Ortiz & Associates Consulting LLC v. Sharp Imaging Information Co Of America

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ortiz & Associates Consulting, LLC (New Mexico)
  • Defendant: Sharp Imaging and Information Company of America (New Jersey)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 7:24-cv-00274, W.D. Tex., 10/31/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains 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 content delivery infringe a patent related to brokering data between wireless devices and data rendering devices like networked printers and projectors.
• Technical Context: The technology addresses methods for a user with a wireless device to securely locate and transmit data to a separate, networked output device (e.g., a printer or display) for rendering.
• Key Procedural History: The complaint states that Plaintiff is a non-practicing entity and that it and its predecessors have entered into settlement licenses with other entities, which it contends did not involve admissions of infringement or require patent marking. Plaintiff also notes it has limited its infringement claims to method claims to remove any marking requirement. The patent-in-suit is subject to a terminal disclaimer.

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"

The Invention Explained

• Problem Addressed: The patent describes a technical environment, circa 2000, where users of handheld wireless devices faced significant limitations in their ability to render data. They were generally restricted to small device screens, with rendering solutions on external devices like printers being "severely limited, or practically nonexistent" ('285 Patent, col. 4:35-48).
• The Patented Solution: The invention proposes a system where a wireless device (WD) can initiate the rendering of data on a separate "data rendering device" (DRD), such as a networked printer or multimedia projector. This process is mediated by a network server that can locate an appropriate DRD, manage the data transfer, and provide security, such as requiring a passcode to be entered at the DRD before the data is rendered ('285 Patent, Abstract; col. 5:32-44). The overall system architecture is depicted in Figure 1, which illustrates the interaction between WDs, networks, servers, and DRDs ('285 Patent, Fig. 1).
• Technical Importance: The described technology aimed to increase the utility and convenience of early wireless devices by allowing users to leverage commonly available, but previously inaccessible, networked output devices for tasks like printing documents or displaying presentations ('285 Patent, col. 4:49-54).

Key Claims at a Glance

• The complaint asserts infringement of claims 1-13 (Compl. ¶9). The independent claims are 1, 5, and 9.
• Independent Claim 1 recites a system for rendering data comprising:
  • A server in communication with a data rendering device (DRD) that has a user interface for receiving passcodes.
  • Memory in the server for storing data and a passcode received from or on behalf of a wireless device (WD).
  • The server is configured to render the data at the DRD after a passcode entered at the DRD's user interface matches the stored passcode.
• Independent Claim 5 adds to the system of Claim 1, further requiring the server to be configured to:
  • Enable the DRD to be selected by the WD, via a wireless network, from among more than one DRD registered with the server.
• Independent Claim 9 adds to the system of Claim 1, further requiring the server to be configured to:
  • Receive a "DRD locator request" from the WD to find at least one DRD "that is located near the WD."
• The complaint asserts dependent claims 2-4, 6-8, and 10-13, which add limitations such as the type of DRD (e.g., printer, projector) and how the passcode is provided.

III. The Accused Instrumentality

Product Identification

The complaint broadly accuses Defendant's "systems, products, and services" (Compl. ¶9). It identifies the relevant technologies as those involving "networked printers" and "multimedia devices (e.g., televisions, video monitors, and projectors)" (Compl. ¶8).

Functionality and Market Context

The complaint alleges that Defendant "maintains, operates, and administers" systems that perform infringing methods of providing data to these rendering devices at the request of wireless devices (Compl. ¶9). It further alleges that Defendant has put the patented inventions into service and derives "monetary and commercial benefit from it" (Compl. ¶9). The complaint does not provide specific names of accused Sharp products, software, or services, nor does it describe their technical operation in detail. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references an infringement chart in Exhibit B, which was not available for this analysis (Compl. ¶10). The narrative infringement theory is that Defendant's systems, which incorporate networked printers and other display devices, perform the methods recited in the claims of the ’285 Patent (Compl. ¶8, ¶9). The Plaintiff alleges that Defendant's systems provide data to "data rendering devices" at the request of "wireless devices," thereby infringing claims 1-13 of the ’285 Patent, either literally or under the doctrine of equivalents (Compl. ¶8-9).

