DCT

4:24-cv-02691

Flexiworld Tech Inc v. HP Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:24-cv-02691, S.D. Tex., 04/01/2025
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant HP maintains a regular and established place of business in Spring, Texas, within the district, and has committed acts of infringement from that facility, including offering for sale, selling, demonstrating, and supporting the accused products.
  • Core Dispute: Plaintiff alleges that Defendant’s wireless printers, laptops, and associated software applications infringe eight patents related to wireless printing, device discovery, and data output technologies.
  • Technical Context: The technology concerns methods for enabling devices like laptops and smartphones to print to nearby printers over wireless networks without needing pre-installed, device-specific drivers.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of infringement, including letters and claim charts for the patents-in-suit, beginning in July 2021. The complaint also references prior litigation involving some of the asserted patents against other printer manufacturers to support its claims for pre-suit damages and to counter potential patent-eligibility challenges.

Case Timeline

Date Event
2000-11-01 Earliest Priority Date (’856, ’791, ’847 Patents)
2001-01-19 Earliest Priority Date (’181, ’071, ’402, ’257, ’510 Patents)
2009-10-27 '402 Patent Issued
2015-05-19 '181 Patent Issued
2015-06-30 '510 Patent Issued
2017-12-05 '257 Patent Issued
2018-11-27 '071 Patent Issued
2019-11-19 '847 Patent Issued
2020-09-01 '791 Patent Issued
2020-12-22 '856 Patent Issued
2021-07-23 Plaintiff allegedly sent first notice letter to Defendant
2021-10-29 Plaintiff allegedly sent second notice letter to Defendant
2022-11-01 Plaintiff allegedly provided claim charts to Defendant
2025-04-01 Complaint Filed

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

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).

The Invention Explained

  • Problem Addressed: The patent family addresses the inconvenience mobile device users face when trying to print. Conventionally, a user must find, install, and configure a specific driver for each printer model, a process that consumes time, storage space, and processing power, making spontaneous printing at new locations impractical (U.S. Patent No. 10,140,071, col. 2:14-36).
  • The Patented Solution: The invention proposes a system that allows an "information apparatus" (e.g., a laptop) to print without a dedicated driver. The system divides the complex task of print processing. The information apparatus performs initial steps like rasterization to create "intermediate output data," which is more device-independent than a fully rendered print job. This data is then sent to the printer, which contains an "output controller" to perform the final, device-specific processing steps like halftoning and color correction ('071 Patent, col. 6:35-54).
  • Technical Importance: This "split-processing" architecture aimed to make mobile printing universal by reducing the burden on the client device and eliminating the need for model-specific drivers, a foundational concept for modern "driverless" printing standards (Compl. ¶¶141-142).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶184).
  • The complaint does not provide the language of the asserted claim.

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 (Compl. ¶28).

The Invention Explained

  • Problem Addressed: As described in the patent's background, connecting mobile devices to printers wirelessly requires a user to first install a specific driver corresponding to the printer's make and model, a significant barrier to convenient, on-the-go printing ('071 Patent, col. 2:14-24).
  • The Patented Solution: The patent describes a printing device that facilitates its own discovery over a wireless network (e.g., IEEE 802.11). Upon discovery by a client, the printer transmits an "output device profile" containing its specific attributes and capabilities. The client device can then use this profile to format print data correctly without needing a pre-installed, dedicated driver ('071 Patent, Abstract). This process is illustrated in the patent's flowcharts, such as the discovery process in FIG. 11 ('071 Patent, FIG. 11).
  • Technical Importance: The invention provides a mechanism for a client device to learn about a printer's features dynamically, which is a core principle behind modern, interoperable wireless printing solutions like Mopria and AirPrint (Compl. ¶¶156-160).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶193).
  • Essential elements of independent claim 1 include:
    • A printing device comprising a memory component and one or more wireless communication units compatible with IEEE 802.11.
    • The printing device wirelessly broadcasts its availability for discovery.
    • The printing device wirelessly transmits at least part of a stored "output device profile" to a client that has discovered it.
    • The printing device wirelessly receives, via its IEEE 802.11-compatible unit, print data that is related to the transmitted output device profile. ('071 Patent, col. 42:35-67).

U.S. Patent No. 10,873,856 - Printing devices supporting printing over air or printing over a wireless network, issued December 22, 2020 (Compl. ¶34).

Technology Synopsis

This patent relates to printing devices that support wireless printing. The invention focuses on the device's ability to be discovered over a wireless network and receive print data from a client device based on device information previously transmitted to that client (U.S. Patent No. 10,873,856, Abstract).

