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-06371, W.D.N.Y., 06/29/2023
• Venue Allegations: Venue is alleged to be proper in the Western District of New York because Defendant Xerox is a New York corporation and maintains a regular and established place of business in Webster, New York, within the district.
• Core Dispute: Plaintiff alleges that Defendant’s wireless printers and associated mobile printing applications infringe three U.S. patents related to wireless device connectivity and network printing.
• Technical Context: The technology at issue addresses methods for simplifying the process of printing from mobile devices to peripheral devices, a key function in modern mobile and enterprise computing environments.
• Key Procedural History: The complaint states that Plaintiff provided Defendant with notice of the patents-in-suit and the accused products via letters dated July 23, 2021, and October 29, 2021, nearly two years prior to filing suit, which may be relevant to allegations of willful infringement and claims for pre-suit damages.

Case Timeline

Date	Event
2000-11-01	Earliest Priority Date for ’073, ’846, and ’791 Patents
2018-11-27	U.S. Patent No. 10,140,073 Issues
2019-11-19	U.S. Patent No. 10,481,846 Issues
2020-09-01	U.S. Patent No. 10,761,791 Issues
2021-07-23	Plaintiff sends first notice letter to Defendant
2021-10-29	Plaintiff sends supplemental notice letter to Defendant
2023-06-29	Complaint Filed

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

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"

• 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 November 27, 2018 (Compl. ¶22).

The Invention Explained

• Problem Addressed: The patent's background section describes the difficulty mobile device users face when attempting to output content to a nearby peripheral, such as a printer, due to the conventional requirement of installing a device-specific driver for each new output device encountered (’073 Patent, col. 2:7-24, col. 3:20-44). This installation process is described as complex and a barrier to convenient mobile computing (’073 Patent, col. 3:5-11).
• The Patented Solution: The invention proposes a method to simplify this connection process. A wireless device (e.g., a printer) and a mobile apparatus (e.g., a smartphone) are brought into close physical proximity, which triggers a short-range wireless detection. During this initial detection, the devices exchange necessary information to facilitate subsequent, more persistent wireless connections (such as Bluetooth or Wi-Fi) without needing to repeat the proximity-based setup. (’073 Patent, Abstract).
• Technical Importance: This approach sought to eliminate the need for manual driver installation and complex network configuration, thereby enabling seamless "walk-up" printing and other interactions between mobile and peripheral devices. (’073 Patent, col. 2:14-24).

Key Claims at a Glance

• The complaint asserts independent claim 8 (Compl. ¶64).
• Essential Elements of Claim 8:
  • A wireless device for establishing a wireless connection with a mobile information apparatus, comprising wireless communication circuitry and memory.
  • The wireless device uses its circuitry to wirelessly detect the mobile apparatus based at least in part on physical proximity.
  • The wireless device then wirelessly transmits its device information to the mobile apparatus.
  • The wireless device then wirelessly receives a service or connection request from the mobile apparatus.
  • In response, the wireless device wirelessly establishes a communication link with the mobile apparatus.
  • Finally, the wireless device wirelessly receives data or information from the mobile apparatus via the established link.

U.S. Patent No. 10,481,846 - "Software applications and information apparatus for printing over air or for printing over a network"

• Patent Identification: U.S. Patent No. 10,481,846, "Software applications and information apparatus for printing over air or for printing over a network," issued November 19, 2019 (Compl. ¶27).

The Invention Explained

• Problem Addressed: The patent addresses the challenge of printing from mobile devices that have limited memory, processing power, and battery life, making it difficult for them to perform the computationally intensive Raster Image Processing (RIP) operations required by conventional, driver-based printing workflows (’846 Patent, col. 4:50-63).
• The Patented Solution: The invention describes a non-transitory medium containing a software program for an information apparatus. The software allows the apparatus to discover a printer on a local network, receive a "device profile" describing the printer's capabilities (e.g., color support, resolution), generate print data based on that profile, and transmit the formatted data to the printer. This system enables printing from various applications without requiring a pre-installed, printer-specific driver. (’846 Patent, Abstract; col. 26:1-17).
• Technical Importance: The technology provides a framework for driverless network printing from resource-constrained mobile devices, a concept foundational to modern mobile printing standards. (’846 Patent, col. 2:4-13).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶73).
• Essential Elements of Claim 1:
  • A non-transitory computer-readable recording medium with a software program for an information apparatus that has processors, a network interface, and an operating system.
  • The program, when executed, performs a printing method that includes:
    • Obtaining digital content for printing.
    • Discovering a printer available on the local area network.
    • Receiving a device profile from the discovered printer.
    • Generating print data from the digital content, based at least in part on the received device profile.
    • Transmitting the generated print data to the printer.

