Case: 19-2196 Document: 70 Page: 1 Filed: 02/12/2021
United States Court of Appeals
for the Federal Circuit
______________________
SYNCHRONOSS TECHNOLOGIES, INC.,
Plaintiff-Appellant
v.
DROPBOX, INC.,
Defendant-Cross-Appellant
FUNAMBOL, INC.,
Defendant
______________________
2019-2196, 2019-2199
______________________
Appeals from the United States District Court for the
Northern District of California in No. 4:16-cv-00119-HSG,
Judge Haywood S. Gilliam, Jr.
______________________
Decided: February 12, 2021
______________________
MARK LEE HOGGE, Dentons US LLP, Washington, DC,
argued for plaintiff-appellant. Also represented by RAJESH
CHARLES NORONHA, KIRK ROBERT RUTHENBERG; KEVIN R.
GREENLEAF, Lovettsville, VA.
ADAM HARBER, Williams & Connolly LLP, Washington,
DC, argued for defendant-cross-appellant. Also repre-
sented by DEBMALLO SHAYON GHOSH, DAVID M. KRINSKY,
CHRISTOPHER MANDERNACH, THOMAS H.L. SELBY.
Case: 19-2196 Document: 70 Page: 2 Filed: 02/12/2021
2 SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC.
______________________
Before PROST, Chief Judge, REYNA and TARANTO, Circuit
Judges.
REYNA, Circuit Judge.
Synchronoss Technologies, Inc. appeals the district
court’s decisions that all asserted claims, drawn to technol-
ogy for synchronizing data across multiple devices, are ei-
ther invalid under
35 U.S.C. § 112, paragraph 2, or not
infringed. Defendant Dropbox, Inc. cross-appeals asserting
that all claims at issue are patent ineligible subject matter
under § 101. For the reasons discussed below, we affirm
the district court’s conclusions of invalidity under § 112
and non-infringement and do not reach the question of pa-
tent eligibility.
BACKGROUND
A. The Asserted Patents
In its infringement suit, Synchronoss Technologies,
Inc. (“Synchronoss”) alleged that Dropbox, Inc. (“Dropbox”)
infringes U.S. Patent Nos. 6,671,757 (“’757 patent”),
6,757,696 (“’696 patent”), and 7,587,446 (“’446 patent”) (col-
lectively, “asserted patents”). 1 The ’757 patent describes a
system for synchronizing data across multiple systems or
devices connected via the Internet. The system generally
involves one device or system that utilizes a first sync en-
gine, a second device or system that utilizes a second sync
engine, and a data store. See ’757 patent abstract
(J.A. 6811). The first sync engine detects “difference infor-
mation,” sends that information to the data store, and the
1 During the litigation, Synchronoss asserted claims
1, 8, 9, 14, 16, 21, 24, 26, and 28 of the ’757 patent, claims
1, 2, 6–15, 18 and 19 of the ’446 patent, and claims 1, 3, 5,
6, and 9–14 of the ’696 patent. See Appellant’s Br. 13.
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SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC. 3
data store in turn sends it to the second sync engine. See
id. Using this system, “two devices need not be coupled to
each other to perform a sync.” Id. at col. 3 ll. 30–31. The
’757 patent also explains that synchronization using the
disclosed system “can occur at independent times using an
intervening network based storage server to store changes
to data for all the different devices in the system . . . .” Id.
at col. 3 ll. 25–28. Claim 1 is illustrative and recites:
1. A system for synchronizing data between a first
system and a second system, comprising:
a first sync engine on the first system interfacing
with data on the first system to provide difference
information in a difference transaction;
a data store coupled to the network and in commu-
nication with the first and second systems; and
a second sync engine on the second system coupled
to receive the difference information in the differ-
ence transaction from the data store via the net-
work, and interfacing with data on the second
system to update said data on the second system
with said difference information;
wherein each said sync engine comprises a data in-
terface, a copy of a previous state of said data, and
a difference transaction generator.
