throbber
Case 3:20-cv-07572-TSH Document 1 Filed 10/28/20 Page 1 of 9
`
`
`
`
`Frank E. Scherkenbach (SBN 142549 / scherkenbach@fr.com)
`Adam J. Kessel (pro hac vice application to be filed / kessel@fr.com)
`Proshanto Mukherji (pro hac vice application to be filed / mukherji@fr.com)
`Jeffrey Shneidman (pro hac vice application to be filed / shneidman@fr.com)
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Telephone: (617) 542-5070
`Facsimile: (617) 542-8906
`
`Michael R. Headley (SBN 220834 / headley@fr.com)
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Telephone: (650) 839-5070
`Facsimile: (650) 839-5071
`
`Attorneys for Plaintiffs
`BYTEDANCE INC. and TIKTOK INC.
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`
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`BYTEDANCE INC. AND TIKTOK INC.,
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`
`
`
`Plaintiffs
`
`v.
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`TRILLER, INC.,
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`
`
`
`
`
`Defendant.
`
`Case No. 3:20-cv-7572
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`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-INFRINGEMENT
`OF U.S. PATENT NO. 9,691,429
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`DEMAND FOR JURY TRIAL
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`Plaintiffs ByteDance Inc. (“BDI”) and TikTok Inc. (“TTI”) (collectively, “Plaintiffs”)
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`hereby allege for their Complaint against Defendant Triller, Inc. (“Triller” or “Defendant”) as
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`Case No 3:20-cv-7572.
`
`

`

`Case 3:20-cv-07572-TSH Document 1 Filed 10/28/20 Page 2 of 9
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`NATURE OF ACTION
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`1.
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`This is an action for a declaratory judgment of non-infringement of U.S. Patent No.
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`9,691,429 (“the ’429 patent,” attached as Exhibit A). Plaintiffs seek a declaratory judgment that they
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`do not infringe any claim of the ’429 patent.
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`2.
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`Plaintiffs are technology companies that provide and support a variety of mobile
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`software applications that enable people around the world to connect with, consume, and create
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`entertainment content, including via an application called “TikTok.” TikTok is a mobile software
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`application that millions of Americans, including many in this judicial district, use to create and
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`share short videos composed of expressive content.
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`3.
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`Defendant Triller operates an app called “Triller” which it characterizes as “an
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`entertainment platform built for creators.”1 Defendant Triller has alleged that TikTok infringes the
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`’429 patent, and Plaintiffs disagree.
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`4.
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`Specifically, on July 29, 2020, Triller filed a lawsuit against the entities TikTok Inc.
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`and Bytedance Ltd. in the Western District of Texas (C.A. No. 20-cv-00693) (“the Texas
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`Litigation”) alleging that those entities “directly and indirectly infringe the [’429] Patent by making,
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`using, offering for sale, selling, and importing the popular iOS and Android software application
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`known as ‘TikTok.’” Id., Dkt. No. 1 ¶3. Triller has alleged that the “Accused Products” in that
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`lawsuit (the “Accused TikTok Products”) are “software products [that] are available for iOS and
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`Android hand-held or tablet devices and are distributed under the TikTok brand name.” Id., ¶14.
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`Triller has alleged that “making, using, offering for sale, selling and/or importing the Accused
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`Products” constitutes patent infringement and violates at least 35 U.S.C. § 271(a), (b), and (c). Id.
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`¶34 et seq. Triller has also alleged that Plaintiffs’ training videos, demonstrations, brochures, and
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`user guides instruct users of the TikTok apps to infringe the ’429 patent. Id. Triller has alleged that
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`making the Accused TikTok Products (among other acts) infringes at least claims 1, 3, 4, 5, 6, and
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`7 of the ’429 patent. Id.
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`1 https://apps.apple.com/us/app/triller-social-video-platform/id994905763 (accessed Oct. 27,
`2020).
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`2
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`Case No 3:20-cv-7572.
`
`

