Snap Inc v. Vaporstream Inc

1. Case Identification

• Patent #: 9,313,155
• Filed: December 20, 2017
• Petitioner(s): Snap Inc.
• Patent Owner(s): Vaporstream, Inc.
• Challenged Claims: 1-6 and 9

2. Patent Overview

• Title: Electronic Message Send Device Handling System and Method With Separation of Message Content and Header Information
• Brief Description: The ’155 patent describes an electronic messaging method with "reduced traceability." The system focuses on sender-side activities and achieves this by providing a user interface with separate displays for entering message content (e.g., a media component) and a recipient's identifier, and then separately transmitting this information.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1, 4-5, and 9 over Namias, Fardella, and Stevenson

• Prior Art Relied Upon: Namias (Application # 2002/0112005), Fardella (Application # 2001/0032246), and Stevenson (a 2003 book titled Tablet PCs for Dummies).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Namias, which discloses a video e-mail kiosk, taught the core limitations of independent claim 1. Namias described a user interface with separate, sequential screens for creating message content (a video) and for entering the recipient's e-mail address. This separation of displays prevents a single screen capture of both the media content and the recipient identifier, thereby achieving the claimed "reduced traceability." Namias also taught transmitting the message content and recipient identifier to a server computer.
  • Motivation to Combine: The sending device in Namias was a kiosk. Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Namias with Fardella and Stevenson to implement the messaging method on a mobile device. Fardella taught that software designed for kiosks could also be used on personal computers. Stevenson described tablet PCs as a new style of portable, lightweight, touchscreen-based personal computer. A POSITA would combine these to gain the significant advantages of mobile computing and messaging, applying Namias's user-friendly, touchscreen-based interface to a portable Tablet PC.
  • Expectation of Success: Adapting the messaging software from a kiosk (a type of computer) to a Tablet PC (another type of computer) would have been a technologically straightforward task with a high expectation of success.

Ground 2: Obviousness of Claim 6 over Namias, Fardella, Stevenson, and Ford

• Prior Art Relied Upon: Namias (Application # 2002/0112005), Fardella (Application # 2001/0032246), Stevenson (Tablet PCs for Dummies), and Ford (Application # 2005/0014493).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address dependent claim 6, which requires that the media component is no longer on the sending user device after transmission. Petitioner argued Ford taught this exact feature. Ford disclosed a method for wireless data exchange where, after message data (including pictures or video) was successfully transmitted to a server, it was automatically deleted from the sending device.
  • Motivation to Combine: A POSITA would incorporate Ford’s teaching into the system of Ground 1 to solve a well-known problem. Ford expressly stated that wireless devices have limited storage space, and automatic deletion after confirmed delivery is a simple, reliable, and automatic method to free up this space. This provided a compelling motivation to add the feature for its predictable benefits.

Ground 3: Obviousness of Claim 3 over Namias, Fardella, Stevenson, and Saffer

• Prior Art Relied Upon: Namias (Application # 2002/0112005), Fardella (Application # 2001/0032246), Stevenson (Tablet PCs for Dummies), and Saffer (Application # 2003/0122922).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed dependent claim 3, which requires that transmitting the message content occurs separately from transmitting the recipient identifier. Petitioner asserted Saffer taught this. Saffer described a video e-mail system where the sending device first uploads the video file to a video server. After the upload, the device sends a separate e-mail to an e-mail server; this e-mail contained a URL pointing to the video and the recipient's address, but not the video file itself. These two transmissions—the video file upload and the e-mail transmittal—were distinct, separate events.
  • Motivation to Combine: A POSITA would combine Saffer's URL-based delivery with the system of Ground 1 to gain significant advantages in efficiency. Without Saffer, the large video file from Namias would be embedded directly in an e-mail, consuming network bandwidth and recipient storage regardless of whether the recipient viewed it. Saffer’s method conserved these resources by transmitting only a tiny URL, with the large video file being streamed or downloaded only upon request. This efficiency gain provided a strong motivation for the combination.

• Additional Grounds: Petitioner asserted additional obviousness challenges. These included using Smith (Patent 6,192,407) in combination with Saffer to add a recipient identifier to the URL, creating a "correlation" to meet claim 2. Petitioner also presented alternative grounds for claims 2 and 3 based on the inherent properties of the standard Simple Mail Transfer Protocol (SMTP), as detailed in RFC 2821 and Hazel (a 2001 book), which teach separate commands for transmitting recipient information (RCPT TO:) and message content (DATA).

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 substantively considered during the original prosecution of the ’155 patent. The challenges were therefore based on new art and new grounds of unpatentability.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6 and 9 of the ’155 patent as unpatentable.