Case 6:21-cv-00569-ADA Document 312 Filed 06/03/25 Page 1 of 13
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`TOUCHSTREAM TECHNOLOGIES, INC.,
`Plaintiff,
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`v. Civil Case No. 6:21-cv-569-ADA
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`GOOGLE LLC, JURY TRIAL DEMANDED
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`Defendant.
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`LoD L LD LD LD L LD LN LN O
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`GOOGLE LLC’S MOTION FOR RECONSIDERATION OF THE COURT’S
`PRETRIAL ORDER EXCLUDING GOOGLE’S TWONKY SYSTEM-BASED
`INVALIDITY THEORIES FROM TRIAL
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`Case 6:21-cv-00569-ADA Document 312 Filed 06/03/25 Page 2 of 13
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES ..ottt il
`TABLE OF ABBREVIATIONS ..ottt iii
`TABLE OF EXHIBITS ...ttt sttt sttt sttt et st v
`INTRODUCTION ...ttt ettt sttt ettt ettt e st esae et e ssee st enbesneenaeenseeseenseenseeneenees 1
`L. BACKGROUND ...ttt sttt sttt sttt sae e s nas 1
`A. The TWONKY SYSEEIM ...eiiiiiiiiiiiiiiieieeeeeeeecirereeeeeeeeeeettrreeeeeeeeeeeanrbraeeeaeeeeeaansnsraeeeaaens 1
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`B. The Court Excluded Google’s Twonky System-Based Invalidity Theories.......... 2
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`II. LEGAL STANDARD.......ooitiiieiieeeete ettt ettt st sae e eneenes 4
`L. ARGUMENT ...ttt ettt ettt sttt et st e b et saeenes 5
`CONCLUSION ...ttt ettt ettt ettt et e sttt et e s st et e eseeeseenseeneesseeseensesseenseeneesseenseeneeaneannens 7
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`Case 6:21-cv-00569-ADA Document 312 Filed 06/03/25 Page 3 of 13
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`TABLE OF AUTHORITIES
`Page
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`CASES
`Abbott v. Equity Grp.,
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`2 F.3d 613 (5th Cir. 1993) .t sttt e 5
`Am. Canoe Assoc. v. Murphy Farms, Inc.,
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`326 F.3d 505 (4th Cir. 2003) .eueeiiiieieeeieee ettt ettt et e 5
`Austin v. Kroger Tex., L.P.,
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`864 F.3d 326 (5th Cir. 2017) eeeueieiiiiiieieeeseeee ettt ettt s 5
`Deffenbaugh-Williams v. Wal-Mart Stores, Inc.,
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`188 F.3d 278 (5th Cir. 1999) ..t 4
`Hill v. Int’l Paper Co.,
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`121 F.3d 168 (5th Cir. T997) .ottt et 5
`Ingenico Inc. v. IOENGINE, LLC,
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`No. 2023-1367, 2025 WL 1318188 (Fed. Cir. May 7, 2025) ...cccceeviiiiiiiiieieeieeeeee 1,4,6
`Ruben A. v. El Paso Indep. Sch. Dist.,
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`2009 WL 10669147 (W.D. Tex. Aug. 13, 2009) .....ccuiiiiiieiiieeiieeeiieeeiee et 5
`STATUTES
`B LS. CL § L0ttt ettt et h e et h ettt at e e bt e bt e e e e nate e b e eaeas 6
`35 LS G, § L0ttt ettt et h e et h et e bt a bt bt e h e e e beenateebeeeaaas 6
`3 U S . § 3T ettt ettt et st be e e passim
`OTHER AUTHORITIES
`Fed. R Civ. PS4 ettt ettt ettt et e 4,5
`Fed. R.Civ. Pu 50 et ettt et sttt e be e 5
`| D SO OV €3 OO PRR PP 4
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`Case 6:21-cv-00569-ADA Document 312 Filed 06/03/25 Page 4 of 13
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`TABLE OF ABBREVIATIONS
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`Abbreviation Definition
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`Google Google LLC
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`Touchstream Touchstream Technologies, Inc.
