Flexiworld Technologies v. Xerox Corp.: Wireless Printing Patents Dismissed With Prejudice
Flexiworld Technologies sued Xerox Corporation in the Western District of New York asserting three wireless and network printing patents covering driverless printing, proximity-based wireless device detection, and over-the-air print services. The case ended after 327 days via stipulated dismissal with prejudice under Rule 41(a)(1)(A)(ii), with each party bearing its own costs.
Flexiworld’s Wireless Printing Assertions Against Xerox End in Bilateral Dismissal
On 29 June 2023, Flexiworld Technologies, Inc. filed suit against Xerox Corporation in the U.S. District Court for the Western District of New York. Flexiworld asserted three patents — US10481846B2, US10761791B2, and US10140073B2 — covering software and apparatus for printing over wireless networks, proximity-based wireless device detection, and printer-driver-free network printing services. The accused products and services fall within Xerox’s established portfolio of networked printing and document management solutions.
The case closed on 21 May 2024 via a joint stipulation of dismissal with prejudice under Federal Rule of Civil Procedure 41(a)(1)(A)(ii). Both parties agreed to dismiss all pending claims and counterclaims, including Flexiworld’s infringement claims and any counterclaims filed by Xerox. The dismissal with prejudice is legally significant: Flexiworld is permanently barred from re-filing the same claims against Xerox on these three patents. Critically, each party agreed to bear its own attorneys’ fees and costs, indicating no prevailing-party fee award.
Resolution in approximately 11 months, without a trial or published claim construction order, is consistent with a negotiated settlement reached after early case management but before significant merits litigation. The mutual cost-bearing arrangement and the bilateral dismissal of counterclaims suggest a negotiated resolution rather than a unilateral capitulation by either side. The specific commercial terms, if any, remain confidential and cannot be inferred from the public docket.
Filing to Dismissed with Prejudice in 327 days
327 days — resolved well inside the typical 2–4 year district court patent trial cycle
Dismissed with prejudice: what the stipulated dismissal means for both parties
Rule 41(a)(1)(A)(ii) dismissal permanently closes the case
A stipulated dismissal under Federal Rule of Civil Procedure 41(a)(1)(A)(ii) requires the signatures of all parties and is effective immediately upon filing. Crucially, the ‘with prejudice’ designation means the dismissal operates as an adjudication on the merits — Flexiworld cannot re-file these specific infringement claims against Xerox on US10481846B2, US10761791B2, or US10140073B2 in any federal court.
Permanent bar on re-filingFlexiworld forfeits the right to re-assert these patents against Xerox
The with-prejudice dismissal extinguishes Flexiworld’s litigation rights against Xerox on the three asserted patents. However, the patents themselves remain in force and can still be asserted against other defendants. The mutual cost-bearing clause prevents Xerox from seeking attorneys’ fees under 35 U.S.C. § 285, which would have required a finding of an ‘exceptional case’ — a notable protection for Flexiworld.
Patents survive; Xerox claims closedXerox secures permanent closure — but no public invalidity finding
Xerox achieves its primary objective: permanent dismissal of all Flexiworld infringement claims on these three patents. Any counterclaims Xerox may have filed — potentially including invalidity challenges — are also dismissed with prejudice, meaning Xerox cannot later seek a declaratory judgment of invalidity or non-infringement on these patents in a new action arising from the same dispute.
Claims and counterclaims closedUnresolved patent scope leaves market uncertainty for wireless printing sector
Because the case ended without a Markman ruling, invalidity determination, or infringement finding, the claims of US10481846B2, US10761791B2, and US10140073B2 remain unconstrued by a court. Other vendors in the wireless and driverless network printing space — including cloud print service providers and IoT device makers — should treat these patents as live enforcement risks. Flexiworld retains full freedom to assert them against third parties.
Live risk for wireless print vendorsFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Flexiworld Technologies, Inc. | Company | Wireless printing patent licensor — holder of US10481846B2, US10761791B2, and US10140073B2Search in Eureka ↗ |
| Defendant | Xerox, Corp. | Company | Xerox Corporation — global document technology company producing networked printers and print softwareSearch 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 stipulation’s explicit reference to Rule 41(a)(1)(A)(ii) and the ‘with prejudice’ designation confirms this is a court-operative dismissal, not merely an administrative closure. The bilateral scope — covering ‘all pending claims and counterclaims’ — is significant because it forecloses any future declaratory judgment action by Xerox on these patents arising from the same dispute. The mutual attorneys’ fees clause removes the predicate for a subsequent § 285 exceptional-case motion by either party, effectively insulating both sides from further cost exposure on this litigation.
