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 

ORDER ADOPTING MAGISTRATE 

JUDGE’S REPORT AND RECOMMENDATION 

Before the Court is the Report and Recommendation of United States Magistrate Judge 

Derek T. Gilliland. ECF No. 335. The Report recommends that the Court DENY ECF Nos. 127, 

193, 194, 195, 196, 197, 199, 201, 202, 203, 222, 223, 224. See id. The Report also recommends 

that the Court GRANT-IN-PART and DENY-IN-PART ECF Nos. 198, 200. See id. The Report 

and Recommendation was filed on May 2, 2023. 

A party may file specific, written objections to the proposed findings and recommendations 

of the magistrate judge within fourteen days after being served with a copy of the report and 

recommendation, thereby securing de novo review by the district court. 28 U.S.C. § 636(b); Fed. 

R. Civ. P. 72(b). A district court need not consider “[f]rivolous, conclusive, or general objections.”

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 1 of 14
Battle v. U.S. Parole Comm’n, 834 F.2d 419, 421 (5th Cir. 1987) (quoting Nettles v. Wainwright, 

677 F.2d 404, 410 n.8 (5th Cir. 1982) (en banc), overruled on other grounds by Douglass v. United 

States Auto. Ass’n, 79 F.3d 1415 (5th Cir. 1996)). 

Dropbox filed objections on May 9, 2023. ECF No. 343. Motion Offense filed objections 

on May 9, 2023. ECF No. 344. The Court has conducted a de novo review of the motions, the 

report and recommendation, the objections to the report and recommendation, and the applicable 

laws. After that thorough review and in accordance with the Court’s rulings from the bench on 

May 11, 2023, the Court is persuaded that the Magistrate Judge’s findings and recommendation 

should be adopted and the parties’ objections overruled.

Motion Offense’s Motion to Strike Dropbox, Inc.'s Inequitable Conduct Defense (ECF 

No. 127) was ruled on without argument and is DENIED as MOOT because it overlaps with 

Motion Offense's Motion for Partial Summary Judgment Against Dropbox Affirmative Defenses 

Not Involving Prior Art (ECF No. 198). 

Dropbox, Inc.'s Motion for Summary Judgment of Lack of Patent Eligibility Under 35 

U.S.C. § 101 (ECF No. 193) is DENIED. The Court finds that each asserted claim, considered as 

a whole, is not directed to an abstract idea.

Dropbox’s Sealed Motion for Partial Summary Judgment (ECF No. 194) is DENIED. 

Dropbox’s Sealed Motion to Exclude the Opinions of Stephen E. Dell (ECF No. 195) is 

DENIED. 

Dropbox’s Sealed Motion for Summary Judgment of Non-Infringement (ECF No. 196) is 

DENIED in Part as MOOT and DENIED. The doctrine of equivalents, divided/vicarious 

infringement, and indirect infringement portions of the Motion are DENIED as MOOT. Motion 

Offense has stipulated that it is not pursuing a finding of infringement under the doctrine of 

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 2 of 14
equivalents, divided/vicarious infringement, or indirect infringement. The remaining direct 

infringement portion of the Motion is DENIED.

Dropbox’s Sealed Motion to Exclude the Testimony of Dr. Robert Akl (ECF No. 197) is 

DENIED as MOOT. 

Motion Offense’s Motion for Partial Summary Judgment Against Dropbox Affirmative 

Defenses Not Involving Prior Art (ECF No. 198) is DENIED as MOOT in Part and 

GRANTED in Part. The portions of the Motion addressing the following Dropbox Affirmative 

Defenses are DENIED as MOOT in light of Dropbox’s stipulation that it is no longer pursuing 

any of these affirmative defenses at trial: Third Affirmative Defense (“Failure to Provide Notice 

Pursuant to 35 U.S.C. §287”), Fourth Affirmative Defense (“Waiver, Estoppel, Acquiescence, 

Unclean Hands, and Implied License”), Fifth Affirmative Defense (“Prosecution History 

Estoppel”), Ninth Affirmative Defense (“Failure to Conduct Pre-Suit Investigation”), and Tenth 

Affirmative Defense (“Ensnarement”). The portion of the Motion addressing Dropbox’s 11th

affirmative defense (“Inequitable Conduct”) is GRANTED.

