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`Case 5:21-cv-03868-VKD Document 218 Filed 10/24/23 Page 1 of 4
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`Nathan Dooley (SBN 224331)
`COZEN O’CONNOR
`601 S. Figueroa Street, Suite 370
`Los Angeles, California 90017
`Tel:
`213-892-7933
`Fax: 213-892-7999
`Email: ndooley@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
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`tfisher@cozen.com
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`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
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`rfink@davisfirm.com
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`Attorneys for Plaintiff
`10TALES, INC.
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`
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
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` Case No.: 5:21-cv-03868-VKD
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`PLAINTIFF 10TALES, INC.’S REPLY IN
`SUPPORT OF ITS REQUEST FOR
`JUDICIAL NOTICE IN SUPPORT OF
`PLAINTIFF’S OPPOSITION TO
`DEFENDANTS’ MOTION TO DISMISS
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`
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`Date:
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`Time:
`Courtroom:
`Judge:
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`October 31, 2023
`10:00 a.m.
`2 – 5th Floor
`Hon. Virginia DeMarchi
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`5:21-cv-03868-VKD
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`10TALES, INC.’S REPLY IN SUPPORT OF REQUEST FOR JUDICIAL NOTICE
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`10TALES, INC.,
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`Plaintiff,
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`21
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`v.
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`TIKTOK INC., TIKTOK PTE. LTD.
`BYTEDANCE LTD., AND
`BYTEDANCE INC.,
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`Defendants.
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`

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`Case 5:21-cv-03868-VKD Document 218 Filed 10/24/23 Page 2 of 4
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`TikTok opposes 10Tales’ request that the Court take judicial notice of excerpts from the
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`prosecution history of the ’030 patent, arguing that this intrinsic evidence is “irrelevant.” See Dkt.
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`217. But it is beyond dispute—and TikTok does not argue otherwise—that patents and their file
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`histories are considered matters of public record, and are suitable for judicial notice. See, e.g.,
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`Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 497 n.1 (Fed. Cir. 1997) (taking judicial notice of the
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`entire Board of Patent Appeals and Interferences record because, among other reasons, the record is a
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`public record and “thus capable of accurate and ready determination by resort to unquestionable
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`sources.”). And on TikTok’s motion for judgment on the pleadings, the Court “must accept factual
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`allegations in the complaint as true and construe the pleadings in the light most favorable” to 10Tales.
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`Regents of the Univ. of Minn. v. LSI Corp., Inc., Case No 5:18-cv-00821-EJD, 2023 U.S. Dist. LEXIS
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`150306, at *5 (N.D. Cal. Aug. 25, 2023) (citation omitted). TikTok’s motion may only be granted if,
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`“after assessing the complaint and matters for which judicial notice is proper, it appears ‘beyond doubt
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`that [10Tales] cannot prove any facts that would support [its] claim for relief.’” Fitbit, Inc. v.
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`AliphCom, 233 F.Supp.3d 799, 805 (N.D. Cal. 2017) (quoting Morgan v. County of Yolo, 436
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`F.Supp.2d 1152, 1155 (E.D. Cal. 2006)).
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`In analyzing whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
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`§ 101, the Court “may well consult the plain claim language, written description, and prosecution
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`history.” See CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358, 1372-73 (Fed. Cir. 2020) (emphasis
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`added). As explained in 10Tales Opposition, the allegations in 10Tales’ complaint and the facts set
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`forth in the intrinsic evidence of the ’030 patent—including its prosecution history—confirm that
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`claim 1 of the ’030 patent is directed to patent-eligible subject matter under 35 U.S.C. § 101. The
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`factual issues that underlie a § 101 analysis include “a search for limitations in the claims that narrow
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`or tie the claims to specific applications of an otherwise abstract concept,” “determining whether the
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`patent embraces a scientific principle or abstract idea,” whether additional elements are “routine, well-
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`understood, or conventional” and “any inquiry into the scope of preemption—how much of the field
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`is ‘tied up’ by the claim.” Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013).
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`In its Complaint, 10Tales alleges, inter alia, that “[c]laim 1 … claims a server-based system
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`that associates user attributes with digital media attributes and creates a user-specific composite digital
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`5:21-cv-03868-VKD
`1
`10TALES, INC.’S REPLY IN SUPPORT OF REQUEST FOR JUDICIAL NOTICE
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`

