`
`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
`
`
`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
`
`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
`
`Attorneys for Defendants
`BANK OF AMERICA CORPORATION
`and BANK OF AMERICA, N.A.
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 1 of 16 Page ID #:77633
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`UNITED STATES DISTRICT COURT
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`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`Case No. 2:20-cv-07872-GW-PVC
`
`DEFENDANTS’ SUPPLEMENTAL
`BRIEF IN RESPONSE TO
`PLAINTIFFS’ SUPPLEMENTAL
`BRIEF IN SUPPORT OF
`PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING
`EXPERT REPORT OF DR.
`NATHANIEL POLISH REGARDING
`OBVIOUSNESS COMBINATIONS
`MOTION TO STRIKE EXPERT
`OPINIONS RELATED TO
`COMBINATIONS
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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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`AMERICA
`OF
`BANK
`a
`Delaware
`CORPORATION,
`BANK
`OF
`corporation,
`and
`AMERICA, N.A., a national banking
`association,
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`Defendants.
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`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
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`

`

`TABLE OF CONTENTS
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`Page
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`BACKGROUND .................................................................................................. 1
`ARGUMENT ........................................................................................................ 5
`A. Mault-Sizer-QBIC ...................................................................................... 5
`B.
`Sizer-QBIC-Krouse .................................................................................... 8
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`II.
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 2 of 16 Page ID #:77634
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`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`

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`TABLE OF AUTHORITIES
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`Cases
`OKYN Holdings, Inc. v. Hori (U.S.A.), Inc.,
`2022 WL 2189527 (C.D. Cal. Apr. 5, 2022) ........................................................ 2
`Virtek Vision Int’l ULC v. Assembly Guidance Sys.,
`97 F.4th 882 (Fed. Cir. 2024) ............................................................................. 10
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 3 of 16 Page ID #:77635
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`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`

