Dropbox, Inc. et al. v. Synchronoss Technologies, Inc.
Docket No. 2019-1765, -1767, -1823
PROST, WALLACH, HUGHES
June 19, 2020
Brief Summary: DC holdings of patent ineligibility affirmed as claims did not, e.g., “describe how to solve the problem in a manner that encompasses something more than the ‘principle in the abstract’”.
Summary: Dropbox appealed DC decision holding US 6,178,505, 6,058,399 and 7,567,541 relating to delivery, upload and backup of computer data ineligible under § 101. The DC found “that the patents claim abstract ideas, and…provide no inventive concept transforming the abstract idea into patentable subject matter.” The FC panel agreed with the DC that under step one of the Alice framework “access checker element” of the ‘505 patent “offers nothing but a functional abstraction” and “[t]he specification…does little to instead define this abstraction as a technological solution” (“The technical aspects of the access filter, where present, are discussed only in terms of non-limiting embodiments” which “is not enough to modify the focus of the claims.”; Alice step one “look[s] at the focus of the claimed advance over the prior art to determine if the claim’s character as a whole is directed to excluded subject matter”. (Alice, US 2014; Koninklijke, FC 2019; Affinity Labs., FC 2016)). The FC panel also explained that certain other limitations “redirect the focus of the claims towards a technological problem” but “still recite no technological solution” (Ancora, FC 2018 (“Improving security…can be a non-abstract computer functionality improvement if done by a specific technique that departs from earlier approaches to solve a computer problem.”)). Further, it explained that an assertion that the patent “solved a technological problem…is not enough” and it “has to describe how to solve the problem in a manner that encompasses something more than the ‘principle in the abstract’”, and “that solution has to be evident from the claims” (ChargePoint, FC 2019). The FC panel also agreed the ‘505 claims did not provide an “inventive concept” under Alice step two since “[a]t best, the claims recite the application of an abstract idea using conventional and well-understood techniques specified in broad, functional language” (BSG Tech, FC 2018). Similar conclusions were reached regarding the ‘399 and ‘541 patents (e.g., claim “only discloses generalized steps to carry out generic computer functions” and “there are long-standing practices analogous to the claimed steps”; claim elements “arranged in a conventional manner”; “the purported improvements over the prior art have not been captures in the claim language”). The DC decisions were therefore affirmed.