Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 1 of 26
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Plaintiff,
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` v.
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`10TALES, INC.,
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`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.,
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`
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`CIVIL ACTION NO. 6:20-CV-810-ADA
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`JURY TRIAL DEMANDED
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`Defendants.
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`DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 2 of 26
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION ...............................................................................................................1
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`U.S. PATENT NO. 8,856,030 AND ITS PROSECUTION HISTORY ..............................1
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`III.
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`CONSTRUING CLAIM 1 OF U.S. PATENT NO. 8,856,030............................................4
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`“server” ....................................................................................................................6
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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 . . .” ........................................................................................................7
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`“creating . . . a . . . composite digital media display” ..............................................9
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`“presenting to the user via a [/the] display server” ................................................12
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`“user social network information” .........................................................................14
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`“retrieving user social network information from at least one source external
`to the presented first composite digital media display” .........................................16
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`“monitoring the first composite digital media display for the presence of a
`trigger” ...................................................................................................................17
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`“performing a rule based substitution of one or more of the digital media
`assets from the first set of digital media assets with one or more of the digital
`media assets from the second set of digital media assets” .....................................18
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`I.
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`“the second composite digital media display” .......................................................20
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`CONCLUSION ..................................................................................................................20
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`-i-
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`IV.
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 3 of 26
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Akzo Nobel Coatings, Inc. v. Dow Chem. Co.
`811 F.3d 1334 (Fed. Cir. 2016)................................................................................................12
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`Bicon, Inc. v. Straumann Co.
`441 F.3d 945 (Fed. Cir. 2006)..................................................................................................19
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`Chef Am. Inc. v. Lamb-Weston Inc.
`358 F.3d 1371 (Fed. Cir. 2004)................................................................................................20
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`Fenner Invs., Ltd. v. Cellco P’ship
`778 F.3d 1320 (Fed. Cir. 2015)..................................................................................................5
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`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
`535 U.S. 722 (2002) ...................................................................................................................5
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`Halliburton Energy Servs., Inc. v. M-I LLC
`514 F.3d 1244 (Fed. Cir. 2008)................................................................................................20
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`IPXL Holdings, LLC v. Amazon.com, Inc.
`430 F.3d 1377 (Fed. Cir. 2005)..............................................................................................5, 8
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`Mastermine Software, Inc. v. Microsoft Corp.
`874 F.3d 1307 (Fed. Cir. 2017)............................................................................................8, 13
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`Microprocessor Enhancement Corp. v. Texas Instruments Inc.
`520 F.3d 1367 (Fed. Cir. 2008)..................................................................................................8
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`Nalpropion Pharm., Inc. v. Actavis Labs. FL, Inc.
`934 F.3d 1344 (Fed. Cir. 2019)................................................................................................15
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`Nautilus, Inc. v. Biosig Instruments, Inc.
`572 U.S. 898 (2014) ...................................................................................................................4
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`Paid Search Engine Tools, LLC v. Yahoo! Inc.
`2010 WL 1904545 (E.D. Tex. May 10, 2010) .........................................................................13
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`Phillips v. AWH Corp.
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)..................................................................................5
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`Rembrandt Data Techs., LP v. AOL, LLC
`641 F.3d 1331 (Fed. Cir. 2011)............................................................................................8, 20
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`Techtronic Indus. Co. v. Int’l Trade Comm’n
`944 F.3d 901 (Fed. Cir. 2019)....................................................................................................5
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 4 of 26
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`Thorner v. Sony Computer Entm’t Am. LLC
`669 F.3d 1362 (Fed. Cir. 2012)..................................................................................................5
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`TiVo, Inc. v. EchoStar Commc’ns Corp.
`516 F.3d 1290 (Fed. Cir. 2008)......................................................................................9, 10, 12
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`UCB, Inc. v. Yeda Rsch. & Dev. Co.
`837 F.3d (Fed. Cir. 2016)...........................................................................................................5
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`Statutes
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`35 U.S.C. § 112, ¶2 ....................................................................................................................5, 16
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 5 of 26
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`I.
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`INTRODUCTION
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`The Applicant of the ’030 patent was forced to amend twice and cancel altogether 14
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`claims, and resort to two new, poorly drafted claims written six years after the original application.
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`The ’030 patent claims are rife with mistakes and ambiguities that render the claims indefinite.
