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 ENTRY OF JUDGMENT

I. INTRODUCTION

This case presents a dispute that only a civil procedure professor could love. After a oneweek trial, the jury returned a verdict completely in favor of Defendant Dropbox Inc. See ECF No. 

382.1 Did Dropbox infringe any asserted claim of any of Plaintiff Motion Offense, LLC’s asserted 

patents? No. Id. at 2. Did Motion Offense prove its entitlement to a priority date of September 25, 

2012? Also no. Id. at 3. Did Dropbox prove—by clear and convincing evidence—that the asserted 

claims were all invalid? Actually, yes. Id. at 4. All in all, a total defense victory. 

Normally, this is where final judgment would be entered so that post-trial motion practice 

can begin. But things were not so simple. (If they were, there would be no need for this opinion!) 

The jury, in its desire to award Dropbox complete victory, went further than expected. The Court 

had previously held that the jury should not decide the priority date and validity of two of the 

asserted patents, U.S. Patent Nos. 10,587,548 and 11,044,215 (collectively, the “Patents at Issue”), 

unless the jury first found that those patents had been infringed. See Trial Tr. Vol. 4, 1234:1–4. 

1 Because of its centrality to the disputed issues, the redacted verdict form is reproduced as Exhibit A to this opinion.

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The verdict form included stop instructions informing the jury accordingly. See ECF No. 382 at 

3–4. But the jury, despite finding non-infringement of the Patents at Issue, ignored the stop instructions and decided the invalidity and priority date anyways. See id. That issue has transformed 

the entry of judgment from what should have been a routine, almost ministerial task into a hotly 

disputed procedural battlefield. 

The parties have filed dueling motions regarding the jury’s verdict.2 Motion Offense, seeing the opportunity to get a second chance for its claims, seeks a new trial on the grounds that 

Dropbox took inconsistent claim construction positions on validity and infringement, rendering 

the jury’s findings irreconcilably inconsistent. At minimum, Motion Offense insists, the final judgment should not include the answers the jury was not supposed to give and should not discuss the 

priority date. Dropbox, on the other hand, is naturally completely satisfied with the results of the 

trial and moves to enter final judgment exactly in accordance with the jury’s verdict, including the 

parts that weren’t supposed to be answered. 

Deciding these motions requires going down the procedural rabbit hole on issues including 

verdict consistency, general vs. special verdicts, and waiver. To summarize, for the reasons discussed below, the Court holds that Motion Offense has waived its consistency challenges to the 

jury’s general verdict, including its invalidity findings, and Dropbox’s claim construction positions. Thus, the Court, like the jury, will hand Dropbox complete victory. Dropbox’s motion for 

entry of judgment is GRANTED and Motion Offense’s motion for a new trial is DENIED.3

2 Specifically, Dropbox moved for entry of final judgment. ECF No. 398. Motion Offense opposes, ECF No. 411, and 

Dropbox replies, ECF No. 413. Motion Offense has moved for a new trial under Fed. R. Civ. P. 49, not the more 

typical and familiar Fed. R. Civ. P. 59. ECF No. 414. Dropbox opposes, ECF No. 417, and Motion Offense replies, 

ECF No. 421.

3 The Court previously ruled on these motions on the record at the end of the January 3, 2024, hearing. This order 

memorializes the Court’s ruling and the reasoning behind it.

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II. FACTUAL BACKGROUND

This case is a consolidation of two cases, one filed by each side. Motion Offense asserted 

several patents, including the Patents at Issue, against Dropbox. ECF No. 43; Complaint for Patent 

Infringement, ECF No. 1, Motion Offense, LLC v. Dropbox, Inc., No. 6:21-cv-758 (W.D. Tex.). 

Dropbox, in turn, sought declaratory judgments of non-infringement and invalidity as to some of 

those patents, but notably not the Patents at Issue. For the Patents at Issue, Dropbox merely asserted 

invalidity as an affirmative defense. 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.).

