Freeny v. Konica Minolta Business Solutions USA Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Charles C. Freeny III, Bryan E. Freeny, and James P. Freeny (Texas)
  • Defendant: Konica Minolta Business Solutions USA, Inc. (New York)
  • Plaintiff’s Counsel: Banys, P.C.; Truelove Law Firm, PLLC
• Case Identification: 2:17-cv-00184, E.D. Tex., 03/09/2017
• Venue Allegations: Plaintiffs allege venue is proper in the Eastern District of Texas because the defendant has committed acts of patent infringement and continues to conduct business within the district.
• Core Dispute: Plaintiffs allege that Defendant’s multifunction printers infringe four patents related to wireless communication, device authorization, and integrated, multi-function machine systems.
• Technical Context: The technology concerns multifunction office equipment that integrates wireless connectivity, user authentication, and modular software functionality, which are central features in the modern market for networked office productivity and security devices.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.

Case Timeline

Date	Event
1998-12-31	Priority Date for ’977 and ’664 Patents
1999-09-02	Priority Date for ’443 and ’744 Patents
2002-12-03	U.S. Patent No. 6,490,443 Issued
2004-10-19	U.S. Patent No. 6,806,977 Issued
2006-09-19	U.S. Patent No. 7,110,744 Issued
2007-11-27	U.S. Patent No. 7,301,664 Issued
2017-03-09	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,490,443 - Communication and Proximity Authorization Systems

• Patent Identification: U.S. Patent No. 6,490,443, Communication and Proximity Authorization Systems, issued December 3, 2002.

The Invention Explained

• Problem Addressed: The patent seeks to solve inefficiencies arising from the proliferation of single-purpose devices and cards (e.g., access cards, keys, pagers, remote controls) used for various proximity-based services. It also addresses the cost of using high-power wireless services (e.g., cellular) for local communications. (’443 Patent, col. 2:35-48).
• The Patented Solution: The invention is a "proximity service unit" that acts as a universal, multi-protocol hub. It contains a "multiple channel wireless transceiver" capable of receiving signals of different types (e.g., Infrared, 900 MHz). A wireless device sends a "request authorization code" to the unit, which validates the code and then provides a predetermined service, such as access to a public payphone network, without incurring commercial "air time" charges. (’443 Patent, Abstract; col. 1:16-48).
• Technical Importance: The technology proposed a unified local communication hub to consolidate the fragmented landscape of proprietary, single-function proximity authorization systems prevalent at the time. (’443 Patent, col. 2:41-48).

Key Claims at a Glance

• The complaint asserts at least independent claim 1. (Compl. ¶27).
• Claim 1 requires:
  • A proximity service unit for providing a service for use with multiple types of wireless devices.
  • The unit comprises a multiple channel wireless transceiver capable of receiving at least two signal types.
  • The transceiver receives a request authorization code from a plurality of wireless devices.
  • A proximity unit validation assembly receives and validates the authorization codes.
  • A legacy activation unit receives a service authorization code and provides the predetermined service.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,110,744 - Communication and Proximity Authorization Systems

• Patent Identification: U.S. Patent No. 7,110,744, Communication and Proximity Authorization Systems, issued September 19, 2006.

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the ’443 patent, this patent addresses the same general problem of enabling communication between a diverse set of devices that are within proximity of each other. (Compl. ¶35).
• The Patented Solution: The complaint describes the invention as a "front end unit" that functions as an access point, allowing multiple end-user devices to connect simultaneously to a larger network (e.g., the Internet) through various wireless signals. (Compl. ¶35). This architecture is foundational to modern wireless access points.
• Technical Importance: The invention provides a system for multiple, disparate wireless devices to share a single point of access to a broader public communication network.

Key Claims at a Glance

• The complaint asserts at least independent claim 18. (Compl. ¶39).
• Claim 18 requires:
  • A communication unit connected to a public communication system.
  • The unit is capable of detecting a plurality of wireless devices and providing them with access to the public communication system when they are within a predetermined proximity.
  • The unit includes a multiple channel wireless transceiver that simultaneously communicates with at least two wireless devices using different types of low power communication signals.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,806,977 - Multiple Integrated Machine System

• Patent Identification: U.S. Patent No. 6,806,977, Multiple Integrated Machine System, issued October 19, 2004. (Compl. ¶46).

