PTAB

CBM2019-00003

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

Title: System and Method for Remote Deposit
Brief Description: The ’517 patent describes a system for the remote deposit of financial instruments, such as checks, using a mobile device. The technology involves the mobile device’s processor generating an alignment guide on the screen to assist a user in capturing a high-quality, properly aligned digital image of the instrument, which is then transmitted to a financial institution for processing.

Prior Art Relied Upon: Not applicable for §101 analysis, but Petitioner referenced historical practices and prior art context.
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the claims are directed to patent-ineligible abstract ideas. Specifically, it contended the claims cover the long-standing mental process of composing a good photograph (aligning a camera with a subject) and the fundamental economic practice of depositing a check. Petitioner asserted that the ’517 patent merely takes these abstract concepts and implements them on generic, conventional computer components (a mobile device, camera, and server) without adding an inventive concept.
- Key Aspects: The argument asserted that under the two-step Alice framework, the claims fail both steps. They are directed to abstract ideas, and the additional elements (a generic mobile device, processor, network) are merely well-understood, routine, and conventional activities that are insufficient to transform the abstract idea into a patent-eligible invention.

Prior Art Relied Upon: Ramachandran (Application # 2009/0114716), which incorporates by reference Blackson (Patent 7,419,093), and Yoon (Application # 2007/0262148).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Ramachandran taught a system for remote check deposit using a mobile device's camera, fulfilling the basic elements of the challenged claims. However, Ramachandran’s method created a risk of poor image quality (e.g., skew), which Blackson addressed post-capture via software deskewing. Yoon was argued to teach a solution to this problem by disclosing a portable terminal that uses on-screen "reference boundary lines" (an alignment guide) to help a user frame a business card and automatically capture a well-aligned image.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would be motivated to combine Yoon's alignment guide with Ramachandran's check deposit system to improve the quality and reliability of the initial image capture. This would be desirable to ensure compliance with the Check 21 Act, which requires accurate image representations for substitute checks, and to avoid the need for post-capture processing like deskewing.
- Expectation of Success: A POSITA would have a reasonable expectation of success because both Ramachandran and Yoon describe systems implemented on conventional mobile device hardware (camera, processor, display), making their integration straightforward and predictable.

Prior Art Relied Upon: Ramachandran (Application # 2009/0114716), Yoon (Application # 2007/0262148), and Cho (Patent 7,120,461).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon Ground 2 to address dependent claims requiring adjustable or selectable alignment guides. Petitioner argued that while Yoon taught a static alignment guide, Cho taught a camera phone with various types of user-selectable and customizable "composition guidelines." Cho explicitly disclosed that a user could adjust the guide’s type, shape, or color, or create a custom guide to handle subjects of different sizes and shapes.
- Motivation to Combine: A POSITA would recognize that financial instruments (as in Ramachandran) and other documents come in various sizes and shapes, a problem not addressed by Yoon's static guide. To improve the utility and flexibility of the combined Ramachandran/Yoon system, a POSITA would be motivated to incorporate Cho’s teachings on adjustable and customizable alignment guides to accommodate this variability.

Petitioner argued for correcting an obvious drafting error in dependent claim 12, which recites instructions to "clean the instrument." Petitioner contended this phrase lacks antecedent basis in claim 10 and is unsupported by the specification, which only describes processing or "cleaning" the captured information (e.g., by cropping the image). Petitioner argued the Board should construe the term to mean "clean the captured information of the instrument."

Petitioner argued that the ’517 patent was eligible for Covered Business Method (CBM) review because it claimed a financial product or service and was not a "technological invention." It asserted the patent was directed to the financial activity of check depositing, as recited in claim 2. Petitioner further contended that the patent does not solve a technical problem with a technical solution but instead uses conventional technology to solve the non-technical problem of how to take a good picture, a task long performed by photographers. The generic recitation of hardware components, illustrated as black boxes, was argued to not constitute a technological improvement.

Petitioner requested institution of a Covered Business Method review and cancellation of claims 1-20 of the ’517 patent as unpatentable under 35 U.S.C. §§ 101 and 103.