DCT

4:25-cv-00660

Near Field Electronics LLC v. Visionworks Of America Inc

Key Events
Complaint
complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:25-cv-00660, E.D. Tex., 06/20/2025
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants have committed acts of infringement and maintain a regular and established place of business within the Eastern District of Texas.
  • Core Dispute: Plaintiff alleges that Defendants’ NFC-capable credit card readers, which incorporate a specific NXP front-end component, infringe a portfolio of five patents related to semiconductor interface design, power management, and communication protocols.
  • Technical Context: The patents address foundational technologies for managing communication and power in peripheral devices, such as automatically selecting between different communication protocols (e.g., USB and PS/2) and flexibly configuring device interfaces.
  • Key Procedural History: The complaint asserts five patents, four of which have expired. For the expired patents, Plaintiff asserts liability only for a period starting six years prior to the complaint's filing and ending on each patent's respective expiration date. Infringement of the fifth patent is alleged to be ongoing and willful.

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 Issue Date
2004-05-25 U.S. Patent No. 6,742,071 Issue Date
2005-01-11 U.S. Patent No. 7,373,531 Priority Date
2005-10-25 U.S. Patent No. 6,959,350 Issue Date
2006-02-07 U.S. Patent No. 6,996,727 Issue Date
2008-05-13 U.S. Patent No. 7,373,531 Issue Date
2019-06-20 Alleged Damages Period Begins for Expired Patents
2021-11-21 U.S. Patent No. 6,742,071 Expiration Date
2022-01-31 U.S. Patent No. 6,691,201 Expiration Date
2022-04-14 U.S. Patent No. 6,996,727 Expiration Date
2023-08-12 U.S. Patent No. 6,959,350 Expiration Date
2025-06-20 Complaint Filing Date

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 describes that peripheral devices supporting multiple communication protocols, such as both Universal Serial Bus (USB) and Personal System 2 (PS/2), conventionally required costly external components, complex firmware, and dedicated input/output (I/O) pins on the micro-controller for each protocol (Compl. ¶12; ’201 Patent, col. 1:27-50).
  • The Patented Solution: The invention provides a single integrated circuit that can automatically detect which protocol a connected bus is using (e.g., USB or PS/2) and configure itself to communicate accordingly, using a single, shared set of I/O pins for both protocols (’201 Patent, Abstract; col. 2:52-61). This solution is intended to reduce component cost, board space, and firmware complexity (Compl. ¶13).
  • Technical Importance: This approach provided a streamlined, cost-effective solution for peripheral manufacturers wanting to offer devices compatible with both legacy (PS/2) and modern (USB) computer ports without redesigning the core hardware (’201 Patent, col. 2:4-10).

Key Claims at a Glance

  • The complaint asserts independent claim 14 (Compl. ¶32).
  • Claim 14 (Method):
    • (A) detecting a signaling protocol of a bus connected to an integrated circuit that operates in a plurality of signaling protocols; and
    • (B) configuring said integrated circuit to communicate in one of said plurality of signaling protocols in response to said detected signaling protocol, wherein each of said selected protocols operate over said connected bus through a single set of pins.
  • The complaint reserves the right to assert additional 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: Conventional user-programmable interfaces for connecting devices were often rigid, requiring a user to specify a fixed number of 'wait-states,' which limited the ability to implement complex or evolving interface signaling protocols (’071 Patent, col. 1:39-48).
  • The Patented Solution: The patent discloses a programmable general-purpose interface (GPIF) that functions as a specialized, real-time I/O processor (’071 Patent, Abstract; col. 5:4-8). This processor uses a limited instruction set to generate interface-specific waveforms and respond to external events on a clock-cycle-by-clock-cycle basis, replacing protocol-specific hardware designs with a more flexible, programmable solution (Compl. ¶16-17; '071 Patent, col. 6:4-16).
  • Technical Importance: This technology enabled a single processor architecture to be adapted for numerous standard and custom bus protocols, increasing flexibility and reducing the risks associated with rapidly changing industry standards (Compl. ¶17; '071 Patent, col. 2:53-62).

