High-Profile IP Case Involving Alarm.com and Vivint

 Based in New York City, Dyan Gershman offers corporate counsel at Gershman Law, PLLC to her clients in matters ranging from commercial contracts, M&A, to intellectual property. Dyan Gershman has extensive knowledge of patent cases involving technology and infringement claims, and follows legal developments and ongoing cases relevant to her own work.

One high-profile case filed with the US District Court for the Eastern District of Texas in early 2023 centers on Alarm.com, Inc. (ADC), joined by ICN Acquisition, LLC, in filing 15 distinct claims of patent infringement against Vivint. The allegation is that Vivint knowingly utilized Alarm’s patented ADC back-end software to sell and market its own sensor and security devices.

As an Alarm.com dealer starting in 2007, Vivint sold security and “smart home” packages that contained the ADC back-end platform. Vivint allegedly employed the ADC back-end and an ICN platform for its own products without a license until 2014. The suit seeks to end Vivint’s infringement and ensure that ADC and ICN receive redress for the damage caused by Vivint.

The situation is complex, as Vivint, ultimately needing a license for the back-end it had allegedly developed using ADC’s technology, entered into a late 2013 patent cross-licensing deal with ADC. In November 2022, Vivint announced a cessation of its payment of royalty fees. This triggered a filing of arbitration by ADC, under the terms of that agreement, with a remedy from the confidential process expected in 12 to 16 months.

Should a patent infringement be proven, a potential remedy available to Alarm.com is the disgorgement of revenues that Vivint derives from the commercial use of the technology and ongoing royalty payments.