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`QUINN EMANUEL URQUHART
` & SULLIVAN, LLP
`James R. Asperger (Bar No. 83188)
`jimasperger@quinnemanuel.com
`Rachael McCracken
`rachaelmccracken@quinnemanuel.com
`865 South Figueroa Street, 10th Floor
`Los Angeles, CA 90017-2543
`Telephone: (213) 443-3000
`Facsimile: (213) 443-3100
`
`QUINN EMANUEL URQUHART
` & SULLIVAN, LLP
`Kevin P.B. Johnson (Bar No. 177129)
`kevinjohnson@quinnemanuel.com
`Todd M. Briggs (Bar No. 209282)
`toddbriggs@quinnemanuel.com
`Brice C. Lynch (Bar No. 288567)
`bricelynch@quinnemanuel.com
`555 Twin Dolphin Drive, 5th Floor
`Redwood Shores, California 94065
`Telephone: (650) 801-5000
`Facsimile: (650) 801-5100
`
`QUINN EMANUEL URQUHART
` & SULLIVAN, LLP
`Eric Huang (pro hac vice)
`erichuang@quinnemanuel.com
`51 Madison Avenue, 22nd Floor
`New York, New York 10010
`Telephone: (212) 849-7000
`Facsimile: (212) 849-7100
`
`Attorneys for Plaintiffs
`NANTWORKS, LLC and NANT HOLDINGS IP, LLC
`
`UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`CASE NO. 2:20-cv-7872-GW-PVC
`
`MEMORANDUM OF LAW IN
`SUPPORT OF PLAINTIFFS’
`MOTION TO STRIKE PORTIONS
`OF THE OPENING EXPERT
`REPORT OF DR. NATHANIEL
`POLISH
`
`NANTWORKS, LLC, a Delaware
`limited liability company, and NANT
`HOLDINGS IP, LLC, a Delaware
`limited liability company,
`
`Plaintiffs,
`
`vs.
`
`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-7872-GW-PVC
`MEMORANDUM OF LAW TO STRIKE MOTION TO STRIKE
`PORTIONS OF THE EXPERT REPORT OF DR. NATHANIEL POLISH
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`Case 2:20-cv-07872-GW-PVC Document 302-1 Filed 03/12/24 Page 2 of 25 Page ID
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`TABLE OF CONTENTS
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`I.
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`II.
`
`Page
`INTRODUCTION ............................................................................................. 1
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`BACKGROUND ............................................................................................... 2
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`A.
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`B.
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`BoA’s Invalidity Contentions ................................................................. 2
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`Dr. Polish’s Expert Opinions on Invalidity ............................................ 5
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`III. LEGAL STANDARDS ..................................................................................... 6
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`IV. ARGUMENT .................................................................................................... 8
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`A. Dr. Polish’s Previously Undisclosed Opinions on Obviousness
`Should Be Stricken. ................................................................................. 8
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`B.
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`Dr. Polish’s Previously Undisclosed Opinions on Alleged Patent
`Ineligibility Should Be Stricken. ........................................................... 13
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`1.
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`2.
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`The FIC Does Not Support Patent Specific Ineligibility
`Theories ...................................................................................... 14
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`Newly Identified Functionalities and Hardware that is
`Purportedly Conventional ........................................................... 16
`
`C.
`
`BoA Was Not Diligent In Its Late Disclosure of New Theories .......... 18
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`V.
