10Tales, Inc. v. TikTok, Inc.

Background

10Tales, Inc. sued TikTok Inc., TikTok Pte. Ltd., ByteDance Ltd., and ByteDance, Inc., alleging infringement of claim 1 of U.S. Patent No. 8,856,030. The patent concerns customizing or personalizing digital media content based on user information. Claim 1 describes a system with a server and computer-readable storage medium that retrieves user social network information, selects digital media assets based on user attributes, monitors a display for a personalization opportunity, substitutes assets according to a rule, and presents a personalized composite display.

TikTok moved under Federal Rule of Civil Procedure 12(c) for judgment on the pleadings, arguing that claim 1 is invalid because it covers subject matter that is not eligible for patent protection under 35 U.S.C. § 101. An earlier motion under Rule 12(b)(6) raising the same patent-eligibility issue had been denied without prejudice by Judge Gonzalez Rogers because claim construction was needed. After the case was reassigned to Judge DeMarchi and the court issued a claim-construction order, TikTok filed the motion addressed in this opinion.

Legal standard

A Rule 12(c) motion tests whether the pleadings legally support a claim. The court generally accepts factual allegations as true and views the pleadings in the light most favorable to the nonmoving party, but it need not accept conclusory allegations. Judgment on the pleadings is proper when the complaint does not allege enough facts to state a plausible claim for relief and the moving party is entitled to judgment as a matter of law.

Section 101 permits patents for new and useful processes, machines, manufactures, compositions of matter, and improvements, but does not permit patents on laws of nature, natural phenomena, or abstract ideas. Under the two-step framework established in Alice Corp. v. CLS Bank, the court first determines whether the claim is directed to excluded subject matter. If it is, the court then asks whether the claim contains an “inventive concept”—additional elements that transform the abstract idea into a patent-eligible application rather than merely using well-understood, routine, and conventional activity.

Analysis

At the first Alice step, the court concluded that claim 1 is directed to the abstract idea of presenting personalized content to a user based on information about that user. The court agreed with 10Tales that the claim is not limited to advertising, but found that it more generally covers personalizing digital media content using user attributes from social network information. The court determined that personalizing content based on user attributes is a long-standing practice and that the patent does not claim an improvement to computer technology or network functionality.

The court also found that the claim recites only generic computer components, specifically a server and a computer-readable storage medium, along with programming instructions. The claimed functions—identifying stored content, creating and presenting displays, retrieving information, selecting content, monitoring a display, and substituting one set of content for another—were described as routine computer functions.

The court rejected 10Tales’s argument that the claim improved technology by analyzing how users interact with others in an online social network. The court held that claim 1 requires only retrieving user social network information from an external source; it does not explain how user attributes are derived from interactions or how those attributes are used to determine a user’s affinity for content. The court also rejected 10Tales’s argument that the claim requires a particular rule-based algorithm, explaining that the claim construction did not require any specific algorithm and that the specification did not describe one.

At the second Alice step, the court concluded that the claim contains no inventive concept. The individual elements use generic technology and generalized, result-oriented steps. The court also found no inventive concept in the elements’ ordered combination because they are arranged in a conventional sequence: creating and presenting an initial display, retrieving user information, selecting other assets, monitoring for a personalization opportunity, substituting assets according to a rule, and presenting the resulting display.

The court considered 10Tales’s reliance on the patent’s prosecution history, proceedings before the Patent Trial and Appeal Board, and an expert’s statement that extracting a user attribute from interaction with a networked community was not well known. It held that novelty alone does not establish patent eligibility under section 101. The court therefore concluded that claim 1 is patent-ineligible.

Leave to amend and disposition

10Tales requested leave to amend its First Amended Complaint to add facts that could survive a pleadings challenge. The court denied that request because 10Tales’s eligibility allegations were conclusory, the record contained no genuine dispute about facts material to the section 101 analysis, and 10Tales did not identify specific facts or amendments that could cure the eligibility defect.

The court granted TikTok’s motion for judgment on the pleadings based on patent ineligibility under section 101, without leave to amend. It directed the Clerk to enter judgment accordingly and close the file.