VDPP LLC v. Boxlight Corporation: Voluntary Dismissal After 358 Days
VDPP, LLC asserted US9948922B2 — covering faster state-transitioning technology for continuous adjustable 3Deeps filter spectacles with multi-layered variable tint materials — against Boxlight Corporation in the Western District of Texas. The case closed on voluntary dismissal without prejudice, meaning VDPP retains the right to re-assert the patent, with each party bearing its own costs.
3D Spectacles Patent Asserted in W.D. Texas, Then Withdrawn
On 4 March 2024, VDPP, LLC filed suit against Boxlight Corporation in the Western District of Texas (Case No. 7:24-cv-00069), asserting infringement of US9948922B2. The patent — filed under application number US15/683623 — relates to faster state-transitioning technology for continuous adjustable 3Deeps filter spectacles using multi-layered variable tint materials, a niche but commercially significant area within display and eyewear technology.
The case closed on 25 February 2025 when VDPP filed a notice of voluntary dismissal under Federal Rule of Civil Procedure 41(a)(1)(A)(i), available without court order because Boxlight had not yet answered or filed a motion for summary judgment. The dismissal was explicitly stated to be without prejudice as to the asserted patent, and the parties agreed each would bear its own costs, expenses, and attorneys’ fees.
The 358-day duration before dismissal suggests pre-trial activity — potentially claim mapping, licensing discussions, or due diligence — occurred before VDPP elected to withdraw. The public record does not disclose whether a settlement, licensing agreement, or strategic recalibration drove the decision. Because the dismissal is without prejudice, VDPP’s ability to re-assert US9948922B2 against Boxlight or other defendants remains intact, making this case a data point for anyone monitoring VDPP’s enforcement posture.
Filing to Voluntary dismissal in 358 days
358 days from filing to voluntary dismissal — typical W.D. Texas patent cases close faster
Voluntarily dismissed: what the without-prejudice ruling means for both parties
Rule 41(a)(1)(A)(i): dismissal as of right, no court order needed
Under FRCP 41(a)(1)(A)(i), a plaintiff may dismiss an action without a court order at any time before the defendant serves an answer or a motion for summary judgment. Boxlight had done neither, so VDPP’s notice was self-executing. The court does not evaluate the merits; the case simply terminates. The explicit ‘without prejudice’ designation was stated in the notice itself, which is consistent with the Rule’s default where no prior dismissal of the same claim exists.
No merits adjudicationWithout prejudice: the patent survives this dismissal fully intact
A dismissal without prejudice means no final judgment on the merits was entered. VDPP retains the right to re-file suit asserting US9948922B2 against Boxlight or any other party, subject to the applicable statute of limitations. This is legally distinct from a dismissal with prejudice, which would bar re-assertion. The public record here is explicit: the notice states ‘without prejudice as to the asserted patent,’ leaving VDPP’s enforcement options open.
Re-filing remains possibleBoxlight escapes judgment — but the patent threat has not been resolved
Boxlight Corporation obtains no invalidity ruling, no non-infringement finding, and no covenant not to sue from this dismissal. The without-prejudice character means Boxlight faces a continuing potential exposure to re-assertion of US9948922B2. The own-costs arrangement avoids any fee-shifting liability for Boxlight, but the underlying IP risk associated with variable tint 3D spectacles technology remains unresolved for the company’s product lines.
No defensive judgment securedOpen enforcement posture signals ongoing risk for the display eyewear sector
VDPP’s withdrawal without prejudice is consistent with a plaintiff preserving optionality — whether to negotiate a licence, re-file after further claim mapping, or pursue other defendants first. Companies in the interactive display, educational technology, or 3D eyewear supply chain operating adjacent to multi-layered variable tint spectacle technology should treat this case as an active enforcement signal rather than a resolved dispute. Monitoring VDPP’s future filing activity is warranted.
Monitor VDPP enforcement activityFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | VDPP, LLC | Company | Patent assertion entity — holder of US9948922B2 covering 3D filter spectacle technologySearch in Eureka ↗ |
| Defendant | Boxlight Corporation | Company | Boxlight Corporation — interactive display and educational technology hardware companySearch in Eureka ↗ |
| Plaintiff counsel | Jeffrey Eugene Kubiak | Attorney | Counsel for VDPP, LLCSearch in Eureka ↗ |
| Plaintiff counsel | William P. Ramey , III | Attorney | Counsel for VDPP, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Ramey LLP | Law Firm | Representing VDPP, LLCSearch in Eureka ↗ |
| Defendant counsel | Conor M. Civins | Attorney | Counsel for Boxlight CorporationSearch in Eureka ↗ |
| Defendant counsel | Emily Mae-Yen Ross | Attorney | Counsel for Boxlight CorporationSearch in Eureka ↗ |
| Defendant counsel | Syed M. Abedi | Attorney | Counsel for Boxlight CorporationSearch in Eureka ↗ |
| Defendant law firm | Bracewell LLP | Law Firm | Representing Boxlight CorporationSearch in Eureka ↗ |
| Defendant law firm | Seed IP Law Group LLP | Law Firm | Representing Boxlight CorporationSearch in Eureka ↗ |
| Defendant law firm | Seed Intellectual Property Law Group LLP | Law Firm | Representing Boxlight CorporationSearch in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Texas Western District CourtSearch in Eureka ↗ |
Official order — verbatim text
The notice of voluntary dismissal under Rule 41(a)(1)(A)(i) is procedural in nature — it carries no finding on infringement, validity, or claim scope. The explicit ‘without prejudice as to the asserted patent’ language is significant: it forecloses any argument that claim preclusion bars a future action on US9948922B2. The own-costs provision, while standard for voluntary dismissals, confirms no financial resolution is reflected in the public record. No merits adjudication occurred at any level.
