1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 GINEGAR LLC, Case No. 22-cv-00044-WHO
8 Plaintiff, ORDER GRANTING MOTION TO 9 v. DISMISS
10 SLACK TECHNOLOGIES, INC, Re: Dkt. No. 55 Defendant. 11
12 13 Plaintiff Ginegar LLC (“Ginegar”) filed suit against defendant Slack Technologies, Inc. 14 (“Slack”), asserting that Slack infringed upon two patents owned by Ginegar related to instant 15 messaging systems. Slack moves to dismiss, arguing that the claims are invalid because they are 16 directed to ineligible subject matter and do not claim an improvement to instant messaging 17 technology. Because the claims at issue recite an abstract idea and fail to include an inventive 18 concept that elevates them to more than a patent on the abstract idea itself, Slack’s motion to 19 dismiss is GRANTED, with limited leave to amend. 20 BACKGROUND I. FACTUAL BACKGROUND 21 Ginegar is the assignee and owner of U.S. Patent Numbers 9,367,521 (the “‘521 Patent”) 22 and 9,760,865 (the “‘865 Patent”) (collectively, the “Patents”). First. Am. Compl. (“FAC”) [Dkt. 23 No. 27] ¶¶ 2, 15-16, 31-32 (citing Exs. A (‘521 Patent), B (‘865 Patent)). The Patents are directed 24 to instant messaging systems, where “individuals can communicate with one another using text- 25 based or other forms of communications over a network in substantially real time.” Id. at ¶ 17. 26 These systems typically operate through programs installed on user devices (i.e., computers, 27 phones, or tablets) that connect to at least one instant message server. See id. at ¶¶ 17-18. Instant 1 messaging systems also enable users to communicate with each other in different ways; for 2 example, users may converse via text or audio messages. See id. at ¶¶ 34-35. 3 A. The ‘521 Patent 4 The ‘521 Patent, entitled “Content and Context Based Handling of Instant Messages,” was 5 issued on June 14, 2016, and claims a method of processing instant message transactions between 6 users during an instant messaging session. See id. at ¶¶ 15, 23-24 (citing ‘521 Patent). 7 The patent has two claims; Ginegar asserts both against Slack. See FAC at ¶ 53. The 8 claims are directed to handling rules—stored on and obtained from an instant message server— 9 that correspond to certain actions performed in response to receipt of an instant message. See ‘521 10 Patent at 18:2-26. Claim 1 is independent and recites the following:
11 1. A method of processing instant message transactions comprising:
12 logging a first instant message client into an instant message server; 13 obtaining from the instant message server, at least one handling rule that is 14 evaluated in an instant messaging environment in response to receipt of a message, each handling rule defining a condition based upon at least one of 15 identified content or identified context, and a corresponding event handling 16 action to be performed within the instant message environment;
17 identifying an instant message conversation within the instant message environment between a user and a correspondent; 18 evaluating each handling rule; 19
20 performing the corresponding event handling action of an associated handling rule if it is determined that the condition of that handling rule is 21 satisfied; and
22 conveying to the user participating in the instant message conversation, an indication that the corresponding event handling action was performed. 23 Id. at 18:2-22. 24 The ‘521 Patent’s specification explains that a “handling rule” defines a condition, based 25 on content and/or context, and a corresponding “handling action” that occurs if that condition is 26 met. See id. at 3:25-32. In other words, when a user receives an instant message, the handling 27 1 actions include “showing another user’s online status, filtering instant messages, generating 2 notifications, generating messages, or limiting display screen interruptions.” See id. at ¶ 29. 3 There are two types of handling rules, based on conditions in the instant messaging 4 environment: (1) rules based on the content detected in an instant message; and (2) rules based on 5 the context of user activity. See ‘521 Patent at 3:7-24. Content-based rules respond to 6 information internal or external to the instant message system, such as designated words in a 7 message. See id. at 3:20-24. Context-based rules pertain to events that “characterize user 8 behavior, user activity, environment, setting, hierarchical prioritizations and/or other factors”—for 9 example, detecting when the user is typing on her device by monitoring the number of keystrokes 10 per unit of time. See id. at 3:16-19, 12:30-35. For both types of handling rules, once the 11 appropriate condition is satisfied, the corresponding action is performed, and the user is notified 12 that the action occurred. See id. at 2:11-16. 13 The instant message system may include a presence and awareness server to “support 14 instant messaging within a collaborative environment.” See id. at 4:9-16. This server can notify a 15 user’s designated contacts when that user is “present” in the instant message system and available 16 for conversation. See id. at 4:21-34. The server can also “execute components directed towards 17 other collaborative objectives such as on-line conferencing, paging, person locating and 18 contacting, [and] calendaring.” See id. at 4:17-21. 19 Claim 2 is dependent on Claim 1 and recites the following:
20 2. The method according to claim 1, wherein at least one handling rule is 21 autonomically generated based upon a dynamic evaluation of at least one of a user or a community of instant message users. 22 Id. at 18:23-26. Claim 2 thus recites the limitation of autonomically generating a handling rule in 23 response to instant message transactions within an instant messaging system. See id. The patent’s 24 specification explains that the instant message server software “may comprise an adaptive and/or 25 autonomic behavior manager for providing dynamic autonomic features for instant message 26 enhancement.” Id. at 6:66-7:2. For example, the manager may detect that a user quickly closes 27 instant message windows during certain hours of the day but responds to messages during other 1 hours, and can build a rule predicated on designated time frames. See id. at 11:61-12:6. 2 B. The ‘865 Patent 3 The ‘865 Patent, entitled “Multi-Modal Transcript Unification in a Collaborative 4 Environment,” was issued on September 12, 2017, and claims methods and systems related to 5 multi-modal instant messaging systems, where users can communicate via text and audio in a 6 single chat session. See FAC at ¶¶ 31, 33, 36 (citing ‘865 Patent). 7 The patent has 16 claims; Ginegar asserts Claims 1, 8, and 10 against Slack. See FAC at ¶ 8 76. The claims all relate to a single instant messaging session between two users that 9 “automatically log[s] a unified chat transcript that contains both audio messages and text 10 messages.” Id. at ¶¶ 40-42. Claim 1 is directed to a method for generating a transcript that 11 contains both message types exchanged in a session; Claim 10 is directed to a computer program 12 product that essentially performs the method in Claim 1. See ‘865 Patent at Claims 1, 10. Claim 8 13 is directed to a system that contains an instant messenger which maintains the multi-modal session 14 and records the corresponding multi-modal transcript. See id. at Claim 8. 15 Claim 1 of the patent is an independent claim and recites the following:
16 1. A method for generating a unified chat transcript for a multi-modal conversation in an instant messaging session, the method comprising: 17
18 establishing a single instant messaging session between two conversants;
19 receiving text messages as part of a conversation between the two conversants, through the single instant messaging session; 20
21 embedding in the instant messaging session a voice message received from one of the two conversants; 22 classifying each one of the embedded voice message and the received text 23 messages by type, the type of message being one of a voice message and a text message; 24
25 determining if the one of the voice and text messages is classified as a voice message; and, 26 logging the classified voice and text messages in a single transcript of 27 conversation between the two conversants occurring in the single instant 1 Id. at 5:24-44. Creation of the unified transcript is automatically initiated when, after text 2 messages are exchanged, one of the two users participating in the session sends a voice message. 3 See id. at 5:29-39. The patent’s specification explains that automatically logging the unified chat 4 transcript cures a deficiency in prior instant message systems, which lacked the ability to log 5 multi-modal communication in one conversation. See id. at 1:38-43. 6 Claim 8 of the patent is an independent claim and recites the following: 7
8 8. A collaborative computing data processing system comprising:
9 a processor;
10 an instant messenger configured to maintain a multi-modal instant messaging session between first and second conversants; and 11
12 multi-modal transcript unification logic, executing on the processor and configured to 13 establish a single instant messaging session between two conversants, 14 receive text messages as part of a conversation between the two 15 conversants, through the single instant messaging session, 16 embed in the instant messaging session a voice message received from one 17 of the two conversants,
18 classify each one of the embedded voice message and the received text messages by type, the type of message being one of a voice message and a 19 text message, 20 determine if the one of the voice and text messages is classified as a voice 21 message, and
22 log the classified voice and text messages in a single transcript of conversation between the two conversants occurring in the single instant 23 messaging session in response to determining that the one of the voice and 24 text messages is classified as a voice message.
25 Id. at 5:65-6:25. Claim 8 differs from the other two asserted claims in that it claims the elements 26 of a processor, an instant messenger, and a multi-modal transcript unification logic. See id. 27 Within this system, the processor executes the logic to effect the method claimed in Claim 1; the 1 instant messenger maintains the instant message session where the method of creating a unified 2 transcript occurs. See id. at 6:1-5. The specification explains that the multi-modal transcript logic 3 can function in the instant message environment; it can include program code to allow, receive, 4 and record voice and text messages exchanged between users. See id. at 2:31-37. 5 Claim 10 of the patent is an independent claim and recites the following:
6 10. A computer program product comprising a computer usable storage medium that is not a transitory signal per se, having computer usable 7 program code stored thereon for generating a unified transcript for a multi- 8 modal conversation, the computer usable program code, when executed on a computer hardware device, causing the computer hardware device to 9 perform the operations of:
10 establishing a single instant messaging session between two conversants; 11 receiving text messages as part of a conversation between the two 12 conversants, through the single instant messaging session;
13 embedding in the instant messaging session a voice message received from one of the two conversants; 14
15 classifying each one of the embedded voice message and the received text messages by type, the type of message being one of a voice message and a 16 text message;
17 determining if the one of the voice and text messages is classified as a voice message; and, 18
