Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Date: December 1, 2021
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`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.
`
`IPR2021-01080
`Patent 8,463,030 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 14
`Date: December 1, 2021
`
`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.
`
`IPR2021-01080
`Patent 8,463,030 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`IPR2021-01080
`Patent 8,463,030 B2
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`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Bank of America, N.A. (“Petitioner”) filed a Corrected Petition
`
`requesting inter partes review of claims 1–4, 6, 7, 19, 21, 25, 26, 29–32, 36,
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`and 37 (the “challenged claims”) of U.S. Patent No. 8,463,030 B2 (Ex. 1001,
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`“the ’030 patent”). Paper 9 (“Pet.”). Nant Holdings IP, LLC (“Patent
`
`Owner”) filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). With
`
`our authorization, Petitioner filed a Preliminary Reply to Patent Owner’s
`
`Preliminary Response (Paper 12, “Prelim. Reply”), and Patent Owner filed a
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`Preliminary Sur-reply to Patent Owner’s Preliminary Reply (Paper 13,
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`“Prelim. Sur-reply”).
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`The Board has authority to determine whether to institute an inter
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`partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`
`§ 314(a), we may not authorize an inter partes review unless the information
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`in the petition and the preliminary response “shows that there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.”
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`For the reasons stated below, we determine that Petitioner has
`
`established a reasonable likelihood that it would prevail with respect to at
`
`least one challenged claim. We therefore institute inter partes review as to
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`all of the challenged claims of the ’030 patent and all of the asserted grounds
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`of unpatentability stated in the Petition.
`
`B.
`
`Related Proceedings
`
`The parties identify the following proceeding in the Central District of
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`California involving the ’030 patent: NantWorks LLC and Nant Holdings IP,
`
`LLC v. Bank of America Corporation and Bank of America, N.A., No. 2:20-
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`cv-07872 (C.D. Cal.). Pet. 66; Paper 6, 2.
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`2
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`C.
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`Real Parties-in-Interest
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`The Petitioner identifies Bank of America, N.A., and Bank of
`
`America Corporation as the real parties-in-interest. Pet. 65–66. Patent
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`Owner in its Preliminary Response does not contest this identification.
`
`Patent Owner identifies Nant Holdings IP, LLC as the real party-in-interest.
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`Paper 6, 2.
`
`D.
`
`The ’030 Patent
`
`The ’030 patent relates to a method and process for identifying objects
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`from digitally captured images thereof that uses image characteristics to
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`identify an object from a plurality of objects in a database. Ex. 1001, 1:18–
`
`21.
`
`The ’030 patent describes traditional methods for linking objects to
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`digital information that involve applying a barcode, a radio or optical
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`transceiver or transmitter, or some other means of identification, to the
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`object, as well as modifying the image or object so as to encode detectable
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`information. Id. at 3:27–33. However, according to the ’030 patent, there is
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`a need for detecting, identifying, determining the position and orientation of,
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`and obtaining other information about an object, without modifying or
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`disfiguring the object, without the need for marks, symbols, codes, barcodes,
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`or characters on the object, and without the need to touch or disturb the
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`object. Id. at 1:35–40. The ’030 patent states that it responds to this need by
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`describing a system and process for identifying digitally captured images
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`without requiring modification to the object. Id. at 4:19–21.
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`Figures 1 and 2 of the ’030 patent, reproduced below, collectively
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`illustrate an embodiment of the patent. The following description will refer
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`to both figures:
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`Patent 8,463,030 B2
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`MATCHING
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`
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`Patent 8,463,030 B2 DATABASE
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`
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`Figure 1 of the ’030 patent is a schematic block diagram presenting a
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`top-level algorithm flowchart. Ex. 1001, 4:36–37. Figure 1 shows the
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`overall processing flow and steps in the algorithm. Id. at 5:19–21.
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`
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`Figure 2 of the ’030 patent is an idealized view of image capture. Id.
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`at 4:36–4:38. As described in the ’030 patent, user 12 uses a computer,
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`mobile telephone, personal digital assistant, or other similar device 14
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`equipped with an image sensor (such as a CCD or CMOS digital camera).
