Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. # 38
`Entered: 10/26/20
`
`
`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.
`____________
`
`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
`____________
`
`Record of Oral Hearing
` Held: September 23, 2020
`____________
`
`Before JONI Y. CHANG, BARBARA A. BENOIT,
`STACEY G. WHITE, and JULIET MITCHELL DIRBA,
`Administrative Patent Judges.1
`
`
`
`1 This is not an expanded panel of the Board under SOP 1 § III.M. Judges
`Chang, White, and Dirba are paneled on IPR2020-01081 and IPR2020-
`01083. Judges Chang, Benoit, and White are paneled on IPR2020-01082.
`
`
`571.272.7822
`
`
`
`
`
` Paper No. # 38
`Entered: 10/26/20
`
`
`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.
`____________
`
`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
`____________
`
`Record of Oral Hearing
` Held: September 23, 2020
`____________
`
`Before JONI Y. CHANG, BARBARA A. BENOIT,
`STACEY G. WHITE, and JULIET MITCHELL DIRBA,
`Administrative Patent Judges.1
`
`
`
`1 This is not an expanded panel of the Board under SOP 1 § III.M. Judges
`Chang, White, and Dirba are paneled on IPR2020-01081 and IPR2020-
`01083. Judges Chang, Benoit, and White are paneled on IPR2020-01082.
`
`
`
`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`LOUIS L. CAMPBELL, ESQUIRE
`MICHAEL M. MURRAY, ESQUIRE
`Winston & Strawn LLP
`275 Middlefield Road, Suite 205
`Menlo Park, California 94025
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`MICHAEL R. FLEMING, ESQUIRE
`BABAK REDJAIAN, ESQUIRE
`ANTHONY Q. ROWLES, ESQUIRE
`Irell & Manella, LLP
`840 Newport Center Drive, Suite 400
`Newport Beach, California 92660-6324
`
`
`
`
`
`
`
`
` The above-entitled matter came on for hearing on Wednesday,
`September 23, 2020, by video/by telephone.
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`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
`
`
`
`PROCEEDINGS
`- - - - -
`JUDGE WHITE: Good morning or good afternoon, depending on
`where you're coming in from. This is an Oral Hearing for IPR 2019-01081,
`2019-01082, and 2019-01083, each of these are between Wells Fargo Bank,
`N.A. and Patent Owner United Services Automobile Association concerning
`US Patent Numbers 9,336,517 B1 and 8,977,571 -B1 and 8,699,779 B1.
`I'm Judge Stacey White, with me today are Judges Joni Chang, Juliet
`Dirba and Barbara Benoit. None of these cases have expanded panels. The
`panel for IPR2019-1081 and IPR2019-1083 includes Judges Chang, White
`and Dirba and the panel for IPR2019-1082 includes Judges Chang, Benoit
`and White and we have just come together as a convenience to the parties
`for the Hearing.
`So let's start with getting appearances. Who do we have on the line
`today for Petitioner?
`MR. CAMPBELL: Good morning, Your Honor, this is Louis
`Campbell from Winston & Strawn.
`JUDGE WHITE: Good morning. And who do we have on -- Go
`ahead.
`MR. SHEASBY: I'm sorry, Your Honor, I was about to announce
`Patent Owner, but I interrupted you.
`JUDGE WHITE: I was moving right onto you. I was going to say,
`who do we have on the line for Patent Owner, so go ahead.
`MR. SHEASBY: Good Morning, Your Honor, for Patent Owner we
`have Jason Sheasby, Michael Fleming and Tony Ralph who are outside
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`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
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`Counsel for USAA and additionally, we have a number of members of
`USAA's in-house team.
`We have Miss Charlotte Whitaker, who is the Chief IP Counsel at
`USAA, we have Mr. Bill Foster who is the head of Complex Litigation at
`USAA and then we have two additional folks who are Senior Patent
`Attorneys at USAA, Daniel Wybenga and Anthony Castiglione, Your
`Honor.
`JUDGE WHITE: Okay. And you'll be making the presentation for
`Patent Owner today?
`MR. SHEASBY: With your permission, Your Honor.
`JUDGE WHITE: All right. Thank you all and welcome to the Board.
