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

Oral Hearing Requested 

– Local Rule CV-7(h)

PLAINTIFF DROPBOX, INC.’S

MOTION FOR PARTIAL SUMMARY JUDGMENT

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TABLE OF CONTENTS

I. Introduction......................................................................................................................... 1

II. Background......................................................................................................................... 1

A. Applications to Which the Asserted Patents Claim Priority......................................... 2

B. The October 3, 2017 Continuation-in-Part Applications Resulting in the Asserted 

Patents..................................................................................................................... 6

C. Challenged Limitations................................................................................................. 7

III. Legal Standards................................................................................................................... 8

IV. Argument .......................................................................................................................... 10

A. The “Send” and “Receive” Limitations...................................................................... 10

B. “Generation” Limitations ........................................................................................... 13

V. Conclusion ........................................................................................................................ 15

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TABLE OF AUTHORITIES

Page(s)

CASES

Anascape, Ltd. v. Nintendo of Am. Inc., 

601 F.3d 1333 (Fed. Cir. 2010).................................................................................. passim

Ariad Pharm., Inc. v. Eli Lilly & Co., 

598 F.3d 1336 (Fed. Cir. 2010) (en banc)............................................................................9

Augustine Med., Inc. v. Gaymar Indus., Inc., 

181 F.3d 1291 (Fed. Cir. 1999)............................................................................................9

Celotex Corp. v. Catrett, 

477 U.S. 317 (1986).............................................................................................................8

In re Glob. IP Holdings LLC, 

927 F.3d 1373 (Fed. Cir. 2019)............................................................................................9

Lockwood v. Am. Airlines, Inc., 

107 F.3d 1565 (Fed. Cir. 1997)..................................................................................1, 9, 10

Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., 

741 F.3d 1359 (Fed. Cir. 2014)............................................................................................8

PowerOasis, Inc. v. T-Mobile USA, Inc., 

522 F.3d 1299 (Fed. Cir. 2008)..........................................................................9, 10, 13, 15

Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 

655 F.3d 1364 (Fed. Cir. 2011)............................................................................................9

Tech. Licensing Corp. v. Videotek, Inc., 

545 F.3d 1316 (Fed. Cir. 2008)............................................................................................9

STATUTES, RULES, AND REGULATIONS

37 C.F.R. § 1.53(b)(2)....................................................................................................................10

35 U.S.C. § 112................................................................................................................................9

Fed. R. Civ. P. 56(a) ........................................................................................................................8

MPEP § 201.08 ..............................................................................................................................10

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I. INTRODUCTION

Dropbox respectfully moves for summary judgment that all asserted claims are entitled to 

a priority date of no earlier than October 3, 2017. That is the date on which the inventor first filed 

a continuation-in-part patent application that added an external node with messaging functionality

to the specification—that is, a node that is separate from the user computers and that generates

messages such as emails. Prior to that time, the patent applications were solely directed to usercomputer functionality for generating messages. Thus, prior to October 3, 2017, there was no 

written description support for the asserted claims. Under well-settled authority, “[t]o obtain the 

benefit of the filing date of a parent application, the claims of the later-filed application must be 

supported by the written description in the parent ‘in sufficient detail that one skilled in the art can 

clearly conclude that the inventor invented the claimed invention as of the filing date sought.’”

Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) (quoting Lockwood 

v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). Because the external messaging node

limitations of the asserted claims find no support in the pre-2017 patent applications, Dropbox is 

entitled to summary judgment that those claims are not eligible for a priority date prior to October 

3, 2017.

The asserted claims’ priority date is an issue for the Court, not the jury. In this case, the

Court should decide this issue before fact discovery begins because doing so will significantly 

streamline the remaining issues in this case, including the scope of party discovery on noninfringement, invalidity, and damages, and whether Dropbox needs to take discovery from third

parties for its invalidity defenses. 

