Case: 19-2196 Document: 70 Page: 1 Filed: 02/12/2021
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`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`SYNCHRONOSS TECHNOLOGIES, INC.,
`Plaintiff-Appellant
`
`v.
`
`DROPBOX, INC.,
`Defendant-Cross-Appellant
`
`FUNAMBOL, INC.,
`Defendant
`______________________
`
`2019-2196, 2019-2199
`______________________
`
`Appeals from the United States District Court for the
`Northern District of California in No. 4:16-cv-00119-HSG,
`Judge Haywood S. Gilliam, Jr.
`______________________
`
`Decided: February 12, 2021
`______________________
`
`MARK LEE HOGGE, Dentons US LLP, Washington, DC,
`argued for plaintiff-appellant. Also represented by RAJESH
`CHARLES NORONHA, KIRK ROBERT RUTHENBERG; KEVIN R.
`GREENLEAF, Lovettsville, VA.
`
` ADAM HARBER, Williams & Connolly LLP, Washington,
`DC, argued for defendant-cross-appellant. Also repre-
`sented by DEBMALLO SHAYON GHOSH, DAVID M. KRINSKY,
`CHRISTOPHER MANDERNACH, THOMAS H.L. SELBY.
`
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`SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC.
`
`______________________
`
`Before PROST, Chief Judge, REYNA and TARANTO, Circuit
`Judges.
`
`REYNA, Circuit Judge.
`Synchronoss Technologies, Inc. appeals the district
`court’s decisions that all asserted claims, drawn to technol-
`ogy for synchronizing data across multiple devices, are ei-
`ther invalid under 35 U.S.C. § 112, paragraph 2, or not
`infringed. Defendant Dropbox, Inc. cross-appeals asserting
`that all claims at issue are patent ineligible subject matter
`under § 101. For the reasons discussed below, we affirm
`the district court’s conclusions of invalidity under § 112
`and non-infringement and do not reach the question of pa-
`tent eligibility.
`
`BACKGROUND
`A. The Asserted Patents
`In its infringement suit, Synchronoss Technologies,
`Inc. (“Synchronoss”) alleged that Dropbox, Inc. (“Dropbox”)
`infringes U.S. Patent Nos. 6,671,757 (“’757 patent”),
`6,757,696 (“’696 patent”), and 7,587,446 (“’446 patent”) (col-
`lectively, “asserted patents”).1 The ’757 patent describes a
`system for synchronizing data across multiple systems or
`devices connected via the Internet. The system generally
`involves one device or system that utilizes a first sync en-
`gine, a second device or system that utilizes a second sync
`engine, and a data store. See ’757 patent abstract
`(J.A. 6811). The first sync engine detects “difference infor-
`mation,” sends that information to the data store, and the
`
`
`1 During the litigation, Synchronoss asserted claims
`1, 8, 9, 14, 16, 21, 24, 26, and 28 of the ’757 patent, claims
`1, 2, 6–15, 18 and 19 of the ’446 patent, and claims 1, 3, 5,
`6, and 9–14 of the ’696 patent. See Appellant’s Br. 13.
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`data store in turn sends it to the second sync engine. See
`id. Using this system, “two devices need not be coupled to
`each other to perform a sync.” Id. at col. 3 ll. 30–31. The
`’757 patent also explains that synchronization using the
`disclosed system “can occur at independent times using an
`intervening network based storage server to store changes
`to data for all the different devices in the system . . . .” Id.
`at col. 3 ll. 25–28. Claim 1 is illustrative and recites:
`1. 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 commu-
`nication with the first and second systems; and
`a second sync engine on the second system coupled
`to receive the difference information in the differ-
`ence transaction from the data store via the net-
`work, and interfacing with data on the second
`system to update said data on the second system
`with said difference information;
`wherein each said sync engine comprises a data in-
`terface, a copy of a previous state of said data, and
`a difference transaction generator.
`Id. at col. 46 l. 58–col. 47 l. 7. Remaining independent
`claims 16 and 24 are structured similarly to claim 1 but,
`among other differences, recite first and second “devices”
`rather than first and second “systems.” See id. at col. 48
`ll. 1–24, 51–64.
