DCT

1:25-cv-00324

Near Field Electronics LLC v. PPG Industries Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-00324, E.D. Tex., 07/17/2025
  • Venue Allegations: Plaintiff alleges venue is proper because both Defendants have committed acts of infringement and maintain a regular and established place of business in the Eastern District of Texas.
  • Core Dispute: Plaintiff alleges that credit card readers equipped with Near Field Communication (NFC) front-end components, which Defendants use in their business operations, infringe five patents related to integrated circuit architecture, multi-protocol communication, and power management.
  • Technical Context: The patents-in-suit relate to semiconductor-level solutions for managing communication protocols and power consumption in peripheral devices, technologies that are foundational to modern electronics like USB devices and contactless payment systems.
  • Key Procedural History: The complaint asserts infringement of four expired patents, seeking damages only for a period beginning June 18, 2019, up to each patent's respective expiration date. Infringement of one active patent, U.S. Patent No. 7,373,531, is also alleged, including claims for indirect and willful infringement against Defendant Pittsburgh based on knowledge allegedly established by the filing of the complaint.

Case Timeline

Date Event
2000-06-21 U.S. Patent No. 6,691,201 Priority Date
2000-07-25 U.S. Patent No. 6,742,071 Priority Date
2000-08-28 U.S. Patent No. 6,996,727 Priority Date
2002-06-28 U.S. Patent No. 6,959,350 Priority Date
2004-02-10 U.S. Patent No. 6,691,201 Issues
2004-05-25 U.S. Patent No. 6,742,071 Issues
2005-01-11 U.S. Patent No. 7,373,531 Priority Date
2005-10-25 U.S. Patent No. 6,959,350 Issues
2006-02-07 U.S. Patent No. 6,996,727 Issues
2008-05-13 U.S. Patent No. 7,373,531 Issues
2019-06-18 Alleged Damages Period Begins for Expired Patents
2021-11-21 U.S. Patent No. 6,742,071 Expires
2022-01-31 U.S. Patent No. 6,691,201 Expires
2022-04-14 U.S. Patent No. 6,996,727 Expires
2023-08-12 U.S. Patent No. 6,959,350 Expires
2024-12-02 American Industrial Partners Acquires PPG Architectural Finishes, Inc.
2025-07-17 Complaint Filed

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

U.S. Patent No. 6,691,201 - Dual Mode USB-PS/2 Device (issued Feb. 10, 2004)

The Invention Explained

  • Problem Addressed: The patent’s background section describes the technical challenge of designing peripheral devices, such as computer mice, to support multiple communication protocols like USB and PS/2. Conventional solutions required additional external components, which increased cost, consumed valuable circuit board space, and necessitated complex firmware to manage the different protocols (Compl. ¶12; ’201 Patent, col. 1:29-48).
  • The Patented Solution: The invention discloses a single integrated circuit for a peripheral device that is capable of operating in multiple signaling protocols using a single set of input/output (I/O) pins (Compl. ¶11; ’201 Patent, Abstract). The circuit is configured to automatically detect the signaling protocol of a connected bus and configure itself accordingly, thereby eliminating the need for external components and simplifying firmware design (Compl. ¶13; ’201 Patent, col. 1:49-67).
  • Technical Importance: This single-chip approach offered a more integrated and cost-effective solution for manufacturers of computer peripherals, allowing them to support legacy (PS/2) and modern (USB) standards with a single hardware design (Compl. ¶13).

Key Claims at a Glance

  • The complaint asserts independent method claim 14 (Compl. ¶32).
  • Claim 14 requires the essential steps of:
    • detecting a signaling protocol of a bus connected to an integrated circuit that operates in a plurality of signaling protocols; and
    • configuring the integrated circuit to communicate in one of the protocols in response to the detection, where each protocol operates over the bus through a single set of pins.
  • The complaint reserves the right to amend its infringement analysis to include other claims (Compl. ¶33).

U.S. Patent No. 6,742,071 - Real-time I/O Processor Used to Implement Bus Interface Protocols (issued May 25, 2004)

The Invention Explained

  • Problem Addressed: The patent addresses the limitations of conventional bus interface designs that were protocol-specific and inflexible. These rigid hardware designs made it difficult to adapt to new or evolving bus standards without significant redesign efforts (’071 Patent, col. 1:20-31; Compl. ¶17).
  • The Patented Solution: The patent describes a real-time I/O processor architecture that acts as a master device to implement bus interface protocols (Compl. ¶16; ’071 Patent, col. 1:6-10). This programmable general-purpose interface (GPIF) uses a limited instruction set to generate interface-specific waveforms and respond to external events in real time, allowing control outputs and data path decisions to be changed each clock cycle (’071 Patent, col. 6:4-16; Compl. ¶¶ 16-17). This flexible, processor-based approach replaces fixed, protocol-specific hardware (’071 Patent, Abstract; col. 2:30-3:3).
  • Technical Importance: The invention's programmable nature provided a flexible solution for interfacing with multiple bus protocols, enabling higher-speed operation and easier adaptation to new standards compared to traditional microprocessor-based I/O systems (Compl. ¶17).

