Case 2:20-cv-07872-GW-PVC Document 236 Filed 08/11/23 Page 1 of 10 Page ID #:4516
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`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Date August 11, 2023
`Case No. CV 20-7872-GW-PVCx
`Title
`Nantworks, LLC, et al. v. Bank of America Corporation, et al.
`
`Present: The Honorable GEORGE H. WU, UNITED STATES DISTRICT JUDGE
`Javier Gonzalez
`None Present
`Tape No.
`Deputy Clerk
`Court Reporter / Recorder
`Attorneys Present for Plaintiffs:
`Attorneys Present for Defendants:
`None Present
`None Present
`PROCEEDINGS:
`IN CHAMBERS - FINAL RULING ON MARKMAN/CLAIM
`CONSTRUCTION HEARING
`
`Attached hereto is the Court’s Final Ruling on the Markman/Claim Construction.
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`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
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`Page 1 of 1
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`Initials of Preparer
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`JG
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`:
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`Case 2:20-cv-07872-GW-PVC Document 236 Filed 08/11/23 Page 2 of 10 Page ID #:4517
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`Nantworks, LLC et al v. Bank of America Corporation et al; Case No. 2:20-cv-07872-GW-(PVCx)
`Final Ruling on Markman/Claim Construction
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`I.
`
`Introduction
`Plaintiffs Nantworks, LLC and Nant Holdings IP, LLC (collectively, “Plaintiffs” or
`“Nantworks”) filed suit against Defendants Bank of America Corp. and Bank of America, N.A.
`(collectively, “Defendants”) on August 27, 2020, alleging infringement of several patents. See
`Complaint, Docket No. 1; see also First Amended Complaint (“FAC”), Docket No. 40. Pursuant
`to the parties’ joint request, this Court stayed this action pending the outcome of four inter partes
`review (“IPR”) proceedings. See Docket No. 176. In January and February of 2023, the PTAB
`issued final written decisions in the IPR proceedings concerning U.S. Patent Nos. 7,881,529 (“the
`’529 Patent”), 9,324,004 (“the ’004 Patent”), 8,478,036 (“the ’036 Patent”), and 7,899,252 (“the
`’252 Patent”). See Docket Nos. 182-1, 182-2, 187-1, and 187-2.1 The PTAB determined that no
`challenged claims were unpatentable. Id. The Court lifted the stay on May 1, 2023. Docket No.
`196.
`
`The parties now raise several supplementary claim construction disputes relating to the
`’529, ’004, ’036, ’879, ’278, and ’252 Patents.2 They submitted a Joint Claim Construction and
`Prehearing Statement. See Docket No. 213. The parties also filed the following claim construction
`briefs and supporting documents:
` Plaintiffs’ Opening Claim Construction Brief (Docket No. 217);
` Defendants’ Opening Claim Construction Brief (Docket No. 216);
` Plaintiffs’ Corrected Responsive Claim Construction Brief (Docket No. 225);
` Defendants’ Responsive Claim Construction Brief (Docket No. 221).
`The Court construes the disputed terms as stated herein.
`II. Background
`The Court previously provided a brief summary of the asserted patents. See Markman
`Order, Docket No. 145 at 1-2. The Court incorporates that discussion by reference herein.
`
` 
`1 The PTAB denied institution of proceedings concerning U.S. Patent Nos. 8,520,897 (“the ’897 Patent”) and
`9,031,278 (“the ’278 Patent”). See Docket No. 174.
`
` 2
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` The Court held an initial claim construction hearing on September 23, 2021 and construed ten disputed terms. See
`Docket No. 145.
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`1 
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`Ill.
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`Legal Standard
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`The Court previously provided the legal standards governing claim construction. See id.
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`at 3-4. The Court incorporates that discussion by reference herein.
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`IV.
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`Discussion
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`A. Agreed Upon Claim Terms
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`The parties have not agreed upon any constructions.
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`B. Disputed Claim Terms
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`1. “data characteristics” (’529 Patent, Claim 1); “characteristic” (°004 Patent,
`Claim 1); “parameters” (’036 Patent, Claim 1); “features” (’897 Patent, Claim
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`Plaintiffs’ Proposed Construction
`Plain and ordinary meaning.
