`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`WELLS FARGO BANK, N.A.
`Petitioner,
`
`v.
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`
`
`
`Case No. IPR2019-01081
`U.S. Patent No. 9,336,517
`
`
`
`PETITIONER’S REPLY
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`Table of Contents ...................................................................................................... ii
`Table of Authorities ................................................................................................. iv
`Petitioner’s Exhibit List ........................................................................................... vi
`Table of Abbreviations............................................................................................... x
`I.
`Introduction ........................................................................................................ 1
`II. The Board should reject USAA’s proposed constructions and adopt Wells
`Fargo’s proposed constructions. ................................................................................ 1
`A. Construction of “mobile device” is unnecessary and USAA’s proposed
`construction is improper. ....................................................................................... 1
`B. Construction of “determine whether the at least one feature of the
`instrument aligns with the alignment guide” is unnecessary and USAA’s
`proposed construction is improper. ........................................................................ 3
`C. Construction of “identification information pertaining to the instrument”
`is unnecessary. ....................................................................................................... 6
`D. The Board should correct or construe the obvious drafting error in
`claim 12. ................................................................................................................. 6
`III. The prior art taught all elements of the claims. ................................................. 6
`IV. A POSITA would have been motivated to combine Nepomniachtchi and
`Yoon. .......................................................................................................................... 7
`A. The claims are obvious whether or not Mitek anticipated the claims. .......... 8
`B. There is no requirement to show Nepomniachtchi’s solutions were
`inadequate. ............................................................................................................. 9
`C. USAA’s arguments about the computational burden are unsupported by the
`record. ................................................................................................................... 10
`D. A POSITA would not have been discouraged from combining
`Nepomniachtchi and Yoon. ................................................................................. 14
`E. Yoon is analogous art. .................................................................................. 17
`V. USAA has failed to show evidence of relevant secondary considerations. .... 20
`A. There is no nexus between the alleged performance improvement and the
`’517 patent claims. ............................................................................................... 20
`B. There is no nexus between the alleged industry praise and the ’517 patent
`claims. .................................................................................................................. 23
`
`
`
`ii
`
`

`

`
`
`C. There is no evidence of a long-felt but unmet need or failure of others. .... 23
`D. Wells Fargo did not copy USAA. ................................................................ 24
`VI. USAA presents no independent arguments regarding the unpatentability of
`any of the dependent claims. .................................................................................... 26
`VII. Conclusion ....................................................................................................... 26
`
`
`
`iii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). ................................................. 17
`Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
`489 U.S. 141 (1989) ........................................................................................ 8, 19
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .................................................................... 20, 23
`Graham v. John Deere Co. of Kansas City,
`383 US 1, 17 (1966) .............................................................................................. 8
`HVLPO2, LLC v. Oxygen Frog, LLC,
`949 F.3d 685 (Fed. Cir. 2020) ............................................................................ 22
`Iron Grip Barbell Co. v. USA Sports Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) .......................................................................... 26
`KSR International Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .............................................................................................. 9
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) ............................................................................ 3
`Orthopedic Equip. Co., Inc. v. All Orthopedic Appliances, Inc.,
`707 F.2d 1376 (Fed. Cir. 1983) .......................................................................... 24
`Phillips v. AWS Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 1
`State Indus., Inc. v. A.O. Smith Corp.,
`751 F.2d 1226 (Fed. Cir. 1985) .......................................................................... 26
`Thorner v. Sony Comput. Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ........................................................................ 2, 4
`Winner International Royalty Corp. v. Wang,
`202 F.3d 1340 (Fed. Cir. 2000) ............................................................................ 9
`
`
`
`iv
`
`

`

`
`
`Statutes
`
`
`Statutes
`35 U.S.C. § 311(b) ..................................................................................................... 8
`35 U.S.C. § 311(b) ..................................................................................................... 8
`
`
`
`v
`
`

