Snap Inc v. Sanderling Management Ltd

1. Case Identification

• Case #: IPR2021-00778
• Patent #: 9,355,412
• Filed: April 30, 2021
• Petitioner(s): Snap Inc.
• Patent Owner(s): Sanderling Management Ltd.
• Challenged Claims: 1-12

2. Patent Overview

• Title: Dynamic Promotional Layout and Image Processing Functions Management and/or Distribution
• Brief Description: The ’412 patent relates to a client-server system for dynamically distributing digital image processing or branding functions, such as filters and overlays, to mobile devices. A server distributes these functions based on a set of rules, primarily the geographic location of the mobile device as determined by its GPS module.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hogeg - Claims 1-2 and 4-12 are obvious over Hogeg.

• Prior Art Relied Upon: Hogeg (Application # 2014/0173424).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hogeg taught all elements of the challenged claims. Hogeg disclosed a server-based system that provides "visual content editing functions" (e.g., color filters, overlays) to client terminals like smartphones. The system operated by receiving a request from a client terminal containing its GPS location, matching that location to location tags associated with the editing functions stored in a repository, and automatically forwarding a list of the relevant functions to the client terminal. The client terminal's application then used a selected function to process a digital image and create an output image. This process was asserted to map directly onto the limitations of independent claim 1. For dependent claims, Hogeg was shown to teach overlay functions (claim 2), applying functions to video (claim 12), and providing multiple functions based on overlapping geographic zones (claim 5).
  • Motivation to Combine: Not applicable for a single-reference ground.
  • Expectation of Success: Not applicable for a single-reference ground.

Ground 2: Obviousness over Hogeg and Arujunan - Claim 3 is obvious over Hogeg in view of Arujunan.

• Prior Art Relied Upon: Hogeg (Application # 2014/0173424) and Arujunan (Application # 2012/0327265).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed dependent claim 3, which requires the image processing function to be a member selected from a group consisting of a black and white function, a sepia function, and an antique function. Petitioner contended that while Hogeg taught the general concept of applying color filters, Arujunan was instructive for its explicit disclosure of these specific types of functions. Arujunan taught processing captured images to make them appear older, like daguerreotypes ("antiquing"), and converting a color image to monochrome ("black and white").
  • Motivation to Combine: A POSITA would combine Hogeg's location-based distribution framework with the specific, known image effects taught by Arujunan to provide an enhanced, more varied, and commercially desirable user experience. Adding popular and conventional filter options like black-and-white or antique effects to a system like Hogeg's was presented as a predictable and simple improvement to increase user engagement.
  • Expectation of Success: A POSITA would have had a high expectation of success in this combination. Both references described fundamentally similar client-server architectures for distributing image processing functions based on location. Integrating the specific filter types from Arujunan into Hogeg's system constituted a simple substitution of one known type of image processing function for another to achieve a predictable result.

4. Key Claim Construction Positions

• "Image Processing Function" (Claim 1): Petitioner asserted that this term should be construed broadly to encompass both "image branding functions" (e.g., adding an icon, logo, or overlay) and other "image processing functions" (e.g., sharpening, lighting, focus). This position was based on amendments made during the prosecution history of the parent ’074 patent, where the applicant broadened the term's scope. Further support was drawn from dependent claim 2 of the ’412 patent itself, which recites an "overlay function"—a type of branding function—as an example of an "image processing function," indicating the terms were intended to overlap.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate. Against denial under 35 U.S.C. §325(d), Petitioner contended that although Hogeg was cited in an IDS during prosecution, the Examiner never applied it or discussed its teachings, and Arujunan was not of record at all. The petition's arguments based on these references were therefore materially different from those considered by the USPTO.
• Against discretionary denial under Fintiv, Petitioner argued that the parallel district court litigation was in its early stages, with no claim construction or trial date set, making a stay likely and institution efficient. The strong merits of the petition, which could resolve the validity of all asserted claims, were argued to outweigh any concerns about parallel proceedings.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of Patent 9,355,412 as unpatentable.