Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 1 of 18
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`
`Plaintiff,
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`
`
`v.
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`
`GOOGLE LLC,
`
`
`Defendant.
`
`Civil Case No. 6:21-cv-569-ADA
`
`JURY TRIAL DEMANDED
`
`U.S. District Judge Alan Albright
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`REDACTED – PUBLIC VERSION
`
`TOUCHSTREAM TECHNOLOGIES, INC.’S MOTIONS IN LIMINE
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`Plaintiff Touchstream Technologies, Inc. (“Touchstream”) hereby moves the Court for an
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`order in limine to preclude any attorney or witness from (1) making any reference, mention,
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`statement, suggestion, or allusion to, (2) giving any testimony concerning, or (3) introducing any
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`exhibits before the jury or panel concerning any of the following matters.
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`

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`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 2 of 18
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`
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`TABLE OF CONTENTS
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`Page
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`INDEX OF EXHIBITS ................................................................................................................... ii(cid:3)
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` Agreement And Related Opinions And
`Motion in Limine No. 1: To Exclude
`Testimony ....................................................................................................................................... 1(cid:3)
`
`
`Motion in Limine No. 2: To Exclude Evidence And Testimony Regarding
`.................................................................................................................................... 2(cid:3)
`
`Motion in Limine No. 3: To Exclude Evidence And Testimony Regarding Cherry-Picked
`Google License Agreements ........................................................................................................... 4(cid:3)
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`Motion in Limine No. 4: To Exclude Inter Partes Review (IPRs) and PTAB Proceedings ............ 5(cid:3)
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`Motion in Limine No. 5: To Exclude Argument that Touchstream is an Non-Practicing
`Entity or “Patent Troll.” .................................................................................................................. 6(cid:3)
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`Motion in Limine No. 6: To Exclude Testimony or Declarations from Mr. Levai. ........................ 7(cid:3)
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`Motion in Limine No. 7: To Exclude Arguments or Evidence of Touchstream’s Alleged
`Delay in Filing Suit ......................................................................................................................... 9(cid:3)
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`Motion in Limine No. 8: To Exclude Arguments or Evidence of Touchstream’s Not
`Offering a Physical Product .......................................................................................................... 10(cid:3)
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`Motion in Limine No. 9: To Exclude Arguments of Legally Erroneous Non-Infringing
`Alternatives ................................................................................................................................... 11(cid:3)
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`Motion in Limine No. 10: To Exclude Evidence and Testimony Related to Prior Art
`References That Google Failed to Disclose in it Final Invalidity Contentions and for
`Which Google Cannot Provide Adequate Foundation. ................................................................. 12(cid:3)
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`i
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`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 3 of 18
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`INDEX OF EXHIBITS
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`Christopher Martinez Supplemental Expert Report with Appendix B (Jan. 16,
`2023)
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`Christopher Martinez Deposition Transcript
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`Mark Chandler Supplemental Expert Report (Dec. 19, 2022)
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`Christopher Martinez Expert Report (Dec. 12, 2022)
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`Mark Chandler Expert Report (Nov. 14, 2022)
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`HEVC Documents
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`Interdigital/Avanci Documents
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`Microsoft PlayReady Documents
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`Google LLC’s Second AmendedInitial Disclosures Statement
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`Google LLC’s AmendedInitial Disclosures Statement
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`Email Thread
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`Email Thread
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`Email Thread
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`Email Thread
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`Email Thread
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`Email Thread
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`Janos Levai Deposition Transcript
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`ll
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`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 4 of 18
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`Motion in Limine No. 1: To Exclude i] Agreement And Related Opinions And
`Testimony
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`On January 16, 2023—2% months after the close of fact discovery—Google’s expert
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`Christopher Martinez submitted a supplemental report disclosing his opinionsthat a patent license
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`agreement between Gooi
`[ purportedly:
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`
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`1 at 5. The |_| Agreement, Mr. Martinez’s opinions and testimony regarding the [|
`Ex.
