Flexiworld Technologies, Inc. v. Canon, Inc. et al.

Case Overview & Background

Parties. Plaintiff Flexiworld Technologies, Inc. is a small, inventor-founded technology company (Washington corporation, principal place of business in Vancouver, WA) founded by William Ho Chang, an engineer and prolific inventor (88+ U.S. patents) who previously worked at Sharp. Although third-party trackers (e.g., Ex Parte) tag it as an "operating company" in the communications sector, Flexiworld does not appear to commercialize products — in its later Lexmark litigation it affirmatively pled that it "has not made, offered for sale, sold, or imported a product that practices" the asserted patents — and it functions in practice as a patent-assertion/licensing plaintiff. Defendants were Canon, Inc. (Japanese parent, Tokyo) and Canon Solutions America, Inc. ("CSAI," a New York corporation with a regular and established Austin, Texas office at 12515 Research Blvd.), which Flexiworld alleged act as a single integrated "Canon" enterprise. Flexiworld was represented by Nelson Bumgardner Albritton PC (Timothy E. Grochocinski, Joseph P. Oldaker, Edward R. Nelson III, Ryan P. Griffin, Jonathan H. Rastegar); Canon's defense counsel is not identified in the sources I retrieved.

Accused technology and patents. The complaint (Dkt. 1, filed Feb. 11, 2021) accused Canon's wireless printers — including the imageCLASS and imageRUNNER lines — and Canon's mobile printing software (the Canon PRINT Business App and related apps) of direct, induced, and contributory infringement of five patents from Flexiworld's large, mostly 2000/2001-priority-date wireless-output family: U.S. Patent Nos. 9,036,181, 10,140,071, 10,481,846, 10,642,576, and 10,761,791 (the patent at issue per the case metadata). The asserted claims covered, in substance: the '071 patent's wireless printer that broadcasts its availability, transmits its device profile to discovering mobile devices, and wirelessly receives print data (claims 1–7); the '846 patent's print-over-air mobile application (claims 1–5); the '576 patent's mobile apparatus with wireless discovery circuitry (claims 15, 16, 18, 20); and the '181 patent (claims 1, 2, 3, 5, 6). The '791 patent — "Wireless Printing Devices That Provide Printing Services Over A Network Without A Need for A Client Device of the Printing Device to Use, at the Client Device, A Printer Specific Printer Driver," issued Sept. 1, 2020 to inventors Chang and Christina Ying Liu — was asserted against claims 1–5 and covers a wireless printing device that registers itself with a network service (e.g., over the Internet) so that client devices can select and print to it through the service without installing a printer-specific driver, with the printer including an interface for receiving security information to join a wireless local network. The overarching infringement theory was that Canon's modern mobile-printing ecosystem (Wi-Fi-enabled printers + mobile apps such as AirPrint/Google Cloud Print/Canon PRINT) practices this driverless, network-registration printing paradigm.

Procedural posture and venue. Filed in the Western District of Texas, Waco Division (6:21-cv-00143-ADA), before Chief Judge Alan D. Albright — at the time the leading venue for patent cases post-TC Heartland and a court known for fast patent-specific scheduling orders and a plaintiff-friendly reputation. Venue and personal jurisdiction were premised on CSAI's Austin office (a "regular and established place of business" under § 1400(b)), Canon's stream of commerce into the district, and its public-facing U.S. websites. Both defendants waived service (Feb. 2021), and CSAI's answer deadline was extended to May 13, 2021 (Dkt. 11, granted Apr. 6, 2021). Before any answer or substantive motion practice, Flexiworld filed a Notice of Voluntary Dismissal with Prejudice under Rule 41(a)(1)(A)(i) on August 26, 2021 (the docket reflects termination that same day), mooting the case roughly six months after filing.

