Case 6:20-cv-00810-ADA Document 79 Filed 05/07/21 Page 1 of 20
`
`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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`TIKTOK INC., TIKTOK PTE. LTD.,
`BYTEDANCE LTD., and BYTEDANCE
`INC.,
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`
`
`
`
`v.
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`
`
`
`
`
`
`
`
`Case No. 6:20-cv-00810-ADA
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`JURY TRIAL DEMANDED
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`§
`§
`§
`§
`§
`§
`§
`§
`§
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`§
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`Plaintiff,
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`Defendants.
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`PLAINTIFF 10TALES, INC.’S REPLY CLAIM CONSTRUCTION BRIEF
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`Case 6:20-cv-00810-ADA Document 79 Filed 05/07/21 Page 2 of 20
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`TABLE OF CONTENTS
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`Page
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`Introduction .............................................................................................................................. 1
`I.
`II. TikTok Fails to Carry its Burden of Proving that Claim 1 is Indefinite .................................. 1
`III. TikTok Fails to Carry its Burden to Show that 10Tales Clearly and Unmistakably
`Disclaimed Claim Scope During Prosecution ......................................................................... 5
`IV. The Court Should Adopt 10Tales’ Proposed Constructions Based on the Plain and
`Ordinary Meaning of the Claim Terms ................................................................................... 8
`1. “server” ........................................................................................................................ 8
`2. “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” ............................. 9
`3. “creating … a … composite digital media display” .................................................... 9
`4. “presenting to the user via a [/the] display server” ................................................... 10
`5. “user social network information” ............................................................................ 11
`6. “retrieving user social network information from at least one source external
`to the presented first composite digital media display …” ....................................... 12
`7. “monitoring the first composite digital media display for the presence of a
`trigger” ....................................................................................................................... 13
`8. “performing 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” ................................................... 13
`9. “second composite digital media display” ................................................................ 15
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`i
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`Case 6:20-cv-00810-ADA Document 79 Filed 05/07/21 Page 3 of 20
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
`
`BASF Corp. v. Johnson Matthey Inc.,
`875 F.3d 1360 (Fed. Cir. 2017)..................................................................................................1
`
`Centillion Data Sys., LLC v. Qwest Commc’ns Int’l, Inc.,
`631 F.3d 1279 (Fed.Cir.2011)....................................................................................................3
`
`MIT v. Shire Pharm., Inc.,
`839 F.3d 1111 (Fed. Cir. 2016)........................................................................................ passim
`
`Metaswitch Networks Ltd. v. Genband US LLC,
`2016 WL 866715 (E.D. Tex. Mar. 5, 2016) ..............................................................................2
`
`Paid Search Engine Tools, LLC v. Yahoo! Inc.,
`2010 WL 1904545 (E.D. Tex. May 10, 2010) .........................................................................10
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................................................................................2
`
`Rembrandt Data Techs., LP v. AOL, LLC,
`641 F.3d 1331 (Fed. Cir. 2011)..................................................................................................3
`
`Teva Pharm. USA, Inc. v. Sandoz, Inc.,
`574 U.S. 318 (2015) ...................................................................................................................2
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`ii
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`Case 6:20-cv-00810-ADA Document 79 Filed 05/07/21 Page 4 of 20
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`I.
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`Introduction
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`Claim 1 of the ’030 patent is straightforward and would have easily been understood by
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`those skilled in the art at the time of the invention as being directed to a system running software
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`on a server. See generally Exh. 5, Decl. of Aviel D. Rubin, Ph.D. (“Rubin”). Rather than focusing
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`on the plain language recited in claim 1, TikTok overreaches in an attempt to have each limitation
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`of the claim found to be indefinite. TikTok’s strategy is belied by the fact that it understood the
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`claim language well enough to challenge the claims of the ’030 patent in a petition for Inter Partes
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`Review (“IPR”), where it only proposed construction of a single term—“user attributes.” See
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`Exh. 6, TikTok IPR Petition, pp. 9-10. 10Tales disagreed with TikTok’s IPR construction of “user
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`attributes,” so it proposed it for construction here. Departing from its IPR position, TikTok agreed
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`with 10Tales that “user attributes” needs no construction, and should be afforded its plain and
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`ordinary meaning. Contrary to its broad IPR claim constructions, TikTok seeks to narrow the
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`claims to secure otherwise unavailable non-infringement arguments.
