Litigation

Flexiworld Technologies, Inc. v. Xerox Corp.

dismissed

6:23-cv-06372

Patents at issue (4)

10037178
11096056
10768871
10841798

Defendants (1)

Summary

Flexiworld asserted the '178 patent together with US 11,096,056, US 10,768,871, and US 10,841,798. The parties stipulated to dismiss with prejudice all pending claims and counterclaims, each side bearing its own costs, fees, and expenses; exact dates not confirmed.

Case overview & background

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

I'll research this case thoroughly. Let me start with several searches in parallel.

Let me dig deeper into the specific docket and the related cases.

Key legal developments & outcome

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

I'll research this case thoroughly using web searches.

I have enough to assemble the chronology. Note that this case is one of four parallel Flexiworld v. Xerox suits filed the same day (Nos. 6:23-cv-06370, -06371, -06372, -06373), which is important context.

Flexiworld Technologies, Inc. v. Xerox Corp., No. 6:23-cv-06372 (W.D.N.Y.)

Bottom line: This was a short-lived NPE campaign. Filed 2023-06-29, it never progressed past the pleadings — no Markman, no discovery of note, no trial. It ended roughly eleven months later by stipulated dismissal with prejudice under Fed. R. Civ. P. 41(a)(1)(A)(ii), each side bearing its own costs, fees, and expenses, apparently after a negotiated settlement. There was no merits ruling, so the four asserted patents emerged legally intact but unadjudicated.

1. Filing & initial pleadings

2023-06-29 — Complaint filed. Flexiworld Technologies, Inc. filed four separate complaints against Xerox Corporation in W.D.N.Y.; this one was docketed as 6:23-cv-06372 and assigned to the Hon. Elizabeth A. Wolford. (Docket, Justia). The companion suits — Nos. 6:23-cv-06370, -06371, and -06373 — were filed the same day, each asserting a different cluster of Flexiworld patents rather than duplicating them, a common NPE tactic to spread invalidity risk across dockets:

Case Representative patents asserted
6:23-cv-06370 US 10,140,071; US 10,873,856; US 9,036,181
6:23-cv-06371 US 10,140,073; US 10,761,791; (US 10,184,846)
6:23-cv-06372 (this case) US 10,037,178; US 11,096,056; US 10,768,871; US 10,841,798
6:23-cv-06373 (separate set)

The four patents-in-suit here (all with nominal priority back to Flexiworld's 2000–2001 applications) cover wireless device discovery over WLAN/802.11 and the wireless receipt of digital content by output devices such as printers, TVs, and audio controllers. See PatSnap case profile (aggregator — treat with care). The complaint targeted Xerox's wireless printer lines (AltaLink, ColorQube, VersaLink, WorkCentre, Phaser, B/C/EC series) and Xerox mobile apps (Xerox Print and Scan Experience, Xerox Print Service Plug-in for Android, Xerox Workplace), and pleaded willfulness.

Sourcing caveat: The PACER "cause of action" field reads 35 U.S.C. § 145, which is the district-court route for obtaining a patent and is almost certainly a docketing mis-code; the substance was § 271 infringement. Docket numbers above for the 6370/6371 patent sets come from secondary aggregators and were not independently confirmed against each complaint.

2023-07-13 — Service. Xerox was served via Corporation Service Company (Dkt. 9, Affidavit of Service; answer due 2023-08-03). (Justia docket)

2023-07-18 — Pro hac vice admissions. Text order granting admission of Flexiworld's Charles Austin Ginnings and Timothy Edward Grochocinski (Nelson Bumgardner Conroy PC), joining local counsel Peter John Glennon (The Glennon Law Firm, PC). Earlier PHV motions (Dkts. 5–6, 2023-07-13) were terminated on 2023-07-14 for a misspelled name and refiled.

2023-08-02 — Xerox appears. Notice of appearance by Eric J. Ward (Dkt. 11); Xerox corporate disclosure statement (Dkt. 13); and a stipulation extending the answer deadline (Dkt. 12).

2023-08-03 — Extension granted. Text order (Dkt. 14) extending Xerox's response deadline to 2023-09-15.

