PTAB

IPR2020-00194

Unified Patents LLC v. Lighthouse Consulting Group LLC

Log In

1. Case Identification

2. Patent Overview

  • Title: System and Method for Remote Deposit of Negotiable Instruments
  • Brief Description: The ’940 patent discloses a system for remote check depositing that avoids the need for dedicated check scanners. The system uses a carrier to hold one or more negotiable instruments, which is then scanned by a ubiquitous imaging device (e.g., a fax machine or flatbed scanner) to transmit images to a remote receiving unit for processing.

3. Grounds for Unpatentability

Ground 1: Claims 1-5 are obvious over Davis in view of Fueki.

  • Prior Art Relied Upon: Davis (Application # 2008/0040280) and Fueki (Patent 5,339,412).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Davis disclosed the core elements of claim 1. Davis teaches a remote deposit system where multiple checks are placed in a transparent, multi-pocket carrier, which is then fed into a standard fax machine (the imaging device) to transmit images over a telephone network (the link) to a remote host computer (the receiving unit). The host computer receives, stores, and processes the images to combine the front and back sides of the checks.
    • Motivation to Combine (for §103 grounds): Petitioner contended that Davis does not explicitly teach placing an identifier that is both unique to the carrier and independent of check data on the front and back sides of the carrier. Fueki, however, teaches applying a unique mark (e.g., a barcode), independent of document content, to each page of a document to be scanned to reliably associate the separate pages. A POSITA would combine Fueki’s teaching with Davis’s system to place such a unique identifier on both sides of the Davis carrier to solve the known problem of reliably pairing separately scanned front and back images.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because the combination involved applying a known document management technique (unique identifiers for page pairing from Fueki) to a known system (Davis's remote deposit carrier) to achieve the predictable result of improved image pairing reliability.

Ground 2: Claims 6-10 are obvious over Davis in view of Fueki and Cantley.

  • Prior Art Relied Upon: Davis (Application # 2008/0040280), Fueki (Patent 5,339,412), and Cantley (Patent 7,225,975).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground challenged claims that are substantially similar to those in Ground 1, but with the additional limitation that the carrier has "a surface area for providing deposit information." Petitioner asserted that the combination of Davis and Fueki renders the common elements obvious for the same reasons articulated in Ground 1.
    • Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would be further motivated to incorporate teachings from Cantley. Cantley discloses a check carrier with a dedicated area (a MICR area) for printing deposit information as a backup in case the original check's information is unreadable after scanning. A POSITA would modify the Davis/Fueki carrier to include this feature from Cantley to improve the system's robustness against poor image quality, a known problem in the field.
    • Expectation of Success (for §103 grounds): The combination was argued to be a predictable design choice, as it involved adding a known feature (a surface area for deposit information from Cantley) to a check carrier to enhance its reliability.

4. Key Claim Construction Positions

  • “the identifier being independent of data on the negotiable instruments” (Claims 1 and 6): Petitioner argued this term should be construed to mean "not depending or contingent upon information on the negotiable instruments." This construction was supported by the term’s plain meaning and the prosecution history, where the applicant distinguished prior art that reproduced data from the check onto the carrier.
  • “imaging device” and “receiving unit” (Claims 1 and 6): Petitioner asserted that these terms have sufficiently definite structural meaning to a POSITA (e.g., a fax machine/scanner and a computer, respectively) and are not means-plus-function terms under §112, ¶6. In the alternative, if the Board were to construe them as means-plus-function terms, Petitioner identified the corresponding functions and structures as disclosed in the specification.

5. Key Technical Contentions (Beyond Claim Construction)

  • Denial of Priority Date: A central contention was that the ’940 patent is not entitled to the filing date of its provisional application (’533 Provisional). Petitioner argued the provisional application lacks written description support for key limitations added during prosecution, namely: (1) a carrier designed to receive a plurality of negotiable instruments for simultaneous imaging, and (2) software at the receiving unit designed to break down the composite images into individual check images. This alleged lack of support pushes the patent’s effective filing date from October 2005 to October 2006, thereby making Davis (filed August 2006) available as prior art under 35 U.S.C. §102(e).

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) or §325(d) would be inappropriate. The petition asserted that none of the cited prior art was considered during the original prosecution, and the arguments presented do not overlap with those made before the examiner. Furthermore, Petitioner noted the Patent Owner’s extensive litigation campaign, suggesting that instituting review would be an efficient way to resolve validity questions for numerous parties.

7. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-10 of the ’940 patent as unpatentable.