Key Claims at a Glance

  • The complaint asserts independent claim 15 (Compl. ¶37).
  • Claim 15 (Method):
    • (A) generating a plurality of first control signals in response to a current state of a processor;
    • (B) progressing to a next state based on the current state, at least one internal control signal, and an input signal from an external bus;
    • (C) driving at least one output control signal onto the external bus; and
    • (D) updating the current state to the next state.
  • The complaint reserves the right to assert additional 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 problem of hard-coded endpoint configurations in USB interface controllers, which required writing and maintaining different Hardware Description Language (HDL) code for each version (Compl. ¶21). The invention provides a configurable bus interface controller that uses an HDL-based configuration package to flexibly generate circuitry for different USB endpoint configurations without requiring separate HDL code for each endpoint (Compl. ¶20, ¶22).

Asserted Claims

The complaint asserts at least independent claim 10 (Compl. ¶42).

Accused Features

The complaint alleges that the NXP PN512 NFC Front-End in the accused credit card readers infringes the ’350 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

Conventional USB interfaces at the time used a constant voltage supply without a low-power mode (Compl. ¶26). This patent discloses a power supply architecture for a USB interface that operates in two modes: a standard mode and a power-down (standby) mode that reduces current consumption by using a low-power programmable resistor to maintain the necessary pullup function (Compl. ¶25).

Asserted Claims

The complaint asserts at least independent claim 18 (Compl. ¶47).

Accused Features

The complaint alleges that the NXP PN512 NFC Front-End in the accused credit card readers infringes the ’727 Patent (Compl. ¶47).

U.S. Patent No. 7,373,531 - "Signal Detection Method...and Electronic Apparatus," Issued May 13, 2008

Technology Synopsis

The patent is directed to methods and devices for reducing power consumption by detecting signals and their frequency through monitoring current flow in a circuit (Compl. ¶29). By applying a signal to transistor gates and detecting whether a 'through current' flows, the device can determine the presence or state of the signal and, if no signal is detected, execute a power supply stopping or reducing process (Compl. ¶29-30).

Asserted Claims

The complaint asserts at least independent claim 2 (Compl. ¶52).

Accused Features

The complaint alleges that the NXP PN512 NFC Front-End in the accused credit card readers infringes the ’531 Patent (Compl. ¶52).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are identified as "a credit card reader device equipped with an NXP PN512 NFC Front-End" and any other NFC-capable credit card readers with similar components (Compl. ¶32, ¶37).

Functionality and Market Context

The complaint alleges these devices are used by Defendants in the regular course of their business for processing Near Field Communication (NFC) payment transactions (Compl. ¶34, ¶39). The complaint does not provide specific technical details on the operation of the accused devices or the NXP PN512 component, instead referencing non-public exhibits (e.g., Compl. ¶33, ¶38).

IV. Analysis of Infringement Allegations

The complaint alleges infringement of all five patents-in-suit but provides no narrative infringement theory in the body of the complaint. Instead, it states that an "exemplary infringement analysis" for each patent is set forth in a corresponding exhibit (e.g., Exhibit A-1, B-1), which were not filed with the complaint (Compl. ¶33, ¶38, ¶43, ¶48, ¶53). The complaint does not provide sufficient detail for a claim-by-claim analysis in a chart format.

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Scope Questions: A primary point of contention may be whether the functionalities of a modern NFC reader component fall within the scope of patents directed at older or different interface technologies. For example, for the ’201 Patent, a question is whether the accused NFC reader performs the claimed method of detecting and selecting between a "Universal Serial Bus (USB) protocol and a PS/2 protocol" (’201 Patent, col. 7:10-12).
    • Technical Questions: The complaint broadly accuses the "NXP PN512 NFC Front-End" component (Compl. ¶32). A central technical question will be what specific operations this component performs within the accused credit card readers and whether those operations meet the specific, step-by-step limitations of the asserted method claims. For instance, for the ’071 Patent, it raises the question of whether the accused component executes a program from a memory to "progress to a next state" and drive control signals on an "external bus" in the manner required by claim 15.

