Case 6:21-cv-00569-ADA Document 185-8 Filed 01/19/23 Page 1 of 9
`Case 6:21-cv-00569-ADA Document 185-8 Filed 01/19/23 Page 1 of 9
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`
`
`
`
`
`
`EXHIBIT 10
`EXHIBIT 10
`
`FILED UNDER SEAL
`FILED UNDER SEAL
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-8 Filed 01/19/23 Page 2 of 9
`
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`
`
`
`
`GOOGLE LLC,
`
`
`
`
`
`
`
`
`
`
`
`Defendant.
`
`Plaintiff,
`
`
`
`v.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`
`Civil Case No. 6:21-cv-569-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`
`GOOGLE LLC’S AMENDED INITIAL DISCLOSURES STATEMENT
`
`Defendant Google LLC (“Google”) makes the following initial disclosures pursuant to
`
`Rule 26(a) of the Federal Rules of Civil Procedure and the Scheduling Order (Dkt. 21). The
`
`information disclosed herein represents information currently available and known to Google, and
`
`based on Google’s current understanding of Plaintiff Touchstream Technologies, Inc.’s
`
`(“Plaintiff” or “Touchstream”) claims and Google’s defenses. Because its investigation and
`
`analysis are ongoing, Google reserves the right to amend or supplement these disclosures pursuant
`
`to the Federal Rules of Civil Procedure. These disclosures are made without prejudice to Google’s
`
`rights to produce, during discovery or at trial, additional information or documents that are (i)
`
`subsequently discovered; (ii) subsequently determined to be relevant for any purpose; or (iii)
`
`subsequently discovered to have been omitted from these disclosures.
`
`I.
`
`INITIAL DISCLOSURES
`
`A.
`
`Individuals Likely to Have Knowledge of Relevant Facts
`
`Based on the information currently available to Google, the individuals listed below are
`
`likely to have knowledge of relevant facts. Persons that are identified as being affiliated with
`
`Google should only be contacted through Google’s counsel at Jones Day, 1755 Embarcadero Road,
`
`Palo Alto, California 94303, phone number (650) 739-3939. For some of these disclosures, the
`
`-1-
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-8 Filed 01/19/23 Page 3 of 9
`
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`information identified may be the last known contact information to the extent identified on
`
`documents or other information available to Google.
`
`Name/Contact
`
`Connection to Case
`
`Matt Van Der Staay
`
`Google employee
`
`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
`
`Google employee
`
`Google employee
`
`Google employee
`
`Google employee
`
`Google employee
`
`Google employee
`
`Google employee
`
`
`
`-2-
`
`Subjects of Discoverable
`Information
`Development and
`functionality of certain of the
`Accused Products.
`
`Development and
`functionality of certain of the
`Accused Products.
`
`Development and
`functionality of certain of the
`Accused Products.
`
`Development and
`functionality of certain of the
`Accused Products.
`
`Development and
`functionality of certain of the
`Accused Products.
`
`Development and
`functionality of certain of the
`Accused Products.
`
`Development, functionality,
`and product management of
`certain of the Accused
`Products.
`
`Sales and marketing
`regarding certain of the
`Accused Products.
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-8 Filed 01/19/23 Page 4 of 9
`
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`Kyle Cuthbert
`
`Google employee
`
`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
`Touchstream Technologies,
`Inc.
`79 Madison Avenue,
`2nd Floor
`New York, NY 10016
`
`Google employee
`
`Plaintiff
`
`Touchstream employees
`
`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, and Michael
`Strober
`79 Madison Avenue,
`2nd Floor
`New York, NY 10016
`
`Ramona Bobohalma
`
`Google employee
`
`One or more individuals from
`PacketVideo, TwonkyMedia,
`and/or Lynx Technology
`
`Third party
`
`
`
`-3-
`
`Sales and marketing
`regarding certain of the
`Accused Products.
`
`Financial accounting
`regarding certain of the
`Accused Products.
`
`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,
`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
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-8 Filed 01/19/23 Page 5 of 9
`
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`One or more individuals from
`Boxee and/or Samsung
`One or more individuals from
`Peel and/or Zelfy
`
`Third party
`
`Third party
`
`Prior art relating to the
`Asserted Patents
`Prior art relating to the
`Asserted Patents
`
`Additionally, the following person is an inventor or original assignee of the Asserted
`
`Patents and as such is likely to have information concerning the conception and reduction to
`
`practice of the Asserted Patents. The inventor may also have information concerning the
`
`inventorship, scope, and prosecution of the patents, prior art, and the development and
`
`commercialization of products embodying the patented invention. The contact information for
`
`this individual is based on information currently available to Google.
`
`Name
`David Strober
`
`Contact Information
`Current employer: Pearson. See
`https://www.linkedin.com/in/davidstrober/
`
`Patent(s)
`The ’251, ’528, and ’289
`Patents
`
`The following individual(s) have been identified as participating in the prosecution of the
`
`Asserted Patents and as such are likely to have information concerning said prosecution, as well
`
`as the conception and reduction to practice of the patented invention. The contact information for
`
`these individuals is based on information currently available to Google.
