DCT
4:23-cv-01412
ByteDance Inc v. Advanced Coding Tech LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ByteDance Inc. (Delaware) and TikTok Inc. (California)
- Defendant: Advanced Coding Technologies LLC (Texas), Anjay Technology Partners LLC (Texas), Anjay Venture Partners LLC (California), and Deepak Sharma (California)
- Plaintiff’s Counsel: Fish & Richardson P.C.
- Case Identification: 4:23-cv-01412, N.D. Cal., 03/24/2023
- Venue Allegations: Plaintiffs allege venue is proper in the Northern District of California because a substantial part of the events giving rise to the claim occurred in the district, as Plaintiffs make and use the TikTok application there. Venue is also alleged to be proper because the entities managing Defendant ACT are located in the district.
- Core Dispute: Plaintiffs seek a declaratory judgment that their TikTok application does not infringe three patents, asserted by Defendants in a separate litigation, related to digital video and audio processing.
- Technical Context: The patents relate to core functionalities in modern social media, specifically the creation of synchronized duet-style videos, intelligent pre-loading of streamed content, and processing of videos with variable frame rates.
- Key Procedural History: This declaratory judgment action was filed in response to a prior patent infringement lawsuit initiated by Defendant Advanced Coding Technologies (ACT) in the Eastern District of Texas (Case 2:22-cv-00129-JRG). Plaintiffs in the present case contend that the Texas litigation names the wrong corporate entities and is filed in an improper forum, thereby prompting this action in California.
Case Timeline
| Date | Event |
|---|---|
| 2010-12-08 | '154 Patent Priority Date |
| 2012-09-13 | '244 Patent Priority Date |
| 2012-12-28 | '041 Patent Priority Date |
| 2013-12-24 | '154 Patent Issue Date |
| 2016-04-12 | '244 Patent Issue Date |
| 2016-09-13 | '041 Patent Issue Date |
| 2022-04-29 | ACT files lawsuit in E.D. Texas |
| 2023-03-24 | ByteDance/TikTok file Declaratory Judgment Complaint in N.D. Cal. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,615,154 - "Video-audio processing apparatus and video-audio processing method" (Issued Dec. 24, 2013)
The Invention Explained
- Problem Addressed: The patent describes the technical challenge of easily synchronizing multiple video recordings, such as a user's practice dance video with an instructor's exemplary video, without requiring "complicated timing adjustment operations" that are prone to error ( Compl. Ex. A, '154 Patent, col. 1:20-34, col. 2:54-65).
- The Patented Solution: The invention provides a method where an apparatus plays the audio from a first pre-recorded video, allowing a user to capture a new, second video of themselves performing in time with that audio. The system then creates a new video stream by multiplexing the newly captured video data with the original audio data, using timestamps to ensure synchronization ('154 Patent, Abstract; col. 10:15-35). This process is illustrated in the flowchart for the "Practice Video Capture Mode" (Id., Fig. 3).
- Technical Importance: This technology simplifies the creation of reaction or "duet" style videos by using a pre-existing audio track as the timing reference for a new video recording.
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of claims 4-7 (Compl. ¶32).
- Independent claim 4 is a method claim with the following essential elements:
- outputting sound based on audio data with a time stamp, when a video-image capture unit starts to capture a video image to create video data;
- encoding the video data to create encoded video data;
- including a time stamp that is different from the time stamp of the audio data into the encoded video data; and
- outputting sound in synchronization of the time stamp of the audio data with the time stamp of the encoded video data, when a video image based on the video data decoded from the encoded video data is displayed.
- The complaint reserves the right to seek judgment on any claim of the patent (Compl. ¶31).
U.S. Patent No. 9,313,244 - "Content reproduction apparatus, content reproduction method, and computer-readable recording medium having content reproduction program recorded thereon" (Issued Apr. 12, 2016)
The Invention Explained
- Problem Addressed: In a content streaming system, such as a music playlist, user convenience can be poor if the system inefficiently pre-fetches (caches) data for upcoming content without regard for which content the user is most likely to play next (Compl. Ex. B, '244 Patent, col. 1:40-44).
