10Tales, Inc. v. TikTok, Inc.

• Court: District Court, N.D. California
• Decided: August 14, 2023
• Docket: 5:21-cv-03868
• Status: Unknown

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 8 10TALES, INC., Case No. 21-cv-03868-VKD

9 Plaintiff, ORDER CONSTRUING CLAIM 10 v. TERMS OF U.S. PATENT NO. 8,856,030

11 TIKTOK INC., et al., Defendants. 12

13 14 Plaintiff 10Tales, Inc. (“10Tales”) sued defendants TikTok, Inc., TikTok Pte. Ltd., 15 ByteDance Ltd. and ByteDance, Inc. (collectively “TikTok”), alleging infringement of claim 1 of 16 U.S. Patent No. 8,856,030 (“the ’030 patent”), titled “Method, System and Software for 17 Associating Attributes within Digital Media Presentations.” Upon consent of the parties, this 18 action was reassigned to this Court for all purposes, including trial. 28 U.S.C. § 636; Fed. R. Civ. 19 P. 72; Dkt. Nos. 174, 175. 20 The parties have fully briefed their disputes over the construction of terms in claim 1. Dkt. 21 Nos. 167, 177, 182, 185. At the Court’s request, the parties also submitted a complete electronic 22 copy of the prosecution history for the ’030 patent. The Court held a tutorial on July 28, 2022 and 23 a claim construction hearing on July 29, 2022. Dkt. Nos. 189, 190, 193. The Court subsequently 24 granted in part TikTok’s motion for leave to file a claim construction sur-reply. Dkt. No. 196. 25 The parties submitted their supplemental briefs accordingly. Dkt. Nos. 199, 200. Upon 26 consideration of the arguments and evidence presented by the parties at the hearing and in their 27 briefing, the Court now issues the following order regarding the construction of claim terms. 1 I. BACKGROUND 2 The ’030 patent issued on October 7, 2014, and claims priority to a provisional application 3 filed on April 7, 2003. See ’030 patent, cover page. The patent, which contains two claims 4 (independent claim 1 and dependent claim 2), concerns technology for customizing or 5 personalizing content based on user information and relates to a “method, system, and 6 software . . . which allow for customizing and personalizing content based on a combination of a 7 user’s demographics, psychodemographics, cognitive states, emotional states, social placement 8 and group interaction dynamics within an online community, and/or affinity for certain content 9 elements (images, sounds, segments, graphics, video, text, dialog), self-provided narrating content, 10 internal narrative traits preference topology, and expectation level and temporal spacing of assets 11 within the narrative.” Id. at 2:65-3:7. Noting the “advent of the digital era” and “threat[s] [to] 12 advertising,” the ’030 patent describes a need “to attract individuals to content that is personally 13 more relevant and impactful for them and which may contain an advertising message (in the form 14 of product placement), and have them receive that message in full, as opposed to skipping over all 15 or a portion of the message.” Id. at 1:52, 59, 2:3-7; see also id. at 1:58-61. The patent further 16 notes an additional need “to have the ability to understand the individual’s likes and dislikes or 17 current mood in order to adapt the message appropriately for the individual at the time that they 18 are receiving [content].” Id. at 2:8-11. 19 The claimed invention purports to provide an enriched user experience and more powerful 20 media for content creators, such as advertisers and artists, through content that has greater impact 21 on users. See ’030 patent at 3:63-4:14. According to 10Tales, the ’030 patent claims 22 improvements over the state of the art by addressing how technology can be used to understand an 23 individual’s likes or dislikes or mood in order to more appropriately adapt content for the 24 individual. See Dkt. No. 167 at 3. Among the stated advantages of the claimed invention is that 25 “it allows advertising to be inserted in subtle ways and presented in a context in which users may 26 be able to fully engulf themselves into the lifestyle being positioned and portrayed by the brand,” 27 and users “are much more likely to be receptive to the message presented, and less likely to skip 1 The parties disagree on the construction of ten terms from claim 1 of the ’030 patent. 2 Claim 1 of the ’030 patent recites:

3 1. A system for associating user attributes with digital media asset attributes and creating a user specific composite digital media 4 display, the system comprising:

5 a) a server; 6 b) a computer-readable storage medium operably connected;

7 c) wherein the computer-readable storage medium contains one or more programming instructions for performing a method of 8 associating user attributes with digital media asset attributes and creating a user specific composite digital media display, the method 9 comprising:

10 identifying a first set of digital media assets stored on the computer- readable storage medium, 11 creating, from the first set of digital media assets, a first composite 12 digital media display,

13 presenting to the user via a display server, the first composite digital media display; 14 retrieving user social network information from at least one source 15 external to the presented first composite digital media display, wherein the user social network information contains one or more 16 user attributes;

17 selecting, based on the user attributes in the social network information, a second set of digital media assets, wherein the second 18 set of digital media assets is associated with one or more user attributes found in the user social network information; 19 monitoring the first composite digital media display for the presence 20 of a trigger, wherein the trigger indicates a personalization opportunity in the first set of digital media assets; 21 performing a rule based substitution of one or more of the digital 22 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 23 assets to create a user specific set of digital media assets;

