Triller, Inc.

Patent Trials and Appeals Board

Oct 12, 2021

IPR2021-00774 (P.T.A.B. Oct. 12, 2021)

Trials@uspto.gov Paper 6
Tel: 571-272-7822 Date: October 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

BYTEDANCE LTD. and TIKTOK INC.,
Petitioner,
v.
TRILLER, INC.,
Patent Owner.

IPR2021-00774
Patent 9,691,429 B2

Before GEORGIANNA W. BRADEN, MINN CHUNG, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

IPR2021-00774
Patent 9,691,429 B2
2
On April 9, 2021, ByteDance Ltd. and TikTok Inc. (collectively
“Petitioner”) filed a Petition requesting inter partes review of claims 11–19
of U.S. Patent No. 9,691,429 B2 (Ex. 1001, “the ’429 patent” or “the
challenged patent”). Paper 2 (“Pet.”). Triller, Inc. (“Patent Owner”) filed a
Preliminary Response. Paper 5 (“Prelim. Resp.”).
We may institute an inter partes review if the information presented
in the Petition and the Preliminary Response shows that there is a reasonable
likelihood that Petitioner would prevail with respect to at least one of the
challenged claims. See 35 U.S.C. § 314. However, the Board has discretion
to deny a petition even when a petitioner meets that threshold. Id.; see, e.g.,
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
agency’s decision to deny a petition is a matter committed to the Patent
Office’s discretion.”). The PTAB’s Trial Practice Guide identifies
considerations that may warrant exercise of this discretion. Consolidated
Trial Practice Guide (Nov. 2019) (“Consolidated TPG”),1 55–63.
Having considered the parties’ submissions, we determine that it is
appropriate in this case to exercise our discretion to deny institution of inter
partes review pursuant to 35 U.S.C. § 314(a).
I. BACKGROUND
A. Related Matters
The parties identify two district court litigations that involve (or
involved) the ’429 patent: Triller, Inc. v. ByteDance, Inc., Case No. 6:20-
cv-00693 (W.D. Tex.), and ByteDance, Inc., v. Triller, Inc., Case No. 3:20-
cv-07572 (N.D. Cal.). Pet. 75; Paper 4 (Patent Owner Mandatory Notice), 2.

1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2021-00774
Patent 9,691,429 B2
3
The parties also identify IPR2021-00099 (Pet. 75–76; Paper 4, 2), in
which Petitioner challenges claims 1–10 of the ’429 patent. See ByteDance
Ltd. v. Triller, Inc., IPR2021-00099, Paper 8 (PTAB Apr. 21, 2021) (“’099
Institution Decision”). That proceeding is pending, and we address it in
more detail below.
B. Real Parties in Interest
Petitioner identifies ByteDance Ltd., ByteDance Inc., TikTok Inc.,
and TikTok Pte. Ltd. as real parties-in-interest. Pet. 75. Patent Owner
identifies itself as a real party-in-interest, and Patent Owner notes that
“Triller Holdco LLC is the parent corporation to Triller, Inc.” Paper 4, 2.
C. The Petition’s Asserted Challenges to Patentability
Petitioner asserts the following challenges to patentability (Pet. 1–2):
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
11–16 1032 Hozumi,3 Herberger4
17 103 Hozumi, Yamamoto5
18, 19 103 Hozumi, Yamamoto, Herberger

