Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 29
`
`Entered: August 30, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NXP USA, INC.,
`Petitioner,
`
`v.
`
`INSIDE SECURE and NFC TECHNOLOGY, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00681
`Patent 7,098,770 B2
` ____________
`
`
`
`Before KEN B. BARRETT, PATRICK M. BOUCHER, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2016-00681
`Patent 7,098,770 B2
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`I. INTRODUCTION
`NXP USA, Inc.1 (“NXP”) filed a Corrected Petition for inter partes
`review of claims 1–3, 6–8, 10, 11, 28–31, 34, and 35 of U.S. Patent No.
`7,098,770 B2 (Ex. 1001, “the ’770 patent”). Paper 5 (“Pet.”). On
`September 2, 2016, we issued a Decision granting institution of inter partes
`review of claims 1–3, 6–8, 10, 11, 28–31, 34, and 35 of the ’770 patent on
`certain of the grounds asserted. Paper 12 (“Dec. on Inst.”), 45. Exclusive
`licensee NFC Technology, LLC (“NFCT”)2 then filed a Patent Owner’s
`
`
`1 According to updated mandatory notice information filed under 37 C.F.R.
`§ 42.8, “effective November 7, 2016, original petitioner NXP
`Semiconductors USA, Inc. merged with and into original petitioner
`Freescale Semiconductor, Inc., which then changed its name to ‘NXP USA,
`Inc.’” Paper 20, 1. We have updated the caption accordingly.
`
`2 U.S. Patent and Trademark Office assignment records indicate that the
`inventors assigned the ’770 patent to Inside Technologies, in an assignment
`recorded on April 10, 2003 (Reel/Frame 13959/852). A name change of
`Inside Contactless to Inside Secure was recorded on October 28, 2013
`(Reel/Frame 31505/332); and a license of the ’770 patent from Inside Secure
`and France Telecom S.A. to France Brevets SAS was recorded on October 1,
`2013 (Reel/Frame 31317/264). Additionally, although not recorded in
`connection with the ’770 patent, a name change of Inside Technologies to
`Inside Contactless S.A., executed on August 28, 2003, was recorded on
`August 25, 2016, in connection with certain other patents (Reel/Frame
`39542/0427). In disclosures filed in this proceeding, NFCT asserts that it
`and its parent company, France Brevets SAS, are the real parties in interest.
`Paper 8, 2. NFCT further asserts that it “possesses all substantial rights to
`the ’770 Patent,” “exclusively owns ‘the right to defend the validity and/or
`enforceability’” of the ’770 Patent,” and “has standing to step into the shoes
`of the Patent Owner in this proceeding.” Id. at 2–3. NFCT also provides
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`IPR2016-00681
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`Response (Paper 17, “PO Resp.”), and NXP filed a Reply (Paper 22, “Pet.
`Reply”). A consolidated hearing for this proceeding and related Cases
`IPR2016-00682, IPR2016-00683, and IPR2016-00684 was held on June 9,
`2017. A transcript of that hearing is included in the record. Paper 28
`(“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons discussed below, we determine that NXP has shown by a
`preponderance of the evidence that claims 1–3, 6–8, 10, 11, 28–31, 34, and
`35 of the ’770 patent are unpatentable on the grounds upon which we
`instituted inter partes review.
`II. BACKGROUND
`A. Real Parties in Interest and Related Proceedings
`NXP identifies NXP Semiconductors N.V., NXP B.V., and NXP
`Semiconductors Netherlands B.V. as real parties in interest with itself for
`this proceeding. Paper 20, 1. NFCT identifies France Brevets, S.A.S., as a
`real party in interest with itself for this proceeding. Paper 8, 2; see supra
`note 2.
`
`
`evidence to support these assertions, namely documents that purport to be
`license agreements between NFCT and Inside Secure. See Ex. 2001;
`Ex. 2002. In light of NFCT’s representations, we have treated NFCT as
`Patent Owner throughout this proceeding and continue to do so for purposes
`of this Decision, as reflected by the caption.
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`
`The parties identify NFC Technology, LLC v. Samsung Electronics
`Co., No. 2:15-cv-00283 (E.D. Tex.), as a related case. Pet. 9; Paper 8, 3.
`NXP also filed three other petitions challenging certain subsets of claims of
`the ’770 patent. Case IPR2016-00682, Paper 5 (Corrected Petition);
`IPR2016-00683, Paper 3 (Petition); IPR2016-00684, Paper 3 (Petition).
