Case 5:21-cv-03868-VKD Document 240 Filed 07/22/24 Page 1 of 20
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`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`A Limited Liability Partnership
`Including Professional Corporations
`STEPHEN S. KORNICZKY, Cal. Bar No. 135532
`ERICKA J. SCHULZ, Cal. Bar No. 246667
`MICHAEL J. HOPKINS, Cal. Bar No. 326621
`12275 El Camino Real, Suite 100
`San Diego, California 92130-4092
`Telephone:
`858.720.8900
`Facsimile:
`858.509.3691
`E mail
`skorniczky@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`mhopkins@sheppardmullin.com
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`
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`Attorneys for Defendants TikTok Inc., TikTok
`Pte. Ltd., ByteDance Ltd. and ByteDance Inc.
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`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
`
` Case No. 5:21-cv-03868-VKD
`
`DEFENDANTS’ REPLY IN SUPPORT OF
`MOTION FOR ATTORNEYS’ FEES
`PURSUANT TO 35 U.S.C. §285 AND 28
`U.S.C. §1927
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`Date:
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`Time:
`Courtroom:
`Judge:
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`10TALES INC.,
`
`Plaintiff,
`
`v.
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`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.,
`
`
`
`Defendants.
`
`
`
`
`
`
`
`August 6, 2024
`10:00 a.m.
`2 – 5th Floor
`Hon. Virginia K. DeMarchi
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`SMRH:4860-8063-6109
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`Case No. 5:21-cv-03868-VKD
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`DEFENDANTS’ REPLY ISO MOTION FOR ATTORNEYS’ FEES
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`Case 5:21-cv-03868-VKD Document 240 Filed 07/22/24 Page 2 of 20
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`TABLE OF CONTENTS
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`Page
`This Case is Exceptional ............................................................................................1
`A.
`10Tales’ Complaint and §101 Argument Ignored Years of Contrary
`Legal Precedent ..............................................................................................1
`10Tales’ Complaint and §101 Argument Were Fueled By False
`Allegations .....................................................................................................3
`10Tales’ Misrepresentations About
`Its Claim Construction
`Arguments Further Demonstrate Why This Case Is Exceptional ..................6
`10Tales’ Forum Shopping and Scorched Earth Discovery Tactics
`Were An Integral Part of 10Tales’ §101 Strategy and Should Not Be
`Condoned .......................................................................................................9
`10Tales Litigated in an Uncivil, Unprofessional and Unreasonable
`Manner .........................................................................................................11
`10Tales’ Counsel Should be Held Jointly Liable for Defendants’ Attorneys’
`Fees ...........................................................................................................................13
`Defendants’ Attorneys’ Fees Are Reasonable .........................................................15
`III.
`CONCLUSION ................................................................................................................................15
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`I.
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`II.
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`B.
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`C.
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`D.
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`E.
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`Case 5:21-cv-03868-VKD Document 240 Filed 07/22/24 Page 3 of 20
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`
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`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`In re Cathode Ray Tube Antitrust Litig.
`No. 07-cv-05944, 2021 WL 7448552 (N.D. Cal. Jan. 6, 2021) .............................................. 13
`
`Elec. Power Grp., LLC v. Alstom S.A.
`830 F.3d 1350 (Fed. Cir. 2016) ................................................................................................. 2
`
`Free Stream Media v. Corp. v. Alphonso
`996 F.3d 1355 (Fed. Cir. 2021) ......................................................................................... 2, 6, 8
`
`Ginegar LLC v. Slack Techs., Inc.
`No. 22-cv-44, 2022 WL 2064978 (N.D. Cal. June 8, 2022) ..................................................... 6
`
`Int'l Intell. Mgmt. Corp. v. Lee Yunn Enterprises, Inc. (U.S.A.)
`No. 08-cv-7587, 2009 WL 9137315 (C.D. Cal. Dec. 14, 2009) ............................................. 13
`
`Intell. Ventures I LLC v. Cap. One Bank (USA)
`792 F.3d 1363 (Fed. Cir. 2015) ................................................................................................. 2
`
`Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.
