Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 1 of 78 Page ID #:1
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`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
`
`Attorneys for Plaintiffs
`NANTWORKS, LLC and NANT HOLDINGS IP, LLC
`
`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-7872
`
`COMPLAINT FOR PATENT
`INFRINGEMENT, COPYRIGHT
`INFRINGEMENT, TRADE SECRET
`MISAPPROPRIATION, AND
`BREACH OF CONTRACT
`
`JURY TRIAL DEMANDED
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`Trial Date:
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`None Set
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`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1013, p. 1 of 78
`
`

`

`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 2 of 78 Page ID #:2
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`
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`Plaintiffs NantWorks, LLC and Nant Holdings IP, LLC (“Nant IP”)
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`(collectively, “NantWorks” or “Plaintiffs”), through their attorneys and for their
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`claims against Defendants Bank of America Corporation (“BAC”) and Bank of
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`America, N.A. (“BNA”) (collectively, “BoA” or “Defendants”), allege as follows:
`THE PARTIES
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`1.
`
`Plaintiff NantWorks, LLC is a Delaware limited liability company with
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`its principal place of business at 9920 Jefferson Boulevard, Culver City, CA 90232.
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`2.
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`Plaintiff Nant Holdings IP, LLC is a Delaware limited liability company
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`with its principal place of business at 9920 Jefferson Boulevard, Culver City, CA
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`90232.
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`3.
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`Upon information and belief, Defendant Bank of America Corporation
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`is a Delaware corporation with its principal place of business at Bank of America
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`Corporate Center, 100 N. Tryon Street, Charlotte, NC 28255.
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`4.
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`Upon information and belief, Defendant Bank of America, N.A. is a
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`federally chartered national banking association organized and existing under the laws
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`of the United States and a wholly owned subsidiary of Bank of America Corporation,
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`with its principal place of business at Bank of America Corporate Center, 100 N.
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`Tryon Street, Charlotte, NC 28255.
`JURISDICTION AND VENUE
`
`5.
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`This civil action contains claims for patent infringement arising under
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`the patent laws of the United States, 35 U.S.C. § 1 et seq.
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`6.
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`This civil action contains claims for copyright infringement arising under
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`the copyright laws of the United States, 17 U.S.C. § 1 et seq.
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`7.
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`This civil action contains claims for trade secret misappropriation arising
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`under the Defend Trade Secrets Act of 2016, 18 U.S.C. § 1836 et seq.
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`8.
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`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and
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`1338(a) because this action arises under the patent laws of the United States, 35
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`U.S.C. § 1 et seq., the copyright laws of the United States, 17 U.S.C. § 1 et seq., and
`
`-1-
`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
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`BANK OF AMERICA
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`IPR2021-01080
`
`Ex. 1013, p. 2 of 78
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`

`

`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 3 of 78 Page ID #:3
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`
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`the Defend Trade Secrets Act of 2016, 18 U.S.C. § 1836 et seq.
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`9.
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`This Court has supplemental jurisdiction over NantWorks’ state law
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`claims pursuant to 28 U.S.C. §1367(a).
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`10. This Court has personal jurisdiction over BoA because it has committed
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`acts in this District that give rise to all acts of infringement and misappropriation
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`asserted herein. This Court also has personal jurisdiction over BoA because it has
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`substantial, systematic and continuous contacts with this District. BoA has a regular
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`and established place of business in the State of California and in this District,
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`including operating hundreds of bank branches and ATMs in California and in this
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`judicial District, and conducts business with its customers residing in this District both
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`through its bank branches and ATMs and its online and mobile banking services.
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`11. BoA has committed and continues to commit acts of infringement in
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`violation of 35 U.S.C. § 271, and has made, used, marketed, distributed, offered for
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`sale, sold, and/or imported infringing products in the State of California, including in
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`this District, and engaged in infringing conduct within and directed at or from this
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`District. For example, on information and belief, BoA has numerous customers who
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`utilize BoA’s mobile check deposit software for mobile check deposit, thereby
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`infringing and causing BoA to infringe the Asserted Patents.
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`12. Venue is proper in this District under the provisions of 28 U.S.C.
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`§§ 1391 and 1400(b) at least because a substantial part of the events or omissions
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`giving rise to the claims occurred in this judicial district, and because BoA has
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`committed acts of infringement in this District and has a regular and established place
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`of business in this District.
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`INTRODUCTION
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`13. This dispute is based on BoA’s unauthorized use and misappropriation
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`of NantWorks’ pioneering image recognition technology in BoA’s widely used
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`mobile check deposit solution.
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`14.
`
`In early 2010, Matt Calman, a BoA executive, witnessed a demonstration
`-2-
`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
`
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`BANK OF AMERICA
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`IPR2021-01080
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`Ex. 1013, p. 3 of 78
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`

