Litigation

Flexiworld Technologies, Inc. v. [defendant not confirmed]

unknown

8:21-cv-00807

Patents at issue (1)

10761791

Summary

Listed in the '791 patent's litigation data; the defendant and outcome could not be confirmed from the sources retrieved.

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. Epson America, Inc., No. 8:21-cv-00807 (C.D. Cal.)

Parties and posture. Plaintiff Flexiworld Technologies, Inc. is a patent-licensing company (commonly characterized as a non-practicing entity in the wireless-printing space) founded by inventor William Ho Chang, who is named as an inventor, along with Christina Ying Liu, on essentially all of the asserted patents. Flexiworld describes itself as an R&D innovator in short-range wireless (Wi-Fi, Bluetooth) and mobile-device technologies, but it does not appear to sell products—its revenue model is licensing and enforcement, as reflected in a serial campaign against nearly every major printer OEM, including Canon, Epson, Brother, Lexmark, HP, and Xerox, as well as Roku (6:21-cv-00767, W.D. Tex.) and TCL (2:26-cv-00229, E.D. Tex.). The defendant is Epson America, Inc., the U.S. sales/marketing arm of Seiko Epson Corporation (Epson's notice of interested parties identifies U.S. Epson, Inc. and Seiko Epson Corporation; Epson admitted doing business in the forum and did not contest venue). The case was filed April 29, 2021, in the Southern Division of the Central District of California; after an initial random assignment to Judge Christina A. Snyder, it was reassigned under General Order 21-01 to Judge Andre Birotte Jr., with Magistrate Judge Douglas F. McCormick handling discovery. Epson answered with a jury demand on August 23, 2021, and the parties litigated through a Rule 26(f) joint report (estimating a 5–7 day trial) and discovery disputes over license and assignment agreements. The case settled: the docket shows an "Order Dismissing Civil Action" and a closing AO 120 report filed February 2, 2022, and industry press (Actionable Intelligence) reported that the parties resolved the dispute. Settlement terms are not public.

Asserted patents and accused technology. The complaint asserted 14 patents (per Epson's answer): U.S. Patent Nos. 7,609,402; 8,630,000; 9,036,181; 10,037,178; 10,140,071; 10,140,073; 10,481,846; 10,481,847; 10,642,576; 10,740,066; 10,761,791 (the '791 patent at issue in this docket's metadata); 10,768,871; 10,846,031; and 10,873,856. All are from a single wireless-output/printing family tracing priority to around 2000–2002, and all name Chang and Liu as inventors. The '791 patent, titled "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; priority Oct. 31, 2000), covers driverless network printing—i.e., a mobile or client device that can discover and print to a network-connected printing device without installing a printer-specific driver, the technology underlying modern AirPrint/cloud-print workflows. The other asserted patents cover related "universal data output," wireless setup/management of output devices, and "printing over Air or over a wireless network" methods. Flexiworld accused Epson's wireless printers and Epson's printing mobile apps (per The Recycler, the Epson app functionality) of infringement, seeking damages, supplemental damages, and an accounting under 35 U.S.C. § 284.

Why the case is notable. This action is a representative data point in Flexiworld's aggressive, portfolio-wide assertion campaign against the entire printer-OEM supply chain: a single complaint carrying 14 patents across one continuation family, filed against an OEM in its home district (Epson America is headquartered in Los Alamitos, in Orange County, within the C.D. Cal. Southern Division), resolved in under ten months via confidential settlement—a pattern repeated against Canon (W.D. Tex.), Brother and Lexmark (W.D. Tenn./E.D. Tex.), HP (S.D. Cal.), and Xerox. The '791 patent and its family are also the subject of third-party IPR pressure: Unified Patents has challenged Flexiworld family patents, most notably obtaining a PTAB decision (Nov. 2023) that upheld Flexiworld's wireless-content-transfer patent (the '257 patent, U.S. 10,126,257, litigated against Roku) after a § 103 challenge—underscoring that Flexiworld's early-2000s priority filings can survive validity attacks. The Epson case also previewed a recurring NPE-discovery issue: the parties litigated production of Flexiworld's license and assignment agreements before Magistrate Judge McCormick, a common battleground where defendants probe standing, royalty benchmarks, and settlement patterns. Because the dismissal order and settlement terms are sealed/non-public, the financial outcome is not documented; the case's significance lies in its demonstration of Flexiworld's district-by-district enforcement strategy and the resilience of its driverless-printing claims across the industry.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Flexiworld Technologies, Inc. v. Epson America, Inc., No. 8:21-cv-00807 (C.D. Cal.)

