PTAB

IPR2022-00075

PNC Bank NA v. United Services AuTomobile AsSociATION

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1. Case Identification

2. Patent Overview

  • Title: Remote Check Deposit System
  • Brief Description: The ’136 patent describes a system for remote check deposit where a user captures an image of a check with a camera-equipped device, and a bank's computer system processes the image to initiate the deposit.

3. Grounds for Unpatentability

Ground I: Obviousness over Core Combination - Claims 1-3 and 7-9 are obvious over Garcia, Acharya, and Richardson.

  • Prior Art Relied Upon: Garcia (International Publication No. WO 2005/043857), Acharya (International Publication No. WO 01/61436), and Richardson (Application # 2005/0281450).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references taught all limitations of independent claims 1 and 7. Garcia was asserted to disclose the foundational remote deposit system where a user captures a check image with a mobile device and transmits it to a financial institution for processing. However, as Garcia lacked specific implementation details for the bank's back-end computer system, Petitioner contended a person of ordinary skill in the art (POSITA) would look to Acharya, which explicitly taught a back-end bank system using a processor and memory to receive check data and initiate deposit transactions. To meet the limitations for routing number processing, Petitioner asserted a POSITA would incorporate the teachings of Richardson, which disclosed a system for performing optical character recognition (OCR) on a check image to determine the routing number and then validating it against a list of known valid numbers.
    • Motivation to Combine: A POSITA would combine Garcia with Acharya because Garcia described a high-level system but omitted the specific implementation details for the back-end processing, creating a design need that Acharya’s well-known processor-and-memory-based system predictably solved. Similarly, a POSITA would incorporate Richardson's OCR and validation techniques into the Garcia/Acharya system to implement the necessary, but unspecified, "verifying" function in Garcia, as determining and validating the routing number from an image was a known and essential step for electronic check processing.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining these systems involved applying known back-end processing (Acharya) and OCR validation (Richardson) techniques to a known remote capture framework (Garcia). These were modular, compatible technologies common in the financial industry, yielding the predictable result of a functional remote check deposit system.

Ground II: Obviousness with Duplicate Deposit Detection - Claims 5, 11, and 13 are obvious over 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: Building on the base combination in Ground I, Petitioner asserted that Randle taught 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" by checking for a duplicate check number associated with the image.
    • Motivation to Combine: A POSITA would be motivated to add Randle’s duplicate detection feature to the core system of Ground I because preventing the same check from being deposited multiple times is a fundamental and critical requirement for any check processing system. This addition addressed an obvious need for fraud prevention and system integrity.
    • Expectation of Success: Randle’s back-end check verification was largely independent of the image origination method and was designed to work with images from various scanning devices. Therefore, a POSITA would reasonably expect that Randle's duplicate detection could be successfully integrated with the check processing system of Garcia/Acharya/Richardson to yield the predictable result of enhanced security.

Ground III: Obviousness with Amount Verification - Claims 6 and 12 are obvious over 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 # 0984410).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that adding Slater to the core combination of Ground I taught the limitations of determining a check amount from the image and comparing it with the user-provided amount. Slater disclosed a system using Courtesy Amount Recognition (CAR) software to determine a "scanned amount" from a check image and comparing it to the amount manually entered by a user, with the transaction proceeding only if they match.
    • Motivation to Combine: A POSITA would implement Slater’s amount-comparison step as an additional validation measure. Such a comparison would predictably reduce errors from either incorrect user data entry or poor OCR quality, thereby improving the overall reliability and accuracy of the deposit system, a clear design goal.
    • Expectation of Success: The core system already received a user-entered amount (per Garcia) and had OCR capabilities (per Richardson). Adding the comparison step taught by Slater was a routine software operation, and a POSITA would have reasonably expected that implementing this logic at the financial institution's server would successfully improve validation accuracy.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds combining the core references with Pintsov (for teaching an electronic bank stamp overlay), Davis (for teaching log file generation), and various permutations of Randle, Davis, and Slater to challenge the remaining claims 4, 10, and 14-18. These arguments relied on similar motivations to add known, modular functionalities to improve the core remote deposit system.

4. Key Claim Construction Positions

  • Petitioner argued that for the purposes of the IPR, no specific claim terms required construction to resolve the issues.
  • However, Petitioner noted that the term "check deposit" was disputed in co-pending district court litigation involving related patents. Petitioner asserted that the invalidity arguments in the petition would succeed regardless of which party's proposed construction is adopted, as the prior art teaches the functionality required by both parties' interpretations of the term.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation involving the ’136 patent was at a nascent stage. At the time of filing the petition, no invalidity contentions had been served and no Markman hearing had been scheduled, indicating minimal investment by the parties and the court in the validity issues.
  • Petitioner further argued that institution was favored because the petition presented a strong challenge based on new prior art and arguments. Specifically, the primary reference, Garcia, had not been previously considered by the USPTO during prosecution and was not cumulative of other art, as it directly taught the core concept of remote deposit via a camera-equipped device.

6. Relief Requested

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