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
`Brice C. Lynch (Bar No. 288567)
`bricelynch@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 ELECTION OF
`ASSERTED CLAIMS
`
`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 ELECTION OF ASSERTED CLAIMS
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1017, p. 1 of 5
`
`

`

`
`
`Pursuant to the Court’s Scheduling Order in this action (Dkt. No. 91), Plaintiffs
`
`NantWorks LLC, and Nant Holdings IP, LLC, (collectively, “Plaintiffs” or
`
`“NantWorks”), hereby submit its Preliminary Election Of Asserted Claims.
`
`On March 4, 2021, NantWorks served its Preliminary Infringement
`
`Contentions, setting forth its theories of infringement for an initial set of asserted
`
`claims. Because of the early stage of this case and because Defendants have not
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`provided sufficient discovery regarding the design and operation of the Accused
`
`Products and the full bases for their defenses for each of the Initial Asserted Claims,
`
`NantWorks reserves the right to amend its Preliminary Election Of Asserted Claims.
`
`Defendants, for example, have not provided any source code regarding the
`
`design and operation of the Accused Products, nor have they produced documents
`
`sufficient to show the design and operation of the Accused Products. Defendants
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`Invalidity Contentions also disclose millions of potential prior art reference
`
`combinations with no known way to evaluate the strengths and weaknesses of all the
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`potential prior art combinations. Nor have Defendants responded to NantWorks’
`
`interrogatories seeking damages related information regarding the number of uses of
`
`the Accused Products to perform a mobile check deposit. Furthermore, the parties
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`have just begun the claim construction process, no briefing has been exchanged, and
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`the Court is months away from holding the claim construction hearing. There are
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`many open issues that remain to be decided that will be highly relevant to choosing
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`asserted claims for trial.
`
`Because of the uncertainties and variables remaining in this case, it would be
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`highly prejudicial to require NantWorks to narrow its asserted claims at this time
`
`without allowing NantWorks the opportunity to amend its Preliminary Election Of
`
`Asserted Claims based on new defenses and theories set forth by Defendants and other
`
`open issues as the case moves forward and circumstances change. This is particularly
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`true where an unselected claim presents unique issues as to liability or damages. In
`
`re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1312-13 (Fed. Cir.
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`2
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY ELECTION OF ASSERTED CLAIMS
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1017, p. 2 of 5
`
`

`

`
`
`2011) (finding that if a patentee demonstrates “that some of its unselected claims
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`presented unique issues as to liability or damages,” a refusal to permit the patentee to
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`add those specified claims “would be subject to review and reversal”). Thus,
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`NantWorks provides this Preliminary Election Of Asserted Claims without prejudice
`
`to amend the election to include initially asserted claims that have not been included
`
`in the present Preliminary Election Of Asserted Claims.
`
`Pursuant to the Court’s Scheduling Order, NantWorks identifies below its
`
`Preliminary Election Of Asserted Claims, totaling 48 claims and no more than 15
`
`claims per Asserted Patent:
` U.S. Patent No. 9,031,278: Claims 1 and 4-5
` U.S. Patent No. 7,881,529: Claims 2, 4, 7, 9, 18, and 20
` U.S. Patent No. 7,899,252: Claims 18, 26-27, 29, and 31
` U.S. Patent No. 8,326,038: Claims 1, 3, 9-10, 16, and 19-20
` U.S. Patent No. 8,463,030: Claims 1, 3-4, 6-7, 19, 21, 25-26, 30, 32, and 37
` U.S. Patent No. 8,520,897: Claims 25, 30, 33-34, 39, and 42
` U.S. Patent No. 9,324,004: Claims 1, 3, 6, and 18
` U.S. Patent No. 8,478,036: Claims 1, 10, 12-13, and 15
`This Preliminary Election Of Asserted Claims is not intended to alter or amend
`
`NantWorks’ infringement theories, which are disclosed as in NantWorks’ Preliminary
`
`Infringement Contentions, which are incorporated completely herein by reference.
`
`
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`3
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY ELECTION OF ASSERTED CLAIMS
`
`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1017, p. 3 of 5
`
`

`

`Respectfully submitted,
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`
`By
`/s/ Todd M. Briggs
`James R. Asperger
`Kevin P.B. Johnson
`Todd M. Briggs
`Eric Huang
`Brice C. Lynch
`
`Attorneys for Plaintiff, NANTWORKS,
`LLC and NANT HOLDINGS IP, LLC
`
`
`
`4
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY ELECTION OF ASSERTED CLAIMS
`
`
`
`DATED: May 11, 2021
`
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1017, p. 4 of 5
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 11, 2021, I caused a true and correct copy of the
`
`foregoing document to be served via e-mail to all counsel of record who have
`
`appeared in this matter.
`
`
`
`DATED: May 11, 2021
`
`
`
`
`
`
`By /s/ Brice C. Lynch
`Brice C. Lynch
`
`
`
`
`
`
`
`
`5
`Case No. 2:20-cv-7872-GW-PVC
`PLAINTIFFS’ PRELIMINARY ELECTION OF ASSERTED CLAIMS
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`BANK OF AMERICA
`
`IPR2021-01080
`
`Ex. 1017, p. 5 of 5
`
`