This case was last updated from U.S. District Courts on 01/14/2022 at 20:48:22 (UTC).

Panopto Inc v. Vitek-IP LLC et al

Case Summary

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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Case Details Parties Documents Dockets

 

Case Details

  • Case Number:

    2:21-CV-01649

  • Filing Date:

    12/08/2021

  • Case Status:

    Pending - Other Pending

  • Case Type:

    Intellectual Property - Patent

Judge Details

Presiding Judge

J Richard Creatura

 

Party Details

Plaintiff

Panopto Inc

Defendants

Vitek-IP LLC

John Forrester

Sam Wilson

Smith Tim

Tim Smith

Attorney/Law Firm Details

Plaintiff Attorneys

Justin M Sobaje

Attorney at FOLEY & LARDNER LLP

555 South Flower St Ste 3300

Los Angeles, CA 90071

William J Robinson

Attorney at FOLEY & LARDNER LLP

555 South Flower St Ste 3300

Los Angeles, CA 90071

Jennifer Katherine Chung

Attorney at DAVIS WRIGHT TREMAINE (SEA)

920 Fifth Aveste 3300

Seattle, WA 98104-1610

Benjamin J Byer

Attorney at DAVIS WRIGHT TREMAINE (SEA)

920 Fifth Aveste 3300

Seattle, WA 98104-1610

 

Court Documents

#11

(#11) APPLICATION OF ATTORNEY Jean-Paul Ciardullo FOR LEAVE TO APPEAR PRO HAC VICE for Plaintiff Panopto Inc (Fee Paid) Receipt No. AWAWDC-7393028 (Byer, Benjamin) (Entered: 01/05/2022)

#10

(#10) ORDER granting #9 MOTION Extending Time to Respond to Complaint, signed by Judge J Richard Creatura. (KAM) (Entered: 01/03/2022)

#9

(#9) Ex Parte MOTION for Extension of Time to File Answer or Otherwise Respond to Complaint, filed by Plaintiff Panopto Inc. Noting Date 12/30/2021, (Chung, Jennifer) Modified on 1/3/2022 (AMD). (Entered: 12/30/2021)

#6

(#6) REPORT on the filing or determination of an action. Emailed to the US Patent Office. (ST) (Entered: 12/10/2021)

5 #3

Summons

5 #2

Summons

5 #1

Summons

5 #5

Main Document

#4

(#4) APPLICATION OF ATTORNEY Justin M. Sobaje FOR LEAVE TO APPEAR PRO HAC VICE for Plaintiff Panopto Inc (Fee Paid) Receipt No. AWAWDC-7363674 (Byer, Benjamin) (Entered: 12/09/2021)

#3

(#3) APPLICATION OF ATTORNEY William J. Robinson FOR LEAVE TO APPEAR PRO HAC VICE for Plaintiff Panopto Inc (Fee Paid) Receipt No. AWAWDC-7363662 (Byer, Benjamin) (Entered: 12/09/2021)

#2

(#2) CORPORATE DISCLOSURE STATEMENT identifying Corporate Parent Panopto Midco, LLC, Corporate Parent Panopto Intermediate Holdings, Inc., Corporate Parent Panopto Holdings, LLC for Panopto Inc. Filed pursuant to Fed.R.Civ.P 7.1. Filed by Panopto Inc (Byer, Benjamin) (Entered: 12/08/2021)

1 #6

Summons to Vitek-IP LLC

1 #5

Summons to John Forrester

1 #4

Summons to Sam Wilson

1 #3

Summons to Tim Smith

1 #2

Report on Patents and Trademarks (AO Form 120)

1 #1

Civil Cover Sheet

8 More Documents Available
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Docket Entries

  • 01/05/2022
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  • Docket(#11) APPLICATION OF ATTORNEY Jean-Paul Ciardullo FOR LEAVE TO APPEAR PRO HAC VICE for Plaintiff Panopto Inc (Fee Paid) Receipt No. AWAWDC-7393028 (Byer, Benjamin) (Entered: 01/05/2022)

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  • 01/03/2022
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  • Docket(#10) ORDER granting #9 MOTION Extending Time to Respond to Complaint, signed by Judge J Richard Creatura. (KAM) (Entered: 01/03/2022)

