Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 1 of 13 PageID #: 1012
`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 1 of 13 PagelD #: 1012
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF TEXAS
`
`MARSHALLDIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`Plaintiff,
`
`V.
`
`CHARTER COMMUNICATIONS,INC., et
`al.,
`
`Defendants.
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`Plaintiff,
`
`Vv.
`COMCAST CABLE COMMUNICATIONS,
`LLC, d/b/a XFINITY,etal.,
`
`Defendants.
`
`LRLN2RL2RALNLNLNLNLLLNL272LLL272LNG
`
`Lead Case No. 2:23-cv-00059-IRG
`MemberCase No. 2:23-cv-00062-JRG
`
`REDACTED
`REDACTED
`
`COMCAST’S MOTION TO COMPEL
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`INFORMATION REGARDING FINANCIAL INTERESTS
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`

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`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 2 of 13 PageID #: 1013
`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 2 of 13 PagelD#: 1013
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`TABLE OF CONTENTS
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`PAGE
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`I
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`Il.
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`INTRODUCTION..0002.....ceccesces cesses cescesceseeseeseeeseseesesseeseeseesesaeeseeaeesecseeseceeceecseeeeeseeaeeseeeeeees 1
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`STATEMENT OF FACTS 20000.....cceccesceccecceseeseeseesesseeseeaeaeaeeseesecseeseesecseeeceaceaseseeseeseeeeeaeees 1
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`
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`TH.==—§ARGUMENT ooo eececceccccceccceceeceeceeceeceeeeeceeseeeeeseeeceeceaceaseaeeaeeaeseeeeeseeseesaeeaeseeseeseeseeseateate 3
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`A.
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`B.
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`Touchstream Must Identify Any Financial Interest -.....2....0...0..eceeeeeeeeeeeeeeeeeeeeeeeees 3
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`Touchstream Must Produce Documents Showing the Extent and Nature of
`Any Financial Interests .0.............ccccccceeceecceeeceesceeeseceseeeseeeseeceaceesaeeeseeeeeeesseesseeeseeees 6
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`TV.=CONCLUSION 0. oeecececsecccececeececesceeeeeseseeeseeseeacaceceeceseesseseeseceecsecseseeseeseeeeseeseeseeseeseets 7
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`

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`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 3 of 13 PageID #: 1014
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`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`PAGE
`
`Cobra Int’l, Inc. v. BCNY Int’l, Inc.,
`2013 WL 11311345 (S.D. Fla. Nov. 4, 2013) ............................................................................ 4
`
`Cont’l Cirs. LLC v. Intel Corp.,
`435 F. Supp. 3d 10144 (D. Ariz. 2020) .............................................................................. 3, 5, 6
`
`Electrolysis Prevention Sols. LLC v. Daimler Truck N. Am. LLC,
`2023 WL 4750822 (W.D.N.C. July 24, 2023) ........................................................................... 7
`
`Fleet Connect Sols. LLC v. Waste Connections US, Inc.,
`2022 WL 2805132 (E.D. Tex. June 29, 2022) ............................................................................ 7
`
`Gamon Plus, Inc. v. Campbell Soup Co.,
`2022 WL 18284320 (N.D. Ill. May 26, 2022) ........................................................................ 4, 7
`
`Hardin v. Samsung Elecs. Co.,
`2022 WL 14976096 (E.D. Tex. Oct. 25, 2022) .......................................................................... 7
`
`Impact Engine, Inc. v. Google LLC,
`2020 U.S. Dist. LEXIS 145636 (S.D. Cal. Aug. 12, 2020) .................................................... 4, 7
`
`League of United Latin Am. Citizens v. Abbott,
`342 F.R.D. 227 (W.D. Tex. 2022) .............................................................................................. 5
`
`Taction Tech., Inc. v. Apple Inc.,
`2022 WL 18781396 (S.D. Cal. Mar. 16, 2022) .......................................................................... 3
`
`Touchstream Techs., Inc. v. Google LLC,
`No. 6:21-cv-00569-ADA (W.D. Tex. July 17, 2023) ................................................................. 4
`
`United States v. Homeward Residential, Inc.,
`2016 WL 1031154 (E.D. Tex. Mar. 15, 2016) ....................................................................... 3, 6
`
`Rules
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`5th Cir. Rule 28.2.1 ......................................................................................................................... 4
`
`E.D. Tex. L.R. CV-26 ..................................................................................................................... 3
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`Fed. R. Civ. P. 26 ........................................................................................................................ 3, 5
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`N.D. Tex. Civ. L.R. 3.1 ................................................................................................................... 4
`
`ii
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`

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`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 4 of 13 PageID #: 1015
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`I.
