Petition for Inter Partes Review
`of U.S. Patent No. 8,699,779
`
`
`
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`
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`DOCKET NO.: 1652875-00151US2
`Filed on behalf of PNC Bank, N.A.
`By: Monica Grewal, Reg. No. 40,056 (Lead Counsel)
`David Cavanaugh, Reg. No. 36,476 (First Backup Counsel)
`Gregory Lantier (pro hac vice to be filed) (Backup Counsel)
`Taeg Sang Cho, Reg. No. 69,618 (Backup Counsel)
`Jonathan Knight, Reg. No. 69,866 (Backup Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Email: monica.grewal@wilmerhale.com
` david.cavanaugh@wilmerhale.com
` gregory.lantier@wilmerhale.com
` tim.cho@wilmerhale.com
`jonathan.knight@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`PNC BANK, N.A.,
`Petitioner,
`v.
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`_________________________________________
`Case IPR2021-01070
`U.S. Patent No. 8,699,779
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,699,779
`CHALLENGING CLAIMS 1, 2, 7-10, 15-17
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
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`

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`V.
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`Petition for Inter Partes Review
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`of U.S. Patent No. 8,699,779
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................. 3
`A.
`Real Party-In-Interest ............................................................................ 3
`B.
`Related Matters ...................................................................................... 3
`C.
`Counsel .................................................................................................. 4
`D.
`Service Information ............................................................................... 4
`III. CERTIFICATION OF GROUNDS FOR STANDING .................................. 5
`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 5
`A.
`Prior Art Patents and Printed Publications ............................................ 5
`B. Grounds of Challenge ............................................................................ 7
`TECHNICAL BACKGROUND ..................................................................... 7
`A.
`Remote Check Deposit using Mobile Devices...................................... 7
`B. Alignment Guides and Auto Capture .................................................. 10
`VI. THE ’779 PATENT ....................................................................................... 13
`A. Overview ............................................................................................. 13
`B.
`Prosecution History ............................................................................. 18
`C.
`Conception and Reduction to Practice ................................................ 19
`VII. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 19
`VIII. CLAIM CONSTRUCTION .......................................................................... 20
`IX. OVERVIEW OF PRIOR ART ...................................................................... 23
`A.
`Acharya................................................................................................ 23
`B.
`Luo ....................................................................................................... 25
`SPECIFIC GROUNDS FOR UNPATENTABILITY ................................... 30
`A. Ground I: Claims 1, 2, 7-10, and 15-17 Would Have Been
`Obvious Over Acharya In View of Luo .............................................. 30
`1.
`Combination of Acharya and Luo (“Acharya/Luo”) ................ 30
`2.
`Independent Claim 1 ................................................................. 36
`3.
`Dependent Claim 2 ................................................................... 57
`
`X.
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`Petition for Inter Partes Review
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`of U.S. Patent No. 8,699,779
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`4.
`Dependent Claim 7 ................................................................... 58
`5.
`Dependent Claim 8 ................................................................... 61
`6.
`Dependent Claim 9 ................................................................... 64
`7.
`Independent Claim 10 ............................................................... 66
`8.
`Dependent Claim 15 ................................................................. 72
`9.
`Dependent Claim 16 ................................................................. 72
`10. Dependent Claim 17 ................................................................. 73
`XI. DISCRETIONARY DENIAL IS NOT WARRANTED ............................... 73
`A.
`Patent Owner Believes the Co-Pending Litigation Should Not
`Prevent IPR Institution ........................................................................ 73
`B.
`Fintiv Factors Favor Institution ........................................................... 73
`C. New Prior Art and Arguments Favor Institution ................................ 75
`XII. CONCLUSION .............................................................................................. 76
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`I.
