Case 2:23-cv-00059-JRG-RSP Document 266 Filed 01/16/25 Page 1 of 9 PageID #:
`13244
`
`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
`
`
`
`
`
`PLAINTIFF TOUCHSTREAM'S RESPONSE TO DEFENDANT
`COMCAST'S OBJECTIONS TO MAGISTRATE JUDGE PAYNE'S
`DENIAL OF COMCAST MOTION IN LIMINE NO. 3
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 266 Filed 01/16/25 Page 2 of 9 PageID #:
`13245
`
`Comcast argues that Judge Payne committed clear error by failing to exclude willfulness
`
`evidence under Rule 403, where that evidence predates the statutory damages period in 35 U.S.C.
`
`§ 286. But Comcast fails to cite a single case supporting its bright-line rule that willfulness
`
`evidence must be closely tied in time to the 6-year lookback for damages. Touchstream emphasized
`
`the lack of authority supporting Comcast’s novel willfulness test in both Touchstream’s opposition
`
`brief and during oral argument. Touchstream noted that such a strict requirement is contrary to the
`
`Supreme Court’s Halo decision that rejected Seagate’s “unduly rigid” test, where the Supreme
`
`Court instead held that a factfinder must consider the totality of circumstances during the period
`
`of challenged conduct. Magistrate Judge Payne rightly rejected Comcast’s argument and denied
`
`its Motion. Nothing raised in Comcast’s objections approaches clear legal error. Rather, it invites
`
`this Court to adopt a rule that contravenes Halo’s guidance. Comcast’s objections should be
`
`overruled.
`
`I. ARGUMENT
`Comcast’s prejudice argument was quickly rejected by Judge Payne for lacking
`A.
`legal support.
`
`Comcast’s motion in limine No. 3 (“MIL No. 3”) sought to per-se exclude any evidence of
`
`Comcast’s willful infringement, where that evidence pre-dated the February 2017 beginning of the
`
`statutory damages period. Comcast argued that such evidence is irrelevant and prejudicial under
`
`Fed. R. Evid. 402 and 403 because the issue of willfulness is only relevant to the enhancement of
`
`damages. See Dkt. No. 233, Transcript of Proceedings Held on December 19, 2024, at 135:22-
`
`136:510 (“We’re arguing under Rule 403…the concern is that the jury’s attention is going to be
`
`focused on the wrong period. It's not the operative period it needs to be determining. And we
`
`submit, Your Honor, that the prejudice really sort of steps up the further back you go in time and
`
`the more attenuated this gets.”).
`
`
`
`1
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 266 Filed 01/16/25 Page 3 of 9 PageID #:
`13246
`
`In its Order during the Pretrial Hearing (the “Order”), the Court denied MIL No. 3 for the
`
`same reason Touchstream urged it to do so: Comcast’s argument is not supported by existing law.
`
`The Court’s rationale did not fail to consider the issues of prejudice and jury confusion that
`
`Comcast had raised—rather, the Court rejected those very arguments as legally unfounded. Judge
`
`Payne was correct, and his ruling should not be disturbed.
`
`B.
`
`Comcast cites no authority for its assertion that willfulness evidence is only
`relevant if it occurs during the statutory damages period.
`
`Comcast cites no authority to support its assertion that willfulness evidence is relevant only
`
`to the enhancement of damages, and thus evidence pre-dating the damages period must be
`
`excluded. Rather, the limitation sought by Comcast in its MIL No. 3 contravenes the Federal
`
`Circuit’s longstanding rule that “a willfulness finding must be based on all relevant
`
`circumstances.” Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1308 (Fed.
`
`Cir. 2001) (emphasis added).
`
`As Touchstream stated in its opposition briefing to Comcast’s MIL No. 3, “[w]illful
`
`infringement is an inquiry that considers the ‘totality of the circumstances.’” G+ Commc’ns, LLC
`
`v. Samsung Elecs. Co., No. 2:22-CV-00078-JRG, 2024 WL 83505, at *4 (E.D. Tex. Jan. 8, 2024)
`
`(quoting WCM Indus., Inc. v. IPS Corp., 721 F.App’x 959, 970 (Fed. Cir. 2018)); Exmark Mfg. Co.
`
`Inc. v. Briggs & Stratton Power Prod. Grp., LLC, 879 F.3d 1332, 1353 (Fed. Cir. 2018) (noting
`
`that “willfulness is an issue for the jury”). “Culpability for willfulness is ‘measured against the
`
`knowledge of the actor at the time of the challenged conduct.’” VirnetX Inc. v. Apple Inc., 324 F.
