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

JURY TRIAL DEMANDED

MOTION OFFENSE, LLC,

Plaintiff,

v.

DROPBOX, INC.,

Defendant.

Civil Action No. 6:21-cv-00758-ADA

JURY TRIAL DEMANDED

MOTION OFFENSE, LLC’S SUPPLEMENTAL BRIEF 

REGARDING SUBJECT MATTER JURISDICTION

Case 6:20-cv-00251-ADA Document 429 Filed 02/06/24 Page 1 of 11
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Dated: February 6, 2024 Timothy Devlin (DE Bar No. 4241) 

Derek Dahlgren (pro hac vice) 

Alex Chan (Texas Bar No. 24108051)

Donald Puckett (Texas Bar No. 24013358)

Srikant Cheruvu (pro hac vice)

Andrew Sherman (pro hac vice)

Jedidiah Phillips (pro hac vice) 

DEVLIN LAW FIRM LLC 

1526 Gilpin Ave., 

Wilmington, DE 19806 

Telephone: (302) 449-9010 

tdevlin@devlinlawfirm.com 

ddahlgren@devlinlawfirm.com 

achan@devlinlawfirm.com 

dpuckett@devlinlawfirm.com

scheruvu@devlinlawfirm.com

asherman@devlinlawfirm.com

jphillips@devlinlawfirm.com

ATTORNEYS FOR MOTION OFFENSE, LLC

Case 6:20-cv-00251-ADA Document 429 Filed 02/06/24 Page 2 of 11
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TABLE OF CONTENTS

I. INTRODUCTION AND FACTUAL BACKGROUND..................................................... 1

II. ARGUMENT....................................................................................................................... 1

A. Entry Of Judgment On Priority And Invalidity For The Two Patents Is Improper 

Due to Lack of Case or Controversy............................................................................. 1

III. CONCLUSION.................................................................................................................... 5

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TABLE OF AUTHORITIES

Cases

Altvater v. Freeman, 

319 U.S. 359 (1943) .................................................................................................................... 2 

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

508 U.S. 83 (1993) .............................................................................................................. 2, 3, 4 

Deposit Guar. Nat’l Bank v. Roper, 

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

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

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

Flexuspine, Inc. v. Globus Med., 2016 U.S. Dist. LEXIS 199478, 

aff’d, 879 F.3d 1369 (Fed. Cir. 2018) ......................................................................................... 5 

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

209 F.3d 1337 (Fed. Cir. 2000)................................................................................................... 4 

IGT v. Bally Gaming Int'l Inc., 

610 F. Supp. 2d 288 (D. Del. 2009) ............................................................................................ 5 

Lacks Indus. v. McKechnie Vehicle Components USA, Inc., 

322 F.3d 1335 (Fed. Cir. 2003)................................................................................................... 3

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

730 F.2d 1452 (Fed. Cir. 1984)............................................................................................... 3, 4 

Multiform Desiccants, Inc. v. Medzam Ltd., 

133 F.3d 1473 (Fed. Cir. 1999)................................................................................................... 4 

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

484 F.3d 1359 (Fed. Cir. 2007)................................................................................................... 2 

Qualcomm Inc. v. Broadcom Corp., 

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

Silicon Graphics, Inc. v. ATI Techs., 

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

VLSI Tech. LLC v. Intel Corp., 

2024 U.S. Dist. LEXIS 12850 (N.D. Cal. Jan. 24, 2024) ........................................................... 5 

Wireless Ink Corp. v. Facebook, Inc., 

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

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I. INTRODUCTION AND FACTUAL BACKGROUND

On January 8, 2024, the Court ordered the parties to submit briefing regarding whether the 

finding of non-infringement mooted the Court’s subject matter jurisdiction to enter judgment 

concerning the priority date and validity of the ʼ548 and ʼ215 patents (the “Two Patents”) which 

Dropbox only challenged by affirmative defense. (Dkt. 427.) The Court previously ruled that 

these issues would not be submitted to jury if the jury found the relevant claims were not infringed: 