Id. at col. 46 l. 58–col. 47 l. 7. Remaining independent
claims 16 and 24 are structured similarly to claim 1 but,
among other differences, recite first and second “devices”
rather than first and second “systems.” See id. at col. 48
ll. 1–24, 51–64.
The ’696 patent discloses a synchronization agent man-
agement server connected to a plurality of synchronization
agents via the Internet. See ’696 patent abstract
(J.A. 6861). The patent summarizes the claimed inven-
tions as being drawn to a controller for a synchronization
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4 SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC.
system that maintains matching records and data for a
user across multiple networked devices. See id. at col. 3
ll. 20–23. It further explains that the disclosed inventions
relate to a system for “transferring data between two de-
vices[,] which require information to be shared between
them.” Id. at col. 4 ll. 25–27. The synchronization agent
management server “compris[es] a user login authentica-
tor, a user data flow controller, and a unique user identifi-
cation controller.” Id. at abstract. Claim 1 is illustrative
and recites:
1. A controller for a synchronization system, com-
prising:
a user identifier module;
an authentication module identifying a user cou-
pled to the synchronization system;
a synchronization manager communicating with at
least one interactive agent to control data migra-
tion between a first network coupled device and a
second network device;
a transaction identifier module assigning a univer-
sally unique identifier to each user of transaction
objects in said data store; and
a current table of universally unique identifier val-
ues and versioning information, generated by ver-
sioning modules on said devices associating a
transaction identifier with each transaction object,
providing a root structure for understanding the
data package files.
J.A. 6901. Remaining asserted independent claims 9 and
16 cover similar subject matter, except that claim 9 recites
a “user authentication module” instead of an “authentica-
tion module.” Id. at col. 45 ll. 49–56; J.A. 6899. Also, claim
16 recites a “user login authenticator” rather than claim 1’s
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SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC. 5
“authentication module,” and it additionally recites a “user
data flow controller.” Id. at col. 46 ll. 13–20; J.A. 6899.
The ’446 patent describes a “method for transferring
media data to a network coupled apparatus.” ’446 patent
abstract (J.A. 6902). The patent summarizes the disclosed
inventions as methods that involve (i) maintaining a “mu-
sic store” in a user’s dedicated personal information space
and (ii) transferring some of the data from that personal
information space to the user’s Internet-coupled device
upon request. See id. at col. 3 ll. 45–51. Claim 1 is illus-
trative and recites:
1. A method of transferring media data to a net-
work coupled apparatus, comprising:
(a) maintaining a personal information space iden-
tified with a user including media data comprising
a directory of digital media files, the personal infor-
mation space being coupled to a server and a net-
work;
(b) generating a first version of the media data in
the personal information space;
(c) generating a digital media file, in response to an
input from the user, comprising a second version of
the media data in a same format as the first version
in the personal information space, the second ver-
sion including an update not included in the first
version;
(d) obtaining difference information comprising dif-
ferences between the first version of the media data
and the second version of the media data; and
(e) transferring a digital media file over the net-
work containing the difference information from
the personal information space to the network cou-
pled apparatus in response to a sync request made
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6 SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC.
from a web browser at the network-coupled appa-
ratus by the user.
Id. at col. 13 l. 47–col. 14 l. 2. Claim 11, the other inde-
pendent claim, recites a system for carrying out the method
of claim 1 comprising a “personal information store,” a
“processing device,” and a “server” for transferring digital
media from the “personal information store” to a “network
coupled apparatus.” See id. at col. 14 ll. 35–57.
