Dell Inc v. NXP BV

1. Case Identification

• Case #: IPR2015-01271
• Patent #: 8,412,185
• Filed: May 27, 2015
• Petitioner(s): Dell Inc.
• Patent Owner(s): NXP BV.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Method and Apparatus for Switching Devices Using Near Field Communication
• Brief Description: The ’185 patent describes methods for transferring an active online service, such as a web session or voice call, from a first user device to a second user device. The transfer is initiated over a Near Field Communication (NFC) link, which can also be used to exchange identifiers to establish a separate, higher-bandwidth wireless connection for the data transfer.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 1-3, 5, 7-10, and 12-21 are anticipated by Rosenblatt under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Rosenblatt (Application # 2010/0082567).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rosenblatt discloses every limitation of the challenged claims. Rosenblatt describes a system for a simplified transfer of a "device state" (e.g., open web pages, online videos, which constitute an "online service") from a "working device" to a "personal device." The transfer is initiated by bringing the devices into close proximity to establish an NFC link. Rosenblatt further taught using this NFC link to exchange network configuration data (e.g., Wi-Fi SSID, Bluetooth serial numbers) to establish a higher-bandwidth wireless connection (e.g., Wi-Fi, PAN) for transferring "device state pointers" like URLs. Upon receiving this information, the personal device independently executes the online service, for example, by opening the transferred URL in its own browser.

Ground 2: Obviousness - Claims 4, 6, and 11 are obvious over Rosenblatt in view of Ziv under 35 U.S.C. §103.

• Prior Art Relied Upon: Rosenblatt (Application # 2010/0082567) and Ziv (Application # 2007/0234048).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Rosenblatt provides the primary framework for transferring an online session using an NFC link to establish a higher-bandwidth connection, as detailed in Ground 1. This combination addresses claims requiring specific online service types and subsequent actions. Ziv was argued to supply the missing elements, specifically by teaching the transfer of a telephone session (a "voice session" as required by claim 4) between devices. Ziv also explicitly disclosed that upon transferring the session, the connection on the first device is terminated or degraded, which corresponds to the "deactivating" limitation of claim 6.
  • Motivation to Combine: A POSITA would combine Rosenblatt and Ziv because both references address the same field of endeavor: improving user convenience by seamlessly transferring an active session between devices. A POSITA would be motivated to adapt Rosenblatt’s general NFC-based transfer system to handle the specific type of online service (a voice session) taught by Ziv. Modifying Rosenblatt’s system to include Ziv's teachings on session termination would be a predictable solution to ensure a smooth and non-duplicative user experience.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references, as it involved applying a known type of session (voice call from Ziv) to a known session transfer mechanism (NFC-initiated transfer from Rosenblatt).

Ground 3: Obviousness - Claims 1, 7, and 8 are obvious over Ziv in view of Geurts under §103.

• Prior Art Relied Upon: Ziv (Application # 2007/0234048) and Geurts (International Publication No. WO 2005/109829).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative in the event Patent Owner swears behind Rosenblatt. Petitioner argued that Ziv discloses a method for transferring an online session, such as a voice call or streaming media, between two devices by bringing them into proximity to establish a "short-range link." However, Ziv is not specific that this link must be NFC. Geurts was asserted to cure this by explicitly teaching the use of NFC, initiated by a "physical gesture interaction" like proximity, to transfer an active software application from a first device to a second.
  • Motivation to Combine: A POSITA seeking to implement the proximity-based session transfer taught in Ziv would have been motivated to use the well-known and standardized NFC technology disclosed in Geurts. Both references teach using proximity to trigger a handoff. Geurts demonstrates that NFC is a known and suitable short-range communication method for this exact purpose. Therefore, it would have been an obvious design choice to substitute the specific NFC link from Geurts for the more generic "short-range link" in Ziv to achieve a predictable and reliable system.
  • Expectation of Success: The combination was asserted to be predictable, as it involved the simple substitution of one known short-range communication technology (NFC) for another to perform the same function of initiating a session transfer.

4. Key Claim Construction Positions

• "Deactivating" (Claim 6): Petitioner proposed this term be construed to mean "logging out or placing in an offline mode." This construction was based on disclosures in the ’185 patent specification and was argued to be met by Ziv’s teaching of terminating the session on the first device.
• "Notice of Availability of User Data" (Claims 16, 21): Petitioner proposed this phrase be construed as a "report of available user data." This construction was argued to encompass the "list of partial device state pointers" disclosed in Rosenblatt, which informs the second device of data available for access on a remote platform.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-21 of the ’185 patent as unpatentable.