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,699,779
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`INTRODUCTION
`U.S. Patent No. 8,699,779 (the “’779 patent”) reuses known mobile
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`technologies for capturing document images that are suitable for performing optical
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`character recognition. Although the ’779 patent is specifically directed to capturing
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`images of checks, it does not claim any special techniques for checks that have not
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`already been applied to other kinds of documents. It is unpatentable at least because
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`remote check deposit implemented on a camera phone predates the ’779 patent, as
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`does complementary prior art (also using camera phones) that teaches monitoring of
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`document features to improve image capture for optical character recognition.
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`More specifically, claim 1 of the ’779 patent recites “[a] system for depositing
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`a check” that “project[s] an alignment guide in the display of the mobile device” and
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`“determine[s] whether the image of the check aligns with the alignment guide.”
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`Among other things, the claim recites that the system “monitor[s] an image of the
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`check” and “automatically capture[s] the image of the check when the image of the
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`check is determined to align with the alignment guide.” The check image is provided
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`to “a depository via a communication pathway between the mobile device and the
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`depository.”
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`These concepts were disclosed in prior art that was not considered during
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`prosecution of the application that issued as the ’779 patent. As discussed below,
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`U.S. Patent No. 8,768,836 to “Acharya” discloses software for capturing an image
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`1
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`Petition for Inter Partes Review
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`of U.S. Patent No. 8,699,779
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`of a check using the digital camera of a mobile device and providing that image to a
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`depository. Further, Chinese Patent Application Publication No. CN 1897644A to
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`“Luo” discloses a “method and system” of a “handheld” device for determining that
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`a “preview image” “is clearer and more accurate” for performing “optical character
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`recognition … with high accuracy” by monitoring whether the edge of a document
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`is “substantially parallel” to a “reference line” displayed on a preview screen of the
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`system. EX1004, 7.1 When this condition is met, “instructions” are provided to the
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`user “before capturing the image of the object.” Additionally, Acharya was
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`compatible with the implementation of Luo’s technique for image capture, and it
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`would have been obvious to do so.
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`Furthermore, the grounds advanced in this Petition are distinguishable over
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`the grounds presented in IPR2019-01083, a prior IPR challenge to the ’779 patent
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`by an unrelated party. See Wells Fargo Bank, N.A. v. United Services Automobile
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`Association, IPR2019-01083, Paper 39 (P.T.A.B. Nov. 24, 2020). In IPR2019-
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`01083, the Board rejected the proffered combination of prior art references because
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`they offered competing technical solutions for obtaining suitable images for optical
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`character recognition. Id., 27-31. As shown below, this Petition is based on a
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`
`1 Page number citations to EX1004 refer to the page numbers of the Description
`
`section in the English translation, starting on page 4 of EX1004.
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`2
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`Petition for Inter Partes Review
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`of U.S. Patent No. 8,699,779
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`different set of prior art references in which the technical solutions complement
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`rather than conflict with one another.
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`In view of these references and the additional prior art discussed below, claims
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`1, 2, 7-10, and 15-17 should be cancelled in this inter partes review (“IPR”) Petition
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`by PNC.
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`II. MANDATORY NOTICES
`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. §42.8(b)(1), Petitioner certifies that PNC Bank, N.A. is
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`the real party-in-interest.
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`B. Related Matters
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that Patent Owner (“PO”)
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`has asserted four patents, including the ’779 patent, in United Services Automobile
`
`Association v. PNC Bank, N.A., No. 2:20-cv-00319-JRG (E.D. Tex.) (the “-00319
`
`Action”). PO has asserted two additional patents in United Services Automobile
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`Association v. PNC Bank, N.A., No. 2:21-cv-00110-JRG (E.D. Tex.).
`
`In the -00319 Action, Petitioner has asserted counterclaims against PO,
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`asserting two patents: U.S. Patent Nos. 8,682,754 and 8,868,786. PO has filed an
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`IPR petition challenging validity of U.S. Patent No. 8,868,786. United Services
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`Automobile Association v. PNC Bank, N.A., IPR2021-01163.