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`TikTok’s strategy is transparent. Because TikTok’s “For You” Feed practices the plain
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`and ordinary language recited in claim 1, it is left to feign inability to understand the claim
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`language, or alternatively, asks the Court to improperly narrow it. The Court should reject
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`TikTok’s arguments and issue an order construing claim 1 according to its plain and ordinary
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`meaning as proposed by 10Tales.
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`II.
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`TikTok Fails to Carry its Burden of Proving that Claim 1 is Indefinite
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`In its brief, TikTok seeks to avoid its evidentiary burden and have this Court rule that 6 of
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`the 9 disputed claim terms of the ’030 patent are indefinite. But TikTok bears the burden of
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`proving indefiniteness by clear and convincing evidence, and it fails to do so. See BASF Corp. v.
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`Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). The Court should disregard TikTok’s
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`1
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`Case 6:20-cv-00810-ADA Document 79 Filed 05/07/21 Page 5 of 20
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`indefiniteness arguments, and only consider—and ultimately reject—TikTok’s “alternative”
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`proposed claim constructions.
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`The only extrinsic evidence that TikTok proffers to support its “indefiniteness” arguments
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`is the declaration of Dr. Alan Bovik (“Bovik”), which consists entirely of legal arguments and
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`legal conclusions. Notably, Dr. Bovik offers no explanation of how one skilled in the art would
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`have understood any of the terms of art used in the patent, nor does he explain the state of the art
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`at the time of the invention in 2003.1 See Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318,
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`332 (2015) (“‘[e]xperts may be examined to explain terms of art, and the state of the art, at any
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`given time,’ but they cannot be used to prove ‘the proper or legal construction of any instrument
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`of writing’”). This Court should give no weight to Dr. Bovik’s legal opinions, and TikTok has
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`failed to proffer clear and convincing evidence that the claim terms at issue are indefinite.
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`Cf. Metaswitch Networks Ltd. v. Genband US LLC, 2016 WL 866715, at *1 (E.D. Tex. Mar.
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`5, 2016) (“The Court is responsible for deciding disputed questions of law, and the Federal Circuit
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`has consistently disfavored reliance on expert testimony as the basis for legal conclusions.”).
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`TikTok argues that claim 1 of the ’030 patent is indefinite because it does not require that
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`the server and the computer readable storage medium (“CRSM”) be “coupled together.” Dkt. No.
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`73 (“TT Br.”) at 7. TikTok’s argument disregards the requirement that the “the ordinary and
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`customary meaning of a claim term is the meaning that the term would have to a person of ordinary
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`skill in the art in question at the time of the invention, i.e., as of the effective filing date of the
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`application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The
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`language of claim 1 requires “a server” and “a computer-readable storage medium operably
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`1 Dr. Bovik’s declaration includes a “technical background of the ’030 patent” section, but it does
`nothing more than paraphrase the “Background of the Invention” of the ’030 patent. Dr. Bovik
`does not explain any technological terms used in the ’030 patent background or the state of the art.
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`2
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`connected.” Even TikTok’s expert admits that a person of ordinary skill in the art (“POSITA”)
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`would have understood that the claimed system requires the server and the CRSM to be coupled
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`to one another. See Dkt. No. 73-9 (“Bovik”), ¶ 78 (“The specification supports that the CRSM
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`that includes programming instructions is operably connected to the server.”); see also Rubin,
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`¶¶ 24, 87. Similarly, a POSITA would have understood that a server operably connected to a
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`CRSM—as opposed to a “client” such as a user device—is capable of executing programming
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`instructions stored on the CRSM coupled thereto. See Rubin, ¶¶ 24, 87, 92; Bovik, ¶¶ 78-79.