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`CONCLUSION ............................................................................................... 20
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`TABLE OF AUTHORITIES
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`Cases
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`Page
`
`Asetek Danmark A/S v. CoolIT Sys. Inc.,
`2022 WL 21306657 (N.D. Cal. Oct. 4, 2022) .................................................... 10
`
`Berkheimer v. HP,
`881 F.3d 1360 (Fed. Cir. 2018) .................................................................... 13, 16
`
`California Inst. of Tech. v. Broadcom Ltd.,
`2019 WL 8192255 (C.D. Cal. Aug. 9, 2019), order corrected, 2019
`WL 8807924 (C.D. Cal. Nov. 21, 2019) .............................................................. 3
`
`Finjan v. Proofpoint,
`2015 WL 9460295 .............................................................................................. 16
`
`Finjan, Inc. v. Sophos, Inc.,
`2016 WL 2988834 (N.D. Cal. May 24, 2016) ................................................. 6, 7
`
`Johnson v. Mammoth Recreations, Inc.,
`975 F.2d 604 (9th Cir. 1992) ................................................................................ 5
`
`Kandypens, Inc. v. Puff Corp.,
`2020 WL 11629210 (C.D. Cal. Sept. 24, 2020) ............................................... 7, 9
`
`Karl Storz Endoscopy-Am., Inc. v. Stryker Corp.,
`2017 WL 5257001 (N.D. Cal. Nov. 13, 2017) ....................................... 13, 14, 16
`
`Labyrinth Optical, Techs. LLC v. Alcatel-Lucent USA Inc.,
`2015 WL 12681652 (C.D. Cal. Jan. 13, 2015) ..................................................... 7
`
`Largan Precision Co., Ltd. v. Genius Elec. Optical Co.,
`2014 WL 6882275 (N.D. Cal. Dec. 5, 2014) ..................................................... 12
`
`MediaTek Inc. v. Freescale Semiconductor, Inc.,
`2014 WL 690161 (N.D. Cal. Feb. 21, 2014) ........................................................ 6
`
`Nichia Corp. v. Feit Elec. Co., Inc.,
`2022 WL 4613591 (C.D. Cal. Feb. 15, 2022) ................ 6, 7, 9, 10, 12, 17, 18, 19
`
`O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
`467 F.3d 1355 (Fed. Cir. 2006) ........................................................................ 6, 7
`
`
`
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`#:11190
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`Pfizer, Inc. v. Apotex, Inc.,
`480 F.3d 1348 (Fed. Cir. 2007) .......................................................................... 19
`
`Phigenix, Inc. v. Genentech, Inc.,
`783 F. App’x 1014 (Fed. Cir. 2019) ..................................................................... 6
`
`Slot Speaker Techs., Inc. v. Apple, Inc.,
`2017 U.S. Dist. LEXIS 8414 (N.D. Cal. Jan. 19, 2017) ...................................... 9
`
`Verinata Health, Inc. v. Sequenom, Inc.,
`2014 WL 4100638 ................................................................................................ 7
`
`Rules / Statutes
`
`35 U.S.C. § 101 .......................................................................................... 5, 6, 13, 19
`
`35 U.S.C. § 315(e) ..................................................................................................... 3
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`Fed. R. Civ. P. 16 ....................................................................................................... 8
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`Fed. R. Civ. P. 16(b)(4) ............................................................................................. 5
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`Fed. R. Civ. P. 16(f)(1)(C) ......................................................................................... 5
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`Fed. R. Civ. P. 37(b)(2)(A)(ii) ................................................................................... 5
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`N.D. Cal. Patent L.R. 3-3........................................................................................... 6
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`Standing Patent Rule 2.5 .................................................................................. 6, 8, 10
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`Case 2:20-cv-07872-GW-PVC Document 302-1 Filed 03/12/24 Page 5 of 25 Page ID
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`#:11191
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`I.
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`INTRODUCTION
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`Plaintiffs NantWorks LLC and Nant Holding IP, LLC (“NantWorks”),
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`respectfully move to strike certain portions of the Opening Expert Report of Dr.
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`Nathaniel Polish (“Polish Report”), served January 30, 2024 by Defendants Bank of
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`America Corporation and Bank of America N.A. (“BoA”), because those portions
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`contain new, previously undisclosed,
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`invalidity
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`theories regarding alleged
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`obviousness and patent ineligibility.
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`BoA’s September 8, 2023 Final Invalidity Contentions (“FIC”) fail to explain
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`why the prior art combinations BoA elected in January 2022 render the asserted
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`claims obvious. Instead, BoA’s FIC provides for the patents-in-suit 31 separate
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`anticipation claim charts, generic catch-all language attempting to reserve unspecified
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`obviousness theories, and a lengthy narrative in the cover pleading that purports to
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`provide an “Explanation of Obviousness under S.P.R. 2.5.2” but utterly fails to
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`explain why the elected prior art combinations render the claims obvious. Nearly five
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`months later, the Polish Report provides for the first time specific obviousness
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`theories—theories that BoA failed to disclose in its FIC.
