Motion Offense, LLC v. Dropbox, Inc. ( 2023 )

IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION DROPBOX, INC., Plaintiff/Counter- Defendant, Civil Action No. 6:20-cv-00251-ADA v. MOTION OFFENSE, LLC, Defendant/Counter- Plaintiff. MOTION OFFENSE, LLC, Plaintiff, Civil Action No. 6:21-cv-758-ADA v. DROPBOX, INC., Defendant. ORDER ADOPTING MAGISTRATE JUDGE’S REPORT AND RECOMMENDATION Before the Court is the Report and Recommendation of United States Magistrate Judge Derek T. Gilliland. ECF No. 335. The Report recommends that the Court DENY ECF Nos. 127, 193, 194, 195, 196, 197, 199, 201, 202, 203, 222, 223, 224. See id. The Report also recommends that the Court GRANT-IN-PART and DENY-IN-PART ECF Nos. 198, 200. See id. The Report and Recommendation was filed on May 2, 2023. A party may file specific, written objections to the proposed findings and recommendations of the magistrate judge within fourteen days after being served with a copy of the report and recommendation, thereby securing de novo review by the district court. 28 U.S.C. § 636(b); Fed. R.Civ. P. 72(b). A district court need not consider “[f]rivolous, conclusive, or general objections.” Battle v. U.S. Parole Comm’n, 834 F.2d 419, 421 (5th Cir. 1987) (quoting Nettles v. Wainwright, 677 F.2d 404, 410 n.8 (5th Cir. 1982) (en banc), overruled on other grounds by Douglass v. United States Auto. Ass’n, 79 F.3d 1415 (5th Cir. 1996)). Dropbox filed objections on May 9, 2023. ECF No. 343. Motion Offense filed objections on May 9, 2023. ECF No. 344. The Court has conducted a de novo review of the motions, the report and recommendation, the objections to the report and recommendation, and the applicable laws. After that thorough review and in accordance with the Court’s rulings from the bench on May 11, 2023, the Court is persuaded that the Magistrate Judge’s findings and recommendation should be adopted and the parties’ objections overruled. Motion Offense’s Motion to Strike Dropbox, Inc.'s Inequitable Conduct Defense (ECF No. 127) was ruled on without argument and is DENIED as MOOT because it overlaps with Motion Offense's Motion for Partial Summary Judgment Against Dropbox Affirmative Defenses Not Involving Prior Art (ECF No. 198). Dropbox, Inc.'s Motion for Summary Judgment of Lack of Patent Eligibility Under 35 U.S.C. § 101 (ECF No. 193) is DENIED. The Court finds that each asserted claim, considered as a whole, is not directed to an abstract idea. Dropbox’s Sealed Motion for Partial Summary Judgment (ECF No. 194) is DENIED. Dropbox’s Sealed Motion to Exclude the Opinions of Stephen E. Dell (ECF No. 195) is DENIED. Dropbox’s Sealed Motion for Summary Judgment of Non-Infringement (ECF No. 196) is DENIED in Part as MOOT and DENIED. The doctrine of equivalents, divided/vicarious infringement, and indirect infringement portions of the Motion are DENIED as MOOT. Motion Offense has stipulated that it is not pursuing a finding of infringement under the doctrine of equivalents, divided/vicarious infringement, or indirect infringement. The remaining direct infringement portion of the Motion is DENIED. Dropbox’s Sealed Motion to Exclude the Testimony of Dr. Robert Akl (ECF No. 197) is DENIED as MOOT. Motion Offense’s Motion for Partial Summary Judgment Against Dropbox Affirmative Defenses Not Involving Prior Art (ECF No. 198) is DENIED as MOOT in Part and GRANTED in Part. The portions of the Motion addressing the following Dropbox Affirmative Defenses are DENIED as MOOT in light of Dropbox’s stipulation that it is no longer pursuing any of these affirmative defenses at trial: Third Affirmative Defense (“Failure to Provide Notice Pursuant to 35 U.S.C. §287”), Fourth Affirmative Defense (“Waiver, Estoppel, Acquiescence, Unclean Hands, and Implied License”), Fifth Affirmative Defense (“Prosecution History Estoppel”), Ninth Affirmative Defense (“Failure to Conduct Pre-Suit Investigation”), and Tenth Affirmative Defense (“Ensnarement”). The portion of the Motion addressing Dropbox’s 11th affirmative defense (“Inequitable Conduct”) is GRANTED. Motion Offense’s Motion to Exclude the Damages Opinions and Testimony of Robert A. Hutchins (ECF No. 199/ Corrected ECF No. 222) is DENIED. Motion Offense’s Motion to Strike New and Untimely Opinions of Phillip Gibbons' Expert Report Regarding Noninfringment of U.S. Patent Nos. 10,013,158; 10,021,052; 10,303,353; 10,613,737; 10,587,548; and 11,044,215 (ECF No. 200) is DENIED in Part and GRANTED in Part. Rulings on each limitation are in the following chart: Patent Claim limitation Ruling ’158 Claim 3: “An apparatus, DENIED as MOOT. comprising: at least one non- Dropbox has stipulated it will transitory memory storing not rely on these paragraphs instructions; and one or more of Dr. Gibbons’ report at trial. processors in communication with the at least one non- transitory memory, wherein the one or more processors execute the instructions to:” (ECF No. 200-3. Ex. 2, ¶¶235-42). ’158 Claim 3: “receive, from the