QUINN EMANUEL URQUHART
` & SULLIVAN, LLP
`James R. Asperger (Bar No. 83188)
`jimasperger@quinnemanuel.com
`865 South Figueroa Street, 10th Floor
`Los Angeles, CA 90017-2543
`Telephone: (213) 443-3000
`Facsimile: (213) 443-3100
`
`QUINN EMANUEL URQUHART
` & SULLIVAN, LLP
`Kevin P.B. Johnson (Bar No. 177129)
`kevinjohnson@quinnemanuel.com
`Todd M. Briggs (Bar No. 209282)
`toddbriggs@quinnemanuel.com
`555 Twin Dolphin Drive, 5th Floor
`Redwood Shores, California 94065
`Telephone: (650) 801-5000
`Facsimile: (650) 801-5100
`
`QUINN EMANUEL URQUHART
` & SULLIVAN, LLP
`Eric Huang (pro hac vice)
`erichuang@quinnemanuel.com
`51 Madison Avenue, 22nd Floor
`New York, New York 10010
`Telephone: (212) 849-7000
`Facsimile: (212) 849-7100
`
`Attorneys for Plaintiffs
`NANTWORKS, LLC and NANT HOLDINGS IP, LLC
`
`UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`CASE NO. 2:20-cv-7872-GW-PVC
`
`PLAINTIFFS NANTWORKS, LLC,
`AND NANT HOLDINGS IP, LLC,
`PRELIMINARY INFRINGEMENT
`CONTENTIONS
`
`NANTWORKS, LLC, a Delaware
`limited liability company, and NANT
`HOLDINGS IP, LLC, a Delaware
`limited liability company,
`
`Plaintiffs,
`
`vs.
`
`BANK OF AMERICA
`CORPORATION, a Delaware
`corporation, and BANK OF
`AMERICA, N.A., a national banking
`association,
`
`Defendants.
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`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 1 of 88
`
`

`

`
`
`Pursuant to the Court’s Order adopting Judge Guilford’s Standing Patent Rules
`
`(“S.P.R.”) in this action (Dkt. No. 91), Plaintiffs NantWorks LLC, and Nant Holdings
`
`IP, LLC, (collectively, “Plaintiffs” or “NantWorks”), hereby submit its Preliminary
`
`Infringement Contentions.
`
`Discovery has just begun, and NantWorks is seeking discovery from
`
`Defendants Bank of America Corp. and Bank of America, N.A. (collectively,
`
`“Defendants” or “Bank of America” or “BoA”) that may affect NantWorks’s
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`Preliminary Infringement Contentions. Not all information concerning the Accused
`
`Products is publicly available such as relevant source code and technical
`
`specifications that demonstrate the structure and operation of the accused
`
`functionalities within the Accused Products. NantWorks has served discovery
`
`requests on Defendants to obtain additional information relevant to infringement that
`
`is in Defendants’ possession, custody or control. NantWorks reserves the right to
`
`supplement and/or amend its Preliminary Infringement Contentions based on the
`
`discovery Defendants provide in response to NantWorks’s discovery requests. In
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`particular, NantWorks reserves the right to supplement and/or amend its Preliminary
`
`Infringement Contentions after it has been provided with an opportunity to inspect
`
`and review Defendants’ proprietary and confidential technical information for the
`
`Accused Products, including source code and technical specifications. NantWorks
`
`will provide such supplements and/or amendments in its Final Infringement
`
`Contentions.
`I.
`ASSERTED CLAIMS
`
`For the reasons set forth in NantWorks’s First Amended Complaint and the
`
`attached claim charts, Defendants infringe at least the following claims (“Asserted
`
`Claims”):
` U.S. Patent No. 9,031,278 (the “’278 Patent”): Claims 1 and 3-5
` U.S. Patent No. 7,881,529 (the “’529 Patent”): Claims 1-4, 6-7, 9, 18-21,
`and 23-24
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`2
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS)
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 2 of 88
`
`