Asserted Claims

The complaint asserts independent claim 17 (Compl. ¶202).

Accused Features

The functionalities of the "Accused Printers" are alleged to infringe (Compl. ¶202).

U.S. Patent No. 7,609,402 - Methods for universal data output, issued October 27, 2009 (Compl. ¶40).

Technology Synopsis

This patent describes methods for outputting data from an information apparatus to an output device. The method involves establishing a wireless connection, conforming content into an intermediate format based on the output device's attributes, and transmitting that data for final rendering at the output device ('402 Patent, Abstract).

Asserted Claims

The complaint asserts independent claim 13 (Compl. ¶211).

Accused Features

The functionalities of the "Accused Products," which include printers, laptops, and apps, are alleged to infringe (Compl. ¶211).

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. ¶46).

Technology Synopsis

This patent focuses on wireless printers that can register with a service over a network (e.g., the Internet) to provide printing services. This system allows client devices to print without needing a specific driver installed locally on the client device ('791 Patent, Abstract).

Asserted Claims

The complaint asserts independent claim 1 (Compl. ¶220).

Accused Features

The functionalities of the "Accused Printers" are alleged to infringe (Compl. ¶220).

U.S. Patent No. 9,836,257 - Mobile information apparatus that includes intelligent wireless display, wireless direct display, or transfer of digital content for playing over air the digital content at smart televisions, television controllers, or audio output devices, issued December 5, 2017 (Compl. ¶52).

Technology Synopsis

This patent describes a mobile apparatus that can wirelessly discover and transfer digital content (e.g., video, audio) to output devices like smart televisions. The method involves the mobile apparatus conforming the content into a suitable format for wireless transfer and output ('257 Patent, Abstract).

Asserted Claims

The complaint asserts independent claim 1 (Compl. ¶229).

Accused Features

The functionalities of the "Accused Laptops" are alleged to infringe (Compl. ¶229).

U.S. Patent No. 9,069,510 - Touch sensitive screen information apparatus that includes close proximity or near distance radio frequency field communication, issued June 30, 2015 (Compl. ¶58).

Technology Synopsis

This patent relates to an information apparatus with a touch screen that uses close proximity or near-distance radio frequency communication for device discovery. This allows the apparatus to discover and pair with a wireless device without requiring further authentication, after which it can engage in subsequent wireless communication ('510 Patent, Abstract).

Asserted Claims

The complaint asserts independent claim 10 (Compl. ¶238).

Accused Features

The functionalities of the "Accused Laptops" are alleged to infringe (Compl. ¶238).

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 (Compl. ¶64).

Technology Synopsis

This patent describes a system where a software application on an information apparatus discovers a local output device, registers that device with a network service (e.g., a cloud printing service), and subsequently transmits digital content to that service for output at the registered device ('847 Patent, Abstract).

Asserted Claims

The complaint asserts independent claim 14 (Compl. ¶247).

Accused Features

The functionalities of the "Accused Apps" are alleged to infringe (Compl. ¶247).

III. The Accused Instrumentality

Product Identification

The complaint identifies three categories of accused products: "Accused Printers" (including HP's DesignJet, DeskJet, Envy, LaserJet, OfficeJet, and Smart Tank wireless printers), "Accused Laptops" (including HP's Chromebook, Pavilion, Envy, and Omen lines), and "Accused Apps" (including versions of the HP Smart App) (Compl. ¶¶76-78).

Functionality and Market Context

The complaint alleges these products operate as an ecosystem for wireless printing. The Accused Laptops and Apps are used to create or manage digital content and initiate print jobs. These devices allegedly discover the Accused Printers over a wireless network (e.g., Wi-Fi) and transmit print data to them. The Accused Printers are equipped with wireless communication hardware to receive and process these print jobs (Compl. ¶¶83-85). The complaint positions these features as key functionalities that HP markets and supports through extensive online documentation and video tutorials (Compl. ¶¶84-85).

IV. Analysis of Infringement Allegations

The complaint references but does not attach exemplary claim charts for the asserted patents (Compl. ¶¶186, 195, 204, 213, 222, 231, 240, 249). The infringement allegations are therefore summarized from the complaint's narrative.

'181 Patent Infringement Allegations

The complaint alleges that HP's Accused Printers directly infringe at least claim 1 of the '181 Patent by incorporating the claimed wireless printing technology (Compl. ¶184). It further alleges HP induces infringement by providing customers with instructions and support that encourage use of the printers in a manner that practices the claimed methods (Compl. ¶185).