`876 F.3d 1372 (Fed. Cir. 2017) ................................................................................................. 3
`
`In re Keegan Mgmt. Co., Sec. Litig.
`78 F.3d 431 (9th Cir. 1996) ..................................................................................................... 13
`
`My Health, Inc. v. ALR Techs., Inc.
`No. 16-535, 2017 WL 6512221 (E.D. Tex. Dec. 19, 2017) ...................................................... 3
`
`Nelson v. SeaWorld Parks and Entertainment, Inc.
`No. 15-02172, 2021 WL 8134398 (N.D. Cal. July 9, 2021) ................................................... 14
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.
`521 F.3d 1351 (Fed. Cir. 2008) ................................................................................................. 8
`
`In re PersonalWeb Techs. LLC
`85 F.4th 1148 (Fed. Cir. 2023) .................................................................................................. 7
`
`Pop Top Corp. v. Rakuten Kobo Inc.
`No. 20-CV-04482, 2022 WL 267407 (N.D. Cal. Jan. 28, 2022) ...................................... 14, 15
`
`Realtime Adaptive Streaming LLC v. Netflix, Inc.
`41 F.4th 1372 (Fed. Cir. 2022) .................................................................................................. 9
`
`Samsung Elecs. Co. v. Rambus, Inc.
`523 F.3d 1374 (Fed. Cir. 2008) ............................................................................................... 14
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`Viavi Sols. Inc. v. Platinum Optics Tech. Inc.
`No. 20-cv-5501, 2024 WL 1199022 (N.D. Cal. Mar. 19, 2024) ............................................. 15
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`VoIP-Pal.com, Inc. v. Meta Platforms, Inc.
`No. 20-cv-00267, 2022 WL 3021522 (W.D. Tex. July 28, 2022) .......................................... 11
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`Waymark Corp. v. Porta Sys. Corp.
`334 F.3d 1358 (Fed. Cir. 2003) ............................................................................................... 14
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`Statutes
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`15 U.S.C. §1117(a) ........................................................................................................................ 14
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`28 U.S.C. § 1927 ..................................................................................................................... 13, 14
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`35 U.S.C. §285 .............................................................................................................................. 14
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`Rules
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`Fed. R. Civ. Proc.
`Rule 11 .................................................................................................................................... 13
`Rule 12 ...................................................................................................................................... 5
`Rule 12(b)(6) ................................................................................................................. 3, 4, 6, 8
`Rule 12(c) .............................................................................................................................. 5, 7
`Rule 30(b)(6) ..................................................................................................................... 10, 11
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`This case is exceptional for at least three primary reasons. First, when 10Tales filed this
`case, 10Tales disregarded years of Federal Circuit precedent that found the subject matter of claim
`1 (personalizing content based on user information) to be patent-ineligible. Second, 10Tales
`intentionally incorporated into the Complaint two false allegations that claim 1 included
`“improvements to technology,” even though 10Tales knew these “facts” were baseless and
`implausible because they were unsupported by the claims or specification. Then, 10Tales
`frivolously argued these baseless factual allegations must be taken as true to avoid dismissal under
`§101. Third, 10Tales’ forum shopping, baseless opposition to transferring venues, frivolous
`pursuit of inflated venue discovery and adding unnecessary parties to the Complaint to prop up
`10Tales’ venue argument were objectively unreasonable tactics used to delay an early §101
`decision. Moreover, these strategies demonstrate that 10Tales understood the weakness of its case,
`delayed the case, and unnecessarily drove up the cost of litigation in an attempt to exploit an unfair
`settlement from Defendants.
