SynKloud Technologies v. Epic Systems: Covenant Not to Sue Ends Infringement Dispute
SynKloud Technologies, LLC filed a patent infringement action against Epic Systems, Corp. in the Western District of Wisconsin, asserting US8856383B2 covering centralised control of communications devices. The case resolved in just 125 days when SynKloud granted Epic a covenant not to sue in exchange for Epic dropping its counterclaims — both sides bearing their own costs.
Covenant Not to Sue Cuts Short Epic Systems Patent Dispute
On 17 January 2024, SynKloud Technologies, LLC filed a patent infringement action against Epic Systems, Corp. in the U.S. District Court for the Western District of Wisconsin (Case No. 3:24-cv-00030). SynKloud asserted US8856383B2, a patent covering systems and methods for controlling information and the use of communications devices through a central server — technology with potential relevance to enterprise healthcare IT platforms of the kind Epic deploys.
The case closed on 21 May 2024, just 125 days after filing. SynKloud resolved the dispute by granting Epic a covenant not to sue — releasing all claims under US8856383B2 against Epic and Epic’s customers using Epic software. In exchange, Epic agreed to dismiss its counterclaims against SynKloud. The stipulated dismissal was entered with prejudice on both sides, and the parties agreed to bear their own attorneys’ fees, expenses, and costs, with no fee-shifting order entered by the court.
The sub-125-day resolution is notably swift for district court patent litigation, suggesting either that the parties quickly assessed litigation risk or that a pre-filing licensing dialogue had already narrowed the dispute. The covenant not to sue structure — rather than a formal licence or settlement payment — is consistent with SynKloud prioritising litigation exit over ongoing royalty extraction from Epic specifically, while potentially preserving enforcement options against others. The precise commercial terms, if any, remain undisclosed in the public record.
Filing to Dismissed with Prejudice in 125 days
Resolved in 125 days — well below median patent case duration in W.D. Wisconsin
Dismissed with prejudice: what the covenant not to sue means for both parties
Covenant not to sue as a dismissal instrument
A covenant not to sue is a unilateral promise by a patent holder not to assert a patent against a named party. Here, SynKloud issued such a covenant covering Epic and Epic’s customers using Epic software. This gave Epic the functional equivalent of a release, enabling a stipulated dismissal with prejudice — meaning neither party can re-litigate the same claims in this court.
Dismissed with prejudiceEpic and its customers are shielded from this patent
The covenant expressly extends to Epic’s customers using Epic software, which is a meaningful scope expansion beyond Epic alone. This customer-inclusive protection is consistent with Epic seeking coverage for its healthcare system clients. Critically, the covenant is tied to Epic software specifically — third-party products or non-Epic implementations of similar technology are not necessarily covered by this agreement.
Customer-inclusive covenantSynKloud exits without royalties — or counterclaim exposure
By issuing the covenant, SynKloud received no publicly disclosed financial consideration — only the dismissal of Epic’s counterclaims. This suggests Epic’s counterclaims posed sufficient risk to motivate SynKloud’s exit. SynKloud’s enforcement rights under US8856383B2 against other defendants appear unaffected by this agreement, and no invalidity finding was made by the court.
No invalidity rulingPatent survives — enforcement risk remains for the broader sector
Because the case resolved without any court ruling on validity or infringement, US8856383B2 remains in force. Other vendors offering centralised communications device control or enterprise software with similar server-side device management functionality cannot rely on this dismissal as a shield. The case’s swift resolution may signal ongoing assertion activity by SynKloud against the wider healthcare IT and enterprise software market.
Patent validity intactFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | SynKloud Technologies, LLC | Company | Patent assertion entity — holder of US8856383B2 covering centralised communications device controlSearch in Eureka ↗ |
| Defendant | Epic Systems, Corp. | Company | Epic Systems, Corp. — major enterprise healthcare software and IT platform providerSearch in Eureka ↗ |
| Plaintiff counsel | Gregory John Myers | Attorney | Counsel for SynKloud Technologies, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Lockridge, Grindal, Nauen PLLP | Law Firm | Representing SynKloud Technologies, LLCSearch in Eureka ↗ |
| Defendant counsel | Bryce Alexander Loken | Attorney | Counsel for Epic Systems, Corp.Search in Eureka ↗ |
| Defendant counsel | Kristin Graham Noel | Attorney | Counsel for Epic Systems, Corp.Search in Eureka ↗ |
| Defendant counsel | Matthew J. Duchemin | Attorney | Counsel for Epic Systems, Corp.Search in Eureka ↗ |
| Defendant law firm | Quarles & Brady LLP | Law Firm | Representing Epic Systems, Corp.Search in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Wisconsin Western District CourtSearch in Eureka ↗ |
Official order — verbatim text
The stipulated dismissal language confirms this was a negotiated exit rather than a litigated outcome. SynKloud’s covenant not to sue — covering Epic and its software customers — secured Epic’s withdrawal of counterclaims without any court merits ruling. The with-prejudice designation on both sides is final: neither party can reinstate these claims. Crucially, no finding of infringement, validity, or enforceability was made, leaving US8856383B2 legally intact against the broader market.
