DCT
1:22-cv-04337
Flexiworld Tech Inc v. Hisense Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Flexiworld Technologies, Inc. (Washington)
- Defendant: Hisense Co., Ltd., et al. (China, Hong Kong, SAR, Mexico)
- Plaintiff’s Counsel: Nelson Bumgardner Conroy PC
- Case Identification: 2:22-cv-225, E.D. Tex., 06/24/2022
- Venue Allegations: Venue is asserted on the basis that Defendants are foreign entities, which may be sued in any judicial district. The complaint also alleges that Defendants conduct substantial business in Texas and have committed acts of infringement in the state through established distribution channels.
- Core Dispute: Plaintiff alleges that Defendant’s Smart TV products, Soundbars, and the associated RemoteNow mobile application infringe five U.S. patents related to wireless device discovery, connectivity, and data processing.
- Technical Context: The patents relate to the technology that allows a computing device, such as a smartphone, to discover, connect with, and control peripheral output devices, such as smart televisions or audio equipment, over a wireless network.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the patents-in-suit and the accused products via letters dated October 14, 2021, and December 29, 2021, which forms the basis for the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2000-11-01 | Earliest Priority Date (’259 and ’178 Patents) |
| 2000-11-20 | Earliest Priority Date (’233 Patent) |
| 2001-01-19 | Earliest Priority Date (’649 and ’510 Patents) |
| 2012-05-01 | ’649 Patent Issued |
| 2015-06-30 | ’510 Patent Issued |
| 2017-12-05 | ’259 Patent Issued |
| 2018-05-08 | ’233 Patent Issued |
| 2018-07-31 | ’178 Patent Issued |
| 2021-10-14 | First Alleged Notice Letter Sent to Defendant |
| 2021-12-29 | Second Alleged Notice Letter Sent to Defendant |
| 2022-06-24 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,169,649 - "Mobile device methods for enabling pervasive wireless digital media," issued May 1, 2012
The Invention Explained
- Problem Addressed: The patent’s background describes the inconvenience faced by users of mobile computing devices who wish to output content to a nearby device (e.g., a printer or display) but are hindered by the need to find, install, and configure a specific, device-dependent driver for each new output device they encounter (’649 Patent, col. 2:48-67).
- The Patented Solution: The invention proposes a method where a mobile "information apparatus" can pervasively output content to any compatible output device by first performing a wireless discovery process to identify nearby devices, receiving information about the device's capabilities, establishing a connection, and then transmitting formatted output data, thereby eliminating the need for pre-installed, dedicated drivers for every potential output device (’649 Patent, col. 5:47-67).
- Technical Importance: This approach aimed to solve a key usability challenge for the emerging class of mobile devices by creating a more seamless and universal method for interacting with peripheral hardware in varied environments.
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶44).
- Claim 1 outlines a method for a wireless information apparatus comprising the essential elements of:
- Performing a "wireless device discovering" operation for output devices in "close proximity."
- Establishing a "short range wireless communication" directly with a discovered device.
- Receiving information related to the output device over that short-range communication.
- Providing an indication of that information to a user via an interface.
- Establishing a "wireless communication channel" with a selected device.
- Generating output data.
- Transferring the output data over the channel.
- Repeating the connection and transfer steps for future wireless connections "without the need for repeating the wireless device discovering step."
U.S. Patent No. 9,069,510 - "Touch sensitive screen information apparatus that includes close proximity or near distance radio frequency field communication," issued June 30, 2015
The Invention Explained
- The ’510 Patent shares a common specification with the ’649 Patent and is directed to the same technical field.
- Problem Addressed: The patent addresses the same problem of requiring device-dependent drivers to connect mobile devices with peripherals (’510 Patent, col. 2:48-67).
- The Patented Solution: The invention provides a method for a touch-screen mobile device to discover, establish a connection with, and transmit data to a nearby output device, streamlining the process of pervasive, driver-less output (’510 Patent, col. 5:47-67).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶50).
- Claim 1 of the ’510 Patent is textually identical to claim 1 of the ’649 Patent, outlining the same multi-step method for device discovery, connection, and data transfer.
Multi-Patent Capsule: U.S. Patent No. 9,836,259
- Patent Identification: U.S. Patent No. 9,836,259, "Televisions, output controllers, or speakers that are setup to wirelessly connect to a network and to receive digital content from a digital content service over the network," issued December 5, 2017.
