Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 1 of 30 PageID #:
`15114
`
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`
`
`Plaintiff,
`
`v.
`
`CHARTER COMMUNICATIONS, INC., et al.,
`
`
`Defendants.
`
`Case No. 2:23-cv-00059-JRG
`
`
`
`
`
`
`CHARTER’S RULE 50(a) MOTION FOR JUDGMENT AS A MATTER OF LAW
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 2 of 30 PageID #:
`15115
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`I.
`II.
`III.
`
`2.
`
`INTRODUCTION .............................................................................................................. 1
`LEGAL STANDARD ......................................................................................................... 1
`TOUCHSTREAM HAS FAILED TO INTRODUCE EVIDENCE SUFFICIENT TO
`SUPPORT A FINDING OF INFRINGEMENT................................................................. 1
`A. Touchstream Has Not Introduced Evidence Sufficient To Support A Finding
`Of Infringement By The Spectrum Guide Or iGuide Set-Top Boxes .................... 2
`The Evidence Does Not Show That The Spectrum Guide STBs “Control”
`1.
`Playback Of Media Using Multiple Media Players .................................... 3
`The Evidence Does Not Show That the Spectrum Guide Or iGuide STBs
`Run “Software For Playing Media” ............................................................ 5
`B. Touchstream Has Not Introduced Evidence Sufficient To Prove Direct
`Infringement Of The Asserted Method Claims By Any Of The Three Set-
`Top Boxes ............................................................................................................... 6
`1.
`The ’251 Patent ........................................................................................... 7
`2.
`The ’751 Patent ........................................................................................... 9
`3.
`The ’934 Patent ......................................................................................... 11
`C. Touchstream Did Not Introduce Any Evidence Of Infringement For
`Numerous Limitations Of The ’751 And ’251 Patents ......................................... 12
`CHARTER IS ENTITLED TO JUDGMENT AS A MATTER OF LAW ON THE ISSUE
`OF WILLFUL INFRINGEMENT .................................................................................... 13
`TOUCHSTREAM HAS FAILED TO INTRODUCE EVIDENCE SUFFICIENT TO
`PROVE DAMAGES ......................................................................................................... 18
`A. Touchstream Did Not Present Any Damages Model Based On Products
`Actually Used To Perform The Accused Functionality or Any
`Approximation of Infringing Use ......................................................................... 19
`B. Touchstream’s Evidence Is Insufficient To Show Royalty Rate
`Apportionment ...................................................................................................... 22
`C. Touchstream’s Evidence Is Insufficient To Demonstrate That The Quadriga
`Agreement Is Comparable .................................................................................... 23
`D. Touchstream’s Evidence Is Insufficient To Rebut Charter’s Available And
`Commercially Acceptable Non-Infringing Alternative ........................................ 24
`CHARTER IS ENTITLED TO JUDGMENT AS A MATTER OF LAW OF
`INVALIDITY UNDER 35 U.S.C. §112 ........................................................................... 24
`A. Non-Internet Content ................................................ Error! Bookmark not defined.
`VII. CONCLUSION ................................................................................................................. 26
`
`
`IV.
`
`V.
`
`VI.
`
`ii
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 3 of 30 PageID #:
`15116
`
`
`
`I.
`
`INTRODUCTION
`
`The Charter Defendants (“Charter”) respectfully move under Federal Rule of Civil
`
`Procedure 50(a) for judgment as a matter of law that:
`
`1.
`Charter does not directly infringe any of the asserted claims of the ’251, ’751, or
`’934 patents;
`
`2.
`Charter did not willfully infringe any of the asserted claims of the ’251, ’751, or
`’934 patents;
`
`3.
`
`Touchstream is not entitled to damages; and
`
`4.
`The asserted claims of the ’251, ’751, and ’934 patents are invalid under
`35 U.S.C. § 112 for lack of written description.
`
`II.
`
`LEGAL STANDARD
`
`Judgment as a matter of law is appropriate where “a party has been fully heard on an issue
`
`during a jury trial and the court finds that a reasonable jury would not have a legally sufficient
`
`evidentiary basis to find for the party on that issue.” Fed. R. Civ. P. 50(a); see also CBE Grp., Inc.
