Case 2:23-cv-00059-JRG-RSP Document 373-1 Filed 03/06/25 Page 1 of 42 PageID
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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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`Case No. 2:23-cv-00059-JRG
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`Defendants.
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`PROPOSED FINAL JURY INSTRUCTIONS1
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`1 Submissions that are agreed to by both Touchstream and Charter are not highlighted. Submissions
`proposed by Touchstream that are not agreed to by Charter are bracketed and highlighted in green.
`Submissions proposed by Charter that are not agreed to by Touchstream are bracketed and
`highlighted in blue. The parties have entered their objections, explanations, citations, and
`commentary in footnotes only.
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`The parties reserve their respective rights to further object or propose new instructions based on
`their pending motions or further development at trial.
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`FINAL INSTRUCTIONS
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`1.
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`Introduction
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`1.1
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`Introduction to Jury Instructions
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`Ladies and Gentlemen of the Jury: You’ve now heard the evidence in this case. I will
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`now instruct you on the law that you must apply.
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`Each of you will have a copy of these final jury instructions that I am about to give you
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`orally. You will have these instructions for your review when you retire to deliberate in a few
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`minutes. Accordingly, there is no need for you to take written notes on these final jury instructions
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`unless you particularly want to do so.
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`1.2
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`Statements of the Court and Counsel
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`It is your duty to follow the law as I give it to you. On the other hand, as I have said,
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`you, the jury, are the sole judges of the facts in this case. Do not consider any statement that I have
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`made in the course of the trial or may make in the course of these instructions as an indication that
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`I have any opinion about the facts in this case. You are about to hear closing arguments from the
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`attorneys for both of the parties. Statements and arguments of the attorneys are not evidence, and
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`they are not instructions on the law. They are intended only to assist the jury in understanding the
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`evidence and the parties’ contentions.
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`1.3
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`Verdict Form and Procedure
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`A verdict form has been prepared for you. You will take this form to the jury room, and
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`when you have reached a unanimous agreement as to your verdict, you will have your foreperson
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`fill in the blanks in that form, date it, and sign it. Answer the questions as directed in the verdict
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`form from the facts as you find them to be. Do not decide who you think should win and then
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`answer the questions to reach that result. Your answers and your verdict must be unanimous.
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`2.
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`Considering the Evidence
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`2.1
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`Credibility of Witnesses and Evidence
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`In determining whether any fact has been proven in this case, you may, unless otherwise
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`instructed, consider the testimony of all of the witnesses, regardless of who may have called them,
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`the stipulations of the parties, and you may consider all the exhibits received and admitted into
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`evidence, regardless of who may have introduced them.
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`You, the jurors, are the sole judges of the credibility of all witnesses and the weight and
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`effect of all of the evidence. In deciding the facts in this case, you may have to decide which
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`testimony to believe and which testimony not to believe. You alone are to determine the questions
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`of credibility or truthfulness of the witnesses. In weighing the testimony of the witnesses, you may
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`consider a witness’s manner and demeanor on the witness stand, any feelings or interest they may
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`have in the case, any prejudice or bias about the case that the witness may have, and the consistency
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`or inconsistency of their testimony, considered in light of the circumstances. Has the witness been
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`contradicted by other evidence? Has he or she made statements at other times and places contrary
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`to what he or she said on the witness stand? You must give the testimony of each witness the
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`amount of credibility that you think it deserves.
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`You must also keep in mind, ladies and gentlemen, that a simple mistake does not mean
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`that a witness is not telling the truth. You must consider whether any misstatement was an
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`intentional falsehood or a simple lapse in memory and what significance should be attached to that
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`testimony.
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`2.2 Objections of Counsel
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`As I have told you previously, the attorneys in this case are advocates for their competing
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`clients, and they have a duty to object when they believe evidence is offered that should not be
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`admitted under the rules of this Court. When the Court sustained an objection to a question
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`addressed to a witness, you must disregard that question entirely, and you may draw no inference
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`from its wording or speculate about what the witness would have said if he or she had been
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`permitted to answer. If the objection was overruled, then you may treat the answer to that question
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`just as you would treat the answer to any other question as if the objection had not been made. By
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`allowing testimony or other evidence to be introduced over the objection of an attorney, the Court
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`did not indicate any opinion as to the weight or effect of such evidence.
