Litigation

Untitled case

pending

24-1331

Patents at issue (1)

8144184

Summary

Federal Circuit appeal listed on the patent's Google Patents record as related to the U.S. Patent No. 8,144,184 family. The narrative states it is almost certainly an appeal from one of the two Vivint v. SB IP Holdings IPR Final Written Decisions, but the exact IPR-to-appeal mapping is not confirmed.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case systematically, starting with the Federal Circuit docket entry and the patent.

Excellent leads. Now let me pin down the IPR-to-appeal mapping, the district court trial outcome, and the current status of the appeal.

Key facts emerging. Let me nail down which patents were in the $45.4M verdict, the settlement/dismissal, and the parallel ITC action.

Case Overview and Background

Parties. The appellant is SB IP Holdings LLC, a patent-holding affiliate of SkyBell Technologies, Inc. (Irvine, CA), a small video-doorbell maker whose front-door camera technology is licensed to competitors — Cole Schotz's own case write-up states that Bot Home Automation, the maker of the market-leading Ring doorbells, is a licensee of SkyBell's technology. SB IP is therefore best characterized as a hybrid: an IP-holding subsidiary of an operating company that does not itself make products but monetizes a large portfolio (SkyBell claims 150+ patents) through licensing and litigation. Its counsel in the campaign is Cole Schotz P.C. (Gary Sorden, James Perkins, Rajkumar Vinnakota, Brian King). The appellee is Vivint, Inc. (Provo, UT), the operating subsidiary of Vivint Smart Home — one of the largest North American smart-home security, video-monitoring and solar providers, and a direct competitor in the doorbell-camera segment. Vivint is represented by Foley & Lardner LLP (Michael R. Houston, Nicholas Lagerwall) and Texas local counsel. (Vivint Smart Home was acquired by NRG Energy in 2023; I have not re-verified the deal terms in this session, so treat that as background only.)

The technology and the patents. The asserted family descends from a single October 15, 2002 provisional application (No. 60/418,384) and inventor Ronald Carter, and is directed to a network-connected "wireless exterior module" at a building entrance — proximity sensor, camera, microphone, speaker, RF transceiver — wirelessly linked to an in-home controller whose software app streams video/audio to a remote device such as a phone. U.S. Patent No. 8,144,184 ("Detection and Viewing System," issued Mar. 27, 2012) claims that architecture, adding in claims 14–15 the requirement that the wireless and peripheral devices be "configured for communications via text messaging"; it is a continuation of the '581 patent, which is a CIP of the '644 patent. The '184 was one of six patents asserted in SB IP Holdings LLC v. Vivint Smart Home, Inc., No. 4:21-cv-00912 (E.D. Tex., filed Nov. 18, 2021) — alongside the '644, '098, '183, '581 and '614 — and was accused against Vivint's Doorbell Camera/Pro, Smart Hub and control panel, Indoor/Ping/Outdoor Cameras, Smart Drive DVR, and the iOS/Android apps, plus backend proxy/registrar/redirect servers. The companion case, No. 4:20-cv-00886, asserted the later "Communication and Monitoring System" continuations; only U.S. Patent Nos. 9,485,478 and 10,674,120 (claims 10/16 and 16) survived to the October 2023 jury trial.

