SYNCHRONOSS TECHNOLOGIES, INC. v. HYPERLYNC TECHNOLOGIES, INC.
MEMORANDUM OPINION filed. Signed by Judge Mary L. Cooper on 3/7/2016. (mmh)
NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
SYNCHRONOSS TECHNOLOGIES, INC., :
HYPERLYNC TECHNOLOGIES, INC.,
CIVIL ACTION NO. 15-2845 (MLC)
COOPER, District Judge
The plaintiff, Synchronoss Technologies, Inc. (“Synchronoss”), holds the three
patents that are in issue (“Patents In Issue”) in this action. (See dkt. 1 at 3.)
The Patents In Issue address: (1) “synchronization and data backup technology that
allows users to store and back up documents across multiple electronic devices”, in the
words of the defendant, Hyperlync Technologies, Inc. (“Hyperlync”); or (2)
“synchronization of data between devices such as hardware components of a computer
system, personal information devices (smart phones), hand-held computers, and laptops
that are connected to a computer network such as the Internet”, in the words of
Synchronoss. (Dkt. 13-1 at 5; dkt. 17 at 7–8.)1 Synchronization concerns “matching up
one set of data to another”. (Dkt. 13-1 at 5.) Synchronoss asserts that Hyperlync is
infringing the Patents In Issue.
Hyperlync has now filed a motion pursuant to Federal Rule of Civil Procedure
(“Rule”) 12(b)(6) to dismiss the complaint (“Motion to Dismiss”) on the grounds of
invalidity pursuant to 35 U.S.C. § 101 (“Section 101”). (See dkt. 13; dkt. 13-1; dkt. 20;
dkt. 20-1 through dkt. 20-7; dkt. 22.) The plaintiff opposes the Motion to Dismiss. (See
dkt. 17; dkt. 17-1; dkt. 21; dkt. 21-1; dkt. 24.) It appears to be immaterial that Hyperlync
moved pursuant to Rule 12(b)(6), as opposed to Rule 12(c). See generally Vehicle
Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, No. 15-1411, 2015 WL
9461707, at *2 (Fed.Cir. Dec. 28, 2015); Anderson v. Kimberly-Clark Corp., 570
Fed.Appx. 927, 931 (Fed.Cir. 2014); Merck & Co., Inc. v. Hi-Tech Pharmacal Co., Inc.,
482 F.3d 1317, 1320 (Fed.Cir. 2007).
The Court will resolve the Motion to Dismiss upon review of the papers and
without oral argument. See L.Civ.R. 78.1(b). The Court presumes the familiarity of the
parties with the factual context and procedural history of this action. For the following
reasons, the Court will deny the Motion to Dismiss without prejudice.
The courts no longer need to explain the nature of these types of devices. See, e.g.,
Am. Broad. Cos., Inc. v. Aereo, Inc., 134 S.Ct. 2498, 2503 (2014) (discussing services provided
to users of personal computers, tablets, and smart phones).
The Guiding Law
35 U.S.C. § 101
The relevant statute here is Section 101. It states:
Whoever invents or discovers any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement thereof, may obtain
a patent therefor, subject to the conditions and requirements of this title.
Relevant Case Law
An abstract idea is not patentable, and a proposed patent claim that “merely
requir[es] generic computer implementation fails to transform that abstract idea into a
patent-eligible invention” under Section 101. Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
134 S.Ct. 2347, 2352 (2014); see id. at 2354 (stating courts must refrain from upholding a
patent that “would pre-empt use of [an] approach in all fields, and would effectively grant
a monopoly over an abstract idea” (citation and quotation marks omitted)).
A court must engage in a two-step process when assessing whether an invention is
First, we determine whether the claims at issue are directed to one of the
patent-ineligible concepts—laws of nature, natural phenomena, or abstract
ideas. . . . If we determine that the patent is drawn to an abstract idea or
otherwise ineligible subject matter, at a second step we ask whether the
remaining elements, either in isolation or combination with the
non-patent-ineligible elements, are sufficient to transform the nature of the
claim into a patent-eligible application. Put another way, there must be an
inventive concept to take the claim into the realm of patent-eligibility.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1366–67
(Fed.Cir. 2015) (citations, brackets, and quotation marks omitted).
Thus, “the elements of the claim [must be examined] to determine whether it
contains an inventive concept sufficient to transform the claimed abstract idea into a
patent-eligible application”. Alice Corp. Pty. Ltd, 134 S.Ct. at 2357 (citation and
quotation marks omitted).