`
` 25)
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`Defendants’ Proposed Construction
`“non-symbolic visual features produced by
`decomposing [the object present in the image /
`target objects]”
`“non-symbolic visual feature produced by
`decomposing [the at least one object in the scene
`of the video / an object stored in the database]”
`“non-symbolic visual features produced by
`decomposing [the at least the portion of the target
`in the digital representation / the known targets
`stored in the target database”
`“non-symbolic visual features produced by
`decomposing [the target / objects stored in a
`database]”
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`
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`Plaintiffs argue these terms are readily understandable in view ofthe claim languageitself.
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`Docket No. 217 at 7. Plaintiffs cite the "529 Patent specification in support of their arguments.
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`°529 Patent at Abstract and 1:25-28 (disclosing “[a]n identification method and process for objects
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`from digitally captured images thereof that uses data characteristics to identify an object from a
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`plurality of objects in a database.”) Plaintiffs further cite general purpose dictionary definitions
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`for “characteristic” and “data.” Plaintiffs argue that Defendants’ proposed construction is
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`improper and unsupported because it
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`introduces the extraneous terms “non-symbolic” and
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`“decomposing.” Docket No. 217 at 9.
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`Plaintiffs raise similar arguments with respect to
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`“characteristics,” “parameters,” and “features.” Jd. at 11, 14, and 17.
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`Defendants argue that the specification describes a novelidentification method eliminating
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`the need to modify an object by, for example, applying a barcode. Docket No. 216 at 14 (citing
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`U.S. Patent No. 7,016,532 (the “’532 Patent”)3 at 1:11-14, 1:63-2:5, and 2:18-22). Thus,
`Defendants argue the scope of “characteristics” terms should be limited to identification solely by
`visual appearance. Id. at 15. Defendants argue that each of these “characteristics” terms falls with
`a group of “recognize terms” that the Court previously construed. Id. at 12 (citing Docket No. 145
`at 14-21). Defendants argue that the Court previously emphasized comparison of visual
`characteristics in construing the recognize terms. Id.
`As a threshold issue, the prior claim construction order did not address the issues the parties
`currently raise and did not suggest or construe any term to be limited to “non-symbolic visual
`features” or to include “decomposition.” Additionally, while the Court considers the parties’
`arguments for these terms together, given the overlapping issues, the Court must begin with the
`language of the individual claims at issue to determine the correct construction. The Court first
`addresses the applicability of the “non-symbolic visual features” language.
`As to the term “data characteristics” in the ’529 Patent, claim 1 teaches “distinguish[ing]
`an object present in the image from others using a database that stores data characteristics of target
`objects.” ’529 Patent, Claim 1. Here, “data characteristics” modifies an object and, within the
`context of claim 1, an object within an image. “Data characteristics” does not modify a symbol.
`The claim itself resolves this issue. Other claims (e.g., claim 6) use the term “symbol” and specify
`“further” identification of a symbol within the image. This claim language suggests that
`“identifying an object within the image” does not encompass identifying a symbol and creates a
`presumption that the words “object” and “symbol” hold separate meanings. See Phillips, 415 F.3d
`at 1314. Because the claim language adequately clarifies that “data characteristics” means
`“characteristics of an object present in an image,” the Court finds construction unnecessary here.
`As to the term “characteristic” in the ’004 Patent, claim 1 teaches “deriving at least one
`characteristic of the video stream.” ’004 Patent, Claim 1. Claim 1 further discloses “a scene
`represented by the video stream for at least one object.” Id. Thus, the term “characteristic”
`modifies a video stream for an object. Unlike the above term, the claim language does not
`immediately resolve the parties’ dispute as to whether “characteristic” includes symbol
`information. However, the specification provides:
`There is a need to determine the position and orientation of known objects
`based only on imagery of the objects. The detection, identification,
`determination of position and orientation, and subsequent information
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`3 The asserted patents all incorporate the ’532 Patent by reference.
`3 
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`provision and communication must occur without modification or
`disfigurement of the object, without the need for any marks, symbols, codes,
`barcodes, or characters on the object, . . . .
