary to coordinate between the media
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`players, video files, control commands, personal computing devices, and display devices.” Id.
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`At bottom, Touchstream’s arguments merely repeat words in the Asserted Patents. But the
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`claim elements and their organization on which Touchsteam focuses were remarkably
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`conventional and there is no inventive concept reflected in the Asserted Claims. Google’s
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`technical expert, Dr. Mayer-Patel, has offered his opinion showing that each element of the
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`Asserted Claims was well-understood, routine, and conventional to a POSA because they are
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`routine computer and programming function and devices, and so was their organization. See
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`Infernal Tech., LLC v. Sony Interactive Ent. LLC, 2021 WL 405813, at *3 (E.D. Tex. 2021). For
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`example, Dr. Mayer-Patel’s report and the Asserted Patents themselves illustrate that the following
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`exemplary aspects of the claims were well-known, routine, and conventional to a POSA:
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`(1) using a set of
`computers in a 3-
`component
`architecture
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`(2) using
`instructions or
`signals like claimed
`steps of assigning,
`receiving, storing, or
`converting, without
`any technical or
`computational
`details
`(3) storing data or
`information in
`databases or records
`that implement
`methods for storing,
`
`See Ex. 1, (Mayer-Patel Open. Rep.) ¶¶ 945-46 (“each claim
`includes” . . . “generic and/or conventional set of computers in the 3-
`component architecture (e.g., claims merely disclose a ‘machine[],’
`‘server system,’ ‘personal computing device,’ ‘display device,’ or
`‘content presentation device’ rather than disclosing specific types of
`computing systems)”).
`
`“More generally, however, the personal computing device 20 can be
`any type of handheld or other Internet-enabled personal computing
`device, including personal computers, e-books, kiosks, tablets, smart
`phones, media players, and motion and touch sensory interfaces.” ’289
`Patent at 3:56-62.
`
`“Although the implementation of FIG. 1 illustrates the display device
`22 as a television set with a display screen 23, other types of display
`devices can be used as well (e.g., a laptop or personal
`computer).” ’289 Patent at 7:8-11.
`
`See Ex. 23 (Almeroth Open. Rep.) ¶ ¶ 283-84 (describing “server
`system” broadly as: “[f]rom the perspective of what a server can do, a
`person of ordinary skill in the art would understand the plain and
`ordinary meaning of ‘a server system’ to be a node, component, or
`collection of components that receives messages (e.g., requests or
`commands) from another node or component and acts on those
`messages (e.g., in order to fulfill requests or implement actions
`indicated in commands).”).
`See Ex. 1 (Mayer-Patel Open. Rep.) ¶¶ 945-46 (“each claim
`includes” . . . “mere instructions (in the form of signals) to implement
`the abstract idea” including “‘assigning,’ ‘receiving,’ ‘storing,’ and
`‘converting’ without providing any technical and computational details
`of how these steps are performed”).
`
`See Ex. 1 (Mayer-Patel Open. Rep.) ¶¶ 945-46 (“each claim
`includes” . . . “generally storing data or information in ‘databases’ or
`‘records’ which are well-known methods for storing, indexing, and
`associating data relating to computer systems”).
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`indexing, and
`associating data to
`systems
`(4) using
`synchronization
`codes or identifiers
`to associate various
`devices;
`
`(5) linking a proxy
`to a three-system
`architecture using
`generic computers
`such as machines,
`server systems, or
`other various
`devices
`
`(6) using
`programing code to
`control media
`players like
`JavaScript or those
`implemented by
`YouTube
`
`’289 Patent at 4:55-60 (describing the claimed “record establishing an
`association” between devices as a “look-up table”); see also id. at FIG.
`4.
`See Ex. 1 (Mayer-Patel Open. Rep.) ¶¶ 945-46 (“each claim
`includes” . . . “generally using synchronization codes or identifiers to
`associate devices (e.g., the claims merely recite assigning
`synchronization codes or other identifiers to devices and then using
`those codes/identifiers for communication relating to the devices).”
`
`See also id. ¶ 78 (describing long use of synchronization codes or
`identifiers such as in Bluetooth technology).
`
`See Ex. 1 (Mayer-Patel Open. Rep.) ¶¶ 945-46 (“each claim
`includes” . . . “generally linking abstract idea to a technological
`environment (e.g., the claims merely link a very old concept of
`“proxy” to a three-system architecture that involves generic computing
`elements such as “machine[],” “server system,” “personal computing
`device,” “display device,” or “content presentation device”).
`
`See also id. ¶¶ 73-77 (describing the “very old concept” of the “proxy
`principal”); id. ¶ 945 (prior art systems implementing “proxy
`principal”).
`See Ex. 1 (Mayer-Patel Open. Rep.) ¶¶ 945-46 (“each claim
`includes” . . . “general use of ‘programming codes’ to control media
`players (e.g., the claims recitation of programming codes is described
`in the specification, for example, as well-known JavaScript functions
`such as those generally provided by, for example, YouTube)”).
`
`’289 Patent at 5:54-6:18 (describing the conversion of universal
`commands to programming code using a “look-up table” where the
`programming code is from an application programming interface
`developed by third-parties, not the inventor, such as YouTube,
`Ted.com, and Vimeo); see also FIG. 5.
`
`Dr. Mayer-Patel’s opinion is also supported by the specification, which itself recognizes
`
`the neither specific components recited in the Asserted Patents nor their ordering or organization
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`are unique, new, or critical to the Asserted Claims:
`
`Although this specification contains many specific implementation details, these should
`not be construed as limitations on the scope of any inventions or of what may be claimed,
`but rather as descriptions of features specific to particular implementations of particular
`inventions.
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`….
`Similarly, while operations are depicted in the drawings in a particular order, this should
`not be understood as requiring that such operations be performed in the particular order
`shown or in sequential order, or that all illustrated operations be performed, to achieve
`desirable results.
`’289 Patent at 9:40-11:16.
`
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`The Federal Circuit has held that features such as those that Touchstream describes as the
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`purported improvement are insufficient to transform the abstract idea into an inventive concept to
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`overcome Step 2. Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir.
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`2016). The Federal Circuit’s analysis is on point here: “Features such as network streaming and a
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`customized user interface do not convert the abstract idea of delivering media content to a handheld
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`electronic device into a concrete solution to a problem. The features set forth in the claims are
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`described and claimed generically rather than with the specificity necessary to show how those
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`components provide a concrete solution to the problem addressed by the patent.” Id.
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`Touchstream’s bare assertion of what is or is not conventional fails to overcome the record
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`or avoid the conclusion that the Asserted Claims fail Step 2. This, too, is an issue that the Court
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`can resolve in Google’s favor as a matter of law. See SAP Am., Inc. v. InvestPic, LLC, 898 F. 3d
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`1161, 1166 (Fed. Cir. 2018); see also Interval Lic’g LLC v. AOL, Inc., 896 F. 3d 1335, 1342 n.2.
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`But at a minimum, summary judgment should be denied.
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`4.
`
`Touchstream’s § 101 Arguments Require Summary Judgment Of Non-
`Infringement
`The position that Touchstream now takes in its Motion for Summary Judgment is directly
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`contrary to its theory that Google’s products infringe. Dkt. 130 at 11-12. Touchstream’s motion
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`maintains that “the Asserted Claims are directed to a specific, concrete computer architecture”
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`and that the claims “specify the technological parts of the system that perform each step (personal
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`computing device, server system, display device).” Mot. at 10, 14. Contrary to its argument that
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`the patent discloses three distinct instrumentalities that are separate components of a
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`technologically sophisticated invention, Touchstream’s infringement theory conflates the accused
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`serve