`

`Case 3:20-cv-07572-TSH Document 1 Filed 10/28/20 Page 3 of 9
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`5.
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`Notwithstanding Triller’s allegations in the Texas Litigation, that district is not a
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`proper forum for a dispute concerning the Accused TikTok Products. Bytedance Ltd., a defendant
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`in that case, is a holding company based outside of the United States that does not have employees
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`or property in Texas. TTI, the other defendant in that case, has no employees or facilities in the State
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`of Texas and, more specifically, does not have any regular and established place of business in that
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`forum, and thus is not subject to venue under the Supreme Court’s decision in TC Heartland LLC
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`v. Kraft Foods Group Brands LLC, 581 U.S. ___ , 137 S. Ct. 1514 (2017). Plaintiffs thus bring the
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`instant action in a proper forum—in the state where all of the relevant parties are based, and in the
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`judicial district where a substantial part of the events or omissions giving rise to Triller’s alleged
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`infringement claims have occurred and continue to occur.
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`6.
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`BDI and TTI are the only companies based in the United States responsible for
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`developing, providing, and supporting the Accused TikTok Products. Triller’s actions and
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`allegations have created a real and immediate controversy between Triller and Plaintiffs as to
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`whether the Accused TikTok Products infringe any claim of the ’429 patent. Triller’s lawsuit and
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`statements that “making” the Accused TikTok Products infringes the ’429 patent demonstrate that
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`it is highly likely that Defendant Triller will assert infringement against BDI in addition to its
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`previous allegations against TTI. In the meantime, the cloud of Triller’s allegations, including that
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`making the Accused TikTok Products infringes the ’429 patent, hangs over BDI.
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`7.
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`As set forth herein, Plaintiffs do not infringe the ’429 patent. Therefore, an actual
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`and justiciable controversy exists between the parties as to whether Plaintiffs’ Accused TikTok
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`Products infringe any claim of the ’429 patent. A judicial declaration is necessary to resolve the real,
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`immediate, and justiciable controversy concerning these issues and to determine the respective
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`rights of the parties regarding the ’429 patent. Plaintiffs respectfully seek a judicial determination
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`that the ’429 patent is not directly or indirectly infringed by Plaintiffs, including by their products
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`and/or services.
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`3
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`Case No 3:20-cv-7572.
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`

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`Case 3:20-cv-07572-TSH Document 1 Filed 10/28/20 Page 4 of 9
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`PARTIES
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`8.
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`Plaintiff BDI is a Delaware corporation having its principal place of business at 250
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`Bryant Street, Mountain View, California, 94041.
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`9.
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`Plaintiff TTI is a California corporation having its principal place of business at 5800
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`Bristol Parkway, Culver City, California, 90230.
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`10.
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`On information and belief, and based on its allegations in the Texas Litigation,
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`Defendant Triller, Inc. is a Delaware corporation having its principal place of business at 2121
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`Avenue of the Stars, Suite 2320, Los Angeles, California, 90067.
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`11.
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`On information and belief, and based on its allegations in the Texas Litigation, Triller
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`is the owner of the ’429 patent.
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`JURISDICTION AND VENUE
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`Subject Matter Jurisdiction
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`12.
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`This action arises under the Declaratory Judgment Act, 28 U.S.C. §§2201-2202, and
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`under the Patent Laws of the United States, 35 U.S.C. §§1 et seq.
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`13.
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`This Court has subject matter jurisdiction over the claims alleged in this action
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`because this Court has jurisdiction over declaratory judgment claims arising under the Patent Laws
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`pursuant to 28 U.S.C. §§1331, 1338, 2201, and 2202.
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`14.
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`This Court can provide the relief sought in this Declaratory Judgment Complaint
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`because an actual case and controversy exists between the parties within the scope of this Court’s
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`jurisdiction pursuant to 28 U.S.C. § 2201, at least because Triller has accused the Accused TikTok
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`Products of infringing its patent, e.g., by suing others (including TTI) for patent infringement
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`alleging infringement by “making” the Accused TikTok Products.
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`15.
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`Plaintiff BDI makes the Accused TikTok Products that Triller alleges infringe, and
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`thus, BDI, in addition to TTI, should be the subject of Triller’s allegations. Triller has also alleged
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`that “portions of the Accused [TikTok] Products” are “especially made or adapted for use in
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`infringement of the ’429 Patent, and … [are] not suitable for substantial non-infringing use.” See
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`Texas Litigation Dkt. No. 1 ¶ 36, which implies that TTI and BDI’s roles in the development of
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`Case No 3:20-cv-7572.
`
`

