IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

DROPBOX, INC., 

Plaintiff/CounterDefendant, 

v. 

MOTION OFFENSE, LLC, 

Defendant/CounterPlaintiff. 

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 

PARTIAL SUMMARY JUDGMENT AGAINST DROPBOX AFFIRMATIVE DEFENSES 

NOT INVOLVING PRIOR ART 

PUBLIC VERSION

Case 6:20-cv-00251-ADA Document 255 Filed 03/28/23 Page 1 of 12
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TABLE OF CONTENTS 

I. INTRODUCTION ...............................................................................................................1

II. LEGAL STANDARDS .......................................................................................................1

III. ARGUMENT .......................................................................................................................2

A. Motion Offense’s Summary Judgment Should Be Denied with Respect to 

Inequitable Conduct .................................................................................................2

1. There Is Ample Evidence in Support of Dropbox’s Inequitable Conduct 

Claim ........................................................................................................................3

B. Motion Offense’s Motion for Summary Judgment Should Be Denied with 

Respect to Prosecution History Estoppel .................................................................6

C. Motion Offense’s Motion for Summary Judgment Should Be Denied with 

Respect to Ensnarement ...........................................................................................6

IV. CONCLUSION ....................................................................................................................7

 

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TABLE OF AUTHORITIES 

Page(s) 

CASES 

Anderson v. Liberty Lobby, Inc., 

477 U.S. 242 (1986) .............................................................................................................1 

Arigna Tech. Ltd. v. Nissan Motor Co., 

2022 WL 18046696 (E.D. Tex. October 24, 2022), (see Br. ) ............................................6 

Digital Control, Inc. v. Charles Mach. Works, 

437 F.3d 1309 (Fed. Cir. 2006)........................................................................................2, 3 

Jang v. Bos. Sci. Corp., 

872 F.3d 1275 (Fed. Cir. 2017)........................................................................................6, 7 

M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 

439 F.3d 1335 (Fed. Cir. 2006)........................................................................................2, 3 

Ohio Willow Wood Co. v. Alps S., LLC, 

735 F.3d 1333 (Fed. Cir. 2013)............................................................................................3 

Streamfeeder, LLC v. Sure-Feed, Inc., 

175 F.3d 974 (Fed. Cir. 1999)..............................................................................................7 

Therasense, Inc. v. Becton, Dickinson & Co., 

649 F.3d 1276 (Fed. Cir. 2011)............................................................................................3 

Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 

904 F.2d 677 (Fed. Cir. 1990)..............................................................................................7 

STATUTES, RULES, AND REGULATIONS 

35 U.S.C. § 287’ ..............................................................................................................................1 

Fed. R. Civ. P. 56(a) ........................................................................................................................1 

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I. INTRODUCTION 

Motion Offense seeks summary judgment as to six of the affirmative defenses raised by 

Dropbox in its amended answer.1 Instead of engaging with the record in this case, Motion Offense 

simply alleges that there is insufficient evidence to support these defenses. See Dkt. 198 [Motion 

Offense, LLC’s Motion for Partial Summary Judgment Against Dropbox Affirmative Defenses 

Not Involving Prior Art] (“Br.”) at 3-4. Contrary to Motion Offense’s assertion, there is ample 

evidence to support Dropbox’s inequitable conduct defense. At a minimum, this shows that 

disputes of material fact exist and should therefore preclude summary judgment. 

With regards to prosecution history estoppel and ensnarement, these defenses depend on 

the doctrine of equivalents theories alleged in this case. However, Motion Offense has failed to 

present any doctrine of equivalents theories. As a result, Dropbox’s Motion for Summary 

Judgment of Non-infringement regarding the doctrine of equivalents, Dkt. 196 at 6-8, should be 

granted, and Motion Offense’s motion should be denied as moot with regards to prosecution 

history estoppel and ensnarement. 

II. LEGAL STANDARDS 

Summary judgment is proper only “if the movant shows that there is no genuine dispute as 

to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 

56(a); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986). 

1

 Dropbox does not oppose Motion Offense’s motion with regards to “Dropbox’s Fourth 

Affirmative Defense: ‘Waiver, Estoppel, Acquiescence, Unclean Hands, and Implied License’” 

and “Dropbox’s Ninth Affirmative Defense: ‘Failure to Conduct Pre-Suit Investigation.’” 

