Vaporstream, Inc. v. Snap Inc.

• Decision Date: 13 January 2020
• Docket Number: Case No.: 2:17-cv-00220-MLH (KSx)
• Court: U.S. District Court — Central District of California
• Parties: VAPORSTREAM, INC., Plaintiff, v. SNAP INC. d/b/a/ Snapchat, Inc., Defendant.

VAPORSTREAM, INC., Plaintiff, v. SNAP INC. d/b/a/ Snapchat, Inc., Defendant.

Case No.: 2:17-cv-00220-MLH (KSx)

UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA

January 13, 2020

ORDER:

(1) DENYING DEFENDANT'S MOTION FOR RECONSIDERATION OF THE COURT'S FEBRUARY 27, 2018 SUMMARY JUDGMENT ORDER;

[Doc. No. 183.]

(2) DENYING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT AND GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT; AND

[Doc. No. 178.]

(3) GRANTING PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF OBVIOUSNESS BASED ON IPR ESTOPPEL

[Doc. No. 179.]

On November 12, 2019, Defendant Snap Inc. filed: (1) a motion for summary judgment of non-infringement and no willful infringement; and (2) a motion for reconsideration of the Court's February 27, 2018 order denying Snap's motion for summary judgment that the patents-in-suit are invalid under 35 U.S.C. § 101. (Doc. Nos. 178, 183.) On November 12, 2019, Plaintiff Vaporstream, Inc. filed a motion for partial summary judgment of Snap's obviousness defense based on inter partes review estoppel under 35 U.S.C. § 315(e)(2). (Doc. No. 179.) On November 26, 2019, the parties filed their respective responses in opposition to the motions for summary judgment. (Doc. Nos. 190, 193, 194.) On December 6, 2019, the parties filed their respective replies. (Doc. Nos. 202, 203, 205.) On January 9, 2020, the Court issued a tentative supplemental claim construction order. (Doc. No. 220.)

The Court held a hearing on the matter on January 10, 2020. Meng Xi appeared for Plaintiff Vaporstream. Heidi L. Keefe, Michael A. Attanasio, Reuben H. Chen, Elizabeth L. Stameshkin, and Lam K. Nguyen appeared for Defendant Snap. For the reasons below, the Court: (1) denies Snap's motion for reconsideration of the Court's February 27, 2018 summary judgment order; (2) denies Snap's motion for summary judgment of non-infringement; (3) grants Snap's motion for summary judgment of no willful infringement; and (4) grants Vaporstream's motion for partial summary judgment of no obviousness based on IPR estoppel.

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Background

I. Procedural Background

On January 10, 2017, Plaintiff Vaporstream filed a complaint for patent infringement against Defendant Snap, alleging infringement of U.S. Patent Nos. 8,886,739, 8,935,351, 9,306,885, 9,306,886, 9,313,155, 9,313,156, 9,313,157, 9,338,111, and 9,413,711. (Doc. No. 1.) On June 26, 2017, Snap filed an answer to the complaint. (Doc. No. 61.)

On February 27, 2018, the Court issued a claim construction order. (Doc. No. 118.) On February 27, 2018, the Court also denied Snap's motion for summary judgment that the patents-in-suit are invalid under 35 U.S.C. § 101. (Doc. No. 117.)

Starting on June 6, 2018, the Patent Trial and Appeal Board instituted inter partes review of the challenged claims for each of the patents-in-suit. See Snap Inc. v. Vaporstream, Inc., Case Nos. IPR2018-00200, IPR2018-00312, IPR2018-00369, IPR2018-00397, IPR2018-00404, IPR2018-00408, IPR2018-00416, IPR2018-00439, IPR2018-00455, IPR2018-00458. On June 12, 2018, the parties filed a joint motion to stay the action pending the IPR proceedings as to the patents-in-suit. (Doc. No. 148.) On June 13, 2018, the Court granted the parties' joint motion and stayed the action pending the last final written decision by the PTAB in the IPR proceedings for the patents-in-suit. (Doc. No. 150.)

Between June 4, 2019 and August 30, 2019, the PTAB issued final written decisions in each of the IPR proceedings for the patents-in-suit. In those decisions, the PTAB held that the challenged claims from the '739 patent, the '885 patent, the '155 patent, the '351 patent, and the '156 patent are all unpatentable, and the PTAB held that the challenged claims from the '886 patent, the '111 patent, the '711 patent, and the '157 patent had not been shown to be unpatentable. (Doc. Nos. 156-1, 157-1, 158-1, 158-2, 158-3, 158-4, 159-1.)