B. Procedural History
Synchronoss filed a complaint on March 27, 2015, al-
leging that Dropbox infringed the ’757, ’696, and ’446 pa-
tents. On February 5, 2016, Dropbox filed a motion to
dismiss the complaint on the grounds that all three as-
serted patents were patent ineligible subject matter under
§ 101. J.A. 654–83. On December 22, 2016, the district
court denied Dropbox’s motion, concluding that “the chal-
lenged claims, viewed as an ordered combination, impose
specific limitations sufficient under Enfish and McRO to
survive at the motion to dismiss stage.” J.A. 55. It further
concluded that the asserted claims, as described in the pa-
tents, are “directed to improving the manner in which com-
puters synchronize data between devices connected to a
network,” resulting in an increase in speed and a reduction
in required bandwidth and storage space. See id. Shortly
thereafter, in February 2017, the district court referred the
case to a magistrate judge for discovery purposes.
The following month, in March 2017, the district court
set a claim construction schedule. Dropbox and its tech-
nical expert, Dr. Freedman, contended in its briefing that
certain terms that appear across all the ’696 patent’s as-
serted claims are indefinite because they constitute func-
tional limitations that invoke
35 U.S.C. § 112, paragraph
6, but do not correspond to adequate structure in the spec-
ification. These six terms include: (i) “user identifier mod-
ule” (in all claims); (ii) “authentication module identifying
a user coupled to the synchronization system” (in claim 1);
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SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC. 7
(iii) “user authenticator module” (in claim 9); (iv) “user
login authenticator” (in claim 16); (v) “user data flow con-
troller” (in claim 16); and (vi) “transaction identifier mod-
ule” (in all claims). J.A. 25–32, 37–39, 6898–901.
Specifically, Dr. Freedman opined that the terms “mod-
ule,” “authenticator,” and “controller”—one of which ap-
pears in all of the six terms—would be understood by
persons of ordinary skill in the art as functional terms that
do not impart any particular structure. J.A. 26–28. He
further opined that the six terms’ prefixes to those words—
for example, “user login authenticator”—similarly would
be understood as functional language devoid of particular
structure. J.A. 27–28. He also testified that a person of
ordinary skill in the art would understand “dozens of dis-
crete ways” to implement the six functional claim terms,
and that the specification failed to describe any specific
structure for carrying out the respective functions. See
J.A. 27–28, 38, 1884, 2187–88, 2190, 2193–94, 2203–04.
Synchronoss offered no contrary expert testimony but tried
to repurpose Dr. Freedman’s list of known ways to perform
the claimed functions as evidence that a person of ordinary
skill in the art understood the terms as having structure.
J.A. 28, 38, 1671–72, 1681–82. Synchronoss also cited dic-
tionaries and previous district court decisions to argue that
the terms were understood in the field to have structure.
See J.A. 28, 1671–75. The district court rejected Syn-
chronoss’s arguments, credited Dr. Freedman’s testimony,
and concluded that all claims in the ’696 patent are invalid
as indefinite. J.A. 25–32.
The court also construed hardware-related terms that
appear in all asserted claims, namely “system,” “device,”
and “apparatus.” J.A. 24. Synchronoss proposed the fol-
lowing construction, which is the language used by the as-
serted patents to define the term, “device”:
a collection of elements or components organized
for a common purpose, and may include hardware
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8 SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC.
components of a computer system, personal infor-
mation devices, hand-held computers, notebooks,
or any combination of hardware which may include
a processor and memory which is adapted to re-
ceive or provide information to another device; or
any software containing such information residing
on a single collection of hardware or on different
collections of hardware.
J.A. 24; see also ’757 patent col. 5 ll. 13–23; ’696 patent
col. 4 ll. 27–36; ’446 patent col. 1 ll. 8–11 (incorporating by
reference the ’757 patent)).
Synchronoss also argued that Dropbox’s proposed con-
struction—which included a list of computing devices—was
“not incorrect, but incomplete to the extent that it limits
the definition to hardware devices.” J.A. 24. Dropbox re-
sponded that the term “device” could not properly be con-
strued to exclude hardware. J.A. 1877 (“[T]o the extent the
definition of ‘device’ purports to cover mere software in the
absence of any hardware, it is inconsistent with how ‘de-
vice’ is used in the claims.”). Dropbox pointed to the fact
that certain claims required a device to be “coupled” to a
network, and that software in the absence of hardware is
not capable of such coupling.
