Flexiworld Technologies v. Xerox: Wireless Printing Patent Case Dismissed With Prejudice
Flexiworld Technologies sued Xerox in the Western District of New York asserting three patents covering wireless and over-the-air printing technology. The case ended by mutual stipulation under Rule 41(a)(1)(A)(ii) after 327 days, with all claims and counterclaims dismissed with prejudice and each party absorbing its own legal costs.
Wireless printing patent dispute ends by mutual stipulation in under a year
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 (Case No. 6:23-cv-06370), asserting infringement of three patents: US10140071B2, US10873856B2, and US9036181B2. The asserted patents relate to wireless printing, printing over air, and wireless network-connected printing devices — including technology compatible with IEEE 802.11 and Bluetooth standards. The accused products encompass Xerox printers, printer controllers, and associated software and firmware supporting wireless or over-the-air printing.
The case closed on 21 May 2024 — 327 days after filing — via a joint stipulation of dismissal with prejudice pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii). All pending claims by Flexiworld against Xerox and all counterclaims by Xerox against Flexiworld were dismissed. Dismissal with prejudice means Flexiworld is permanently barred from re-asserting the same claims against Xerox on these patents. Each party was ordered to bear its own costs, expenses, and attorneys’ fees, a structure that typically suggests a negotiated resolution rather than a clear-cut win for either side.
The 327-day duration and the mutual cost-bearing arrangement are consistent with a confidential settlement reached before significant merits litigation — though the public record does not confirm this. Flexiworld has a history of asserting its wireless printing patent portfolio across multiple defendants, suggesting a licensing-focused enforcement strategy. What drove Xerox to agree to dismissal with prejudice — whether a licence, design-around, or other commercial arrangement — is not disclosed in the public record.
Filing to Dismissed with Prejudice in 327 days
327 days from filing to dismissal — typical for early stipulated resolution before trial
Dismissed with prejudice: what the joint stipulation means for both parties
Rule 41(a)(1)(A)(ii) stipulated dismissal — permanent closure
A dismissal under Federal Rule of Civil Procedure 41(a)(1)(A)(ii) requires the written consent of all parties. Because it is ‘with prejudice,’ the dismissal operates as a final adjudication on the merits for res judicata purposes — Flexiworld cannot refile these specific claims against Xerox on the same patents. This is a stronger termination than a voluntary dismissal without prejudice, which would have preserved Flexiworld’s right to refile.
Permanent bar on refilingFlexiworld permanently forecloses claims against Xerox
By agreeing to dismissal with prejudice, Flexiworld has extinguished its right to pursue Xerox again on US10140071B2, US10873856B2, and US9036181B2. This is a significant concession unless offset by a confidential licence or other commercial arrangement — the public record does not confirm which. The mutual cost-bearing term suggests Flexiworld did not extract a court-awarded remedy, though a private settlement payment remains possible.
Claims extinguished against XeroxXerox secures permanent protection from these three patents
Xerox emerges with all claims and counterclaims resolved without a damages award or injunction on the public record. The with-prejudice dismissal means Xerox faces no future litigation risk from Flexiworld on these patents for the accused wireless printing products. Xerox deployed a large defence team — including McKool Smith and Hodgson Russ — suggesting the company treated this as a material litigation risk worth investing in significantly.
No damages or injunction recordedWireless printing IP enforcement: settlement dynamics remain opaque
The outcome is consistent with Flexiworld’s broader patent assertion strategy across the wireless printing sector. Other printer manufacturers with IEEE 802.11 or Bluetooth-enabled products should note that the three patents remain active and enforceable against third parties — only Xerox is shielded by this dismissal. Companies operating wireless printing products should assess FTO exposure against the Flexiworld portfolio, particularly given its pattern of multi-defendant enforcement.
Patents remain live vs. third partiesFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Flexiworld Technologies, Inc. | Company | Wireless printing technology licensor — holder of US10140071B2, US10873856B2, and US9036181B2Search in Eureka ↗ |
| Defendant | Xerox, Corp. | Company | Xerox Corp. — multinational document technology company accused of wireless printing patent infringementSearch 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 language is precise and bilateral: all pending claims and counterclaims are extinguished with prejudice, and no cost allocation favours either party. The absence of any damages figure, injunction, or prevailing-party designation in the public record means no merits adjudication occurred. The Rule 41(a)(1)(A)(ii) mechanism requires both parties’ consent, which typically signals a negotiated resolution. The with-prejudice designation is the critical term — it prevents any future assertion by Flexiworld against Xerox on these three wireless printing patents.
