Synchronoss Technologies v. Dropbox Inc

Filing 168

CLAIM CONSTRUCTION ORDER re (84 in 4:16-cv-00120-HSG and 144 in 4:16-cv-00119-HSG). Case Management Statement due by 1/2/2018; Further Case Management Conference set for 1/9/2018 02:00 PM.. Signed by Judge Haywood S. Gilliam, Jr. on 12/7/2017. (ndrS, COURT STAFF) (Filed on 12/7/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SYNCHRONOSS TECHNOLOGIES, INC.,
Plaintiff,

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Re: Dkt. No. 144

v.

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DROPBOX INC., et al.,
Defendants.

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United States District Court
Northern District of California

Case No. 16-cv-00119-HSG

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SYNCHRONOSS TECHNOLOGIES, INC.,

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Plaintiff,

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Case No. 16-cv-00120-HSG
Re: Dkt. No. 84

v.

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EGNYTE, INC.,

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CLAIM CONSTRUCTION ORDER

Defendant.

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Plaintiff Synchronoss Technologies, Inc. (“Synchronoss”) filed related actions against

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Defendants Dropbox, Inc. (“Dropbox”) and Egnyte, Inc. (“Egnyte”), alleging infringement of

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United States Patent Nos. 6,671,757 (“the ’757 Patent”); 6,757,696 (“the ’696 Patent”); and

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7,587,446 (“the ’446 Patent”) (collectively, “the Asserted Patents”). See Dkt. No. 1 (“Compl.”).1

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The parties propose ten groupings comprising 23 claim terms for construction. See Dkt. No. 154-

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2 (“Amended Joint Claim Construction and Prehearing Statement (JCCS)”) at 2–3.2 Id. This

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Unless otherwise specified, all docket references are to Synchronoss Technologies, Inc. v.
Dropbox Inc., et al., No. 4:16-cv-00119.
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Discrepancies exist between the parties’ briefs and the Amended JCCS in identifying claims
from the Asserted Patents associated with the terms proposed for construction. Any claim
references in this order reflect the Amended JCCS. The parties clarified at oral argument that the
Court need not construe the term “transaction identifier module assigning a universally unique
identifier to each user of transaction objects in said data store.” See Amended JCCS at 3; Hr’g Tr.
at 71:4-25, 72:1-5.

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order follows claim construction briefing,3 a technology tutorial, a claim construction hearing, and

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one round of supplemental claim construction briefing.

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I.

LEGAL STANDARD
Claim construction is a question of law to be determined by the Court. Markman v.

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Westview Instruments, Inc., 517 U.S. 370, 384 (1996). “The purpose of claim construction is to

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determine the meaning and scope of the patent claims asserted to be infringed.” O2 Micro Int’l

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Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (quotation omitted).
Generally, claim terms should be “given their ordinary and customary meaning”—i.e., “the

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meaning that the terms would have to a person of ordinary skill in the art at the time of the
invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (quotation

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United States District Court
Northern District of California

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omitted). There are only two circumstances where a claim is not entitled to its plain and ordinary

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meaning: “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when

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the patentee disavows the full scope of a claim term either in the specification or during

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prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
When construing claim terms, the Federal Circuit emphasizes the importance of intrinsic

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evidence such as the language of the claims themselves, the specification, and the prosecution

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history. Phillips, 415 F.3d at 1312–17. The claim language can “provide substantial guidance as

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to the meaning of particular claim terms,” both through the context in which the claim terms are

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used and by considering other claims in the same patent. Id. at 1314. The specification is likewise

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a crucial source of information. Id. at 1315–17. Although it is improper to read limitations from

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the specification into the claims, the specification is “the single best guide to the meaning of a

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disputed term.” Id. at 1315 (“[T]he specification is always highly relevant to the claim

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construction analysis. Usually, it is dispositive.” (quotation omitted)); see also Merck & Co. v.

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Teva Pharms. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003) (“[C]laims must be construed so as

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to be consistent with the specification . . .”).

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Egnyte and Dropbox advance virtually identical arguments in their respective responsive briefs.
See Dkt. No. 93, No. 4:16-cv-00120. Egnyte “amended its constructions and evidence in support
to conform completely to Dropbox’s proposed constructions and evidence.” Amended JCCS at 2.
The Court therefore refers to Dropbox’s brief on behalf of Defendants.
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Despite the importance of intrinsic evidence, courts may also consider extrinsic evidence—

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technical dictionaries, learned treatises, expert and inventor testimony, and the like—to help

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construe the claims. Phillips, 415 F.3d at 1317–18. For example, dictionaries may reveal what

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the ordinary and customary meaning of a term would have been to a person of ordinary skill in the

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art at the time of the invention. Frans Nooren Afdichtingssystemen B.V. v. Stopaq Amcorr

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Inc., 744 F.3d 715, 722 (Fed. Cir. 2014) (“Terms generally carry their ordinary and customary

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meaning in the relevant field at the relevant time, as shown by reliable sources such as

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dictionaries, but they always must be understood in the context of the whole document—in

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particular, the specification (along with the prosecution history, if pertinent).”). Expert testimony
can also help “to ensure that the court’s understanding of the technical aspects of the patent is

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United States District Court
Northern District of California

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consistent with that of a person of skill in the art, or to establish that a particular term in the patent

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or the prior art has a particular meaning in the pertinent field.” Phillips, 415 F.3d at 1318.

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Extrinsic evidence is, however, “less significant than the intrinsic record in determining the legally

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operative meaning of claim language.” Id. at 1317 (quotation omitted).

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II.

AGREED TERMS

The parties agree on the construction of sixteen terms within twelve groups. Amended JCCS,

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Ex. A. In light of the parties’ agreement, the Court adopts the constructions of these terms as set

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forth in the following table.

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Asserted Patent

Claim Term

Agreed Construction

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’757 Patent

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“sync engine” / “[first /
second] sync engine” / “device “software that transmits or receives
sync engine”
difference information”
[claims 1, 16, 24]

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’757 Patent

“information that comprises only the
changes to one system’s data which
have occurred on that system, and
instructions for implementing those
changes”

“difference information”
[claim 1]

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’757 Patent

“difference transaction” /
“change transaction”
[claim 1]

“the sending or receipt of difference
information”

’757 Patent

“difference transaction
generator”
[claims 1, 16, 24]

“software that compares a current state
of the data to a previous state of the data
to generate difference information, and
then places the difference information
into a difference transaction”

’757 Patent

“application specific format”
[claims 14, 28]

“format that is specific to a particular
program or application”

’757 Patent

“universal format”
[claim 14]
“application independent
format” [claim 28]

“format that is independent of a specific
program or application”

’696 Patent

“unique transaction identifier”
[claims 9, 16]

“identification value assigned to a
transaction that is unique within the
synchronization system”

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United States District Court
Northern District of California

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’696 Patent

“unique identification”
[claim 6]

“identification value that is unique
within the synchronization system”

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“change transactions”
[claims 9, 10]

“the sending or receipt of difference
information”

’446 Patent

“difference information”
[claims 1, 11]

“information that comprises only the
changes to one system’s data which have
occurred on that system, and instructions
for implementing those changes”

’446 Patent

“device engine”
[claim 11]

“software that transmits or receives
difference information”

’696 Patent

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’446 Patent

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“universal data format”
[claim 19]

“format that is independent of a specific
program or application”

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III.

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DISPUTED TERMS
A.

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“a previous state of said data” / “copy of a previous state of said data” (’757
Patent)

Synchronoss’s Construction

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“a previous version of the data or
previous information about the data
before the changes to the data occurred”

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Defendants’ Construction
“a copy of a previous version of the data that is
used in a comparison against a copy of the current
version of the data to generate difference
information”

United States District Court
Northern District of California

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The Court adopts Defendants’ construction.