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`Regarding patent ineligibility, BoA’s FIC includes just over one page of
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`ineligibility disclosure, which contain a mere nine lines of non-boilerplate disclosure
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`that fails to adequately disclose its theories for Alice step two on a patent-by-patent
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`basis, let alone disclose the actual claim language from each of the now five patents-
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`in-suit that it contends are well-understood, routine and conventional. Nearly five
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`months later, the Polish Report dramatically departs from the nine lines in BoA’s FIC,
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`providing for the first time specific and separate theories as to what claim limitations
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`are purportedly conventional on a patent by patent basis, with reference to specific
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`claim language.
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`BoA has not offered (and cannot offer) any justification for its belated addition
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`of new theories in the Polish Report. In the face of its election of prior art obviousness
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`combinations 20 months earlier, its omission from the FIC of any explanation of why
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`the elected prior art render the claims obvious not only manifests a lack of diligence,
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`it amounts to an obfuscation of its theories. BoA never updated its FIC disclosure on
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`ineligibility over the 29 months since it served its April 2021 Preliminary Invalidity
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`Contentions. The Polish Report relies on disclosures from patents and prior art known
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`since at least April 2021. BoA’s lack of diligence should not be rewarded.
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`Furthermore, BoA deprived NantWorks of a fair opportunity to investigate these new
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`theories in depositions and further written discovery. For the reasons set forth below,
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`NantWorks moves to strike the identified portions of the Polish Report that present
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`these new invalidity theories.
`II. BACKGROUND
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`This case involves five patents-in-suit—U.S. Patents 7,881,529 (the “’529
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`patent”), 7,899,252 (the “’252 patent”), 8,478,036 (the “’036 patent”), 9,031,278 (the
`“’278 patent”), and 9,324,004 (the “’004 patent”).1 Fact depositions took place on
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`August 29, 2023 and between September 20 and January 11, 2024. Fact discovery
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`closed on December 20, 2023. By agreement, the parties scheduled select depositions
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`out of time and a date by which supplementation of interrogatories could be made,
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`January 18, 2024.
`A. BoA’s Invalidity Contentions
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`On April 8, 2021, BoA served its Preliminary Invalidity Contentions. On
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`January 28, 2022, BoA served its Final Election of Prior Art that identified lists of
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`combinations of certain prior art references that BoA elected to assert as invalidating
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`prior art. Ex. A (“BoA Final Election of Prior Art”). For each asserted patent, BoA
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`elected five prior art combinations that allegedly “render the asserted claims invalid.”
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`1 The “Asserted Claims” of the patents-in-suit are claims 1, and 3-5 of the ’278
`patent, claims 1, 4, and 20 of the ’529 patent, claims 18, 26-27, 29, and 31 of the
`’252 patent, claims 1, 6, and 18 of the ’004 patent, and claim 1 of the ’036 patent.
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`Id. Specifically, BoA elected 25 grounds for the patents-in-suit2 including 11 grounds
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`comprised of the combinations of: (i) Rhoads and QBIC and of (ii) Cooltown and
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`QBIC against the ’529, ’036, and ’252 patents; the combination of (iii) Mault, Sizer
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`and QBIC against the ’004 and ’278 patents; the combination of (iv) Sizer, Krouse
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`and QBIC against the ’004 and ’278 patents; and the combinations of (v) Ogasawara
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`and QBIC, (vi) of Krouse, Harris and QBIC, and of (vii) Krouse, QBIC and Cooltown
`against the ’278 patent.3
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`BoA filed petitions for inter partes review (“IPR”) on every patent-in-suit. The
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`petition was rejected for the ’278 patent. Four IPRs were instituted, one each on the
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`’529, ’004, ’036, and ’252 patents. By February 2, 2023, final written decisions issued
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`in each pending IPR, rejecting the challenges to those patents. Notably, the challenges
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`were based on a prior art combination of the Ogasawara and Bolle references. Those
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`decisions estop BoA from raising certain prior art grounds it could have raised in the
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`IPRs. 35 U.S.C. § 315(e). Specifically, BoA is estopped from arguing invalidity
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`based solely on patents and printed publications identified by BoA in its April 2021
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`preliminary invalidity contentions.
