In a swift resolution spanning just 66 days, Authentixx LLC voluntarily dismissed its patent infringement action against Santander Bank N.A. without prejudice before the S.D.N.Y. ever reached the merits. Filed on May 12, 2024, and closed July 17, 2024, the case centered on U.S. Patent No. 10,355,863 B2 — covering a system and method for authenticating electronic content — a technology with direct implications for digital banking and identity verification infrastructure. The dismissal, filed under Federal Rule of Civil Procedure 41(a)(1)(A)(i), occurred before Santander had answered the complaint or moved for summary judgment.

For IP practitioners and in-house teams in the financial technology sector, this case is a strategic signal worth unpacking. Pre-answer voluntary dismissals often reflect licensing negotiation dynamics, claim viability reassessments, or plaintiff repositioning for future enforcement. The ‘without prejudice’ designation means Authentixx retains the right to re-file, keeping Santander — and potentially other financial institutions relying on similar electronic content authentication systems — within the scope of ongoing infringement risk.

Case Overview

The Parties

The Patent at Issue

U.S. Patent No. 10,355,863 B2 covers a system and method for authenticating electronic content — broadly, technology that verifies the identity, origin, or integrity of digital information exchanged between users or systems. The patent’s claims likely encompass cryptographic or credential-based mechanisms used to confirm that electronic communications, transactions, or documents are genuine and untampered. In practical terms, this technology underpins secure login flows, digital signature verification, and transaction authentication processes commonly deployed in online banking platforms.

• • US10355863B2

Legal Representation

Plaintiff Counsel: Rabicoff Law LLC (lead: Isaac Rabicoff)
Defendant Counsel: Saul Ewing LLP; Winston Strawn LLP (lead: E. Danielle T. Williams)

Litigation Timeline & Procedural History

The case was filed in the United States District Court for the Southern District of New York, one of the most active and high-profile venues for patent infringement litigation in the country. As a first-instance district court action, it would have proceeded through claim construction, fact discovery, and potentially a Markman hearing before reaching trial — a process that, in complex patent cases in S.D.N.Y., can span multiple years. The assignment of Chief Judge Jennifer H. Rearden further signaled that the case was subject to rigorous judicial management from the outset.

The case’s 66-day lifespan — from filing on May 12, 2024 to closure on July 17, 2024 — makes it one of the shortest-lived infringement actions at the district court level. The termination basis was a voluntary dismissal filed by Authentixx under FRCP 41(a)(1)(A)(i), which permits a plaintiff to dismiss an action without a court order, without prejudice, before the opposing party has filed an answer or a motion for summary judgment. Santander had neither answered nor moved at the time of dismissal, suggesting the plaintiff acted well within the procedural window to preserve full re-filing rights.

The Verdict & Legal Analysis

Outcome

Authentixx LLC filed a notice of voluntary dismissal pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(i), terminating the action without prejudice and without any ruling on the merits of the infringement claims. No damages were awarded, no injunctive relief was granted, and no claim construction rulings were issued. Because the dismissal was without prejudice, Authentixx retains the legal right to re-file the same claims against Santander Bank in the future, subject to applicable statutes of limitations.

Verdict Cause Analysis

The infringement action was terminated on voluntary dismissal grounds before substantive judicial review — the following factors illuminate what this procedural outcome likely reflects:

• The use of FRCP 41(a)(1)(A)(i) — the most plaintiff-favorable dismissal mechanism — confirms Authentixx acted strategically before Santander could build litigation momentum through an answer or dispositive motion.
• Dismissal without prejudice within 66 days frequently signals ongoing licensing negotiations, with plaintiffs using filed suits as leverage before withdrawing once settlement terms are reached or discussions require more time.
• The absence of any answer or early motion from Santander suggests the defendant’s legal team (Saul Ewing LLP and Winston Strawn LLP) had not yet mounted a formal defense, which may have been a factor in the plaintiff’s timing calculation.
• A pre-answer dismissal avoids early judicial scrutiny of claim viability, including potential Rule 12(b)(6) motions challenging pleading sufficiency under Iqbal/Twombly or Alice-based patent eligibility arguments under 35 U.S.C. § 101.

Legal Significance

1. 1. The without-prejudice dismissal creates an unresolved infringement question with potential industry-wide implications — other financial institutions deploying comparable electronic content authentication systems should treat US10355863B2 as an active enforcement risk until Authentixx’s litigation strategy fully plays out.
2. 2. No claim construction record was created in this proceeding, meaning the scope of US10355863B2’s claims remains judicially undefined and Authentixx retains maximum interpretive flexibility in any re-filed action or parallel assertion campaign.
3. 3. The case reinforces a well-documented PAE enforcement pattern in fintech — filing in high-credibility venues like S.D.N.Y. to maximize settlement pressure, then withdrawing before incurring the costs and risks of substantive litigation, which litigants and courts increasingly scrutinize under fee-shifting precedents.

Strategic Takeaways

For Patent Attorneys:

• When representing defendants against pre-answer voluntary dismissals like this one, immediately evaluate whether to seek a court order converting the dismissal to one with prejudice or to condition withdrawal on a covenant not to sue, particularly where re-filing risk is high.
• Counsel for financial institution defendants should proactively conduct a landscape review of US10355863B2 family members and continuation applications to anticipate and prepare for potential re-filed or related suits.
• The FRCP 41(a)(1)(A)(i) window closes once an answer is filed — accelerating the answer timeline in PAE cases can eliminate the plaintiff’s no-cost exit option and rebalance settlement dynamics in the defendant’s favor.
• Alice/§101 eligibility challenges remain a potent early-stage defense for authentication and software-implemented patents like US10355863B2; defendants should prepare Rule 12(c) or CBM/IPR petitions as contingency strategies should this case be re-filed.

For IP Professionals:

• In-house IP teams at financial institutions should add US10355863B2 and its related patent family to their ongoing litigation watch lists, given the without-prejudice dismissal leaves enforcement risk fully intact and re-filing possible.
• Portfolio managers should benchmark their institution’s electronic authentication technology stack against the independent claims of US10355863B2 and commission a formal FTO opinion to document good-faith risk assessment ahead of any potential re-filing.

For R&D Teams:

• Engineering teams developing or procuring digital banking authentication systems should review whether their implementations — especially those involving cryptographic content verification or credential-based electronic document authentication — overlap with the claim scope of US10355863B2.
• Design-around strategies for authentication workflows are feasible and should be evaluated now, before any re-filed litigation creates injunctive risk; decentralized or federated identity approaches may offer both technical and IP-differentiation advantages.