`Agreement, and any other opinions and testimony to the extent they rely on the [J Agreement
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`should be excluded for three reasons.
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`First, they should be excluded pursuant to Rule 403, to avoid unfair prejudice, because the
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`a Agreement was produced after the close of discovery. Touchstream had no opportunity to
`conductdiscovery regarding the Agreement, such as on whether Googlemade
`Lo Agreement.’ Accordingly, this Court
`should exclude the [| Agreement and related opinions and testimony because Touchstream
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`“could not have meaningfully responded to [defendant’s expert]’s testimony without additional
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`discovery to test [defendant]’s assertions about what the post-discovery agreements show.” See
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`Fed. Trade Comm’n v. Qualcomm Inc., 2018 WL 6615175, at *3 (N.D. Cal. Dec. 17, 2018)
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`: [ broughtrelated litigations against Ex. 1 at Appx. B ¥ 4.1.
`Without discovery, Touchstream has not been able to determine Google’s involvement in those
`litigations, or its contributionsto their resolution pursuant to Google’s indemnification obligations
`or otherwise. Notably, Google signed the
`Agreement at about the sametime as the case
`against Motorola was dismissed. See S.M.R. Innovations LTD v. Motorola Mobility LLC, No. 1:22-
`cv-00592-CFC-SRF (D. Del), at ECF No.32.
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`

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`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 5 of 18
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`(excluding opinions regarding license agreements entered after close of discovery under Rule 403
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`to avoid plaintiff from being “unfairly prejudiced in its ability to respond”).
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`Second, the limited evidence available indicates that the
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` Agreement is a litigation
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`settlement, with significant differences from a hypothetically negotiated license. The agreement
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`calls for a low,
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` (Ex. 1 at Appx. B ¶ 4.1),
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`
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`id. § 3
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`; ¶ 4.4
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` See
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`
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`; ¶ 7.1(f)
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`. Mr. Martinez’s supplemental
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`report does not address or attempt to account for any of these differences. See Ex. 1. Therefore,
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`similar to the
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` Agreement, the
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` Agreement is an irrelevant and prejudicial
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` and any purported expert opinions regarding it are unreliable, under
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`established precedent. See ECF Nos. 133 & 180.
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`Third, the
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` Agreement is one of Google’s licenses which it selectively produced in
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`this case and thus should be excluded because they create a misleading impression about Google’s
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`purported
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`
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` Ex. 1 at 5—misleading because
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`Google chose not to produce other licenses in which it instead agreed to pay large running royalties
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`for comparable technologies. See Touchstream’s Motion in Limine No. 3.
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`Motion in Limine No. 2: To Exclude Evidence And Testimony Regarding
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`
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`Touchstream anticipates that Google may attempt to introduce at trial three spreadsheets
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`to argue that they reflect
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` as follows:
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`2
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`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 6 of 18
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`DX6022
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`, DX603
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`, and DX604
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`Evidence and testimony regarding the
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` should be excluded for five
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`reasons: (1) under Fed. R. Evid. 901, because Google cannot prove that they actually show
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` see Ex. 2, at Martinez Dep. at 165:1-174:17
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` (2) under
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`Fed. R. Evid. 403, to avoid unfair prejudice, because the only witness Google identified regarding
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`either
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`
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` not disclosed in Google’s Rule 26(a) disclosures, and Touchstream had no opportunity
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`to examine his opinions, see Ex. 2 165:1-174:17
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`; (3) under Fed. R. Evid. 402
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`& 403, because the
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` are irrelevant and unduly prejudicial, confusing, and
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`misleading because they are inherently unreliable and would be used to improperly mislead and
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`skew apportionment of damages on multi-use devices, see (1) above (describing vast inaccuracies
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`and incomparability); Ex. 3, Chandler Supp. Report pp. 9-15
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`; (4) under Fed. R. Evid. 1006,
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`because they are summaries for which no underlying data have been produced; and (5) under Fed.
