Flexiworld Tech Inc v. Lexmark Intl

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Flexiworld Technologies, Inc. (Washington)
  • Defendant: Lexmark International, Inc. (Delaware)
  • Plaintiff’s Counsel: Francis Law Firm PLLC; Nelson Bumgardner Conroy PC
• Case Identification: 5:22-cv-00107, E.D. Ky., 04/29/2022
• Venue Allegations: Venue is alleged to be proper in the Eastern District of Kentucky because Defendant Lexmark maintains a permanent physical presence and regular and established place of business within the district.
• Core Dispute: Plaintiff alleges that Defendant’s wireless printers and associated mobile applications infringe four patents related to wireless device discovery and connectivity for output devices.
• Technical Context: The technology concerns methods and systems that allow mobile computing devices to discover, connect to, and use output devices like printers without requiring pre-installed, device-specific drivers.
• Key Procedural History: The complaint alleges Defendant has been aware of Plaintiff's technology since at least April 2002. It further alleges that Plaintiff sent Defendant a notice letter on July 23, 2021, identifying three of the four patents-in-suit and the accused products.

Case Timeline

Date	Event
2000-11-01	Earliest Priority Date for all Patents-in-Suit
2002-04-18	Article published allegedly making Defendant aware of Plaintiff's technology
2018-07-31	U.S. Patent No. 10,037,178 Issues
2020-09-08	U.S. Patent No. 10,768,871 Issues
2020-11-17	U.S. Patent No. 10,841,798 Issues
2021-07-23	Plaintiff sends notice letter to Defendant regarding the ’178, ’871, and ’798 Patents
2021-08-17	U.S. Patent No. 11,096,056 Issues
2022-04-29	Complaint Filed

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

U.S. Patent No. 10,037,178 - “Wireless output devices or wireless controllers that support wireless device discovery for establishing wireless connectivity”

The Invention Explained

• Problem Addressed: The patent's background describes the inconvenience faced by users of mobile computing devices who wish to print or output content. Conventionally, this requires installing a device-specific driver for each output device (e.g., a printer), a process that is cumbersome and impractical for mobile users who encounter various output devices in different locations (Compl. ¶20; ’178 Patent, col. 2:24-62).
• The Patented Solution: The invention proposes a system where an information apparatus (e.g., a smartphone) can perform a "wireless device discovery" to find a nearby output device. Upon discovery, the output device transmits its identification and capability information to the information apparatus, which then allows for the establishment of a wireless connection and subsequent output of digital content, circumventing the need for a pre-installed dedicated driver (’178 Patent, Abstract; ’178 Patent, FIG. 11).
• Technical Importance: This technology aimed to enable "walk-up" or pervasive printing from mobile devices, a significant step in making mobile computing more functional in environments like airports, offices, or public kiosks (’178 Patent, col. 2:9-24).

Key Claims at a Glance

• The complaint asserts claim 7, which depends on independent claim 1 (Compl. ¶62). The complaint reserves the right to assert additional claims.
• Independent Claim 1 of the ’178 Patent recites the essential elements of a method for an output device:
  • Facilitating a wireless device discovery operation for the output device to be wirelessly discoverable by a client.
  • Transmitting attribute or identification information from the output device to the client.
  • Implementing a security or authentication procedure.
  • Establishing a wireless communication link compatible with IEEE 802.11 or Bluetooth standards.
  • Receiving output data from the client over the established wireless link.

U.S. Patent No. 10,768,871 - “Wireless output devices or wireless controllers for establishing wireless connectivity and for receiving digital content”