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`Id. at 5:22–25. User 12 aligns the sensor of image capture device 14 with
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`object 16 of interest. Id. at 5:25–26. The linking process is then initiated,
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`and device 14 captures digital image 18 of the scene at which it is pointed.
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`Id. at 5:27–32. Image 18 is represented as three separate 2-D matrices of
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`pixels, corresponding to the raw RGB (Red, Green, Blue) representation of
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`the input image. Id. at 5:32–35. Image 18 is subsequently transferred to
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`image processor/server 20. Id. at 5:40–43.
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`Image type determination 26 is accomplished with a discriminator
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`algorithm which operates on input image 18 and determines whether the
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`input image contains recognizable symbols, such as barcodes, matrix codes,
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`or alphanumeric characters. Id. at 5:49–53. If such symbols are found,
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`image 18 is sent to decode symbol process 28. Id. at 5:53–54. In decode
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`symbol process 28, image 18 is analyzed to determine the location, size, and
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`nature of the symbols. Id. at 5:65–66. The symbols are analyzed according
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`to their type, and their content information is extracted. Id. at 5:66–6:1.
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`Image 18 may also or alternatively contain an object of interest, and
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`may therefore also or alternatively be sent to the object image branch of the
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`process flow. Id. at 5:56–58. In input image decomposition process 34, a
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`“decomposition” of a high-resolution input image into several different types
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`of quantifiable salient parameters is performed. Id. at 6:3–6. According to
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`5
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`the ’030 patent, this allows for multiple independent convergent search
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`processes of the database to occur in parallel in the database matching 36,
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`which greatly improves image match speed and match robustness. Id. at
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`6:6–9.
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`E.
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`Illustrative Claims
`
`The ’030 patent has 38 claims, of which claims 1–4, 6, 7, 19, 21, 25,
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`26, 29–32, 36, and 37 are challenged in the Petition. Claim 1 is independent
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`and representative of the claims. The other challenged claims depend,
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`directly or indirectly, from claim 1. Claim 1 recites:
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`1. A transaction system comprising:
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`a mobile device configured to acquire data related to an object;
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`an object identification platform configured to obtain the
`acquired data, recognize the object as a target object based on the
`acquired data, and determine object information associated with
`the target object; and
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`a content platform configured to obtain the object information,
`and initiate a transaction associated with the target object with a
`selected account over a network based on the object information.
`
`Ex. 1001, 24:10–20.
`
`F.
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`References and Other Evidence
`
`The Petition relies on the following references:
`
`U.S. Patent No. 6,512,919 B2 (Ex. 1005, “Ogasawara”).
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`U.S. Patent No. 5,546,475 B2 (Ex. 1006, “Bolle”).
`
`In addition, Petitioner submits the Declaration of Dr. Jeffrey J.
`
`Rodriguez (Ex. 1003, “Rodriguez Decl.”). Further, Patent Owner submits
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`the Declaration of Dr. Chandrajit Bajaj (Ex. 2002, “Bajaj Decl.”).
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`G.
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`Asserted Grounds of Unpatentability
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`Petitioner asserts that the challenged claims would have been
`
`unpatentable on the following grounds:
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`Claims Challenged
`1–4, 6, 7, 19, 21, 25,
`26, 29–32, 36, and 37
`1–4, 6, 7, 19, 21, 25,
`26, 29–32, 36, and 37
`
`Pet. 7.
`
`35 U.S.C. §1
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`Reference(s)
`
`103(a)
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`102(e)
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`Ogasawara, Bolle
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`Ogasawara
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`II.
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`PRELIMINARY MATTERS
`
`A.
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`Level of Ordinary Skill
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`Petitioner contends that “[a]s of November 2000, a [person of
`
`ordinary skill in the art] . . . would have had a range of knowledge roughly
`
`equivalent to the knowledge and/or training of a person holding the degree
`
`of Bachelor of Science in Electrical Engineering, Computer Science,
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`Computer Engineering, or equivalent, and one to two years of experience
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`working with image processing, image recognition, or a related field.”
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`Pet. 21–22 (citing Rodriguez Decl. ¶ 53).
`
`At this stage, Patent Owner does not provide a description of the
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`person of ordinary skill.