`
`Patent(s)
`The ’251, ’528, and ’289
`Patents
`
`Contact Information
`Fish & Richardson
`P.O. Box 1022
`Minneapolis, MN 55440
`
` 7
`
` Times Square
`20th Floor
`New York, NY 10036
`
`Name
`Samuel Borodach
`
`In addition to the above-listed individuals, Google states that there likely are other
`
`individuals who have knowledge of relevant facts. Such individuals may include:
`
`•
`
`Individuals and entities identified by, disclosed by, or are related to Google’s invalidity
`
`contentions and corresponding document production. These include, but are not
`
`limited to, the inventors, developers, manufacturers, and assignees identified by or on
`
`
`
`-4-
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-8 Filed 01/19/23 Page 6 of 9
`
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`the face of the prior art patents, publications, products, methods, and systems identified
`
`or disclosed in Google’s invalidity contentions and corresponding document
`
`production.
`
`•
`
`Individuals who have been identified or in the future are identified by Google as Rule
`
`30(b)(6) deponents;
`
`• Various unidentified officers, directors, employees, and/or agents of Plaintiff;
`
`• Various unidentified officers, directors, employees, and/or agents of third parties that
`
`previously held title to the Asserted Patents;
`
`• Various unidentified officers, directors, employees, and/or agents of Touchstream;
`
`•
`
`Individuals and entities disclosed in Touchstream’s Initial Disclosures and any
`
`amendments or supplements thereto;
`
`•
`
`Individuals and entities disclosed in the Initial Disclosures of defendants in any related
`
`cases involving the Asserted Patents and any amendments or supplements thereto;
`
`•
`
`Individuals who have been identified or in the future are identified by Touchstream as
`
`Rule 30(b)(6) deponents;
`
`• Testifying experts designated by Google and Touchstream;
`
`•
`
`Individuals who have been identified or in the future are identified by third parties as
`
`Rule 30(b)(6) deponents pursuant to subpoenas issued by the parties; and
`
`•
`
`Individuals and entities who have been identified or in the future are identified by the
`
`parties in subpoenas issued in this case.
`
`Google further reserves the right to supplement these disclosures and to add additional
`
`individuals as discovery proceeds, consistent with Rule 26 of the Federal Rules of Civil Procedure,
`
`and any other applicable rule.
`
`
`
`
`
`-5-
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-8 Filed 01/19/23 Page 7 of 9
`
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`B.
`
`All Documents, Electronically Stored Information, and Tangible Things
`Relevant to Pleaded Claims or Defenses
`
`Google will, subject to the terms of a protective order in this case, produce copies or make
`
`available for inspection, relevant, non-privileged documents and tangible things in its possession,
`
`custody, or control, pursuant to the Federal Rules of Civil Procedure, the Default Standard for
`
`Discovery before the District of Delaware, and any Order Regarding E-Discovery. Such
`
`documents are or will be located at the offices of Google’s litigation counsel at Jones Day, 1755
`
`Embarcadero Road, Palo Alto, California 94303 or at other locations to be identified as needed.
`
`Google identifies the following categories of documents in its possession, custody, or
`
`control, upon which Google may rely to support its defenses:
`
`• Documents relating to the invalidity of the Asserted Patents;
`
`• Product documents relating to the Accused Products;
`
`• Documents relating to the marketing and/or sales of the Accused Products;
`
`• Financial documents related to the Accused Products;
`
`• Documents relating to the prosecution and/or ownership of the Asserted Patents.
`
`Google reserves the right to rely on any documents produced by Plaintiff or any non-party
`
`during the course of this action.
`
`C.
`
`Complete Computation of Any Category of Damages Claimed by Any Party
`
`Google is not claiming any damages at this time, but it may seek to recover its reasonable
`
`attorney’s fees and costs to the extent allowable by applicable law. Google contends that
`
`Touchstream is not entitled to any damages or other relief in this action. Google believes it should
`
`be the prevailing party in this case.
`
`D.
`
`Insurance Agreements
`
`Google is unaware of any applicable insurance agreement.
`
`
`
`
`
`-6-
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-8 Filed 01/19/23 Page 8 of 9
`
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`Dated: July 20, 2022
`
`
`
`
`
`
`
`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
`
`Attorneys for Defendant Google LLC
`
`
`
`
`
`-7-
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`

`

`Case 6:21-cv-00569-ADA Document 185-8 Filed 01/19/23 Page 9 of 9
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing was served by electronically mailing a
`true and correct copy through Jones Day’s electronic mail system to all counsel of record who
`have appeared in this case per Local Rule CV-5(b) on July 20, 2022.
`/s/ Andrea Dill
`Andrea Dill
`
`
`
`
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`