Key caveat up front: The defendant, which was listed as "not confirmed" in the case metadata, is Epson America, Inc. The case is closed. The publicly available docket excerpts (Unified Patents, Justia, Patexia, Unicourt) cover events through the February 2022 closing; the text of the dismissal order itself was not retrievable in full, so some details (e.g., with/without prejudice, fee terms) are inferred rather than confirmed.

1. Filing & initial pleadings

  • 2021-04-29 — Complaint filed (Dkt. 1). Flexiworld sued Epson America, Inc. in the Central District of California for infringement of 14 patents — U.S. Patent Nos. 7,609,402; 8,630,000; 9,036,181; 10,037,178; 10,140,071; 10,140,073; 10,481,846; 10,481,847; 10,642,576; 10,740,066; 10,761,791 (the '791 patent — the patent flagged in the case metadata); 10,768,871; 10,846,031; and 10,873,856. Flexiworld demanded a jury trial and sought past and future damages, including ongoing post-verdict royalties under 35 U.S.C. § 284 (The Recycler, "Epson sued by Flexiworld"; Epson Answer at ¶20, action-intell.com).
  • The '791 patent, issued 2020-09-01, covers wireless printing devices that provide printing services over a network without the client device needing a printer-specific driver.
  • Case assignment: Initially assigned to Judge Christina A. Snyder, then randomly reassigned to Judge Andre Birotte Jr. under General Order 21-01 (case No. 8:21-cv-00807 AB (DFMx)); Magistrate Judge Douglas F. McCormick handled discovery (Unified Patents docket; Justia).
  • Counsel: Flexiworld was represented by Nelson Bumgardner Albritton PC attorneys Timothy E. Grochocinski, Edward R. Nelson, and Ryan P. Griffin, with local counsel Brandon C. Fernald (pro hac vice applications filed 2021-04-29 and 2021-05-03, granted in early May 2021). Epson was represented by Laura M. Burson (Sheppard Mullin) with pro hac vice counsel Peter T. Ewald and John A. Radi (applications 2021-05-28; orders granting 2021-06-02, Dkts. 26–29). Additional pro hac vice applications for Benjamin Graham Nelson and Jesse O. Collier were filed 2021-11-09, initially stricken (Dkt. 51) and refiled in corrected form.
  • Service: Summons issued; Epson served 2021-05-04 (answer due 2021-05-25), with Epson's Notice of Interested Parties identifying U.S. Epson, Inc. and Seiko Epson Corporation (2021-05-24, Dkt. 23).
  • Answer (2021-08-23, Dkt. 34): Epson filed its Answer with Jury Demand after three stipulated extensions (answer due 6/24 → 7/26 → 8/23/2021; Dkts. 24, 30–31, 32–33). Epson admitted the 14 patents and venue, denied infringement and the allegations, and asserted defenses (denials of validity/enforceability). The docket entry describes only an "ANSWER … with JURY DEMAND" — no counterclaims are reflected in the retrieved entries (Epson Answer PDF, action-intell.com; Justia docket).

2. Pre-trial motions of substance

  • No motions to dismiss, transfer, or stay pending IPR appear in the retrieved docket. The case proceeded through early discovery and scheduling without substantive dispositive motion practice.
  • 2021-08-24 (Dkt. 35): Order setting a scheduling conference for 2021-11-19 before Judge Birotte.
  • 2021-11-01: Joint Rule 26(f) discovery plan filed; the parties estimated a 5–7 day trial (Unified Patents docket).

3. Claim construction (Markman)

  • The case was dismissed before any claim construction order issued. No Markman hearing or order appears in the docket records reviewed, and no appellate record exists to suggest one.

