Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 1 of 18
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`
`
`
`GINEGAR LLC,
`
`
`
`Plaintiff,
`
`v.
`
`
`SLACK TECHNOLOGIES, INC.,
`
`
`Defendant.
`
`
`
`
`Case No. 1:21-cv-00494
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Ginegar LLC (“Ginegar”), by and through the undersigned counsel, brings this
`
`action against Defendant Slack Technologies, Inc. (“Slack Technologies”), alleging as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`This is an action by Ginegar against Slack Technologies for infringement of U.S.
`
`Patent Numbers 9,367,521 (the “’521 Patent”) and 9,760,865 (the “’865 Patent”), collectively
`
`referred to as “the Patents-in-Suit.”
`
`II.
`
`THE PARTIES
`
`2.
`
`Plaintiff Ginegar is a California corporation with its current principal place of
`
`business at 2160 Century Park East #707, Los Angeles, California 90067 and mailing address at
`
`777 Brickell Ave #500-96031, Miami, FL 33131. Ginegar is the assignee and owner of the Patents-
`
`in-Suit.
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`
`
`
`GINEGAR LLC,
`
`
`
`Plaintiff,
`
`v.
`
`
`SLACK TECHNOLOGIES, INC.,
`
`
`Defendant.
`
`
`
`
`Case No. 1:21-cv-00494
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Ginegar LLC (“Ginegar”), by and through the undersigned counsel, brings this
`
`action against Defendant Slack Technologies, Inc. (“Slack Technologies”), alleging as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`This is an action by Ginegar against Slack Technologies for infringement of U.S.
`
`Patent Numbers 9,367,521 (the “’521 Patent”) and 9,760,865 (the “’865 Patent”), collectively
`
`referred to as “the Patents-in-Suit.”
`
`II.
`
`THE PARTIES
`
`2.
`
`Plaintiff Ginegar is a California corporation with its current principal place of
`
`business at 2160 Century Park East #707, Los Angeles, California 90067 and mailing address at
`
`777 Brickell Ave #500-96031, Miami, FL 33131. Ginegar is the assignee and owner of the Patents-
`
`in-Suit.
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 2 of 18
`
`3.
`
`Upon information and belief, Defendant Slack Technologies, Inc. is a Delaware
`
`corporation with its principal place of business at 500 Howard Street, San Francisco, California
`
`94105.
`
`III.
`
`JURISDICTION AND VENUE
`
`4.
`
`This is an action for patent infringement arising under the Patent Laws of the United
`
`States, Title 35 of the United States Code.
`
`5.
`
`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§
`
`1331 and 1338(a).
`
`6.
`
`This Court has personal jurisdiction over Slack Technologies because Slack
`
`Technologies has a place of business in this District and because it continuously and systematically
`
`conducts business in this District, including the development, use and sale of the products and/or
`
`services at issue in this suit.
`
`7.
`
`Venue is proper in the District of Colorado under 28 U.S.C. §§ 1391(b) and 1400(b)
`
`because Slack Technologies has a place of business in this District at 1681 Chestnut Pl., Suite 700,
`
`Denver, Colorado 80202 and because a substantial part of the events and omissions giving rise to
`
`the claims at issue occurred here, including the use or sale of the infringing products.
`
`IV.
`
`FACTUAL BACKGROUND
`
`The ’521 Patent
`
`8.
`
`The ’521 Patent, entitled “Content and Context Based Handling of Instant
`
`Messages,” was issued by the United States Patent and Trademark Office on June 14, 2016. A true
`
`and correct copy of the ’521 Patent is attached as Exhibit A.
`
`9.
`
`Ginegar is the owner of the entire right, title and interest in and to the ’521 Patent.
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 3 of 18
`
`10.
`
`Among other things, the ’521 Patent claims a method of processing instant
`
`messages.
`
`11.
`
`The method comprises logging an instant message client into an instant message
`
`server, obtaining from the instant message server at least one handling rule that is evaluated in an
`
`instant messaging environment where each established handling rule defines a condition based
`
`upon at least one of identified content or identified context, and a corresponding event handling
`
`action which is performed within the instant message environment.
`
`The ’865 Patent
`
`12.