`
`v. Lexington Law Firm, 993 F.3d 346, 349-50 (5th Cir. 2021) (affirming grant of JMOL in favor
`
`of the defendant). To defeat a Rule 50(a) motion, “[t]he non-moving party must identify
`
`‘substantial evidence’ to support its positions. . . . ‘Substantial evidence is more than a mere
`
`scintilla. It means such relevant evidence as a reasonable mind might accept as adequate to support
`
`a conclusion.’” Finesse Wireless LLC v. AT&T Mobility LLC, 689 F. Supp. 3d 332, 338 (E.D. Tex.
`
`Aug. 30, 2023) (quoting Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1363 (Fed. Cir. 2004)).
`
`III. TOUCHSTREAM HAS FAILED TO INTRODUCE EVIDENCE SUFFICIENT TO
`SUPPORT A FINDING OF INFRINGEMENT
`
`“The patentee bears the burden of proving infringement by a preponderance of the
`
`evidence.” Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991). Touchstream
`
`1
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 4 of 30 PageID #:
`15117
`
`
`
`has not offered evidence sufficient to show that Charter infringed the asserted claims of the
`
`asserted patents, directly or willfully.1
`
`“Literal infringement of a claim exists when every limitation recited in the claim is found
`
`in the accused device, i.e., when the properly construed claim reads on the accused device exactly.”
`
`Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1405 (Fed. Cir. 1996); see also Warner-
`
`Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997) (discussing the “all-elements”
`
`rule). This means that “the failure to meet a single limitation is sufficient to negate infringement
`
`of the claim.” Laitram Corp., 939 F.2d at 1535. To prove direct infringement, Touchstream must
`
`prove that Charter used an infringing method. 35 U.S.C. § 271(a).
`
`As detailed below, Touchstream failed to introduce evidence sufficient to support a finding
`
`of infringement of any of the Asserted Patents with respect to any of the three Charter set-top box
`
`(“STBs”) guides.
`
`A.
`
`Touchstream Has Not Introduced Evidence Sufficient To Support A Finding
`Of Infringement By The Spectrum Guide Or iGuide Set-Top Boxes
`
`Touchstream alleges that Charter STBs running three different “guides” infringe: the
`
`ODN/MDN Guide, Spectrum Guide, and iGuide. Dkt. 214 (Joint Pretrial Order) at 4.
`
`Touchstream has not introduced evidence sufficient to prove that the Spectrum Guide or iGuide
`
`infringe any of the Asserted Patents.
`
`For Spectrum Guide STBs, the evidence does not show that they can control the playback
`
`of media using multiple media players. And for both Spectrum Guide and iGuide STBs, the
`
`evidence does not show that they run “software for playing media.”
`
`
`1 Touchstream has not asserted infringement under the doctrine of equivalents.
`
`2
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 5 of 30 PageID #:
`15118
`
`
`
`1.
`
`The Evidence Does Not Show That The Spectrum Guide STBs
`“Control” Playback Of Media Using Multiple Media Players
`
`Every asserted independent claim requires “controlling” playback of media on multiple,
`
`i.e. more than one, media players. 3/4/25 Tr. (Wicker) at 550:2-4; see ’251 Patent Claim 1
`
`(“controlling playing of the video content on the display device by the particular media player”);
`
`’751 Patent Claim 12 (“controlling, by the content presentation device, how the selected first media
`
`player application plays…”); ’934 Patent Claim 17 (“controlling, by the media receiver, how the
`
`selected first type of media playing application plays…”).
`
`The alleged multiple media players that Touchstream accuses for every STB guide type are
`
`“Linear” (traditional broadcast TV), “VOD” (video on demand), and “DVR” (digital video
`
`recorder). 3/4/25 Tr. (Wicker) at 478:6-19. But, Touchstream did not introduce sufficient
`
`evidence to support a finding that the accused Send-to-TV feature can “control” the playback of
`
`media for “VOD” or “DVR” on Spectrum Guide STBs. And “the failure to meet a single limitation
`
`is sufficient to negate infringement of the claim.” Laitram Corp., 939 F.2d at 1535.
