PTAB

IPR2021-01389

Bank Of America NA v. Nant Holdings IP LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Image Capture and Identification System and Process
  • Brief Description: The ’278 patent relates to a computer-assisted method for validating and recognizing documents. The method involves receiving an image of a document via a mobile device, extracting symbolic information (e.g., a barcode), and using that information to determine the document's validity and recognize it by querying a database.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1 and 3-5 under 35 U.S.C. § 102 by Rhoads

  • Prior Art Relied Upon: Rhoads (Patent 6,947,571), which incorporates by reference the ’260 patent (Patent 5,862,260).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rhoads discloses every limitation of the challenged claims. The petition mapped the claims to a "Controlled-Access ID" application in Rhoads where a security guard uses a camera-equipped cell phone (a mobile device) to validate a printed ID badge (a document).
      • In this example, Rhoads’s system receives an image of the ID badge, determines that symbolic content (e.g., a barcode containing a badge ID) is present, and extracts that symbol information.
      • The system then determines the badge's validity by querying a remote database (e.g., a DMV's DNS server) with the extracted badge ID. A match in the database authenticates the document.
      • Simultaneously, this process recognizes the document as a specific target object (the specific ID badge) by using the image, the badge ID, and the database query, which returns associated information like the badge holder's name.
      • Finally, the system receives, via an address (e.g., the DNS server address), the target object information (the holder's name), which comprises a response regarding the document's validity.
      • For dependent claims 3 and 4, Petitioner asserted Rhoads teaches using a barcode as a "unique code" for the symbolic content.
      • For dependent claim 5, Petitioner argued that Rhoads, by incorporating the ’260 patent, teaches detecting a match within a specified tolerance. The ’260 patent explicitly describes using confidence thresholds (the inverse of tolerance) for decoding symbolic data and returning a message indicating success or failure. A failure to decode within the threshold is a failure to match, and Rhoads describes returning an error message in such cases.

Ground 2: Obviousness of Claim 5 under 35 U.S.C. § 103 over Rhoads and the [’260](https://ai-lab.exparte.com/case/ptab/IPR2021-01389/doc/1032) patent

  • Prior Art Relied Upon: Rhoads (Patent 6,947,571) and the ’260 patent (Patent 5,862,260).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented this ground as an alternative to the anticipation argument for claim 5. The mapping is identical to that for anticipation, arguing that the combined teachings of Rhoads and the ’260 patent disclose all limitations of claim 5. The ’260 patent explicitly teaches using confidence thresholds in decoding processes, which corresponds to the "specified tolerance" limitation.
    • Motivation to Combine: Petitioner argued that a person of ordinary skill in the art (POSITA) would be motivated to combine the references because Rhoads explicitly incorporates the ’260 patent by reference, directing a POSITA to it for "details of particular encoding and decoding techniques."
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because implementing the confidence threshold decoding techniques from the ’260 patent would predictably improve the statistical reliability and accuracy of the decoding process described in Rhoads.

4. Key Claim Construction Positions

  • Term: "first target object information associated with the first target object"
  • Petitioner’s Proposed Construction: "information pertaining to the first target object obtained by searching the database storing target object information"
  • Argument for Construction: Petitioner argued this construction is required by the doctrine of antecedent basis. The "recognizing" step of claim 1 defines "target object information" as being stored in and retrieved from a database. Therefore, the "first target object information" received in the subsequent step must be the same information that originates from the database search, not from an external source as the Patent Owner had allegedly argued in district court litigation. Petitioner contended that Rhoads meets the limitation under either party's proposed construction but that its own construction is correct.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate and that the relevant factors strongly favor institution.
    • Factor 4 (Overlap): Petitioner entered a broad stipulation that, if the inter partes review (IPR) is instituted, it will not pursue in the parallel district court litigation any ground raised or that could have been raised, including any challenge based on Rhoads or the ’260 patent, alone or in any combination. This stipulation, Petitioner argued, eliminates nearly all overlap between the proceedings.
    • Factors 2 & 3 (Trial Date & Investment): The parallel district court case was in its infancy, with no trial date set, no substantive opinions issued, and only initial discovery completed.
    • Factor 1 (Stay): Petitioner stated its intent to file a motion to stay the district court case upon institution, which it argued would likely be granted.
    • Factor 6 (Merits & Other): Petitioner asserted the merits of its petition were exceptionally strong and that the complexity of the co-pending litigation (involving multiple patents and claims) favored institution to simplify issues for the district court.

6. Relief Requested

  • Petitioner requested institution of an IPR and cancellation of claims 1 and 3-5 of Patent 9,031,278 as unpatentable.