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`Given that the plain and ordinary language of claim 1 of the ’030 patent requires a server
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`and a CRSM operably connected to that server, and programming instructions stored on that
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`CRSM, a POSITA would have understood how to “make” the claimed system. The system would
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`be made by loading the programming instructions onto a CRSM that is operably connected to a
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`computer that is capable of operating as a server in the well-known client-server model—a model
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`that was well-known at the time and commonly used in Internet-based applications, including
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`video streaming services. See Rubin, ¶¶ 38-46. Contrary to TikTok’s argument, the programming
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`instructions need not be executed in order to “make” the claimed system. See id., ¶ 24. Similarly,
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`as a matter of law, one would “use” the claimed system by causing the server to execute the claimed
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`programming instructions stored on the CRSM. See Centillion Data Sys., LLC v. Qwest Commc’ns
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`Int’l, Inc., 631 F.3d 1279, 1284 (Fed. Cir. 2011).2 The plain and ordinary language of claim 1—
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`as confirmed by both TikTok’s and 10Tales’ experts—recites a “system,” and would not have been
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`2 TikTok’s reliance on Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir.
`2011) is misplaced because the Federal Circuit found that the claim recited both structural
`limitations and a method step. Id. at 1339-40. In contrast, claim 1 of the ’030 patent does not
`include a limitation that requires the system to actually perform any method steps. Rather, the
`programming instructions stored on a CRSM, if executed, will cause a server to perform a method.
`The experts agree that this is how a POSITA would have understood claim 1 here. See Bovik,
`¶¶ 78-79; Rubin, ¶¶ 24, 87.
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`3
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`understood to be a hybrid system/method claim. TikTok’s IPXL indefiniteness argument fails as
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`a matter of law.
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`TikTok also argues that claim 1 is indefinite because it recites a “first” composite digital
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`media display (“CDMD”), a “user-specific” CDMD, and a “second” CDMD. TikTok argues that
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`a POSITA would not have known whether the modifier “second” refers to the “first” CDMD or
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`the “user-specific” CDMD. TikTok’s argument is specious at best. Both experts agree that a
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`POSITA would have had at least a bachelor’s degree in computer science, electrical engineering,
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`or a related field. TikTok presents no basis to conclude that such a POSITA would not readily
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`understand that the modifier “second” does not refer back to the “first” CDMD, but instead, refers
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`to the “user-specific” CDMD. Moreover, a POSITA would have understood that the claimed
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`system would not function as described in the specification if the system were to continue
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`transmitting the “first” CDMD rather than the modified, “user-specific” CDMD to the user device
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`for display. Rubin, ¶ 103. Accordingly, TikTok has failed to show by clear and convincing
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`evidence that a POSITA would not have understood with reasonable certainty that in the context
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`of claim 1 as a whole, the “second” CDMD refers to the “user-specific” CDMD.
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`Finally, TikTok argues that claim 1 is indefinite because the preamble describes the system
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`as one for associating user attributes with digital media asset attributes, but does not recite an
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`“actual step” for making this association. But TikTok overlooks the two claim limitations that it
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`did not propose as requiring construction. First, claim 1 requires that the programming
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`instructions, when executed, cause the server to “identify[] a first set of digital media assets,” and
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`to “select[], based on the user attributes in the social network information, a second set of digital
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`media assets.” TikTok did not seek construction of either of these claim limitations. Indeed, no
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`construction is necessary, because it is clear that these instructions cause the system to associate
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`user attributes with digital media assets in at least selecting the second set of digital media assets.3
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`Accordingly, TikTok has failed to carry its burden of proving that claim 1 is indefinite.
