Snap Inc v. Vaporstream Inc

1. Case Identification

• Patent #: 9,413,711
• Filed: December 31, 2017
• Petitioner(s): Snap Inc.
• Patent Owner(s): Vaporstream, Inc.
• Challenged Claims: 1, 4-6, 11, 15, and 16

2. Patent Overview

• Title: Electronic Message Handling System and Method between Sending and Recipient Devices with Separation of Display of Media Component and Header Information
• Brief Description: The ’711 patent discloses a method and system for "reduced traceability" electronic messaging. The technology's central feature is the separation of identifying information (e.g., sender/recipient ID) from the media content of a message across different displays or screens, allegedly preventing a single screen capture of a complete message. The patent also describes deleting messages from a server after transmission to enhance confidentiality.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1, 4-6, and 11 over Primary Combination

• Prior Art Relied Upon: Namias (Application # 2002/0112005), Wren (Application # 2005/0021803), Fardella (Application # 2001/0032246), Stevenson (Tablet PCs for Dummies (2003)), and Yuan (Enterprise J2ME (2004)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the limitations of independent claim 1 were taught by the combination. Namias was asserted to teach the "send-side" functionality, disclosing a video email kiosk that uses separate, sequential screens for recording video content (Fig. 4A) and for entering the recipient's email address (Fig. 5). Wren was asserted to teach the "receive-side," disclosing a mobile phone that presents a new message notification with sender info (Fig. 9A) separately from the screen that plays the video content (Fig. 9B). Petitioner argued this separation of information in both Namias and Wren meets the core "reduced traceability" limitation of preventing a single screen capture. The combination was bridged by Fardella (teaching kiosk software can run on PCs) and Stevenson (describing tablet PCs as mobile computers) to show the obviousness of adapting Namias's system to a "sending user mobile device." Yuan was cited to support the obviousness of providing a messaging application on the recipient's mobile device.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine the analogous video messaging systems of Namias and Wren to create a complete, end-to-end communication method. The motivation to adapt Namias's kiosk functionality to a mobile tablet PC (using Fardella and Stevenson) stemmed from the well-understood advantages of mobile computing, such as portability and user convenience.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved the predictable integration of complementary and known technologies, with each reference performing its disclosed function.

Ground 2: Obviousness of Claims 15 and 16 with Additional Deletion Feature

• Prior Art Relied Upon: Namias (Application # 2002/0112005), Wren (Application # 2005/0021803), Fardella (Application # 2001/0032246), Stevenson (Tablet PCs for Dummies (2003)), Yuan (Enterprise J2ME (2004)), and Thorne (Patent 5,958,005).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground challenged dependent claims 15 and 16, which add the limitation of deleting the electronic message from the server. The petition argued that the base combination from Ground 1 establishes a messaging system where a message passes through a server. Thorne was introduced to teach the specific claimed deletion functionality. Thorne was cited for disclosing methods to enhance email security, including automatically purging a message from an intermediate server after it is transmitted to the recipient or after it has been viewed a predetermined number of times (e.g., once). This directly maps to the limitations of claims 15 (deleting after transmission) and 16 (deleting after the fourth display is provided, i.e., after viewing).
  • Motivation to Combine: A POSITA would have been motivated to incorporate Thorne's security features into the messaging system of Ground 1. The stated purpose was to improve the confidentiality and security of the video messages by limiting unauthorized dissemination or retention of the message on a server after it had been delivered to and viewed by the intended recipient.
  • Expectation of Success: Petitioner argued that Thorne itself describes its techniques as readily administered in client-server architectures, indicating that a POSITA would have faced no technological obstacles and would have expected the combination to work as intended.

4. Key Claim Construction Positions

• The petition stated that for the purposes of the inter partes review (IPR), no claim terms required explicit construction by the Board under the Broadest Reasonable Interpretation standard. Petitioner noted it would assume the Patent Owner's proposed constructions from parallel district court litigation in order to streamline the IPR proceeding, while reserving its rights to argue for different constructions in that litigation.

5. Arguments Regarding Discretionary Denial

• The petition presented arguments that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The primary basis for this argument was that the core prior art references for its obviousness grounds (Namias, Wren, Fardella, Stevenson, Yuan) were not cited or substantively considered during the original prosecution of the ’711 patent. It was also argued that while Thorne was referenced in the file history, it was not evaluated by the Examiner in the context of the specific deletion limitations of dependent claims 15 and 16.

6. Relief Requested

• Petitioner requested that the Board institute an IPR for claims 1, 4-6, 11, 15, and 16 of Patent 9,413,711 and find those claims unpatentable under 35 U.S.C. §103.