Flexiworld Tech Inc v. Hisense Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Flexiworld Technologies, Inc. (Washington)
  • Defendant: Hisense Co., Ltd. and related entities (People's Republic of China, Hong Kong, SAR, and Mexico)
  • Plaintiff’s Counsel: Nelson Bumgardner Conroy PC
• Case Identification: 2:22-cv-00227, E.D. Tex., 06/24/2022
• Venue Allegations: Venue is alleged to be proper as each Defendant is a foreign entity, which may be sued in any judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s Smart TVs, Soundbars, and associated applications infringe five U.S. patents related to wireless device connectivity, universal data output, and voice-activated commands.
• Technical Context: The technology relates to simplifying the process by which mobile devices discover, authenticate with, and send data to peripheral output devices, such as smart speakers and displays, over a network.
• Key Procedural History: The complaint alleges that Plaintiff sent notice letters identifying the Patents-in-Suit and the Accused Products to Defendant on October 14, 2021, and December 29, 2021, forming the basis for allegations of willful infringement.

Case Timeline

Date	Event
2000-11-20	Earliest Priority Date for '402, '072, '073, '087, '871 Patents
2009-10-27	U.S. Patent No. 7,609,402 Issues
2018-11-27	U.S. Patent No. 10,140,072 Issues
2018-11-27	U.S. Patent No. 10,140,073 Issues
2019-08-20	U.S. Patent No. 10,387,087 Issues
2020-09-08	U.S. Patent No. 10,768,871 Issues
2021-10-14	Plaintiff sends first notice letter to Defendant
2021-12-29	Plaintiff sends second notice letter to Defendant
2022-06-24	Complaint Filed

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

U.S. Patent No. 7,609,402: Methods for Universal Data Output (Issued Oct. 27, 2009)

The Invention Explained

• Problem Addressed: The patent’s background describes the inconvenience and complexity users face when attempting to output content from a computing device (especially a mobile one) to a peripheral device like a printer, which traditionally requires installing a specific, device-dependent driver for each peripheral (ʼ402 Patent, col. 3:1-14).
• The Patented Solution: The invention proposes a "universal data output method" where an information apparatus (e.g., a mobile phone) and an output device (e.g., a printer) share the raster image processing (RIP) workload. The information apparatus performs initial processing to create an intermediate, more device-independent data format, which is then sent to an output controller that completes the device-specific processing steps, eliminating the need for the user to install multiple dedicated drivers (ʼ402 Patent, col. 5:48-59).
• Technical Importance: This approach aimed to solve the "universal driver" problem for the emerging mobile computing paradigm, allowing users to more seamlessly interact with unfamiliar output devices in various locations.

Key Claims at a Glance

• The complaint asserts at least claim 13, which depends on independent claim 1 (Compl. ¶44). Claim 1 outlines a method for pervasive mobile data output, comprising the following essential elements:
  • accessing content at an information apparatus;
  • opening a wireless communication channel;
  • searching wirelessly for available output devices;
  • receiving at least one attribute corresponding to a found device;
  • selecting a wireless output device based on the attribute;
  • conforming the content into one or more output images;
  • generating an intermediate output data including the images;
  • establishing a wireless connection and transmitting the intermediate data to an output controller.

U.S. Patent No. 10,140,072: Sound Output System or Internet Appliance That Supports Voice Activated Commands, and That Plays Audio Data Received from a Service Over a Network (Issued Nov. 27, 2018)

The Invention Explained

• Problem Addressed: The patent addresses the need for users to conveniently output content from pervasive computing devices (e.g., smartphones) to any output device without cumbersome setup processes like installing dedicated drivers ('072 Patent, col. 2:5-11).
• The Patented Solution: The invention describes an output system, such as a wireless speaker, that supports voice commands. A user can set up this output system using a separate portable wireless device (e.g., a smartphone), which wirelessly discovers the output system, establishes a communication link, and provides it with security or authentication information. This allows the output system to then directly access a network service (e.g., a music streaming service) and respond to the user's voice commands ('072 Patent, Abstract).
• Technical Importance: This technology streamlines the setup and operation of modern smart speakers and other voice-controlled internet-of-things (IoT) devices, making them easier to integrate with online services.

