Synchronoss Techs., Inc. v. Dropbox Inc.
Synchronoss Techs., Inc. v. Dropbox Inc.
Opinion of the Court
Pending before the Court are cross-motions for summary judgment filed by Plaintiff Synchronoss Technologies, Inc. ("Synchronoss") and Defendant Dropbox, Inc. ("Dropbox"), briefing for which is complete. Dkt. Nos. 317 ("Dropbox Mot."), 333, 362, 368 ("Dropbox Opp."), 387 ("Dropbox Reply"), 389. The Court held a hearing on these motions on June 14, 2019. For the reasons discussed below, the Court GRANTS Dropbox's motion for summary judgment, and thus DENIES AS MOOT Synchronoss's motion for summary judgment.
I. BACKGROUND
This case concerns two patents related to data synchronization: U.S. Patent Nos. 6,671,757 ("the '757 Patent") and 7,587,446 ("the '446 Patent") (collectively, "the Asserted Patents").
A. The '757 Patent
The '757 Patent is titled "Data Transfer and Synchronization," and claims a system and method for "efficiently, quickly and easily synchronizing devices which can couple to the Internet, or any network." See '757 Patent, 3:23-25. Synchronoss alleges that Dropbox directly infringes claims 1, 8, 9, 14, 16, 21, 24, 26, and 28 of the '757 Patent. See *707Dkt. No. 316-6 ("Alpaugh Report") ¶ 2(i). Independent claim 1 provides:
Claim 1
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 communication with the first and second systems; and
a second sync engine on the second system coupled to receive the difference information in the difference transaction from the data store via the network, 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 interface, a copy of a previous state of said data, and a difference transaction generator.
The '757 Patent's two other independent claims, claims 16 and 24, include similar limitations as claim 1:
Claim 16
16. A system, comprising:
a first device including at least a first data file and first differencing code, the first device having an input and an output coupled to a network to receive first device data change transactions from, and provide change transactions generated by the first differencing code based on said at least one data file to, said network;
a data store coupled to the network having at least one data structure coupled to store change transactions; and
a second device including at least a second data file and second differencing code, the second device having an input and an output coupled to the network to receive said first device data change transactions from, and provide second change transactions generated by the second differencing code based on said at least second data file to, said data store;
wherein said first differencing code includes a first sync engine having a first data interface, a first copy of a previous state of said data, and a first difference transaction generator, and said second differencing code includes a second sync engine having a second data interface, a second copy of a previous state of said data, and a second difference transaction generator.
Claim 24
24. An Internet synchronization system, comprising:
a storage server having an Internet connection;
a first device coupled to the Internet and including a first device sync engine interfacing with data on the first device, the first device in communication with at least the storage server; and
a second device coupled to the Internet and including a second device sync engine interfacing with data on the second device, the second device in communication with at least the storage server;
wherein each said device sync engine comprises a data interface, a copy of a previous state of said data, and a difference transaction generator.
In short, the '757 Patent discloses a system and method for synchronizing data between two systems or devices by transmitting from one system to another certain *708"difference information," which the parties agree means "information that comprises only the changes to one system's data which have occurred on that system, and instructions for implementing those changes." See Dkt. No. 168 at 3. This difference information is transmitted through what is called a "data store." See, e.g. , '757 Patent, 3:43-45.
B. The '446 Patent
The '446 Patent incorporates the '757 Patent in its entirety, and is titled "Acquisition and Synchronization of Digital Media to a Personal Information Space." The invention "comprises a method for acquiring and maintaining a digital music store in personal information space, comprising: maintaining a personal information space identified with a user including data capable of being used on a client device, and transferring at least a portion of the data from the personal information space to an Internet-coupled device in response to a user request." '446 Patent, 3:45-51. Synchronoss alleges that Dropbox directly infringes claims 1, 2, 6-15, 18 and 19 of the '446 Patent. See Alpaugh Report ¶ 2(ii). Independent claim 1 provides:
Claim 1
1. Amethod of transferring media data to a network coupled apparatus, comprising:
(a) maintaining a personal information space identified with a user including media data comprising a directory of digital media files, the personal information space being coupled to a server and a network;
(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 version including an update not included in the first version,
(d) obtaining difference information comprising differences 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 network containing the difference information from the personal information space to the network coupled apparatus in response to a sync request made from a web browser at the network-coupled apparatus by the user.
Nine dependent claims add narrowing limitations such as (1) "including the step, prior to step (a), of receiving information into the personal information space," see '446 Patent, Claim 2; and (2) including a "directory of digital media files" to comprise the media data, see id., Claim 6.