- Technology Synopsis: This patent is directed to an output device (like a television or speaker) that is set up to connect to a network. The setup process involves receiving security information, establishing a network connection, and then downloading software components, which enables the device to receive digital content from an internet-based service.
- Asserted Claims: At least claim 1 (Compl. ¶56).
- Accused Features: The complaint alleges that the Accused TVs and Accused Soundbars infringe the ’259 Patent (Compl. ¶56).
Multi-Patent Capsule: U.S. Patent No. 9,965,233
- Patent Identification: U.S. Patent No. 9,965,233, "Digital content services or stores over the internet that transmit or stream protected or encrypted digital content to connected devices and applications that access the digital content services or stores," issued May 8, 2018.
- Technology Synopsis: This patent focuses on the server-side of a digital content service. The claimed service receives authentication information and a device object from a user's device, generates encrypted, device-dependent output data, and transmits that data to the user's device for rendering.
- Asserted Claims: At least claim 37 (Compl. ¶63).
- Accused Features: The complaint alleges that the Accused TVs infringe the ’233 Patent (Compl. ¶63).
Multi-Patent Capsule: U.S. Patent No. 10,037,178
- Patent Identification: U.S. Patent No. 10,037,178, "Wireless output devices or wireless controllers that support wireless device discovery for establishing wireless connectivity," issued July 31, 2018.
- Technology Synopsis: This patent describes a method for an output device to establish a wireless link with a client device. The method involves the output device facilitating a wireless discovery operation, transmitting its own attributes to the client, and then implementing a security procedure to establish the connection for receiving output data.
- Asserted Claims: At least claim 13 (Compl. ¶70).
- Accused Features: The complaint alleges that the Accused TVs and Accused Soundbars infringe the ’178 Patent (Compl. ¶70).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are Hisense's Smart TV products (including Android TV, Google TV, Roku TV, X Class TV, and Smart Laser TV), Soundbar products, and the Hisense RemoteNow mobile application (collectively, the "Accused Products") (Compl. ¶35).
- Functionality and Market Context: The complaint alleges that the Accused Products function together as a system where the RemoteNow App is used to control the Accused TVs and Soundbars (Compl. ¶¶44, 50). This implies a system where a mobile application discovers, connects to, and sends commands or data to peripheral consumer electronics over a wireless network. The complaint does not provide specific technical details about the operation of the Accused Products beyond identifying them by product category. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not provide sufficient detail for a full element-by-element infringement analysis. The following charts summarize the infringement theory as can be inferred from the identification of the accused products and the language of the asserted claims.
- ’649 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) wireless device discovering... for one or more output devices available within close proximity... | The RemoteNow App allegedly performs a discovery process to find available Hisense TVs or Soundbars. | ¶¶35, 44, 47 | col. 41:50-55 |
| (b) establishing... a short range wireless communication directly between the wireless information apparatus and the one or more output devices discovered... | The RemoteNow App allegedly establishes an initial, direct communication link with a discovered device. | ¶¶35, 44, 47 | col. 41:56-59 |
| (c) receiving... information over the short range wireless communication... related to the output device... | The App allegedly receives capability or identification information from the discovered TV or Soundbar. | ¶¶35, 44, 47 | col. 41:60-63 |
| (g) wireless transferring from the wireless information apparatus, at least part of the output data... to the one of the discovered output devices over the established wireless communication channel... | The App allegedly transmits commands or content to the selected TV or Soundbar over the established connection. | ¶¶35, 44, 47 | col. 42:1-5 |
- ’510 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) wireless device discovering... for one or more output devices available within close proximity... | The RemoteNow App allegedly performs a discovery process to find available Hisense TVs or Soundbars. | ¶¶35, 50, 53 | col. 41:50-55 |
| (b) establishing... a short range wireless communication directly between the wireless information apparatus and the one or more output devices discovered... | The RemoteNow App allegedly establishes an initial, direct communication link with a discovered device. | ¶¶35, 50, 53 | col. 41:56-59 |
| (c) receiving... information over the short range wireless communication... related to the output device... | The App allegedly receives capability or identification information from the discovered TV or Soundbar. | ¶¶35, 50, 53 | col. 41:60-63 |
| (g) wireless transferring from the wireless information apparatus, at least part of the output data... to the one of the discovered output devices over the established wireless communication channel... | The App allegedly transmits commands or content to the selected TV or Soundbar over the established connection. | ¶¶35, 50, 53 | col. 42:1-5 |
- Identified Points of Contention:
- Scope Questions: A central issue may be the construction of the phrase "close proximity." The infringement allegation raises the question of whether devices communicating over a standard Wi-Fi local area network, which can have significant range, fall within the scope of a term that the patent specification often associates with technologies like Bluetooth or infrared (’649 Patent, col. 13:50-54). The distinction in the claims between a "short range wireless communication" (step b) and a "wireless communication channel" (step e) suggests a potential mismatch if the accused system uses a single protocol (e.g., Wi-Fi) for both discovery and data transfer.
