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`Case 5:21-cv-03868-VKD Document 148 Filed 02/25/22 Page 1 of 10
`
`Andrew M. Hutchison (SBN 289315)
`COZEN O’CONNOR
`101 Montgomery Street, Suite 1400
`San Francisco, California 94104
`Tel:
`415-593-9625
`Fax: 415-692-3514
`Email: ahutchison@cozen.com
`Barry Golob (Pro Hac Vice)
`Thomas J. Fisher (Pro Hac Vice)
`COZEN O’CONNOR
`1200 19TH Street, NW
`Washington, DC 20036
`Tel:
`202-912-4800
`Fax: 202-861-1905
`Email: bgolob@cozen.com
`tfisher@cozen.com
`
`William E. Davis, III (Pro Hac Vice)
`Rudolph (Rudy) Fink IV (Pro Hac Vice)
`THE DAVIS FIRM, PC
`213 N. Fredonia Street, Suite 230
`Longview, Texas 75601
`Tel:
`903-230-9090
`Fax: 903-230-9661
`Email: bdavis@davisfirm.com
`rfink@davisfirm.com
`Attorneys for Plaintiff
`10TALES, INC.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA, OAKLAND DIVISION
`
`10TALES, INC.,
`Plaintiff,
`
`v.
`TIKTOK INC., TIKTOK PTE. LTD.
`BYTEDANCE LTD., AND
`BYTEDANCE INC.,
`Defendants.
`
`Case No.: 4:21-cv-03868-YGR
`PLAINTIFF’S POST ARGUMENT BRIEF
`IN OPPOSITION TO DEFENDANTS’
`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
`
`Date:
`Time:
`Courtroom:
`Judge:
`
`February 22, 2022
`10:00 a.m.
`1 – 4th Floor
`Hon. Yvonne Gonzalez
`Rogers
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`Case 5:21-cv-03868-VKD Document 148 Filed 02/25/22 Page 2 of 10
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`TABLE OF CONTENTS
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`Page
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`Introduction ........................................................................................................................................... 1
`TikTok's Demonstratives—Like Its Briefs—Strip the Invention from the Claim ................................ 2
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
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`Cases
`
`Am Axle & Mfg., Inc. v. Neapco Holdings LLC,
`977 F.3d 1379 (Fed. Cir. 2020)..................................................................................................1
`
`Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada (U.S.),
`687 F.3d 1266 (Fed. Cir. 2012)..................................................................................................1
`
`Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC,
`827 F.3d 1341 (Fed. Cir. 2016)..................................................................................................6
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018)..................................................................................................1
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014)..................................................................................................5
`
`Diamond v. Chakrabarty,
`447 U.S. 303 (1980) ...................................................................................................................1
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed Cir. 2016)...................................................................................................5
`
`Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
`873 F.3d 1364 (Fed. Cir. 2017)..................................................................................................1
`
`Ultramercial, Inc. v. Hulu, LLC,
`722 F.3d 1335 (Fed. Cir. 2013)..............................................................................................2, 6
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`Introduction
`Claim 1 of the ’030 patent is presumed valid and presumed patent-eligible under 35 U.S.C.
`§ 101. TikTok, therefore, carries a heavy burden of proving that claim 1 is patent-ineligible by clear
`and convincing evidence. But TikTok’s burden is even steeper here, for a number of reasons.
`First, under § 101, “anything under the sun that is made by man,” is patent-eligible. Diamond
`v. Chakrabarty, 447 U.S. 303, 309 (1980). To prevail, TikTok must prove by clear and convincing
`evidence that claim 1 is directed to an abstract idea—one of the narrow judicial exceptions to
`patentable subject matter. But even the Federal Circuit is struggling with what an “abstract idea” is
`under the Alice framework. As Judge Linn noted, “the contours of the abstract idea exception are not
`easily defined. For that reason, the abstract idea exception is almost impossible to apply consistently
`and coherently.” Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1377 (Fed. Cir.
`2017) (Linn, J., dissenting-in-part and concurring-in-part). Chief Judge Moore agrees: “[w]hat we
`have is worse than a circuit split—it is a court bitterly divided. As the nation’s lone patent court, we
`are at a loss as to how to uniformly apply § 101.” Am. Axle & Mfg., Inc. v. Neapco Holdings LLC,
`977 F.3d 1379, 1382 (Fed. Cir. 2020) (Moore, J., concurring).
