Slack Technologies filed a complaint against Phoji, Inc. for declaratory judgment of noninfringement. Slack is represented by Desmarais. The suit was filed in the California Northern District Court. Slack has sought a declaratory judgment that Slack does not infringe on U.S. Patent No. 9,565,149. Phoji is the assignee for the ’149 patent.
Phoji has claimed that Slack has infringed on its patent, and said it has informed Slack of its alleged infringement. In June 2019, Phoji approached Slack to inquire if Slack would be interested in licensing the ’149 patent, “which is generally directed to creating emojis from real media and integrating images and text in messaging and communication platforms.” The letter stated that “[t]he utilization and deployment of the Slack Emoji and the recent deployment of the clickable feature make us believe that Slack would find it beneficial to license Phoji, Inc. intellectual property.” A few months later in October, Slack was sent a letter accusing the company of infringing Phoji’s patent. Phoji continued to seek that Slack license the patent, while Slack continued to assert that it does not infringe on the patent and as a result, did not need to license from Phoji. Phoji gave a final license offer with an end of the year 2019 deadline. Phoji again claimed Slack’s infringement, which Slack denied, stating the patent “does not cover any products or services offered by Slack.”
After further discussions and more attempts by Phoji to have Slack license, Slack stated the “Phoji had never attempted to demonstrate that Slack infringes any claim of the ’149 patent because Phoji had never provided a claim chart or any other material that identified any Slack functionality that allegedly meets every limitation of any single claim.” When asked, Phoji allegedly only provided evidence to Slack of its infringement when it presented Slack with an ultimatum: license the patent or face litigation. After reviewing the claims, Slack once again stated that it did not infringe on the patent.
Slack states that no Slack product or services use something protected in the patent. For example, as a non-limiting Claim, “Claim limitation 1[e] requires a ‘semantic model’ configured to categorize a ‘personalized image library based on contact data and emotional state data.’” Phoji stated that Slack’s emoji library infringed on this claim. However, Slack stated that a user’s emoji library is not “categorize[d]” “based on contact data and emotional state data,” which is required in Claim 1. Slack’s Emoji library “is organized based on frequency and recency of use and a common physical attribute between emojis.” Slack also states that it does not induce infringement or contributorily infringe on the ’149 patent.
Slack has sought “a judicial determination and declaration of the respective rights and duties of the parties with respect to the ’149 patent.” Slack seeks a declaratory judgment that it has not infringed on the patent. Slack would also like for the court to declare the case exceptional, which would allow Slack to be awarded attorneys’ fees.
