Panopto Inc v. Vitek-IP LLC et al

On December 8, 2021, Panopto, Inc. (“Panopto” or “Plaintiff”), represented by Benjamin J. Byer and Jennifer Katherine Chung of Davis Wright Tremaine (SEA), filed an intellectual property lawsuit against Vitek-IP LLC (“Vitek”), John Forrester (“Forrester”), Sam Wilson (“Wilson”) and Tim Smith (“Smith”) (collectively, “Defendants”), seeking declaratory relief and costs for the alleged non-infringement of United States Patents owned by the Defendants. This case was filed in U.S. District Court in the Western District of Washington with Judge J. Richard Creatura presiding.

The Plaintiff filed this complaint for the alleged non-infringement of U.S. Patent Nos. 8,750,843, 8,150,386, and 9,245,295 (the “patents-in-suit”).

In their complaint, the Plaintiff alleged that, “Vitek has characterized defendants Forrester, Wilson, and Smith as “clients.” Vitek has sent a series of communications, including emails with claim charts that accuse the Panopto Video Management Tool of infringing the patents-in-suit. Those emails were sent on September 27, October 5, November 22, and December 3, 2021. Panopto responded by letter dated November 17, 2021 stating as follows. First, Panopto stated: Panopto simply does not infringe any of the claims of the patents identified in your e-mail. Your e-mail mentioned U.S. Patent Nos. 8,750,843 (“’843 patent”), 8,150,386 (“’386 patent”), and 9,245,295 (“’295 patent”), but only provided a claim chart for claim 1 of the ’843 patent. Panopto also stated: Panopto also does not infringe any claim of the ’843 patent.”

The Plaintiff further alleged that, “Your claim chart also fails to demonstrate any infringement of the claim limitation requiring “the control point is triggered by reference to any one or more of the following: a timing track, a counter, and parsing of content received by the media application,” as well as the claim limitation requiring “prompting a user of the mobile device to perform a specified action via the mobile device.” Furthermore, claim 1 of the ’843 patent itself is internally inconsistent because it mentions both a requirement of “preventing further playback of the media content item” and “resuming playback of the media item,” which cannot both be true in any case.”

The Plaintiff also alleged that, “Regarding invalidity, Panopto stated: After reviewing your letter, we examined the prior art and have discovered numerous references that clearly invalidate the claims of the asserted patents in view of how it appears you are trying to interpret the claims in your claim chart. It seems that everyone all across the globe knew about such functionality and had already put it to use years before the filing dates of the patents. Panopto has not and is not now infringing the '843 patent either literally or under the doctrine of equivalents. Panopto has not and is not now infringing the '386 patent either literally or under the doctrine of equivalents. Panopto has not and is not now infringing the '295 patent either literally or under the doctrine of equivalents.”

There are three claims for relief laid down by the Plaintiff, which deal with the alleged declaration of invalidity and non-infringement of the patents-in-suit owned by the Defendants.

In its prayer for relief, the Plaintiff has requested the Court for a judicial declaration declaring that each of U.S. Patents Nos. 8,750,843, 8,150,386, and 9,245,295 is invalid and not infringed by the Plaintiff and that this case be declared exceptional under 35 U.S.C. § 285, along with such other and further relief as the Court deems just and proper.

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