In light of this, on September 13, 2019, the Court partially lifted the stay of the action. (Doc. No. 160.) The Court lifted the stay as to the '886 patent, the '111 patent, the '711 patent, and the '157 patent. (Id. at 3.) The Court continued the stay of the action asto the '739 patent, the '885 patent, the '155 patent, the '351 patent, and the '156 patent. (Id.)

By the present motions for summary judgment: (1) Snap moves for summary judgment of non-infringement and of no willful infringement; and (2) Vaporstream moves for partial summary judgment of Snap's obviousness defense based on IPR estoppel under 35 U.S.C. § 315(e)(2). (Doc. No. 178-1 at 1; Doc. No. 179 at 1-2, 21.) In addition, Snap moves for reconsideration of the Court's February 27, 2018 order denying Snap's motion for summary judgment that the patents-in-suit are invalid under 35 U.S.C. § 101. (Doc. No. 183-1 at 4.)

II. The Patents-In-Suit

The patents-in-suit are closely related, claim priority to the same July 28, 2005 provisional application, and share a substantially identical specification. (Doc. No. 23 at 2.) The patents-in-suit relate generally to systems and methods for "reducing the traceability" of electronic messages. See U.S. Patent No. 9,306,886, at 18:57-19 (filed Apr. 5, 2016).

The common Background section of the specification explains some perceived problems with conventional email messaging:

Typically, an electronic message between two people is not private. It may travel along a public network, such as the Internet, and be susceptible to interception by unintended third parties. Messages are also logged and archived by the communication systems themselves. They may also be copied, cut, pasted, printed, forwarded, blind copied, or otherwise manipulated. This may give a message a "shelf-life" that is often uncontrollable by the sender or even the recipient. Surreptitious logging (e.g., by keystroke and message recording software) may occur by third parties that have gained authorized access to either the computer of the sender and/or the recipient. Electronic messages include the message content itself coupled to identifying information regarding the sender, the recipient, the location of the message, times and dates associated with the message, etc. This allows a third party that is logging messages, intercepting messages, or simply gaining access to the messaging system's logs or inbox archives to associate the potentially important identifying information (typically referred to as header information) with the message content. These are only some of the ways inwhich electronic messages can be misused. There is a demand for a system and method for reducing the traceability of electronic messages.

'886 Patent at 2:7-29. To address these problems, the claimed inventions disclose systems and methods purporting to reduce the traceability of electronic messages. See id. at 3:48-4:6.

In the present action, Vaporstream asserts infringement of claims 1, 5, 9, 10, 11, and 13 of the '886 patent; claims 1, 4, 5, 9, 10, and 11 of the '111 patent; and claims 1, 4, 5, 6, 11, 13, 15, and 16 of the '711 patent.¹ Independent claim 1 of the '886 patent, independent claim 1 of the '111 patent, and independent claim 1 of the '711 patent are the only asserted independent claims from the patents-in-suit.

Independent claim 1 of the '886 patent recites:

1. A computer-implemented method of handling an electronic message at a recipient user device in a networked environment, the electronic message including a message content and a header information that corresponds to the message content, the recipient user device having access to electronic instructions, the method comprising:

providing a plurality of reduced traceability displays via the recipient user device using a display generator that acts upon a display element of the recipient user device to provide the plurality of reduced traceability displays, the display generator including the electronic instructions, the plurality of reduced traceability displays including a first display presenting a header information of an electronic message received at the recipient user device and a second display presenting a message content of the electronic message, the message content including a media component, the message content and the header information having been related to each other using a correlation previously assigned to each of the message content and the header information;

receiving a selection by the recipient user via the first display, the selection directed to a portion of a message list corresponding to the header information; and

in response to the selection, providing the second display via the recipient user device such that the second display does not include a display of the headerinformation via the second display such that a single screen capture of both the header information and the media component is prevented.

'886 Patent at 18:57-19.

Independent claim 1 of the '111 patent recites:

1. A computer-implemented method of handling an electronic message at a recipient user mobile device in a networked environment, the electronic message including a message content and a header information that corresponds to the message content, the recipient user mobile device having access to electronic instructions, the electronic instructions being stored at the recipient user mobile device and/or at a server, the method comprising:

providing a plurality of reduced traceability displays via the recipient user mobile device using a display generator that acts upon a display element of the recipient user mobile device to provide the plurality of reduced traceability displays, the display generator including the electronic instructions, the plurality of reduced traceability displays including a first display presenting a header information of an electronic message received at the recipient user mobile device and a second display presenting a message content of the electronic message, the message content including a media component, the first display being

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