PNC Bank NA v. United Services Automobile Association

1. Case Identification

• Case #: IPR2021-01074
• Patent #: 10,482,432
• Filed: July 14, 2021
• Petitioner(s): PNC Bank N.A.
• Patent Owner(s): United Services Automobile Association
• Challenged Claims: 1-7, 10-21, and 23

2. Patent Overview

• Title: Remote Check Capture/Deposit System
• Brief Description: The ’432 patent describes a system for remote check deposit where a customer uses a mobile device with a downloaded application to capture a check image. The application guides the user, performs error checking, and transmits the image to a bank computer for processing.

3. Grounds for Unpatentability

Ground 1: Obviousness over Garcia, Byrne, and Lev - Claims 1-3, 6-7, 10-15, and 19-21 are obvious over Garcia in view of Byrne and Lev.

• Prior Art Relied Upon: Garcia (WO 2005/043857), Byrne (Application # 2006/0249567), and Lev (Application # 2006/0164682).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Garcia, Byrne, and Lev teaches every limitation of the challenged claims. Garcia, which was not before the examiner during prosecution, discloses the foundational remote check deposit system using a mobile device with a camera and an application to conduct an interactive session with a bank. Byrne teaches key missing details, specifically providing the application as a "downloaded app" from a bank and performing local "checking for errors" (e.g., verifying endorsement) on the device before transmitting the image to conserve network resources. Lev supplies the final elements for claim 1, teaching an interactive session that provides specific user instructions, such as "guiding the user to the proper areas and proper imaging distance" to ensure optimal image capture for Optical Character Recognition (OCR).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Garcia and Byrne to provide a known, secure, and easily maintainable method (Byrne's downloadable thin-client application) for distributing Garcia's mobile deposit application. A POSITA would further incorporate Lev's teachings to improve the quality of the captured check images in Garcia's system. Because Garcia's system relies on OCR, improving image quality through user guidance, as taught by Lev, would have been a logical and necessary step to increase system reliability and reduce deposit errors.
  • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success. Combining the references involved applying known techniques to a known system to achieve predictable results. Byrne's thin-client software was known to be compatible with mobile devices, and adding Lev's user interface instructions was a routine design choice to enhance usability and OCR accuracy.

Ground 2: Obviousness over Garcia, Byrne, Lev, and Slater - Claim 3 is obvious over the combination of Garcia, Byrne, Lev, and Slater.

• Prior Art Relied Upon: Garcia (WO 2005/043857), Byrne (Application # 2006/0249567), Lev (Application # 2006/0164682), and Slater (European Application # 0984410).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the primary combination of Garcia, Byrne, and Lev to address claim 3, which requires OCR to include "determining an amount of the check and comparing the determined amount to an amount indicated by the customer." Petitioner argued that while Garcia teaches OCR and user entry of the check amount, Slater explicitly discloses a system that validates checks by performing a "comparison between the scanned amount and the entered amount."
  • Motivation to Combine: A POSITA implementing the Garcia/Byrne/Lev system would be motivated to add Slater's validation technique to improve the reliability of the check deposit process. Verifying that the OCR-determined amount matches the user-entered amount is a critical step to prevent erroneous deposits, making this an obvious improvement.

Ground 3: Obviousness over Garcia, Byrne, Lev, and Lugg - Claim 4 is obvious over the combination of Garcia, Byrne, Lev, and Lugg.

• Prior Art Relied Upon: Garcia (WO 2005/043857), Byrne (Application # 2006/0249567), Lev (Application # 2006/0164682), and Lugg (Application # 2005/0281448).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claim 4, which requires the OCR to include "reading a MICR line of the check in the photo." Lugg is introduced because it explicitly teaches an OCR reader for optically reading a Magnetic Ink Character Recognition (MICR) line from check image data.
  • Motivation to Combine: A POSITA would combine Lugg with the base references to automate the extraction of essential check processing data, such as the bank routing number and account number, directly from the check image. Since the base system in Garcia receives only an image, using Lugg's technique to read the MICR line from that image is a necessary and obvious step for automated validation and processing.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including: (1) Claims 5 and 16-18 over the primary combination plus Davis (Application # 2005/0216410) for its teachings on duplicate check detection and log file generation; and (2) Claim 23 over the primary combination plus Dance (Application # 2003/0086615) for its teachings on displaying a graphical illustration to assist the user with image capture.

4. Key Claim Construction Positions

• Petitioner argued that the invalidity grounds hold under either its own or the Patent Owner's proposed constructions from co-pending litigation.
• "checking for errors": Petitioner proposed this term means "validating information in the check image." It contended that Byrne's disclosure of detecting an endorsement or proper scanning meets this limitation.
• "instructing," "giving an instruction," etc.: Petitioner asserted these terms lack patentable weight. However, it argued that even if they are given weight, Garcia's "interactive session" inherently implies user instruction, and Lev explicitly teaches providing such guidance for image capture.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and the Fintiv factors.
• Petitioner contended that the co-pending district court litigation schedule was highly uncertain, making it unlikely to conclude before a Final Written Decision (FWD) in the IPR.
• The petition presented new prior art and arguments not previously before the Patent Office, most notably the Garcia reference, which Petitioner described as teaching the core inventive concept of the ’432 patent. Petitioner argued that because Garcia was never considered during prosecution, and the other secondary references were not previously considered in combination with Garcia, institution would serve the public interest.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-7, 10-21, and 23 of the ’432 patent as unpatentable.