Secure Matrix LLC v. San Antonio Shoe: Authentication Patent Suit Dismissed in 43 Days
Secure Matrix LLC asserted US8677116B1 — a patent covering systems and methods for authentication and verification — against San Antonio Shoe, Inc. in the Western District of Texas. The case ended after just 43 days when Secure Matrix voluntarily dismissed without prejudice before the defendant had filed an answer or summary judgment motion.
Early voluntary exit raises questions in Texas authentication patent case
On March 12, 2025, Secure Matrix LLC filed a patent infringement action against San Antonio Shoe, Inc. (SAS) in the Western District of Texas, asserting US8677116B1, which covers systems and methods for authentication and verification. The plaintiff was represented by Rabicoff Law LLC — a firm frequently associated with NPE-style patent assertion — while SAS retained Latham & Watkins LLP, a firm with significant patent litigation experience.
On April 23, 2025, Secure Matrix filed a notice of voluntary dismissal without prejudice under Federal Rule of Civil Procedure 41(a)(1)(A)(i), which permits a plaintiff to exit a case unilaterally before the defendant has served an answer or a motion for summary judgment. SAS had not yet done either. The dismissal was self-effectuating, requiring no court order, and the court confirmed it on April 24, 2025. Each party was ordered to bear its own costs.
A 43-day case lifecycle is notably compressed, even for patent suits that settle or are dropped early. The absence of an answer from SAS suggests the dismissal occurred very early in the litigation cycle — potentially reflecting pre-litigation resolution, licensing discussions, or a tactical recalibration by Secure Matrix. Because the dismissal is without prejudice, Secure Matrix retains the legal right to refile claims under the same patent. The public record offers no indication of any settlement or licensing agreement.
Filing to Voluntary dismissal in 43 days
43 days — well below the district median for patent infringement cases
Voluntarily dismissed: what the without-prejudice exit means for both parties
FRCP 41(a)(1)(A)(i): a self-effectuating exit before the defendant answers
Rule 41(a)(1)(A)(i) allows a plaintiff to dismiss an action without a court order simply by filing a notice — but only before the opposing party serves an answer or a motion for summary judgment. Because SAS had not yet done either, Secure Matrix’s notice was immediately effective. No judicial approval was needed, and the case terminated automatically upon filing.
Pre-answer voluntary dismissalWithout prejudice: the critical qualifier the public record confirms
A dismissal ‘without prejudice’ means claims are not extinguished — the plaintiff may refile the same patent against the same or different defendants. A dismissal ‘with prejudice’ would bar refiling. Here, the notice and court order explicitly confirm ‘without prejudice.’ However, the public record does not reveal whether any side agreement, licence, or payment accompanied the dismissal. That distinction matters commercially but is not visible from court filings alone.
Refiling rights preservedSecure Matrix exits with claims intact and future enforcement options open
By dismissing without prejudice, Secure Matrix retains the right to assert US8677116B1 against SAS again, or to pursue other defendants. The early exit — before SAS could develop invalidity or non-infringement defences on the record — also means Secure Matrix avoids an adverse merits ruling. The cost-bearing order (each party pays its own) is neutral and does not indicate a prevailing party.
Patent enforcement preservedSAS avoids a merits ruling but faces residual refiling risk
San Antonio Shoe secured the dismissal of this specific action without having to litigate on the merits, and without incurring a cost award against it. However, because the dismissal is without prejudice, SAS cannot treat the case as permanently resolved. If Secure Matrix refiles or asserts the same patent against SAS’s digital authentication infrastructure in future, SAS would need to re-engage. Latham & Watkins’s involvement suggests SAS was prepared for substantive defence.
Residual refiling exposureFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Secure Matrix LLC | Company | Patent assertion entity — holder of US8677116B1 covering authentication and verification systemsSearch in Eureka ↗ |
| Defendant | San Antonio Shoe, Inc. | Company | San Antonio Shoe, Inc. — U.S. footwear manufacturer and retailer targeted over digital authentication systemsSearch in Eureka ↗ |
| Plaintiff counsel | Isaac Rabicoff | Attorney | Counsel for Secure Matrix LLCSearch in Eureka ↗ |
| Plaintiff law firm | Rabicoff Law LLC | Law Firm | Representing Secure Matrix LLCSearch in Eureka ↗ |
| Defendant counsel | Heather Nicole Haynes | Attorney | Counsel for San Antonio Shoe, Inc.Search in Eureka ↗ |
| Defendant counsel | Richard G. Frenkel | Attorney | Counsel for San Antonio Shoe, Inc.Search in Eureka ↗ |
| Defendant law firm | Latham & Watkins, LLP | Law Firm | Representing San Antonio Shoe, Inc.Search in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Texas Western District CourtSearch in Eureka ↗ |
Official order — verbatim text
The court’s order confirms the dismissal was procedurally correct under FRCP 41(a)(1)(A)(i): because SAS had not served an answer or summary judgment motion, Secure Matrix’s notice was self-effectuating. The court’s language — drawn from In re Amerijet — underscores that no judicial discretion was exercised; the case simply terminated. The cost-neutrality provision means neither party is designated a prevailing party, which has implications for any future fee-shifting analysis under 35 U.S.C. § 285 if the patent is reasserted.