Because of this procedural distinction, the Court ruled that the validity and priority date of 

the Patents at Issue would only go to the jury if they first found infringement. See Trial Tr. Vol. 4, 

1233:11–1234:4; see also Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 93–94 (1993) 

(“The issue of invalidity in Electrical Fittings was raised only as an affirmative defense to the 

charge that a presumptively valid patent had been infringed, not (as in Fonar, and as here) as a 

basis for a counterclaim seeking a declaratory judgment of patent invalidity. An unnecessary ruling 

on an affirmative defense is not the same as the necessary resolution of a counterclaim for a declaratory judgment.”) (footnote omitted). The verdict form included stop instructions giving effect 

to the Court’s ruling. See ECF No. 382 at 3–4.

After a one-week trial, the jury returned a completed verdict form in Dropbox’s favor. ECF 

No. 382. No asserted claim was infringed. Id. at 2. Every asserted claim for which Dropbox sought 

declaratory judgment of invalidity was in fact invalid, and none of them were entitled to Motion 

Offense’s proposed priority date of September 25, 2012. Id. at 3–4. But there was a problem—the 

jury had ignored the stop instructions and had determined that the asserted claims of the Patents at 

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Issue were invalid and not entitled to a September 25, 2012, priority date. See id. However, nobody 

caught this at the time, and the jury was dismissed without counsel for either side speaking at all, 

much less objecting to the verdict or flagging the ignored instruction or any claim construction 

inconsistencies to the Court. See Trial Tr. Vol. 5, 1398:14–1405:15.

Roughly three months later, Dropbox and Motion Offense met and conferred regarding 

Dropbox’s motion for entry of judgment. See ECF No. 398 at 5. This appears to be the first time 

that Motion Offense raised the ignored stop instructions. See id. at 2. Dropbox later filed its motion 

for entry of judgment. Id. Motion Offense then filed a motion for new trial under Fed. R. Civ. P. 

49, arguing that based on the jurors’ answers, they must have adopted different claim constructions 

of the same terms for infringement and validity purposes. ECF No. 414. Motion Offense also contends that the final judgment should not include the jury’s responses to the written questions about 

priority date. ECF No. 411 at 7–8.

III. LEGAL STANDARD

a. Entry of Judgment

“Every judgment and amended judgment must be set out in a separate document . . . .” Fed. 

R. Civ. P. 58(a). “Subject to Rule 54(b), the court must promptly approve the form of the judgment, 

which the clerk must promptly enter, when: (A) the jury returns a special verdict or a general 

verdict with answers to written questions.” Fed. R. Civ. P. 58(b)(2). Where a separate document 

is required, judgment is considered entered from the earlier of when a separate document judgment 

is entered or 150 days after a judgment has been entered. See Fed. R. Civ. P. 58(c). “A party may 

request that judgment be set out in a separate document as required by Rule 58(a).” Fed. R. Civ. 

P. 58(d).

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b. New Trial Under Fed. R. Civ. P. 49

The Federal Rules envision three types of verdicts: the general verdict, the special verdict, 

and the general verdict with answers to written questions. The general verdict is one where all the 

jury does is “find[] for the plaintiff or for the defendant.” See 9B Charles Alan Wright et al., Fed. 

Prac. & Proc. § 2501 (3d ed. 2024). A special verdict, governed by Rule 49(a), is “in the form of 

a special written finding on each issue of fact.” Fed. R. Civ. P. 49(a)(1). The Court, not the jury, 

then applies the law to those found facts to determine which side prevails. See Team Contractors, 

L.L.C. v. Waypoint Nola, L.L.C., 976 F.3d 509, 517 (5th Cir. 2020). A general verdict with answers 

to written questions, governed by Rule 49(b), is a “general verdict, together with written questions 

on one or more issues of fact that the jury must decide.” Fed. R. Civ. P. 49(b)(1).

Both special verdicts and general verdicts with written questions can result in inconsistent 

answers. When that happens, a party may move for various forms of relief. For special verdicts, 

the Court must determine if any inconsistencies are reconcilable. “Where there is a view of the 

case that makes the jury’s answers to special interrogatories consistent, they must be resolved that 

way.” Atl. & Gulf Stevedores, Inc. v. Ellerman Lines, Ltd., 369 U.S. 355, 364 (1962). However, if 

there are irreconcilable inconsistencies, the court must order a new trial, even if the jury has already 

been discharged. Team Contractors, 976 F.3d at 514. As for general verdicts with written questions, Rule 49 sets out the permissible options in various scenarios. If the written answers are 

consistent with each other but not the general verdict, the Court may either 1) approve a judgment 

according to the written answers; 2) order the jurors to deliberate further; or 3) order a new trial. 

