Case 2:23-cv-00059-JRG Document 111 Filed 08/16/24 Page 1 of 9 PageID #: 6201
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`CHARTER COMMUNICATIONS, INC. et
`al.,
`
`Defendants.
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`COMCAST CABLE COMMUNICATIONS,
`LLC, D/B/A XFINITY, et al.,
`
`Defendants.
`
`Lead Case No. 2:23-cv-00059-JRG
`Member Case No. 2:23-cv-00062-JRG
`
`
`MOTION TO STRIKE THE OPINIONS OF
`DR. STEPHEN BECKER
`
`
`
`
`
`
`
`
`
`1
`
`
`

`

`Case 2:23-cv-00059-JRG Document 111 Filed 08/16/24 Page 2 of 9 PageID #: 6202
`
`
`
`
`
`I.
`
`INTRODUCTION
`Plaintiff Touchstream commenced this Action on February 16, 2023 against Defendant
`
`Comcast, alleging infringement of three patents: U.S. Patent Nos. 8,356,251, 11,048,751, and
`
`11,086,934 (“the Asserted Patents). (See Dkts. 1, 30). Touchstream accuses Comcast of infringing
`
`certain claims of each of these Asserted Patents (“the Asserted Claims”).
`
`Touchstream’s expert, Mr. Russell W. Mangum III, Ph.D., provided an expert report on
`
`June 24, 2024, opining on damages (“Mangum Report”). In rebuttal, Comcast served the report of
`
`Dr. Stephen L. Becker on July 15, 2024 (“Becker Report”).
`
`The Court should strike Dr. Becker’s apportionment opinions that rely on comparisons of
`
`a Comcast patent to a Comcast mobile app, as that patent is not at issue in this case and, as such,
`
`these opinions risk confusing the jury on the proper evaluation of liability issues like infringement.
`
`This opinion presents an unreliable and overly prejudicial theory that risks confusing the jury as
`
`to the law on core issues in this case. It should be excluded.
`
`II.
`
`LEGAL STANDARD
`An expert witness may provide opinion testimony if “(a) the expert’s scientific, technical,
`
`or other specialized knowledge will help the trier of fact to understand the evidence or to determine
`
`a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product
`
`of reliable principles and methods; and (d) the expert has reliably applied the principles and
`
`methods to the facts of the case.” Fed. R. Evid. 702.
`
`Federal Rule of Evidence 702 requires a district court to make a preliminary determination,
`
`when requested, as to whether the rule requirements are satisfied with a particular expert’s
`
`proposed testimony. See Kumho Tire Co. v. Carmichael, 526 U.S. 137, 149 (1999); Daubert v.
`
`Merrell Dow Pharm., Inc., 509 U.S. 579, 592–93 (1993). District courts are given broad discretion
`
`in making Rule 702 determinations of admissibility. Kumho Tire, 526 U.S. at 152. Although there
`
`2
`
`
`

`

`Case 2:23-cv-00059-JRG Document 111 Filed 08/16/24 Page 3 of 9 PageID #: 6203
`
`
`are various factors that the district court may consider in determining admissibility, the ultimate
`
`
`
`inquiry is whether the expert’s testimony is sufficiently reliable and relevant to be helpful to the
`
`finder of fact and thus to warrant admission at trial. United States v. Valencia, 600 F.3d 389, 424
`
`(5th Cir. 2010).
`
`III. ARGUMENT
`It is well established that allowing a Defendant to introduce evidence of its own patents in
`
`a patent infringement case is confusing and unfairly prejudicial. But Dr. Becker tries to do just
`
`that. This testimony does not pass muster under Daubert or FRE 403 and should be excluded. See
`
`Malibu Boats, LLC v. Skier’s Choice, Inc., 3:18-CV-00015, 2021 WL 1852085, at *1 (E.D. Tenn.
`
`May 6, 2021) (excluding “testimony regarding [defendant’s] own patents” over defendant’s
`
`argument that they are “relevant to issues of willfulness and damages,” because “the probative
`
`value is substantially outweighed by the potential for confusion and waste of time”); see also
`
`Advanced Cardiovascular Systems, Inc. v. Medtronic, Inc., 265 F.3d 1294 (Fed. Cir. 2001)
`
`(affirming exclusion of defendant’s own patent as “totally irrelevant” to willfulness).
`
`Dr. Becker points to a patent that was filed by people who allegedly worked on a
`
`predecessor to the app involved in this case and suggests that Dr. Mangum should have somehow
`
`subtracted the value of that patent (if any) in calculating infringement damages. For instance, Dr.
`
`Becker explains that “based on my discussions with Dr. Jeffay, I understand that Comcast’s TV
`
`Remote App continues to practice at least claim 18 of Comcast’s U.S. Patent 9.294,800,” and states
`
`that this is something “for which Touchstream is not entitled to any royalty.” (Ex. 1, Becker Report
`
`¶ 315; see also id. ¶¶ 65, 250). Each place where Dr. Becker discusses this Comcast patent, he cites
`
`to paragraph 218 of the expert report of Dr. Jeffay on invalidity. But in the cited paragraph, Dr.
`
`Jeffay only mentions this patent in a single paragraph, repeating the basic details from the face of
`
`the patent and its prosecution history along with his conclusion that it “qualifies as prior art,”
`
`3
`
`
`

