Flexiworld Technologies, Inc. v. Canon Inc.

Case Overview

Parties and accused technology. Flexiworld Technologies, Inc. is a Washington corporation (Vancouver, WA) founded around 2001 by inventor William Ho Chang (a former Sharp R&D scientist) with co-inventor Christina Ying Liu. It styles itself as an R&D pioneer in "pervasive wireless" technology, but it is functionally a non-practicing patent-assertion/licensing entity: its own complaints concede it has "not made, offered for sale, sold, or imported a product that practices any of the Patents-in-Suit" (see the parallel Lexmark litigation, E.D. Ky. No. 5:22-cv-00097, DE 33 ¶ 57, discussed in the court's opinion at cases.justia.com), and RPX tracks it as a serial assertion campaign. The defendants were Canon, Inc. (Tokyo) and its U.S. arm Canon Solutions America, Inc. (NY corp. with an Austin, Texas office at 12515 Research Blvd., Bldg. 7, Ste. 110). Flexiworld alleged that Canon's imageCLASS and imageRUNNER wireless printers and the Canon PRINT Business App infringe through mobile, driverless printing over Wi-Fi/LAN (using AirPrint, Google Cloud Print, and Canon's app) (LawStreet Media, "Canon Sued for Patent Infringement Relating to Wireless Printing"). The complaint asserted five patents, though case metadata here lists only the '846: 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) (complaint Dkt. 1, Ex. 1–11; The Recycler, "Canon faces complaint for patent infringement"). The '846 patent ("Software Applications and Information Apparatus for Printing Over Air or for Printing Over a Network," priority 10/31/2000, granted 11/18/2019) claims a mobile information apparatus/app having (1) a discovery component that finds a supported printer on a LAN and receives its device profile (capabilities/formats) and (2) a printing component that generates print data from digital content based on that profile and transmits it to the printer — i.e., driverless mobile printing (Unified Patents portal; complaint Count III, asserting claims 1–5 of the '846 against the Accused Canon Apps with direct, induced, and contributory infringement theories, RPX litigation documents). The other four patents cover related wireless-printing/device-discovery inventions from the same early-2000s family (e.g., the '071 covers a printer that wirelessly broadcasts availability, transmits an output-device profile, and receives print data).

Procedural posture and venue. The case was filed January 21, 2021 as 1:21-cv-00066 in the W.D. Tex. (Austin-assigned docket) and was initially assigned to Judge Robert Pitman; Canon Solutions America was served January 26 and Canon, Inc. waived service (Dkts. 7–9). On February 11, 2021, Flexiworld voluntarily dismissed (Dkt. 10), and Judge Pitman closed the case (Dkt. 11, 2/12/2021) — the same day Flexiworld refiled the identical complaint as 6:21-cv-00143 in the Waco Division before Judge Alan D. Albright (Justia dockets). The dismissal-and-refile is a textbook forum-selection play: Albright's Waco docket was then the nation's busiest patent plaintiff forum, and the refiled complaint's venue allegations leaned heavily on Canon Solutions America's Austin office (inside the W.D. Tex.) and on Canon's own prior patent suits in the district (Canon Inc. v. Optimum Imaging, 1:20-cv-01238; Canon v. Roku, 6:19-cv-00245; Canon v. Aeccom, 1:18-cv-00181). The refiled case never reached merits: the parties took four unopposed extension orders while "finalizing" a settlement (June 11, 2021 motion, action-intell.com), and on August 26, 2021 Flexiworld filed a Rule 41(a)(1)(A)(i) Notice of Voluntary Dismissal With Prejudice, ending the case about six months after filing (notice on file at action-intell.com; case status "Closed").

