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`EXHIBIT B
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`George C. Lombardi (pro hac vice)
`glombardi@winston.com
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601-9703
`Telephone: (312) 558-5600
`Facsimile:
`(312) 558-5700
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`E. Danielle T. Williams (pro hac vice)
`dwilliams@winston.com
`WINSTON & STRAWN LLP
`300 South Tryon Street, 16th Floor
`Charlotte, NC 28202
`Telephone: (704) 350-7700
`Facsimile:
`(704) 350-7800
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`Dustin J. Edwards (pro hac vice)
`dedwards@winston.com
`WINSTON & STRAWN LLP
`800 Capitol St., Suite 2400
`Houston, TX 77002-2925
`Telephone: (713) 651-2600
`Facsimile:
`(713) 651-2700
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`Diana Hughes Leiden (SBN: 267606)
`dhleiden@winston.com
`WINSTON & STRAWN LLP
`333 S. Grand Avenue, 38th Floor
`Los Angeles, CA 90071-1543
`Telephone: (213) 615-1700
`Facsimile:
`(213) 615-1750
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`Attorneys for Defendants
`BANK OF AMERICA
`CORPORATION
`and BANK OF AMERICA, N.A.
`
`UNITED STATES DISTRICT COURT
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`FOR THE CENTRAL DISTRICT OF CALIFORNIA
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`NANTWORKS, LLC, a Delaware
`limited liability company, and NANT
`HOLDINGS IP, LLC, a Delaware
`limited liability company,
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`Plaintiffs,
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`vs.
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`BANK OF AMERICA
`CORPORATION, a Delaware
`corporation, and BANK OF
`AMERICA, N.A., a national banking
`association,
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`Defendants.
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`Case No. 2:20-cv-07872-GW-PVC
`
`Honorable George H. Wu
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`DEFENDANTS’ FINAL INVALIDITY
`CONTENTIONS FOR U.S. PATENT
`NOS. 7,881,529, 7,899,252, 8,478,036,
`8,520,897, 9,031,278, AND 9,324,004
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`CONTAINS MATERIAL
`DESIGNATED “CONFIDENTIAL –
`ATTORNEY EYES ONLY” IN
`SECTION VII.
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`Case 2:20-cv-07872-GW-PVC Document 298-4 Filed 03/09/24 Page 4 of 64 Page ID
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`asserted claim in Plaintiffs’ Final Infringement Contentions, Bank of America provides
`these Final Invalidity Contentions pursuant to S.P.R. 4.2. These Final Invalidity
`Contentions include:
`• S.P.R. 2.5.1. The identity of each item of prior art that anticipates each
`asserted claim or renders it obvious (see Section III);
`• S.P.R. 2.5.2. Whether each item of prior art anticipates each asserted claim
`or renders it obvious. For obviousness, an explanation of why the prior art
`renders the asserted claim obvious, including an identification of any
`combinations of prior art showing obviousness (see Section IV);
`• S.P.R. 2.5.3. A chart identifying where specifically in each alleged item of
`prior art each limitation of each asserted claim is found, including for each
`limitation that such party contends is governed by 35 U.S.C. § 112 ¶ 6, the
`identity of the structure(s), act(s), or material(s) in each item of prior art
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`that performs the claimed function. (see Exhibits A-01-H-31); and
`• S.P.R. 2.5.4. Any grounds of invalidity based on 35 U.S.C. § 101,
`indefiniteness under 35 U.S.C. § 112 ¶ 2 or enablement or written
`description under 35 U.S.C. § 112 ¶ 1 of any of the asserted claims) (see
`Sections V and VI).
`Bank of America’s discovery and investigation in connection with this action is
`continuing, thus these disclosures are based on information obtained to date. To the
`extent that Bank of America obtains additional information, including through third-
`party discovery or any supplemental infringement contentions from Plaintiffs (which,
`as explained below, Bank of America asserts would be improper), Bank of America
`reserves the right to supplement and/or amend these Invalidity Contentions (and, if
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`required, request leave of the Court to do the same). Bank of America reserves the right
`to amend these Invalidity Contentions should Plaintiffs provide the information that it
`failed to provide in its S.P.R. 2.1 and 4.1 disclosures or in response to Bank of
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`DEFENDANTS’ FINAL INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`America’s Discovery requests or if Plaintiffs amend or supplement its S.P.R. 2.1 and
`4.1 disclosures in any way.