Although a district court may engage in claim construction in these types of
actions, it is not necessarily required if a motion to dismiss sets forth issues that are
“straightforward” or where “[n]o components are opaque such that claim construction
would be necessary to flush out its contours”. Lumen View Tech. LLC v.
Findthebest.com, Inc., 984 F.Supp.2d 189, 205 (S.D.N.Y. 2013).
Patents In Issue
Hyperlync directs its arguments to certain claims within the Patents In Issue.
United States Patent No. 6,671,757 (“the ‘757 Patent”)
The ‘757 Patent is entitled “Data Transfer and Synchronization System”. Claim 1,
which Hyperlync argues is representative of the other claims in the ‘757 Patent (see dkt.
13-1 at 13, 21), states:
A system for synchronizing data between a first system
and a second system, comprising:
a first sync engine on the first system interfacing with data
on the first system to provide difference information in
a difference transaction;
a data store coupled to the network and in communication
with the first and second systems; and
a second sync engine on the second system coupled to
receive the difference information in the difference
transaction from the data store via the network, and
interfacing with data on the second system to update
said data on the second system with said difference
wherein each said sync engine comprises a data interface,
a copy of a previous state of said data, and a difference
(Dkt. 1-1 at 39–40.)
United States Patent No. 7,587,446 (“the ‘446 Patent”)
The ‘446 Patent is entitled “Acquisition and Synchronization of Digital Media to a
Personal Information Space”. Claim 1, which Hyperlync argues is representative of the
other claims in the ‘446 Patent (see dkt. 13-1 at 23, 28), states:
A method of transferring media data to a network
coupled apparatus, comprising:
maintaining a personal information space identified
with a user including media data comprising a directory
of digital media files, the personal information space
being coupled to a server and a network;
generating a first version of the media data in the per-
sonal information space;
generating a digital media file, in response to an input
from the user, comprising a second version of the media
data in a same format as the first version in the personal
information space, the second version including an
update not included in the first version;
obtaining difference information comprising differ-
ences between the first version of the media data and the
second version of the media data; and
transferring a digital media file over the network containing the difference information from the personal
information space to the network coupled apparatus in
response to a sync request made from a web browser at
the network-coupled apparatus by the user.
(Dkt. 1-2 at 16.)
The ‘446 Patent incorporates the ‘757 Patent. (See id. at 10, 12.)
United States Patent No. 7,643,824 (“the ‘824 Patent”)
The ‘824 Patent is entitled “Wireless Telephone Data Backup System”. Claim 1,
which Hyperlync argues is representative of the other claims in the ‘824 Patent (see dkt.
13-1 at 29, 33), states:
A method implemented by a processing device on a
wireless telephone for backing up personal information
stored in the telephone, comprising:
presenting a back-up system user account set-up interface
on a user interface on the phone, the set-up interface
enabling establishment of a back-up service account;
presenting a backup scheduling interface to the user interface on the phone, the backup scheduling interface
accepting user input on a backup schedule; and
presenting a restore information interface on the user interface on the phone, the restore interface enabling a user to
retrieve backup information to a data store on the phone.
(Dkt. 1-3 at 26.)
The ‘824 Patent contains several references to the ‘757 Patent. (See dkt. 1-3 at 21,
22, 24, 25.)
Arguments of the Parties
Hyperlync argues that the Patents In Issue concern abstract ideas that have not
been transformed into inventive concepts. (See dkt. 13-1 at 7.) Synchronoss argues in
opposition that the Patents In Issue address “a synchronization system” that is “faster,
used less bandwidth for the transmission, used less storage, and did not need for the
devices to be directly connected”, and the “devices . . . did not need to be aware of each
other’s data format”. (Dkt. 17 at 9.) Synchronoss also argues that the Patents In Issue
provide the explicit details as to how to produce the claimed systems, with instructions
delving into the fields of electrical engineering and computer science. (See id. at 11–13.)
The parties do not appear to agree on how certain key terms contained in the
Patents In Issue should be construed, and thus the Court cannot address at this juncture
whether “every possible plausible construction of each of the . . . claims asserted . . .
render the patent ineligible”. A Pty Ltd. v. Google, Inc., No. 15-157, 2015 WL 5883354,
at *6 (denying motion to dismiss in a dispute concerning a patent for a method for
conveying email messages, wherein the email message includes an address field that is
different from the unique address of the recipient of the email message). For instance,
Hyperlync suggests that the “sync engine” described in the Patents In Issue is “just a
generic piece of software that can analyze edits in a document and update a document
with the edits”. (Dkt. 13-1 at 19.) However, Synchronoss argues that the “sync engine”
comprises “a data interface, a copy of the previous state of data in the system (e.g., a
home PC) and a difference transaction generator”. (Dkt. 17 at 21; see also dkt. 21-1 at 7
n.3 (stating “sync engine” has “specific meaning in the field”).) The parties also do not
appear to agree on the meaning of the term “difference information”. (Compare dkt. 17 at
22, with dkt. 20 at 6–7, 9.)
