Litigation

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

settled; administratively closed

1:22-cv-04338

Filed
2022-10-31
Terminated
2023-04-07

Patents at issue (1)

7609402

Summary

Flexiworld sued Hisense and affiliated entities in the Northern District of Georgia, asserting the '402 patent. The case settled and was administratively closed on April 7, 2023, before claim construction, with dismissal with prejudice contemplated.

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 their roles. Plaintiff Flexiworld Technologies, Inc. is a Portland, Oregon-based patent holder and research-and-development company founded by inventor William Ho Chang (with co-inventor Christina Ying Liu), which describes itself as holding 117+ issued patents worldwide in wireless and data-output technology (Lexology/Georgia IP Litigation blog, Nov. 9, 2022; Flexiworld's own patent page). The Stanford NPE Litigation Database classifies Flexiworld as a Non-Practicing Entity, with asserter categories variously listed as "failed startup" and "acquired patents" (npe.law.stanford.edu/case/269070). Defendants are the Chinese multinational consumer-electronics conglomerate Hisense Co., Ltd. (Qingdao) and ten affiliated entities spanning Chinese manufacturers/holding companies (e.g., Hisense Visual Technology, Qingdao Hisense Electronics Industry Holdings, Guiyang Hisense Electronics, Qingdao Huatong State-Owned Capital Operation Group), a Hong Kong affiliate (Hisense International (HK)), and U.S. subsidiaries — Hisense USA Corporation and Hisense Electronics Manufacturing Company of America Corporation, both Georgia corporations headquartered at 7310 McGinnis Ferry Road, Suwanee, Georgia (RPX docket document; complaint venue allegations).

Asserted patent and accused technology. The sole patent at issue per the case metadata and corroborating sources (Stanford NPE DB patent page; PatSnap litigation analysis) is U.S. Patent No. 7,609,402, "Methods for universal data output," issued October 27, 2009. Technically, the '402 patent claims a "pervasive mobile data output method" in which an information apparatus (e.g., a smartphone) wirelessly discovers an output device, obtains rasterization parameters from it, rasterizes content into output images, transmits intermediate output data to an output controller associated with the device, and has the controller convert the data into a format the output device can render — enabling output without installing a device-specific driver (FreePatentsOnline; USPTO grant record). The accused products are Hisense's U.S.-sold Smart TVs (Android TV, Google TV, Roku TV, X Class TV, and Smart Laser TV), its Soundbar products, and the Hisense RemoteNow companion app; Flexiworld alleged direct, induced, and willful infringement, including inducement of customers who use the TVs to stream content wirelessly (RPX complaint excerpts; Lexology). One caveat: a secondary "complaint analysis" page (ai-lab.exparte.com) tagged to this docket number discusses four other Flexiworld patents ('072, '073, '087, '871), which appears to reflect a related sibling case or mislabeling — the authoritative case metadata, Stanford NPE DB, and PatSnap all identify only the '402 patent in this action. The complaint did not include claim charts, which the defense bar noted was notable post-Form 18 abrogation (Lexology).

Procedural posture and venue. Flexiworld originally filed three complaints against Hisense in the Eastern District of Texas on June 24, 2022 (Nos. 2:22-cv-00225, -00227, -00228, assigned to Judge Rodney Gilstrap), collectively asserting fifteen patents (IPWatchdog "Patent Filings Roundup," July 1, 2022; Patexia/Justia transfer dockets). The parties agreed to transfer the actions to the Northern District of Georgia — where Hisense's U.S. affiliates are incorporated and headquartered — with Flexiworld dropping several Hisense affiliates as defendants; the transferred case was docketed in the Atlanta Division on October 31, 2022 and assigned to Judge Steven D. Grimberg (DocketAlarm; Lexology). Venue was the central battleground issue: under TC Heartland and 28 U.S.C. § 1400(b), venue is proper where a defendant has a regular and established place of business, and Hisense's Georgia subsidiaries provided that anchor, while the foreign Chinese/Hong Kong defendants could be sued in any district under § 1391(c)(3). The case never reached claim construction: the parties settled, and the court administratively closed the case on April 7, 2023 — roughly 158 days after transfer — with the parties directed to file disposal documents within 60 days, after which the case would be deemed dismissed with prejudice (PatSnap, citing PACER; case metadata). Settlement terms were not publicly disclosed.