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`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 4 of 78 Page ID #:4
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`of NantWorks’ image recognition technology.1 He was “very impressed” by
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`NantWorks’ technology and approached NantWorks regarding a partnership
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`involving image recognition solutions for mobile devices. The companies then
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`entered into a series of agreements that would allow BoA to evaluate NantWorks’
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`image recognition
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`technology and for both companies
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`to collaborate
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`in
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`commercializing this technology in new and impactful applications, including mobile
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`check deposit.
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`15. Pursuant to their agreements, during 2011 and 2012 NantWorks
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`developed mobile check deposit software that vastly outperformed BoA’s then
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`existing solution. BoA was intrigued by the performance of NantWorks’ mobile
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`check deposit software and led NantWorks to believe that BoA would incorporate
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`NantWorks’ mobile check deposit software into the commercial version of BoA’s
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`Mobile Banking application and compensate NantWorks for the use of its technology.
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`After delivering a complete version of NantWorks’ software and related confidential
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`technical information, however, NantWorks did not receive further updates on the
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`project. NantWorks assumed that BoA decided to pursue its existing technology.
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`16.
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` Several years later, NantWorks uncovered information demonstrating
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`that BoA not only continued to use NantWorks’ software without authorization, but
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`that BoA had incorporated NantWorks’ proprietary image recognition technology and
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`NantWorks’ intellectual property into its mobile check deposit solution. As explained
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`below, BoA’s actions give rise to NantWorks’ claims for patent infringement,
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`copyright infringement, trade secret misappropriation, and breach of contract.
`
`
`1 Formed in 2011, NantWorks (through predecessor companies) acquired a
`number of image recognition companies, including IPPLEX in August 2010 and
`Evryx in February 2011. Reference to Nantworks in this Complaint refers to both
`Nantworks and its predecessor entities including IPPLEX and Evryx.
`
`-3-
`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
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`BANK OF AMERICA
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`IPR2021-01080
`
`Ex. 1013, p. 4 of 78
`
`

`

`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 5 of 78 Page ID #:5
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`FACTUAL BACKGROUND
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`NantWorks, Evryx, and IPPLEX
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`17. NantWorks was formed in 2011 to, among other things, develop
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`solutions to real-world machine vision and image recognition challenges. NantWorks
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`recognized the benefits of using mobile devices to recognize features in digital images
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`and the application of such technology to numerous industries, including financial
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`services. To expand its depth in this field, NantWorks (through predecessor
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`companies) acquired a number of image recognition companies, including IPPLEX
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`in August 2010 and Evryx in February 2011.
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`18. Evryx had developed and patented fundamental image recognition
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`technology in the early 2000s. Its technology allowed mobile devices to capture
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`images/video, recognize specific features in the images/video, and provide
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`information associated with the recognized features to users. Evryx’s technology was
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`years ahead of its time, being developed well before the introduction of the first
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`iPhone in 2007 and other early smartphones. Indeed, Evryx’s technology was
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`developed when mobile phones had very limited functionality and certainly nothing
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`approaching the image recognition technologies that are in use today. For example,
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`one of the most successful mobiles phones released in the early 2000s was the Nokia
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`3310 shown below, which did not include any capability for image recognition
`technology, let alone an integrated camera2:
`
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`2 https://en.wikipedia.org/wiki/Nokia_3310#/media/File:Nokia_3310_blue.jpg
`-4-
`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
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`BANK OF AMERICA
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`IPR2021-01080
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`Ex. 1013, p. 5 of 78
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`

`

`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 6 of 78 Page ID #:6
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`19.
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`In 2006, IPPLEX was formed to develop innovative image recognition
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`technologies. By April 2010, IPPLEX had developed its Money Reader application,
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`which allowed the visually impaired to use smartphones to, for example, recognize
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`and identify U.S. currency. IPPLEX’s products were the subject of significant
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`industry acclaim. For example, IPPLEX’s products were awarded first place in the
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`Cellular Telecommunications and Internet Association’s Emerging Technology
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`Awards for 2010, and also selected as the winner of the Federal Communications
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`Commission’s Chairman’s Awards for Advancements in Accessibility in 2011.
`BoA’s Evaluation of NantWorks’
`
`Image Recognition Technology
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`20. After the introduction of the iPhone in 2007 and the widespread adoption
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`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
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`BANK OF AMERICA
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`IPR2021-01080
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`Ex. 1013, p. 6 of 78
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`

