Case 2:20-cv-00319-JRG Document 170 Filed 08/16/21 Page 1 of 5 PageID #: 7058
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`UNITED SERVICES AUTOMOBILE
`ASSOCIATION,
`a Texas reciprocal inter-insurance exchange,
`
`Plaintiff,
`
`
`
`v.
`
`PNC BANK, N.A.,
`a national banking association,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
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`)
`)
`
`Civil Action No. 2:20-CV-0319-JRG (Lead)
`Civil Action No. 2:21-CV-0110-JRG
`
`JURY TRIAL DEMANDED
`
`P.R. 4-3 JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`Pursuant to Local Patent Rule 4-3, Plaintiff United Services Automobile Association
`
`(“USAA”) and Defendant PNC Bank, N.A. (“PNC”) submit this Joint Claim Construction and
`
`Prehearing Statement to the Court, stating as follows:
`
`I.
`
`P.R. 4-3(a)(1)
`
`Exhibit A identifies the claim terms and accompanying constructions on which USAA
`
`and PNC have agreed.
`
`II.
`
`P.R. 4-3(a)(2)
`
`Exhibit B lists the parties’ proposed constructions for terms in dispute for U.S. Patent
`
`Nos. 10,482,432 (the “’432 patent”), 10,621,559 (the “’559 patent”), 8,699,779 (the “’779
`
`patent”), 8,977,571 (the “’571 patent”), 10,013,681 (the “’681 patent”), 10,013,605 (the “’605
`
`patent”), 7,949,788 (the “’788 patent”), 8,868,786 (the “’786 patent”), 8,682,754 (the “’754
`
`PNC 1109
`
`Page 1 of 117
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`UNITED SERVICES AUTOMOBILE
`ASSOCIATION,
`a Texas reciprocal inter-insurance exchange,
`
`Plaintiff,
`
`
`
`v.
`
`PNC BANK, N.A.,
`a national banking association,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No. 2:20-CV-0319-JRG (Lead)
`Civil Action No. 2:21-CV-0110-JRG
`
`JURY TRIAL DEMANDED
`
`P.R. 4-3 JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`Pursuant to Local Patent Rule 4-3, Plaintiff United Services Automobile Association
`
`(“USAA”) and Defendant PNC Bank, N.A. (“PNC”) submit this Joint Claim Construction and
`
`Prehearing Statement to the Court, stating as follows:
`
`I.
`
`P.R. 4-3(a)(1)
`
`Exhibit A identifies the claim terms and accompanying constructions on which USAA
`
`and PNC have agreed.
`
`II.
`
`P.R. 4-3(a)(2)
`
`Exhibit B lists the parties’ proposed constructions for terms in dispute for U.S. Patent
`
`Nos. 10,482,432 (the “’432 patent”), 10,621,559 (the “’559 patent”), 8,699,779 (the “’779
`
`patent”), 8,977,571 (the “’571 patent”), 10,013,681 (the “’681 patent”), 10,013,605 (the “’605
`
`patent”), 7,949,788 (the “’788 patent”), 8,868,786 (the “’786 patent”), 8,682,754 (the “’754
`
`PNC 1109
`
`Page 1 of 117
`
`
`
`Case 2:20-cv-00319-JRG Document 170 Filed 08/16/21 Page 2 of 5 PageID #: 7059
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`patent”), and 8,380,623 (the “’623 patent”). Exhibit C contains USAA’s identification of
`
`intrinsic and extrinsic evidence on which it intends to rely. Exhibit D contains PNC’s
`
`identification of intrinsic and extrinsic evidence on which it intends to rely.
`
`III.
`
`P.R. 4-3(a)(3)
`
`The parties anticipate needing 3 hours for the claim construction hearing (90 minutes per
`
`side).
`
`IV.
`
`P.R. 4-3(a)(4)
`
`Neither party intends to present live witness testimony at the claim construction hearing.
`
`V.
`
`P.R. 4-3(a)(5)
`
`The parties do not propose that any other issues be addressed at a prehearing conference
`
`prior to the claim construction hearing.
