Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 1 of 30
`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 1 of 30
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`
`
`
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`FILED UNDER SEAL
`FILED UNDER SEAL
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 2 of 30
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`Plaintiff,
`
`TOUCHSTREAM TECHNOLOGIES, INC,
`
`
`
`v.
`
`GOOGLE, LLC
`
`
`
`
`Defendant.
`
`
`
`
`
`Case No. 6:21-cv-569
`
`
`
`EXPERT REPORT OF
`CHRISTOPHER A. MARTINEZ
`WITH RESPECT TO DAMAGES
`
`
`
`
`
`
`
`Respectfully submitted this 16th day of January, 2023
`
`
`
`__________________________________________
`Christopher A. Martinez
`
`
`
`HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`
`
`
`
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 3 of 30
`
`INTRODUCTION
`I.
`I, Christopher A. Martinez, am a Partner in StoneTurn Group LLP (“StoneTurn”). I
`1.
`provide financial, economics and accounting consulting services – including economic valuation
`of intellectual property such as patents, trade secrets, trademarks and copyrights – to attorneys and
`client companies. In addition to extensive consulting experience related to technology transfer, as
`well as software, trademark and patent licensing, I held the position of Vice President of SBC
`Knowledge Ventures (now doing business as AT&T Knowledge Ventures) with business
`responsibility for licensing of intellectual assets into and out of the SBC organization (now doing
`business as AT&T). I also served as the Chairman of the SBC Patent committee.
`
`I was integral to the development of SBC Knowledge Ventures as a licensing and
`2.
`technology transfer organization. I was one of the first employees of the entity (which ultimately
`grew to over 40 employees) and was responsible, along with other members of management, for
`defining strategy and developing the tactical plans to execute that strategy. I was responsible for
`hiring and managing the teams of technology and business professionals charged with
`implementing the strategic business and marketing plans, including technology identification and
`mining, valuation, market analysis, marketing, deal negotiation, contract monitoring and internal
`performance metering. In the course of my work at SBC Knowledge Ventures, I developed
`business plans, including revenue and cost projections related to outbound licensing, and addressed
`inbound intellectual asset-related transactions, including licenses and acquisitions.
`
`In my capacity as Vice President of SBC Knowledge Ventures and Chairman of the Patent
`3.
`Committee, I was actively involved in the commercialization efforts related to hundreds of
`technologies, patents, trademarks, trade secrets and copyrighted software applications. I was
`involved in dozens of negotiations related to the licensing and assignments of intellectual assets,
`and related entity acquisitions and equity investments in the telecommunications industry, as well
`as other industries.
`
`In addition to, and in conjunction with, my experience as a licensing executive, I have
`4.
`gained expertise in the field of licensing through my certifications. I have earned the Certified
`
` 1
`
`
`
` HIGHLY CONFIDENTIAL -
`
`EXPERT REPORT OF C. A. MARTINEZ
`CASE NO. 6:21-cv-569 OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 4 of 30
`
`Licensing Professional (“CLP”)1 designation from the Licensing Executives Society USA and
`Canada, Inc. (“LES”)2 and the Certified Patent Valuation Analyst (“CPVA”)3 designation from
`The Business Development Academy (“BDA”),4 in addition to earning the designation as a
`Certified Public Accountant (“CPA”) from the state of California.
`
`A copy of my current curriculum vitae, which summarizes my qualifications and
`5.
`professional experience, is attached as Schedule 1.0. Attached as Schedule 2.0 is a listing, to the
`best of my recollection, of my deposition, arbitration and trial testimony over the preceding four
`years.
`
` StoneTurn charges $675 per hour for time I spend consulting, assessing damages and time
`6.
`that may be spent testifying related to my damages analysis. Neither my, nor my staff’s, nor
`StoneTurn’s compensation is affected in any way by either the conclusions I have reached or the
`outcome of this lawsuit.
`
`ASSIGNMENT
`I.
`I have been retained as an expert in this matter by Jones Day, counsel for Defendant,
`7.
`Google LLC (“Google”), to evaluate the economic damages, if any, allegedly sustained by
`Plaintiff, Touchstream Technologies, Inc. (“Touchstream” or “Plaintiff”), as a result of
`Defendant’s alleged infringement of U.S. Patent Nos. 8,356,251 (“the ‘251 Patent”), 8,782,528
`
`
`1 The CLP program “is a professional designation intended to distinguish those who have demonstrated experience,
`proficiency, knowledge and exposure to licensing and commercialization of intellectual property through
`involvement in patenting, marketing, valuation, IP law, negotiation, and intellectual asset management.”