`
`For VOD, Touchstream’s expert, Dr. Wicker, admitted that he had never tested a Spectrum
`
`Guide STB, and Touchstream did not otherwise present any evidence that the accused Send-to-TV
`
`feature can “control” the playback of media on Spectrum Guide STBs. 3/4/25 Tr. (Wicker) at
`
`552:24-553:15. Instead, Dr. Wicker admitted that he simply assumed that the Spectrum Guide
`
`STBs function similarly to the ODN Guide STB that he did test, and he “assumed” that the other
`
`STB guide types worked the same way. 3/4/25 Tr. (Wicker) at 581:4-23. Indeed, Dr. Wicker did
`
`not attempt to test the Spectrum Guide STB even after learning that Charter’s expert, Dr. Shamos,
`
`had tested a Spectrum Guide STB and reached the opposite conclusion. 3/4/25 Tr. (Wicker) at
`
`583:5-585:12. Dr. Wicker admitted that he chose not to test the Spectrum Guide STB even though
`
`doing so would only have taken him about 20 minutes. Id.
`
`3
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 6 of 30 PageID #:
`15119
`
`
`
`Infringement cannot be “assumed”—it must be proved with evidence. Dr. Wicker’s ipse
`
`dixit assumptions are not “more than a mere scintilla” of evidence. Finesse Wireless, 689 F. Supp.
`
`at 338.
`
`By contrast, Mr. David Bell, former Chief Architect at Time Warner Cable and Charter,
`
`testified that the accused Send-to-TV feature cannot control the playback of VOD media on
`
`Spectrum Guide STBs. 3/5/25 Tr. (Bell) at 746:22-747:19. Instead, if a user selects “watch-on-
`
`tv” for a VOD title on a Spectrum Guide STB, a VOD info screen appears on the television, and
`
`the user must pick up the “silver remote” that came with their Spectrum Guide STB and press the
`
`“OK” button to start playback of the title. Id. Charter’s expert, Dr. Shamos, confirmed that this
`
`is what happened when he tested a Spectrum Guide STB. 3/4/25 Tr. (Wicker) at 556:19-23; 3/5/25
`
`Tr. (Shamos) at 937:16-938:23. Critically, Dr. Wicker admitted that using a “silver remote” to
`
`start playback, instead of starting playback directly from the accused Send-to-TV feature, cannot
`
`infringe any asserted claim.
`
`Accordingly, Touchstream has not presented sufficient evidence that the Spectrum Guide
`
`STBs infringe when the accused Send-to-TV feature is used for VOD, and the affirmative evidence
`
`that Charter presented proves it cannot infringe.
`
`For DVR, Touchstream likewise failed to present sufficient evidence that DVR can be
`
`controlled by the accused Send-to-TV feature on Spectrum Guide STBs. Again, Dr. Wicker
`
`simply assumed this because the ODN Guide STB that he tested had this capability and he assumed
`
`that the Spectrum Guide STB works similarly. 3/4/25 Tr. (Wicker) at 554:23-555:25.
`
`By contrast, Mr. Frusciano explained that when Spectrum Guide STBs are equipped with
`
`DVRs, they cannot be used with the accused Send-to-TV feature. 3/5/25 Tr. (Frusciano) at
`
`815:14-18. Dr. Shamos likewise confirmed that there was no option for DVR when he tested the
`
`4
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 7 of 30 PageID #:
`15120
`
`
`
`accused Send-to-TV feature with a Spectrum Guide STB. 3/4/25 Tr. (Wicker) at 555:21-23; 3/5/25
`
`Tr. (Shamos) at 939:11-16. Dr. Wicker did not test the Spectrum Guide STB.
`
`Accordingly, Touchstream did not introduce sufficient evidence that the accused Send-to-
`
`TV feature can be used to control the playback of media from a DVR on Spectrum Guide STBs.
