Secure Matrix LLC v. H-E-B Grocery: Authentication Patent Dismissed With Prejudice
Secure Matrix LLC filed suit against Texas grocery giant H-E-B in the Western District of Texas, asserting US8677116B1 — a patent covering systems and methods for authentication and verification. The parties jointly stipulated to dismiss the action with prejudice under Rule 41(a)(1)(A)(ii), each bearing its own costs, closing the case in 256 days.
Authentication patent suit ends in stipulated dismissal with prejudice
Secure Matrix LLC filed this infringement action on 21 March 2025 in the Western District of Texas before Judge Fred Biery, asserting US8677116B1 — a patent directed to systems and methods for authentication and verification — against H-E-B Grocery Company LP, one of the largest privately held grocery chains in the United States. The complaint framed the dispute as an infringement action, suggesting that H-E-B’s digital or point-of-sale authentication infrastructure fell within the scope of the asserted claims.
The case closed on 2 December 2025 after just 256 days, when both parties filed a stipulated dismissal with prejudice under Federal Rule of Civil Procedure 41(a)(1)(A)(ii). Because the dismissal is with prejudice, Secure Matrix is permanently barred from reasserting the same patent claims against H-E-B in a future action. Each party agreed to bear its own costs, expenses, and attorneys’ fees, meaning no monetary fee award was entered on the public record.
A resolution inside nine months — and before trial — is consistent with either a confidential settlement or an agreement to end litigation without compensation. The mutual cost-bearing clause neither confirms nor denies a monetary settlement; such payments are routinely kept off the docket. What the public record does not reveal is whether any licensing arrangement, product modification, or business agreement accompanied the dismissal, leaving the commercial outcome materially uncertain.
Filing to Dismissed with Prejudice in 256 days
256 days — resolved faster than the median W.D. Tex. patent case, consistent with early settlement
Stipulated dismissal with prejudice: what the ruling means for both parties
Rule 41(a)(1)(A)(ii): a bilateral, court-free exit
A stipulated dismissal under Rule 41(a)(1)(A)(ii) requires consent from all parties who have appeared and needs no court order to take effect. ‘With prejudice’ is the critical qualifier — it carries the force of a final judgment on the merits, permanently extinguishing Secure Matrix’s right to bring the same claims against H-E-B again. This mechanism is the most common courtroom exit for patent cases that resolve before trial.
Permanent bar on re-filingSecure Matrix permanently surrenders its claims against H-E-B
By agreeing to a with-prejudice dismissal, Secure Matrix LLC loses all future enforcement rights under US8677116B1 against H-E-B Grocery specifically. The mutual cost-bearing clause suggests neither party extracted a public concession. Whether a confidential licence fee or business arrangement was exchanged remains unknown from the public record — which is typical in NPE-style settlements where payment terms are sealed.
No public monetary recoveryH-E-B exits with finality — but no invalidity ruling
H-E-B, represented by Baker Botts LLP, secured a permanent end to this specific suit without a court finding on infringement or patent validity. The with-prejudice bar protects H-E-B from Secure Matrix re-filing, but because no court invalidated US8677116B1, the patent remains in force and could still be asserted against other defendants in the retail and grocery technology sector.
Patent validity left intactUS8677116B1 survives — enforcement risk persists for the sector
Because the dismissal carries no invalidity determination, US8677116B1 remains a live enforcement asset. Retailers, payment processors, and technology vendors deploying authentication or verification systems in consumer-facing environments should note that this patent was not neutralised through IPR, litigation, or court judgment. The case’s rapid closure — before claim construction — means the scope of the patent was never publicly adjudicated.
Live patent, unresolved scopeFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Secure Matrix LLC | Company | Authentication technology licensor — holder of US8677116B1Search in Eureka ↗ |
| Defendant | H-E-B Grocery Company, LP | Company | H-E-B Grocery Company LP — major Texas-based supermarket chainSearch in Eureka ↗ |
| Plaintiff counsel | Benjamin Charles Deming | Attorney | Counsel for Secure Matrix LLCSearch in Eureka ↗ |
| Plaintiff counsel | Isaac Rabicoff | Attorney | Counsel for Secure Matrix LLCSearch in Eureka ↗ |
| Plaintiff law firm | Dnl Zito | Law Firm | Representing Secure Matrix LLCSearch in Eureka ↗ |
| Plaintiff law firm | Rabicoff Law LLC | Law Firm | Representing Secure Matrix LLCSearch in Eureka ↗ |
| Defendant counsel | Elizabeth L. Flannery | Attorney | Counsel for H-E-B Grocery Company, LPSearch in Eureka ↗ |
| Defendant counsel | Lindsay Volpenhein Cutie | Attorney | Counsel for H-E-B Grocery Company, LPSearch in Eureka ↗ |
| Defendant counsel | Matthew Thompson | Attorney | Counsel for H-E-B Grocery Company, LPSearch in Eureka ↗ |
| Defendant law firm | Baker Botts LLP | Law Firm | Representing H-E-B Grocery Company, LPSearch in Eureka ↗ |
| Presiding judge | Judge Fred Biery | Judge | Texas Western District CourtSearch in Eureka ↗ |
Official order — verbatim text
The stipulation invokes Rule 41(a)(1)(A)(ii), confirming this was a bilateral agreement — not a unilateral plaintiff withdrawal. The ‘with prejudice’ designation is legally significant: it operates as an adjudication on the merits, permanently barring Secure Matrix from reasserting US8677116B1 against H-E-B. The mutual cost-bearing clause is standard in NPE resolutions and neither confirms nor denies a confidential licence payment. No finding on infringement, validity, or claim scope was made.
