Declaration of Dr. Todd Mowry
` In Support of Petition for Inter Partes Review
`of U.S. Patent No. 10,013,605
`
`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 IPR2021-01399
`U.S. Patent No. 10,013,605
`
`DECLARATION OF DR. TODD MOWRY IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`
`PNC 1002
`
`

`

`Declaration of Dr. Todd Mowry
` In Support of Petition for Inter Partes Review
`of U.S. Patent No. 10,013,605
`
`TABLE OF CONTENTS
`
`Page
`
`ii
`
`VI.
`VII.
`VIII.
`
`TABLE OF CONTENTS ............................................................................... ii
`I.
`BACKGROUND.............................................................................. 2
`LEGAL PRINCIPLES ..................................................................... 8
`II.
`SUMMARY OF OPINION ........................................................... 11
`III.
`DESCRIPTION OF THE RELEVANT FIELD ............................ 13
`IV.
`DISCUSSION OF THE ’605 PATENT ........................................ 13
`V.
`Overview .................................................................................. 13
`Prosecution History ................................................................. 15
`LEVEL OF ORDINARY SKILL IN THE ART ........................... 15
`CLAIM CONSTRUCTION ........................................................... 16
`A PERSON OF ORDINARY SKILL IN THE ART WOULD NOT
`HAVE UNDERSTOOD THE INVENTOR TO BE IN
`POSSESSION OF THE CLAIMED INVENTION BEFORE JULY
`28, 2017 .......................................................................................... 18
`The ’974 Application Does Not Describe Using an Integrated
`Digital Camera to Capture An Image of a Check.................... 20
`1. The ’974 Application Does Not Describe Using an
`Integrated Digital Camera to Capture an Image of a Check
` ........................................................................................... 20
`2. The ’974 Application Does Not Describe Examples That
`Include Using an Integrated Digital Camera to Capture an
`Image of a Check ............................................................... 28
`
`A.
`B.
`
`A.
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`B. 
`
`C. 
`
`A. 
`B. 
`C. 
`D. 
`
`A. 
`
`IX. 
`
`X. 
`
`
`
`
`2. 
`
`3. 
`
`The ’974 Application Does Not Describe of the Claimed
`Sequences of Steps .................................................................. 31 
`1. 
`“initiating the [mobile check] deposit after [performing]
`the confirming [step]” ....................................................... 31 
`“confirming that the [mobile check] deposit can go
`forward after performing an optical character recognition
`on the check” ..................................................................... 32 
`“the instructing [step] is performed after the receiving
`[step]” ................................................................................ 33 
`The ’974 Application Does Not Describe the Claimed
`Electronic Format Modifications ............................................. 34 
`OVERVIEW OF PRIOR ART REFERENCES ............................ 34 
`Oakes-I (Ex. 1037) ................................................................... 34 
`Oakes-II (Ex. 1038) ................................................................. 35 
`Medina (Ex. 1058) ................................................................... 37 
`Roach (Ex. 1040) ..................................................................... 40 
`SPECIFIC GROUNDS FOR UNPATENTABILITY ................... 43 
`Ground I: Claims 12-23 and 26-29 Are Obvious Over Oakes-I
`and Oakes-II ............................................................................. 43 
`1. 
`Independent Claim 12 ....................................................... 43 
`2.  Dependent Claim 13 .......................................................... 76 
`3.  Dependent Claim 14 .......................................................... 76 
`4.  Dependent Claim 15 .......................................................... 77 
`5.  Dependent Claim 16 .......................................................... 79 
`6.  Dependent Claim 17 .......................................................... 80 
`iii
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`7.  Dependent Claim 18 .......................................................... 80 
`8.  Dependent Claim 19 .......................................................... 81 
`9.  Dependent Claim 20 .......................................................... 81 
`10.  Dependent Claim 21 .......................................................... 82 
`11.  Dependent Claim 22 .......................................................... 84 
`12.  Dependent Claim 23 .......................................................... 84 
`13.  Dependent Claim 26 .......................................................... 85 
`14.  Dependent Claim 27 .......................................................... 86 
`15.  Dependent Claim 28 .......................................................... 86 
`16.  Dependent Claim 29 .......................................................... 87 
`Ground II: Claims 12-23 and 26-29 Are Obvious Over Oakes-
`I, Oakes-II, and Medina ........................................................... 87 
`1.  Claim 12 ............................................................................ 87 
`2.  Claims 13-23 and 26-29 .................................................... 91 
`Ground III: Claims 1-11, 24, and 25 are Obvious over Oakes-
`I/II Combined With Roach or Oakes-I/II Combined With
`Roach and Medina ................................................................... 91 
`1. 