`
`*
`
`*
`
`*
`
`*
`
`*
`
`Thus, Touchstream has not introduced evidence that the accused Send-to-TV feature can
`
`be used to “control” the playback of media for VOD or DVR for the Spectrum Guide STBs. At
`
`best, Touchstream only attempted to introduce evidence for Spectrum Guide with respect to the
`
`“Linear” media player (although they failed in that proof as well, as explained below). While
`
`every asserted claim requires controlling the playback of media on multiple media players,
`
`Touchstream only introduced evidence for one media player for Spectrum Guide STBs, and has
`
`not carried its burden of proof on infringement as a matter of law.
`
`2.
`
`The Evidence Does Not Show That the Spectrum Guide Or iGuide
`STBs Run “Software For Playing Media”
`
`Every asserted
`
`independent claim
`
`requires “media player[s],” “media player
`
`application[s],” or “media playing application[s].” See ’251 Patent Claim 1 (“media player”); ’751
`
`Patent Claim 12 (“media player application”); ’934 Patent Claim 17 (“media playing application”).
`
`The Court construed this term as “software for playing media.” Dkt. 74 at 9. Touchstream did not
`
`present sufficient evidence that the Spectrum Guide and iGuide STBs include “software for
`
`playing media.”
`
`Dr. Wicker looked at the source code for the ODN/MDN STBs and concluded that the
`
`“software for playing media” consists of three files in that source code—namely TVPlayer.java,
`
`VODPlayer.java, and DVRPlayer.java. 3/4/25 Tr. (Wicker) at 513:22-514:13. But Dr. Wicker
`
`admitted that ODN/MDN, Spectrum Guide, and iGuide all run different software and have
`
`5
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 8 of 30 PageID #:
`15121
`
`
`
`different capabilities. 3/4/25 Tr. (Wicker) at 551:1-11. Despite every independent claim including
`
`a limitation that requires “software for playing media,” Dr. Wicker admitted that he only looked
`
`at the software source code for the ODN/MDN set-top-boxes, and did not look at any source code
`
`for the Spectrum Guide or iGuide STBs, nor did he test them. 3/4/25 Tr. (Wicker) at 552:34-
`
`554:4, 555:8-16. Spectrum Guide STBs alone account for over 30% of Charter’s deployed set-top
`
`boxes that include the accused Send-to-TV functionality. 3/4/25 Tr. (Wicker) at 553:2-4. Because
`
`Dr. Wicker only reviewed source code for the ODN/MDN set-top boxes, the only alleged
`
`“software for playing media” that he provided to the jury was for the ODN/MDN set-top boxes.
`
`3/4/25 Tr. (Wicker) at 555:8-16, 587:25-588:5 (“Q. And you weren’t able to analyze those
`
`documents and identify specific media players by source code, the way you did for ODN/MDN,
`
`with respect to the other boxes—Spectrum Guide and iGuide. A. I did not identify specific media
`
`players for the other two guides. That’s correct. Q. Because you didn’t look at the code. A.
`
`That’s correct.”). Thus, Touchstream did not submit sufficient evidence to the jury regarding
`
`“software for playing media” for the Spectrum Guide or iGuide STBs.
`
`Because Touchstream did not present sufficient evidence of the “software for playing
`
`media” construction of the “media player,” “media player application,” or “media playing
`
`application” claim limitations for the Spectrum Guide or iGuide STBs, and Charter is entitled to
`
`judgement as a matter of law of noninfringement with respect to those limitations.
`
`B.
`
`Touchstream Has Not Introduced Evidence Sufficient To Prove Direct
`Infringement Of The Asserted Method Claims By Any Of The Three Set-Top
`Boxes
`
`Separate and apart from Touchstream’s failure of proof on the Spectrum Guide and iGuide
`
`STBs, Touchstream has failed to introduce evidence sufficient to support a finding of infringement
`
`for any of the accused STB guide types.
`
`6
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 9 of 30 PageID #:
`15122
`
`
`
`1.
`
`The ’251 Patent
`a.