`

`Case 2:23-cv-00059-JRG Document 111 Filed 08/16/24 Page 4 of 9 PageID #: 6204
`
`
`without analyzing any connection between the patent and the accused functionalities in this case.
`
`
`
`(Ex. 2, Jeffay Invalidity Report, p. 88 ¶ 218).1 While Dr. Jeffay does opine that this Comcast patent
`
`is invalidating prior art, it remains to be seen whether Comcast will pursue that theory at trial. And
`
`even if the Comcast patent is already in evidence for invalidity purposes, allowing Comcast to
`
`introduce the idea of whether Comcast “practices” that patent will cause irreparable confusion on
`
`whether and to what extent this is a defense to infringement and willfulness (it is not).
`
`Courts frequently do not let defendants present evidence of their own patents in patent
`
`infringement cases, including because of the common misconception that owning patents is a
`
`defense to patent infringement. As just one example, this Court recently granted a motion in limine
`
`to exclude “evidence, testimony, or argument regarding technical details of Defendants’ Patents,
`
`including how they relate to the accused products,” explaining that while “Defendants may note
`
`that they have patents in this technology space (not that they cover the accused products),” that
`
`“[t]hey shall not discuss the technical details of their patents or the titles of their patents.” Lionra
`
`Techs. Ltd. v. Fortinet, Inc., 22-322-JRG-RSP, Dkt. 509 at 2 (E.D. Tex. May 7, 2024). Likewise,
`
`in Sonos, Inc. v. D&M Holdings Inc., 14-1330, 2017 WL 5633204, at *1 (D. Del. Nov. 21, 2017),
`
`Judge Bryson, sitting by designation, excluded evidence of defendant’s patent unless plaintiff
`
`opens the door, explaining: “The fact that [defendant] has patents in the same technological field
`
`is not a defense to infringement, but could mislead the jury into believing that [defendant’s] patents
`
`
`1 While Dr. Jeffay’s July 15, 2024 report provides a conclusion that “Comcast’s Xfinity TV Remote
`continues to practice at least claim 18 of Comcast’s McMahon patent,” (Ex. 3 (Jeffay Non-
`Infringement Report), at p. 83, ¶ 194), he merely purports to “incorporate here by reference” 11
`sections of his report on non-infringement, without any analysis or explanation of how his opinions
`that Comcast does not practice the asserted patents in this case somehow establishes that they do
`practice this different patent owned by Comcast that has apparently not been construed by any
`court. See Advanced Respiratory, Inc. v. Electromed, Inc., No.00-2646, 2003 WL 25674810, at *1
`(D. Minn. June 27, 2003) (excluding defendant’s patent, noting among other things that its claims
`“have not yet been construed”).
`
`4
`
`
`

