Ortiz & Associates v. Konica Minolta: Wireless Data Brokering Patent Dismissed With Prejudice
Ortiz & Associates Consulting, LLC sued Konica Minolta Business Solutions USA, Inc. in the Western District of Texas asserting US9549285B2, covering systems and methods for brokering data between wireless devices, servers, and data rendering devices. After 363 days, Ortiz voluntarily dismissed all claims with prejudice — permanently extinguishing its right to reassert this patent against Konica Minolta.
A pre-answer exit: Ortiz drops wireless patent claim with finality
On June 27, 2023, Ortiz & Associates Consulting, LLC filed a patent infringement action against Konica Minolta Business Solutions USA, Inc. in the U.S. District Court for the Western District of Texas (Case No. 6:23-cv-00471), before Judge Robert Pitman. The asserted patent, US9549285B2, covers systems, methods, and apparatuses for brokering data between wireless devices, servers, and data rendering devices — a technology squarely relevant to Konica Minolta’s managed print and document solutions business.
The case closed on June 24, 2024, when Ortiz filed a notice of voluntary dismissal under Federal Rule of Civil Procedure 41(a)(1)(A)(i), available because Konica Minolta had neither answered the complaint nor filed a motion for summary judgment. Critically, Ortiz specified that the dismissal was with prejudice as to the asserted patent, and agreed that each party would bear its own costs, expenses, and attorneys’ fees. The with-prejudice designation means Ortiz permanently relinquished the right to bring further claims against Konica Minolta on US9549285B2.
The 363-day duration before a pre-answer dismissal suggests protracted pre-litigation negotiations or parallel proceedings may have influenced Ortiz’s decision to exit with finality rather than refile. The public record does not disclose any settlement payment or licensing agreement, though a with-prejudice voluntary dismissal with each party bearing its own fees is often consistent with a negotiated resolution reached outside formal court proceedings. What drove Ortiz to foreclose future enforcement against Konica Minolta specifically remains unknown from the docket alone.
Filing to Voluntary dismissal in 363 days
363 days from filing to closure — consistent with pre-answer resolution in W.D. Tex.
Dismissed with prejudice: what the voluntary exit means for both parties
Rule 41(a)(1)(A)(i): plaintiff’s unilateral right to exit
Under FRCP 41(a)(1)(A)(i), a plaintiff may voluntarily dismiss an action without a court order if the defendant has not yet answered or moved for summary judgment. Ortiz exercised this right here. The unusual feature is the explicit with-prejudice designation — a Rule 41(a)(1) voluntary dismissal is ordinarily without prejudice by default, making Ortiz’s choice to specify prejudice a deliberate and consequential election.
Pre-answer voluntary dismissalWith prejudice: the patent dies against this defendant
The with-prejudice designation is legally significant. Unlike a without-prejudice dismissal — which preserves the right to refile — a with-prejudice dismissal operates as a final adjudication on the merits for claim-preclusion purposes. Ortiz cannot bring a future infringement action against Konica Minolta based on US9549285B2. This forecloses any future leverage from this patent against this specific defendant, regardless of any new infringing products introduced after the dismissal date.
Claim preclusion appliesKonica Minolta exits with permanent shield on this patent
Konica Minolta achieved a complete and permanent resolution without ever filing an answer or engaging in substantive motion practice. The with-prejudice dismissal effectively functions as a covenant not to sue specifically on US9549285B2. Morgan, Lewis & Bockius’s representation suggests Konica Minolta invested in a robust defence posture early — potentially signalling that pre-litigation pressure or invalidity arguments contributed to Ortiz’s decision to exit on these terms.
Full defence without merits rulingPatent remains live against third parties despite this exit
While Ortiz’s dismissal with prejudice permanently bars reassertion against Konica Minolta, US9549285B2 remains an enforceable asset against all other parties. Competitors operating wireless data brokering, managed print, or multi-device document routing platforms should treat this case as a signal that Ortiz actively asserts this patent — and that the patent survived without any recorded invalidity ruling. Other defendants cannot rely on this dismissal as any form of patent challenge.
Patent remains assertable vs. othersFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Ortiz & Associates Consulting, LLC | Company | Patent assertion entity — holder of US9549285B2 covering wireless data brokering systemsSearch in Eureka ↗ |
| Defendant | Konica Minolta Business Solutions USA, Inc. | Company | Konica Minolta Business Solutions USA, Inc. — managed print and document technology solutions providerSearch in Eureka ↗ |
| Plaintiff counsel | Kyril Talanov | Attorney | Counsel for Ortiz & Associates Consulting, LLCSearch in Eureka ↗ |
| Plaintiff counsel | William P. Ramey , III | Attorney | Counsel for Ortiz & Associates Consulting, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Ramey LLP | Law Firm | Representing Ortiz & Associates Consulting, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Spencer Fane LLP | Law Firm | Representing Ortiz & Associates Consulting, LLCSearch in Eureka ↗ |
| Defendant counsel | Ahren C. Hsu-Hoffman | Attorney | Counsel for Konica Minolta Business Solutions USA, Inc.Search in Eureka ↗ |
| Defendant counsel | Elizabeth M. Chiaviello | Attorney | Counsel for Konica Minolta Business Solutions USA, Inc.Search in Eureka ↗ |
| Defendant law firm | Morgan, Lewis & Bockius, LLP | Law Firm | Representing Konica Minolta Business Solutions USA, Inc.Search in Eureka ↗ |
| Presiding judge | Judge Robert Pitman | Judge | Texas Western District CourtSearch in Eureka ↗ |
Official order — verbatim text
The dismissal notice is precise in its with-prejudice designation — Ortiz’s counsel explicitly limited the prejudice to ‘the asserted patent,’ meaning US9549285B2 specifically. This phrasing suggests Ortiz may hold related patents or continuation applications that it deliberately preserved for future enforcement. The absence of any fee-shifting, despite nearly a year of litigation, is consistent with a negotiated exit rather than a unilateral capitulation, though the public record does not confirm or deny any monetary consideration.