Why the case is notable. The suit was a tactical piece of Flexiworld's broader W.D. Tex.–anchored assertion campaign against major consumer-electronics defendants — Amazon (6:20-cv-00553-ADA), Roku (6:20-cv-00819-ADA and later 6:21-cv-00680-ADA), then Canon, followed by Epson (C.D. Cal.) and Lexmark (E.D. Ky.) — asserting overlapping subsets of a ~70-member patent family in a classic PAE portfolio-rolling pattern. It also intersected with PTAB activity: Roku filed multiple IPRs (IPR2021-00713, -00714, -00715) against Flexiworld patents, and in IPR2021-00714 the Board's Final Written Decision (Oct. 21, 2022) found claims 1–10, 12, and 14 of the related '064 patent unpatentable. The swift, pre-answer dismissal with prejudice of the Canon case strongly suggests a confidential settlement or license (no public terms were located), illustrating how even short-lived W.D. Tex. filings can function as leverage to convert infringement exposure into licensing revenue. One caution: the precise reason for the dismissal and any consideration paid are not publicly documented in the sources reviewed, and I did not locate Canon's counsel of record in the retrieved materials.

Flexiworld Technologies, Inc. v. Canon, Inc. et al., No. 6:21-cv-00143-ADA (W.D. Tex., Waco Div.)

Overview

This was a short-lived patent-infringement suit: filed in Waco on 2021-02-11 and voluntarily dismissed with prejudice on 2021-08-26, before Canon ever answered. It never progressed past initial pleadings. Notably, it was a refiling: Flexiworld had first sued the same Canon entities on 2021-01-21 in the Austin Division (No. 1:21-cv-00066, Judge Robert Pitman), dismissed that case, and refiled the same day in Waco before Judge Alan D. Albright — a forum-selection move consistent with Flexiworld's contemporaneous Waco campaign against Amazon (6:20-cv-00614) and Roku.

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Chronology of Key Legal Developments

1. Filing & Initial Pleadings

• 2021-01-21 — Flexiworld filed the original suit against Canon, Inc. and Canon Solutions America, Inc. in the Austin Division, No. 1:21-cv-00066, assigned to Judge Robert Pitman. (Justia docket, 1:2021cv00066; UniCourt.)
• 2021-02-11 — Flexiworld filed a Notice of Voluntary Dismissal in the Austin case (Dkt. #10); Judge Pitman entered an Order Closing Case on 2021-02-12 (Dkt. #11). (Justia docket.)
• 2021-02-11 — Flexiworld filed the Waco complaint (Dkt. #1) in the instant case, 6:21-cv-00143-ADA, with a jury demand. The complaint asserted five patents: U.S. Patent Nos. 9,036,181, 10,140,071, 10,481,846, 10,642,576, and 10,761,791 (the '791 patent is the one flagged in the case metadata). Accused instrumentalities: Canon imageCLASS and imageRUNNER wireless printers and the Canon PRINT Business App, with theories of direct, induced, and indirect infringement and joint/alter-ego liability against Canon Inc. and Canon Solutions America. (Complaint, Dkt. #1; LawStreet Media, 2021-02; RPX, 2021-02-11.)
• 2021-02-12 — Waivers of service were sent to both defendants; attorney appearances entered (Timothy E. Grochocinski, Joseph P. Oldaker, et al., Nelson Bumgardner Conroy PC); AO-120 patent form filed. (Justia docket.)
• 2021-02-23 — Waivers of service returned executed: Canon, Inc. answer due 2021-05-13 (Dkt. #10); Canon Solutions America answer due 2021-04-13 (Dkt. #9). Flexiworld filed an Unopposed Motion for Extension of Time to Answer re CSAI (Dkt. #11). (Justia docket.)
• 2021-04-06 — Judge Albright entered a Text Order granting the unopposed extension (Dkt. #11); CSAI's answer deadline reset to 2021-05-13 (Dkt. #12 docket text). (Justia docket.)
• No answer, counterclaims, or Rule 12 motions were ever filed by Canon. The dismissal notice later recited: "Defendants have not yet answered the Complaint or filed a motion for summary judgment." (Notice of Voluntary Dismissal, Dkt., filed 2021-08-26.)

2. Pre-Trial Motions of Substance (MTD, Transfer, Stay, SJ)

• None. The publicly retrievable docket (through the April 2021 snapshot) shows only the service waivers, appearances, and the unopposed answer-extension motion. There is no record of a motion to dismiss, motion to transfer, motion to stay pending IPR, or motion for summary judgment. The case did not reach that stage. (Justia docket retrieved 2021-04-06; Notice of Voluntary Dismissal, 2021-08-26.)

3. Claim Construction (Markman)

• Never reached. The case was dismissed with prejudice roughly six months after filing, before an answer and before any Markman schedule or hearing. (No docket entries exist for a Markman process in the retrieved record.)

