Flexiworld Tech Inc v. Xerox Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Flexiworld Technologies, Inc. (Washington)
  • Defendant: Xerox Corporation (New York)
  • Plaintiff’s Counsel: The Glennon Law Firm P.C.; Nelson Bumgardner Conroy PC
• Case Identification: 6:23-cv-06370, W.D.N.Y., 06/29/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is a New York corporation and maintains a regular and established place of business within the Western District of New York, from which it allegedly commits acts of infringement.
• Core Dispute: Plaintiff alleges that Defendant’s wireless printers infringe three patents related to systems and methods for enabling printing from a client device without requiring a pre-installed, device-specific driver.
• Technical Context: The technology addresses wireless communication protocols that allow a computing device to discover a nearby printer, learn its capabilities, and send a print job formatted for that specific printer.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the patents-in-suit and the accused infringement via letters dated July 23, 2021, and October 29, 2021, which may be relevant to allegations of willful infringement and claims for damages.

Case Timeline

Date	Event
2000-11-01	Earliest Priority Date (’856 Patent)
2001-01-19	Earliest Priority Date (’181 and ’071 Patents)
2015-05-19	’181 Patent Issued
2018-11-27	’071 Patent Issued
2020-12-22	’856 Patent Issued
2021-07-23	First Pre-Suit Notice Letter Allegedly Sent
2021-10-29	Supplemental Pre-Suit Notice Letter Allegedly Sent
2023-06-29	Complaint Filing Date

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

U.S. Patent No. 10,140,071 - Printers, Printer Controllers, Printer Software, or Printer Firmware for Supporting Wireless Printing or Printing Over Air

• Patent Identification: U.S. Patent No. 10,140,071, Printers, Printer Controllers, Printer Software, or Printer Firmware for Supporting Wireless Printing or Printing Over Air, issued November 27, 2018.

The Invention Explained

• Problem Addressed: The patent’s background describes the inconvenience faced by users of mobile and pervasive computing devices who wish to print documents. Conventionally, a user must find, install, and configure a specific, device-dependent driver for each printer, a process that is particularly cumbersome for mobile users encountering unfamiliar printers. (’071 Patent, col. 2:7-34).
• The Patented Solution: The invention proposes a system where a printer and a client device (an "information apparatus") share the printing workload. The client device discovers the printer wirelessly (e.g., via IEEE 802.11), and the printer transmits its "output device profile"—data describing its capabilities, such as resolution, color space, and supported formats. (’071 Patent, Abstract; col. 26:1-24). The client device then uses this profile to generate and transmit print data specifically formatted for that printer, bypassing the need for a full, pre-installed driver. (’071 Patent, Abstract).
• Technical Importance: This approach facilitates a "walk-up-and-print" capability, which is critical for mobile computing environments where users frequently interact with new and varied peripheral devices. (’071 Patent, col. 2:7-34).

Key Claims at a Glance

• The complaint asserts independent claim 1. (Compl. ¶71).
• Claim 1 Elements:
  • A printing device with a memory component to store an "output device profile."
  • One or more wireless communication units with chips compatible with IEEE 802.11 standards.
  • The printing device uses the chips to:
    • Wirelessly broadcast its availability for discovery.
    • Wirelessly transmit at least part of its output device profile to a device that has discovered it.
    • Wirelessly receive print data that is related to the digital content and based, at least in part, on the transmitted profile.
• The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 10,873,856 - Printing Devices Supporting Printing Over Air or Printing Over A Wireless Network

• Patent Identification: U.S. Patent No. 10,873,856, Printing Devices Supporting Printing Over Air or Printing Over A Wireless Network, issued December 22, 2020.

