i

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 RESPONSE TO MOTION OFFENSE, LLC’S

MOTION FOR JURY INSTRUCTION - ABANDONMENT

Case 6:20-cv-00251-ADA Document 363 Filed 05/18/23 Page 1 of 6
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Dropbox respectfully submits this response to Motion Offense’s Motion for Jury 

Instruction on Abandonment (Dkt. 362). 

Dropbox disagrees that any instruction on abandonment is warranted or necessary in this 

case. Motion Offense is seeking to claim the benefit of the filing date of two applications filed in 

2012: U.S. Patent Application Nos. 13/626,635 (the “’635 application”) and U13/624,906 (the 

“’906 application”)—an issue on which Motion Offense bears the burden. There is no dispute 

that the asserted patents contain material not contained in the ’635 and ’906 applications, or that 

those applications are, in fact, abandoned—indeed, that fact is stated directly on the cover of the 

asserted patents:

Case 6:20-cv-00251-ADA Document 363 Filed 05/18/23 Page 2 of 6
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Contrary to Motion Offense’s assertion, the fact that the applicant filed patent 

applications that fail to include a description that would support the asserted claims, abandoned 

those applications, and then later filed new patent applications containing additional subject 

matter is very much relevant to invalidity in this case, including whether the asserted patents are 

entitled to the priority benefit of the 2012 applications. It is thus misleading and prejudicial to 

instruct the jury—as Motion Offense proposes—that “‘abandonment’ of these two patent 

applications in the USPTO has no relevance to the issues of invalidity of the patents at issue” or 

that “abandonment of a patent application is not the same as abandonment of an invention.” See

Dkt. 362, Ex. A. 

Nor is there any reason for the Court to comment on the significance of the evidence as 

Motion Offense proposes. As the evidence has shown, Dropbox contests whether the asserted 

patents “originate from” the 2012 patent applications—indeed, Dropbox contends that those 

applications do not provide support for the claims asserted in this case. Nor is there a basis for 

commenting on how Dropbox can (or cannot) meet is burden to prove invalidity, which is 

addressed elsewhere in the jury instructions. 

To the extent that any instruction on abandonment is warranted at all, the Court should 

instruct the jury on what constitutes abandonment as expressly set forth in the U.S. Patent 

Office’s Manual of Patent Examining Procedure (“MPEP”): 

You have heard evidence that U.S. Patent Application Nos. 13/626,635 and 

U13/624,906 were abandoned. Abandonment of a patent application is 

determined by the rules of the U.S. Patent Office. Under those rules, if an 

applicant of a patent application fails to reply to the Patent Office within the time 

period provided by law, the application will become abandoned.

See MPEP § 711 (“If an applicant of a patent application fails to reply within the time period 

provided under § 1.134 and § 1.136, the application will become abandoned unless an Office 

action indicates otherwise.”); see also 35 U.S.C. § 133 (“Upon failure of the applicant to 

Case 6:20-cv-00251-ADA Document 363 Filed 05/18/23 Page 3 of 6
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prosecute the application within six months after any action therein, of which notice has been 

given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by 

the Director in such action, the application shall be regarded as abandoned by the parties 

thereto.”).

Accordingly, Dropbox respectfully requests that Motion Offense’s Motion for Jury 

Instruction on Abandonment (Dkt. 362) be denied, or alternatively, that the above-proposed 

instruction be given in lieu of the instruction proposed by Motion Offense. 

Case 6:20-cv-00251-ADA Document 363 Filed 05/18/23 Page 4 of 6
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May 18, 2023 Respectfully submitted,

/s/ Gregory H. Lantier

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

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

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

Makenzi G. Herbst (pro hac vice)

Rauvin A. Johl (pro hac vice)

Jeannette Leopold (pro hac vice)

WILMER CUTLER PICKERING HALE & 

DORR LLP

60 State Street

Boston, MA 02109 

Tel: (617) 526-6171

Tel: (617) 526-6104

Tel: (617) 526-6109

makenzi.herbst@wilmerhale.com

rauvin.johl@wilmerhale.com

jeannette.leopold@wilmerhale.com 

Attorneys for Dropbox, Inc.

Case 6:20-cv-00251-ADA Document 363 Filed 05/18/23 Page 5 of 6
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CERTIFICATE OF SERVICE

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

document via electronic mail on May 18, 2023.

/s/ Kelly Ransom

Kelly Ransom

Case 6:20-cv-00251-ADA Document 363 Filed 05/18/23 Page 6 of 6