Secure Matrix LLC v. Dal-Tile Corporation — Dismissed With Prejudice
Secure Matrix LLC asserted US8677116B1, covering systems and methods for authentication and verification, against tile manufacturer Dal-Tile Corporation in the Eastern District of Texas. The plaintiff voluntarily dismissed the case with prejudice after just 149 days, before the defendant had filed any answer, with each party bearing its own costs.
Authentication patent suit against tile maker ends before answer filed
On December 30, 2024, Secure Matrix LLC filed a patent infringement action against Dal-Tile Corporation in the Eastern District of Texas (Case No. 2:24-cv-01084), asserting US8677116B1, which covers systems and methods for authentication and verification. Dal-Tile Corporation is a major tile and stone products manufacturer, making the assertion of an authentication-technology patent against it a commercially unusual pairing that suggests the claims may have targeted Dal-Tile’s digital infrastructure or customer-facing verification systems.
The case was voluntarily dismissed with prejudice on May 28, 2025, just 149 days after filing. Critically, Dal-Tile had not yet answered the complaint or moved for summary judgment at the time of dismissal. The dismissal was with prejudice, meaning Secure Matrix LLC is permanently barred from re-asserting the same claims against Dal-Tile on this patent. Each party agreed to bear its own costs, expenses, and attorneys’ fees — a mutual walk-away arrangement with no apparent monetary transfer on the public record.
The speed of resolution — before any substantive defense filing — and the with-prejudice designation are notable. Cases dismissed at this early stage before an answer is filed typically suggest the parties reached a private resolution, the plaintiff identified a claim weakness, or licensing discussions concluded. The equal cost allocation is consistent with a negotiated exit rather than capitulation. The public record does not disclose whether any licensing agreement or other commercial terms were reached between the parties.
Filing to Voluntary dismissal in 149 days
149 days — resolved before defendant answered; well under median E.D. Texas patent case duration
Dismissed with prejudice: what the voluntary exit means for both parties
Voluntary dismissal with prejudice under Rule 41
Under Federal Rule of Civil Procedure 41(a)(1), a plaintiff may voluntarily dismiss an action before the defendant serves an answer or a motion for summary judgment. Here, Secure Matrix filed a notice of voluntary dismissal with prejudice, which the Court accepted. The with-prejudice designation is the critical qualifier — it carries the full force of a judgment on the merits, permanently extinguishing Secure Matrix’s right to re-file the same claims against Dal-Tile.
Rule 41(a)(1) — permanent barSecure Matrix permanently forfeits its claims against Dal-Tile
By dismissing with prejudice, Secure Matrix LLC surrendered any future right to sue Dal-Tile Corporation on US8677116B1 for the accused conduct. This is a more significant concession than a without-prejudice dismissal, which would have preserved the option to refile. However, the patent itself remains valid and enforceable against other defendants. The equal cost allocation suggests Secure Matrix did not face a fee-shifting threat under 35 U.S.C. § 285 at the time of exit.
Patent survives; claims against Dal-Tile extinguishedDal-Tile exits without admissions and bears its own costs
Dal-Tile Corporation is fully released from this litigation without having filed any substantive defense. There are no admissions, no invalidity rulings, and no consent judgment on the record. The cost-neutrality clause means Dal-Tile absorbs its own legal fees — consistent with a negotiated resolution rather than a contested victory. Dal-Tile retains the right to challenge US8677116B1 through other mechanisms, such as inter partes review, should the patent be asserted again.
Full release; no admissions on recordAuthentication patent remains a live enforcement risk for other companies
The dismissal resolves only this dispute between these two parties. US8677116B1 remains in force and Secure Matrix may continue to assert it against other defendants in the authentication and verification technology space. Companies deploying digital identity verification, access management, or multi-factor authentication infrastructure should note that this patent survived without any adverse validity ruling. The E.D. Texas venue signals a plaintiff-friendly enforcement strategy that may continue.
Patent enforceable against third partiesFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Secure Matrix LLC | Company | Authentication technology patent assertion entity — holder of US8677116B1Search in Eureka ↗ |
| Defendant | Dal-Tile Corporation | Company | Dal-Tile Corporation — major manufacturer and distributor of tile and stone productsSearch in Eureka ↗ |
| Plaintiff counsel | Isaac Phillip Rabicoff | Attorney | Counsel for Secure Matrix LLCSearch in Eureka ↗ |
| Plaintiff law firm | Rabicoff Law LLC | Law Firm | Representing Secure Matrix LLCSearch in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Texas Eastern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The Court’s order accepting the stipulated dismissal with prejudice is a purely procedural disposition — it contains no claim construction, no validity ruling, and no infringement finding. The phrase ‘Defendant has not yet answered the Complaint’ confirms the case ended at its earliest possible stage. The with-prejudice designation, however, carries substantive weight: it functions as a final judgment on the merits as between these parties, permanently foreclosing Secure Matrix from reasserting these claims against Dal-Tile. The denial of pending motions as moot leaves the full substantive record undeveloped.
