Zoom in / Google Chromecast with Google TV.
Google Chromecast has infringed three patents of Touchstream Technologies, Inc. She must pay $338.7 million in damages, a jury in the Western District of Texas decided Friday, according to Law360.
The verdict [PDF] It shows that the jury concurs with Touchstream’s allegations that Google infringed Patents 8,356,251, 8,782,528, and 8,904,289 (Touchstream Technologies Inc. v. Google LLC, Case No. 6: 21-cv-00569 in the US District Court for the Western District of Texas).
The ruling comes after Touchstream filed a complaint in June 2021 alleging it met with Google in December 2011 and was told the tech giant wasn’t interested in partnering with it in February 2012. Google then released Chromecast in 2013. The complaint cites the first Chromecast and the second and third generations, the Chromecast Ultra and Chromecast with Google TV, as well as other products integrated with Chromecast, as patent violations.
The complaint alleges that Touchstream founder David Strober in the “early to mid-2010s” saw a demand for the ability to transfer videos that are typically viewed on small screens, such as that of a smartphone, to a larger screen, such as a TV or monitor. Ultimately, Strober sought to use a device, such as a smartphone, to “cause a video to play on a second screen, even if that video resides elsewhere (such as the public internet),” the complaint says, adding that Stober had a “working prototype” by the end of 2010 and filed its first patent application by April 2011.
All three Touchstream patents in question are titled “Controlling Playback of Content on a Display Device” and detail “a system for presenting and controlling content on a display device” that “uses” a network, a network-attached server system consisting of one or more servers, a network-attached display device with a screen, and an interoperable personal computer to transmit the first message over the network according to a specified server system.
The patent abstracts continue: “The server system stores an association between the personal computing device and the display device. The first message identifies the user-selected content and the media player to play the content. The server system is playable, in response to receiving the first message from the personal computing device, to provide the display device with a second message specifying the user-selected content and the media player to play the desired content. In response to receiving the media player, the media player can play back the content on the screen.”
Google has denied infringing Touchstream’s patents and has claimed the patents are invalid, based on the principle of clarity, which argues that inventions made public because of prior inventions cannot be patented.
Law360 noted in court filings that the patents in question are “hardly basic and don’t cover every method for selecting content on one personal device and viewing it on another screen.”
Google has also stated that Chromecast differs from the technologies in the Touchstream patents because Chromecast uses a server and display device system, whereas the Touchstream patents separate separate entities for the server system and display.
Google also argued that Touchstream is only a licensing entity with no products or customers, and so it asked the court not to block Chromecast sales. Google said, as reported by Law 360, “The sole business of Touch Stream is to attempt to monetize patents. If Touch Stream receives compensation, it will fulfill its sole commercial purpose.”
Google declined to comment further on the statement regarding what the legislation means for Ars Technica’s Chromecast products.
Google on appeal
In a statement to Ars, Google spokesperson José Castañeda said:
We strongly disagree with the ruling and will appeal. We have always developed technology independently and competed on the merits of our ideas, and we will continue to defend ourselves against these unfounded claims.
Law360 noted that Google is challenging the validity of Touchstream’s three patents in the Patent Trial and Appeals Board, with rulings due by October.
Ars reached out to Touchstream attorneys at Shook, Hardy & Bacon LLP about the case and Google’s claims that Touchstream’s only interest is in the patents. Ryan Dykal, an IP partner working on the case, said:
Touchstream filed for patent protection and spent a year developing its technology before meeting with Google under the guise of a non-disclosure agreement. The trial record shows that, despite protection from a non-disclosure agreement and a patent filing, within weeks of their meeting, Google began building in secret. [its] Violation of casting technology. After Google flooded the market with 140 million infringing devices—often sold at cost or less—Touchstream continued to build its business until it was forced to enforce its rights starting in 2017. All facts were presented to the jury and it concluded that Touchstream’s patents were valid and infringing Google.
Google declined to comment on TouchStream’s statement.
And Law360 noted that Touchstream also has patent infringement lawsuits against Altice, Charter, and Comcast. Touchstream claims that the companies’ applications and/or decryption technologies infringe similar patents, including the aforementioned patent number 8,356,251 that Touchstream has accused Google of infringing.
