Encryptawave v. Konica Minolta: US7233664B2 Dismissed With Prejudice
Encryptawave Technologies LLC filed a patent infringement action against Konica Minolta in the Eastern District of Texas, asserting US7233664B2 against more than 60 bizhub multifunction printer models. The case closed in 268 days when Encryptawave voluntarily dismissed with prejudice under Rule 41(a)(1), with each party bearing its own costs.
Encryption patent vs. bizhub MFP fleet — a swift, final exit
On 26 June 2024, Encryptawave Technologies LLC filed suit against Konica Minolta, Inc. in the Eastern District of Texas (Case 4:24-cv-00588) before Judge Sean D. Jordan. The complaint asserted US7233664B2 — an application-number patent (US10/448989) covering secure encrypted data transmission — against a fleet of more than 60 Konica Minolta bizhub multifunction printer and copier models ranging from the entry-level bizhub 227 to the high-volume bizhub C759.
The case terminated on 21 March 2025 when Encryptawave filed a Notice of Voluntary Dismissal with Prejudice pursuant to Federal Rule of Civil Procedure 41(a)(1). Because no answer or motion for summary judgment had yet been served by Konica Minolta, Encryptawave was entitled to dismiss as of right — without court order. The dismissal with prejudice is a permanent bar: Encryptawave cannot bring the same claims against Konica Minolta on US7233664B2 in any future action.
At 268 days, the case closed well before typical Eastern District of Texas trial timelines, which suggests the parties likely reached a private resolution — though the public record is silent on any settlement terms. The cost-neutral language (‘each party to bear its own costs’) is a common formulation in privately negotiated exits but does not itself confirm or deny a financial settlement. What drove Encryptawave’s decision to dismiss with prejudice — whether litigation risk, a licensing deal, or commercial pressure — remains undisclosed.
Filing to Voluntary dismissal in 268 days
268 days — resolved before answer or summary judgment motion was served
Voluntary dismissal with prejudice: what Rule 41(a)(1) means for both parties
Rule 41(a)(1): dismissal as of right, no court order needed
Under Federal Rule of Civil Procedure 41(a)(1), a plaintiff may dismiss an action without a court order by filing a notice at any time before the defendant serves an answer or a motion for summary judgment. Encryptawave invoked this right before Konica Minolta filed any responsive pleading. The ‘with prejudice’ designation is the plaintiff’s own election — it is not a court sanction — and converts the voluntary exit into a final adjudication on the merits for claim-preclusion purposes.
Rule 41(a)(1) — no court order requiredWith prejudice bars any re-filing on the same patent claims
A dismissal with prejudice extinguishes Encryptawave’s right to sue Konica Minolta again on US7233664B2 for the accused bizhub products. This is the key distinction from a dismissal without prejudice, where the plaintiff could re-file. The public record does not disclose why Encryptawave chose the more final ‘with prejudice’ form — possibilities include a confidential settlement, a license grant, or a strategic decision to avoid an unfavourable merits ruling — but the record is silent on the underlying reason.
Permanent bar on re-filing same claimsKonica Minolta exits without admitting infringement
Konica Minolta achieves case closure without any finding of infringement, validity determination, or damages award on the record. Morrison & Foerster’s representation suggests the company was prepared to mount a substantive defence; the pre-answer timing of the dismissal means no defensive pleadings were filed. The cost-neutral agreement means Konica Minolta bears its own legal spend — typically favourable from a defendant’s perspective only if a private deal offsets those costs.
No infringement finding on recordUS7233664B2 enforcement against bizhub products is now permanently closed
For the imaging and document management sector, the dismissal with prejudice signals that US7233664B2 will not be litigated against the accused bizhub models through this avenue. Competitors and OEMs deploying similar encrypted-transmission architectures in MFP products should note that the patent itself remains in force — only Konica Minolta has secured finality. Other potential defendants in the bizhub-adjacent MFP space remain exposed to the same patent, and Encryptawave’s licensing posture toward the broader market is unchanged by this filing.
Patent still active — other MFP makers remain at riskFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Encryptawave Technologies, LLC | Company | Patent licensing entity — holder of US7233664B2 covering encrypted data transmissionSearch in Eureka ↗ |
| Defendant | Konica Minolta, Inc. | Company | Konica Minolta, Inc. — global manufacturer of bizhub multifunction printers and imaging devicesSearch in Eureka ↗ |
| Plaintiff counsel | David R. Bennett, Esq., | Attorney | Counsel for Encryptawave Technologies, LLCSearch in Eureka ↗ |
| Plaintiff law firm | David R. Bennett | Law Firm | Representing Encryptawave Technologies, LLCSearch in Eureka ↗ |
| Defendant counsel | Austin Michael Schnell | Attorney | Counsel for Konica Minolta, Inc.Search in Eureka ↗ |
| Defendant law firm | Morrison & Foerster, LLP | Law Firm | Representing Konica Minolta, Inc.Search in Eureka ↗ |
| Presiding judge | Judge Sean D. Jordan | Judge | Texas Eastern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The dismissal notice explicitly invokes Rule 41(a)(1) and designates the dismissal ‘with prejudice’ — a plaintiff-elected, self-executing mechanism that requires no judicial approval when filed before the defendant serves an answer or summary judgment motion. The ‘with prejudice’ designation carries the legal weight of a merits adjudication for claim-preclusion purposes, permanently barring Encryptawave from reasserting the same US7233664B2 claims against Konica Minolta’s accused bizhub products. The cost-neutrality clause — each party bearing its own fees — is standard in pre-answer exits and does not indicate which party, if either, held the stronger litigation position.