`

`
`
`
`
`PETITIONER’S EXHIBIT LIST
`
`Ex. No.
`1001
`
`Brief Description
`U.S. Patent No. 9,336,517
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`Declaration of Peter Alexander, Ph.D.
`
`U.S. Patent No. 7,778,457
`
`Provisional U.S. Patent Application No. 61/022,279
`
`Published U.S. Patent Application No. 2007/0262148
`
`Published U.S. Patent Application No. 2007/0288382
`
`U.S. Patent No. 7,386,511
`
`Machine Accepts Bank Deposits, N.Y. Times, April 12, 1961
`
`Published U.S. Patent Application No. 2005/0097046
`
`Published U.S. Patent Application No. 2007/0194102
`
`Published U.S. Patent Application No. 2006/0249567
`
`U.S. Patent 8,290,237
`
`Shah, Moore’s Law, Continuous Everywhere but
`Differentiable Nowhere (February 24, 2009),
`http://samjshah.com/2009/02/024/moores-law/
`
`Rockwell, The Megapixel Myth, KenRockwell.com (2008),
`http://kenrockwell.com/tech/mpmyth.htm
`
`Gates, A History of Wireless Standards: Wi-Fi Back to
`Basics, Aerohive Blog (July 1, 2015)
`http://blog.aerohive.com/a-history-of-wireless-standards
`
`Apple Reinvents the Phone with iPhone (January 9, 2007)
`available at
`https://www.apple.com/newsroom/2007/01/09Apple-
`Reinvents-the-Phone-with-iPhone/
`
`vi
`
`

`

`Ex. No.
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`
`
`
`
`Brief Description
`Chen, iPhone 3GS Trounces Predecessors, Rivals in Web
`Browser Speed Test, Wired (June 24, 2009)
`
`Apple Announces the New iPhone 3GS—The Fastest, Most
`Powerful iPhone Yet (June 8, 2009) available at
`http://www.apple.com/newsroom/2009/06/08Apple-
`Announces-the-New-iPhone-3GS-The-Fastest-Most-
`Powerful-iPhone-Yet/
`
`Askey, Panasonic Lumix DMC-L1 Review (pts. 1, 3, 7),
`Digital Photography Review (Apr. 11, 2007),
`https://www.dpreview.com/reviews/panasonicdmcl1
`
`Askey, Nikon D300 In-depth Review (pts. 1, 3, 9), Digital
`Photography Review (Mar. 12, 2008),
`https://www.dpreview.com/reviews/nikond300
`
`Joinson et al., Olympus E-30 Review (pts. 1, 4, 8), Digital
`Photography Review (Mar. 24, 2009),
`https://www.dpreview.com/reviews/olympuse30
`
`Nokia N95 8GH User Guide (2009), available at
`https://www.nokia.com/en_int/phones/sites/default/files/user-
`guides/Nokia_N95_8GB_Extended_UG_en.pdf.
`
`File History of U.S. Patent No. 9,336,517
`
`Complaint, United Services Auto. Ass’n v. Wells Fargo Bank,
`N.A., No. 2:16-cv-245 (E.D. Tex. June 7, 2018), ECF No. 1.
`
`Curriculum vitae of Peter Alexander, Ph.D.
`
`149 Cong. Rec. H9289 (Oct. 8, 2003)
`
`Check Clearing for the 21st Century Act, H.R. Rep. No. 108-
`132 (Jun. 2, 2003)
`
`Published U.S. Patent Application No. 2009/0114716
`
`vii
`
`

