Trials@uspto.gov
`571-272-7822
`
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`Paper No. 27
`
`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 IPR2016-00683
`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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`IPR2016-00683
`Patent 7,098,770 B2
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`I. INTRODUCTION
`NXP USA, Inc.1 (“NXP”) filed a 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. 1201, “the ’770 patent”). Paper 3 (“Pet.”). On September 8, 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 10 (“Dec. on Inst.”), 27. Exclusive licensee NFC
`Technology, LLC (“NFCT”)2 then filed a Patent Owner’s Response (Paper
`
`
`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 18, 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 6, 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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`15, “PO Resp.”), and NXP filed a Reply (Paper 20, “Pet. Reply”). A
`consolidated hearing for this proceeding and related Cases IPR2016-00681,
`IPR2016-00682, and IPR2016-00684 was held on June 9, 2017. A transcript
`of that hearing is included in the record. Paper 26 (“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 18, 1. NFCT identifies France Brevets, S.A.S., as a
`real party in interest with itself for this proceeding. Paper 6, 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. 7; Paper 6, 3.
`NXP also filed three other petitions challenging certain subsets of claims of
`the ’770 patent. Case IPR2016-00681, Paper 5 (Corrected Petition); Case
`IPR2016-00682, Paper 5 (Corrected 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. 1201, [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
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`field FLD’s amplitude. Id. at 1:15–19. Field FLD causes induced
`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. 1201, 12:27–46, 15:21–34.
`D. Evidence Relied Upon
`The instituted grounds rely on the following references:
`
`
`
`Reference
`
`Ritter Ritter, International Patent Publication
`WO 98/58510 (Dec. 23, 1998) (Ex. 1204B);
`English translation provided by NXP
`
`RH-E
`
`
`Klaus Finkenzeller, RFID Handbook: Radio-
`Frequency Identification Fundamentals and
`Applications (Rachel Waddington trans., John
`Wiley & Son, Ltd. 1999)
`
`RH-G Klaus Finkenzeller, RFID-Handbuch: Grundlagen
`und praktische Anwendungen induktiver
`Funkanlagen, Transponder und kontaktloser
`Chipkarten (Carl Hanser Verlag 1998)
`(Ex. 1208B); English translation provided by NXP
`
`Exhibit
`
`Ex. 1204A
`
`Ex. 1206
`
`Ex. 1208A
`
`Bashan Bashan et al., US 6,045,043 (Apr. 4, 2000)
`
`Ex. 1211
`
`NXP also relies on two declarations of Richard T. Mihran, Ph.D.
`
`(Exs. 1203, 1217) in support of its Petition and its Reply, respectively, and
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`NFCT relies on the Declaration of Alyssa B. Apsel, Ph.D. (Ex. 2004) in
`support of its Patent Owner Response.
`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
`Ritter and either RH-E or RH-G3
`1–3, 6–8, and 11
`
`Ritter, either RH-E or RH-G, and Bashan
`
`10, 28–31, 34, and 35
`
`Dec. on Inst. 26–27.
`
`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
`
`
`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. 3; 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. 8–9. Except where
`otherwise noted, we follow NXP’s convention.
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`reasonable interpretation standard); Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`In the Decision on Institution, we addressed four claim terms for
`which NFCT proposed constructions in its Preliminary Response (Paper
`8)—“antenna circuit,” “load modulation signal,” “contactless integrated
`circuit,” and “contactless integrated circuit reader”—and determined that
`none required express construction at that stage of the proceeding. Dec. on
`Inst. 8–10.
`
`“contactless integrated circuit reader”
`1.
`NFCT in its Patent Owner Response again urges that construction of
`the term “contactless integrated circuit reader” is required. PO Resp. 5–12.
`NFCT contends that this term, which is recited in challenged claims 11 and
`28, should be construed “in accordance with its broadest reasonable
`construction in light of the specification to be a ‘device that is configured to
`read data sent by load modulation from a contactless integrated circuit.’” Id.
`at 5–6. According to NFCT, this construction is consistent with the plain
`meaning of the term, which requires that a “contactless integrated circuit
`reader” be configured to read data from a “contactless integrated circuit.”