2023-09-15 (approx.) — Answer and counterclaims. Industry press confirms Xerox answered all four complaints and filed counterclaims (almost certainly declaratory judgment of non-infringement and/or invalidity). See Actionable Intelligence, "Xerox Answers Flexiworld's Patent-Infringement Complaint, Files Counterclaims". I could not confirm the exact filing date or the precise counterclaim counts from a primary docket source; the September 15 deadline is the best-supported estimate.

2. Pre-trial motions of substance

None were filed or decided. There is no record of a motion to dismiss (e.g., § 101 or standing), a § 1404(a) transfer motion, a motion to stay pending IPR, or any summary judgment motion in this docket before the dismissal. The only motions on record are the pro hac vice applications. As discussed below, the case settled before the contested-motion phase.

3. Claim construction (Markman)

Not reached. No Markman hearing, no claim construction order, and no joint claim construction statement appear on the docket. Flexiworld's related W.D. Tex. litigation against Roku did produce claim construction rulings (cited as Ex. 2010 in IPR2021-00714), but none of that work carried into this docket. I found no § 101 or Alice ruling on these four patents in this case.

4. Discovery milestones

No strategically significant discovery milestone is documented. Given the ~11-month lifespan and the absence of a scheduling order in the available docket, it appears discovery either never opened in earnest or was stayed/suspended while settlement discussions proceeded. No infringement contentions, invalidity contentions, or protective order appear in the retrieved docket.

5. Trial, verdict, post-trial motions

None. No trial date was set, no verdict issued, and no JMOL/new-trial or § 285 fee motion was filed. The dismissal's "each party bears its own costs, expenses, and attorneys' fees" language effectively foreclosed any later fee-shifting fight.

6. Settlement, dismissal, final disposition

~2024-05 — Settlement, then stipulated dismissal with prejudice. Actionable Intelligence's tag page carries a progression that brackets the end: "Xerox Is Working on Settlement Agreement with Flexiworld Technologies" followed by "Flexiworld's Lawsuits against Xerox Are Dismissed after Settlement", the latter post noting that "eleven months ago, Flexiworld Technologies filed four patent-infringement lawsuits against Xerox." Eleven months from 2023-06-29 places the dismissal around May 2024. The precise dismissal date is not confirmed from a primary source and should be verified against PACER.

The operative dismissal language (quoted verbatim in aggregator reproductions of the PACER docket for the companion cases):

"Pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii), Plaintiff Flexiworld Technologies, Inc. ('Flexiworld') and Defendant Xerox Corporation ('Xerox'), by and through their undersigned counsel, hereby stipulate and agree to dismiss with prejudice all pending claims and counterclaims in these actions, including all claims by Flexiworld against Xerox and all claims by Xerox against Flexiworld. Each party is to bear its own costs, expenses, and attorneys' fees."

Why it matters:

  • The with-prejudice designation bars Flexiworld from re-asserting these four patents against Xerox on the same accused conduct; Flexiworld's licensing leverage over Xerox is permanently spent.
  • Xerox's counterclaims were dismissed with prejudice too, so neither side obtained an invalidity or non-infringement adjudication.
  • No damages, injunction, or prevailing-party finding — i.e., no merits precedent on these four patents.
  • The own-costs clause signals no § 285 exceptional-case fight, and the Rule 41(a)(1)(A)(ii) mechanism confirms bilateral consent — consistent with a paid license/settlement whose terms were not publicized.

7. Parallel PTAB proceedings and effect on the litigation

No IPR or PGR on the four patents-in-suit in this docket (US 10,037,178, US 11,096,056, US 10,768,871, US 10,841,798) is documented in my searches; the case ended before any stay motion could be briefed. If a Xerox- or Unified-backed petition was filed against one of these four, I could not verify it and it should be checked on the PTAB docket.

What is well documented is the broader Flexiworld PTAB campaign, which is the backdrop that makes a quick settlement rational:

Flexiworld also litigated this same portfolio widely — e.g., Roku (W.D. Tex. 6:21-cv-00680), Lexmark (E.D. Ky. 5:22-cv-00098), Sony (E.D. Tex. 2:23-cv-00616, dismissed with prejudice on the same Rule 41(a)(1)(A)(ii) template), and Hisense. Several of those resolved by voluntary dismissal or settlement. Effect on the Xerox litigation: the escalating PTAB pressure across the portfolio, the multi-front district court load, and Xerox's willingness to paper a settlement combined to push this docket to an early global resolution instead of an adjudication.

