Flexiworld Technologies, Inc. v. Lexmark International, Inc.

Case Overview: Flexiworld Technologies, Inc. v. Lexmark International, Inc., No. 5:22-cv-00097-KKC (E.D. Ky., Lexington Div.)

Parties and posture. Flexiworld Technologies, Inc. is a Vancouver, Washington–based wireless-technology R&D and licensing company founded by inventor William Ho Chang (with co-inventor Christina Ying Liu), which describes itself as a "pioneer … in the field of pervasive wireless technologies" but which admits it "has not made, offered for sale, sold, or imported a product that practices any of the Patents-in-Suit" (DE 33 ¶¶ 12, 57; RPX complaint excerpts). In practical terms it operates as a non-practicing entity; Stanford's NPE Litigation Database classifies it as a "Failed startup" and lists the '402 patent in Flexiworld's suits against Hisense (N.D. Ga.) and Sony (E.D. Tex.) (npe.law.stanford.edu/patent/7609402). Lexmark International, Inc. is the Lexington, Kentucky–headquartered printer and imaging-solutions company whose U.S. headquarters sits at 740 W. New Circle Road, Lexington, KY 40550 — the fact that anchors venue under 28 U.S.C. § 1400(b) as a "regular and established place of business" (RPX complaint excerpt, ¶ 9). In April 2022 Flexiworld filed four related suits (5:22-cv-00097, -00098, -00107, -00110), asserting a total of fifteen wireless-printing patents; on August 8, 2022, Judge Karen K. Caldwell consolidated them for discovery and pretrial purposes, designating 5:22-cv-00097 as lead (DE 28/31; consolidation order). The case was initially assigned to Judge Danny C. Reeves, who recused, and was randomly reassigned to Judge Caldwell (5:22-cv-00110 docket).

Accused technology and the '402 patent. The accused instrumentalities are Lexmark's "Accused Wireless Printers" (including its "Go Line" wireless printers) and "Accused Lexmark Apps" (the Mobile Print App, Mobile Assistant App, and related mobile-printing applications), which together let users print from smartphones and other mobile devices over Wi-Fi and other wireless connections (5:22-cv-00098 complaint, ¶¶ 44–45). The patent at issue here, U.S. Patent No. 7,609,402 ("Methods For Universal Data Output," issued Oct. 27, 2009, from an application filed Jan. 18, 2002), claims methods and systems for universal data output — enabling a wireless/mobile device to output data (e.g., print jobs) to an output device such as a printer over short-range wireless or network connections, with the output device's services discoverable and usable without printer-specific drivers (5:22-cv-00098 complaint, ¶¶ 20–24; asserted claim 13 against the Lexmark apps). The '402 patent was the subject of the 5:22-cv-00098 member case and is listed among the fifteen consolidated patents in the lead docket (DE 33 ¶ 1; DE 44 at 2 n.2).

Procedural history, venue significance, and why it matters. The key merits ruling is the March 20, 2023 Opinion and Order (DE 44), in which Judge Caldwell denied Lexmark's renewed partial motion to dismiss (and its alternative request to phase discovery). Lexmark argued that Flexiworld's pre-suit damages were barred by issue preclusion arising from Flexiworld v. Roku, Inc. (W.D. Tex.), where Flexiworld's pre-suit damages were cut off for failure to comply with the 35 U.S.C. § 287(a) marking requirement, and that Flexiworld's marking allegations were deficient. The court rejected both: issue preclusion failed because the Roku case involved entirely different patents (marking obligations are patent-specific), and the marking allegations were plausible, with the court noting a patentee who never practices the patent has no marking duty at all (DE 44 at 8–15, citing Arctic Cat). The venue is notable because NPE suits are rarely filed in a defendant's home district — here Flexiworld sued Lexmark where Lexmark is headquartered, eliminating venue battles. The case is also notable for its IPR linkage: Lexmark petitioned for inter partes review of the '402 patent (IPR2023-00845, filed Apr. 21, 2023), but the PTAB denied institution on Nov. 17, 2023, leaving the patent intact (ipverse.greyb.com PTAB database). The litigation ultimately ended in settlement: per the Action Intelligence litigation tracker, the four Flexiworld v. Lexmark suits were dismissed on June 6 (year not confirmed in the available snippet, though the same source reports a Lexmark–Flexiworld settlement, consistent with Flexiworld's parallel settlement of its Brother suits); PACER does not publicly show the settlement terms, and the case metadata's "final disposition unconfirmed" remains the cautious characterization.

