Flexiworld Technologies, Inc. v. Hisense (multi-entity defendant group)

I'll research this case and its related litigation to build a verified overview.

Let me dig into the specific docket for 1:22-cv-04338 and its disposition, plus the parallel cases.

Case Overview — Flexiworld Technologies, Inc. v. Hisense Co., Ltd. et al, 1:22-cv-04338 (N.D. Ga.)

The parties. Flexiworld Technologies, Inc. is a small, Washington-based (Vancouver, WA) technology company founded around the 2000 priority date of its patent family; contemporaneous press described it as a startup whose "concept is ahead of its time" in mobile/wireless printing, with a manager at Lexmark quoted in 2002 saying Flexiworld was "doing things to help mobile devices be able to print things" (Lexmark complaint, E.D. Ky. 5:22-cv-00098). It no longer sells products and instead licenses/enforces a portfolio reported at 117+ issued patents worldwide (Georgia IP Litigation blog via Lexology, Nov. 9, 2022). Stanford Law School's NPE litigation database classifies Flexiworld as a non-practicing entity, tagged under "failed startup" and "acquired patents" (the patents name William Ho Chang and Christina Ying Liu as inventors and were assigned to Flexiworld by recorded assignment) (Stanford NPE Database – 1:22-cv-04338). The defendants are the Hisense group — China-based Hisense Co., Ltd. and affiliates including Hisense Visual Technology, Qingdao Hisense Electronics Industry Holdings, Hisense International and its HK/US holding entities, Guiyang Hisense Electronics, plus U.S. subsidiaries Hisense USA Corporation and Hisense Electronics Manufacturing Company of America, both headquartered in Suwanee, Georgia (Justia docket). Plaintiff's counsel includes Timothy E. Grochocinski and Charles Austin Ginnings (Nelson Bumgardner Conroy PC) and Steven G. Hill and John N. Mahaffey (Hill, Kertscher & Wharton LLP); Hisense is represented by Matthew C. Bernstein of Perkins Coie LLP.

Accused technology and patents. The accused products are Hisense consumer electronics — its Smart TVs across Android TV, Google TV, Roku TV, X Class TV and Laser TV platforms, plus soundbars, projectors and the "Remote Now" companion app (the complaint identifies long model lists such as the U9H/U8H, A6G, H4 and H65 series and 100L10E/120L10E Laser TVs) (Lexology; RPX litigation document 15143102). The case metadata lists U.S. Patent 10,140,073 as the patent at issue; it is titled "Wireless devices that establish a wireless connection with a mobile information apparatus by wirelessly detecting, within physical proximity, the mobile information apparatus" (issued Nov. 27, 2018, priority 2000) and, in one-line terms, claims an output device (TV, printer, speaker) that wirelessly detects a nearby mobile device, establishes a connection to it, and receives/renders digital content — the "driverless," pervasive-output concept at the core of Flexiworld's family (Google Patents; Unified Patents portal). Note a sourcing caveat: the '073 patent is the only patent the case metadata attributes to 1:22-cv-04338, but docket-derived aggregations suggest Flexiworld asserted a set of sibling patents in this case — one secondary source lists the '402, '871, '087, '073 and '072 patents together under 1:22-cv-04338 (Ex Parte party page – Guiyang Hisense Electronics), and PTAB filings confirm the '073 patent was being asserted against Hisense in the underlying Texas action, 2:22-cv-00227 (IPR2022-01112 record). I could not independently verify the full asserted-patent list for 04338, so that should be treated as provisional.

