DCT
3:22-cv-06756
TikTok Inc v. Persidsky
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: TikTok Inc. (California) and ByteDance Inc. (Delaware)
- Defendant: Andre Persidsky (California)
- Plaintiff’s Counsel: Sheppard, Mullin, Richter & Hampton LLP
- Case Identification: 3:22-cv-06756, N.D. Cal., 11/01/2022
- Venue Allegations: Venue is alleged to be proper in the Northern District of California because the defendant, Andre Persidsky, is an individual residing and domiciled in the district.
- Core Dispute: Plaintiffs seek a declaratory judgment that their "Countdown Sticker Interactive Add-on" does not infringe U.S. Patent No. 11,398,993, which is owned by the Defendant.
- Technical Context: The technology relates to digital messaging systems that deliver a two-part message, with a "teaser" message being followed by a "reveal" message after a specified, and often user-configurable, time delay.
- Key Procedural History: The complaint was filed in response to pre-suit communications from the Defendant. These communications allegedly included accusations that Plaintiffs’ product infringes the patent-in-suit, an offer to sell the patent to Plaintiffs, and notice that the Defendant had identified a law firm to pursue an infringement action on a contingency basis if a deal was not reached.
Case Timeline
| Date | Event |
|---|---|
| 2019-05-24 | '993 Patent Priority Date (Provisional App. 62/852,311) |
| 2020-05-23 | '993 Patent Application Filing Date |
| 2022-07-26 | '993 Patent Issue Date |
| 2022-09-22 | Defendant initially provides Plaintiffs with evidence of alleged infringement |
| 2022-10-03 | Defendant further alleges infringement by Plaintiffs |
| 2022-10-21 | Defendant signals intent to engage a law firm for enforcement |
| 2022-10-26 | Defendant informs Plaintiffs of contingency firm interest and offers to sell the patent |
| 2022-11-01 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,398,993 - "Two-part messaging with specified delay,"
- Issued: July 26, 2022
The Invention Explained
- Problem Addressed: The patent’s background section identifies a need to overcome drawbacks in conventional message scheduling platforms, where a message scheduled for future delivery may be unreliable due to changes in a recipient’s contact information (e.g., email address) or may be overlooked, sent to spam, or otherwise disregarded by a recipient who is unaware of the scheduled message (ʼ993 Patent, col. 1:38-54).
- The Patented Solution: The invention proposes a system where a sender creates a two-part message. A first "teaser" message is made available, often immediately, via a persistent computing resource like a URL. This teaser message notifies the recipient that a second "reveal" message will become accessible at a specified future time via that same resource. This approach aims to ensure reliable delivery and build anticipation for the final message (ʼ993 Patent, col. 4:42-61; Abstract).
- Technical Importance: The described system seeks to increase the reliability and user engagement of delayed-delivery messages by creating a stable access point (the URL) and generating recipient interest through a two-stage reveal process (ʼ993 Patent, col. 1:55-59).
Key Claims at a Glance
- The complaint focuses on independent method claim 9, which the Defendant allegedly asserted pre-suit (Compl. ¶10). The complaint also seeks a declaration of non-infringement for independent claims 1 and 14 (Compl. ¶31).
- Essential elements of independent claim 9 include:
- receiving a messaging information from a first user device, wherein the messaging information comprises a first message, a second message and a timing information;
- validating the received messaging information;
- generating a computing resource for the first message and the second message;
- initiating a countdown timer, based on the timing information, for access to the second message;
- outputting the countdown timer within the computing resource for the first message; and
- enabling access to the second message based on the countdown timer; and
- enabling access to any of the first and the second message based on the timing information.
III. The Accused Instrumentality
Product Identification
The "Countdown Sticker Interactive Add-on" functionality available for advertisements within the TikTok application (Compl. ¶¶8-9, 28).
Functionality and Market Context
The feature allows an advertiser to add a timer to a video advertisement. The complaint states the purpose is to "catch your audience's attention and create a feeling of urgency" (Compl. ¶28). The sticker can be configured with a title, a countdown deadline, and a destination URL. When a viewer clicks the sticker, they are redirected to the advertiser's provided landing page (Compl. ¶28). The complaint alleges this functionality is used in advertisements on the platform (Compl. ¶23).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The table below summarizes Plaintiffs' primary arguments for why the Accused Product does not meet the limitations of claim 9.
