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`George C. Lombardi (pro hac vice)
`glombardi@winston.com
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601-9703
`Telephone: (312) 558-5600
`Facsimile:
`(312) 558-5700
`
`E. Danielle T. Williams (pro hac vice)
`dwilliams@winston.com
`WINSTON & STRAWN LLP
`300 South Tryon Street, 16th Floor
`Charlotte, NC 28202
`Telephone: (704) 350-7700
`Facsimile:
`(704) 350-7800
`
`
`
`
`Dustin J. Edwards (pro hac vice)
`dedwards@winston.com
`WINSTON & STRAWN LLP
`800 Capital St., Suite 2400
`Houston, TX 77002-2925
`Telephone: (713) 651-2600
`Facsimile:
`(713) 651-2700
`
`Michael A. Tomasulo (SBN: 179389)
`mtomasulo@winston.com
`WINSTON & STRAWN LLP
`333 S. Grand Avenue, 38th Floor
`Los Angeles, CA 90071-1543
`Telephone: (213) 615-1700
`Facsimile:
`(213) 615-1750
`
`
`UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`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.
`
`
`
`
`
`
`
`Case No. 2:20-cv-07872-GW-PVC
`
`Honorable George H. Wu
`
`DEFENDANTS’ PRELIMINARY
`INVALIDITY CONTENTIONS FOR
`U.S. PATENT NOS. 7,881,529,
`7,899,252, 8,326,038, 8,463,030,
`8,478,036, 8,520,897, 9,031,278, AND
`9,324,004
`
`Complaint Served: August 31, 2020
`
`
`CONTAINS MATERIAL
`DESIGNATED “CONFIDENTIAL –
`ATTORNEY EYES ONLY” IN
`SECTION VII.
`
`
`
`
`
`
`1
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`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 1 of 114
`
`

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`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`In accordance with S.P.R. 2.5 and the schedule adopted by the Court (Dkt. 91),
`
`Defendants Bank of America Corporation and Bank of America, N.A. (together
`“Defendants” or “Bank of America”) hereby disclose their Preliminary Invalidity
`Contentions and associated document production.
`I.
`GENERAL STATEMENT AND RESERVATION OF RIGHTS
`On March 4, 2021, Plaintiffs Nantworks, LLC and Nant Holdings IP, LLC
`(collectively “Nantworks” or “Plaintiff”) served Bank of America with its Preliminary
`Infringement Contentions and asserted the below listed patent claims (“Asserted
`Claims”):
`
`Asserted Patent
`
`Asserted Claims
`
`U.S. Pat. No. 7,881,529 (“’529 patent”) Claims 1–4, 6–7, 9, 18–21, and 23–24
`
`U.S. Pat. No. 7,899,252 (“’252 Patent”) Claims 18–19, 26–29, and 31–34
`
`
`
`U.S. Pat. No. 8,463,030 (“’030 Patent”) Claims 1–4, 6–7, 13, 16–19, 21–22, 25–
`27, 29–32, and 35–37
`
`U.S. Pat. No. 8,326,038 (“’038 Patent”) Claims 1–6, 8–10, 13–16, and 19–22
`
`U.S. Pat. No. 8,478,036 (“’036 Patent”) Claims 1–2, 10, 12–15, and 19
`
`U.S. Pat. No. 8,520,897 (“’897 Patent”) Claims 25–26, 29–34, and 38–42
`
`U.S. Pat. No. 9,324,004 (“’004 Patent”) Claims 1–3, 6, 11, 15, and 18
`
`U.S. Pat. No. 9,031,278 (“’278 Patent”) Claims 1 and 3–5
`
`Subject to Bank of America’s reservation of rights herein, with respect to each
`
`asserted claim in Plaintiff’s Preliminary Infringement Contentions, Bank of America
`provides these Preliminary Invalidity Contentions to:
`• S.P.R. 2.5.1. The identify of each item of prior art that anticipates each
`asserted claim or renders it obvious (see Section III);
`
`
`
`
`
`-1-
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 2 of 114
`
`

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`• S.P.R. 2.5.2. Whether each item of prior art anticipates each asserted claim
`or renders it obvious. For obviousness, an explanation of why the prior art
`renders the asserted claim obvious, including an identification of any
`combinations of prior art showing obviousness (see Section IV);
`• S.P.R. 2.5.3. A chart identifying where specifically in each alleged item of
`prior art each limitation of each asserted claim is found, including for each
`limitation that such party contends is governed by 35 U.S.C. § 112 ¶ 6, the
`identity of the structure(s), act(s), or material(s) in each item of prior art
`that performs the claimed function. (see Exhibits A-01-H-31); and
`• S.P.R. 2.5.4. Any grounds of invalidity based on 35 U.S.C. § 101,
`indefiniteness under 35 U.S.C. § 112 ¶ 2 or enablement or written
`description under 35 U.S.C. § 112 ¶ 1 of any of the asserted claims) (see
`Sections V and VI).
