Ortiz & Associates Consulting LLC v. Macy's Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ortiz & Associates Consulting, LLC (New Mexico)
  • Defendant: Macy's, Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 7:25-cv-00033, W.D. Tex., 01/29/2025
• Venue Allegations: Venue is asserted based on Defendant maintaining a regular and established place of business in the district, committing alleged acts of infringement within the district, and deriving substantial revenue from its business activities there.
• Core Dispute: Plaintiff alleges that Defendant’s website and associated systems infringe a patent related to methods for brokering the transfer of data from a server to a data rendering device at the request of a separate wireless device.
• Technical Context: The technology addresses systems for enabling users of mobile wireless devices to locate and use separate, network-connected devices like printers or displays to render data.
• Key Procedural History: The complaint states that Plaintiff is a non-practicing entity and that it and its predecessors-in-interest have previously entered into settlement licenses with other entities. Plaintiff argues these prior settlements, which did not include admissions of infringement, do not create a patent marking obligation 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: 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 documents or video data because they were restricted by "small device-based viewers, limited GUI functionality and unavailable or inconveniently located rendering...resources" ('285 Patent, col. 3:38-48).
• The Patented Solution: The invention discloses systems and methods that allow a wireless device (WD) to locate a separate, network-connected data rendering device (DRD), such as a printer or projector, and request that data be sent to it for rendering ('285 Patent, Abstract). The system acts as a broker, facilitating the data transfer from a network resource (like a server) to the selected DRD, and can incorporate a security measure where a passcode must be entered at the DRD to authorize the rendering of the data ('285 Patent, col. 5:39-44; Fig. 8).
• Technical Importance: The technology aimed to satisfy the public's desire for "portability" and "information on the go" by creating a more flexible computing paradigm where data retrieval and data rendering could occur on different, dynamically-linked devices ('285 Patent, col. 3:50-52).

Key Claims at a Glance

• The complaint asserts infringement of claims 1-13 of the ’285 Patent (Compl. ¶8). The independent claims are 1, 5, and 9.
• Independent Claim 1 recites a system comprising:
  • A server in communication with at least one data rendering device (DRD) that has a user interface for receiving passcodes, where the DRD is registered with the server.
  • Memory in the server for securely storing data and an associated passcode received on behalf of a wireless device (WD).
  • The server is configured to send the data to the DRD for rendering only after a passcode entered at the DRD's user interface matches the passcode stored in the server's memory.
• The complaint implicitly reserves the right to assert dependent claims by its assertion of the full range of claims 1-13.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are identified as "systems, products, and services" that Defendant "maintains, operates, and administers," including "Defendant's website" (Compl. ¶8, ¶10). The complaint also explicitly names "nike.com" as a service that customers can use to practice the infringing methods (Compl. ¶10).

Functionality and Market Context

The complaint alleges that Defendant provides its website for use by customers and "controls both the manner and timing of infringement" (Compl. ¶10). It asserts that infringement occurs when customers use the website, but provides no specific technical description of the website's features or architecture (Compl. ¶10). The complaint does not provide sufficient detail for analysis of the accused instrumentality's specific functionality.

IV. Analysis of Infringement Allegations

The complaint references an infringement chart in "Exhibit B" to support its allegations but does not include the exhibit (Compl. ¶9). The narrative infringement theory is that "charted method claims are directed towards the elements of Defendant's website that are used by Defendant's customers or in testing" (Compl. ¶10). The complaint advances a theory of direct infringement, stating that "Defendant infringes vicariously by profiting from its customers use of the various Defendant's website" (Compl. ¶10). No probative visual evidence provided in complaint.

