Snapchat Could Be Stripped Of Valuable “Tap-And-Hold For Video” Patent

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Snapchat has quietly been embroiled in an intellectual property interference proceeding that could revoke its lucrative patent for a design trick now widely copied by Facebook, Google and more.

Snapchat filed for a patent on the ability to tap and hold a smartphone camera’s shutter button to record a video on August 8th, 2012, while another company called Mojo Media filed for a nearly identical patent on August 27th, 2012. Snapchat was awarded the patent in April 2013, but Mojo has since successfully pulled Snapchat into a patent interference proceeding where a panel of United States Patent and Trademark Office judges will decide who is the rightful owner.

Screenshot of working model of Mojo Media's tap-and-hold for video feature

Screenshot of working model of Mojo Media’s tap-and-hold for video feature

Though Snapchat applied for the patent before Mojo, the U.S. uses a “first-to-invent” not a “first-to-file” rule, and  Mojo actually created a legal “reduction to practice” or working model of tap-and-hold for video three weeks before Snapchat filed.That means it may have the upper hand in the case, even though Mojo Media never publicly launched an app with the feature.

Mojo Media co-founder Richard Marlin writes in his company’s Suggestion Of Interference to the USPTO, dated November 27th, 2013, that his invention “was conceived earlier than April 30, 2012.”

He explains that “On July 19th, 2012, Mojo Media, Inc. tested the Beta App, which worked as expected. The Beta App provided a single user interface element on the touch screen of a personal communicator device that when touched quickly would take a photographic snapshot through the device’s image sensors. When, instead, the single user interface element was held greater than or equal to a preset length of time, the device would record a video until the user interface element was released.” That’s exactly how Snapchat’s shutter button works.

Mojo Media co-founder Richard Marlin's sketches and description of a photo shutter button that could be held down to record video.

Mojo Media co-founder Richard Marlin’s sketches and description of a photo shutter button that could be held down to record video.

The USPTO has already investigated the claims and confirmed that the patents are similar enough that only one company will be awarded it, as noted in the May 30th, 2014 Declaration Of Interference. The decision could come in the next few months. Mojo Media declined to comment when contacted. Snapchat acknowledged there was an ongoing patent-interference proceeding and noted it was the first to file a patent on the technology, but declined to comment further.

The fate of this “Single mode visual media capture” could be very important to the tech industry. Snapchat first popularized the system which lets an app use a single button but detect if you’re trying to take a photo or video based on how long you hold down. But now, apps like Google Hangouts, Facebook Messenger, Facebook Slingshot, Instagram Bolt, TapTalk, Mirage and Shotclock all feature the same user interface element. It’s become widely used because it prevents people from having to toggle a photo/video switch before shooting.

Screen Shot 2014-08-13 at 6.18.19 PM

Diagram for Snapchat’s “Single mode visual media capture” patent aka tap-and-hold for video.

If Snapchat wins the interference proceeding and retains the patent, it could use it to either sue or collect licensing fees from any company that infringes on it. Alternatively, it could use the patent to protect itself from IP lawsuits from these companies for infringing on their patents by forcing a stalemate where both sides infringe on each other’s IP.

But if it loses and the patent goes to Mojo Media, the results could be disastrous for Snapchat and annoying to others.

Mojo Media could sue or extort licensing fees from Snapchat and others with tap-and-hold for video if they don’t change their designs. Since it is core to Snapchat’s main feature and the company is still pre-revenue, getting sued, paying fees, or modifying its UI could all hurt the Los Angeles startup.

Mojo Media could also sell the patent to one of the giants like Google or Facebook. That would let them avoid lawsuits or licensing, as neither go on the offensive with their vast patent armories unless provoked.

And worst-case scenario, a patent troll buys the patent from Mojo Media and sues the heck out of everyone.

This is just the latest in Snapchat’s legal drama, as it’s still fighting with allegedly ousted co-founder Reggie Brown over who invented self-destructing photo sharing and deserves to own the company.

Snapchat has done well staying focused on its product, with this year’s launches of Stories and texting having gone very well. It’s new geo-filters and Our Story curated, crowdsourced live streams of big events like music festivals both show potential for Snapchat to start making money. But these lawsuits cast a dark cloud in the corner of Snapchat’s otherwise blue L.A. sky.

Below you’ll see the initial Suggestion Of Interference from Mojo Media outlining its claim to Snapchat’s patent, followed by the Declaration Of Interference that confirms that USPTO is deciding who will own the patent.