19 logging the classified voice and text messages in a single transcript of conversation between the two conversants occurring in the single instant 20 messaging session in response to determining that the one of the received voice and text messages is classified as a voice message. 21 22 Id. at 6:29-55. Claim 10 differs from the other two asserted claims in that it claims the elements of 23 a computer usable storage medium and program code. See id. In other words, Claim 10 claims 24 software code that, when executed by a computer hardware device, allows the hardware to 25 generate a unified chat transcript. See id. at 6:33-35, 50. 26 II. PROCEDURAL BACKGROUND 27 On February 19, 2021, Ginegar filed a complaint in the District of Colorado alleging patent 1 this district on January 4, 2022. See Dkt. Nos. 27, 46. On January 18, 2022, Slack filed this 2 motion to dismiss. Dkt. No. 55. 3 LEGAL STANDARD 4 Under Federal Rule of Civil Procedure 12(b)(6), a court must dismiss a complaint if it fails 5 to state a claim upon which relief can be granted. To survive a Rule 12(b)(6) motion to dismiss, 6 the plaintiff must allege “enough facts to state a claim to relief that is plausible on its face.” Bell 7 Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible when the plaintiff 8 pleads facts that allow the court to “draw the reasonable inference that the defendant is liable for 9 the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted). There 10 must be “more than a sheer possibility that a defendant has acted unlawfully.” Id. While courts 11 do not require “heightened fact pleading of specifics,” a plaintiff must allege facts sufficient to 12 “raise a right to relief above the speculative level.” See Twombly, 550 U.S. at 555, 570. 13 In deciding whether the plaintiff has stated a claim upon which relief can be granted, the 14 court accepts her allegations as true and draws all reasonable inferences in her favor. See Usher v. 15 City of Los Angeles, 828 F.2d 556, 561 (9th Cir. 1987). However, the court is not required to 16 accept as true “allegations that are merely conclusory, unwarranted deductions of fact, or 17 unreasonable inferences.” In re Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008). 18 The Federal Circuit has “repeatedly recognized that in many cases it is possible and proper 19 to determine patent eligibility under 35 U.S.C. § 101 on a Rule 12(b)(6) motion.” Genetic Techs. 20 Ltd. v. Merial LLC., 818 F.3d 1369, 1373 (Fed. Cir. 2016). However, “plausible factual 21 allegations may preclude dismissing a case under § 101 where, for example, nothing on the record 22 refutes those allegations as a matter of law or justifies dismissal under Rule 12(b)(6).” Aatrix 23 Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018) (internal 24 citations and modifications omitted). As the Federal Circuit stated in Aatrix:
25 [P]atentees who adequately allege their claims contain inventive concepts 26 survive a § 101 eligibility analysis under Rule 12(b)(6). . . . While the ultimate determination of eligibility under § 101 is a question of law, like 27 many legal questions, there can be subsidiary fact questions which must be resolved en route to the ultimate legal determination. . . . Whether the claim conventional is a question of fact. 1 882 F.3d at 1126-28.1 2 DISCUSSION 3 Slack argues that because the Patents are directed to ineligible concepts (in the form of 4 abstract ideas) and do not recite inventive concepts, they are invalid. See Mot. to Dismiss 5 (“MTD”) [Dkt. No. 55] 1:4-9. Ginegar responds that the Patents are not directed to abstract ideas 6 and that even if they were, they are patentable subject matter because they recite improvements to 7 instant messaging systems. See Oppo. at 4:16-19, 9:24-26, 14:15-19, 15:28-16:2. I will address 8 each point in turn, as they relate to both patents and the claims at issue. 9 I. PATENTABLE SUBJECT MATTER 10 An invention must be directed to one of four statutory categories of subject matter that can 11 be patented, known as eligible subject matter: processes, machines, manufactures, and 12 compositions. 35 U.S.C. § 101. Even when directed to an eligible category, the invention must 13 also qualify as patentable subject matter. There are three judicially created exceptions that are 14 considered ineligible subject matter and therefore are not patentable: laws of nature, natural 15 phenomena, and abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). Abstract 16 ideas include “mental processes” and “intellectual concepts,” and are not patentable subject matter 17 “as they are the basic tools of scientific and technological work.” See Gottschalk v. Benson, 409 18 U.S. 63, 67 (1972). The reason for the exceptions is clear enough—“such discoveries are 19 manifestations of nature, free to all men and reserved exclusively to none.” Chakrabarty, 447 20 U.S. at 309 (internal citation omitted). 21 Considering these exceptions, the Supreme Court devised a two-step test for determining 22 whether a claim recites patentable subject matter: (1) whether the claim is directed to an ineligible 23 concept; and (2) if so, whether the claim recites additional elements beyond the ineligible concept. 24 25 1 Ginegar contends that “Slack must prove, by clear and convincing evidence, that each asserted claim of the patents- 26 in-suit is invalid as directed to an abstract idea.” Oppo. [Dkt. No. 60] 2:26-27. In support, it primarily relies upon Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), which was decided a week before Aatrix. See id. at 2:5-25. It 27 is worth noting that Berkheimer was appealed after summary judgment, not a motion to dismiss, as in Aatrix. See Berkheimer, 881 F.3d at 1362; see also Aatrix, 882 F.3d at 1123. The Federal Circuit also made clear in Berkheimer 1 See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77-78 (2012). The test 2 was further explained in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217-18 (2014), 3 where the Court described the second part of the test as “a search for an ‘inventive concept’” that 4 adds “significantly more” to the ineligible concept. 5 The first step in evaluating whether claims are patent eligible is determining what type of 6 matter they are directed to and whether it fits within one of the four statutorily provided 7 categories. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–14 (Fed. Cir. 2014). If the 8 claims recite categories of eligible subject matter, the court must then determine whether they 9 claim patentable subject matter by employing the Mayo/Alice test. See id. 10 II. THE ‘521 PATENT 11 In the ‘521 Patent, Claim 2 is dependent on Claim 1; therefore, the analysis is similar for 12 each claim. See ‘521 Patent at Claims 1, 2. Both are method claims that fall within a patent- 13 eligible category under section 101. See 35 U.S.C. § 100(b) (defining “process” as “process, art or 14 method”); ‘521 Patent at 18:2 (“A method of processing instant message transactions . . .”). 