Snap Inc v. Vaporstream Inc

1. Case Identification

• Case #: IPR2018-00312
• Patent #: 9,306,885
• Filed: December 14, 2017
• Petitioner(s): Snap Inc.
• Patent Owner(s): Vaporstream, Inc.
• Challenged Claims: 1 and 6

2. Patent Overview

• Title: Electronic Message Send Device Handling System and Method with Media Component and Header Information Separation
• Brief Description: The ’885 patent relates to a method for handling electronic messages with reduced traceability. The method involves using separate, non-concurrent user interface displays for entering message content (e.g., a media component) and a recipient's identifier, and then transmitting the content and identifier separately to a server to prevent a single screen capture of both.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 6 are obvious over Namias, PC Magazine, Saffer, and Smith.

• Prior Art Relied Upon: Namias (Application # 2002/0112005), PC Magazine (an August 1988 article), 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, taught the initial limitations of claim 1. Specifically, Namias described a user interface with a "first display" for previewing a recorded video message and a separate, subsequent "second display" for entering the recipient's email address. This sequential, non-concurrent display satisfied the limitations of associating content and a recipient identifier via separate screens. To address the limitation of "preventing a single screen capture," Petitioner cited PC Magazine, which taught how to disable the Print Screen function in an operating system. For the separate transmission limitations, Petitioner relied on Saffer, which described a video email system where the media content (video file) is first uploaded to a video server, and then a separate email containing a URL link to that video is sent to an email server. Finally, Petitioner asserted that combining Smith with Saffer rendered the "correlation" limitation obvious. Smith taught an enhanced URL (a "PURL") that included identifiers for both the document and the intended recipient, establishing a correlation between them.
  • Motivation to Combine: A POSITA would combine Namias with Saffer because Saffer provided a well-defined method for transmitting the video message created in Namias. Saffer's URL-based delivery offered significant advantages over embedding large video files in emails, such as conserving network bandwidth and storage. A POSITA would further incorporate Smith's teachings to add valuable tracking and security features to the Saffer system, as Smith’s PURL allowed a server to log which specific recipient accessed a document.
  • Expectation of Success: Petitioner contended that combining these analogous systems for electronic messaging would have been straightforward, predictable, and presented no significant technical obstacles.

Ground 2: Claims 1 and 6 are obvious over Namias, PC Magazine, RFC 2821, and Hazel.

• Prior Art Relied Upon: Namias (Application # 2002/0112005), PC Magazine (an August 1988 article), RFC 2821 (an April 2001 Internet standard for SMTP), and Hazel (a 2001 book on Mail Transfer Agents).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground relied on Namias and PC Magazine for the same limitations as in Ground 1 (separate displays and preventing screen capture). However, for the limitations requiring separate transmission and correlation, this ground relied on the fundamental architecture of the Simple Mail Transfer Protocol (SMTP), as defined in RFC 2821. Petitioner argued that the standard SMTP transaction inherently performed separate transmissions. A client first sends the recipient identifier using a RCPT TO: command, waits for a server response, and only then sends the message content using a DATA command. This lock-step, sequential process constituted separate transmission. The inherent ordering of these commands also established the claimed "correlation," as the server necessarily understood that the content in the DATA command was intended for the recipient identified in the immediately preceding RCPT TO: command. Hazel was cited to confirm that Mail Transfer Agents use this "envelope" information from the RCPT TO: command to deliver the message content to the correct mailbox at a later time.
  • Motivation to Combine: A POSITA would combine the Namias kiosk with the industry-standard SMTP protocol described in RFC 2821 to ensure interoperability with the vast majority of email systems. Using the standard SMTP protocol also offered inherent benefits, such as allowing a server to reject an invalid recipient address before the large media component was transmitted, thereby conserving bandwidth. A POSITA would be motivated to consult Hazel to understand how to process the SMTP messages on the server side and deliver them to recipient mailboxes.
  • Expectation of Success: Petitioner asserted that implementing a known messaging system like Namias using the ubiquitous and well-documented SMTP protocol would have been a simple and predictable design choice for a POSITA, with a high expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was unwarranted because none of the prior art references relied upon in the petition were cited or considered during the original prosecution of the ’885 patent. The petition therefore presented new art and different grounds of unpatentability.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1 and 6 of the ’885 patent as unpatentable.