`

`Case 2:23-cv-00059-JRG Document 111 Filed 08/16/24 Page 5 of 9 PageID #: 6205
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`
`give it the right to practice technology that is covered by those patents even though it is also
`
`covered by [plaintiff’s] patents.”2
`
`Against this established high likelihood of unfair prejudice and confusion, Dr. Becker’s
`
`attempted reliance on a Comcast patent is not helpful to the jury and does not pass the balancing
`
`test of FRE 403. While damages are supposed to be apportioned to the footprint of the patent, Dr.
`
`Becker does not help the jury with this task by pointing to a single patent with no analysis on a
`
`connection to the technology in this case or what value, if any, it might have. Dr. Becker’s
`
`discussion of this patent is thus unreliable, unhelpful, and not sufficiently tied to the facts of the
`
`case.
`
`As just one example, in Advanced Respiratory, Inc. v. Electromed, Inc., No.00-2646, 2003
`
`WL 25674810, at *1 (D. Minn. June 27, 2003), the court ruled “presumptively inadmissible” any
`
`mention of defendant’s patents because it would “prejudice the Plaintiff.” The court explained:
`
`“Indeed, introduction of [defendant’s] Patent, the claims of which have not yet been construed,
`
`would result in a mini-trial on that patent's claim construction. Aside from the great confusion that
`
`this would cause with the jury, it would also misdirect the jury’s attention from the real issue of
`
`the case--specifically, whether the [accused] device infringes the [asserted] Patent.”). For the same
`
`reasons, the probative value of this discussion, if any, is far outweighed by the clear prejudice to
`
`Touchstream on infringement issues form allowing a defendant to point to its own patent. The
`
`
`2 This is not a situation where Comcast seeks to use its own patents to defend against the doctrine
`of equivalents, see Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1580–81
`(Fed. Cir. 1984), or to argue that Comcast, in fact, mistakenly believed that its own patents
`protected it from patent infringement. See Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 986
`F. Supp. 2d 574, 626 (W.D. Pa. 2013), aff’d in part, vacated in part, rev’d in part, 807 F.3d 1283
`(Fed. Cir. 2015).
`
`5
`
`
`

`

`Case 2:23-cv-00059-JRG Document 111 Filed 08/16/24 Page 6 of 9 PageID #: 6206
`
`
`Court should exclude the Comcast patent and Dr. Becker’s discussion of it under FRE 702, 402,
`
`
`
`and 403.
`
`IV. CONCLUSION
`For the foregoing reasons, Touchstream respectfully requests the Court to strike Dr.
`
`Becker’s damages opinions related to Comcast’s own patent.
`
`
`
`
`
`
`
`Date: August 5, 2024
`
`Respectfully submitted,
`
`
`
`/s/ Ryan D. Dykal
`Lead Counsel
`
`
`Ryan D. Dykal (pro hac vice)
`Jordan T. Bergsten (pro hac vice)
`Mark Schafer (pro hac vice)
`Philip A. Eckert (pro hac vice)
`Anita Liu (TX State Bar No. 24134054)
`BOIES SCHILLER FLEXNER LLP
`1401 New York Ave, NW
`Washington, Dc, DC 20005
`(t) 202-274-1109
`rdykal@bsfllp.com
`jbergsten@bsfllp.com
`mschafer@bsfllp.com
`peckert@bsfllp.com
`aliu@bsfllp.com
`
`
`John Michael Lyons (pro hac vice)
`Sabina Mariella (pro hac vice)
`Sophie Roytblat (pro hac vice)
`BOIES SCHILLER FLEXNER LLP
`55 Hudson Yards, 20th Floor
`New York, NY 10001
`jlyons@bsfllp.com
`smariella@bsfllp.com
`sroytblat@bsfllp.com
`
`
`Melissa Smith (TX State Bar No. 24001351)
`GILLAM & SMITH LLP
`303 S. Washington Ave.
`6
`
`
`

