Case 6:21-cv-00569-ADA Document 194 Filed 01/26/23 Page 1 of 27
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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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`GOOGLE LLC,
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`Defendant.
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`Plaintiff,
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`v.
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`Civil Case No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANT GOOGLE LLC’S REPLY IN SUPPORT OF
`MOTION FOR SUMMARY JUDGMENT
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`Case 6:21-cv-00569-ADA Document 194 Filed 01/26/23 Page 2 of 27
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`TABLE OF CONTENTS
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`Page
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`I.
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`A.
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`B.
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`TS’s “Physical” Versus “Logical” Argument Contradicts Its Own Position
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`TS’s “Physical” Versus “Logical” Argument Fails In Any Event To
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`TABLE OF ABBREVIATIONS ................................................................................................... ii
`TABLE OF EXHIBITS ................................................................................................................ iii
`TS CANNOT MEET ITS BURDEN TO PROVE INFRINGEMENT ............................. 1
`In Seeking To Preserve The Validity Of The Patents ............................................ 1
`Present A Factual Dispute ...................................................................................... 2
`TS’s Claim-Construction Arguments Do Not Raise Relevant Issues .................... 4
`The Relevant Case Law Supports Google’s Position ............................................ 8
`UNDER 35 U.S.C. § 112 ................................................................................................. 10
`WILLFULNESS .............................................................................................................. 12
`Willfulness ........................................................................................................... 12
`Willfulness ........................................................................................................... 17
`MANY TIMES IT RAISES THE ISSUE ........................................................................ 18
`PERMANENT INJUNCTION. ....................................................................................... 19
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`C.
`D.
`TS’S INTERPRETATIONS OF THE CLAIMS RENDERS THEM INVALID
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`II.
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`III.
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`GOOGLE IS ENTITLED TO SUMMARY JUDGMENT OF NO
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`A.
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`B.
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`Google Is Entitled To Summary Judgment Of No Pre-Complaint
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`Google Is Entitled To Summary Judgment Of No Post-Complaint
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`IV.
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`TS IS NOT ENTITLED TO FOREIGN DAMAGES, NO MATTER HOW
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`V.
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`GOOGLE HAS ESTABLISHED THAT TS IS NOT ENTITLED TO A
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`Case 6:21-cv-00569-ADA Document 194 Filed 01/26/23 Page 3 of 27
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`Abbreviation
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`TS
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`Google
`Patents
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`Claims
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`POSA
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`MSJ
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`TABLE OF ABBREVIATIONS
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`Definition
`Touchstream Technologies, Inc.
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`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”)
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`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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`Motion for Summary Judgment
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`*All emphasis added unless stated otherwise
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`Case 6:21-cv-00569-ADA Document 194 Filed 01/26/23 Page 4 of 27
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`TABLE OF EXHIBITS
`Description
`Opening Expert Report of Dr. Almeroth (“Almeroth Open. Rep.”)
`Deposition Transcript of Dr. Almeroth (“Almeroth Dep. Tr.”)
`Rebuttal Expert Report of Dr. Mayer-Patel (“Mayer-Patel Rebut. Rep.”)
`Rebuttal Expert Report of Dr. Almeroth (“Almeroth Rebut. Rep.”)
`J. Kurose and K. Ross, Computer Networking: A Top-Down Approach
`Featuring the Internet", Addison-Wesley (6th Ed. 2013) available at
`https://eclass.teicrete.gr/modules/document/file.php/TP326/Θεωρία%20
`(Lectures)/Computer_Networking_A_Top-Down_Approach.pdf (“Computer
`Network Textbook”)
`CS176B: Network Computing Winter 2012 available at
`https://sites.cs.ucsb.edu/~almeroth/classes/W12.176B/ (“Almeroth UCSB Class
`Web Page”)
`October 21, 2022 Deposition of Mr. Mitschele
`Touchstream’s Supplemental Responses to Google’s Interrogatory No. 11
`Exhibit 2 of October 21, 2022 Deposition of Mr. Mitschele
`November 30, 2022 Deposition of Mr. Levai
`Exhibit 4 of October 21, 2022 Deposition of Mr. Mitschele
`Exhibit 5 of October 21, 2022 Deposition of Mr. Mitschele
`September 30, 2022 Deposition of Mr. Bakar
`October 6, 2022 Deposition of Mr. Kenghe
`Exhibit 1 of October 21, 2022 Deposition of Mr. Mitschele
`September 9, 2022 Deposition of Mr. Lulla
`Exhibit 15 of October 21, 2022 Deposition of Mr. Mitschele
`Exhibit 12 of October 21, 2022 Deposition of Mr. Mitschele
`Exhibit 13 of October 21, 2022 Deposition of Mr. Mitschele
`Exhibit 16 of October 6, 2022 Deposition of Mr. Weixel
`October 6, 2022 Deposition of Mr. Weixel
`October 21, 2022 Deposition of Mr. Van Der Staay
`Opening Expert Report of Dr. Mayer-Patel (“Mayer-Patel Open. Rep.”)