`
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`’004 Patent at 1:46-52. Thus, the “characteristic” of the video stream for the object cannot modify
`a characteristic of a symbol applied to the object. Rather, the “characteristic” must be an original
`characteristic of the object. However, the specification does not support the language “non-
`symbolic visual features.” Accordingly, the Court would find the above guidance adequately
`resolves the parties’ dispute and declines to further construe the term “characteristic.”
`As to the term “parameters” in the ’036 Patent, claim 1 teaches “a target database storing
`. . . recognition parameters associated with the known targets” and “recogniz[ing] 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.” ’036 Patent, Claim
`1. Thus, “parameters” modifies a digital representation of a target. The specification refers
`alternatively to a “digital image” or a “digital representation.” See, e.g., id., Abstract. Therefore,
`“parameters” modifies a “digital image.” Again, as discussed above, the specification provides
`for detection and identification without the need for a symbol applied to the digital image. See id.
`at 1:36-45. Accordingly, the specification requires that the parameters be original to the digital
`image but does not include further limitations and does not support Defendants’ construction.
`As to the term “features” in the ’897 Patent, claim 25 teaches “identification of features
`from the displayed image.” ’897 Patent, Claim 25. Features modifies the displayed image,
`presumably in its original form. As discussed above with respect to the ’004 and ’036 Patents, the
`specification does not support Defendants’ narrow construction. While “features” would not
`include an identifier later applied to the displayed image, i.e., a barcode, “features” could
`potentially include a broad range of information.
`As to the decomposition issue, the Court finds Defendants’ position more persuasive. Each
`of the specifications for the ’529, ’004, ’036, and ’897 Patents discuss decomposition globally as
`opposed to within the context of one particular embodiment. Plaintiffs largely argue that the term
`is absent from the claim language and should not be incorporated, however the specification
`clarifies that the inventors of these patents contemplated decomposition. Plaintiffs also argue in
`their responsive brief that FIG. 4 of these patents, which share a specification at least in part, show
`an embodiment that does not require decomposition. Docket No. 225 at 9-10. FIG. 4 and the
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`accompanying discussion discloses comparing results of analyzed image data to other data stored
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`in a database. See, e.g., 036 Patent at 14:42-46. While the discussion does not expressly mention
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`decomposition, it does not appear to actually contemplate somealternative to decomposition.
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`Moreover, at the hearing, Plaintiffs ultimately acknowledged that the patents do not expressly
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`disclose any alternative to decomposition. Accordingly, given the overwhelming discussions in
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`the specifications concerning decomposition, the Court applies Defendants’ proposed construction
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`in only this respect. See, e.g., 529 Patent, FIG. 1, 2:3-6, 2:28-32, 5:19-22,et seq.
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`For the foregoing reasons, the Court finds plain and ordinary meaning applies to the terms
`” “
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`“data characteristics,”
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`“characteristic,” “parameters,” and “features,” but also that
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`these
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`characteristics, parameters, and features are produced by decomposingthe relevant object ortarget.
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`Further construction is unnecessary.
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`“determining a validity of the document basedat least in part on the image
`2.
`and...” / “recognizing the documentasafirst target object basedat least in
`part on the image, .
`.
`. .” (278 Patent, Claim 1)
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`Plaintiffs’ Proposed Construction
`Plain and ordinary meaning.
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`portion of the documentin the image”
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`Defendants’ Proposed Construction
`“.. by using at least in part non-symbolic visual
`features produced by decomposingtheatleast the
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`Plaintiffs argue the language“basedatleast in part on the image”is clear and unambiguous.
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`Docket No. 17 at 20. Plaintiffs again argue that Defendants’ proposed construction is unsupported
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`and improper becauseit includes the extraneous language “non-symbolic” and “decomposing.”
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`Id. at 21-22.
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`Specifically, Plaintiffs argue that claim 1
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`itself teaches “extracting symbol
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`information based on the symbolic content.” Jd. at 21 (citing ’278 Patent, Claim 1, 3:62-65, and
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`6:18-19). Thus, Plaintiffs argue, Defendants’ construction cannot be proper becauseit limits the
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`scope to non-symbolic features.
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`Jd. Plaintiffs further argue that “decomposing” refers to a
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`preferred, which should notbe readto limit the claim scope. Jd. at 22.
