IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

MOTION OFFENSE, LLC, 

Plaintiff, 

v. 

DROPBOX, INC., 

Defendant. 

 

Civil Action No.: 6:20-cv-00251-ADA 

MOTION OFFENSE, LLC, 

Plaintiff, 

v. 

DROPBOX, INC., 

Defendant. 

 

Civil Action No.: 6:21-cv-758-ADA 

DROPBOX, INC.’S RESPONSIVE BRIEF 

REGARDING SUBJECT MATTER JURISDICTION 

Case 6:20-cv-00251-ADA Document 431 Filed 02/20/24 Page 1 of 9
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TABLE OF AUTHORITIES 

 Page(s) 

Cases 

Cardinal Chemical Co. v. Morton Int’l, Inc., 

508 U.S. 83 (1993) ...........................................................................................................2, 4 

Deposit Guaranty National Bank, Jackson, Miss. v. Roper, 

445 U.S. 326 (1980) .........................................................................................................3, 4 

Electrical Fittings Corp. v. Thomas & Betts Co., 

307 U.S. 241 (1939) .........................................................................................................2, 3 

Flexuspine, Inc. v. Globus Med., Inc., No. 6:15-CV-201, 

2016 WL 9276025 (E.D. Tex. Oct. 3, 2016) .......................................................................5 

Hill-Rom Co. v. Kinetic Concepts, Inc., 

209 F.3d 1337 (Fed. Cir. 2000)............................................................................................5 

Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 

730 F.2d 1452 (Fed. Cir. 1984)............................................................................................4 

PODS, Inc. v. Porta Stor, Inc., 

484 F.3d 1359 (Fed. Cir. 2007)............................................................................................3 

Qualcomm Inc. v. Broadcom Corp., 

548 F.3d 1004 (Fed. Cir. 2008)............................................................................................4 

Silicon Graphics, Inc. v. ATI Techs., Inc., No. 06-CV-611, 

2011 WL 322664 (W.D. Wis. Jan. 31, 2011) ......................................................................5 

Sinclair & Carroll Co. v. Interchemical Corp., 

325 U.S. 327 (1945) .............................................................................................................4 

VLSI Tech. LLC v. Intel Corp., No. 17-CV-05671, 

2024 WL 269163 (N.D. Cal. Jan. 24, 2024) ........................................................................5 

Wireless Ink Corp. v. Facebook, Inc., 

969 F. Supp. 2d 318 (S.D.N.Y. 2013) ..................................................................................5 

Case 6:20-cv-00251-ADA Document 431 Filed 02/20/24 Page 2 of 9
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Although Motion Offense asserts that “binding Supreme Court precedent” bars this Court 

from entering judgment on the jury’s verdict, it identifies none. Dkt. 429 at 1. To the contrary, 

Motion Offense fails to identify a single case—in any federal court—in which a jury’s noninfringement verdict was found to deprive the district court of subject matter jurisdiction to 

simultaneously enter judgment on the jury’s invalidity verdict. Indeed, Motion Offense 

completely ignores the numerous cases in which this Court and others have entered judgment on 

both non-infringement and invalidity notwithstanding that invalidity was raised solely as an 

affirmative defense. See Dkt. 428 at 2 (citing Profectus Tech. LLC v. Google LLC, 6:20-cv-00101-

ADA (W.D. Tex. June 13, 2022), Dkt. 220 at 1 (entering judgment on jury verdicts of no 

infringement and invalidity affirmative defense) and Freshub, Inc. v. Amazon.com Inc., 6:21-cv00511-ADA (W.D. Tex. July 13, 2021), Dkt. 268 at 1); see also, e.g., Ex. 1, IGT v. Zynga Inc., 

1:23-CV-885-ADA (W.D. Tex. Dec. 18, 2023), Dkts. 304, 309; Ex. 2, TrackTime, LLC v. 

