Online storage company patent found invalid. DROPBOX v. SYNCHRONOSS

Online storage company patent found invalid. DROPBOX v. SYNCHRONOSS

A patent is a set of exclusive rights granted to the inventor of a new, useful and not obvious invention.  In the United States an inventor gains a patent by filing a patent application with the United States Patent and Trademark Office.  The patent application is reviewed by a patent examiner at the United States Patent and Trademark Office and if the patent application meets all the requirements, the inventor is granted a patent on the invention.  A patent grants its owner the exclusive right to make, use, sell and import the invention in the United States.

The grant of a patent does not make a patent irrevocable.  A patent can be invalidated after it is granted at trial or in an administrative proceeding at the United States Patent and Trademark Office.  One of the grounds on which a patent can be invalidated is the subject matter to which the invention relates.  A patent may be granted on any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof is eligible for patent protection. §35 U.S.C. 101  Even if an invention falls into one of these categories the invention still might not be patent eligible subject matter, because of a judicially created exception.  Laws of nature, physical phenomena, and abstract ideas are examples of judicially created exceptions to patent eligible subject matter.

The abstract idea exception embodies the longstanding rule that an idea of itself is not patentable and it prevents patenting a result where it matters not by what process or machinery the result is accomplished.  Courts employ a two step test to determine whether a patent claim directed to an abstract idea is patent eligible.   In step one, a court
considers the claim in its entirety to ascertain whether the claim is directed to an abstract idea.  If the claim is directed to an abstract idea the court proceeds to step two. In step two, a  court looks for an inventive concept sufficient to transform the nature of the claim into a patent eligible application.

DROPBOX, INC. v. SYNCHRONOSS TECHNOLOGIES, INC, 19-1765 (C.A.F.C. 2020) is a case which illustrates when a court will invalidate a patent because it is directed to an abstract idea.

In June 2018, Plaintiff filed suit against Defendant alleging infringement of three patents.  The three asserted patents, U.S. Patent Numbers 6,178,505, 6,058,399, and 7,567,541, relate to, respectively, “Secure Delivery of Information in a Network,” “File Upload Synchronization,” and a “System and Method for Personal Data Backup for Mobile Customer Premises Equipment.”

Defendant moved to dismiss the claims, arguing that the patents are invalid due to their ineligibility under 35 U.S.C. § 101. The district court agreed with Defendant,holding all three patents invalid for failing to claim eligible subject matter.  Plaintiff appealed to the Court of the Appeals for the Federal Circuit.

In its decision the Federal Circuit noted that patent eligibility under 35 U.S.C. § 101 is ultimately an issue of law which is reviewed de novo. But patent eligibility contain underlying issues of fact.  The Federal Circuit discussed each patent’s eligibility individual and then addressed how well the Plaintiff provided facts to demonstrate each patent was valid.

With respect to each of the three patents the Federal Circuit agreed with the district court that the patents were directed to an abstract idea.  None of the three patents demonstrated an inventive concept which would make the inventions eligible for patent protection.  On appeal the Plaintiff claimed that it had plead sufficient facts to overcome a motion to dismiss.  The Federal Circuit disagreed, finding that Plaintiff had merely offered conclusory statements that the patents contained an inventive concept.  Such statements are not enough to overcome a motion to dismiss.

The Federal Circuit affirmed the District Court’s decision.

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