PTAB

IPR2021-00512

MG Freesites Ltd v. Scorpcast LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Content Sharing
  • Brief Description: The ’463 patent relates to a system for enhancing video playback by associating images with specific segments of a video file. These images, which are not from the video itself but correspond to products displayed within it, are presented in a "scrubber area" and can be selected by a user to jump to the corresponding video segment.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5-7, 10, 11, 15-17, 20, 21, and 25-28 are Anticipated by Geer

  • Prior Art Relied Upon: Geer (Application # 2011/0112915).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Geer disclosed every limitation of the challenged claims. Geer described a system for dynamically integrating advertising with media content, featuring a video player with a scrubber bar. The scrubber bar displayed interactive "product icons" at positions corresponding to specific time intervals in the video. These icons were images of products (e.g., sunglasses) that were not from the video file itself but corresponded to products shown in the video. Geer taught that the scrubber control was draggable to control playback. When the playback indicator moved over a product icon, a corresponding pop-in advertisement was displayed, effectively allowing a user to select an image to jump to a corresponding video segment and view the related product information. Geer also disclosed displaying advertisements in an overlay, satisfying dependent claim limitations.

Ground 2: Claims 1, 5, 6, 10, 11, 15, 16, 20, 21, and 25-27 are obvious over Roberts in view of Sterner

  • Prior Art Relied Upon: Roberts (Application # 2011/0138326) and Sterner (Application # 2007/0263984).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Roberts taught a video-on-demand system that "tagged" time periods in a video based on items of interest, such as a garment or a car. Roberts disclosed displaying advertisement icons and associated images along a timeline (scrubber) corresponding to the temporal position of these tags. To the extent Roberts did not explicitly teach a draggable scrubber control, Petitioner contended Sterner supplied this element. Sterner described a video playback interface with a draggable video progress indicator for navigating the video, and also taught jumping to a video segment in response to a user selecting an associated image (a "cue point control").
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Sterner’s draggable scrubber with Roberts's tagged video system to provide a faster, more direct, and more user-friendly method of navigating video content. This combination would be a predictable improvement over the basic "rewind" and "fast-forward" functions already present in Roberts.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because implementing a draggable scrubber control was a conventional and well-established user interface feature. Since Roberts’s system already used a scrubber bar and accepted user inputs, the modification was a straightforward software update.

Ground 3: Claim 8 is obvious over Roberts, Sterner, and Miller

  • Prior Art Relied Upon: Roberts (Application # 2011/0138326), Sterner (Application # 2007/0263984), and Miller (YouTube for Business, 2011).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the combination of Roberts and Sterner to argue the obviousness of the base claims. For the additional limitation of dependent claim 8, which required "limiting a size of the first video file to no greater than a first specified size," Petitioner relied on Miller. Miller, a how-to book, explicitly taught that the YouTube platform limited video uploads to a specified size (e.g., smaller than 2GB).
    • Motivation to Combine: A POSITA would be motivated to add a file size limit to the video system of Roberts/Sterner for practical reasons. Large video files increase data storage costs and transfer times, so imposing a size limit is a common and predictable solution to reduce financial and technical constraints.
    • Expectation of Success: Success would have been expected because coding a file size check is a conventional and commonplace task in software development.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 8 is obvious over Geer in view of Miller, and that claims 7, 17, and 28 are obvious over Roberts, Sterner, and Geer.

4. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: Petitioner contended that the challenged claims were not entitled to their earliest purported priority date of April 2012. The argument was based on the limitation of associating an image "with a respective segment" of a video. Petitioner asserted this concept first appeared in a March 2013 continuation-in-part application, not the earlier 2012 applications. Therefore, Petitioner argued the effective filing date of the challenged claims is, at the earliest, March 14, 2013, which allows additional prior art to be considered.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate because the parallel district court litigation was in its very early stages. Key arguments included:
    • The trial date in the Western District of Texas was speculative and likely to be delayed due to a pending motion to transfer venue to Delaware and significant court backlogs from the COVID-19 pandemic.
    • The parties and the court had incurred only minimal investment in the litigation, with initial invalidity contentions not yet due and fact discovery not scheduled to open until after the Patent Trial and Appeal Board's institution decision deadline.
    • Petitioner acted with diligence, filing the IPR petition approximately one month after receiving the patent owner's preliminary infringement contentions, which identified the asserted claims.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 5-8, 10, 11, 15-17, 20, 21, and 25-28 of the ’463 patent as unpatentable.