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`Notably, the now elected prior art combinations combine certain patents and
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`printed publications with the so-called “IBM QBIC system” and in some cases the
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`“HP Cooltown system,” apparently an attempt to circumvent estoppel. Because the
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`relevant features of the “IBM QBIC system” and “Cooltown system” for the purposes
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`of the obviousness grounds BoA has elected are shown in prior art publications that
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`could have been used in the respective inter partes reviews, estoppel applies to the
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`“IBM QBIC system,” the HP Cooltown system, and each obviousness ground. See
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`California Inst. of Tech. v. Broadcom Ltd., 2019 WL 8192255, at *8 (C.D. Cal. Aug.
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`2 At the time of the election, 6 patents were in suit. NantWorks narrowed the case,
`dropping one patent at the end of fact discovery. Dkt. 293.
`3 There are 14 obviousness combinations that were elected but not presented in the
`Polish Report.
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`9, 2019), order corrected, 2019 WL 8807924 (C.D. Cal. Nov. 21, 2019), and aff’d,
`25 F.4th 976 (Fed. Cir. 2022).4
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`Pursuant to the Court’s Order (Dkt. 201), on September 8, 2023, BoA served
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`its Final Invalidity Contentions, which includes the cover pleading, Ex. B (“FIC”),
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`and 36 attached claim charts, each reciting disclosures from a different prior art
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`reference, Ex. C (“FIC Claim Charts”). Despite having elected specific prior art
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`combinations 20 months earlier, the FIC provided no claim charts specific to the
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`combinations nor other explanation of how any elected reference is to be combined
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`with each other, or why the specific elected prior art combinations rendered any claim
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`obvious. The FIC otherwise grouped all prior art references together and generically
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`alleged—untethered to any particular patent, claim, or claim limitation—that a
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`POSITA would be motivated to combine these references. Ex. B (FIC), at 29-45.
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`Specifically, the FIC provided 31 claim charts each purporting to show how a
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`given prior art reference anticipated the asserted claims, merely identified the prior
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`elected prior art obviousness combinations, and provided a lengthy narrative at Sec.
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`IV.B.2 that purports to explain obviousness but fails to do so for the elected prior art
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`combinations. The FIC merely includes generic statements contending that:
`“the prior art references in the Exhibits show the Asserted Claims to be
`anticipated…To the extent the references are found to lack particular
`elements of the Asserted Claims, those elements would have represented
`mere obvious modifications of the prior art.”
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`Ex. B (FIC), at 47; Ex. C (FIC Claim Charts). The FIC invites the reader to mix and
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`match prior art references without guidance as to the obviousness theories.
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`In addition, the entire disclosure on patent ineligibility under Alice step 2 lacks
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`any patent specific discussion or even identification of specific claim language that
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`4 The application of estoppel is not the subject of this motion to strike. However,
`NantWorks expects to raise this issue with the Court at the appropriate time on a
`motion for partial summary judgment.
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`conferred with NantWorks on February 28, 2024. The parties agreed that they had
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`reached an impasse on the issues raised in this Motion.
`III. LEGAL STANDARDS
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`Federal Rule of Civil Procedure 16(b)(4) provides that “[a] schedule may be
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`modified only for good cause and with the judge’s consent.” “Rule 16(b)’s ‘good
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`cause’ standard primarily considers the diligence of the party seeking the
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`amendment.” Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 609 (9th Cir.
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`1992). When a party “fails to obey a scheduling or other pretrial order,” Rule
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`16(f)(1)(C) authorizes the court to preclude that party from “supporting or opposing
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`designated claims or defenses, or from introducing designated matters in evidence”
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`under Rule 37(b)(2)(A)(ii).