`(https://www.licensingcertification.org).
`2 Established in 1965, the LES is a professional society comprised of nearly 5,000 members engaged in the transfer,
`use, development, manufacture, and marketing of intellectual property. LES is a member society of the Licensing
`Executives Society International, Inc., with a worldwide membership of over 9,000 members in 30 national
`societies, representing over 90 countries. (https://www.lesusacanada.org).
`3 The CPVA program curriculum “is designed to prepare financial analysts, technology transfer professionals,
`intellectual property managers, licensing managers, inventors, patent lawyers and other business development
`executives with the skill set necessary to value patents.” (https://www.cpva.info).
`4 The BDA “is committed to providing unparalleled educational opportunities to the business community.” Its
`mission “is to develop a curriculum and recruit the instructors that will best serve our members in developing the
`critical thinking skills necessary to grow their businesses.” (https://www.bdacademy.com).
`
` HIGHLY CONFIDENTIAL -
`
`EXPERT REPORT OF C. A. MARTINEZ
`CASE NO. 6:21-cv-569 OUTSIDE ATTORNEYS’ EYES ONLY
`
`
` 2
`
`
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 5 of 30
`
`(“the ‘528 Patent”), and 8,904,289 (“the ‘289 Patent”) (collectively, “Patents-in-Suit”).5 The
`figure below is a summary of the Patents-in-Suit.
`
`On December 12, 2021, I submitted an expert report in this matter whereby I put forth my
`8.
`opinion of a reasonable royalty that is adequate to compensate Touchstream for Google’s alleged
`use of the Patents-in-Suit, under the assumptions of infringement and validity (“Initial Report”).
`
` Subsequent to my Initial Report, Google produced a patent license agreement with S.M.R
`9.
`Innovations LTD that I understand from discussion with Dr. Patel provides a license to patents that
`are technologically comparable to the Patents in Suit. I have been asked to review and incorporate
`the SMR Agreement into my analysis and opinions.
`
`SMR AGREEMENT
`II.
`On January 5, 2023, S.M.R Innovations LTD (“SMR”) entered into a patent license
`10.
`agreement with Google. (the “SMR Agreement”)6. Google entered into this agreement to settle
`disputed claims with no admission of wrongdoing, infringement, or liability.7 The term of the
`agreement commences on the Effective Date, which is January 5, 2023, and continues until the
`later of the expiration of the last to expire of the Licensed Patents or the last date where there is a
`right to assert any claim of the Licensed Patents.8 I understand the final expiration of the last of
`the Licensed Patents will occur in 2026.9
`
`SMR granted to Google and its affiliates a worldwide, perpetual, irrevocable, non-
`11.
`cancellable, non-exclusive, non-transferable (except as defined in the SMR Agreement), fully
`paid-up, royalty free license to make, have made, use have used, sell, offer for sale, have sold or
`offered for sale, import or export, have imported or exported, lease, license, or otherwise exploit
`any Google Product to otherwise practice, and have practiced any method, service, system, process
`
`
`5 Complaint for Patent Infringement, Case No. 6:21-cv-00569-ADA, dated June 4, 2021 (“Complaint”).
`6 SMR Agreement (GOOG-TST-00221294 to GOOG-TST-00221308 at GOOG-TST-00221305).
`7 SMR Agreement (GOOG-TST-00221294 to GOOG-TST-00221308 at GOOG-TST-00221298); I understand from
`counsel there was no litigation filed against Google.
`8 SMR Agreement (GOOG-TST-00221294 to GOOG-TST-00221308 at GOOG-TST-00221299).
`9 Informed by counsel.
`
` HIGHLY CONFIDENTIAL -
`
`EXPERT REPORT OF C. A. MARTINEZ
`CASE NO. 6:21-cv-569 OUTSIDE ATTORNEYS’ EYES ONLY
`
`
` 3
`
`
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 6 of 30
`
`or procedure in connection therewith, and to use, have used, import, export, or have imported or
`exported any product or service of a third party solely for purposes of operating the business of
`Google or its Affiliates.10 Google will make a one-time payment of $300,000 for these rights.11
`
`I understand from discussion with Google’s technical expert Dr. Patel that the Licensed
`12.