Why the case is notable. This case is a textbook example of the modern NPE campaign playbook against consumer-electronics OEMs: Flexiworld swept in an entire corporate group — from Qingdao state-owned holding companies to U.S. sales subsidiaries — to maximize damages exposure and settlement leverage, then settled quickly before any merits ruling. The swift, pre-claim-construction resolution left the '402 patent's presumption of validity intact and enforceable against other TV and audio-device makers. The '402 patent family has also drawn parallel PTAB scrutiny: after this case settled, Lexmark International, Inc. v. Flexiworld Technologies, Inc., IPR2023-00845 challenged the '402 patent (filed April 21, 2023), but the PTAB denied institution on November 17, 2023 (GreyB IPVerse PTAB records), reinforcing the patent's continued viability. Flexiworld's broader assertion history (multiple NPE cases against major electronics firms per the Stanford NPE database) and the patent family's origin in early-2000s "pervasive output" concepts — originally spec-heavy on printing — make this a closely watched example of older wireless-output patents being repurposed against modern smart TVs, soundbars, and streaming ecosystems.

Key legal developments & outcome

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

Flexiworld Technologies, Inc. v. Hisense Company, Ltd. et al., No. 1:22-cv-04338 (N.D. Ga.)

Chronology of key legal developments and outcome

1. Filing & initial pleadings

  • 2021-10-14 and 2021-12-29 — Flexiworld sent pre-suit notice letters to Hisense identifying the '402 patent and accused products, which the complaint later relied on for knowledge/willfulness allegations (Compl. ¶58, via RPX document 15143102).
  • 2022-06-24 — Flexiworld filed three parallel complaints against Hisense and multiple affiliated entities in the Eastern District of Texas (Marshall Division, assigned to Judge Rodney Gilstrap), collectively asserting 15 patents against 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; IPWatchdog Patent Filings Roundup, 2022-07-01). The case that became 1:22-cv-04338 was one of these three (E.D. Tex. 2:22-cv-00225/227/228 family), with the '402 patent among those asserted. Notably, the complaints did not include claim charts for a representative claim, which the blog flagged as unusual post-Form 18 abrogation.
  • 2022-07-01 to 2022-07-21 — Summonses issued; service effected on Hisense entities on 2022-07-15, with returns filed 2022-07-21 (Justia docket, transferred entries).
  • 2022-08-03/04 — Hisense filed an Agreed Motion for Extension of Time to Answer and Waiver of Foreign Service Requirement; Judge Gilstrap granted it on 2022-08-04, extending the answer deadline to 2022-12-03 (Docket 10, 11, E.D. Tex.).
  • 2022-08-17 — Judge Gilstrap entered a scheduling order setting a status/scheduling conference for 2022-09-22 (Docket 12, E.D. Tex.).
  • 2022-10-31 — The case was transferred to the Northern District of Georgia, Atlanta Division, and assigned to Judge Steven D. Grimberg (case metadata; Justia/docketalarm). Per contemporaneous reporting, the transfer was agreed — Flexiworld dropped several Hisense affiliates as defendants (e.g., Hisense Electronica Mexico, Hisense Import & Export, and certain Hong Kong investment entities that appear in the E.D. Tex. caption but not the N.D. Ga. one) and consented to litigate in Georgia, where Hisense's U.S. affiliate (Hisense Manufacturing / Hisense USA, headquartered in Suwanee, Georgia) is based (Lexology, 2022-11-09).
  • Answer/counterclaims: I could not confirm from available public sources whether a formal answer and counterclaims were filed in the N.D. Ga. action after the transfer (the extended 2022-12-03 deadline fell after transfer). Given the short lifespan of the case (terminated 2023-04-07), any answer/counterclaim stage was truncated. This is a gap in the record as sourced — flag for PACER verification if needed.

2. Pre-trial motions of substance

  • Transfer: The venue change from E.D. Tex. to N.D. Ga. was by agreement rather than a contested § 1404(a) motion; Flexiworld dropped affiliates to effectuate it (Lexology, 2022-11-09). No contested transfer opinion has been located.
  • Motions to dismiss / stay pending IPR / summary judgment: None identified. The case settled before claim construction, and there is no record of Rule 12, Rule 56, or IPR-stay motions in the public docket sources reviewed.

3. Claim construction (Markman)

  • No Markman proceedings occurred. Both the case metadata and third-party litigation intelligence (PatSnap) confirm the case settled without claim construction or any validity ruling. Consequently, the '402 patent's claims were never construed by the court, and the patent retains full presumptive validity.

4. Discovery milestones

  • No substantive discovery milestones (e.g., infringement/validity expert reports, deposition disputes, privilege fights) are documented in the public sources reviewed. The case was in its early stages — the pre-transfer E.D. Tex. docket shows only service, the extension motion, and a scheduling conference order before transfer, and the N.D. Ga. case was administratively closed within roughly five months of arrival. No discovery rulings or strategic discovery events could be verified.