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`Case 3:20-cv-07572-TSH Document 1 Filed 10/28/20 Page 5 of 9
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`those products is an act of contributory infringement. Triller’s allegations against TTI and users of
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`the Accused TikTok Products cast a cloud over TTI and BDI’s business, causing uncertainty for
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`TTI and BDI, regarding the ongoing provision or use of the Accused TikTok Products.
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`16.
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`Triller has maintained this charge despite the fact that the Accused TikTok Products
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`(and use thereof) do not in fact infringe, and have not infringed, any claims of the ’429 patent.
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`Triller’s allegations and actions have created a real, live, immediate, and justiciable case or
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`controversy between Triller and Plaintiffs.
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`Personal Jurisdiction
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`17.
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`This Court has personal jurisdiction over Triller. Triller’s principal place of business
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`is in California. Triller’s Terms of Service state that “Triller, Inc.[’s] address is at 2121 Avenue of
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`the Stars Suite 2350, Los Angeles, California 90067.” See Exhibit B.
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`18.
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`Triller also lists both Los Angeles and San Francisco among the locations of its
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`worldwide offices on its website, including at https://www.triller.co/faq/index.html:
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`19. Moreover, Triller has purposefully directed its activities toward and engaged in
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`numerous specific contacts within this District, including by soliciting and providing goods and
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`services to people in this District (in the form of Triller’s own products, including the Triller app),
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`and by soliciting investment and receiving funding from persons in this District. On information and
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`belief, Triller also has a number of users in this District, including users who post and view videos
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`located in this district, as shown in the exemplary screenshots below.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`Case No 3:20-cv-7572.
`
`

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`Case 3:20-cv-07572-TSH Document 1 Filed 10/28/20 Page 6 of 9
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`20.
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`Triller has also purposefully directed its conduct at this District with its attempt to
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`enforce the ’429 patent by making accusations of infringement against the Accused TikTok
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`Products, which are made in this District.
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`Venue
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`21.
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`Venue is proper in this Court under 28 U.S.C. § 1391 because a substantial part of
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`the events giving rise to the claim presented in this Complaint occurred in this district (28 U.S.C.
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`§1391(b)(2)). For example, BDI makes the TikTok Accused Products in this district. Venue is also
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`proper in this district because Triller’s principal place of business is in California, and Triller
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`“resides” in this district under Federal venue laws because it is subject to personal jurisdiction in
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`this district (see 28 U.S.C. §1391(c)(2) & (d)).
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`22.
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`In addition, the TikTok Accused Products are distributed to users in the United States
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`exclusively through Apple’s App Store and Google Play, both of which are run by companies with
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`principal places of business in California and more specifically in this judicial district. Apple’s
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`principal place of business is in Cupertino, California, and Google’s principal place of business is
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`in Mountain View, California.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`Case No 3:20-cv-7572.
`
`