Key Claims at a Glance

• The complaint asserts at least independent claim 15 (Compl. ¶50). Claim 15 recites an output system with the following essential elements:
  • at least one sound output device, a microphone, an interface, and wireless communication circuitry;
  • one or more processors and memory storing software/firmware;
  • the system is configured to: provide an indication via the interface; facilitate wireless discovery by a portable wireless device; establish a wireless communication link with the portable device; wirelessly receive information from the portable device; connect to servers over a network; receive a voice command from a user; receive audio output data from the servers; and output the audio data.

U.S. Patent No. 10,140,073

• Patent Identification: U.S. Patent No. 10,140,073, Wireless Devices That Establish a Wireless Connection with a Mobile Information Apparatus by Wirelessly Detecting, Within Physical Proximity, the Mobile Information Apparatus, issued Nov. 27, 2018.
• Technology Synopsis: The patent describes a method for simplifying the connection process between a wireless device (e.g., a smart speaker) and a mobile device (e.g., a smartphone). The connection is initiated by bringing the devices into close physical proximity, which triggers a wireless detection and exchange of information to establish a secure wireless link for future communications ('073 Patent, Abstract).
• Asserted Claims: At least independent claim 8 (Compl. ¶57).
• Accused Features: The complaint alleges that Hisense's Accused TVs and Soundbars, which wirelessly connect with mobile devices, infringe this patent (Compl. ¶57).

U.S. Patent No. 10,387,087

• Patent Identification: U.S. Patent No. 10,387,087, Output Systems or Audio Output Devices That Include an Interface Operable by a User to Initiate Wireless Discovery for Establishing Wireless Connections with Mobile Devices, issued Aug. 20, 2019.
• Technology Synopsis: This patent covers an output system (e.g., audio device) having a user interface (e.g., a button). A user interaction with the interface initiates a wireless discovery process, based on physical proximity, to find and establish a connection with a mobile device for receiving digital content ('087 Patent, Abstract).
• Asserted Claims: At least independent claim 1 (Compl. ¶64).
• Accused Features: The complaint alleges that Hisense's Accused TVs and Soundbars, which feature interfaces for initiating wireless connections, infringe this patent (Compl. ¶64).

U.S. Patent No. 10,768,871

• Patent Identification: U.S. Patent No. 10,768,871, Wireless Output Devices or Wireless Controllers for Establishing Wireless Connectivity and for Receiving Digital Content, issued Sep. 8, 2020.
• Technology Synopsis: The technology concerns a wireless output device that performs a wireless discovery process to be found by a client device. Upon discovery, the output device provides identification information to the client, which then allows for the establishment of a wireless connection to receive and play digital content ('871 Patent, Abstract).
• Asserted Claims: At least independent claim 15 (Compl. ¶71).
• Accused Features: The complaint alleges that Hisense's Accused TVs and Soundbars, which are discoverable and connectable by client devices for content streaming, infringe this patent (Compl. ¶71).

III. The Accused Instrumentality

Product Identification

The complaint identifies the "Accused Products" as at least Hisense's Smart TV products (including Android TV, Google TV, Roku TV, X Class TV, and Smart Laser TV), its Soundbar products, and the Hisense RemoteNow App (Compl. ¶35).

Functionality and Market Context

The complaint alleges these products are smart devices capable of wireless communication. They connect to networks and are used by customers to access and output digital content (Compl. ¶¶35-36). The complaint alleges that Hisense instructs its customers, via product manuals and customer support, to use these products in ways that infringe the patents, such as by connecting them to a network and streaming content controlled via a mobile application (Compl. ¶¶36, 44, 47). The complaint does not provide further technical detail on the specific operation of the accused functionalities.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint does not provide a claim chart or detailed, element-by-element infringement allegations for any of the asserted patents. The infringement theory is described narratively. For the '402 Patent, the complaint alleges indirect infringement by inducing customers to use the Accused TVs in a manner that directly infringes claim 13 (Compl. ¶44). For the '072 Patent, the complaint alleges Hisense directly infringes claim 15 by making, using, and selling the Accused TVs, and indirectly infringes by inducing customers to use them (Compl. ¶¶50-51). Similar allegations are made for the remaining patents-in-suit.

