Case 2:23-cv-00059-JRG-RSP Document 363 Filed 02/28/25 Page 1 of 9 PageID #:
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`TOUCHSTREAM TECHNOLOGIES, INC.,
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` Lead Case No. 2:23-cv-00059-JRG
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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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`Member Case No. 2:23-cv-00062-JRG
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`CHARTER DEFENDANTS’ RESPONSE TO PLAINTIFF’S MOTION TO STRIKE
`UNELECTED PRIOR ART EXHIBITS
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`Case 2:23-cv-00059-JRG-RSP Document 363 Filed 02/28/25 Page 2 of 9 PageID #:
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`Charter Defendants respectfully oppose Touchstream’s Motion To Strike Unelected Prior
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`Art Exhibits (Dkt. 342, “Mot.,” “Motion”).
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`I.
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`Introduction
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`Touchstream’s Motion to Strike is a veiled attempt at reconsideration of its MIL No. 3,
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`which asked for the exact same relief, i.e., to strike unelected prior art references that are not being
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`used for invalidity. But Touchstream lost MIL No. 3 and never objected to Magistrate Judge
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`Payne’s Order thereon. Moreover, Touchstream had all of the information that it has now when
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`its objections to Magistrate Judge Payne’s Order were due, since Charter had informed
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`Touchstream that it was not pursuing a prior art invalidity defense at trial nearly a month earlier.
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`Magistrate Judge Payne’s ruling on MIL No. 3 applies now, just as it did then—there are
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`permissible uses for unelected prior art references—and Touchstream’s improper motion for
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`reconsideration should be denied.
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`Nonetheless, Charter offered a compromise to Touchstream wherein the parties remove the
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`exhibits subject to Touchstream’s Motion, with the exception of JTX020, JTX021, JTX022, and
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`JTX026—i.e. JTX020, JTX021, JTX022, and JTX026 would stay, and the others would be
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`dropped. Touchstream rejected this compromise offer. Ex. 1 at 1.
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`II.
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`Argument
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`A.
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`Touchstream’s Motion Is An Improper Motion For Reconsideration
`Of The Order On Touchstream’s MIL No. 3
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`This exact issue was already briefed, and Touchstream lost. Touchstream’s MIL No. 3
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`asked the Court to exclude “references that are not disclosed [in] invalidity combinations.”
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`Dkt. 170 at 6-7. Charter opposed Touchstream’s MIL No. 3, explaining that these prior art
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`references were nonetheless relevant to other issues, including to “establish that Touchstream’s
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`claimed invention adds no value over the prior art” for purposes of damages, as just one example.
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`1
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`Dkt. 201 at 7-8. Moreover, Charter’s opposition cited to the very same paragraphs of Dr. Shamos’s
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`Rebuttal Expert Report that Touchstream now complains about, and Touchstream never moved to
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`strike these opinions. Compare Mot. at 4 (citing Shamos Rebuttal Report, ¶¶282-87), with
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`Dkt. 201 (Charter’s Opposition to Touchstream’s MILs) at 7 (citing Shamos Rebuttal Report,
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`¶¶281-85).
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`At the December 19, 2024, pretrial conference, Charter similarly explained that unelected
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`prior art would not be used for invalidity purposes, but instead for damages regarding the value
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`proposition over the prior art, per Georgia-Pacific Factor 9:
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`We’re not going to be lining up claim limitations to pieces of prior art that are
`not part of the grounds. But the importance of this, Your Honor, is that the Plaintiff
`is going to claim to have solved a problem that had not been solved, and that’s what
`they contend is the value proposition of their invention. It goes to damages. What
`our expert is going to say is, look, the problem identified in these patents, the
`Touchstream patents, was solved in a lot of different ways. And so at most,
`Touchstream’s solution is just one of many for addressing this problem. And
`they don’t get credit as the only solution, and that’s going to be the extent of his
`testimony. So we’re not going to be trying to confuse the jury with claim elements
`and -- and putting in some sort of a disguised obviousness argument by combining
`references. We’re not doing any of that. . . . So we’re going to limit it to showing
`the damages aspect, the knowledge of a POSITA in general, and the other issues
`identified in our motion, secondary considerations, old modes under Georgia-
`Pacific Factor 9, and the other things at Page 9 of our responsive brief on this.
