Snap Inc v. Vaporstream Inc

1. Case Identification

• Case #: IPR2018-00458
• Patent #: 9,313,156
• Filed: January 10, 2018
• Petitioner(s): Snap Inc.
• Patent Owner(s): Vaporstream, Inc.
• Challenged Claims: 1-3, 6-8

2. Patent Overview

• Title: Electronic Message Send Device Handling System and Method with Separated Display and Transmission of Message Content and Header Information
• Brief Description: The ’156 patent discloses an electronic messaging system with reduced traceability. The method involves using separate user interface displays for entering message content and recipient information, transmitting the content and recipient identifier separately, and ensuring a media component is no longer on the sending device after transmission.

3. Grounds for Unpatentability

Ground 1: Obviousness over Namias, PC Magazine, Saffer, and Smith

• Claims 1-2 and 6-8 are obvious over Namias in view of PC Magazine, Saffer, and Smith.
  • Prior Art Relied Upon: Namias (Application # 2002/0112005), PC Magazine (an August 1988 article), Saffer (Application # 2003/0122922), and Smith (Patent 6,192,407).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the primary reference, Namias, discloses a video e-mail kiosk that meets the core limitations of claim 1. Specifically, Namias teaches associating message content via a first display (a video preview screen) and associating a recipient identifier via a separate, second display (an address entry screen), with the two screens not displayed at the same time. To meet the limitation of “preventing a single screen capture,” Petitioner asserted that Namias inherently discloses this by never displaying the recipient identifier and media content together. Alternatively, Petitioner argued a POSITA would have been motivated to disable any latent screen capture functionality using the simple programming techniques taught in PC Magazine to conserve the kiosk's resources. For separate transmission and correlation, Petitioner relied on Saffer, which teaches uploading video content to a server and separately sending an email containing a URL link to that content. Finally, Smith was introduced to teach modifying Saffer’s URL to include both a content identifier and a unique recipient identifier, thereby establishing the claimed “correlation” between the message content and the recipient.
    • Motivation to Combine: A POSITA would combine Namias with Saffer to gain the significant network bandwidth and storage conservation benefits of URL-based delivery over embedding large video files in emails. Saffer's method also enabled streaming. A POSITA would further incorporate Smith’s teachings to add valuable tracking and security features to the Namias/Saffer system by creating a trackable link specific to each recipient. The combination with PC Magazine was presented as a simple design choice to disable an unnecessary function.
    • Expectation of Success: Petitioner argued that combining these analogous references in the field of electronic messaging involved applying known techniques for their intended purposes and would have been a straightforward implementation for a POSITA with a reasonable expectation of success.

Ground 2: Obviousness over Namias, PC Magazine, RFC 2821, and Hazel

• Claims 1-2 and 6-8 are obvious over Namias in view of PC Magazine, RFC 2821, and Hazel.

  • Prior Art Relied Upon: Namias (Application # 2002/0112005), PC Magazine (an August 1988 article), RFC 2821 (an April 2001 Internet standard for SMTP), and Hazel (a 2001 book on Mail Transfer Agents).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner again used Namias and PC Magazine to teach the separate display and screen capture prevention limitations, identical to Ground 1. However, for the separate transmission and correlation limitations, this ground relies on RFC 2821, the industry standard for Simple Mail Transfer Protocol (SMTP). Petitioner argued that the fundamental command structure of SMTP inherently discloses separate transmissions. A sending device first issues an RCPT TO: command to transmit the recipient identifier, awaits a server response, and only then issues a DATA command to transmit the message content. This required, sequential, and interactive protocol results in separate transmissions. The inherent temporal relationship—where the RCPT TO: command identifies the recipient for the immediately following DATA command—establishes the claimed "correlation." Hazel was cited to confirm that Mail Transfer Agents process SMTP messages by delivering the content from the DATA command to the mailbox specified by the preceding RCPT TO: command, showing the elements are related at a later time by the server.
    • Motivation to Combine: Petitioner contended that a POSITA implementing the email functionality of Namias would have been motivated to use the well-known and ubiquitous SMTP standard defined in RFC 2821 to ensure interoperability with the vast majority of email systems. Additional motivations included SMTP's inherent benefits, such as allowing a server to validate a recipient's address before the client transmits a large media file (conserving bandwidth) and enhancing privacy in multi-recipient messages by avoiding the need for To: or Cc: header fields. Hazel was a natural addition as it explains how to implement the server-side processing for the SMTP-based system.
    • Expectation of Success: As SMTP was the predominant standard for email transmission, Petitioner asserted that its integration into the Namias system would have been a routine and predictable task for a POSITA, with a high expectation of success.

• Additional Grounds: Petitioner asserted two additional obviousness challenges targeting dependent claim 3. Ground 2 argued claim 3 is obvious over the combination of Namias, PC Magazine, Saffer, and Smith (from Ground 1) in view of Ford (Application # 2005/0014493). Ground 4 argued claim 3 is obvious over the combination of Namias, PC Magazine, RFC 2821, and Hazel (from Ground 2) in view of Ford. In both grounds, Ford was cited for its explicit teaching of automatically deleting message data from a sending device after successful transmission to a remote server to conserve limited storage space.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because none of the prior art references relied upon in the petition were substantively considered during the original prosecution of the ’156 patent. Therefore, the petition raised new questions of patentability based on new art and arguments.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3 and 6-8 of Patent 9,313,156 as unpatentable.