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the term "output device" as used in the '402 patent family, which has a specification heavily focused on printing, can be construed to cover modern Smart TVs and Soundbars. While the '402 Patent specification includes "televisions" in a list of exemplary output devices, the defense may argue the invention's context is narrower ('402 Patent, col. 2:54-55). The more recent patents ('072, '073, '087, '871) appear more directly targeted at the accused product categories, such as sound systems and wirelessly connected devices.
  • Technical Questions: The complaint lacks specific factual allegations mapping the technical operation of the Accused Products to the elements of the asserted claims. A key question for discovery will be whether Plaintiff can produce evidence that the Accused Products actually perform the specific functions required by the claims, such as the voice command processing and network authentication steps of claim 15 of the '072 Patent or the specific discovery and connection methods of the other patents.

V. Key Claim Terms for Construction

• The Term: "output device" (from '402 Patent, claim 1)

• Context and Importance: The construction of this term is critical because the '402 Patent's specification extensively uses printers as the primary example of an "output device." Practitioners may focus on this term to dispute whether the patent's scope, understood in the context of its disclosure, can extend to the accused Smart TVs and Soundbars.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification explicitly states that "Output devices may include, without limitation, fax machines, printers, copiers, image and/or video display devices (e.g., televisions, monitors and projectors), and audio output devices" ('402 Patent, col. 2:52-56).
  • Evidence for a Narrower Interpretation: The specification also states that "For simplicity and convenience, hereafter, the following descriptions may refer to an output device as a printer and an output process as printing," and the remainder of the disclosure is heavily focused on printing technology and printer drivers ('402 Patent, col. 2:58-60).

• The Term: "a portable wireless device being a distinct device from the sound output system" (from '072 Patent, claim 15)

• Context and Importance: This term defines the relationship between the device being set up (the sound system) and the device doing the setup. Its construction is important to determine what types of devices (e.g., a smartphone running an app, a dedicated remote control) meet this limitation. The complaint accuses the "RemoteNow App," which runs on a user's smartphone, aligning with a typical interpretation of this term (Compl. ¶35).

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself is broad, not limiting the "portable wireless device" to any particular type.
  • Evidence for a Narrower Interpretation: The specification provides specific examples, stating the portable wireless device is "at least one of a smart phone or an Internet pad with a touch sensitive screen interface" ('072 Patent, col. 44:45-47). This could be used to argue for a narrower construction limited to such devices.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement for all five patents. The allegations are based on Defendant's "product manuals, website, and/or sales and marketing activities," which allegedly instruct and encourage customers to use the Accused Products in an infringing manner (Compl. ¶36, 47, 54, 61, 68, 75).
• Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the Patents-in-Suit as of October 14, 2021, and December 29, 2021, via notice letters from Flexiworld. The complaint alleges that Hisense continued its infringing conduct despite this knowledge and "has not taken any actions to avoid the conduct alleged to infringe" (Compl. ¶¶37-38, 42).

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

• A core issue will be one of definitional scope: can the term "output device," disclosed in the '402 Patent primarily in the context of printing peripherals from the early 2000s, be construed to cover the accused modern smart TVs and soundbars? The resolution of this question through claim construction will significantly impact the applicability of the earliest patent in the portfolio.
• A key evidentiary question will be one of technical proof: can the Plaintiff, through discovery, uncover sufficient technical evidence to demonstrate that the complex, multi-step processes of the Accused Products—from device discovery and authentication to voice command processing and network communication—map onto the specific limitations of the asserted claims? The complaint's conclusory allegations set the stage for a dispute that will turn heavily on expert analysis of the actual operation of the accused systems.