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The parties dispute the scope of the terms to be construed. Synchronoss argues that the

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terms “a previous state of said data” and “copy of a previous state of said data” can include “data

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about the data being synchronized.” Dkt. No. 144 (“Op. Br.”) at 7 (citing ’757 Patent, 12:12-14).4

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Synchronoss’s construction consequently includes not just previous versions of the data to be

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copied, but also “information about the data being synchronized that would permit the device

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engine to determine if data has been updated and, if so, what data packages to update.” Id. at 8.

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Synchronoss primarily relies on the FusionOne Synchronization Platform Architecture Guide (v1)

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to support its construction. See id. at 7; Dkt. No. 143-5 (“the Architecture Guide”). Synchronoss

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characterizes the Architecture Guide as “contemporaneous architecture documentation from the

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original patentee” that sheds light on the specification. See Op. Br. at 7–8. Synchronoss relies on

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the Architecture Guide’s reference to hash values to argue that “a complete copy of the data” is

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not needed for a change comparison. Id. In addition, Synchronoss argues that Defendants’ use of

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the term “version” in their construction improperly conflates “version” with “state.” Id.

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Defendants contend that Synchronoss’s construction is overly broad. According to

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Defendants, it is the comparison of two versions of a file that generates the “differences,” and not

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Emphasis added unless otherwise noted.
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other “information about the file.” Dkt. No. 150 (“Resp. Br.”) at 2. To support their construction,

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Defendants rely on (1) the specification; and (2) an alleged contradiction between Synchronoss’s

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current position in this litigation and its statements in a recent inter partes review (“IPR”)

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proceeding. Id. at 2–3. In addition, Defendants argue that the Architecture Guide does not

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address how a person of ordinary skill in the art would understand the claim terms. Specifically,

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Defendants stress that the guide (1) was never made publicly available; (2) post-dates the relevant

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priority date by 4 years; and (3) at no point references the ’757 Patent. Id. at 4–6.
The Court adopts Defendants’ construction. That construction finds better support in the

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intrinsic record. The specification suggests that differencing information is generated by
comparing a prior version of the data against a more current version. See ’757 Patent, 12:18-21

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United States District Court
Northern District of California

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(“Delta module 9505 is a differencing engine which calculates differences in data between the

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output of the application object 910 and the copy of the data which is provided in an application

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object store (AOS) 920.”), 14:38-42 (“The device engine uses the local application object store

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920 to keep track of the last synchronized version of each application’s actual data, which is then

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used for the next data comparison by the delta module on the next sync request.”), 12:12-14

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(providing that the “application object store” “stores a snapshot of the previous state of the data

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from the application object 910 in the device engine”). The ’757 Patent does not indicate that

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differencing information is generated by using other data, beyond the previous version of that

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data. And the specification itself does not state that hash values are either used for comparison, or

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are part of the “previous state of said data.” The specification’s only reference to a “[h]ash”

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provides: “File items typically have the following additional field tags . . . Hash. . .” ’757 Patent,

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44:45-56. Defendants’ construction, moreover, does not improperly conflate “version” and

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“state,” as the specification uses these terms interchangeably. Compare ’757 Patent, 14:38-42

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(“The device engine uses the local application object store 920 to keep track of the last

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synchronized version of each application’s actual data, which is then used for the next data

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comparison by the delta module on the next sync request.”), with ’757 Patent, 12:12-14

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“Delta module 950,” “application object 910” and “application object store (AOS) 920”
correspond with the “Desktop Device Engine Diagram.” See ’757 Patent, Figure 9A.
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(“Application object store 920. . . stores a snapshot of the previous state of the data from the

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application object 910 in the device engine.”).6

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In addition, Synchronoss fails to effectively rebut Defendants’ critiques of the Architecture

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Guide. Synchronoss does not dispute that the Architecture Guide was developed almost four years

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after the ’757 Patent’s priority date. Rather, Synchronoss contends that it can properly rely on the

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Architecture Guide because that document was developed “approximately the same time” as the

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Asserted Patents. Dkt. No. 153 (“Reply”) at 1. But the authority that Synchronoss cites does not

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support that proposition. See Inverness Med. Switzerland GmbH v. Princeton Biomeditech Corp.,

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309 F.3d 1365, 1370 (Fed. Cir. 2002) (“We may look, therefore, to the dictionary definition of the
claim term ‘mobility’ as of the date the patents issued.”). In addition, Synchronoss does not

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United States District Court
Northern District of California

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expressly address Defendants’ argument that the Architecture Guide does not itself reference the

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’757 Patent, and has never been made publicly available. See Resp. Br. at 5–6; Markman, 52 F.3d

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at 986 (“[T]he focus in construing disputed terms in claim language is not the subjective intent of

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the parties . . . Rather the focus is on the objective test of what one of ordinary skill in the art at the

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time of the invention would have understood the term to mean.”). Synchronoss fails to provide

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other evidence supporting that the Architecture Guide is in any way linked to the ’757 Patent.

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B.

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“management server” / “management dedicated network coupled device” /
“synchronization agent management server” (’757 and ’696 Patent)

Synchronoss’s Construction

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“software or hardware component that
manages a user’s account”

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Defendants’ Construction
“a centralized server which controls behavior and
characteristics of the entire network of device
engines across all users”

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The Court adopts Defendants’ construction.

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Synchronoss admits that Defendants’ construction is taken “verbatim from the ’757

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Patent’s specification.” Op. Br. at 9. Consequently, “Synchronoss does not contend that

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Synchronoss’s characterization of differencing information in an IPR proceeding casts further
doubt on its proposed construction here. See Dkt. No. 150-2 (“Oral Arg. Tr.”) 21:15-23 (“[T]he
copy is of a previous state of the data. . . it would have to retain state A and then later on maybe
come back and do a comparison with the old version to see what changed. . .”), 22:3-9.
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Defendants’ proposed construction is incorrect, only that it is incomplete and confusing.” Id.

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Specifically, Synchronoss claims that the words “entire” and “all” in Defendants’ construction

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improperly import additional limitations into the specification. Id.; see Hr’g Tr. at 21:6-13. To

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support its construction, Synchronoss relies on (1) functional language from the specification, see

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’757 Patent, 17:30 (“a management server that manages users’ accounts”),’696 Patent, 16:50

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(same); and (2) the Architecture Guide and the FusionOne Synchronization Platform Operations

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Guide (“Operations Guide”), see Dkt No. 143-6. Op. Br. at 9. Defendants’ criticisms of the

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Architecture Guide apply to both documents. See Resp. Br. at 7. Even considering the FusionOne

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documents, those documents are not inconsistent with Defendants’ construction. See Op. Br. at 9–

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10 (quoting portions of a guide’s description of the management server).
As Synchronoss acknowledges, Defendants’ construction is taken directly from the

United States District Court
Northern District of California

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specification’s definition of a “management server.” See ’757 Patent, 32:38-40 (“The

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management server is a centralized server which controls behavior and characteristics of the entire

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network of device engines across all users.”); Martek Biosciences Corp. v. Nutrinova, Inc., 579

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F.3d 1363, 1380 (Fed. Cir. 2009) (“When a patentee explicitly defines a claim term in the patent

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specification, the patentee’s definition controls.”). In contrast, Synchronoss’s construction

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describes functions that a management server could perform. The words “entire” and “all” are,

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moreover, not inconsistent with the claim language relied upon by Synchronoss. See Hr’g Tr. at

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24:4-12; ’757 Patent, 47:34-37 (indicating that the management server “authorizes access of

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difference information on the data store by the first and second sync engines”). For instance,

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claim 15 of the ’757 Patent expressly provides that the “apparatus of claim 1,” i.e. the system for

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synchronizing data between a first and a second system, could include “a plurality of sync engines

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on a respective plurality of systems, each of said plurality of engines being coupled to receive

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difference information. . .” ’757 Patent, 46:58-59, 47:56-67. More broadly, Synchronoss admits

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that any difference between the parties’ proposed constructions is immaterial to the claim’s

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construction. See Reply at 2 (“[T]he proposed constructions are effectively a difference without a

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distinction.”).

