Litigation

Flexiworld Technologies, Inc. v. Hisense

2:22-cv-00225

Patents at issue (1)

10481846

Defendants (1)

Summary

Case identified as 'Flexiworld v. Hisense'; asserted patents were not confirmed.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

Case Overview & Background

Parties. Plaintiff Flexiworld Technologies, Inc. is a Vancouver, WA–based research-and-development company (described by one contemporaneous report as Oregon-based) founded by prolific inventor William Ho Chang (with Christina Ying Liu as co-inventor), holding 117+ issued patents worldwide. Stanford's NPE Litigation Database classifies Flexiworld as a non-practicing entity in this suit — listing the asserter category as "Failed startup" for this case and "Acquired patents" in related cases — i.e., it does not commercialize products and litigates through counsel (plaintiff-side firms including Nelson Bumgardner Conroy PC / Hill, Kertscher & Wharton LLP, with Timothy Grochocinski and Charles Ginnings appearing). Defendants are Hisense Co., Ltd. (the Chinese state-affiliated consumer-electronics giant) and a dozen related entities swept into the suit — including Qingdao Huatong State-Owned Capital Operation (Group) Co., a Mexican manufacturing affiliate (Hisense Electronica Mexico), Hong Kong/import-export holding companies, and Guiyang affiliates — an enforcement strategy aimed at the entire corporate chain. Hisense is one of the world's largest TV manufacturers and a major U.S. market player.

Accused products and patents. The accused instrumentalities are Hisense smart TVs sold in the U.S. (Android TV, Google TV, Roku TV, X Class TV, and Smart Laser TV lines), Hisense soundbars, and the Hisense RemoteNow mobile app — with the infringement theory centered on wireless device discovery, wireless connection to mobile devices, and wireless receipt/output of digital content. The patent at issue per the case metadata is 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, from a 2000 priority date). Technically, the '846 patent discloses an information apparatus running application software with (1) a discovery component that finds a printer on a local area network and receives the printer's device information (capabilities, supported formats) and (2) a printing component that generates/obtains print data in a format acceptable to the discovered printer and transmits it wirelessly. Caveat: public docket summaries of this specific case do not enumerate the full asserted-patent list (the Stanford NPE database links U.S. 10,037,178 to this case, and one third-party docket aggregator associates the '178, '649, and '233 patents with 2:22-cv-00225), and the complaint's publicly described infringement narrative is oriented to smart-TV/soundbar wireless output rather than printing — so the '846-specific theory against TVs is not well sourced in the public record I retrieved. The '846 patent is, however, a known Flexiworld assertion asset used in parallel suits against Canon (wireless printers) and Amazon.

Procedural posture and significance. Filed June 24, 2022, in the Eastern District of Texas, Marshall Division (case 2:22-cv-00225), assigned to Chief Judge Rodney Gilstrap, with a jury demand, cause of action under 35 U.S.C. § 271, and case flags JRG3/JURY/PATENT — the classic "rocket docket" venue long favored by patent plaintiffs for its fast timelines and historically plaintiff-friendly jury pool. The case was one of three companion E.D. Tex. complaints (2:22-cv-00225, -00227, -00228) asserting 15 Flexiworld patents total against Hisense. After service and agreed extensions (defendants' answers deferred via an agreed extension and waiver of foreign service, granted Aug. 4, 2022; scheduling conference set for Sept. 22, 2022), the litigation shifted: per a November 2022 report, Flexiworld agreed to drop several Hisense affiliates and transfer the fight to the Northern District of Georgia — where Hisense's U.S. affiliate is headquartered — with the transferred cases (1:22-cv-04337, -04338, -04371) assigned to Judge Steven D. Grimberg. The E.D. Tex. case is now marked "Closed" in docket aggregators. Public sources indicate the broader campaign settled without claim construction or validity rulings, with terms confidential.

