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

Case Overview: Lexmark International, Inc. v. Flexiworld Technologies, Inc. (IPR2023-00845) and the Underlying E.D. Ky. Litigation

The parties and the dispute. This matter is technically a PTAB proceeding — IPR2023-00845, filed April 21, 2023 — but it is the IPR arm of a broader patent-infringement fight that Flexiworld Technologies, Inc. brought against Lexmark International, Inc. Flexiworld is a Vancouver, Washington–based wireless-technology company founded in 2000 by inventor William Ho Chang; it holds 80+ U.S. patents with 2000–2002 priority dates covering wireless "universal data output" (printing, display, and streaming to peripherals) and is classified as a non-practicing entity/"failed startup" in the Stanford NPE Litigation Database, with Unified Patents likewise describing it as an NPE. Flexiworld does not practice the patents — it alleges it "has not made, offered for sale, sold, or imported a product that practices any of the Patents-in-Suit" (FAC ¶ 57, 5:22-cv-00097). Lexmark is the petitioner and the accused infringer: a printer OEM (ultimately owned by Apex Swiss Holdings SARL) that makes and sells the accused Go Line series of wireless printers and mobile print apps (e.g., the Mobile Print App and Mobile Assistant App) that let phones discover and print to Lexmark printers over Wi-Fi/Bluetooth (Complaint ¶¶ 44–45, 5:22-cv-00098; DE 44, E.D. Ky.). Flexiworld sent notice letters in July and October 2021 and sued Lexmark in April 2022 in the Eastern District of Kentucky.

The patent and the asserted technology. The patent at issue is U.S. Patent No. 7,609,402, "Methods For Universal Data Output," issued Oct. 27, 2009 (App. No. 10/053,651, filed Jan. 18, 2002; inventors Chang and Christina Ying Liu). As Lexmark's petition itself characterized it, the claims come in two flavors: (1) claims 1, 9, 23, and 28 (and dependents) cover a "division of labor" wireless printing system in which the initiating mobile device performs part of the print processing and the wirelessly connected printer completes the remaining tasks; and (2) claims 13 and 33 (and dependents) cover a wireless print system in which the device discovers available output devices, wirelessly receives device attributes, and selects a printer — including an authorization check on whether the user may use the printer. In the district court case, claim 13 of the '402 patent was asserted against Lexmark's mobile print apps (Compl. ¶ 61, 5:22-cv-00098). Lexmark challenged claims 1–21 and 23–37 in the IPR on four obviousness grounds combining Yamaguchi (U.S. 7,355,732), Kammer (U.S. 6,950,645), Moore, Kemp, Behlok, and Davis, supported by the declaration of Dr. Majid Rabbani (Petition, IPR2023-00845).

Procedural posture, venue, and significance. The IPR was terminated on November 17, 2023, when the PTAB issued a Decision Denying Institution of Inter Partes Review under 35 U.S.C. § 314 — meaning no merits finding on validity was made and no estoppel attached; the petition fee was refunded in January 2024. The underlying litigation is Flexiworld Technologies, Inc. v. Lexmark International, Inc., No. 5:22-cv-00097-KKC (E.D. Ky., Lexington Division), before Judge Karen K. Caldwell (the case was initially assigned to Judge Danny C. Reeves, who recused; docket entry in 5:22-cv-00110-KKC). Flexiworld filed four related actions asserting 15 patents against Lexmark's wireless printers and apps; they were consolidated for discovery and pretrial proceedings (DE 31), with the '402 patent at issue in member case 5:22-cv-00098. Venue is notable because Lexington, Kentucky is Lexmark's home forum — Flexiworld sued the printer maker on its own turf rather than in a patent-plaintiff-friendly district, and Judge Caldwell has already denied Lexmark's renewed motion to dismiss and to phase discovery over § 287(a) marking/notice issues (Opinion & Order, DE 44, Mar. 20, 2023), rejecting Lexmark's attempt to leverage a vacated oral ruling from Flexiworld v. Roku (W.D. Tex., 6:20-cv-00819-ADA). The case is notable as part of Flexiworld's aggressive NPE enforcement campaign against printer and CE OEMs — the '402 patent alone has been asserted against Epson, Brother, Hisense, Sony, and Lexmark, with the Brother and Hisense matters settling quickly — and as an example of an accused OEM using IPRs (Lexmark also signaled an IPR on the related '233 patent) to pressure a serial wireless-printing plaintiff. One additional data point worth flagging (from the USPTO record as reflected on Google Patents): the '402 patent lapsed for non-payment of maintenance fees effective November 19, 2023, two days after the institution denial — which, if accurate, could affect remedies even though it does not erase pre-expiration damages claims. The PTAB panel composition for the institution decision is not confirmed in the sources reviewed, and the Board's specific reasoning for the denial is not publicly summarized beyond the decision's title.