Id. Notably, at the hearing,
Synchronoss agreed with Dropbox that “device” could not
mean software “completely detached” from hardware.
J.A. 2481–82. The district court adopted Synchronoss’s
construction because of its express support in the asserted
patents. J.A. 25. But it also agreed with Dropbox that the
claims could not cover software in the absence of hard-
ware. 2
2 See J.A. 25 (“Defendants’ third argument concern-
ing stand-alone software does not apply here, as the Court
understands the ’757 Patent’s use of the term ‘software’ to
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SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC. 9
In May 2019, following the district court’s claim con-
struction order invalidating the ’696 patent’s asserted
claims as indefinite, Dropbox moved for summary judg-
ment with respect to the remaining ’757 and ’446 patents.
Dropbox first argued that all asserted claims of the ’446
patent were indefinite because they contain an impossibil-
ity. Specifically, the claims require “generating a [single]
digital media file” that itself “compris[es] a directory of dig-
ital media files.” J.A. 11. Synchronoss’s expert,
Mr. Alpaugh, conceded that “a digital media file cannot
contain a directory of digital media files.” J.A. 12, 4985.
Mr. Alpaugh had further testified that “comprising was ad-
mittedly the wrong choice of words and perhaps the better
word here would have been resulting in a second version or
some other choice.” J.A. 12, 4985. Synchronoss’s corporate
designee similarly testified that “if someone were to sug-
gest that ‘media data’ always means ‘directory of digital
media files[,]’ . . . then Clause C would not make sense.”
J.A. 12, 6490. Synchronoss responded that a person of or-
dinary skill in the art “would have been reasonably certain
that the asserted ’446 patent claims require a digital media
that is a part of a directory because a file cannot contain a
directory.” J.A. 6109. The district court rejected Syn-
chronoss’s argument as an improper attempt to redraft the
claims and thus granted summary judgment in favor of
Dropbox that all asserted claims of the ’446 patent are in-
definite. J.A. 13.
Dropbox also sought summary judgment that the as-
serted claims of the ’757 and ’446 patents are not infringed
because the asserted claims, as construed, all required
hardware, but Dropbox’s accused software could not meet
that requirement. J.A. 6268–72. Synchronoss responded
that the “[t]he participle phrase ‘residing on hardware’
reference software in combination with a hardware compo-
nent or element.”) (citing J.A. 1877, 2482).
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10 SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC.
describes location; it is not an independent requirement of
the claims.” J.A. 7, 6098. In other words, according to Syn-
chronoss, the asserted claims only cover “the ‘software’ re-
siding on the hardware, but not the hardware itself.”
J.A. 7, 6098. Under this interpretation of the claims, Syn-
chronoss argued, Dropbox’s software infringed.
The district court rejected Synchronoss’s argument and
granted summary judgment of non-infringement, noting
that Synchronoss agreed at the claim construction hearing
that the asserted claims did not encompass “software com-
pletely detached from hardware.” J.A. 7–8, 25, 2482. The
district court explained that, in its claim construction or-
der, it had “unambiguously held that ‘[first/second] system’
did not cover software alone.” J.A. 7; see also J.A. 25 (“[T]he
Court understands that the ’757 Patent’s use of the term
‘software’ to reference software in combination with a hard-
ware component of element.”). The district court further
rejected Synchronoss’s theory, based on Uniloc USA, Inc.
v. Microsoft Corp.,
632 F.3d 1292 (Fed. Cir. 2011), that the
claims required software “in residence” on hardware but
not the hardware itself. J.A. 8. Because all asserted claims
of the ’757 and ’446 patents required hardware and Syn-
chronoss did not accuse any Dropbox hardware of infring-
ing, the court granted summary judgment of non-
infringement as to the ’757 and ’446 patents. Synchronoss
appeals the district court’s claim construction and sum-
mary judgment decisions. Dropbox cross-appeals the dis-
trict court’s denial of Dropbox’s motion to dismiss. We have
jurisdiction under
28 U.S.C. § 1295(a)(1).
DISCUSSION
We review the grant of summary judgment under the
law of the regional circuit in which the district court sits,
here, the Ninth Circuit. Classen Immunotherapies, Inc. v.