`Independent Claim 1 ......................................................... 92 
`2.  Dependent Claim 2 ..........................................................113 
`3.  Dependent Claim 3 ..........................................................113 
`4.  Dependent Claim 4 ..........................................................114 
`5.  Dependent Claim 5 ..........................................................114 
`6.  Dependent Claim 6 ..........................................................114 
`iv
`
`B. 
`
`C. 
`
`
`
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`7.  Dependent Claim 7 ..........................................................115 
`8.  Dependent Claim 8 ..........................................................115 
`9.  Dependent Claim 9 ..........................................................116 
`10.  Dependent Claim 10 ........................................................116 
`11.  Dependent Claim 11 ........................................................117 
`12.  Dependent Claim 24 ........................................................117 
`13.  Dependent Claim 25 ........................................................118 
`CONCLUSION ............................................................................ 118 
`AVAILABILITY FOR CROSS-EXAMINATION ..................... 118 
`RIGHT TO SUPPLEMENT ........................................................ 119 
`ACKNOWLEDGMENT .............................................................. 120 
`
`XI. 
`XII. 
`XIII. 
`XIV. 
`
`
`
`
`
`
`
`
`
`
`v
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`I, Todd Mowry, Ph.D., declare as follows:
`
`1. My name is Todd Mowry.
`
`2.
`
`I have been retained by PNC Bank, N.A. (“PNC”) to provide opinions
`
`in this proceeding related to U.S. Patent No. 10,013,605 (“’605 patent”).
`
`I. BACKGROUND
`3.
`I am a Professor in the Department of Computer Science at Carnegie
`
`Mellon University. I also have a courtesy appointment in the Department of
`
`Electrical and Computer Engineering. I have served on the faculty of Carnegie
`
`Mellon University for 24 years starting in 1997 through the present (2021).
`
`4.
`
`I also served on the faculty of the University of Toronto for four years
`
`between 1993 and 1997, in the Department of Electrical and Computer
`
`Engineering and a courtesy appointment in the Department of Computer Science.
`
`Prior to that appointment, I served as a Graduate Research Assistant in the
`
`Department of Electrical Engineering at Stanford University for four years
`
`between 1989 and 1993.
`
`5.
`
`As a faculty member, I have taught and continue to teach courses and
`
`directed research in computer systems and software, operating systems, distributed
`
`and network systems, object-oriented programming and design, and mobile
`
`computing.
`
`
`
`
`2
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`6.
`
`I received a B.S. degree in Electrical Engineering with Highest
`
`Distinction from the University of Virginia in May 1988. I received an M.S. in
`
`Electrical Engineering from Stanford University in June 1989, and a Ph.D. in
`
`Electrical Engineering from Stanford University in March 1994.
`
`7.
`
`I have worked in the computer industry in various capacities. I was a
`
`part-time Computer Architect and then Computer Architecture Consultant at
`
`Silicon Graphics, Inc., in Mountain View, California (formerly MIPS Computer
`
`Systems in Sunnyvale, California) from 1989 to 1993 and 1993 to 1996,
`
`respectively. I was a Visiting Scientist at IBM in Toronto from 1996 to 2004.
`
`During that same time period (1996 to 2004), I was also a Member of the
`
`Technical Advisory Board of SandCraft, Inc. in Santa Clara, California. I was the
`
`Director of the Intel Research Pittsburgh Lab at Intel Corporation in Pittsburgh,
`
`Pennsylvania from 2004 to 2007.
`
`8. My interest in image processing began when I took a graduate course
`
`on Computer Vision (in roughly 1990-1991) while I was a PhD student at Stanford
`
`University. The course curriculum covered techniques including, for example,
`
`image capture using image capture devices such as a digital camera, and optical
`
`character recognition using, for example, a server and/or general purpose
`
`computer.
`
`
`
`
`3
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`9. While I was the Director of the Intel Research Pittsburgh Lab from
`
`2004 through 2007, I provided technical guidance to research projects in the field
`
`of image processing, including the Diamond project. This project was focused on
`
`the development of a computing system capable of efficiently searching visual
`
`content of images to identify images or portions of images with similar visual
`
`content. For example, a user transmits an image from a personal device (e.g., a
`
`mobile device) to a server, and the server analyzes the input image and compares it
`
`against a database to identify images with similar visual content in the database.