Fed. R. Civ. P. 49(b)(3)(A)–(C). If the written answers are inconsistent with each other and at least 

one answer is inconsistent with the general verdict, the Court may only 1) order the jurors to deliberate further; or 2) order a new trial. Fed. R. Civ. P. 49(b)(4).

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IV. ANALYSIS

At the outset, it is important to keep in mind that there are two alleged inconsistencies with 

the jury’s verdict. Motion Offense’s motion focuses on the allegedly differing claim constructions, 

while Dropbox’s centers on the ignored stop instructions. The Court will analyze the motions in 

that order. 

a. Motion Offense’s Motion

To summarize the contents of this section, the Court holds that the jury’s verdict was a 

general verdict with written questions under Fed. R. Civ. P. 49(b). Motion Offense was therefore 

required to raise its alleged inconsistency before the jury was discharged. By failing to do so, 

Motion Offense has waived its argument, and its motion must be denied. 

i. The jury’s verdict was a general verdict with written questions.

The first matter the Court must decide is what type of verdict the jury returned. This distinction matters because it affects the applicable law and whether waiver applies. Indeed, in a case 

where a party “argue[d] the jury had to rely on differing claim constructions for infringement and 

invalidity to reach its invalidity and noninfringement decisions,” the Federal Circuit, applying 

Fifth Circuit law, decided it was necessary to categorize the verdict as general or special to answer 

the waiver question. See Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1327–30 (Fed. 

Cir. 2013).4

4 Two points about this case. First, it is not actually clear whether a Fed. R. Civ. P. 49 motion is the proper procedural 

vehicle to raise an inconsistent claim construction argument, especially when Fed. R. Civ. P. 50(b) and 59 exist.

Certainly, it is not the ideal vehicle, especially considering that Rule 49 arguments should be made after the jury’s 

verdict but while the jury is still empaneled, thereby delaying their dismissal. But this argument does not appear to 

have been raised in Function Media. And since the Federal Circuit proceeded in the manner it did, this Court will do 

so as well. Second, Motion Offense argues that Function Media cannot trump Fifth Circuit precedent, especially including the subsequent guidance in Team Contractors, L.L.C. v. Waypoint Nola, L.L.C., 976 F.3d 509 (5th Cir. 2020).

ECF No. 421 at 3. Be that as it may, the Court cannot ignore Function Media either, especially when the appellant

made the exact same type of argument Motion Offense is making. This Court will leave to the Federal Circuit the 

prerogative of reconsidering Function Media’s continuing viability in light of Team Contractors. 

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“[T]he very concept of ‘general’ and ‘special verdicts’ is an arcane one, and is very difficult 

to apply to current practice. That such an outdated distinction makes the difference between an 

entry of a judgment on an otherwise inconsistent verdict being permitted or prohibited is strange, 

to say the least.” Richard’s Paint & Body Shop, LLC v. BASF Corp., No. A-11-CA-560 AWA, 

2012 WL 5399059, at *2 n.3 (W.D. Tex. Nov. 5, 2012). To draw this arcane distinction, the parties 

point to different cases. The Court will describe them before turning to their impact on the resolution of this dispute.

Motion Offense relies heavily on Mercer v. Long Mfg. N. C., Inc., 665 F.2d 61 (Former 5th 

Cir. 1982) (“Mercer I”). In Mercer I, the Fifth Circuit held that a verdict comprised of “four special 

interrogatories, one for each of the three theories of liability . . . and one for the amount of damages” was a special verdict under Fed. R. Civ. P. 49(a). 665 F.2d at 62–63, 65. Mercer sued Long 

over a defective peanut combine, alleging “(i) breach of implied warranty of merchantability or 

fitness; (ii) violation of the [Texas Deceptive Trade Practices-Consumer Protection Act]; and (iii) 

defective design and manufacture of the combine rendering the machine unreasonably dangerous 

to the property of Mercer under a theory of strict liability in tort.” Id. at 63–64 (footnotes omitted).

The verdict form was completed as follows:

VERDICT

We, the Jury, find as follows:

AS TO BREACH OF WARRANTY:

We, the Jury, find for the Plaintiff, Bill Mercer Yes .