`
`Bank of America’s discovery and investigation in connection with this action is
`continuing, thus these disclosures are based on information obtained to date. To the
`extent that Bank of America obtains additional information, Bank of America reserves
`the right to supplement and/or amend these Preliminary Invalidity Contentions (and, if
`required, request leave of the Court to do the same). Bank of America reserves the right
`to amend these Preliminary Invalidity Contentions should Plaintiff provide the
`information that it failed to provide in its S.P.R. 2.1 disclosures or in response to Bank
`of America’s Discovery requests or if Plaintiff amends or supplements its S.P.R. 2.1
`disclosures in any way. Furthermore, Bank of America is unaware of any prior art
`references that any of its third-party vendors are aware of or possess, but Bank of
`America is diligently investigating this and reserves its right to amend these Preliminary
`
`Invalidity Contentions with such prior art.
`Plaintiff’s disclosures under S.P.R. 2.1 and 2.2 are deficient in numerous
`respects. For example, Exhibit 1 of NantWorks’ Infringement Contentions is missing
`
`
`
`
`
`-2-
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 3 of 114
`
`

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`the limitation “extracting symbol information based on the symbolic content according
`to symbol type.” Another example is that Plaintiff has failed to identify specifically
`where each element of each Asserted Claim is found within each accused
`instrumentality, as required by S.P.R. 2.1.3. Yet another example is that Plaintiff’s
`doctrine of equivalents contentions, which bookend most if not all asserted claims
`limitations, allege without explanation that the “differences are insubstantial and thus
`the claim limitations are satisfied under the doctrine of equivalents.” Plaintiff’s
`allegations under the doctrine of equivalents are deficient and lack the detail required
`by S.P.R. 2.1. NantWorks failed to provide any analysis regarding the differences
`between the Accused Products and the asserted claims or any explanation as to how
`those alleged differences are insubstantial.
`Deficiencies in Plaintiff’s Infringement Contentions have made it difficult for
`Bank of America to understand Plaintiff’s infringement and claim construction
`
`positions. The lack of detail in Plaintiff’s Infringement Contentions has prejudiced Bank
`of America’s ability to prepare these Preliminary Invalidity Contentions by forcing it to
`speculate as to Plaintiff’s actual position on Bank of America’s alleged infringement.
`Therefore, these Preliminary Invalidity Contentions are based in whole or in part on the
`present understanding of the Asserted Claims and Plaintiff’s apparent positions as to
`the scope of the Asserted Claims as applied in its S.P.R. 2.1 disclosures. Bank of
`America further reserves the right to modify or add additional contentions in light of
`Plaintiff’s failure to provide infringement contentions that comply with the level of
`disclosure required by the Standing Patent Rules that were used by former Judge
`Guilford and that are currently incorporated into Judge Kronstadt’s standing order for
`patent cases. If Plaintiff provides amended contentions that comply with the Standing
`
`Patent Rules, Bank of America reserves the right to supplement or modify its invalidity
`contentions.
