DCT
4:26-cv-01230
Near Field Electronics LLC v. Potbelly Sandwich Works LLC
Key Events
Complaint
Table of Contents
complaint Intelligence
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Near Field Electronics LLC (Texas)
- Defendant: Potbelly Sandwich Works, LLC (Illinois)
- Plaintiff’s Counsel: Shea Beaty Poet PLLC
- Case Identification: 4:26-cv-1230, E.D. Tex., 09/08/2026
- Venue Allegations: Venue is based on Defendant's alleged regular and established place of business within the Eastern District of Texas, as well as its business contacts and activities in the district.
- Core Dispute: Plaintiff alleges that Defendant’s point-of-sale systems, which use Near Field Communication (NFC) components for contactless payments, infringe five U.S. patents related to integrated circuit architecture, bus protocol management, and power control.
- Technical Context: The patents address foundational technologies for integrated circuits, including methods for handling multiple communication protocols, processing I/O signals in real-time, and managing power consumption, which are critical in complex electronic devices like payment terminals.
- Key Procedural History: The complaint asserts infringement claims for five patents, four of which have already expired. For all asserted patents, Plaintiff has voluntarily limited the asserted liability period to a specific window beginning September 8, 2020, and ending at each patent's respective expiration date (or the date of expiration for the one patent still in force).
Case Timeline
| Date | Event |
|---|---|
| 2000-06-21 | U.S. Patent No. 6,691,201 Priority Date |
| 2000-07-25 | U.S. Patent No. 6,742,071 Priority Date |
| 2000-08-28 | U.S. Patent No. 6,996,727 Priority Date |
| 2002-06-28 | U.S. Patent No. 6,959,350 Priority Date |
| 2004-02-10 | U.S. Patent No. 6,691,201 Issued |
| 2004-05-25 | U.S. Patent No. 6,742,071 Issued |
| 2005-01-11 | U.S. Patent No. 7,373,531 Priority Date |
| 2005-10-25 | U.S. Patent No. 6,959,350 Issued |
| 2006-02-07 | U.S. Patent No. 6,996,727 Issued |
| 2008-05-13 | U.S. Patent No. 7,373,531 Issued |
| 2020-09-08 | Asserted Liability Period Begins for All Patents |
| 2021-11-21 | U.S. Patent No. 6,742,071 Expired |
| 2022-01-31 | U.S. Patent No. 6,691,201 Expired |
| 2022-04-14 | U.S. Patent No. 6,996,727 Expired |
| 2023-08-12 | U.S. Patent No. 6,959,350 Expired |
| 2026-03-19 | U.S. Patent No. 7,373,531 Expiration Date |
| 2026-09-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,691,201 - Dual Mode USB-PS/2 Device (Issued Feb. 10, 2004)
The Invention Explained
- Problem Addressed: The patent describes the challenge for peripheral device manufacturers of supporting multiple communication standards, specifically the Universal Serial Bus (USB) and Personal System 2 (PS/2) protocols. Conventional solutions required separate external components, additional circuit board space, and complex firmware to manage the different protocols, which increased cost and could compromise performance (Compl. ¶11, citing ’201 Patent, col. 1:28-50).
- The Patented Solution: The patent discloses a single integrated circuit capable of automatically detecting which protocol a connected bus is using (USB or PS/2) and configuring itself to operate accordingly, using a shared, single set of input/output (I/O) pins (Compl. ¶10, citing ’201 Patent, col. 6:10-19). This single-chip solution is intended to eliminate the need for external components, simplify firmware, and reduce board space and cost (Compl. ¶12, citing ’201 Patent, col. 1:50-54).
- Technical Importance: The invention offered an integrated, cost-effective solution for creating computer peripherals (like mice) that could seamlessly connect to different generations of computer hardware, maximizing connectivity and simplifying manufacturing (Compl. ¶12).
Key Claims at a Glance
- The complaint asserts independent method claim 14 Compl. ¶31
- Claim 14 requires:
- (A) detecting a signaling protocol of a bus connected to an integrated circuit that operates in a plurality of signaling protocols; and
- (B) configuring said integrated circuit to communicate in one of said plurality of signaling protocols in response to said detected signaling protocol of said connected bus, wherein each of said selected protocols operate over said connected bus through a single set of pins.
- Plaintiff reserves the right to amend its infringement contentions Compl. ¶32
U.S. Patent No. 6,742,071 - Real-time I/O Processor Used to Implement Bus Interface Protocols (Issued May 25, 2004)
The Invention Explained
- Problem Addressed: The patent addresses the limitations of conventional methods for interfacing with bus protocols. Protocol-specific hardware designs were rigid and inflexible, while microprocessor-based systems were often too slow to meet the real-time demands of high-speed protocols (Compl. ¶16; ’071 Patent, col. 1:14-48).
