PTAB

IPR2020-00759

Wells Fargo Bank NA v. Lighthouse Consulting Group LLC

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1. Case Identification

  • Case #: IPR2020-00759
  • Patent #: RE44,274
  • Filed: April 2, 2020
  • Petitioner(s): Wells Fargo & Company
  • Patent Owner(s): Lighthouse Consulting Group, LLC
  • Challenged Claims: 1-15

2. Patent Overview

  • Title: Ubiquitous Imaging Device Based Check Image Capture
  • Brief Description: The ’274 patent describes methods for remote check deposit using common imaging devices like flatbed scanners. The process involves securing a check to a carrier, creating images of the check's front and back, and transmitting these images to a financial institution for processing.

3. Grounds for Unpatentability

Ground 1: Obviousness over Buchanan, Wood, and Holoubek - Claims 1-15 are obvious over the combined teachings of Buchanan, Wood, and Holoubek.

  • Prior Art Relied Upon: Buchanan (Patent 7,386,511), Wood (Patent 5,419,588), and Holoubek (Patent 7,516,895).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the prior art, in combination, disclosed every element of the challenged claims. Buchanan taught a complete system for remote check deposit, including capturing and transmitting front and back check images to a financial institution. Wood taught using a document carrier—a translucent backing sheet with an adhesive—to support a damaged check so that both its front and back could be imaged. Holoubek taught a process for digitizing photographs where a unique identifier (e.g., a barcode) was placed on a medium with the item to be scanned. This identifier was captured with both the front and back images, which were imaged separately and later paired or merged using the identifier.

    • Petitioner mapped these teachings to independent claim 1. Buchanan’s remote deposit method provided the overall framework. Wood’s translucent backing sheet provided the claimed “carrier designed to permit a front image and a back image” of a secured check. Holoubek’s teaching of applying a unique identifier to a medium was applied to Wood’s carrier, satisfying the limitation of “creating an identifier on a front side and back side of the carrier.” The combined system would generate and transmit separate front and back images containing both the check and the unique identifier, as taught by Buchanan and Holoubek. Finally, the remote pairing of these separately received images using the identifier was explicitly taught by Holoubek for photographs, a direct parallel to pairing check images.

    • The arguments for dependent claims built upon this foundation. For example, Wood’s carrier was described as a “transparent non-sealing carrier without pockets,” meeting claim 2. Buchanan’s teaching of marking checks as “void” to prevent re-deposit met the limitations of claims 3 and 8. Buchanan also taught verifying endorsements and image quality, meeting claim 4.

    • Independent claim 9, which adds a step of “providing an area on the surface of the carrier to provide for deposit information,” was argued to be obvious because Wood taught a vellum strip on its carrier for reprinting magnetically readable characters from the check, which constitute deposit information.

    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine these references to achieve predictable results. A POSITA would improve Buchanan’s remote deposit system by incorporating Wood’s carrier to allow for the processing of damaged checks, a known problem. A POSITA would also recognize Wood’s carrier as an “identifier medium” as described in Holoubek and would be motivated to add Holoubek’s unique identifier to the carrier. This would solve the problem of associating separately scanned front and back images, a known challenge in document processing, thereby making Buchanan’s system more robust and reliable.

    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these known elements. The combination involved applying a known tracking solution (Holoubek’s identifiers) to a known document handling tool (Wood’s carrier) within an established process (Buchanan’s remote deposit system), each component performing its expected function.

4. Key Claim Construction Positions

  • “generating an electronic image of the front and back of the negotiable instrument along with the unique identifier…”: Petitioner proposed this term means generating a first image containing the front of the instrument and the identifier, and a second, separate image containing the back of the instrument and the identifier. This construction is central to the obviousness argument, as it aligns with Holoubek’s teaching of separately capturing front and back images of photographs and later pairing them using a common identifier.
  • “carrier”: Petitioner proposed “a physical sheet or mated sheets with a front and back side, into which negotiable instruments are insertable or to which negotiable instruments are attachable.” This construction is broad enough to encompass Wood’s single translucent backing sheet, which is critical for mapping Wood to the claims. Petitioner argued this construction was met, as was the Patent Owner’s proposed construction.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’274 patent as unpatentable under 35 U.S.C. §103.