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 SUPPLEMENTAL BRIEFING 

REGARDING SUBJECT MATTER JURISDICTION

Case 6:20-cv-00251-ADA Document 428 Filed 01/30/24 Page 1 of 6
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Prior to entering judgment on the full verdict of the jury, 1/3/2024 Hearing Tr., 27:14-23 

(stating the Court is “grant[ing] the defendant’s motion, [and] will enter a judgment consistent 

with the jury verdict.”), the Court has asked the parties to brief a single issue: whether the Court 

has subject matter jurisdiction under Article III to enter judgment on Dropbox’s affirmative 

defenses with respect to the asserted claims of U.S. Patent Nos. 10,587,548 and 11,044,215 

(collectively, the “Patents at Issue”).

It is well settled under U.S. Supreme Court and U.S. Court of Appeals for the Federal 

Circuit precedent that the Court has subject matter jurisdiction to enter judgment on Dropbox’s 

affirmative defenses. A court’s “decision to rely on one of two possible alternative grounds”—for 

example, “noninfringement rather than invalidity”—does not “strip it of power to decide the 

second question, particularly when its decree [i]s subject to” appellate review. Cardinal Chem. 

Co. v. Morton Int’l, Inc., 508 U.S. 83, 98 (1993). That the jury returned a verdict on Dropbox’s 

affirmative defenses (rather than counterclaims) does not change the analysis, as the Supreme 

Court has confirmed that “the better practice” is for district courts to “inquir[e] fully into the 

validity of [a] patent” even where there has been a judgment of non-infringement. Sinclair & 

Carroll Co. v. Interchemical Corp., 325 U.S. 327, 330 (1945). And the Federal Circuit has 

expressly rejected the argument that “once the jury returned a non-infringement verdict the district 

court lacked any legal basis to consider [an] affirmative defense” (as opposed to a counterclaim),

holding “[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); see also Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1344 

(Fed. Cir. 2000) (district courts are permitted “to resolve the issue of invalidity, even if the issue 

was raised only as an affirmative defense and even if the court finds that the patent was not 

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infringed.”).1 Indeed, this Court has previously entered judgment on the jury’s invalidity verdict 

even where the jury found no infringement and the invalidity issue was raised only as an 

affirmative defense. See Ex. 1, Profectus Tech. LLC v. Google LLC, 6:20-cv-00101-ADA (W.D. 

Tex. June 13, 2022), Dkt. 220 at 1 (entering judgment on jury verdicts of no infringement and that 

the patents are invalid where invalidity was raised only as an affirmative defense); Ex. 2, Freshub, 

Inc. v. Amazon.com Inc., 6:21-cv-00511-ADA (W.D. Tex. July 13, 2021), Dkt. 268 at 1 (entering 

judgment on jury verdicts that asserted claims are “not infringed” and “not invalid” when invalidity 

was presented only as an affirmative defense). 

This approach conserves both judicial and party resources, since “[t]o enter judgment on 

less than all dispositive issues can . . . , risk[ ] . . . the necessity of the district court and the parties 

undertaking participation in another long and costly proceeding” in the event of an appeal. 

Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1463-64 (Fed. 

Cir. 1984) (also noting that “[a] district court should decide validity and infringement and should 

enter a judgment on both issues when both are raised in the same proceeding”).

The case identified in the Court’s January 8, 2024 Order, PODS, Inc. v. Porta Stor, Inc., 

484 F.3d 1359, 1368 (Fed. Cir. 2007), is not to the contrary. See Dkt. 427 at 2. In PODS, rather 

than permit the jury to reach a verdict, the district court granted judgment as a matter of law of 

infringement and no invalidity after the close of the evidence. PODS, 484 F.3d at 1365. On 

appeal, the Federal Circuit reversed the district court’s infringement judgment, and found that it 

had “no need to consider [defendant’s] arguments related to invalidity, since our finding of non-

 1 Consistent with these binding U.S. Supreme Court and Federal Circuit authorities, Dropbox has 

not identified any case in which a district court declined to enter judgment on an invalidity 

affirmative defense verdict on the ground that that jury’s finding of no infringement deprived it of

subject-matter jurisdiction.

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infringement moots any affirmative defense of invalidity, and [defendant] has not argued its 

invalidity counterclaim on appeal.” Id. at 1368 (emphasis added). That is, in a proceeding where 

defendant did not appeal the district court’s grant of judgment as a matter of law of no invalidity, 

but instead appealed only the exclusion of certain testimony from the defendant’s invalidity expert, 

the Federal Circuit noted that its finding of non-infringement negated the need for the Court to 

reach the defendants’ appellate arguments related to the exclusion of certain invalidity-related 

testimony. See PODS, Inc. v. Porta Stor, Inc., No. 2006-1504, 2006 WL 3265354 (C.A. Fed. Oct. 

12, 2006) at 5 (Statement of the Issues). The PODS Court in no way suggested that, had the district 

court found the patents not infringed, entry of judgment on invalidity would have been improper. 

Indeed, the Federal Circuit’s Qualcomm decision—issued a year after PODS—confirms that it 

would not have been. See Qualcomm, 548 F.3d at 1025; see also Hill-Rom, 209 F.3d at 1344.

For the foregoing reasons, Dropbox respectfully requests that the Court grant Dropbox’s 

motion for entry of judgment, Dkt. 398, in its entirety, including as to the Patents at Issue.

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January 30, 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 

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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

The undersigned hereby certifies that all counsel of record are being served with a copy of 

this document via the Court’s CM/ECF system on January 30, 2024. 

/s/ Kelly Ransom

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