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`Defendants argue the claim scope should be limited to non-symbolic visual features
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`produced by decomposition in view ofthe claim language, specification, and prosecution history.
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`Docket No. 216 at 19-20. First, Defendants argue that use ofboth the terms “symbol” and “image”
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`in claim | suggest that “image” must refer to something other than a symbol. Jd. at 20. Second,
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`Defendants argue the specification further confirms that an image(i.e., a non-symbol) must be
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`used to validate and recognize the document. Jd. at 20-22 (citing ’278 Patent, FIG. 1, 14:54-49,
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`3:42-48, 3:25-38, 1:30-33, 6:23-29, 11:21-25, 11:37-50, and 3:57-65). Third, Defendants argue
`that prosecution disclaimers in an IPR proceeding distinguished prior art relying only on symbol
`information, consistent with Defendants’ proposed construction. Id. at 23.
`In response, Plaintiffs argue that the specification expressly provides that an image may
`contain both symbol and non-symbol information. Docket No. 221 at 12 (citing ’278 Patent, Claim
`1 and 16:25-34). Defendants argue that Plaintiffs characterized the invention as providing a
`decomposition during the IPR proceedings. Docket No. 221 (citing Patent Owner’s Preliminary
`Response in IPR2021-01389, Docket No. 221-2 at 6).
`Here, claim 1 bases validation and recognition on both “symbol information” and “the
`image.” ’278 Patent, Claim 1. Consistent with typical cannons of claim construction, “the image”
`likely refers to something different than “symbol information,” to give effect to the claim language
`See Phillips, 415 F.3d at 1314. However, differentiation is not a rigid rule. See Laitram Corp. v.
`Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991). Thus, the parties’ dispute requires further
`analysis. Claim 1 also provides for “extracting symbol information based on the symbolic content”
`and explains that the “symbolic content is on the at least the portion of the document based on the
`image.” ’278 Patent, Claim 1. Thus, while “symbol information” and “image” are not
`synonymous, there is a relationship between these two terms in which the symbol information is
`based on the image. To better understand this relationship, the Court turns to the specification.
`The specification characterizes the invention as providing recognition of images based on
`both visual appearance and traditional symbols appearing on an object. ’278 Patent at 3:57-65;
`see also 14:54-65 (describing visual comparison process); 3:42-48 (distinguishing invention from
`prior art based on visual comparison feature). The specification further provides for identification
`using unique image characteristics in situations in which “a symbolic image cannot be detected.”
`Id. at 3:25-38; see also 1:30-33. This disclosure suggests that the ’278 Patent contemplates
`identification using something other than just symbolic information. Thus, the specification
`appears to support Defendants’ construction. While claim 1 provides for validation and
`recognition based in part on symbolic information, claim 1 also requires at least some validation
`and recognition based on visual appearance.
`The prosecution history also support this interpretation. In its decision denying institution
`of IPR2021-01389, concerning the ’278 Patent, the PTAB explained:
`By its express terms, this limitation requires determining a validity of a
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`documentbased on twothings: (1) the image; and (2) the symbolinformation.
`Rhoads arguably discloses determining a validity of a document based on the
`symbol information, for example, the “Bedoop data” extracted from an ID
`badge. Pet. 36; Ex. 1022, 17:1-16; 17:23—31, 17:46—-59. But Petitioner does
`not show sufficiently that Rhoads discloses determining a validity of a
`documentbased on the image, for example, an image of the ID badge.
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`Decision Denying Institution of Jnter Partes Review, Docket No. 216-2 at 13. This discussion
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`confirms that symbol information and the imageare different and that claim 1 requires something
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`more than validation based on symbol information alone. As discussed above, the specification
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`confirmsthat this “something more”refers to visual characteristics. Accordingly, the Court adopts
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`Defendants’ proposed “visual features” language. However, the Court declines to include the
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`modifier “non-symbolic,” as the specification and claims do not expressly distinguish “symbolic”
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`and “non-symbolic” information using the term “non-symbolic.”
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`Asto the decomposition issue, the °278 Patent repeatedly shows and describes validation
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`and recognition based in part on decomposition of a portion of an image. See ’278 Patent at FIG.
