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IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION

DROPBOX, INC.,

Plaintiff / Counterclaim 

Defendant,

v.

MOTION OFFENSE, LLC, 

Defendant / Counterclaim 

Plaintiff.

Civil Action No. 6:20-cv-00251-ADA

JURY TRIAL DEMANDED 

FILED UNDER SEAL

MOTION OFFENSE, LLC, 

Plaintiff,

v.

DROPBOX, INC.,

Defendant.

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

 JURY TRIAL DEMANDED

MOTION OFFENSE, LLC’S MOTION TO EXCLUDE 

CERTAIN PORTIONS OF THE EXPERT REPORT AND TESTIMONY 

OF MICHAEL IAN SHAMOS REGARDING INVALIDITY

Dated: March 10, 2023 Timothy Devlin (DE Bar No. 4241)

Derek Dahlgren (pro hac vice)

Alex Chan (Texas Bar No. 24108051)

DEVLIN LAW FIRM LLC

1526 Gilpin Ave.,

Wilmington, DE 19806

Telephone: (302) 449-9010

tdevlin@devlinlawfirm.com

ddahlgren@devlinlawfirm.com

achan@devlinlawfirm.com

Attorneys for MOTION OFFENSE, LLC

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TABLE OF CONTENTS

I. Introduction............................................................................................................................. 1

II. Legal Standards....................................................................................................................... 1

III. Argument ............................................................................................................................. 2

A. Dr. Shamos’ Prior Art “Systems” Are Based on Impermissible Combinations of

Different Systems. His Resulting Opinions are Unreliable and Should Be Excluded................ 2

B. The Following “Systems” Are Collections of Materials Untethered and that Do not

Refer to Any Single System and are Impermissible ................................................................... 3

1. Dropbox 2011............................................................................................................... 3

2. Dropbox 2009............................................................................................................... 7

3. ShareFile....................................................................................................................... 8

4. Box................................................................................................................................ 9

5. IBackup....................................................................................................................... 11

6. Xdrive ......................................................................................................................... 12

7. Attachmore ................................................................................................................. 13

8. Google Drive .............................................................................................................. 13

9. Dropbox 2017............................................................................................................. 14

IV. CONCLUSION.................................................................................................................. 14

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TABLE OF AUTHORITIES

Cases

ATEN Int'l Co. v. Uniclass Tech. Co., 

932 F.3d 1364 (Fed. Cir. 2019)................................................................................................... 3

Generac Power Sys. v. Kohler Co., 

No. 11-CV-1120-JPS, 

2012 U.S. Dist. LEXIS 165606 (E.D. Wis. Nov. 20, 2012)....................................................... 3

IP Innovation L.L.C. v. Red Hat, Inc.,

2010 U.S. Dist. LEXIS 145350 (E.D. Tex. Oct. 13, 2010) ........................................................ 2

OddzOn Prods., Inc. v. Just Toys, Inc., 

122 F.3d 1396 (Fed. Cir. 1997)................................................................................................... 2

Studiengesellschaft Kohle, m.b.H. v. Dart Indus., Inc., 

726 F.2d 724 (Fed. Cir. 1984)................................................................................................. 2, 3

Sunoco v. Powder Springs Logistics, 

Civil Action No. 17-1390-LPS-CJB, 

2020 U.S. Dist. LEXIS 253765 (D. Del. Feb. 6, 2020).............................................................. 3

Statutes

35 U.S.C. § 102............................................................................................................................... 1

35 U.S.C. § 103............................................................................................................................... 4

Rules

Fed. R. Evid. 104 ............................................................................................................................ 2

Fed. R. Evid. 702 ............................................................................................................................ 1

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I. INTRODUCTION

The Court should preclude certain testimony and opinions of Dropbox’s expert witness, 

Dr. Shamos, regarding invalidity because they are unreliable and likely to confuse the jury. 