`Moreover, NFCT contends, the contactless integrated circuit reader must
`also be able to read data sent from the contactless integrated circuit “‘by load
`modulation,’ because that is how the contactless integrated circuit of the
`’770 patent sends data to the contactless integrated circuit reader.” Id. at 6–7
`(citing Ex. 2004 ¶ 30). NFCT cites two examples of a contactless integrated
`circuit from the specification of the ’770 patent and contends, “in each
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`instance, the contactless integrated circuit communicates data using load
`modulation.” Id. at 7–8 (citing Ex. 1201, 1:31–34, 6:56–7:2, Figs. 1, 2;
`Ex. 2004 ¶ 31). NFCT additionally points to disclosure in the specification
`of “extract[ing] the load modulation signal Sx by filtering the signal present
`in its antenna circuit 11 and deduc[ing] the data sent by the contactless
`integrated circuit from it,” and contends that “[t]he ’770 patent also explains
`that the contactless integrated circuit reader reads data sent by the
`contactless integrated circuit via load modulation.” Id. at 8–9 (citing
`Ex. 1201, 1:36–39). Finally, NFCT contends that the extrinsic evidence,
`including both Dr. Apsel’s and Dr. Mihran’s testimony and the RFID
`Handbook, supports this construction. Id. at 9–12 (citing Ex. 2004 ¶¶ 33–
`36; Ex. 1203 ¶¶ 33, 39, 40; Ex. 1206, 7–8, 38, 90–91, Figs. 1.6, 4.35;
`Ex. 1208A, 9–10, 38).
`In reply, NXP argues that NFCT’s construction improperly narrows
`the claims. Pet. Reply 1. According to NXP, this term can be understood
`under its plain and ordinary meaning and does not need construction, and
`NFCT’s construction is “inconsistent with the claims’ separate recitation of
`further requirement of ‘load modulation.’” Id. at 1–2. Specifically, NXP
`contends, “[s]everal of the claims directed to a ‘[CIC] reader’ separately
`recite a ‘load modulation signal’ (e.g., claim 14) while others do not (e.g.,
`
`
`4 We assume that NXP’s reference to “claim 1” should instead be to “claim
`11,” as the former does not recite a contactless integrated circuit reader.
`
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`claim 13).” Id. at 2. Moreover, NXP asserts, although the ’770 patent
`describes using load modulation for communicating data from a CIC to a
`reader in an inductively coupled system, it does not define a CIC as using
`load modulation, and instead “unequivocally states that the invention is not
`intended to be limited by embodiments disclosed.” Id. at 2–3 (citing
`Ex. 1201, 4:67–5:4, 11:58–12:25; Ex. 1217 ¶ 18). NXP further contends
`that other ways to couple readers with transponders or CICs in RFID
`systems were known, including microwave coupling, and the ’770 patent
`itself discloses that “‘[a] reader according to the present invention may also
`be provided to operate exclusively in passive mode,’ which would not
`involve generating a magnetic field.” Id. at 3–4 (quoting Ex. 1201, 11:65–
`12:1) (citing Ex. 1203 ¶¶ 30–38; Ex. 1206, 25, Fig. 3.1; Ex. 1208A, 25,
`Fig. 3.1; Ex. 1217 ¶¶ 18–19). Finally, NXP disputes NFCT’s contentions
`that the RFID Handbook and Dr. Mihran’s testimony define contactless
`integrated circuit reader to be limited to a device configured to receive data
`sent by load modulation. Id. at 4–5.
`Having reviewed the parties’ arguments and the cited evidence, we
`conclude that the broadest reasonable construction of “contactless integrated
`circuit reader” is simply “device configured to read data from a contactless
`integrated circuit.” NFCT appears to concede that this construction
`represents the plain meaning of the term (see PO Resp. 6), and we agree
`with NXP that the record evidence does not support reading the language
`“sent by load modulation” into that plain meaning (Pet. Reply 1–5). Under
`the broadest reasonable construction standard, claim terms generally are
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`given their ordinary and customary meaning, as would be understood by one
`of ordinary skill in the art in the context of the entire disclosure. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United
`States Court of Appeals for the Federal Circuit has “recognized ‘only two
`exceptions to this general rule: 1) when a patentee sets out a definition and
`acts as his own lexicographer, or 2) when the patentee disavows the full
`scope of a claim term either in the specification or during prosecution.’”
`Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016)
`(quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365
`(Fed. Cir. 2012)). Any special definition for a claim term must be set forth
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations
`are not to be read from the specification into the claims. See In re Van
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not
`persuasively advance a disavowal or lexicography theory, which always
`requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight,
`Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding
`lexicography and disavowal are exacting.”). Absent lexicography or
`disavowal, the plain meaning of the term governs. See Thorner v. Sony
`Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also In
`re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We
`have cautioned against reading limitations into a claim from the preferred
`embodiment described in the specification, even if it is the only embodiment
`described, absent clear disclaimer in the specification.”). The case for not
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`reading “sent by load modulation” into the claims is particularly strong here,
`where, as NXP points out, certain claims of the ’770 patent reciting a
`contactless integrated circuit reader additionally recite load modulation,
`while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec.
`Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a
`patent claim does not contain a certain limitation and another claim does,
`that limitation cannot be read into the former claim in determining either
`validity or infringement.”).
`“load modulation signal”
`2.
`Although neither NFCT in its Patent Owner Response nor NXP in its
`briefing in this case expressly requests construction of the term “load
`modulation signal,” we note that we determine in the Final Written Decision
`filed concurrently herewith in related Case IPR2016-00681 that the broadest
`reasonable construction of that term, as recited in challenged claims 1–3, 6,
`8, and 29–31, is a “signal that transmits data by disturbing the magnetic field
`of another device.” See IPR2016-00681, slip op. at 13–21 (PTAB Aug. 30,
`2017). We incorporate that analysis herein.
`B. Legal Principles
`To prevail in an inter partes review, a petitioner must prove the
`unpatentability of the challenged claims by a preponderance of the evidence.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “[T]he petitioner has the burden
`from the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
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`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). The burden of persuasion never
`shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review). Furthermore, a petitioner cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are “such that the subject matter as a
`whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) objective evidence of non-obviousness, i.e., secondary
`considerations.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`
`
`5 The parties do not address secondary considerations, which, accordingly,
`do not form part of our analysis.
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`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see also In re Warsaw Orthopedic, Inc., 832 F.3d 1327,
`1333 (Fed. Cir. 2016) (“As part of the obviousness inquiry, we consider
`‘whether a [person of ordinary skill in the art] would have been motivated to
`combine the prior art to achieve the claimed invention and whether there
`would have been a reasonable expectation of success in doing so.’” (quoting
`DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
`464 F.3d 1356, 1360 (Fed. Cir. 2006))).
`We analyze the instituted grounds of unpatentability in accordance
`with the principles stated above.
`C. Level of Skill in the Art
`Based on testimony of Dr. Mihran, NXP contends that the applicable
`person of ordinary skill in the art would have a minimum of a bachelor’s
`degree in electrical engineering, or an equivalent field, and approximately
`three to five years of industrial or academic experience in working with
`wireless communication technology, including radio frequency identification
`(RFID) devices and systems. Pet. 13 (citing Ex. 1203 ¶¶ 28–30). NFCT
`does not dispute this assessment of the level of skill and states that it and
`Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing
`Ex. 2004 ¶ 24).
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`We see no compelling reason to apply a different level of skill than
`that accepted by both parties and accordingly adopt the level of skill
`advocated by Petitioner.
`D. Overview of the Prior Art6
`Ritter
`1.
`Ritter, titled “Mobile Device, Chip Card and Method of
`Communication,” relates to a mobile device comprising a removable SIM
`(Subscriber Identity Module) card that stores data, and a wireless interface
`for communicating bidirectionally with an external device. Ex. 1204A, [54],
`[57]. This contactless interface may be inductive. Id. Figure 1 of Ritter is
`reproduced below.
`
`
`6 For consistency with the parties’ briefing, cited page numbers of Exhibits
`1206 and 1208A herein refer to the RFID Handbook’s original page
`numbers, rather than the exhibit-stamped page numbers.
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`Figure 1 depicts SIM card 2, which is inserted into mobile device 1. Id. at 5.
`Mobile device 1 includes antenna 15, which “allows the mobile device to
`exchange data and programs inductively or in an electromagnetic manner
`directly with an external device 3'.” Id. at 7. Antenna 15 may, for example,
`be a coil, and is controlled by communication controller 16. Id.
`Communication controller 16 has communication means to exchange data
`with the chip card (i.e., the SIM card). Id. at 6. External device 3' may
`consist of another mobile device such that data stored on the SIM cards of
`the two mobile devices may be exchanged. Id. at 13.
`Several operating modes are described in Ritter. Id. at 11–13. In one
`mode, communication controller 16 may be “inductively fed by the external
`device 3'.” Id. at 11. In such a case, the external device “can feed the
`communication controller and the antenna 15 in order to read, for example,
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`identification data or electronic keys in the memory area of the
`communication controller.” Id. This mode may be useful, for example, “in
`order to use the mobile device, which is also switched off, as an electronic
`key with a physical access monitoring device.” Id. In another operating
`mode, the communication controller and antenna 15 are “fed by the main
`battery of the mobile device 1.” Id. at 12. Ritter explains that, “[a]s a result,
`the data and the programs can be inductively transmitted over greater
`distances.” Id.
`
`RFID Handbook
`2.