`
`The server identifies similar images based on distinctive visual features of an input
`
`image. These distinctive visual features are identified by, for example, operating
`
`image filters, such as edge filters. See, for example, “Diamond: A storage
`
`architecture for early discard in interactive search (2004),” available at
`
`http://citeseerx.ist.psu.edu/viewdoc/citations;jsessionid=29C3B2D7BE092E4AFF5
`
`D709DFBD157EE?doi=10.1.1.66.9899, and Gibbons et al., “Just-In-Time
`
`Indexing for Interactive Data Exploration,” School of Computer Science, Carnegie
`
`Mellon University (April, 2007), available at
`
`http://citeseerx.ist.psu.edu/viewdoc/download?doi=10.1.1.92.7204&rep=rep1&typ
`
`e=pdf.
`
`
`
`
`4
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`I was one of the Carnegie Mellon University faculty who conducted
`
`10.
`
`research on cloud-based image processing in collaboration with Intel researchers as
`
`part of the Intel Science and Technology Center for Visual Cloud Systems, from
`
`2016-2020.
`
`11.
`
`I am a member of the Catalyst research group at Carnegie Mellon
`
`University, which combines research in machine learning and systems to accelerate
`
`AI applications that perform image processing or natural language processing.
`
`One of our recent papers on this topic appeared at the Fourth Conference on
`
`Machine Learning and Systems in 2021.
`
`12.
`
`In my undergraduate course on parallel computing (15-418), I give
`
`lectures to the students on how parallelism can be used to accelerate image
`
`processing, and I regularly supervise course projects on the topic of image
`
`processing.
`
`13.
`
`I have authored 19 journal articles and 60 conference papers. I am
`
`also an inventor on 5 patents.
`
`14.
`
`I am the recipient of several honors and awards: the Arthur Samuel
`
`Thesis Award (awarded by the Stanford Computer Science department to the top
`
`two Ph.D. theses in a given year), several IBM Faculty Development Awards
`
`(1996, 1997, 1998, 2000, 2001, 2002, and 2003), several Best Paper Awards (the
`5
`
`
`
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`Second Symposium on Operating Systems Design and Implementation in 1996;
`
`the 20th International Conference on Data Engineering (ICDE) in 2004), the
`
`Alfred P. Sloan Research Fellowship (awarded to researchers in recognition of
`
`distinguished performance and a unique potential to make substantial contributions
`
`to their field), the Most Thought-Provoking Idea Award in 2004 (awarded by the
`
`Architectural Support for Programming Languages and Operating Systems
`
`(ASPLOS)), the TR100 Award in 1999 (awarded by MIT’s Technology Review
`
`magazine to the top 100 most promising young innovators in science and
`
`technology), and I became an ACM Fellow in 2016.
`
`15.
`
`I am a member of the Institute of Electrical and Electronics Engineers
`
`(IEEE) and the Association of Computing Machinery (ACM). I was the Editor-in-
`
`Chief of ACM Transactions on Computer Systems, the premier journal for
`
`computer systems research, from 2013-2018. I was an Associate Editor for the
`
`journal prior to that, since 2001. I was the Program Chair of the International
`
`Conference on Architectural Support for Programming Languages and Operating
`
`Systems (ASPLOS) in 2010. I was the Co-Program Chair of the International
`
`Conference on Parallel Architectures and Compilation Techniques (PACT) in
`
`2001. I have been on the programming committee in various years for ASPLOS,
`
`the International Symposium on Computer Architecture (ISCA), the International
`6
`
`
`
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`Symposium on Microarchitectures, and the Workshop on Architectural and System
`
`Support for Improving Format.
`
`16. Overall, I have over 25 years of experience in the field of computer
`
`science, including relevant experience with image processing or scanning
`
`technology involving transferring and processing of image data to and at a server.
`
`A copy of my curriculum vitae, including references to the publications I authored,
`
`is attached to my Report as Appendix A.
`
`17.
`
`In light of the foregoing, I consider myself to be an expert in the field
`
`of computer science, and believe that I am qualified to provide an opinion as to
`
`what a person of ordinary skill in the art would have understood, known, or
`
`concluded regarding the subject matter of the ’605 patent at the time of its alleged
`
`invention.
`
`18.
`
`I am being compensated at my normal consulting rate of $650 an hour
`
`for my work. My compensation is not dependent on the outcome of this IPR
`
`proceeding or related litigation, nor is my compensation tied to any positions I take
`
`in this Declaration, and therefore it does not affect the substance of my statements
`
`in this Declaration.