`B. The ’770 Patent
`The ’770 patent, titled “Contactless Integrated Circuit Reader,” was
`issued on August 29, 2006, and claims the benefit of a French patent
`application filed on October 16, 2000. Ex. 1001, [30], [45], [54], [63]. The
`’770 patent describes a contactless integrated circuit (“CIC”) reader that
`includes circuits for simulating the operation of a CIC, such that the CIC
`reader is able to send data to another CIC reader by inductive coupling. Id.
`at [57]. Figure 1 of the ’770 patent is reproduced below.
`
`
`Figure 1 is a schematic representation of a CIC reader and CIC. Id. at 5:6–8.
`With reference to Figure 1, CIC reader 10 produces alternating magnetic
`field FLD by means of antenna circuit 11, and transmits data by modulating
`field FLD’s amplitude. Id. at 1:15–19. Field FLD causes induced
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`alternating voltage Vac to appear in antenna circuit 21 of passive CIC 20,
`copying the amplitude modulations of field FLD and enabling the CIC to
`receive the data sent by the reader after filtering and demodulating induced
`voltage Vac. Id. at 1:25–30. CIC 20 sends data to CIC reader 10 via load
`modulation by short circuiting antenna circuit 21 by means of a switch
`driven by load modulation signal Sx. Id. at 1:31–34. The short circuiting of
`antenna circuit 21 cause a disturbance of field FLD that is detected by
`antenna circuit 11 of reader 10. Id. at 1:34–36. Reader 10 can extract load
`modulation signal Sx by filtering the signal present in antenna circuit 11, and
`deduce from it the data sent by CIC 20. Id. at 1:36–39.
`According to the ’770 patent, in applications that involve several
`terminals, it is sometimes desirable for this information to be collected by a
`data centralization system. Id. at 2:9–11. However, collecting such data
`manually can be tedious or costly. Id. at 2:11–22. To address this issue, the
`’770 patent describes a CIC reader capable of switching to a passive
`operating mode, in which the reader operates like a CIC in communicating
`with another reader. Id. at 2:29–33. “In other terms, this reader is capable
`of sending data to another reader according to the load modulation principle,
`and of receiving data that the other reader sends by modulating the magnetic
`field it sends out.” Id. at 2:33–37. Two contactless readers can, thus,
`communicate by having one of the two readers switch to the passive
`operating mode, allowing data to be exchanged without any physical contact
`between them. Id. at 2:38–42.
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`
`The ’770 patent, thus, describes a CIC reader configured to operate in
`two different modes. In a first mode, the CIC reader generates and
`modulates a magnetic field to transmit data to another device, such as a CIC.
`Id. at 6:46–8:16. In the second mode, the CIC reader transmits data by
`applying a load modulation signal to its antenna circuit that disturbs the
`magnetic field generated by a second CIC reader. Id. at 8:17–9:62.
`The load modulation of the second CIC reader’s magnetic field can be
`accomplished in multiple ways, according to the ’770 patent. The preferred
`embodiment of the ’770 patent utilizes “pseudo active load modulation” in
`which the load modulation signal causes the antenna circuit to alternate
`between a ground state and an excitation state. Id. at 10:17–21. The ’770
`patent states that this method has the advantage of offering greater
`communication distance because the alternating signal pulses applied to the
`antenna circuit cause magnetic field pulses that can be detected by another
`reader at a greater distance than disturbances due to passive load
`modulation. Id. at 11:3–9. “By comparison with a classical load
`modulation, which is purely passive, the disturbance of the magnetic field
`obtained according to the third method can be qualified as ‘pseudo active
`load modulation’ due to the sending of the alternating magnetic field
`pulses.” Id. at 11:9–16.
`C. Illustrative Claims
`Of the challenged claims, claims 1 and 28 are independent. Each of
`challenged claims 2, 3, 6–8, 10, and 11 depends directly or indirectly from
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`claim 1, and each of challenged claims 29–31, 34, and 35 depends directly
`or indirectly from claim 28. Claims 1 and 28 are illustrative of the claimed
`subject matter and are reproduced below:
`1. A device in order to transmit/receive data by inductive coupling
`comprising:
`an antenna circuit to generate a magnetic field; and
`an excitation circuit for delivering an alternating excitation signal
`to the antenna circuit,
`the device being configured to operate in a first operating mode
`and a second operating mode,
`when in the first operating mode, the device modulates the
`excitation signal when data is transmitted, and
`when in the second operating mode, the device applies a load
`modulation signal with two states to the antenna circuit when
`data is transmitted, so as to simulate the operation of a
`contactless integrated circuit, the load modulation signal being
`configured to disturb a magnetic field generated by another
`device in order to transmit/receive data by inductive coupling
`and being configured to be detected by the other device as if
`the load modulation signal were a load modulation signal
`applied to an antenna load modulation switch of a contactless
`integrated circuit.