`The ’696 patent discloses a synchronization agent man-
`agement server connected to a plurality of synchronization
`agents via the Internet. See
`’696 patent abstract
`(J.A. 6861). The patent summarizes the claimed inven-
`tions as being drawn to a controller for a synchronization
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`SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC.
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`system that maintains matching records and data for a
`user across multiple networked devices. See id. at col. 3
`ll. 20–23. It further explains that the disclosed inventions
`relate to a system for “transferring data between two de-
`vices[,] which require information to be shared between
`them.” Id. at col. 4 ll. 25–27. The synchronization agent
`management server “compris[es] a user login authentica-
`tor, a user data flow controller, and a unique user identifi-
`cation controller.” Id. at abstract. Claim 1 is illustrative
`and recites:
`1. A controller for a synchronization system, com-
`prising:
`a user identifier module;
`an authentication module identifying a user cou-
`pled to the synchronization system;
`a synchronization manager communicating with at
`least one interactive agent to control data migra-
`tion between a first network coupled device and a
`second network device;
`a transaction identifier module assigning a univer-
`sally unique identifier to each user of transaction
`objects in said data store; and
`a current table of universally unique identifier val-
`ues and versioning information, generated by ver-
`sioning modules on said devices associating a
`transaction identifier with each transaction object,
`providing a root structure for understanding the
`data package files.
`J.A. 6901. Remaining asserted independent claims 9 and
`16 cover similar subject matter, except that claim 9 recites
`a “user authentication module” instead of an “authentica-
`tion module.” Id. at col. 45 ll. 49–56; J.A. 6899. Also, claim
`16 recites a “user login authenticator” rather than claim 1’s
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`“authentication module,” and it additionally recites a “user
`data flow controller.” Id. at col. 46 ll. 13–20; J.A. 6899.
`The ’446 patent describes a “method for transferring
`media data to a network coupled apparatus.” ’446 patent
`abstract (J.A. 6902). The patent summarizes the disclosed
`inventions as methods that involve (i) maintaining a “mu-
`sic store” in a user’s dedicated personal information space
`and (ii) transferring some of the data from that personal
`information space to the user’s Internet-coupled device
`upon request. See id. at col. 3 ll. 45–51. Claim 1 is illus-
`trative and recites:
`1. A method of transferring media data to a net-
`work coupled apparatus, comprising:
`(a) maintaining a personal information space iden-
`tified with a user including media data comprising
`a directory of digital media files, the personal infor-
`mation space being coupled to a server and a net-
`work;
`(b) generating a first version of the media data in
`the personal information space;
`(c) 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 ver-
`sion including an update not included in the first
`version;
`(d) obtaining difference information comprising dif-
`ferences between the first version of the media data
`and the second version of the media data; and
`(e) transferring a digital media file over the net-
`work containing the difference information from
`the personal information space to the network cou-
`pled apparatus in response to a sync request made
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`from a web browser at the network-coupled appa-
`ratus by the user.
`Id. at col. 13 l. 47–col. 14 l. 2. Claim 11, the other inde-
`pendent claim, recites a system for carrying out the method
`of claim 1 comprising a “personal information store,” a
`“processing device,” and a “server” for transferring digital
`media from the “personal information store” to a “network
`coupled apparatus.” See id. at col. 14 ll. 35–57.
`B. Procedural History
`Synchronoss filed a complaint on March 27, 2015, al-
`leging that Dropbox infringed the ’757, ’696, and ’446 pa-
`tents. On February 5, 2016, Dropbox filed a motion to
`dismiss the complaint on the grounds that all three as-
`serted patents were patent ineligible subject matter under
`§ 101. J.A. 654–83. On December 22, 2016, the district
`court denied Dropbox’s motion, concluding that “the chal-
`lenged claims, viewed as an ordered combination, impose
`specific limitations sufficient under Enfish and McRO to
`survive at the motion to dismiss stage.” J.A. 55. It further
`concluded that the asserted claims, as described in the pa-
`tents, are “directed to improving the manner in which com-
`puters synchronize data between devices connected to a
`network,” resulting in an increase in speed and a reduction
`in required bandwidth and storage space. See id. Shortly
`thereafter, in February 2017, the district court referred the
`case to a magistrate judge for discovery purposes.