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`’251 patent U.S. Patent No. 8,356,251 (PTX-865)
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`’528 patent U.S. Patent No. 8,782,528 (PTX-885)
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`’289 patent U.S. Patent No. 8,904,289 (PTX-863)
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`asserted patents the *251 patent, the *528 patent, and the *289 patent
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`*All emphasis added unless otherwise noted.
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`Case 6:21-cv-00569-ADA Document 312 Filed 06/03/25 Page 5 of 13
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`TABLE OF EXHIBITS
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`Exhibit Description
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`Ingenico Inc. v. IOENGINE, LLC, No. 2023-1367, 2025 WL
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`A 1318188 (Fed. Cir. May 7, 2025) (precedential).
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`Case 6:21-cv-00569-ADA Document 312 Filed 06/03/25 Page 6 of 13
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`INTRODUCTION
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`The Federal Circuit’s recent precedential decision in Ingenico Inc. v. IOENGINE, LLC,
`No. 2023-1367, 2025 WL 1318188 (Fed. Cir. May 7, 2025) (Exhibit A), contradicts this Court’s
`pretrial ruling that IPR estoppel precluded Google from presenting its Twonky System-based
`invalidity theories at trial. This change in the law entitles Google to a new trial to present its
`Twonky System theories to a jury.
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`Ingenico resolved a split among the district courts about the proper scope of the IPR
`estoppel statute, 35 U.S.C. § 315(e)(2). This Court, along with some other district courts,
`concluded that § 315(e)(2) prevented defendants from presenting system prior-art theories at trial
`when the evidence of how those systems worked consisted of technical documentation and other
`printed publications that, in this Court’s and other courts’ views, reasonably could have been raised
`in parallel IPRs. The Federal Circuit came out the other way. It held that an invalidity theory
`based on a prior-art system is not a “ground” that could have been raised in an IPR—even if the
`evidence of how the prior-art system worked consisted of technical documentation and other
`printed publications.
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`Ingenico makes clear that this Court’s pretrial ruling rested on a mistaken legal premise.
`Because this Court has not yet entered final judgment, this Court should reconsider and reverse its
`pretrial ruling excluding Google’s Twonky System-based invalidity theories from trial and grant
`a new trial on invalidity.
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`L. BACKGROUND
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`A. The Twonky System
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`The Twonky System was a software suite comprising several interacting software packages
`developed by PacketVideo Corporation. Dkt. 150-1 4 111. PacketVideo designed the Twonky
`System to allow customers to access and control media across a network on various devices,
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`including laptops, smartphones, and display devices. See id. 44 111-33. The Twonky System was
`publicly available well before Touchstream sought the asserted patents and thus is prior art. See
`id §111.
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`Throughout this case, Google developed invalidity theories concerning the Twonky
`System. During discovery, Google sought documentation and other information describing the
`system’s functionality, as well as videos that demonstrated its use. Among other things, Google
`subpoenaed third-party J.M. Driver LLC d/b/a Lynx Technology (the corporate successor to
`PacketVideo) for internal documentation and requested documents directly from former
`PacketVideo employees. See Dkt. 136-11 9§ 2; Dkt. 149-9. Google produced these materials to
`Touchstream.
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`Google’s technical expert, Dr. Ketan Mayer-Patel, relied on these materials describing the
`Twonky System when opining on the invalidity of the asserted claims. Dkt. 150-1 92, 111. Dr.
`Mayer-Patel developed numerous invalidity theories that relied on the Twonky system and
`disclosed them in his expert report. E.g., Dkt. 150-1 99 472-676, 794-870, 1328-689, 1868-2042,
`2389-549, 2637-716. Dr. Mayer-Patel was prepared to present these Twonky System-based
`theories to the jury at trial.