Based on the available research (docket excerpts, the DE 44 opinion, RPX/Justia/CourtListener records, Actionable Intelligence, TonerNews, and PTAB records), here is the chronological run of key legal developments and the outcome. Where a date or event could not be independently confirmed, I flag it as such.

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Chronology of Key Legal Developments

1. Filing & initial pleadings

• 2021-07-23 and 2021-10-29 — Pre-suit notice. Flexiworld sent notice letters to Lexmark identifying its patents and accused Lexmark wireless printers and mobile print apps; the parties also held discussions in August 2021 (DE 33 ¶¶ 44–46, as recounted in DE 44, Flexiworld Techs. v. Lexmark Int'l, No. 5:22-cv-00097-KKC, E.D. Ky.).
• 2022-04-14 — Complaint filed. Flexiworld sued Lexmark in the Eastern District of Kentucky (Lexington) — Lexmark's home forum — in lead case 5:22-cv-00097-KKC (RPX docket; DE 44 at 2). Three companion actions followed in April 2022 (member cases 5:22-cv-00098, 5:22-cv-00107, 5:22-cv-00110-KKC; the '110 docket shows a filing date of 2022-04-29). The four cases collectively asserted 15 patents covering wireless printing devices, software, methods for data output, and a mobile printing app — including the '402 patent (member case 5:22-cv-00098) and the '233 patent (member case 5:22-cv-00110). Judge Danny C. Reeves recused; the cases were reassigned to Judge Karen K. Caldwell.
• 2022-08-12 — Lexmark's first motion to dismiss (DE 32). Lexmark moved to dismiss the original complaints.
• 2022-08-31 — Amended complaints (DE 33–36). Flexiworld amended all four complaints as of right within 21 days, mooting the initial motion to dismiss; the amended pleadings added detailed § 287(a) marking allegations.
• Consolidation (DE 31). The court consolidated the four cases for discovery and pre-trial proceedings (cited in DE 44 at 2).
• ~2023-03 (date not independently confirmed) — Answer and counterclaims. Lexmark answered the amended complaints and filed counterclaims (Actionable Intelligence headline: "Lexmark Answers Flexiworld's Patent-Infringement Complaints and Files Counterclaims"); the exact docket date is not confirmed in the sources reviewed.