Dropbox also does not oppose Motion Offense’s motion with regards to “Dropbox’s Third 

Affirmative Defense: ‘Failure to Provide Notice Pursuant to 35 U.S.C. § 287’” in light of Motion 

Offense’s admission that it does not practice the asserted patents. See Ex. A, Motion Offense, 

LLC’s Third Suppl. Objections and Resps. to Dropbox, Inc.’s First Set of Interrogs. (Nos. 1-11) at 

50 (“Motion Offense has not practiced any claims of the Asserted Patents.”). 

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III. ARGUMENT 

A. Motion Offense’s Summary Judgment Should Be Denied with Respect to 

Inequitable Conduct 

The entirety of Motion Offense’s argument is that Dropbox allegedly “cannot present 

evidence sufficient to permit a jury to find in its favor on its inequitable conduct affirmative 

defense.” Br. at 9. That is simply not true. The facts underpinning Dropbox’s inequitable conduct 

defense demonstrate, at a minimum, that disputes of material fact exist. 

As set forth in Dropbox’s amended answer (Dkt. 119), Dropbox’s opposition to Motion 

Offense’s motion to strike (Dkt. 133),2

 Dropbox’s interrogatory responses (Ex. B, Dropbox Inc.’s 

Fourth Suppl. Objections and Resps. to Motion Offense, LLC’s Third Set of Interrogs. to Dropbox, 

Inc. (Nos. 13-29) at 44-46), and the expert report of Dr. Michael Shamos, Motion Offense’s patents 

are unenforceable due to inequitable conduct because the individuals who prosecuted the asserted 

patents intentionally misled the Patent Office about the functionality of Dropbox. Robert Paul 

Morris, the sole named inventor of the asserted patents, and individuals who assisted Mr. Morris 

with drafting and prosecuting the applications, explicitly told and maintained to the patent 

examiner that Dropbox was not the disclosed invention. Yet, Motion Offense has reversed course 

and is now asserting that its claims cover Dropbox products and accusing some features that have 

been present in Dropbox products since at least as early as July 2012, before the earliest priority 

date that Motion Offense claims. 

Summary judgment on the issue of inequitable conduct is uncommon given the “inherently 

factual nature of the issue of intent.” Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 

1317 (Fed. Cir. 2006); see M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 439 F.3d 1335, 

2

 Dropbox incorporates by reference the arguments made in its Response in Opposition to Motion 

Offense LLC’s Motion to Strike Dropbox, Inc’s Inequitable Conduct Defense, Dkt. 133. 

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1340 (Fed. Cir. 2006) (“[T]his court ‘urges caution’ in making an inequitable conduct 

determination at the summary judgment stage.” (citation omitted)). “Intent need not be proven by 

direct evidence. Intent is generally inferred from the facts and circumstances surrounding the 

applicant's overall conduct, especially where there is no good faith explanation for a 

nondisclosure.” M. Eagles Tool Warehouse, 439 F.3d at 1341 (citations omitted); see also 

Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011) (“Because 

direct evidence of deceptive intent is rare, a district court may infer intent from indirect and 

circumstantial evidence.”). At the summary judgment stage “all inferences must be made in favor 

of the nonmovant.” Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 1317 (Fed. Cir. 

2006); see, e.g., Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1345 (Fed. Cir. 2013) 

(reversing grant of summary judgment of no inequitable conduct). 

1. There Is Ample Evidence in Support of Dropbox’s Inequitable Conduct 

Claim 

All of the asserted patents claim priority, indirectly, to two applications: No. 13/624,906, 

filed on September 22, 2012, and No. 13/626,635, filed on September 25, 2012 (collectively, the 

“Original Applications”). 

The ’635 application’s specification states in the background section that “[a] variety of 

means exist for sharing filed [sic], folders, and other data via [a] network. For each a user must 

know how to configure and/or setup the sharing. For example, sharing a file [via] a Samba file 

system is different than sharing a via [sic] cloud based storage system, such as DROPBOX. 

