SimpliSafe, Inc. v. Switchmate Home LLC (19-cv-12520).

SimlpiSafe sued Skybell in 2020, seeking a declaration that it did not infringe eight Skybell patents relating to the livestreaming of video doorbells and security cameras to smartphones.  Skybell sent a cease and desist letter to SimpliSafe in December 2020, asserting infringement by SimlpiSafe’s Video Doorbell Pro and SimpliCam products, and subsequently filed an ITC complaint asserting the same against SimpliSafe.  SimpliSafe says that the patents all claim priority to a 2002 provisional application, but that the chain of priority had a break in co-pendency (one in the chain claimed priority to an earlier application that had already gone abandoned), rendering the priority claim improper.  The prior patents would thus be prior art against the later patents that are the subject of this suit. 

Judge Burroughs stayed the resolution of the ITC matter at the request of the parties in June 2021.  In December, however, SimpliSafe moved to lift the stay for the limited purpose of filing a summary judgment motion on the continuity break that would, if resolved favorably, dispose of the entire case.  According to SimpliSafe, the ITC reached a final determination rendering the patents invalid as anticipated by one of the earlier patents qualified as prior art due to the break in continuity in the family.  (Note – ITC determinations are not binding on a district court, but can serve as persuasive authority).   Skybell indicated that it will appeal the ITC determination and opposed the motion on the grounds that the application that had gone abandoned was revived in November 2021, curing the continuity break.

After reviewing the motion papers, Judge Burroughs lifted the stay in its entirety.  She noted that both parties had preferred a total lift of stay rather than have the court rule in accordance with the other party’s preference, and that the Federal Circuit would not likely issue a decision until after the expiration of the patents in October 2023.  Accordingly, the litigation will proceed while the appeal remains pending.