Why the case is notable. This is a textbook NPE pattern: a non-practicing inventor entity asserting a large family of continuation patents with 2000-era priority dates (pre-smartphone wireless-output concepts) against modern smart TVs, soundbars, and companion apps of a major Asian OEM — the same portfolio Flexiworld has deployed against Amazon, Canon, and Samsung. The venue trajectory is also significant: a plaintiff-initiated retreat from Judge Gilstrap's Marshall courtroom to the defendant's home-district forum in N.D. Ga. illustrates post-TC Heartland venue dynamics for foreign manufacturers with U.S. affiliates. One additional data point worth flagging: Unified Patents lists the '846 patent's expiration as January 2, 2022 — before the June 2022 filing — which, if accurate (e.g., due to a terminal disclaimer or lapsed maintenance), would be an unusual validity/enforcement wrinkle; I could not independently verify that from the retrieved sources. No parallel PTAB IPR filings specific to this case were confirmed in the sources reviewed, though Flexiworld's portfolio has faced IPR challenges in other litigation.

Key legal developments & outcome

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

Based on my research, here is the key legal developments timeline for Flexiworld Technologies, Inc. v. Hisense Co., Ltd. et al., No. 2:22-cv-00225 (E.D. Tex.), which was transferred to the Northern District of Georgia and renumbered 1:22-cv-04337 (N.D. Ga., Judge Steven D. Grimberg).

A caveat up front: public docket sources for the transferred case are incomplete, and several of the later-stage events (claim construction, trial, final judgment) could not be confirmed from the sources available to me. Where a fact is unconfirmed, I say so explicitly.

1. Filing & Initial Pleadings (E.D. Tex.)

2. Venue Transfer (the pivotal pre-trial development)

  • October 2022 — Agreed transfer to N.D. Georgia. Rather than litigating before Judge Gilstrap, Flexiworld agreed to drop several Hisense affiliates and transfer the case to the Northern District of Georgia, where Hisense's U.S. affiliate is headquartered. The case was transferred from E.D. Tex. on 2022-10-31 and opened in N.D. Ga. as 1:22-cv-04337, assigned to Judge Steven D. Grimberg. The transferred docket entries retain the notation "[Transferred from Texas Eastern on 10/31/2022]" (UniCourt; Lexology/Georgia IP Litigation, 2022-11-09).
  • Context: Flexiworld filed three parallel E.D. Tex. complaints on 2022-06-24/related dates asserting a total of ~15 patents against Hisense smart TVs (Android TV, Google TV, Roku TV, X Class, Smart Laser TV), soundbars, and the RemoteNow app; they were re-filed/transferred as N.D. Ga. cases 1:22-cv-04337, 1:22-cv-04338, and 1:22-cv-04371, all before Judge Grimberg (Lexology, supra; DocketAlarm – 1:22-cv-04338).

3. Post-Transfer Pleading Stage (N.D. Ga., 1:22-cv-04337)

  • 2022-11-22/25 — Pro hac vice admissions (Dkts. 31–32). Perkins Coie attorneys Matthew C. Bernstein and Patrick J. McKeever (with Kristin S. Tucker as local counsel) were admitted for the Hisense defendants (UniCourt, supra).
  • 2022-11-29/30 — Joint motion and order on responsive pleadings (Dkts. 34–35). The court ordered that the Hisense defendants need not respond to the original complaint; Flexiworld was to file an amended complaint by 2023-01-06, with defendants' response due by 2023-01-27.
  • 2022-12-27 — Extension for amended complaint (Dkts. 36–37). The deadline for the amended complaint was extended to 2023-03-07 (UniCourt, supra).

4. Claim Construction, Summary Judgment, Discovery, Trial

  • Not confirmed. I was unable to locate any Markman order, claim-construction ruling, summary-judgment decision, discovery-sanctions order, or trial proceedings for 1:22-cv-04337 in the available public sources. What is clear is that the case did not reach claim construction before resolution, consistent with how the related Flexiworld–Hisense cases played out (see below).

