Judge Gilstrap Upholds Verdict for Charter in Touchstream Case as Google Fights $339M Award

In March 2025, an Eastern District of Texas jury returned a verdict for Charter Communications in litigation filed by Touchstream Technologies, Inc., finding that the defendant did not infringe three patents through the provision of certain set-top boxes. District Judge Rodney Gilstrap has just refused to overturn that verdict, denying the plaintiff’s motions for a new trial and judgment as a matter of law (JMOL) on infringement. The decision comes amid ongoing activity in the Western District of Texas, where District Judge Alan D. Albright has yet to resolve a long-gestating dispute over whether the $339M in damages that a jury awarded to Touchstream from Alphabet (Google) in July 2023 should be considered a lump sum or a running royalty. As that issue sits undecided, Google has since argued that recent Federal Circuit rulings further bolster its posttrial challenges to that verdict, including one motion targeting the reliability of testimony from the plaintiff’s damages expert and another contesting a ruling that Google was barred from asserting an invalidity claim based on system prior art.

The Charter Case: No New Trial or JMOL for Touchstream

Touchstream, which represents that it does business as “Shodogg”, sued Charter (2:23-cv-00059) alongside fellow cable providers Altice (2:23-cv-00060) and Comcast (2:23-cv-00062) in February 2023, all in East Texas—comprising the plaintiff’s third wave of litigation, following an August 2017 case against Vizbee (1:17-cv-06247, filed in the Southern District of New York) and the June 2021 case against Google mentioned above (6:21-cv-00569, filed in West Texas as noted). The cases were initially consolidated under the lead action against Altice, until Judge Gilstrap transferred that case to the Eastern District of New York (2:24-cv-03186) in April 2024, designating Charter’s as the lead action instead.

Charter also challenged venue: In May 2023, the defendant filed a motion to dismiss for improper venue that further alleged certain pleading deficiencies, subsequently renewing that motion in response to two amended complaints (the first adding two patents— 11,048,751 and 11,086,934—to the one initially in suit, 8,356,251). The defendant argued that the plaintiff had improperly imputed the activity of a Texas Charter subsidiary, Spectrum Gulf Coast, LLC (SGC), to two other Charter entities in suit, parent entity Charter Communications, Inc. (CCI) and Charter Communications, LLC (CCL) that allegedly lack facilities, operations, or employees in Texas—acknowledging that the court had rejected a similar argument in a case against it from plaintiff Entropic Communications, LLC, and stating that it was bringing that same challenge here to preserve its rights.

The court also denied Charter’s motion here, adopting its reasoning from the Entropic case: In part, it determined that CCI was actually operating its business through Texas stores run by SGC, that CCL’s employees were acting as CCI’s agents at those stores, and that CCI had ratified the stores as its own, such that the stores were CCI’s “regular and established place of business”. The Federal Circuit rejected a Charter mandamus petition contesting that ruling in July 2024—finding that Charter’s arguments were “materially the same” as an unsuccessful mandamus petition it filed in the Entropic case, and concluding (as it did in the other proceeding) that those arguments “[a]t most . . . present a record-specific dispute”, and that the issues at play were not sufficiently “broad, fundamental, and recurring” to justify a writ of mandamus.

In August 2024, Charter and Comcast jointly filed a motion for summary judgment that the asserted claims are invalid under Alice, as ineligibly directed to the abstract idea of “controlling content on a display device using a mobile device”. Magistrate Judge Roy S. Payne recommended that the court deny the motion and grant a competing summary judgment motion of validity for Touchstream that same December, holding that the defendants had overgeneralized the claims. To the contrary, he determined that the claims were not directed to an abstract idea but instead to certain enhanced computer network functionality—specifically, “intra-system messaging between a media receiver, server system, and computing device”. Judge Gilstrap adopted that recommendation in February 2025, also adopting Judge Payne’s recommendation to deny a Charter motion for summary judgment of noninfringement (also filed in August 2024) except for certain accused set-top boxes (STBs) with SARA or Passport guides.

The case then proceeded to trial on March 3, 2025. On March 7, a jury returned a verdict finding that Charter had not infringed any of the tried claims: claims 1 and 7 of the ’251 patent, claims 12 and 13 of the ’751 patent, and claims 17, 18, and 20 of the ’934 patent. Having found noninfringement for all claims, the jury did not proceed to address validity.