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`Now, at times during the trial it was necessary for the Court to talk with the lawyers
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`outside of your hearing at the bench, or by calling a recess and talking to them while you were out
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`of the courtroom. This happened because often during a trial, something comes up that does not
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`involve the jury. You should not speculate about what was said during such discussions that took
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`place outside of your presence.
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`2.3
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`Direct and Circumstantial Evidence
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`There are two types of evidence that you may consider in properly finding the truth as
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`to the facts in this case. One is direct evidence, such as testimony of an eyewitness. The other is
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`indirect or circumstantial evidence, that is, the proof of a chain of circumstances that indicates the
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`existence or non-existence of certain other facts. As a general rule, the law makes no distinction
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`between direct or circumstantial evidence, but simply requires that you find the facts based on the
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`evidence presented, both direct and circumstantial.
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`2.4
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`Stipulated Facts
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`The parties have stipulated or agreed to some facts in this case. When the lawyers on
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`both sides stipulate as to the existence of a fact, then you must, unless otherwise instructed, accept
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`the stipulation as evidence and regard that fact as proven. These facts are not in dispute between
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`the parties.
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`2.5
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`Interrogatories
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`Evidence has been presented to you in the form of answers of a party to written
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`interrogatories submitted by the other side. These answers were given in writing and under oath
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`before the trial in response to questions that were submitted under established court procedures.
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`You should consider the answers in the same way as if they were made from the witness stand.
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`2.6
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`Testimony by Deposition
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`Certain testimony in the case has been presented to you through depositions. A
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`deposition is the sworn, recorded answers to questions asked to a witness in advance of the trial.
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`If a witness cannot be present to testify in person, then the witness’s testimony may be
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`presented under oath in the form of a deposition. Before this trial began, the attorneys representing
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`the parties in this case questioned these deposition witnesses under oath. At that time, a court
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`reporter was present and recorded their sworn testimony. Deposition testimony is entitled to the
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`same consideration by you as testimony given by a witness in-person from the witness stand in
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`open court. Accordingly, you should judge the credibility and importance of the deposition
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`testimony to the best of your ability, just as if the witness had testified before you in open court.
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`2.7
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`Reasonable Inferences from Evidence
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`Now, while you should consider only the evidence in this case, you are permitted to
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`draw such reasonable inferences from the testimony and exhibits as you feel are justified in light
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`of common experience. In other words, you may make deductions and reach conclusions that
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`reason and common sense lead you to draw from the facts that have been established by the
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`testimony and evidence in the case. However, you should not base your decision on any evidence
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`not presented by the parties during this case, including your own personal experience with any
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`products that are at issue in the case.
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`2.8
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`Sufficiency of Testimony
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`Unless I instruct you otherwise, you may properly determine that the testimony of a
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`single witness may be sufficient to prove any fact, even if a greater number of witnesses may have
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`testified to the contrary, if after considering all of the evidence, you believe that single witness.
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`2.9
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`Expert Witnesses
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`When knowledge of a technical subject matter may be helpful to the jury, a person who
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`has special training or experience in that technical field—called an “expert witness”—is permitted
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`to state his or her opinion on those technical matters. However, you are not required to accept that
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`opinion. As with any other witness, it is solely up to you to decide whether to rely upon it or not.
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`2.10 Demonstratives
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`Certain exhibits shown to you during the trial were illustrations. We call these types of
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`exhibits “demonstrative exhibits” or “demonstratives.” Demonstrative exhibits are a party’s
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`description, picture, or model used to describe something involved in this trial. If your recollection
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`of the evidence differs from the demonstratives, you should rely on your recollection.
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`Demonstrative exhibits are sometimes called “jury aides.” Demonstrative exhibits themselves are
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`not evidence, but a witness’s testimony concerning a demonstrative exhibit is evidence.
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`Demonstrative exhibits will not be available for you to view during your deliberations.
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`3.
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`Burdens of Proof
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`In any legal action, facts must be proven by a required amount of evidence known as the
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`“burden of proof.” The burden of proof in this case is on the Plaintiff for some issues and on the
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`Defendants for other issues. There are two burdens of proof that you will apply in this case:
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`“preponderance of the evidence” and “clear and convincing evidence.”
