By Dropbox -, Public Domain,

Distributing Software Doesn’t Infringe a Patent Claim that Requires Hardware

Federal Circuit:
No infringement by Dropbox
If no hardware used

The Federal Circuit has held that a patent claim that requires hardware isn’t infringed by the distribution of software, standing alone.

Synchronoss Technologies, Inc. (“Synchronoss”) alleged that Dropbox, Inc. (“Dropbox”) infringed several of its patents.

For example,

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 engine, a second device or system that utilizes a second sync engine, and a data store. …

The ’696 patent … summarizes the claimed inventions as being drawn to a controller for a synchronization system that maintains matching records and data for a user across multiple networked devices. …

The ’446 patent describes a “method for transferring media data to a network coupled apparatus.”

The district court initially construed hardware-related terms that appear in all asserted claims, namely “system,” “device,” and “apparatus.”

Synchronoss suggested that a “device” was:

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.

Synchronoss disagreed with Dropbox’s proposed construction that limited the definition of a “device” to hardware devices.

The court noted that

Dropbox responded that the term “device” could not properly be construed to exclude hardware…

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.

The court agreed with Dropbox that the claims could not cover software in the absence of hardware.

Dropbox sought summary judgment on the basis that two of the patents were not infringed because the asserted claims, as construed, all required hardware, but Dropbox’s accused software didn’t meet that requirement.

The court ruled in favor of Dropbox and Synchronoss appealed, arguing that the district court erred in concluding that the asserted claims required hardware:

Synchronoss specifically contends that the asserted claims—as construed by Synchronoss—recite hardware not as a claim limitation, but merely as a reference to the “location for the software,” … or “the environment in which software operates…

The Federal Circuit concluded

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.” … The conclusion that the “hardware” term limits the claim scope is thus consistent with both Synchronoss’s own assertions and the record evidence.

The court noted that Dropbox provided its customers with software that they could download, but not with any hardware.

The court found:

Because Dropbox 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.

The court noted the principle stated in the 2000 Federal Circuit case of Rotec Indus., Inc. v. Mitsubishi Corp. that “[O]ne may not be held liable under § 271(a) for ‘making’ or ‘selling’ less than a complete invention.”

35 U.S. Code § 271 governs the infringement of patents, and section (a) states that

whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

Thus, the Federal Circuit affirmed the lower court’s ruling.


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