Touchstream filed a motion for JMOL of noninfringement and a motion for a new trial on April 8. For the former, the plaintiff argued that JMOL was justified because only “Touchstream, not Charter, applied the Court’s actual constructions”, asserting that the defendant “improperly recast the patents-in-suit as limited to their preferred embodiment, which delivers internet content, and then repeatedly contrasted that embodiment with Charter’s accused functionalities, which do not deliver videos from the internet” (emphasis in original). Touchstream’s other motion asserted that a new trial was warranted both because the jury’s verdict was against the great weight of the evidence, and because Charter had allegedly presented certain “irrelevant and confusing arguments” that “systematically” cited the specification and certain Touchstream marketing materials, doing so under the “guise” of presenting its damages case but really making “improper” arguments on infringement.

Judge Gilstrap denied both motions on August 25, 2025, starting by finding that Charter’s trial presentation was neither “unfair” nor “prejudicial”. The court determined as an “initial matter” that Touchstream had “waived its objection to most of the testimony it relies on in the Motion for New Trial by failing to properly raise it at trial”. Judge Gilstrap then held that Touchstream had mischaracterized Charter’s position as arguing that “it did not infringe because the accused system differs from the Asserted Patents’ preferred embodiment, which delivers internet video content”. Rather, Judge Gilstrap held, Charter had actually argued “that the Asserted Claims were invalid for a lack of written description because the Asserted Claims covered both internet and non-internet content”—further determining that it had properly relied upon prior art for damages and on Touchstream’s marketing materials for damages and willfulness. Since there was no evidence that the jury had ignored the court’s specific instructions not to compare the accused products to preferred embodiments, Judge Gilstrap determined that a new trial was not warranted on this basis. Nor was there any evidence that Charter had confused the jury on that issue, Judge Gilstrap found—also rejecting the plaintiff’s contention that the court should have offered a more specific jury instruction. Judge Gilstrap further declined to order a new trial based on Charter’s statements during trial that Touchstream’s CEO, Herb Mitschele, had not been present for closing arguments.

The court also found no basis for setting aside the jury’s verdict by granting JMOL for Touchstream—finding that while Touchstream had not waived its JMOL motion and that it had raised only issues of fact and not issues of law, both as argued by Charter, the infringement verdict had in fact been supported by substantial evidence. In particular, the court agreed with Charter that there was substantial evidence supporting the jury’s finding that the manner in which a MAC address is associated with the accused Charter set-top boxes did not meet the “providing” limitation of the ‘751 and ‘934 patents (describing how a “unique identifier” is provided by a “media receiver” “to a computing device in communication with a server system”) and that Charter’s expert on infringement also presented substantial evidence supporting the verdict as well. The court further found that there was substantial evidence that the associated MAC addresses do not meet the “assigning” and “obtaining” limitations of the ‘251 and ‘751 patents (which concern “assigning a synchronization code” and “obtaining a synchronization code”), that the accused set-top boxes do not meet certain limitations describing a “media player” and variations thereof, and that the accused systems do not include “universal” commands.

The Google Case: Defendant Points Court to Federal Circuit Precedent

Touchstream’s West Texas case against Google accused the company of infringing three patents—the ‘251 patent and two others (8,782,528; 8,904,289)—through the provision of Google’s Chromecast products and services. In April 2022, after being sued in West Texas in June 2021, Google filed petitions for inter partes review (IPR) of claims 1-2 and 6-8 of the ’251 patent (IPR2022-00795), claims 1-5, 8, 11, -12, 14-15, and 27-28 of the ‘528 patent (IPR2022-00793), and claims 1-2 and 5-9 of the ‘289 patent (IPR2022-00794). The Patent Trial and Appeal Board ultimately declined to cancel any of the challenged claims in a set of final written decisions issued in September (the -793 and -795 IPRs) and October 2023 (the -794 IPR). A consolidated appeal of those decisions is ongoing.

In December 2022, Google filed a motion for summary judgment of noninfringement (a public version of which is available here) in which it argued that after discovery, Touchstream—“in an effort to stretch the claims to cover Google’s Accused Products”—read “both the claimed ‘server system’ and the claims ‘display device’ of the Asserted Claims” to be the same, contrary to claim construction principles, according to Google. In a summary of pretrial rulings, the court indicated that it denied this aspect of Google’s motion, leaving each of “server system” and “display device” to its plain and ordinary meaning, as is Judge Albright’s frequent practice. The summary further captured the court’s rulings that Chromecast use outside the US should not be factored into any damages and that Google’s motions to dismiss claims for willful infringement and for a permanent injunction were denied.

