Case 6:21-cv-00569-ADA Document 120 Filed 12/16/22 Page 1 of 5
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`GOOGLE LLC,
`
`
`Civil Case No. 6:21-cv-569-ADA
`
`JURY TRIAL DEMANDED
`
`Defendant.
`
`
`ORDER DENYING PLAINTIFF TOUCHSTREAM TECHNOLOGIES, INC.’S MOTION
`FOR RECONSIDERATION OF DENIAL OF MOTION TO COMPEL PRODUCTION
`OF GLOBAL USAGE METRICS (ECF NO. 107) AND GRANTING DEFENDANT
`GOOGLE, LLC’S OPPOSED MOTION FOR LEAVE TO FILE SUR-REPLY (ECF NO.
`114)
`
`Before the Court is Plaintiff Touchstream Technologies, Inc.’s (“Touchstream”) Motion
`
`for Reconsideration of Denial of Motion to Compel Production of Global Usage Metrics. ECF No.
`
`107 (“the Motion”). Defendant Google LLC (“Google”) responded to the Motion on November
`
`28, 2022, ECF No. 110, to which Touchstream replied on December 1, 2022. ECF No. 112. Google
`
`then moved for leave to file a sur-reply (ECF No. 114), which the Court hereby GRANTS. For
`
`the reasons described herein, the Court DENIES Touchstream’s Motion.
`
`I.
`
`BACKGROUND
`
`Touchstream filed suit against Google on June 4, 2021, alleging infringement based on
`
`Google’s Chromecast product, which allegedly performs
`
`the
`
`infringing Chromecast
`
`functionalities. ECF No. 1 ¶ 45. The asserted claims in this case are method claims that purportedly
`
`relate to “casting” of video—finding content on one screen and watching it on another. See
`
`generally ECF No. 1. Touchstream alleges that the accused Chromecast functionalities comprise
`
`the methods performed through the operation of at least the standalone Chromecast devices (e.g.,
`
`the Chromecast 1st Generation, Chromecast 2nd Generation, Chromecast 3rd Generation,
`1
`
`
`
`

`

`Case 6:21-cv-00569-ADA Document 120 Filed 12/16/22 Page 2 of 5
`
`Chromecast Ultra, and Chromecast with Google TV), as well as devices implementing Chromecast
`
`built-in (collectively, “Chromecast” or “the Chromecast products”). Id. ¶ 48. The motion to compel
`
`sought information on casting and non-casting activity occurring outside the United States. ECF
`
`No. 111.
`
`II.
`
`LEGAL STANDARD
`
`Under Federal Rule of Civil Procedure 59(e), courts may reconsider prior rulings based
`
`upon “(1) an intervening change in controlling law; (2) the availability of new evidence not
`
`previously available; or (3) the need to correct a clear error of law or prevent manifest injustice.”
`
`In re Benjamin Moore & Co., 318 F.3d 626, 629 (5th Cir. 2002).
`
`III. DISCUSSION
`
`In its Motion, Touchstream urges the Court to reconsider its ruling during the November
`
`16, 2022, discovery hearing, during which it denied Touchstream’s request to compel Google to
`
`produce global usage metrics. ECF No. 107 at 1. The Motion adduces no new facts or evidence
`
`that warrant reconsideration. Indeed, it re-urges the same positions and case law advanced in earlier
`
`briefing submitted to the Court. It does not cite a single case that became available since this
`
`Court’s prior denial of the motion to compel that presents novel arguments or intervening changes
`
`in controlling law. Touchstream asserts that the Court’s incorrect basis for the ruling was that
`
`Touchstream has alleged only method claims, and Touchstream insists that it is not the type of
`
`claim asserted that controls whether foreign damages are recoverable. Id. Given that there is no
`
`intervening change in controlling law and no new evidence available, the Court reviews
`
`Touchstream’s Motion based on the need to correct a clear or manifest error of law or fact.
`
`Touchstream’s Motion advances one main argument– that whether domestic infringement
`
`of method claims can be tied to foreign sales controls whether foreign damages are recoverable.
`
`
`
`2
`
`

`

`Case 6:21-cv-00569-ADA Document 120 Filed 12/16/22 Page 3 of 5
`
`ECF No. 107 at 1 (citing ArcherDX, LLC v. Qiagen Scis., LLC, 2022 WL 4597877, at *13 (D. Del.
`
`Sept. 30, 2022) (affirming verdict for foreign damages based on evidence that “domestic
`
`infringement (use of the accused products) was a substantial cause of the sale of products abroad,”
`
`stating, “[i]n CMU, the Federal Circuit noted that the products ‘practice[ ] the method in its normal
`
`intended use’ and concluded that causation to domestic infringing uses was established given the
`
`design, simulation, and testing of the chips in California involved infringing uses and caused the
`
`worldwide sales”), citing Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283, 1306-
`
`07 (Fed. Cir. 2015)). Touchstream asserts that this is the case here, and that the Court should
`
`compel Google to produce its global usage metrics, as Google has stated that “N.D. Cal. is where
`
`Google was founded, maintains its headquarters, and researches, develops, designs, and primarily
`
`maintains the accused functionality in the accused Chromecast products.” Id. at 12 (citing ECF
`
`No. 27 at 5). Touchstream reasons that but for Google’s domestic infringement, Google could not
`
`have rolled out its infringing functionality to the rest of the world. Id.
`
`Touchstream’s reliance on ArcherDX and Carnegie Mellon is misplaced. The Court in
`
`ArcherDX explained that Carnegie Mellon addressed calculation of damages for infringement of
`
`a method claim that relied on the sales of products that perform that method. See ArcherDX, LLC,
`
`2022 WL 4597877, *12. There, an issue was involved that is not present in this case (whether
`
`certain sales of allegedly infringing chips happened in the United States); whereas the question
`
`here is where the method was practiced. See Carnegie Mellon Univ., 807 F.3d at 1305. The Federal
`
`Circuit in Carnegie Mellon clarified that there is a problem with [applying the royalty rate] to the
`
`chips made and delivered abroad, and never imported into the United States, unless those chips
`
`can fairly be said to have been sold here. Id. at 1305–06. Similarly, in ArcherDX, the jury was
`
`instructed that it could award use sales of products that practice the patented method outside the
`
`
`
`3
`
`