Additionally, claim 11 is independent, and provides:
*709Claim 11
11. Asystem for transferring digital media between a plurality of network coupled devices, comprising:
a personal information store identified with a user containing digital media comprising a directory of digital media files readable by an application program; and a processing device, a server and a network coupled with the personal information store, the processing device including:
an application data store holding a version of the digital media in the personal information store, and a device engine to: a) generate 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 store, the second version including an update not included in the first version; (b) obtain difference information comprising differences between the first version of the media data and the second version of the media data; and (c) transfer a digital media file over the network containing the difference information from the personal information space to the network coupled apparatus in response to a sync request made from a web browser at the network-coupled apparatus by the user.
Claim 11 has three dependent claims. See id. at 14:58-64.
II. LEGAL STANDARD
A motion for summary judgment should be granted where there is no genuine issue of material fact and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56 ; Anderson v. Liberty Lobby, Inc. ,
If the moving party meets its initial burden, the burden shifts to the non-moving party to present facts showing a genuine issue of material fact for trial. Fed. R. Civ. P. 56 ; Celotex , 477 U.S. at 324,
Infringement is a question of fact. Frank's Casing Crew & Rental Tools, Inc. v. Weatherford Int'l, Inc. ,
III. DROPBOX'S MOTION FOR SUMMARY JUDGMENT
Dropbox moves for summary judgment on three grounds: (1) Dropbox does not directly infringe the asserted patents; (2) the Dropbox system does not satisfy each limitation of the asserted '757 Patent claims; and (3) the asserted '446 Patent claims are invalid and otherwise not infringed.
A. Direct Infringement
Turning first to whether there is direct infringement, which is a threshold issue, Dropbox argues that it is entitled to summary judgment on all asserted claims because Synchronoss has not identified any evidence to establish that Dropbox has directly infringed either the '757 or '446 Patent.
1. Direct Infringement of the '757 Patent
As to the '757 Patent, Synchronoss's expert characterizes the infringement as relating to a three-part system: a "first and second system," which operate on "Dropbox desktop client" machines, and a Dropbox central server. See, e.g. , Alpaugh Report ¶¶ 96, 100, 105, 142, 148, 154, 182, 188, and 192. These systems correspond to the three common aspects of the asserted claims: (1) a first "system" or "device" comprising specific software-specifically, a first "sync engine," "differencing code," or "device sync engine," depending on the claim at issue; (2) a second "system" or "device" comprising similar software; and (3) a central "data store" or "storage server" through which synchronization occurs. See '757 Patent, 46:58-47:8, 48:1-24, 48:51-64.
Dropbox contends that it is entitled to summary judgment that it does not directly infringe the asserted '757 Patent claims because "there is no genuine dispute that Dropbox does not make, use, sell, or offer to sell the accused system." Dropbox Mot. at 8. In particular, Dropbox argues that only its customers "use" the patented system for purposes of infringement, because only Dropbox customers "put the invention into service, i.e. , control the system as a whole and obtain benefit from it." Id. at 8-9 (quoting Centillion Data Sys., LLC v. Qwest Commc'ns Int'l, Inc. ,
Synchronoss responds to Dropbox's arguments in three ways. First, although Synchronoss does not dispute that to directly infringe, Dropbox must make, sell, or offer to sell a "complete invention," Synchronoss nonetheless contends that *711Dropbox's argument "misreads the claims and rejects the Court's claim construction." Dropbox Opp. at 7. In particular, Dropbox relies on the Court's construction of the term "[first/second] system," which is:
a collection of elements or components organized for a common purpose, and may include hardware components of a computer system, personal information devices, hand-held computers, notebooks, or any combination of hardware which may include a processor and memory which is adapted to receive 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"
Id. ; Dkt. No. 168 at 9-10. Synchronoss focuses exclusively on the language "or any software containing such information residing on a single collection of hardware or on different collections of hardware" to argue that Dropbox directly infringes the '757 Patent by making, selling, and offering for sale software that infringes once it is "in residence" on a user's hardware. Dropbox Opp. at 7-8. More to the point, Synchronoss claims that "[t]he participle phrase 'residing on hardware' describes location; it is not an independent requirement of the claims." Id. at 8. "In other words," Synchronoss contends, "the asserted claims are claiming the 'software' residing on hardware, but not the hardware itself." Id.
