Ingenico Inc v. Near Field Electronics LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ingenico Inc. (Georgia)
  • Defendant: Near Field Electronics LLC (Texas)
  • Plaintiff’s Counsel: Nixon Peabody LLP
• Case Identification: 4:25-cv-01368, E.D. Tex., 12/09/2025
• Venue Allegations: Plaintiff Ingenico asserts that venue is proper in the Eastern District of Texas because Defendant NFE is a Texas entity that resides in the state and operates its patent enforcement business through numerous lawsuits filed within the district.
• Core Dispute: Plaintiff seeks a declaratory judgment that its payment terminal products do not infringe, and that the claims are invalid, for five of Defendant's patents related to bus interface protocols, power management, and signal detection for electronic devices.
• Technical Context: The technology at issue involves hardware-level methods for managing communication and power consumption in peripheral devices, a foundational element in modern point-of-sale payment terminals.
• Key Procedural History: This is a declaratory judgment action filed by Ingenico in response to a litigation campaign by NFE. NFE has filed multiple patent infringement lawsuits against Ingenico’s customers (including PPG Industries, Foot Locker, and AutoZone), alleging that their use of Ingenico's products constitutes infringement. Ingenico states it is contractually obligated to indemnify at least three of these customers. The complaint notes that four of the five asserted patents have expired.

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 Issued
2004-05-25	U.S. Patent No. 6,742,071 Issued
2005-01-11	U.S. Patent No. 7,373,531 Priority Date
2005-10-25	U.S. Patent No. 6,959,350 Issued
2006-02-07	U.S. Patent No. 6,996,727 Issued
2008-05-13	U.S. Patent No. 7,373,531 Issued
2025-12-09	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 February 10, 2004 (Compl. ¶12).

The Invention Explained

• Problem Addressed: The patent describes the problem of computer peripherals, such as a mouse, needing to support two different communication protocols: the legacy Personal System 2 (PS/2) protocol and the Universal Serial Bus (USB) protocol. Conventional solutions required additional external components and complex firmware, increasing cost and circuit board space ('201 Patent, col. 1:26-49).
• The Patented Solution: The invention proposes a single integrated circuit that can automatically detect which protocol a connected bus is using and configure itself to communicate accordingly. This is accomplished using a "dual mode interrupt detection circuit" and a "dual mode driver circuit" that share a single set of physical pins for both protocols, thereby simplifying the peripheral's design ('201 Patent, Abstract; Fig. 1; col. 2:51-64).
• Technical Importance: This single-chip solution aimed to reduce the manufacturing cost and complexity for computer peripherals that needed backward compatibility with older PS/2 ports while also supporting the then-emerging USB standard ('201 Patent, col. 1:50-55).

Key Claims at a Glance

• The complaint asserts non-infringement of independent method claim 14 (Compl. ¶69).
• Essential elements of claim 14 include:
  • detecting a signaling protocol of a bus connected to an integrated circuit that operates in a plurality of signaling protocols; and
  • configuring said integrated circuit to communicate in one of said plurality of signaling protocols in response to said detected signaling protocol of said connected bus, wherein each of said selected protocols operate over said connected bus through a single set of pins.
• The complaint does not explicitly reserve the right to assert non-infringement of dependent claims.

U.S. Patent No. 6,742,071 - "Real-time I/O processor used to implement bus interface protocols"

Issued May 25, 2004 (Compl. ¶15).

The Invention Explained

• Problem Addressed: The patent addresses the limitations of conventional bus interfaces, which were either designed for a single, specific protocol (limiting marketability) or were user-programmable with fixed wait-states (lacking the flexibility for complex or changing protocols) ('071 Patent, col. 1:16-48).
• The Patented Solution: The invention describes a generic, programmable input/output (I/O) processor capable of implementing various bus protocols. It functions as a state machine that executes a simple instruction set (e.g., "wait N clocks," "branch on signal") stored in a memory or lookup table. This allows it to generate precise, real-time control signal waveforms required for different and complex bus interfaces, all from a single hardware design ('071 Patent, Abstract; Fig. 6; col. 2:52-65).
• Technical Importance: This architecture offered a flexible, software-driven method for a single chip to interface with multiple, evolving, and potentially proprietary bus standards, reducing the need for redesigning hardware for each new protocol ('071 Patent, col. 2:52-61).

Key Claims at a Glance

• The complaint asserts non-infringement of independent method claim 15 (Compl. ¶78).
• Essential elements of claim 15 include:
  • (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 said current state, at least one internal control signal of said first control signals and an input signal received from said external bus;
  • (C) driving at least one output control signal of said first control signals onto said external bus; and
  • (D) updating said current state to said next state.
• The complaint does not explicitly reserve the right to assert non-infringement of dependent claims.