`

`
`
`II.
`
` U.S. Patent 7,899,252 (the “’252 Patent”) : Claims 18-19, 26-29, 31-34
` U.S. Patent No. 8,326,038 (the “’038 Patent”): Claims 1-6, 8-10, 13-16, 19-
`22
` U.S. Patent No. 8,463,030 (the “’030 Patent”) : Claims 1-4, 6-7, 13, 16-19,
`21-22, 25-27, 29-32, and 35-37
` U.S. Patent No. 8,520,897 (the “’897 Patent”): Claims 25-26, 29-34, and 38-
`42
` U.S. Patent No. 9,324,004 (the “’004 Patent”): Claims 1-3, 6, 11, 15, and 18
` U.S. Patent No. 8,478,036 (the “’036 Patent”) Claims 1-2, 10, 12-15, and
`19
`PRIORITY DATE
`
`The Asserted Claims of the Asserted Patents are entitled to at least the earliest
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`U.S. or foreign priority dates listed on the face of each patent or identified in the
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`prosecution histories of each patent. In particular, the ’278, ’529, ’252, ’038, ’030,
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`’897, ’004, and ’036 Patents are entitled to a priority date not later than November 6,
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`2000, which is the filing date of provisional application No. 60/246,295. NantWork’s
`
`investigation is ongoing, and NantWorks reserves the right to establish earlier and/or
`
`alternative priority and invention dates for the Asserted Claims.
`III. ACCUSED PRODUCTS
`
`With its Bank of America Mobile Banking App (the “BoA App”), BoA offers
`
`its mobile check deposit feature to its customers, including individuals and business.
`
`BoA makes the BoA App available to customers to install it onto the customer’s
`
`devices. BoA controls and operates various computers, servers, software, and other
`
`infrastructure that operates and supports the BoA App and mobile check deposit
`
`feature. The BoA App, its mobile check deposit feature, and the mobile devices,
`
`computers, servers, software, and other infrastructure related to and/or associated with
`
`the BoA App and its mobile check deposit feature are the “BoA Accused Products.”
`
`For example, BoA provides materials that describe how the BoA Accused Products
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`3
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS)
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 3 of 88
`
`

`

`
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`function. See, e.g., https://www.bankofamerica.com/online-banking/mobile-and-
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`online-banking-features/mobile-check-deposit/.
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`NantWorks further accuses any other products that Defendants are currently
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`developing, making, selling, offering to sell, importing and/or using that implement
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`mobile check cashing functionality, including but not limited to any newer but
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`unreleased versions of the Accused Products.
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`NantWorks has served discovery requests on Defendants—on February 10,
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`2021—seeking additional information regarding the identification and functionality
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`of the Accused Products, but responses to that discovery were not provided prior to
`
`the service of these Preliminary Infringement Contentions. NantWorks reserves its
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`rights to supplement its Preliminary Infringement Contentions to include any
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`additional products and/or features identified through discovery.
`IV. CLAIM CHARTS FOR THE ACCUSED PRODUCTS
`
`Attached as Exhibits 1-8 are claim charts for the ’278, ’529, ’252, ’038, ’030,
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`’897, ’004, and ’036 Patents, respectively, that identify where each element of each
`
`Asserted Claim of the Asserted Patents is found within the Accused Products, based
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`on the information currently available to NantWorks. In response to NantWorks’s
`
`requests for production, Defendants have not yet produced any information regarding
`
`the Accused Products. NantWorks reserves the right to amend and/or supplement
`
`these claim charts based upon information learned through this outstanding discovery
`
`and will provide supplements, modifications and/or amendments in its Final
`
`Infringement Contentions that will be due after the Court issues its Markman order.
`V. DIRECT AND INDIRECT INFRINGEMENT
`
`For the reasons set forth in NantWorks’s First Amended Complaint, for
`
`example, Defendants directly infringe the Asserted Claims under 35 U.S.C. § 271(a),
`
`Defendants induce the infringement of others under 35 U.S.C. § 271(b), and
`
`Defendants contribute to the infringement of others under 35 U.S.C. § 271(c).
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`4
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS)
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 4 of 88
`
`