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`Seven prior post-grant proceedings have been filed pertaining to patents in the
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`’779 patent’s family:
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`3
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`
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`Challenged Patent
`U.S. 8,699,779
`
`U.S. 9,336,517
`
`U.S. 9,177,198
`
`Petition for Inter Partes Review
`of U.S. Patent No. 8,699,779
`Case Nos.
`CBM2019-00005
`IPR2019-01083
`IPR2020-00976
`CBM2019-00003
`IPR2019-01081
`IPR2020-01101
`IPR2020-00091
`
`Petitioner is concurrently filing a petition for inter partes review (IPR2021-
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`01073) challenging U.S. Patent No. 8,977,571 asserted against Petitioner in the -
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`00319 Action.
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`C. Counsel
`Under 37 C.F.R. § 42.8(b)(3)-(4), Petitioner identifies the following lead and
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`backup counsel, to whom all correspondence should be directed.
`
`Lead Counsel:
`
`
`
`Monica Grewal (Reg. No. 40,056)
`
`Backup Counsel:
`
`David Cavanaugh (Reg. No. 36,476)
`
`Gregory Lantier (pro hac vice to be filed)
`
`Taeg Sang Cho (Reg. No. 69,618)
`
`Jonathan Knight (Reg. No. 69,866)
`
`D.
`Service Information
`E-mail:
`
`
`monica.grewal@wilmerhale.com
`
`
`
`david.cavanaugh@wilmerhale.com
`
`gregory.lantier@wilmerhale.com
`
`tim.cho@wilmerhale.com
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`4
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`Petition for Inter Partes Review
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`of U.S. Patent No. 8,699,779
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`jonathan.knight@wilmerhale.com
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`Post and hand delivery: Wilmer Cutler Pickering Hale and Dorr LLP
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`
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`
`
`
`
`
`60 State Street
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`Boston, MA 02109
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`Telephone: 617-526-6223
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`Fax: 617-526-5000
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`Petitioner consents to service by e-mail on lead and backup counsel.
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`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies under 37 C.F.R. § 42.104(a) that the patent for which
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`review is sought is available for inter partes review (IPR) and under 37 C.F.R.
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`§ 42.101(a)-(c) that Petitioner is not barred or estopped from requesting an IPR
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`challenging the patent claims on the grounds identified in this Petition.
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`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
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`claims 1, 2, 7-10, and 15-17 of the ’779 patent.
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`A.
`Prior Art Patents and Printed Publications
`The following references are pertinent to the grounds of unpatentability
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`5
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`explained below:2
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,699,779
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`• U.S. Patent No. 8,768,836 (EX1003, “Acharya”), filed August 7, 2007, is
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`prior art under 35 U.S.C. § 102(e).
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`• Chinese Patent Application Publication No. CN 1897644A (EX1004, “Luo”),
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`published January 17, 2007, is prior art under 35 U.S.C. §§ 102(a),(b).
`
`Acharya3 and Luo are not identified in the References Cited on the face of the ’779
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`patent. Luo was used in IPR petitions filed by third parties which were denied on
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`2 For purposes of this petition, the effective filing date of the ’779 patent is August
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`28, 2009, which is before the effective date of the “First-Inventor-to-File”
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`provisions of the America Invents Act (AIA). Accordingly, Petitioner applies the
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`pre-AIA statutory framework.
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`3
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`The face of the ’779 patent lists U.S. Patent Application No. 2005/0267843
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`(the “’843 publication” (EX1021)) to Acharya (same inventor as Acharya).
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`Although the specifications of the ’843 application and Acharya overlap, the ’843
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`publication does not include critical disclosures relied upon in this Petition,
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`including the use of handheld mobile devices to capture check images. The face of
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`the ’779 patent also lists U.S. Patent Application No. 2004/0236647 (the “’647
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`publication” (EX1022)) to Acharya. However, the ’647 publication is directed to
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`an electronic check register, technology not relevant here. EX1002, ¶¶48-49.
