Case 5:21-cv-03868-VKD Document 1 Filed 09/02/20 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Case No. 6:20-cv-810
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`JURY TRIAL DEMANDED
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`Plaintiff,
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`Defendant.
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`§
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`v.
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`10TALES, INC.,
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`TIKTOK, INC.,
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff 10Tales, Inc. (“10Tales”), by and through its attorneys, for its complaint against
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`Defendant TikTok, Inc. (“TikTok”) hereby alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action for infringement of U.S. Patent No. 8,856,030 entitled “Method,
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`System and Software for Associating Attributes within Digital Media Presentations”
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`(“the ’030 patent,” attached as Exhibit A), arising under the Patent Laws of the United States,
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`35 U.S.C. § 1 et seq.
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`2.
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`10Tales—and its founder David Russek—is the pioneering developer of innovative
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`technology used to deploy advanced storytelling through the use of 10 second videos submitted by
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`a network of friends that become shared experiences among the friend network. 10Tales’s
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`technology has received numerous accolades from the entertainment industry, including, for
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`example, the Mobile Excellence Awards. See http://10tales.co/10tales.html. David Russek is the
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`inventor of the ’030 patent.
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`3.
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`10Tales alleges that TikTok infringes the ’030 patent by making and using a system
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`that infringes at least claim 1 of the ’030 patent, including, inter alia, the “recommendation
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`system” used in connection with the TikTok “For You” Feed.
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`THE PARTIES
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`4.
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`Plaintiff 10Tales, Inc. is a Delaware corporation that maintains its principal place
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`of business at 18 Coal Street, Middleport, Pennsylvania 17953.
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`5.
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`On information and belief, Defendant TikTok is a California corporation with a
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`regular and established place of business in Austin, Texas, and a registered agent for service of
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`process in this District at Corporation Service Company d/b/a CSC-Lawyers Incorporating Service
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`Company, 211 E. 7th Street, Suite 620, Austin, Texas, 78701.
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`JURISDICTION AND VENUE
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`6.
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`10Tales brings this action for patent infringement under the patent laws of the
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`United States, 35 U.S.C. § 271, et seq. This Court has subject matter jurisdiction pursuant to
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`28 U.S.C. §§ 1331 and 1338(a).
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`7.
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`8.
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`The amount in controversy exceeds $75,000.
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`This Court has personal jurisdiction over TikTok by virtue of TikTok’s systematic
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`and continuous contacts with this District.
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`9.
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`This Court has personal jurisdiction over TikTok by virtue of, inter alia, the fact
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`that TikTok has committed, aided, contributed to, and/or participated in the commission of the
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`tortious act of patent infringement that led to foreseeable harm to 10Tales in this District.
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`10.
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`On information and belief, TikTok is in the business of providing a video-sharing
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`social networking service through its app in this District, and offers products and/or services,
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`including those accused herein of infringement, to customers and potential customers located in
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`Texas and in this District. On information and belief, TikTok distributes products directly to
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`customers and through its partners and/or intermediaries located in State of Texas. On information
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`and belief, TikTok derives significant financial benefits through its business in Texas and in this
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`District.
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`11.
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`On information and belief, the TikTok app has been downloaded over 165 million
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`times within the United States, with millions of those users of its products and services within the
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`State of Texas, many of whom reside within this District.
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`12.
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`On information and belief, TikTok has a regular and established place of business
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`in this District, including offices in Austin, Texas, which TikTok relies upon and uses to support
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`its activities within this District that result in patent infringement. On information and belief, and
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`as evidenced by Exhibit B and Exhibit C, TikTok has hired and continues to hire numerous
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`employees within this District, at least some of whom have, are, and will in the future support
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`TikTok’s infringing activities within this District that will generate substantial revenue.
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`13.
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`On information and belief TikTok maintains facilities within this District and has
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`committed acts within this District that give rise to this action and has established minimum
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`contacts with this forum such that the exercise of jurisdiction over Defendant would not offend
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`traditional notions of fair play and substantial justice. Defendant has committed and continues to
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`commit acts of infringement in this District by, among other things, providing its products and/or
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`services that infringe the asserted patent.
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`14.
