Paper 13
`
`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
`
`––––––––––––––
`
`PATENT OWNER’S PRELIMINARY SURREPLY
`
`
`
`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
`
`––––––––––––––
`
`PATENT OWNER’S PRELIMINARY SURREPLY
`
`
`
`Pursuant to the Board’s email of October 14, 2021, Patent Owner Nant
`
`Holdings IP, LLC (“Patent Owner”) submits this Preliminary Surreply to the
`
`Preliminary Reply (Paper 12) filed by Bank of America, N.A. (“Petitioner”).
`
`Patent Owner established in its preliminary response that Ogasawara’s
`
`“advanced pattern recognition software” is not an enabling disclosure and
`
`cannot constitute anticipatory prior art. In its Reply, Petitioner argues that
`
`Ogasawara enables the advanced software because a POSITA would
`
`understand that Ogasawara’s non-advanced software for identifying barcodes
`
`“works the same” as the advanced software that recognizes objects. Yet this
`
`is contradicted by Ogasawara’s own disclosure and, moreover, Petitioner
`
`provides no explanation for how a POSITA could apply bar code
`
`identification to the recognition of objects. Petitioner also argues that Bolle
`
`would inform a POSITA’s understanding of Ogasawara, yet Bolle’s system
`
`uses a separate computer for recognition, which would not have enabled
`
`Ogasawara’s advanced software that runs on a “wireless videophone.”
`
`I.
`
`OGASAWARA’S DISCLOSURE IS NOT ENABLED
`For a prior art reference to anticipate a claim, “the reference must
`
`necessarily enable the relied-upon portion of its own disclosure.” Raytheon
`
`Techs. v. General Electric Co., 993 F.3d 1374, 1382 (Fed. Cir. 2021)
`
`(emphasis added). In other words, the reference must be “self-enabling.” Id.
`
`1
`
`
`
`at 1380. An enabling disclosure “must teach[] one of ordinary skill in the art
`
`to make or carry out the claimed invention without undue experimentation.”
`
`Elan Pharmaceuticals v. Mayo Foundation, 346 F.3d 1051, 1054 (Fed. Cir.
`
`2003).
`
`Patent Owner’s expert, Dr. Bajaj, testified that Ogasawara’s scant, 19-
`
`line mention of an “[a]dvanced pattern recognition software” is not an
`
`enabling disclosure. Ex. 2002 at ¶¶31-34. Ogasawara only describes such
`
`software in terms of its capabilities—that it can capture items “not identified
`
`by either a bar code or an alpha-numeric label” if they have “a distinct or
`
`identifiable shape or other visually identifiable characteristic.” Ex. 1005 at
`
`23:14-19. However, Ogasawara simply does not “provide any detail as to
`
`what this software is, how it operates, or what its capabilities and limitations
`
`may or [may] not be.” Id. at ¶30; see Ex. 1001 at 23:12-21. This testimony
`
`remains unrebutted.
`
`Petitioner incorrectly asserts that “neither Patent Owner nor Dr. Bajaj
`
`address any of the Wands factors.” Reply at 4. To the contrary, Dr. Bajaj’s
`
`testimony provided evidence relevant to Wands factors 1-5. Dr. Bajaj’s
`
`testimony that Ogasawara does not “provide any detail as to what this software
`
`is, how it operates, or what its capabilities and limitations may or [may] not
`
`be” speaks directly to Wands factors 2 and 3. Ex. 2002 at ¶30; see also id. at
`
`2
`
`
`
`¶33 (“Ogasawara’s only substantive description of this purported software is
`
`couched in terms of its limitations, noting that the software only functions
`
`when an object contains a highly ‘distinct or identifiable shape or other
`
`visually identifiable characteristic.’”). Dr. Bajaj further testified that “a
`
`POSITA would have understood that image processing technology was not
`
`yet sophisticated enough to engage in true object recognition regardless of
`
`irregularities in the object, lighting, field of view, or viewing geometry as
`
`described as claimed by the ’030 patent,” which is relevant to Wands factors
`
`1, 4 and 5. Id. at ¶32.
`
`By contrast, Petitioner only addressed Wands factors 2 and 5. And, as
`
`discussed below, Petitioner’s treatment of these factors simply fails to
`
`establish enablement.
`
`II.
