Synchronoss Technologies v. Dropbox Inc, 4:16-cv-00119

Background

Synchronoss sued Dropbox for infringing three patents (the ’757, ’696, and ’446) directed to systems/methods for synchronizing data across networked devices, a synchronization controller/agent server, and transferring media from a personal information store.
Dropbox moved to dismiss under §101; the district court denied that motion at the pleading stage, finding the claims described improvements in synchronization.
During claim construction, Dropbox contended multiple claim terms in the ’696 patent (e.g., “user identifier module,” “authentication module,” “transaction identifier module”) were functional and lacked corresponding structure, invoking §112 ¶6; the court found those terms indefinite and invalidated the asserted ’696 claims.
On summary judgment the district court held all asserted claims of the ’446 patent indefinite because they require an impossibility (a single “digital media file” that “comprises a directory of digital media files”).
The court also construed “device/system/apparatus” to require hardware (not software completely detached from hardware) and granted summary judgment of non-infringement for the ’757 patent because Dropbox supplies only software, not the required hardware
The Federal Circuit affirmed the district court’s rulings of indefiniteness as to the ’696 and ’446 patents and affirmed non-infringement as to the ’757 patent; it did not reach §101 patent-eligibility issues.

Issues

Issue	Plaintiff's Argument (Synchronoss)	Defendant's Argument (Dropbox)	Held
Are the asserted ’696-patent claims indefinite under 35 U.S.C. §112?	The claim terms (e.g., “user identifier module”) have sufficient structure read in view of the spec (e.g., Fig.17, related text).	The terms are functional, invoke §112 ¶6, and the specification does not disclose adequate corresponding structure.	Affirmed: terms invoke §112 ¶6 and lack adequate corresponding structure; asserted ’696 claims invalid as indefinite.
Are the asserted ’446-patent claims indefinite because they are impossible?	A POSITA would read the spec to understand the claims as producing an updated second-version file (i.e., claim drafting error but clear to skilled artisan).	The claims require an impossible construct: a single digital file that "comprises a directory of digital media files."	Affirmed: claims are nonsensical/impossible and indefinite; cannot be rewritten by court.
Do the asserted ’757-patent claims require hardware such that Dropbox’s software does not infringe?	The references to hardware are non-limiting (location/environment for software); software "in residence" suffices; claims cover the accused software.	The claims require hardware (device/system/apparatus) and Dropbox supplies only software with no hardware—so no direct infringement.	Affirmed: the court’s construction requires hardware; Dropbox does not supply hardware and thus does not directly infringe.
Is the appeal of the non-infringement judgment final / does the Federal Circuit have jurisdiction given unresolved invalidity counterclaims?	(Implicit) The district court’s non-infringement judgment left counterclaims; plaintiff sought appeal.	Dropbox agreed to abandon its invalidity counterclaims for the ’757 patent, curing finality defect.	Held: Dropbox’s waiver of counterclaims renders the district court’s judgment final for §1295(a)(1) jurisdiction; the Court proceeds.

Key Cases Cited

Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (standard for indefiniteness requires reasonable certainty)
Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir.) (when non-"means" claim terms invoke §112 ¶6; two-step means-plus-function analysis)
Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336 (Fed. Cir.) (courts cannot rewrite claims to preserve validity)
Trustees of Columbia Univ. v. Symantec Corp., 811 F.3d 1359 (Fed. Cir.) (indefiniteness where claim describes extracting code from a non-code source)
Centillion Data Sys., LLC v. Qwest Commc’ns Int’l, Inc., 631 F.3d 1279 (Fed. Cir.) (direct infringement of a system requires use/control of every claimed element)
Amgen Inc. v. Amneal Pharms. LLC, 945 F.3d 1368 (Fed. Cir.) (a party can waive counterclaims to cure an appealability/jurisdiction defect)
Rotec Indus. v. Mitsubishi Corp., 215 F.3d 1246 (Fed. Cir.) (liability for making/selling requires offering the complete invention)