Case 6:21-cv-00569-ADA Document 185-7 Filed 01/19/23 Page 1 of 10
`Case 6:21-cv-00569-ADA Document 185-7 Filed 01/19/23 Page 1 of 10
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`EXHIBIT 9
`EXHIBIT 9
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`FILED UNDER SEAL
`FILED UNDER SEAL
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`Case 6:21-cv-00569-ADA Document 185-7 Filed 01/19/23 Page 2 of 10
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`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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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.,
`
`Civil Case No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`§§
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`§
`§
`§
`§
`§
`§
`§
`§
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`GOOGLE LLC,
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`
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`v.
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`Plaintiff,
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`Defendant.
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`GOOGLE LLC’S SECOND AMENDED INITIAL DISCLOSURES STATEMENT
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`Defendant Google LLC (“Google”) makes the following initial disclosures pursuant to
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`Rule 26(a) of the Federal Rules of Civil Procedure and the Scheduling Order (Dkt. 21). The
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`information disclosed herein represents information currently available and known to Google, and
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`based on Google’s current understanding of Plaintiff Touchstream Technologies, Inc.’s
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`(“Plaintiff” or “Touchstream”) claims and Google’s defenses. Because its investigation and
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`analysis are ongoing, Google reserves the right to amend or supplement these disclosures pursuant
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`to the Federal Rules of Civil Procedure. These disclosures are made without prejudice to Google’s
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`rights to produce, during discovery or at trial, additional information or documents that are (i)
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`subsequently discovered; (ii) subsequently determined to be relevant for any purpose; or (iii)
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`subsequently discovered to have been omitted from these disclosures.
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`I.
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`INITIAL DISCLOSURES
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`A.
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`Individuals Likely to Have Knowledge of Relevant Facts
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`Based on the information currently available to Google, the individuals listed below are
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`likely to have knowledge of relevant facts. Persons that are identified as being affiliated with
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`Google should only be contacted through Google’s counsel at Jones Day, 1755 Embarcadero Road,
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`Palo Alto, California 94303, phone number (650) 739-3939. For some of these disclosures, the
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`-1-
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`Case 6:21-cv-00569-ADA Document 185-7 Filed 01/19/23 Page 3 of 10
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`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`information identified may be the last known contact information to the extent identified on
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`documents or other information available to Google.
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`Name/Contact
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`Connection to Case
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`Matt Van Der Staay
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`Google employee
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`Mr. Van Der Staay may be
`contacted solely through
`Google’s counsel of record
`Micah Rupersburg
`
`Mr. Rupersburg may be
`contacted solely through
`Google’s counsel of record
`Gaofeng Huang
`
`Dr. Huang may be contacted
`solely through Google’s
`counsel of record
`Mike Dodd
`
`Mr. Dodd may be contacted
`solely through Google’s
`counsel of record
`Chris Cooke
`
`Mr. Cooke may be contacted
`solely through Google’s
`counsel of record
`Bernie Habermeier
`
`Mr. Habermeier may be
`contacted solely through
`Google’s counsel of record
`Meher Vurimi
`
`Mr. Vurimi may be contacted
`solely through Google’s
`counsel of record
`Corey Robbins
`
`Mr. Robbins may be
`contacted solely through
`Google’s counsel of record
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`Google employee
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`Google employee
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`Google employee
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`Google employee
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`Google employee
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`Google employee
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`Google employee
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`-2-
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`Subjects of Discoverable
`Information
`Development and
`functionality of certain of the
`Accused Products.
`
`Development and
`functionality of certain of the
`Accused Products.
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`Development and
`functionality of certain of the
`Accused Products.
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`Development and
`functionality of certain of the
`Accused Products.
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`Development and
`functionality of certain of the
`Accused Products.
`
`Development and
`functionality of certain of the
`Accused Products.
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`Development, functionality,
`and product management of
`certain of the Accused
`Products.
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`Sales and marketing
`regarding certain of the
`Accused Products.
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`Case 6:21-cv-00569-ADA Document 185-7 Filed 01/19/23 Page 4 of 10
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`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`Kyle Cuthbert
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`Google employee
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`Google employee
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`Google employee
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`Sales and marketing
`regarding certain of the
`Accused Products.
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`Financial accounting
`regarding certain of the
`Accused Products.
`
`Development and
`functionality of certain of the
`Accused Products.