Contrary to Synchronoss's position, the Court's claim construction order unambiguously held that "[first/second] system" did not cover software alone. See Dkt. No. 168 at 10 ("Defendants' third argument concerning stand-alone software does not apply here, as the Court understands the '757 Patent's use of the term 'software' to reference software in combination with a hardware component or element."). In fact, when discussing this claim term at the Markman hearing, Synchronoss disclaimed any notion that the asserted claims need not encompass "hardware," as it now suggests:
[Counsel for Dropbox ]: To the extent, Your Honor, that construction means -- again, we believe that Synchronoss has advanced the position in its briefing that that language seems to indicate just software. To the extent the construction is -- to the extent the code [sic] understands that language to be software in combination with hardware, we think that's -- we think that's appropriate as a construction.
The Court : And that's what the specification says verbatim.
[Counsel for Synchronoss ]: That's what our proposed construction actually says, "or any software containing such information residing on a single collection of hardware or on different collections of hardware," Your Honor.
The Court : Right. So it sounds like no one's arguing that a device could be software completely detached from hardware, correct?
[Counsel for Synchronoss ]: That's correct, Your Honor.
Dkt. No. 165 at 30:3-19.
At the hearing on the pending motions, Synchronoss's principal argument in support of its "in residence" theory of direct infringement was that the present claims are "exactly" like those in Uniloc USA, Inc. v. Microsoft Corp. ,
Synchronoss next argues that notwithstanding the need for Dropbox users to complete the invention, Dropbox may be liable for "divided infringement" under Akamai Technologies, Inc. v. Limelight Networks, Inc. ,
The Court finds Synchronoss's reliance on Akamai unavailing. Synchronoss does not allege that Dropbox forms a joint enterprise with its users. Nor has Synchronoss put forward any evidence that Dropbox adequately directs or controls the user's performance. For example, Synchronoss does not contend that Dropbox conditions its users' receipt of a benefit upon performing certain actions that manifest infringement. Instead, Synchronoss merely relies on Dropbox's provision of instructions for using its software to demonstrate Dropbox's control. Dropbox Opp. at 9. But those facts, at most, might support a theory of induced infringement, a theory of liability Synchronoss does not advance in this case.
As a final salvo, Synchronoss argues that summary judgment is at least unwarranted because Dropbox has admitted to using the accused software on its own hardware. Dropbox Opp. at 7. But the only factual support for this is a passing deposition statement that Dropbox employees have stored PDFs on Dropbox. See Dkt. No. 367-12, at 40:23-41:10. No one argues, however, that storage alone constitutes infringement of the '757 Patent, and thus this statement alone does not warrant denying Dropbox's motion for summary judgment as to direct infringement of the '757 Patent.
Because there is no genuine dispute that Dropbox does not make, use, sell, or offer to sell a complete infringing invention, the Court GRANTS Dropbox's request for summary judgment that it does not directly infringe the '757 Patent.
*7132. Direct Infringement of the '446 Patent
Dropbox next moves for summary judgment that it does not directly infringe the '446 Patent. Dropbox Mot. at 11-12. The '446 Patent contains both system and method claims. As to the system claim (claim 11 and corresponding dependent claims), Dropbox argues that it does not directly infringe "for the same reason it does not directly infringe the claims of the '757 Patent : they recite a system that includes both hardware and software elements configured in a certain way, and Dropbox neither sells nor configures the complete accused system." Id. at 11. In particular, claim 11 requires a "processing device." And yet, Synchronoss only maintains that the "processing device" limitation is satisfied in Dropbox's accused system by a "computer ... together with the Dropbox desktop client." See Alpaugh Report ¶ 262. As was true with the '757 Patent, however, there is no dispute that Dropbox's customers complete the system by supplying their own computers.
Synchronoss's only response concerning the system claims is to repeat its characterization of the Court's claim construction order and the phrase "any software containing such information residing on a single collection of hardware or on different collections of hardware." Dropbox Opp. at 11 ("As discussed above, this limitation is met once the Dropbox software is in residence on any hardware ... and where the software resides has no impact on whether Dropbox infringes."). As discussed above, the Court finds this argument unavailing.
As to the '446 Patent's method claims (claim 1 and corresponding dependent claims), Dropbox contends that under Akamai , direct infringement of a method claim only "occurs where all steps of a claimed method are performed by or attributable to a single entity." Dropbox Mot. at 12;
Because there is no genuine dispute that Dropbox does not make, use, sell, or offer to sell a complete infringing invention, the Court GRANTS Dropbox's request for summary judgment that it does not directly infringe the '446 Patent's systems claims. But the Court DENIES Dropbox's request for summary judgment on this ground as to direct infringement of the '446 Patent's method claims.
