DCT

6:23-cv-06373

Flexiworld Tech Inc v. Xerox Corp

Key Events

Complaint

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-06373, 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 in the Western District of New York, specifically in Webster, New York.
Core Dispute: Plaintiff alleges that Defendant’s wireless printers and associated mobile printing software applications infringe four patents related to wirelessly discovering and outputting digital content from a mobile device to an output device.
Technical Context: The technology at issue addresses methods for enabling mobile information devices, like smartphones, to wirelessly discover and print to nearby output devices, such as printers, without requiring pre-installation of device-specific drivers.
Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of the patents-in-suit via letters dated July 23, 2021, and October 29, 2021, a fact which may be relevant to the allegations of willful infringement.

Case Timeline

Date	Event
2000-11-01	’576, ’031, and ’847 Patents Priority Date
2000-11-20	’725 Patent Priority Date
2011-09-20	’725 Patent Issue Date
2019-11-19	’847 Patent Issue Date
2020-05-05	’576 Patent Issue Date
2020-11-24	’031 Patent Issue Date
2021-07-23	Plaintiff sends first notice letter to Defendant
2021-10-29	Plaintiff sends supplemental notice letter to Defendant
2023-06-29	Complaint Filing Date

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

U.S. Patent No. 10,642,576 - “Mobile information apparatus that includes wireless communication circuitry for discovery of an output device for outputting digital content at the wirelessly discovered output device,” Issued May 5, 2020

The Invention Explained

Problem Addressed: The patent's background describes the inconvenience and complexity faced by users of mobile computing devices who wish to print documents (Compl. ¶22; ’576 Patent, col. 2:4-28). Conventionally, this required installing a specific driver on the mobile device for each particular make and model of printer, a process that is impractical for a mobile user encountering various printers in different locations (’576 Patent, col. 2:30-44).
The Patented Solution: The invention provides a method where a mobile device uses its wireless communication circuitry to discover a nearby output device. After discovery, the mobile device receives information from the output device and sends an "output device object" to a network service for registration. Subsequently, the mobile device can transmit a "digital content object" to the service, which then facilitates the output of the content at the registered device, bypassing the need for a pre-installed, device-specific driver on the mobile apparatus (’576 Patent, Abstract; col. 43:6-44:4).
Technical Importance: This approach aimed to make mobile printing "pervasive" by abstracting the driver-installation process away from the user's mobile device and centralizing it in a network service, thereby allowing a mobile device to interact with a wide array of printers seamlessly (’576 Patent, col. 2:4-9).

Key Claims at a Glance

The complaint asserts independent claim 15 (Compl. ¶69).
Claim 15 is a method claim directed to a mobile information apparatus for wirelessly outputting digital content, comprising the essential elements of:
- Wirelessly establishing a wireless local area network connection.
- Wirelessly discovering an output device in the network.
- Wirelessly receiving output device information from the discovered device.
- Obtaining security or authentication information to access one or more servers operated by a service.
- Accessing the one or more servers based on the security information.
- Sending, from the mobile apparatus to the servers, an output device object related to the discovered output device.
- Transmitting, from the mobile apparatus to the servers, a digital content object that includes at least part of the digital content for outputting.

U.S. Patent No. 10,846,031 - “Software application for a mobile device to wirelessly manage or wirelessly setup an output system or output device for service,” Issued November 24, 2020

The Invention Explained

Problem Addressed: The patent addresses the same core problem as its family members: the difficulty for mobile device users to output content without pre-installing dedicated drivers for each output device they encounter (’031 Patent, col. 2:4-28). This limitation hinders the concept of "pervasive" mobile computing and output (’031 Patent, col. 2:19-24).
The Patented Solution: The patent describes a software application on a mobile device that facilitates the wireless setup and management of an output system. The application allows the mobile device to wirelessly discover a nearby output system, receive a user selection of that system via a touch-sensitive screen, establish a wireless link, and then transmit security or authentication information to the output system to set it up for service (’031 Patent, Abstract; col. 45:4-46:21). This process is designed to be managed by the software application on the mobile device itself.
Technical Importance: This solution focuses on the software application as the enabling component, providing a user-friendly, on-device method to manage the connection and setup of output services without prior configuration (’031 Patent, col. 1:4-9).