U.S. Patent No. 6,959,350 - "Configurable USB Interface with Virtual Register Architecture"

Issued October 25, 2005 (Compl. ¶18).

• Technology Synopsis: This patent addresses the inefficiency of hard-coded USB endpoint configurations in interface controllers, which required different hardware versions for different peripheral devices ('350 Patent, col. 1:19-28). The invention provides an interface controller with a "virtual register architecture" where configuration parameters are stored in registers that can be dynamically updated by a device processor, allowing the interface to be configured "on-the-fly" for different endpoint layouts ('350 Patent, Abstract).
• Asserted Claims: The complaint identifies independent method claim 10 as exemplary (Compl. ¶87).
• Accused Features: The allegations center on the method by which the accused products receive and use configuration requests from a host to configure their interface controllers (Compl. ¶87).

U.S. Patent No. 6,996,727 - "Power Supply for Universal Serial Bus Interface with Programmable Bus Pullup Resistor"

Issued February 7, 2006 (Compl. ¶21).

• Technology Synopsis: This patent describes a power supply for a USB device designed to reduce power consumption. The device can operate in a standard mode or a low-power "power down" mode. In the power down mode, the main power supply is shut off, and a separate, programmable resistor provides the necessary current for the bus pullup resistor, significantly reducing overall current draw while maintaining bus state ('727 Patent, Abstract; col. 2:49-65).
• Asserted Claims: The complaint identifies independent apparatus claim 18 as exemplary (Compl. ¶96).
• Accused Features: The allegations relate to the power management functionality of the accused products, specifically their methods of reducing current consumption in different operational modes (Compl. ¶96).

U.S. Patent No. 7,373,531 - "Signal detection method...and electronic apparatus"

Issued May 13, 2008 (Compl. ¶24).

• Technology Synopsis: This patent discloses a method for reducing power consumption by detecting the absence of an active input signal. The invention uses a pair of series-connected transistors to detect a "through current" that flows only when the input signal is oscillating (i.e., switching between high and low levels). If this through current is not detected for a predetermined time, the device concludes the signal is static and outputs a power-saving signal ('531 Patent, Abstract).
• Asserted Claims: The complaint identifies independent method claim 2 as exemplary (Compl. ¶105).
• Accused Features: The allegations focus on the accused products' methods for detecting the state of an input signal (e.g., oscillating versus static) and controlling power consumption based on that determination (Compl. ¶105).

III. The Accused Instrumentality

Product Identification

The Accused Ingenico Products are identified as the Ingenico Lane/7000 and Lane/3000 payment terminals (Compl. ¶5).

Functionality and Market Context

These products are point-of-sale terminals used by retailers to process customer credit card transactions (Compl. ¶5). The complaint notes that NFE's infringement allegations in the underlying customer lawsuits focus on the inclusion of "an NXP PN512," which is described as an integrated circuit used for contactless communication (Compl. ¶36). The complaint includes several photographs of the accused terminals in commercial use at retailers such as PPG, Foot Locker, and AutoZone (Compl. ¶27, pp. 5-7). A photograph from the complaint against PPG shows an Ingenico Lane/7000 terminal in use at a retail counter (Compl. p. 5). Ingenico is described as a "leading provider of secure payment solutions," and the multiple lawsuits filed against its customers suggest the products have a significant market presence (Compl. ¶4, ¶27).

IV. Analysis of Infringement Allegations

As this is a complaint for declaratory judgment of non-infringement, the following tables summarize the infringement theories that Ingenico alleges NFE has asserted in other litigations. The complaint does not provide a detailed mapping of accused functionality to claim elements; it instead lists claim limitations that the accused products allegedly do not meet.

’201 Patent Infringement Allegations

Claim Element (from Independent Claim 14)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
detecting a signaling protocol of a bus connected to an integrated circuit that operates in a plurality of signaling protocols; and	The complaint does not provide sufficient detail for analysis of this element.	¶69	col. 2:51-55
configuring said integrated circuit to communicate in one of said plurality of signaling protocols in response to said detected signaling protocol of said connected bus...	The complaint does not provide sufficient detail for analysis of this element.	¶69	col. 2:51-55
...wherein each of said selected protocols operate over said connected bus through a single set of pins.	The complaint does not provide sufficient detail for analysis of this element.	¶69	col. 6:19-20

• Identified Points of Contention:
  • Scope Questions: The '201 Patent is titled "Dual Mode USB-PS/2 Device" and its specification focuses entirely on automatically switching between these two specific protocols. A primary point of contention may be whether the term "plurality of signaling protocols" can be construed to read on the modern communication interfaces used by the accused terminals (e.g., USB and NFC), which differ from the legacy PS/2 protocol.
  • Technical Questions: Ingenico's denial of infringement raises the question of what evidence NFE has presented in the customer lawsuits to show that the accused terminals "automatically" detect and switch between different signaling protocols using a shared set of pins in the manner described by the patent (Compl. ¶69).