`
`19.
`
`I have no financial interest in Petitioner. I have no financial interest in
`
`the ’605 patent.
`
`
`
`
`7
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`II. LEGAL PRINCIPLES
`20.
`I am not an attorney. For purposes of this declaration, I have been
`
`informed about and understand certain aspects of the law that are relevant to my
`
`analysis and opinions.
`
`21.
`
`I have been informed and understand that a patent claim can be
`
`considered to have been obvious to a person of ordinary skill in the art at the time
`
`of the alleged invention. This means that, even if all the requirements of a claim
`
`are not found in a single prior art reference, the claim is not patentable if the
`
`differences between the subject matter in the prior art and the subject matter in the
`
`claim would have been obvious to a person of ordinary skill in the art at the time of
`
`the alleged invention.
`
`22.
`
`I have been informed and understand that a determination of whether
`
`a claim would have been obvious should be based upon several factors, including,
`
`among others:
`
` the level of ordinary skill in the art at the time the application was
`
`filed;
`
` the scope and content of the prior art; and
`
` what differences, if any, existed between the claimed invention and
`
`the prior art.
`
`8
`
`
`
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`23.
`
`I have been informed and understand that the teachings of two or
`
`more references may be combined if such a combination would have been obvious
`
`to one having ordinary skill in the art. In determining whether a combination
`
`based on multiple references would have been obvious, it is appropriate to
`
`consider, among other factors:
`
` whether the teachings of the prior art references disclose known
`
`concepts combined in familiar ways, and when combined, would yield
`
`predictable results;
`
` whether a person of ordinary skill in the art could implement a
`
`predictable variation, and would see the benefit of doing so;
`
` whether the claimed elements represent one of a limited number of
`
`known design choices, and would have a reasonable expectation of
`
`success by those skilled in the art;
`
` whether a person of ordinary skill would have recognized a reason to
`
`combine known elements in the manner described in the claim;
`
` whether there is some teaching or suggestion in the prior art to make
`
`the modification or combination of elements claimed in the patent;
`
`and
`
`
`
`
`9
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
` whether the claimed invention applies a known technique that had
`
`been used to improve a similar device or method in a similar way.
`
`24.
`
`I have been informed and understand that one of ordinary skill in the
`
`art has ordinary creativity, and is not an automaton.
`
`25.
`
`I have been informed and understand that in considering obviousness,
`
`it is important not to determine obviousness using the benefit of hindsight derived
`
`from the patent being considered.
`
`26.
`
`I have been informed and understand that for a patent’s claims to
`
`receive the benefit of priority of an earlier-filed application, every application in
`
`the priority chain leading to the application in question must support every
`
`limitation of the claim. This means every parent application must describe every
`
`limitation of every claim and that it is not enough for the parent application to
`
`simply render obvious the claims of the child patent.
`
`27.
`
`I have been informed and understand that whether an application
`
`describes a patent’s claim limitations is known as the “written description
`
`requirement.” I have been informed and understand that to satisfy the written
`
`description requirement, the patent’s specification must describe the claimed
`
`invention in sufficient detail that a person of ordinary skill in the art could
`
`
`
`
`10
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`reasonably conclude that the inventor had possession of the claimed invention at
`
`the time of filing.
`
`28.
`
`I have been informed and understand that if a child patent includes
`
`claims that are greater in scope than the subject matter that the inventor chose to
`
`disclose to the public in the written description of the parent application, the parent
`
`application does not provide written description support for the claims of the child
`
`patent.
`
`III. SUMMARY OF OPINION
`29.
`In my opinion, claims 1-29 of U.S. Patent No. 10,013,605 are not
`
`patentable.
`
`30.
`
`I have been informed and understand that the application for the ’605
`
`patent was filed on July 28, 2017, and claims priority to U.S. Patent Application
`
`No. 11/590,974 (“’974 Application”) (Ex. 1042), filed on October 31, 2006. As I
`
`explain below in Section VIII, however, my view is that the ’605 patent is not
`
`entitled to claim priority to the ’974 Application and indeed is not entitled to a
`
`priority date that is earlier than the application date for the ’605 patent, July 28,
`
`2017.