24 creating, from the user specific digital media assets, a user specific composite digital media display; and 25 presenting to the user via the display server, the second composite 26 digital media display. 27 ’030 patent at 20:62-22:15. 1 10Tales proposes. TikTok contends that seven of the ten disputed claim terms are indefinite, see 2 35 U.S.C. § 112 ¶ 2,1 and that claim 1 fails to inform with reasonable certainty those skilled in the 3 art about the scope of the claimed invention. As for the remaining three terms, TikTok argues that 4 each term should be limited to a “narrative.” 5 In their claim construction briefing, the parties rely on the declarations of their respective 6 experts: Dr. Aviel D. Rubin (10Tales) and Dr. Alan Bovik (TikTok). See Dkt. Nos. 167-4, 185-3, 7 185-13. The parties also refer to proceedings before the Patent Trial and Appeal Board (“PTAB”) 8 concerning TikTok’s petition for inter partes review (“IPR”) of the ’030 patent, including 9 statements made in those proceedings by TikTok’s expert, Dr. Kevin Almeroth. See, e.g., Dkt. 10 Nos. 167-5, 167-7, 185-15. 11 Following the claim construction hearing, the Court permitted the parties to file 12 supplemental briefing on aspects of their dispute over the term “user social network information.” 13 Dkt. No. 196. The parties filed their respective supplemental briefs in September 2022. See Dkt. 14 Nos. 199, 200. TikTok subsequently provided notice of the PTAB’s denial of TikTok’s request 15 for rehearing in the IPR proceedings in December 2022. Dkt. No. 203. 16 II. LEGAL STANDARD 17 Claim construction is a question of law. Teva Pharmaceuticals, Inc. v. Sandoz, Inc., 574 18 U.S. 318, 325-327 (2015); Markman v. Westview Instruments, Inc., 517 U.S. 370, 387 (1996). “It 19 is a bedrock principle of patent law that the claims of a patent define the invention to which the 20 patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 21 2005) (en banc) (internal quotations and citation omitted). “Proper claim construction requires an 22 examination of the claim language, the written description, and, if relevant, the prosecution 23 history.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). “The 24 appropriate starting point, however, is always with the language of the asserted claim itself.” Id. 25 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. 112-29, 125 Stat. 284, enacted in 2011, 26 amended several parts of the Patent Act, including 35 U.S.C. § 112. The application resulting in the ’030 patent was filed before the AIA took effect. Although the nature of the amendments to 27 § 112 is not material to the resolution of issues presented in the parties’ claim construction briefs, 1 Claim terms “are generally given their ordinary and customary meaning,” which is “the 2 meaning that the term would have to a person of ordinary skill in the art in question at the time of 3 the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 4 1312, 1313 (internal quotations and citations omitted). Claims must be read in view of the patent 5 specification, which “is always highly relevant to the claim construction analysis” and “the single 6 best guide to the meaning of a disputed term.” Id. at 1315 (internal quotations and citation 7 omitted). The aim of claim construction is to “capture the scope of the actual invention that is 8 disclosed, described, and patented.” Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d 1320, 1323 9 (Fed. Cir. 2015) (internal quotation and citation omitted); accord Phillips, 415 F.3d at 1316. The 10 written description, prosecution history and the claims themselves form the intrinsic record that 11 provides substantial guidance as to the meaning of particular claim terms. Phillips, 415 F.3d at 12 1313, 1315-17. 13 Courts may also rely on “extrinsic evidence, which ‘consists of all evidence external to the 14 patent and prosecution history, including expert and inventor testimony, dictionaries, and learned 15 treatises.’” Id. at 1317 (quoting Markman, 52 F.3d at 980). Such evidence may be considered “if 16 the court deems it helpful in determining ‘the true meaning of language used in the patent 17 claims.’” Id. at 1318 (quoting Markman, 52 F.3d at 980). However, extrinsic evidence “is less 18 significant than the intrinsic record in determining the legally operative meaning of claim 19 language,” and cannot “be used to change the meaning of claims in derogation of the indisputable 20 public records consisting of the claims, the specification and the prosecution history[.]” Id. at 21 1317, 1319 (internal quotations and citation omitted). “In sum, extrinsic evidence may be useful 22 to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless 23 considered in the context of the intrinsic evidence.” Id. at 1319. 24 “[A] patent is invalid for indefiniteness if its claims, read in light of the specification 25 delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those 26 skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 27 U.S. 898, 901 (2014); see also 35 U.S.C. § 112 ¶ 2 (“The specification shall conclude with one or 1 applicant regards as his invention.”). To meet this standard, “[t]he claims, when read in light of 2 the specification and the prosecution history, must provide objective boundaries for those of skill 3 in the art.” Interval Licensing, LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). General 4 principles of claim construction apply to allegations of indefiniteness. See Biosig Instruments, 5 Inc. v. Nautilus, Inc., 783 F.3d 1374, 1377-78 (Fed. Cir. 2015); see also Nautilus, Inc., 572 U.S. at 6 908 (definiteness is assessed based on patent specification and prosecution history, and measured 7 from viewpoint of person skilled in the art). “The inquiry into how a person of ordinary skill in 8 the art understands a claim term provides an objective baseline from which to begin claim 9 interpretation.” Phillips, 415 F.3d at 1313. 10 III. DISCUSSION 11 A. Level of Ordinary Skill in the Art 12 The Court first addresses the level of ordinary skill in the relevant art(s) at the time of the 13 claimed invention, i.e., April 2003. See Phillips, 415 F.3d at 1312-1313. Here, 10Tales relies on 14 Dr. Rubin’s opinions (see Dkt. No. 167-4), while TikTok relies on those of Dr. Bovik (see Dkt. 15 No. 185-3). Although Drs. Rubin and Bovik disagree about whether the relevant field is 16 “computer networking” (see Dkt. No. 167-4 ¶ 35) or “digital media creation” (see Dkt. No. 185-3 17 ¶ 45), neither 10Tales nor TikTok contends that resolution of this dispute is necessary for purposes 18 of claim construction. See Dkt. No. 167-4 ¶ 36; Dkt. No. 185-3 ¶ 44. The Court adopts Dr. 19 Bovik’s proposed standard for the level of ordinary skill in the art, with which Dr. Rubin does not 20 disagree:

21 at least a bachelor’s degree, or an equivalent degree, in electrical engineering, computer science, or a related field, and 2-3 years’ 22 experience researching, designing, developing, and/or testing systems for digital media creation and related firmware and 23 software, or equivalent experience. Someone with less formal education but more experience or more formal education but less 24 experience could also have qualified as a [person of ordinary skill in the art]. 25 26 Dkt. No. 185-3 ¶ 42; see also Dkt. No. 167-4 ¶ 36.2 27 1 B. Disputed Terms 2 The parties dispute ten terms in claim 1 of the ’030 patent, which are addressed separately 3 below. 4 1. “the system comprising . . . a computer-readable storage medium . . . wherein the computer-readable storage medium contains one or more 5 programming instructions for performing a method . . . the method comprising . . .” 6 7 10Tales’s Proposed Construction TikTok’s Proposed Construction 8 No construction necessary Indefinite 9 Plain and ordinary meaning 10 10Tales argues that this term requires no construction and should be afforded its ordinary 11 meaning, i.e., “a system that includes one or more servers and memory,” which contains 12 programming instructions that, when executed, carry out the steps of the method recited in the 13 claim. See Dkt. No. 167 at 10. 14 TikTok argues that claim 1 is indefinite under § 112 ¶ 2 because it is directed to two 15 separate classes of patentable subject matter, i.e., a system and a method. See Dkt. No. 185 at 7. 16 Citing IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) and Rembrandt 17 Data Technologies, LP v. AOL, LLC, 641 F.3d 1331 (Fed. Cir. 2011), TikTok also contends that 18 claim 1 is indefinite because it “requires the user to use the system, and is unclear whether 19 infringement requires making the system or using the system[.]” See Dkt. No. 185 at 7-9. The 20 Court disagrees. 21 “A single patent may include claims directed to one or more of the classes of patentable 22 subject matter, but no single claim may cover more than one subject matter class.” 23 Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367, 1374 (Fed. Cir. 24 2008) (citing IPXL, 430 F.3d at 1384). A single claim that covers “‘both an apparatus and a 25 method of use of that apparatus’” is indefinite “because ‘it is unclear whether infringement . . . 26 occurs when one creates a[n infringing] system, or whether infringement occurs when the user 27 actually uses [the system in an infringing manner].’” UltimatePointer, L.L.C. v. Nintendo Co., 1 ‘apparatus claims are not necessarily indefinite for using functional language.’” Id. (quoting 2 Microprocessor Enhancement Corp., 520 F.3d at 1375); see also MasterMine Software, Inc. v. 3 Microsoft Corp., 874 F.3d 1307, 1313 (Fed. Cir. 2017) (same). “If an apparatus claim ‘is clearly 4 limited to a[n apparatus] possessing the recited structure and capable of performing the recited 5 functions,’ then the claim is not invalid as indefinite.” UltimatePointer, LLC, 816 F.3d at 826 6 (quoting Microprocessor Enhancement Corp., 520 F.3d at 1375). 7 The claim at issue in IPXL was problematic because it purported to claim a system (i.e., 8 one that could be infringed independent of any “use” of the system), but contained an element that 9 required user activity. Thus, the Federal Circuit found the claim invalid because it was unclear 10 whether infringement “occurs when one creates a system,” or “when the user actually uses [the 11 system].” See IPXL, 430 F.3d at 1383-84. Similarly, in Rembrandt, the claim at issue was found 12 invalid because it recited several apparatus elements of a “data transmitting device” (i.e., “buffer 13 means,” “fractional encoding means,” “second buffer means,” and “trellis encoding means”), as 14 well as one element concerning a method for using the claimed device (i.e., “transmitting the 15 trellis encoded frames”). Rembrandt, 641 F.3d at 1339-40. 16 Unlike the claims in IPXL and Rembrandt, claim 1 of the ’030 patent recites a system (i.e., 17 “a server” and “a computer-readable storage medium operably connected”) modified by functional 18 terms describing the system’s capabilities. Contrary to TikTok’s contention, the claimed system 19 does not require a user to do anything. Rather, the claimed “computer-readable medium” must 20 contain “programming instructions” capable of performing the steps of the method described in 21 the claim (i.e., “identifying,” “creating,” “presenting,” “retrieving,” “selecting,” “monitoring” and 22 “performing”). See ’030 patent at 20:62-22:15. Such system claims with “permissible functional 23 language used to describe the capabilities [of the claimed system],” rather than the activities of the 24 user, are not invalid for indefiniteness. MasterMine Software, Inc., 874 F.3d at 1315 (claim not 25 invalid for indefiniteness where verbs in the claim “represent permissible functional language used 26 to describe capabilities of the ‘reporting module’”); see also UltimatePointer, L.L.C., 816 F.3d at 27 827 (claim not invalid for indefiniteness because “the ‘generating data’ limitation reflects the 1 describes a method (not a system) as a preferred embodiment does not render claim 1 indefinite. 2 See Phillips, 415 F.3d at 1323 (“For instance, although the specification often describes very 3 specific embodiments of the invention, we have repeatedly warned against confining the claims to 4 those embodiments.”). 5 Accordingly, without adopting or endorsing 10Tales’s proposed “ordinary meaning” of the 6 term, the Court concludes that this claim term requires no construction.3 7 2. “creating . . . . composite digital media display” 8 Claim 1 of the ’030 patent contains two phrases pertaining to the creation of a “composite 9 digital media display.” See ’030 patent at 21:9-10, 22:12-13. The parties present the same 10 arguments regarding the construction of both phrases. Accordingly, the Court addresses them 11 together here. 12 “creating, from the first set of digital media assets, a first composite digital media display” 13 14 10Tales’s Proposed Construction TikTok’s Proposed Construction 15 No construction necessary “combining two or more digital media assets from the first set of digital media assets to 16 Plain and ordinary meaning create a first composite digital media display with a narrative” 17 18 “creating, from the user specific digital media assets, a user specific composite digital media display” 19 20 10Tales’s Proposed Construction TikTok’s Proposed Construction 21 No construction necessary “combining two or more digital media assets from the user specific digital media assets to Plain and ordinary meaning 22 create a user specific composite digital media display without destroying the flow of the 23 narrative” 24 10Tales argues that these terms require no construction and should be afforded their 25 ordinary meaning. TikTok argues that the “composite digital media display” must be construed to 26