Key Claims at a Glance

The complaint asserts independent claim 14 (Compl. ¶80).
Claim 14 is a non-transitory computer readable storage medium claim containing software executable by a mobile device, comprising the essential elements of:
- Wirelessly discovering an output system within physical proximity to the mobile device.
- Receiving, via a touch sensitive screen, a selection of an item related to the wirelessly discovered output system.
- Establishing a wireless communication link between the mobile device and the output system.
- Wirelessly transmitting security or authentication information to the output system to set it up for service.
- Wirelessly managing or wirelessly driving the output system over the established wireless link.

U.S. Reissued Patent No. RE42,725 - “Output service over a network,” Issued September 20, 2011

Technology Synopsis: This patent describes a system for providing an output service over a network. The system enables an information apparatus to pervasively output digital content by obtaining a "document object" and an "output device object" and providing them to a server application, which then generates the appropriate output data for the specified device (Compl. ¶32; ’725 Patent, Abstract).
Asserted Claims: The complaint asserts independent claim 44 (Compl. ¶91).
Accused Features: The complaint alleges that the Accused Products, collectively, infringe one or more claims of the ’725 Patent (Compl. ¶91).

U.S. Patent No. 10,481,847 - “Information apparatus and software applications supporting output of digital content over a network to a registered output device,” Issued November 19, 2019

Technology Synopsis: This patent discloses software applications and an information apparatus that support outputting digital content to a registered output device over a network. An application on the apparatus discovers a local output device, receives its information, transmits that information to a service for registration, and can then transmit digital content to the service for output at the registered device without a device-specific driver installed on the apparatus (Compl. ¶37; ’847 Patent, Abstract).
Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶102).
Accused Features: The complaint alleges that the Accused Products, collectively, infringe one or more claims of the ’847 Patent (Compl. ¶102).

III. The Accused Instrumentality

Product Identification: The accused instrumentalities are bifurcated into two categories: "the Accused Wireless Printers" and "the Accused Xerox Apps" (collectively, "the Accused Products") (Compl. ¶¶45-47). The Accused Wireless Printers include, but are not limited to, Xerox's AltaLink, ColorQube, VersaLink, WorkCentre, Phaser, B series, C series, and EC series wireless printers (Compl. ¶45). The Accused Xerox Apps include 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 complaint alleges that the Accused Xerox Apps are software for use in conjunction with the Accused Wireless Printers (Compl. ¶46). This combination of hardware and software allegedly enables users to print from mobile devices to Xerox printers over a wireless network (Compl. ¶¶45, 46). The complaint cites Xerox's own websites and demonstration videos as evidence of the accused functionality, suggesting that Xerox markets these products for their mobile and wireless printing capabilities (Compl. ¶¶11, 48).

IV. Analysis of Infringement Allegations

The complaint references, but does not include, Exhibits 5-8, which it describes as claim charts detailing the alleged infringement (Compl. ¶62). In the absence of these exhibits, the infringement theory is summarized below based on the narrative allegations in the complaint.

’576 Patent Infringement Allegations
The complaint alleges that the Accused Xerox Apps directly infringe at least claim 15 of the ’576 Patent (Compl. ¶69). The narrative theory suggests that the apps, when used on a mobile device, perform the claimed method steps. This likely includes using the mobile device's wireless capabilities to discover a Xerox printer on a network, obtaining information from that printer, and communicating with a service (potentially operated by Xerox or a third party like Apple AirPrint) to enable the transmission and outputting of digital content at the selected printer (Compl. ¶¶69-70).
’031 Patent Infringement Allegations
The complaint alleges that the Accused Xerox Apps, including the non-transitory computer-readable media on which they are stored, directly infringe at least claim 14 of the ’031 Patent (Compl. ¶80). The infringement theory appears to be that the software applications embody the claimed invention by enabling a mobile device to wirelessly discover a Xerox output system, receive user selection of that system via the device’s touch screen, and then manage the wireless setup for that output system so that it is ready for service (Compl. ¶¶80-81).
Identified Points of Contention:
- Scope Questions: The infringement analysis for the ’576 Patent may turn on the definition of the "one or more servers" and the "service" recited in claim 15. A question for the court may be whether the functionality provided by the Accused Products relies on a "service" that registers an "output device object" in the manner contemplated by the patent, or if it operates via a different mechanism, such as a direct peer-to-peer connection facilitated by a standardized protocol.
- Technical Questions: For the ’031 Patent, a central technical question will be what actions constitute "wirelessly setup an output system... for service" as required by claim 14. The analysis will require evidence of whether the Accused Xerox Apps perform a setup process that goes beyond simple discovery and communication, and whether that process involves transmitting "security or authentication information" for the purpose of enabling the service. The complaint does not provide sufficient detail for analysis of these technical operations, deferring instead to the unattached exhibits (Compl. ¶81).

