Case 6:21-cv-00569-ADA Document 192 Filed 01/26/23 Page 1 of 11
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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.,
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`DEFENDANT GOOGLE LLC’S DAUBERT MOTION TO EXCLUDE CERTAIN
`EXPERT OPINIONS OF DR. ALMEROTH
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`Civil Case No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`Defendant.
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Case 6:21-cv-00569-ADA Document 192 Filed 01/26/23 Page 2 of 11
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`Abbreviation
`Touchstream
`Google
`Asserted Patents
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`Asserted Claims
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`POSA
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`TABLE OF ABBREVIATIONS
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`Definition
`Touchstream Technologies, Inc.
`Google LLC
`U.S. Patent Nos. 8,356,251 (the “ʼ251 Patent”), 8,782,528 (the
`“ʼ528 Patent”), and 8,904,289 (the “ʼ289 Patent”)
`Claims 1, 5, and 7-9 of the ʼ251 Patent, claims 1-5, 8, 11, 12, 14,
`and 28 of the ʼ528 Patent, and claims 1, 2, 6, 7, and 8 of the ʼ289
`Patent
`Person Of Ordinary Skill In The Art
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`TABLE OF EXHIBITS
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`Exhibit
`Ex. 1
`Ex. 2
`Ex. 3
`Ex. 4
`Ex. 5
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`Ex. 6
`Ex. 7
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`Ex. 8
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`Ex. 9
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`Ex. 10
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`Description
`Opening Expert Report of Dr. Almeroth (“Almeroth Open. Rep.”)
`Deposition Transcript of Dr. Almeroth (“Almeroth Dep. Tr.”)
`Rebuttal Expert Report of Dr. Almeroth (“Almeroth Rebut. Rep.”)
`Rebuttal Expert Report of Dr. Mayer-Patel (“Mayer-Patel Rebut. Rep.”)
`Touchstream’s Supplemental Responses and Objections to Google LLC’s First,
`Second, and Third Set of Interrogatories
`Google Cast SDK Additional Developer Terms of Service (“TST-00963418”)
`Opening Expert Report of Dr. Almeroth (“Almeroth Open. Rep.”)
`[Additional citations, continued from Ex. 1]
`Deposition Transcript of Dr. Almeroth (“Almeroth Dep. Tr.”)
`[Additional citations, continued from Ex. 2]
`Rebuttal Expert Report of Dr. Almeroth (“Almeroth Rebut. Rep.”)
`[Additional citations, continued from Ex. 3]
`Rebuttal Expert Report of Dr. Mayer-Patel (“Mayer-Patel Rebut. Rep.”)
`[Additional citations, continued from Ex. 4]
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`Case 6:21-cv-00569-ADA Document 192 Filed 01/26/23 Page 3 of 11
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`I.
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`INTRODUCTION AND SUMMARY OF REPLY ARGUMENT
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`Dr. Almeroth, a computer scientist, offers several legal opinions, including an opinion on
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`the ultimate legal issue of direction and control for joint infringement and regarding the meaning
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`and effect of contractual provisions. This is forbidden under Rule 702 and Daubert as
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`Touchstream’s own authority holds. See Dkt. 160 at 7 n.1.
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`Dr. Almeroth’s opinions on secondary considerations should also be excluded because they
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`are unsupported by analysis or admissible evidence. Effectively admitting the point, Touchstream
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`responds to Google’s motion by offering a declaration from alleged inventor Mr. David Strober to
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`the effect that “the core functionality of the commercial products was the same as that in [his]
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`prototypes.” See Dkt. 160 at 10. Such conclusory and self-serving statements are grossly
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`insufficient for a showing of nexus and do not shift the burden to Google. Dr. Almeroth similarly
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`did not do a claim by claim analysis as to how Cast V1 and DIAL purportedly embody the claims
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`without the use of Cast V2, and Touchstream does not even offer a belated analysis in response.
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`Absent admissible evidence and analysis regarding nexus, Dr. Almeroth’s proffered opinion on
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`secondary considerations are insufficient, unhelpful, and misleading and should be excluded.
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`II.
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`ARGUMENT
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`A.
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`Dr. Almeroth’s Improper Legal Conclusions Cast as Technical Opinions
`Regarding Direction and Control for Joint Infringement Should Be Struck
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`Touchstream’s opposition on Dr. Almeroth’s improper legal opinions misses the point in
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`three primary ways. First, Dr. Almeroth offers an opinion on an ultimate legal issue – direction
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`and control. Second, Dr. Almeroth does not primarily rely on technical facts or what engineers
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`said were particular restrictions on software, he repeatedly recites Terms of Service and interprets
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`how the legal document restrict access or usage. Third, Touchstream’s “strawman” claim defies
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`Dr. Almeroth’s report and ignores the asserted method claims.
