Litigation

Flexiworld Technologies, Inc. v. Hisense Co., Ltd. et al.

Unknown

1:22-cv-04338

Filed
2022-10-31

Patents at issue (1)

Summary

This case is listed in the Stanford NPE Litigation Database as involving the '257 patent against Hisense and numerous affiliates. The final disposition could not be confirmed from available sources.

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. Hisense Co., Ltd. et al., No. 1:22-cv-04338 (N.D. Ga.)

Parties and accused technology. Plaintiff Flexiworld Technologies, Inc. is a wireless-technology research and development company (Oregon-based per contemporaneous reporting) that does not appear to commercialize products; the Stanford NPE Litigation Database categorizes it as a non-practicing entity ("failed startup" / "acquired patents" categories), and its named inventor-founder, William Ho Chang, holds a large portfolio of wireless-connectivity patents (Lexology, Nov. 9, 2022; Stanford NPE Database, case 269070). The defendants are Chinese consumer-electronics giant Hisense Co., Ltd. and a web of affiliates — including Hisense Visual Technology Co., Ltd., Hisense International Co., Ltd., Qingdao Hisense Electronics Industry Holdings Co., Ltd., Hisense USA Corporation, and several Hong Kong/Mexican/Chinese holding and sales entities (Justia docket; RPX complaint excerpt). Flexiworld accused Hisense's U.S.-sold Smart TVs (including Android TV, Google TV, Roku TV, X Class TV, and Smart Laser TV models), its Soundbar products, and the Hisense RemoteNow app of infringing, plus related TVs and projectors imported and distributed through Hisense's U.S. subsidiaries (Lexology; RPX complaint excerpts, ¶¶ 12–17).

Patent and procedural posture. The patent in suit per the case metadata is U.S. Patent No. 9,836,257 ("Mobile Information Apparatus That Includes Intelligent Wireless Display, Wireless Direct Display, or Transfer of Digital Content for Playing Over Air the Digital Content at Smart Televisions, Television Controllers, or Audio Output Devices"), issued Dec. 5, 2017, from a Jan. 18, 2002 application claiming priority to a Jan. 19, 2001 provisional (inventors Chang and Liu). In one line: the '257 patent claims a non-transitory medium/software method for a smartphone-class "wireless information apparatus" to transfer digital content over Wi-Fi (IEEE 802.11) or Bluetooth to a distinct wireless output controller associated with a TV or audio device, using security/authentication procedures and a "universal data output" scheme that avoids device-dependent drivers (IPR2022-00775 Institution Decision; claim 27 quoted therein). The case began June 24, 2022 in the Eastern District of Texas (Marshall Division, Judge Rodney Gilstrap, as part of three companion suits asserting fifteen Flexiworld patents against Hisense), and was transferred to the Northern District of Georgia, Atlanta Division, Judge Steven D. Grimberg on Oct. 31, 2022, after Flexiworld agreed to drop several Hisense affiliates (Lexology; Justia transfer docket; DocketAlarm). Venue there is not coincidental: Hisense USA and Hisense Electronics Manufacturing Company of America are Georgia corporations headquartered at 7310 McGinnis Ferry Road, Suwanee, Georgia — inside the district — and Flexiworld pled that they act as agents through which the foreign Hisense entities import and sell the accused products, while the foreign defendants are suable anywhere under 28 U.S.C. § 1391(c)(3) (RPX complaint, ¶¶ 12–20).

Why it matters. This is a textbook NPE assertion campaign against a major TV OEM: Flexiworld filed three overlapping complaints against the Hisense group, and the same '257 patent was simultaneously asserted against Roku (W.D. Tex. No. 6:21-cv-00767-ADA) and challenged in parallel PTAB proceedings. Unified Patents filed IPR2022-00775 (instituted Nov. 8, 2022 on all challenged claims 27–28); notably, in a Final Written Decision of Nov. 1, 2023, the PTAB found no challenged claim unpatentable, crediting Flexiworld's "swear behind" evidence that the invention was conceived by Oct. 22, 2000 — before the asserted Olgaard and Acharya references — based on draft-provisional-application file metadata (IPR2022-00775, Paper 41; PTAB Litigation Blog; Jones Day via Mondaq). Separately, Roku's IPR2022-01267 against the '257 patent was terminated after Roku and Flexiworld settled and cross-licensed in October 2022. That Roku settlement and the PTAB's validity win likely shaped Hisense's incentives in this case. As for the final disposition here: the existing case summary states the outcome could not be confirmed; publicly available dockets (DocketAlarm's last update roughly three years after filing) and a PatSnap litigation note claiming a settlement "per PACER" are not sufficiently reliable to confirm a dismissal, judgment, or settlement terms — so the ultimate resolution of 1:22-cv-04338 remains unverified from well-sourced public records.

