Federal Circuit’s Dropbox Decision: Missing the Forest for the Trees?
On June 19, 2020, the U.S. Court of Appeals for the Federal Circuit affirmed the invalidation of three Dropbox patents. The Northern District of California had granted a motion to dismiss on grounds that the claims in those patents were to nothing more than abstract ideas. In Dropbox, Inc. v. Synchronous Techs., No. 2019-1765, 2020 U.S. App. LEXIS 19256 (Fed. Cir. June 19, 2020), the appellate court agreed.
Patents and Decision
The three patents generally involved three different techniques relating to Dropbox’s cloud storage business. In the first, software would only grant access to a resource when a sensitivity level of the resource was commensurate with a trust level for an identity of a requesting device. The second patent claimed creating a two-way session between a server and client with a single session ID to make synchronization easier. The final patent related to tagging data for synchronization between a server and a client.
Both the District Court and the Federal Circuit had no trouble characterizing the claims as being directed to abstract ideas. They criticized the claims for being written in broad, functional terms. Looking to each patent’s disclosure, the Courts also concluded that the patents did not disclose technical specifics for how to implement the claimed software. Rather they focused on generic, result-oriented descriptions of the software’s high-level operation. Following previous decisions following these patterns, the Courts found the claims of all the patents were directed to abstract ideas.
When considering whether any claim included significantly more than those abstract ideas, both Courts again focused on the specification. There, they did not find any disclosure of improvements to computer operation or functionality. Rather, the Courts described the software operations as both generic and conventional. They did not provide a review of the prior art outside the patent descriptions to support this conclusion. Having dismissed the claimed advance as abstract, and anything else as conventional, the courts invalidated the claims for being directed to patent-ineligible subject matter.
One potential criticism of the Court’s decision is that it may have missed the forest for the trees. Certain of the broadest, independent claims were broad and could be fairly described as being written in result-oriented, functional terms. But broad claims should be allowed when the advance is truly great enough and the inventors came up with a category of invention that can be implemented in a variety of ways. It’s also difficult to imagine that all of the dependent claims, which drilled down in specificity, were properly invalidated alongside the independent claims.
Unfortunately, the structure of the test for patent eligibility encourages the kind of analysis these courts used. Permitting a court to dissect a claim into its various component parts when considering whether a claim is abstract makes it more likely that one of those parts will be found abstract. That then enables a court to dismiss that element when considering the claim as a whole. Requiring a decision-maker to consider the claim as a whole during all parts of the inquiry would reduce the risk that genuine innovations fall through the cracks.
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Author: James Watson