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Case 2:20-cv-11056 Document 1 Filed 12/04/20 Page 1 of 10 Page ID #:1
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`John van Loben Sels (SBN 201354)
`jvanlobensels@fishiplaw.com
`Jennifer Shih (SBN 276225)
`jshih@fishiplaw.com
`Brian Kim (SBN 309962)
`bkim@fishiplaw.com
`FISH IP LAW, LLP
`2603 Main Street, Suite 1000
`Irvine, California 92614
`Telephone: (949) 943-8300
`Facsimile:
`(949) 943-8358
`
`Attorneys for Plaintiff
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`Case No.: 2:20-cv-11056
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`PAUSE COMMERCIALS, INC.,
`a California Corporation
`Plaintiff,
`
`v.
`
`HULU, INC.; and DOES 1-10, inclusive,
`a California Corporation
`Defendant
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`COMPLAINT FOR PATENT
`INFRINGEMENT
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`DEMAND FOR JURY TRIAL
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`COMPLAINT
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`Case 2:20-cv-11056 Document 1 Filed 12/04/20 Page 2 of 10 Page ID #:2
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`1. Plaintiff, by and through its attorneys of record, alleges as follows:
`PARTIES
`2. Plaintiff, Pause Commercials, Inc. (“PUCs”), is a corporation organized and
`existing under the laws of the State of California, with a place of business at
`12028 National Blvd., Los Angeles, CA 90064.
`3. Upon information and belief, Defendant, Hulu, Inc. (“Hulu” or “the
`Defendant”), is a wholly owned corporation organized and existing under
`the laws of the State of California, with its principal place of business at
`2500 Broadway, Santa Monica, CA 90404.
`4. Plaintiff does not know the true names and capacities of defendants sued in
`this Complaint as Doe 1 through Doe 10, inclusive, and therefore sues these
`defendants by fictitious names. Plaintiff will amend this Complaint to
`allege the true names and capacities of Doe 1 through Doe 10, inclusive,
`when ascertained.
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`JURISDICTION & VENUE
`5. This is an action for patent infringement arising under the patent laws of the
`United States, 35 U.S.C. §§ 1, et seq. This Court has subject matter
`jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338(a).
`6. This Court has personal jurisdiction over Hulu. Hulu has conducted and
`does conduct business within this District. Hulu has committed acts giving
`rise to this action within California and this judicial district. Hulu’s
`infringing products and/or services, have been and continue to be purchased
`and used by consumers in this District.
`7. Venue is proper pursuant to 28 U.S.C. §§1391(b), (c) and 1400(b) because
`Hulu has an established place of business in this District and has committed
`acts within this district, including one or more acts of selling, using,
`importing and/or offering for sale infringing products or providing support
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`1
`COMPLAINT
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`Case 2:20-cv-11056 Document 1 Filed 12/04/20 Page 3 of 10 Page ID #:3
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`service to Hulu’s customers in this District.
`BACKGROUND
`8. PUCs was founded in 2017 in Los Angeles, California, by Charles Johnson,
`an African American entrepreneur who previously worked in the film and
`television industry as a writer and distributor. After writing for various TV
`shows & distributing a handful of films (projects) through home video and
`movie theaters, he projected that streaming such projects over the internet
`(OTT) would be the future preferred method of distribution. He also
`assumed that pausing would create advertising inventory that could be sold
`to monetize such projects, and projected that advertisers would pay to
`display their ads in this paused inventory via OTT.
`9. In 2018, Mr. Johnson collaborated with Ramin Nadaf, who became the Co-
`Founder and Chief Technology Officer of PUCs, and built a prototype to
`demonstrate this method through their proprietary technology. They also
`secured contracts with OTT advertising platforms to deploy this method
`from prototype to sellable product.
`10. In 2019, while building a team of experts, consisting of women and people
`of color with decades of success in technology, advertising, entertainment,
`and business, Hulu launched the same OTT service as PUCs, using PUCs’
`same patent-pending method to monetize projects they were distributing via
`OTT. In 2020, PUCs was issued the patent for this method via OTT by the
`USPTO, requiring Hulu to negotiate a deal with PUCs to continue
`monetizing their projects via this method .
