Case 5:21-cv-03868-VKD Document 203 Filed 12/12/22 Page 1 of 9
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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
`JAMES YOUNG HURT, Cal. Bar No. 312390
`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
`jhurt@sheppardmullin.com
`mhopkins@sheppardmullin.com
`
`
`Attorneys for Defendants TikTok Inc., TikTok
`Pte. Ltd., ByteDance Ltd., and ByteDance Inc.
`
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
`10TALES INC.,
` Case No. 5:21-cv-03868-VKD
`
`
`DEFENDANTS’ NOTICE OF LODGING
`Plaintiff,
`OF THE PATENT TRIAL AND APPEAL
`
`BOARD’S DENIAL OF REHEARING
`v.
`
`
`TIKTOK INC., TIKTOK PTE. LTD.,
`Courtroom: 2 – 5th Floor
`BYTEDANCE LTD., and BYTEDANCE
`Judge: Hon. Virginia K. DeMarchi
`INC.,
`
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`
`Defendants.
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`Case No. 5:21-cv-03868-VKD
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`DEFENDANTS’ NOTICE OF LODGING OF THE PATENT TRIAL AND
`APPEAL BOARD’S DENIAL OF REHEARING
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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
`JAMES YOUNG HURT, Cal. Bar No. 312390
`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
`jhurt@sheppardmullin.com
`mhopkins@sheppardmullin.com
`
`
`Attorneys for Defendants TikTok Inc., TikTok
`Pte. Ltd., ByteDance Ltd., and ByteDance Inc.
`
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
`10TALES INC.,
` Case No. 5:21-cv-03868-VKD
`
`
`DEFENDANTS’ NOTICE OF LODGING
`Plaintiff,
`OF THE PATENT TRIAL AND APPEAL
`
`BOARD’S DENIAL OF REHEARING
`v.
`
`
`TIKTOK INC., TIKTOK PTE. LTD.,
`Courtroom: 2 – 5th Floor
`BYTEDANCE LTD., and BYTEDANCE
`Judge: Hon. Virginia K. DeMarchi
`INC.,
`
`
`
`
`
`
`
`Defendants.
`
`
`
`
`
`
`
`
`Case No. 5:21-cv-03868-VKD
`
`DEFENDANTS’ NOTICE OF LODGING OF THE PATENT TRIAL AND
`APPEAL BOARD’S DENIAL OF REHEARING
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`Case 5:21-cv-03868-VKD Document 203 Filed 12/12/22 Page 2 of 9
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`PLEASE TAKE NOTICE that Defendants TikTok Inc., TikTok Pte. Ltd., ByteDance Ltd.,
`and ByteDance Inc. (collectively “Defendants”) hereby lodge a copy of the Patent Trial and
`Board’s denial of Defendants’ Request for Rehearing under C.F.R. § 42.71 for U.S. Patent No.
`8,856,030.
`Dated: December 12, 2022
`
`By: /s/ Stephen S. Korniczky
`Stephen S. Korniczky, Cal. Bar No. 135532
`Martin R. Bader, Cal. Bar No. 222865
`Ericka J. Schulz, Cal. Bar No. 246667
`James Young Hurt, Cal. Bar No. 312390
`Michael J. Hopkins, Cal. Bar No. 326621
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`12275 El Camino Real, Suite 100
`San Diego, CA. 92130
`T: 858.720.8900
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`jhurt@sheppardmullin.com
`mhopkins@sheppardmullin.com
`Attorneys for TikTok Inc., TikTok Pte. Ltd., ByteDance Ltd., and
`ByteDance Inc.
`
`Case No. 5:21-cv-03868-VKD
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`DEFENDANTS’ NOTICE OF LODGING OF THE PATENT TRIAL AND
`APPEAL BOARD’S DENIAL OF REHEARING
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`Case 5:21-cv-03868-VKD Document 203 Filed 12/12/22 Page 3 of 9
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`Trials@uspto.gov
`571-272-7822
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`
`Paper 15
`Entered: December 5, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TIKTOK INC.,
`Petitioner,
`v.
`10TALES, INC.,
`Patent Owner.
`____________
`
`IPR2021-00476
`Patent 8,856,030 B2
`____________
`
`
`
`
`
`
`Before SCOTT A. DANIELS, RICHARD H. MARSCHALL, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`
`LANEY, Administrative Patent Judge.