27 3 There was some discussion at the claim construction hearing about whether claim 1 “works.” 1 incorporate the requirement of a “narrative.” 2 It is not readily apparent what ordinary meaning a person of skill in the art would attribute 3 to this claim language. Indeed, as is evident from the briefing and the arguments presented at the 4 hearing, the parties have competing interpretations of “composite digital media display,” and their 5 experts, Drs. Bovik and Rubin, appear to agree that it is not a term of art. See Dkt. No. 185-3 6 ¶ 97; Dkt. No. 185-8 at 11:18-23. 10Tales suggests that a “composite” is merely a “collection of 7 digital media assets that will be presented to a user.” See Dkt. No. 167 at 11. TikTok says that the 8 claimed “composite” is the result of combining “two or more digital media assets” to create a 9 display in the form of a “narrative.” See Dkt. No. 185 at 10-12. TikTok further contends that 10 “creating” a “composite” necessarily means “combining two or more digital assets.” Id. To 11 resolve this dispute, the Court looks to “those sources available to the public that show what a 12 person of skill in the art would have understood disputed claim language to mean,” including “the 13 words of the claims themselves, the remainder of the specification, the prosecution history, and 14 extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and 15 the state of the art.” Phillips, 415 F.3d at 1314 (internal quotations and citation omitted). 16 TikTok correctly notes that the specification does not refer to “digital media display,” 17 “composite digital media display,” or “composite.” These words appear only in the claims. 18 TikTok is also correct that the specification repeatedly refers to descriptions of “digital media 19 narrative.” See ’030 patent at 1:12-14, 1:66-2:2, 2:12-61, 3:7-11, 4:8-10; 4:24-28, 4:42-49, 5:19- 20 22, 5:26-27, 5:39-40, 6:23-26, 8:63-67, 12:43-45, 13:22-27, 13:66-67, 16:59-62, 19:4-9, 19:31-33, 21 19:59-62, 20:1-3; see also Figs. 2, 3, 5A and 10. TikTok contends that the term “composite digital 22 media display” therefore must be construed to make clear that the claimed invention requires a 23 “digital media narrative.” See Dkt. No. 185 at 11. However, there is no question that claim 1 does 24 not include the word “narrative.” TikTok has not identified any discussion in the remainder of the 25 specification that would justify adding “narrative” as a requirement for the claim terms at issue. 26 See Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1359 (Fed. Cir. 2016) (“[W]e have 27 repeatedly held that it is ‘not enough that the only embodiments, or all of the embodiments, 1 Sony Computer Entm’t Am., LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012); see also GE Lighting 2 Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“[I]t is improper to read 3 limitations from a preferred embodiment described in the specification—even if it is the only 4 embodiment—into the claims absent a clear indication in the intrinsic record that the patentee 5 intended the claims to be so limited.”) (internal quotations and citation omitted); Phillips, 415 F.3d 6 at 1323 (“In particular, we have expressly rejected the contention that if a patent describes only a 7 single embodiment, the claims of the patent must be construed as being limited to that 8 embodiment.”). 9 TikTok maintains that during the prosecution of the ’030 patent, the applicant 10 distinguished these claims over U.S. Patent No. 6,357,042 (“Srinivasan”) (see Dkt. No. 185-4), 11 and in doing so, limited the scope of claim 1 to “personalizing a digital media narrative in a 12 manner that does not destroy the flow of the ‘narrative.’” See Dkt. No. 185 at 11. TikTok 13 contends that the doctrine of prosecution disclaimer therefore precludes 10Tales from now 14 asserting an interpretation of claim 1 “that would allow destroying the flow of the narrative[.]” 15 See id. “‘The doctrine of prosecution disclaimer . . . preclud[es] patentees from recapturing 16 through claim interpretation specific meanings disclaimed during prosecution.’” Mass. Inst. of 17 Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016) (quoting Omega Eng’g, Inc. v. 18 Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003)). For prosecution disclaimer to apply, “the 19 disavowal must be both clear and unmistakable.” Id. (internal quotations and citation omitted). 20 “Where the alleged disavowal is ambiguous, or even amenable to multiple reasonable 21 interpretations,” the Federal Circuit has “declined to find prosecution disclaimer.” Id. (internal 22 quotations and citation omitted). Thus, the “‘party seeking to invoke prosecution history 23 disclaimer bears the burden of proving the existence of a ‘clear and unmistakable’ disclaimer that 24 would have been evident to one skilled in the art.’” Id. (quoting Trivascular, Inc. v. Samuels, 812 25 F.3d 1056, 1063-64 (Fed. Cir. 2016)). 26 During the prosecution of the ’030 patent, the patent examiner rejected claims 1-14 under 27 35 U.S.C. § 102(b) as anticipated by Srinivasan, noting that Srinivasan teaches “a method and 1 (10Tales0000402). On amendment, the applicant abandoned those claims, and presented new 2 claims 15 and 16 (now claims 1 and 2 of the ’030 patent). See id. at ECF 145-146 3 (10Tales0000419-420). In distinguishing those new claims over Srinivasan, the prosecuting 4 attorney argued, among other things, that Srinivasan “teaches the selection of a particular analog 5 video stream at a branch point” (e.g., stopping a main video stream to broadcast an advertisement, 6 and continuing with the main video when the ad is finished). See id. at ECF 142, 145 7 (10Tales0000416, 419); see also Dkt. No. 185-4 at 32:57-58. TikTok notes that in distinguishing 8 over Srinivasan, the prosecuting attorney stated that the applicant’s claimed substitution of digital 9 media assets “is performed in order to allow parts of the media display (e.g., background, timing, 10 audio) to be varied in a way that does not destroy the flow.” See id. at ECF 142 11 (10Tales0000416); Dkt. No. 185 at 11 & n.6. That statement merely distinguishes over Srinivasan 12 regarding ways in which a “flow” may be interrupted; it is not a clear or unambiguous disclaimer 13 that the ’030 patent’s claimed “composite digital media display” must be a “narrative.” TikTok 14 has not met the high bar required to establish prosecution disclaimer. 15 Nor has TikTok identified a basis to substitute “combining” for “creating.” However, the 16 Court agrees that a “composite” requires a combination, as opposed to merely a collection or 17 listing of digital media assets.4 Such an interpretation of “composite” is supported by the 18 specification, which describes combining elements to create digital media assets. See ’030 patent 19 Fig. 2; 8:58-62; see also id. Fig. 3; 9:24-26. That interpretation is also consistent with Dr. Bovik’s 20 declaration in which he opines that “the plain and ordinary meaning of the term ‘composite’ 21 requires something made up of different parts or distinct components.” Dkt. No. 185-3 ¶ 108. Dr. 22 Rubin offers no opinion to the contrary. 23 Accordingly, the Court construes the term “creating, from the first set of digital media 24