`Plaintiffs’ disclosures under S.P.R. 2.1, 2.2, and 4.1 remain deficient in numerous
`respects. For example, Plaintiffs’ “Preliminary” Final Contentions fail to comply with
`the level of specificity required by SPR 2.1.2 and 2.1.3, and include improper
`reservation of rights to supplement with “additional ways in which BoA Accused
`Products infringe.” Yet another example is that Plaintiffs’ doctrine of equivalents
`contentions, are deficient and lack the detail required by S.P.R. 2.1. NantWorks failed
`to provide a detailed and proper analysis regarding the differences between the Accused
`Products and the asserted claims or how those alleged differences are insubstantial.
`Further, NantWorks’s doctrine of equivalents contentions renders the claim scope
`inconsequential or ineffective, including as it relates to disclaimed traditional symbols.
`Most, if not all, of the deficiencies in Plaintiffs’ Preliminary Final Contentions
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`have been documented by Bank of America through multiple letters since at least May
`18, 2021, and up to Bank of America’s most recent letter of August 19, 2023. Plaintiffs’
`shifting infringement contentions, deficiencies in its infringement contentions, and
`changing claim scope have prejudiced Bank of America from being able to reasonably
`prepare its defenses, including its invalidity contentions. For example, despite the
`Court’s most recent claim construction order (Dkt. 236), e.g., differentiating symbols
`and decomposition for the Characteristics terms, NantWorks continues to interpret the
`claims beyond the scope of the court’s constructions and what the patentee regarded as
`the invention in the specification of the Asserted Patents. The lack of detail in Plaintiffs’
`Infringement Contentions has prejudiced Bank of America’s ability to prepare these
`Final Invalidity Contentions by forcing it to speculate as to Plaintiffs’ actual position
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`on Bank of America’s alleged infringement. Therefore, these Final Invalidity
`Contentions are based in whole or in part on the present understanding of the Asserted
`Claims and Plaintiffs’ apparent positions as to the scope of the Asserted Claims as
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`DEFENDANTS’ FINAL INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`applied in its S.P.R. 2.1 and 4.1 disclosures. Bank of America further reserves the right
`to modify or add additional contentions in light of Plaintiffs’ failure to provide
`infringement contentions that comply with the level of disclosure required by the
`Standing Patent Rules. If Plaintiffs provide supplemental or amended contentions that
`comply with the Standing Patent Rules, Bank of America reserves the right to
`supplement or modify its invalidity contentions. Furthermore, by making these Final
`Invalidity Contentions, Bank of America does not concede the adequacy of Plaintiffs’
`Preliminary Final Infringement Contentions or that any assertion or construction
`inherent in these contentions is correct.
`Further, in addition to invalidity under 35 U.S.C. §§ 102 and/or 103, Bank of
`America contends that one or more of the claims of the Asserted Patents are invalid
`under 35 U.S.C. §§ 101 and 112.
`These Final Invalidity Contentions do not address any claims or theories of
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`infringement other than those that Bank of America understands to be addressed in
`Plaintiffs’ Preliminary Final Infringement Contentions. To the extent that Plaintiffs
`revise their Infringement Contentions, Bank of America reserves the right to amend or
`supplement these Final Invalidity Contentions.
`With regards to priority date, Plaintiffs state in their S.P.R. 2.1 disclosures the
`following:
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`The Asserted Claims of the Asserted Patents are entitled to at
`least the earliest U.S. or foreign priority dates listed on the
`face of each patent or identified in the prosecution histories
`of each patent. In particular, the ’278, ’529, ’252, ’038, ’030,
`’897, ’004, and ’036 Patents are entitled to a priority date not
`later than November 6, 2000, which is the filing date of
`provisional application No. 60/246,295. NantWork’s
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`investigation is ongoing, and NantWorks reserves the right to
`establish earlier and/or alternative priority and invention dates
`for the Asserted Claims.
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`Bank of America reserves the right to challenge the November 6, 2000 priority
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`DEFENDANTS’ FINAL INVALIDITY CONTENTIONS
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`3 Exhibits A-01 to H-31 include charts served with Bank of America’s Preliminary Invalidity
`Contentions, as well as their amendments.
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`date and any alleged date of conception earlier than the November 6, 2000 filing date
`of the provision application. In particular, and further discussed below, a preliminary
`analysis indicates that Provisional Application No. 60/246,295 does not provide written
`description support for certain claimed features of the ’529 patent. Indeed, it also
`appears that the ’252, ’036, ’897, ’004, and ’278 patents suffer from similar maladies.