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`For example, although the claim requires a system for “associating user attributes with digital
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`media asset attributes,” the claim fails to actually make this association. Likewise, the poor
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`draftsmanship lead to an improperly mixed system and method claim. Moreover, individual
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`elements such as “user social network information,” “source external,” “rule based substitution,”
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`“second composite digital media display,” and “display server,” never mentioned in the
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`specification, are also indefinite. Claim construction cannot fix these claims. After acquiring the
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`patent, 10Tales, Inc. (“10Tales”) chose to litigate claims based on this shoddy draftsmanship and
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`poor word choices, and it cannot now manipulate the claim construction to re-write history.
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`Finally, 10Tales must accept the consequence of the Applicant disavowing claim scope
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`during prosecution to distinguish the claim from U.S. Patent No. 6,357,042 to Srinivasan. To
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`overcome the Examiner’s rejection, the Applicant disclaimed from the system: 1) replacing an
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`entire video, 2) using user attributes stored in user profiles to select videos, and 3) obtaining
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`attributes from user feedback/interaction with the system (e.g., clicks, likes, dislikes, etc.). The
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`doctrine of prosecution disclaimer prohibits 10Tales’ from recapturing this disavowed subject
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`matter. 10Tales must be held to this narrowed claim.
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`II.
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`U.S. PATENT NO. 8,856,030 AND ITS PROSECUTION HISTORY
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`The ’030 patent broadly relates to personalizing advertisements in order to better engage
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`users’ interest. See Declaration of Ericka J. Schulz1 Ex. A, ’030 at 1:27-51; Ex. B, Declaration of
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`1 All Exhibits references herein are exhibits to the Declaration of Ericka J. Schulz.
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 6 of 26
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`Dr. Alan Bovik (“Bovik”), ¶¶40-44, 64-67, 129, 54-57. However, the issued claims narrowly
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`apply to substituting aspects within advertisements or shows, such as the background, music, or
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`specific product placement, depending on a user’s attributes (e.g., age, location, interests). For
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`example, if a user is interested in dogs, the alleged system will automatically replace cat food with
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`dog food, within a pet store advertisement. ’030 at 17:44-18:3.
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`The Applicant distinctly framed its alleged invention around two coined terms: “digital
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`media narrative” and “digital media asset” (“DMA”). A “digital media narrative” can be an
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`advertisement in the form of a narrative, or an entertainment narrative (e.g., a sit-com, music video)
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`with product placement. ’030 at 1:66-2:52. More specifically, both have a storyline or plot. Id.;
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`6:59-67. DMAs are “parts” of a narrative or an “aspect[] such as audio, graphic, animation
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`features, video features, the timing of the audio and/or video and any other transformable aspect.”
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`’030 at 19:24-27; 8:58-62.2 The claimed system selects a “user-specific” DMA based on a user
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`attribute, and substitutes a DMA within a digital media narrative with the DMA. ’030 at cl. 1.
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`The alleged invention is narrowly tailored to substitute DMAs without destroying the flow of the
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`narrative content, as explained in the prosecution history. Ex. C (hereinafter “FH”), at 10Tales416.
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`During prosecution, the Applicant was forced to disavow at least the following claim
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`scope: 1) replacing an entire video, 2) using user attributes stored in user profiles to select videos,
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`and 3) obtaining attributes from user feedback/interaction with the system. Id. The disclaimer
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`was needed after the Examiner rejected the pending claims as invalid in view of U.S. Patent No.
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`6,357,042 to Srinivasan. Ex. D (the “’042 patent” or “Srinivasan”); FH at 10Tales400-4.
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`Srinivasan describes a variety of systems, including a “Personalized and Interactive Ad
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`System/Network.” ’042 at 29:8-16. This earlier system provides “an ad-engine in the form of a
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`2 All emphasis in quoted language is added unless otherwise stated.
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 7 of 26
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`software application that has ability to select video ads according to user profile.” ’042 at 2:64-
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`3:3; Bovik, ¶¶70-63. The Applicant distinguished its claim from Srinivasan.