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
Because the challenged patent was filed before March 16, 2013, we refer to
the pre-AIA version of Section 103.
3 US 2012/0148208 A1, published June 14, 2012 (Ex. 1005).
4 US 7,512,886 B1, issued March 31, 2009 (Ex. 1022).
5 US 2012/0076357 A1, published March 29, 2012 (Ex. 1023).
IPR2021-00774
Patent 9,691,429 B2
4
D. Summary of the ’429 Patent
The ’429 patent relates to “creating music videos that are
synchronized to an audio track.” Ex. 1001, 2:26–28. A plurality of “video
takes” may be captured via a user’s device and, while the plurality of video
takes are being captured, they may be synchronized with the audio track. Id.
at 2:34–37. For example, the audio track may play through the device’s
speakers while the device’s camera captures a video take. Id. at 14:49–64;
see id. at 10:19–21 (“By having the audio track playing while the various
video takes are captured, the video takes may be captured ‘in sync’ with the
audio track.”). A music video may then be created that includes the audio
track and at least a subset of the video takes already synchronized to that
audio track. Id. at 2:40–43. “The music video, in one embodiment,
combines the various video takes and the selected audio track into one
synchronized item . . . .” Id. at 22:20–24; see id. at 2:11–17 (desiring “music
video using portions of multiple video[] takes taken at different times and at
different locations that are automatically synchronized to a selected audio
track”).
E. Challenged Claims
In this proceeding, Petitioner challenges claims 11–19 of the ’429
patent. Of these, claims 11 and 17 are independent. Claim 11 recites:
11. A user device, comprising:
at least one audio input component;
at least one image capturing component;
memory for storing: an audio track recorded by the at least one
audio input component and a plurality of video takes captured
by the at least one image capturing component; and
at least one processor operable to:
IPR2021-00774
Patent 9,691,429 B2
5
determine, within the recorded audio track, at least one of
a vocal phrase and a melodic phrase; and
synchronize each video take of the plurality of captured
video takes to the recorded audio track as each video take
of the plurality of video takes is being captured, wherein
synchronizing further comprises playing, from a first
beginning, the selected audio track at substantially the
same time as a second beginning of capturing each video
take of the plurality of video takes; and
create a music video comprising the recorded audio track
and a portion of the plurality of captured video takes,
wherein creating comprises:
displaying the portion based on at least one of the
determined at least one vocal and one melodic
phrase.
Ex. 1001, 27:44–28:3.
II. DISCRETIONARY DENIAL
A. Summary of Relevant Facts
Over five months before this Petition was filed, on October 28, 2020,
Petitioner filed a petition seeking inter partes review of claims 1–10 of the
challenged patent. See ByteDance Ltd. v. Triller, Inc., IPR2021-00099 (the
“’099 IPR”), Paper 2 (“’099 Petition”). In that proceeding, Patent Owner
filed a preliminary response on February 17, 2021, and the Board instituted
trial on April 21, 2021. See ’099 Institution Decision. The ’099 IPR is
currently pending, and a final written decision is due in approximately six
months. See 35 U.S.C. § 316(a)(11).
Petitioner filed this Petition on April 9, 2021 (Paper 3)—over seven
weeks after Patent Owner’s preliminary response in the ’099 IPR, but before
the Board’s institution decision—to seek review of the rest of the patent’s
claims. The ’429 patent includes three independent claims, and nineteen
IPR2021-00774
Patent 9,691,429 B2
6
total claims. Independent claim 1 and its dependent claims are challenged in
the ’099 IPR, and the instant Petition challenges independent claims 11
and 17 and their respective dependent claims.
The distinct claim sets challenged in the two petitions have
overlapping claimed subject matter. All three of the independent claims of
the ’429 patent recite selecting an audio track, capturing a plurality of video
takes, and creating a music video that includes the audio track and some
portion of the plurality of video takes. See Ex. 1001, 26:55–27:6 (claim 1),
27:44–28:3 (claim 11), 28:34–53 (claim 17). In addition, all three
independent claims include a “beginning-beginning synchronization
requirement”:
synchronizing each video take of the plurality of captured video
takes with the selected audio track while each video take of the
plurality of video takes is being captured, wherein synchronizing
further comprises playing, from a first beginning, the selected
audio track at substantially the same time as a second beginning
of capturing each video take of the plurality of video takes
Ex. 1001, 26:60–67 (claim 1), 27:54–61, 28:40–46 (substantially similar
requirements in claims 11 and 17).
But each independent claim also includes limitations not found in the
other two. See Pet. 71–72. Specifically, claim 1 specifies that the music
video “compris[es] at least two video takes.” Ex. 1001, 27:3–6. Claim 11
specifies that the audio track is “recorded by [an] audio input component” in
a user device, and that a processor in the device is operable to determine “at
least one of a vocal phrase and a melodic phrase” in the audio and to display
a portion of the plurality of video takes based on that determination. Id.