`Bank of America also reserves the right to amend these contentions upon the Court’s
`determination of the priority date(s) of the Asserted Claims. Bank of America further
`reserves the right to use related patents in the alleged change of priority of the Asserted
`Patents as prior art upon the Court’s determination of the priority date(s) of the Asserted
`Claims. Discovery and investigation as to public use or on-sale bar under 35 U.S.C. §
`102(b) or the Applicant’s failure to comply with 35 U.S.C. § 112 are also ongoing. Bank
`of America therefore reserves the right to further supplement or amend these Invalidity
`Contentions if and when such further information becomes available.
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`The identity of each item of prior art relied upon in this disclosure is listed below
`and in the attached claim charts, including prior art systems, publications, and patents.
`Each item of prior art is identified in accordance with S.P.R. 2.5.1. Except for copies of
`prior art already in Plaintiffs’ possession, custody, or control, the publications
`describing the prior art systems have been produced to Plaintiffs to the extent located,
`and to the extent that such systems are in Bank of America’s possession, they have been
`produced and/or made available for inspection in accordance with S.P.R. 2.6.2. Subject
`to the foregoing, the references cited in Exhibits A-01-H-313 disclose the elements of
`the Asserted Claims (either explicitly and/or inherently) and may be relied upon to show
`the state of the art in the relevant time frames.
`Further, Bank of America has endeavored to identify exemplary portions of the
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`references based on presently available information and Plaintiffs’ Preliminary Final
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`DEFENDANTS’ FINAL INVALIDITY CONTENTIONS
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`Infringement Contentions. The references, however, may contain additional support for
`particular claim limitations. Bank of America expressly reserves the right to rely on
`uncited portions of the prior art references, other documents, and expert testimony to
`provide context and/or to aid in understanding the cited portions of the references. In
`instances of cumulative disclosure within a particular prior art reference, Bank of
`America may have cited a subset of those instances as opposed to citing each instance,
`and Bank of America reserves the right to rely on uncited instances of cumulative
`disclosure. Where Bank of America cites to a particular figure in a reference, the citation
`should be understood to encompass the caption and description of the figure and any
`text relating to or discussing the figure. Conversely, where Bank of America cites to
`particular text referring to a figure, the citation should be understood to include the
`figure as well.
`Bank of America also incorporates by reference all assertions made by any party
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`at any time that one or more of the Asserted Claims of the Asserted Patents are invalid
`or unenforceable for any reason, including without limitation all invalidity contentions
`asserted during prior litigations, reexaminations, inter partes review proceedings, and
`original prosecution of the Asserted Patents.
`II. BACKGROUND
`The Asserted Patents all claim priority to two provisional applications—
`Provisional Application No. 60/246,295, which was filed on November 6, 2000, and
`Provisional Application No. 60/317,521, which was filed on September 5, 2001. In
`their Preliminary Final Infringement Contentions, Plaintiffs contend that the Asserted
`Claims of the Asserted Patents are entitled to a priority date of November 6, 2000, the
`filing date of the first provisional application, Provisional Application No. 60/246,295.
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`Plaintiffs bear the burden of proving, on a claim-by-claim basis, that the provisional
`application provides written description and enablement support for each and every
`limitation of the Asserted Claims. See Dynamic Drinkware, LLC v. Nat’l Graphics,
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`DEFENDANTS’ FINAL INVALIDITY CONTENTIONS
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`Inc., 800 F.3d 1375, 1382 (Fed. Cir. 2015) (“A reference patent is only entitled to claim
`the benefit of the filing date of its provisional application if the disclosure of the
`provisional application provides support for the claims in the reference patent in
`compliance with § 112, ¶ 1.” (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981));
`see also S.P.R. 2.1.4 (requiring Plaintiffs to disclose “[f]or any patent that claims
`priority to an earlier application, the priority date allegedly applicable to each asserted
`claim.”). Plaintiffs have made no showing on this issue, let alone met its burden. Bank
`of America reserves its right to challenge the priority date claimed by Plaintiffs for the
`Asserted Patents.
