Case 6:21-cv-00569-ADA Document 197 Filed 01/31/23 Page 1 of 13
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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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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`Civil Case No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`PLAINTIFF TOUCHSTREAM TECHNOLOGIES, INC.’S
`REPLY FOR ITS MOTION FOR SUMMARY JUDGMENT OF VALIDITY UNDER
`35 U.S.C. § 101 AND TO DISPOSE OF GTS “SYSTEM” THEORIES
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`i
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`Case 6:21-cv-00569-ADA Document 197 Filed 01/31/23 Page 2 of 13
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`I. INTRODUCTION
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`Google’s response to Touchstream’s motion for validity under § 101 relies on a gross
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`oversimplification of the claims, contending that they broadly cover “controlling content over a
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`network.” But reviewing the preambles is enough to show this is inaccurate: they recite methods
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`directed to controlling presentation of video content on a display device that loads any one of a
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`plurality of different media players. Google also fails to rebut that the claims recite specific
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`technological steps to accomplish these methods. The claims pass Alice steps one and two, and
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`Touchstream’s motion of validity should be granted.
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`Regarding Google’s GTS system theory, Google musters two supposed issues of fact to
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`avoid summary judgment: that the admittedly missing limitation is implicit in YouTube Remote,
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`and that there are other apps and “flinging” that teach this limitation. But Google’s expert admits
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`this limitation is not actually present in these references, and summary judgment cannot be
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`defeated simply by asserting that a missing claim element is “implicit.” Google’s GTS system
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`theories should be dismissed.
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`II. ARGUMENT
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`A. Touchstream is entitled to summary judgment of validity under § 101.
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`The Asserted Claims of the asserted patents satisfy the first prong of the Alice test, ending
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`the inquiry and allowing this Court to grant summary judgment of validity under 35 U.S.C. § 101.
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`If for some reason this Court finds the need to progress past the first step of Alice, the claims cover
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`an inventive concept satisfying the second step of Alice. As such, Google’s affirmative defense for
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`lack of patentable subject matter under 35 U.S.C. § 101 fails as a matter of law and summary
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`judgment should be granted in favor of Touchstream.
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`Case 6:21-cv-00569-ADA Document 197 Filed 01/31/23 Page 3 of 13
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`1.
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`Touchstream’s patents claim patentable subject matter and pass Alice
`step 1.
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`Google alleges that the Asserted Claims are directed to “controlling content over a
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`network.” Dkt. 152, Google Opp., 1. The Asserted Claims are actually much more specific. The
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`preamble provides a reasonable description of the actual scope of the claims: “A machine-
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`implemented method of controlling presentation of video content on a display device that loads
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`any one of a plurality of different media [] players.” ’251 Patent, 11:22-24. This is much narrower
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`than merely “controlling content over a network,” which would encompass all forms of content—
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`code, plaintext, video—and does not even contemplate a display device or plurality of media
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`players.
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`Moreover, the Asserted Claims are limited to a specific, concrete messaging architecture
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`involving a display device, a server system, and a personal computing device. The claims require
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`these components to variously send or receive signals (or messages) to control the playback of
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`video from particular media players over a network, with the precise requirements of the
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`messaging varying claim-to-claim. Google erroneously contends that because Touchstream did
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`not identify any non-infringing alternatives that the patents must cover all forms of “controlling
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`media content over a network.” Dkt. 152 Google Opp., 1-6. But one does not follow the other.
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`There are myriad alternative methods of “controlling media content over a network.” For instance,
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`given how broadly Google characterizes the patents, “controlling content over a network” could
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`include something as simple as logging into a server and executing a command—which has existed
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`since the 1960s (and Touchstream certainly does not contend infringe its patents). But even under
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`the proper claim scope, the asserted patents do not cover various prior art references Google
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`asserts, such as YouTube Remote, IP AV protocol, or DLNA standards. See Ex. 2, GOOG-TST-
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`00002281.