II. BACKGROUND

Motion Offense, LLC (“Motion Offense”) asserts five patents: U.S. Patent Nos. 10,013,158

(Dkt. 43 at Ex. A, the “’158 patent”), 10,021,052 (Dkt. 43 at Ex. B, the “’052 patent”), 10,303,353 

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(Dkt. 43 at Ex. C, the “’353 patent”), 10,587,548 (Dkt. 43 at Ex. E, the “’548 patent”), and 

10,613,737 (Dkt. 43 at Ex. D, the “’737 patent”). All five are related and have the same inventor, 

Robert Paul Morris.

A. Applications to Which the Asserted Patents Claim Priority

All of the asserted patents claim priority 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”).1 The Original Applications went through minimal prosecution before they were 

abandoned. See Declaration of Gregory Lantier (“Lantier Decl.”), Ex. 1 (’906 prosecution history 

excerpt); Lantier Decl. Ex. 2 (’635 prosecution history excerpt).

The asserted ’158 and ’052 patents were both filed on October 3, 2017 and are 

continuations-in-part of a descendant of the Original Applications.2 ’158 patent at 1:8-24; ’052 

patent at 1:8-25. The remaining asserted patents were filed as direct or indirect continuations of 

the ’158 or the ’052 patents. 

The Original Applications are directed to requesting and/or sharing content between two 

user computers across a network (such as the Internet) via email such that the content is shared 

without being attached to the email. See, e.g., Lantier Decl. Ex. 3 (’906 application) ¶ [0115] 

(describing communications sent to “Dad”); Lantier Decl. Ex. 4 (’635 application) ¶ [0086] 

(describing communications sent to “William”); see also Lantier Decl. Ex. 3 (’906 application) 

 

1 The file histories for the asserted patents show that the oldest application to which the asserted 

patents claim priority was filed on September 22, 2012. Motion Offense alleges, based on a draft 

version of a patent application, that all five asserted patents are entitled to a priority date of July 

25, 2012. Regardless of whether Motion Offense claims a priority date of July 25, 2012 or 

September 22, 2012, there is no written description support for the asserted claims prior to 

October 3, 2017.

2 Specifically, they are continuations-in-part of Application No. 14/274,623, filed on May 9, 2014, 

which does not substantially differ from the Original Applications and does not change the analysis 

in this motion. See Declaration of Phillip Gibbons (“Gibbons Decl.”) ¶ 20 & n.1. 

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¶ [0003]; Lantier Decl. Ex. 4 (’635 application) ¶¶ [0005], [0142]. In other words, instead of 

attaching a PDF file to an email, for example, the Original Applications describe that the user 

computer creates an email that includes a link to a location where the PDF file can be found. 

As shown in the figures below, the Original Applications describe messages that are 

composed at and sent from a user computer to another user computer. 

Lantier Decl. Ex. 4 (’635 application) at Figs. 6D (excerpt showing an edit window at a user 

computer for generating an email message to share content), 6E (showing an edit window at a user 

computer for generating an email message to request content), ¶ [0122] (describing an “edit 

window” presented to a user “in response to a user input to create a new email”). Also, as shown 

in Figure 7 below, the Original Applications further describe generating an email message at a user 

computer and sending it from that user computer to another user computer. 

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Lantier Decl. Ex. 4 (’635 application) at Fig. 7, ¶ [0029] (“FIG. 7 is a message flow diagram 

illustrating an exemplary data and execution flow for sharing a data object in a data store via a 

communication according to an aspect of the subject matter described herein.”); see also Lantier 

Decl. Ex. 3 (’906 application) at Fig. 7 (showing a similar figure). The Original Applications 

describe that the messages exchanged between the first and second user computers depicted in 

Figure 7 are “on behalf of communicants represented by the respective nodes,” and that “[t]he term 

‘communicant’ as used herein refers to a user included in a communication as a sender and/or 

receiver of the information.” Lantier Decl. Ex. 4 (’635 application) ¶¶ [0065], [0074]; see also

Lantier Decl. Ex. 3 (’906 application) ¶¶ [0087], [0103]. 