`
`The ’865 Patent, entitled “Multi-Modal Transcript Unification in a Collaborative
`
`Environment,” was issued by the United States Patent and Trademark Office on September 12,
`
`2017. A true and correct copy of the ’865 Patent is attached as Exhibit B.
`
`13.
`
`14.
`
`Ginegar is the owner of the entire right, title and interest in and to the ’865 Patent.
`
`The inventions disclosed in the ’865 Patent relate to systems and methods for a
`
`multi-modal instant messaging session where a user converses with another user by providing a
`
`combination of text and audio messages in the chat session.
`
`15.
`
`Further, the systems and methods disclosed in the ‘865 patent automatically log a
`
`chat transcript that contains multi-modal communication.
`
`16.
`
`At the time of the invention, prior art taught the use of instant messaging systems
`
`that allowed users to converse with each other in real time.
`
`17.
`
`However, the prior art instant messaging systems did not allow users to converse
`
`with each other using multi-modal communication. Users could not chat with each other by
`
`providing a combination text and audio messages in the chat session.
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 4 of 18
`
`18.
`
`Further, the prior art systems did not automatically log a unified chat transcript that
`
`contained multi-modal communication, such as text and audio in one chat session.
`
`19.
`
`This presented serious shortcomings, particularly given the proliferation of instant
`
`messaging systems among both businesses and individuals.
`
`20.
`
`The invention of the ’865 Patent provides systems and methods that allow users to
`
`converse with each other using multi-modal communication and that automatically log a chat
`
`transcript that contained multi-modal communication, such as text and audio in one chat session.
`
`The Slack Communication Platform
`
`21.
`
`Slack Technologies has developed, has sold and continues to sell and offer for sale
`
`the Slack communication platform (“Slack”).
`
`22.
`
`Slack is a proprietary business communication platform that offers many features,
`
`including persistent chart rooms (referred to as “channels”) organized by topic, private groups, and
`
`direct messaging.
`
`23.
`
`Slack Technologies markets Slack as a unified business communications platform
`
`that allows users to “make calls, share files, and even connect with other apps.”
`
`24.
`
`Slack Technologies claims that “[o]ver 750,000 companies use Slack.”
`
`CLAIM I
`(INFRINGEMENT OF THE ’521 PATENT)
`
`Ginegar repeats and realleges the allegations of paragraphs 1-24 as if fully set forth
`
`25.
`
`herein.
`
`26.
`
`The ’521 Patent is valid and enforceable.
`
`27.
`
`Slack Technologies has infringed and continues to infringe, both directly and
`
`indirectly, at least claim 1 of the ’521 Patent, either literally or under the doctrine of equivalents.
`
`28.
`
`Claim 1 of the ’521 Patent recites:
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 5 of 18
`
`A method of processing instant message transactions comprising:
`
`[1] logging a first instant message client into an instant message server;
`
`[2] obtaining from the instant message server, at least one handling rule that is
`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 identified content
`or identified context, and a corresponding event handling action to be performed
`within the instant message environment;
`
`[3] identifying an instant message conversation within the instant message
`environment between a user and a correspondent;
`
`[4] evaluating each handling rule;
`
`[5] performing the corresponding event handling action of an associated handling rule
`if it is determined that the condition of that handling rule is satisfied; and
`
`[6] conveying to the user participating in the instant message conversation, an
`indication that the corresponding event handling action was performed.
`
`
`
`Slack directly infringes at least claim 1 of the ’521 Patent.
`
`Regarding the preamble of claim 1, to the extent the preamble is determined to be
`
`29.
`
`30.
`
`limiting, use of Slack meets this limitation. Slack processes received messages in instant
`
`messaging sessions and notifies the recipient if the content of a message complies to a condition
`
`set by the user.
`
`See, e.g., Exhibit C (https://slack.com/help/articles/201355156-Guide-to-desktop-notifications,
`
`
`
`last accessed on February 10, 2021).
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 6 of 18
`
`31.
`
`Slack also preforms the first listed step of claim 1. The Slack desktop or
`
`smartphone software connects to a messenger server in order to function.