US9549285B2 — Wireless data brokering between devices, servers, and rendering endpoints
US9549285B2 (application number US14/919108) covers systems, methods, and apparatuses for brokering data between wireless devices, servers, and data rendering devices. This places the patent squarely within the wireless enterprise connectivity and managed document output space — encompassing architectures in which mobile or wireless client devices communicate through intermediary brokering logic to deliver data to rendering endpoints such as printers, displays, or document management platforms. The patent’s claims, if broadly construed, could read on a wide range of wireless printing, mobile document routing, and cloud-connected output systems.
For the managed print and document technology sector — occupied by companies like Konica Minolta, Xerox, Canon, and Ricoh — this patent represents a credible assertion risk. As enterprise environments increasingly rely on mobile-to-printer and wireless-to-multifunction-device workflows, patents covering brokering logic between heterogeneous device classes become more commercially significant. The fact that this case ended without any invalidity ruling means US9549285B2 has not been tested on its merits, leaving its claim scope intact and its enforceability unchallenged in the public record.
Should you run an FTO analysis against US9549285B2?
Any company developing or deploying wireless data brokering architectures — particularly those involving mobile device integration with servers and data rendering endpoints such as printers, MFPs, or display systems — should evaluate exposure to US9549285B2. This includes managed print service providers, enterprise mobility solution vendors, cloud print platform developers, and hardware OEMs integrating wireless output capabilities. The patent has never been invalidated or limited by claim construction in a court proceeding.
PatSnap Eureka’s FTO Search Agent can map your product’s technical architecture against the claim scope of US9549285B2, identify prior art that was not before the examiner, surface related continuation or family members Ortiz may hold, and flag other Ramey LLP-filed cases asserting similar technology. Running a targeted FTO now is substantially cheaper than defending a W.D. Tex. infringement action later — especially given Ortiz’s demonstrated willingness to litigate to near-trial timelines before settling.
Run a freedom-to-operate analysis on US9549285B2 to assess your product’s exposure
Run FTO in Eureka →Similar wireless data brokering patent cases in W.D. Texas and beyond
Explore patent infringement actions asserting wireless device-to-server data brokering and managed print technology patents filed in the Western District of Texas and comparable venues.
What this case signals for the wireless data brokering IP landscape
A with-prejudice pre-answer exit in W.D. Tex. carries clear signals for patent holders, targets, and third parties operating in the wireless data routing space.
Early defence posture can drive favourable exits before answer deadline
Konica Minolta’s engagement of Morgan, Lewis & Bockius suggests a credible early defence response. Companies targeted by assertion entities in W.D. Tex. should invest in pre-answer invalidity and non-infringement analysis promptly — a strong early posture may be sufficient to induce a with-prejudice dismissal without requiring costly motion practice or trial.
US9549285B2 is still live: third parties must assess exposure independently
The dismissal provides no invalidity ruling, no claim construction, and no estoppel benefit to anyone other than Konica Minolta. Any company operating wireless device-to-server-to-rendering-endpoint data brokering systems should run an independent FTO analysis against US9549285B2. Ortiz’s continued ownership of this patent suggests ongoing assertion activity remains a realistic risk.
Ortiz v Konica — key questions answered
The with-prejudice dismissal permanently bars Ortiz & Associates from reasserting US9549285B2 against Konica Minolta Business Solutions USA. However, the patent remains fully enforceable against all other parties. The dismissal creates no invalidity finding, no claim construction record, and no estoppel benefit beyond Konica Minolta itself.
FRCP 41(a)(1)(A)(i) permits a plaintiff to dismiss unilaterally before the defendant answers or files a summary judgment motion. Ortiz used this mechanism after Konica Minolta had not yet answered. The with-prejudice designation and mutual cost-bearing terms are consistent with a negotiated exit, though the public docket discloses no settlement agreement or monetary terms.
Yes. The voluntary dismissal of Case 6:23-cv-00471 did not produce any ruling on the validity or enforceability of US9549285B2. No inter partes review, ex parte reexamination, or claim construction order is reflected in the public record for this case. The patent should be treated as presumptively valid under 35 U.S.C. § 282 until successfully challenged.
US9549285B2 covers systems, methods, and apparatuses for brokering data between wireless devices, servers, and data rendering devices. Industries facing potential exposure include managed print services, enterprise wireless infrastructure, cloud printing platforms, mobile document management, and OEMs producing multifunction printers with wireless connectivity — particularly where mobile-to-server-to-printer routing logic is involved.
Ortiz & Associates was represented by Kyril Talanov and William P. Ramey III of Ramey LLP and Spencer Fane LLP. Konica Minolta Business Solutions USA was represented by Ahren C. Hsu-Hoffman and Elizabeth M. Chiaviello of Morgan, Lewis & Bockius LLP. Judge Robert Pitman presided in the Western District of Texas.
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