DCT
2:20-cv-00193
Scorpcast, LLC dba HaulSta
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Scorpcast, LLC dba HaulStars (Delaware)
- Defendant: All 4 Health SRL (Romania); Boutique Media (Foreign)
- Plaintiff’s Counsel: WILLIAMS SIMONS & LANDIS PLLC
- Case Identification: 2:20-cv-00193, E.D. Tex., 02/05/2021
- Venue Allegations: Venue is alleged on the basis that Defendants are foreign corporations that may be sued in any judicial district, and that they conduct substantial business in and derive revenue from Texas.
- Core Dispute: Plaintiff alleges that Defendant’s use of interactive video features on third-party platforms to create navigable, "tagged" video content infringes a patent related to systems for creating user-generated video reviews.
- Technical Context: The technology at issue enables the transformation of linear video into an interactive experience by allowing creators to embed navigable waypoints or "tags" corresponding to specific moments or products within the video.
- Key Procedural History: The complaint notes that MG Freesites Ltd, the operator of the Pornhub website, has an interest in the action, having previously filed a declaratory judgment action against the Plaintiff in Delaware and an Inter Partes Review (IPR) petition (IPR2020-01697) seeking to invalidate the asserted patent. Subsequent to the filing of this complaint, the IPR proceeding concluded, and on February 7, 2024, the U.S. Patent and Trademark Office issued a certificate cancelling all claims asserted in this lawsuit (Claims 20, 21, and 25).
Case Timeline
| Date | Event |
|---|---|
| 2011-01-01 | HaulStars founded |
| 2012-04-18 | ’780 Patent Priority Date |
| 2018-05-08 | U.S. Patent No. 9,965,780 Issued |
| 2020-05-01 | Date of alleged viewership statistics for Defendant's channel |
| 2020-09-28 | IPR2020-01697 filed against the ’780 Patent |
| 2021-02-05 | Amended Complaint Filed |
| 2024-02-07 | IPR Certificate issues, cancelling asserted claims 20, 21, and 25 |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 9,965,780, "System and Methods for Providing User Generated Video Reviews," issued May 8, 2018.
The Invention Explained
- Problem Addressed: The patent identifies a gap in early online video platforms where viewers watching product reviews had no efficient way to navigate directly to the portion of a video discussing a specific item of interest (Compl. ¶19; ’780 Patent, col. 1:16-25).
- The Patented Solution: The invention describes a system where a content creator can upload a video and associate metadata, such as text or images, with specific time-stamps. A video player then presents this video with a control, such as a scrubber bar, that displays these "tags." This allows a viewer to see what items are discussed and at what point, and to navigate directly to a specific segment by selecting the corresponding tag (’780 Patent, Abstract; col. 2:41-58).
- Technical Importance: The described technology aimed to make passive video content interactive and "shoppable," providing a more direct link between video reviews and e-commerce or targeted information retrieval (Compl. ¶19).
Key Claims at a Glance
- The complaint asserts independent claim 20.
- The essential elements of independent claim 20 are:
- A system comprising a processing device, network interface, and non-transitory memory.
- The system provides a user interface to a first user device enabling the association of an image/text with a user-specified position in a video, where the image is from a source other than the video itself.
- The system receives the video and the association of the image/text with a start position.
- The system stores this association.
- The system causes the image/text to be presented at the start position during playback on a second user device.
- The system enables a navigation event to occur when a user on the second device selects the presented image/text.
- The complaint also asserts dependent claims 21 and 25 and reserves the right to assert others (Compl. ¶50).
III. The Accused Instrumentality
Product Identification
- The "Accused Instrumentalities" are the systems and functionalities of websites such as Pornhub.com that Defendant allegedly uses to create and publish its interactive video content (Compl. ¶30).