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`Petition for Inter Partes Review
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`of U.S. Patent No. 8,699,779
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`procedural grounds without addressing the merits of Luo. In the present Petition,
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`Luo is used in combination with other references that had not been considered by the
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`Board and thus present a new ground of invalidity. EX1002, ¶¶43, 48, 52.
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`B. Grounds of Challenge
`Petitioner requests cancellation of challenged claims 1, 2, 7-10, and 15-17 of
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`the ’779 patent as unpatentable under 35 U.S.C. § 103 on the following ground:
`
`Ground References
`I
`Acharya and Luo
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`Basis
`§ 103
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`Claims Challenged
`1, 2, 7-10, 15-17
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`This Petition, supported by the declaration of Dr. Todd Mowry (EX1002,
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`
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`“Mowry’s Declaration”), demonstrates that there is a reasonable likelihood that
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`Petitioner would prevail with respect to at least one of the challenged claims. 35
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`U.S.C. §314(a). Petitioner respectfully requests institution. SAS Institute Inc. v.
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`Iancu, 138 S. Ct. 1348, 1351 (2018).
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`V. TECHNICAL BACKGROUND
`A. Remote Check Deposit using Mobile Devices
`Traditional check deposit and clearing was a paper-intensive process that
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`required the payee bank to send a paper check to the payor bank. EX1009, 1:26-53.
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`In 2004, the Check 21 Act (“Check 21”) changed this by allowing payee banks (also
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`known as “banks of first deposit”) to image incoming checks and process them as
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`electronic documents. This new paradigm enabled payee banks to transmit digital
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`images of the front and back of the original check in place of physical checks. After
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`Check 21, “the use of digital images for check presentment … reduce[d] the time
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`necessary for a check to clear and the cost associated with moving paper checks from
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`location to location.” EX1010, 1:31-36. EX1002, ¶30.
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`Banks began to enable customers to deposit paper checks by submitting
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`photographs of checks, taken with mobile devices such as camera phones. For
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`example, by January 2008, Mitek Systems had launched a product called ImageNet
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`Mobile Deposit, “a remote check capture product for the mobile phone” that “us[es]
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`the increasingly powerful cameras built into most mobile phones.” EX1008, 1. This
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`product enabled check images captured with a camera phone to be used in a Check
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`21-compliant check deposit process without the need to deposit a physical check:
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`The user enters the amount of the check being deposited
`and instructs the person to snap a picture of the front and
`then the back of the check. Immediate feedback is given
`with regard to quality, notes DeBello. If the check looks
`good, the person simply clicks the "submit" button.
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`“We install software to process the image and optimize it
`for X9.37 quality standards [i.e., Check 21 complaint] for
`the remote deposit capture world,” DeBello explains.
`“Before the check is submitted, the software extracts key
`pieces of information such as the MICR line, the legal
`amount information and the signature information. Once
`the bank receives the image and processes the transaction,
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`a text message is sent to the user to verify completion of
`the transaction.”
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`EX1008, 1. EX1002, ¶31.
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`As shown in the figure reproduced below, ImageNet Mobile Deposit enabled
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`a person to deposit a check remotely using their camera phone:
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`EX1014, 37. By June 2008, ImageNet Mobile Deposit was already known in the
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`industry as a remote deposit solution, and was a “Top 10” selection in the banking
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`industry news:
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`Id., 34. EX1002, ¶¶31-32.
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`B. Alignment Guides and Auto Capture
`Even before the ’779 patent, “[c]amera captured images” were known to
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`“suffer from low resolution, blur, and perspective distortion, as well as complex
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`layout and interaction of the content and background.” EX1029, Abstract. In
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`particular, it was well known that the unaided use of handheld mobile devices to
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`capture document images, including but not limited to checks, was less reliable than
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`traditional document scanning because cameras in handheld devices did not offer
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`the same document alignment precision as was available with previous scanning
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`devices. See, e.g., EX1029, 4 (“documents that are not frontal-parallel to the
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`Petition for Inter Partes Review
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`of U.S. Patent No. 8,699,779
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`camera’s image plane will undergo a perspective distortion.”); EX1015, [0020]-
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`[0023]. EX1002, ¶33.