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`Case 6:21-cv-00569-ADA Document 192 Filed 01/26/23 Page 4 of 11
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`As the first point, Dr. Almeroth repeatedly opines throughout his expert report as to the
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`ultimate legal issue of direction and control for joint infringement. See, e.g., Ex. 7 ¶¶ 129-135,
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`279-280 (repeating “[i]t is my opinion that Google, on its own or through its direction and control
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`of others” for every claim limitation). Dr. Almeroth specifically opines that “each of the steps of
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`the Asserted Claims is attributable to Google” reciting the legal elements, not technical facts, of
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`the ultimate legal conclusion for direction and control. Id. at Ex. 7 ¶ 129. Dr. Almeroth repeatedly
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`ultimately opined as much during deposition. Ex. 8 at 39:17-40:2, 56:25-57:16, 139:9-141:1,
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`177:3-14, 178:25-180:4, and 181:16-181:6. Such testimony from any expert, let alone a technical
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`expert, is improper. Even the case that Touchstream primarily relies upon in its opposition states
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`that “[t]he ultimate legal conclusions regarding direction and control [] are not a proper subject of
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`testimony by a technical expert.” DataTreasury Corp. v. Wells Fargo & Co., No. 2:06-CV-72 DF,
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`2010 WL 3768105, at *4, 5 (E.D. Tex. Sept. 13, 2010); see also Dkt. 160 at 6-7. Here too, such
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`opinions should be excluded.
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`Second, Touchstream argues that “expert opinion related to the issue of joint infringement
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`when the question is necessarily technical in nature” should still be allowable. Dkt. 160. at 8.
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`Even if this were the case here, Dr. Almeroth’s opinions do nothing of the sort. None of the
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`portions of the contract or testimony relied on by Dr. Almeroth relate to technical aspects of the
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`accused casting functionality or how Google’s software relates to the software of third-party
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`developers. Rather, Dr. Almeroth’s testimony relates to whether there are specific contractual
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`requirements relating to the Cast SDK, and the scope of the requirements thereto. For example,
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`Dr. Almeroth recites the licensing terms of the Cast SDK Terms of Service and opines that such
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`terms “demonstrates the degree of control that Google maintains over any software developed by
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`third parties.” Ex. 7 ¶ 134. Dr. Almeroth continues by explaining how additional terms
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`Case 6:21-cv-00569-ADA Document 192 Filed 01/26/23 Page 5 of 11
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`purportedly impose restrictions on third-party developers seeking to utilize the Cast SDK including
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`that certain terms allow Google to cease providing software: “[i]n other words, Google has sole
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`discretion to stop providing the SDK—even permanently—at any time and with no prior notice.”
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`See id. ¶¶ 134-35. In fact, Touchstream admits that Dr. Almeroth is offering legal as well as
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`technical opinions: “Dr. Almeroth’s opinion—that the accused functionalities are carried out by
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`Google code that is required both technically and legally to be incorporated into third-party apps—
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`will therefore be helpful to the jury in resolving this question.” See Dkt. 160 at 8 (emphasis added).
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`However, Touchstream is incorrect that a technical expert offering legal opinions would be helpful
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`to a jury, and its reliance on DataTreasury is therefore misplaced. 2010 WL 3768105, at *5.
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`There, the court found that “expert testimony on whether Defendants’ systems are even capable of
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`direction or control” was admissible but did not allow the extensive legal opinions that
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`Touchstream now claims is permissible. Id. at *4, 5.
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`Third, Touchstream objects to Google’s purported “straw man” argument, but it is Dr.
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`Almeroth’s report that raises the issue of end user involvement in purported infringement. In
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`particular, Dr. Almeroth raises, correctly, that infringement may only occur after an end user
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`initiates a cast session. Ex. 7 ¶ 129. Dr. Almeroth also discusses purported interactions between
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`Google and end users including (1) restrictions purportedly imposed by end user terms of service
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`which do not allow “users to modify the software” and (2) “sending software, registering the
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`devices, and providing updates” to user devices. See id. ¶¶ 129, 131. Touchstream claims that
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`Google’s argument regarding end users would immunize defendants from infringement. But
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`Touchstream ignores that it is asserting method claims in this case. Method claims require actual
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`performance, unlike system claims, where sale alone may create liability. Touchstream chose to
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`assert only method claims, while also failing to allege indirect infringement, and now must live
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`Case 6:21-cv-00569-ADA Document 192 Filed 01/26/23 Page 6 of 11
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`with its decision to rely upon a divided infringement case. Here, the accused steps in the Asserted
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`Claims do not actually occur unless the end user dictates it, including the claimed steps of messages
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`“specifying a video file” and including an “action control command” like play or pause. Ex. 10
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`¶ 229.
