TikTok Inc v. NTECH Properties Inc

1. Case Identification

• Case #: IPR2024-01340
• Patent #: 8,145,704
• Filed: August 23, 2024
• Petitioner(s): TikTok Inc.
• Patent Owner(s): NTECH Properties, Inc.
• Challenged Claims: 1-24

2. Patent Overview

• Title: Generating Media Programming
• Brief Description: The ’704 patent discloses systems and methods for generating customized media programming for a client device. The core concept involves a distributed architecture comprising an "aggregator," which presents media options and receives user selections, and a separate "publisher," which generates and provides the custom media sequence to the user based on the selection and user data.

3. Grounds for Unpatentability

Ground 1: Obviousness over Whitehead - Claims 1-24 are obvious over Whitehead.

• Prior Art Relied Upon: Whitehead (Patent 8,555,318).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Whitehead discloses all limitations of the challenged claims. Specifically, Whitehead’s "content processing device 110" performs the functions of the claimed "aggregator" by providing a user interface for media selection. Whitehead’s "mixing server 130" performs the functions of the claimed "publisher" by receiving user selections and profile data, accessing algorithms, and assembling a custom media channel (a "temporal sequence of media programming") from various content sources. Petitioner asserted that Whitehead’s system generates these custom channels based on user profile information and delivers them to a client device, meeting the limitations of independent claims 1, 19, and 23.
  • Motivation to Combine (for §103 grounds): As this ground is based on a single reference, the argument centered on obvious modifications. For instance, Petitioner argued that even if Whitehead’s disclosed "content sources" were not explicitly "media streams" (e.g., continuous broadcast television), a Person of Ordinary Skill in the Art (POSITA) would have been motivated to use such well-known sources to maximize content variety and meet user expectations.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in using television channels as content sources, as Whitehead already disclosed a system for storing and processing media content from various sources in a media database.

Ground 2: Obviousness over Whitehead in view of Marcus ’904 - Claims 1-24 are obvious over Whitehead in view of Marcus ’904.

• Prior Art Relied Upon: Whitehead (Patent 8,555,318) and Marcus ’904 (Application # 2006/0015904).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Whitehead provided the foundational distributed architecture of an "aggregator" (content processing device) and a "publisher" (mixing server). Marcus ’904, which shares the same inventor and assignee as the challenged ’704 patent, was argued to supply any missing details regarding the selection, sequencing, and assembly of media elements. For example, Marcus ’904 explicitly disclosed a receiver that assembles a plurality of tagged media streams into programming, further rendering obvious that Whitehead’s content sources could be media streams.
  • Motivation to Combine: A POSITA would combine these references for several reasons. The combination would provide more content and advertising choices, improving user targeting and maximizing revenue. It would also improve the efficiency of Whitehead’s system by incorporating the more sophisticated content selection and concatenation algorithm from Marcus ’904. Furthermore, both references address the same field of art—generating custom media programming based on a user profile—making the combination logical and intuitive.
  • Expectation of Success: A POSITA would have a high expectation of success, as the proposed modification was a predictable software implementation that supplemented, rather than redesigned, Whitehead's existing architecture.

Ground 3: Obviousness over Cristofalo in view of Marcus ’904 - Claims 1-24 are obvious over Cristofalo in view of Marcus ’904.

• Prior Art Relied Upon: Cristofalo (Application # 2002/0152117) and Marcus ’904 (Application # 2006/0015904).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Cristofalo disclosed the claimed aggregator/publisher structure through its "receiving system 104" (aggregator) and "transmitting system 102" (publisher). The receiving system presents programming options and conveys user selections and profile data to the transmitting system, which in turn generates targeted programming. Marcus ’904 was asserted to provide the specific algorithms for selecting, ordering, and assembling media elements into a temporal sequence, which Cristofalo described at a higher level. Marcus ’904’s disclosure of assembling a primary stream with other elements like advertising was mapped to the claimed limitations of creating a sequence with a "selected media stream and other media elements."
  • Motivation to Combine: A POSITA would combine Cristofalo with Marcus ’904 to enhance Cristofalo’s system with more advanced and flexible customization. As network capacity increased post-Cristofalo, a POSITA would seek out technologies like Marcus ’904 to enable more granular, user-specific programming. Additional motivations included unlocking new revenue sources from niche content taught by Marcus ’904 and leveraging the fact that both references operate in the same field of custom media generation.
  • Expectation of Success: The combination was presented as a predictable software modification, as Cristofalo’s architecture already provided the framework for using profile information to customize programming, and Cristofalo explicitly acknowledged that its system could be modified as technology evolved.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is unwarranted because none of the asserted prior art references (Whitehead, Cristofalo, Marcus ’904) were considered by the examiner during prosecution. Petitioner emphasized that the Patent Owner failed to disclose its own Marcus ’904 reference, which is highly material.
• Petitioner further argued that discretionary denial under Fintiv is inappropriate. The parallel district court litigation was described as being in its infancy, with the complaint having only recently been served, no answer filed, no case schedule entered, and no trial date set. Given the early stage of the litigation and the early filing of the IPR petition (months before the statutory bar), Petitioner contended that the Fintiv factors strongly favor institution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’704 patent as unpatentable.