DCT

4:25-cv-01429

Near Field Electronics LLC v. Oxford Industries Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:

  • Case Identification: 4:25-cv-01429, E.D. Tex., 12/19/2025

  • Venue Allegations: Venue is based on Defendant maintaining regular and established places of business for its Tommy Bahama retail brand within the Eastern District of Texas.

  • Core Dispute: Plaintiff alleges that credit card readers used by Defendant, which contain specific NXP near-field communication (NFC) components, infringe five patents related to integrated circuit design for multi-protocol communication, bus interface configuration, and power management.

  • Technical Context: The patents address foundational semiconductor-level technologies for enabling integrated circuits to flexibly interface with various communication standards, manage power consumption, and be configured for specific applications, which are critical in devices like modern payment terminals.

  • Key Procedural History: The complaint notes that four of the five patents-in-suit are expired. For these patents, Plaintiff seeks damages only for alleged infringement that occurred during a specific time period prior to their respective expiration dates, which will limit the scope of potential damages. For the single unexpired patent, Plaintiff alleges willful infringement based on knowledge acquired from 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 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
2021-11-21 U.S. Patent No. 6,742,071 Expired (per complaint)
2022-01-31 U.S. Patent No. 6,691,201 Expired (per complaint)
2022-04-14 U.S. Patent No. 6,996,727 Expired (per complaint)
2023-08-12 U.S. Patent No. 6,959,350 Expired (per complaint)
2025-12-19 Complaint Filed

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

U.S. Patent No. 6,691,201 - "Dual Mode USB-PS/2 Device"

The Invention Explained

  • Problem Addressed: The patent addresses the cost and complexity of peripheral devices that needed to support multiple communication protocols, such as both Universal Serial Bus (USB) and PS/2. Conventional solutions required additional external components, used more circuit board space, and needed complex firmware, which could compromise performance (’201 Patent, col. 1:40-50).
  • The Patented Solution: The invention is a single integrated circuit designed to automatically select between a plurality of signaling protocols. It achieves this by detecting the protocol of a connected bus and configuring its operation accordingly, using a single, shared set of input/output (I/O) pins for the different protocols (’201 Patent, Abstract; col. 1:55-62). This "single chip solution" is intended to eliminate the need for extra components and simplify the overall peripheral design (’201 Patent, col. 1:51-54).
  • Technical Importance: This integrated approach to multi-protocol support was aimed at reducing the manufacturing cost, physical size, and design complexity of computer peripherals.

Key Claims at a Glance

  • The complaint asserts independent method claim 14 (Compl. ¶31).
  • Claim 14 requires the essential steps of:
    • (A) detecting a signaling protocol of a bus connected to an integrated circuit that operates in a plurality of signaling protocols; and
    • (B) configuring the integrated circuit to communicate in one of the protocols in response to the detection, where the selected protocols operate over the bus through a single set of pins.
  • The complaint reserves the right to amend its infringement analysis (Compl. ¶32).

U.S. Patent No. 6,742,071 - "Real-time I/O Processor Used to Implement Bus Interface Protocols"

The Invention Explained

  • Problem Addressed: The patent identifies shortcomings in conventional bus interfaces. Protocol-specific interfaces lacked flexibility to adapt to new standards, while user-programmable interfaces were often difficult to program and could not implement complex signaling because they relied on a fixed number of "wait-states" (’071 Patent, col. 1:28-48).
  • The Patented Solution: The invention is a "real-time input/output (I/O) processor," also termed a general-purpose interface (GPIF), that acts as a master device to control communication with external devices. It uses a limited instruction set to generate interface-specific waveforms and respond to external events in real time, allowing it to support multiple or evolving bus protocols flexibly (’071 Patent, col. 3:42-48; col. 5:5-9). This architecture enables decisions and outputs to be changed on each clock cycle, facilitating higher-speed operation compared to traditional microprocessor-based I/O systems (’071 Patent, col. 6:4-16).
  • Technical Importance: This technology provided a programmable hardware solution that could adapt to various bus protocols, reducing the need for costly and time-consuming hardware redesigns for each new or custom interface standard.