- The Patented Solution: The invention proposes a specialized, real-time I/O processor, described as a programmable general-purpose interface (GPIF), that acts as a master device (Compl. ¶15, citing ’071 Patent, col. 2:30-3:3). This GPIF uses a limited instruction set to generate interface-specific waveforms and respond to external events, allowing control outputs and data path decisions to be changed on every clock cycle. This provides a flexible yet high-speed alternative to rigid hardware (Compl. ¶16, citing ’071 Patent, col. 6:4-16).
- Technical Importance: The technology provided a powerful building block for creating flexible, high-performance interface controllers that could be programmed to support multiple or evolving communication standards without requiring new hardware designs (Compl. ¶16).
Key Claims at a Glance
- The complaint asserts independent method claim 15 Compl. ¶36
- Claim 15 requires:
- (A) generating a plurality of first control signals in response to a current state of a processor;
- (B) progressing to a next state based on said current state, at least one internal control signal of said first control signals and an input signal received from said external bus;
- (C) driving at least one output control signal of said first controls signals onto said external bus; and
- (D) updating said current state to said next state.
- Plaintiff reserves the right to amend its infringement contentions Compl. ¶37
Multi-Patent Capsule: U.S. Patent No. 6,959,350
- Patent Identification: U.S. Patent No. 6,959,350, "Configurable USB Interface With Virtual Register Architecture," issued October 25, 2005.
- Technology Synopsis: The patent addresses the inefficiency of using hard-coded endpoint configurations in USB interface controllers, which required creating and maintaining different hardware description language (HDL) code for each design Compl. ¶20 The solution is a configurable bus interface controller that uses an HDL-based configuration package to flexibly generate the necessary configuration circuitry, allowing on-the-fly configuration for multiple USB endpoints without requiring separate HDL code Compl. ¶19 Compl. ¶21
- Asserted Claims: At least independent method claim 10 Compl. ¶41
- Accused Features: The functionality of NFC Front-end components used in contactless payment transactions Compl. ¶41
Multi-Patent Capsule: U.S. Patent No. 6,996,727
- Patent Identification: U.S. Patent No. 6,996,727, "Power Supply for Universal Serial Bus Interface with Programmable Bus Pullup Resistor," issued February 7, 2006.
- Technology Synopsis: The patent addresses the lack of low-power modes in conventional power supplies, which provided a constant voltage Compl. ¶25 The invention provides a power supply architecture with two modes: a standard mode for normal operation and a power-down (standby) mode that uses a low-power programmable resistor to maintain necessary signaling functions while significantly reducing current consumption Compl. ¶24
- Asserted Claims: At least independent method claim 18 Compl. ¶46
- Accused Features: The functionality of NFC Front-end components used in contactless payment transactions Compl. ¶46
Multi-Patent Capsule: U.S. Patent No. 7,373,531
- Patent Identification: U.S. Patent No. 7,373,531, "Signal Detection Method, Frequency Detection Method, Power Consumption Control Method...," issued May 13, 2008.
- Technology Synopsis: The patent describes a method for reducing power consumption by detecting the operational state of a target device Compl. ¶29 It teaches applying a signal to the gates of connected transistors and monitoring for a "through current" that flows when the input signal switches states. The presence, absence, or frequency of this current can be used to determine if the target is active, enabling power-saving actions like stopping the power supply when idle Compl. ¶28 Compl. ¶29
- Asserted Claims: At least independent method claim 2 Compl. ¶51
- Accused Features: The functionality of NFC Front-end components used in contactless payment transactions Compl. ¶51
III. The Accused Instrumentality
- Product Identification: The complaint identifies the accused instrumentalities as "NFC Front-end components, including without limitation the NXP PN512 NFC Front-End" and other components with "materially similar" functionality (collectively, the "Relevant Instrumentalities") Compl. ¶31
- Functionality and Market Context: The complaint alleges that Defendant uses these components to "perform the claimed method during contactless credit card payment transactions at a point of sale" Compl. ¶31 The instrumentalities are allegedly used in the "regular course of its business operations for processing NFC payment transactions," positioning them as a key part of Defendant's customer-facing payment infrastructure Compl. ¶33 The complaint does not provide further technical detail on the operation of the accused components.
- Evidence: No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references preliminary claim chart exhibits that were not attached to the filing. The following analysis is based on the narrative infringement theory presented in the complaint and an interpretation of how the asserted claims might be read onto the accused functionality.
'201 Patent Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (A) detecting a signaling protocol of a bus connected to an integrated circuit that operates in a plurality of signaling protocols; | The NFC Front-end component allegedly detects the specific contactless communication protocol (e.g., ISO/IEC 14443A, FeliCa) of a presented payment card or device. | ¶31 | col. 2:52-56 |
| (B) configuring said integrated circuit to communicate in one of said plurality of signaling protocols in response to said detected signaling protocol ... wherein each of said selected protocols operate over said connected bus through a single set of pins. | Upon detection, the NFC component allegedly configures its internal circuitry to communicate using the detected protocol, transmitting and receiving signals over its RF antenna interface, which is alleged to function as the claimed "single set of pins." | ¶31 | col. 6:14-19 |
- Identified Points of Contention:
- Scope Question: A central dispute may arise over whether the term "signaling protocol", as used in a patent focused on wired USB and PS/2 standards, can be construed to encompass the modern, wireless NFC communication protocols (e.g., ISO/IEC 14443) allegedly used by the accused devices.
