`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Bank of America, N.A.
`Petitioner,
`
`v.
`
`Nant Holdings IP, LLC
`Patent Owner.
`
`
`
`Case No. IPR2021-01080
`U.S. Patent No. 8,463,030
`
`
`
`Motion to Correct Clerical or Typographical
`
`Errors Under 37 C.F.R. § 42.104(c) and to Submit a Corrected Petition
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`Table of Contents ...................................................................................................... ii
`I.
`Introduction ........................................................................................................ 1
`II. Legal Background .............................................................................................. 1
`III. Factual Background ............................................................................................ 2
`IV. Argument ............................................................................................................ 6
`V. Conclusion .......................................................................................................... 7
`
`
`
`ii
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`

`

`
`I.
`
`Introduction
`Petitioner moves the Board under 37 C.F.R. § 42.104(c) to correct clerical or
`
`typographical errors in its Petition requesting inter partes review of U.S. Patent No.
`
`8,463,030, Case No. IPR2021-001080. To a reader of the Petition, it would be self-
`
`evident that the errors were inadvertent. No new prior art or new substance is being
`
`added. And there are no material changes to the analysis within the Petition. Addi-
`
`tionally, since Petitioner’s proposed correction will not change the substance of the
`
`analysis within the Petition, the Patent Owner is not required to do any additional
`
`analysis on the merits, or otherwise, in its preliminary response once these errors are
`
`corrected. Accordingly, Petitioner moves this Board for leave to file a corrected Pe-
`
`tition with the proposed corrections noted below.
`
`II. Legal Background
` This Board’s rules allow for the correction of clerical or typographical mis-
`
`takes without compromising a Petition’s filing date. 37 C.F.R. § 42.104(c) provides:
`
`A motion may be filed that seeks to correct a clerical or
`typographical mistake in the petition. The grant of such a
`motion does not change the filing date of the petition.
`
`Section 42.104(c) is remedial in nature and therefore is entitled to a liberal interpre-
`
`tation. See ABB Inc. v. ROY-G-BIV Corp., IPR2013-00063, Paper No. 21, 7.
`
`“[W]hen determining whether to grant a motion to correct a petition, the Board will
`
`
`
`

`

`consider any substantial substantive efl’ect,
`
`including any effect on the patent
`
`owner’s ability to file a preliminary response.” 77 Fed. Reg. 48,680, 48,699 (Aug.
`
`14, 2012) (emphasis added); see also Arthrex v. Bonutti Skeletal Innovations, LLC,
`
`IPR2013-00632, Paper No. 22, 5. The analysis hinges on the “distinction between
`
`correcting an inadvertent error and the wholesale substitution ofnew analysis for the
`
`analysis provided in the original petition.” Amkor Tech., Inc. v. Tessera, Inc.,
`
`IPR2013-00242, Paper 32, 5 (emphasis added).
`
`III. Factual Background
`
`On June 16, 2021, Petitioner filed a Petition requesting inter partes review of
`
`US. Patent No. 8,463,030, which was accorded a filing date by the Board on June
`
`21, 2021. Subsequent to filing the Petition, Petitioner noticed typographical errors
`
`in the Petition and promptly contacted the Board administrative staff to inquire as to
`
`the best route for correcting the errors and was advised to file the instant motion. On
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`August 3, 2021, Petitioner’s request for authorization to file an unopposed Motion
`
`to Correct Clerical or Typographical Errors was granted by the Board.
`
`Petitioner now moves the Board for leave to file a corrected Petition seeking
`
`to make the corrections noted below, in red.
`
`m—
`Ex. 1015: Defendants Bank of
`Ex. 1015: Defendants Bank of
`
`First Amended Com . laint, Af— First Amended Com 0 laint, Af— ix
`
`America Corporation and Bank America Corporation and Bank
`of America, N.A.’s Answer to
`of America, N.A.’s Answer to
`
`