Why it matters. The case is notable as one front of Flexiworld's broad campaign asserting a ~70-member patent family with 2000–2001 priority dates — early wireless-printing claims that post-date the rise of AirPrint/Cloud Print-era mobile printing — against essentially every major printer OEM: Amazon (W.D. Tex., June 2020), Roku (W.D. Tex., Sept. 2020), Canon (Feb. 2021), Epson (C.D. Cal., May 2021, 14 patents including the '846), Brother (2022), Lexmark (E.D. Ky., March 2022), and Xerox (W.D.N.Y., June 2023, four complaints including the '846) (RPX; The Recycler). It also illustrates the modern NPE playbook: file in Waco, extract a confidential license, and dismiss with prejudice — Canon's resolution was typical, with no reported damages figure and no published opinion. On IPR linkage: I found no petition directly challenging the '846 patent, but Flexiworld's related family patents were heavily attacked at the PTAB in parallel cases — e.g., Roku's PGR2021-00111 ('031, not instituted) and IPRs IPR2022-01267/68/69 ('257, '822, '577, terminated after a Roku license), and Unified Patents' IPR2022-00775 ('836,257, instituted) — showing that defendants and third parties viewed the family as vulnerable but that licensing still resolved most disputes. One further market-context wrinkle: Unified Patents lists the '846 as expiring January 2, 2022, meaning the January 2021 Canon suit captured only the patent's final year, and any recovery was necessarily limited to the pre-expiry period — a fact that likely shaped the quick settlement.

Flexiworld Technologies, Inc. v. Canon Inc. / Canon Solutions America, Inc. — Key Legal Developments & Outcome

Important framing note

This "litigation" actually unfolded across two related W.D. Tex. case numbers with identical parties and patents: the originally filed 1:21-cv-00066 (Judge Robert Pitman) and its immediate refiling as 6:21-cv-00143-ADA (Judge Alan D. Albright). The case resolved before any defendant ever answered, so there was no claim construction, trial, or merits ruling. Also note: although the case metadata lists only the '846 patent (US 10,481,846), the complaint actually asserted five patents — US 9,036,181; 10,140,071; 10,481,846; 10,642,576; and 10,761,791 — all relating to wireless printing ("printing over air"). The '846 patent's assertion is now independently confirmed (LawStreet Media; The Recycler; RPX).

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1. Filing & initial pleadings

Case 1 — 1:21-cv-00066 (W.D. Tex., Waco Div., Judge Robert Pitman)

• 2021-01-21 — Flexiworld filed its Complaint for patent infringement (Dkt. 1) against Canon, Inc. and Canon Solutions America, Inc., accusing Canon's imageClass and imageRunner wireless printers and the Canon PRINT Business App of infringing the five patents. Flexiworld demanded a jury trial. (Justia docket; LawStreet Media, "Canon Sued for Patent Infringement Relating to Wireless Printing"; The Recycler, "Canon faces complaint for patent infringement.")
• 2021-01-21 — AO 120 patent/trademark form filed (Dkt. 4); appearances by Joseph Oldaker and Timothy Grochocinski of Nelson Bumgardner Albritton PC (Dkt. 5); summons issued as to Canon Solutions America (Dkt. 7).
• 2021-01-26 — Canon Solutions America, Inc. served (Dkt. 8, entered 01-28).
• 2021-02-08 — Waiver of service sent to Canon, Inc. (Dkt. 9, entered 02-11; answer due 04-09).

Case 2 — 6:21-cv-00143-ADA (W.D. Tex., Waco Div., Judge Alan D. Albright)

• 2021-02-11 — The same day Flexiworld dismissed Case 1 (below), it refiled the identical patent-infringement suit as 6:21-cv-00143-ADA (Dkt. 1), assigned to Judge Albright. RPX reported that Flexiworld was "adding a case against Canon" to its W.D. Tex. campaign against Amazon and Roku. (RPX Empower, 2021-02-11; Justia docket.)
• 2021-02-12 — Waivers of service sent to both defendants; answer due 04-13 (CSAI) and 05-13 (Canon Inc.) (Dkts. 9–10).
• 2021-02-23 — Flexiworld filed an unopposed extension motion for CSAI's answer (Dkt. 11).
• 2021-04-06 — Judge Albright granted the extension by text order; CSAI's answer due 2021-05-13 (Dkt. 11 order).
• No answer was ever filed — the case was dismissed before either defendant answered.