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`III. TikTok Fails to Carry its Burden to Show that 10Tales Clearly and Unmistakably
`Disclaimed Claim Scope During Prosecution
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`As explained in 10Tales’ opening brief, TikTok seeks to read limitations from certain
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`embodiments described in the specification into the disputed claim terms, which are simply not
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`there. To justify its narrowing constructions, TikTok relies almost entirely on arguments that
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`10Tales “disavowed” the full scope of claim 1 during prosecution of the patent. Thus, TikTok at
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`least implicitly concedes that absent a clear and unmistakable disavowal by 10Tales, TikTok’s
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`narrowing of the plain and ordinary construction of the disputed claim terms would be improper.
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`TikTok, however, fails to meet its burden, and as such, this Court should reject TikTok’s proposed
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`constructions that rely upon the alleged “disavowal” of the full scope of claim 1 of the ’030 patent.
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`“The party seeking to invoke prosecution history disclaimer bears the burden of proving
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`the existence of a ‘clear and unmistakable’ disclaimer that would have been evident to one skilled
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`in the art.” MIT v. Shire Pharm., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016) (citation omitted).
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`Indeed, the Federal Circuit has declined to find a prosecution disclaimer “[w]here the alleged
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`disavowal is ambiguous, or even ‘amenable to multiple reasonable interpretations.’” Id.
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`First, TikTok claims that 10Tales narrowed the scope of claim 1 to a system capable of
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`performing a rule-based substitution without “destroying the flow of the narrative content”—
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`language that appears nowhere in claim 1—based on a response made by the prosecuting attorney
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`that the prior art referenced by the examiner—Srinivisan—did not teach “the creation of the second
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`set of digital media assets through rule based substitution.” The prosecuting attorney argued that
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`3 Bovik acknowledges that the specification discloses a rule for associating user attributes with
`digital media attributes. Bovik, ¶ 143; see also ’030 patent, 7:56-67; 15:10-34; Rubin, ¶¶ 83-86.
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`Srinivisan taught a different type of system that associates user attributes with user-specific digital
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`media assets (advertisements in Srinivisan). Specifically, Srinivisan disclosed a system where at
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`“appropriate times during the broadcast,” the system would stop the main video stream and start
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`broadcasting the appropriate ad stream; when the ad stream completed, the system would resume
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`transmission of the main video stream from the point where it had stopped. Rubin, ¶¶ 106-112
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`(citing Srinivisan at 32:57-65). The prosecuting attorney argued Srinivasan was different from the
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`claimed system because the claimed substitution required altering a stream rather than stopping a
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`first stream to present a second stream at a branch point, then returning to the first stream.
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`Regardless, the examiner disagreed, and found that Srinivasan’s multiple stream system was
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`covered by the claimed “rule-based substitution” limitation. Accordingly, TikTok has failed to
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`identify a clear and unmistakable statement made by 10Tales during prosecution where it
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`intentionally limited the claimed system to a system where the rule-based substitution is limited to
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`actions that preserve the flow of a story plotline. TikTok’s disclaimer argument should be rejected.
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`Second, TikTok argues that 10Tales disclaimed “using user attributes stored in user profiles
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`to select videos.” Here, TikTok refers to a statement during prosecution that “Srinivasan does not
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`utilize social network information obtained from a source external to the presentation (e.g. video
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`display of Srinivasan).” It is unclear how TikTok could possibly construe this statement as an
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`intentional disclaimer of anything. But TikTok argues that because Srinivasan discloses the use
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`of “stored user profiles,” 10Tales was somehow disclaiming “stored user profiles” altogether,
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`based on the statement that in the claimed system, the social network information is retrieved from
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`a source other than the displayed presentation itself. The examiner only cited Srinivisan for its
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`disclosure of generating user content based on user responses, not that Srinivisan taught retrieving
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`“stored user profiles;” TikTok has failed to show that this statement was a clear and unmistakable
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`disclaimer of any use of stored user profiles. Indeed, not even the examiner viewed the prosecuting
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`attorney’s statement as a disclaimer. In allowing the claim, the examiner stated, “Srinivasan et al.