- Technical Questions: The complaint’s lack of technical detail raises the evidentiary question of how Plaintiff will demonstrate that the Accused Products perform the specific, sequential method steps recited in the claims. For example, what evidence will show that the RemoteNow App first establishes a "short range" link to "receive information" before establishing the primary "wireless communication channel" for data transfer, as the claim language requires?
V. Key Claim Terms for Construction
The Term: "wireless device discovering"
- Context and Importance: This multi-word term defines the initial step of the asserted method claims in the ’649 and ’510 Patents. Its construction is critical because it determines the threshold for infringement; the dispute may turn on whether a standard network broadcast and response protocol, common in Wi-Fi enabled apps, meets the specific definition of "discovering" as contemplated by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the discovery operation may be based on various protocols, including "a Bluetooth wireless communication, or a wireless communication compatible with a protocol within IEEE 802.11 standards" (’649 Patent, Abstract), which may support construing the term to cover standard Wi-Fi network scanning.
- Evidence for a Narrower Interpretation: The patent frequently discusses discovery in the context of a user initiating a search and receiving a list of available devices to choose from, as illustrated in a detailed flowchart (’649 Patent, Fig. 11, steps 1101-1108). This could support a narrower construction requiring a more specific, user-involved search-and-select process than a simple automatic handshake.
The Term: "close proximity"
- Context and Importance: This term of degree qualifies the scope of the "discovering" step in claim 1 of the ’649 and ’510 Patents. Its definition is central to whether the accused system, which likely operates over a local Wi-Fi network, infringes. Practitioners may focus on this term because its ambiguity creates a clear point of contention regarding the intended physical range of the claimed method.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification mentions "IEEE 802.11" as a possible communication standard, which can operate over a relatively large area (e.g., an entire home or office), suggesting "close proximity" could be interpreted broadly to mean presence on the same local network (’649 Patent, Abstract).
- Evidence for a Narrower Interpretation: The term is often used in contrast to traditional network printing and is linked to concepts like "walk up and print" convenience and short-range technologies like infrared and Bluetooth (’649 Patent, col. 2:10-20; col. 13:50-54). This context may support a narrower construction requiring a more limited physical distance between the devices than merely being on the same Wi-Fi network.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement for all five patents-in-suit. The allegations are based on Defendant’s "product manuals, website, and/or sales and marketing activities," as well as the provision of customer support and instructions, which allegedly encourage and instruct customers to use the Accused Products in an infringing manner (Compl. ¶¶36, 44, 50, 57, 64, 71).
- Willful Infringement: The complaint alleges willful infringement based on Defendant’s alleged pre-suit knowledge of the patents-in-suit. This knowledge is alleged to have been established through notice letters sent by Plaintiff to Defendant on October 14, 2021, and December 29, 2021. The complaint claims that Defendant’s continued infringing conduct after receiving these notices demonstrates willful disregard for Plaintiff’s patent rights (Compl. ¶¶37-40, 42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term “close proximity,” which the patent often frames in the context of direct, short-range interactions, be construed to cover devices communicating over a potentially wide-ranging standard Wi-Fi network? The outcome of this claim construction may determine whether the accused system falls within the patent’s reach.
- A second key issue will be one of procedural sequence: do the accused RemoteNow App and Hisense devices perform the distinct, ordered steps of (1) "discovering," (2) establishing a "short range communication" to receive information, and (3) establishing a separate "wireless communication channel" for data transfer, as strictly required by the claims? The case may turn on whether the accused system’s connection protocol can be mapped element-for-element onto this specific claimed sequence or if it uses a more integrated, singular connection process.