B. Invalidity and Non-Infringement of the '446 Patent
Dropbox further argues that summary judgment is warranted in its favor as to all asserted claims of the '446 Patent because: (1) the claims are invalid as indefinite; and (2) Dropbox does not infringe the claims for various reasons. For reasons that follow, the Court GRANTS Dropbox's request for summary judgment as to the '446 Patent on the grounds that the *714relevant claims are invalid as indefinite.
As to definiteness, Dropbox contends that one particular impossibility permeates all of the claims: the claims require "generating a [single] digital media file" that itself "compris[es] a directory of digital media files." Dropbox Mot. at 20-23. Claim 1 demonstrates this dispute, and thus is worth repeating here:
Claim 1
1. A method of transferring media data to a network coupled apparatus, comprising:
(a) maintaining a personal information space identified with a user including media data comprising a directory of digital media files, the personal information space being coupled to a server and a network;
(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 version including an update not included in the first version;
(d) obtaining difference information comprising differences 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 network containing the difference information from the personal information space to the network coupled apparatus in response to a sync request made from a web browser at the network-coupled apparatus by the user.
As written, (c) requires generating "a digital media file ... comprising a second version of the media data in the same format as the first version." The "first version of the media data" referenced in (b), however, relates back to (a), which is described as "comprising a directory of digital media files." Thus, according to Dropbox, the claims recite an impossibility, as a single generated digital media file cannot itself comprise a directory of digital media files. Dropbox Mot. 21.
"[A] patent is invalid for indefiniteness if its claims [under Section 112, ¶ 2] read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc. ,
When asked about the apparent impossibility in claim 1, Synchronoss's expert-Mr. Alpaugh-conceded that "[a] digital media file cannot contain a directory of digital media files." See Dkt. No. 316-10 ("Alpaugh Tr.") at 154:19-20. And Synchronoss's 30(b)(6) designee echoed that "if someone were to suggest that 'media data'
*715always means 'directory of digital media files' ... then Clause C would not make sense." See Dkt. No. 316-12 at 175:15-176:5. Thus, rather than defend the claim's language, Synchronoss has sought to rewrite the claims. Mr. Alpaugh in particular stated that "comprising was admittedly the wrong choice of words and perhaps the better word here would have been resulting in a second version or some other choice." Alpaugh Tr. at 156:25-157:3 (emphasis added).
Dropbox contends that such claim redrafting to avoid invalidity under Section 112 contravenes well-settled Federal Circuit law. See Dropbox Mot. at 22-23 (citing Process Control Corp. v. HydReclaim Corp. ,
Synchronoss further argues that summary judgment is inappropriate because claims "need not be perfectly clear to be deemed definite." Dropbox Opp. at 19-20 (citing Nautilus, Inc. ,
For these reasons, the Court GRANTS Dropbox's motion for summary judgment in its favor as to all asserted claims of the '446 Patent because the claims are invalid as indefinite under Section 112.
IV. CONCLUSION
The Court GRANTS Dropbox's motion for summary judgment as to all claims of infringement on the grounds that (1) Synchronoss failed to show that Dropbox directly infringes any claims of the '757 Patent or the system claims of the '446 Patent, and (2) the asserted claims of the '446 Patent are invalid as indefinite.
Because the Court grants Dropbox's motion for summary judgment, the following motions are DENIED AS MOOT : (1) Synchronoss's motion for summary judgment, *716see Dkt. No. 333; (2) the pending motions to strike portions of various expert reports, see Dkt. Nos. 275, 297, 306; and (3) the pending Daubert motions, see Dkt. Nos. 313, 315, 322, 324, 326, 330. A separate order will issue concerning the pending administrative motions to file under seal portions of the briefing on these motions. The clerk is directed to enter judgment in favor of Defendant and to close the file.
IT IS SO ORDERED.
Because the Court grants Dropbox's request for summary judgment that it does not directly infringe the '757 Patent, the Court need not consider Dropbox's alternative ground for summary judgment: that the Dropbox system does not satisfy each limitation of the asserted '757 Patent claims.
Because the Court otherwise grants Dropbox's request for summary judgment as to the '446 Patent's system claims, the Court here need only address the '446 Patent's method claims. The analysis that follows, however, applies equally to the system and method claims. Thus, even if Dropbox did not prevail on its direct infringement argument, summary judgment in Dropbox's favor as to the system claims would be warranted on these independently sufficient grounds.
Reference
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- SYNCHRONOSS TECHNOLOGIES, INC. v. DROPBOX INC.
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