On August 12, 2021, the United States District Court for the District of Delaware issued an opinion granting plaintiff Microsoft Corporation’s (“Microsoft”) motion for judgment on the pleadings related to infringement counterclaims brought by SynKloud Technologies, LLC (“SynKloud”). SynKloud Techs. LLC v. HP, Inc., et al.
, No. 19-1360-RGA (D. Del. Aug. 12, 2021). The Court ruled that the patents at issue related to the patent-ineligible abstract idea of “requesting an institution to obtain data from remote locations and to store that data in storage space assigned to a specific user.”
Microsoft brought a declaratory judgment action against SynKloud for noninfringement of (among other patents) U.S. Patent Nos. 9,098,526 (“the ’526 patent”) and 10,015,254 (“the ’254 patent”). The case was eventually consolidated with a separate infringement action that SynKloud brought against HP Inc., asserting infringement of claims 1-10 of the ’526 patent, and claims 1-8 of the ’254 patent. The Court ruled that those claims were invalid for claiming patent-ineligible subject matter under 35 U.S.C. § 101. Just before the § 101 order was filed in the HP action, SynKloud filed an answer in the Microsoft case including counterclaims of indirect infringement of all claims of the ’526 and ’254 patents. Microsoft subsequently moved for judgment on the pleadings of invalidity for all claims. SynKloud conceded that certain claims would be invalid in light of the Court’s prior analysis, but argued that claims 11-20 of the ’526 patent, and claims 9-15 of the ’254 patent do not rise and fall with the claims asserted in the HP case and are patentable under § 101. The Court considered Microsoft’s motion with regard to each patent.
The Court first considered the ’526 patent. Microsoft argued that asserted claims 11-20 are directed to the same abstract idea contained in invalidated claim 1, of “requesting an institution to obtain data from remote locations and to store that data in storage space assigned to a specific user.” In comparing the asserted claims to invalidated claim 1, the court summarized claims 11-20 as follows:
Claim 11 is directed to “non-transitory computer readable medium comprising computer code” which causes the wireless device to (1) establish a wireless link to access storage space; (2) store and/or retrieve data objects from the storage space; (3) including downloading a file from a remote server into the storage space using the file’s download information found in the wireless device’s cache storage.
The Court ruled that claim 11 and its dependent claims are not “meaningfully distinct from those invalidated in the Court’s previous opinion.” Citing Federal Circuit precedent, the Court found unpersuasive that independent claim 11 is directed to a “non-transitory computer-readable medium comprising a program code” rather than a “wireless device,” which claim 1 was directed towards, because the “non-transitory computer readable medium” was merely a “generic vessel for generic program code.” The Court further ruled that claims 11-20 did not add anything inventive to the generic idea. Accordingly, the Court ruled that its analysis of the previously invalidated claims “holds for the remaining claims of the ’526 patent,” and that the asserted claims are patent ineligible under § 101.
Turning to the ’254 patent, Microsoft similarly argued that asserted claims 9-15 are directed to the same abstract idea of “requesting an institution to obtain data from remote locations and to store that data in storage space assigned to a specific user” which was deemed ineligible with regard to claim 1 of the ’254 patent in the HP matter. The Court described independent claim 9 as follows:
Independent claim 9 of the ’254 Patent recites a server with: (1) a plurality of storage spaces; (2) a storage device with program instructions for (a) establishing a connection between a wireless device and a storage space; (b) sending information from the server to display on the wireless device; (c) updating the server following user action on the wireless device; and (d) storing data by downloading a file from a remote server into the storage space using the file’s download information found in the wireless device’s cache storage.
The Court analyzed the asserted claims under the two-step Alice
test for patent eligibility under § 101, which requires courts to: (1) determine whether the claims at issue are directed to one of the patent-ineligible concepts (such as an abstract idea); and, if so, then (2) determine whether the elements of the claim recite an “inventive concept” that is sufficient to ensure that the practice amounts to significantly more than a patent upon the ineligible concept itself.
step one, the Court classified the asserted claims as “remotely accessing and retrieving user-specific information,” which is “an age-old practice that existed well before the advent of computers and the internet” (citing Federal Circuit precedent), and is therefore directed at an abstract idea. The Court further ruled that “implementing an abstract idea in a ‘generic technological environment’ such as a generic server and wireless device, does not render the idea non-abstract.”
Turning to Alice
step two, the Court considered SynKloud’s arguments that two features of the dependent claims add inventive concepts. First, SynKloud argued that the “plurality of storage devices” in dependent claim 13 added an inventive concept. The Court disagreed, holding that “SynKloud cites no support in the specification or other rationale to explain why the addition of more storage devices is inventive.” Next, SynKloud argued that a “display” feature recited in claims 9 and 12 are inventive because the display is specified and structured. Again, the Court disagreed, ruling that “[a]ccessing and displaying the remote storage via a generic web-browser adds nothing inventive to the claims.” The Court further ruled that nothing else in the dependent claims recite “anything other than routine computing functions implementing the abstract idea.” Accordingly, neither Alice
step one nor step two was satisfied, and the Court ruled that the asserted claims are ineligible under § 101.
The Court further considered SynKloud’s argument that claim construction was necessary for the Court to rule on patent eligibility. As SynKloud had previously requested that just one term be constructed and given its plain and ordinary meaning, the Court was able to obtain an understanding of the claimed subject matter without claim construction.
Finally, the Court denied SynKloud’s request for leave to amend, as it “would be futile in this case where the parties have debated the substance of the specification and the claims, not the language of the pleadings.”