`

`
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`Defendants also infringe each method claim of the Asserted Claims because
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`Defendants have performed each and every step of the Asserted Claims at least
`
`through testing and/or use by their employees, among other ways. Defendants also
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`infringe those claims by providing the BoA App and the Accused Products to their
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`customers and encouraging those customers to use the products in an infringing
`
`manner that meets each and every step of the charted method claims.
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`With respect to the ’252, ’897, ’278, and ’004 Patents, which involve steps
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`performed using the BoA App on a customer’s mobile device, Defendants are also
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`liable for infringement under 35 U.S.C. § 271(a) of each such method claim because
`
`BoA conditions the customer’s use of the mobile check deposit functionality of the
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`BoA App, and receipt of associated benefits (e.g., the ability to remotely deposit
`
`checks using a mobile device), on the customer’s performance of such steps. For
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`example, BoA conditions the customer’s use of the mobile banking application
`
`through its Mobile Check Deposit Terms and Conditions, which are provided to each
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`customer upon the customer’s enrollment to the BoA mobile banking application, and
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`which the customer must accept in order to utilize the application. The Mobile Check
`
`Deposit Terms and Conditions dictate the hardware and software to be utilized by the
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`customer and dictates the responsibilities of a customer with regard to capturing an
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`image of a check using a camera-enabled mobile device and transferring such an
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`image to BoA for image processing. The customer’s use of the mobile banking
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`application is further conditioned due to the design and functionality of the BoA
`
`Accused Products. For example, actions performed at a customer’s mobile device,
`
`such as capturing an image of a check and transferring such an image are necessary
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`technological prerequisites in the customer’s participation in BoA’s mobile deposit
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`services. BoA also establishes the manner and timing of performance by which a
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`customer utilizes the BoA mobile banking application to perform mobile check
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`deposits. BoA establishes such manner and timing of performance through its Mobile
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`Check Deposit Terms and Conditions and through BoA’s design of the functionality
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`5
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS)
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 5 of 88
`
`

`

`
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`of the BoA mobile banking application, as described in this paragraph. BoA further
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`establishes the manner and timing of its customers’ performance by providing
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`detailed, step-by-step instructions for a customer to perform to perform certain steps
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`at the customer’s mobile device to perform a mobile check deposit and receive the
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`associated benefits of BoA’s mobile banking
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`services.
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` See
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`e.g.,
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`https://www.bankofamerica.com/online-banking/mobile-and-online-banking-
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`features/mobile-check-deposit/; https://www.youtube.com/watch?v=-cGT_khFQsQ.
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`NantWorks’s investigation into Defendants’ infringing activities with respect
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`to the Accused Products is ongoing, and NantWorks accordingly reserves the right to
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`amend and/or supplement these assertions based upon continued discovery and
`
`investigation.
`VI. DOCTRINE OF EQUIVALENTS
`
`As preliminarily set forth in the attached claim charts, NantWorks contends that
`
`any element found not to be literally infringed by Defendants is infringed under the
`
`doctrine of equivalents because the differences, if any, between the claim inventions
`
`and Defendants’ infringement are insubstantial and the Accused Products perform
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`substantially the same function in substantially the same way to achieve substantially
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`the same result as such elements. NantWorks further reserves its right to amend
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`and/or modify its infringement theories under the doctrine of equivalents as discovery
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`in this case progresses, and in particular after it has been provided with an opportunity
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`to inspect and review Defendants’ proprietary and confidential technical information
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`for the Accused Products, including without limitation source code for the Accused
`
`Products. NantWorks will provide such amendments and/or modifications in its Final
`
`Infringement Contentions.
`VII. NANTWORKS PRACTICING PRODUCTS
`
`The NantWorks’ Mobile Check Deposit Demo Application provided to BoA
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`practices the following Asserted Claims.
` U.S. Patent No. 9,031,278 (the “’278 Patent”): Claims 1 and 3-5
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`6
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS)
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 6 of 88
`
`

