Mikele Bicolli
Nov 3, 2023

PTAB Upholds Flexiworld's Wireless Content Transfer Patent After Challenge by Unified Patents

PTAB Litigation



Unified Patents, is an organization known for frequently challenging patents and boasting a membership of over 3,000 companies, sought to invalidate the patent claims of Flexiworld, arguing that they were too obvious given prior inventions. However, in a significant ruling, the PTAB upheld Flexiworld's patent claims, and in doing so, dismissed Flexiworld's request to amend them.

In a recent decision, the Patent Trial and Appeal Board (PTAB) has upheld a patent owned by Flexiworld Technologies Inc. that revolves around the wireless transfer of digital content. This particular patent had come under scrutiny due to a challenge by Unified Patents LLC and was a central point of contention in a legal battle involving Roku Inc recognized as Flexiworld Technologies, Inc. v. Roku, Inc., No. 6:21-cv-00767, filed in the Western District of Texas on July 27, 2021. The patent in question, granted in 2017, is focused on the wireless transfer of digital content, such as streaming from a smartphone to a television. Flexiworld accused Roku of infringing this patent, along with three others. Notably, this case was resolved through a settlement in 2022. 

One crucial element of Flexiworld's patent was its objective to streamline the process of pairing mobile devices with output devices, effectively eliminating the need for specific device drivers. Unified Patents presented arguments asserting that earlier inventions had already rendered Flexiworld's claims fairly obvious. To address various aspects of the proceeding, Unified submitted three declarations as expert testimony identified as Exs. 1003, 1017, and 1024. Additionally, Unified included a declaration by Kevin Jakel, Unified's founder and current CEO, to affirm Unified's status as the sole real party in interest. On the other hand, Flexiworld submitted three expert declarations, designated as Exs. 2010, 2042, and 2044. Furthermore, Flexiworld included a declaration by William Ho Chang, an inventor named in the '257 patent, which addresses issues related to conception and diligence (Ex. 2031).

The PTAB ultimately sided with Flexiworld, concluding that Unified Patents failed to demonstrate the unpatentability of claims 27 and 28 of the '257 patent under § 103, The PTAB panel that issued this decision was composed of Administrative Patent Judges Terrence W. McMillin, Christopher L. Ogden, and Brent M. Dougal. 

Flexiworld Technologies Inc. was legally represented by a team of skilled professionals from Nelson Bumgardner Albritton P.C., which included Brent Bumgardner, Charles Ginnings, and T. William Kennedy.