The Invention Explained

• Problem Addressed: Similar to the ’071 Patent, the background section outlines the difficulty for mobile users to print without pre-installing dedicated drivers, which diminishes the utility of pervasive computing. (’856 Patent, col. 2:5-20).
• The Patented Solution: The invention discloses a printing device with wireless hardware (e.g., IEEE 802.11 chips) that executes a method for wireless printing. The device initiates a discovery process on a wireless network, establishes communication with a client, transmits its "device information" to that client, and then receives print data that is based on that transmitted information. (’856 Patent, Abstract). This method allows for printing over a wireless LAN without requiring a device-specific driver to be pre-installed on the client. (’856 Patent, Abstract).
• Technical Importance: This technology enables seamless, driver-agnostic printing over standard wireless networks, a key feature for modern office and mobile environments. (’856 Patent, col. 2:5-20).

Key Claims at a Glance

• The complaint asserts independent claim 17. (Compl. ¶80).
• Claim 17 Elements:
  • A printing device with a wireless communication unit, memory, one or more processors, and stored software/firmware.
  • Execution of the software/firmware performs a method comprising:
    • Initiating a wireless discovery process to allow a client to discover the printing device.
    • Establishing wireless communication with the discovered client.
    • Wirelessly transmitting device information from the printing device to the client.
    • Wirelessly receiving print data from the client, where the print data is for printing at the device.
• The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 9,036,181 - Wireless Printing Device For Printing Digital Content Received Via Wireless Communication Compatible, At Least Partly, With IEEE 802.11 or Bluetooth

• Patent Identification: U.S. Patent No. 9,036,181, Wireless Printing Device For Printing Digital Content Received Via Wireless Communication Compatible, At Least Partly, With IEEE 802.11 or Bluetooth, issued May 19, 2015. (Compl. ¶22).
• Technology Synopsis: This patent, related to the other patents-in-suit, discloses a wireless printer that can be discovered via Wi-Fi or Bluetooth. The printer solves the driver installation problem by wirelessly broadcasting its availability and, upon discovery, transmitting its "output device profile" (i.e., its capabilities) to a client device, which then sends back appropriately formatted print data.
• Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶62).
• Accused Features: The complaint accuses the general wireless printing functionalities of the Accused Products, which allow for discovery and printing over wireless networks. (Compl. ¶40).

III. The Accused Instrumentality

Product Identification

• New and refurbished versions of Xerox's AltaLink, ColorQube, VersaLink, WorkCentre, Phaser, B series, C series, and EC series wireless printers (the "Accused Products"). (Compl. ¶40).

Functionality and Market Context

• The complaint alleges that the Accused Products are wireless printers that provide functionality for printing over a network from client devices. (Compl. ¶40).
• Specific functionalities cited as relevant include support for Apple AirPrint, Xerox ConnectKey technology, and the Xerox Print and Scan Experience App, all of which allegedly enable wireless discovery and printing in a manner that infringes the patents-in-suit. (Compl. ¶11).
• The complaint suggests the commercial importance of these products by noting that Xerox demonstrates them at its "Gil Hatch Center for Customer Innovation" to market their capabilities to the public. (Compl. ¶43).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits 4-6) that were not provided with the filed complaint; therefore, the infringement theory is summarized below in prose. (Compl. ¶¶ 55, 63, 72, 81). No probative visual evidence provided in complaint.

• '071 Patent Infringement Allegations
  The complaint's narrative theory suggests that the Accused Products meet the limitations of claim 1 of the ’071 Patent. It alleges they are printing devices containing memory and IEEE 802.11-compatible wireless hardware. The complaint further alleges that through features like AirPrint, these devices broadcast their availability for discovery on a wireless network, transmit data corresponding to the claimed "output device profile" to client devices that discover them, and then receive print data formatted based on that profile. (Compl. ¶¶ 40, 71).

• '856 Patent Infringement Allegations
  The complaint alleges that the Accused Products infringe claim 17 of the ’856 Patent. The infringement theory posits that the Accused Products contain processors, memory, and wireless hardware that execute software to perform the claimed printing method. This method allegedly includes initiating a discovery process on a wireless network, establishing communication with a client device, transmitting "device information" to that client, and subsequently receiving print data from the client for printing. (Compl. ¶¶ 40, 80).

