Federal Circuit Affirms Invalidity of Synchronoss Patents and Dropbox’s Non-infringement

On Friday, the Federal Circuit issued an opinion regarding Synchronoss’s asserted patents, affirming the district court’s conclusion of invalidity and non-infringement. The Federal Circuit Court of Appeals did not reach the question of patent eligibility.

Previously, according to the opinion, the plaintiff-appellant appealed the district court’s decision that “all asserted claims, drawn to technology for synchronizing data across multiple devices are either invalid under 35 U.S.C. § 112, paragraph 2, or not infringed.” Meanwhile, Dropbox, the defendant, alleged in a cross-appeal that “all claims at issue are patent ineligible subject matter under § 101.” Synchronoss Technologies originally sued Dropbox for infringing U.S. Patent Nos. 6,671,757 (the ’757 patent); 6,757,696 (the ’696 patent); and 7,587,446 (’446 patent).

The appellate panel, consisting of Chief Judge Prost and Circuit Judges Reyna and Taranto, affirmed the district court’s judgment of invalidity under § 112, paragraph 6 for the ’446 and ’696 patents and judgment of non-infringement for the ’757 patent.

The Federal Circuit recounted that the district court issued a “claim construction order invalidating the ’696 patent’s asserted claims as indefinite … granted summary judgment in favor of Dropbox that all asserted claims of the ’446 patent are indefinite … (and) granted summary judgment of non-infringement” regarding the ’446 and ’757 patents. Specifically, according to the opinion, Synchronoss appealed the district court’s claim construction and summary judgment decisions and Dropbox appealed the lower court’s denial of its motion to dismiss.

The Federal Circuit noted that summary judgment was granted by the district court for the claims of the ‘446 patent because “they contain an impossibility,” and said it agreed and was unpersuaded by Synchronoss’s arguments. The Federal Circuit held that the claims are indefinite under § 112, paragraph 2. Similarly, the district court found that the asserted claims of the ’696 patent are indefinite “because six claim terms … did not correspond to adequate structure disclosed in the specification.” The Federal Circuit also concluded that because one term which appeared in every claim for § 112, paragraph 6 was invalid, each asserted claim of the ‘696 patent is invalid. The Federal Circuit did not address the remaining terms in the asserted patents, which the district court also determined were indefinite.

According to the opinion, “the conclusion that the ‘hardware’ term limits the claim scope is thus consistent with both Synchronoss’s own assertions and the record evidence.” The Federal Circuit stated that “because Dropbox does not provide its customers with any hardware in conjunction with its accused software, Dropbox does not make, sell, or offer for sale the complete invention… Nor does Dropbox directly infringe by ‘using’ the entire claimed system under § 271(a).” As such, the Federal Circuit also holds that Dropbox did not infringe the ’757 patent.

The Federal Circuit added that because it affirmed the lower court’s invalidity judgment for the  asserted claims of the ’446 and ’696 patents and because Dropbox waived its agreement at oral argument for the ’757 patent, it does not need to consider the question of patent eligibility for the final patent. 

Synchronoss Technologies is represented by Dentons US LLP. Dropbox is represented by Williams & Connolly LLP.

Last June, Dropbox lost a patent infringement appeal against Synchronoss.