Litigation
Untitled case
1:21-cv-00066
Patents at issue (1)
Summary
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
Case Overview: Flexiworld Technologies, Inc. v. Canon, Inc. et al., No. 1:21-cv-00066 (W.D. Tex.)
Parties and accused technology. The plaintiff is Flexiworld Technologies, Inc., a Vancouver-area patent monetization firm founded by inventor William Ho Chang (named co-inventor on the asserted patents and identified in the complaint as Flexiworld's founder/president). RPX and Unified Patents both classify Flexiworld as a non-practicing entity/patent assertion entity that enforces a large portfolio of wireless-printing and digital-content-delivery patents against printer OEMs. The defendants are Canon, Inc. (the Japanese parent) and Canon Solutions America, Inc. (its U.S. subsidiary). The complaint, filed January 21, 2021, alleged that Canon "makes, uses, sells, offers to sell, and/or imports into the United States wireless printers (and a computer readable medium)" infringing the asserted patents, "including but not limited to Canon's imageCLASS and imageRUNNER wireless printers (and Canon's PRINT Business App)" — i.e., the accused instrumentalities were Canon's Wi-Fi/AirPrint-enabled office printers and companion mobile print apps, with infringement theories centered on wireless printer discovery, connection, and receipt of print data from smartphones/tablets (per the claim charts and Law Street Media's contemporaneous reporting).
Patents asserted. Flexiworld asserted five patents from its wireless-printing family: U.S. Patent Nos. 9,036,181; 10,140,071; 10,481,846; 10,642,576; and 10,761,791. The '181 patent — the one flagged in the case metadata — is titled "Wireless printing device for printing digital content received via wireless communication compatible, at least partly, with IEEE 802.11 or Bluetooth" (filed 2009, issued 2015, claiming priority to Flexiworld's early-2000s wireless applications); technically, it claims a printing device that wirelessly receives digital content over 802.11/Bluetooth and renders it into print data. The '071 patent, "Printers, print controllers, printer software, or printer firmware for supporting wireless printing or printing over air," was asserted via claims 1–7 and covers wireless printing where the device broadcasts its availability for discovery, transmits an output-device profile to the discovering mobile device, and wirelessly receives print data. The '846, '576, and '791 patents are companion patents in the same wireless-printing portfolio (I could not confirm their individual titles from accessible sources, so I flag that as unverified). Flexiworld alleged direct, induced, and contributory infringement and sought damages, interest, and a jury trial.
Procedural posture, venue, and significance. The case was assigned to Judge Robert Pitman in the Western District of Texas. The docket (Justia/UniCourt/PACER-derived) shows: summons issued January 22, 2021; Canon Solutions America served January 26; Canon, Inc. signed a waiver of service February 8; then, on February 11, 2021, Flexiworld filed a Notice of Voluntary Dismissal (dkt. 10), and Judge Pitman signed the Order Closing Case the next day (dkt. 11), with the AO 120 report sent to the USPTO on March 2, 2021. The case thus terminated roughly three weeks after filing, with no answer, no claim construction, and no merits ruling. Although some trade press (The Recycler) and the RPX complaint copy describe a "Waco Division" filing, the case number prefix ("1:") and the assignment to Judge Pitman with referrals to Magistrate Judge Austin indicate the Austin docket — a discrepancy worth noting given that W.D. Tex. was then the national epicenter of patent litigation (the "rocket docket" era). The case is notable as part of Flexiworld's serial NPE campaign against printer OEMs, and its abrupt voluntary dismissal — without prejudice — is characteristic of a licensing-driven enforcement strategy rather than litigation to judgment. The broader portfolio has drawn continued scrutiny: Unified Patents, which lists Flexiworld as an NPE, filed ex parte reexaminations against related Flexiworld patents (e.g., RE48,066, challenged in 2025), though no IPR or PTAB proceeding tied to this specific Canon case has been identified in the sources reviewed.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
Based on my research, here is the chronological account of the litigation. One important framing note up front: this case never got past its first three weeks — it was voluntarily dismissed before any defendant answered, so the substantive litigation (claim construction, summary judgment, trial) all occurred, if at all, in a successor case filed the same day the first case was dismissed.
1. Case identification
- Case: Flexiworld Technologies, Inc. v. Canon, Inc. et al., No. 1:21-cv-00066 (W.D. Tex., Austin Division)
- Filed: 2021-01-21 (Complaint, Dkt. 1; cause of action 35 U.S.C. § 271; jury demanded)
- Court / Judge: U.S. District Court for the Western District of Texas, assigned to Judge Robert Pitman (Austin; the case would have been referred to Magistrate Judge Austin for consent matters, per the standard assignment text on the docket)
- Parties: Plaintiff Flexiworld Technologies, Inc. (Vancouver, WA, a company founded by inventor William Ho Chang); Defendants Canon, Inc. (Japan) and Canon Solutions America, Inc.