`
`Supp. 3d 836, 859 (E.D. Tex. 2017), aff’d sub nom. VirnetX Inc. v. Cisco Sys., Inc., 748 F.App’x
`
`332 (Fed. Cir. 2019) (quoting Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 105 (2016)). If a
`
`party infringed Touchstream’s patents in February 2017, they did so with all the knowledge gained
`
`before that point—knowledge that does not vanish on the date the damages period begins.
`
`
`
`2
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 266 Filed 01/16/25 Page 4 of 9 PageID #:
`13247
`
`Evidence relating to such knowledge falls squarely within the totality of the circumstances that
`
`must be considered for willfulness and is indisputably relevant to that inquiry.
`
`The rule Comcast proposes also cannot be squared with Halo. By Comcast’s logic, some
`
`of the most egregious infringing behavior would be per-se excluded from a willfulness inquiry
`
`merely because that behavior occurred before the statutory damages period. For example, a party
`
`could consciously copy and intentionally infringe a patent more than six years before the patentee
`
`files suit but conceal its willful behavior. And if the patentee was not privy to that evidence until
`
`years later—perhaps first uncovering it during discovery—Comcast’s proposed rule would punish
`
`the patentee by excluding this evidence from consideration. That is surely not what the Supreme
`
`Court intended when rejecting Seagate’s “unduly rigid” test that would allow “many of the most
`
`culpable offenders” to escape comeuppance. See Halo, 579 U.S. at 104.
`
`Following longstanding Federal Circuit and Supreme Court precedent, district courts
`
`routinely permit consideration of evidence of willful infringement that pre-dates the damages and
`
`statute of limitations periods. See, e.g., KAIST IP US LLC v. Samsung Elecs. Co., 439 F. Supp. 3d
`
`860, 884-85 (E.D. Tex. 2020) (discussing jury’s consideration of evidence of willfulness dating
`
`from fourteen years prior to filing); Barry v. Medtronic, Inc., 250 F. Supp. 3d 107, 112-14 (E.D.
`
`Tex. 2017) (discussing jury’s consideration of willfulness evidence dating from thirteen years prior
`
`to filing); Georgetown Rail Equip. Co. v. Holland L.P., No. 6:13-CV-366, 2016 WL 3346084, *12-
`
`13 (E.D. Tex. June 16, 2016), aff ’d, 867 F.3d 1229 (Fed. Cir. 2017) (discussing jury’s consideration
`
`of willfulness evidence dating from eight years prior to filing). Comcast cites no authority to
`
`support its argument that willfulness evidence is only relevant during the damages period because,
`
`as the above case law demonstrates, the appropriate authority holds the opposite is true. The Court
`
`did not err in denying Comcast’s MIL No. 3.
`
`
`
`3
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 266 Filed 01/16/25 Page 5 of 9 PageID #:
`13248
`
`C.
`
`The cases cited by Comcast regarding the relevance of pre-issuance evidence are
`distinguishable.
`
`The Court correctly rejected Comcast’s alternative argument that evidence of Comcast’s
`
`knowledge that pre-dates the January 2013 issuance of the ‘251 Patent should be excluded.
`
`Comcast’s argument confuses the issues and relies on distinguishable case law. As Touchstream
`
`has already pointed out, Touchstream is using that evidence to support the “totality of the
`
`circumstances” surrounding Comcast’s reckless disregard for known patent rights. See Minnesota
`
`Min. & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1581 (Fed. Cir. 1992)
`
`(“[P]re-patent conduct may also be used to support a finding of willfulness.”); Purewick Corp. v.
`
`Sage Prod., LLC, 666 F. Supp. 3d 419, 441 (D. Del. 2023) (“[P]re-issuance copying may still be
`
`‘relevant evidence to support . . . willfulness.’” (citation omitted)); KAIST, 439 F. Supp. 3d at 884-
`
`85 (discussing willfulness evidence from 2002 for a 2005-issued patent).
`
`The cases Comcast relies on stand for the unremarkable proposition that evidence of a
`
`patent application, patent portfolio, or competing product is insufficient on its own to satisfy the
`
`knowledge prong of the willfulness test. In HOYA Corp. v. Alcon Inc., the Court found that
`
`evidence the accused infringer “conducted surveillance of its competitors and was aware of [the
`
`plaintiff’s product]” was insufficient to establish pre-suit knowledge of the asserted patent. See
`
`2024 WL 310706, at *15 (N.D. Tex. Jan. 26, 2024). But this evidence is far weaker than the
`
`extensive and repeated contacts between Touchstream and Comcast, and in any event is not the
`
`type of evidence Touchstream asserts to establish Comcast’s pre-suit knowledge. And Conopco,
`
`Inc. v. May Dep’t Stores Co. cautioned the lower court not to place “undue weight” on the
`
`defendant’s pre-issue activities—but did not suggest excluding evidence of such activities. 46 F.3d
`
`1556, 1562 (Fed. Cir. 1994). Comcast’s fear that the jury will believe “that having a pending
`
`application is the same as having a patent” is a concern that Comcast can address in its
`
`
`
`4
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 266 Filed 01/16/25 Page 6 of 9 PageID #:
`13249
`
`presentations during trial, as the Court noted in the Order. Dkt. No. 233 at 139:1-5 (“[T]he
`
`individual evidence will just have to be judged based on whether it is relevant to willful
`
`infringement. And if the Defendant contends it’s not, then a relevance objection should be
`
`asserted.”) Accordingly, the Court did not err in rejecting Comcast’s argument on this point.