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`First, the Applicant disclaimed substituting an entire video. After a second rejection, the
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`Applicant wrote a new claim including a “rule based substitution” of a digital media asset. FH at
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`10Tales416-420; Bovik, ¶¶54-63, 145-149-152. With this, the Applicant explained how the
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`substitution differed from the prior art: it requires “create[ing] [a] second set of digital media
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`assets through rule based substitution” that allows “parts of the media display (e.g., background,
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`timing, audio) to be varied in a way that does not destroy the flow.” FH at 10Tales416. In support,
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`Applicant referenced paragraphs 0119 and 0120 of the original application to argue the claim
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`substitution is “not disclosed or taught in Srinivasan, which simply teaches the selection of a
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`particular analog video stream at a branch point.” FH at 10Tales416. Paragraphs 0119 and 0120
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`describe “DMA actions” (e.g., substituting a background) limited to digital media narratives:
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`In an embodiment, the DMA actions are logical and do not break the flow of a
`narrative or an episodic narrative. In other words, in an embodiment, a changed
`asset does not destroy the plotline of a story and does not introduce a character or
`element that has no logical reason for appearing in the frame.
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`See FH at 10Tales317-318. Paragraphs 0119 and 0120 do not just describe an embodiment—they
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`describe the embodiment to which the claim was narrowed. See also ’030 at 1:41-45, 1:62-2:7,
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`2:53-61, 6:59-67; Op. Br. at 7 (“digital media narrative asset personalization system”); Bovik,
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`¶¶60-61, 67-88, 157-151. Thus, the prosecution disclaimer is explicit—the claim applies to an
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`embodiment that includes a narrative—and the substitution must not destroy the flow of the
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`narrative. Id. Moreover, the Applicant’s disclaimer excludes an embodiment where an entire
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`video is replaced, because it would necessarily “destroy the flow,” and because Srinivasan teaches
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`replacing one video or an entire advertisement, which the Applicant disavowed. FH at
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`10Tales416; see e.g., ’030 at 19:34-37; Bovik, ¶¶69, 146-151.
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 8 of 26
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`Second, the Applicant disclaimed retrieving stored user profiles to select the user-specific
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`digital media asset. In view of Srinivasan and other prior art, the Applicant was forced to re-write
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`the claim so that the claimed system required retrieving a user attribute from “user social network
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`information”—which is different from obtaining a user attribute from a user profile. Obtaining
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`user attributes from a user profile was well known in the art, and in fact, Srinivasan taught
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`personalizing media content using user attributes or preferences stored in a user profile. ’042 at
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`2:63-3:3, 30:6-8, 32:12-21; see also Ex. E., U.S. Patent No. 8,635,649 to Ward, III at 27:18-35,
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`28:17-27, and Ex. F, U.S. Patent No. 7,483,871 to Herz, at 4:51-5:8, 36:23-27, cl. 1.
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`Third, the Applicant disavowed obtaining user attributes from the user interacting with the
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`system, i.e., clicks, likes, etc. In response to the Examiner’s final rejection, the Applicant argued
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`that the alleged invention was different from Srinivasan because the claim required using “social
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`network information obtained from a source external to the presentation (e.g., video display).” FH
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`at 10Tales416. The Examiner cited Srinivasan which discloses a system where user preferences
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`stored in user profiles were in fact based on the user’s interaction with the displayed media. FH
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`at 10Tales402; ’042 at 7:38-48, 12:24-33, 31:48-57; Bovik, ¶¶60-62, 68-70, 67-88, 120, 131-134.
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`Thus, Applicant’s characterization to distinguish over Srinivasan disavowed obtaining attributes
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`from a person actually using and interacting with the display system.
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`The Applicant’s prosecution disclaimers inform Defendants’ proposed constructions, and
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`these proposed constructions are consistent with the embodiments disclosed in the specification.
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`III. CONSTRUING CLAIM 1 OF U.S. PATENT NO. 8,856,030
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`Claims viewed in light of the specification and prosecution history must “inform those
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`skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v.
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 9 of 26
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`Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). Failing to do so renders a claim indefinite. 35
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`U.S.C. §112, ¶2; IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).
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`Furthermore, the prescribed cannons of claim interpretation require construing terms
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`according to their “ordinary and customary meaning” from the perspective of a person of ordinary
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`skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.
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`Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets
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`out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope
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`of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer
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`Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The Plaintiff cannot broaden the claim
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`scope through claim construction to cover that which the applicant specifically cancelled. See
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`UCB, Inc. v. Yeda Rsch. & Dev. Co., 837 F.3d, 1256, 1261 (Fed. Cir. 2016) (“[T]he general rule
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`is that a patent applicant cannot later obtain scope that was requested during prosecution, rejected
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`by the Examiner, and then withdrawn by the applicant.”); see also Festo Corp. v. Shoketsu Kinzoku
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`Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002) (“Estoppel is a ‘rule of patent construction’ that
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`ensures that claims are interpreted by reference to those ‘that have been cancelled or rejected.’”).