Motion Offense’s Motion to Exclude the Damages Opinions and Testimony of Robert A. 

Hutchins (ECF No. 199/ Corrected ECF No. 222) is DENIED. 

Motion Offense’s Motion to Strike New and Untimely Opinions of Phillip Gibbons' 

Expert Report Regarding Noninfringment of U.S. Patent Nos. 10,013,158; 10,021,052; 

10,303,353; 10,613,737; 10,587,548; and 11,044,215 (ECF No. 200) is DENIED in Part and 

GRANTED in Part. Rulings on each limitation are in the following chart:

Patent Claim limitation Ruling

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 3 of 14
’158 Claim 3: “An apparatus, 

comprising: at least one nontransitory memory storing 

instructions; and one or more 

processors in communication 

with the at least one nontransitory memory, wherein 

the one or more processors 

execute the instructions to:” 

(ECF No. 200-3. Ex. 2, 

¶¶235-42).

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’158 Claim 3: “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” (ECF No. 200-3. 

Ex. 2, ¶¶321-25);

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’158 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 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 least one 

email message” (ECF No.

200-3. Ex. 2, ¶¶366-76);

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’158 Claim 3: “send, to a second 

node via the at least one 

network, the at least one 

email message, without 

including the at least one file 

in the at least one folder as an 

attachment of the at least one 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 4 of 14
email message” (ECF No.

200-3. Ex. 2, ¶¶377-87); 

’158 Claim 3: “detect, at the 

second node, an indication to 

open the at least one file in 

the at least one folder; and” 

(ECF No. 200-3. Ex. 2, 

¶¶448-58); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’158 Claim 3: “in response to 

detection of the indication to 

open the at least one file in 

the at least one folder, cause 

retrieval of the at least one 

file via the at least one 

network for permitting 

display of the at least one file 

at the second node” (ECF No.

200-3. Ex. 2, ¶¶459-66); and 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’052 Claim 12: “An apparatus, 

comprising: at least one nontransitory memory storing 

instructions; and one or more 

processors in communication 

with the at least one nontransitory memory, wherein 

the one or more processors 

execute the instructions to:” 

(ECF No. 200-3. Ex. 2, 

¶¶662-67); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’052 Claim 12: “send, to a second 

node via the at least one 

network, the first message;” 

(ECF No. 200-3. Ex. 2, 

¶¶751-60); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 5 of 14
’737 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; cause generation of 

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 least one email 

message;” (ECF No. 200-3. 

Ex. 2, ¶¶1183, 1202-09);

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’737 Claim 3: “cause to be sent, to 

a second node via the at least 

one network, the at least one 

email message, without 

including the at least one file 

in the at least one folder as an 

attachment of the at least one 

email message;” (ECF No.

200-3. Ex. 2, ¶¶1210-17); and 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’548 Claim 44: “in response to the 

receipt of the message 

associated with the selection 

of the third user interface 

element and based on the text 

associated with the one or 

more desired files and the 

object associated with the at 

least one email address; cause 

generation of a first message 

addressed to the at least one 

email address and including 

the file request, the first 

message including a fourth 

user interface element and the 

text associated with the one or 

more desired files describing 

the one or more desired files 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 6 of 14
in connection with the file 

request;” (ECF No. 200-3. 

Ex. 2, ¶¶1275-82); 

’548 Claim 44: “cause sending of, 

to a second node via the at 

least one network, the first 

message;” (ECF No. 200-3. 

Ex. 2, ¶¶1283-90); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’548 Claim 44: “receive, from the 

second node via the at least 

one network, a message 

associated with a selection of 

the fourth user interface 

element of the first message 

for indicating that at least one 

file is to be uploaded in 

response to the file request;” 

(ECF No. 200-3. Ex. 2, 

¶¶1291-98); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’548 Claim 44: “in response to the 

receipt of the message 

associated with the selection 

of the fourth user interface 

element, cause sending of a 

second communication over 

the at least one network that 

results in display, at the 

second node, of a fifth user 

interface element for use in 

uploading the at least one file 

in response to the file 

request;” (ECF No. 200-3. 

