Ortiz & Associates Consulting LLC v. FedEx Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ortiz & Associates Consulting, LLC (New Mexico)
  • Defendant: FedEx Corporation (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 2:24-cv-00736, E.D. Tex., 09/09/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district, has committed alleged acts of infringement in the district, and conducts substantial business in the forum.
• Core Dispute: Plaintiff alleges that Defendant’s systems, products, and services for data handling infringe a patent related to methods for brokering data between wireless devices and data rendering devices.
• Technical Context: The technology concerns systems that allow a user of a wireless device (like a smartphone) to locate and securely send data (such as documents or images) to a nearby, network-connected output device (like a printer or display) for rendering.
• Key Procedural History: The complaint discloses that Plaintiff is a non-practicing entity and that its predecessors-in-interest have entered into prior settlement licenses with other entities. Plaintiff proactively argues that these licenses did not trigger patent marking requirements under 35 U.S.C. § 287(a), asserting that this preserves its right to claim pre-suit damages.

Case Timeline

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

U.S. Patent No. 9,549,285, Systems, methods and apparatuses for brokering data between wireless devices, servers and data rendering devices, issued January 17, 2017

The Invention Explained

• Problem Addressed: The patent describes a problem existing around the year 2000 where users of handheld wireless devices were constrained by small screens and had limited, inconvenient, or nonexistent options for rendering data (e.g., printing documents or displaying video) that they retrieved over wireless networks (’285 Patent, col. 4:35-51).
• The Patented Solution: The invention provides a system where a wireless device (WD) can locate a nearby "data rendering device" (DRD), such as a networked printer or multimedia projector, and securely send data to it for output (’285 Patent, Abstract; col. 5:6-16). The system uses a network server to manage the interaction, and can involve a passcode entered at the DRD to authorize the rendering of the user's data, which enhances security for data sent to a public or shared device (’285 Patent, col. 5:39-43; Fig. 10).
• Technical Importance: The technology aimed to untether wireless device users from their small screens, allowing them to leverage networked printers and displays for more effective use of digital information "on the go" (’285 Patent, col. 4:48-54).

Key Claims at a Glance

• The complaint asserts infringement of claims 1-13 (Compl. ¶9).
• Independent Claim 1 recites a system for rendering data comprising:
  • A server in communication with at least one data rendering device (DRD).
  • The DRD includes a user interface for receiving passcodes.
  • The DRD is registered with the server to access and receive data over a communications network at the request of a wireless device (WD).
  • The rendering is in response to a passcode associated with the WD being entered at the user interface.
  • Memory in the server for securely storing data received on behalf of the WD and the associated passcode.
  • The server is configured to receive the data and passcode, and to render the data after a matching passcode is entered at the DRD's user interface.
• The complaint does not explicitly reserve the right to assert other claims, but its infringement allegations are noted as "preliminary" (Compl. ¶10).

III. The Accused Instrumentality

Product Identification

The complaint broadly identifies the accused instrumentalities as "systems, products, and services that performs a method" which are maintained, operated, and administered by Defendant FedEx (Compl. ¶9).

Functionality and Market Context

The complaint does not identify any specific FedEx product or service by name (e.g., FedEx Office printing services, FedEx Ship Manager software). It alleges that Defendant "put the inventions claimed by the '285 Patent into service" (Compl. ¶9). The complaint does not provide sufficient detail for an analysis of the specific functionality or market context of any particular accused instrumentality.

IV. Analysis of Infringement Allegations

The complaint references a claim chart in an "exhibit B" to support its infringement allegations; however, this exhibit was not filed with the complaint (Compl. ¶10). The complaint's narrative infringement theory alleges that Defendant's "systems, products, and services" perform a method infringing claims 1-13 of the ’285 Patent (Compl. ¶9). Without the referenced exhibit or more detailed allegations in the body of the complaint, a direct comparison of accused product features to claim elements is not possible.

No probative visual evidence provided in complaint.

Identified Points of Contention

• Factual Sufficiency: A primary issue may be whether the complaint's generalized allegations against unspecified "systems, products, and services," without the supporting claim chart exhibit, meet the plausibility standard for pleading patent infringement.
• Technical Questions: The central technical question will be what specific FedEx architecture is accused and whether its components and operation map onto the elements of the asserted claims. For example, it is an open question what specific feature of a FedEx system constitutes the claimed "passcode" and the "user interface" at the "data rendering device" for receiving it, as required by claim 1.

V. Key Claim Terms for Construction

"data rendering device (DRD)"

• Context and Importance: The scope of this term is fundamental to the infringement analysis. The definition will determine which of FedEx's hardware (e.g., office printers, shipping label printers, digital displays) could potentially be considered a DRD. Practitioners may focus on this term because its construction will define the physical boundaries of the accused system.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification provides a non-exhaustive list including "networked printers, copiers, video-enabled monitors/televisions, multimedia projectors, and other multimedia-enabled devices" (’285 Patent, col. 5:25-28).
  • Evidence for a Narrower Interpretation: The patent repeatedly describes DRDs in the context of being "undedicated," "unassigned," or publicly accessible devices that a roaming user might encounter and wish to use temporarily, which could suggest a narrower scope than any networked device (’285 Patent, col. 5:6-12).

"passcode associated with said WD"

• Context and Importance: This term is critical because infringement of claim 1 requires a "passcode" to be entered at the DRD to authorize rendering. The case may turn on whether FedEx's authentication or job-retrieval mechanisms (e.g., a retrieval code, a user account login, a QR code scan) meet the definition of a "passcode" as contemplated by the patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states that "Passcode capabilities can include the use of passwords/passcodes, biometrics and/or communications security (COMSEC)" (’285 Patent, col. 5:41-43), suggesting the term covers a range of security mechanisms.
  • Evidence for a Narrower Interpretation: The primary embodiment described involves a user entering the passcode directly into a "user interface" on the DRD itself, which could be argued to limit the term to manually entered codes rather than other forms of authentication like automated token exchanges (’285 Patent, col. 12:3-8).

VI. Other Allegations

Indirect Infringement

The complaint does not contain a separate count for indirect infringement and lacks specific factual allegations regarding inducement or contributory infringement, such as detailing how FedEx might instruct its customers to perform infringing acts (Compl. ¶9, 11). The allegations appear to focus on direct infringement by FedEx.

Willful Infringement

The complaint's prayer for relief seeks a finding of willful infringement and treble damages (Compl. ¶e, p. 6). However, the body of the complaint does not allege any facts that would typically support such a claim, such as Defendant's pre-suit knowledge of the ’285 patent or its alleged infringement.

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

• Pleading Sufficiency and Specificity: A threshold issue will be whether the complaint's high-level allegations against unspecified "systems" are sufficient to state a plausible claim for relief, particularly given the absence of the referenced claim chart exhibit. The court may need to resolve whether the complaint provides Defendant with fair notice of what specific products or services are being accused.
• Architectural Congruence: A core technical question will be one of architectural mapping: can the client-server and passcode-based security model from the 2000-era patent be mapped onto FedEx's modern, likely distributed and cloud-based, logistics and printing infrastructure? The outcome may depend heavily on claim construction of terms like "server", "DRD", and "passcode".
• Damages and Pre-Suit Conduct: A key legal battle is likely to concern the availability of pre-suit damages. The complaint's pre-emptive arguments regarding patent marking and prior settlement licenses (Compl. ¶12-17) signal that Plaintiff anticipates a significant dispute under 35 U.S.C. § 287(a), which could substantially impact the total potential damages at stake.