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`Additionally, “an inventor may also disavow claim scope by distinguishing the claimed
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`invention over the prior art,” and cannot recapture claim scope that it disavowed. See, e.g.,
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`Techtronic Indus. Co. v. Int’l Trade Comm’n, 944 F.3d 901, 907 (Fed. Cir. 2019). Regardless of
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`the Examiner’s reliance, “the interested public has the right to rely on the inventor’s statements
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`made during prosecution, without attempting to decipher whether the examiner relied on them, or
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`how much weight they were given.” Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d 1320, 1325
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`(Fed. Cir. 2015).
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 10 of 26
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`A.
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`“server”
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`Defendants’ Proposed Construction
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`10Tales’ Proposed Construction
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`The term “server” should be given
`its plain and ordinary meaning.
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`“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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`The plain and ordinary meaning of “server” suffices, and no construction is required.
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`10Tales says it “agrees.” Op. Br. at 7. Accordingly, there should be no debate. However, 10Tales
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`then attempts to import additional structure to correct a problem with its case, e.g., reciting a
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`generic “server” limitation with no corresponding further limitations, functions, or connecting
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`structure renders the term useless to the claimed “system.” Try as it might, 10Tales cannot fix this
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`drafting defect through claim construction. The Applicant intentionally used a broad, non-descript
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`structure, and declined the opportunity to “clarify” during prosecution. Op. Br. at 7. The Court
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`cannot now read into the term a single embodiment.
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`Ironically, 10Tales’ proposal reverses its stance on importing an embodiment into the
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`claims—which it speciously argues against with respect to the “creating” element. See Section
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`III.C, infra. There, 10Tales argues that the claim cannot be limited to a single embodiment for
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`personalizing “narratives,” despite the prosecution disclaimer. Op. Br. at 10-12. Here, 10Tales
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`wants to limit the server to the single embodiment of the “digital media narrative asset
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`personalization system” in Figure 5. Op. Br. at 7. Although Defendants can agree with
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`characterizing the claimed system as a “digital media narrative asset personalization system,” the
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`term “server” is generic, and should not be restricted to one embodiment. Its construction cannot
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`import the thirty peripherals identified in Fig. 5A. Bovik, ¶¶72-75.
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`As drafted, the “server” has no function and is not coupled to any other claimed structure,
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`e.g., the “computer-readable storage medium,” nor any unclaimed structure, such as external
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`databases, external networks, or even a user interface/monitor. The parties agree that this generic
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 11 of 26
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`term should be given its plain and ordinary meaning. Op. Br. at 7. Importing the limitations of
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`Figure 5 are not justified.
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`B.
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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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`Defendants’ Proposed Construction
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`10Tales’ Proposed
`Construction
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`Indefinite; or alternatively, “the system comprising … a server operably
`connected to a computer-readable storage medium 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 computer-readable storage medium contains a first set of digital
`media assets”
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`Not indefinite, plain &
`ordinary
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`Claim 1 is indefinite for at least two reasons. First, it suffers from the fatal flaw of claiming
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`both a system and the use of method steps in the system, and does not solely claim capabilities of
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`the system. Second, the claim suffers the fatal flaw of requiring the system to “associat[e] user
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`attributes with digital media asset attributes,” in both the preamble and the body’s method clause,
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`without actually claiming how this is done. If not indefinite, then the claim must be construed
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`such that the server is capable of performing all of the method steps.
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`On the first point, the claimed system necessarily requires actually performing the method
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`steps because the steps require unclaimed structural elements to operate. To be clear, claim 1
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`recites a “system” with only two structural components, “(a) a server” and “(b) a computer-
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`readable storage medium” (a “CRSM”), with no limitation that requires them to be coupled
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`together. Bovik, ¶¶77. The CRSM “contains one or more programming instructions for
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`performing a method,” however, CRSMs only store instructions and are not capable of performing
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`methods or instructions. Bovik, ¶¶77-79.
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`By contrast, the methods and programming instructions require “presenting to the user via
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`a display server,” and “retrieving . . . from a source external.” See ’030 at cl. 1; Bovik, ¶¶77.