Chronology at a glance

Date Event
2023-06-29 Complaint filed (one of four parallel Flexiworld v. Xerox suits), Judge Wolford
2023-07-13 Xerox served via CSC
2023-07-18 PHV granted (Ginnings, Grochocinski)
2023-08-02 Xerox notice of appearance (Ward), corporate disclosure, stipulation extending time
2023-08-03 Text order extending response deadline to 2023-09-15
2023-09-15 (approx.) Xerox answer + counterclaims
~2024-05 Stipulated dismissal with prejudice under Rule 41(a)(1)(A)(ii); each side bears own costs
— No Markman, no discovery milestones, no trial, no PTAB proceeding on the four patents-in-suit

Confidence / gaps

  • Well sourced: filing date, service, PHV, extension, dismissal mechanism and language, parallel suit structure, defense/plaintiff counsel of record.
  • Not verified against primary sources: the exact answer/counterclaim date and counts; the exact dismissal date; any counterclaim theories; plaintiff-side second-chair counsel and Xerox's full outside-counsel roster (names like Easley, Shomaker, Wells, Sochia, Quigley, Hodgson Russ, and McKool Smith appear only in an AI-generated aggregator and should be confirmed on PACER); and any IPR filing specifically targeting the '178, '056, '871, or '798 patents.

Plaintiff representatives

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

I'll research the counsel of record for Flexiworld Technologies in this case.

Let me verify counsel details and check for any additional appearances.

Plaintiff's Counsel of Record — Flexiworld Technologies, Inc. v. Xerox Corp., No. 6:23-cv-06372 (W.D.N.Y.)

Three attorneys appeared for Flexiworld. Two are from the same out-of-state IP boutique; one is the Rochester local counsel who sponsored their pro hac vice admissions. No in-house Flexiworld lawyer ever entered an appearance on this docket.

# Attorney Role Firm / Office Notes on experience
1 Timothy E. Grochocinski Lead trial counsel (out-of-state; admitted pro hac vice) Nelson Bumgardner Conroy P.C. — plaintiff's address of record in the complaint is 15020 S. Ravinia Ave., Suite 29, Orland Park, IL 60462 (firm also maintains a Fort Worth, TX office) Flexiworld's principal outside patent litigator. In a 2021 PTAB PHV declaration he stated he had practiced patent litigation "for over twelve years," had tried patent cases to verdict as lead trial counsel, and argued before the Federal Circuit; he identified himself as lead counsel in the co-pending Flexiworld v. Roku, No. 6:20-cv-00819 (W.D. Tex.). He is the signature/filer on Flexiworld's complaints and filings across its printer-vendor campaign (Canon, Epson, Lexmark, Sony, Kyocera, TCL, Indeed, et al.).
2 Charles Austin Ginnings Counsel (second chair / co-counsel; admitted pro hac vice; USPTO Reg. No. 62,706) Nelson Bumgardner Conroy P.C., Orland Park, IL Grochocinski's co-counsel in the Flexiworld campaign; named in Flexiworld's PTAB powers of attorney alongside Brent N. Bumgardner and Robert A. Delafield II, and served as Flexiworld's signing attorney in the Lexmark IPRs (e.g., joint motion to terminate IPR2023-00846). Also a registered patent practitioner, so he handles both district-court and PTAB-side work.
3 Peter John Glennon Local counsel (W.D.N.Y.) The Glennon Law Firm, P.C., 160 Linden Oaks, Rochester, NY 14625 Sole signatory on the complaint's signature block for service and the attorney who filed the PHV motions (Dkt. 5, 6), the affidavit of service (Dkt. 9), and Flexiworld's answer to Xerox's counterclaim (Dkt. 23, Sept. 29, 2023). Albany Law J.D. 2005; former litigator at Nixon Peabody LLP; Best Lawyers in Commercial Litigation. His firm is a Rochester business/employment litigation boutique — this patent matter appears to have been a forum-admission/local-counsel engagement rather than a core practice area.