Procedural posture, venue and why it matters. This case did not originate in Georgia. Flexiworld filed three parallel complaints against the Hisense group in the Eastern District of Texas (Marshall Division) on June 24, 2022 before Judge Rodney Gilstrap (2:22-cv-00225, -00227 and -00228) (Justia E.D. Tex. docket). After Hisense moved to transfer, Flexiworld agreed to drop several foreign affiliates as defendants and to move the fight to the Northern District of Georgia — where Hisense's U.S. affiliate is headquartered — and the three cases were transferred out of Texas on October 31, 2022, landing as 1:22-cv-04337, 1:22-cv-04338 and 1:22-cv-04371 in the N.D. Ga. Atlanta Division before Judge Steven D. Grimberg (Docket Alarm; Lexology). The venue shift is the notable feature: Flexiworld voluntarily traded Judge Gilstrap's plaintiff-friendly Marshall docket for the defendant's home turf, apparently to secure personal jurisdiction over the full Hisense entity web (the complaint pleads agency among Hisense Visual and the Suwanee subsidiaries under §§ 1391(c) and Georgia's long-arm statute). The case is also notable for its IPR linkage: Roku had challenged the very same '073 patent in IPR2022-01112 (filed June 30, 2022), which was terminated pre-institution on settlement October 31, 2022 — the same day the Hisense cases transferred to Georgia — and companion Roku IPRs on Flexiworld's '233 and '257 patents (IPR2022-01114, IPR2022-01267) likewise settled, while Unified Patents separately pressed an IPR against the '257 patent that was instituted Nov. 8, 2022 (GreyB IPR tracker; Unified Patents). Flexiworld's broader campaign against Epson, Roku, Lexmark, Brother and Amazon mostly resolved by early settlements (e.g., Epson dismissed Feb. 2022; Roku Oct. 2022; Brother consent judgment March 2023), and the related Hisense case 1:22-cv-04337 was settled/voluntarily dismissed April 7, 2023 (PTAB '233 petition). Disposition of 1:22-cv-04338 itself is not confirmed here: docket aggregators now list it as "Closed" and its last recorded activity is from roughly 2023 (Ex Parte case page; Docket Alarm), which is consistent with a post-settlement stipulated dismissal, but I found no verifiable termination order, opinion, or licensing terms for this specific docket entry. Any claim that the case produced a merits ruling or disclosed settlement terms would be unsupported.

I'll research this case thoroughly across multiple sources.

Let me dig into the specific docket and parallel proceedings.

Bottom line

1:22-cv-04338 is not an N.D. Ga.–originated case. It is the Georgia re-docketing of one of three parallel E.D. Tex. suits Flexiworld filed against the Hisense group on 2022-06-24, transferred to the Northern District of Georgia on 2022-10-31 and assigned to Judge Steven D. Grimberg (Atlanta Division). The case did not reach Markman, trial, or judgment in any source I could retrieve; litigation-intelligence databases log it as closed after roughly eight months in Georgia, and the companion Hisense case in the same group is reported to have settled pre-claim-construction with the court ordering disposal papers within 60 days. Separately, the '073 patent was hit with a Roku IPR petition (IPR2022-01112) in mid-2022.

I hit my search-step ceiling before I could pull the raw N.D. Ga. PACER docket, so I flag below exactly what is confirmed versus what is unsourced/unverified. I have not fabricated any docket entry, ruling, or attorney.

---

1. Parties, patents, and the three-case structure

Structural point: Flexiworld filed three complaints against the Hisense group on 2022-06-24 in E.D. Tex. (2:22-cv-00225, -00227, -00228), asserting a combined ~15–16 patents. All three landed in N.D. Ga. as 1:22-cv-04337, -04338, -04371. The patent sets, per Ex Parte's litigant page:

• -04337: '649, '510, '233, '259, '178, '903
• -04338 (our case): '402, '871, '087, '073, '072
• -04371: '056, '324, '408, '811, '088

Caveat: IPWatchdog's 2022-07-01 roundup assigns the same five-patent set ('871, '402, '073, '072, '087) to E.D. Tex. 2:22-cv-00227, while the transferred docket text for -04338 matches -00228. The E.D. Tex. → N.D. Ga. number mapping is therefore not perfectly sourced; the patent set for -04338 is consistently reported.

---

2. Chronology

Pre-suit notice (2021)

• 2021-10-14 and 2021-12-29 — Flexiworld mailed notice letters to Hisense identifying the patents (including the '073) and the Accused Products. These letters are the pleaded basis for Hisense's knowledge and the willfulness/§ 285 theories (complaint ¶58; letters attached as Exs. 2–3).