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`2 All “DX” numbers listed in Touchstream’s motions in limine are based on Google’s 1/13/2023
`Second Amended Preliminary Trial Exhibit List.
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`3
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`R. Evid. 802, because they are hearsay to which no exception applies, including that the business-
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`records exception does not apply because the spreadsheets were created for purposes of litigation,
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`not in the ordinary course of business. Ex. 2 at 167:5-7.
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`Motion in Limine No. 3: To Exclude Evidence And Testimony Regarding Cherry-Picked
`Google License Agreements
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`Google selectively produced, and apparently intends to introduce at trial, only patent
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`license agreements which it believes supports its position that Google
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`
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` See DX 474-
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`76, 479-96, 498-500, 643, cited and discussed in Ex. 4, Martinez Report at 22 & Schedule 10.1 &
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`Ex. 1, Martinez Supp. Report at 5 (collectively, the “Cherry-Picked Google License Agreements”).
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`Tellingly, Google selectively chose not to produce patent license agreements for similar
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`technologies with at least five other companies where it appears that Google
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` including with (1)
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`
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` see Ex. 8.
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`The Court should exclude evidence and testimony regarding the Cherry-Picked Google
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`License Agreements because any minimal probative value they may have is substantially
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`outweighed by the danger of unfair prejudice, confusing the issues, and misleading the jury. See
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`Fed. R. Evid. 403; Fed. R Evid. 106, Advisory Committee Note (admitting documents without
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`others that in fairness ought to be considered at the same time risks “the misleading impression
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`created by taking matters out of context); Insituform Techs., Inc. v. Cosmic-Sondermaschinenbau
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`Gmbh, 2011 WL 13096481, at **2-3 (N.D. Ga. Mar. 30, 2011) (excluding under Rule 403
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`evidence of license agreement because it applied to only “one of several instances in which
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`[defendant] used [plaintiff]’s patents”).
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`4
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`In addition, such testimony would be unreliable and should be excluded under Fed. Rs.
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`Evid. 701 and 702. See, e.g., Ex. 2 at 23:22-24:1
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`Further, evidence and testimony regarding the Cherry-Picked Google License Agreements
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`should be excluded to the extent they are
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` with significant,
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`unaccounted for differences from a hypothetical license in a patent case. See, e.g., ECF No. 133
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` and Touchstream’s Mot. in Limine No. 1
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`Motion in Limine No. 4: To Exclude Inter Partes Review (IPRs) and PTAB Proceedings
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`Google should be precluded from offering evidence, testimony, or argument at trial
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`concerning IPR proceedings challenging any claims of the Patents-in-Suit. The conduct and
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`outcome of the IPRs are not relevant and would be confusing, misleading, prejudicial, and a waste
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`of time. Fed. R. Evid. 402 and 403. Courts routinely exclude reference to factual findings,
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`decisions, and legal conclusions from IPRs and other PTAB proceedings as having minimal
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`probative value that is substantially outweighed by the potential for prejudice and confusion. See,
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`e.g., IOEngine LLC v. Paypal Holdings, Inc., 18-cv-452, 2022 WL 2800911, *1-2 (D. Del. June
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`27, 2022) (collecting cases); Vaporstream, Inc. v. Snap Inc., 17-cv-220, 2020 WL 978731, at *7-
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`8 (C.D. Cal. Feb. 28, 2020); Interdigital Commc’ns Inc. v. Nokia Corp., 13-cv-10, 2014 WL
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`8104167, at *1 (D. Del. Sept18, 2014); Personalized User Model, L.L.P. v. Google Inc., 09-cv-
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`525, 2014 WL 807736, at *3 (D. Del. Feb. 27, 2014).
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`First, the PTAB applies a lower preponderance of the evidence standard, rather than the
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`higher clear and convincing evidence standard governing claims of invalidity at trial. See Integra
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`LifeSciences Corp. v. HyperBranch Med. Tech., Inc., 15-cv-819, 2018 WL 2186677, at *1 (D. Del.