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`This Court has specific personal jurisdiction over TikTok in this action pursuant to
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`due process and the Texas Long Arm Statute because the claims asserted herein arise out of or are
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`related to TikTok’s substantial business in this forum and voluntary contacts with this forum, such
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`voluntary contacts include but are not limited to: (i) at least a portion of the actions complained
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`of herein; (ii) purposefully and voluntarily placing one or more infringing products and/or services
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`into this District and into the stream of commerce with the intention and expectation that they will
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`be used by consumers in this District; or (iii) regularly doing or soliciting business, engaging in
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`other persistent courses of conduct, or deriving substantial revenue from goods and services,
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`including the infringing products and/or services, provided to customers in Texas and in this
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`District. TikTok is subject to the Court’s personal jurisdiction at least due to its distribution of
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`products and/or services within Texas and the Western District of Texas. Within this state, TikTok
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`has used the patented inventions thereby committing, and continuing to commit, acts of patent
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`infringement alleged herein. In addition, TikTok has derived revenues from its infringing acts
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`occurring within the Western District of Texas. Further, TikTok is subject to the Court’s
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`jurisdiction because TikTok solicits and provides products and/or services to persons or entities in
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`Texas and the Western District of Texas as evidenced by: (i) regularly doing or soliciting business;
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`(ii) engaging in other persistent courses of conduct; and (iii) deriving substantial revenue from
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`goods and services. TikTok has committed such purposeful acts and transactions in Texas such
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`that it reasonably should know and expect that it could be haled into this Court because of such
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`activity.
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`15.
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`Relative to patent infringement, TikTok has committed and continues to commit
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`acts in violation of 35 U.S.C. § 271, and has made and used the infringing system in this state,
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`including in this District, and otherwise engaged in infringing conduct within and directed at, or
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`from, this District. Such infringing system, namely the TikTok “recommendation system,” has
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`been and continues to be used in this District and the infringing conduct has caused, and continues
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`to cause, injury to 10Tales, including injury suffered in this District. These are purposeful acts
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`and transactions in this state and this District such that TikTok reasonably should know and expect
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`that it could be haled into this Court because of such activities.
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`16.
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`Venue is proper in this Court under 28 U.S.C. §§ 1391 and 1400(b) for at least the
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`reasons set forth above, including but not limited to: a substantial part of the events or omissions
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`giving rise to the 10Tales claims occurred in this District; TikTok has committed acts of
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`infringement in this District; and TikTok has a regular and established place of business in this
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`District. Defendant TikTok is registered to do business in the State of Texas, and on information
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`and belief, has transacted business in this District and has committed acts of direct infringement
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`in this District. TikTok conducts business in this District, including making and using the
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`infringing system in this District. On information and belief, TikTok maintains offices in this
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`District, hires and maintains employees in this District, and conducts business in this District
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`consistent with its substantial physical presence in this District.
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`COUNT I –INFRINGEMENT OF THE ’030 PATENT
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`17.
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`10Tales re-alleges and incorporates by reference the allegations set forth in
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`paragraphs 1-16 as if fully set forth herein.
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`18.
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`On October 7, 2014, the ’030 patent, entitled “Method, System and Software for
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`Associating Attributes within Digital Media Presentations” was duly and legally issued by the
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`United States Patent and Trademark Office. A true and correct copy of the ’030 patent is attached
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`as Exhibit A.
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`19.
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`10Tales is the owner of the ’030 patent by virtue of an assignment effective as of
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`March 29, 2015. A true and correct copy of that assignment agreement is attached as Exhibit D.
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`20.
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`Pursuant to 35 U.S.C. § 282, the ’030 patent is presumed valid.
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`21.
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`TikTok has had knowledge of the ’030 patent since at least upon the date the
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`marking was posted on http://10tales.co/, which was on or before June 23, 2020.
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`22.
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`TikTok has been and now is directly infringing the ’030 patent within the United
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`States by making and using systems that infringe, either directly or under the doctrine of
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`equivalents, at least claim 1 of the ’030 patent, including, inter alia, the “recommendation system”
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`used in connection with the TikTok “For You” Feed.
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`23.
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`Claim 1 of the ’030 patent covers a server-based software system for associating
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`user attributes with digital media attributes and creating a user specific composite digital media
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`display.
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`24.
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`The system in claim 1 of the ’030 patent reflects technological improvements upon
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`the state of the art at the time. The technological improvements and solutions described and
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`claimed in the ’030 patent were not conventional or generic at the time of their respective
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`inventions. The inventions set forth in the claims of the ’030 patent involved novel and nonobvious
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`approaches to the problems and shortcomings prevalent in the art at the time. The inventions
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`claimed in the ’030 patent involve and cover more than just the performance of well-understood,
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`routine, and/or conventional activities known to the industry prior to the invention of the methods,
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`systems, and devices by the ’030 patent inventor.
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`25.
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`For example, one significant improvement over the prior art was the teaching of
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`analyzing how a user interacts with other users in an online social network in order to determine
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`that user’s affinity for certain digital media content, and then teaching the use of a rule based
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`algorithm to use this information to create a user specific composite digital media display for a
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`specific user.
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`26.