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`INTRODUCTION
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`Comcast seeks basic discovery: identification of any person with a financial interest in
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`Touchstream, the Asserted Patents, or this litigation (a “Financial Interest”) and production of
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`documents sufficient to show the extent and nature of those interests.1 Any person with a
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`Financial Interest is a potential witness because they may have discoverable information about
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`Touchstream or the value of the Asserted Patents, among other things. However, Touchstream
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`insists that Comcast must identify who it believes are potential witnesses before Touchstream
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`even considers whether to disclose their Financial Interests. That is backwards: Comcast needs
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`the information it requests to identify potential witnesses efficiently. Moreover, Touchstream’s
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`position fails to explain its refusal to identify the Financial Interests of individuals that have
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`already been identified as potential witnesses—namely, all individuals listed in Comcast’s Rule
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`26(a) disclosures and any individual not associated with Touchstream listed on Touchstream’s
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`disclosures. Because the requested information is relevant, not privileged, and easy to provide,
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`the Court should order Touchstream to provide it under Federal Rule of Civil Procedure
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`37(a)(3)(B).
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`II.
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`STATEMENT OF FACTS
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`On June 30, 2023, Comcast requested that Touchstream produce “[d]ocuments sufficient
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`to identify any party with a financial interest in Touchstream or Touchstream’s activities,
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`including any formal or informal profit-sharing agreement(s), arrangement(s) or understanding(s)
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`concerning any litigation relating to any of the Patents-in-Suit.” Touchstream produced no such
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`
`1 This Motion uses the following additional abbreviations: Plaintiff Touchstream
`Technologies, Inc. (“Touchstream”); Defendants Comcast Cable Communications, LLC,
`Comcast Corporation, Comcast Cable Communications Management, LLC, and Comcast of
`Houston, LLC (collectively “Comcast”); and U.S. Patent Nos. 8,356,251, 11,048,751, and
`11,086,934 (collectively “Asserted Patents”).
`
`1
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`

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`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 5 of 13 PageID #: 1016
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`documents and responded to Comcast’s deficiency letter with a simple statement that “[s]uch
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`documents are not relevant to any claim or defense.” After multiple meet and confers, however,
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`Touchstream acknowledged entering into a consulting agreement with
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` which it produced on December 21. Under the agreement,
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`Touchstream continued to ignore Comcast’s request for information regarding any other
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`Financial Interests until a January 4, 2024 meet and confer, in which it suggested that it would
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`consider providing information in response to a new interrogatory. Thus, on January 19,
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`Comcast served Interrogatory No. 5, which requests that Touchstream “[i]dentify all persons that
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`hold a financial interest in Touchstream, the asserted patents, or this litigation, including any
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`individuals identified in Touchstream’s initial disclosures and any potential or actual witnesses in
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`this case (whether deposition, trial or otherwise), and the extent and nature of each such person’s
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`financial interests.” On February 15, Touchstream acknowledged it had entered into another
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`consulting agreement, this one granting
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` Touchstream produced that agreement on March 1.
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`In subsequent meet and confers, Touchstream refused to identify whether any other
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`persons listed on Comcast’s Rule 26(a) disclosures or any individual not associated with
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`Touchstream listed on its own disclosures have a Financial Interest, although on March 29
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`Touchstream amended its response to list the Financial Interests of
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` and anyone
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`affiliated with Touchstream listed on its own disclosures. Ex. 1 at 1. Touchstream also refused
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`to produce any documents concerning the extent or nature of any other Financial Interest,
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`including capitalization tables, profit-sharing agreements, or litigation-funding agreements.
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`2
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`

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`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 6 of 13 PageID #: 1017
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`III. ARGUMENT
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`“Parties may obtain discovery regarding any non-privileged matter that is relevant to any
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`party’s claim or defense.” Fed. R. Civ. P. 26(b)(1). Comcast thus seeks: (1) the identity of any
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`persons with a Financial Interest, including any persons named in the parties’ initial disclosures,
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`and the nature of such interests; and (2) documents sufficient to show that information, such as
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`capitalization tables, profit-sharing agreements, or litigation-funding agreements. Comcast
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`addresses each category in turn.