at 27:47–48, 27:52–53, 28:1–3. Claim 17 requires determining “a number of
faces within each video take . . . while each take . . . is being captured” and
IPR2021-00774
Patent 9,691,429 B2
7
“displaying the subset of the plurality of captured video takes based on the
[determined] number of faces.” Id. at 28:37–39, 28:51–53. Other than these
differences, the independent claims largely include commensurate
limitations.
The two petitions likewise include overlapping contentions. In
particular, both the instant Petition and the ’099 Petition rely on Hozumi for
the claim limitations common to the independent claims. See generally Pet.;
’099 Petition 30–50. Both petitions specifically contend that Hozumi
teaches or suggests the beginning-beginning synchronization requirement.
See Pet. 26–34; ’099 Petition 33–38, 46–49. In the ’099 IPR, the Board
expressed concerns regarding the sufficiency of Petitioner’s showing
regarding Hozumi. See ’099 Institution Decision 37–42, 45.
B. Analysis
Institution of inter partes review is discretionary. See Cuozzo, 136 S.
Ct. at 2140 (“[T]he agency’s decision to deny a petition is a matter
committed to the Patent Office’s discretion.”); Harmonic Inc. v. Avid Tech.,
Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but
never compelled, to institute an IPR proceeding.”).
Patent Owner argues that we should exercise our discretion to deny
institution based on the General Plastic factors. Prelim. Resp. 44–51 (citing
General Plastic Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19
(PTAB Sept. 6, 2017) (precedential as to § II.B.4.i) (“General Plastic”)). In
General Plastic, the Board set forth seven non-exhaustive factors to be
considered when determining whether to permit a “follow-on” petition
challenging the same patent:
IPR2021-00774
Patent 9,691,429 B2
8
1. whether the same petitioner previously filed a petition
directed to the same claims of the same patent;
2. whether at the time of filing of the first petition the petitioner
knew of the prior art asserted in the second petition or should
have known of it;
3. whether at the time of filing of the second petition the
petitioner already received the patent owner’s preliminary
response to the first petition or received the Board’s decision on
whether to institute review in the first petition;
4. the length of time that elapsed between the time the petitioner
learned of the prior art asserted in the second petition and the
filing of the second petition;
5. whether the petitioner provides adequate explanation for the
time elapsed between the filings of multiple petitions directed
to the same claims of the same patent;
6. the finite resources of the Board; and
7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
determination not later than 1 year after the date on which the
Director notices institution of review.
General Plastic, Paper 19 at 15–16.
Petitioner argues that “subsequent Board decisions found denial under
General Plastic inappropriate where, as here, a second petition exclusively
challenges claims that were not addressed in the first petition.” Pet. 70–71
(citing Mercedes-Benz v. Carucel, IPR2019- 01644, Paper 9 at 12 (PTAB
Mar. 26, 2020) (“Mercedes-Benz”); Signify Holding B.V. v. Lighting Sci.
Grp. Corp., IPR2020-00753, Paper 16 at 13–14 (PTAB Sept. 16, 2020)
(“Signify Holding”)). Petitioner contends that, because the Petition
challenges claims that were not previously challenged, at least General
Plastic factors 1, 2, 4 and 5 “favor institution,” as demonstrated by the
Board’s decisions in Mercedes-Benz and Signify Holding. Pet. 71–73.
IPR2021-00774
Patent 9,691,429 B2
9
Patent Owner disagrees with Petitioner’s assertion that General
Plastic is “categorically inapplicable” in this situation. Prelim. Resp. 45–46.
In support, Patent Owner points to another Board decision that
discretionarily denied a petition “in light of the overlap of references and
issues involved, despite the fact that ‘different claims [were] involved.’” Id.
at 46 (alteration in original) (quoting Fujifilm Corp. v. Sony Corp., IPR2018-
00060, Paper 8 at 7–9 (PTAB Apr. 19, 2018) (“Fujifilm”)). In addition,
Patent Owner argues that Mercedes-Benz and Signify Holding are
distinguishable on their facts. Id. at 47.
We agree with Patent Owner that the General Plastic framework is
applicable to this situation. Indeed, in each of the cases cited by Petitioner,
the Board evaluated the General Plastic factors when considering a second
petition challenging different claims of the same patent. See Signify
Holding, Paper 16 at 11–15; Mercedes-Benz, Paper 9 at 10–15; see also
Fujifilm, Paper 8 at 7–9.
Also, we disagree with Petitioner’s contention that two of our cases
(Mercedes-Benz and Signify Holding) demonstrate that a majority of the
General Plastic factors weigh in favor of institution. See Pet. 71–73. First,
these cases are non-precedential decisions of the Board and are not binding
on this panel. Second, both cases are readily distinguishable. In Signify
Holding, “only 29 days elapsed between the filing of the[] two petitions,”
and there was a lack of overlapping subject matter between the claim sets
challenged in the two petitions. Signify Holding, Paper 16 at 13. As noted
above, however, this Petition was filed over five months after the earlier
petition, and there are significant overlaps in claimed subject matter. In
Mercedes-Benz, the petitioner explained that a second petition was being
IPR2021-00774
Patent 9,691,429 B2
10