- The Patented Solution: The invention describes an apparatus that intelligently manages pre-fetching. It "determines advance acquisition amounts in a plurality of contents to be reproduced" based on their "reproduction order" and acquires parts of that content in advance ('244 Patent, Abstract). The system can then "redetermine" and "increase" these acquisition amounts, effectively creating a dynamic caching strategy that prioritizes content closer to the front of the playback queue ('244 Patent, col. 8:20-45).
- Technical Importance: This technology enables a smoother user experience in streaming applications with a continuous feed of content by intelligently pre-loading data that a user is likely to view next.
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of claims 1-3, 6, and 7 (Compl. ¶¶36-38).
- Independent claim 1 is an apparatus claim with the following essential elements:
- circuitry that receives a content distributed in a streaming system;
- acquires data of a content being reproduced;
- determines advance acquisition amounts in a plurality of contents to be reproduced after the current content according to a reproduction order;
- acquires a part of the plurality of contents in advance based on the determined amounts;
- after acquiring the part of the contents, redetermines the advance acquisition amounts to increase them; and
- sequentially acquires another part of the plurality of contents based on the redetermined amounts.
- The complaint reserves the right to seek judgment on any claim of the patent (Compl. ¶35).
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. 9,445,041, "Moving image data processing apparatus and moving image data processing method" (Issued Sep. 13, 2016).
- Technology Synopsis: The patent addresses the challenge of seamlessly playing back multiple video clips that were originally recorded at different frame rates (e.g., normal speed, high-speed for slow-motion, or time-lapse) (Compl. Ex. C, '041 Patent, col. 1:25-42). The invention provides an apparatus and method to convert the frame rates of these disparate video inputs so they can be played back sequentially at a single, user-specified output frame rate and playback speed (Id., Abstract).
- Asserted Claims: Independent claims 1 (apparatus) and 6 (method) are among those identified in the complaint (Compl. ¶¶42-43).
- Accused Features: The complaint denies that the TikTok application provides the claimed apparatus or performs the claimed method steps for frame rate conversion (Compl. ¶¶42-43).
III. The Accused Instrumentality
Product Identification
- The "TikTok application," a mobile software application for capturing and viewing videos (Compl. ¶9).
Functionality and Market Context
- The TikTok application is a platform used by millions of users to create and share short-form video content (Compl. ¶2).
- The complaint is a declaratory judgment action for non-infringement and thus provides limited affirmative detail on the product's technical operation. Instead, it describes the product's functionality through denials, stating, for example, that the application does not perform the specific method steps or contain the specific "circuitry" recited in the patents-in-suit (Compl. ¶¶32, 36, 42). The complaint asserts that the features identified by Defendants as infringing were independently developed (Compl. ¶2).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The following tables summarize Plaintiffs' contentions of non-infringement as articulated in the declaratory judgment complaint.
'154 Patent Infringement Allegations
| Claim Element (from Independent Claim 4) | Plaintiff's Contention of Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| outputting sound based on audio data with a time stamp, when a video-image capture unit starts to capture a video image to create video data | The TikTok application does not perform this method step. | ¶32 | col. 15:5-9 |
| including a time stamp that is different from the time stamp of the audio data into the encoded video data | The TikTok application does not perform this method step. | ¶32 | col. 15:10-12 |
| outputting sound in synchronization of the time stamp of the audio data with the time stamp of the encoded video data... | The TikTok application does not perform this method step. | ¶32 | col. 15:13-17 |
'244 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Contention of Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A content reproduction apparatus comprising: circuitry that... determines advance acquisition amounts in a plurality of contents to be reproduced... | The TikTok application does not have circuitry that performs this function. | ¶36 | col. 13:12-15 |
| acquires a part of the plurality of contents in advance based on the determined advance acquisition amounts, and reproduces the acquired contents | The TikTok application does not have circuitry that performs this function. | ¶36 | col. 13:16-18 |
| wherein after acquiring the part of the plurality of contents...the circuitry redetermines advance acquisition amounts...so as to increase the advance acquisition amounts... | The TikTok application does not have circuitry that performs this function. | ¶36 | col. 13:19-23 |
Identified Points of Contention
- Scope Questions: For the ’244 Patent, a central dispute may arise over the meaning of "circuitry." The complaint's denial that the TikTok application "does not have circuitry" that performs the claimed functions raises the question of whether a software application running on a general-purpose processor (e.g., in a smartphone) falls within the scope of an apparatus claim reciting "circuitry" (Compl. ¶36).