`So before we begin, and we have a few administrative matters I just want to
`go through to make sure everyone is clear, as you can see that this Hearing is
`being brought to you through the miracle of video conferencing. So, there's
`a few things we need to be mindful of in this environment. For one, we
`cannot hear you unless you are speaking into your microphone or whatever
`device you're using.
`Please make sure you are muted when you are not speaking so that we
`can reduce background noise, but when you do want to speak, make sure
`that you are off mute so that we can hear you. As far as what's going on on
`our screens, we'll be reviewing your demonstratives and papers and exhibits,
`of course, on our computers.
`Please be clear of where you are in your demonstratives, both for our
`ability to follow your argument today and to make sure that we have a clear
`record when a transcript comes out in the future. As to the specific
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`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
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`procedures for this matter, we have set aside an hour-and-a half per side.
`So, Petitioner, you'll have an hour-and-a-half to present your case in
`chief, but you can also reserve a certain amount of time for rebuttal; how
`much time would you like to reserve?
`MR. CAMPBELL: I'd like to reserve 20 minutes, Your Honor.
`JUDGE WHITE: Okay. Certainly Patent Owner, you will also have
`an hour-and-a-half to respond to Petitioner's arguments and present your
`arguments and if you would like, you can address your Motions to exclude
`and you can also reserve time for sur-rebuttal; how much time would you
`like to reserve?
`MR. SHEASBY: Twenty minutes, Your Honor.
`JUDGE WHITE: Okay. I'll give you each a warning when we are
`getting close to the time limit, as far as, the amount of time that you have
`specified that you would like to use for your presentation in chief. Further,
`we just ask if you have any objections, please hold them until it's your turn
`to speak and then you can let us know any objections you may have about
`the prior Argument, especially concerning any demonstratives that you may
`think are objectionable. Before we begin, are there any questions from either
`party? Well, let's start, Petitioner any questions?
`MR. CAMPBELL: No, Your Honor.
`JUDGE WHITE: Patent Owner, any questions?
`MR. SHEASBY: No questions from Patent Owner, no questions,
`Your Honor.
`JUDGE WHITE: Okay, all right. Well then, you may begin when
`ready, Petitioner.
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`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
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`MR. CAMPBELL: Thank you very much. Good morning or good
`afternoon, as the case may be. Again, as Judge Rich once so famously put it,
`the name of the game is the claim and that's definitely the case in these trials.
`When analyzing these disputed issues, I would urge the Board to always
`look at the claims because many of the arguments USAA has offered are
`really based on narrow specification embodiments and not the actual broad
`claims. Clearly, there's no dispute that the prior art references in each of the
`trials are in the prior art. There's no dispute that every element of those prior
`art are taught by those references.
`The only disputed issues are whether there's a motivation to combine
`Nepomniachtchi and Yoon and whether the secondary considerations,
`whether they exist and whether they outweigh the prima facie case
`obviousness. There's also some construction disputes and those disputes
`aren't dispositive on their own.
`But depending on which constructions are adopted, the analysis might
`be more streamlined than otherwise. So today I'd like to begin with a quick
`review of the claims and then I'll jump into the claim construction disputes
`and then we'll move onto the motivation arguments and finally, the
`secondary considerations and that might be a little out of order with our slide
`deck, but I'll be sure to let you know which slides I'm on when I get to them.
`So to start with, I'd like to look at the claims, these will be slides
`four-through-six of our slide deck. This has the independent claims for each
`of the three Patents of the Suit. As you'll note, the preamble has been grayed
`out a bit and that's because there has been no argument provided by the
`Patent Owner that the preambles are limitations of the claims.
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`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
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`Patent Owner certainly knows how to make this Argument as they
`have done so in other IPR proceedings on these same patents. For example,
`in IPR 2020 Number 975, there's an argument that the preamble of the 571 is
`limiting and that argument was not presented here. So, there should not be
`any dispute that the preambles are not limiting in this case.
`JUDGE CHANG: Counsel, I have a question.
`MR. CAMPBELL: Yes, Your Honor?
`JUDGE CHANG: This is Judge Chang. I have a question. In your
`Petition, didn't you at least show that the prior art does teach these
`preambles?
