DCT
1:18-cv-00837
Ortiz & Associates Consulting LLC v. HP Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ortiz & Associates Consulting, LLC (New Mexico)
- Defendant: HP Inc. (Delaware)
- Plaintiff’s Counsel: Rabicoff Law LLC
- Case Identification: 1:18-cv-00837, N.D. Ill., 02/01/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of patent infringement in the district and maintains a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s HP ePrint mobile printing service infringes a patent related to systems for brokering data between a wireless device and a data rendering device, such as a printer.
- Technical Context: The technology at issue facilitates secure printing from mobile devices by enabling users to locate nearby network-connected printers and retrieve print jobs using a passcode.
- Key Procedural History: The asserted patent claims priority back to a provisional application filed in June 2000, indicating a long prosecution history.
Case Timeline
| Date | Event |
|---|---|
| 2000-06-27 | Priority Date for U.S. Patent No. 9,380,414 |
| 2016-06-28 | U.S. Patent No. 9,380,414 Issued |
| 2018-02-01 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,380,414 - “Systems, Methods and Apparatuses for Brokering Data Between Wireless Devices, Servers and Data Rendering Devices”
The Invention Explained
- Problem Addressed: The patent describes a technological environment where users of handheld wireless devices were limited by small screens and had difficulty accessing "rendering resources" like printers to make use of data retrieved through networks (Compl. ¶11; ’414 Patent, col. 4:25-30).
- The Patented Solution: The invention provides a method where a wireless device (WD) user can locate a data rendering device (DRD), such as a networked printer, based on the WD’s geographic location. The user can then select the DRD, send data to it for rendering, and securely retrieve the output (e.g., a printout) by providing a passcode at the DRD, which is verified before the final data is rendered (’414 Patent, Abstract; col. 13:3-28). The system architecture involves the WD, a network, and the DRD working in concert to manage the transaction (’414 Patent, Fig. 1).
- Technical Importance: The technology aimed to satisfy the growing need for "portability" and "information on the go" by enabling seamless and secure interaction between mobile devices and fixed output devices like printers (’414 Patent, col. 4:30-34).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶12).
- The essential elements of independent claim 1, a method claim, include:
- Identifying data on a wireless device (WD) to be rendered at a data rendering device (DRD).
- Sending a "DRD locator request" from the WD over a network to find a DRD near the WD, using the WD's GPS-determined location.
- Receiving location and capability information for the nearby DRD.
- Selecting a DRD based on this information.
- Sending the data for rendering by the selected DRD.
- Receiving a passcode to provide to the DRD once it is "physically located."
- Providing the passcode to the DRD via a user interface on the WD while the WD is in "wireless communication with said DRD."
- The DRD retrieving and rendering the data only after the user-entered passcode is verified by the DRD.
(’414 Patent, col. 13:3-28).
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is HP's ePrint service, which includes an application and associated cloud-based infrastructure (Compl. ¶12).
Functionality and Market Context
- HP ePrint is described as a "cloud-based service" that permits users to send documents or photos from a mobile device to an HP ePrint-enabled printer from any location with an internet connection (Compl. ¶12).
- The service includes a feature allowing users to locate and select from a list of "HP Public Print locations" (Compl. ¶14). A screenshot provided in the complaint shows a list of nearby printers with their respective distances. (Figure 3, Compl. ¶14).
- The complaint alleges that the system requires user authentication at the printer, such as entering a personal identification number (PIN) or code, to retrieve a secure print job (Compl. ¶18).
- The complaint characterizes HP ePrint as "the most mature mobile printing solution," suggesting significant market presence (Compl. p. 4).
