DCT

1:24-cv-00763

DiStefano Website Innovations LLC v. ByteDance Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-00763, W.D. Tex., 07/08/2024
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas based on Defendants' substantial business in the district, including a significant office lease in Austin for TikTok Ltd., and the "Project Texas" initiative, a $1.5 billion corporate restructuring plan that involves Austin-based Oracle Corporation as a key technology partner for storing U.S. user data.
  • Core Dispute: Plaintiff alleges that Defendants’ social media and video editing applications—TikTok, CapCut, and Lemon8—infringe five U.S. patents related to systems for creating and modifying websites, managing user-uploaded content, and establishing reciprocal hyperlinks between user-generated web pages.
  • Technical Context: The patents relate to GUI-based tools that simplify the process of website creation for non-technical users, with a specific focus on automating the creation of mutual links between different user sites for marketing and connectivity purposes.
  • Key Procedural History: The patents-in-suit all claim priority to an application filed in June 2000. The complaint highlights the prosecution history of the most recent patent ('316), noting that the applicant successfully argued to the USPTO that the claimed invention was a specific technical solution to an "Internet-centric problem" and not merely an abstract idea, which may be relevant to potential patent eligibility challenges under 35 U.S.C. § 101. The complaint also alleges pre-suit notice for at least two of the asserted patents.

Case Timeline

Date Event
2000-06-07 Earliest Priority Date for all Patents-in-Suit
2013-04-02 U.S. Patent No. 8,412,570 Issues
2013-11-19 U.S. Patent No. 8,589,222 Issues
2015-03-31 U.S. Patent No. 8,996,398 Issues
2016-04-12 U.S. Patent No. RE45,971 Issues
2018-01-01 TikTok App Launches in the United States
2020-04-10 CapCut App Released Worldwide
2023-02-01 Lemon8 App Launches in the United States
2023-09-19 U.S. Patent No. 11,763,316 Issues
2024-07-08 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 Sep. 19, 2023)

The Invention Explained

  • Problem Addressed: The patent’s background section describes the difficulty faced by average individuals with "little or no knowledge about how to create a web page," who do not know how to create or post an HTML document to a server (’316 Patent, col. 2:5-10; Compl. ¶34).
  • The Patented Solution: The invention is a server-based method that provides a graphical user interface (GUI) to simplify web page creation. A user can select a "web asset" (e.g., an image), modify it, and then the system presents a list of other previously-created websites. The user can select one of these websites, and the system automatically generates a hyperlink from the user's new site to the selected site, and critically, also modifies the selected site to include a "reciprocal second hyperlink" back to the user's site (’316 Patent, Abstract; Fig. 2).
  • Technical Importance: This approach streamlines the creation of mutual links between web pages by allowing a single, centralized system to create and serve both the initial and reciprocal links, which the complaint alleges "eliminates the need for the reciprocal link enforcement" mechanisms required by prior art systems (Compl. ¶67).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶108).
  • The essential elements of Claim 1 include:
    • A method performed by a server system for modifying and serving web pages.
    • 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 to the user identifiers associated with other previously-created websites.
    • Receiving from the user a selection of a second website to create a first hyperlink from the first site to the second site.
    • Storing information confirming receipt of 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" to the first website.
    • Serving the modified first website.
  • The complaint also asserts dependent claims 3-9, 11, and 13 (Compl. ¶135).

U.S. Patent No. RE45,971: “Developing electronic documents providing e-commerce tools” (Issued Apr. 12, 2016)

The Invention Explained

  • Problem Addressed: The patent addresses the technical challenges non-programmers face in creating websites with marketing and e-commerce features, which often require difficult-to-arrange contractual and payment agreements to establish advertising links on other websites (’316 Patent, col. 2:45-59).
  • The Patented Solution: The invention provides a "website implementation system" that automates the creation of a "reciprocal arrangement" between two websites. A first user creating a new website can select a "functional marketing element" (e.g., a link) to be placed on a preexisting second website. Upon activation, the system implements this element and also establishes a "reciprocal site" on the first user's website that links back to the second website, creating a mutual marketing relationship (’971 Patent, Abstract).
  • Technical Importance: The USPTO, during prosecution, found this approach to be an inventive concept that solved an "Internet-centric problem of enabling users, with little or no programming knowledge, to interact with a GUI to create a website ... that link[s] to other websites over the internet" (Compl. ¶60).

Key Claims at a Glance

  • The complaint asserts independent Claims 4 and 8 (Compl. ¶¶ 143, 151).
  • The essential elements of Claim 4 include:
    • A method for establishing a reciprocal arrangement between a first website and a preexisting second website.
    • Registering the second website with the implementation system.
    • Receiving a request from a first user to implement the 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."
    • Upon website activation, the system implements the arrangement by causing the first site to implement the first element and the second site to implement the second element.
    • The first element directs users to the second website, and the second element directs users back to the first website.
  • The complaint also asserts dependent claims 9 and 12-13 (Compl. ¶163).