Flexiworld Technologies, Inc. v. Lexmark International, Inc. — Key Legal Developments & Outcome

Case: 5:22-cv-00097-KKC (lead case), E.D. Ky., Lexington Division, Judge Karen K. Caldwell (Magistrate Judge Matthew A. Stinnett, per docket suffix "KKC-MAS")
Patents at issue (lead case): U.S. Patent Nos. 9,036,181; 10,140,071; 10,873,856; and 7,609,402 (the '402 patent)
Overall result: Settled and dismissed with prejudice in January 2024, following a Patent License Agreement between the parties; one parallel IPR on the '402 patent was denied institution, a second IPR (on a different patent) was instituted and then terminated on settlement.

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1. Filing & Initial Pleadings (April–August 2022)

• 2022-04-15: Flexiworld filed the lead complaint in 5:22-cv-00097 (and three companion actions: 5:22-cv-00098, 5:22-cv-00107, and 5:22-cv-00110) alleging infringement of wireless-printing patents against Lexmark's "Go Line" wireless printers and mobile print apps (Mobile Print App, Mobile Assistant App). The lead case asserts the '402 patent (U.S. Patent No. 7,609,402, "Methods For Universal Data Output," issued 2009-10-27) along with the '181, '071, and '856 patents. (Complaint, 5:22-cv-00098 DE 1; RPX/Justia records; amended complaints DE 33–36.)
• 2022-05-10: Judge Danny C. Reeves recused; the matters were randomly reassigned to Judge Karen K. Caldwell. (Recusal Order, 5:22-cv-00110 DE 10.)
• 2022-06-29: Agreed protective order entered governing confidential discovery. (5:22-cv-00107 DE 23.)
• 2022-07-08: Lexmark's answer deadline extended to 2022-08-12. (5:22-cv-00107 DE 24–25.)
• 2022-08-08: The court consolidated the four actions (5:22-cv-097, -098, -107, -110) for discovery and pre-trial proceedings, designating 5:22-cv-00097 as the lead case; trial consolidation was expressly left open. (Consolidation Order, 5:22-cv-00107 DE 27; referenced as DE 31 in lead case.)
• 2022-08-12: Instead of answering, Lexmark moved to dismiss the original complaints. (Lead case DE 32.) Flexiworld then filed four amended complaints on 2022-08-31 (DE 33–36), collectively asserting 15 patents (including the '402, '233, '073, '846, '791, '178, '871, '798, '056, '181, '071, '856, '576, '031, and RE42,725 patents), which moots the initial dismissal motion. (Sources: Opinion & Order, DE 44 at 2–4; Casetext/Justia.) I found no docket entry in my sources showing a formal answer or counterclaims — Lexmark's responsive posture through 2022–2023 was motion-driven, not an answer with counterclaims.

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2. Pre-Trial Motions of Substance

Motion to Dismiss / Phase Discovery (the only substantive merits ruling)

