DCT
3:22-cv-00044
Ginegar LLC v. Slack Tech Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ginegar LLC (California)
- Defendant: Slack Technologies, Inc. (Delaware)
- Plaintiff’s Counsel: Hilgers Graben, PLLC
- Case Identification: 3:22-cv-00044, N.D. Cal., 07/12/2022
- Venue Allegations: Venue is alleged to be proper based on Defendant maintaining a place of business in the district and because a substantial part of the events giving rise to the claims allegedly occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s Slack communication platform infringes a patent related to the creation of a single, unified transcript for conversations that include both text and voice messages.
- Technical Context: The technology addresses the challenge of creating a complete and chronologically coherent record of a digital conversation when users switch between different modes of communication, such as typing text and sending audio clips.
- Key Procedural History: The complaint is a Third Amended Complaint. Subsequent to the filing of this complaint, the U.S. Patent and Trademark Office issued an Inter Partes Review (IPR) Certificate for the patent-in-suit, resulting from a proceeding initiated by a third party. The certificate, effective April 11, 2023, cancelled all claims (1-16) of the patent, including the single claim asserted in this litigation.
Case Timeline
| Date | Event |
|---|---|
| 2007-08-16 | '865 Patent Priority Date |
| 2017-09-12 | U.S. Patent No. 9,760,865 Issued |
| 2022-02-15 | Inter Partes Review (IPR2022-00542) filed against the '865 Patent |
| 2022-07-12 | Plaintiff files Third Amended Complaint |
| 2023-04-11 | IPR Certificate issues, cancelling all claims of the '865 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,760,865 - “Multi-Modal Transcript Unification in a Collaborative Environment,” issued September 12, 2017
The Invention Explained
- Problem Addressed: The complaint alleges that prior art instant messaging systems were deficient in their ability to automatically create a single, unified log of a conversation that contained both text and voice messages (Compl. ¶¶16-17). When a conversation ended, users were often left with a text transcript and a separate audio file, making it difficult to reconstruct the complete, chronological flow of the multi-modal exchange (Compl. ¶18; ’865 Patent, col. 1:50-55).
- The Patented Solution: The invention claims to solve this by providing a system with "multi-modal transcript unification logic" that can establish concurrent text and voice messaging sessions, receive messages of both types, and log them into a "single transcript of conversation" that displays the messages in chronological order (’865 Patent, Abstract; col. 2:36-44). This creates a complete and integrated record of the entire conversation in one place (Compl. ¶22).
- Technical Importance: The technology aimed to improve the utility of business communication platforms by creating more comprehensive and easily reviewable archives of conversations that leverage multiple communication modes (Compl. ¶19).
Key Claims at a Glance
- The complaint asserts independent claim 8 (Compl. ¶36).
- The essential elements of claim 8 are:
- A collaborative computing data processing system comprising a processor, an instant messenger, and a "multi-modal transcript unification logic."
- The logic is configured to:
- Establish a single instant messaging session and receive text messages.
- Embed a voice message received from a conversant into the session.
- Classify both the voice and text messages by type.
- Determine if a message is classified as a voice message.
- Log the classified messages into a single transcript "in response to determining" that one of the messages is a voice message.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The "Slack communication platform" (Compl. ¶30).
Functionality and Market Context
- The complaint describes Slack as a "proprietary business communication platform" that offers features including persistent chat rooms ("channels"), private groups, and direct messaging (Compl. ¶31). It is marketed as a platform allowing users to "make calls, share files, and even connect with other apps" (Compl. ¶32). The infringement allegations center on the platform's ability to integrate text-based messages and audio messages within the same conversational stream. A diagram in the complaint depicts Slack's technical architecture, showing components like clients, a webapp backend, a message server, and a database (Compl. p. 8).
- The complaint alleges significant market adoption, stating that "over 750,000 companies use Slack" (Compl. ¶33).
