DCT

3:25-cv-10578

DiStefano Website Innovations LLC v. ByteDance Ltd

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:25-cv-10578, E.D. Tex., 10/29/2024
  • Venue Allegations: Plaintiff asserts that venue is proper in the Eastern District of Texas because the Defendants are foreign corporations subject to venue in any judicial district, and because Defendant TikTok Ltd. conducts substantial business in the district, including leasing significant office space in Austin, engaging in a major partnership ("Project Texas") with Austin-based Oracle, and having a large user base in Texas.
  • Core Dispute: Plaintiff alleges that Defendants’ social media and video-editing applications—TikTok, CapCut, and Lemon8—infringe five U.S. patents related to graphical user interface-based systems for creating websites and establishing reciprocal links between user-generated pages.
  • Technical Context: The patents address technology for simplifying website creation for non-technical users and automating the process of creating mutual hyperlinks between different websites, a foundational concept for user interconnectivity on the early internet.
  • Key Procedural History: All asserted patents claim priority to a single application filed in 2000. The complaint details the prosecution history of the most recent patent ('316 Patent), noting that claims were amended and argued on appeal to overcome a subject matter eligibility rejection under 35 U.S.C. § 101. Plaintiff also alleges providing pre-suit notice to Defendants regarding the '316 and '971 patents.

Case Timeline

Date Event
2000-06-07 Earliest Priority Date for all Patents-in-Suit
2013-04-02 ’570 Patent Issued
2013-11-19 ’222 Patent Issued
2015-03-31 ’398 Patent Issued
2016-04-12 ’971 Reissue Patent Issued
2018-01-01 TikTok App Launched in the United States (approx.)
2020-04-10 CapCut App Released Worldwide
2020-04-01 Lemon8 App First Introduced in Japan (approx.)
2022-11-01 Plaintiff Allegedly Provided Notice of '316 and '971 Patents (approx.)
2023-02-01 Lemon8 App Launched in the United States (approx.)
2023-06-07 ’316 Patent Notice of Allowance Issued
2023-09-19 ’316 Patent Issued
2024-10-29 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,763,316 - "Server system configured to provide graphical user interface for modifying web pages to include hyperlinks"

  • Patent Identification: U.S. Patent No. 11,763,316, "Server system configured to provide graphical user interface for modifying web pages to include hyperlinks," issued September 19, 2023.

The Invention Explained

  • Problem Addressed: The patent’s background describes the difficulty faced by average individuals with "little or no knowledge" of HTML or server administration in creating their own web pages. ('316 Patent, col. 2:4-8).
  • The Patented Solution: The invention provides a server-based method where a user interacts with a graphical user interface (GUI) to build a web page. The system allows the user to select a first "web asset" (e.g., an image), modify it, and then select another user's pre-existing "website" to link to. The core of the solution is that the server system then automatically modifies both the user's new website to include a hyperlink to the second website, and modifies the second website to include a reciprocal hyperlink back to the first. ('316 Patent, Abstract; col. 12:5-44).
  • Technical Importance: This technology sought to lower the barrier for user-generated content and automate the creation of the interconnected, reciprocal relationships that formed the basis of early online communities and marketing networks. (Compl. ¶¶ 37, 44).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 and dependent Claims 3-9, 11, and 13. (Compl. ¶ 136).
  • Claim 1 recites a method performed by a server system, comprising the essential elements of:
    • Receiving, from a first user via a GUI, a selection of a "web asset" for a first "web site."
    • Receiving an instruction to modify the web asset, and generating an "edited web asset."
    • Forwarding identifiers of other previously-created websites to the user.
    • Receiving a selection of a second website to create a first "hyperlink" from the first web site to the second.
    • Storing information about this selection.
    • Modifying the first web site to include the edited web asset and the first hyperlink.
    • Modifying the second web site to include a "reciprocal second hyperlink" to the first.
    • Serving the modified first website.

U.S. Patent No. RE45,971 - "Developing electronic documents providing e-commerce tools"

  • Patent Identification: U.S. Patent No. RE45,971, "Developing electronic documents providing e-commerce tools," issued April 12, 2016.