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`December 19, 2024, PTC Tr. at 77:10-78:10 (emphases added). Magistrate Judge Payne agreed
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`with Charter, and orally denied Touchstream’s MIL No. 3:
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`[T]he Defendant understands that they cannot use unelected prior art to show the
`jury that that art meets the limitations of the claims. And what they’re saying is
`they’re not offering it for that purpose. . . .
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`[T]hat showing [invalidity] should be limited to the elected prior art. And if you
`[Touchstream] are able to show that, in fact, the expert is making that argument
`based on unelected prior art, you should object. But I’m going to note what the
`general rule is and that the Defendant says they’re going to stand by it. But,
`otherwise, deny the request to limit the number of references that the expert can
`mention in discussing the state of the art.
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`2
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`December 19, 2024, PTC Tr. at 78:14-18, 79:14-22. Magistrate Judge Payne thereafter issued an
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`order on MIL No. 3: “This motion in limine is DENIED as overbroad. Defendants are bound by
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`their representations that they will not use unelected prior art to show the jury that the prior art
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`meets the limitations of a claim.” Dkt. 275 at 2 (emphasis in original).
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`Touchstream’s objections to Magistrate Judge Payne’s MIL Order were due by February
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`4, 2025, per Fed. R. Civ. P. 72(a), nearly a month after Charter notified Touchstream that it was
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`not presenting any prior art based invalidity defenses at trial on January 6, 2025. Ex. 2 (Charter’s
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`Disclosure of Final Invalidity Theories). But Touchstream only objected to Judge Payne’s rulings
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`on Charter’s MIL Nos. 1 and 2. Dkt. 247. Touchstream made no objection to the ruling on its
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`MIL No. 3, despite knowing that a “party may not assign as error a defect in the [magistrate judge]
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`order not timely objected to.” Fed. R. Civ. P. 72(a). Moreover, Touchstream did not even reach
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`out to Charter regarding removal of the unelected prior art references from the exhibit list until
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`February 4, 2025.
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`Simply put, Touchstream’s Motion requests exactly the same relief as their MIL No. 3, but
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`Touchstream blew its deadline to object to that ruling, and there has been no change in
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`circumstances that somehow justifies Touchstream’s improper renewed request for the same relief.
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`While Touchstream’s Motion for Leave states that “by the time Charter dropped its prior art
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`invalidity defenses, Touchstream’s deadline had already passed to object to Magistrate Judge
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`Payne’s order regarding Touchstream’s Motion in limine No. 3” (Dkt. 341 at 2), that is simply not
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`true. Charter informed Touchstream that it was not presenting prior art based invalidity on January
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`6, 2025 (Ex. 2 (Charter’s Disclosure of Final Invalidity Theories)), while Magistrate Judge Payne’s
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`written order on Touchstream’s MIL No. 3 was not filed until January 21, 2025 (Dkt. 275).
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`Touchstream’s Motion should be denied on this ground alone.
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`3
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`B.
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`The Prior Art Exhibits Are Relevant And Admissible To Issues Other
`Than Invalidity
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`It is black-letter law in this district that unelected prior art references are relevant and
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`admissible for issues other than invalidity.1 Indeed, Georgia-Pacific Factor 9 is “[t]he utility and
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`advantages of the patent property over the old modes or devices, if any, that had been used for
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`working out similar results.” Georgia-Pacific v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120
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`(S.D.N.Y. 1970).
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`One such example of using unelected prior art for damages purposes is §XVI of
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`Dr. Shamos’ Rebuttal Report, titled “Minimal Technical Value of the Asserted Claims.” Ex. 3
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`(Shamos Rebuttal Report), §XVI. In this section, Dr. Shamos begins by quoting Touchstream’s
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`expert’s explanation of the value proposition of the asserted patents, and thereafter explains why
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`he “disagree[s].” Id., ¶283. To this end, Dr. Shamos walks through the specific benefits that
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`Dr. Wicker opined on, and explains how, as one example, “[t]his problem was not solved by
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`Mr. Strober at least because it was already solved in the prior art, including in the purportedly
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`1 See, e.g., Ziilabs Inc. v. Samsung Elecs. Co., No. 2:14-CV-203-JRG-RSP, 2015 WL 7303352,
`at *2 (E.D. Tex. Aug. 25, 2015) (denying motion to strike prior art references from an expert report
`and allowing Defendants to rely on undisclosed references in the “context of: (1) background
`material relevant to the technology at issue; (2) state of the art; and (3) establishing what one of
`skill in the art would have known at the time of the invention.”); CXT Sys., Inc. v. Acad., Ltd., No.