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`Based on the agreement of the parties, the Court adopted Judge Guilford’s
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`Standing Patent Rules (“S.P.R.”). Dkt. 91. These early disclosures are designed “to
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`require parties to crystallize their theories of the case early in the litigation . . . .” See
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`O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir.
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`2006) (addressing N.D. Cal. local patent rules). “‘Given the purpose behind [these]
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`disclosure requirements, a party may not use an expert report to introduce new
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`infringement theories [or] new invalidity theories . . . not disclosed in the [party’s]
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`infringement contentions or invalidity contentions.’” Finjan, Inc. v. Sophos, Inc.,
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`2016 WL 2988834, at *5 (N.D. Cal. May 24, 2016) (citation omitted).
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`S.P.R. 2.5 governs invalidity contentions. Invalidity contentions must include
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`“[t]he identity of each item of prior art that allegedly anticipates each asserted claim
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`or renders it obvious.” S.P.R. 2.5.1. The contentions must also disclose “an
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`explanation of why the prior art renders the asserted claim obvious, including an
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`identification of any combinations of prior art showing obviousness.” S.P.R. 2.5.2.
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`In addition, the contentions must disclose “[a]ny grounds of invalidity based on 35
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`U.S.C. § 101, indefiniteness under 35 U.S.C. § 112(2)/(b), or enablement or written
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`description under 35 U.S.C. § 112(1)/(a) of any of the asserted claims.” S.P.R. 2.5.4.
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`The S.P.R. recited above are closely aligned with similar patent local rules in other
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`jurisdictions. See N.D. Cal. Patent L.R. 3-3, available at www.cand.uscourts.gov/wp-
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`content/uploads/2023/03/Patent_Local_Rules_10-19-2023.pdf.
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`New invalidity theories should be stricken if not previously disclosed in
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`invalidity contentions under patent rules. See Nichia Corp. v. Feit Elec. Co., Inc.,
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`2022 WL 4613591, at *4-*5 (C.D. Cal. Feb. 15, 2022) (granting motion to strike
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`portion of expert report raising new obviousness theories not disclosed in invalidity
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`contentions); Phigenix, Inc. v. Genentech, Inc., 783 F. App’x 1014, 1020 (Fed. Cir.
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`2019) (noting “the exclusion of evidence is often an appropriate sanction for a party’s
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`failure to comply with the patent local rules”); MediaTek Inc. v. Freescale
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`Semiconductor, Inc., 2014 WL 690161, at *1 (N.D. Cal. Feb. 21, 2014) (granting
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`motion to strike expert opinion and noting that “[a]ny invalidity theories not disclosed
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`pursuant to Local Rule 3-3 are barred . . . from presentation at trial (whether through
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`expert opinion testimony or otherwise)”). Courts in this district have rejected newly
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`disclosed theories that should have been raised in invalidity contentions. See, e.g.,
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`Nichia, 2022 WL 4613591, at *4-*5 (C.D. Cal. granting motion to strike expert report
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`as to obviousness theories not disclosed in contentions under Judge Guilford’s
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`S.P.R.); Kandypens, Inc. v. Puff Corp., 2020 WL 11629210, at *3 (C.D. Cal. Sept. 24,
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`2020) (striking untimely disclosed obviousness contentions under N.D. Cal. Patent
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`Rules); Labyrinth Optical, Techs. LLC v. Alcatel-Lucent USA Inc., 2015 WL
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`12681652, at *10 (C.D. Cal. Jan. 13, 2015) (applying N.D. Cal. Patent Local Rules to
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`exclude invalidity theories raised for the first time in summary judgment).
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`Moreover, a failure to timely disclose theories per patent rules betrays a lack of
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`diligence, thereby rendering unnecessary a showing of prejudice for the grant of relief.
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`See, e.g., Nichia, 2022 WL 4613591, at *5 (“Because Defendant has not sought to
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`amend for good cause and diligence, the Court need not reach prejudice.”); Finjan,
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`2016 WL 2988834, at *5, *9-*10 (striking untimely disclosed combinations and
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`references because the non-moving party “has not shown that it was diligent in
`7
`Case No. 2:20-cv-7872-GW-PVC
`MEMORANDUM OF LAW TO STRIKE MOTION TO STRIKE
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`disclosing the challenged combinations,” and “the moving party is not required to
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`show prejudice to prevail”) (collecting cases); Polaris PowerLED., 2020 WL
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`4258663, at *4 (“[L]ack of diligence and lack of substantial justification for its delay
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`provides a sufficient basis alone to exclude [expert]’s opinions[.]”).
