Invalidity dossier
US 9042819
Method, system, and apparatus having near field communication (NFC) chip with configurable memory that is updatable via a host processor
Current assignee: Aist Solutions Co
Added 9/27/2026, 6:42:06 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll research US patent 9042819 across the USPTO and CAFC docket sources.
Let me dig deeper into the claim text, assignee history, and any litigation.
Let me check the PTAB proceeding and any related Federal Circuit appeal.
US Patent 9,042,819 — Analyst Summary
Scope note: I searched for the literal number 9042819 / 9,042,819 across patent databases and 2026 Federal Circuit materials. All bibliographic and claim data below is taken from the patent's own text and docket records; I flag every point where my information is incomplete rather than infer.
1. Bibliographic data
| Field | Value |
|---|---|
| Patent number | US 9,042,819 B2 (interpreted literally) |
| Title | Method, system, and apparatus having near field communication (NFC) chip with configurable memory that is updatable via a host processor |
| Inventor | Robin Dua, San Francisco, CA (sole named inventor) |
| Application no. | 14/502,602 |
| Filed | September 30, 2014 |
| Issued / Date of Patent | May 26, 2015 |
| Pre-grant publication | US 2015/0017914 A1, published January 15, 2015 |
| Earliest priority | May 12, 2005 |
| Primary Examiner | Marceau Milord |
| Attorney / firm of record | Stanzione & Associates, PLLC |
| Claims / drawings | 178 claims, 19 drawing sheets |
| Legal status (per Google Patents) | Expired – Lifetime; anticipated expiration May 12, 2025 |
Continuation chain (all in the same specification family):
- Continuation of Ser. No. 13/975,504 (filed Aug. 26, 2013, now US 8,971,803)
- which is a continuation of Ser. No. 13/556,445 (filed Jul. 24, 2012, now US 8,583,044)
- which is a continuation of Ser. No. 11/127,979 (filed May 12, 2005, now US 8,244,179)
Because the '819 patent claims benefit of the May 12, 2005 filing date with no listed PTA/PTE adjustment ("extended or adjusted under 35 U.S.C. 154(b) by 0 days"), the 20-year term ran from May 12, 2005 and the patent expired on May 12, 2025.
2. Assignee / ownership
The "Assignee" field on the face of the patent reads "Applicant: Robin Dua, San Francisco, CA (US)" — i.e., it issued to the inventor individually. The recorded chain of title (per USPTO assignment records reflected on Google Patents) is:
- Individual (Robin Dua) — original
- → EQUISPAN LLC — assignment recorded March 4, 2016
- → SYNDEFENSE (Syndefense Corp.) — assignment recorded October 24, 2016
- → AIST SOLUTIONS CO. — nunc pro tunc assignment recorded September 27, 2024 (assignor: Syndefense Corp)
Current assignee of record: Aist Solutions Co. (Note: this is the value Google Patents lists; Google expressly disclaims having performed an ownership analysis.)
3. Abstract (verbatim)
"A wireless media player and a related system and methodology are disclosed. One aspect of the wireless media player system pertains to a virtual connector system, apparatus, and method for the automatic establishment of wireless connectivity with other electronic devices. In one embodiment, the media player device employs the use of integrated Radio Frequency Identification (RFID) technology to exchange communication settings, media capability, and other parameters with an external device that also has integrated RFID technology. The automatic exchange of settings and other information via a proximity-based RFID data exchange allows a media player to quickly establish a secure communication link with another device via a commonly supported wireless protocol such as Ultra Wideband (UWB) or Bluetooth. Another aspect of the media player system pertains to a method of using the captured media capability of the connecting device to customize certain menu options and software parameters in the media player."
4. Independent claims — plain-language overview
The patent contains 178 claims, so there are several independent claims. I was able to retrieve the full text of only some of them. Here is what I can confirm, with limitations stated:
(a) Claim 162 — "A near field communication (NFC) chip coupled to an antenna" (full text retrieved)
The NFC chip contains (i) an NFC reader device that selectively receives a signal from an external NFC tag when in range; (ii) an NFC tag device that selectively transmits an NFC response to an external NFC reader; (iii) a switch device that switches the chip between a tag mode and a reader mode; (iv) a controller that receives a switching signal from the host device's processor when software running on the host requires the chip to switch modes; and (v) an RF interface that selectively couples to either the reader or the tag in response to the switching signal.
Plain language: the chip is a dual-mode NFC front end whose tag/reader mode selection is driven by the phone's application processor, not by the NFC chip autonomously.
(b) Claim 171 — "A host device, comprising..." (partial text retrieved)
The host device has a processor executing one or more software programs; an NFC chip that selectively sends/receives signals to/from an external NFC device based on the executed software and when the antenna is within a predetermined distance; and a display device that displays data based on information encoded in a received signal after the software processes it.
Plain language: a phone/computing device in which the application software governs NFC transactions, and the results of an NFC read are rendered on the screen.
(c) Claims 175–178 — dependent on claim 171 (full text retrieved)
These add: the NFC chip's reader device, tag device, mode switch, NFC controller (receiving the switch signal from the host processor), and RF interface; plus a configurable memory device in the NFC chip that interfaces with the NFC controller (claim 176), updatable by the host processor and the software programs running on it (claim 177), and tamper-resistant to prevent unauthorized access to confidential information (claim 178). This is the claim family that matches the patent's title.
(d) Claim 123 — an independent method claim (preamble text not retrieved — treated as uncertain)
I confirmed from the dependent claims that claim 123 is independent and method-form, because claims 130, 143, 150, 151 and ~160 expressly recite "The method of claim 123…" The dependent claims indicate that the method involves storing information in a memory device of an NFC chip that is retrievable by an external NFC reader; updating that stored information via the host device's processor (e.g., "updating a memory device of a NFC chip using the processor of the host device"; "updating the information stored in the memory device with the one or more software programs executed by the host device's processor by sending data via the processor of the host device to the NFC controller"); and limiting/deciding access to the memory device according to predefined software programs on the host device.
Plain language: a method of operating a host device's NFC chip memory where host-side software writes and controls access to the tag-side data.
⚠️ Uncertainty — claim 1. I was not able to retrieve the text of claim 1 or establish with confidence the complete list of independent claims (e.g., whether there are additional independent system/apparatus claims in the 1–122 range). Given 178 claims and the continuation history, the claim set almost certainly contains more than one independent apparatus/system claim in addition to claim 123, 162 and 171, but I will not guess at their text. This should be verified against the USPTO Patent Center / full claim listing before being relied upon.
5. Docket checks — USPTO / PTAB / CAFC
PTAB: I found a Petition in IPR2024-00407, Microsoft Corporation, in which US 9,042,819 to Dua appears as Exhibit MS-1007 (filed January 16, 2024). I could not confirm from the retrieved material whether the '819 patent was itself the challenged patent in that IPR or was submitted as a prior-art/reference exhibit, and I did not retrieve a Final Written Decision for that proceeding. This should be verified directly in PTAB's P-TACTS system.
Background context: Google Patents flags this patent family as having worldwide family litigation filed (Darts-IP family 37419769), consistent with this being one of the Robin Dua NFC/RFID patents that has been asserted and re-challenged repeatedly.
CAFC 2026: I searched 2026 Federal Circuit opinions/orders and docket summaries. I found no 2026 CAFC appeal, opinion, or order involving US 9,042,819. The 2026 CAFC decisions returned in my searches (e.g., Global Tubing v. Tenaris, Magnolia Medical v. Kurin, AudienceScience v. Google, DSS v. Nichia, Moskowitz v. Globus, Enviro Tech v. Safe Foods, TJTM v. Google) do not involve this patent. I state this as "not found," not as an affirmative certification that none exists — a docket-number-specific query on the CAFC's PACER/CM-ECF and the court's own opinion index would be needed to certify that.
6. Key takeaways
- US 9,042,819 is a single-inventor (Robin Dua) continuation patent in a large 2005-priority RFID/NFC family; the '819 itself issued in 2015 on a 2014 application.
- Its distinctive subject matter (per title and claims 162/171/175–178) is NFC chip architecture: host-processor-controlled tag/reader mode switching plus a configurable, host-updatable, tamper-resistant memory in the NFC chip.
- Title owner today is Aist Solutions Co., via Equispan → Syndefense.
- The patent expired on May 12, 2025, so it can no longer be asserted, though it remains citable as prior art against later filings.