`MR. CAMPBELL: Yes, Your Honor, because at the District Court
`level there was a dispute on whether the preamble has a limitation or not, we
`didn't know that coming forward. So, in our Petition we assumed the
`preambles were limitations and demonstrated how they were taught in the
`prior art. So, regardless of how that decision is decided, there's evidence in
`the record that the prior art teaches all the preambles.
`JUDGE CHANG: Did you present any arguments as to whether the
`preamble is limited or not in your Petition?
`MR. CAMPBELL: In our Petition, we did not. We pointed out that
`the outcome of all these claims and construction disputes at the District
`Court did not really affect the outcome of any of these Petitions. So, we only
`addressed a few claim construction disputes and the preamble was not one of
`them. If it was brought up in their Response, we would have addressed it in
`our Reply, but they didn't, so we didn't.
`So the thing I would like to point out with the claims, by their claim
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`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
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`language, they do not require the check to be processed, they do not require
`the check to be cleared, they do not require any deposited funds to occur at
`the end of the transaction, there's no minimum quality of a check image and
`there's no requirement that the image be electronically read so that the
`machine can read the data from the image.
`None of that is in the plain language of the claims. All of the things
`really requires is monitoring, capturing, transmitting, and a few other
`peripheral limitations. So some of those terms might come in through the
`construction that's at issue in this case; however -- For instance on slide 19,
`we've gathered the passes the monitoring criteria term from the 571 and the
`two determining terms which are really slightly different in every claim.
`The point is there determining whether at least one feature aligns with
`the alignment guide in the 517 and the 779. The constructions that USAA
`has urged the Board to adopt here would bring in the idea of making sure the
`check image would have data that's extractable. We don't believe those
`constructions are proper, but more importantly, we don't believe they need to
`be reached at all.
`There's been no dispute that all of these terms are taught in the prior
`art, so there's no need to determine what the outer boundaries of these
`constructions might be because we know that the prior art taught them no
`matter what those outer boundaries might be. So I'd like to begin with the
`monitoring criteria dispute.
`This is shown on slide 12 of our deck. This is just applicable to the
`571 patent. That's the only one that mentions monitoring criteria. At the
`Institution Decision stage, the Board did reach construction at this term and
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`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
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`that was probably necessary because Patent Owner had argued that the prior
`art did not teach them on the term criteria. That argument was in their
`Preliminary Response, and that argument did not move forward to their
`actual Response.
`So at this stage, there's no dispute the prior art teaches the monitoring
`criteria. So we don't believe there's any need for the Board to construe
`monitoring criteria and this is especially true because the specification
`provides several examples of monitoring criteria, and it does so at column 4
`lines 3 through 8 and included in that list include alignment and brightness
`and those are the exact two monitoring criteria that are taught in the Yoon
`reference.
`So whatever the outer bounds of monitoring criteria might mean, it
`definitely includes the examples listed in the spec and that the prior art
`teaches those exact examples. So there's no dispute the prior art taught
`monitoring criteria. So there's no need to worry about what the construction
`of that might be.
`Next that brings us to the passes the monitoring criteria constructions
`-- and this I would reference slides 13 through 16 of our deck - the same
`phrase is also at issue in a different IPR. IPR 2020 Number 92, related
`patents, not these exact patents, but related patents of the family and in that
`case the Board found in the Institution Decision that no construction was
`necessary for passing the monitoring criteria. The Institution Decision here,
`the Board decided there was no need to construe this term.
`All we would ask is that the Board continue to not construe this term.
`There's no need to construe it. The construction that's been proposed by
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`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
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`USAA would require that a monitoring criteria determines that the quality of
`the monetary image feature is within acceptable thresholds so the check data
`can be electronically obtained per the image without error during the
`electronic processing and clearing.
`The main problem with this construction is that the claim only
`requires one criteria. You can have more. But, it only requires one and
`there's no dispute between the parties that one monitoring criteria, for
`example, just alignment or just brightness would not be enough to ensure the
`check data could be read from the image.
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`So, if this construction is adopted it would import limitations that
`aren’t actually in the claim because the claim is broad enough to capture
`systems that only monitor one monitoring criteria and everyone agrees that
`such systems could not reject data. So, if this was the construction the claim
`really wouldn’t be enabled anymore, not to its full scope. And so, we would
`urge the Board not to adopt this construction because it would create the
`enabling issue. But in addition, there are no specifications (inaudible) for
`this construction.