`
`No “Assigning, By A Server System, A Synchronization Code
`To The Display Device”
`
`The asserted claims of the ’251 Patent require “assigning, by a server system, a
`
`synchronization code to the display device.” ’251 Patent, Claim 1. Touchstream accuses the STB
`
`as the “display device,” and each STB’s “MAC address” as the “synchronization code.” 3/4/25
`
`Tr. (Wicker) at 495:11-20, 496:8-15. Thus, infringement of this method claim per Touchstream’s
`
`infringement read requires the Charter server system to “assign” a MAC address to an STB.
`
`Touchstream has failed to introduce evidence of this.
`
`It is undisputed that MAC addresses are stamped onto each STB when they are
`
`manufactured by a third party. 3/4/25 Tr. (Wicker) at 557:8-24; 3/5/25 Tr. (Shamos) at 942:3-21.
`
`Thus, Charter’s servers never “assign” MAC addresses to STBs—they already had MAC addresses
`
`assigned to them by their manufacturer, not Charter. Charter did not perform any step in the STB
`
`getting its MAC address, let alone it being a Charter server system that assigned each STB its
`
`MAC address. Charter is entitled to judgment as a matter of law because Touchstream failed to
`
`show that Charter’s servers “assign” MAC addresses to STBs.
`
`b.
`
`No “Media Players”
`
`The asserted claims of the ’251 Patent require “media players,” which the Court construed
`
`as “software for playing media.” ’251 Patent, Claim 1; Dkt. 74 at 9. It is undisputed, however,
`
`that the accused STBs do not use any “software for playing media,” they use hardware to play
`
`media.
`
`Dr. Wicker readily admitted that on the accused STBs all media is decoded and rendered
`
`(i.e. played) to the viewer by a piece of hardware, a chip, “not in software.” 3/4/25 Tr. (Wicker)
`
`7
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 10 of 30 PageID
`#: 15123
`
`
`
`at 558:6-559:9. Thus, the media that comes through the cable service to be played on the
`
`customer’s television is played by hardware.
`
`Touchstream alleges that three pieces of software that run on the STB are the “software for
`
`playing media,” specifically TVPlayer.java, VODPlayer.java, and DVRPlayer.java. 3/4/25 Tr.
`
`(Wicker) at 555:1-12.2 But as Dr. Shamos explained, no media travels through these files, they do
`
`not decode or otherwise process video or audio, and they do not send video to the display. 3/5/25
`
`Tr. (Shamos) at 951:21-953:10. Simply put, these files do not play media. All Dr. Wicker could
`
`say about these files was that they “control” the hardware that does the decoding, but it actually
`
`the hardware that does the decoding. 3/4/25 Tr. (Wicker) at 558:24-559:6. That is not “software
`
`for playing media,” per the Court’s construction. For instance, the manage at a restaurant may
`
`control the dishwashers by telling them to wash the dishes, but only the person who washes the
`
`dishes could be said to be the dishwasher. On this record no reasonable jury could find that the
`
`accused STBs meet the “media player” limitation, and Charter is entitled to judgment as a matter
`
`of law.
`
`c.
`
` No “Universal Playback Control Commands”
`
`The asserted claims of the ’251 Patent require at least one “universal playback control
`
`command.” ’251 Patent, Claim 1.
`
`Touchstream alleges that the HTTP post commands that are sent by the accused Send-to-
`
`TV feature to the Charter servers include “universal playback control commands” in the form of
`
`“flick” and “play.” 3/4/25 Tr. (Wicker) at 561:9-12. These three formats for the accused HTTP
`
`
`2 As explained above, Touchstream only identified alleged “software for playing media” for the
`ODN/MDN STBs, and did not identify any corresponding source code files for the Spectrum
`Guide or iGuide STBs.