`28. A contactless integrated circuit reader comprising:
`an antenna circuit that generates a magnetic field; and
`an excitation circuit to deliver an alternating excitation signal to
`the antenna circuit,
`the reader including a first operating mode and a second operating
`mode,
`when in the first operating mode, the reader is configured to
`exchange data with a contactless integrated circuit, and
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`when in the second operating mode, the reader is configured to
`exchange data with another contactless integrated circuit
`reader,
`the reader includes one of a bit and a flag to switch the reader from
`one of the first and second operating modes to the other of the
`first and second operating modes.
`Ex. 1001, 12:27–46, 15:21–34.
`D. Evidence Relied Upon
`The instituted grounds rely on the following references:
`
`
`
`Reference
`
`Gunnarsson Gunnarsson, International Patent Publication
`WO 98/08311 (February 26, 1998)
`
`RH-E
`
`
`RH-G
`
`Klaus Finkenzeller, RFID Handbook: Radio-
`Frequency Identification Fundamentals and
`Applications (Rachel Waddington trans., John
`Wiley & Son, Ltd. 1999)
`
`Klaus Finkenzeller, RFID-Handbuch: Grundlagen
`und praktische Anwendungen induktiver
`Funkanlagen, Transponder und kontaktloser
`Chipkarten (Carl Hanser Verlag 1998)
`(Ex. 1008B); English translation provided by NXP
`
`Exhibit
`
`Ex. 1004
`
`Ex. 1006
`
`Ex. 1008A
`
`Bashan
`
`Bashan et al., US 6,045,043 (Apr. 4, 2000)
`
`Ex. 1011
`
`NXP also relies on two declarations of Richard T. Mihran, Ph.D.
`
`(Exs. 1003, 1016) in support of its Petition and its Reply, respectively, and
`NFCT relies on the Declaration of Alyssa B. Apsel, Ph.D. (Ex. 2004) in
`support of its Patent Owner Response.
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`E. Instituted Grounds of Unpatentability
`We instituted inter partes review of the challenged claims under
`35 U.S.C. § 103(a) over the following combinations of references:
`References
`Claims Challenged
`Gunnarsson and either RH-E or RH-G3
`1–3, 6–8, and 11
`Gunnarsson, either RH-E or RH-G, and
`Bashan
`
`10, 28–31, 34, and 35
`
`Dec. on Inst. 45.
`
`III. ANALYSIS
`
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard); Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`
`3 NXP refers to RH-E and RH-G collectively as the “RFID Handbook” or
`simply as the “Handbook” and includes parallel citations to RH-E and RH-G
`throughout the Petition and Petitioner’s Reply. See, e.g., Pet. 5; Pet. Reply
`1. NXP asserts that the relied-upon portions of RH-E and RH-G are
`substantially similar and presents each ground in the Petition in the form of
`“counterparts” labeled as “A” and “B,” where the “A” counterpart relies on
`RH-E and the “B” counterpart relies on RH-G. Pet. 10–11. Except where
`otherwise noted, we follow NXP’s convention.
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`
`In the Decision on Institution, we addressed three claim terms that had
`been identified for construction by NFCT—“antenna circuit,” “load
`modulation signal,” and “contactless integrated circuit”—and determined
`that none required express construction at that stage of the proceeding. Dec.
`on Inst. 11–17.
`NFCT in its Patent Owner Response again urges that construction of
`the terms “antenna circuit” and “load modulation signal” is necessary to
`determine whether the corresponding limitations are disclosed by
`Gunnarsson alone or whether they are disclosed only in the combination of
`Gunnarsson and the RFID Handbook. PO Resp. 5–16. We address each in
`turn.
`
`“antenna circuit”
`1.
`The term “antenna circuit” is recited in both challenged independent
`claims 1 and 28 and in challenged dependent claims 8, 29, 30, and 31.
