Snap Inc v. SRK Technology LLC

1. Case Identification

• Case #: IPR2020-00819
• Patent #: 8,996,059
• Filed: April 8, 2020
• Petitioner(s): Snap Inc.
• Patent Owner(s): SRK Technology LLC
• Challenged Claims: 1-2, 4-13, 15-19, 21-25, 30, 32-37, 46-48

2. Patent Overview

• Title: Adaptive Communication Mode for Recording a Media Message
• Brief Description: The ’059 patent relates to a method and system for a communication device to automatically select a communication mode for recording a media message. The system deduces user intent by analyzing the duration of a user’s interaction with an interface element to select between modes like "push-to-talk" (PTT) and "tap-to-start" (TTS).

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 4-6, 18, 21-22, 30, 32-33, and 46-47 are obvious over Newman, Araki, and Trewin.

• Prior Art Relied Upon: Newman (Patent 9,063,629), Araki (Japanese Patent No. 3,888,584), and Trewin (Patent 6,948,136).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Newman taught a communication device with a messaging application capable of recording audio messages using both PTT (press-and-hold a button) and TTS (tap a button) functionalities. However, Petitioner contended Newman did not disclose automatically selecting between these modes. Araki was argued to supply this missing element by teaching a system that distinguishes between PTT and TTS operations based on the duration of a button press—for example, selecting one mode if the press is less than one second and another if it is longer. This combination, Petitioner asserted, taught the core invention of claim 1: detecting an interface activation, determining its duration, comparing it to a timing parameter, and selecting a communication mode based on that comparison.
  • Motivation to Combine: A POSITA would combine Araki with Newman to improve the flexibility and usability of Newman’s messaging application. Araki explicitly addressed the common problem of user confusion with single-button interfaces that support multiple functions. Applying Araki’s duration-based mode selection to Newman’s button would provide a predictable and intuitive user experience, a clear benefit that would motivate the combination.
  • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success, as the combination involved applying known user interface techniques to solve a well-understood problem in analogous systems. The addition of Trewin was argued to address the limitation of "configurable" timing parameters. Trewin taught systems for personalizing computer inputs by automatically configuring timing parameters (like key repeat delay) based on user behavior. A POSITA would be motivated to incorporate Trewin's teachings to make the time threshold from Araki adjustable, thereby adapting the application to individual users’ varying motor skills and reaction times.

Ground 2: Claims 7-13, 15-19, 23-25, 30, 34-37, 46, and 48 are obvious over Newman, Araki, and Trewin in view of Ronkainen.

• Prior Art Relied Upon: Newman (Patent 9,063,629), Araki (Japanese Patent No. 3,888,584), Trewin (Patent 6,948,136), and Ronkainen (Patent 7,721,227).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 by adding Ronkainen to address claim limitations requiring multiple timing thresholds and mode selection based on the presence of a media signal. Petitioner argued Ronkainen taught using both a "lower threshold time" (for a short press) and an "upper threshold time" (for a long press) to trigger different functions from a single button. Crucially, Ronkainen disclosed a "skipping effect" where detecting an audio signal between the lower and upper thresholds could immediately trigger the long-press function. Petitioner mapped this "skipping effect" to the claimed feature of selecting a communication mode based on the "presence...of a media signal" during the activation of the interface element.
  • Motivation to Combine: A POSITA would combine Ronkainen with the Newman/Araki/Trewin system to further enhance its functionality and resolve potential usability issues. Ronkainen’s use of multiple thresholds provides more granular control and user feedback. The "skipping effect" was argued to be particularly beneficial because it solves a problem inherent in the Araki system: brief voice messages spoken during a short press could be lost if recording only began after the button was released (the TTS mode). By detecting the voice input, the system could intelligently switch to PTT mode to capture the message, improving the device's accuracy and reliability.
  • Expectation of Success: Success was predictable because Ronkainen's techniques were designed for user interfaces with limited buttons and audio recognition capabilities, features already present in the devices described by Newman and Araki. The integration was a straightforward application of software-based UI design principles.

Additional Grounds

Petitioner asserted an additional obviousness challenge (Ground 3) based on Newman, Araki, and Ronkainen (without Trewin), arguing this combination rendered claims 12-13 and 15-17 obvious as they do not require "configurable" timing parameters.

4. Key Claim Construction Positions

• "configurable timing parameter": While Petitioner argued the claims were obvious under any reasonable construction, it noted that for this term to have meaning, it should be construed to require that the time parameter "can be set and changed by the application." This proposed construction was central to the argument for including Trewin, which taught methods for setting and automatically adapting such user input timing parameters.

5. Arguments Regarding Discretionary Denial

• §314(a) / Fintiv: Petitioner argued against discretionary denial, asserting that the co-pending district court litigation was in its very early stages. At the time of filing, claim construction exchanges had only just begun, the court had not issued a claim construction order, and the trial was scheduled for more than a year in the future.
• §325(d): Petitioner contended that denial under §325(d) was inappropriate because the petition raised new grounds based on prior art not before the Examiner during prosecution. Specifically, Petitioner argued that Araki and Ronkainen directly addressed the limitations the Examiner found lacking in the prior art of record—namely, selecting a communication mode based on activation duration or the presence of a media signal.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-2, 4-13, 15-19, 21-25, 30, 32-37, and 46-48 of the ’059 patent as unpatentable.