Paper 12
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`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
`
`
`
`PETITIONER’S PRELIMINARY REPLY
`TO PATENT OWNER'S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`PETITIONER’S PRELIMINARY REPLY
`TO PATENT OWNER'S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`Table of Contents ...................................................................................................... ii
`Table of Abbreviations and Conventions ................................................................ iii
`Table of Authorities ................................................................................................. iv
`I.
`Introduction ...................................................................................................... 1
`II.
`Ogasawara is an Enabling Prior Art Reference ................................................. 1
`A. Ogasawara is Enabled as Shown by Raytheon and the Wands Factors .... 2
`B.
`Patent Owner’s Conclusory Arguments Fail to Rebut the Presumption of
`Enablement ............................................................................................ 4
`III. Conclusion ........................................................................................................ 5
`
`
`
`ii
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`
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`
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`
`
`TABLE OF ABBREVIATIONS AND CONVENTIONS
`
`Bank of America
`or Petitioner
`Board
`Bolle
`
`IPR
`NantWorks or
`Patent Owner
`Ogasawara
`
`POPR
`POSITA
`
`the ’030 patent
`
`
`
`
`xx:yy-zz
`
`
`
`
`Bank of America, N.A.
`
`Patent Trial and Appeal Board
`Ex. 1006: U.S. Patent No. 5,546,475, titled “Produce
`Recognition System” to Rudolf M. Bolle, et al.
`inter partes review
`Nant Holdings IP, LLC
`
`Ex. 1005: U.S. Patent No. 6,512,919, titled “Electronic
`Shopping System Utilizing a Program Downloadable
`Wireless Videophone” to Nobuo Ogasawara
`Patent Owner’s Preliminary Response, Paper 10
`person of ordinary skill in the art
`
`Ex. 1001: U.S. Patent No. 8,463,030
`
`
`
`
`column xx, lines yy to zz
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`
`
`
`iii
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`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ............................................................................ 1
`Array Biopharma Inc. v. Takeda Pharm. Co. Ltd.,
`IPR2015-00754, Paper 82 (P.T.A.B. Feb. 14, 2019) ............................................ 1
`In re Antor Media Corp.,
`689 F.3d 1282 (Fed. Cir. 2012) ........................................................................ 1, 5
`In re Wands,
`858 F.2d 731 (Fed. Cir. 1988) .................................................................. 1, 2, 4, 5
`Pfizer, Inc. v. Genentech, Inc.,
`IPR2017-02019, Paper 16 (P.T.A.B. Feb. 12, 2018) ............................................ 2
`Raytheon Tech. Corp. v. General Elec. Co.,
`993 F.3d 1374 (Fed. Cir. 2021) ................................................................ 1, 2, 3, 4
`U.S. v. Telectronics, Inc.,
` 857 F.2d 778 (Fed. Cir. 1988) ............................................................................. 2
`Other Authorities
`37 C.F.R. § 42.65(a) ................................................................................................... 4
`
`
`
`
`iv
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`
`
`I.
`
`Introduction
`Contrary to Patent Owner’s assertion (POPR, Paper 10 at 55–56),1 Ogasawara is
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`enabling prior art under Raytheon Tech. Corp. v. General Elec. Co., 993 F.3d 1374
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`(Fed. Cir. 2021) and In re Wands, 858 F.2d 731 (Fed. Cir. 1988), as shown by
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`Ogasawara’s own disclosure and the disclosure of Bolle, described at length in the Pe-
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`tition. See, e.g., Petition, Paper 9 at 12–28. Patent Owner, not Petitioner, has the burden
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`to show that a prior art reference is not enabled. Amgen Inc. v. Hoechst Marion Roussel,
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`Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (prior art is presumed enabled unless chal-
`
`lenger overcomes presumption). Patent Owner’s conclusory arguments and declaration
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`do not come close to meeting its burden.2
`
`II. Ogasawara is an Enabling Prior Art Reference
`Prior art patents are presumed to be enabled. See Array Biopharma Inc. v. Takeda
`
`Pharm. Co. Ltd., IPR2015-00754, Paper 82 at 15 (P.T.A.B. Feb. 14, 2019); In re Antor
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`Media Corp., 689 F.3d 1282, 1287–88 (Fed. Cir. 2012); Amgen, 314 F.3d at 1355. Pa-
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`tent Owner bears the burden of proving that Ogasawara is not enabled. See Amgen, 314
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`F.3d at 1355; Array Biopharma, Paper 82 at 15. Here, Patent Owner’s arguments fail
`
`
`1 The Board authorized this Reply in its October 14, 2021 e-mail.