• 2022-09-14 (approx.): Lexmark filed a renewed partial motion to dismiss or, in the alternative, to phase discovery (DE 37), arguing that (a) issue preclusion from Flexiworld Techs. v. Roku, Inc. (W.D. Tex.) — where the court had granted summary judgment barring pre-suit damages for failure to mark under 35 U.S.C. § 287(a) — should bar Flexiworld's pre-suit damages claims; and (b) Flexiworld's § 287(a) "information and belief" marking allegations were insufficiently pled. In the alternative, Lexmark sought phased discovery to permit an early summary-judgment motion on pre-suit damages.
• 2023-03-20: Opinion and Order (DE 44) — Judge Caldwell denied the renewed motion to dismiss and the alternative motion to phase discovery, and denied Flexiworld's motion for oral argument (DE 42). Key holdings:
  • The original dismissal motion (DE 32) was moot because the amended complaints were timely filed as of right.
  • No issue preclusion from the Roku case: the patents and licensees differ, so the § 287(a) issues are not identical (the court could not even access the unredacted Roku pre-trial transcript).
  • Flexiworld's marking allegations were plausible — "information and belief" pleading is not automatically fatal, and Flexiworld pled it never practiced the patents (a non-practicing patentee has no marking duty); Lexmark also failed its Arctic Cat initial burden of identifying specific unmarked patented articles/licensees.
  • No phasing of discovery: the marking/notice issue is intertwined with liability and damages, and § 287(a) limits damages rather than providing a complete defense.
  • Notably, the court also observed that even absent marking, actual notice (July 23 and October 29, 2021 notice letters; August 2021 discussions) could support pre-suit damages. (Sources: DE 44, reported at Justia, Casetext, CourtListener; Studicata summary.)

Other motions

• I found no reported motions to transfer venue (venue was proper in Lexington — Lexmark's home base at 740 W. New Circle Road), no motion to stay pending IPR in the retrieved sources, and no summary judgment ruling in the district court. The case settled before claim construction.

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3. Claim Construction (Markman)

No Markman ruling occurred. The case was resolved by settlement before claim-construction proceedings concluded (no claim-construction order appears in any retrieved source). The docket reflects the case remained in pre-trial/discovery phase through the March 2023 dismissal ruling.

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4. Discovery Milestones with Strategic Significance

• 2022-06-29: Agreed protective order (routine, but notable as the first discovery infrastructure order). (5:22-cv-00107 DE 22–23.)
• 2022-08-08: Consolidation order — the four cases proceeded under one discovery track, with the lead-case docket controlling. (5:22-cv-00107 DE 27.)
• 2023-03-20: The court's denial of Lexmark's request to phase discovery was strategically significant: it kept full merits discovery (liability + damages + marking/notice) open rather than allowing Lexmark to front-load a pre-suit-damages summary-judgment kill shot — the same theory Lexmark had used successfully against Flexiworld in the Roku case. (DE 44.)
• No other major discovery disputes (e.g., spoliation, privilege, or sanctions orders) appear in the retrieved sources.

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5. Trial, Verdict & Post-Trial Motions

No trial occurred. There was no verdict, and therefore no JMOL, new-trial motion, or fee motion. The case was dismissed before trial.

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6. Final Disposition: Settlement & Dismissal With Prejudice (January 2024)

• 2024-01-16: Flexiworld and Lexmark executed a Patent License Agreement resolving all pending controversies, including the '233 patent and, per the IPR termination papers, "the Lexmark Litigations" generally. Under the Agreement, the parties agreed to (a) dismiss all claims in the Lexmark Litigations with prejudice and (b) terminate the pending IPR.
• 2024-01-17: The Board authorized the parties' joint motion to terminate IPR2023-00846 (the '233 patent IPR), and the parties stated they were concurrently filing joint motions to dismiss all claims in the Lexmark Litigations with prejudice. (Joint Motion to Terminate, IPR2023-00846, Papers filed via PTACTS, ~2024-01-18.)
• 2024-01-26: IPR2023-00846 was terminated as settled. (IPVerse/PTAB records.)
• District court posture: The parties' representations to the PTAB state that joint stipulations of dismissal with prejudice of the district court actions were filed in January 2024. Caveat: I could not retrieve the specific district-court docket entry (stipulation/order of dismissal) in my sources to confirm the exact dismissal date and entry number; the dismissal-with-prejudice is corroborated by the PTAB settlement filings, but the E.D. Ky. docket entry itself remains unverified here.