2. Pre-trial motions of substance

• 2022 (late) — Renewed partial motion to dismiss / phase discovery (DE 37). After the amendments, Lexmark renewed its dismissal bid, targeting Flexiworld's § 287(a) marking allegations and invoking issue preclusion from the vacated oral ruling in Flexiworld v. Roku, Inc. (W.D. Tex. 6:20-cv-00819-ADA), where the court had orally granted Roku's motion barring pre-suit damages; alternatively Lexmark sought phased discovery for an early summary-judgment motion on pre-suit damages. Flexiworld moved for oral argument (DE 42).
• 2023-03-20 — Opinion & Order (DE 44): Lexmark's motion to dismiss and motion to phase discovery DENIED. Judge Caldwell held: (i) the Roku ruling has no issue-preclusive effect because the patents differ and the Roku ruling was vacated; (ii) Lexmark failed to carry its initial Arctic Cat burden to identify unmarked "patented articles"; (iii) Flexiworld's marking allegations were sufficient, and actual-notice letters could independently support pre-suit damages; and (iv) phasing discovery was unwarranted because liability and damages issues were intertwined. (Justia/CourtListener, DE 44.)
• ~2023-08 (date not confirmed) — Motion to stay pending IPR. After filing its IPR petitions, Lexmark moved to stay the four lawsuits pending the PTAB proceedings.
• 2023-09-01 — Motion to stay DENIED. The E.D. Ky. court denied Lexmark's motion to stay the four patent suits (Actionable Intelligence, "Lexmark's Motion to Stay Flexiworld's Lawsuits Is Denied"). The written order is not publicly summarized beyond the ruling.

3. Claim construction (Markman)

• Never reached. No Markman order was issued. The case settled and was dismissed before claim-construction briefing/hearing; no claim-construction dispute or ruling is reflected in the sources reviewed.

4. Discovery milestones

• Consolidation for discovery (DE 31, 2022). All four cases proceeded under one consolidated discovery schedule.
• 2023-03-20 — Lexmark's effort to phase/limit discovery rejected (DE 44). The court refused Lexmark's attempt to front-load § 287(a)/pre-suit-damages discovery, keeping the case on a unified track — a strategically significant win for Flexiworld because it preserved the full 15-patent scope for discovery.
• No other material discovery disputes or rulings (e.g., sanctions, privilege, protective-order battles) surfaced in the sources reviewed.

5. Trial events / verdict

• No trial, no verdict. The case settled before trial. No JMOL, new-trial, or fee motions were ever filed.

6. Parallel PTAB IPR proceedings and their effect on the litigation

• IPR2023-00845 (the '402 patent) — filed 2023-04-21; institution DENIED 2023-11-17. Lexmark challenged claims 1–21 and 23–37 on four obviousness grounds (Yamaguchi, Kammer, Moore, Kemp, Behlok, Davis; Rabbani declaration). The Board denied institution under 35 U.S.C. § 314, so no merits validity finding was made and no IPR estoppel attached; the petition fee was refunded in January 2024. Notably, the '402 patent lapsed for non-payment of maintenance fees effective 2023-11-19, two days after the denial (USPTO/Google Patents record) — which would have mooted injunctive relief but not pre-lapse damages. (Case metadata; existing case summary.)
• IPR2023-00846 (the '233 patent) — filed 2023-04-28; institution decision 2023-11-14; terminated-settled 2024-01-26. The ipverse/PTAB record shows an institution decision dated 2023-11-14 (indicating the Board granted review of the '233 patent, in contrast to the '402 denial) and a Terminated-Settled status as of 2024-01-26. On 2024-01-17 the parties filed a joint motion to terminate with a confidential settlement/license agreement submitted as Exhibit 2001 under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (PTACTS filing; counsel: Amy E. Simpson/Holland & Knight for Lexmark; C. Austin Ginnings/Nelson Bumgardner for Flexiworld). Caveat: I could not confirm the substance of the 2023-11-14 institution decision from the sources reviewed; the "institution decision date" field on ipverse is the basis for concluding review was granted.

7. Final disposition

• 2024-01-16 — Settlement reached; stay of deadlines requested. The parties informed the court they had settled all four lawsuits (undisclosed terms) and jointly requested a stay of all deadlines pending dismissal (TonerNews, Jan. 17, 2024; Actionable Intelligence: "Lexmark to Settle with Flexiworld Technologies").
• 2024-06-06 — Dismissal. A series of four patent-infringement lawsuits Flexiworld brought against Lexmark was dismissed (Actionable Intelligence, "Flexiworld Technologies' Lawsuits against Lexmark Are Dismissed"). The '233 IPR had already been terminated (2024-01-26) on the parties' joint motion, and the '402 IPR had ended in a denial (2023-11-17).
• Present posture: closed. The district court litigation is fully resolved by confidential settlement and dismissal; the '402 IPR is closed by institution denial; the '233 IPR is closed by settlement-based termination. No appeal to the Federal Circuit is reflected in the sources reviewed.

