Ortiz & Associates Consulting LLC v. Actiontec Electronics Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ortiz & Associates Consulting, LLC (New Mexico)
  • Defendant: Actiontec Electronics, Inc. (California)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: Ortiz & Associates Consulting, LLC v. Actiontec Electronics, Inc., 6:23-cv-00139, W.D. Tex., 02/22/2023
• Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains a regular and established place of business in the district, has committed alleged acts of infringement there, and conducts substantial business in the forum.
• Core Dispute: Plaintiff alleges that Defendant’s systems, products, and services for managing data over wireless networks infringe two patents related to brokering data between wireless devices and separate data rendering devices.
• Technical Context: The technology addresses methods for a user of a mobile wireless device to locate and transmit data to a nearby networked output device, such as a printer or video projector, for rendering.
• Key Procedural History: The two patents-in-suit share a common priority date and are part of the same patent family. U.S. Patent No. 9,147,299 is subject to a terminal disclaimer. The complaint does not allege any prior litigation or licensing history involving the patents.

Case Timeline

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

U.S. Patent No. 9,147,299 - "Systems, methods and apparatuses for brokering data between wireless devices, servers and data rendering devices"

• Patent Identification: U.S. Patent No. 9,147,299, "Systems, methods and apparatuses for brokering data between wireless devices, servers and data rendering devices," issued September 29, 2015.
• The Invention Explained:
  • Problem Addressed: The patent describes a technical environment, circa 2000, where users of handheld wireless devices were "severely limited" by small built-in displays and lacked convenient access to resources for rendering data, such as printing or displaying on a larger screen (’299 Patent, col. 4:21-30).
  • The Patented Solution: The invention discloses a method for "data brokering" where a wireless device (WD) user can locate a nearby, publicly or privately available "data rendering device" (DRD), such as a networked printer or projector. The method involves the WD sending a location-based request to a network, which identifies a suitable DRD. The user can then select the DRD and, often after entering an authorization code, cause data to be transferred from the WD or a server to the DRD for rendering (’299 Patent, Abstract; col. 11:4-21; Fig. 10).
  • Technical Importance: The described technology aimed to solve the problem of mobile device limitations by enabling "information on the go," allowing users to leverage full-featured, networked output devices that they did not own or directly control (’299 Patent, col. 4:30-38).
• Key Claims at a Glance:
  • The complaint asserts independent claim 1 and dependent claims 2-6 (Compl. ¶9).
  • Independent Claim 1 (Method) requires the following essential steps:
    • Receiving a request from a wireless device (WD) in a network to locate a data rendering device (DRD), with the request including the WD's location information.
    • The network identifying the physical location, operational readiness, and rendering capabilities of a DRD based on the WD's location.
    • The network providing the WD with location information for an accessible DRD.
    • Receiving a selection of a DRD from the WD via the network, made by entry of an authorization code on a user interface once the DRD is physically located.
    • Verification of the authorization code causing the DRD to retrieve and render video data.

U.S. Patent No. 9,549,285 - "Systems, methods and apparatuses for brokering data between wireless devices, servers and data rendering devices"

• Patent Identification: 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: Similar to its parent, the ’285 Patent addresses the challenge that wireless device users in the year 2000 were "restricted in all data use by small device-based viewers" and had inconvenient access to rendering resources like printers or large displays (’285 Patent, col. 4:39-48).
  • The Patented Solution: The patent describes a system, centered on a server, that facilitates data brokering. The server is configured to communicate with DRDs, store user data and passcodes, and manage the process of a WD user selecting a DRD (potentially via a location-based search) and initiating the rendering of data on that DRD after passcode verification (’285 Patent, Abstract; col. 8:54-65).
  • Technical Importance: This system architecture provided a centralized approach to enabling mobile users to securely access and utilize disparate, networked output devices, thereby overcoming the physical constraints of their handheld devices (’285 Patent, col. 4:48-55).
• Key Claims at a Glance:
  • The complaint asserts independent claims 1, 5, and 9, and dependent claims 2-4, 6-8, and 10-13 (Compl. ¶16).
  • Independent Claim 1 (System) recites:
    • A server in communication with a DRD that has a user interface for receiving passcodes.
    • Memory in the server for securely storing data and an associated passcode.
    • The server is configured to render the data on the DRD after a matching passcode is entered on the user interface.
  • Independent Claim 5 (System) adds a limitation where the server is configured to:
    • Enable the DRD to be selected by the WD from more than one DRD registered with the server.
  • Independent Claim 9 (System) further adds a limitation where the server is configured to:
    • Receive a "DRD locator request" from the WD to find a DRD located near the WD.