`10Tales’ opposition conspicuously avoids explaining (1) why 10Tales failed to consider or
`distinguish the abundant precedent showing claim 1 is ineligible, (2) why 10Tales included false
`“improvement” allegations that lack any support whatsoever in the Complaint, and (3) why, even
`after 10Tales’ scorched earth discovery campaign failed, 10Tales continued to oppose the transfer
`motion despite a shear lack of evidence to support keeping the case in the WDTX. 10Tales’
`attempt to refocus the Court’s attention to irrelevant aspects of the case are distractions that fail to
`rebut Defendants’ extensive showing that this case is frivolous and objectively unreasonable and
`never should have been filed. Accordingly, Defendants request that the Court find this case
`exceptional and award Defendants their attorneys’ fees.
`This Case is Exceptional1
`I.
`10Tales’ Complaint and §101 Argument Ignored Years of Contrary Legal
`A.
`Precedent
`Alice issued in 2014 and invalidating patents under §101 has been ubiquitous in patent
`cases ever since. Here, 10Tales’ argument that it was justified in filing suit because the asserted
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`1 10Tales does not dispute that Defendants are the prevailing parties.
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`patent is “presumptively valid” ignores the fact that every patent invalidated under §101 was at
`one time or another presumed valid. The presumption does not exempt 10Tales from conducting a
`pre-suit investigation. 10Tales’ Opposition does not and cannot dispute the long line of legal
`precedent that holds the abstract idea to which claim 1 is directed (presenting personalized content
`to a user based on information about the user) is patent-ineligible. Dkt. No. 236 (“Motion” or
`“Mot.”) at 15-16. Indeed, this has been the longstanding rule since at least 2015 when the Federal
`Circuit held that “customizing information based on [] information known about the user” is “a
`fundamental ... practice long prevalent in our system” and, therefore, patent ineligible. Intell.
`Ventures I LLC v. Cap. One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (citation omitted).
`A year later, the Federal Circuit confirmed that claims directed to “collecting information,
`analyzing it, and displaying certain results of the collection and analysis” “fall into a familiar
`class of claims ‘directed to’ a patent-ineligible concept.” Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350, 1353 (Fed. Cir. 2016) (emphasis added). Recently, the Federal Circuit pointed out
`that time and again courts have held that claims directed to providing personalized content to a
`user based on information about the user are patent ineligible.2 See, e.g., Free Stream Media v.
`Corp. v. Alphonso, 996 F.3d 1355, 1358 (Fed. Cir. 2021) (finding ineligible claims directed to
`providing “targeted information (i.e., advertisements) that is deemed relevant to the user based on
`data gathered [about the user]”); see also Dkt. No. 223 at 13-14 (collecting other cases with
`similar abstract ideas). 10Tales’ silence regarding these cases is deafening.
`10Tales never denies knowing about these cases. Nor does 10Tales dispute that if 10Tales
`had conducted a pre-suit investigation, 10Tales would have quickly identified these analogous
`cases. Moreover, 10Tales does not deny that (1) Defendants pointed these cases out to 10Tales
`early in the litigation,3 (2) Judge Gonzalez Rogers’ and Judge DeMarchi’s respective decisions on
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`2 Defendants articulated a similar abstract idea, “personalizing media content presented to a user
`based on information known about the user,” for claim 1 on November 17, 2020. Mot., Ex. 2 at 8.
`3 Upon receipt of the Complaint, Defendants easily located the Capital One Bank, Electric Power
`Group, and Affinity Labs cases and explained to 10Tales in November 2020 why they rendered
`claim 1 patent-ineligible. See Mot., Ex. 2 at 7-8. Although 10Tales ostensibly “responded” to
`Defendants’ letter, 10Tales’ letter did not substantively address these cases, Defendants’ §101
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`§101 likewise cited these cases and, in fact, affirmatively relied on them (see Dkt. No. 156 at 5;
`Dkt. No. 223 at 12-14), and (3) Judge DeMarchi found 10Tales’ cited cases regarding §101
`eligibility “readily distinguishable” (Dkt. No. 223 at 11-12). Thus, 10Tales’ argument that it had
`no reason to know that the ’030 patent was ineligible “any time prior to this Court’s order granting
`[Defendants’] motion” is belied by the record. Dkt. 239 (“Opp.” or “Opposition”) at 9. 10Tales
`knew of these cases and could have ended this case years ago—but chose to push forward.
