DCT

2:24-cv-00874

DiStefano Website Innovations LLC v. ByteDance Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00874, E.D. Tex., 10/29/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants are foreign corporations subject to suit in any U.S. judicial district. It further alleges Defendant TikTok Ltd. conducts substantial business in Texas, citing a major office lease in Austin and its "Project Texas" initiative, which involves storing U.S. user data on servers operated by Austin-based Oracle.
  • Core Dispute: Plaintiff alleges that Defendants’ social media and video editing applications—TikTok, CapCut, and Lemon8—infringe five patents related to systems and graphical user interfaces for creating and reciprocally linking web pages.
  • Technical Context: The technology addresses methods for simplifying the creation of interconnected web pages for users with little technical background, a concept foundational to modern social media platforms where user profiles are linked through actions like "following."
  • Key Procedural History: The complaint details the prosecution history of the ’316 Patent, noting that the patentee successfully overcame a subject-matter eligibility rejection under 35 U.S.C. § 101 by arguing the claims were a technical solution to an internet-centric problem and not an improper preemption of the abstract idea of reciprocal links. The complaint also alleges Defendants received pre-suit notice of the allowed application that became the ’316 Patent and of the issued ’971 Patent in November 2022, as well as notice of the issued ’316 Patent in September 2023.

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
2017-01-01 ByteDance purchases Musical.ly (approx.)
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 allowed ’316 application and ’971 Patent (approx.)
2023-02-01 Lemon8 app launched in the United States (approx.)
2023-09-12 ’316 Patent Issued
2023-09-19 Plaintiff allegedly provided notice of issued ’316 Patent
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"

  • Issued: September 19, 2023

The Invention Explained

  • Problem Addressed: The patent’s background section describes the difficulty and expense for average individuals, who lack knowledge of HTML, to create and post their own web pages on the internet, particularly for e-commerce purposes (’316 Patent, col. 2:4-29).
  • The Patented Solution: The invention provides a server-based system with a graphical user interface (GUI) that allows a user to create and modify web pages without programming knowledge. The core of the patented solution is a method for establishing a "reciprocal arrangement" between a first user's web page and a second user's web page, where the system automatically generates hyperlinks on both pages that point to each other (’316 Patent, Abstract; Fig. 1).
  • Technical Importance: This approach automated the creation of mutual, cross-promotional links between web pages, streamlining a process that was foundational for building interconnected online communities and a precursor to modern social network "follow" mechanics (Compl. ¶¶66-67).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶109).
  • Essential elements of claim 1, a method performed by a server system, include:
    • Receiving, from a first user, 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 first 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 website to include the edited web asset and the first hyperlink.
    • Modifying the second website to include a reciprocal second hyperlink back to the first website.
    • Serving the modified first website.
  • The complaint also asserts dependent claims 3-9, 11, and 13 (Compl. ¶136).

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 same problem as the ’316 Patent: the difficulty for non-technical users to create and market websites, especially for e-commerce (’971 Patent, col. 2:4-10).
  • The Patented Solution: The invention is a method within a computer hardware system for establishing a "reciprocal arrangement" between a user's new website and a preexisting second website. The system creates and implements a "first functional marketing element" (e.g., a hyperlink) on the first site that directs users to the second, and a "second functional marketing element" on the second site that directs users back to the first (’971 Patent, Abstract).
  • Technical Importance: This technology provided an integrated, system-level solution for creating mutual marketing links between websites, which the patentee argued during prosecution was an improvement over conventional, disjointed methods and an internet-centric solution to a computer networking problem (Compl. ¶¶60-62).

Key Claims at a Glance

  • The complaint asserts independent claims 4 and 8 (Compl. ¶¶145, 153).
  • Essential elements of claim 4, a method of establishing a reciprocal arrangement, include:
    • Registering a preexisting second website with the system.
    • Receiving a request from a first user to implement a first website.
    • Receiving the first user's selection of 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."
    • Implementing the arrangement by causing the first website to implement the first element and the second website to implement the second element, creating mutual links.
  • The complaint also asserts dependent claims 9 and 12-13 (Compl. ¶165).

