Ortiz & Associates Consulting LLC v. Kroger Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ortiz & Associates Consulting, LLC (New Mexico)
  • Defendant: The Kroger Co. (Ohio)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 7:25-cv-00034, W.D. Tex., 01/29/2025
• Venue Allegations: Venue is asserted based on Defendant maintaining a "regular and established place of business" within the Western District of Texas and committing the alleged acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s website and mobile payment systems infringe a patent related to brokering data between a wireless device and a separate data rendering device via a network server.
• Technical Context: The technology concerns systems for securely initiating the rendering of data (e.g., printing or display) on an external device from a personal wireless device, a field relevant to enterprise IT, public kiosks, and mobile payment infrastructure.
• Key Procedural History: Plaintiff identifies itself as a non-practicing entity and discloses that it and its predecessors-in-interest have entered into prior settlement licenses. The complaint preemptively argues that these past settlements do not trigger patent marking requirements under 35 U.S.C. § 287(a), potentially to counter an anticipated defense from the Defendant regarding limitations on damages.

Case Timeline

Date	Event
2000-06-27	'285 Patent Priority Date
2017-01-17	'285 Patent Issue Date
2025-01-29	Complaint Filing Date

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, issued January 17, 2017.

The Invention Explained

• Problem Addressed: The patent describes a technical environment, circa 2000, where users of handheld wireless devices were "restricted in all data use by small device-based viewers, limited GUI functionality and unavailable or inconveniently located rendering...resources" ('285 Patent, col. 4:42-48). The core problem was the difficulty of printing or displaying data retrieved on a mobile device onto a more capable, external device like a printer or large monitor.
• The Patented Solution: The invention proposes a system architecture to solve this problem by using a server to act as an intermediary. A user with a wireless device (WD) can request that data be sent to a separate data rendering device (DRD) via a network ('285 Patent, Fig. 8). The system incorporates a security feature where the user provides a "passcode" at the DRD to authorize the final data rendering, ensuring that the data is retrieved securely at the intended device ('285 Patent, col. 5:39-44).
• Technical Importance: This architecture provided a method for secure, on-demand remote printing and data display from a mobile device, predating many of the now-common integrated wireless printing and display standards.

Key Claims at a Glance

• The complaint asserts claims 1-13 (Compl. ¶8). The lead independent claims appear to be 1, 5, and 9.
• Independent Claim 1 recites a system comprising:
  • A server in communication with a data rendering device (DRD) that has a user interface for receiving passcodes.
  • The DRD is registered with the server to receive data from a wireless device (WD) via a communications network.
  • Rendering occurs in response to a passcode associated with the WD being entered at the DRD's user interface.
  • Memory in the server securely stores the data and the passcode.
  • The server is configured to render the data after the passcode entered at the DRD matches the stored passcode.
• Independent Claim 5 adds a selection element, requiring the server to be configured to enable the WD to select the DRD from among more than one registered DRD.
• Independent Claim 9 adds a location element, requiring the server to be configured to receive a "DRD locator request" from the WD to find a DRD that is "located near the WD."
• The complaint reserves the right to assert dependent claims (Compl. ¶8).

III. The Accused Instrumentality

Product Identification

• The complaint identifies "Defendant's websites Kroger.com (e.g., https://www.kroger.com/d/kroger-mobile-pay)" as the accused instrumentality (Compl. ¶10). This points to a system involving Kroger's web servers, a customer's mobile device, and in-store point-of-sale (POS) hardware.

Functionality and Market Context

• The complaint alleges that these systems perform methods that infringe the '285 patent (Compl. ¶8). The specific mention of "Kroger Mobile Pay" suggests the accused functionality involves a customer using a smartphone (the WD) to initiate a payment at an in-store checkout terminal (the potential DRD), with the transaction being processed and authorized by Kroger's backend servers. The complaint asserts that Defendant profits from its customers' use of this system (Compl. ¶10).

IV. Analysis of Infringement Allegations

The complaint references a claim chart in "Exhibit B" that was not included with the pleading (Compl. ¶9). The infringement theory must therefore be inferred from the complaint's narrative allegations. No probative visual evidence provided in complaint.

