Case 2:23-cv-00059-JRG Document 214 Filed 10/04/24 Page 1 of 36 PageID #: 11367
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`TOUCHSTREAM TECHNOLOGIES, INC.,
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`Plaintiff,
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`v.
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`CHARTER COMMUNICATIONS, INC. et
`al.,
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`Defendants.
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`Case No. 2:23-cv-00059-JRG
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`JOINT PROPOSED PRETRIAL ORDER1
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`Plaintiff Touchstream Technologies, Inc. (“Plaintiff” or “Touchstream”) and Defendants
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`Charter Communications, Inc., Charter Communications Operating, LLC, Spectrum
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`Management Holding Company, LLC, Time Warner Cable Enterprises, LLC, Spectrum Gulf
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`Coast, LLC, and Charter Communications LLC (“Charter”) (Touchstream and Charter
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`collectively, “the Parties”) submit the following proposed Joint Pretrial Order pursuant to the
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`Court’s Third Amended Docket Control Order (Dkt. 205), the Federal Rules of Civil Procedure,
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`and Local Rules of this Court. This case is scheduled for a pretrial management conference on
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`December 2, 2024, pursuant to Local Rule CV-16 and Rule 16 of the Federal Rules of Civil
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`Procedure. The Parties have stipulated to various matters identified herein and having identified
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`exhibits, witnesses, factual contentions, and triable issues.
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`1 Submissions that are agreed to by both Touchstream and Charter are not highlighted.
`Submissions proposed by Touchstream that are not agreed to by Charter are highlighted in green.
`Submissions proposed by Comcast that are not agreed to by Touchstream are highlighted in blue.
`The parties have entered their objections, explanations, citations, and commentary in footnotes
`only. The parties reserve their respective rights to further object or propose revisions to this joint
`pretrial order based on their pending motions or further development at trial.
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`Case 2:23-cv-00059-JRG Document 214 Filed 10/04/24 Page 2 of 36 PageID #: 11368
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`It is hereby ORDERED as follows:
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`I. APPEARANCE OF COUNSEL
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`A. Attorneys for Plaintiff Touchstream Technologies, Inc.
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`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
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`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
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`Melissa Smith (TX State Bar No. 24001351)
`GILLAM & SMITH LLP
`303 S. Washington Ave.
`Marshall, TX 75670
`(t) 903-934-8450
`melissa@gillamsmithlaw.com
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`B. Attorneys for Charter Defendants
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`Deron R Dacus
`THE DACUS FIRM, PC
`821 ESE Loop 323
`Suite 430
`Tyler, TX 75701
`(t) 903-705-1117
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`Case 2:23-cv-00059-JRG Document 214 Filed 10/04/24 Page 3 of 36 PageID #: 11369
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`(f) 903-581-2543
`ddacus@dacusfirm.com
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`Daniel Reisner
`David Benyacar
`Elizabeth A. Long
`Melissa A. Brown
`Robert Stout
`ARNOLD & PORTER KAYE SCHOLER LLP
`250 West 55th Street
`New York, NY 10019
`(t) 212-836-8000
`(f) 212-836-8689
`daniel.reisner@arnoldporter.com
`david.benyacar@arnoldporter.com
`elizabeth.long@arnoldporter.com
`melissa.brown@arnoldporter.com
`robert.stout@arnoldporter.com
`A&P_EDTX60_Charter@arnoldporter.com
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`Dina M. Hayes
`ARNOLD & PORTER KAYE SCHOLER LLP
`70 West Madison Street
`Suite 4200
`Chicago, IL 60602
`dina.hayes@arnoldporter.com
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`Carson Anderson
`ARNOLD & PORTER KAYE SCHOLER LLP
`3000 El Camino Real, Bldg 5, Suite 500
`Palo Alto, CA 94306
`carson.anderson@arnoldporter.com
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`Marc A. Cohn
`ARNOLD & PORTER KAYE SCHOLER LLP
`601 Massachusetts Ave, NW
`Washington, DC 20001
`marc.cohn@arnoldporter.com
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`II. STATEMENT OF JURISDICTION
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`This Court has subject-matter jurisdiction under Title 28, U.S.C. §§ 1331 and 1338(a),
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`because this action arises under the Patent Laws of the United States, 35 U.S.C.§ 1 et seq. The
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`parties do not dispute subject-matter jurisdiction or personal jurisdiction for purposes of this
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`action only, and Charter disputes venue in this Court, as set forth in its Motion to Dismiss (2:23-
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`cv-00060-JRG, Dkt. 82).
