DCT

6:23-cv-06372

Flexiworld Tech Inc v. Xerox Corp

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:23-cv-06372, W.D.N.Y., 06/29/2023
  • Venue Allegations: Plaintiff alleges venue is 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, from which it allegedly commits acts of infringement.
  • Core Dispute: Plaintiff alleges that Defendant’s wireless printers and associated mobile printing applications infringe four patents related to wireless device discovery and establishing wireless connectivity with output devices.
  • Technical Context: The technology at issue concerns methods for enabling mobile computing devices to discover, identify, and transmit content to nearby output peripherals, such as printers, without requiring pre-installed, device-specific drivers.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of infringement via letters sent on July 23, 2021, and October 29, 2021, identifying the patents-in-suit and the accused products.

Case Timeline

Date Event
2000-11-01 Priority Date for ’178 and ’871 Patents
2018-07-31 U.S. Patent No. 10,037,178 Issues
2018-11-26 Application Filing Date for ’798 Patent
2019-08-30 Application Filing Date for ’056 Patent
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 first notice letter to Defendant
2021-08-17 U.S. Patent No. 11,096,056 Issues
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. 10,037,178 - "Wireless output devices or wireless controllers that support wireless device discovery for establishing wireless connectivity" (Issued July 31, 2018)

The Invention Explained

  • Problem Addressed: The patent’s background section describes the impracticality for users of mobile computing devices to print or output content to nearby peripherals, as this conventionally required pre-installing a specific driver for each output device model, a process ill-suited for a mobile environment where users encounter various unfamiliar devices. (’178 Patent, col. 2:3-23).
  • The Patented Solution: The invention discloses an output device or controller that performs a wireless discovery process to connect with a client device (termed an "information apparatus"). Upon being discovered, the output device provides its identification information to the client, which then allows a wireless connection to be established for receiving digital content. (’178 Patent, Abstract; Fig. 11). This process is described as being compatible with standards like Bluetooth and IEEE 802.11. (’178 Patent, Abstract).
  • Technical Importance: The technology aimed to create a universal and pervasive output method, eliminating the need for device-dependent drivers and thereby simplifying the interaction between mobile devices and peripherals. (’178 Patent, col. 1:26-33).

Key Claims at a Glance

  • The complaint asserts independent claim 7. (Compl. ¶69).
  • Claim 7 of the ’178 Patent recites a wireless controller for an output device comprising:
    • An antenna for transmitting radio frequency signals.
    • Wireless communication circuitry configured to:
      • facilitate, via at least the antenna, wireless discovery of the output device by the wireless information apparatus;
      • provide at least an attribute or identification information related to the output device to the wireless information apparatus that is wireless discovering the output device; and
      • receive output data from the wireless information apparatus, subsequent to having transmitted the attribute or identification information.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 10,768,871 - "Wireless output devices or wireless controllers for establishing wireless connectivity and for receiving digital content" (Issued September 8, 2020)

The Invention Explained

  • Problem Addressed: Similar to its parent, the ’871 Patent addresses the problem that mobile users cannot conveniently output content to printers and other devices without pre-installing specific drivers, which hinders mobile productivity. (’871 Patent, col. 2:2-25).
  • The Patented Solution: The patent describes a wireless output device that facilitates its own discovery by a mobile device. After discovery, the output device transmits its stored identification information to the mobile device to enable a connection, and subsequently receives digital content from the mobile device for output (or "playing"). (’871 Patent, Abstract; Fig. 10).
  • Technical Importance: This invention provides a device-centric solution for enabling driverless connectivity, contributing to a technological framework where peripherals can actively participate in establishing connections with host devices. (’871 Patent, col. 1:26-32).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶78).
  • Claim 1 of the ’871 Patent recites a wireless output device comprising:
    • Communication circuitry.
    • Memory storing at least an attribute or identification information corresponding to the wireless output device.
    • One or more processors configured to:
      • facilitate wireless discovery of the wireless output device by a mobile information apparatus;
      • wirelessly transmit, subsequent to the wireless discovery, at least the attribute or the identification information from the memory to the mobile information apparatus; and
      • subsequently, wirelessly receive, from the mobile information apparatus, digital content for playing at the wireless output device.
  • The complaint does not explicitly reserve the right to assert dependent claims.

