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Case 6:20-cv-00810-ADA Document 1 Filed 09/02/20 Page 1 of 9
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`
`Case No. 6:20-cv-810
`
`JURY TRIAL DEMANDED
`
`Plaintiff,
`
`Defendant.
`











`
`
`
`
`
`
`
`v.
`
`
`10TALES, INC.,
`
`
`
`
`
`TIKTOK, INC.,
`
`
`
`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff 10Tales, Inc. (“10Tales”), by and through its attorneys, for its complaint against
`
`Defendant TikTok, Inc. (“TikTok”) hereby alleges as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for infringement of U.S. Patent No. 8,856,030 entitled “Method,
`
`System and Software for Associating Attributes within Digital Media Presentations”
`
`(“the ’030 patent,” attached as Exhibit A), arising under the Patent Laws of the United States,
`
`35 U.S.C. § 1 et seq.
`
`2.
`
`10Tales—and its founder David Russek—is the pioneering developer of innovative
`
`technology used to deploy advanced storytelling through the use of 10 second videos submitted by
`
`a network of friends that become shared experiences among the friend network. 10Tales’s
`
`technology has received numerous accolades from the entertainment industry, including, for
`
`example, the Mobile Excellence Awards. See http://10tales.co/10tales.html. David Russek is the
`
`inventor of the ’030 patent.
`
`
`
`1
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`

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`Case 6:20-cv-00810-ADA Document 1 Filed 09/02/20 Page 2 of 9
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`3.
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`10Tales alleges that TikTok infringes the ’030 patent by making and using a system
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`that infringes at least claim 1 of the ’030 patent, including, inter alia, the “recommendation
`
`system” used in connection with the TikTok “For You” Feed.
`
`THE PARTIES
`
`4.
`
`Plaintiff 10Tales, Inc. is a Delaware corporation that maintains its principal place
`
`of business at 18 Coal Street, Middleport, Pennsylvania 17953.
`
`5.
`
`On information and belief, Defendant TikTok is a California corporation with a
`
`regular and established place of business in Austin, Texas, and a registered agent for service of
`
`process in this District at Corporation Service Company d/b/a CSC-Lawyers Incorporating Service
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`Company, 211 E. 7th Street, Suite 620, Austin, Texas, 78701.
`
`JURISDICTION AND VENUE
`
`6.
`
`10Tales brings this action for patent infringement under the patent laws of the
`
`United States, 35 U.S.C. § 271, et seq. This Court has subject matter jurisdiction pursuant to
`
`28 U.S.C. §§ 1331 and 1338(a).
`
`7.
`
`8.
`
`The amount in controversy exceeds $75,000.
`
`This Court has personal jurisdiction over TikTok by virtue of TikTok’s systematic
`
`and continuous contacts with this District.
`
`9.
`
`This Court has personal jurisdiction over TikTok by virtue of, inter alia, the fact
`
`that TikTok has committed, aided, contributed to, and/or participated in the commission of the
`
`tortious act of patent infringement that led to foreseeable harm to 10Tales in this District.
`
`10.
`
`On information and belief, TikTok is in the business of providing a video-sharing
`
`social networking service through its app in this District, and offers products and/or services,
`
`including those accused herein of infringement, to customers and potential customers located in
`
`2
`
`

