Snap Inc v. Sanderling Management Ltd

1. Case Identification

• Case #: IPR2021-00779
• Patent #: 9,639,866
• Filed: April 30, 2021
• Petitioner(s): Snap Inc.
• Patent Owner(s): Sanderling Management Ltd.
• Challenged Claims: 1-11

2. Patent Overview

• Title: Dynamic Promotional Layout and Image Processing
• Brief Description: The ’866 patent discloses a computerized method for distributing digital "image processing functions" from a server to mobile devices. The system selects and forwards functions, such as overlays or filters, based on a match between the mobile device's GPS location and a geographic location associated with the function, allowing a user to create and share a "branded digital image."

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, and 4-10 are obvious over Hogeg

• Prior Art Relied Upon: Hogeg (Application # 2014/0173424).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hogeg, standing alone, rendered the claims obvious. Hogeg taught a client-server system for distributing "visual content editing functions" (e.g., color filters, logo overlays) to mobile devices like smartphones. The server stored functions associated with location tags and, upon receiving a request containing the mobile device's GPS data, it performed a rule-based matching process. The system then automatically forwarded a list of matching functions to an application on the mobile device. The user could then select a function to process a digital image and create an output image, which could be shared on social media. Petitioner contended this prior art system taught every element of independent claim 1 and the additional limitations of the dependent claims, such as using an overlay function (claim 2) and publishing to social networks (claim 7).

Ground 2: 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: Claim 3 adds the limitation that the image processing function is selected from a group including a black and white function, a sepia function, and an antique function. While Hogeg taught applying color filters, Petitioner asserted Arujunan explicitly taught these specific types of historical or monochrome image effects. Arujunan disclosed processing captured images to appear as older photographs, such as daguerreotypes ("antique function"), or converting a color image to a monochrome image ("black and white function").
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Hogeg’s location-based distribution system with Arujunan’s well-known image editing effects. The motivation was to enhance Hogeg’s system by providing a more varied, compelling, and desirable set of image modification options for users, which was a known goal in the art. Both references related to the same field of distributing image editing functions based on location, making the combination straightforward.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved the simple substitution of one known set of image effects (from Arujunan) into a known distribution system (Hogeg) to achieve the predictable result of a system with more editing options.

Ground 3: Claim 11 is obvious over Hogeg in view of Svendsen

• Prior Art Relied Upon: Hogeg (Application # 2014/0173424) and Svendsen (Application # 2012/0123830).
• Core Argument for this Ground:
  • Prior Art Mapping: Claim 11 adds receiving the processed digital image and monitoring events pertaining to it for a "Campaign competition." Hogeg taught that its editing functions could include promotional content and that the resulting images could be shared. Petitioner argued Svendsen supplied the missing elements by teaching a system for creating and utilizing location-based "photo advertisements." Svendsen's system distributed ad templates, allowed users to create promotional images, and provided rewards to the content creator based on the ad's performance (e.g., "receive a free medium fry each time the ad results in a purchase over $5US"). This tracking and reward mechanism, Petitioner contended, constituted monitoring events for a campaign competition.
  • Motivation to Combine: Petitioner argued a POSITA would be motivated to integrate Svendsen's ad tracking and reward functionality into Hogeg's promotional image sharing system. This combination would provide an incentive for users to create and share promotional content, thereby improving the system's effectiveness as a marketing tool, a highly desirable outcome for such systems.
  • Expectation of Success: A POSITA would have reasonably expected success in combining these systems. Both operated on the same principles of distributing location-based content to mobile devices for image creation. Adding Svendsen's known ad tracking and reward features to Hogeg's system was a predictable way to enhance its functionality.

4. Key Claim Construction Positions

• "Image Processing Function" (Claim 1): Petitioner argued this term, based on the specification and the prosecution history of a parent application, should be construed to encompass both "image branding functions" (e.g., adding an icon or overlay) and other "image processing functions" (e.g., modifying sharpness, lighting, or focus). This broad construction was important because it ensured that prior art like Hogeg, which taught applying both color filters and logo overlays, would satisfy the claim limitation under either interpretation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both 35 U.S.C. §325(d) and the Fintiv factors. Petitioner contended that although Hogeg was cited during prosecution, the Examiner never applied it or substantively discussed its teachings, and the secondary references (Arujunan and Svendsen) were not of record, making the petition's grounds new and non-cumulative. Regarding Fintiv, Petitioner asserted that the parallel district court litigation was in its very early stages, with no claim construction scheduled and a trial date not expected until mid-2023 at the earliest. Therefore, an inter partes review (IPR) would be a more efficient resolution of the validity dispute.

6. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 1-11 of the ’866 patent as unpatentable under 35 U.S.C. §103.