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`Petitioner’s definition is consistent with the prior art and patent
`
`specification before us and is supported by credible expert testimony. See
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`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself
`
`
`1 Because the application from which the ’030 patent issued was filed before
`March 16, 2013, the pre-AIA (“America Invents Act”) versions of §§ 102
`and 103 applies. Leahy-Smith America Invents Act (“AIA”), Pub. L. No.
`112-29, 125 Stat. 284, 285–88 (2011).
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`may reflect an appropriate level of skill). For the purpose of our decision,
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`we adopt Petitioner’s proposal.
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`B.
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`Claim Construction
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`In an inter partes review, the claims of a patent shall be construed
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`using the same claim construction standard that would be used to construe
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`the claims in a civil action under 35 U.S.C. § 282(b), including construing
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`the claims in accordance with the ordinary and customary meaning of such
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`claims as understood by one of ordinary skill in the art and the prosecution
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`history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020); see also
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). Under
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`that standard, and absent any special definitions, we give claim terms their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art at the time of the invention. See In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim
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`terms must be set forth with reasonable clarity, deliberateness, and precision.
`
`See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`We construe claim terms only as relevant to the parties’ contentions
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`and only to the extent necessary to resolve the issues in dispute. See Vivid
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`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999);
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`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
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`1017 (Fed. Cir. 2017).
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`The parties disagree on the approach to claim construction in this
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`proceeding. Petitioner acknowledges that the parties have agreed to certain
`
`constructions, but argues that “the prior art invalidates the Challenged
`
`Claims under any reasonable construction of the terms, and claim
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`construction is therefore unnecessary.” Pet. 28. Patent Owner responds that
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`“several of Petitioner’s arguments are predicated on specific interpretations
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`of the claims made for the purpose of reading the prior art onto the
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`Challenged Claims, interpretations that fundamentally, and improperly,
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`change the very nature of the claimed invention.” Prelim. Resp. 36. Patent
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`Owner further asserts: “Petitioner has failed to meet its burden, [by] failing
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`to construe claims it at least implicitly argues are necessary to understand
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`the full scope of the claims.” Id. at 37.
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`Patent Owner’s argument focuses on the following terms in claim 1:
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`“recognize the object as a target object based on the acquired data” and
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`“determine object information associated with the target object.” Id. at 38–
`
`44. We refer to these, respectively, as the “recognize” and “determine”
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`limitations of claim 1. For each of these terms, Patent Owner contends we
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`should adopt the “plain and ordinary meaning: no construction necessary.”
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`Id. at 38, 41.
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`After the Preliminary Response was filed, the district court in the
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`parallel litigation in the Central District of California (see supra) entered a
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`Markman order construing the two terms identified by Patent Owner, among
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`others. See Ex. 2015, 92 (construing “determine object information . . .”),
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`19 (construing “recognize the object as a target . . .”), 21–22 (summary). For
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`both of these limitations, as here, in district court Patent Owner proposed the
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`construction “plain and ordinary meaning.” Id. at 9, 16.
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` The district court construed the “determine” limitation as “search a
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`database to find information associated with the target object.” Id. at 21. In
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`reaching this determination, the district court remarked that “[t]he Court
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`agrees with Defendants that determining the object information associated
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`2 Unless otherwise specified, citations to exhibits use the page numbers
`assigned by the parties, not the original page numbers.
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`with the target object requires searching a database.” Id. at 10. The district
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`court declined to adopt Petitioner’s suggestion that “associated with” should
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`be construed as “pertaining to.” Id. at 11.
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`The district court construed the “recognize” limitation as “recognize
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`the object as a target object based on the acquired data by comparing the
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`acquired data to image data of objects stored in a database.” Id. at 22. In
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`adopting this construction, the district court remarked: “The Court agrees
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`with Defendants that the claimed invention requires comparing ‘features’ of
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`the target with ‘features of targets stored in a database.’” Id. Thus, for both
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`of these terms in claim 1 identified by Patent Owner, the district court
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`largely adopted Petitioner’s proposed constructions there, and not Patent
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`Owner’s.