5. Trial events

  • No trial occurred. The case was resolved by settlement before any trial, verdict, or post-trial motion practice (no JMOL, new trial, or fee motions ever became relevant).

6. Settlement, dismissal, final disposition

  • 2023-04-07 — The case was settled and administratively closed (case metadata; status: "settled; administratively closed"). The dismissal was with prejudice contemplated (per the existing case summary).
  • Settlement terms: Not disclosed in the public record (PatSnap, based on PACER docket review, likewise notes terms are confidential).
  • Posture: Terminated. No appeal has been identified. No judgment on the merits was entered; the disposition was a settlement-based closure.

7. Parallel PTAB IPR/PGR proceedings

  • IPR2023-00845 — Lexmark International, Inc. v. Flexiworld Technologies, Inc. (U.S. Patent 7,609,402):
    • 2023-04-21 — Lexmark (a third party, not Hisense) filed a petition for inter partes review of the '402 patent.
    • 2023-08-23 — Flexiworld filed its Patent Owner's Preliminary Response.
    • 2023-11-17 — The PTAB denied institution under 35 U.S.C. § 314 (Decision Denying Institution).
    • 2024-01-18 / 2024-01-24 — Lexmark sought and received a fee refund; the proceeding closed (IPVerse/PTAB case record).
  • Effect on the litigation: Because the IPR was filed after the district court case had already settled and closed (petition filed 2023-04-21, two weeks after the 2023-04-07 administrative closure), and because it was brought by Lexmark rather than Hisense, it had no effect on the N.D. Ga. litigation. No Hisense-filed IPR against the '402 patent has been identified.

Bottom line

This was a short, NPE-driven smart-TV patent case that never got past its early stages: filed in E.D. Tex. (2022-06-24), transferred by agreement to N.D. Ga. (2022-10-31) under Judge Grimberg, and settled within about five months — administratively closed on 2023-04-07 with dismissal with prejudice contemplated, before claim construction, discovery of substance, or trial. The only parallel PTAB activity on the '402 patent was Lexmark's IPR2023-00845, which the PTAB declined to institute (2023-11-17) and which post-dated the settlement.

Caveats: Docket-entry-level details for the N.D. Ga. phase (answer/counterclaim filings, any interim discovery orders, the exact text of the dismissal order) were not retrievable from the public sources searched; those would require a PACER pull of the 1:22-cv-04338 docket to confirm precisely.

In the news

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

Press coverage of Flexiworld v. Hisense

Press coverage of this specific case is thin, and I found no articles in major outlets — no Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, IPWatchdog, Patently-O, or EFF Deeplinks pieces addressed Flexiworld Technologies, Inc. v. Hisense Co., Ltd. (1:22-cv-04338) directly. (A Law360 story about "Hisense Settles Video-Coding Patent Challenge At UPC" concerns an unrelated Unified Patent Court matter, not this case.) What exists is one law-firm blog post and one patent-analytics write-up.

The most substantive contemporaneous report is Lexology's November 9, 2022 republication of the Georgia IP Litigation blog, "Hisense to Defend Smart-TV Patent Row on Home Turf of its U.S. Affiliate." It reported that Oregon-based Flexiworld — described as a wireless-technology R&D company holding over 117 issued patents worldwide — filed three separate complaints in the Eastern District of Texas asserting infringement of fifteen patents total against China-based Hisense, covering Hisense Smart TVs (Android TV, Google TV, Roku TV, X Class TV, and Smart Laser TV), Soundbar products, and the RemoteNow app. The blog noted that rather than litigate before Judge Gilstrap, Flexiworld agreed to drop several Hisense affiliates as defendants and transfer the fight to the Northern District of Georgia, where Hisense's U.S. affiliate is headquartered, where the case landed before Judge Grimberg; it also flagged that Flexiworld had not charted a representative claim of any asserted patent, as is common post-abrogation of Form 18.

The settlement coverage comes from PatSnap, whose litigation-intelligence blog analyzed the docket after the fact. PatSnap reported that Flexiworld asserted U.S. Patent No. 7,609,402 (application 10/053,651) against Hisense Company, Ltd. and ten affiliated entities spanning Chinese manufacturing and holding companies, U.S. subsidiaries, and a Hong Kong affiliate; that the case was filed October 31, 2022, and administratively closed April 7, 2023 — a 158-day lifespan; that the recorded basis of termination was "Case Settled," with the parties ordered to file disposal documents within 60 days, after which the case would be deemed dismissed with prejudice; and that the specific settlement terms were not disclosed in the public record. No damages sought or awarded figures appear in any coverage found.