`
`8
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 11 of 30 PageID
`#: 15124
`
`
`
`post commands are shown below, the alleged “universal playback control command” in
`
`bold/underlined (see id. (citing JTX005 at 1):
`
`Linear
`VOD
`DVR
`
`POST /ipvs/api/smartty/flick/channel/{{channetNumber}}/mac/{{deviceMac}}
`POST /ipvs/api/smartty/flick/vod/{{providerAssetld}}/mac/{{deviceMac}}
`POST /nrs/api/rdvr2/dvr/{{deviceMac}}/recorded/play/{{mystroServiceld}}/
`{{tmsProgramld}}/{{startTimeEpoch}}
`
`Ignoring whether or not these commands are actually “playback control commands,” at a
`
`
`
`minimum they cannot be “universal” commands because the same command doesn’t work for all
`
`three of Charter’s alleged media players (linear, VOD, and DVR). While “flick” is the alleged
`
`playback control command for linear and VOD, the alleged playback control command for DVR
`
`is “play.” Indeed, Dr. Wicker conceded that the same command would not work for all three media
`
`players. 3/4/25 Tr. (Wicker) at 561:9-563:12 (“Q. DVR uses a differen[t] universal command.
`
`A. That is right. It uses play. Q. They’re all doing the same thing; they’re all doing play, but
`
`they’re different universal commands. A. They are two different ones, yes.”). These commands
`
`aren’t “universal,” they are specific—the opposite of universal. No reasonable jury could find that
`
`Charter infringes the “universal playback control command” limitations, and Charter is entitled to
`
`judgment as a matter of law.
`
`2.
`
`The ’751 Patent
`a.
`
`No “Obtaining, By A Content Presentation Device, A
`Synchronization Code Associated With The Content
`Presentation Device”
`
`Similar to the “assigning” step of the ’251 Patent, discussed above, the asserted claims of
`
`the ’751 Patent require the “content presentation device” to “obtain” a “synchronization code.”
`
`’751 Patent, Claim 12. Touchstream accuses the STB as the “content presentation device,” and
`
`the STB’s “MAC address” as the “synchronization code.” 3/4/25 Tr. (Wicker) at 495:2-10, 496:8-
`
`15. As explained above, the undisputed evidence at trial was that MAC addresses are stamped
`
`9
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 12 of 30 PageID
`#: 15125
`
`
`
`onto each STB when they are manufactured by a third party. Supra, §III.B.1.a; 3/4/25 Tr. (Wicker)
`
`at 557:8-24.. Thus, to the extent that an STB can be said to have “obtained” a MAC address, that
`
`happened by the hand of a third party manufacturer when the STB was first built. Because this
`
`step of the asserted method claim wasn’t performed by Charter, there can be no infringement, and
`
`Charter is entitled to judgment as a matter of law.
`
`b.
`
`No “Providing, By The Content Presentation Device, The
`Synchronization Code To A Remote Computing Device In
`Communication With The Remote Server Device”
`
`Per Touchstream’s infringement allegations, the asserted claims of the ’751 Patent require
`
`the “content presentation device” (STB) to “provide” a “synchronization code” (MAC address) to
`
`a “remote computing device in communication with the remote server device” (mobile device).
`
`’751 Patent, Claim 12. In other words, the STB must provide its MAC address to the mobile
`
`device. Dr. Wicker confirmed that this does not happen because the STB only communicates with
`
`Charter’s servers, not the mobile device. 3/4/25 Tr. (Wicker) at 497:20-22. And, the STB never
`
`tells the servers to communicate with the mobile device, let alone to provide the mobile device
`
`with its MAC address. 3/5/25 Tr. (Shamos) at 962:11-964:18. In sum, Touchstream did not
`
`introduce any evidence that the STB “provides” its MAC address to the mobile device, and Charter
`
`is entitled to judgment as a matter of law.
`
`c.
`
`No “media player applications”
`
`The asserted claims of the ’751 Patent require “media player applications,” which is
`
`analogous to the “media player” in Claim 1 of the ’251 Patent, and was also construed as “software
`
`for playing media.” ’751 Patent, Claim 12; Dkt. 74 at 9. For the same reasons discussed above,
`
`judgment as a matter of law should be granted in Charter’s favor because the accused STBs use
`
`hardware for playing media, not software. Supra, §III.B.1.b.
`
`10
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 13 of 30 PageID
`#: 15126
`
`
`
`3.
`
`The ’934 Patent
`a.
