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

JURY TRIAL DEMANDED

MOTION OFFENSE, LLC,

Plaintiff,

v.

DROPBOX, INC.,

Defendant. 

Civil Action No. 6:21-cv-00758-ADA

JURY TRIAL DEMANDED

[PROPOSED] ORDER

The Court hereby resolves the following discovery dispute submitted by email. Motion 

Offense, LLC (“Motion Offense”) has requested an Order (1) striking Dropbox, Inc.’s

(“Dropbox”) new non-infringement and invalidity theories and (2) ordering Dropbox to provide 

redacted invalidity contentions.

Motion Offense’s Position Regarding Dispute #1

Background: On July 1, 2022, the end of fact discovery, Motion Offense served 

amended contentions. Opening reports were due July 12, 2022. Motion Offense added new 

support, including testimony obtained two days prior when a Dropbox technical witness was first 

Case 6:20-cv-00251-ADA Document 178 Filed 12/30/22 Page 1 of 8
deposed. The amendments included many screenshots, raising the total page count from ~600 to 

~1000. Dropbox objected and moved to strike. It argued 4 theories were new and wanted 6 

months to provide additional information responsive to Motion Offense’s new infringement 

theories prior to service of expert reports. The Court granted 3 months. 

October 25, 2022: Dropbox served an 80+ pages supplemental interrogatory response 

with new noninfringement theories. There appear to be 20 or more. The relation to the July 

amendments is uncertain. Dropbox identifies new limitations when Motion Offense’s

amendments just added support. Any non-infringement theory was already available. No new 

claim construction disputes were identified. Around 10 pm that evening, Dropbox sent a revised 

list of prior art. It added “Dropbox 2009” that was never disclosed previously. Its first mention 

was an October 4 email saying code was available.

October 26, 2022: Motion Offense requested a hearing. The Court was unavailable until 

the following week. The parties filed an extension notice around 5 pm extending report deadlines 

1 week to allow a hearing. At 11:30 pm, Dropbox served amended invalidity contentions. It did 

not seek leave or provide prior notice. The amendments included 30 new charts, with 3 

incorporated into another 14. The 30 new charts are ~30,000 pages. The 3 incorporated charts 

are over 8500 pages. The 14 charts into which they are incorporated are ~100,000 pages. 

Around 5000 pages of charts relate to “Dropbox 2009.” Dropbox incorporated without 

discussion ~1400 pages from an earlier cover pleading for alleged motivation to combine for all 

new theories. No charts for the two § 103 combinations using “Dropbox 2009” were provided. 

The two references being combined are charted separately in ~9000 pages. Dropbox states its 

report may include additional motivations to combine for the prior art combinations provided the 

day before. It did not identify any claim construction disputes. 

Case 6:20-cv-00251-ADA Document 178 Filed 12/30/22 Page 2 of 8
Dropbox’s contentions are over 200,000 pages not considering incorporations by 

reference. Motion Offense cannot review everything and prepare reports by November 3, 2022. 

Dropbox’s explanation for delay rings hollow. When Motion Offense objected to Dropbox’s 

expert report adding new motivations to combine, Dropbox said it needed an extension to 

respond before reports. Reports were due the next day. Either Dropbox did not disclose what it 

had or was planning on an extension. Dropbox has not tied its amended invalidity theories to 

Motion Offense’s July amendments. It added multiple pieces of new evidence that are unrelated. 

Dropbox 2009 also appears unrelated. 

Conclusion: Striking the new theories is the only adequate relief. This case began 3+ 

years ago. Extending trial again is very prejudicial. Keeping the date and allowing new theories 

is essentially trial by ambush. Dropbox asked for 6 months for 4 allegedly new theories. Its new 

theories are exponentially more and were provided the night before reports were due. This 

conduct should not be rewarded. 

Requested Relief: An order striking Dropbox’s October 26, 2022 amendments to its 

final invalidity contentions, its October 25, 2022 supplemental Interrogatory response with new 

non-infringement theories and revised Narrowed List of Prior Art Combinations and prohibiting 

any reliance on Dropbox 2009. 