US8677116B1 — Systems and Methods for Authentication and Verification
US8677116B1 (application number US13/963941) covers systems and methods for authentication and verification — a broad and commercially significant domain encompassing digital identity, login security, and credential management. Granted under a B1 designation (no prior publication), the patent represents a first-grant issuance, suggesting the claims were not subject to pre-grant publication scrutiny. Authentication patents in this class have historically attracted assertion activity given their potential applicability across e-commerce, SaaS, enterprise software, and consumer-facing digital platforms.
The strategic significance of US8677116B1 lies in its breadth of potential application. Any organisation operating systems that authenticate users — whether through passwords, tokens, biometrics, or multi-factor flows — could fall within the scope of claims depending on their specific language. The assertion against a footwear retailer like SAS suggests the patent holder views retail technology stacks, including customer-facing authentication, as within scope. For competitors or adjacent companies, the without-prejudice dismissal means the patent remains a live enforcement risk.
Should your team run an FTO analysis against US8677116B1?
Any organisation deploying authentication and verification systems — particularly in retail technology, e-commerce, or customer identity management — should consider whether US8677116B1’s claim language covers their implementation. The fact that Secure Matrix asserted this patent against a footwear retailer, rather than a technology company, suggests the assertion strategy may target the end-user of authentication systems rather than the software vendor. R&D and product teams building or procuring login, identity verification, or access control systems should not assume vendor indemnification provides complete cover.
PatSnap Eureka’s FTO Search Agent enables rapid analysis of US8677116B1’s claim scope against your product architecture. Upload your technical specifications or describe your authentication workflow, and Eureka will map independent claims against your implementation, flag overlap risk, and surface prior art that could support a validity challenge. Given the active enforcement posture suggested by this filing — and the preserved right to refile — an FTO assessment now is more cost-effective than a litigation response later.
Run a freedom-to-operate analysis on US8677116B1 to assess your product’s exposure
Run FTO in Eureka →Similar authentication patent cases in U.S. district courts
Cases involving authentication and verification patent assertions in the Western District of Texas and comparable U.S. district courts, including NPE-filed actions and early voluntary dismissals.
What this case signals for the authentication patent IP landscape
A 43-day dismissal before any answer is filed is a pattern worth monitoring — it often signals either a quiet resolution or a tactical pivot in an ongoing assertion campaign.
Early voluntary dismissals often precede refiling or licensing deals
When a plaintiff drops a case before the defendant answers, it frequently signals one of two things: a quiet licence or settlement reached off-record, or a decision to refile in a more favourable venue or against a better-positioned defendant. Companies in the authentication and digital verification space should treat this dismissal as an early warning, not a resolution.
Rabicoff Law’s involvement signals NPE-style assertion strategy
Rabicoff Law LLC is associated with high-volume patent assertion activity. The combination of a software authentication patent, a Texas Western District filing, and a pre-answer dismissal is consistent with patterns seen in NPE campaigns that test defendants’ willingness to engage before pivoting. Monitoring Secure Matrix’s broader portfolio and filing activity is advisable for any company deploying authentication systems.
Secure v San — key questions answered
Secure Matrix LLC filed a patent infringement suit against San Antonio Shoe, Inc. on March 12, 2025 in the Western District of Texas, asserting US8677116B1. On April 23, 2025, Secure Matrix voluntarily dismissed the case without prejudice under FRCP 41(a)(1)(A)(i), before SAS filed an answer. The case closed April 24, 2025 after just 43 days. Each party bears its own costs.
A dismissal without prejudice means Secure Matrix’s patent infringement claims are not permanently extinguished. Secure Matrix retains the right to refile claims under US8677116B1 against San Antonio Shoe or other defendants. It contrasts with a dismissal with prejudice, which would bar refiling. The public record does not disclose whether any settlement or licensing agreement accompanied the dismissal.
US8677116B1 covers systems and methods for authentication and verification — technologies used broadly across digital platforms including retail e-commerce and customer identity systems. The assertion against San Antonio Shoe suggests Secure Matrix targeted the retailer’s use of authentication infrastructure rather than a software developer. Authentication patents can reach any organisation deploying login or identity verification systems.
Yes. Because the dismissal was explicitly without prejudice under FRCP 41(a)(1)(A)(i), Secure Matrix preserves the right to refile patent infringement claims based on US8677116B1 against San Antonio Shoe or other defendants. There is no court-imposed bar on refiling. However, a second voluntary dismissal against the same defendant would typically operate as a dismissal with prejudice under FRCP 41(a)(1)(B).
Rabicoff Law LLC represented Secure Matrix LLC and is associated with patent assertion activity on behalf of non-practising entities (NPEs). The firm’s involvement, combined with the pre-answer voluntary dismissal and a software authentication patent, is consistent with NPE assertion patterns in which cases are filed to probe settlement willingness before substantive litigation begins. This does not constitute a finding of improper conduct but is a recognised commercial pattern worth monitoring.
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