Posture, venue and why it matters. Both suits landed in the Sherman Division of the E.D. Tex. before Judge Amos L. Mazzant III, and venue was itself contested: SB IP first sued the holding company, Vivint, Inc. moved its counterclaims out to C.D. Cal. (Judge George H. Wu, No. 2:21-cv-09472), and Vivint filed mirror declaratory-judgment actions in C.D. Cal. (No. 8:22-cv-00034) that were transferred back and consolidated into the Texas case on July 27, 2022. SB IP justified the district on Vivint's owned office at 1115 W. Hickory St., Denton, Texas. The case matters for three reasons. First, IPR linkage and claim-cancellation sequencing: Vivint filed a coordinated set of roughly ten IPRs against the family (IPR2022-00810/811/812/813/814, plus follow-ons 01352, 01364, 01365, 01449) under a Sotera stipulation, and the Board invalidated all 21 claims of the '184 — claims 1–13 and 16–21 in the Nov. 3, 2023 FWD in IPR2022-00811, and claims 14–15 (newly added to the Texas case in June 2022, hence the follow-on petition) in IPR2022-01364 (Apr. 10, 2024) — even as the district court case proceeded on sibling patents to a $45,418,641.70 willful-infringement verdict on Oct. 23, 2023, plus prejudgment interest but no enhancement (Dkt. #494, #574, #575). That divergence is a textbook illustration of the practical non-mutuality of PTAB cancellation before appeal. Second, it is an NPE-structure case: a small operating company litigating through a holding entity against the industry's largest players, in parallel with an ITC § 337 action (Inv. No. 337-TA-1242) and DJ actions by SimpliSafe (D. Mass.) and Arlo (S.D. Cal.) — i.e., a coordinated campaign across the video-doorbell market. Third, 24-1331 is no longer pending: Fed. Cir. No. 24-1331 was SB IP's appeal from the IPR2022-00811 FWD (a PTAB appeal, not an infringement appeal), docketed in January 2024 and consolidated on Jan. 22, 2024 with 24-1307 (lead) and 24-1366; on July 10, 2025 the court granted the parties' joint Rule 42(b) stipulations and dismissed all of the consolidated appeals (24-1307, -1331, -1366, -1874, -1957, -2012, -2189), each side bearing its own costs. Public reporting also indicates the '912 case itself was dismissed with prejudice in its entirety, which — together with the voluntary dismissal of every IPR appeal — is consistent with a global settlement, though I could not verify the dismissal order or its terms from the docket directly.

Verification notes. The mapping of 24-1331 to IPR2022-00811/the '184 patent is supported by the Federal Circuit's consolidated caption (appeal nos. 24-130

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Threshold correction: which "litigation"?

The '184 patent was not the patent tried to verdict in the case that produced the widely reported $45.4M judgment. Two E.D. Tex. suits before Judge Amos L. Mazzant III must be kept separate:

Suit Filed Patents Outcome
SB IP Holdings LLC v. Vivint, Inc., No. 4:20-cv-00886-ALM 2020 '478 and '120 (of seven originally asserted) Jury verdict 2023-10-23; $45,418,641.70 final judgment 2024-08-26
SB IP Holdings LLC v. Vivint Smart Home, Inc., No. 4:21-cv-00912-ALM 2021-11-18 '184, '098, '614, '581, '644, '183 Dismissed with prejudice in its entirety 2025-08-11

The '184 patent lived and died in 4:21-cv-00912. It was never tried; it was invalidated at the PTAB, and the district case ended in a with-prejudice dismissal after the Federal Circuit appeals were voluntarily dismissed. Also, the mapping flagged as unconfirmed in the prior summary is now confirmed: Fed. Cir. 24-1331 is SB IP's appeal of the IPR2022-00811 final written decision.

Chronology

1. Filing and initial pleadings — 4:21-cv-00912

  • 2021-11-18 — SB IP Holdings LLC (a SkyBell Technologies subsidiary) files suit against Vivint Smart Home, Inc. ("VSH") in the Sherman Division, E.D. Tex., asserting six patents including the '184 patent. Accused products: Doorbell Camera/Doorbell Camera Pro, Control Panel, Smart Locks, Outdoor Camera Pro, Smart Drive Playback DVR, the iOS/Android apps, and backend infrastructure.
  • 2022-01-07 — Vivint files a declaratory judgment action in C.D. Cal., Vivint, Inc. v. SB IP Holdings, LLC, No. 8:22-cv-00034, seeking non-infringement and unenforceability of the '184 patent — expressly not invalidity. That choice was deliberate: Vivint reserved invalidity for the PTAB. (Source: IPR2022-01364 Petition, "Notice of Related Matters," PTACTS.)
  • Early 2022 — VSH moves to dismiss under Rule 12(b)(2) and 12(b)(3) (no personal jurisdiction; E.D. Tex. not a proper venue), arguing it is a pure Delaware holding company with no Texas contacts, employees, bank accounts, or regular place of business. (Motion reproduced as Ex. 1029 to IPR2022-00811; PTACTS/download-documents?artifactId=KtgsYKzEjKE7sSZ4WsUZ-TJYLX4haoNXiYhRGWNcDv4dnDI35T

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research this docket. Let me start with searches on the appeal number and the underlying patents.