Ex. 2, ¶¶1299-1306); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 7 of 14
’548 Claim 44: “in response to the 

receipt of the message 

associated with the selection 

of the fifth user interface 

element, cause generation of a 

second message that includes 

a sixth user interface element, 

the second message indicating 

that the file request has been 

responded to;” (ECF No. 200-

3. Ex. 2, ¶¶1323-30); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’548 Claim 44: “cause sending of, 

to the first node via the at 

least one network, the second 

message;” (ECF No. 200-3. 

Ex. 2, ¶¶1331-38); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’548 Claim 44: “receive, from the 

first node via the at least one 

network, a message 

associated with a selection of 

the sixth user interface 

element of the second 

message;” (ECF No. 200-3. 

Ex. 2, ¶¶1339-44); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’548 Claim 44: “in response to the 

receipt of the message 

associated with the selection 

of the sixth user interface 

element of the second 

message, cause sending of a 

third communication over the 

at least one network that 

results in display, at the first 

node, of a reference to the at 

least one file; and allow 

access, at the first node, to the 

at least one file via the 

reference.” (ECF No. 200-3. 

Ex. 2, ¶¶1345-50); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 8 of 14
’548 Claim 45: “The non-transitory 

computer readable storage 

medium of claim 44, wherein: 

the first message and the 

second message are email 

messages;” (ECF No. 200-3. 

Ex. 2, ¶¶1351-59); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs

of Dr. Gibbons’ report at trial.

’548 Claim 45: “the object 

includes the at least one email 

address or an alias associated 

with the at least one email 

address; and” (ECF No. 200-

3. Ex. 2, ¶¶1369-74); and 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’548 Claim 45: “the second 

message is at least partially 

pre-written and is caused to 

be automatically generated 

without user involvement 

after the receipt of the 

message associated with the 

selection of the fifth user 

interface element.” (ECF No.

200-3. Ex. 2, ¶¶1375-82). 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’215 Claim 1: “[where the at least 

one email:] identifies the 

information associated with 

the at least one folder,” (ECF 

No. 200-3. Ex. 2, ¶¶1443-50); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’215 Claim 1: “[where the at least 

one email:] includes an 

Hypertext Transfer Protocol 

(HTTP) link,” (ECF No. 200-

3. Ex. 2, ¶¶1451-58); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’215 Claim 1: “[where the at least 

one email:] is at least partially 

pre-written, and” (ECF No.

200-3. Ex. 2, ¶¶1475-82); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 9 of 14
’215 Claim 1: “[where the at least 

one email:] is automatically 

caused to be received without 

requiring user involvement 

after the detection of the 

indication of the selection of 

the third user interface 

element to cause the initiation 

of the sharing of the at least 

one folder;” (ECF No. 200-3. 

Ex. 2, ¶¶1483-90); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’215 Claim 51: “[where the at least 

one email:] identifies the 

information associated with 

the at least one folder,” (ECF 

No. 200-3. Ex. 2, ¶¶1610-17); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’215 Claim 51: “[where the at least 

one email:] includes an 

Hypertext Transfer Protocol

(HTTP) link,” (ECF No. 200-

3. Ex. 2, ¶¶1618-25); 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’215 Claim 51: “[where the at least 

one email:] is at least partially 

pre-written, and” (ECF No.

200-3. Ex. 2, ¶¶1634-41); and 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

’215 Claim 51: “[where the at least 

one email:] is automatically 

caused to be received without 

requiring user involvement 

after the detection of the 

indication of the selection of 

the third user interface 

element to cause the initiation 

of the sharing of the at least 

DENIED as MOOT. 

Dropbox has stipulated it will 

not rely on these paragraphs 

of Dr. Gibbons’ report at trial.

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 10 of 14
one folder;” (ECF No. 200-3. 

Ex. 2, ¶¶1642-49). 

’158 Claim 6: “The apparatus of 

claim 3, wherein the 

apparatus is configured such 

that the at least one first 

interface and the at least one 

second interface are separate 

windows that are displayed 

utilizing a single web page.” 

(ECF No. 200-3. Ex. 2, 

¶¶468-87).

DENIED.

’052 Claim 12: “in response to the 

receipt of the indication of the 

selection of the fourth user 

interface element and based 

on the file description, the 

indication of the at least one 

of the date or the time, and 

the indicia associated with the 

at least one email address; 

generate a first message 

addressed to the at least one 

email address and including 

the file request, the first 

message indicating the at 

least one of the date or the 

time on which the file request 

is based, and further including 

a fifth user interface element 

and at least one sentence 

including the file description 

describing the at least one file 

in connection with the file 

request;” (ECF No. 200-3. 

