PTAB

IPR2021-01387

Bank Of America NA v. Nant Holdings IP LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Object Information Derived from Object Image
  • Brief Description: The ’038 patent discloses an interactive system for identifying an object captured in a digital image based "solely by its visual appearance," without relying on symbols like barcodes. The system uses an optical sensor on a portable device to capture image information from a displayed image, processes the image to recognize a target by matching features to a database, associates the target with relevant information, and enables a transaction based on that information.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ogasawara and Bolle - Claims 1, 3, 9-10, 15-16, and 19-20 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 shopping system where a wireless videophone with a camera captures image information (e.g., an apple) from a display screen (e.g., another device’s LCD) to initiate a purchase. This system identifies the object using "advanced pattern recognition software," retrieves associated information like price, and enables a transaction. However, Petitioner contended that Ogasawara’s recognition capabilities were limited, particularly for objects lacking a distinct shape or against a complex background. Bolle was argued to remedy this deficiency by teaching an image processing system, for use in grocery shopping, that first segments a target object (e.g., produce) from its background. Bolle then determines features of the segmented object (e.g., color, shape, texture) and compares them to reference features in a database to achieve a more accurate match.
    • Motivation to Combine: A POSITA would combine Bolle's superior segmentation and feature-matching techniques with Ogasawara's mobile commerce framework. The motivation was to improve the accuracy and reliability of Ogasawara’s system, which Ogasawara itself suggested could fail to identify targets that lack "distinct or identifiable" characteristics. Bolle directly addressed this problem, providing a known solution (segmentation and feature-based database matching) to a known problem in the same technical field (image-based product identification for shopping).
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved integrating Bolle's known software algorithms for image processing into Ogasawara's disclosed hardware (e.g., a wireless videophone with a CCD camera) and server system. Both references used standard, compatible technologies, making the integration a predictable application of known techniques to improve a known device.

Ground 2: Anticipation by Ogasawara - Claims 1, 3, 9-10, 15-16, and 19-20 are anticipated by Ogasawara under Patent Owner’s interpretation.

  • Prior Art Relied Upon: Ogasawara (Patent 6,512,919).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted this ground as an alternative, contingent on the Patent Owner's claim interpretation from the parallel district court litigation. Petitioner argued that if the claims merely require the optical sensor and the displayed image to be on the same portable device (without the sensor necessarily capturing an image from that display), then Ogasawara alone would anticipate all challenged claims. The petition incorporates the arguments from Ground 1 to show that Ogasawara discloses all claim elements under this broader interpretation.

Ground 3: Obviousness over Ogasawara and/or Bolle in view of Melick - Claims 1, 3, 9-10, 15-16, and 19-20 are obvious over Ogasawara and/or Bolle in view of Melick.

  • Prior Art Relied Upon: Ogasawara (Patent 6,512,919), Bolle (Patent 5,546,475), and Melick (Patent 7,070,103).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Melick provided additional, explicit teachings that reinforce the obviousness of the core invention. Melick disclosed using a CCD camera on one portable device (e.g., a cellphone) to capture image information, specifically a video stream of a barcode, from the LCD screen of another portable device (e.g., a PDA) to enable data interchange. This directly supported the claim limitation of capturing image information from a displayed image on a portable device display screen.
    • Motivation to Combine: A POSITA would have been motivated to consult Melick to confirm the feasibility and desirability of using a standard cellphone camera to read information from another device's LCD screen. Melick explicitly taught this capability, removing any potential doubt and strengthening the rationale for combining Ogasawara and Bolle. It demonstrated that this method was a known, practical technique for data capture between portable devices, further motivating its application to Ogasawara's mobile shopping system.

4. Key Claim Construction Positions

  • "recognize a target based on the features": Petitioner proposed this term means "identify a target by matching the features to features of targets stored in a database." This construction was argued to be essential, as the ’038 patent allegedly distinguished itself from prior art by using image characteristics to find a match from a "plurality of objects in a database." Petitioner contended that Patent Owner's attempt in district court litigation to satisfy this limitation with simple symbol or character recognition (without database matching) was contrary to the patent's own description of its novelty.
  • "an optical sensor capable of capturing image information from a displayed image...": Petitioner argued the plain language requires the optical sensor to be the component that actually captures the image information from the specified source (a displayed image on a portable device screen). Petitioner asserted that Patent Owner’s litigation position—that the sensor need only be present but play no role in capturing the image—would render the sensor superfluous and was inconsistent with the specification.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued strongly against discretionary denial under Fintiv, asserting that all relevant factors favored institution. The core arguments were:
    • Stipulation (Factor 4): Petitioner offered a broad stipulation that, if IPR were instituted, it would not pursue in the parallel district court litigation the same grounds, the same prior art references, or any other ground based on Ogasawara, Bolle, or Melick.
    • Case Stage (Factors 2 & 3): The district court litigation was in an early stage, with no trial date set, no substantive claim construction orders issued, and discovery just beginning.
    • Merits (Factor 6): The petition presented strong evidence and argument for unpatentability.
    • Efficiency (Factor 1): Given the complete overlap of challenged claims and Petitioner's intent to seek a stay, institution would simplify issues and conserve resources.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 3, 9–10, 15–16, and 19–20 of the ’038 patent as unpatentable.