'993 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a messaging information comprises a first message, a second message and a timing information | The complaint alleges that the Accused Product does not involve a "second message" as taught by the patent; a destination URL for an ad is not a second message gated by a timer. | ¶29 | col. 8:5-9 |
| initiating a countdown timer, based on the timing information, for access to the second message | The Accused Product's timer is alleged to be for creating "a feeling of urgency" and is not for the purpose of controlling "access to the second message." | ¶29 | col. 14:1-5 |
| enabling access to the second message based on the countdown timer | The complaint asserts that the destination URL is always accessible and that the timer does not "enable access" that was previously unavailable. | ¶29 | col. 14:5-8 |
| enabling access to any of the first and the second message based on the timing information | It is alleged that the destination URL of the sticker is always interactive and accessible, and that access is not enabled based on the provided timing information. | ¶30 | col. 14:50-53 |
Identified Points of Contention
- Scope Questions: The core of the dispute appears to be definitional. Does a standard advertising landing page (a destination URL) meet the definition of a "second message" as contemplated by the patent, which describes a "reveal message" (ʼ993 Patent, col. 8:5-9)?
- Technical Questions: A central technical question is whether the Accused Product's timer performs the function required by the claims. The complaint alleges the timer's function is to create "urgency" for a link that is always accessible (Compl. ¶¶29-30), raising the question of whether this functionality is the same as "enabling access...based on the countdown timer" as claimed (ʼ993 Patent, cl. 9).
V. Key Claim Terms for Construction
The Term: "second message"
- Context and Importance: The existence of a "second message" is a predicate for several subsequent claim limitations. Plaintiffs' non-infringement argument hinges on their position that a destination URL for an advertisement is not a "second message" (Compl. ¶29). Practitioners may focus on this term because if a landing page is not a "second message," multiple claim elements may not be met.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that the message can be in the form of "text, image, audio, video, GIF, animation, and so forth" (ʼ993 Patent, col. 4:14-16), which could potentially encompass the content of a landing page.
- Evidence for a Narrower Interpretation: The patent consistently describes the "second message" as a "reveal message" that is part of a "two-part message" created by a sender and managed by the patented system, distinct from the "teaser message" (ʼ993 Patent, col. 8:5-9, 11:25-36). This could suggest it is a specific piece of content revealed by the system, not a generic, pre-existing webpage.
The Term: "enabling access to the second message based on the countdown timer"
- Context and Importance: This term defines the core function of the timer in the claimed method. Plaintiffs argue their timer does not "enable access" but merely encourages a user to click an already-accessible link (Compl. ¶29). The interpretation of "enabling access" will be critical to the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to explicitly define "enabling access." A patentee might argue that by displaying a countdown, the system is making access salient and practically possible for a user, thus "enabling" it.
- Evidence for a Narrower Interpretation: The claim structure and specification imply a gating function where access is prevented before the timer expires and permitted after. The patent describes the "second message is made accessible" after a delay, and "when the countdown timer reaches '0', then the server may enable access to the second message" (ʼ993 Patent, col. 7:6-8), suggesting a change in state from inaccessible to accessible.
VI. Other Allegations
Indirect Infringement
Plaintiffs seek a declaration of non-infringement as to indirect infringement, arguing that because there is no underlying direct infringement, and because they lack the requisite specific intent, they cannot be liable for induced or contributory infringement (Compl. ¶¶32-33).
Willful Infringement
Willfulness is not alleged in the complaint, as it is a DJ action. However, Plaintiffs' prayer for relief requests a declaration that they have not willfully infringed any claim of the '993 Patent (Compl. p. 7). The complaint's description of pre-suit communications establishes that Plaintiffs had knowledge of the patent prior to filing suit (Compl. ¶¶4-9).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "second message", as described in the context of a "two-part message" with a "teaser" and "reveal" component, be construed to cover a standard, pre-existing destination URL for a video advertisement?
- A key functional question will be one of technical operation: does the accused Countdown Sticker's function of creating a "feeling of urgency" for an always-accessible hyperlink meet the claim limitation of "enabling access...based on the countdown timer", which the patent specification suggests is a gating mechanism that unlocks a previously inaccessible message?