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`2 Patent Owner cannot fix these deficiencies in its sur-reply as the Board instructed the
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`parties to “confine the arguments . . . to evidence currently in the record.”
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`
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`
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`to rebut the presumption that Ogasawara is enabled and thus fail to shift the burden of
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`production on this issue to the Petitioner. See Pfizer, Inc. v. Genentech, Inc., IPR2017-
`
`02019, Paper 16 at 18–20 (P.T.A.B. Feb. 12, 2018).
`
`A. Ogasawara is Enabled as Shown by Raytheon and the Wands Factors
`Ogasawara is enabled because a POSITA “could make or use the invention from
`
`the disclosures in the patent coupled with information known in the art without undue
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`experimentation.” U.S. v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). The
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`“undue experimentation” analysis involves a consideration of the eight factors set forth
`
`in In re Wands. 858 F.2d at 737. In Raytheon, the non-enabled prior art described a
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`turbofan engine far beyond the state of the prior art, made with theorized components
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`that were “undisputedly unattainable” around the priority date and that remained “be-
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`yond reality” at the time of the Federal Circuit’s decision. Raytheon, 993 F.3d at 1378,
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`1382. Here, the state of the prior art (Wands factor 5) provides ample direction and
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`guidance (Wands factor 2) as disclosed by Ogasawara itself and in the state of the art
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`such as Bolle.3 See Rodriguez Dec., Ex. 1003 at ¶¶ 56–59, 84–85, 88–97, 108–115.
`
`
`3 Petitioner references Wands factors 2 and 5 as those are salient examples of the flaws
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`with Patent Owner’s arguments. The POPR did not address any of the Wands factors
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`and Petitioner does not concede that any of the other Wands factors suggest Ogasawara
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`is not enabled.
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`2
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`
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`
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`Dr. Rodriguez demonstrated how a POSITA would have understood the “ad-
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`vanced pattern recognition software” of Ogasawara based on the disclosures of
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`Ogasawara itself. See Rodriguez Dec., Ex. 1003 at ¶¶ 59, 70, 78–81, 83–85, 112, 127.
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`Contrary to Raytheon, where the reference did not self-enable the relied-upon portion
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`of its own disclosure (993 F.3d at 1381), Petitioner has shown that Ogasawara’s
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`“[a]dvanced pattern recognition software” works the same way as, and is thus enabled
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`by, its disclosures that identify an object using a barcode. See Paper 9 at 17–18 (“a
`
`POSITA would have understood that the advanced pattern recognition software identi-
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`fies an object … by determining visually identifiable characteristics (akin to the nu-
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`meric bar code data derived from a bar code image) and using a look-up table or file
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`(i.e., a database) to associate the visually identifiable characteristics to a corresponding
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`product”); Rodriguez Dec., Ex. 1003 at ¶¶ 70, 84–85, 127.
`
`Dr. Rodriguez also explained how Bolle, which issued over two years before
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`Ogasawara was filed, would inform a POSITA’s understanding of Ogasawara. See Ro-
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`driguez Dec., Ex. 1003 at ¶¶ 53, 56–58, 84–85, 88–97, 108–115. Petitioner has pre-
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`sented evidence that Bolle provides direction and guidance on how to implement ad-
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`vanced pattern recognition software (like that of Ogasawara’s) that extracts visual char-
`
`acteristics (such as color, shape, and texture), which are then compared to characteris-
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`tics of reference images stored in a database to determine a match. See Rodriguez Dec.,
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`Ex. 1003 at ¶¶ 57–58, 84–85, 88–97, 108–115. The direction and guidance of Bolle
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`3
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`
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`goes directly to Wands factor 2 and further distinguishes Ogasawara’s advanced pattern
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`recognition software from the purely theoretical components unsupported by other ev-
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`idence in the prior art in Raytheon. See Raytheon, 993 F.3d at 1378, 1381–82.