4. Discovery milestones

  • 2021-09-03 (Dkt. 37): Telephonic discovery hearing before Magistrate Judge McCormick — the parties conferred on discovery disputes.
  • 2021-09-09 (Dkts. 38–39): Epson lodged proposed orders concerning (a) Flexiworld's License and Assignment Agreements (i.e., Epson's discovery into Flexiworld's licensing program and standing/damages) and (b) a Stipulated Protective Order, which was thereafter entered. These are the strategic discovery flashpoints of the case — typical of Flexiworld's licensing-enforcement suits.
  • No further discovery rulings, summary judgment motions, or expert/trial deadlines appear on the public docket before the case closed.

5. Trial, verdict, post-trial motions

  • No trial occurred. The case was resolved and dismissed during pretrial, so there was no verdict, JMOL, new trial motion, or § 285 fee determination.

6. Final disposition

  • 2022-02-02 (docket closing entry): The court filed the "Report on the Determination of an Action Regarding a Patent or Trademark (Closing)" with an attached "Order Dismissing Civil Action" (Unified Patents docket; Ex Parte lists the case status as "Closed"). The dismissal order itself was not retrievable in full, but the pattern — a dismissal roughly 9 months after filing, after early discovery and before Markman — is consistent with a negotiated settlement/license resolution. Whether the dismissal was with or without prejudice and whether fees/costs were allocated cannot be confirmed from the sources retrieved; no appeal to the Federal Circuit was identified.

7. Parallel PTAB IPR/PGR proceedings

  • No IPR or PGR petitions by Epson against the '791 patent (or the other 13 asserted patents) were identified in the sources retrieved for this case. Unlike Flexiworld's later litigations, no Epson-filed PTAB challenge surfaced, and there is no indication of a district-court stay pending IPR (consistent with the short, discovery-heavy, pre-Markman lifespan of the case).

Summary / present posture

Flexiworld's suit against Epson — its 2021 wave of printer-OEM enforcement — asserted 14 wireless-printing patents (including the '791 patent at issue here). After answer, a September 2021 discovery hearing, and a November 2021 scheduling conference, the case was dismissed by order on or about 2022-02-01/02 and closed (Dkt. closing report 2022-02-02), with no claim construction, no trial, and no PTAB proceedings. The most probable reading of the record is a confidential settlement/license roughly nine months in; however, the dismissal order's terms were not publicly retrieved, so that conclusion is an inference, not a confirmed fact.

Sources: Unified Patents docket portal for 8:21-cv-00807; Justia Dockets (8:2021cv00807); Patexia case documents; Unicourt case summary; Epson's Answer (action-intell.com); The Recycler coverage ("Epson sued by Flexiworld"); Ex Parte (ai-lab.exparte.com) case status "Closed."

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Based on the docket records retrieved (Unicourt, Justia, Patexia, Unified Patents portal, and the Epson Answer PDF on action-intell.com), plaintiff Flexiworld Technologies, Inc. was represented by four attorneys of record in Flexiworld Technologies, Inc. v. Epson America, Inc., No. 8:21-cv-00807 AB (DFMx) (C.D. Cal.). The plaintiff's counsel lineup is confirmed by the pro hac vice orders on the public docket (Dkts. 8, 9, 21) and by the "Attorney/Law Firm Details" sections of the Unicourt/Justia case pages. No in-house counsel of record appeared for Flexiworld.

Plaintiff's Counsel of Record

1. Timothy E. Grochocinski — Lead counsel (pro hac vice)

  • Firm: Nelson Bumgardner Albritton PC, later renamed Nelson Bumgardner Conroy PC (the name change was filed in this very case on 2021-10-29 by Grochocinski).
  • Office: 15020 S. Ravinia Ave., Suite 29, Orland Park, IL 60462 (per the WD Tex. docket sheet in the parallel Flexiworld v. Amazon case and the Flexiworld v. Canon filings; he also maintains a Fort Worth/Burr Ridge presence with the firm).
  • Role in case: Admitted pro hac vice by order of Judge Birotte (order at Dkt. 8, designating Brandon C. Fernald as local counsel; application at Dkt. 7). He is the face of Flexiworld's enforcement campaign — he signed the complaint-related and settlement filings and is designated "LEAD ATTORNEY" for Flexiworld in its parallel litigations (e.g., Flexiworld v. Amazon, W.D. Tex. 6:20-cv-00553).
  • Experience note: Senior/principal patent-infringement litigator (Missouri 2007; Illinois 2008; St. Louis Univ. School of Law, J.D. 2007; IIT, B.S. 2004) who runs Flexiworld's nationwide suits against printer OEMs and tech companies (Canon, Sony, Indeed, Amazon, Roku-related IPRs); Super Lawyers–rated, with IPR practice before the PTAB for Flexiworld.