`

`Ex. No.
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`
`
`
`
`Brief Description
`ITU-R M.1225, Guidelines for Evaluation of Radio
`Transmission Technologies for IMT-2000 (1997), available at
`https://www.itu.int/dms_pubrec/itu-r/rec/m/R-REC-M.1225-
`0-199702-I!!PDF-E.pdf.
`
`U.S. Published Patent Application No. 2004/0029591
`
`Sumits, Major Mobile Milestones - The Last 15 Years, and
`the Next Five, Cisco Blogs (Feb. 3, 2016),
`https://blogs.cisco.com/sp/mobile-vni-major-mobile-
`milestones-the-last-15-years-and-the-next-five
`
`International Patent Application WO 01/61436 A2
`
`U.S. Patent No. 7,120,461
`
`Claim Construction and Prehearing Statement, Ex. B Parties’
`Proposed Constructions. United Services Auto. Ass’n v. Wells
`Fargo Bank, N.A., No. 2:16-cv-245 (E.D. Tex. June 7, 2018),
`ECF No. 76-2.
`
`USAA Opening Claim Construction Brief. United Services
`Auto. Ass’n v. Wells Fargo Bank, N.A., No. 2:16-cv-245 (E.D.
`Tex. June 7, 2018), ECF No. 81.
`
`Defendant’s Claim Construction Brief and supporting
`exhibits, United Services Automobile Association v. Wells
`Fargo Bank, N.A., No. 2:16-cv-245 (E.D. Tex. April 25,
`2019), ECF No. 84
`
`USAA’s Reply Claim Construction Brief and supporting
`exhibits, United Services Automobile Association v. Wells
`Fargo Bank, N.A., No. 2:16-cv-245 (E.D. Tex. May 2, 2019),
`ECF No. 85
`
`U.S. Patent No. 7,419,093
`
`U.S. Patent No. 7,978,900
`
`Demonstrative diagram based on Fig. 8 of Nepomniachtchi
`
`viii
`
`

`

`Ex. No.
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
`
`
`
`
`Brief Description
`Reserved
`
`May 11, 2020, transcript of deposition of Stephen Mott
`
`Excerpts from January 8, 2020, trial transcript from United
`Services Auto. Ass’n v. Wells Fargo Bank, N.A., 2:18-cv-366
`(E.D.Tex.)
`
`Excerpts from March 29, 2019, transcript of deposition of
`William Saffici in United Services Auto. Ass’n v. Wells Fargo
`Bank, N.A., 2:18-cv-24 (E.D.Tex.)
`
`Excerpts from August 16, 2019, transcript of deposition of
`William Saffici in United Services Auto. Ass’n v. Wells Fargo
`Bank, N.A., 2:18-cv-366 (E.D.Tex.)
`
`Reserved
`
`Excerpts from November 4, 2019, a.m. trial transcript from
`United Services Auto. Ass’n v. Wells Fargo Bank, N.A., 2:18-
`cv-245 (E.D.Tex.)
`
`Excerpts from November 6, 2019, a.m. trial transcript from
`United Services Auto. Ass’n v. Wells Fargo Bank, N.A., 2:18-
`cv-245 (E.D.Tex.)
`
`Excerpts from October 30, 2019, p.m. trial transcript from
`United Services Auto. Ass’n v. Wells Fargo Bank, N.A., 2:18-
`cv-245 (E.D.Tex.)
`
`Excerpts from June 18, 2019, transcript of deposition of
`Bharat Prasad in United Services Auto. Ass’n v. Wells Fargo
`Bank, N.A., 2:18-cv-24 (E.D.Tex.)
`
`ix
`
`

`

`
`
`ID
`
`TABLE OF ABBREVIATIONS
`Institution Decision, Paper No. 9
`
`Nepomniachtchi Ex. 1003
`
`Petition
`
`POR
`
`POSITA
`
`USAA
`
`Petition, Paper No. 2
`
`Patent Owner Response, Paper No. 17
`
`Person of ordinary skill in the art
`
`Patent Owner United Services Automobile Association
`
`Wells Fargo
`
`Petitioner Wells Fargo Bank, N.A.
`
`Yoon
`
`Ex. 1005
`
`’517 patent
`
`U.S. Patent No. 9,336,517, Ex. 1001
`
`
`
`x
`
`