`
`
`
`See, e.g., Exhibit D, (Presentation by Keith Adams, Chief Architect at slack. Available at:
`
`https://www.infoq.com/presentations/slack-infrastructure/, last accessed on February 10, 2021).
`
`32.
`
`Slack also preforms the second listed step of claim 1. Handling rules are stored on
`
`a message server and are obtained by downloading to the user device.
`
`
`
`
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 7 of 18
`
`See, e.g., Exhibit E (https://aws.amazon.com/solutions/case-studies/slack/, last accessed on
`
`February 10, 2021).
`
`See, e.g., Exhibit F (https://slack.com/help/articles/360002034727-Getting-started-for-guests, last
`
`accessed on February 10, 2021).
`
`33.
`
`The handling rules are stored and synced by the Slack server. The content of
`
`received messages are evaluated against these rules.
`
`
`
`
`
`See, e.g., Exhibit C (https://slack.com/help/articles/201355156-Guide-to-desktop-notifications,
`
`last accessed on February 10, 2021).
`
`34.
`
`Slack uses each handling rule to define a condition based on at least one of
`
`identified content or context. For example, the Slack software will highlight content in response
`
`to a username or specific keywords.
`
`
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 8 of 18
`
`
`
`
`
`
`
`See, e.g., https://www.youtube.com/watch?v=cfkX8oTalDg, last accessed on February 10, 2021.
`
`35.
`
`Slack performs a corresponding event handling action within the instant message
`
`environment, for example, highlighting a username.
`
`36.
`
`Slack also performs the third listed step of claim 1. Slack identifies an instant
`
`message conversation within the instant message environment between a user and a correspondent.
`
`
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 9 of 18
`
`
`
`See, e.g., Exhibit G (https://slack.com/team-chat, last accessed on February 10, 2021).
`
`37.
`
`Slack also performs the Fourth listed step of Claim 1. Slack evaluates each
`
`handling rule by checking the content of the message. For example, the Slack software checks the
`
`message for user mentions.
`
`
`
`See, e.g., Exhibit H (https://slack.com/help/articles/205240127-Use-mentions-in-Slack, last
`
`accessed on February 10, 2021).
`
`38.
`
`Slack also performs the fifth listed step of Claim 1. Slack performs the
`
`corresponding event handling action of an associated handling rule if it is determined that the
`
`condition of that handling rule is satisfied, for example highlighting key words if they are present
`
`in a message.
`
`
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 10 of 18
`
`
`
`See, e.g., https://www.youtube.com/watch?v=cfkX8oTalDg, last accessed on February 10, 2021.
`
`39.
`
`Finally, Slack also performs the sixth listed step of Claim 1. Slack conveys to the
`
`user, who is participating in the instant message conversation, an indication that the corresponding
`
`event handling action was performed, for example notifying the user with a pop-up notification.
`
`
`
`
`
`See, e.g., https://www.youtube.com/watch?v=cfkX8oTalDg, last accessed on February 10, 2021.
`
`40.
`
`In violation of 35 U.S.C. § 271(a), Slack Technologies has directly infringed the
`
`’521 Patent, either literally or under the doctrine of equivalents, by making, using, selling, and/or
`
`offering to sell in the United States, and/or importing into the United States, without license or
`
`authority, Slack.
`
`41.
`
`In violation of 35 U.S.C. § 371(b), Slack Technologies has also indirectly infringed
`
`the ’521 Patent by actively inducing infringement of the’521 Patent by users of Slack, knowing
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 11 of 18
`
`that their use of Slack would and has directly infringed, either literally or under the doctrine of
`
`equivalents, the ’521 Patent.
`
`42.
`
`In violation of 35 U.S.C. § 371(c), Slack Technologies has also indirectly infringed
`
`the ’521 Patent by offering to sell or license and/or selling or licensing with the United States Slack
`
`for use in practicing one or more of the methods claimed in the ’521 Patent, knowing that use of
`
`Slack by users would directly infringe, either literally or under the doctrine of equivalents, the ’521
`
`Patent.
`
`43.
`
`Upon information and belief, Slack Technologies has had notice of the ’521 Patent
`
`at least as of the date of service of this Complaint.
`
`44.
