DCT
2:18-cv-00245
United Services Automobile Association v. Wells Fargo Bank NA
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: United Services Automobile Association (USAA) (Texas)
- Defendant: Wells Fargo Bank, N.A. (National Banking Association)
- Plaintiff’s Counsel: Parker, Bunt & Ainsworth, P.C.; Irell & Manella LLP
- Case Identification: 2:18-cv-00245, E.D. Tex., 06/07/2018
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Texas because Defendant Wells Fargo maintains a regular and established place of business in the district and has allegedly committed acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s mobile banking applications, which feature remote check deposit functionality, infringe four patents related to mobile check image capture and processing.
- Technical Context: The technology at issue is remote deposit capture (RDC), a widely deployed feature in the financial services industry that allows customers to deposit paper checks by capturing images with a mobile device camera.
- Key Procedural History: The complaint alleges that Plaintiff approached Defendant in August 2017 to engage in good faith negotiations regarding licensing of the patents-in-suit, but that no license was obtained. This alleged pre-suit notification may be relevant to the claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2009-08-21 | Priority Date for ’571 and ’090 Patents |
| 2009-08-28 | Priority Date for ’779 and ’517 Patents |
| 2014-04-15 | U.S. Patent No. 8,699,779 Issues |
| 2015-03-10 | U.S. Patent No. 8,977,571 Issues |
| 2016-05-10 | U.S. Patent No. 9,336,517 Issues |
| 2017-08-01 | Plaintiff allegedly approaches Defendant to discuss licensing |
| 2017-11-14 | U.S. Patent No. 9,818,090 Issues |
| 2018-06-07 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,699,779 - Systems and methods for alignment of check during mobile deposit
- Patent Identification: U.S. Patent No. 8,699,779, issued April 15, 2014. (Compl. ¶30)
- The Invention Explained:
- Problem Addressed: The patent’s background section describes the burdens on a payee of physically depositing a paper check at a financial institution and highlights the difficulty of capturing a high-quality digital image of a check using a mobile device for remote deposit. (’779 Patent, col. 1:20-35)
- The Patented Solution: The invention provides an "alignment guide" within the field of view of a mobile device's camera to assist the user. The system monitors the check image, and when it determines the check is properly aligned within the guide, it can automatically capture a high-quality image for transmission to the financial institution. (’779 Patent, Abstract; col. 2:39-56)
- Technical Importance: This technological approach sought to make remote check deposit systems commercially viable by improving the user interface and the quality of captured images, thereby reducing processing error rates. (Compl. ¶15)
- Key Claims at a Glance:
- The complaint asserts independent Claim 10 as an example of infringement. (Compl. ¶31)
- Claim 10 of the ’779 Patent is for a non-transitory computer-readable medium with instructions for a mobile device processor to:
- project an alignment guide in a display of the mobile device;
- monitor an image of the check that is within the field of view;
- determine whether the image of the check aligns with the alignment guide;
- automatically capture the image of the check when the image of the check is determined to align with the alignment guide; and
- transmit the image of the check from the mobile device to a deposit system.
- The complaint notes that infringement of "one or more claims" is alleged, reserving the right to assert claims other than Claim 10. (Compl. ¶31)
U.S. Patent No. 9,336,517 - Systems and methods for alignment of check during mobile deposit
- Patent Identification: U.S. Patent No. 9,336,517, issued May 10, 2016. (Compl. ¶47)
- The Invention Explained:
- Problem Addressed: As a continuation of the application leading to the ’779 Patent, the ’517 Patent addresses the same technical problem: the difficulty of capturing usable check images with mobile devices for remote deposit. (’517 Patent, col. 1:16-37)
- The Patented Solution: The invention describes a system that monitors "at least one feature of the instrument" (e.g., a check) detected by an information capture component (e.g., a camera). The system determines whether this feature aligns with a generated alignment guide and, if so, automatically captures the instrument's information for transmission to a server. (’517 Patent, Abstract; col. 2:40-52)
- Technical Importance: The technology aimed to improve the efficiency and commercial viability of remote check deposit systems by using feature detection to enhance the quality and reliability of image capture. (Compl. ¶15)
- Key Claims at a Glance:
- The complaint asserts independent Claim 10 as an example of infringement. (Compl. ¶49)
- Claim 10 of the ’517 Patent is for a non-transitory computer-readable medium with instructions for a mobile device processor to:
- monitor at least one feature of an instrument that is within a field of view of the mobile device's camera and capture information of the instrument;
- determine whether the at least one feature aligns with an alignment guide adapted to align with the instrument;
- automatically capture the information of the instrument when the at least one feature is determined to align with the alignment guide; and
- transmit the captured information from the mobile device to a server.