`IV. ARGUMENT
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`The Court’s scheduling order required final invalidity contentions be served
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`September 8, 2023. Dkt. 201. The FIC was served September 8, 2023, but omitted
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`the newly disclosed theories at issue in this motion. Given the prior election of prior
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`art combinations and the lack of any effort to update explanations of obviousness and
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`patent ineligibility, BoA’s FIC betray a lack of diligence that approaches obfuscation
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`for which no justification exists for BoA’s delayed disclosure. Pursuant to Fed. R.
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`Civ. P. 16, these new theories should be stricken from Dr. Polish’s report.
`A. Dr. Polish’s Previously Undisclosed Opinions
`on Obviousness Should Be Stricken.
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`Where obviousness is alleged, S.P.R. 2.5.2. requires the invalidity contentions
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`to disclose “an explanation of why the prior art renders the asserted claim obvious,
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`including an identification of any combinations of prior art showing obviousness.”
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`S.P.R. 2.5.2. This clearly requires more than just a mere identification of prior art
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`combinations. Nowhere does the FIC recite any explanation, whether in claim chart
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`form or otherwise, as to why any elected prior art combinations render any asserted
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`claim obvious. Dr. Polish’s opinions purporting to provide that explanation for the
`first time in his opening report are untimely and should be stricken.6
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`Although BoA confirmed its election of 25 prior art combinations for the
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`patents-in-suit (Ex. B (FIC), at 45-47), it never explained (whether in the cover
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`pleading, charts, or elsewhere in the FIC) why the elected prior art renders the asserted
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`6 For the purpose of this Motion, NantWorks accepts the statements in the Polish
`Report as true, without addressing the fact that the Polish Report may in many cases
`still inadequately explain bases for the opinions that any asserted claim is rendered
`obvious by a given elected prior art combination.
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`8
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`MEMORANDUM OF LAW TO STRIKE MOTION TO STRIKE
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`Case 2:20-cv-07872-GW-PVC Document 302-1 Filed 03/12/24 Page 13 of 25 Page ID
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`claims obvious. For each of the elected combinations, the FIC (a) did not identify
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`which reference in a combination would be primary or secondary; (b) did not identify
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`any missing element in a first reference that is alternatively disclosed in a second
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`reference in the combination; and (c) did not identify which of the prior art references
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`within the combination is relied upon for particular claim elements. Nor did Bank of
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`America identify modifications to elected prior art that a person of ordinary skill in
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`the art would make, and why they would make them, to meet the claim limitations.
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`Instead, the FIC cross-references the same anticipation claim charts for each elected
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`reference, with a blanket statement that:
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`the prior art references in the Exhibits show the Asserted Claims to be
`anticipated. These references render the claims obvious, whether
`standing alone or when combined with knowledge of one of ordinary
`skill in the art and/or the nature of the problem to be solved. To the
`extent the references are found to lack particular elements of the
`Asserted Claims, those elements would have represented mere obvious
`modifications of the prior art.
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`Ex. B (FIC), at 47 (emphasis added); see also id. at 43 (noting generally combinations
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`using “one or more of the references listed and charted in the Exhibits and identified
`in Appendix A”).7 This catch-all phrasing is inadequate to disclose the obviousness
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`theories for any prior art, let alone the specific elected combinations here. See, e.g.,
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`Kandypens, 2020 WL 11629210, at *3 (finding the broad disclosure that “[t]o the
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`extent references a-j do not anticipate all claims of the [asserted] Patent, the references
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`a-w taken in combination render all claims of the [asserted] Patent obvious,” together
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`with an omnibus claim element chart, “falls well short of” the disclosure requirement);
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`Slot Speaker Techs., Inc. v. Apple, Inc., 2017 WL 235049, at *5 (N.D. Cal. Jan. 19,
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`2017) (“Vague or ‘catch-all phrases’ of obviousness are insufficient.”).
