Ortiz & Associates Consulting LLC v. Microsoft Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ortiz & Associates Consulting, LLC (New Mexico)
  • Defendant: Microsoft Corporation (Washington)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 7:24-cv-00213, W.D. Tex., 09/06/2024
• 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, employs local personnel, and has committed acts of infringement there.
• Core Dispute: Plaintiff alleges that certain systems, products, and services operated by Defendant infringe patents related to methods for brokering data between wireless devices and data rendering devices like printers and video monitors.
• Technical Context: The technology addresses the challenge of enabling mobile wireless devices to locate and securely send data to nearby, networked output devices (e.g., printers, displays) for rendering.
• Key Procedural History: Plaintiff states it is a non-practicing entity. The complaint notes that Plaintiff and its predecessors have entered into settlement licenses with other entities, but asserts these licenses did not involve admissions of infringement or the production of a "patented article," which may be relevant to pre-suit damages and patent marking requirements.

Case Timeline

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

U.S. Patent No. 9,147,299

• 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, or practically nonexistent" in their ability to render data (e.g., documents, video) on external devices due to small screens and a lack of convenient connectivity to resources like printers or large displays ('299 Patent, col. 4:21-30).
• The Patented Solution: The invention discloses a system where a user's wireless device (WD) can send a request to a network to locate a nearby data rendering device (DRD), such as a printer or projector ('299 Patent, col. 6:63-67). The network uses the WD's location to identify available DRDs and their capabilities, and after the user makes a selection and provides an authorization code, the network facilitates the transfer and rendering of the data at the selected DRD ('299 Patent, Abstract; Fig. 10).
• Technical Importance: The technology aimed to bridge the gap between portable computing devices and fixed, shared peripherals, addressing the growing user demand for "portability" and "information on the go" ('299 Patent, col. 4:31-35).

Key Claims at a Glance

• The complaint asserts claims 1-6 (Compl. ¶9). Independent claim 1 is a method claim with the following key elements:
  • Receiving a request in a wireless network from a wireless device (WD) to locate a data rendering device (DRD) for rendering video data.
  • The request includes WD location information.
  • The network identifies the DRD's physical location, readiness, and capabilities based on the WD's location.
  • The network provides the WD with location information for an accessible DRD.
  • Receiving a selection of a DRD from the WD, made via entry of an "authorization code" at a user interface on the WD and the DRD after it is physically located.
  • Verification of the authorization code causes the DRD to retrieve and render the selected video data.

U.S. Patent No. 9,549,285

• 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 historical challenge for users of early wireless devices who were "restricted in all data use by small device-based viewers" and lacked convenient methods for printing or displaying retrieved data ('285 Patent, col. 4:40-48).
• The Patented Solution: The invention describes a server-based system that acts as a broker between WDs and DRDs. The server receives requests from a WD, helps locate a suitable DRD (potentially based on a user profile), and manages the secure transfer of data for rendering, which is authorized by a passcode entered at the DRD's user interface ('285 Patent, Abstract; Fig. 9).
• Technical Importance: This system provides a centralized architecture for managing access to distributed, publicly or privately available rendering devices from mobile clients ('285 Patent, col. 6:1-6).

Key Claims at a Glance

• The complaint asserts claims 1-13 (Compl. ¶14). Independent claims 1, 5, and 9 are asserted. Independent claim 5 is a system claim with the following key elements:
  • A server in communication with at least one DRD that is registered with the server.
  • The DRD includes a user interface for receiving passcodes.
  • A memory in the server, accessible by the DRD, for securely storing data and an associated passcode.
  • The server is configured to enable the WD to select a DRD from more than one registered DRD via a wireless network.
  • The server is configured to send the stored data and passcode to the selected DRD to be rendered after a passcode entered at the DRD's user interface matches the stored passcode.

III. The Accused Instrumentality

• Product Identification: The complaint does not identify a specific accused product, method, or service by name (Compl. ¶9, ¶14).
• Functionality and Market Context: The complaint alleges that Defendant "maintains, operates, and administers systems, products, and services" that perform the patented methods (Compl. ¶9, ¶14). The accused functionality, as generally described, involves systems that allow users to send data from a device for output on another device, such as a printer or display. The complaint alleges that Defendant put the claimed inventions "into service (i.e., used them)" and derived "monetary and commercial benefit from it" (Compl. ¶9, ¶14). The complaint does not provide sufficient detail for analysis of specific accused features or market context. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits B and D) that were not filed with the public complaint (Compl. ¶10, ¶15). Therefore, the infringement allegations are summarized below based on the narrative text of the complaint.