`Patents relate to the routing of data between electronic devices and are technologically comparable
`to the Patents in Suit.12
`
`The SMR Agreement has similarities and differences relative to the hypothetical
`13.
`Touchstream/Google license (the “Hypothetical License"). The SMR Agreement differs from the
`Hypothetical License in that the SMR Agreement covers a relatively small remaining patent life
`of approximately 3 years, whereas the Patents-in-Suit have a remaining life of approximately 10
`years from the date of the Hypothetical Negotiation. The SMR Agreement is similar to the
`Hypothetical License in that the SMR Agreement covers technologically comparable to the
`Licensed Patents relative to the Patents-in-Suit, per Dr. Patel. The SMR Agreement also is relevant
`to Google Products inclusive of the accused products, and Google is a party to the license. Based
`on these similarities, the SMR Agreement is a relevant data point to consider as a comparable
`license under Georgia-Pacific factors 2 and 15.
`
`SUMMARY OF OPINIONS
`III.
`As stated in my Initial Report, assuming the Patents-in-Suit are found to be valid,
`14.
`enforceable, and infringed, it is my opinion that the proper measure of damages in this matter is a
`reasonable royalty structured as a lump sum payment. Based on a hypothetical negotiation on or
`around, July 2013 between Touchstream and Google would result in no more than a $9 million
`payment for a U.S.-only, non-exclusive, perpetual, bare patent license to the Patents-in-Suit.
`
`
`10 SMR Agreement (GOOG-TST-00221294 to GOOG-TST-00221308 at GOOG-TST-00221296).
`11 SMR Agreement (GOOG-TST-00221294 to GOOG-TST-00221308 at GOOG-TST-00221298).
`12 SMR Agreement (GOOG-TST-00221294 to GOOG-TST-00221308 at GOOG-TST-00221306); Discussion with
`Dr. Patel.
`
` HIGHLY CONFIDENTIAL -
`
`EXPERT REPORT OF C. A. MARTINEZ
`CASE NO. 6:21-cv-569 OUTSIDE ATTORNEYS’ EYES ONLY
`
`
` 4
`
`
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 7 of 30
`
`The SMR Agreement is structured as a fully paid-up lump-sum license for the rights
`15.
`granted with a lump sum payment of $300,000.13 It is my opinion that the SMR Agreement, which
`I understand from Dr. Patel, Google’s technical expert, licenses technology that is comparable to
`the Patents-in-Suit, provides guidance regarding Google’s preferred fully paid-up lump sum
`license structure, and is a relevant and informative data point (i.e., a downward influence on the
`hypothetical negotiation) as to the amount Google may be willing to pay as a royalty for a non-
`exclusive license for similar (i.e., comparable) patented technology.
`
`
`13 SMR Agreement (GOOG-TST-00221294 to GOOG-TST-00221308 at GOOG-TST-00221298).
`
` HIGHLY CONFIDENTIAL -
`
`EXPERT REPORT OF C. A. MARTINEZ
`CASE NO. 6:21-cv-569 OUTSIDE ATTORNEYS’ EYES ONLY
`
`
` 5
`
`
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 8 of 30
`
`
`
`Christopher A. Martinez
` CPA, CPVA, CLP
`
`Co-Founder and Co-Chair
`
`T: +1 415 848 7631
`
`M: +1 512 422 2626
`
`E: cmartinez@stoneturn.com
`
`
`Austin
`500 West 2nd Street,
`Suite 1900
`Austin, TX 78701
`
`
`
`San Francisco
`One Sansome Street
`Suite 700
`San Francisco, CA 94104
`
`
`
`
`Palo Alto
`228 Hamilton Avenue
`3rd Floor
`Palo Alto, CA 94301
`
`
`
`
`
`
`Christopher Martinez, Co-Founder and Co-Chair of StoneTurn, has
`
`Education
`
`more than 25 years of experience in intellectual property (“IP”)
`
`MBA, University of
`
`damages quantification, intellectual asset licensing and complex
`
`financial modeling. Christopher previously served as the firm’s
`
`Managing Partner from 2016 until 2022.
