Snap Inc v. Pixmarx IP LLC

1. Case Identification

• Case #: IPR2021-00141
• Patent #: 9,792,662
• Filed: November 25, 2020
• Petitioner(s): Snap Inc.
• Patent Owner(s): Pixmarx IP LLC
• Challenged Claims: 1, 2, 8, 9, 12, and 13

2. Patent Overview

• Title: System and Method for Embedding Digital Content Within a Digital Photograph
• Brief Description: The ’662 patent relates to a method and system for embedding digital content, such as watermarks or customized images, within a digital photograph during the capture process. The technology involves displaying a user-selected embeddable content image over a real-time view from a camera and outputting a composite visual image data structure that includes both the embedded content and the captured visual scene.

3. Grounds for Unpatentability

Ground 1: Anticipation over Rosenthal - Claims 1, 2, 8, 9, 12, and 13 are anticipated under 35 U.S.C. §102 by Rosenthal.

• Prior Art Relied Upon: Rosenthal (WO 2014/031899).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rosenthal, an international patent application, discloses every element of the challenged claims. Rosenthal teaches a system on a smartphone that determines the device's geolocation, retrieves location-based augmented reality (AR) overlays, and displays them on the camera's viewscreen over a live scene. Petitioner asserted Rosenthal describes receiving a user selection of an overlay from a list, displaying the selected overlay (e.g., a "Smurf" avatar) as a mask over the live view, maintaining the overlay in a static position (as a "static banner" or "centered" element), and outputting a final composite image (e.g., a JPEG file) containing both the overlay and the visible portions of the captured scene. This process was argued to meet all limitations of independent claims 1, 8, and 12. The dependent claims (2, 9, and 13), which add location-based determination and downloading of content from a repository, were also argued to be expressly taught by Rosenthal's system of retrieving overlays from a server based on GPS location.

Ground 2: Obviousness over Rosenthal in view of Kelly - Claims 1, 2, 8, 9, 12, and 13 are obvious under 35 U.S.C. §103 over Rosenthal in view of Kelly.

• Prior Art Relied Upon: Rosenthal (WO 2014/031899) and Kelly (7,778,384).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that while Rosenthal alone anticipates the claims, the combination with Kelly renders them obvious. To the extent Rosenthal is found not to explicitly teach maintaining an overlay in a static position independent of the underlying visual content, Kelly provides this teaching. Kelly discloses using both full-screen and icon-based overlays on a digital camera's viewscreen. These overlays, such as a frame for a specific aspect ratio or an icon placed at a user-defined "final location," are inherently maintained in a static position to allow the photographer to properly compose a shot by moving the camera relative to the fixed overlay.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine Kelly's static overlay teachings with Rosenthal's AR system to enhance usability and achieve predictable results. The problem addressed by the ’662 patent—customizing photos in real-time—was also addressed by both Rosenthal and Kelly. A POSITA would have recognized that applying Kelly's well-known technique of a static overlay to Rosenthal's system would be a simple and predictable improvement, providing a stable frame of reference for users composing AR photos. This represents an obvious-to-try combination of known elements from analogous art to yield a predictable outcome.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. The concept of a static overlay on a live camera view was a fundamental and common feature in digital photography at the time of the invention. Implementing this known feature from Kelly into Rosenthal's smartphone-based software platform would have been a straightforward engineering task.

4. Key Claim Construction Positions

• "visual content captured in real-time": Petitioner argued this term should be interpreted to encompass both (1) the live visual feed from the camera displayed on the viewscreen before a photo is taken (i.e., viewfinder capture) and (2) the final, captured digital photo. Petitioner asserted this interpretation was critical because Rosenthal discloses the claimed combination of an overlay and visual content in both the pre-capture composition view and the final, outputted image file.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under the Fintiv factors was inappropriate. It contended that the parallel district court litigation was in its nascent stages, with a trial date scheduled far in the future (May 2022) and minimal investment by the parties or the court. Petitioner also noted that the IPR was filed expeditiously after receiving the patent owner's infringement contentions.
• Petitioner further argued against denial under §325(d), emphasizing that the asserted prior art (Rosenthal and Kelly) is new and was never considered by the USPTO during the original prosecution. It argued that these references are substantially different and stronger than the art of record, such as the Lai reference, which the Examiner had previously considered.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 2, 8, 9, 12, and 13 of Patent 9,792,662 as unpatentable.