4. Discovery Milestones

• None of strategic significance. The litigation remained in the pleadings stage; no substantive discovery occurred in the Waco case before dismissal.

5. Trial, Verdict, Post-Trial Motions

• None. No trial was held, no verdict rendered, and no post-trial motions (JMOL, new trial, fees) were filed.

6. Final Disposition — Settlement & Dismissal With Prejudice

• 2021-08-26 — Flexiworld filed a Notice of Voluntary Dismissal With Prejudice under Rule 41(a)(1)(A)(i) (styled "Notice of Voluntary Dismissal with Prejudice"), dismissing all claims against Canon, Inc. and Canon Solutions America, Inc. with prejudice. The notice confirmed the complaint was filed 2021-02-11 (Dkt. #1) and that defendants had not answered or filed for summary judgment. (Full text available via action-intell.com hosted copy; DocketAlarm.)
• The trade press (Actionable Intelligence) contemporaneously reported that "a settlement has been reached" and that Flexiworld filed the notice of dismissal on August 26 — i.e., the dismissal reflected a negotiated resolution of the dispute. (action-intell.com, "Flexiworld and Canon Resolve Patent Dispute.")
• Case terminated 2021-08-26; status: Closed (per case metadata and ExParte docket listing). Because the dismissal was with prejudice, it is a final adjudication on the merits barring re-filing of these claims against Canon.

7. Parallel PTAB IPR/PGR Proceedings

• None identified for this case. My research found no well-sourced record of an inter partes review or post-grant review petitioned by Canon on U.S. Patent No. 10,761,791 (or the other four asserted patents) during the pendency of this litigation. The dismissal with prejudice came before any IPR institution window would realistically have opened, and no IPR appears to have influenced the disposition.
• Related context (not part of this case): Flexiworld's same patent family was the subject of later litigation (e.g., against Lexmark in E.D. Ky., 5:22-cv-00097), and its broader campaign had parallel PTAB activity involving other defendants — but nothing on the record tying a PTAB proceeding to the Canon case.

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Bottom Line / Outcome

Practical significance: Canon obtained a clean, with-prejudice resolution — no liability, no damages, no fees — approximately six months after suit, with no substantive motion practice. The only "litigation" of note was Flexiworld's venue maneuver (dismissing in Austin and refiling in Judge Albright's Waco division on the same day), which ultimately yielded no advantage because the case settled before any merits activity.

Sourcing caveats: Docket entries between 2021-04-06 and 2021-08-26 were not independently verified against PACER (the public Justia docket snapshot ends April 6, 2021); the dismissal notice itself confirms no answer or SJ motion had been filed as of 2021-08-26. The settlement characterization comes from Actionable Intelligence trade coverage, not from a filed settlement agreement or court order. No PTAB proceeding on the '791 patent was located; absence of a public record is not proof one was never filed, but none is evidenced in the sources reviewed.

Plaintiff's Counsel of Record — Flexiworld Technologies, Inc. v. Canon, Inc. et al., No. 6:21-cv-00143-ADA (W.D. Tex.)

All plaintiff-side appearances and filings in this short-lived case were made by attorneys from Nelson Bumgardner Conroy PC (the Fort Worth/Orland Park IP boutique then operating as Nelson Bumgardner Albritton P.C. / Nelson Bumgardner Conroy P.C.). The case was voluntarily dismissed with prejudice (Dkt. 20, Notice of Voluntary Dismissal, filed Aug. 26, 2021) before Canon answered, so there was no court-designated lead-counsel order; roles below reflect the signature blocks and docket activity.

1. Timothy E. Grochocinski — Lead counsel (primary filer)

• Firm/office: Nelson Bumgardner Conroy PC, 15020 S. Ravinia Ave., Suite 29, Orland Park, IL 60462 (IL Bar No. 6295055; also MO Bar No. 59607).
• Role evidence: Signed the Complaint (Dkt. 1, Feb. 11, 2021), the unopposed extension motion (Dkt. 11), and the Notice of Voluntary Dismissal (Dkt. 20, Aug. 26, 2021); he was the CM/ECF filer on virtually every plaintiff filing in the docket (Justia docket sheet for 6:2021cv00143).
• Experience note: The de facto lead for Flexiworld's nationwide W.D. Tex./W.D. Wash. patent campaign (Amazon, Roku, Sony, Lexmark, Xerox, Indeed, Kyocera, etc.) and backup counsel for Flexiworld in PTAB IPRs (e.g., IPR2022-00775); he also represented Unification Technologies in its W.D. Tex. cases against Micron/Dell.