`

`
`
`I.
`
`Introduction
`USAA’s POR arguments are not directed to the actual claim limitations. The
`
`claims do not “ensure successful deposit of a check.” POR, 7. The claims do not
`
`recite “increasing image quality for machine reading.” POR, 18 (emphasis omitted).
`
`The claims do not recite “compliance with certain technical specifications.” POR, 9.
`
`The claims are not even directed to depositing checks. Instead, the claims are broadly
`
`directed to automatically capturing an image when it aligns with an alignment guide.
`
`Ex. 1001, 18:49-67, 19:29-41.
`
`USAA must defend the broad claims that it sought and obtained, not the
`
`narrower claims it might now want or wish it had. The record shows 1) the broad
`
`claims that are actually at issue read on the proposed combination of references and
`
`2) the combination would have been obvious to a POSITA. Wells Fargo thus
`
`requests that the Board cancel the challenged claims.
`
`II.
`
`The Board should reject USAA’s proposed constructions and adopt
`Wells Fargo’s proposed constructions.
`Construction of “mobile device” is unnecessary and USAA’s
`proposed construction is improper.
`The Board already found it unnecessary to construe “mobile device.” See ID
`
`A.
`
`at 21-22. USAA now urges the Board to change course and commit “one of the
`
`cardinal sins of patent law” by reading “mobile operating system” into the claims.
`
`See Phillips v. AWS Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005) (en banc). The
`
`Board should stay the course and reject USAA’s construction.
`1
`
`
`
`

`

`
`
`USAA lacks evidentiary support for its construction. USAA offers no
`
`evidence of the ordinary and customary meaning of “mobile device.” POR at 26-29.
`
`USAA points to no clear expression to redefine “mobile device” and no expression
`
`of manifest exclusion or restriction to disavow mobile devices without mobile
`
`operating systems. See Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
`
`1365-66 (Fed. Cir. 2012). Instead, USAA argues that two specification sentences
`
`and extrinsic testimony somehow provide context that imports “mobile operating
`
`system” into the claims. See POR, 30-32 (citing ’517 patent at 3:60-65, 8:9-13). The
`
`cited evidence does not support USAA’s construction.
`
`Wells Fargo does not dispute that the specification says the mobile device
`
`“may be” a mobile phone, PDA, or handheld computing device. Ex. 1001, 3:60-63.
`
`But it “may be” something else too. In any event, USAA cites no evidence for its
`
`assertion that these exemplary devices “are controlled by a mobile operating
`
`system.” POR, 27. Nor does USAA rebut Dr. Alexander’s testimony that a POSITA
`
`would have known that mobile operating systems were unnecessary. See Ex. 2039
`
`at 129:10-14 (“A lot of systems don’t need an operating system, and they don’t need
`
`a mobile operating system.”).
`
`Wells Fargo also does not dispute that the specification says that a mobile
`
`operating system is an “operating system that controls a mobile device.” Ex. 1001,
`
`8:9-13. But that only describes what a mobile operating system does. It does not
`
`
`
`2
`
`

`

`
`
`mandate that every mobile device have one. As mentioned, a POSITA would have
`
`known otherwise.
`
`The cited testimony of USAA employee from a trial involving different
`
`patents Mr. Brady is irrelevant. And, in any event, the cited testimony also relates to
`
`“digital cameras,” which is not any of the three device types that USAA asserts have
`
`mobile operating systems. Ex. 2038, 243:11-19.
`
`And finally, that the claims recite software instructions for performing certain
`
`functions does not mean they also recite mobile operating systems. For example,
`
`Nepomniachtchi and Yoon taught these same functions without ever mentioning a
`
`mobile operating system. See Petition, 34-42, 49-50.
`
`B.
`
`Construction of “determine whether the at least one feature of the
`instrument aligns with the alignment guide” is unnecessary and
`USAA’s proposed construction is improper.
`The Board need not construe this phrase. As shown in the Petition, the
`
`combination of Nepomniachtchi and Yoon taught this regardless of its construction.
`
`Petition, 38-39, 49-50. USAA’s POR does not dispute this. Construction of this term
`
`is, thus, unnecessary to resolve this petition and the Board need not construe it. See
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`
`(Fed. Cir. 2017) (claim construction is only necessary for terms “that are in
`
`controversy, and only to the extent necessary to resolve the controversy”).
`
`
`
`3
`
`