The Invention Explained

  • Problem Addressed: The patent addresses the difficulty for novice users in setting up e-commerce websites, particularly with respect to creating marketing features like reciprocal links to drive traffic between sites. ('971 Patent, col. 2:30-44).
  • The Patented Solution: The invention describes a method within a "website implementation system" for establishing a "reciprocal arrangement" between two websites. A first user building a new site can select a pre-existing second site and choose a "functional marketing element" (e.g., a hyperlink) to be placed on it. The system then establishes a "reciprocal site" (e.g., a designated area for links) on the first user's site and, upon activation, causes both websites to implement links pointing to each other, thereby directing traffic between them. ('971 Patent, Abstract; col. 3:15-4:3).
  • Technical Importance: The method provided an automated framework for creating mutual marketing relationships between websites, a common strategy for building audience and commercial opportunities in the early web. (Compl. ¶¶ 44-45).

Key Claims at a Glance

  • The complaint asserts independent Claims 4 and 8, and dependent Claims 9 and 12-13. (Compl. ¶ 165).
  • Claim 4 recites a method of establishing a reciprocal arrangement, comprising the essential elements of:
    • Registering a preexisting second website with the system.
    • Receiving a request from a first user to implement a first website.
    • Receiving a selection from the first user for a "second functional marketing element" to be activated on the second website.
    • Establishing a "reciprocal site" in the first website for a first functional marketing element.
    • Upon the first website's activation, implementing the arrangement by causing both sites to implement their respective marketing elements, which direct users to the other site.
  • Claim 8 recites a similar method between a first and second web page, comprising:
    • Generating a second functional marketing element associated with the first user for activation on the second web page.
    • Establishing a reciprocal site in the first web page.
    • Implementing the reciprocal arrangement where each element directs users to the other web page.

Multi-Patent Capsule: U.S. Patent No. 8,996,398 - "Reciprocal insertion of links for web pages"

  • Patent Identification: U.S. Patent No. 8,996,398, "Reciprocal insertion of links for web pages," issued March 31, 2015.
  • Technology Synopsis: This patent claims a method where the act of inserting a "first functional identification element" (a link) from a first web page to a second web page automatically triggers the "reciprocally inserting" of a second link from the second page back to the first. ('398 Patent, Abstract).
  • Asserted Claims: Independent Claim 1 and dependent Claims 2-6 and 8. (Compl. ¶ 189).
  • Accused Features: The "Follow" functionality in TikTok and CapCut is alleged to be the "first functional identification element," where one user following another creates a link, and a mutual follow results in the "reciprocally inserting" of a link back. (Compl. ¶¶ 175-176).

Multi-Patent Capsule: U.S. Patent No. 8,589,222 - "User uploaded image within webpage implementation server system"

  • Patent Identification: U.S. Patent No. 8,589,222, "User uploaded image within webpage implementation server system," issued November 19, 2013.
  • Technology Synopsis: This patent describes a method for creating reciprocal links between two user-generated web pages where the system first receives an image from the first user. The reciprocal link placed on the second user's page includes this image along with a link back to the first user's page. ('222 Patent, Abstract).
  • Asserted Claims: Independent Claim 1 and dependent Claims 2-6. (Compl. ¶ 208).
  • Accused Features: The accused functionality involves a user uploading a profile picture (the "image") in TikTok or CapCut, with the reciprocal linking being the mutual "follow" function that displays the user's profile picture next to the link in a "Followers" list. (Compl. ¶¶ 194, 197).

Multi-Patent Capsule: U.S. Patent No. 8,412,570 - "Providing recommendations for reciprocal links in website creation system"

  • Patent Identification: U.S. Patent No. 8,412,570, "Providing recommendations for reciprocal links in website creation system," issued April 2, 2013.
  • Technology Synopsis: This patent claims a method that, in addition to establishing reciprocal links between two user websites, also involves "providing, to the first user, at least one recommended website" into which a reciprocal link can be inserted. ('570 Patent, Abstract).
  • Asserted Claims: Independent Claim 1 and dependent Claims 2-8 and 10. (Compl. ¶ 235).
  • Accused Features: The accused features are the "suggested accounts" or user recommendation algorithms in TikTok and CapCut, which provide users with other profiles to follow, in combination with the alleged reciprocal linking function of a mutual follow. (Compl. ¶ 217).

