PTAB

IPR2021-00510

MG Freesites Ltd v. Scorpcast LLC

Key Events

Petition

petition

Title: System for Controlling Playback of Video Files
Brief Description: The ’063 patent relates to systems for content sharing, specifically for providing user-generated video reviews of products or services. The technology involves associating "tags" (e.g., images of products) with specific time segments of a video, which can be displayed as interactive overlays during playback.

Prior Art Relied Upon: Roberts (Application # 2011/0138326).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Roberts, which describes an Internet Protocol Television (IPTV) system, discloses every element of the challenged claims. Roberts teaches "tagging" specific time periods in a video and displaying associated content, such as advertisement images, as an overlay during playback. Petitioner asserted this maps directly to claim 9’s requirements for receiving a video, storing associations of images with video segments, and displaying multiple images (e.g., in a "carousel GUI") simultaneously over the video. These images are not from the video file itself and are interactive, causing a "navigation event" (like linking to a website or rewinding the video) upon user selection.

Prior Art Relied Upon: Roberts (Application # 2011/0138326) and Kraus (Application # 2008/0147558).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Roberts discloses nearly all limitations of claims 1 and 10. The only element not explicitly taught is the video file being compressed using a "VP or MPEG format."
- Motivation to Combine: Kraus explicitly discloses that video compression is well-known and that VP and MPEG are conventional formats. A POSITA would combine Kraus's teaching of standard compression with Roberts's video delivery system to achieve the predictable benefits of reduced file size, lower storage costs, and faster data transfer times.
- Expectation of Success: A POSITA would have a high expectation of success, as implementing conventional compression codecs into an existing video processing system was a routine and straightforward modification.

Prior Art Relied Upon: Geer (Application # 2011/0112915).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Geer, which describes dynamically integrating advertising into media content, anticipates the challenged claims. Geer teaches displaying product icons on a video player's scrubber bar, each corresponding to a specific time in the video. When playback reaches an icon, a corresponding pop-up advertisement is displayed as an overlay. Petitioner mapped this system to claim 9, identifying the product icons and pop-up ads as the required multiple images displayed concurrently over the video. Selecting an image (e.g., by moving the playback indicator over an icon) causes a navigation event by controlling video playback.
Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Roberts or Geer with Miller (a YouTube guide teaching video size limits) for claim 11, and combining Geer with Fink (teaching a timeline UI for video annotation) for claims 18, 22, and 27.

"navigation event": Petitioner argued that the term "navigation event," recited in independent claims 1 and 9, should be interpreted broadly based on its use throughout the patent. The petition pointed to dependent claims that specify the navigation event as either "causing the playback of the first video to jump to the first segment" (e.g., claim 13) or causing navigation to a website. Therefore, Petitioner contended that a prior art reference disclosing either a video-jumping function or a website-linking function in response to a user selection meets this claim limitation.

Priority Date Challenge: Petitioner contended that the challenged claims are not entitled to their earliest purported priority dates (April 2012). The argument centered on the claim limitation of associating an image "with a respective segment" of a video. Petitioner asserted this concept was first introduced in a continuation-in-part application filed on March 14, 2013. Therefore, the effective filing date of the claims is no earlier than March 2013, making references like Roberts and Geer, published in 2011, valid prior art for anticipation under 35 U.S.C. §102.

Petitioner argued extensively that discretionary denial under Fintiv would be inappropriate for several reasons.
- Early Stage of Litigation: The parallel district court case in the W.D. Tex. was in its early stages. Key events, including claim construction hearings, final invalidity contentions, and expert discovery, were scheduled to occur well after the deadline for an institution decision, meaning minimal investment had been made on validity issues.
- Speculative Trial Date: The scheduled trial date was argued to be highly speculative and likely to be delayed due to a pending motion to transfer venue, a probable stay, and significant court backlogs caused by the COVID-19 pandemic.
- Petitioner Diligence and Patent Owner Delay: Petitioner asserted it acted with diligence by filing the inter partes review (IPR) petition shortly after the Patent Owner finally identified the 104 asserted claims across eight patents, a clarification that was delayed.
- Strong Merits: The petition asserted that the prior art presents compelling evidence of unpatentability, weighing heavily in favor of institution.

Petitioner requested the institution of an IPR and the cancellation of claims 1, 9-11, 13, 18-20, 22, 24, 26, and 27 of the ’063 patent as unpatentable.