Snap Inc v. Vaporstream Inc

1. Case Identification

• Patent #: 9,313,157
• Filed: January 10, 2018
• Petitioner(s): Snap Inc.
• Patent Owner(s): Vaporstream, Inc.
• Challenged Claims: 1-4, 6, 7, and 10

2. Patent Overview

• Title: Electronic Message Recipient Handling System and Method with Separation of Message Content and Header Information
• Brief Description: The 9,313,157 patent discloses a method for handling electronic messages to provide "reduced traceability." The core concept involves separating the display of message "header information" (e.g., sender, date) from the "message content" (e.g., an image or video) to prevent a single screenshot from capturing a complete record of the communication.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 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, which teaches a "one-touch" system for sending "movie messages," discloses the core limitations of claim 1. Specifically, Wren's Figure 9A shows a "first display" with header information (sender "Jane Doe," time "9:30AM"), and Figure 9B shows a "second display" with the message content (the movie itself). This separation of header and content on different screens inherently prevents a single screen capture of both, meeting the "reduced traceability" objective. Petitioner contended that Wren does not explicitly show a list of multiple messages. Therefore, Berger was introduced, as it discloses a mobile device interface that displays a list of incoming messages (header information) from which a user can select one to view its content.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Wren and Berger to improve Wren's user interface. Wren's system, as depicted, only shows a single message notification. It would have been a simple and predictable design choice to incorporate Berger's well-known technique for displaying a list of multiple messages, a standard feature in electronic messaging. Both references address presenting messages on mobile devices with limited screen space and use similar techniques (retrieving content via an embedded URI/URL), making the combination technologically straightforward.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining a message list (Berger) with a message viewing system (Wren) was a common and well-understood practice in the field of mobile messaging.

Ground 2: Claims 6 and 7 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 on the combination of Wren and Berger and adds Hanna to address the limitations of dependent claims 6 and 7.
    • Claim 6 requires that the header information and message content are "communicated over the network separately." Petitioner asserted that Hanna teaches this by describing a system where an email attachment is replaced with a URL. A server sends the email body with the URL (analogous to the header information) to the recipient in one transmission. The recipient then uses the URL to retrieve the original attachment (the message content) from the server in a separate, later transmission.
    • Claim 7 requires "deleting the message content... from the server computer." Hanna explicitly discloses this, teaching that the server can delete the original attachment after it has been retrieved by recipients or after a set time, thereby conserving storage space.
  • Motivation to Combine: A POSITA would combine Hanna with the Wren/Berger system to gain significant, known benefits. Replacing a large video attachment with a URL, as taught by Hanna, conserves network bandwidth and server storage—problems that both Wren and Hanna explicitly recognize. This method also enables superior tracking (logging URL requests as proof of receipt) and allows for streaming content on demand rather than forcing a large download. These are compelling advantages for a video messaging system like Wren's.
  • Expectation of Success: The combination was technologically simple. Both Wren and Berger already taught using a URI/URL to retrieve content, so incorporating Hanna's more detailed server-side URL-based delivery and deletion logic would have been a straightforward implementation with a high expectation of success.

Ground 3: Claim 10 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 address claim 10, which requires "deleting the message content... at a predetermined amount of time after being displayed" so it is no longer available to the user. Petitioner argued that Thorne directly teaches this limitation. Thorne discloses a system for "Electronic Mail Security" that can enforce a "maximum display time." After the time limit is reached, the message display is automatically closed. Thorne further teaches that the system can then delete ("purge") the message, for example, after it has been read a maximum number of times (which could be set to one).
  • Motivation to Combine: A POSITA would have been motivated to incorporate Thorne's security features into the Wren/Berger messaging system to enhance confidentiality, a key goal of the ’157 patent. Thorne explicitly states its features "insure[s] that a user does not bring the message up and leave it displayed for hours," which reduces the risk of interception by an eavesdropper. Applying this ephemeral, self-destructing message concept to Wren's video messaging system would be a logical step to improve its security and privacy, directly aligning with the "reduced traceability" purpose.
  • Expectation of Success: Thorne explains its security techniques are applicable to any client/server system. Applying time-based display and deletion rules to a message is a software-level function, and there would be no technological barrier to implementing it on the Wren/Berger system.

4. Key Claim Construction Positions

• Petitioner stated that for the purposes of the IPR, it does not contend that any term requires explicit construction under the broadest reasonable interpretation (BRI) standard.
• Petitioner noted it accepts the Patent Owner’s proposed construction of “display generator” as "software or hardware configured to provide information representing a display" to streamline the proceeding, while reserving the right to argue a different construction in district court litigation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The primary prior art references, Wren and Berger, were not cited or considered during the original prosecution of the ’157 patent.
• While Thorne was referenced in the file history, Petitioner asserted it was not substantively discussed or applied by the Examiner to the limitations of what became dependent claim 10. Therefore, the petition presented new grounds of unpatentability not previously considered by the USPTO.

6. Relief Requested

• Petitioner requests the Board institute an inter partes review and cancel claims 1-4, 6, 7, and 10 of the ’157 patent as unpatentable.