Bank Of America NA v. Nant Holdings IP LLC

1. Case Identification

• Case #: IPR2021-01080
• Patent #: 8,463,030
• Filed: June 16, 2021
• Petitioner(s): Bank of America, N.A.
• Patent Owner(s): Nant Holdings IP, LLC
• Challenged Claims: 1–4, 6–7, 19, 21, 25–26, 29–32, and 36–37

2. Patent Overview

• Title: Image Capture and Identification System and Process
• Brief Description: The ’030 patent discloses a transaction system where a mobile device acquires data related to an object (e.g., an image). An "object identification platform" then recognizes the object based on its visual appearance by matching it to a database, determines associated information, and a "content platform" initiates a transaction using that information.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ogasawara and Bolle - Claims 1–4, 6–7, 19, 21, 25–26, 29–32, and 36–37 are obvious over Ogasawara in view of Bolle.

• Prior Art Relied Upon: Ogasawara (Patent 6,512,919) and Bolle (Patent 5,546,475).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ogasawara taught a mobile electronic shopping system that used a wireless videophone to capture an image of an object (e.g., an apple) to initiate a purchase without a barcode. This system included a mobile device, a computing platform to recognize the object and retrieve information from a database (like a Price Look Up table), and a server to initiate a transaction with a selected payment account. Petitioner contended that while Ogasawara disclosed object recognition, Bolle explicitly taught a more robust method for doing so. Bolle described an image processing system for recognizing produce by first segmenting the object from its background and then comparing its specific features (e.g., color, shape) to characteristics of reference images stored in a database to find a match. The combination of Ogasawara’s mobile transaction framework with Bolle’s improved object recognition method rendered the challenged claims obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Ogasawara and Bolle to improve the performance of Ogasawara’s system. Ogasawara suggested its system worked best for objects with a "distinct or identifiable shape," a known problem in image recognition. Bolle directly addressed this limitation by teaching image segmentation to isolate an object from its background, thereby enabling more accurate feature extraction and matching. A POSITA would have been motivated to integrate Bolle's superior segmentation and database-matching techniques into Ogasawara’s system to create a more accurate and reliable product recognition system, a predictable improvement.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved applying Bolle's known software-based image processing algorithms to Ogasawara's known mobile commerce system. Both references relied on conventional hardware (cameras, processors), and integrating Bolle's algorithms to improve Ogasawara's pattern recognition function was a straightforward application of known techniques to achieve predictable results.

Ground 2: Anticipation by Ogasawara - Claims 1–4, 6–7, 19, 21, 25–26, 29–32, and 36–37 are anticipated by Ogasawara.

• Prior Art Relied Upon: Ogasawara (Patent 6,512,919).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative based on Patent Owner's potential claim interpretation. Petitioner argued that Ogasawara alone disclosed every element of the challenged claims. Ogasawara’s system used a mobile device with a camera (a wireless videophone) to capture object data. It further disclosed an "object identification platform" (either on the device or a server) that used "advanced pattern recognition software" to recognize the object, determine its information (e.g., price and description from a database), and a "content platform" (the server) to obtain this information and initiate a transaction. Petitioner asserted that a POSITA would understand Ogasawara's disclosure of recognizing an object by its visual characteristics to inherently include matching those characteristics against a database of known objects, thus anticipating the claims.

4. Key Claim Construction Positions

• "recognize the object as a target object based on the acquired data"
  • Petitioner argued this term must be construed as "identify the object as a target object by matching the acquired data to object image data of target objects stored in a database." Petitioner contended this construction is required because the specification repeatedly describes the invention’s novelty as identifying objects based on their visual appearance, in contrast to prior art methods using symbols like barcodes. It argued the Patent Owner’s "plain and ordinary meaning" position, which could allow for recognition based on symbols alone, would improperly read out the patent's purported point of novelty.
• "determine object information associated with the target object"
  • Petitioner proposed this term means to "search a database to find information pertaining to the target object." Petitioner argued that the specification consistently describes this step as searching a database for corresponding information after the object has been identified and distinguishes this from information that may be entered by the user.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors would be inappropriate and that the factors strongly favored institution.
  • Factor 4 (Overlap): Petitioner entered into a stipulation that it would not pursue in the co-pending district court litigation the same grounds, or any other grounds involving Ogasawara and Bolle, if the inter partes review (IPR) was instituted. This stipulation, Petitioner argued, eliminates any significant overlap between the proceedings.
  • Factors 2 & 3 (Timeline & Investment): The parallel district court case was in its infancy. No trial date had been set, no claim construction briefing had occurred, and discovery was in its early stages. Therefore, the court and parties had invested minimal resources, and the IPR would conclude long before any potential trial.
  • Factor 1 (Stay): Petitioner stated its intent to file a motion to stay the district court case upon institution. Given that the IPR challenges all asserted claims of the ’030 patent, a stay was likely to be granted, which would conserve judicial and party resources.
  • Factor 6 (Merits & Other Considerations): Petitioner asserted the merits of its petition were strong. Further, the complexity of the district court case, which involved eight patents and numerous claims, favored institution of a focused IPR on the ’030 patent to enhance the integrity of the patent system.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1–4, 6–7, 19, 21, 25–26, 29–32, and 36–37 of the ’030 patent as unpatentable.