On Wednesday, Judge William H. Orrick issued an opinion in a dispute between Ginegar LLC and defendant Slack Technologies Inc., contending that Slack infringed two patents owned by Ginegar related to instant messaging (IM) systems. The court granted the motion in its entirety with partial leave to amend, finding the five claims of the two patents at issue recited an abstract idea rather than a patentable concept.
Ginegar’s two patents are directed to IM systems, where individuals communicate with one another using text-based or other communications over a network in real time, Judge Orrick explained. These systems typically operate through programs installed on user devices like computers, phones, or tablets that connect to at least one instant message server, the opinion added.
Slack moved to dismiss the lawsuit arguing that the patents are invalid because they are directed to ineligible concepts rather than inventive ones. Ginegar countered that the patents are not directed to abstract ideas and that even if so, they cover patentable subject matter because they recite improvements to IM systems.
Considering U.S. Patent Number 9,367,521, entitled “Content and Context Based Handling of Instant Messages” and issued in 2016, the court ruled that it was “directed to the abstract idea of evaluating and responding to a message based on its content or context.” Judge Orrick agreed with Slack that the patent’s two claims were based on an activity that humans have been doing manually for a long time, and as a mere replacement for human activity with a computer, they were directed to an abstract idea.
U.S. Patent Number 9,760,865, entitled “Multi-Modal Transcript Unification in a Collaborative Environment,” was issued in 2017, and “claims methods and systems related to multi-modal IM systems, where users can communicate via text and audio in a single chat session,” the court explained.
Ginegar asserted three independent claims against Slack for the ‘865 patent, one of which was “directed to a data processing system which includes hardware and software elements that maintain, and perform functions associated with, the instant message session.”
As to that claim of the ‘865 Patent, the court opined that Ginegar put forward some facts alleging that its “multi-modal transcript unification logic element” represented an improvement in IM technology and/or an inventive concept. The court granted leave to amend the allegation related to this claim only. It instructed that should Ginegar do so, it must allege facts showing how the logic element improves the technology of IM systems or what makes it an inventive concept.
Ginegar is represented by Hilgers Graben PLLC and Slack by Gibson Dunn & Crutcher LLP.