`11. PUCs owns all rights, title and interest to U.S. Patent No. 10, 278, 619 (“the
`‘619 Patent”), entitled System and Methods for Playback Responsive
`Advertisements and Purchase Transactions, issued on July 28, 2020. A true
`and correct copy of the ‘619 Patent is attached hereto as Exhibit A.
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`Case 2:20-cv-11056 Document 1 Filed 12/04/20 Page 4 of 10 Page ID #:4
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`12. Claim 1 is a representative claim of the ‘619 Patent. Claim 1 of the ‘619
`Patent claims the following:
`A method for displaying tailored advertising in response to user media
`playback behavior via an over-the-top data delivery system,
`comprising
`verifying an identity of the user;
`analyzing historical data associated with the identity, wherein the
`historical data includes patterns of user behavior associated with one
`or more advertisements;
`detecting media playback by the user;
`analyzing content associated with the media playback;
`retrieving an advertisement rule associated with the user;
`queuing user tailored advertisements based on the analyzed content
`and the advertisement rule; and
`delivering an advertisement from any one or more third-party services
`in response to detecting a pause in the media playback.
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`13. The ‘619 Patent concerns a method of delivering video and display ads, as
`well as making transactions, when users pause any device on over the top
`(“OTT”) media space.
`14. PUCs owns all substantial and material rights to and interest in the ‘619
`Patent, including the right to recover damages for all past and future
`infringement thereof.
`15. The ‘619 Patent is valid and enforceable.
`16. On August 14, 2020, PUCs sent a letter to Hulu which advised Hulu that its
`use of the pause ad technology infringes claims of the ‘619 Patent. In
`response, Hulu did not agree to cease using the ‘619 Patent inventions. Nor
`did PUCs and Hulu agree to a license permitting Hulu’s continued use of
`the ‘619 Patent’s inventions. Finally, Hulu did not pay, or agree to pay,
`PUCs for Hulu’s past infringement of the ‘619 Patent.
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`Case 2:20-cv-11056 Document 1 Filed 12/04/20 Page 5 of 10 Page ID #:5
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`COUNT ONE: DIRECT INFRINGEMENT OF THE ‘619 PATENT
`17. PUCs incorporates by reference the above paragraphs as if fully set forth
`herein.
`18. Hulu has infringed and/or continues to infringe the ‘619 Patent.
`19. Hulu, without authorization or license from PUCs, has been and is presently
`directly infringing, literally or under the doctrine of equivalents, Claims 1-
`12 of the ‘619 Patent. Hulu is liable for direct infringement of the ‘619
`Patent pursuant to 35 U.S.C. §271(a).
`20. Hulu’s infringing products include but are not limited to the following Hulu
`products and services (Hulu Infringing Products):
`a). Hulu’s Pause Ad https://advertising.hulu.com/d-products/pause-ad/
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`Case 2:20-cv-11056 Document 1 Filed 12/04/20 Page 6 of 10 Page ID #:6
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`b). Hulu’s Ad Selector: https://advertising.hulu.com/ad-products/ad-selector/
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`c). Hulu’s GatewayGo: https://advertising.hulu.com/ad-products/gatewaygo/
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`Case 2:20-cv-11056 Document 1 Filed 12/04/20 Page 7 of 10 Page ID #:7
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`d). Hulu’s Binge Ad https://advertising.hulu.com/ad-products/binge-ad/
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`21. As reflected in Hulu’s own product literature, Hulu’s Pause Ad feature falls
`squarely into media playback territory as well-understood in the art, which
`included starting and stopping playback of a video. This functionality is
`specifically disclosed in at least claim 1 of the ‘619 Patent.
`22. As reflected in Hulu’s own product literature, Hulu’s Binge Ad analyzes the
`media itself to determine how to deliver advertisements. This functionality
`is specifically disclosed in at least claim 1 of the ‘619 Patent.