`
`31. Therefore, in reaching my opinion that , claims 1-29 of U.S. Patent
`
`No. 10,013,605 are not patentable, I have considered, among other things, prior art
`
`
`
`
`11
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`with publication dates after October 31, 2006 and before July 28, 2017, including
`
`the following specific references:
`
` U.S. Patent No. 8,708,227 to Oakes, et al. (Ex. 1037, “Oakes-I”),
`
`published April 29, 2014;
`
` U.S. Patent No. 7,873,200 to Oakes, et al. (Ex. 1038, “Oakes-II”),
`
`published January 18, 2011;
`
` U.S. Patent No. 9,129,340 to Medina et al. (Ex. 1058, “Medina”),
`
`published September 8, 2015; and
`
` U.S. Publication No. 2013/0155474 to Roach, et al. (Ex. 1040, “Roach”),
`
`published June 20, 2013.
`
`32. The table below lists the combination of references based on which a
`
`person of ordinary skill in the art would have found the challenged claims obvious.
`
`Ground
`
`References
`
`Basis
`
`Claims Challenged
`
`§ 103
`§ 103
`
`12-23 and 26-29
`12-23 and 26-29
`
`§ 103
`
`1-11, 24, and 25
`
`Oakes-I and Oakes-II
`Oakes-I, Oakes-II, and
`Medina
`Oakes-I, Oakes-II, and
`Roach, or
`
`Oakes-I, Oakes-II, Roach,
`and Medina
`
`12
`
`I
`II
`
`III
`
`
`
`
`
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`IV. DESCRIPTION OF THE RELEVANT FIELD
`33.
`I have reviewed and understand the specification, claims, and file
`
`history of the ’605 patent. I have also reviewed the exhibits listed in the Table of
`
`Exhibits attached hereto as Appendix B. Based on my review of these materials, I
`
`believe that the relevant field for purposes of my analysis is computer science,
`
`including the areas of computer engineering, or electrical engineering, including
`
`relevant experience with image processing or scanning technology involving
`
`transferring and processing of image data to and at a server. As described above, I
`
`have extensive experience in the relevant technology.
`
`V. DISCUSSION OF THE ’605 PATENT
`A. Overview
`34. The ’605 patent is about a remote check capture/deposit system that
`
`includes (1) an image capture device; (2) a general-purpose computer; and (3) a
`
`server associated with a financial institution that receives information from the
`
`general-purpose computer via a publicly accessible network. Ex. 1001, 3:59-4:3.
`
`According to ’605 patent, the general-purpose computer may be a desktop
`
`computer or a laptop (Ex. 1001, 3:65-66) or a PDA (Ex. 1001, 8:32-34) and the
`
`image capture device may be a scanner or a digital camera (Ex. 1001, 6:50-52).
`
`
`
`
`13
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`Ex. 1001, Figure 1.
`
`35. A software component may be included in the general-purpose
`
`computer for capturing an image of a check using the image capture device and
`
`transmitting the captured information to the server. Ex. 1001, Figure 6, 13:48-57,
`
`
`
`14:11-16.
`
`
`
`
`14
`
`

`

`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`36. Once the bank receives the check images at a server, the images are
`
`processed using routine check and image processing techniques and initiates
`
`deposit of the check. Ex. 1001, 11:46-57, 12:51-62.
`
`B.
`37.
`
`Prosecution History
`I have read the prosecution history of U.S. Patent Application No.
`
`15/663,284 (the “’284 Application”), filed July 28, 2017, that resulted in the ’605
`
`patent. Ex. 1015. I have been informed and understand that the ’284 Application
`
`did not include a priority claim but, in order to overcome prior art rejections,
`
`applicant requested a corrected filing receipt to obviate these rejections by adding a
`
`priority claim to Application No. 11/590,974, now U.S. Patent No. 8,708,227,
`
`which was filed October 31, 2006. Ex. 1015, 47, 76-98, 105, 106, 117-127, 135-
`
`148.
`
`38.
`
`I have been informed and understand that the examiner acceded to the
`
`requested priority claim without comment on whether the claims were actually
`
`entitled to the benefit of the earlier-filed applications withdrew the prior art
`
`rejections. Ex. 1015, 197-207.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`39.
`I have been informed and understand that a person of ordinary skill in
`
`the art means a hypothetical person to whom an expert in the field could assign a
`
`
`
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`15
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`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
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`routine task with reasonable confidence that the person could successfully carry it
`
`out. I have also been informed and understand that prior art references evidence
`
`the level of ordinary skill in the art. A person of ordinary skill in the relevant field
`
`or art at relevant times (2006-2017) of the ’605 patent would have had a
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`Bachelor’s degree in computer science, computer engineering, electrical
`
`engineering, or equivalent field, and two years of experience in software
`
`development and programming in the area of image capturing/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.
`
`VII. CLAIM CONSTRUCTION
`40.