`

`
`
`In any event, the Board should reject USAA’s proposed construction because
`
`it lacks evidentiary support. USAA offers no arguments for ordinary and customary
`
`meaning and cannot meet the stringent lexicography or disavowal standards. See
`
`Thorner, 669 F.3d at 1365-66. That leaves only USAA’s contextual arguments,
`
`which all fail.
`
`USAA’s arguments ignore contradictory intrinsic evidence. For example,
`
`USAA’s construction would require that a feature of an image is not aligned unless
`
`and until “captured information can be electronically read.” But the specification
`
`never describes the invention so starkly. Instead the specification describes that the
`
`alignment guide:
`
`• may be used “to increase the likelihood of capturing a digital image of
`
`the check 108 that may be readable …” Ex. 1001, 3:66-4:1 (emphasis
`
`added);
`
`• “helps reduce the number of non-conforming images of checks … for
`
`processing and clearing.” Id., 4:10-13 (emphasis added);
`
`• “may be provided … so that the image of the check 108 may be captured
`
`in such a manner that it may be more easily processed and cleared.” Ex.
`
`1001, 5:53-59 (emphasis added).
`
`The most stringent statement that USAA could find in the specification says
`
`that “[t]he alignment guide is intended to ensure that the image of the check is
`
`
`
`4
`
`

`

`
`
`suitable for one or more processing tasks.” POR, 25 (citing Ex. 1001, 10:28-29). But
`
`USAA never shows that the specification requires that “captured information can be
`
`electronically read” in order to ensure a check image is “suitable for one or more
`
`processing tasks.”
`
`In addition, a well aligned check image may still be illegible. Ex. 1042, 58:4-
`
`9. Thus an image of an illegible check, like the demonstrative below, could be
`
`aligned even though it could never be aligned “such that the captured information
`
`can be electronically read” as required by USAA’s construction.
`
`
`
`Ex. 1040.
`
`This is all further supported by the fact that that the ’517 patent claims do not
`
`even require that the image of the instrument be cleared—or even deposited. The
`
`most that the claims require is transmitting captured information of an instrument to
`
`a server. Ex. 1001, 18:65-67 (claim 1), 19:40-41 (claim 10). Considering that the
`
`image of a check, whether electronically readable or not, is “captured information”
`
`
`
`5
`
`

`

`
`
`of an instrument, the transmission steps of the claims can be met regardless of
`
`whether the check image is electronically readable.
`
`C.
`
`Construction of “identification information pertaining to the
`instrument” is unnecessary.
`Wells Fargo requested no construction of this term. Petition, 13-14. The Board
`
`agreed. ID, 26-27. USAA offers no arguments against this in the POR. Wells Fargo,
`
`therefore, requests that the Board continue to interpret this term under its plain and
`
`ordinary meaning.
`
`D.
`
`The Board should correct or construe the obvious drafting error
`in claim 12.
`USAA does not dispute that there is an obvious drafting error in claim 12 or
`
`object to correcting or construing the language as proposed by Wells Fargo. See
`
`Petition, 17-18.
`
`III. The prior art taught all elements of the claims.
`USAA incorrectly asserts that Yoon did not teach a “mobile device,”
`
`“determining anything about the contents” of the captured image, or “adjusting the
`
`alignment guide.” POR, 22, 48-51. The record contradicts each argument.
`
`As described above, USAA’s construction of “mobile device” is wrong and
`
`USAA’s argument that Yoon did not teach it fails for that reason. But even under
`
`USAA’s construction, there are at least two reasons why the combination of
`
`Nepomniachtchi and Yoon taught a mobile device. First, USAA never disputes that
`
`Nepomniachtchi taught a mobile device. Thus, the combination of Nepomniachtchi
`6
`
`
`
`