`
`
`
`Christopher advises companies on the valuation, commercialization, licensing and
`
`management of intellectual assets. As a former licensing executive of a Fortune 50
`
`enterprise, he brings a unique and experience-based approach to the quantification of
`
`patent, trademark and copyright infringement damages, as well as trade secret
`
`California—Los Angeles
`
`A.B., Economics,
`
`Stanford University
`
`
`
`Practice Areas
`
`Intellectual Property
`
`Litigation
`
`misappropriation damages.
`
`
`
`Additionally, he has designed, implemented and executed royalty inspection programs
`
`on behalf of clients to facilitate the capture of the appropriate return on licensed
`
`intellectual assets. He possesses an understanding of accounting and financial
`
`valuation issues that impact intellectual assets, as well as the economic principles
`
`related to business transactions in general, and IP / technology transfer transactions in
`
`
`
`
`
`
`
`
`
`
`
`
`
`particular.
`
`
`
`Christopher also has extensive experience in quantifying economic damages in the
`
`context of breach of contract, business interruption, change of scope, and delay and
`
`disruption allegations. He has conducted contract compliance evaluations and other
`
`fact-finding investigations, and has served as an expert in many disputes.
`
`
`
`StoneTurn.com
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 9 of 30
`
`Christopher A. Martinez, CPA, CPVA, CLP Co-Founder and Co-Chair
`
`
`
`
`
`
`Christopher has worked with clients across a range of industries, including the pharmaceutical, biotechnology, medical
`
`device, semiconductor, telecommunications, Internet / e-Commerce and software sectors.
`
`
`
`Christopher has been designated as an expert in Federal court (Northern, Central and Southern Districts of California;
`
`Northern, Southern, Eastern and Western Districts of Texas; Eastern and Western Districts of Virginia; Southern District of
`
`New York; Delaware; Massachusetts; Northern District of Ohio), State court (California, Texas, Florida, Virginia), United
`
`States Trade Commission (“USITC”) actions, as well as in arbitration proceedings.
`
`
`
`Christopher has been recognized as a top economic patent damages expert in IAM’s Patent 1000 since its inception in
`
`2014. Clients recognize Christopher as “a clear-sighted analyst of the financial issues arising from IP and transactional
`
`disputes. A veteran witness and consultant, he also benefits from commercial insights gained as a licensing executive at
`
`a Fortune 50 corporation.”
`
`
`
`Christopher has served as a speaker on intellectual property-related issues at events hosted by the Practicing Law
`
`Institute (“PLI”), Licensing Executives Society, American Intellectual Property Law Association (“AIPLA”), University of
`
`Texas, Stanford University, UC Berkeley, American Bar Association, Semico, Drug Information Association, among others.
`
`He is a Certified Public Accountant (licensed in the state of California), Certified Patent Valuation Analyst and Certified
`
`Licensing Professional (“CLP”).
`
`
`
`
`SELECT PROFESSIONAL EXPERIENCE
`
`
`• Served as the Executive Director and Vice President of SBC Knowledge Ventures (SBC’s intellectual property
`
`holding company, now d/b/a AT&T Knowledge Ventures), and in that capacity was responsible for valuation and
`
`licensing (both in and out) of various technologies, patents, trade secrets, trademarks and copyrighted subject
`
`matter. He led negotiating teams in dealings with potential licensees and licensors, and was responsible for all
`
`aspects of deal strategy, analytics and execution. He also served as the Chairman of SBC’s Patent Committee,
`
`which was responsible for strategic patenting decisions for the organization and its subsidiaries.
`
`• Assisted counsel and clients in the valuation of various intellectual assets. He has performed intellectual
`
`property audits and consulted with clients regarding the management of their intellectual property assets,
`
`focusing on identification and better utilization of their portfolio of intangible assets and knowledge based
`
`products. He has also consulted with clients as to the determination of royalty rates, and has participated in
`
`licensing negotiations, leveraging his IP valuation and deal experience.
`
`•
`
`In the process of assisting counsel and clients in the valuation and commercialization of intellectual property
`
`assets, Christopher has critiqued and contributed to the development of business plans, and has performed
`
`StoneTurn.com
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 10 of 30
`
`Christopher A. Martinez, CPA, CPVA, CLP Co-Founder and Co-Chair
`
`
`
`
`
`
`market studies, defined potential markets, projected market share and evolving competitive influences, and
`
`developed future sales and cost estimates.
`
`• Evaluated and quantified patent, copyright and trademark infringement damages on many occasions. Related to
`
`such matters, Christopher has performed market analyses and studies wherein the patented or copyrighted
`
`product is sold, as well as assessed lost profits stemming from alleged infringements.