Functionality and Market Context
- The complaint alleges Defendant is a "content creator" who operates channels on platforms like Pornhub (Compl. ¶¶28-29). The platform allegedly provides Defendant with tools to customize a video's "slider bar" by adding "Tags" (Compl. ¶¶35-36). These tags, which can contain text or an image controlled by the Defendant, are viewable during playback and allegedly allow a user to "jump to specific points in the video" (Compl. ¶¶37, 39-40). The complaint asserts that Defendant's channels using this functionality are highly popular, having received over 66 million views as of May 2020 (Compl. ¶48).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
Claim Chart Summary
| 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... | Defendant is provided an option to add "Tags" to the slider bar of a video, which can contain text or an image. | ¶36, ¶38-39 | col. 48:1-8 |
| receive... an association of a first image and/or a first text with a first start position of the first video; | Defendant posts videos to its channel and adds a Tag to the slider bar. | ¶31, ¶41 | col. 48:9-12 |
| store the association of the first image and/or a first text with the first start position; | Defendant's videos are stored on Pornhub.com, and the platform stores the programmatic code and data for the associated Tags. | ¶30, ¶32 | col. 48:13-14 |
| cause the first image and/or the first text to be presented at the first start position, during playback... | "Tags are viewable as a video is played." | ¶40 | col. 48:15-19 |
| enable a corresponding navigation event to occur... in response to a user selecting... the first image and/or the first text... | "The Tags allow a user to jump to specific points in the video." | ¶37 | col. 48:20-25 |
Identified Points of Contention
- Scope Questions: A primary question concerns infringer identity. The complaint alleges Defendant, a "content creator," directly infringes a "system" claim. Does a content creator's use of a third-party platform (Pornhub) constitute "use" of the entire claimed system, which includes server-side hardware and software components that the Defendant does not operate or control (Compl. ¶49)?
- Technical Questions: The complaint alleges that "Tags" on a "slider tool" enable a user to "jump to specific points" (Compl. ¶¶34, 37). A technical question is whether the evidence will show that this functionality performs the specific operations required by the claim, such as presenting an "image not from the given video" and enabling a "navigation event" as understood in the context of the patent's specification.
V. Key Claim Terms for Construction
- The Term: "system"
- Context and Importance: The definition of "system" is critical to determining who is liable for direct infringement. The Defendant is a user of the Pornhub platform, not its operator. Practitioners may focus on this term because the Federal Circuit has held that to "use" a system claim, a party must put into service all limitations of the claim, raising the question of whether a content creator "uses" the back-end servers of a platform they do not own.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent focuses on the user's interaction with the system to create and navigate tagged videos. Language describing the user interface and the actions a user can take could be argued to support a finding that interaction with the interface constitutes "use" of the whole system from the user's perspective (’780 Patent, col. 4:46-59).
- Evidence for a Narrower Interpretation: Claim 20 explicitly recites hardware components such as "at least one processing device," a "network interface," and "non-transitory memory storing programmatic code" (’780 Patent, col. 47:56-62). This could support a narrower construction where the "system" is limited to the entity that owns and operates the physical and logical infrastructure, not merely a content creator who interacts with it.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by encouraging its customers and end-users to use the accused interactive features (Compl. ¶55). It also alleges contributory infringement, asserting the interactive "Tags" are special features that have no substantial non-infringing use (Compl. ¶56).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported "policy or practice of not reviewing the patents of others," constituting willful blindness (Compl. ¶58). The complaint alleges Defendant's actions were objectively reckless and that knowledge of the patent exists at least from the date of the lawsuit (Compl. ¶¶57, 59).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of infringer identity: Can a content creator who uses a third-party social media platform be held to "use" a patented "system" that includes server infrastructure the creator does not control? The outcome may depend on whether the court finds the creator's actions put the entire claimed system into service.
- A dispositive procedural question is one of claim viability: Given the subsequent cancellation of all asserted claims by the U.S. Patent and Trademark Office in a related IPR proceeding, the fundamental question is whether the Plaintiff's infringement action can proceed. The invalidation of the asserted claims post-filing presents a formidable, and potentially insurmountable, obstacle to the case.