DENIED as MOOT. first node via the at least one Dropbox has stipulated it will network, an indication of at not rely on these paragraphs least one folder via the first of Dr. Gibbons’ report at trial. user interface element, utilizing the at least one first interface” (ECF No. 200-3. Ex. 2, ¶¶321-25); ’158 Claim 3: “based on the receipt DENIED as MOOT. of the indication of the at Dropbox has stipulated it will least one folder, the indicia not rely on these paragraphs associated with the at least of Dr. Gibbons’ report at trial. one email address, and the indication to share the at least one folder via the at least one network; generate at least one email message identifying the at least one folder and including a reference to the at least one folder, without including at least one file in the at least one folder as an attachment of the at least one email message” (ECF No. 200-3. Ex. 2, ¶¶366-76); ’158 Claim 3: “send, to a second DENIED as MOOT. node via the at least one Dropbox has stipulated it will network, the at least one not rely on these paragraphs email message, without of Dr. Gibbons’ report at trial. including the at least one file in the at least one folder as an attachment of the at least one email message” (ECF No. 200-3. Ex. 2, ¶¶377-87); ’158 Claim 3: “detect, at the DENIED as MOOT. second node, an indication to Dropbox has stipulated it will open the at least one file in not rely on these paragraphs the at least one folder; and” of Dr. Gibbons’ report at trial. (ECF No. 200-3. Ex. 2, ¶¶448-58); ’158 Claim 3: “in response to DENIED as MOOT. detection of the indication to Dropbox has stipulated it will open the at least one file in not rely on these paragraphs the at least one folder, cause of Dr. Gibbons’ report at trial. retrieval of the at least one file via the at least one network for permitting display of the at least one file at the second node” (ECF No. 200-3. Ex. 2, ¶¶459-66); and ’052 Claim 12: “An apparatus, DENIED as MOOT. comprising: at least one non- Dropbox has stipulated it will transitory memory storing not rely on these paragraphs instructions; and one or more of Dr. Gibbons’ report at trial. processors in communication with the at least one non- transitory memory, wherein the one or more processors execute the instructions to:” (ECF No. 200-3. Ex. 2, ¶¶662-67); ’052 Claim 12: “send, to a second DENIED as MOOT. node via the at least one Dropbox has stipulated it will network, the first message;” not rely on these paragraphs (ECF No. 200-3. Ex. 2, of Dr. Gibbons’ report at trial. ¶¶751-60); ’737 Claim 3: “based on the receipt DENIED as MOOT. of the indication of the at Dropbox has stipulated it will least one folder, the indicia not rely on these paragraphs associated with the at least of Dr. Gibbons’ report at trial. one email address, and the indication to share the at least one folder via the at least one network; cause generation of at least one email message identifying the at least one folder and including a reference to the at least one folder, without including at least one file in the at least one folder as an attachment of the at least one email message;” (ECF No. 200-3. Ex. 2, ¶¶1183, 1202-09); ’737 Claim 3: “cause to be sent, to DENIED as MOOT. a second node via the at least Dropbox has stipulated it will one network, the at least one not rely on these paragraphs email message, without of Dr. Gibbons’ report at trial. including the at least one file in the at least one folder as an attachment of the at least one email message;” (ECF No. 200-3. Ex. 2, ¶¶1210-17); and ’548 Claim 44: “in response to the DENIED as MOOT. receipt of the message Dropbox has stipulated it will associated with the selection not rely on these paragraphs of the third user interface of Dr. Gibbons’ report at trial. element and based on the text associated with the one or more desired files and the object associated with the at least one email address; cause generation of a first message addressed to the at least one email address and including the file request, the first message including a fourth user interface element and the text associated with the one or more desired files describing the one or more desired files in connection with the file request;” (ECF No. 200-3. Ex. 2, ¶¶1275-82); ’548 Claim 44: “cause sending of, DENIED as MOOT. to a second node via the at Dropbox has stipulated it will least one network, the first not rely on these paragraphs message;” (ECF No. 200-3. of Dr. Gibbons’ report at trial. Ex. 2, ¶¶1283-90); ’548 Claim 44: “receive, from the DENIED as MOOT. second node via the at least Dropbox has stipulated it will one network, a message not rely on these paragraphs associated with a selection of of Dr. Gibbons’ report at trial. the fourth user interface element of the first message for indicating that at least one file is to be uploaded in response to the file request;” (ECF No. 200-3. Ex. 2, ¶¶1291-98); ’548 Claim 44: “in response to the DENIED as MOOT. receipt