5. PTAB / IPR Proceedings

  • No parallel IPR/PGR found on the '846 patent. My searches of PTAB-related sources (Unified Patents portal, general web) surfaced no IPR petition against U.S. Patent No. 10,481,846 in connection with this litigation. Given the patent's early 2022 expiration (per Unified Patents), an IPR may have been time-barred or viewed as low-value. I would flag this as an absence of evidence rather than a definitive negative.

6. Outcome / Present Posture

  • Status: Closed. The Ex Parte/AI-Lab case tracker lists 2:22-cv-00225 as "Closed" (Ex Parte case page). However, I could not confirm the specific terminating document (settlement agreement, stipulation of dismissal, or judgment) from the sources available to me.
  • Pattern in related cases (informative but not dispositive): The parallel Flexiworld–Hisense cases in N.D. Ga. reportedly resolved by settlement before claim construction. PatSnap's litigation summaries describe the related Hisense matters (e.g., 1:22-cv-04371 and 1:22-cv-04338) as having settled, with undisclosed terms and no judicial determination of validity or claim scope (PatSnap – Flexiworld v. Hisense wireless streaming settlement; PatSnap – Flexiworld v. Hisense patent infringement settlement). It is reasonable to infer 1:22-cv-04337 followed the same trajectory (settlement/dismissal pre-Markman), but I have not verified that case's own docket entry, so that inference should be treated as unconfirmed.

Bottom Line

The litigation's notable features are procedural rather than merits-based:

  1. Fast agreed transfer out of Judge Gilstrap's E.D. Tex. docket to N.D. Ga. (Judge Grimberg) in October 2022, in exchange for dropping several foreign Hisense affiliates — a classic § 1404(a) / affiliate-dismissal trade.
  2. No merits rulings: no answer filed to the original complaint, no claim construction, no summary judgment, and (apparently) no trial — the case was in a pleading-extension posture (amended complaint deferred to March 2023) when it closed.
  3. Likely confidential settlement, consistent with the disposition of Flexiworld's companion Hisense cases, leaving the asserted patents' validity and scope untested.
  4. No PTAB challenge to the '846 patent was identified.

Reliability note: Verified items are the filing, parties, assignment, transfer date/renumbering, and the N.D. Ga. extension orders (Dkts. 34–37). The patent list for this specific case number is partially conflicting across sources (metadata says '846; Stanford NPE DB adds '510), the final closing instrument is not confirmed, and no IPR was found. PACER review of 1:22-cv-04337 would be needed to nail down the exact settlement/dismissal order and any amended complaint.

Plaintiff representatives

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

Plaintiff's Counsel of Record — Flexiworld Technologies, Inc. v. Hisense, No. 2:22-cv-00225 (E.D. Tex., Marshall Div., Judge Rodney Gilstrap)

Based on the docket records available (Justia Dockets, Patexia, UniCourt, PACER-derived filings) and firm/PTAB records, the plaintiff is represented by two attorneys of record, both from the same boutique IP firm:

1. Timothy E. Grochocinski

  • Role: Lead counsel / attorney in charge for Flexiworld; signing attorney on the complaint and virtually all early case filings.
  • Firm/Office: Nelson Bumgardner Conroy P.C. (firm name changed from Nelson Bumgardner Albritton PC in late 2021), 15020 S. Ravinia Ave., Suite 29, Orland Park, IL 60462.
  • Docket grounding: Signed the Complaint (Dkt. 1), AO 120 patent form (Dkt. 2), corporate disclosure statement (Dkt. 5), and summons returns (Dkts. 6–9) in this case (Justia docket for 2:22-cv-00225; Patexia case documents).
  • Experience: Grochocinski is Flexiworld's longtime national patent-litigation counsel, appearing for Flexiworld in suits against Epson (C.D. Cal. 8:21-cv-00807), HP (S.D. Tex.), Sony (E.D. Tex. 2:23-cv-00616), Amazon (W.D. Tex. 6:20-cv-00553), Lexmark (E.D. Ky.), Roku (W.D. Tex.), LG (E.D. Tex. 2:25-cv-00960), and TCL (E.D. Tex. 2:26-cv-00229). He is routinely designated "Lead Attorney" in Flexiworld dockets.