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" (Issued November 17, 2020)

  • Technology Synopsis: This patent appears to focus on the client-side implementation of the wireless discovery technology. The title suggests it claims the software on an "information apparatus" (e.g., a mobile phone) that performs the short-range discovery of output devices and uses the information it receives to establish a wireless connection. (Compl. ¶32).
  • Asserted Claims: The complaint asserts claim 1. (Compl. ¶87).
  • Accused Features: The complaint accuses Xerox's mobile printing applications, such as the Xerox Print and Scan Experience, which are used to find and print to Xerox devices. (Compl. ¶46, 87).

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" (Issued August 17, 2021)

  • Technology Synopsis: This patent broadens the technological context to include various types of output devices (e.g., TVs, audio devices) and content sources (e.g., internet services or other devices on the same network). It describes the setup of these output devices to enable them to wirelessly receive digital content from these diverse sources. (Compl. ¶37).
  • Asserted Claims: The complaint asserts claim 1. (Compl. ¶98).
  • Accused Features: The complaint accuses Xerox's wireless printers of infringing by being set up to wirelessly receive content from other information apparatuses, such as computers and mobile devices, that are on the same network. (Compl. ¶45, 98).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies two categories of accused instrumentalities:
    1. "The Accused Wireless Printers": This includes new and refurbished versions of Xerox's AltaLink, ColorQube, VersaLink, WorkCentre, Phaser, B series, C series, and EC series wireless printers. (Compl. ¶45).
    2. "The Accused Xerox Apps": This includes Xerox's mobile printing applications, such as the Xerox Print and Scan Experience, Xerox Print Service Plug-in for Android Printing, and Xerox Workplace apps. (Compl. ¶46).
  • Functionality and Market Context: The Accused Wireless Printers are multifunction office devices capable of connecting to wireless networks to receive print jobs from computers and mobile devices. (Compl. ¶45). The Accused Xerox Apps are software applications that enable users of mobile devices to discover, connect to, and send print jobs to the Accused Wireless Printers. (Compl. ¶46). The complaint alleges that Xerox markets, sells, demonstrates, and provides support for these products throughout the United States. (Compl. ¶48-51).
    No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim charts in Exhibits 5-8, which were not provided as part of the public filing. The infringement theories are summarized below based on the narrative allegations in the complaint.

  • ’178 Patent Infringement Allegations
    The complaint alleges that the Accused Wireless Printers directly infringe at least claim 7 of the ’178 Patent. (Compl. ¶69). The theory of infringement suggests that the printers contain the claimed "wireless controller," including an antenna and wireless communication circuitry. (Compl. ¶45, 69). This hardware is allegedly configured to perform the claimed functions: facilitating discovery by users' mobile devices, providing identifying information to those devices upon discovery, and subsequently receiving output data (i.e., print jobs) over the established wireless link. (Compl. ¶70-71). The complaint further alleges that Xerox induces infringement by providing customers with instructions, manuals, and support that direct them to use the printers in this infringing manner. (Compl. ¶71, 74).

  • ’871 Patent Infringement Allegations
    The complaint alleges that the Accused Wireless Printers directly infringe at least claim 1 of the ’871 Patent. (Compl. ¶78). The infringement theory posits that the printers' components—including communication circuitry, memory, and processors—are configured to practice the claimed method. (Compl. ¶45, 78). Specifically, the printers are alleged to facilitate wireless discovery by mobile devices, transmit their stored identification information (e.g., model name or network ID) to the discovering device, and then receive digital content to be printed. (Compl. ¶79-80). Xerox is also accused of inducing its customers to perform these infringing acts by providing user guides and support. (Compl. ¶80, 83).