`Slide 13 lists the citation the USAA points to. That’s just simply one
`implementation of what other implementations in the specifications. That
`particular sentence has the “without error” statement but other portions of
`the spec say differently. Those are listed the slides 14 and 15. They show
`that the monitoring criteria just reduces the number of check data errors and
`increases the ability to capture data from the images. But in either case does
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`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
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`it absolutely guarantee the check data will be readable, not just the image in
`that direction.
`And lastly, we point to our illegible check example that’s shown in
`slide 16. There we have a demonstrative, which is my own, very bad
`handwriting of a check. As you can see you can sort of read the payee,
`Verizon, in this check demonstrative. The legal amount below that is pure
`gibberish and the courtesy amount which is the number in the box of the
`check. I put in Roman numerals four and IXIX which is the proper Roman
`numeral.
` If this check image were to be imaged and sent through a check
`processing system, it would not clear, it would not be legible, it couldn’t be
`understood. Nonetheless, as USAA experts agreed in the deposition quote
`on the right you can still have a level line image of the check regardless of
`the fact it’s illegible and that level line image would pass the monitoring
`criteria even though this check could not have its data extracted or could not
`be deposited. So, for all of these reasons we support not to construe passes
`the monitoring criteria. There’s no need to reach it and the proposed
`construction is unsupported by the record.
`So next I would turn to the determine constructions. I don’t have
`much to add here, these are on slides 17 and 18. Again these are similar to
`constructions of related patents in other IPRs. In this case, IPR 2020-90 and
`91. In those Institution Decisions, the Board decided not to construe these
`terms and we had urged the Board to reach the decision for the same issue
`here. Fundamentally, the arguments are basically the same as the past
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`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
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`constructions so I’m not going to repeat them unless the Board has questions
`but those are the arguments there.
`And then the last construction I’d like to talk about today is the
`mobile device construction. This is slide 11. The dispute here is whether
`the construction should include the phrase “mobile operating system” or not.
`USAA points to one paragraph of the specification in the 571 spec that’s in
`column 11, and 6 through 21. That embodiment does describe the mobile
`device with the mobile operating system. But USAA ignores the prior
`paragraph which provides another example that would be column 10 line 6
`through column 11 line 5. And in that other example there’s no mobile
`operating system so the specification does not require a mobile operating
`system.
`JUDGE DIRBA: Counsel, can I interrupt you for a minute? So, what
`about the District Court’s claim construction of mobile device?
`MR. CAMPBELL: Well the District Court did reach a construction
`that an operating system is required. We don’t believe that’s a proper
`construction so we would urge the Board not to adopt it in this case. The
`District Court placed a lot of reliance on the word “the” in the paragraph the
`USAA points to. But we point out again that there is another example that
`doesn’t mention a mobile operating system at all; as a self-contained
`application that doesn’t need a mobile operating system. So, it’s possible to
`practice this invention both with and without a mobile operating system and
`it’d be improper to import that limitation into the claims.
`The other thing we point out is the patent specs. USAA patent specs
`don’t describe any technical details of the operating system. They just
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`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
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`presume it already existed because mobile operating systems were well
`known by 2009. So, it’s not that they invented a mobile operating system,
`it’s just existing in technology. They've incorporated in one embodiment of
`this specification into part of their claims. So those are the kind of
`construction claims that we want to discuss today. Unless there are further
`questions, I’ll move onto the motivation arguments? So, for the motivation
`to combine --
`JUDGE WHITE: Counselor, before we move on off of claim
`constriction, I would appreciate it if you could address claim 12 of the 571.
`Having a 571 and 517 is close enough to cause confusion. But claim 12 it
`appears to be your position that we need to insert a few words into that claim
`for error correction purposes. I’d like to hear you address those.
`MR. CAMPBELL: Yes, Your Honor. So, in claim 12 recites, I
`believe, stating the instruments in claim 13 which is dependent on claim 12.
`It recites basically that the cleaning could be due to cropping. And we think
`that claim makes sense as written, there’s really no cleaning up the
`instrument which would be cleaning the actual check or some other
`instrument. But there is discussion of cleaning the image for the information
`that is captured from the instrument. And if you add in the words, we
`suggested in claim 12 and claim 13 it makes complete sense.