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`III. JOINT STATEMENT OF THE CASE
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`This is a civil action for patent infringement in which Touchstream accuses Charter of
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`directly infringing claims 1, 5, 7, and 8 of U.S. Patent No. 8,356,251 (“’251 patent”); claims 12,
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`13, and 14 of U.S. Patent No. 11,048,751 (“’751 patent”); and claims 17, 18, 19 and 20 of U.S.
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`Patent No. 11,086,934 (“’934 patent”) (collectively the “Asserted Claims” of the “Asserted
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`Patents”). Touchstream alleges that Charter has directly infringed each of the Asserted Claims.
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`Charter denies that it has infringed the Asserted Claims of the Asserted Patents and argues that the
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`Asserted Claims are invalid.
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`Touchstream alleges Charter infringes the Asserted Claims of the Asserted Patents by
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`performing certain methods. In particular, Touchstream alleges that Charter infringes when a
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`subscriber uses the Spectrum TV Mobile Application to initiate playback of video content,
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`through Charter servers, on Charter set-top boxes running ODN Guide, MDN Guide, Spectrum
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`Guide, and iGuide (the “Accused Functionalities”). Touchstream seeks monetary damages in
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`the form of a reasonable royalty for past damages, an ongoing reasonable royalty for future
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`damages, pre- and post-judgment interest, costs, and an award of its fees under 35 U.S.C. §§
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`284 and 285, as well as any other relief the Court deems appropriate. Touchstream also seeks a
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`permanent injunction to prevent further infringement of the Asserted Patents. Touchstream
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`asserts that Charter’s alleged infringement of each Asserted Claim was and continues to be
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`willful, and Touchstream seeks enhanced damages as a result of Charter’s alleged willful
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`infringement occurring both before the filing of this lawsuit and thereafter, and any other relief
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`the Court deems appropriate. Touchstream disagrees with each allegation, defense, and/or
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`affirmative defense asserted by Charter.
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`Charter asserts that the Touchstream Asserted Claims are invalid as anticipated and/or
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`obvious under 35 U.S.C. §§ 102 and 103, invalid for inadequate written description and lack of
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`enablement under 35 U.S.C. § 112, and invalid as being directed to ineligible subject matter
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`under 35 U.S.C. § 101. Charter denies that it infringes any of the Asserted Claims because the
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`Accused Functionalities, when used, does not perform the steps of these claims. Accordingly,
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`Touchstream is not entitled to any damages (pre-verdict or post-verdict). Charter opposes
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`Touchstream’s claim for monetary damages in the form of a reasonable royalty, based
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`exclusively on alleged infringement of method claims, arguing that Touchstream makes no
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`attempt to correlate the damages it seeks to actual, estimated or expected use. Charter denies
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`willful infringement at any time because it does not infringe and, even if it would be found to
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`infringe, did not do so willfully. Charter contends it had no pre-suit knowledge of the patents
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`and has developed and will present sound defenses to infringement and evidence of invalidity.
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`Charter opposes Touchstream’s claims for pre- and post-judgment interest, expenses and costs,
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`and attorneys’ fees pursuant to 35 U.S.C. § 285. Charter disputes that Touchstream is entitled
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`to a permanent injunction because Touchstream does not have any product offering or
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`demonstrated capacity to provide such a product, and has not even attempted to make a showing
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`of irreparable harm. Further, this case is exceptional under 35 U.S.C. § 285, and Charter seeks
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`its attorney’s fees and costs thereunder, as well as any other relief the Court deems appropriate.