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`B. The Court Excluded Google’s Twonky System-Based Invalidity Theories
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`After Touchstream sued Google for infringement, Google petitioned for IPR of each of the
`asserted patents. While seeking institution, Google stipulated that, if the Patent Trial and Appeal
`Board were to institute the IPRs, Google would not “pursue in the related district court proceeding
`‘any ground that [Google] raised or reasonably could have raised’ during the IPRs.” Dkt. 136-4.
`And in that stipulation, Google cited and quoted 35 U.S.C. § 315(e)(2). The Board instituted
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`review, and as a result, the stipulation barred Google from raising any grounds in this case that it
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`would be statutorily estopped from pursuing under 35 U.S.C. § 315(e)(2). See id.'
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`Touchstream moved to exclude Google from presenting its Twonky System-based
`invalidity theories at trial. Dkt. 136. It argued that, because Google stipulated “to be bound by
`the same limits set forth in the IPR estoppel provision of § 315—which precludes an IPR petitioner
`from asserting ‘any [invalidity] ground that the petitioner raised or reasonably could have raised
`during that inter partes review’ in litigation involving the same patent and claims,” id. at 3
`(alteration in original), Google was precluded from presenting any system art at trial if Google
`intended to use patents or printed publications to prove how that prior-art system worked, id. at 4.
`In their briefing, both Touchstream and Google emphasized the split among the district courts on
`this issue. See Dkt. 136 (Touchstream’s motion) at 4; Dkt. 149 (Google’s opposition) at 4-6;
`Dkt. 177 (Touchstream’s reply) at 5-7.
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`At the June 28, 2023 Pretrial Conference, this Court granted Touchstream’s motion to
`exclude invalidity theories that relied on the Twonky System. Dkt. 232 at 1-2. In its omnibus
`pretrial order memorializing its ruling, the Court briefly explained that it was excluding those
`theories “because the Twonky system has ‘materially identical’ disclosures as the prior art
`[Google] could have relied on in the IPR[s].” Id. As a result of that ruling, Google was unable to
`present any of those invalidity theories to the jury at the July 2023 trial.
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`On May 7, 2025, the Federal Circuit issued its precedential decision in /ngenico, addressing
`the scope-of-estoppel issue that was at the heart of Touchstream’s motion to exclude and this
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`Court’s ruling. The Federal Circuit explained that there was “a split among district courts” about
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`! On September 27 and October 2, 2023, the Board decided the IPRs in Touchstream’s favor;
`Google has appealed those judgments. The Board’s issuance of its decisions does not alter the
`estoppel analysis. While the timing differs as to when estoppel attaches (§ 315(¢e)(2) estoppel
`attaches when an IPR “results in a final written decision,” whereas Google’s stipulation bound it
`as of institution), the scope of the preclusion was identical.
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`the “proper interpretation” of the term “ground” as used in 35 U.S.C. § 315(e)(2). Ingenico, 2025
`WL 1318188, at *5. Interpreting that term, the Federal Circuit held that “IPR estoppel does not
`preclude a petitioner from relying on the same patents and printed publications as evidence in
`asserting a ground that could not be raised during the IPR, such as that the claimed invention was
`known or used by others, on sale, or in public use.” Id. at *7. Because “a ground is not the prior
`art asserted during an IPR,” the Federal Circuit affirmed the district court’s ruling permitting the
`defendant to present at trial a prior-art system that “was known or used by others, on sale, or in
`public use” as evidenced by patents, technical documentation, “and other printed publications.”
`Id. at *7-8.
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`Following the Federal Circuit’s Ingenico decision, Google conferred with Touchstream,
`explaining that the decision undermined the basis for this Court’s pretrial ruling excluding the
`Twonky System prior-art theories from trial. See L.R. CV-7(g). Google sought Touchstream’s
`consent to request a new trial on these invalidity theories. Touchstream declined to consent and
`has indicated that it will oppose this motion.
