ScanComm LLC v. TikTok Pte Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: ScanComm LLC (Delaware)
  • Defendant: TikTok Pte. Ltd. (Singapore)
  • Plaintiff’s Counsel: KENT & RISLEY LLC
• Case Identification: 2:22-cv-00480, E.D. Tex., 12/19/2022
• Venue Allegations: Venue is alleged to be proper because the defendant is a foreign corporation, and on the basis that the defendant has allegedly committed acts of patent infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s TikTok mobile application infringes a patent related to systems for initiating secure and private communications between users via scannable labels like QR codes.
• Technical Context: The technology concerns a method where scanning a QR code initiates communication through a secure remote server, which allows users to interact without directly exchanging personal contact information like phone numbers or email addresses.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the patent and a claim chart detailing the alleged infringement via a letter dated December 10, 2022, nine days before filing the lawsuit. This pre-suit notice is cited as the basis for the willfulness allegation.

Case Timeline

Date	Event
2015-04-23	Earliest Priority Date (’878 Patent)
2021-05-11	'878 Patent Issued
2022-12-10	Pre-suit notice letter sent to Defendant
2022-12-19	Complaint Filed

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

U.S. Patent No. 11,003,878 - "System for Communication from a User to the Publisher of a Scannable Label", Issued May 11, 2021

The Invention Explained

• Problem Addressed: The patent addresses the limitations of conventional QR codes, which typically embed data directly or link to a public resource like a website ('878 Patent, col. 2:45-50). This standard approach does not facilitate private or anonymous communication between two individuals without one party having to disclose their direct contact information to the other.
• The Patented Solution: The invention describes a system where a user ("publisher") generates a QR code linked to a specific communication profile stored on a remote server. Another user ("consumer") scans the code using a dedicated application. The key innovation is that the communication is mediated by a secure remote server that holds the parties' actual contact information, allowing for interaction (e.g., messaging) without the information being embedded in the code or directly exchanged between the users' devices ('878 Patent, Abstract; col. 3:51-64). This architecture enables different levels of information disclosure, including fully anonymous profiles ('878 Patent, col. 4:40-44).
• Technical Importance: The described method allows for privacy-preserving interactions initiated in the physical world via a QR code, which is valuable in contexts where users wish to communicate without permanently sharing personal contact details ('878 Patent, col. 3:23-38).

Key Claims at a Glance

• The complaint refers to an "Exhibit B" containing a claim chart of "Exemplary '878 Patent Claims" but does not attach the exhibit or otherwise specify which claims are asserted (Compl. ¶15). Based on the patent, a representative independent claim is Claim 1.
• Independent Claim 1 Elements:
  • obtaining, with a two dimensional code scanner of an application residing on a mobile device of a first user, a scanned image of a code symbol corresponding to a unique communication profile of a second user;
  • extracting from the scanned image of the code symbol, using the application of the mobile device of the first user, a digital identification code of the second user in the form of digital data embedded in the code symbol;
  • establishing, using an application of the mobile device of the first user and the digital identification code of the second user, a secure two-way communication with the second user;
  • receiving, via the application of the mobile device of the first user, contact information of the second user and providing an option for the first user to store... the contact information of the second user;
  • wherein establishing the secure two-way communication with the second user comprises using a secure server;
  • and wherein the secure server is configured to enable private communication.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

• Product Identification: The TikTok mobile application is identified as an "Exemplary Defendant Product" (Compl. ¶13).
• Functionality and Market Context: The complaint alleges that the TikTok app infringes the '878 patent but does not describe the specific features or functionality of the app that are accused of infringement (Compl. ¶13, ¶15). The infringement theory is purportedly detailed in an Exhibit B claim chart, which was not filed with the complaint (Compl. ¶15). Therefore, the complaint does not provide sufficient detail for analysis of the accused instrumentality's specific functionality.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint states that an "Exhibit B" contains a claim chart comparing the asserted claims to the accused products, but this exhibit was not provided (Compl. ¶15). The complaint’s narrative theory is conclusory, stating that the "Exemplary Defendant Products practice the technology claimed by the '878 Patent" and "satisfy all elements of the Exemplary '878 Patent Claims" (Compl. ¶15). Without the claim chart or more detailed allegations in the body of the complaint, a specific element-by-element analysis is not possible based on the provided documents.