`
`Mr. Cuthbert may be
`contacted solely through
`Google’s counsel of record
`Michael Maigret
`
`Mr. Maigret may be
`contacted solely through
`Google’s counsel of record
`Majd Bakar
`
`Mr. Bakar may be contacted
`solely through Google’s
`counsel of record
`George Bonanto
`
`Mr. Bonanto may be
`contacted solely through
`Google’s counsel of record
`Ambarish Kenghe
`
`Mr. Kenghe may be
`contacted solely through
`Google’s counsel of record
`Shanna Preve
`
`Ms. Preve may be contacted
`solely through Google’s
`counsel of record
`Jack Weixel
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`Mr. Weixel may be contacted
`solely through Google’s
`counsel of record
`Touchstream Technologies,
`Inc.
`79 Madison Avenue,
`2nd Floor
`New York, NY 10016
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`Google employee
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`Google’s patent licensing and
`intellectual property
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`Google employee
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`Google employee
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`Development, functionality,
`and product management of
`certain of the Accused
`Products
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`Development of certain of the
`Accused Products;
`communications with
`Touchstream
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`Google employee
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`Communications with
`Touchstream
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`Plaintiff
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`Business and financial
`aspects of Touchstream;
`conception and reduction to
`practice of U.S. Patent Nos.
`8,356,251 (“’251 patent”),
`8,782,528 (“’528 patent”),
`and 8,904,289 (“’289 patent”)
`(collectively, the “Asserted
`Patents”); assignment,
`valuation, licensing
`negotiations; alleged
`infringement, enforceability,
`validity, claim construction,
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`Case 6:21-cv-00569-ADA Document 185-7 Filed 01/19/23 Page 5 of 10
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`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`Touchstream employees
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`One or more individuals from
`Touchstream Technologies,
`Inc. d/b/a Shodogg, including
`but not limited to Herb
`Mitschele, David Strober,
`Geoff Sykes, Jamie Cohen,
`Michael Rinzler, Rajiv Lulla,
`and Michael Strober
`79 Madison Avenue,
`2nd Floor
`New York, NY 10016
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`Ramona Bobohalma
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`Google employee
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`Johnny Levai
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`Google employee
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`One or more individuals from
`PacketVideo, TwonkyMedia,
`and/or Lynx Technology
`One or more individuals from
`Boxee and/or Samsung
`One or more individuals from
`Peel and/or Zelfy
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`Third party
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`Third party
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`Third party
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`ownership,
`commercialization,
`disclosure, marking, analyses
`of the Asserted Patents;
`Damages
`Business and financial
`aspects of Touchstream;
`conception and reduction to
`practice of the Asserted
`Patents; assignment,
`valuation, licensing
`negotiations; alleged
`infringement, enforceability,
`validity, claim construction,
`ownership,
`commercialization,
`disclosure, marking, analyses
`of the Asserted Patents;
`Damages
`Prior art relating to the
`Asserted Patents
`Prior art relating to the
`Asserted Patents
`Prior art relating to the
`Asserted Patents
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`Prior art relating to the
`Asserted Patents
`Prior art relating to the
`Asserted Patents
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`Additionally, the following person is an inventor or original assignee of the Asserted
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`Patents and as such is likely to have information concerning the conception and reduction to
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`practice of the Asserted Patents. The inventor may also have information concerning the
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`inventorship, scope, and prosecution of the patents, prior art, and the development and
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`commercialization of products embodying the patented invention. The contact information for
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`this individual is based on information currently available to Google.
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`Name
`David Strober
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`Contact Information
`Current employer: Pearson. See
`https://www.linkedin.com/in/davidstrober/
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`Patent(s)
`The ’251, ’528, and ’289
`Patents
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`Case 6:21-cv-00569-ADA Document 185-7 Filed 01/19/23 Page 6 of 10
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`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`The following individual(s) have been identified as participating in the prosecution of the
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`Asserted Patents and as such are likely to have information concerning said prosecution, as well
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`as the conception and reduction to practice of the patented invention. The contact information for
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`these individuals is based on information currently available to Google.
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`Name
`Samuel Borodach
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`Contact Information
`Fish & Richardson
`P.O. Box 1022
`Minneapolis, MN 55440
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`Patent(s)
`The ’251, ’528, and ’289
`Patents
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`7 Times Square
`20th Floor
`New York, NY 10036
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`In addition to the above-listed individuals, Google states that there likely are other
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`individuals who have knowledge of relevant facts. Such individuals may include:
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`•
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`Individuals and entities identified by, disclosed by, or are related to Google’s invalidity
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`contentions and corresponding document production. These include, but are not
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`limited to, the inventors, developers, manufacturers, and assignees identified by or on
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`the face of the prior art patents, publications, products, methods, and systems identified
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`or disclosed in Google’s invalidity contentions and corresponding document
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`production.