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`Further, the Asserted Claims do not purport to cover all modes of “controlling presentation
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`of video content on a display device loading a plurality of different media players.” The claims are
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`not result-oriented. Rather, the Asserted Claims provide technological steps to do so, including:
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` Assigning a synchronization code to a display device by a server system;
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` Receiving a message in the server system including the synchronization code;
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` Storing a record in the server system based on the synchronization code;
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` Receiving signals specifying a video file and identifying a particular media player;
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`
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`Including the synchronization code and a universal playback control command in the
`messages;
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` Converting the universal playback control command to corresponding programming code;
`and
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` Storing in a database information that specifies the video file to be acted upon, identifies
`the media player, and includes the corresponding programming code.
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`(‘251 patent, claim 1). Though Google states that “the Court should…focus on the specific steps
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`of the claimed method,” Google addresses none of these technical steps in its arguments. Dkt. 152,
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`Google Opp., 4.
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`Google’s oversimplification of the Asserted Claims to broadly cover “controlling content
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`over a network” is fatal to its § 101 claim. Dkt. 152, Google Opp., 1. The Federal Circuit has
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`repeatedly warned that Courts “must be careful to avoid oversimplifying the claims by looking at
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`them generally and failing to account for the specific requirements of the claims.” McRO, Inc. v.
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`Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016); In re TLI Commc’ns LLC
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`Pat. Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (“[W]e must be careful to avoid oversimplifying
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`the claims because ‘[a]t some level, ‘all inventions ... embody, use, reflect, rest upon, or apply laws
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`of nature, natural phenomena, or abstract ideas.’”) (quoting Alice Corp. Pty. v. CLS Bank Int’l, 573
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`U.S. 208, 217 (2014)). Google’s overgeneralization of the Asserted Claims flies in the face of this
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`well-established precedent. See TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1293 (Fed. Cir. 2020)
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`(“And we have reiterated the Supreme Court’s caution against ‘overgeneralizing claims’ in the §
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`101 analysis, explaining that characterizing the claims at ‘a high level of abstraction’ that is
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`‘untethered from the language of the claims all but ensures that the exceptions to § 101 swallow
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`the rule.’”) (internal citations omitted).
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`Accordingly, entry of summary judgment finding Touchstream’s patents are eligible under
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`§ 101 is therefore proper without consideration of Alice Step 2.
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`2.
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`The asserted claims recite a technical inventive concept and pass Alice
`step 2.
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`Because the Asserted Claims pass Alice step 1, there is no need to address Alice step 2. See
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`Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfish, LLC v.
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`Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). Even so, the claims recite technological
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`functions that involve inventive concepts, including the use of a synchronization code (or unique
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`identification code), the identification and loading of particular media players, and the conversion
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`or identification of programming code for the specific media player. Google’s cites to its expert’s
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`report arguing these concepts are conventional, but this is unavailing. Google’s expert provided
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`no evidence that the identification and loading of media players and the conversion or
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`identification of programming code is routine and conventional. See Dkt. 152, Google Opp., 8-9.
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`Instead, Google again oversimplifies the claim language to fit its argument. See id. (“using
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`programing code to control media players like JavaScript or those implemented by YouTube”).
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`Moreover, Google’s expert offers only conclusory opinions and no proper expert analysis that
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`would create a triable issue of fact. Dkt. 152, Google Opp., 9; Ex. 3, Dr. Mayer-Patel Report, ¶¶
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`73-77, 945-46.
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`Further, the Asserted Claims arrange those inventive concepts in a manner that recites an
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`inventive concept. This inventive arrangement enables, among other things, using different media
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`players, associating different devices with a synchronization code, and coordinating between a
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`personal computing device and a display device loading a plurality of media players, video files,
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`and control commands. Google’s attempts to satisfy this factor focuses on the specification’s
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`description of the drawings, not the claims themselves. But the Federal Circuit has expressly stated
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`that at the second step of the inquiry, Courts “consider the elements of each claim both individually
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`and as an ordered combination to determine whether the additional elements transform the nature
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`of the claim into a patent-eligible application.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
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`1334 (Fed. Cir. 2016) (emphasis added) (internal quotations omitted). The Asserted Claims here
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`contain various components (“personal computing device”, “server system”, “display device”) and
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`specific messaging rules (e.g., “assigning,” “receiving ...,” “obtaining ...,” “converting ...,”
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`“identifying ...,” “storing”.) As such, the claims do not preempt all methods of remote control of
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`content—only the remote control of content done according to the organization and rules as
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`claimed.
