By John Presper

On September 15, 2021, ALJ Clark S. Cheney issued Order No. 16 granting Respondents SimpliSafe, Inc. and Vivint Smart Home, Inc.’s (collectively, “Respondents”) motion for summary determination of invalidity and terminating the investigation in Certain IP Camera Systems Including Doorbells and Components Thereof (Inv. No. 337-TA-1242).

By way of background, this investigation was instituted on January 25, 2021 based on a complaint filed by SkyBell Technologies, Inc., SB IP Holdings, LLC, and Eyetalk365, LLC (collectively, “Complainants”) alleging that Respondents unlawfully imported/sold in the U.S. certain IP camera systems including video doorbells and components thereof that infringe one or more claims of U.S. Patent Nos. 10,097,796 (“the ’796 patent”), 10,200,660 (“the ’660 patent”), 19,523,906 (“the ’906 patent”), 10,097,797 (the ’797 patent”), 9,485,478 (the ’478 patent”), 10,674,120 (“the ’120 patent”), and 9,432,638 (“the ’638 patent”).  See our February 4, 2021 post for more details regarding the complaint and Notice of Investigation.

According to the Order, ALJ Cheney found that all of the asserted claims were anticipated by the inventors’ own earlier patent due to a break of copendency in the application priority chain.  Respondents had argued that Application No. 14/338,525 (“the ’525 application”) was abandoned no later than midnight on October 6, 2014 for failure to submit the required filing fee, and the next application in the chain, Application No. 14/670,044 (“the ’044 application”), was not filed until March 26, 2015.  Complainants disputed the date on which abandonment occurred, arguing that the ’525 application was not abandoned until the USPTO said so in a Notice of Abandonment mailed on April 7, 2015, and thus there was no break in the copendency chain.  The ALJ agreed with Respondents and ruled that Complainants’ argument is (1) “contrary to the plain language of the Patent Act, which specifies that an application is abandoned ‘[u]pon failure to submit the fee . . . within [the] prescribed period” under 35 U.S.C. § 111; and (2) “contrary to well-established Patent Office practice,” including the MPEP which explains that “[a]bandonment takes place by operation of law for failure to reply to an Office action or timely pay the issue fee, not by operation of the mailing of a Notice of Abandonment.”  Because it was undisputed that an earlier unasserted patent in the priority chain discloses every limitation of the asserted claims, the ALJ determined that the asserted claims are invalid as anticipated and terminated the investigation in its entirety.