`

`Case 2:23-cv-00059-JRG Document 111 Filed 08/16/24 Page 7 of 9 PageID #: 6207
`
`
`
`
`
`
`
`
`Marshall, TX 75670
`(t) 903-934-8450
`melissa@gillamsmithlaw.com
`
`
`Counsel for Plaintiff Touchstream Technologies,
`Inc.
`
`CERTIFICATE OF CONFERENCE
`
`The undersigned hereby certifies that counsel has complied with the meet and confer
`
`requirement in Local Rule CV-7(h) on July 31, 2024 and that this is an opposed motion.
`
`Participants in the conference included at least Ryan Dykal, Jordan Bergsten, Mark Schafer, Philip
`
`Eckert, Anita Liu, Melissa Smith, Dina Hayes, Daniel Riesner, Deron Dacus, Micayla Hardisty,
`
`and James Park. Counsel for the parties discussed their positions at the meet and confer regarding
`
`the proposed motions but reached an impasse, leaving an open issue for the Court to resolve.
`
`/s/ Ryan D. Dykal                                                 
`Ryan D. Dykal
`
`
`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
`
`
`
` I
`
` hereby certify that the foregoing document is authorized to be filed under seal pursuant
`
`to the Protective Order entered in this case.
`
`
`
`
`                                                                                                /s/ Ryan D. Dykal                                                 
` Ryan D. Dykal
`
`
`
`7
`
`
`

`

`Case 2:23-cv-00059-JRG Document 111 Filed 08/16/24 Page 8 of 9 PageID #: 6208
`
`CERTIFICATE OF SERVICE
`
`
`
` hereby certify that, on August 5, 2024, the foregoing was filed under seal with the Clerk
`
` I
`
`
`
`of Court using the CM/ECF system, and all counsel of record who are deemed to have consented
`
`to electronic service are being served with a notice of this document via the Court’s CM/ECF
`
`system. Further, I hereby certify that a courtesy copy of the foregoing was emailed to counsel for
`
`Defendants on August 5, 2024.
`
`
`
`Counsel for Comcast:
`
`
`Deron R Dacus
`THE DACUS FIRM, PC
`821 ESE Loop 323
`Suite 430
`Tyler, TX 75701
`Tel: 903-705-1117
`Fax: 903-581-2543
`Email: ddacus@dacusfirm.com
`
`
`
`
`Counsel for Charter:
`
`
`Deron R Dacus
`THE DACUS FIRM, PC
`821 ESE Loop 323
`Suite 430
`Tyler, TX 75701
`Tel: 903-705-1117
`
`   /s/ Ryan D. Dykal                                                 
`Ryan D. Dykal
`
`
`
`
`David J. Lisson
`Ashok Ramani
`James Park
`DAVIS POLK & WARDWELL LLP
`1600 El Camino Real
`Menlo Park, CA 94025
`Email: david.lisson@davispolk.com
`Email: ashok.ramani@davispolk.com
`Email: james.park@davispolk.com
`Email: dpw.comcast.touchstream@davispolk.com
`
`
`Alena Farber
`DAVIS POLK & WARDWELL LLP
`450 Lexington Avenue
`New York, NY 10017
`Email: alena.farber@davispolk.com
`
`
`
`
`
`
`Daniel Reisner
`David Benyacar
`Elizabeth A. Long
`Melissa A. Brown
`Robert Stout
`ARNOLD & PORTER KAYE SCHOLER LLP
`250 West 55th Street
`
`8
`
`
`

`

`
`Fax: 903-581-2543
`Email: ddacus@dacusfirm.com
`
`
`
`
`
`Case 2:23-cv-00059-JRG Document 111 Filed 08/16/24 Page 9 of 9 PageID #: 6209
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`New York, NY 10019
`Tel: 212-836-8000
`Fax: 212-836-8689
`Email: daniel.reisner@arnoldporter.com
`Email: david.benyacar@arnoldporter.com
`Email: elizabeth.long@arnoldporter.com
`Email: melissa.brown@arnoldporter.com
`Email: robert.stout@arnoldporter.com
`Email: A&P_EDTX60_Charter@arnoldporter.com
`
`
`Dina M. Hayes
`ARNOLD & PORTER KAYE SCHOLER LLP
`70 West Madison Street
`Suite 4200
`Chicago, IL 60602
`Email: dina.hayes@arnoldporter.com
`
`
`Carson Anderson
`ARNOLD & PORTER KAYE SCHOLER LLP
`3000 El Camino Real, Bldg 5, Suite 500
`Palo Alto, CA 94306
`Email: carson.anderson@arnoldporter.com
`
`
`Marc A. Cohn
`ARNOLD & PORTER KAYE SCHOLER LLP
`601 Massachusetts Ave, NW
`Washington, DC 20001
`Email: marc.cohn@arnoldporter.com
`
`
`9
`
`
`