Case 5:21-cv-03868-VKD Document 204 Filed 08/14/23 Page 1 of 26
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`10TALES, INC.,
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`Plaintiff,
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`v.
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`TIKTOK INC., et al.,
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`Defendants.
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`Case No. 21-cv-03868-VKD
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`ORDER CONSTRUING CLAIM
`TERMS OF U.S. PATENT NO. 8,856,030
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`Plaintiff 10Tales, Inc. (“10Tales”) sued defendants TikTok, Inc., TikTok Pte. Ltd.,
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`ByteDance Ltd. and ByteDance, Inc. (collectively “TikTok”), alleging infringement of claim 1 of
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`U.S. Patent No. 8,856,030 (“the ’030 patent”), titled “Method, System and Software for
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`Associating Attributes within Digital Media Presentations.” Upon consent of the parties, this
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`action was reassigned to this Court for all purposes, including trial. 28 U.S.C. § 636; Fed. R. Civ.
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`P. 72; Dkt. Nos. 174, 175.
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`The parties have fully briefed their disputes over the construction of terms in claim 1. Dkt.
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`Nos. 167, 177, 182, 185. At the Court’s request, the parties also submitted a complete electronic
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`copy of the prosecution history for the ’030 patent. The Court held a tutorial on July 28, 2022 and
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`a claim construction hearing on July 29, 2022. Dkt. Nos. 189, 190, 193. The Court subsequently
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`granted in part TikTok’s motion for leave to file a claim construction sur-reply. Dkt. No. 196.
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`The parties submitted their supplemental briefs accordingly. Dkt. Nos. 199, 200. Upon
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`consideration of the arguments and evidence presented by the parties at the hearing and in their
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`briefing, the Court now issues the following order regarding the construction of claim terms.
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`Case 5:21-cv-03868-VKD Document 204 Filed 08/14/23 Page 2 of 26
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`I.
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`BACKGROUND
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`The ’030 patent issued on October 7, 2014, and claims priority to a provisional application
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`filed on April 7, 2003. See ’030 patent, cover page. The patent, which contains two claims
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`(independent claim 1 and dependent claim 2), concerns technology for customizing or
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`personalizing content based on user information and relates to a “method, system, and
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`software . . . which allow for customizing and personalizing content based on a combination of a
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`user’s demographics, psychodemographics, cognitive states, emotional states, social placement
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`and group interaction dynamics within an online community, and/or affinity for certain content
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`elements (images, sounds, segments, graphics, video, text, dialog), self-provided narrating content,
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`internal narrative traits preference topology, and expectation level and temporal spacing of assets
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`within the narrative.” Id. at 2:65-3:7. Noting the “advent of the digital era” and “threat[s] [to]
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`advertising,” the ’030 patent describes a need “to attract individuals to content that is personally
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`more relevant and impactful for them and which may contain an advertising message (in the form
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`of product placement), and have them receive that message in full, as opposed to skipping over all
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`or a portion of the message.” Id. at 1:52, 59, 2:3-7; see also id. at 1:58-61. The patent further
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`notes an additional need “to have the ability to understand the individual’s likes and dislikes or
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`current mood in order to adapt the message appropriately for the individual at the time that they
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`are receiving [content].” Id. at 2:8-11.
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`The claimed invention purports to provide an enriched user experience and more powerful
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`media for content creators, such as advertisers and artists, through content that has greater impact
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`on users. See ’030 patent at 3:63-4:14. According to 10Tales, the ’030 patent claims
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`improvements over the state of the art by addressing how technology can be used to understand an
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`individual’s likes or dislikes or mood in order to more appropriately adapt content for the
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`individual. See Dkt. No. 167 at 3. Among the stated advantages of the claimed invention is that
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`“it allows advertising to be inserted in subtle ways and presented in a context in which users may
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`be able to fully engulf themselves into the lifestyle being positioned and portrayed by the brand,”
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`and users “are much more likely to be receptive to the message presented, and less likely to skip
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`over or fast-forward through the content including the advertising.” Id. at 4:3-7, 12-14.