`USAA has never argued with us on this. There’s been no dispute that
`that's wrong and I'm not sure the Board needs to reach that issue anymore
`because there's no dispute in the prior claim 12 and 13 whatever they might
`be. So, I don’t believe USAA's offered any arguments that depending on
`which of those constructions or corrections adopted the case would change.
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`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
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`So, I'm not certain the Board needs to reach that issue. It's certainly within
`their right but I don’t know that the issue needs to be reached.
`JUDGE WHITE: So, to be clear, it's your position that even if we do
`not make construction of that language, we can understand it enough to
`apply the art that you're putting forth for that claim.
`MR. CAMPBELL: Yes, Your Honor, that's our position. And
`especially where whatever claim 12 met, claim 13 further inherited and sent
`one way to meet claim 12 basically is to crop the image and we've shown
`cropping present in the prior art. So, whatever claim 12 fully means, we
`know it includes the example of claim 13 and we know the prior art is taught
`in claim 13. So, therefore, it must have also taught claim 12, whatever it
`might be.
`JUDGE WHITE: Thank you.
`MR. CAMPBELL: Okay, I'll move on to the motivation arguments.
`JUDGE DIRBA: Counselor, before you do that, could I ask you,
`you've used the term undisputed a number of times. And are you using the
`term undisputed to mean that we don't need to address, in our final decision,
`the sufficiency of your Petition regarding those items that are not disputed?
`MR. CAMPBELL: Well, Your Honor, so I'm sure you need to make
`the determination that our Petition was sufficient. But I am just pointing out
`that the parties don't dispute that we haven't met that burden. That we have
`sufficient evidence, for example, that the prior art taught every element. So,
`from this decision, I think the Board has already found our Petitions were
`sufficient. There has been no challenge other than the motivation and
`secondary consideration arguments. So, for the rest of our Petition just
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`IPR2019-01082 (Patent 8,977,571 B1)
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`remains unchallenged and I think the Board can simply note that and not
`have to engage any in-depth analysis. I think was basically already done in
`the Institution Decision stage.
`JUDGE DIRBA: All right, thank you.
`MR. CAMPBELL: So, with respect to motivation as recognized in
`the Institution Decisions, we are combining the Nepomniachtchi we are not
`replacing any part of Nepomniachtchi and we've set forth three reasons in
`our Petition for this combination and this would be on slide 27. It's the first
`one, reducing the computational burden.
`The other motivations we've offered are that it would minimize the
`need to ask the user to retake the image and it would also solve for checks
`the same problems that Yoon solved for business cards. Most of the
`argument in the papers is based on that first one, the reducing the
`computational burden. Our position is shown on slide 27 where we show
`that we have this little robot icon as being the mobile device doing that
`patent step and then the human brain when the human brain the user's brain
`is doing something.
`So, in Nepomniachtchi, the analysis and the correction would both be
`done by the mobile device. In the combined system, Nepomniachtchi and
`Yoon, the analysis would still be done by the mobile device but the
`correction would be done by the user. The user would decide what needs to
`be done in order to make this image plan out correctly. Or if the brightness
`is not sufficient, what needs to be done to either turn on the light, maybe turn
`off a light in order to get that corrected.
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`And there's -- we've split the analysis and correction because that's
`now Nepomniachtchi has done it. That's what described, for instance,
`column lines 24 to 31, column 10 lines 16 to 22. And it describes the mobile
`device too in both of these things. That's in column 2, 24 to 31. These other
`embodiments for the server does one or both of the steps. But there's a
`preference for the mobile to do it because if the mobile does it, it can be sure
`the user's still using the application and is there to take or retake if
`necessary. If those steps are farmed off to the server, the server is going to
`get to them when it gets to them and the user may or may not still be around
`to take an image if necessary. So, there's a preference within these
`embodiments for the local device and after Dr. Alexander testified to that,
`that's in page 88 lines 2 through 19 of his testimony that there's a preference
`for the mobile device within Nepomniachtchi.
`So, we think that's all pretty straightforward and common sense.