Technology Synopsis

The patent describes an all-in-one device that can perform the functions of multiple distinct digital machines, such as a printer, scanner, fax machine, and personal digital assistant (PDA). The system uses a modular design controlled by a "digital machine element grouping control unit" that combines hardware and software elements to form different machine functionalities as selected by the user. (Compl. ¶47).

Asserted Claims

At least independent claim 1. (Compl. ¶51).

Accused Features

The accused products' multifunction capabilities (copying, printing, scanning, faxing), networking functions, email capability, and PDA-like address book are alleged to infringe. The software that allows a user to select between these functions via the device's touchscreen is also targeted. (Compl. ¶53-55).

U.S. Patent No. 7,301,664 - Multiple Integrated Machine System

• Patent Identification: U.S. Patent No. 7,301,664, Multiple Integrated Machine System, issued November 27, 2007. (Compl. ¶58).

Technology Synopsis

Similar to the ’977 Patent, this invention describes a single, modular device that integrates the functions of multiple digital machines. The claims of this patent are directed to a "mobile" multiple integrated machine system capable of performing as at least a communication machine and a personal digital assistant. (Compl. ¶59, 64).

Asserted Claims

At least independent claim 1. (Compl. ¶63).

Accused Features

The complaint alleges that the accused printers are "mobile" and function as both a communication machine (through faxing and email) and a personal digital assistant (by storing contact information). The software interface on the LCD touchscreen used to switch between these roles is also accused. (Compl. ¶65-67).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the Konica Minolta bizhub 227, C227, C258, 287, C287, 308, C308, 367, C367, 368, and C368 multifunction printers ("the accused Konica products"). (Compl. ¶8).

Functionality and Market Context

The complaint alleges the accused products are multifunction devices that provide document copying, printing, scanning, and faxing services. (Compl. ¶8). They are capable of wireless communication, functioning as a Wireless LAN Access Point to connect with devices like smartphones and tablets using IEEE 802.11 b, g, and n protocols. (Compl. ¶9-10). A brochure excerpt included in the complaint depicts the printer as a base unit for direct wireless connections. (Compl. ¶9). The products also support wired Ethernet connections for LAN and Internet access. (Compl. ¶13). Security features are included, requiring user authentication via methods such as IC cards, NFC, or username/password to access device functions. (Compl. ¶11-12). The printers can connect to networked resources like cloud services and include an "Address Book" to store and organize contact information. (Compl. ¶16, 19). The complaint characterizes the products as "compact, lightweight printers" that can be "easily moved to different locations." (Compl. ¶20).

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,490,443 - Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A proximity service unit for providing at least one predetermined service for use with multiple types of wireless devices	The accused products are multifunction printers providing services like copying and printing for devices such as smartphones and laptops.	¶29	col. 1:16-21
the proximity service unit comprising: a multiple channel wireless transceiver capable of receiving at least two signal types	The accused products can receive multiple wireless signal types, such as IEEE 802.11 b, g, and n communications in the 2.4 GHz and 5.0 GHz frequency bands.	¶30	col. 6:49-55
the multiple channel wireless transceiver receiving a request authorization code from each of a plurality of respective wireless devices...and for providing at least one predetermined service for each wireless device providing the request authorization code	The accused products include a security feature that requires a wireless device to transmit a "request authorization code (such as device identification data, user name, and/or password)" to activate services.	¶30	col. 8:24-31

• Identified Points of Contention:
  • Scope Questions: A central question may be whether different Wi-Fi protocols (e.g., 802.11b, 802.11g, 802.11n) constitute "at least two signal types" as contemplated by the patent. The defense could argue these are variants of a single signal type (Wi-Fi), whereas the patent specification provides examples of distinct technologies like Infrared and 900 MHz RF.
  • Technical Questions: The analysis may turn on whether the accused product's standard user authentication system embodies the specific architecture of the claimed "proximity unit validation assembly" and "legacy activation unit," or if there is a functional and structural mismatch. The complaint provides an image of the "IC card authentication" feature, which may be central to this inquiry. (Compl. p. 5).

