Case 6:20-cv-00810-ADA Document 62 Filed 04/02/21 Page 1 of 25
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`10TALES, INC.,
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`
`
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`v.
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`Plaintiff,
`
`
`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.,
`
`
`Defendants.
`
`
`
`
`Case No. 6:20-cv-00810-ADA
`
`JURY TRIAL DEMANDED
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`§
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`PLAINTIFF 10TALES, INC.’S OPENING CLAIM CONSTRUCTION BRIEF
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`Case 6:20-cv-00810-ADA Document 62 Filed 04/02/21 Page 2 of 25
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
`III.
`IV.
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`B.
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`C.
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`INTRODUCTION .............................................................................................................. 1
`BACKGROUND AND TECHNOLOGY OVERVIEW .................................................... 1
`APPLICABLE LAW .......................................................................................................... 2
`ARGUMENT ...................................................................................................................... 2
`A.
`TikTok Asks the Court to Read “narrative content” and/or “flow of the narrative”
`into Three Different Claim Terms .......................................................................... 3
`TikTok Asks the Court to Read “trigger point” into Three Different
`Claim Terms............................................................................................................ 5
`The Court Should Adopt 10Tales’ Proposed Constructions Based on the Plain
`and Ordinary Meaning of the Claim Terms ............................................................ 7
`1.
`“server” ....................................................................................................... 7
`2.
`“the system comprising … a computer-readable storage medium …
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`wherein the computer-readable storage medium contains one or more
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`programming instructions for performing a method … the method
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`comprising” ................................................................................................. 7
`3.
`“creating … a … composite digital media display” ................................... 9
`4.
`“presenting to the user via a [/the] display server” ................................... 12
`5.
`“user social network information” ............................................................ 13
`6.
`“retrieving user social network information from at least one source
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`external to the presented first composite digital media display …” ......... 15
`7.
`“monitoring the first composite digital media display for the presence
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`of a trigger” ............................................................................................... 16
`8.
`“performing rule based substitution of one or more of the digital media
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`assets from the first set of digital media assets with one or more of the
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`digital media assets from the second set of digital media assets”............. 17
`9.
`“second composite digital media display” ................................................ 19
`V. CONCLUSION ..................................................................................................................... 20
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`Case 6:20-cv-00810-ADA Document 62 Filed 04/02/21 Page 3 of 25
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`TABLE OF AUTHORITIES
`
`Cases
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`Page(s)
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`01 Communique Lab., Inc. v. LogMeIn, Inc.,
`687 F.3d 1292 (Fed. Cir. 2012)............................................................................................8, 13
`
`3M Innovative Props. Co. v. Avery Dennison Corp.,
`350 F.3d 1365 (Fed. Cir. 2003)................................................................................................20
`
`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008)............................................................................................8, 13
`
`Bayer AG v. Biovail Corp.,
`279 F.3d 1340 (Fed. Cir. 2002)................................................................................................10
`
`Celgene Corp. v. Peter,
`931 F.3d 1342 (Fed. Cir. 2019)..................................................................................................8
`
`Dayco Prods. v. Total Containment, Inc.,
`258 F.3d 1317 (Fed. Cir. 2001)..........................................................................................4, 5, 6
`
`Duncan Parking Techs., Inc. v. IPS Grp., Inc.,
`914 F.3d 1347 (Fed. Cir. 2019)................................................................................................16
`
`Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc.,
`815 F.3d 1314 (Fed. Cir. 2016)..........................................................................................12, 14
`
`Interactive Gift Express, Inc. v. Compuserve, Inc.,
`256 F.3d 1323 (Fed. Cir. 2001)..............................................................................................5, 6
`
`Kara Tech. Inc. v. Stamps.com Inc.,
`582 F.3d 1341 (Fed. Cir. 2009)..............................................................................................4, 6
`
`Microprocessor Enhancement Corp. v. Texas Instruments Inc.,
`520 F.3d 1367 (Fed. Cir. 2008)..................................................................................................7
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) ...............................................................................................13, 14, 18, 20
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)..........................................................................................12, 14
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .............................................................2, 5, 6, 10, 19
`
`Pisony v. Commando Constr., Inc.,
`No. W-17-CV-00055-ADA, 2019 U.S. Dist. LEXIS 31524 (W.D. Tex. Jan.