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`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 7 of 78 Page ID #:7
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`of smartphones in the late 2000s, the banking industry began to recognize the
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`importance of mobile banking. Banks soon realized that one of the most important
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`mobile banking offerings was the ability to deposit checks using mobile devices. By
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`eliminating the need for customers to deposit checks at brick and mortar branches,
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`banks and their customers could save significant time and money using mobile check
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`deposits. BoA has specifically attributed its mobile banking growth to its ability to
`achieve savings by closing branches and reducing headcount.3 Indeed, BoA’s CEO
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`Brian Moynihan recently described mobile check deposits as offering “tenfold”
`savings to BoA over physical deposits.4
`In April 2010, NantWorks5 demonstrated its image recognition
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`21.
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`technology to attendees of an industry conference. Matt Calman – a Senior Vice
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`President and Research and Development Executive at BoA who was involved in
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`developing new banking applications – attended the conference and witnessed
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`NantWorks’ demonstration. Immediately after the demonstration, Mr. Calman called
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`NantWorks’ image recognition technology “very impressive.”
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`22. That same month, Mr. Calman reached out to NantWorks and expressed
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`interest in having NantWorks develop image recognition technologies for BoA. At
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`that time, on information and belief, the mobile check deposit solution BoA was
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`developing suffered from significant performance issues.
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`23. Shortly after Mr. Calman reached out to NantWorks, the parties entered
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`into the first of a series of agreements that enabled BoA to evaluate NantWorks’
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`image recognition technology for potential use by BoA in its mobile check deposit
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`software. These agreements allowed BoA to use confidential technical information
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`3 https://www.businessinsider.com/bank-branches-around-the-world-are-
`shrinking-in-favor-of-digital-models-2016-10
`4 https://www.nasdaq.com/articles/bank-america-corp-bac-q1-2019-earnings-
`call-transcript-2019-04-16?amp
`5 NantWorks completed its acquisition of IPPLEX in August 2010.
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`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
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`BANK OF AMERICA
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`IPR2021-01080
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`Ex. 1013, p. 7 of 78
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`

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`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 8 of 78 Page ID #:8
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`provided by NantWorks in a very limited way – that is, only for the purpose of
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`evaluating NantWorks’ technology for potential use in BoA’s mobile check deposit
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`solution. The agreements prohibited BoA from using NantWorks’ technology and
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`confidential information for any other purpose. The agreements also prohibited BoA
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`from using NantWorks’ confidential information for any purpose following the end
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`of the evaluation.
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`24. As the partnership between BoA and NantWorks progressed, they
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`entered into a collaboration agreement dated October 31, 2011. This agreement,
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`which included limited use restrictions like BoA and NantWorks’ earlier agreements,
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`made clear that NantWorks maintained all rights to all image recognition technology
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`that it developed in connection with its partnership with BoA as well as its preexisting
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`image recognition technology. It also required BoA to return or destroy any
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`confidential information disclosed by NantWorks upon termination of the agreement.
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`The collaboration agreement had a term of two years and any rights granted to the
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`parties terminated upon its expiration.
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`25.
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`In November 2011, BoA and NantWorks met to discuss next steps under
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`their collaboration agreement. NantWorks agreed to begin development of a mobile
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`check deposit solution that addressed the issues exhibited by BoA’s existing solution.
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`During the course of this development effort, BoA’s input was limited to describing
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`issues with BoA’s existing mobile check deposit solution and identifying high-level
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`user experience features they desired. NantWorks understood that if it was able to
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`develop a mobile check deposit solution that performed better than BoA’s mobile
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`check deposit solution, BoA would incorporate NantWorks’ solution into its mobile
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`banking application and compensate NantWorks for the use of its technology and
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`intellectual property.
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`26. By March 2012, NantWorks had developed the first version of its
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`proprietary mobile check deposit software. Over the next several months NantWorks
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`continued its development efforts, improving its mobile check deposit software to
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`-7-
`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
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`IPR2021-01080
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`Ex. 1013, p. 8 of 78
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`