`

`2
`
`ix
`
`3
`
`6
`
`4
`
`9
`
`5
`
`28
`
`firmative Defenses, and Coun-
`terclaims, NantWorks, LLC
`and Nant Holdings IP, LLC v.
`Bank of America Corporation
`and Bank of America, N.A.,
`2:20-CV-7872-GW-PVC (C.D.
`Cal. Nov. 11, 2020), ECF No.
`99
`Ex. 1016: Civil Minutes
`(Scheduling Order), Nant-
`Works, LLC and Nant Hold-
`ings IP, LLC v. Bank of Amer-
`ica Corporation and Bank of
`America, N.A., 2:20-CV-7872-
`GW-PVC (C.D. Cal. Nov. 11,
`2020), ECF No. 91
`Bolle addresses this issue by
`segmenting an object in an im-
`age from the background, and
`then identifying the object by
`matching the segmented object
`to images of objects stored in a
`database. Id., 4:27–30, 39–44,
`5:47–57, 6:1–6, 8:12–38,
`16:40–45.
`To acquire data related to the
`object, a user “aligns the sensor
`of the data capture device 14
`with the object 16 of interest.”
`Id., 5:25–26.
`Indeed, Ogasawara contem-
`plates multiple software pro-
`grams running on its system
`(e.g., Ex.1005, 18:15–22,
`23:12–16), including advanced
`pattern recognition software, so
`Bolle’s image segmentation
`and matching algorithms would
`reasonably be expected to run
`
`firmative Defenses, and Coun-
`terclaims, NantWorks, LLC and
`Nant Holdings IP, LLC v. Bank
`of America Corporation and
`Bank of America, N.A., 2:20-
`CV-7872-GW-PVC (C.D. Cal.
`Mar. 26, 2021), ECF No. 99
`
`Ex. 1016: Civil Minutes (Sched-
`uling Order), NantWorks, LLC
`and Nant Holdings IP, LLC v.
`Bank of America Corporation
`and Bank of America, N.A.,
`2:20-CV-7872-GW-PVC (C.D.
`Cal. Feb. 25, 2021), ECF No. 91
`
`Bolle addresses this issue by
`segmenting an object in an im-
`age from the background, and
`then identifying the object by
`matching the segmented object
`to images of objects stored in a
`database. Ex.1006, 4:27–30,
`39–44, 5:47–57, 6:1–6, 8:12–
`38, 16:40–45.
`To acquire data related to the
`object, a user “aligns the sensor
`of the image capture device 14
`with the object 16 of interest.”
`Id., 5:25–26.
`Indeed, Ogasawara contem-
`plates multiple software pro-
`grams running on its system
`(e.g., Ex.1005, 18:15–22,
`23:12–16), including advanced
`pattern recognition software, so
`Bolle’s image segmentation and
`matching algorithms would rea-
`sonably be expected to run on
`
`
`
`3
`
`

`

`on Ogasawara’s wireless vide-
`ophone or server. Id., ¶115.
`Petitioner’s proposed construc-
`tion comes directly from the
`specification that requires “[i]f
`the server 20 is physically sep-
`arate from the device 14, then
`user acquired images are trans-
`mitted from the device 14 to
`the Image Processor/Server 20
`using a conventional digital
`network or wireless network
`means.” Ex.1001, 2:40–43
`Under Petitioner’s construc-
`tion, the server can be wire-
`lessly connected to the net-
`work-enabled device—i.e.,
`physically separated. Id.,
`¶¶148–49; Ex.1001, 4:66–5:25
`…
`While Ogasawara discloses
`that the server can be in-store,
`the server can also be remote or
`outside a local area network,
`where the remote server is con-
`nected to a commercial tele-
`phone network that facilitates
`connection between the remote
`server and wireless telephone
`via a cellular telephone net-
`work. Id., 4:66–5:25, 5:60–65,
`15:55–62.
`Ogasawara describes “ad-
`vanced recognition software”
`that can be on “a server” which
`identifies the item after the im-
`age is “transmitted to [the]
`server.” Id., 23:12–27.
`For example, the invalidity
`contentions in the district court
`4
`
`Ogasawara’s wireless video-
`phone or server. Ex.1003, ¶115.
`Petitioner’s proposed construc-
`tion comes directly from the
`specification that requires “[i]f
`the server 20 is physically sepa-
`rate from the device 14, then
`user acquired images are trans-
`mitted from the device 14 to the
`Image Processor/Server 20 us-
`ing a conventional digital net-
`work or wireless network
`means.” Ex.1001, 5:40–43
`Under Petitioner’s construction,
`the server can be wirelessly
`connected to the network-ena-
`bled device—i.e., physically
`separated. Id., ¶¶148–49;
`Ex.1005, 4:66–5:25…
`
`While Ogasawara discloses that
`the server can be in-store, the
`server can also be remote or
`outside a local area network,
`where the remote server is con-
`nected to a commercial tele-
`phone network that facilitates
`connection between the remote
`server and wireless telephone
`via a cellular telephone net-
`work. Ex.1005, 4:66–5:25,
`5:60–65, 15:55–62.
`Ogasawara describes “advanced
`recognition software” that can
`be on “a server” which identi-
`fies the item after the image is
`“transmitted to [the] server.”
`Ex.1005, 23:12–27.
`For example, the invalidity con-
`tentions in the district court rely
`
`6
`
`44
`
`7
`
`45
`
`8
`
`46
`
`9
`
`48
`
`10 61
`
`
`
`