Key Claims at a Glance

  • The complaint asserts independent method claim 15 (Compl. ¶36).
  • Claim 15 requires the essential steps of:
    • (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 and input signals 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 amend its infringement analysis (Compl. ¶37).

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

  • Technology Synopsis: The patent addresses the inefficiency of hard-coded USB endpoint configurations in interface controllers, which required writing and maintaining distinct Hardware Description Language (HDL) code for each variation (Compl. ¶20). The invention provides a configurable bus interface controller that uses a single HDL-based configuration package to flexibly generate the necessary circuitry for different endpoint configurations, avoiding the need for separate HDL code for each endpoint (Compl. ¶19, ¶21).
  • Asserted Claims: The complaint asserts at least independent claim 10 (Compl. ¶41).
  • Accused Features: The functionality of the NXP PN512 NFC Front-End component within the accused credit card readers (Compl. ¶41).

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

  • Technology Synopsis: The patent addresses conventional power supplies that provided a constant voltage with no low-power mode (Compl. ¶25). The invention discloses a power supply architecture for a bus 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 required pullup function on the bus (Compl. ¶24).
  • Asserted Claims: The complaint asserts at least independent claim 18 (Compl. ¶46).
  • Accused Features: The functionality of the NXP PN512 NFC Front-End component within the accused credit card readers (Compl. ¶46).

U.S. Patent No. 7,373,531 - "Signal Detection Method, Frequency Detection Method, Power Consumption Control Method, Signal Detecting Device, Frequency Detecting Device, Power Control Consumption Device and Electronic Apparatus"

  • Technology Synopsis: The patent is directed to methods for detecting signals and power status in an electronic device by monitoring current flow (Compl. ¶28). The patented solution involves applying a signal to the gates of connected transistors and detecting the presence, frequency, or state of that signal based on whether a "through current" flows. This detection can then be used to reduce power consumption by stopping or reducing the power supply (Compl. ¶28, ¶29).
  • Asserted Claims: The complaint asserts at least independent claim 2 (Compl. ¶51).
  • Accused Features: The functionality of the NXP PN512 NFC Front-End component within the accused credit card readers (Compl. ¶51).

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 readers with similar components (Compl. ¶31, ¶36).

Functionality and Market Context

The complaint alleges these are NFC-capable credit card readers that Defendant uses "in the regular course of its business operations for processing NFC payment transactions" (Compl. ¶33). The infringement allegations focus on the technical functionality of the embedded NXP PN512 component rather than the end-user functionality of the payment terminal itself. The complaint does not provide further detail on the product's market position or commercial importance. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits for each asserted patent (e.g., Exhibit A-1 for the ’201 Patent) but does not include them with the filing (Compl. ¶32, ¶37). The narrative infringement theory is summarized below.

’201 Patent Infringement Allegations

The complaint alleges that when the accused credit card readers are used to process NFC payments, they perform every step of the method claimed in the ’201 Patent (Compl. ¶33). The implied theory is that the NXP PN512 component automatically detects the presence of an NFC-compliant device (e.g., a credit card or mobile phone) on a communication bus and configures itself to operate according to the NFC signaling protocol using a shared set of physical pins. The complaint does not specify what "plurality of signaling protocols" the device selects from, nor does it detail the technical mechanism for detection and configuration.

’071 Patent Infringement Allegations

Similarly, the complaint alleges that use of the accused readers for NFC transactions constitutes performance of the method claimed in the ’071 Patent (Compl. ¶38). The theory suggests that the NXP PN512 component functions as a real-time I/O processor that actively manages the NFC bus. This allegedly involves generating control signals, progressing through internal states based on bus inputs, driving output signals to the NFC device, and updating its internal state, thereby mapping to the steps of asserted claim 15.