`These disclosures, including the accompanying claim charts, were prepared prior
`
`
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`
`
`-3-
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 4 of 114
`
`

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`to the Court’s claim construction ruling. As such, these disclosures are based on the
`claim constructions of Plaintiff to the extent those constructions can be discerned from
`Plaintiff’s March 4, 2021 Preliminary Infringement Contentions and also to the extent
`that those constructions can be understood in light of the positions taken during
`prosecution of the Asserted Patents and related applications. These disclosures are not,
`and nothing in these disclosures should be seen as, an endorsement, acquiescence, or
`acceptance of any of Plaintiff’s apparent claim constructions or an assertion of
`particular constructions by Bank of America. Moreover, particular constructions
`advocated by Plaintiff or adopted by the Court may give rise to additional defenses not
`reflected herein. Bank of America reserves the right to assert such defenses in the
`future. Furthermore, by making these Preliminary Invalidity Contentions, Bank of
`America does not concede the adequacy of Plaintiff’s Infringement Contentions or that
`any assertion or construction inherent in these contentions is correct.
`
`Bank of America expressly reserves the right to propose alternative constructions
`to those advocated by Plaintiff and to challenge and contest Plaintiff’s claim
`construction positions. Bank of America reserves the right to take positions that vary
`from any claim construction positions expressed or applied herein. Further, in addition
`to invalidity under 35 U.S.C. §§ 102 and/or 103, Bank of America contends that one or
`more of the claims of the Asserted Patents are invalid under 35 U.S.C. §§ 101 and 112.
`Bank of America reserves the right to amend and/or supplement these Preliminary
`Invalidity Contentions based on information learned through further discovery of
`Plaintiff and third parties, including for example, claim construction positions taken by
`Plaintiff, information pertaining to the development and description of the claimed
`subject matter by the named inventor (and assignments thereof) listed on the Asserted
`
`Patents, and any third-party systems. Bank of America’s positions on the invalidity of
`particular claims will also depend on how those claims are construed by the Court. In
`the absence of a claim construction ruling, these Preliminary Invalidity Contentions are
`
`
`
`
`
`-4-
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 5 of 114
`
`

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`made in the alternative and are not necessarily intended to be consistent with each other
`and other contentions. Bank of America reserves the right to amend these Preliminary
`Invalidity Contentions upon receipt of the Court’s claim construction order in
`accordance with S.P.R. 4.2.
`These Preliminary Invalidity Contentions do not address any claims or theories
`of infringement other than those that Bank of America understands to be addressed in
`Plaintiff’s Preliminary Infringement Contentions. To the extent that Plaintiff asserts
`additional claims or infringement theories, or revises its Infringement Contentions,
`Bank of America reserves the right to amend or supplement these Preliminary Invalidity
`Contentions. Bank of America further reserves the right to amend or supplement these
`Preliminary Invalidity Contentions as discovery in these cases is ongoing.