U.S. Patent No. 10,761,791 - "Wireless printing devices that provide printing services over a network without a need for a client device of the printing device to use, at the client device, a printer specific printer driver"

• Patent Identification: U.S. Patent No. 10,761,791, "Wireless printing devices that provide printing services over a network without a need for a client device of the printing device to use, at the client device, a printer specific printer driver," issued September 1, 2020 (Compl. ¶32).
• Technology Synopsis: This patent describes a wireless printing device that registers itself with a service over a network (e.g., the internet). This registration enables client devices to discover and print to the device through the network service, removing the need for the client device to have a printer-specific driver. The printing device itself is configured to receive security information, such as Wi-Fi credentials, through an interface to connect to the local network. (’791 Patent, Abstract).
• Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶84).
• Accused Features: The accused features are the Xerox wireless printers, which allegedly provide printing services over a network to client devices without requiring those clients to use a printer-specific driver (Compl. ¶¶40, 84).

III. The Accused Instrumentality

Product Identification

• The complaint identifies two main categories of accused products: "the Accused Wireless Printers" (including Xerox's AltaLink, ColorQube, VersaLink, WorkCentre, Phaser, B, C, and EC series) and "the Accused Xerox Apps" (including Xerox Print and Scan Experience, Xerox Print Service Plug-in for Android, and Xerox Workplace apps) (Compl. ¶¶40-41).

Functionality and Market Context

• The complaint alleges the accused printers and apps operate as a system to enable printing from mobile devices over wireless networks (Compl. ¶¶40-41). It specifically references Xerox's marketing of functionalities like Apple AirPrint and ConnectKey as implementing the infringing technology (Compl. ¶11). These features are designed to allow users to print from smartphones and other mobile devices without the need to manually install dedicated drivers, a functionality alleged to be central to the infringing conduct. The complaint also notes that Xerox demonstrates these products at customer experience centers, suggesting their commercial importance (Compl. ¶45).

IV. Analysis of Infringement Allegations

The complaint references exemplary claim charts attached as Exhibits 4, 5, and 6 but does not provide them in the filing; therefore, the narrative infringement theories are summarized below (Compl. ¶57).

• ’073 Patent Infringement Allegations
  The complaint alleges that the Accused Wireless Printers directly infringe at least claim 8 of the ’073 Patent (Compl. ¶64). The narrative infringement theory suggests that these printers perform the claimed method of establishing a connection when a user initiates a connection from a mobile device. This process is alleged to involve the printer wirelessly detecting the mobile device based on its physical proximity, transmitting device information to it, receiving a connection request, establishing a wireless link, and subsequently receiving print data over that link (Compl. ¶¶64-66).

• ’846 Patent Infringement Allegations
  The complaint alleges that the Accused Xerox Apps, as provided on non-transitory computer-readable media, directly infringe at least claim 1 of the ’846 Patent (Compl. ¶73). The narrative theory is that when a user executes one of the accused apps on a mobile device to print a document, the app performs the claimed method. This allegedly includes discovering a compatible Xerox printer on the local network, receiving a device profile describing the printer’s capabilities, using that profile to generate properly formatted print data, and transmitting that data to the printer for printing (Compl. ¶¶73-75).