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`gets user attribute information by asking the users.” Notably, the examiner did not state that
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`Srinivisan gets user attribute information from a stored user profile.
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`Finally, TikTok argues that 10Tales limited claim 1 to require that the recited “trigger” be
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`confined to data embedded into the first composite digital media display (i.e., a “trigger point”).
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`TikTok’s argument is based on statements made with regard to an unrelated method claim that
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`10Tales cancelled before submitting the claim that issued as claim 1. Significantly, the subject
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`claim at that time during prosecution specifically required storing the “trigger” along with a digital
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`media asset on the server-side CRSM. See Exh. 3, 10Tales0387 (“storing a personalized digital
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`media asset … comprising … the digital media asset, the trigger, and the personalized content”).
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`There is no such limitation in claim 1 of the ’030 patent. Moreover, the claim at the time did not
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`require the “trigger” to be a data point embedded into a digital media asset, let alone into a
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`composite digital media display. So here too, TikTok fails to show a clear and unmistakable
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`disclaimer that would have been evident to one skilled in the art that 10Tales intentionally limited
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`its claim to require that the composite digital media display includes an embedded trigger point.
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`In support of its “disavowal” arguments, TikTok submitted the Bovik declaration, which
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`includes nothing more than conclusory attorney argument trying to make out a disclaimer case.
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`This is an improper use of an expert declaration, and the Court should give the declaration no
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`weight here. Had 10Tales made a clear and unmistakable disclaimer, TikTok could have simply
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`cited the statement in its brief. But 10Tales made no such disclaimer. Indeed, claim 1 was
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`introduced late in the prosecution of the ’030 patent, and the examiner allowed the claim finding
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`that the closest prior art did not teach the subject matter recited therein.
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`7
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`Even if the Court were to give weight to the Bovik declaration, which it should not,
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`10Tales’ interpretation of the prosecution history is more reasonable. See Rubin, ¶¶ 104-124.
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`Moreover, in support of its IPR petition, TikTok submitted a declaration from a different expert—
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`Kevin Almeroth—and tellingly, Dr. Almeroth did not interpret the prosecution history as TikTok
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`asks the Court to do here. See Exh. 7, Almeroth IPR Decl. Specifically, TikTok’s IPR expert did
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`not opine that 10Tales had disclaimed the scope of the patent such that claim 1 was intentionally
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`limited to only narrative content, that the claimed system required embedding a “trigger point” in
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`the composite media display, that the rule-based substitution had to occur without “destroying the
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`flow of the narrative,” or that the social network information could not be stored in a user profile
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`database. See Rubin, ¶¶ 114, 119. Had TikTok’s IPR expert interpreted the prosecution history
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`as TikTok proposes the Court do here, he likely would not have been able to identify these
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`additional limitations in the prior art. Because TikTok proposed a different interpretation of the
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`prosecution history in the IPR proceeding—and given 10Tales’ reasonable interpretation here—
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`this Court should decline to find prosecution disclaimer. See MIT, 839 F.3d at 1119.
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`IV.
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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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`Ordinarily, the term “server” is one that 10Tales would agree should be given its plain and
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`ordinary meaning. The problem here, however, is that TikTok is trying to claim that the “plain
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`and ordinary meaning” somehow renders the claim indefinite. First, TikTok argues that the
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`“server” has no function and is not coupled to any other structure in the claimed system. This is
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`an unreasonable interpretation, and as TikTok’s own expert admits, a POSITA would interpret the
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`claim as requiring that the CRSM is coupled to the server. Were TikTok to drop these arguments,
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`the Court would not need construe this well-understood term for the jury.
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`Also, the parties agree that the server can be either “a computer or program that responds
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`to commands from a client.” See Exh. H, TikTok Resp. The parties also agree that the term
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`“server” in the first limitation of the claim refers to a computer that contains software allowing
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`the computer to respond to commands from a client. This is distinguishable from the term “display
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`server” used later in the claim, which refers to a program rather than a physical computer. In light
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`of the foregoing, 10Tales agrees that the term “server” does not need to be construed, but instead,
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`can be afforded its plain and ordinary meaning.