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`Case 5:21-cv-03868-VKD Document 204 Filed 08/14/23 Page 3 of 26
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`The parties disagree on the construction of ten terms from claim 1 of the ’030 patent.
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`Claim 1 of the ’030 patent recites:
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`1. A system for associating user attributes with digital media asset
`attributes and creating a user specific composite digital media
`display, the system comprising:
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`a) a server;
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`b) a computer-readable storage medium operably connected;
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`c) wherein the computer-readable storage medium contains one or
`more programming instructions for performing a method of
`associating user attributes with digital media asset attributes and
`creating a user specific composite digital media display, the method
`comprising:
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`identifying a first set of digital media assets stored on the computer-
`readable storage medium,
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`creating, from the first set of digital media assets, a first composite
`digital media display,
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`presenting to the user via a display server, the first composite digital
`media display;
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`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;
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`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;
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`monitoring the first composite digital media display for the presence
`of a trigger, wherein the trigger indicates a personalization
`opportunity in the first set of digital media assets;
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`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;
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`creating, from the user specific digital media assets, a user specific
`composite digital media display; and
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`presenting to the user via the display server, the second composite
`digital media display.
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`’030 patent at 20:62-22:15.
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`10Tales argues that these terms either require no construction or should be construed as
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`Case 5:21-cv-03868-VKD Document 204 Filed 08/14/23 Page 4 of 26
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`10Tales proposes. TikTok contends that seven of the ten disputed claim terms are indefinite, see
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`35 U.S.C. § 112 ¶ 2,1 and that claim 1 fails to inform with reasonable certainty those skilled in the
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`art about the scope of the claimed invention. As for the remaining three terms, TikTok argues that
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`each term should be limited to a “narrative.”
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`In their claim construction briefing, the parties rely on the declarations of their respective
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`experts: Dr. Aviel D. Rubin (10Tales) and Dr. Alan Bovik (TikTok). See Dkt. Nos. 167-4, 185-3,
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`185-13. The parties also refer to proceedings before the Patent Trial and Appeal Board (“PTAB”)
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`concerning TikTok’s petition for inter partes review (“IPR”) of the ’030 patent, including
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`statements made in those proceedings by TikTok’s expert, Dr. Kevin Almeroth. See, e.g., Dkt.
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`Nos. 167-5, 167-7, 185-15.
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`Following the claim construction hearing, the Court permitted the parties to file
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`supplemental briefing on aspects of their dispute over the term “user social network information.”
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`Dkt. No. 196. The parties filed their respective supplemental briefs in September 2022. See Dkt.
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`Nos. 199, 200. TikTok subsequently provided notice of the PTAB’s denial of TikTok’s request
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`for rehearing in the IPR proceedings in December 2022. Dkt. No. 203.
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`II.
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`LEGAL STANDARD
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`Claim construction is a question of law. Teva Pharmaceuticals, Inc. v. Sandoz, Inc., 574
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`U.S. 318, 325-327 (2015); Markman v. Westview Instruments, Inc., 517 U.S. 370, 387 (1996). “It
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`is a bedrock principle of patent law that the claims of a patent define the invention to which the
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`patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
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`2005) (en banc) (internal quotations and citation omitted). “Proper claim construction requires an
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`examination of the claim language, the written description, and, if relevant, the prosecution
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`history.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). “The
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`appropriate starting point, however, is always with the language of the asserted claim itself.” Id.
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`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. 112-29, 125 Stat. 284, enacted in 2011,
`amended several parts of the Patent Act, including 35 U.S.C. § 112. The application resulting in
`the ’030 patent was filed before the AIA took effect. Although the nature of the amendments to
`§ 112 is not material to the resolution of issues presented in the parties’ claim construction briefs,
`in this order, the Court cites to the pre-AIA version of 35 U.S.C. § 112 that was in effect when the
`’030 patent application was filed.