15 However, under the Mayo/Alice framework, both are directed to abstract ideas, and neither applies 16 an abstract idea such that it elevates the claim to more than a patent on the idea itself. 17 A. Whether The Claims Are Directed To An Ineligible Concept 18 At step 1 of the Mayo/Alice test, the court must “determine whether the claims at issue are 19 directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. Both the Supreme 20 Court and the Federal Circuit instruct courts to “compare claims at issue to those claims already 21 found to be directed to an abstract idea in previous cases.” Enfish, LLC v. Microsoft Corp., 822 22 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 573 U.S. at 221). “[T]he ‘directed to’ inquiry 23 applies a stage-one filter to claims, considered in light of the specification, based on whether their 24 character as a whole is directed to excluded subject matter.” Id. at 1335 (internal citation and 25 quotation marks omitted). For claims that are purportedly directed to improvements in computer 26 capabilities, the inquiry asks whether “the plain focus of the claims is on an improvement to 27 computer functionality itself, not on economic or other tasks for which a computer is used in its 1 Slack argues that the ‘521 Patent is directed to the abstract idea of evaluating and 2 responding to a message based on its content or context—an activity it contends “humans have 3 long been doing manually since the pre-computer world”—and does not disclose any 4 improvements to computer or instant messaging technology. See MTD at 6:22-24, 10:22-23. 5 Ginegar insists that the claims are not directed to an abstract idea, and instead claim a 6 “novel method of processing instant messages in a way that enhances or extends the functionality 7 of existing instant messaging systems.” See Oppo. at 4:16-19. It contends that the invention 8 “enhance[s] an instant message system using a specific type of server to send a specific class of 9 handling rules to an instant message client.” Id. at 10:28-11:4. 10 “The analysis of the claims’ character must start with the content of the claims 11 themselves.” Ultramercial, 772 F.3d at 714. Claim 1 involves responding in certain ways to the 12 receipt of instant messages, based on pre-established rules that are stored on a server.2 See ‘521 13 Patent at 18:2-22. Similar claims have been found to be directed to an abstract idea. For example, 14 in Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016), the 15 Federal Circuit held “that receiving e-mail (and other data file) identifiers, characterizing e-mail 16 based on the identifiers, and communicating the characterization—in other words, filtering files/e- 17 mail—is an abstract idea.” The court went on to explain that
18 it was long-prevalent practice for people receiving paper mail to look at an 19 envelope and discard certain letters, without opening them, from sources from which they did not wish to receive mail based on characteristics of the 20 mail. The list of relevant characteristics could be kept in a person's head. Characterizing e-mail based on a known list of identifiers is no less abstract. 21 The patent merely applies a well-known idea using generic computers to the particular technological environment of the internet. 22 Id. at 1314 (citation omitted). 23 In other words, when an invention merely replaces human activity with a computer, it is 24 still directed to an abstract idea. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 25 (Fed. Cir. 2016) (“the focus of the claims is not on . . . an improvement in computers as tools, but 26
27 2 The parties disagree on whether the claims are directed to handling rules or to the instant messages themselves. See 1 on certain independently abstract ideas that use computers as tools”). Claim 1 does just that. 2 Using rules to sort instant messages is an abstract idea, akin to filtering emails, and is also an 3 activity that can be completed by humans. And as in Symantec, a person could keep the list of 4 handling rules in her head—applying an instant message server to this abstract idea does not make 5 it patentable subject matter. See 838 F.3d at 1314. 6 Ginegar’s arguments based on the claim language fail to land. The fact that “[h]andling 7 rules are not necessarily tied to message content or characteristics” does not change the analysis. 8 See Oppo. at 6:1-2. People can just as easily respond to mail based on context as on content. Nor 9 would the invention’s use of a specific class of handling rules change the analysis.3 Further, the 10 benefits that Ginegar describe, of avoiding distractions and setting user preferences, result from 11 performing abstract ideas in an instant message environment. See FAC at ¶¶ 21-22; cf. BSG Tech 12 LLC v. Buyseasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018) (“These benefits, however, are not 13 improvements to database functionality. Instead, they are benefits that flow from performing an 14 abstract idea in conjunction with a well-known database structure.”). Considering the elements in 15 combination likewise does not change the analysis—the “claim’s character as a whole” is still 16 directed to the abstract idea of collecting information and analyzing that information according to 17 a set of rules. See Enfish, 822 F.3d at 1335; see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 18 F.3d 1089, 1093 (Fed. Cir. 2016) (holding that claims reciting a method of collecting a specific 19 type of information, applying predetermined rules to analyze the data, and providing notification 20 of the results of the analysis were directed to an abstract idea). 21 Ginegar also argues that Claim 1 is directed to an improvement in instant message 22 technology: “a method of enhancing an instant message system using a specific type of server to 23 send a specific class of handling rules to an instant message client.” See Oppo. at 10:28-11:4. 