IP Law Daily, PATENT—D. Colo.: Slack defeats lawsuit over infringement of instant messaging patents, (Jun 9, 2022)

By George Basharis, J.D.

Patents claiming improvements to instant messaging technology were directed to ineligible abstract idea.

A lawsuit filed against Slack Technologies claiming that Slack’s workplace instant messaging platform infringed upon patents for automating the handling of instant messages and combining voice and text messages into a unified chat transcript was dismissed because the methods claimed by the patents were not inventive. The patents were directed to abstract ideas of evaluating and responding to messages and combining message types into unified transcripts. According to the federal district court in Colorado, the patents did not claim any improvements in computer or instant messaging technology, and therefore they were directed to patent ineligible ideas (Ginegar LLC v. Slack Technologies, Inc., June 8, 2022, Orrick, W.).

Ginegar LLC owns U.S. Patent Nos. 9,367,521 (the ’521 patent) and 9,760,865 (the ’865 patent). The Ginegar patents are directed to instant messaging systems, where individuals can communicate with each other using text-based or other forms of communication over a network in substantially real time. The ’521 patent claims “handling rules” that are used to sort instant messages and perform other tasks based on content or user activity. For example, handling rules can prescribe actions such as showing a user’s online status, filtering instant messages, generating notifications, or limiting display screen interruptions.

The ’865 patent claims a method of generating a unified chat transcript that combines text and audio messages exchanged during an instant message session. The transcript is created automatically using computer hardware and software installed on a host server.

In 2021, Ginegar sued Slack claiming Slack’s instant messaging platform infringed upon the ’521 and ’865 patents. Slack moved to dismiss the lawsuit, claiming the Ginegar patents were invalid because they were directed to abstract ideas and did not claim any improvements to instant messaging technology.

Granting Slack’s motion, the court found that even though the patents were directed to a patent eligible category, they were not directed to patentable subject matter. Applying the Supreme Court’s Mayo/Alice test, the court determined that the claims in the ’521 and ’865 patents were directed to abstract ideas that did not contain inventive concepts.

The ’521 patent. Slack argued the ’521 patent was directed to the abstract idea of evaluating and responding to an instant message based on its content or context—an activity it contended “humans have long been doing manually since the pre-computer world”—and did not disclose any improvements to computer or instant messaging technology. The court agreed, rejecting Ginegar’s contention that the claims of the ’521 patent were directed to a novel method of processing messages. The court explained that when an invention merely replaces human activity with a computer, it is directed to an abstract idea. The court noted that using rules to sort instant messages was akin to filtering emails, an activity that can be completed by humans. Moreover, the ’521 patent was not directed to specific improvements to instant messaging technology, and any enhancements or inventive concepts were not claimed embodiments. Consequently, the ’521 patent failed both steps of the Mayo/Alice test.

The ’865 patent. The ’865 patent is directed to a method of automatically recording text and audio messages in one place. According to Slack, the patent did not suggest any improvements in computer or instant messaging technology. Agreeing with Slack, the court observed that the claimed method was not unlike taking words from written mail and words from a voicemail on an answering machine and combining them into a typed transcript. The ’865 patent only automated the process. The court noted that the Federal Circuit has held that claims reciting a method for creating a single display of information from various sources were directed to an abstract idea. Moreover, Ginegar could not sufficiently identify how its method of combining message types was fundamentally different form traditional methods of data combination and recording.

The ’865 patent also claimed a data processing system comprised of hardware and software elements. This “logic” element of the patent was directed to the goal of combining message types into a unified transcript, also an abstract idea, according to the court. Although the invention employed hardware and software elements, it did not establish the significance of the logic element to instant messaging performance. Ginegar’s conclusory allegations about improvements in instant messaging technology did not suffice to overcome Slack’s motion to dismiss, according to the court. Although the underlying inventive concept in the ’865 patent was the ability to log a multimodal chat transcript from an instant message session, as enabled by the logic element, Ginegar failed to establish how the logic element was inventive. Generic computer components are not inventive on their own, and automatically logging a chat transcript using computer hardware and software was not an inventive idea, according to the court. It was simply using a computer to perform an unpatentable abstract idea. Consequently, the ’865 patent, like the ’521 patent, was invalid.

The Case is No. 3:22-cv-00044-WHO.

Attorneys: Jon Bentley Hyland (Hilgers Graben PLLC) for Ginegar LLC. Christine L. Ranney (Gibson, Dunn & Crutcher LLP) for Slack Technologies, Inc.

Companies: Ginegar LLC; Slack Technologies, Inc.

Cases: Patent TechnologyInternet ColoradoNews GCNNews