Case 2:23-cv-00059-JRG-RSP Document 316 Filed 02/07/25 Page 1 of 9 PageID #:
`14077
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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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`TOUCHSTREAM TECHNOLOGIES, INC.,
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`Plaintiff,
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`v.
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`COMCAST CABLE COMMUNICATIONS,
`LLC, D/B/A XFINITY, et al.,
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`Defendants.
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`
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`Lead Case No. 2:23-cv-00059-JRG
`Member Case No. 2:23-cv-00062-JRG
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`PLAINTIFF TOUCHSTREAM'S RESPONSE TO DEFENDANT
`COMCAST'S OBJECTIONS TO MAGISTRATE JUDGE PAYNE'S
`DENIAL OF COMCAST MOTION IN LIMINE NO. 3
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`

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`Case 2:23-cv-00059-JRG-RSP Document 316 Filed 02/07/25 Page 2 of 9 PageID #:
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`Comcast argues that Judge Payne committed clear error by failing to exclude willfulness
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`evidence under Rule 403, where that evidence predates the statutory damages period in 35 U.S.C.
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`§ 286. But Comcast fails to cite a single case supporting its bright-line rule that willfulness
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`evidence must be closely tied in time to the 6-year lookback for damages. Touchstream emphasized
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`the lack of authority supporting Comcast’s novel willfulness test in both Touchstream’s opposition
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`brief and during oral argument. Touchstream noted that such a strict requirement is contrary to the
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`Supreme Court’s Halo decision that rejected Seagate’s “unduly rigid” test, where the Supreme
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`Court instead held that a factfinder must consider the totality of circumstances during the period
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`of challenged conduct. Magistrate Judge Payne rightly rejected Comcast’s argument and denied
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`its Motion. Nothing raised in Comcast’s objections approaches clear legal error. Rather, it invites
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`this Court to adopt a rule that contravenes Halo’s guidance. Comcast’s objections should be
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`overruled.
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`I. ARGUMENT
`Comcast’s prejudice argument was quickly rejected by Judge Payne for lacking
`A.
`legal support.
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`Comcast’s motion in limine No. 3 (“MIL No. 3”) sought to per-se exclude any evidence of
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`Comcast’s willful infringement, where that evidence pre-dated the February 2017 beginning of the
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`statutory damages period. Comcast argued that such evidence is irrelevant and prejudicial under
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`Fed. R. Evid. 402 and 403 because the issue of willfulness is only relevant to the enhancement of
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`damages. See Dkt. No. 233, Transcript of Proceedings Held on December 19, 2024, at 135:22-
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`136:510 (“We’re arguing under Rule 403…the concern is that the jury’s attention is going to be
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`focused on the wrong period. It's not the operative period it needs to be determining. And we
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`submit, Your Honor, that the prejudice really sort of steps up the further back you go in time and
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`the more attenuated this gets.”).
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`1
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`Case 2:23-cv-00059-JRG-RSP Document 316 Filed 02/07/25 Page 3 of 9 PageID #:
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`In its Order during the Pretrial Hearing (the “Order”), the Court denied MIL No. 3 for the
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`same reason Touchstream urged it to do so: Comcast’s argument is not supported by existing law.
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`The Court’s rationale did not fail to consider the issues of prejudice and jury confusion that
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`Comcast had raised—rather, the Court rejected those very arguments as legally unfounded. Judge
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`Payne was correct, and his ruling should not be disturbed.
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`B.
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`Comcast cites no authority for its assertion that willfulness evidence is only
`relevant if it occurs during the statutory damages period.
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`Comcast cites no authority to support its assertion that willfulness evidence is relevant only
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`to the enhancement of damages, and thus evidence pre-dating the damages period must be
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`excluded. Rather, the limitation sought by Comcast in its MIL No. 3 contravenes the Federal
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`Circuit’s longstanding rule that “a willfulness finding must be based on all relevant
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`circumstances.” Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1308 (Fed.
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`Cir. 2001) (emphasis added).