MS. AMADI: Your Honor had indicated yesterday that, you know, typically in --

where there's a finding of noninfringement and there's no counterclaim of 

invalidity, that that typically moots the jury's obligation to find invalidity going 

forward. And I believe in this case, there are two patents in which Dropbox has 

asserted a counterclaim of invalidity and two patents in which there is a defense of 

invalidity. Your Honor had indicated that the -- two -- the verdict form would have 

to be essentially split to allow the jury to go forward with addressing the two on 

which there are counterclaims and not addressing the two on which there are not 

counterclaims in the event that the jury finds noninfringement. We would ask that 

Your Honor submit the issue of invalidity on all four asserted patents to the jury – 

THE COURT: I'm not going to do that. 

Trial Trans. at 1233:11-1234:4 (emphasis added). The Court’s earlier ruling to exclude those 

issues from the verdict if the jury found the Two Patents were not infringed was correct. As 

Dropbox acknowledged, a finding of non-infringement “typically moots” an affirmative defense 

of invalidity. Id. For the same reason, finding non-infringement eliminates subject matter 

jurisdiction to enter judgment on Dropbox’s affirmative defenses of invalidity. 

II. ARGUMENT

A. Entry Of Judgment On Priority And Invalidity For The Two Patents Is 

Improper Due to Lack of Case or Controversy 

Entry of judgment of the jury’s answers disobeying the Court’s stop instructions in the 

verdict form with respect to priority and the affirmative defense of invalidity for claim 46 of the 

’548 patent and claim 18 of the ’215 patent should not be entered. Under binding Supreme Court 

precedent, judgment of noninfringement moots Dropbox’s affirmative defenses of invalidity 

regarding the Two Patents and divests it of subject matter jurisdiction to enter judgment on that 

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basis. The Court’s order, (Dkt. 427), pointed the parties to Cardinal Chem. Co. v. Morton Int’l, 

Inc., 508 U.S. 83, 93–94 (1993). (Dkt. 427 at 2.) Importantly, Cardinal, concerned a counterclaim 

for a declaratory judgment of invalidity, not an affirmative defense of invalidity. Cardinal, 508 

U.S. at 85-86. As confirmed by Cardinal, the two issues are “critically different.” Id. at 93-94. 

As Cardinal acknowledges, the former situation falls under Electrical Fittings Corp. v. Thomas & 

Betts Co., 307 U.S. 241 (1939), which involved an affirmative defense of invalidity that was 

stricken from the final judgment for being immaterial to the disposition of the cause, i.e., moot:

The issue of invalidity in Electrical Fittings was raised only as an affirmative 

defense to the charge that a presumptively valid patent had been infringed, not (as 

in Fonar, and as here) as a basis for a counterclaim seeking a declaratory judgment 

of patent invalidity. An unnecessary ruling on an affirmative defense is not 

the same as the necessary resolution of a counterclaim for a declaratory 

judgment.

Cardinal Chem., 508 U.S. at 93-94 (emphasis added). See also Electrical Fittings, 307 U.S. at 

242-43. In Cardinal, the Supreme Court left no doubt about the significance of that distinction

when it contrasted Electrical Fittings with Altvater v. Freeman, which did involve a counterclaim 

of invalidity:

Distinguishing our holding in Electrical Fittings, we wrote “To hold a patent valid 

if it is not infringed is to decide a hypothetical case. But the situation in the present 

case is quite different. We have here not only bill and answer but a 

counterclaim. Though the decision of noninfringement disposes of the bill and 

answer, it does not dispose of the counterclaim which raises the question of 

validity.”

Cardinal, 508 U.S. at 94 (quoting Altvater v. Freeman, 319 U.S. 359, 363-64 (1943)). Here, as in 

Electrical Fittings and confirmed by subsequent Supreme Court cases, no subject matter 

jurisdiction exists to enter judgment on Dropbox’s affirmative defenses related to the Two Patents. 