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`The Plaintiff in this case, Touchstream Technologies, Inc. which you have heard referred
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`to throughout the trial as “Plaintiff,” “Touchstream,” or “Shodogg,” has the burden of proving
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`patent infringement by a preponderance of the evidence. Touchstream also has the burden of
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`proving willful patent infringement by a preponderance of the evidence. Touchstream has the
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`burden of proving damages for any patent infringement by a preponderance of the evidence. A
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`preponderance of the evidence means evidence that persuades you that a claim is more probably
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`true than not true. Sometimes this is talked about as being the greater weight and degree of credible
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`testimony.
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`The Defendants in this case, Charter Communications, Inc., Charter Communications
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`Operating, LLC, Spectrum Management Holding Company, LLC, Time Warner Cable
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`Enterprises, LLC, Spectrum Gulf Coast, LLC, and Charter Communications LLC, which you have
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`heard referred to throughout the trial as “Defendants” or “Charter,” have the burden of proving the
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`invalidity of Touchstream’s patent claims by clear and convincing evidence. Clear and convincing
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`evidence places in your mind an abiding conviction that the truth of the factual contentions are
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`highly probable. Although proof to an absolute certainty is not required, the clear and convincing
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`evidence standard requires a greater degree of persuasion than is necessary for the preponderance
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`of the evidence standard. If proof establishes in your mind an abiding conviction that the truth of
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`the party’s factual contentions are highly probable, then the clear and convincing evidence
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`standard has been met.
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`Now, as I’ve previously told you, ladies and gentlemen, these two burdens of proof are
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`different than the burden of proof known as “beyond a reasonable doubt.” Beyond a reasonable
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`doubt applies in a criminal case. It does not apply in a civil case such as this. Beyond a reasonable
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`doubt is a higher standard than both the preponderance of the evidence and clear and convincing
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`evidence standards.
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`4.
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`Summary of the Positions of the Parties
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`As I did at the start of the case, I will first give you a summary of each side’s contentions
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`in this case. I will then provide you with detailed instructions on what each side must prove to win
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`on each of its contentions.
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`As I previously advised you, this is an action for patent infringement. Touchstream
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`contends that Charter infringes certain claims of the patents-in-suit. Remember, there are three
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`patents-in-suit: United States Patent No. 8,356,251, which you have heard referred to as the “’251
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`Patent”; United States Patent No. 11,048,751, which you have heard referred to as the “’751
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`Patent”; and United States Patent No. 11,086,934, which you have heard referred to as the “’934
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`Patent.” I may also refer to these as the “Asserted Patents.”
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`Touchstream contends that Charter infringes the following claims of the patents-in-suit:
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`Claims 1 and 7 of the ’251 Patent; Claims 12 and 13 of the ’751 Patent; and Claims 17, 18, and 20
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`of the ’934 Patent. These are the “Asserted Claims.” Touchstream contends that Charter has
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`infringed the Asserted Claims by performing the methods described in these Asserted Claims to
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`deliver media (such as video) to customers when using Send-to-TV in the Spectrum TV Mobile
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`Application (this functionality was sometimes referred to as Watch-on-TV, Flick-to-TV or using
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`similar names), through Charter servers, on Charter set-top boxes running certain guides. I will
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`refer to Charter’s performance of these methods using its Mobile Application, servers, and set-top
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`boxes as using the “Accused Functionalities.” Touchstream further alleges that Charter’s
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`infringement of the Asserted Patents was willful. Touchstream contends that it is entitled to money
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`damages in the form of a reasonable royalty for Charter’s infringement. Touchstream has the
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`burden to prove infringement of each patent by a preponderance of the evidence.
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`Charter denies that any use of the Accused Functionalities infringes any of the Asserted
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`Claims. Charter denies any willful infringement of any of the Asserted Claims. Charter also denies
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`that it owes Touchstream any money damages.
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`Further, Charter contends as a defense to infringement that the Asserted Claims of the
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`patents-in-suit are invalid for lack of written description. Charter has the burden to prove invalidity
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`by clear and convincing evidence.
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`Invalidity and infringement are separate and distinct issues. Your job is to decide
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`whether Charter has infringed the Asserted Claims, whether that infringement, if you find it, was
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`willful, and whether the Asserted Claims are invalid. If you decide that any Asserted Claim has
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`been infringed and is not invalid, you will then need to decide the amount of money damages to
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`be awarded to Touchstream to compensate it for the infringement. If you decide that there was any
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`infringement and it was willful, that decision should not affect any damages award you make. I
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`will take willfulness into account later if you find it.
