Snap Inc v. Vaporstream Inc

1. Case Identification

• Patent #: 9,306,886
• Filed: December 26, 2017
• Petitioner(s): Snap Inc.
• Patent Owner(s): Vaporstream, Inc.
• Challenged Claims: 1, 4, 5, 9-11, and 13

2. Patent Overview

• Title: Electronic Message Recipient Handling System and Method with Separated Display of Message Content and Header Information
• Brief Description: The ’886 patent relates to a method for electronic messaging with reduced traceability. The core concept is to provide a user interface that presents message "header information" (e.g., sender, time) and "message content" on separate, distinct displays to prevent a single screen capture from creating a complete record of the message.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, and 5 are obvious over Wren in view of Berger.

• Prior Art Relied Upon: Wren (Application # 2005/0021803) and Berger (Application # 2003/0152203).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wren discloses the fundamental method of separating message displays to reduce traceability. Wren’s Figure 9A shows a "first display" with a message notification (header information like sender and time), while its Figure 9B shows a "second display" with the actual movie message playback (media component). This second display is triggered by selecting "Play" on the first. Petitioner contended this two-screen process inherently prevents a single screen capture and thus meets the core "reduced traceability" limitation of claim 1. Berger was introduced to supply limitations not expressly shown in Wren's single-message example, specifically teaching the display of a list of multiple messages and using a correlation (e.g., a message number or hash embedded in a URL) to link a selected header to its corresponding message content.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Wren and Berger to improve Wren's rudimentary single-message interface with Berger's more practical method for displaying and selecting from a list of multiple messages. Both references operate in the same field of mobile messaging and use similar URL/URI-based techniques for content retrieval, making the combination technologically straightforward. Further, Berger’s techniques offer distinct benefits like enhanced security (via hashing user/message IDs) and the ability to optimize content for the recipient device, providing strong motivation for the integration.
  • Expectation of Success: A POSITA would have a high expectation of success, as the systems are technologically analogous. Incorporating Berger's list management and correlation techniques into Wren's existing URI-based content retrieval system would be a predictable and synergistic integration.

Ground 2: Claims 9-11 are obvious over Wren in view of Berger and Hanna.

• Prior Art Relied Upon: Wren (Application # 2005/0021803), Berger (Application # 2003/0152203), and Hanna (Patent 7,054,905).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the Wren and Berger combination and adds Hanna to explicitly teach limitations in dependent claims 9-11. Hanna addresses claim 9's requirement that header information and message content are "communicated over the network separately" by teaching a system that replaces a large email attachment with a URL. In Hanna's system, the email with header information is sent first, and the recipient later uses the embedded URL to retrieve the message content (the original attachment) from a server in a separate transmission. Hanna also addresses claims 10 and 11 by explicitly teaching the deletion of the message content from the server after certain conditions are met, such as after all recipients have retrieved it.
  • Motivation to Combine: A POSITA would be motivated to incorporate Hanna's techniques into the Wren/Berger system to solve the well-known problems of transmitting large media files (like Wren's movie messages) as email attachments. Hanna's method of replacing the full file with a lightweight URL conserves significant bandwidth and storage, addresses security concerns, and enables better tracking of message retrieval. This provides a compelling, practical reason to combine the references.
  • Expectation of Success: The combination would be straightforward, as Wren already discloses using a URI to retrieve message content. Modifying it to adopt Hanna’s more detailed server-side process for replacing an attachment with a URL would be a natural and predictable improvement with a high expectation of success.

Ground 3: Claim 13 is obvious over Wren in view of Berger and Thorne.

• Prior Art Relied Upon: Wren (Application # 2005/0021803), Berger (Application # 2003/0152203), and Thorne (Patent 5,958,005).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Thorne to the Wren/Berger combination to teach the ephemeral messaging features of claim 13. Thorne discloses security techniques for electronic messages, including enforcing a "maximum display time" after which a message display is automatically closed. Thorne further teaches deleting the message entirely after it has been viewed a predetermined number of times (e.g., once). This directly maps to claim 13's limitation of "deleting the message content...at a predetermined amount of time after being displayed such that...[it] is no longer available to the recipient user."
  • Motivation to Combine: A POSITA seeking to enhance the security and confidentiality of the messaging system would be motivated to incorporate Thorne's access control features. The stated goal of the ’886 patent is "reduced traceability," and Thorne’s "self-destructing" message functionality directly serves this purpose by preventing the recipient from retaining a permanent copy of the message. This provides a strong motivation to improve the security of the Wren/Berger system.
  • Expectation of Success: Thorne’s security features are described as being applicable to any client-server messaging architecture. Applying these known access-control rules (e.g., "delete after one view") to the movie messages in the Wren/Berger system would be a predictable application of a known security technique to improve a known system.

4. Key Claim Construction Positions

• Petitioner stated that, for the purposes of the IPR, it would accept the Patent Owner's proposed construction of the term "display generator" as "software or hardware configured to provide information representing a display image for display on a user computer." This strategic position was adopted to streamline the proceeding and avoid a means-plus-function dispute, while Petitioner reserved its right to advocate for a different construction in the parallel district court litigation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. It contended that the primary references, Wren and Berger, constitute new prior art that was never before the Examiner during the original prosecution. Furthermore, while the Thorne reference was cited in an Information Disclosure Statement (IDS), it was never substantively discussed or applied against the claims, particularly with respect to the specific limitations of dependent claim 13 for which it is now being cited.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 4, 5, 9-11, and 13 of the ’886 patent as unpatentable.