US7233664B2 — encrypted data transmission for networked devices
US7233664B2 derives from application number US10/448989 and covers technology in the domain of secure encrypted data transmission — a capability increasingly essential in networked multifunction printers and enterprise imaging devices. The patent’s application-number designation (10/448989) places its filing in the early-to-mid 2000s, a period when enterprise MFP connectivity was expanding rapidly and encryption of transmitted documents was becoming a compliance requirement rather than an optional feature. The asserted patent would cover methods or systems for encrypting data sent between a device and a host, or across a network segment.
The strategic significance of US7233664B2 for the MFP sector lies in the ubiquity of its targeted functionality: virtually every modern networked printer or copier implements some form of encrypted transmission, whether for scanned document delivery, print job security, or cloud connectivity. An assertion covering this layer of functionality can implicate entire product lines across multiple generations — as evidenced by the 60-plus bizhub SKUs named in Encryptawave’s complaint. For competitors of Konica Minolta, the patent’s continued enforceability following this dismissal means the risk has not been neutralised — only redirected.
Should you run an FTO against US7233664B2?
Any company manufacturing, importing, or distributing networked multifunction printers, enterprise copiers, or document management systems that implement encrypted data transmission should treat US7233664B2 as a live risk. Encryptawave’s willingness to assert this patent against more than 60 Konica Minolta SKUs — covering both monochrome and colour MFPs across a wide price range — demonstrates a broad claim interpretation. The dismissal with prejudice resolves only the Konica Minolta exposure; all other MFP OEMs, component suppliers, and software vendors enabling encrypted document workflows remain potentially in scope.
PatSnap Eureka’s FTO Search Agent can map US7233664B2 claim language against your product’s encryption architecture, flag prior art that could support an invalidity argument, and identify the full citation network around this patent to surface related assertions. Eureka’s litigation monitor also tracks Encryptawave’s filing activity in real time — giving your IP team advance notice if a demand campaign targeting your product category is underway, before a complaint is filed.
Run a freedom-to-operate analysis on US7233664B2 to assess your product’s exposure
Run FTO in Eureka →Similar MFP encryption patent cases in E.D. Texas
Explore comparable NPE-asserted encryption patent infringement cases in the Eastern District of Texas involving multifunction printer and imaging device defendants.
What this case signals for the MFP encryption IP landscape
A swift Rule 41(a)(1) exit in the Eastern District of Texas typically indicates either a licensing deal or a risk-adjusted retreat — both carry implications for the sector.
Pre-answer dismissals with prejudice frequently signal a private licence
When a plaintiff voluntarily dismisses with prejudice before the defendant files any responsive pleading, it often — though not always — reflects a confidential licensing agreement. The cost-neutral language reinforces this reading. Companies in the MFP and office imaging sector should treat this pattern as a signal that US7233664B2 is being actively monetised, not abandoned.
Eastern District of Texas remains the venue of choice for NPE encryption assertions
Filing in E.D. Texas before Judge Sean D. Jordan follows established NPE playbook for patent assertion against hardware manufacturers. The 268-day duration is shorter than average E.D. Texas disposition times, which typically run 18–36 months to trial. Early closure without merits adjudication leaves the venue’s enforcement track record intact for future filings by Encryptawave or similarly positioned entities.
Encryptawave v Konica — key questions answered
The voluntary dismissal with prejudice under Rule 41(a)(1) permanently bars Encryptawave from re-filing the same US7233664B2 claims against Konica Minolta’s bizhub products. It was filed before Konica Minolta served an answer or summary judgment motion, so no court order was required. The public record does not disclose whether a settlement or licence was reached.
The complaint named more than 60 bizhub multifunction printer and copier models, ranging from entry-level mono devices such as the bizhub 227 and bizhub 3602P to high-volume colour systems including the bizhub C750i and bizhub C759. The breadth of the accused product list suggests the asserted claims target a widely implemented platform-level feature.
US7233664B2 (application no. US10/448989) covers secure encrypted data transmission technology, a domain critical to networked multifunction printers and enterprise imaging devices. The patent’s early-2000s filing date aligns with the period when encrypted document transmission became a core enterprise MFP requirement. Claim scope details are available in the full patent record.
Yes. The dismissal with prejudice resolves only Encryptawave’s claims against Konica Minolta for the accused bizhub products. US7233664B2 remains in force, and Encryptawave retains the right to assert it against other manufacturers, importers, or users of products that allegedly implement the covered encryption technology. Other MFP OEMs should assess their exposure independently.
The Eastern District of Texas is a historically plaintiff-favourable venue for patent infringement actions, with established case management procedures familiar to NPEs and their counsel. Filing before Judge Sean D. Jordan in the Sherman Division follows a well-established pattern for patent assertion entities targeting hardware manufacturers. The court’s procedural efficiency and NPE-friendly reputation consistently make it a preferred forum.
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