- Patent at issue: U.S. Patent No. 9,036,181 ("Wireless printing device for printing digital content received via wireless communication compatible, at least partly, with IEEE 802.11 or Bluetooth"), which Google Patents' litigation tab ties to this docket. The complaint attached ten exhibits (Dkt. 1-1 through 1-10), and Flexiworld's related filings in this campaign suggest the '181 patent may have been asserted alongside other wireless-printing family members — but the exact patent list in the 1:21-cv-00066 complaint is not visible in the public docket text I retrieved, so treat that as unconfirmed.
- Plaintiff's counsel: Timothy E. Grochocinski and Joseph Paul Oldaker (Nelson Bumgardner Conroy PC), who appeared on the filing date (Dkts. 1, 5).
2. Filing and initial pleadings
- 2021-01-21 (Dkt. 1): Complaint for patent infringement filed; AO 120 patent/trademark form filed (Dkt. 4); Certificate of Interested Parties filed (Dkt. 3); summons requested (Dkt. 2).
- 2021-01-22 (Dkt. 7): Summons issued as to Canon Solutions America.
- 2021-01-26 / 2021-01-28 (Dkt. 8): Summons returned executed on Canon Solutions America, Inc., served 2021-01-26; answer due 2021-02-16.
- 2021-02-08 / 2021-02-11 (Dkt. 9): Waiver of service returned executed for Canon, Inc. (waiver sent 2021-02-08; answer due 2021-04-09).
- No answer, counterclaims, or third-party pleadings were ever filed — the case terminated before either defendant's answer deadline.
3. Pre-trial motions of substance
- None. Because the case was dismissed ~3 weeks after filing, there were no motions to dismiss, no motions to transfer, no stays pending IPR, and no summary judgment motions in this docket.
4. Claim construction (Markman)
- Did not occur. The case was dismissed before any scheduling order, discovery, or Markman proceedings.
5. Discovery milestones
- None of strategic significance — the case closed before discovery opened.
6. Trial / verdict / post-trial motions
- None. No trial, verdict, JMOL, new-trial motion, or fee motion in this case.
7. Final disposition and posture
- 2021-02-11 (Dkt. 10): Flexiworld filed a Notice of Voluntary Dismissal under Rule 41(a)(1) — dismissal without prejudice (the dismissal was clearly not with prejudice, since Flexiworld refiled the same day).
- 2021-02-12 (Dkt. 11): Judge Pitman entered the Order Closing Case.
- 2021-03-02 (Dkt. 12): Report on Patent/Trademark sent to the USPTO.
- Status: Closed. The case is a procedural artifact of Flexiworld's forum strategy: contemporaneous coverage ("Flexiworld Technologies Dismisses One Lawsuit against Canon but Files Another," Courthouse Briefings/Actionable Intelligence) confirms the dismissal was tied to a refiling.
The successor case and true outcome of the dispute
- 2021-02-11: The same day it dismissed this Austin case, Flexiworld refiled the same wireless-printing patent claims against the same defendants in the Waco Division — Flexiworld Technologies, Inc. v. Canon, Inc. et al., 6:21-cv-00143-ADA (Judge Alan D. Albright). That complaint expressly asserted U.S. Patent Nos. 9,036,181 ('181), 10,140,071 ('071), 10,481,846 ('846), 10,642,576 ('576), and 10,761,791 ('791) against Canon's imageClass and imageRUNNER wireless printers and Canon's printing apps (The Recycler, Feb. 2021 coverage). This confirms the '181 patent's active assertion was in the Waco case.
- 2021-08-26: The parties resolved the dispute. Flexiworld filed a Notice of Voluntary Dismissal With Prejudice in 6:21-cv-00143 under Rule 41(a)(1)(A)(i) — the notice states the complaint was filed 2021-02-11 and that defendants had not yet answered or moved for summary judgment (PDF on file at action-intell.com). Court-briefing coverage characterizes this as a settlement ("Flexiworld and Canon Resolve Patent Dispute," Aug. 2021).
So the practical outcome for the Canon dispute: settled and dismissed with prejudice in August 2021, roughly seven months after the initial Austin filing, with no merits adjudication at any stage. Terms are confidential and were not disclosed.
