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 UPDATED EXHIBIT LIST
` (AS OF DECEMBER 13, 2021)
`
`
`
`
`
`
`
`
`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 UPDATED EXHIBIT LIST
` (AS OF DECEMBER 13, 2021)
`
`
`
`
`
`
`UPDATED EXHIBIT LIST1
`
`1001 U.S. Patent No. 8,463,030, titled “Image Capture and Identification
`System and Process” to Wayne C. Boncyk, et al.
`File history of U.S. Patent No. 8,463,030
`1002
`1003 Declaration of Jeffrey Rodriguez, Ph.D.
`1004 Curriculum vitae of Jeffrey Rodriguez, Ph.D.
`1005 U.S. Patent No. 6,512,919, titled “Electronic Shopping System Utilizing
`a Program Downloadable Wireless Videophone” to Nobuo Ogasawara
`1006 U.S. Patent No. 5,546,475, titled “Produce Recognition System” to
`Rudolf M. Bolle, et al.
`L. O’Gorman and R. Kasturi, Document Image Analysis, IEEE Computer
`Society Executive Briefing (IEEE Computer Society Press, 1997)
`Provisional Application No. 60/246,295
`Joint Claim Construction and Prehearing Statement, 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. June 10, 2021), ECF
`No. 103
`
`1008
`1009
`
`1007
`
`
`1 Citation convention: Where an exhibit contains original page numbering that
`
`uniquely identifies each page in the exhibit, this petition uses the original page
`
`numbers to refer to the pages in the exhibit; where an exhibit contains original page
`
`numbering that does not clearly and uniquely identify each page in the exhibit (such
`
`as in the ʼ030 patent’s file history (Ex.1002)), or does not contain any page
`
`numbering, the unique page numbering added to the bottom of the exhibit will be
`
`used.
`
`
`
`1010
`
`1011
`
`Plaintiffs NantWorks, LLC and Nant Holdings IP, LLC Preliminary
`Infringement Contentions, 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. March 4, 2021)
`Stipulation Regarding Asserted Prior Art, 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. June 15, 2021), ECF No. 104
`1012 Defendants’ Preliminary Invalidity Contentions, 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. April 8, 2021)
`1013 Complaint For Patent Infringement, 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. August 27, 2020), ECF No. 1
`First Amended Complaint For Patent Infringement, 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. 40
`1015 Defendants Bank of America Corporation and Bank of America, N.A.’s
`Answer to First Amended Complaint, Affirmative Defenses, and
`Counterclaims, 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
`1016 Civil Minutes (Scheduling 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
`Plaintiffs NantWorks, LLC and Nant Holdings IP, LLC Preliminary
`Election of Asserted Claims, 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. May 11, 2021)
`1018 Defendants’ Preliminary Election of Asserted Prior Art, 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. May 27, 2021)
`
`1014
`
`1017
`
`
`
`1020
`
`1021
`
`1019 Declaration of Silvia Hall-Ellis, Ph.D. and accompanying Attachments
`1a–1f and 2
`Ancora Technologies, Inc v. TCT Mobile (US), Inc., et al., Case No. 8:19-
`cv-02192-GW(ADSx), ECF No. 65 (C.D. Cal. Nov. 12, 2020)
`BlackBerry Limited v. Facebook, Inc. et al., Case No. 2:18-cv-01844-
`GW(KSx), ECF No. 652 (C.D. Cal. Feb 13, 2020)
`1022 U.S. Patent No. 6,947,571, entitled “Cell Phones With Optical
`Capabilities, and Related Applications” to Geoffrey B. Rhoads, et al.
`Reserved.
`
`1023-
`1041
`1042 Order Granting Defendants’ motion For Clarification Under Fed. R. CIV.
`P. 60(a), NantWorks, LLC and Nant Holdings IP, LLC v. Bank of America
`Corporation and Bank of America, N.A., 2:20-cv-07872-GW-PVC (C.D.
`Cal. Dec. 3, 2021), ECF No. 153
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`Under 37 C.F.R. §§42.6(e), this is to certify that on December 13, 2021, I
`
`caused to be served a true and correct copy of the foregoing Petitioner’s Updated
`
`Exhibit List, Exhibit 1042 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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