Snap Inc v. Vaporstream Inc

1. Case Identification

• Patent #: 8,886,739
• Filed: November 16, 2017
• Petitioner(s): Snap Inc.
• Patent Owner(s): Vaporstream, Inc.
• Challenged Claims: 1, 4-6

2. Patent Overview

• Title: Electronic Message Content and Header Restrictive Send Device Handling System and Method
• Brief Description: The ’739 patent relates to a system and method for handling electronic messages to reduce their traceability. The invention's core features include providing a user interface with separate, non-concurrent displays for entering message content and recipient addresses; transmitting the content and addresses separately to a server; and making the message content inaccessible on the sending device after transmission.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4-6 are obvious over Namias in view of Saffer and Smith.

• Prior Art Relied Upon: Namias (Application # 2002/0112005), Saffer (Application # 2003/0122922), and Smith (Patent 6,192,407).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Namias, which discloses a video e-mail kiosk, teaches the use of separate, sequential screen displays for recording a video message and for entering a recipient's email address, thus meeting the limitations of claim 1 regarding non-concurrent first and second displays. Petitioner contended that Saffer, which describes a video email system, teaches the remaining limitations by disclosing a backend process where a sending device obtains a unique "video ID," uploads the video file to a server, and then sends an email containing a URL with that video ID. This process meets the limitations of associating a message ID, correlating it with the message content and recipient address, and transmitting them separately. Saffer also allegedly teaches making the message inaccessible, as its interface shows an option to not save sent messages is unchecked by default. Smith was asserted to supplement Saffer by disclosing a more sophisticated Personalized URL (PURL) that explicitly includes identifiers for the document, the recipient, and a validation key, ensuring the "correlating" limitation is met even under a narrow interpretation.
  • Motivation to Combine: A POSITA would combine the Namias user interface with Saffer's more efficient backend transmission method. Both are analogous art in video messaging, and Saffer's URL-based delivery offers clear advantages over sending large video files as attachments, such as conserving network bandwidth and enabling content streaming. A POSITA would be further motivated to incorporate Smith's PURL teachings to add valuable tracking and security features, which Smith expressly discloses as a benefit of its system.
  • Expectation of Success: Petitioner asserted that combining these known email and web-based technologies would have been a straightforward integration for a POSITA with a high expectation of success.

Ground 2: Claims 1, 4-6 are obvious over Namias in view of Blum, Hazel, RFC 2821, and Boyce.

• Prior Art Relied Upon: Namias (Application # 2002/0112005), Blum (Postfix, 2001), Hazel (Exim: The Mail Transfer Agent, 2001), RFC 2821 (Simple Mail Transfer Protocol, 2001), and Boyce (Microsoft Outlook Version 2002 Inside Out, 2001).
• Core Argument for this Ground: This ground presents an alternative invalidity theory, arguing a POSITA would implement the Namias system using ubiquitous, industry-standard internet technologies rather than the specific system of Saffer.
  • Prior Art Mapping: Namias was again relied upon for its disclosure of separate user interface displays. To meet the "message ID" limitation, Petitioner pointed to Blum and Hazel, which describe the "Maildir" email storage format. In Maildir, each email is stored in a unique file path on a server (e.g., /home/recipient/Maildir/new/unique-filename), and Petitioner argued this full path serves as a message ID that associates the content (the file) and correlates it with the recipient address (part of the directory path). For separate transmission, Petitioner cited RFC 2821, which defines the Simple Mail Transfer Protocol (SMTP). In SMTP, recipient addresses are sent via a RCPT TO: command, followed by a separate DATA command to send the message body, demonstrating separate transmission. Finally, Boyce was cited for its description of Microsoft Outlook features that allow a user to not save, or to create rules to automatically delete, sent messages, rendering them inaccessible.
  • Motivation to Combine: Petitioner argued a POSITA building the Namias system would be motivated to use well-known, reliable, and interoperable backend technologies. SMTP (RFC 2821) was the predominant standard for sending email. Maildir (Blum and Hazel) was a known, superior alternative to older formats, solving critical issues like file locking and data corruption. Using these standards would be an obvious design choice to ensure reliability and compatibility. The motivation to incorporate Boyce's teaching is the simple and compelling benefit of conserving storage space on the sending device, a benefit expressly recognized in Boyce.
  • Expectation of Success: Combining a user-facing application like Namias with standard, foundational internet protocols like SMTP and Maildir would have been a routine implementation for a POSITA with a predictable outcome.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because none of the prior art references relied upon in the petition were cited or considered during the original prosecution of the ’739 patent. The challenges were therefore based on new art and new grounds of unpatentability. Petitioner also contended that the two grounds presented are fundamentally different and not redundant, with one relying on combining analogous video-messaging systems and the other on implementing a system with standard internet protocols, thereby presenting different strengths and addressing different potential arguments from the Patent Owner.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1 and 4-6 of the ’739 patent as unpatentable.