`NFCT contends that we should construe “antenna circuit” to be a
`“circuit, including a coil, for radiating and/or receiving a magnetic field.”
`PO Resp. 5–8. NFCT argues that this is the construction given to that term
`by the District Court in the NFC Technology LLC v. Samsung Electronics
`Co. case, and urges that it also is the broadest reasonable interpretation of
`the term in light of the specification and statements made during
`prosecution, and it is how a person of ordinary skill in the art would
`understand the term in view of the specification and prosecution history. Id.
`at 5–6 (citing Ex. 2003 (Claim Construction Memorandum and Order), 14;
`Ex. 2004 ¶ 30).
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`
`In support of its contentions, NFCT argues that the specification uses
`“antenna circuit” and “antenna coil” interchangeably, provides embodiments
`in which the antenna circuit includes a coil, and provides that the antenna
`circuit generates a magnetic field by way of the included coil. Id. at 6 (citing
`Ex. 1001, 1:16–17, 8:26, Fig. 1). NFCT also argues that the claims of the
`’770 patent specify that the device transmits and receives data by “inductive
`coupling” and that the antenna circuit generates a “magnetic field”; and that
`extrinsic evidence cited by NXP confirms that inductive coupling requires
`an antenna circuit that includes a coil. Id. (citing Ex. 1001, 12:29–31;
`Ex. 1006, 364; Ex. 2004 ¶¶ 31–32). NFCT further contends that the
`inventors “clearly and unmistakably limited the antenna circuit of their
`invention to require a coil” during prosecution by arguing, for example, that
`“utilizing the inductive coupling technique, as in the present invention . . . , a
`reader emits a radio frequency (RF) magnetic field by way of a resonant
`antenna circuit which includes a coil.” Id. at 6–7 (quoting Ex. 1002, 269
`(Reply to Office Action filed Jan. 27, 2006, at 24)). NFCT contends, “[t]he
`inventors repeated this statement numerous times while distinguishing
`Gunnarsson, which discloses transmitting microwave signals using an
`antenna without a coil.” Id. (citing Ex. 1002, 268–69, 271, 274 (Reply to
`Office Action dated Jan. 25, 2006, at 23–24, 26, 29)). Lastly, NFCT
`
`
`4 For consistency with the parties’ briefing, cited page numbers of Exhibits
`1006 and 1008A herein refer to the original page numbers of RH-E and
`RH-G rather than the exhibit-stamped page numbers.
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`contends that the scope of this term is in dispute and that construction “is
`necessary to determine whether Gunnarsson alone discloses it or whether it
`is disclosed in combination with the RFID Handbook.” Id. at 7.
`NXP replies that NFCT’s constructions are “immaterial” and
`“unnecessary.” Pet. Reply 1. In particular, according to NXP, NFCT does
`not dispute that the RFID Handbook, cited for all challenged claims,
`discloses inductive coupling, and “[NFCT’s] construction of ‘antenna
`circuit,’ while improperly requiring a coil, is immaterial because NFCT
`“admits all ‘inductive’ antennas ‘require . . . a coil.”’ Id. at 1, 2 n.1
`(citations omitted) (quoting PO Resp. 6–7).
`In the Decision on Institution, in response to similar arguments
`previously presented by NFCT in its Preliminary Response filed in this case
`(Paper 10, 7–9), we explained that we agreed with NFCT and the District
`Court that, in view of the inventors’ statements during prosecution, the
`inventors disclaimed devices having antenna circuits that do not include a
`coil, but that that point did not appear to be in dispute on the record before
`us, and we determined that there was no need to construe further the term
`“antenna circuit” at that stage of the proceeding. Dec. on Inst. 13 (citing
`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
`(“[C]laim terms need only be construed ‘to the extent necessary to resolve
`the controversy.’”)). We further explained that, because challenged
`independent claims 1 and 28 already explicitly recite “an antenna circuit to
`generate a magnetic field” and “an antenna circuit that generates a magnetic
`field,” respectively (Ex. 1001, 12:29, 15:22), NFCT’s proposed inclusion of
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`“for radiating . . . a magnetic field” would not add meaningfully to the
`broadest reasonable interpretation of the term “antenna circuit.” Dec. on
`Inst. 13. Finally, we explained that although the specification of the ’770
`patent describes an embodiment in which a magnetic field sent by a CIC
`reader appears by induction in the antenna circuit of another CIC reader (see,
`e.g., Ex. 1001, 9:10–13), we were not persuaded on the record then before us
`that the broadest reasonable interpretation of the term “antenna circuit”
`requires the language “for . . . receiving a magnetic field.” Dec. on Inst. 13–
`14.