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2. Pre-trial motions of substance

None. The docket contains no motion to dismiss, no motion to transfer, no motion to stay pending IPR, and no summary judgment motion. Flexiworld's own dismissal notice stated: "Defendants have not yet answered the Complaint or filed a motion for summary judgment." (Notice of Voluntary Dismissal With Prejudice, 6:21-cv-00143, Dkt. —, filed 2021-08-26.)

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3. Claim construction (Markman)

Never reached. No Markman hearing, no Phillips briefing, and no claim construction order was entered in either case. (For context only: Judge Albright held a claim construction hearing in Flexiworld's separate Amazon case in late January 2021, but that was a different action. — RPX Empower, 2021-02-11.)

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4. Discovery milestones

None of substance. The case was dismissed during the pleading stage, before any discovery motions, depositions, or expert disclosures. The only "strategic" event of note is the dismissal-and-refiling maneuver: Flexiworld voluntarily dismissed the Pitman-assigned case (1:21-cv-00066) and refiled the same day in Waco before Judge Albright — at a time when Flexiworld was running its W.D. Tex. campaign before Albright and after Albright had presided over Flexiworld's Amazon case. This is the standard "Albright refiling" pattern used by NPE plaintiffs in that era.

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5. Trial events, verdict, post-trial motions

None. No trial, verdict, JMOL, new-trial motion, or fee motion. The case terminated by voluntary dismissal before trial.

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6. Final disposition / settlement

• 2021-02-11 — Flexiworld filed a Notice of Voluntary Dismissal (without prejudice, Rule 41(a)(1)(A)(i)) in 1:21-cv-00066 (Dkt. 10).
• 2021-02-12 — Judge Pitman entered an Order Closing Case (Dkt. 11); the USPTO was notified 2021-03-02 (Dkt. 12). (Justia docket; UniCourt.)
• 2021-08-26 — Flexiworld filed a Notice of Voluntary Dismissal With Prejudice in 6:21-cv-00143-ADA under Rule 41(a)(1)(A)(i), dismissing all claims against both Canon entities with prejudice. (Notice of Voluntary Dismissal With Prejudice, available via Actionable Intelligence.)
• Industry press reported that "a settlement has been reached" in the dispute. (Actionable Intelligence, "Flexiworld and Canon Resolve Patent Dispute," 2021-08.)

Outcome: The litigation ended with a confidential settlement and dismissal with prejudice — a win for Canon in the sense that the asserted patents were not adjudicated, and a license/settlement for Flexiworld. No damages award, no injunctive relief, and no fee award was ever entered. Both cases are closed.

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7. Parallel PTAB IPR/PGR proceedings

No Canon-filed IPR/PGR exists on any of the five asserted patents (including the '846 patent). Because both Canon defendants waived service in February 2021 and the case was dismissed with prejudice on 2021-08-26, Canon never petitioned for inter partes review of the asserted patents (the statutory one-year IPR bar clock would have run from service, but the case resolved first).

The PTAB proceedings involving Flexiworld's portfolio were all brought by other defendants in other cases and concerned different patents:

• Roku v. Flexiworld — IPR2021-00713 (US 10,740,066); IPR2022-01267/68/69 (US 9,836,257; 9,389,822; 7,944,577); IPR2022-01114 (US 9,965,233); PGR2021-00111 (US 10,846,031, denied institution 2022-03-14). These related to Flexiworld v. Roku, 6:21-cv-00680-ADA, 6:21-cv-00767-ADA, etc., and were terminated after Roku and Flexiworld settled in October 2022.
• Unified Patents v. Flexiworld — IPR2022-00775 (US 9,836,257).

None of these involved Canon or the '846/'181/'071/'576/'791 patents, and none had any effect on the Canon litigation (which was already dismissed with prejudice before most were even filed).

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Chronology summary

Bottom line: A short-lived NPE patent suit over wireless-printing patents that was voluntarily dismissed (without prejudice) and refiled before Judge Albright, then settled and dismissed with prejudice on 2021-08-26 — roughly seven months after filing — before any answer, Markman, discovery, or trial. No PTAB proceedings by Canon, and no appellate proceedings.