`Nonetheless, USAA has offered quite a lot of counter arguments and I'll go
`through them as best I can. I'd like to start with their argument that
`Nepomniachtchi are not analogous and this would be slide 35 of our
`presentation. There is really no question that Nepomniachtchi taught a
`mobile device EU separates mobile device within the specs. So, this
`argument comes down to whether Yoon being taught a mobile device by
`Yoon taught a portable terminal and that portable terminal engaged in
`voice/data communications.
`And as Dr. Alexander has said in his declaration, a person of ordinary
`skill in the art could read that and understand that could be a mobile phone,
`for instance, an iPhone that was on the market at the time. And that such
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`devices are mobile devices because they're mobile devices but also, they
`have operating systems to the extent that construction is reached.
`JUDGE CHANG: Counsel, I have a question. When you went to
`your slide 27, how does that correlate with, for example, claim 1 of the 571
`Patent. So, first you have as first step is monitoring an image of the check.
`So, does the mobile device monitor it or the human?
`MR. CAMPBELL: It would be the mobile device in the combination
`because the mobile device determines whether the image is lined up with the
`alignment guide that's shown in Yoon and whether the brightness is
`sufficient. And that's a determination made by the machine or the mobile
`device.
`JUDGE CHANG: Okay and then the second step is capturing the
`image of the check with a camera when the image of the check passes the
`monitoring criteria. So, does the mobile phone check to see if it passes that
`criterion or the human does?
`MR. CAMPBELL: That's the mobile device. This would be in Yoon.
`Yoon's got the long flow chart that describes this. One step of that flow
`chart determines whether the document is lined up with the alignment fact
`that Yoon is rejecting. Then if it is lined up, it moves onto the next step and
`checks for brightness and if that's good, it will capture the image.
`JUDGE CHANG: And then the last step, the one that you mentioned
`of the check from the camera to depository. So, that's also the mobile
`phone, right?
`MR. CAMPBELL: Yes, yes.
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`JUDGE CHANG: And I'm not quite sure why you have the human
`under the correction. When does it do the correction?
`MR. CAMPBELL: First is if the check would started misalign and
`the Yoon system would show that it wasn't lined up properly, it wouldn't
`capture the image until the user has done something to correct that. Either
`move the check so it lines up well or move the device so that it lines up well.
`But the user is going to have to decide what needs to be done and how to do
`it.
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` And in Nepomniachtchi alone that would be done by a
`correction algorithm that would take the image as is and see if it can line it
`up because the image is now processing the algorithms. In the combined
`system the user is going to decide what needs to be done to make that image
`align. So, it's not so much expressed limitation but in order to get to that
`capture step, the image has to be aligned and the user has to decide what
`needs to be done to make that happen.
`JUDGE CHANG: Okay thank you.
`JUDGE WHITE: Counselor, what about Patent Owner's argument
`that this combination wouldn't save you any computational analysis because
`you're just moving the computational analysis around. You're still spending
`the same amount of computing power to figure these things out so it's really
`not any more efficient.
`MR. CAMPBELL: Your Honor, as I understand Patent Owner's
`argument there, they're saying that the analysis step to determine whether the
`image is within the monitoring criteria multiple times in the combination, I
`think their reply is that it had to be 30 times per second although there's
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`really no evidence for that. But in the event that their argument is that
`would have to occur multiple times whereas in Nepomniachtchi alone, it
`only would occur once and because it's occurring multiple times, that
`increases the burden. And the fact that the correction step is moved from the
`mobile device to the user isn't enough to offset that.
` But that's really just a lot of material argument speculation.
`There's no real evidence in the record of that. And we don’t think, as we
`mention in our Reply, we don't agree that you would have to take multiple
`images in order to determine the quality. I think you could only take one. It
`might not be the best system in the world but that's not required. All that's
`required is that it's a suitable combination, not that it's perfect. So, that's our
`response to that.
`JUDGE DIRBA: Counsel, could you explain to me how the system
`would even work if it only took one image? In other words, how in your
`proposed combination would the mobile device determine whether or not the
`image was aligned if there was only one image it was analyzing?
`MR. CAMPBELL: Well if the (inaudible) the brightness actually the
`device could say image is too dark and you turn a light on and I think the
`criteria is satisfied. So, I think that's an example that it could be done with
`one check of the quality analysis. But in an
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