`Indeed, it appears that the Asserted Claims cannot all claim priority to Provisional
`Application No. 60/246,295. A preliminary analysis indicates that Provisional
`Application No. 60/246,295 does not provide written description support for all of the
`elements in the Asserted Claims of the ’529 patent. Indeed, it also appears that the
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`Asserted Claims of the ’252, ’038, ’036, ’897, ’004, and ’278 patents lack supporting
`disclosures in Provisional Application No. 60/246,295. For instance, Provisional
`Application No. 60/246,295 only discloses the use of symbols, e.g., barcodes, to
`identify objects. The Asserted Claims, however, also cover using characteristics of an
`object, e.g., shape and color, to identify the object, and thus Provisional Application
`No. 60/246,295 does not provide written description support for those claims. Bank of
`America’s evaluation is ongoing and reserves the right to supplement its priority date
`analysis should Plaintiffs suggest a date alternative to the November 6, 2000 date it
`asserted in its Infringement Contentions.
`The Asserted Patents generally relate to data capture and identification systems
`and processes. As just one example, the ’529 patent describes a process for identifying
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`objects from digitally captured images that uses the objects’ characteristics to identify
`the object from a set of objects stored in a database. ’529 patent, Abstract. Another
`example is that the ’004 patent covers video streams instead of images. The Asserted
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`DEFENDANTS’ FINAL INVALIDITY CONTENTIONS
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`Claims of the ’529, ’252, ’036, ’004, and ’278 patents are subject to terminal disclaimers
`to overcome double-patenting rejections that such claims are not patentably distinct
`from the claims of U.S. Pat. No. 7,016,532, whereby the Applicant disclaimed the
`terminal part of the statutory terms for the Asserted Patents beyond the term of U.S. Pat.
`No. 7,016,532. The Asserted Claims of the’897 patent are subject to terminal
`disclaimers to overcome double-patenting rejections that such claims are not patentably
`distinct from the claims of U.S. Pat. No. 8,218,874, whereby the Applicant disclaimed
`the terminal part of the statutory terms for the Asserted Patents beyond the term of U.S.
`Pat. No. 8,218,874.
`III. PRIOR ART UNDER S.P.R. 2.5.1
`Pursuant to S.P.R. 2.5 and 4.2.2, and in light of Plaintiffs’ S.P.R. 4.1 Infringement
`Contentions and claim charts served on August 31, 2023, Bank of America identifies
`below the prior art presently known to Bank of America that anticipates and/or renders
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`obvious the Asserted Claims of the Asserted Patents. In these Invalidity Contentions,
`including the exhibits, any citation to a printed publication or other reference describing
`a prior art system should also be construed to include a reference to the prior art system
`itself. Each listed document or item became prior art at least as early as the dates set
`forth herein. Bank of America reserves the right to rely upon foreign counterparts of the
`U.S. Patents identified in these invalidity contentions, U.S. counterparts of foreign
`patents and foreign patent applications identified in these invalidity contentions, U.S.
`and foreign patents and patent applications corresponding to articles and publications
`identified in these invalidity contentions, and any systems, products, or prior inventions
`related to any of the references identified in these Invalidity Contentions.
`In accordance with S.P.R. 2.5.3, the claim charts enclosed as the Exhibits A-01-
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`H-31, including their amendments, identify specifically where each element of each
`asserted claim is disclosed in the prior art.
`A. Patent Prior Art to the Asserted Patents Under 35 U.S.C. §§ 102(a),
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`DEFENDANTS’ FINAL INVALIDITY CONTENTIONS
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`Case 2:20-cv-07872-GW-PVC Document 298-4 Filed 03/09/24 Page 14 of 64 Page ID
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`#:8069
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`15813, 15920-15923; and the documents and
`information reference below and in Exhibits
`A-31, C-31, E-31, F-31, G-31, and H-31.
`In accordance with S.P.R. 2.5.1 and 4.2.2, with respect to 35 U.S.C. § 102(b)/(a),
`the identities of the item(s) offered for sale or publicly used or known, the date the offer
`or use took place or the information became known, and the identities of the person(s)
`or entity(ies) which made the use or which made and received the offer, or the person(s)
`or entity(ies) which made the information known or to whom it was made known are as
`follows based on the information currently known and available to Bank of America;
`with respect to 35 U.S.C. § 102(g), the identities of the person(s) or entities involved in
`and the circumstances surrounding the making of the invention before the patent
`applicant are as follows based on the information currently known and available to Bank
`of America:
`HP CoolTown System appears to have been made in the United States by HP by
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`at least 2000. Tim Kindberg, John Barton, Jeff Morgan, Gene Becker, Debbie Caswell,
`Philippe Debaty, Gita Gopal, Marcos Frid, Venky Krishnan, Howard Morris, John
`Schettino, and Bill Serra appear to have been involved in the design and making the HP
`CoolTown System. On information and belief, HP was using CoolTown and made it
`available to the public in the United States by releasing the website on the Internet (and
`accessible to U.S. users) by at least March 2000, making the software available on the
`HP website by March 2000, and making available on the Internet (and accessible to
`U.S. users) the open source code, which reflects the functionality of CoolTown by at
`least March 2000. See e.g., HP000043–044; HP000045–046; HP000060–061.