2. Edward R. Nelson III — Lead/trial counsel (name partner)

• Firm/office: Nelson Bumgardner Conroy PC, 3131 W. 7th St., Suite 300, Fort Worth, TX 76107 (TX Bar No. 00797142).
• Role evidence: Listed in the signature block of the Notice of Voluntary Dismissal (Dkt. 20) as counsel for plaintiff.
• Experience note: Founding partner of the firm (successor to Nelson Bumgardner Albritton PC, the firm Judge Albright belonged to before taking the bench); a veteran Texas patent trial lawyer with decades of plaintiff-side and PTAB work (e.g., Unification Technologies v. Micron/Dell in the same Waco division).

3. Ryan P. Griffin — Associate/counsel

• Firm/office: Nelson Bumgardner Conroy PC, 3131 W. 7th St., Suite 300, Fort Worth, TX 76107 (TX Bar No. 24053687).
• Role evidence: Signature block of the Notice of Voluntary Dismissal (Dkt. 20).
• Experience note: Patent-litigation associate in the firm's Fort Worth office, part of the same team running Flexiworld's campaign; no substantive docket activity before the dismissal (case never got past the pleading stage).

4. Jonathan H. Rastegar — Associate/counsel

• Firm/office: Nelson Bumgardner Conroy PC, 3131 W. 7th St., Suite 300, Fort Worth, TX 76107 (TX Bar No. 24064043).
• Role evidence: Signature block of the Notice of Voluntary Dismissal (Dkt. 20).
• Experience note: Patent litigator at the firm; previously appeared for Flexiworld-affiliated clients (e.g., Unification Technologies) in W.D. Tex. patent cases before Judge Albright.

5. Joseph Paul Oldaker — Associate (appearance only)

• Firm/office at the time: Nelson Bumgardner (Albritton/Conroy) PC — filed his appearance from the Orland Park, IL office (15020 S. Ravinia Ave., Suite 29); IL Bar No. 6295319, USPTO Reg. No. 62,041. He left the firm in 2021 to found Oldaker Law, P.C. in Winnetka, IL.
• Role evidence: Dkt. 7, Notice of Attorney Appearance for Flexiworld Technologies, Inc., filed Feb. 12, 2021 (the day after the complaint).
• Experience note: USPTO-registered IP attorney with PTAB/CBM lead-counsel experience (e.g., ContentAggregation Solutions CBM2016-00098, Adaptix IPR2016-01030) and earlier Flexiworld appearances (e.g., Flexiworld v. Roku, 6:20-cv-00499 related matters).

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Notes and caveats

• No in-house counsel of record appeared. Flexiworld's principal, William (Bill) Ho Chang, signed the company's PTAB powers of attorney in later proceedings, but no Flexiworld in-house attorney entered an appearance in 6:21-cv-00143.
• Defendant-side counsel (Canon) never filed a substantive response; the only defendant-side activity was the court's text order granting the plaintiff's agreed extension (Dkt. 12, Apr. 6, 2021), and Canon's counsel are not covered by this question.
• Companion case caveat: A separate, earlier Flexiworld v. Canon case, 1:21-cv-00066 (W.D. Tex. Austin Div., Judge Pitman), was filed Jan. 21, 2021 and voluntarily dismissed Feb. 11, 2021 (same counsel: Grochocinski and Oldaker). That is a different case number from the 6:21-cv-00143-ADA matter at issue here; UniCourt's page for 6:21-cv-00143 appears to conflate the two.
• Sources: Dkt. 1 and Dkt. 20 signature blocks (via Docket Alarm/Justia and the publicly posted dismissal PDF at action-intell.com); Justia docket sheet for 6:2021cv00143 (Dkt. 7 appearance, Dkt. 11, Dkt. 12); Avvo/LawyerDB for Oldaker's firm history; USPTO PTAB filings (IPR2022-00775) for firm/attorney identification. No filing in the case is sealed, and no counsel withdrawal motions were filed before dismissal.

