Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 1 of 20
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`
`TOUCHSTREAM TECHNOLOGIES,
`INC.,
`
`
`Plaintiff,
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`
`
`v.
`
`
`GOOGLE LLC,
`
`
`Case No. 6:21-cv-569-ADA
`
`JURY TRIAL DEMANDED
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`)
`)
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`)
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`)
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`)
`
`Defendant.
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`
`TOUCHSTREAM’S OPPOSITION TO DEFENDANT GOOGLE’S MOTION TO
`DISMISS WILLFUL INFRINGEMENT AND INJUNCTIVE RELIEF CLAIMS
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 2 of 20
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`TABLE OF CONTENTS
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`Introduction .............................................................................................................................. 1
`
`
`I.
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`II. Factual Background ................................................................................................................. 2
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`III. Legal Authority ........................................................................................................................ 3
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`IV. Argument ................................................................................................................................. 4
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`Considered in their totality, Touchstream’s allegations go far beyond
`the minimum requirements to state a claim for willful infringement. ......................... 4
`
`Google’s arguments erroneously address each fact in a vacuum and are
`otherwise unsupported. ................................................................................................ 7
`
`A.
`
`B.
`
`C.
`
`1.
`
`2.
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`Google’s frequent citations to the asserted patents, and underlying
`application, are powerful evidence of willfulness in this context. .............. 7
`Touchstream’s publicity of an asserted patent supports willful
`infringement in the context of the parties’ shared industry. ....................... 9
`Touchstream sufficiently pled post-suit willfulness, and the Court
`should disregard Google’s call to ignore its own precedent. .................... 10
`Touchstream has adequately pled a claim for injunctive relief, and it is
`premature to dismiss Touchstream’s request for a permanent injunction. ................ 12
`
`3.
`
`V. Conclusion ............................................................................................................................. 14
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`ii
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 3 of 20
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`
`Cases
`
`TABLE OF AUTHORITIES
`
`Am. Nat’l Bank & Trust Co. v. Allmerica Fin. Life Ins. & Annuity Co.,
`No. 02 C 5251, 2003 WL 1921815 (E.D. Ill. Apr. 21, 2003) ................................................... 13
`
`Arctic Cat Inc. v. Bombardier Rec. Prods., Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) .................................................................................................. 6
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) .................................................................................................................... 3
`
`Collegenet, Inc. v. Applyyourself, Inc.,
` No. CV–02–484, 2004 WL 2050489 (D. Or. Jan. 20, 2004) ..................................................... 9
`
`Commonwealth Sci. & Indus. Research Org. v. Buffalo Tech. Inc.,
`492 F. Supp. 2d 600 (E.D. Tex. 2007) ...................................................................................... 14
`
`Dynamic Data Techs. v. Google LLC,
`No. 19-1529, 2020 WL 1285852 (D. Del. Mar. 18, 2020) ......................................................... 6
`
`eBay, Inc. v. MercExchange, LLC,
`547 U.S. 388 (2006) .................................................................................................................. 13
`
`Frac Shack Inc. v. AFD Petroleum (Texas) Inc.,
`No. 7:19-CV-00026, 2019 WL 3818049 (W.D. Tex. June 13, 2019) ........................................ 6
`
`Global Sessions, LP v. JPMorgan Chase & Co.,
`No. A–13–CA–688, 2013 WL 12086369 (W.D. Tex. Nov. 18, 2013) .................................. 3, 7
`
`Huawei Techs. Co. v. T-Mobile US, Inc.,
` No. 2:16-CV-00052, 2017 WL 1129951 (E.D. Tex. Feb. 21, 2017) ................................. 11, 12
`
`Innova Hosp. San Antonio, Ltd. P’ship v. Blue Cross & Blue Shield of Ga., Inc.,
`892 F.3d 719 (5th Cir. 2018) ...................................................................................................... 3
`
`KIPB LLC v. Samsung Elecs. Co.,
`No. 2:19-cv-00056, 2020 WL 1500062 (E.D. Tex. Mar. 9, 2020) ........................................... 12
`
`Liquid Dynamics Corp. v Vaughan Co.,
`449 F.3d 1209 (Fed. Cir. 2006) .................................................................................................. 3