As this Court noted in its Order (Dkt. 427) PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 

1368 (Fed. Cir. 2007) properly follows Supreme Court precedent. PODS explicitly states that 

affirmative defenses of invalidity are mooted once non-infringement is found: “our finding of nonCase 6:20-cv-00251-ADA Document 429 Filed 02/06/24 Page 6 of 11
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infringement moots any affirmative defense of invalidity[.]” PODS, 484 F.3d at 1368. Lacks 

Indus. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335 (Fed. Cir. 2003), which

preceded PODS, stands for the same proposition: “As a threshold matter, we note that we do not 

reach the validity issues pertaining to the [asserted] patents because we have affirmed the trial 

court’s grant of summary judgment of non-infringement and because invalidity was raised below 

merely as an affirmative defense to infringement.” Lacks Indus., 322 F.3d at 1346 (citing 

Cardinal, 508 U.S. at 93). Like those cases, here, Dropbox’s affirmative defenses of invalidity 

regarding the Two Patents became moot upon finding non-infringement. Therefore, this Court 

lacks subject matter jurisdiction to enter judgment on invalidity for the Two Patents, including 

ancillary findings related to priority. 

Dropbox’s reliance on Sinclair & Carroll Co. v. Interchemical Corp. is unavailing. As the 

Supreme Court subsequently clarified in Deposit Guaranty National Bank v. Roper, inquiring into 

validity is different than entering judgment on a hypothetical controversy. Deposit Guar. Nat’l 

Bank v. Roper, 445 U.S. 326, 335 n.7 (1980) (“The District Court was correct in inquiring fully 

into the validity of the patent, but was incorrect to adjudge the patent valid after ruling that there 

had been no infringement. By doing so, the District Court had decided a hypothetical controversy 

. . . .”) 

Dropbox’s other caselaw is similarly irrelevant to the issue presented here. For example, 

Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004 (Fed. Cir. 2008) and Lindemann 

Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452 (Fed. Cir. 1984) are readily 

distinguishable. In Qualcomm, Qualcomm’s failure to appeal non-infringement did not moot its 

appeal of the Court’s ruling on Broadcom’s equitable defense of unenforceability, which affected 

Qualcomm’s entire patent and had broader scope that the judgment of non-infringement unlike the 

present case. Qualcomm, 548 F.3d at 1011 n.1, 1024-26. In Lindemann, which predates Cardinal 

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there was a counterclaim for declaratory judgment; no affirmative defense of invalidity was at 

issue. Lindemann, 730 F.2d at 1463-64 (Fed. Cir. 1984). These cases are inapposite.

Likewise, the Federal Circuit’s opinions in Hill-Rom Co. v. Kinetic Concepts, Inc., 209 

F.3d 1337 (Fed. Cir. 2000) and Multiform Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473 (Fed. 

Cir. 1999) do not require nor support a different result. In Multiform Dessicants ̧ the Federal 

Circuit stated in dicta that “[t]he district court recognized that it could in its discretion decide this 

affirmative defense, but chose not to,” but then proceeded to clarify that statement, noting:

Although viewed by Medzam as a mere technicality, it is dispositive that Medzam 

did not file a counterclaim for a declaration of invalidity. The Supreme Court 

in [Cardinal Chem. Co. v. Morton Int'l, Inc.,] drew a dispositive distinction 

between an affirmative defense and a counterclaim for a declaratory judgment. The 

Court stated: “An unnecessary ruling on an affirmative defense is not the same as 

the necessary resolution of a counterclaim for a declaratory judgment.” A request 

for a ruling of invalidity, for example as in Medzam's motion for judgment as a 

matter of law filed after close of the plaintiff's case, does not convert the defense 

into a counterclaim; nor does the filing of a trial brief, nor the filing of proposed 

findings and conclusions on the issue of validity.

Multiform Desiccants, 133 F.3d at 1481 (quoting Cardinal, 508 U.S. at 93-94) (emphasis added).

Dropbox ignores the Court’s clarification regarding this “dispositive” distinction. Likewise, in 

Hill-Rom, the Federal Circuit stated in dicta that “Multiform Desiccants permits a district court 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, 209 F.3d at 1344. But Hill-Rom

did not condone this course of action. Indeed, the Federal Circuit stated that invalidity “was raised 

only as an affirmative defense by KCI, not in the form of a counterclaim, and the district court 

therefore did not include in the judgment any reference to its ruling on the issue of invalidity.” 