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`7 Appendix A is a list of over 500 “other references” attached to BoA’s Preliminary
`Invalidity Contentions. Most of these references were not charted. Ex. E.
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`9
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`Nor can BoA rely on its disclosed anticipation theories (contained in the claim
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`charts) as a proxy for obviousness. Nichia, 2022 WL 4613591, at *4-*5 (rejecting
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`suggestion that prior art charted as anticipatory references in invalidity contentions
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`could provide sufficient notice for later asserted obviousness combinations); cf.
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`Polaris PowerLED Techs., 2020 WL 4258663, at *4 (striking expert opinion that
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`transformed disclosed secondary obviousness reference into an anticipatory
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`reference). The claim charts attached to the FIC allege that each reference discloses
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`every claim limitation—and do not explain how the reference can be combined and
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`with what other references to allegedly render the claimed inventions obvious. In
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`Nichia, this Court analyzed the challenged expert opinions and found that each relied
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`on a primary reference that was originally disclosed as anticipatory. Nichia, 2022 WL
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`4613591, at *4-*5 (rejecting suggestion that anticipatory claim charts provide
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`sufficient notice for the newly disclosed obviousness combinations). In Nichia , this
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`Court noted:
`The S.P.R. require identification of prior art and explanations concerning
`how those references render an invention invalid for anticipation,
`obviousness, etc. S.P.R. 2.5.2 Analyzing a reference under one
`invalidity theory does not equate with a blanket disclosure that allows
`for later switching theories.
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`Id. at *5 (citation omitted).8 Here, Dr. Polish now advances obviousness arguments
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`based on the elected prior art combinations, at times suggesting that one or more claim
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`elements are missing and a secondary elected reference allegedly supplies those
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`elements for the purposes of making the elected combinations. But the FIC fails to
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`disclose any of the explanations (in any level of detail) of the elected prior art
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`combinations on which Dr. Polish now provides. At most, the FIC includes a number
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`of separate anticipation charts for references, without any supporting explanation of
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`8 See also Asetek Danmark A/S v. CoolIT Sys. Inc., 2022 WL 21306657, at *22
`(N.D. Cal. Oct. 4, 2022) (expert’s “obviousness theory that [the prior art] could have
`been modified to form [a relevant feature] constitutes an impermissible new theory”
`where even though the prior art was disclosed, the specific modification was not).
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`10
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`the elected obviousness combinations. Even with the claim charts in hand, the FIC
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`leaves it up to the reader to guess why the combination renders the claim obvious.
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`BoA’s remaining disclosure does more to obfuscate than to inform. The FIC
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`included a 16-page narrative in Section IV.B purportedly disclosing “Explanations of
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`Obviousness under S.P.R. 2.5.2.” Ex. B (FIC), at 29-45. Although there is a
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`recitation, identical to the January 2022 Final Election of Prior Art, of the elected
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`prior art combinations for each patent-in-suit, the FIC fails to mention these elected
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`obviousness combinations elsewhere in the narrative, let alone explain the
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`obviousness theories for each combination recounted by Dr. Polish. The obviousness
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`narrative—untethered to any particular patent, claim, or claim limitation—is
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`crammed with stand-alone prior art summaries and generic statements essentially
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`suggesting that a POSITA would have certain motivation to combine all of the prior
`art with each other.9 Although the narrative recites only three specific groups of prior
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`art combinations on page 33 (Ogasawara/Rhoads/Sizer/Harris/ or Wilz with
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`McQueen/Bolle/
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`or Mault),
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`on
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`page
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`40
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`(MediaBridge
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`with
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`QBIC/VeggieVision/Mault), and on page 41 (MediaBridge with Teampad 500), it
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`notably fails to recite the elected prior art combinations, let alone provide the requisite
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`9 See, e.g., Ex. B (FIC), at 30 (“[I]t was common and known to substitute one image
`processing technique in portable computing devices for another image processing
`technique to obtain predictable results and improve the functionality of portab