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///
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C.

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United States District Court
Northern District of California

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“[first / second] system” / “[first / second] device” / “device[s]” / “network
coupled device[s]”/ “network coupled apparatus[es]” (’757 Patent, ’696 Patent,
’446 Patent)
Synchronoss’s Construction

“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”

Defendants’ Construction

Plain and ordinary meaning –
“computer or computing device such as a
personal computer, portable computer, desktop
computer, server, smart telephone, cellular
telephone, standard telephone, or personal data
assistant (PDA)”

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The Court adopts Plaintiff’s construction.

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Synchronoss argues that the patentee acted as a lexicographer in defining the disputed

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terms. See Op. Br. at 11. Synchronoss accordingly highlights the ’757 Patent’s definition of

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“device”:

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[A] ‘device’ is defined as 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.

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’757 Patent, 5:14-23. Synchronoss emphasizes that the ’696 Patent, 4:28-36, defines device

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identically, and that the ’446 Patent, 1:8-11, incorporates the ’757 Patent in its entirety.

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Synchronoss argues that Defendants’ construction is “not incorrect, but incomplete to the extent

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that it limits the definition to hardware devices.” Op. Br. at 11. Defendants do not dispute that the

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Asserted Patents define “device” as set forth by Synchronoss. Resp. Br. at 8–9. Rather,

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Defendants contend that Synchronoss’s construction is flawed because (1) the Asserted Patents do

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not define any grouped terms other than “device” (i.e. “system,” “network coupled device,” or

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“network coupled apparatus”); (2) the ’757 Patent’s discrete use of each term in this grouping
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suggests that their meanings are distinct; and (3) stand-alone software cannot be “coupled” to the

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internet, which favors limiting these terms’ application to hardware components or elements. See

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id.

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The Court adopts Synchronoss’s construction, which finds express support in the

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specification. See Thorner, 669 F.3d at 1365 (holding that a claim is not entitled to its plain and

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ordinary meaning when the patentee acts as his or her own lexicographer); Vitronics Corp. v.

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Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). To the extent that the specification does

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not expressly define terms in this grouping apart from “device”, the parties themselves agree that

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the grouped terms “present identical issues. . . [and] may be considered a single term” for
purposes of claim construction. Standing Order for Patent Cases ¶ 5. Adopting Defendants’

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United States District Court
Northern District of California

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construction would, moreover, not resolve this issue: like Plaintiff, Defendants offer one

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construction for every term in this group. Defendants’ third argument concerning stand-alone

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software does not apply here, as the Court understands the ’757 Patent’s use of the term

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“software” to reference software in combination with a hardware component or element. See

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Resp. Br. at 8; Hr’g Tr. at 30:7-9 (“[T]o the extent the [Court] understands that language to be

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software in combination with hardware, we think that’s . . . appropriate as a construction.”).

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D.

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“user identifier module” / “authentication module identifying a user coupled to
the synchronization system” / “user authenticator module” / “user login
authenticator” / “user data flow controller” (’696 Patent)

Synchronoss’s Construction

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Defendants’ Construction
The terms are subject to 35 U.S.C. § 112(6)

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user identifier module – “hardware or
software that identifies a user”

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authentication module identifying a user
coupled to the synchronization system –
“Identifying and authenticating a user coupled
to the synchronization system”

user authenticator module – “software that
verifies the authenticity of a user”

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Function:
user identifier module – “Identifying a user”7

authentication module identifying a user
coupled to the synchronization system –
“software that verifies a user’s access to the
synchronization system”

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user authenticator module – “Authenticating
users”

See infra n.9.
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3
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user login authenticator – “software that
authenticates a user’s log-in”

user login authenticator – “Authenticating
user logins”

user data flow controller – “software that
controls the transmission or reception of
change transactions”

user data flow controller – “Controlling the
flow of user data in the synchronization
system”

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Structure: No corresponding structure is
disclosed in the specification for each claimed
function

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The Court finds that the terms are indefinite under 35 U.S.C. § 112(6).

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The parties’ dispute turns on two inquiries: (1) whether these terms are means-plusfunction terms under 35 U.S.C. § 112(6); and if so, (2) whether the ’696 Patent identifies

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United States District Court
Northern District of California

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sufficient structure such that the claim terms survive as definite under section 112.

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To determine whether a claim invokes section 112, the Court must determine if the claim

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limitation is drafted in the means-plus-function format. “The use of the term ‘means’ triggers a

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rebuttable presumption that § 112, ¶ 6 governs the construction of the claim term.” Robert Bosch,

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LLC v. Snap-On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014). There is a general presumption that

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the limitation does not invoke 35 U.S.C. § 112(6) where the claim language does not recite the

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term “means.” Id. This presumption is not strong, and it is rebuttable. Williamson v. Citrix

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Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). “The standard is whether the words of the

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claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning

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as the name for structure.” Id. “When a claim term lacks the word ‘means,’ the presumption can

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be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails

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to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient

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structure for performing that function.”’ Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880

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(Fed. Cir. 2000)).

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The parties agree that the word “means” does not appear in the claim language. Instead,

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Defendants argue that “module” is a well-recognized nonce word equivalent to “means.” Resp.

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Br. at 15. Defendants identify two functions associated with the grouped terms: identifying users

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and authenticating users. Id. at 14. Defendants contend that the various prefixes associated with
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the term “module”—e.g. “user identifier,” “authentication,” and “user authenticator”—do not

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impart sufficient structure to take the claim terms outside section 112’s ambit. Id. at 15 (citing

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Williamson, 792 F.3d at 1351). Defendants argue that this analysis likewise applies to the non-

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“module” terms in this group, i.e. “user login authenticator” and “user data flow controller.” See

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id. at 16, 19–21.8
The Court agrees with Defendants. In Williamson, the Federal Circuit found that section

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112 applied to the claim term “distributed learning control module.” 792 F.3d at 1350. In so

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doing, the Williamson court remarked that “[m]odule is a well-known nonce word that can operate

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as a substitute for ‘means’ in the context of § 112, para.6.” See id. (affirming the district court’s

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finding that “‘module’ is simply a generic description for software or hardware that performs a

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United States District Court
Northern District of California

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specified function” (quotation omitted)). The Williamson court further opined that “[g]eneric

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terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more

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than verbal constructs may be used in a claim in a manner that is tantamount to using the words

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‘means’ because they typically do not connote sufficiently definite structure. . .” Id. (quotation

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omitted).
In concluding that section 112 likewise applies here, the Court finds persuasive

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Defendants’ expert, Dr. Freedman. Dr. Freedman opines that a person of ordinary skill in the art

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would understand these terms as reciting only authentication and/or identification functions, while

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“providing no structure for the purported ‘module’ that performs the function.” See Resp. Br. 14–

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16, 19; Dkt. No. 150-5 (“Freedman Decl.”) ¶¶ 39–44 (“user identifier module”), 49–53

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(“authentication module identifying a user coupled to the synchronization system”), 58–62 (“user

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authenticator module”). Dr. Freedman explains that the prefixes associated with Synchronoss’s

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constructions do not cure this structural void. See id. Dr. Freedman provides dozens of discrete

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ways a skilled artisan could understand hardware or software to authenticate and/or identify users,

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Synchronoss correctly observes that Dropbox separated its arguments regarding the term “user
data flow controller.” See Reply at 9 n.2. Synchronoss requests that the Court strike Defendants’
proposed construction of that term under the Court’s Standing Order for Patent Cases. The Court
declines to so do, as Defendants’ separate pagination in no way alters the parties’ arguments or
their constructions.
12

1

including for instance through “captive portal/web authentication” involving user authentication or

2

identification, identification via a “MAC” or “Internet Protocol” address, or through passwords or

3

passphrases, PIN codes, and/or multi-factor authentication. Id. Dr. Freedman also indicates that

4

that the terms “user login authenticator” and “user data flow controller” fail to name sufficient

5

structure. See id. ¶¶ 68–72, 78–82.