  • Identified Points of Contention:

    • Scope Questions: A central issue for litigation may be whether the term "wireless device discovery," as defined and described in the patents with a 2000 priority date, can be construed to cover the specific, standardized discovery protocols (e.g., those used in Wi-Fi Direct, AirPrint, or Mopria) implemented in Xerox's modern products. The defense could argue that these modern protocols function in a manner materially different from the embodiments disclosed in the patents.
    • Technical Questions: An evidentiary question will likely be the precise sequence of operations. The asserted claims require certain steps to occur subsequent to others (e.g., receiving content after transmitting identification). The factual evidence regarding how the accused printers and apps actually establish and use a wireless connection will be critical to determining if this claimed sequence is met.

V. Key Claim Terms for Construction

  • The Term: "wireless device discovery" (’178 Patent, cl. 7; ’871 Patent, cl. 1)

    • Context and Importance: This term is the central action that initiates the claimed process. The construction of this term will determine whether the specific protocols used by the Accused Products (e.g., broadcasting an SSID, using the Bonjour protocol) fall within the scope of the claims. Practitioners may focus on this term because the patented invention predates many modern wireless discovery standards, raising questions about the breadth of the patent's disclosure relative to the accused technology.
    • Intrinsic Evidence for a Broader Interpretation: The specification 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 could support a construction that encompasses a wide range of discovery methods using prevalent wireless technologies.
    • Intrinsic Evidence for a Narrower Interpretation: The detailed description includes a specific flowchart for a discovery process that involves an "information apparatus search[ing] for output devices" and then "obtain[ing] device and service information." (’178 Patent, Fig. 11, steps 1101, 1106). A party could argue that this discloses a specific query-and-response process and that the term should not cover more passive or broadcast-based discovery methods.

  • The Term: "identification or information related to the output device" (’178 Patent, cl. 7)

    • Context and Importance: The definition of what constitutes "identification or information" is critical to the infringement analysis. The dispute may turn on whether a simple network name broadcast by a printer is sufficient to meet this limitation, or if a more detailed set of data is required.
    • Evidence for a Broader Interpretation: The plain language of the claim is broad, requiring only "an attribute or identification information." This could be interpreted to cover any piece of data that allows the client device to identify the output device, such as a model name or network address.
    • Evidence for a Narrower Interpretation: The specification describes a detailed "Output Device Profile" that may contain numerous specific fields, including brand, model, supported services, input formats, color profiles, and payment information. (’178 Patent, col. 9:4-10:56). A party might argue that the claim term should be construed to require the transmission of such a structured profile, rather than a simple identifier.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for all four patents-in-suit. The stated basis is that Xerox provides customers with product manuals, instructional videos, and website support that instruct and encourage them to use the accused printers and apps in a manner that directly infringes the patent claims. (Compl. ¶52, 74, 83, 92, 103). For the ’798 Patent, the complaint also pleads contributory infringement, alleging the Accused Xerox Apps are not staple articles of commerce and are "especially made and/or adapted for use in infringing." (Compl. ¶94).
  • Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the patents. The complaint claims that Xerox received notice letters on July 23, 2021, and October 29, 2021, which identified the patents-in-suit and the accused products. (Compl. ¶53). The complaint alleges that Xerox continued its infringing activities without responding to the letters or seeking a license, thereby acting with "willful blindness" and in deliberate disregard of Flexiworld's patent rights. (Compl. ¶54, 57, 59).

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

  • A core issue will be one of validity and prior art: given the patents’ early priority date (2000), a central question for the court will be whether the claimed methods of wireless discovery and connection were truly novel and non-obvious over prior art wireless networking and device communication protocols existing at the time, such as early versions of Bluetooth, 802.11, and service discovery protocols like UPnP.
  • A key dispute will be one of claim construction and scope: can the patent terms, rooted in the technological context of the year 2000, be construed broadly enough to cover the specific, highly standardized protocols (e.g., AirPrint's use of Bonjour, Wi-Fi Direct) that enable discovery and printing on modern Xerox products, or is there a fundamental mismatch between what was patented and what is accused?
  • A central evidentiary question will be one of functional and sequential mapping: what technical evidence can demonstrate that the accused printers and software applications perform the exact sequence of steps recited in the independent claims? The infringement analysis will likely depend on a detailed, step-by-step comparison of the accused process flow against the claim language, particularly the "subsequent to" limitations.