`PTAB Notice of IPR Institution re ’251 Patent
`PTAB Notice of IPR Institution re ’289 Patent
`PTAB Notice of IPR Institution re ’528 Patent
`Damages Expert Report of Mark J. Chandler
`Exhibit 13 of October 21, 2022 Deposition of Mr. Mitschele
`April 1, 2022 Deposition of Mr. Mitschele (“Mistchele Dep. Vol 1”)
`October 26, 2022 Deposition of Micah Rupersburg (“Rupersburg II Dep. Tr.”)
`September 29, 2022 Deposition of Michael Rinzler
`September 21, 2022 Deposition of David Strober
`Rebuttal Expert Report of Dr. Mayer-Patel (“Mayer-Patel Rebut. Rep.”)
`[continued from Ex. 3]
`Opening Expert Report of Dr. Mayer-Patel (“Mayer-Patel Open. Rep.”)
`[continued from Ex. 23]
`Touchstream presentation, TS-00913131-151
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`Exhibit
`Ex. 1
`Ex. 2
`Ex. 3
`Ex. 4
`Ex. 5
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`Ex. 6
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`Ex. 7
`Ex. 8
`Ex. 9
`Ex. 10
`Ex. 11
`Ex. 12
`Ex. 13
`Ex. 14
`Ex. 15
`Ex. 16
`Ex. 17
`Ex. 18
`Ex. 19
`Ex. 20
`Ex. 21
`Ex. 22
`Ex. 23
`Ex. 24
`Ex. 25
`Ex. 26
`Ex. 27
`Ex. 28
`Ex. 29
`Ex. 30
`Ex. 31
`Ex. 32
`Ex. 33
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`Ex. 34
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`Ex. 35
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`Exhibit
`Ex. 36
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`Ex. 37
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`Description
`April 24, 2013 LinkedIn message from Herb Mitschele to Jack Weixel, Subject:
`Shodogg Company LinkedIn page, GOOG-TST00016780
`Opening Expert Report of Dr. Almeroth (“Almeroth Open. Rep.”)
`[continued from Ex. 1]
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`Case 6:21-cv-00569-ADA Document 194 Filed 01/26/23 Page 6 of 27
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`Google is entitled to summary judgment on every issue it has raised. Contra Dkt. 158.
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`I.
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`TS CANNOT MEET ITS BURDEN TO PROVE INFRINGEMENT
`TS’s attempt to survive summary judgment of non-infringement disregards the separate
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`claim requirements of “server system” and “display device”—components that it acknowledges
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`are separate in its MSJ of validity under § 101. It is undisputed that the Accused Products do not
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`have such separate components. Indeed, TS accuses the same device for both the recited “server
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`system” and “display device” limitations. For a product to infringe, it must read on every claim
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`limitation, and TS’s accusation of the same component as two separate components fails as a
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`matter of law. See also Mot. at 12-13, 16-20.
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`TS spends much of its response belaboring a purported distinction between “logical” and
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`“physical” separation to argue that the claimed “server system” and “display device” need have
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`only a “logical separation” rather than a “physical” one. See Opp. at 3. This fails to present a
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`genuine issue of material fact to avoid summary judgment of non-infringement.
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`A.