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`A.
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`Touchstream Must Identify Any Financial Interest
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`At Touchstream’s insistence, Comcast served an interrogatory specifically seeking the
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`identity of any individuals holding Financial Interests, as well as the nature of such interests, so
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`that Comcast could identify potential witnesses and understand their potential bias. There is no
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`basis on which Touchstream may refuse to provide such information.
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`Courts recognize the inherent discoverability of any person with a Financial Interest;
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`indeed, at least one court in this District has held such disclosure is required under L.R.
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`CV-26(d). United States v. Homeward Residential, Inc., 2016 WL 1031154, at *4-5 (E.D. Tex.
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`Mar. 15, 2016) (finding identities of “actual or potential investors” relevant and requiring
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`disclosure); see Taction Tech., Inc. v. Apple Inc., 2022 WL 18781396, at *5, *8 (S.D. Cal. Mar.
`
`16, 2022) (requiring plaintiff to “[i]dentify all persons with an actual or potential financial
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`interest . . . in [Plaintiff], the Asserted Patents, or the Litigation . . . .”); Cont’l Cirs. LLC v. Intel
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`Corp., 435 F. Supp. 3d 1014, 1024 (D. Ariz. 2020) (“Plaintiffs shall provide Defendants with the
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`3
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`

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`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 7 of 13 PageID #: 1018
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`identities of all persons or entities (other than counsel) with a fiscal interest in the outcome of
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`this litigation . . . .”).2
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`Any person with a Financial Interest is likely to have analyzed, for example, the value of
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`the company, the Asserted Patents, and/or this litigation, which would be highly relevant to
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`damages. See Impact Engine, Inc. v. Google LLC, 2020 U.S. Dist. LEXIS 145636, at *4-5 (S.D.
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`Cal. Aug. 12, 2020) (“[Defendant] is entitled to discovery of litigation funding agreements and
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`related documents because they are relevant to: (1) establish the value of the patents at
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`issue . . . .”); Gamon Plus, Inc. v. Campbell Soup Co., 2022 WL 18284320, at *2 (N.D. Ill. May
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`26, 2022). Further, investors in the company may have information about its success or failure,
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`including information relevant to commercial success and the strength of Touchstream’s
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`negotiating power at the hypothetical negotiation. Indeed, persons with a financial interest may
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`exert control over the company’s strategy, and Comcast must explore such control. See Cobra
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`Int’l, Inc. v. BCNY Int’l, Inc., 2013 WL 11311345, at *2-3 (S.D. Fla. Nov. 4, 2013) (finding
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`litigation funding agreements relevant to whether control of the patent litigation strategy had
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`changed). Finally, such individuals may have information that would rebut any Touchstream
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`trial narrative that Mr. Strober revolutionized video streaming, that Touchstream’s attempts to
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`monetize his inventions were hindered by Comcast’s alleged infringement, and that the only
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`motive underlying this case is to hold Comcast accountable. See Second Am. Compl. ¶¶ 22-25;
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`Touchstream Techs., Inc. v. Google LLC, No. 6:21-cv-00569-ADA (W.D. Tex. July 17, 2023),
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`2 The Fifth Circuit and other districts within Texas also require disclosure of the identities
`of any entities with a financial interest in a party or the outcome of a proceeding at the beginning
`of a case. See 5th Cir. Rule 28.2.1 (requiring disclosure of “a complete list of all persons,
`associations of persons, firms, partnerships, corporations, guarantors, insurers, affiliates, parent
`corporations, or other legal entities who or which are financially interested in the outcome of the
`litigation”); N.D. Tex. Civ. L.R. 3.1(c) (similar).
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`4
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`

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`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 8 of 13 PageID #: 1019
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`Dkt. No. 259 at 34:2-4 (“This case is about accountability. This case is about proving that the
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`rules apply to everybody, even Google.”).
