Snap Inc v. Playvuu Inc

1. Case Identification

• Case #: IPR2023-00848
• Patent #: 10,931,911
• Filed: May 26, 2023
• Petitioner(s): Snap Inc.
• Patent Owner(s): Playvuu, Inc.
• Challenged Claims: 1-11

2. Patent Overview

• Title: Generating and Disseminating Audio/Visual Content
• Brief Description: The ’911 patent discloses methods and systems for generating and sharing user-created audio/video content over a social network. The technology involves selecting pre-recorded media, recording new content, compositing the new and existing media, and publishing the final product.

3. Grounds for Unpatentability

Ground 1: Obviousness over Cohen, Chu, Sherman, and Joslin - Claims 1-10 are obvious over Cohen in view of Chu, Sherman, and Joslin.

• Prior Art Relied Upon: Cohen (Application # 2009/0164034), Chu (Patent 6,086,380), Sherman (Application # 2003/0164924), and Joslin (Patent 7,324,166).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Cohen, discloses the core method of the ’911 patent: a web-based system for creating and sharing multimedia content on a social network. Cohen taught users selecting pre-recorded audio/video, recording their own performance over it, previewing the result, saving it, and publishing it. Petitioner asserted the remaining limitations were well-known additions. Chu taught a karaoke system where users record themselves singing in front of user-selectable backgrounds and composite the performance using chroma-key technology. Sherman taught a "video karaoke" system that allowed users to replace static portions of a background scene with other video or images and insert their own video performance. Finally, Joslin taught processing, encoding (e.g., as an MPEG file), and uploading the resulting video to a server for internet streaming.
  • Motivation to Combine: A POSITA would combine these references to create an improved and more commercially desirable multimedia creation system. Petitioner argued it would have been obvious to add Chu's desirable selectable background feature to Cohen's social sharing platform. Likewise, incorporating Sherman's more advanced background editing capabilities and Joslin's teachings on processing and encoding for internet streaming were logical improvements to enhance the functionality and marketability of Cohen's base system.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because all references operate in the same technical field of multimedia content creation, employ similar and compatible techniques (e.g., compositing, server-based storage, network sharing), and address a known desire for more feature-rich user content creation tools.
  • Key Aspects: Petitioner emphasized that large portions of the ’911 patent's specification were copied verbatim from the Cohen application, which it argued demonstrates that the patent claims nothing new over the primary reference.

Ground 2: Obviousness over Cohen, Chu, Sherman, Joslin, and Lei - Claim 11 is obvious over Cohen in view of Chu, Sherman, Joslin, and Lei.

• Prior Art Relied Upon: Cohen (Application # 2009/0164034), Chu (Patent 6,086,380), Sherman (Application # 2003/0164924), Joslin (Patent 7,324,166), and Lei (Application # 2008/0285859).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the additional limitations of claim 11, which recited "detecting user movement in the video captured during the recording session and representing that movement by a trailing light." Petitioner argued that the base combination of Cohen, Chu, Sherman, and Joslin taught all other limitations of claim 11. The additional reference, Lei, was introduced to teach the specific "trailing light" feature. Lei disclosed a system for video analysis that performs object tracking and generates a "trail line" to visually represent the cumulative path of a moving object in a video.
  • Motivation to Combine: The motivation for adding Lei's teaching was to provide additional, desirable special effect options for users editing their videos. A POSITA would have been motivated to incorporate known special effects like motion trails into the multimedia creation platform of the primary combination to enhance user engagement and provide more creative tools, a recognized goal in the field.
  • Expectation of Success: Success would have been expected as adding a known video processing effect (motion trails) to a video creation system was a straightforward integration of known software techniques.

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3 and 4) based on the core combinations of Cohen, Chu, Sherman, and Joslin (and Lei for claim 11), further adding Austerberry (a 2002 textbook) to provide additional detail on well-known pre-processing and encoding steps for creating streamable video files.

4. Key Claim Construction Positions

• Server-Side Performance: Petitioner argued that while the claim language is ambiguous as to where the method steps are performed, the ’911 patent's specification and overall context indicate that the processing-intensive steps are server-controlled. The Petitioner's invalidity analysis proceeded under this construction but noted that the claims would also be obvious if construed to include client-side performance, as distributing processing between clients and servers was a well-known design choice.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued that discretionary denial under Fintiv would be inappropriate. It asserted that the parallel district court case was in its early stages, with trial more than a year away, and that a stay was likely if the IPR was instituted. Petitioner also filed a Sotera-type stipulation, promising not to pursue in district court the same invalidity grounds raised in the petition, thereby mitigating concerns about overlapping issues.
• §325(d): Petitioner argued against denial under §325(d), contending that the Examiner did not have the benefit of the key secondary references (Chu, Sherman, Joslin, Lei, Austerberry) during prosecution. Furthermore, the petition alleged that the Patent Owner mischaracterized the teachings of Cohen to the Examiner, leading to an improper allowance, and that the present petition corrects the record with a more accurate analysis of the prior art.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of the ’911 patent as unpatentable.