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`It was also well known that these same considerations applied equally to check
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`imaging. See, e.g., EX1015, [0072] (“[D]ocuments can be, for example, … bank
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`checks.”); EX1032, 6:60-66 (“Many different factors may affect the quality of an
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`image and the ability of a mobile device based image capture and processing system.
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`Optical defects, such as out-of-focus images (as discussed above), unequal contrast
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`or brightness, or other optical defects, might make it difficult to process an image of
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`a document (e.g., a check, payment coupon, deposit slip, etc.)”). EX1002, ¶34.
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`Solutions to these problems had already been developed for camera phones
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`by technology companies like Motorola. For example, the Motorola GSM wireless
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`phone was equipped with a business card reader application that provided “[a] red
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`border [i.e., alignment guide] in the OCR [optical character recognition] viewfinder
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`to vertically frame the business card you want to capture,” gave “instructions on how
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`to position and frame the business card that you want to capture,” and “automatically
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`capture[d] a business card when the card is properly framed”:
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`EX1020, 93 (annotated with text highlighted in yellow). Alternatively, “[i]f auto-
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`capture is turned off, tap the Capture key to manually capture the business card” or
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`“you can press the camera key or press the joystick [] to capture the business card.”
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`Id., 94. EX1002, ¶35.
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`With these techniques already in use on camera phones, the task of capturing
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`better check images was simply a matter of implementing widely-known techniques
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`for that purpose. EX1002, ¶36.
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`VI. THE ’779 PATENT
`A. Overview
`The ’779 patent is generally directed to “remote deposit of checks” wherein
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`Petition for Inter Partes Review
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`“the payee may capture a digital image of a check using a [camera on a] mobile
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`device4. The financial institution [i.e., depository] may then receive from the
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`payee the digital image of the check.” As shown in Figure 2 (reproduced below),
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`4 All color annotations and emphases in this petition have been added unless noted
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`otherwise.
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`“[t]he financial institution may then use the digital image to credit funds to the
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`payee” via a clearinghouse. EX1001, 1:26-31.
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`
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`EX1001, FIG. 2. EX1002, ¶37.
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`According to the ’779 patent, “[c]apturing a digital image at a mobile device
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`that allows for subsequent detection and extraction of the information from the
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`digital image is difficult.” EX1001, 1:33-36. The alleged invention of the ’779
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`patent is to improve image capture quality by providing an “alignment guide” “in
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`the field of view of a camera associated with a mobile device” and capturing an
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`of U.S. Patent No. 8,699,779
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`image of a check “[w]hen the image of the check is within the alignment guide … .”
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`Id., 1:40-44. These steps are shown in steps 830-840 in Figure 8, reproduced below.
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`Id., FIG. 8. The ’779 patent explains that “[t]he image capture may be performed
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`automatically by the camera or the mobile device as soon as the image of the check
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`is determined to be within the alignment guide.” Id., 1:53-56. EX1002, ¶38.
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`The alignment guide provides “a pre-image capture quality check that helps
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`reduce the number of non-comforming [sic] images of checks during presentment of
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`the images to a financial institution for processing and clearing” by increasing “the
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`likelihood of capturing a digital image of the check 108 that may be readable and
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`processed.” EX1001, 3:55-4:2. Information to be read from the digital image of the
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`check (step 870 in Figure 8 above) includes “the MICR number, the routing number,
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`an amount, etc.” Id., 13:49-50. EX1002, ¶39.