`

`
`
` U.S. Patent No. 7,881,529 (the “’529 Patent”): Claims 1-4, 6-7, 9, 18-21,
`and 23-24
` U.S. Patent 7,899,252 (the “’252 Patent”) : Claims 18-19, 26-29, 31-34
` U.S. Patent No. 8,326,038 (the “’038 Patent”): Claims 1-6, 8-10, 13-16, 19-
`22
` U.S. Patent No. 8,463,030 (the “’030 Patent”) : Claims 1-4, 6-7, 13, 19, 21-
`22, 25-27, 29-32, and 35-37
` U.S. Patent No. 8,520,897 (the “’897 Patent”): Claims 25-26, 29-34, and 38-
`42
` U.S. Patent No. 9,324,004 (the “’004 Patent”): Claims 1-3, 6, 11, 15, and 18
` U.S. Patent No. 8,478,036 (the “’036 Patent”) Claims 1-2, 10, 12-15, and
`19
`
`NantWorks will make available for inspection the source code that shows the
`
`operation of the NantWorks’ Mobile Check Deposit Demo Application.
`VIII. WILLFUL INFRINGEMENT
`
`NantWorks contends that BoA’ infringement of the Asserted Patents is willful
`
`for the reasons set forth in NantWorks’s First Amended Complaint and herein.
`
`BoA had knowledge of each of the Asserted Patents prior to the filing of this
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`Complaint. For example, on November 2, 2011, NantWorks notified nine BoA
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`employees, including Matt Calman, that “NantWorks owns patents covering linking
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`objects to content via mobile phones and visual identification, including image
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`recognition, barcodes, QR codes, other symbols, optical character recognition, and
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`augmented reality” and specifically identified, among others, the ’529 and ’252
`
`patents as patents that “cover capturing an image of an object, identifying the object
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`based on image/object recognition, barcode, or symbol recognition, providing an
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`information address related to the object, and accessing information at that address.”
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`BoA was thus well aware of these patents and their applicability to their and their
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`customers’ use of their mobile check deposit feature. In fact, BoA cited the same
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`7
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS)
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 7 of 88
`
`

`

`
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`patents that NantWorks identified on November 2, 2011 during the prosecution of
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`patents BoA was pursuing at that time relating to their mobile check deposit feature.
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`Specifically, BoA cited these patents in an Information Disclosure Statement for a
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`patent application naming Matt Calman as an inventor submitted to the United States
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`Patent and Trademark Office on January 1, 2012 – just two months after NantWorks
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`informed Mr. Calman and others at BoA of its patents. Thus, Mr. Calman – a Senior
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`Vice President and Research and Development Executive at BoA who was involved
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`in developing new banking applications – was well aware of these patents and their
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`applicability to BoA’s mobile check deposit solution.
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`In October 2016, NantWorks informed BoA of all of the asserted patents,
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`including the ’529 and ’252 patents it had previously identified to BoA on November
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`2, 2011 as well as additional NantWorks patents from the same family of image
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`recognition patents that issued after November 2, 2011. Those patents included the
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`’038, ’030, ’036, ’897, ’278, and ’004 patents. As a result, BoA had knowledge of
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`each of the Asserted Patents by October 2016, and knowledge that each of the
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`Asserted Patents, including the ’529 and ’252 patents that it had been aware of since
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`at least 2011, were applicable to BoA’s mobile check deposit solution.
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`On July 23, 2018, representatives for NantWorks met with representatives for
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`BoA to present the issues of BoA’s misappropriation of NantWorks’s intellectual
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`property and BoA’s breaches of its prior agreements. At that time NantWorks made
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`BoA aware of its infringement of various patents within NantWorks’s patent portfolio
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`directed to computer image recognition, including the ’252 and ’004 patents.
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`NantWorks attempted to resolve this dispute without resorting to litigation.
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`Specifically, NantWorks scheduled and attended several in-person meetings with
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`BoA to discuss BoA’s unlawful misappropriation and use of NantWorks’s intellectual
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`property and BoA’s breaches of its contractual obligations. Despite NantWorks’s
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`efforts to reach an amicable resolution, the parties were unable to reach a resolution.
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`8
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS)
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 8 of 88
`
`

`

`
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`Despite having actual notice of the Asserted Patents and knowledge of its
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`infringement of the Asserted Patents, BoA has continued to supply the BoA App and
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`Accused Products to its customers. BoA had actual knowledge of its and its
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`customers’ infringement of the Accused Patents or was willfully blind thereto.
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`Notwithstanding BoA’s actual notice of infringement, BoA has provided and
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`continues to provide the BoA Accused Products to its customers that make or use the
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`BoA Accused Products with knowledge of or willful blindness to the fact that its
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`actions will induce others, including those customers, to directly infringe the Accused
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`Patents. BoA’s acts of infringement constitute willful, egregious misconduct, and
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`consequently NantWorks is entitled to a discretionary increase of its damages award
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`up to three times the amount found or assessed, costs, and attorney’s fees under 35
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`U.S.C. § 284.
`IX. S.P.R. 2.2 DOCUMENT PRODUCTION
`
`Pursuant
`
`to S.P.R. 2.2.1, NantWorks has produced documents at
`
`NANT_BOA00000300 to NANT_BOA00006690.
`
`Pursuant
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`to S.P.R. 2.2.2, NantWorks has produced documents at
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`NANT_BOA00006691 to NANT_BOA00006919.
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`Pursuant to S.P.R. 2.2.3, NantWorks will make the source code that shows the
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`operation of the NantWorks’s Mobile Check Deposit Demo Application available for
`inspection.1
`
`
`
`
`1 The parties are currently negotiating a protective order with provisions relating to
`source code. NantWorks will make its source code available once a protective order
`has been entered in this action.
`
`
`9
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS)
`
`
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 9 of 88
`
`

