PTAB

CBM2014-00056

Jack Henry Associates Inc v. DataTreasury Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Remote Image Capture With Centralized Processing And Storage
  • Brief Description: The ’137 patent describes systems and methods for remotely capturing images of financial documents, particularly checks, and transmitting the image data to a central location for processing, management, and storage. The system involves remote data access subsystems, a central processing subsystem, and a communications network connecting them.

3. Grounds for Unpatentability

Ground 1: Anticipation over Campbell - Claims 42 and 43 are anticipated under 35 U.S.C. §102 by Campbell.

  • Prior Art Relied Upon: Campbell (Patent 5,373,550).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued through a detailed claim chart that Campbell discloses every element of system claim 42 and method claim 43. Campbell describes a check imaging system for transporting images between remote "sending institutions" and a central "check imaging node" over a network. Petitioner contended that Campbell's disclosure of a controller that can handle encrypted information and identify the sending institution based on accompanying TCP/IP protocol information meets the ’137 patent’s limitations requiring "encrypted subsystem identification information."
    • Key Aspects: This ground directly challenges the novelty of the patent's core system and method claims using a single, comprehensive reference that describes a functionally identical check clearing system.

Ground 2: Obviousness over Campbell and Blackwell - Claims 1, 26, 27, 42, and 43 are obvious over Campbell in view of Blackwell.

  • Prior Art Relied Upon: Campbell (Patent 5,373,550) and Blackwell (Patent 5,602,933).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Campbell teaches the fundamental architecture of a remote check processing system. Blackwell, which describes a remote document imaging and verification system, was cited for its explicit teaching of encrypting data for transmission. Blackwell specifically discloses that data prepared for transmission includes "at least the remote terminal identifier data" and that document files can be "encrypted by any well-known algorithm to prevent piracy or trickery prior to transmission."
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Blackwell's explicit encryption and terminal identification teachings with Campbell's established check interchange system. The motivation would be to enhance the security of data transmission, which was a known problem with a known solution (encryption) at the time.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination. Integrating a known encryption method for securing data from a remote terminal (Blackwell) into a system that transmits financial data from remote locations (Campbell) was a predictable application of existing technologies to achieve an expected improvement in security.

Ground 3: Obviousness over Wheeler and Deaton - Claims 1, 2, 18, 26, 27, 29, 42, and 43 are obvious over Wheeler in view of Deaton.

  • Prior Art Relied Upon: Wheeler (Patent 5,384,835) and Deaton (Patent 5,305,196).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Wheeler discloses a general-purpose "real time interactive distributed image processing system" with remote user terminals connected to a central facility, including teachings of data encryption and unique originating terminal identification. Deaton discloses a specific point-of-sale check processing system where a reader scans a check to capture the customer's checking account number and bank transit number. The combination of Deaton's specific financial data capture method with Wheeler's distributed processing and security framework allegedly renders the claims of the '137 patent obvious.
    • Motivation to Combine: A POSITA would be motivated to incorporate the specific check-scanning and financial data extraction capabilities of Deaton into the broader distributed imaging framework of Wheeler. This would facilitate an effective and efficient check processing system, achieving the goal of eliminating paper trails for financial transactions as described in Wheeler.
    • Expectation of Success: Integrating a specialized data-capture device (Deaton's check scanner) into a distributed network architecture (Wheeler) was a well-understood design choice. A POSITA would have expected this combination to work for its intended purpose of automating financial document processing with predictable results.

  • Additional Grounds: Petitioner asserted additional anticipation challenges based on Campbell as evidenced by ANSI, and obviousness challenges based on combinations including Campbell/Blackwell and Wheeler/Weiss, but relied on similar arguments regarding the combination of known remote capture, central processing, networking, and encryption techniques.

4. Relief Requested

  • Petitioner requests institution of a Covered Business Method review and cancellation of claims 1, 2, 16, 18, 26, 27, 29, 36, 38, 42, and 43 of the '137 patent as unpatentable.