Flexiworld Technologies, Inc. v. Epson America, Inc.

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

Parties and roles. Plaintiff Flexiworld Technologies, Inc. is a Washington corporation headquartered in Vancouver, WA, founded by inventor William Ho Chang (with Christina Ying Liu as co-inventor on the asserted patents). Flexiworld describes itself as an R&D firm for short-range wireless (Wi-Fi/Bluetooth) and mobile technologies, but in litigation circles it operates as a classic patent-assertion/licensing entity: it does not appear to sell products and has run parallel suits against Amazon (W.D. Tex. 2020), Canon (W.D. Tex. 2021), Lexmark (E.D. Ky. 2022, also asserting the '846 patent), and Hisense (E.D. Tex. 2022). Defendant Epson America, Inc. is the U.S. sales and marketing arm of Japan's Seiko Epson Corporation; Epson's notice of interested parties identified U.S. Epson, Inc. and Seiko Epson Corporation as interested entities (Dkt. 23), and Epson America is headquartered in Los Alamitos, California — inside the Central District.

Accused technology and patents. The complaint (Dkt. 1, filed Apr. 29, 2021) accused Epson's Wi-Fi/Bluetooth-enabled printers and the companion Epson mobile printing app of direct and indirect infringement of 14 patents: 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; 10,768,871; 10,846,031; and 10,873,856 — all invented by Chang and Liu and assigned to Flexiworld. The technology centers on "printing over air" — driverless, mobile-to-printer wireless printing where a mobile app discovers a printer on a LAN, pulls the printer's device profile (capabilities, language, format, duplex, color space, resolution), generates print data from that profile, and transmits it without a printer-specific driver. The case's focal '846 patent (U.S. Patent No. 10,481,846, "Software Applications and Information Apparatus for Printing Over Air or for Printing Over a Network," issued Nov. 19, 2019) claims exactly that driverless-discovery-and-print method; claim 1 requires the print data to be generated "based, at least in part, on the device profile" received from the printer, with no printer-specific driver needed at the information apparatus. Epson's answer (Dkt. 34, filed Aug. 23, 2021, with jury demand) admitted the patents were asserted and that venue was proper, admitted it had no license, and denied infringement, validity, and enforceability.

Procedural posture and significance. The case was filed in the Central District of California (Santa Ana/Southern Division docket prefix 8), initially assigned to Judge Christina A. Snyder and Magistrate Judge Douglas F. McCormick, then handled by Judge Andre Birotte Jr. after reassignment, with McCormick presiding over discovery (including a Sept. 3, 2021 telephonic discovery hearing at which license/assignment agreements and a protective order were lodged — Dkts. 37–39). Venue was uncontested because Epson America's principal place of business is in the district. The case never reached a merits ruling: after the parties' Rule 26(f) report (Nov. 1, 2021, estimating a 5–7 day trial), the action was dismissed by an Order Dismissing Civil Action, with the AO 120 closing report filed Feb. 2, 2022 (Dkt. 55 area); industry press (Actionable Intelligence) reported the parties settled, though the terms were not public. The case is notable as one front of Flexiworld's coordinated campaign against printer OEMs over the now-ubiquitous "print over air" feature (AirPrint, Google Cloud Print, and vendor apps), filed on the heels of its W.D. Tex. suit against Canon and followed by suits against Lexmark and Hisense. I found no publicly sourced PTAB/IPR proceeding against the '846 patent in this case, and the settlement's terms and any cross-licensing are not publicly documented; the court entered no substantive claim constructions or infringement findings.

Key Legal Developments and Outcome

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

Note on sourcing: I was able to reconstruct the case timeline from public docket mirrors (Justia, Unified Patents portal, UniCourt, Patexia) and contemporaneous trade coverage (Actionable Intelligence, The Recycler). I could not access PACER directly, and the docket mirrors cut off at various points, so a few details (notably whether Epson asserted counterclaims and the exact text of the final dismissal order) are not independently verified.