of the message Dropbox has stipulated it will associated with the selection not rely on these paragraphs of the fourth user interface of Dr. Gibbons’ report at trial. element, cause sending of a second communication over the at least one network that results in display, at the second node, of a fifth user interface element for use in uploading the at least one file in response to the file request;” (ECF No. 200-3. Ex. 2, ¶¶1299-1306); ’548 Claim 44: “in response to the DENIED as MOOT. receipt of the message Dropbox has stipulated it will associated with the selection not rely on these paragraphs of the fifth user interface of Dr. Gibbons’ report at trial. element, cause generation of a second message that includes a sixth user interface element, the second message indicating that the file request has been responded to;” (ECF No. 200- 3. Ex. 2, ¶¶1323-30); ’548 Claim 44: “cause sending of, DENIED as MOOT. to the first node via the at Dropbox has stipulated it will least one network, the second not rely on these paragraphs message;” (ECF No. 200-3. of Dr. Gibbons’ report at trial. Ex. 2, ¶¶1331-38); ’548 Claim 44: “receive, from the DENIED as MOOT. first node via the at least one Dropbox has stipulated it will network, a message not rely on these paragraphs associated with a selection of of Dr. Gibbons’ report at trial. the sixth user interface element of the second message;” (ECF No. 200-3. Ex. 2, ¶¶1339-44); ’548 Claim 44: “in response to the DENIED as MOOT. receipt of the message Dropbox has stipulated it will associated with the selection not rely on these paragraphs of the sixth user interface of Dr. Gibbons’ report at trial. element of the second message, cause sending of a third communication over the at least one network that results in display, at the first node, of a reference to the at least one file; and allow access, at the first node, to the at least one file via the reference.” (ECF No. 200-3. Ex. 2, ¶¶1345-50); ’548 Claim 45: “The non-transitory DENIED as MOOT. computer readable storage Dropbox has stipulated it will medium of claim 44, wherein: not rely on these paragraphs the first message and the of Dr. Gibbons’ report at trial. second message are email messages;” (ECF No. 200-3. Ex. 2, ¶¶1351-59); ’548 Claim 45: “the object DENIED as MOOT. includes the at least one email Dropbox has stipulated it will address or an alias associated not rely on these paragraphs with the at least one email of Dr. Gibbons’ report at trial. address; and” (ECF No. 200- 3. Ex. 2, ¶¶1369-74); and ’548 Claim 45: “the second DENIED as MOOT. message is at least partially Dropbox has stipulated it will pre-written and is caused to not rely on these paragraphs be automatically generated of Dr. Gibbons’ report at trial. without user involvement after the receipt of the message associated with the selection of the fifth user interface element.” (ECF No. 200-3. Ex. 2, ¶¶1375-82). ’215 Claim 1: “[where the at least DENIED as MOOT. one email:] identifies the Dropbox has stipulated it will information associated with not rely on these paragraphs the at least one folder,” (ECF of Dr. Gibbons’ report at trial. No. 200-3. Ex. 2, ¶¶1443-50); ’215 Claim 1: “[where the at least DENIED as MOOT. one email:] includes an Dropbox has stipulated it will Hypertext Transfer Protocol not rely on these paragraphs (HTTP) link,” (ECF No. 200- of Dr. Gibbons’ report at trial. 3. Ex. 2, ¶¶1451-58); ’215 Claim 1: “[where the at least DENIED as MOOT. one email:] is at least partially Dropbox has stipulated it will pre-written, and” (ECF No. not rely on these paragraphs 200-3. Ex. 2, ¶¶1475-82); of Dr. Gibbons’ report at trial. ’215 Claim 1: “[where the at least DENIED as MOOT. one email:] is automatically Dropbox has stipulated it will caused to be received without not rely on these paragraphs requiring user involvement of Dr. Gibbons’ report at trial. after the detection of the indication of the selection of the third user interface element to cause the initiation of the sharing of the at least one folder;” (ECF No. 200-3. Ex. 2, ¶¶1483-90); ’215 Claim 51: “[where the at least DENIED as MOOT. one email:] identifies the Dropbox has stipulated it will information associated with not rely on these paragraphs the at least one folder,” (ECF of Dr. Gibbons’ report at trial. No. 200-3. Ex. 2, ¶¶1610-17); ’215 Claim 51: “[where the at least DENIED as MOOT. one email:] includes an Dropbox has stipulated it will Hypertext Transfer Protocol not rely on these paragraphs (HTTP) link,” (ECF No. 200- of Dr. Gibbons’ report at trial. 