Case 5:21-cv-03868-VKD Document 147 Filed 02/25/22 Page 1 of 8
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`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`A Limited Liability Partnership
`Including Professional Corporations
`STEPHEN S. KORNICZKY, Cal. Bar No. 135532
`MARTIN R. BADER, Cal. Bar No. 222865
`ERICKA J. SCHULZ, Cal. Bar No. 246667
`MICHAEL J. HOPKINS, Cal. Bar No. 326621
`12275 El Camino Real, Suite 100
`San Diego, California 92130-4092
`Telephone:
`858.720.8900
`Facsimile:
`858.509.3691
`E mail
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`mhopkins@sheppardmullin.com
`
`
`
`
`Attorneys for Defendants TikTok Inc., TikTok
`Pte. Ltd., ByteDance Ltd. and ByteDance Inc.
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`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA, OAKLAND DIVISION
`
` Case No. 4:21-cv-03868-YGR
`
`DEFENDANTS’ POST HEARING BRIEF
`IN SUPPORT OF MOTION TO DISMISS
`PLAINTIFF’S AMENDED COMPLAINT
`FOR FAILURE TO STATE A CLAIM
`PURSUANT TO FED. R. CIV. P. 12(B)(6)
`AND 35 U.S.C. § 101
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`Date:
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`Time:
`Courtroom:
`Judge:
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`10TALES INC.,
`
`Plaintiff,
`
`v.
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`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.,
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`
`
`Defendants.
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`
`
`
`
`February 22, 2022
`10:00 a.m.
`1 – 4th Floor
`Hon. Yvonne Gonzalez
`Rogers
`
`
`SMRH:4865-5941-9921.
`
`
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`Case No. 4:21-cv-03868-YGR
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`DEFENDANTS’ POST HEARING BRIEF ISO MOTION TO DISMISS
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`Case 5:21-cv-03868-VKD Document 147 Filed 02/25/22 Page 2 of 8
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`Consistent with the two-step analysis set forth in Alice, Defendants have thoroughly shown
`that Claim 1 as a whole recites a patent-ineligible abstract idea. Defendants’ straightforward
`analysis is consistent with numerous other Federal Circuit cases such as Free Stream, Capital
`One, Bridge & Post, Electric Power Grid, and Affinity Labs. See, e.g., Mot. at 8-9; Reply at 2-4;
`Schulz Decl. Ex. A at 11-13. 10Tales cannot distinguish the ’030 patent legally or factually from
`this line of cases, nor can it establish why cases such as DDR and Enfish should apply instead.
`Specifically, 10Tales cannot even articulate a dispute with the general character of Claim 1,
`customizing digital media content, which the Federal Circuit has routinely found in similar claims
`to be abstract. Instead, 10Tales only disputes what the Court should consider is the improvement
`to the claim. Without explanation or legal support, 10Tales argues the improvement is the entire
`claim and that claim construction is required to define this improvement. Yet, 10Tales offers no
`proposed construction despite the legal requirement that 10Tales be able to at least articulate its
`position now. In any event, regardless of what reasonable construction the Court uses, Claim 1
`still fails to capture an alleged advancement over the prior art. Accordingly, 10Tales’ arguments
`that Claim 1 is patent eligible are unsupported by the law and facts.
`The Law: DDR Holdings and Enfish do not support Claim 1’s patent-eligibility
`I.
`10Tales argues DDR and Enfish are dispositive of the patent-eligibility issue at bar because
`Claim 1 “improves the operation of systems,” is “technical in nature,” and is “directed to a
`challenge that’s particular to network systems.” Tr. 5:7-14, 24:19-26:3. However, 10Tales only
`relies on the general statements in these cases without articulating how the facts apply here or
`what, if any, similarities exist between Claim 1 and the claims at issue in these cases. For
`example, in DDR, the claimed hardware (in that case, a “web server”) specifically directed users
`communicating over the internet to an alternative webpage rather than the expected webpage.
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014) (emphasis added).
`The system in DDR covered “how interactions with the Internet are manipulated to yield a desired
`result—a result that overrides the routine and conventional sequence of events ordinarily
`triggered.” Id. (specifically distinguishing the DDR claims from claims it recently held ineligible
`because they “were directed to a specific method of advertising and content distribution that was
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`SMRH:4865-5941-9921.