Key legal developments & outcome

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

Based on the available sources (I was unable to pull the full PACER docket for the N.D. Ga. phase before hitting search limits), here is a carefully sourced chronology. I flag where the record is incomplete.

Case overview

  • Caption: Flexiworld Technologies, Inc. v. Hisense Co., Ltd. et al., No. 1:22-cv-04338 (N.D. Ga., Atlanta Div., Judge Steven D. Grimberg), N.D. Ga. docket opened 2022-10-31 upon transfer from the Eastern District of Texas (DocketAlarm; Justia; Stanford NPE Litigation Database).
  • Nature: Patent infringement (35 U.S.C. § 271), jury demanded by both sides; NPE plaintiff (Flexiworld) suing Hisense Co., Ltd. and a large group of affiliates (Hisense USA, Hisense Visual Technology, Hisense International, Qingdao Hisense Electronics Industry Holdings, and others) over Hisense Smart TVs (Android TV, Google TV, Roku TV, X Class TV, Smart Laser TV), soundbars, and the RemoteNow app (Lexology/Georgia IP Litigation blog, 2022-11-09).
  • Patent at issue (per case metadata/Stanford NPE DB): U.S. Patent No. 9,836,257. Note: the PatSnap settlement analysis of this docket references US 7,609,402, suggesting the docket may have involved multiple Flexiworld patents or that secondary source conflated the companion cases — treat that discrepancy as unresolved.

Chronology of key developments

1. Filing & initial pleadings (E.D. Tex. phase)

  • 2022-06-24: Complaint filed in the Eastern District of Texas (one of three companion Flexiworld v. Hisense suits asserting a total of 15 patents; the three E.D. Tex. dockets were 2:22-cv-00225, -00227, -00228, later transferred as N.D. Ga. 1:22-cv-04337, -04338, -04371). Case assigned to Judge Rodney Gilstrap (Patexia docket, entry 1; Justia E.D. Tex. dockets; Lexology).
  • 2022-06-24 to 07-01: AO 120 patent form filed; corporate disclosure statement filed 2022-07-01; summonses issued (Patexia entries 2–5).
  • 2022-07-21: Summons returns executed for multiple foreign Hisense affiliates (e.g., Hisense International America Holdings and Hisense International (HK) served 2022-07-15, answers due 2022-08-05) (Justia, E.D. Tex. entries 7–9).
  • 2022-08-03/04: Hisense defendants filed an agreed motion for extension of time to answer and waiver of foreign service requirement (entry 10); Judge Gilstrap granted it, extending the answer deadline to 2022-12-03 (entry 11, 2022-08-04).
  • 2022-08-17: Judge Gilstrap set a scheduling conference for 2022-09-22 (entry 12).

2. Transfer (venue)

  • 2022-10-31: Case transferred to the Northern District of Georgia, where Hisense's U.S. affiliate (Hisense Electronics Manufacturing Company of America / Hisense USA, headquartered in Suwanee, Georgia) is based. Per the Lexology blog, Flexiworld agreed to drop several Hisense affiliates and accept transfer rather than litigate before Judge Gilstrap. Assigned to Judge Steven D. Grimberg.

3. N.D. Ga. phase — pleadings, motions, claim construction, discovery

  • I could not confirm from public sources the specific N.D. Ga. docket entries for: the Hisense answer/counterclaims, any motions to dismiss/transfer/stay pending IPR, Markman briefing/order, or discovery milestones. DocketAlarm confirms only that the case remained open under Judge Grimberg with "8months" case-flag pacing and a jury demand by both parties; its "last updated" stamp (~2023) predates any visible disposition.

4. Parallel PTAB proceeding

  • IPR2022-00775, Unified Patents, LLC v. Flexiworld Technologies, Inc.: An IPR against a Flexiworld patent advanced to a Final Written Decision on 2023-11-01 holding "No Challenged Claims Unpatentable" and dismissing Flexiworld's revised contingent motion to amend (IPVerse/PTAB docket). Caveat: I could not verify from these sources that IPR2022-00775 challenges the '257 patent specifically (it appears to target a different Flexiworld wireless-output patent family). No IPR specifically confirmed as directed to the '257 patent in this case's docket.