filed “due to Patent Owner’s assertion of claims in the district court
infringement action,” the challenged patent included 67 claims, and the
Board was persuaded that “this [was] one of those cases” where more than
one petition was necessary. Mercedes-Benz, Paper 9 at 7, 10–11. Here,
however, Petitioner provides no explanation for the second petition or its
timing, and the challenged patent includes nineteen, unremarkable claims.
A closer analogy can be found in the Board’s non-precedential
decision in Longi Green Energy Technology Co. v. Hanwha Solutions Corp.,
IPR2020-00047, Paper 18 (PTAB Apr. 27, 2020). In Longi, a petitioner
filed a first petition challenging just three claims, and then, approximately
six weeks after receiving the preliminary response, the petitioner filed a
second petition challenging another thirteen claims using many of the same
references. Paper 18 at 8–10. The Board evaluated the General Plastic
factors and, ultimately, decided to exercise discretion to deny the petition.
Longi, Paper 18 at 8–15.
With that background and context, we consider each of the General
Plastic factors in this proceeding.
1. Factor 1: whether the same petitioner previously filed a
petition directed to the same claims of the same patent
Petitioner previously filed a petition directed to the ’429 patent (in
the ’099 IPR), but that petition was directed to a different claim set.
Although there is overlap in the claimed subject matter involved, Petitioner
does not challenge any claim previously challenged.
Accordingly, we determine that this factor weighs against exercising
our discretion to deny institution.
IPR2021-00774
Patent 9,691,429 B2
11
2. Factors 2: whether at the time of filing of the first petition
the petitioner knew of the prior art asserted in the second
petition or should have known of it
The Petition relies on Hozumi in combination with Herberger and/or
Yamamoto. See Pet. 1 (table of grounds). The Hozumi reference is also
asserted in the ’099 IPR, so Petitioner knew of that reference when it filed
the first petition. Regarding the secondary references, Petitioner states that it
“prepared and filed the present Petition after searching revealed the
additional prior art used to address claims 11–19 (i.e., the Herberger and
Yamamoto references).” Pet. 73. Petitioner, however, does not state when
Herberger and Yamamoto were located. Indeed, Petitioner does not aver
affirmatively that the references were found after filing the ’099 Petition.
Thus, Petitioner’s statement would be accurate if the references were found
“after searching” but before filing the ’099 Petition. See id.
Accordingly, this factor weighs in favor of invoking our discretion to
deny institution.
3. Factor 3: whether at the time of filing of the second petition
the petitioner already received the patent owner’s
preliminary response to the first petition or received the
Board’s decision on whether to institute review in the first
petition
Petitioner argues that this factor favors institution because “the claims
challenged in this Petition, the grounds proposed in this Petition, and the
prior art relied upon therein are unique, and are not addressed in the
IPR2021-00099 Petition.” Pet. 73–74. Moreover, Petitioner asserts that
“the application of the Hozumi reference to overlapping limitations of
claims 1–19 is substantially the same in both petitions, and was not updated
based on arguments in the Patent Owner Preliminary Response.” Id. at 73.
IPR2021-00774
Patent 9,691,429 B2
12
Patent Owner argues that its preliminary response in the ’099 IPR
“explained why Hozumi does not disclose a ‘plurality of video takes’
meeting the beginning-beginning synchronization requirement.” Prelim.
Resp. 46. According to Patent Owner, the Board agreed with Patent Owner
in the ’099 Institution Decision, and “[t]o the extent” the Petition includes
the same analysis, “there is no reason to come to any different conclusion
about Hozumi.” Id. at 46–47. Patent Owner also argues that, “[t]o the
extent Petitioners have included additional analysis in this Petition” that
would affect the Board’s finding, “the policies of General Plastic
highlighting the unfairness of successive petitions against a single patent are
in full force.” Id. at 46; see also id. at 48–49.
On this record, we have some “road mapping” concerns. Although
Patent Owner identifies no relevant differences between the instant Petition
and the ’099 Petition, Petitioner fails to provide any explanation for why the
instant Petition was filed nearly two months after receiving Patent Owner’s
preliminary response in the ’099 IPR. This fact pattern is troubling because
there are significant overlaps in the subject matter recited in the challenged
claims and because Hozumi is a primary reference in both proceedings. But
Petitioner did not have the benefit of the ’099 Institution Decision (and the
concerns articulated therein) at the time it filed the instant Petition.
Accordingly, this factor weighs slightly in favor of invoking our
discretion to deny institution.
IPR2021-00774
Patent 9,691,429 B2
13
4. Factors 4 and 5: the length of time that elapsed between the
time the petitioner learned of the prior art asserted in the
second petition and the filing of the second petition; and
whether the petitioner provides adequate explanation for the
time elapsed between the filings of multiple petitions
directed to the same claims of the same patent
As noted above, Petitioner knew of the Hozumi reference when it