- No 2026 CAFC activity located; a Microsoft IPR (IPR2024-00407) references the patent, with the role of the patent in that proceeding unconfirmed.
Sources: Google Patents full text and bibliographic record (https://patents.google.com/patent/US9042819/en); Justia Patents claim listing and patent history (https://patents.justia.com/patent/9042819); FreePatentsOnline (https://FreePatentsOnline.com/9042819.html); PTAB docket exhibit listing for IPR2024-00407 (https://gaeflexstaging-dot-docketupdate.appspot.com/cases/PTAB/IPR2024-00407/Microsoft_Corporation/01-16-2024-Petitioner/Exhibit-1007-US_Patent_No_9,042,819_to_Dua/); Patent Leaderboard inventor listing (https://www.patentleaderboard.com/google/robin-dua/35337).
Generated 9/27/2026, 6:53:16 PM
Cases on file (0)
Specific litigation cases in our database that name US patent 9042819. The free-form analysis below may also discuss cases beyond this list.
No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US patent 9042819.
Let me search for litigation involving the assignees and the patent family.
Let me search more targeted litigation databases.
Litigation search results for US 9,042,819
Bottom line: I was unable to confirm any litigation specifically asserting U.S. Patent No. 9,042,819 ("the '819 patent"). I am not going to report case numbers, parties, or outcomes that I could not verify, because doing so would require fabricating them.
Here is exactly what I found, and the limits of what I could verify.
1. What the patent's own record shows
The Google Patents record for US 9,042,819 B2 (https://patents.google.com/patent/US9042819/en) contains a single litigation-related flag:
- "Family has litigation — First worldwide family litigation filed," linked to Darts-IP family ID 37419769 via https://patents.darts-ip.com/?family=37419769
This is important to read carefully and literally:
- It is a family-level indicator, not a patent-level one. It means at least one member of the patent family (which traces to priority date 2005-05-12) has been involved in litigation somewhere in the world. It does not establish that the '819 patent itself was asserted, nor does it identify any plaintiff, defendant, court, or case number.
- I could not retrieve any underlying case data from the Darts-IP family link or from any other source I searched. So this flag is a lead, not evidence of a case involving the '819 patent.
2. Ownership chain (relevant to who could have sued)
From the assignment/reassignment events on the face of the record:
| Date | Owner | Instrument |
|---|---|---|
| — | Individual (Robin Dua) | Original assignee |
| 2016-03-04 | EQUISPAN LLC | Assignment of interest (assignor: Dua, Robin) |
| 2016-10-24 | SYNDEFENSE | Assignment of interest (assignor: Equispan) — reel/frame 040098/0399, effective 20161022 |
| 2024-09-27 | AIST SOLUTIONS CO. | Nunc pro tunc assignment (assignor: Syndefense Corp) |
I searched for litigation under each of these names (Equispan, Syndefense, and Dua) and found no case in which the '819 patent is identified as an asserted patent.
3. Why I could not complete a full PACER / litigation-portal search
My available search tooling returned general web and patent-database results, but did not surface:
- any Unified Patents litigation-portal entry for 9,042,819;
- any PACER docket listing 9,042,819 among asserted patents;
- any CAFC appeal docket referencing 9,042,819;
- any complaint, ITC Section 337 notice, or court opinion naming 9,042,819.
Searches for the number returned only the patent itself, classification listings (e.g., classes 340/10.51, 455/41.1, 709/213), patent-family tables, and one spurious hit (a gas-analysis report and a Brazilian street-address list both coincidentally containing "9042819"). I deliberately did not import any of those irrelevant results.
One incidental hit did flag a "Third Party Action Trigger #2018031, Nov 1, 2018" on a Radaris inventor page listing Robin Dua's patents — but that appears associated with a different Dua application (U.S. 16/020,616, "providing notifications based on third party data"), not with the '819 patent. It is also ambiguous as to what the "action" was. I am not treating it as a '819 patent proceeding.
4. Conclusion
- No litigation involving US 9,042,819 is confirmed by the sources I could access.
- The only indicative datum is a family-level "first worldwide family litigation filed" flag on the Google Patents record for priority family 37419769 (priority date 2005-05-12), which does not identify the '819 patent as the asserted patent and provides no case particulars.
- If you need a definitive answer, the reliable next steps are direct queries against PACER (party-name searches for Equispan LLC, Syndefense Corp., and Robin Dua, plus patent-number filters) and the Unified Patents litigation portal (https://portal.unifiedpatents.com/litigation/caselist), which I was not able to execute successfully here. I'd also suggest a LEXIS/Westlaw Darts-IP lookup on family 37419769 to resolve exactly which family member(s) were litigated.
I want to be explicit rather than helpful-sounding: I do not know of any reported litigation asserting U.S. 9,042,819, and I found no verifiable case data. Any case list I produced would be invented.
Generated 9/27/2026, 6:53:02 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll verify the ODP's "no proceedings" result against public sources before drafting.
The first hit references a different "'904 patent" (claims 56-59, joinder with an "'1298 IPR") — I need to pin down whether any IPR actually names this patent. Let me drill in on the owner/inventor trail.
Let me check the litigation/assertion trail and PTAB dockets directly for this patent number.
PTAB landscape — US Patent 9,042,819 ("Method, system, and apparatus having near field communication (NFC) chip with configurable memory that is updatable via a host processor," Robin Dua / currently AIST Solutions Co.)
Proceedings overview
Total AIA trial proceedings on file: 0 — the USPTO Open Data Portal structured block returns no AIA trials, and my independent web searches surfaced no IPR, PGR, or CBM naming US 9,042,819 as the challenged patent (0 active / 0 claims invalidated / 0 claims sustained / 0 settled / 0 institution denied) — so there is no IPR-driven claim cancellation to leverage and no § 315(e)(2) estoppel binding anyone; the patent's real defensive weakness is not the PTAB but the calendar: Google Patents lists an anticipated expiration of 2025-05-12 and legal status "Expired – Lifetime," which means a defendant today faces only a six-year back-damages window under 35 U.S.C. § 286 and no injunctive exposure for ongoing conduct.
Proceedings on US 9,042,819
None. I found no petition, institution decision, final written decision, appeal, or settlement involving this patent as the subject patent. The distinction matters, because this patent number is easy to confuse with others (see the near-miss table below). I did not find the FWD, panel, or appeal record because there is no proceeding to source them from — I will not fabricate a docket.
Dockets that are NOT this patent — do not cite these as '819 outcomes
| Docket / cite | Actually about | Why it looked relevant | Verified status |
|---|---|---|---|
| IPR2025-00562 — Apple Inc. v. Proxense LLC | The '188 patent (Proxense) | US 9,042,819 is cited as prior art here (Ground 1: claims 1-20 obvious over Giobbi '157 in view of Giobbi '139 and Dua, where "Dua" = Patent 9,042,819) | Third-party petition summary (ai-lab.exparte.com); confirm against the public petition on PTAB E2E |
| IPR2022-**** (AT&T-side petitioners) re "the '819 Patent" | US 8,958,819 — a different patent (SoundClear v. AT&T/Amazon/Google family) | Same trailing digits, joinder/stipulation briefing | Petition excerpt on ptacts.uspto.gov referencing 8,958,819 |
| "the '904 patent" IPR (joinder with an "'1298 IPR," claims 56-59, Ito + Gilhousen459) | A different patent entirely (claims numbered in the 50s) | "904" ≈ "9,042,819" | Petition excerpt on ptacts.uspto.gov; claim numbering rules out the '819 |
| IPR2015-01349 — Dell Inc. v. NXP B.V. (US 8,280,304) | NXP patent; prior art is "Dua" = U.S. Pub. 2006/0165060 | The "Dua" name is the inventor's own earlier application, not the '819 | Preliminary Response and Petition on docketalarm.com |
| IPR2022-00412 / -00413 — Apple Inc. v. RFCyber Corp.; IPR2022-01503 — Plantronics v. Koss | RFCyber and Koss patents; Dua publications (US 2006/0165060; US 2006/0258289) used as prior art | Dua-family art, not the '819 | Petition/petition-exhibit listings |
The pattern in that table is the strategically interesting part: the Dua NFC family is a prolific source of prior art against other people's patents, not a frequent target of IPRs itself. US 9,042,819 shows up in PTAB records as a reference, which is the opposite posture from a patent under coordinated attack.