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`Charter disagrees with each allegation and claim asserted by Touchstream.
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`IV. CONTENTIONS OF THE PARTIES
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`By providing these statements, the Parties do not concede that any of the following issues
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`are appropriately presented at trial. The Parties also do not waive any issues raised by their
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`previously filed motions or previously lodged objections.
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`The contentions below do not include every detail underlying each contention. The
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`Parties do not waive any issues raised in their pending, decided, or future motions, including
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`any motions in limine, motions for summary judgment, Daubert motions, motions to strike, and
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`any other future motions or objections that they may file.
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`A. Touchstream ’s Contentions
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`(1) Plaintiff Touchstream is the owner of all right, title, and interest in the ’251 patent
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`titled “Play Control of Content on a Display Device.” Charter has been and is infringing
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`the ’251 patent under 35 U.S.C. § 271 by using the methods of one or more claims of the ’251
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`Patent within the United States through its Accused Functionalities. Touchstream accuses
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`Charter of infringing claims 1, 5, 7, and 8 of the ’251 patent.
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`(2) Plaintiff Touchstream is the owner of the ’751 patent titled “Play Control of Content
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`on a Display Device.” Charter has been and is infringing the ’751 patent under 35 U.S.C.
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`§ 271 by using the methods of one or more claims of the ’751 patent within the United States
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`through its Accused Functionalities. Touchstream accuses Charter of infringing claims 12, 13,
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`and 14 of the ’751 patent.
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`(3) Plaintiff Touchstream is the owner of the ’934 patent titled “Play Control of Content
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`on a Display Device.” Charter has been and is infringing the ’934 patent under 35 U.S.C.
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`§ 271 by using the methods of one or more claims of the ’934 patent within the United States
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`through its Accused Functionalities. Touchstream accuses Charter of infringing claims 17, 18,
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`19, and 20 of the ’934 patent.
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`(4) Touchstream provided pre-suit notice of the Asserted Patents to Charter, Charter
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`was aware of each of the Asserted Patents prior to the filing of Touchstream’s Original
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`Complaint either through actual notice or willful blindness, and Charter was aware or should
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`have been aware that it was likely to infringe one or more Asserted Claims of the Asserted
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`Patents.
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`(5) Charter’s infringement of the Asserted Claims of the Asserted Patents has been and
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`continues to be willful.
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`(6) The Asserted Claims of the Asserted Patents are not invalid for any reason,
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`including under 35 U.S.C. §§ 101, 102, 103, and/or 112.
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`(7) Touchstream has been damaged by Charter’s infringement of the Asserted Claims,
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`and Touchstream is entitled to damages for all infringement addressed at trial.
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`(8) Touchstream is entitled to supplemental damages for all infringement that is not
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`addressed at trial, including, for example, damages for infringement that occurred (i) after the
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`temporal cutoff for the data presented at trial; (ii) during the period between the jury verdict
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`and the entry of final judgment, as well as pre-judgment and post-judgment interest, and (iii)
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`in the future until expiration of each of the respective Asserted Patents.
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`(9) Touchstream seeks the following relief:
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`i. A judgment that Charter has infringed the ’251 patent;
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`ii. A judgment that Charter has infringed the ’751 patent;
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`iii. A judgment that Charter has infringed the ’934 patent;
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`iv. A judgment that Charter’s infringement has been willful;
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`v. A judgment and order requiring Charter to pay Touchstream damages under
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`35 U.S.C. § 284, together with pre-judgment and post-judgment interest and
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`a running royalty for future damages;
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`vi. A judgment and order requiring Charter to pay Touchstream the costs of
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`this action;
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`vii. A judgment and order declaring this case to be exceptional based on
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`Charter’s infringement and/or litigation conduct;
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`viii. A judgment and order awarding attorneys’ fees to Touchstream under 35
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`U.S.C. § 285;
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`ix. A permanent injunction restraining and enjoining Charter from any further
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`use of the methods of the Asserted Claims; and
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`x. All equitable relief that the Court deems just and proper.