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`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 9 of 78 Page ID #:9
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`greatly increase its processing speed, consumer usability, and overall reliability. By
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`June 2012, NantWorks’ software included fast and reliable optical character
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`recognition (“OCR”) for routing and account numbers on paper checks and a video-
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`based image viewfinder that automatically captured paper check images (“auto-
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`capture”) of sufficient quality for processing. NantWorks’ software also consistently
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`detected errors that BoA’s existing mobile check deposit solution had failed to detect
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`with sufficient accuracy for consumer use. These included error detection for
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`overlapping check images and verification that a user was attempting to deposit U.S.-
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`based checks.
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`27. To enable BoA to evaluate NantWorks’ mobile check deposit solution,
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`NantWorks provided BoA with complete demonstration applications which included
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`NantWorks proprietary mobile check deposit technology.
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`28.
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`In June and July of 2012, BoA performed testing of NantWorks’ mobile
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`check deposit software against its own mobile check deposit software. This testing
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`revealed the superiority of NantWorks’ technology and showed that BoA’s software
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`relied on an image capture method that was slow, unreliable, and too cumbersome for
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`its customers to consider useful. For example, BoA’s testing showed that NantWorks’
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`software was able to process a check image over ten times faster than BoA’s existing
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`solution. BoA also determined that NantWorks’ software provided a much more
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`accurate check screening mechanism, with a lower proportion of checks falsely
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`accepted and falsely declined compared to BoA’s solution. Based on its testing
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`results, BoA expressed serious concerns about the viability of its mobile check deposit
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`software for consumer use.
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`29. Upon information and belief, in July of 2012, even though it knew its
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`existing solution was far inferior to NantWorks’ solution, BoA released the first
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`commercial version of its Mobile Banking application which included its mobile
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`check deposit software. On information and belief, BoA did so because it was under
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`pressure to remain competitive with other banks that had already released commercial
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`-8-
`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
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`BANK OF AMERICA
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`IPR2021-01080
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`Ex. 1013, p. 9 of 78
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`

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`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 10 of 78 Page ID #:10
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`mobile check deposit capabilities to their customers.
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`30. During the remainder of 2012, BoA continued to express its desire to
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`implement NantWorks’ mobile check deposit software in BoA’s Mobile Banking
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`application. For example, BoA informed NantWorks that it was looking closely at
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`NantWorks’ software, that BoA hoped to put that software into production, and
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`reached out to NantWorks to begin commercial licensing discussions.
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`31.
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`In early 2013, NantWorks continued to believe that BoA intended to
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`implement its mobile check deposit software in BoA’s Mobile Banking application.
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`NantWorks’ shared additional information about its mobile check deposit solution
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`with BoA, including developer manuals and header files. The headers files included
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`information that allowed BoA to incorporate NantWorks’ mobile check deposit
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`technology into its own mobile checking application. The source code and algorithms
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`implemented in NantWorks’ mobile check deposit software was and is extremely
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`sensitive and included NantWorks’ trade secrets. And as had been the case
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`throughout 2011 and 2012, the information NantWorks shared was only to be used
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`for evaluation purposes.
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`32. After providing this additional information regarding NantWorks’
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`mobile check deposit software to BoA in early 2013, BoA began to express less
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`interest and ultimately ceased communications with NantWorks about the project.
`BoA’s Improper and Unauthorized Use of NantWorks’
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`Image Recognition Technology
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`33. After 2013, NantWorks believed that BoA had decided to continue to
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`develop its own mobile check deposit technology. Consequently, NantWorks
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`believed that BoA would honor its agreements to cease all use of and return or destroy
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`NantWorks’ confidential information pursuant to the parties’ agreements.
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`34.
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`In the Spring of 2018, NantWorks discovered that the mobile check
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`deposit software it provided to BoA continued to be used by BoA after the conclusion
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`of prior work between NantWorks and BoA. This discovery resulted from a detailed
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`-9-
`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
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`IPR2021-01080
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`Ex. 1013, p. 10 of 78
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`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 11 of 78 Page ID #:11
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`investigation into a software development database that was used for testing and
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`debugging purposes during the development of NantWorks’ mobile check deposit
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`software many years earlier. This database recorded certain reports that included
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`information about uses of NantWorks’ mobile check deposit software, including
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`when the software was used. NantWorks discovered a large number of reports that
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`occurred after the collaboration with BoA ended in 2013. Upon further investigation,
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`NantWorks determined that these reports could have only originated from the
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`software that it provided to BoA under the parties’ prior agreements. Additionally,
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`information within the reports indicated that the use of NantWorks’ software
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`originated from BoA networks or networks that appeared to be affiliated with BoA.
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`35. NantWorks also investigated the timing of the reports in relation to
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`changes made to BoA’s mobile check deposit software. This analysis revealed that
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`there were several periods of time where a high number of reports originated from
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`BoA or BoA affiliated networks followed thereafter by changes to BoA’s software
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`that significantly improved its mobile check deposit functionality for users. For
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`example, following the 2014 unauthorized use of NantWorks’ mobile check deposit
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`software as reflected in the development database, BoA implemented automatic
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`image capture and confirmation features, which were developed by NantWorks and
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`found in NantWorks’ proprietary mobile check deposit software.
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`36. The software development database continued to receive reports into the
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`Spring of 2018. The reports permanently stopped, however, after NantWorks
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`discovered the reports in the Spring of 2018 and subsequently requested a meeting
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`with BoA to discuss its unauthorized use of NantWorks’ intellectual property.
`The Importance of BoA’s Mobile Check Deposit Solution
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`37. Mobile check deposits have become a critical aspect of BoA’s business.
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`For example, BoA’s press releases touted the fact that by the first quarter of 2016 its
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`-10-
`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1013, p. 11 of 78
`
`

