Case 2:23-cv-00059-JRG-RSP Document 341 Filed 02/21/25 Page 1 of 4 PageID #:
`14338
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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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`Lead Case No. 2:23-cv-00059-JRG-RSP
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`JURY TRIAL DEMANDED
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`TOUCHSTREAM’S MOTION FOR LEAVE TO FILE
`MOTION TO STRIKE UNELECTED PRIOR ART EXHIBITS
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` Touchstream moves for leave to file a motion to strike prior art exhibits underlying prior
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`art defenses that Charter dropped from trial. Charter elected to drop all prior-art based invalidity
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`theories well after the first pretrial conference, eliminating the relevance of these exhibits and
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`heightening their prejudicial nature. Because Touchstream agreed to include them on the joint
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`exhibit list for the purpose of supporting Charter’s prior art invalidity theories that Charter dropped
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`after the time for Touchstream to object to exhibits, Touchstream respectfully requests leave to
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`file a motion to strike these exhibits from trial.
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`Charter opposes Touchstream’s motion, arguing that Touchstream is relitigating its motion
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`in limine No. 3 and that Touchstream should have raised this issue as part of Touchstream’s pretrial
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`motions. But Touchstream’s motion in limine No. 3 raised a separate issue of how Charter’s
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`technical expert could use unelected prior art references to discuss the state of the art in connection
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`with Charter’s obviousness defenses. That is not the issue here, where Charter has since dropped
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`all prior art defenses but still seeks to use those very prior art references as exhibits at trial.
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`Case 2:23-cv-00059-JRG-RSP Document 341 Filed 02/21/25 Page 2 of 4 PageID #:
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`Moreover, by the time Charter dropped its prior art invalidity defenses, Touchstream’s deadline
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`had already passed to object to Magistrate Judge Payne’s order regarding Touchstream’s Motion
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`in limine No. 3 and to object to these exhibits as irrelevant and unduly prejudicial given the change
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`in Charter’s invalidity defenses at trial.
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`Good cause exists to allow Touchstream to seek the exclusion of these exhibits at trial:
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`Diligence: Touchstream responded quickly to Charter’s narrowing of its invalidity
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`theories, raising the issue within a couple weeks and repeatedly attempting to resolve the issue
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`without burdening the Court. When it became clear that Charter would not voluntarily drop these
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`exhibits from the joint exhibit list in view of Charter dropping the prior art invalidity theories
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`involving them, Touchstream sought to meet and confer. The parties reached an impasse during
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`the meet-and-confer and Touchstream filed this motion the very same day.
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`Importance: the issue of whether Charter is able to present unelected invalidity references
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`to the jury is critical to this trial. As Touchstream explains in its Motion to Strike, these exhibits
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`are now irrelevant to Charter’s defenses at trial, risk juror confusion on the issues, and
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`impermissibly allow Charter to present invalidity exhibits to the jury without the proper invalidity
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`framework or clear and convincing burden. Due to the importance of the issue, Touchstream
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`should be permitted to raise it with the Court before trial commences.
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`Prejudice: Charter will not be substantially prejudiced by the filing of this Motion to Strike.
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`Charter can still discuss this prior art for limited proper purposes such as damages, and
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`Touchstream can object during trial if Charter seeks to discuss the references for improper
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`purposes. Furthermore, it was Charter who chose to drop its prior art invalidity defenses after the
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`period for objecting to exhibits and after the pretrial conference where this issue could have been
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`taken up. Continuance: given the simple nature of the requested remedy, removing the exhibits
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`Case 2:23-cv-00059-JRG-RSP Document 341 Filed 02/21/25 Page 3 of 4 PageID #:
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`from the joint exhibit list, the relief is straightforward and will not require a continuance of trial.
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`Touchstream conferred with Charter counsel, who stated they oppose Touchstream’s
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`Motion for Leave but agree to an expedited briefing schedule of responding by to both the Motion
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`for Leave and the underlying Motion to Strike Monday, February 24, 2025 at 5pm CT.
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`Date: February 21, 2025
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`Respectfully submitted,
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`/s/ Ryan Dykal ________
`Lead Counsel
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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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`Rachel Martin (pro hac vice)
`BOIES SCHILLER FLEXNER LLP
`333 Main Street
`Armonk, NY 10504
`rmartin@bsfllp.com
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`Melissa Smith (TX State Bar No. 24001351)
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`Case 2:23-cv-00059-JRG-RSP Document 341 Filed 02/21/25 Page 4 of 4 PageID #:
`14341
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`GILLAM & SMITH LLP
`303 S. Washington Ave.
`Marshall, TX 75670
`(t) 903-934-8450
`melissa@gillamsmithlaw.com
`Andrew Thompson (“Tom”) Gorham (TX
`State Bar No. 24012715)
`McKellar L. Karr (TX State Bar No.
`24114356)
`GILLAM & SMITH LLP
`Tyler, TX 75702 (t) (903) 934-8540
`travis@gillamsmithlaw.com
`mckellar@gillamsmithlaw.com
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` Counsel for Plaintiff Touchstream
` Technologies, Inc.
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`CERTIFICATE OF CONFERENCE
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`Counsel for Touchstream has complied with the meet and confer requirement in Local
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`Rule CV- 7(h) and confirm that this Motion is unopposed. Counsel for Touchstream, and
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`counsel for Charter met and conferred by telephone on the subject of this Motion on February
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`21, 2025. Counsel for Charter confirmed that they do oppose.
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`Dated: February 6, 2025
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`/s/ Ryan Dykal
`Ryan D. Dykal
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who are deemed to have consented to electronic
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`service are being served this 21 day of February, 2025.
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` Dated: February 21, 2025
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`/s/ Ryan Dykal
`Ryan D. Dykal
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