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`As the Asserted Claims recite inventive concepts in their elements as well as in the ordered
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`combination of their elements, the claims pass Alice Step 2. Google “has the burden of proving
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`invalidity by clear and convincing evidence” and must convincingly show ineligibility under both
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`prongs of the Alice framework. Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 99 (U.S. 2011); see
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`Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1319 (Fed. Cir. 2019); Berkheimer v. HP Inc., 881
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`F.3d 1360, 1368 (Fed. Cir. 2018) (“Any fact…that is pertinent to the invalidity conclusion must
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`be proven by clear and convincing evidence.”). Under the clear and convincing standard, Google
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`cannot prove Touchstream’s patents are ineligible under § 101, and Touchstream’s motion for
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`summary judgment of validity of under 35 U.S.C. § 101 should be granted.
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`3.
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`Google’s renewed non-infringement argument is meritless.
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`Google repeats the non-infringement argument made in its motion for summary judgement,
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`with the added assertion that Touchstream’s § 101 argument somehow supports its position. This
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`is meritless. Google claims that Touchstream argued “the patent discloses three distinct
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`instrumentalities that are separate components of a technologically sophisticated invention.” Dkt.
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`152, Google Opp., 11 (emphasis added). But Touchstream never argued that the claimed server
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`system and the claimed display device must be physically separate—nor do the claims require this.
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`Instead, Touchstream stated in its Motion that the claims “specify the technological parts of the
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`system that perform each step (personal computing device, server system, display device).” Dkt.
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`134, Touchstream’s Mot. at 14 (emphasis added).
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`Second, as discussed thoroughly in Touchstream’s opposition to Google’s motion for
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`summary judgement, Touchstream does not assert that the display device and server system are
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`one and the same. Rather, there are distinct server processes running on the display device that
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`perform “server system” steps. Dkt 156, Touchstream Opp., 3-4. It is well-understood in the realm
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`of computer technology that a single computer may run multiple logical processes. See, e.g., Intell.
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`Ventures I LLC v. Symantec Corp., 2016 WL 948879, at 3 (D. Del. Mar. 10, 2016), aff'd, 725 F.
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`App'x 976 (Fed. Cir. 2018) (“here the claims involve digital, rather than physical separation”);
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`Egenera, Inc. v. Cisco Sys., Inc., 547 F. Supp. 3d 112, 123–24 (D. Mass. 2021) (court followed
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`Intellectual Ventures and distinguished Becton in another software case to find a patent need not
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`teach a separate “control node”); Apple, Inc. v. Samsung Elecs. Co., 2014 WL 252045, at 8 (N.D.
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`Cal. Jan. 21, 2014) (Patent did not require claimed “touch screen” and “keyboard” to be distinct
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`structures because nothing in the patent taught they needed to be separate.)
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`B. Touchstream is entitled to summary judgment as to the GTS system.
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`4.
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`There is no factual dispute that Google’s purported GTS system does
`not teach “identifying a particular media player.”
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`As discussed in Touchstream’s opening motion, Google’s expert admits that none of the
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`GTS references actually teach this limitation. Dkt. 134, Opening Brief, 14-16. See, e.g., Ex. 1,
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`Dep. Dr. Mayer-Patel, 235:6-236:3 (“Q. Now, does anything in paragraph 274 indicate that there
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`are messages … that identify a particular media player? A. In that paragraph, no.”; 205:11-21 “Q.
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`Does [paragraph 275] show signals … identifying a particular media player? A. That particular
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`paragraph does not.” GTS-19: 234:4-235:2 “Q. And would you agree that GTS-19 doesn’t describe
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`the signals, if any, that would be used to fling the content to the television? A. That reference does
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`not.”). So Google offers two arguments to try to manufacture a fact issue: that YouTube Remote
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`implicitly teaches this limitation, and that there were other apps on Google TV that could be
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`controlled remotely that somehow teach this limitation. Neither of these arguments has merit.