Identified Points of Contention

  • Scope Questions:
    • For the ’201 Patent, a central question may be whether the accused device's functionality meets the "detecting" and "selecting" limitations. The analysis will question if the device actively detects and selects from a "plurality of signaling protocols," or if it operates in a predetermined, single-protocol mode (NFC) that may not meet those claim requirements.
    • For the ’071 Patent, a dispute may arise over whether the operation of a specialized, fixed-function chip like an NFC front-end can be properly characterized as the actions of a "processor" performing state-based method steps as claimed.
  • Technical Questions:
    • What evidence does the complaint provide that the accused NXP PN512 component performs an active "detection" of a signaling protocol before communicating, as required by claim 14 of the ’201 Patent?
    • What is the specific mapping between the operational steps of the accused NXP chip during an NFC transaction and the claimed method steps of "generating...control signals," "progressing to a next state," and "updating said current state" in claim 15 of the ’071 Patent?

V. Key Claim Terms for Construction

’201 Patent - Claim 14

  • The Term: "detecting a signaling protocol"
  • Context and Importance: This phrase is the predicate for the entire claimed method. Its construction will determine whether a device that initializes into a default communication mode upon connection infringes, or if an active, discriminatory step is required. Practitioners may focus on this term because the complaint's allegations are silent on how the accused device performs this "detecting" step.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent abstract describes an integrated circuit configured to "automatically select one of the plurality of signaling protocols in response to a signaling protocol of a connected bus" (’201 Patent, Abstract), which could be argued to encompass any form of automatic initialization upon connection.
    • Evidence for a Narrower Interpretation: The specification provides an example of "polling of data lines for detecting long initial both-lines-LOW state" to distinguish between protocols (’201 Patent, col. 2:1-2). This suggests "detecting" may require the identification of a specific electrical signal or state unique to a protocol, rather than a generic power-on or connection event.

’071 Patent - Claim 15

  • The Term: "processor"
  • Context and Importance: Although claim 15 is a method claim, its first step is tied to the "current state of a processor." The definition is critical because the accused instrumentality is an NFC front-end chip, not a general-purpose CPU. The dispute will likely center on whether such a specialized integrated circuit qualifies as a "processor" in the context of the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states an object of the invention is to provide a "single processor architecture to be implemented for a number of design specific devices" (’071 Patent, col. 1:54-56), which may support construing "processor" to include specialized processing circuits.
    • Evidence for a Narrower Interpretation: The specification describes the processor in one embodiment as executing instructions from a "user programmable instruction set" stored in memory, such as a PROM (’071 Patent, col. 7:42-46). This could support a narrower construction limited to devices that fetch and execute programmed instructions, potentially excluding fixed-function hardware logic.

VI. Other Allegations

Indirect Infringement

The complaint alleges induced infringement of the ’531 Patent. The alleged basis for inducement is Defendant's knowledge of the patent from the date of the complaint's filing, combined with its actions of "advertising and distributing the Accused Instrumentalities and providing instruction materials" (Compl. ¶55, ¶56).

Willful Infringement

The complaint alleges willful infringement of the ’531 Patent based on knowledge obtained from the lawsuit itself, stating, "Since the filing of this Complaint, Defendant's infringement has been willful" (Compl. ¶57).

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

  • Evidentiary Sufficiency: A primary issue will be one of evidentiary sufficiency. The complaint’s infringement theory rests on the assertion that the normal operation of an NXP PN512 chip inherently performs the specific, multi-step methods recited in the claims. A key question for the court will be whether Plaintiff can produce technical evidence to substantiate this, particularly for the "detecting a signaling protocol" step (’201 Patent) and the state-based "processing" steps (’071 Patent).
  • Definitional Scope: The case may turn on a question of definitional scope. Can claim terms like "processor," which the ’071 Patent specification links to executing a programmable instruction set, be construed broadly enough to read on the functionality of the accused NXP PN512, a specialized NFC front-end chip?
  • Damages Quantification: For the four expired patents, a central dispute will likely be the quantification of past damages. Since liability is confined to a closed period ending on each patent's expiration date, the focus will be on establishing the extent of use and the appropriate reasonable royalty for those specific, historical timeframes.