PTAB

IPR2016-00683

NXP Semiconductors USA Inc v. NFC Technology LLC

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1. Case Identification

2. Patent Overview

  • Title: Contactless Integrated Circuit Reader
  • Brief Description: The ’770 patent discloses a reader for contactless integrated circuits (CICs) capable of operating in two modes. The first is a standard reader mode for communicating with a CIC. The second is a transponder mode where the reader simulates a CIC, enabling it to communicate with a second reader via inductive coupling without mechanical contact.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ritter and RFID Handbook - Claims 1-3, 6-8, and 11 are obvious over Ritter in view of the RFID Handbook.

  • Prior Art Relied Upon: Ritter (WO 98/58510) and RFID Handbook (Radio-Frequency Identification Fundamentals and Applications, by Klaus Finkenzeller).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ritter discloses the core invention: a mobile device with a two-way inductive interface that operates in two modes. In the first mode, it functions as a reader, inductively feeding power to an external device (e.g., another mobile device). In the second mode, it is inductively fed by the external device, thereby simulating a transponder or CIC. Petitioner contended that the remaining limitations of the independent claim—such as the antenna circuit, excitation circuit, and method of modulating the excitation signal in reader mode—were conventional elements of any RFID system. These basic design elements were explicitly described in the RFID Handbook, a seminal reference in the field.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA), when implementing the dual-mode device taught by Ritter, would naturally and obviously consult a standard technical compendium like the RFID Handbook to incorporate the well-known and necessary components for an inductively coupled RFID system.
    • Expectation of Success: Combining the fundamental RFID system components described in the RFID Handbook with Ritter's dual-mode architecture was a predictable integration of known elements that would have yielded the expected operational device.

Ground 2: Obviousness over Ritter, RFID Handbook, and Vega - Claims 1-3, 6-8, and 11 are obvious over the combination of Ritter, the RFID Handbook, and Vega.

  • Prior Art Relied Upon: Ritter (WO 98/58510), 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 builds upon the primary combination of Ritter and the RFID Handbook to address the "as if" limitation present in claims 1-3, 6-8, and 11. This limitation requires that in the second (transponder) mode, the device generates a load modulation signal that is detected "as if" it were applied to a physical load modulation switch of a CIC. Petitioner asserted that Ritter teaches powering its device from a local battery to achieve greater transmission distance, which a POSA would understand as "active transmission." The Vega patents explicitly disclose using active transmission in a modulator for an inductively-coupled transponder to achieve this same benefit, teaching a circuit that transmits pulses of a carrier signal to simulate load modulation without a physical switch, thereby meeting the "as if" limitation.
    • Motivation to Combine: A POSA would combine these references because both Ritter and Vega expressly teach using powered, active transmission for the same purpose: to achieve a greater transmission range. A POSA seeking to implement the longer-range transmission suggested by Ritter would be motivated to incorporate the specific and advantageous active transmission modulator taught by Vega to achieve that known benefit.
    • Expectation of Success: The integration of Vega’s well-understood active transmission circuitry into Ritter’s dual-mode device was a predictable combination of known techniques to achieve a desired and expected improvement in performance.

Ground 3: Obviousness over Ritter, RFID Handbook, and Bashan - Claims 10, 28-31, 34, and 35 are obvious over the combination of Ritter, the RFID Handbook, and Bashan.

  • Prior Art Relied Upon: Ritter (WO 98/58510), RFID Handbook, and Bashan (Patent 6,045,043).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addresses the limitations of claims that require a specific mechanism for switching between the two operating modes. Specifically, claim 10 requires "one of a bit and a flag stored in a register to control switching" from one mode to the other. While Ritter teaches the dual-mode operation, Bashan discloses the specific switching implementation. Bashan teaches a data transaction card with both contact and contactless modes of operation that uses a programmable "mode status flag CM" to dictate its manner of operation.
    • Motivation to Combine: A POSA implementing the dual-mode functionality of Ritter’s device would need a mechanism to switch between modes. Bashan, which relates to the same field of RFID communication, provides an explicit teaching of using a simple and straightforward bit or flag for this exact purpose. This made it an obvious and routine design choice for implementing Ritter's device.
    • Expectation of Success: A POSA would have had a high expectation of success in using a standard, programmable flag as taught by Bashan to control the switching between the two operating modes in Ritter's device, as this was a common and predictable method for controlling circuit operations.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 10, 29-31 based on the combination of Ritter, the RFID Handbook, Bashan, and the Vega references, incorporating the teachings of all cited prior art.

4. Relief Requested

  • Petitioner requests institution of an inter partes review 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.