- Technical Questions: For the ’154 Patent, the dispute appears to be factual. The complaint's conclusory denial that the TikTok application performs the claimed synchronization method raises the evidentiary question of how, precisely, TikTok synchronizes newly recorded video with pre-existing audio during the creation of "duet" style videos, and whether that method meets the specific timestamp-based limitations of the claims (Compl. ¶32).
V. Key Claim Terms for Construction
'244 Patent: "circuitry"
- Context and Importance: This term from independent claim 1 is critical because the accused product is a software application, while the claim is directed to a physical apparatus comprising "circuitry." The viability of a direct infringement claim may depend on whether this term is construed to cover a general-purpose processor executing software instructions.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (e.g., covering software on a CPU): A party could argue that the specification describes the invention in functional terms (e.g., "music piece acquisition controller," "communicator") that one of ordinary skill would understand could be implemented in either dedicated hardware or software running on a processor ('244 Patent, Fig. 1). The term "circuitry" itself is not explicitly limited to hardware-only embodiments in the specification.
- Evidence for a Narrower Interpretation (e.g., limited to dedicated hardware): A party could argue that the patent's use of the term "circuitry" in an apparatus claim, combined with block diagrams showing distinct functional units, points to a physical, hardware-based invention rather than a software program ('244 Patent, Fig. 1; col. 13:6-8). The patent does not explicitly state that the "circuitry" can be a general-purpose processor executing a program.
'154 Patent: "outputting sound in synchronization of the time stamp of the audio data with the time stamp of the encoded video data"
- Context and Importance: This limitation in claim 4 defines the core mechanism of the invention. The dispute will likely focus on whether the method used by TikTok to align audio and video constitutes this specific, two-part timestamp synchronization.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "synchronization" is broad, and a party might argue that any method that uses timing information from the audio stream to align the video stream meets this limitation, regardless of the specific format of the "time stamp."
- Evidence for a Narrower Interpretation: The specification and figures illustrate a specific process where time points for audio output are explicitly used to time the capture of video frames, suggesting a direct and causal link between the two sets of timestamps ('154 Patent, Fig. 6C; col. 10:15-25). A party could argue this detailed embodiment narrows the claim's scope to systems that use this explicit time-matching technique.
VI. Other Allegations
Indirect Infringement
- The complaint notes that Defendants, in the related Texas litigation, have alleged that Plaintiffs indirectly infringe by providing "user guides, documentation and instructional videos" that instruct users on how to use the TikTok app (Compl. ¶9). Plaintiffs' complaint seeks a declaratory judgment that they are not liable for indirect infringement, arguing that the underlying acts performed by end-users do not constitute direct infringement of any valid claim (Compl. ¶¶31, 35, 41).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the '244 patent will be one of claim scope: can the term "circuitry," as used in an apparatus claim, be construed to cover the functions performed by the TikTok software application when executed on the general-purpose processor of a user's mobile device?
- A key evidentiary question for the '154 patent will be one of technical operation: does the TikTok application, when creating duet-style videos, utilize the specific, dual-timestamp-based synchronization method required by the claims, or does it employ a different, non-infringing technical process to align audio and video?
- Underlying the entire dispute is a threshold procedural conflict over venue: will the case proceed in the Northern District of California as Plaintiffs desire, or will it be stayed or transferred in favor of the first-filed action in the Eastern District of Texas, a forum often viewed as more favorable to patent holders?