Importantly, in the Original Applications, all of the steps of the disclosed invention are 

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performed by the user computers, and there are no messaging steps performed by any external 

messaging node. Where intervening nodes between the user computers are described, they are 

merely “path” nodes that “relay” the messages sent between the two user computers, as shown in 

Figure 5 below.

Lantier Decl. Ex. 3 (’906 application) at Fig. 5 (“path node 508”); see also Lantier Decl. Ex. 4

(’635 application) at Fig. 5 (showing a similar figure); Lantier Decl. Ex. 3 (’906 application) 

¶ [0119] (“One or more path nodes may relay data sent in the communication between execution 

environment 401 of first node 502 and execution environment 401 of second node 504.”). Those 

intervening external nodes do not manipulate the message content sent to or received from the 

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user computers and they do not generate messages. See Lantier Decl. Ex. 3 (’906 application) 

¶ [0090]; see also id. ¶¶ [0114], [0124], [0162]; Gibbons Decl. ¶¶ 24-25, 42-44.

3

 

Consistent with that written description, the claims in the Original Applications recite

sending a communication generated at one user computer to another user computer over a 

network such as the Internet. See Lantier Decl. Ex. 3 (’906 application) at claim 1 (“sending, . . . 

via a network in a communication to . . . a second user, a first message”), claim 11 (“receiving, via 

a network by a second communications agent representing a second user . . . , a first message from 

a first communications agent representing a first user”), claim 22 (same); Lantier Decl. Ex. 4 (’635

application) at claim 1, claim 11, claim 19, claim 20; see also Lantier Decl. Ex. 3 (’906 application) 

¶ [0113] (“Communications protocol component 407 [of the first user computer] may further 

package and/or otherwise transform the data to send via network stack 405 for delivery network 

506 to execution environment 401 of second node 504 [the second user computer].”). The only

external nodes and servers discussed in the Original Applications are used to store user data, locate 

stored user data, or are “mail relay” path nodes that simply relay information along a network path. 

Gibbons Decl. ¶¶ 24-25, 27.

B. The October 3, 2017 Continuation-in-Part Applications Resulting in the 

Asserted Patents

On October 3, 2017, the applications for the ’158 and ’052 patents were filed as 

continuations-in-part. While making no significant changes to the written description, the claims 

of these continuation-in-part patents and the other asserted patents recite a system that is 

 

3 Motion Offense’s November 20, 2020 Letter further confirms that the Original Applications are 

limited to a file sharing/request email message generated at one user computer and sent from that 

user computer to another user computer over a network without any input from an intermediary 

external processor to generate the email message. See Lantier Decl. Ex. 5 (Motion Offense 

Nov. 20, 2020 Letter) at 4 (citations to ’158 and ’052 patents).

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fundamentally different from that described in the Original Applications.4 Rather than describing 

a system in which user computers generate email messages with links to shared content, the

October 3, 2017 continuation-in-part applications claim and describe an external messaging node

that sits between two user computers and generates emails that provide links to shared content. 

For example, claim 3 of the ’158 patent describes that at least one processor (i.e., at an external

messaging node) receives individual pieces of information from a user computer over a network 

piecemeal in a sequential process. The individual pieces of information include an “indication of 

at least one folder,” an “indicia associated with at least one email address,” and “an indication to 

share the at least one folder.” Once the at least one processor at this external messaging node has 

obtained all the necessary pieces of information, it uses those individual pieces of information to 

generate an email message that contains a link to content such that the content is shared without 

being attached to the email. The at least one processor then sends the email it has generated to the 

second user computer. See, e.g., ’158 patent at claim 3; see also, e.g., ’158 patent at 2:15-4:46.

C. Challenged Limitations

Dropbox challenges two groups of claim limitations in this Motion, neither of which was

present in Motion Offense’s pre-October 3, 2017 patent applications: (1) the “send” and “receive” 

limitations, and (2) the “generation” limitations. 

The “send” and “receive” limitations are present in all of the asserted independent claims.