6

In response, Synchronoss offers no contrary expert testimony. Synchronoss instead relies

7

on (1) technical dictionaries to argue that each prefix is well understood in computer science; (2)

8

specification language that purportedly favors its interpretation, see, e.g., ’696 Patent, 34:1-2,

9

34:3-7; (3) district court cases finding that certain prefixes impart sufficient structure to “module”;
and (4) Dr. Freedman’s elaboration of “nearly 20 different structures” that can identify or

11
United States District Court
Northern District of California

10

authenticate users. See Op. Br. at 13–15.

12

Synchronoss’s arguments are unavailing. To begin, those Federal Circuit cases cited by

13

Synchronoss largely pre-date Williamson, and therefore do not assume Williamson’s tightening of

14

the means-plus-function presumption. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d

15

1580 (Fed. Cir. 1996); TecSec, Inc. v. IBM, 731 F.3d 1336 (Fed. Cir. 2013). While the court in

16

Williamson partly relied on Greenberg and TecSec, Synchronoss reads these cases so broadly as to

17

vitiate Williamson’s subsequent, more stringent holding. See Williamson, 792 F.3d at 1349

18

(overruling the characterization of the means-plus-function presumption as “strong,” partly

19

because the doctrine had “resulted in a proliferation of functional claiming”). Synchronoss’s

20

repurposing of Dr. Freedman’s testimony likewise fails because it relies on this pre-Williamson

21

view. See Reply at 5. Indeed, accepting Synchronoss’s argument that a “broad class of

22

structures” is sufficient for functional claiming contravenes Williamson’s understanding of

23

Congress’s intent in enacting section 112:

24
25
26
27
28

In enacting [section 112] Congress struck a balance in allowing
patentees to express a claim limitation by reciting a function to be
performed. . . while placing specific constraints on how such a
limitation is to be construed, namely, by restricting the scope of
coverage to only the structure, materials, or acts described in the
specification as corresponding to the claimed function and
equivalents thereof.
792 F.3d at 1347; see Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1317 (Fed. Cir. 2012) (“That
13

various methods might exist to perform a function is precisely why the disclosure of specific

2

programming is required.” (quotation omitted)). Synchronoss’s reliance on technical dictionary

3

definitions suffers from a similar flaw: nearly all claim terms would fall outside section 112 if

4

their component parts could be found in a technical dictionary. To the extent that Synchronoss

5

cites cases discussing the structural character of certain prefixes, see Op. Br. at 12–13; Reply at 6,

6

these cases are non-binding, distinguishable, and again mostly pre-date Williamson. See VPS,

7

LLC v. SmugMug, Inc., No. 10 CV 2142, 2012 WL 5471012, at *15–16 (N.D. Ill. Nov. 9, 2012)

8

(analyzing the term “user identifier,” which the parties agreed had “sufficient structural meaning

9

for a person of ordinary skill in the art”); Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-CV-03999-

10

BLF, 2014 WL 5361976, at *11 (N.D. Cal. Oct. 20, 2014) (deciding between discrete structural

11
United States District Court
Northern District of California

1

constructions for “certificate authenticator,” as the parties agreed this was a means-plus-function

12

term subject to section 112); Blast Motion, Inc. v. Zepp Labs, Inc., No. 15-CV-700 JLS (NLS),

13

2017 WL 476428, at *12–18 (S.D. Cal. Feb. 6, 2017) (finding that several “module’ terms”

14

survived under section 112 where the parties agreed that some disputed terms were sufficiently

15

structural, and the court found the specification disclosed adequate corresponding structure for

16

others).

17

Once section 112 applies, the Court’s analysis is two-fold. Williamson, 792 F.3d at 1351–

18

52. First, the Court identifies the claimed function. Id. Synchronoss does not dispute that these

19

functions are user identification and authentication. See Reply at 9; Resp. Br. at 17. Next, the

20

Court determines what structure, if any, is disclosed in the specification that corresponds to these

21

functions. Williamson, 792 F.3d at 1351–52. Even where structure is corresponding, it must also

22

constitute “adequate corresponding structure to achieve the claimed function.” Id. “If the

23

patentee fails to disclose adequate corresponding structure, the claim is indefinite.” Id.

24

Synchronoss argues that the proposed terms are not indefinite under section 112, relying

25

principally on (1) written description from the ’696 Patent; and (2) Figures 15–17 of that patent.

26

Op. Br. at 14–17; Reply at 9–10. With respect to the former, Synchronoss fails to show how the

27

lines of the specification that it quotes imbue structure to “user identifier,” “authentication,” and

28

“authenticator.” For instance, ’696 Patent, 34:1-2 reads: “[t]he device name and device class
14

1

uniquely identify a particular device type that is being synchronized. . .” See Op. Br. at 14. But

2

the device name identifies device types—not users. Synchronoss also cites ’696 Patent, 42:6-11:

3

“An account is the root structure, which identifies information about the user’s account. It may

4

have exemplary field tags . . . such as Name, Password, User-Name and Version.” Id. But this

5

reference to information identification falls within a discussion of how “[d]ata package objects”

6

are organized. ’696 Patent, 41:58-60. Whatever structure these lines of the specification disclose,

7

that structure is not structure corresponding to the terms proposed for construction. See

8

Williamson, 792 F.3d at 1352 (explaining that “structure” must be “corresponding structure,”

9

which is satisfied “if the intrinsic evidence clearly links or associates that structure to the function
recited in the claim”) (quotation omitted)). At best, these portions of the specification show that

11
United States District Court
Northern District of California

10

other components of the claimed invention perform the functions of authentication and

12

identification. See Keithley v. Homestore.com, Inc., 636 F. Supp. 2d 978, 993–95 (N.D. Cal.

13

2008) (finding that the specification did not sufficiently describe a structure to perform the

14

function of “updating” because the language relied upon by the plaintiff “simply describe[d] the

15

claimed function”). Synchronoss’s vague references at oral argument to “C++ source code”

16

likewise do not provide corresponding structure to the user authentication/identification functions.

17

See Hr’g Tr. at 32:7-25, 33:1-17, 34:5-14.

18

So too with Figures 15 and 16. Synchronoss contends that “Defendants, by their proposed

19

construction for ‘synchronization manager’ and ‘synchronization agent’ concede that Figures 15

20

and 16 show an algorithm that is structure.” Reply at 9; see Typhoon Touch Techs., Inc. v. Dell,

21

Inc., 659 F.3d 1376, 1384 (Fed. Cir. 2011) (“The usage ‘algorithm’ in computer systems has broad

22

meaning, for it encompasses in essence a series of instructions for the computer to follow. . .”

23

(quotation omitted)). Figure 15 “is a flow diagram illustrating a pull synchronization in

24

accordance with the system of the present invention.” ’696 Patent, 4:14-16. Figure 16 is “a flow

25

diagram illustrating a push synchronization in accordance with the system of present invention.”

26

’696 Patent, 4:17-19. The ’696 Patent itself does not equate the phrases “synchronization,”

27

“synchronization manager,” or “synchronization agent” with any of the “module” terms. These

28

flow diagrams, which correspond to two discrete claim terms, do not show an algorithm, i.e. a
15

1

step-by-step process, to perform the functions of identifying and authenticating users. See

2

Williamson, 792 F.3d at 1352–54 (holding that a graphic description of a “presenter display

3

interface” was not “an algorithm corresponding to the claimed ‘coordinating’ function”);

4

Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1334 (Fed. Cir. 2008)

5

(finding that a mathematical equation that “describe[d] an outcome, not a means for achieving that

6

outcome” failed to disclose structure); Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d

7

1361, 1365 (Fed. Cir. 2012) (concluding that no algorithm existed for the function of “controlling

8

the adjusting means” where the specification merely provid[ed] functional language” and lacked

9

“any step-by-step process” for performing that function).

