10Tales, Inc. v. TikTok, Inc.

Background

10Tales, Inc. sued TikTok, Inc., TikTok Pte. Ltd., ByteDance Ltd., and ByteDance, Inc. (collectively, “TikTok”), alleging infringement of claim 1 of U.S. Patent No. 8,856,030. The patent concerns technology for customizing or personalizing digital-media content based on user information, including information about a user’s interactions and attributes.

The parties disputed the meaning of ten terms in claim 1. TikTok argued that seven terms were indefinite under 35 U.S.C. § 112, meaning that the claim did not tell a skilled person with reasonable certainty what the invention covered. TikTok also argued that three terms should be limited to a “narrative.” The court considered the claim language, patent specification, prosecution history, expert declarations, and materials from related proceedings before the Patent Trial and Appeal Board.

Legal standard

The court explained that claim construction—the legal interpretation of patent claims—begins with the claim language and considers the patent specification and prosecution history. Extrinsic evidence, such as expert testimony and dictionaries, may also help but cannot override the intrinsic record. A claim is indefinite if, when read in light of the specification and prosecution history, it fails to provide objective boundaries that inform skilled persons of its scope with reasonable certainty.

Rulings on the disputed terms

1. System and programming-instructions language. The court held that this term required no construction. Claim 1 describes a system containing a server and computer-readable storage medium with programming instructions capable of performing the listed functions. It does not require a user to take any action. Because the functional language describes the system’s capabilities, the claim was not indefinite under the cases cited by TikTok.

2. “Creating” a composite digital-media display. For both the first composite display and the user-specific composite display, the court construed the language to mean creating a display that combines two or more digital-media assets. The court rejected TikTok’s proposed requirement that the display include a “narrative” or preserve the flow of a narrative. The prosecution history did not contain a clear and unmistakable disclaimer requiring that limitation.

3. “Display server” and presenting to the user. The court construed “display server” as a server in a conventional client-server model. Depending on the context, a server may be a computer program, a physical computer capable of running a program, or a physical computer running a program. The display server is used to present the first and second composite displays to the user. The court declined to limit “presenting” to a particular method, such as visual display, and rejected TikTok’s indefiniteness argument.

4. “User social network information.” The court construed this term to mean information derived from a user’s interactions in an online community. The court found that the patent’s specification and prosecution history provided enough guidance to define the term with reasonable certainty, even though the exact phrase did not appear in the specification and was not shown to have been a recognized technical term in 2003.

For the related phrase concerning retrieving that information from “at least one source external to the presented first composite digital media display,” the court construed “external” to mean a source other than the presented first composite digital-media display.

5. Monitoring for a trigger. The court construed “trigger” to mean an indication of a personalization opportunity. It construed the full phrase to mean monitoring the first composite digital-media display for the presence in the display of an indication of a personalization opportunity. The court rejected an interpretation that would allow the trigger to be outside the display and again declined to add a narrative requirement.

6. Rule-based substitution. The court found that this term required no construction and was not indefinite. In context, “rule based” refers to a substitution made by applying a rule rather than through a discretionary or subjective decision. The court rejected 10Tales’s proposal that “substitution” could mean merely including an asset, explaining that the claim requires replacing one or more assets with other assets and does not use the term “insertion.”

7. “The second composite digital media display.” The court found that this term was not indefinite and had an adequate reference to an earlier term. In context, it means the user-specific composite digital-media display created from the user-specific digital-media assets.

Disposition and scope of the provided text

The order construes the claim terms discussed above and rejects the indefiniteness and narrative limitations addressed in those sections. The provided opinion text states that the parties disputed ten terms but ends after the court’s ruling on the seventh listed term; it does not include any additional rulings that may have appeared later in the full opinion. The provided text does not decide whether TikTok infringed claim 1.

Judge

Virginia K. Demarchi, United States Magistrate Judge, signed the order dated August 14, 2023.