Identified Points of Contention

• Scope Questions: A central issue may be whether the architecture of the accused Sharp systems maps to the "server," "wireless device (WD)," and "data rendering device (DRD)" structure required by the claims. The analysis will question if a single "server" component in Sharp's system performs all the recited functions, particularly storing data and a passcode, and then authorizing rendering based on a match.
• Technical Questions: The complaint does not provide facts explaining how the accused systems meet the "passcode" limitations. A key technical question is what feature of the accused systems constitutes a "passcode associated with said WD" that is "entered at the user interface" of the DRD, as the claims require. Further, for claims 5 and 9, the court will need to determine if the accused systems perform the specific "locating" and "selecting" functions for DRDs as claimed.

V. Key Claim Terms for Construction

The Term: "passcode associated with said WD" (Claim 1)

Context and Importance

This term is central to the claimed security and authorization method. The outcome of the infringement analysis may depend on whether routine user authentication credentials in a modern networked environment meet this definition.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The specification suggests the term is not limited to a string of characters, referencing "passwords/passcodes, biometrics and/or communications security (COMSEC)" ('285 Patent, col. 5:42-44). This may support an interpretation that includes a range of authentication factors.
• Evidence for a Narrower Interpretation: The figures and description repeatedly depict a specific workflow where a code is entered at the DRD to authorize a specific print or display job ('285 Patent, Fig. 8, element 83; col. 12:2-8). This could support a narrower construction limited to a transaction-specific credential, as opposed to a general user login password.

The Term: "server" (Claim 1)

Context and Importance

The claims require a "server" to perform a specific set of coordinated tasks. Whether the accused instrumentality infringes may turn on whether its architecture, which could be centralized, distributed, or cloud-based, contains a component that qualifies as the claimed "server."

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The patent does not provide an explicit definition for "server," potentially allowing the term to cover any computational entity that performs the claimed functions, regardless of its physical or virtual form.
• Evidence for a Narrower Interpretation: The patent's diagrams from the 2000-2001 timeframe depict a "network server" (element 15) as a discrete component in the network architecture, separate from the WD and DRD ('285 Patent, Fig. 1; col. 7:30). This may support an argument that the term requires a distinct architectural element, not functionality that is distributed or embedded within the DRD itself.

The Term: "located near the WD" (Claim 9)

Context and Importance

This relative term in claim 9 is crucial for infringement of that claim and is open to interpretation. Practitioners may focus on this term because its construction will define the geographic or logical scope of the required "locator" function.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The patent suggests location can be based on a "profile," which could define "near" broadly, such as within the same corporate campus ('285 Patent, col. 12:15-22).
• Evidence for a Narrower Interpretation: The specification also provides more concrete examples, such as location being "in the same room" or determined by GPS, which could support a more restrictive definition of physical proximity ('285 Patent, col. 11:42-46).

VI. Other Allegations

Indirect Infringement

The complaint does not plead a separate count for indirect infringement. However, it alleges that "Defendant put the inventions claimed by the '285 Patent into service" and that "but for Defendant's actions, the claimed-inventions embodiments involving Defendant's products and services would never have been put into service" (Compl. ¶9). This language suggests a potential theory of induced infringement, based on Defendant providing the systems and services that enable end-users to perform the allegedly infringing methods.

Willful Infringement

The prayer for relief seeks a finding of willful infringement and enhanced damages (Compl. p. 6, ¶e). The complaint body, however, does not plead any specific facts to support this claim, such as allegations of pre-suit or post-suit knowledge of the ’285 Patent.

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

• A core issue will be one of definitional scope: can the term "passcode associated with said WD," as described in a patent with a 2000 priority date, be construed to cover modern user authentication mechanisms in networked printing and display systems, or is its meaning limited to the specific transaction-authorization workflows described in the patent’s embodiments?
• A key evidentiary question will be one of architectural mapping: can Plaintiff demonstrate that the accused Sharp systems, which may be architecturally distributed or cloud-based, contain a "server" component that performs the specific, consolidated set of functions required by the claims, including storing data, receiving a passcode from the DRD, and authorizing rendering?
• The case may also turn on a question of functionality: what evidence exists that the accused systems perform the active "locating" and "selecting" functions required by independent claims 5 and 9, which demand that a server find a DRD "near the WD" or enable selection from among multiple registered devices? The general allegations in the complaint do not specify how this is accomplished.