Filing and initial pleadings (June–August 2022)

• 2022-06-24 — Complaint filed in E.D. Tex. (2:22-cv-00228; the -04338 docket shows "Filing 1 COMPLAINT" and AO 120 mailed to the PTO). Flexiworld also filed its corporate disclosure statement on 2022-07-01. Notably, the complaints did not include representative claim charts of the sort common post-Form 18 (Georgia IP Litigation blog, 2022-11-09).
• 2022-07-12 / 2022-07-15 / 2022-07-21 — Summons issued and returns of service filed: Hisense International (HK) Co., Ltd., Hisense International (Hong Kong) America Investment Co., Ltd., and Hisense International America Holdings Co., Ltd. served 2022-07-15, answer due 2022-08-05 (Docket Entries 6–9).
• 2022-08-03 — Defendants filed an Agreed Motion for Extension of Time to File Answer / Move / Otherwise Respond, and Waiver of Foreign Service Requirement (Docket Entry 10, signed by Matthew C. Bernstein).
• 2022-08-04 — Judge Gilstrap granted the agreed motion (Docket Entry 11), extending all defendants' answer deadline to 2022-12-03.
• 2022-08-17 — Gilstrap entered a Scheduling Conference order setting a 2022-09-22 conference (Docket Entry 12).
• Answer / counterclaims in -04338: Not confirmed. The docket snapshots I retrieved for -04338 stop at the E.D. Tex. Filing 12 (2022-08-17); the 2022-12-03 answer deadline had not yet run in Texas and would have been reset by the Georgia court. I could not retrieve the N.D. Ga.–generated entries, so I cannot confirm whether an answer, invalidity/non-infringement counterclaims, or an IPR-based stay motion was filed. Treat this gap as unresolved rather than as "nothing was filed."

Transfer to N.D. Ga. (October 2022)

• 2022-10-31 — Case transferred into N.D. Ga. and docketed as 1:22-cv-04338; assigned to Judge Grimberg. Per the Georgia IP Litigation blog post "Hisense to Defend Smart-TV Patent Row on Home Turf of its U.S. Affiliate" (published 2022-11-09): "Rather than have the case heard by Judge Gilstrap, Flexiworld agreed to drop several Hisense affiliates as defendants and to transfer this patent fight to the Northern District of Georgia where Hisense's U.S. affiliate is headquartered."
  • Strategic significance: venue was the whole fight. The complaint anchors Georgia venue/personal jurisdiction on Hisense USA Corporation and Hisense Electronics Manufacturing Company of America Corporation, both pleaded as Georgia corporations with their principal place of business at 7310 McGinnis Ferry Road, Suwanee, Georgia (complaint ¶¶12–19). The transfer moved the case from Judge Gilstrap's Waco/Tyler rocket docket into a slower, less patent-intensive district — and the -04371 companion was docketed 2022-11-02, indicating the transfers were staggered by a couple of days.

Claim construction, discovery, trial (none reached)

• No Markman order, no claim-construction hearing, and no trial appear in any source for -04338. PatSnap's litigation write-up on the companion Hisense case states the patent's scope was never judicially construed because the case resolved "before claim construction." I found no reported discovery orders, no dispositive-motion rulings, no verdict, and no JMOL/new-trial/fee motions for -04338.

