MG Freesites Ltd v. Scorpcast LLC

1. Case Identification

• Case #: IPR2021-00515
• Patent #: 10,205,987
• Filed: February 8, 2021
• Petitioner(s): MG Freesites Ltd
• Patent Owner(s): Scorpcast, LLC
• Challenged Claims: 1-5, 7, 11, 12, 15-20, 23-27, and 30

2. Patent Overview

• Title: Video Distribution and Media Players
• Brief Description: The ’987 patent describes a video system, such as a website, that receives and stores user-uploaded videos. The system allows users to create and associate "tags" (comprising images, text, and links) with specific timestamps in the video, which are then displayed as interactive overlays during playback.

3. Grounds for Unpatentability

Ground 1: Anticipation over Fink - Claims 1-4, 11, 12, 15-18, 20, 23, 25, 26, and 30 are anticipated under 35 U.S.C. §102 by Fink.

• Prior Art Relied Upon: Fink (Application # 2009/0300475).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fink discloses every limitation of the challenged claims. Fink describes a video hosting system that allows users to upload videos and add interactive "annotations." These annotations function as overlays containing text, images (e.g., speech bubbles), and hyperlinks, which are displayed at user-defined time ranges. Users define the timing and duration of these annotations via an interface with a scrubber bar and controls, and a second user can view the video with the interactive overlays and click the associated hyperlinks.
  • Key Aspects: Petitioner asserted that Fink’s system for creating, time-stamping, and displaying interactive annotations is functionally identical to the ’987 patent’s tagging system.

Ground 2: Obviousness over Fink in view of Geer - Claims 1-4, 11, 12, 15-18, 20, 23, 25, 26, and 30 are obvious over Fink in view of Geer.

• Prior Art Relied Upon: Fink (Application # 2009/0300475) and Geer (Application # 2011/0112915).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fink teaches most claim elements, and to the extent Fink does not explicitly describe an annotation including an image of a product, Geer supplies this teaching. Geer discloses a system for integrating advertising content, including product images, text, and "Buy Now" links, as overlays displayed at strategic points during video playback.
  • Motivation to Combine: A POSITA would combine Geer’s explicit teaching of image-based advertising overlays with Fink’s versatile annotation system to create more visually engaging and commercially effective annotations. Geer’s product placement functionality would have been seen as a natural extension of Fink’s system, which already contemplated menu-style interfaces with "labeled visual objects."
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both Fink and Geer describe implementing these features via conventional web interfaces. Integrating Geer’s image-based overlays into Fink’s existing annotation framework would involve a straightforward update to the user interface software.

Ground 3: Obviousness over Fink and Lerman - Claim 5 is obvious over Fink (or the combination of Fink and Geer) in view of Lerman.

• Prior Art Relied Upon: Fink (Application # 2009/0300475), Geer (Application # 2011/0112915), and Lerman (Patent 7,809,802).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically targets claim 5, which adds the limitation of a "drag and drop" interface for uploading content. Petitioner argued that while Fink teaches a system for uploading video, it does not specify the mechanism. Lerman explicitly discloses a browser-based interface with "drag-and-drop" functionality that allows a user to easily drag video files to the interface for posting to a content delivery network.
  • Motivation to Combine: A POSITA would combine Lerman’s user-friendly drag-and-drop feature with Fink’s video annotation system to provide a simpler and more familiar method for users to upload videos. Lerman describes this method as a "simple means of posting a video file to the Internet" that requires no special knowledge of file formats or protocols.
  • Expectation of Success: Success would be expected because both systems are network-based and utilize web browser interfaces. Adding a drag-and-drop functionality would be a routine modification to the software-based user interface taught by Fink.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including: combining Miller for limiting video file size (Claim 7); combining Sterner for requiring a user log-in process (Claim 19); combining Kilar for sharing content via social networks (Claim 24); and combining Lerman and Sterner for organizing videos by category and embedding the player on third-party sites (Claim 27).

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner contended that the challenged claims are not entitled to their earliest purported priority date of April 2012. The key limitation of enabling a user to define "when the first image is to be displayed as an overlay" was allegedly first introduced in a continuation-in-part application filed on March 14, 2013. Therefore, Petitioner argued the claims' effective filing date is, at the earliest, March 14, 2013, which allows additional references (such as Geer and Kilar) to qualify as prior art under different statutory provisions.

5. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. The core arguments were that the parallel district court litigation was in its earliest stages, with a speculative trial date over a year away and subject to further delays from a pending motion to transfer venue and significant COVID-related backlogs. Petitioner asserted that investment in the litigation was minimal, as key deadlines for claim construction, invalidity contentions, and discovery all fell after the IPR institution decision deadline. Furthermore, Petitioner argued it acted with diligence by filing the IPR petition shortly after the Patent Owner identified the asserted claims, and that the petition’s strong merits weigh heavily in favor of institution.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5, 7, 11, 12, 15-20, 23-27, and 30 of the ’987 patent as unpatentable.