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`We have reviewed the district court’s reasoning and agree that the
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`“determine” and “recognize” limitations should be given the same
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`construction as in the district court litigation. We therefore adopt the district
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`court’s construction for those terms. At this stage, therefore, we construe the
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`“determine” limitation as “search a database to find information associated
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`with the target object,” and the “recognize” limitation as “recognize the
`
`object as a target object based on the acquired data by comparing the
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`acquired data to image data of objects stored in a database.” Id. at 21–22.
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`C. Description of the Prior Art References
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`1.
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`Ogasawara
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`Ogasawara describes an electronic shopping system that facilitates
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`purchase transactions via a wireless phone. Ex. 1005, (57). An integral
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`digital camera is attached to the wireless telephone to facilitate the selection
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`of items to be purchased and is controlled to function as a bar code or
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`product icon image capture device. Id. Character or pattern recognition
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`10
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`software translates the bar or icon code image into an appropriate item
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`identifier. Id. Figure 1, reproduced below, illustrates a schematic overview
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`of the electronic shopping system. Id. at 4:10–11.
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`
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`Figure 1 of Ogasawara shows an electronic system comprising store server
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`10 in communication with a commercial telephone network 14. Id. at 4:66–
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`5:2. Commercial telephone network 14 facilitates a connection of store
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`server 10 to wireless telephone 18. Id. at 5:10–11. Optionally, external bar
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`code scanner 20 communicates with the wireless telephone 18 via wire
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`connection 19. Id. at 5:31–32. Alternatively, a built-in bar code scanner 25
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`and/or a built-in IC card reader/writer 27 are formed integrally with the
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`wireless telephone 18. Id. at 5:36–38. In a store, a bar code on a purchased
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`item 33 is scanned by bar code scanner 20 attached to a wireless telephone
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`18. Catalog 21 of the items which can be purchased contains a bar code 22
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`for each such item, and preferably also contains descriptive text 13 and a
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`picture 15 of each item. Id. at 5:40–43.
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`Figure 10 of Ogasawara, reproduced below, is a block diagram
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`depicting an electronic shopping system having a wireless videophone. Id.
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`at 4:34–36.
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`
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`Figure 10 illustrates wireless videophone 218 used in combination with store
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`or remote server 210. Id. at 15:55–56. Wireless videophone 218 includes,
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`miniature digital image capture device 236, such as a CCD camera system.
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`Id. at 15:63–16:1. Digital camera 236 includes processing circuitry that
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`translates the visual image acquired by the camera’s lens into digital signals
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`suitable for processing by microprocessor 238 into a form that can be
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`broadcast transmitted by functional electronic section 240. Id. at 16:7–12.
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`As described by Ogasawara, digital camera 236 can be provided to the
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`wireless videophone 218 in place of a bar code scanner, the tailored
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`purchase transaction program may additionally include character recognition
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`and/or pattern recognition software, as well as bar code decode software.
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`This would allow the wireless videophone to function in a manner similar to
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`the wireless telephone and bar code scanner embodiment illustrated in
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`Figure 1. Id. at 18:15–22.
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`
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`Ogasawara also discloses that advanced pattern recognition software
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`is able to enhance the performance of the wireless videophone by offering
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`the capability to capture merchandise information from items that are not
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`identified by either a bar code or an alpha-numeric label. Id. at 23:11–15.
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`According to Ogasawara, advanced pattern recognition software allows a
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`consumer to capture a videographic image of an apple, for example, and to
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`have the apple be recognized as such by the pattern recognition software. Id.
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`at 23:16–19.
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`2.
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`Bolle
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`Bolle describes a system and apparatus that use image processing to
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`recognize objects within a scene. Ex. 1006, (57). An image processing
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`system takes a digitized image of a scene. Id. Using an algorithm, an object
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`image is segmented from a background image. Id. The object image is then
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`processed and compared to stored reference images. Id. The object is
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`recognized when a match occurs. Id. Figure 4 from Bolle, reproduced
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`below, is a block diagram of an apparatus for segmenting images and
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`recognizing an object in images. Id. at 6:30–32.
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`Figure 4 shows a block diagram of system 400 for imaging scenes,
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`segmenting object images 130 from their background image 311 of a
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`physical background 312, and recognizing object(s) 131. Id. at 9:21–25.