10

Finally, Synchronoss elides that the “management server” is simply a “general purpose

United States District Court
Northern District of California

11

computer that can be programmed to perform various functions.” Resp. Br. at 12–13. The Federal

12

Circuit “has consistently required that the structure disclosed in the specification be more than

13

simply a general purpose computer or microprocessor,” requiring instead an algorithm to perform

14

the claimed function. Williamson, 792 F.3d at 1352; see Aristocrat Techs., 521 F.3d at 1333

15

(“Because general purpose computers can be programmed to perform very different tasks in very

16

different ways, simply disclosing a computer as the structure designated to perform a particular

17

function does not limit the scope of the claim to the corresponding structure, material, or acts that

18

perform the function. . .”). Dr. Freedman’s declaration sheds a final light on this issue; he notes an

19

absence of “any algorithmic structure” for these terms. Freedman Decl. ¶¶ 45, 54, 64, 74, 83.

20

Synchronoss relies on Figure 17 of the ’696 Patent as providing the requisite structure for

21

“user identifier module” and the “user data flow controller.” Op. Br. at 14; Reply at 9–10. Figure

22

17 “is a diagram of the management server architecture in accordance with the present invention.”

23

’696 Patent, 4:20-21. Synchronoss cites as structure that figure’s textual reference to an “add user

24

module 1712,” a “user log-in from the welcome screen at 1710,” and “the module for ‘confirm

25

account 1724.’” Op. Br. at 14–15; Reply at 9. But Synchronoss fails to explain, and Figure 17

26

does not show, how or by what process the claimed system (1) adds a user, (2) logs-in a user, or

27

(3) confirms an account. See Williamson, 792 F.3d at 1352. While Synchronoss contends that the

28

’696 Patent provides pseudo-code for performing the data flow implicit in the “user data flow
16

1

controller,” that code describes “pull synchronization” broadly. See Reply at 10 (citing ’696

2

Patent, 34:49-35:66); ’696 Patent, 34:44-45. This is not corresponding structure. Thus, the Court

3

concludes that the grouped terms are indefinite under section 112.9

4

E.

5
6

Synchronoss’s Construction

7

synchronization manager
communicating with at least one
interactive agent to control data
migration between a first network
coupled device and a second network
device – “software or hardware
component that manages a user’s
account and controls data migration
among network coupled devices in
communication with at least one
software that transmits or receives
change transactions to control data
migration between a first network
coupled device and a second network
coupled device”

8
9
10
11
United States District Court
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“synchronization manager communicating with at least one interactive agent to
control data migration between a first network coupled device and a second
network device” / “synchronization agent” (’696 Patent)

12
13
14
15
16

synchronization agent – “software that
generates or incorporates the change
transactions”

17
18

Defendants’ Construction
The terms are subject to 35 U.S.C. § 112(6)
Function:
synchronization manager communicating with
at least one interactive agent to control data
migration between a first network coupled
device and a second network device –
“Controlling data migration between a first
network coupled device and a second network
coupled device.”
synchronization agent – “Controlling the flow of
user data in the synchronization system”
Structure: “A hardware or software component
configured to perform the algorithm set forth in
Figures 15 and 16 of the ’696 Patent and the
corresponding text.”

19

The Court adopts Defendants’ construction.

20

The parties’ dispute whether the grouped terms are means-plus-function terms subject to

21

section 112. Synchronoss turns first to “synchronization manager communicating . . .”, and

22

requests that it be construed to incorporate its proposed construction of “management server.” See

23

Op. Br. at 8, 18 (construing “management server” as “software or hardware component that

24

manages a user’s account”). For support, Synchronoss relies on (1) claim language from the ’757

25

and ’696 Patents suggesting that both the “synchronization manager” and “a management server”

26
9

27
28

At oral argument, Synchronoss disputed Defendants’ pluralization of the term “user.” Hr’g Tr. at
38:20-39:10. Defendants’ use of “user” does not impact the Court’s reasoning or its conclusion.
See id. Even still, Defendants modified their construction at the hearing to “identifying a user.”
Hr’g Tr. at 41:16-20. This order thus reflects that modification.
17

1

communicate with agents and/or devices; and (2) the Architecture Guide, which refers to both

2

“server managers” and the “Management Server.” See id. at 18.

3

The Court finds that Synchronoss’s construction lacks support in the intrinsic record. The

4

’696 Patent does not expressly equate “management server” with the term as articulated here:

5

“synchronization manager communicating with at least one interactive agent to control data

6

migration between a first network coupled device and a second network device.” See Hemslderfer

7

v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008) (“[D]ifferent claim terms

8

are presumed to have different meanings.”). To be sure, the abstract of the ’696 Patent states that

9

“[t]he management server communicates with at least one interactive agent to control data
migration between a computer to a network storage device.” But Synchronoss fails to explain

11
United States District Court
Northern District of California

10

how a person skilled in the art would derive from that written description sufficient structure for

12

the term “synchronization manager communicating. . .” The claim term merely describes a

13

function the synchronization manager could perform, which is insufficient to show structure under

14

section 112. See, e.g., Williamson, 792 F.3d at 1350–52; Ergo Licensing, LLC, 673 F.3d at 1365.

15

For the reasons discussed above, the Architecture Guide does not shed light on the claim terms as

16

used in the ’696 Patent.

17

The Court likewise finds persuasive Dr. Freedman’s testimony on this term. As Dr.

18

Freedman opines, the word “synchronization” does not impart sufficient specific structure to the

19

words “manager” or “agent,” which a person of ordinary skill would understand to be “generic

20

descriptors for software or hardware that perform a specified function, or manage something,

21

respectively.” Freedman Decl. ¶¶ 103–104. There are, moreover, “many ways in which a system

22

could control data migration between devices,” including though a single computer process

23

involving “logic to dispatch data between code modules within the same program,” or by using “a

24

locking mechanism to prevent multiple users from accessing and modifying the same data at the

25

same time.” See id. ¶ 106 (providing additional examples). Defendants, relying on Dr.

26

Freedman’s testimony, argue that the term itself discloses the function of “controlling data

27

migration between a first network coupled device and a second network coupled device.” Id. ¶

28

108; see Resp. Br. at 25. Synchronoss does not dispute that claimed function. See Reply at 10–
18

1
2

11. The Court agrees, and therefore adopts Defendants’ construction.
With respect to the term “synchronization agent,” Synchronoss argues that the term

3

“agent” is understood by skilled artisans to mean “the managed nodes in a network.” Op. Br. at

4

19. Synchronoss accordingly asserts that “these nodes are the device engines that transmit or

5

receive the change logs / difference information from the devices.” Id. at 19–20 (citing ’696

6

Patent, 13:28-38, 13:40-43). Synchronoss therefore contends that the Court should construe this

7

term analogously to “sync engine.” Id. The parties have agreed to construe “sync engine” as

8

“software that transmits or receives difference information.” See Amended JCCS, Ex. A.

9

The Court rejects Synchronoss’s construction of “synchronization agent.” Synchronoss
again sidesteps the question of whether a person of ordinary skill in the art would understand

11
United States District Court
Northern District of California

10

“synchronization agent” as a name for structure—and in particular, structure corresponding to the

12

parties’ agreed construction of “sync engine.” See Hemslderfer, 527 F.3d at 1382. Synchronoss

13

fails to explain how the agent “generates or incorporates” change transactions, which Dr.

14

Freedman opines can be completed in many ways. Freedman Decl. ¶¶ 112–114. As far as

15

function, Plaintiff’s construction of “synchronization manger controlling. . .” is inclusive of the

16

synchronization agent’s role of transmitting or receiving change transactions. Plaintiff

17

acknowledges, moreover, that these disclosed functions are the same functions that device engines

18

perform. See Op. Br. 19 (“These nodes are the device engines that transmit or receive the change

19

logs / difference information from the devices.”). Defendants’ identification of function is not

20

inconsistent with that understanding. See Freedman Decl. ¶ 117. Finally, the Court finds it

21

appropriate to adopt Defendants’ proposed structure, which is supported by the language of the

22

specification.

