PNC Bank NA v. United Services Automobile Association

1. Case Identification

• Case #: IPR2022-00075
• Patent #: 9,224,136
• Filed: November 5, 2021
• Petitioner(s): PNC Bank N.A.
• Patent Owner(s): United Services Automobile Association
• Challenged Claims: 1-18

2. Patent Overview

• Title: Remote Check Deposit System
• Brief Description: The ’136 patent discloses a system for remote check capture and deposit. The system includes an image capture device (e.g., a camera), a general-purpose computer, and a bank server that receives and processes a check image over a communications network.

3. Grounds for Unpatentability

Ground I: Obviousness over Garcia, Acharya, and Richardson - Claims 1-3 and 7-9 are obvious over Garcia in view of Acharya and Richardson.

• Prior Art Relied Upon: Garcia (WO 2005/043857), Acharya (WO 01/61436), and Richardson (Application # 2005/0281450).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references teaches every limitation of the challenged independent claims. Garcia disclosed the foundational system of using a mobile device with a camera to capture a check image and transmit it to a financial institution for processing. Because Garcia lacked specific implementation details for its back-end computer equipment, Petitioner asserted that Acharya supplied the missing elements, teaching a back-end banking system with a processor and memory for initiating a deposit transaction based on received check data. Richardson was introduced to teach the specific steps of performing optical character recognition (OCR) on the check image to determine the routing number and then validating that routing number against a list of valid numbers.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Garcia and Acharya because Garcia described a general system but lacked the detailed back-end processing logic that Acharya provided as a known and predictable solution for remote deposits. A POSITA would have been further motivated to incorporate Richardson's teachings to implement the necessary recognition and verification functions described generally in Garcia. Since Garcia’s system relies on a check image rather than the physical check, a POSITA would have sought a reliable method to extract and validate critical data like the routing number from the image, a problem directly addressed by Richardson.
  • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success. The combination involved integrating a known front-end image capture method (Garcia) with a standard back-end processing architecture (Acharya) and a widely used data extraction technique (Richardson's OCR). These technologies were known to be compatible and their integration would yield the predictable result of a functional remote check deposit system.

Ground II: Obviousness over Garcia, Acharya, Richardson, and Randle - Claims 5, 11, and 13 are obvious over the combination of Garcia, Acharya, and Richardson in view of Randle.

• Prior Art Relied Upon: Garcia (WO 2005/043857), Acharya (WO 01/61436), Richardson (Application # 2005/0281450), and Randle (Application # 2006/0106717).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the base combination of Garcia, Acharya, and Richardson. Petitioner introduced Randle to teach the additional limitation of determining whether a check shown in the image had been previously deposited. Randle disclosed a check verification controller with a fraud detection suite specifically for identifying duplicate transactions.
  • Motivation to Combine: The motivation for adding Randle was to incorporate a necessary and well-known feature—duplicate deposit detection—into the remote deposit system. A POSITA implementing the system of Garcia/Acharya/Richardson would have recognized the risk of the same check being deposited multiple times and would have been motivated to add this fraud prevention feature. Randle provided a known technique to solve this predictable problem.
  • Expectation of Success: Petitioner asserted success would be expected, as back-end fraud detection systems like Randle's were designed to be compatible with various check image sources, including the mobile device taught by Garcia.

Ground III: Obviousness over Garcia, Acharya, Richardson, and Slater - Claims 6 and 12 are obvious over the combination of Garcia, Acharya, and Richardson in view of Slater.

• Prior Art Relied Upon: Garcia (WO 2005/043857), Acharya (WO 01/61436), Richardson (Application # 2005/0281450), and Slater (European Patent Application Publication No. 0984410).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground also built upon the core combination. Petitioner relied on Slater to teach the limitations of determining a check amount from the check image using OCR and comparing that amount with the user-provided check amount indication. Slater disclosed a system using Courtesy Amount Recognition (CAR) software to perform this validation step.
  • Motivation to Combine: A POSITA would combine Slater to implement an additional validation step that would predictably reduce data entry and OCR errors, thereby improving the overall reliability of the deposit system. Comparing the user-entered amount against an OCR-scanned amount was a logical method for error checking.
  • Expectation of Success: Success was expected because the comparison of two numbers (user-entered vs. OCR-read) was a routine operation for financial computers, and incorporating this validation step into the existing OCR process would have been straightforward.

• Additional Grounds: Petitioner asserted additional obviousness challenges against the remaining claims based on combinations that further incorporated Pintsov (Application # 2007/0118747) to teach overlaying a bank stamp on the check image for auditing purposes, and Davis (Application # 2005/0216410) to teach generating a log file of deposit information.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors was not warranted. It contended that the parallel district court litigation was at a nascent stage, with no substantive investment by the court or the parties in the merits of the invalidity case.
• Petitioner further argued that institution was favored because the petition presented new prior art and arguments. Specifically, it asserted that the primary reference, Garcia, had not been previously considered by the USPTO and was not cumulative of any prior art of record, as it specifically taught a remote deposit system using a digital camera.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-18 of Patent 9,224,136 as unpatentable.