`

`Respectfully submitted,
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`
`By
`/s/ Todd M. Briggs
`James R. Asperger
`Kevin P.B. Johnson
`Todd M. Briggs
`Eric Huang
`
`Attorneys for Plaintiff, NANTWORKS,
`LLC and NANT HOLDINGS IP, LLC
`
`
`
`10
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS)
`
`
`
`DATED: March 4, 2021
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 10 of 88
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 4, 2021, I caused a true and correct copy of the
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`foregoing document to be served via e-mail to all counsel of record who have
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`appeared in this matter.
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`
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`DATED: March 4, 2021
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`
`
`By
`/s/ Brice C. Lynch
`Brice C. Lynch
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`
`
`
`
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`
`
`11
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS)
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`1 2 3 4 5 6 7 8 9
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`BANK OF AMERICA
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`IPR2021-01080
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`Ex. 1010, p. 11 of 88
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`

`

`EXHIBIT 5
`
`Infringement of U.S. Patent 8,463,030 (the “’030 Patent”)
`by the Bank of America Accused Products
`
`This chart describes infringement by the Bank of America Mobile Banking App (the
`“BoA App”), its mobile check deposit feature, and the mobile devices, computers, servers,
`software, and other infrastructure related to and/or associated with the BoA App and its mobile
`check deposit feature (collectively, the “BoA Accused Products”). The BoA Accused Products
`directly and/or indirectly infringe at least claims 1-4, 6-7, 13, 16-19, 21-22, 25-27, 29-32, and
`35-37 of the ’030 Patent literally and under the doctrine of equivalents. As described below,
`every accused limitation is directly performed and controlled by the BoA App in combination
`with Bank of America’s computer, servers, software, and other infrastructure, such that Bank of
`America makes and uses each asserted claim, and thereby directly infringing each asserted claim.
`Additionally, and in the alternative, a user of the BoA app to perform mobile check deposit uses
`each asserted claim by putting the system as a whole into service and thereby directly infringes
`each asserted claim.
`
`The claim charts below provide examples of how the BoA Accused Products infringe the
`asserted claims. NantWorks does not have access to BoA’s confidential technical documents
`and source code that fully describe how the BoA Accused Products operate and all of the
`different ways in which they infringe the claims. NantWorks anticipates that it may learn of
`additional ways in which the BoA Accused Products infringe the asserted claims and reserves the
`right to supplement its infringement contentions to include all additional ways in which the BoA
`Accused Products infringe the asserted claims.
`
`Claims
`
`Claim 1. [1.pre] A
`transaction system
`comprising:
`
`Infringement by the BoA Accused Products
`
`To the extent the preamble is limiting, the BoA Accused
`Products meet this limitation. See for example:
`
`The BoA Accused Products include a transaction system as
`detailed in the claim limitations below.
`
`For example, the system includes a mobile device such as an
`iPhone, Android mobile device, or tablet computer. See, e.g.:
`
`1
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 12 of 88
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`

`

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`
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`https://apps.apple.com/us/app/bank-of-america-mobile-
`banking/id284847138#?platform=iphone
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`
`2
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`BANK OF AMERICA
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`IPR2021-01080
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`Ex. 1010, p. 13 of 88
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`

`

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`
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`https://play.google.com/store/apps/details?id=com.infonow.bof
`a
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`For example, additionally and/or in the alternative, the system
`includes the BoA App operating on a customer’s mobile
`device and BoA’s computers and servers computers. The BoA
`App communicates with these computers and servers. On
`information and belief, the BoA App operating on a
`customer’s mobile device and/or BoA’s computers and
`servers perform image and data processing functions
`associated with the BoA App. The computers and servers also
`communicate with the BoA App to perform functions
`including verification, authentication, encryption, and data
`integrity. See, e.g.:
`
`
`https://www.bankofamerica.com/online-banking/mobile-
`check-deposit-faqs/
`
`
`
`3
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 14 of 88
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`