Key Claims at a Glance

  • The complaint asserts independent method claim 15 (Compl. ¶37).
  • Claim 15 requires the essential steps of:
    • generating a plurality of first control signals in response to a current state of a processor;
    • driving at least one output control signal onto an external bus; and
    • updating the current state to a next state.
  • The complaint reserves the right to amend its infringement analysis to include other claims (Compl. ¶38).

U.S. Patent No. 6,959,350 - Configurable USB Interface With Virtual Register Architecture (issued Oct. 25, 2005)

  • Technology Synopsis: The patent addresses the inefficiency of hard-coding USB endpoint configurations into interface controllers, which required creating and maintaining distinct Hardware Description Language (HDL) code for each configuration (Compl. ¶21; ’350 Patent, col. 1:16-28). The patented solution is a configurable bus interface controller that uses an HDL-based configuration package to generate the necessary configuration circuitry, allowing the controller to be flexibly configured for different endpoints without requiring separate hard-coded designs (Compl. ¶¶ 20, 22; ’350 Patent, col. 2:38-3:5).
  • Asserted Claims: Independent claim 10 (Compl. ¶42).
  • Accused Features: The complaint alleges that the NXP PN512 NFC Front-End and similar components in Defendants' credit card readers infringe this patent (Compl. ¶42).

U.S. Patent No. 6,996,727 - Power Supply for Universal Serial Bus Interface with Programmable Bus Pullup Resistor (issued Feb. 7, 2006)

  • Technology Synopsis: The patent addresses the lack of low-power modes in conventional USB interface power supplies, which provided a constant voltage (Compl. ¶26; ’727 Patent, col. 1:16-44). The invention provides a power supply architecture with both a standard operating mode and a power-down standby mode. In standby mode, the main supply is turned off to reduce current consumption, while a low-power programmable resistor maintains the necessary bus pullup function (Compl. ¶25; ’727 Patent, col. 2:30-4:9).
  • Asserted Claims: Independent claim 18 (Compl. ¶47).
  • Accused Features: The complaint alleges that the NXP PN512 NFC Front-End and similar components in Defendants' credit card readers infringe this patent (Compl. ¶47).

U.S. Patent No. 7,373,531 - Signal Detection Method, Frequency Detection Method, Power Consumption Control Method… (issued May 13, 2008)

  • Technology Synopsis: The patent addresses wasteful power consumption in electronic devices during idle states when no signal is being processed (’531 Patent, col. 1:36-44). The invention is a method and device that detects the presence, absence, or state of a signal by monitoring the "through current" flowing in a circuit of connected transistors. Based on this detection, the device can initiate a power-saving mode, such as by stopping or reducing the power supply (Compl. ¶¶ 29-30; ’531 Patent, Abstract).
  • Asserted Claims: Independent claim 2 (Compl. ¶52).
  • Accused Features: The complaint alleges that the NXP PN512 NFC Front-End and similar components in Defendants' credit card readers infringe this patent (Compl. ¶52).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are "credit card reader device[s] equipped with an NXP PN512 NFC Front-End" and other NFC-capable credit card readers with similar functionality (Compl. ¶¶ 32, 37, 42, 47, 52).
  • Functionality and Market Context: The complaint alleges that Defendants use these devices in the regular course of their business operations for processing NFC payment transactions (Compl. ¶34). The devices are marketed to and used by Defendants' partners, clients, and customers (Compl. ¶54). The core accused functionality resides within the NFC front-end integrated circuits that enable contactless communication for payments (Compl. ¶32).

IV. Analysis of Infringement Allegations

The complaint references preliminary infringement analysis exhibits for each asserted patent but does not attach them (Compl. ¶¶ 33, 38, 43, 48, 53). The narrative infringement theory, common to all asserted patents, is that when Defendants put the Accused Instrumentalities into use for processing NFC payments, the devices necessarily perform each step of the claimed methods (Compl. ¶¶ 34, 39, 44, 49).