25 4 10Tales argues that TikTok’s proposed construction requiring the first composite digital media display to contain two or more digital media assets would make dependent claim 2 broader than 26 independent claim 1. Specifically, 10Tales emphasizes that claim 2 provides that the “first set of digital media assets includes one or more of a foreground image, a background image, or audio.” 27 See Dkt. No. 167 at 13 n.4 (quoting ’030 patent at 22:16-18). 10Tales’s argument fails to 1 assets, a first composite digital media display” to mean creating, from the first set of digital media 2 assets, a first composite digital media display that combines two or more digital media assets. 3 The Court construes the term “creating, from the user specific digital media assets, a user specific 4 composite digital media display” to mean creating, from the user specific digital media assets, a 5 user specific composite digital media display that combines two or more digital media assets. 6 3. “display server” 7 The parties dispute the meaning of “display server”: 8 10Tales’s Proposed Construction TikTok’s Proposed Construction 9 Server-side software that provides digital Indefinite 10 media content to a client 11 They also dispute the meaning of the term “presenting to the user via [a/the] display 12 server,” which appears in two places in claim 1: 13 10Tales’s Proposed Construction TikTok’s Proposed Construction 14 15 A step carried out by software that begins Indefinite based on “display server”—the transmitting digital media assets to a user phrase “presenting to the user” means 16 “showing to the user” 17 TikTok contends that “display server” is indefinite because it was not a term of art at the 18 time of the claimed invention, and the term is not defined in the intrinsic or extrinsic evidence. 19 Additionally, TikTok argues that it is not clear where the “display server” is located, what it does, 20 or whether it is hardware or software. Alternatively, TikTok argues that if the Court disagrees that 21 “display server” is indefinite, then the term “presenting to the user” should be construed to mean 22 “showing to the user.” Dkt. No. 185 at 12-13. 23 10Tales does not dispute that “display server” was not a term of art at the time of the 24 claimed invention. See Dkt. No. 167 at 14. 10Tales nonetheless argues that a person of ordinary 25 skill in the art would have understood the term “display server” to refer to software running on a 26 server in a client-server model, and that the actual display of images, video, text and/or audio is 27 1 carried out by client-side software running on a user’s device.5 10Tales further contends that 2 “presenting” is not synonymous with “showing.” Id. at 14-15. 3 A claim term is not indefinite simply because the claim language does not appear ipsis 4 verbis in the specification. Rather, claim terms are to be given their ordinary and customary 5 meaning in view of the intrinsic evidence and, where appropriate, the extrinsic evidence, as 6 described in Phillips. See Phillips, 415 F.3d at 1312, 1313; see also Unwired Planet, LLC, 829 7 F.3d at 1358 (“Claim terms are generally given their ordinary and customary meaning as 8 understood by a person of ordinary skill in the art when read in the context of the specification and 9 prosecution history.”) (citing Thorner, 669 F.3d at 1365); see also Williamson v. Citrix Online, 10 LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015) (“[I]t is the claims, not the written description, which 11 define the scope of the patent right.”) (internal quotations and citation omitted). And, as discussed 12 above, the standard for determining indefiniteness is “reasonable certainty,” i.e., “a patent is 13 invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and 14 the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the 15 scope of the invention.” Nautilus, Inc., 572 U.S. at 901. 16 The absence of any reference to the term “display server” in the specification or any other 17 intrinsic evidence makes construction of this term challenging. But while the specification does 18 not expressly refer to “display server,” it does contain several descriptions of a “server” and its 19 functions and capabilities. For example, the conceptual diagram in Figure 5A shows a server 20 (590) providing digital audio, digital video, background images, foreground images, text, and 21 branding graphics to the user (501). See ’030 patent, Fig. 5A. The specification describes a 22 “server” (590), as shown in Figure 5A, that “may develop personalized digital media asset 212 23 from content 531 and the digital asset repository 541.” Id. at 11:65-67, 12:4-6. In this 24 embodiment “a user 501 receives the assets that comprise the digital media asset 212 (Fig. 2)[.]” 25 5 10Tales says it made a “scrivener’s error” in its proposed construction (see Dkt. No. 149), and 26 mistakenly said that “display server” is “server side software that provides digital media content to a server” rather than “to a client.” See Dkt. No. 167 at 13 n.5. The Court sees no reason to 27 belabor this point, as the error is obvious in view of Dr. Rubin’s declaration (see Dkt. No. 167-4 1 Id. at 11:67-12:2. “In an alternate embodiment, the modified content is not stored and the 2 personalized digital media asset is presented to user 501 via the server 590.” Id. at 12:7-10. In 3 describing an embodiment of the claimed invention, the specification also discusses “a central 4 server” that “enables the user to receive enhanced digital medial assets and various narrative 5 experiences . . . .” Id. at 4:42-53. 6 Drs. Rubin and Bovik agree that servers were well known in the art at the time of claimed 7 invention . Indeed, both state that client-server technology was well known at that time. See 8 generally Dkt. No. 167-4 ¶¶ 39-41 (discussing state of the art and “client/server model”); Dkt. No. 9 185-3 ¶ 124 (“As of 2003, client-server technology was well established and known to a [person 10 of ordinary skill in the art].”). As described by Dr. Rubin, “[a] typical workflow within the 11 client/server model involves a client making a request to a server; a server receives the request and 12 issues a response for that request. The client relies on the resources included in server responses, 13 which includes information, files, or even allocation of processing power.” Dkt. No. 167-4 ¶ 40. 14 “A specific example would be that an email client on the user machine works as a client, while a 15 mail server from a public email service is a server. In a network with client-server architecture, a 16 single server is usually capable of handling multiple requests from multiple clients.” Id. Dr. 17 Bovik provides no opinion or evidence to the contrary. 18 Drs. Rubin and Bovik appear to disagree about whether “server” generally refers to 19 hardware, software, or both. Dr. Bovik opines that a person of ordinary skill in the art “would 20 have recognized and understood the term ‘server’ to generally refer to hardware, i.e., a large 21 powerful networked computer that provides resources and services to other devices.” Dkt. No. 22 185-3 ¶ 124. However, at least one of his cited definitions from the Microsoft Computer 23 Dictionary, published in 2002, indicates that “server” may refer to either hardware or software, 24 depending on the context. See Dkt. No. 185-12 at ECF 19 (TT0007102) (defining “server” “[o]n a 25 local area network” as “a computer,” and “[o]n the Internet or other network” as “a computer or 26 program”). That definition is consistent with Dr. Rubin’s declaration in which he opines that 27 “‘[s]erver’ is a context dependent term that can refer to hardware, software or both.” Dkt. No. 1 “server” to hardware only or software only. 2 While TikTok argues that the claim language appears to distinguish “display server” from 3 “a server” recited earlier in claim 1, that observation does little to illuminate the parties’ dispute 4 regarding the proper construction of “display server.”6 The parties do not ask the Court to 5 construe “a server,” and “[a]s a general rule, the words ‘a’ or ‘an’ in a patent claim carry the 6 meaning of ‘one or more.’” 01 Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 7 (Fed. Cir. 2012) (quotations and citation omitted); see also Baldwin Graphic Sys., Inc. v. Siebert, 8 Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (“That ‘a’ or ‘an’ can mean ‘one or more’ is best 9 described as a rule, rather than merely as a presumption or even a convention.”). “‘The exceptions 10 to this rule are extremely limited: a patentee must evince a clear intent to limit ‘a’ or ‘an’ to 11 ‘one.’” 01 Communique Lab., Inc., 687 F.3d at 1297 (quoting Baldwin Graphic Sys., Inc., 512 12 F.3d at 1342). “The subsequent use of definite articles ‘the’ or ‘said’ in a claim to refer back to 13 the same claim term does not change the general plural rule, but simply reinvokes that non- 14 singular meaning.” Id. (quoting Baldwin Graphic Sys., Inc., 512 F.3d at 1342). “An exception to 15 the general rule arises only ‘where the language of the claims themselves, the specification, or the 16 prosecution history necessitate a departure from the rule.’” Id. at 1297 (quoting Baldwin Graphic 17 Sys., Inc., 512 F.3d at 1342-43). Nothing in the claim language, specification, or prosecution 18 history compels the conclusion that the applicant departed from the general rule for the article “a” 19 used with “server” or “display server.” 20 Based on the foregoing, the Court concludes that “display server” is a “server” in a 21 conventional server-client model as understood by a person of ordinary skill in the art at the time 22 of the invention, such that “server” can be either a computer program, a physical computer capable 23 of running a computer program, or a physical computer running a computer program. Further, in 24 view of the disclosure in the specification regarding the functions and capabilities of the server 25 embodiment described with reference to Figure 5A, the “display server” in claim 1 would be 26

