PTAB

IPR2021-01073

PNC Bank NA v. United Services Automobile Association

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1. Case Identification

2. Patent Overview

  • Title: Remote Check Deposit via Mobile Image Capture
  • Brief Description: The ’571 patent relates to a system for remote check deposit using a camera on a mobile device. The invention focuses on monitoring a check image against predefined criteria (e.g., positioning, brightness, skew) to ensure sufficient quality for processing, providing feedback to the user, and automatically capturing the image once the criteria are met before transmitting it to a depository.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 6, 9, 10, and 13 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, wherein a customer uses a mobile device with a camera (a "Remote Customer Terminal") to capture and transmit a check image to a bank. However, Acharya lacked specific details on how to ensure high image quality. Luo addressed this known problem in the analogous field of capturing document images (e.g., business cards) for Optical Character Recognition (OCR). Luo taught a system that monitors a document's alignment in a preview window using reference lines, reducing "projective distortion" and blur to produce a clearer image suitable for OCR.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would have been motivated to combine Luo's image quality and automated capture techniques with Acharya's remote check deposit framework. The motivation stemmed from the recognized problem that images captured with handheld devices often suffer from poor quality, which impairs subsequent data extraction. Luo provided a known solution to improve a known device (mobile camera systems) for a predictable result (higher quality images for OCR).
    • Expectation of Success: A POSITA would have had a high expectation of success because both references describe implementing their techniques on the same types of handheld devices (e.g., mobile phones, PDAs) for the analogous purpose of capturing and processing document images. Applying Luo's alignment monitoring to Acharya's check capture process was presented as a straightforward integration.

Ground 2: Claims 4 and 5 are obvious over Acharya and Luo, in view of Nepomniachtchi.

  • Prior Art Relied Upon: Acharya (Patent 8,768,836), Luo (Chinese Application # CN 1897644A), and Nepomniachtchi (Application # 2009/0185241).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Acharya/Luo combination. Petitioner asserted that dependent claims 4 and 5 require instructions for the user to obtain a second image if the first fails the monitoring criterion. Nepomniachtchi, which also addresses mobile image capture for financial documents, explicitly taught prompting a user to "take another image" if the quality of the first is determined to be poor. It also taught prompting the user to capture an image of the back of the check, which might be necessary for endorsement.
    • Motivation to Combine: A POSITA, seeking to build a robust commercial check deposit system based on Acharya/Luo, would be motivated to include functionality for handling common failure scenarios (poor image quality) and necessary process steps (capturing an endorsement). Nepomniachtchi provided an obvious and direct solution for both scenarios, offering a way to improve the underlying system.
    • Expectation of Success: Success would have been expected, as capturing a second image (either of the same side or the back) is a simple extension of the primary image capture functionality already established in the Acharya/Luo combination.

Ground 3: Claim 12 is obvious over Acharya and Luo, in view of Yoon.

  • Prior Art Relied Upon: Acharya (Patent 8,768,836), Luo (Chinese Application # CN 1897644A), and Yoon (Application # 2007/0262148).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claim 12, which specifies that the monitoring criterion comprises "light contrast or light brightness." Petitioner argued that Yoon taught using image brightness as a primary monitoring criterion to determine when to automatically capture a business card image. Yoon described a portable terminal that converts image brightness into measurable data and compares it to a reference value to control the automatic capture, ensuring the image is suitable for recognition.
    • Motivation to Combine: Petitioner argued a POSITA would combine Yoon's brightness analysis with the Acharya/Luo system to add another layer of image quality control. Brightness is a well-known factor affecting OCR accuracy. Yoon's technique was presented as a complementary, rather than competing, strategy to Luo's alignment-based monitoring, and its inclusion would predictably increase the likelihood of capturing a high-quality check image.
    • Expectation of Success: The combination was asserted to be predictable because Yoon's technique was applied to similar hardware (portable terminals with cameras) for the analogous purpose of capturing documents for data extraction.

4. Key Claim Construction Positions

  • Petitioner addressed the term "feedback ... regarding the image of the check with respect to the monitoring criterion" (claim 2). Petitioner argued for its plain and ordinary meaning, opposing Patent Owner's proposed narrower construction of "instructions to the user regarding actions to take in order to satisfy... criteria." Petitioner contended that the patent specification describes feedback that simply advises a user when an image passes the criteria (e.g., prompting to capture), which is not an instruction on an action to satisfy the criteria.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was not warranted.
  • Petitioner stipulated that, if the IPR was instituted, it would not advance the same grounds in the co-pending district court proceeding, thereby eliminating overlap.
  • Petitioner asserted that the co-pending litigation was in an early stage, with discovery incomplete and no dispositive motions on validity briefed or decided.
  • The scheduled trial date in the district court was argued to be highly uncertain, potentially occurring after the Final Written Decision in the IPR.
  • The petition presented new prior art (Acharya, Luo, Yoon) and new combinations not previously considered by the USPTO during prosecution or in prior IPRs, weighing strongly in favor of institution.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 9, 10, 12, and 13 of Patent 8,977,571 as unpatentable.