`23, 2019) ....................................................................................................................................2
`
`ii
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`Thorner v. Sony Comp. Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)........................................................................................2, 6, 17
`
`TiVo, Inc. v. EchoStar Commc’ns Corp.,
`516 F.3d 1290 (Fed. Cir. 2008)............................................................................................8, 13
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)..................................................................................................16
`
`
`
`iii
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`Case 6:20-cv-00810-ADA Document 62 Filed 04/02/21 Page 5 of 25
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`I.
`
`INTRODUCTION
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`The parties dispute the construction of nine claim terms. All of these claim terms contain
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`understandable language in the context of the invention. TikTok’s1 proposed constructions inject
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`a number of additional limitations that are not required by the intrinsic record. Instead, its
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`constructions are motivated by its non-infringement arguments that will serve only to confuse,
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`rather than help, the jury to determine the ultimate factual issues. For these reasons, and as set
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`forth below, 10Tales respectfully requests that the Court reject TikTok’s proposed constructions
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`and adopt 10Tales’ proposed constructions, which are grounded in the intrinsic evidence.
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`II.
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`BACKGROUND AND TECHNOLOGY OVERVIEW
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`U.S. Patent No. 8,856,030 (“the ’030 patent”) is titled “Method, System and Software for
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`Associating Attributes Within Digital Media Presentations.” See Exhibit 1. The ’030 patent
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`claims priority to a provisional application filed in 2003, and issued on October 7, 2014.
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`The ’030 patent is directed to systems for presenting a personalized digital experience for
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`a user informed by the user’s social networking activity. The ’030 patent dates back to the nascent
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`stages of social networking and 10Tales and David Russek were the first to devise a system for
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`tapping into social networking information to tailor content for users to enrich their experience.
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`Claim 1 of the ’030 patent is directed to a system that identifies a first set of digital content
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`for transmitting to a user based on that user’s profile. The claimed system then acquires additional
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`information about the user based on the user’s interaction with a social network, and based upon
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`that information, identifies a second, user-specific set of digital content to transmit to the user to
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`improve the user’s experience.
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`1 Throughout this brief, 10Tales refers collectively to all Defendants as “TikTok.”
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`As explained in the ’030 patent specification, the invention “allow[s] for customizing and
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`personalizing content based on a combination of the user’s demographics, psychodemographics,
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`cognitive states, emotional states, social placement and group interaction dynamics within an
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`online community, and/or affinity for certain elements (images, sounds, segments, graphics, video,
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`text, dialog), self provided narrating content, internal narrative traits preference topology, and
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`expectation level and temporal spacing of assets within the narrative.” ’030 patent, 2:65-3:7.
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`For the Court’s convenience, attached hereto is an annotated copy of claim 1 of the
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`’030 patent indicating the terms that the parties have identified for construction. See Exhibit 2.
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`III. APPLICABLE LAW
`The Court is familiar with claim-construction principles. Pisony v. Commando Constr.,
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`Inc., No. W-17-CV-00055-ADA, 2019 U.S. Dist. LEXIS 31524, at *3–8 (W.D. Tex. Jan. 23,
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`2019). The “[c]laim language guides the court’s construction of a claim term.” Id. After the
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`claims, “[t]he second source of intrinsic evidence is the patent specification.” Id. at *5–6. The
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`prosecution history is another tool to supply the proper context for claim construction. Id. at *6.
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`The words of a claim are “generally given their ordinary and customary meaning.” Id.
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`at *4 (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). This is
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`the ordinary and customary meaning as understood by a person of ordinary skill in the art when
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`read in the context of the specification and prosecution history. Thorner v. Sony Comp. Ent. Am.
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`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
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`IV. ARGUMENT
`Claim 1 of the ’030 patent is straightforward, and those skilled in the art would have readily
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`understood its scope based on its plain and ordinary language. TikTok has proposed a number of
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`constructions that depart from the claim language, seek to confine the claim to a single
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`embodiment, and which will only confuse the jury. On the other hand, 10Tales’ proposed
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`constructions stay true to the plain and ordinary language and serve to clarify the scope of the
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`invention where TikTok has attempted to distort it.
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`Those skilled in the art would have recognized that claim 1 is directed to a server-side
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`system that is loaded with software, where the software instructions permit the system to carry out
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`easily understood steps. In particular, a first feed of digital media assets is identified for
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`transmission to a user based on the user’s “user attributes.” The system receives “user social
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`network information” based on the user’s interaction with a social network, which includes further
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`“user attributes.” Based on, inter alia, the “user social network information,” the system selects a
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`more personalized feed of digital media assets for transmission to the user.