Strategic summary
Claim status. Because no IPR reached an FWD, every claim of US 9,042,819 is UNTESTED at the PTAB. Nothing is canceled and nothing is PTAB-sustained. Any statement that "claims 1-5 are dead" would be false here; conversely, any defendant cannot point to a PTAB outcome as evidence of strength either. The claim set stands as issued (subject only to whatever happened in prosecution and to the terminal disclaimer noted on related family members).
Estoppel landscape. With no AIA trial, there is no § 315(e)(2) estoppel running against any petitioner or privy, and no IPR-imposed narrowing to route around. A defendant therefore has the full § 102/§ 103 toolbox: patents, printed publications, public use/on-sale, and — importantly given this family's history — the Dua family's own earlier applications and publications (e.g., US 2006/0165060, filed 2005-01-21, and US 2006/0258289) as § 102(e)/§ 102(a)(2) art. The '819 has a 2005-05-12 priority date, so its own family's earlier-filed material is fair game. One caveat: because no IPR has been filed, IPR is still available as a forum — the Board has historically instituted on expired patents (the claims simply aren't amendable in any meaningful way), but you should weigh that against the fact that the patent's forward-looking value is already gone. I'd want to confirm current Board practice on expired-patent institution before building a strategy on it; treat this as a live question rather than settled.
Pattern signals. No repeat petitioner, no patent-owner PTAB appeal history on this patent, and no identified defensive aggregator (Unified Patents et al.) challenging it — Unified's public prior-art page cites the '819 only as background art for a different patent. The ownership chain (Robin Dua → Equispan LLC on 2016-03-04 → Syndefense on 2016-10-24 → AIST Solutions Co. on 2024-09-27) shows a monetization-oriented chain, and Google Patents carries a "family has litigation" flag with a Darts-IP link indicating first worldwide family litigation. I could not verify the specific litigation dockets or the asserting entities within this research pass — treat the litigation history as real-but-unconfirmed and pull the Darts-IP/Google Patents litigation tab (https://patents.google.com/patent/US9042819/en) plus PACER before relying on it.
Recommended next steps
- Do not build an IPR narrative on the '819. There is nothing to cite. If opposing counsel or a demand letter implies the patent has been through PTAB, ask for the docket number — none exists.
- Confirm the terminal date first. Verify the expiration computation (20 years from the 2005-05-12 priority date, plus any PTA in the file wrapper) against USPTO PatentCenter for US 14/502,602. If it expired 2025-05-12, then under 35 U.S.C. § 286 your damages exposure is capped at the six years preceding service of the complaint, and ongoing-conduct (post-expiration) royalties are off the table. That is likely your cheapest and strongest defense — cheaper than an IPR.
- Run a fresh PTAB check before you finalize anything, since my search budget for this pass was limited and the ODP ingest can lag: PTAB E2E (https://ptab.uspto.gov/) search, Patent Trial and Appeal Board Decisions full-text (https://www.uspto.gov/patents/patent-trial-and-appeal-board/ptab-decisions), and CourtListener for any CAFC appeal naming 9,042,819 or AIST Solutions/Syndefense/Equispan as appellant. Also pull the assignment records to confirm the current owner has standing to sue.
- If you are weighing an IPR anyway (e.g., a co-defendant wants a validity ruling of record), the art to lead with is the Dua family itself plus the 13.56 MHz NFC/ISO 14443 prior art that the Board has already engaged with in sibling-family litigations — and note the Board's demonstrated appetite in Apple v. RFCyber and Dell v. NXP for rejecting Dua-based combinations on motivation-to-combine and public-accessibility grounds.
Confidence and gaps. High confidence that no AIA proceeding names US 9,042,819 as the challenged patent, based on the ODP block plus multiple targeted searches. Moderate-to-low confidence on the specific litigation history and on the exact expiration date (both are flagged as assumptions in the Google Patents record and were not independently verified here). The "Dua as prior art in IPR2025-00562" item comes from a third-party petition summary and should be confirmed against the petition itself.
Generated 9/27/2026, 6:53:30 PM
Ownership chain (3)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2016-03-04 · reel 037893/0502 · Assignment
Dua, RobinEquispan LLC, Delaware
transfer-to-asserter
2016-10-22 · recorded 2016-10-24 · reel 040098/0399 · Assignment
transfer-to-asserter
? · recorded 2024-09-27 · Nunc pro tunc assignment
Syndefense CorpAist Solutions Co.
internal reorg
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment chain for US 9042819. Let me run several targeted searches in parallel.
Excellent — I found the reel/frame numbers. Let me now pull the correspondent of record and litigation details.
Inventors
| Inventor | Location on record | Employer at time of filing |
|---|---|---|
| Robin Dua (sole named inventor on all family members) | San Francisco, CA (US) | Undeterminable / none of record. The application was filed by Dua as an unassigned individual — Google Patents lists the original assignee as "Individual," and no corporate employer is named on the face of US 9,042,819 or on the sibling continuations. |
Unusual pattern — flag. This is a single-inventor, never-corporately-assigned portfolio. The asserted priority chain runs back to U.S. App. Ser. No. 11/127,979 filed 2005-05-12 (issued as US 8,244,179), through Ser. No. 13/556,445 (2012-07-23) and Ser. No. 13/975,504 (2013-08-26), to the instant application 14/502,602 filed 2014-09-30. Across that ~9-year prosecution chain the inventor retained personal ownership, then sold out to an LLC roughly 10 months after issuance (see timeline). That is the classic precursor to a portfolio monetization play — but per the constraint against speculating, I note only the fact of the individual-held-then-sold structure, not an inference of motive from it.
Original assignee
None at issuance — the patent issued to Robin Dua as an individual. Google Patents records the original assignee as "Individual," and the first-recorded assignment of the patent (reel 037893/0502) is captioned ASSIGNMENT OF ASSIGNORS INTEREST; ASSIGNOR: DUA, ROBIN — i.e., a personal conveyance, not a corporate one.
- Product embodying the claims? No. No product was ever shipped by an assignee of record. The invention (an RFID/NFC tag-reader module with configurable tag memory updatable by the host processor — see the
RFID Tag-Reader Module 113,RFID tag unit 306, andtag memory 322disclosure at FIGS. 4A/4B) was never commercialized by any entity in the chain that I could verify. - Primary line of business: N/A — inventor-held individual.
- Current status: N/A for the original assignee; the current holder of record is Aist Solutions Co. (per Google Patents legal events, change of assignee 2024-09-27). Country of the patent is now expired — anticipated expiration 2025-05-12, legal status "Expired - Lifetime."
Assignment timeline
Three recorded post-issuance conveyances. Reel/frame for the first two were confirmed from the Google Patents "Legal Events" table and the FreePatentsOnline record; the 2024 reel/frame is not retrievable from the sources I could reach and I will not invent it.
2016-03-04 (executed) / recorded 2016-03-04 — Reel 037893/0502
- Conveyance: Assignment
- Assignor: Dua, Robin
- Assignee: Equispan LLC, Delaware
- Correspondent: Could not verify. The recording data returned by the indexed legal-events tables carries the reel/frame and the assignor/assignee, but not the recording correspondent (the filing attorney of record). See signal 3 below — I could not confirm a recurring correspondent and will not name one speculatively.
- Context: Sale by individual inventor to a Delaware non-practicing LLC — first transfer out of inventor hands, ~10 months after grant.
2016-10-22 (executed) / recorded 2016-10-24 — Reel 040098/0399
- Conveyance: Assignment
- Assignor: Equispan (Equispan LLC)
- Assignee: Syndefense, Japan (later rendered as Syndefense Corp., Kanagawa, JP)
- Correspondent: Could not verify. Note the prosecution firm of record on later Dua-family patents held by Syndefense — US 10,349,128 and US 10,462,522 — is Stanzione & Associates, PLLC. That is the patent-prosecution attorney of record, not the assignment-recording correspondent; I flag it only as a cross-reference and do not treat it as the signal-3 finding.
- Context: Resale of the asset from one non-manufacturing holder to another non-manufacturing holder — 232 days after the prior link.
2024-09-27 (recorded) — Reel/Frame not verified (Google Patents legal events entry only; reel not surfaced)
- Conveyance: Nunc pro tunc assignment
- Assignor: Syndefense Corp
- Assignee: Aist Solutions Co.
- Correspondent: Not obtained.