The Invention Explained

• Problem Addressed: Similar to its parent patent, the ’871 Patent addresses the challenge of connecting pervasive computing devices to output devices without the hassle of installing dedicated, device-dependent drivers (’871 Patent, col. 2:1-65).
• The Patented Solution: The invention is an output device apparatus that supports wireless discovery. After being discovered by a client device and establishing a secure wireless connection, the output device receives digital content (such as audio or video) from the client for output or playback. The focus is on the complete sequence from discovery to content receipt and rendering (’871 Patent, Abstract; ’871 Patent, FIG. 10).
• Technical Importance: The claimed solution provides a complete system for an output device to not only connect seamlessly but also to receive and render content, which is fundamental to modern wireless multimedia and document output from mobile sources (’871 Patent, col. 2:3-10).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶71). The complaint reserves the right to assert additional claims.
• Independent Claim 1 of the ’871 Patent recites the essential elements of a wireless output device:
  • Communication circuitry compatible with protocols like Bluetooth or IEEE 802.11.
  • Memory storing attribute or identification information for the device.
  • The device is operable to perform a sequence of functions: facilitate discovery, transmit its identifying information, implement a security procedure, establish a link, receive output data, and output or play the data.

U.S. Patent No. 10,841,798 - “Information apparatus or client software that wirelessly discovers, within short range, one or more output devices for establishing a wireless connection”

Technology Synopsis

This patent addresses the same technical problem of driverless printing from the perspective of the client device (e.g., a smartphone) (’798 Patent, col. 2:20-65). The invention describes client software that performs a short-range wireless discovery of available output devices, receives information from them, and determines if a discovered device matches the requirements for the output job before establishing a connection (’798 Patent, Abstract).

Asserted Claims

Independent claim 1 is asserted (Compl. ¶80).

Accused Features

The accused instrumentalities for this patent are Defendant’s mobile applications, including the Lexmark Mobile Print App and Mobile Assistant App (Compl. ¶44, ¶80).

U.S. Patent No. 11,096,056 - “Output devices, such as televisions, output controllers, or audio output devices, that are setup to wirelessly receive digital content from a digital content service over the internet or from a wireless information apparatus that is in the same network as the output devices”

Technology Synopsis

This patent describes an output device that connects to a wireless network, receives security information via an interface to establish the connection, and is then able to connect to a server to download and install software applications that upgrade its own capabilities (’056 Patent, col. 2:1-49). After this setup, the device is able to receive digital content for output from either an internet service or a local wireless device (’056 Patent, Abstract).

Asserted Claims

Independent claim 1 is asserted (Compl. ¶89).

Accused Features

The accused instrumentalities are Defendant’s wireless printers, including the Lexmark Go Line series (Compl. ¶43, ¶89).

III. The Accused Instrumentality

Product Identification

The complaint identifies two categories of accused instrumentalities: "the Accused Wireless Printers," which include but are not limited to Lexmark's Go Line series of printers, and "the Accused Lexmark Apps," which include the Lexmark Mobile Print App and Mobile Assistant App (Compl. ¶43-44).

Functionality and Market Context

The complaint alleges that the Accused Lexmark Apps, when installed on a mobile device, enable the device to wirelessly discover and connect to the Accused Wireless Printers to print documents (Compl. ¶44-46). This combination of hardware and software allegedly allows users to print from mobile devices without the conventional need to install a specific printer driver on a stationary computer. The complaint alleges these products are made, used, sold, and offered for sale in the United States (Compl. ¶43-45). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references exemplary claim charts attached as Exhibits 5 and 6 but does not include them in the provided document. The infringement theory is therefore summarized in prose based on the narrative allegations.

• ’178 Patent Infringement Allegations: The complaint alleges that the Accused Wireless Printers directly infringe, and induce customers to infringe, at least claim 7 of the ’178 Patent (Compl. ¶62, ¶64). The asserted infringement theory is that the printers, in operation with the Accused Lexmark Apps, perform the claimed method by facilitating wireless device discovery, transmitting their identity to a mobile device, engaging in a security procedure to establish a wireless connection, and subsequently receiving output data from the mobile device for printing (Compl. ¶62-67).
• ’871 Patent Infringement Allegations: The complaint alleges that the Accused Wireless Printers are an apparatus that directly infringes, and induces customers to infringe, at least claim 1 of the ’871 Patent (Compl. ¶71, ¶73). The theory is that the printers contain the claimed communication circuitry and memory and are operable to be discovered wirelessly, transmit their identifying information, establish a secure connection, receive digital content from a mobile device running an Accused Lexmark App, and then output that content by printing it (Compl. ¶71-76).
• Identified Points of Contention:
  • Scope Questions: A potential area of dispute may be the scope of "facilitating . . . a wireless device discovery operation" (’178 Patent, col. 43:10-12). The court may need to determine if this language covers the specific discovery protocols (e.g., Bonjour, Wi-Fi Direct) allegedly used by the accused products, or if the patent's specification limits it to a narrower set of discovery methods.
  • Technical Questions: A factual question for the court will be what specific "attribute or identification information" is transmitted from the accused printers to the accused apps, and whether that information is sufficient to meet the claim limitation (’178 Patent, col. 43:13-17). The complaint does not provide sufficient detail for analysis of the specific data packet content.