U.S. Patent No. 7,110,744 - Infringement Allegations

Claim Element (from Independent Claim 18)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a communication unit connected to a public communication system	The accused products can transmit data from connected wireless devices to the Internet.	¶41	col. 3:20-24
the communication unit capable of detecting a plurality of wireless devices and servicing each...by providing access to the public communication system when the wireless devices are within a predetermined proximity distance	The accused products detect and communicate with wireless devices like smartphones and tablets when they are within range of the printer's transceiver.	¶41	col. 4:3-10
the communication unit includes a multiple channel wireless transceiver simultaneously communicating with at least two wireless devices with different types of low power communication signals.	The accused products communicate with multiple devices using IEEE 802.11 b, g, and n signals, which the complaint alleges are different types of "low power communication signals."	¶42	col. 4:11-16

• Identified Points of Contention:
  • Scope Questions: The definition of "public communication system" will be a key issue; specifically, whether the general Internet, as alleged, falls within the scope of this term as used in the patent, which appears to arise from the context of public telephone networks.
  • Technical Questions: A factual dispute may arise over whether standard Wi-Fi signals (802.11 b/g/n) qualify as "low power communication signals" in the context of the patent, which distinguishes its invention from "high power wireless communication devices" like cellular phones. Further, the complaint's allegation that the system communicates simultaneously with devices using different signal types (by treating 802.11b/g/n as different types) will likely be contested.

V. Key Claim Terms for Construction

For the ’443 Patent

• The Term: "at least two signal types"
• Context and Importance: This term is critical because the infringement allegation relies on construing different Wi-Fi protocols (802.11b, 802.11g, 802.11n) as distinct "signal types." Practitioners may focus on this term because the defendant will likely argue that these protocols represent a single "type" of signal (i.e., IEEE 802.11 Wi-Fi), and that the patent envisioned fundamentally different technologies.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification lists "Infrared, 900 Mhz, 1.8 Ghz and one other FCC-approved signaling detection capability" as examples, which may suggest the list is exemplary, not exhaustive, and could encompass different protocols within a technology family. (’443 Patent, col. 1:29-32).
  • Evidence for a Narrower Interpretation: The specific examples provided in the patent—Infrared, 900 MHz, and 1.8 GHz—represent fundamentally different transmission media and frequency bands. This could support an interpretation that "signal type" refers to a basic technological class (e.g., infrared vs. radio frequency), not merely different data-rate protocols within the same Wi-Fi standard. (’443 Patent, col. 7:6-11).

For the ’744 Patent

• The Term: "low power communication signals"
• Context and Importance: The infringement theory depends on classifying standard Wi-Fi signals as "low power." (Compl. ¶42). Practitioners may focus on this term because the patent's background distinguishes the invention from "high power wireless communication devices and/or services, such as a cell phone." The defendant may argue that standard Wi-Fi, which is capable of significant range and power consumption, does not fit the "low power" context of the invention.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not provide an explicit definition for "low power," which could allow the term to be interpreted relative to higher-power technologies like cellular transmission.
  • Evidence for a Narrower Interpretation: The patent family describes the invention as an alternative to "high power wireless communication devices," designed for local proximity services to avoid airtime charges. (’443 Patent, col. 2:23-40). This context may suggest the patent contemplates technologies with inherently lower power and shorter range than standard Wi-Fi, such as Bluetooth or other personal area network protocols.

VI. Other Allegations

The complaint does not provide sufficient detail for analysis of indirect or willful infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of technological scope: can claim terms like "at least two signal types" and "low power communication signals," rooted in the patent's context of distinct 1990s-era technologies like Infrared and various radio bands, be construed to cover different protocols within the modern IEEE 802.11 Wi-Fi standard as alleged?
• A second central question will be one of system architecture: for the '977 and '664 patents, does the accused printers' software, which allows users to select functions from a touchscreen menu as depicted in the complaint (Compl. p. 10), meet the specific claim requirement of a "digital machine element grouping control unit" that dynamically combines hardware and software "elements" to form distinct "digital machines"?
• A key evidentiary question will be one of functional equivalence: does the accused products' general-purpose user login system perform the specific, multi-part functions required by the '443 patent's "proximity unit validation assembly" and "legacy activation unit," or is there a fundamental mismatch in technical operation and structure?