June 30, 2020

Federal Circuit: Purported Technological Solution Must be Claimed to Survive a Section 101 Inquiry

Holland & Knight Section 101 Blog
Anthony J. Fuga
Section 101 Blog

Dropbox and its subsidiary asserted three patents against Synchronoss Technologies related to "Secure Delivery of Information in a Network," "File Upload Synchronization" and a "System and Method for Personal Data Backup for Mobile Customer Premises Equipment." Synchronoss moved to dismiss the claims, arguing that all three patents were invalid due to their ineligibility under Section 101.

The U.S. District Court for the Northern District of California agreed with Synchronoss. Dropbox appealed, and the U.S. Court of Appeals for the Federal Circuit addressed all three patents in turn.

Patent 1: Secure Delivery of Information in a Network

For the Secure Delivery patent, the federal circuit agreed with the district court that the representative claim was directed to "(1) associating a security level with a data resource, (2) associating a security level with a mode of identification of a user, and then (3) ensuring that the user's security level is sufficiently high to meet the security level of the data resource to access the data resource." This constituted an abstract idea. Both courts agreed that the claim did not provide any limits that curb how the apparatus performed the functions and, instead, invoked computers to execute data access control principles.

The claimed advance was an "access checker" or an "access filter," but this offered nothing but "a functional abstraction." "The specification – which refers not to an 'access checker,' but to an 'access filter' to perform access checking – does little to instead define this abstraction as a technological solution. Instead, the specification largely treats the 'access filter' as a black box."

To the extent there were technical aspects, they were only discussed in the patent specification as non-limiting embodiments. While Dropbox focused on a passage in the specification that asserted solving a technological problem, the federal circuit rejected the argument: "But that is not enough. The patent has to describe how to solve the problem in a manner that encompasses something more than the principle in the abstract."

At step two of the Alice inquiry, the court rejected Dropbox's argument that there was any inventive concept. "The claims recite the application of an abstract idea using conventional and well-understood techniques specified in broad, functional language." The court affirmed that this patent was invalid as ineligible under Section 101.

Patent 2: File Upload Synchronization

The district court found the second asserted patent to be directed to combining a user-friendly website interface with a file upload connection so that users who are not tech-savvy can easily upload data to a service provider. The federal circuit agreed, because any alleged improvements are claimed in an abstract manner. "Software inventions must make non-abstract improvements to existing technological processes and computer technology."

To claim a technological solution to a technological problem, the patent must actually claim the technological solution.

Similar to the first asserted patent, the federal circuit found that the claims recited a functional result of the claimed abstraction. Even if the patent provided meaningful detail, "a specification full of technical details about a physical invention may nonetheless conclude with claims that claim nothing more than the broad law or abstract idea underlying the claims, thus preempting all use of that law or idea." The claims did not recite an inventive concept, and the court affirmed that this patent was also invalid.

Patent 3: System and Method for Personal Data Backup

The federal circuit found the third patent to also be directed to an abstract idea: While the claim "may allow wireless backup of cellphone data, the claim provides less of a specific means or method than a result or effect that itself is the abstract idea and merely invokes generic processes and machinery."

Dropbox argued that the combination of tagging and remote synchronization steps yielded an inventive concept, but the patent taught that these two concepts were routine. As for the specific combination, the alleged inventive combination was not recited in the claims. "To save a patent at step two, an inventive concept must be evident in the claims." The third asserted patent was also affirmed to be invalid under Section 101.

Factual Allegations

Dropbox argued for all three patents that it pled sufficient factual allegations of an inventive concept to defeat the motion to dismiss. The federal circuit agreed with the district court that Dropbox presented no specific factual allegations to save the patents at the Rule 12 stage. Instead, the allegations in the complaint merely restated the claim elements and appended a conclusory statement. Courts are "not bound to accept as true a legal conclusion couched as a factual allegation" and these sorts "of conclusory pleadings are insufficient to survive a motion to dismiss."

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