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`As Touchstream stated in its opposition briefing to Comcast’s MIL No. 3, “[w]illful
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`infringement is an inquiry that considers the ‘totality of the circumstances.’” G+ Commc’ns, LLC
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`v. Samsung Elecs. Co., No. 2:22-CV-00078-JRG, 2024 WL 83505, at *4 (E.D. Tex. Jan. 8, 2024)
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`(quoting WCM Indus., Inc. v. IPS Corp., 721 F.App’x 959, 970 (Fed. Cir. 2018)); Exmark Mfg. Co.
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`Inc. v. Briggs & Stratton Power Prod. Grp., LLC, 879 F.3d 1332, 1353 (Fed. Cir. 2018) (noting
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`that “willfulness is an issue for the jury”). “Culpability for willfulness is ‘measured against the
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`knowledge of the actor at the time of the challenged conduct.’” VirnetX Inc. v. Apple Inc., 324 F.
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`Supp. 3d 836, 859 (E.D. Tex. 2017), aff’d sub nom. VirnetX Inc. v. Cisco Sys., Inc., 748 F.App’x
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`332 (Fed. Cir. 2019) (quoting Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 105 (2016)). If a
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`party infringed Touchstream’s patents in February 2017, they did so with all the knowledge gained
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`before that point—knowledge that does not vanish on the date the damages period begins.
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`2
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`Evidence relating to such knowledge falls squarely within the totality of the circumstances that
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`must be considered for willfulness and is indisputably relevant to that inquiry.
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`The rule Comcast proposes also cannot be squared with Halo. By Comcast’s logic, some
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`of the most egregious infringing behavior would be per-se excluded from a willfulness inquiry
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`merely because that behavior occurred before the statutory damages period. For example, a party
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`could consciously copy and intentionally infringe a patent more than six years before the patentee
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`files suit but conceal its willful behavior. And if the patentee was not privy to that evidence until
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`years later—perhaps first uncovering it during discovery—Comcast’s proposed rule would punish
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`the patentee by excluding this evidence from consideration. That is surely not what the Supreme
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`Court intended when rejecting Seagate’s “unduly rigid” test that would allow “many of the most
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`culpable offenders” to escape comeuppance. See Halo, 579 U.S. at 104.
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`Following longstanding Federal Circuit and Supreme Court precedent, district courts
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`routinely permit consideration of evidence of willful infringement that pre-dates the damages and
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`statute of limitations periods. See, e.g., KAIST IP US LLC v. Samsung Elecs. Co., 439 F. Supp. 3d
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`860, 884-85 (E.D. Tex. 2020) (discussing jury’s consideration of evidence of willfulness dating
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`from fourteen years prior to filing); Barry v. Medtronic, Inc., 250 F. Supp. 3d 107, 112-14 (E.D.
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`Tex. 2017) (discussing jury’s consideration of willfulness evidence dating from thirteen years prior
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`to filing); Georgetown Rail Equip. Co. v. Holland L.P., No. 6:13-CV-366, 2016 WL 3346084, *12-
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`13 (E.D. Tex. June 16, 2016), aff ’d, 867 F.3d 1229 (Fed. Cir. 2017) (discussing jury’s consideration
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`of willfulness evidence dating from eight years prior to filing). Comcast cites no authority to
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`support its argument that willfulness evidence is only relevant during the damages period because,
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`as the above case law demonstrates, the appropriate authority holds the opposite is true. The Court
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`did not err in denying Comcast’s MIL No. 3.
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`3
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`C.
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`The cases cited by Comcast regarding the relevance of pre-issuance evidence are
`distinguishable.
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`The Court correctly rejected Comcast’s alternative argument that evidence of Comcast’s
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`knowledge that pre-dates the January 2013 issuance of the ‘251 Patent should be excluded.
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`Comcast’s argument confuses the issues and relies on distinguishable case law. As Touchstream
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`has already pointed out, Touchstream is using that evidence to support the “totality of the
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`circumstances” surrounding Comcast’s reckless disregard for known patent rights. See Minnesota
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`Min. & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1581 (Fed. Cir. 1992)
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`(“[P]re-patent conduct may also be used to support a finding of willfulness.”); Purewick Corp. v.