`
`Lubrizol Specialty Prods., Inc. v. Flowchem, LLC,
`165 F. Supp. 3d 534 (S.D. Tex. 2016) ...................................................................................... 13
`
`M & C Innovations, LLC v. Igloo Prods. Corp.,
`No. 4:17-cv-2372, 2018 WL 4620713 (S.D. Tex. July 31, 2018) ............................................ 13
`iii
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 4 of 20
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`Meetrix IP, LLC v. Cisco Systems, Inc.,
`No. 1-18-cv-309, 2018 WL 8261315 (W.D. Tex. Nov. 30, 2018) ............................................. 7
`
`Oxygenator Water Techs., Inc. v. Tennant Co.,
`No. 20-cv-358, 2020 WL 4572062 (D. Minn. Aug. 7, 2020) ................................................... 14
`
`Parity Networks, LLC v. Cisco Sys., Inc.,
`No. 6:19-CV-00207-ADA, 2019 WL 3940952 (W.D. Tex. July 26, 2019) ............................... 7
`
`Progme Corp. v. Comcast Cable Commc’ns LLC,
`No. 17-1488, 2017 WL 5070723 (E.D. Pa. Nov. 3, 2017) ....................................................... 11
`
`Radware, Ltd. v. A10 Networks, Inc.,
`No. C–13–02021, 2014 WL 61047 (N.D. Cal. Jan. 7, 2014) ........................................... 4, 9, 10
`
`SIMO Hldgs. Inc. v. Hong Kong uCloudlink Network Tech. Ltd.,
`396 F. Supp. 3d 323 (S.D.N.Y. 2019) ........................................................................................ 9
`
`Simplivity Corp. v. Springpath, Inc.,
`No. 4:15-13345, 2016 WL 5388951 (D. Mass. July 15, 2016) .......................................... 11, 12
`
`SiOnyx, LLC v. Hamamatsu Photonics K.K.,
`330 F. Supp. 3d 574 (D. Mass. 2018) ......................................................................................... 9
`
`SoftView LLC v. Apple Inc.,
`No. CIV. 10-389, 2012 WL 3061027 (D. Del. July 26, 2012) ............................................. 4, 10
`
`Software Research, Inc. v. Dynatrace LLC,
`316 F. Supp. 3d 1112 (N.D. Cal. 2018) .................................................................................... 14
`
`Tanglewood E. Homeowners v. Charles-Thomas, Inc.,
`849 F.2d 1568 (5th Cir. 1988) .................................................................................................. 12
`
`Telebrands Corp. v. Everstar Merch. Co.,
` No. 17–2878, 2018 WL 585765 (D.N.J. Jan. 29, 2018) .......................................................... 11
`
`Tellabs, Inc. v. Makor Issues & Rights, Ltd.,
`551 U.S. 308 (2007) .................................................................................................................... 4
`
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .................................................................................................. 3
`
`WCM Indus., Inc. v. IPS Corp.,
`721 F. App’x 959 (Fed. Cir. 2018) ............................................................................................. 8
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`iv
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 5 of 20
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`I.
`
`Introduction
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`Plaintiff Touchstream plausibly alleges that Google willfully infringed, and is still willfully
`
`infringing, Touchstream’s patents, at least because:
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`Google was clearly aware of Touchstream’s patents—and their relevance to
`Google’s Chromecast products—because Touchstream’s patents and applications
`are cited on at least fourteen of Google’s Chromecast-related patent applications;
`
`Touchstream publicly described its own acclaimed product that uses these same
`methods as “patent-pending,” and then widely publicized the granting of a patent
`that covered Touchstream’s product;
`
`(1)
`
`
`(2)
`
`
`(3)
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`The asserted patents have not expired, and Touchstream has plausibly pled ongoing
`willful infringement by Google.
`
`
`These and other alleged facts, viewed as a whole as this Court is required to do, show that
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`Touchstream easily satisfies the pleading standard for willful infringement.
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`Google’s motion to dismiss flouts controlling law by inviting this Court to look at each one
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`of Touchstream’s individual allegations in a vacuum. Specifically, Google consistently cites cases
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`where a single alleged fact was insufficient on its own to support willfulness allegations. But
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`Google does not point to a case dismissing willfulness that has anything like the interlinking facts
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`alleged here, nor could it. Finally, Google acknowledges that this Court has held that ongoing
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`infringement is sufficient to plead a claim for willfulness, yet seeks to overturn that correct result.
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`Google’s motion should be denied.