Identified Points of Contention

• Factual Sufficiency: A primary issue for the court will be whether the complaint provides sufficient factual detail to support a plausible claim for infringement. The complaint does not specify which features of Defendant's website correspond to the elements of the asserted claims, such as the "wireless device," the "data rendering device," or the "passcode."
• Architectural Questions: The patent claims a three-party system architecture involving a wireless device, a server, and a data rendering device. The infringement theory raises the question of whether a standard two-party e-commerce interaction (where a server sends data to a user's device/browser) can be mapped onto the claimed three-party architecture.
• Technical Questions: The complaint lacks factual allegations to explain how the accused website performs key claimed functions. For instance, what evidence demonstrates that a customer's personal computer or printer is a "DRD registered with said server" as required by claim 1? What action by a user constitutes entering a "passcode...at the user interface" of the DRD to authorize rendering, as distinct from simply logging into a website?

V. Key Claim Terms for Construction

• The Term: "data rendering device (DRD)"

  • Context and Importance: The definition of this term is fundamental to the dispute. The infringement theory appears to require that a customer's own computer, monitor, or printer be considered the "DRD." Practitioners may focus on this term because the viability of the case depends on whether such a device falls within the claim scope, particularly the requirement that it be "registered with said server."
  • Intrinsic Evidence for a Broader Interpretation: The specification provides a general definition of a DRD as including "data rendering hardware (e.g., printers, copiers, displays, etc.) and multimedia software" ('285 Patent, col. 7:6-9), which could be argued to encompass a standard personal computer.
  • Intrinsic Evidence for a Narrower Interpretation: The patent's context repeatedly describes DRDs as separate, "undedicated" resources that a mobile user would need to locate, such as "network-enabled printers, copiers, video-enabled monitors/televisions, [and] multimedia projectors" ('285 Patent, col. 5:25-28). This suggests a device external to the user's immediate personal equipment, not the equipment itself.

• The Term: "passcode...entered at the user interface" [of the DRD]

  • Context and Importance: This term is critical because it defines the security and authorization mechanism. The infringement allegation's strength will depend on whether a typical user action on the accused website, such as entering a login password, meets this limitation.
  • Intrinsic Evidence for a Broader Interpretation: The patent does not narrowly define "passcode," noting that capabilities can include "passwords/passcodes, biometrics and/or communications security (COMSEC)" ('285 Patent, col. 5:42-44).
  • Intrinsic Evidence for a Narrower Interpretation: Figure 8 of the patent depicts a process where data is first "transferred by network to DRD" (step 82), and then a user must "Enter Passcode at DRD" (step 83) before the data is rendered ('285 Patent, Fig. 8). This sequence may support a narrower construction where the passcode is a local authorization step to release data already delivered to the rendering device, rather than a remote server authentication step that occurs before data is transmitted.

VI. Other Allegations

Indirect Infringement

While the complaint contains only a count for direct infringement, it uses language that could support an inducement theory, alleging Defendant provides services that "its customers can use to practice the infringing methods" and "controls both the manner and timing of infringement" (Compl. ¶10).

Willful Infringement

The complaint does not explicitly allege willful infringement. However, it requests that the court declare the case "exceptional" under 35 U.S.C. § 285 and award attorneys' fees, a remedy often tied to findings of willfulness or other litigation misconduct (Compl. p. 6, ¶d). The complaint does not plead facts concerning Defendant's pre- or post-suit knowledge of the patent.

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

• A primary threshold issue will be one of pleading sufficiency: does the complaint, which lacks the referenced "Exhibit B" and contains apparently erroneous references to a third-party website, set forth sufficient factual matter to state a plausible claim for relief under the Twombly/Iqbal standard?
• A core issue will be one of architectural scope: can the patent's claimed three-party system—a wireless device directing a server to send data to a distinct, registered data rendering device—be construed to read on a conventional two-party e-commerce transaction where a server delivers web content directly to the end-user's own device?
• A key claim construction question will be one of functional sequence: does the claimed step of entering a "passcode...at the user interface" of the data rendering device require a local authorization action to release pre-delivered data, as suggested by the patent's figures, or can it cover a remote server authentication that occurs before any data is transmitted to the user's device for rendering?