Snap Inc v. Pixmarx IP LLC

1. Case Identification

• Case #: IPR2021-00142
• Patent #: 10,102,601
• Filed: November 25, 2020
• Petitioner(s): Snap Inc.
• Patent Owner(s): Pixmarx IP LLC
• Challenged Claims: 1-8

2. Patent Overview

• Title: System and Method for Embedding Content in a Digital Photograph
• Brief Description: The ’601 patent relates to methods for embedding digital content, such as watermarks or overlays, into a digital photograph. The technology allows a user to select and view this content overlaid on a live image from a device’s camera before and during the act of capturing the final composite photograph.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 and 5-8 are anticipated by Rosenthal

• Prior Art Relied Upon: Rosenthal (WO 2014/031899)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rosenthal disclosed every element of the challenged claims. Rosenthal taught a computer-implemented method on a smartphone for generating augmented reality (AR) photos. The method involved receiving a request for photo generation, determining the user's geo-location, retrieving location-based AR overlays (e.g., a "Smurf" character for a "Cartoon Expo"), and injecting the selected overlay onto the live camera view. The user could then capture a composite photograph that included both the overlay and the physical scene. Petitioner asserted this process met the independent claim limitations of receiving a request to embed content, providing embeddable images, displaying them on a viewscreen with the live camera feed, and outputting a final photograph.
  • Key Aspects: Rosenthal's disclosure of a static banner overlay, which would inherently remain in a fixed position independent of the camera's view, was argued to meet the limitation of maintaining the content image in a static position. Furthermore, Petitioner argued that Rosenthal's use of PNG file formats, which support transparency, inherently disclosed that portions of the underlying scene would be visible through the overlay mask.

Ground 2: Claims 1-3 and 5-8 are obvious over Rosenthal in view of Kelly

• Prior Art Relied Upon: Rosenthal (WO 2014/031899), Kelly (Patent 7,778,384)
• Core Argument for this Ground:
  • Prior Art Mapping: To the extent Rosenthal was deemed not to disclose certain elements, Petitioner argued Kelly supplied the missing teachings. Kelly disclosed overlaying graphical content on a digital camera's live view to aid composition. Petitioner contended Kelly explicitly taught maintaining an overlay in a static position independent of the visual content, such as a "full-screen" overlay to enforce a specific aspect ratio or an icon placed in a user-defined "final location." Kelly also taught using semi-opaque overlays or overlays with transparent "open regions" (e.g., for a desired aspect ratio), through which the captured scene remained visible.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Kelly's teachings with Rosenthal's AR system to improve usability. Adding a stable, static overlay (from Kelly) to an AR photo system (Rosenthal) was presented as a predictable solution to the known problem of composing a shot with a dynamic overlay. Both references address the same field of real-time digital photography customization, making the combination logical.
  • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success, as integrating a well-known static overlay feature from a digital camera system (Kelly) into a smartphone-based AR system (Rosenthal) would be a straightforward implementation yielding the predictable result of improved photo composition.

Ground 3: Claim 4 is obvious over Rosenthal in view of Salmi

• Prior Art Relied Upon: Rosenthal (WO 2014/031899), Salmi (WO 2014/009610)

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically addressed dependent claim 4, which added the limitation of "framing said captured image when said captured image is taken." Petitioner argued that Salmi explicitly taught this element. Salmi disclosed using a graphical overlay as a "picture frame" or "skin" for a digital image. Salmi's figures illustrated adding a frame to the live viewfinder display and generating a final composite image where the captured scene was framed by the overlay.
  • Motivation to Combine: A POSITA would be motivated to incorporate Salmi's frame overlays into Rosenthal's system for the common purpose of embellishing or enhancing the final photograph. Adding a decorative frame is a well-known technique in digital photography to improve the aesthetic appeal of an image.
  • Expectation of Success: The expectation of success would be high because adding a frame overlay is a simple, known, and predictable modification in the field of digital imaging.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 4 over the combination of Rosenthal, Kelly, and Salmi, relying on similar motivations to combine to achieve enhanced photo composition and embellishment.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv was inappropriate. The parallel district court litigation was in its earliest stages, with no significant investment by the court or parties and a trial date scheduled well after the deadline for a Final Written Decision (FWD). Petitioner asserted that a stay of the litigation was likely if the inter partes review (IPR) was instituted.
• Petitioner also contended that denial under §325(d) was improper because the prior art references (Rosenthal, Kelly, and Salmi) were not before the USPTO during prosecution and were substantially different from the art previously considered. The prior art of record, such as Ofek, related to combining previously captured panoramic images from a moving vehicle, not displaying real-time overlays on a camera's live view.

5. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-8 of the ’601 patent as unpatentable under 35 U.S.C. §102 and/or §103.