`Therefore, HP Cooltown was at least known, used, and/or sold to the public by at least
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`2000.
`IBM QBIC System was made in the United States by IBM starting by at least
`1995, and certainly by November 5, 2000, to query large online image databases using
`image content as the basis of the queries. Myron Flickner, Harpreet Sawhney, Wayne
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`DEFENDANTS’ FINAL INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`4 See, e.g., The QBIC Project: Querying Images by Content Using Color, Texture, and Shape, SPIE
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`Vol. 1908 (Feb. 1993), IBM 0002390–404; Querying Image Databases Using Computed Texture
`Features (June 1993), IBM 0000912–914; Ultimedia Manager: Query by Image Content and its
`Applications, IEEE 1063-6390/94 (1994), IBM 0002432–437; Searching Images Using Ultimedia
`Manager, SPIE Vol. 2420 (Feb. 1995), IBM 0000968–977; Query by Image and Video Content: The
`QBIC System (Sept. 1995), IBM 0000893–902; Updates to the QBIC System, SPIE Vol. 3312 (Jan.
`1998), IBM 0002418–430; IBM DB2 Universal Database: Image, Audio, and Video Extenders (2000),
`IBM 000001–617.
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`Niblack, Jonathan Ashley, Qian Huang, Byron Dom, Monika Gorkani, Jim Hafner,
`Denis Lee, Dragutin Petkovic, David Steele, and Peter Yanker appear to have been
`involved in making the IBM QBIC System. The QBIC System was known and/or used
`by the public in the United States as myriad texts discuss the system and techniques
`used by the system.4 The QBIC system was used by IBM and available to the public in
`the United States as a stand-alone software package and as part of various products such
`as IBM’s Ultimedia Manager, IBM’s Digital Library, IBM’s DB2 series of products
`such as the Image Extender in DB2 Universal Database, and the Enterprise Information
`Portal, by at least 1995, and certainly by November 5, 2000, and was therefore known,
`used, and/or sold to the public by that time. See, e.g.:
`• The QBIC Project: Querying Images By Content Using Color, Texture,
`and Shape, SPIE Vol. 1908 (1993), pp. 173–187, IBM0002390–404 at 2
`390 (“In the QBIC (Query By Image Content) project we are studying
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`methods to query large on-line image databases using the images' content
`as the basis of the queries.”), 2391 (“There are three logical steps in a
`QBIC application: database population, feature calculation, and image
`query.”), 2391 (“The first step in population is to simply load the images
`into the system. This involves adding the image to the database, preparing
`a reduced 100x100 “thumbnail”, and adding any available text information
`to the database. Object/element identification is an optional part of this
`step.”), 2392 (“Corresponding features are computed for all objects and
`full scenes and stored for use in subsequent queries.”), 2393 (“Once the set
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`Case 2:20-cv-07872-GW-PVC Document 298-4 Filed 03/09/24 Page 15 of 64 Page ID
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`#:8070
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`-13-
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`DEFENDANTS’ FINAL INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`Case 2:20-cv-07872-GW-PVC Document 298-4 Filed 03/09/24 Page 16 of 64 Page ID
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`#:8071
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`of features for objects and images has been computed, queries may be run.
