Ortiz & Associates Consulting LLC v. Screenbeam Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ortiz & Associates Consulting, LLC (New Mexico)
  • Defendant: ScreenBeam, Inc. (California)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 5:24-cv-06394, N.D. Cal., 09/11/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains 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 for wireless data display infringe patents related to methods and systems for brokering data between wireless devices and remote data rendering devices.
• Technical Context: The technology at issue concerns frameworks for enabling a user of a mobile wireless device to locate and securely transmit data, such as a presentation or video, to a nearby display device like a projector or monitor for rendering.
• Key Procedural History: The complaint discloses that Plaintiff is a non-practicing entity and that it and its predecessors-in-interest have previously entered into settlement licenses with other entities concerning its patents. The complaint asserts these licenses did not involve admissions of infringement or authorize the production of a patented article, a statement likely intended to preemptively address potential defenses related to patent marking requirements.

Case Timeline

Date	Event
2000-06-27	Priority Date for '299 & '285 Patents
2015-09-29	U.S. Patent No. 9,147,299 Issued
2017-01-17	U.S. Patent No. 9,549,285 Issued
2024-09-11	Complaint Filed

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

U.S. Patent No. 9,147,299 - Systems, methods and apparatuses for brokering data between wireless devices, servers and data rendering devices, issued September 29, 2015

The Invention Explained

• Problem Addressed: The patent describes a technical environment where wireless device users had growing access to data but were constrained by the small screens and limited functionality of their devices, with solutions for rendering that data on external devices being "severely limited, or practically nonexistent" at the time of the invention ('299 Patent, col. 4:20-29).
• The Patented Solution: The invention proposes a method for "data brokering" that allows a wireless device (WD) to use a network to find a nearby data rendering device (DRD), such as a projector or monitor ('299 Patent, col. 13:3-12). The network assists by using the WD's location information to identify an appropriate DRD. The user can then select the DRD and, after entering an "authorization code," command the system to retrieve and render video data on the selected DRD ('299 Patent, col. 13:13-24). This process is illustrated in flowcharts like Figure 10, which depicts the steps of requesting a DRD location, receiving the information, and initiating data delivery.
• Technical Importance: This technology addressed an emerging need to bridge the gap between mobile computing and fixed presentation hardware, creating a framework for what is now commonly known as wireless screen casting or mirroring ('299 Patent, col. 4:30-44).

Key Claims at a Glance

• The complaint asserts claims 1-6 (Compl. ¶9). Independent claim 1 is a method claim.
• Essential Elements of Independent Claim 1:
  • Receiving a request from a wireless device (WD) in a network to locate a data rendering device (DRD), with the request including WD location information.
  • The network identifying the physical location, readiness, and capabilities of a DRD based on the WD location information.
  • The network providing the WD with location information for an accessible DRD.
  • Receiving a selection of the DRD from the WD via the network, made by entering an authorization code at a user interface on the WD or DRD.
  • Upon verification of the authorization code, the DRD retrieves and renders video data selected at the WD.
• The complaint asserts a range of claims, thereby reserving the right to pursue dependent claims.

U.S. Patent No. 9,549,285 - Systems, methods and apparatuses for brokering data between wireless devices, servers and data rendering devices, issued January 17, 2017

The Invention Explained

• Problem Addressed: The '285 patent addresses the same problem as its family member, the '299 patent: the historical difficulty for users of mobile wireless devices to output data to external printers or displays ('285 Patent, col. 4:40-47).
• The Patented Solution: The invention claims a system, rather than a method, centered on a network "server." This server is configured to communicate with registered DRDs and manage the data brokering process ('285 Patent, Abstract). It receives a "DRD locator request" from a WD, finds a nearby registered DRD, and enables the WD to select it. The server then facilitates the transfer of data from its memory to the selected DRD for rendering, contingent upon the entry of a valid passcode ('285 Patent, col. 14:38-57, Claim 9).
• Technical Importance: The claimed system provides a specific client-server architecture to implement the data brokering methods described in the patent family, institutionalizing the process through a centralized, managing server.

Key Claims at a Glance

• The complaint asserts claims 1-13 (Compl. ¶14). Independent claim 9 is a system claim.
• Essential Elements of Independent Claim 9:
  • A server in communication with at least one registered data rendering device (DRD) that has a user interface for receiving passcodes.
  • Memory in the server, accessible by the DRD, for securely storing data and an associated passcode.
  • The server is configured to receive a DRD locator request from a WD, find a nearby registered DRD, and enable the WD to select that DRD.
  • The server is further configured to enable the selected DRD to receive the data from the server's memory for rendering after a matching passcode is entered on the user interface.
• The complaint asserts a range of claims, thereby reserving the right to pursue dependent claims.

III. The Accused Instrumentality

Product Identification

The complaint broadly accuses "systems, products, and services" that are maintained, operated, and administered by Defendant ScreenBeam, Inc. (Compl. ¶9, ¶14). No specific product models are identified.

Functionality and Market Context

The complaint alleges the accused instrumentalities perform a method of, and constitute a system for, "providing data, such as documents and video, to data rendering devices (DRDs) including...multimedia devices (e.g., televisions, video monitors, and projectors) capable of displaying video data at the request of wireless devices" (Compl. ¶8, ¶13). The complaint does not provide sufficient detail for analysis of the accused instrumentalities' specific operation or market position.