`
`No “Providing, By A Media Receiver, A Unique Identifier Of
`The Unique Identifier To A Computing Device In
`Communication With A Server System”
`
`Per Touchstream’s infringement allegations, the asserted claims of the ’934 Patent require
`
`the “media receiver” (STB) to “provide” a “unique identifier” (MAC address) to a “computing
`
`device in communication with a server system” (mobile device). ’934 Patent, Claim 17. This step
`
`is analogous to the “providing” step discussed above with respect to the ’751 Patent. Supra,
`
`§III.B.2.b. For the same reasons discussed above, judgment as a matter of law should be granted
`
`in Charter’s favor because the accused STBs never provide their MAC address to the mobile
`
`device. Supra, §III.B.2.b.
`
`b.
`
`No “Media Playing Applications”
`
`The asserted claims of the ’934 Patent require “media playing applications,” which is
`
`analogous to the “media player” in Claim 1 of the ’251 Patent and the “media player applications
`
`in Claim 12 of the ’751 Patent, and was also construed as “software for playing media.” ’934
`
`Patent, Claim 17; Dkt. 74 at 9. For the same reasons discussed above, judgment as a matter of law
`
`should be granted in Charter’s favor because the accused STBs use hardware for playing media,
`
`not software. Supra, §III.B.1.b.
`
`c.
`
`No Commands In A “Universal Format”
`
`The asserted claims of the ’934 Patent require commands in a “universal format,” which is
`
`analogous to the “universal playback control commands” in Claim 1 of the ’251 Patent. ’934
`
`Patent, Claim 17. For the same reasons discussed above, judgment as a matter of law should be
`
`granted in Charter’s favor because the commands that Touchstream accuses are not in a “universal
`
`format,” but are instead in a specific format depending on what type of media they are associated
`
`with. Supra, §III.B.1.c.
`
`11
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 14 of 30 PageID
`#: 15127
`
`
`
`C.
`
`Touchstream Did Not Introduce Any Evidence Of Infringement For
`Numerous Limitations Of The ’751 And ’251 Patents
`
`For numerous limitations of the ’751 and ’251 Patents, Touchstream did not introduce any
`
`evidence—or even analysis—to prove infringement.
`
`To demonstrate, Dr. Wicker walked through his infringement analysis on a claim-by-claim
`
`basis for claim 17 of the ’934 Patent. Then, rather than doing the same for claim 12 of the ’751
`
`Patent, Dr. Wicker simply told the jury that 7 out of its 10 limitations were “equivalent” to
`
`limitations in claim 17 of the ’934 Patent, and provided no further analysis on them, and didn’t
`
`even explain why those limitations were equivalent. 3/4/25 Tr. (Wicker) at 530:9-531:7
`
`(discussing slide 86 (shown below)).
`
`Dr. Wicker did the same sort of analysis with respect to Claim 1 of the ’251 Patent, telling
`
`the jury that 6 out of its 8 limitations were “equivalent” to limitations in either the ’934 Patent or
`
`the ’751 Patent. 3/4/25 Tr. (Wicker) at 536:2-10 (discussing slide 100 (shown below)).
`
`Wicker Slide 86
`
`Wicker Slide 100
`
`
`
`The problem with Dr. Wicker’s “equivalent” presentation of evidence is that the limitations
`
`he calls equivalent are not literal equivalents. As one example, Wicker said that Claim 12.d of the
`
`’751 Patent is equivalent to Claim 17.c of the ’934 Patent. 3/4/25 Tr. (Wicker) at 530:9-531:7
`
`(discussing slide 86). Putting these limitations side by side, however, shows that ’751 Patent Claim
`
`12.d contains a requirement not in Claim 17.c, specifically that “a connection is maintained”
`
`between the components, and Dr. Wicker presented no evidence on this.
`
`12
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 15 of 30 PageID
`#: 15128
`
`
`
`’751 Claim 12.d
`’934 Claim 17.c
`selecting, by the content presentation device
`in response to receiving the set of messages,
`selecting, by the media receiver, the first type
`while a connection between the content
`of media playing application from the plurality
`presentation device and the remote server
`of media playing application types based at
`device is maintained, a first media player
`least in part on its association with the piece of
`application from a plurality of media player
`content referenced in the received set of
`applications based at least in part on the first
`messages; and
`format of the first message,
`Touchstream’s corner cutting is fatal to its infringement case for the ’751 and ’251
`
`Patents because it did not introduce evidence on infringement of numerous claim limitations
`
`from both of these patents.