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1. Filing and Initial Pleadings

• 2021-04-29 — Complaint filed (Dkt. 1). Flexiworld Technologies, Inc. sued Epson America, Inc. in the Central District of California, asserting direct and indirect 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 (the '846 patent); 10,481,847; 10,642,576; 10,740,066; 10,761,791; 10,768,871; 10,846,031; and 10,873,856. The accused products were Epson printers using Wi-Fi/Bluetooth wireless printing and the Epson companion app. Flexiworld demanded a jury trial and damages under 35 U.S.C. § 284, including supplemental/ongoing royalty damages. (Dkt. 1; The Recycler, "Epson sued by Flexiworld," May 2021.)
  • The '846 patent ("Software Applications and Information Apparatus for Printing Over Air or For Printing Over a Network") issued 2019-11-19 from App. No. 15/697,247 (filed 2017-09-06), inventors William Ho Chang and Christina Ying Liu; assignment to Flexiworld recorded at Reel/Frame 044174/0659.
• 2021-04-30 — Assignment. Case initially assigned to District Judge Christina A. Snyder and Magistrate Judge Douglas F. McCormick, then returned for random reassignment under General Order 21-01 and reassigned to Judge Andre Birotte Jr. (case number became 8:21-cv-00807 AB (DFMx)). (Unified Patents docket portal.)
• 2021-05-04 — Service on Epson effected (answer due 5/25/2021). (Dkt. 11 area; PROOF OF SERVICE.)
• 2021-05-24 to 2021-07-27 — Three stipulated answer extensions (Dkts. 24, 30, 32; orders at Dkts. 31, 33), pushing the answer deadline from 6/24/2021 to 7/26/2021 to 8/23/2021.
• 2021-05/06 — Pro hac vice admissions. Plaintiff's out-of-state counsel Timothy E. Grochocinski, Edward R. Nelson, and Ryan P. Griffin admitted, designating Brandon C. Fernald as local counsel (Dkts. 8, 9, 14, 28-29 orders). Epson's Peter T. Ewald and John A. Radi admitted, designating Laura M. Burson (Sheppard Mullin) as local counsel (Dkts. 26-29). Epson's Notice of Interested Parties identified U.S. Epson, Inc. and Seiko Epson Corporation (Dkt. 23).
• 2021-08-23 — Epson's Answer with Jury Demand (Dkt. 34). Epson admitted the '846 patent was among the patents-in-suit and did not contest venue, but denied infringement, validity, and enforceability of all 14 patents, denied any license obligation, and asserted the patents were invalid/unenforceable. Based on the docket entry ("ANSWER ... with JURY DEMAND"), no counterclaims appear to have been filed, though I could not verify the full answer text for affirmative defenses.

2. Pre-Trial Motions of Substance

• No motions to dismiss, transfer, or stay pending IPR were identified. Epson did not contest venue in its answer (venue was proper in the C.D. Cal.). I found no Rule 12(b)(6) motion, no § 1404 transfer motion, and no motion to stay — consistent with a case that settled inside a year.
• 2021-11-19 — Scheduling conference set by Judge Birotte (Dkt. 35, entered 2021-08-24). The parties filed their Joint Rule 26(f) Discovery Plan on 2021-11-01, estimating a 5–7 day jury trial. (Unified Patents docket portal.)

3. Claim Construction (Markman)

• None occurred. The case was dismissed in early February 2022, before any Markman briefing or hearing. No claim construction order exists.

4. Discovery Milestones

• 2021-09-03 — Telephonic discovery hearing before Magistrate Judge McCormick (Dkt. 37). The hearing concerned discovery disputes, following which:
  • 2021-09-09 — Notice of Lodging of License and Assignment Agreements (Dkt. 38) — strategically significant because it indicates discovery over Flexiworld's license history/standing (license and assignment agreements are typically the battleground in Flexiworld's licensing-centric enforcement campaigns).
  • 2021-09-09 — Notice of Lodging of Proposed Stipulated Protective Order (Dkt. 39) — routine but signals the parties were gearing up for document production.
• 2021-11-01 — Joint Rule 26(f) report filed (trial estimate 5–7 days).
• 2021-11-09/10 — Pro hac vice applications for two additional Epson attorneys (Benjamin Graham Nelson, Jesse O. Collier) were initially stricken (Dkt. 51) and then corrected — consistent with Epson staffing up for continued litigation, not winding down. (Unified Patents docket portal.)
• No significant discovery disputes or sanctions motions surfaced beyond the September discovery hearing.

5. Trial / Verdict / Post-Trial

• No trial, verdict, or post-trial motions (JMOL, new trial, fees) ever occurred.