- The complaint reserves the right to assert claims other than the exemplary Claim 10. (Compl. ¶49)
U.S. Patent No. 9,818,090 - Systems and methods for image monitoring of check during mobile deposit
- Patent Identification: U.S. Patent No. 9,818,090, issued November 14, 2017. (Compl. ¶66)
- Technology Synopsis: This patent describes a system for improving remote check deposit that monitors a check against a "monitoring criterion," provides feedback to the user with instructions on how to satisfy that criterion, and automatically captures an image of the check once the criterion is met. This process is intended to increase the efficiency and quality of remote check deposits. (Compl. ¶16-17)
- Asserted Claims: The complaint asserts independent system Claim 11 as an example. (Compl. ¶67)
- Accused Features: The complaint alleges that the Wells Fargo Mobile Deposit system monitors a check image, provides feedback to the user (e.g., "Center check and hold steady"), determines if a monitoring criterion is satisfied, and automatically captures the image. (Compl. ¶67, 72, 74-75)
U.S. Patent No. 8,977,571 - Systems and methods for image monitoring of check during mobile deposit
- Patent Identification: U.S. Patent No. 8,977,571, issued March 10, 2015. (Compl. ¶85)
- Technology Synopsis: This patent, related to the ’090 Patent, is also directed to improving remote check deposit systems. It describes monitoring an image of a check in the camera's field of view with respect to a "monitoring criterion" and automatically capturing the image when the criterion is passed, thereby increasing the efficiency and performance of the system. (Compl. ¶16-17)
- Asserted Claims: The complaint asserts independent Claim 1 as an example. (Compl. ¶86)
- Accused Features: The Wells Fargo Mobile Deposit system is accused of monitoring a check image against a criterion, automatically capturing the image when the criterion is satisfied (e.g., when the image is adequate), and providing the image to a depository. (Compl. ¶86, 94)
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Wells Fargo's remote deposit capture systems, primarily the "Wells Fargo Mobile® Deposit" system, which is incorporated into the "Wells Fargo Mobile" applications for iPhone and Android smartphones. (Compl. ¶19, 24)
Functionality and Market Context
- The accused system allows customers to deposit checks by taking photographs of the front and back of a check with a mobile device. (Compl. ¶22, 25) The complaint alleges the system projects an on-screen "alignment guide" to assist the user in framing the check, provides instructions such as "Center check and hold steady," and then "will automatically capture a photo of the check when the image is adequate." (Compl. ¶27, 36, 38) The screenshot of the accused product's interface shows a translucent rectangular outline overlaid on the camera view to guide check placement. (Compl. p. 14, ¶36) The complaint alleges that as of February 2018, Wells Fargo had over 21 million active mobile banking users and that its mobile applications are highly popular. (Compl. ¶18, 24)
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,699,779 Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| project an alignment guide in a display of the mobile device, the display of the mobile device displaying a field of view of the camera | The accused application projects an alignment guide in the display to assist the user in capturing an image of the check. | ¶31, ¶36 | col. 6:5-9 |
| monitor an image of the check that is within the field of view | The accused application monitors the image of the check that is within the camera's live field of view. | ¶31 | col. 6:10-11 |
| determine whether the image of the check aligns with the alignment guide | The accused application determines when the check is properly aligned within the on-screen guides. | ¶31, ¶38 | col. 6:12-13 |
| automatically capture the image of the check when the image of the check is determined to align with the alignment guide | The accused application automatically captures the image once it determines the check is properly aligned. The complaint provides a screenshot of instructions stating, "The app will take the photo automatically." (Compl. p. 15, ¶38) | ¶31, ¶38 | col. 6:14-17 |
| transmit the image of the check from the mobile device to a deposit system | The captured image of the check is transmitted from the customer's mobile device to a Wells Fargo deposit system for processing. | ¶31, ¶32 | col. 6:18-20 |
- Identified Points of Contention:
- Scope Questions: A central question may be the technical meaning of "alignment guide." Does the term, as used in the patent, require a guide that is actively used by the system’s software to make a geometric determination, or can it read on a simple visual overlay intended only to help a human user frame the shot?