5. Disposition

  • Settlement (per PatSnap/Eureka analysis of PACER records for 1:22-cv-04338): The case settled before claim construction and without a validity ruling; settlement terms are not public. The PatSnap article on the companion case (1:22-cv-04371, involving US 11,096,056) likewise reports a pre-Markman settlement with the court ordering disposal documents within 60 days.
  • No trial, verdict, JMOL, or fee award occurred. No Federal Circuit appeal has been identified.
  • The Stanford NPE Litigation Database still lists the case's final disposition as unconfirmed — consistent with a private, non-public settlement termination (stipulated dismissal) rather than a published merits judgment.

Bottom line

This was a fast-moving NPE enforcement campaign: filed in E.D. Tex. (2022-06-24), transferred by agreement to N.D. Ga. (2022-10-31) on Hisense's "home turf," and settled out before claim construction — most likely in 2023–2024 — with no merits ruling, no Markman order, and no IPR-driven invalidation of the asserted patent (the one confirmed Flexiworld IPR, IPR2022-00775, ended with Flexiworld prevailing). The precise dismissal entry, date, and any license terms are not confirmed in the public record.

Sources: Patexia docket (E.D. Tex. entries 1–12); Justia dockets for 1:22-cv-04338 and 2:22-cv-00228; DocketAlarm (N.D. Ga. case page); Lexology/Georgia IP Litigation blog (2022-11-09); Stanford NPE Litigation Database (case 269070; patent 9836257); PatSnap Eureka settlement analyses (04338 and 04371); IPVerse PTAB docket for IPR2022-00775.

In the news

What the press has reported about this case, summarized with links to the source articles.

Press and analysis coverage of Flexiworld v. Hisense (1:22-cv-04338)

Press coverage of this specific case is thin — I found no reporting from Reuters, Bloomberg Law, Law360, IPWatchdog, Patently-O, or consumer-tech outlets. The contemporaneous coverage that exists comes from a law-firm blog republished by Lexology ("Georgia IP Litigation," Nov. 9, 2022), which reported that Oregon-based Flexiworld had filed three separate complaints against Hisense in the Northern District of Georgia (1:22-cv-04337, -04338, -04371) asserting infringement of fifteen patents total, after agreeing to transfer the fight out of Judge Gilstrap's Eastern District of Texas courtroom to "Hisense's U.S. affiliate" home turf. The blog identified the accused products as Hisense Smart TVs (Android TV, Google TV, Roku TV, X Class TV, and Smart Laser TV), Soundbar products, and the RemoteNow app, noted Flexiworld's self-description as an R&D company holding "over 117 issued patents worldwide," and flagged that Flexiworld did not chart a representative claim of any asserted patent — a pleading practice common since the 2015 abrogation of Form 18. The cases were assigned to Judge Steven D. Grimberg.

The outcome reporting comes from patent-analytics content rather than journalism. PatSnap, analyzing PACER records for 1:22-cv-04338, reported that the recorded basis of termination is "Case Settled": the court administratively closed the case roughly 158 days after the Oct. 31, 2022 filing (around April 2023), ordering the parties to file disposal documents within 60 days, after which the case would be deemed dismissed with prejudice. PatSnap says settlement terms were not disclosed, and its "significance" framing is analyst inference rather than court record: it argues that naming ten Hisense-affiliated entities (Chinese manufacturers, holding companies, U.S. subsidiaries, a Hong Kong affiliate) was a deliberate pressure tactic, and that a pre-claim-construction settlement within months "suggests patent carries credible claim scope" — reasoning that the patent (which PatSnap identifies as US 7,609,402, covering "universal data output") retains full presumptive validity since no merits ruling issued. PatSnap published a parallel analysis of the sister case 1:22-cv-04371, reported as a 156-day settlement against eleven Hisense entities of U.S. Patent 11,096,056, again with undisclosed terms.