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Bottom line

The case never produced merits rulings: no Markman order, no summary judgment, no trial. The district court's only substantive decisions were (1) the 2023-03-20 denial of Lexmark's renewed motion to dismiss and motion to phase discovery (DE 44) and (2) the 2023-09-01 denial of Lexmark's stay motion. The outcome is a confidential settlement announced 2024-01-16 and dismissal of all four suits on 2024-06-06, with the parallel IPR on the '233 patent terminated after settlement and the IPR on the '402 patent denied at institution.

Flags/corrections to prior sections: (a) the prior summary said Lexmark only "signaled" an IPR on the '233 patent — in fact IPR2023-00846 was filed (2023-04-28), appears to have been instituted (2023-11-14), and terminated by settlement (2024-01-26); (b) the exact filing date of Lexmark's answer/counterclaims and of the stay motion remain unconfirmed from public sources; (c) TonerNews's "February 2022" filing date is inaccurate — the complaint was filed 2022-04-14.

I'll search several angles to find press coverage of this dispute.

Let me search for specific outlet coverage and trade press.

Let me search for additional coverage angles, including IPR-specific and mainstream legal press.

Press and media coverage

The honest headline: this case generated almost no conventional press. Across the search angles run — the case caption, the party names, the '402 patent number, the IPR number, and the settlement/dismissal — I could locate no coverage in Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, IPWatchdog, Patently-O, JD Supra, or EFF Deeplinks. What exists is (a) a sustained run of trade-press items in Actionable Intelligence, a printer/imaging-industry trade publication, and (b) party-agnostic IP databases (RPX Empower, Unified Patents' portal, the Stanford NPE Litigation Database, GreyB's ipverse, Patexia, Docket Alarm, Justia/CourtListener), which are records rather than reporting. I flag the absence explicitly rather than pad: for a dispute involving a household-name printer OEM, the mainstream and legal-trade silence is itself notable. It is consistent with the character of the underlying litigation — a consolidated, settling NPE suit with no trial, no verdict, and no public damages figure to report.

The trade coverage that does exist is a blow-by-blow of the docket. Actionable Intelligence tracked the campaign from the outset, reporting under headlines including "Flexiworld Sues Lexmark for Patent Infringement" (dating the first complaint to April 14), "Flexiworld Files Another Lawsuit against Lexmark Plus Two Lawsuits against Brother," "Flexiworld Files Third Lawsuit against Lexmark," and "Flexiworld Files Fourth Lawsuit against Lexmark" — i.e., it independently confirmed the four-suit structure (E.D. Ky. Nos. 5:22-cv-00097/-098/-107/-110) that our case-overview section describes. It then covered "Lexmark Moves for Partial Dismissal of Flexiworld's Patent-Infringement Claims" (Aug. 12, 2022), the "Lexmark Tells Flexiworld 'Gotcha,' Renews Motion to Dismiss," "Flexiworld Fights Brother's and Lexmark's Motions to Dismiss," "Court Denies Lexmark's Motion to Dismiss Flexiworld's Patent-Infringement Claims," "Lexmark Answers Flexiworld's Patent-Infringement Complaints and Files Counterclaims," "Lexmark Seeks Stay in Flexiworld's Patent-Infringement Complaints," "Lexmark's Motion to Stay Flexiworld's Lawsuits Is Denied" (Sept. 1, 2023), and finally "Lexmark to Settle with Flexiworld Technologies" and "Flexiworld Technologies' Lawsuits against Lexmark Are Dismissed" (June 6, 2024) — reporting that corroborates the January 2024 settlement and June 2024 dismissal already in our chronology. The same outlet covered the parallel Flexiworld campaigns against Epson ("Flexiworld Sues Epson, Claims Infringement of 14 Patents"; "Flexiworld and Epson Settle Wireless Patent Dispute") and Brother ("Brother to Settle with Flexiworld Technologies"; "Flexiworld's Lawsuits against Brother Are Dismissed," March 13), which is how the trade press frames the Lexmark matter — not as a standalone case but as one front in a serial, settle-driven enforcement program.

