Google told to pay nearly $340m in Chromecast dispute
The case involves technology allowing for the ‘casting’ of video-finding content on one screen and watching it on another | Tech first developed for community college e-learning courses more than a decade ago.
Google is facing a $338.7 million damages verdict after a US jury ruled that its Chromecast video casting products infringed patents owned by Touchstream Technologies.
The decision delivered by Judge Alan Albright at the US District Court for the Western District of Texas on Friday, July 21, dismissed Google’s claims that the patents-in-suit, US numbers 8,356,251; 8,782,528; and 8,904,289, were invalid.
E-learning technology
Touchstream Technologies first sued Google in June 2021, arguing that founder David Strober had invented a way to play videos from smaller devices like smartphones on larger screens (such as TVs and computer monitors) more than a decade ago.
Google, it said, had infringed claims in the patents that concern the “casting” of video—finding content on one screen and watching it on another.
The complaint outlined how Strober developed online college courses, as well as software for the e-learning platforms, when he worked at Westchester Community College in 2010 as a program manager and e-learning instructional designer.
During the course of that year, Strober invented a way to take videos that could be viewed on a smaller device, like a smartphone, and move them to a larger screen, such as a computer monitor or television.
The trio of patents-in-suit, each entitled Play Control of Content on a Display Device, claims priority to Strober’s first US provisional patent application for the invention filed in 2011.
In that year, Touchstream began negotiations with Google regarding the technology leading to both parties signing the latter’s Non-Disclosure Agreement, which held that neither company would get rights to the other company’s IP as a result of the meeting.
Infringing tech
Google then declined to licence Touchstream’s pending or awarded patents, and later unveiled its own Chromecast product in July 2013 at a price of $35 per unit.
The tech giant has gone on to sell 55 million Chromecast units since October 2017, added Touchstream.
It outlined how Chromecast operates by its connection to a screen device, and prompts the user, via the screen, to download and open the Google Home application on the user’s mobile device.
The device, usually a smartphone or a tablet, may then be linked with the Chromecast via a display of matching alphanumeric codes on the mobile device and display screen.
Failed monetisation
In December 2022, the Western District of Texas delivered a setback to Touchstream by refusing its request to compile global usage metrics after finding that it had failed to adequately identify a basis for allowing discovery on products sold outside the US.
But last week, the tech company successfully persuaded the Texas jury during a four-day trial that Chromecast functionalities directly infringe its patents, and further argued that it had been unable to fully capitalise on Strober’s groundbreaking creation.
“Unfortunately, the efforts of Touchstream and Touchstream partners to appropriately monetise David Strober’s inventions were significantly hindered by infringement of the Touchstream patents, including by Google,” argued the company.
Meanwhile, Google has petitioned for inter partes reviews of the patents at the Patent Trial and Appeal Board, arguing that they are all obvious based on prior art. The board’s final decision is due in the autumn.
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