US8677116B1 — Systems and methods for authentication and verification
US8677116B1 is a US granted patent covering systems and methods for authentication and verification. Filed under application number US13/963941, the patent sits within the identity and access management technology domain — an area of growing commercial and litigation significance as digital transactions, loyalty programmes, and payment authentication become central to consumer retail operations. The ‘B1’ designation indicates a first-publication grant with no pre-grant publication, suggesting a relatively direct prosecution path.
Authentication and verification patents carry broad enforcement potential across the retail, fintech, and enterprise software sectors, since nearly every digital consumer touchpoint — from mobile app login to payment terminal verification — implicates identity management technology. The fact that US8677116B1 was asserted against a major grocery chain suggests its claims are drafted broadly enough to reach commercial off-the-shelf or proprietary authentication implementations. Competitors operating similar retail authentication infrastructure should treat this patent as an active enforcement risk until it expires or is invalidated.
Should you run an FTO analysis against US8677116B1?
Any organisation deploying authentication or identity verification systems in a retail, grocery, or consumer-facing digital environment should assess exposure to US8677116B1. H-E-B’s decision to retain major outside counsel and resolve the case rapidly — rather than fight to invalidity — means the patent’s claims were never publicly narrowed or struck down. Product teams integrating third-party authentication SDKs, biometric verification, or multi-factor authentication workflows are particularly relevant candidates for an FTO review.
PatSnap Eureka’s FTO Search Agent can map the claims of US8677116B1 against your product architecture, identify prior art that may support a validity challenge, and surface related continuations or family members that could represent additional enforcement vectors. Given that this case closed without a Markman hearing, claim scope remains commercially uncertain — making a proactive FTO analysis especially valuable before product launch or scaling.
Run a freedom-to-operate analysis on US8677116B1 to assess your product’s exposure
Run FTO in Eureka →Similar authentication patent cases in the Western District of Texas
Cases involving authentication and verification patent assertions against retail defendants in the Western District of Texas — analysed for claim scope, resolution speed, and NPE enforcement patterns.
What this case signals for the authentication and retail IP landscape
A with-prejudice stipulation before claim construction in W.D. Tex. carries distinct read-throughs for authentication patent risk across the retail sector.
Pre-claim-construction exits signal scope uncertainty — or quiet settlement
Cases dismissed before claim construction typically resolve because one party concludes litigation risk outweighs cost, or because terms are agreed privately. Here, the absence of any IPR filing or invalidity ruling means US8677116B1’s claim scope was never tested in court — leaving ambiguity that other potential defendants in the retail authentication space should not ignore.
Baker Botts’ involvement signals H-E-B took the threat seriously
H-E-B retained Baker Botts LLP — a firm with a substantial patent litigation practice — rather than relying on smaller regional counsel. That resourcing decision is consistent with a defendant that assessed genuine litigation exposure and invested accordingly, whether the ultimate resolution was a licence, a walk-away, or a defensive settlement.
Secure v H-E-B — key questions answered
The case was dismissed with prejudice by stipulation under Federal Rule of Civil Procedure 41(a)(1)(A)(ii) on 2 December 2025, after 256 days of litigation. Each party agreed to bear its own costs and attorneys’ fees. No court ruling on infringement or patent validity was issued.
Secure Matrix LLC asserted US8677116B1, filed under application number US13/963941. The patent covers systems and methods for authentication and verification. It was the sole patent asserted in this infringement action filed in the Western District of Texas.
Not formally. A dismissal with prejudice bars Secure Matrix from re-filing against H-E-B, but it is not a judicial finding that H-E-B did not infringe or that the patent is invalid. The court made no ruling on the merits. The outcome protects H-E-B from this specific plaintiff on this specific patent, but leaves patent validity intact.
Yes. Because the case was dismissed without any invalidity ruling, IPR petition, or claim construction order, US8677116B1 remains an active granted patent. Other retailers or technology vendors in the authentication and verification space could still face assertion of this patent by Secure Matrix LLC or any future assignee.
The public record does not disclose the reason. Pre-claim-construction resolution is common in NPE-driven patent cases and is consistent with either a confidential licence payment or a commercial decision by one or both parties to avoid litigation cost and uncertainty. The mutual cost-bearing clause does not confirm or deny whether money changed hands privately.
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