5

 

These limitations require an external messaging node that receivesindividual pieces of information 

 

4 The asserted patents do not contain any drawings that were not included in the Original 

Applications. In addition to the fundamentally different claims, the only substantive difference 

between the specifications of the Original Applications and the asserted patents is the Summary 

section, which largely repeats the language of the newly added claims.

5 A full list of the “send” and “receive” limitations for the asserted independent claims is attached 

as Appendix A to Gibbons Decl.

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from a first user computer and actively communicates back and forth with that first user computer

in order to request and receive that information. That functionality is completely absent from the 

Original Applications, which describe only passive mail relay nodes that simply transmit data 

between user computers. 

The “generation” limitations are present in asserted independent claims from four of the 

five asserted patents.6 The “generation” limitations require the generation of an email message by 

the external messaging node, which is then sent by the external messaging node to a user computer. 

That functionality is likewise wholly absent from the Original Applications, which never describe 

a messaging node external to the user computer that generates email messages. Instead, they 

describe user computers that generate email messages, and intervening relay nodes that merely 

transmit those email messages from one user computer to another user computer. 

III. LEGAL STANDARDS

Summary judgment shall be granted where it is shown “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); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). “Determination of a patent’s 

priority date is purely a question of law if the facts underlying that determination are undisputed.” 

Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., 741 F.3d 1359, 1363 (Fed. Cir. 2014). 

Claims are entitled to a previous application’s filing date only if there is adequate written 

description under 35 U.S.C. § 112. Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 

1371 (Fed. Cir. 2011); Anascape, 601 F.3d at 1335 (“To obtain the benefit of the filing date of a 

parent application, the claims of the later-filed application must be supported by the written 

 

6 A full list of the “generation” limitations of the asserted independent claims is attached as

Appendix B to Gibbons Decl.

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description in the parent ‘in sufficient detail that one skilled in the art can clearly conclude that the 

inventor invented the claimed invention as of the filing date sought.’” (quoting Lockwood, 107 

F.3d at 1572)); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“It 

is elementary patent law that a patent application is entitled to the benefit of the filing date of an 

earlier filed application only if the disclosure of the earlier application provides support for the 

claims of the later application, as required by 35 U.S.C. § 112.”). Where the original application 

does not include a written description that supports claim limitations added in a subsequent 

application, the claims are entitled to the priority date of the first application that provides written 

description support for those claims. Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 

1302 (Fed. Cir. 1999) (“Subject matter that arises for the first time in the CIP application does not 

receive the benefit of the filing date of the parent application. Thus, the decision on the proper 

priority date—the parent application date or the CIP application date—for subject matter claimed 

in a CIP application depends on when that subject matter first appeared in the patent disclosures.” 

(citations omitted)).

“To satisfy the written description requirement, the disclosure of the earlier filed 

application must describe the later claimed invention ‘in sufficient detail that one skilled in the art 

can clearly conclude that the inventor invented the claimed invention as of the filing date sought.’” 

Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1331 (Fed. Cir. 2008) (quoting Lockwood, 

107 F.3d at 1572); see also In re Glob. IP Holdings LLC, 927 F.3d 1373, 1376-77 (Fed. Cir. 2019)

(written description requirement of 35 U.S.C. § 112 “is met when the specification clearly allows 

persons of ordinary skill to recognize that the inventor ‘invented what is claimed’” (quoting Ariad 

Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc))). 

Lastly, continuation-in-part applications generally add new subject matter. See 

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PowerOasis, 522 F.3d at 1304 n.3 (“Generally, a CIP adds new matter on which at least one claim 

relies for support.”); MPEP § 201.08 (“A continuation-in-part is an application filed during the 

lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the 

earlier nonprovisional application and adding matter not disclosed in the earlier nonprovisional 

application.” (emphasis added)); see also 37 C.F.R. § 1.53(b)(2) (indicating a continuation-in-part 

“may disclose and claim subject matter not disclosed in the prior application”). A continuationin-part application may therefore contain claims whose priority date is the filing date of the 

continuation-in-part application. That is the case here.