`Unable to overcome this legal precedent, 10Tales instead spends pages arguing that the
`Alice analysis is “unpredictable.” Opp. at 8-9. While it can “sometimes [be] difficult to analyze
`patent eligibility,” neither of the Court’s decisions suggest that this case was a “close call” or had
`difficulty applying the case law. See Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
`1372, 1379 (Fed. Cir. 2017). Nor does 10Tales dispute that the long line of cases identified by
`Defendants explicitly outline the Alice analysis for several abstract ideas that are virtually identical
`to claim 1 and easily transferred to this case. See Mot. at 15-16; Dkt. No. 206 at 10-13. Given the
`“numerous cases invalidating claims directed to information collection and analysis,” the
`“guidance from the Federal Circuit regarding claims in this category had mounted to a level that
`would give any litigant a reasonably clear view of §101’s boundaries.” My Health, Inc. v. ALR
`Techs., Inc., No. 16-535, 2017 WL 6512221, at *4 (E.D. Tex. Dec. 19, 2017). In Inventor
`Holdings, the Federal Circuit affirmed an exceptionality finding based solely on the weakness of
`the patentee’s §101 opposition in view of just three prior analogous cases. 876 F.3d at 1379. Here,
`there are no less than ten analogous Federal Circuit and district court cases. Mot. at 15-16. The
`substantial available guidance ignored by 10Tales distinguishes this case from 10Tales’ cited
`precedent. Accordingly, 10Tales’ decision to file this case, and its opposition to Defendants’ §101
`Motion are even more egregious and, indeed, more exceptional than the Inventor Holdings case.
`10Tales’ Complaint and §101 Argument Were Fueled By False Allegations
`B.
`10Tales didn’t just ignore case law, 10Tales added false allegations to the Complaint to
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`argument, or any specific invalidity issue raised. See, Opp., Ex. 4. The remaining cases were
`identified in Defendants’ December 23, 2021 Rule 12(b)(6) Motion, where Defendants
`specifically mapped their claim language to the language of claim 1 here (Dkt. No. 132 at 7-11).
`Mot. at 15-16.
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`overcome the well-known Federal Circuit precedent, and then argued the allegations must be taken
`as true when contesting patent ineligibility. No case cited by 10Tales addresses or excuses
`10Tales’ objectively unreasonable conduct. Indeed, 10Tales’ reliance on Rothschild Digital
`Confirmation, LLC v. CompanyCam, Inc., supports this distinction. 494 F. Supp. 3d 263, 268 (D.
`Del. 2020). In Rothschild, the court’s exceptional finding and award of attorneys’ fees relied not
`only on the weakness of the patentee’s §101 position, but also on the patentee’s pattern of
`“troubling litigation conduct” intended to “prolong[] litigation against defendants.” Id. 10Tales’
`“troubling litigation conduct” likewise supports a finding that this case is exceptional under §285.
`Here, 10Tales affirmatively incorporated two legally and factually baseless and
`implausible allegations into 10Tales’ Complaint that the claimed invention “analyzed”
`information and incorporated an “algorithm.” The sole purpose for including these allegations was
`to fabricate purported technological improvements into the claim to overcome the §101 test. Mot.
`at 17-20. Despite repeated requests, 10Tales has never been able to show any evidentiary support
`for these allegations in claim 1 or the ‘030 patent specification. Yet, in order to survive
`Defendants’ Rule 12(b)(6) §101 motion, 10Tales frivolously argued to the Court that these false
`allegations in the Complaint must be taken as true to mislead the Court into believing it must first
`hold a claim construction hearing to determine whether the claim language supported these
`purported improvements. Id. However, even during claim construction, 10Tales could not show,
`and did not even contend, that the claim included these purported improvements. Id.