III. The Accused Instrumentality

Product Identification

  • The TikTok App, the CapCut App, and the Lemon8 App. (Compl. ¶ 97).

Functionality and Market Context

  • The complaint alleges that these are mobile software applications that allow users to create and publish content. A user creates a personal profile, which the complaint frames as a "website." (Compl. ¶ 112). Users can upload photos or videos, which are framed as "web assets." (Compl. ¶ 110). A central feature of these apps is the ability for users to connect by "following" one another. The complaint alleges that when a first user follows a second user, a "hyperlink" is created from the first user's profile to the second user's profile. (Compl. ¶ 113). A mutual follow is alleged to create a "reciprocal" hyperlink arrangement. (Compl. ¶ 116). The apps also include features that suggest other user accounts to follow, which the complaint maps to the "recommended website" limitations of the '570 patent. (Compl. ¶ 217).
  • The complaint positions TikTok as a dominant global social media platform with over 150 million users in the United States and generating billions in revenue, with CapCut being a popular complementary video-editing application. (Compl. ¶¶ 100-101).

IV. Analysis of Infringement Allegations

’316 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving, from a first client device...information indicating a selection of a web asset to be used in a first web site A user selects a photo from their device to use as a profile picture in the TikTok, CapCut, or Lemon8 app. The screenshot on page 22 shows a user selecting photos from their device's gallery for use in TikTok. (Compl. ¶ 110). ¶110 col. 20:64-21:5
receiving, from the first client device and via an editing screen...an instruction to modify the web asset to generate an edited web asset The user is presented with an editing screen where they can crop or otherwise alter the selected photo before finalizing it as their profile picture. The screenshot on page 24 shows a photo being cropped in the TikTok app. (Compl. ¶ 111). ¶111 col. 21:40-47
forwarding, to the first client device...one or more identifiers respectively associated with one or more previously-created websites The app's server system provides a list of other user profiles (e.g., via search results or a "suggested" list) for the first user to view and potentially connect with. The screenshot on page 26 shows a list of user profiles returned from a search for "Bears." (Compl. ¶ 112). ¶112 col. 12:15-24
receiving...a first identification indicating a selection of a second website from the one or more previously-created websites to create a first hyperlink The first user clicks the "Follow" button on a second user's profile, which the complaint alleges is a selection to create a hyperlink. ¶113 col. 12:25-34
modifying...the second web site to include a reciprocal second hyperlink to the first web site When the second user follows the first user back, the first user's profile appears in the second user's "Following" list, and the second user's profile appears in the first user's "Followers" list, creating the alleged reciprocal link. The diagram on page 34 illustrates this mutual relationship. (Compl. ¶ 116). ¶116 col. 1:57-65

’971 Reissue Patent Infringement Allegations

Claim Element (from Independent Claim 4) Alleged Infringing Functionality Complaint Citation Patent Citation
registering the second website with the website implementation system A second user creates a profile ("second website") on the TikTok, CapCut, or Lemon8 platform. The screenshot on page 60 shows the "Sign up for TikTok" screen. (Compl. ¶ 147). ¶147 col. 3:20-22
receiving, by the website implementation system, a request by a first user to implement the first website A first user creates their own profile ("first website") on the platform. The screenshot on page 62 shows the "Create nickname" screen for a new user. (Compl. ¶ 148). ¶148 col. 3:23-25
receiving...a selection by the first user as to a second functional marketing element to be activated on the second website The first user selects the "Follow" button on the second user's profile, which is alleged to be the selection of a "functional marketing element." ¶149 col. 3:26-29
establishing...a reciprocal site in the first website for a first functional marketing element The system establishes the "Followers" page or list on the first user's profile, which is alleged to be the "reciprocal site" where a link from the second user (the first functional marketing element) will appear. The screenshot on page 64 shows an empty "Followers" page, designated as the reciprocal link site. (Compl. ¶ 150). ¶150 col. 3:30-33
the computer website implementation system implementing the reciprocal arrangement by causing...the first website to implement the first functional marketing element, and...the second website to implement the second functional marketing element When there is a mutual follow, the system displays a link to the second user on the first user's "Following" list and a link to the first user on the second user's "Followers" list. ¶151 col. 3:34-40