`
`As a result of Slack Technologies’ infringement of the ’521 Patent, Ginegar has
`
`suffered and continues to suffer substantial injury and is entitled to recover all damages caused by
`
`Slack Technologies’ infringement to the fullest extent permitted by the Patent Act, together with
`
`prejudgment interest and costs for Slack Technologies’ wrongful conduct.
`
`CLAIM II
`(INFRINGEMENT OF THE ’865 PATENT)
`
`Ginegar repeats and realleges the allegations of paragraphs 1-44 as if fully set forth
`
`45.
`
`herein.
`
`46.
`
`The ’865 Patent is valid and enforceable.
`
`47.
`
`Slack has infringed and continues to infringe, both directly and indirectly, at least
`
`claim 1 of the ’865 Patent, either literally or under the doctrine of equivalents.
`
`48.
`
`Claim 1 of the ’865 Patent recites:
`
`A method for generating a unified chat transcript for a multi-modal conversation in an
`instant messaging session, the method comprising:
`
`
`[1] establishing a single instant messaging session between two conversants;
`
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 12 of 18
`
`[2] receiving text messages as part of a conversation between the two conversants,
`through the single instant messaging session;
`
`[3] embedding in the instant messaging session a voice message received from one of
`the two conversants;
`
`[4] 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 text
`message;
`
`[5] determining if the one of the voice and text messages is classified as a voice
`message; and
`
`[6] logging the classified voice and text messages in a single transcript of
`conversation between the two conversants occurring in the single instant messaging
`session in response to determining that the one of the received voice and text
`messages is classified as a voice message.
`
`
`49.
`
`Slack directly infringes at least claim 1 of the ’865 Patent.
`
`50.
`
`Regarding the preamble of claim 1, to the extent the preamble is determined to be
`
`limiting, use of Slack meets this limitation. Slack generates a unified chat transcript for a multi-
`
`modal conversation in an instant messaging session.
`
`
`
`
`
`See,
`
`e.g., Exhibit
`
`I
`
`(https://slack.com/help/articles/201658943-Export-your-workspace-
`
`data#enterprise-grid-plan-1, last accessed on February 10, 2021).
`
`51.
`
`Slack also performs the first listed step of Claim 1. Slack establishes a single instant
`
`
`
`messaging system between two conversants.
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 13 of 18
`
`See, e.g., Exhibit J (https://slack.engineering/how-slack-built-shared-channels/, last accessed on
`
`
`
`February 10, 2021).
`
`See, e.g., Exhibit K (https://slack.com/, last accessed on February 10, 2021).
`
`
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 14 of 18
`
`52.
`
`Slack also performs the second listed step of claim 1. Slack receives text messages
`
`as part of a conversation between two conversants through a single instant messaging session.
`
`See, e.g., Exhibit K (https://slack.com/, last accessed on February 10, 2021).
`
`53.
`
`Slack also performs the third listed step of Claim 1. Slack embeds voice messages
`
`received from one of the two conversants in the instant messaging session.
`
`
`
`
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 15 of 18
`
`See, e.g., Exhibit L (https://slack.com/apps/AE79QUZF0-voice-message, last accessed on
`
`February 10, 2021).
`
`54.
`
`Slack also performs the fourth listed step of Claim 1. Slack classifies each
`
`embedded voice message and text messages by type and displays a play icon indicating the
`
`duration of audio in the voice message.
`
`See, e.g., Exhibit L (https://slack.com/apps/AE79QUZF0-voice-message, last accessed on
`
`
`
`February 10, 2021).
`
`55.
`
`Slack also performs the fifth listed step of Claim 1. Slack determines if one of the
`
`voice and text messages is classified as a voice message. Slack indicates the type of file and the
`
`duration of the voice message, which classifies the voice message on the basis of its type.
`
`56.
`
`
`
`
`
`See, e.g., Exhibit L (https://slack.com/apps/AE79QUZF0-voice-message, last accessed on
`
`February 10, 2021).
`
`57.
`
`Finally, Slack also performs the sixth listed step of Claim 1. Slack logs classified
`
`voice and text messages in a single transcript of a conversation between the two conversants
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 16 of 18
`
`occurring the single instant messaging session in response to determining that one of the received
`
`voice and text messages is classified as a voice message. The transcript indicates which messages
`
`are text messages and which are voice messages.
