No More Bites at the Apple to Satisfy Section 101

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.