`I have been informed and understand that in an inter partes review,
`
`claims are construed using the standard of claim construction a District Court
`
`would use to construe the claim in a civil litigation action. That is, I have been
`
`informed and understand that the ordinary and customary meaning, as understood
`
`by a person of ordinary skill in the art at the time of the alleged invention in light
`
`of the patent’s prosecution history and specification, must be given to the claim
`
`terms.
`
`
`
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`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`41.
`
`I have been informed and understand that in the co-pending district
`
`court litigation, the Patent Owner and agree on the construction of some claim
`
`terms and disagree on other claim terms. For purposes of my analysis, I’ve relied
`
`upon Patent Owner’s district court construction for the terms “handheld mobile
`
`device,” “portable device,” and “digital camera,” provided below. These terms are
`
`below:
`
`Term
`“handheld mobile
`device”
`
`“portable device”
`
`“digital camera”
`
`Ex. 1059, 17.
`
`Patent Owner’s Proposed Constructions
`“handheld computing device”
`
`Ex. 1001, 3:21-41, 3:59-4:9, 5:37-58, 6:8-56, 7:12-
`30, 7:51-9:2, 13:20-32, 14:64-15:6, Figures 1, 3-4.
`“computing device capable of being easily moved
`manually”
`
`Ex. 1001, 3:21-41, 3:59-4:9, 5:37-58, 6:8-56, 7:12-
`30, 7:51-9:2, 13:20-32, 14:64-15:6, Figures 1, 3-4.
`No further construction necessary.
`
`Ex. 1001, 3:21-41, 3:59-4:9, 5:37-58, 6:8-56, 7:12-
`30, 7:51-9:2, 13:20-32, 14:64-15:6, Figures 1, 3-4.
`
`42.
`
`I have been informed and understand that in the pending district court
`
`litigation, the Patent Owner asserts claims 1 and 12 are broad enough to cover a
`
`mobile device having a digital camera integrated with the mobile device. I have
`
`been informed and understand the Patent Owner alleges that “the camera in the
`
`
`
`
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`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`personal or mobile device” shows the claimed “digital camera” and a mobile phone
`
`operating a downloaded banking app shows the claimed “portable or mobile device
`
`that includes a downloaded software or app.” Ex. 1043 (Complaint), ¶¶ 47, 49, 51.
`
`I have also been informed and understand that Patent Owner has also alleged, in a
`
`prior CBM proceeding, that the ’605 patent “claims the genus of mobile/portable
`
`general purpose computers that can communicate over a wireless network and that
`
`have an integrated camera.” Wells Fargo v. USAA, CBM2019-00029, Paper 10,
`
`37. For purposes of my analysis, I’ve relied upon Patent Owner’s interpretation
`
`and application of the terms “handheld mobile device,” “portable device,” and
`
`“digital camera.”
`
`VIII. A PERSON OF ORDINARY SKILL IN THE ART WOULD NOT
`HAVE UNDERSTOOD THE INVENTOR TO BE IN POSSESSION
`OF THE CLAIMED INVENTION BEFORE JULY 28, 2017
`43.
`I have been informed and understand that the ’605 patent claims
`
`priority to the ’974 Application. In my opinion, the ’974 Application does not
`
`provide written description support for the ’605 patent’s claims. and to U.S. Patent
`
`Application No. 14/225,090 (Ex. 1060). The ’605 patent also claims priority to
`
`U.S. Patent Application No. 14/225,090 (Ex. 1060). U.S. Patent Application No.
`
`14/225,090 shares the same written disclosure as the ’974 Application and
`
`therefore it also fails to provide written description support for the ’605 patent.
`
`
`
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`Declaration of Dr. Todd Mowry
`
`
` In Support of Petition for Inter Partes Review
`
`
`of U.S. Patent No. 10,013,605
`
`
`44. First, a system that includes a mobile/portable device with an
`
`integrated digital camera that is used to capture check images is not disclosed in
`
`the ’974 Application. I note that this feature, under Patent Owner’s construction, is
`
`covered by the challenged claims. See my discussion in Section VII.A (Claim
`
`Construction).
`
`45. Second, the claimed sequencing of several steps are not disclosed in
`
`the ’974 Application, such as:
`
` “initiating the [mobile check] deposit after [performing] the
`
`confirming [step]” (independent claims 1 and 12); and
`
` “confirming that the [mobile check] deposit can go forward after
`
`performing an optical character recognition on the check”
`
`(independent claims 1 and 12);
`
` “the