`Although 10Tales remains close-mouthed on the issue, it is more likely than not that prior
`to filing the Complaint, 10Tales’ counsel knew about the extensive case law holding claims
`directed to presenting personalized content to a user based on information about the user patent
`ineligible. Under this assumption, it is obvious that 10Tales knew it had to incorporate something,
`e.g., the purported “analyze” and “algorithm” improvements, into the Complaint to overcome the
`Alice test. By “planting” these baseless “improvement” allegations and arguing they must be taken
`as true at the pleading stage, 10Tales tried to ensure itself the ability to overcome the imminent
`§101 motion. 10Tales’ §101 opposition was both frivolous and objectively unreasonable because
`10Tales relied on a position that (1) was contrary to overwhelming case law, (2) relied entirely on
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`legally and factually baseless allegations that the improvements were recited by the claim, and (3)
`10Tales had no intention of pursuing these constructions during claim construction.
`10Tales’ remaining arguments attempting to shift blame and focus onto Defendants and
`away from 10Tales’ misconduct are misplaced, misrepresent the facts, and fail to address or
`overcome the exceptional nature of 10Tales’ frivolous and objectively baseless legal positions.
`First, as 10Tales well knows, Defendants did not raise the §101 defense in WDTX because Judge
`Albright’s stated practice was to deny §101 motions brought at the pleading stage under Rule 12.
`Dkt. No. 121 at 11. Indeed, Judge Albright’s practice is why 10Tales filed and aggressively tried
`to keep this case in WDTX. Judge Gonzalez Rogers acknowledged Judge Albright’s well
`publicized practice on early §101 motions, and rejected 10Tales’ same argument made here when
`she granted Defendants leave to file an early §101 motion. Dkt. No. 145 at 31:6-24.
`Second, Defendants never “dropped” the argument that the ’030 patent is a “quintessential
`‘do it on a computer patent.’” Opp. at 10. Defendants’ §101 motion argued that claim 1 “merely
`provide[s] a generic environment in which to carry out the abstract idea.” Dkt. No. 206 at 15. The
`Court actually adopted Defendants’ do-it-on-a-computer argument finding that the ’030 patent
`“does nothing more than implement a computer to achieve the abstract idea.” Dkt. No. 223 at 12.
`Third, 10Tales’ attempt to distinguish Defendants’ case law misses the mark. In Innovation
`Scis., LLC v. Amazon.com, Inc., the court found the case to be exceptional because the patentee
`“was on notice from the claim construction opinion itself that the [asserted patent] was … patent
`ineligible subject matter.” 842 F. App'x 555, 557 (Fed. Cir. 2021). Here, Judge Gonzalez Rogers
`placed 10Tales on “notice” at the §101 hearing that the alleged “improvements” were not found in
`the claim, and 10Tales argued that it was “a matter of claim construction.” Dkt. No. 145 at 19:10-
`24:19. Yet, knowing the arguments were baseless, 10Tales never pursued them, and the Court’s
`claim construction order confirmed that the purported improvements were not in the claims—
`putting 10Tales again on notice.4 Knowing that the ’030 patent did not support 10Tales’ critical
`
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`4 The Court’s Order granting Defendants’ Rule 12(c) motion also confirmed that the purported
`improvements are not disclosed anywhere in the specification. See ECF No. 223 at 10-11 (the
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`argument that claim 1 is patent eligible, 10Tales frivolously tried to leverage its false allegations to
`exploit the §101 case law (i.e., arguing the allegations must be taken as true at the pleading
`stage) to extend the litigation. For similar reasons, the court in Shipping & Transit, LLC v. Hall
`Enterprises, Inc. found the case exceptional where the patentee had a weak §101 position and used
`“exploitative litigation” tactics to “leverag[e] the high cost of litigation to extract settlements.”
`2017 WL 3485782 (C.D. Cal. July 5, 2017). For at least these reasons, Defendants request that the
`Court find this case exceptional.
`10Tales’ Misrepresentations About Its Claim Construction Arguments
`C.