`2:18-CV-00171-RWS-RSP, 2020 WL 13996112, at *2 (E.D. Tex. Jan. 22, 2020) (“With respect
`to argument regarding the ‘HTTP Protocol,’ the Court will not strike any portion of the JCP’s
`expert report, but JCP is limited to using the ‘HTTP Protocol’ as a state of the art reference at
`trial.”); Papst Licensing GmbH & Co. v. Samsung Elecs. Co., No. 6:18-CV-00388-RWS, 2018
`WL 10126729, at *1 (E.D. Tex. Oct. 25, 2018) (permitting “unelected prior art” to provide
`“background information relevant to the [asserted] patent, the state of the art, or establishing what
`one skilled in the art would have known at the time of the invention”); Allergan, Inc. v. Teva
`Pharms. USA, Inc., No. 2:15-CV-1455-WCB, 2017 WL 11807449, at *4 (E.D. Tex. Aug. 3, 2017)
`(“[C]ourts in the Eastern District have permitted defendants to rely on references that were not
`included in their invalidity contentions when the references were not proposed as invalidating prior
`art, but were directed to other purposes, such as showing the state of the art at the time of the
`invention or rebutting the patentee’s secondary consideration evidence.”).
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`beneficial way that Mr. Strober claims to have solved it. See, e.g., Muthukumarasamy [an
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`unelected invalidity reference] . . . .” Id., ¶285. Dr. Shamos then includes a chart with one column
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`citing each “Purported Benefit” that Dr. Wicker opined on, such as “the ability to move content
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`from a personal device to another screen quickly and easily,” and a second column explaining that
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`“[t]his was not invented by Mr. Strober as this was disclosed by at least 29 separate references
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`detailed in My Invalidity Report. See [prior art references].” Id., ¶287.
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`These are damages opinions that go to Georgia-Pacific Factor 9; they are not invalidity
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`opinions, as Touchstream wrongly asserts. Indeed “the ability to move content from a personal
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`device to another screen quickly and easily,” is not a claim limitation, but is instead one of the
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`alleged “many benefits of Mr. Strober’s invention,” which Touchstream offered for purposes of
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`damages. Ex. 4 (Wicker Opening Report, ¶¶71-72). The same is true for the other purported
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`“benefits” that Dr. Wicker offered (id.) and Dr. Shamos rebutted (Ex. 3, §XVI), they are not claim
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`limitations accompanied by invalidity opinions, but analyses of the “advantages of the patent
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`property over the old modes or devices” (Georgia-Pacific, 318 F. Supp. at 1120). Indeed,
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`Charter’s damages expert, Mr. Bakewell, cites Dr. Shamos in his Georgia-Pacific Factor 9
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`analysis. Dkt. 342-8, ¶270.
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`Notably, Touchstream did not Daubert or move to strike any of these opinions from
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`Dr. Shamos and Mr. Bakewell. Touchstream should not be permitted to end-run the scheduling
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`order through an untimely motion to strike the exhibits underlying these damages opinions.
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`Apart from Georgia-Pacific Factor 9, there are numerous other permissible uses for
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`unelected prior art references, which was discussed at length the first time Touchstream tried to
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`exclude these references. See generally, Dkt. 201 at 7-9. The fact that Charter is no longer
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`presenting a prior art invalidity case does not change the analysis of these exhibits’ relevance and
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`admissibility at trial for other purposes.
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`Finally, Touchstream’s cases are all inapposite because the Court permitted the defendant
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`to use unelected prior art for purposes other than invalidity in each of these cases.2
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`III. Conclusion
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`For the foregoing reasons, Touchstream’s Motion to Strike should be denied.