`Second, and most daunting under the law, TikTok filed its motion under Rule 12(b)(6) where
`all allegations in 10Tales’ Complaint must be accepted as true and taken in a light most favorable to
`10Tales. Moreover, given the importance of understanding the focus of the claimed invention, the
`Federal Circuit has cautioned that “claim construction … will ordinarily be desirable—and often
`necessary—to resolve claim construction disputes prior to a § 101 analysis, for the determination of
`patent eligibility requires a full understanding of the basic character of the claimed subject matter.”
`Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012)
`(resolving claim construction disputes before proceeding). And as to the Alice analysis itself,
`TikTok’s Rule 12(b)(6) motion mandates that any factual issues arising in either step of the analysis
`must be found in 10Tales’ favor. The underlying factual issues here include the general character of
`the ’030 patent, and whether the properly construed claim was well-understood, routine, and
`conventional to a skilled artisan in the early 2000s—which is central to the Court’s analysis. See
`Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018) (finding that “[a]ny fact … that is
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`pertinent to the invalidity conclusion must be proven by clear and convincing evidence.”). The
`“analysis under § 101, while ultimately a legal determination, is rife with underlying factual issues.”
`Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013).
`“Almost by definition,
`analyzing whether something was ‘conventional’ or ‘routine’ involves analyzing facts.” Id.
`Third, claim 1 of the ’030 patent is on its face directed to a system, including a server, memory,
`and software programmed to carry out the invention in a network environment. The elements of
`system claim 1 undeniably recite a tangible thing—not an abstract idea. And that tangible system is
`directed to eligible subject matter because it provides an inventive improvement over conventional
`systems. 10Tales’ Complaint specifically alleges that the system recited in claim 1 of the ’030 patent:
`provides technological improvements over the state of the art that were not conventional or generic;
`that the inventions cover more than the performance of well-understood, routine and/or conventional
`activities; improves over conventional systems by analyzing how a user interacts with others in a social
`network to determine a user’s affinity for content; and uses a rule based algorithm to create a
`personalized digital media display for a particular user. See First Amended Complaint, ¶¶ 59-60.
`These allegations must be taken as true and in a light most favorable to 10Tales.
`Not only are these allegations true for purposes of TikTok’s motion, they are consistent with
`and bolstered by the findings by the PTO in allowing claim 1 to issue, and the findings by the PTAB
`in rejecting TikTok’s petition for IPR—which must also be accepted as true. In both instances—the
`Patent Office determined that claim 1 recites retrieving user social network information from a source
`external to the digital media display, which was not disclosed in conventional systems, and thus is
`directed to patentable subject matter under § 101.
`TikTok thus cannot carry its heavy burden to prove that “the only plausible reading of [claim
`1 is that] there is clear and convincing evidence of ineligibility.” Ultramercial, 722 F.3d at 1339
`(emphasis in original).
`TikTok’s Demonstratives—Like Its Briefs—Strip the Invention from the Claim
`At the oral argument on TikTok’s motion on February 22, 2022, the Court asked 10Tales to
`respond to certain assertions made in TikTok’s Demonstratives. In particular, slide 15 took issue with
`10Tales’ identification of the improvements the ’030 patent provided over conventional systems, as
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`alleged in 10Tales’ Complaint, and as found by the PTO and PTAB. For the convenience of the Court,
`10Tales provides the following additional response to TikTok’s assertions.
`Claim 1 of the ’030 patent is not a “do it on a computer” claim, as TikTok alleges. Instead, it
`is directed to an inventive system that is rooted in technology and includes a computer and a networked
`environment, not merely the performance of some longstanding business or economic practice such
`as budgeting or ad placement. Claim 1 is directed to an improved system for presenting personalized
`digital media content to a user.
`The PTO agreed, and allowed claim 1 to issue because the Examiner found that the “closest
`prior art … does not teach or suggest, retrieving user social network information from at least one
`source external to the presented first composite digital media display, wherein the user social network
`information contains one or more user attributes.” The Examiner explained that the prior art “gets
`user attribute information by asking the users. The prior art does not teach or suggest that the benefits
`of going to social networks to get user attribute information would outweigh the costs.”
