In Synchronoss Technologies, Inc. v. Hyperlync Technologies, Inc., 3-15-cv-02845 (NJD March 7, 2016, Order) (Cooper, J.), the U.S. District Court for the District of New Jersey denied, without prejudice, Hyperlync’s motion to dismiss on 35 USC § 101 grounds.
The three patents at issue respectively related to (i) synchronization of data between different systems with each system having a separate synchronization engine, (ii) acquisition and synchronization of digital media to a personal information space, and (iii) interfaces to allow a wireless telephone to establish a back-up service account, schedule a backup, and restore backup information. Hyperlync argued that the patents at issue were abstract ideas that were not transformed into inventive concepts while Synchronoss argued that the patents provided various technical advantages regarding speed, bandwidth consumption, connectivity, and data formats.
Initially, it was determined that claim construction will be required due to the Court not being able to address, at that particular juncture whether ‘every possible plausible construction of each of the . . . claims asserted . . . render the patent ineligible’. This determination was based, in part, on differing views proffered by the parties in their supporting briefs. The Court stated that it was constrained to deny the motion to dismiss on this basis alone.
The Court also importantly noted that the Patent Trial and Appeal Board (PTAB) in addressing similar technology (e.g., synchronization of electronic data files) 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 (citing Unified Patents, Inc. v. Clouding IP, LLC, No. 2013-00586 & No. 2014-00306, 2015 WL 1406894, at *1–23 (P.T.A.B. Mar. 19, 2015). The corresponding PTAB decision is now the subject of an appeal before the Federal Circuit. The Court ultimately concluded that it should refrain from addressing the 35 USC § 101 issues in the motion to dismiss without the benefit of further analysis regarding claim construction and the like. While not explicitly addressed, the Court in denying the motion to dismiss, is also likely seeking guidance from the appeal to the Federal Circuit.
This Order demonstrates a growing reluctance amongst some district courts to consider motions to dismiss, especially with regard to 101 issues, prior to claim construction.