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`Upon information and belief, the backend “recommendation system” that TikTok
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`both commercially makes and uses in the United States and in this District in order to generate the
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`user specific “For You” feeds does precisely what is claimed by the system of the ’030 patent and
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`constitutes an act of direct infringement of at least claim 1 of the ’030 patent.
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`27.
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`First, according to TikTok’s own representations and as evidenced by Exhibit E,
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`one of the “defining features of the TikTok platform” is the fact that each “For You” feed is a user
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`specific composite digital media display—that is, “each person’s feed is unique and tailored to that
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`specific individual.” See, e.g., Exhibit E (June 18, 2020, news post from TikTok’s web site entitled
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`“How TikTok recommends videos #ForYou”). According to Defendant:
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`When you open TikTok and land in your For You feed, you’re presented with a
`stream of videos curated to your interests, making it easy to find content and
`creators you love. This feed is powered by a recommendation system that
`delivers content to each user that is likely to be of interest to that particular
`user. Part of the magic of TikTok is that there’s no one For You feed – while
`different people may come upon some of the same standout videos, each person’s
`feed is unique and tailored to that specific individual.
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`See id. (emphasis added).
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`28.
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`TikTok also acknowledges that its “recommendation system” makes use of user
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`attributes from a social network system, such as information about content that the user shares
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`with others, accounts the user follows, and comments the user posts in order to select specific
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`video clips (user specific digital media assets) to include in the user specific feed (user specific
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`composite digital media display). Id.
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`29.
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`Additionally, as evidenced by Exhibit F, when a user chooses to link or sign up for
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`TikTok using that user’s social network (such as Facebook, Twitter, Instagram, or Google),
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`TikTok’s recommendation system collects user attribute information from these social media
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`services, including the user’s contact lists for these services and information relating to the user’s
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`use of those services. See Exhibit F (TikTok privacy policy). Upon information and belief,
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`TikTok’s “recommendation system” uses these user attributes collected from the social media
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`services in rule based algorithms to select the video clips to include in the user’s “For You” feed
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`that TikTok’s recommendation system tailors for that specific individual.
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`30.
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`As a result of its infringement of the ’030 patent, TikTok has damaged 10Tales.
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`TikTok is liable to 10Tales in an amount to be determined at trial that adequately compensates
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`10Tales for the infringement, which by law can be no less than a reasonable royalty.
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`PRAYER FOR RELIEF
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`10Tales respectfully requests that the Court enter judgment in 10Tales’s favor ordering,
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`finding, declaring, and/or awarding 10Tales relief as follows:
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`A.
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`A judgment in favor of 10Tales that TikTok has directly infringed the ’030 patent,
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`whether literally or under the doctrine of equivalents;
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`B.
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`Awarding 10Tales its damages suffered as a result of TikTok’s infringement of the
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`’030 patent, including pre-judgment and post-judgment interest and supplemental damages for any
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`continuing post-verdict or post-judgment infringement with an accounting as needed;
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`C.
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`D.
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`E.
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`Awarding 10Tales enhanced damages pursuant to 35 U.S.C. § 284;
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`Awarding 10Tales its costs and expenses;
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`Declaring this is an exceptional case awarding 10Tales its reasonable attorneys’
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`fees pursuant to 35 U.S.C. § 285;
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`F.
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`Granting 10Tales such other equitable relief which may be requested and to which
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`10Tales is entitled; and
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`G.
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`Granting such further relief as the Court finds appropriate.
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`Case 5:21-cv-03868-VKD Document 1 Filed 09/02/20 Page 9 of 9
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`JURY DEMAND
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`Pursuant to Federal Rule of Civil Procedure 38(b), 10Tales requests a jury trial of all issues
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`triable of right by a jury.
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`Dated: September 2, 2020
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`Respectfully submitted,
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`By: /s/ William E. Davis, III
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`William E. Davis, III
`Texas State Bar No. 24047416
`bdavis@davisfirm.com
`THE DAVIS FIRM, PC
`213 N. Fredonia Street, Suite 230
`Longview, Texas 75601
`Telephone: (903) 230-9090
`Facsimile: (903) 230-9661
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`Barry P. Golob (pro hac vice to be filed)
`bgolob@cozen.com
`Kerry B. McTigue (pro hac vice to be filed))
`kmctigue@cozen.com
`Thomas J. Fisher (pro hac vice to be filed)
`tfisher@cozen.com
`Aaron Lukas (pro hac vice to be filed)
`alukas@cozen.com
`COZEN O’CONNOR
`1200 Nineteenth Street, NW
`Washington, D.C. 20036
`Telephone: (202) 912-4800
`Facsimile: (202) 861-1905
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`Attorneys for Plaintiff 10Tales Inc.
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