III. The Accused Instrumentality

• Product Identification: The complaint does not identify any specific accused products, methods, or services by name. It refers generally to "Defendant’s systems, products, and services" (Compl. ¶9, ¶16).
• Functionality and Market Context: The complaint alleges that the accused instrumentalities perform infringing methods related to the "use and management of data retrieved over wireless networks" (Compl. ¶11, ¶18). No specific technical details regarding the operation of any accused product are provided in the complaint. The complaint alleges Defendant derives "monetary and commercial benefit" from the accused activities but offers no further context (Compl. ¶9, ¶16). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint states that support for its infringement allegations for the ’299 Patent and the ’285 Patent can be found in claim charts attached as Exhibit B and Exhibit D, respectively (Compl. ¶10, ¶17). These exhibits were not filed with the complaint.

The narrative infringement theory is that Defendant "maintains, operates, and administers systems, products, and services" that perform methods infringing claims 1-6 of the ’299 Patent and claims 1-13 of the ’285 Patent (Compl. ¶9, ¶16). Without the referenced claim charts or more detailed factual allegations, an element-by-element analysis of the infringement claims is not possible based on the complaint. The complaint does not provide sufficient detail for analysis of potential points of contention.

V. Key Claim Terms for Construction

’299 Patent

• The Term: "data rendering device (DRD)"
• Context and Importance: The definition of a DRD is fundamental to the scope of claim 1. The claim requires locating and interacting with a DRD "in the form of at least one of a video monitor and multimedia projector" (’299 Patent, col. 13:5-7). Whether the accused systems include a component that qualifies as a DRD under this definition will be a central question of infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification provides a broad definition, stating a DRD "includes data rendering hardware (e.g., printers, copiers, displays, etc.) and multimedia software" (’299 Patent, col. 6:51-54). A plaintiff may argue this supports a broad construction covering any device capable of rendering data.
  • Evidence for a Narrower Interpretation: A defendant may argue that the explicit recitation of "a video monitor and multimedia projector" in claim 1 limits the term to those specific examples or closely related devices, distinguishing it from the broader definition in the specification.

’285 Patent

• The Term: "server"
• Context and Importance: Asserted independent claims 1, 5, and 9 are all centered on a "server" that performs key functions like storing data, receiving locator requests, and communicating with DRDs. Practitioners may focus on this term because the nature of Actiontec's business in networking hardware raises the question of whether its products, such as routers or extenders, can be construed as the claimed "server."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification uses the term "network servers" generally in the context of network architecture, without providing a restrictive definition, which could support an argument that any network node performing the claimed functions meets the definition (’285 Patent, col. 7:5-8).
  • Evidence for a Narrower Interpretation: The patent figures depict the server (15) as a distinct architectural element separate from the WD (6), DRD (7), and other network components like a base station (17) (’285 Patent, Fig. 1). A defendant could argue this context implies a centralized, standalone entity, not a distributed function within a consumer-grade router.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. It asserts that Defendant encourages infringement by instructing customers on how to use its products for the "management of data retrieved over wireless networks" and that the products lack substantial non-infringing uses (Compl. ¶¶11-12, 18-19).
• Willful Infringement: The complaint alleges that Defendant has known of the patents-in-suit "from at least the filing date of the lawsuit" (Compl. ¶11, ¶18). This allegation, on its face, supports only a claim for post-suit willful infringement. Plaintiff explicitly reserves the right to amend its complaint to allege pre-suit knowledge should it be discovered (Compl. p. 3, n.1; p. 5, n.3). The prayer for relief seeks a finding of willful infringement and treble damages (Compl. ¶V.e).

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

1. A primary issue will be one of evidence and specificity: Given the complaint's reliance on unprovided exhibits and its failure to name any accused products, a threshold question is whether Plaintiff can produce evidence to tie the specific functionalities of any Actiontec product to the detailed limitations of the asserted claims.
2. The case may also turn on a question of technical scope: Can the term "server", as claimed in the ’285 Patent and depicted in the specification as a distinct network entity, be construed to read on the distributed functionality of consumer networking hardware like routers or wireless extenders?
3. A further issue will be one of definitional scope: For the ’299 Patent, the dispute will likely involve whether any component of the accused system meets the claim’s definition of a "data rendering device", which is recited as being "in the form of at least one of a video monitor and multimedia projector."