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`Sage Prod., LLC, 666 F. Supp. 3d 419, 441 (D. Del. 2023) (“[P]re-issuance copying may still be
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`‘relevant evidence to support . . . willfulness.’” (citation omitted)); KAIST, 439 F. Supp. 3d at 884-
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`85 (discussing willfulness evidence from 2002 for a 2005-issued patent).
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`The cases Comcast relies on stand for the unremarkable proposition that evidence of a
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`patent application, patent portfolio, or competing product is insufficient on its own to satisfy the
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`knowledge prong of the willfulness test. In HOYA Corp. v. Alcon Inc., the Court found that
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`evidence the accused infringer “conducted surveillance of its competitors and was aware of [the
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`plaintiff’s product]” was insufficient to establish pre-suit knowledge of the asserted patent. See
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`2024 WL 310706, at *15 (N.D. Tex. Jan. 26, 2024). But this evidence is far weaker than the
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`extensive and repeated contacts between Touchstream and Comcast, and in any event is not the
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`type of evidence Touchstream asserts to establish Comcast’s pre-suit knowledge. And Conopco,
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`Inc. v. May Dep’t Stores Co. cautioned the lower court not to place “undue weight” on the
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`defendant’s pre-issue activities—but did not suggest excluding evidence of such activities. 46 F.3d
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`1556, 1562 (Fed. Cir. 1994). Comcast’s fear that the jury will believe “that having a pending
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`application is the same as having a patent” is a concern that Comcast can address in its
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`4
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`Case 2:23-cv-00059-JRG-RSP Document 316 Filed 02/07/25 Page 6 of 9 PageID #:
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`presentations during trial, as the Court noted in the Order. Dkt. No. 233 at 139:1-5 (“[T]he
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`individual evidence will just have to be judged based on whether it is relevant to willful
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`infringement. And if the Defendant contends it’s not, then a relevance objection should be
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`asserted.”) Accordingly, the Court did not err in rejecting Comcast’s argument on this point.
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`D.
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`Comcast’s argument that the Court should decide willfulness runs contrary to
`long-standing precedent.
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`The Court also rightfully denied Comcast’s argument that a court, rather than the jury,
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`should decide the issue of willful infringement. As Comcast acknowledged, its argument
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`contradicts long-established Federal Circuit precedent. See WBIP, LLC v. Kohler Co., 829 F.3d
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`1317, 1341 (Fed. Cir. 2016) (explaining that it is “the established law that the factual components
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`of the willfulness question should be resolved by the jury”); Nat’l Presto Indus., Inc. v. West Bend
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`Co., 76 F.3d 1185, 1193 (Fed. Cir. 1996) (“The issue of willful infringement remains with the trier
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`of fact.”); Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1250 (Fed. Cir. 1989) (“Willfulness of
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`behavior is a classical jury question of intent. When trial is had to a jury, the issue should be decided
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`by the jury.”). If the Federal Circuit affirms a jury verdict of willfulness against Comcast, then
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`Comcast can seek certiorari from the Supreme Court on this issue, provided Comcast even
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`preserved it by not moving for summary judgment of no willfulness. But Comcast’s argument is
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`merely a placeholder at this stage and should be rejected.
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`For the foregoing reasons, Touchstream respectfully requests the Court to overrule
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`Comcast’s objections to Judge Payne’s denial of its MIL No. 3.
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`5
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`Case 2:23-cv-00059-JRG-RSP Document 316 Filed 02/07/25 Page 7 of 9 PageID #:
`14083
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`Date: January 16, 2025
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`
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`Respectfully submitted,
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`
`
`/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.
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`6
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`Case 2:23-cv-00059-JRG-RSP Document 316 Filed 02/07/25 Page 8 of 9 PageID #:
`14084
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`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
`
`
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`Case 2:23-cv-00059-JRG-RSP Document 316 Filed 02/07/25 Page 9 of 9 PageID #:
`14085
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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
`
`
`Marc A. Cohn
`Arnold & Porter Kaye Scholer LLP
`601 Massachusetts Ave, NW
`Washington, DC 20001
`marc.cohn@arnoldporter.com
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