`Prior art not included in these contentions, whether or not known to Bank of
`America at this time, may become relevant depending on the positions Plaintiff asserts
`
`and the claim constructions the Court adopts. Bank of America’s ongoing investigations
`may also uncover additional prior art, including responses to any forthcoming third-
`party subpoenas. For example, for any given company’s commercial products, Bank of
`America anticipates that additional documentation relating to these products will be
`discovered, and Bank of America reserves the right to rely on such documentation to
`further support these Invalidity Contentions. Bank of America accordingly reserves the
`right to modify these Invalidity Contentions by adding or withdrawing prior art and/or
`modifying any of the referenced claim charts in light of the Court’s claim construction
`ruling, any amended or supplemental infringement contentions by Plaintiff, any party
`admissions or admissions by any named inventor concerning the scope of the claims or
`teachings of the prior art, or any positions taken by Plaintiff in this or related litigation,
`
`reexamination, or other proceeding, or to avoid unfair prejudice from Plaintiff’s failure
`to timely comply with its disclosure obligations. Additional obviousness combinations
`of the references identified in these disclosures are possible, and Bank of America
`
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`
`
`-5-
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 6 of 114
`
`

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`reserves the right to use any such combination(s) in these actions. In particular, Bank
`of America is currently unaware of the extent, if any, to which Plaintiff will contend
`that limitations of the claims at issue are not disclosed in the art identified by Plaintiff
`as anticipatory, and the extent to which Plaintiff will contend that elements not disclosed
`in the specifications of the Asserted Patents and related applications would have been
`known to persons of ordinary skill in the art at the relevant time. To the extent that an
`issue arises with any such limitations, Bank of America reserves the right to identify
`other references that would have made such limitations obvious in view of the relevant
`disclosures.
`With regards to priority date, Plaintiff states in its S.P.R. 2.1 disclosures the
`following:
`
`The Asserted Claims of the Asserted Patents are entitled to at
`least the earliest U.S. or foreign priority dates listed on the
`face of each patent or identified in the prosecution histories
`
`of each patent. In particular, the ’278, ’529, ’252, ’038, ’030,
`’897, ’004, and ’036 Patents are entitled to a priority date not
`later than November 6, 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.
`
`Because Plaintiff’s investigation is ongoing, Bank of America reserves the right
`to challenge the November 6, 2000 priority date and any alleged date of conception
`earlier than the November 6, 2000 filing date of the provision application. In particular,
`and further discussed below, a preliminary analysis indicates that Provisional
`Application No. 60/246,295 does not provide written description support for certain
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`claimed features of the ’529 patent. Indeed, it also appears that the ’252, ’030, ’038,
`’036, ’897, ’004, and ’278 patents suffer from similar maladies. Bank of America also
`reserves the right to amend these contentions upon the Court’s determination of the
`priority date(s) of the Asserted Claims. Bank of America further reserves the right to
`
`
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`
`
`-6-
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 7 of 114
`
`

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`use related patents in the alleged change of priority of the Patents-in-Suit as prior art
`upon the Court’s determination of the priority date(s) of the Asserted Claims. Discovery
`and investigation as to public use or on-sale bar under 35 U.S.C. § 102(b) or the
`Applicant’s failure to comply with 35 U.S.C. § 112 are also ongoing. Bank of America
`therefore reserves the right to further supplement or amend these Invalidity Contentions
`if and when such further information becomes available.
`The identity of each item of prior art relied upon in this disclosure is listed below
`and in the attached claim charts, including prior art systems, publications, and patents.
`Each item of prior art is identified in accordance with S.P.R. 2.5.1. Except for copies of
`prior art already in Plaintiff’s possession, custody, or control, the publications
`describing the prior art systems have been produced to Plaintiff to the extent located,
`and to the extent that such systems are in Bank of America’s possession, they have been
`produced and/or made available for inspection in accordance with S.P.R. 2.6.2. Subject
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`to the foregoing, the anticipatory references cited in Exhibits A-01-H-31 disclose the
`elements of the Asserted Claims (either explicitly and/or inherently) and may be relied
`upon to show the state of the art in the relevant time frames. Further, the suggested
`obviousness combinations are in addition to Bank of America’s anticipation contentions
`and are not to be construed to suggest that any reference included in the combinations
`is not anticipatory on its own. Bank of America has endeavored to identify exemplary
`portions of the references based on presently available information and Plaintiff’s
`Infringement Contentions. The references, however, may contain additional support for
`particular claim limitations. Bank of America expressly reserves the right to rely on
`uncited portions of the prior art references, other documents, and expert testimony to
`provide context and/or to aid in understanding the cited portions of the references. In
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`instances of cumulative disclosure within a particular prior art reference, Bank of
`America may have cited a subset of those instances as opposed to citing each instance,
`and Bank of America reserves the right to rely on uncited instances of cumulative
`
`
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`
`
`-7-
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 8 of 114
`
`

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`disclosure. Where Bank of America cites to a particular figure in a reference, the citation
`should be understood to encompass the caption and description of the figure and any
`text relating to or discussing the figure. Conversely, where Bank of America cites to
`particular text referring to a figure, the citation should be understood to include the
`figure as well.