'071 Patent Infringement Allegations

The complaint alleges that HP's Accused Printers directly infringe at least claim 1 of the '071 Patent (Compl. ¶193). The theory is that the printers perform the claimed steps of wirelessly broadcasting their availability, transmitting a device profile to a client upon discovery, and subsequently receiving print data formatted according to that profile (Compl. ¶¶193-195).

No probative visual evidence provided in complaint.

Identified Points of Contention

  • Scope Questions: The patents-in-suit claim priority to inventions from the 2000-2002 period, while the accused products utilize modern, standardized protocols like Wi-Fi Direct, AirPrint, and Mopria, which were developed later (Compl. ¶¶136, 156, 159). A central question will be whether the patent claims, and terms like "output device profile," can be construed to cover the information exchanged during service discovery and communication under these modern standards.
  • Technical Questions: The infringement theories depend on a specific sequence of operations. For example, claim 1 of the '071 Patent requires the printing device to transmit the device profile. A technical dispute may arise as to whether HP's printers actually perform this step, or if the client device (e.g., a laptop running the HP Smart App) pulls capability information from a network broadcast or a cloud-based service, which may not map to the claimed method.

V. Key Claim Terms for Construction

The Term: "output device profile" (from '071 Patent, claim 1)

Context and Importance

The definition of this term is critical. Infringement of the '071 patent hinges on whether the capability and service data exchanged between an HP device and an HP printer constitutes an "output device profile" as contemplated by the patent. Practitioners may focus on this term because its scope will determine if modern service discovery data falls within the claim.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification defines the term broadly 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," which can be transported as a file or message ('071 Patent, col. 9:8-15). This may support a construction covering any packet of device capability data.
  • Evidence for a Narrower Interpretation: The specification also provides specific examples of what the profile may contain, such as "color profiles, halftoning profiles, communication profiles, rasterization profiles," and device-specific parameters like resolution and dpi ('071 Patent, col. 10:20-31). This could support a narrower construction requiring a specific, detailed set of technical printing parameters, as opposed to more generic network service information.

The Term: "wirelessly broadcast availability of the printing device for ... to wirelessly discover the printing device for service" (from '071 Patent, claim 1)

Context and Importance

This limitation defines the initial step of the claimed method. The infringement analysis will depend on whether the network communications sent by HP printers (e.g., beacon frames or service announcements under protocols like Wi-Fi Direct or Bonjour) perform the function of "broadcast[ing] availability" for "discover[y]" as required by the claim.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The patent describes a discovery process where an information apparatus searches for available output devices, which may respond to service requests ('071 Patent, col. 31:30-41). This suggests the term could encompass any standard network mechanism where a device makes its presence and services known.
  • Evidence for a Narrower Interpretation: The patent also describes a more active "multi-casting or broadcasting or advertising its service requests and waiting for available output devices 220 to respond" ('071 Patent, col. 31:36-39). This might be argued to require a specific type of active advertisement initiated by the client, which could differ from the passive beaconing or service announcements used in some modern protocols.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement for all asserted patents. The factual basis cited is Defendant’s extensive customer support materials, including product manuals, websites, and instructional videos (e.g., on YouTube) which allegedly instruct and encourage customers to use the accused wireless features in an infringing manner (Compl. ¶¶83-85, 185, 194).

Willful Infringement

The complaint alleges willful infringement based on pre-suit knowledge. Plaintiff alleges it sent notice letters identifying the patents-in-suit and accused products to HP on July 23, 2021, and October 29, 2021, and subsequently provided detailed claim charts in late 2022 and early 2023. The complaint alleges HP continued its conduct despite this notice (Compl. ¶¶93-98, 101-104).

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

  • A core issue will be one of temporal scope and validity: Can patent claims with priority dates in the early 2000s, which the complaint argues were pioneering (Compl. ¶¶137-142), be validly asserted against products implementing industry-wide standards developed nearly a decade later? The case will likely involve a significant dispute over whether the patented inventions were truly novel and non-obvious, and whether the claims are broad enough to read on modern, standardized implementations without being invalid over the prior art.
  • A key evidentiary question will be one of technical and functional mapping: Does the specific architecture and data flow of HP's wireless printing ecosystem—involving the interplay between laptops, the HP Smart App, and printers—perform the exact steps recited in the claims? The resolution may depend on a technical analysis of whether, for example, the information exchanged constitutes a specific "output device profile" and whether it is transmitted from the printer as claimed, versus being managed or retrieved by the client application from other sources.