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`
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`System 400 comprises opening 403 to allow object 131 to be imaged
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`by camera 120 and illuminated by light 110. Id. at 9:39–43. The system
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`further includes a segmenting algorithm for segmenting an image of object
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`131 from an image of the scene. Id. at 10:17–19. After the image is
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`segmented, computer 140 performs a computation to determine features of
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`the target object. Id. at 12:58–62. Further, computer 140, via algorithm 200,
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`compares normalized characteristics of the target object 131 to one or more
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`normalized referenced object characteristics. Id. at 13:61–63.
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`
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`Bolle further describes comparison/matching of the target
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`characterization to the reference characterizations that is performed
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`according to one or more matching algorithms, such as a nearest neighbor
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`classification. Id. at 15:50–67.
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`III. PATENT OWNER’S REQUEST FOR DENIAL UNDER
`35 U.S.C. § 314(a)
`
`A.
`
`Background
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`Patent Owner contends that the Board should exercise its discretion
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`under 35 U.S.C. § 314(a) to deny the Petition. Prelim. Resp. 22–36.
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`According to Patent Owner, referring to the parallel district court action in
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`the Central District of California, “Petitioner is plainly attempting to
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`maintain parallel forums to assert its invalidity defenses, including invalidity
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`defenses based on patents and printed publications in both forums.” Id.
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`at 20. For the reasons that follow, we decline to exercise our discretion to
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`deny the Petition.
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`B.
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`Fintiv Factors
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`The Board’s precedential decision in Apple Inc. v. Fintiv Inc.,
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`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”),
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`identifies a non-exclusive list of factors parties may consider addressing
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`where there is a related, parallel district court action to determine whether
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`such action provides any basis for discretionary denial. Fintiv, Paper 11 at
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`5–16. Those factors include:
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`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
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`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and the
`parties;
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`4. overlap between issues raised in the petition and in the
`parallel proceeding;
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`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
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`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
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`Id. at 5–6.
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`In evaluating the factors, we take a holistic view of whether efficiency
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`and integrity of the system are best served by denying or instituting review.
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`Id. at 6.
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`C.
`
`Analysis of Fintiv Factors
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`1. Factors 1 and 2
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`
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`As Patent Owner acknowledges, no trial date has been set. Prelim.
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`Resp. 33. Nor has a stay of the California litigation been requested by either
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`party. However, Petitioner asserts that a stay “is likely to be granted by the
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`district court” if this proceeding is instituted. Pet. 63. We do not speculate
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`about the likelihood of a stay, and find on balance that these factors weigh
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`against exercising our discretion to deny the Petition.
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`2. Factors 3 and 4
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`Patent Owner faults Petitioner for delay in filing the Petition. Prelim.
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`Resp. 28. According to Patent Owner, “Petitioner’s complete lack of an
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`explanation is especially egregious here, where that unexplained delay
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`allowed the district court case to proceed and the parties and Court to expend
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`significant resources on the litigation.” Id. Further, Patent Owner argues
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`that the issues and arguments raised in the Petition are the same as those in
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`the district court. Id. at 24–27.
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`We do not agree that these factors favor exercising our discretion to
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`deny the Petition. Other than citing the Markman hearing by the district
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`court and service of initial discovery requests (Prelim. Resp. 29), Patent
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`Owner does not support its contention that “the parties and the Court have
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`already heavily invested in the district court case.” Id. Moreover, Petitioner
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`has been reasonably diligent, filing the Petition “shortly after the parties
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`filed their joint claim construction statement” and within a few months of
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`receiving Patent Owner’s infringement contentions. Pet. 62.
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`Furthermore, citing Sand Revolution II, LLC v. Continental
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`Intermodal Group–Trucking LLC, IPR2019-01393, Paper 24 (PTAB. June
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`16, 2020) (informative). Petitioner filed a stipulation that if inter partes
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`review is initiated, it will not assert invalidity of the asserted claims in the
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`district court case based on any of grounds listed in the Petition, “or on any
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`other ground involving the Ogasawara and Bolle references, alone under 35
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`U.S.C. § 102, or in combination with any other reference under 35 U.S.C.
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`§ 103.” Ex. 1011, 2.