• Identified Points of Contention:

  • Scope Questions: A central question for the court may be whether the data packets transmitted by the Accused Products during network discovery and setup (e.g., via standard protocols like Bonjour for AirPrint) constitute an "output device profile" or "device information" as those terms are defined and used within the patent specifications. The analysis may depend on the level of technical detail (e.g., resolution, color space, format support) contained in the transmitted data.
  • Technical Questions: A potential point of contention is whether the network discovery functions of the Accused Products perform the specific step of "wirelessly broadcast[ing] availability" or "initiating a discovery process" as claimed. The dispute may focus on whether the use of standardized, passive service announcements by the Accused Products is functionally the same as the potentially more active discovery process described in the patents.

V. Key Claim Terms for Construction

• The Term: "output device profile" / "device information"

• Context and Importance: This term is central to the dispute, as infringement depends on whether the data transmitted from the Accused Products to client devices falls within its scope. Practitioners may focus on this term because its construction will determine whether standard network communication packets, which may contain basic device identification, meet the potentially more detailed requirements laid out in the patent specifications.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification provides a high-level definition, stating the profile may include "capability, compatibility, identification, and service provided by the output device." (’071 Patent, col. 26:50-59). This language could support a construction that covers a wide range of informational data.
  • Evidence for a Narrower Interpretation: The specification also provides a detailed, exemplary list of what the profile may contain, including "device specific or dependent parameters" like "color space, color management methods and rendering intents, resolution, halftoning methods, dpi," as well as "Data and tables needed for image processing such as color table, halftone table." (’071 Patent, col. 26:11-24). This detailed enumeration could support a narrower construction requiring more than just basic device identification.

• The Term: "wirelessly broadcast availability" / "initiating a discovery process"

• Context and Importance: This phrase defines the initial step of the patented method. The infringement analysis will turn on whether the network presence announcements made by the Accused Products (e.g., via standard protocols) are equivalent to this claimed step.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the outcome functionally, stating that the process allows a client to "search for available output devices." (’071 Patent, col. 29:13-14). This could be interpreted to encompass any mechanism that makes a printer discoverable on a network.
  • Evidence for a Narrower Interpretation: The specification describes an exemplary discovery process where an "information apparatus ... multi-casting or broadcasting or advertising its service requests and waiting for available output devices 220 to respond." (’071 Patent, col. 31:32-36). This language, which puts the initial action on the client device, may support a narrower construction that is distinct from a printer passively announcing its own services.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Xerox induces infringement by providing customers with product manuals, support websites, and instructional videos that instruct and encourage the use of the accused wireless printing features. (Compl. ¶¶ 45, 64, 73, 82).
• Willful Infringement: The complaint alleges willful infringement based on Xerox's alleged knowledge of the patents-in-suit since at least July 23, 2021, via pre-suit notice letters. It is alleged that Xerox failed to investigate the infringement claims or seek a license, thereby acting with deliberate disregard for Flexiworld's patent rights. (Compl. ¶¶ 46-47, 50, 52).

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

• A core issue will be one of definitional scope: can the term "output device profile," which is described in the patents with detailed technical examples like color tables and halftoning methods, be construed to cover the standardized data packets exchanged by the Accused Products during network service discovery?
• A key evidentiary question will be one of technical operation: does the mechanism by which the Accused Products become discoverable on a network (e.g., using standard protocols like Bonjour) constitute the specific act of "broadcast[ing] availability" or "initiating a discovery process" as claimed, or is there a fundamental mismatch in how the patented and accused systems operate?
• A third question will relate to damages and willfulness: assuming infringement is found, the court will need to determine when Xerox's alleged knowledge began, based on the 2021 notice letters, and whether its subsequent actions or inactions rise to the level of willful, wanton, or egregious conduct justifying enhanced damages.