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`(10)
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`Touchstream contends that the Asserted Patents are valid, patent-eligible,
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`and enforceable, and that its claims are not barred or otherwise limited as a result of any of the
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`affirmative defenses raised by Charter.
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`(11)
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`To the extent not already addressed above, Touchstream disagrees with
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`Charter’s contentions below.
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`B. Charter’s Contentions
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`(1)
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`To the extent not addressed below, Charter denies each of Touchstream’s
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`contentions.
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`(2)
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`(3)
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`(4)
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`(5)
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`Charter does not and never has infringed the ’251 patent under 35 U.S.C. § 271.
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`Charter does not and never has infringed the ’751 patent under 35 U.S.C. § 271.
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`Charter does not and never has infringed the ’934 patent under 35 U.S.C. § 271.
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`Touchstream did not provide pre-suit notice of the Asserted Patents to Charter.
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`Charter was not aware of the Asserted Patents prior to the filing of Touchstream’s Original
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`Complaint and was not unaware due to willful blindness. Charter should not have been aware
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`that it was likely to infringe one or more Asserted Claims of the Asserted Patents. Moreover,
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`“should have been aware” is not the standard for determining willfulness. Touchstream
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`communicated no patent application number, patent number, or claim of infringement to
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`Charter.
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`(6)
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`Touchstream communicated no non-disclosure agreement to Charter or any
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`confidential information for which there was an obligation to maintain confidentiality to
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`Charter.
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`(7)
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`Charter does not infringe the Asserted Claims and, even if found to infringe, any
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`such infringement was not willful.
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`(8)
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`The Asserted Claims are all invalid, including under 35 U.S.C. §§ 101, 102, 103,
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`and/or 112.
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`(9)
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`The claim elements of the Asserted Claims, both individually and as an ordered
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`combination, were well-understood, routine, and conventional at the time of the alleged
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`invention.
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`(10) Charter contends that U.S. Patent No. 9,490,998 (“Danciu”) is prior art to the
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`Asserted Claims under at least 35 U.S.C. § 102 (e) and/or (g) (pre-AIA).
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`(11) Charter contends that U.S. Patent No. 8,918,812 (“Hayward”) is prior art to the
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`Asserted Claims under at least 35 U.S.C. § 102 (a), (b), (e), and/or (g) (pre-AIA).
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`(12) Charter contends that U.S. Patent Application Publication No. 2009/0298535
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`(“Klein”) is prior art to the Asserted Claims under at least 35 U.S.C. § 102 (a), (b), (e), and/or
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`(g) (pre-AIA).
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`(13) Charter contends that U.S. Patent No. 10,785,027 (“Livingston”) is prior art to the
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`Asserted Claims under at least 35 U.S.C. § 102 (e) and/or (g) (pre-AIA).
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`(14) Charter contends that U.S. Patent No. 8,660,545 (“Redford”) is prior art to the
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`Asserted Claims under at least 35 U.S.C. § 102 (e) and/or (g) (pre-AIA).
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`(15) Charter contends that U.S. Patent No. 9,276,921 (“Birkler”) is prior art to the
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`Asserted Claims under at least 35 U.S.C. § 102 (e) and/or (g) (pre-AIA).
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`(16) Charter contends that U.S. Patent No. 9,294,800 (“McMahon”) is prior art to the
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`Asserted Claims under at least 35 U.S.C. § 102 (e) and/or (g) (pre-AIA).
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`(17) Charter contends that U.S. Patent Application Publication No. 2011/0191677
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`(“Morris ’677”) is prior art to the Asserted Claims under at least 35 U.S.C. § 102 (e) and/or (g)
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`(pre-AIA).