`

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`
`
`https://www.bankofamerica.com/security-center/faq/online-
`banking/
`
`To the extent that Defendants contend that the BoA Accused
`Products do not literally infringe the limitations of this claim,
`such differences are insubstantial and thus the claim
`limitations are satisfied under the doctrine of equivalents.
`The BoA Accused Products meet this limitation.
`
`For example. the BoA App operates on a mobile device such
`as an iPhone, Android mobile device, or tablet computer. See,
`e.g.:
`
`
`
`[1.A] a mobile device
`configured to acquire data
`related to an object;
`
`4
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`BANK OF AMERICA
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`IPR2021-01080
`
`Ex. 1010, p. 15 of 88
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`

`

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`https://apps.apple.com/us/app/bank-of-america-mobile-
`banking/id284847138#?platform=iphone
`
`
`5
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 16 of 88
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`

`

`
`
`
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`
`
`https://play.google.com/store/apps/details?id=com.infonow.bof
`a
`
`For example, the mobile device, via its integrated camera,
`obtains data in the form of an image of a front and back of a
`check to be deposited by a Bank of America customer and
`provides that image data to the BoA App. See, e.g.:
`
`
`
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`6
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 17 of 88
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`

`

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`
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`https://www.bankofamerica.com/online-banking/mobile-and-
`online-banking-features/mobile-check-deposit/
`
`For example, additionally, and/or in the alternative, on
`information and belief, the BoA App operating on a
`customer’s mobile device and/or BoA’s computers and
`servers performs a data processing operation on at least a
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`7
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 18 of 88
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`

`

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`portion of the captured image to produce data, the data
`including at least recognized symbolic content within the
`image of the check. On information and belief this data
`includes MICR symbols, alphanumeric characters
`corresponding to the check payer and payee names, the dollar
`amount to be transferred to the payee, and routing and account
`numbers associated with the payer displayed on the check
`image. On information and belief, this data also includes the
`payer’s signature and the payee’s endorsement of the check.
`See, e.g.:
`
`
`https://www.bankofamerica.com/online-banking/mobile-
`check-deposit-faqs/
`
`
`
`
`8
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`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 19 of 88
`
`

`

`
`
`
`
`
`https://www.bankofamerica.com/online-banking/mobile-and-
`online-banking-features/mobile-check-deposit/
`
`To the extent that Defendants contend that the BoA Accused
`Products do not literally infringe the limitations of this claim,
`such differences are insubstantial and thus the claim
`limitations are satisfied under the doctrine of equivalents.
`The BoA Accused Products meet this limitation.
`
`For example, the BoA App operates on a mobile device such
`as an iPhone, Android mobile device, or tablet computer. See,
`e.g.:
`
`
`
`[1.B] an object
`identification platform
`configured to obtain the
`acquired data, recognize the
`object as a target object
`based on the acquired data,
`
`
`
`https://apps.apple.com/us/app/bank-of-america-mobile-
`banking/id284847138#?platform=iphone
`
`
`9
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 20 of 88
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`

`

`
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`
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`
`
`https://play.google.com/store/apps/details?id=com.infonow.bof
`a
`
`For example, the BoA App receives, via the mobile device on
`which it operates and an associated camera, a digital image of
`a front and back of a check to be deposited by a Bank of
`America customer and user of the BoA App. See, e.g.:
`
`
`
`
`10
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`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 21 of 88
`
`

`

`
`
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`
`
`For example, on information and belief, the BoA App
`operating on a customer’s mobile device and/or BoA’s
`computers and servers receive the captured digital image from
`the mobile device via the BoA App and perform image
`processing and verification functions on the received image.
`On information and belief, the BoA Accused Products utilize
`the received check image and determined symbol content to
`identify that a valid check document is present in the image
`and to distinguish the check from non-accepted documents
`using a database that stores data characteristics of an accepted
`check document. On information and belief, the BoA Accused
`Products includes at least a database storing object image
`information associated with the check types that may be
`processed by the BoA Accused Products (e.g., personal
`checks, business checks, government/treasury checks,
`cashier’s checks) and the BoA accused products perform a
`query of such database to determine whether the received
`check constitutes such a check type.
`
`
`
`
`https://www.bankofamerica.com/online-banking/mobile-
`check-deposit-faqs/
`
`Additionally and in the alternative, on information and belief,
`the BoA Accused Products include at least a database storing
`recognizable MICR symbols parameters for recognizing such
`MICR symbols. On information and belief, the BoA App
`operating on a customer’s mobile device and/or BoA’s
`computers and servers receive the captured digital image and
`MICR symbols contained therein from the mobile device via
`the BoA App and perform image processing and verification
`functions on the received image and MICR symbols. On
`information and belief, the BoA Accused Products perform a
`
`11
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 22 of 88
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`

