DCT
1:20-cv-01012
Aylo Freesites Ltd v. Scorpcast LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MG Freesites Ltd. (Republic of Cyprus)
- Defendant: ScorpCast, LLC d/b/a HaulStars (Delaware)
- Plaintiff’s Counsel: Richards, Layton & Finger, P.A. (Of Counsel: Venable LLP)
- Case Identification: 1:20-cv-01012, D. Del., 07/28/2020
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant ScorpCast is a Delaware limited-liability company and is therefore a resident of the district.
- Core Dispute: Plaintiff, the operator of the Pornhub website, seeks a declaratory judgment that its website does not infringe Defendant's patent covering systems for interactive video reviews.
- Technical Context: The technology at issue relates to methods for embedding interactive, clickable elements (such as images or text) from external sources into a video stream at specific time points to allow viewers to navigate to other destinations.
- Key Procedural History: This declaratory judgment action was filed in response to Defendant ScorpCast instituting eighteen separate patent infringement lawsuits in the Eastern District of Texas against various "content partners" of the Plaintiff. The complaint alleges that those lawsuits, which identify the Pornhub website as the "Accused Instrumentality," create a reasonable apprehension of litigation against the Plaintiff, thereby establishing a justiciable controversy.
Case Timeline
| Date | Event |
|---|---|
| 2014-02-13 | U.S. Patent No. 9,965,780 Priority Date |
| 2018-05-08 | U.S. Patent No. 9,965,780 Issued |
| 2020-07-28 | Complaint for Declaratory Judgment Filed in D. Del. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,965,780 - "System and Methods for Providing User Generated Video Reviews"
The patent-in-suit is U.S. Patent No. 9,965,780, issued May 8, 2018 (the "’780 Patent").
The Invention Explained
- Problem Addressed: The patent notes the proliferation of user-generated videos on the internet and identifies an opportunity to leverage their popularity into a more structured and efficient method for disseminating information about consumer goods and services ('780 Patent, Background, col. 1:15-25).
- The Patented Solution: The invention describes a platform where a user can upload a video review of one or more products. The user can then associate specific metadata, such as text or separately uploaded images, with particular timestamps in the video. A video player then presents these associated images or text as clickable "tags" within a scrubber bar or timeline as the video plays, allowing a viewer to navigate to specific points in the review or to an external destination ('780 Patent, Abstract; col. 2:16-52).
- Technical Importance: The technology aimed to transform passive user-generated video content into an interactive, monetizable experience by creating direct navigational links from moments within a video to the products being discussed ('780 Patent, col. 4:16-24).
Key Claims at a Glance
- The complaint notes that ScorpCast has alleged infringement of at least independent claim 20 and dependent claims 21 and 25 in its co-pending lawsuits against Plaintiff's content partners (Compl. ¶14).
- Independent Claim 20 recites a system comprising a processing device, network interface, and memory, which performs operations including:
- Providing a user interface to a first user to associate an "image not from the given video and/or text" with a user-specified position of that video.
- Receiving a first video.
- Receiving, from the first user, an association of a first image/text with a start position.
- Storing the association.
- Causing the first image/text to be presented at the start position during playback for a second user.
- Enabling a navigation event to occur in response to the second user selecting the presented image/text.
- The complaint also discusses independent claims 1 and 9 as part of its non-infringement arguments (Compl. ¶¶24-29).
III. The Accused Instrumentality
Product Identification
The Pornhub website (www.pornhub.com), which is operated by Plaintiff MG Freesites Ltd (Compl. ¶2). In the co-pending complaints filed by ScorpCast, the Pornhub website is referred to as the "Accused Instrumentalities" (Compl. ¶18).
Functionality and Market Context
- As described in the allegations from ScorpCast's other lawsuits (which are quoted in the present complaint), the accused functionality involves a system where content partners upload videos to channels on the Pornhub website (Compl. ¶¶5-6). The website provides an interface that enables "a navigation event to occur at least in response to a user selecting images and/or text (together 'Tags'), which are overlayed over the video" (Compl. ¶18, quoting ¶24 of Exhibits B-S). These "Tags" reportedly allow a viewer to "jump to specific points in the video" and can be added to the video's slider bar by the content partner uploading the video (Compl. ¶¶30-31, quoting Exhibits B-S).