- Context: Late-corrective transfer to the entity now shown as current assignee and "Parent Company" across the Dua family on Unified Patents' portal. The nunc pro tunc ("now for then") form indicates a back-dated correction of record rather than a fresh arm's-length acquisition, but I cannot confirm the underlying transaction date.
Recorded-owner-of-record summary: Individual (Dua) → Equispan LLC → Syndefense Corp → Aist Solutions Co.
Timeline diagram
timeline
title Ownership of US 9042819
2005 : Priority application filed by Robin Dua
2014 : Continuation application filed
2015 : Patent issued to Robin Dua
2016 : Assigned to Equispan LLC
: Assigned to Syndefense Corp
2024 : Assigned to Aist Solutions Co
2025 : Patent expired
NPE / troll-pattern signals
1. Shell-entity transfer — present (moderately supported).
Patent moved out of individual-inventor ownership into Equispan LLC, Delaware at reel 037893/0502, effective 2016-03-04. Corroboration beyond the name: (a) the grantee is a Delaware LLC with no product footprint I could find, (b) the same entity appears as "Original Assignee: Equispan LLC" on the sibling family member US 9,306,632 per Unified Patents' portal, and (c) the entity is the subject of an assignment-of-interest conveyance, i.e., a pure title-holding vehicle. Caveat: I did not retrieve the registered-agent address or single-member LLC filings for Equispan, so the "shell" characterization rests on Delaware incorporation, absence of products, and title-holding-only behavior rather than on a confirmed registration-agent-service address. Note: a Georgia entity named "Equispan Proactive Marketing, Inc." exists — it is not the assignee here and should not be conflated with it.
2. Known asserter in the chain — unclear.
None of the three assignees appear on the enumerated lists (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities). Syndefense, however, publicly concedes on its own corporate site (syndefense.co.jp/en/jigyou/) that "SYNDEFENSE may be considered an NPE as it does not manufacture or sell products," while expressly disclaiming the litigation-centric PAE model and stating it "does not sell IP assets to patent trolls." Separately, Google Patents flags "Family has litigation — First worldwide family litigation filed" (Darts-IP family 37419769) for this patent, and USPTO PTAB records show IPR petitions filed against sibling Dua-family patents (e.g., petitions 1548430, 1548756, 1557860 against US 9,462,411), which implies the family was asserted in district court against smartphone/NFC-payment implementers. I could not confirm the plaintiff, the defendant, or the filing dates for this patent, so I cannot convert this into a clean "known asserter" hit. Marked unclear.
3. Repeat correspondent across the chain — unclear / not verifiable.
This is the single most important field in the brief and it is the one I could not obtain. The indexed assignment records I reached expose reel/frame, conveyance, assignor and assignee, but not the recording correspondent for reels 037893/0502, 040098/0399, or the 2024 entry. I therefore make no finding. For completeness: the recurring prosecution firm across the family is Stanzione & Associates, PLLC (attorney of record on Syndefense-owned US 10,349,128 and US 10,462,522), but prosecution counsel is a different role from assignment correspondent and I decline to treat it as signal 3 evidence. Recommendation: pull reels 037893/0502 and 040098/0399 directly in Assignment Center to read the correspondent blocks.
4. Cascading transfers — present.
Two consecutive assignments through distinct holders in 232 days (2016-03-04 → 2016-10-22), from individual → Delaware LLC → Japanese licensing entity, with a third recorded transfer in 2024. This is a chained-holder sequence, not a single clean acquisition. Whether the assignees share a correspondent address or common principals could not be verified (see signal 3).
5. Pre-litigation transfer — unclear.
The family carries a litigation flag, but I do not have a verified first-suit date or a plaintiff identity, so I cannot test the 6-month window against either the 2016-03-04 or the 2016-10-22 assignment. Not scored.
6. Bankruptcy fire-sale — not present.
No Chapter 7/11 record, no docket evidence, and no operating-company assignor in the chain at all (the only individual assignor was the inventor). No evidence of a bankruptcy sale.
7. Privateering — not present.
Privateering requires an operating company transferring to an NPE that asserts on the operating company's behalf. The first transfer here ran from an individual inventor, not an operating company. The Syndefense website's "operating company patent monetization projects" language describes a service offering, but there is no verified operating-company assignor or SEC filing connecting this patent to a privateering arrangement.
8. Defensive aggregator (anti-NPE) — not present.
The chain terminates at Aist Solutions Co., which is not RPX, AST, LOT Network, Unified Patents, or OIN. Syndefense's marketing rhetoric is anti-PAE, but it is a for-profit IP advisory/monetization firm (<$5M revenue, ~2 employees, Kamakura, Kanagawa, JP) and is not a recognized defensive aggregator. The patent is therefore not shown to have been neutralized by defensive aggregation — it simply expired on 2025-05-12.
Verdict
NPE — high confidence.
Two strong signals are present and independently grounded: (i) a shell-entity transfer at reel 037893/0502 (effective 2016-03-04) moving US 9,042,819 from sole inventor Robin Dua into Equispan LLC, Delaware, a title-holding vehicle with no product footprint, and (ii) cascading transfers at reels 037893/0502 and 040098/0399 moving the patent through two distinct non-manufacturing holders inside 232 days (2016-03-04 → 2016-10-22), followed by a third transfer to Aist Solutions Co. on 2024-09-27. The immediate assignee, Syndefense, expressly states on its own website that it "may be considered an NPE as it does not manufacture or sell products," and the patent family carries both a Darts-IP litigation flag (family 37419769) and PTAB petitions against sibling Dua patents. I stop short of a cleaner call because the recording correspondent was not verifiable for any reel and the first-suit date/plaintiff was not confirmed — both of which would sharpen signals 2, 3, and 5. Note for completeness: this patent is expired (2025-05-12), so the chain is now historically interesting rather than assertable.
Verify at: https://assignmentcenter.uspto.gov/ (search patent number 9042819) — confirm reels 037893/0502 and 040098/0399, retrieve the reel/frame and correspondent block for the 2024 nunc pro tunc Syndefense → Aist Solutions Co. entry, and pull the Darts-IP family 37419769 litigation docket for the first-suit date.
Confidence note: inventor identity, dates, conveyances, and reels 037893/0502 and 040098/0399 are drawn from the authoritative patent text's legal-events table and are high confidence. The 2024 reel/frame, all assignment correspondents, the first-litigation date, and the corporate nature of Equispan LLC and Aist Solutions Co. were not verifiable from the sources available to me and are reported as open items rather than asserted.
Generated 9/27/2026, 6:53:43 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the prior art citations for US 9,042,819, starting with the patent's own citation records and the related family members.
I found a key lead: a PTAB proceeding (IPR2024-00407) involving US 9,042,819. Let me research that and the patent's own citation record.
I have significant new findings (including a PTAB proceeding where the '819 patent was used as prior art). Now let me retrieve the actual "References Cited" list on the face of US 9,042,819.
I was unable to complete every intended database step, so I will answer with what I could verify and be explicit about what I could not. Two important things surfaced that change the picture from the earlier "litigation" section, and I flag them below.
1. Patent identification (literal)
| Field | Value |
|---|---|
| Patent number | US 9,042,819 B2 |
| Title | Method, system, and apparatus having near field communication (NFC) chip with configurable memory that is updatable via a host processor |
| Inventor | Robin Dua |
| Application | US 14/502,602, filed 2014-09-30 |
| Granted | 2015-05-26 |
| Priority date | 2005-05-12 |
| Status | Expired – Lifetime (anticipated expiration 2025-05-12) |
| Assignee chain | Individual (Dua) → Equispan LLC (2016-03-04) → Syndefense (2016-10-24) → AIST Solutions Co. (2024-09-27) |
| Record's prior-art keywords | nfc, chip, host device, external, nfc chip |
| Record's stated prior-art date | 2005-05-12 |
Source: https://patents.google.com/patent/US9042819/en
Because the '819 is a continuation claiming the 2005-05-12 priority date with (as far as the record shows) no new matter, the controlling statute is pre-AIA 35 U.S.C. § 102, with the critical date being 2005-05-12 (i.e., an effective filing date of 2005-05-12). That framing drives the § 102 discussion below: a reference published before 2004-05-12 can be § 102(b) art; a reference published 2004-05-12 → 2005-05-12 is only § 102(a)/(e) art; and U.S. patents/applications qualify as § 102(e) art from their filing dates.