`Further Demonstrate Why This Case Is Exceptional
`10Tales’ argument that its claim construction position remained the same throughout this
`litigation is frivolous, schizophrenic, and belied by the record. As detailed in Defendants’ opening
`brief, 10Tales took diametrically opposed positions; sometimes asserting that the alleged
`improvements to technology are found in claim 1 and sometimes (now) asserting that they are not.
`First, starting with the Complaint, 10Tales alleged that “claim 1 … reflects technological
`improvements” such as the analyzing and algorithm improvements. Dkt. No. 1 at ¶¶ 24-25.
`Second, as is required by the law, 10Tales continued to argue these “improvements” were in claim
`1 when it wanted these “improvements” to be considered in the §101 analysis. Free Stream, 996
`F.3d at 1364 (not crediting patentee’s purported improvement, even if explained in the
`specification, because “the asserted claims [] do not recite [the] improvement in computer
`functionality”).5 10Tales’ opposition to Defendants’ Rule 12(b)(6) §101 motion argued that “[t]he
`invention set forth in claim 1 involves … improvement[s] over the prior art” such as the analyzing
`and algorithm improvements. Dkt. No. 134 at 19-20. Third, in post-hearing briefing, 10Tales
`explicitly confirmed that “10Tales’ Complaint specifically alleged that the system recited in
`claim 1 of the ’030 patent” includes the analyzing and algorithm improvements. Dkt. No. 148
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`“specification is likewise silent regarding how the system ‘learns’ or ‘analyzes’” and “nothing in
`the claim requires a particular algorithm, nor is any such algorithm described in the specification”).
`5 See also Ginegar LLC v. Slack Techs., Inc., No. 22-cv-44, 2022 WL 2064978, at *8 (N.D. Cal.
`June 8, 2022) (“disclosing an improvement in the specification not recited in the claims does not
`convert an otherwise ineligible claim into patentable subject matter”). Here, 10Tales’ position is
`even more egregious because the purported improvements are not disclosed in the specification.
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`at 2 (emphasis added). Fourth, in its opposition to Defendants’ Rule 12(c) §101 motion, 10Tales
`pointed to its “alleg[ations] that the system recited in claim 1 ‘reflects technological
`improvements’” such as the analyzing and algorithm improvements. Dkt. No. 215 at 10 (quoting
`First Amended Complaint (“FAC”) ¶¶ 59-60).
`Moreover, not only did 10Tales allege the claims should be construed to include the
`purported “analyzing” and “algorithm” improvements in its Complaint, 10Tales argued that these
`purported improvements must be taken as true at the pleading stage as support for its opposition to
`the §101 motions. See, e.g., Dkt. No. 134 at 2 (“alleged facts of the complaint must be accepted as
`true”); Dkt. No. 148 at 2 (“10Tales’ Complaint specifically alleges that the system recited in
`claim 1 of the ’030 patent… (emphasis added)); Dkt. No. 215 at 2, 10 (arguing “10Tales’
`allegations in its Complaint,” which “must be accepted as true” are that “the system recited in
`claim 1” includes the purported improvements (emphasis added)).
`Fifth, when Judge Gonzalez Rogers could not find the alleged improvements in the plain
`language of claim 1, she directly asked 10Tales’ counsel: “we can all see the claim language,”
`“[y]ou agree it’s not in the claims; right[?]” Dkt. No. 145 at 19:10-20:13. 10Tales responded that
`“that’s a matter of claim construction.” Id. What makes 10Tales’ statement particularly egregious
`is that 10Tales intentionally misled Judge Gonzalez Rogers into delaying a substantive decision on
`the §101 issue by arguing that the claim should be construed to recite fabricated improvements
`that had no support in the claim or patent. Dkt. No. 156 at 6 (“plaintiff argues that Claim 1
`discloses a system” that includes the analyzing and algorithm improvements). Indeed, this Court
`noted 10Tales’ misleading statements when granting Defendants’ Rule 12(c) motion. Mot. at 7-8.