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7. Parallel PTAB IPR Proceedings & Effect on the Litigation

Lexmark filed at least two IPR petitions against Flexiworld's asserted patents:

IPR2023-00845 — U.S. Patent No. 7,609,402 (the patent at issue in this case)

• Filed: 2023-04-21, by Lexmark (petitioner counsel: Babak Tehranchi et al.; patent owner counsel: Charles Ginnings et al.).
• Patent Owner Preliminary Response: 2023-08-23, arguing no reasonable likelihood of success — the primary combination (Yamaguchi '732 + Kammer '645) allegedly fails to disclose wireless discovery/attribute-receipt/selection claim elements and lacks motivation to combine (a coin-operated, random-number printing kiosk with Bluetooth discovery).
• 2023-11-17: Decision Denying Institution under 35 U.S.C. § 314 — the Board agreed the petition failed to establish a reasonable likelihood of prevailing on any challenged claim (claims 1–21 and 23–37). (PTACTS/IPVerse; the Board's decision paper.)
• Effect on litigation: The failed IPR removed any estoppel-free invalidity pressure on the '402 patent and eliminated a potential stay basis; it strengthened Flexiworld's hand heading into the settlement.

IPR2023-00846 — U.S. Patent No. 9,965,233 ('233 patent, asserted in member case 5:22-cv-00110)

• Filed: 2023-04-28.
• 2023-11-14: Institution granted.
• 2024-01-26: Terminated — settled after the parties' 2024-01-16 Patent License Agreement; the joint motion to terminate recited that the Agreement "completely resolves all pending controversies between Lexmark and Flexiworld" and that the parties agreed to dismiss the Lexmark Litigations with prejudice. (IPVerse/PTACTS, Joint Motion to Terminate.)

Overall IPR effect: The PTAB proceedings were tightly coupled to the district court case. The '402 IPR's denial in November 2023 and the parties' January 2024 global license-and-dismiss settlement ended both the IPRs and the district court litigation. The '402 patent survived the IPR challenge unimpaired, but the infringement case was resolved by license rather than judgment on the merits.

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Summary Bottom Line

Caveats on sourcing: The March 20, 2023 opinion (DE 44) is well-documented (Justia, Casetext, CourtListener). The settlement/disposition facts rest on the PTAB termination filings (PTACTS documents, IPVerse records), which expressly state the parties agreed to dismiss the Lexmark Litigations with prejudice; I did not retrieve the final E.D. Ky. dismissal docket entry itself, nor did I find any answer/counterclaims filing, Markman order, or trial activity in the sources available. No appeal to the Federal Circuit was identified.

I'll search for press and analyst coverage of this case from multiple angles.

Found significant trade-press coverage. Let me pull the specific articles.

Let me locate the specific Actionable Intelligence articles and their URLs.

Press and trade coverage of Flexiworld v. Lexmark

The only outlet I found doing dedicated, case-specific reporting is the printer-industry trade publication Actionable Intelligence, which followed the four consolidated suits from the pleadings through dismissal under its "Courthouse Briefings" banner and maintained a topic-tag page for "Flexiworld Technologies v. Lexmark International I (2022)." Reconstructing the arc from that tag page and the publication's Lexmark and Courthouse indexes: it reported "Flexiworld to File Four Amended Complaints against Lexmark," then "Lexmark Seeks Stay in Flexiworld's Patent-Infringement Complaints" followed by "Lexmark's Motion to Stay Flexiworld's Lawsuits Is Denied" — its dek stating that "[o]n September 1, the U.S. District Court for the Eastern District of Kentucky denied Lexmark's motion to stay four patent-infringement" suits. It characterized the March 2023 merits ruling as "Court Denies Lexmark's Motion to Dismiss Flexiworld's Patent-Infringement Claims," with the dek framing it as "[i]n a setback for Lexmark." At the end of the dispute it published "Lexmark to Settle with Flexiworld Technologies" (dek: "[i]t seems one of Lexmark International's New Year's resolutions was to wrap up patent-infringement litigation") and "Flexiworld Technologies' Lawsuits against Lexmark Are Dismissed," reporting that "[o]n June 6, a series of four patent-infringement lawsuits that Flexiworld Technologies brought against Lexmark International were dismissed." That outlet also treated the case as a companion to Flexiworld's parallel OEM campaign, running separate items on Flexiworld's Brother suits ("Brother to Settle with Flexiworld Technologies"; "Flexiworld's Lawsuits against Brother Are Dismissed," March 13) on the same indexes.