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`5
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`May 11, 2018). Second, courts have found that “even assuming the IPR proceedings have some
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`marginal relevance … the Court still excludes the evidence due [to] the danger of jury confusion
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`and wasting of time and resources.... Introduction of the IPR proceedings would likely require an
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`explanation of the nature of IPR proceedings and the PTAB's role ... and the PTAB's various
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`findings in the multiple IPR proceedings.” Vaporstream, 2020 WL 978731 at *8. For at least
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`these reasons, Google should be precluded from offering evidence or argument regarding any IPR
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`or PTAB proceeding.
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`Motion in Limine No. 5: To Exclude Argument that Touchstream is an Non-Practicing
`Entity or “Patent Troll.”
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`Google should not be permitted to refer to Touchstream using pejorative descriptions that
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`risk unfair prejudice, such as patent troll, non-practicing entity, or similar terms. Fed. R. Evid. 403.
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`These descriptions are irrelevant to Touchstream’s claims of infringement, or any defenses that
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`Google may assert. Such labels will inevitably taint the jury’s perception of Touchstream and
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`distract the jury from the issues it must decide. Courts routinely exclude such pejorative terms.
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`See, e.g., IOEngine LLC v. Paypal Holdings, Inc., 18-cv-452, 2022 WL 2800911, *3 (D. Del. June
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`27, 2022) (even “facially neutral labels such as ‘non-practicing entity’ or ‘patent assertion entity’
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`… are generally not helpful to the jury [] And in the event that jury members are familiar with the
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`terms, they may also be familiar with the negative connotations that those terms sometimes carry”);
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`Interdigital Comm’cns Inc. v. Nokia Corp., 13-10-RGA, 2014 WL 12465431, *1 (D. Del. Aug.
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`28, 2014). Google should also not offer evidence or argument that Touchstream “as being ‘in the
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`business of filing lawsuits.’” Maxell, Ltd. v. Apple Inc., 5:19-cv-00036, 2021 WL 3021253, *3
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`(E.D. Tex. Feb. 26, 2021).
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`6
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`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 10 of 18
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`Motion in Limine No. 6: To Exclude Testimony or Declarations from Mr. Levai.
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`Google should be precluded from offering any testimony from Mr. Janos Levai. Although
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`Google made multiple Rule 26(a) disclosures throughout the case, Mr. Levai was not disclosed
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`until December 1, 2022 (Exs. 9, 10), more than a month after fact discovery closed on October 27,
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`2022. Dkt. 92. Thus, Mr. Levai was disclosed significantly late. Witnesses disclosed well after fact
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`discovery cutoff should be precluded from testifying. See Fed. R. Civ. Proc. 37(c)(1). “The
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`sanction of exclusion is automatic and mandatory unless the sanctioned party can show that its
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`violation of Rule 26(a) was either justified or harmless.” Rao v Rusch, 14-C-66, 2017 WL
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`4278541, *2 (N.D. Ill. June 21, 2017) (excluding a fact witness disclosed on the last day of fact
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`discovery after business hours); Leland v. County of Yavapai, 17-CV-8159, 2019 WL 1547016,
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`*3 (D. Ariz. Mar. 18, 2019) (“Plaintiffs were entitled to assume that the Court meant this, that Rule
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`37(c)(1) means what it says, and that untimely disclosed evidence would be excluded from
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`evidence at trial. [] Thus, any last day disclosures which should have been made earlier prejudice
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`Plaintiffs and are not harmless.”) (report adopted at 17-CV-8159 Dkt. 168).
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`Second, Google played an elaborate bait-and-switch for months regarding Mr. Levai’s
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`testimony. On September 22, 2022, Google designated Mr. Levai for a prior art 30(b)(6) topic, and
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`Google said it would make him available for a remote deposition under the federal rules. Ex. 11
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`at 9. Touchstream agreed. Ex. 11 at 1. On October 7, 2022, Google stated that Mr. Levai was
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`now in Switzerland and refused to offer him for deposition unless Touchstream agreed to take the
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`deposition under Swiss evidentiary rules. Ex. 12 at 1. Touchstream refused the same day, objecting
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`that those rules would prejudice Touchstream because Mr. Levai could simply refuse to answer
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`any question, for any reason, and could even leave the deposition at any time he chose.