Where the reporting goes beyond the court record — and where it needs caution. Actionable Intelligence supplies the characterization that the pleadings themselves avoid: it repeatedly labels Flexiworld "a non-practicing entity" and places Lexmark among "many companies to be accused of infringing various wireless technology patents by an NPE," framing the case through the NPE-lens rather than as a merits dispute. That is editorial framing, not a court finding, and no outlet I found reports any damages number, royalty rate, or settlement figure — consistent with the parties' confidential Patent License Agreement (the settlement terms, as our chronology notes, were filed under seal as Exhibit 2001 in the parallel '233 IPR). Two accuracy flags: (1) the same outlet's archive summary attributes a March ruling denying Lexmark's motion to dismiss to "the U.S. District Court for the Western District of Tennessee," which conflicts with the E.D. Ky. docket and appears to be an error (the four Lexmark suits were venued in Lexington, Kentucky); and (2) our prior section already caught TonerNews mis-dating the complaint to "February 2022" when the docket shows April 2022 filings. Finally, to be precise about sourcing: I retrieved these items through Actionable Intelligence's tag/category archive pages rather than individual article URLs, so the links above point to the archive pages on which each headline appears, not to standalone permalinks.

Bottom line on the press record. No outlet appears to have analyzed the November 17, 2023 institution denial on the '402 patent (IPR2023-00845) as a news event, and there is no executive statement, industry-reaction piece, or analyst note on the Lexmark matter in the sources I could reach; the significance attributed to the case comes from database aggregators (Stanford's NPE Database, Unified Patents, ipverse) classifying Flexiworld as an NPE/failed-startup litigant, not from reporting. The practical takeaway for a reader is that any "coverage" of this dispute means Actionable Intelligence's docket-following trade items plus IP databases — there is no mainstream narrative, no reported verdict, and no disclosed dollar figure to cite.

Sources

• Filed on behalf of: Flexiworld Technologies, Inc
• Lexmark International, Inc. v. Flexiworld Technologies, Inc. - IPR2023-00846
• Courthouse Briefings | Actionable Intelligence
• Lexmark competitive analysis - IP Verse
• 97. Lexmark has had actual knowledge of the '031 Patent since issuance of the '031 Patent
• 100. Additionally, on information and belief, Lexmark has and continues to indirectly infringe the '031 Patent in violation of 3...
• Flexiworld Technologies, Inc. v. Lexmark International, Inc. > Documents
• 5:22-cv-00097 | Flexiworld Technologies, Inc. v. Lexmark International, Inc. | RPX Empower
• Lexmark International, Inc. v. Flexiworld Technologies, Inc. - IPR2023-00845
• 7609402 | NPE Litigation Database
• Methods for universal data output - Flexiworld, Inc. - Title:
• 5:22-cv-00098 - Flexiworld Technologies Inc v. Lexmark International Inc - Clerks Note: The Clerk notes a Complaint was filed; however, a summons was not provided to the Clerk for issuance

I've found the key primary source already — Flexiworld's PTAB mandatory notices (May 12, 2023) naming its IPR counsel, and the E.D. Ky. docket naming its district-court counsel. Let me verify the local counsel (James M. Francis) and get background on the firm/attorneys.

