DC claim construction and indefiniteness findings affirmed; ineligibility conclusions not reached by FC panel

Synchronoss Techs., Inc. v. Dropbox, Inc., Funambol, Inc.

Docket No. 2020-2196, -2199 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2196.OPINION.2-12-2021_1732513.pdf)

PROST, REYNA, TARANTO

February 12, 2021

Brief Summary:  DC claim construction, invalidity for indefiniteness, and grant of SJ affirmed. Summary:  Synchronoss appealed DC claim constructions and grant of summary judgment (SJ) finding all claims of US 6,671,757; 6,757,696; and 7,587,446 relating to systems for synchronizing data invalid under section 112, second paragraph (indefiniteness, “functional terms that do not impart any particular structure”) or not infringed.  Dropbox cross-appealed the DC’s decision that “the challenged claims, viewed as an ordered combination, impose sufficient limitations sufficient under Enfish and McRO to survive at the motion to dismiss stage” (i.e., the claims are patent eligible under section 101, “improving the manner in which computers synchronize data between devices connected to a network”; decision not reviewed here).   The FC panel first explained that it had jurisdiction for this appeal of the SJ as it “deem[ed] the [DC’s] judgment final” because “Dropbox agreed to give up its invalidity counterclaims with respect to the ‘757 patent” (Amgen, FC 2020).  Regarding indefiniteness, the FC panel explained that the indefiniteness question is whether the claims can be understood with “reasonable certainty” (Nautilus, US 2014; Biosig, FC 2015; Allen Eng’g, FC 2002; Columbia Univ., FC 2016).  “Here,” it determined, “the asserted claims of the ‘446 patent are nonsensical and require an impossibility” and “[a]dopting Synchronoss’s proposal would require rewriting the claims, but ‘it is not our function to rewrite claims to preserve their validity”, therefore finding the claims indefinite.  The FC panel also determined that the ‘696 claims are indefinite because the means-plus-function terms do not “correspond to ‘adequate’ structure in the specification that a person of ordinary skill in the art would be able to recognize and associate with the corresponding function in the claim” (Willamson, FC 2015 (two-step process:  identify the claimed function and determine whether sufficient corresponding structure is disclosed)).  Synchronoss argued that the DC “erred in concluding that the asserted claims require hardware”, “that the asserted claims-as construed by Synchronoss-recited hardware not as a claim limitation, but merely as a reference to the ‘location for the software’”, and that the DC “misinterpreted” its statements as “a concession that the claims require hardware”.  “The evidence”, the FC panel wrote, “Dropbox provides its customers with software for download but no corresponding hardware” and therefore “does not make, sell, or offer for sale the complete invention” (Rotec, FC 2000 (“[O]ne may not be held liable under section 271(a) for ‘making’ or ‘selling’ less than a complete invention.”)), or “directly infringe by ‘using’ the entire systems” (Centillion, FC 2011 (“requires use of each and every element of the system”, “[s]upplying the software for the customer to use…is not the same as using the system”), NTP, FC 2005 (“a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it”)).  As the FC panel found the disputed claims invalid or not infringed, it did not reach the patent eligibility questions.  The DC decision was therefore affirmed.

This entry was posted in Claim Construction, Indefiniteness, Means-plus-function, Patent Eligibility (101), Section 101 (see also Patentability), Software. Bookmark the permalink.

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