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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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`TikTok has not carried its burden to prove indefiniteness. 10Tales incorporates the
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`arguments set forth supra in § II. The parties otherwise agree that the claimed system comprises
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`at least one server (computers or programs connected to a network and programmed to respond to
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`commands from a client), and one or more CRSMs that are operably connected to the one or more
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`servers, wherein one or more of the CRSMs contain programming instructions that the servers are
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`configured to execute to provide digital media content to a user that is customized to that particular
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`user. The Court should adopt the plain and ordinary meaning.
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`3.
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`“creating … a … composite digital media display”
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`10Tales’ and TikTok’s experts agree that this limitation refers to a step carried out by
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`software running on a server that is part of the claimed system. The dispute here is that TikTok is
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`seeking to add limitations to this claim term based on its argument that 10Tales disavowed claim
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`scope during prosecution. As explained above, however, TikTok fails to meet its burden to show
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`that the patentee clearly and unmistakably disclaimed any claim scope. 10Tales incorporates the
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`arguments set forth supra in § III. Moreover, TikTok’s proposed construction is inconsistent with
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`its IPR petition, in which it did not seek construction of this term. See Rubin, ¶¶ 114. That TikTok
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`itself has interpreted the prosecution history differently in two proceedings shows that there has
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`been no clear and unmistakable disclaimer. MIT, 839 F.3d at 1119.
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`Accordingly, if the Court agrees that this limitation refers to a step carried out by software
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`executing on a server, this term should be given its plain and ordinary meaning. Otherwise,
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`10Tales maintains that the Court should construe this term as 10Tales proposes.
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`4.
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`“presenting to the user via a [/the] display server”
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`TikTok’s proposed construction is internally inconsistent. Either there is no dispute as to
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`how a POSITA would have understood this claim term at the time of the invention, or that same
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`POSITA would not have understood its scope. TikTok’s alternative positions serve only to
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`demonstrate that it has failed to meet its burden of proving that the claim is indefinite. Notably,
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`in its IPR petition, TikTok’s expert—once again—had no difficulty applying the plain and
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`ordinary meaning of this limitation. See Rubin, ¶¶ 52-55.
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`The parties agree that this limitation refers to a step of a method carried out by software
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`running on the server. The parties also agree that the act of actually displaying for view images,
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`video, or text, or of playing audio are functions that are carried out by client-side software (e.g.,
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`on a user’s device). As such, a POSITA would have understood that the verb “presenting” in the
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`context of software running on the server does not mean “displaying” as TikTok contends. See
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`id., ¶¶ 88, 90. Moreover, the term “present” is used consistently in the ’030 patent specification
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`to mean transmitting digital media from the server to a client. See id., ¶ 90; ’030 patent at 1:56
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`(“presented as animation over the Internet”); 2:16-17 (“Digital media narrative … presented over
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`the Internet”); 12:8-10 (“the personalized digital media asset is presented to user 501 via the
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`Server 590”).4
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`4 TikTok’s reliance on Paid Search Engine Tools, LLC v. Yahoo! Inc., 2010 WL 1904545, at *8
`(E.D. Tex. May 10, 2010) is misplaced. The term at issue in that case was “presenting … on a
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`With regard to the term “display server,” TikTok ignores the state of the art at the time of
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`the invention as well as certain technical terms used throughout the ’030 patent specification itself,
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`such as “web server,” “server environment,” “servlets,” “Java Server Pages,” and “Macromedia
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`Flash MX movies.” See ’030 patent at 15:62-16:4. In view of the state of the art at the time—and
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`the technology referenced in the specification—a POSITA would have understood the term
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`“display server” in the context of the ’030 patent to mean specialized software running on the
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`server-side in client-server model. See Rubin, ¶¶ 50-55, 81-82, 88. A POSITA would have
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`understood that this software would run on a hardware server that is part of the claimed system.