`

`Case 6:21-cv-00569-ADA Document 120 Filed 12/16/22 Page 4 of 5
`
`United Stated to measure damages if “(1) [defendant’s] infringement in the Unites States was a
`
`substantial cause of the sale of that product, and (2) [defendant] made or sold the product within
`
`the United States.” ArcherDX, LLC, 2022 WL 4597877, *12. Unlike in those two cases, here, it is
`
`uncontested that the foreign activities or products that allegedly infringe the accused method
`
`(through use of limited features not always used) abroad are not sold, used, or imported into the
`
`United States.
`
`Moreover, the other cases cited by Touchstream in its Motion to address whether damages
`
`are recoverable in connection with foreign sales when domestic activities listed in 35 U.S.C. 271(a)
`
`occur are inapposite. ECF No. 107 at 2 (citing W.H. Wall Fam. Holdings LLLP v. CeloNova
`
`Biosciences, Inc., No. 1:18-CV-303-LY, 2020 WL 1644003 (W.D. Tex. Apr. 2, 2020); Plastronics
`
`Socket Partners, Ltd. v. Dong Weon Hwang, 2019 WL 4392525, at *5 (E.D. Tex. June 11, 2019)).
`
`In W.H. Wall Fam. Holdings LLLP, the Court granted Plaintiff’s motion to compel where Plaintiff
`
`sought discovery for how many products Defendant manufactured, sold, or offered for sale in the
`
`United States, as well as information on products manufactured in the United States and shipped
`
`to or sold in foreign markets. See 2020 WL 1644003, *2–3. Similarly, Plastronics Socket Partners
`
`denied summary judgement where Plaintiff had adduced evidence suggesting that Defendant
`
`imported infringing products into the United States for their subsequent sale abroad. See 2019 WL
`
`4392525, *5.1
`
`
`1Touchstream cites two new cases in its Reply in support of its argument, but those cases are also
`distinguishable from the instant action. ECF No. 112 at 2 (citing McGinley v. Luv N’ Care, Ltd.,
`2018 WL 9814589, at *5 (W.D. La. Sept. 10, 2018); Polaris Innovations Ltd. v. Kingston Tech.
`Co., 2017 WL 3275615, at *13 (C.D. Cal. Feb. 14, 2017)). McGinley involved discovery of
`information relevant in determining whether sales of the allegedly infringing product occurred
`within the U.S. See McGinley, 2018 WL 9814589, *5. In Polaris, the Court addressed whether
`worldwide financial information Plaintiff sought from Defendant was relevant for Plaintiff to
`prove which sales and revenues were attributable to products ending up in the United States. See
`Polaris Innovations Ltd., 2017 WL 3275615, * 4, *10.
`4
`
`
`
`

`

`Case 6:21-cv-00569-ADA Document 120 Filed 12/16/22 Page 5 of 5
`
`The motion to compel sought information on casting and non-casting activity outside the
`
`United States. ECF No. 111. There is no dispute that infringement of a method claim requires that
`
`each of the claimed steps be performed within the United States. See INVT SPE LLC v. Int’l Trade
`
`Comm’n, 46 F.4th 1361, 1371 (Fed. Cir. 2022) (holding infringement of method “claims require[]
`
`actual performance of each claimed step . . . in the United States”); see also Cardiac Pacemakers,
`
`Inc. v. St. Jude Medical, Inc., 576 F.3d 1348, 1365 (Fed. Cir. 2009) (holding that the
`
`language, legislative history “support the conclusion that Section 271(f) does not apply to method
`
`patents.”). Touchstream therefore fails to identify a basis to allow discovery on foreign usage
`
`concerning products
`
`that allegedly perform
`
`the accused method outside
`
`the United
`
`States. Nor does Touchstream provide sufficient evidence
`
`to warrant
`
`the Court’s
`
`reconsideration of its denial of Touchstream’s motion to compel.
`
`IV.
`
`CONCLUSION
`
`For the reasons stated above, Defendant Google, LLC’s Opposed Motion for Leave to File
`
`Sur-Reply (ECF No. 114) is GRANTED, and Plaintiff Touchstream Technologies, Inc.’s Motion
`
`for Reconsideration of Denial of its Motion to Compel Production of Global Usage Metrics (ECF
`
`No. 107) is DENIED.
`
`SIGNED this 16th day of December, 2022.
`
`____________________________________
`DEREK T. GILLILAND
`UNITED STATES MAGISTRATE JUDGE
`
`5
`
`