Multi-Patent Capsules

  • U.S. Patent No. 8,996,398

    • 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 of inserting a "first functional identification element" (e.g., a link) associated with a second entity onto a first entity's web page, and then "reciprocally inserting" a second element associated with the first entity onto the second entity's web page (’398 Patent, Abstract).
    • Asserted Claims: Independent claim 1 and dependent claims 2-6 and 8 (Compl. ¶189).
    • Accused Features: The accused functionality is the system's creation of mutual links when one user "follows" another in the TikTok and CapCut applications, allegedly inserting reciprocal "functional identification elements" into each user's profile page (Compl. ¶¶175-176).

  • U.S. Patent No. 8,589,222

    • 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 covers a method where an image received from a first entity is included in a "second functional marketing element" that is part of a reciprocal link structure between the first entity's web page and a second entity's web page (’222 Patent, Abstract).
    • Asserted Claims: Independent claim 1 and dependent claims 2-6 (Compl. ¶208).
    • Accused Features: The complaint alleges that when a user uploads a profile picture (an image), it is used within the hyperlink structure connecting that user's profile to their followers' and following lists in TikTok and CapCut (Compl. ¶194).

  • U.S. Patent No. 8,412,570

    • 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 describes a reciprocal linking method that adds the step of the system "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 functionality is the "Suggested" user feature in TikTok and CapCut, which allegedly provides recommended websites (user profiles) for the user to create reciprocal links with by following them (Compl. ¶¶217, 225).

III. The Accused Instrumentality

Product Identification

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

Functionality and Market Context

  • The Accused Products are social media and video-editing applications that allow users to create personal profiles, upload content such as photos and videos, and connect with other users (Compl. ¶¶98, 101-102). A central accused feature is the "follow" mechanism, whereby a first user following a second user results in the system creating a link from the first user's "Following" list to the second user's profile, and a reciprocal link from the second user's "Followers" list back to the first user's profile (Compl. ¶116). The complaint provides a visual diagram showing this reciprocal relationship between a first user's profile page and a second user's profile page (Compl. ¶116, p. 34). The applications also include functionalities to search for and receive suggestions of other users to follow (Compl. ¶125).
  • The complaint alleges TikTok is a dominant social media application in the United States with over 150 million monthly users, and that CapCut is a popular companion video editing application (Compl. ¶¶100-101).

IV. Analysis of Infringement Allegations

  • U.S. Patent No. 11,763,316 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 or video from their device to be used as a profile picture or post, which the complaint defines as a "web asset" for the user's profile ("first web site"). ¶110 col. 27:60-65
receiving... an instruction to modify the web asset to generate an edited web asset; The user is presented with an editing screen (e.g., to crop a photo) and provides instructions to modify the selected asset. ¶111 col. 28:1-3
forwarding, to the first client device... one or more identifiers respectively associated with one or more previously-created websites...; The application displays a list of other user profiles ("previously-created websites") that the first user can choose to follow. A screenshot shows a list of users resulting from a search (Compl. ¶112, p. 26). ¶112 col. 28:7-14
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 user selects another user profile ("second website") by tapping a "Follow" button, which the complaint alleges is the "first identification" to create a "first hyperlink." ¶113 col. 28:15-21
modifying, based upon the first information... the first web site to include the first hyperlink; The system modifies the first user's profile to reflect that they are now following the second user (e.g., the second user appears in the "Following" list). ¶116 col. 29:6-9
modifying, based upon the first information... the second web site to include a reciprocal second hyperlink to the first web site; The system concurrently modifies the second user's profile to reflect they have a new follower (e.g., the first user appears in the "Followers" list). A screenshot diagram illustrates this two-way linking (Compl. ¶116, p. 34). ¶116 col. 29:10-14
  • U.S. Patent No. RE45,971 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 an account ("registers") with the application's server system. A screenshot shows a "Sign up for TikTok" screen (Compl. ¶147, p. 60). ¶147 col. 14:1-3
receiving, by the website implementation system, a request by a first user to implement the first website; A first user creates their own account and profile ("first website"). ¶148 col. 14:4-6
receiving, by the website implementation system, 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 the complaint alleges constitutes selecting the "second functional marketing element." ¶149 col. 14:7-10
implementing the reciprocal arrangement by causing (i) the first website to implement the first functional marketing element, and (ii) the second website to implement the second functional marketing element... The system establishes the mutual "following" and "follower" relationship, which the complaint alleges are the first and second "functional marketing elements." A diagram shows these reciprocal links between the two user profile pages (Compl. ¶151, p. 65). ¶151 col. 14:14-25
  • Identified Points of Contention:
    • Scope Questions: A primary question may be whether a user "profile" within a native mobile application environment constitutes a "web site" or "web page" as those terms were understood in the context of the patent's 2000 priority date, which focused on HTML and internet browsers. Similarly, it raises the question of whether a "follow" function that updates a database relationship is equivalent to the claimed "hyperlink" or "functional marketing element" inserted into a web page document.
    • Technical Questions: What evidence does the complaint provide that the accused applications "modify" the first and second "web sites" themselves, as recited in Claim 1 of the ’316 Patent? An open question for the court will be whether updating a central database from which two separate profiles are rendered constitutes "modifying" two distinct websites, or if this is a fundamentally different technical implementation.