Dr. Shamos’ expert report asserts that various “systems” are prior art under 35 U.S.C. §§ 

102(a) and 102(b). For each “system,” Dr. Shamos, relies on hundreds or thousands of different 

documents and references to purportedly describe the respective “system.” These various 

collections of materials include documents, videos, and/or other evidence spanning many years, 

and that relate to multiple distinct systems. This includes Dropbox’s own alleged prior art 

“systems” that Dropbox itself labels with distinct system names and which its own noninfringement expert, Dr. Gibbons, insisted on referring to as distinct products. Dr. Shamos 

makes no effort to tie together the disclosures in these various references, or to attach the 

references to any single product or system that he alleges was sold, offered for sale, or in public 

use. Instead, repeatedly, he downplays the fact that the prior art “system” that he uses for his 

invalidity analysis is in fact a hodge-podge of multiple distinct systems, asserting that this 

important fact is simply “not material” to his invalidity analysis.

Dr. Shamos’ methodology is inconsistent with the law and his methodology is not the 

product of reliable scientific methods. His invalidity opinions based on prior art should be 

excluded for these reasons alone. 

II. LEGAL STANDARDS

The standard for permissible expert testimony is set forth in Fed. R. Evid. 702. A witness 

may provide expert testimony subject to certain gatekeeping requirements: (1) the witness is 

qualified; (2) the testimony will help the jury; (3) it has a sufficient factual basis; (4) is a product 

of reliable principles and methods; and (5) reliably applies those principles and methods to the 

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facts of the case. Rule 702. Expert testimony is limited to opinions falling within these bounds.1 

Admissibility must be established by a preponderance of the evidence. Rule 104(a). 

III. ARGUMENT

A. Dr. Shamos’ Prior Art “Systems” Are Based on Impermissible Combinations

of Different Systems. His Resulting Opinions are Unreliable and Should Be

Excluded

Prior art is defined by 35 U.S.C. § 102.2 OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 

1396, 1401-02 (Fed. Cir. 1997). Section 102(a) and (b) refer to a single prior art reference, system, 

or process. Studiengesellschaft Kohle, m.b.H. v. Dart Indus., Inc., 726 F.2d 724, 726-27 (Fed. Cir. 

1984). Other documents can be used to describe the operation of that single prior art system. IP 

Innovation L.L.C. v. Red Hat, Inc., 2010 U.S. Dist. LEXIS 145350, 14 (E.D. Tex. Oct. 13, 

2010) (Radar, Circuit Judge) ("This court sees no error in using multiple references to describe a 

single prior art system for the purpose of showing anticipation"). But combining different systems 

under Section 102 is improper. Studiengesellschaft Kohle, m.b.H. v. Dart Indus., Inc., 726 F.2d 

724, 726-27 (Fed. Cir. 1984). To qualify as prior art under §102, a single system must have 

existed. Generac Power Sys. v. Kohler Co., No. 11-CV-1120-JPS, 2012 U.S. Dist. LEXIS 165606, 

at *41 (E.D. Wis. Nov. 20, 2012). To qualify as §102(b) art, it also must have existed prior to the 

critical date; merely establishing that the system existed during the same year as the critical date

is legally insufficient. ATEN Int'l Co. v. Uniclass Tech. Co., 932 F.3d 1364, 1368 (Fed. Cir. 2019). 

Whether a system qualifies as prior art under 35 U.S.C. § 102 is a question of law based on 

underlying facts. Sunoco v. Powder Springs Logistics, Civil Action No. 17-1390-LPS-CJB, 2020 

1 Preliminary Draft Proposed Amendments to Federal Rules at 310 (August 2021) 

(https://www.uscourts.gov/sites/default/files/preliminary_draft_of_proposed_amendments_-

_august_2021_0.pdf)(last accessed Feb. 24, 2023).

2 With the exception of Sections 102(c) and 102(d), which are loss of right provisions.

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U.S. Dist. LEXIS 253765, at *5 (D. Del. Feb. 6, 2020) (citing ATEN Int'l Co. v. Uniclass Tech. 

Co., 932 F.3d 1364, 1367 (Fed. Cir. 2019)). 

When an accused infringer attempts to invalidate a patent claim based on a combination 

of alleged prior art systems, the accused infringer’s argument legally cannot invalidate a patent 

under §102, and instead the argument necessarily falls under the “non-obvious subject matter” 

requirements of §103. See 35 U.S.C. § 103.