3. Ex. 2, ¶¶1618-25); ’215 Claim 51: “[where the at least DENIED as MOOT. one email:] is at least partially Dropbox has stipulated it will pre-written, and” (ECF No. not rely on these paragraphs 200-3. Ex. 2, ¶¶1634-41); and of Dr. Gibbons’ report at trial. ’215 Claim 51: “[where the at least DENIED as MOOT. one email:] is automatically Dropbox has stipulated it will caused to be received without not rely on these paragraphs requiring user involvement of Dr. Gibbons’ report at trial. after the detection of the indication of the selection of the third user interface element to cause the initiation of the sharing of the at least one folder;” (ECF No. 200-3. Ex. 2, ¶¶1642-49). ’158 Claim 6: “The apparatus of DENIED. claim 3, wherein the apparatus is configured such that the at least one first interface and the at least one second interface are separate windows that are displayed utilizing a single web page.” (ECF No. 200-3. Ex. 2, ¶¶468-87). ’052 Claim 12: “in response to the GRANTED. receipt of the indication of the selection of the fourth user interface element and based on the file description, the indication of the at least one of the date or the time, and the indicia associated with the at least one email address; generate a first message addressed to the at least one email address and including the file request, the first message indicating the at least one of the date or the time on which the file request is based, and further including a fifth user interface element and at least one sentence including the file description describing the at least one file in connection with the file request;” (ECF No. 200-3. Ex. 2, ¶¶741-50); ’052 Claim 12: “receive, from the GRANTED. second node via the at least one network, an indication of a selection of the fifth user interface element of the first message, where the receipt of the indication of the selection of the fifth user interface element indicates that the at least one file is to be uploaded in response to the file request;” (ECF No. 200- 3. Ex. 2, ¶¶761-75); ’052 Claim 12: “in response to the DENIED. receipt of the indication of the selection of the fifth user interface element, cause, at the second node, display of at least one third interface with a sixth user interface element and a seventh user interface element, utilizing third hypertext markup language- equipped code that is sent via at least one network, the at least one third interface for use in uploading the at least one file in response to the file request;” (ECF No. 200-3. Ex. 2, ¶¶776-90); ’052 Claim 12: “receive, from the DENIED. second node via the at least one network, an indication of a selection of the seventh user interface element, utilizing the at least one third interface, where the receipt of the indication of the selection of the seventh user interface element indicates that the at least one file is to be caused to be uploaded;” (ECF No. 200-3. Ex. 2, ¶¶803-11); ’052 Claim 12: “in response to the GRANTED. receipt of the indication of the selection of the seventh user interface element, generate a second message that includes an eighth user interface element, and that does not include a file attachment with the second message, the second message indicating that the file request has been responded to;” (ECF No. 200- 3. Ex. 2, ¶¶812-25); and ’052 Claim 20: “The apparatus of GRANTED. claim 12, wherein the apparatus is configured such that the at least one of the date or the time of the indication of the at least one of the date or the time is a criterion, and the indication of the at least one file is received based on whether the criterion is met.” (ECF No. 200-3. Ex. 2, ¶¶859-67). ’353 Claim 5: “causing display of DENIED. the representation of the at least one folder in the location among the one or more folders on the file explorer interface,” (ECF No. 200-3. Ex. 2, ¶¶1147-55); and ’353 Claim 5: “in response to DENIED. detection of the indication to open at least one file in the at least one folder, causing retrieval of the at least one file via the at least one network for permitting display of the at least one file.” (ECF No. 200-3. Ex. 2, ¶¶1164-72). °737 Claim 14: “The apparatus of | GRANTED. claim 13, wherein the apparatus is configured such that the at least one folder and the at least one file are stored and synchronized utilizing at least one server, and wherein the apparatus is further configured such that the at least one email message is caused to be sent without including the at least one file as an attachment of the at least one email message, and the second node is not caused to store the at least one file when the creation of the representation of the at least one folder is caused, both for avoiding the at least one file from having to be communicated to and stored at the second node until the at least one file is requested by a user at the second node using the additional representation.” (ECF No. 200-3. Ex. 2, 991237-43). Motion Offense’s Motion for Summary Judgment of No Prior Art Invalidity (ECF No. 201) is DENIED. Motion Offense’s Sealed Motion to Exclude Certain Portions of the Expert Report of Michael Jan Shamos Re: Invalidity (ECF No. 202/Corrected ECF No. 223) is DENIED. Motion Offense’s Sealed Motion to Exclude Certain Portions of the Expert Report and Testimony of Phillip Gibbons (ECF No. 203/Corrected ECF No. 224) is DENIED. SIGNED this 12th day of May, 2023. ‘ haa ON