We, the Jury, find for the Defendant, Long Mfg. N.C., Inc. ____.

AS TO DECEPTIVE TRADE PRACTICES:

We, the Jury, find for the Plaintiff, Bill Mercer ____.

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We, the Jury, find for the Defendant, Long Mfg. N.C., Inc. Yes .

AS TO STRICT LIABILITY:

We, the Jury, find for the Plaintiff, Bill Mercer Yes .

We, the Jury, find for the Defendant, Long Mfg. N.C., Inc. ____.

(Answer the following only if you found for Plaintiff on one of the above.)

AS TO DAMAGES:

We, the Jury, assess damages for Plaintiff, Bill Mercer against Defendant, Long 

Mfg., N.C., Inc. in the amount of $17,000.

Id. at 64 n.8. Long argued to the Fifth Circuit that these answers were irreconcilably inconsistent based on the jury instructions. Id. at 65. Mercer countered that the verdict was “a general 

charge with three separate general verdicts, one for each of three separate theories of liability,” 

and was accordingly not subject to Rule 49(a). Id. The Fifth Circuit rejected that position and held 

that Rule 49(a) applied. Id. The entirety of its reasoning was as follows: “No general verdict was 

rendered by the jury, and the District Court entered judgment only after applying the treble damage 

provisions of the DTPA, both factors pointing against finding a submission under [Fed. R. Civ. P.]

49(b).” Id. Panel rehearing was denied, with the panel holding that Long’s failure to move for 

resubmission to the jury did not result in waiver of the inconsistency. Mercer v. Long Mfg. N. C., 

Inc., 671 F.2d 946, 947 (Former 5th Cir. 1982) (per curiam).

Motion Offense’s other main case is Team Contractors, L.L.C. v. Waypoint Nola, L.L.C., 

976 F.3d 509 (5th Cir. 2020). The general contractor of a project sued the project’s owner, architect, and engineer. Id. at 512. The only claim against the project owner was for breach of contract. 

Id. at 513. The jury voted that the general contractor had not shown breach of contract by a preponderance of the evidence. Id. at 512. However, when assigning percentages of responsibility for 

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damages, the jury assigned 5% responsibility to the project owner and 5% responsibility to the 

project owner’s project manager. Id. The relevant part of the verdict form was as follows:

SECTION II – [GENERAL CONTRACTOR]'S BREACH OF CONTRACT 

CLAIM AGAINST [PROJECT OWNER]

6. Has it been shown by a preponderance of the evidence that [Project Owner]

breached the contract?

___ YES ___ NO 

If NO proceed to Question 8; if YES proceed to Question 7.

7. Did the breach of the contract by [Project Owner] cause damage to [General 

Contractor]? 

___ YES ___ NO 

Proceed to Question 8.

Id. at 519. The Fifth Circuit held that the verdict was a general verdict with answers to 

written questions. See id. at 520. After surveying precedent, including Mercer I, the Court held 

that “Mercer controls only those situations in which a verdict against one party on different claims 

is expressed in the manner used at the trial in that case, i.e., in a form similar to multiple general 

verdicts.” Id. at 518. Instead, the Court set out the following rule: “We hold that if the answers to 

written questions require jurors to apply the instructed law to their fact-findings, thereby fully 

explaining who prevails on all claims against a single defendant, and if relevant, the amount of 

any monetary award, that is sufficient for a Rule 49(b) verdict.” Id. at 520. Applying the rule, the 

Court noted that Question 6 “required jurors to state an answer by combining their fact finding 

with the judge’s instructions on interpreting [Project Owner]’s obligations under the contract. 

Upon receiving this verdict, the district judge did not need to apply the law regarding contract 

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breaches; jurors already had.” Id. at 519. The jury’s negative answer left nothing for the judge 

other than to resolve arguments about defects in the verdict and enter judgment. Id. The presence 

of additional questions if the project owner was found to have breached the contract was irrelevant. 

See id. at 520.

Dropbox’s primary case is Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310 (Fed. 