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`Throughout its proposed constructions, TikTok strains to confine the scope of claim 1 to
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`cover only one of the specific embodiments described in the ’030 patent specification. In
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`particular, in each instance where “digital media display” is recited in the claim, TikTok proffers
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`a construction that would confine that phrase to “narrative content,” such as the digital story
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`example described in specification. Similarly, TikTok proposes a number of constructions asking
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`the Court to confine the claimed “trigger” to the specific “trigger point,” which is explained in the
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`story or “narrative content” embodiment in the specification as a “point” that can be embedded in
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`the story by a creative director using a software toolkit to identify a point of insertion of user-
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`specific content. But neither the claim language nor the intrinsic evidence suggests such narrowing
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`constructions, and thus, TikTok’s proposed constructions should be rejected.
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`A.
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`TikTok Asks the Court to Read “narrative content” and/or “flow of the
`narrative” into Three Different Claim Terms
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`Claim 1 includes a number of limitations directed to the content that is identified and
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`presented to the user. Nowhere in claim 1 is the content limited to “narrative content,” and
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`nowhere in claim 1 is the concept of the “flow of the narrative” recited. While the specification
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`describes an embodiment in the context of inserting user-specific content into a story or narrative
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`content, claim 1 is not so limited. TikTok’s efforts amount to nothing more than a transparent
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`attempt to secure a non-infringement argument on the basis that its “For You” feed presents the
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`user with user-specific content made up of a stream of short-form videos, which—TikTok will
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`argue—is different than inserting user-specific content within a single story.
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`But the language of claim 1 includes no such limitation on the nature of the content or user-
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`specific content that is presented to the user. Likewise, the specification refers broadly to
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`“personalizing content,” and includes as examples a full range of such content, including, not only
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`narrative content, but also “images, sounds, segments, graphics, video, text, dialog.” ’030 patent,
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`3:3-4. There is no statement in the specification disclaiming a full range of personalized content
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`and no statement confining the invention to the presentation of a single story. Additionally, the
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`prosecution history includes no statement that would limit the presented content to “narrative
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`content” only. See generally Exhibit 3. There is thus no basis in the intrinsic record to limit the
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`scope of claim 1 to identifying and presenting a single story. The Federal Circuit has made clear
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`that in construing claims the “objective is to interpret the claims from the perspective of one of
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`ordinary skill in the art … not from the viewpoint of counsel or expert witnesses retained to offer
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`creative arguments in infringement litigation,” as TikTok proposes here. Dayco Prods. v. Total
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`Containment, Inc., 258 F.3d 1317, 1324 (Fed. Cir. 2001).
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`In arriving at the plain and ordinary meaning, and to ensure that 10Tales obtains the full
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`scope of its claims, Federal Circuit precedent forbids limiting the claims to the patentee’s preferred
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`embodiment or importing limitations from the specification into the claims. Kara Tech. Inc. v.
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`Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009). This canon of claim construction is so
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`important that the Federal Circuit has pronounced that reading a limitation from the written
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`description into the claims is “one of the cardinal sins of patent law.” Phillips, 415 F.3d at 1320
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`(citation omitted). And, “although the specification often describes very specific embodiments of
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`the invention, [the Federal Circuit has] repeatedly warned against confining the claims to those
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`embodiments.” Id. at 1323.
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`Importing limitations that are not set forth in the claim language—as TikTok asks the Court
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`to do here—is improper and contrary to the Federal Circuit’s instruction that when “construing
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`claims, the analytical focus must begin and remain centered on the language of the claims
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`themselves, for it is that language that the patentee chose to use to ‘particularly point[] out and
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`distinctly claim[] the subject matter which the patentee regards as his invention.’” Interactive Gift
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`Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (brackets in original)
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`(quoting 35 U.S.C. § 112, ¶ 2); see Phillips, 415 F.3d at 1312 (“requir[ing] us to look to the
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`language of the claims”).
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`Claim 1 recites neither “narrative content” nor “flow of the narrative,” and the Court
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`should reject TikTok’s litigation-induced claim constructions. Dayco Prods., 258 F.3d at 1324.
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`B.
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`TikTok Asks the Court to Read “trigger point” into Three Different Claim
`Terms
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`Similarly, TikTok asks the Court to read the term “trigger point” into three different claim
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`limitations, where “trigger point” appears nowhere in the claim. Claim 1 includes a phrase
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`“monitoring … for the presence of a trigger,” but nowhere is the phrase “trigger point” recited.