`
`D.
`
`Comcast’s argument that the Court should decide willfulness runs contrary to
`long-standing precedent.
`
`The Court also rightfully denied Comcast’s argument that a court, rather than the jury,
`
`should decide the issue of willful infringement. As Comcast acknowledged, its argument
`
`contradicts long-established Federal Circuit precedent. See WBIP, LLC v. Kohler Co., 829 F.3d
`
`1317, 1341 (Fed. Cir. 2016) (explaining that it is “the established law that the factual components
`
`of the willfulness question should be resolved by the jury”); Nat’l Presto Indus., Inc. v. West Bend
`
`Co., 76 F.3d 1185, 1193 (Fed. Cir. 1996) (“The issue of willful infringement remains with the trier
`
`of fact.”); Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1250 (Fed. Cir. 1989) (“Willfulness of
`
`behavior is a classical jury question of intent. When trial is had to a jury, the issue should be decided
`
`by the jury.”). If the Federal Circuit affirms a jury verdict of willfulness against Comcast, then
`
`Comcast can seek certiorari from the Supreme Court on this issue, provided Comcast even
`
`preserved it by not moving for summary judgment of no willfulness. But Comcast’s argument is
`
`merely a placeholder at this stage and should be rejected.
`
`For the foregoing reasons, Touchstream respectfully requests the Court to overrule
`
`Comcast’s objections to Judge Payne’s denial of its MIL No. 3.
`
`
`
`5
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 266 Filed 01/16/25 Page 7 of 9 PageID #:
`13250
`
`Date: January 16, 2025
`
`
`
`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.
`Marshall, TX 75670
`(t) 903-934-8450
`melissa@gillamsmithlaw.com
`
`
`Counsel for Plaintiff Touchstream Technologies,
`Inc.
`
`6
`
`
`
`
`
`
`.
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 266 Filed 01/16/25 Page 8 of 9 PageID #:
`13251
`
`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 
`ddacus@dacusfirm.com 
`
`
`
`Thomas G. Saunders
`Wilmer Hale
`2100 Pennsylvania Ave, NW
`Washington, DC 20007
`Tel.: 202-663-6536
`Fax: 202-663-6363
`thomas.saunders@wilmerhale.com
`
`
`Counsel for Charter:
`
`
`Deron R Dacus
`The Dacus Firm, PC
`821 ESE Loop 323
`Suite 430
`Tyler, TX 75701
`Tel: 903-705-1117
`Fax: 903-581-2543
`ddacus@dacusfirm.com
`
`
`
` 
` 
`
`David J. Lisson 
`Ashok Ramani 
`James Park 
`Micayla Hardisty 
`Davis Polk & Wardwell LLP 
`1600 El Camino Real  
`Menlo Park, CA 94025 
`david.lisson@davispolk.com 
`ashok.ramani@davispolk.com 
`james.park@davispolk.com 
`micayla.hardisty@davispolk.com 
`dpw.comcast.touchstream@davispolk.com 
` 
`
`Alena Farber 
`Davis Polk & Wardwell LLP 
`450 Lexington Avenue 
`New York, NY 10017 
`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
`New York, NY 10019
`Tel: 212-836-8000
`Fax: 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
`
`
`Dina M. Hayes
`Arnold & Porter Kaye Scholer LLP
`70 West Madison Street
`Suite 4200
`Chicago, IL 60602
`dina.hayes@arnoldporter.com
`
`
`
`7
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 266 Filed 01/16/25 Page 9 of 9 PageID #:
`13252
`
`Carson Anderson
`Arnold & Porter Kaye Scholer LLP
`3000 El Camino Real, Bldg 5, Suite 500
`Palo Alto, CA 94306
`carson.anderson@arnoldporter.com
`
`
`Marc A. Cohn
`Arnold & Porter Kaye Scholer LLP
`601 Massachusetts Ave, NW
`Washington, DC 20001
`marc.cohn@arnoldporter.com
`
`
`
`
`8
`
`
`
`
`
`