Snap Inc v. Pixmarx IP LLC

1. Case Identification

• Case #: IPR2021-00233
• Patent #: 10,489,873
• Filed: November 25, 2020
• Petitioner(s): Snap Inc.
• Patent Owner(s): Pixmarx IP LLC
• Challenged Claims: 12-24

2. Patent Overview

• Title: Embedding Digital Content into Photographs During Capture
• Brief Description: The ’873 patent discloses methods and systems for embedding digital content, such as watermarks or text, into a digital photograph. The purported improvement is enabling this customization to be performed in real-time before and during the capture of the photograph, rather than as a post-capture process.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 12-24 under §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 limitation of the challenged claims. Rosenthal describes a system on a smartphone that determines the device's current geolocation and provides location-based augmented reality (AR) overlays for the user to select. Petitioner asserted that Rosenthal's system receives these system-provided overlays (e.g., a "Smurf" character at a "Cartoon Expo") to be embedded in real-time into a photograph. The user then views a composite image on the smartphone's display, showing the AR overlay on top of the live scene from the camera. Petitioner contended that Rosenthal also discloses maintaining the overlay in a static position, such as a "static banner," and displaying it as a mask over the captured visual content. The system then outputs a digital image file of the composite photograph.

Ground 2: Obviousness of Claims 12-24 under §103 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 argued that to the extent Rosenthal is found not to explicitly teach maintaining an overlay in a static position independent of the underlying visual content, Kelly supplies this disclosure. Kelly teaches a digital camera system that displays graphical overlays on a viewscreen over a live image to aid in photo composition. Petitioner asserted Kelly discloses two types of static overlays: a full-screen overlay with a transparent region to frame a shot with a desired aspect ratio, and a user-positioned icon (e.g., a smiley face) that is fixed in a "final location" on the screen. In both cases, the overlay remains static, allowing the photographer to move the camera to align the live scene relative to the fixed overlay. Kelly also discloses that these overlays can be semi-transparent, functioning as a mask through which the underlying scene is visible.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Rosenthal and Kelly to achieve a predictable result. Both references are in the same field of real-time photo customization and address the same problem of composing a photograph with a digital overlay before capture. A POSITA would have been motivated to apply Kelly’s well-understood technique of using a static overlay for photo composition to Rosenthal’s system. This would predictably improve Rosenthal's location-based overlay system by making it easier for a user to align and compose the final photograph, a known problem with a finite number of known solutions.
  • Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success in this combination. Implementing Kelly's static overlay—a known technique in digital cameras—into Rosenthal's smartphone-based AR system would have been a straightforward application of known principles to yield the predictable benefit of improved photo composition.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §314(a) (based on Fintiv factors) and §325(d).
• Fintiv Factors: Petitioner asserted that the parallel district court litigation was in its very early stages, with infringement contentions having been recently disclosed and claim construction briefing not yet begun. It argued that a stay of the litigation was possible, noting the Patent Owner had indicated it would agree to a stay if the petitions were instituted. The petition was also filed expeditiously after infringement contentions were served.
• §325(d) Factors: Petitioner argued that denial under §325(d) was unwarranted because the primary prior art references, Rosenthal and Kelly, were not before the Patent Office during the original prosecution of the ’873 patent. Petitioner contended that this new art is substantially different from the art previously considered, which did not disclose displaying images captured in real-time with an embeddable content overlay based on the user's current location.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 12-24 of the ’873 patent as unpatentable under 35 U.S.C. §§ 102 and 103.