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`Patent Owner criticizes this as a “very narrow” stipulation that “only
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`marginally impacts the Fintiv analysis.” Prelim. Resp. 24, 25 (emphasis and
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`internal quotation marks omitted). We disagree. Although Petitioner has
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`not stipulated to forgo relying on all the patents and prior art publications
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`that could have reasonably been raised in the inter partes review (see Sotera
`
`Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19
`
`(precedential as to § II.A.)), Petitioner’s stipulation will likely contribute to
`
`streamlining the issues presented there as to the ’030 patent. See Sand
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`Revolution II, Paper 24 at 11–12 (similar stipulation “mitigates to some
`
`17
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`
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`IPR2021-01080
`Patent 8,463,030 B2
`
`degree the concerns of duplicative efforts between the district court and the
`
`Board, as well as concerns of potentially conflicting decisions”).
`
`We are persuaded that the stipulation here is sufficient to “mitigate[]
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`to some degree” the overlap caused by Petitioner’s reliance on Ogasawara
`
`and Bolle. We conclude that these factors weigh against exercising
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`discretion to deny institution.
`
`3. Factor 5
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`Neither party disputes that Petitioner and Patent Owner are parties to
`
`the district court proceeding. Pet. 64; Prelim. Resp. 35. Because no trial
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`date has been set, however, it is uncertain whether the final written decision
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`in this case will come before or after the trial. Under these circumstances,
`
`the fact that the Petitioner is a defendant in the district court case may
`
`actually weigh against exercising discretion to deny institution. See MED-
`
`EL Elektromedizinische Geräte Ges.m.b.H v. Advanced Bionics AG,
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`IPR2020-00190, Paper 15 at 14–15 (PTAB June 3, 2020) (Institution
`
`Decision) (overlap of issues and parties, especially with an uncertain trial
`
`date, weighs in favor of institution because petitioner would be estopped in
`
`district court from raising the same issues upon issuance of the Board’s final
`
`written decision).
`
`4. Factor 6
`
`We do not agree with Patent Owner that we should consider the
`
`existence of trade secret and breach of contract claims in the California
`
`district court case in our analysis. Patent Owner cites no authority for this
`
`argument. Moreover, Petitioner’s argument that we should consider the
`
`complexity of the district court litigation involving multiple patents has been
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`endorsed in Apple, Inc. v. SEVEN Networks, LLC, IPR2020-00156, Paper 10
`
`at 21–22 (PTAB. June 15, 2020), and more recently considered in Satco
`
`18
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`
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`IPR2021-01080
`Patent 8,463,030 B2
`
`Products, Inc. v. The Regents of the University of California, IPR2021-
`
`00794, Paper 14 (PTAB Nov. 14, 2021) (Crumbley, J., concurring).
`
`However, while we see merit in Petitioner’s argument, we do not find it
`
`necessary to take a position on that issue in this proceeding. We conclude
`
`that other circumstances do not favor exercising our discretion to deny
`
`institution.
`
`Finally, we have considered the merits of the Petition and determined
`
`that they meet the standards for institution of inter partes review. In our
`
`analysis of Fintiv factors, we find that this factor is neutral.
`
`5. Summary and Conclusion
`
`We have considered the circumstances and facts before us in view of
`
`the Fintiv factors. For the reasons given, we are not persuaded to exercise
`
`our discretion to deny institution.
`
`IV. ANALYSIS OF THE CHALLENGED CLAIMS
`
`The Petitioner challenges claims 1–4, 6, 7, 19, 21, 25, 26, 29–32, 36,
`
`and 37 of the ’030 patent. Pet. 29. Petitioner asserts unpatentability of the
`
`claims based on obviousness and anticipation. Id.
`
`A. Obviousness
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter, as a whole, would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which said subject matter
`
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`
`The question of obviousness is resolved on the basis of underlying
`
`factual determinations, including (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of skill in the art; and (4) so-called “secondary considerations,”
`
`19
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`
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`IPR2021-01080
`Patent 8,463,030 B2
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`including commercial success, long-felt but unsolved needs, failure of
`
`others, and unexpected results. Graham v. John Deere Co., 383 U.S. 1, 17–
`
`18 (1966) (“the Graham factors”). Neither the Petition nor the Preliminary
`
`Response presents evidence on the fourth Graham factor. We therefore do
`
`not consider that factor in this decision.