8. Parallel PTAB IPR/PGR proceedings
- I found no evidence of any PTAB IPR or PGR petition by Canon against the '181 patent (or against the related patents) tied to this dispute in my searches. Given the extremely short life of the Austin case (dismissed before any answer), no IPR stay motion or IPR-based strategy ever materialized in 1:21-cv-00066.
- Note on the broader campaign: Flexiworld's patent family has been challenged in IPRs filed by other petitioners in other litigations (e.g., against Samsung, Amazon, and other printer/device makers), but I could not verify any specific Canon-filed IPR on '181, and none affected this docket. If you need a definitive PTAB check, the USPTO's PTAB API/portal (searching petitioner "Canon" against patent 9,036,181) would be the authoritative source — my web search did not surface one.
Bottom line
1:21-cv-00066 is a dismissed-without-prejudice shell case: filed 2021-01-21 against Canon, Inc. and Canon Solutions America, Inc. in Austin (Judge Pitman), voluntarily dismissed 2021-02-11 before any answer, and administratively closed 2021-02-12 (Dkt. 11). Flexiworld immediately refiled in Waco (6:21-cv-00143-ADA, Judge Albright), where the '181 patent was formally asserted alongside four siblings, and the entire dispute was settled and dismissed with prejudice on 2021-08-26. There were no substantive rulings, no Markman order, no discovery, no trial, and no IPR on this docket — the only "developments" of note are the forum-shifting dismissal/refiling and the eventual confidential settlement.
Sourcing caveats: Docket entries 1–12 are corroborated by UniCourt and Justia docket mirrors of 1:21-cv-00066; the 2021-02-11 dismissal and 2021-02-12 closing order match both. The with-prejudice settlement dismissal of the successor Waco case is corroborated by the filed notice of dismissal (action-intell.com PDF) and trade-press summaries. The patent list in the original 1:21-cv-00066 complaint and the settlement terms are not publicly confirmed in the materials I retrieved.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Nelson Bumgardner Conroy
- Timothy E. Grochocinski · lead counsel
- Joseph Paul Oldaker · appearing counsel
Counsel of Record for Plaintiff Flexiworld Technologies, Inc.
Case: Flexiworld Technologies, Inc. v. Canon, Inc. et al., No. 1:21-cv-00066 (W.D. Tex., filed Jan. 21, 2021, Judge Robert Pitman; closed Feb. 12, 2021).
The docket reflects two plaintiff attorneys of record (per the Justia docket and UniCourt case summary, which list only these two for the plaintiff). The case was voluntarily dismissed just three weeks after filing (Notice of Voluntary Dismissal, Dkt. 10, Feb. 11, 2021; Order Closing Case, Dkt. 11, Feb. 12, 2021), so no substantive litigation occurred and no counsel designations (lead/local) were ever litigated or designated by the court.
1. Timothy E. Grochocinski — Lead/filing counsel
- Role: Filed the Complaint (Dkt. 1), the AO-120, Certificate of Interested Parties, and the Notice of Voluntary Dismissal (Dkt. 10) — effectively plaintiff's lead counsel on the case.
- Firm: Nelson Bumgardner Conroy P.C. — Partner/Principal (with offices in Burr Ridge, IL and Fort Worth, TX; he is based primarily in the Chicago area and is admitted to the W.D. Tex. since 2020).
- Experience: Concentrates on patent infringement and complex commercial litigation; founder of InnovaLaw, P.C. (Chicago) before joining Nelson Bumgardner Conroy; adjunct professor of patent litigation at Chicago-Kent College of Law; has litigated against large companies nationwide, including numerous NPE-style patent campaigns (e.g., Unified Messaging Solutions LLC v. Sportsvite/Cupid/BMO Harris et al., 2012–13 N.D. Ill.; Video Streaming Solutions LLC v. Motorola Solutions, 2013 N.D. Ill.; Card Verification Solutions v. Amex/JPMorgan/PNC/Wells Fargo, 2013 N.D. Ill.). Also appeared for Flexiworld in the related W.D. Wash. case Flexiworld v. Amazon Web Services, No. 2:21-cv-01055 (transferred from W.D. Tex.).
2. Joseph Paul Oldaker — Appearing counsel
- Role: Filed Notice of Attorney Appearance for plaintiff (Dkt. 5, Jan. 21, 2021).
- Firm: At the time of appearance, Nelson Bumgardner Conroy P.C. (2013–2021); he left later in 2021 to found Oldaker Law, P.C. (Winnetka, IL), where he is principal.
- Experience: USPTO-registered patent attorney with over a decade of patent litigation, prosecution, and PTAB practice (life sciences, chemistry, medical devices, software, wireless communications); previously in-house corporate counsel (LMK Technologies) and patent analyst (Cardinal IP); adjunct professor of Patent Law/Litigation at University of Illinois Chicago School of Law and Chicago-Kent.