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`(18) For the purposes of trial in this action, Charter contends that claims 1, 5, 7, and 8
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`of the ’251 patent are invalid as anticipated and/or obvious under 35 U.S.C. §§ 102 and 103 in
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`view of the following prior art:
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`• Danciu in view of Hayward
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`• Klein in view of Hayward
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`• Livingston in view of Hayward
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`• Redford in view of Birkler
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`• McMahon in view of Hayward
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`• McMahon
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`(19) For the purposes of trial in this action, Charter contends that claims 12, 13, and 14
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`of the ’751 patent are invalid as anticipated and/or obvious under 35 U.S.C. §§ 102 and 103 in
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`view of the following prior art:
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`• Danciu in view of Morris ’677
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`• Klein in view of Morris ’677
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`• Livingston in view of Morris ’677
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`• Redford in view of Morris ’677
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`• McMahon in view of Morris ’677
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`• McMahon
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`(20) For the purposes of trial in this action, Charter contends that claims 17, 18, 19, and
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`20 of the ’934 patent are invalid as anticipated and/or obvious under 35 U.S.C. §§ 102 and 103
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`in view of the following prior art:
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`• Danciu in view of Morris ’677
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`• Klein in view of Hayward
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`• Livingston in view of Morris ’677
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`• Redford in view of Morris ’677
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`• McMahon in view of Birkler
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`• McMahon
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`(21) Charter contends that Touchstream is not entitled to any damages, including any
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`interest or damages sought under 35 U.S.C. §§ 284 and 285.
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`(22) Touchstream has failed to provide any evidence by which a fact finder could
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`ascertain damages in the event that Touchstream proves infringement, therefore Touchstream
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`is not, under any circumstances, entitled to damages for any infringement demonstrated at trial.
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`(23) Touchstream is not entitled to any supplemental damages for any infringement that
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`is not addressed at trial, including, for example, damages for infringement, if any, that occurred
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`(i) after the temporal cutoff for the data presented at trial; (ii) during the period between the
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`jury verdict and the entry of final judgment, as well as pre-judgment and post-judgment
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`interest, and (iii) in the future until expiration of each of the respective Asserted Patents
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`because, as explained above, Touchstream has failed to provide any evidence by which a fact
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`finder could ascertain such damages. In any event, Touchstream should not be entitled to
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`damages for any time period during which Charter discontinues providing the Accused
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`Functionalities.
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`(24) Touchstream is not entitled to any of the relief it seeks, including as set forth in
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`paragraph (9) above in the preceding section.
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`(25) Charter contends that even if infringement of any valid, asserted claim of the
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`Asserted Patents is found, Touchstream’s proposed damages are excessive and unsupported.
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`(26) Charter contends that Touchstream is not entitled to any costs.
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`(27) Charter contends that Touchstream is not entitled to attorneys’ fees.
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`(28) Charter contends that Touchstream has not established that this is an exceptional
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`case.
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`(29) To the extent not already addressed above, Charter disagrees with Touchstream’s
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`contentions above.
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`V. STIPULATIONS AND UNCONTESTED FACTS
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`The Parties will continue to meet and confer to attempt to resolve their objections to
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`deposition designations and exhibits, and to identify additional potential stipulations, including
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`stipulations related to the admissibility of exhibits, and will supplement these stipulations to the
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`extent that additional stipulations are agreed by the Parties.
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`A. The Parties’ Statement of Stipulations
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`The Parties have met and conferred and agreed upon certain trial management
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`procedures as set forth below.
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`(1)
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`The parties propose that the Court present a tutorial video for the Federal Judicial
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`Center regarding the U.S. Patent Office to the members of the jury as part of its preliminary
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`instructions to the jury.