23
24

F.

“versioning modules” / “versioning information” (’696 Patent)
Synchronoss’s Construction

25
26
27
28

versioning modules – “software that applies
versioning information to objects in a
change transaction”

Defendants’ Construction
versioning modules –
The term is subject to 35 U.S.C. § 112(6)
Function: “Applying a version number per
object in the data package”
19

1

versioning information – “information
about modifications to data”

2
3
4
5
6

Structure: “A hardware or software
component configured to identify a DataPack
file using specific rules based on the file name.
The file name is of the form ‘UUID.VER’
where UUID is the identifier for the specific
object and VER is the transaction version
number. The version number is of the form
‘D0001’ with additional digits used for large
version numbers. The ‘D000’ value may be
reserved for the base version for the object.”

7
versioning information – “A unique version
number applied per object in the data package
using specific rules based on the file name.
The file name is of the form ‘UUID.VER’
where UUID is the identifier for the specific
object and VER is the transaction version
number. The version number is of the form
‘D0001’ with additional digits used for large
version numbers. The ‘D000’ value may be
reserved for the base version for the object.”

8
9
10

United States District Court
Northern District of California

11
12
13
14

The Court adopts Defendants’ construction.

15

The dispute here parallels other “module” terms. Synchronoss relies for its construction

16

on: (1) technical dictionary definitions of the words “version” and “information,” arguing that

17

these terms are “well understood in the art”; (2) specification language that it identifies as

18

providing structure to “versioning module”; (3) district court cases finding that “communications

19

module” and “data storage” module are structural terms; and (4) Dr. Freedman’s statement that

20

versioning can be accomplished through “approximately 17 structural ways.” See Op. Br. at 21–

21

23. Synchronoss also argues that Defendants improperly attempt “to import an embodiment

22

disclosed in the specification into the construction” by assigning a version number in a particular

23

format, “U0001.” Op. Br. at 22.

24

The Court is not persuaded. To begin, that a technical dictionary defines one word in the

25

claim term is not dispositive of structure under Williamson, 792 F.3d at 1351–52. The

26

specification also fails to show that “versioning” is a name for structure corresponding to

27

“versioning module.” Rather, the written description articulates the function identified by

28

Defendants: “versioning module. . . applies a version number per object in the data package.” See
20

1

’696 Patent, 12:10-12 (“Device engine 860 includes a versioning module which applies a version

2

number per object in the data package.”), 13:3-27 (discussing how the versioning module allows

3

“multiple users accessing the same machine to each synchronize their own data set using the same

4

device engine”). Synchronoss does not explain how one of ordinary skill in the art would

5

understand the specification’s “exemplary pseudo-code” as corresponding structure. Op. Br. at 22

6

(citing ’696 Patent, 40:55-63). Rather, the pseudo-code illustrates how the “data package

7

transaction format may take a number of forms.” ’696 Patent, 40:55-56. That is consistent with

8

Defendants’ identification of function.

9

Furthermore, Dr. Freedman’s testimony supports that the “version[ing]” prefix is not a
name for structure, but rather describes a function. He explains that there are various structural

11
United States District Court
Northern District of California

10

choices available when applying “versioning” information, including by (1) generating and

12

assigning version numbers sequentially or at random; (2) assigning uniqueness globally or limiting

13

it to the scope of a “user, object, file, or directory”; (3) assigning versioning information in a

14

“linear fashion,” or having it “track the same tree structure of the shared data”; or (4) formatting

15

differently the version values by assigning numbers, “strings, hexadecimal values, or some other

16

data types, including arrays of multiple values (e.g. ‘version vectors’).” Freedman Decl. ¶ 98. In

17

rebutting Dr. Freedman’s testimony, Synchronoss again relies on inapposite, pre-Williamson case

18

law. See Op. Br. at 22–23; supra Part III.D. The Court therefore adopts Defendants’ functional

19

construction.

20

Having identified function, the Court looks to whether there is adequate corresponding

21

structure. Defendants admit that a person of ordinary skill would associate some structure from

22

the specification as corresponding with the function of applying a version number. See Freedman

23

Decl. ¶ 101. Dr. Freedman explains that Defendants’ structural construction “corresponds to the

24

claimed function of applying version numbers, because it describes the format of the version

25

numbers that are assigned to each object.” Id. The Court finds that the specification supports

26

Defendants’ identification of structure. See ’696 Patent, 38:48-54 (describing how “[a] DataPack

27

file is identified using specific rules based on the file name”).

28

Contrary to Synchronoss’s claim, Defendants’ construction of “versioning information”
21

1

does not improperly limit that term to one disclosed embodiment. The specification itself does not

2

show that Defendants’ construction incorporates an embodiment of the claimed invention. Rather,

3

the specification situates versioning information within a broader structural explanation of the

4

DataPack. See ’696 Patent, 37:62-65, 38:3-7 (“The general architecture of the package provides

5

for transactions, application data, file data, files, objects and identifiers to be carried in the data

6

package.”). As Defendants explained at oral argument, versioning information logically

7

comprises an output of the versioning module. Hr’g Tr. at 65:17-66:10. To that end, Defendants

8

also accounted for how their constructions comport with the exemplary pseudo-code relied on by

9

Plaintiff. See id. at 65:5-10, 67:8-68:4; Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d
1295, 1300 (Fed. Cir. 2004) (“Even when guidance is not provided in explicit definitional format,

11
United States District Court
Northern District of California

10

the specification may define claim terms ‘by implication’ such that the meaning may be found in

12

or ascertained by a reading of the patent documents.” (quotation omitted)). Thus, the Court also

13

adopts Defendants’ construction of the term “versioning information.”

14
15

G.

“transaction identifier module” (’696 Patent)
Synchronoss’s Construction

16

The term is subject to 35 U.S.C. § 112(6)

17
18
19
20

Defendants’ Construction

“software for identifying a transaction”

Function: “Identifying transactions in the
synchronization system”
Structure: None identified in the
specification

21

The Court finds that the term is indefinite under 35 U.S.C. § 112(6).

22

The parties’ arguments track those concerning other terms Defendants argue to be means-

23

plus-function terms. Synchronoss relies on (1) the district court cases discussed in Part III.D; (2)

24

technical dictionary definitions of “transaction,” “transaction_ID,” “identifier,” and “module,”

25

arguing that these terms are well understood in the art; (3) written descriptions from the

26

specification; and (4) Dr. Freedman’s statement that a transaction could be identified through

27

“approximately 15 different structures.” See Op. Br. at 23–25.

28

The Court concludes that section 112 applies. Definitions of “transaction,” “identifier,”
22

1

and “module” do not shed light on how a person of ordinary skill might understand the phrase

2

“transaction identifier module.” See Freedman Decl. ¶¶ 86–88; Aguayo v. Universal Instruments

3

Corp., No. CIV.A. H-02-1747, 2003 WL 25787593, at *14 (S.D. Tex. June 9, 2003) (holding that

4

section 112 applied where technical dictionaries did not define the entirety of the claim term

5

“component identifier,” that phrase was worded in “functional terms,” and the plaintiff’s expert

6

declared he was “unaware of any structures” bearing the name “component identifier”).

7

Synchronoss, moreover, fails to explain how the cited descriptions in the specification impart

8

corresponding structure to this term. See ’696 Patent, 45:49-56 (“[A] management server

9

communicating with said network coupled devices and the storage server, including a transaction
identifier and a user authenticator.”), 38:48-54 (describing how a “DataPack file is identified using

11
United States District Court
Northern District of California

10

specific rules based on the file name”), 37:62-63 (“A DataPack essentially contains a sequence of

12

transactions describing the changes to information.”), 38:3-9 (indicating that the “general

13

architecture of the DataPack” provides for “transactions”). These snippets of the specification

14

show, at best, corresponding structure for the DataPack. The specification does not establish the

15

requisite link between any structure inherent to the DataPack and the “transaction identifier

16

module.” See, e.g., Williamson, 792 F.3d 1350–52.