`The record establishes that the system recited in claim 1 is an inventive improvement over
`prior art systems. This improvement is recited inter alia, by the claim limitations requiring that
`programming instructions running on the server, perform a step of “retrieving user social network
`information from at least one source external to the presented first composite digital media
`display, wherein the user social network information contains one or more user attributes.” As
`the Examiner found, claim 1 recites an inventive improvement because it retrieves user attributes from
`a source external to the user (and not simply getting user attribute information by asking the user),
`which conventional systems did not do.
`The ’030 patent describes that not only can a user be asked a series of questions to include in
`the user’s profile to personalize the content, but the system can also personalize the content based on
`a user’s interaction with other users to present “personalized content … based on the learned social
`dynamics of the user.” ’030 patent, 3:24-32; 4:15-23. For example, the system may obtain “attributes
`related to an individual’s dynamics within the community.” Id., 8:1-6. The ’030 patent provides
`examples of the database structures reflecting “certain aspects of the user profile and his or her
`affinities for certain objects and shared experiences that are part of his or her social interactions.” Id.,
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`15:10-13; Figures 11, 12. These stored attributes reflecting a user’s affinities “permit a user’s profile
`to determine digital media assets that have a strong impact on that user.” Id., 15:13-17.
`The ’030 patent explains:
`The optimization process of finding the strongest or most appropriate affinities and best match
`to the user’s internal narrative social perception identification framework may be based on a
`number of algorithms. Exemplary algorithms may include look-up tables, in which values of
`profile elements are matched to digital media assets, and correlation algorithms, which
`correlate profile elements, values, and ranks with profile elements, values, and ranks for a
`digital media asset to determine the best digital media asset to present. Other techniques for
`matching the user profile to the digital media asset may include neural networks and fuzzy
`logic, wherein aspects of the user profile are used to train the network or as inputs to the fuzzy
`logic system to determine the best digital media asset. Other types of artificial intelligence
`techniques, well known to those skilled in the art, may also be used to find the digital media
`asset, or sets of digital media assets, that have the largest impact on that particular user.
`
`Id., 15:17-34 (emphasis added). Those skilled in the art would understand that these types of
`algorithms are often referred to as “rule based” algorithms, as recited in claim 1, because—in the
`context of the ’030 patent—they are used to set rules for “finding the strongest or most appropriate
`affinities and best match” to identify content that will have a strong impact on the user.
`It is the application of such rule-based algorithms—which were well known in the art—to
`select content based not only on user attributes that were not only provided to the system by the user,
`but also obtained from a source external to the presented digital media display that was neither well-
`known, routine, nor conventional in 2003. These aspects of the inventive improvement over prior art
`system is recited, inter alia, by the claim limitations requiring that programming instructions running
`on the server perform steps of “selecting, based on the user attributes in the social network
`information, a second set of digital media assets, wherein the second set of digital media assets is
`associated with one or more user attributes found in the user social network information,” and
`“performing a rule based substitution of one or more of the digital media assets from the first
`set of digital media assets with one or more of the digital media assets from the second set of
`digital media assets to create a user specific set of digital media assets.”
`As explained in the ’030 patent—and as recognized by the Examiner in allowing claim 1 to
`issue—claim 1 provides an inventive improvement over prior art systems because the claimed “user
`specific set of digital media assets” will have a stronger impact on the user because they are selected
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`by utilizing “user social network information” that was “retrieved … from … source external” to the
`digital media display. And when the entirety of system claim 1 is considered as an ordered
`combination—as is required under Alice—it recites a technological improvement over conventional
`systems for providing digital media content because it personalizes the content based not only on
`information about the user provided by the user, but also based on externally retrieved user social
`network information, which prior art systems did not do. See DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245, 1259 (Fed. Cir. 2014).