Multi-Patent Capsule: U.S. Patent No. 8,996,398

  • Patent Identification: U.S. Patent No. 8,996,398, “Reciprocal insertion of links for web pages,” Issued Mar. 31, 2015 (Compl. ¶48).
  • Technology Synopsis: This patent describes a method for creating reciprocal links between two web pages associated with different entities. The system inserts a first "functional identification element" (link) on the first page pointing to the second, and "reciprocally" inserts a second link on the second page pointing back to the first (Compl. ¶173).
  • Asserted Claims: Independent Claim 1; dependent claims 2-6 and 8 (Compl. ¶189).
  • Accused Features: The "follow" functionality in the TikTok and CapCut applications, where one user following another is alleged to create reciprocal links between their respective profile pages (Compl. ¶174).

Multi-Patent Capsule: 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 Nov. 19, 2013 (Compl. ¶49).
  • Technology Synopsis: This patent claims a method where a server receives an image from a first user, generates web pages for both the first and a second user, and then inserts reciprocal "functional marketing elements" (links) between them. The link on the second user's page pointing back to the first user includes the image uploaded by the first user (Compl. ¶196).
  • Asserted Claims: Independent Claim 1; dependent claims 2-6 (Compl. ¶211).
  • Accused Features: The user profile and "follow" systems in TikTok and CapCut, where a user's uploaded profile picture is allegedly included as part of the reciprocal link element on the pages of users who follow them (Compl. ¶¶ 197, 200).

Multi-Patent Capsule: 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 Apr. 2, 2013 (Compl. ¶50).
  • Technology Synopsis: This patent covers a method where a computer system provides a first user with "at least one recommended website" to link to. The system then inserts a link on the first user's site to the recommended site and reciprocally inserts a link on the recommended site back to the first user's site (Compl. ¶218).
  • Asserted Claims: Independent Claim 1; dependent claims 2-8 and 10 (Compl. ¶240).
  • Accused Features: User recommendation features in the TikTok and CapCut apps, such as "suggested accounts," which allegedly provide recommended web pages (user profiles) for the creation of reciprocal links (Compl. ¶222).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the TikTok, CapCut, and Lemon8 mobile applications and their associated server systems (Compl. ¶97).

Functionality and Market Context

The complaint describes the accused products as applications that allow users to create and share content. The allegedly infringing functionality centers on the creation of user profiles, which the complaint defines as "websites" or "web pages," and the "follow" mechanism, which it defines as the creation of reciprocal hyperlinks (Compl. ¶¶ 109, 112, 115). For example, when a first user creates a profile (the "first web site") and "follows" a second user with a pre-existing profile (the "second web site"), the complaint alleges this action creates a link from the first profile to the second and a reciprocal link from the second profile back to the first (Compl. ¶115). The complaint provides a screenshot from the TikTok app showing a list of users, which it alleges are "identifiers respectively associated with one or more previously-created user websites" (Compl. p. 26). The applications are positioned as major players in the social media and video editing markets, with TikTok having over 150 million monthly active users in the U.S. (Compl. ¶¶ 98, 99).

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 associated with a first user and via a graphical user interface..., information indicating a selection of a web asset to be used in a first web site Defendants' servers receive a selection of a web asset, such as a photo for a profile, from a user's device via the app's GUI (Compl. p. 22). ¶109 col. 3:56-62
receiving... an instruction to modify the web asset to generate an edited web asset The app's editing screen allows the user to provide instructions to modify the web asset, for example, by cropping a photo or adding bio text (Compl. p. 24). ¶110 col. 4:11-14
forwarding, to the first client device..., one or more identifiers respectively associated with one or more previously-created websites that were previously-created by one or more other users... The apps display lists of other user profiles (e.g., in search results or "suggested accounts"), which are alleged to be identifiers for previously-created websites (Compl. p. 26). ¶111 col. 12:14-24
receiving... a first identification indicating a selection of a second website... to create a first hyperlink from the first web site to the second web site A user's selection of a "Follow" button next to another user's profile is alleged to be the first identification indicating the selection of the second website to create a hyperlink (Compl. p. 28). ¶112 col. 12:45-53
modifying, based upon the first information... the second web site to include a reciprocal second hyperlink to the first web site After a user "follows" another, the system allegedly modifies the followed user's profile to include a reciprocal link, evidenced by the follower appearing in the "Followers" list of the followed user (Compl. p. 34). ¶115 col. 4:1-3

Identified Points of Contention

  • Scope Questions: A central dispute may be whether a user profile within a mobile application constitutes a "web site" as understood in the patent, which was filed in 2000 and describes creating HTML documents for the World Wide Web. This raises the question of whether the claim term can be construed to cover modern, app-based user content pages.
  • Technical Questions: Claim 1 requires the server system to "modify... the second web site" to include the reciprocal link. The complaint alleges this occurs when a first user's profile appears in a second user's "Followers" list (Compl. p. 34). A key technical question is whether this display reflects a direct modification of the second user's profile page data, or if it is a dynamically generated list based on a separate database of user relationships, which may not meet the "modifying" limitation as construed by a court.