`In one scenario, a query may be initiated by a user in an interactive session
`by specifying an object or set of object attributes and requesting images
`with objects ‘like the query object’.”), 2393 (“Retrievals on image features
`are done based on similarity …. The easiest similarity functions are
`distance metrics….”);
`• Ultimedia Manager: Query by Image Content and its Applications, IEEE
`1063-6390/94 (1994), IBM 0002432–437 at 2432 (“In this paper we
`describe the beta version of the PC-based Ultimedia Manager product,
`which is based on QBIC technology.”);
`• Searching Images Using Ultimedia Manager, SPIE Vol. 2420 (Feb. 1995),
`IBM 0000968–977 at 968–69 (“IBM has developed a way to index and
`search images by the content of the image. Database queries can select for
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`color, texture, shape and position. This approach is called QBIC, for Query
`by Image Content. Ultimedia Manager is a product from IBM that
`combines QBIC technology with traditional database searching, and offers
`a powerful image browser. This unique combination provides new ways to
`manage image databases. . . . Since more detailed discussions of IBM' s
`QBIC technology have been published previously, this paper will only
`briefly describe the QBIC technology implemented in Ultimedia
`Manager.”);
`• IBM Ultimedia Manager 1.1 and Client Search Feature (Feb. 7, 1995),
`IBM 0002263–268 at 2264 (“The advanced image search technology in
`Ultimedia Manager, query by image content, was developed in conjunction
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`with the IBM Almaden Research Center. . . . Ultimedia Manager 1.1 works
`with the DB2 Family of products and the Visualizer Ultimedia Query
`product. Catalogs created by Utlimedia Manager can be stored in DB2 for
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`DEFENDANTS’ FINAL INVALIDITY CONTENTIONS
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`Case 2:20-cv-07872-GW-PVC Document 298-4 Filed 03/09/24 Page 17 of 64 Page ID
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`#:8072
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`OS/2 database tables. Image catalogs also can be stored in DB2 for OS/2
`or DB2 for AIX database servers in client/server environments.”);
`• Query by Image and Video Content: The QBIC System (Sept. 1995), IBM
`0000893–902 at 893 (“QBIC technology is part of several IBM products.),
`900 (“Technology from this prototype has already moved into a
`commercial stand-alone product, IBM’s Ultimedia Manager, and is part of
`IBM’s Digital Library and DB2 series of products.”);
`• Updates to the QBIC System, SPIE Vol. 3312 (Jan. 1998), IBM 0002418–
`430 at 2419 (“QBIC was developed by IBM and moved into commercial
`products including a licensable stand-alone software package, IBM Digital
`Library, Ultimedia Manager, the Image Extender in DB2 Universal, and
`the MediaMiner software tool series.”); and
`• IBM DB2 Universal Database: Image, Audio, and Video Extenders,
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`Version 7 (June 2000), IBM 000001–617 at 024 (“Your applications can
`even search for images by content. Imagine an application that uses visual
`examples to search for images. With such an application, users could select
`an example image and have the application find other images that have
`colors or textures similar to those in the example. With DB2 extenders’
`Query by Image Content (QBIC) capability, you can create applications
`that search for images in this visual way.”).
`• IBM Enterprise Information Portal for Multiplatforms: Managing
`Enterprise Information Portal, Version 7.1 (August 2000), IBM 000777–
`880 at 849 (“The image search server uses IBM's QBIC (query by image
`content) technology to help you search for objects by certain visual
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`properties, such as color and texture. The image search server analyzes
`images and stores the image information in a database. Then users can run
`image queries, which use the visual properties of images, to match colors,
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`DEFENDANTS’ FINAL INVALIDITY CONTENTIONS
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`Case 2:20-cv-07872-GW-PVC Document 298-4 Filed 03/09/24 Page 18 of 64 Page ID
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`#:8073
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`textures, and their positions without describing them in words. You can
`combine content-based queries with text and keyword searches for more
`powerful retrieval of image and multimedia data.”).
`As illustrated in their respective charts, certain charts rely on printed publications,
`patents, software, and internal documents to describe particular systems, products,
`and/or programs that were made, publicly known, in public use, and/or on sale in the
`United States prior to the filing dates of the Asserted Patents.
`D. Additional Prior Art
`Appendix A to Bank of America’s Preliminary Invalidity Contentions identifies
`additional prior art from which disclosure is not specifically identified in the Exhibits
`due to one or more of the following reasons: (i) the art provides background and/or
`indicates and/or describes the state of the art during the relevant time; (ii) the art has
`substantially similar disclosures to other prior art of which disclosure is reflected in the
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`Exhibits; (iii) the prior art is used as supporting references in an obviousness
`combination and/or provides some rationale for combining references; and/or (iv) Bank
`of America is in the process of obtaining further detail regarding the prior art in order
`to better understand its disclosure. Bank of America reserves the right to update these
`disclosures and to specifically rely on any such reference to prove the invalidity of the
`Asserted Claims of the Asserted Patents at that time.
`Further, Plaintiffs have expressly or implicitly admitted that certain elements
`recited in Asserted Claims were known in the prior art and thus part of the state of the
`art. These admissions include, but are not limited to, the following prior art concepts.
`Bank of America reserves the right to identify additional examples of admitted prior art
`and to further support the admissions identified below by relying on additional portions
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`of the patent specification, statements made during the prosecution history of the
`Asserted Patents and the prosecution history of any related applications, and any
`statements by Plaintiffs or the patent applicants.
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