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Ginegar LLC sued Slack Technologies, Inc. for infringing its
patents involving instant messaging systems. Judge William H.
Orrick previously dismissed Ginegar’s claims for failure to
satisfy Section 101 with leave to amend. Despite Ginegar’s
second bite at the complaint-drafting apple, Judge Orrick held that
the claim at issue still fails to satisfy 35 U.S.C. §101 under
the Mayo/Alice test. Judge Orrick thus dismissed Ginegar’s
infringement claim under Rule 12(b)(6) without leave to amend and
entered judgment against Ginegar.
Abstract Idea. The claim at issue 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 those messages. The court found that the
claim recites an abstract idea of “combining different message
types in a single transcript.” Although Ginegar identified a
purported improvement to instant messaging technology, i.e.,
“automatically creating a single chat transcript with both
text and audio messages,” the court noted that it was
insufficient. Ginegar failed to show how the claimed invention
solved a problem in instant message systems and merely relied on an
improved result — “the unified chat
transcript.”
No Inventive Concept. The court also found that
the claim lacks an inventive concept. The purported 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. The court emphasized
that whether the claim recites an inventive concept “goes
beyond what was simply known in the prior art.” Ginegar failed
to explain how “logging the unified chat transcript” is
“anything more than the abstract idea itself, let alone adds
something ‘significantly more.'”
This case shows that the Northern District remains willing to
entertain 101 motions at the pleading stage and presents another
example that 101 motions can be a powerful and cost-effective tool
to terminate a case early.
Because of the generality of this update, the information
provided herein may not be applicable in all situations and should
not be acted upon without specific legal advice based on particular
situations.
© Morrison & Foerster LLP. All rights reserved
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