Sharing via email is still different. Sharing copies of files is perhaps the best know[n] means and 

most widely used means for sharing copies. It would [be] useful if sharing files, folders, directory 

data, and other network accessible data were as easy as sending an attachment in an email.” Ex. 

C [’635 Application] ¶ [0005] (emphasis added). The only mention of Dropbox to the Patent 

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Office during the prosecution of the Original Applications was this reference to Dropbox 

distinguishing it from the alleged inventions in the ’635 application. See Ex. D [Shamos Rep.] ¶ 

136. No documents describing Dropbox were provided to the Patent Office during the prosecution 

of the Original Applications. See id. 

The ’635 Application, and thus its statement distinguishing Dropbox from the alleged 

invention, is incorporated by reference into each of the asserted patents. Dkt. 43 at Ex. A [’158 

patent] at 1:25-32; id. at Ex. B [’052 patent] at 1:44-50; id. at Ex C [’353 patent] at 1:30-37; id. at 

Ex. D [’737 patent] at 1:33-40; id. at Ex. E [’548 patent] at 1:48-53; Dkt. 196-2 [“’215 patent”] at 

1:52-57. During prosecution of the ’158, ’052, and ’353 patents, the applicant did not provide the 

Patent Office any disclosures related to Dropbox as it existed prior to the claimed priority date. 

See Ex. D [Shamos Rep.] ¶¶ 166, 177, 186.3

 

The asserted patents were prosecuted by Mr. Morris with the assistance, at least in part, of 

Andrew Gordon, manager of Motion Offense, and attorneys Patrick Caldwell and Kevin Zilka. 

See Ex. A [Motion Offense, LLC’s Third Suppl. Objections and Resps. to Dropbox, Inc’s First Set 

of Interrogs. (Nos. 1-11)] at 47 (“Motion Offense also identifies attorneys Kevin Zilka, Andrew 

Gordon, Britten Sessions, and Patrick Caldwell as persons knowledgeable regarding prosecution 

of the Asserted Patents.”). Mr. Morris, Mr. Zilka, and Mr. Gordon were all aware of Dropbox 

prior to the filing of the Original Applications. See Ex. D [Shamos Rep.] ¶ 136. Records show 

that Mr. Zilka created a Dropbox account on March 26, 2012 and Mr. Morris created a Dropbox 

account on June 11, 2012. Id.; Ex. E [DRBX_MoOFF_000062723]; Ex. F 

3

 For the prosecution of the ’737 and ’548 patents, the applicant only provided to the Patent Office 

three Dropbox references that failed to show the full functionality of Dropbox as it existed prior 

to the claimed priority date, see id. ¶¶ 195, 204, and for the prosecution of the ’215 patent, the 

applicant did not provide the Patent Office any disclosures related to Dropbox as it existed prior 

to the claimed priority date until after the notice of allowance, see id. ¶ 219. 

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[DRBX_MoOFF_000062738]. Mr. Gordon testified that he had personal knowledge that Dropbox 

had a software product in service as early as mid-2012 because he created a Dropbox account at 

that time. Ex. G [Gordon Dep.] at 176:21-180:19; see also Ex. H [Motion Offense, LLC’s First 

Suppl. Objections and Resps. to Dropbox Inc.’s Third Set of Interrogs. (Nos. 17-18)] at 8-9 

(“Motion Offense was aware at the time of its formation in 2018 that Dropbox had a software 

product and service as early as mid-2012”). As users, Mr. Morris, Mr. Gordon and Mr. Zilka 

should have known about Dropbox’s features. They likely knew that in 2012 Dropbox already 

included the features that Motion Offense now accuses of infringement. But they disclosed 

nothing to the Patent Office about the relevant Dropbox functionality and instead expressly told 

the examiner that Dropbox was not the accused invention. 

Those involved in the prosecution of the asserted patents were aware of Dropbox, failed to 

disclose known information about Dropbox products to the Patent Office, and misrepresented to 

the Patent Office, expressly stating, that the claimed invention was different from Dropbox. 

Combined with Motion Offense’s current representation that Dropbox infringes the asserted 

patents, this conduct is especially egregious and demonstrates an intent to deceive. 