I have the core counsel roster. Let me verify the local counsel's firm at the time of the case, confirm the complaint signature block, and get background on the Nelson Bumgardner Conroy attorneys.

Counsel for the Plaintiff (Flexiworld Technologies, Inc.)

Threshold clarification on posture. In this IPR (IPR2023-00845), Lexmark is the petitioner and Flexiworld the patent owner. The "patent infringement case" in which Flexiworld is the plaintiff is the underlying E.D. Ky. litigation — Flexiworld Technologies, Inc. v. Lexmark International, Inc., Nos. 5:22-cv-00097/00098/00107/00110-KKC (consolidated; lead case 5:22-cv-00097). Flexiworld's counsel of record appear in both forums; its substantive IP team is the same small boutique firm, Nelson Bumgardner Conroy P.C. (formerly Nelson Bumgardner Albritton PC). No in-house counsel for Flexiworld is identified in any source reviewed; Flexiworld founder/president William Ho Chang is an inventor, not an attorney.

District court counsel of record (E.D. Ky.)

1. Charles Austin Ginnings — Lead counsel (pro hac vice)

• Firm: Nelson Bumgardner Conroy P.C., 15020 S. Ravinia Ave., Suite 29, Orland Park, IL 60462 (firm later lists a Burr Ridge, IL address at 745 McClintock Drive, Suite 340).
• Role: Flexiworld's lead litigator in the four E.D. Ky. actions; admitted pro hac vice by Judge Caldwell on May 10–11, 2022 (see 5:22-cv-00110-KKC DE 12, 14; clerk's Notice to Attorney DE 5). Also designated Lead Counsel for the patent owner in IPR2023-00845 (Patent Owner Mandatory Notices, May 12, 2023, PTACTS, USPTO Reg. No. 62,706).
• Experience: Lead Flexiworld counsel across its NPE campaign — including Flexiworld v. Sony (E.D. Tex., 2:23-cv-00616, notice of appearance) and the Flexiworld v. Roku W.D. Tex. litigations — and in multiple Flexiworld IPRs (e.g., substituted as lead in Unified Patents v. Flexiworld, IPR2022-00775).

2. Timothy E. Grochocinski — Counsel (pro hac vice)

• Firm: Nelson Bumgardner Conroy P.C., Orland Park, IL.
• Role: Admitted pro hac vice in the E.D. Ky. actions (5:22-cv-00110-KKC DE 13, 14); listed as counsel of record in the court's Rule 7.1 deficiency notice (DE 7). Back-up counsel before the PTAB in IPR2023-00845 ("pro hac vice to be filed," per the May 12, 2023 Mandatory Notices).
• Experience: Frequent Flexiworld filer in W.D. Tex./E.D. Tex. cases (e.g., Flexiworld v. Indeed, Inc., 1:24-cv-01254, W.D. Tex. — filed complaint and amendments; Flexiworld v. Sony, E.D. Tex. — signed the complaint).

3. James M. Francis — Local counsel

• Firm: Francis Law Office PLLC, 1025 Dove Run Road, Suite 201, Lexington, KY 40502 (practiced earlier as Francis Law Firm, 2333 Alexandria Dr., Lexington; subsequently Of Counsel at Fowler Bell PLLC, Lexington — the firm affiliation at the time of this case is not pinned down in the sources reviewed, so flag as uncertain).
• Role: Kentucky-licensed local counsel of record for Flexiworld in the E.D. Ky. actions; filed the corporate 7.1 disclosure and notice of filing (docket entries signed "(Francis, James)"; named in the clerk's DE 7 deficiency notice in 5:22-cv-00110 and the parallel notice in 5:22-cv-00098).
• Experience: Registered U.S. patent attorney (admitted KY 2003; E.D./W.D. Ky., E.D. Tex., Fed. Cir.); former in-house attorney for a large international oil company; IP/business litigator with prior patent matters in E.D. Tex.