`The following month, in March 2017, the district court
`set a claim construction schedule. Dropbox and its tech-
`nical expert, Dr. Freedman, contended in its briefing that
`certain terms that appear across all the ’696 patent’s as-
`serted claims are indefinite because they constitute func-
`tional limitations that invoke 35 U.S.C. § 112, paragraph
`6, but do not correspond to adequate structure in the spec-
`ification. These six terms include: (i) “user identifier mod-
`ule” (in all claims); (ii) “authentication module identifying
`a user coupled to the synchronization system” (in claim 1);
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`(iii) “user authenticator module” (in claim 9); (iv) “user
`login authenticator” (in claim 16); (v) “user data flow con-
`troller” (in claim 16); and (vi) “transaction identifier mod-
`ule” (in all claims). J.A. 25–32, 37–39, 6898–901.
`Specifically, Dr. Freedman opined that the terms “mod-
`ule,” “authenticator,” and “controller”—one of which ap-
`pears in all of the six terms—would be understood by
`persons of ordinary skill in the art as functional terms that
`do not impart any particular structure. J.A. 26–28. He
`further opined that the six terms’ prefixes to those words—
`for example, “user login authenticator”—similarly would
`be understood as functional language devoid of particular
`structure. J.A. 27–28. He also testified that a person of
`ordinary skill in the art would understand “dozens of dis-
`crete ways” to implement the six functional claim terms,
`and that the specification failed to describe any specific
`structure for carrying out the respective functions. See
`J.A. 27–28, 38, 1884, 2187–88, 2190, 2193–94, 2203–04.
`Synchronoss offered no contrary expert testimony but tried
`to repurpose Dr. Freedman’s list of known ways to perform
`the claimed functions as evidence that a person of ordinary
`skill in the art understood the terms as having structure.
`J.A. 28, 38, 1671–72, 1681–82. Synchronoss also cited dic-
`tionaries and previous district court decisions to argue that
`the terms were understood in the field to have structure.
`See J.A. 28, 1671–75. The district court rejected Syn-
`chronoss’s arguments, credited Dr. Freedman’s testimony,
`and concluded that all claims in the ’696 patent are invalid
`as indefinite. J.A. 25–32.
`The court also construed hardware-related terms that
`appear in all asserted claims, namely “system,” “device,”
`and “apparatus.” J.A. 24. Synchronoss proposed the fol-
`lowing construction, which is the language used by the as-
`serted patents to define the term, “device”:
`a collection of elements or components organized
`for a common purpose, and may include hardware
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`components of a computer system, personal infor-
`mation devices, hand-held computers, notebooks,
`or any combination of hardware which may include
`a processor and memory which is adapted to re-
`ceive 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.
`J.A. 24; see also ’757 patent col. 5 ll. 13–23; ’696 patent
`col. 4 ll. 27–36; ’446 patent col. 1 ll. 8–11 (incorporating by
`reference the ’757 patent)).
`Synchronoss also argued that Dropbox’s proposed con-
`struction—which included a list of computing devices—was
`“not incorrect, but incomplete to the extent that it limits
`the definition to hardware devices.” J.A. 24. Dropbox re-
`sponded that the term “device” could not properly be con-
`strued to exclude hardware. J.A. 1877 (“[T]o the extent the
`definition of ‘device’ purports to cover mere software in the
`absence of any hardware, it is inconsistent with how ‘de-
`vice’ is used in the claims.”). Dropbox pointed to the fact
`that certain claims required a device to be “coupled” to a
`network, and that software in the absence of hardware is
`not capable of such coupling. Id. Notably, at the hearing,
`Synchronoss agreed with Dropbox that “device” could not
`mean software “completely detached” from hardware.
`J.A. 2481–82. The district court adopted Synchronoss’s
`construction because of its express support in the asserted
`patents. J.A. 25. But it also agreed with Dropbox that the
`claims could not cover software in the absence of hard-
`ware.2
`
`
`2 See J.A. 25 (“Defendants’ third argument concern-
`ing stand-alone software does not apply here, as the Court
`understands the ’757 Patent’s use of the term ‘software’ to
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`In May 2019, following the district court’s claim con-
`struction order invalidating the ’696 patent’s asserted
`claims as indefinite, Dropbox moved for summary judg-
`ment with respect to the remaining ’757 and ’446 patents.