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

The Term: "output device object" (’576 Patent, claim 15)
- Context and Importance: This term appears central to the infringement theory for the ’576 Patent, which requires "sending... an output device object" to a server. The definition of this term will be critical to determine whether the data transmitted by the Accused Xerox Apps to any backend server or service meets this claim limitation. Practitioners may focus on this term because the nature of the data packet sent from the app could be a key point of non-infringement if it does not constitute an "object" with the characteristics described in the patent.
- Intrinsic Evidence for Interpretation:
  - Evidence for a Broader Interpretation: The specification defines an "Output Device Profile (Or Object)" as a "software and data entity, which encapsulates within itself both data and attributes describing an output device and instructions for operating that data and attributes" (’847 Patent, col. 9:30-35), suggesting a broad, functional definition.
  - Evidence for a Narrower Interpretation: The specification provides a detailed list of potential fields and attributes for an output device profile, including device identification, services, input formats, device-specific parameters like color space and resolution, and even payment information (’847 Patent, col. 10:5-52). A defendant may argue that a true "output device object" must contain a substantial collection of these specific types of data, rather than just a simple device identifier.
The Term: "wirelessly setup an output system or output device for service" (’031 Patent, claim 14)
- Context and Importance: The infringement analysis for the ’031 Patent hinges on whether the Accused Xerox Apps perform a "setup" for "service." The meaning of "setup" will likely be disputed, as it could range from a one-time configuration to a transient per-session handshake. The outcome of this construction will determine whether the routine wireless printing process facilitated by the apps falls within the scope of the claim.
- Intrinsic Evidence for Interpretation:
  - Evidence for a Broader Interpretation: The patent's general description focuses on the convenience of avoiding manual driver installation, which could support an interpretation where any automated, software-driven process that makes a printer ready for a mobile print job constitutes a "setup" for "service" (’031 Patent, col. 2:4-28).
  - Evidence for a Narrower Interpretation: The claim requires transmitting "security or authentication information" as part of the setup. A defendant may argue this requires a specific security-related transaction to "set up" the service, which may not be present in a standard, open-network printing protocol. The specification discusses security in the context of authentication and access control lists, potentially narrowing the scope of what constitutes a "setup for service" (’847 Patent, col. 34:45-51).

VI. Other Allegations

Indirect Infringement: The complaint alleges induced infringement for all patents-in-suit. The basis for this allegation is that Xerox, through its product manuals, websites, instructional videos, and customer support, allegedly instructs and encourages its customers to use the Accused Products in a manner that directly infringes the asserted claims (Compl. ¶¶52, 71, 82, 93, 104). The complaint also alleges contributory infringement, stating that the Accused Xerox Apps are not staple articles of commerce and are especially made for use in an infringing manner (Compl. ¶¶76, 87, 98, 109).
Willful Infringement: The complaint alleges that Xerox's infringement has been willful. This allegation is based on alleged pre-suit knowledge of the patents-in-suit, stemming from notice letters Flexiworld states it sent to Xerox on July 23, 2021, and October 29, 2021 (Compl. ¶53). The complaint further alleges that Xerox failed to respond or take action to avoid infringement after receiving notice, reflecting deliberate disregard for Flexiworld's patent rights (Compl. ¶54).

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

A core issue will be one of claim construction and scope: can the phrase "wirelessly setup an output system...for service" as recited in the ’031 Patent be construed to cover the process by which the Accused Xerox Apps connect to a printer using standard protocols like AirPrint? Similarly, does the data transmitted by the apps to network servers constitute an "output device object" as required by the ’576 Patent?
A second key issue will be evidentiary and technical: as the complaint itself provides a high-level infringement theory and defers the technical details to unattached exhibits, a central question for discovery will be to establish the precise technical operations of the Accused Products. The case will likely turn on whether the evidence shows a direct mapping of the accused system's actual functionality onto the specific, multi-step limitations recited in the asserted independent claims.