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`A term you have likely heard during trial and will see elsewhere in these instructions is
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`“prior art.” Prior art generally refers to any previous product, device, system, method,
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`publication, or patent that predates the claimed invention. Prior art may include items that were
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`publicly known or that have been used or offered for sale before a certain date. Prior art may
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`also include references, such as publications or patents, that disclose the claimed invention or
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`elements of the claimed invention. Prior art may be authored or created by anyone. Prior art is
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`not relevant to the issues of infringement or invalidity, but may be relevant to the issue of
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`damages.
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`You have also heard evidence of independent development by Charter of its own
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`app. Evidence of independent development is not relevant to the issues of infringement or
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`invalidity, but may be relevant to rebut Touchstream’s evidence of damages and willfulness.
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`5.
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`Claims and Claim Construction
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`Before you can decide many of the issues in this case, you will need to understand the
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`role of patent “claims.” The patent claims are the numbered sentences at the end of the patent. The
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`claims are important because it is the words of the claims that define what a patent covers. The
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`figures and text in the rest of the patent provide a description and/or examples of the invention and
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`provide a context for the claims, but it is the claims themselves that define the breadth of the
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`patent’s coverage. Therefore, what a patent covers depends, in turn, on what each of its claims
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`covers.
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`You will first need to understand what each claim covers in order to decide whether or
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`not there is infringement of the claim and to decide whether or not the claim is invalid. The first
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`step is to understand the meaning of the words used in the patent claim.
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`The law says that it is my role to define the terms of the claims and it is your role to
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`apply my definitions to the issues that you are asked to decide in this case. Therefore, as I explained
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`to you at the start of the case, I have determined the meaning of the claims and I have provided to
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`you my definition of a term used in the claims. This definition can be found in your juror
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`notebooks. You must accept my definition of these words in the claims as being correct. It is your
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`job to take this definition and apply it to the issues that you are deciding, including the issues of
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`infringement and invalidity.
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`You should disregard any evidence presented at trial that contradicts or is inconsistent
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`with the construction and definition that I have given you. For claim limitations that I have not
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`construed—that is, limitations that I have not interpreted or defined—you are to use the plain and
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`ordinary meaning of the limitations as understood by one of ordinary skill in the art, which is to
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`say, in the field of technology of the patent, at the time of the alleged invention. The meaning of
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`the words of the patent claims must be the same when deciding both infringement and invalidity.
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`You have been provided with copies of the Asserted Patents, which are inside your juror
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`notebooks, and you may use them in your deliberations.
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`Several times in my instructions, I have referred or will refer to a person of ordinary skill
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`in the field of the invention, or a person of ordinary skill in the art. A person of ordinary skill in
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`the art here would have the equivalent of a four-year degree from an accredited institution (usually
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`denoted as a B.S. degree) in computer science, computer engineering or the equivalent and
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`experience with, or exposure to, Internet-based video delivery systems. A person of ordinary skill
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`in the art would also have approximately two years of professional experience with these topics.
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`Additional graduate education could substitute for professional experience, while significant
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`experience in the field might substitute for formal education.
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`The claims are intended to define, in words, the boundaries of the inventor’s rights. Only
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`the claims of the patent can be infringed. Neither the written description, nor the drawings of a
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`patent can be infringed. Each of the claims must be considered individually.
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`I will now explain how a claim defines what it covers. A claim sets forth, in words, a set
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`of requirements. Each claim sets forth its requirements in a single sentence. If a product or method
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`satisfies each of these requirements, then it is covered by the claim. There can be several claims in
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`a patent. Each claim may be narrower or broader than another claim by setting forth more or fewer
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`requirements.
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`The coverage of a patent is assessed on a claim-by-claim basis. In patent law, the
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`requirements of a claim are often referred to as “claim elements” or “claim limitations.” When a
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`method meets all of the requirements of a claim, the claim is said to “cover” that method, and that
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`method is said to “fall” within the scope of that claim. In other words, a claim covers a method
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`where each of the claim elements or limitations is present in that method. If a method is missing
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`even one limitation or element of a claim, the method is not covered by the claim. If the method is
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`not covered by the claim, that method cannot infringe that claim. A claim sets forth all of the
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`requirements of the claim, so if something is not recited by the claim language, it is not required
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`for infringement or invalidity.
