Snap Inc v. Sanderling Management Ltd

1. Case Identification

• Case #: IPR2021-00781
• Patent #: 10,108,986
• Filed: April 30, 2021
• Petitioner(s): Snap Inc.
• Patent Owner(s): Sanderling Management Ltd.
• Challenged Claims: 1, 3, 7, 17, 18, 20, 24, and 34

2. Patent Overview

• Title: Dynamic Promotional Layout and Image Processing Functions Management and Distribution
• Brief Description: The ’986 patent describes systems and methods for dynamically distributing "digital media content processing functions" from a server to mobile devices. The distribution is based on rules that match sensor data from the mobile device (e.g., GPS location) with conditions associated with the processing functions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hogeg - Claims 1, 3, 18, and 20 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 limitations of the challenged independent claims. Hogeg disclosed a client-server system for selectively providing "visual content editing functions" (e.g., color filters, overlays) to mobile client terminals. The server system received a request including the client's GPS location, used a "selection module" to match this location data against location tags associated with stored editing functions, and then distributed a list of relevant functions back to the client. Petitioner contended this directly mapped to the ’986 patent’s method of distributing processing functions based on a match between a mobile device’s sensor data and a "sensor data condition" defined by a distribution rule. Dependent claims 3 and 20, which add analyzing content to create an output, were allegedly taught by Hogeg's disclosure of pixel-wise processing and object recognition (e.g., identifying a car to apply a specific overlay).
  • Motivation to Combine (for §103 grounds): Not applicable as this ground relies on a single reference.
  • Expectation of Success (for §103 grounds): Not applicable as this ground relies on a single reference.

Ground 2: Obviousness over Hogeg in view of Arujunan - Claims 3, 7, 17, 20, 24, and 34 are 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 asserted that to the extent Hogeg did not explicitly teach every function recited in the dependent claims, Arujunan supplied the missing elements. Hogeg provided the foundational system for location-based distribution of visual editing functions. Arujunan taught an analogous system for providing "customized photo products" based on location and time, and explicitly disclosed additional image processing functions. Specifically, Arujunan taught applying "antique" effects to make photos appear older (daguerreotypes), converting images to "black and white," and performing "color correction" and "cropping." Petitioner argued that adding these well-known functions from Arujunan to Hogeg's system rendered the dependent claims obvious.
  • Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would combine Hogeg and Arujunan to provide an enhanced and more compelling user experience with a wider variety of image modification options. Both references addressed the same problem—providing location-specific image effects—using a similar client-server architecture, making the integration of Arujunan’s known editing functions into Hogeg’s system a predictable improvement.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because the combination involved nothing more than incorporating known, conventional image processing functions (from Arujunan) into a known, similar distribution system (Hogeg), which would yield predictable results.

4. Key Claim Construction Positions

• "Digital Media Content Processing Function" (Claims 1, 18): Petitioner argued this term did not have a specific meaning in the art. Based on the specification and prosecution history, Petitioner contended the term should be construed broadly to include both "image branding functions" (e.g., adding logos or overlays) and "image processing functions" (e.g., modifying sharpness or lighting). Petitioner asserted that even under a narrower construction limited to only "image processing functions," the claims remained unpatentable because the prior art taught both types of modifications. This construction was central to Petitioner's argument that Hogeg's "visual content editing functions" (which included overlays and color filters) met the claim limitation.

5. Arguments Regarding Discretionary Denial

• Arguments against §325(d) Denial: Petitioner argued denial would be inappropriate because the grounds were not substantially the same as those considered during prosecution. Although the primary reference, Hogeg, was before the Examiner via an Information Disclosure Statement (IDS), it was never applied in a rejection or substantively discussed by the Patent Owner or Examiner. Furthermore, Petitioner noted that its European counterpart application was rejected and ultimately abandoned based on Hogeg alone, suggesting the U.S. Examiner erred by not applying it.
• Arguments against Discretionary Denial under Fintiv: Petitioner argued the Fintiv factors weighed in favor of institution. The parallel district court litigation was in its early stages, with no claim construction or post-Markman schedule set, and the trial was not expected to occur before mid-2023. Petitioner stated that the presiding judge has a history of granting stays pending IPR, and since the petition challenges all asserted claims, institution would simplify issues and promote efficiency.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 3, 7, 17, 18, 20, 24, and 34 of the ’986 patent as unpatentable.