17

Dr. Freedman similarly opines that “the very function of identifying transactions is not

18

standardized in the field of computer technology. Thus, a person of ordinary skill would not be

19

able to discern any structure from the mere reference to a ‘transaction identifier module’. . .”

20

Freedman Decl. ¶¶ 88–91. Dr. Freedman then lists over a dozen different ways of identifying a

21

transaction. Id. For the reasons discussed in Part III.D, the Court finds unconvincing

22

Synchronoss’s repurposing of Dr. Freedman’s declaration. See Op. Br. at 24–25. Plaintiff’s

23

construction, moreover, coheres with Defendants’ understanding that the “transaction identifier

24

module” identifies transactions. See Freedman Decl. ¶ 91. As for structure, Synchronoss does not

25

identify any algorithm corresponding to this module. Dr. Freedman notes the absence of

26

algorithmic structure:

27
28

Nowhere in the specification is there any algorithmic structure for
implementing the function of identifying transactions—no formula,
prose, flow chart or pseudocode. Nor is there any other structural
23

1

guidance. The specification does discuss transactions in the context
of data package files, see ’696 patent at 37:62-38:46, but it does not
explain how those transactions are assigned identifiers or how they
are identified within the synchronization system.

2
3
4
5
6

Id. ¶ 92. The Court agrees, and finds the term indefinite for lack of structure.
H.

“universally unique identifier” (’696 Patent)
Synchronoss’s Construction

7
8
9

“A unique 128 bit value which may be
assigned by the system provider”

Defendants’ Construction
“128-bit value consisting of 16 octets that
guarantees uniqueness across space and time
and is standardized by the Open Software
Foundation”

10

United States District Court
Northern District of California

11

The Court adopts Plaintiff’s construction.

12

Synchronoss argues that the patentee has acted as a lexicographer to define the term

13

“universally unique identifier.” Op. Br. at 25. Synchronoss cites the ’696 Patent specification at

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38:34-35, which provides: “Each UUID has a unique 128 bit value which may be assigned by the

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system provider.” The cited text mirrors Synchronoss’s proposed construction. Synchronoss

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contends that Defendants attempt to improperly import limitations into the claim language. Op.

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Br. at 26. For instance, Synchronoss offers an example of a non-Open Software Foundation

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UUID, an ITU-T generated UUID. Id.

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Defendants do not dispute that Synchronoss’s construction describes a universally unique

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identifier, but instead contend that Synchronoss’s construction is not sufficiently specific. Resp.

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Br. at 26–27. Defendants argue that Plaintiff’s construction elides well-known and defining

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features of a UUID that their construction captures—for instance, a guarantee of universal

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uniqueness. Id.; see Freedman Decl. ¶¶ 29–37. Defendants also rely on language from the

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specification that refers to a “128-bit UUID as defined by standard” or a “UUID standard.” See

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Resp. Br. 26 (citing ’696 Patent, 41:7-9, 43:41-42). Finally, Defendants argue that Synchronoss’s

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citation to non-Open Software Foundation UUIDs is misplaced because the UUID standard

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“contemplates alternative methods of generating a UUID.” Id. at 27–28.

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The Court adopts Synchronoss’s construction, which finds express support in the
24

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specification. Thorner, 669 F.3d at 1365. In contrast, Defendants’ construction would require the

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Court to import extrinsic limitations into the specification. See Phillips, 415 F.3d at 1312–13.

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While hypothetical, Defendants indicate that there may some circumstance where a UUID is not

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universally unique. Resp. Br. at 27. Synchronoss’s construction also does not write-out UUID’s

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uniqueness. That construction states, for instance, that a 128-bit value must be “unique.”

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I.

“digital media file” (’446 Patent)
Synchronoss’s Construction

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plain and ordinary meaning– “a file
comprising digital media content”

Defendants’ Construction
plain and ordinary meaning – “digital audio
or video content in the form of an individual
file such as an MPEG, MP3, RealAudio, or
Liquid Audio file”

United States District Court
Northern District of California

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The Court adopts Defendants’ construction modified as follows: “digital audio or

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video content in the form of a file such as an MPEG, MP3, RealAudio, or Liquid Audio file.”

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This dispute concerns the plain and ordinary meaning of “digital media file.” Synchronoss

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argues that a proper construction of “digital media file” includes text files and digital images in

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addition to audio and video content. Op. Br. at 26–27. In addition, Synchronoss takes issue with

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Defendants’ insertion of “individual” in front of “file,” contending that this contradicts the

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specification and the patentee’s intent. Id. In response, Defendants distinguish the phrase “digital

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media content” from “digital media file.” Resp. Br. at 28. Defendants argue that the word

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“individual” connotes “a discrete complete media file” as opposed to “any file that happens to

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contain some media data.” Id. at 28 n.1. Both sides cite the specification as supporting their

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interpretation.

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The Court ordered supplemental submissions on this issue following oral argument, as the

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parties initially failed to address how a person skilled in the art would interpret the term “digital

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media file.” See Phillips, 415 F.3d at 1312–13; Hr’g Tr. at 84:3-6, 90:9-23. The parties

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subsequently filed supplemental declarations. See Dkt. No. 166 (“Alpaugh Decl.”); Dkt. No. 167

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(“Freedman Suppl. Decl.”); see also No. 16-cv-00120, Dkt. No. 100 at 1 (stating that “Egnyte

28

takes the position set forth by Dropbox”). Synchronoss’s expert, Mr. Christopher Alpaugh, speaks
25

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primarily to the phrase “digital media,” emphasizing its considerable breadth. See Alpaugh Decl.

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¶¶ 18–33. Mr. Alpaugh relies on technical dictionaries, journal articles, and other patents that

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discretely define the words “digital,” “media,” and sometimes “digital media.” See id. These

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terms, however, are distinct from the composite term to be construed: “digital media file.” Partly

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as a result, Plaintiff elides the key inquiry: whether a person of ordinary skill in the art would

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understand the term “digital media file” to include files primarily comprising text, e.g. word

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processing documents, or whether that term refers instead to audio and video files that tangentially

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contain text, e.g. the name of a song or title of a video. See Hr’g Tr. at 81:2-9.
Dr. Freedman’s declaration, in contrast, directly responds to this inquiry. See Freedman

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Suppl. Decl. ¶ 4. Dr. Freedman explains how “Synchronoss’s proposed construction would

11
United States District Court
Northern District of California

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encompass any type of file that happens to contain some digital media content,” contravening the

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ordinary meaning of “digital media file” to a person skilled in the art. Id. ¶¶ 4–5 (“But a person of

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ordinary skill would not consider a Microsoft Word document or PowerPoint presentation that

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happens to contain an embedded video to be a digital media file.”). Dr. Freedman continues that a

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person of ordinary skill would understand a “digital media file” to contain “primarily digital

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media, which is an encoded representation of analog audio and/or video input.” Id. ¶ 5.
The Court finds that the specification supports Defendants’ position. Not only does the

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’446 Patent refer to digital media content as audio and video, but it also distinguishes between

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“digital music files” and other kinds of “data files” such as “documents.” See ’446 Patent, 1:43-44

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(“[D]igital media content can comprise a series of files such as MPEG, MP3, RealAudio, and the

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like. . .”), 3:21-26 (“Digital media comes in many forms. Two of the most common are Moving

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Picture Experts Group (MPEG 1, Audio 25 Level3 or ‘MP3’) encoded format and Liquid Audio

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format.”), 9:8-13 (“One example of media information which may be provided into personal

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information space is to utilize the aforementioned system on a public information server which

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allows transference of data files, such as executables, documents, or digital music files

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(MP3’s)”).10

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10

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There is no dispute that the listed types of files are illustrative examples, and that other types of
digital media files are not categorically excluded. See Hr’g Tr. at 83:1-21, 88:9-25, 89:5-90:8. At
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And yet, Dr. Freedman does not defend Dropbox’s placement of the word “individual” in

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front of “digital media file.” Defendants do not offer any other evidence to show that a person of

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ordinary skill in the art would understand a “digital media file” to necessarily be an “individual”

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file, as opposed to a part or portion of a file. The Court nevertheless finds that it can omit the

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word “individual” from Defendants’ construction without altering the substantive meaning of the

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phrase “digital media file.” See Alpaugh Decl. ¶ 16 (noting that “the formatting of the file is a

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separate issue from the term digital media file”); Resp. Br. at 28 n.2 (clarifying that the term

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“individual” “simply emphasizes that a ‘digital media file’ is a discrete, complete media file like

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an MP3 or JPEG, not any file that happens to contain some media data”). Removing the word

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United States District Court
Northern District of California

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“individual” resolves Synchronoss’s objection to Defendants’ use of that term.
J.

