UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS

WACO DIVISION

MOTION OFFENSE, LLC,

Plaintiff, 

v.

DROPBOX INC,

Defendant.

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CIVIL NO. W-20-CV-00251-ADA

ORDER REGARDING SUPPLEMENTAL BRIEFING

This matter comes before the Court sua sponte. On January 3, 2024, this Court held a hearing regarding entry of final judgment in the above-captioned matter. ECF No. 424. One issue raised 

at the hearing was the fact that the jury had ignored stop instructions. Specifically, the jury was 

not supposed to decide the validity and priority date of U.S. Patent Nos. 10,587,548 and 

11,044,215 (collectively, the “Patents at Issue”) unless those patents were infringed. See ECF No. 

411 at 1–2. This is because Dropbox had only asserted invalidity of the Patents at Issue as an 

affirmative defense, not a counterclaim. See ECF No. 119 at 10; see ECF No. 10 at 4–14; Defendant Dropbox, Inc.’s Amended Answer to Complaint, ECF No. 26, Motion Offense, LLC v. Dropbox, Inc., No. 6:21-cv-758 (W.D. Tex.). The jury’s verdict was that the Patents at Issue were not 

infringed, yet the jury went on to hold that the Patents at Issue were both invalid and not entitled 

to the priority date Motion Offense proposed. See ECF No. 382 at 2–4.

Motion Offense’s argument was that the jury’s verdict was inconsistent under Fed. R. Civ. 

P. 49. See generally ECF No. 411. At the end of the hearing, the Court rejected this argument and 

orally granted Dropbox’s motion for entry of judgment in its entirety.

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The Court has further questions about its subject matter jurisdiction. In more detail, the 

Court is concerned that the non-infringement finding mooted the invalidity and priority date findings. See Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 93–94 (1993); PODS, Inc. v. 

Porta Stor, Inc., 484 F.3d 1359, 1368 (Fed. Cir. 2007) (“We have no need to consider Porta Stor’s 

arguments related to invalidity, since our finding of non-infringement moots any affirmative defense of invalidity, and Porta Stor has not argued its invalidity counterclaim on appeal.”) (emphasis 

added). 

Mootness goes to a court’s subject matter jurisdiction. Robinson v. Ferguson, 849 F. App’x 

77, 79 (5th Cir. 2021) (“Mootness is jurisdictional; it determines whether a federal court has subject matter jurisdiction under Article III, Section 2 of the Constitution to hear a case.”) (footnote 

omitted); see also Already, LLC v. Nike, Inc., 568 U.S. 85, 91 (2013) (“A case becomes moot . . . 

‘when the issues presented are no longer “live” or the parties lack a legally cognizable interest in 

the outcome.’”) (emphasis added) (quoting Murphy v. Hunt, 455 U.S. 478, 481 (1982) (per curiam)). Thus, the Court may lack subject matter jurisdiction to enter judgment that the Patents at 

Issue are invalid. However, the parties have not addressed this argument in their briefs.

Because the Court has an obligation to ascertain its own subject matter jurisdiction even 

when not challenged by the parties, Arbaugh v. Y&H Corp., 546 U.S. 500, 514 (2006), it will 

ORDER supplemental briefing on this issue. The parties shall file simultaneous briefs, limited to 

ten pages, on or before February 6, 2024. The parties may then file simultaneous response briefs, 

limited to five pages, on or before February 20, 2024. The Court’s oral order granting Dropbox’s 

motion for entry of final judgment, ECF No. 398, is WITHDRAWN.

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SIGNED this 8th day of January, 2024.

Case 6:20-cv-00251-ADA Document 427 Filed 01/08/24 Page 3 of 3