PTAB

IPR2021-01171

MG Freesites Ltd v. Scorpcast LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Multi-channel Video Distribution System
  • Brief Description: The ’288 patent describes a system for rewarding artists who share content, such as video, based on feedback from an online community. If the content's popularity meets a predetermined threshold, the artist is offered services or revenue-sharing opportunities.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 7, and 8 are obvious over Starr in view of Bertoni.

  • Prior Art Relied Upon: Starr (Application # 2006/0287916) and Bertoni (EP 1172748 A2).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Starr, which describes the system for the media-sharing website Revver.com, discloses most limitations of the challenged claims. Starr teaches a multi-channel video distribution system where artists ("media owners") upload content, which can be associated with advertisements. The system tracks user interactions (online and offline views) to determine popularity, and a portion of the resulting ad revenue is shared with the artist. Starr also discloses tracking metrics to generate offers for premium services, using VoIP, and distributing content through affiliate websites.
    • Motivation to Combine: Petitioner contended that to the extent Starr does not explicitly provide all functions through a centralized online profile page for the artist, Bertoni teaches this concept. Bertoni describes a system for promoting artists using an individual home page that provides a unified location for users to access features like video streams, chat rooms, and product ordering. A person of ordinary skill in the art (POSITA) would combine Bertoni’s centralized profile page with Starr's functionality to improve the user experience and more effectively steer fan interest toward the artist’s content and features.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because Starr already employed a web interface for users to access content. Modifying this interface to link existing features to a unified artist profile page, as taught by Bertoni, would have been a straightforward software update.

Ground 2: Claims 1-5, 7, and 8 are obvious over Bettinger, Starr, and Bertoni.

  • Prior Art Relied Upon: Bettinger (Application # 2005/0049971), Starr (Application # 2006/0287916), and Bertoni (EP 1172748 A2).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Bettinger serves as the primary reference, disclosing a system where content submitters upload recorded or live-streamed "expositions." The system associates advertisements with the content and provides a revenue source to submitters based on user views, with top-performing content advancing to premium timeslots. Starr was cited to supply features not explicitly detailed in Bettinger, such as the use of specific hardware (microprocessors), VoIP communication, a search engine for accessing content, tracking offline ad views, and determining if a threshold is met based on an aggregate of online and offline views. Bertoni was again cited for its teaching of providing system functions through a unified online profile page for the media submitter.
    • Motivation to Combine: A POSITA would combine these references to enhance Bettinger's system. It would have been obvious to implement Bettinger's conceptual framework using the common hardware components and communication features (VoIP) taught by Starr to build a robust, modern system. Incorporating Starr's advanced search and tracking capabilities would provide submitters in Bettinger's system with greater content exposure and more opportunities for advertisement revenue, a known objective in the field. Adding Bertoni's artist-centric profile page would improve the system's usability and centralize access to these enhanced features.
    • Expectation of Success: Success would have been reasonably expected, as all three references operate in the same field of online content distribution and monetization. The integration of Starr's well-known technical features and Bertoni's user interface model into Bettinger's system involved combining predictable elements to achieve a known goal of promoting user-submitted content.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. The co-pending district court litigation was recently transferred from the Western District of Texas to the District of Delaware, rendering the original trial date irrelevant and making any future trial date highly speculative and unlikely to occur before a Final Written Decision (FWD) from the Board. Petitioner also asserted that investment in the district court case has been minimal, with no claim construction hearing held, and that it acted diligently by filing the petition within five months of the Patent Owner identifying the 104 asserted claims across eight patents.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-5, 7, and 8 of the ’288 patent as unpatentable under 35 U.S.C. §103.