`
`• Evaluated the economic link between the demand for a product / process and the features / attributes covered
`
`by the patent claims, and integrated such findings into his opinions on damages. He has identified and assessed
`
`other relevant license agreements along with evaluating the Georgia-Pacific factors in determining a reasonable
`
`royalty. Additionally, he has employed other approaches for purposes of determining a reasonable royalty.
`
`Christopher has also dealt with patent infringement cases where lost profits and price erosion claims were at
`
`issue. Further, he is experienced in dealing with technical experts, and integrating an appropriate level of
`
`understanding of the subject technology into his damages evaluation.
`
`• Evaluated the economic impact of alleged trade secret misappropriations on many of occasions. He has
`
`conducted analyses to determine the incremental contribution of alleged trade secrets to the profitability of
`
`particular products, as well to business units and entire organizations. He has evaluated the impact of the
`
`departure of key employees, and resultant benefits accruing to the organizations which later employed such key
`
`individuals. He has assessed the cost of development of trade secrets and the economic impact of their
`
`misappropriation. In so doing, he has evaluated the markets in question, as well as the manufacturing,
`
`distribution and marketing capacity of the parties involved in order to determine lost profits, unjust enrichment,
`
`or reasonable royalty damages in various matters resulting from misappropriation.
`
`• Christopher was a leader in the royalty inspection practice at Deloitte & Touche and has provided royalty
`
`inspection services to a variety of client companies within the semiconductor, telecommunications,
`
`biotechnology, pharmaceutical, academic, entertainment, software, apparel, and multimedia industries. He has
`
`assisted in the development of strategic royalty inspection programs, as well as provided planning, supervision
`
`and performance of specific royalty “audits.” As a CPA, Christopher is skilled at assessing control procedures,
`
`and has designed processes aimed at improving the quality and timeliness of information reporting.
`
`• Christopher’s experience related to breach of contract matters includes the assessment and determination of
`
`economic impact, lost revenue and profits, and various forms of consequential damages. He has performed
`
`numerous direct, indirect and overhead cost studies and has determined the appropriate cost allocation method
`
`to employ under various circumstances. He has also evaluated profitability (e.g., gross, incremental, operating
`
`and net) of organizations for various purposes, as well as evaluated solvency at various points in time.
`
`•
`
`In addition to breach of contract engagements, Christopher has also worked on a wide variety of economic
`
`damages claims, including those addressing allegations of fraud, corporate / partnership dissolutions and
`
`financial ruination. Christopher has also had extensive experience in evaluation of the financial and economic
`
`StoneTurn.com
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 11 of 30
`
`Christopher A. Martinez, CPA, CPVA, CLP Co-Founder and Co-Chair
`
`
`
`
`
`
`impact of various disputes involving delay and disruption of construction projects, as well as construction
`
`defects claims.
`
`• Christopher has also performed various funds tracing analyses, as well such work related to fraudulent transfers
`
`and business dissolutions. He has lead complex litigation efforts on behalf of client organizations, and served as
`
`the liaison with counsel and other technical and fact related witnesses.
`
`• Christopher also has experience planning and performing financial statement audits and reviews of both U.S.
`
`Securities and Exchange Commission (“SEC”) registrants and private entities. He has assessed and monitored
`
`various management estimates and budgets, including cost-to-complete estimates and business line revenue
`
`and earnings projections. He has assessed the accounting systems of companies in many industries.
`
`Christopher has also performed attestation work related to a wide variety of financial information.
`
`
`
`PREVIOUS EXPERIENCE
`
`• SBC Knowledge Ventures (now d/b/a AT&T Knowledge Ventures)
`
`• Deloitte & Touche LLP
`
`•
`
`The Barrington Consulting Group, Inc.
`
`• Coopers & Lybrand LLP
`
`• Peterson Consulting
`
`
`
`
`PROFESSIONAL AFFILIATIONS / OTHER
`
`• Certified Public Accountant (CPA)
`
`• Certified Patent Valuation Analyst (CPVA)
`
`• Certified Licensing Professional (CLP)
`
`• Member, American Institute of Certified Public Accountants (AICPA)
`
`• Member, California Society of Certified Public Accountants
`
`•
`
`Licensing Executives Society (LES)
`
`
`
`StoneTurn.com
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 12 of 30
`
`Christopher A. Martinez – Testimony Previous Four (4) Years
`
` Touchstream Technologies, Inc., v. Google, LLC
`U.S. District Court for the Western District of Texas Waco Division
`Case No. 6:21-cv-569-ADA
`
`• XR Communications, LLC dba Vivato Technologies, v. Belkin International, Inc.
