PTAB

IPR2016-00681

NXP Semiconductors USA Inc v. NFC Technology LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Contactless Integrated Circuit Reader
  • Brief Description: The ’770 patent discloses a contactless integrated circuit (CIC) reader capable of operating in two modes. In the first mode, it functions as a standard reader communicating with a transponder via inductive coupling. In the second, passive mode, the reader simulates a CIC transponder to communicate with other readers using load modulation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gunnarsson and the RFID Handbook - Claims 1-3, 6-8, 10, 11, 28-31, 34, and 35 are obvious over Gunnarsson in view of the RFID Handbook.

  • Prior Art Relied Upon: Gunnarsson (WO 98/08311) and the RFID Handbook (published 1999, "RH-E").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gunnarsson disclosed the core invention: a portable, dual-mode RFID reader that communicates with transponders in a first mode and simulates a transponder to communicate with other readers in a second mode. However, Gunnarsson implemented this concept in a long-range, microwave-based system using backscattering. The challenged claims of the ’770 patent require a short-range, inductively coupled system using load modulation. Petitioner asserted that the RFID Handbook, a seminal text in the field, explicitly taught that the choice between microwave-based coupling (using backscattering) and inductive coupling (using load modulation) was a simple, well-understood design choice based on the desired communication range.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Gunnarsson’s dual-mode reader concept with the inductive coupling method from the RFID Handbook for several reasons. First, to apply Gunnarsson's solution for automated data collection to the vast majority (90-95%) of existing RFID systems, which were inductively coupled. Second, for applications like public transport fare cards where a shorter communication range is required to prevent accidentally reading multiple transponders simultaneously. Third, inductive systems were less complex and less expensive to implement.
    • Expectation of Success: The RFID Handbook presented inductive and microwave coupling as known, interchangeable alternatives with predictable results. A POSITA would have had a high expectation of success in substituting the well-known inductive coupling components for the microwave components in Gunnarsson's device to achieve the desired short-range functionality.

Ground 2: Obviousness over Gunnarsson, the RFID Handbook, and Bashan - Claims 10, 28-31, 34, and 35 are obvious over Gunnarsson, the RFID Handbook, and Bashan.

  • Prior Art Relied Upon: Gunnarsson (WO 98/08311), the RFID Handbook (RH-E), and Bashan (Patent 6,045,043).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Gunnarsson and the RFID Handbook to address claims requiring a specific mechanism for switching between operating modes. Claims 10 and 28 recite switching modes based on a stored bit or flag. Bashan disclosed a data transaction card with both contact and contactless modes that switched between them using a "mode status flag" stored in a register (EEPROM).
    • Motivation to Combine: Petitioner contended that using a stored bit or flag was one of the most common and straightforward methods for controlling the operational mode of an electronic circuit. A POSITA implementing the dual-mode reader of Gunnarsson (as modified by the RFID Handbook) would have found it an obvious and simple design choice to incorporate Bashan’s well-known flag-based switching mechanism to control the transition between reader mode and transponder-simulation mode.
    • Expectation of Success: Implementing a flag-based control system was a routine task in digital logic design, and a POSITA would have expected this simple, known technique to function predictably within the combined Gunnarsson/RFID Handbook system.

Ground 3: Obviousness over Gunnarsson, the RFID Handbook, and Vega - Claims 1-3, 6-8, 10, 11, 29-31 are obvious over Gunnarsson, the RFID Handbook, and Vega.

  • Prior Art Relied Upon: Gunnarsson (WO 98/08311), the RFID Handbook (RH-E), Vega ’407 (Patent 6,282,407), and Vega ’681 (Patent 6,275,681).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed limitations related to achieving load modulation via "active transmission," where the device simulating a transponder generates its own carrier signal rather than passively modulating the reader’s field. Vega taught an "active transmission" technique for inductively coupled transponders to achieve a longer and more robust read range than standard passive load modulation, without the excessive range of microwave systems. Vega described transmitting pulses of a carrier signal to simulate load modulation, similar to a method described in the ’770 patent.
    • Motivation to Combine: A POSITA modifying Gunnarsson’s device would be motivated to incorporate Vega’s active transmission to improve performance in the second (transponder-simulation) mode. For applications involving transferring large amounts of data between readers, a more robust connection with a slightly longer range (e.g., 10 inches vs. 1-3 inches) would be desirable to prevent interruptions from hand movements, while still avoiding the problems of a full microwave system.
    • Expectation of Success: Vega demonstrated that active transmission was a known technique for inductively coupled systems. A POSITA would have reasonably expected to successfully integrate this known transmission method into the inductively coupled version of Gunnarsson’s reader to achieve a predictable improvement in connection robustness.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 10, 29-31 by combining all prior art references (Gunnarsson, RFID Handbook, Bashan, and Vega) to argue that a POSITA would have found it obvious to create a dual-mode, inductively coupled reader that uses a stored flag for mode switching and active transmission for communication in its transponder mode.

4. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-3, 6-8, 10, 11, 28-31, 34, and 35 of the ’770 patent as unpatentable under 35 U.S.C. §103.