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 12 of 26
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`Yet, the presenting and retrieving method steps introduce additional unclaimed structural
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`elements—“a display server” and “at least one source external to the first composite digital media
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`display.” ’030 at cl. 1; Bovik, ¶¶77. Because these elements are unclaimed structural elements,
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`the presenting and retrieving steps go beyond claiming capabilities of the system. Instead,
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`infringement can only occur when these method steps are actually performed and by using the
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`unclaimed structural elements. This structure makes it impossible to determine whether
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`infringement occurs, when the system is made, sold, offered for sale, imported, or actually used in
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`an infringing manner. See IPXL Holdings, L.L.C. v. Amazon, Inc., 430 F.3d 1377 (Fed. Cir. 2005);
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`Mastermine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1315-16 (Fed. Cir. 2017).
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`For example, the claim requires the action of presenting to the user via a display server—
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`it does not claim solely the capability of the CRSM or server.3 Yet, the specification teaches that
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`the system, including the display is under control of the user, i.e., by requesting “material [to] be
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`played or displayed, and is simultaneously presented with that material and customized
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`personalized graphics and video.” ’030 at 3:33-36; Bovik, ¶¶77, 101-105. Thus, the claim is
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`indefinite for improperly claiming a system and a method. See, e.g., Rembrandt Data Techs., LP
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`v. AOL, LLC, 641 F.3d 1331, 1339-40 (Fed. Cir. 2011) (upholding the invalidity of an apparatus
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`claim that recited structural elements and a limitation that required “transmitting the . . . frame”).
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`On the second basis for indefiniteness, the claim’s preamble requires a system “for
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`associating user attributes with digital media asset attributes[.]” ’030 patent at cl. 1. The claim
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`3 10Tales’ reliance on Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d
`1367, 1375 (Fed. Cir. 2008) is misplaced. There, the issue was whether an apparatus claim using
`functional language was indefinite. The Federal Circuit found it was not because the claim was
`limited to an apparatus “possessing the recited structure and capable of performing the recited
`function” (emphasis original). Here, the claim fails to recite all of the required structure and thus
`Microprocessor is inapposite.
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 13 of 26
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`also recites this function in the body’s first wherein clause, requiring the programming instructions
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`perform “a method of associating user attributes with digital media asset attributes[.]” Id. Yet,
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`there are no actual steps for making this association. Thus, it is not clear to one of ordinary skill
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`how to incorporate this limitation into the claim. For at least this reason, the claim is indefinite.
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`Alternatively, to the extent that the Court declines to find this term indefinite, it should be
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`construed to clarify that the claimed “server” is responsible for performing each of the claimed
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`methods consistent with the intrinsic record. Bovik, ¶¶79. As discussed above, 10Tales contends
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`the server should be limited to Fig. 5A of the specification. See Op. Br. at 7. Although Defendants
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`disagree with 10Tales’ construction for “server,” Defendants agree that Fig. 5A describes only a
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`single server, and the specification refers to a “central server or service” and provides an
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`illustration of “a computer system for realization of the server 590.” ’030 at 4:42-49, 15:35-52.
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`However, the specification never describes a system using more than one server, or how this would
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`be accomplished in the context of Fig. 5A. Bovik, ¶¶77-79. Although the word “a” may connote
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`“one or more,” “[t]he general rule does not apply when the context clearly evidences that the usage
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`is limited to the singular.” See Op. Br. at 8; TiVo, Inc. v. EchoStar Commc’ns Corp., 516 F.3d
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`1290, 1303-4 (Fed. Cir. 2008). In this context, if “a server” is allowed to mean “one or more,”
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`then the claim is invalid for lack of written description support and enablement. Bovik, ¶¶101,
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`102. Only Defendants’ alternative construction maintains the integrity of the claim consistent with
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`and supported by the specification.
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`C.
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`“creating . . . a . . . composite digital media display”
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`Defendants’ Proposed Construction
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`10Tales’ Proposed Construction
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`“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”
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`“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”
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 14 of 26
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`The term “composite digital media display” first appears in the last amendment, six years
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`after filing the application—and is one of many disjointed drafting flaws. However, consistent
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`with the prosecution disclaimer in that last amendment, the specification’s examples, and the
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`remainder of the claim, the “first composite digital media display” must comprise narrative
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`content, two or more “parts,” and a trigger point.
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`First, the prosecution disclaimer limits the claim to replacing a part of a narrative’s content.
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`Thus, in order to replace only part of the first composite, it must comprise two or more parts, i.e.,
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`two or more digital media assets. See Section II supra. Second, the prosecution disclaimer also
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`requires the narrative content to accommodate substituting part of the narrative, e.g., a digital
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`media asset, without destroying the flow. Id. Finally, the claim also requires monitoring the first
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`composite for the presence of a trigger indicating a personalization opportunity in the narrative’s
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`content, and thus, the composite must comprise a trigger point. See Section II infra.