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`Despite numerous meet and confers between the parties, Touchstream has not explained
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`why it believes that the identities of persons with a Financial Interest is irrelevant. Instead,
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`Touchstream insists that it is incumbent on Comcast to first identify to Touchstream any persons
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`it considers “potential witnesses.” But the very purpose of asking Touchstream to identify
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`individuals with a Financial Interest is to identify potential witnesses. Comcast cannot determine
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`the universe of individuals likely to have discoverable information until Touchstream first
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`identifies who holds a Financial Interest. Nor can Touchstream claim this identification is too
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`burdensome because it is aware of who has an interest in the company, its patents, and this case.
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`And there can be no assertion of privilege over this information because the attorney-client
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`privilege protects communications, not identities. See League of United Latin Am. Citizens v.
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`Abbott, 342 F.R.D. 227, 232, 234 (W.D. Tex. 2022); see also Cont’l Cirs., 435 F. Supp. 3d at
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`1024 (identity of persons with fiscal interests not protected by the work product doctrine).
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`Touchstream’s argument is also irreconcilable with its refusal to identify which, if any,
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`individuals who are named in Comcast’s disclosures have a Financial Interest and also whether
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`any individual not associated with Touchstream listed on its disclosures have a Financial Interest.
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`All of those individuals are “likely to have discoverable information” on which a party may rely
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`and are, by definition, potential witnesses. Fed. R. Civ. P. 26(a)(1)(A)(i). Information
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`concerning the Financial Interests of such persons goes directly to witness bias and there is no
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`burden for providing that information. As just one example, Comcast lists Jerry Needel—a
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`former Touchstream adviser—on its initial disclosures. Rather than waste time with a potentially
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`unnecessary deposition, Comcast could make an educated decision to depose him if it
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`5
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`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 9 of 13 PageID #: 1020
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`understands the nature and extent of his Financial Interest, as well as similar information for any
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`other person who may have relevant information, whether identified on initial disclosures or not.
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`B.
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`Touchstream Must Produce Documents Showing the Extent and Nature of
`Any Financial Interests
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`Although the identification of any Financial Interests is necessary, it is not sufficient.
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`Touchstream must also produce documents sufficient to show the Financial Interests, including
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`capitalization tables, profit-sharing agreements, and litigation-funding agreements.
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`First, Comcast needs the documents to confirm the accuracy of the information
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`Touchstream provides and to effectively question witnesses. Should Comcast choose to depose
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`or call to trial any person with a Financial Interest, for example, the documents are needed to
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`establish and explain that witness’s bias. See Homeward Residential, 2016 WL 1031154, at *7
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`(a party may question another party “about their alleged bias” at trial); Cont’l Cirs., 435 F. Supp.
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`3d at 1019 (“And to the extent persons affiliated with Plaintiff may receive substantial
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`compensation through the litigation, that fact bears on their credibility.”). Indeed, the consulting
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`agreements of
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` confirms the relevance of the requested documents
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`, which is a
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`significant financial incentive to provide testimony favorable to Touchstream. Given
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`Touchstream’s small size, witnesses with an ownership stake in the company would also recover
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`from the litigation and therefore have a similar incentive. Comcast thus requires any agreements
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`demonstrating Financial Interests to assess the bias of all witnesses and impeach them should
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`they minimize or deny their interest in the case.
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`Second, Touchstream must produce capitalization tables and similar documents in order
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`for Comcast to understand Touchstream’s ownership structure and how it has changed over time.
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`Without such documents, Comcast cannot test Touchstream’s assertions about who has a
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`6
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`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 10 of 13 PageID #: 1021
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`Financial Interest or assess how substantial those interests are as compared to each other.
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`Indeed, Touchstream has acknowledged the relevance of this information by producing its
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`capitalization table from 2013, which shows the interests that several witnesses had at that time.
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`Yet Touchstream now refuses to produce its current capitalization table or any other historical
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`ones—even though these tables would show the nature and extent of any Financial Interests and
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`how they have changed over time. Touchstream cannot claim that it would be too burdensome
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`to produce these documents, which any company must maintain and which Touchstream has
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`already produced from 2013.
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`Third, documents such as profit-sharing or litigation-funding agreements are relevant to
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`the valuation of the Asserted Patents.3 See, e.g., Impact Engine, 2020 U.S. Dist. LEXIS 145636,
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`at *4-5 (“[Defendant] is entitled to discovery of litigation funding agreements . . . because they
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`are relevant to: (1) establish the value of the patents at issue . . . .”); Gamon Plus, 2022 WL
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`18284320, at *2. In particular, these agreements may show the “valuations placed on the . . .
