Bank Of America NA v. Nant Holdings IP LLC

1. Case Identification

• Case #: IPR2021-01304
• Patent #: 8,478,036
• Filed: June 24, 2021
• Petitioner(s): Bank of America, N.A.
• Patent Owner(s): Nant Holdings IP, LLC
• Challenged Claims: 1, 10, 12-13, and 15

2. Patent Overview

• Title: Image Capture and Identification System and Process
• Brief Description: The ’036 patent describes a system for identifying an object captured in a digital image based on its visual appearance, without requiring modification of the object with barcodes or other symbols. The system uses a mobile device to capture an image, an identification platform to match the image against a database of known targets, and a content service to provide related information back to the user.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ogasawara and Bolle - Claims 1, 10, 12-13, and 15 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 disclosed a mobile electronic shopping system that meets nearly all limitations of claim 1. Ogasawara’s system used a wireless videophone to capture images of products (e.g., an apple) and identify them using pattern recognition software on a server, thereby eliminating the need for barcodes. It taught a target database (a look-up table), an identification platform (a server with a personal shopping application), communication with a mobile device to receive the image, and a content service to return information like price to the device. Petitioner contended that to the extent Ogasawara’s pattern recognition was not sufficiently robust, Bolle supplied the missing details. Bolle taught a sophisticated image recognition system, also for use in grocery shopping, that improved on prior art by first segmenting a target object from its background. Bolle then determined features of the segmented target (e.g., color, shape, texture) and compared these parameters to reference features stored in a target database to find a match. Petitioner asserted that combining Bolle’s advanced recognition techniques with Ogasawara’s mobile shopping framework rendered the challenged claims obvious. Dependent claims 10, 12, 13, and 15 were also argued to be obvious, as Ogasawara taught identifying printed media (claim 10) and enabling user interactions like purchasing an item (claim 12), which involves a transaction with an account (claim 13) and sending information to a remote computer (claim 15).
  • Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would combine Ogasawara and Bolle to improve the performance of Ogasawara’s system. Ogasawara acknowledged its system worked best when a target had a "distinct or identifiable shape," a known limitation of simple pattern recognition. Bolle was directed to solving this exact problem by segmenting the target from the background distractions, allowing for more accurate and reliable identification. As both references addressed image recognition for product purchasing in the same field, a POSITA would have naturally looked to Bolle’s superior segmentation and feature-matching methods to enhance Ogasawara’s overall mobile commerce system.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because the combination involved applying Bolle's known image processing algorithms to Ogasawara's known mobile system architecture. Petitioner asserted that the hardware was compatible (e.g., standard cameras and processors) and that implementing Bolle’s software on Ogasawara’s server was a predictable integration that would yield the expected benefit of improved recognition accuracy.

4. Key Claim Construction Positions

• Petitioner argued for a specific construction of the claim term “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets.”
  • Petitioner proposed this term means "identifies the target as a known target by matching parameters derived from the digital representation to recognition parameters of the known targets stored in the target database." This construction was asserted as critical because the ’036 patent’s purported novelty was identifying objects based on their inherent visual appearance, not from decoded symbols like barcodes. Petitioner argued the specification repeatedly disparaged prior art methods that required barcodes or other "marks" and emphasized that the "heart of the present invention" was its "high-speed image matching engine." Therefore, any construction allowing recognition based solely on symbolic content (which Patent Owner allegedly advanced in district court) would be improper and would read on the very prior art the patent sought to overcome.

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 due to several key circumstances related to the co-pending district court litigation.
  • Stipulation: Petitioner made a broad stipulation that, if the IPR is instituted, it will not pursue in the district court any invalidity ground raised in the petition or any other ground based on Ogasawara or Bolle, alone or in any combination. This was argued to eliminate the risk of duplicative efforts and inconsistent results, weighing heavily in favor of institution.
  • Stage of Litigation: The parallel district court case was in its infancy. At the time of filing, no trial date had been set, no claim construction briefs had been filed, and discovery was in its early stages. This early posture minimized concerns about wasted judicial and party resources.
  • Complexity and Efficiency: The district court case involved eight patents and a large number of claims, creating significant complexity. Petitioner argued that instituting a focused IPR on the ’036 patent would be more efficient and would enhance the integrity of the patent system by allowing for a thorough review by a specialized tribunal.
  • Likelihood of Stay: Petitioner stated its intent to file a motion to stay the district court litigation pending the outcome of the IPR, which it argued would likely be granted, further promoting efficiency.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 10, 12-13, and 15 of Patent 8,478,036 as unpatentable.