Ineligibility of targeted ad claims upheld by CAFC in win for TikTok
Ineligibility of targeted ad claims upheld by CAFC in win for TikTok
TikTok and ByteDance were sued by 10Tales in the U.S. District Court for the Western District of Texas, which claimed infringement of a certain U.S. patent that generally covers “a system for customizing or personalizing content based on user social network information”
The U.S. Court of Appeals for the Federal Circuit (CAFC) has confirmed a district court’s grant of a Rule 12 c motion holding 10Tales, Inc.’s targeted content patent claims invalid as ineligible under Section 101 in a win for TikTok. Judge Reyna authored the opinion. TikTok and ByteDance were sued by 10Tales in the U.S. District Court for the Western District of Texas, which claimed infringement of a certain U.S. patent that generally covers “a system for customizing or personalizing content based on user social network information”. The case was transferred to the Northern District of California, where TikTok first filed a rule 12(b)(6) motion to dismiss the complaint because claim 1 was directed to patent ineligible subject matter. That motion was denied by the district court which held that claim construction was needed to determine if the claim was ineligible.
After the claim construction order, TikTok filed a Rule 12 c motion for judgment on the pleadings that the claim was invalid under Section 101. That motion was granted by the district court which however rejected TikTok’s argument that the claim was directed to the abstract idea of targeted advertising. According to the court, the claim is “more generally directed to a system for presenting personalized digital media content to a user based on the user attributes from user social network information”. The court went on to conclude that instead, claim 1 is abstract because it is limited to “presenting personalized content to a user based on information about the user”. The district court said this amounts to a “a long-standing and fundamental practice of personalizing content based on user attributes that spans many domains”. At Alice step two, the district court said claim 1 recites conventional steps that do not transform the abstract idea into eligible subject matter, and that the ordered combination of the elements was not inventive. The court also denied 10Tales motion for leave to amend its complaint. On appeal to the CAFC, 10Tales argued that claim 1 is directed to the non-abstract idea of “modifying a stream of content provided to a user based on social network information about the user that has been retrieved by the system from an external source.” But the CAFC said this lacked the “specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it”. The CAFC said that the claim failed to identify how the functional result was achieved. At Alice step two, 10Tales argued that the “retrieving user social network information from at least one source external to the presented first composite digital media display” limitation represented an inventive concept sufficient to transform the claims into eligible subject matter. The CAFC wrote, “But the law is clear. [A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty”.