`These inventive improvements provided by claim 1 are both recited in the claim and described
`in the ’030 patent. Moreover, they were confirmed to be inventive by the Examiner when he allowed
`the claim to issue, and by the PTAB, when it denied TikTok’s IPR petition finding that TikTok did
`not demonstrate that the asserted prior art, “either alone or in combination, disclose ‘retrieving user
`social network information from at least one source external to the presented first composite digital
`media display, wherein the user social network information contains one or more user attributes.’”
`Under Alice step-one, a software-based claim can be found to be directed to an abstract idea if
`it merely uses a computer to automate a fundamental economic or longstanding commercial or
`technical practice. As discussed supra, that is not the case here. Claim 1 is directed to a technological
`invention that was an improvement over conventional systems. TikTok’s step-one argument is
`premised on its over-generalization of claim 1 as being directed to simply “presenting customized
`digital media content based on retrieved social network information containing user attributes.”
`TikTok’s over-generalization runs afoul of Alice step-one precedent, because in doing so, TikTok
`leads the Court down the path of ensuring that the exceptions to § 101 eligibility will swallow the rule.
`See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016)
`And worse here, TikTok does not even address whether the entirety of its alleged abstract idea
`is indeed abstract. Instead, TikTok further parses its argument to assert that “presenting customized
`digital media content” is conventional and abstract, and then—separately—that “retrieving social
`network information containing user attributes” is also abstract. TikTok ignores its own generalization
`that the “presenting” is “based on” “retrieved social network information.” Demonstratives 9-10.
`TikTok attempts to insulate its analysis by telling the Court that it can ignore limitations of the claim
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`that it deems to be “secondary” to the focus of the claim. Demonstrative 11. But that is not what
`TikTok does here. Instead, it ignores inventive features specifically recited in the claims—as
`discussed supra—described in the specification, recognized by the PTO and the PTAB to be inventive
`over conventional systems, and alleged in 10Tales’ Complaint. As in its briefs, TikTok’s over
`generalization studiously ignores limitations of claim 1 reciting “system,” “server,” “computer-
`readable storage medium,” “programming instructions,” “identification,” “from at least one source
`external,” “monitoring … for the presence of a trigger,” “performing a rule based substitution … to
`create.” System claim 1 is directed to patent-eligible subject matter, and TikTok’s step-one argument
`fails. Under the Alice framework, the inquiry ends there, and TikTok’s motion should be denied.
`In Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016),
`the Court explained that when the claim language recites the invention’s specific improvements, under
`step-one, the invention is directed to those specific improvements in computer technology and is not
`abstract under Alice step-one. Id. at 1348. For the reasons discussed, such is the case here. The
`Bascom court went on to explain that for some cases, where it may be a “close call” as to the basic
`thrust of the invention, “it might become clear that the specific improvements in the recited computer
`technology go beyond ‘well-understood, routine, conventional activities’ than render the invention
`patent-eligible.” Id., (citing Alice Corp. Pty v. CLS Bank Int’l, 134 S.Ct. 2347, 2359 (2014)).
`Here, 10Tales’ Complaint specifically alleges that the invention goes beyond “just the
`performance of well-understood, routine, and/or conventional activities known to the industry prior to
`the invention.” First Amended Complaint, ¶ 59. 10Tales’ Complaint further alleges that the invention
`improves over the prior art by teaching “analyzing how a user interacts with other users in an online
`social network in order to determine that user’s affinity for certain digital media content, and then
`teaching the use of a rule based algorithm to use this information to create a user-specific composite
`digital media display for a particular user.” Amended Complaint, ¶ 60. These factual allegations must
`be accepted as true and taken in a light most favorable to 10Tales under Rule 12(b)(6). TikTok cannot
`overcome these allegations and meet its heavy burden to prove that “the only plausible reading of
`[claim 1 is that] there is clear and convincing evidence of ineligibility.” Ultramercial, 722 F.3d at
`1339 (emphasis in original). TikTok’s motion should be denied.
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`Dated: February 25, 2022
`
`
`
`COZEN O’CONNOR
`
`By:
`
` /s/ Andrew M. Hutchison
`Barry Golob
`Thomas Fisher
`Andrew M. Hutchison
`THE DAVIS FIRM PC
`William E. Davis, III
`Rudolph (Rudy) Fink IV
`Attorneys for Plaintiff
`10Tales, Inc.
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