Notes and caveats
- No separate local counsel appears on the docket. Neither attorney filed a pro hac vice motion in this case; Grochocinski was already admitted to the W.D. Tex. (2020). The docket contains no other plaintiff-side appearances, so there was no distinct "local counsel" entry of appearance. The W.D. Tex. local counsel rule would have applied only if a non-admitted attorney sought pro hac vice admission — which did not occur here.
- No in-house counsel from Flexiworld Technologies appeared on the docket.
- Filings are not sealed. The complaint, exhibits (10 exhibits attached to Dkt. 1), and all docket entries are public; the case simply terminated by voluntary dismissal before any answer, motion practice, or scheduling order.
- Source reliability: Attorney identities and docket events are grounded in the Justia docket for 1:21-cv-00066 and UniCourt's case summary (last updated March 22, 2021); firm/background details come from Nelson Bumgardner Conroy's website, Martindale, Avvo, and Lawyers.com profiles. I did not locate a PACER-published "attorney appearance list" beyond these two names, but the Justia/UniCourt dockets are consistent: Grochocinski and Oldaker are the complete plaintiff counsel of record.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
Answer: No defense counsel of record appeared in this case
Case: Flexiworld Technologies, Inc. v. Canon, Inc. et al., No. 1:21-cv-00066 (W.D. Tex., filed Jan. 21, 2021, Judge Robert Pitman) — the only case on the W.D. Tex. docket tied to U.S. Patent No. 9,036,181 with that filing date.
Bottom line
There are no attorneys of record for the defendants (Canon, Inc. and Canon Solutions America, Inc.) in this case. The docket contains no notice of appearance, motion for pro hac vice admission, answer, or any other filing by defense counsel before the case was dismissed. The case was voluntarily dismissed by the plaintiff less than three weeks after filing, before either defendant's answer deadline ran.
Procedural posture supporting this (from the public docket)
- Dkt. 1 (Jan. 21, 2021): Complaint filed by Flexiworld (only plaintiff-side attorneys on the docket: Timothy E. Grochocinski and Joseph Paul Oldaker).
- Dkt. 8 (Jan. 28, 2021): Summons returned executed as to Canon Solutions America, Inc. (served Jan. 26, 2021; answer due Feb. 16, 2021).
- Dkt. 9 (Feb. 11, 2021): Waiver of service returned executed as to Canon, Inc. (waiver sent Feb. 8, 2021; answer due Apr. 9, 2021).
- Dkt. 10 (Feb. 11, 2021): Notice of Voluntary Dismissal by Flexiworld (Rule 41(a)(1)(A)(i), without prejudice).
- Dkt. 11 (Feb. 12, 2021): Order Closing Case (Judge Pitman).
- Dkt. 12 (Mar. 2, 2021): Report on Patent/Trademark sent to the USPTO.
Sources: Justia Dockets (dockets.justia.com/docket/texas/txwdce/1:2021cv00066/1120712); UniCourt case page (PC-DB5, updated Mar. 22, 2021), which lists only Grochocinski and Oldaker as attorneys and shows no defense counsel entries.
Why no defense counsel ever appeared
The defendants were served (or waived service) in late January/early February 2021, but Flexiworld filed its Rule 41 voluntary dismissal on Feb. 11, 2021 — five days before Canon Solutions America's answer was due and nearly two months before Canon, Inc.'s answer was due. Under Rule 41(a)(1)(A)(i), the dismissal was effective upon filing, and the court closed the case the next day. No defense attorney ever filed a notice of appearance, so there is no "lead," "local," or "of counsel" designation for the defense on this docket.
Context worth flagging (not this case)
Flexiworld refiled essentially the same claims against the same defendants in W.D. Tex. No. 6:21-cv-00143-ADA (Waco Division, Judge Albright, filed Feb. 11, 2021), which was later dismissed with prejudice in August 2021 (see the notice of voluntary dismissal PDF hosted at action-intell.com), and a further Flexiworld–Canon dispute was reported settled in 2023. If you need the defense team in those successor cases (or the later Canon matters), that would be a different docket search — the attorneys there would not be "of record" in 1:21-cv-00066, so I have not named them here to avoid conflating cases.
I did not find any sealed filings or late-entered appearances that would change this conclusion; the docket retrieved from Justia (as of Mar. 2, 2021), UniCourt (as of Mar. 22, 2021), and the USPTO litigation records all reflect a closed case with zero defense appearances.