PTAB

IPR2016-00692

NXP Semiconductors USA, Inc. v. NFC Technology, LLC

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1. Case Identification

  • Patent #: 7,905,419
  • Filed: March 1, 2016
  • Petitioner(s): NXP Semiconductors USA, Inc.; Freescale Semiconductor, Inc. dba NXP Semiconductors
  • Patent Owner(s): Inside Secure
  • Challenged Claims: 1, 3, 4, 7, 11, 12, 14, 15, 18, and 22

2. Patent Overview

  • Title: Method for Routing Outgoing and Incoming Data in an NFC Chipset
  • Brief Description: The ’419 patent discloses a method and system for routing data within a chipset, particularly for Near Field Communication (NFC). The invention uses a controller and a routing table to manage data paths between a host processor and an NFC interface, employing a "routing channel number" in packet headers to determine the destination, thereby aiming to reduce data transmission overhead.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, 11, 12, 14, and 22 are obvious over Piikivi in view of IBM.

  • Prior Art Relied Upon: Piikivi (Application # 2004/0065734) and IBM (Asynchronous Transfer Mode (ATM) Technical Overview (2d ed. 1995)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Piikivi disclosed the core structural elements of the challenged claims: a method for routing data in a chipset arranged in a portable device (a "mobile terminal"), which includes at least one host processor (a "contact smart card" communicating via a card reader chip), a controller (a "card access module and router"), and an NFC-type contactless interface (an RF interface with a modulator/demodulator). However, Piikivi did not specify a particular routing protocol. Petitioner asserted that IBM taught a well-known, connection-oriented protocol, Asynchronous Transfer Mode (ATM), that remedies this deficiency. IBM disclosed using a controller ("ATM switch") to route data packets ("cells") between endpoints by establishing a connection and using a routing table. The routing table maps an inbound connection to an outbound one using compact identifiers in the cell header—a Virtual Path Identifier (VPI) and a Virtual Channel Identifier (VCI)—which function as the claimed "routing channel number." This method avoids including a full destination address in every packet header, directly addressing the "overheading" problem the ’419 patent purports to solve. The combination involves applying IBM's ATM routing protocol to the hardware architecture described in Piikivi.
    • Motivation to Combine: A person of ordinary skill in the art (POSA) implementing Piikivi’s system would have been motivated to look for an efficient routing protocol. Petitioner contended that IBM’s ATM protocol was an obvious choice because it was a universal networking standard designed to handle diverse data traffic efficiently and was known to solve the exact overhead problem identified in the ’419 patent. The petition highlighted fundamental similarities between the systems, such as the use of logical channels, a centralized router, and header identifiers to direct traffic, which would have made the combination intuitive and logical for a POSA. Applying IBM's established routing techniques to Piikivi's mobile terminal architecture was presented as a routine and predictable design choice.
    • Expectation of Success: Petitioner asserted a POSA would have had a high expectation of success. The ATM protocol was a mature, well-documented standard, and its application for routing data within devices over various interfaces (including those similar to Piikivi's) was known in the art.

Ground 2: All Challenged Claims are obvious over Piikivi in view of Takayama in further view of IBM.

  • Prior Art Relied Upon: Piikivi (Application # 2004/0065734), Takayama (Application # 2005/0077356), and IBM (Asynchronous Transfer Mode (ATM) Technical Overview (2d ed. 1995)).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination of Piikivi and IBM by adding Takayama. Petitioner argued that Takayama taught an advanced NFC communication apparatus capable of operating with multiple protocols (e.g., ISO 14443-A/B, FeliCa) and modes (active/passive) by using multiple, selectable modulator and demodulator units. This addresses limitations in the ’419 patent concerning the configuration of the NFC interface for different communication standards. In the proposed combination, a POSA would use the Piikivi/IBM framework to establish and route data paths but would incorporate Takayama’s teachings to make the NFC interface more versatile. Specifically, information about the required protocol and mode for a given communication, as taught by Takayama, would be included as configuration parameters in the routing table taught by IBM. When data is routed to the NFC interface, the controller would use these parameters to select the appropriate modulator/demodulator unit.
    • Motivation to Combine: A POSA would have been motivated to combine Takayama’s teachings to enhance the Piikivi/IBM system, making it compatible with a wider range of existing and future NFC standards. Takayama explicitly taught the advantages of a flexible interface capable of handling a plurality of transfer rates and protocols. Petitioner argued it would be an obvious design choice to incorporate this flexibility into Piikivi’s NFC interface. The controller would be configured to use the routing table not only for routing but also to store and retrieve the necessary configuration data (mode, protocol) to correctly set up the NFC interface for each transaction, a logical extension of the routing table's function.
    • Expectation of Success: The combination was presented as a predictable integration of complementary technologies. Combining a known routing protocol (IBM) with a flexible, multi-protocol physical interface (Takayama) within a known hardware environment (Piikivi) would have been a routine task for a POSA, yielding the expected result of a more robust and versatile NFC system.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the IPR is not barred by the one-year statutory time limit under §315(a). While a prior civil action challenging the validity of the ’419 patent had been filed (NXP USA I), Petitioner asserted that this action was dismissed without prejudice for lack of personal jurisdiction. Citing case law, Petitioner contended that such a dismissal is not a judgment on the merits and therefore does not trigger the statutory bar, making the patent eligible for IPR.

5. Relief Requested

  • Petitioner requested that the Patent Trial and Appeal Board institute an inter partes review and enter a judgment finding challenged claims 1, 3, 4, 7, 11, 12, 14, 15, 18, and 22 of the ’419 patent unpatentable and canceled.