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`Case 5:21-cv-03868-VKD Document 204 Filed 08/14/23 Page 5 of 26
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`Claim terms “are generally given their ordinary and customary meaning,” which is “the
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`meaning that the term would have to a person of ordinary skill in the art in question at the time of
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`the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at
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`1312, 1313 (internal quotations and citations omitted). Claims must be read in view of the patent
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`specification, which “is always highly relevant to the claim construction analysis” and “the single
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`best guide to the meaning of a disputed term.” Id. at 1315 (internal quotations and citation
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`omitted). The aim of claim construction is to “capture the scope of the actual invention that is
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`disclosed, described, and patented.” Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d 1320, 1323
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`(Fed. Cir. 2015) (internal quotation and citation omitted); accord Phillips, 415 F.3d at 1316. The
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`written description, prosecution history and the claims themselves form the intrinsic record that
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`provides substantial guidance as to the meaning of particular claim terms. Phillips, 415 F.3d at
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`1313, 1315-17.
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`Courts may also rely on “extrinsic evidence, which ‘consists of all evidence external to the
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`patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
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`treatises.’” Id. at 1317 (quoting Markman, 52 F.3d at 980). Such evidence may be considered “if
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`the court deems it helpful in determining ‘the true meaning of language used in the patent
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`claims.’” Id. at 1318 (quoting Markman, 52 F.3d at 980). However, extrinsic evidence “is less
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`significant than the intrinsic record in determining the legally operative meaning of claim
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`language,” and cannot “be used to change the meaning of claims in derogation of the indisputable
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`public records consisting of the claims, the specification and the prosecution history[.]” Id. at
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`1317, 1319 (internal quotations and citation omitted). “In sum, extrinsic evidence may be useful
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`to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless
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`considered in the context of the intrinsic evidence.” Id. at 1319.
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`“[A] patent is invalid for indefiniteness if its claims, read in light of the specification
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`delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those
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`skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572
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`U.S. 898, 901 (2014); see also 35 U.S.C. § 112 ¶ 2 (“The specification shall conclude with one or
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`more claims particularly pointing out and distinctly claiming the subject matter which the
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`Case 5:21-cv-03868-VKD Document 204 Filed 08/14/23 Page 6 of 26
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`applicant regards as his invention.”). To meet this standard, “[t]he claims, when read in light of
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`the specification and the prosecution history, must provide objective boundaries for those of skill
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`in the art.” Interval Licensing, LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). General
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`principles of claim construction apply to allegations of indefiniteness. See Biosig Instruments,
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`Inc. v. Nautilus, Inc., 783 F.3d 1374, 1377-78 (Fed. Cir. 2015); see also Nautilus, Inc., 572 U.S. at
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`908 (definiteness is assessed based on patent specification and prosecution history, and measured
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`from viewpoint of person skilled in the art). “The inquiry into how a person of ordinary skill in
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`the art understands a claim term provides an objective baseline from which to begin claim
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`interpretation.” Phillips, 415 F.3d at 1313.
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`III. DISCUSSION
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`A.
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`Level of Ordinary Skill in the Art
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`The Court first addresses the level of ordinary skill in the relevant art(s) at the time of the
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`claimed invention, i.e., April 2003. See Phillips, 415 F.3d at 1312-1313. Here, 10Tales relies on
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`Dr. Rubin’s opinions (see Dkt. No. 167-4), while TikTok relies on those of Dr. Bovik (see Dkt.
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`No. 185-3). Although Drs. Rubin and Bovik disagree about whether the relevant field is
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`“computer networking” (see Dkt. No. 167-4 ¶ 35) or “digital media creation” (see Dkt. No. 185-3
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`¶ 45), neither 10Tales nor TikTok contends that resolution of this dispute is necessary for purposes
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`of claim construction. See Dkt. No. 167-4 ¶ 36; Dkt. No. 185-3 ¶ 44. The Court adopts Dr.
