PTAB

IPR2020-01697

MG Freesites Ltd v. Scorpcast LLC

Key Events

Petition

Title: Content Sharing
Brief Description: The ’780 patent discloses a system for content sharing, specifically for providing user-generated video reviews of products. The system receives user-uploaded videos and associated "product tags" (images or text) that are linked to specific time positions within the video and displayed to viewers during playback.

Prior Art Relied Upon: Sterner (Application # 2007/0263984).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Sterner discloses every limitation of the challenged claims. Sterner describes a system with a Video Editing Environment (VEE) and a Video Playback Environment (VPE). The VEE provides a user interface for an "editor" to upload a video and create "cue points," which associate user-provided text or images (e.g., an "icon") with specific "time positions" in the video. The VPE allows a "viewer" to watch the video, during which the cue point information is presented at the specified time. Petitioner asserted this directly maps to the ’780 patent’s system of associating tags with start positions and presenting them during playback. Sterner also discloses that cue points can be selectable hyperlinks that navigate a user to a different location, satisfying the "navigation event" limitation.

Prior Art Relied Upon: Geer (Application # 2011/0112915) and Fink (Application # 2009/0300475).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Geer discloses a system for displaying advertisements (images/text) at strategic time points during a video's playback, including displaying product icons on a scrubber bar that correspond to the timing of the advertisement. While Geer shows the playback of such annotated video, it does not explicitly disclose the user interface for creating the associations. Fink was argued to supply this missing element, as it describes a system for adding and displaying interactive annotations, including a user interface for a user to upload a video and associate images (e.g., speech bubbles) or text with specific time positions for display during playback.
- Motivation to Combine: A POSITA would combine Fink's user interface for creating annotations with Geer's playback system to provide a unified, dynamic portal. This would allow content providers and advertisers to easily link their own advertisement content to specific videos and time positions, facilitating the "advertising campaign[s]" described by Geer.
- Expectation of Success: Petitioner argued that since Geer already includes a web server providing a browser interface, modifying it to include the user interface features taught by Fink would have been a straightforward software development task with a high expectation of success.

Prior Art Relied Upon: Sterner (Application # 2007/0263984) and Ahanger (Application # 2008/0307454).
Core Argument for this Ground:
- Prior Art Mapping: This ground specifically targeted dependent claims 11 and 22, which add limitations related to providing and displaying a video title. Petitioner argued that Sterner teaches the base limitations of the independent claims but does not explicitly describe an interface for a user to provide a video title. Ahanger, which relates to an advertising platform for on-demand video, was argued to disclose this feature by teaching a user interface for creating or editing metadata associated with a video, including a "title" field.
- Motivation to Combine: A POSITA would combine Ahanger’s title functionality with Sterner's system for the common and predictable purpose of allowing a user to assign a description to a video. This would provide important context to viewers, improving the user experience of the Sterner system.
- Expectation of Success: Because Sterner already describes web-based interfaces for its editor and player environments, adding a title field as taught by Ahanger would be a simple and predictable modification with a high expectation of success.
Additional Grounds: Petitioner asserted additional challenges, including anticipation of claims 9 and 14-16 by Geer, and various other obviousness combinations involving Sterner, Geer, Fink, Badoiu (Application # 2009/0210779), and Ahanger.

"presented at the first start position ... during playback": Petitioner proposed this phrase should be given a "temporal interpretation," meaning the image/text is displayed when the video playback reaches a specific point in time. Petitioner acknowledged that Patent Owner might argue for a "spatial interpretation" (display at a specific screen location) but contended the claims are unpatentable under either construction.
"navigation event": Based on the specification's reference to "hypertext transfer protocol link" enabling a user to "navigate a browser to an external website," Petitioner argued this term should be construed to include the event of a web browser being directed to a website.

Petitioner argued that discretionary denial under Fintiv would be inappropriate. It asserted that the parallel litigations—one declaratory judgment action filed by Petitioner in Delaware and multiple infringement suits filed by Patent Owner in the Eastern District of Texas against other parties—are in their earliest stages. Key milestones such as claim construction briefing and invalidity contentions had not occurred. Petitioner contended that investment by the parties and courts had been minimal, a stay of the EDTX litigation was likely, and the Delaware action did not yet include a validity challenge, meaning the Fintiv factors strongly favored institution of the inter partes review (IPR).

Petitioner requests institution of IPR and cancellation of claims 9-11, 14-17, 20-22, and 24-26 of the ’780 patent as unpatentable.