`
`In light of the fully developed record before us, including Dr. Apsel’s
`testimony (Ex. 2004 ¶¶ 30–33) cited by NFCT and Dr. Mihran’s reply
`testimony (Ex. 1016 ¶¶ 7–21) cited by NXP, we continue to agree with
`NFCT that the broadest reasonable construction of “antenna circuit” requires
`a coil. Nonetheless, for the reasons discussed above, we remain
`unpersuaded that it would be necessary or proper additionally to include “for
`radiating and/or receiving a magnetic field” in the construction of “antenna
`circuit.” Thus, we determine that the broadest reasonable construction of
`“an antenna circuit,” as recited in the challenged claims, is “a circuit,
`including a coil.”
`“load modulation signal”
`2.
`The term “load modulation signal” is recited in challenged
`independent claim 1 and in challenged dependent claims 2, 3, 6, 8, and 29–
`31. NFCT contends that this term “requires a signal that transmits data by
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`disturbing the magnetic field of another device” and excludes signals used in
`microwave systems. PO Resp. 8–16.
`Regarding the first contention, NFCT argues more particularly that
`“load modulation” is a term of art that refers, in the context of radio-
`frequency identification (“RFID”) systems, to the particular way in which
`data is transmitted between two inductive devices. Id. at 8 (citing Ex. 2004
`¶ 35). According to NFCT, the specification of the ’770 patent describes a
`load modulation signal in two different contexts. Id. In one, a CIC sends
`data to a reader by short-circuiting the antenna circuit using a switch driven
`by a load modulation signal. Id. (citing Ex. 1001, 1:31–34). In the other, a
`CIC reader sends data to another device by applying a load modulation
`signal to the antenna circuit. Id. (citing Ex. 1001, 2:63–3:2). This disturbs
`the magnetic field sent by the other device in a manner similar to short-
`circuiting the antenna circuit, and the other device detects the disturbance as
`a load modulation signal of a CIC despite the absence of a corresponding
`CIC load modulation switch. Id. (citing Ex. 1001, 11:48–57). In both of
`these contexts, NFCT contends, “the load modulation signal transmits data
`by causing a disturbance in a magnetic field generated by another device,”
`and “[t]he specification refers to both of these situations as sending data to
`another device ‘according to the load modulation principle.’” Id. at 8–9
`(citing Ex. 1001, 2:35; Ex. 2004 ¶ 36). NFCT asserts that a person of
`ordinary skill in the art “would understand that the ‘load modulation
`principle’ is the principle of transmitting data by disturbing the magnetic
`field produced by another device, rather than the act of switching on and off
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`an impedance” (id. at 9 (citing Ex. 2004 ¶¶ 35–36)). In addition, NFCT
`contends that “[t]he prosecution history also supports this construction” (id.
`(citing Ex. 1002, 274 (Reply to Office Action filed Jan. 27, 2006, at 29)
`(inventors explaining that “the device applies a load modulation signal to
`disturb the magnetic field generated by another device.”))). In contrast,
`NFCT contends, NXP’s expert “Dr. Mihran adopts a construction that does
`not require another device to generate a magnetic field,” and “[h]is
`construction ignores the scope given to the term load modulation by the ’770
`patent.” Id. (citing Ex. 2005 (Mihran deposition transcript), 53:10–20).
`NFCT additionally asserts that the RFID Handbook confirms NFCT’s
`construction and expressly defines load modulation. Id. at 10 (citing
`Ex. 1006, 37–38; Ex. 2004 ¶ 39). In particular, NFCT contends:
`The RFID Handbook explains that “inductively coupled systems
`are based upon a transformer-type coupling” between coils.
`Ex. 1006 at 37. When a resonant transponder is placed within
`the magnetic field of a reader’s antenna, the transponder “draws
`energy from the magnetic field.” Id. This additional power
`consumption is measured as a voltage drop in the reader. Id. at
`37–38. By switching on and off a load resistance in the
`transponder’s antenna, a voltage change (i.e., a disturbance) at
`the reader’s antenna is created. Id. at 38. As a result, if the
`switching is controlled by data, data may be transferred from the
`transponder to the reader. Id. “This type of data transfer is called
`load modulation.” Id. Thus, the RFID handbook confirms that
`“load modulation” refers to a particular “type of data transfer”
`and not simply to the act of varying an impedance. Ex. 2004 at
`¶ 39.