Elan Pharm., Inc.,
786 F.3d 892, 896 (Fed. Cir. 2015). Ap-
plying Ninth Circuit law, we review the district court’s
grant of summary judgment de novo. Amgen Inc. v. Sandoz
Case: 19-2196 Document: 70 Page: 11 Filed: 02/12/2021
SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC. 11
Inc.,
923 F.3d 1023, 1027 (Fed. Cir. 2019). We review a
district court’s claim constructions, including determina-
tions of indefiniteness, de novo, but we review subsidiary
factual findings based on extrinsic evidence for clear error.
MasterMine Software, Inc. v. Microsoft Corp.,
874
F.3d 1307, 1310 (Fed. Cir. 2017). Patent eligibility under
§ 101 is ultimately a question of law, reviewable de novo,
which may contain underlying issues of fact. Berkheimer
v. HP Inc.,
881 F.3d 1360, 1365 (Fed. Cir. 2018).
A. Jurisdiction
We first address a threshold question of jurisdiction.
Absent extraordinary circumstances, for a district court
judgment to be appealable to this court under
28 U.S.C.
§ 1295(a)(1), the judgment must resolve all claims and
counterclaims or make an express determination under
Rule 54(b) of the Federal Rules of Civil Procedure that
there is no just reason for delay. SafeTCare Mfg., Inc. v.
Tele-Made, Inc.,
497 F.3d 1262, 1267 (Fed. Cir. 2007); see
also Int’l Elec. Tech. Corp. v. Hughes Aircraft Co.,
476
F.3d 1329, 1330 (Fed. Cir. 2007) (concluding no final judg-
ment, and thus a lack of jurisdiction, where the defendants’
counterclaims were never dismissed and thus remained ex-
tant).
In its order granting summary judgment of non-in-
fringement on the ’757 patent, the district court denied as
moot Synchronoss’s motion for summary judgment of va-
lidity of the ’757 patent. A finding of non-infringement,
however, does not by itself moot a request for declaratory
judgment of invalidity. See Cardinal Chem. Co. v. Morton
Int’l, Inc.,
508 U.S. 83, 98 (1993). Therefore, Dropbox’s in-
validity counterclaims survived the judgment of non-in-
fringement, and the district court’s purported “final
judgment” based on its summary judgment decision did not
constitute a final decision under
28 U.S.C. § 1295(a)(1).
In Amgen Inc. v. Amneal Pharmaceuticals LLC,
945
F.3d 1368, 1374 (Fed. Cir. 2020), we held that a party can
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12 SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC.
“cure” a jurisdictional defect stemming from its unresolved
invalidity counterclaim if it agrees to “‘give up’” the claim
regardless of the outcome of the appeal. We held that such
a representation, even made at oral argument, effectively
“nullifie[s]” the outstanding issues, rendering the court’s
judgment as to infringement “final” for purposes of our ju-
risdiction.
Id. During oral argument, Dropbox agreed to
give up its invalidity counterclaims with respect to the ’757
patent. Oral Arg. at 6:27–13:08, http://oralargu-
ments.cafc.uscourts.gov/default.aspx?fl=19-2196.mp3.
Based on Dropbox’s representation as to its counterclaims,
we deem the district court’s judgment final and we assert
jurisdiction under § 1295(a)(1).
B. Indefiniteness
Synchronoss challenges the district court’s conclusions
that the asserted claims of the ’446 and ’696 patents are
indefinite under
35 U.S.C. § 112. Section 112, paragraph
2, provides that “[t]he specification shall conclude with one
or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as
his invention.”