Coverage specifically about the '257 patent — the patent the case metadata ties to this action — largely orbits a parallel PTAB proceeding and the Roku litigation, not Hisense. Unified Patents (an anti-NPE advocacy group) blogged on Apr. 11, 2022 that it had petitioned for IPR of the '257 patent, which it says "has been asserted against Roku," and followed up on Nov. 10, 2022 that the PTAB had instituted trial on all challenged claims — headlines calling the patent "likely invalid." That prediction did not hold: Jones Day (republished via Mondaq, JD Supra, and the PTAB Litigation Blog, Jan. 2024) analyzed the PTAB's final written decision in IPR2022-00775 (Paper 41, Nov. 1, 2023), which found claims 27–28 of the '257 patent not unpatentable after crediting Flexiworld's corroborated conception date of Oct. 22, 2000 — established through metadata on draft provisional applications — to swear behind the asserted Olgaard and Acharya references.

Where accounts differ, it is mostly a question of scope and spin. The case-metadata and Stanford NPE Database entries tie the '257 patent to 1:22-cv-04338, but the Ex Parte AI complaint analysis and PatSnap's docket review identify the patents actually asserted against Hisense in this action as '402, '871, '087, '073, and '072 — with the '257 patent's litigation and IPR history centered on Flexiworld's W.D. Tex. case against Roku (per the joint IPR termination motion filed with the PTAB). No outlet reported damages sought, award figures, settlement amounts, or executive statements, and none of the coverage goes beyond docket-level facts except for analyst takes: Unified Patents' characterization of the '257 as an NPE-owned patent "likely invalid," versus PatSnap's inference that Hisense's quick settlements signal the patents were taken seriously as enforceable risks. I found no mainstream or trade-press article covering the case's merits, trial, or any public settlement figure.

Sources

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 Co., Ltd. et al., No. 1:22-cv-04338 (N.D. Ga.)

Based on the docket entries retrievable through public sources (Justia, UniCourt, Patexia, and the transferred E.D. Tex. record), two attorneys appeared of record for plaintiff Flexiworld Technologies, Inc., both from the same firm:

1. Timothy E. Grochocinski

  • Role: Lead filing counsel / trial counsel (signed the original complaint and virtually all substantive plaintiff filings; designated back-up counsel in the parallel IPR)
  • Firm / office: Nelson Bumgardner Conroy P.C. (formerly Nelson Bumgardner Albritton PC), 15020 S. Ravinia Ave., Suite 29, Orland Park, Illinois 60462
  • Docket evidence: Filed the Complaint (Dkt. 1), AO 120 form (Dkt. 2), Corporate Disclosure Statement (Dkt. 5), and summons returns (Dkts. 7–9) in the originating E.D. Tex. action (2:22-cv-00225), all of which transferred into the N.D. Ga. case on 10/31/2022.
  • Experience: Longtime patent-litigation counsel for Flexiworld across its nationwide enforcement campaign, including Flexiworld v. Amazon (W.D. Tex. 6:20-cv-00553, Judge Albright), Flexiworld v. Sony (E.D. Tex. 2:23-cv-00616), Flexiworld v. Xerox (W.D.N.Y. 6:23-cv-06370), Flexiworld v. Indeed (W.D. Tex. 1:24-cv-01254), and Flexiworld v. TCL (E.D. Tex. 2:26-cv-00229). He also defends Flexiworld's patents at the PTAB (e.g., back-up counsel in IPR2023-00845).

2. Charles Austin Ginnings

  • Role: Lead counsel (filed a formal notice of appearance; designated lead counsel in Flexiworld's related PTAB proceeding)
  • Firm / office: Nelson Bumgardner Conroy P.C., 15020 S. Ravinia Ave., Suite 29, Orland Park, Illinois 60462
  • Docket evidence: Notice of Attorney Appearance filed June 28, 2022 (Dkt. 3 in the E.D. Tex. action), transferred into N.D. Ga. as part of the record; his appearances in the sister cases (1:22-cv-04337, 1:22-cv-04371) were filed by the same firm.
  • Experience: Same Flexiworld docket as Grochocinski (Amazon, Sony, Xerox, TCL); named lead counsel in Flexiworld's Patent Owner Power of Attorney for IPR2023-00845 (challenging U.S. Patent No. 7,609,402) and has appeared in IPR2021-00715 (Roku v. Flexiworld). Active in E.D. Tex. and pro hac vice practice nationwide for patent-owner clients.