Cir. 2013). In Function Media, a jury found certain patent claims invalid and not infringed. Id. at 

1314. The patentee moved for judgment as a matter of law that this verdict was irreconcilable, as 

the jury purportedly must have taken different claim construction positions for invalidity and noninfringement purposes. Id. at 1316, 1327–28. The Federal Circuit held that the patentee had waived 

this argument by failing to object before the jury was discharged. Id. at 1330. The patentee argued 

that the verdict was special “because the verdict form asked the jury specific questions about validity and infringement,” while the defendant argued the verdict was general “because it consisted 

of simple yes or no questions on infringement, anticipation, and obviousness.” Id. at 1328. The 

Federal Circuit reviewed its precedent on the matter and found it unhelpful. See id. The court then 

relied on Wright & Miller to draw the distinction that “general verdicts require the jury to apply 

the law to facts, and therefore require legal instruction, whereas special verdicts compel the jury 

to focus exclusively on its fact finding role.” Id. at 1328–29 (quoting 9B Charles Alan Wright & 

Arthur R. Miller, Fed. Prac. & Proc. § 2503 n.1 (3d ed. 2008)). Applying this principle, the Federal 

Circuit held that the verdict section on obviousness was a general verdict, as obviousness is a legal 

question with underlying facts. Id. at 1329. As for the verdict sections on anticipation and infringement, the Federal Circuit held that these were also general verdicts, even though anticipation and 

invalidity are fact questions. Id. at 1329–30. The court reasoned that determining anticipation and 

infringement virtually requires legal instruction. See id. at 1330. Since the verdict required legal 

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instruction and application of legal principles, not just written findings on issues of fact, the verdict 

was a general one. Id. The court especially noted that the verdict questions were so general that 

they did not expose what the jury had done, as would be expected in a special verdict. Id. Having 

determined that the verdict was a general verdict, the Function Media court held that plaintiff had 

waived its irreconcilability challenge by failing to object before the jury had been discharged. Id.

Applying the caselaw above, the Court holds that the verdict in this case was a general 

verdict with written questions. As a reminder, the verdict form in this case contained four sections: 

infringement, priority date, invalidity, and damages. See generally ECF No. 382. Under Function 

Media, the first section was a general verdict. See 708 F.3d at 1330. Similarly, the invalidity section 

is a general verdict, even though the verdict form asked about anticipation and obviousness in the 

same question. See id. at 1329–30. The last section was never filled out and is irrelevant to this 

analysis. See ECF No. 382 at 5. 

The section unique to this case is the priority date section. Whether a patent’s claims are 

entitled to a priority date is a question of law based on underlying facts. Nat. Alts. Int’l, Inc. v. 

Iancu, 904 F.3d 1375, 1379 (Fed. Cir. 2018). The parties’ priority date dispute centered around 

whether the asserted claims were supported by two patent applications filed in 2012. ECF No. 374 

at 29. “Compliance with the written description requirement is a question of fact . . . .” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008). In order to make that determination, the jury had to be instructed at length about the law of priority dates and written description. See ECF No. 374 at 29–31. The answer to the written questions on priority date therefore 

“required jurors to state an answer by combining their fact finding with the judge’s instructions . . . . Upon receiving this verdict, the district judge did not need to apply the law regarding 

[priority dates]; jurors already had.” Team Contractors, 976 F.3d at 519. Under these 

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circumstances, completing all the written questions on the verdict form “require[d] jurors to apply 

the instructed law to their fact-findings, thereby fully explaining who prevails on all claims against 

a single defendant.” Id. at 520. “[T]hat is sufficient for a Rule 49(b) verdict.”5 Id.

ii. Because Motion Offense did not timely object to the jury’s general verdict

with written questions, its claim construction inconsistency argument is 

waived. 

Having decided that the jury rendered a general verdict with answers to written questions, 

the Court now turns to the effects of that decision. “[O]bjections to alleged inconsistencies between 

a general verdict and answers to verdict questions are waived if a party fails to object when the 

jury announces the verdict, while the jury is still empaneled.” Montano v. Orange County, 842 

F.3d 865, 881–82 (5th Cir. 2016). Motion Offense did not object to the allegedly inconsistent claim 

constructions before the jury was dismissed. See Trial Tr. Vol. 5, 1398:14–1405:15. Consequently, 

Motion Offense has waived that argument, and the Court will not consider it further. 

b. Dropbox’s Motion 

To summarize the contents of this section, while the ignored stop instructions create an 

internal inconsistency in the verdict, this is a waivable reconcilable conflict. As with the claim 

construction argument, Motion Offense has waived this argument too. The Court will also include 

the jury’s priority date determination in the final judgment. 