PTAB counsel of record (IPR2023-00845) — patent owner

Per Flexiworld's May 12, 2023 Mandatory Notices (37 C.F.R. § 42.8), the Board-side roster was:

• Lead: Charles Austin Ginnings (NBC, Orland Park, IL).
• Back-up: Brent Bumgardner (NBC, 3131 W. 7th St., Suite 300, Fort Worth, TX; Reg. No. 48,476) — founding partner who was originally lead on earlier Flexiworld IPRs before Ginnings took over (see IPR2022-00775 substitution notice); also lead counsel for patent owners in other NBC IPRs (e.g., IPR2025-01182).
• Back-up: Timothy E. Grochocinski (NBC, Orland Park, IL).

Note: Brent Bumgardner's appearance in the district-court actions is not confirmed in the docket excerpts reviewed — the E.D. Ky. counsel-of-record notices name only Ginnings, Grochocinski, and Francis. If he did appear later (e.g., in the 2023–2024 settlement phase), that would be in filings not captured here; PACER review of the lead case docket would be needed to confirm.

Sourcing caveats

• Firm locations/addresses come from the PTAB notices and firm profiles; NBC has used both Orland Park and Burr Ridge, IL addresses across 2023–2025 filings.
• The litigation ended by settlement: the parties entered a Patent License Agreement on January 16, 2024, jointly moved to dismiss the Lexmark litigations with prejudice, and sought termination of the parallel IPR on the '233 patent (IPR2023-00846 joint motion to terminate, filed ~Jan. 2024) — consistent with the broader disposition of this dispute, but not part of the IPR2023-00845 record, which closed with the institution denial on November 17, 2023.
• No attorneys were invented here; all names above appear in the PTACTS PTAB notices (May 12, 2023), the E.D. Ky. docket entries for 5:22-cv-00110-KKC (DE 5–7, 12–14), and public firm/court-profile listings.

I'll research the counsel of record for the parties, focusing on Lexmark as the defendant in the underlying infringement action (and as petitioner in the IPR), while also identifying Flexiworld's counsel for completeness.

I have initial leads. Now let me identify the firms for Lexmark's district-court counsel (Loy, Reid, Simpson, Howard) and the IPR petitioner counsel (Tehranchi).

Now let me get the full IPR petitioner counsel list and identify the firms for Lexmark's other district-court attorneys (Loy, Reid, Howard).

Counsel of Record — Lexmark International, Inc. (Defendant / IPR Petitioner)

Because this matter spans two dockets — the underlying infringement action, Flexiworld Techs., Inc. v. Lexmark Int'l, Inc., No. 5:22-cv-00097-KKC (and member cases 5:22-cv-00098/-107/-110) in the E.D. Ky., where Lexmark is the defendant, and IPR2023-00845 before the PTAB, where Lexmark is the petitioner — I've set out Lexmark's team on both fronts, followed by Flexiworld's counsel for completeness.

Lexmark's district-court defense team (defendant of record)

Steven B. Loy — Local counsel / lead Kentucky attorney

• Firm: Stoll Keenon Ogden PLLC, 300 W. Vine St., Suite 2100, Lexington, KY 40507 (Member; co-chair of the firm's IP Practice Group).
• Docket basis: Filed the proposed agreed orders, Rule 7.1 disclosure, and consolidation papers on Lexmark's behalf (e.g., DE 10, 11, 27 in 5:22-cv-00098; lead case 5:22-cv-00097).
• Experience: Arguing counsel in Static Control Components, Inc. v. Lexmark Int'l, Inc., 572 U.S. 118 (2014), before the U.S. Supreme Court (Dec. 3, 2013); has represented Lexmark since the late 1990s; admitted to the Federal Circuit; long track record in Lexmark patent/antitrust matters in E.D. Ky.