`

`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 4 of 16 Page ID #:77636
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`Plaintiffs argue that Dr. Polish’s alleged new § 103 theories “deprived NantWorks
`of a fair opportunity to investigate these new theories in discovery.” Dkt. 304-1 at 19. Yet,
`Plaintiffs never complained about them until after the close of fact discovery. In fact,
`Plaintiffs argued that §103 discovery was prematurely “request[ing] information that will
`be provided in expert discovery,” and “NantWorks will provide expert report(s)
`containing information responsive or relevant to this Interrogatory.” Dkt. 294-8 at 46.
`Plaintiffs should not be allowed to change course and use the ICs as a sword.
`Regardless, Defendants’ ICs, like for Rhoads-QBIC, reasonably explained the
`rationales to combine Mault-Sizer-QBIC and Sizer-QBIC-Krouse as discussed in the
`Polish Report. As the Court noted, “[t]he discussion of each individual prior art reference
`in detail and the overarching theories of combining image processing techniques with
`portable computing devices, taken together, establishes the basis under which Dr. Polish
`opines,” e.g., the three-reference combinations of Mault-Sizer-QBIC and Sizer-QBIC-
`Krouse. Dkt. 502 at 9 (emphasis added). For Mault-Sizer-QBIC, the ICs disclose that (i)
`QBIC’s image processing techniques (“IPTs”) would enhance portable computer devices
`(whether it is one device, like Rhoads, or multiple devices, like Mault and Sizer), and (ii)
`using different IPTs, whether in QBIC alone or across Mault, Sizer, and QBIC, would
`improve the functionality of the combination. Similarly, Sizer-QBIC-Krouse is analogous
`to Rhoads-QBIC because the ICs disclose that different IPTs, whether in QBIC alone or in
`Krouse and QBIC, would improve a portable device like Sizer. Thus, the Court should
`find that the ICs provided reasonable notice of the rationales for the combinations of Mault-
`Sizer-QBIC and Sizer-QBIC-Krouse discussed in the Polish Report.1
`I.
`BACKGROUND
`The ICs thoroughly explain the bases for Defendants’ invalidity theories, exceeding
`“the degree of specificity” required for contentions enough “to provide reasonable notice.”
`
`1 While Defendants maintain that all combinations, including QBIC-Krouse-Harris and
`those involving Cooltown, were adequately disclosed in the ICs, Defendants focus on
`
`Mault-Sizer-QBIC and Sizer-QBIC-Krouse to narrow the issues for the Court.
`-1-
`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 5 of 16 Page ID #:77637
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`Dkt. 298-5 at, e.g., pp. 120, 144, 176, 234, 255, 272, 288, 292, 1403, 1424, 1435, 1447,
`1502, 1503, 1522, 1555, 1561, 1569, 1576, 1588.
`Defendants explained in the ICs why the prior art renders the Asserted Claims
`obvious. The Court blessed “grouping of prior art references, particularly when a party
`advances the same theories of obviousness.” Dkt. 502 at 9 (citations omitted). And the ICs
`explained the obviousness theories that applied to all elected obviousness combinations,
`which specifically showed how Sizer, Mault, Krouse, and QBIC each fit within those
`explanations. Dkt. 296-2 at 29–31, 33–40. Specifically, the ICs provide rationales and
`
`expectation of success that applied to each combination based on combining different IPTs
`-2-
`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`
`OKYN Holdings, Inc. v. Hori (U.S.A.), Inc., 2022 WL 2189527, at *2 (C.D. Cal. Apr. 5,
`2022). Like the Court’s tentative rulings for the Rhoads-QBIC combination, Dr. Polish’s
`opinion as to the Mault-Sizer-QBIC and Sizer-QBIC-Krouse combinations are reasonably
`ascertained from the ICs. Pursuant to S.P.R. 2.5.2 and the Final Election of Asserted Prior
`Art, the IC’s provided (i) a table that identifies Mault-Sizer-QBIC and Sizer-QBIC-Krouse
`as combinations that invalidate the ’004 patent and (ii) a table that identifies Sizer-QBIC-
`Krouse as a combination that invalidates the ’278 patent. Dkt. 502 at 7-8.
`
`
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`Dkt. 296-2 at 46-47. The ICs included a chart for each reference showing where each
`reference discloses the limitations and, for each limitation, included reference to the cover
`pleading to explain why the elected combinations, including Mault-Sizer-QBIC and Sizer-
`QBIC-Krouse, invalidate the Asserted Claims of the ’004 and ’278 patents:
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`Dkt. 296-2 at 29-30 (annotated). The ICs also explained that Mault and Sizer are each
`portable computing devices that use different IPTs – Sizer captures transaction data from
`symbols on an object, and Mault uses various algorithms for image and pattern recognition:
`
`
`Id. at 31 (annotated). The ICs then explained that it would have been obvious to improve
`those references that use portable computing devices, such as Sizer, with references that
`use IPTs, such as Mault, to recognize a variety of objects:
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`to identify objects and retrieve information about the object, and using those different IPTs
`with portable computing devices to improve the functionality of such devices, including
`describing distributing IPTs between portable devices and backend systems:
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 6 of 16 Page ID #:77638
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`-3-
`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
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`

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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 7 of 16 Page ID #:77639
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`Id. at 34–35 (annotated). The ICs then explained the rationales and expectation of success
`for combining multiple portable computing devices “described above,” such as Sizer and
`Mault, with different IPTs “described above,” such as those referenced in Sizer, Mault,
`Krouse, and QBIC, as well as using/substituting those different IPTs:
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`Id. at 36–37 (annotated). The ICs go on to further describe QBIC in the context of
`companies developing IPTs before the time of the invention:
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`-4-
`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`Id. at 33 (annotated). The ICs then described references that used IPTs in the financial
`industry, including Krouse and QBIC.
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`Id. at 38–39 (annotated). The ICs explained the rationales and expectation of success for
`combining different IPTs and combining portable computing devices with IPTs:
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 8 of 16 Page ID #:77640
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`Id. at 39–40 (annotated). Therefore, the ICs disclose that (i) QBIC’s IPTs would enhance
`portable devices (whether it is one device, like Rhoads, or multiple devices, like Mault and
`Sizer); (ii) using different IPTs (whether in QBIC alone or across Mault, Sizer, and QBIC)
`would improve the functionality of the combination; and (iii) using different IPTs (whether
`in QBIC alone or across Krouse and QBIC) would improve a portable device like Sizer.
`II. ARGUMENT
`A. Mault-Sizer-QBIC
`The ICs disclose (i) combining the portable devices of Sizer and Mault with QBIC’s
`IPTs; and (ii) combining the IPTs of Mault, Sizer, and QBIC. The ICs refer to using IPTs
`(plural), including “different” and “each of the” IPTs, such that the different IPTs in each
`of Mault, Sizer, and QBIC would be used in the combined system. Similarly, the ICs
`describe using the “portable computer devices” (plural) with the IPTs, such that Sizer and
`Mault would be combined with QBIC’s IPTs.
`First, reproduced below are disclosures from the ICs (left) paired with disclosures
`in the Polish Report (right) that make clear that the ICs disclosed the explanations for the
`Mault-Sizer-QBIC combination that Dr. Polish opined upon.2 The ICs disclose Mault as
`“a portable computing device” that uses “[i]mage processing, image recognition and
`pattern recognition algorithms.” Dkt. 296-2 at 31. Sizer was disclosed as “a capture device
`that scans and captures transaction data from marks contained on an object.” Id. The Polish
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`2 The disclosures are annotated to highlight Mault and Sizer in green (as portable devices),
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`QBIC in blue (as a system that could integrate with portable devices), and IPTs in yellow.
`-5-
`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
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`