`Dropbox first argued that all asserted claims of the ’446
`patent were indefinite because they contain an impossibil-
`ity. Specifically, the claims require “generating a [single]
`digital media file” that itself “compris[es] a directory of dig-
`ital media files.”
` J.A. 11.
` Synchronoss’s expert,
`Mr. Alpaugh, conceded that “a digital media file cannot
`contain a directory of digital media files.” J.A. 12, 4985.
`Mr. Alpaugh had further testified that “comprising was ad-
`mittedly the wrong choice of words and perhaps the better
`word here would have been resulting in a second version or
`some other choice.” J.A. 12, 4985. Synchronoss’s corporate
`designee similarly testified that “if someone were to sug-
`gest that ‘media data’ always means ‘directory of digital
`media files[,]’ . . . then Clause C would not make sense.”
`J.A. 12, 6490. Synchronoss responded that a person of or-
`dinary skill in the art “would have been reasonably certain
`that the asserted ’446 patent claims require a digital media
`that is a part of a directory because a file cannot contain a
`directory.” J.A. 6109. The district court rejected Syn-
`chronoss’s argument as an improper attempt to redraft the
`claims and thus granted summary judgment in favor of
`Dropbox that all asserted claims of the ’446 patent are in-
`definite. J.A. 13.
`Dropbox also sought summary judgment that the as-
`serted claims of the ’757 and ’446 patents are not infringed
`because the asserted claims, as construed, all required
`hardware, but Dropbox’s accused software could not meet
`that requirement. J.A. 6268–72. Synchronoss responded
`that the “[t]he participle phrase ‘residing on hardware’
`
`
`reference software in combination with a hardware compo-
`nent or element.”) (citing J.A. 1877, 2482).
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`describes location; it is not an independent requirement of
`the claims.” J.A. 7, 6098. In other words, according to Syn-
`chronoss, the asserted claims only cover “the ‘software’ re-
`siding on the hardware, but not the hardware itself.”
`J.A. 7, 6098. Under this interpretation of the claims, Syn-
`chronoss argued, Dropbox’s software infringed.
`The district court rejected Synchronoss’s argument and
`granted summary judgment of non-infringement, noting
`that Synchronoss agreed at the claim construction hearing
`that the asserted claims did not encompass “software com-
`pletely detached from hardware.” J.A. 7–8, 25, 2482. The
`district court explained that, in its claim construction or-
`der, it had “unambiguously held that ‘[first/second] system’
`did not cover software alone.” J.A. 7; see also J.A. 25 (“[T]he
`Court understands that the ’757 Patent’s use of the term
`‘software’ to reference software in combination with a hard-
`ware component of element.”). The district court further
`rejected Synchronoss’s theory, based on Uniloc USA, Inc.
`v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011), that the
`claims required software “in residence” on hardware but
`not the hardware itself. J.A. 8. Because all asserted claims
`of the ’757 and ’446 patents required hardware and Syn-
`chronoss did not accuse any Dropbox hardware of infring-
`ing, the court granted summary judgment of non-
`infringement as to the ’757 and ’446 patents. Synchronoss
`appeals the district court’s claim construction and sum-
`mary judgment decisions. Dropbox cross-appeals the dis-
`trict court’s denial of Dropbox’s motion to dismiss. We have
`jurisdiction under 28 U.S.C. § 1295(a)(1).
`DISCUSSION
`We review the grant of summary judgment under the
`law of the regional circuit in which the district court sits,
`here, the Ninth Circuit. Classen Immunotherapies, Inc. v.
`Elan Pharm., Inc., 786 F.3d 892, 896 (Fed. Cir. 2015). Ap-
`plying Ninth Circuit law, we review the district court’s
`grant of summary judgment de novo. Amgen Inc. v. Sandoz
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`Inc., 923 F.3d 1023, 1027 (Fed. Cir. 2019). We review a
`district court’s claim constructions, including determina-
`tions of indefiniteness, de novo, but we review subsidiary
`factual findings based on extrinsic evidence for clear error.
