Ortiz & Associates Consulting LLC v. Staples Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ortiz & Associates Consulting, LLC (New Mexico)
  • Defendant: Staples, Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 7:25-cv-00030, W.D. Tex., 01/28/2025
• 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 and has committed the alleged acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s "Instore printing" services infringe a patent related to systems for brokering data between wireless devices and networked rendering devices like printers.
• Technical Context: The technology addresses the secure transfer of data from a personal wireless device to a public or shared output device, such as a printer or display, using a network server as an intermediary.
• Key Procedural History: The complaint states that Plaintiff is a non-practicing entity and has previously entered into settlement licenses with other parties. Plaintiff asserts that these licenses did not involve admissions of infringement or authorize the production of a patented article, which appears to be a pre-emptive argument against a potential defense of failure to mark under 35 U.S.C. § 287.

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

• 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: At the time of the invention's priority date (June 2000), users of handheld wireless devices (WDs) could access data but had limited or nonexistent options for rendering it on physical devices; they were "restricted in all data use by small device-based viewers, limited GUI functionality and unavailable or inconveniently located rendering (e.g., printing/display/retrieval) resources" ('285 Patent, col. 4:41-48).
• The Patented Solution: The invention describes a system to bridge this gap. A user with a wireless device can request to print a document. A central server, communicating with a network of "data rendering devices" (DRDs) like printers, helps the user's device locate a nearby DRD ('285 Patent, col. 7:45-54). The system uses a passcode to securely manage the process: the server receives the data and an associated passcode, and the user enters the matching passcode at the DRD's user interface to authorize the final printing or "rendering" of the data ('285 Patent, col. 14:1-18). This architecture allows a mobile user to securely print to a public or otherwise unassigned printer.
• Technical Importance: The technology aimed to satisfy the growing "desire for 'portability' and 'information on the go'" by creating a functional link between the emerging world of mobile data and the established infrastructure of physical output devices ('285 Patent, col. 4:50-52).

Key Claims at a Glance

• The complaint asserts claims 1-13 (Compl. ¶8).
• Independent Claim 1, a system claim, requires:
  • A server in communication with at least one data rendering device (DRD).
  • The DRD must have a user interface for receiving passcodes and be registered with the server.
  • The DRD accesses and receives data from the server at the request of a wireless device (WD) after a passcode associated with the WD is entered at the DRD's user interface.
  • A memory in the server that securely stores the data and the associated passcode received from or on behalf of the WD.
  • The server is configured to provide the stored data to the DRD for rendering only after a matching passcode is entered at the DRD.

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is Defendant's "Instore printing" service, available via a provided URL (Compl. ¶10).

Functionality and Market Context

• The complaint alleges that this service allows Defendant's customers to practice the patented methods (Compl. ¶10). The system purportedly involves customers sending documents to be printed at a Staples store location. The complaint alleges that Defendant "controls both the manner and timing of infringement" and profits from its customers' use of the service (Compl. ¶10). The complaint does not provide sufficient detail for a more granular technical analysis of the accused service's architecture.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references a claim chart in Exhibit B, which was not filed with the complaint. The following chart summarizes the infringement theory for the lead independent claim based on the complaint's narrative allegations.

’285 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: Claim 1 states the "server is configured... to render said data." A key dispute may arise over whether Defendant's server itself "renders" data, or if it merely transmits data to the DRD, which performs the actual rendering (printing). The resolution will depend on how the court construes the term "render" in the context of the server's role.
• Technical Questions: The complaint's infringement theory relies on the actions of Defendant's customers (e.g., entering a passcode). A central question will be whether Defendant's "control" over the customer's use of the "Instore printing" service is sufficient to establish direct infringement by Defendant under the standard set forth in Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc).

V. Key Claim Terms for Construction

Term: "server ... configured ... to render said data"

• Context and Importance: This term appears in Claim 1 and describes a function of the server. The infringement analysis may turn on whether the server must perform the physical act of rendering (e.g., creating a print-ready image file) or if its role in transmitting data to the DRD for printing is sufficient. Practitioners may focus on this term because its construction could either validate or undermine Plaintiff's infringement theory against a system where rendering is performed exclusively at the DRD.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent repeatedly describes a system where the DRD is the ultimate rendering agent (e.g., "The DRD can then render the data," '285 Patent, col. 13:7-8). This context may support an interpretation where "server...to render" means the server is configured to cause the data to be rendered by the DRD.
  • Evidence for a Narrower Interpretation: A defendant may argue for a plain-meaning interpretation, where the claim language explicitly assigns the "render" function to the server itself. The specification's description of a DRD as including "data rendering hardware (e.g., printers, copiers, displays, etc.)" ('285 Patent, col. 7:6-8) could be used to argue that "rendering" is a distinct function of the DRD, not the server.

Term: "passcode associated with said WD"

• Context and Importance: This term defines the relationship between the security passcode and the user's wireless device. The nature of this "association" is critical, as it dictates how the system's security is implemented and whether the accused service meets this limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests multiple ways a passcode can be used, including being "provided together with a network request by WD user" ('285 Patent, col. 7:31-33). This could support a broad reading where the passcode need only be conceptually linked to the WD-initiated transaction, not necessarily generated or stored on the WD itself.
  • Evidence for a Narrower Interpretation: The claim language links the passcode directly to the wireless device ("passcode associated with said WD"). This could support a narrower construction requiring the passcode to originate from, be stored on, or be uniquely tied to the specific wireless device, as opposed to being merely associated with the user or the transaction.

VI. Other Allegations

Indirect Infringement

• The complaint alleges that Defendant "provides services... that its customers can use to practice the infringing methods" and "controls both the manner and timing of infringement" (Compl. ¶10). These allegations support a claim for induced infringement by asserting that Defendant provides the means (the printing service) and directs its customers on how to use it in an infringing manner.

Willful Infringement

• The complaint does not explicitly allege "willful infringement." However, the prayer for relief requests that the court "declare this case to be 'exceptional' under 35 U.S.C. § 285" (Compl. p. 6, ¶d). A finding of exceptionality, which permits an award of attorneys' fees, is often predicated on a finding of willful infringement or other egregious conduct during litigation. The complaint does not allege pre-suit knowledge of the patent.

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

This case presents foundational questions of claim interpretation and liability for multi-actor systems. The outcome will likely depend on the court's resolution of the following issues:

• A core issue will be one of liability for divided infringement: Can Staples be held directly liable for a method where its customers perform essential steps, such as entering a passcode at an in-store kiosk? The case will test the extent to which providing a service and instructing users constitutes sufficient "control" to attribute the users' actions to the defendant.
• A key legal question will be one of claim construction: The viability of the infringement case may depend on whether the claim term "server...configured...to render said data" can be construed to mean the server causes data to be rendered by a separate device (the DRD), or if it requires the server itself to perform a rendering function.