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`PO Resp. 10. NFCT contends that Mr. Mihran’s broad definitions of “load
`modulation” and “load modulation signal” ignore this definition. Id.
`Lastly, NFCT points out that, in the Decision on Institution, we
`preliminarily declined to construe “load modulation signal” as a “signal that
`transmits data by causing a disturbance of a magnetic field generated by
`another device” on the basis that certain claims of the ’770 patent already
`recite that the load modulation signal disturbs a magnetic field and that the
`signal causes the disturbance when data is to be transmitted. Id. at 10–11
`(citing Dec. on Inst. 14–15). NFCT contends, however, that its construction
`“is focused on the particular mechanism by which data is transferred—that
`is, a ‘signal that transmits data by causing a disturbance of a magnetic field
`generated by another device.’” Id. at 11. Through inclusion of the word
`“by,” NFCT contends, its construction “specifies that the disturbance of
`magnetic field is the mechanism through which data transfer is achieved,”
`and “[t]herefore, the fact that other claim elements may elaborate that the
`load modulation signal disturbs a magnetic field when data is transmitted
`does not obviate a construction that specifies that the disturbance is the
`mechanism by which data transfer is achieved.” Id. (citing Ex. 2004 ¶¶ 34–
`39).
`
`As noted above, NFCT also contends that the term “load modulation
`signal” excludes signals used in microwave systems. Id. at 11–12. NFCT
`argues that a skilled artisan would understand the same and that the factual
`record is devoid of any support—other than Dr. Mihran’s statements—for
`construing the term to include signals used in microwave systems. Id. at 12
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`(citing Ex. 2004 ¶¶ 40–41). NFCT asserts that Petitioner’s extrinsic
`evidence confirms this point. Id. at 12–13 (citing Ex. 1006, Fig. 3.1, 25
`(listing “load modulation” only under the category of inductive coupling,
`and “backscattering” under microwave), 37–41 (discussing load modulation
`and inductive coupling), 90–98 (same), 41–45 (discussing backscatter and
`microwave), 105–110 (same)). NFCT acknowledges that Dr. Mihran cited a
`Microchip Technology Inc. “application note” titled “Passive RFID Basics”
`that discusses “backscattering” using an “antenna coil” (Ex. 1014, 1), but
`contends that the referenced discussion “does not change this analysis
`because, even if taken as true, it merely suggests that load modulation is
`sometimes referred to under a broader umbrella as ‘backscatter’ and not that
`microwave backscatter signals are included within the term load modulation
`signal.” PO Resp. 13 (citing Ex. 1003 ¶ 41; Ex. 2004 ¶ 42). NFCT also
`acknowledges Dr. Mihran’s reference to the RFID Handbook as stating that
`load modulation and backscattering are “closely related,” but contends that a
`person of ordinary skill would understand that describing those techniques
`as closely related specifies that they are not the same. Id. at 14 (citing
`Ex. 1006, 44; Ex. 2004 ¶ 43; Ex. 2005, 129:2–130:21). Finally, NFCT
`contends that, although a skilled artisan would understand that
`communication in the broader context of electronic communications
`generally involves modulation of one or more characteristics such as
`frequency, phase, or amplitude of a signal, and such modulation often
`involves switching on and off of a load, “this does not mean all forms of
`modulation involving a load fall within the meaning of ‘load modulation,’ as
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`that term is used in the ’770 patent and expressly defined in the RFID
`Handbook.” Id at 15 (citing Ex. 2004 ¶ 47). Instead, NFCT argues, “a
`skilled artisan would understand that ‘load modulation’ refers to a particular
`way of transmitting information in an inductive system that excludes signals
`used in a microwave system.” Id. (citing Ex. 2004 ¶ 47).
`NXP replies that NFCT’s constructions are “immaterial” and
`“unnecessary,” as noted in the above discussion of “antenna circuit.” Pet.