24 This argument is not compelling. To be sure, claims “purporting to improve the functioning of the 25 26 3 Nothing in the claim language indicates that the handling rules are special rules, as Ginegar alleged at oral argument. See Tr. [Dkt. No. 66] 20:13-17. Even if they were, that alone would not elevate the claim to patentable subject matter. 27 In Electric Power, the Federal Circuit explained that collecting information with particular content, “analyzing information by steps people go through in their minds,” without more, and “presenting the results of abstract processes 1 computer or improving an existing technological process might not succumb to the abstract idea 2 exception.” Enfish, 882 F.3d at 1335 (internal modifications omitted). However, the claim 3 language of the ‘521 Patent is not directed to a specific improvement to instant message 4 technology. 5 Ginegar contends that the ‘521 Patent contains an inventive concept because it recites a 6 presence and awareness server that “provides publication and/or notification of presence 7 information for each user” and “allows the handling rules to be utilized to actively, adaptively, 8 and/or dynamically enhance the instant messaging environment.” Oppo. at 5:13-23 (citing ‘521 9 Patent at 4:9-34, 5:23-30). While Claim 1 recites an “instant message server,” there is no 10 language in the claim that further describes the server. See ‘521 Patent at 18:4-5. Ginegar points 11 to the specification, contending that “the server is described as a ‘presence and awareness server.’” 12 See Oppo. at 5:16-17 (citing ‘521 Patent at 4:9-34 (“the illustrated system includes a presence and 13 awareness server”)). While the specification describes a presence and awareness server, but this is 14 only one type of instant message server. See, e.g., ‘521 Patent at 4:9-16. This much is apparent 15 from the written description. For example, when describing the embodiment in Figure 4, the 16 specification explains that “[e]ach handling rule may be created, stored and evaluated locally 17 and/or via a corresponding server such as the presence and awareness server . . . depending upon 18 the specific implementation.” See id. at 8:30-33 (emphasis added); see also id. at 9:35-40 (“on an 19 instant message application server such as the presence and awareness server.”). 20 The Federal Circuit has “repeatedly held that features that are not claimed are irrelevant as 21 to step 1 or step 2 of the Mayo/Alice analysis.” Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 22 967 F.3d 1285, 1293 (Fed. Cir. 2020); see also ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 23 759, 769 (Fed. Cir. 2019) (“[A]ny reliance on the specification in the § 101 analysis must always 24 yield to the claim language . . . the specification cannot be used to import details from the 25 specification if those details are not claimed.”). Similarly, disclosing an improvement in the 26 specification not recited in the claims does not convert an otherwise ineligible claim into 27 patentable subject matter. See Berkheimer, 881 F.3d at 1369 (stating that when improvements are 1 the asserted claims and determine whether they capture these improvements”). Claim 1 simply 2 does not recite the presence and awareness server upon which Ginegar relies. 3 The case that Ginegar points to is inapposite, as the claim at issue there recited critical 4 advancements over the prior art. In McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 5 1313-16 (Fed. Cir. 2016), the Federal Circuit held that a claim was not directed to an abstract idea 6 when it recited rules to transform a traditionally subjective process performed by human artists 7 into a mathematically automated process executed on computers. The same was true in Enfish, 8 where the Federal Circuit held that the claims at issue were directed to a particular improvement in 9 a database system because the claim language recited the invention’s specific improvements—“by 10 employing a flexible, self-referential table to store data”—and the invention was directed to those 11 specific improvements. See 882 F.3d at 1337. 12 No similar language is present in Claim 1. Nothing in the claim language tethers a recited 13 element (such as the server or handling rules) to the function of improving instant message 14 technology or to an improvement over a traditional process that produces the same result in a 15 fundamentally different way. Although the ‘521 Patent’s specification claims to “enhance” instant 16 message systems, the specification “is not a substitute for, nor can it be used to rewrite, the chosen 17 claim language.” See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 18 2004); see also ‘521 Patent at 3:7-10 (stating that the invention “enhance[s] a user’s experience 19 with an instant messaging system”). 20 This analysis applies with equal force to Claim 2. Claim 2 recites the additional element of 21 autonomically generating a handling rule. See ‘521 Patent at 18:23-26. Notwithstanding the 22 additional limitation, Claim 2 is still directed to an abstract idea because: (1) it is dependent on 23 Claim 1 and is also directed to responding to instant messages in a certain way; and (2) nothing in 24 the claim language tethers the additional element to a technological improvement. 25 Accordingly, Claims 1 and 2 are directed to an abstract idea. 26 B. Whether The Claims Add An Inventive Concept 27 Even if a claim is directed to an ineligible concept, it may contain additional elements that 1 2 of the Mayo/Alice test, courts must “search for an inventive concept” by “consider[ing] the 2 elements of each claim both individually and as an ordered combination to determine whether the 3 additional elements transform the nature of the claim into a patent-eligible application.” Alice, 4 573 U.S. at 217; Enfish, 822 F.3d at 1334. Adding “well-understood, routine, conventional 5 activity already engaged in . . . are not sufficient to transform” unpatentable subject matter into 6 patentable applications of ineligible concepts. See Mayo, 556 U.S. at 79-80. 