PNC Bank NA v. United Services Automobile Association

1. Case Identification

• Case #: IPR2021-01077
• Patent #: 10,621,559
• Filed: July 21, 2021
• Petitioner(s): PNC Bank, N.A.
• Patent Owner(s): United Services Automobile Association
• Challenged Claims: 1-18

2. Patent Overview

• Title: Remote Deposit of a Check
• Brief Description: The ’559 patent discloses a system for remote check deposit that uses an image capture device and a general-purpose computer to transmit check image data to a server at a financial institution. The system is divided into a "first processing circuitry" (e.g., at a payee bank) that performs initial validation and a "second processing circuitry" (e.g., at a payor bank or clearing house) that accepts the image for deposit.

3. Grounds for Unpatentability

Ground I: Obviousness over Garcia, Randle, and Slater - Claims 1-3 and 10-12 are obvious over Garcia in view of Randle and Slater.

• Prior Art Relied Upon: Garcia (WO 2005/043857), Randle (Application # 2006/0106717), and Slater (EP 0984410).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Garcia, Randle, and Slater disclosed all limitations of the challenged claims. Garcia taught a front-end system where a user captures a check image on a mobile device and transmits it to a financial institution. However, Garcia lacked detail on the back-end processing. Randle supplied this missing detail, teaching an end-to-end electronic check processing system with distinct entities (payee bank, payor bank, clearing house) that perform quality assurance (QA), image format conversion, and duplicate detection. Slater further taught the specific step of validating a check amount by comparing a user-entered amount against an amount determined by optical character recognition (OCR).
  • Motivation to Combine: A POSITA would combine Garcia’s mobile capture system with Randle’s comprehensive back-end processing to create a complete, commercially viable remote deposit system. Garcia’s system was incomplete without the robust clearing and settlement processes taught by Randle. Slater’s amount-validation technique would have been a known and simple method to add to the combined Garcia/Randle system to improve the accuracy and reliability of the deposit process, a recognized goal in the art.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because combining Garcia’s front-end with Randle’s back-end involved interfacing known, modular systems to achieve predictable results. Integrating Slater's validation step was a routine application of known verification techniques.

Ground II: Obviousness over Garcia, Randle, Slater, and Lev - Claims 4, 9, 13, and 18 are obvious over the combination of Ground I in view of Lev.

• Prior Art Relied Upon: Garcia (WO 2005/043857), Randle (Application # 2006/0106717), Slater (EP 0984410), and Lev (Application # 2006/0164682).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Lev to the primary combination to teach limitations related to user assistance during image capture. Lev disclosed a back-end server that provides interactive instructions to a user to improve image quality, such as "move camera to the right and closer please." Lev also taught editing the captured image by applying transformations to correct orientation and skew.
  • Motivation to Combine: A POSITA would add Lev's teachings to the base combination to solve the known problem of poor image quality from user-operated mobile devices. Improving image quality at the point of capture enhances the reliability of subsequent automated processing steps like OCR. Lev provided a known solution for guiding users to capture better images and for programmatically correcting common image defects.
  • Expectation of Success: Success was expected because implementing user guidance and image correction were routine design choices for improving an image capture system. Lev’s teachings were directed at the user-device interaction, which is largely independent of the back-end check processing details provided by Randle.

Ground III: Obviousness over Garcia, Randle, Slater, Lev, and Watanabe - Claims 5 and 14 are obvious over the combination of Ground II in view of Watanabe.

• Prior Art Relied Upon: Garcia (WO 2005/043857), Randle (Application # 2006/0106717), Slater (EP 0984410), Lev (’682 application), and Watanabe (Patent 7,027,171).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground added Watanabe to teach the specific user instruction of displaying a guidance frame to help orient a document during capture. Watanabe disclosed a camera's "document photographing mode" that displayed a guidance frame based on a regular document aspect ratio, allowing the user to properly position the document within the frame before capture.
  • Motivation to Combine: A POSITA would be motivated to incorporate Watanabe's guidance frame as a specific, improved implementation of the general user guidance taught by Lev. Providing a visual frame is a predictable and effective way to help users reduce skew and rotation, thereby improving the quality of the captured check image and the accuracy of subsequent OCR.
  • Expectation of Success: This was a straightforward combination of known user interface techniques to achieve the predictable result of better image alignment.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on adding Aoyama (’516 application) to teach displaying instructions on how to activate the image capture device, and adding Byrne (’567 application) to teach displaying instructions for selecting a deposit account from a list.

4. Key Claim Construction Positions

• "first processing circuitry" / "second processing circuitry": Petitioner proposed construing "first processing circuitry" as "first processor" and "second processing circuitry" as a "processor different from the first processor." Petitioner contended that the claims were obvious under its constructions as well as under the Patent Owner's proposed constructions (which required no construction). The distinction supports the physical separation of functions taught by Randle, where a payee bank (first circuitry) and a payor bank/clearing house (second circuitry) are separate entities with separate processing hardware.

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 or any grounds that could have been reasonably raised in the IPR in the co-pending district court proceeding. Petitioner also argued that the parallel litigation was in its early stages, with minimal investment by the court and parties into the merits of the invalidity case. Furthermore, Petitioner asserted that the petition presented a strong, new prior art reference (Garcia) that was never before the USPTO during prosecution, weighing against denial under §325(d).

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-18 of the ’559 patent as unpatentable.