2. The "References Cited" record — and a sourcing caveat
The Google Patents rendering I retrieved for this family displays a "Patent Citations (23)" block (the U.S. references cited on the face of the application). I need to be transparent about one uncertainty: the page I pulled rendered that block alongside the sibling record for US 8,244,179 B2, so I cannot certify that every entry below is on the literal face of the '819 as opposed to an immediately adjacent continuation in the identical family. The entries are consistent with a 2014-filed continuation (they include Dua family members granted in 2013–2014, which the 2012-issued US 8,244,179 could not itself have cited). I therefore treat this as the family's cited-reference set and flag it as such rather than asserting it is verbatim the '819 front page.
I could not open the USPTO PatentCenter/PTAB "References Cited" pane for 9,042,819 directly. Any entry I could not see on the record, I have not listed as if it were cited.
Cited U.S. references (as rendered in the record)
| # | Citation | Date(s) shown | Brief description | Potential § 102 exposure |
|---|---|---|---|---|
| 1 | US 6,681,120 B1 (Minerva Industries) | prio. 1997-03-26; pub. 2004-01-20 | Mobile entertainment/communication device — handset combining media playback and wireless communication | § 102(a)/(b) for any claim drawn to a handheld media player with an integrated wireless transceiver; does not reach NFC tag-reader or configurable-tag-memory limitations. Weak. |
| 2 | US 6,829,648 B1 (Apple Computer) | 1998-01-15; 2004-12-07 | Preparing/formatting media data for transmission (streaming prep) | § 102(a)/(b) only for the format-conversion / "convert media to a supported format before sending" concepts; not for NFC or memory configurability. Narrow. |
| 3 | US 6,337,856 B1 (Steelcase Development) | 1998-05-20; 2002-01-08 | Multimedia data communications system | General background; appears to lack the proximity/RFID-setup element. Unlikely to anticipate. |
| 4 | US 7,190,257 B2 (Intermec IP Corp.) | 1999-03-16; 2007-03-13 | Data encoding in RFID transponders — writing/encoding data into transponder memory | The most on-point cited art for the configurable tag-memory aspect: § 102(a)/(e) candidate for claims reciting an NFC/RFID chip whose memory content is written/encoded. Does not appear to teach host-processor-mediated updating. Moderate. |
| 5 | US 6,782,412 B2 (Verizon Laboratories) | 1999-08-24; 2004-08-24 | Unified multimedia communication services | Network/service-layer background; not proximity art. Unlikely. |
| 6 | US 6,850,252 B1 (Hoffberg) | 1999-10-05; 2005-02-01 | Intelligent electronic appliance system/method (adaptive, networked appliances) | Very broad genus; § 102(a)/(b) only at a high level of generality; no NFC tag-reader/configurable memory. Weak. |
| 7 | US 6,853,894 B1 (USA Technologies) | 2000-04-24; 2005-02-08 | Global-network vehicle safety/security telematics | Background; off-point. Unlikely. |
| 8 | US 7,433,677 B2 (Nokia) | 2000-05-05; 2008-10-07 | Communication devices and method of communication — RFID/contact-based initiation of a short-range wireless link and data exchange between devices | Strongest § 102 candidate among the cited set for the "virtual connector" claims (bring devices together → exchange settings → establish wireless link) and for data exchange between a tag-bearing device and a reader-bearing device. § 102(a)/(e). |
| 9 | US 6,792,449 B2 (Microsoft) | 2001-06-28; 2004-09-14 | Startup methods for streaming content | § 102(a)/(b) for streaming start-up buffering; not proximity art. Narrow. |
| 10 | US 7,112,138 B2 (IGT) | 2001-08-03; 2006-09-26 | Player-tracking communication in a gaming machine (wireless peripheral handshake) | Peripheral/handshake background; unlikely to anticipate the NFC claims. Weak. |
| 11 | US 2004/0176032 A1 (Kotola, Nokia) | 2002-03-26; pub. 2004-09-09 | RF-ID-based discovery for short-range radio communication; reader device having transponder (tag) functionality | Very strong § 102 candidate — directly prefigures (i) RFID-based discovery to set up Bluetooth/short-range links and (ii) a reader device that also has transponder/tag functionality (the tag-reader architecture of the '819). Note this was published 2004-09-09, so it is § 102(a)/(e) art, not § 102(b), against a 2005-05-12 date. |
| 12 | US 2004/0055446 A1 (Apple) | 2002-07-30; pub. 2004-03-25 | Graphical user interface for a multimedia player | § 102(b) for GUI/media-menu claims only. Narrow. |
| 13 | US 6,788,676 B2 (Nokia) | 2002-10-30; 2004-09-07 | UE enabled for SIP signalling with QoS for multimedia | § 102(b) for the SIP/Internet-transmission claims. Narrow. |
| 14 | US 2004/0116074 A1 (Sony) | 2002-12-17; pub. 2004-06-17 | Communication apparatus and method | Moderate/background; device-to-device communication. |
| 15 | US 2004/0224638 A1 (Apple) | 2003-04-25; pub. 2004-11-11 | Media player system (connector/accessory architecture) | § 102(a)/(e) for media-player-with-accessory concepts; not NFC. Moderate. |
| 16 | US 7,997,494 B2 (Koninklijke Philips) | 2003-05-13; 2011-08-16 | Portable device for storing media content | § 102(a)/(e) for portable media-storage/rendering claims. Moderate. |
| 17 | US 2005/0076364 A1 (Dukes) | 2003-08-29; pub. 2005-04-07 | Customizing a multimedia interface | Published 2005-04-07 — within one year of the 2005-05-12 date, so at most § 102(a)/(e); GUI customization only. Weak. |
| 18 | US 2005/0076388 A1 (Lee Morse) | 2003-09-02; pub. 2005-04-07 | Controlling playback of digital media | Same date issue as #17; playback-control background. Weak. |
| 19 | US 8,244,179 B2 (Dua) | 2005-05-12; 2012-08-14 | Wireless inter-device data processing configured through inter-device transmitted data | Same family / same inventive entity — not § 102 art against the '819. Listed as related/continuation art. |
| 20 | US 8,463,184 B2 (Dua) | 2005-05-12; 2013-06-11 | Wireless media system-on-chip and player | Same family. Not § 102 art. |
| 21 | US 8,548,381 B2 (Dua) | 2005-05-12; 2013-10-01 | Wireless audio device and wireless media player… | Same family. Not § 102 art. |
| 22 | US 8,583,044 B2 (Dua) | 2005-05-12; 2013-11-12 | NFC-enabled wireless media system and player and method of operation | Same family. Not § 102 art. |
| 23 | US 8,768,256 B2 (Dua) | 2005-05-12; 2014-07-01 | Computing device to wirelessly transmit and receive data with at least one proximally located electronic device | Same family. Not § 102 art. |
Net read of the cited set: the entries that realistically bear on the novel core of the '819 (an NFC chip with configurable memory updatable via a host processor) are US 7,190,257 (Intermec) for tag-memory encoding, and US 7,433,677 (Nokia) + US 2004/0176032 (Kotola/Nokia) for the tag-reader/discovery architecture. The remainder are media-player, streaming, GUI, SIP, and gaming background art. None of the cited references, on their face, appear to disclose the specific "memory configurable / updatable via a host processor" limitation that the '819's title makes the point of novelty — which is consistent with the reference being cited for context rather than for the point of novelty.
3. More probative art that is not merely incidental
- US 2006/0258289 A1 (Dua), published 2006-11-16 — this is the original pre-grant publication of this very family (priority 2005-05-12). It is not art against the '819, but it is the family's disclosure that has been used as § 102(e) art against third parties:
- Ex Parte Trappeniers et al. (PTAB, 2014): rejection under "§ 102(e) as anticipated by Dua (US 2006/0258289 A1; Nov. 16, 2006)" — i.e., the Dua publication anticipated another applicant's claims.
- Plantronics, Inc. et al. v. Koss Corporation — petitioner's Ex. 1003 is "U.S. Pat. App. Pub. No. 2006/0258289 A1 to Dua."
These confirm the family's disclosure is treated as anticipatory prior art to other NFC/wireless-audio filings.
- US 8,117,445 B2 ("Near field communication, security and non-volatile memory integrated sub-system for embedded portable applications") surfaced repeatedly in my searching and is highly relevant to the configurable NFC memory concept — but I could not confirm it appears on the '819's face, so I am not presenting it as a cited reference.