- Plaintiff's complaint repeatedly asserts that ScorpCast has characterized the Pornhub website as having "an infringing system to upload video content" (Compl. ¶6).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The declaratory judgment complaint does not contain a traditional claim chart from the patentee (ScorpCast). Instead, it presents MG Freesites's arguments for non-infringement by rebutting the infringement theories ScorpCast has asserted in other lawsuits. The following table summarizes ScorpCast's apparent infringement theory for claim 20 based on allegations quoted in the complaint.
’780 Patent Infringement Allegations
| Claim Element (from Independent Claim 20) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| provide...a user interface that enables a user to associate...an image not from the given video and/or text with a user-specified position... | The Pornhub website provides an interface where a content partner can "add Tags to the slider bar" when posting a video, and "can add text to the Tag." | ¶18, ¶30, ¶32 | col. 48:1-9 |
| receive...from the first user device an association of a first image and/or a first text with a first start position of the first video; | The system receives the association when the content partner "controls the content of the Tags, including for example, what text or image appears to the user." | ¶18, ¶33 | col. 48:10-15 |
| store the association of the first image and/or a first text with the first start position; | The Pornhub servers store programmatic code and the videos posted by content partners. The complaint implies storage of the tag association. | ¶18 | col. 48:16-18 |
| cause the first image and/or the first text to be presented at the first start position, during playback...via a second user device; | The system causes "Tags" to be "viewable as a video is played." | ¶18, ¶34 | col. 48:19-24 |
| enable a corresponding navigation event to occur at least partly in response to a user selecting: the first image and/or the first text... | The system enables a navigation event, as "The Tags allow a user to jump to specific points in the video." | ¶18, ¶31 | col. 48:25-30 |
Identified Points of Contention
The complaint raises several key points of dispute that directly challenge ScorpCast's infringement theory.
- Scope Question: A central issue is whether the thumbnail images displayed on the Pornhub video player meet the claim requirement of being "an image not from the given video." The complaint alleges that the displayed thumbnail "is a video frame taken from the video itself and is not an image not from the video itself," which, if true, may place the feature outside the literal scope of the claim (Compl. ¶31).
- Technical Question: Another point of contention concerns the interactivity of the tags. The complaint alleges that the "text description that is displayed above the thumbnail image cannot be selected" because it "is not a clickable area of the webpage or video player" (Compl. ¶33). This raises the question of whether the accused system actually performs the claimed function of enabling a navigation event "in response to a user selecting" the text.
V. Key Claim Terms for Construction
The Term: "an image not from the given video"
This term from Claim 20, and related phrases like "from a source other than the video file" (Claim 1), are central to the dispute.
Context and Importance
This term's construction is critical to the dispute. Plaintiff MG Freesites's primary argument for non-infringement hinges on its assertion that the thumbnail images displayed on its video player are frames taken from the video itself, and therefore cannot be "not from the given video." Practitioners may focus on this term because its interpretation could be dispositive of the infringement question.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: A party arguing for a broader interpretation might point to the patent's general purpose of providing navigational "tags" and argue that any user-selected or curated image, even if originating as a frame, functions as a separate element when re-presented in a timeline, thus effectively making it "from a source other than the video file" in its raw, un-curated state.
- Evidence for a Narrower Interpretation: A party arguing for a narrower interpretation may cite the specification's explicit description of the system enabling users to "upload still images in association with the review, such as a still image of the item being reviewed. Optionally, the still image...may be a photograph of the item, optionally uploaded separately from the corresponding video review" ('780 Patent, col. 3:1-5). This language suggests the patent contemplates an image that originates from a separate file or external source.
VI. Other Allegations
Indirect Infringement
The complaint seeks a declaratory judgment of non-infringement for both direct and indirect infringement (Compl. ¶2). The basis for ScorpCast's underlying indirect infringement claims appears to be that Plaintiff provides its content partners with "an infringing system to upload video content," which could support a theory of induced or contributory infringement (Compl. ¶6).
Willful Infringement
The complaint seeks a declaration that any infringement has not been willful (Compl. ¶18, Prayer for Relief ¶3). The basis for potential willfulness allegations would stem from knowledge of the '780 patent, which ScorpCast's lawsuits against Plaintiff's content partners would establish.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the claim term "an image not from the given video" be construed to read on a thumbnail image that is a video frame taken from the video file itself? The resolution of this claim construction question may significantly impact the infringement analysis.
- A key evidentiary question will be one of technical operation: Does the accused website's user interface, in fact, allow a viewer to select the text displayed with a video thumbnail to cause a navigation event? This presents a factual dispute over whether the accused system performs the "in response to a user selecting" limitation as required by the patent claims.