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`Touchstream requested a new corporate designee for that topic. Ex. 13 at 1. Google refused.
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`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 11 of 18
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`Google then unilaterally filed a Hague Convention request for deposition of Mr. Levai.
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`Given its procedural objections, Touchstream asked for an explanation but received no response.
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`Ex. 14. Five days after the close of fact discovery, Google again unilaterally asked the court to
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`rule on its Hague Convention request. Ex. 15.3 After multiple attempts by Touchstream to explain
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`why Google waspursuing a Hague Convention deposition of its own employee when Touchstream
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`did not agree to such a deposition, Google finally provided a rationale on November 22, 2022:
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`nearly a month after the close of fact discovery, Google stated forthe first time that
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`16. Not only had Mr. Levainot been disclosed on Google’s Rule 26(a) disclosures, but no notice
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`of a Rule 30 deposition of Mr. Levai by Google was ever made to Touchstream during fact
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`discovery. Understanding that Google would proceed with or without Touchstream, Touchstream
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`attended Google’s Levai deposition under the Swiss rules of evidence. And, as Touchstream had
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`objected, Mr. Levai wasinstructed that he wasfree to refuse to answer any question and wasfree
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`to leave the deposition at any time. Ex. 17 at 6:3-12. Google never asked, and Touchstream never
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`agreed, that Mr. Levai’s Swiss deposition could take place after the close of fact discovery.
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`Because of Google’s behavior, Touchstream did not notice Mr. Levai for a deposition under Rule
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`30, and its questioning was limited to cross examination under the scope of Google’s direct
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`examination.
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`3 Google wrote in an email to the Court that
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`See Ex. 15 at 1, Nov. 1, 2022 email from Mr.
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`Garcia to Ms. Jahnke. Touchstream never made such an agreement and Google should provideits
`basis for its claim — which it madeto this Court — that Touchstream agreed to a Hague Convention
`and Swiss rules deposition of Mr. Levai.
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`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 12 of 18
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`. Ex. 17 at 28-29. Google’s failure to disclose Mr. Levai during fact
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`discovery, and its refusal to make him available outside of the draconian Swiss procedures,
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`substantially prejudiced Touchstream and should result in the exclusion of his testimony at trial.
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`Motion in Limine No. 7: To Exclude Arguments or Evidence of Touchstream’s Alleged
`Delay in Filing Suit
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`The timing of Touchstream’s decision to file suit against Google, including any alleged
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`delay by Touchstream in filing suit, is not probative of any issue in this case and risks confusing
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`the jury. Further, any such evidence would be a transparent attempt to backdoor a laches defense
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`into the jury trial, though the Supreme Court held laches is no longer a viable defense in patent
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`cases and laches was never a jury issue to begin with. See SCA Hygiene Prod. Aktiebolag v. First
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`Quality Baby Prod., LLC, 137 S. Ct. 954, 959-60 (2017). The Court should exclude this evidence
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`under Rules 402 and 403.
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`Evidence of Touchstream’s alleged delay in filing suit is irrelevant and runs afoul of the
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`patent statute under Supreme Court precedent. The Supreme Court has held that Congress already
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`mandated that the sole remedy for delay in filing suit is a 6-year damages window, leaving no
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`“gap” for “gap-filling” equitable defenses like laches to operate. See id. at 961. Here, Touchstream
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`does not seek damages for any infringement occurring more than six years before Touchstream
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`filed suit. Any evidence of Touchstream’s alleged delay is therefore not probative on damages.
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`See Exmark Mfg. Co. Inc. v. Briggs & Stratton Power Prod. Grp., LLC, 879 F.3d 1332, 1352 (Fed.