US8677116B1 — Systems and methods for authentication and verification
US8677116B1 is a granted US utility patent (application number US13/963941) covering systems and methods for authentication and verification. The patent sits within the identity security and access management domain — a technology area with broad applicability across digital infrastructure, enterprise software, e-commerce platforms, and connected device ecosystems. Its B1 designation confirms it issued without post-grant amendment, and its claim scope as originally granted has never been narrowed by any reexamination or IPR proceeding on the public record of this case.
The strategic significance of US8677116B1 lies in the breadth of potential defendants across industries that rely on user authentication workflows. Dal-Tile’s involvement suggests the patent holder may be targeting companies’ back-end digital systems rather than core authentication product makers — a pattern common in non-practising entity enforcement campaigns. No adverse court ruling has weakened this patent, making it a continued risk for any company deploying authentication or identity verification technology that could read on its claims.
Should you run an FTO against US8677116B1?
Any organisation deploying systems for user authentication, identity verification, or access management should treat US8677116B1 as a live enforcement risk. The fact that this patent was asserted against a tile manufacturer — rather than a core technology company — demonstrates that the claim scope may be interpreted broadly enough to capture general digital infrastructure. If your product or platform involves authentication workflows, verification steps, or credential management, an FTO analysis against this patent is warranted before scaling deployment or entering new markets.
PatSnap Eureka’s FTO Search Agent allows IP and R&D teams to map product features against the claim language of US8677116B1 in minutes. Eureka surfaces the full prosecution history, identifies relevant prior art that could inform a validity challenge, and flags co-pending applications in the same family. Given the absence of any claim construction record from this case, understanding the claim scope directly from the prosecution history is the most reliable starting point for assessing your exposure.
Run a freedom-to-operate analysis on US8677116B1 to assess your product’s exposure
Run FTO in Eureka →Similar authentication patent infringement cases in E.D. Texas
Cases involving authentication and verification patent assertions in the Eastern District of Texas, including pre-answer dismissals and PAE enforcement campaigns.
What this case signals for the authentication technology IP landscape
An early with-prejudice exit before any answer filed raises questions about enforcement strategy and underlying claim strength in the authentication patent space.
Pre-answer dismissal with prejudice is a strategic red flag worth monitoring
When a plaintiff dismisses with prejudice before the defendant answers, it typically signals one of three scenarios: a private licensing deal was reached, a claim-mapping weakness was identified post-filing, or litigation economics made continuation unattractive. IP teams tracking Secure Matrix LLC should monitor whether similar actions are filed against other companies in the authentication sector.
US8677116B1 carries no invalidity cloud — enforcement risk remains live
No invalidity ruling, no IPR petition outcome, and no claim construction order emerged from this case. The patent exits litigation in the same legal posture it entered. Any company operating authentication or verification systems that could read on the claims of US8677116B1 remains at risk of assertion. An FTO analysis against this patent is warranted for affected technology teams.
Secure v Dal-Tile — key questions answered
Secure Matrix LLC filed a patent infringement action against Dal-Tile Corporation in the Eastern District of Texas on December 30, 2024, asserting US8677116B1. The case was voluntarily dismissed with prejudice on May 28, 2025, before Dal-Tile filed any answer. Each party agreed to bear its own costs and attorneys’ fees.
A dismissal with prejudice permanently bars Secure Matrix LLC from re-filing the same infringement claims against Dal-Tile Corporation based on US8677116B1 and the same accused conduct. It has the legal effect of a final judgment on the merits as between these two parties. However, the patent itself remains valid and enforceable against third parties.
US8677116B1 is a granted US utility patent covering systems and methods for authentication and verification. It falls within the identity security and access management technology domain. The patent has not been subject to any adverse validity ruling or IPR outcome on the public record of this case, meaning it remains in its originally issued form.
The case was resolved in 149 days, before Dal-Tile filed any answer. Pre-answer voluntary dismissals with prejudice typically suggest a private licensing agreement was reached, the plaintiff identified a weakness in its claim mapping, or litigation economics drove an early exit. The public record does not disclose whether any financial terms were agreed between the parties.
No. The voluntary dismissal with prejudice contains no invalidity ruling, no claim construction, and no finding on the merits. US8677116B1 exits this litigation in the same legal posture it entered — valid, enforceable, and unnarrowed. Secure Matrix LLC remains free to assert the patent against other defendants, and no prior art or claim scope ruling emerged from this proceeding.
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