Amazon.com Services LLC, 1:18-CV-1518 (D. Del. Sept. 27, 2023)1

, Dkt. 314; Ex. 3, 360Heros, 

Inc. v. GoPro, Inc., 1:17-CV-01302 (D. Del. Apr. 28, 2023), Dkt. 357; Ex. 4, Innovation Sciences, 

LLC v. Amazon.Com, Inc., 4:18-CV-474 (E.D. Tex. Feb. 26, 2021), Dkt. 897, aff’d No. 2021-2111, 

2022 WL 2824675 (Fed. Cir. July 20, 2022), cert. denied, 143 S. Ct. 779 (2023); Ex. 5, Intellectual 

Ventures I LLC v. Canon Inc., 1:11-cv-00792 (D. Del. May 14, 2014), Dkt. 307. Under Motion 

Offense’s erroneous view, all of the federal judges who presided over these cases violated Article 

III of the Constitution. Of course, they did not. Motion Offense’s arguments should be rejected. 

First, none of the cases Motion Offense cites addresses the Court’s question: whether it 

has authority under Article III to enter judgment on the jury’s invalidity findings where the jury 

simultaneously found patent claims not infringed and invalid. As the exemplar cases cited above 

 

1

 Notably, the plaintiff in TrackTime was represented by counsel for Motion Offense. 

Case 6:20-cv-00251-ADA Document 431 Filed 02/20/24 Page 3 of 9
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demonstrate, it does. Just as the jury rendered its verdict simultaneously, the Court will enter a 

single judgment on the jury’s verdict. Thus, unlike all the cases on which Motion Offense relies, 

here (1) there is no prior judgment of non-infringement and (2) the Court is not “deciding” 

invalidity after finding the patents not infringed – the jury has already decided invalidity. 

Second, even if this Court were being asked to “decide” invalidity (rather than simply to 

enter judgment on a unanimous jury verdict), as Dropbox explained (Dkt. 428 at 1), the Supreme 

Court has held a court’s “decision to rely on one of two possible alternative grounds 

(noninfringement rather than invalidity) d[oes] not strip it of power to decide the second question.” 

Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 98 (1993). Motion Offense’s attempt to 

distinguish Cardinal Chemical by pointing to Electrical Fittings Corp. v. Thomas & Betts Co., 307 

U.S. 241 (1939), falls short. In Electrical Fittings, following a bench trial, the trial court held that 

the asserted patent claim was “valid but not infringed.” 307 U.S. at 242 (emphasis added). The 

patent owner did not appeal the non-infringement finding, but the accused infringer sought 

appellate review of the validity finding. Id.; see Cardinal Chem., 508 U.S. at 93. There was thus 

no ongoing dispute with respect to infringement. Here, infringement remains disputed, as Motion 

Offense has indicated an intent to contest the non-infringement verdict. See Dkt. 409 at 1330:12-

1333:24 (moving under Rule 50 on the issue of non-infringement, among other issues). Under 

these circumstances, the jury’s non-infringement verdict does not deprive this Court of jurisdiction 

to enter judgment on Dropbox’s invalidity affirmative defense. Because Motion Offense intends 

to challenge the non-infringement judgment, Dropbox retains a concrete interest in obtaining a 

judgment of invalidity.

2

 

 

2

 Even setting aside the ongoing dispute regarding Dropbox’s alleged infringement, a controversy 

nonetheless remains (1) to the extent Motion Offense continues to seek to assert infringement 

Case 6:20-cv-00251-ADA Document 431 Filed 02/20/24 Page 4 of 9
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Moreover, Electrical Fittings concerned an appellate court’s jurisdiction to hear an appeal 

from a judgment of no invalidity—not a trial court’s jurisdiction to enter judgment on a jury 

verdict of invalidity. See 307 U.S. at 242 (holding the “Court of Appeals had jurisdiction”). That 

distinction is critical. As the Supreme Court noted in Deposit Guaranty National Bank, Jackson, 

Miss. v. Roper, 445 U.S. 326, 335 (1980), there is a “distinction between the definitive mootness 

of a case or controversy, which ousts the jurisdiction of the federal courts and requires dismissal 

of the case, and a judgment in favor of a party at an intermediate stage of litigation.” Id. (emphasis 

added). At an intermediate stage (such as that at issue here), “federal courts retain[ ] jurisdiction 

. . . notwithstanding the District Court’s entry of judgment” of non-infringement because appeals 

are permitted and the parties therefore retain a concrete interest in the outcome of the case, such 

that “the case [i]s still live and dismissal [i]s not required by Art. III.” Id. 