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`II. LEGAL STANDARD
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`An intervening change in the law warrants reconsideration of an earlier ruling that is
`contrary to that change and warrants the grant of a new trial. “[ W]hen law changes in unanticipated
`ways,” a party is generally entitled to “a new trial to give [it] the benefit of the new law and the
`opportunity to present evidence relevant to that new standard.” Deffenbaugh-Williams v. Wal-
`Mart Stores, Inc., 188 F.3d 278, 282 (5th Cir. 1999) (discussing an intervening change in law while
`a case is pending on appeal). At least two Federal Rules of Civil Procedure provide means for
`granting such relief here.
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`Rule 54(b) “allows parties to seek reconsideration of interlocutory orders and authorizes
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`the district court to ‘revise[] at any time’ ‘any order or other decision ... [that] does not end the
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`action.”” Austin v. Kroger Tex., L.P., 864 F.3d 326, 336 (5th Cir. 2017) (quoting Fed. R. Civ. P.
`54(b)). This approach “reflect[s] the ‘inherent power of the rendering district court to afford such
`relief from interlocutory judgments as justice requires.”” Id. at 337 (quoting Cobell v. Jewell, 802
`F.3d 12, 25-26 (D.C. Cir. 2015)). Courts may exercise this power “at any time prior to entering
`final judgment.” Ruben A. v. El Paso Indep. Sch. Dist., 2009 WL 10669147, at *3 (W.D. Tex.
`Aug. 13, 2009); see also Am. Canoe Assoc. v. Murphy Farms, Inc., 326 F.3d 505, 514-15 (4th Cir.
`2003) (A “district court retains the power to reconsider and modify its interlocutory judgments,
`including partial summary judgments, at any time prior to final judgment when such is
`warranted.”). In this case, the Court entered judgment on the jury’s verdict, Dkt. 256, but that
`judgment is not final because post-trial motions remain outstanding.
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`Rule 59 also permits a new trial based on an intervening change in law. Hill v. Int’l Paper
`Co., 121 F.3d 168, 177 (5th Cir. 1997) (granting a new trial based on “a mid-course change in
`[governing] law”). Although Rule 59 requires parties to seek a new trial within 28 days of
`judgment, the Fifth Circuit has interpreted the Rule liberally, permitting district courts to consider
`additional grounds for a new trial after a party files its initial Rule 59 new-trial motion. See, e.g.,
`Abbott v. Equity Grp., 2 F.3d 613, 628 (5th Cir. 1993) (“[A] trial court may in the exercise of its
`sound discretion allow a tardy amendment stating an additional ground for a new trial.” (emphasis
`omitted)).
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`III. ARGUMENT
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`The Federal Circuit’s Ingenico decision undermines the basis of this Court’s pretrial ruling
`precluding Google from presenting the Twonky System prior-art theories at trial. Given this
`intervening change in law, this Court should reconsider under Rules 54(b) and/or 59 its pretrial
`ruling and order a new trial on all of Google’s invalidity theories that rely on the Twonky System.
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`Ingenico resolved the split among the district courts concerning the scope of IPR estoppel
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`under 35 U.S.C. § 315(e)(2). It “h[eld] that IPR estoppel applies only to a petitioner’s assertions
`in district court that the claimed invention is invalid under 35 U.S.C. §§ 102 or 103 because it was
`patented or described in a printed publication (or would have been obvious only on the basis of
`prior art patents or printed publications).” Ingenico, 2025 WL 1318188, at *7. It further held that
`“IPR estoppel does not preclude a petitioner from asserting that a claimed invention was known
`or used by others, on sale, or in public use in district court” because “[t]hese are different grounds
`that could not be raised during an IPR.” Id. And “IPR estoppel does not preclude a petitioner
`from relying on the same patents and printed publications” that reasonably could have been used
`in the IPR as evidence in district court “in asserting a ground that could not be raised during the
`IPR.” Id.