6. Final Disposition

• 2022-02-02 — Case dismissed and closed. The docket shows a "REPORT ON THE DETERMINATION OF AN ACTION Regarding a Patent or Trademark (Closing)" filed 2022-02-02, attaching an "Order Dismissing Civil Action" (Dkt. 41 area). Trade press (Actionable Intelligence, "Flexiworld and Epson Settle Wireless Patent Dispute") reported that the parties settled and the case was dismissed. The dismissal was voluntary/stipulated, with no merits ruling — no finding of infringement, validity, or enforceability on any of the 14 patents, including the '846 patent.
• No appeal was filed; the Federal Circuit has no related appeal.

7. Parallel PTAB IPR/PGR Proceedings

• No Epson-filed IPR or PGR on the '846 patent (or any of the other 13 asserted patents) was identified. Unlike Flexiworld's other litigations (e.g., against Roku, where Unified Patents filed IPR2022-00775 on the related '257 patent), the Epson case settled before any petition naming Epson as real party in interest surfaced on the PTAB docket.
• For context: Flexiworld had previously sued Canon (February 2021) and voluntarily dismissed that action; the Epson settlement followed a similar pattern. Flexiworld's patents have faced third-party IPR challenges (e.g., Unified Patents' IPR2022-00775 on the '257 patent in the Roku litigation, which the PTAB ultimately rejected in 2023), but those are separate proceedings not involving Epson or the '846 patent.

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Bottom Line

This was a short-lived, 14-patent infringement case that ended in a global settlement roughly nine months after filing. Key milestones: complaint (2021-04-29) → answer with jury demand (2021-08-23) → early discovery disputes before Magistrate Judge McCormick (September 2021) → scheduling conference and Rule 26(f) report (November 2021) → stipulated dismissal on settlement (2022-02-02) with no Markman ruling, no summary judgment, no trial, and no merits determination. No Epson-filed IPR on the '846 patent has been identified, and no appeal followed.

Counsel of Record for Plaintiff Flexiworld Technologies, Inc.

Based on the CM/ECF docket for Flexiworld Technologies, Inc. v. Epson America, Inc., No. 8:21-cv-00807 (C.D. Cal., filed Apr. 29, 2021; Judge Andre Birotte Jr.; Magistrate Judge Douglas F. McCormick), the plaintiff's counsel of record were four attorneys. Three out-of-state attorneys appeared pro hac vice; one California attorney served as local counsel. No in-house counsel for Flexiworld appeared on the docket.

1. Timothy E. Grochocinski — Lead / Pro Hac Vice Counsel

• Firm: Nelson Bumgardner Albritton PC, renamed Nelson Bumgardner Conroy PC during this case — he filed a "Notice of change of firm name … to Nelson Bumgardner Conroy PC" in this very action on Oct. 29, 2021 (Unified Patents docket).
• Office: 15020 S. Ravinia Ave., Suite 29, Orland Park, IL 60462.
• Docket support: PHV application (Dkt. #8) granted by Order (Dkt. #19, May 20, 2021), designating Brandon C. Fernald as local counsel. He is the primary filing attorney for Flexiworld in nearly all of its nationwide patent campaign (Amazon, Sony, HP, LG, TCL, Lexmark, Indeed, etc.) and was listed as "LEAD ATTORNEY" for Flexiworld in Flexiworld v. Amazon.com, No. 6:20-cv-00553 (W.D. Tex.), per the docket sheet filed as an exhibit in IPR2021-00715. He also signed the Patent Owner's Power of Attorney in IPR2023-00845 for Flexiworld's '402 patent.
• Note: Patent-litigation veteran representing Flexiworld across its wireless "universal data output" patent portfolio, including IPR defense work before the PTAB.

2. Edward R. Nelson III — Pro Hac Vice Counsel

• Firm: Nelson Bumgardner Albritton PC / Nelson Bumgardner Conroy PC (same firm as Grochocinski).
• Office: Texas (firm's Houston-area base; Texas Bar No. 00797142).
• Docket support: PHV application (Dkt. #9) granted by Order (Dkt. #20, May 20, 2021), designating Brandon C. Fernald as local counsel. He signed Flexiworld pleadings in the parallel Flexiworld v. Canon case (W.D. Tex.), and appeared for Flexiworld in Flexiworld v. Amazon (W.D. Wash.).