27 6 TikTok argues that there is no support in the specification for more than one “server.” See Dkt. 1 understood, with reasonable certainty, as a server used in presenting the first and second 2 composite digital media displays to the user. Although TikTok maintains that “presenting to the 3 user” should be construed as “showing to the user,” the Court finds no basis to limit the claim to 4 any particular mode of presenting, such as visual presentation. The claim requires only that the 5 “presenting” happen “via” a “display server,” and the specification uses similar language to 6 describe an embodiment. See ’030 patent at 21:11, 22:14; see also id. at 12:7-10. Thus, 7 “presenting” simply describes part of the typical interaction between a server and a client in a 8 conventional client-server model that was well-established at the time of the clamed invention. 9 See, e.g., Dkt. No. 167-4 ¶ 40 (“A typical workflow within the client/server model involves a 10 client making a request to a server; a server receives the request and issues a response for that 11 request. The client relies on the resources included in server responses, which includes 12 information, files, or even allocation of processing power.”); Dkt. No. 185-3 ¶ 124 (“As of 2003, 13 client-server technology was well established and known to a POSITA.”). 14 4. “user social network information” 15 The parties dispute the meaning of “user social network information”: 16 10Tales’s Proposed Construction TikTok’s Proposed Construction 17 Information relating to a particular user’s Indefinite 18 interaction within a networked community 19 They also dispute the term “retrieving user social network information from at least 20 one source external to the presented first composite digital media display . . .”: 21 10Tales’s Proposed Construction TikTok’s Proposed Construction 22 23 A step carried out by software that retrieves Indefinite social network information associated with a 24 user from a source other than the first composite digital media display, where the 25 social network information includes one or more user attributes, which include 26 information relating to a particular user of the 27 system’s interaction within a networked community, e.g., a user affinity or relationship 1 10Tales acknowledges that “user social network information” requires construction, and 2 argues that the correct interpretation is captured by its proposed construction. TikTok contends 3 that “user social network information” is indefinite. The parties’ dispute centers on two issues: 4 (1) the nature and scope of the “information” within the scope of the claim, and (2) the source of 5 that information. 6 As with other disputed claim terms, the term “user social network information” appears 7 only in the claims, and does not appear anywhere in the specification. Additionally, “user social 8 network information” was not used in the original claims filed with 10Tales’s non-provisional 9 application; it was added by amendment for the first time on November 25, 2009. See Dkt. No. 10 167-3 at ECF 141, 145 (10Tales0000769, 773). No party contends that “user social network 11 information” had a well-defined meaning known to those of skill in the art at the time of the 12 claimed invention in 2003. 13 The claim language itself is not sufficiently clear on its face to provide guidance to a 14 person of ordinary skill in the art as to the meaning of “user social network information.” The rest 15 of the claim limitation provides some helpful context to the extent it indicates that “user social 16 network information” is information that can be “retriev[ed]” from a source “external to the 17 presented first composite digital media display” and contains “one or more user attributes.”7 See 18 ’030 patent at 21:13-16. 19 TikTok’s first argument, that “user social network information” is an indefinite term of 20 measure, is not persuasive. That the attributes that comprise a user’s profile may be subjective or 21 involve measurement, does not mean that the claim is properly characterized that way. The term 22 “user social network information” is not like “unobtrusive manner” (a “purely subjective” term of 23 degree), which was found indefinite in Interval Licensing, LLC, 766 F.3d at 1371. Nor is it like 24 “high quality of service connection” (also a subjective term of degree), which was nevertheless 25 found to have scope adequately defined by the specification in Iridescent Networks, Inc. v. AT&T 26 Mobility, LLC, 933 F.3d 1345, 1348 (Fed. Cir. 2019). The term is also not like the “greater than 27 1 or equal to” term of measure relating to ethylene polymer compositions at issue in Dow Chem. Co. 2 v. Nova Chems. Corp. (Canada), 803 F.3d 620, 631-35 (Fed. Cir. 2015). TikTok nonetheless 3 argues that there is some definitional “uncertainty” regarding “user social network information,” 4 see Interval Licensing, LLC, 766 F.3d at 1374, and correctly notes that it is not sufficient that a 5 court can ascribe some meaning to a patent’s claims, id. at 1371 (citing Nautilus, 572 U.S. at 911; 6 Halliburton Energy Servs., Inc. v. M–I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008)). Under 7 Nautilus, the key determination is whether the claim, read in light of the specification and 8 prosecution history, provides “objective boundaries” that define the scope of the claim with 9 “reasonable certainty.” See Interval Licensing, LLC, 766 F.3d at 1371 (citing Nautilus, 572 U.S. 10 at 911 & n.8); see also Nautilus, 572 U.S. at 901. 11 Following Phillips, the Court looks to the specification and then to the prosecution history 12 of the ’030 patent, in addition to the claim language itself. See Phillips, 415 F.3d at 1313, 1315- 13 17. For the reasons discussed below, the intrinsic evidence provides sufficient guidance to permit 14 a person of ordinary skill in the art to understand the scope of the term “user social network 15 information” with reasonable certainty. 16 Although the ’030 patent specification does not use the term “social network,” it does 17 provide some guidance regarding how that term would be understood by a person of skill in the 18 art. See, e.g., Ironburg Inventions Ltd. v. Valve Corp., 64 F.4th 1274, 1288 (Fed. Cir. 2023) (term 19 “elongate member” not indefinite, even though specification did not use the term “elongate 20 member” but did use the term “elongate shape”); Biosig Instruments, Inc., 783 F.3d at 1382 (the 21 term “spaced relationship” is not indefinite, even though the specification did not define that 22 term). For example, the ’030 patent specification states that a user may participate in “an online 23 community” that provides the “user with the ability to interact with other users.” ’030 patent at 24 12:11-13; Fig. 5A. In one embodiment, the “online community” includes the ability to share an 25 experience, “thus creating new affinities for the content” of that experience. Id. at 12:13-16. 