  • '201 Patent Infringement Allegations: The complaint alleges that the accused NFC front-end contains an integrated circuit that operates in multiple signaling protocols (e.g., different NFC standards) and automatically selects the correct one based on the presented payment card, using a single set of I/O pins, thereby infringing method claim 14 (Compl. ¶¶ 32, 34).
  • '071 Patent Infringement Allegations: The complaint alleges that the accused NFC front-end functions as a real-time I/O processor that generates control signal waveforms to manage communication with an external device (the NFC payment card). This implementation of a bus interface protocol is alleged to infringe method claim 15 (Compl. ¶¶ 37, 39).

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Scope Questions: A central question for the ’201 Patent may be whether the term "plurality of signaling protocols", described in the context of fundamentally distinct standards like USB and PS/2, can be construed to read on different modes or standards within the single technological family of NFC (e.g., ISO/IEC 14443 Type A vs. Type B). For the ’071 Patent, a question is whether the accused NXP PN512, a specialized NFC front-end, functions as the patented programmable "general-purpose interface," or whether it is a "protocol-specific hardware design" that the patent describes itself as replacing (Compl. ¶17).
    • Technical Questions: A factual question for the ’201 Patent analysis may be what evidence shows that the accused NFC front-end performs the claimed step of "detecting a signaling protocol" prior to and as the basis for "configuring said integrated circuit." For the ’071 Patent, the analysis may turn on whether the accused device's operation meets the claim 15 limitation of generating signals in response to a "current state of a processor" and subsequently "updating said current state to a next state," or if it operates via a different, non-state-based logic.

V. Key Claim Terms for Construction

  • For the ’201 Patent (Claim 14):

    • The Term: "plurality of signaling protocols"
    • Context and Importance: The viability of the infringement allegation may depend on the scope of this term. Practitioners may focus on this term because if it is construed narrowly to mean fundamentally different, non-interoperable standards like the patent's USB and PS/2 examples, it may not cover variations within the NFC standard. A broader construction covering any distinct communication rule sets could favor the plaintiff's theory.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The body of claim 14 itself is not expressly limited to any specific protocols, referring generally to "a plurality of signaling protocols" (’201 Patent, col. 6:49-65).
      • Evidence for a Narrower Interpretation: The patent’s title, "Dual Mode USB-PS/2 Device," its abstract, and the entirety of its background and detailed description focus exclusively on the USB and PS/2 protocols as the problem and solution context. This may be cited to argue the claimed invention is limited to bridging such distinct legacy and modern wired standards (’201 Patent, Abstract; col. 1:15-54).

  • For the ’071 Patent (Claim 15):

    • The Term: "processor"
    • Context and Importance: The infringement question may hinge on whether the accused NFC front-end contains a "processor" as required by the claim. Practitioners may focus on this term because its construction will determine what type of circuitry meets the limitation. If construed to require a general-purpose CPU executing a sequence of stored instructions, the allegation may face challenges; if it can encompass a specialized finite state machine or dedicated logic circuit, the allegation may be more tenable.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the invention as a "specialized input-output processor" and a "finite state machine," suggesting the term is not limited to a conventional CPU (’071 Patent, col. 5:6-8; col. 6:58).
      • Evidence for a Narrower Interpretation: The specification describes a "processor-based solution" that implements an instruction set including commands like "Branch on Signal" and "Wait N Clocks," which may be argued to imply a level of programmability and state-based execution beyond that of a simple, hard-wired application-specific integrated circuit (ASIC) (’071 Patent, col. 2:58; Fig. 11a).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant Pittsburgh has induced infringement of the ’531 Patent since receiving notice via the original complaint. The alleged inducing acts include "advertising and distributing the Accused Instrumentalities and providing instruction materials, training, and services" to its partners and customers (Compl. ¶¶ 56-57).
  • Willful Infringement: Willfulness is alleged for the ’531 Patent against Defendant Pittsburgh, based on continued infringement after gaining alleged actual knowledge of the patent and the infringement from the filing of the complaint (Compl. ¶58).

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

  • A central issue will be one of technological analogy: can claims drafted and prosecuted in the early 2000s, rooted in the technical context of wired computer peripheral interfaces (USB, PS/2, parallel buses), be construed to cover the distinct architecture and operation of a modern, wireless, contactless NFC front-end integrated circuit?
  • The dispute will likely focus on definitional scope: does the term "plurality of signaling protocols" (’201 Patent) encompass different modes within the NFC standard, and does the term "processor" (’071 Patent) read on the dedicated logic of the accused NFC chip, or does the intrinsic evidence of the patents limit these terms to the specific embodiments and problems described therein?
  • For the four expired patents, which constitute the bulk of the suit, a key question will be one of evidentiary proof: what specific, non-conclusory technical evidence can Plaintiff provide to demonstrate that the accused devices, as used between 2019 and their respective expiration dates, practiced the specific method steps claimed in patents with priority dates from over two decades ago?