Northern District of California Continues its Saga with § 101 Challenges

In a dispute related to technologies covering instant messaging systems, Ginegar LLC (“Ginegar”) sued Slack Technologies, Inc. (“Slack”) for infringing two of its patents. Slack moved to dismiss under Rule 12(b)(6), arguing that the claims are invalid because they are directed to ineligible subject matter and do not claim an improvement to instant messaging technology. Judge Orrick granted Slack’s motion to dismiss, with limited leave to amend.

For Step One of the Mayo/Alice test, the court held that both of the asserted claims of the first patent (the ’521 patent) are directed to an abstract idea of collecting information to sort and analyze that information according to a set of rules. In particular, although the ‘521 Patent’s specification claims to “enhance” instant message systems, “[n]othing in the claim language tethers a recited element [] to the function of improving instant message technology or to an improvement over a traditional process that produces the same result in a fundamentally different way.” For Step Two, the court found that the claims do not contain inventive concepts as the purported enhancement depends on an unclaimed embodiment and is thus irrelevant as to Step One or Step Two of the Mayo/Alice analysis. The court accordingly granted Slack’s motion to dismiss the infringement claims premised on the ’521 Patent with prejudice. 

With respect to the second asserted patent (the ’865 patent), the court concluded under Step One that the three independent claims are directed to an abstract idea of combining two types of messages in one place. And as to Step Two, the court found that the alleged inventive concept enabled by “the logic element” to automatically log a multi-modal chat transcript does not appear in the claim language of two of the asserted claims (i.e., Claims 1 and 10). The third asserted claim (i.e., Claim 8), however, contains the logic element in the claim but Ginegar failed to allege how this elevates the claim to patentable subject matter. Ultimately, the court granted Ginegar limited leave to amend to allege facts supporting how the logic element improves the technology of instant message systems or how it constitutes an inventive concept with respect to Claim 10 only, and dismissed all other claims with prejudice.