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`The beginning portion, or preamble, of a claim often uses the word “comprising.” The
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`word “comprising,” when used in the preamble, means “including but not limited to” or
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`“containing but not limited to.” When “comprising” is used in the preamble, if you decide that use
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`of the Accused Functionalities includes all of the requirements of that claim, the claim is infringed.
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`This is true even if the Accused Functionalities contain additional elements.
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`For example, a claim to a table comprising a tabletop, legs, and glue would be infringed
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`by a table that includes a tabletop, legs, and glue, even if the table also contains other structures,
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`such as leaves that would go in the tabletop or wheels that would go on the ends of the legs.
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`5.1
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`Independent and Dependent Claims
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`This case involves two types of patent claims: independent claims and dependent claims.
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`An independent claim does not refer to any other claim in the patent. An independent
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`claim sets forth all the requirements that must be met in order to be covered by the claim. It’s not
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`necessary to look to any other claim to determine what an independent claim covers.
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`A dependent claim does not itself recite all of the requirements of the claim but refers to
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`another claim for some of its requirements. In this way, the claim “depends” on another claim. A
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`dependent claim incorporates all of the requirements of the claim to which it refers or, stated
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`alternatively, from which it depends. The dependent claim then adds its own additional
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`requirements. To determine what a dependent claim covers, it is necessary to look at both the
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`dependent claim and any other claim to which it refers. A product or method that meets all of the
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`requirements of both the dependent claim and the claims to which it refers is covered by that
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`dependent claim.
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`For the ʼ251 Patent, claim 1 is an independent claim, and claim 7 is a dependent claim
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`that depends from independent claim 1.
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`For the ʼ751 Patent, claim 12 is an independent claim, and claim 13 is a dependent claim
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`that depends from independent claim 12.
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`For the ʼ934 Patent, claim 17 is an independent claim, and claims 18 and 20 are
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`dependent claims that depend from independent claim 17.
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`6.
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`Infringement
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`I will now instruct you on infringement in more detail. If a person or corporation makes,
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`uses, sells, or offers to sell within the United States or imports into the United States what is covered
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`by a patent claim without the patent owner’s permission, that person or corporation is said to infringe
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`the patent.
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`In reaching your decision on infringement, keep in mind that only the claims of a patent
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`can be infringed. Infringement is assessed on a claim-by-claim basis. Therefore, there may be
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`infringement as to one claim but not infringement as to another claim. You must compare the
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`Asserted Claims to the use of the Accused Functionalities and determine whether or not there is
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`infringement. This is the only correct comparison.
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`You should not compare use of the Accused Functionalities with any specific examples
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`set out in the patent the prior art, or Touchstream’s own products in reaching your decision on
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`infringement. In deciding infringement, the only correct comparison is between use of the Accused
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`Functionalities and the limitations of the claims as the Court has construed them. You must reach
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`your decision as to each assertion of infringement based on my instructions about the meaning and
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`scope of the claims, the legal requirements for infringement, and the evidence presented to you by
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`both of the parties.
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`[You may not consider any alleged delay in filing suit when determining whether the
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`Accused Functionalities infringe the Asserted Claims.]2
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`2 Touchstream: The Court granted Touchstream’s MIL No. 5 to preclude reference to delay in
`filing suit. See Dec. 19, 2024 Pre-Trial Hr'g Tr. at 80:19-24 (“[T]his is a motion in limine that the
`Court has dealt with in the past by saying that the Defendants will be prohibited from testimony
`or argument, that the delay in filing suit is a defense to either infringement or damages but that
`they are free to offer evidence of any relevant dates.”); see also, e.g., Exmark Mfg. Co. Inc. v.
`Briggs & Stratton Power Prods. Grp., LLC, 879 F.3d 1332 (Fed. Cir. 2018) (“We agree with the
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`6.1
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`Direct Infringement
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`I will now instruct you on the specific rules you must follow to determine whether
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`Touchstream has proven that Charter has directly infringed one or more of the Asserted Claims.
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`A patent can be directly infringed even if the alleged direct infringer did not have
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`knowledge of the patent and did not know that what it did was infringement of the claim. A patent
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`may also be directly infringed even though the alleged direct infringer believed in good faith that
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`what it did was not an infringement of the patent. Infringement does not require proof that a party
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`copied its method from the Asserted Claims. For purposes of finding infringement, the proper
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`comparison is between the language of the Asserted Claims and the Accused Functionalities. The
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`fact that Charter has its own patents is not to be considered when making this comparison.