`

`Report has nearly identical descriptions of Mault and Sizer. Dkt. 296-3 ¶¶ 258, 268.
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`The ICs disclose “[i]t would have been obvious to improve prior art systems or
`devices like . . . Sizer . . . with prior art like . . . Mault, which use image processing
`techniques,” to “recognize a variety of objects.” Id. at 33 (emphasis added). The ICs then
`explain that “[i]n the financial industry, there are several examples of using known image
`processing techniques for use in check processing.” Id. at 34. The ICs explicitly call-out
`QBIC as an exemplary image processing system suitable for financial institutions. Id. at
`35. Similarly, the Polish Report describes how a POSITA would have been motivated to
`combine Sizer and Mault with QBIC because QBIC’s IPTs supplement processing image
`features and enhances Mault and Sizer.
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 9 of 16 Page ID #:77641
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`The ICs confirm, like ¶¶ 561-562 in the Polish Report, that a “POSITA would have
`known to use the portable computer devices described above,” including Mault and Sizer,
`with “each of the different image processing techniques discussed above,” (Dkt. 296-2 at
`36) including the IPTs included in Mault, Sizer, and QBIC. The ICs, which disclose that
`“the portable computer devices [Sizer and Mault] would be improved through the use of
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`-6-
`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`different image processing and matching techniques,” (id.) support Dr. Polish’s opinion
`that “QBIC System’s image processing and matching techniques would predictably
`enhance Sizer and Mault’s system” Polish Rpt. ¶ 561 (emphasis added). Dr. Polish also
`states that a POSITA would have been motivated to combine Sizer and Mault with QBIC
`because QBIC’s IPTs supplement how to process image features and would enhance Mault
`and Sizer. Id.
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 10 of 16 Page ID
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`Like the Rhoads-QBIC combination, where “the FIC does provide an explanation
`for the motivation to combine prior art like Rhoads with image processing techniques,
`which would include the QBIC system” (Dkt. 502 at 9), the ICs specifically contemplate
`combining Sizer with Mault, as well as their portable devices with the different IPTs
`described in each and in QBIC.
`Plaintiffs aver that the ICs “indicate[] that Mault and the ‘QBIC System’ [are]
`alternatives to each other for use in combinations.” Dkt. 558 at 5. But the ICs never
`describe them as “alternatives;” they state that a POSITA would have been motivated to
`combine “portable computer devices” with “each of the different image processing
`techniques discussed above,” and that those devices would be improved through “the use
`of different image processing and matching techniques.” Dkt. 296-2 at 36. The use of
`“portable computer devices” and “different techniques” explicitly contemplates the use of
`multiple devices and multiple IPTs. Indeed, the ICs describe QBIC itself as using multiple
`IPTs, such as “extracting features (such as color, shape, and texture) for both input and
`stored images . . ., querying the database using extracted features . . . matching extracted
`features …, and returning information associated with the image to the user.” Id. at 39.
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`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 11 of 16 Page ID
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`Plaintiffs complain that “there is no discussion in … the FIC, of a three-reference
`combination.” Dkt. 558 at 2. First, Plaintiffs’ complaints are rich given that they argued
`during discovery that Section 103 combinations were more appropriate for expert
`discovery. Dkt. 294-8 at 46. Second, the ICs disclosed the three-reference combinations
`of Mault-Sizer-QBIC and Sizer-QBIC-Krouse for both the ’004 patent in Table 11 and the
`’278 patent in Table 12. See supra, §II. As the Court noted, those three-reference
`combinations in the Polish Report could be “reasonably ascertained” through those tables,
`with the individual descriptions of Mault, Sizer, Krouse, and QBIC, and the theories of
`combining multiple portable devices and multiple IPTs. Dkt. 502 at 7-8.
`B.
`Sizer-QBIC-Krouse
`The ICs disclose that combining different IPTs, whether in QBIC alone or in Krouse
`and QBIC, would improve a portable device like Sizer. Plaintiffs wrongly assert that “the
`Opposition is [sic] first time that this combination [(i.e., Sizer-QBIC-Krouse)] is … even
`disclosed at all” (Dkt. 558-1 at 7)— IC Tables 11 and 12 explicitly list the Sizer-QBIC-
`Krouse combination. See supra §II. Plaintiffs knew of Defendants’ intent to assert Sizer-
`Krouse-QBIC as an obviousness combination against the ’004 patent. Id. Further, the ICs