Docket support

  • Complaint signature block (filed June 29, 2023) lists exactly these three: "/s/ Peter J. Glennon, THE GLENNON LAW FIRM P.C., … TIMOTHY E. GROCHOCINSKI (admitted pro hac vice) … CHARLES AUSTIN GINNINGS (admitted pro hac vice), NELSON BUMGARDNER CONROY PC … COUNSEL FOR PLAINTIFF FLEXIWORLD TECHNOLOGIES, INC."
  • Dkt. 5 & 6 (July 13, 2023): PHV motions filed by Glennon for Ginnings and Grochocinski — terminated as defective July 14, 2023 (misspelling of Grochocinski's name).
  • Dkt. 7 & 8 (July 17, 2023): refiled PHV motions; Dkt. 10 (July 18, 2023, Hon. Elizabeth A. Wolford) granted pro hac vice admission to both Ginnings and Grochocinski.
  • Dkt. 23 (Sept. 29, 2023): Answer to Xerox's counterclaim filed by Glennon, confirming he remained the active W.D.N.Y. filer through the pretrial phase.
  • Related consolidated actions for pretrial purposes: 6:23-cv-06370, -06371, -06372, -06373 (Dkt. 22, Sept. 27–28, 2023).

Caveats / what is not on the record

  • No formal "lead counsel" designation exists on this docket. W.D.N.Y. dockets do not typically designate lead vs. of counsel. The role assignments above are inferred from the signature block, PHV sponsorship structure, and who actually filed documents. Calling Grochocinski "lead" is consistent with his own PTAB declaration describing him as Flexiworld's district-court lead counsel in parallel cases, but I would not represent it as a court-ordered designation.
  • No in-house counsel appeared. Flexiworld founder William Ho Chang signed PTAB powers of attorney as Flexiworld's representative, but he is not an attorney of record here and did not appear on this docket.
  • No additional Flexiworld attorneys appeared in this case. Brent N. Bumgardner, Robert A. Delafield II, and Taryn N. Trusty (all Nelson Bumgardner) appear for Flexiworld in other matters — PTAB proceedings and later-filed suits (e.g., Flexiworld v. Kyocera, N.D. Tex. 3:26-cv-02381; Flexiworld v. TCL, E.D. Tex. 2:26-cv-00229) — but none of them entered an appearance in 6:23-cv-06372. I found no notices of appearance, withdrawal, or substitution adding or removing plaintiff's counsel in this action.
  • Dismissal date: a secondary aggregator (PatSnap) reports the Rule 41(a)(1)(A)(ii) stipulated dismissal with prejudice as entered May 21, 2024, with each side bearing its own costs/fees. I could not confirm that date against the primary PACER docket (the Justia snapshot ends Aug. 3, 2023), and it should be treated as unverified — consistent with the existing case summary's note that exact dates are not confirmed.
  • A minor docketing artifact worth flagging: the cause of action is captioned on the docket as "35 U.S.C. § 145 Patent Infringement," which is a civil-action-against-the-Director provision and is functionally incorrect for this § 271 infringement suit; it appears to be a clerical code selection, not a substantive pleading choice.

Sources: Justia docket for 6:23-cv-06372 (https://dockets.justia.com/docket/new-york/nywdce/6:2023cv06372/[146322](/patent/146322)); Patexia litigation record for case 6:23-cv-06372 (https://services.patexia.com/lawsuits/Flexiworld-Technologies-Inc-v-Xerox-Corporation-id-[190494](/patent/190494)/documents); complaint PDF via TonerNews (https://tonernews.com/wp-content/uploads/2023/07/Flexiworld-Technologies-Inc.-v.-Xerox-Corporation-1-06-30-2023.pdf); PTAB IPR2021-00714 Ex. 2001, Grochocinski PHV declaration; Flexiworld PTAB powers of attorney and mandatory notices; The Glennon Law Firm attorney profile (https://www.glennonlawfirm.com/about-us/our-team/peter-j-glennon-esq-/).

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 of record for Xerox in this case.

Let me verify the individual defense attorneys and their firms.

Defense counsel of record — Xerox Corporation

Important scope note up front: this case (6:23-cv-06372) was one of four parallel Flexiworld complaints against Xerox filed the same day (6:23-cv-06370, -6371, -6372, -6373). Judge Wolford consolidated all four for pretrial purposes on 9/27–28/2023 (Dkt. 22), and referred them to Magistrate Judge Marian W. Payson. Defense counsel appeared on a common team across the four dockets, so some entries below are sourced from the sister dockets where the docket text is publicly indexed. Where a name comes only from a third‑party aggregator rather than the federal docket, I say so.