`
`
`
`See,
`
`e.g., Exhibit
`
`I
`
`(https://slack.com/help/articles/201658943-Export-your-workspace-
`
`data#enterprise-grid-plan-1, last accessed on February 10, 2021).
`
`58.
`
`In violation of 35 U.S.C. § 271(a), Slack Technologies has directly infringed the
`
`’865 Patent, either literally or under the doctrine of equivalents, by making, using, selling, and/or
`
`offering to sell in the United States, and/or importing into the United States, without license or
`
`authority, Slack.
`
`59.
`
`In violation of 35 U.S.C. § 371(b), Slack Technologies has also indirectly infringed
`
`the ’865 Patent by actively inducing infringement of the’865 Patent by users of the Slack, knowing
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 17 of 18
`
`that their use of the Slack would and has directly infringed, either literally or under the doctrine of
`
`equivalents, the ’865 Patent.
`
`60.
`
`In violation of 35 U.S.C. § 371(c), Slack Technologies has also indirectly infringed
`
`the ’865 Patent by offering to sell or license and/or selling or licensing with the United States
`
`Slack, for use in practicing one or more of the methods claimed in the ’865 Patent, knowing that
`
`use of Slack by users would directly infringe, either literally or under the doctrine of equivalents,
`
`the ’865 Patent.
`
`61.
`
`Upon information and belief, Slack Technologies has had at notice of the ’856
`
`Patent at least as of the date of service of this Complaint.
`
`62.
`
`As a result of Slack Technologies’ infringement of the ’856 Patent, Ginegar has
`
`suffered and continues to suffer substantial injury and is entitled to recover all damages caused by
`
`Slack Technologies’ infringement to the fullest extent permitted by the Patent Act, together with
`
`prejudgment interest and costs for Slack Technologies’ wrongful conduct.
`
`PRAYER FOR RELIEF
`
`
`
`WHEREFORE, Ginegar respectfully requests that this Court enter judgment in its favor
`
`and grant the following relief against Slack Technologies:
`
`A. That the Court enter judgment for Ginegar on all causes of actions asserted in this
`
`Complaint;
`
`B. That the Court enter judgment in favor of Ginegar and against Slack Technologies for
`
`monetary damages to compensate it for Slack Technologies’ infringement of the Patents-
`
`in-Suit pursuant to 35 U.S.C.§ 284, including costs and prejudgment interest as allowed
`
`by law;
`
`
`
`
`
`
`
`Case 1:21-cv-00494 Document 1 Filed 02/19/21 USDC Colorado Page 18 of 18
`
`C. That the Court enter judgment in favor of Ginegar and against Slack Technologies for
`
`accounting and/or supplemental damages for all damages occurring after any discovery
`
`cutoff and through the Court’s entry of final judgment;
`
`D. That the Court enter judgment that this case is exceptional under 35 U.S.C. § 285 and
`
`enter an award to Ginegar of its costs and attorneys’ fees; and
`
`E. That the Court award Ginegar all further relief as the Court deems just and proper.
`
`JURY DEMAND
`
`
`
`Pursuant to Federal Rule of Civil Procedure 38, Ginegar respectfully demands a jury trial
`
`on all issues and claims so triable.
`
`
`
`Dated: February 19, 2021
`
`
`
`
`
`
`
`
` /s/ Jon B. Hyland
`Jon B. Hyland
`Hilgers Graben PLLC
`10000 N. Central Expwy.
`Dallas, TX 75231
`Tel: (972) 645-3097
`Fax: (402) 413-1880
`jhyland@hilgersgraben.com
`
`Mark E. Ferguson
`Nevin M. Gewertz
`Bartlit Beck LLP
`54 W. Hubbard Street, Suite 300
`Chicago, Illinois 60654
`Tel.: 312-494-4400
`Fax: 312-494-4440
`mark.ferguson@bartlitbeck.com
`nevin.gewertz@bartlitbeck.com
`
`
`
` Attorney for Plaintiff Ginegar LLC
`
`
`
`
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