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`TS’s “Physical” Versus “Logical” Argument Contradicts Its Own Position In
`Seeking To Preserve The Validity Of The Patents
`TS’s physical-versus-logical argument is belied by its own acknowledgement of what the
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`Claims require. As Google showed in its Opposition to TS’s MSJ of Validity Under § 101, TS
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`acknowledged the particular, complex, and physical architecture and components claimed. Dkt.
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`154 at 10-12. TS recognized the “server system” and the “display device” as distinct technological
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`parts, components, and structure, arguing that “the Claims are directed to a specific, concrete
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`computer architecture” and that the claims “specify the technological parts of the system that
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`perform each step (personal computing device, server system, display device).” Dkt. 134 at 10,
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`14. Similarly, TS argued that “the [Claims] here contain a specific structure (‘personal computing
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`device’, ‘server system’, ‘display device’) and specific messaging rules” “along with the contents
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`of the messaging that is exchanged between these components.” Dkt. 134 at 12, 14.
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`TS thus concedes that its Asserted method Claims are specific about what the different
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`instrumentalities are (a distinct display device and server system) and what those different devices
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`do, especially where the distinct instrumentalities communicate “to” and “between” each other.
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`Its argument for infringement is directly contrary to its own acknowledgement of the specifically
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`claimed structures when it attempts to defend the validity of the Claims.
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`B.
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`TS’s “Physical” Versus “Logical” Argument Fails In Any Event To Present A
`Factual Dispute
`TS’s spurious physical-versus-logical discussion is irrelevant because TS cannot show
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`infringement under either route. Even were a logical distinction sufficient to meet the claims (and
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`it is not), no reasonable jury could find infringement here. TS alleges that the entirety of the
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`accused “cast-enabled device” (a Chromecast device) is both the “server system” and the “display
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`device.” See id. at 11. That fails to show that the two distinct instrumentalities are either logically
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`or physically separated, at least one of which TS concedes is required by the Claims. TS’s
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`descriptions of the Accused Products does not show otherwise.
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`First, TS points to aspects of the Accused Products that do not relate to the claimed server
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`system and display device. See Opp. at 4. For instance, TS lists several components on a
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`Chromecast device, but none of those components performs the claimed functions of the server
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`system, nor does TS contend they do.1 TS also mentions various cloud servers maintained by
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`Google. See Opp. at 4. But it is undisputed that Google cloud servers do not do what the claimed
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`1 TS puzzlingly points to MDNS, DIAL, and WebSocket servers. See Opp. at 4.
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` See Ex. 30 (Rupersburg II Dep. Tr.) at 35:18-36:16. Notably, TS does not
`point to any limitations where the purported server components identified by TS perform the
`claimed functions of the claimed server system. For example, there are no allegations the
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`server system does (e.g., Google cloud servers do not identify a programming code based on an
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`action control command). Rather, these servers perform other functions typical of a server, as
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`acknowledged by TS. See id. They help maintain the configuration of the Chromecast devices or,
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`in a minority of use cases, certain servers (like the MDx server) may be used to relay data between
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`separate devices. But like the Chromecast components that TS accuses of being the “system
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`server,” these servers do not perform the required functions of the claimed server system.
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`Second, TS contends that components on the alleged display device (e.g., a case-enabled
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`device like a Chromecast), which also allegedly acts as a server system, receive messages intended
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`to satisfy the limitation of “receiving in the server system, one or more messages from a personal
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`computing device.” See Opp. at 6-7. But TS claims the display device is the entire cast-enabled
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`device (Chromecast). See Mot. at 11. Thus, according to TS, the messages are not received by a
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`server system, but instead are received by the display device itself.
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`Third, TS argues that components may communicate with other components co-located
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`within the same computer.2 See Opp. at 5-6. In particular, TS argues that the Accused Products
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`have the claimed “display device” and “server system” because a “receiver application” running
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`on the alleged display device receives information from a server system component also on the
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`display device. See Opp. at 7. But the claims do not recite limitations where components
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`communicate within a single device, i.e., the display device. Rather, the claims speak in terms of
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`“devices” and require communications between the personal computing device and the server
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`system and between the server system and display device. See Mot. 12-14. Moreover, TS’s
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`2 TS misrepresents that Google’s 30(b)(6) witness described communications between server and
`non-server components on the Chromecast. See Opp. at 6 (citing Opp, Ex. C at 23:10-24:12,
`52:11-21). The witness said nothing of the sort. While Mr. Rupersburg discussed communication
`between components, he did not refer to message passing between server and non-server
`components within the Chromecast.