Disposition / present posture — UNCONFIRMED, most likely settlement-dismissal in 2023

• Ex Parte case page for 1:22-cv-04338 lists status "Closed" (nature of suit 830, patent).
• Docket Alarm logs the case as last updated "3 years, 1 month ago" with a case flag of "8months" — consistent with a termination roughly eight months after the 2022-10-31 Georgia docketing, i.e., circa mid-2023.
• Stanford NPE Litigation Database (case 269070) carries a "Termination Date" field for -04338 (value not exposed in the retrieved snippet), confirming the case terminated.
• PatSnap reports on the companion Hisense case (1:22-cv-04371): "Flexiworld v. Hisense — Wireless Content Streaming Patent Settled… The parties were ordered to file disposal documents within 60 days… The rapid settlement — before claim construction…" PatSnap explicitly bases that post on "PACER docket records for case 1:22-cv-04371 and PatSnap Eureka litigation intelligence."
• My assessment: the weight of the litigation-intelligence data points to a negotiated global resolution of the three Hisense N.D. Ga. cases in mid-2023, effectuated by stipulated dismissal rather than judgment, with the court ordering the parties to file disposal documents. However, I could not retrieve the entry itself (e.g., a Rule 41(a) stipulation or dismissal order) for -04338 specifically, so I cannot state the dismissal date, whether it was with or without prejudice, or whether it was a license/settlement. No appeal to the Federal Circuit appears in any source.

---

3. Parallel PTAB proceedings

On the asserted '073 patent — the directly relevant one

• Roku, Inc. v. Flexiworld Technologies, Inc., IPR2022-01112, U.S. Pat. No. 10,140,073 — Roku petitioned for review of claims 1–20 of the '073 patent. The petition (USPTO PTACTS document) challenges all three independent claims (1, 8, 16) over device-discovery/remote-service-call prior art (Saulpaugh, Larsson, et al.), with a supporting declaration by Dr. Eli Saber.
  • The petition's mandatory notices confirm the litigation nexus: the '073 patent was then asserted against Roku in Flexiworld v. Roku, 6:21-cv-00680 (W.D. Tex.) — "This case is currently stayed" — and against Hisense in 2:22-cv-00227 (E.D. Tex.), Lexmark (5:22-cv-00098, E.D. Ky.), Brothers Industries (2:22-cv-02237, W.D. Tenn.), and Epson America (8:21-cv-00807, C.D. Cal.).
  • Roku concurrently filed petitions on family members U.S. 9,042,811 and U.S. 9,965,233 (the '811 patent is asserted in companion case -04371, and the '233 in -04337 — so the PTAB and the three Georgia cases were running on overlapping family members).
  • Effect on the litigation: unverified. If the '073 IPR was instituted, it would have supplied the Hisense defendants a § 315(b)/§ 314 discretionary-denial and stay argument (the Fintiv framework was in force in late 2022 and the Board's "Interim Procedure" memo is even cited in the petition's exhibit list, Ex. 1025). If instead Roku and Flexiworld settled — which they did on the other Roku patents — the IPR would have been terminated by joint motion. I could not retrieve an institution decision, a denial, or a final written decision for IPR2022-01112, and I will not guess. This is the single most important item to pull from PTAB/PACER to complete the picture.

Related PTAB activity on the same Flexiworld family (context, not on -04338's patents)

• IPR2021-00713, -00714, -00715 (Roku) on U.S. 10,740,066, 10,346,114, 8,989,064 — instituted (per IPR2022-01112's mandatory notices; IPR2021-00713 record includes a 2022-04-08 reply declaration of Dr. Samrat Bhattacharjee, with the petitioner arguing Flexiworld improperly shifted its priority claim from the 2001 provisional to the Nov. 1, 2000 '101 provisional).
• IPR2022-01267 / -01268 / -01269 (Roku) on U.S. 9,836,257, 9,389,822, 7,944,577 — jointly moved to terminate on 2022-10-27 after a 2022-10-21 Patent License Agreement between Roku and Flexiworld that also dismissed Flexiworld v. Roku with prejudice. This shows Flexiworld's playbook: settle with the OEM and clear the IPRs simultaneously.
• Unified Patents, LLC v. Flexiworld Technologies, Inc., IPR2022-00775 on U.S. 9,836,257, claims 27–28 — Board rejected Flexiworld's argument that Unified should be denied as a non-practicing petitioner (Paper 10, 2022-11-08, Ogden, joined by McMillen and Dougal), and in the Final Written Decision of 2023-11-01 (Paper 41) found no challenged claims unpatentable, crediting Flexiworld's corroborated conception date of no later than 2000-10-22 (inventor declaration plus document metadata) to antedate the Olgaard (2000-10-24) and Acharya (2000-12-22) references. That is a Flexiworld PTAB win, but on a patent not asserted in -04338.
• PGR on U.S. 11,029,903 — a post-grant review of the '903 patent (asserted in companion case -04337) was active, with a Flexiworld Patent Owner Response and expert declaration (Ex. 2009) and a deposition transcript in the record. Not on -04338's patents.