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`Case No. 4:21-cv-03868-YGR
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`DEFENDANTS’ POST HEARING BRIEF ISO MOTION TO DISMISS
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`Case 5:21-cv-03868-VKD Document 147 Filed 02/25/22 Page 3 of 8
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`previously unknown and never employed on the Internet before” because those claims merely
`used the Internet to perform an abstract business practice).
`In contrast, Claim 1’s technology (a server) is not coupled or connected to any device or
`network, let alone a networked system. Likewise, the recited programming instructions do not
`describe a method for even interacting with the Internet.’030 Patent Claim 1. Moreover, the
`claimed programming instructions do not recite any method of interacting on a networked system
`that overrides the routine and conventional way that the claimed server and storage medium
`would ordinarily interact on a networked system. Id. Instead, Claim 1 is akin to “the patent-
`ineligible claims” that the Federal Circuit warned of in Enfish that “recite[] generalized steps to be
`performed on a computer using conventional computer activity.” Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327, 1338 (Fed. Cir. 2016).
`As previously briefed, Claim 1 is analogous to the Free Stream case. See Free Stream
`Media Corp. v. Alphonso Inc., 996 F.3d 1355 (Fed. Cir. 2021). In Free Stream, the asserted claims
`involved a “bypass” of a mobile device security mechanism, which prevented internet-connected
`devices, such as a television and a mobile device, from communicating. The Federal Circuit found
`that DDR and Enfish do not apply, because “even assuming the bypassing of mobile device
`security mechanisms had not been done before, there is nothing inventive disclosed in the claims
`that permits communications that were previously not possible. The claims simply recite the use of
`generic features, as well as routine functions, to implement the underlying idea.” Id. at 1366
`(citing Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016)).
`Here, even if the Court assumed that a digital media personalization system had never
`before been connected to a social network, Claim 1 does not present a new way to communicate
`with the networked system that was not previously possible. For example, Claim 1 does not
`provide an improvement to internet-based technology, the server, the storage technology, or the
`communication between a server and an external social network. Thus, DDR and Enfish are
`inapposite to Claim 1, and do not support a finding of patent eligible subject matter.
`The Facts: Claim construction is a red herring
`II.
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`Case 5:21-cv-03868-VKD Document 147 Filed 02/25/22 Page 4 of 8
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`It is nearly impossible to pin down what argument 10Tales is asserting regarding claim
`construction, and whether or how 10Tales argues it affects the § 101 decision. In 10Tales’
`Opposition, it failed to identify (1) any terms for construction, (2) any actual constructions, or (3)
`specific support in the specification for any alleged construction. Opp. at 21-24. When asked to
`identify terms for construction at the hearing, 10Tales only identified one term—the “retrieving”
`limitation—and then failed to provide a construction for the individual limitation. Tr. 20:21-22:1.
`Also, during the hearing, 10Tales argued that “one skilled in the art” would understand how to go
`to a social network, analyze user social network interactions, and determine affinities from an
`external social network.1 Tr. 19:9-20:21. Yet, when Defendants subsequently pointed out that
`10Tales failed to submit this term in its exchange of terms for claim construction (i.e., in both
`Texas and this District), 10Tales withdrew its reliance on this term needing construction, arguing
`that it only meant this is where the improvement can be found. Tr. at 37:4-10.
`The point is that 10Tales is fumbling to find any argument to create a claim construction
`dispute and should be prohibited from manufacturing a claim construction issue solely to prevent a
`decision on this § 101 motion.2 10Tales’ failure to identify any terms for construction is fatal to its
`opposition to the § 101 motion. Elec. Commc'n Techs., LLC v. ShoppersChoice.com, LLC, 958
`F.3d 1178, 1184 (Fed. Cir. 2020).
`III. The Facts: Claim 1 does not recite 10Tales’ purported improvements
`10Tales concedes that Claim 1 does not contain or express the improvements that 10Tales
`allegedly made to the conventional system. See Tr. at 19:9-21:12; 23:12-25:17 (not disputing that
`key phrases in its purported improvements, i.e., “analyzing,” “determining,” and “algorithm”, are
`
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`1 10Tales’ claim construction position in Texas was that the retrieved social network information
`already includes user attributes that already includes a user affinity, not that anything is analyzed
`or determined. See Dkt. 62 at 15. This is not the first time 10Tales has changed its claim
`construction positions, which is just one of the reasons why 10Tales’ position is unreliable.