IV. Analysis of Infringement Allegations
'865 Patent Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [A] collaborative computing data processing system... | Slack is alleged to be a collaborative computing data processing system. | ¶43 | col. 2:32-34 |
| [1] a processor | The Slack system is alleged to contain a processor. | ¶44 | col. 6:66 |
| [2] an instant messenger configured to maintain a multi-modal instant messaging session... | The Slack system is alleged to contain an instant messenger that maintains a multi-modal session. A provided screenshot shows a chat interface with text messages between two users. | ¶45, 48 | col. 2:33-35 |
| [3B] embed in the instant messaging session a voice message... | The logic is alleged to embed a voice message in the session. A screenshot from the complaint shows an embedded audio player for a "Voice Message" directly within the chat stream. | ¶49 | col. 5:45-48 |
| [3C] classify each one of the embedded voice message and the received text messages by type... | The logic is alleged to classify messages by type. A screenshot shows a message explicitly labeled as "Audio message," distinct from text messages. | ¶50 | col. 6:13-18 |
| [3D] determine if the one of the voice and text messages is classified as a voice message... | The logic is alleged to determine if a message is a voice message. | ¶51 | col. 6:19-21 |
| [3E] log the classified voice and text messages in a single transcript...in response to determining that the one of the voice and text messages is classified as a voice message. | The logic is alleged to log the messages into a single transcript in response to the determination. | ¶52 | col. 6:22-28 |
Identified Points of Contention
- Scope Questions: The definition of "embed" may be a central issue. The complaint shows an in-line audio player, but a court may need to decide if this functionality—which could involve linking to or streaming data from a separate source—meets the claim limitation of "embed[ding] in the instant messaging session a voice message."
- Technical Questions: The complaint alleges that a "multi-modal transcript unification logic" performs the claimed steps, but it is not clear from the complaint's exhibits whether the accused voice messaging capability is an integral part of a single "logic" or a separate, loosely-coupled application. A key technical question will be whether Slack's system logs messages "in response to determining" that a message is a voice message, as the claim requires a specific causal relationship that is not self-evident from the user interface.
V. Key Claim Terms for Construction
The Term: "multi-modal transcript unification logic"
- Context and Importance: This term defines the core inventive component. The construction will be critical for determining whether Slack's potentially distributed or microservice-based architecture, which may rely on add-on applications for some functionality, can be considered a single, infringing "logic."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the logic as "program code" enabled to perform a series of functions, which could support an argument that any collection of software components working together to achieve the outcome is sufficient (e.g., ’865 Patent, col. 2:37-44).
- Evidence for a Narrower Interpretation: Figure 2 of the patent depicts the "Multi-modal Transcript Unification" as a distinct, singular block (260), which could support an argument that it must be a more discrete and integrated component rather than a composite of separate applications.
The Term: "log... in response to determining"
- Context and Importance: This phrase requires a specific causal link between identifying a message as voice and the action of logging it. Infringement depends on whether the accused system's logging action is triggered by this classification.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue that any system that successfully identifies a message's type and subsequently places it in the transcript satisfies this element, as the determination logically precedes the final placement.
- Evidence for a Narrower Interpretation: The flowchart in Figure 4 shows a specific decision point ("voice message?") that directly precedes the logging step, suggesting a required conditional operation (IF voice THEN log) ('865 Patent, Fig. 4, blocks 440, 450). A defendant could argue its system logs all messages unconditionally and that classification is a separate process for display purposes only.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement, claiming Slack knows that its users' activities constitute infringement and that Slack intends for this infringement to occur by providing the platform (Compl. ¶55). It also alleges contributory infringement, asserting that the Slack product is a material part of the invention and not a staple article of commerce suitable for substantial non-infringing use (Compl. ¶56).
- Willful Infringement: The basis for willfulness is alleged post-suit knowledge, with the complaint asserting that Slack has had notice of the '865 Patent "at least as of the date of service of the Original Complaint in this case" (Compl. ¶57).
VII. Analyst’s Conclusion: Key Questions for the Case
A threshold issue is the viability of the litigation itself: given that the U.S. Patent and Trademark Office has cancelled all claims of the sole patent-in-suit via an Inter Partes Review, a primary question is whether the plaintiff has any remaining basis to pursue this infringement action.
Should the case proceed, a central issue will be one of architectural scope: can the accused Slack platform, which may implement voice functionality through add-on applications, be found to contain a single, integrated "multi-modal transcript unification logic" as described in the patent, or is its architecture fundamentally different from that which is claimed?
A key evidentiary question will be one of functional causality: does the plaintiff have evidence to show that the accused Slack system performs the specific step of "log[ging]" messages "in response to determining" their type, as required by the claim's explicit causal language, or do these functions operate independently?