Snap Inc v. Pixmarx IP LLC

1. Case Identification

• Case #: IPR2021-00143
• Patent #: 10,489,873
• Filed: November 25, 2020
• Petitioner(s): Snap Inc.
• Patent Owner(s): Pixmarx IP LLC
• Challenged Claims: 1-3, 5-11

2. Patent Overview

• Title: Digital Photography Customization
• Brief Description: The ’873 patent describes methods for embedding digital content, such as watermarks or overlays, onto a digital photograph. The purported improvement is enabling this customization to be performed in real-time on a wireless communication device during the photo capture process, rather than as a post-capture editing step.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 and 5-11 are anticipated by Rosenthal.

• Prior Art Relied Upon: Rosenthal (WO 2014/031899).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rosenthal, which discloses an augmented reality (AR) photo application, teaches every limitation of the challenged claims. Rosenthal’s method involves a smartphone determining its geolocation, retrieving location-based overlay graphics (e.g., a Smurf character at a themed expo), and injecting the overlay onto the live camera view. Independent claim 1 is met because Rosenthal’s system receives an embeddable content image (the overlay), maintains it in a static position (disclosed as a "static banner" or fixed in a "centered" position), and displays it as a mask over the captured scene (the Smurf overlay covers part of the person being photographed). The claim limitation of selectively positioning the captured image relative to the overlay is met by the user physically moving the camera to frame the subject as desired with the overlay. Finally, Rosenthal generates a digital file (a .JPG) of the composite image.
  • Key Aspects: Petitioner contended that Rosenthal addresses the same problem as the ’873 patent—real-time customization of photos—by allowing a user to view a list of AR overlays, select one, and see a composite view of the overlay placed atop the physical scene before capturing the final photograph.

Ground 2: Claims 1-3 and 5-11 are obvious over Rosenthal in view of Kelly.

• Prior Art Relied Upon: Rosenthal (WO 2014/031899) and Kelly (Patent 7,778,384).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted this ground to the extent the Patent Owner argues Rosenthal fails to explicitly disclose maintaining an overlay in a "static position" or "selectively positioning" the captured image. Kelly, which relates to overlaying graphical content on a digital camera's live view, explicitly remedies these alleged deficiencies. Kelly teaches using either a full-screen overlay (e.g., to frame a shot for a specific aspect ratio) or a user-positioned icon overlay (e.g., a smiley face). Petitioner argued that both types of overlays in Kelly are inherently maintained in a static position, independent of the live camera view, to allow the photographer to compose the shot by moving the camera. This act of moving the camera to align the subject with the static overlay explicitly teaches the "selectively positioning" limitation. Kelly also teaches using semi-transparent overlays to filter the underlying image, meeting a limitation of dependent claim 9.
  • Motivation to Combine: A POSITA would combine Kelly with Rosenthal to improve Rosenthal’s AR photo system. Both references are in the same field of real-time digital photo customization and address the same problem of enabling users to compose a composite image during capture. A POSITA would have recognized that incorporating Kelly’s well-understood technique of using a static overlay for photo composition into Rosenthal’s system was a simple substitution of one known element for another to achieve the predictable result of improved user control and easier composition.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. The integration of static overlays into camera viewfinder technology was well-established and implementing this known technique in Rosenthal's smartphone-based camera application would have been straightforward and predictable.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv is inappropriate because the parallel district court proceeding is in its infancy. Key factors favoring institution include: the trial date is distant (May 2022); minimal investment has been made by the court and parties, with preliminary contentions only recently exchanged and no claim construction briefing started; and the Patent Owner had indicated it would likely agree to a stay if the IPR was instituted.
• Petitioner further argued that denial under §325(d) is inappropriate because the primary references, Rosenthal and Kelly, present prior art and arguments that are substantially different from the art considered by the USPTO during the original prosecution and were not before the examiner.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-3 and 5-11 of the ’873 patent as unpatentable under 35 U.S.C. §102 and/or §103.