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`This Court should also reject Google’s conclusory request that the Court dismiss
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`Touchstream’s request for injunctive relief. Touchstream’s allegations about Google’s market
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`domination due to its infringement, and how it has hurt competing products from Touchstream and
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`its partners, is sufficient to survive dismissal.
`
`Touchstream respectfully requests that the Court deny Google’s motion to dismiss.
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`1
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 6 of 20
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`II.
`
`Factual Background
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`Touchstream developed and distributed software enabling wireless “casting” of content
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`from a mobile device to a second display screen such as a television, tablet, or computer. Dkt. 1 at
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`¶¶ 22, 32, 34-35. Touchstream is a recognized leader in the development of casting technology,
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`having received numerous awards and other recognition in this area. Dkt. 1 at ¶ 32.
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`Since at least December 14, 2011, Touchstream has made clear that its casting product
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`offerings were “patent-pending.” Dkt. 1 at ¶ 34. Touchstream’s first patent on its proprietary
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`casting technology issued on January 15, 2013. Dkt. 1 at ¶ 24. Touchstream issued a press release
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`just two days later announcing the issuance of the ’251 Patent, and continued to publicly describe
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`its wireless casting products as patented. Dkt. 1 at ¶ 35.
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`Google later introduced its wireless casting Chromecast product, which Google uses to
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`perform the infringing functionalities, in July 2013—barely six months after the ’251 Patent issued
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`and was widely publicized. Dkt. 1 at ¶¶ 36, 39, 45. Around the same time, Google began receiving
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`citations to the Touchstream patents (and their underlying applications) in Google’s own patent
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`applications, which from the patent titles alone (which are included in Touchstream’s Complaint)
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`can be seen to relate to the Chromecast. Dkt. 1 at ¶ 41. On at least two occasions, Google inventors
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`affirmatively identified the asserted Touchstream patents as relevant to their Chromecast patent
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`applications. Dkt. 1 at ¶ 41(v), (xiv). As of October 4, 2017, Google announced it had sold 55
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`million Chromecast units, and Google also uses the accused Chromecast functionalities to increase
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`ad revenue to Google and support the collection of data that is valuable to Google. Dkt. 1 at ¶¶ 46-
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`47.
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`2
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 7 of 20
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`III. Legal Authority
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`Rule 8 of the Federal Rules of Civil Procedure requires that a complaint contain “a short
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`and plain statement showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a). The
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`complaint need only include sufficient factual matter which, taken as true, states “a claim to relief
`that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007) (citation
`omitted). “The facts alleged must be enough to raise a right to relief above the speculative level,
`
`but the complaint may survive a motion to dismiss even if recovery seems very remote and
`
`unlikely.” Innova Hosp. San Antonio, Ltd. P’ship v. Blue Cross & Blue Shield of Ga., Inc., 892
`
`F.3d 719, 726 (5th Cir. 2018) (internal quotations omitted). While “the complaint must provide
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`more than conclusions, [] it need not contain detailed factual allegations.” Id.
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`“A finding of willful infringement is made after considering the totality of the
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`circumstances.” Liquid Dynamics Corp. v Vaughan Co., 449 F.3d 1209, 1225 (Fed. Cir. 2006).
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`“The bar set by the Federal Circuit for stating a claim for willful infringement is not high,” as “the
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`Federal Circuit has held that a plaintiff more than sufficiently states a claim for willful
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`infringement when he alleges (1) infringement of the patent-in-suit; and (2) pre-filing ‘knowledge’
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`of the patent-in-suit by the defendant.” Global Sessions, LP v. JPMorgan Chase & Co., No. A–
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`13–CA–688, 2013 WL 12086369, at *3 (W.D. Tex. Nov. 18, 2013) (internal quotations omitted).
`
`“The drawing of inferences, particularly in respect of an intent-implicating question such as
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`willfulness, is peculiarly within the province of the fact finder that observed the witnesses.” Liquid
`
`Dynamics, 449 F.3d at 1225 (citation omitted). Willfulness is therefore “a classical jury question
`
`of intent” and “should be decided by the jury.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1340–
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`41 (Fed. Cir. 2016).
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`3
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 8 of 20
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`IV. Argument
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`A.
`
`Considered in their totality, Touchstream’s allegations go far beyond the
`minimum requirements to state a claim for willful infringement.