2. Charles Austin Ginnings

  • Role: Attorney of record / co-counsel for Flexiworld (filed a Notice of Attorney Appearance).
  • Firm/Office: Nelson Bumgardner Conroy P.C., 15020 S. Ravinia Ave., Suite 29, Orland Park, IL 60462 (firm's newer office at 745 McClintock Dr., Suite 340, Burr Ridge, IL 60527 per recent PTAB filings).
  • Docket grounding: Dkt. 3 — "NOTICE of Attorney Appearance by Charles Austin Ginnings on behalf of Flexiworld Technologies, Inc." (filed June 28, 2022; Patexia docket sheet).
  • Experience: Formerly at Fitzpatrick, Cella, Harper & Scinto and Desmarais LLP; focuses on patent litigation, IPRs/CBMs, and ITC Section 337 investigations in consumer electronics and software. He has served as Flexiworld's lead or back-up counsel in multiple PTAB proceedings (e.g., IPR2022-00775, IPR2023-00845) and is admitted to the E.D. Tex. bar (per his firm bio).

Additional notes and caveats

  • No separate local counsel identified: The available docket excerpts (through roughly Aug. 2022) show no standalone local-counsel entry or pro hac vice motion for the plaintiff. Both Grochocinski and Ginnings were already admitted in the E.D. Tex. (Ginnings' firm bio lists E.D. Tex. admission), so no distinct Texas local counsel appears to have entered. If a separate local counsel appeared in later, non-public docket entries, it would not be reflected in the public sources reviewed.
  • In-house counsel: No in-house attorney is listed as counsel of record in the district docket. Flexiworld's corporate representative in related PTAB filings is William Chang (signatory on Flexiworld's IPR power-of-attorney), but he does not appear as counsel of record in this litigation.
  • Case posture: This case was assigned to Judge Gilstrap (Marshall Division) and filed June 24, 2022. Per a November 2022 Lexology article, Flexiworld agreed to drop certain Hisense affiliates and litigate in the Northern District of Georgia (where related actions 1:22-cv-04337/04338/04371 were filed), and third-party databases mark this E.D. Tex. matter "Closed." I could not confirm from public dockets the exact termination/transfer docket entry, so the case's final disposition (dismissal vs. transfer) should be verified on PACER.
  • Asserted patent: The case metadata lists U.S. Patent No. 10,481,846 as the patent at issue; I did not independently verify the '846 patent's presence in the original complaint from the docket text available.

All names, firms, and docket cites above come from the public sources cited (Justia, Patexia, UniCourt, PTACTS/PTAB filings, firm website, and third-party litigation databases); no attorneys were invented.

Defendant representatives

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

Based on my research — which drew on the UniCourt docket for the transferred case (1:22-cv-04337, N.D. Ga.), the Ex Parte case tracker, and PTAB records — here is the defense counsel picture. Note an important framing point: no defense counsel appeared in the E.D. Tex. case (2:22-cv-00225) before transfer; the case was transferred on Oct. 31, 2022, before any responsive pleading, and all defense appearances were entered in the renumbered N.D. Ga. action (Judge Steven D. Grimberg). UniCourt's docket for 1:22-cv-04337 lists four defense attorneys:

Defense Counsel of Record — Flexiworld Technologies, Inc. v. Hisense Co., Ltd., No. 2:22-cv-00225 (E.D. Tex.) → 1:22-cv-04337 (N.D. Ga.)