Identified Points of Contention

  • Scope Questions: A primary issue for the court will be whether the patent term "website," grounded in the 2000-era context of HTML documents on the World Wide Web, can be construed to encompass a user profile within a proprietary, closed-ecosystem mobile application. Similarly, questions will arise as to whether an in-app "Follow" button constitutes a "hyperlink" or "functional marketing element" as contemplated by the patents.
  • Technical Questions: The infringement theory for the '316 patent hinges on the allegation that the server "modifies" the second user's "website" to include a reciprocal link. A point of contention may be whether adding a user to a dynamically generated "Followers" list constitutes a "modification" of a "web site" in the manner claimed, or if it is a fundamentally different database operation than what the patent describes.

V. Key Claim Terms for Construction

Term 1: "web site" / "web page" (from '316 Claim 1 and others)

  • The Term: "web site" / "web page"
  • Context and Importance: The viability of the plaintiff's entire case hinges on construing these terms to cover user profiles within the accused mobile applications. If a user profile is not a "web site," the core infringement theory may fail. Practitioners may focus on this term because it represents the primary legal and factual hurdle of applying a 2000-era patent to modern social media architecture.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's background emphasizes enabling individuals with "little or no knowledge" to create an online presence, a goal aligned with modern social media profiles. ('316 Patent, col. 2:4-8). The claims are directed to a method performed by a "server system" receiving information from a "client device," a general architecture that is not strictly limited to a traditional web browsers.
    • Evidence for a Narrower Interpretation: The patent specification is replete with references to the "World Wide Web," "HTML document," and "browser" software, rooting the invention in the specific technological context of the public internet of 2000. ('316 Patent, col. 1:33-2:3). This context suggests a "web site" is a collection of documents accessible via a standard internet protocol, not a data object within a proprietary application.

Term 2: "functional marketing element" (from '971 Claim 4 and others)

  • The Term: "functional marketing element"
  • Context and Importance: The complaint alleges that a "follow" link between user profiles is a "functional marketing element." The construction of "marketing" is critical to determining if a social connection falls within the claim's scope, which appears oriented toward e-commerce.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification states that a way of "marketing a particular website on the internet is simply to have other websites display selectable commands ('links')." ('971 Patent, col. 2:49-52). This language could support the argument that any link that directs traffic, including a social "follow," serves a marketing function by increasing visibility.
    • Evidence for a Narrower Interpretation: The background section discusses this element in the context of "e-commerce," "banner ads," and "marketing a website to consumers," suggesting a commercial or promotional purpose beyond a simple social link between two individuals' profiles. ('971 Patent, col. 2:30-54).

VI. Other Allegations

Indirect Infringement

  • The complaint's prayer for relief references infringement under 35 U.S.C. §§ 271(b) and (c), but the individual counts do not contain specific factual allegations detailing the elements of inducement or contributory infringement. (Compl. p. 116).

Willful Infringement

  • The complaint alleges willful infringement of the '316 and '971 patents based on alleged pre-suit knowledge. Plaintiff claims it provided notice to ByteDance in November 2022 that the application for the '316 patent had been allowed, and provided further notice after its issuance in September 2023. (Compl. ¶ 137). Notice of the '971 patent was also allegedly provided in November 2022. (Compl. ¶ 166). The complaint alleges that Defendants' infringement has continued despite this knowledge. (Compl. ¶¶ 138, 167).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can the terms "web site" and "web page," rooted in the context of the public World Wide Web of 2000, be construed to cover user profiles and content feeds within a closed, proprietary mobile application ecosystem like TikTok?
  • A central question of claim construction will be one of functional meaning: does the social act of establishing a mutual "follow" between two user profiles constitute the creation of a "reciprocal arrangement" using "functional marketing elements," as contemplated by a patent family focused on e-commerce and online advertising?
  • A key evidentiary question will be one of technical operation: does adding a user to a dynamically generated "Followers" list constitute "modifying" a "web site" to include a hyperlink, as required by Claim 1 of the '316 patent, or is there a fundamental mismatch between the server-side database functions of a modern social network and the web page creation tool described in the patent?