IP Law Daily, PATENT—N.D. Cal.: Final claim dismissed in lawsuit alleging Slack infringed instant messaging patents, (Oct 12, 2022)

By Patricia K. Ruiz, J.D.

The logic element that logs a single transcript of audio and text messages is nothing more than using a computer to perform the abstract idea itself, the court found.

A system that allows participants in an instant messaging session to exchange both audio and text messages and then logs a unified transcript of the messages is an ineligible concept that is not eligible for patent, the Northern District of California held, granting a motion to dismiss by Slack Technologies, Inc. In holding that the patent owner’s claim failed to survive the Alice/Mayo test, the court further found that the patent owner failed to add an inventive concept to the system warranting patent protection (Ginegar LLC v. Slack Technologies, Inc., October 11, 2022, Orrick, W.).

Alleged infringement. 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.

Previous litigation. 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. It granted the motion to dismiss with leave to amend.

Motion to dismiss Third Amended Complaint. Slack moved to dismiss the Third Amended Complaint brought by Ginegar, arguing that the only remaining claim in the case, Claim 8, does not recite a patentable subject matter under the Mayo/Alice framework. Claim 8 is directed to a system that allows participants in an instant messaging session to exchange both audio and text messages and then logs a unified transcript of the messages. The court found that the claim is directed to the ineligible concept of combining both text and voice messages into a single transcript. However, the court found, the claim only recites certain steps regarding the logic element itself and claims an improved result to instant message technology. Ginegar did not lay out the specific means for achieving it this improved result. Thus, the court held that Claim 8 is directed at an ineligible concept.

Ginegar has not shown an inventive concept adding “significantly more” to the abstract idea, the court further found. The purportedly inventive concept—the logic element that logs a single transcript of audio and text messages exchanged during an instant messaging session is nothing more than using a computer to perform the abstract idea itself. Finding that Claim 8 did not survive the section 101 eligibility analysis under Mayo/Alice, the court granted Slack’s motion to dismiss.

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 CaliforniaNews