B. The Following “Systems” Are Collections of Materials Untethered and that

Do not Refer to Any Single System and are Impermissible

1. Dropbox 2011

Dr. Shamos asserts that “The Dropbox 2011 system (“Dropbox 2011”) was a product 

known or used by others in this country, on sale in the United States, and/or otherwise available 

to the public by at least September 2011.” (Shamos Rep. ¶ 666.) However, several of the 

documents, videos, and other evidence Dr. Shamos relies on to describe “Dropbox 2011” are 

dated after September 2011, including some as late as 2012, including a reference to Dropbox’s 

2012 source code, as shown in Appendix A. For each of those documents and evidence, Dr. 

Shamos makes no effort to tie their disclosures to any specific Dropbox version or product that 

was available on sale, offered for sale, or available to the public in 2011. 

Dr. Shamos also relies on patents and patent applications in his analysis of invalidity that 

allegedly describe “Dropbox 2011,” including U.S. Patent No. 8,825,597 (“Houston ’597”) and 

U.S. Patent No. 9,049,176 (“Ferdowsi ’176”).3 However, Dr. Shamos makes no effort to show 

that the patents are describing the “Dropbox 2011” system specifically rather than a generic 

disclosure that may or may not be applicable—which would disqualify any reliance on the 

patent:

3 Dr. Shamos incorporates by reference materials cited in his expert report and other claim charts 

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a. Dropbox 2011-AirDropper

Dr. Shamos asserts that “The Dropbox 2011-AirDropper system” (“DropboxAirDropper”) was a product known or used by others in this country, on sale in the United States,

and/or otherwise available to the public by at least September 2011.” (Shamos Rep. ¶ 702.) Dr. 

Shamos backed away somewhat at deposition, stating that Dropbox 2011-AirDropper became a

unitary product, when it had been “combined in the field” conceding the lack of sales or offers 

for sale by any party of both systems. (Shamos Rep. ¶ 702; Shamos Dep. Tr. at 23:12-24:3.) 

However, the documents Dr. Shamos cites show, at best, that AirDropper was a thirdparty product that could be used in addition to Dropbox. (See, e.g., DRBX_MoOff_000019626.) 

Dr. Shamos does not provide any evidence that a user had ever “combined” AirDroper with 

Dropbox 2011 “in the field” as a single “system,” (or what that single system would even be) or 

otherwise used AirDropper and Dropbox 2011 in a manner recited by the asserted claims. 

The fact that AirDropper could be used with Dropbox under certain circumstances does 

not transform these separate products and services offered by different companies into a single 

product or “system.” By analogy, one can use one’s Apple iPhone, Google’s Gmail service, a 

Linksys Wi-Fi hotspot at Starbucks, and the Internet Service Provider that Starbucks uses (say 

Verizon Fios) to check one’s email while waiting in line to get coffee. But this does not make 

these separate products and services a single “system” (and labelling them “the Starbucks email 

system” would not change this result).

Indeed, Dr. Shamos does not provide any evidence that any party ever sold or offered for 

sale a “unitary” Dropbox 2011-AirDropper “product.”4 Instead, the documents he cites show, at 

4 Further, Dr. Shamos claims that “the source code made available for inspection in the folder

/Dropbox 2011 Code/, which contains desktop, mobile, and server code, accurately reflects the 

product that was used, sold, and in public use.” (Shamos Rep. ¶ 709.) However, Dr. Shamos fails 

to identify “the product” to which he refers.

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best, . (See, e.g., 

DRBX_MoOff_000056453.) Indeed, it is likely the documents cited by Dr. Shamos were simply 

a (DRBX_MoOff_000056453.) 

 To the extent Dr. Shamos asserts he was informed of AirDropper by Dropbox engineers 

Jason Terk or Kyle Consalus, 

b. Dropbox 2011-IFTTT

Dr. Shamos asserts that “The Dropbox 2011-IFTTT system” (“Dropbox-IFTTT”) was a 

product known or used by others in this country, on sale in the United States, and/or otherwise 

available to the public by at least September 2011.” (Shamos Rep. ¶ 723.) Dr. Shamos also 

asserts, in his report and at deposition, that Dropbox-IFTTT became a unitary product with

functionality from Dropbox 2011 and IFTTT after it was combined in the field. (Shamos Rep. ¶ 

723; Shamos Dep. Tr. at 23:12-24:3.) 