`

`rely on many different prior art
`systems and methods that were
`“known or used” or “in public
`use or on sale” that are not eli-
`gible for IPR. Ex.1012.
`This Petition is being filed
`about two months after invalid-
`ity contentions were served,
`about one month after Peti-
`tioner elected its 48 asserted
`claims, and about three months
`before the claim construction
`hearing. Exs.1012, 1016, 1018.
`Initially, Patent Owner asserted
`infringement of eight patents
`with 264 claims and all 38
`claims of the ’030 patent.
`
`On March 4, 2021, Patent
`Owner narrowed its infringe-
`ment allegations to 48 claims
`and 12 asserted claims in the
`’030 patent. Ex.1010.
`Similarly, Petitioner narrowed
`its invalidity contentions to 48
`prior art references and 15 as-
`serted references per patent. Id.
`
`The considerations of the six
`Fintiv factor thus weigh in fa-
`vor of institution.
`
`on many different prior art sys-
`tems and methods that were
`“known or used” or “in public
`use or on sale” that are not eligi-
`ble for IPR. Exs.1012, 1018.
`This Petition is being filed
`about two months after invalid-
`ity contentions were served,
`about one month after Patent
`Owner elected its 48 asserted
`claims, and about three months
`before the claim construction
`hearing. Exs.1012, 1016-1018.
`Initially, Patent Owner asserted
`infringement of eight patents
`with 264 claims and all 38
`claims of the ’030 patent.
`Exs.1013-14.
`On May 11, 2021, Patent Owner
`narrowed its infringement alle-
`gations to 48 claims and 12 as-
`serted claims in the ’030 patent.
`Ex.1017.
`Similarly, Petitioner narrowed
`its invalidity contentions to 48
`prior art references and 15 as-
`serted references per patent.
`Ex.1018.
`The considerations of the sixth
`Fintiv factor thus weigh in favor
`of institution.
`
`11 62
`
`12 65
`
`13 65
`
`14 65
`
`15 65
`
`The errors are based on incorrect dates of certain docket entries or procedural
`
`events in the district court proceeding, incomplete or incorrect supporting citations,
`
`and minor typographical errors. The proposed changes correct the errors for clarity.
`
`
`
`5
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`