35 U.S.C. § 112. A patent claim is indefi-
nite if it fails to provide a person of ordinary skill in the art
reasonable certainty regarding the scope of the claimed in-
vention. Nautilus, Inc. v. Biosig Instruments, Inc.,
572 U.S.
898, 901 (2014); Biosig Instruments, Inc. v. Nautilus, Inc.,
783 F.3d 1374, 1380–81 (Fed. Cir. 2015).
1. The ’446 Patent
The district court granted summary judgment that the
asserted claims of the ’446 patent are invalid under § 112,
paragraph 2, on the ground they contain an impossibility.
The evidence supports that conclusion. Specifically, the
’446 patent’s asserted claims require “generating a [single]
digital media file” that itself “compris[es] a directory of dig-
ital media files.” J.A. 11. Synchronoss’s expert, however,
testified that “a digital media file cannot contain a direc-
tory of digital media files,” J.A. 12, 4985, and Synchronoss’s
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SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC. 13
corporate designee testified the claims would “not make
sense” if “media data” was understood to mean “directory
of media files,” J.A. 12, 6490.
Synchronoss does not dispute that the claims contain
an impossibility. It contends that a person of ordinary skill
in the art would read the specification and reasonably un-
derstand that the inventions “mean that, in response to in-
put from a user, a digital media file is generated as a
second, updated version of the media data in the same for-
mat as the first version of the media data.” Appellant’s
Br. 39. We are not persuaded.
In Allen Engineering Corp. v. Bartell Industries, Inc.,
we explained that where a person of ordinary skill in the
art would understand based on the specification that the
claims do not set forth what the inventor regards as his in-
vention, the claims are invalid under § 112, paragraph 2.
299 F.3d 1336, 1349 (Fed. Cir. 2002) (rejecting the argu-
ment that “perpendicular” would be understood as “paral-
lel” in light of the specification’s teachings). In Trustees of
Columbia University in City of New York v. Symantec
Corp., we held the claims indefinite because they nonsen-
sically “describe[d] the step of extracting machine code in-
structions from something that does not have machine code
instructions.”
811 F.3d 1359, 1367 (Fed. Cir. 2016). Here,
the asserted claims of the ’446 patent are nonsensical and
require an impossibility—that the digital media file con-
tain a directory of digital media files. Adopting Syn-
chronoss’s proposal would require rewriting the claims, but
“it is not our function to rewrite claims to preserve their
validity.” Allen,
299 F.3d at 1349. We therefore hold that
the claims are indefinite as a matter of law under § 112,
paragraph 2.
2. The ’696 Patent
The district court concluded in its claim construction
order that all asserted claims of the ’696 patent are indefi-
nite because six claim terms that appear across all asserted
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14 SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC.
claims did not correspond to adequate structure disclosed
in the specification.
The threshold inquiry is whether the claims at issue
invoke § 112, paragraph 6. The standard is whether a per-
son of ordinary skill in the art would understand that the
claim terms recite a function but not sufficient structure
for performing the function. See Williamson v. Citrix
Online, LLC,
792 F.3d 1339, 1349 (Fed. Cir. 2015) (citing
Greenberg v. Ethicon Endo-Surgery, Inc.,
91 F.3d 1580,
1583 (Fed. Cir. 1996)). Even if a claim term lacks the word
“means,” § 112, paragraph 6 is invoked if the challenger
shows that the claim term fails to recite sufficiently defi-
nite structure or recites a function without sufficient struc-
ture for performing that function. Williamson, 792 F.3d
at 1349 (citing Watts v. XL Sys., Inc.,
232 F.3d 877, 880
(Fed. Cir. 2000)).