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`The Federal Circuit’s Ingenico decision specifically focused on a prior-art system (“the
`DiskOnKey System”) like the Twonky System here. After filing IPRs, the defendant in the parallel
`district court litigation asserted that the DiskOnKey System invalidated the asserted claims
`because it “was known or used by others, on sale, or in public use.” See id. at *1, *7. The patentee
`moved under § 315(e)(2) to preclude the defendant from relying on documentation related to the
`DiskOnKey System because the defendant “reasonably could have been expected to raise it during
`the IPR proceedings.” Id. at *1. The district court disagreed and permitted the defendant to present
`the system-based invalidity theory at trial. /d. On the patentee’s appeal, the Federal Circuit
`affirmed. After interpreting the term “ground” as used in § 315(¢e)(2), the Federal Circuit held that
`the DiskOnKey system grounds were “grounds that could not have been raised during the IPR.”
`Id. at *8. This was so even though the defendant relied on a “Readme file and other printed
`publications” as “evidence to support these grounds” in the district court. /d.
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`Here, Google asserted that the claimed inventions were obvious over art, including the
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`Case 6:21-cv-00569-ADA Document 312 Filed 06/03/25 Page 12 of 13
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`Twonky System, that was in public use, on sale, prior sale, known in this country, or otherwise
`available to the public before the statutory critical dates. E.g., Dkt. 136-6 at 1-2, 62-63, 91-93;
`Dkt. 150-1, 99 111-33. This Court, however, excluded the Twonky System-based theories on
`grounds that the cited art had “‘materially identical’ disclosures as the prior art [Google] could
`have relied on in the IPR[s].” Dkt. 232 at 1-2. Ingenico is an intervening change in law that
`undermines the logic of that exclusionary ruling. Under Ingenico, Google is entitled to present its
`Twonky System-based invalidity theories to a jury. As a result, this Court should reconsider and
`reverse its pretrial ruling that precluded Google from doing so and grant a new invalidity trial on
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`those theories.
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`CONCLUSION
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`Based on the intervening change in law, the Court should reverse its pretrial ruling and
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`hold that Google is entitled to a new invalidity trial on its Twonky System theories.
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`Dated: June 3, 2025 Respectfully submitted,
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`By: /s/ Michael E. Jones with permission for
`Tharan Gregory Lanier
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`Michael C. Hendershot (admitted Pro Hac Vice)
`Tharan Gregory Lanier (admitted Pro Hac Vice)
`Evan M. McLean (admitted Pro Hac Vice)
`Gurneet Singh (admitted Pro Hac Vice)
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`JONES DAY
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`1755 Embarcadero Road
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`Palo Alto, CA 94303
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`(650) 739-3939
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`mhendershot@jonesday.com
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`emclean@jonesday.com
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`gsingh@jonesday.com
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`Case 6:21-cv-00569-ADA Document 312 Filed 06/03/25 Page 13 of 13
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`Tracy Ann Stitt (admitted Pro Hac Vice)
`Jennifer L. Swize (admitted Pro Hac Vice)
`Edwin O. Garcia (admitted Pro Hac Vice)
`JONES DAY
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`51 Louisiana NW
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`Washington, DC 20001
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`(202) 879-3939
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`Fax: (202) 626-1700
`tastitt@jonesday.com
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`John R. Boulé¢ III
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`CA State Bar No. 322929
`JONES DAY
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`555 South Flower St.
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`Los Angeles, CA 90071
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`jboule@jonesday.com
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`Michael E. Jones
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`TX State Bar No. 10929400
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`E-mail: mikejones@potterminton.com
`Shaun W. Hassett
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`TX State Bar No. 24074372
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`E-mail: shaunhassett@potterminton.com
`POTTER MINTON PC
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`102 N. College Ave., Suite 900
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`Tyler, TX 75702
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`Telephone: (903) 597-8311
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`Facsimile: (903) 593-0846
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`Attorneys for Defendant Google LLC
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