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`As shown in Figure 3 (reproduced below), “[t]he alignment guide 235 may
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`be overlaid on the camera feed of the mobile device 106.” EX1001, 6:3-4. The
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`“alignment guide 235” may be “a three-sided bounding box” or another shape or
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`indicator such as “vertical bars, parallel lines, a circle, a square, a bounding
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`rectangle, or a self-crop tool, for example.” Id., 6:5-10. In operation:
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`[w]hen the check image 247 is within the alignment guide
`235 (e.g., the edges 245 of the check image 247 are
`aligned with respect to the alignment guide 235, such as
`parallel to the associated portion of the alignment guide
`235), the check image 247 and the background image 250
`(if any) that are within the alignment guide may be
`captured either automatically (e.g., by the camera or the
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`mobile device under direction of an application running on
`the camera 207 or the mobile device 106 or the financial
`institution) or manually (e.g., by the user 102 pressing a
`button or making a selection on the camera 207 or the
`mobile device 106).
`
`Id., 6:21-31.
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`
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`EX1001, FIG. 3. EX1002, ¶40.
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`As explained above in Section VI, alignment guides and auto capture have
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`been used in the prior art to improve the quality of captured document images in
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`anticipation of optical character recognition. The ’779 patent does not disclose or
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`suggest any techniques or algorithms specific to check images. EX1002, ¶41.
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`Petition for Inter Partes Review
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`B.
`Prosecution History
`The application for the ’779 patent was filed on August 28, 2009 and issued
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`on April 15, 2014. EX1001, cover. The application was initially rejected on May
`
`8, 2012 over U.S. Patent No. 7,978,900 (EX1032) in combination with U.S. Patent
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`No. 6,606,117 (“Windle”; EX1027). EX1007, 82 (Non-Final Rejection dated May
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`8, 2012). In response, Applicant amended claims to require, inter alia,
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`“automatically captur[ing] the image of the check when the image of the check is
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`determined to align with the alignment guide.” Id., 95 (Amendment/Request for
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`Reconsideration After Non-Final Rejection dated August 28, 2012). Applicant
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`argued that none of the references, including Windle, taught this feature. Id., 102.
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`The application for the ’779 patent was allowed in view of the amendments and
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`arguments. EX1002, ¶42.
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`Following the examiner’s initial search results and initial rejection of the filed
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`claims, applicants submitted a supplemental Information Disclosure Statement
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`(“IDS”) with its response containing over 800 references. EX1007, 139-165
`
`(Supplemental Information Disclosure Statement dated August 28, 2012). Among
`
`18
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`

`

`Petition for Inter Partes Review
`
`
`of U.S. Patent No. 8,699,779
`
`
`these references was U.S. Patent Application No. 2005/0267843 (the “’843
`
`publication” (EX1021)) to Acharya (same inventor as Acharya).5 EX1002, ¶43.
`
`C. Conception and Reduction to Practice
`USAA allegedly “conceived the invention of the ’779 patent no later than July
`
`1, 2008 and worked diligently reducing it to practice at least through the effective
`
`filing date of the ’779 patent (August 28, 2009).” Mitek Sys. Inc. v. United Services
`
`Automobile Association, IPR2020-00976, Paper 20, 39 (P.T.A.B. Aug. 29, 2020).
`
`Acharya and Luo predate the alleged conception date. EX1002, ¶29.
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSITA”) on the alleged conception
`
`date of the ’779 patent (July 1, 2008) and at the time of the filing date of the ’779
`
`
`The face of the ’779 patent lists U.S. Patent Application No. 2005/0267843
`
`5
`
`(the “’843 publication” (EX1021)) to Acharya (same inventor as Acharya).
`
`Although the specifications of the ’843 application and Acharya overlap, the ’843
`
`publication does not include critical disclosures relied upon in this Petition,
`
`including the use of handheld mobile devices to capture check images. The face of
`
`the ’779 patent also lists U.S. Patent Application No. 2004/0236647 (the “’647
`
`publication” (EX1022)) to Acharya. However, the ’647 publication is directed to
`
`an electronic check register, technology not relevant here. EX1002, ¶¶48-49.