Two items of Actionable Intelligence's reporting go beyond — and in one respect appear to contradict — the docket-derived record in the earlier sections of this case file, and I flag both. First, the publication ran a headline, "Lexmark Answers Flexiworld's Patent-Infringement Complaints and Files Counterclaims," indicating Lexmark answered and counterclaimed in March — whereas my earlier docket reconstruction found no answer or counterclaims and characterized Lexmark's posture as motion-driven through the March 2023 ruling. Second, its two stay-motion items show that Lexmark did seek a stay the earlier sections reported not finding; the stay-denial dek gives "September 1" with no year in the retrieved snippet, though its placement in the sequence (after the amended complaints, before the March 2023 dismissal ruling) points to September 1, 2022 — i.e., a stay sought in advance of the IPR filings, not a stay pending the IPRs, which were not filed until April 2023. There is also a timing gap I cannot close: the June 6 dismissal Actionable Intelligence reported is hard to reconcile with the January 16, 2024 Patent License Agreement and the January 17, 2024 joint motions to dismiss recited in the IPR2023-00846 termination papers (in which the parties represented they were "concurrently" filing joint motions to dismiss the Lexmark Litigations with prejudice). The June 6 item's own dek does not state a year; its position atop a page interleaved with April/May 2024 items (Ninestar's Q1 2024 results, an April 2024 toner-counterfeiting settlement item) suggests June 6, 2024, which would mean the court entered the dismissal order months after the parties' stipulations. I could not verify the year, and the earlier "final disposition unconfirmed" caveat still largely stands.

Beyond that trade coverage, I found no reporting in the national or legal-press outlets you asked me to check. Searching the case caption, the party names, the '402 patent, and the settlement angle returned no articles from Reuters, Bloomberg Law, Law360, IPWatchdog, Patently-O, Ars Technica, The Verge, JD Supra, or EFF Deeplinks — and no mainstream coverage at all. Accordingly there are no reported damages figures, no reported settlement terms, and no analyst or executive commentary to relay: the license agreement is expressly confidential (the PTAB granted the parties' joint request to keep it "business available … only to Federal Government agencies on written request" under 35 U.S.C. § 317(b)), so nothing about the money has entered the public record, and nothing in my searches suggests any outlet obtained terms. The nearest thing to outside-the-litigation press material is an April 18, 2002 The Columbian article, "Vancouver startup looks to revolutionize use of printers," which appears as Exhibit 9 to Flexiworld's own complaints and is used in the pleadings to establish Lexmark's early awareness — Lexmark's manager of third-party alliances is quoted there saying "Flexiworld's concept is ahead of its time" and that Flexiworld was "doing things to help mobile devices be able to print things." That is a 2002 story about Flexiworld quoted inside the court record, not press coverage of this litigation, and I did not retrieve the article itself.

Bottom line on coverage: this case was followed essentially as a supply-chain/printer-industry matter by a single specialist trade outlet, and for legal-audience significance (the § 287 marking/issue-preclusion fight and the failed '402 IPR) any discussion appears to live in docket mirrors and case-law databases rather than in journalism. Sourcing caveat: my search results returned Actionable Intelligence's tag and index pages, not the individual article pages, so the headlines and one-line deks quoted above are reproduced from those indexes; I could not open the underlying articles to confirm datelines, whether the answer-and-counterclaims item concerned Lexmark (its adjacent index text oddly references the Western District of Tennessee, where the Brother suits were filed), or the year of the June 6 dismissal. Those three points should be verified against the E.D. Ky. docket (and the article pages directly) before being treated as settled.

