Touchstream Technologies, Inc. v. Google LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

TOUCHSTREAM TECHNOLOGIES, INC.,

Plaintiff,

Civil Case No. 6:21-cv-569-ADA

v.

JURY TRIAL DEMANDED

GOOGLE LLC,

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,

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.

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

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.

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.

UNITED STATES MAGISTRATE JUDGE