4. Important flags / contradictions with the earlier section
- This patent is being used as prior art, not litigated as a patent-in-suit, in the proceeding I found. In IPR2024-00407, Microsoft Corp. v. Proxense, LLC (PTAB, filed 2024-01-16; FWD 2025-07-17, all challenged claims of U.S. 9,679,289 held unpatentable), the petitioner's exhibit list includes "MS-1007 — U.S. Patent No. 9,042,819 ('Dua')." The '819 (priority 2005-05-12) is asserted in a § 103 ground: Giobbi-157 in view of Giobbi-139 and Dua. It is therefore prior art, not the challenged patent, in that IPR. (Parallel district litigation: Proxense, LLC v. Microsoft Corp., No. 6:23-cv-00319, W.D. Tex.)
- Do not conflate 9,042,819 with 8,958,819. A separate AT&T/Pakzad petition challenges "the '819 Patent" with a Claim 33 — that is U.S. 8,958,819, a different patent. The literal identifier in this task is 9,042,819 only.
- Minor contradiction with the earlier litigation summary: that section concluded no litigation could be confirmed and relied on the family-level Darts-IP flag. The PTAB record above shows the family does have adversarial history, and the '819 specifically appears in an IPR (as a reference). The earlier section was correct that it found no case asserting the '819; it simply did not reach the IPR dimension. Both statements are reconcilable, but the IPR is the more complete answer.
5. What I could not verify (stated plainly)
- I could not pull the USPTO PatentCenter "References Cited" pane for 9,042,819 to certify the exact front-page list, nor the examiner's Form-892 with the § 102 rejection citations applied during prosecution of this continuation.
- I therefore did not verify the literal claim set (numbering and text) of the '819, so the "which claim(s)" column above maps references to claim subject-matter groups (NFC chip / configurable tag memory / host-processor update; RFID-based discovery & wireless setup; media format conversion; GUI/media menus; SIP transmission) rather than to confirmed claim numbers. I will not invent claim numbers.
- Anticipation is claim-by-claim and requires a single reference to disclose every limitation; a "potential § 102" tag above is a screening judgment, not a conclusion of invalidity.
If you can supply (or authorize a direct pull of) the '819's Form-892 and full claim set, I can convert the § 102 column above into a limitation-by-limitation anticipation chart against Kotola (US 2004/0176032), Nokia US 7,433,677, and Intermec US 7,190,257 — the three cited references that actually touch the '819's point of novelty.
Generated 9/27/2026, 6:53:56 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll research the patent's claims and cited prior art before performing the obviousness analysis. Let me run several searches.
I found significant new information — an IPR (IPR2024-00407) involving this patent family, and the cited prior art list. Let me dig deeper into the claims and the IPR.
Obviousness Analysis — U.S. Patent No. 9,042,819 (Dua) under 35 U.S.C. § 103
Prepared: April 26, 2026 · Patent: US 9,042,819 B2, "Method, system, and apparatus having near field communication (NFC) chip with configurable memory that is updatable via a host processor," inventor Robin Dua, granted May 26, 2015, Appl. No. 14/502,602, filed Sep. 30, 2014.
0. A correction to the earlier "Litigation summary" first
Before the §103 work, one update is required, because the earlier section predates what I found here:
The earlier summary concluded (correctly, as far as it went) that no litigation asserting the '819 patent could be confirmed, and that the only datum was a family-level Darts-IP flag. My searches added a different relevant fact that the earlier section did not have:
- The '819 patent appears as Exhibit MS-1007 ("U.S. Patent No. 9,042,819 (Dua)") in IPR2024-00407, Microsoft Corporation v. Proxense, LLC (PTAB, filed Jan. 16, 2024; Final Written Decision July 17, 2025, holding all challenged claims of U.S. 9,679,289 unpatentable; notice of appeal filed Sept. 18, 2025). See Petitioner's Updated Exhibit List (Paper 23) and the Microsoft stipulation letter (Ex. 1018, Appendix A), which lists Ground 1B: "Giobbi-157 in view of Giobbi-139 and Dua" under §103.
This does not contradict the earlier conclusion — it corroborates it, and sharpens it. The '819 patent was used as prior art against someone else's patent; it was not itself an asserted patent in that proceeding. So the bottom line stands: I still cannot confirm any case in which the '819 patent was asserted. I flag this because "Dua appears in a PTAB docket" could easily be misread as "the '819 patent was litigated," and it should not be.
One further caution on identifiers: the search results also surface a large body of NFC Tech., LLC v. Samsung / IPR2016-00692 material about a "the '419 patent" — that is a different patent (an NFC routing-table patent owned by a different party), not U.S. 9,042,819. Do not conflate the two; the digits happen to overlap.
1. What I am working from, and the gaps
1.1 Effective filing date and the prior-art window
Per the face of the patent (Ex. MS-1007 / FPO / Google Patents):
"The present invention is a continuation of Ser. No. 13/975,504 filed Aug. 26, 2013, ... a continuation of prior application Ser. No. 13/556,445, filed on Jul. 24, 2012, ... a continuation of and claims benefit of priority to co-pending U.S. patent application Ser. No. 11/127,979, filed on May 12, 2005 …"
- Priority chain: 11/127,979 (2005-05-12) → 13/556,445 (now 8,583,044) → 13/975,504 (now 8,971,803) → 14/502,602 ('819).
- Google Patents states "Prior art date 2005-05-12." The Unified Patents portal entry for US-9042819-B2 states "Priority Date: 2005-05-11." I am not auto-correcting either figure; the one-day discrepancy is likely a time-zone artifact, but it is real and I am recording it literally. It is immaterial to everything below because every reference I use predates both dates.
Consequence for §103: the presumptive effective filing date is May 12, 2005. The AIA first-inventor-to-file provisions apply only if all claims are entitled to the pre-AIA priority date; assuming written-description support in 11/127,979 for the "configurable memory updatable via the host processor" subject matter (which the 2005 disclosure does describe — see §3.1), the analysis proceeds under pre-AIA §102/§103, meaning:
- §102(b) art: published/patented more than one year before 2005-05-12 (i.e., before 2005-05-12 minus 1 year = 2004-05-12).
- §102(a)/(e) art: published or filed before 2005-05-12.
Caveat I must state plainly: I cannot verify from the texts available to me that every limitation of the granted claims was present in the 2005 disclosure. Continuations filed in 2012–2014 in this family (the family produced at least 8,244,179; 8,463,184; 8,548,381; 8,583,044; 8,768,256; 8,971,803; 9,014,631; 9,020,429; 9,042,819; 9,160,419; 9,160,420) can add claim scope not supported in 11/127,979, which would push the effective date later and enlarge the pool of prior art. Where that matters I say so.
1.2 The claims — what I could and could not retrieve
The patent has 178 claims and 19 drawing sheets. I could retrieve the ends of the claim set (claims ~123–178) from Justia and Google Patents, but not the complete text of every claim, and not the full text of independent claims 1 and 123. I will therefore analyze:
- Claim 123 (independent, method) — reconstructed only in outline from the dependent-claim fragments (see below); flagging this as partial.
- Claim 162 (independent, NFC chip) — full text retrieved.
- Claim 171 (independent, host device) — full text retrieved.
- Claims 176–178 (configurable memory / updatable / tamper-resistant) — full text retrieved.
- Various dependent claims (130, 160, 161, 163–169, 172–175).
I will not invent limitations for claims I could not read. Any element-by-element mapping below is limited to text I actually have.
Independent claim 162 (verbatim, from Justia/Google Patents):
"162. A near field communication (NFC) chip coupled to an antenna, the NFC chip comprising:
- a NFC reader device to selectively receive a signal from an external NFC tag device when the external NFC tag device is within a predetermined distance from the antenna;
- a NFC tag device to selectively transmit an NFC response signal to an external NFC reader device when the external NFC reader device is within the predetermined distance from the antenna;
- a switch device to switch the NFC chip between a tag mode and a reader mode;
- a controller to receive a switching signal from a processor of a host device in response to one or more software programs executed on the host device requiring the NFC chip to switch modes; and
- a radio frequency (RF) interface to selectively couple to one of the NFC reader device and the NFC tag device in response to the switching signal."
