Slack Technologies LLC v. Ginegar LLC

1. Case Identification

• Case #: IPR2022-00542
• Patent #: 9,760,865
• Filed: February 15, 2022
• Petitioner(s): Slack Technologies, LLC
• Patent Owner(s): Ginegar LLC
• Challenged Claims: 1-16

2. Patent Overview

• Title: Multi-Modal Transcript Unification In A Collaborative Environment
• Brief Description: The ’865 patent describes a method and system for generating a unified chat transcript for a multi-modal conversation within a single instant messaging session. The system receives, embeds, classifies, and logs both text and voice messages into a single, combined transcript.

3. Grounds for Unpatentability

Ground 1: Obviousness over Selbie and Griffin - Claims 1-16 are obvious over Selbie in view of Griffin.

• Prior Art Relied Upon: Selbie (Application # 2007/0036292) and Griffin (Application # 2004/0015547).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Selbie and Griffin disclosed all limitations of the challenged claims. Selbie was cited for its teaching of an instant messaging application that handles both text and voice messages within a single session. Selbie allegedly disclosed establishing a session between two users, receiving both text and voice messages, classifying messages by type (text vs. voice data), and displaying them in a conversation window that serves as a transcript with embedded voice clip objects (e.g., icons with play/stop/save functions). Petitioner asserted that Griffin remedied any potential deficiencies in Selbie by explicitly teaching a unified chat transcript that includes both voice and text messages displayed in a single, chronological thread to solve the known problem of prior art systems separating the two modalities. Griffin was also cited for disclosing features like attachment indicators for speech content, which Petitioner equated to embedding a voice message. For dependent claims, Petitioner argued that adding features like chronological ordering (claim 3), storing in a log file (claim 4), or ordering by username (claim 6) were obvious modifications, as these were well-known methods for organizing communications taught by the prior art or known to a person of ordinary skill in the art (POSITA). The arguments for system claim 8 and computer program product claim 10 largely mirrored the arguments for method claim 1, with Petitioner contending that Selbie and Griffin both taught the necessary hardware (processors, memory) and software components to implement the claimed functionality.
  • Motivation to Combine: Petitioner argued a POSITA would combine Selbie and Griffin because both references were in the same field of technology (multi-modal instant messaging), addressed the same problem of managing mixed voice and text conversations, and used similar methods. The motivation would be to combine the features of both to produce a more beneficial and predictable multi-modal system. Specifically, Selbie taught the desirability of presenting unified voice and text content on mobile devices, and Griffin disclosed additional, effective ways of achieving that goal, making the combination a logical step to improve upon Selbie's system.
  • Expectation of Success: Petitioner asserted that a POSITA would have had a reasonable expectation of success because the combination involved integrating known features from similar types of messaging systems. The proposed combination was described as nothing more than applying known methods to yield the predictable result of an improved voice message management system.

4. Key Claim Construction Positions

• "a single transcript": This term was central to Petitioner's argument. Petitioner proposed the plain and ordinary meaning: "a written, typewritten, or printed copy; something transcribed or made by transcribing." This construction encompasses a visual display of a conversation, as shown in the prior art. Petitioner highlighted that during the ’865 patent's prosecution history, the Patent Owner attempted to argue for a narrower construction, suggesting "transcript" meant a specific "data structure that includes both voice messages and text messages" (i.e., a single data file), in an attempt to distinguish prior art that showed a unified visual display. Petitioner noted that the Patent Trial and Appeal Board (PTAB) had previously affirmed the Examiner’s rejection and did not adopt the applicant's narrow proposed construction, supporting Petitioner's broader interpretation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate because the parallel district court litigation was in its earliest stages. The case had only recently been transferred, no trial date had been set, no substantive orders had been issued, and discovery had not commenced, meaning there was minimal investment by the court and parties. Therefore, Petitioner contended that the IPR would conclude long before any potential district court trial.
• Petitioner also argued against denial under 35 U.S.C. §325(d), asserting that the primary references, Selbie and Griffin, were never considered by the Examiner during prosecution. Petitioner contended these references were materially different from the cited art because they taught the very element—"embedding in the instant messaging session a voice message"—that the applicant added to the claims to overcome prior art rejections. Because the Examiner never had the opportunity to consider this more pertinent art, Petitioner argued denial would be improper.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-16 of the ’865 patent as unpatentable under 35 U.S.C. §103.