7 Ginegar’s primary argument is that Slack has not shown by clear and convincing evidence 8 that the ‘521 Patent’s claims do not include an inventive concept. See Oppo. at 12:8-24. It further 9 contends that the claims “recite a specific implementation of an invention that is neither routine 10 nor conventional,” and that the specification “discusses how the method claims in the ‘521 Patent 11 can enhance an instant message system in a way that is not well-known, routine, or conventional.” 12 See id. But the purported enhancement depends on the presence and awareness server—an 13 unclaimed embodiment. As explained above, “features that are not claimed are irrelevant as to 14 step 1 or step 2 of the Mayo/Alice analysis.” Am. Axle, 967 F.3d at 1293. The specification 15 “cannot be used to import details from the specification if those details are not claimed.” See 16 ChargePoint, 920 F.3d at 769. And merely reciting tangible components (such as an instant 17 message server) is not enough to transform the claim into patentable subject matter. See In re TLI 18 Commc’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). 19 Ginegar’s reliance on Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 20 1341 (Fed. Cir. 2016), is misplaced. See Oppo. at 11:26-12:15. Unlike the claims in Bascom, 21 Claim 1 does not recite an ordered combination of claim limitations that transform an abstract idea 22 “into a particular, practical application of that abstract idea.” See Bascom, 827 F.3d at 1352. In 23 Bascom, the claims were directed to the abstract idea of filtering content on the internet; however, 24 they contained an inventive concept in their unique method of filtering content. See id. (“The 25 claims carve out a specific location for the filtering system (a remote ISP server) and require the 26 filtering system to give users the ability to customize filtering for their individual network 27 accounts.”). Ginegar’s argument is not analogous because the purported novel method is based on 1 Ginegar further argues that Claim 2 adds an additional inventive concept because it 2 “discloses an ‘adaptive and/or autonomic behavior manager’ that provides dynamic autonomic 3 features for instant message enhancement.” See id. at 12:25-13:7 (citing in part ‘521 Patent at 4 6:66-7:11). As with Claim 1, Ginegar points to embodiments disclosed in the specification that 5 are not found in the claim language itself. According to the patent’s written description, the 6 instant message server software may comprise an autonomic behavior manager. See ‘521 Patent at 7 6:66-7:2. This tells me that such a manager is not inherently present in any elements of Claim 2. 8 Because the claims do not contain inventive concepts, the ‘521 Patent does not survive a 9 section 101 eligibility analysis under Rule 12(b)(6). Accordingly, Slack’s motion to dismiss the 10 infringement claims premised on the ‘521 Patent is GRANTED with prejudice.4 11 III. THE ‘865 PATENT 12 In the ‘865 Patent, three independent claims are asserted against Slack. At the outset, all 13 three fall within patent-eligible categories under section 101. Claim 1 is a method claim. See 35 14 U.S.C. § 100(b); see also ‘865 Patent at 5:24 (“A method for generating a unified chat transcript . . 15 . .”). Claim 8 is a system claim and Claim 10 is a device claim; both are directed to tangible 16 things. See ‘865 Patent at 5:65 (“A collaborative computing data processing system comprising . . 17 .”), 6:30 (“A computer program product comprising . . .”); see also Digitech Image Techs., LLC v. 18 Elecs. for Imaging, Inc., 758 F.3d 1344, 1348 (Fed. Cir. 2014) ("For all categories except process 19 claims, the eligible subject matter must exist in some physical or tangible form."). 20 However, I again conclude under Mayo/Alice that the claims are directed to abstract ideas, 21 and none involve an application of such that elevates the claim to more than a patent on the 22 abstract idea itself. 23 A. Whether The Claims Are Directed To An Ineligible Concept 24 Slack argues that the claims asserted from the ‘865 Patent are directed to the “idea of 25 26 4 Although Ginegar did not request leave to amend its infringement claims, I have considered the general rule that “leave to amend should be granted if it appears at all possible that the plaintiff can correct the defect.” See Vess v. 27 Ciba-Geigy Corp. USA, 317 F.3d 1097, 1108 (9th Cir. 2003). Allowing Ginegar to amend its claims related to the ‘521 Patent cannot cure the fact that its alleged improvement is not recited in the claim language. See Aatrix, 882 1 recording two types of messages in one place” and not to any improvements in computer or instant 2 messaging technology. MTD at 1:23-27, 16:7-10. 3 Ginegar asserts that the invention provides a solution for “the need to create unified 4 transcripts of multi-modal instant message conversations.” See FAC at ¶¶ 34-42, 45; see also 5 Oppo. at 13:26-14:8. As with the ‘521 Patent, Ginegar contends that an improvement—the 6 “multi-modal transcript unification logic”—results in the ‘865 Patent not being directed to an 7 abstract idea. See Oppo. at 14:15-19. 8 1. Claim 1 9 Claim 1 is directed to a method of automatically generating a transcript that combines both 10 text and audio messages exchanged during an instant message session. See ‘865 Patent at 5:24-44. 11 Again, this merely involves using a computer to apply an abstract idea. See Alice, 573 U.S. at 223 12 (explaining that “[s]tating an abstract idea while adding the words ‘apply it with a computer’” is 13 not enough for patent eligibility); see also Elec. Power Grp., 830 F.3d at 1354. The Federal 14 Circuit has also held that claims reciting a method for creating a single display of information 15 collected from various sources are directed to an abstract idea. For example, in Intellectual 16 Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017), it determined 17 that claims which recited creating a “dynamic document” using content from multiple electronic 18 records amount to the “abstract concept of collecting, displaying, and manipulating data of 19 particular documents.” And humans can perform this abstract idea, including by taking words 20 from written mail and words from a voicemail recorded on an answering machine and combining 21 them into a typed transcript. Claim 1 only automates this process. 