`
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`
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`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
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`Case 5:21-cv-03868-VKD Document 203 Filed 12/12/22 Page 4 of 9
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`IPR2021-00476
`Patent 8,856,030 B2
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`
`INTRODUCTION
`I.
`TikTok Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review (“IPR”) of claims 1 and 2 of U.S. Patent No. 8,856,030 B2
`(Ex. 1001, “the ’030 patent”). Paper 1 (“Pet.”), 1. 10Tales, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”). And
`pursuant to our authorization, Petitioner filed a Reply and Patent Owner
`filed a Sur-reply. Paper 11; Paper 12.
`After considering the parties’ submissions and the evidence of record,
`the Board determined that Petitioner failed to demonstrate a reasonable
`likelihood that it would prevail with respect to either of the claims
`challenged in the Petition. Paper 13 (“Decision” or “Dec.”). Dispositive of
`the Petition was Petitioner’s failure to demonstrate sufficiently that the
`asserted prior art, either alone or in combination, discloses “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,” element [1g] in claim 1
`(which was the only independent claim challenged). Dec. 6. Accordingly,
`the Board denied institution of an inter partes review. Id. at 21.
`Petitioner requests a rehearing. Paper 14 (“Request for Rehearing” or
`“Req. Reh’g”). Petitioner argues that a rehearing is warranted because the
`Decision is allegedly “based on at least two errors introduced through
`improper claim construction of the term ‘user attributes,’ and
`misapprehension of the Reisman prior art.” Req. Reh’g 1. For the reasons
`explained below, Petitioner’s request lacks merit. Hence, we deny the
`Request for Rehearing.
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`2
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`Case 5:21-cv-03868-VKD Document 203 Filed 12/12/22 Page 5 of 9
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`IPR2021-00476
`Patent 8,856,030 B2
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`STANDRAD OF REVIEW
`II.
`“The burden of showing a decision should be modified lies with the
`party challenging the decision.” 37 C.F.R. § 42.71(d) (2021). In a rehearing
`request, the party challenging the decision “must specifically identify” (1)
`“all matters the party believes the Board misapprehended or overlooked”
`and (2) “the place where each matter was previously addressed” in an earlier
`submission. Id.; see Consolidated Trial Practice Guide at 90.1
`“A rehearing request is not an opportunity for the requesting party to
`reargue its case or merely to express disagreement with the underlying
`decision.” MicroSurgical Tech., Inc. v. Regents of Univ. of Colo.,
`PGR2021-00026, Paper 14 at 2 (PTAB Aug. 12, 2021). “Nor is it an
`opportunity for the moving party to present new arguments that were not in
`its original submissions.” Id.
`“When rehearing a decision on petition, a panel will review the
`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of
`discretion occurs if a decision is based on an erroneous interpretation of law,
`if a factual finding is not supported by substantial evidence, or if the
`decision represents an unreasonable judgment in weighing relevant factors.”
`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).
`
`III. ANALYSIS
`The “short” of Petitioner’s basis for this rehearing request is that “had
`the Board not erred in the claim construction, the Board would have found
`that Reisman’s ‘buddy lists’ are ‘user attributes,’ and that Reisman teaches
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`Case 5:21-cv-03868-VKD Document 203 Filed 12/12/22 Page 6 of 9
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`IPR2021-00476
`Patent 8,856,030 B2
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`claim element [1g].” Req. Reh’g 2. Although the Petition identified a
`proposed construction for “user attributes,” Petitioner argues that “the Board
`declined to adopt it, or any other construction.” Id. at 3. The Board was
`instead “misled” by Patent Owner, according to Petitioner, to “implicitly”
`adopt a construction that required “user attributes” to be sourced from a
`social network. Id. Petitioner argues that “‘user attributes’ has a much
`broader meaning in the specification and encompasses several embodiments
`for sourcing user attributes outside of a social network.” Id. at 6. As
`support, Petitioner notes that there are several instances in the ’030 patent
`Specification where “user attributes” are gathered using “conventional”
`methods. Id. at 7–9.
`Additionally, Petitioner argues that “[t]he Board’s analysis added to
`the claim a requirement that the ‘social network’ be external to the system.”