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`argument fails to show that the Accused Products contain a “server system” separate from a
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`“display device,” because it is undisputed that the receiver application is within the purported
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`display device that TS contends is also the claimed server system.
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`TS accuses aspects that are neither physically nor logically distinct, which thus cannot meet
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`the claimed “server system” and “display device” requirements as a matter of law. No matter how
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`many times TS tries, its “box-drawing exercise” fails because the Accused Products do not fit into
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`the boxes expressly required by the Claims.
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`TS’s Claim-Construction Arguments Do Not Raise Relevant Issues
`C.
`TS’s newfound arguments about “logical” versus “physical” distinctions fail for yet
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`another reason: its reading is belied by the intrinsic evidence and its cited extrinsic evidence.3
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`The Claims: TS relies on the fact that the claims do not expressly “state the display device
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`and server system must be separate instruments” and points to claim language stating that the
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`personal device is separate, Opp. at 7, but this disregards the claim language that expressly treats
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`each of the server system and display device as distinct and separate. See Mot. at 9-11. The
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`claimed exchange of messages and information between the personal computing device, the server
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`system, and the display device also supports that each is separate and distinct. See Mot. at 12-14.
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`TS’s arguments otherwise lack merit.
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`First, the ’251 Patent requires the server system to assign the synchronization code to the
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`display device. TS misconstrues the issue and misreads its own infringement contentions. See
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`3 TS argues that Google “waived” this claim construction issue. See Opp. at 15-16. That is another
`red herring. TS only offered its new theory accusing the display device of being both that and the
`server system after learning in discovery that Google’s Accused Products did not use the required
`server system. TS’s new infringement position came after claim construction in this case and
`requires claim construction because TS ignores the plain and ordinary meaning of the claimed
`“server system” and “display device” as separate and distinct. See O2 Micro, 521 F.3d at 1360.
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`Opp. at 11. Which devices are synchronized is irrelevant, what matters is that different devices
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`are synchronized. If the server is part of the display device, then the display device would create
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`its own synchronization code, which is not what the claims require. Moreover, while it is
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`inappropriate for TS to base its claim construction position on how the Accused Products are
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`configured, TS’s comparison to the use of device IDs and session IDs on the Accused Products is
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`similarly inapt. TS does not rely on either the device ID or the session ID as the claimed
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`synchronization code for the ’251 patent. See Ex. 1 (Almeroth Open. Rep.) ¶ 290. Instead, TS
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`relies on a PIN purportedly assigned by an opencast server. See id. TS’s misleading statements
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`should be disregarded.
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`Second, TS erroneously points to communication between components within computers.
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`See Opp. at 10, 11. But the Claims do not recite communication between two components on the
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`display device, but rather communication between the “server system” and “display device.” For
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`this same reason, TS cannot leverage case law involving separate components housed within the
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`same physical device. See Opp. at 10, 11. Accordingly, TS’s reliance on Ioengine v. Roku, 2022
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`WL 10757811, at *8, *10 (W.D. Tex. 2022) (Gilliland, J.), and other case law is misplaced.
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`The Specification: TS likewise disregards the specification’s confirmation that the
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`“display device” and “server system” are separate and distinct (physically and logically). See Mot.
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`at 9-11; Ex. 3 (Mayer-Patel Rebut. Rep.) ¶¶ 59, 95-99. For example, the specification describes
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`the server system and display device separately and that they are each “coupled to the
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`network.” ’289 Patent, at Abstract, 1:43-61. Moreover, Figure 2 expressly describes the server
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`system as “Back-end servers” (unlike the display device), and the specification further discloses
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`that the display device “establish[es] a secure connection back to the server system,” which would
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`be unnecessary if they were on the same device. See Mot. at 9-11. The specification is replete
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`with such examples as discussed in Google’s motion, which reinforces the claim language. See
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`id.; id. at 7-8; Kyocera v. ITC, 22 F.4th 1369, 1382-83 (Fed. Cir. 2022); Section I.D.