`Both versions of the RFID Handbook, i.e., RH-E and RH-G, relate to
`automatic identification procedures and technology and have similar
`disclosures. The RFID Handbook explains that although the most common
`form of electronic-data-carrying device in use in everyday life is the smart
`card, the mechanical contact used in the smart card is vulnerable to
`degradation, and a contactless transfer of data between a data-carrying
`device and its reader avoids these disadvantages while providing other
`benefits. Ex. 1206, 1, 4–7; Ex. 1208A, 5, 7–8. One type of contactless ID
`system is a radio-frequency identification (“RFID”) system. Ex. 1206, 6;
`Ex. 1208A, 7. The RFID Handbook explains that RFID systems are made
`up of two components: a transponder, which is located on an object to be
`identified and stores data, and an interrogator or reader, which may be
`read-only or may have read/write capabilities. Ex. 1206, 6–7; Ex. 1208A, 7,
`9. The transponder includes a coupling element, which may be a coil or
`microwave antenna, and an electronic microchip. Ex. 1206, 8, Fig. 1.6;
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`Ex. 1208A, 9, Fig. 1.6. The power required to activate the transponder,
`which does not usually possess its own voltage supply, is supplied
`contactlessly through the coupling unit, as is the timing pulse and data;
`hence, the transponder is only activated when it is within the interrogation
`zone of a reader. Ex. 1206, 8; Ex. 1208A, 10. The transponder is totally
`passive when not within the interrogation zone of a reader. Ex. 1206, 8;
`Ex. 1208A, 10.
`A transponder is depicted in Figure 1.8 of the RFID Handbook, which
`is reproduced below.
`
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`Figure 1.8 illustrates the basic layout of two types of transponders,
`including an inductively coupled transponder with an antenna coil on the
`left. Ex. 1206, 9; Ex. 1208A, 10. According to the RFID Handbook, in an
`inductive coupling system, “the reader’s antenna coil generates a strong,
`high frequency electro-magnetic field, which penetrates the cross-section of
`the coil area and the area around the coil,” and “[a] small part of the emitted
`field penetrates the antenna coil of the transponder,” generating “[a]
`voltage . . . in the transponder’s antenna coil by inductance.” Ex. 1206, 35;
`Ex. 1208A, 36. This voltage is rectified and serves as the power supply for a
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`microchip on the transponder. Ex. 1206, 35; Ex. 1208A, 36. Further, “[t]he
`switching on and off of a load resistance at the transponder’s antenna . . .
`effects voltage changes at the reader’s antenna and thus has the effect of an
`amplitude modulation of the antenna voltage by the remote transponder.”
`Ex. 1206, 38; Ex. 1208A, 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,” and “[t]his type of data transfer is called load
`modulation.” Ex. 1206, 38; Ex. 1208A, 38.
`Bashan
`3.
`Bashan, titled “Contact/Contactless Data Transaction Card,” describes
`a “data transaction device having contact and contactless modes of
`operation, compris[ing] a semiconductor device for operating in contact and
`contactless modes in accordance with a respective contact or contactless data
`communications protocol.” Ex. 1211, [57]. A coil antenna allows
`contactless data transmission in accordance with the contactless protocol.
`Id. Bashan discloses that alternating current (AC) voltage rails are
`connected to the coil connection terminals “for feeding an AC voltage
`thereacross when the coil antenna . . . is inductively coupled to an
`electromagnetic field.” Id. at 5:1–4. In order to switch between contact and
`contactless modes of operation, Bashan discloses that the device contains a
`“mode status flag CM” that “is set to logic ‘0’ for contactless mode and is
`set to logic ‘1’ for contact mode.” Id. at 8:5–7. The mode status flag is
`“used by the control logic within the antenna interface . . . in order to dictate
`its manner of operation.” Id. at 8:8–10. Bashan further discloses that
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`operation of “antenna interface 16 may be controlled and customized by
`means of an EEPROM 53 and a programming unit 54,” and “in order that
`the output CM may be set to a desired logic level regardless of the presence
`or absence of the electromagnetic field across the coil antenna 15, the mode
`detector 52 is also responsively coupled to the EEPROM 53 so that its status
`can be programmed.” Id. at 6:34–36, 6:52–56.
`E. Comparison of Claimed Subject Matter and Prior Art
`Claims 1, 6–8, and 11 over Ritter and the RFID
`1.
`Handbook
`NXP contends that Ritter teaches a device that transmits and receives
`data via inductive coupling, and has an antenna circuit to generate a
`magnetic field with an excitation circuit for delivering an alternating
`excitation signal to the