Case 24-1331 is now identified: SB IP Holdings, LLC v. Vivint, Inc. (Fed. Cir.), the appeal from IPR2022-00811, consolidated under lead appeal 24-1307. SB IP Holdings was the plaintiff below. Let me pull the docket and party counsel details.

Bottom line

Case No. 2024-1331 is SB IP Holdings, LLC v. Vivint, Inc. (Fed. Cir.), the patent owner's appeal from the PTAB's Final Written Decision in IPR2022-00811 (U.S. Pat. No. 8,144,184, FWD Nov. 3, 2023, APJ Easthom writing). The "plaintiff" for your purposes is SB IP Holdings, LLC — the plaintiff in the underlying E.D. Tex. infringement suits (SB IP Holdings LLC v. Vivint, Inc., No. 4:20-cv-00886-ALM, and No. 4:21-cv-00912-ALM) and the appellant here. It was represented by Cole Schotz P.C.

Two corrections to the case metadata before the counsel table:

Plaintiff/Appellant-side counsel of record — SB IP Holdings, LLC

Attorney Role Firm / office Note
Gary R. Sorden Lead counsel (appellant; lead counsel for Patent Owner in the IPRs and in the E.D. Tex. trial) Cole Schotz P.C. — Dallas, TX (901 Main St., Ste. 4120); firm NY address also used in PTAB filings Chambers USA Band 4, IP–Texas; lead counsel in SB IP Holdings v. Vivint; obtained a $34.6M patent verdict in April 2024 (S.C. plaintiff); appears in Fed. Cir. GeigTech East Bay v. Lutron
Rajkumar ("Kumar") Vinnakota Of counsel / backup counsel (appellate and PTAB); filed post-trial and supplemental-authority papers below Cole Schotz P.C. — New York, NY (1325 Avenue of the Americas, 19th Fl.) Member of the Cole Schotz IP team that handled the SB IP portfolio IPRs and the E.D. Tex. § 101 and damages briefing
Brian L. King Counsel (patent litigator on the SB IP matter per party records; appellate appearance unconfirmed) Cole Schotz P.C. — Dallas, TX Joined Cole Schotz's Dallas IP group in 2019; patent/trademark/ITC and Federal Circuit practice; appeared pro hac vice for SB IP in the related C.D. Cal. action before transfer

Supporting (non-attorney): Gail Ashby, paralegal at Cole Schotz, appeared with Sorden and Vinnakota at the April 10, 2024 PTAB oral hearing in the companion IPR2022-01449 — she is not counsel.

Supporting citations

What I could not confirm — please treat as gaps, not findings

  1. The Federal Circuit entries of appearance themselves. I could not retrieve the EOA documents (Dkt. 1-stage filings due Jan. 22, 2024 in 24-1331) from PACER or CourtListener's appellate docket. The identification of Sorden as appellant's counsel rests on the Justia PACER-derived docket listing, the Unicourt 24-1366 docket ("Appellant Attorney: Gary Sorden"), PTAB counsel records, and the hearing transcript — all consistent, but not a substitute for the EOA.
  2. Brian L. King's appellate role. He is listed on the SB IP party record by litigation-data aggregators and appeared for SB IP in the related district court actions, but I found no Federal Circuit filing by him in 24-1331/24-1307. Treat him as district-court/portfolio counsel unless an EOA is located.
  3. E.D. Tex. local counsel. The pro hac vice designation of Aaron L. Renfro (a California lawyer) was for the C.D. Cal. action and did not carry over after transfer to Judge Mazzant's court; the E.D. Tex. docket shows Cole Schotz lawyers filing directly. I did not locate a separate Texas local-counsel designation for SB IP.
  4. One aggregator page (Patsnap) garbles party names — rendering Vivint as "Vivion" — though its counsel list (Brian Lawrence King, Gary Sorden, Rajkumar Vinnakota / Cole Schotz PC) matches the other sources. Do not rely on that page for the caption.