`

`Case 6:20-cv-00810-ADA Document 1 Filed 09/02/20 Page 3 of 9
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`Texas and in this District. On information and belief, TikTok distributes products directly to
`
`customers and through its partners and/or intermediaries located in State of Texas. On information
`
`and belief, TikTok derives significant financial benefits through its business in Texas and in this
`
`District.
`
`11.
`
`On information and belief, the TikTok app has been downloaded over 165 million
`
`times within the United States, with millions of those users of its products and services within the
`
`State of Texas, many of whom reside within this District.
`
`12.
`
`On information and belief, TikTok has a regular and established place of business
`
`in this District, including offices in Austin, Texas, which TikTok relies upon and uses to support
`
`its activities within this District that result in patent infringement. On information and belief, and
`
`as evidenced by Exhibit B and Exhibit C, TikTok has hired and continues to hire numerous
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`employees within this District, at least some of whom have, are, and will in the future support
`
`TikTok’s infringing activities within this District that will generate substantial revenue.
`
`13.
`
`On information and belief TikTok maintains facilities within this District and has
`
`committed acts within this District that give rise to this action and has established minimum
`
`contacts with this forum such that the exercise of jurisdiction over Defendant would not offend
`
`traditional notions of fair play and substantial justice. Defendant has committed and continues to
`
`commit acts of infringement in this District by, among other things, providing its products and/or
`
`services that infringe the asserted patent.
`
`14.
`
`This Court has specific personal jurisdiction over TikTok in this action pursuant to
`
`due process and the Texas Long Arm Statute because the claims asserted herein arise out of or are
`
`related to TikTok’s substantial business in this forum and voluntary contacts with this forum, such
`
`voluntary contacts include but are not limited to: (i) at least a portion of the actions complained
`
`3
`
`

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`Case 6:20-cv-00810-ADA Document 1 Filed 09/02/20 Page 4 of 9
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`of herein; (ii) purposefully and voluntarily placing one or more infringing products and/or services
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`into this District and into the stream of commerce with the intention and expectation that they will
`
`be used by consumers in this District; or (iii) regularly doing or soliciting business, engaging in
`
`other persistent courses of conduct, or deriving substantial revenue from goods and services,
`
`including the infringing products and/or services, provided to customers in Texas and in this
`
`District. TikTok is subject to the Court’s personal jurisdiction at least due to its distribution of
`
`products and/or services within Texas and the Western District of Texas. Within this state, TikTok
`
`has used the patented inventions thereby committing, and continuing to commit, acts of patent
`
`infringement alleged herein. In addition, TikTok has derived revenues from its infringing acts
`
`occurring within the Western District of Texas. Further, TikTok is subject to the Court’s
`
`jurisdiction because TikTok solicits and provides products and/or services to persons or entities in
`
`Texas and the Western District of Texas as evidenced by: (i) regularly doing or soliciting business;
`
`(ii) engaging in other persistent courses of conduct; and (iii) deriving substantial revenue from
`
`goods and services. TikTok has committed such purposeful acts and transactions in Texas such
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`that it reasonably should know and expect that it could be haled into this Court because of such
`
`activity.
`
`15.
`
`Relative to patent infringement, TikTok has committed and continues to commit
`
`acts in violation of 35 U.S.C. § 271, and has made and used the infringing system in this state,
`
`including in this District, and otherwise engaged in infringing conduct within and directed at, or
`
`from, this District. Such infringing system, namely the TikTok “recommendation system,” has
`
`been and continues to be used in this District and the infringing conduct has caused, and continues
`
`to cause, injury to 10Tales, including injury suffered in this District. These are purposeful acts
`
`4
`
`