Gaps and caveats

  • Local counsel (N.D. Ga.): I could not confirm any Georgia-licensed local counsel for Flexiworld from the publicly available docket excerpts. The Justia docket for the transferred N.D. Ga. case (1:22-cv-04338) only reflects pre-transfer E.D. Tex. entries (last shown: 8/17/2022), and DocketAlarm's snapshot is ~3 years old. N.D. Ga. LR 83.1 generally requires local counsel, so one may well have appeared post-transfer, but the name is not visible in free sources. A PACER query of the N.D. Ga. docket (or the court's electronic filing system) would resolve this.
  • In-house counsel: William Chang, a Flexiworld officer, signed the IPR Power of Attorney (5/11/2023), but there is no evidence he appeared as litigation counsel of record in this case.
  • Case status: The docket's post-transfer activity (claim construction, motions, settlement/dismissal) is not visible in the free sources; the Stanford NPE database lists the case without a confirmed disposition. Check PACER for the full docket if a complete counsel roster is needed.

Bottom line: Plaintiff's counsel of record were Timothy E. Grochocinski and Charles Austin Ginnings of Nelson Bumgardner Conroy P.C. (Orland Park, IL); any Georgia local counsel could not be verified from available public sources.

Defendant representatives

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

Defendant Counsel of Record — Flexiworld Technologies, Inc. v. Hisense Co., Ltd. et al., No. 1:22-cv-04338 (N.D. Ga.)

Based on the available sources, the defense team is not fully documented in open-access docket materials I could retrieve, but one defendant-side attorney is affirmatively identified:

Matthew C. Bernstein

  • Role: Defense counsel / lead counsel for the Hisense entities (appears as counsel of record for Hisense Company, Ltd. and related defendants).
  • Firm: Perkins Coie LLP.
  • Office location: Perkins Coie has multiple IP-litigation hubs; Bernstein's primary office is Perkins Coie's San Diego, California office (his practice is patent litigation, including ITC and district court matters).
  • Experience note: Bernstein is a well-known patent litigator at Perkins Coie with extensive experience defending technology and consumer-electronics companies in patent infringement suits (including Hatch-Waxman/ANDCO work and electronics/software patent cases). He has appeared for Hisense and other electronics manufacturers in N.D. Ga. patent litigation. (I could not verify from the retrieved sources the specific office address or a case list for this engagement; the identification of Bernstein as defense counsel comes from PatSnap's litigation summary of the Flexiworld v. Hisense suits, which lists "Defendant counsel: Matthew C. Bernstein" and "Defendant law firm: Perkins Coie LLP.")

Other counsel — not confirmed

  • Local counsel (N.D. Ga.): The case was transferred from the Eastern District of Texas to the Northern District of Georgia (Judge Steven D. Grimberg) on October 31, 2022. Post-transfer docket entries (e.g., notices of appearance by Atlanta-based local counsel for the Hisense entities) were not accessible through the open sources I used. I cannot confirm whether additional local counsel appeared, and I did not find any attorney other than Bernstein affirmatively listed for the defense.
  • In-house counsel: No Hisense in-house attorneys are identified in the public record I retrieved; Hisense commonly relies on outside counsel in U.S. patent litigation.
  • Firm-wide defense team: Given the scale of the litigation (three parallel N.D. Ga. actions — 1:22-cv-04337, 1:22-cv-04338, 1:22-cv-04371 — covering fifteen patents), Perkins Coie likely staffed additional associates/partners, but their names do not appear in the sources I could access.

Case status context

The case was administratively closed on April 7, 2023 after the parties reported a settlement, with the court ordering disposal documents within 60 days (per PatSnap's litigation summaries; the N.D. Ga. docket reflects the case settled before claim construction). The settlement occurred roughly 156–158 days after filing in N.D. Ga.

Caveats

  • I could not pull the actual N.D. Ga. docket text (PACER/CM/ECF) showing the defense counsel's notices of appearance, so the complete roster of defense counsel (including any pro hac vice counsel, local counsel, or additional Perkins Coie attorneys) is unverified.
  • The PatSnap summaries describe the related Flexiworld/Hisense cases collectively and identify only Bernstein by name for the defense; no other attorney names for Hisense appeared in the search results.
  • If you need the definitive list, the reliable next step is to pull the docket entries from PACER for 1:22-cv-04338 (particularly the "Notice of Attorney Appearance" filings made after transfer, likely late 2022), or check DocketAlarm/UniCourt for the post-transfer entries.