`2 Moreover, 10Tales’ off-the-cuff comment about Defendants’ exchange of claim construction
`terms is irrelevant and disingenuous. At this stage, the court only needs to consider the
`constructions that 10Tales argues (or in this case does not argue) are relevant to the § 101 analysis.
`That being said, the claim terms Defendants have identified for meet and confer purposes are a
`direct result of the ever-changing positions 10Tales is taking in its infringement contentions.
`Case No. 4:21-cv-03868-YGR
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`DEFENDANTS’ POST HEARING BRIEF ISO MOTION TO DISMISS
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`Case 5:21-cv-03868-VKD Document 147 Filed 02/25/22 Page 5 of 8
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`not in the claims). There is no dispute, however, that an improvement or “inventive concept cannot
`be concocted from the pleadings or the specification, it must be firmly rooted in the language of
`the claim.” People.ai, Inc. v. SetSail Techs., Inc., No. C 20-09148 WHA, 2021 WL 5882069, at *6
`(N.D. Cal. Dec. 13, 2021). At the hearing, Defendants also cited Am. Axle & Mfg., Inc. v. Neapco
`Holdings LLC, 967 F.3d 1285, 1293 (Fed. Cir. 2020) for the similar contention that “features that
`are not claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice analysis.” Accordingly,
`because 10Tales’ purported improvements are not claimed, they cannot support 10Tales’ patent-
`eligibility argument. Therefore, the § 101 inquiry can end here.
`To exhaust all possibilities, however, 10Tales was provided a second opportunity to
`identify where in the specification its three purported improvements are described with specificity:
`(1) “retrieving user social network information,” (2) “performing a rule based substitution,” and
`(3) the system’s technology. 3 Tr. 19:9-26:3; Ex. B (provided for convenience). As set forth in
`more detail below, none of the citations identified anything that describes how to accomplish these
`purported improvements. Because “there are no specific factual allegations or references to the
`[accused patent] claims that undergird Plaintiff's purported” improvements, 10Tales’ “attorney
`argument cannot save the Patent.” Orcinus Holdings, LLC v. Synchronoss Techs., Inc., 379 F.
`Supp. 3d 857, 882 (N.D. Cal. 2019). Thus, Claim 1 should be found abstract under § 101.
`The specification fails to describe learning, observing, or analyzing user
`A.
`interactions on a social network to determine user affinities.
`10Tales alleges that the “retrieving user social network information” limitation is an
`improvement over prior art because it “analyzes how that user interacts with other users in an
`online social network in order to determine the user’s affinity for certain digital media content.”
`See Opp. at 15; Ex. A at 15. To support this contention, 10Tales cited the following portions of the
`’030 Patent at the hearing: 2:53-61, 3:33-53, 7:38-48, 11:3-16, 15:10-34, 17:17-43, and 19:4-47.
`Ex. B. None of these citations mention (1) social networks, (2) user social network information,
`
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`3 To clarify, 10Tales did not identify an individual “improvement” to the conventional system, but
`instead argues that the improvement is the system as a whole, i.e., the entirety of Claim 1. Tr.
`25:15-17. Yet, no embodiment in the specification covers 10Tales’ interpretation of the system.
`Case No. 4:21-cv-03868-YGR
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`DEFENDANTS’ POST HEARING BRIEF ISO MOTION TO DISMISS
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`Case 5:21-cv-03868-VKD Document 147 Filed 02/25/22 Page 6 of 8
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`(3) analyzing user interactions on a social network, or (4) analyzing user interactions on a social
`network to determine user affinities. Id. The cited sections merely describe irrelevant
`embodiments where users directly answer questions presented on the screen (i.e., well-known
`methods), or the user interacts with the displayed presentation (i.e., the interactions are not
`“external to the presented” display, as required by the claim). Id. At best, the specification merely
`references token words such as “social” or “network” but does not describe how these token words
`teach a system that analyzes interactions in a social network in order to determine affinities. In
`fact, 10Tales failed to show that this purported improvement is described at any level in the
`specification. This lack of description and 10Tales’ argument that relevant “social networks had
`not even been devised” at the time of the invention (Tr. 10:13-16), confirm that the patent could
`not have taught one of skill in the art how to analyze user interactions on a social network to
`determine user affinities. Thus, the purported improvement cannot be imported into the claim, and
`it cannot elevate Claim 1 to a patent-eligible concept.
`The specification fails to describe a novel rule based substitution or algorithm
`B.