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`Id. Accordingly, TikTok has failed to meet its burden of showing that this term is indefinite.
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`Accordingly, if the Court agrees that this limitation refers to a step carried out by software
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`executing on a server, this term should be given its plain and ordinary meaning. Otherwise,
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`10Tales maintains that the Court should construe this term as 10Tales proposes.
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`5.
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`“user social network information”
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`Once again, TikTok argues that this term is either indefinite or readily understood.
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`Notably, TikTok’s IPR expert—once again—had no issues understanding the scope of this
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`limitation. See id., ¶ 95. TikTok’s inconsistent positions demonstrate that this term is not
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`indefinite, and that it has failed to meet its burden of proving that it is. A POSITA would have
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`understood the scope of “user social network information” in the context of the ’030 patent
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`specification and the state of the art at the time of the invention. See ’030 patent at 13:50-62;
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`Rubin, ¶¶ 95-96. Dr. Bovik fails to consider the state of the art at the time of the invention, and
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`instead, merely parrots TikTok’s legal arguments from its brief to put forth purely legal
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`conclusions. Accordingly, TikTok has failed to meet its burden of showing by clear and
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`single display screen.” Id. Here, the claim limitation recites “presenting … via a display server.”
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`Case 6:20-cv-00810-ADA Document 79 Filed 05/07/21 Page 15 of 20
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`convincing evidence that this term is indefinite, and it should be given its plain and ordinary
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`meaning.
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`6.
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`“retrieving user social network information from at least one source external
`to the presented first composite digital media display …”
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`TikTok again argues that this claim term is either indefinite, or a POSITA would have
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`understood its scope with reasonable certainty. And again, its IPR expert had no issues
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`understanding the scope of this limitation, and TikTok did not request that the term be construed
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`in the IPR to add the limitations it suggests here. See Rubin, ¶ 98. Tellingly, TikTok’s proposed
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`alternative construction merely recites the very same words that TikTok contends are indefinite—
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`“retrieving user social network information (see term 5) from a source external to … the
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`presented first composite digital media display (see term 4).” Thus, TikTok’s “alternative”
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`proposal is really once again an argument that the Court should give the term its plain and ordinary
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`meaning—albeit with an added limitation that is not recited in the claim language. TikTok’s expert
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`does not offer any explanation as to the state of the art at the time of the invention or of any terms
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`of art, but instead, simply concludes that the term is indefinite. As this Court should give no weight
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`to Dr. Bovik’s purely legal conclusion, TikTok has failed to meet its burden of proving that this
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`term is indefinite. TikTok’s IPR expert acknowledges based on the state of the art at the time, that
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`a POSITA would have understood the scope of this limitation.5 See Rubin, ¶ 98.
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`TikTok’s proposed “alternative” construction simply adds a limitation that is not recited
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`and would require that in addition to being “external to the presented first composite digital media
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`display,” the at least one source from which the social network information is retrieved must also
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`5 TikTok argues that the ’030 patent specification provides only one location for retrieving user
`attributes. TT Br. at 16. Not so. Figures 5A and 5B describe obtaining social network information
`from, e.g., an Online Community (521), and a Group and Social Dynamics database (518).
`TikTok’s proposed construction confirms that a “stored user profile” is external to the presented
`“first composite digital media display.”
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`Case 6:20-cv-00810-ADA Document 79 Filed 05/07/21 Page 16 of 20
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`be “external to the stored user profile.” TikTok argues that 10Tales somehow agreed to narrow
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`the scope of this claim during prosecution. As explained in § III, supra, however, TikTok has
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`failed to meet its burden to show that the patentee disclaimed any claim scope. TikTok’s proposed
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`construction is once again inconsistent with its IPR petition, in which it did not seek construction
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`of this term. See id. That TikTok itself has interpreted the prosecution history differently in