VIAAS, Inc. has filed a second complaint against APT Group Holdings (Vivint Smart Home) (2:24-cv-00713), this one in the Eastern District of Texas. In April 2023, Western District of Texas Judge Kathleen Cardone dismissed without prejudice the first case—as well as parallel suits against each of ADT, Alphabet (Google), Amazon (Ring), APT Group Holdings (Vivint Smart Home), and Cisco—all over the same two patents asserted again here, for lack of standing, ruling that VIAAS failed to meet its burden to prove that it actually owned those patents. While refusing a request to impose sanctions in the earlier litigation, Judge Cardone did admonish counsel, William P. Ramey III (identified again on the new complaint, as colead counsel), "that he has a duty to conduct a diligent investigation prior to initiating any lawsuit, and that he may not knowingly persist with cases that he learns to be baseless".
Per Judge Cardone, the sole named inventor for the asserted patents (8,558,888; 9,472,069), Steven ("Steve") G. Roskowski, assigned them (as applications during prosecution) to a Cayman Islands company called Third Iris Corp. Later, in April 2015, a Delaware entity, and subsidiary of Barracuda Networks at the time, Third Iris, Inc. dissolved. A first break in the chain of title for the two patents occurs here, as VIAAS failed to prove to the court that Third Iris Cayman Islands is the same as Third Iris Delaware or that the two are in any relevant way connected. Thus, no evidence suggests that the latter Third Iris had any patent rights that, upon its dissolution, could pass to Barracuda.
VIAAS spun out of Barracuda Networks in 2017. The court also ruled that evidence submitted to substantiate a purported transfer of the patents-in-suit from Barracuda to VIAAS established only a promise to assign those assets, not an actual assignment. This second break in the chain of title provided a second hook for the court's dismissal of VIAAS's claims for lack of demonstrated standing to sue. Judge Cardone rejected the VIAAS request to amend to cure the defect, ruling that "Plaintiff has not explained how amending its Complaints could change the fact that it never acquired the exclusionary rights it needs to sue for infringement of the Patents".
Amazon and Ring asked the court to force VIAAS to pay the fees and costs associated with their motion to dismiss, but Judge Cardone refused to do so because, although the defendants sent a letter outlining the problems in the patents' apparent chain of title, they did not provide formal notice of a potential Rule 11 sanction, and "while it is a close call, the Court finds that monetary sanctions are not warranted". As noted above, Judge Cardone admonished counsel, though, further noting that "Plaintiff's attorney's failure to acknowledge—whatsoever—the difference between Third Iris, Inc., and Third Iris Corp. evinces either an egregious lack of competence or, more likely, a troubling lack of candor" and warning that "[i]f Plaintiff engages in similar conduct in future cases before this Court, he does so at the risk of sanctions".
With the previously asserted '888 and '069 patents, VIAAS again targets the provision of the Vivint Home Security System and related products, including alarms, cameras, and sensors. The patents generally relate to using a camera to capture, store, and securely transmit "events of interest", including related features like varying parameters to ensure reliable transmission over a low-bandwidth or unreliable transmission (the '888 patent) and capturing multiple viewpoints of said events (the '069 patent). They belong to a family of three with issue dates ranging from June 2012 through October 2016, the family having earliest estimated priority in February 2009. Roskowski reports on social media having been the CTO with Eagle Eye Networks since July 2012 (as well as having been the CEO with "Third Iris" from June 2008-July 2012).
Ramey LLP filed that earlier round of cases in October 2022, before the implosion of its relationship with patent advisory firm, sometime NPE owner, purported litigation funder, and alleged law practitioner AiPi LLC (sometimes referred to as "AiPi Solutions"). An alleged failure of AiPi to pay Ramey LLP legal bills led to that breakdown, which prompted Ramey LLP to withdraw from myriad AiPi-tied campaigns, often in splashy fashion, with ensuing briefing revealing a surprising number of behind-the-scenes details about these campaigns. Among those disclosures, Ramey LLP listed the litigation of VIAAS as AiPi-related.
Note, however, that in connection with the prior five suits, although West Texas does not impose heightened disclosure requirements on litigants, Ramey filed a "Certificate of Interested Parties" in connection with all five cases that "shows as follows", providing a "complete list of all persons, associations of persons, firms, partnerships, corporations, guarantors, insurers, affiliates, parent or subsidiary corporations, or other legal entities that are financially interested in the outcome of the case" that has only two entries, "VIAAS Inc." (no comma) and Ramey LLP. AiPi is not on the list.
Nor is AiPi on an analogous list of financially interested parties, filed with the new Eastern District of Texas case against Vivint (even though that district does not impose heightened disclosure either), that list reading VIAAS (this time with the comma) and Ramey LLP. Also not listed is Hecht Partners LLP, David L. Hecht of which is characterized as "Co-Lead Counsel" with Ramey himself. The recorded chain of title publicly available through USPTO records does not now contain any new or clarifying documents. The prior dismissals were all without prejudice, Judge Cardone noting that while some defendants there asked that they be with prejudice, "dismissals for lack of subject matter jurisdiction are not judgments on the merits and must be without prejudice".
VIAAS pleads that it "and its predecessors-in-interest have entered into settlement licenses with several defendant entities", none of which agreed that it has infringed VIAAS's patents such that no duty to mark, per VIAAS, attached. "Further", pleads VIAAS, "to the extent necessary, Plaintiff will limit its claims of infringement to method claims and thereby remove any requirement for marking". Failure to plead compliance with marking obligations, particularly when the patent(s) asserted have expired and in connection with undisclosed prior settlement agreements, has been a source of recent trouble for Ramey-repped clients.
Should Vivint Smart Home file another motion challenging VIAAS's standing to sue, it will be before Chief Judge Rodney Gilstrap. 8/30, Eastern District of Texas
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