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`Dr. Almeroth offers an opinion on the ultimate legal issue of direction and control based
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`on what Touchstream admits is reciting and interpreting a legal document. This opinion, and its
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`legal support, should be excluded from trial.
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`B.
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`Dr. Almeroth’s Improper Opinions on Secondary Considerations Should be
`Struck for Failing to Provide the Requisite Nexus
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`Touchstream’s opposition on secondary considerations of non-obviousness misses the
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`mark and should result in exclusion of Dr. Almeroth’s opinions and testimony. In particular,
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`neither of Touchstream’s arguments relating to the requisite nexus can withstand exclusion under
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`Daubert for both (1) its own products and (2) the launch of the original Chromecast.
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`1.
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`Dr. Almeroth’s Improper Opinions on Secondary Considerations For
`Touchstream’s Own Products Should be Struck for Failing to Provide
`the Requisite Nexus
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`First, Touchstream incorrectly claims that “the requisite nexus [between the claimed
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`invention and Touchstream products’ commercial success] must be presumed.” See Dkt. 160 at
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`11. But “nexus is only presumed when the product tied to the evidence of secondary considerations
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`‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1374
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`(Fed. Cir. 2019) (citing Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392
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`(Fed. Cir. 1988)). To establish the required nexus, the “the patentee [must] demonstrate that the
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`product is essentially the claimed invention.” Id.
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`Touchstream’s support for nexus to its own commercial products is wholly deficient. For
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`one, Touchstream’s reliance on Dr. Almeroth’s conception charts fails because those charts only
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`Case 6:21-cv-00569-ADA Document 192 Filed 01/26/23 Page 7 of 11
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`seek to describe a prototype of the purported invention, not any product that was released to the
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`public. See Dkt. 160 at 10; see also Dkt. 127 at 10-11. Touchstream seeks to cure this plain
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`deficiency through a belated declaration from the inventor of the Asserted Patents, Mr. Strober.
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`See id. In the declaration, Mr. Strober claims that Touchstream’s commercial products include the
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`same core functionality and architecture as his prototype. See id. (citing Opp, Ex. C). However,
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`Touchstream does not support Mr. Strober’s qualifications to opine on whether a particular
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`commercial product embodies the asserted claims. Even worse, Mr. Strober fails to provide any
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`claim element analysis regarding whether the Touchstream products satisfy every claim element
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`(something Touchstream admits is required as Dr. Almeroth provided such an analysis for the
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`prototype). See id. Accordingly, in addition to his lack of qualifications (and timely disclosure of
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`an expert opinion), Mr. Strober’s declaration fails for the same reasons as Dr. Almeroth’s report—
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`both, outside of conclusory self-serving statements, are utterly bereft of any analysis of the
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`commercial products that purportedly led to Touchstream’s commercial success and industry
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`praise. Such “evidence” and deficient analysis is therefore unhelpful, and misleading, to a jury
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`and should be excluded.
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`Relatedly, Touchstream incorrectly contends that “there would still be substantial objective
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`evidence of nonobviousness” based on “licensing deals” and an industry award discussed in Dr.
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`Almeroth’s report. See Dkt. 160 at 12. However, as discussed in the opening motion, such
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`commercial activity and awards are based on Touchstream’s commercial products, not its
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`prototype. See Dkt. 127 at 10. Accordingly, such “evidence” similarly lacks nexus for the same
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`reasons as the rest of Dr. Almeroth’s evidence of secondary considerations. All testimony for
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`secondary considerations of non-obviousness relating to Touchstream’s own products should
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`therefore be excluded.
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`Case 6:21-cv-00569-ADA Document 192 Filed 01/26/23 Page 8 of 11
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`2.
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`Dr. Almeroth Has Not Demonstrated a “Nexus” between the Original
`Chromecast and the Claimed Invention
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`Second, Touchstream further incorrectly contends that Dr. Almeroth established a “nexus”
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`between the launch of the original Chromecast and the claimed invention because allegedly “Dr.
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`Almeroth specifically mapped Google’s DIAL implementations to the asserted claims.” See Dkt.