`

`
`
`and Yoon taught a mobile device under USAA’s construction no matter what Yoon
`
`taught. See Petition, 33. Second, Dr. Alexander explained that a POSITA would have
`
`recognized that Yoon’s “portable terminal” could have been a mobile phone that
`
`included a mobile operating system, which meets USAA’s construction. See Ex.
`
`1002, ¶ 123. This testimony remains unrebutted.
`
`Likewise, whether Yoon taught “determining anything about the contents” of
`
`the captured image is irrelevant because that is not a claim limitation. USAA argues
`
`that it is, but USAA’s cited evidence is only directed to the specific real world check
`
`processing systems that Mr. Saffici and Mr. Usapkar worked on. Neither of them
`
`ever worked for USAA, let alone worked on USAA systems that allegedly embody
`
`the ’517 patent.
`
`Whether Yoon taught “adjusting the alignment guide” is also irrelevant
`
`because Ground 2 details how Cho taught this and why it would have been obvious
`
`for a POSITA to have combined Cho with the other references. See Petition, 55-64.
`
`IV. A POSITA would have been motivated to combine Nepomniachtchi and
`Yoon.
`Even USAA acknowledges that the combination offers a benefit (although
`
`USAA asserts it is “marginal” and “minimal”). POR, 47. Despite this admitted
`
`benefit, USAA argues a POSITA would not have made the combination for various
`
`reasons. USAA’s arguments all fail because they apply an overly stringent
`
`
`
`7
`
`

`

`
`
`obviousness standard and are based on specification features not recited in the
`
`claims.
`
`A.
`
`The claims are obvious whether or not Mitek anticipated the
`claims.
`Obviousness does not require that some other artisan actually combined the
`
`elements in the prior art. Still, USAA argues that the claims are not obvious because
`
`Mitek, the assignee of Nepomniachtchi, first developed an embodiment of
`
`Nepomniachtchi rather than proceeding directly to developing an auto-capture
`
`system. See POR, 30-31. Mitek’s product development is irrelevant. When the prior
`
`art disclosed all of the claim elements—as is the case here—the only remaining
`
`question is whether combining those prior art teachings would have been obvious to
`
`a POSITA, not whether a person in the art actually combined the references. See
`
`Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150 (1989) (“The
`
`nonobviousness requirement extends the field of unpatentable material beyond that
`
`which is known to the public under § 102”); Graham v. John Deere Co. of Kansas
`
`City, 383 US 1, 17 (1966) (describing test for obviousness). And in any event, Mitek
`
`did combine auto-capture with its prior art system. That combined system is what
`
`USAA once accused of infringing the ’517 patent. This was unmentioned in the
`
`petition because the Board lacks statutory authority to consider § 102(g) prior
`
`inventions. 35 U.S.C. § 311(b).
`
`
`
`8
`
`

