VDPP LLC v. Vivo Inc.: 3D Spectacles Patents Dismissed Without Prejudice
VDPP, LLC filed suit against Vivo, Inc. in the Northern District of California asserting two patents covering continuous adjustable variable-tint 3D filter spectacles. The case closed in 158 days via voluntary dismissal without prejudice — leaving the door open for re-filing — with each party bearing its own costs.
Fast exit, open door: VDPP’s tactical dismissal in N.D. California
On 18 August 2023, VDPP, LLC filed a patent infringement action against Vivo, Inc. in the Northern District of California (Case No. 5:23-cv-04241), asserting US10021380B1 and US9948922B2. Both patents relate to continuous adjustable 3Deeps filter spectacles employing multi-layered variable tint materials for state-transition speed in 3D viewing applications. Plaintiff was represented by Ramey LLP, a firm known for asserting patents in the consumer electronics and display technology space.
The case closed on 23 January 2024 — just 158 days after filing — when VDPP filed a notice of voluntary dismissal under Federal Rule of Civil Procedure 41(a)(1)(A)(i). Critically, the dismissal was expressly without prejudice as to the asserted patents, meaning VDPP retains the right to assert both patents in future litigation. The parties jointly stipulated that each side would bear its own costs, expenses, and attorneys’ fees, with no financial award flowing to either party.
A resolution of 158 days — before any substantive merits ruling — is consistent with early-stage tactical repositioning by the plaintiff rather than a substantive legal defeat. The public record does not disclose whether licensing negotiations occurred or whether Vivo mounted a challenge to patent validity. The without-prejudice character of the dismissal means this case should not be read as a final resolution of VDPP’s rights under either patent, and Vivo remains a potential future target absent a documented license or covenant not to sue.
Filing to Voluntary dismissal in 158 days
158 days — resolved well under the median N.D. Cal. patent case duration
Voluntarily dismissed without prejudice: what this outcome means for both parties
Rule 41(a)(1)(A)(i): plaintiff’s unilateral exit right
Federal Rule 41(a)(1)(A)(i) permits a plaintiff to dismiss an action without a court order before the defendant serves an answer or a motion for summary judgment. This is a procedural exit, not a merits adjudication — the court makes no finding on validity, infringement, or enforceability. VDPP exercised this right within the early procedural window, leaving the substantive questions entirely unresolved.
No merits rulingWithout prejudice: the dismissal that isn’t final
A dismissal without prejudice means the plaintiff is not barred from re-filing the same claims in a future action. The stipulation here explicitly confirms the dismissal is without prejudice as to the asserted patents. This contrasts sharply with a with-prejudice dismissal, which would extinguish the claims permanently. Vivo has obtained no protection — no license, no invalidity ruling, no covenant — that would prevent a second lawsuit under either patent.
Re-filing remains possibleVDPP preserves all future enforcement options
By dismissing without prejudice and agreeing to bear its own costs, VDPP avoids any adverse costs order while retaining full enforcement rights over US10021380B1 and US9948922B2. This pattern is consistent with a licensing-oriented strategy: a complaint can serve as a negotiating catalyst, and a voluntary dismissal may follow a licensing discussion — or a decision to pursue a different defendant or forum. The public record does not confirm which scenario applies here.
Patents remain enforceableVivo receives no permanent protection from this outcome
While Vivo avoids an adverse judgment and incurs no cost award, it has secured no legal protection going forward. Without a license, an invalidity ruling, or a covenant not to sue, Vivo remains exposed to reassertion of these patents — potentially in the same court or another jurisdiction. Companies in the 3D display and variable-tint optics space should treat this dismissal as a pause, not a resolution, when assessing freedom-to-operate risk.
Exposure unresolvedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | VDPP, LLC | Company | IP licensing entity — holder of US10021380B1 and US9948922B2 (variable-tint 3D spectacles)Search in Eureka ↗ |
| Defendant | Vivo, Inc. | Company | Vivo, Inc. — accused of infringing variable-tint 3D filter spectacles patentsSearch in Eureka ↗ |
| Plaintiff counsel | Susan S.Q. Kalra | Attorney | Counsel for VDPP, LLCSearch in Eureka ↗ |
| Plaintiff counsel | William Peterson Ramey , III | Attorney | Counsel for VDPP, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Ramey LLP | Law Firm | Representing VDPP, LLCSearch in Eureka ↗ |
| Presiding judge | Judge Nathanael M. Cousins | Judge | California Northern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The dismissal notice invokes Rule 41(a)(1)(A)(i) and is explicit that the dismissal is without prejudice as to the asserted patents. The joint stipulation on costs — each party bearing its own — is a negotiated term that prevents either side from pursuing fee-shifting under 35 U.S.C. § 285. Crucially, the phrasing ‘without prejudice as to the asserted patent’ confirms VDPP’s enforcement rights under both patents remain wholly intact, and no finding of infringement, validity, or enforceability was made by the court.