`
`19
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`

`Petition for Inter Partes Review
`
`
`of U.S. Patent No. 8,699,779
`
`
`patent (August 28, 2009) would have had a bachelor’s degree in electrical
`
`engineering, computer science, computer engineering, or equivalent field, and at
`
`least two years of prior experience with image processing or scanning technology
`
`involving transferring and processing of image data to and at a server. A person
`
`with additional education or additional industrial experience could still be of
`
`ordinary skill in the art if that additional aspect compensates for a deficit in one of
`
`the other aspects of the requirements stated above. EX1002, ¶44.
`
`VIII. CLAIM CONSTRUCTION
`The Board need only construe claim terms to the extent necessary to resolve
`
`a controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`
`1013, 1017 (Fed. Cir. 2017).
`
`In the co-pending district court litigation, Petitioner and PO agree on the
`
`construction of certain terms and disagree on others. See EX1023 [Joint Claim
`
`Construction], 5-6, 12-13. In this petition, Petitioner relies on the constructions
`
`urged by PO in the co-pending district court litigation or as the parties agreed. Rule
`
`42.104(b)(3) “does not require Petitioner to express its subjective agreement
`
`regarding correctness of its proffered claim constructions or to take ownership of
`
`those constructions.” Western Digital Corp. v. SPEX Techs. Inc., IPR2018-00084,
`
`Paper 14 at 11-12 (P.T.A.B. Apr. 25, 2018). EX1002, ¶45.
`
`20
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`

`

`
`
`
`Petition for Inter Partes Review
`
`of U.S. Patent No. 8,699,779
`
`More specifically, the table below lists the proposed constructions of terms
`
`for this petition.
`
`Term
`
`Proposed Construction6
`
`Intrinsic Support7
`
`“depositing a check”
`
`(claims 1, 10)
`
`“a system for depositing
`a check”
`
`(claim 1)
`
`“a non-transitory
`computer-readable
`medium comprising
`[computer-readable]
`instructions for
`depositing a check”
`
`(claim 10)
`“mobile device”
`
`(claims 1, 3, 5, 10)
`
`* “providing a check to a
`depository in a form
`sufficient to allow money
`to be credited to an
`account”
`# The preambles are
`limiting
`
`# “computing device
`capable of being easily
`moved and that is
`controlled by a mobile
`operating system”
`
`EX1001, 1:13-33, 3:8-10,
`3:39-45, 6:29-41, 15:10-
`12, 17:13-15, Figs. 8-9.
`
`EX1001, Claims 1, 10.
`
`EX1001, 2:24-29, 3:9-13,
`3:38-54, 3:55-61, 3:62-
`4:2, 4:51-56, 5:55-58,
`8:64-9:4, 10:16-21,
`11:44-51, 13:44-50, 14:3-
`10, and Figs. 8, 9.
`
`CBM2019-00005, Paper
`25 at 9-11 (P.T.A.B. June
`3, 2019).
`
`EX1001, 3:49-54, 5:30-
`36, 7:65-8:2, 9:10-12,
`9:45-51, 12:29-33.
`
`
`“*” denotes an agreed-upon construction. “#” denotes the construction
`
`6
`
`proposed by PO in the district court.
`
`7
`
`For the construction proposed by PO in the district court, this column
`
`provides the intrinsic support cited by PO. For agreed-upon constructions, this
`
`column provides the Petitioner’s intrinsic support.
`
`21
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`

`

`
`
`
`Term
`
`Petition for Inter Partes Review
`
`of U.S. Patent No. 8,699,779
`
`Proposed Construction6
`Intrinsic Support7
`
`
`
`# “a system for providing
`a check to a depository in
`a form sufficient to allow
`money to be credited to
`an account”
`# No further construction
`necessary.
