Wells Fargo Bank, N.A. v. United Services Automobile Association

1. Case Identification

• Case #: CBM2019-00002
• Patent #: 9,818,090
• Filed: November 8, 2018
• Petitioner(s): Wells Fargo Bank, N.A.
• Patent Owner(s): United States Automobile Association
• Challenged Claims: 1-20

2. Patent Overview

• Title: System and Method for Image Capture
• Brief Description: The ’090 patent describes systems and methods for facilitating remote check deposit via a mobile device. The technology involves monitoring a target document, such as a check, within the camera's live field of view and evaluating it against predefined "monitoring criteria" (e.g., alignment, brightness, skew). The system provides feedback to the user to guide them in positioning the device or document, and once the criteria are met, it captures a high-quality digital image for processing and deposit.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility - Claims 1-20 are directed to patent-ineligible subject matter under 35 U.S.C. §101.

• Core Argument for this Ground:
  • Petitioner argued that all challenged claims are directed to the abstract idea of composing a good photograph, a fundamental and long-standing mental process. The claims merely automate the conventional steps a photographer would take: monitoring a subject, determining if it is framed correctly based on certain criteria (e.g., alignment, lighting), making adjustments based on feedback (e.g., "move closer," "hold steady"), and capturing the image.
  • Petitioner asserted that implementing this abstract process on generic computer components (a mobile device with a processor, camera, and display) does not confer patent eligibility. The patent does not claim an improvement to computer functionality itself but instead uses conventional technology as a tool to perform an abstract task. The dependent claims add only well-known, conventional refinements (e.g., providing written vs. audible feedback, automatic capture) that fail to provide the necessary inventive concept to transform the abstract idea into a patent-eligible invention.

Ground 2: Anticipation over Yoon - Claims 1, 2, 4, 5, 7, 10, 11, 12, 14, 15, and 17 are anticipated by Yoon.

• Prior Art Relied Upon: Yoon (Application # 2007/0262148).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Yoon discloses every element of the independent claims. Yoon describes a "portable terminal" (a mobile computing device) comprising a camera (image capture device), a display (presentation device), and a controller (processor). Yoon’s system is used to photograph a business card by monitoring the document in the camera's view against monitoring criteria, specifically alignment with "reference boundary lines" and ambient brightness. The system provides feedback by changing the color of the aligned boundary lines and automatically captures the image when all criteria are satisfied. Petitioner argued this directly maps to the limitations of independent claims 1 and 11 and their corresponding dependent claims.

Ground 3: Obviousness over Yoon and Mekuria - Claims 6 and 16 are obvious over Yoon in view of Mekuria.

• Prior Art Relied Upon: Yoon (Application # 2007/0262148) and Mekuria (Patent 6,931,255).
• Core Argument for this Ground:
  • Prior Art Mapping: Claims 6 and 16 add the limitation of providing feedback via an audible instruction through a speaker. While Yoon teaches a complete system with visual feedback, Mekuria teaches a mobile terminal with text-to-speech capabilities to convert messages into audible speech, specifically to improve accessibility for visually impaired users.
  • Motivation to Combine: A POSITA would combine Mekuria's teachings with Yoon's system to enhance accessibility. Providing audible feedback for an image-based application is a predictable solution to accommodate users who cannot rely on visual cues, a common design consideration in mobile application development.
  • Expectation of Success: Integrating text-to-speech functionality into a mobile application was a well-known and straightforward process, presenting a high expectation of success.

Ground 4: Obviousness over Yoon and Ramachandran - Claim 20 is obvious over Yoon in view of Ramachandran.

• Prior Art Relied Upon: Yoon (Application # 2007/0262148) and Ramachandran (Application # 2009/0114716).
• Core Argument for this Ground:
  • Prior Art Mapping: Claim 20 specifically recites instructions for "depositing a check." Ramachandran teaches a system for remote check deposit using a mobile phone to capture and transmit a check image to a bank. However, Ramachandran relies on post-capture software processing ("deskewing") to fix poor-quality images. Yoon teaches the front-end process of guiding a user to capture a high-quality, well-aligned image of a document (a business card) in the first place using on-screen guides.
  • Motivation to Combine: A POSITA developing Ramachandran's check deposit system would be motivated to improve image quality to comply with the strict standards of the Check 21 Act and reduce backend processing failures. Such a POSITA would look for known methods of ensuring proper document alignment during capture and would find Yoon's method for business cards. They would apply Yoon's alignment-guide technique to the analogous task of imaging a check to prevent skew and other errors from the outset.
  • Expectation of Success: Applying Yoon's alignment guide system from one rectangular document (a business card) to another (a check) would have been a simple, predictable substitution with a high expectation of success.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 3, 8, 9, 13, 18, and 19 based on Yoon alone, arguing that while Yoon does not explicitly teach a written instruction to "position the target document," adding such a user instruction would have been an obvious modification to improve usability.

4. Arguments Regarding Discretionary Denial

• The petition argued that the ’090 patent is eligible for Covered Business Method (CBM) review. Petitioner asserted that the patent is a CBM patent because its claims are directed to a financial product or service—specifically, the act of depositing a check.
• Further, Petitioner argued the patent does not fall under the exception for "technological inventions." The claims do not solve a technical problem with a technical solution but rather address the non-technical, abstract problem of composing a good photograph. The recited hardware components (processor, camera, display) are described generically and used in a conventional manner, without any purported improvement to the functioning of the computer or mobile device itself.

5. Relief Requested

• Petitioner requests institution of a Covered Business Method (CBM) review and cancellation of claims 1-20 of Patent 9,818,090 as unpatentable.