Snap Inc v. SRK Technology LLC

1. Case Identification

• Case #: IPR2020-00820
• Patent #: 9,930,159
• Filed: April 8, 2020
• Petitioner(s): Snap Inc.
• Patent Owner(s): SRK Technology LLC
• Challenged Claims: 1, 3-17, 19-21, 23-26

2. Patent Overview

• Title: Adaptive Communication Mode for Recording a Media Message
• Brief Description: The ’159 patent discloses a method and system for a communication device to automatically select between a push-to-talk (PTT) communication mode and a tap-to-start (TTS) communication mode. The selection is based on the duration of a user’s interaction with an interface element, such as a button, thereby deducing the user's intent without requiring manual mode selection.

3. Grounds for Unpatentability

Ground 1: Obviousness over Newman, Araki, and Trewin - Claims 1, 3-7, 20-21, 23-25

• 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 disclosed a messaging application on a communication device with an interface button (a "respond" button) that could be used for both PTT and TTS style interactions. However, Newman did not teach automatically selecting between modes based on press duration. Araki was alleged to cure this deficiency by disclosing a system that selects between a PTT mode and a TTS mode based on whether a microphone button is pressed for longer than a predetermined time interval (e.g., one second). The claims also required a "configurable timing parameter," which Petitioner argued was taught by Trewin. Trewin described techniques for personalizing computer input by making timing parameters, such as key repeat delay, configurable to suit a specific user's needs.
  • Motivation to Combine: A POSITA would combine Newman and Araki to improve the usability of Newman's messaging application by eliminating the need for a user to manually select a recording mode. This combination would reduce user confusion and lead to more accurate message recording. A POSITA would further incorporate Trewin's teachings to make the timing threshold from Araki adjustable, allowing the application to adapt to the varying motor skills, reaction times, and preferences of different users, which was a well-known design principle for improving user accessibility and experience.
  • Expectation of Success: Petitioner asserted a high expectation of success, as combining the software-based features of analogous messaging and user-input systems involved conventional programming techniques.

Ground 2: Obviousness over Newman, Araki, Trewin, and Ronkainen - Claims 8-12

• 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 the combination in Ground 1 and added Ronkainen to address the limitations of claims 8-12. These claims required the timing parameters to comprise both a "lower threshold time" and an "upper threshold time." Petitioner argued Ronkainen taught this by disclosing a system for a single button to perform different functions based on a "short-press" versus a "long-press." The time between pressing the button and a first checkpoint corresponded to a lower threshold, while the time until a second checkpoint for long-press functionality corresponded to an upper threshold. Claims 10-12 further added selecting a mode based on the presence of a media signal (e.g., audio) when the press duration is between the thresholds. Ronkainen disclosed this with a "skipping effect," where detecting audio input could hasten the selection of the long-press function.
  • Motivation to Combine: A POSITA would be motivated to add Ronkainen's teachings to the Newman/Araki/Trewin system to provide a more sophisticated and intuitive user interface. Using two thresholds would allow for more complex interactions and provide better user feedback. The "skipping effect" based on audio detection would directly address the problem of capturing brief messages from users who start speaking immediately after pressing the button but before the long-press threshold is met, thus improving the reliability of the recording function.

Ground 3: Obviousness over Newman, Araki, and Ronkainen - Claims 13-17, 19, 26

• Prior Art Relied Upon: Newman (Patent 9,063,629), Araki (Japanese Patent No. 3,888,584), and Ronkainen (Patent 7,721,227).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that claims focused on selecting a communication mode based on determining the "presence and an absence of a media signal" were obvious over a combination that did not require Trewin (as these claims did not require configurable timing parameters). Newman and Araki provided the base system of selecting a recording mode based on button press duration. Ronkainen provided the missing element by teaching the use of audio detection (a "media signal") via a microphone to determine which of multiple functions to perform, such as skipping to a long-press function if the user starts speaking.
  • Motivation to Combine: The motivation was to improve the user experience and recording accuracy of the system in Newman and Araki. A POSITA would recognize the usability issues described in Araki (e.g., users not understanding how the button works) and would look to solutions like Ronkainen's audio detection to make the system more intelligent. By detecting that a user is speaking, the system could more accurately infer the user’s intent and select the appropriate recording mode, ensuring the entire message is captured.

4. Key Claim Construction Positions

• "configurable timing parameter": Petitioner noted that while the patent specification provided a basic definition, Petitioner had proposed in co-pending litigation that the term should be construed to mean that the parameter "can be set and changed by the application." This construction was central to the argument for including Trewin in Grounds 1 and 2, as Araki alone taught a fixed timing parameter, whereas Trewin explicitly taught methods for applications to configure such parameters based on user behavior or settings.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should decline to exercise its discretion to deny institution.
  • Under §314(a) (Fintiv): Petitioner asserted that the co-pending district court litigation was in its early stages, with trial scheduled more than a year away. No claim construction order had been issued, and discovery was not substantially complete, weighing against discretionary denial.
  • Under §325(d): Petitioner argued that denial was inappropriate because the petition raised new grounds substantially different from those considered by the Examiner. Specifically, the Examiner’s reasons for allowance centered on the prior art of record failing to teach mode selection based on press duration or the presence of a media signal. The petition centrally relied on Araki and Ronkainen—references not before the Examiner—to teach these exact features.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-17, 19-21, and 23-26 of the ’159 patent as unpatentable.