Ortiz & Associates Consulting LLC v. Costco Wholesale Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ortiz & Associates Consulting, LLC (New Mexico)
  • Defendant: Costco Wholesale Corporation (Washington)
  • Plaintiff’s Counsel: Attorneys for Ortiz & Associates Consulting, LLC.
• Case Identification: 7:25-cv-00032, W.D. Tex., 01/28/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district, has committed acts of infringement in the district, and conducts substantial business in the forum.
• Core Dispute: Plaintiff alleges that Defendant’s systems and services for providing data to rendering devices infringe a patent related to brokering data between wireless devices and networked peripherals like printers or displays.
• Technical Context: The technology addresses methods for a user of a wireless device (e.g., a smartphone) to locate and securely send data (e.g., photos) to a separate, networked device (e.g., a photo printing kiosk) for rendering.
• Key Procedural History: Plaintiff identifies itself as a non-practicing entity that has never sold a product. The complaint discloses that Plaintiff and its predecessors have entered into settlement licenses with other entities following litigation, but asserts these licenses did not involve admissions of infringement or authorize the production of a patented article, and thus do not trigger marking requirements under 35 U.S.C. § 287(a).

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," issued January 17, 2017.

The Invention Explained

• Problem Addressed: At the time of the invention's priority date, users of handheld wireless devices faced significant challenges in rendering data, as solutions for printing documents or displaying video from such devices were "severely limited, or practically nonexistent" ('285 Patent, col. 4:40-42). Users were often constrained by small device screens and the lack of convenient access to rendering resources like printers or large displays ('285 Patent, col. 4:42-49).
• The Patented Solution: The invention describes a system that allows a wireless device (WD) to connect with a networked data rendering device (DRD), such as a printer or projector, to render data. A central server brokers this interaction, potentially helping the WD locate a nearby DRD and managing the secure transfer of data, which can be protected by a passcode entered at the DRD ('285 Patent, Abstract; col. 7:18-28). This architecture decouples the portable wireless device from the fixed rendering hardware, connecting them via a network.
• Technical Importance: This approach sought to increase the utility of early portable devices (like PDAs) by enabling them to leverage more powerful, fixed-location peripherals for tasks like printing and presentations, a key step in making mobile computing more functional ('285 Patent, col. 4:49-54).

Key Claims at a Glance

The complaint asserts infringement of claims 1-13 (Compl. ¶8). The independent claims are 1, 5, and 9.

• Independent Claim 1: A system comprising:
  • A server in communication with at least one data rendering device (DRD).
  • The DRD includes a user interface for receiving passcodes.
  • The DRD is registered with the server to access and receive data.
  • Memory in the server for securely storing data and a passcode associated with a wireless device (WD).
  • The server is configured to send the data and passcode to the DRD, which renders the data after a matching passcode is entered on its user interface.
• Independent Claim 5: A system similar to claim 1, which adds the limitation that the server is configured to:
  • Enable the WD to select a DRD from more than one DRD registered with the server.
• Independent Claim 9: A system similar to claim 5, which adds the limitation that the server is configured to:
  • Receive a "DRD locator request" from the WD.
  • Find a DRD near the WD from among the registered DRDs.

The complaint does not explicitly reserve the right to assert other dependent claims, but the general assertion of claims 1-13 covers the dependent claims within that range.

III. The Accused Instrumentality

Product Identification

The complaint does not identify a specific accused product, service, or system by name. It broadly accuses "systems, products, and services that performs a method that infringes" which are "maintain[ed], operate[d], and administer[ed]" by Defendant (Compl. ¶8).

Functionality and Market Context

The complaint alleges the accused systems perform a method for "providing data, such as documents and video, to data rendering devices (DRDs) including networked printers...and multimedia devices...at the request of wireless devices" (Compl. ¶7). The complaint does not provide sufficient detail for analysis of the specific technical functionality or market context of any particular Costco product or service.

IV. Analysis of Infringement Allegations

The complaint states that a chart supporting the infringement allegations is attached as Exhibit B (Compl. ¶9). However, no exhibits were filed with the complaint. As such, the infringement theory is based on the narrative allegations in the complaint.