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`Bovik’s proposed standard for the level of ordinary skill in the art, with which Dr. Rubin does not
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`disagree:
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`at least a bachelor’s degree, or an equivalent degree, in electrical
`engineering, computer science, or a related field, and 2-3 years’
`experience researching, designing, developing, and/or testing
`systems for digital media creation and related firmware and
`software, or equivalent experience. Someone with less formal
`education but more experience or more formal education but less
`experience could also have qualified as a [person of ordinary skill in
`the art].
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`Dkt. No. 185-3 ¶ 42; see also Dkt. No. 167-4 ¶ 36.2
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`2 In the IPR proceeding, the PTAB did not adopt a specific formulation regarding the level of
`ordinary skill in the art. See Dkt. No. 167-7 at 11.
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`Case 5:21-cv-03868-VKD Document 204 Filed 08/14/23 Page 7 of 26
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`below.
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`B.
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`Disputed Terms
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`The parties dispute ten terms in claim 1 of the ’030 patent, which are addressed separately
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`1.
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`“the system comprising . . . a computer-readable storage medium . . .
`wherein the computer-readable storage medium contains one or more
`programming instructions for performing a method . . . the method
`comprising . . .”
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`10Tales’s Proposed Construction
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`TikTok’s Proposed Construction
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`No construction necessary
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`Plain and ordinary meaning
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`Indefinite
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`10Tales argues that this term requires no construction and should be afforded its ordinary
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`meaning, i.e., “a system that includes one or more servers and memory,” which contains
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`programming instructions that, when executed, carry out the steps of the method recited in the
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`claim. See Dkt. No. 167 at 10.
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`TikTok argues that claim 1 is indefinite under § 112 ¶ 2 because it is directed to two
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`separate classes of patentable subject matter, i.e., a system and a method. See Dkt. No. 185 at 7.
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`Citing IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) and Rembrandt
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`Data Technologies, LP v. AOL, LLC, 641 F.3d 1331 (Fed. Cir. 2011), TikTok also contends that
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`claim 1 is indefinite because it “requires the user to use the system, and is unclear whether
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`infringement requires making the system or using the system[.]” See Dkt. No. 185 at 7-9. The
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`Court disagrees.
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`“A single patent may include claims directed to one or more of the classes of patentable
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`subject matter, but no single claim may cover more than one subject matter class.”
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`Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367, 1374 (Fed. Cir.
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`2008) (citing IPXL, 430 F.3d at 1384). A single claim that covers “‘both an apparatus and a
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`method of use of that apparatus’” is indefinite “because ‘it is unclear whether infringement . . .
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`occurs when one creates a[n infringing] system, or whether infringement occurs when the user
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`actually uses [the system in an infringing manner].’” UltimatePointer, L.L.C. v. Nintendo Co.,
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`Ltd., 816 F.3d 816, 826 (Fed. Cir. 2016) (quoting IPXL, 430 F.3d at 1384). “Nonetheless,
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`‘apparatus claims are not necessarily indefinite for using functional language.’” Id. (quoting
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`Microprocessor Enhancement Corp., 520 F.3d at 1375); see also MasterMine Software, Inc. v.
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`Microsoft Corp., 874 F.3d 1307, 1313 (Fed. Cir. 2017) (same). “If an apparatus claim ‘is clearly
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`limited to a[n apparatus] possessing the recited structure and capable of performing the recited
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`functions,’ then the claim is not invalid as indefinite.” UltimatePointer, LLC, 816 F.3d at 826
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`(quoting Microprocessor Enhancement Corp., 520 F.3d at 1375).
