Wells Fargo Bank NA v. United Services Automobile Association

1. Case Identification

• Case #: CBM2019-01083
• Patent #: 8,699,779
• Filed: June 5, 2019
• Petitioner(s): Wells Fargo Bank, N.A.
• Patent Owner(s): United Services Automobile Association
• Challenged Claims: 1-18

2. Patent Overview

• Title: System and Method for Remote Deposit Image Processing
• Brief Description: The ’779 patent discloses a system for remote check deposit using a mobile device. The core concept involves projecting an alignment guide on the device's display to help a user properly frame a check, thereby increasing the likelihood of capturing a high-quality, processable image.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nepomniachtchi, Acharya, and Yoon - Claims 1, 2, 4-12, and 14-18 are obvious over Nepomniachtchi in view of Acharya and Yoon.

• Prior Art Relied Upon: Nepomniachtchi (Patent 7,778,457), Acharya (WO 01/61436 A2), and Yoon (Application # 2007/0262148).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references taught all limitations of the challenged claims. Nepomniachtchi disclosed a system for capturing and processing check images using a mobile device for a check clearing process. Yoon taught a portable terminal (e.g., mobile device) that used on-screen "reference boundary lines" (an alignment guide) to assist a user and automatically captured an image of a document (a business card) once its edges were aligned with the guide. Acharya disclosed the back-end system for a remote deposit where a customer transmits a check image to a depository for presentment, clearing, and crediting to an account.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA), starting with Nepomniachtchi's mobile check imaging system, would have recognized the problem of poor image quality due to misalignment. To solve this known problem, a POSITA would combine Yoon’s use of a live-view alignment guide and automatic capture to improve image quality and user experience. This combination was a predictable solution to a known problem. A POSITA would have further incorporated Acharya’s teachings to provide the necessary back-end depository processing for the images captured by the Nepomniachtchi/Yoon system.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because applying Yoon’s alignment guide technology, designed for rectangular documents like business cards, to another rectangular document like a check was a straightforward application of known principles. The integration of these known software features on a mobile device platform was well within the skill of a POSITA at the time.

Ground 2: Obviousness over Nepomniachtchi, Acharya, Yoon, and Cho - Claims 3 and 13 are obvious over Nepomniachtchi in view of Acharya and Yoon, and further in view of Cho.

• Prior Art Relied Upon: Nepomniachtchi (Patent 7,778,457), Acharya (WO 01/61436 A2), Yoon (Application # 2007/0262148), and Cho (Patent 7,120,461).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination in Ground 1. Claims 3 and 13 add the limitation of receiving instructions to adjust the alignment guide (e.g., via an on-screen button). Petitioner argued that Cho explicitly taught this missing element. Cho disclosed a camera phone with various "composition guidelines" (alignment guides) and taught that a user could select from pre-programmed guides or adjust their parameters (type, shape, color) via input devices like direction keys to create a custom guide.
  • Motivation to Combine: Petitioner asserted that a POSITA implementing the Nepomniachtchi/Yoon system would recognize that checks and other documents come in various sizes, making Yoon's static-sized alignment guide suboptimal. To improve the system's flexibility and utility, a POSITA would have been motivated to look for ways to make the alignment guide adjustable. Cho directly addressed this by teaching user-customizable guides to "greatly enhanc[e] the utility and flexibility of the camera phone," providing the clear motivation to add its teachings to the primary combination.
  • Expectation of Success: A POSITA would have expected success in adding Cho's user-adjustable guide feature to the system of Ground 1. Implementing user-selectable or adjustable on-screen graphics was a known and routine software development task at the time, presenting no significant technical hurdles.

4. Key Claim Construction Positions

• "determine whether the image of the check aligns with the alignment guide": Petitioner argued against a construction of this term adopted by the Board in a prior proceeding (CBM2019-00005), which was "determining that the alignment of the image of the check is within an acceptable threshold such that the image can be electronically read."
• Petitioner contended this construction improperly imported limitations from the specification that are not even present in the specification. Petitioner argued the specification only suggests the alignment guide helps reduce non-conforming images, not that it guarantees the image will be electronically readable. Petitioner asserted the term should remain unconstrued, as both parties had urged in the parallel district court case.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) based on the General Plastic factors would be inappropriate, even though this was a follow-on petition.
• The prior petition was for a Covered Business Method (CBM) review and was denied on the procedural ground that the ’779 patent was not eligible for CBM review; the Board never reached the merits of the invalidity arguments.
• Critically, the primary reference in the current IPR, Nepomniachtchi, qualified as prior art under pre-AIA §102(e) and could not have been asserted in the prior CBM proceeding. Petitioner asserted this IPR was the only way to get a full and complete airing of the invalidity case based on Nepomniachtchi. Therefore, Petitioner argued it was not strategically staging petitions and that institution would be equitable and not unduly prejudicial to the Patent Owner.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-18 of the ’779 patent as unpatentable under 35 U.S.C. §103.