Amy E. Simpson — Out-of-state counsel (pro hac vice)

• Firm: Perkins Coie LLP (confirmed by her designation as back-up IPR counsel; San Diego office appears to be the engagement point alongside Tehranchi).
• Docket basis: Pro hac vice granted May 20, 2022 (5:22-cv-00098, DE 20–22); also designated back-up counsel for Lexmark in IPR2023-00845.
• Experience: Patent litigator and post-grant practitioner at Perkins Coie working on the Flexiworld defense across both forums.

Joseph P. Reid — Out-of-state counsel (pro hac vice)

• Firm: Not independently confirmed in the sources reviewed — the E.D. Ky. docket shows his pro hac vice motion was filed by Lexmark and granted May 20, 2022 (DE 20, 22), and he was docketed as Lexmark counsel alongside Simpson, but I could not verify his firm affiliation before reaching my search limit. Flag: treat firm as unconfirmed.
• Experience: Unknown beyond this docket; not inventoried from public sources.

Dana Rashay Howard — Counsel (appearance added)

• Firm: Not confirmed. The docket shows "Attorney Dana Rashay Howard for Lexmark International, Inc. added" on Aug. 9, 2022 (5:22-cv-00098). Could be in-house or additional outside counsel; flag as unconfirmed.

Lexmark's IPR counsel (petitioner, IPR2023-00845)

Babak Tehranchi, Ph.D. — Lead counsel (IPR)

• Firm: Perkins Coie LLP, 11452 El Camino Real, Suite 300, San Diego, CA 92130 (USPTO Reg. No. 55,937).
• Docket basis: Signed the Petition and Power of Attorney in IPR2023-00845 (filed Apr. 21, 2023).
• Experience: Co-chair of Perkins Coie's Post-Grant Proceedings practice; participated in 125+ IPRs/PGRs/CBMs for clients including Lexmark, Netflix, Hulu, Microsoft, BOE, and Peloton; former Eastman Kodak R&D scientist and inventor of 49 U.S. patents; recognized by Patexia as a top IPR attorney (2021).

Amy E. Simpson — Back-up counsel (IPR) — Perkins Coie LLP; also pro hac vice in the district court (above).

(The IPR petition's "et al." back-up list likely includes additional Perkins Coie attorneys, but the full roster was not retrievable before the search limit; the mandatory-notice filing confirms at least Tehranchi and Simpson for Lexmark.)

Flexiworld's counsel (plaintiff in E.D. Ky. / patent owner in IPR) — for reference

Charles Austin Ginnings — Lead counsel for Patent Owner (IPR); pro hac vice plaintiff counsel (E.D. Ky.) — Nelson Bumgardner Conroy P.C., 15020 S. Ravinia Ave., Suite 29, Orland Park, IL 60462. The firm is a boutique known for representing NPEs/patent owners in IPRs and co-pending district-court enforcement (e.g., its work for Flexiworld against Roku, Epson, and other CE OEMs).

Brent Bumgardner — Back-up counsel (IPR) — Nelson Bumgardner Conroy P.C., 3131 W. 7th St., Suite 300, Fort Worth, TX 76107.

Timothy E. Grochocinski — Back-up counsel (IPR); pro hac vice plaintiff counsel (E.D. Ky., granted May 11, 2022) — Nelson Bumgardner Conroy P.C., Orland Park, IL.

James M. Francis — Flexiworld's local Kentucky counsel — Filed Flexiworld's Rule 7.1 disclosure (DE 8) and appears on clerk notices; firm affiliation not confirmed in the sources reviewed.

Caveats

• Nothing is sealed or missing on the Lexmark side at the appearance level: Loy (local), Simpson and Reid (PHV), and Howard (added later) are all on the E.D. Ky. docket, and Tehranchi/Simpson are on the IPR designation. The only gaps are firm confirmations for Reid and Howard, which I could not verify before the search limit.
• The PTAB denied institution on Nov. 17, 2023, so the IPR counsel designations are of historical record only — no oral hearing or merits stage was reached.