`clearly disclose combining Sizer’s portable computing/image capture device with Krouse’s
`and QBIC’s IPTs. First, Plaintiffs complain that the “Sizer, Krouse, and ‘QBIC System’
`combination” as disclosed in the FICs consists only of “disparate narratives discussing
`Sizer . . . Krouse, . . . and the ‘QBIC System’ individually and then generic theories of
`obviousness.” Dkt. 558 at 7. Not so. As shown above and below, the ICs disclose Krouse
`and QBIC as examples of IPTs in the financial industry. Specifically, the ICs say Krouse
`performs traditional check imaging techniques, and QBIC performs other IPTs (such as
`feature extraction and database matching) as described above. Also as described above,
`the ICs describe combining portable computer devices, such as Sizer, with the IPTs
`described in references like QBIC and Krouse. The disclosures in the annotated images
`below show portable devices (like Sizer) in green, Krouse in purple, QBIC in blue, and
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`-8-
`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`IPTs in yellow.
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 12 of 16 Page ID
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`The ICs disclose Krouse as a system “for generating data from an image of a check
`with an optical scanner for scanning a check for a financial transaction,” in which
`“[r]ecognition characteristics are generated from the scanned image and compared to
`respective sets of reference recognition characteristics.” Dkt. 296-2 at 34. The Polish
`Report, at ¶ 667, has a nearly identical description of Krouse.
`The ICs disclose that a “POSITA would have known to use the portable computer
`devices described above,” including Sizer, “with each of the different image processing
`techniques discussed above,” including the IPTs discussed in Krouse and QBIC. The ICs,
`which disclose that “the portable computer devices [such as Sizer] would be improved
`through the use of different image processing and matching techniques,” (Dkt. 296-2 at
`36), support Dr. Polish’s opinion that a “POSITA would have been motivated to combine
`Sizer and Krouse with QBIC System” and that “QBIC System’s image processing and
`matching techniques would predictably enhance Sizer and Krouse’s system[s] with a
`reasonable expectation of success.” Polish Rpt. ¶ 666. Those same different IPTs and
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`matching techniques discussed in the ICs support Dr. Polish’s opinion that QBIC System
`-9-
`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 13 of 16 Page ID
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`“recognize[s] the benefits of querying images based on visual features which a POSITA
`would recognize as a natural enhancement for Krouse’s teaching of optically scanning
`images on a portion of a document representing information related to a financial
`transaction.” Id. at 667. Furthermore, Dr. Polish’s opinion that “QBIC System’s storage
`and return of information to the user … expand[s] the capabilities of Krouse and Sizer,”
`which is a theory disclosed by the ICs to use different IPTs to “retrieve information about
`the object.” Id. at 668.
`Plaintiffs argue that “[g]iven that Krouse is not a mobile device, it cannot be
`analogous to Rhoads,” but that misreads the Court’s ruling, which centered on whether
`“[t]he discussion of each individual prior art reference in detail and the overarching theories
`of combining image processing techniques with portable computing devices, taken
`together, establishes the basis under which Dr. Polish opines.” Dkt. 502 at 9. Here, the
`Rhoads disclosures are like those in Sizer. And Krouse and QBIC, which are disclosed as
`different IPTs in the financial industry, bring different IPTs to the combined system. A
`similar discussion regarding the motivation to combine is present regarding both
`combinations. Thus, the ICs provided adequate disclosure related to Sizer-QBIC-Krouse.
`Plaintiffs’ reliance on Virtek is inapposite. In Virtek Vision Int’l ULC v. Assembly
`Guidance Sys., the defendant offered no motivation to combine, and its expert “stated
`eleven times that he did not provide any reason to combine the references in his expert
`declaration.” 97 F.4th 882, 887 (Fed. Cir. 2024). Here, the ICs explicitly disclose
`motivation to combine by stating, for example, “[a] POSITA would have known to use the
`portable computer devices described above [e.g., Sizer] with each of the different [IPTs]
`discussed above. [e.g., QBIC, Krouse].” Dkt. 296-2 at 36; see also id. at 33 (“It would
`have been obvious to improve prior art systems or devices like . . . Sizer . . . with prior art
`. . ., which use [IPTs]”), 34-35 (“In the financial industry, there are several examples of
`using known [IPTs] for use in check processing,” listing Krouse and QBIC).
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`-10-
`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`