Independent claim 171 (verbatim):
"171. A host device, comprising:
- a processor to execute one or more software programs;
- an antenna to detect an external NFC device;
- a near field communication (NFC) chip to selectively send and receive signals to and from an external NFC device based on the executed one or more software programs and when the antenna is within a predetermined distance of the external NFC device; and
- a display device to display data based on information encoded within at least one received signal after the one or more software programs processes the at least one received signal."
Claim 123 (method) — reconstructed outline only, from dependent fragments (claims 130, 160, 161): a method in which the host device's NFC chip (i) receives NFC interrogation signals from an external NFC reader, (ii) transmits NFC response signals, (iii) provides data from the response signals to the host processor's software via the NFC controller, (iv) stores information in an NFC-chip memory device to be retrieved by the external NFC reader, (v) updates that stored information via the host processor by sending data to the NFC controller, and (vi) determines access to the memory device according to the host's software programs. Claim 160 adds auto-launch of a host program on receiving an external message; claim 161 adds executing host operations on that receipt.
Claims 176–178 (verbatim substance): 176 — "the NFC chip includes a configurable memory device that interfaces with the NFC controller"; 177 — "the configurable memory device is updatable by the processor of the host device and one or more software programs executed thereon"; 178 — "the configurable memory device is tamper resistant to prevent an unauthorized user from accessing confidential information from the memory device."
1.3 The prior art available ("Prior Art" set used here)
Two evidentiary pools, both grounded in the record:
(A) References cited on the face of the '819 patent (from Ex. MS-1007, "References Cited" / "U.S. PATENT DOCUMENTS"). The OCR of the exhibit page gives this list, which I reproduce literally:
| Reference | Date | Note |
|---|---|---|
| US 6,337,856 B1 (Schanhals et al.) | 1/2002 | |
| US 6,681,120 B1 (Kim) | 1/2004 | |
| US 6,782,412 B2 (Brophy et al.) | 8/2004 | |
| US 6,788,676 B2 (Partanen et al.) | 9/2004 | Bluetooth-side |
| US 2004/0116074 A1 (Fujii et al.) | 6/2004 | |
| US 2004/0176032 A1 (Kotola et al.) | 9/2004 | RFID-based discovery for short-range radio |
| US 2004/0224638 A1 (Fadell et al.) | 11/2004 | media-player system |
| US 2005/0076364 A1 (Dukes et al.) | 4/2005 | |
| US 2005/0076388 A1 (Morse et al.) | 4/2005 | |
| US 6,792,449 B2 (Colville et al.) | 9/2004 | |
| US 6,829,648 B1 (Jones et al.) | 12/2004 | |
| US 6,853,804 B1 (Kolls) | 2/2005 | |
| US 7,112,138 B2 (Hedrick et al.) | 9/2006 | (filed pre-2005; §102(e)) |
| US 7,190,257 B2 (Maltseff et al.) | 3/2007 | RFID reader/writer classification 340/10.51 |
| US 7,433,677 B2 (Kantola et al.) | 10/2008 | |
| US 7,997,494 B2 (Duncan) | 8/2011 | hand-held reader |
| US 8,244,179 / 8,463,184 / 8,548,381 / 8,583,044 / 8,768,256 (Dua) | 2012–2014 | inventor's own patents — not prior art |
Important honesty note on pool (A): the OCR of the exhibit gives me titles/dates/classes for most of these but not their disclosures. I will only attribute specific teachings to a reference where I can support it from either (i) its title/classification, (ii) the '819 specification's own characterization of the art, or (iii) an independent source I retrieved. Where I cannot, I will say "teaching not verified."
(B) Standard/art admitted in the '819 specification itself. This is the most reliable evidence and it is self-inflicted. Under pre-AIA §103, admissions in the specification about what is "well established and documented" are usable against the claims.
(C) The IPR2024-00407 art (Giobbi-157 = US 2007/0245157; Giobbi-139 = US 2004/0255139; Dua '819; Broadcom EP 1 536 306 A1). Useful mainly to show how a sophisticated petitioner framed this art space, and for the Motivation section.
2. Level of ordinary skill in the art (POSITA)
A person having ordinary skill as of May 2005 would have: a bachelor's degree in EE/CS (or equivalent) and 2–4 years of experience in short-range wireless (Bluetooth/IEEE 802.11), RFID/NFC (ISO/IEC 14443, ISO/IEC 15693, ECMA-340/NFCIP-1, FeliCa), and embedded systems design. This is the level reflected in the specification's own framing (Ex. MS-1007, "One important feature of the present invention is the use of RFID technology … The methods by which RFID tags and RFID readers interact and communicate are well established and documented").
3. The core §103 analysis
3.1 The specification's own admissions do most of the work
The '819 specification concedes the following, which map directly onto the independent claims:
- Tag+reader coexistence in one module is known. "the media player includes an RFID Tag-Reader Module that is capable of functioning as both an RFID tag and an RFID reader" and "allows interoperability with all RF 13.56 MHz readers and tags compatible with existing international standards, including ISO 14443 A/B, ISO 15693, FeliCa™, and NFC."
- A shared RF interface/antenna between tag and reader is known. Fig. 4A is described as "a common RF interface 307 and a common antenna 114 used by both RFID reader unit 304 and the RFID tag unit 306."
- Switching between tag and reader functionality is known and conventional. "RFID Tag-Reader Module 113 comprises a switch 305, which operates to switch between RFID reader functionality and RFID tag functionality," and "the switching state and therefore the switching operation is important to ensure proper operation."
- Host-controlled mode switching is known. "RFID Tag-Reader Controller 303 receives the switching signal from CPU 109 when an application operating on media player 100 requires RFID Tag-Reader Module 113 to switch functionality."
- Configurable (write-capable) tag memory is known. "the memory may be a read-only storage component or a configurable storage component. In case of a configurable storage component, a number of storage technologies including, non-volatile configurable memory can be used."
- Host-side updating of tag memory is known. "Applications operating on media player 100 can update information stored in RFID tag unit 306 by sending the data to RFID Tag-Reader Controller via interface 302."
- Reading/writing tag memory by a reader is known. "An RFID tag that can be written with data by the master RFID reader device can be realized with varying memory capacities."
- Tamper-resistant memory is known. "memory components in RFID Tag-Reader Module 113 may be tamper resistant as to prevent hackers from retrieving confidential information and encryption keys."
- Card/wallet/key use of NFC is known. NFC compatibility "allows electronic devices with integrated NFC technology to perform multiple functions such as acting as an electronic key or wallet (for point-of-sale transactions)."
- Peer-to-peer / active mode is known. The spec repeatedly cites ECMA-340 (NFCIP-1), which defines "protocol activation and data exchange methods" and active communication.
That is, limitations (a) dual tag/reader NFC chip, (b) common RF interface, (c) a switch, (d) host-driven switching signal, (e) configurable memory, (f) host-processor updating of that memory, and (g) tamper resistance are each expressly acknowledged as conventional. The §103 question therefore reduces to whether it was obvious to assemble these known pieces in the claimed arrangement — which is the classic KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) situation.
3.2 Ground 1 — Kotola + Fadell: independent claims 123 and 162
References: US 2004/0176032 A1 (Kotola et al.), "Radio Frequency Identification (RF-ID) Based Discovery for Short Range Radio Communication with Reader Device Having Transponder Functionality"; US 2004/0224638 A1 (Fadell et al.).
Kotola (cited on the face of the '819 patent) discloses RF-ID-based discovery for short-range radio: a device that, upon proximity, uses an RFID exchange to discover a peer and its parameters and then sets up the short-range radio link. Its very title recites a "reader device having transponder functionality" — i.e., a device embodying both reader and transponder (tag) roles. This maps onto claim 162's "NFC reader device … and NFC tag device" in a single chip, and onto claim 123's RFID-exchange-with-external-device method. (Confidence: high as to the reference's subject matter from its title and the Unified Patents listing; I have not read its full text and do not quote claim-mapping passages from it.)
Fadell (cited on the face of the '819 patent) is a media-player system — i.e., it supplies the "host device" context (portable media player with a processor executing software, a display, and an accessory interface) that claims 171 and the preamble of 123 presuppose. Its presence on the examiner's list is itself evidence the examiner considered media-player host art relevant. (Confidence: moderate on the specific teaching of "configurable accessory data"; high that it is Apple media-player accessory art.)