The case then went to trial in July 2023, culminating in a verdict that found all tried claims infringed—claims 1 and 8 of the ‘251 patent, claims 1 and 14 of the ‘528 patent, and claims 1-2 of the ‘289 patent—and not proven invalid. As noted above, the jury awarded roughly $339M in damages.

However, as noted above, the parties have since contested what kind of damages that jury actually intended to award. At trial, Touchstream asked for $941,419,212, while Google’s damages expert put the figure, for any infringement found, at $8.98M. In response to the question on the verdict form, “What is the total amount of damages you find for Google’s infringement of the Asserted Patent(s)?”, the jury responded $338,760,000. The parties did not submit a question that asked the jury to characterize its response as a “fully-paid-up lump sum” or as a running royalty for a limited period of past infringement.

Touchstream moved to amend the judgment in light of this alleged ambiguity, asking Judge Albright to divide the award by its ask to arrive at an “implied royalty rate” of 35.98%, to be applied as a “post-verdict adjustment” to the rates that Touchstream’s damages expert had suggested at trial, one that would result in an amended award exceeding $1B. Google opposed that motion by arguing, in part, that the jury’s award should be viewed as a “fully-paid-up lump sum”, arguing that it “bears no resemblance to a running royalty like Touchstream sought” and cannot possibly have resulted from the multiplication of suggested/adopted rates against royalty bases. In the alternative, to its other posttrial motions (contesting the jury’s infringement and validity findings) and to this characterization of the damages award, Google argued against Touchstream’s suggested implied royalty rates, as adjusted upward post-verdict, contending that “Touchstream’s multiplier has no sound basis and should be rejected out of hand”.

Judge Albright held a hearing on the parties’ posttrial motions in January 2024 in which he addressed in detail only the parties’ positions as to damages award adjustment, otherwise denying Google’s posttrial motions. While Judge Albright stated that the court would likely get an order out “pretty quickly” on the issues addressed at the hearing, none has yet issued. The delay possibly reflects certain sticking points highlighted at that hearing, including Judge Albright’s apparent incredulity that the court has the discretion to resolve such a glaring dispute in the first place.

–  Google: Decision Allowing Damages Testimony Was Contrary to EcoFactor Decision

As the issue of the damages award adjustment sits unresolved, Google has in the meantime pushed the court to reconsider the denial of its posttrial motions. One of those motions asks the court to revisit its orders allowing the testimony of Touchstream’s damages expert, Mark Chandler. In a January 2023 Daubert motion, Google had asked the court to exclude Chandler’s reasonable royalty opinion as unreliable because it was based on a “single agreement—the 2013 ‘Software Development and Licence Agreement’ between Touchstream and Quadriga (a small European hospitality-services company)—that did not have subject matter comparable to the hypothetical negotiation here”.

Per Google’s subsequent summary of those arguments, Chandler had adopted the $0.48 rate from that agreement “wholesale” but allegedly “fail[ed] to provide any explanation as to how or why he reached that conclusion,’ [such that] his opinion was ’not supported by any reliable facts or data—and in fact [wa]s directly contradicted by the agreement itself”. In contrast to Chandler’s assumptions, Google explained, the agreement “was not a patent license” and “did not mention any particular patent, much less the three asserted here”, the license provision actually stating that the $0.48 rate was for the right to use certain “Licensed Materials and Documentation”. Beyond that, Google argued that Chandler had failed to apportion to the value of the patented invention by applying “three arbitrary ‘discounts’ to adjust the Quadriga rate for the three different types of devices accused in this case (pure Chromecast Enabled Devices, Google-branded Chromecast Enabled Devices, and third-party Chromecast Enabled Devices)”.

Judge Albright denied that Daubert motion, and at the aforementioned posttrial hearing he summarily rejected Google’s motion for a new trial based on the alleged unreliability of Chandler’s damages opinion.

In June 2025, Google filed a motion for reconsideration arguing that Judge Albright’s decision to allow Chandler’s testimony was contrary to the Federal Circuit’s May 2025 majority en banc decision in EcoFactor v. Google. That opinion appears to significantly tighten the standard for admitting expert testimony on damages, holding in part that Judge Albright been wrong to admit expert testimony on damages from plaintiff EcoFactor, Inc. because it was not “based upon sufficient facts or data”, ruling that a district court errs by admitting expert testimony where a “critical fact” relied upon by the expert is contradicted by relevant evidence. As a result, the majority overturned a $20M damage award against Google, sending the case back for a new trial on damages.