IV. ARGUMENT

The asserted claims all include limitations reciting external messaging node functionality

that was first added to the patent applications on October 3, 2017. The Original Applications do 

not describe the creation or modification of messages at a node other than the user computers. The 

asserted claims, therefore, are not entitled to the filing date of the Original Applications because 

they are not “supported by the written description in the parent ‘in sufficient detail that one skilled 

in the art can clearly conclude that the inventor invented the claimed invention as of the filing date 

sought.’” Anascape, 601 F.3d at 1335 (quoting Lockwood, 107 F.3d at 1572).

A. The “Send” and “Receive” Limitations

There is no written description support prior to October 3, 2017 for the “send” and 

“receive” limitations, which describe an external messaging node that receives individual pieces 

of information from a first user computer in separate transactions.

For example, claims 1 and 3 of the ’158 patent, respectively, describe the first user 

computer sending multiple messages with individual pieces of information to another, external

messaging node, and the external messaging node receiving those individual pieces of information 

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from a first user computer.7 Specifically, the user computer first identifies the folder to be shared, 

then separately identifies the email address to which the folder is to be sent, and then sends the 

external messaging node a notification that the folder should be shared8:

Claim 1 of the ’158 Patent Claim 3 of the ’158 Patent

send, from the first node via at least one 

network, the information associated with the 

at least one folder;

. . .

send, from the first node via the at least one 

network, the object associated with the at 

least one email address;

. . .

send, from the first node via the at least one 

network, the indication of the selection of the 

third user interface element;

’158 patent at claim 1 (emphasis added).

receive, from the first node via the at least 

one network, an indication of at least one 

folder via the first user interface element, 

utilizing the at least one first interface;

. . .

receive, from the first node via the at least 

one network, indicia associated with at least 

one email address via the second user 

interface element, utilizing the at least one 

second interface;

receive, from the first node via the at least 

one network, an indication to share the at 

least one folder;

’158 patent at claim 3 (emphasis added).

The external messaging node actively communicates back and forth with the first user 

computer in order to obtain the individual pieces of information. Id. at claim 3 (“one or more 

processors . . . wherein the one or more processors execute the instructions to: cause, at a first 

node, display of at least one first interface . . . receive, from the first node via the at least one 

network, an indication of at least one folder via the first user interface element, utilizing the at least 

one first interface”; “cause, at the first node, display of at least one second interface . . . receive, 

 

7 As explained below with respect to the “generation” limitations, the external messaging node 

then uses those individual pieces of information to generate an email message which it sends to 

the second user computer.

8 While claim 1, unlike claim 3, does not expressly discuss the use of an intermediary external 

messaging node, Motion Offense reads claim 1 and all other claims that do not expressly discuss 

an intermediary external messaging node on Dropbox’s server functionality in its infringement 

contentions. Moreover, a person of ordinary skill in the art would understand claim 1 to require 

an external messaging node. Gibbons Decl. ¶¶ 39-40. 

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from the first node via the at least one network, indicia associated with at least one email address 

via the second user interface element, utilizing the at least one second interface” (emphasis 

added)).9 

The other “send” and “receive” limitations of the other asserted claims are similar to the 

send and receive limitations in claims 1 and 3 of the ’158 patent. See Gibbons Decl. ¶ 41; see also

Gibbons Decl. Appendix A (listing all “send” and “receive” limitations in the asserted claims).

The Original Applications do not provide written description support for an external

messaging node that gathers pieces of information in order to generate an email message. Instead, 

the Original Applications describe the first user computer as being responsible for gathering 

information for an email and generating the email that it then sends to the other user computer.

For example, the Original Applications describe “edit windows” which allow a user computer to 

generate emails to request content and to share content. Lantier Decl. Ex. 4 (’635 application) at 

Figs. 6D, 6E, ¶ [0122]. 

