PTAB

IPR2016-00692

NXP Semiconductors USA Inc v. NFC Technology LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method for Routing Outgoing and Incoming Data in an NFC Chipset
  • Brief Description: The ’419 patent discloses methods and systems for routing data within a chipset, which comprises at least one host processor, a controller, and a Near Field Communication (NFC)-type contactless interface, typically arranged in a portable device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Piikivi in view of IBM - 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 (a 1995 technical overview of Asynchronous Transfer Mode).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Piikivi disclosed the structural elements of the claimed invention, including a portable "mobile terminal" containing a "contact smart card" (host processor), a "card access module and router" (controller), and an RF interface (NFC interface). However, Piikivi did not specify a detailed routing protocol. Petitioner asserted that IBM taught the claimed routing method through its description of the Asynchronous Transfer Mode (ATM) protocol. IBM’s protocol used "Virtual Path Identifiers" (VPI) and "Virtual Channel Identifiers" (VCI) in cell headers, which function as the claimed "routing channel number." An "ATM switch" in IBM (analogous to Piikivi's router) used these identifiers to look up routing information in a table to forward data between "ATM endpoints" (analogous to Piikivi's host processor and RF interface).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Piikivi’s hardware structure with IBM’s well-established ATM routing protocol. The combination was motivated by the functional similarities between the systems; both used logical channels, created connections dynamically, and employed a central router/switch that used header identifiers to route data. Furthermore, IBM’s protocol was known to solve the "overhead" problem of long headers, an issue also identified in the ’419 patent, by using short, connection-oriented identifiers.
    • Expectation of Success: A POSA would have a reasonable expectation of success because ATM protocols were known to be applicable for routing data within devices, not just across large networks. Applying IBM's established protocol to Piikivi's hardware architecture was presented as a routine and predictable implementation choice.

Ground 2: Obviousness over Piikivi and Takayama in view of IBM - Claims 1, 3, 4, 7, 11, 12, 14, 15, 18, and 22 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 (a 1995 technical overview of Asynchronous Transfer Mode).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground incorporated the combination of Piikivi and IBM from Ground 1 and added Takayama to address limitations related to multi-protocol and multi-mode communication. Petitioner argued that Takayama taught an NFC apparatus capable of communicating over various protocols (e.g., ISO 14443-A/B, FeliCa) and modes (active/passive) by using multiple, selectable modulating and demodulating units. Takayama further disclosed that an application could specify the desired protocol and mode for a given transmission, which corresponds to the claimed "configuration parameters" for the contactless interface.
    • Motivation to Combine: A POSA building the system of Piikivi and IBM would be motivated to incorporate Takayama’s teachings to enhance the device’s versatility and forward compatibility. Piikivi’s system was intended for use with different types of smart cards and external systems; therefore, designing the NFC interface to support multiple communication standards, as taught by Takayama, would be an obvious and advantageous improvement. The combination would allow the router to use mode and protocol information as criteria for routing data, as recited in dependent claims.
    • Expectation of Success: Integrating Takayama's multi-protocol front-end with the established routing back-end from the Piikivi/IBM combination would be a straightforward engineering task for a POSA, leading to the predictable result of a more capable and flexible NFC device.

4. Key Claim Construction Positions

  • Petitioner asserted that the challenged claims were unpatentable under the Broadest Reasonable Interpretation (BRI) standard, regardless of specific constructions. However, Petitioner noted constructions from related litigation that should be considered, including:
    • "source point located in a/the host processor" means "software in a host processor through which data is sent."
    • "destination point" means "software through which data is received."
    • "routing table" means "a collection of data including at least one routing channel number and corresponding routing parameter(s)."

5. Key Technical Contentions (Beyond Claim Construction)

  • A central technical argument was the direct analogy between the hardware components of Piikivi's mobile terminal and the logical components of IBM's ATM network architecture. Petitioner contended that a POSA would readily map:
    • Piikivi's "card access module and router" to IBM's "ATM switch."
    • Piikivi's "contact smart card" and "RF interface" to IBM's "ATM endpoints."
    • IBM's VPI/VCI values in an ATM cell header to the claimed "routing channel number."
  • This mapping formed the basis for arguing that it was obvious to apply a well-known network routing protocol (IBM's ATM) to an intra-device communication system (Piikivi's chipset).

6. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1, 3, 4, 7, 11, 12, 14, 15, 18, and 22 of the ’419 patent as unpatentable under 35 U.S.C. §103.