IV. Analysis of Infringement Allegations
’414 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| identifying data through a WD to render at a DRD | HP's ePrint app allows a user to choose a file or photo to print from their device. (Figure 2, Compl. ¶13). | ¶13 | col. 13:3-4 |
| providing a DRD locator request from the WD through a wireless communications network to a network resource to find at least one DRD located near the WD... | HP's ePrint allows users to find and choose an HP Print-enabled printer from a list of public locations. (Figure 3, Compl. ¶14). | ¶14 | col. 13:5-11 |
| receiving location information and rendering capabilities through the wireless communications network for at least one DRD located near the WD | The ePrint app displays a list of available devices for the user to see. (Figure 4, Compl. ¶15). | ¶15 | col. 13:12-15 |
| selecting a DRD from discovery... based on location information... and identifying data for said DRD | The ePrint app allows users to select a printer and access documents from the cloud for printing. (Figure 5, Compl. ¶16). | ¶16 | col. 13:16-19 |
| send the data for rendering by said DRD | After selecting a printer, the user confirms the print job, which sends the data for rendering. (Figure 6, Compl. ¶17). | ¶17 | col. 13:20-21 |
| receiving a passcode to provide to said DRD once said DRD is physically located | The complaint alleges HP's ePrint requires users to enter a personal identification number (PIN) or personal identification code (PIC) to retrieve a print job. | ¶18 | col. 13:22-24 |
| providing the passcode to said DRD... at a user interface on the WD while the WD is in wireless communication with said DRD | The complaint alleges the user enters the passcode at an interface while the WD is in wireless communication with the DRD. (Figure 8, Compl. ¶19). | ¶19 | col. 13:25-28 |
| wherein said DRD retrieves said data and renders said data after the passcode entered by said user is verified by said DRD | The complaint alleges that after authentication, the user retrieves the print job. A diagram shows the user retrieving the job after authentication. (Figure 8, Compl. ¶20). | ¶20 | col. 13:29-32 |
- Identified Points of Contention:
- Scope Questions: Claim 1 requires "providing the passcode to said DRD... while the WD is in wireless communication with said DRD." A potential dispute is whether this requires a direct, local wireless link (e.g., Bluetooth, Wi-Fi Direct) between the mobile device and the printer, or if it can be satisfied by both devices being connected to a common wide-area network like the internet, as is typical in a cloud printing service.
- Technical Questions: The claim states the "DRD retrieves said data and renders said data after the passcode... is verified by said DRD." This raises the evidentiary question of which component in HP's system performs the verification and data retrieval steps. The complaint’s own visual evidence depicts a "secure server" in the workflow, which suggests a cloud server, rather than the printer itself, may be managing authentication and queuing the job, potentially creating a mismatch with the claim's requirements. (Figure 8, Compl. ¶19).
V. Key Claim Terms for Construction
The Term: "while the WD is in wireless communication with said DRD"
Context and Importance: This phrase is central to the infringement analysis for the passcode step. Its construction will determine whether a cloud-based architecture, where the WD and DRD may only communicate indirectly via the internet, can meet the limitation. Practitioners may focus on this term because it could be interpreted to require a direct, contemporaneous link between the user's phone and the printer during authentication.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification states that data brokering can be accomplished "indirectly via networks 12 through the use of known networking and data formatting protocols," which may support an interpretation that does not require a direct, local link (’414 Patent, col. 7:2-4).
- Evidence for a Narrower Interpretation: The specification also explicitly discusses direct, local communication "including infrared (IR) or radio frequency (RF) technology" and states a WD can provide commands to a DRD "through IR and RF means," which could be used to argue for a more limited, direct-communication requirement (’414 Patent, col. 7:1-3; col. 8:7-8).
The Term: "said DRD retrieves said data... after the passcode... is verified by said DRD"
Context and Importance: This limitation defines the sequence of events and the actor (the DRD) for the final, secure rendering step. Infringement may turn on whether the physical HP printer itself performs these actions in this order, or if a cloud server is the primary actor.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent defines a DRD as including "data rendering hardware (e.g., printers...)" and software, which could be argued to encompass a printer acting as an endpoint in a larger, server-managed system (’414 Patent, col. 6:51-54).
- Evidence for a Narrower Interpretation: The patent describes the DRD as having its own "authorization module 21" that "approves receipt of rendering data," suggesting the DRD is an intelligent device performing these steps itself, rather than a passive endpoint controlled by a server (’414 Patent, col. 7:39-44).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that HP intended for customers to use its products in an infringing manner by "providing access to support for, training and instructions for, its system" (Compl. ¶21).
- Willful Infringement: The complaint does not include a specific count for willful infringement, but the prayer for relief requests an award of "damages, including trebling of all damages, sufficient to remedy HP’s willful infringement" (Compl. Prayer for Relief ¶D).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may hinge on two central questions:
A key question of system architecture will be whether HP's cloud-based printing model, which relies heavily on a central server for authentication and job management, can be mapped onto the claim limitations. The court may need to determine which entity—the physical printer or the HP cloud server—is the "DRD" that performs the claimed steps of verifying a passcode and retrieving data for rendering.
A core issue will be one of definitional scope: can the phrase "in wireless communication with said DRD," recited in the context of providing a passcode, be construed to cover an indirect connection over the internet, or does the intrinsic evidence limit its meaning to a direct, local wireless link between the user's mobile device and the printer?