Flexiworld Technologies v. Xerox Corp. — Dismissed With Prejudice After 327 Days
Flexiworld Technologies asserted four patents covering wireless device discovery and output device connectivity against Xerox in the Western District of New York. The parties jointly stipulated to dismiss all claims and counterclaims with prejudice after 327 days, each bearing its own legal costs — a resolution that permanently closes the door on re-litigation of these specific claims.
Wireless connectivity patent dispute ends in bilateral walk-away
Flexiworld Technologies, Inc. filed suit against Xerox Corporation on 29 June 2023 in the U.S. District Court for the Western District of New York, asserting infringement of four patents: US10037178B2, US11096056B2, US10768871B2, and US10841798B2. The asserted patents collectively cover wireless device discovery, short-range wireless connectivity between information apparatus and output devices, and the reception of digital content by wireless output controllers — technologies central to modern networked printing and display ecosystems.
The case closed on 21 May 2024 via a stipulated dismissal filed under Federal Rule of Civil Procedure 41(a)(1)(A)(ii), with all claims and counterclaims dismissed with prejudice. Both parties agreed to bear their own costs, expenses, and attorneys’ fees. A dismissal with prejudice is a final adjudication on the merits under res judicata principles, meaning Flexiworld cannot re-file the same infringement claims against Xerox based on the same patents and accused products.
At 327 days, the case resolved faster than many fully litigated patent matters, suggesting the parties may have reached a confidential commercial understanding — though the public record is silent on any licensing terms or settlement consideration. The symmetric cost allocation and absence of any damages award or injunctive relief on the record are consistent with a negotiated resolution, though this cannot be confirmed from the docket alone. What drove Flexiworld to accept a with-prejudice dismissal — rather than a without-prejudice exit — remains undisclosed.
Filing to Dismissed with Prejudice in 327 days
327 days — slightly under the median 14-month district court patent case lifecycle
Dismissed with prejudice: what the stipulated exit means for both parties
Rule 41(a)(1)(A)(ii): stipulated dismissal with prejudice
A dismissal under FRCP 41(a)(1)(A)(ii) requires a signed stipulation from all parties. When filed with prejudice, it operates as a final judgment on the merits. Unlike a court-ordered dismissal, this is a bilateral agreement — neither party can claim an involuntary exit. The with-prejudice designation is the critical qualifier: it bars Flexiworld from re-asserting the same claims against Xerox based on these four patents and the accused products.
Final — no re-litigation permittedFlexiworld forfeits its right to re-sue Xerox on these patents
By agreeing to a with-prejudice dismissal, Flexiworld permanently surrenders its infringement claims against Xerox under US10037178B2, US11096056B2, US10768871B2, and US10841798B2. The patents themselves remain in force and can still be asserted against third parties — but Xerox is effectively immunised from future Flexiworld suits on the same accused conduct. This suggests either a confidential licence or a strategic decision that continued litigation was commercially unviable.
Patents survive — Xerox shieldedXerox exits with permanent protection and no cost liability
Xerox achieves a clean exit: all counterclaims are also dismissed with prejudice, and the each-side-bears-own-costs clause means no fee award flows to either party. Xerox avoids the risk of a damages judgment, injunction, or willfulness finding. The dismissal of Xerox’s counterclaims with prejudice is equally notable — it suggests Xerox chose not to press any invalidity or declaratory judgment claims it may have asserted, which may reflect confidence in a negotiated outcome.
No damages, no injunction, no feesWireless output IP remains live against the broader market
The resolution does not invalidate any of the four Flexiworld patents, which cover wireless device discovery and output device connectivity — a technology layer embedded across networked printers, smart displays, and IoT output devices. Other players in the document technology and wireless output market should note that Flexiworld’s portfolio survives this litigation intact. The case outcome is consistent with a licensing strategy targeting multiple defendants sequentially rather than litigating to judgment.
Portfolio enforcement risk remainsFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Flexiworld Technologies, Inc. | Company | Wireless connectivity patent licensing entity — holder of US10037178B2 and three related patentsSearch in Eureka ↗ |
| Defendant | Xerox, Corp. | Company | Xerox Corp. — global document technology and printing solutions companySearch in Eureka ↗ |
| Plaintiff counsel | Charles Austin Ginnings | Attorney | Counsel for Flexiworld Technologies, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Peter John Glennon | Attorney | Counsel for Flexiworld Technologies, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Timothy Edward Grochocinski | Attorney | Counsel for Flexiworld Technologies, Inc.Search in Eureka ↗ |
| Plaintiff law firm | Nelson Bumgardner Conroy PC | Law Firm | Representing Flexiworld Technologies, Inc.Search in Eureka ↗ |
| Plaintiff law firm | The Glennon Law Firm, PC | Law Firm | Representing Flexiworld Technologies, Inc.Search in Eureka ↗ |
| Defendant counsel | Alexandra F. Easley | Attorney | Counsel for Xerox, Corp.Search in Eureka ↗ |
| Defendant counsel | Casey L. Shomaker | Attorney | Counsel for Xerox, Corp.Search in Eureka ↗ |
| Defendant counsel | Claire E. Wells | Attorney | Counsel for Xerox, Corp.Search in Eureka ↗ |
| Defendant counsel | David Sochia | Attorney | Counsel for Xerox, Corp.Search in Eureka ↗ |
| Defendant counsel | Eric J. Ward | Attorney | Counsel for Xerox, Corp.Search in Eureka ↗ |
| Defendant counsel | James E. Quigley | Attorney | Counsel for Xerox, Corp.Search in Eureka ↗ |
| Defendant law firm | Hodgson Russ LLP | Law Firm | Representing Xerox, Corp.Search in Eureka ↗ |
| Defendant law firm | Mckool Smith, PC (TX) | Law Firm | Representing Xerox, Corp.Search in Eureka ↗ |
| Defendant law firm | McKool Smith PC | Law Firm | Representing Xerox, Corp.Search in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | New York Western District CourtSearch in Eureka ↗ |
Official order — verbatim text
The stipulated dismissal is notable for its bilateral and unconditional structure: every pending claim and counterclaim — including Xerox’s own assertions — is dismissed with prejudice in a single instrument. The each-party-bears-own-costs clause removes any fee-shifting dynamic, suggesting neither side sought to characterise the other as an exceptional case under 35 U.S.C. § 285. Under res judicata, the with-prejudice designation forecloses any future action by Flexiworld against Xerox grounded in the same patents and accused conduct, though the patents themselves remain enforceable against the wider market.