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`The specification further describes the import of the server system and its separation from
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`the display device. In particular, one of the claim limitations that TS contends is performed by the
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`display device is “identifying, by the server system, programming code.” See Ex. 37 (Almeroth
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`Open Rep.) ¶¶ 453-55. However, the specification describes that the database of information that
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`allows for identifying the appropriate programming code is located at the server system, not the
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`display device. See Mot. at 10; see also Ex. 33 (Mayer-Patel Rebut. Rep.) ¶¶ 59-60. Conflating
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`the server system and display device in the manner proposed by TS disregards that the information
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`stored at the server system, which can be shared by all display devices, would instead be stored at
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`the display device itself. This defeats the purpose of the shared information stored at the server
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`system and teaches against allowing the claimed server system to be located on the display device.
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`See id.
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`TS seeks to rely on the specification’s reference that the server system need not be on the
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`Internet. See Opp. at 8. However, regardless of the geographic location, TS’s point reinforces that
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`the “server system” and “display device” are distinct and communicate over a “network” (not
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`within the display device). See id. TS also points to boilerplate language that the “program
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`components and system” of the Patents “can generally be integrated together in a single software
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`product.” See id. That generic language refers to integration in a software program, but the display
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`device that TS contends integrates the server system is not a software product.4 Rather, the
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`specification describes the display device as a television, laptop, or personal computer. See ’289
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`4 Even if the cited language were referring to the interoperability of the claimed server system and
`display device, the claims require particular embodiments; a patent need not include all
`embodiments of a specification. See Kyocera, 22 F.4th at 1382–83.
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`Patent at 7:8-11.
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`The Prosecution History: As with the claim language and specification, TS cannot point
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`to anything in the prosecution history supporting its position. Rather, as with its argument
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`regarding the claim language, TS refers again to the personal computing device being separate
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`from the display device, which fails to address the separateness of the display device and server
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`system. See Opp. at 8-9. Moreover, in the prior art cited by the Examiner during prosecution, the
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`server system was indeed separate from the display device. See Opp, Ex. R at 5. TS’s reference
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`to a separate patent in the patent family that recites a “remote server device” also does not support
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`TS’s position. See Opp. at 9. “Remote server device” appears to be an alternative way to refer to
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`the claimed “server system” here, but it is not identical, and “distinct” and “remote” are two
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`separate requirements, so a distinctness requirement would not preclude a “remote” limitation.
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`Extrinsic Evidence: Finally, TS’s reliance on Dr. Almeroth’s interpretation of Mr.
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`Strober’s purported prototype, which is based heavily on self-serving conversations with and
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`deposition testimony of Mr. Strober, also cannot overcome the express claim language and
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`specification. See Opp. at 9-10. Inventor testimony and related extrinsic evidence should be
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`disregarded when in conflict with the claim language and specification. See Speedplay v. Bebop,
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`211 F.3d 1245, 1256, (Fed. Cir. 2000). At most, this evidence merely shows the deficiencies of
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`TS’s arguments regarding the alleged conception and reduction to practice of the Patents. See Ex.
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`34 (Mayer-Patel Open. Rep.) ¶¶ 2800-20; Ex. 33 (Mayer-Patel Rebut. Rep.) ¶¶ 348-67. Moreover,
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`Mr. Strober is inconsistent on this point because he also testified that his prototypes did not include
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`a direct connection between the phone (i.e., the personal computing device) and display device
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`over Wi-Fi. See Ex. 32 (Strober Dep. Tr.) at 73:22-
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`74:15. In addition, when the TS illustrated the
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`purported invention, it described the server system and
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`display device as separate and distinct, consistent with
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`Google’s motion. See Ex. 35 (TS-00913131) at
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`TS00913144 (right). In particular, the figure that Dr.
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`Almeroth relies on to show Mr. Strober’s purported
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`conception and reduction to practice of the Patents
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`illustrates
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`that
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`the personal computing device only
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`communicates with cloud servers and the cloud servers
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`send messages to a separate and distinct display device.
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`See Dkt. 160, Ex. D at 3 (left). The inventorship record, to
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`the extent it should be considered, is consistent with the
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`claimed requirement of a separate “display device” and “server system.”
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`The Relevant Case Law Supports Google’s Position
`D.