- Technical Questions: The complaint alleges the system "determines whether the image of the check aligns with the alignment guide," but the supporting evidence cited is primarily user-facing instructions. A key factual question will be what technical process the accused application actually uses to trigger the "automatic capture." Does it analyze the image relative to the visual guide's boundaries, or does it use other criteria (e.g., focus, lighting, edge detection independent of the guide) to determine when "the image is adequate"? (Compl. ¶27)
U.S. Patent No. 9,336,517 Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| monitor at least one feature of an instrument...that is within a field of view of the mobile device's camera and capture information of the instrument | The accused application monitors features of the check, such as its four corners, within the camera's field of view. | ¶49, ¶55 | col. 6:13-16 |
| determine whether the at least one feature aligns with an alignment guide adapted to align with the instrument | The system provides on-screen guides and allegedly determines when the check's features, such as its corners, are aligned with those guides. | ¶49, ¶55 | col. 6:17-19 |
| automatically capture the information of the instrument when the at least one feature is determined to align with the alignment guide | The accused system automatically captures the image when it determines proper alignment has been achieved. The complaint includes a screenshot of instructions for the accused system, which highlights the text "The app will take the photo automatically." (Compl. p. 22, ¶56) | ¶49, ¶56 | col. 6:20-23 |
| transmit the captured information from the mobile device to a server | The captured information is transmitted from the mobile device to a server for deposit processing. | ¶49 | col. 6:24-26 |
- Identified Points of Contention:
- Scope Questions: The infringement analysis may focus on the term "feature." What constitutes a "feature of the instrument" under the patent's claims, and does the accused system actually "monitor" a specific feature in the manner required?
- Technical Questions: Similar to the '779 Patent, the core technical question will be how the accused application determines that "the at least one feature aligns with the alignment guide." The complaint points to instructions for the user to "Fit all 4 corners in the guides" (Compl. ¶55), but the case may require technical evidence of whether the software itself detects and monitors those specific corners relative to the guide to trigger the automatic capture.
V. Key Claim Terms for Construction
The Term: "alignment guide" (asserted in '779 Claim 10 and '517 Claim 10)
Context and Importance: The definition of this term is critical because it is the reference against which the system allegedly determines when to automatically capture the check image. The dispute may turn on whether the on-screen brackets in the accused product function as a mere visual aid for the user or as a technical "guide" that the software processor uses to determine alignment, as required by the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the guide "may be any shape(s) or indicator(s) ... such as vertical bars, parallel lines, a circle, a square, a bounding rectangle, or a self-crop tool." (’779 Patent, col. 6:6-9) This language may support a broad definition not limited to a specific shape.
- Evidence for a Narrower Interpretation: The figures in the patent depict the alignment guide as a three-sided or four-sided box that closely corresponds to the perimeter of the check image. (’779 Patent, Figs. 3 & 4) This could support an interpretation that the guide must define the boundaries of the check for the system's alignment algorithm.
The Term: "determines whether the image of the check aligns with the alignment guide" (asserted in '779 Claim 10)
Context and Importance: This phrase describes the decision-making step that triggers the automatic capture. The case will likely hinge on what level of technical "determination" is required. Practitioners may focus on this term because the complaint's evidence shows the result (automatic capture) but offers limited direct evidence of the process of determination.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the condition as when "the edges 245 of the check image 247 are aligned with respect to the alignment guide 235, such as parallel to the associated portion of the alignment guide." (’779 Patent, col. 5:22-25) This could be interpreted as a general condition of being properly framed.
- Evidence for a Narrower Interpretation: The claim language requires an active "determination" by the processor. This may support a narrower construction requiring a specific algorithmic check of the image data against the guide's parameters, rather than a passive state of being generally positioned correctly by the user.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Wells Fargo knowingly encourages and instructs its customers to use the Wells Fargo Mobile Deposit system in an infringing manner through its website, advertisements, and in-application instructions. (Compl. ¶41, 59, 78, 97)
- Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge of the patents. The complaint alleges that Wells Fargo had pre-suit knowledge due to USAA's widely-publicized role in pioneering RDC technology, constructive notice via patent marking, and direct communications from USAA to Wells Fargo in August 2017 regarding licensing its RDC patents. (Compl. ¶39, 57, 76, 95)
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and construction: How will the court define the functional role of the "alignment guide"? The case may turn on whether the term requires the on-screen guide to be an active component in the software's decision to capture the image, or if it can be construed more broadly as a visual aid that helps the user achieve a state (e.g., proper framing, focus) that is then detected by other means to trigger the capture.
- A key evidentiary question will be one of technical proof: Beyond user-facing instructions and marketing materials, what evidence can be presented to show that the accused application's software performs the specific steps of "determining" alignment with the guide or monitoring a specific "feature" to trigger the automatic capture, as recited in the asserted claims? Proving that the internal logic of the accused product maps onto the patent claims will be a central challenge.