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`The claim at issue in IPXL was problematic because it purported to claim a system (i.e.,
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`one that could be infringed independent of any “use” of the system), but contained an element that
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`required user activity. Thus, the Federal Circuit found the claim invalid because it was unclear
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`whether infringement “occurs when one creates a system,” or “when the user actually uses [the
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`system].” See IPXL, 430 F.3d at 1383-84. Similarly, in Rembrandt, the claim at issue was found
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`invalid because it recited several apparatus elements of a “data transmitting device” (i.e., “buffer
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`means,” “fractional encoding means,” “second buffer means,” and “trellis encoding means”), as
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`well as one element concerning a method for using the claimed device (i.e., “transmitting the
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`trellis encoded frames”). Rembrandt, 641 F.3d at 1339-40.
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`Unlike the claims in IPXL and Rembrandt, claim 1 of the ’030 patent recites a system (i.e.,
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`“a server” and “a computer-readable storage medium operably connected”) modified by functional
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`terms describing the system’s capabilities. Contrary to TikTok’s contention, the claimed system
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`does not require a user to do anything. Rather, the claimed “computer-readable medium” must
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`contain “programming instructions” capable of performing the steps of the method described in
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`the claim (i.e., “identifying,” “creating,” “presenting,” “retrieving,” “selecting,” “monitoring” and
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`“performing”). See ’030 patent at 20:62-22:15. Such system claims with “permissible functional
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`language used to describe the capabilities [of the claimed system],” rather than the activities of the
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`user, are not invalid for indefiniteness. MasterMine Software, Inc., 874 F.3d at 1315 (claim not
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`invalid for indefiniteness where verbs in the claim “represent permissible functional language used
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`to describe capabilities of the ‘reporting module’”); see also UltimatePointer, L.L.C., 816 F.3d at
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`827 (claim not invalid for indefiniteness because “the ‘generating data’ limitation reflects the
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`capability of that structure rather than the activities of the user.”). The fact that the specification
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`describes a method (not a system) as a preferred embodiment does not render claim 1 indefinite.
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`See Phillips, 415 F.3d at 1323 (“For instance, although the specification often describes very
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`specific embodiments of the invention, we have repeatedly warned against confining the claims to
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`those embodiments.”).
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`Accordingly, without adopting or endorsing 10Tales’s proposed “ordinary meaning” of the
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`term, the Court concludes that this claim term requires no construction.3
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`2.
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`“creating . . . . composite digital media display”
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`Claim 1 of the ’030 patent contains two phrases pertaining to the creation of a “composite
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`digital media display.” See ’030 patent at 21:9-10, 22:12-13. The parties present the same
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`arguments regarding the construction of both phrases. Accordingly, the Court addresses them
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`together here.
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`“creating, from the first set of digital media assets, a first composite
`digital media display”
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`10Tales’s Proposed Construction
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`TikTok’s Proposed Construction
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`No construction necessary
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`Plain and ordinary meaning
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`“combining two or more digital media assets
`from the first set of digital media assets to
`create a first composite digital media display
`with a narrative”
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`“creating, from the user specific digital media assets, a user specific
`composite digital media display”
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`10Tales’s Proposed Construction
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`TikTok’s Proposed Construction
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`No construction necessary
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`Plain and ordinary meaning
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`“combining two or more digital media assets
`from the user specific digital media assets to
`create a user specific composite digital media
`display without destroying the flow of the
`narrative”
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`10Tales argues that these terms require no construction and should be afforded their
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`ordinary meaning. TikTok argues that the “composite digital media display” must be construed to
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`3 There was some discussion at the claim construction hearing about whether claim 1 “works.”
`This argument was not briefed, and the Court does not consider it to be a question of claim
`construction that requires resolution at this time.
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`Case 5:21-cv-03868-VKD Document 204 Filed 08/14/23 Page 10 of 26
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`incorporate the requirement of a “narrative.”