`
`Touchstream’s allegations about its pre-suit publicity on its patents, and about the
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`irrefutable evidence that Google knew about Touchstream’s patents and their applicability to
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`Google’s Chromecast product, easily state a claim for willful infringement. As the Supreme Court
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`has advised, “courts must consider the complaint in its entirety” and the proper inquiry
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`“is whether all of the facts alleged, taken collectively, give rise to a strong inference of [a fact-
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`intensive claim], not whether any individual allegation, scrutinized in isolation, meets that
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`standard.” Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322–23 (2007). This
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`reasoning is particularly applicable to claims of willful infringement, which explicitly depend on
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`the totality of the circumstances. Liquid Dynamics, 449 F.3d at 1225.
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`It is thus unsurprising that courts frequently find willful infringement to be supported by
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`the cumulative effect of related facts, even where no single fact in isolation would meet the
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`threshold. For instance, in Radware, Ltd. v. A10 Networks, Inc., No. C–13–02021, 2014 WL
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`61047, at *2 (N.D. Cal. Jan. 7, 2014), the court denied a motion to dismiss willfulness, explaining
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`that while each fact pled “taken by itself [] is insufficient to plead” knowledge, “when considered
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`together, these facts are enough to plausibly conclude that A10 had knowledge of” the asserted
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`patent. Likewise, in SoftView LLC v. Apple Inc., No. CIV. 10-389, 2012 WL 3061027, at *6 (D.
`
`Del. July 26, 2012), the court explained that the plaintiff “has not merely alleged only one of these
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`inadequate allegations, but all three. Taken in combination, the Court concludes that [plaintiff] has
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`alleged a plausible basis” to infer knowledge of the patent.
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`As such, here the Court need not reach the sole issue addressed by Google’s motion, which
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`is whether any one fact pled by Touchstream, in isolation, adequately pleads willfulness (although,
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 9 of 20
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`as argued below, many of them do). Tellingly, on the proper inquiry of whether willfulness is
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`adequately pled under these facts taken together, Google has nothing to say. Nor is there anything
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`compelling that Google could say. The asserted ‘251 Patent was granted in January 2013, and
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`Touchstream publicized this fact. Touchstream further publicized that both its patent applications
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`and its granted patents covered Touchstream’s wireless casting product, which predates the
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`Chromecast by almost two years. (Dkt. 1 at ¶¶ 34-35). If Google did any market analysis or patent
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`clearance work before releasing its Chromecast product, it could have and should have identified
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`Touchstream’s acclaimed product, and the patents and applications that cover it. (Dkt. 1 at ¶¶ 32,
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`34-35). The citation to the asserted patents and their underlying applications in fourteen Google
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`patent applications related to the Chromecast (Dkt. 1 at ¶ 41), including affirmative disclosures by
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`Google itself, establishes that Google indeed knew of Touchstream’s applications and patents on
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`casting, and their relevance to Google’s own casting activities with the Chromecast. That Google
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`nonetheless released a similar product that in fact infringes Touchstream’s patents (Dkt. at ¶¶ 21-
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`22, 30, 32, 34-35, 48-63), makes it even more plausible that Google disregarded a substantial risk
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`of infringement. And all of these facts more plausibly support willfulness in light of Touchstream’s
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`allegation that it directly told Google in 2011 what Touchstream had been saying publically: that
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`Touchstream had applied for a patent on its wireless casting product. (Dkt. at ¶¶ 34, 39).1 Other
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`such important relationships among these facts abound, but all are ignored by Google.
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`Touchstream has sufficiently pled willful infringement.
`
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`1 To be clear, Touchstream’s Complaint references a pre-suit NDA only to point out that it does
`not grant Google any rights to Touchstream’s patents. Dkt. 1 at ¶ 37. Touchstream alleges that its
`patent applications, and the fact that Touchstream believed its wireless casting product would be
`covered by them, were public knowledge at the time of the NDA, making those disclosures not
`confidential information and outside the bounds of the NDA. Dkt. 1 at ¶¶ 34, 39.
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 10 of 20
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`Google’s argument that Touchstream insufficiently pled Google’s knowledge of actual
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`infringement is thus completely unsupported, especially on a Rule 12 motion where all reasonable
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`inferences are construed in Touchstream’s favor. The facts above plausibly show the requisite
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`knowledge, and in fact conclusively establish it. Google’s contrary cases are all distinguishable,
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`and address nothing like this situation, where it is indisputable that Google had knowledge of
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`Touchstream’s patents and their relevance to the Accused Products as shown at least by Google’s
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`frequent citations with the patent office. See, e.g., Dynamic Data Techs. v. Google LLC, No. 19-
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`1529, 2020 WL 1285852, at *2-3 (D. Del. Mar. 18, 2020) (no knowledge of actual infringement
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`where patentee simply sent a conclusory letter listing 400 patents).