US10481846B2, US10761791B2 & US10140073B2 — Wireless & Driverless Network Printing
The three patents-in-suit — US10481846B2, US10761791B2, and US10140073B2 — descend from application families filed in the US15/697247, US15/726899, and US15/627197 series respectively. Collectively, they address a core architectural problem in mobile and networked printing: enabling devices to locate, connect to, and print on networked printers without requiring users to install printer-specific drivers on client devices. The patents span wireless proximity detection, over-the-air print job routing, and software-layer print service infrastructure.
These patents sit at the intersection of mobile computing, IoT connectivity, and enterprise print infrastructure — a domain that has seen sustained commercial expansion with the growth of cloud print services and BYOD enterprise environments. Vendors offering driverless print solutions, AirPrint-compatible hardware, or mobile device management platforms with embedded print capabilities face potential exposure. The patents have not been construed or invalidated by any court, meaning their claim boundaries remain commercially uncertain and legally potent for third-party assertion.
Should you run an FTO against US10481846B2, US10761791B2, and US10140073B2?
Any R&D or product team building wireless printing features, driverless print infrastructure, proximity-based device pairing, or cloud/network print services should treat these three patents as priority FTO targets. The case’s with-prejudice dismissal without a merits ruling leaves the patents in full force. Hardware OEMs, SaaS print management vendors, and mobile OS teams integrating native print capabilities are all plausibly within the claim scope.
PatSnap Eureka’s FTO Search Agent can map the claim language of US10481846B2, US10761791B2, and US10140073B2 against your product architecture, identify prior art that may support invalidity arguments, and flag related continuations or family members that could extend enforcement risk. Running a structured FTO now — before a demand letter arrives — is materially cheaper than reactive litigation defence.
Run a freedom-to-operate analysis on US10481846B2 to assess your product’s exposure
Run FTO in Eureka →Similar Wireless Printing & Network Print Patent Cases in U.S. District Courts
Explore comparable patent infringement actions involving wireless, driverless, and network printing technology litigated in U.S. district courts, including W.D.N.Y. and related venues.
What this case signals for the wireless printing IP landscape
Three unconstrued wireless printing patents remain enforceable. The resolution pattern here is instructive for any vendor operating in networked or driverless print.
Driverless and wireless printing patents remain a live enforcement vector
The case’s resolution without any merits ruling means Flexiworld’s three patents have never been invalidated, construed, or found non-infringed by a court. Any company shipping products with driverless network printing or proximity-based wireless device pairing should conduct FTO analysis against US10481846B2, US10761791B2, and US10140073B2 before scaling deployment.
Mutual cost-bearing suggests a negotiated exit, not a unilateral surrender
The absence of a fee award and the bilateral dismissal of counterclaims is consistent with a structured settlement or cross-licensing agreement reached before significant merits rulings. This pattern — early filing, 11-month resolution, mutual cost-bearing — is a recognisable signature of NPE-defendant licensing negotiations concluding out of court.
Flexiworld v Xerox — key questions answered
A dismissal with prejudice under Rule 41(a)(1)(A)(ii) operates as a final adjudication on the merits. Flexiworld cannot re-file the same infringement claims against Xerox based on US10481846B2, US10761791B2, or US10140073B2. However, the patents remain valid and enforceable against other defendants — Xerox-specific claims are simply extinguished permanently.
Flexiworld asserted three patents: US10481846B2 (software and apparatus for wireless/over-the-air printing), US10761791B2 (wireless devices using proximity detection to connect with mobile information apparatus), and US10140073B2 (wireless printing devices providing network print services without requiring client-side printer-specific drivers). All three patents remain in force post-dismissal.
The mutual cost-bearing clause is a standard feature of negotiated patent settlements. It forecloses any subsequent motion for attorneys’ fees under 35 U.S.C. § 285, which requires a finding of an ‘exceptional case.’ By agreeing upfront that each side bears its own costs, both parties avoided the risk and expense of a fee-shifting motion, suggesting the resolution was commercially negotiated rather than litigated to a clear winner.
No. A stipulated dismissal with prejudice does not constitute a ruling on patent validity or infringement. The three patents — US10481846B2, US10761791B2, and US10140073B2 — were never construed or subjected to a published invalidity ruling in this case. They remain presumptively valid under 35 U.S.C. § 282 and can be asserted against other defendants in new litigation.
The accused products encompass Xerox’s software applications and information apparatus for printing over wireless networks or the internet, wireless devices capable of detecting and connecting to mobile information apparatus via proximity-based wireless technology, and wireless printing devices that deliver network printing services without requiring the client device to use a printer-specific driver. These descriptions map closely to Xerox’s networked and cloud-connected printer product lines.
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