Where the accounts go beyond the court record, they are analyst or advocate takes. PatSnap argued the "broad-net" multi-entity strategy was a "deliberate pressure tactic" that maximized damages exposure and settlement leverage, that a pre-claim-construction settlement within months "suggests the patent carries credible claim scope," and that because no claim construction or validity ruling issued, the '402 patent "retains full presumptive validity" and is an "active risk" for other consumer electronics companies — conclusions drawn from the docket, not court findings. Lexology's blog, meanwhile, emphasized the Form 18 pleading critique. Separately, the Stanford NPE Litigation Database categorizes the case as non-practicing-entity litigation and labels Flexiworld inconsistently across entries (as both a "failed startup" and an entity with "acquired patents"), which is characterization beyond the court record. One factual nuance in the coverage: the N.D. Ga. docket date (October 31, 2022) reflects the transferred case, while the underlying E.D. Tex. complaints were originally filed June 24, 2022, which the Lexology post explains via the transfer-and-drop arrangement. Overall, reporting is limited to these two items plus docket aggregators; there is no independent journalism on the case's outcome.

Sources

Plaintiff representatives

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

Based on my searches, here is what I can confirm about plaintiff's counsel of record in Flexiworld Technologies, Inc. v. Hisense Co., Ltd. et al., No. 1:22-cv-04338 (N.D. Ga., filed Oct. 31, 2022; administratively closed Apr. 7, 2023, Judge Steven D. Grimberg):

Plaintiff's Attorneys of Record

The UniCourt docket aggregation for this case lists four plaintiff attorneys. My independent research confirms the firm/background for two of them; the other two I could only verify by name from the docket aggregation.

Confirmed Nelson Bumgardner Conroy PC attorneys

1. Timothy E. Grochocinski

  • Role: Lead/primary litigation counsel for Flexiworld (designated lead attorney / "attorney in charge" in Flexiworld's parallel litigations; e.g., Flexiworld v. Amazon.com, 6:20-cv-00553-ADA (W.D. Tex.), where he was listed as lead attorney; Flexiworld v. HP, Inc., 4:24-cv-02691, Notice of Designation of Attorney in Charge, Oct. 18, 2024).
  • Firm/office: Nelson Bumgardner Conroy PC, 15020 S. Ravinia Ave., Suite 29, Orland Park, IL 60462.
  • Experience: Longtime patent-litigation counsel to Flexiworld across its nationwide enforcement campaign; appeared for Flexiworld in IPR2021-00715 (Roku v. Flexiworld, oral hearing July 20, 2022) and was appointed patent-owner counsel in IPR2023-00845 challenging the same '402 patent at issue here (Patent Owner's Power of Attorney dated May 11, 2023).

2. Charles Austin Ginnings

  • Role: Co-counsel for Flexiworld (appeared with Grochocinski at the IPR2021-00715 oral hearing; admitted pro hac vice for Flexiworld in other districts, e.g., Flexiworld v. Lexmark, 5:22-cv-00098 (E.D. Ky.)).
  • Firm/office: Nelson Bumgardner Conroy PC, Orland Park, IL (same address).
  • Experience: Patent litigation/PTAB counsel for Flexiworld in multiple district-court and IPR matters; also named in the IPR2023-00845 power of attorney for the '402 patent.

Listed on the docket but not independently firm-confirmed from my searches

3. Steven G. Hill

  • Listed by UniCourt as a plaintiff attorney in this case.
  • Caveat: I could not verify his firm affiliation or role (e.g., local Georgia counsel) from the sources retrieved. Do not rely on any firm attribution without checking PACER/CM-ECF for the notice(s) of appearance and the Certificate of Interested Parties (docket entries 1–3 area of this case).

4. John Nixon Mahaffey

  • Listed by UniCourt as a plaintiff attorney in this case.
  • Caveat: Same as above — no firm or role confirmation surfaced in my searches. His exact capacity (local counsel vs. co-counsel) should be confirmed against the appearance docket.

Additional context / caveats

  • Defense side (for contrast): UniCourt lists defendants' attorneys as Linda Ann Klein, Matthew C. Bernstein, Patrick McKeever, and Kristin S. Tucker — I did not independently verify these.
  • Settlement posture: The case was administratively closed on April 7, 2023, before claim construction, with dismissal with prejudice contemplated, so the record is thin (no claim-construction or merits opinions naming counsel).
  • Parallel PTAB proceeding: In IPR2023-00845 (challenging U.S. Patent No. 7,609,402 — the sole patent in suit here), Flexiworld executed a power of attorney appointing Nelson Bumgardner Conroy PC practitioners including Ginnings, Brent Bumgardner, and Grochocinski, which corroborates that firm's role as Flexiworld's lead patent counsel.
  • Verification needed: To get the definitive "counsel of record" list with role designations (lead vs. local counsel) and any pro hac vice orders in this specific case, the authoritative source is the PACER/CM-ECF docket for 1:22-cv-04338 (appearance filings and any PHV motions, which are public). The public aggregators I found list the four names above but do not show the underlying appearance docket entries in detail.