US10037178B2 — wireless device discovery and output connectivity patent portfolio
The four asserted patents — US10037178B2, US11096056B2, US10768871B2, and US10841798B2 — form a thematic cluster around wireless device discovery, short-range connectivity establishment, and the reception of digital content by output devices such as printers, televisions, and audio controllers. The applications were filed across a window from 2016 to 2018, capturing a generation of wireless connectivity protocols that underpin modern IoT and networked output ecosystems. The patents cover both client-side discovery logic and output-device-side reception and setup functionality.
The strategic significance of this portfolio lies in its breadth across the wireless output stack — from discovery initiation on an information apparatus through to content reception on the output device. This architecture is embedded in virtually every networked printer, wireless display adapter, and smart output controller on the market. Flexiworld’s willingness to assert all four patents simultaneously against a major OEM like Xerox suggests confidence in claim coverage, and the intact survival of the portfolio post-litigation makes it a material risk vector for any company commercialising wireless output or device discovery technology.
Should you run an FTO against US10037178B2 and the Flexiworld portfolio?
Any R&D team developing wireless output devices, networked printers, short-range device discovery software, or IoT output controllers should treat this portfolio as a live risk. All four Flexiworld patents survive this litigation without any judicial invalidity ruling or adverse claim construction. If your product wirelessly discovers output devices, establishes short-range connections, or receives digital content from a network service, at least one of these patents warrants direct FTO analysis before you ship or license.
PatSnap Eureka’s FTO Search Agent can map your product’s feature set against the claim language of all four Flexiworld patents simultaneously, identifying potential overlap and surfacing prior art that may support design-around or validity challenge strategies. Eureka’s portfolio view also surfaces continuation and divisional applications that may extend Flexiworld’s coverage beyond the four patents asserted here — critical intelligence for any product team in the wireless connectivity space.
Run a freedom-to-operate analysis on US10037178B2 to assess your product’s exposure
Run FTO in Eureka →Similar wireless device discovery patent cases in U.S. district courts
Explore comparable patent infringement actions involving wireless output device connectivity and device discovery technology litigated in U.S. district courts.
What this case signals for the wireless output device IP landscape
A with-prejudice exit with symmetric cost allocation is rarely random — here is what the resolution pattern suggests for patent risk in wireless connectivity.
With-prejudice dismissals often mask confidential licensing outcomes
When a patent plaintiff agrees to dismiss with prejudice rather than without, it typically signals something of value was exchanged — a licence, a covenant not to sue, or a cross-licence. The public record here is silent, but the structural choice of with-prejudice over without-prejudice is commercially significant. Companies operating in wireless output and device discovery should assess whether a Flexiworld licence is now in play for their products.
Four asserted patents signal a portfolio enforcement strategy
Flexiworld asserted four related patents spanning wireless discovery, output device setup, and digital content reception. This breadth suggests a portfolio licensing programme rather than a targeted product dispute. Businesses developing or selling wireless output controllers, smart printers, or short-range device discovery systems should map their exposure against all four patents — not just the lead assertion.
Flexiworld v Xerox — key questions answered
Flexiworld Technologies filed a patent infringement suit against Xerox in the Western District of New York on 29 June 2023, asserting four patents covering wireless device discovery and output device connectivity. The case was dismissed with prejudice on 21 May 2024 via a joint stipulation under FRCP 41(a)(1)(A)(ii), with each party bearing its own costs. The case lasted 327 days and produced no public damages award or claim construction order.
Flexiworld asserted four U.S. patents: US10037178B2, US11096056B2, US10768871B2, and US10841798B2. The patents collectively cover wireless discovery of output devices, short-range wireless connection establishment between information apparatus and output devices, digital content reception by wireless output controllers, and setup of wireless output devices to receive content from internet or local network services.
A dismissal with prejudice operates as a final judgment on the merits under res judicata, permanently barring Flexiworld from re-filing the same infringement claims against Xerox based on the four asserted patents and the accused products. The patents themselves are not invalidated and remain enforceable against other defendants. Xerox’s counterclaims were also dismissed with prejudice, closing the record without any validity or non-infringement ruling.
The public record does not disclose any settlement agreement or licence between the parties. The case was resolved via a stipulated dismissal with prejudice under FRCP 41(a)(1)(A)(ii), with symmetric cost allocation. This structure is consistent with a confidential commercial resolution, but no settlement consideration or licensing terms appear on the docket. The with-prejudice designation suggests something of value may have been exchanged, but this cannot be confirmed from the public record.
Yes. All four Flexiworld patents survive the litigation without any judicial invalidity finding, adverse claim construction, or limitation on their scope. Companies developing or selling wireless output devices, networked printers, smart display systems, or IoT output controllers that use device discovery protocols should assess their exposure. The absence of any public claim construction record means the claims retain their full pre-litigation scope and Flexiworld retains enforcement flexibility against third parties.
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