Defense Counsel of Record — Flexiworld Technologies, Inc. v. Canon, Inc. et al., No. 6:21-cv-00143-ADA (W.D. Tex.)

Bottom line: No defense counsel of record ever appeared on the docket. The public record shows that Canon, Inc. and Canon Solutions America, Inc. never filed an answer, never filed a Rule 12 motion, and never filed a Notice of Attorney Appearance before the case was voluntarily dismissed with prejudice on August 26, 2021. I could not identify any named attorney representing Canon in this case from PACER-based docket aggregators (Justia, UniCourt, DocketAlarm, Ex Parte), trade coverage (RPX, LawStreet Media, Actionable Intelligence), or firm announcements — and I will not invent one.

What the docket affirmatively shows

• Docket entries through April 6, 2021 (Justia docket snapshot, 6:2021cv00143) contain only plaintiff-side filings: the complaint (Dkt. 1), AO-120 form (Dkt. 5), Certificate of Interested Parties (Dkt. 6), appearance of plaintiff's counsel Joseph P. Oldaker (Dkt. 7), waivers of service executed by both defendants (Dkts. 9–10), and plaintiff's unopposed motion to extend CSAI's answer deadline (Dkt. 11, granted by Judge Albright on April 6, 2021). No entry identifies defense counsel. (Justia Dockets, "Flexiworld Technologies, Inc. v. Canon, Inc. et al," last retrieved Apr. 6, 2021.)
• Ex Parte's docket listing for 6:21-cv-00143 explicitly shows "No Defendant Attorneys" / "No Attorneys" on the defense side. (ai-lab.exparte.com/case/dct/txwd/6:21-cv-00143.)
• Canon's non-appearance is confirmed by plaintiff's own filings. The "Unopposed Fourth Motion for Extension of Time for Defendants . . . to Answer" (filed June 11, 2021) states: "Flexiworld makes this motion in response to a request from Defendants who have not yet appeared in this action." (Hosted copy, action-intell.com, "Flexiworld-Canon-settlement-deadline-extension.pdf.") The same motion reveals the reason: "The parties have reached an agreement in principle to settle this matter and are currently finalizing the wording of certain limited aspects of the definitive agreement."
• The Notice of Voluntary Dismissal with Prejudice (Aug. 26, 2021, under Rule 41(a)(1)(A)(i)) certifies only that "Defendants have not yet answered the Complaint or filed a motion for summary judgment," and its certificate of service cryptically states a copy was "served on Defendants' counsel via email" — without naming anyone. (Hosted copy, action-intell.com, "Flexiworld-v-Canon-notice-of-dismissal.pdf.")

Explanation for the gap

Because Rule 41(a)(1)(A)(i) dismissal is by notice, not motion, no court order, settlement agreement, or judgment entry was ever docketed that would have disclosed Canon's counsel. The case terminated the same day the notice was filed, so any defense-side appearances that might have accompanied an answer or motion practice never materialized. Canon was plainly represented behind the scenes — it negotiated at least four answer-deadline extensions (through at least July 14, 2021) and a settlement — but those counsel never entered an appearance of record, and no public document names them.

Who likely handled it (context, not verified for this case)

Canon's patent litigation in Judge Albright's court during this period (e.g., the WSOU Investments v. Canon cases, 6:20-cv-00980/982/984/985) was handled by outside patent-litigation counsel, but I found no source tying any of those attorneys to this specific case, and the docket contains no appearance by them. Similarly, Canon U.S.A./CSAI's in-house IP group may have supervised the settlement, but no in-house counsel is named in the retrieved record.

Sourcing caveats

• The Justia docket snapshot ends April 6, 2021; entries between April 6 and August 26, 2021 were not independently verified against PACER. However, the June 11, 2021 extension motion (retrieved via Actionable Intelligence's hosted copy) and the August 26, 2021 dismissal notice both confirm no defense appearance as of those dates.
• Absence of a public appearance is not proof that no counsel was engaged — settlement negotiations clearly occurred — but no attorney for Canon, Inc. or Canon Solutions America, Inc. is identifiable from any public source reviewed.

Conclusion: For the record, the defendants in this case have no counsel of record. If you need the names for settlement/background purposes, they would have to come from Canon's own records or from PACER's full (unredacted) docket if any limited-appearance or negotiation-related filing exists after April 6, 2021 — none is evidenced in the public sources I retrieved.