26 Notably, the specification discloses that in one embodiment, “[t]he user 501 may participate in an 27 online community system 521 in which the server 590 sends the user ID 520 to the online 1 status 517.” Id. at 12:22-26. Alternatively, Figure 5B shows databases that can be used in the 2 “creation of the personalized digital media asset.” Id. at 12:48-49. The databases include “a 3 group and social dynamics database” that “may permit the user to interact with other users of the 4 digital media asset to determine the dynamics between that user and the group.” Id. at 12:47-58; 5 Fig. 5B. Another part of the specification discusses “exemplary social elements and their 6 components,” which include: “the groups 802 that the user is affiliated with”, “a social perception 7 identification framework 804, such as a user’s on-line personality or alter ego,” “social personas 8 808, which are how people perceive that user,” “a user’s social affinities 806,” “the level of 9 involvement 810 that the user has with other individuals,” “the relationship 812 the user has with 10 other individuals, the modes of interaction 814 or how the user communicates and interacts with 11 other individuals,” “the ability of the user to be apt or, alternatively inept in performing functions, 12 such as social interaction 816,” “the attitudes 818 the user has,” and “internal narrative perception 13 identification frameworks 820.” Id. at 13:50-62; see also Fig. 8 (using the term “social” as a label 14 in different parts of illustration of “exemplary components of the social element”). 15 Further guidance regarding “social network” is found in the statements made during the 16 prosecution of the ’030 patent, including those made by the applicant and the examiner when new 17 claims 15 and 16 (which became claims 1 and 2) were added. See Phillips, 415 F.3d at 1317 18 (prosecution history “can often inform the meaning of the claim language . . ..”); see also 19 Iridescent Networks, Inc., 933 F.3d at 1352-53 (“‘[a]ny explanation, elaboration, or qualification 20 presented by the inventor during patent examination is relevant, for the role of claim construction 21 is to ‘capture the scope of the actual invention’ that is disclosed, described, and patented.’”) 22 (quoting Fenner Invs., Ltd., 778 F.3d at 1323). The prosecution history reveals that the applicant 23 added these claims after the examiner rejected the prior claims as anticipated by Srinivasan. See 24 Dkt. No. 167-3 at ECF 141-146 (10Tales0000769-774). The applicant explained that “newly 25 presented claim 15 is not anticipated by Srinivasan under 35 U.S.C. §102(b) because, among other 26 things, Srinivasan does not utilize social network information obtained from a source external to 27 the presentation (e.g. video display of Srinivasan),” citing as support paragraph 0089 in the 1 No. 167-3 at ECF 29, 142 (10Tales0000657, 770). In the notice of allowability issued on June 4, 2 2014, the examiner relied on the “retrieving” limitation and the inventor’s explanation of it to 3 distinguish the claimed invention from the prior art. Although the examiner did not expressly 4 discuss the meaning of “social network” or “user social network information,” his statement of 5 reasons for allowance indicates that he understood the patentee’s use of “social network,” and 6 viewed “a plurality of bulletin boards” described in Herz as a “social network” and a “television 7 electronic program guide” as “not a social network”: 8 4. The following is an examiner’s statement of reasons for allowance: the closest prior art, Srinivasan et al., does not teach or 9 suggest, retrieving user social network information from at least one source external to the presented first composite digital 10 media display, wherein the user social network information contains one or more user attributes. Herz (US 7,483,871 B2, 11 claims 17 and 21) teaches this limitation,[] but the prior art does not teach or suggest adding this teaching from Herz to the teachings of 12 Srinivasan et al. Srinivasan et al. gets user attribute information by asking the users. The prior art does not teach or suggest that the 13 benefits of going to social networks to get user attribute information would outweigh the costs. 14 Footnote text: Herz teaches the generation of a user target profile 15 interest summary where a user profile is a collection of the user’s attributes (Herz, col. 4, line 51, to col. 5, line 8, and para. [0052] 16 and [0098] of the instant specification. In Herz, the social network is “a plurality of bulletin boards”. 17 * * * 18 7. Ward, Ill, et al. (US 8,635,649 B2) stands out for providing details 19 of a mechanism for determining user profiles and attributes. However, Ward’s mechanism is a television electronic program 20 guide, not a social network. In the examiner’s opinion, if one of ordinary skill in the art at the time of the invention, wanted to improve 21 Srinivasan et al., he or she would more likely have done so by using an EPG, as taught by Ward, Ill, et al., than by using social networks, 22 as taught by Herz. 23 Dkt. No. 167-3 at ECF 220-221 (10Tales0000848-49). 24 Based on the foregoing, the Court construes “user social network information” to mean 25 information derived from a user’s interactions in an online community.8 26 8 TikTok contends that the ’030 patent does not describe any specific method for analyzing, 27 determining, or measuring “user social network information.” See Dkt. No. 185 at 18. That 1 This construction is also consistent with the extrinsic evidence. Dr. Rubin opines that in 2 light of the ’030 patent specification, a person of ordinary skill in the art would understand the 3 term “user social network information” to refer to information based on a user’s participation in an 4 online community. See Dkt. No. 167-4 ¶¶ 92-93. And in a declaration submitted in support of 5 TikTok’s IPR petition, Dr. Kevin Almeroth similarly opined that, although the ’030 patent 6 specification does not mention a “social network,” the concept of an “online community” was 7 known in the art at the time of the claimed invention and that “the ‘030 patent acknowledges 8 social elements of affinities, which are user attributes, including the user’s interaction with others 9 was ‘understood by those skilled in the art.’” See Dkt. No. 167-5 ¶¶ 102, 106-107 (citing ’030 10 patent at 13:11-36, 50-62). While Dr. Bovik opines that “user social network information” was 11 not a term of art, he acknowledges that electronic social networks existed, albeit in their infancy, 12 at the time of the claimed invention. See Dkt. No. 185-3 ¶ 160. 13 With respect to the limitation in claim 1 for “retrieving user social network information 14 from at least one source external to the presented first composite digital media display . . .,” the 15 parties’ main point of contention is the meaning of “source external.” As noted above, the parties 16 were given an opportunity to submit supplemental briefing on this point. Dkt. No. 196. 10Tales 17 maintains that “source external” refers to a source “other than” the first composite digital media 18 display. Dkt. No. 199. TikTok argues that the “retrieving” limitation is indefinite because it is 19 unclear what “source[s]” of “user social network information” are included in the scope of the 20 claim. Dkt. No. 200. 