PTAB

IPR2021-01073

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 ’571 patent discloses systems and methods for remotely depositing a check using a camera on a mobile device. The technology involves monitoring an image of the check against predefined quality criteria and providing feedback to the user before capturing and transmitting the image to a financial institution.

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 using a mobile device camera to capture and transmit a check image to a bank. However, Acharya did not detail how to ensure high image quality. Luo addressed this known problem for general document capture by teaching a system that monitors a document image in a preview window against a "monitoring criterion"—specifically, whether the document's edges are substantially parallel to reference lines on the display. Luo further taught automatically capturing the image only "when the image ... passes the monitoring criterion." Petitioner contended this directly maps to the core limitations of independent claims 1 and 9.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine Luo's image quality and automatic capture techniques with Acharya's remote deposit system. The combination would address the known problem of poor image quality (e.g., blur, projective distortion) from handheld devices, thereby improving the reliability of the check deposit process, which was a simple application of a known technique to a known system to yield predictable results.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references, as both relate to improving image capture on handheld electronic devices for data extraction. The principles taught by Luo for general documents were argued to be directly applicable to checks.

Ground 2: Claims 4 and 5 are obvious over Acharya, Luo, and 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 combination of Acharya and Luo to address dependent claims 4 and 5, which require instructions for obtaining a second image of the check. Petitioner asserted that Nepomniachtchi, which discloses mobile image capture for financial documents, explicitly taught providing feedback that prompts a user to obtain a second image. Nepomniachtchi described two scenarios: prompting the user to capture an image of the back of the check (which may need to be endorsed) or prompting a user to retake a picture if the quality of the first image is determined to be poor.
    • Motivation to Combine: A POSITA would have been motivated to add the teachings of Nepomniachtchi to the base Acharya/Luo system to add practical, necessary functionality. Capturing the back of a check and re-capturing a poor-quality image are routine steps in a robust remote deposit workflow. This combination simply integrated known features to improve the overall utility of the system.

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 also built upon the Acharya/Luo combination to address dependent claim 12, which requires the "monitoring criterion" to comprise "light contrast or light brightness of the image." While Luo taught a geometric monitoring criterion (alignment), Yoon taught using photometric criteria. Specifically, Yoon disclosed a portable terminal for capturing business cards that used "measurable brightness data" as a monitoring criterion to determine when to automatically capture an image.
    • Motivation to Combine: Petitioner argued that a POSITA would have viewed Yoon's brightness-based monitoring as a complementary and well-known technique for assessing image quality. A POSITA would combine Yoon's teaching with the Acharya/Luo system to create a more robust image quality assessment framework that considered both geometric alignment (from Luo) and lighting conditions (from Yoon), which was an obvious design choice.

4. Key Claim Construction Positions

  • Petitioner argued that for the term "feedback ... regarding the image of the check with respect to the monitoring criterion" (claim 2), the plain and ordinary meaning should apply, as adopted by a district court in a prior litigation involving the ’571 patent.
  • This construction is broader than the one proposed by the Patent Owner in co-pending litigation. Petitioner's position is that "feedback" is not limited to "instructions... to take action" but can also include simply advising the user when the image passes the criteria (e.g., an indicator turning green), which is consistent with the feedback disclosed in the prior art like Luo.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was not warranted.
  • Stipulation: Petitioner stipulated that, if review is instituted, it will not pursue the same grounds or any grounds that reasonably could have been raised in the IPR in the co-pending district court litigation.
  • Litigation Status: The co-pending litigation was in its early stages, with no claim construction order issued, no expert discovery, and no substantive briefing on invalidity.
  • New Art & Arguments: The petition presented new prior art (Acharya, Luo, Yoon) and combinations that were not considered during prosecution or in previous IPRs filed against the ’571 patent, weighing strongly in favor of institution.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-6, 9, 10, 12, and 13 of the ’571 patent as unpatentable.