DCT

6:23-cv-00471

Ortiz & Associates Consulting LLC v. Konica Minolta Business Solutions USA Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:23-cv-00471, W.D. Tex., 06/27/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains a regular and established place of business in Austin, Texas, and has committed the alleged acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s systems and servers for secure network communication infringe a patent related to methods for brokering data between a wireless device and a data rendering device, such as a networked printer.
  • Technical Context: The technology addresses secure remote printing and content display, allowing a user of a mobile device to locate and send a job to a networked output device (e.g., a printer or monitor) for authenticated rendering.
  • Key Procedural History: The complaint alleges that Defendant has had knowledge of the patent-in-suit since at least November 12, 2021, the filing date of a prior lawsuit, which may form the basis for allegations of willful infringement.

Case Timeline

Date Event
2000-06-27 '285 Patent Priority Date
2017-01-17 '285 Patent Issue Date
2021-11-12 Filing date of prior lawsuit cited in complaint
2023-06-27 Complaint Filing Date

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

*U.S. Patent No. 9,549,285, "Systems, Methods and Apparatuses for Brokering Data Between Wireless Devices, Servers and Data Rendering Devices", issued January 17, 2017*

The Invention Explained

  • Problem Addressed: At the time of the invention's priority date (June 2000), users of handheld wireless devices faced significant challenges in rendering data, such as documents or images, on external devices like printers or large displays. The available solutions were described as "severely limited, or practically nonexistent," confining users to small device screens and inconvenient methods for data output. (’285 Patent, col. 4:39-48).
  • The Patented Solution: The patent describes a system architecture that allows a wireless device (WD) to securely print or display data on a separate, networked "Data Rendering Device" (DRD), such as a printer or projector. (’285 Patent, Abstract). A central server manages the process: the WD requests the server to send specific data to a selected DRD, and the user may be required to enter a passcode at the DRD itself to authorize the final rendering, ensuring the user is physically present to retrieve the output. (’285 Patent, col. 12:1-8; Fig. 10).
  • Technical Importance: This system provides a method for secure, on-demand "pull printing" from mobile devices, addressing the need for both portability and secure data handling in environments with shared, networked resources. (’285 Patent, col. 4:49-54).

Key Claims at a Glance

  • The complaint asserts infringement of claims 1-13. The lead independent claims appear to be 1 and 5.
  • Independent Claim 1 recites a system comprising:
    • A "server" in communication with at least one "Data Rendering Device (DRD)".
    • The DRD includes a "user interface for receiving passcodes" and is registered with the server.
    • The DRD is for rendering data at the request of a "wireless device (WD)" in response to a "passcode" entered at the DRD's user interface.
    • A "memory in said server" for securely storing the data and the associated passcode.
    • The server is configured to send the data to the DRD for rendering only after a matching passcode is entered at the DRD.
  • Independent Claim 5 adds a "locator" function, further requiring the system to have:
    • A server configured to "enable said DRD to be selected through a wireless communications network by the WD from more than one DRD registered with said server".
  • The complaint reserves the right to assert other claims, including dependent claims. (Compl. ¶8).

III. The Accused Instrumentality

Product Identification

The complaint does not identify specific accused products or services by name. It broadly accuses "systems and servers" that Defendant "maintained, operated, and administered." (Compl. ¶8). It also refers to Defendant's "products and services (e.g., systems for establishing secure communication over a public network)." (Compl. ¶11).

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the accused instrumentality's specific functionality or market position. It alleges in a conclusory manner that the accused systems perform the methods claimed in the ’285 Patent. (Compl. ¶8).

IV. Analysis of Infringement Allegations

The complaint states that a preliminary claim chart is attached as Exhibit B; however, this exhibit was not included with the filed complaint. (Compl. ¶9). As a result, the specific mapping of accused functionality to claim elements is not available for analysis. The infringement theory must be inferred from the general allegations.

No probative visual evidence provided in complaint.

Identified Points of Contention

  • Evidentiary Questions: The lack of specificity in the complaint raises a primary factual question: do Defendant's accused systems for "secure communication" actually operate according to the claimed architecture? Discovery will be required to determine if they utilize a "server" to broker data between a "wireless device" and a "Data Rendering Device" in response to a "passcode" entered at the DRD, as recited in the claims.
  • Scope Questions: A potential dispute may arise over the definition of "Data Rendering Device (DRD)." The patent provides examples such as printers and projectors. (’285 Patent, col. 5:25-28). The parties may dispute whether Konica Minolta's multifunction devices, which combine printing, scanning, and other features, meet the specific functional limitations of a "DRD" as claimed.
  • Technical Questions: A key technical question will concern the "passcode" limitation. What evidence does the complaint provide that Defendant's systems, which may use modern authentication like NFC card readers or mobile app approvals, perform the function of receiving a "passcode...entered at the user interface" of the DRD, as required by the claims?

V. Key Claim Terms for Construction

"passcode"

  • Context and Importance: This term is central to the claimed method of authenticating a rendering job. Its construction will determine whether modern authentication technologies fall within the claim scope. Practitioners may focus on this term because the accused systems likely use authentication methods beyond simple keyed-in codes.
  • Intrinsic Evidence for a Broader Interpretation: The specification suggests "passcode" is not limited to a typed number, stating that "Passcode capabilities can include the use of passwords/passcodes, biometrics and/or communications security (COMSEC)." (’285 Patent, col. 5:41-44).
  • Intrinsic Evidence for a Narrower Interpretation: The figures and description repeatedly refer to "Enter[ing] Passcode at DRD," which could be argued to imply a manual entry process common at the time of the invention. (’285 Patent, Fig. 8, element 83; Fig. 11, element 113).

"server in communication with at least one data rendering device (DRD)"

  • Context and Importance: This phrase defines the core components and relationship in the claimed system. The infringement analysis will depend on whether the architecture of Defendant's accused products maps onto this claimed structure.
  • Intrinsic Evidence for a Broader Interpretation: The patent describes a flexible system where DRDs can be "publically available or private" and located "throughout an enterprise or private campus." (’285 Patent, col. 5:9-12). This suggests a distributed architecture rather than a monolithic system.
  • Intrinsic Evidence for a Narrower Interpretation: The claims require the DRD to be "registered with said server" and for the server to control the release of data for rendering. (’285 Patent, col. 14:34-35). A defendant might argue its system does not have this specific registration and server-controlled data release mechanism, but instead uses a different communication protocol (e.g., peer-to-peer).

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement by asserting that Defendant "actively encouraged or instructed" its customers on how to use its products and services in a way that infringes the ’285 Patent. (Compl. ¶11). It also makes a conclusory allegation of contributory infringement. (Compl. ¶12).

Willful Infringement

The complaint establishes a basis for a potential willfulness claim by alleging that Defendant has known of the ’285 Patent "from at least November 12, 2021, the filing date of a prior lawsuit." (Compl. ¶10).

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

  • A central issue will be one of technical and factual mapping: pending discovery, it is an open question whether Konica Minolta’s vaguely accused "systems and servers" for secure communication actually implement the specific client-server-renderer architecture of the ’285 patent, or if they operate on a fundamentally different technical principle.
  • The case will likely involve a significant dispute over definitional scope: can the term "passcode," as described in a patent with a 2000 priority date, be construed to cover the modern authentication methods (e.g., NFC card-based identity verification, mobile app approvals) likely used in Defendant's contemporary secure printing solutions?