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`Touchstream only asserts method claims. The fact that an apparatus has the capability
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`of performing all of the steps of the claimed method is not enough to show infringement. In order
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`to prove direct infringement of an Asserted Claim, Touchstream must show by a preponderance
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`district court that [Defendants]’ attempt to introduce evidence of Exmark’s delay in filing suit for
`infringement is not relevant to damages, even when considering Georgia–Pacific factors four
`(licensing policy) and fifteen (hypothetical negotiation). As the district court recognized, ‘[t]he
`argument that the delay in bringing suit somehow establishes Exmark’s perception of the value of
`its invention is specious. There are many reasons to forego filing a lawsuit, to imply that Exmark
`did so because it did not think the invention had value is speculative…. The record supports that
`there were other reasons for Exmark’s delay in filing suit, including scarcity of financial resources
`to do so. Thus, we conclude that the district court did not abuse its discretion in excluding this
`evidence.”). This instruction is necessary because Defense counsel have repeatedly questioned
`witnesses and made argument regarding Touchstream’s purported delay in filing suit.
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`Charter objects to Touchstream’s instruction as unnecessary and likely to confuse the jury.
`Touchstream has introduced evidence of meetings between Touchstream and Charter, but seeks to
`discredit evidence of a significant period of time during which Touchstream and Charter did not
`speak through jury instructions. Trial Tr. (Day 1) 229:22-23 (“MR. DACUS: “I’m not saying
`anything about undue delay; I’m just saying that they hadn’t talked to us.”) Further, Charter’s
`questioning as to when Touchstream filed suit relates to Touchstream’s business strategy to stop
`selling its product and turn to litigation. Trial Tr. (Day 1) 228:25-229:6.
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`16
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`of the evidence that the use of the Accused Functionalities results in performance of each and
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`every step of the claimed method. In determining whether use of the Accused Functionalities
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`directly infringes a patent claim in this case, you must compare use of the Accused Functionalities
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`with each and every one of the required steps of that claim to determine whether such use performs
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`each and every step recited in the claim. Infringement of a method claim occurs only where all the
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`steps of a claimed method are performed or are attributable to a single party. [It is not enough that
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`the Accused Functionalities and the claimed methods are highly similar or function in similar
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`ways.]3
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`A claim requirement is literally present if the Accused Functionalities performs the
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`method just as it is described in the claim language, either as I have explained the language to you
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`or, if I did not explain it, as it would be understood by its plain and ordinary meaning to one of
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`ordinary skill in the art. If the Accused Functionalities do not perform any element recited in a
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`3 Charter seeks to clarify for the jury that anything less than a showing of literal infringement is
`insufficient for Touchstream to meet its burden of proof for infringement because Touchstream has
`not asserted infringement under the Doctrine of Equivalents. Final Jury Instructions at 23,
`Twinstrand Biosciences, Inc. v. Guardant Health Inc., No. 21-1126-GBW-SRF, Dkt. 494 (D. Del.
`Nov. 14, 2023) (“It is not enough that the products are highly similar or function in similar ways.”);
`see CommScope Techs. LLC v. Dali Wireless Inc., 10 F.4th 1289, 1298 (Fed. Cir. 2021) (“The
`burden is on a patent owner to show that the properly construed claim reads on the accused device
`exactly.”) (citation omitted).
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`Touchstream: Touchstream objects to this instruction as irrelevant and potentially confusing and
`prejudicial to the jury. Doctrine of Equivalents is not at issue in this case, and it is not necessary
`to instruct the jury on legal doctrines that are not at issue and the jury will not need to consider.
`Instructing the jury on such issues would lead to confusion and/or prejudice. Moreover, the jury
`should be instructed on when Touchstream has proven infringement, and providing them with a
`second instruction that re-characterizes this in a way that is favorable to Charter is improper and
`will confuse the jury. Finally, Charter cites no binding legal authority for this instruction, and a
`review of the parties’ jury instruction submissions in Twinstrand reveals no citation to any
`authority for this proposed instruction. See [Proposed] Final Jury Instrs. at 32, Twinstrand
`Biosci