`Bank of America also incorporates by reference all assertions made by any party
`at any time that one or more of the Asserted Claims of the Asserted Patents are invalid
`or unenforceable for any reason, including without limitation all invalidity contentions
`asserted during prior litigations, reexaminations, and original prosecution of the
`Asserted Patents.
`II. BACKGROUND
`The Asserted Patents all claim priority to two provisional applications—
`Provisional Application No. 60/246,295, which was filed on November 6, 2000, and
`
`Provisional Application No. 60/317,521, which was filed on September 5, 2001. In its
`Preliminary Infringement Contentions, Plaintiff contends that the Asserted Claims of
`the Asserted Patents are entitled to a priority date of November 6, 2000, the filing date
`of the first provisional application, Provisional Application No. 60/246,295. Plaintiff
`bears the burden of proving, on a claim-by-claim basis, that the provisional application
`provides written description and enablement support for each and every limitation of
`the Asserted Claims. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
`1375, 1382 (Fed. Cir. 2015) (“A reference patent is only entitled to claim the benefit of
`the filing date of its provisional application if the disclosure of the provisional
`application provides support for the claims in the reference patent in compliance with §
`112, ¶ 1.” (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)); see also S.P.R.
`
`2.1.4 (requiring Plaintiff to disclose “[f]or any patent that claims priority to an earlier
`application, the priority date allegedly applicable to each asserted claim.”). Plaintiff
`has made no showing on this issue, let alone met its burden. Bank of America reserves
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`
`-8-
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 9 of 114
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`its right to challenge the priority date claimed by Plaintiff for the Asserted Patents.
`Indeed, it appears that the Asserted Claims cannot all claim priority to Provisional
`Application No. 60/246,295. A preliminary analysis indicates that Provisional
`Application No. 60/246,295 does not provide written description support for all of the
`elements in the Asserted Claims of the ’529 patent. Indeed, it also appears that the
`Asserted Claims of the ’252, ’030, ’038, ’036, ’897, ’004, and ’278 patents lack
`supporting disclosures in Provisional Application No. 60/246,295. For instance,
`Provisional Application No. 60/246,295 only discloses the use of symbols, e.g.,
`barcodes, to identify objects. The Asserted Claims, however, also cover using
`characteristics of an object, e.g., shape and color, to identify the object, and thus
`Provisional Application No. 60/246,295 does not provide written description support
`for those claims. Bank of America’s evaluation is ongoing and reserves the right to
`supplement its priority date analysis should Plaintiff suggest a date alternative to the
`
`November 6, 2000 date it asserted in its Infringement Contentions.
`The Asserted Patents generally relate to data capture and identification systems
`and processes. As just one example, the ’529 patent describes a process for identifying
`objects from digitally captured images that uses the objects’ characteristics to identify
`the object from a set of objects stored in a database. ’529 patent, Abstract. Another
`example is that the claims of the ’038 and ’030 patents cover certain transactions with
`an account based on target information. As yet another example is that the ’004 patent
`covers video streams instead of images. The Asserted Claims of the ’529, ’252, ’036,
`’004, and ’278 patents are subject to terminal disclaimers to overcome double-patenting
`rejections that such claims are not patentably distinct from the claims of U.S. Pat. No.