Ex. 2, ¶¶741-50); 

GRANTED.

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 11 of 14
’052 Claim 12: “receive, from the 

second node via the at least 

one network, an indication of 

a selection of the fifth user 

interface element of the first 

message, where the receipt of 

the indication of the selection 

of the fifth user interface 

element indicates that the at 

least one file is to be 

uploaded in response to the

file request;” (ECF No. 200-

3. Ex. 2, ¶¶761-75); 

GRANTED.

’052 Claim 12: “in response to the 

receipt of the indication of the 

selection of the fifth user 

interface element, cause, at 

the second node, display of at 

least one third interface with a 

sixth user interface element 

and a seventh user interface 

element, utilizing third 

hypertext markup languageequipped code that is sent via 

at least one network, the at 

least one third interface for 

use in uploading the at least 

one file in response to the file 

request;” (ECF No. 200-3. 

Ex. 2, ¶¶776-90);

DENIED.

’052 Claim 12: “receive, from the 

second node via the at least 

one network, an indication of 

a selection of the seventh user 

interface element, utilizing 

the at least one third interface, 

where the receipt of the 

indication of the selection of 

the seventh user interface 

element indicates that the at 

least one file is to be caused 

to be uploaded;” (ECF No.

200-3. Ex. 2, ¶¶803-11); 

DENIED.

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 12 of 14
’052 Claim 12: “in response to the 

receipt of the indication of the 

selection of the seventh user 

interface element, generate a 

second message that includes 

an eighth user interface 

element, and that does not 

include a file attachment with 

the second message, the 

second message indicating 

that the file request has been 

responded to;” (ECF No. 200-

3. Ex. 2, ¶¶812-25); and 

GRANTED.

’052 Claim 20: “The apparatus of 

claim 12, wherein the 

apparatus is configured such 

that the at least one of the 

date or the time of the 

indication of the at least one 

of the date or the time is a 

criterion, and the indication of 

the at least one file is received 

based on whether the criterion 

is met.” (ECF No. 200-3. Ex. 

2, ¶¶859-67). 

GRANTED.

’353 Claim 5: “causing display of 

the representation of the at 

least one folder in the location 

among the one or more 

folders on the file explorer 

interface,” (ECF No. 200-3. 

Ex. 2, ¶¶1147-55); and 

DENIED.

’353 Claim 5: “in response to 

detection of the indication to 

open at least one file in the at 

least one folder, causing 

retrieval of the at least one 

file via the at least one 

network for permitting 

display of the at least one 

file.” (ECF No. 200-3. Ex. 2, 

¶¶1164-72). 

DENIED.

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 13 of 14
’737 Claim 14: “The apparatus of 

claim 13, wherein the 

apparatus is configured such 

that the at least one folder and 

the at least one file are stored 

and synchronized utilizing at 

least one server, and wherein 

the apparatus is further 

configured such that the at 

least one email message is 

caused to be sent without 

including the at least one file 

as an attachment of the at 

least one email message, and 

the second node is not caused 

to store the at least one file 

when the creation of the 

representation of the at least 

one folder is caused, both for 

avoiding the at least one file 

from having to be 

communicated to and stored 

at the second node until the at 

least one file is requested by a 

user at the second node using 

the additional representation.” 

(ECF No. 200-3. Ex. 2, 

¶¶1237-43). 

GRANTED.

Motion Offense’s Motion for Summary Judgment of No Prior Art Invalidity (ECF No.

201) is DENIED. 

Motion Offense’s Sealed Motion to Exclude Certain Portions of the Expert Report of 

Michael Ian Shamos Re: Invalidity (ECF No. 202/Corrected ECF No. 223) is DENIED. 

Motion Offense’s Sealed Motion to Exclude Certain Portions of the Expert Report and 

Testimony of Phillip Gibbons (ECF No. 203/Corrected ECF No. 224) is DENIED.

SIGNED this 12th day of May, 2023.

Case 6:20-cv-00251-ADA Document 349 Filed 05/12/23 Page 14 of 14