The Plaintiff's theory of infringement appears to be direct infringement under 35 U.S.C. § 271(a), based on the allegation that Microsoft itself "maintains, operates, and administers" and "put[s] the inventions claimed... into service (i.e., used them)" (Compl. ¶9, ¶14). This suggests an infringement theory based on Microsoft's use of a system that practices the claimed methods, rather than a theory based on Microsoft making or selling an infringing product to end-users.

• Identified Points of Contention:
  • Technical Questions: A primary question will be whether any of Microsoft's systems perform the specific sequence of steps recited in the claims. For the '299 Patent, this includes using a wireless device's location to identify a rendering device and then requiring an "authorization code" entered on both the wireless device and the rendering device to trigger the process. For the '285 Patent, a key question is whether a Microsoft server stores data and an associated passcode, and only renders the data at a remote device after that device receives a matching passcode entry at its own user interface.
  • Scope Questions: The dispute may raise the question of whether the functionality of modern cloud printing or content casting services (if such services are ultimately accused) aligns with the specific architecture described in the patents, which was conceived in the context of early 2000s wireless technology.

V. Key Claim Terms for Construction

For the '299 Patent

• The Term: "authorization code" (Claim 1)
• Context and Importance: This term is central to the claimed security and transaction-completion process. The claim requires the code to be entered at a user interface on both the WD and the DRD "once the DRD is physically located," and verification of this code "causes" the data rendering. The specific nature and function of this code will be critical to the infringement analysis.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests the term can encompass a range of security measures, including "passwords/passcodes, biometrics and/or communications security (COMSEC)" ('299 Patent, col. 5:22-24). This could support an argument that the term is not limited to a simple numeric or alphanumeric string.
  • Evidence for a Narrower Interpretation: The claim's requirement for entry on both devices after the DRD is "physically located" could support a narrower construction tied to a specific, two-part authentication workflow that confirms the user's physical presence at the rendering device ('299 Patent, col. 13:15-24).

For the '285 Patent

• The Term: "passcode" (Claim 5)
• Context and Importance: The claim requires the server to store a passcode associated with the data and to render the data only after a matching passcode is "entered on said user interface" of the DRD. The definition of "passcode" and where it must originate and be verified will be a key point of dispute. Practitioners may focus on this term because its interaction with the server and DRD defines the core security model of the claimed system.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification discusses passcodes in the general context of security and user verification, including biometrics, suggesting the term is not limited to a user-typed password ('285 Patent, col. 10:25-30).
  • Evidence for a Narrower Interpretation: The claim structure, where the passcode is stored in server memory and matched against an entry at the DRD, could be argued to require a specific client-server authentication model where the DRD itself performs or initiates the final verification step ('285 Patent, col. 14:15-19).

VI. Other Allegations

• Indirect Infringement: The complaint does not contain specific allegations of induced or contributory infringement. The infringement counts are based on direct infringement by Defendant (Compl. ¶9, ¶14).
• Willful Infringement: Plaintiff includes a prayer for a finding of willful infringement and treble damages (Compl., p. 7, ¶ e). However, the body of the complaint does not allege any specific facts to support this claim, such as Defendant's pre-suit knowledge of the patents-in-suit.

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

1. Identification of the Accused Instrumentality: A threshold issue for the case will be one of identification. Given the complaint's failure to name any specific Microsoft product or service, the initial phases of litigation will likely focus on compelling Plaintiff to identify precisely which of Defendant's "systems, products, and services" are accused of infringement.
2. Alignment of Technology: A key evidentiary question will be one of functional correspondence. Does any identified Microsoft system actually practice the specific workflow claimed in the patents—particularly the use of a mobile device's geographic location to locate a rendering device, followed by a distinct passcode/authorization step at the rendering device to trigger the final data output?
3. Definitional Scope: The outcome may depend on claim construction. A core issue will be whether terms like "authorization code" and "passcode", as defined within a patent written in 2000, can be construed to read on the security and authentication mechanisms used in modern cloud-based printing and content-sharing ecosystems.