Even Synchronoss concedes that claim construction may be necessary in this
dispute. (See dkt. 17 at 31 n.4; see also dkt. 21-1 at 10 (“what these terms mean (or do
not mean) is an issue for claim construction”).) Thus, the Court is constrained to deny the
Motion to Dismiss for this reason alone. See WAG Acquisition, LLC v. Multi-Media,
LLC, No. 14-2340, 2015 WL 5310203, at *6 (D.N.J. Sept. 10, 2015) (denying motion to
dismiss in a patent dispute, because “the parties vigorously dispute the basic character and
meaning of the claims”); Data Distrib. Techs., LLC v. BRER Affiliates, Inc., No. 124878, 2014 WL 4162765, at *8 (D.N.J. Aug. 19, 2014) (denying motion to dismiss in a
patent dispute, where “the parties have not agreed about claim constructions, in contrast
to some of the core precedents regarding § 101 eligibility . . . in which there were no
disputes about claim construction”). The Court cannot determine at this point whether the
Patents In Issue are directed at abstract ideas and, if so, whether they assert inventive
concepts to render them patent-eligible. See A Pty Ltd., 2015 WL 5883354, at *6.
Furthermore, a dispute concerning the area of technology addressed in the Patents
In Issue is not conducive to a resolution on a motion to dismiss at the initial stages of
litigation. In a dispute concerning similar technology, another district court observed that
hearings for claim construction were necessary. See Open Text, S.A. v. Box, Inc., 36
F.Supp.3d 885, 893–900 (N.D. Cal. 2014) (denying motion for preliminary injunction in a
dispute concerning patents addressing the synchronization of electronic files being
accessed by different users); see also Open Text, S.A. v. Box, Inc., No. 13-4910, 2014
WL 6766018, at *1 (N.D. Cal. Dec. 1, 2014) (concerning the first hearing for claim
construction subsequently conducted by the district court), and Open Text, S.A. v. Box,
Inc., No. 13-4910, 2015 WL 400348, at *1 (N.D. Cal. Jan. 28, 2015) (concerning the
second hearing for claim construction conducted by the district court). Indeed, in
Tranxition, Inc. v. Lenovo (United States) Inc., No. 12-1065, 2015 WL 4203469 (D. Or.
July 9, 2015), a case cited repeatedly by Hyperlync in support of the Motion to Dismiss
(see dkt. 18 at 5–7, 15), the district court therein conducted hearings for claim
construction. See id. at *7 n.2., *9, *11 n.4.
The Patent Trial and Appeal Board (“PTAB”), in addressing similar technology in
a petition for inter partes review (“IPR”) of certain patents, engaged in extensive claim
construction and analysis before addressing whether the patent claims at issue were not
patentable. See Unified Patents, Inc. v. Clouding IP, LLC, No. 2013-00586 & No. 201400306, 2015 WL 1406894, at *1–23 (P.T.A.B. Mar. 19, 2015) (concerning the
synchronization of electronic data files through the insertion of a new segment of the
current version of the file, wherein the new segment of the current version of the file is
written into the update and the unchanged segment is excluded from the update). That
PTAB decision is now the subject of an appeal before the United States Court of Appeals
for the Federal Circuit. See Clouding Corp. v. Unified Patents, Inc., Fed. Cir. No. 151799, dkt. 1 (Notice of Appeal). This Court would be well-advised to follow the PTAB’s
expert lead by refraining from addressing this dispute without the benefit of further
analysis. See generally 35 U.S.C. §§ 6(b)(4), (c), 316(c) (stating PTAB conducts IPRs);
35 U.S.C. § 6(a) (acknowledging the “legal knowledge and scientific ability” of the
administrative patent judges appointed to the PTAB).
An invention that is “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks” is patenteligible if it states “how [certain] interactions . . . are manipulated to yield a desired
result”. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–58 (Fed.Cir.
2014). But the Court cannot make such a determination here without the benefit of claim
The Court will deny the Motion to Dismiss without prejudice. The Court will
issue an appropriate order.
s/ Mary L. Cooper
MARY L. COOPER
United States District Judge
Dated: March 7, 2016
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