DALLAS—Aylo, the parent company of Pornhub.com, announced Monday that it will begin the process of reaching a settlement to resolve an ongoing patent dispute lodged against the online porn giant by WellcomeMat LLC, a provider of a video SaaS platform for real estate agencies and listings on the national MLS.
U.S. Magistrate Judge Roy Payne of the U.S. District Court for the Eastern District of Texas ordered a 30-day stay in proceedings, allowing all parties to finalize dismissal papers and settlement for review by the court. This stay was issued days before the trial date, which was set for Nov. 17.
On Nov. 7, counsel for both companies announced an effort to reach a deal in a notice to the court.
A few days before this, the U.S. Federal Circuit Court of Appeals declined a writ of mandamus petition filed by Aylo seeking to compel the initial judge in the case, U.S. District Judge Rodney Gilstrap, to halt the litigation waiting on a parallel case before the Patent Trial and Appeal Board (PTAB) to be decided via ex parte reexamination.
In patent litigation, the ex parte reexamination is a reexamination of a patent's enforceability after initial proceedings. The legal docket in the PTAB case indicates a final written decision was issued by the board, which is under the U.S. Patent and Trademark Office, stating that key elements of the WellcomeMat patent are "unpatentable."
The Nov. 7 disclosure by the companies notes that both WellcomeMat LLC and Aylo's collective companies have sued in the case, stating that they "respectfully notify the Court that they have reached an agreement to settle all matters in controversy between them in the above-captioned action."
Judge Payne accepted the deal and adjourned the proceedings for the allotted month. As AVN previously reported, WellcomeMat sued, alleging a violation of its patent, U.S. Patent No. 8,307,286, which is a system that permits the "chaptering" or "action tagging" of content during video streaming.
The initial lawsuit filing featured named defendants, including Aylo and its affiliated companies, as well as an independent Pornhub content creator geographically based in or near the judicial district, the U.S. District Court for the Eastern District of Texas. The content creator was named to help establish jurisdiction in a friendly district.
The Eastern District of Texas is regarded as a favorable jurisdiction for plaintiffs who file patent infringement actions. The content creator, referred to by his real name in the initial filing, is independent male talent Jarrod from Texas. His name is mentioned 64 times throughout the 26-page complaint.
Jarrod from Texas was never removed from the suit, but the targets of the litigation are Aylo and its affiliated companies.
