PTAB

IPR2016-00682

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 dual-mode contactless integrated circuit (CIC) reader. In a first mode, it functions as a standard reader communicating with transponders via inductive coupling. In a second, passive mode, it simulates a transponder to communicate with other readers using load modulation, allowing for wireless data collection from fixed terminals.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gunnarsson and the RFID Handbook - Claims 13-15, 18-20, 23-25, 36, 37, 40, 42, 43, and 46 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” / 1998, “RH-G”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gunnarsson disclosed the core invention: a dual-mode portable reader that communicates with transponders in a first mode and simulates a transponder to communicate with other readers in a second mode. However, Gunnarsson taught a microwave-based system using backscattering for communication. The RFID Handbook allegedly established that inductive coupling was the overwhelmingly more common (90-95% of systems), less expensive, and well-understood alternative to microwave coupling for short-range applications. The Handbook explicitly taught that load modulation is the standard technique for inductively coupled systems, just as backscattering is for microwave systems.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine these references to improve data collection in the vast installed base of inductively coupled systems (e.g., door access control). A POSA would have recognized the benefits of Gunnarsson’s dual-mode reader for avoiding manual data collection and would have found it obvious to implement that solution using inductive coupling—the dominant technology in the field—instead of microwave coupling. This modification would also be desirable in applications like public transit where the long range of microwave systems is problematic, a specific design trade-off discussed in the RFID Handbook.
    • Expectation of Success: Success was expected because the RFID Handbook presented the choice between microwave/backscattering and inductive/load modulation as a routine design choice based on desired range, with predictable outcomes. Swapping Gunnarsson's microwave communication elements for the well-known inductive coupling elements described in the Handbook would have been a straightforward implementation.

Ground 2: Obviousness over Gunnarsson, the RFID Handbook, and Vega - Claims 14, 15, 23-25, 36, 37, 40, 42, 43, and 46 are obvious over Gunnarsson in view of the RFID Handbook and Vega.

  • Prior Art Relied Upon: Gunnarsson (WO 98/08311), the RFID Handbook, Vega ’407 (Patent 6,282,407), and Vega ’681 (Patent 6,275,681).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Ground 1 by adding the teachings of Vega to the inductively-coupled, dual-mode reader of Gunnarsson-plus-Handbook. Certain challenged claims required achieving load modulation "as if" performed by a transponder switch, without actually adding such a switch. Petitioner argued Gunnarsson already taught this by reusing existing reader circuitry to vary impedance in its second mode. Vega was introduced to teach an "active transmission" technique where a transponder uses its own power to transmit a modulated signal, simulating switch-based load modulation but achieving a greater read range. Vega ’681, incorporated by reference into Vega ’407, explicitly disclosed implementing active transmission in inductively coupled systems.
    • Motivation to Combine: After modifying Gunnarsson to use inductive coupling per Ground 1, a POSA would have been motivated to incorporate Vega's active transmission to improve performance. For data transfer between two readers (Gunnarsson's second mode), the longer and more robust connection provided by active transmission would be highly desirable compared to passive load modulation, reducing interruptions due to movement while retaining the benefits of inductive coupling.
    • Expectation of Success: Vega explicitly taught active transmission as a known method to increase read range in RFID systems. Because Vega ’681 disclosed its use in inductively coupled systems, a POSA would have had a high expectation of success in applying this technique to the modified Gunnarsson reader to achieve the predictable result of a more robust communication link.

4. Key Technical Contentions

  • Interchangeability of RFID Coupling Methods: A central contention underlying all grounds was that the choice between microwave-based coupling (using backscattering) and inductive coupling (using load modulation) was not an inventive step, but rather a well-known, predictable, and routine design choice for a POSA based on application-specific requirements like communication range, cost, and compatibility with existing systems. Petitioner asserted the RFID Handbook established this as "textbook knowledge."
  • Simulated Load Modulation: Petitioner contended that achieving the effects of load modulation without a dedicated transponder switch (the "as if" limitation) was known in the art. Gunnarsson taught reusing reader modulation circuits to vary impedance, and Vega taught using "active transmission" to generate a signal that a reader detects as if it came from a conventional load modulation switch.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 13-15, 18-20, 23-25, 36, 37, 40, 42, 43, and 46 of the ’770 patent as unpatentable under §103.