Where the Original Applications describe nodes external to the user computers, those nodes 

are solely “path nodes” that merely “relay” messages between the user computers without

modification, or that are used to store or locate stored user data. See, e.g., id. at Fig. 7, ¶ [0085] 

(“Exemplary path nodes include mail relay nodes, phone switch nodes, and proxy nodes such as 

instant messaging proxies for communicating through firewalls.”); Lantier Decl. Ex. 3 (’906

application) at Fig. 5, ¶ [0119] (“One or more path nodes may relay data sent in the communication 

 

9 Motion Offense reads at least one of the “one or more processors” to be an external messaging 

node, as its infringement contentions accuse Dropbox’s server functionality. This reading is 

consistent with how a person of ordinary skill in the art would understand the claims. Specifically, 

a person of ordinary skill in the art would understand at least one of the “one or more processors” 

to be contained in a messaging node which is separate from the first user computer and the second 

user computer. Gibbons Decl. ¶¶ 30-31. 

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between execution environment 401 of first node 502 and execution environment 401 of second 

node 504.”); see also Gibbons Decl. ¶ 24-25, 42-44. In other words, the Original Applications 

only describe an intermediary mail relay node between two user computers that can act as a gobetween, and do not describe an intermediary external messaging node that can separately 

communicate with the first user computer for the purpose of generating a message, generate the 

message, and then send the generated message to the second user computer. A person of ordinary 

skill in the art would therefore not have understood the Original Applications to disclose an 

external messaging node as was first claimed in the October 3, 2017 continuation-in-part 

applications. Gibbons Decl. ¶¶ 42-47.

Accordingly, the “send” and “receive” limitations are not entitled to a priority date prior to 

October 3, 2017. See Anascape, 601 F.3d at 1335 (“To obtain the benefit of the filing date of a 

parent application, the claims of the later-filed application must be supported by the written 

description in the parent ‘in sufficient detail that one skilled in the art can clearly conclude that the 

inventor invented the claimed invention as of the filing date sought.’”); PowerOasis, 522 F.3d at 

1306 (“It is elementary patent law that a patent application is entitled to the benefit of the filing 

date of an earlier filed application only if the disclosure of the earlier application provides support 

for the claims of the later application, as required by 35 U.S.C. § 112.”).

B. “Generation” Limitations

As with the “send” and “receive” limitations, there is also no written description support 

prior to October 3, 2017 for the “generation” limitations. These limitations recite an external 

messaging node that generates an email to send to the second user computer.

For example, claim 3 of the ’158 patent recites “one or more processors” that “generate at 

least one email message identifying the at least one folder and including a reference to the at least 

one folder, without including at least one file in the at least one folder as an attachment of the at 

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least one email message.” ’158 patent at claim 3. Claim 3 further describes the external messaging 

node sending that email message to the second user computer. Id.

Thus, claim 3 describes an external messaging node that uses the communications it 

received piecemeal from a user computer to generate an email that it then sends to a second user 

computer. See ’158 patent at claim 3 (“based on the receipt of the indication of the at least one 

folder, the indicia associated with the at least one email address, and the indication to share the at 

least one folder via the at least one network: generate at least one email message”; “send, to a 

second node . . . the at least one email message” (emphasis added)). The external messaging node

is therefore more than a passive path or mail relay node; it is combining separate pieces of 

information it received in separate transactions in order to generate an email message. See

Gibbons Decl. ¶ 50.

The other “generation” limitations of the other asserted claims are similar to the 

“generation” limitations in claim 3 of the ’158 patent. See Gibbons Decl. ¶ 51; see also Gibbons 

Decl. Appendix B (listing all “generation” limitations in the asserted claims).

The Original Applications do not provide written description support for a messaging node

distinct from the user computers to “generate” an email as claimed in the asserted patents. As 

described above in Section IV.A, where the Original Applications describe a node distinct from 

the user computers, the Original Applications describe only a “path node” that “relay[s]” messages 

between user computers, i.e., a mail relay node. Because the path node only “relay[s]” messages, 

the Original Applications do not describe “generation” of an email or message by an external 

messaging node.