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`And again, while the specification describes a “trigger point” in the context of a preferred
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`embodiment, claim 1 is not limited to that embodiment. Those skilled in the art would readily
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`recognize that while a “trigger point” may be a “trigger,” the claimed “trigger” is broader than
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`the specific “trigger point” discussed in the context of a preferred embodiment. As with its
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`attempt to read “narrative content” into the claim, TikTok improperly seeks to limit the claims
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`to require a “trigger point” for its non-infringement defense.
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`But the language of claim 1 includes no such limitation on the nature of the trigger.
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`Likewise, there is no statement in the specification disclaiming a full range of triggers that could
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`be monitored for and no statement confining the invention to the use of a developer toolkit to insert
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`a specific “trigger point” in the digital content. Additionally, the prosecution history includes no
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`statement that would limit the invention to the use of “trigger points” inserted with a developer
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`toolkit. There is thus no basis in the intrinsic record to limit the scope of the “trigger” recited in
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`claim 1 to a “trigger point,” as that phrase is used in the specification. For the reasons set forth
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`supra, the Court should reject TikTok’s litigation-driven constructions, which are designed to
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`improperly confine the scope of 10Tales’ claim. Kara Tech., 582 F.3d at 1348; Phillips, 415 F.3d
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`at 1320, 1323 (citation omitted); Dayco Prods., 258 F.3d at 1324.
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`In sum, “[t]he patentee is free to choose a broad term and expect to obtain the full scope of
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`its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full
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`scope.” Thorner, 669 F.3d at 1365 (citation omitted). Here, 10Tales chose the broad term
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`“trigger”—not “trigger point”—and is entitled to the full scope of its plain and ordinary meaning.
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`Importing limitations that are not set forth in the claim language—as TikTok asks the Court to do
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`here—is improper and contrary to longstanding Federal Circuit claim construction precedent.
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`Phillips, 415 F.3d at 1312; Interactive Gift Express, 256 F.3d at 1331.
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`Claim 1 does not recite “trigger point,” and the Court should reject TikTok’s litigation-
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`induced claim constructions. Dayco Prods., 258 F.3d at 1324.
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`C.
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`The Court Should Adopt 10Tales’ Proposed Constructions Based on the Plain
`and Ordinary Meaning of the Claim Terms
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`1.
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`“server”
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`10Tales’ Proposed Construction
`The digital media narrative asset personalization system
`described in the ’030 patent and depicted by figure
`element 590 in Figure 5A
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`TikTok’s Proposed Construction
`The plain and ordinary meaning
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`This term is readily understandable and does not require further construction. TikTok
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`
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`agrees that the “server” should be accorded its plain and ordinary meaning. 10Tales’ proposed
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`construction merely seeks to clarify that the claimed server includes hardware and software that
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`can interact with, inter alia, the user, an online community, and a number of repositories
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`maintaining user profiles, content, and the digital assets recited throughout the claim. As explained
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`in the specification, “FIG. 5A illustrates a context diagram for one embodiment of a digital media
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`narrative asset personalization system (server) 590.” ’030 patent, 11:65-6; Fig. 5A.
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`2.
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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’ Proposed Construction
`No construction necessary. Plain
`and ordinary meaning.
`
`TikTok’s Proposed Construction
`Indefinite; or alternatively: “the system comprising … a
`server operably connected to a computer readable storage
`medium (CRSM) that contains one or more programming
`instructions for performing a method … wherein the
`server is configured to perform each step of the
`method comprising … and the CRSM contains a first
`set of digital media assets”
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`This term is readily understandable, and does not require further construction. Claim 1 is
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`
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`directed to a system that includes one or more servers and memory. The system is programmed
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`to carry out the steps recited in the claim. This is apparent in the plain language of the claim, and
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`no further explanation is necessary for the jury to understand this.
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`TikTok’s proposed construction is that claim 1 is indefinite as a hybrid claim directed to
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`both a system and a method. It is not. Claim 1 is directed to a system having the recited structure
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`and capable of performing the recited functions, and is therefore not indefinite. Microprocessor
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`Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008).
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`As for TikTok’s alternative construction, TikTok asks the Court to tack on two “wherein”
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`clauses that do not appear in the claim language, and will only serve to confuse the jury. It is self-
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`evident TikTok’s appended “wherein” clauses are drafted to support its yet-to-be-disclosed non-
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`infringement arguments, but there is nothing in the intrinsic evidence to support re-drafting
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`10Tales’ claim. The Court should reject TikTok’s alternative construction, and adopt the plain
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`and ordinary meaning of this term.