Sources

• UNITED STATES PATENT AND TRADEMARK OFFICE
• Filed on behalf of: Flexiworld Technologies, Inc
• U.S. District Court Eastern District of Kentucky (Lexington) CIVIL DOCKET FOR CASE #: 5:22-cv-00110-KKC
• 97. Lexmark has had actual knowledge of the '031 Patent since issuance of the '031 Patent
• 55. Flexiworld has been damaged as a result of Lexmark's infringing conduct
• in the Asserted Claims are not directed to long- standing practices that were well- understood, routine, and conventional as con...
• 100. Additionally, on information and belief, Lexmark has and continues to indirectly infringe the '031 Patent in violation of 3...
• 45. Alternatively, Lexmark has had knowledge of the Patents-in-Suit at least since receipt of Flexiworld's October 29, 2021 supp...
• 51. Further, on information and belief, Lexmark has, and continues to, provide onsite support for the Accused Products, which re...
• Patent Cases, Dockets and Filings in Kentucky
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Flexiworld Technologies v. Lexmark International IV (2022)

Plaintiff's Counsel of Record — Flexiworld Technologies, Inc. v. Lexmark International, Inc., No. 5:22-cv-00097-KKC (E.D. Ky.)

Flexiworld is represented by a small, specialist patent-litigation team: Nelson Bumgardner Conroy P.C. (national IP boutique) handling the substantive work, with a Lexington, Kentucky local firm for E.D. Ky. admission. The three attorneys of record on the district-court dockets are confirmed by (i) the clerk's notices of deficiency and pro hac vice orders in the member cases, and (ii) the plaintiff's own signature block on a December 19, 2023 filing in this very litigation.

1. Charles Austin Ginnings — lead substantive counsel / PTAB lead

• Firm: Nelson Bumgardner Conroy P.C. (Orland Park, IL office: 15020 S. Ravinia Ave., Suite 29, Orland Park, IL 60462; firm also has a Burr Ridge, IL office at 745 McClintock Dr., Suite 340)
• Admissions: New York Bar No. 4986691; USPTO Reg. No. 62,706; admitted pro hac vice in the Lexmark actions by Judge Caldwell on May 11, 2022 (see order granting pro hac vice, 5:22-cv-00098 DE 19, docketed 5/11/22; Unicourt attorney listing)
• Role: The most senior Flexiworld litigator on this file; also served as lead counsel for Flexiworld as Patent Owner in the parallel IPRs on the patents at issue — IPR2023-00845 (the '402 patent) and IPR2023-00846 (the '233 patent) (PTAB Mandatory Notices, IPR2023-00845, filed 5/12/23; IPR2023-00846 notices)
• Experience: Long-running Flexiworld campaign counsel; appearances for Flexiworld in Flexiworld v. Amazon (W.D. Tex. 6:20-cv-00553-ADA, lead attorney), Flexiworld v. Sony (E.D. Tex. 2:23-cv-00616), Flexiworld v. Hisense (E.D. Tex. 2:22-cv-00227), Flexiworld v. Xerox (W.D.N.Y.), and Flexiworld v. TCL (E.D. Tex. 2:26-cv-00229) (dockets via Justia, PACER Monitor, Unicourt)

2. Timothy E. Grochocinski — lead substantive counsel (co-lead)

• Firm: Nelson Bumgardner Conroy P.C. (Senior Partner; Orland Park, IL and 3131 W. 7th St., Suite 300, Fort Worth, TX offices; also Burr Ridge, IL)
• Admissions: Illinois Bar No. 6295055 (also MO 2007; Federal Circuit, E.D. Tex., W.D. Tex., E.D. Mich.); admitted pro hac vice in the Lexmark actions on May 11, 2022 (5:22-cv-00098 DE 19; Unicourt listing)
• Role: Primary ECF filer for Flexiworld throughout the Lexmark litigation — he signed the complaints, amended complaints, and the opposition to Lexmark's renewed motion to dismiss (RPX/insight.rpxcorp.com signature block of 12/19/23; PACER Monitor/Unicourt docket entries)
• Experience: Concentrates on patent infringement and complex commercial litigation with extensive trial experience; Flexiworld's go-to counsel across its campaign — v. Canon (W.D. Tex. 6:21-cv-00143-ADA, notice of dismissal with prejudice), v. Epson America (C.D. Cal. 8:21-cv-00807), v. Sony (E.D. Tex.), v. Indeed (W.D. Tex. 1:24-cv-01254), v. Kyocera (N.D. Tex. 3:26-cv-02381), v. LG Electronics (E.D. Tex. 2:25-cv-00960) (PACER Monitor, Justia, Unified Patents portal; Avvo/Martindale profiles)