10 See, e.g., Lantier Decl. Ex. 3 (’906 application) ¶ [0114] (“Exemplary path 

 

10 As mentioned above, the Original Applications also disclose nodes or servers that store user data 

or to locate stored user data. See Lantier Decl. Ex. 3 (’906 application) ¶¶ [0124], [0162]. 

However, these nodes or servers would not be involved in communications between users.

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nodes include mail relay nodes, phone switch nodes, and proxy nodes such as instant messaging 

proxies for communicating through firewalls.”), ¶ [0119] (“Path node 508 may relay data sent in 

the communication between first node 502 and execution environment 401 of second node 504. 

Path node 508 may determine a next node and/or a network interface in a network path 

communicatively coupling first node 502 and execution environment 401 of second node 504 for 

exchanging data in a communication . . . .”). The Original Applications only disclose a user

computer that generates an email that is sent to another user computer. In particular, the figures 

and descriptions of the figures in the Original Applications all show that the user computer 

transforms the information it receives from a user into an email message to send to another user 

computer, i.e., one user computer generates an email message and sends it to another user 

computer. See, e.g., Lantier Decl. Ex. 4 (’635 application) at Figs. 6D, 6E, 7, ¶ [0122] (describing 

an “edit window” presented to a user “in response to a user input to create a new email”); see also

Lantier Decl. Ex. 4 (’635 application) ¶ [0094] (describing Figure 7 as “illustrat[ing] a first 

message 702” sent by the second user computer [second node 504] and received by the first user 

computer [first node 502]); Lantier Decl. Ex. 3 (’906 application) ¶ [0113] (“Communications 

protocol component 407 [of the first user computer] may further package and/or otherwise 

transform the data to send via network stack 405 for delivery via network 506 to execution 

environment 401 of second node 504 [the second user computer].”). A person of ordinary skill in 

the art would therefore not have understood the Original Applications to disclose an external 

messaging node that generates an email or message as is claimed. Gibbons Decl. ¶¶ 53-55.

Accordingly, the “generation” limitations are not entitled to a priority date prior to 

October 3, 2017. See Anascape, 601 F.3d at 1335; PowerOasis, 522 F.3d at 1306.

V. CONCLUSION

Because all of the asserted claims include new matter in their limitations that was first 

Case 6:20-cv-00251-ADA Document 61 Filed 12/14/20 Page 18 of 19
16

added on October 3, 2017, the Court should determine that the priority date for all of the asserted 

claims is no earlier than October 3, 2017.

Dated: December 14, 2020 /s/ J. Stephen Ravel 

J. Stephen Ravel

Texas State Bar No. 16584975

KELLY HART & HALLMAN LLP 

303 Colorado, Suite 2000

Austin, Texas 78701

Tel: (512) 495-6429

Tel: (512) 495-6464

Email: steve.ravel@kellyhart.com 

Email: sven.stricker@kellyhart.com

Gregory H. Lantier (pro hac vice)

WILMER CUTLER PICKERING HALE

& DORR LLP

1875 Pennsylvania Avenue

Washington DC 20006

Tel: (202) 663-6327

Email: gregory.lantier@wilmerhale.com

Liv Herriot (pro hac vice)

WILMER CUTLER PICKERING HALE

& DORR LLP

2600 El Camino Real, Suite 400

Palo Alto, California 94306

Tel: (650) 858-6138

Email: liv.herriot@wilmerhale.com

Attorneys for Dropbox, Inc.

CERTIFICATE OF SERVICE

The undersigned attorney hereby certifies that all counsel of record who are deemed to 

have consented to electronic service are being served with a copy of this document via the Court’s 

CM/ECF system in accordance with Local Rule CV-5 on December 14, 2020.

/s/ J. Stephen Ravel

Case 6:20-cv-00251-ADA Document 61 Filed 12/14/20 Page 19 of 19