Sources: Justia dockets for 1:21-cv-00066 and 6:21-cv-00143; UniCourt case summary; RPX Empower litigation news (2021-02-11); LawStreet Media (2021-01-25); The Recycler (2021-02); Notice of Voluntary Dismissal With Prejudice (6:21-cv-00143, filed 2021-08-26); Actionable Intelligence settlement coverage; Unified Patents PTAB portal for Roku/PGR2021-00111.

Based on the available docket and firm sources, here is what is confirmed for plaintiff Flexiworld Technologies, Inc. in Flexiworld Technologies, Inc. v. Canon, Inc. et al., No. 1:21-cv-00066 (W.D. Tex., Waco Div., filed Jan. 21, 2021):

Counsel of Record for Plaintiff

1. Joseph Paul Oldaker

• Role: Attorney of record for Flexiworld (filed the first Notice of Attorney Appearance — Docket No. 5, entered 01/21/2021). Role designation (lead/local) is not specified on the docket; he is the counsel who first appeared.
• Firm / Office: At the time of this case, he was with Nelson Bumgardner Albritton P.C. (later Nelson Bumgardner Conroy P.C.), Fort Worth, TX office (3131 W. 7th St., Suite 300). He left in 2021 to found Oldaker Law, P.C. (Winnetka, IL).
• Experience note: USPTO-registered patent attorney focused on patent litigation, with experience in PTAB/IPR practice, prosecution, and patent analytics; previously in-house and a patent analyst at Cardinal Intellectual Property. (Sources: Justia docket for 1:21-cv-00066, Docket No. 5; lawyerdb.org; Avvo profile; onlinelawyernetwork.com.)
• Caveat: A third-party directory lists him as "not admitted in TX" (Illinois, 2008), which suggests he may have appeared via admission to the W.D. Tex. or pro hac vice in this case; the public docket snippet does not resolve this.

2. Timothy E. Grochocinski

• Role: Lead counsel for Flexiworld. Justia's docket lists him as a "Represented By" attorney for plaintiff in this case, and in Flexiworld's parallel W.D. Tex. Waco cases (e.g., Flexiworld v. Amazon.com, 6:20-cv-00553) the docket designates him LEAD ATTORNEY for Flexiworld.
• Firm / Office: Principal/Senior Partner at Nelson Bumgardner Conroy P.C. (formerly Nelson Bumgardner Albritton PC), with offices in Orland Park, IL (15020 S. Ravinia Ave., Suite 29) and Burr Ridge, IL / Fort Worth, TX.
• Experience note: Flexiworld's principal patent litigator across its nationwide campaign — he has appeared for Flexiworld against Roku, Amazon, Sony, LG, Indeed, TCL, and Xerox, and in PTAB proceedings (e.g., IPR2023-00845, where he was designated pro hac vice at Nelson Bumgardner Conroy). Admitted to the Federal Circuit (2009) and W.D. Tex. (2020). (Sources: Justia docket for 1:21-cv-00066; DocketAlarm/PTAB Exhibit 2032 docket sheet for 6:20-cv-00553; Martindale profiles; USPTO PTAB petition filing for IPR2023-00845.)

Additional observations

• No in-house counsel or separate local counsel confirmed. The docket snippets available do not show a separate Waco-based local counsel entry for Flexiworld in this case. (Nelson Bumgardner Albritton PC's Fort Worth/Texas presence likely supplied local admission; Eric M. Albritton and Charles Austin Ginnings appear for Flexiworld in other W.D. Tex. matters, but I found no direct evidence they appeared in this specific Canon case, so I am not listing them as counsel here.)
• Case status: The case is marked closed in third-party trackers (e.g., ExParte lists status "Closed"); I could not retrieve the disposition/termination entry (dismissal, transfer, or settlement) from the available snippets.
• Patents-in-suit caveat: The user's metadata lists the '846 patent (US 10,481,846), but the retrieved complaint language asserts at least US Patent Nos. 9,036,181 and 10,140,071 (and others not fully shown). The '846 patent's inclusion was not independently confirmed from the retrieved documents.