`MasterMine Software, Inc. v. Microsoft Corp., 874
`F.3d 1307, 1310 (Fed. Cir. 2017). Patent eligibility under
`§ 101 is ultimately a question of law, reviewable de novo,
`which may contain underlying issues of fact. Berkheimer
`v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018).
`A. Jurisdiction
`We first address a threshold question of jurisdiction.
`Absent extraordinary circumstances, for a district court
`judgment to be appealable to this court under 28 U.S.C.
`§ 1295(a)(1), the judgment must resolve all claims and
`counterclaims or make an express determination under
`Rule 54(b) of the Federal Rules of Civil Procedure that
`there is no just reason for delay. SafeTCare Mfg., Inc. v.
`Tele-Made, Inc., 497 F.3d 1262, 1267 (Fed. Cir. 2007); see
`also Int’l Elec. Tech. Corp. v. Hughes Aircraft Co., 476
`F.3d 1329, 1330 (Fed. Cir. 2007) (concluding no final judg-
`ment, and thus a lack of jurisdiction, where the defendants’
`counterclaims were never dismissed and thus remained ex-
`tant).
`In its order granting summary judgment of non-in-
`fringement on the ’757 patent, the district court denied as
`moot Synchronoss’s motion for summary judgment of va-
`lidity of the ’757 patent. A finding of non-infringement,
`however, does not by itself moot a request for declaratory
`judgment of invalidity. See Cardinal Chem. Co. v. Morton
`Int’l, Inc., 508 U.S. 83, 98 (1993). Therefore, Dropbox’s in-
`validity counterclaims survived the judgment of non-in-
`fringement, and the district court’s purported “final
`judgment” based on its summary judgment decision did not
`constitute a final decision under 28 U.S.C. § 1295(a)(1).
`In Amgen Inc. v. Amneal Pharmaceuticals LLC, 945
`F.3d 1368, 1374 (Fed. Cir. 2020), we held that a party can
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`“cure” a jurisdictional defect stemming from its unresolved
`invalidity counterclaim if it agrees to “‘give up’” the claim
`regardless of the outcome of the appeal. We held that such
`a representation, even made at oral argument, effectively
`“nullifie[s]” the outstanding issues, rendering the court’s
`judgment as to infringement “final” for purposes of our ju-
`risdiction. Id. During oral argument, Dropbox agreed to
`give up its invalidity counterclaims with respect to the ’757
`patent.
` Oral Arg. at 6:27–13:08, http://oralargu-
`ments.cafc.uscourts.gov/default.aspx?fl=19-2196.mp3.
`Based on Dropbox’s representation as to its counterclaims,
`we deem the district court’s judgment final and we assert
`jurisdiction under § 1295(a)(1).
`B. Indefiniteness
`Synchronoss challenges the district court’s conclusions
`that the asserted claims of the ’446 and ’696 patents are
`indefinite under 35 U.S.C. § 112. Section 112, paragraph
`2, provides that “[t]he specification shall conclude with one
`or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as
`his invention.” 35 U.S.C. § 112. A patent claim is indefi-
`nite if it fails to provide a person of ordinary skill in the art
`reasonable certainty regarding the scope of the claimed in-
`vention. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.
`898, 901 (2014); Biosig Instruments, Inc. v. Nautilus, Inc.,
`783 F.3d 1374, 1380–81 (Fed. Cir. 2015).
`1. The ’446 Patent
`The district court granted summary judgment that the
`asserted claims of the ’446 patent are invalid under § 112,
`paragraph 2, on the ground they contain an impossibility.
`The evidence supports that conclusion. Specifically, the
`’446 patent’s asserted claims require “generating a [single]
`digital media file” that itself “compris[es] a directory of dig-
`ital media files.” J.A. 11. Synchronoss’s expert, however,
`testified that “a digital media file cannot contain a direc-
`tory of digital media files,” J.A. 12, 4985, and Synchronoss’s
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`corporate designee testified the claims would “not make
`sense” if “media data” was understood to mean “directory
`of media files,” J.A. 12, 6490.