`As Google showed, Becton, Kyocera, and related cases confirm that claim limitations
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`identified separately in a claim, like the “server system” and “display device” terms in the Accused
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`Patents, are presumed to be separate and distinct. See Mot. at 7-8. TS cites no Federal Circuit
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`case law that holds to the contrary. See Opp. at 11-15. In addition, in neither Becton nor Kyocera
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`did the Court require that the specification mandate separation of the claim elements. Indeed,
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`requiring such a mandate would defeat the purpose of a presumption. In fact, in Kyocera, there
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`was an embodiment in the specification that did allow for shared structure. 22 F.4th at 1382-83.
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`There, the Court found that the embodiment conflicted with the claim language, which required
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`the claim elements to be separate and distinct. See id.
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`TS cites Powell v. Home Depot, but that case is off point. 663 F.3d 1221 (Fed. Cir. 2011).
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`The specification at issue in Powell expressly taught that the claim elements at issue were not
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`separate and distinct. See id. at 1231-32 (“the specification teaches that the cutting box may also
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`function as a ‘dust collection structure’ to collect sawdust and wood chips generated during the
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`wood cutting process.”). In MiTile v. Hasbro, the court explained this: “Home Depot suggest[s]
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`that claim elements can overlap structurally but only if intrinsic evidence, like the claims and
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`specification, support reading structural overlap into the patent. Absent such evidence, the
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`presumption is that elements separately listed connote elements separately structured.” 984
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`F.Supp.2d 525, 530-32 (E.D. Va. 2013). In contrast, in MiTile, (1) the claims listed the
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`“communications unit” separately from “proximity sensor”; (2) the claims did “not suggest that
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`the communications unit overlaps structurally with the proximity sensor”; and (3) “the
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`specification treat[ed] the proximity sensor and communications unit as separate components of
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`the patented invention.” Thus, in MiTile, while there was no express requirement in the claims or
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`the specification that the elements be separate or distinct, the court still required such separation
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`given “the clear implication of the claim language.” See id. Similarly, in Huawei v. Verizon, the
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`court found the plaintiff had “not identified any teaching in the [] Patent that suggests [] two buffers
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`may be a single structure.” 2021 WL 150442, at *9 (E.D. Tex. Jan. 15, 2021). Accordingly, the
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`court held that “even when read in the context of the patent’s description of the invention, the clear
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`implication of the separately recited buffers remains that the buffers are distinct structures.” See
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`id. Further cases cited by TS similarly concerned separate components, even if housed within a
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`single device. See, e.g., Egenera v. Cisco Sys., 547 F.Supp.3d 112, 123-24 (D. Mass. 2021).
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`TS contends that Google’s cited cases are inapposite because they concerned technologies
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`other than in the context of computer software. See Opp. at 11-12. Not so. Luminati Networks
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`(see Mot. at 7-8), MiTile, Huawei, and numerous other cases that TS does not even attempt to
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`distinguish have held that Becton still controls even in the context of electronics, computers, and
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`software. TS’s cited cases are inapposite; there, intrinsic evidence made clear that physical
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`separation was not required. See Opp. at 13-15. For example, in Intellectual Ventures I LLC v.
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`Symantec Corp., the court found that the “claims involve digital, rather than physical separation”
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`because the claims actually recited as such: “a data transfer unit which is digitally connected to the
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`primary’ network server.” 2016 WL 948879, at *3 (D. Del. 2016). Likewise, the specification
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`described that “[t]he primary’ DTU includes a primary server interface . . . [which] is digitally
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`connectable to the primary’ network server.” See id. Here, by contrast, the Claims and the
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`specification does not refer to the claimed “server system” and “display device” in this manner.
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`II.
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`TS’S INTERPRETATIONS OF THE CLAIMS RENDERS THEM INVALID
`UNDER 35 U.S.C. § 112
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`With respect to both indefiniteness and written description, TS’s opposition to Google’s
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`motion under § 112 continues to miss the point—terms for which there is no construction bear
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`their plain and ordinary meaning. Google still applies that meaning. But TS’s new and remarkably
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`broad infringement read squarely created the § 112 issue raised in Google’s motion: If the Claims
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`can be read as broadly as TS now contends, they are indefinite and/or fail for lack of adequate
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`written description.