Moreover, the claims of the asserted patents would not have issued but for the omission of 

Dropbox prior art and the misrepresentation made to the examiner. As Dr. Shamos details in his 

report, “[u]nder Plaintiff’s apparent infringement theory, [Dropbox 2009 and Dropbox 2011] 

anticipate[] or render[] obvious all the Asserted Claims.” Ex. D [Shamos Rep.] ¶¶ 627, 666. This 

is because the allegedly infringing features of Dropbox were already in public use before the 

priority date of the asserted patents. See id. ¶¶ 167, 178, 187, 196, 205, 220. “[U]nder Motion 

Offense’s application of the claims in its infringement contentions, the publicly available 

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documents and videos describing Dropbox in 2009 and 2011 ... would have been material to 

patentability” for each of the asserted patents. Id. 

Therefore, there is ample evidence in support of Dropbox’s inequitable conduct claim. As 

a result, summary judgment should be denied. 

B. Motion Offense’s Motion for Summary Judgment Should Be Denied with 

Respect to Prosecution History Estoppel 

Motion Offense contends that “Dropbox’s allegations in support of its prosecution history 

estoppel defense are entirely conclusory.” Br. at 6. But if that is correct, then Motion Offense’s 

doctrine of equivalents infringement allegations are similarly “entirely conclusory.” Dropbox’s 

prosecution history estoppel defense depends on Motion Offense’s doctrine of equivalents 

allegations. As detailed in Dropbox’s Motion for Summary Judgment of Non-infringement, 

Motion Offense has failed to present any arguments or evidence in support of its doctrine of 

equivalents theory. Dkt. 196 at 6-8. As a result, Dropbox’s Motion for Summary of Noninfringement with regards to the doctrine of equivalents should be granted, (see id.), and Motion 

Offense’s Motion for Summary Judgment with regards to prosecution history estoppel should be 

denied as moot. 

C. Motion Offense’s Motion for Summary Judgment Should Be Denied with 

Respect to Ensnarement 

As an initial matter, Motion Offense’s motion with regards to ensnarement should be 

denied because Motion Offense is incorrect that Dropbox bears the initial burden under the 

ensnarement doctrine.4

 See Br. at 7. In fact, it is Motion Offense that “bears the burden of proving 

that it is entitled to ‘the range of equivalents which it seeks.’” Jang v. Bos. Sci. Corp., 872 F.3d 

4

 Motion Offense failed to acknowledge that the case it relies on, Arigna Tech. Ltd. v. Nissan Motor 

Co., 2022 WL 18046696 (E.D. Tex. October 24, 2022), (see Br. at 7), is a report and 

recommendation that was never adopted. 

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1275, 1287 (Fed. Cir. 2017) (citing Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 

F.2d 677, 685 (Fed. Cir. 1990)). “[T]hat burden starts with proposing a proper hypothetical claim 

that only broadens the issued asserted claims.” Id. (citing Streamfeeder, LLC v. Sure-Feed, Inc., 

175 F.3d 974, 983 (Fed. Cir. 1999)). Motion Offense has failed to do that here. By “fail[ing] to 

submit a proper hypothetical claim for consideration, [a patentee is] unable to meet [its] burden of 

proving that [its] doctrine of equivalents theory d[oes] not ensnare the prior art.” Id. 

Moreover, the ensnarement doctrine, like prosecution history estoppel, depends on Motion 

Offense’s doctrine of equivalents allegations. For the same reasons as detailed above, Dropbox’s 

Motion for Summary of Non-infringement with regards to the doctrine of equivalents should be 

granted and Motion Offense’s Motion for Summary Judgment with Regards to Ensnarement 

should be denied as moot. See supra Section III.B. 

IV. CONCLUSION 

For the foregoing reasons, Motion Offense’s motion should be denied. 

 

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March 17, 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 

WILMER CUTLER PICKERING HALE 

& DORR LLP 

2100 Pennsylvania Avenue 

Washington DC 20037 

Tel: (202) 663-6327 

gregory.lantier@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 

Attorneys for Dropbox, Inc. 

 

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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 March 17, 2023. 

 /s/ Kelly Ransom 

 Kelly Ransom 

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