US9948922B2 — Variable Tint 3D Filter Spectacles Technology
US9948922B2 (application no. US15/683623) protects technology relating to faster state-transitioning mechanisms for continuous adjustable 3Deeps filter spectacles that use multi-layered variable tint materials. The invention addresses a known limitation in 3D display eyewear — the speed and precision with which optical filters can transition between tint states — which is directly relevant to image quality, user experience, and compatibility with high-refresh-rate display hardware. The patent sits at the intersection of optical materials science and display-peripheral hardware engineering.
For companies developing or distributing 3D display systems, interactive flat panels, or educational display hardware — the core market Boxlight operates in — this patent represents a credible assertion risk. Variable tint and state-transitioning spectacle technology underpins a range of professional and consumer 3D viewing products. The fact that the patent has not been subjected to claim construction or IPR challenge in this case means its scope and validity remain untested, elevating the risk profile for any competitor whose products implement multi-layered optical filter transitions in 3D eyewear.
Should your team run an FTO analysis against US9948922B2?
Any R&D team or product manager working on 3D display eyewear, variable tint optical filters, or state-transitioning spectacle technology should treat US9948922B2 as a live clearance requirement. The patent survived this litigation without any invalidity finding, and VDPP’s without-prejudice dismissal leaves enforcement options fully open. Hardware manufacturers supplying interactive display systems, educational technology platforms, or 3D cinema accessories with multi-layered filter eyewear components face direct exposure.
PatSnap Eureka’s FTO Search Agent can map your product’s feature set against the claim language of US9948922B2, surface prior art relevant to potential invalidity arguments, and identify related continuation or family patents that may expand the risk perimeter. Given that no court has construed the claims of this patent, a rigorous FTO analysis now is significantly more cost-effective than defending an infringement action in the Western District of Texas.
Run a freedom-to-operate analysis on US9948922B2 to assess your product’s exposure
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What this case signals for the display eyewear and edtech IP landscape
VDPP’s voluntary exit preserves maximum flexibility. The patent is live, the claims are untested, and the sector should take note.
Without-prejudice dismissals are enforcement signals, not resolutions
When a patent assertion entity voluntarily dismisses without prejudice before the defendant answers, it typically signals one of three scenarios: a licensing discussion is underway, the plaintiff is refining its claim mapping, or it is repositioning to target a higher-value defendant. None of these scenarios resolves the underlying patent risk for the sector.
Boxlight holds no defensive IP shield from this outcome
No invalidity finding, no non-infringement ruling, and no covenant not to sue were entered. Boxlight — and any competitor in interactive display hardware or 3D eyewear — remains exposed to future assertion of US9948922B2. Proactive FTO clearance against this patent is advisable for product teams in this space.
VDPP v Boxlight — key questions answered
The case was voluntarily dismissed without prejudice under FRCP 41(a)(1)(A)(i). This means no merits ruling was entered and VDPP retains the right to re-file suit asserting US9948922B2 against Boxlight or other parties. Boxlight received no invalidity finding or covenant not to sue.
US9948922B2 covers faster state-transitioning mechanisms for continuous adjustable 3Deeps filter spectacles using multi-layered variable tint materials. Boxlight sells interactive display and educational technology hardware, making it a plausible target for assertion if its products incorporate compatible 3D eyewear or optical filter accessories.
Rule 41(a)(1)(A)(i) allows a plaintiff to dismiss an action as of right — without court approval — before the defendant serves an answer or motion for summary judgment. Because Boxlight had not yet answered, VDPP’s notice was self-executing. The dismissal is without prejudice, preserving all of VDPP’s enforcement rights against the patent.
No. The without-prejudice dismissal provides Boxlight no legal protection against future assertion of US9948922B2. No claim preclusion, issue preclusion, or non-infringement finding was entered. Boxlight and other companies in the interactive display and 3D eyewear sector remain exposed to potential re-assertion by VDPP.
VDPP was represented by Jeffrey Eugene Kubiak and William P. Ramey III of Ramey LLP. Boxlight was represented by Conor M. Civins, Emily Mae-Yen Ross, and Syed M. Abedi, with counsel from Bracewell LLP and Seed IP Law Group LLP.
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