`
`B. Patent Owner’s Conclusory Arguments Fail to Rebut the Presumption
`of Enablement
`Patent Owner relies on a declaration from Dr. Bajaj to support its conclusory
`
`argument that “[a] POSITA reading these disclosures [of Ogasawara] would not under-
`
`stand them to enable the advanced object image recognition techniques of claim 1 of
`
`the ’030 patent.” POPR, Paper 10 at 56. However, Dr. Bajaj’s entire opinion on enable-
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`ment is only four paragraphs of conclusory statements without any supporting evidence.
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`See Bajaj Dec., Ex. 2002 at ¶¶ 31–34. Unsubstantiated opinions of experts should be
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`given little to no weight. 37 C.F.R. § 42.65(a). Dr. Bajaj’s declaration is insufficient to
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`rebut the presumption that Ogasawara is enabled.
`
`Additionally, neither Patent Owner nor Dr. Bajaj address any of the Wands fac-
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`tors to determine whether a prior art reference is enabled. Wands, 858 F.2d at 737. In
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`particular, Patent Owner and Dr. Bajaj completely ignore Wands factors 2 and 5 as
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`described above. Dr. Bajaj also fails to address Bolle despite Petitioner relying on Bolle,
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`not only as part of the state of the art, but as a secondary reference showing how an
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`object would be recognized by examining features of the object itself, without using
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`barcodes, symbols, etc. Paper 9 at 12, 19–22, 36–37.
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`Furthermore, Dr. Bajaj clearly uses the wrong standard to analyze enablement.
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`4
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`
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`Wands factor 8 requires an analysis of the breadth of the ’030 claims, yet Dr. Bajaj fails
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`to analyze any claim language of the ’030 patent. Wands, 858 F.2d at 737. Instead, he
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`alleges that Ogasawara does not disclose “the kinds of advanced object image recogni-
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`tion … claimed by the ’030 patent” because “a POSITA would have understood that
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`image processing technology was not yet sophisticated enough to engage in true object
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`recognition regardless of irregularities in the object, lighting, field of view, or viewing
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`geometry as described as claimed by the ’030 patent.” Bajaj Dec., Ex. 2002 at ¶ 32.
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`The claims, however, are not limited to Dr. Bajaj’s characterization of “true” object
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`recognition (see, e.g., Markman Order, Ex. 2015 at 14–19), and indeed, the specifica-
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`tion explains that its system can use “object recognition techniques” of which some are
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`“available commercially and in the prior art” and “object and image recognition soft-
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`ware applications available commercially.” See ’030 patent, Ex. 1001 at 14:35–46,
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`14:59–15:4, 16:51–67. Ogasawara only needs to enable “the portions of its disclosure
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`alleged to anticipate the claimed invention[,]” and Dr. Bajaj does not even compare
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`Ogasawara’s advanced pattern recognition to what is actually claimed in the ’030 pa-
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`tent. Antor Media, 689 F.3d at 1291.
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`III. Conclusion
`While the POPR’s conclusory arguments fail to address the Wands factors and
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`produce evidence to rebut the presumption that Ogasawara is enabling, Petitioner has
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`shown that Ogasawara is enabling prior art under Raytheon and the Wands factors.
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`5
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`Dated: October 21, 2021
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`
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`
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`Respectfully submitted,
`
`/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.
`
`6
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`
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`CERTIFICATE OF SERVICE
`Under 37 C.F.R. §§ 42.6(e), this is to certify that on October 21, 2021, I
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`caused to be served a true and correct copy of the foregoing “PETITIONER’S
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`PRELIMINARY REPLY TO PATENT OWNER'S PRELIMINARY
`
`RESPONSE” electronically on the Patent Owner at the following email addresses
`
`of record:
`
`nantworksvboa@quinnemanuel.com
`
`toddbriggs@quinnemanuel.com
`
`bricelynch@quinnemanuel.com
`
`jimglass@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..
`
`
`
`
`
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`
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