PTAB

IPR2021-01070

PNC Bank NA v. United Services AuTomobile AsSociATION

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1. Case Identification

2. Patent Overview

  • Title: Remote Check Deposit Using Mobile Devices
  • Brief Description: The ’779 patent discloses a system for remote check deposit where a user captures a digital image of a check using a mobile device. The invention’s purported novelty lies in providing an "alignment guide" on the device’s display and automatically capturing the check image once the system determines the check is properly aligned within the guide, thereby improving image quality for subsequent 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 Patent Application Publication No. CN 1897644A).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Acharya taught the foundational system for remote check deposit, but lacked specifics on ensuring high-quality image capture. Acharya disclosed a system where a user at a “Remote Customer Terminal” (RCT)—such as a cell phone or PDA with a camera—captures an image of a check and transmits it to a depository (a “Bank of First Deposit”). This established the basic framework of independent claims 1 and 10, including a mobile device with a camera, a processor, a display, and communication with a depository. However, Acharya did not detail how to prompt the user or determine if a captured image was suitable for processing.

      Petitioner asserted that Luo supplied the missing elements. Luo addressed the known problem of poor image quality from handheld devices due to factors like projective distortion. Luo taught a system for capturing document images that displayed "reference lines" (functionally equivalent to the ’779 patent’s "alignment guide") on a mobile device’s preview screen. The system monitored the document image and, when its edges were determined to be "substantially parallel" to the reference lines, it automatically captured the image. This process was designed to ensure a clear, well-aligned image suitable for optical character recognition (OCR). Petitioner contended that Luo’s "reference lines" and auto-capture function directly map onto the ’779 patent’s "alignment guide" and "automatically capture" limitations. The dependent claims requiring alignment of one, two, or three edges were also taught by Luo, which disclosed using various numbers of reference lines.

    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Acharya and Luo to improve the functionality of Acharya’s system. Acharya established the commercial need and basic system for remote check deposit but was silent on solving the well-known problem of capturing high-quality images with a handheld camera. Luo provided a direct, non-conflicting, and elegant solution to this very problem. A POSITA would have been motivated to implement Luo's known technique for improving image quality into Acharya's remote deposit system to predictably increase the reliability and success rate of check processing, a clear and expected improvement.

    • Expectation of Success: A POSITA would have had a reasonable expectation of success. Both references operate on the same platforms (handheld devices like cell phones and PDAs) and for a similar purpose (capturing document images for data extraction). Applying Luo’s general document alignment technique to a specific type of document like a check was a straightforward software implementation that presented no technical hurdles.

4. Key Claim Construction Positions

  • Petitioner stated it would rely on constructions proposed by the Patent Owner (PO) in co-pending litigation or those agreed upon by the parties. Two constructions were central to the invalidity argument:
    • "determine whether the image of the check aligns with the alignment guide": The petition adopted the PO's proposed construction of "determining that the alignment of the image of the check is within an acceptable threshold such that the image can be electronically read." Petitioner argued that Luo’s requirement that a document edge be "substantially parallel" to a reference line met this "acceptable threshold" standard, as its purpose was to ensure the image was clear enough for OCR.
    • "mobile device": The petition used the PO’s proposed construction of a "computing device capable of being easily moved and that is controlled by a mobile operating system." This was argued to be taught by Acharya’s disclosure of a "wireless handheld device" like a cell phone running "Windows Mobile™" and Luo's disclosure of a "handheld electronic device."

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) (considering Fintiv factors) or §325(d) was not warranted.
    • Fintiv Factors: The petition contended that the co-pending district court case was in its early stages, with no significant discovery, no dispositive motion briefing, and an uncertain trial date. Petitioner also stipulated that it would not pursue the same invalidity grounds in the district court if the IPR were instituted, thereby avoiding duplicative efforts and conserving judicial resources.
    • New Art and Arguments: The primary combination of Acharya and Luo had not been previously considered on its merits by the Patent Office. Neither reference was cited during the original prosecution of the ’779 patent. While Luo had been cited in a petition against a related patent, that IPR was discretionarily denied before any substantive analysis of the reference. Therefore, Petitioner argued the Board had a compelling reason to institute review to consider the novel arguments and prior art combination presented.

6. Relief Requested

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