`Reply 1. In particular, according to NXP, NFCT does not dispute that the
`RFID Handbook, cited for all challenged claims, discloses inductive
`coupling, and “[NFCT’s] construction of ‘load modulation signal’ is also
`contrary to Handbook’s and ’770’s definitions of ‘load modulation.’” Id. at
`1–2 (citations omitted) (quoting PO Resp. 6–7). NXP contends that both the
`RFID Handbook and the ’770 patent require “short-circuiting” a load. Id. at
`2–3 (quoting Ex. 1001, 1:31–34 (“sends data to . . . a reader by load
`modulation, i.e. by short-circuiting its antenna circuit by means of a switch
`driven by a load modulation signal Sx”); Ex. 1006, 38 (“If the switching on
`and off of the load resistor is controlled by data, then this data can be
`transferred from the transponder to the reader. This type of data transfer is
`called load modulation.”)) (citing Ex. 1003 ¶¶ 47–48; Ex. 1016 ¶ 27).
`According to NXP, neither definition requires “inductive-based systems.”
`Id. at 3 (citing Ex. 1016 ¶¶ 25–33; PO Resp. 8). Rather, NXP contends, the
`specification’s references to inductive coupling describe only exemplary
`embodiments and do not limit the term “load modulation.” Id. (citing
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`Ex. 1001, 1:15–16, 4:67–5:4, 12:19–25 (stating ’770 patent is “not limited”
`to disclosed embodiments)).
`NXP further contends the claims of the ’770 patent also do not
`support NFCT’s construction, because, for example, claim 29 recites “load
`modulation signal” but does not further require “inductive coupling” or
`“disturbing the magnetic field,” and those limitations “cannot be read into”
`claim 29. Id. (citing Dec. on Inst. 15; Ex. 1016 ¶¶ 22–24; SRI Int’l. v.
`Matsushita Elec. Co., 775 F.2d 1107, 1122 (Fed. Cir. 1985)). NXP asserts
`that NFCT’s construction improperly imports “being configured to disturb
`the magnetic field” from claim 30 into claim 29, from which it depends. Id.
`(citing Dec. on Inst. 15; Ex. 1016 ¶ 24; Liebel-Flarsheim Co. v. Medrad,
`Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (“[T]he presence of a dependent
`claim that adds a particular limitation raises a presumption that the
`limitation . . . is not found in the independent claim.”)).
`Lastly, NXP contends that NFCT “admits extrinsic evidence
`(Microchip AN680 ([Ex. 1014,] 1) ‘suggests that load modulation is
`sometimes referred to under a broader umbrella as “backscatter”’ ([PO
`Resp.] 13); and a [person of ordinary skill in the art] would ‘understand
`that . . . communication generally involves modulation’ and
`‘[m]odulation . . . can involve switching on and off an[sic] load’ ([PO
`Resp.] 13–15); [Ex. 1016] ¶ 34.” Pet. Reply 2–3 (alterations in original).
`NXP concludes, “‘[l]oad modulation signal’ should be given its plain and
`ordinary meaning under [the broadest reasonable interpretation] in light of
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`the specification and, to the extent a construction is required, it means
`‘signal used to alter a load.’” Id. at 4 (citing Ex. 1016 ¶ 35).
`In light of the fully developed record now before us, particularly
`including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 34–47) cited by NFCT and
`Dr. Mihran’s reply testimony (Ex. 1016 ¶¶ 22–35) cited by NXP, as well as
`further consideration of the claim differentiation arguments presented in
`connection with claims 29 and 30, we are persuaded that “load modulation
`signal” is a term of art in the context of RFID systems, specifically referring
`to a signal that transmits data by disturbing the magnetic field of another
`device in an inductive coupling system, and that NFCT’s proposed
`construction, accordingly, is the broadest reasonable construction of that
`term.
`We also agree with NFCT that this construction does not conflict with
`the presumption that a limitation added by a dependent claim is not found in
`its base claim. See Liebel-Flarsheim, 358 F.3d at 910. Claim 29 depends
`from claim 28 and adds the limitation “wherein the reader is configured to
`apply a load modulation signal with two states to the antenna circuit when
`the reader operates in the second operating mode and when data is to be
`transmitted to the other reader.” Ex. 1001, 15:36–40. The consequence of
`applying NFCT’s construction to that claim, thus, is that the reader must be
`configured to apply a signal that transmits data by disturbing the magnetic
`field of another, unspecified device. Claim 30, however, additionally
`requires the reader to be configured to apply to the antenna circuit not
`merely such a “signal that transmits data by disturbing the magnetic field of
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`another,” but more specificall