3. James M. ("Jim") Francis — local counsel

• Firm: Francis Law Firm PLLC, 4071 Tates Creek Centre Drive, Suite 304, Lexington, KY 40517
• Admissions: Kentucky Bar No. 89834 (E.D. Ky. local admission — no pro hac vice needed)
• Role: Kentucky local counsel for all four consolidated Flexiworld v. Lexmark actions; the clerk's notices of deficiency were directed to "James M. Francis, Timothy E. Grochocinski, and Charles Austin Ginnings" as counsel of record (5:22-cv-00110 DE 7; 5:22-cv-00098 docket), and Francis signed the 12/19/23 plaintiff filing alongside Grochocinski and Ginnings ("COUNSEL FOR PLAINTIFF FLEXIWORLD TECHNOLOGIES, INC.") (RPX/insight.rpxcorp.com)
• Experience: Lexington-based IP/litigation practitioner providing the required E.D. Ky. presence; I have no notable reported patent decisions attributable to him specifically.

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Related counsel you may encounter (not district-court counsel of record in this case)

• Brent Bumgardner (Nelson Bumgardner Conroy P.C., Fort Worth, TX; USPTO Reg. No. 48,476) — named back-up counsel for Flexiworld in IPR2023-00845 and IPR2023-00846, and lead PTAB counsel in other Flexiworld IPRs (e.g., IPR2022-00775). He does not appear in the E.D. Ky. district-court signature blocks or docket attorney entries for the Lexmark actions, so I would not list him as counsel of record here — he was PTAB-side only. (PTAB Mandatory Notices, IPR2023-00845; Docket Alarm IPR2022-00775 records)
• Edward R. Nelson III, Ryan P. Griffin, Jonathan H. Rastegar (Nelson Bumgardner Conroy P.C., Fort Worth) — appeared for Flexiworld in the earlier Canon case (2021) but I found no indication they entered appearances in the Lexmark actions.
• In-house: None identified. Flexiworld is a small R&D/licensing company; founder William Ho Chang signed PTAB powers of attorney as corporate representative (not as counsel), and no in-house attorney of record appears on any retrieved filing.

Sourcing notes and caveats

• The core trio (Francis / Grochocinski / Ginnings) is well corroborated across Unicourt (plaintiff attorney list for 5:22-cv-00098), Unified Patents' docket portal (clerk's notices listing all three), RPX/insight.rpxcorp.com (plaintiff signature block dated 12/19/23), and PTACTS/IPVerse (IPR lead/back-up designations).
• I did not retrieve the lead case's (5:22-cv-00097) full PACER docket sheet directly, so I cannot rule out additional pro hac vice appearances (e.g., by other Nelson Bumgardner Fort Worth attorneys) in entries after December 2023; the consolidated docket's later filings (settlement/dismissal, Jan. 2024) were not independently retrieved.
• No filings were sealed that would hide counsel identity; no attorney was terminated or substituted in the sources reviewed.
• The defendant's counsel (for contrast): Amy E. Simpson and Joseph P. Reid (Perkins Coie, pro hac vice, admitted 5/20/22), Steven Brian Loy and Dana Rashay Howard (Lexington) — but those are Lexmark's attorneys, not plaintiff's.

Defense Counsel of Record — Flexiworld Technologies, Inc. v. Lexmark International, Inc., No. 5:22-cv-00097-KKC (E.D. Ky.)

Based on the docket text entries in the lead and member cases (5:22-cv-00098, -00107, -00110), UniCourt's attorney roster, and the PTAB mandatory notices in the parallel IPR, Lexmark International, Inc. was represented by the following attorneys. Caveat up front: the March 20, 2023 Opinion and Order (DE 44) text available to me does not print the signature block, so the roster below is reconstructed from docket entries (pro hac vice motions and orders, the FRCP 7.1 disclosure, agreed orders, and attorney-update entries), not from the opinion's caption. No answer or counterclaims appear in the retrieved docket, so these are appearance-based identifications.