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`Case 3:20-cv-07572-TSH Document 1 Filed 10/28/20 Page 7 of 9
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`23.
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`forth herein.
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`CLAIM FOR RELIEF
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`FIRST CLAIM FOR RELIEF –
`Declaratory Judgment of Noninfringement of the ’429 Patent
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`Plaintiffs incorporate the allegations set forth in paragraphs 1-22 as though fully set
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`24.
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`Neither Plaintiffs nor their products have infringed, induced others to infringe, or
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`contributed to infringement by others of, any claim of the ’429 patent. Nor do any end-users of
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`Plaintiffs’ products infringe any such claim.
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`25.
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`By way of example, neither Plaintiffs nor their products infringe, induce others to
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`infringe, or contribute to any infringement by others of, claims 1-10 of the ’429 patent, at least
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`because Plaintiffs and their products do not perform the method step of “synchronizing each video
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`take of the plurality of captured video takes with the selected audio track while each video take of
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`the plurality of video takes is being captured, wherein synchronizing further comprises playing,
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`from a first beginning, the selected audio track at substantially the same time as a second beginning
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`of capturing each video take of the plurality of video takes.” Nor do any end-users of Plaintiffs’
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`products perform this method step.
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`26.
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`By way of further example, Plaintiffs’ products do not infringe, induce others to
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`infringe, or contribute to any infringement by others of, claims 11-16 of the ’429 patent, at least
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`because their products are not a “user device, comprising … at least one processor operable to: …
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`synchronize each video take of the plurality of captured video takes to the recorded audio track as
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`each video take of the plurality of video takes is being captured, wherein synchronizing further
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`comprises playing, from a first beginning, the selected audio track at substantially the same time as
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`a second beginning of capturing each video take of the plurality of video takes.” Nor are Plaintiffs’
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`products installed or otherwise used by end-users in a way that satisfies this claim limitation.
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`27.
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`By way of example, neither Plaintiffs nor their products infringe, induce others to
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`infringe, or contribute to any infringement by others of, claims 17-19 of the ’429 patent, at least
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`because Plaintiffs and their products do not perform the method step of “synchronizing, while the
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`Case No 3:20-cv-7572.
`
`

`

`Case 3:20-cv-07572-TSH Document 1 Filed 10/28/20 Page 8 of 9
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`plurality of video takes are being captured, each video take of the plurality of captured video takes
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`to the selected audio track, wherein synchronizing further comprises playing, from a first beginning,
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`the selected audio track at substantially the same time as a second beginning of capturing each video
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`take of the plurality of video takes; and creating a music video comprising the selected audio track
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`and at least a subset of the plurality of captured video takes synchronized to the selected audio track;
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`wherein creating comprises: displaying the subset of the plurality of captured video takes based on
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`the number of faces determined to be within each video take.” Nor do any end-users of Plaintiffs’
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`products perform this method step.
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`28.
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`As a result of the acts described in the foregoing paragraphs, there exists a definite
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`and concrete, real and substantial, justiciable controversy between Triller and Plaintiffs regarding
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`the noninfringement of the ’429 patent, including with respect to Plaintiffs’ Accused TikTok
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`Products. This controversy is of sufficient immediacy and reality to warrant issuance of a
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`Declaratory Judgment.
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`DEMAND FOR JURY TRIAL
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`29.
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`Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiffs hereby demand a trial
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`by jury on all issues triable to a jury.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiffs respectfully request the Court to enter judgment in their favor
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`against Triller:
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`A. For judgment that Plaintiffs, Plaintiffs’ products, and users of Plaintiffs’ Products do not
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`infringe and have not infringed under 35 U.S.C. § 271 (or any subsection thereof) any claim
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`of the ’429 patent, either literally or under the doctrine of equivalents, and that none of them
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`are liable for damages or injunctive relief based on any claim of the ’429 patent;
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`B. That the case be found exceptional under 35 U.S.C. § 285 and that Plaintiffs be awarded
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`their reasonable attorneys’ fees incurred in connection with this action;
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`C. For costs and expenses in this action; and
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`Case No 3:20-cv-7572.
`
`

`

`Case 3:20-cv-07572-TSH Document 1 Filed 10/28/20 Page 9 of 9
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`D. For such other and further relief as the Court deems just and proper.
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`Dated: October 28, 2020
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`Respectfully submitted,
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`By: /s/ Michael R. Headley
` Frank E. Scherkenbach
`(SBN 142549 / scherkenbach@fr.com)
`Adam J. Kessel
`(pro hac vice application to be filed / kessel@fr.com)
`Proshanto Mukherji
`(pro hac vice application to be filed / mukherji@fr.com)
`Jeffrey Shneidman
`(pro hac vice application to be filed / shneidman@fr.com)
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Telephone: (617) 542-5070
`Facsimile: (617) 542-8906
`
`Michael R. Headley (SBN 220834 / headley@fr.com)
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Telephone: (650) 839-5070
`Facsimile: (650) 839-5071
`
`Attorneys for Plaintiffs
`ByteDance Inc. and TikTok Inc.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`Case No 3:20-cv-7572.
`
`

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