`U.S. District Court for the Central District of California Southern Division
`Case No. 2:21-cv-04914-DOC-JDE
`
`• XR Communications, LLC dba Vivato Technologies ,v. Netgear, Inc.
`U.S. District Court for the Central District of California Southern Division
`Case No. 2:21-cv-04942-DOC-JDE
`
`• Applications in Internet Time, LLC v. Salesforce, Inc.
`U.S. District Court for the District of Nevada
`Case No. 3:13-cv-00628-RCJ-CLB
`
`• Eolas Technologies Incorporated v. Google, LLC
`U.S. District Court for the Northern District of California Oakland Division
`Case No. 4:17-cv-03022-JST
`
`• Estech Systems, Inc., v. Hancock Whitney Bank
`U.S. District Court for the Eastern District of Texas Marshall Division
`Civil Action No.: 2:20-cv-00227-JRG-RSP
`
`• Nanoco Technologies LTD., v. Samsung Electronics Co., Ltd., and Samsung
`Electronics America, Inc.
`U.S. District Court for the Eastern District of Texas Marshall Division
`Civil Action No.: 2:20-cv-00038-JRG
`
`• Estech Systems, Inc., v. BBVA USA
`U.S. District Court for the Eastern District of Texas Marshall Division
`Civil Action No.: 2:20-cv-00127-JRG
`
`• Estech Systems, Inc., v. BOKF National Association
`U.S. District Court for the Eastern District of Texas Marshall Division
`Civil Action No.: 2:20-cv-00126-JRG
`
`• Estech Systems, Inc., v. Plains Capital Bank
`U.S. District Court for the Eastern District of Texas Marshall Division
`Civil Action No.: 2:20-cv-00122-JRG
`
`• ArcherDX, Inc., and The General Hospital Corporation d/b/a Massachusetts General
`Hospital v. Qiagen Sciences, LLC, Qiagen LLC, Qiagen Beverly, Inc., Qiagen
`
`
`
` •
`
` 1
`
`
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 13 of 30
`
`Christopher A. Martinez – Testimony Previous Four (4) Years
`
`Gaithersburg, Inc., Qiagen GMBH, Qiaben N.V., and Jonathan Arnold
`U.S. District Court for the District of Delaware
`Case No. 1:18-cv- 01019-MN
`
`
`
` •
`
` CERTAIN POUCH-TYPE BATTERY CELLS, BATTERY MODULES, BATTERY
`PACKS, COMPONENTS THEREOF, AND PRODUCTS CONTAINING THE
`SAME
`(SK Innovation Co., Ltd., et al., v. LG Chem, Ltd., et al.)
`United States Trade Commission
`Investigation No. 337-TA-1179
`
`• Personal Audio, LLC v. Google, LLC
`U.S. District Court for the District of Delaware
`Case No. 1:17-cv-01751-CFC-CJB
`
`• Ramot AT Tel Aviv University, Ltd. v. Cisco Systems, Inc.
`U.S. District Court for the Eastern District of Texas Marshall Division
`Case No. 2:19-cv-00225-JRG
`
`• Solas OLED, Ltd., v. Samsung Display Co., Ltd., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc.
`U.S. District Court for the East District of Texas Marshall Division
`Civil Action No. 2:19-cv-00152-JRG
`
`• CERTAIN FOODSERVICE EQUIPMENT AND COMPONENTS THEREOF
`(Illinois Tool Works, Inc., et al., v. Rebenet, et al.)
`United States International Trade Commission
`Investigation No. 337-TA-1166
`
`• Bushnell Hawthorne, LLC, v. Cisco Systems, Inc.
`U.S. District Court of the Eastern District of Virginia
`Case No. 1:18-cv-00760-TSE-MSN
`
`• SIMO Holdings, Inc., v. Hong Kong UCloudLink Network Technology Limited and
`UCloudLink (America), Ltd.
`U.S. District Court for Southern District of New York
`Civil Action No. 18-cv-5427-(JSR)
`
`• CERTAIN BEVERAGE DISPENSING SYSTEMS AND COMPONENTS
`THEREOF
`(Heineken International B.V., et al., v. Anheuser-Busch InBev S.A., et al.)