`

`Case 6:20-cv-00810-ADA Document 1 Filed 09/02/20 Page 5 of 9
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`and transactions in this state and this District such that TikTok reasonably should know and expect
`
`that it could be haled into this Court because of such activities.
`
`16.
`
`Venue is proper in this Court under 28 U.S.C. §§ 1391 and 1400(b) for at least the
`
`reasons set forth above, including but not limited to: a substantial part of the events or omissions
`
`giving rise to the 10Tales claims occurred in this District; TikTok has committed acts of
`
`infringement in this District; and TikTok has a regular and established place of business in this
`
`District. Defendant TikTok is registered to do business in the State of Texas, and on information
`
`and belief, has transacted business in this District and has committed acts of direct infringement
`
`in this District. TikTok conducts business in this District, including making and using the
`
`infringing system in this District. On information and belief, TikTok maintains offices in this
`
`District, hires and maintains employees in this District, and conducts business in this District
`
`consistent with its substantial physical presence in this District.
`
`COUNT I –INFRINGEMENT OF THE ’030 PATENT
`
`17.
`
`10Tales re-alleges and incorporates by reference the allegations set forth in
`
`paragraphs 1-16 as if fully set forth herein.
`
`18.
`
`On October 7, 2014, the ’030 patent, entitled “Method, System and Software for
`
`Associating Attributes within Digital Media Presentations” was duly and legally issued by the
`
`United States Patent and Trademark Office. A true and correct copy of the ’030 patent is attached
`
`as Exhibit A.
`
`19.
`
`10Tales is the owner of the ’030 patent by virtue of an assignment effective as of
`
`March 29, 2015. A true and correct copy of that assignment agreement is attached as Exhibit D.
`
`20.
`
`Pursuant to 35 U.S.C. § 282, the ’030 patent is presumed valid.
`
`5
`
`

`

`Case 6:20-cv-00810-ADA Document 1 Filed 09/02/20 Page 6 of 9
`
`21.
`
`TikTok has had knowledge of the ’030 patent since at least upon the date the
`
`marking was posted on http://10tales.co/, which was on or before June 23, 2020.
`
`22.
`
`TikTok has been and now is directly infringing the ’030 patent within the United
`
`States by making and using systems that infringe, either directly or under the doctrine of
`
`equivalents, at least claim 1 of the ’030 patent, including, inter alia, the “recommendation system”
`
`used in connection with the TikTok “For You” Feed.
`
`23.
`
`Claim 1 of the ’030 patent covers a server-based software system for associating
`
`user attributes with digital media attributes and creating a user specific composite digital media
`
`display.
`
`24.
`
`The system in claim 1 of the ’030 patent reflects technological improvements upon
`
`the state of the art at the time. The technological improvements and solutions described and
`
`claimed in the ’030 patent were not conventional or generic at the time of their respective
`
`inventions. The inventions set forth in the claims of the ’030 patent involved novel and nonobvious
`
`approaches to the problems and shortcomings prevalent in the art at the time. The inventions
`
`claimed in the ’030 patent involve and cover more than just the performance of well-understood,
`
`routine, and/or conventional activities known to the industry prior to the invention of the methods,
`
`systems, and devices by the ’030 patent inventor.
`
`25.
`
`For example, one significant improvement over the prior art was the teaching of
`
`analyzing how a user interacts with other users in an online social network in order to determine
`
`that user’s affinity for certain digital media content, and then teaching the use of a rule based
`
`algorithm to use this information to create a user specific composite digital media display for a
`
`specific user.
`
`6
`
`

`

`Case 6:20-cv-00810-ADA Document 1 Filed 09/02/20 Page 7 of 9
`
`26.
`
`Upon information and belief, the backend “recommendation system” that TikTok
`
`both commercially makes and uses in the United States and in this District in order to generate the
`
`user specific “For You” feeds does precisely what is claimed by the system of the ’030 patent and
`
`constitutes an act of direct infringement of at least claim 1 of the ’030 patent.
`
`27.
`
`First, according to TikTok’s own representations and as evidenced by Exhibit E,
`
`one of the “defining features of the TikTok platform” is the fact that each “For You” feed is a user
`
`specific composite digital media display—that is, “each person’s feed is unique and tailored to that
`
`specific individual.” See, e.g., Exhibit E (June 18, 2020, news post from TikTok’s web site entitled
`
`“How TikTok recommends videos #ForYou”). According to Defendant:
`
`When you open TikTok and land in your For You feed, you’re presented with a
`stream of videos curated to your interests, making it easy to find content and
`creators you love. This feed is powered by a recommendation system that
`delivers content to each user that is likely to be of interest to that particular
`user. Part of the magic of TikTok is that there’s no one For You feed – while
`different people may come upon some of the same standout videos, each person’s
`feed is unique and tailored to that specific individual.
`
`See id. (emphasis added).
`
`28.
`
`TikTok also acknowledges that its “recommendation system” makes use of user
`
`attributes from a social network system, such as information about content that the user shares
`
`with others, accounts the user follows, and comments the user posts in order to select specific
`
`video clips (user specific digital media assets) to include in the user specific feed (user specific
`
`composite digital media display). Id.
`
`29.
`
`Additionally, as evidenced by Exhibit F, when a user chooses to link or sign up for
`
`TikTok using that user’s social network (such as Facebook, Twitter, Instagram, or Google),
`
`TikTok’s recommendation system collects user attribute information from these social media
`
`services, including the user’s contact lists for these services and information relating to the user’s
`
`use of those services. See Exhibit F (TikTok privacy policy). Upon information and belief,
`
`7
`
`