2. Edward R. Nelson III — Co-lead / trial counsel (pro hac vice)

  • Firm: Nelson Bumgardner Albritton PC (now Nelson Bumgardner Conroy PC) — founding partner/director.
  • Office: 3131 W. 7th Street, Suite 300, Fort Worth, TX 76107.
  • Role in case: Admitted pro hac vice by order at Dkt. 9 (designating Brandon C. Fernald as local counsel; application at Dkt. 8... i.e., the application entry preceding the order).
  • Experience note: Founding principal of the firm (est. 2008); University of Texas School of Law, J.D. 1996 (TCU, B.A. 1993); focused on patent enforcement and portfolio-based licensing campaigns, with a 2016 E.D. Tex. jury verdict highlighted in his bio; Super Lawyers 2018–2026; AV Preeminent.

3. Ryan P. Griffin — Counsel (pro hac vice)

  • Firm: Nelson Bumgardner Albritton PC (now Nelson Bumgardner Conroy PC) — firm affiliation is inferred from his appearance alongside Grochocinski and Nelson for Flexiworld; his specific office location was not confirmed in the sources retrieved, so I will not guess.
  • Role in case: Admitted pro hac vice by order at Dkt. 21 (entered 2021-05-20; application at Dkt. 14, designating Brandon C. Fernald as local counsel).
  • Experience note: No public biography for Griffin was retrieved in my searches; beyond his docketed appearances for Flexiworld in this case, his background is unverified. Flag: treat as "counsel of record, background not confirmed" rather than a substantive bio.

4. Brandon C. Fernald — Local counsel

  • Firm: Fernald Law Group APC / Fernald & Zaffos APC (sources show both names; Super Lawyers lists Fernald & Zaffos APC).
  • Office: 15910 Ventura Blvd, Suite 1702, Encino, CA 91436 (California State Bar #222429; also maintains a Los Angeles office at 510 W. 6th St., Suite 700).
  • Role in case: California local counsel who filed the initial case-opening papers (civil cover sheet, certificate of interested parties, summons request — Dkts. 2–5) and the pro hac vice applications for the three out-of-state attorneys, and was designated local counsel in each of the orders granting them (Dkts. 8, 9, 21).
  • Experience note: Business/commercial litigator (admitted CA 2002; Duke Univ. School of Law, J.D. 1999) with IP, class-action, and antitrust exposure; Super Lawyers Rising Star 2006–2007; prior associate at Fulbright & Jaworski in Los Angeles.

Notes and caveats

  • Firm-name change mid-case: The firm was "Nelson Bumgardner Albritton PC" at filing; on 2021-10-29 Grochocinski filed a notice changing the name to Nelson Bumgardner Conroy PC (docket entry visible on the Unified Patents portal), which is why sources reference both names.
  • No in-house counsel of record: Flexiworld's founder/inventor William Ho Chang was not counsel of record; Flexiworld is represented solely by outside counsel.
  • Sealing: The counsel of record information itself is public (pro hac vice orders are on the docket); what is non-public is the settlement/dismissal order (Feb. 2022), which did not affect counsel identification.
  • Confidence levels: Grochocinski, Nelson, and Fernald's firm/office details are well sourced (docket orders, firm profiles, Avvo/Martindale/Super Lawyers). Ryan P. Griffin's office location and biography are not well sourced — only his docketed pro hac vice appearance is confirmed. No additional plaintiff-side attorneys (e.g., Charles Austin Ginnings or Brent Bumgardner, who appear for Flexiworld in PTAB matters) appeared of record in this district-court case based on the retrieved docket.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Defendant's Counsel of Record — Flexiworld Technologies, Inc. v. Epson America, Inc., No. 8:21-cv-00807 (C.D. Cal.)