1. Matthew C. Bernstein — Lead counsel (pro hac vice)

  • Firm: Perkins Coie LLP (per the prior case summary; the firm's litigation practice group handles the Hisense account).
  • Role: Lead outside counsel for the Hisense defendants; admitted pro hac vice in N.D. Ga. on Nov. 25, 2022 (Dkt. 31 — "APPLICATION for Admission of Matthew C. Bernstein Pro Hac Vice … Attorney Matthew C Bernstein added appearing on behalf of Hisense International (Hong Kong) America Investment Co., Ltd., Hisense International Co., Ltd., Hisense Visual Technology Co., Ltd.").
  • Experience: 20+ years in patent litigation (computer hardware/software, semiconductors, Internet/e-commerce); admitted in multiple California and Texas districts, the Federal Circuit, and the U.S. Supreme Court. Critically, Bernstein is the same lawyer who has repeatedly defended against Flexiworld's portfolio on the petitioner side at the PTAB and in district court — he served as lead counsel for Roku in Flexiworld Technologies, Inc. v. Roku, Inc., No. 6:20-cv-00819-ADA (W.D. Tex.), and in IPRs against Flexiworld patents including IPR2022-01267, IPR2021-00713/00714/00715 (per his sworn pro hac vice affidavit in IPR2022-01267, Roku v. Flexiworld). That deep familiarity with Flexiworld's patent family made him a natural lead for Hisense.

2. Patrick J. McKeever — Co-counsel (pro hac vice)

  • Firm: Perkins Coie LLP (per prior summary; admitted alongside Bernstein via Dkts. 31–32 in Nov. 2022).
  • Role: Co-counsel / backup trial counsel for the Hisense defendants; admitted pro hac vice in N.D. Ga. around Nov. 22–25, 2022.
  • Experience: Perkins Coie IP litigator (consumer electronics/software focus); his specific notable cases for Hisense were not separately confirmed in my sources, but he was admitted on the joint defense team with Bernstein.

3. Kristin S. Tucker — Local counsel (N.D. Ga.)

  • Firm: Not independently confirmed in the public sources I retrieved (the prior case summary identifies her only as "local counsel" for the Hisense defendants).
  • Role: Georgia local counsel for the Hisense defendants (firm affiliation not verified — flagged as unconfirmed).
  • Experience: Not confirmed.

4. Linda Ann Klein — Counsel of record / appearing attorney

  • Firm: Not confirmed from public sources.
  • Role: Filed Dkt. 30 — "NOTICE of Appearance by Linda Ann Klein on behalf of Hisense International (Hong Kong) America Investment Co., Ltd., Hisense International Co., Ltd., Hisense Visual Technology Co., Ltd." (entered ~Nov. 2022). She also appears to have handled the electronic filing mechanics for the defense's proposed orders (e.g., the proposed order attached to Bernstein's pro hac vice application at Dkt. 31 was e-filed under her ECF credentials per UniCourt's docket text). Her title (outside counsel vs. in-house) and firm could not be verified from my sources — flagged as unconfirmed.
  • Experience: Not confirmed.

Key docket grounding

  • Dkt. 30 — Notice of Appearance by Linda Ann Klein (for three Hisense entities).
  • Dkt. 31 — Pro hac vice application for Matthew C. Bernstein (filed Nov. 25, 2022; fee receipt AGANDC-12214833).
  • Dkt. 32 — (per prior summary) Pro hac vice admission for Patrick J. McKeever.
  • Dkts. 34–35 — Joint motion/order (filed by the defense team) excusing the Hisense defendants from responding to the original complaint and setting the amended-complaint/response schedule (Nov. 29–30, 2022).
  • Dkts. 36–37 — Unopposed extension of the amended-complaint deadline to March 7, 2023.

Caveats

  • Firm affiliations for Tucker and Klein are unconfirmed — I could not verify their employers from the sources available before my search limit was reached; PACER/CM-ECF review of 1:22-cv-04337 (Dkts. 30–32) or the N.D. Ga. bar records would confirm them.
  • No defense counsel appeared in the E.D. Tex. case itself — the docket for 2:22-cv-00225 shows only plaintiff-side filings and the transfer; the Hisense defense team's appearances are all post-transfer in N.D. Ga.
  • The case closed (per the Ex Parte tracker) before claim construction, consistent with a confidential settlement; no merits rulings involved defense counsel's substantive advocacy.