US10140071B2, US10873856B2 & US9036181B2 — wireless and over-the-air printing technology
The three asserted patents — US10140071B2 (App. No. 15/332,432), US10873856B2 (App. No. 15/713,546), and US9036181B2 (App. No. 12/764,015) — form part of Flexiworld’s wireless printing portfolio. US9036181B2, with the earliest application number, anchors the family in foundational wireless printing architecture. The patents collectively cover systems and methods for printing digital content received via wireless communication, including compatibility with IEEE 802.11 (Wi-Fi) and Bluetooth standards — technologies now ubiquitous in commercial and consumer printing devices.
The strategic relevance of this portfolio extends well beyond Xerox. Any printer OEM, printer software vendor, or firmware developer whose products support wireless or over-the-air printing is potentially within the claim scope of one or more of these patents. Flexiworld’s willingness to assert all three patents simultaneously against a major defendant like Xerox suggests confidence in the portfolio’s breadth. The continuation structure across the three application numbers indicates Flexiworld has actively prosecuted and maintained claim coverage across successive filing generations.
Should you run an FTO against US10140071B2, US10873856B2, and US9036181B2?
Any company shipping printers, printer controllers, printer firmware, or software supporting wireless or over-the-air printing — particularly IEEE 802.11 or Bluetooth-enabled devices — should conduct a freedom-to-operate analysis against the Flexiworld portfolio. The Xerox dismissal does not extinguish third-party risk; these patents remain enforceable. Given Flexiworld’s pattern of multi-defendant enforcement, the risk is not theoretical.
PatSnap Eureka’s FTO Search Agent can map your wireless printing product’s technical features against the claim sets of US10140071B2, US10873856B2, and US9036181B2 — including prosecution history review and prior art identification. Eureka’s portfolio monitoring tools can also alert your team to new Flexiworld continuation filings or additional assertion activity before you receive a demand letter.
Run a freedom-to-operate analysis on US10140071B2 to assess your product’s exposure
Run FTO in Eureka →Similar wireless printing patent cases in U.S. district courts
Explore related patent infringement actions involving wireless printing, IEEE 802.11, and Bluetooth printing technology in U.S. district courts, including other Flexiworld assertions.
What this case signals for the wireless printing IP landscape
Flexiworld’s multi-patent assertion strategy and rapid resolution with Xerox carries clear signals for printer OEMs and wireless connectivity IP holders.
The Flexiworld portfolio remains a live enforcement risk for printer OEMs
The with-prejudice dismissal protects Xerox alone. US10140071B2, US10873856B2, and US9036181B2 remain enforceable against any third party. Printer manufacturers, firmware vendors, and software developers supporting IEEE 802.11 or Bluetooth printing should treat these patents as an active FTO concern and map their products against the asserted claims.
Mutual cost-bearing signals a negotiated exit — not a capitulation
When neither party wins a cost award in a with-prejudice dismissal, it typically suggests a commercial arrangement was reached. For competitors of Xerox, the key question is whether Xerox secured a licence — which could affect royalty benchmarks in any future Flexiworld assertion — or whether Xerox achieved a design-around that forecloses infringement claims.
Flexiworld v Xerox — key questions answered
The case was dismissed with prejudice by joint stipulation under FRCP 41(a)(1)(A)(ii) on 21 May 2024, approximately 327 days after filing. All claims by Flexiworld against Xerox and all counterclaims by Xerox were extinguished. Each party bore its own costs and attorneys’ fees. No damages award, injunction, or merits adjudication appears in the public record.
Flexiworld asserted three patents: US10140071B2 (App. No. 15/332,432), US10873856B2 (App. No. 15/713,546), and US9036181B2 (App. No. 12/764,015). All three relate to wireless printing and over-the-air printing technology, including compatibility with IEEE 802.11 and Bluetooth communication standards.
A with-prejudice dismissal under Rule 41(a)(1)(A)(ii) permanently bars Flexiworld from reasserting the same claims against Xerox on these three patents. It operates as a final adjudication for res judicata purposes. Flexiworld retains the right to enforce the patents against other defendants — only Xerox is protected by this stipulation.
No. The dismissal protects only Xerox. US10140071B2, US10873856B2, and US9036181B2 remain active and enforceable against any third party. Printer OEMs, firmware developers, and software vendors whose products support wireless or IEEE 802.11/Bluetooth printing should conduct independent FTO analysis against the Flexiworld portfolio.
The mutual cost-bearing arrangement — rather than a cost award to either party — is consistent with a negotiated resolution such as a confidential settlement or licence agreement. It suggests neither party achieved a clear litigation victory compelling a cost award. The specific commercial terms, if any, are not disclosed in the public record and can only be inferred from the structure of the stipulation.
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