Confirmed from the federal docket

Attorney Role Firm / office Notes
Eric J. Ward Lead / local counsel of record Hodgson Russ LLP — Buffalo, N.Y. (Am Law 200, Upstate N.Y.-based) Filed the Notice of Appearance for Xerox (Dkt. 11, 8/2/2023) and the Corporate Disclosure Statement (Dkt. 13, 8/2/2023), and signed the stipulation extending time to answer (Dkt. 12, 8/2/2023) under the 8/3/2023 text order (Dkt. 14). The only defense attorney listed in the UniCourt docket extract for the related case 6:23-cv-06371. Recognized in Best Lawyers (2025) for Litigation – Intellectual Property and Commercial Litigation, and in Chambers USA 2025 for General Commercial Litigation (Upstate N.Y.).
James E. Quigley Pro hac vice (out-of-state counsel) Firm not confirmed in the docket text I could retrieve; the aggregator listing places him with the Xerox defense team alongside McKool Smith Docket entry (Sep. 19, 2023): "TEXT ORDER granting Motion for Pro Hac Vice as to James E. Quigley (ECF No. …)" (Patexia docket extract for 6:23-cv-06372). His admission motion itself is the best primary source for his firm affiliation — I could not open it before my search limit was reached.
Charles Austin Ginnings and Timothy Edward Grochocinski Plaintiff-side only — do not confuse Nelson Bumgardner Conroy P.C. Granted PHV on 7/18/2023 (Dkt. 10). Listed here only to prevent cross-attribution; these are Flexiworld's counsel, not Xerox's.

Named by a third‑party litigation aggregator, not yet verified against PACER

PatSnap's "full party and counsel information" tables for the Flexiworld v. Xerox matters list the following additional Xerox counsel and firms (all reproduced identically across its write-ups of cases -6370, -6371 and -6372):

  • Alexandra F. Easley — defendant counsel
  • Casey L. Shomaker — defendant counsel
  • Claire E. Wells — defendant counsel
  • David Sochia — defendant counsel
  • Eric J. Ward, James E. Quigley — as above

Firms attributed to Xerox: Hodgson Russ LLP (New York) and McKool Smith PC (Dallas/Austin, TX).

Caveat: PatSnap is an aggregator, and I was unable to independently confirm Easley, Shomaker, Wells, or Sochia on the W.D.N.Y. docket sheet, in a firm biography, or in a court opinion before reaching my research limit. I found no PACER-sourced filing signed by any of those four. Treat them as unverified and do not attribute them as "of record" without pulling the PHV motions/notices of appearance. The McKool Smith attribution is at least plausible on pattern: McKool Smith is a Texas IP boutique that has regularly represented Xerox (e.g., in Xerox Corp. v. X Corp., No. 2:20-cv-10754, where McKool Smith attorneys appear for Xerox), which is consistent with a Dallas/Austin-led team supported by Hodgson Russ as local counsel in W.D.N.Y.

Structural read

  • Local counsel: Eric J. Ward (Hodgson Russ, Buffalo) — the attorney who actually appeared first and remains the docket anchor.
  • Out-of-state/lead patent counsel: apparently McKool Smith, admitted pro hac vice (Quigley confirmed; the other three names unconfirmed).
  • In-house counsel: None identified. I found no Xerox legal-department attorney appearing of record in this docket. Say so explicitly rather than inferring one.
  • Sealed filings: Nothing on the public docket suggests sealed filings bearing on counsel identity; the dismissal was a public Rule 41(a)(1)(A)(ii) stipulation, and the answer/counterclaims (Dkt. 15) and Flexiworld's reply to counterclaims (Dkt. 23) were public.

What I could not confirm

  1. The firm and office for James E. Quigley — his PHV motion papers (the authoritative source) were not retrievable.
  2. Whether Easley, Shomaker, Wells, Sochia filed notices of appearance or PHV motions in -6372 specifically (vs. only in the sister cases). Because the four cases were consolidated for pretrial and the dockets cross-reference one another, aggregators frequently merge counsel lists across all four — so their inclusion may be an artifact of that consolidation.
  3. Any in-house Xerox attorney of record.

Recommended verification step: pull PACER dockets for 6:23-cv-06370 through -6373 and read Dkt. 11/13 in -6372 plus the PHV motions in all four cases; that will resolve the Quigley firm question and confirm or strike the four unverified names.