.

5

 Nor does Dr. 

5 At least one document Dr. Shamos cites (IFTTT000014) is 

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Shamos provide any evidence that any party ever sold or offered for sale a “unitary” Dropbox 

2011- IFTTT “product.” The mere fact that IFTTT could be used with Dropbox under certain 

circumstances does not transform these separate products and services offered by different 

companies into a single product or “system.” 

c. Dropbox 2011-Blogtrottr

Dr. Shamos asserts that “The Dropbox 2011-Blogtrottr system” (“Dropbox-Blogtrottr”)

was a product known or used by others in this country, on sale in the United States, and/or 

otherwise available to the public by at least September 2011. Dropbox-Blogtrottr is not a 

combination reference but was a unitary product.” (Shamos Rep. ¶ 711.) However, several 

documents Dr. Shamos relies on are dated July or August, 2012, as shown in Appendix A. 

These cited documents show, at best, that Blogtrottr was a third-party RSS feed reader 

that possible could have been used alongside Dropbox to view notifications as RSS feeds. 

Again, Dr. Shamos also does not provide any evidence that any party ever sold or offered for 

sale a “unitary” Dropbox 2011- Blogtrottr “product.” He does not show any use of a particular 

“Dropbox 2011-Blogtrottr” combination either. Dr. Shamos also states that he relied on 

Dropbox “engineer testimony” for his opinions. (Shamos Rep. ¶ 715.) However, 

. (Lyons Dep. Tr. at 147:3-4; Consalus Dep. Tr. at 123:19-126:15.) As above, 

whether Blogtrottr could possibly be used next to Dropbox under certain circumstances does not 

Dr. Shamos further states he relied on Dropbox “engineer 

testimony” for his opinions. (Shamos Rep. ¶ 727.) But a 

. (Consalus 

Dep. Tr. at 121:20-122:22.)

.”

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transform these separate products and services offered by different companies into a single 

product or “system.” 

2. Dropbox 2009

Dr. Shamos asserts that “The Dropbox 2009 system (“Dropbox 2009”) was a product 

known or used by others in this country, on sale in the United States, and/or otherwise available 

to the public by at least November 2009.” (Shamos Rep. ¶ 627.) 

Dr. Shamos does not provide any evidence of any Dropbox “system” or “product” that 

was sold, offered for sale, or in public use in 2009, and described by the above evidence. Rather, 

the evidence demonstrates that what Dr. Shamos refers to as a “system” was not a single system 

at all, but a collection of snapshots of different Dropbox services that existed at different points 

over a period of approximately three years, between 2009 and 2012. For example, the Dropbox 

mobile apps for Android and iOS that Dr. Shamos relies on in connection with “Dropbox 2009” 

were not introduced till late 2009. At deposition, Dr. Shamos acknowledged this fact, but stated 

that he did not treat the Dropbox 2009 system prior to introduction of the mobile apps distinctly 

from the system as it existed after the mobile apps were introduced:

Q. And the Dropbox 2009 system as it existed before the mobile app was 

introduced, would you consider that to be a separate system than the Dropbox 

2009 system as it existed after the mobile app was introduced?

. . . 

A: -- yeah. I'm not sure that we both have the same understanding of what 

"separate system" means. It was -- a major new feature was added, that you could 

interact with Dropbox through a mobile app that didn't exist before. Now, does 

that mean they're separate systems, or does that just mean a feature is being added 

to an existing system.

(Shamos Dep. Tr. at 28:9-30:22.) 

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As a further example of Dr. Shamos’s reliance on snapshots of Dropbox, several 

documents and videos Dr. Shamos cites are dated as late as 2010 or 2012, as shown in Appendix 

A.

Moreover, Dr. Shamos also relies on at least U.S. Patent No. 8,825,597 (“Houston ’597”) 

to support his description of the “Dropbox 2009 system”, but he does nothing to show that the 

disclosures or embodiments from this patent were actually implemented in the “Dropbox 2009 

system.” 