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`Cir. 2018) (affirming the district court’s decision to exclude evidence of delay in filing suit because
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`“the argument that delay in bringing suit somehow establishes [plaintiff’s] perception of the value
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`of its invention is specious”) (internal citations omitted).
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`Google’s evidence of alleged delay is also irrelevant and highly prejudicial to
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`Touchstream’s claim of infringement and willfulness because it impermissibly invites the jury to
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`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 13 of 18
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`balance Google’s conduct against Touchstream’s actions. But the focus of the infringement and
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`willfulness inquiries does not depend on the conduct of the party charging infringement. Rather, it
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`depends on the accused infringer’s conduct, as infringement is a strict liability offense, and
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`willfulness is about an infringer’s knowledge, beliefs, and actions.
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`Google threatens to derail a proper infringement inquiry if it presents evidence of alleged
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`delay, such as deposition testimony
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` Any such evidence—
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`that Google should be absolved for its infringement, or excused from a willfulness finding, because
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`—could unfairly prompt the jury to infer
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`Touchstream did not file suit sooner.
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`Because the evidence of Touchstream’s alleged delay is not probative of Google’s conduct
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`and will only distract the jury by attempting to portray Touchstream as a bad actor (where
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`Touchstream’s conduct is not at issue), this evidence should be excluded. See Exmark Mfg. Co.
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`Inc. v. Briggs & Stratton Power Prod. Grp., LLC, No. 8:10CV187, 2015 WL 5177759, at *2
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`(D. Neb. Sept. 4, 2015), aff'd in part, 879 F.3d 1332 (Fed. Cir. 2018) (granting plaintiff’s motion
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`in limine and finding “evidence of delay in filing suit and/or laches is not relevant”).
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`Motion in Limine No. 8: To Exclude Arguments or Evidence of Touchstream’s Not
`Offering a Physical Product
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`Google has indicated it intends to claim at trial that Touchstream did not offer a “physical
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`product” or “physical device.” See Ex. 4, Expert Report of Mr. Martinez, ¶ 21.
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`; id. ¶ 100
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`; id. ¶ 100
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`. id. ¶ 104
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`10
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`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 14 of 18
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` But Touchstream
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`only asserts method claims in this case, which are infringed by the performance of steps, not by
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`making, selling, or using a physical device with certain characteristics. These statements are thus
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`irrelevant to any issue in the case, and appear to misleadingly suggest that Touchstream did not
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`value its patented methods, or could not have competed with Google’s accused products, simply
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`because Touchstream did not build its own physical devices to perform these patented claims. As
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`such, the Court should exclude statements about Touchstream not offering a physical product at
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`least under Fed. R. Civ. P. 403 because they are unfairly prejudicial to Touchstream and highly
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`confusing to the jury.
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`Motion in Limine No. 9: To Exclude Arguments of Legally Erroneous Non-Infringing
`Alternatives
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`The Court should prevent Google from claiming the existence of non-infringing
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`alternatives to the asserted claims where it has no proper legal basis to do. Specifically, the Court
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`should prevent Google from claiming it avoids the prior art, or from suggesting that a product is a
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`non-infringing alternative to Google simply because it has not been accused of infringement in a
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`lawsuit by Touchstream.
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`First, the Federal Circuit has “made unequivocally clear … that there is no ‘practicing the
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`prior art’ defense to literal infringement.” Tate Access Floors, Inc. v. Interface Architectural Res.,
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`Inc., 279 F.3d 1357, 1365 (Fed. Cir. 2002). Courts thus routinely grant motions to exclude a
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`plaintiff from arguing they would avoid, could have avoided, or did avoid infringement by
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`allegedly practicing the prior art. E.g., Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., No.