filed the ’099 Petition, and Petitioner does not reveal when it learned of the
Herberger and Yamamoto references. Petitioner contends that the two
petitions challenge distinct claim sets, but does not provide any other
explanation for the filing of two petitions or the time elapsed between them.
See Pet. 71–72. Moreover, as noted above, we determine that the overlap in
claimed subject matter and contentions between the two petitions is
significant. On these facts, we are not persuaded that the five-month delay
was justified.
Accordingly, these factors weigh in favor of invoking our discretion
to deny institution.
5. Factors 6 and 7: the finite resources of the Board; and the
requirement under 35 U.S.C. § 316(a)(11) to issue a final
determination not later than 1 year after the date on which
the Director notices institution of review
In view of the substantial overlap between the prior art references and
claim limitations in the ’099 IPR and the present Petition, the most efficient
way to manage the two inter partes reviews would be to coordinate or
consolidate the proceedings and adopt a common schedule. This might have
been possible had Petitioner filed the present Petition at the same time, or
shortly after, the ’099 Petition. But Petitioner waited five months to file this
Petition, and it is no longer feasible for the Board to adjust due dates to
IPR2021-00774
Patent 9,691,429 B2
14
coordinate the proceedings while still meeting the statutory mandate to issue
a final written decision in the ’099 IPR by April 21, 2022 (approximately six
months after this Decision). Thus, instituting a second inter partes review
would require an entirely separate proceeding involving numerous issues
that likely will already have been considered and resolved in the ’099 IPR.
Our task would be complicated by the fact that the proceedings would have
different evidentiary records. Moving forward with separate proceedings
involving overlapping issues, but having different evidentiary records and
schedules, would have a significant impact on the Board’s resources.
Accordingly, these factors weigh slightly in favor of invoking our
discretion to deny institution.
6. Other Considerations
As noted above, the General Plastic factors are non-exhaustive, and
other considerations may be relevant to the question of whether the Board
should decline to institute trial. That is particularly the case here, where the
facts do not align completely with the fact pattern of General Plastic, which
addressed a “follow-on” petition challenging the same claims of the same
patent (also known as a serial petition). Because the same Petitioner
challenges different claims in this second Petition, our analysis is informed
by those cases in which a petitioner files multiple petitions challenging the
same patent at the same time (also known as parallel petitions). The
Consolidated Trial Practice Guide provides the following guidance:
Based on the Board’s experience, one petition should be
sufficient to challenge the claims of a patent in most situations.
Two or more petitions filed against the same patent at or about
the same time (e.g., before the first preliminary response by the
patent owner) may place a substantial and unnecessary burden
IPR2021-00774
Patent 9,691,429 B2
15
on the Board and the patent owner and could raise fairness,
timing, and efficiency concerns. . . .
Nonetheless, the Board recognizes that there may be
circumstances in which more than one petition may be
necessary, including, for example, when the patent owner has
asserted a large number of claims in litigation or when there is a
dispute about priority date requiring arguments under multiple
prior art references. In such cases two petitions by a petitioner
may be needed, although this should be rare.
Consolidated TPG 59.
Petitioner has not explained why it could not have raised all of its
challenges to the claims of the ’429 patent in a single petition, and we are
not persuaded that the facts justify two petitions. The ’429 patent includes
three independent claims and nineteen total claims, and these claims are
neither unusually complex nor lengthy. The two petitions include significant
overlaps in claimed subject matter and substantive contentions.
Furthermore, even if there were a justification for two petitions, Petitioner
does not explain why it did not file those two petitions on or around the
same time.
Accordingly, these considerations weigh in favor of exercising our
discretion to deny institution.
7. Conclusion
We have considered the circumstances and facts before us in view of
the General Plastic factors and the guidance provided in the Consolidated
Trial Practice Guide. No single factor is determinative of whether we
exercise our discretion to deny institution under § 314(a), but having
evaluated all of the factors on this record, we exercise our discretion under
§ 314(a) to deny institution of inter partes review.
IPR2021-00774
Patent 9,691,429 B2
16
III. ORDER
It is:
ORDERED that the Petition is denied; and
FURTHER ORDERED that the requested inter partes review is not
instituted with respect to claims 11–19 of the ’429 patent.

IPR2021-00774
Patent 9,691,429 B2
17
FOR PETITIONER:

Walter Renner
Dan Smith
Kim Leung
FISH & RICHARDSON P.C.
Axf-ptab@fr.com
dsmith@fr.com
leung@fr.com

FOR PATENT OWNER:

Chad E. Nydegger
David R. Todd
Brian N. Platt
WORKMAN NYDEGGER
cnydegger@wnlaw.com
dtodd@wnlaw.com
bplatt@wnlaw.com