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`First, Google argues that YouTube Remote “expressly controls and implicitly identifies
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`YouTube Leanback.” Dkt. 154, Google Opp., 14. But the claims explicitly require messages that
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`identify a particular media player. See U.S. Patent No. 8,904,289 11:25-35; U.S. Patent No.
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`8.782,528, 11:2-27; U.S. Patent No. 8,356,251, 11:35-38. YouTube Remote worked with one
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`specific app: YouTube. It did not send messages “identifying a particular media player” because
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`was hard-coded to use YouTube. Ex. 1, Dep Mayer-Patel 193:17-195:5. It is undisputed that there
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`are no messages identifying a particular media player in the purported GTS system.
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`Faced with this, Google contends that this limitation is implicit. This is also incorrect. See,
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`e.g., KlausTech, Inc. v. Google LLC, 2018 WL 5109383 (court struck implicit theories not made
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`express in contentions). Notably, Dr. Mayer-Patel does not explain this “implicit” argument, and
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`it should therefore be given no weight. See, e.g., Ex. 1, Dep. Dr. Mayer-Patel, 211:17-212:21; Ex.
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`3, Dr. Mayer-Patel Report ¶ 278. See also, SPX Corp. v. Bartec USA, 2008 WL 38500770 (E.D.
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`MI., 2008) (“expert testimony on obviousness is deficient when it asserts a conclusion of
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`obviousness without an explanation of the how or why.”) (citing Innogenetics, N.V. v. Abbott
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`Lab'ys, 512 F.3d 1363, 1373 (Fed. Cir. 2008)). But even if Google’s expert had explained this
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`“implicit” theory, it is plainly incorrect: YouTube Remote controlled only the YouTube media
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`player. An app designed to control a single media player would not “implicitly” teach sending
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`messages “identifying a particular media player” for playing particular video content. In fact, it
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`would teach away from this limitation by having several separate apps, with each hard-coded to
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`control their own respective media players. No signals identifying the different particular media
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`players would be required or included.
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`Google’s brief attempts to put meat on the bone of its “implicit” argument by asserting that
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`“the YouTube Remote application also identifies videos for playback on YouTube Leanback and
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`controls YouTube Leanback with playback commands,” and “[a]ccordingly, the YouTube Remote
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`application implicitly identifies a particular media player.” Dkt. 152, Google Opp., 15. But one
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`does not follow the other: Touchstream is not challenging, for the purposes of this motion, that
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`YouTube Remote identifies videos and sends playback commands. But identifying a video file
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`and sending a “play” command says nothing about identifying the particular media player to use.
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`Second, Google points to “additional streaming media applications” that ran on Google
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`TV, such as “Netflix and Amazon Video.” But there is no evidence that YouTube Remote could
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`control those apps from a smartphone. Rather, these were traditional “apps” that would be
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`launched by a traditional remote. See, e.g., Ex. 1, Dep Dr. Mayer-Patel, 200:8-201:22. Here,
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`Google is attempting to sow confusion to avoid summary judgment—it never mapped those media
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`players as being “identified” by YouTube Remote (or any other application running on the
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`smartphone). Fatally, Google’s expert admitted that the references cited for these apps did not
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`teach “identifying a media player”:
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`Q. Okay. Paragraph 275 states: GTS-12 discloses that Google TV creates a cross-
`manufactured platform for stream media partnerships, including Netflix, Napster,
`Pandora, Twitter and NBA GameTime. Do you see that?
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`A. I do.
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`Q. Does that show signals from the -- from a personal device identifying a particular
`media player?
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`A. That particular paragraph does not.
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`Ex. 1, Dep. of Dr. Mayer-Patel, 205:11-21
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`Finally, Google points to supposed “other” ways to control Google TV apps from a
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`smartphone, including “Android phone or iPhone [to] be used to control your Google TV in place
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`of a remote control” and to “Fling a video to your television.” Dkt. 156, Google Opp., 16. These
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`also do not create fact issues. Google’s expert never opined that “flinging” or the use of a generic
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`“remote control” app disclosed this limitation. In fact, he admitted that they don’t. Ex. 3, Dep. Dr.