`Synchronoss does not dispute that the claims contain
`an impossibility. It contends that a person of ordinary skill
`in the art would read the specification and reasonably un-
`derstand that the inventions “mean that, in response to in-
`put from a user, a digital media file is generated as a
`second, updated version of the media data in the same for-
`mat as the first version of the media data.” Appellant’s
`Br. 39. We are not persuaded.
`In Allen Engineering Corp. v. Bartell Industries, Inc.,
`we explained that where a person of ordinary skill in the
`art would understand based on the specification that the
`claims do not set forth what the inventor regards as his in-
`vention, the claims are invalid under § 112, paragraph 2.
`299 F.3d 1336, 1349 (Fed. Cir. 2002) (rejecting the argu-
`ment that “perpendicular” would be understood as “paral-
`lel” in light of the specification’s teachings). In Trustees of
`Columbia University in City of New York v. Symantec
`Corp., we held the claims indefinite because they nonsen-
`sically “describe[d] the step of extracting machine code in-
`structions from something that does not have machine code
`instructions.” 811 F.3d 1359, 1367 (Fed. Cir. 2016). Here,
`the asserted claims of the ’446 patent are nonsensical and
`require an impossibility—that the digital media file con-
`tain a directory of digital media files. Adopting Syn-
`chronoss’s proposal would require rewriting the claims, but
`“it is not our function to rewrite claims to preserve their
`validity.” Allen, 299 F.3d at 1349. We therefore hold that
`the claims are indefinite as a matter of law under § 112,
`paragraph 2.
`
`2. The ’696 Patent
`The district court concluded in its claim construction
`order that all asserted claims of the ’696 patent are indefi-
`nite because six claim terms that appear across all asserted
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`claims did not correspond to adequate structure disclosed
`in the specification.
`The threshold inquiry is whether the claims at issue
`invoke § 112, paragraph 6. The standard is whether a per-
`son of ordinary skill in the art would understand that the
`claim terms recite a function but not sufficient structure
`for performing the function. See Williamson v. Citrix
`Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (citing
`Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580,
`1583 (Fed. Cir. 1996)). Even if a claim term lacks the word
`“means,” § 112, paragraph 6 is invoked if the challenger
`shows that the claim term fails to recite sufficiently defi-
`nite structure or recites a function without sufficient struc-
`ture for performing that function. Williamson, 792 F.3d
`at 1349 (citing Watts v. XL Sys., Inc., 232 F.3d 877, 880
`(Fed. Cir. 2000)).
`If a claim term invokes § 112, paragraph 6, we apply a
`two-step process for construing the term. The first step is
`to identify the claimed function. Williamson, 792 F.3d
`at 1351. The second step is to determine whether sufficient
`structure is disclosed in the specification that corresponds
`to the claimed function. Id. If the specification fails to dis-
`close adequate corresponding structure, the claim is indef-
`inite. Id. at 1351–52.
`Against that legal backdrop, we turn to the claim terms
`at issue. The term “user identifier module” appears in all
`asserted claims of the ’696 patent. According to Syn-
`chronoss, the function of this claim term is “identifying a
`user.” Appellant’s Br. 52. Synchronoss argues that “[t]he
`algorithm of the top half of Fig. 17” and the text at col-
`umn 32, lines 6 to 34, together describe structure sufficient
`to achieve the function of identifying a user. Id. at 53. We
`disagree.
`The cited portion of Figure 17 depicts alternative steps
`labeled “forgot password,” “sign up,” “provide specific infor-
`mation,” and “login.” ’696 patent at Fig. 17. It also depicts
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`15
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`a downstream step labeled “confirm account.” Id. The cor-
`responding text cited by Synchronoss, however, does not
`detail what a user identifier module consists of or how it
`operates. See id. col. 32 ll. 6–34. Dropbox’s expert,
`Dr. Freedman, identified “many ways in which a system
`could perform user identification, each with its own dis-
`tinct structure.” J.A. 2187–88. Synchronoss offered no con-
`trary
`expert
`testimony,
`but
`rather
`relied
`on
`Dr. Freedman’s list of “nearly 20 different structures” as
`evidence that a user identifier module would be understood
`by a person of ordinary skill in the art as corresponding to
`structure. J.A. 28. In doing so, Synchronoss illustrated
`that the claim term “user identifier module” does what the
`definiteness requirement prohibits. It is not enough that a
`means-plus-function claim term correspond to every
`known way of achieving the claimed function; instead, the
`term must correspond to “adequate” structure in the spec-
`ification that a person of ordinary skill in the art would be
`able to recognize and associate with the corresponding
`function in the claim. See Williamson, 792 F.3d at 1352.