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`It is not readily apparent what ordinary meaning a person of skill in the art would attribute
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`to this claim language. Indeed, as is evident from the briefing and the arguments presented at the
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`hearing, the parties have competing interpretations of “composite digital media display,” and their
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`experts, Drs. Bovik and Rubin, appear to agree that it is not a term of art. See Dkt. No. 185-3
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`¶ 97; Dkt. No. 185-8 at 11:18-23. 10Tales suggests that a “composite” is merely a “collection of
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`digital media assets that will be presented to a user.” See Dkt. No. 167 at 11. TikTok says that the
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`claimed “composite” is the result of combining “two or more digital media assets” to create a
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`display in the form of a “narrative.” See Dkt. No. 185 at 10-12. TikTok further contends that
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`“creating” a “composite” necessarily means “combining two or more digital assets.” Id. To
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`resolve this dispute, the Court looks to “those sources available to the public that show what a
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`person of skill in the art would have understood disputed claim language to mean,” including “the
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`words of the claims themselves, the remainder of the specification, the prosecution history, and
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`extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and
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`the state of the art.” Phillips, 415 F.3d at 1314 (internal quotations and citation omitted).
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`TikTok correctly notes that the specification does not refer to “digital media display,”
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`“composite digital media display,” or “composite.” These words appear only in the claims.
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`TikTok is also correct that the specification repeatedly refers to descriptions of “digital media
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`narrative.” See ’030 patent at 1:12-14, 1:66-2:2, 2:12-61, 3:7-11, 4:8-10; 4:24-28, 4:42-49, 5:19-
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`22, 5:26-27, 5:39-40, 6:23-26, 8:63-67, 12:43-45, 13:22-27, 13:66-67, 16:59-62, 19:4-9, 19:31-33,
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`19:59-62, 20:1-3; see also Figs. 2, 3, 5A and 10. TikTok contends that the term “composite digital
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`media display” therefore must be construed to make clear that the claimed invention requires a
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`“digital media narrative.” See Dkt. No. 185 at 11. However, there is no question that claim 1 does
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`not include the word “narrative.” TikTok has not identified any discussion in the remainder of the
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`specification that would justify adding “narrative” as a requirement for the claim terms at issue.
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`See Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1359 (Fed. Cir. 2016) (“[W]e have
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`repeatedly held that it is ‘not enough that the only embodiments, or all of the embodiments,
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`contain a particular limitation’ to limit claims beyond their plain meaning.”) (quoting Thorner v.
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`Case 5:21-cv-03868-VKD Document 204 Filed 08/14/23 Page 11 of 26
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`Sony Computer Entm’t Am., LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012); see also GE Lighting
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`Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“[I]t is improper to read
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`limitations from a preferred embodiment described in the specification—even if it is the only
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`embodiment—into the claims absent a clear indication in the intrinsic record that the patentee
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`intended the claims to be so limited.”) (internal quotations and citation omitted); Phillips, 415 F.3d
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`at 1323 (“In particular, we have expressly rejected the contention that if a patent describes only a
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`single embodiment, the claims of the patent must be construed as being limited to that
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`embodiment.”).
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`TikTok maintains that during the prosecution of the ’030 patent, the applicant
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`distinguished these claims over U.S. Patent No. 6,357,042 (“Srinivasan”) (see Dkt. No. 185-4),
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`and in doing so, limited the scope of claim 1 to “personalizing a digital media narrative in a
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`manner that does not destroy the flow of the ‘narrative.’” See Dkt. No. 185 at 11. TikTok
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`contends that the doctrine of prosecution disclaimer therefore precludes 10Tales from now
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`asserting an interpretation of claim 1 “that would allow destroying the flow of the narrative[.]”
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`See id. “‘The doctrine of prosecution disclaimer . . . preclud[es] patentees from recapturing
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`through claim interpretation specific meanings disclaimed during prosecution.’” Mass. Inst. of
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`Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016) (quoting Omega Eng’g, Inc. v.
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`Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003)). For prosecution disclaimer to apply, “the
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`disavowal must be both clear and unmistakable.” Id. (internal quotations and citation omitted).