`7,016,532, whereby the Applicant disclaimed the terminal part of the statutory terms
`
`for the Asserted Patents beyond the term of U.S. Pat. No. 7,016,532. The Asserted
`Claims of the ’030, ’038, and ’897 patents are subject to terminal disclaimers to
`overcome double-patenting rejections that such claims are not patentably distinct from
`
`
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`
`
`-9-
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 10 of 114
`
`

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`the claims of U.S. Pat. No. 8,218,874, whereby the Applicant disclaimed the terminal
`part of the statutory terms for the Asserted Patents beyond the term of U.S. Pat. No.
`8,218,874.
`III. PRIOR ART UNDER S.P.R. 2.5.1
`Pursuant to S.P.R. 2.5, and in light of Plaintiff’s S.P.R. 2.1 Infringement
`Contentions and claim charts served on March 4, 2021, Bank of America identifies
`below the prior art presently known to Bank of America that anticipates and/or renders
`obvious the Asserted Claims of the Asserted Patents.1 In these Preliminary Invalidity
`Contentions, including the exhibits, any citation to a printed publication or other
`reference describing a prior art system should also be construed to include a reference
`to the prior art system itself. Each listed document or item became prior art at least as
`early as the dates set forth herein. Bank of America reserves the right to rely upon
`foreign counterparts of the U.S. Patents identified in these invalidity contentions, U.S.
`
`counterparts of foreign patents and foreign patent applications identified in these
`invalidity contentions, U.S. and foreign patents and patent applications corresponding
`to articles and publications identified in these invalidity contentions, and any systems,
`products, or prior inventions related to any of the references identified in these
`Preliminary Invalidity Contentions.
`In accordance with S.P.R. 2.5.3, the claim charts enclosed as the Exhibits A-01-
`H-31 identify specifically where each element of each asserted claim is disclosed in the
`prior art.
`A. Patent Prior Art to the Asserted Patents Under 35 U.S.C. §§ 102(a),
`(b), and/or (e)
`In accordance with S.P.R. 2.5.1, the following patents and patent publications
`
`are prior art under at least 35 U.S.C. §§ 102(a), (b), and/or (e). In accordance with
`
`1 With respect to the prior art produced under S.P.R. 2.6, one set of these documents is being served
`to Plaintiff on behalf of Bank of America. Some of the listed prior art materials are anticipated to be
`obtained by subpoena or pending request and will be produced once they are received.
`
`
`
`
`
`-10-
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 11 of 114
`
`

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`S.P.R. 2.5.3, the claim charts enclosed as Exhibits A-01-H-31 identify specifically
`where each element of each asserted claim is disclosed in the prior art.
`
`
`Patent/Application Publication No.
`1. U.S. Patent No. 6,512,919 B2 to
`Ogasawara (“Ogasawara”)
`2. U.S. Patent No. 5,546,475 to Bolle et al.
`(“Bolle”)
`3. U.S. Patent No. 6,947,571 B1 to Rhoads
`et al. (“Rhoads”)
`4. U.S. Patent Publication No.
`2002/0047867 A1 to Mault et al.
`(“Mault”)
`5. U.S. Patent No. 6,036,086 to Sizer, II et
`al. (“Sizer”)
`6. U.S. Patent No. 6,666,377 B1 to Harris
`(“Harris”)
`
`7. U.S. Patent No. 6,038,553 to Hyde, Jr.