3. Ryan P. Griffin — Pro Hac Vice Counsel

• Firm: Nelson Bumgardner Albritton PC / Nelson Bumgardner Conroy PC.
• Office: Texas (Texas Bar No. 24053687).
• Docket support: PHV application (Dkt. #14) granted by Order (Dkt. #21, May 20, 2021), designating Brandon C. Fernald as local counsel. Co-signatory with Nelson on Flexiworld filings in the W.D. Tex. Canon matter and in the W.D. Wash. Amazon case.

4. Brandon C. Fernald — Local Counsel (California)

• Firm: Fernald Law Group LLP / Fernald & Zaffos APC, Los Angeles (Encino), CA — 510 W. 6th St., Suite 700 / 15910 Ventura Blvd., Suite 1702 (firm website lists him as co-founder; SuperLawyers/Avvo list him as a licensed California litigator since 2002).
• Role in case: Designated as local counsel in all three PHV orders (Dkts. #19, #20, #21); he was the CM/ECF filing attorney for the complaint (Dkt. #1) and the PHV applications. He also served as local counsel for Flexiworld in other C.D. Cal. filings.
• Note: Former Fulbright & Jaworski (now Norton Rose Fulbright) associate with IP and commercial litigation experience; general business/IP litigator rather than a patent specialist.

Procedural context / caveats

• The case was voluntarily dismissed (joint settlement notice filed Jan. 31, 2022; "Order Dismissing Civil Action" entered Feb. 2, 2022, per Dkt. and the clerk's closing Report on the Determination of an Action). No merits ruling was issued, and no attorney filings are sealed that would obscure the roster above.
• The docket is consistent across UniCourt, Justia, Patexia, and Unified Patents: plaintiff's attorneys were Grochocinski, Nelson, Griffin, and Fernald only. (Defense-side PHV applications by Peter T. Ewald, John A. Radi, and later-stricken applications by Benjamin Graham Nelson and Jesse O. Collier were for Epson, not Flexiworld.)
• One caveat: the docket does not use the label "lead counsel," so the lead role for Grochocinski is inferred from his designation as lead in the parallel W.D. Tex. Amazon case and his role as primary filer here; Fernald's firm name at the time of appearance (Fernald Law Group LLP vs. Fernald & Zaffos APC) is noted from bar/firm directory sources rather than the docket itself.

Based on the docket record for Flexiworld Technologies, Inc. v. Epson America, Inc., No. 8:21-cv-00807 (C.D. Cal.), the following attorneys appeared for defendant Epson America, Inc. (all appearances were made via publicly docketed filings; nothing was sealed as to counsel):

Counsel of record for Epson America, Inc.

Key sourcing notes

• Dockets consulted: Justia Docket (retrieved July 2022), Unicourt, Patexia documents service, Unified Patents litigation portal, and PACER Monitor — all consistent on the names above and on the PHV orders (Dkts. 28, 29, 49, 50) designating Burson as local counsel.
• The '846 patent connection: Epson's Answer (Dkt. 34, filed Aug. 23, 2021 by Burson) expressly admits the '846 patent was among the 14 patents-in-suit and denies infringement. The case was dismissed without a merits ruling on Feb. 2, 2022 (closing report, Dkt. 54), so no merits-stage lead-counsel designation was ever made by the court beyond the docket appearances above.
• No in-house counsel of record: The docket shows no Epson America in-house attorney filing an appearance; all filings were made by outside counsel.
• Caveat on firms/offices: Only Burson's firm (Sheppard Mullin) is affirmatively documented in the filings I retrieved (via the Answer's letterhead). The firms and office locations of Ewald, Radi, Nelson, and Collier are not confirmed by the sources I could access, and I did not locate reliable firm biographies for them within the search results. I would not speculate on their affiliations. (Note that Ewald's representation of Seiko Epson in the later E.D. Tex. case is verified via PACER Monitor, which confirms his ongoing role as outside patent counsel to the Epson/Seiko group.)
• If you need the exact signature block (firm names for all PHV attorneys), the primary source is the Answer at Dkt. 34 and the PHV applications at Dkts. 26–27, 46–47, 49–50 on PACER (C.D. Cal. — case is closed but documents remain available).