If a claim term invokes § 112, paragraph 6, we apply a
two-step process for construing the term. The first step is
to identify the claimed function. Williamson, 792 F.3d
at 1351. The second step is to determine whether sufficient
structure is disclosed in the specification that corresponds
to the claimed function. Id. If the specification fails to dis-
close adequate corresponding structure, the claim is indef-
inite. Id. at 1351–52.
Against that legal backdrop, we turn to the claim terms
at issue. The term “user identifier module” appears in all
asserted claims of the ’696 patent. According to Syn-
chronoss, the function of this claim term is “identifying a
user.” Appellant’s Br. 52. Synchronoss argues that “[t]he
algorithm of the top half of Fig. 17” and the text at col-
umn 32, lines 6 to 34, together describe structure sufficient
to achieve the function of identifying a user. Id. at 53. We
disagree.
The cited portion of Figure 17 depicts alternative steps
labeled “forgot password,” “sign up,” “provide specific infor-
mation,” and “login.” ’696 patent at Fig. 17. It also depicts
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SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC. 15
a downstream step labeled “confirm account.” Id. The cor-
responding text cited by Synchronoss, however, does not
detail what a user identifier module consists of or how it
operates. See id. col. 32 ll. 6–34. Dropbox’s expert,
Dr. Freedman, identified “many ways in which a system
could perform user identification, each with its own dis-
tinct structure.” J.A. 2187–88. Synchronoss offered no con-
trary expert testimony, but rather relied on
Dr. Freedman’s list of “nearly 20 different structures” as
evidence that a user identifier module would be understood
by a person of ordinary skill in the art as corresponding to
structure. J.A. 28. In doing so, Synchronoss illustrated
that the claim term “user identifier module” does what the
definiteness requirement prohibits. It is not enough that a
means-plus-function claim term correspond to every
known way of achieving the claimed function; instead, the
term must correspond to “adequate” structure in the spec-
ification that a person of ordinary skill in the art would be
able to recognize and associate with the corresponding
function in the claim. See Williamson, 792 F.3d at 1352.
Because the term “user identifier module” fails in this re-
gard, we hold that the term is indefinite and, thus, the as-
serted claims of the ’696 patent are invalid. As the term
appears in all asserted claims, we do not address the re-
maining five terms in the asserted claims of the ’696 pa-
tent, which the district court also deemed indefinite.
C. Infringement
Synchronoss appeals the district court’s grant of sum-
mary judgment of non-infringement on all asserted claims
of the ’757 patent. 3 Synchronoss argues that the district
3 Synchronoss also challenges the district court’s
conclusion that the ’446 patent’s asserted claims are not
infringed. Given our conclusion above that those claims
are indefinite, we address the infringement issue only as to
the ’757 patent.
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16 SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC.
court erred in concluding that the asserted claims require
hardware. Synchronoss specifically contends that the as-
serted claims—as construed by Synchronoss—recite hard-
ware not as a claim limitation, but merely as a reference to
the “location for the software,” Appellant’s Br. 26, or “the
environment in which software operates,” id. at 24.
The district court determined that the language, “soft-
ware . . . residing on . . . hardware,” proposed by Syn-
chronoss as a construction for the terms “device,” “system,”
and “apparatus,” J.A. 22, limits the asserted claims’ scope
and thus requires infringing technology to possess hard-
ware. See J.A. 7–8. In reaching this conclusion, the court
emphasized Synchronoss’s concession that the asserted
claims, as construed, could not cover software absent hard-
ware. See J.A. 7–8.
Synchronoss argues that its agreement that the claims
cannot cover “software completely detached from hard-
ware” was not a concession that the claims require hard-
ware. Appellant’s Br. 29. Instead, Synchronoss argues
that the district court “misinterpreted Synchronoss’ coun-
sel’s assent to that statement” and that Synchronoss’s po-
sition has consistently been that the term “hardware” in its
proposed construction refers in a non-limiting sense to the
“hardware environment” in which “the software is always
expected to work.” Id. We disagree.
