Freeny et al v. Fitbit, Inc.

The family of late inventor Charles C. Freeny, Jr. has begun fighting to stay in the Eastern District of Texas in the wake of venue challenges in nearly all of its active cases. The day that the US Supreme Court issued its decision in TC Heartland v. Kraft Foods Group Brands (2016-0341), defendant Oki Group (Oki Data) (a Delaware corporation) (2:17-cv-00186) filed a motion to dismiss the case against it due to improper venue, alleging that it does not “reside” in the Eastern District and that it does not have a “regular and established place of business” there. Plaintiffs Bryan E. Freeny, Charles C. Freeny III, and James P. Freeny responded by filing an amended complaint on May 31, alleging proper venue in the Eastern District because Oki allegedly committed “acts of infringement” and has “a regular and established place of business” there. The complaint further pleads that Oki’s contractual relationships with authorized dealers and service providers in the district make those entities Oki’s agents.

The three sons of late inventor Charles C. Freeny, Jr. have added seven new suits to their wireless hotspot campaign. Six of the latest complaints filed by Bryan E. Freeny, Charles C. Freeny III, and James P. Freeny allege infringement of four wireless communication patents (6,490,443; 6,806,977; 7,110,744; 7,301,664) through the provision of multi-function wireless printers made and sold by Brother (2:17-cv-00183), Konica Minolta (2:17-cv-00184), Lexmark (2:17-cv-00185), Oki Group (Oki Data) (2:17-cv-00186), Ricoh (2:17-cv-00187), and Xerox (2:17-cv-00188). Disney (2:17-cv-00155) is also accused of infringing the ‘443 patent alone through its MagicBand wireless wristbands, which are used for authenticating guests at Walt Disney World.

After a nearly two-year hiatus, three individual plaintiffs—Bryan E. Freeny, Charles C. Freeny III, and James P. Freeny—have resumed their wireless hotspot campaign, asserting a single patent (6,490,443) generally related to a method of authenticating a wireless device using authorization codes sent from the wireless device to a hotspot device. The sole named inventor for the ‘443 patent is Charles C. Freeny, Jr., the plaintiffs’ father, an electrical engineer who passed away in 2003. Defendants in this latest wave of litigation are AliphCom (2:16-cv-00674), Bose (2:16-cv-00668), Creative Technology (2:16-cv-00669), Fitbit (2:16-cv-00670), Garmin (2:16-cv-00671), GoPro (2:16-cv-00672), and Harman (2:16-cv-00673). The companies are accused of infringement through various types of devices (including fitness trackers, cameras, wireless speakers, and GPS navigators) that communicate wirelessly with other nearby devices using authentication codes.