On June 19, 2020, the U.S. Court of Appeals for the Federal Circuit affirmed the invalidation of three Dropbox patents – U.S. Patent , , and . The Northern District of California granted Defendant Synchronoss’s motion to dismiss under Rule 12(b)(6), holding all three patents as ineligible under 35 U.S.C. § 101. In particular, the district court held that Plaintiff failed to allege an inventive concept to satisfy the second part of the two-part test.
Regarding the ‘505 patent, the federal circuit agreed with the district court that the representative claim was directed to “(1) associating a security level with a data resource, (2) associating a security level with a mode of identification of a user, and then (3) ensuring that the user’s security level is sufficiently high to meet the security level of the data resource to access the data resource.” This constituted an abstract idea. Both courts agreed that the claim did not provide any limits that curb how the apparatus performed the functions and, instead, invoked computers to execute data access control principles.
The plaintiff’s advancement was an “access checker” or an “access filter,” but this offered nothing but “a functional abstraction.” “The specification – which refers not to an ‘access checker,’ but to an ‘access filter’ to perform access checking – does little to define this abstraction as a technological solution. Instead, the specification largely treats the ‘access filter’ as a black box.”
To the extent there were technical aspects, they were only discussed in the patent specification as non-limiting embodiments. While Dropbox focused on a passage in the specification that asserted solving a technological problem, the federal circuit rejected the argument: “But that is not enough. The patent has to describe how to solve the problem in a manner that encompasses something more than the principle in the abstract.”
At step two of the inquiry, the court rejected Dropbox’s argument that there was any inventive concept. “The claims recite the application of an abstract idea using conventional and well-understood techniques specified in broad, functional language.” The court affirmed that this patent was invalid as ineligible under Section 101.
The district court found the ‘399 patent to be directed to combining a user-friendly website interface with a file upload connection so that non-tech-savvy users can easily upload data to a service provider. The federal circuit agreed with the district court that any alleged improvements are claimed in an abstract manner. “Software inventions must make non-abstract improvements to existing technological processes and computer technology.”
Similar to the ‘505 patent, the federal circuit found that the claims recited a functional result of the claimed abstraction. Even if the patent provided meaningful detail, “a specification full of technical details about a physical invention may nonetheless conclude with claims that claim nothing more than the broad law or abstract idea underlying the claims, thus preempting all use of that law or idea.” The claims did not recite an inventive concept, and the court affirmed that this patent was also invalid.
The federal circuit found the ‘541 patent to also be directed to an abstract idea: The Court wrote that while the claims “may allow wireless backup of cellphone data, the claim provides less of a specific means or method than a result or effect that itself is the abstract idea and merely invokes generic processes and machinery.”
The inventive concept, Dropbox argued, was in the combination of tagging and remote synchronization steps. However, the patent taught that these two concepts were routine. Furthermore, Dropbox failed to recite this specific combination in the claims. Prompting the court to state “[t]o save a patent at step two, an inventive concept must be .” Thus the ‘541 patent was deemed to be invalid under Section 101.
Conclusory statements that patents include an inventive concept are not enough on their own. The federal circuit stated that while courts “must take all the factual allegations in the complaint as true,” they would “not be bound to accept as true a legal conclusion couched as a factual allegation.” Without direction to specific claim language and specification support, courts will likely find inventive concepts lacking in any step-two inquiries.
Ricardo earned his JD from Tulane University Law School in 2019. His background in Microbiology and Virology has guided his interest into the field of Intellectual Property.