’071 Patent Infringement Allegations

Claim Element (from Independent Claim 15)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
(A) generating a plurality of first control signals in response to a current state of a processor;	The complaint does not provide sufficient detail for analysis of this element.	¶78	col. 8:30-40
(B) progressing to a next state based on said current state, at least one internal control signal of said first control signals and an input signal received from said external bus;	The complaint does not provide sufficient detail for analysis of this element.	¶78	col. 7:40-44
(C) driving at least one output control signal of said first controls signals onto said external bus; and	The complaint does not provide sufficient detail for analysis of this element.	¶78	col. 7:40-44
(D) updating said current state to said next state.	The complaint does not provide sufficient detail for analysis of this element.	¶78	col. 7:40-44

• Identified Points of Contention:
  • Scope Questions: The '071 Patent claims a specific, instruction-driven method for a real-time I/O processor to create custom bus interfaces using a state machine. A key question will be whether the operation of the standardized communication chips (e.g., the NXP PN512) in the accused terminals falls within the scope of this claimed method, or if they use a fundamentally different, non-state-based architecture.
  • Technical Questions: What evidence demonstrates that the accused products' processors execute the specific sequence of steps required by claim 15: generating control signals from a "current state," progressing to a "next state" based on a combination of internal and external signals, and then updating the state, all as part of implementing a bus protocol? Ingenico’s complaint suggests they do not perform this sequence (Compl. ¶78).

V. Key Claim Terms for Construction

• The Term: "plurality of signaling protocols" ('201 Patent, Claim 14)

• Context and Importance: This term's scope is central to the infringement analysis for the '201 Patent. The dispute may turn on whether the term is limited to the specific USB and PS/2 protocols discussed in the patent or if it can be read more broadly to encompass any two protocols, such as the USB and NFC protocols potentially used by the accused terminals.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself does not explicitly name the protocols, referring only to a "plurality."
  • Evidence for a Narrower Interpretation: The patent's title, "Dual Mode USB-PS/2 Device", abstract, and entire detailed description exclusively use the combination of USB and PS/2 as the context for the invention, which may support an interpretation limiting the scope to those specific protocols or ones with a similar legacy-to-modern relationship ('201 Patent, Title; Abstract; col. 1:19-25).

• 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" ('071 Patent, Claim 15)

• Context and Importance: This term defines the core decision-making logic of the claimed real-time processor. Practitioners may focus on this term because the infringement question may depend on whether the processors in the accused products make state transitions based on this specific combination of inputs in the manner described, or if they use a different architecture for protocol implementation.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: In isolation, the language could be argued to describe any digital logic that changes state based on inputs.
  • Evidence for a Narrower Interpretation: The specification describes a specific architecture where a state machine's progression is governed by instructions from a memory or lookup table that explicitly define the next state based on the current state vector and various inputs ('071 Patent, Fig. 6; col. 8:37-44). This suggests a particular, programmed state progression rather than a generic processor operation.

VI. Other Allegations

• Indirect Infringement: As a declaratory judgment action, the complaint does not allege infringement. However, it notes that NFE's lawsuits against Ingenico's customers allege infringement based on the customers' "use of Accused Ingenico Products" when they "are used as intended" (Compl. ¶27, ¶34). This suggests NFE's underlying theory likely includes claims of induced infringement against Ingenico, where Ingenico is alleged to have provided instructions or encouragement for its customers to use the products in an infringing manner.
• Willful Infringement: The complaint does not contain allegations of willfulness. It seeks to resolve the controversy before such claims might be formally asserted against Ingenico. The complaint establishes that NFE has filed lawsuits against Ingenico's customers, which serves to establish knowledge of the patents as of the filing of those suits (Compl. ¶27-28).

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

1. Scope and Technological Evolution: A core issue will be one of definitional scope: can claim terms from patents directed at solving problems of a past technological era (e.g., ensuring interoperability between legacy PS/2 and modern USB) be construed to cover current technologies (such as NFC contactless communication) that operate under different principles and solve different problems?
2. Architectural Congruence: A key evidentiary question will be one of operational mismatch: do the standardized processors and communication chips within the accused terminals operate according to the specific, instruction-driven, real-time state machine architecture required by the ’071 Patent, or do they utilize conventional, hardwired logic for implementing standard protocols, suggesting a fundamental difference in their method of operation?
3. Declaratory Judgment Justiciability: Procedurally, an initial question will be whether NFE's litigation campaign against Ingenico’s customers creates a sufficiently "actual controversy" between NFE and Ingenico itself to support jurisdiction for this declaratory judgment action, particularly given Ingenico's alleged indemnification obligations.