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`Dated: February 24, 2025
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`Respectfully submitted,
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`/s/ Daniel L. Reisner
`Daniel L. Reisner, pro hac vice
`David Benyacar, pro hac vice
`Melissa Brown, pro hac vice
`Robert Stout, pro hac vice
`ARNOLD & PORTER KAYE SCHOLER LLP
`250 West 55th Street
`New York, NY 10019
`Phone: (212) 836-8000
`Email: daniel.reisner@arnoldporter.com
`Email: david.benyacar@arnoldporter.com
`Email: melissa.brown@arnoldporter.com
`Email: robert.stout@arnoldporter.com
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`Dina M. Hayes, pro hac vice
`ARNOLD & PORTER KAYE SCHOLER LLP
`70 West Madison Street, Suite 4200
`Chicago, IL 60602
`Phone: (312) 583-2300
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`2 See Maxell, Ltd. v. Apple Inc., No. 5:19-CV-00036-RWS, 2021 WL 3021253, at *5 (E.D. Tex.
`Feb. 26, 2021) (“Neither the Court’s Focusing Order (Docket No. 602) nor its order narrowing the
`case (Docket No. 619) prohibits Apple’s use of prior art references to show the state of the art.”);
`Dkt. 342-9 (Arthex, Inc. v. Smith & Nephew, Inc., No. 2:15-cv-01047-RSP (E.D. Tex, Nov. 30,
`2016) (Dkt. 281)) at 2 (“Smith & Nephew is otherwise not precluded from relying on unelected
`prior art . . . .”); Dkt. 342-10 (Hardin v. Samsung Elecs. Co., No. 2:21-cv-00290-JRG (E.D. Tex.
`Jul 30, 2021) (Dkt. 225)) at 98 (similar); Dkt. 342-11 (Mojo Mobility Inc. v. Samsung Elecs. Co.,
`No. 2:22-cv-00398-JRG-RSP (E.D. Tex. Jul. 24, 2024) (Dkt. 251)) at 8-9 (similar).
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`Email: dina.hayes@arnoldporter.com
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`Marc A. Cohn, pro hac vice
`Stanton Jones, pro hac vice
`Natalie Steiert, pro hac vice
`ARNOLD & PORTER KAYE SCHOLER LLP
`601 Massachusetts Avenue, NW
`Washington, DC 20001
`Phone: (202) 942-5000
`Email: marc.cohn@arnoldporter.com
`Email: stanton.jones@arnoldporter.com
`Email: natalie.steiert@arnoldporter.com
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`Carson D. Anderson, pro hac vice
`ARNOLD & PORTER KAYE SCHOLER LLP
`3000 El Camino Real, Suite 500
`Palo Alto, CA 94306
`Phone: (650) 319-4500
`Email: carson.anderson@arnoldporter.com
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`Deron R. Dacus
`State Bar No. 00790553
`THE DACUS FIRM, P.C.
`821 ESE Loop 323, Suite 430
`Tyler, TX 75701
`Phone: (903) 705-1117
`Fax: (903) 581-2543
`Email: ddacus@dacusfirm.com
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`Attorneys for Defendants Charter Communications,
`Inc., Charter Communications Operating, LLC,
`Spectrum Management Holding Company, LLC,
`Time Warner Cable Enterprises, LLC, Spectrum
`Gulf Coast, LLC, Charter Communications, LLC
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`Case 2:23-cv-00059-JRG-RSP Document 363 Filed 02/28/25 Page 9 of 9 PageID #:
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`CERTIFICATE OF SERVICE
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`The undersigned counsel certifies that the foregoing document and all attachments thereto
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`are being filed electronically in compliance with Local Rule CV-5(a). As such, this document is
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`being served February 24, 2025, on all counsel of record, each of whom is deemed to have
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`consented to electronic service. L.R. CV-5(a)(3)(A).
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`/s/ Daniel L. Reisner
`Daniel L. Reisner
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7(h), the undersigned counsel hereby certifies that counsel for
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`the parties met and conferred by telephone on February 21, 2025, and February 24, 2025, and
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`Defendants stated that they oppose Touchstream’s motion to strike. Charter offered a compromise
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`position of agreeing to drop the prior art exhibits subject to this motion, with the exception of
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`JTX020, JTX021, JTX022, and JTX026, and Touchstream rejected this offer via email on
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`February 24, 2025 (Ex. 1 at 1).
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`/s/ Daniel L. Reisner
`Daniel L. Reisner
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