PTAB

IPR2019-01082

Wells Fargo Bank NA v. United Services Automobile Association

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Remote Deposit of Checks
  • Brief Description: The ’571 patent discloses a system for remote check deposit using a mobile device. The system involves monitoring a check image within the camera's field of view against pre-defined quality criteria; if the criteria are met, the device automatically captures the image and transmits it to a financial institution for processing.

3. Grounds for Unpatentability

Ground 1: Claims 1-13 are obvious over Nepomniachtchi, Acharya, and Yoon.

  • Prior Art Relied Upon: Nepomniachtchi (Patent 7,778,457), Acharya (International Publication No. WO 01/61436 A2), and Yoon (Application # 2007/0262148).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the primary reference, Nepomniachtchi, taught a system for capturing check images with a mobile device for a check clearing process. Nepomniachtchi explicitly recognized that this method could result in low-quality images due to problems like poor alignment (skew) and lighting, and proposed solutions such as prompting the user to retake the image or post-processing to correct skew. Petitioner asserted that Yoon taught the key missing element: a system on a portable terminal for capturing an image of a business card. Yoon disclosed displaying on-screen reference boundary lines (an alignment guide) and automatically capturing the image only when the document's edges coincided with the guide, also checking for sufficient brightness. This directly addresses the quality problems identified in Nepomniachtchi. Petitioner further argued that Acharya taught a complete remote deposit system where a customer transmits a scanned check image to a bank, providing any necessary context for a "depository" or "deposit system" that might be found lacking in Nepomniachtchi.
    • Motivation to Combine: The primary motivation asserted was to solve a known problem. Nepomniachtchi identified the problem of poor image quality from user-captured checks on mobile devices. A person of ordinary skill in the art (POSITA), seeking to improve the reliability and user experience of Nepomniachtchi's system, would have looked for ways to ensure a high-quality image was captured initially, rather than relying on computationally intensive post-processing or forcing users to retake photos. Yoon provided a known, elegant solution for an analogous task—capturing a rectangular document (a business card) with a portable device. A POSITA would combine Yoon’s method of using an on-screen guide for alignment and automated capture with Nepomniachtchi's mobile check deposit framework to improve image quality. Petitioner contended the substitution of Acharya's deposit system into Nepomniachtchi's framework would be a predictable substitution of one known element for another.
    • Expectation of Success: A POSITA would have had a high expectation of success in applying Yoon's teachings. The technique of aligning a rectangular document using on-screen guides and monitoring image properties like brightness is not specific to business cards and would be directly applicable to capturing another rectangular document, a check, with predictable results.

4. Key Claim Construction Positions

  • Petitioner argued against the Board's sua sponte constructions of "passes the monitoring criterion" and "a monitoring criterion" adopted in a prior related proceeding (CBM2019-00004). Petitioner contended these constructions were improper for two reasons: they committed a "cardinal sin of patent law" by importing limitations from the specification into the claims, and the imported limitations (e.g., requiring that check data be obtained "without error") were not even supported by the specification, which only taught a reduction in non-conforming images.
  • For the term "feedback" (claims 2 and 10), Petitioner disputed Patent Owner's proposed construction that feedback must be "actions to take in order to satisfy" a criterion. Petitioner argued this was inconsistent with the claim language, which recites providing feedback after a criterion is passed. Petitioner proposed a broader construction of "information or an instruction relating to an attempt to capture an image of the check," which it argued better reflects the patent's disclosure.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d), despite this being a follow-on petition. Petitioner's prior filing against the ’571 patent was a Covered Business Method (CBM) review, which the Board denied on the basis that the claims were not eligible for CBM review. The denial was procedural and did not address the merits of the invalidity arguments.
  • Crucially, Petitioner argued that the primary prior art combination asserted in this inter partes review (IPR) could not have been brought in the CBM proceeding. The main reference, Nepomniachtchi, qualifies as prior art under §102(e), which was not a permissible basis for a CBM petition. Therefore, Petitioner contended it was not engaging in strategic, successive filings, as the merits of this specific obviousness ground had never been presented to or considered by the Board.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-13 of the ’571 patent as unpatentable under 35 U.S.C. §103.