`To incorporate the purported “algorithm” improvement into Claim 1, 10Tales argued that
`“one skilled in the art would understand rule-based substitution to require when software is
`carrying out the rule-based substitution, it would carry out a rule-based algorithm.” Tr. 24:10-13.
`However, 10Tales admitted at the hearing and in its prior claim construction arguments that this
`element uses conventional methods. First, 10Tales conceded that the only algorithms referenced in
`the specification are “well-known.” (Tr. at 28:10-17). Indeed, the remaining sections of the
`specification cited by 10Tales—7:54-67, 15:10-34, 17:17-43, and 19:4-47—do not describe
`algorithms for substitution (neither conventional nor improved), nor any algorithms for
`incorporating a new digital media asset into a set of digital media assets. Second, during claim
`construction in Texas, 10Tales argued that one of skill in the art would understand the term
`“‘substitute’ simply means ‘to take the place of,’” and then identified sections of the specification
`that described using “well-known” algorithms. Dkt. 62 at 18. Thus, 10Tales concedes the term
`substitution is conventional, and using well-known algorithms, such as “look-up tables,” is
`conventional. ’030 Patent, 15:21-34. Accordingly, even under 10Tales’ interpretation of the rule
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`Case 5:21-cv-03868-VKD Document 147 Filed 02/25/22 Page 7 of 8
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`based substitution limitation, the result is an algorithm that “start[s] with data, add[s] an algorithm,
`and end[s] with a new form of data,” which is insufficient to confer patent eligibility. See
`PersonalWeb Techs. LLC v. Google LLC, 8 F.4th 1310, 1317 (Fed. Cir. 2021) (citation omitted).
`As a result, there is nothing in the “rule based substitution” limitation that presents an
`improvement or inventive concept to make Claim 1 patent eligible.
`Claim 1 does not improve technology
`C.
`Contrary to 10Tales’ general and frivolous argument, Claim 1 does not actually “improve[]
`the operation of systems that present digital media content to a user,” nor does Claim 1 recite an
`improvement “particular to network systems.” See ’030 Patent Claim 1. It merely suggests looking
`at a new database for user attributes. 10Tales failed to identify any aspect of the system, either
`individually or in its entirety, that utilizes the network in an improved or unconventional manner.
`As just one example, 10Tales argues that the purported invention includes assessing a “user’s
`behavior in a social network external to the system.” (Tr. at 10:16-21). But, 10Tales cannot
`articulate where in the claim or specification the invention requires actually coupling the server to
`an external social network because, for example, the “online community 521” is internal to the
`system diagram in Fig. 5A. Further, Claim 1 and the specification fail to describe any process for
`communicating with the social network that requires an unconventional, or unique use of the
`server and storage medium. See, supra, § I. Indeed, Claim 1’s “passing references to computers
`only show that the method uses the computer as a tool for automation of its process.”
`Pureproductive, Inc. v. H20.AI, Inc., No., 2017 WL 3721480, at *5 (N.D. Cal. Aug. 29, 2017). As
`in Free Stream, Claim 1 does nothing “beyond providing a user with targeted content using
`generic processes and machinery.” Free Stream, 996 F.3d at 1365. Therefore, Claim 1 “does not
`. . . improve[] the operability of the [recited] devices,” and, as a result, is patent-ineligible.
`IV. Conclusion
`Defendants have shown by clear and convincing evidence that the focus of Claim 1 is
`abstract. Defendants have shown that the alleged improvements or inventive concepts are non-
`existent and/or non-specific, and do not create patent eligible subject matter for Claim 1.
`Therefore, the ’030 patent should be found invalid under § 101 for being patent ineligible.
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`Case No. 4:21-cv-03868-YGR
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`Case 5:21-cv-03868-VKD Document 147 Filed 02/25/22 Page 8 of 8
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`Dated: February 25, 2022
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`Respectfully submitted,
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`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
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`
`By
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`/s/ Stephen S. Korniczky
`Stephen S. Korniczky
`Martin R. Bader
`Ericka J. Schulz
`Michael J. Hopkins
`
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`Attorneys for Defendants TikTok Inc., TikTok Pte Ltd.,
`ByteDance Ltd. and ByteDance Inc.
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`Case No. 4:21-cv-03868-YGR
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`DEFENDANTS’ POST HEARING BRIEF ISO MOTION TO DISMISS
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