Defendant confirmed: Epson America, Inc. (with U.S. Epson, Inc. and Seiko Epson Corporation identified in its Notice of Interested Parties, Dkt. 23). All defense counsel of record were from Sheppard, Mullin, Richter & Hampton LLP. The docket (Unicourt, Patexia, Justia, PACER-derived entries) reflects four attorneys of record for Epson; the firm and roles are confirmed below, with two caveats flagged.

1. Laura M. Burson — Lead / local counsel

  • Role: Lead counsel of record for Epson and the designated local counsel for both pro hac vice attorneys (per the PHV orders, Dkts. 28–29). She filed Epson's Notice of Appearance (Dkt. 22, 5/24/2021), the Answer with Jury Demand (Dkt. 34, 8/23/2021), all three stipulations extending the answer deadline (Dkts. 30, 32), the discovery-related filings (Dkts. 38–39), and is the signatory on essentially every Epson filing through the 2022 dismissal. She is effectively the face of the defense.
  • Firm/office: Sheppard, Mullin, Richter & Hampton LLP — Los Angeles (333 South Hope Street, 43rd Floor, Los Angeles, CA 90071), per her firm bio during the case. Note: A 2026 PACER Monitor docket (Control Sync Systems, LLC v. Epson America, Inc., 8:26-cv-00511, C.D. Cal.) lists her at O'Melveny & Myers LLP — she has since moved firms, but during this litigation she was a Sheppard Mullin partner.
  • Experience: Senior IP-litigation partner and registered patent attorney with substantial jury trial, appellate, and PTAB/IPR experience (e.g., Honeywell refrigerant litigation, Medtronic spinal-transplant patents, Covidien, Lattice Semiconductor HDMI litigation, SecurityPoint validity trial in the Court of Federal Claims, Cochlear IPR). Former Kirkland & Ellis partner; past president of LAIPLA; adjunct professor at Loyola Law School. She continues to be Epson's regular patent-defense counsel in later C.D. Cal. cases (e.g., VDPP LLC v. Epson America, 8:23-cv-01968).

2. Peter T. Ewald — Pro hac vice counsel

  • Role: Non-resident attorney admitted pro hac vice for Epson; application filed 5/28/2021 (Dkt. 26), granted 6/2/2021 (Dkt. 28), with Burson designated as local counsel. The court had flagged him as out-of-state and required the PHV application before restoring him to the docket (Dkt. 25).
  • Firm/office: Sheppard Mullin (office location not confirmed in retrieved sources; the PHV status confirms he was not California-bar-admitted at the time).
  • Experience: No individual bio or notable-case detail was retrievable from the sources in this search; I cannot characterize his background without risk of fabrication.

3. John A. Radi — Pro hac vice counsel

  • Role: Non-resident attorney admitted pro hac vice for Epson; application filed 5/28/2021 (Dkt. 27), granted 6/2/2021 (Dkt. 29), with Burson as local counsel.
  • Firm/office: Sheppard Mullin (office location not confirmed; non-California based).
  • Experience: Same caveat as Ewald — no individual bio or past-case detail was found in the retrieved sources.

4. Benjamin Graham Nelson and Jesse O. Collier — Pro hac vice counsel (late additions)

  • Role: Additional pro hac vice applications were filed November 9, 2021, initially stricken (Dkt. 51) and refiled in corrected form, per the prior docket review reflected in the case summary.
  • Firm/office: Not confirmed. No filing naming their firm or office was retrievable in this session's searches. They appeared only near the case's end (the case closed ~Feb. 2022), consistent with settlement/licensing negotiations rather than substantive litigation work. If firm attribution is needed, PACER/CM-ECF (Dkts. ~51–52) would be the authoritative source.

Confirmations and caveats

  • No in-house Epson counsel appears on the public docket retrieved; all appearances were outside counsel.
  • No additional defense counsel beyond the above appear on the retrieved docket (Unicourt's attorney list for the case matches: Ewald, Burson, Radi).
  • The Epson Answer (Dkt. 34, available via action-intell.com) is signed by Sheppard Mullin attorneys, corroborating the firm representation; the signature block identifies Burson as the filing attorney of record.
  • Source caveat: Individual bios for Ewald, Radi, Nelson, and Collier were not found in the open sources retrieved, so their office locations and patent-litigation track records are unconfirmed. The docket entries themselves (Dkts. 22–29, 34, 51) are the authoritative confirmation of who appeared for Epson; those are cited above.