22 Moreover, Ginegar has not tied the function of automatically logging a unified transcript to 23 an improvement in the technology of instant message systems. Contra DDR Holdings, LLC v. 24 Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir. 2014) (finding a method patent eligible 25 where the claims recited a specific manipulation of the internet such that the claims did not rely on 26 a “computer network operating in its normal, expected manner”); see also Enfish, 822 F.3d at 27 1335-36 (distinguishing between claims that focus “on the specific asserted improvement in 1 computers are invoked merely as a tool”). Again, McRO is instructive. There, the Federal Circuit 2 held that a claim was not directed to an abstract idea because it did not recite the mere desired 3 result of automating an activity, but rather, a specific solution for accomplishing that goal. See 4 837 F.3d at 1314. Claim 1 is not directed to producing a result in a different way; Ginegar does 5 not sufficiently identify how its method of combining message types is fundamentally different 6 from traditional methods of data combination and recording. At the end of the day, it is the 7 incorporation of a computer (or analogous user device) that improves the instant messaging 8 process by creating the unified transcript. Claims that “simply use a computer as a tool to 9 automate conventional activity” are directed to abstract ideas. See McRO, 837 F.3d at 1314. 10 2. Claim 8 11 Claim 8 is directed to a data processing system which includes hardware and software 12 elements that maintain, and perform functions associated with, the instant message session. See 13 ‘865 Patent at 5:65-6:25. The elements present in Claim 8 (but not in Claim 1) are a processor, an 14 instant messenger, and a multi-modal transcript unification logic (the “logic element”) that can be 15 executed by the processor to perform the method claimed in Claim 1. See id. Like Claim 1, 16 Claim 8 is directed to the goal of combining message types into a unified transcript—an abstract 17 idea. See Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018). 18 The question is whether the additional recited elements are tied to an improvement in the 19 technology of the instant message system. See Accenture Glob. Servs., GmbH v. Guidewire 20 Software, Inc., 728 F.3d 1336, 1342 (Fed. Cir. 2013) (stating that when method claims are found 21 to be patent ineligible, the court compares the substantive limitations of the method and system 22 claims to “determine whether the system claim offers meaningful limitations ‘beyond generally 23 linking the use of the [method] to a particular technological environment’”). They are not. 24 Although the additional hardware and software elements are directed to a particular use, the claims 25 do not state how the elements aid the method, the extent to which they do so, or their significance 26 to the method’s performance. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 27 2012) (finding claims patent ineligible because they were “silent as to how a computer aids the 1 performance of the method”). These additional elements cannot circumvent the fact that 2 combining two types of data, such as text and voice messages, and displaying those data in a 3 single transcript, is still directed to an abstract idea. 4 Moreover, Ginegar makes only conclusory allegations about the logic element and does 5 not explain how it improves the technology of instant message systems. See FAC at ¶ 44 6 (asserting that the ‘865 Patent “uses a novel multi-modal transcript logic that can be coupled to the 7 collaborative environment through a host server”); Oppo. at 14:2-3 (“The invention of the ‘865 8 Patent solves this shortcoming in the prior art with a multi-modal transcript unification logic that 9 can” carry out the method steps of Claim 1). Therefore, Claim 8 fails to recite meaningful 10 limitations and “essentially implement[s] the process of the method claim on a general purpose 11 computer.” See Accenture, 728 F.3d at 1341. As the Federal Circuit noted in Accenture, “system 12 claims that closely track method claims and are grounded by the same meaningful limitations will 13 generally rise and fall together.” See id. (citing approvingly CLS Bank Int’l v. Alice Corp. Pty. 14 Ltd., 717 F.3d 1269, 1274 n.1). 15 3. Claim 10 16 Claim 10 is directed to a computer program product that essentially performs the method 17 in Claim 1. See ‘865 Patent at 6:29-55. Again, Ginegar does not allege facts supporting how this 18 claim—with its additional recited elements of a “computer usable storage medium” and “computer 19 usable program code”—results in the purported improvement of creating a unified transcript. See 20 id.; see also Accenture, 728 F.3d at 1341. Although “[s]oftware can make non-abstract 21 improvements to computer technology just as hardware improvements can,” nothing in Claim 10 22 indicates that the recited software product improves instant messaging technology. See Enfish, 23 822 F.3d at 1335. 24 Claim 10 is unlike the claim in Enfish, which disclosed a four-step algorithm that achieved 25 an abstract goal. See id. at 1336-37. Because the specification discloses no algorithm, Ginegar 26 cannot explain how the program code in Claim 10 achieves the underlying goal of unifying text 27 and audio messages into a single transcript. See also Interval Licensing, 896 F.3d at 1344 1 not recite any assertedly inventive technology for improving computers as tools and/or because the 2 elements of the asserted invention were so result-based that they amounted to patenting the patent- 3 ineligible concept itself”). 4 B. Whether The Claims Add An Inventive Concept 5 Ginegar contends that the logic element disclosed in the ‘865 Patent is novel in that it “can 6 be coupled to the collaborative environment through a host server,” and that an inventive concept 7 lies in the ability to automatically log a multi-modal chat transcript. See FAC at ¶ 44; Oppo. at 8 16:1-2. The thrust of its argument is that Slack failed to prove by clear and convincing evidence 9 that the patent recites “nothing more than conventional, routine and well understood steps that 10 occur in a generic instant messaging session.” See Oppo. at 16:2-10 (quotation marks omitted). 