US8856383B2 — Centralised Control of Communications Devices
US8856383B2, filed under application number US11/134682, covers systems and methods for controlling information and the use of communications devices through a central server. This patent addresses the technical problem of managing device behaviour, data access, and usage permissions from a centralised infrastructure layer — a capability directly relevant to enterprise IT environments where administrators need policy-based control over endpoint communications devices at scale.
In the context of enterprise healthcare IT, centralised server-based device control intersects with regulated data access, remote device management, and secure communications workflows. Epic Systems’ broad deployment across hospital networks makes it a natural target for patents in this space. The patent’s survival without an invalidity ruling means it continues to present assertion risk to any vendor whose platform includes server-driven management of communications endpoints — a common architectural pattern in modern health IT and enterprise SaaS platforms.
Should you run an FTO analysis against US8856383B2?
Any enterprise software vendor, healthcare IT provider, or cloud platform developer whose product includes server-side control, policy enforcement, or information management for communications devices should assess exposure to US8856383B2. The patent survived this litigation without an invalidity ruling, meaning it carries full presumption of validity. Products involving centralised device management, MDM-adjacent functionality, or server-mediated communications controls are potentially within scope.
PatSnap Eureka’s FTO Search Agent can map the claim scope of US8856383B2 against your product architecture, identify prior art that could support an IPR petition, and surface any related SynKloud patents in the same family or portfolio. For R&D teams building centralised device management or communications control infrastructure, a proactive FTO now is materially cheaper than a covenant negotiation under litigation pressure later.
Run a freedom-to-operate analysis on US8856383B2 to assess your product’s exposure
Run FTO in Eureka →Similar patent infringement cases: centralised device control and enterprise software
Explore related patent infringement cases involving centralised communications device management and enterprise software asserted in U.S. district courts, including W.D. Wisconsin.
What this case signals for the enterprise healthcare IT patent landscape
A fast resolution via covenant not to sue leaves the asserted patent alive — and enforcement risk open for the broader sector.
No invalidity finding means US8856383B2 remains a live enforcement risk
The dismissal with prejudice bars SynKloud from re-suing Epic, but the patent itself was never adjudicated invalid or non-infringed. Enterprise software vendors offering server-side device management or centralised communications control should treat US8856383B2 as an active risk and consider FTO analysis or IPR proceedings.
Covenant scope matters: non-Epic software deployments remain exposed
The covenant not to sue covers Epic and customers using Epic software only. Healthcare organisations running hybrid or non-Epic environments, and competing health IT vendors, are outside this protection. The customer-inclusive language also sets a precedent for how SynKloud may structure future covenants in the sector.
SynKloud v Epic — key questions answered
The case was dismissed with prejudice on 21 May 2024, 125 days after filing. SynKloud issued Epic a covenant not to sue covering Epic and its software customers, releasing all claims under US8856383B2, in exchange for Epic dismissing its counterclaims. Both parties bore their own attorneys’ fees and costs.
The covenant covers Epic Systems, Corp. and Epic’s customers using Epic software, releasing all claims related to US8856383B2. It does not extend to non-Epic software or third-party vendors. The covenant was the consideration for Epic’s agreement to dismiss its counterclaims against SynKloud.
No. The case resolved via stipulated dismissal without any court ruling on infringement, validity, or enforceability. US8856383B2 remains in force and carries its full presumption of validity. Other defendants cannot rely on this dismissal as a defence.
SynKloud asserted US8856383B2, covering systems and methods for controlling information and the use of communications devices through a central server. The application number is US11/134682. The patent relates to centralised server-based management and control of communications device behaviour and information access.
The public record does not disclose the parties’ commercial motivations. However, the structure — covenant for counterclaim dismissal with no disclosed compensation — suggests Epic’s counterclaims (likely invalidity challenges) presented sufficient litigation risk to SynKloud that exiting without payment was preferable to continued proceedings. This is consistent with PAE enforcement strategies that prioritise portfolio preservation over single-defendant royalties.
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