Snap Inc v. Vaporstream Inc

1. Case Identification

• Patent #: 8,935,351
• Filed: December 27, 2017
• Petitioner(s): Snap Inc.
• Patent Owner(s): Vaporstream, Inc.
• Challenged Claims: 1, 5, 6, 9, 11, and 12

2. Patent Overview

• Title: Electronic Message Content and Header Restrictive Recipient Handling System and Method
• Brief Description: The ’351 patent discloses an electronic messaging system and method designed for "reduced traceability." The core concept involves providing separate user interface displays for message "header information" (e.g., sender, time) and "message content" (e.g., media), thereby preventing a single screenshot from creating a complete record of an electronic message.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5, 6, and 11 are obvious over Wren, 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: Petitioner argued that Wren teaches the core of claim 1: a mobile messaging system that sends a "movie message" and presents it to a recipient using separate displays for notification (header) and content (video). However, Wren only shows a single message notification. Berger was introduced to supply the missing elements of displaying header information "in a message list" and associating a "unique message ID" with the content. Berger explicitly disclosed a list of messages on a mobile phone, where each entry in the list (header information) is linked via a unique identifier (a message number or hash value in a URL) to the full message content stored on a server. Finally, Thorne was cited to teach the last limitation of claim 1: "automatically deleting the first message content" after a predetermined time. Thorne disclosed an email security system that enforced a "maximum display time" and automatically deleted or purged the message after it was viewed a set number of times.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Wren with Berger to improve Wren’s single-message interface into a more functional multi-message list, which was a standard and predictable design choice for any messaging application. A POSITA would further incorporate Thorne’s ephemeral messaging features to enhance the security and confidentiality of the Wren/Berger system, a well-known goal in the field.
  • Expectation of Success: All three references operate in the analogous field of electronic messaging on networked devices, addressing common user interface and security issues. Combining their respective features would be a straightforward integration with a high expectation of success.

Ground 2: Claim 9 is obvious over Wren, Berger, Thorne, and Hartselle.

• Prior Art Relied Upon: Wren (Application # 2005/0021803), Berger (’203 application), Thorne (’005 patent), and Hartselle (Patent 7,356,564).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination in Ground 1 to address dependent claim 9, which adds a limitation for "preventing screenshot logging at the recipient user device from capturing the media component and the first header information simultaneously." Petitioner asserted that Wren’s fundamental design of showing header information (Fig. 9A) and media content (Fig. 9B) on separate, non-concurrent screens inherently prevents their simultaneous capture. To further support this, Petitioner introduced Hartselle, which explicitly taught a method for providing self-destructing emails where the client application instructs the operating system to prevent the screen display from being captured or printed, thereby restricting any duplication of the content.
  • Motivation to Combine: A POSITA would combine the teachings of Hartselle with the Wren/Berger/Thorne system to further improve the confidentiality of the communications. Since the ’351 patent’s stated goal is "reduced traceability," adding an explicit anti-screenshot mechanism from Hartselle would be a logical step to enhance this very feature.
  • Expectation of Success: Hartselle’s technique was designed for standard computing devices and would be a natural and technologically simple security feature to add to the messaging system of the primary combination.

Ground 3: Claim 12 is obvious over Wren, Berger, Thorne, and Hanna.

• Prior Art Relied Upon: Wren (Application # 2005/0021803), Berger (’203 application), Thorne (’005 patent), and Hanna (Patent 7,054,905).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Ground 1 to address dependent claim 12, which requires that "the first header information and the first message content are communicated over the network separately." Petitioner argued that while Wren discloses sending a media file, it is not explicit about the server-to-client transmission mechanics. Hanna was introduced to teach this separate communication. Hanna disclosed a system that addresses the problems of large email attachments by replacing the attachment with a URL. The recipient first receives the email containing only header information and the URL, and then, in a separate, subsequent communication, uses that URL to request and download the actual file content from a server. This precisely maps to the separate communication of header and content.
  • Motivation to Combine: A POSITA would be highly motivated to incorporate Hanna's URL-based delivery mechanism into the Wren/Berger system. This would solve the significant bandwidth, storage, and device performance issues associated with sending large media files (like Wren’s movie messages) as direct attachments, a problem explicitly recognized in both Wren and Hanna. This method also enables streaming and better tracking.
  • Expectation of Success: Using a URL to deliver large content was a known, effective, and widely adopted solution to a common problem in network communications. Integrating this well-understood technique from Hanna and Berger into Wren’s messaging system would be technologically straightforward and have a high likelihood of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although the Thorne and Hartselle references were part of the ’351 patent’s prosecution history, there was no evidence the Examiner substantively evaluated them for the specific limitations they are cited for in the petition. More importantly, the primary references, Wren and Berger, which form the foundation of all grounds, were not before the Examiner. Therefore, the petition presented new combinations of prior art and new arguments that were not previously considered.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 5, 6, 9, 11, and 12 of the ’351 patent as unpatentable.