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`Finally, actual knowledge of infringement is not even required to show willfulness―it is
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`enough to show that an infringer “should have known that its actions constituted an unjustifiably
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`high risk of infringement of a valid and enforceable patent.” Arctic Cat Inc. v. Bombardier Rec.
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`Prods., Inc., 876 F.3d 1350, 1371 (Fed. Cir. 2017) (citations omitted); see also Frac Shack Inc. v.
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`AFD Petroleum (Texas) Inc., No. 7:19-CV-00026, 2019 WL 3818049, at *5 (W.D. Tex. June 13,
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`2019) (denying motion to dismiss willful infringement claims, even “absent a specific allegation
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`of pre-suit knowledge of the asserted patents” because under the circumstances defendants were
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`“likely” to have been monitoring plaintiff’s patent prosecutions). That Google developed and sold
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`a product embodying Touchstream’s acclaimed, patented technology—after citing to the asserted
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`patents in Google’s own patent applications—states a plausible claim that Google at the very least
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`should have identified Touchstream’s patents before Google began its infringement. If nothing
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`else, Touchstream has adequately met this pleading requirement.
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 11 of 20
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`B.
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`Google’s arguments erroneously address each fact in a vacuum and are
`otherwise unsupported.
`
`1.
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`Google’s frequent citations to the asserted patents, and underlying
`application, are powerful evidence of willfulness in this context.
`
`Google’s citations to Touchstream’s patents and patent applications during patent
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`prosecution
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`sufficiently demonstrate
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`the knowledge
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`and culpability
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`required
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`for
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`willfulness―whether considered in combination with other pled facts or even alone. In Global
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`Sessions, LP v. JPMorgan Chase & Co., for instance, a court in this District found willfulness
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`allegations based on patent citations alone sufficient to survive a 12(b)(6) motion, observing that
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`Global Sessions alleges JPMorgan knew about at least one of the four asserted
`Global Sessions patents because a dozen JPMorgan patents filed between 2002 and
`2006 specifically cite the Global Sessions patent as a reference. Those allegations
`are sufficient to raise a plausible inference JPMorgan had knowledge of the Global
`Sessions patent and its teachings.
`
`No. A–13–CA–688, 2013 WL 12086369, at *2 (W.D. Tex. Nov. 18, 2013). As alleged in
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`Touchstream’s complaint, no fewer than fourteen Google patents and applications cite to one or
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`more of the patents asserted in this case or their pending or parent applications, even more than
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`the “dozen” patents sufficient to show knowledge in Global Sessions. Similarly, in Parity
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`Networks, LLC v. Cisco Sys., Inc., No. 6:19-CV-00207-ADA, 2019 WL 3940952, at *2 (W.D.
`
`Tex. July 26, 2019), this Court recently denied a motion to dismiss willful infringement claims,
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`finding that the plaintiff sufficiently pled knowledge of the Patents-in-Suit at least in part “by
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`establishing that the asserted patents have been identified in Defendant’s prosecution history of its
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`own patents.”
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`The cases on which Google relies in arguing otherwise are premised on different facts and
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`are readily distinguishable. In Meetrix IP, LLC v. Cisco Systems, Inc., for instance, a court in this
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`District found willfulness allegations insufficient where the plaintiff alleged that a subsidiary of
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 12 of 20
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`the defendant cited only to a parent application of the patents in that case. No. 1-18-cv-309, 2018
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`WL 8261315, at *2 (W.D. Tex. Nov. 30, 2018). Here, by contrast, Google itself repeatedly cited
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`the same patents actually asserted here or their pending applications. Core Optical and Chalumeau
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`are also distinguishable. In Core Optical, for instance, it was unclear which party even prosecuted
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`the defendants’ patents (2020 WL 6126285 at *7), and in Chalumeau the plaintiff pointed only to
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`three citations by a patent examiner made ten years earlier, without further explaining any
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`connection to willfulness (2012 WL 6968938 at *1). Touchstream, by contrast, has pled numerous
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`citations by Google to Touchstream’s patents and applications against the backdrop of
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`Touchstream’s announcement of its patents while Google was developing and releasing its
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`Chromecast products which practice the very patents Google cited. These facts go far beyond the
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`“somewhere in one of those patents, identify[ing] the patent being asserted” that this Court
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`described as insufficient in Parus Holdings (see Dkt. 14 at 12), and are more than sufficient to
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`state a claim for willfulness.