`
`PETITIONER FAILS TO ESTABLISH ENABLEMENT
`Petitioner raises two arguments in its claim that Ogasawara’s advanced
`
`recognition software is an enabling disclosure. Petitioner first claims that
`
`“Ogasawara’s ‘[a]dvanced pattern recognition software’ works the same way
`
`as, and is thus enabled by, its disclosures that identify an object using a
`
`barcode.” Reply 3 (quoting Pet. at 17-18 and citing Ex. 1003 at ¶¶70, 84-85,
`
`127). Yet this is in direct contradiction to Ogasawara’s teaching that its
`
`“[a]dvanced pattern recognition software” is for identifying “items that are
`
`3
`
`
`
`not identified by either a bar code or an alpha-numeric label.” Ex. 1005 at
`
`23:14-15. If Ogasawara’s bar code identification “works the same way” as
`
`Ogasawara’s advanced pattern recognition software, there would simply be
`
`no need for the latter.
`
`Moreover, Ogasawara’s disclosure of an identification of a bar code
`
`cannot so simply be applied to the recognition of objects. POPR at 48-51.
`
`Indeed, neither the petition nor Dr. Rodriguez’s declaration explain how
`
`Ogasawara’s system recognizes bar codes, much less how such recognition
`
`could be applied to Ogasawara’s advanced pattern recognition. Ogasawara
`
`merely states that “[o]nce the bar code image has been captured, the program
`
`decodes the bar code image data to its corresponding numeric bar code data,
`
`by operating on the bar code image with pattern recognition software” with
`
`zero explanation as to how such software operates. Ex. 1005 at 21:17-20.
`
`Dr. Rodriguez’s testimony adds nothing of substance. Dr. Rodriguez
`
`merely opines that the advanced software may “us[e] a look-up table or file to
`
`associate the visually identifiable characteristics to a corresponding product,”
`
`but otherwise provides no explanation for how such software uses such a table
`
`to recognize an object like an apple. Ex. 1003 at ¶85.
`
`Petitioner next argues that “Dr. Rodriguez also explained how Bolle …
`
`would inform a POSITA’s understanding of Ogasawara.” Reply 3-4 (citing
`
`4
`
`
`
`Ex. 1003 at ¶¶53, 56-58, 84-85, 88-97, 108-115). Yet, at best, these citations
`
`are directed to whether a POSITA would be motivated to combine Ogasawara
`
`and Bolle—which is a much different question than whether Ogasawara as a
`
`single, anticipatory reference is self-enabling.
`
`Moreover, Ogasawara is clear that the “[a]dvanced pattern recognition
`
`software” is “accomplished within the wireless videophone, by specialized
`
`downloaded software.” Ex. 1005 at 23:21-23. Bolle’s system, by contrast,
`
`requires an image captured by a “camera” which is sent to a separate
`
`“calculating device, or computer 140.” Ex. 1006 at 7:49-42. Exemplary
`
`computers disclosed by Bolle include an “IBM ValuePoint computer” or “the
`
`IBM 4690 series of POS Cash Registers.”
`
`Id. at 7:61-62. Given the
`
`significant differences in processing power between a late-1990s wireless
`
`videophone and a stand-alone IBM computer, Bolle’s recognition system does
`
`not inform how Ogasawara’s “advanced pattern recognition software” could
`
`be “accomplished within [a] wireless videophone.” Ex. 1005 at 23:21-23.
`
`Bolle, to the extent it would be within the knowledge of a POSITA (which
`
`Petitioner has not established), would simply not have been pertinent to
`
`enabling Ogasawara’s advanced software on a wireless videophone.
`
`III. CONCLUSION
`For the foregoing reasons the Board should deny institution.
`
`5
`
`
`
`Date: October 28, 2021
`
`By: /s/ James Glass
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
`
`Counsel for Patent Owner
`Nant Holdings IP, LLC
`
`6
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(E), 42.105(A))
`The undersigned hereby certifies that the foregoing document was
`
`served in its entirety on October 28, 2021 upon the following parties via
`
`Electronic Mail:
`
`DEdwards@winston.com
`MFrench@winston.com
`DKumar@winston.com
`WS-BAC-NW@winston.com
`
`Date: October 28, 2021
`
`By: /s/ James Glass
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
`
`Counsel for Patent Owner
`Nant Holdings IP, LLC
`
`7
`
`
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