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`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 12 of 78 Page ID #:12
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`customers “used their mobile devices to deposit more than 254,000 checks daily”6 a
`figure which rose to over 340,000 checks daily by the second quarter of 2017.7 By
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`the fourth quarter of 2018, BoA’s customers were depositing over 390,000 checks via
`mobile devices daily8 and in 2019, BoA’s CEO Brian Moynihan noted on an earnings
`call that “77% of [BoA’s] deposit transactions are now done through digital means.”9
`NantWorks’ Image Recognition Patents
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`38. NantWorks has developed a patent portfolio in the field of image
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`recognition, currently numbering over 120 issued patents. These patents originated
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`with Evryx and are based on Evryx’s fundamental image recognition technology.
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`NantWorks’ imaging recognition patent portfolio includes the following United
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`States Patents that are being asserted in this case (“Asserted Patents”).
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`39. The United States Patent Office issued U.S. Patent No. 7,881,529, titled
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`“Data capture and identification system and process” (the “’529 patent”). The ’529
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`patent issued on February 1, 2011. A true and correct copy of the ’529 patent is
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`attached hereto as Exhibit A.
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`40. The United States Patent Office issued U.S. Patent No. 7,899,252, titled
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`“Object information derived from object images” (the “’252 patent”). The ’252 patent
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`issued on March 1, 2011. A true and correct copy of the ’252 patent is attached hereto
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`as Exhibit B.
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`41. The United States Patent Office issued U.S. Patent No. 8,326,038, titled
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`“Object information derived from object images” (the “’038 patent”). The ’038 patent
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`6 https://newsroom.bankofamerica.com/press-releases/consumer-banking/fess-
`majority-americans-deny-their-smartphone-behaviors
`7 https://newsroom.bankofamerica.com/press-releases/consumer-
`banking/keeping-digital-natives
`8 https://newsroom.bankofamerica.com/press-releases/consumer-banking/bank-
`americas-ericar-surpasses-6-million-users
`9 https://www.nasdaq.com/articles/bank-america-corp-bac-q1-2019-earnings-
`call-transcript-2019-04-16?amp
`
`
`-11-
`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
`
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`BANK OF AMERICA
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`IPR2021-01080
`
`Ex. 1013, p. 12 of 78
`
`