`
`IV. CHARTER IS ENTITLED TO JUDGMENT AS A MATTER OF LAW ON THE
`ISSUE OF WILLFUL INFRINGEMENT
`
`Even if the evidence could support a finding of infringement (it cannot), Touchstream
`
`failed to introduce evidence sufficient to support a finding that Charter willfully infringed.
`
`To prove willful infringement, Touchstream must prove by a preponderance of the
`
`evidence that Charter “had a specific intent to infringe at the time of the challenged conduct.”
`
`Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 987 (Fed. Cir. 2021). “Willfulness is a matter
`
`of culpability and state of mind, and the degree of culpability required has been described as
`
`‘willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or . . .
`
`characteristic of a pirate.’” Fractus, S.A. v. TCL Corp., No. 2:20-cv-00097-JRG, 2021 WL
`
`2483155, at *4 (E.D. Tex. June 2, 2021) (quoting Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct.
`
`1923, 1932 (2016)).
`
`Key here, “[k]nowledge of the asserted patent and evidence of infringement is necessary,
`
`but not sufficient, for a finding of willfulness. Rather, willfulness requires deliberate or intentional
`
`infringement.” Bayer, 989 F.3d at 988 (citing Eko Brands, LLC v. Adrian Rivera Maynez Enters.,
`
`Inc., 946 F.3d 1367, 1378 (Fed. Cir. 2020)). When determining willfulness, “[c]ourts look to the
`
`totality of the circumstances[.]” Stoller Enterprises, Inc. v. Fine Agrochemicals Ltd., 705 F. Supp.
`
`13
`
`
`
`

`

`Case 2:23-cv-00059-JRG-RSP Document 372 Filed 03/06/25 Page 16 of 30 PageID
`#: 15129
`
`
`
`3d 774, 791 (S.D. Tex. 2023). “Relevant factors to a willfulness determination . . . include ‘whether
`
`the infringer, once on notice of the patented invention, investigated the scope of the patent to form
`
`a good-faith belief that it was invalid or not infringed.’” Id. at 792 (quoting In re Hayes
`
`Microcomputer Prods. Inc. Pat. Litig., 982 F.2d 1527, 1543 (Fed. Cir. 1992)).
`
`Here, the evidence cannot support a finding that Charter had the requisite notice or intent
`
`to willfully infringe the asserted patents. Touchstream’s sole theory of willfulness is that, before
`
`launching the accused Send-to-TV feature in 2016, Charter initially knew about Touchstream’s
`
`patent-pending technology and later learned that Touchstream had obtained patents. No reasonable
`
`jury could find that Charter infringed willfully on this basis, particularly in light of the
`
`overwhelming evidence that Charter developed and implemented the Send-to-TV feature years
`
`earlier (even before Touchstream filed its initial patent application) and that Charter has always
`
`had a good faith belief that the Send-to-TV feature does not infringe Touchstream’s patents.
`
`First, Touchstream relies on evidence demonstrating that, at most, Touchstream told
`
`Charter that its technology was “patent-pending.” E.g., JTX028 at 3, 7; JTX-008 at 3; JTX047.
`
`However, as the parties agreed in the proposed jury instructions, a party’s mere knowledge of a
`
`“pending patent application” is insufficient to prove willful infringement. See Dkt. 370-1 at 22 (the
`
`parties agree that the jury cannot “find willful infringement just because Charter knew of a pending
`
`patent application.”). That is because a “‘patent pending’ notice gives one no knowledge
`
`whatsoever. It is not even a guarantee that an application has been filed. Filing an application is
`
`no guarantee any patent will issue and a very substantial percentage of applications never result in
`
`patents.” Diamond Grading Techs. Inc. v. Am. Gem. Society, No. 14-CV-1161, 2016 WL 3902482,
`
`at *