21 The Court’s construction of the term “user social network information” addresses the kind 22 of information being retrieved, i.e., “information derived from a user’s interactions in an online 23 community.” In context, the plain and ordinary meaning of “source external” simply means that 24 the claimed information is retrieved from a source is other than the presented first composite 25 display. Accordingly, the Court construes the term “retrieving user social network information 26 from at least one source external to the presented first composite digital media display . . .” to 27 mean retrieving user social network information from at least one source other than the presented 5. “monitoring the first composite digital media display for the presence 1 of a trigger” 2 3 10Tales’s Proposed Construction TikTok’s Proposed Construction 4 A step carried out by software that monitors monitoring the first composite digital media 5 for an opportunity to personalize the display display for the presence of a trigger within the narrative 6 7 The parties agree that the “monitoring” term requires construction. 10Tales proposes a 8 construction that substantially rewrites the claim language and purports to define “trigger.” 9 TikTok’s proposed construction seeks to incorporate a “narrative” requirement into the claim 10 language and does not define “trigger.” 11 The term “trigger” appears only in the claim language, and does not appear anywhere in 12 the specification. The specification does discuss “trigger points,” which are defined as 13 “occurrences or time points within a story or narrative content that may cause the recipient 14 (viewer, reader, or listener) to take a particular interpretation at one or more levels or that may 15 affect the user’s emotional state.” ’030 patent at 7:1-5. The specification also defines 16 “personalization trigger points” as “those trigger points that allow for modification of the story or 17 narrative content in support of customization of the content to match the internal narrative 18 perception framework and appropriately influence the user.” Id. at 7:5-9; see also id. at 4:24-28, 19 4:35-41, 9:59-61, 10:1-15, 10:23-25, 10:34-43, 10:47-50, 10:59-11:10, 12:63-67, 14:27-31, 16:7- 20 10, 16:34-37, 17:4-7, 17:35-41, 17:54-57, 17:67-18-:1, Fig. 4, Fig. 5B. 21 For the reasons discussed above, TikTok has not provided a basis to read a requirement for 22 a “narrative” into the claim language, or to find that the claim was so limited through prosecution 23 disclaimer. See Mass. Inst. of Tech, 839 F.3d at 1119; Unwired Planet, LLC, 829 F.3d at 1359; 24 Thorner, 669 F.3d at 1366. 25 While the “wherein” clause of the “monitoring” claim limitation seems to describe the only 26 meaningful function of the trigger and introduces some redundancy in defining the term, in 27 context, the entire phrase—“monitoring the first composite digital media display for the presence 1 media assets”—indicates that “trigger” is an indication of a personalization opportunity in the first 2 composite digital display. “Trigger” must be construed as something in the display itself, given 3 the plain meaning of the phrase “monitoring . . . the display for the presence of . . . .” The Court 4 finds no support for 10Tales’s argument that the “trigger” need not be present in the first 5 composite digital media display. That proposed construction is inconsistent with the claim 6 language. Moreover, the Court notes that there is no embodiment in the specification where the 7 trigger/trigger point is outside of the display. 8 Accordingly, the Court construes “trigger” to mean: an indication of a personalization 9 opportunity. The Court construes, the entire phrase “monitoring the first composite digital media 10 display for the presence of a trigger” to mean: monitoring the first composite digital media 11 display for the presence in the display of an indication of a personalization opportunity. 12 6. “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 13 of the digital media assets from the second set of digital media assets” 14 10Tales’s Proposed Construction TikTok’s Proposed Construction 15 A step carried out by software that applies a Indefinite, or alternatively: performing a 16 rule to include one or more of the digital replacement based on a rule of one or more of media assets from the second set of digital the digital media assets from the first set of 17 media assets, which is based on the user digital media assets with one or more of the 18 attributes included in the user’s social network digital media assets from the second set of information digital media assets 19 20 10Tales argues that the claim language “makes clear that the ‘second set of digital media 21 assets’ is the set that is selected using the social network information to further personalize the 22 content being sent to the user.” Dkt. No. 167 at 22. TikTok contends that this phrase is indefinite, 23 arguing that “rule based substitution” is not a term of art and is not defined by intrinsic or extrinsic 24 evidence. Dkt. No. 185 at 22. 25 The Court finds that this claim limitation is not indefinite, and that its meaning is clear 26 from the claim language itself. Reading this claim limitation in the context of the rest of claim 1, 27 it is clear that there is a “first set of digital media assets,” then a “selecting” of a “second set of 1 retrieved in an earlier step, and then once a “trigger” is detected in the first composite digital 2 media display, there is a “performing a rule based substitution of one or more” assets from the first 3 set with one or more assets from the second set, to “create a user specific set of digital media 4 assets.” See ’030 patent at 21:7-22:11. In this context, the term “rule based” refers to a 5 substitution that happens by application of a rule, rather than on the basis of some discretionary or 6 subjective determination.9 7 The Court finds no basis for 10Tales’s proposed construction that “substitution” means 8 “include.” 10Tales correctly notes that the specification states that a “script may cause the 9 insertion and/or replacement of” certain assets “in the digital presentation,” see ’030 patent at 10 10:16-22, and describes at least one “insertion” embodiment, see id. at 10:23-31. But the patent 11 claims a “substitution of one or more . . . assets . . . with one or more assets . . . .” See id. at 22:7- 12 10. Claim 1 does not use the term “insertion,” and nothing in the claim language or the remainder 13 of the specification suggests that “substitution” encompasses insertion alone. 14 Based on the foregoing, the Court finds that no construction is required. 15 7. “the second composite digital media display”

16 17 10Tales’s Proposed Construction TikTok’s Proposed Construction 18 No construction necessary Indefinite 19 Plain and ordinary meaning 20 10Tales argues that this term requires no construction and should be afforded its ordinary 21 meaning. TikTok contends that this term is indefinite, arguing that it could refer to a “second 22 composite digital media display” or to “a user specific composite digital media display” recited 23 earlier in the claim. See ’030 patent at 22:11, 14-15. 24 The Court finds that this claim term is not indefinite. Nor does it lack antecedent basis. 25 Read in context, the plain meaning of “the second composite digital media display” is “the user 26

27 9 Drs. Rubin and Bovik do not agree on what “rule based” means. See Dkt. No. 167-4 ¶¶ 96-100; 1 specific composite digital media display” in the preceding limitation, which is created from the 2 || “user specific digital media assets.” 3 IT IS SO ORDERED. 4 Dated: August 14, 2023 5 6 VIRGINIA K. DEMARCHI 7 United States Magistrate Judge 8 9 10 11 a 12

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