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`If accepted by the Court, TS’s effectively unbounded interpretation of the “server system”
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`limitation renders the claims indefinite. TS cites to its expert regarding a POSA’s knowledge of
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`“servers” (see Opp. at 16-17), but ignores the definition of “server system” that its expert also
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`proposed: “a node, component, or collection of components that receives messages . . . from
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`another node or component and acts on those messages.” See Ex. 1 (Almeroth Open. Rep.) ¶ 284.
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`Google and its expert do not contest that servers in general were known in the art. In fact, Dr.
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`Mayer-Patel opines at length regarding the non-novelty of the Patents, including the patents’
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`application of the “very old concept” of the “proxy principal.” See Ex. 34 (Mayer-Patel Open.
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`Rep.) ¶¶ 73-77, 945-46. The issue, never squarely confronted by TS, is that its and its expert’s
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`application of the “server system” of the Claims in an unbounded fashion renders them indefinite.
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`TS’s position that the server system can be both in the cloud and in the display device
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`further drives home Google’s point. When the server system is claimed to handle one function,
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`like assigning a synchronization code, which part of the server system is intended to handle this?
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`Is it the server system in the cloud or the part on the display device? If TS’s accusation is accepted
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`for infringement, then no POSA would understand the scope of the claimed “server system” and
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`the Claims would be inadequately supported.
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`TS’s reliance on Cox v. Sprint, is also misplaced. 838 F.3d 1224, 1229 (Fed. Cir. 2016).
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`In Cox, the parties agreed that the “processing system” was a black-box “computer” and the
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`machine that performed the steps was inconsequential. See id. at 1229-31. Here, TS argues that
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`“the [Claims] are directed to a specific, concrete computer architecture” and that the claims
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`“specify the technological parts of the system that perform each step (personal computing device,
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`server system, display device).” Dkt. 134 at 10, 14. Accordingly, here, unlike Cox, it is essential
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`to understanding and applying the claims to determine where and by which component the steps
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`are performed. See id. TS’s infringement read and its expert’s definition of “server system”
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`removes this specificity and leads to unbounded and indefinite claims.
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`TS’s unbounded interpretation of “server system” likewise renders the claims invalid for
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`inadequate written description. Contrary to TS’s contention, Google does not argue that servers
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`were unknown in the art. See Opp. at 19-20. Rather, Google points out that nowhere in the
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`specification do the Patents describe a scenario where a display device may usurp the role of the
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`“server system” and perform all the steps that the “server system” itself is claimed to perform as
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`TS contends here. Nor do the Patents describe a “server system” that partially exists in the cloud
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`and partially on the display device as proposed by TS here. For these reasons, if the claims can be
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`read as broadly as TS contends, they are also invalid under § 112 for lack of written description.
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`III. GOOGLE IS ENTITLED TO SUMMARY JUDGMENT OF NO WILLFULNESS
`To establish willful infringement, TS bears the burden to prove that Google: “(1) knew of
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`the patent-in-suit; (2) after acquiring that knowledge, it infringed the patent; and (3) in doing so, it
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`knew, or should have known, that its conduct amounted to infringement of the patent.” Parity
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`Networks, LLC v. Cisco Systems, Inc., 2019 WL 3940952, at *3 (W.D. Tex. 2019) (quoting Välinge
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`Innovation AB v. Halstead New England Corp., 2018 WL 2411218, at *13 (D. Del. 2018)).5 But
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`TS does not even acknowledge its burden, much less point to any evidence that Google knew or
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`should have known that it infringed the Patents. See Dkt. 158 at 20-28. Without this evidence,
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`Google’s MSJ of no willful infringement should be granted.
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`Google Is Entitled To Summary Judgment Of No Pre-Complaint Willfulness
`A.
`“To establish willfulness, the patentee must show the accused infringer had a specific intent
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`to infringe at the time of the challenged conduct.” Bayer v. Baxalta, 989 F.3d 964, 987 (Fed. Cir.
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`2021); SRI Int’l. v. Cisco, 14 F.4th 1323, 1330 (Fed. Cir. 2021) (requiring “deliberate or
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`intentional infringement”). Yet, the most TS can point to is circumstantial evidence that Google
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`5 TS challenges Google’s ref