Friday, February 12, 2021

Synchronoss loses appeal at CAFC on 35 U.S.C. § 112, paragraph 2

The outcome:

Synchronoss Technologies, Inc. appeals the district court’s decisions 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. 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 patent eligibility (...)

The corresponding 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 distinct structure.” J.A. 2187–88. Synchronoss offered no contrary 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 specification 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 regard, we hold that the term is indefinite and, thus, the asserted claims of the ’696 patent are invalid. As the term appears in all asserted claims, we do not address the remaining five terms in the asserted claims of the ’696 patent, which the district court also deemed indefinite.


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