• Identified Points of Contention:

  • Scope Questions: For the ’073 Patent, a central question may be whether standard wireless protocols like Wi-Fi Direct, which the accused printers use, satisfy the claim limitation "wirelessly detecting... based, at least in part, on physical proximity." The dispute may focus on whether this requires a specific proximity-gated technology or if discovery based on radio signal strength is sufficient. For the ’846 and ’791 patents, a key question will be the scope of "without a need for... a printer specific printer driver," as the accused systems may rely on generic drivers or print services provided by the mobile operating system.
  • Technical Questions: For the ’846 Patent, an evidentiary question may arise regarding the "generating print data" step. The analysis will likely examine whether the Accused Xerox Apps perform the substantive data conversion and formatting themselves or whether they primarily act as a conduit, passing high-level content to the mobile operating system's built-in printing framework for processing.

V. Key Claim Terms for Construction

• The Term: "wirelessly detecting... based, at least in part, on physical proximity" (from claim 8 of the ’073 Patent)

• Context and Importance: The definition of this term is critical for the ’073 Patent, as it defines the triggering event for the claimed connection method. Practitioners may focus on this term because the infringement allegation appears to depend on whether standard Wi-Fi or Bluetooth discovery, where signal strength is a proxy for distance, meets a limitation that the patent frames as a distinct, proximity-based setup action.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent abstract describes the invention as one where devices "are simply placed within physical proximity of each other for short range wireless detection," which could support a broad reading where any short-range radio detection satisfies the element (’073 Patent, Abstract).
  • Evidence for a Narrower Interpretation: The specification distinguishes this proximity detection as a preliminary step to "facilitate future wireless connections," suggesting it may be a distinct, one-time setup event rather than a continuous, general discovery process (’073 Patent, Abstract). This could support an argument that the term requires a more specific user-initiated action than routine network scanning.

• The Term: "generating... print data... based, at least in part, on the device profile" (from claim 1 of the ’846 Patent)

• Context and Importance: This term is central to the ’846 Patent's infringement theory, as it connects the information received from the printer to the creation of the final print job. The dispute may turn on the degree of processing the accused app itself must perform to be considered "generating" the data.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language "based, at least in part, on" could be interpreted broadly, potentially covering a scenario where the app uses the device profile merely to select a pre-existing printing pathway within the mobile operating system (’846 Patent, col. 44:20-22).
  • Evidence for a Narrower Interpretation: The specification describes a "client application" that contains a "rasterization component" and an "intermediate output data generator" (’846 Patent, col. 15:17-24; Fig. 3A). This could support a narrower construction requiring the accused application itself to perform substantive data rasterization and formatting, rather than delegating those tasks to the operating system.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement for all three patents, asserting that Xerox encourages its customers to use the Accused Products in an infringing manner by providing instructional materials, user manuals, and marketing on its website (Compl. ¶¶66, 75, 86). For the ’846 Patent, the complaint also alleges contributory infringement, stating that the Accused Xerox Apps are not staple articles of commerce suitable for substantial non-infringing use and are especially adapted for infringing the patent (Compl. ¶¶79-80).
• Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the patents-in-suit. The complaint cites notice letters sent to Xerox on July 23, 2021, and October 29, 2021, which allegedly identified the asserted patents and accused products (Compl. ¶48). The complaint alleges that Xerox continued its infringing activities despite receiving this notice, justifying a finding of willful infringement (Compl. ¶¶49, 54).

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

• A core issue will be one of technological equivalence: does the functionality of modern, standardized wireless protocols like Wi-Fi Direct and Bluetooth for device discovery and connection map onto the specific, proximity-based setup method described and claimed in the ’073 Patent, which has a priority date from the year 2000?
• A key evidentiary question will be one of functional attribution: in the accused system, which entity—the Accused Xerox App or the underlying mobile operating system—performs the critical step of "generating" the final print data? The outcome may depend on whether the app's role in orchestrating the process is sufficient to meet the claim limitations of the ’846 Patent.
• A central dispute concerning damages will likely be causation and willfulness: given Xerox was allegedly put on notice of the specific patents-in-suit nearly two years before the complaint was filed, the case will likely examine not only whether infringement occurred but whether the conduct was egregious, and what portion of revenue from a broad portfolio of printers and apps can be reasonably attributed to the specific patented features.

No probative visual evidence provided in complaint.