LEGAL PROCEEDINGS
−Removed: On June 2, 2015, Vivint, Inc., or Vivint, filed a lawsuit against us in U.S.
−Removed: District Court, District of Utah, alleging that our technology directly and indirectly infringes six patents that Vivint purchased.
−Removed: On October 27, 2022, we filed a demand for arbitration of a dispute arising under the Patent Cross License Agreement between Alarm.com and Vivint executed in November 2013.
−Removed: Vivint had stopped paying license fees to Alarm.com under the agreement.
−Removed: As a result of Vivint’s refusal to pay license fees under the agreement, which began during the fourth quarter of 2022, SaaS and license revenue and total revenue through December 31, 2023 were lower by approximately $6.0 million on a quarterly basis.
−Removed: Quarterly earnings and cash flow through December 31, 2023 were also impacted by the aforementioned $6.0 million, plus additional legal fees.
−Removed: We also filed a lawsuit against Vivint on January 4, 2023 in U.S.
−Removed: District Court, Eastern District of Texas, alleging that Vivint infringed 15 of our patents.
−Removed: On March 8, 2023, Vivint filed counterclaims in the action alleging that Alarm.com’s products and services directly and indirectly infringed 14 patents owned by Vivint.
−Removed: Most of Vivint’s counterclaims also named our service provider ADT LLC as a defendant.
−Removed: On December 21, 2023, Alarm.com and Vivint agreed to settle all outstanding litigation between the parties and to enter into a long-term intellectual property license agreement under which Alarm.com will license to Vivint its intellectual property portfolio.
On January 10, 2022, EcoFactor, Inc., or EcoFactor, filed a lawsuit against us in U.S.
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We moved to dismiss the Oregon case for failure to state a claim on March 28, 2022.
−Removed: Three of the asserted patents are in ex parte reexamination proceedings at the PTO, and ex parte reexamination of a fourth patent concluded on August 23, 2023 after the claims were amended.
+Added: On April 18, 2022, the district court stayed the case at the request of the parties pending the disposition of other proceedings involving the asserted patents.
+Added: These proceedings include four ex parte reexamination proceedings at the U.S.
+Added: Patent and Trademark Office and one inter partes review.
+Added: Two of the patents were found unpatentable in reexamination, and EcoFactor appealed the decision with respect to one of the patents to the United States Court of Appeals for the Federal Circuit on July 9, 2024, while its time to appeal the second decision has not yet expired.
+Added: The ex parte reexamination of a third patent is still ongoing, and ex parte reexamination of a fourth patent concluded on August 23, 2023 after the claims were amended.
On April 18, 2022, all claims of a fifth patent were found unpatentable by the U.S.
−Removed: Patent Trial and Appeal Board, or PTAB, in an inter partes review, and the parties expect that all claims of that patent will be canceled because EcoFactor's appeal of that PTAB decision was dismissed.
−Removed: On April 18, 2022, the district court stayed the case at the request of the parties pending the disposition of PTAB and other proceedings involving the asserted patents, and the parties filed a joint status report on January 2, 2024.
+Added: Patent Trial and Appeal Board, or PTAB, in inter partes review, and all claims were canceled on February 1, 2024.
Should EcoFactor prevail in its lawsuit we could be required to pay damages and/or a reasonable royalty for sales of our solution, we could be enjoined from making, using and selling our solution if a license or other right to continue selling such elements is not made available to us, and we could be required to pay ongoing royalties and comply with unfavorable terms if such a license is made available to us.
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We answered the complaint on October 4, 2021.
−Removed: Among other things,
−Removed: we asserted defenses based on non-infringement and invalidity of the patents in question.
+Added: Among other things, we asserted defenses based on non-infringement and invalidity of the patents in question.
An evidentiary hearing in the investigation was held from June 28, 2022 through July 1, 2022.
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In addition to the matters described above, we may be required to provide indemnification to certain of our service provider partners for certain claims regarding our solutions.
−Removed: For example, we incurred costs associated with the indemnification of our service provider ADT, LLC.
−Removed: On February 25, 2021, Vivint filed a lawsuit against ADT LLC a/k/a ADT LLC of Delaware d/b/a ADT Security Services in U.S.
−Removed: District Court, District of Utah, alleging that ADT Pulse, Control, and Blue each infringe one or more patents owned by Vivint.
−Removed: Vivint is seeking damages and attorneys’ fees.
−Removed: Vivint filed a second amended complaint on March 8, 2022.
−Removed: Pursuant to the December 21, 2023 settlement agreement between Alarm.com and Vivint, the allegations regarding ADT Pulse and Control will be dismissed, ending Alarm.com’s indemnification obligations in this matter.
−Removed: We also incurred costs associated with the indemnification of our service provider Monitronics International, Inc.
−Removed: d/b/a Brinks in patent infringement suits.
−Removed: On November 4, 2022, January 13, 2023 and April 18, 2023, IOT Innovations LLC, or IOT, sued Monitronics in U.S.
−Removed: District Court, Eastern District of Texas, alleging patent infringement of certain products and services sold by Monitronics.
−Removed: Together, IOT asserted infringement of 26 patents and sought permanent injunctions, enhanced damages and attorneys' fees.
−Removed: On October 3, 2023, IOT filed a stipulation of dismissal of all three cases, ending the cases and the Company's involvement therein.
−Removed: We also incur costs associated with the indemnification of our service provider, Central Security Group – Nationwide, Inc.
+Added: For example, we incurred costs associated with the indemnification of our service provider Central Security Group – Nationwide, Inc.
(d/b/a Alert 360), or CSG, in an ongoing patent litigation.
−Removed: In 2018, Ubiquitous Connectivity, LP, or Ubiquitous, brought suit against CSG in U.S.
−Removed: District Court, Northern District of Oklahoma, alleging infringement of two US patents.
+Added: Ubiquitous Connectivity, LP, or Ubiquitous, brought suit against CSG in U.S.
+Added: District Court, Northern District of Oklahoma, alleging infringement of two U.S.
The case was stayed by agreement of the parties for several years while the patents in suit were challenged before the PTAB.
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As a result, only four patent claims remain at issue and the Northern District of Oklahoma case is no longer stayed.
−Removed: A claim construction hearing is scheduled for December 12, 2024.
+Added: The case is currently in the discovery phase.
+Added: The court held a claim construction hearing on December 12, 2024, but has not yet rendered a claim construction opinion.
A hearing on dispositive motions, including for summary judgment, is scheduled for April 15, 2026.
−Removed: A trial is scheduled for June 22, 2026.
+Added: A trial is scheduled for July 6, 2026.
Should Ubiquitous prevail on its infringement claims, we could be required to indemnify CSG for damages in the form of a reasonable royalty or of Ubiquitous’s lost profits.
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Compared sentence by sentence after normalising whitespace, quotation marks, case and digits, so re-formatting and restated figures do not read as changed language. Wording changes appear as one removal and one addition. The current filing and the prior one are authoritative.