Distribution of Software Alone Does Not Infringe a Claim That Requires Hardware

| Serah Friedman, Ph.D.Jeremy Anapol


Before Prost, Reyna, and Taranto. Appeal from the U.S. District Court for the Northern District of California.

Summary: A claim construed to require hardware does not cover software alone.

Synchronoss Technologies sued Dropbox for infringement of three patents relating to synchronizing data across multiple devices. The district court found that hardware-related terms in the asserted claims, such as “system,” “device,” and “apparatus,” meant that the claims could not cover software without hardware. Dropbox sought summary judgement on the theory that Dropbox distributed the accused software with no hardware. The district court granted summary judgment of non-infringement. Synchronoss appealed.

The Federal Circuit found that the hardware terms limited the asserted claims. The court pointed to Synchronoss’s own assertions to support this finding. Synchronoss had proposed the constructions including the hardware requirement and had agreed with the district court that a claimed device could not be “software completely detached from hardware.” Thus, the Federal Circuit affirmed on non-infringement.

The Federal Circuit also affirmed the district court’s decision that certain of Synchronoss’s asserted claims were indefinite under 35 U.S.C. § 112, ¶ 2 due to an impossibility in the claims and under 35 U.S.C. § 112, ¶ 6 due to a lack of adequate structure in the specification to perform the function of the “user identifier module” in the claims.

Editor: Paul Stewart