Third, Motion Offense’s reliance on PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1368 

(Fed. Cir. 2007), is similarly misplaced. As Dropbox explained (Dkt. 428 at 2-3)—and Motion 

Offense does not dispute—PODS did not address a district court’s jurisdiction to enter judgment 

of invalidity, but instead concerned whether the Federal Circuit was required to reach the 

defendant’s appellate arguments related to the exclusion of invalidity-related testimony where it 

found no infringement and invalidity had not been appealed. PODS does not suggest that a district 

court lacks jurisdiction to simultaneously enter judgment of both invalidity and noninfringement. 

Indeed, in Lacks Industries v. McKechnie Vehicle Components USA, Inc., on which Motion 

Offense separately relies, the district court granted summary judgment of both non-infringement 

 

claims against Dropbox’s customers, see Dkt. 247 at 1 n.1, and (2) because Motion Offense has 

continued to assert related patents against Dropbox that Motion Offense has described as having 

“substantially similar” claims, see, e.g., Motion Offense, LLC v. Dropbox, Inc., No. 6:23-CV00303 (W.D. Tex.) at Dkt. 22 ¶ 31.

Case 6:20-cv-00251-ADA Document 431 Filed 02/20/24 Page 5 of 9
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and invalidity even though invalidity was raised only as an affirmative defense. See 322 F.3d 

1335, 1344-46 (Fed. Cir. 2003). Although the Federal Circuit declined to address invalidity after 

affirming the noninfringement judgment, it did not suggest that the district court lacked 

jurisdiction to enter judgment on both issues. Indeed, as the Federal Circuit has explained, 

“enter[ing] judgment on less than all dispositive issues can . . . , risk[ ] . . . the necessity of the 

district court and the parties undertaking participation in another long and costly proceeding” 

following appeal. Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 

1452, 1463-64 (Fed. Cir. 1984);3 see also Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 

327, 330 (1945) (noting that “the better practice” is for district courts to “inquir[e] fully into the 

validity of [a] patent” even where there has been a judgment of non-infringement).4 

Fourth, although the Federal Circuit has confirmed that (1) it is “entirely appropriate for 

the district court to address [an affirmative] defense ... after the jury returned a non-infringement 

verdict,” Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004, 1025 (Fed. Cir. 2008), and (2) “a 

district court [is permitted] to resolve the issue of invalidity, even if the issue was raised only as 

an affirmative defense and even if the court finds that the patent was not infringed,” Hill-Rom Co. 

 

3

 Motion Offense’s attempt (Dkt. 429 at 3-4) to distinguish Lindemann should be rejected. 

Although Lindemann involved an invalidity counterclaim, the “inefficiencies” it acknowledges are 

no less applicable to affirmative defenses. In Lindemann, after a trial, the district court entered 

judgment on only the defendant’s invalidity counterclaim. 730 F.2d at 1457. In reversing and 

remanding, the Federal Circuit observed that because the district court had declined to enter 

judgment on non-infringement, it had risked the “inefficient[cy]” of “the parties undertaking 

participation in another long and costly proceeding.” Id. at 1463-64. The same could be true here 

were the Court to decline to enter judgment on the jury’s invalidity verdict. 

4

 Motion Offense’s claim that Deposit Guaranty “clarified” the Supreme Court’s decision in 

Sinclair is incorrect. Dkt. 429 at 3. Motion Offense ignores that Cardinal Chem., which issued 

over a decade after Deposit Guaranty, relies upon Sinclair for the proposition that district courts 

may “consider the question of validity even though it had found that a patent had not been 

infringed.” 508 U.S. at 100. And as explained supra, Deposit Guaranty makes clear that cases 

are not moot when, as in this case, “the case [i]s still live.” 445 U.S. at 335. 

Case 6:20-cv-00251-ADA Document 431 Filed 02/20/24 Page 6 of 9
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v. Kinetic Concepts, Inc., 209 F.3d 1337, 1344 (Fed. Cir. 2000),5 Motion Offense nonetheless 

points to inapposite cases where the district court decided the issue of non-infringement on 

summary judgment, and later declined to move on to other issues. See VLSI Tech. LLC v. Intel 

Corp., No. 17-CV-05671, 2024 WL 269163, at *2 (N.D. Cal. Jan. 24, 2024) (considering whether 

to proceed to trial on a license defense after granting summary judgment of non-infringement); 

Silicon Graphics, Inc. v. ATI Techs., Inc., No. 06-CV-611, 2011 WL 322664, at *3 (W.D. Wis. 

