IP Law Daily, PATENT—Fed. Cir.: Invalidity of video-technology developer’s patent affirmed on appeal in win for TikTok, (Apr 1, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

District court correctly found that patent directed to a system for customizing or personalizing content based on user social network information was abstract and invalid.

In a non-precedential disposition, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s decision granting judgment on the pleadings that claim 1 of a patent asserted against TikTok was invalid for being directed to the abstract idea of providing personalized digital media content to a user. The Federal Circuit concluded that claim 1 is directed to an abstract idea and that there is nothing in the claim sufficient to transform it into eligible subject matter under 35 U.S.C. § 101 (10Tales, Inc. v. Tiktok Inc., No. 24-1792 (Fed. Cir. Mar. 31, 2026)).

Video-technology developer 10Tales, Inc. (10Tales) is the owner of U.S. Patent No. No. 8,856,030 (the ’030 patent), which claimed technology for customizing or personalizing digital content based upon user demographics and other information. 10Tales brought a suit for infringement of claim 1, the sole independent claim, against TikTok, Inc, TikTok Pte, Ltd., ByteDance, Ltd, and ByteDance, Inc. (collectively, TikTok). Following claim construction, TikTok moved for judgment on the pleadings, arguing that the ’030 patent was invalid for being directed at an abstract idea. The court applied the two-step Alice test. The district court concluded that claim 1 was ineligible under 35 U.S.C. § 101 and granted of TikTok Inc.’s motion for judgment on the pleadings of invalidity. 10Tales timely appealed.

Abstract idea. 10Tales argued that claim 1 was directed to the non-abstract idea of a system for “modifying a stream of content provided to a user based on social network information about the user that has been retrieved by the system from an external source.” Under step one of the Alicetest, the Federal Circuit found that there is nothing in claim 1 directed to how to implement the steps for modifying digital media content based on a user’s social network information. Claim 1 was instead written to claim, “only a result” as opposed to a “way of achieving it.” Accordingly, the claim was drawn to the underlying idea itself, i.e., presenting personalized content to a user based on information about the user. Therefore, the appellate court held that claim 1 was directed to an abstract idea.

Inventive concept. Under step two of the Alice test, the appellate court found that neither the claim’s components nor its functions do anything more than implement the abstract idea of presenting personalized content to a user based on information about the user. 10Tales argued that the “retrieving user social network information from at least one source external to the presented first composite digital media display” limitation is an inventive concept. Specifically, 10Tales contended that this limitation distinguished it over prior art systems, which had not envisioned resort to user social network information to improve digital media content. The appellate court noted that while the inventor of the ’030 patent may have had the foresight of retrieving user information from social networks as a means for personalizing digital media content, that idea, without more specificity reflected in the claim, is still an abstract idea, and thus, cannot provide the inventive concept at step two.

10Tales also argued that the claim’s limitation concerning a “rule based substitution of one or more of the digital media assets” also makes the specific combination of limitations inventive. The appellate court found 10Tales’s argument unpersuasive because this nonspecific “rule based” limitation, which does not limit the claimed invention to a particular type of modification or substitution, does not provide an inventive concept at step two. Thus, the appellate court concluded that there was nothing in the claim sufficient to transform it into eligible subject matter.

Accordingly, the Federal Circuit affirmed the district court’s decision granting judgment on the pleadings in favor of TikTok.

The Case is No. 24-1792.

Judge: Reyna, J.

Attorneys: Thomas Fisher (Cozen O'Connor P.C.) for 10Tales, Inc. Stephen S. Korniczky (Sheppard Mullin Richter & Hampton LLP) for Tiktok Inc.

Companies: 10Tales, Inc.; Tiktok Inc.

Cases: Patent TechnologyInternet FedCirNews USPTO