Id. (emphasis added). The Federal Circuit also recognized that any finding regarding invalidity 

would have been meaningless: “[T]he district court’s resolution of the issue of invalidity was not 

necessary to the judgment. For that reason, the court’s invalidity ruling will have no collateral 

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estoppel effect in any possible future dispute between the parties involving the [asserted] patent.” 

Id. These cases do not create jurisdiction where none exists. 

A recent district court decision in the Northern District of California, VLSI Tech. LLC v. 

Intel Corp., 2024 U.S. Dist. LEXIS 12850 (N.D. Cal. Jan. 24, 2024), involving Dropbox’s counsel 

is instructive. The VLSI court unequivocally stated that “Courts regularly hold that a finding of 

non-infringement moots any affirmative defenses.” Id. at *6-7 (citing IGT v. Bally Gaming Int'l 

Inc., 610 F. Supp. 2d 288, 331 (D. Del. 2009) (“[I]n light of the court's conclusion that defendants 

do not infringe the ’983 patent, the court denies as moot both parties’ motions for summary 

judgment with respect to whether an implied license covers the ‘983 patent.”) aff'd, 659 F.3d 1109 

(Fed. Cir. 2011)). Other courts have reached the same conclusion. E.g., Flexuspine, Inc. v. Globus 

Med., 2016 U.S. Dist. LEXIS 199478, *14 (“In the context of a patent case such as this case, a 

judgment of non-infringement necessarily moots an affirmative defense of invalidity[.]”) aff’d, 

879 F.3d 1369 (Fed. Cir. 2018); Silicon Graphics, Inc. v. ATI Techs., 2011 WL 322664, at *3 

(W.D. Wis. Jan. 31, 2011) (“One difference between a counterclaim and an affirmative defense is 

that resolution of a plaintiff’s claim in favor of a defendant always moots the affirmative defense 

. . . Thus, even if defendants had wanted to try their affirmative defenses with respect to claims 2–

6, I would have denied that request on mootness grounds”); Wireless Ink Corp. v. Facebook, Inc., 

969 F. Supp. 2d 318, 338–39 (S.D.N.Y. 2013) (“[W]here, as here, the issue of invalidity is raised 

solely as an affirmative defense, rather than as a counterclaim for declaratory judgment, a district 

court’s resolution of the invalidity issue after a finding of non-infringement constitutes 

unnecessary dicta, if not, in certain circumstances, reversible error.”) 

III. CONCLUSION

For at least the foregoing reasons, the Court lacks subject matter jurisdiction to enter 

judgment on Dropbox’s affirmative defenses of invalidity including priority for the Two Patents.

Case 6:20-cv-00251-ADA Document 429 Filed 02/06/24 Page 9 of 11
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Dated: February 6, 2024 Respectfully submitted,

/s/ Derek Dahlgren 

Timothy Devlin (DE Bar No. 4241) 

Derek Dahlgren (pro hac vice) 

Alex Chan (Texas Bar No. 24108051) 

Donald Puckett (Texas Bar No. 24013358) 

Srikant Cheruvu (pro hac vice) 

Andrew Sherman (pro hac vice) 

Jedidiah Phillips (pro hac vice) 

DEVLIN LAW FIRM LLC 

1526 Gilpin Ave., 

Wilmington, DE 19806 

Telephone: (302) 449-9010 

tdevlin@devlinlawfirm.com 

ddahlgren@devlinlawfirm.com 

achan@devlinlawfirm.com 

dpuckett@devlinlawfirm.com 

scheruvu@devlinlawfirm.com 

asherman@devlinlawfirm.com 

jphillips@devlinlawfirm.com 

ATTORNEYS FOR MOTION OFFENSE, LLC

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CERTIFICATE OF SERVICE

I hereby certify that on February 6, 2024 a true and correct copy of the above and 

foregoing document has been served on all counsel of record via the Court’s ECF system. 

/s/ Derek Dahlgren

 Derek Dahlgren

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