`

`Case 6:20-cv-00810-ADA Document 1 Filed 09/02/20 Page 8 of 9
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`TikTok’s “recommendation system” uses these user attributes collected from the social media
`
`services in rule based algorithms to select the video clips to include in the user’s “For You” feed
`
`that TikTok’s recommendation system tailors for that specific individual.
`
`30.
`
`As a result of its infringement of the ’030 patent, TikTok has damaged 10Tales.
`
`TikTok is liable to 10Tales in an amount to be determined at trial that adequately compensates
`
`10Tales for the infringement, which by law can be no less than a reasonable royalty.
`
`PRAYER FOR RELIEF
`
`10Tales respectfully requests that the Court enter judgment in 10Tales’s favor ordering,
`
`finding, declaring, and/or awarding 10Tales relief as follows:
`
`A.
`
`A judgment in favor of 10Tales that TikTok has directly infringed the ’030 patent,
`
`whether literally or under the doctrine of equivalents;
`
`B.
`
`Awarding 10Tales its damages suffered as a result of TikTok’s infringement of the
`
`’030 patent, including pre-judgment and post-judgment interest and supplemental damages for any
`
`continuing post-verdict or post-judgment infringement with an accounting as needed;
`
`C.
`
`D.
`
`E.
`
`Awarding 10Tales enhanced damages pursuant to 35 U.S.C. § 284;
`
`Awarding 10Tales its costs and expenses;
`
`Declaring this is an exceptional case awarding 10Tales its reasonable attorneys’
`
`fees pursuant to 35 U.S.C. § 285;
`
`F.
`
`Granting 10Tales such other equitable relief which may be requested and to which
`
`10Tales is entitled; and
`
`G.
`
`Granting such further relief as the Court finds appropriate.
`
`8
`
`

`

`Case 6:20-cv-00810-ADA Document 1 Filed 09/02/20 Page 9 of 9
`
`JURY DEMAND
`
`Pursuant to Federal Rule of Civil Procedure 38(b), 10Tales requests a jury trial of all issues
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`triable of right by a jury.
`
`Dated: September 2, 2020
`
`Respectfully submitted,
`
`By: /s/ William E. Davis, III
`
`William E. Davis, III
`Texas State Bar No. 24047416
`bdavis@davisfirm.com
`THE DAVIS FIRM, PC
`213 N. Fredonia Street, Suite 230
`Longview, Texas 75601
`Telephone: (903) 230-9090
`Facsimile: (903) 230-9661
`
`Barry P. Golob (pro hac vice to be filed)
`bgolob@cozen.com
`Kerry B. McTigue (pro hac vice to be filed))
`kmctigue@cozen.com
`Thomas J. Fisher (pro hac vice to be filed)
`tfisher@cozen.com
`Aaron Lukas (pro hac vice to be filed)
`alukas@cozen.com
`COZEN O’CONNOR
`1200 Nineteenth Street, NW
`Washington, D.C. 20036
`Telephone: (202) 912-4800
`Facsimile: (202) 861-1905
`
`Attorneys for Plaintiff 10Tales Inc.
`
`9
`
`

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