3. ShareFile

Dr. Shamos first asserts that “The Citrix ShareFile system (“ShareFile”) was used, 

offered for sale, or sold at least by 2010.” (Shamos Rep. ¶ 535.) In his claim charts, Dr. Shamos 

purports to rely on at least three alternative publication dates for ShareFile. For example, he 

asserts that “ShareFile was a product known, used by others, or on sale in the United States, 

and/or otherwise available to the public by at least September 2011.” (Shamos Rep. ’052 

Sharefile.) He also asserts that “ShareFile was a product known, used by others, or on sale in the 

United States, and/or otherwise available to the public by at least October 2009.” (Shamos Rep. 

’052 Dropbox 2011.) As a third example, he asserts that “ShareFile was a product known, used 

by others, or on sale in the United States, and/or otherwise available to the public by at least 

September 2010.” (Shamos Rep. ’548 Dropbox 2011.) To confuse the issue further, Dr. Shamos 

relies on a capture of the sharefile.com website dated July 16, 2011 for at least some of his 

opinions. (Shamos Rep. ’158 ShareFile, citing 

https://web.archive.org/web/20110716051250/http:/www.sharefile.com/ (“ShareFile”).) 

However, Dr. Shamos does not identify any specific ShareFile “system” that included all 

of the teachings from the various documents and other evidence he cites. Indeed, at deposition, 

Dr. Shamos admitted that what he describes as ShareFile may have changed between 2009 and 

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2011, but he did not conduct any investigation into what exactly may have changed during the 

two-year timeframe. Instead, he merely dismissed the possibility as “not material”: 

Q. So it's your opinion that the ShareFile product that existed by at least October

2009 is the same as that that existed by at least September 25 2011.

A. I don't think there were material changes to the ShareFile product during that

time. There must have been changes, but they're not material. It's a file sharing

system. It has certain features, and those features are shown in the claim charts.

(Shamos Dep. Tr. at 88:22-89:6.)

4. Box

Dr. Shamos first asserts that “[t]he Box system was used, offered for sale, or sold at least

by 2009.” (Shamos Rep. ¶ 508.) In his claim charts, Dr. Shamos asserts that “Box was a product 

known, used by others, or on sale in the United States, and/or otherwise available to the public 

by at least September 2011.” (Shamos Rep. ’052 Box.) Alternatively, he asserts that “Box was a

product known, used by others, or on sale in the United States, and/or otherwise available to the 

public by at least September 2010.” (Shamos Rep. ’548 Dropbox 2011.) 

At deposition, Dr. Shamos testified that his positions were not inconsistent because “2009 

is at least by 2011.” (Shamos Dep. Tr. at 86:18.) However, in his claim charts, Dr. Shamos 

purports to rely on several documents with publication dates after September 2011, including 

after the September 21, 2012 effective filing date for the asserted claims, as shown in Appendix 

A. 

Moreover, in at least one instance, Dr. Shamos appears to rely on features of Box that 

were not implemented before the effective filing date but were instead considered internally at 

Box for inclusion in a future version. For example, for the limitation “where the storage at the 

second node does not store the at least one file when the creation of the representation of the at 

least one folder is caused” in claim 3 of the ’158 patent, 

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Indeed, Dr. Shamos was unable to recall if the Box prior art “system” he relies on even 

included a desktop client. (Id. at 62:16-18.) 

5. IBackup

Dr. Shamos first asserts that “By at least February 2002, the IBackup system had been

released.” (Shamos Rep. ¶ 330.) However, in his claim charts, Dr. Shamos asserts that 

“IBackup was a product known, used by others, or on sale in the United States, and/or otherwise 

available to the public by at least September 2011.” (Shamos Rep. ’052 IBackup.) Dr. Shamos 

does not identify any specific IBackup version or “system” that was sold, offered for sale, or in 

public use during this nine-year timeframe. Indeed, 

. (E.g., IDrive000003; IDrive000017; IDrive000279.) 

. (See, e.g., Shamos Rep. ’158 IBackup at 15-25.) 

However, 

 Dr. Shamos appears to rely on a 

.” (IDrive000418; see July 7, 2022 declaration 

of Raghu Kulkarni.) 