`Because the term “user identifier module” fails in this re-
`gard, we hold that the term is indefinite and, thus, the as-
`serted claims of the ’696 patent are invalid. As the term
`appears in all asserted claims, we do not address the re-
`maining five terms in the asserted claims of the ’696 pa-
`tent, which the district court also deemed indefinite.
`C. Infringement
`Synchronoss appeals the district court’s grant of sum-
`mary judgment of non-infringement on all asserted claims
`of the ’757 patent.3 Synchronoss argues that the district
`
`3 Synchronoss also challenges the district court’s
`conclusion that the ’446 patent’s asserted claims are not
`infringed. Given our conclusion above that those claims
`are indefinite, we address the infringement issue only as to
`the ’757 patent.
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`SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC.
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`court erred in concluding that the asserted claims require
`hardware. Synchronoss specifically contends that the as-
`serted claims—as construed by Synchronoss—recite hard-
`ware not as a claim limitation, but merely as a reference to
`the “location for the software,” Appellant’s Br. 26, or “the
`environment in which software operates,” id. at 24.
`The district court determined that the language, “soft-
`ware . . . residing on . . . hardware,” proposed by Syn-
`chronoss as a construction for the terms “device,” “system,”
`and “apparatus,” J.A. 22, limits the asserted claims’ scope
`and thus requires infringing technology to possess hard-
`ware. See J.A. 7–8. In reaching this conclusion, the court
`emphasized Synchronoss’s concession that the asserted
`claims, as construed, could not cover software absent hard-
`ware. See J.A. 7–8.
`Synchronoss argues that its agreement that the claims
`cannot cover “software completely detached from hard-
`ware” was not a concession that the claims require hard-
`ware. Appellant’s Br. 29. Instead, Synchronoss argues
`that the district court “misinterpreted Synchronoss’ coun-
`sel’s assent to that statement” and that Synchronoss’s po-
`sition has consistently been that the term “hardware” in its
`proposed construction refers in a non-limiting sense to the
`“hardware environment” in which “the software is always
`expected to work.” Id. We disagree.
`We conclude that the “hardware” term limits the scope
`of the asserted claims of the ’757 patent. Synchronoss itself
`proposed the construction including the “hardware” term
`on the basis that the asserted patents used that language
`to define the term “device.” Synchronoss also agreed with
`the district court that “no one’s arguing that a device could
`be software completely detached
`from hardware.”
`J.A. 2481–82. The conclusion that the “hardware” term
`limits the claim scope is thus consistent with both Syn-
`chronoss’s own assertions and the record evidence.
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`The evidence shows that Dropbox provides its custom-
`ers with software for download but no corresponding hard-
`ware. See, e.g., J.A. 6358 (Synchronoss’s expert, Mr.
`Alpaugh, testifying that “I’m not aware of them selling any
`hardware. . . . The hardware is not part of my opinion.”);
`see also Appellant’s Br. 36 (“[T]he claims at issue in this
`case are satisfied by the software that Dropbox makes, of-
`fers for sale and sells.” (emphasis added)). Because Drop-
`box does not provide its customers with any hardware in
`conjunction with its accused software, Dropbox does not
`make, sell, or offer for sale the complete invention. See Ro-
`tec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1252 n.2
`(Fed. Cir. 2000) (“[O]ne may not be held liable under
`§ 271(a) for ‘making’ or ‘selling’ less than a complete inven-
`tion.”).
`Nor does Dropbox directly infringe by “using” the en-
`tire claimed system under § 271(a). Direct infringement by
`“use” of a claimed system requires use of each and every
`element of the system. Centillion Data Sys., LLC v. Qwest
`Commc’ns Int’l, Inc., 631 F.3d 1279, 1284 (F