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 

PLAINTIFF’S MOTION FOR LEAVE TO FILE A SUR-REPLY 

Case 6:20-cv-00251-ADA Document 435 Filed 03/01/24 Page 1 of 6
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As Motion Offense acknowledges, the Court ordered opening briefs regarding subject 

matter jurisdiction “on or before February 6, 2024.” Dkt. 432 (“Mot.”) at 1 (citing Dkt. 427) 

(emphasis added). Consistent with this instruction, Dropbox filed its opening brief on January 30, 

2024. See Dkt. 428. Motion Offense filed its opening brief on February 6, and both parties filed 

responsive briefs on February 20, the Court-ordered responsive briefing deadline. See Dkt. 427; 

Dkt. 430. Although Dropbox’s responsive brief addressed the arguments in Motion Offense’s 

opening brief, see Dkt. 431, Motion Offense elected to “stand[] by” the arguments in its February 

6 opening brief, see Dkt. 430. Despite having done so, Motion Offense now seeks leave to file a 

reply brief. While Motion Offense attempts to shift blame to Dropbox for its request, Motion 

Offense’s primary grievance is with the structure of the Court’s briefing schedule, which did not 

include reply briefing. Motion Offense’s request for leave to file a reply should be denied. 

As an initial matter, Motion Offense’s complaint that it had no opportunity to respond to 

the arguments in Dropbox’s responsive brief rings hollow. Mot. at 1. Because the Court’s Order 

did not contemplate reply briefing, Motion Offense would not have had an opportunity to respond 

to Dropbox’s responsive brief regardless of when Dropbox filed its opening brief. 

Moreover, contrary to Motion Offense’s contention, the arguments in Dropbox’s 

responsive brief are neither “new” nor “misleading.” Mot. at 1. Dropbox’s responsive brief simply 

responded to the arguments made in Motion Offense’s opening brief, while reiterating arguments 

set forth in its own opening brief. For example, while Motion Offense criticizes Dropbox for 

relying on cases where courts—including this Court—entered judgment on both non-infringement 

and an invalidity affirmative defense, Motion Offense ignores that Dropbox made this very same 

argument in its opening brief. See Dkt. 428 at 2. Motion Offense thus had ample opportunity to 

respond to Dropbox’s argument that—under Motion Offense’s incorrect view—each of those 

Case 6:20-cv-00251-ADA Document 435 Filed 03/01/24 Page 2 of 6
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cases would have been improperly decided. Further, while Motion Offense’s proposed reply 

purports to respond to the Federal Circuit’s decision in Qualcomm, there is no dispute that Dropbox 

also cited and relied on that decision in its opening brief. See Dkt. 428 at 1, 3. Like its responsive 

brief, Motion Offense’s proposed reply fails to meaningful respond to Qualcomm, and for good 

reason. The Federal Circuit’s directive in Qualcomm was clear—“[i]t [is] entirely appropriate for 

[a] district court to address” affirmative defenses even “after the jury returned a non-infringement 

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

added). That the affirmative defense in Qualcomm was unenforceability and not invalidity is a 

distinction without a difference. 

Motion Offense’s claim that Dropbox “change[d] the Court’s question,” Dkt. 432-1 at 41

, 

is similarly misplaced. In pointing out that Motion Offense’s cited cases did not involve 

simultaneous jury verdicts of non-infringement and invalidity, Dropbox merely distinguished the 

cases cited by Motion Offense. Nor is Dropbox’s discussion of Electrical Fittings a “new” 

argument—once again, it was Motion Offense that first raised that case.2 See Dkt. 429 at 2 (citing 

Elec. Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241 (1939)). As Dropbox explained in 

response, in Electrical Fittings there was no ongoing dispute with respect to infringement; in 

contrast, here, infringement remains disputed—a fact Motion Offense notably does not deny. See 

 

1

 Motion Offense’s proposed reply does not contain page numbers. Dropbox’s citations are 

therefore to the document page numbers as noted in the Court’s CM-ECF header. 

2

 Similarly, it was Motion Offense that first raised Deposit Guaranty National Bank. See Dkt. 429 

at 3 (citing Deposit Guar. Nat’l Bank v. Roper, 445 U.S. 326, 335 n.7 (1980)). In both Motion 

Offense’s opening brief and proposed reply, Dkt. 429 at 3; Dkt. 432-1 at 6, Motion Offense 

contends that Deposit Guaranty “clarified” the Supreme Court’s position of subject matter 

jurisdiction, while simultaneously ignoring that Deposit Guaranty explained that where, as here, 

“petitioners allege[ ] a stake in the outcome, the case [i]s still live” and Article III jurisdiction 

remains. See Deposit Guar., 445 U.S. at 335; see also Dkt. 231 at 3. 

Case 6:20-cv-00251-ADA Document 435 Filed 03/01/24 Page 3 of 6
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Dkt. 431 at 2-3. This distinction is critical. As both the Supreme Court and Federal Circuit have 

made clear, courts have the power to decide issues of non-infringement and invalidity “particularly 

when [the courts] decree [i]s subject to review,” as it is here. See, e.g., Cardinal Chem. Co. v. 

Morton Int’l, Inc., 508 U.S. 83, 98 (1993). 

Finally, on Flexuspine—yet another case first raised by Motion Offense, not Dropbox—

Motion Offense’s proposed reply again ignores that Flexuspine is readily distinguishable. The 

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

invalidity affirmative defense. See Flexuspine, Inc. v. Globus Med., Inc., No. 6:15-CV-201-JRGKNM, 2016 WL 9276025, at *4 (E.D. Tex. Oct. 3, 2016), aff’d, 879 F.3d 1369 (Fed. Cir. 2018). 

Rather, the district court was asked to consider whether defendant’s agreement to a stop instruction 

asking the jury to consider a counterclaim of invalidity only if the patent was found infringed 

violated the Seventh Amendment. Id. at *4-5. As pointed out previously by Dropbox, Dkt. 431 

at 5 n.6, the district court held that there was no Seventh Amendment violation and did not analyze 

the issue of subject matter jurisdiction at all, see Flexuspine, 2016 WL 9276025 at *4-*5.3

 

As Dropbox explained in its opening brief, Motion Offense has failed to identify a single 

case in which a district court declined to enter judgment on a jury verdict finding non-infringement 

and invalidity as an affirmative defense. That remains true—neither Motion Offense’s opening 

brief, responsive brief, nor its proposed reply have identified such a case. Motion Offense’s motion 

for leave to file a reply is yet another in a series of attempts by Motion Offense to delay entry of 

judgment in this case. Motion Offense’s motion for leave should be denied. 

 

3

 The district court’s statements in dicta about the differences between affirmative defenses and 

counterclaims are not relevant to the subject matter jurisdiction question here, particularly given 

that there remains a case or controversy between the parties notwithstanding the jury’s verdict of 

non-infringement, as explained in Dropbox’s responsive brief. See Dkt. 431 at 2, n.2. 

Case 6:20-cv-00251-ADA Document 435 Filed 03/01/24 Page 4 of 6
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March 1, 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 435 Filed 03/01/24 Page 5 of 6
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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 March 1, 2024. 

 /s/ Kelly Ransom 

 Kelly Ransom 

Case 6:20-cv-00251-ADA Document 435 Filed 03/01/24 Page 6 of 6