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`Finally, Google’s argument that some of its citations were to Touchstream’s patent
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`applications, rather than to issued patents, fails because patent applications are now published
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`early and widely available, as Google’s own prosecution history shows. Even if this patents-
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`versus-applications distinction were meaningful, it would make no difference here where Google
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`repeatedly cited to Touchstream patents that had already issued. See Dkt. 1 at ¶¶ 41(i)–(iii), (viii),
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`(ix). But the distinction is not meaningful, as the Federal Circuit recently rejected the argument
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`that “knowledge of a pending patent application cannot support a finding of willfulness.” WCM
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`Indus., Inc. v. IPS Corp., 721 F. App’x 959, 970 n.4 (Fed. Cir. 2018). As the Federal Circuit
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`reasoned, “these concerns [regarding secrecy of patent applications] are no longer valid when
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 13 of 20
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`patent applications and realtime prosecution activity are published.” Id.2 All of the facts
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`Touchstream has pled concerning Google’s citations to Touchstream’s patents and pending
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`applications easily state the knowledge required for willful infringement.
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`2.
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`Touchstream’s publicity of an asserted patent supports willful
`infringement in the context of the parties’ shared industry.
`
`Touchstream’s announcement of its patent award and its ongoing public discussions of its
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`products as patented are also clearly probative of willfulness—especially when considered with
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`other facts supporting Google’s knowledge. Courts have found patent publicity highly relevant to
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`willfulness, particularly when coupled with other evidence of a relationship between the parties or
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`some motivation for the defendant to read the patentee’s press releases. See Radware, Ltd. v. A10
`
`Networks, Inc., No. C–13–02021, 2014 WL 61047, at *4 (N.D. Cal. Jan. 7, 2014) (finding “alleged
`
`fact that A10 regularly reviewed competitors’ intellectual property-related press releases” stated a
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`claim for willfulness when considered with other facts showing defendant’s awareness of
`
`plaintiff’s technology); see also Collegenet, Inc. v. Applyyourself, Inc., No. CV–02–484, 2004 WL
`
`2050489, at *12 (D. Or. Jan. 20, 2004) (finding allegations that defendant’s CEO “could have read
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`plaintiff’s press release which was an attachment to [an] e-mail” sufficient to support a finding of
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`willfulness at trial).
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`Here, Touchstream does not allege―as Google mistakenly argues―that Google should
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`have been on notice “merely because Touchstream announced the issuance of one of its patents.”
`
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`2 District courts following WCM likewise now find that knowledge of pending patent applications
`supports a finding of willful infringement. See, e.g., SIMO Hldgs. Inc. v. Hong Kong uCloudlink
`Network Tech. Ltd., 396 F. Supp. 3d 323, 334 (S.D.N.Y. 2019) (relying on WCM in concluding
`that “it would be artificial to ignore the reasonable possibility that [defendant] might have learned
`of the application that would become the [asserted] patent”); SiOnyx, LLC v. Hamamatsu
`Photonics K.K., 330 F. Supp. 3d 574, 610 (D. Mass. 2018) (following WCM and concluding that
`“there is no bright-line rule as to what level of knowledge is sufficient”).
`9
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 14 of 20
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`Dkt. 14 at 10. As discussed in detail above, Touchstream pleads this fact in combination with other
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`key facts that together plausibly show Google’s knowledge and culpability. Taken together, these
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`facts create a reasonable inference that Google should have and would have been tracking
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`Touchstream’s patent activity and would therefore know of the ’251 patent based on
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`Touchstream’s announcement of it. See Radware, 2014 WL 61047 at *2. Indeed, this allegation
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`creates a plausible explanation for why shortly thereafter Google did confirm its knowledge of
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`Touchstream’s patents by citing them in its own patent filings.