---

4. How I'd characterize this case for a litigation-risk file

1. It is a venue and portfolio case, not a merits case. The only documented contested development in -04338 is the Texas→Georgia transfer, which Flexiworld conceded to keep its Georgia-based Hisense affiliates (Hisense USA; Hisense Electronics Manufacturing Company of America, both in Suwanee, GA) in the case and to avoid Judge Gilstrap. No claim construction, no invalidity ruling, no damages theory was ever tested.
2. The '073 patent's reach remains judicially undefined. Because -04338 (and its companions) resolved pre-Markman, and because the record I retrieved does not show a final written decision in IPR2022-01112, claim 8 of the '073 — proximity-triggered wireless detection/connection between a mobile device and a TV or soundbar — has no binding construction from either the court or the Board.
3. The parallel-IPR posture was a two-edged sword. The Roku petitions (IPR2022-01112 on '073, plus '811 and '233) targeted exactly the patents in the three Georgia cases, while Roku's concurrent license-and-terminate strategy on the '257/'822/'577 IPRs demonstrated a settlement path. Whether Hisense's ~mid-2023 exit came via a license or a bare dismissal is not in my sources.
4. What to verify next (in order): (a) PTAB docket for IPR2022-01112 — institution denial, institution + FWD, or § 317 termination; likewise the '811 and '233 petitions; (b) the N.D. Ga. docket for 1:22-cv-04338 — answer/counterclaims, any § 1404 or stay briefing, and the dismissal/stipulation entry with date and prejudice term; (c) whether the three Hisense cases were dismissed by a single coordinated order; (d) any Hisense–Flexiworld license memorialized in a PTAB § 317(b) filing.

Sources: Docket Alarm (1:22-cv-04338); Dockets.Justia dockets 308816 (N.D. Ga. -04338), 308815 (-04337), and 218527/215527 (E.D. Tex. -00228); Stanford NPE Litigation Database case 269070 and party pages; Ex Parte litigation pages for 1:22-cv-04338 and the Guiyang Hisense entity; RPX Insight litigation document 15143102 (complaint); USPTO PTACTS petition document for IPR2022-01112 (Roku v. Flexiworld, '073); Docket Alarm PTAB docket for IPR2022-00775 and the 2022-10-27 joint motion to terminate in IPR2022-01267; Banner & Witcoff PTAB Highlights (IPR2022-00775 Paper 10, 2022-11-08); PTAB Litigation Blog on IPR2022-00775 Paper 41 (2023-11-01); IPWatchdog Patent Filings Roundup (2022-07-01); Georgia IP Litigation blog via Lexology (2022-11-09); PatSnap litigation report on Flexiworld v. Hisense.

Reliability note: item-by-item, the filing date, transfer, patent set, asserted '073 claim 8, and the Roku IPR petition are well sourced. The existence and terms of the disposition, the contents of the N.D. Ga. docket after transfer, and the outcome of IPR2022-01112 are not verified, and I have marked them as such rather than filling them in.

I'll research this case's docket and counsel of record. Let me start with several searches.

Good initial leads. Let me verify against the actual docket and separate the two related N.D. Ga. Flexiworld–Hisense cases.

Let me pull the actual docket sheet for 1:22-cv-04338 and confirm the appearances.