5 Motion Offense’s reliance on Mercer and portions of Team Contractors does not change this conclusion. The Fifth 

Circuit in Team Contractors explicitly cabined Mercer to those cases where “a verdict against one party on different 

claims is expressed . . . in a form similar to multiple general verdicts.” 976 F.3d at 518. Each and every non-damages 

question in Mercer resolved one of the three counts for plaintiff or for defendant. See 665 F.3d at 64 n.8. Here, by 

contrast, the priority date section could not be considered a general verdict because it could not by itself determine the 

prevailing party on any claim. Dropbox could fail to prove invalidity even using post-2012 references if the jury 

thought the references did not teach critical claim limitations; conversely, Motion Offense could have its claims invalidated based solely on pre-2012 art if the jury thought said art anticipated the claims or rendered them obvious. 

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i. The verdict is internally inconsistent.

At the threshold, one might wonder: why does it matter that the jury ignored a stop instruction? Why is Motion Offense insisting there is an inconsistency when it is clear the jury consistently wanted to have every question put to them decided in Dropbox’s favor? While this view is 

understandable and has intuitive appeal, it is not correct on the law. The Federal Circuit’s decision 

in Flexuspine, Inc. v. Globus Medical, Inc., 879 F.3d 1369 (Fed. Cir. 2018), is on all fours here. In 

Flexuspine, the verdict form contained a stop instruction that, as here, “conditioned the submission 

of invalidity on an affirmative finding of infringement.” Id. at 1371–72. Similarly, the jury found 

no infringement yet ignored the stop instruction and found invalidity and no damages. Id. The 

prevailing defendant argued that the jury’s answers were not internally inconsistent, but the Federal Circuit, interpreting Fifth Circuit precedent, disagreed. See id. at 1373–74; see also White v. 

Grinfas, 809 F.2d 1157 (5th Cir. 1987). When a jury ignores a stop instruction, the questions answered in violation of the stop instruction necessarily conflict with the question that should have 

stopped the jury from going further.6 See Flexuspine, 879 F.3d at 1373. Applying Flexuspine, the 

jury verdict in this case is clearly internally inconsistent. The question now becomes what to do. 

ii. The ignored stop instruction inconsistency has been waived.

The parties next vigorously dispute whether Motion Offense waived the stop instruction 

inconsistency by failing to raise it before the jury is discharged. The caselaw here points in multiple 

directions. Dropbox points to Stancill v. McKenzie Tank Lines, Inc., 497 F.2d 529 (5th Cir. 1974), 

which straightforwardly announced, “By failing to object to the form of the verdict and answers at 

6 The Court notes that both the general verdicts and every written answer favored Dropbox. Fed. R. Civ. P. 49(b), 

which this case’s verdict form falls under, envisions three scenarios: 1) verdict and answers all consistent, 2) answers 

consistent with each other but inconsistent with the general verdict, and 3) answers inconsistent with each other and 

with the general verdict. See Fed. R. Civ. P. 49(b)(3). This case therefore appears to present a scenario not explicitly 

contemplated or addressed by the Federal Rules: some answers are inconsistent with each other, but all are consistent 

with the general verdict.

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the time they were announced by the jury, both parties waived any objection to inconsistencies 

under Rule 49(b).” Id. at 534–35. Motion Offense points to cases requiring the Court to harmonize 

inconsistent jury responses where possible, a duty tinged with constitutional import. See, e.g., Carr 

v. Wal-Mart Stores, Inc., 312 F.3d 667, 672–74 (5th Cir. 2002). Motion Offense points to its own 

clear rule, “[I]f the district court has correctly found that the jury’s answer to a question that was 

supposed to terminate further inquiry is clear and disposes of the legal issues, on review we must 

ignore the jury’s necessarily conflicting answers to any other questions.” White, 809 F.2d at 1161. 

Dropbox attacks Motion Offense’s caselaw cites as applicable only to special verdicts, not general 

verdicts with written questions like the one here. See ECF No. 413 at 4.

The Court concludes, although not without some consternation, that Dropbox is correct. 