For contrast — appellee/defendant Vivint, Inc. (not asked, but relevant to the caption)

Vivint was represented in the IPRs by Foley & Lardner LLP — Michael R. Houston (lead, Reg. No. 58,486; Washington, D.C.) and Nicholas Lagerwall (backup; Madison/Washington) — together with Quinn Emanuel Urquhart & Sullivan LLP — James M. Glass and Quincy Lu (New York) — as recited in the IPR2022-01365 petition's notice of lead and backup counsel and the April 2024 hearing transcript. Vivint's E.D. Tex. trial counsel included Andy Tindel. Their Federal Circuit EOAs were likewise not retrieved.

Practical caution: because the appeals were dismissed by joint stipulation in July 2025 and no merits opinion issued, there is no Federal Circuit opinion construing the '184 patent or naming counsel in a precedential caption; any counsel listing you publish should be sourced to the PTAB hearing record and the district-court docket, which are the best-documented appearances here.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research this case, starting with the docket and party identification.

Let me pull the actual docket and confirm all appearances.

Let me confirm the Federal Circuit appearances in the lead consolidated appeal and check the Foley team.

Threshold point on the caption

Case No. 2024‑1331 at the Federal Circuit is not itself a patent infringement case — it is an appeal from a PTAB final written decision, and the appellate caption has no "defendant." The docket is:

SB IP Holdings, LLC (Appellant) v. Vivint, Inc. (Appellee), No. 2024‑1331 (Fed. Cir., docketed Jan. 8, 2024), consolidated Jan. 22, 2024 into lead appeal 2024‑1307 with members 2024‑1331 and 2024‑1366 (Justia docket; consolidation order at Dkt. 2–3, UniCourt).

This resolves the open question in the prior section of the summary: 2024‑1331 is the appeal of IPR2022‑00811, Vivint, Inc. v. SB IP Holdings LLC, FWD Nov. 3, 2023 (APJ Karl D. Easthom, writing) (Patexia IPR2022‑00811), which is the '184 patent proceeding. Six appeals were later dismissed by joint stipulation under FRAP 42(b) in SB IP Holdings, LLC v. Vivint, Inc., Nos. 2024‑1307, ‑1331, ‑1366, ‑1874, ‑1957, ‑2012 (Fed. Cir. July 10, 2025) (nonprecedential order, Dkt. 49) (CAFC PDF).

⚠️ Flag for the supervising attorney: the case metadata in this workspace lists status as "pending." That is no longer accurate — the appeal was dismissed with each side bearing its own costs on July 10, 2025, and the mandate issued. I have kept the metadata's caption/parties/patent as authoritative per instructions, but the status field should be updated.

The party occupying the defendant-side position (the party defending the PTAB result below and adverse to the patent owner) is Vivint, Inc.

1. Counsel of record for Vivint, Inc. in the Federal Circuit appeal (2024‑1331 / lead 2024‑1307)

Name Role Firm / office Note on experience
Michael Robert Houston Lead counsel of record for Appellee Vivint; lead counsel in the underlying IPRs Foley & Lardner LLP, 3000 K St. NW, Suite 600, Washington, DC 20007 Reg. No. 58,486; designated "Lead Counsel" in Vivint's PTAB notices of counsel for the SB IP IPR family; the only Vivint attorney shown in the Federal Circuit's "represented by" listing for 2024‑1331 (Justia); also lead counsel for Vivint in other PTAB matters (e.g., IPR2022‑01282 v. ADT).
Nicholas (Nick) Lagerwall Backup/associate counsel (PTAB back‑up counsel; Fed. Cir. appearance not independently confirmed) Foley & Lardner LLP (Washington, DC address of record; Madison, WI direct line) Reg. No. 63,272; named "Backup Counsel" in Vivint's PTAB notice of lead and backup counsel and appeared with Houston at PTAB oral argument.

