Ortiz & Associates Consulting LLC v. Epson America Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ortiz & Associates Consulting, LLC (New Mexico)
  • Defendant: Epson America, Inc. (California)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 8:24-cv-01660, C.D. Cal., 07/30/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district, has committed alleged acts of infringement in the district, and conducts substantial business in the forum.
• Core Dispute: Plaintiff alleges that Defendant’s systems, products, and services for providing data to rendering devices infringe a patent related to brokering data between wireless devices and networked output devices like printers and projectors.
• Technical Context: The technology concerns methods for a user of a wireless device (e.g., a smartphone) to locate and securely send data to a nearby, unassigned rendering device (e.g., a public printer or conference room projector) for printing or display.
• Key Procedural History: The complaint alleges that Defendant has been aware of the patent-in-suit since at least June 23, 2023, when it was sued for infringement of the same patent in the Eastern District of Texas. The complaint also notes that Plaintiff and its predecessors have entered into settlement licenses with other, unnamed entities, but asserts these licenses were not for producing a patented article and did not involve an admission of infringement.

Case Timeline

Date	Event
2000-06-27	Earliest Priority Date for '285 Patent
2017-01-17	U.S. Patent No. 9,549,285 Issues
2023-06-23	Defendant Allegedly Notified of '285 Patent via Prior Lawsuit
2024-07-30	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,549,285 - Systems, methods and apparatuses for brokering data between wireless devices, servers and data rendering devices

• Patent Identification: U.S. Patent No. 9,549,285, issued January 17, 2017.

The Invention Explained

• Problem Addressed: At the time of the invention (priority date of 2000), users of handheld wireless devices like PDAs were hampered by small screens and limited capabilities for printing or displaying retrieved data. The patent describes solutions for rendering data on such devices as "severely limited, or practically nonexistent" (’285 Patent, col. 3:40-42).
• The Patented Solution: The invention provides a system for "data brokering" that allows a wireless device (WD) to locate a nearby, unassigned "data rendering device" (DRD), such as a networked printer or projector, and securely transmit data for output (’285 Patent, Abstract). The system architecture often involves a central server that helps the WD find a suitable DRD based on location or a user profile, and a security mechanism, such as a passcode entered at the DRD, to authorize the rendering of the user's private data on a public or shared device (’285 Patent, col. 5:40-44; Fig. 10).
• Technical Importance: The technology addressed the need for "information on the go" by allowing early mobile devices to leverage the superior output capabilities of fixed, networked hardware, effectively bridging the gap between mobile data access and physical data output (’285 Patent, col. 3:49-54).

Key Claims at a Glance

• The complaint asserts claims 1-13 of the '285 patent (Compl. ¶9). Independent claim 1 is a system claim with the following essential elements:
  • A server in communication with at least one data rendering device (DRD).
  • The DRD includes a user interface for receiving passcodes.
  • The DRD is registered with the server to receive data from a wireless device (WD).
  • Data rendering occurs in response to a passcode associated with the WD being entered at the DRD's user interface.
  • Memory on the server securely stores the data and associated passcode.
  • The server is configured to send the data to the DRD for rendering only after a matching passcode is entered at the DRD.
• The complaint does not explicitly reserve the right to assert dependent claims, but the general assertion of claims 1-13 implies their inclusion.

III. The Accused Instrumentality

Product Identification

The complaint does not identify any specific accused products or services by name (Compl. ¶9). It broadly accuses "systems, products, and services" maintained, operated, and administered by the Defendant.

Functionality and Market Context

The complaint alleges that the accused instrumentalities perform a method for providing data to "data rendering devices (DRDs) including networked printers capable of printing documents and multimedia devices (e.g., televisions, video monitors, and projectors) capable of displaying video data at the request of wireless devices" (Compl. ¶8). Given the defendant is Epson, these instrumentalities are presumably its networked printers and projectors and associated cloud or mobile services (e.g., Epson Connect, Epson iProjection) that allow users to print or display content from mobile devices. The complaint does not provide specific details on the functionality or market context of any particular Epson product.

IV. Analysis of Infringement Allegations

The complaint alleges that support for its infringement allegations is found in a chart attached as Exhibit B (Compl. ¶10). This exhibit was not filed with the complaint. The complaint itself provides no narrative explanation or factual support detailing how any accused instrumentality meets the limitations of the asserted claims. It states only in a conclusory manner that Defendant's systems perform a method that infringes one or more of claims 1-13 of the ’285 Patent (Compl. ¶9).

Therefore, the complaint does not provide sufficient detail for analysis of the infringement allegations.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

"server"

• Context and Importance: The asserted claims require a specific client-server architecture where a "server" communicates with both the wireless device and the data rendering device. The nature and location of this "server" will be critical. Practitioners may focus on this term because modern cloud-printing services may use distributed architectures or peer-to-peer connections that may not map cleanly to the centralized server model described in the patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not provide an explicit definition of "server," which may support an interpretation based on its plain and ordinary meaning as any network entity that provides a service to another.
  • Evidence for a Narrower Interpretation: The specification describes the server in a specific role, managing resources like Home Location Registers (HLRs) and Visiting Location Registers (VLRs) to track user and device information, and actively brokering the connection based on a user profile (’285 Patent, col. 7:29-41; Fig. 9). This context suggests the "server" is a centralized management entity, not merely a data conduit.

"passcode associated with said WD being entered at the user interface [of the DRD]"

• Context and Importance: This limitation defines the security mechanism for data retrieval. The dispute will likely center on what constitutes "entering" a passcode "at the user interface" of the rendering device. This is crucial for determining infringement by systems where authentication might occur on the wireless device itself before the job is released.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue this language covers any authentication step that occurs proximate in time and function to the rendering, even if not physically typed into the DRD.
  • Evidence for a Narrower Interpretation: The claim language "entered at the user interface" of the DRD, not the WD, suggests direct physical interaction with the printer or projector. Figures 8 and 11 explicitly depict a step "Enter Passcode at DRD" as a distinct action occurring at the rendering device itself (’285 Patent, Fig. 8, element 83; Fig. 11, element 113), which strongly supports a narrower construction requiring physical entry on the DRD.

VI. Other Allegations

Indirect Infringement

The complaint does not contain a separate count for indirect infringement. However, it alleges that "Defendant's acts complained of herein caused those claimed-invention embodiments as a whole to perform," which may suggest an intent to pursue a theory of induced or contributory infringement (Compl. ¶9, 22-24).

Willful Infringement

Plaintiff alleges that Defendant has known of the ’285 patent and its alleged infringement since at least June 23, 2023, as a result of a prior lawsuit in the Eastern District of Texas (Compl. ¶9). The prayer for relief requests a declaration of willful infringement and treble damages (Compl. p. 8, ¶e).

VII. Analyst’s Conclusion: Key Questions for the Case

• A primary evidentiary question is what specific products and system architectures Plaintiff will accuse. The complaint's lack of detail means the initial battle will be in discovery, where Plaintiff must identify the precise functionality within Epson's ecosystem that allegedly maps to the patent's server-based, passcode-protected rendering method.
• A core legal issue will be one of claim scope and technical evolution: can the term "server", as described in a 2000-era patent focused on telecommunications infrastructure like HLRs, be construed to cover modern, distributed cloud-based printing services? Similarly, can the requirement of a "passcode...entered at the [DRD]" read on systems where authentication may be handled entirely on the user's mobile device?
• A key question for damages will be willfulness: Plaintiff has alleged pre-suit knowledge based on a prior lawsuit. The court will need to examine what actions, if any, Epson took to assess the merits of the infringement allegations after being put on notice, which will be central to the determination of willful infringement.