PTAB

IPR2021-01070

PNC Bank NA v. United Services Automobile Association

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1. Case Identification

2. Patent Overview

  • Title: Remote Deposit of Checks
  • Brief Description: The ’779 patent discloses systems and methods for remotely depositing checks using a mobile device. The technology involves capturing a digital image of a check with the device's camera, using an on-screen alignment guide to ensure image quality, and transmitting the captured image to a depository for processing.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 7-10, and 15-17 are obvious over Acharya in view of Luo.

  • Prior Art Relied Upon: Acharya (Patent 8,768,836) and Luo (Chinese Application # CN 1897644A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Acharya taught the foundational system for remote check deposit claimed in the ’779 patent but lacked specific details on ensuring high-quality image capture. Acharya disclosed a "Remote Customer Terminal" (RCT), such as a cell phone with a camera, used to capture a check image and transmit it to a "Bank of First Deposit" (a depository). To supply the missing details, Petitioner pointed to Luo, which addressed the known problem of image distortion from handheld cameras. Luo taught a system for improving image quality for optical character recognition (OCR) by displaying "reference lines" (an alignment guide) on the device's screen. The system in Luo monitored the document's image and automatically captured it when its edges were detected to be "substantially parallel" to the on-screen reference lines, thereby reducing distortion and improving OCR accuracy. Petitioner asserted that combining Luo's alignment and auto-capture features with Acharya's remote deposit system rendered all challenged claims obvious.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Acharya and Luo to improve the performance of Acharya’s system. Since Acharya’s system relied on processing a captured image of a check, obtaining a high-quality, distortion-free image was a primary objective. Luo provided a known, compatible solution to this exact problem—using alignment guides and automated capture to improve image quality on the same type of handheld devices. A POSITA would have recognized that applying Luo's technique for improving document image capture to Acharya's check deposit system was a simple application of a known technique to an analogous system to achieve predictable results.
    • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success. Both references involved using handheld devices with cameras to capture images of paper documents (checks in Acharya, business cards and other documents in Luo) for subsequent electronic processing. The technical solutions were complementary, with Luo's alignment method directly addressing a known shortcoming in systems like Acharya's.

4. Key Claim Construction Positions

  • Petitioner stated it relied on claim constructions proposed by the Patent Owner in co-pending district court litigation or as agreed upon by the parties. This strategy was used to argue invalidity even under the Patent Owner's own proposed terms.
  • "determin[ing] whether the image of the check aligns with the alignment guide": Construed as "determining that the alignment of the image of the check is within an acceptable threshold such that the image can be electronically read." This construction was crucial for Petitioner’s argument that Luo’s teaching of detecting "substantially parallel" alignment between a document edge and a reference line met this limitation.
  • "when the image of the check is determined to align with the alignment guide": Construed as "at or after the moment the image of the check is determined to align with the alignment guide." This was used to map Luo's teaching of automatically capturing an image once the alignment condition is met.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors was not warranted.
  • Petitioner contended that the co-pending district court litigation was in its early stages, with minimal investment by the parties or the court in the merits of the invalidity case. It was further argued that the scheduled trial date was highly uncertain.
  • Crucially, Petitioner emphasized that the petition presented new prior art and arguments. Neither Acharya nor Luo had been substantively considered by the USPTO in connection with the ’779 patent. Petitioner argued this fact weighed heavily in favor of institution, as it provided the Board a novel, meritorious challenge to the patent's validity.

6. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 2, 7-10, and 15-17 of the ’779 patent as unpatentable.