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`Moreover, TikTok’s proposed construction “is at odds with [the Federal Circuit’s] well-
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`established precedent.” 01 Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1296-97 (Fed.
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`Cir. 2012). “As a general rule, the words ‘a’ or ‘an’ in a patent claim carry the meaning of ‘one
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`or more.’” TiVo, Inc. v. EchoStar Commc’ns Corp., 516 F.3d 1290, 1303 (Fed. Cir. 2008). “The
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`exceptions to this rule are extremely limited: a patentee must evince a clear intent to limit ‘a’ or
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`‘an’ to ‘one.’” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)
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`(internal quotation marks and citation omitted). “The subsequent use of definite articles ‘the’ or
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`‘said’ in a claim to refer back to the same claim term does not change the general plural rule, but
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`simply reinvokes that non-singular meaning.” Id. An exception to the general rule arises only
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`“where the language of the claims themselves, the specification, or the prosecution history
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`necessitate a departure from the rule.” Id. at 1342-43.
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`Here, TikTok asks the Court to depart from the general rule and limit the meaning of “a
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`server” to a single server and the meaning of “a computer-readable storage medium” to a single
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`physical storage device. There is nothing in the claim language or in the specification, however,
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`that would compel such a departure from the general rule. See 01 Communique Lab., 687 F.3d at
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`1297 (“The patent’s use of words such as ‘a,’ ‘its,’ and ‘the’ in the claims is insufficient to limit
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`the meaning of ‘locator server computer’ to a single physical computer.”); see also Celgene Corp.
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`v. Peter, 931 F.3d 1342 (Fed. Cir. 2019) (holding that the claims’ use of the term “said medium”
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`referring back to “a computer readable storage medium” was insufficient to overcome general rule
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`that claim connotes one or more computer readable storage mediums). In fact, the specification
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`specifically describes a preferred embodiment that consists of more than one computer readable
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`storage medium that are operably connected to the claimed system, and in which the storage
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`medium containing the digital media assets is a different medium than the one containing the
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`programming instructions. See, e.g., ’030 patent, 12:4-10; Fig. 5A. Accordingly, this Court should
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`reject TikTok’s proposed construction because TikTok cannot overcome the general rule of claim
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`construction applicable here.
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`3.
`
`“creating … a … composite digital media display”
`
`10Tales’ Proposed Construction
`A step carried out by software that creates a
`first composite digital media display including
`one or more of the digital media assets
`identified in the identifying step
`
`TikTok’s Proposed Construction
`“creating digital narrative content by
`combining two or more digital media assets
`and a trigger point to indicate an opportunity
`to substitute one of the digital media assets
`without destroying the flow of the narrative”
`
`10Tales’ proposed construction confirms that this language describes a capability of the
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`
`
`claimed system. Specifically, this claim language describes that a server in the claimed system is
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`programmed to combine and arrange one or more digital media assets to create a composite digital
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`media display to be presented to a user. As detailed in the specification, digital media assets can
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`include, e.g., background images, video sequences, foreground images, text, branding graphics,
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`digital audio, and combinations thereof. See, e.g., ’030 patent, 8:58-62; Fig. 2. A composite digital
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`media display is a collection of digital media assets that will be presented to a user. ’030 patent,
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`5:19-20; Fig. 2; 5:21-22; 9:24-31; Fig. 3; 2:12-21; 12:19-22; 12:67-13:3. This clarification will
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`serve to inform the jury that claim 1 is directed to system that is capable of carrying out the recited
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`steps. As the plain language makes clear, it is the first set of digital media assets identified in the
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`claimed “identifying” step that make up the claimed “first composite digital media display.”
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`TikTok asks the Court to improperly read into the claim language limitations from one of
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`the preferred embodiments that are not present in the claim itself. The Federal Circuit has made
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`clear, however, that “although the specification often describes very specific embodiments of the
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`invention, we have repeatedly warned against confining the claims to those embodiments.”
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`Phillips, 415 F.3d at 1323; see also Bayer AG v. Biovail Corp., 279 F.3d 1340, 1348 (Fed. Cir.
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`2002) (“[A] court may not read into a claim a limitation from a preferred embodiment, if that
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`limitation is not present in the claim itself.”).