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  • 12/30/2021
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  • Docket(#9) Ex Parte MOTION for Extension of Time to File Answer or Otherwise Respond to Complaint, filed by Plaintiff Panopto Inc. Noting Date 12/30/2021, (Chung, Jennifer) Modified on 1/3/2022 (AMD). (Entered: 12/30/2021)

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  • 12/10/2021
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  • Docket(#8) ORDER re #3 Application for Leave to Appear Pro Hac Vice. The Court ADMITS Attorney William J Robinson for Plaintiff Panopto Inc, by Clerk Ravi Subramanian. No document associated with this docket entry, text only.NOTE TO COUNSEL: Local counsel agrees to sign all filings and to be prepared to handle the matter, including the trial thereof, in the event the applicant is unable to be present on any date scheduled by the court, pursuant to LCR 83.1(d).(DS) (Entered: 12/10/2021)

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  • 12/10/2021
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  • Docket(#7) ORDER re #4 Application for Leave to Appear Pro Hac Vice. The Court ADMITS Attorney Justin M Sobaje for Plaintiff Panopto Inc, by Clerk Ravi Subramanian. No document associated with this docket entry, text only.NOTE TO COUNSEL: Local counsel agrees to sign all filings and to be prepared to handle the matter, including the trial thereof, in the event the applicant is unable to be present on any date scheduled by the court, pursuant to LCR 83.1(d).(DS) (Entered: 12/10/2021)

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  • 12/10/2021
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  • Docket(#6) REPORT on the filing or determination of an action. Emailed to the US Patent Office. (ST) (Entered: 12/10/2021)

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  • 12/10/2021
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  • Docket(#5) Summons(es) Electronically Issued as to defendant(s) John Forrester, Smith Tim, Vitek-IP LLC, Sam Wilson. (Attachments: #1 Summons, #2 Summons, #3 Summons)(ST) (Entered: 12/10/2021)

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  • 12/10/2021
  • DocketJudge J Richard Creatura added. (ST) (Entered: 12/10/2021)

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  • 12/09/2021
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  • Docket(#4) APPLICATION OF ATTORNEY Justin M. Sobaje FOR LEAVE TO APPEAR PRO HAC VICE for Plaintiff Panopto Inc (Fee Paid) Receipt No. AWAWDC-7363674 (Byer, Benjamin) (Entered: 12/09/2021)

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  • 12/09/2021
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  • Docket(#3) APPLICATION OF ATTORNEY William J. Robinson FOR LEAVE TO APPEAR PRO HAC VICE for Plaintiff Panopto Inc (Fee Paid) Receipt No. AWAWDC-7363662 (Byer, Benjamin) (Entered: 12/09/2021)

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  • 12/08/2021
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  • DocketCivil Filing Fee payment by attorney Benjamin J Byer on behalf of Plaintiff Panopto Inc re #1 Complaint,. $402.00 receipt number AWAWDC-7362880 (Byer, Benjamin) (Entered: 12/08/2021)

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  • 12/08/2021
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  • Docket(#2) CORPORATE DISCLOSURE STATEMENT identifying Corporate Parent Panopto Midco, LLC, Corporate Parent Panopto Intermediate Holdings, Inc., Corporate Parent Panopto Holdings, LLC for Panopto Inc. Filed pursuant to Fed.R.Civ.P 7.1. Filed by Panopto Inc (Byer, Benjamin) (Entered: 12/08/2021)

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  • 12/08/2021
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  • Docket(#1) COMPLAINT for Judicial Declaration of Patent Invalidity and Noninfringement of US Patent Nos. 8,750,843, 8,150,386 and 9,245,295 against All Defendants Attorney Benjamin J Byer added to party Panopto Inc(pty:pla), filed by Panopto Inc. (Attachments: #1 Civil Cover Sheet, #2 Report on Patents and Trademarks (AO Form 120), #3 Summons to Tim Smith, #4 Summons to Sam Wilson, #5 Summons to John Forrester, #6 Summons to Vitek-IP LLC)(Byer, Benjamin) (Prepayment Waived) (Entered: 12/08/2021)

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