Because of the previous conclusion that the verdict form in this case was a general verdict with 

answers to written questions under Rule 49(b), Stancill is the more applicable precedent. As Dropbox notes, many of Motion Offense’s cases involve special verdicts or “special interrogatories.” 

See, e.g., Carr, 312 F.3d at 672–74; White, 809 F.2d at 1161. After considering supplemental 

briefing from the parties, the Court is also satisfied that subject matter jurisdiction is not a bar to 

entering judgment of invalidity of the Patents at Issue, especially considering that the jury’s findings of non-infringement and invalidity were simultaneous. See, e.g., Qualcomm Inc. v. Broadcom 

Corp., 548 F.3d 1004, 1025 (Fed. Cir. 2008).

To be thorough, the Court ends by holding that if the ignored stop instructions are not 

waived, then the Court would reconcile that inconsistency according to Motion Offense’s suggestion, i.e., by entering a final judgment that does not reference the priority date or validity of the 

Patents at Issue. Motion Offense is not entitled to a new trial based on the ignored stop instructions.

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iii. The final judgment shall include the jury’s finding that Motion Offense is 

not entitled to its claimed September 25, 2012, priority date.

Motion Offense makes one last challenge to the contents of the final judgment. Even 

though the jury was asked to decide the priority date of all asserted claims,7 Motion Offense argues 

that the judgment should not include any mention of the priority date. See ECF No. 411 at 7– 9. 

Motion Offense reiterates its objection to the inclusion of a priority date question on the 

verdict form as unnecessary. Motion Offense further argues, citing to out-of-circuit caselaw, that 

the priority date determination was an “ancillary factual question[]” with no place in a final judgment. ECF No. 411 at 7–8. Also, because Dropbox presented other invalidity arguments that did 

not depend on the priority date, Motion Offense claims the priority date determination may not 

even be part of the basis for the jury’s invalidity decision. Dropbox counters that Motion Offense’s 

objection was already overruled. Dropbox also argues that the priority date was “hotly contested” 

and not ancillary. ECF No. 413 at 5. 

The Court rejects all of Motion Offense’s challenges. Dropbox correctly notes that Motion 

Offense’s objections were overruled, and Motion Offense identifies nothing that has changed since 

its objections were first made that would cause the Court to rethink its ruling. Dropbox is also 

correct that the mere possibility the jury found invalidity on an alternate basis does not mean that 

part of the jury’s explicit findings should be excluded. The priority date finding defines the universe of prior art, and consequently the scope of Dropbox’s potential invalidity case. Motion Offense offers no authority to support this argument, so the Court rejects it. 

Motion Offense’s primary case, In re Cendant Corp. Securities Litigation, 454 F.3d 235, 

240–245 (3rd Cir. 2006), is non-binding and distinguishable. In re Cendant was primarily concerned that a judgment with too much discussion of facts, procedural history, or legal analysis—

7 This includes claims from asserted patents that are not the Patents at Issue.

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thus looking more like an opinion or memorandum—will no longer be set forth in a separate document as required by Fed. R. Civ. P. 58(a). See id. (“The question thus becomes whether an extensive recitation of facts and procedural history is as fatal, for separate-document purposes, as an 

extensive recitation of legal reasoning and analysis.”) (emphases added). But here, Motion Offense 

challenges one sentence and one sentence fragment: “None of the Asserted Claims are entitled to 

a priority date of September 25, 2012,” and “On May 19, 2023, the jury reached and returned its 

unanimous verdict finding: . . . that Motion Offense had not proven by a preponderance of the 

evidence that any Asserted Claim was entitled to a priority date of September 25, 2012 . . . .” ECF 

No. 398-1 at 1–2. Even under In re Cendant’s standards, this accurate recitation of the jury’s decision is hardly extensive enough to violate Rule 58(a). The mere inclusion of priority date cannot 

make a final judgment look like a judicial opinion or a memorandum.

Motion Offense’s request to exclude priority date from the final judgment is denied.

V. CONCLUSION

For the foregoing reasons, Dropbox’s motion for entry of judgment is GRANTED, and 

Motion Offense’s Fed. R. Civ. P. 49 motion for a new trial is DENIED. A final judgment reflecting 

the jury’s verdict and this opinion will separately issue.

SIGNED this 29th day of August, 2024.

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EXHIBIT A

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