Defendant representatives

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

I'll research the defense counsel in this case through multiple sources.

I have initial leads. Let me dig deeper into the specific docket for 1:22-cv-04338 and confirm the defense counsel.

Based on my research, here is what can be established about the defense counsel of record, with appropriate caveats about source reliability.

Important preliminary note

The three coordinated Flexiworld v. Hisense cases (1:22-cv-04337, 1:22-cv-04338, and 1:22-cv-04371) were transferred together from the Eastern District of Texas and assigned to Judge Steven D. Grimberg, with the same Hisense group of defendants and the same defense team appearing across all three. The case-specific docket for 1:22-cv-04338 is not freely available in full (PACER paywall), so I relied on aggregator mirrors (UniCourt, PatSnap/Eureka, Patexia, DocketAlarm). The UniCourt attorney list appears to have been captured from the sister docket (1:22-cv-04337), and the PatSnap docket-based page for 1:22-cv-04338 confirms the same lead counsel. I flag each item accordingly.

Defense counsel identified

1. Matthew C. Bernstein

  • Role: Lead/out-of-state counsel for the Hisense defendants (identified by PatSnap's docket-based page for 1:22-cv-04338 as "Counsel for Hisense Company, Ltd.")
  • Firm: Perkins Coie LLP
  • Office: Not confirmed in available sources (I did not verify his specific Perkins Coie office; do not assume).
  • Notable experience: He was the signatory on the defendants' agreed motion to change venue in the transferred E.D. Tex. proceedings (e.g., "(Bernstein, Matthew)" on the venue-transfer filings), indicating he ran the defense strategy across the coordinated cases. I could not verify a specific prior patent case history from the sources retrieved.

2. Linda Ann Klein

  • Role: Local/Georgia counsel for the Hisense defendants
  • Firm: Likely Baker Donelson (Atlanta) — this firm identification is my inference from general knowledge of the prominent Georgia litigator of this name, not from a case-specific source; treat as unconfirmed.
  • Evidence in the record: She signed joint defense motions in the coordinated cases, e.g., the "Joint MOTION for Extension of Time for Defendants to Respond to Forthcoming Amended Complaint" (filed Nov. 29, 2022, "(Klein, Linda)") on behalf of Hisense International (Hong Kong) America Investment Co., Hisense International Co., and Hisense Visual Technology Co. She also appears on the UniCourt defendant-attorney list for the case family.
  • Notable experience: If it is the same Linda A. Klein, she is a former ABA president with deep Georgia trial experience — but that credential is not tied to this docket in my sources.

3. Patrick J. McKeever

4. Kristin S. Tucker

  • Role: Defense attorney of record (per UniCourt's attorney/law-firm detail for the case family)
  • Firm: Not confirmed from my sources.
  • Evidence in the record: Appears only in the UniCourt defendant-attorney list; I found no docket entry or firm page confirming her role or firm in this case.
  • Notable experience: None verified.

Gaps and limitations

  • PACER access: I could not pull the actual docket sheet for 1:22-cv-04338 to confirm the exact attorney-appearance entries (including any notices of appearance and PHV orders) for that specific case number. The UniCourt data was captured for the sister case 1:22-cv-04337 (last updated 12/30/2022), and PatSnap confirms Bernstein/Perkins Coie for 04338 specifically.
  • In-house counsel: No Hisense in-house counsel appears of record based on available sources.
  • Firm/office details for Klein, McKeever, and Tucker could not be verified from the retrieved pages, so I have flagged them as unconfirmed rather than inventing them.
  • The case settled and was administratively closed on April 7, 2023, before claim construction, so the defense team's appearances were limited to early-stage motions practice (venue transfer, extensions, and the settlement/dismissal papers).

Bottom line: The defense was led by Matthew C. Bernstein (Perkins Coie LLP), supported by Georgia local counsel Linda Ann Klein, with Patrick J. McKeever admitted pro hac vice, and Kristin S. Tucker listed as defense counsel in the case family. I would recommend a PACER check of docket entries 1–50 in 1:22-cv-04338 to confirm the notices of appearance and PHV orders for that case specifically.