'285 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A system for rendering data provided via a data communications network at the request of a wireless device, comprising: a server in communication with at least one data rendering device (DRD), said at least one DRD including a user interface for receiving passcodes...	Kroger's backend servers which are in communication with its in-store point-of-sale (POS) terminals. The POS terminals are alleged to be the DRDs, and their customer-facing interfaces (e.g., PIN pad, scanner) are alleged to be the user interface for receiving passcodes.	¶8, ¶10	col. 13:31-34
...the DRD registered with said server to access and receive data over a data communications network at the request of a wireless device (WD) for rendering of the data at the at least one DRD in response to a passcode associated with said WD being entered at the user interface...	A customer's smartphone running the Kroger application is alleged to be the WD. The system allegedly requires an authentication action at the POS terminal (e.g., scanning a QR code, entering a PIN) to complete the transaction, which Plaintiff alleges is the "passcode."	¶10	col. 13:35-40
...memory in said server accessible by said DRD, said memory for securely storing data received by or on behalf of said WD and said passcode associated with said WD...	Kroger's server databases that store customer account information, transaction data, and authentication credentials.	¶8, ¶10	col. 13:40-44
...wherein said server is configured to receive said data and said passcode...and to render said data after at least one passcode is entered on said user interface that matches said passcode stored in said memory...	Kroger's system architecture, which allegedly processes the transaction only after the authentication "passcode" provided at the POS terminal is validated against the information stored on its servers.	¶8, ¶10	col. 14:1-9

Identified Points of Contention

• Scope Questions: A central dispute may be whether a point-of-sale terminal, whose function is primarily transactional, constitutes a "data rendering device" as described in the patent. The patent's specification focuses heavily on printers and multimedia displays ('285 Patent, col. 1:40-45), but also mentions "automatic teller machines (ATMs)," which are transactional, potentially supporting a broader interpretation ('285 Patent, col. 7:63-64).
• Technical Questions: The analysis may turn on what constitutes a "passcode" being "entered." It raises the question of whether an action like scanning a QR code generated by a mobile app at a POS terminal is equivalent to a user "entering" a passcode at the DRD's user interface, as required by the claim language.

V. Key Claim Terms for Construction

The Term: "data rendering device (DRD)"

• Context and Importance: The applicability of the patent to the accused Kroger Mobile Pay system hinges on whether a retail POS terminal qualifies as a DRD. Practitioners may focus on this term because the patent's examples are a mix of display-oriented and transaction-oriented devices.
• Intrinsic Evidence for a Broader Interpretation: The specification provides a non-exhaustive list of DRDs that includes "printers, photocopiers, fax machines, automatic teller machines (ATMs), video monitors, projectors" ('285 Patent, col. 7:62-65). The inclusion of ATMs may support an interpretation that covers devices performing financial transactions.
• Intrinsic Evidence for a Narrower Interpretation: The patent's abstract, background, and summary repeatedly frame the invention as solving the problem of "printing documents" or "displaying video data" ('285 Patent, Abstract; col. 1:40-45). A party could argue the term should be limited to devices whose primary purpose is the visual rendering of information for human review, not financial processing.

The Term: "passcode ... being entered at the user interface"

• Context and Importance: This term is critical to determining if the authentication process in the accused system meets the claim limitations. The method of authentication in modern mobile payment systems (e.g., QR codes, NFC taps) differs from the traditional notion of "entering" a code.
• Intrinsic Evidence for a Broader Interpretation: The patent itself does not strictly define "entered," which could allow for an interpretation that includes non-manual actions like scanning a code presented to the DRD's interface. The term "passcode" is also defined broadly to include not just passwords but also "biometrics and/or communications security (COMSEC)" ('285 Patent, col. 5:42-44).
• Intrinsic Evidence for a Narrower Interpretation: A party could argue that in the context of the patent's 2000 priority date, "entered at the user interface" implies a user manually typing a string of characters on a keypad, and that scanning a QR code is a fundamentally different type of machine-to-machine data transfer, not a user "entry."

VI. Other Allegations

Indirect Infringement

• The complaint alleges that "Defendant infringes vicariously by profiting from its customers use" and "controls both the manner and timing of infringement" (Compl. ¶10). This language suggests a theory of induced infringement, where Defendant is alleged to provide its customers with the means to infringe (the Kroger app and system) and encourages them to do so.

Willful Infringement

• The prayer for relief includes a request for a finding of willful infringement and enhanced damages (Compl. p. 6, ¶d). However, the complaint does not plead specific facts alleging that Defendant had pre-suit knowledge of the '285 patent, which is typically required to support a claim for pre-suit willful infringement.

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

• A core issue will be one of definitional scope: Can the term "data rendering device", which is rooted in a 2000-era patent focused on remote printing and display, be construed to cover a modern retail point-of-sale terminal used for mobile payments?
• A key evidentiary question will be one of functional mechanism: Does the authentication method used in the accused Kroger Mobile Pay system—which may involve scanning a QR code or an NFC tap—constitute a "passcode...being entered at the user interface" of the terminal in the manner required by the claim language?
• The case will likely raise the issue of divided infringement: Given that the system involves components controlled by both Kroger (servers, POS terminals) and its customers (mobile devices), a central legal question will be whether Kroger directs or controls its customers' actions to the extent necessary to be liable for infringing the system claims as a single entity.