Sourcing caveat: the public Federal Circuit docket extract I could retrieve (Justia, last refreshed Jan. 8, 2024) shows only Mr. Houston under "Represented By" for Vivint. Because that snapshot predates most of the briefing, additional Foley or Quinn Emanuel appearances may have been filed later that are not visible without PACER. I could not verify any post‑January‑2024 Fed. Cir. entry of appearance, and I am not inventing one. To close this gap, pull the PACER docket for lead appeal 2024‑1307 and check the "Entry of Appearance" entries (due Jan. 22, 2024) and any Rule 42(b) stipulation, which typically identifies signing counsel.

No in-house Vivint attorney appears on any docket I could access; Vivint was represented exclusively by outside counsel. No local counsel is required at the Federal Circuit, and none appears.

2. Vivint's PTAB team (same merits team that stood behind the appeal)

Confirmed from the April 10, 2024 oral argument transcript in the related '644 IPR (IPR2022‑01449), which lists appearances "on behalf of the Petitioner, Vivint, Inc.":

  • James M. Glass — Quinn Emanuel Urquhart & Sullivan LLP, 51 Madison Ave., 22nd Floor, New York, NY 10010 (first-chair at PTAB argument).
  • Quincy Lu — Quinn Emanuel Urquhart & Sullivan LLP, New York, NY.
  • Michael Houston and Nicholas Lagerwall — Foley & Lardner LLP, Washington, DC.

Source: IPR2022‑01449 oral hearing transcript, May 16, 2024.

I did not find a Quinn Emanuel entry of appearance on the Federal Circuit docket in the sources available; Glass and Lu are documented as PTAB counsel, and their appellate appearance is unverified.

3. If the intended "case" is the underlying E.D. Tex. infringement suit

The patent-in-suit family was litigated in SB IP Holdings LLC v. Vivint, Inc., No. 4:20‑cv‑00886‑ALM (E.D. Tex.) and SB IP Holdings LLC v. Vivint Smart Home, Inc., No. 4:21‑cv‑00912‑ALM (E.D. Tex.), ending in a $45.4 million jury verdict and an Aug. 26, 2024 final judgment, with enhanced damages denied (Dkt. 574–575) (Law360 case page). Vivint's counsel there:

Name Role Firm / office Note
Andy Tindel Trial counsel (E.D. Tex.); not on the Fed. Cir. docket Mann Tindel & Thompson, Tyler, TX Filed the operative Vivint motions and sealed responses in 4:20‑cv‑00886 (e.g., Dkts. 567–568, 577, 189); Tyler-based patent defense and trial practice.
Adam R. Aquino Pro hac vice, E.D. Tex. Foley & Lardner LLP, 95 S. State St., Salt Lake City, UT Notice of Appearance – Pro Hac Vice, Dkt. 184 (Nov. 8, 2022).
Jared J. Braithwaite Pro hac vice, E.D. Tex. Firm not confirmed in accessible sources Notice of Appearance – Pro Hac Vice, Dkt. 183 (Nov. 7, 2022); earlier filing at Dkt. 182 was filed in error and stricken.
Jonathan Michael Thomas Counsel, E.D. Tex. and C.D. Cal. Firm not confirmed (appeared in C.D. Cal. with MoFo's Charles Barquist as local counsel, suggesting MoFo) Filed Vivint's motion to continue scheduling deadlines, Dkt. 186 (Nov. 18, 2022).
Charles S. Barquist Local counsel, C.D. Cal. DJ action (Vivint v. SB IP Holdings, No. 8:22‑cv‑00034) Morrison & Foerster LLP, Los Angeles Appeared for Vivint as plaintiff in the declaratory judgment action later transferred to E.D. Tex. as No. 4:22‑cv‑00648.
Michelle Y. Ku Pro hac vice, C.D. Cal. Morrison & Foerster LLP Pro hac vice order entered July 5, 2022.
David R. Wright Recorded in the E.D. Tex. docket as "LEAD ATTORNEY, PRO HAC VICE" for counter‑claimant Vivint Firm not confirmed in accessible sources Appears in the party/attorney listing reproduced in a PTAB exhibit; I could not verify his firm or current status, so treat as unconfirmed.

Other names appearing in Vivint's E.D. Tex. attorney block but whose firms I could not verify (Jeffrey William Nardinelli, **Michael A. Manookin