V. Key Claim Terms for Construction

• The Term: "wireless device discovery operation" (’178 Patent, cl. 1; ’871 Patent, cl. 1).

• Context and Importance: This term defines the initial step of the claimed invention. The infringement analysis for all asserted patents hinges on whether the protocol used by the Accused Products to locate each other falls within the scope of this term.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The Abstract states that discovery operations "may be based on one or more of a close proximity wireless communication, a Bluetooth wireless communication, or a wireless communication compatible with a protocol within IEEE 802.11 standards" (’178 Patent, Abstract). This language may support a construction covering a wide range of standard and proprietary discovery methods.
  • Evidence for a Narrower Interpretation: The detailed description includes a flowchart where an "information apparatus searches for output devices" (’178 Patent, FIG. 11, step 1101). A party could argue this requires an active search initiated by the client device, potentially excluding systems where the output device passively advertises its presence.

• The Term: "attribute or identification information" (’178 Patent, cl. 1; ’871 Patent, cl. 1).

• Context and Importance: This information is the key that unlocks the driverless connection. The definition of what constitutes sufficient "information" will be central to whether the accused system infringes.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification provides an extensive, non-limiting list of what this information may contain, including brand, model, services, input formats, communication protocols, and color profiles (’178 Patent, col. 9:5-col. 10:52). This could support a broad reading that covers nearly any data packet identifying the printer and its basic capabilities.
  • Evidence for a Narrower Interpretation: A party might argue that the term, in the context of the entire specification, requires the transmission of a structured "output device profile" or "object" rather than just basic network identifiers (’178 Patent, col. 9:28-36). The dispute may focus on whether a simple device name and IP address, for example, is sufficient to meet this limitation.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant provides product manuals, websites, and customer support that instruct and encourage customers to use the Accused Wireless Printers and Accused Lexmark Apps together in a manner that directly infringes the patents-in-suit (Compl. ¶46, ¶67, ¶76, ¶85, ¶94).
• Willful Infringement: Willfulness is alleged based on Defendant’s alleged knowledge of the patents. Plaintiff claims this knowledge arises from at least two events: (1) an April 2002 article in which a Lexmark manager allegedly commented on Plaintiff's technology, long before the patents issued (Compl. ¶47-48); and (2) a July 23, 2021 notice letter that expressly identified three of the patents-in-suit and the accused products (Compl. ¶50). The complaint alleges that Defendant's failure to respond to the notice letter or cease infringing conduct constitutes willful infringement (Compl. ¶51, ¶54).

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

• A core issue will be one of technical evidence: Does the specific communication protocol used between the Accused Lexmark Apps and the Accused Wireless Printers for device discovery, capability exchange, and connection establishment perform the sequence of steps required by the asserted claims? The complaint's high-level allegations will necessitate detailed technical discovery to determine the actual mode of operation.
• A second central issue will be one of claim construction: Can the term "wireless device discovery operation," as described in patents with a 2000 priority date, be construed to cover the specific, potentially more modern, network discovery protocols allegedly implemented in the accused products? The outcome will likely depend on whether the court adopts a broad, functional definition or a narrower one tied to the specific embodiments disclosed in the patent.
• A key factual question for willfulness will be notice: Can Plaintiff establish that a 2002 article discussing its general "concept" provided Defendant with the requisite knowledge of specific patents that issued more than 15 years later, or will the willfulness analysis be confined to conduct occurring after the 2021 notice letter?