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`Google’s cases are distinguishable because they consider patent publicity in isolation,
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`rather than in the context of Google’s ongoing development of the Chromecast products when
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`Touchstream announced its wireless casting patent and patented product, as well as Google’s
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`citations to the asserted patents. See, e.g., SoftView LLC v. Apple Inc., No. CIV. 10-389-LPS, 2012
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`WL 3061027, at *6 (D. Del. July 26, 2012) (“The mere fact that SoftView’s lawsuit against Apple
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`and AT&T was reported in certain media outlets does not, by itself, plausibly suggest that Kyocera
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`would have been aware of those particular media reports.”) (emphasis added). None of Google’s
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`cited cases address a scenario anything like the interrelated facts alleged here. Properly considered
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`in the context of these other relevant facts, Touchstream’s press release supports a plausible claim
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`that Google knew of Touchstream’s patent and willfully infringed it.
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`3.
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`Touchstream sufficiently pled post-suit willfulness, and the Court should
`disregard Google’s call to ignore its own precedent.
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`Having pled ongoing willful infringement,3 Touchstream should now be allowed discovery
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`into Google’s post-suit behavior concerning willfulness. Google’s contrary argument fails, not
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`3 In its Prayer for Relief, Touchstream pled that Google “has willfully infringed and is willfully
`infringing” the asserted patents. Dkt. 1 at 31 (emphasis added).
`10
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 15 of 20
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`least because its fundamental premise―that Touchstream did not plead facts supporting pre-suit
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`knowledge―is wrong, for all of the reasons discussed above.
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`But Touchstream should be allowed to pursue willful infringement based on Google’s post-
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`suit conduct independent of any facts pled on pre-suit willfulness. As Google concedes, this Court
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`has “held that a pleading of post-suit knowledge alone can form the basis of willful infringement.”
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`Dkt. 14 at 14 (citing USC IP P’ship, No. 6:20-cv-00555-ADA, Dkt. 14-A). Google’s claim that
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`this Court’s decision in USC was “contrary to precedent” is simply false. Numerous other courts
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`have confirmed that allegations of post-Complaint willfulness are sufficient:
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` Huawei Techs. Co. v. T-Mobile US, Inc., No. 2:16-CV-00052, 2017 WL 1129951, at *4
`(E.D. Tex. Feb. 21, 2017) (“[T]here is nothing in Halo suggesting that pre-suit
`knowledge is required for willfulness. In fact, Halo recognizes that ‘culpability is
`generally measured against the knowledge of the actor at the time of the challenged
`conduct.’”);
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` Telebrands Corp. v. Everstar Merch. Co., No. 17–2878, 2018 WL 585765, at *8 (D.N.J.
`Jan. 29, 2018) (“Plaintiffs allege that Defendants have had notice of the ’775
`Patent since their receipt of the Complaint in this matter, and yet still created and sold
`the allegedly infringing 2017 Products. The Court finds that these allegations, taken as
`true, are sufficient to establish a plausible entitlement to enhanced damages under the
`standards that the Supreme Court discussed in Halo Elecs., Inc.) (citations omitted);
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` Progme Corp. v. Comcast Cable Commc’ns LLC, No. 17-1488, 2017 WL 5070723, at
`*12 (E.D. Pa. Nov. 3, 2017) (“Here, Plaintiff has not so far alleged any facts showing
`that Comcast had actual knowledge of the ’425 Patent prior to the filing of the
`Complaint. . . . To the extent that Comcast has persisted in its alleged infringement of
`the ’425 Patent after Plaintiff filed its complaints, this conduct could possibly amount
`to willful infringement. At this stage in the litigation, I will not deny Plaintiff the
`possibility of collecting enhanced damages related to Comcast’s post-suit conduct.”);
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` 
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` Simplivity Corp. v. Springpath, Inc., No. 4:15-13345, 2016 WL 5388951, at *18 (D.
`Mass. July 15, 2016) (“Accepting the well-pled allegations of the [Second Amended
`Complaint] to be true, Springpath’s post-Complaint conduct rightly may be
`characterized as Springpath acting despite ‘knowing or having reason to know of facts
`which would lead a reasonable man to realize his actions are unreasonably risky,’ since
`it knew litigation was afoot. Stated otherwise, Springpath’s post-suit actions are
`plausibly reckless and so, under Halo, are subject to the prospect of enhanced
`damages.”) (citations omitted).
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`Case 6:21-cv-00569-ADA Document 18 Filed 08/27/21 Page 16 of 20
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`Here, Touchstream’s patents do not expire until 2031, and Google does not deny that it
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`continues to practice the patented methods (and has sold at least 55 million Chromecast units).
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`Touchstream should thus be allowed to proceed with post-suit willfulness allegations in
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`accordance with this Court’s precedent. A bright line rule barring willful infringement based on