Dropbox’s Position Regarding Dispute #1 

Motion Offense’s Motion is not well-taken. Judge Albright ordered Dropbox was 

permitted to respond to Motion Offense’s new infringement theories within three months of July 

26, 2022. That is exactly what Dropbox did. 

On July 1, 2022, the evening fact discovery closed and six business days before opening 

reports, Motion Offense served multiple new infringement theories, including against different 

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portions of Dropbox’s platform. Dropbox moved to strike as untimely and prejudicial. At the 

July 26, 2022 hearing, Judge Albright stated, “if I allow [Motion Offense] to add claims, I’m 

going to give [Dropbox] opportunity to adequately defend them.” (7/26 Tr., 12:3-6.) He also 

ordered that the case schedule be extended by three months to allow Dropbox to investigate 

Motion Offense’s allegations, and to “give [Dropbox] additional time to respond to [the amended 

pleading].” (Id., 11:6-7, 12:23-24). 

Since the hearing, Dropbox has done only what Judge Albright expressly ordered was 

permitted. Dropbox investigated Motion Offense’s allegations, collected and produced Dropbox 

2009 source code, sent subpoenas, and received and analyzed documents. Dropbox’s 

investigation confirmed the new allegations against different portions of Dropbox’s platform 

provided additional non-infringement and invalidity theories. 

Non-Infringement: The Court already rejected Motion Offense’s argument that its 

amendments “only added additional support.” (See id., 12:3-11.) Motion Offense’s new 

infringement theories accuse different portions of Dropbox’s platform, which function 

differently. Therefore, Dropbox’s investigation identified new responsive non-infringement 

theories. Because Motion Offense’s new accusations are different, it is unsurprising that 

Dropbox’s non-infringement defenses implicate additional limitations. Dropbox gave Motion 

Offense redlines showing the six new theories (three are related). 

Invalidity: Dropbox explained at the July 26, 2022 hearing that a primary issue is 

whether preexisting Dropbox technology invalidates and therefore “this is a case where if the 

infringement allegations change, the invalidity case also changes.” (Id., 3:23-4:6.) One change 

is that Dropbox 2009 is now relevant. 

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Dropbox also explained it expected to serve “additional subpoenas.” (Id., 13:6-8.) 

Dropbox received the last subpoenaed documents on October 10, 2022. It analyzed them, 

Dropbox 2009, the prior narrowed combinations and identified three combinations to replace. 

Motion Offense complained it did not have Dropbox 2009 claim charts. Dropbox 

provided these and amended claim charts identifying recently produced third-party 

documentation and additional documentation for Dropbox 2011 and Dropbox 2017 responsive to 

Motion Offense’s new infringement theories. To give Motion Offense fewer pages to review, 

Dropbox stated that other claim charts that rely upon Dropbox 2011 would include the same new 

disclosures. 

With expert reports due the next day, there was insufficient time to create a new separate 

document with responsive motivation to combine arguments and no prejudice since Motion 

Offense would be receiving the arguments the next day. 

Conclusion: The amended schedule did not set a date for Dropbox to provide additional 

information responsive to Motion Offense’s new infringement theories prior to service of expert 

reports. Nevertheless, Dropbox did so. The schedule extension was precisely to allow Dropbox 

to investigate and respond to Motion Offense’s new infringement theories. Dropbox did exactly 

this. It would be fundamentally unfair to strike Dropbox’s responsive contentions

Requested Relief: An order denying Motion Offense’s request in full. 