IV. Analysis of Infringement Allegations

The complaint references claim charts attached as exhibits (Exhibits B and D) but does not include them in the filing (Compl. ¶10, ¶15). The infringement theory is therefore based on the narrative allegations.

• '299 Patent Infringement Allegations: The complaint alleges that Defendant's systems and services directly infringe claims 1-6 of the '299 patent by performing the claimed method of brokering data between wireless devices and rendering devices (Compl. ¶8-¶9). Plaintiff alleges that Defendant "put the inventions claimed by the '299 Patent into service (i.e., used them)" and that its actions caused the claimed invention as a whole to be performed (Compl. ¶9). No probative visual evidence provided in complaint.
• '285 Patent Infringement Allegations: The complaint alleges that Defendant's systems, products, and services directly infringe claims 1-13 of the '285 patent (Compl. ¶14). It asserts these instrumentalities constitute the claimed systems for brokering data and that Defendant has "put the inventions claimed by the '285 Patent into service" (Compl. ¶14).
• Identified Points of Contention:
  • Scope Questions: The complaint's lack of technical detail raises fundamental questions about the alleged infringement. A primary issue will be whether the accused systems' method of discovering display devices on a local network constitutes "locat[ing]" a DRD using "WD location information" as recited in claim 1 of the '299 patent. Another question is what feature of the accused system corresponds to the "authorization code" or "passcode," and whether a standard network password or a temporary on-screen PIN meets that claim limitation.
  • Technical Questions: For the '285 patent, a key technical question will be which component in the accused architecture constitutes the claimed "server." The analysis may turn on whether the accused functionality is performed by a distinct network server, as the patent figures suggest, or by software running on the wireless display receiver itself, raising the question of whether an integrated device can be its own "server" under the patent's claims.

V. Key Claim Terms for Construction

• The Term: "locate at least one data rendering device" ('299 Patent, Claim 1)

  • Context and Importance: This term is critical as it defines the initial step of the claimed method. The dispute will likely center on whether this requires geographic locating (e.g., via GPS) or if it can cover simple network discovery (e.g., scanning for available devices on a LAN).
  • Intrinsic Evidence for a Broader Interpretation: The specification is not strictly limited, mentioning locating a DRD based on "a WD and/or WD user's location" or a "user's profile," which could be interpreted broadly ('299 Patent, col. 5:11-16).
  • Intrinsic Evidence for a Narrower Interpretation: The specification frequently discusses location in a geographic context, referencing "Global Positioning System (GPS)," "HLR technology," and providing "driving directions and/or a map" to the DRD ('299 Patent, col. 4:31-33; col. 11:61-64). This evidence may support an argument that "locate" requires more than just identifying another device on the same local network.

• The Term: "authorization code" ('299 Patent, Claim 1) / "passcode" ('285 Patent, Claim 9)

  • Context and Importance: These terms define the security-gating mechanism of the inventions. Practitioners may focus on these terms because their construction will determine whether routine connection credentials (like a Wi-Fi password or a temporary PIN) fall within the scope of the claims.
  • Intrinsic Evidence for a Broader Interpretation: The term "authorization code" is not explicitly defined, which could support a plain and ordinary meaning that encompasses any credential required to gain access.
  • Intrinsic Evidence for a Narrower Interpretation: The specification provides examples such as "passwords/passcodes, biometrics and/or communications security (COMSEC)," suggesting a focus on user-specific or heightened security measures ('299 Patent, col. 5:22-24). The use of "passcode" in the '285 patent could also be argued as being more specific than a generic authorization credential.

• The Term: "server" ('285 Patent, Claim 9)

  • Context and Importance: The system claimed in the '285 patent is built around this "server." The viability of the infringement claim depends on identifying this component in Defendant's product architecture.
  • Intrinsic Evidence for a Broader Interpretation: The term is not given a special definition, potentially allowing it to cover any network node—including the DRD itself—that performs the claimed server functions of receiving requests, storing data, and managing access.
  • Intrinsic Evidence for a Narrower Interpretation: The patent figures, incorporated by reference, depict the "network servers 15" as distinct network elements separate from the wireless device (6) and the data rendering device (7) ('299 Patent, Fig. 1). This may support a construction requiring a physically or logically separate computing device, not a processor integrated into the end-point rendering device.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead a formal count for indirect infringement. While it contains language suggesting Defendant's actions are a but-for cause of the infringing use, it does not allege the specific elements of knowledge and intent required for induced infringement, nor does it allege contributory infringement (Compl. ¶9, ¶14).
• Willful Infringement: The complaint's prayer for relief seeks a declaration of willful infringement and enhanced damages (Compl., p. 8, ¶e). However, the body of the complaint contains no factual allegations to support this claim, such as assertions of pre-suit knowledge of the patents or egregious conduct.

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

• A core issue will be one of definitional scope: can the term "locate", which the patent specification repeatedly links to wide-area geographic positioning technologies like GPS and cellular networks, be construed to cover the local-area network discovery protocols used by modern wireless display systems to find nearby devices?
• A second central issue will be one of architectural mapping: does the accused ScreenBeam system, which likely operates as an integrated receiver, contain a "server" component as claimed in the '285 patent, or is there a fundamental mismatch between the patent's client-server framework and the technical operation of the accused products?
• A key evidentiary question will be one of functional specificity: what evidence will Plaintiff provide to demonstrate that the accused systems' connection security features (e.g., an on-screen PIN) perform the role of the claimed "authorization code" or "passcode," which the patent specification suggests could include biometrics and other advanced security methods?