`United States International Trade Commission
`Investigation No. 337-TA-1130
`
`
` 2
`
`
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 14 of 30
`
`Christopher A. Martinez – Testimony Previous Four (4) Years
`
`
`• CERTAIN BLOW-MOLDED BAG-IN-CONTAINER DEVICES, ASSOCIATED
`COMPONENTS, AND END PRODUCTS CONTAINING OR USING SAME
`(Anheuser-Busch InBev S.A., et al., v. Heineken International B.V., et al.)
`United States International Trade Commission
`Investigation No. 337-TA-1115
`
`• Siemens Industry, Inc. v. Westinghouse Air Brake Technologies Corporation and
`WABTEC Railway Electronics, Inc.
`U.S. District Court for the District of Delaware
`Case No. 1:16-cv-00284-LPS
`
`• Brooks Automation, Inc., v. PTB Sales, Inc.
`U.S. District Court for the Central District of California, Western Division
`Case No. 2:17-cv-03880 PA
`
`• Nerium Skincare, Inc. v. Nerium International, LLC
`U.S. District Court for Northern District of Texas Dallas Division
`Case No. 3:16-CV-1217B
`
`
`
`
` 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 15 of 30
`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 15 of 30
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`APPENDIX B
`APPENDIX B
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-1 Filed 01/19/23 Page 16 of 30
`
`
`
`
`
`
` PATENT LICENSE AGREEMENT
`
`
`
`This PATENT LICENSE AGREEMENT (“Agreement”) is entered into as of the date of last
`execution (“Effective Date”) by and between Google LLC, a Delaware limited liability company
`with a place of business at 1600 Amphitheatre Parkway, Mountain View, California, United States
`94043 (“Google”), and S.M.R INNOVATIONS LTD, a limited liability company organized and
`existing under the laws of Israel with its principal place of business at Hapisga 178, Nofit, Israel,
`and Y.M.R TECH LTD, a limited liability company organized and existing under the laws of Israel
`with its principal place of business at Hagalgal 5, Ramat Gan, Israel (collectively “Licensor”) and
`is effective as of the Effective Date.
`
`WHEREAS, Licensor and its Affiliates own or control, and have the right to license, certain
`Patents;
`
`WHEREAS, Licensor and its Affiliates desire to grant to Google and its Affiliates, and Google and
`its Affiliates desire to obtain, a license to such Patents according to the terms and conditions of
`this Agreement; and
`
`NOW, THEREFORE, in consideration of the mutual premises and covenants contained herein
`and other consideration, the receipt and sufficiency of which are hereby acknowledged, the
`Parties agree as follows:
`
`1. DEFINITIONS.
`
`1.1.
`
`“Affiliate” means, with respect to a particular Person, any other Person that Controls,
`is Controlled by, or is under common Control with the particular Person, but only for
`so long as such Control exists. For the avoidance of doubt, Apple Inc. is not Google’s
`Affiliate and shall not constitute an After-Acquired Affiliate.
`
`“Claim” means any or all of the following: causes of action, liabilities, claims, demands
`for damages (including actual, consequential, punitive, and exemplary damages and
`injunctive relief), costs and expenses (including attorneys’ fees), pre- and post-
`judgment interest, and any other form of claim or compensation of any kind or nature
`whatsoever, whether past, present or future, fixed or contingent, patent or latent, direct
`or indirect, in law or equity, several or otherwise, and whether known or unknown,
`suspected or unsuspected, or asserted or unasserted.
`
`“Confidential Information” means (a) the terms and conditions of this Agreement,
`including the negotiation of such terms and conditions, and (b) non-public information
`disclosed by one Party (“Discloser”), either directly or through a third party (e.g., a
`broker), to the other Party (“Recipient”) during the negotiation of this Agreement that
`is designated as confidential or, under the circumstances of disclosure, is known or
`should be known by the Recipient to be confidential including information disclosed by
`Google to Licensor relating to any Google Products. Notwithstanding the foregoing,
`Confidential Information does not include information that: (i) was known to Recipient
`before receipt from Discloser; (ii) is publicly available through no fault of Recipient; (iii)
`is rightfully received by Recipient from a third party without a duty of confidentiality; or
`(iv) is independently developed by Recipient.
`