`
`# “determining that the
`alignment of the image of
`the check is within an
`acceptable threshold such
`that the image can be
`electronically read”
`
`# “at or after the moment
`the image of the check is
`determined to align with
`the alignment guide”
`
`# No further construction
`necessary.
`
`EX1001, 2:24-29, 7:30-
`33, 12:26-38, 12:51-56,
`and Figs. 8, 9.
`
`EX1001, 1:51-56, 5:30-
`35, 7:14-21, 12:57-62,
`15:6-20, and Figs. 8, 9.
`EX1001, 3:55-59, 3:62-
`4:2, 4:19-22, 5:42-48,
`8:55-60, 10:16-21, 13:47-
`50, 13:66-14:6.
`
`CBM2019-00005, Paper
`25 at 11-13 (P.T.A.B.
`June 3, 2019).
`
`EX1001, 3:55-59, 3:62-
`4:2, 4:19-22, 5:42-48,
`8:55-60, 10:16-21, 13:47-
`50, 13:66-14:6.
`
`CBM2019-00005, Paper
`25 at 11-13 (P.T.A.B.
`June 3, 2019).
`EX1001, 6:21-31.
`
`“deposit system”
`
`(claim 10)
`
`“capture the image of the
`check”
`
`“determin[ing] whether
`the image of the check
`aligns with the alignment
`guide” / “the image of the
`check is determined to
`align with the alignment
`guide”
`
`(claims 1, 10)
`“when the image of the
`check is determined to
`align with the alignment
`guide”
`
`(claims 1, 10)
`
`“when at least [one edge
`/ a first edge and a second
`edge / a first edge, second
`edge, and a third edge] of
`the image of the check
`aligns”
`
`(claims 7-9, 15-17)
`
`EX1023 [Joint Claim Construction], 5-6, 12-13, 29-31. EX1002, ¶46.
`
`22
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`

`
`
`
`Petition for Inter Partes Review
`
`of U.S. Patent No. 8,699,779
`
`The undisputed claim terms are given their plain and customary meaning as
`
`understood by a POSITA, in accordance with Phillips v. AWH Corp., 415 F.3d 1303
`
`(Fed. Cir. 2005) (en banc). EX1002, ¶47.
`
`IX. OVERVIEW OF PRIOR ART
`A. Acharya
`Like the ’779 patent, Acharya is generally directed to “a deposit transaction”
`
`of “a financial instrument, such as a paper check” initiated by “a banking customer
`
`located at a remote location” using a “Remote Customer Terminal (RCT)”
`
`“connected to a bank system.” EX1003, Abstract. Using the Remote Customer
`
`Terminal, “the banking customer captures the digital image of the financial
`
`instrument by … the digital camera … .” Id., 3:11-13. The “image and/or other data
`
`of the financial instrument are transmitted from the RCT to the Bank of First
`
`Deposit (BOFD) where the data may be processed.” Id., Abstract. In addition, “the
`
`BOFD system 110 may be connected to one or more check clearing systems 130
`
`via a communication link 140. The check clearing systems may comprise for-profit
`
`clearing houses 131, Federal Reserve banks 132, and local paying banks 134.” Id.,
`
`6:32-36.
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`23
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`
`
`Acharya FIG. 1
`
`
`
`
`Petition for Inter Partes Review
`of U.S. Patent No. 8,699,779
`’571 Patent, FIG. 1
`
`Id., FIG. 1 and EX1001, FIG. 2. EX1002, ¶50.
`
`Like the ’779 patent, Acharya’s Remote Customer Terminal (RCT) may be a
`
`“cell phone, PDA or any other computer, apparatus, wireless handheld device”
`
`(EX1003, 4:18-20) that includes “a digital camera” (id., 4:37). Moreover, like the
`
`’779 patent, Acharya’s digital images are processed to extract data such as “MICR
`
`line, RTN [Routing Transit Number], account number, amount of financial
`
`instrument,