11 The underlying alleged inventive concept in the ‘865 Patent is the ability to log a multi- 12 modal chat transcript from an instant message session, which is enabled by the logic element. See 13 Oppo. at 13:25-16:10. However, the logic element does not appear in the claim language of 14 Claims 1 or 10. Nor does Ginegar point to any place in the specification to support that the 15 element is implicitly claimed in Claims 1 or 10. See id.5 In fact, Ginegar concedes that the logic 16 element is absent from Claim 1. See id. at 13:12-13 (“Claim 1 is a method claim and does not 17 contain terms that are in system Claim 8, such as a multi-modal transcript unification logic.”). 18 Moreover, the logic element in Claim 8 is a tangible element executed on a processor 19 which is not recited in the method claim of Claim 1. See ’865 Patent at Claims 1, 8. While Claim 20 1 recites “logging the classified voice and text messages in a single transcript,” this describes the 21 step of recording both message types in a unified transcript; it does not specify what structural 22 elements effect this step. See id. at 5:39-40. In other words, Claim 1 is broader than Claim 8 23
24 5 At oral argument, I asked Ginegar to point to where in the specification the inventive concept is disclosed. See Tr. at 25 10:19-21. Ginegar responded that Column 4 discussed the logic element, specifically by referencing Figure 4, and argued that the element could be contained in different embodiments of hardware or software. See id. at 10:22-11:12. 26 Neither discloses an inventive concept. The referenced portion of Column 4 states that “[e]mbodiments of the invention can take the form of an entirely hardware embodiment, an entirely software embodiment or an embodiment 27 containing both hardware and software elements.” See ‘865 Patent at 4:46-49. This says nothing about the logic element nor describes how this would constitute an improvement in technology. And Figure 4 is a flow chart 1 because Claim 8 limits the method to being performed on a specific system. See id. at 5:65-66 2 (“A collaborative computing data processing system comprising . . .”). 3 Claim 10 recites a computer product having computer usable program code. See id. at 4 6:29-31. The specification discloses that the logic element “can include program code,” meaning 5 that code is not inherently part of the logic element. See id. at 4:11-20 (emphasis added). Because 6 program code is an essential element of Claim 10—and not all logic elements contain program 7 code—the logic element cannot be read into Claim 10. Because the logic element cannot be 8 tethered to the language in Claims 1 and 10, that element cannot serve as the basis for alleging 9 improvements in those two claims. 10 Claim 8 is the only claim asserted from the ‘865 Patent that contains the multi-modal 11 transcript unification logic element in the body of the claim. See ‘865 Patent at 6:4. However, 12 with only a vague reference to the specification and conclusory allegations in the FAC, Ginegar 13 fails to allege how this elevates the claim to patentable subject matter. While Ginegar may 14 certainly rely on the specification to support its allegations, it must explain how details disclosed 15 in the specification connect to the claimed element. See Symantec, 838 F.3d at 1322 (explaining 16 that the “district court erred in relying on technological details set forth in the patent's specification 17 and not set forth in the claims to find an inventive concept”). It failed to do so. 18 In addition, Ginegar has not alleged facts to show the additional hardware and software 19 elements (outside of the logic element) recited in the asserted claims could be considered inventive 20 concepts. Generic computer, network, and internet components (such as the processor recited in 21 Claim 8) are not inventive on their own. See Bascom, 827 F.3d at 1349. Software-based elements 22 (such as the program code recited in Claim 10) must do more than achieve results; they are only 23 inventive when they improve a computer’s technology. See Interval Licensing, 896 F.3d at 1344. 24 Finally, Ginegar argues that automatically logging a chat transcript is an inventive concept; 25 however, this is merely using a computer to perform an abstract idea. See Oppo. at 15:28-16:2; 26 see also Alice, 573 U.S. at 223. Such an invention might make recording a multi-modal instant 27 message communication faster and more efficient, “[b]ut relying on a computer to perform routine 1 Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). As the Federal Circuit 2 || has stated, “a claim for a new abstract idea is still an abstract idea.” Synopsys, 839 F.3d at 1151. 3 Because Ginegar does not adequately allege its claims contain inventive concepts, it does 4 || not survive a section 101 eligibility analysis under Rule 12(b)(6). Accordingly, Slack’s motion to 5 dismiss the infringement claims premised on the ‘865 Patent is GRANTED, with leave to amend 6 || only the infringement claim premised on Claim 8.° 7 CONCLUSION 8 The motion to dismiss is GRANTED with limited leave to amend. Ginegar may only 9 amend its claim asserted on Claim 8 of the ‘865 Patent. All other claims are DISMISSED with 10 || prejudice. Any amended complaint shall be filed within 20 days of the issuance of this Order. 11 IT IS SO ORDERED. e 12 Dated: June 8, 2022
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liam H. Orrick IS United States District Judge YI Q 16
Z 18 19 20 21 22 23 24 25 26 . . . □ It would not be futile to grant leave to amend the infringement claims premised on Claim 8. See Aatrix, 882 F.3d at 7 1127. Ginegar has alleged some facts supporting that the multi-modal transcript unification logic element recited in Claim 8 is an improvement in instant messaging technology and/or an inventive concept. See FAC at 44, 46; 28 Oppo. at 14:2-7. Should Ginegar amend, it must allege facts supporting how the logic element improves the technology of instant message systems (at step 1 of Mayo/Alice) or how it constitutes an inventive concept (at step 2).