Sources: Justia Docket No. 1:2021cv00066 (TXWD), Docket No. 5 (Oldaker appearance, 01/21/2021); UniCourt case page (listing Oldaker and Grochocinski as plaintiff attorneys); RPX Insight complaint document; DocketAlarm/PTAB Exhibit 2032 (6:20-cv-00553 docket sheet showing Grochocinski as lead attorney); Martindale/Avvo/lawyerdb attorney profiles; USPTO PTACTS filing for IPR2023-00845.

If you need the full attorney list (including any pro hac vice orders, withdrawal notices, or later-added counsel), PACER/CM/ECF for 1:21-cv-00066 would be the authoritative source — the public aggregators only surface the two attorneys above.

Answer: No defense counsel of record ever appeared in this case

Based on the available docket records, *there are no counsel of record for defendants Canon, Inc. or Canon Solutions America, Inc. in Flexiworld Technologies, Inc. v. Canon, Inc., No. 1:21-cv-00066 (W.D. Tex., Waco Div.)* — because the case was voluntarily dismissed by the plaintiff before any defense attorney entered an appearance.

What the docket shows

• Filing history. The complaint was filed January 21, 2021 (Dkt. 1). Only plaintiff-side appearances are on the docket: Timothy E. Grochocinski (who signed the complaint) and Joseph Paul Oldaker (Notice of Appearance, Dkt. 5, filed 1/21/2021), both of Nelson Bumgardner Conroy PC.
• Service. Canon, Inc. waived service (waiver sent 2/8/2021, answer due 4/9/2021 — Dkt. 9); Canon Solutions America, Inc. was served 1/26/2021 (Dkt. 8).
• Dismissal. On February 11, 2021, Flexiworld filed a Notice of Voluntary Dismissal (Dkt. 10), and Judge Robert Pitman entered an Order Closing Case the next day (Dkt. 11, 2/12/2021). The case was closed before Canon's answer deadline and before any defense appearance, notice of appearance, or answer was filed. The PTO report was transmitted on 3/2/2021 (Dkt. 12). The docket (retrieved via Justia/UniCourt, last updated March 2021) contains no entry naming any attorney for Canon — no appearance, no answer, no motion to dismiss, no stipulation signed by defense counsel.
• Related successor case. Flexiworld re-filed the dispute the same day as 6:21-cv-00143-ADA (W.D. Tex., Judge Albright). Even there, the docket aggregator lists "No Defendant Attorneys," and Flexiworld's own unopposed extension motion (June 11, 2021) states the defendants "have not yet appeared in this action." The parties reached an agreement in principle to settle, and the successor case was dismissed with prejudice on August 26, 2021 — the dismissal notice again notes Canon "ha[d] not yet answered," with the copy of the notice emailed to "Defendants' counsel" without identifying any named attorney (see action-intell.com copies of the 6/11/2021 extension motion and 8/26/2021 dismissal notice).

Bottom line

Because the case terminated by plaintiff's unilateral voluntary dismissal under Rule 41(a)(1)(A)(i) roughly three weeks after filing and before any responsive pleading was due, no attorney ever appeared of record for either Canon entity in 1:21-cv-00066. I am therefore not able to identify — and will not fabricate — lead, local, or in-house counsel for the defendants in this specific case. If you need the attorneys who ultimately handled the settlement of the underlying dispute (who may have appeared in the successor case 6:21-cv-00143-ADA), that information is not disclosed in the public docket entries retrieved, and I would flag it as not well sourced rather than guess.

Sources: Justia docket for 1:21-cv-00066 (dockets.justia.com, retrieved 3/2/2021); UniCourt case summary (Docket #1–#12); RPX Insight complaint document; action-intell.com filings for 6:21-cv-00143 (4th extension motion, 6/11/2021; notice of voluntary dismissal with prejudice, 8/26/2021).