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`Mayer-Patel, 219:22-220:5; 234:18-235:2. And he is correct: the Google TV remote was a
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`software remote that mimicked a traditional TV remote. It merely issued “up,” “left,” “ok,” and
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`similar commands that would be typical of a traditional TV remote. It did not select media on the
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`smartphone and send it to the TV, and had no ability to “send messages identifying a particular
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`media player.” See Ex. 3, Dep. Dr. Mayer-Patel, 57:6-58:7; 206:4-210:20. Meanwhile, GTS-19—
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`a marketing document that has a passing reference to “flinging” content to a TV—discloses no
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`messaging at all, which Google’s expert conceded. Ex. 1, Dep. Dr. Mayer-Patel, 234:18-235:2 (“I
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`would not characterize [GTS-19] as a technical document”). Likewise, the “IP AV” protocol
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`discussed in GTS-22 did not disclose “identifying a particular media player.” And even if it did,
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`Google has no evidence it was ever part of Google TV. Ex. 1, Dep. Dr. Mayer-Patel, 238:8-11.
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`As Touchstream has shown, Google identified five GTS system references that supposedly
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`teach this limitation—GTS-8, GTS-12, GTS-19, GTS-22, and the Levai declaration. Ex. 3, Dr.
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`Mayer-Patel Report, ¶¶ 274-78. Because Google’s expert admits that none of these references
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`actually teach this limitation—and because he does not explain how it would be implicit (and it is
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`not)—Touchstream is entitled to summary judgment that the asserted claims are valid over the
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`purported GTS system.
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`5.
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`Touchstream is entitled to summary judgment for all theories that
`rely on the GTS system as teaching this limitation.
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`Google states that it is “not clear on whether [Touchstream] is addressing the GTS System
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`or under § 102 or § 103,” but Touchstream’s motion is clear that it is moving on Google’s GTS
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`“system” theories to the extent they rely exclusively on GTS to teach the “identifying a media
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`player” limitation. This includes the theories outlined in Dr. Mayer-Patel’s Invalidity Report
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`Sections VIII.A (GTS System as to ‘251 Patent), IX.A (GTS System and Hayward Combination
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`as to ‘528 Patent), and X.A (GTS System and Hayward Combination as to ‘289 Patent).
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`III. CONCLUSION
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`For the foregoing reasons, Touchstream respectfully requests the Court to grant its Motion
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`for Summary Judgment of Validity under 35 U.S.C. § 101 and to Dispose of GTS “System”
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`Theories.
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`Case 6:21-cv-00569-ADA Document 197 Filed 01/31/23 Page 12 of 13
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`By:
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`Respectfully submitted,
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`TOUCHSTREAM TECHNOLOGIES, INC.
`
` /s/ Ryan D. Dykal
`One of Its Attorneys
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`Ryan D. Dykal, pro hac vice
`B. Trent Webb, pro hac vice
`Jordan T. Bergsten, pro hac vice
`Philip A. Eckert
`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: slaroque@shb.com
`Email: bwebb@shb.com
`Email: jbergsten@shb.com
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`
`Date: January 19, 2023
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`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
`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
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`Counsel for Plaintiff Touchstream Technologies, Inc.
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`Case 6:21-cv-00569-ADA Document 197 Filed 01/31/23 Page 13 of 13
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`CERTIFICATE OF SERVICE
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`Pursuant to the Federal Rules of Civil Procedure and the Local Rules for the Western
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`District of Texas, I hereby certify that on the 19th day of January, 2023, I served the foregoing to
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`the following counsel of record via the e-mail addresses shown below:
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`Edwin O. Garcia, pro hac vice
`Jennifer L. Swize, Pro hac vice
`John R. Boule, III, pro hac vice
`Tracy Ann Stitt, pro hac vice
`Jones Day
`51 Louisiana Avenue, N.W.
`Washington, DC 20001
`Tel: (202) 879-3695
`Email: edwingarcia@jonesday.com
`Email: jswize@jonesday.com
`Email: jboule@jonesday.com
`Email: tastitt@jonesday.coms
`
`
`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
`Gurneet Singh, 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
`Email: gsingh@jonesday.com
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