`

`
`
`B.
`
`There is no requirement to show Nepomniachtchi’s solutions were
`inadequate.
`Wells Fargo need not show that Nepomniachtchi’s solution for misaligned
`
`checks was inadequate and USAA’s argument to the contrary should be rejected.
`
`The most that Winner International Royalty Corp. v. Wang, 202 F.3d 1340, 1349
`
`(Fed. Cir. 2000), held is that there was conflicting evidence on whether a POSITA
`
`would have replaced one prior art element for another. But, as the Board has already
`
`found,
`
`the proposed combination here
`
`is additive,
`
`it does not replace
`
`Nepomniachtchi’s correction algorithm with Yoon’s pre-capture feedback. ID, 54-
`
`55. Winner is also of limited validity because it predates KSR International Co. v.
`
`Teleflex, Inc., 550 U.S. 398, 419-22 (2007) (criticizing prior decisions for applying
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`a “rigid” teaching, suggestion, and motivation test).
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`Even so, a POSITA would have recognized that Nepomniachtchi’s solution
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`was inadequate. For example, images could be so poorly aligned that not even
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`Nepomniachtchi’s correction algorithm could fix them. See Ex. 2039, 105:18-109:2
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`(“Nepomniachtchi cannot achieve perfection with his algorithms”); see also POR,
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`47 (“Nepomniachtchi’s post-processing techniques cannot resolve all image quality
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`defects”).
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`9
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`C.
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`USAA’s arguments about the computational burden are
`unsupported by the record.
`USAA’s argument that the combination of Nepomniachtchi and Yoon would
`
`not have reduced the computational burden is unsupported by the record and should
`
`be rejected. USAA confuses the similar computational burdens in analyzing image
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`quality with the vastly different computational burdens in improving image quality.
`
`It is undisputed that Nepomniachtchi teaches a two-part algorithm where the first
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`part “performs a detailed image quality analysis” and the second part “processes the
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`image to correct defects.” See POR, 42. That is, there is an analysis step and a
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`correction step. Wells Fargo agrees that the computational efficiency of the analysis
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`step would be essentially the same for Yoon or Nepomniachtchi. But what USAA
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`fails to recognize is that the combination lowers the burden of the correction step.
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`This fact is largely a matter of common sense. The combined system will lead
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`to a larger percentage of properly aligned images being captured in the first place.
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`This will reduce the need to correct the images with Nepomniachtchi’s alignment
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`correction algorithm. The fewer uses of the correction algorithm, the lower the
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`computational burden.
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`10
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`In any event, Dr. Alexander also explained how the combination leads to
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`greater computational efficiency, see Ex. 1002, ¶¶ 113-115.1 The combination does
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`this by moving the image correction step into the user’s brain. See Ex. 2039, 98:11-
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`15 (“It’s a person who’s doing the doing.”), 98:25-99:5 (“the user corrects
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`misalignment by adjusting the position and orientation of the physical copy to fit the
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`alignment guide.”). In other words, in the combined system, the user, rather than
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`Nepomniachtchi’s algorithm, determines how to improve image alignment.
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`While it is true that Dr. Alexander testified that Nepomniachtchi and Yoon
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`taught the same corrections, POR, 33 (citing Ex. 2039, 99:23-100:3), USAA ignores
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`the immediately preceding testimony. That testimony shows that the user corrects
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`the image in Yoon, while the device corrects the image in Nepomniachtchi. Ex 2039,
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`98:11-99:22. That is, the corrections are the same, but the user does the processing
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`instead of the device.
`
`
`1 USAA’s cites to deposition testimony from Mr. Saffici do not contradict Dr.
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`Alexander. Those cites are from a case involving different patents that shows he
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`could not recollect this same evidence at that time. See POR, 34 (citing Ex. 2009,
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`102:2-8). At worst, all this testimony suggests is that Mr. Saffici had a temporary
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`memory lapse when testifying in a different case. It does not contradict Dr.
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`Alexander’s testimony at all.
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`11
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`
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`While it is also true that Dr. Alexander testified that “the burden is the same,”
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`POR, 34-35 (citing Ex. 2039, 90:20-91:6), USAA omitted the testimony showing
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`that he was talking about the comparative burdens on Nepomniachtchi’s mobile
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`device and the server. See POR, 35 (replacing Ex. 2039, 91:1-5 with “…”). In the
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`elided testimony, Dr. Alexander clarified, “the question is … do I know the relative
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`burden on CPU processing at a mobile device versus relative burden on a CPU at a
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`server.” Ex. 2039, 91:1-5. Thus, Dr. Alexander was comparing the comparative
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`burden on Nepomniachtchi’s mobile device and server, not comparing
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`Nepomniachtchi to the combined system as USAA suggests.