“web browser” (’446 Patent)

Synchronoss’s Construction
“a software application that allows a user
access to an information store on the World
Wide Web”

Defendants’ Construction
“software application, such as Microsoft
Internet Explorer, for viewing and interacting
with web pages on the World Wide Web”

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The Court adopts Defendants’ construction modified as follows: “software

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application for viewing and interacting with web pages on the World Wide Web.”

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The dispute here turns on two issues: (1) Synchronoss’s use of the words “information

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store”; and (2) Defendants’ inclusion of the exemplar “Microsoft Internet Explorer.” In support of

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its construction, Synchronoss cites to the specification’s express reference to an “information

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store.” See Op. Br. at 28–29; ’446 Patent, 7:52-54 (“In FIG. 3, a user 550 interacts with, for

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example, a browser application 100, such as a World Wide Web browser, which allows the user

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access to an information store.”). Synchronoss also takes issue with the phrase “Microsoft

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Internet Explorer,” arguing that this exemplar (1) will confuse the jury; and (2) contradicts Figure

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2 of the ’446 Patent. See id. Synchronoss claims that this figure distinguishes between a “web

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browser” and an Internet Explorer application. See id.

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trial, the Court will ensure that the jury is instructed accordingly. See id.
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In response, Defendants stress that Synchronoss took the opposite position in prior

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litigation. See Resp. Br. at 29 (citing Synchronoss Tech., Inc. v. NewBay Software, Inc.

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(“NewBay”), No. 11-cv-04947-FLW, Dkt. No. 48-2 (D.N.J. Nov. 14, 2012)). Defendants argue

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that Synchronoss now tactically seeks to expand the term’s meaning to encompass Dropbox’s

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“proprietary mobile application.” Id. Defendants contend that their construction of web browser

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reflects that term’s well-understood meaning in the relevant art. Id. at 30; see Freedman Decl. ¶¶

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123–128. Defendants accordingly claim that Synchronoss’s construction omits the “core

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distinguishing feature” of “web browser,” i.e. “that it is a program to ‘browse’ the ‘web.’” Resp.

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Br. at 30.
The Court agrees with Defendants. The Court notes that Synchronoss adopted Defendants’

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United States District Court
Northern District of California

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proposed construction almost verbatim in NewBay. See Dkt. No. 150-6 at 1 (proposing that the

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claim term “web browser” be construed as “a software application, such as Internet Explorer, for

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viewing and interacting with the World Wide Web”). In NewBay, Synchronoss cited as

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supportive evidence specification language from the ’446 Patent at 2:12-20, 6:9-21, 7:52-56, and

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Figs. 1, 3. While Synchronoss claims that it disputed the defendant’s proposed construction in

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NewBay, which parallels Defendants’ construction here, Synchronoss’s prior position still casts

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doubt on its distinct construction of “web browser” in this action. See Reply at 14. The Court also

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finds that the specification is not inconsistent with Defendants’ construction, including the use of

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the phrase “interacting with web pages.” See Freedman Decl. ¶¶ 123, 126.

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As to the “Microsoft Internet Explorer” exemplar, however, Defendants offer little

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justification apart from references to Synchronoss’s prior litigation position. See Resp. Br. at 30.

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The Court concludes that it can omit “Microsoft Internet Explorer” without altering the meaning

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of “web browser” as proposed by Defendants.

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///

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///

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///

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///

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///
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IV.

CONCLUSION
The Court CONSTRUES the disputed terms as follows:
Grouping and Patent(s)

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“a previous state of said data”
“copy of a previous state of said
data”

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Construction
“a copy of a previous version of the data that is used in a comparison
against a copy of the current version of the data to generate
difference information”

(’757 Patent)

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United States District Court
Northern District of California

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“management server”
“management dedicated network
coupled device”
“synchronization agent
management server”

“a centralized server which controls behavior and characteristics of
the entire network of device engines across all users”

(’757 Patent and ’696 Patent)
“[first / second] system”
“[first / second] device”
“device[s]”
“network coupled device[s]”
“network coupled apparatus[es]”
(’757 Patent, ’696 Patent, and ’446
Patent)

“user identifier module”
“authentication module
identifying a user coupled to the
synchronization system”
“user authenticator module”
“user login authenticator”
“user data flow controller”

“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”
Terms indefinite under 35 U.S.C. § 112(6)

(’696 Patent)

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“synchronization manager
communicating with at least one
interactive agent to control data
migration between a first network
coupled device and a second
network device”
“synchronization agent”

27

(’696 Patent)

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Function:
synchronization manager communicating with at least one
interactive agent to control data migration between a first network
coupled device and a second network device – “Controlling data
migration between a first network coupled device and a second
network coupled device”
Synchronization agent – “Controlling the flow of user data in the
synchronization system”

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Structure:
“A hardware or software component configured to perform the
algorithm set forth in Figures 15 and 16 of the ’696 Patent and the
corresponding text.”

1
2
3
4

“versioning modules”
“versioning information”

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(’696 Patent)

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7
8
9
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

Structure: “A hardware or software component configured
to identify a DataPack file using specific rules based on the
file name. The file name is of the form ‘UUID.VER’ where
UUID is the identifier for the specific object and VER is the
transaction version number. The version number is of the
form ‘D0001’ with additional digits used for large version
numbers. The ‘D000’ value may be reserved for the base
version for the object.”

versioning information – “A unique version number applied per
object in the data package using specific rules based on the file
name. The file name is of the form ‘UUID.VER’ where UUID is the
identifier for the specific object and VER is the transaction version
number. The version number is of the form ‘D0001’ with additional
digits used for large version numbers. The ‘D000’ value may be
reserved for the base version for the object.”

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United States District Court
Northern District of California

versioning modules
 Function: “Applying a version number per object in the
data package”

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13
14
15
16

“transaction identifier module”

Term indefinite under 35 U.S.C. § 112(6)

(’696 Patent)

17

“universally unique identifier”

18

(’696 Patent)

“A unique 128 bit value which may be assigned by the system
provider”

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20
21

“digital media file”
(’446 Patent)

22

“web browser”

23

(’446 Patent)

plain and ordinary meaning – “digital audio or video content in
the form of a file such as an MPEG, MP3, RealAudio, or Liquid
Audio file”
“software application for viewing and interacting with web pages on
the World Wide Web”

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In addition, the Court SETS a further case management conference (“CMC”) for Tuesday,

26

January 9, 2018 at 2:00 p.m. The Court DIRECTS the parties to consult the scheduling order

27

currently in effect for upcoming deadlines that are triggered by this claim construction order. See

28

Dkt. No. 133. The Court also DIRECTS the parties to meet and confer before the CMC to
30

1

discuss a proposed case schedule through trial, and to submit a joint CMC statement by Tuesday,

2

January 2, 2018.
IT IS SO ORDERED.

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Dated:

12/7/2017
______________________________________
HAYWOOD S. GILLIAM, JR.
United States District Judge

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United States District Court
Northern District of California

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