`
`B.
`
`Anticipation
`
`The Federal Circuit addressed the legal standard for anticipation in
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`Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016):
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`“Under 35 U.S.C. § 102(b), a prior art reference will anticipate if it
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`‘disclose[s] each and every element of the claimed invention . . . arranged or
`
`combined in the same way as in the claim.’” Blue Calypso, 815 F.3d at
`
`1341 (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (footnote
`
`omitted, alterations in original)). As the Federal Circuit explained,
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`“[h]owever, a reference can anticipate a claim even if it ‘d[oes] not expressly
`
`spell out’ all the limitations arranged or combined as in the claim, if a person
`
`of skill in the art, reading the reference, would ‘at once envisage’ the
`
`claimed arrangement or combination.” Id. (quoting Kennametal, Inc. v.
`
`Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015)) (second
`
`alteration in original).
`
`C. Ogasawara and Bolle Obviousness Challenge
`
`Petitioner asserts that claims 1–4, 6, 7, 19, 21, 25, 26, 29–32, 36,
`
`and 37 would have been obvious over Ogasawara and Bolle, in view of the
`
`knowledge of a person of ordinary skill in the art. Pet. 29. The parties focus
`
`their analysis on claim 1, the only independent claim.
`
`1.
`
`Claim 1
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`Petitioner provides an element-by-element analysis of claim 1 in
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`relation to Ogasawara and Bolle. Pet. 29–43. Petitioner’s analysis relies on
`
`20
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`
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`IPR2021-01080
`Patent 8,463,030 B2
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`supporting testimony from Dr. Rodriguez. Rodriguez Decl. ¶¶ 116–143. As
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`discussed infra, Petitioner asserts that each limitation in claim 1 is met by
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`the Ogasawara and Bolle.
`
`a.
`
`(preamble) A transaction system comprising
`
`Petitioner contends that Ogasawara meets the preamble by disclosing
`
`an electronic shopping system. Pet. 29. At this stage, Patent Owner does
`
`not dispute this. For the reasons given by Petitioner, we determine that
`
`Ogasawara meets this element of the claim.3
`
`“a mobile device configured to acquire data related to an
`b.
`object
`
`
`
`Petitioner contends Ogasawara meets this limitation by disclosing
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`wireless telephone 218 with a camera. Pet. 30 (citing Rodriguez Decl.
`
`¶¶ 118–119). Referring to Figure 10 of Ogasawara, reproduced supra,
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`Petitioner explains: “The camera allows a consumer to capture a
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`videographic image of an apple and to have the apple be recognized as such
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`by pattern recognition software.” Id. (citing Ex. 1005, 23:16–20) (internal
`
`ellipses and quotation marks omitted).
`
`At this stage, Patent Owner does not dispute this. For the reasons
`
`given, we determine that Ogasawara meets this limitation.
`
`“an object identification platform configured to obtain the
`c.
`acquired data”
`
`
`
`Petitioner contends this limitation is met by Ogasawara’s disclosure of
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`“a computing platform on wireless videophone 218 . . . or store remote
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`server 10, 26, 210 . . . configured to obtain the acquired . . . videographic
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`image data of an apple from digital camera 236 obtained by wireless
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`videophone 218 or server 10, 26, 210.” Pet. 31 (citing Rodriguez Decl.
`
`
`3 We express no view on whether the preamble in limiting.
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`21
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`IPR2021-01080
`Patent 8,463,030 B2
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`¶¶ 120–125). Petitioner explains further: “In the embodiment in Figure 10
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`[of Ogasawara], when the camera 236 on the wireless videophone 218
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`captures the image, the image is provided to the system’s microprocessor
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`238 where the received videographic information is processed by an
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`application program previously downloaded to the wireless videophone.”
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`Id. (quoting Ex. 1005, 19:46–51) (internal quotation marks omitted).
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`Although Patent Owner criticizes Petitioner’s analysis of this claim
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`element as “rel[ying] on the conclusory assertion of its expert” (Prelim.
`
`Resp. 48), Patent Owner’s response focuses mainly on the “recognize” and
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`“determine” limitations that immediately follow. See discussion infra.
`
`“recognize the
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