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`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 13 of 78 Page ID #:13
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`issued on December 4, 2012. A true and correct copy of the ’038 patent is attached
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`hereto as Exhibit C.
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`42. The United States Patent Office issued U.S. Patent No. 8,463,030, titled
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`“Image capture and identification system and process” (the “’030 patent”). The ’030
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`patent issued on June 11, 2013. A true and correct copy of the ’030 patent is attached
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`hereto as Exhibit D.
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`43. The United States Patent Office issued U.S. Patent No. 8,478,036, titled
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`“Image capture and identification system and process” (the “’036 patent”). The ’036
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`patent issued on July 2, 2013. A true and correct copy of the ’036 patent is attached
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`hereto as Exhibit E.
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`44. The United States Patent Office issued U.S. Patent No. 8,520,897, titled
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`“Object information derived from object images” (the “’897 patent”). The ’897 patent
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`issued on August 27, 2013. A true and correct copy of the ’897 patent is attached
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`hereto as Exhibit F.
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`45. The United States Patent Office issued U.S. Patent No. 9,031,278, titled
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`“Image capture and identification system and process” (the “’278 patent”). The ’278
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`patent issued on May 12, 2015. A true and correct copy of the ’278 patent is attached
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`hereto as Exhibit G.
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`46. The United States Patent Office issued U.S. Patent No. 9,324,004, titled
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`“Image capture and identification system and process” (the “’004 patent”). The ’004
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`patent issued on April 26, 2016. A true and correct copy of the ’004 patent is attached
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`hereto as Exhibit H.
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`47. The Asserted Patents identify Wayne C. Boncyk and Ronald H. Cohen
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`as inventors.
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`48. The claims of the Asserted Patents are directed to technological
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`improvements in the way mobile computing systems operate. Specifically, the claims
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`relate to improved machine vision techniques that enable mobile computing systems
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`to capture images of physical objects, process those images, and then return
`
`-12-
`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
`
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`BANK OF AMERICA
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`IPR2021-01080
`
`Ex. 1013, p. 13 of 78
`
`

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`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 14 of 78 Page ID #:14
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`information relating to those objects to the user of the mobile computing system based
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`solely on remotely acquired data associated with the physical object. See, e.g., ’529
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`patent at 3:56-64 (“The present invention includes a novel process whereby
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`information such as Internet content is presented to a user based solely on a remotely
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`acquired data of a physical object. Although coded information can be included in
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`the remotely acquired image, it is not required since no additional information about
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`a physical object, other than its image, needs to be encoded in the linked object. There
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`is no need for any additional code or device, radio, optical or otherwise, to be
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`embedded in or affixed to the object.”). As the specifications of the Asserted Patents
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`explain, various prior art techniques were used to associate physical objects with
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`digital information, such as applying a barcode or a radio or optical transceiver to the
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`object to locate the information. E.g., id. at 2:13-19 (“Traditional methods for linking
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`objects to digital information, including applying a barcode, radio or optical
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`transceiver or transmitter, or some other means of identification to the object, or
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`modifying the data or object so as to encode detectable information in it, are not
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`required because the data or object can be identified solely by its visual
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`appearance.”). Unlike the inventions described in the Asserted Patents, these
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`techniques required the physical manipulation of the physical object to allow linking
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`of information to the object. For example, in the case of a barcode, the barcode is
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`physically applied to the object, requiring time and effort to allow the object to be
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`identifiable. Such modification of an object may also be undesirable as it may
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`disfigure the desired appearance of the object. E.g., id. at 1:32-34 (“There is a need
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`to identify an object that has been digitally captured from a database of images
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`without requiring modification or disfiguring of the object”).
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`49.
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`In addition, the claims of the Asserted Patents involve novel
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`combinations of elements relating to machine vision techniques and specific
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`applications of those techniques, not merely the recitation of well-understood, routine,
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`or conventional technologies or components. The use of these machine vision
`
`-13-
`Case No.: 2:20-cv-7872
`COMPLAINT FOR PATENT INFRINGEMENT, COPYRIGHT INFRINGEMENT,
`TRADE SECRET MISAPPROPRIATION, AND BREACH OF CONTRACT
`
`
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1013, p. 14 of 78
`
`

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`Case 2:20-cv-07872 Document 1 Filed 08/27/20 Page 15 of 78 Page ID #:15
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`techniques to identify physical objects and subsequently associate such physical
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`objects to information relating to the object based solely on remotely acquired data
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`associated with the object was not well-known, understood, or routine at the time of
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`the inventions of the Asserted Patents and provided a specific improvement over prior
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`art systems and methods.
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`50. Nant IP is the owner of all rights, title, and interest in and to the Asserted
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`Patents, with the full and exclusive right to bring suit to enforce the Asserted Patents,
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`including the right to recover for past damages.
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`51. The Asserted Patents are valid and enforceable under the United States
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`Patent Laws.
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`BoA’s Accused Products
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`52. Through its Bank of America Mobile Banking application, BoA offers
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`its mobile check deposit feature to its customers, including individuals and business.
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`On information and belief, BoA controls and operates various computers, servers,
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`softwar