`Req. Reh’g 10 (citing Dec. 16–17). Petitioner asserts that, during
`prosecution of the ’030 patent, “[a]pplicant intentionally excluded only the
`‘presentation’ as a source for user social network information, but the
`applicant did not intend to exclude ‘the system.’” Id. at 11 (citing Ex. 1002,
`102, 105). Petitioner asserts that “the very embodiments that the Board
`relies on depict the relevant components of the system, such as the ‘online
`community 521’ (e.g., a social network) and ‘group and social dynamics
`database 518,’ as internal to the ‘system’ along with the server and other
`components (e.g., 500–561).” Id. (citing Ex. 1001, Figs. 5A, 5B).
` Petitioner’s argument is unpersuasive because it is not commensurate
`with the scope of the claims. Arguing that “user attributes” do not need to
`be sourced from a social network, Petitioner ignores the express language of
`independent claim 1. In particular, the “retrieving limitation” in claim 1
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`Case 5:21-cv-03868-VKD Document 203 Filed 12/12/22 Page 7 of 9
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`IPR2021-00476
`Patent 8,856,030 B2
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`recites “retrieving user social network information . . . wherein the user
`social network information contains one or more user attributes.” Ex. 1001,
`21:13–16. As is clear from this language, claim 1 only recites retrieving
`“user social network information;” notably, it does not recite retrieving user
`attributes. Instead, the “one or more user attributes” are only obtained
`through the retrieval of the “user social network information,” which claim 1
`recites must contain the user attributes. In other words, the plain meaning of
`the “retrieving limitation” to a skilled artisan requires the “user attributes” to
`be obtained (i.e., sourced) via the retrieval of user social network
`information. Therefore, we are not persuaded we erred by requiring the
`“user attributes” to be sourced from the retrieved user social network
`information.
`Also contrary to Petitioner’s argument, the Specification of the ’030
`patent is consistent with our understanding that the “social network” is
`external to the recited system. The Specification describes server 590,
`which is an embodiment of the disclosed invention, as a “digital medial
`narrative asset personalization system.” Ex. 1001, 11:66–67 (emphasis
`added). The Specification describes that system as communicating with a
`separate external social network system, “an online community system 521,”
`to retrieve user social network information that contains user attributes as
`follows: “The user 501 may participate in an online community system 521
`in which the [digital medial narrative asset personalization system] 590
`sends the user ID 520 to the online community system and receives lists of
`community user attributes 515 and active vs. inactive status 517.” Id. at
`12:22–26, Fig. 5A (emphasis added).
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`5
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`Case 5:21-cv-03868-VKD Document 203 Filed 12/12/22 Page 8 of 9
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`IPR2021-00476
`Patent 8,856,030 B2
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`Having also thoroughly considered Petitioner’s remaining arguments,
`we likewise find them equally unpersuasive. In those arguments, Petitioner
`argues that “[t]he Board’s sole basis for denying the Petition is because
`Reisman purportedly failed to teach ‘user attributes’ as required by claim 1.”
`Req. Reh’g 12; see also id. 13–15. This statement, however, demonstrates a
`fundamental misunderstanding of the Decision. The Decision does not rest
`on Petitioner failing to show Reisman discloses retrieving user attributes. In
`the Decision, we determined instead that Petitioner failed to show Reisman
`discloses “retrieving user social network information . . . wherein the user
`social network information contains one or more user attributes.” Dec. 17–
`19. We are not persuaded by Petitioner’s arguments that this determination
`was a result of an erroneous interpretation of law, an unsupported factual
`finding, or an unreasonable judgment in weighing relevant factors.
`
`IV. CONCLUSION
`For all of the foregoing reasons, we determine Petitioner has failed to
`meet its burden of showing that we should modify our Decision.
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s request for rehearing is denied.
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`Case 5:21-cv-03868-VKD Document 203 Filed 12/12/22 Page 9 of 9
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`IPR2021-00476
`Patent 8,856,030 B2
`
`For PETITIONER:
`
`Stephen Korniczky
`Martin Bader
`Ericka Schulz
`Eric Gill
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`egill@sheppardmullin.com
`
`
`
`For PATENT OWNER:
`
`Robert P. Greenspoon
`FLACHSBART & GREENSPOON, LLC
`rpg@fg-law.com
`
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`7
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