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`1, 3:25-38, 3:57-65, 6:18-19, 6:23-29, 11:37-50, 14:54-65, and 16:25-34. Thus, contrary to
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`Plaintiffs’ argument, disclosure of decomposition is global. It is not limited to just one preferred
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`embodiment. Moreover, Plaintiffs characterized the invention as providing a decomposition in the
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`Patent Owner’s Preliminary Response in IPR2021-01389. Docket No. 221-2 at 14. Accordingly,
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`the Court also adopts Defendants’ proposed “decomposing” language.
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`For these reasons, the Court construes “basedat least in part on the image” to mean “by
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`using at least in part visual features produced by decomposing the at least the portion of the
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`documentin the image.”
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`3. “decoding the recognizable symbols to extract symbol information by
`analyzing the recognizable symbols according to type” (252 Patent, Claim
`18)
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`Plaintiffs’ Proposed Construction
`Plain and ordinary meaning.
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`symbols”
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`Defendants’ Proposed Construction
`“decoding .
`.
`. by applying multiple decoding
`routines to their respective type of recognizable
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`Plaintiffs argue that the claim language is clear and unambiguous and requires nothing
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`more than correct mapping of decoding algorithms to symbol types. Docket No. 17 at 23.
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`Plaintiffs argue that Defendants’ proposed construction is unsupported and improper becauseit
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`includes an extraneous “multiple decoding routines” requirement. Jd.
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`Defendants argue that the claimed system contemplates multiple types of decodable
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`symbols as well as multiple, corresponding types of decoding logic. Docket No. 216 at 8-9.
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`Defendants cite the patent owner’s arguments in an IPR proceeding concerning the ’252 Patent in
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`support of its construction. Jd. (citing Patent Owner’s Response in IPR2021-01333, Docket No.
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`216-7 at 7 and 21-22; Patent Owner’s Surreply, Docket No. 216-8 at 4, 5). Defendants further
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`argue that the plain language of the claim and the specification confirm its multiple symbol and
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`algorithm construction. Jd. at 9-10 (citing ’252 Patent, Claim 18 and 11:30-35).
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`Here, both parties agree that
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`the claim language, considered in light of both the
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`specification and the prosecution history, requires more than one type of symbol and requires
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`decoding schemes corresponding to symbol types. See Docket No. 225 at 13; Docket No. 221 at
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`12-13.
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`Defendants’ proposed construction does not appear
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`to contemplate additional
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`requirements. Moreover, the claim itself appears to account for these requirements. Claim 18
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`teaches “analyzing the recognizable symbols according to type.” ’252 Patent, Claim 18. Thus,
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`the claim itself requires more than one symbol and requires a correspondence between the symbol
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`type and decodinganalysis. Implicitly then, the claim also requires more than one type ofdecoding
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`analysis given (1) the disclosed mapping between decoding analysis and symboltype and (2) the
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`more than one symbol requirement. The specification merely confirms these requirements. Jd. at
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`11:31-35 (teaching that “the symbols are analyzed according to their type, and their content
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`information is extracted”). Express construction is unnecessary given the requirements already
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`present in the plain language of the claim. See Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382
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`(Fed. Cir. 2014) (holding the claim languageitself is the best guide to the meaning of a claim
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`term); see also United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)
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`(Claim construction “is not an obligatory exercise in redundancy.”).
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`For the foregoing reasons, the Court finds plain and ordinary meaning applies to the term
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`“decoding the recognizable symbols to extract symbol information by analyzing the recognizable
`
`symbols according to type.” Construction is unnecessary.
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`V.
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`Conclusion
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`Forthe reasons stated, the Court construes the disputed terms as follows:
`
`understanding that the characteristics,
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`“data characteristics” / “characteristic”/
`“parameters”/ “features”
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`Plain and ordinary meaning with the
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`
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`“determining a validity of the document based
`at least in part on the image and . . .” /
`“recognizing the document as a first target
`object based at least in part on the image, . . .
`.”
`
`“decoding the recognizable symbols to extract
`symbol information by analyzing the
`recognizable symbols according to type”
`
`
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`parameters, and features are produced by
`decomposing the relevant object or target.
`
`“by using at least in part visual features
`produced by decomposing the at least the
`portion of the document in the image”
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`Plain and ordinary meaning.
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