- Technical Question: The analysis may turn on whether the RF interface of an NFC chip, which communicates through a modulated electromagnetic field, constitutes a "bus" with a "single set of pins" as contemplated by the patent, which describes sharing physical data and clock lines.
'071 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (A) generating a plurality of first control signals in response to a current state of a processor; | The NFC component's internal logic, alleged to be a "processor," generates control signals to manage the RF field and data transmission based on its current operational state (e.g., idle, polling, communicating). | ¶36 | col. 8:32-37 |
| (B) progressing to a next state based on said current state, at least one internal control signal ... and an input signal received from said external bus; | The NFC component allegedly transitions to a new state (e.g., from 'polling' to 'card detected') based on its current state and signals received from a contactless card via the RF interface, which is alleged to be the "external bus." | ¶36 | col. 2:50-53 |
| (C) driving at least one output control signal ... onto said external bus; and (D) updating said current state to said next state. | The NFC component allegedly drives output signals (e.g., commands) to the contactless card over the RF interface and updates its internal state to reflect the new status of the transaction (e.g., 'awaiting response'). | ¶36 | col. 2:40-42 |
- Identified Points of Contention:
- Scope Question: A key question will be whether the term "processor", which the patent describes as executing a "program," can be read to cover the specific logic (which may be a more limited finite state machine) inside the accused NFC chip.
- Technical Question: The case may question whether the wireless, inductive coupling between an NFC reader and a card functions as an "external bus" that receives "input signals" in the manner described by a patent focused on wired, electrical bus interfaces.
V. Key Claim Terms for Construction
'201 Patent
- The Term: "signaling protocol"
- Context and Importance: This term's scope is critical. Infringement depends on whether the term, disclosed in the context of wired USB and PS/2 connections, can be broadened to include wireless NFC protocols. Practitioners may focus on this term as it represents a potential mismatch between the patent's original technological context and the accused technology.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself uses the general term "signaling protocol" and "plurality of signaling protocols" without expressly limiting it to USB and PS/2 ’201 Patent, claim 14
- Evidence for a Narrower Interpretation: The patent is titled "Dual Mode USB-PS/2 Device," and the abstract, background, and all described embodiments exclusively discuss solving the problem of interoperability between the USB and PS/2 protocols, suggesting the invention was narrowly focused on those specific standards (’201 Patent, title; abstract; col. 1:15-27).
'071 Patent
- The Term: "processor"
- Context and Importance: The definition of "processor" will determine the required complexity of the accused device's logic. If construed broadly, it could cover any logic that sequences through states; if construed narrowly, it may require a structure that executes stored instructions from memory. The internal architecture of the accused NFC chip will be measured against this construction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent uses the general term "processor" and refers to its "current state," which could describe a simple state machine ’071 Patent, claim 15
- Evidence for a Narrower Interpretation: The specification also describes the invention as a "specialized input-output processor" that executes a "read or write program stored in the memory", suggesting a more complex, instruction-based architecture rather than a simple, hardwired state machine (’071 Patent, col. 8:43-46; col. 5:6-7).
VI. Other Allegations
- Indirect Infringement: The complaint does not contain counts for indirect infringement (inducement or contributory infringement). Each of the five counts alleges that Defendant "has directly infringed" the respective patent Compl. ¶¶31, 36, 41, 46, 51
- Willful Infringement: The complaint does not include a formal allegation of willful infringement. However, the prayer for relief requests a "declaration that this case is exceptional under 35 U.S.C. § 285, and an award of Plaintiff's reasonable attorneys' fees," which is a remedy often sought in cases involving willful or egregious infringement Compl., Prayer C The complaint does not allege any facts to support pre-suit knowledge of the patents by the Defendant.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can claim terms such as "signaling protocol" and "bus", which are rooted in the patent's context of wired peripheral connections (USB/PS/2), be construed broadly enough to cover the modern, wireless NFC technologies used in the accused contactless payment systems?
- A second central question will be one of technical and evidentiary mapping: The complaint provides a high-level infringement theory without detailing how the accused NFC components operate. The case will likely depend on whether discovery reveals a functional and structural correspondence between the internal architecture of the accused chips and the specific, step-by-step requirements of the asserted method claims.
- Finally, a practical issue will be the quantification of damages: With four of the five patents expired and Plaintiff asserting liability only within a defined, backward-looking timeframe, the dispute may focus heavily on establishing the extent of accused use and calculating a reasonable royalty specifically for that limited period, which could significantly constrain the total potential damages.
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