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`160 at 11 (citing Ex. 9 ¶¶ 299, 302, 305, 308, 311).1 However, Dr. Almeroth does not rely solely
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`on DIAL for every claim limitation of his patent analysis (nor can he). He does not even do so for
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`a single independent claim. Rather, Dr. Almeroth relies upon the combination of both DIAL and
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`the Cast Receiver SDK to demonstrate infringement. Touchstream must understand this
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`distinction because in its opposition, it only cites to certain claim limitations that purport to
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`demonstrate infringement by DIAL. See id. Indeed, for several of the remaining claim limitations
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`of the Asserted Claims, Dr. Almeroth relies upon the combination and not merely DIAL. See, e.g.,
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`Ex. 7 ¶¶ 311, 313, 317. As both parties agree, the Cast Receiver SDK was not available until Cast
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`V2, which was not available at Chromecast’s launch. See Dkt. 127 at 12; Dkt. 160 at 11-12.
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`Accordingly, Touchstream is wrong that Dr. Almeroth mapped Cast V1 to the Asserted Claims.
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`It is not surprising that Dr. Almeroth did not analyze Cast V1 in his infringement report.
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`Cast V1 and the launch of the original Chromecast predates the six-year statutory bar for damages.
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`See Dkt. 160 at 11-12 (citing testimony that Cast V1 was not used shortly after the launch in 2013).
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`Accordingly, the launch of the original Chromecast and Cast V1 is irrelevant to infringement of
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`the Asserted Claims in this case. Touchstream instead attempts to confuse the issues by raising
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`the commercial success of Chromecast devices that implement Cast V2. See id. at 11-12. But
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`1 Touchstream cites to the Dr. Almeroth Rebuttal Report but none of the cited paragraphs in that
`report discuss “DIAL” (or even “Cast v1”). See Dkt. 160, Ex. B. Touchstream presumably
`intended to cite Dr. Almeroth’s Opening Report, but either way, Touchstream’s arguments are
`deficient. See Ex. 7 ¶¶ 299, 302, 305, 308, 311.
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`Google did not raise Cast V2 in its motion, nor seek to strike corresponding evidence, even though
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`such evidence is also insufficient for reasons unrelated to this Daubert motion. But Touchstream
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`cannot hide the fact that it substantially relies upon Cast V1 and the original launch for much of
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`its evidence of secondary considerations. Nor can Touchstream ignore that much of Chromecast’s
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`commercial success is attributable to the critical acclaim of the initial release, as demonstrated by
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`Touchstream’s own evidence.
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`Therefore, Dr. Almeroth’s and Touchstream’s unsupported opinions and testimony that
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`disregard nexus should be excluded.
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`III. CONCLUSION
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`For the foregoing reasons, Google respectfully requests that the Court grant this motion
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`and exclude the opinions of Dr. Almeroth regarding direction and control and secondary
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`considerations of non-obviousness.
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`Case 6:21-cv-00569-ADA Document 192 Filed 01/26/23 Page 10 of 11
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`Dated: January 19, 2023
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`Respectfully submitted,
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`By: /s/ Michael E. Jones, with permission by
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`Tharan Gregory Lanier
` Tharan Gregory Lanier
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`JONES DAY
`Tharan Gregory Lanier (Admitted pro hac vice)
`CA State Bar No. 138784
`E-mail: tglanier@jonesday.com
`Michael C. Hendershot (Admitted pro hac vice)
`CA State Bar No. 211830
`E-mail: mhendershot@jonesday.com
`Evan M. McLean (Admitted pro hac vice)
`CA State Bar No. 280660
`E-mail: emclean@jonesday.com
`1755 Embarcadero Road
`Palo Alto, CA 94303
`Telephone: (650) 739-3939
`Facsimile:
`(650) 739-3900
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`POTTER MINTON PC
`Michael E. Jones
`TX State Bar No. 10929400
`E-mail: mikejones@potterminton.com
`Shaun W. Hassett
`TX State Bar No. 24074372
`E-mail: shaunhassett@potterminton.com
`102 N. College Ave., Suite 900
`Tyler, TX 75702
`Telephone:
` (903) 597-8311
`Facsimile:
` (903) 593-0846
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`Attorneys for Defendant
`GOOGLE LLC
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`Case 6:21-cv-00569-ADA Document 192 Filed 01/26/23 Page 11 of 11
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who have consented to electronic service are
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`being served with a copy of this document via electronic mail on January 19, 2023.
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`I also hereby certify that all counsel of record who have consented to electronic service
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`are being served with a notice of filing of this document, under seal, pursuant to L.R. CV-5(a)(7)
`on January 19, 2023.
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`/s/ Michael E. Jones
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`I certify that the foregoing document is authorized to be filed under seal pursuant to the
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`Protective Order in this case and Judge Albright’s Amended Standing Order Regarding Filing
`Documents Under Seal in patent Cases and Redacted Pleadings.
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`/s/ Michael E. Jones
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