• Identified Points of Contention: Based on the language of Claim 1 of the '878 Patent and the general nature of the accused product, the infringement analysis may raise several technical and legal questions:
  • Scope Questions: A central question may be whether the communication facilitated by the TikTok QR code feature qualifies as "private communication" as that term is used in the patent. The '878 patent appears to contemplate a specific architecture for privacy where underlying contact details are intentionally shielded by a server ('878 Patent, Abstract). The analysis will question whether the accused feature functions in this specific manner or simply links to a user's public or semi-public profile.
  • Technical Questions: What evidence does the complaint provide that the TikTok app uses a "digital identification code" to establish a "secure two-way communication" via a "secure server" as required by the claim? A key point of dispute may be whether the code embedded in a TikTok QR code is a simple URL or a unique identifier that triggers the specific server-mediated process described in the patent specification ('878 Patent, col. 7:54-58).

V. Key Claim Terms for Construction

• The Term: "private communication"

  • Context and Importance: This term, located in the final functional clause of Claim 1, is critical for defining the scope of the invention. Its construction will likely determine whether the functionality of the accused TikTok app falls within the claims, distinguishing the invention from general-purpose QR codes that link to public information.
  • Intrinsic Evidence for a Broader Interpretation: A party could argue that any one-to-one communication channel not broadcast to the public, such as a direct messaging feature, meets this limitation ('878 Patent, col. 8:46-47).
  • Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly emphasizes "anonymous" profiles and communication where parties do not know each other's actual phone number or email address ('878 Patent, Abstract; col. 4:40-57). This suggests "private communication" may be construed more narrowly to require this specific server-mediated anonymity, rather than just any non-public message.

• The Term: "digital identification code"

  • Context and Importance: This is the data extracted from the scanned code and is the key that initiates the claimed process. Its definition is crucial to distinguishing the patented method from merely scanning a QR code containing a URL.
  • Intrinsic Evidence for a Broader Interpretation: This could be argued to be any data string that uniquely identifies the second user's profile within the application's ecosystem.
  • Intrinsic Evidence for a Narrower Interpretation: The specification provides a specific example, stating "No private data is encoded into the QR Code. If someone uses another application to scan the QRCode, all they would get is an 8 digit random code that must be decoded after it is received by the secure server" ('878 Patent, col. 7:54-58). This language may support a narrower construction where the "code" is a non-public, system-specific identifier, not a standard web link or public username.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant distributes the TikTok app along with "product literature, website materials, and/or in-app instructions" that allegedly encourage and instruct end users to use the product in a manner that infringes the '878 Patent (Compl. ¶14).
• Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge. The complaint asserts that Defendant received a notice letter and a claim chart on December 10, 2022, and that its continued alleged infringement after that date is willful (Compl. ¶12-13).

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

1. Evidentiary Sufficiency: A primary issue will be evidentiary. Given the complaint's lack of specific technical allegations, the case will depend on whether Plaintiff can produce evidence in discovery showing that the TikTok QR feature operates according to the specific server-mediated architecture of the asserted claims, rather than functioning as a simple hyperlink to a user's profile.
2. Definitional Scope: The case may turn on claim construction, particularly the meaning of "private communication." The central question for the court will be whether this term encompasses any direct messaging function within a social media app, or if it is limited by the specification to the more specific implementation of server-controlled anonymous or pseudonymous interaction.
3. Technical Equivalence: A key technical question will be whether the data within a TikTok QR code functions as the claimed "digital identification code." The dispute will likely focus on whether this data is a unique key for a secure, private handshake with a server, as described in the patent, or if it is functionally equivalent to a standard URL, which the patent distinguishes itself from.