`The record reflecting that 10Tales repeatedly “changed its [claim construction] positions to
`overcome the hurdle of the day” supports finding this case exceptional. See In re PersonalWeb
`Techs. LLC, 85 F.4th 1148, 1158 (Fed. Cir. 2023). In contradiction to the above arguments,
`10Tales never argued in its infringement contentions or during claim construction for a
`construction of any term that included the alleged improvements. Additionally, 10Tales never
`argued during claim construction that the “entire claim” recites the purported improvements—or
`even what this means. Now, 10Tales’ seems to be arguing the ordinary meaning of the claim terms
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`covers the purported “analyze” and “algorithm” improvements and therefore a construction
`explicitly stating “analyze” and “algorithm” is not necessary.6 But the parties explicitly disputed
`the claim’s plain and ordinary meaning, and Judge Gonzales Rogers specifically pointed out the
`plain language does not include the alleged improvements. Thus, 10Tales was required to get its
`version of the plain and ordinary meaning construed into the claims given the parties’ dispute. See
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008).
`However, 10Tales did not argue for a construction of any terms to include the improvements, and
`thus 10Tales waived these arguments. Further, no precedent supports 10Tales’ argument that
`claim 1 can “improve technology” in order to overcome patent ineligibility, and then argue the
`improvement to technology need not be found in claim 1. Whether characterized as flip-flopping
`on claim construction or 10Tales’ overall argument, 10Tales argued inconsistent positions on a
`case dispositive issue, and not a minor or ancillary matter. 10Tales’ argument is baseless, and
`further supports why this case is exceptional.
`Finally, 10Tales’ attempt to focus on Defendants’ claim construction position is a red
`herring that does not inform on whether 10Tales’ litigation positions and conduct are exceptional
`or not. Moreover, to the extent that changes were made to Defendants’ constructions, they were
`made in response to 10Tales’ arguments in opposing the Rule 12(b)(6) motion to dismiss and §101
`motion, and the change in 10Tales’ infringement allegations—all of which conflict with
`statements made in 10Tales’ initial claim construction briefing filed in WDTX.7 Defendants’
`slight modifications to their claim construction positions were properly made in response to
`changes in 10Tales’ shifting infringement contentions, which were inconsistent with 10Tales’
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`6 10Tales’ similar attempt to argue that what a claim “reflects” or “includes” is separate from how
`a claim is construed strains credulity. Notably, 10Tales does not cite any authority for this,
`because there is none. Indeed, if an improvement is not found in the claim, it cannot be a basis for
`finding an exception to the general rule of patent ineligibility. See Free Stream, 996 F.3d at 1364.
`7 Defendants filed its initial April 2, 2021 claim construction position in response to 10Tales’
`December 14, 2020 Preliminary Infringement Contentions. One year later, on December 13, 2021,
`10Tales changed its infringement contentions after the case was transferred to the NDCA.
`Accordingly, on May 27, 2022, when claim construction briefing began in the NDCA, Defendants
`slightly modified its claim construction positions based on 10Tales’ new infringement contentions.
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`claim interpretation. 10Tales’ flip-flopping claim construction arguments, which can be more
`accurately described as a 180 degree reversal of a dispositive position depending on what issue
`10Tales was facing at the time, illustrates 10Tales’ bad faith attempts to prolong the case.
`10Tales’ Forum Shopping and Scorched Earth Discovery Tactics Were An
`D.
`Integral Part of 10Tales’ §101 Strategy and Should Not Be Condoned
`10Tales does not dispute Defendants’ argument that 10Tales’ selection of the WDTX, and
`Judge Albright specifically, was “blatant forum shopping” in order to game Judge Albright’s
`practice of denying §101 motions at the pleading stage and further 10Tales’ frivolous §101
`argument. 10Tales argues only that the rules permitted filing 10Tales’ case in the WDTX.
`However, merely because forum shopping may be per se “allowed”