PTAB

IPR2022-00181

Triller Inc v. TikTok Pte Ltd

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method Of Enabling Digital Music Content To Be Downloaded To And Used On a Portable Wireless Computing Device
  • Brief Description: The ’430 patent describes a social networking system implemented on a portable wireless computing device. The system features a software application that allows users to create profiles, interact with other users, and share information about music using track metadata that is external to the actual music files.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Applicant's Own Publication - Claims 1, 19, 23, 24, and 28 are anticipated by or obvious over Knight 2010.

  • Prior Art Relied Upon: Knight 2010 (Application # 2010/0031366).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the challenged claims were not entitled to their claimed May 2007 priority date because critical limitations—specifically "track meta-data that is formed as a separate meta-data layer" and the "multithreaded architecture" of claim 24—were not disclosed in the priority document. This loss of priority allegedly made the applicant's own published application, Knight 2010, which published in February 2010, intervening prior art under 35 U.S.C. §102. Petitioner contended that Knight 2010 disclosed every limitation of the challenged claims, often in haec verba, as it was the very publication of the application that introduced the disputed limitations. For example, claim 56 of Knight 2010 was cited as expressly teaching the "separate meta-data layer" limitation of claims 1 and 28, and claim 52 was cited as teaching the "multithreaded architecture" of claim 24.
    • Key Aspects: The core of this ground rested on a technical argument about lack of written support in the priority application, which, if successful, would make the patentee's own subsequent publication invalidating prior art.

Ground 2: Obviousness over Social Networking and Music Distribution References - Claims 1, 19, 23, and 28 are obvious over Abrams in view of Khedouri.

  • Prior Art Relied Upon: Abrams (Application # 2005/0021750) and Khedouri (Application # 2006/0008256).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Abrams taught a social network implemented on a computerized network, accessible via portable wireless devices like cellular telephones. Abrams disclosed core social networking functions recited in the claims, such as creating user accounts with profiles, viewing other users' profiles, exchanging messages, and linking user accounts via friend requests. Khedouri was argued to supply the music-specific features. Khedouri described a system for distributing digital music to portable wireless devices, allowing users to search, browse, and share music content and its associated metadata. Critically, Khedouri disclosed using track metadata (e.g., artist, song name) that was separate and external to the music files, enabling browsing without distributing the files themselves.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Abrams’ established social networking framework with Khedouri’s music-sharing architecture. Abrams already disclosed that user profiles could include information about favorite music. A POSITA would have been motivated to integrate Khedouri’s functionality to enhance this feature, allowing users to not just list favorite music but also actively search for and listen to it, thereby improving the social network in a desirable and predictable way.
    • Expectation of Success: The combination involved applying a known technique (Khedouri's music sharing) to a similar system (Abrams' social network) to yield predictable results.

Ground 3: Obviousness over an Alternative Combination - Claims 1, 19, 23, and 28 are obvious over Abrams in view of Partovi.

  • Prior Art Relied Upon: Abrams (Application # 2005/0021750) and Partovi (Patent 8,572,169).
  • Core Argument for this Ground:
    • Prior Art Mapping: As in the previous ground, Abrams was relied upon for its disclosure of a social network on portable devices with features like user profiles, friends, and messaging. Partovi was presented as teaching a system for music discovery within a social network. Partovi explicitly disclosed a client computer (which could be a mobile phone) having a music library database separate from the actual media files. This database contained metadata like song, artist, and album information, which was used to provide music recommendations and allow users to browse friends' music tastes. This architecture inherently made the track metadata external to the music track files.
    • Motivation to Combine: A POSITA would have been motivated to integrate Partovi’s specialized music discovery system into the general social network of Abrams. Doing so would predictably improve Abrams’ system by providing a more robust and interactive music-sharing experience, a known desirable feature for social networks at the time.
    • Expectation of Success: Combining Partovi's music-focused social features with Abrams' general social networking platform was a straightforward integration of complementary technologies with a high expectation of success.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 24, arguing it would have been obvious to use a multithreaded architecture (based on the general knowledge of a POSITA, as evidenced by the Java Threads textbook) to balance the computational demands of the combined Abrams and Khedouri system.

4. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Entitlement: The central technical contention enabling Ground 1 was that the challenged claims were not entitled to the May 2007 priority date of the parent PCT application. Petitioner argued that the phrase "track meta-data that is formed as a separate meta-data layer" and the "multithreaded architecture" of claim 24 constituted new matter added in a 2008 amendment, as these concepts were not disclosed in the 2007 PCT application. This technical position, if accepted, would shift the critical date of the patent forward, making the applicant's own 2010 publication (Knight 2010) invalidating prior art.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. It contended that a stay in the parallel district court litigation was likely, as the presiding judge regularly grants such stays pending IPR. Furthermore, no trial date had been set, and very little investment had been made in the litigation by the court or the parties, mitigating any concerns about efficiency and overlap.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 19, 23, 24, and 28 of the ’430 patent as unpatentable.