Ginegar LLC v. Slack Technologies, Inc.

Background

Ginegar LLC alleged that Slack Technologies, Inc. infringed one of Ginegar’s patents, U.S. Patent No. 8,865, referred to in the opinion as the ’865 Patent. Only Claim 8 remained in the case. That claim covered a collaborative computing system for maintaining an instant-messaging session involving both voice and text messages and recording those messages in one transcript.

Slack moved to dismiss the Third Amended Complaint under Federal Rule of Civil Procedure 12(b)(6), arguing that Claim 8 did not claim patent-eligible subject matter under section 101 of the Patent Act. Ginegar argued that the claim improved instant messaging by automatically creating a unified transcript containing both voice and text messages. Ginegar also argued that the claimed transcript-unification logic was an inventive concept because it addressed limitations in earlier instant-messaging systems.

Patent-Eligibility Analysis

The court applied the two-step framework associated with the Supreme Court’s decisions in Mayo and Alice. First, it asked whether Claim 8 was directed to an ineligible concept, such as an abstract idea. Second, because it found that the claim was directed to an abstract idea, it asked whether the claim included an inventive concept—something that added significantly more than the abstract idea itself.

At the first step, the court concluded that Claim 8 was directed to the abstract idea of combining different types of messages into a single transcript. Although the claim included steps for establishing an instant-messaging session, receiving text messages, embedding voice messages, and classifying the messages, the court found that it did not specify how the system logged the classified messages in one transcript. In the court’s view, Ginegar claimed an improved result rather than the specific means or method for achieving that result.

At the second step, the court found that Ginegar had not adequately alleged an inventive concept. The claimed logic element’s principal asserted feature was logging voice and text messages in one unified transcript, which the court viewed as the abstract idea itself. The court also concluded that using a computer to perform that idea did not add significantly more and did not make the claim patent-eligible.

Disposition

The court granted Slack’s motion to dismiss the infringement claim based on Claim 8. Because Ginegar had been unable to successfully amend its complaint after the court’s earlier dismissal order, the court dismissed the claim without leave to amend. The court stated that Claim 8 was Ginegar’s last potentially viable claim and ordered that judgment be entered against Ginegar in the litigation.