Motion Offense’s Position Regarding Dispute #2

Dropbox’s invalidity contentions are marked highly confidential. Motion Offense 

previously requested to strike any confidential material because it was not prior art. The Court 

said that should be briefed during summary judgment. Dropbox refuses to provide redacted 

contentions. Dropbox says it is too burdensome. It chose to serve over 200,000 pages of 

Case 6:20-cv-00251-ADA Document 178 Filed 12/30/22 Page 5 of 8
contentions. Any claim of burden is belied by the three amendments made this year. Each time 

it could have created redactions as it made the amendments. Motion Offense needs this to 

evaluate expert reports and prepare a summary judgment motion. The blanket confidentiality 

designations are improper and prejudicial. 

Requested Relief: An order that Dropbox provide redacted contentions separately 

identifying highly confidential – attorneys eyes only material and highly confidential – source 

code material.

Dropbox’s Position Regarding Dispute #2 

It would be extremely time-consuming and burdensome for Dropbox to prepare redacted 

invalidity contentions, given that (1) Motion Offense continues to assert an incredibly large 

number of claims from an untriably large number of patents, and (2) Dropbox’s invalidity case is 

based on Dropbox’s own confidential documents and source code. Motion Offense’s newly 

renewed demand for redacted contentions appears to be primarily motivated by a desire to 

impose substantial cost on Dropbox and to distract its counsel from preparing Dropbox’s 

defenses.

Indeed, Motion Offense’s insert (received at midnight on Friday) is the first time Motion 

Offense has ever argued that it needs redacted contentions to evaluate expert reports and prepare 

a summary judgment motion. Dropbox does not understand why redacted contentions are 

required to allow counsel for Motion Offense and Motion Offense’s experts – all of whom are 

permitted to see confidential information – to evaluate Dropbox’s invalidity theories. 

Dropbox has repeatedly offered to counsel for Motion Offense that it would prepare 

redacted contentions if Motion Offense paid for it. After Dropbox stated that in a May 23, 2022 

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letter, counsel for Motion Offense did not raise the issue again until October 27, 2022, after it 

received Dropbox’s amended invalidity contentions on October 26, 2022. 

That counsel for Motion Offense dropped the issue in May, and did not raise it again until 

the day before expert reports were due, suggests that counsel for Motion Offense does not in fact 

need redacted invalidity contentions to prepare expert reports. 

While it should be self-evident from the face of a document, Dropbox is willing to work 

with Motion Offense after service of expert reports and before summary judgment motions are 

due to identify a list of the documents in Dropbox’s expert’s invalidity report that are 

confidential. That list should be sufficient for counsel for Motion Offense to prepare a summary 

judgment motion.

Requested Relief: An order denying Motion Offense’s request in full.

ORDER

The Court denies Motion Offense’s Motion to Strike regarding the new non-infringement 

and invalidity theories. This Court considers the four factors for a motion to amend. This Court 

finds Dropbox’s delay to be within Judge Albright’s timeline provided in the July 2022 hearing

and responsive to Motion Offense’s amendments. The Court finds the amended information to be

important for Dropbox’s defense of the case. The Court finds there is no prejudice to Motion 

Offense with respect to the new invalidity theories. With respect to the new non-infringement 

theories, to the extent there is any prejudice, the Court finds that a continuance or an extension of 

time for Motion Offense to respond or supplement its reports is sufficient to address any prejudice. 

The parties should confer and attempt to resolve any issues themselves. If the parties cannot reach 

agreement, they should request relief from the Court. 

Case 6:20-cv-00251-ADA Document 178 Filed 12/30/22 Page 7 of 8
The Court denies the Motion to Compel the production of redacted invalidity contentions. 

Motion Offense may challenge any improper designations through the procedure provided in the 

protective order. If agreement cannot be reached between the parties, they may seek relief from 

the Court. 

IT IS HEREBY ORDERED that Motion Offense’s Motion to Strike is DENIED, and 

Motion Offense’s Motion to Compel Redacted Invalidity Contentions is DENIED.

SIGNED this ___ day of _____________, 202_. 

_____________________________

DEREK T. GILLILAND

UNITED STATES MAGISTRATE JUDGE

Case 6:20-cv-00251-ADA Document 178 Filed 12/30/22 Page 8 of 8