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`“Where the alleged disavowal is ambiguous, or even amenable to multiple reasonable
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`interpretations,” the Federal Circuit has “declined to find prosecution disclaimer.” Id. (internal
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`quotations and citation omitted). Thus, the “‘party seeking to invoke prosecution history
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`disclaimer bears the burden of proving the existence of a ‘clear and unmistakable’ disclaimer that
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`would have been evident to one skilled in the art.’” Id. (quoting Trivascular, Inc. v. Samuels, 812
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`F.3d 1056, 1063-64 (Fed. Cir. 2016)).
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`During the prosecution of the ’030 patent, the patent examiner rejected claims 1-14 under
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`35 U.S.C. § 102(b) as anticipated by Srinivasan, noting that Srinivasan teaches “a method and
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`system of associating attributes with digital media assets[.]” See Dkt. No. 185-5 at ECF 128
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`11
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`Case 5:21-cv-03868-VKD Document 204 Filed 08/14/23 Page 12 of 26
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`(10Tales0000402). On amendment, the applicant abandoned those claims, and presented new
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`claims 15 and 16 (now claims 1 and 2 of the ’030 patent). See id. at ECF 145-146
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`(10Tales0000419-420). In distinguishing those new claims over Srinivasan, the prosecuting
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`attorney argued, among other things, that Srinivasan “teaches the selection of a particular analog
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`video stream at a branch point” (e.g., stopping a main video stream to broadcast an advertisement,
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`and continuing with the main video when the ad is finished). See id. at ECF 142, 145
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`(10Tales0000416, 419); see also Dkt. No. 185-4 at 32:57-58. TikTok notes that in distinguishing
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`over Srinivasan, the prosecuting attorney stated that the applicant’s claimed substitution of digital
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`media assets “is performed in order to allow parts of the media display (e.g., background, timing,
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`audio) to be varied in a way that does not destroy the flow.” See id. at ECF 142
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`(10Tales0000416); Dkt. No. 185 at 11 & n.6. That statement merely distinguishes over Srinivasan
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`regarding ways in which a “flow” may be interrupted; it is not a clear or unambiguous disclaimer
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`that the ’030 patent’s claimed “composite digital media display” must be a “narrative.” TikTok
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`has not met the high bar required to establish prosecution disclaimer.
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`Nor has TikTok identified a basis to substitute “combining” for “creating.” However, the
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`Court agrees that a “composite” requires a combination, as opposed to merely a collection or
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`listing of digital media assets.4 Such an interpretation of “composite” is supported by the
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`specification, which describes combining elements to create digital media assets. See ’030 patent
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`Fig. 2; 8:58-62; see also id. Fig. 3; 9:24-26. That interpretation is also consistent with Dr. Bovik’s
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`declaration in which he opines that “the plain and ordinary meaning of the term ‘composite’
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`requires something made up of different parts or distinct components.” Dkt. No. 185-3 ¶ 108. Dr.
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`Rubin offers no opinion to the contrary.
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`Accordingly, the Court construes the term “creating, from the first set of digital media
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`4 10Tales argues that TikTok’s proposed construction requiring the first composite digital media
`display to contain two or more digital media assets would make dependent claim 2 broader than
`independent claim 1. Specifically, 10Tales emphasizes that claim 2 provides that the “first set of
`digital media assets includes one or more of a foreground image, a background image, or audio.”
`See Dkt. No. 167 at 13 n.4 (quoting ’030 patent at 22:16-18). 10Tales’s argument fails to
`persuade. The claim 2 language that 10Tales highlights simply describes a subset of what is
`included in the “composite” of claim 1.
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`12
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`Case 5:21-cv-03868-VKD Document 204 Filed 08/14/23 Page 13 of 26
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`assets, a first composite digital media display” to mean creating, from the first set of digital media
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`assets, a first composite digital media display that combines two or more digital media assets.
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`The Court construes the term “creating, from the user specific digital media assets, a user specif