Snap Inc v. Vaporstream Inc

1. Case Identification

• Patent #: 9,413,711
• Filed: January 9, 2018
• Petitioner(s): Snap Inc.
• Patent Owner(s): Vaporstream, Inc.
• Challenged Claims: 13

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 methods for handling electronic messages to enhance security by reducing traceability. The core concept involves separating the display of message content (e.g., a media component) from identifying information (e.g., sender or recipient identifiers) to prevent a single screenshot from capturing both.

3. Grounds for Unpatentability

Ground 1: Obviousness over Combined Messaging and Protocol References - Claim 13 is obvious over Namias, Wren, Yuan, Fardella, Stevenson, RFC 2821, and Hazel.

• Prior Art Relied Upon: Namias (Application # 2002/0112005), Wren (Application # 2005/0021803), Yuan (a 2004 book on mobile Java applications), Fardella (Application # 2001/0032246), Stevenson (a 2003 book on Tablet PCs), RFC 2821 (a 2001 email protocol standard), and Hazel (a 2001 book on mail transfer agents).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the combination of references teaches every limitation of claim 13, which depends on independent claim 1.
    • Base Combination for Claim 1: The limitations of independent claim 1 were primarily mapped to Namias in view of Wren, as modified by Fardella, Stevenson, and Yuan. Petitioner argued Namias teaches a system for creating and sending a video email where the user interface provides separate displays for reviewing the video content (Fig. 4A) and for entering the recipient’s email address (Fig. 5). This separation allegedly constitutes the claimed “first plurality of reduced traceability displays.” Wren was argued to teach the receipt of a video message on a mobile phone, which also uses separate displays for a notification showing sender information (Fig. 9A) and for playback of the video content itself (Fig. 9B), constituting the “second plurality of reduced traceability displays.” Fardella and Stevenson were cited to demonstrate the obviousness of adapting Namias’s kiosk-based system to a personal mobile device like a Tablet PC. Yuan was cited to show it was obvious for a mobile device like Wren’s to include a messaging application program.
    • Incremental Combination for Claim 13: Claim 13 adds the specific requirement that "receiving an electronic message at a server includes receiving the identifier of a recipient and the message content including a media component separately." Petitioner argued this limitation is met by further combining the base references with RFC 2821 and Hazel. RFC 2821, which defines the Simple Mail Transfer Protocol (SMTP), explicitly describes a process where a recipient’s identifier is transmitted to a server via a RCPT TO: command, and the message content is transmitted separately via a subsequent DATA command. Hazel was argued to confirm that mail transfer agents (server software) operate this way, receiving envelope data (like the recipient address) and message content as distinct steps.
  • Motivation to Combine: Petitioner asserted several motivations. A POSITA would combine Namias and Wren as they are analogous art in video messaging, and using a mobile recipient device (Wren) with a sending system (Namias) is a natural and convenient combination. Modifying Namias’s kiosk with teachings from Fardella and Stevenson to create a portable Tablet PC-based system would have been a predictable design choice to increase mobility and personal use. Adding an email protocol like RFC 2821 was asserted to be an obvious implementation choice, as SMTP was a well-known industry standard for email. Hazel was argued to provide the conventional server-side processing for such SMTP messages, making its combination logical for a complete end-to-end system.
  • Expectation of Success: Petitioner contended that a person of ordinary skill in the art (POSA) would have a reasonable expectation of success in making these combinations. The integration involved applying known technologies (mobile devices, standard email protocols) for their intended and well-understood purposes, presenting no technological obstacles.

4. Key Claim Construction Positions

• Petitioner noted that for the purposes of the IPR, it did not contend any term required explicit construction under the broadest reasonable interpretation standard.
• However, to streamline the proceeding, Petitioner adopted the Patent Owner's proposed construction from parallel district court litigation for the term "reduced traceability electronic messaging application program." This construction defines the term as an "electronic messaging application program that enables reduced traceability of electronic messages." Petitioner argued that even under this construction, the claims are obvious, as the software in Namias (for the sender) and Wren/Yuan (for the recipient) inherently enables reduced traceability by providing the separate displays as described.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The petition relied on numerous prior art references (Namias, Wren, Fardella, Stevenson, Yuan, and Hazel) that were not cited or considered during the original prosecution of the ’711 patent.
• While RFC 2821 was present in the file history, Petitioner asserted it was not substantively discussed or applied to the limitations of claim 13.
• Petitioner also distinguished this petition from a prior-filed IPR (IPR2018-00416) against the same patent by highlighting that the earlier petition challenged a different and distinct set of claims (1, 4-6, 11, 15, and 16), whereas the present petition is narrowly focused only on dependent claim 13.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claim 13 of Patent 9,413,711 as unpatentable.