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`It also does not matter that Nepomniachtchi taught offloading computation to
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`a server. See POR, 39. That Nepomniachtchi had alternative solutions does not mean
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`it would not be beneficial to also include Yoon’s solution, as the Board has
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`recognized. See ID, 54-55. And in any event, Nepomniachtchi teaches away from its
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`server embodiment. See Ex. 2039, 88:2-19 (“the disadvantage of doing it on the
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`server is that the user performing the image capture may no longer be available.”);
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`Ex. 1003, 10:49-52 (“[i]f the image quality processing occurs at a server it might
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`take longer to determine that the image quality is acceptable and communicate that
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`information back to a user.”).
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`It is not true that combining Nepomniachtchi and Yoon would necessarily
`
`increase the computational burden on the mobile device. See POR, 32, 37. USAA
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`
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`12
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`
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`rests this argument on an assertion that the combined system must check the image
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`for proper alignment thirty times a second, citing only Mr. Mott’s declaration in
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`support. But Mr. Mott only said frequent analysis would be required “for example”
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`if analyzing every frame of a thirty frame-per-second live camera preview. Id. (citing
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`Ex. 2032, ¶ 30). Neither USAA nor its expert ever explain why this analysis must
`
`happen thirty times a second rather than that it could happen thirty times a second.
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`For example, they suggest no reason why a POSITA could not design the system to
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`examine one single frame to provide feedback to the user. And, in any event, Mr.
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`Mott admits that the claims do not require the analysis to occur thirty times a second.
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`Ex. 1042, 27:6-9.
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`And, finally, even if USAA were right that the computational burdens were
`
`the same, computational efficiency was not the “foundation” or the “sole purported
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`benefit” of the petition’s motivation to combine analysis. See POR, 37. The petition
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`explains that besides the computational efficiencies, the combination would also
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`“minimize the need for … prompting the user to retake the photo.” Petition, 43; see
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`also Ex. 2039, 85:14-22 (“as a [POSITA], I would understand that improvements in
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`alignment made prior to capture by Yoon would certainly affect Nepomniachtchi’s
`
`need to reimage documents.”). The petition also explains that a POSITA “would
`
`have been motivated to add to Nepomniachtchi the techniques of Yoon to solve for
`
`
`
`13
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`
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`checks the same problems Yoon solved for business cards.” Petition, 44. USAA has
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`never even tried to rebut these other reasons for the combination.
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`D.
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`A POSITA would not have been discouraged from combining
`Nepomniachtchi and Yoon.
`Contrary to USAA’s argument, a POSITA would not have been discouraged
`
`from combining Nepomniachtchi and Yoon. First of all, as described in the petition,
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`a user would have been motivated to combine Nepomniachtchi and Yoon to reduce
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`the computational burden and avoid the need to ask the user to retake the photo.
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`Petition, 43. USAA’s suggestion that the combination would lead to lower quality
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`images that are not suitable for deposit is not supported by the record and, thus,
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`would not discourage a POSITA from making the combination.
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`As USAA acknowledges, Nepomniachtchi identifies multiple potential image
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`defects. See POR, 43 (citing Nepomniachtchi at 6:53-56, 6:67-7:3, 7:10-14, 7:27-38,
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`7:51-52). What USAA does not acknowledge is that Yoon addressed every single
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`one.
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`
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`• Nepomniachtchi at 6:53-56 discusses that the check may be out of
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`focus. Yoon addressed this. It taught using autofocus before capturing
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`the image. Ex. 1005, ¶ 29 (auto focusing performed in step 219 before
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`image capture in step 223).
`
`14
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`

`
`
`• Nepomniachtchi at 6:67-7:3 continues the discussion Nepomniachtchi
`
`at 6:65-67, which was still talking about an out of focus image. Yoon
`
`addressed this. Ex. 1005, ¶ 29.
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`• Nepomniachtchi at 7:10-14 discusses an improperly aligned image.
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`Yoon addressed this. It taught capturing the image when it was aligned
`
`with an alignment guide. Id., ¶ 28.
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`• Nepomniachtchi at 7:27-38 discusses the “lighting” of the image. Yoon
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`addressed this. It taught capturing an image only if it was sufficiently
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`bright. Id., ¶ 19.
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`• Nepomniachtchi at 7:51-52 just refers back to all of the prior defects.
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`Yoon, thus, addressed every potential defect listed in Nepomniachtchi that
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`might impede the ability of a check image to be deposited. In light of this, a POSITA
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`would see that the combinatio