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`(2)
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`The parties agree that written answers to interrogatories as finally supplemented
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`and requests for admission or stipulations agreed to in this case shall be treated by the opposing
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`party as having been given under oath, whether or not the answers were signed or verified by the
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`party making them.
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`(3)
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`(4)
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`The parties will share any courtroom audio-visual equipment.
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`The parties shall make good faith efforts to resolve objections over the use of
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`identified witnesses, testimony, exhibits, and demonstratives by participating in a meet and confer
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`following the identification of and objection to witnesses, testimony, exhibits, and demonstratives
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`each day as outlined further below.
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`(5)
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`Fact witnesses will be sequestered so that they cannot hear other witnesses’
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`testimony pursuant to Federal Rule of Evidence 615. This stipulation does not apply to a party’s
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`corporate trial representative.
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`B. The Parties’ Statement of Uncontested Facts
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`(1)
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`(2)
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`Touchstream Technologies, Inc., is a South Dakota corporation.
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`Charter Communications, Inc. is a publicly held corporation organized under the
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`laws of the state of Delaware.
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`(3)
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`Charter Communications Operating, LLC is a limited liability company
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`organized under the laws of the state of Delaware.
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`(4)
`Spectrum Management Holding Company, LLC is a limited liability company
`organized under the laws of the state of Delaware.
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`(5)
`Time Warner Cable Enterprises, LLC is a limited liability company organized
`under the laws of the state of Delaware.
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`(6)
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`Spectrum Gulf Coast, LLC is a limited liability company organized under the
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`laws of the state of Delaware.
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`(7)
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`Charter Communications, LLC is a limited liability company organized under
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`the laws of the state of Delaware.
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`(8)
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`On May 18, 2016, Charter Communications, Inc., Time Warner Cable Inc.
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`(“TWC”), and Bright House Networks (“BHN”) entered into a series of transaction which
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`created a new Charter entity.
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`(9)
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`The Asserted Patents are U.S. Patent Nos. 8,356,251 (“’251 patent”), which
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`issued January 15, 2013; 11,048,751 (“’751 patent”), which issued June 29, 2021; and
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`11,086,934 (“’934 patent”), which issued August 10, 2021 (collectively the “Asserted Patents”).
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`(10) Touchstream is the record assignee and owner of the Asserted Patents.
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`(11) Each of the Asserted Patents is titled “Play Control of Content On a Display
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`Device.”
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`(12) Each of the Asserted Patents names David Strober as inventor.
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`(13) On February 16, 2023, Touchstream filed the Original Complaint asserting
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`infringement of the ’251 Patent. Dkt. 1.
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`(14) On May 25, 2023, Touchstream filed its First Amended Complaint asserting
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`infringement of the Asserted Patents. 2:23-cv-00060-JRG, Dkt. 53.
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`(15) On May 16, 2024, Touchstream filed its Second Amended Complaint asserting
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`infringement of the Asserted Patents. Dkt. 50.
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`(16) Touchstream does not accuse Charter’s SARA or Passport guides of infringing
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`the Asserted Patents and Touchstream has offered no expert infringement opinions regarding
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`Charter’s SARA or Passport guides.
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`(17) Danciu was filed as U.S. Application No. 13/041,964 and claims priority to and
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`incorporates by reference in its entirety U.S. Provisional Application No. 61/411,386, which was
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`filed on November 8, 2010.
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`(18) Hayward was filed as U.S. Application No. 10/415,210 on October 24, 2001.
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`(19) Klein was filed as U.S. Application No. 12/131,524 on June 2, 2008.
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`(20) Livingston was filed as U.S. Application No. 12/974,041 and claims priority to
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`and incorporates by reference in its entirety U.S. Provisional Application No. 61/288,622, which
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`was filed on December 21, 2009.
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`(21) Redford was filed as U.S. Application No. 12/683,405 on January 6, 2010.
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`(22) Birkler was filed as U.S. Application No. 14/008,508 and claims priority to and
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`incorporates by reference in its entirety U.S. Provisional Application No. 61/469,996, which
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`was filed on March 31, 2011.
