DCT

1:23-cv-01646

Ortiz & Associates Consulting LLC v. Lexmark Intl Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-01646, D. Colo., 06/28/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established place of business in the District of Colorado, committing alleged acts of infringement in the district, and conducting substantial business in the state.
  • Core Dispute: Plaintiff alleges that Defendant’s systems and servers for secure communication infringe a patent related to brokering data between wireless devices and networked data rendering devices.
  • Technical Context: The technology concerns systems that allow a user of a wireless device (like a smartphone) to locate and securely send data to a separate device (like a networked printer or projector) for rendering.
  • Key Procedural History: The complaint alleges that Defendant has had knowledge of the patent-in-suit since at least November 12, 2021, the filing date of a prior, unspecified lawsuit, which may be relevant to potential allegations of willful infringement.

Case Timeline

Date Event
2000-06-27 ’285 Patent - Earliest Priority Date
2017-01-17 ’285 Patent - Issue Date
2021-11-12 Alleged date of Defendant's knowledge of the '285 patent
2023-06-28 Complaint Filing Date

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, "Systems, Methods and Apparatuses for Brokering Data Between Wireless Devices, Servers and Data Rendering Devices," issued January 17, 2017.

The Invention Explained

  • Problem Addressed: At the time of the invention, users of handheld wireless devices faced significant challenges in utilizing data they retrieved, as they were "severely limited, or practically nonexistent" in their options for rendering that data (e.g., printing or displaying it on a large screen) ('285 Patent, col. 4:40-42). Users were generally restricted by "small device-based viewers" and "inconveniently located rendering... resources" ('285 Patent, col. 4:44-48).
  • The Patented Solution: The invention describes a system architecture that allows a wireless device (WD) to securely interact with a "data rendering device" (DRD), such as a networked printer or projector, via a server ('285 Patent, Abstract). The system enables a WD user to locate a nearby DRD, request data transfer to it through a network, and often requires entering a "passcode" at the DRD to authorize the rendering, thereby providing a secure method for on-demand data output ('285 Patent, col. 5:39-44, FIG. 10).
  • Technical Importance: The technology aimed to provide "portability" and "information on the go" by bridging the gap between mobile data access and fixed data output devices, a growing need with the rise of wireless data services ('285 Patent, col. 4:49-53).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2-13 (Compl. ¶8).
  • Independent Claim 1 of the '285 Patent recites a system comprising:
    • A server in communication with at least one data rendering device (DRD).
    • The DRD includes a user interface for receiving passcodes and is registered with the server to receive data from a wireless device (WD).
    • The rendering is performed in response to a passcode associated with the WD being entered at the DRD's user interface.
    • A memory in the server for securely storing data and the passcode received from the WD.
    • The server is configured to receive data and the passcode from the WD, and to send it to the DRD for rendering only after a passcode entered at the DRD matches the passcode stored in the server memory.
  • The complaint does not specify which dependent claims it intends to assert beyond the general allegation of claims 1-13 (Compl. ¶8).

III. The Accused Instrumentality

Product Identification

The complaint accuses "systems and servers" that Defendant "maintained, operated, and administered" (Compl. ¶8). No specific Lexmark product names, software, or services are identified.

Functionality and Market Context

  • The accused instrumentalities are alleged to be "systems for establishing secure communication over a public network" (Compl. ¶11).
  • The complaint alleges that Defendant put the patented inventions "into service" and that "but for Defendant's actions, the claimed-inventions embodiments involving Defendant's products and services would never have been put into service" (Compl. ¶8).
  • The complaint does not provide further technical detail on the operation of the accused systems or their market positioning.

IV. Analysis of Infringement Allegations

The complaint states that support for its allegations is found in a "preliminary claim table attached as Exhibit B" (Compl. ¶9). This exhibit was not included with the filed complaint. As a result, the infringement analysis must be based on the narrative allegations in the complaint body. The core infringement theory is that Defendant's "systems and servers" (Compl. ¶8) meet the limitations of the asserted claims of the ’285 Patent by providing for secure, networked communication.

No probative visual evidence provided in complaint.

The complaint does not provide sufficient detail for analysis of how specific accused functionalities map to the elements of the asserted claims.

V. Key Claim Terms for Construction

  • The Term: "data rendering device (DRD)"

    • Context and Importance: This term is foundational to the claimed system. The patent defines DRDs broadly, including "networked printers, copiers, video-enabled monitors/televisions, multimedia projectors," and even an "automatic teller machine (ATM)" ('285 Patent, col. 5:25-28, col. 14:50-53). The central dispute will likely involve identifying which specific components of Defendant's accused "systems and servers" constitute a "DRD" and whether they function as described in the patent.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification states that DRDs "can generally be considered 'undedicated' rendering devices (e.g., 'unassigned' as a resource and/or generally available and open to the acceptance and rendering of data from unfamiliar clients)" ('285 Patent, col. 5:6-10). This language could support a broad reading to include any network-accessible output device.
      • Evidence for a Narrower Interpretation: Claim 1 requires the DRD to include "a user interface for receiving passcodes" and be "registered with said server." This suggests the "DRD" is not just any output device, but one specifically configured with security and registration features as part of the claimed system architecture.

  • The Term: "passcode"

    • Context and Importance: The requirement of a "passcode" entered at the DRD is a critical security feature of the asserted claims. The nature of the "passcode" in Defendant's accused system will be a key point of comparison. Practitioners may focus on this term because its interpretation will determine whether Defendant’s security mechanisms meet this claim limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term itself is not explicitly defined, which could support its plain and ordinary meaning (e.g., a simple string of characters).
      • Evidence for a Narrower Interpretation: The specification suggests "passcode" is a broad concept that "can include the use of passwords/passcodes, biometrics and/or communications security (COMSEC)" ('285 Patent, col. 5:42-44). A defendant might argue that the term, in the context of the invention, implies a specific type of user-generated secret for session authentication, potentially distinguishing it from other system-level security tokens.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendant "actively encouraged or instructed" its customers on how to use its products and services in an infringing manner, specifically for "establishing secure communication over a public network" (Compl. ¶11). Contributory infringement is alleged on a similar basis (Compl. ¶12).
  • Willful Infringement: While not pleaded as a separate count, the complaint lays the groundwork for willfulness by alleging Defendant has known of the ’285 Patent "from at least November 12, 2021, the filing date of a prior lawsuit" (Compl. ¶10, ¶11). Plaintiff also expressly reserves the right to add claims for willful infringement as discovery proceeds (Compl. p. 3, n.1-2).

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

  • A threshold issue will be one of pleading sufficiency: given the generic accusation against "systems and servers" without identifying specific products, an initial focus of the litigation may be whether the complaint provides sufficient notice of the basis for its claims under prevailing federal standards.
  • The central technical issue will be one of architectural mapping: can the functional components of Defendant's accused technology, once identified, be mapped onto the distinct "server," "wireless device (WD)," and "data rendering device (DRD)" architecture required by the asserted claims, particularly with respect to the claimed passcode authentication workflow?
  • A key question for damages and potential enhancement will be one of scienter: the litigation will likely explore the facts and circumstances surrounding the "prior lawsuit" mentioned in the complaint to establish the timing and extent of Defendant's knowledge of the ’285 Patent and its alleged infringement.