`23. A claim chart demonstrating Hulu’s infringement of each of the claims of
`the ‘619 Patent is attached hereto as Exhibit B.
`24. Hulu has received actual notice of infringement prior to this lawsuit.
`25. Hulu has willfully infringed and/or does willfully infringe the ‘619 Patent.
`26. Damages for infringement should be adequate to compensate for the
`infringement, but in no event less than a reasonable royalty, together with
`interest and costs. 35 U.S.C. §284.
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`Case 2:20-cv-11056 Document 1 Filed 12/04/20 Page 8 of 10 Page ID #:8
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`COUNT TWO: INDIRECT INFRINGEMENTOF THE ‘619 PATENT
`27. PUCs incorporates by reference the above paragraphs as if fully set forth
`herein.
`28. Hulu indirectly infringes the ‘619 Patent by contributing to infringement by
`others, such as resellers and end-user customers, in accordance with 35
`U.S.C. §271(c).
`29. Since at least Hulu’s receipt of the ‘619 Patent, Hulu and its partners and
`service operators, including merchants and end-users, that use Hulu
`Infringing Products, have been and are presently directly infringing at least
`claim 1 of the ‘619 Patent. Such partners and service operators include but
`is not limited to the following: The Trade Desk, Roku, Inc., Amazon Fire
`TV, Google Chromecast, Samsung, Vizio, iOS, Android, and Xbox.
`30. Hulu is contributing to the infringement by others and/or inducing
`infringement by others, among other things by providing the pause ad
`feature.
`31. Plaintiff is entitled to recover damages from Hulu to compensate it for
`Hulu’s infringement, as alleged above, in an amount measured by no less
`than a reasonable royalty under 35 U.S.C. §284.
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`PRAYER FOR RELIEF
`Plaintiff PUCs prays for judgment and relief as follows:
`1. A judgement that Hulu has directly infringed the ‘619 Patent;
`2. A judgment that Hulu has contributorily infringed the ‘619 Patent;
`3. A judgment that Hulu’s infringement of the ‘619 Patent is and has been
`willful;
`4. A preliminary and permanent injunction preventing Hulu and its
`employees, licensees, and those in active concert or participation with
`any of them, from directly infringing, contributorily infringing, and/or
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`Case 2:20-cv-11056 Document 1 Filed 12/04/20 Page 9 of 10 Page ID #:9
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`inducing infringement of the ‘619 Patent;
`5. A judgment and order requiring Hulu to pay PUCs damages under 35
`U.S.C. § 284, including supplemental damages for any continuing post-
`verdict infringement up until entry of the final judgment, with an
`accounting, as needed, and treble damages for willful infringement as
`provided by 35 U.S.C. § 284;
`6. A judgment and order requiring Hulu to pay PUCs the costs of this
`action (including all disbursements);
`7. A judgment and order requiring Hulu to pay PUCs prejudgment and
`post-judgment interest on the damages awarded;
`8. A judgment and order requiring that in the event a permanent injunction
`preventing future acts of infringement is not granted, that PUCs be
`awarded a compulsory ongoing licensing fee; and
`9. Such other and further relief as the Court may deem just and proper.
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`DEMAND FOR JURY TRIAL
`Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff
`demands trial by jury in this action of all issues so triable
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`Dated: December 4, 2020
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`FISH IP LAW, LLP
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`
`/s/ John van Loben Sels
`John van Loben Sels
`Attorney for Plaintiff, Pause Commercials, Inc.
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`Case 2:20-cv-11056 Document 1 Filed 12/04/20 Page 10 of 10 Page ID #:10
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the above and foregoing
`document was served on all counsel of record via the Court’s CM/ECF system on
`December 4, 2020.
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`Dated: December 4, 2020
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`Respectfully submitted,
`FISH IP LAW, LLP
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`/s/ John van Loben Sels
`John van Loben Sels
`Attorneys for Plaintiff, Pause Commercials, Inc.
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