U.S. Patent No. RE45,971 Infringement Allegations

Claim Element (from Independent Claim 4) Alleged Infringing Functionality Complaint Citation Patent Citation
A method... of establishing a reciprocal arrangement between a first website and a preexisting second website The "follow" functionality allegedly establishes a reciprocal arrangement where a first user's profile ("first website") links to a second user's profile ("second website"), and vice-versa (Compl. p. 59). ¶144 col. 3:15-20
registering the second website with the website implementation system A pre-existing user profile ("second website") is alleged to be registered with the system when the user creates their account (Compl. p. 60). ¶145 col. 4:26-30
receiving... a selection by the first user as to a second functional marketing element to be activated on the second website The first user's "follow" action is alleged to be a selection of a "second functional marketing element" (a link back to the first user's profile) that is to be activated on the second user's profile (Compl. p. 62). ¶147 col. 3:28-31
establishing... a reciprocal site in the first website for a first functional marketing element The system creates a link on the first user's "Following" list, which is alleged to be the "reciprocal site" for the "first functional marketing element" (the link to the second user's profile) (Compl. p. 64). ¶148 col. 3:32-34
...the first functional marketing element directs... a second user... to the second website, and the second functional marketing element directs... a third user... to the first website. A link in User A's "Following" list directs to User B's profile, and a link in User B's "Followers" list directs back to User A's profile, allegedly meeting this limitation (Compl. p. 66). ¶150 col. 4:11-18

Identified Points of Contention

  • Scope Questions: The infringement theory depends on construing a user-to-user link within a social network as a "functional marketing element." Defendants may argue this term, in the context of the patent's e-commerce focus, requires a commercial or advertising purpose that is absent in a simple "follow" action between non-commercial users.
  • Technical Questions: The claim requires the "computer website implementation system implementing the reciprocal arrangement." This raises a similar technical question as with the '316 patent: does the system actually modify two distinct "websites" (profiles), or does it simply update a central database of relationships that is then used to dynamically render "following" and "follower" lists on profile pages? The complaint's visual evidence shows the result (linked lists), but the underlying mechanism of "implementation" will be a key factual issue.

V. Key Claim Terms for Construction

The Term: "web site" / "web page"

  • Context and Importance: This is the foundational terminology for the entire case. Plaintiff's infringement theory equates a user profile within the TikTok, CapCut, or Lemon8 apps to a "web site" or "web page." The viability of all infringement allegations hinges on this construction.
  • Intrinsic Evidence for a Broader Interpretation: The '316 patent specification defines a web page as a document containing "content" and "markup" (’316 Patent, col. 1:42-44). Plaintiff may argue that a user profile, with its user-provided content (photos, videos, text) and application-defined markup (layout), fits this functional definition.
  • Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly frames the invention in the context of creating and posting "an HTML document" to a "server computer" for access on the "World Wide Web" (’316 Patent, col. 2:5-10). This language may support a narrower construction limited to traditional, browser-accessible websites, not content within a proprietary mobile application ecosystem.

The Term: "functional marketing element" / "functional identification element"

  • Context and Importance: These terms are central to the '971, '398, '222, and '570 patents. The complaint alleges that a hyperlink between user profiles, created by the "follow" function, meets this definition.
  • Intrinsic Evidence for a Broader Interpretation: The '971 patent abstract states the element "directs... a user... to the... website," a function a hyperlink performs. The complaint also asserts that there is a "substantial overlap" between this claimed term and the known terms of hyperlink, link, and URL (Compl. ¶43, fn. 12).
  • Intrinsic Evidence for a Narrower Interpretation: The patent's background links "marketing features" to e-commerce, advertising "banner ads," and overcoming the difficulty of arranging "contractual arrangements, including payment" (’316 Patent, col. 2:45-59). This suggests a commercial context that may not apply to a non-commercial "follow" between two individuals.

VI. Other Allegations

Indirect Infringement

The complaint includes general allegations of direct and/or indirect infringement for all asserted patents (Compl. ¶¶ 135, 163, 189, 211, 240). However, it does not plead specific facts to support the knowledge and intent elements required for induced or contributory infringement, such as references to user manuals or advertisements that instruct users on performing the allegedly infringing steps.

Willful Infringement

Willfulness is alleged for all five patents. The allegations for the '222 and '570 patents are based on alleged pre-suit knowledge via a "Notice Letter" (Compl. ¶¶ 212, 240). For the '316, '971, and '398 patents, the allegations are based on more general assertions of "knowledge of, or willful blindness to, the asserted claims" (Compl. ¶¶ 136, 164, 190).

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

  • A core issue will be one of definitional scope: can terms like "web site" and "functional marketing element," rooted in the patent family's priority date of 2000 and the context of the HTML-based World Wide Web, be construed to cover modern social media constructs like user profiles and "follow" links within a proprietary mobile application ecosystem?
  • A key evidentiary question will be one of technical mechanism: what is the underlying software architecture that creates reciprocal links in the accused apps? Does the server system directly "modify" the followed user's "web page" data structure as required by Claim 1 of the '316 patent, or does it update a separate relational database that profile pages then query, potentially creating a functional mismatch with the claimed method?