Jan. 31, 2011) (noting that the court would have denied a request for an invalidity-only trial had 

defendant sought one following a grant of summary judgment of non-infringement); Wireless Ink 

Corp. v. Facebook, Inc., 969 F. Supp. 2d 318, 338-39 (S.D.N.Y. 2013) (declining to decide a 

motion for summary judgment of invalidity after granting summary judgment of noninfringement).6

 As stated above, here, the jury simultaneously found no infringement and 

invalidity, and a single judgment will enter on both issues. 

Motion Offense has failed to identify a single case finding that the district court lacks 

Article III jurisdiction to enter a jury’s simultaneous verdict of invalidity and non-infringement. 

The cases entering judgment on such verdicts are well-grounded in Supreme Court and Federal 

Circuit precedent. This Court thus clearly has the Constitutional authority to enter judgment on 

the jury’s verdict in its entirety, including as to the Patents at Issue. 

 

5

 That Hill-Rom supposedly does not “condone” this approach (Dkt. 429 at 4), is irrelevant, as this 

Court has already determined that it will enter judgment so long as it has jurisdiction to do so. See

1/3/2024 Hearing Tr. at 27:14-23. As explained above, it does. 6 Flexuspine—Motion Offense’s only cited case in which a jury returned a non-infringement 

verdict—is inapposite. Flexuspine, Inc. v. Globus Med., Inc., No. 6:15-CV-201, 2016 WL 

9276025, at *5 (E.D. Tex. Oct. 3, 2016), aff’d, 879 F.3d 1369 (Fed. Cir. 2018). The question in 

Flexuspine was not whether the district court had jurisdiction to enter judgment on an invalidity 

affirmative defense following the jury’s non-infringement verdict. Instead, the district court 

considered whether defendant’s agreement to a stop instruction asking the jury to consider the 

defendant’s counterclaim of invalidity only if the patent was found infringed violated the Seventh 

Amendment. Id. at *4-5. It did not. Id.

Case 6:20-cv-00251-ADA Document 431 Filed 02/20/24 Page 7 of 9
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February 20, 2024 Respectfully submitted, 

/s/ Gregory H. Lantier 

Gregory H. Lantier 

Amanda L. Major (pro hac vice) 

WILMER CUTLER PICKERING HALE & 

DORR LLP 

2100 Pennsylvania Avenue 

Washington DC 20037 

Tel: (202) 663-6327 

Tel: (202) 663-6304 

gregory.lantier@wilmerhale.com 

amanda.major@wilmerhale.com 

Harry L. Gillam, Jr. 

Texas State Bar No. 07921800 

GILLAM & SMITH, L.L.P. 

303 South Washington Avenue 

Marshall, Texas 75670 

Tel: (903) 934-8450 

Fax: (903) 934-9257 

gil@gillamsmithlaw.com

Kelly Ransom 

Texas State Bar No. 24109427 

KELLY HART & HALLMAN LLP 

303 Colorado, Suite 2000 

Austin, Texas 78701 

Tel: (512) 495-6464 

Kelly.ransom@kellyhart.com 

Liv Herriot 

WILMER CUTLER PICKERING HALE & 

DORR LLP 

2600 El Camino Real, Suite 400 

Palo Alto, California 94306 

Tel: (650) 858-6138 

liv.herriot@wilmerhale.com 

Rauvin A. Johl (pro hac vice) 

Makenzi G. Herbst (pro hac vice) 

WILMER CUTLER PICKERING HALE & 

DORR LLP 

60 State Street 

Boston, MA 02109 

Tel: (617) 526-6171 

Case 6:20-cv-00251-ADA Document 431 Filed 02/20/24 Page 8 of 9
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Tel: (617) 526-6104 

Tel: (617) 526-6109 

makenzi.herbst@wilmerhale.com 

rauvin.johl@wilmerhale.com 

ATTORNEYS FOR DROPBOX, INC. 

CERTIFICATE OF SERVICE 

 I hereby certify that all counsel of record are being served with a copy of the foregoing 

document via the Court’s CM/ECF system on February 20, 2024. 

 /s/ Kelly Ransom 

 

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