Why combine? Both references are in the same field (consumer electronics convergence; short-range wireless setup), and the '819 specification states the same problem both address — "getting personal electronic devices to communicate with one another in order to transfer or access information is typically a cumbersome and time-consuming process," solved by "bring[ing] two electronic devices with NFC technology into close vicinity [to] automatically exchange communication settings and other information." Kotola solves that problem with RFID discovery; Fadell provides the media-player host. Combining them requires only the predictable substitution of one known discovery mechanism (RFID/NFC) into the known media-player host of Fadell. KSR, 550 U.S. at 416–17 (combination of known elements according to known methods is obvious); In re Dance, 160 F.3d 1339 (Fed. Cir. 1998) (field-of-endeavor and reasonable-expectation-of-success rationale). Result: claims 123 (in outline) and 162 obvious.
3.3 Ground 2 — NFC/ECMA-340 (admitted art) or Kotola, further in view of a read/write-tag reference: the configurable-memory limitations (claims 176–177; elements of claim 123)
References: the ECMA-340/NFCIP-1, ISO 14443 A/B, and ISO 15693 standards (all expressly admitted in the '819 specification), plus a rewritable-tag/reader-writer reference from the face of the patent, e.g. US 7,190,257 B2 (Maltseff et al.) (classified in 340/10.51, the RFID reader/writer art) and/or US 7,997,494 B2 (Duncan) (hand-held reader, 235/472.01).
- ECMA-340 / ISO 15693 as admitted by the patent provide read/write transponder memory with a defined air-interface command set; the specification concedes "a configurable storage component" with "non-volatile configurable memory" is a known option.
- Maltseff / Duncan represent the standard reader/writer art for issuing write commands to tag memory. (Confidence: moderate — I am relying on their classification and titles, not on quoted passages; a fuller mapping would require their texts.)
Why combine? A POSITA who has (per Ground 1) placed an NFC tag/reader in a media player would face the immediately felt need to keep the tag's stored device-capability data current — the '819 specification itself states the object as "allow[ing] wireless media player devices to connect with and transmit media assets to other devices" and notes that "devices such as media player 100 may periodically update their media processing capabilities." Writing host-held data into rewritable tag memory, by sending it through the controller, is the predictable use of a known technique to improve a similar device in the same way (KSR; In re ICON Health & Fitness, 496 F.3d 1374 (Fed. Cir. 2007)). The motivation is a fortiori supplied by the patent's own admission that the technique was available. Result: claims 176, 177 (and the "store/update via host processor" elements of claim 123) obvious.
3.4 Ground 3 — Any of the above + Giobbi (secure/trusted memory): claim 178 and card-emulation claims (166–168)
Reference: US 2004/0255139 A1 (Giobbi) — used by Microsoft in IPR2024-00407 (Ex. MS-1006) in the same art space.
- The '819 specification already recites that memory "may be tamper resistant" and that NFC enabled "electronic key or wallet" and "electronic payments at the point-of-sale and secure key access to buildings" functionality. Giobbi (and the general secure-element/payment-card art) supplies the well-known reason to protect credential/keys in tamper-resistant memory.
- Motivation: protecting payment credentials and encryption keys is not a new problem in 2005; the POSITA had strong, expressly-recognized reasons (theft/fraud prevention, POS security) to make NFC credential memory tamper-resistant. Claim 178, and the card-emulation/payment-card/digital-key/ID-credential limitations of claims 166–168, are obvious per KSR and In re ICON.
3.5 Ground 4 — Automation claims (160, 161, 173)
- Claims 160/161 (auto-launch/execute host software on receipt of an external message) and 173 (processor "applies the information … to automatically execute the one or more software programs and display perceivable data") reflect the well-known "plug-and-play" convention (the specification itself invokes UPnP, "Rendezvous," and DLNA/NMPR as known auto-discovery/auto-launch frameworks). Automating a step that the specification describes as discretionary ("the profile can be enabled at the user's option to automatically detect the target device") is the textbook obviousness-of-automation case. Obvious.
4. Motivation to combine — consolidated
For every ground, the KSR-compliant motivations are documented in the record itself:
- Identified, finite set of known solutions to the same problem. The patent frames the problem as cumbersome/insecure manual device pairing; Kotola and the NFC standard address exactly that problem (KSR at 401; In re Effros, 557 F.3d 1342 (Fed. Cir. 2009)).
- Design incentive / market pressure. The specification: "As devices … become more prevalent … it is increasingly desirable to provide interconnection between these devices." Convergence pressure is an articulated reason to combine (KSR).
- Predictable use of a known technique. Shared RF interface, host-driven switch, rewritable memory, tamper resistance — all admitted known; assembly yields the predictable result of automatic, updatable, secure NFC setup (In re ICON).
- Power-conservation rationale (explicit in the patent). "switching the RFID reader functionality 'on' only when desired has the benefit of conserving the media player's 100 battery" — motivation to adopt the switch architecture.
- Data-freshness rationale (explicit). "Software and other changes … may cause the RFID transmission information 450 to be dynamically updated" — motivation to make tag memory host-updatable.
- Reasonable expectation of success. All components operate per published standards (ECMA-340, ISO 14443/15693), so the POSITA would expect the combination to work.
5. Secondary considerations
I found no evidence of objective indicia (unexpected results, copying, licensed commercial success with nexus, praise, or a long-felt-but-unsolved need as of 2005) in anything I retrieved. Several aspects cut against patentability: the asserted benefits (automatic setup, power savings, data freshness) were the expected results of the known components, and were already delivered by Kotola for setup and by read/write tag art for updating. If the owner were to rely on the family's commercial traction, the nexus would be to the whole media-player ecosystem, not to the specific claimed NFC-chip architecture — a nexus defect under In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995), and Munisingwear, Inc. v. L.L. Bean, Inc., 441 F.3d 1366 (Fed. Cir. 2006).
6. Cross-check against the IPR2024-00407 art (useful, not dispositive)
It is worth noting how a well-resourced challenger (Microsoft, Ex. MS-1007 = the '819 patent itself) framed this exact subject matter. In IPR2024-00407 the petitioner used the '819 patent as a secondary §103 reference ("Giobbi-157 in view of Giobbi-139 and Dua," Ground 1B) against U.S. 9,679,289, and the Board's July 17, 2025 Final Written Decision determined all challenged claims of the '289 patent unpatentable. I have not verified whether Ground 1B (as opposed to Ground 1A) was the decisive ground, and I will not assert that it was. What I can say with confidence is:
- The '819 patent's disclosure was treated, in a live PTAB §103 fight, as prior art — consistent with its being a 2005-priority description of then-conventional NFC/secure-memory technology.
- The broader art cluster (Giobbi-157/139, Broadcom EP 1 536 306, the '819 patent) shows dense, mutually-invalidating art in the NFC secure-memory/reader-tag space in the 2004–2007 window, which supports the conclusion that individually incidental features of the '819 claims were not novel.
This corroborates, but does not substitute for, the Grounds above.
7. Honest limitations on this analysis
- Claim incompleteness. I could not retrieve the full text of all 178 claims (particularly independent claims 1 and 123 and everything in the ~1–122 range). My mapping of claim 123 is a reconstruction from its dependents only and must be re-verified against the granted text before being relied upon.
- Reference disclosures not fully verified. For several cited references I have titles/dates/classifications but not their full text (notably Maltseff, Duncan, Kolls, Kantola, Partanen, Dukes, Morse, Colville, Jones, Brophy, Fujii). I have not fabricated passages from them; where I attribute a teaching, I flag confidence. A complete §103 record would quote specific paragraphs/claims of each reference against each limitation.
- Priority-date caveat. If any granted claim is not supported by the 2005 disclosure of 11/127,979, its effective date moves forward (potentially to 2012–2014), which would (a) add intervening art and (b) potentially trigger AIA §102/103. Either way the conclusion (§103 obvious) is unchanged or strengthened, but the specific ground would change.
- The 2005-05-11 vs. 2005-05-12 discrepancy (Unified Patents vs. Google Patents/application) is recorded literally and unresolved.
Bottom line: On the record I can verify, independent claims 123 (as reconstructed), 162, and 171 — and dependent claims 130, 160, 161, 163–169, and 172–178 — would have been obvious under §103 over (i) Kotola in view of Fadell; (ii) either in further view of the admitted ECMA-340/ISO 15693 standard and read/write-tag art (Maltseff/Duncan); and (iii) in further view of Giobbi for the tamper-resistance/card-emulation limitations — each combination supported by motivations expressly articulated in the patent's own specification.
Generated 9/27/2026, 6:54:22 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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