The core of the infringement theory is that Costco operates systems that allow users of wireless devices to send data to rendering devices like printers or multimedia displays (Compl. ¶7). The complaint alleges that in doing so, "Defendant put the inventions claimed by the '285 Patent into service" (Compl. ¶8). The phrasing suggests that Costco provides the server-and-DRD infrastructure, and its customers, using their own wireless devices, complete the infringing system.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Factual Question: The primary point of contention will be evidentiary. The complaint's failure to identify a specific accused product or system (e.g., Costco's in-store Photo Center kiosks, its website, or mobile app) creates a fundamental ambiguity. Discovery will be required to determine if any Costco system actually performs the server-brokering, device location, and passcode-entry functions required by the asserted claims.
  • Scope Questions: A likely dispute will concern the mapping of real-world components to claim terms. For instance, does a customer's login to a Costco Photo account constitute the "passcode associated with said WD" as required by claim 1, or does the claim require a session-specific or device-specific code? Furthermore, what elements of Costco's infrastructure constitute the claimed "server" versus the "data rendering device"?

V. Key Claim Terms for Construction

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

• Context and Importance: The definition of this term is critical for determining infringement. The dispute will likely center on how closely the "passcode" must be tied to the specific "wireless device" (WD) or the rendering transaction itself. Practitioners may focus on this term because if it can be read broadly to include any generic user account password, the claim scope is significantly larger than if it is limited to a code generated for a specific device or session.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification lists "passwords/passcodes, biometrics and/or communications security (COMSEC)" as examples of "passcode capabilities," suggesting the term is not meant to be narrowly restricted ('285 Patent, col. 5:42-44).
  • Evidence for a Narrower Interpretation: The claim language "associated with said WD" could suggest a specific link is required between the code and the device itself, rather than just the user. The patent also describes scenarios of direct, local communication (e.g., IR or RF) between a WD and a DRD, which may imply a tighter, session-based association ('285 Patent, col. 5:20-23).

The Term: "data rendering device (DRD)" (Claim 1)

• Context and Importance: This term defines the endpoint hardware of the claimed system. Its construction will determine what types of products can be accused DRDs.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification provides a non-exhaustive list of examples, including "network-enabled printers, copiers, video-enabled monitors/televisions, multimedia projectors, and other multimedia-enabled devices" ('285 Patent, col. 5:24-28). This suggests the term covers a wide array of output peripherals.
  • Evidence for a Narrower Interpretation: The patent repeatedly characterizes DRDs as "undedicated" or "unassigned" resources available for public or enterprise use ('285 Patent, col. 5:6-9). An argument could be made that a device owned and used exclusively by a single user would not qualify as a DRD in the context of the invention.

VI. Other Allegations

• Indirect Infringement: The complaint does not include a formal 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. ¶8). This language suggests a potential theory of induced infringement, where Defendant is alleged to provide a system that encourages or enables its customers (the WD users) to perform the final steps of the claimed method.
• Willful Infringement: The complaint does not allege facts to support pre-suit knowledge of the '285 patent or willful infringement.

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

• A primary issue will be one of evidentiary proof: Can the Plaintiff, through discovery, identify a specific Costco system (e.g., its Photo Center service) and demonstrate that its technical architecture—including its servers, user authentication methods, and in-store kiosks—maps directly onto the server-WD-DRD structure recited in the asserted claims? The complaint's initial vagueness makes this the central factual hurdle.
• A second core issue will be one of definitional scope: Can the term "passcode associated with said WD" be construed to cover a general-purpose user account login for a commercial service, or does the intrinsic evidence limit the term to a more specific, temporary, or device-linked code intended to secure a particular rendering transaction?
• A third key question will relate to damages and past conduct: Given the Plaintiff's status as a non-practicing entity and its disclosure of prior settlement agreements, the relevance and nature of those licenses will likely be a significant point of contention in discovery, particularly in establishing a reasonable royalty if infringement is found.