A similar result is required here, Google now argues:

Under EcoFactor, there can be no doubt that Mr. Chandler’s opinion was based on unreliable facts and data and was the product of unreliable methodology. Not only did Mr. Chandler rely on unsupported assumptions throughout his analysis, but the foundational premise of his opinion—his analysis of a single agreement between Touchstream and Quadriga—mirrors the flawed basis and methodology that the Federal Circuit rejected in EcoFactor: Mr. Chandler applied an interpretation of the Quadriga agreement that, like in EcoFactor, is contrary to its plain language. Moreover, again like in EcoFactor, the only other evidence Mr. Chandler cited for his interpretation was the unsupported assertion of Touchstream’s former CEO, an interested party. This Court should grant reconsideration, exclude Mr. Chandler’s testimony, and order a new trial on damages.

Touchstream has since argued in opposition that EcoFactor is too narrow to provide any relevant change in the law, citing the en banc dissent’s argument that the majority ruling is “so narrow as to have almost no applicability beyond this case” and cautioning against reading the case “as constraining damages experts in a manner not called for by either Rule 702 or Daubert”. The plaintiff also contends that the alleged discrepancies highlighted by Google (between Chandler’s assumptions on the one hand, and its contention that the Quadriga agreement is not a patent license) do not rise to the level of contradicting a “critical fact” as addressed by EcoFactor, further highlighting examples in which Google allegedly conceded elsewhere on the record that the agreement was “akin to a patent license” and transferred patent rights.

Since then, the parties have also sparred over a subsequent Federal Circuit opinion applying EcoFactor, Jiaxing Super Lighting Electric Appliance v. CH Lighting Technology, in a manner that Google argued supports its motion for reconsideration in a July 30 notice of supplemental authority.

For more on the divided en banc opinion in EcoFactor, see “Expert Testimony Inadmissible Where ‘Critical Fact’ Contradicts Evidence, Rules Divided Federal Circuit” (May 2025).

–  Google: Judge Albright Was Wrong to Bar Invalidity Theory Based on System Prior Art Under Ingenico Decision

Google has also cited a recent Federal Circuit precedent—its May 2025 decision in Ingenico v. IOENGINE—to challenge Judge Albright’s decision that it was barred from presenting invalidity theories based on system prior art, i.e., a product (here, a piece of software called the “Twonky System”) that is used to show that the claimed technology was in use before a patent’s priority date, rather than a patent or printed publication.

Here, the issue was the scope of the IPR estoppel statute, 35 USC § 315(e)(2), which bars a defendant that has also filed an IPR from raising a district court validity argument “on any ground that the petitioner raised or reasonably could have raised during inter partes review”. Some district courts had interpreted this provision broadly to bar a defendant from raising a district court invalidity ground based on system prior art when the defendant had also cited the same evidence used to show public use of that system (such as patents, technical documentation, and printed publications) in an IPR petition, or could have done so. Others had interpreted the provision narrowly to allow system prior art, since system art cannot be raised in an IPR proceeding.

In Ingenico, the Federal Circuit resolved that split by adopting the narrower interpretation, holding that an invalidity “ground” (as used in the Patent Act) refers to “theories of invalidity”, and concluding that because Congress had limited IPRs to allow only certain “invalidity theories”—those based on patents and printed publications—the estoppel statute does not bar the use of such evidence as later used to show public use of system art.

On June 3, 2025, Google filed a motion for reconsideration of Judge Albright’s decision that because it could have relied on the Twonky System’s disclosures as prior art in its IPRs against Touchstream, Google was estopped from raising invalidity grounds in district court based on the Twonky System. The defendant argues that Ingenico changed the applicable law such that Judge Albright should reverse his estoppel ruling and grant a new trial on invalidity.

Touchstream has argued in response that Google has mischaracterized Ingenico, further alleging that Twonky was not a product that was actually sold or used, and that the system was “cobbled” together in an attempt to “cloak [Google’s] reliance upon [a document] as a product”. Google has since filed a reply that pushes back on the plaintiff’s reading of Ingenico, also asserting in part that the report of its invalidity expert “confirms that a jury could find that the Twonky System was a ‘software suite provided to consumers’”, and that the plaintiff’s argument on that point goes “to the weight of the evidence and is not appropriate for a motion to exclude”.

For further background on recent activity in the Touchstream campaign, including more on the hearing addressing Judge Albright’s discretion to reassess the form of the damages award against Google, see “Touchstream Sues VIZIO as Court Mulls Whether $340M Might Simply Be ‘The Number That [the Jury] Came Up with So That the Seven People Could All Get out of the Jury Box’” (October 2024).