V. Key Claim Terms for Construction

U.S. Patent No. 6,691,201

  • The Term: "detecting a signaling protocol of a bus" (from claim 14)
  • Context and Importance: This term is the trigger for the entire claimed method. The patent’s specification is focused on distinguishing between USB and PS/2 protocols. Practitioners may focus on this term because the infringement allegation against an NFC reader raises the question of what "signaling protocol" is being "detected" and whether it corresponds to the protocols disclosed in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is not explicitly limited to USB and PS/2, referring more generally to "a plurality of signaling protocols" (’201 Patent, col. 7:3). Plaintiff may argue this term should not be limited to the specific examples in the specification.
    • Evidence for a Narrower Interpretation: The detailed description repeatedly frames the invention in the context of USB and PS/2 (e.g., ’201 Patent, col. 2:25-43). The patent is titled "Dual Mode USB-PS/2 Device." Defendant may argue the term should be construed as limited to the specific protocols that the patent teaches how to distinguish.

U.S. Patent No. 6,742,071

  • The Term: "progressing to a next state based on said current state, at least one internal control signal... and an input signal received from said external bus" (from claim 15)
  • Context and Importance: This limitation defines the core decision-making logic of the claimed method. Its construction will be critical for determining whether the operations of the accused NFC reader, which communicates wirelessly, can be mapped to a method for a processor interfacing with a wired "external bus" via state transitions.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes the invention as a "generic interface" for "multiple industry-standard protocols" and "customer-specific interfaces" (’071 Patent, col. 2:57-59, col. 7:49-54), which could support a construction not strictly limited to the embodiments shown.
    • Evidence for a Narrower Interpretation: The specification describes the processor receiving signals like 'READ,' 'WRITE,' and 'FLAGS' to control data transfer over a 'DATA_BUS' (’071 Patent, Fig. 2; col. 2:5-7). Defendant may argue that "external bus" and the associated signals imply a conventional, parallel or serial wired hardware interface, potentially distinguishing it from the radio-frequency interface of an NFC reader.

VI. Other Allegations

  • Indirect Infringement: For the ’531 Patent only, the complaint alleges induced infringement. The alleged acts include "advertising and distributing the Accused Instrumentalities and providing instruction materials, training, and services regarding the Accused Instrumentalities" to partners, customers, and end users, with alleged specific intent to cause their infringing use (Compl. ¶56-57).
  • Willful Infringement: For the ’531 Patent, the complaint alleges that infringement has been willful "since the filing of this Complaint," establishing post-suit knowledge as the basis for the willfulness claim (Compl. ¶58).

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

  1. A Question of Technological Mismatch: A central issue will be whether the specific operations of a modern NFC-based payment system can be mapped onto the claim limitations of patents from the early 2000s, which were written to solve problems in the context of wired peripheral interfaces like USB, PS/2, and EIDE. Can the concept of an "external bus" from the '071 patent, for instance, be construed to read on the wireless, protocol-driven communication of an NFC reader?
  2. An Evidentiary Hurdle: The complaint makes bare allegations of infringement, relying on unprovided exhibits. A key question will be what evidence Plaintiff can marshal during discovery to demonstrate, on a limitation-by-limitation basis, that the accused NXP component actually performs the specific steps recited in the asserted method claims, particularly given the apparent differences in technology.
  3. The Scope of Damages: With four of the five asserted patents having already expired, a primary focus will be on the calculation of past damages. The dispute will likely involve determining the reasonable royalty for a limited timeframe (June 2019 until the respective expiration dates) and for only one ongoing patent, which may temper the overall financial exposure for the Defendants.