`

`
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`query of such database to determine whether the received
`check image contains recognizable MICR symbols.
`
`
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`
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`https://www.bankofamerica.com/online-banking/mobile-and-
`online-banking-features/mobile-check-deposit/
`
`
`
`
`12
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 23 of 88
`
`

`

`
`
`
`
`
`To the extent that Defendants contend that the BoA Accused
`Products do not literally infringe the limitations of this claim,
`such differences are insubstantial and thus the claim
`limitations are satisfied under the doctrine of equivalents.
`
`For example, to the extent that Defendants contend that the
`BoA Accused Products do have an identification platform to
`recognize a target object , e.g, the BoA Accused Products do
`not store all possible known check formats in a database as
`targets, the Accused Products would infringe under the
`doctrine of equivalents because the BoA Accused Products
`store enough information and recognition parameters to
`determine the type of check being cashed and if it is a type of
`check that can be cashed. Whether the BoA Accused Products
`have a database of all known check types and recognition
`parameters instead of database with only important check
`types and parameters, the manner in which they are used and
`operate is an insubstantial difference: both scenarios
`accomplish substantially the same function of storing enough
`information to allow check cashing, in substantially the same
`way, i.e., by storing information regarding checks so such
`information can be compared to the check being cashed, and
`accomplish substantially the same result of having an ability to
`store enough information to compare the check to be cashed to
`known check types so that it can be recognized for cashing.
`
`The BoA Accused Products meet this limitation.
`
`For example, when a user performs a mobile check deposit
`using the BoA Accused Products, the BoA App operating on a
`customer’s mobile device and/or BoA’s computers and
`servers associate the deposit and associated check with
`information including a transaction/confirmation number, the
`captured image of the check, and deposited amount. See, e.g.:
`
`
`13
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`[1.C] and determine object
`information associated with
`the target object; and
`
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 24 of 88
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`

`

`
`
`Deposit To
`Hi My 2,1 1i
`
`2 ~
`
`Checking
`A:mlable Balance: $68696
`
`Amount
`
`Enter Amount
`
`>
`
`CANCEL
`
`CONTINUE
`
`
`
`
`
`
`
`Deposit Receipt E (D
`
`—o——o—4
`
`Your deposit is processing
`
`Please write "Deposned" on you! Check and keep It for one
`week,
`
`Funds deposited before 9 pm ET are generally available lor
`Withdrawal by the next busmess clay.
`—m
`m-
`—
`3;. may“,
`f.“ .
`quh—fir—c can:
`_ I,
`.“I’l-Il‘l-
`
`-em .u-suv— m-a“; ”in.
`
`
`
`Tap images to save, print or email
`
`Deposited To
`
`Total Deposit
`
`Credit Pending,
`Posts On
`
`Checking
`
`$575.00
`
`4/25/2020
`
`
`
`
`
`
`
`BANK OF AMERICA
`
`14
`14
`
`IPR2021-01080
`
`Ex. 1010, p. 25 of 88
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 25 of 88
`
`

`

`
`
`
`
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`
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`
`
`https://www.bankofamerica.com/online-banking/mobile-and-
`online-banking-features/mobile-check-deposit/
`
`
`
`15
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1010, p. 26 of 88
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`

`

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`[1.D] associate the target
`with target information
`pertinent to the target; and
`
`
`
`
`To the extent that Defendants contend that the BoA Accused
`Products do not literally infringe the limitations of this claim,
`such differences are insubstantial and thus the claim
`limitations are satisfied under the doctrine of equivalents.
`The BoA Accused Products meet this limitation.
`
`For example, when a user performs a mobile check deposit
`using the BoA Ac