Counsel of Record for Plaintiff Flexiworld Technologies, Inc. — Flexiworld Techs., Inc. v. Hisense Co., Ltd. et al., No. 1:22-cv-04338 (N.D. Ga.) (Judge Steven D. Grimberg)

Sourcing caveat up front: I was not able to load the full CM/ECF docket text for 04338 itself (the Docket Alarm / CourtListener entries for this case returned only header metadata: Judge Grimberg, Atlanta Division, filed Oct. 31, 2022, NOS 830, closed). Accordingly, the roster below is reconstructed from three converging sources rather than a single authoritative docket sheet: (1) the predecessor E.D. Tex. docket (No. 2:22-cv-00227), from which 04338 was transferred; (2) a plaintiff's filing of March 7, 2023 in the transferred N.D. Ga. litigation bearing the plaintiff's signature block; and (3) litigation-database counsel tables. Where a name is confirmed only for a sibling case (04337 or 04371), I say so. No attorney listed here was invented; nothing has been assumed from the patents alone.

Background relevant to the counsel question

04338 is one of three parallel Flexiworld–Hisense complaints originally filed in E.D. Tex. on June 24, 2022 (Nos. 2:22-cv-00225, -00227, -00228), consolidated into N.D. Ga. as 1:22-cv-04337, -04338 and -04371 after an agreed motion to change venue to the district where Hisense's U.S. affiliate is headquartered. The 04338 docket asserts five patents — U.S. 7,609,402; 10,140,072; 10,140,073; 10,387,087; and 10,768,871 — against the Hisense smart-TV/soundbar group. (Note for the file: 10,140,073 is the patent listed in your case metadata and is one of the five asserted here; the sibling 04371 case asserts a different family — '056, '324, '408, '811, '088 — so counsel appearances in 04371 are not automatically counsel in 04338.)

Plaintiff's counsel

Firm nomenclature note: databases list both "Nelson Bumgardner Conroy PC" and "Nelson Bumgardner PC" as plaintiff firms — these are the same shop, the Orland Park, IL patent-litigation boutique that is Flexiworld's principal outside counsel. Do not treat them as two separate engagements.

What I could not confirm

• No in-house counsel for Flexiworld (a small Oregon-based licensing/R&D company) appeared in any retrieved filing.
• No substitution, withdrawal or pro hac vice orders for 04338 were retrievable, so I cannot rule out that appearances changed later in 2023; the case shows as closed (consistent with the group-wide settlement reported in the sibling 04371 matter, where the court was told of a settlement and ordered disposal documents within 60 days), but I have not verified a dismissal entry on the 04338 docket itself.
• The March 7, 2023 document bearing the plaintiff's signature block is indexed in a litigation-document repository without an unambiguous case number in the excerpt retrieved; it is possible that it originates from 04337 or 04371 rather than 04338. Its utility here is that it shows the composition of Flexiworld's trial team (Nelson Bumgardner Conroy + Hill, Kertscher & Wharton), which is consistent with the complaint signature in the 04338 predecessor case.

Defense side (context only)

Reported appearances in the sibling case were Matthew C. Bernstein (Perkins Coie LLP) and Linda A. Klein (Baker, Donelson, Bearman, Caldwell & Berkowitz) for the Hisense entities (Daily Report Online, Nov. 28, 2022, discussing 1:22-cv-04371). At least one Hisense-side entity, Hisense's affiliate relations, was also represented by Perkins Coie in a Flexiworld-related IPR (lead counsel Babak Tehranchi, Reg. No. 55,937). I did not verify defense appearances on the 04338 docket specifically.

Practical read

If your citation needs a defensible "counsel of record" statement for 04338, the safest formulation is: "Plaintiff was represented by Timothy E. Grochocinski and Charles Austin Ginnings of Nelson Bumgardner Conroy PC (Orland Park, IL), with Steven G. Hill of Hill, Kertscher & Wharton LLP (Atlanta) as Georgia counsel." Add Mahaffey only if you can pull the 04338 docket sheet (PACER or CourtListener RECAP) and see his notice of appearance — that single lookup is the one item of unfinished verification here.

I'll research defense counsel of record for this docket. Let me run several searches.