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`Defendants’ construction follows the boundaries of the disclaimer while aligning with the
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`numerous examples in the specification describing creation of a default digital media narrative
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`display for personalization by identifying trigger points in digital media narrative content.4 ’030
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`at 4:24-41, 8:15-26, 8:36-40, 10:1-22, 14:15-35, 16:58-17:10; Bovik, ¶¶81-93, 97. The
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`specification also describes combining multiple digital media assets and a trigger to create a
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`narrative. ’030 at 9:53-67. Moreover, every example provided in the specification mentions
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`adding a trigger point to identify where the digital media narrative can be customized, for example
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`identifying both “the vehicle and the background music” so “[u]pon reaching the trigger point” the
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`4 Defendants are amenable to using the term “digital media narrative” instead of digital media
`narrative content. Bovik, ¶¶56, 79, 60, 79, 81, 82, 84-79, 93, 95-198, 153.
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 15 of 26
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`system determines “which type of vehicle” and “which song” will have the “most appeal.” See
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`e.g., ’030 at 10:34-58; Bovik, ¶¶91-97, 98.
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`At minimum, the first composite digital media display must comprise at least two or more
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`digital media assets that create a narrative, with at least one of them capable of being substituted
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`without destroying the flow of the narrative. Bovik, ¶¶82-98; see also, e.g., ’030 at 7:1-5 (trigger
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`points), cl. 1; FH at 10Tales416, Section II, III.G. Contrary to Plaintiff’s suggestion that
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`Defendants are limiting this term to a single embodiment where the creative director must create
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`the trigger points (Op. Br. at 11), Defendants’ proposed construction is agnostic to how the trigger
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`point is added to the first composite. Moreover, as described below, the intrinsic record supports
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`using the noun “trigger point” instead of merely “trigger.” See Section II, III.G.
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`The problem with 10Tales’ proposed construction is that it contradicts the plain and
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`ordinary meanings of the individual words and the prosecution disclaimer. Bovik, ¶¶82-98. First,
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`10Tales rewrites the term to remove the gerund “creating” and instead introduces a new
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`anonymous and abstract actor, “software,” that is not tied to the language of the claims. Second,
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`10Tales removes the requirement of a “composite,” by allowing the first composite digital media
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`display to consist of only a single digital media asset. Bovik, ¶¶82, 83-90. Notably, modifying a
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`display comprising a single unmodifiable digital media asset (such as an advertisement or
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`commercial) is not the subject matter of claim 1 as narrowed by the prosecution history. Bovik,
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`¶¶87-79. The Applicant distinguished Srinivasan by arguing that its newly presented claim
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`requires substituting a part of the media display without destroying the flow. FH at 10Tales416;
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`Section II; Bovik, ¶¶87-89, 143-152. Thus, 10Tales’ proposal contradicts this disclaimer—and it
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`cannot be reconciled with the prior art’s disclosures. See section II; Bovik, ¶¶82, 88-91.
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`Accordingly, 10Tales’ proposal should be rejected.
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`Case 6:20-cv-00810-ADA Document 73 Filed 04/23/21 Page 16 of 26
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`D.
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`“presenting to the user via a [/the] display server”
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`Defendants’ Proposed Construction
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`10Tales’ Proposed Construction
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`Indefinite, alternatively the plain
`and ordinary meaning.
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`“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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`The Applicant’s poor draftsmanship rears its ugly head again in this term. “Display server”
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`is yet another claim term not used or described in the specification, and is ambiguous, unclaimed
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`“structure” added by amendment during prosecution and was not present in the original claims.
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`FH at 10Tales386 (adding “display server” in 2009). Consequently, a skilled person cannot
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`determine if the “display server” is hardware or software, or part of the server or external to the
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`server—and, certainly, it cannot be all of the above.
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`Based on the amended language, the Applicant intended for there to be a distinction
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`between “server” and “display server.” The display server must do more than simply serve or
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`transmit data—it must present and display the visual content. FH at 10Tales402; 1:54-58 (the
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`specification uses transmitting and presenting in the same sentence, and thus these words must be
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`different); Bovik, ¶¶107-110. Otherwise, Applicant would have not made the change. Id. See
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`Akzo Nobel Coatings, Inc. v. Dow C