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`Dated: June 18, 2024
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`WINSTON & STRAWN LLP
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`By: /s/ Dustin J. Edwards
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`George C. Lombardi
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`E. Danielle T. Williams
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`Dustin J. Edwards
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`Attorneys for Defendants
`BANK OF AMERICA CORPORATION and
`BANK OF AMERICA, N.A.
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 14 of 16 Page ID
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`-11-
`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`CERTIFICATE OF SERVICE
`I hereby certify that all counsel of record in the Attached Service List who have
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`consented to electronic service are being served with a copy of this document via the
`Court’s CM/ECF system per Local Rule CV-5(a)(3) on June 18, 2024.
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`By: /s/ Joe Netikosol
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`Joe Netikosol
`/s/
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`CERTIFICATE OF COMPLIANCE
`I hereby certify that this brief is under 10 pages, which complies with the
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`agreement set out by the parties, and is less than 7000 words, which complies with L.R.
`6-11.
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 15 of 16 Page ID
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`-12-
`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
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`Case 2:20-cv-07872-GW-PVC Document 574 Filed 06/18/24 Page 16 of 16 Page ID
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`Kevin P. B. Johnson
`Todd M. Briggs
`Quinn Emanuel Urquhart and Sullivan
`LLP
`555 Twin Dolphin Drive 5th Floor
`Redwood Shores, CA 94065
`650-801-5000
`Fax: 650-801-5100
`Email:
`kevinjohnson@quinnemanuel.com
`Email: toddbriggs@quinnemanuel.com
`Eric Hui-chieh Huang
`Quinn Emanuel Urquhart and Sullivan
`LLP
`51 Madison Avenue 22nd Floor
`New York, NY 10010
`212-849-7143
`Fax: 212-849-7100
`Email: erichuang@quinnemanuel.com
`James R Asperger
`Quinn Emanuel Urquhart and Sullivan
`LLP
`865 South Figueroa Street 10th Floor
`Los Angeles, CA 90017-2543
`213-443-3000
`Fax: 213-443-3100
`Email: jimasperger@quinnemanuel.com
`Kate Cassidy
`LTL ATTORNEYS LLP
`152 W 57th Street, 19th Floor
`New York, New York 10019
`Telephone: (332) 244-7015 ext. 215
`kate.cassidy@ltlattorneys.com
`Steven Hansen
`LTL ATTORNEYS LLP
`152 W 57th Street, 19th Floor
`New York, New York 10019
`Telephone: (332) 244-7015 ext. 215
`Steven.Hansen@ltlattorneys.com
`
`
`
`
`SERVICE LIST
`United States District Court for the Central District of California
`Nantworks, LLC, et al. v. Bank of America Corporation, et al.
`Case No. 2:20-cv-07872-GW-PVC
`
`Attorneys for Plaintiffs
`Nantworks, LLC and Nant Holdings IP,
`LLC
`
`Attorneys for Plaintiffs
`Nantworks, LLC and Nant Holdings IP,
`LLC
`
`Attorneys for Plaintiffs
`Nantworks, LLC and Nant Holdings IP,
`LLC
`
`Attorneys for Plaintiffs
`Nantworks, LLC and Nant Holdings IP,
`LLC
`
`Attorneys for Plaintiffs
`Nantworks, LLC and Nant Holdings IP,
`LLC
`
`DEFENDANTS’ SUPPLEMENTAL BRIEF IN RESPONSE TO PLAINTIFFS’ SUPPLEMENTAL BRIEF IN SUPPORT OF PLAINTIFFS’ MOTION TO STRIKE
`PORTIONS OF THE OPENING EXPERT REPORT OF DR. NATHANIEL POLISH REGARDING OBVIOUSNESS COMBINATIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
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`