Wells Fargo Bank NA v. United Services Automobile Association

1. Case Identification

• Case #: IPR2019-01081
• Patent #: 9,336,517
• Filed: June 5, 2019
• Petitioner(s): Wells Fargo Bank, N.A.
• Patent Owner(s): United Services Automobile Association
• Challenged Claims: 1, 5-10, 12-14, 17-20

2. Patent Overview

• Title: Mobile Remote Deposit Capture
• Brief Description: The ’517 patent discloses systems and methods for capturing a digital image of a financial instrument, such as a check, using a mobile device. The invention focuses on using a software-generated "alignment guide" on the device's screen to help the user properly position the instrument, thereby improving the quality of the captured image for remote deposit processing.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nepomniachtchi and Yoon - Claims 1, 5-6, 9-10, 12-13, and 18-20 are obvious over Nepomniachtchi in view of Yoon.

• Prior Art Relied Upon: Nepomniachtchi (Patent 7,778,457) and Yoon (Application # 2007/0262148).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nepomniachtchi disclosed the foundational system for remote check deposit using a mobile device, including capturing a check image and transmitting it to a server. Nepomniachtchi acknowledged that poor image quality, particularly from misalignment or skew, was a problem. Yoon addressed this exact problem by teaching a portable terminal that uses "reference boundary lines" (an alignment guide) on its display to assist a user in positioning a document (a business card). Yoon’s system automatically captures the image once the document's edges coincide with the guide. Petitioner contended that implementing Yoon’s alignment guide and automatic capture functionality into Nepomniachtchi’s check deposit system would render the limitations of independent claims 1 and 10 obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) seeking to improve the unreliable image capture process described in Nepomniachtchi would be motivated to find a way to ensure proper alignment before capture. This would reduce the need for computationally intensive post-processing like deskewing. Petitioner asserted that Yoon provided a known, elegant solution for aligning rectangular documents (business cards) using a mobile device’s camera and display. A POSITA would have recognized that this technique was directly applicable to another type of rectangular document—a check—to solve the very problem of misalignment that Nepomniachtchi identified.
  • Expectation of Success: A POSITA would have a high expectation of success because both references involved capturing images of rectangular documents with a mobile device camera. The technology for overlaying a guide on a live camera feed and performing edge detection was well-understood and predictable to implement.

Ground 2: Obviousness over Nepomniachtchi, Yoon, and Cho - Claims 7, 8, 14, and 17 are obvious over Nepomniachtchi in view of Yoon and further in view of Cho.

• Prior Art Relied Upon: Nepomniachtchi (Patent 7,778,457), Yoon (Application # 2007/0262148), and Cho (Patent 7,120,461).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Nepomniachtchi and Yoon to address dependent claims requiring user-adjustability of the alignment guide. Petitioner argued that Cho disclosed a camera phone with various user-selectable and customizable "composition guidelines." Cho explicitly taught that a user could adjust the characteristics of these guides—such as aspect ratio (claim 7), location (claim 8), and selection via a button (claim 14)—to enhance the "utility and flexibility of the camera phone." Adding Cho’s teachings of user-adjustable guides to the base system of Nepomniachtchi and Yoon would satisfy the limitations of the challenged dependent claims.
  • Motivation to Combine: While the Nepomniachtchi/Yoon combination provided an alignment guide, Yoon’s guide was static. A POSITA would be motivated to improve this system to handle various documents of different sizes and shapes (e.g., personal checks, business checks). Petitioner contended that Cho provided the motivation and the means, teaching that allowing user customization of alignment guides greatly enhances a camera phone's flexibility. A POSITA would therefore combine Cho’s teachings to create a more robust and commercially desirable remote deposit application capable of handling a variety of instruments.
  • Expectation of Success: The combination was a matter of applying known user interface principles (customizable guides) from Cho to the established mobile imaging application of Nepomniachtchi/Yoon. This integration would have been straightforward for a POSITA.

4. Key Claim Construction Positions

• "identification information pertaining to the instrument": Petitioner argued against Patent Owner’s proposed construction limiting this term to "corners of the instrument." Petitioner contended that the specification showed it could include other data, such as MICR encoding, and that limiting the claim to "corners" was improper.
• "determine whether the at least one feature of the instrument aligns with the alignment guide": Petitioner argued that a construction of this term adopted by the Board in a prior proceeding was improper. Petitioner asserted that the prior construction, which required determining alignment is "within an acceptable threshold such that the captured information can be electronically read," improperly imported limitations from the specification into the claims.
• Drafting Error in Claim 12: Petitioner argued that claim 12 contained an obvious drafting error. The claim recited instructions to "clean the instrument," which lacked antecedent basis and was technically nonsensical. Petitioner contended it should be construed to mean "clean the captured information of the instrument," as supported by the specification’s discussion of image cropping.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) based on General Plastic factors would be inappropriate. This petition followed a prior Covered Business Method (CBM) review petition that was denied on the procedural ground that the ’517 patent was not eligible for CBM review; the merits of the invalidity arguments were never reached.
• Critically, Petitioner argued that the primary reference in the instant IPR, Nepomniachtchi, could not have been asserted in the prior CBM proceeding because it qualified as prior art under §102(e). Therefore, the Board had not expended any resources considering the core prior art combination presented here, and Petitioner was not strategically staging petitions.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 5-10, 12-14, and 17-20 of the ’517 patent as unpatentable.