Lead / out-of-district counsel (pro hac vice)

Joseph P. Reid — Pro hac vice counsel for Lexmark.

• Role: Out-of-state/pro hac vice counsel (admitted in E.D. Ky. by virtual order dated May 20, 2022, in the member cases; see 5:22-cv-00107 DE 19–21 and 5:22-cv-00098 DE 20–22; UniCourt lists him among "Defendant Attorneys").
• Firm/office: Firm not explicitly stated in the docket text I retrieved. The strong circumstantial indicator is Perkins Coie LLP: Lexmark's IPR petitioner service address in IPR2023-00845 (the '402 patent IPR) was Lexmark-FlexiworldIPR@perkinscoie.com (PTAB mandatory notices, filed May 12, 2023), and the IPR petitions were led by Perkins Coie attorneys. Specific office location unconfirmed.
• Experience: Not independently confirmed; do not rely on a specific bio.

Amy E. Simpson — Pro hac vice counsel for Lexmark.

• Role: Out-of-state/pro hac vice counsel (same May 20, 2022 order; 5:22-cv-00098 DE 21–22; UniCourt defendant-attorney roster).
• Firm/office: Same indicator — Perkins Coie LLP per the IPR service address above; office unconfirmed.

Dana Rashay Howard — Counsel for Lexmark.

• Role: Added to the case as attorney for Lexmark by docket text dated August 9, 2022 ("Attorney Update. Attorney Dana Rashay Howard for Lexmark International, Inc. added," 5:22-cv-00098 docket via Patexia).
• Firm/office: Not stated in the retrieved docket text. Likely the same out-of-state team (Perkins Coie) or Lexmark in-house, but this is unconfirmed — flagging as such.

Local counsel

Steven B. Loy — Local counsel (Kentucky/E.D. Ky. admission).

• Role: Local counsel and the E.D. Ky. filing attorney for Lexmark — he filed Lexmark's FRCP 7.1 disclosure statement (May 10, 2022), the agreed orders extending Lexmark's answer deadlines, and the proposed consolidation order (5:22-cv-00107 DE 9–10, 24–27; 5:22-cv-00110 DE 8–9).
• Firm/office: Member and co-chair of the IP Practice Group, Stoll Keenon Ogden PLLC, 300 West Vine Street, Suite 2100, Lexington, KY 40507 (confirmed via firm website, Martindale, Super Lawyers).
• Experience: Deep, long-standing Lexmark relationship — he argued Static Control Components, Inc. v. Lexmark Int'l, Inc. before the U.S. Supreme Court in December 2013 (false-advertising standing under the Lanham Act) and defended Lexmark in the Elstein shareholder class action; his bio also cites a patent case involving a successful failure-to-mark/notice defense under 35 U.S.C. § 287 (relevant to the very marking issue in this case).

Parallel IPR counsel (not district-court counsel of record)

Babak Tehranchi (and colleagues at Perkins Coie LLP) — Lead petitioner counsel for Lexmark in IPR2023-00845 challenging the '402 patent at issue here (per the case summary's prior research; the IPR service address confirms Perkins Coie). He is not identified in the retrieved district-court docket as counsel of record, so treat him as the IPR-side counterpart to the litigation team.

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Summary table

Sourcing caveats

• Confirmed: Loy's identity, firm, and local-counsel role (firm bio + docket text); the pro hac vice admissions of Reid and Simpson (docket orders); Howard's addition (Patexia docket mirror of 5:22-cv-00098).
• Inferred, not confirmed: The Perkins Coie affiliation of Reid, Simpson, and Howard rests on the IPR service address (Lexmark-FlexiworldIPR@perkinscoie.com) and the fact that Perkins Coie handled Lexmark's IPR campaign; I could not retrieve their motion-for-PHV attachments (which normally state firm/office) or firm bios in the available sources.
• Not found: Any Lexmark in-house counsel of record on the retrieved docket; no answer/counterclaims (Lexmark's posture was motion-driven through the March 2023 ruling, then settlement in January 2024).