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`•
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`Individuals who have been identified or in the future are identified by Google as Rule
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`30(b)(6) deponents;
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`• Various unidentified officers, directors, employees, and/or agents of Plaintiff;
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`• Various unidentified officers, directors, employees, and/or agents of third parties that
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`previously held title to the Asserted Patents;
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`• Various unidentified officers, directors, employees, and/or agents of Touchstream;
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`•
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`Individuals and entities disclosed in Touchstream’s Initial Disclosures and any
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`amendments or supplements thereto;
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`Case 6:21-cv-00569-ADA Document 185-7 Filed 01/19/23 Page 7 of 10
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`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`•
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`Individuals and entities disclosed in the Initial Disclosures of defendants in any related
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`cases involving the Asserted Patents and any amendments or supplements thereto;
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`•
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`Individuals who have been identified or in the future are identified by Touchstream as
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`Rule 30(b)(6) deponents;
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`• Testifying experts designated by Google and Touchstream;
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`•
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`Individuals who have been identified or in the future are identified by third parties as
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`Rule 30(b)(6) deponents pursuant to subpoenas issued by the parties; and
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`•
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`Individuals and entities who have been identified or in the future are identified by the
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`parties in subpoenas issued in this case.
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`Google further reserves the right to supplement these disclosures and to add additional
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`individuals as discovery proceeds, consistent with Rule 26 of the Federal Rules of Civil Procedure,
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`and any other applicable rule.
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`
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`B.
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`All Documents, Electronically Stored Information, and Tangible Things
`Relevant to Pleaded Claims or Defenses
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`Google will, subject to the terms of a protective order in this case, produce copies or make
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`available for inspection, relevant, non-privileged documents and tangible things in its possession,
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`custody, or control, pursuant to the Federal Rules of Civil Procedure, the Default Standard for
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`Discovery before the District of Delaware, and any Order Regarding E-Discovery. Such
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`documents are or will be located at the offices of Google’s litigation counsel at Jones Day, 1755
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`Embarcadero Road, Palo Alto, California 94303 or at other locations to be identified as needed.
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`Google identifies the following categories of documents in its possession, custody, or
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`control, upon which Google may rely to support its defenses:
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`• Documents relating to the invalidity of the Asserted Patents;
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`• Product documents relating to the Accused Products;
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`Case 6:21-cv-00569-ADA Document 185-7 Filed 01/19/23 Page 8 of 10
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`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`• Documents relating to the marketing and/or sales of the Accused Products;
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`• Financial documents related to the Accused Products;
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`• Documents relating to the prosecution and/or ownership of the Asserted Patents.
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`Google reserves the right to rely on any documents produced by Plaintiff or any non-party
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`during the course of this action.
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`C.
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`Complete Computation of Any Category of Damages Claimed by Any Party
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`Google is not claiming any damages at this time, but it may seek to recover its reasonable
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`attorney’s fees and costs to the extent allowable by applicable law. Google contends that
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`Touchstream is not entitled to any damages or other relief in this action. Google believes it should
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`be the prevailing party in this case.
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`D.
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`Insurance Agreements
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`Google is unaware of any applicable insurance agreement.
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`Case 6:21-cv-00569-ADA Document 185-7 Filed 01/19/23 Page 9 of 10
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`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`Dated: December 1, 2022
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`By: /s/ Tharan Gregory Lanier
` Tharan Gregory Lanier
`
`Tharan Gregory Lanier (Admitted pro hac vice)
`Michael C. Hendershot (Admitted pro hac vice)
`Evan M. McLean (Admitted pro hac vice)
`JONES DAY
`1755 Embarcadero Road
`Palo Alto, California, 94303
`+1 (650) 739-3939
`+1 (650) 739-3900 facsimile
` tglanier@jonesday.com
` mhendershot@jonesday.com
`emclean@jonesday.com
`
`Michael E. Jones (Texas Bar No. 10929400)
`Shaun W. Hassett (Texas Bar No. 24074372)
`POTTER MINTON, P.C.
`110 North College, Suite 500
`Tyler, Texas, 75702
`+1 (903) 597-8311
`+1 (903) 593-0846 facsimile
`mikejones@potterminton.com
`shaunhassett@potterminton.com
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`Attorneys for Defendant Google LLC
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`-8-
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`Case 6:21-cv-00569-ADA Document 185-7 Filed 01/19/23 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing was served by electronically mailing a
`true and correct copy to all counsel of record who have appeared in this case per Local Rule CV-
`5(b) on December 1, 2022.
`
`/s/ Edwin O. Garcia
`Edwin O. Garcia
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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