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Dr. Shamos does not explain how, if at all, the features of the Xdrive “system” in those 

cited documents correspond to the Xdrive “system” released in January 2000 or described in 

O’Brien. Moreover, Dr. Shamos does not provide any evidence that features of the Xdrive 

“system” he relies on were in public use at any time prior to the effective filing date. 

7. Attachmore

Dr. Shamos first asserts that “Attachmore was a system in public use and/or on sale in the 

United States by at least July 2007.” (Shamos Rep. ¶ 457.) In his claim charts, Dr. Shamos 

further asserts that “Attachmore was a product known, used by others, or on sale in the United 

States, and/or otherwise available to the public by at least September 2011.” (Shamos Rep. ’052 

Attachmore.) 

However, several of the documents Dr. Shamos relies on to describe the Attachmore 

“system” are dated June, 2012, as shown in Appendix A. 

Another document that Dr. Shamos relies on, ATT_003_1_00000891, does not appear to 

be a document produced by Dropbox during fact discovery. A document Bates-numbered 

ATTACHMORE_000001513 appears to include a similar image in black & white. However, Dr. 

Shamos does not provide any evidence that either reflects any features of any version of 

Attachmore that was ever sold or in public use. Instead, the document appears to be, at best, a 

mockup of a feature Attachmore may have internally considered including in their product. There 

is no evidence that the feature was ever released to the public. 

8. Google Drive

Dr. Shamos asserts that “Google Drive was used, offered for sale, or sold” by 2012. 

(Shamos Rep. ¶ 582.) In his claim charts, Dr. Shamos further asserts that “Google Drive was a 

product known, used by others, or on sale in the United States, and/or otherwise available to the 

public by at least September 2011.” (Shamos Rep. ’158 Google Drive.) However, the 

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documents and videos Dr. Shamos relies on in his claim charts that purport to describe the 

operation of the Google Drive “system” appear to have publication dates from various points 

throughout 2012. Dr. Shamos does not identify any specific prior art “system” that these 

documents or videos all correspond to, either in his report or claim charts. Nor does Dr. Shamos 

provide evidence that any Google Drive “system” was ever sold or offered for sale prior to the 

critical date of the asserted patents. Therefore, Google Drive is, at best, a § 102(a) reference. 

9. Dropbox 2017

Dr. Shamos asserts that “Dropbox 2017 was a product known or used by others in this 

country, on sale in the United States, and/or otherwise available to the public by at least 2017.” 

(Shamos Rep. ¶ 729.) In support of this assertion, Dr. Shamos cites “Dropbox 2017 source 

code.” (See, e.g., id. ¶ 734.) For his opinions regarding how “Dropbox 2017” includes the 

limitations of the asserted claims, Dr. Shamos merely reproduces screenshots from Motion 

Offense’s infringement contentions. 

However, Dr. Shamos does not provide any evidence that the source code he cites 

corresponds to or describes the features accused by Motion Offense. Indeed, Dr. Shamos does 

not elaborate on why he selected the specific source code files he did, or otherwise make any 

showing that the cited code is related to the same “Dropbox 2017” system for which he 

reproduces Motion Offense’s screenshots. For example, Dr. Shamos does not identify any 

specific version of Dropbox that was sold, offered for sale, or in public use as of 2017. 

IV. CONCLUSION

For the foregoing reasons, the Court exclude Dr. Shamos’s opinions regarding the alleged 

prior art systems and preclude any testimony relating to the same. 

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Dated: March 10, 2023

s// Derek Dahlgren

Timothy Devlin (DE Bar No. 4241)

Derek Dahlgren (pro hac vice)

Alex Chan (Texas Bar No. 24108051)

DEVLIN LAW FIRM LLC

1526 Gilpin Ave.,

Wilmington, DE 19806

Telephone: (302) 449-9010

tdevlin@devlinlawfirm.com

ddahlgren@devlinlawfirm.com

achan@devlinlawfirm.com

ATTORNEYS FOR MOTION OFFENSE, LLC

CERTIFICATE OF SERVICE 

I hereby certify that on March 10, 2023, I caused the foregoing to be electronically 

filed with the Clerk of the Court using CM/ECF, which will send notification of such filing to 

all registered participants. 

/s/ Derek Dahlgren

Derek Dahlgren

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