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`patents prior to the present litigation.” Electrolysis Prevention Sols. LLC v. Daimler Truck N.
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`Am. LLC, 2023 WL 4750822, at *4-5 (W.D.N.C. July 24, 2023). Touchstream has not
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`articulated any concern regarding burden in refusing to produce any such agreements, nor has it
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`asserted any privilege over them.
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`IV. CONCLUSION
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`For the foregoing reasons, Comcast respectfully requests that the Motion be granted.
`
`
`3 This Court’s decisions in Fleet Connect Sols. LLC v. Waste Connections US, Inc., 2022
`WL 2805132 (E.D. Tex. June 29, 2022), and Hardin v. Samsung Elecs. Co., 2022 WL 14976096
`(E.D. Tex. Oct. 25, 2022), do not require a different result. In Fleet Connect, the Court
`considered potential relevance primarily to standing. Hardin concerned the discoverability of
`documents created by outside counsel that were then shared with potential litigation funders.
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`7
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`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 11 of 13 PageID #: 1022
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`Dated: April 10, 2024
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`
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`Respectfully submitted,
`
`/s/ Ashok Ramani
`Deron Dacus (State Bar No. 00790553)
`THE DACUS FIRM, P.C.
`821 ESE Loop 323, Suite 430
`Tyler, TX 75701
`Tel: (903) 705-1117
`Fax: (903) 581-2543
`ddacus@dacusfirm.com
`
`Ashok Ramani (CA Bar No. 200020)
`David J. Lisson (CA Bar No. 250994)
`James Y. Park (CA Bar No. 343659)
`Micayla Hardisty (CA Bar No. 333246)
`DAVIS POLK & WARDWELL LLP
`1600 El Camino Real
`Menlo Park, CA 94025
`ashok.ramani@davispolk.com
`david.lisson@davispolk.com
`james.park@davispolk.com
`micayla.hardisty@davispolk.com
`
`Alena Farber (NY Bar No. 5896170)
`DAVIS POLK & WARDWELL LLP
`450 Lexington Avenue
`New York, NY 10017
`alena.farber@davispolk.com
`
`Counsel for Comcast Defendants
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`8
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`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 12 of 13 PageID #: 1023
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`CERTIFICATE OF CONFERENCE
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`I hereby certify that counsel has complied with the meet and confer requirement in Local
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`Rule CV-7(h), and that this motion is opposed. Ashok Ramani, lead counsel for Comcast, and
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`Deron Dacus, local counsel for Comcast, met and conferred by Zoom videoconference on March
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`14, 2024 with Ryan Dykal, lead counsel for Plaintiff. The parties were unable to reach
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`agreement as to the relief sought in this motion. As such, discussions have conclusively ended in
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`an impasse, leaving an open issue for the Court to resolve.
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`/s/ Ashok Ramani
`Ashok Ramani
`
`/s/ Deron Dacus
`Deron Dacus
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`I hereby certify that this document is authorized to be filed under seal pursuant to the
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`Protective Order entered in this case.
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`
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`/s/ Ashok Ramani
`Ashok Ramani
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`9
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`Case 2:23-cv-00059-JRG Document 39 Filed 04/16/24 Page 13 of 13 PageID #: 1024
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 10, 2024 true and correct copies of the foregoing
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`COMCAST’S MOTION TO COMPEL INFORMATION REGARDING FINANCIAL
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`INTERESTS were served upon the following as indicated:
`
`SHOOK HARDY & BACON LLP
`Robert H. Reckers
`Andrew M. Long
`Meagan Janee Mitchell
`Anita Liu
`600 Travis Street, Suite 3400
`Houston, TX 77002
`rreckers@shb.com
`amlong@shb.com
`mjmitchell@shb.com
`aliu@shb.com
`Ryan Dykal
`2555 Grand Blvd.
`Kansas City, MO 64108
`rdykal@shb.com
`Counsel for Plaintiff Touchstream Technologies, Inc.
`
`
`
`
`
`☒ Via Email
`☐ Via Overnight Courier
`☐ Via Hand Delivery
`☐ Via First Class Mail
`
`/s/ Angela Quach
`Angela Quach
`Senior Litigation Paralegal
`
`10
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`