We conclude that the “hardware” term limits the scope
of the asserted claims of the ’757 patent. Synchronoss itself
proposed the construction including the “hardware” term
on the basis that the asserted patents used that language
to define the term “device.” Synchronoss also agreed with
the district court that “no one’s arguing that a device could
be software completely detached from hardware.”
J.A. 2481–82. The conclusion that the “hardware” term
limits the claim scope is thus consistent with both Syn-
chronoss’s own assertions and the record evidence.
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SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC. 17
The evidence shows that Dropbox provides its custom-
ers with software for download but no corresponding hard-
ware. See, e.g., J.A. 6358 (Synchronoss’s expert, Mr.
Alpaugh, testifying that “I’m not aware of them selling any
hardware. . . . The hardware is not part of my opinion.”);
see also Appellant’s Br. 36 (“[T]he claims at issue in this
case are satisfied by the software that Dropbox makes, of-
fers for sale and sells.” (emphasis added)). Because Drop-
box 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. See Ro-
tec Indus., Inc. v. Mitsubishi Corp.,
215 F.3d 1246, 1252 n.2
(Fed. Cir. 2000) (“[O]ne may not be held liable under
§ 271(a) for ‘making’ or ‘selling’ less than a complete inven-
tion.”).
Nor does Dropbox directly infringe by “using” the en-
tire claimed system under § 271(a). Direct infringement by
“use” of a claimed system requires use of each and every
element of the system. Centillion Data Sys., LLC v. Qwest
Commc’ns Int’l, Inc.,
631 F.3d 1279, 1284 (Fed. Cir. 2011).
“[T]o ‘use’ a system for purposes of infringement, a party
must put the invention into service, i.e., control the system
as a whole and obtain benefit from it.”
Id. (citing NTP, Inc.
v. Research In Motion, Ltd.,
418 F.3d 1282, 1317 (Fed.
Cir. 2005)).
In Centillion, the claims recited a system comprising
back-end computing means to carry out certain functions,
as well as end users’ “personal computer data processing
means.” 631 F.3d at 1282. We reasoned that, “[w]hile
Qwest may make the back-end processing elements, it
never ‘uses’ the entire claimed system because it never puts
into service the personal computer data processing means.”
Id. at 1286. “Supplying the software for the customer to
use,” we explained, “is not the same as using the system.”
Id.
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18 SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC.
Synchronoss argues that the district court misinter-
preted Centillion, Appellant’s Br. 33, and that Centillion
does not apply given its factual differences to this case, Ap-
pellant’s Reply Br. 10. We disagree. Although Centillion
involves distinct facts, the legal standard articulated in
Centillion applies to whether Dropbox directly infringes by
“using” Synchronoss’s claimed system. See Centillion, 631
F.3d at 1284. Synchronoss fails to identify how the district
court misstated or misapplied that standard. In the ab-
sence of a genuine factual dispute as to Dropbox’s control
of, and benefit from, the claimed system, we find no error
in the district court’s conclusion that Dropbox does not di-
rectly infringe by “using” the claimed system under
§ 271(a).
For these reasons, we affirm the district court’s grant
of summary judgment of non-infringement with respect to
the asserted claims in the ’757 patent.
D. Cross-Appeal
Because we affirm the district court’s judgment of in-
validity of the asserted claims of the ’696 and ’446 patents
under § 112, paragraph 2, we need not reach the question
of whether those claims are patent eligible under
35 U.S.C.
§ 101. Nor do we reach that question with respect to the
asserted claims of the ’757 patent, given Dropbox’s agree-
ment at oral argument to waive its invalidity counter-
claims with respect to the ’757 patent. See, e.g., Amgen,
945 F.3d at 1374.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. Accordingly, we affirm the
district court’s judgments of invalidity under § 112, para-
graph 2, with respect to the ’446 and ’696 patents and non-
infringement with respect to the ’757 patent.
AFFIRMED
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SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC. 19
COSTS
No costs.