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`13-213, 2015 WL 627430, at *4 (E.D. Tex. Jan. 31, 2015); Loggerhead Tools, LLC v. Sears
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`Holdings Corp., No. 12 C 9033, 2017 WL 4161976, at *1 (N.D. Ill. Apr. 11, 2017). Here, for
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`example, Google asserts a combination of its own previously offered products as allegedly
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`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 15 of 18
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`invalidating prior art. There is also evidence that individuals who worked on aspects of that those
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`alleged prior art products later worked on the accused Chromecast functionalities at Google. There
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`thus exists a high likelihood of Google running afoul of the well-established rule that a defendant
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`cannot argue non-infringement by claiming they practice the prior art.
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`Second, courts have recognized that it is improper to argue to the jury that something is a
`
`non-infringing alternative simply because the plaintiff has not accused it of infringement in a
`
`lawsuit. Rather, absent agreement from the parties, such an argument to be proper requires specific
`
`analysis from a technical expert for why the proposed alternative is somehow materially different
`
`under the plaintiff’s infringement theories. Here, Google’s damages expert Mr. Martinez
`
`references several
`
` that have not been accused in this suit.
`
`Ex. 4 at 40–42. But as courts have found, simply because a product has not been accused is not a
`
`sufficient basis to assume that the product does not infringe. See Acceleration Bay LLC v.
`
`Activision Blizzard Inc., 16-00453, 2019 WL 4194060, at *8 (D. Del. Sept. 4, 2019) (excluding
`
`damages opinion that “assumes non-infringement based on Plaintiff's decision not to pursue
`
`infringement claims” where “none of its technical experts have opined that the earlier games are
`
`non-infringing”). Because the additional needed technical analysis is not present here, this Court
`
`too should exclude such arguments and evidence.
`
`Motion in Limine No. 10: To Exclude Evidence and Testimony Related to Prior Art
`References That Google Failed to Disclose in it Final Invalidity Contentions and for
`Which Google Cannot Provide Adequate Foundation.
`
`Ten of the references that Google cites in support of the
`
`of nonpublic documents provided to Google by
`
` consist
`
`
`
` See Dkt. 177-1, Dr. Mayer Patel Report on Invalidity, 24–
`
`27 of 736 (describing references T-10 through T-20); Dkt. 136-11, Declaration of
`
`
`
`The Court should bar Google from admitting these documents into evidence because (1) Google
`
`12
`
`

`

`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 16 of 18
`
`
`
`failed to disclose these references in its Final Invalidity Contentions, and (2) Google cannot, by its
`
`own admission, provide the foundation necessary to authenticate the documents.
`
`The Court’s Standing Order Governing Proceedings (OGP) 4.2—Patent Cases requires
`
`defendants to serve preliminary invalidity contentions showing “where in the prior art references
`
`each element of the asserted claim(s) are found.” OGP at 2. The OGP further requires a defendant
`
`to produce “all prior art referenced in the invalidity contentions” and to “seasonably” amend the
`
`contentions upon identifying new material, a duty that continues beyond the service of final
`
`invalidity contentions. Id. at 2, 12 & n.12. The purpose of such rules is to provide parties have
`
`adequate notice before expert reports are served. See Pisony v. Commando Constructions, Inc.,
`
`No. 6:17-CV-00055-ADA, 2020 WL 4934463, at *1 (W.D. Tex. Aug. 24, 2020) (Albright, J.).
`
`When a party fails to comply with a court’s scheduling order, that party bears the burden of
`
`showing good cause for the untimely additions. See O2 Micro Int'l, Ltd. v. Monolithic Power Sys.,
`
`467 F.3d 1355, 1366 (Fed. Cir. 2006). If it fails to do so, exclusion is appropriate.
`
`Here, Google served its Final Invalidity Contentions on September 8, 2022, but Google
`
`failed to disclose the
`
` references it now identifies as T-10 through T-20. Dkts. 136-1,
`
`Google’s Final Invalidity Contentions; 136-6,
`
` Google also failed to
`
`produce the documents (which span about 800 pages) until well after the deadline for prior-art
`
`productions had passed. Touchstream was not disclosed these prior art theories until November
`
`11, 2022, when Google served its expert report on invalidity.