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`(23) McMahon was filed as U.S. Application No. 13/103,574 and claims priority to
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`and incorporates by reference in its entirety U.S. Provisional Application No. 61/333,066, which
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`was filed on May 10, 2010.
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`(24) Morris ’677 was filed as U.S. Application No. 12/696,854 on January 29, 2010.
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`VI. CONTESTED ISSUES OF FACT AND LAW
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`The Parties identify the following issues that remain to be litigated. The Parties reserve
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`the right to identify additional factual or legal issues that may arise, including issues raised by
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`any further discovery undertaken in this case or the Court’s rulings on any pending motions or
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`rulings made at the pretrial conference on this action.
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`By providing this statement, the Parties do not concede that all of these issues are
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`appropriate for trial. The Parties also do not waive any issues raised in their pending, decided,
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`Case 2:23-cv-00059-JRG Document 214 Filed 10/04/24 Page 16 of 36 PageID #: 11382
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`or future motions.
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`A. Touchstream’s Infringement Claims
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`(1) Whether Touchstream has shown by a preponderance of evidence that
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`Charter has directly infringed or is directly infringing claims 1, 5, 7, and 8 of the ’251
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`patent.
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`(2) Whether Touchstream has shown by a preponderance of evidence that
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`Charter has directly infringed or is directly infringing claims 12, 13, and 14 of the ’751
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`patent.
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`(3) Whether Touchstream has shown by a preponderance of evidence that
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`Charter has directly infringed or is directly infringing claims 17, 18, 19 and 20 of the ’934
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`patent.
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`(4) Whether Touchstream has shown by a preponderance of the evidence that
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`Charter has willfully infringed the Asserted Claims of the Asserted Patents.
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`B. Charter’s Invalidity Defenses
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`(1) Whether Charter has proven by clear and convincing evidence that claims
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`1, 5, 7, and 8 of the ’251 patent are invalid under 35 U.S.C. §§ 101, 102, 103, and/or 112.
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`(2) Whether Charter has proven by clear and convincing evidence that claims
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`12, 13, and 14 of the ’751 patent are invalid under 35 U.S.C. §§ 101, 102, 103, and/or 112.
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`(3) Whether Charter has proven by clear and convincing evidence that claims
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`17, 18, 19, and 20 of the ’934 patent are invalid under 35 U.S.C. §§ 101, 102, 103, and/or
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`112.
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`(4) Whether the claim elements of the Asserted Patents, both individually and
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`as an ordered combination, were well-understood, routine, and conventional at the time of
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`Case 2:23-cv-00059-JRG Document 214 Filed 10/04/24 Page 17 of 36 PageID #: 11383
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`the alleged invention.
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`(5) Whether certain of Charter’s references qualify as prior art in light of
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`Touchstream’s assertion of an October 2010 priority date for each Asserted Patent.
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`(6) Whether the Asserted Patents are entitled to the asserted priority date of
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`October 8, 2010.
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`(7) Whether the Asserted Patents are entitled to the asserted provisional date of
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`April 21, 2011.
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`C. Touchstream’s Asserted Damages and Claimed Remedies
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`(1) Whether Charter has proven the availability of any available and acceptable non-
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`infringing alternative by a preponderance of the evidence.
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`(2)
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`If Touchstream proves infringement of one or more valid claims of the ’251
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`Patent, the amount of reasonable royalty damages that Touchstream has shown by a
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`preponderance of the evidence to which it is entitled for the period from February 16, 2017, to
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`the date of trial.
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`(3)
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`If Touchstream proves infringement of one or more valid claims of the ’751
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`Patent, the amount of reasonable royalty damages that Touchstream has shown by a
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`preponderance of the evidence to which it is entitled for the period from June 29, 2021 to the date
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`of trial.