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`Case 5:21-cv-03868-VKD Document 218 Filed 10/24/23 Page 3 of 4
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`media display.” FAC at ¶ 58. 10Tales alleges that the system recited in claim 1 “reflects technological
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`improvements upon the state of the art at the time,” which “were not conventional or generic,”
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`“involved novel and nonobvious approaches to the problems and shortcomings prevalent in the art at
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`the time,” and “involve and cover more than just the performance of well-understood, routine, and/or
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`conventional activities known to the industry prior to the invention.” FAC at ¶ 59. 10Tales further
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`alleges that “one significant improvement over the prior art was the teaching of analyzing how a user
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`interacts with other users in an online social network in order to determine that user’s affinity for
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`certain digital media content, and then teaching the use of a rule based algorithm to use this information
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`to create a user-specific composite digital media display for a particular user.” FAC at ¶ 60.
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`These facts must be accepted as true and construed in the light most favorable to 10Tales. In
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`its Reply, TikTok complains that the allegations set forth in the complaint are “conclusory,” “self-
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`serving,” and “not plausible.” Dkt. 216 at 2-4. As explained in 10Tales’ Opposition, the allegations
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`set forth in the Complaint are corroborated by the prosecution history of the ’030 patent, making the
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`prosecution history at least relevant to the Court’s § 101 analysis. But in opposing 10Tales’ request
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`that the Court take judicial notice of the prosecution history [Dkt. 217], TikTok asks the Court to turn
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`a blind eye to the findings of the PTO examiner, who considered the § 101 issue and found that the
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`claimed subject matter was patent eligible, and was not well-understood, routine, and/or conventional
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`at the time, and to the findings of the PTAB’s 3-judge panel, which confirmed that that claims were
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`The facts set forth in the prosecution history are consistent with and corroborate the facts
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`alleged in 10Tales’ Complaint, and the Court should take judicial notice of the same. Such facts are
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`relevant at least to a determination of whether certain claim elements are “routine, well-understood,
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`or conventional” and “any inquiry into the scope of preemption—how much of the field is ‘tied up’
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`by the claim.” Ultramercial, 722 F.3d at 1339. By way of example only, had the examiner or the
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`PTAB found that claim 1 of the ’030 patent is directed merely to the abstract idea of targeted
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`advertising—as TikTok alleges in its motion—the claim would likely have been found to preempt the
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`prior art asserted by the examiner and TikTok in its IPR petition, and likely found to be unpatentable.
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`But as confirmed by the Court’s claim construction, claim 1 is directed to more than simply an abstract
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`3:21-cv-03868-YGR
`2
`10TALES, INC.’S REPLY IN SUPPORT OF REQUEST FOR JUDICIAL NOTICE
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`

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`Case 5:21-cv-03868-VKD Document 218 Filed 10/24/23 Page 4 of 4
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`idea. The prosecution history is therefore relevant to the Court’s § 101 analysis. TikTok’s opposition
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`to 10Tales’ request to take judicial notice of the ’030 patent’s prosecution history cannot be reconciled
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`with the Federal Circuit’s guidance that the prosecution history—as well as the claims and written
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`description—is relevant to a determination as to what the claims are directed. See CardioNet, 955
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`F.3d at 1372-73 (Fed. Cir. 2020).
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`For the reasons set forth here, and in 10Tales’ request for judicial notice [Dkt. 215-2], 10Tales
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`respectfully requests, pursuant to Federal Rules of Evidence 201, that this Court take judicial notice
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`of the excerpts from a true and correct copy of the certified file history of U.S. Patent No. 8,856,030
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`obtained from the United States Patent and Trademark Office.
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`By:
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`Respectfully submitted,
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`COZEN O’CONNOR
`
` /s/ Thomas J. Fisher
`Barry Golob
`Thomas Fisher
`Nathan Dooley
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`THE DAVIS FIRM PC
`William E. Davis, III
`Rudolph (Rudy) Fink IV
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`Attorneys for Plaintiff
`10Tales, Inc.
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`3:21-cv-03868-YGR
`3
`10TALES, INC.’S REPLY IN SUPPORT OF REQUEST FOR JUDICIAL NOTICE
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`Dated: October 24, 2023
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