US10021380B1 & US9948922B2 — Variable-Tint 3D Filter Spectacles Technology
US10021380B1 (application no. US15/907614) and US9948922B2 (application no. US15/683623) both sit within the 3Deeps filter spectacles technology family, covering continuous adjustable filtration using multi-layered variable tint materials. The core innovation concerns the speed of optical state transitions — the mechanism by which lenses shift between tint states to synchronise with 3D display frames. This is a technically specific claim space within the broader adaptive optics and eyewear display sector.
These patents carry strategic weight because variable-tint lens technology is increasingly relevant beyond legacy 3D cinema glasses — touching liquid crystal lenses used in AR/VR headsets, adaptive eyewear, and next-generation immersive display peripherals. For competitors developing products with electronically switchable optics or multi-layer tint control, these patents represent a non-trivial clearance risk. The fact that VDPP chose Vivo, Inc. as its first public defendant — and dismissed early — suggests the patents may be part of a broader licensing programme rather than targeted litigation.
Should your team run an FTO against US10021380B1 and US9948922B2?
Any R&D team developing products with adjustable optical tint layers — including 3D eyewear, AR/VR headsets with LC-based lenses, or electronically switchable eyewear accessories — should treat these patents as active clearance risk. The dismissal without prejudice means neither patent has been invalidated or licensed publicly. If your product modulates tint states across multi-layered optical elements, a targeted claim chart against US10021380B1 is recommended before market launch or investor due diligence.
PatSnap Eureka’s FTO Search Agent can map the independent and dependent claims of US10021380B1 and US9948922B2 against your product specifications, identify prosecution history estoppel constraints, and surface prior art that could inform an IPR or ex parte reexamination strategy. For companies in the adaptive optics or immersive display pipeline, proactive FTO analysis now is materially less costly than defending an assertion from a licensing-oriented NPE post-launch.
Run a freedom-to-operate analysis on US10021380B1 to assess your product’s exposure
Run FTO in Eureka →Similar 3D display and adaptive optics patent cases in N.D. California
Explore related patent infringement actions involving variable-tint optics, 3D display technology, and NPE assertions filed in the Northern District of California.
What this case signals for the 3D display and variable-tint optics IP landscape
A fast, without-prejudice exit from N.D. California rarely signals the end of a patent assertion campaign.
Without-prejudice dismissals by NPEs often precede re-filing or parallel actions
When a non-practising entity like VDPP dismisses without prejudice this quickly — before any answer is filed — it typically signals either an ongoing licensing discussion or a tactical repositioning. Companies in the 3D optics and display space holding products that intersect with variable-tint spectacles technology should monitor VDPP’s docket activity across all districts.
Both patents remain live enforcement assets after this dismissal
US10021380B1 and US9948922B2 have not been adjudicated invalid, unenforceable, or licensed. Any company manufacturing or selling products that adjust optical tint states for 3D viewing — including eyewear, display accessories, or AR/VR peripherals — should assess its exposure to these claims before assuming this case closes the risk.
VDPP v Vivo — key questions answered
The dismissal without prejudice means VDPP retains the full right to re-file infringement claims under US10021380B1 and US9948922B2 against Vivo or any other party. No merits ruling was made. The court issued no finding on validity or infringement, and Vivo obtained no license or covenant not to sue.
VDPP asserted two patents: US10021380B1 (application no. US15/907614) and US9948922B2 (application no. US15/683623). Both relate to continuous adjustable 3Deeps filter spectacles using multi-layered variable tint materials for faster optical state transitioning in 3D viewing applications.
The 158-day resolution suggests early-stage tactical action by the plaintiff. Under Rule 41(a)(1)(A)(i), a plaintiff can dismiss unilaterally before an answer is filed, which allows rapid exit without court involvement. This pattern is consistent with licensing-driven NPE strategy, though the public record does not confirm whether any licensing discussion occurred.
VDPP, LLC was represented by Ramey LLP, with attorneys Susan S.Q. Kalra and William Peterson Ramey III listed as counsel. Ramey LLP is a plaintiff-side IP firm with an active patent assertion practice in consumer electronics, display technology, and related fields.
The joint stipulation specifying each party bears its own costs, expenses, and attorneys’ fees forecloses any 35 U.S.C. § 285 exceptional case fee claim arising from this specific action. However, since the dismissal is without prejudice, a future re-filed action would be treated as a new case and § 285 analysis would begin afresh in that proceeding.
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