`

`First, a number of errors pertain to the procedural timeline of the district court
`
`proceeding, which Petitioner believes are unlikely to be disputed. For example, Nos.
`
`1, 2, and 13 address the wrong dates for docket entries, ECF Nos. 99 and 91, as well
`
`as the date on which Patent Owner narrowed its asserted claims in the district court
`
`proceeding. For No. 11, the Petition incorrectly stated that the Petitioner—as op-
`
`posed to Patent Owner—elected its asserted claims. Similarly, for No. 12, the Peti-
`
`tion omitted the supporting citations for the original and amended complaints.
`
`Second, for Nos. 3–11 and 14, Petitioner inadvertently provided incorrect or
`
`incomplete citations, but the surrounding context makes clear what the citations
`
`should have been. For example, No. 3 pertains to a statement that a prior art refer-
`
`ence, Bolle (Exhibit 1006), addresses a certain issue, but the accompanying cite is
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`“Id.,” which points to the preceding citation to another reference, Ogasawara. In
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`other similar instances (e.g., Nos. 6 and 9), the cited language is provided, but the
`
`citation is incorrect. Similarly, for No. 4, Petitioner inadvertently included “data”
`
`instead of “image” in the language directly quoted from the ’030 patent (Ex. 1001).
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`Lastly, No. 15 contains a misspelled word, which Petitioner believes does not
`
`affect the substance of the Petition.
`
`IV. Argument
`Petitioner may file a correction under 37 C.F.R. § 42.104(c) because the errors
`
`at issue are clerical or typographical. As discussed above, incorrect ECF dates, a
`
`
`
`6
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`

`

`misspelled word, and incorrect or incomplete citations were inadvertently provided.
`
`As also discussed above, Petitioner believes that the errors at issue are either based
`
`on undisputed procedural events and/or were clear given the surrounding contexts.
`
`The proposed corrections of these clerical or typographical errors add no new
`
`prior art or new substance to the Petition. Further, these corrections increase the
`
`word count only by two words, for a total of 14,000 words determined using the
`
`word count provided by Microsoft Word (excluding the parts of the petition ex-
`
`empted by 37 C.F.R. § 42.24(a)(1)), and thus the corrected Petition complies with
`
`the word count limits set forth in 37 C.F.R. § 42.24(a)(1)(i). In sum, there is no
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`material change to the Petition. Most importantly, correction of the errors does not
`
`prejudice Patent Owner’s ability to submit a preliminary response. Petitioner has
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`conferred with Patent Owner, and Patent Owner does not oppose this Motion. Ac-
`
`cordingly, the Patent Owner will not be prejudiced by correction of these errors.
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`V. Conclusion
`For the reasons discussed above, Petitioner respectfully requests that the
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`Board grant leave and allow Petitioner to submit a corrected Petition.
`
`
`
`Dated: August 3, 2021
`
`Respectfully submitted,
`
`
`
`7
`
`

`

`/s/ Dustin J. Edwards
`Dustin J. Edwards
`Winston & Strawn LLP
`800 Capitol St., Suite 2400
`Houston, Texas 77002-2925
`dedwards@winston.com
`T: 713.651.2600, F: 713.651.2700
`USPTO Reg. No. 57,649
`Lead Counsel for Petitioner
`Bank of America Bank, N.A.
`
`Michael A. Tomasulo
`Winston & Strawn LLP
`333 South Grand Avenue, 38th Floor
`Los Angeles, CA 90071-1543
`mtomasulo@winston.com
`T: 213.615.1700, F: 213.615.1750
`USPTO Reg. No. 43,957
`Back-up Counsel
`for Petitioner
`Bank of America Bank, N.A.
`
`
`
`
`
`8
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`
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`
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`

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`CERTIFICATE OF SERVICE
`Under 37 C.F.R. §§ 42.6(e) and 42.105(b), this is to certify that on August
`
`3rd, 2021, I caused to be served a true and correct copy of the foregoing “Motion to
`
`Correct Clerical or Typographical Errors and to Submit a Corrected Petition”
`
`electronically on the Patent Owner at the following email addresses:
`
`nantworksvboa@quinnemanuel.com
`
`toddbriggs@quinnemanuel.com
`
`bricelynch@quinnemanuel.com
`
`jimglass@quinnemanuel.com
`
`patents@fishiplaw.com
`
`kevinjohnson@quinnemanuel.com
`
`
`
`
`
`
`
`
`
`
`/s/ Dustin J. Edwards
`Dustin J. Edwards
`Winston & Strawn LLP
`800 Capitol St., Suite 2400
`Houston, Texas 77002-2925
`dedwards@winston.com
`T: 713.651.2600, F: 713.651.2700
`USPTO Reg. No. 57,649
`Lead Counsel for Petitioner
`Bank of America Bank, N.A.
`
`
`
`