`
`Google’s failure to timely disclose and produce the
`
` documents was improper, and
`
`Google should be precluded from offering the documents as evidence and barred from soliciting
`
`any expert opinion related to them. See Micro Int'l., 467 F.3d at 1366; Pisony, 2020 WL 4934463,
`
`13
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`

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`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 17 of 18
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`
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`at *5 (finding unfair prejudice when a plaintiff is “forced to respond to [a] new combination of
`
`prior art not found within the invalidity contentions”).
`
`Moreover, the documents should be barred for the additional reason that Google cannot
`
`provide the foundation necessary to admit them into evidence. In its response to Touchstream’s
`
`motion to exclude certain invalidity contentions, Google stated that it had no intention to call
`
`
`
` Dkt. 149, at 13 of 15. Without his testimony authenticating and laying foundation,
`
`Google has no way to admit the documents.
`
`Respectfully submitted,
`
`TOUCHSTREAM TECHNOLOGIES, INC.
`
`By:
`
` /s/ Samuel G. Bernstein
`One of Its Attorneys
`
`
`
`Ryan D. Dykal (Pro Hac Vice)
`B. Trent Webb (Pro Hac Vice)
`Jordan T. Bergsten (Pro Hac Vice)
`SHOOK, HARDY & BACON L.L.P.
`2555 Grand Boulevard
`Kansas City, MO 64108
`(816) 474-6550
`Fax: (816) 421-5547
`Email: rdykal@shb.com
`Email: bwebb@shb.com
`Email: jbergsten@shb.com
`
`
`
`Date: January 19, 2023
`
`
`
`
`
`
`Michael W. Gray (TX Bar No. 24094385)
`Fiona A. Bell (TX Bar No. 24052288)
`Andrew M. Long (TX Bar No. 24123079)
`SHOOK, HARDY & BACON L.L.P.
`600 Travis Street, Suite 3400
`Houston, TX 77002
`(713) 227-2008
`Fax: (713) 227-9508
`Email: mgray@shb.com
`Email: fbell@shb.com
`Email: amlong@shb.com
`
`Gary M. Miller (Pro Hac Vice)
`Justin R. Donoho (Pro Hac Vice)
`Samuel G. Bernstein (Pro Hac Vice)
`SHOOK, HARDY & BACON L.L.P.
`111 S. Wacker Drive, Suite 4700
`Chicago, IL 60606
`(312) 704-7700
`Fax: (312) 558-1195
`Email: gmiller@shb.com
`Email: jdonoho@shb.com
`
`
`Counsel for Plaintiff Touchstream Technologies, Inc.
`
`14
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`

`

`Case 6:21-cv-00569-ADA Document 189 Filed 01/26/23 Page 18 of 18
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`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to the Federal Rules of Civil Procedure and the Local Rules for the Western
`
`District of Texas, I hereby certify that on the 19th day of January, 2023, I caused the foregoing
`
`to be served on the following counsel of record via the e-mail addresses shown below:
`
`Michael E. Jones
`Patrick C. Clutter
`Shaun William Hassett
`Potter Minton PC
`110 N College, Suite 500
`Tyler, TX 75702
`Tel: 903-597-8311
`Email: mikejones@potterminton.com
`Email: patrickclutter@potterminton.com
`Email: shaunhassett@potterminton.com
`
`Evan M. McLean, pro hac vice
`Michael C. Hendershot, pro hac vice
`Tharan Gregory Lanier, pro hac vice
`Jones Day
`1755 Embarcadero Road
`Palo Alto, CA 94303
`Tel: (650) 739-3939
`Email: emclean@jonesday.com
`Email: mhendershot@jonesday.com
`Email: tglanier@jonesday.com
`
`Edwin O. Garcia, pro hac vice
`Jones Day
`51 Louisiana Avenue, N.W.
`Washington, DC 20001
`Tel: (202) 879-3695
`Email: edwingarcia@jonesday.com
`
` /s/ Samuel G. Bernstein
`Attorney for Plaintiff
`
`
`
`
`
`
`