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`(4)
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`If Touchstream proves infringement of one or more valid claims of the ’934
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`Patent, the amount of reasonable royalty damages that Touchstream has shown by a
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`preponderance of the evidence to which it is entitled for the period from August 10, 2021 to the
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`date of trial.
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`(5)
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`If the jury awards damages to Touchstream, whether Touchstream has shown by
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`a preponderance of the evidence that it is entitled to supplemental damages for infringement that
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`is not included in the jury verdict, including, for example damages for infringement that occurred
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`between the jury verdict and the expiration of the Asserted Patents.
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`(6)
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`If Touchstream proves infringement of one or more patent claims that are not
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`invalid, whether Touchstream is entitled to a permanent injunction to prevent further
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`infringement.
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`(7)
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`If the jury awards damages to Touchstream, whether Touchstream has shown by
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`a preponderance of the evidence that it is entitled to pre- and/or post-judgment interest, and if so
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`the amount.
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`(8)
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`If the jury finds willful infringement, whether Touchstream should be awarded
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`enhanced damages under 35 U.S.C. § 284 and, if so, the amount of enhancement.
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`(9) Whether this case is exceptional under 35 U.S.C. § 285 and, if so, whether
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`Touchstream or Charter is entitled to attorneys’ fees or costs, and, if so, the amount.
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`VII. LIST OF WITNESSES
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`The Parties’ witness lists and objections thereto are attached as Exhibits A and B. The
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`Parties will continue to meet and confer regarding these lists, objections, and amendments thereto.
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`VIII.
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` LIST OF EXHIBITS
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`The Parties’ exhibits lists and objections thereto are attached as Exhibits C, D, and E. The
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`Parties will continue to meet and confer regarding these lists, objections, and amendments
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`thereto. In addition, any exhibits implicated by motions in limine are deemed objected to.
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`IX. DEPOSITION DESIGNATIONS
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`The Parties’ deposition designations and objections are attached as Exhibits F and G. The
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`Parties will continue to meet and confer regarding these designations, objections, and amendments
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`thereto. In addition, any deposition testimony implicated by motions in limine are deemed
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`objected to.
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`X. STIPULATIONS AND TRIAL DISCLOSURES
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`The following stipulations were agreed upon by the Parties as discussed below and are
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`made a part of this Pretrial Order.
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`A. Trial Disclosure Schedule
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`The Parties agree to the following procedure which will govern the disclosure of witnesses,
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`exhibits, deposition testimony, and demonstratives to use at trial and the process to identify any
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`objections remaining between the Parties with regard to these disclosures:
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`(1)
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`At 7:00 PM2 two days before each day of trial (e.g., 7:00 PM Saturday
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`for a Monday trial day), each party will exchange by email the following
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`for that trial day:
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`(i)
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`A list of witnesses the party intends to call for direct examination,
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`in the order the party intends to call such witnesses (whether live
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`or by deposition);
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`(ii)
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`A list of the deposition testimony it intends to introduce (either
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`by video or through a reading of the transcript), a list and PDF
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`copy of any trial exhibits it intends to introduce for the first time
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`through such deposition testimony and a short agreed-upon
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`statement of introduction for the witness that may be read to the
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`jury prior to reading or playing the designated deposition
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`testimony to the jury; and
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`2 All times noted herein are Central Time.
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`Case 2:23-cv-00059-JRG Document 214 Filed 10/04/24 Page 20 of 36 PageID #: 11386
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`(iii)
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`A
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`list of
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`the responses
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`to requests for admissions or
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`interrogatories it intends to read into the record.
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`(2)
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`At 7:00 PM one day before a day of trial (e.g., 7:00 PM Sunday for a
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`Monday trial day), each party will exchange by email the following for
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`that trial day:
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`(i)
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`A list and PDF copy of each trial exhibit for each witness it
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`intends to present for the first time through direct examination;
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`(ii)
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`Copies of demonstratives to be used during direct examination
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`(including