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`In particular—to support its non-infringement argument—TikTok is seeking a construction
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`that would limit claim 1 to a system that provides a single “narrative” story to a user. TikTok
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`also injects the concept of a “trigger point” into this easily-understood term, which will only serve
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`to confuse the jury. In doing so, TikTok is asking the Court to redraft claim 1 to confine its scope
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`to a specific embodiment described in the specification of the ’030 patent.
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`Notably, in TikTok’s proposed construction, TikTok acknowledges that this “creating”
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`limitation involves a computer program on a server “combining” a set of “digital media assets” in
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`order to create digital content (the “digital media display”) to be transmitted to a user. Although
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`the plain language of the claim only requires that a server in the system creates “a first digital
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`media display” from “the first set of digital media assets,” TikTok proposes adding an additional
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`limitation and requiring that the “creating” function also adds a “trigger point.” Presumably,
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`Case 6:20-cv-00810-ADA Document 62 Filed 04/02/21 Page 15 of 25
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`TikTok is referring to an embodiment described in the specification that “includes a developer
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`toolkit that allows a creative director to create trigger points in the material where digital assets …
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`can be inserted into the digital media narrative.” See ’030 patent, 4:24-28. There are at least three
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`problems with TikTok’s proposed construction. First, TikTok is seeking to improperly read into
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`a claim a limitation from an embodiment that is not present in the claim itself. Second, the
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`embodiment that TikTok relies upon for its construction deals with the situation where a human
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`being (the creative director) is creating the digital media narrative. The claimed invention,
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`however, involves the creation of the composite digital media display by one or more servers.
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`Third, TikTok seeks to conflate the term “trigger point”—which does not appear in the claim—
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`with the term “trigger,” which is recited later in claim 1.
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`TikTok also seeks to have this Court replace the claim term “composite digital media
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`display” with “digital narrative content.” TikTok’s proposed construction is not supported by
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`the specification. Here, TikTok is intentionally conflating two terms used in the specification:
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`“digital media narrative” and “digital narrative content.” The first term, “digital media narrative”
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`is described in the specification to “include content, such as video, audio, and combinations
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`therefore, that is distributed digitally and can be stored digitally,” and which in some instances
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`“can be manipulated via computer without human interaction.” ’030 patent, 2:12-16.
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`On the other hand, the term “narrative content” is a term that is specifically described in
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`the specification as including “content used for story telling.” ’030 patent, 6:59-61. This term is
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`narrower than “digital mediate narrative,” which “includes but is not limited to stories presented
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`over the Internet, modifiable digital video including digital television and streaming media,
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`presentations on web sites including animations, still images, sequences of still images, audio,
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`textual presentations, and combinations of all of the abovementioned media.” ’030 patent, 2:16-
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`Case 6:20-cv-00810-ADA Document 62 Filed 04/02/21 Page 16 of 25
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`21. Once again, TikTok is seeking to improperly read into claim 1 a limitation from a preferred
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`embodiment that is not present in the claim itself.
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`4.
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`“presenting to the user via a [/the] display server”
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`10Tales’ Proposed Construction
`A step carried out by software that begins
`transmitting the first composite digital media
`display created in the creating step to a user
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`TikTok’s Proposed Construction
`Indefinite; or alternatively, the plain and
`ordinary meaning
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`10Tales’ proposed construction confirms that this claim language describes a capability of
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`
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`the claimed system. Specifically, this claim language describes that a display server in the claimed
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`system is programmed to begin transmitting the first composite digital display created in the
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`creating step to a user. See ’030 patent, 12:7-10 (“In an alternate embodiment, the modified
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`content is not stored, and the personalized digital media asset is presented to user 501 via the
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`server 590.”) (emphasis added); 12:17-22; Fig. 5A.
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`TikTok, on the other hand, disingenuously claims that either the claim limitation is
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`“indefinite” because, according to TikTok, the term “display server” fails to inform those skilled
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`in the art of the scope of the claimed invention, or alternatively, the claim limitation should be
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`given its plain and ordinary meaning. TikTok’s inconsistent position illustrates that TikTok is not
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`engaging in claim construction in an effort to resolve a legitimate dispute regarding the scope of
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`the claimed invention. A determination that a claim term has the “plain and ordinary meaning” is
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`only appropriate where reliance on a term’s ordinary meaning resolves the parties’ dispute
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`regarding the claim scope. Eon Corp. IP Holdings LLC v. Sil