`(“Hyde”)
`
`Country
`United States
`
`Issue/Publication
`Date (Filing Date)
`January 28, 2003
`(March 30, 1999)
`United States August 13, 1996
`(April 29, 1994)
`United States September 20, 2005
`(May 15, 2000)
`United States April 25, 2002
`(September 7, 2001)
`
`United States
`
`United States
`
`8. U.S. Patent No. 5,594,226 to Steger
`(“Steger”)
`9. U.S. Patent No. 6,505,776 B1 to Wilz,
`Sr. et al. (“Wilz”)
`
`10. U.S. Patent No. 6,069,696 to McQueen
`et al. (“McQueen”)
`11. U.S. Patent No. 6,722,569 B2 to Ehrhart
`et al. (“Ehrhart”)
`12. U.S. Patent No. 6,339,651 B1 to Tian et
`al. (“Tian”)
`13. U.S. Patent No. 6,977,743 B2 to Carlton
`
`(“Carlton”)
`14. JPH10289243 to Yamakita
`(“Yamakita”)2
`
`United States March 14, 2000
`(March 28, 1997)
`United States December 23, 2003
`(July 18, 2000)
`United States March 14, 2000
`(September 19,
`1997)
`January 14, 1997
`(September 5, 1995)
`January 14, 2003
`(September 12,
`2000)
`United States May 30, 2000
`(June 7, 1996)
`United States April 20, 2004
`(July 13, 2001)
`January 15, 2002
`(February 25, 1998)
`United States December 20, 2005
`(April 24, 2001)
`October 27, 1998
`(April 14, 1997)
`
`United States
`
`Japan
`
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`2 Bank of America prepared its charts for this reference based on a machine translation. Bank of
`America reserves its right to revise its charts based on a certified translation.
`
`
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`
`
`-11-
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 12 of 114
`
`

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`Country
`Japan
`
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`Patent/Application Publication No.
`15. JPH1091634 to Yuasa (“Yuasa”) 3
`16. U.S. Patent No. 6,351,735 B1 to Deaton
`et al. (“Deaton”)
`17. U.S. Patent No. 5,832,463 to Funk
`(“Funk”)
`18. U.S. Patent No. 6,097,834 to Krouse et
`al. (“Krouse”)
`19. U.S. Patent No. 6,473,517 B1 to Tyan et
`al. (“Tyan”)
`
`Issue/Publication
`Date (Filing Date)
`April 10, 1998
`August 15, 1996
`United States February 26, 2002
`(August 22, 1996)
`United States November 3, 1998
`(March 28, 1996)
`United States August 1, 2000
`(June 13, 1997)
`United States October 29, 2002
`(September 15,
`1999)
`United States August 13, 2002
`20. U.S. Patent No. 6,434,257 to Mohan et
`(July 9, 2001)
`al. (“Mohan”)
`B. Published Prior Art to the Asserted Patents Under 35 U.S.C. §§
`102(a), (b), and/or (e)
`Each of the following publications discloses and describes particular systems,
`
`products and/or programs that were publicly known, in public use, and/or on sale prior
`to the filing dates of the Asserted Patents. Thus, in addition to each publication itself
`serving as a prior art reference under 35 U.S.C. §§ 102(a) and/or (b), the various
`systems, products and/or programs described in the publications may also serve as
`grounds for invalidity under 35 U.S.C. §§ 102 and/or 103 because they were publicly
`known, in public use, and/or on sale, in which case it would have been obvious to a
`person of ordinary skill in the art to combine the actual systems in the public domain
`with the published documents describing those systems because the documents
`described the systems in public use and refer to them throughout. To the extent
`necessary, Bank of America has or will serve subpoenas and/or otherwise request
`
`further information pertaining to the products and/or software programs (and/or obtain
`the actual products and/or software programs themselves). To the extent necessary,
`
`3 Bank of America prepared its charts for this reference based on a machine translation. Bank of
`America reserves its right to revise its charts based on a certified translation.
`
`
`
`
`
`-12-
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`CASE NO. 2:20-CV-07872-GW-PVC
`
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1012, p. 13 of 114
`
`

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`Bank of America will amend and/or supplement these Preliminary Invalidity
`Contentions based on information received in response.
`In accordance with S.P.R. 2.5.1, the following publications, which are identified
`by title, date of publication, author and publisher, are prior art under at least 35 U.S.C.
`§§ 102(a), (b) and/or (e). In accordance with S.P.R. 2.5.3, the claim charts enclosed as
`Exhibits A-01-H-31 identify specifically where each element of each