V. Key Claim Terms for Construction

  • The Term: "web site" / "web page"

    • Context and Importance: The applicability of the entire patent portfolio to the accused mobile applications hinges on this definition. Practitioners may focus on this term because if a user profile in TikTok is not a "web site," the infringement theory may fail at the outset.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patents describe the invention as relating to "creating and posting web pages to the internet" and "developing electronic documents," suggesting the specific format is less important than the function of presenting user-created information online (’971 Patent, Title; ’316 Patent, col. 1:25-29).
      • Evidence for a Narrower Interpretation: The specifications repeatedly reference specific web technologies like "HTML document," "server computer," and "browser," which could support an interpretation limited to the traditional World Wide Web architecture of the early 2000s (’316 Patent, col. 1:40-54).

  • The Term: "hyperlink" / "functional marketing element"

    • Context and Importance: This term is critical for determining whether the "follow" function in the accused apps meets a core claim limitation. The complaint alleges that a "Follow" button and the resulting entry in a "Following" list constitute these elements.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The ’316 patent describes "links" as "selectable commands" that, when selected, "cause the browser to access the particular website," suggesting a functional rather than structural definition (’316 Patent, col. 2:51-54). The complaint argues that "functional marketing element" and "hyperlink" have overlapping meanings (Compl. ¶44, fn. 14).
      • Evidence for a Narrower Interpretation: The background of the invention discusses these elements in the context of "banner ads" and links displayed on other websites for marketing purposes, potentially limiting the scope to traditional web-based advertising links rather than internal social networking functions (’316 Patent, col. 2:45-56).

VI. Other Allegations

  • Indirect Infringement: While not pleaded as separate counts, the prayer for relief seeks remedies for infringement under 35 U.S.C. § 271(b) and (c) (Compl. p. 116). The factual basis could be that Defendants provide the applications and instruct users (e.g., via the user interface) to perform the allegedly infringing steps of creating profiles and following other users, thereby inducing infringement.
  • Willful Infringement: The complaint alleges that Defendants had knowledge of the patents-in-suit based on notice provided in November 2022 regarding the allowed application that became the ’316 patent and the issued ’971 Patent. It further alleges notice of the issued ’316 patent as of September 19, 2023, and that Defendants’ infringement since then has been willful (Compl. ¶¶137-139, 166-168).

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

  • A core issue will be one of definitional scope: can terms such as "web site" and "hyperlink," rooted in the patent's 2000-era context of the HTML-based World Wide Web, be construed to cover "user profiles" and "follow" functions within modern, database-driven mobile applications?
  • A key technical question will be one of infringement mechanism: does the accused system's function of updating a central database to reflect a new "follower" relationship constitute the claimed method of "modifying" a first and second "web site" to include reciprocal links, or is there a fundamental mismatch in the technical operation?
  • A central validity question will be one of patent eligibility: given the complaint's focus on the prosecution history, the court will likely need to decide whether the claims are directed to the abstract idea of "reciprocal linking" or, as the patentee successfully argued to the USPTO, represent a patent-eligible technical improvement to computer and network functionality.