`
`- 2 -
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`Page 2 of 117
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`
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`Case 2:20-cv-00319-JRG Document 170 Filed 08/16/21 Page 3 of 5 PageID #: 7060
`
`Dated: August 16, 2021
`
`Respectfully submitted,
`
`
`
`/s/ Robert Christopher Bunt
`
`IRELL & MANELLA LLP
`Jason G. Sheasby (CA #205455) (Pro Hac Vice)
`Lead Attorney
`Lisa S. Glasser (CA #223406) (Pro Hac Vice)
`Rebecca L. Carson (CA #254105) (Pro Hac Vice)
`Stephen M. Payne (CA#310567) (Pro Hac Vice)
`Ingrid M. H. Petersen (CA #313927) (Pro Hac
`Vice)
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`Tel.: (310) 203-7096
`Fax: (310) 203-7199
`jsheasby@irell.com
`lglasser@irell.com
`rcarson@irell.com
`spayne@irell.com
`ipetersen@irell.com
`
`PARKER, BUNT & AINSWORTH, P.C.
`Robert Christopher Bunt (TX #00787165)
`100 E. Ferguson Suite 418
`Tyler, Texas 75702
`Tel.: (903) 531-3535
`rcbunt@pbatyler.com
`
`Attorneys for Plaintiff United Services
`Automobile Association (USAA)
`
`
`
`- 3 -
`
`Page 3 of 117
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`
`
`Case 2:20-cv-00319-JRG Document 170 Filed 08/16/21 Page 4 of 5 PageID #: 7061
`
`/s/ Eric P. Tuttle (with permission)
`Gregory P. Stone (pro hac vice)
`Eric P. Tuttle (pro hac vice)
`Adam R. Lawton (pro hac vice)
`Vincent Y. Ling (pro hac vice)
`MUNGER, TOLLES & OLSON LLP
`350 S. Grand Ave., 50th Floor
`Los Angeles, CA 90071
`(213) 683-9100
`gregory.stone@mto.com
`eric.tuttle@mto.com
`adam.lawton@mto.com
`vincent.ling@mto.com
`
`Blanca F. Young (pro hac vice)
`MUNGER, TOLLES & OLSON LLP
`560 Mission Street, 27th Floor
`San Francisco, California 94105-2907
`(415) 512-4000
`blanca.young@mto.com
`
`Melissa R. Smith
`Texas State Bar No. 24001351
`GILLIAM SMITH LLP
`303 S. Washington Ave.
`Marshall, TX 75670
`(903) 934-8450
`melissa@gillamsmithlaw.com
`
`Attorneys for Defendant PNC Bank, N.A.
`
`- 4 -
`
`Page 4 of 117
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`
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`Case 2:20-cv-00319-JRG Document 170 Filed 08/16/21 Page 5 of 5 PageID #: 7062
`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing document was filed electronically on August 16, 2021
`
`pursuant to Local Rule CV-5(a) and has been served on all counsel who have consented to
`
`electronic service.
`
`Dated: August 16, 2021
`
`/s/ Robert Christopher Bunt
`Robert Christopher Bunt
`
`- 5 -
`
`Page 5 of 117
`
`
`
`1
`
`an account”
`depository in a form sufficient to allow money to be credited to
`“a [remote] transaction involving provision of a check to a
`
`‘559 patent, claims 1, 7, 8, 10, 11, 16, 17
`
`check
`[remote] check deposit / [remote] deposit / [remote] deposit of a
`‘605 patent, claims 1, 12_
`
`credited to an account”
`device] to a depository in a form sufficient to allow money to be
`“a transaction involving provision of a check [using a mobile
`
`about the suitability of the image to represent the check”
`“one or more features of a check image that provide information
`
`“general purpose computer”
`
`‘681 patent, claims 1, 12, 30
`
`‘432 patent, claims 1, 16, 17
`
`deposit / deposit a check / [mobile] check deposit
`‘571 patent, claims 1-4, 6, 9, 10, 12, 13
`
`monitoring criterion
`‘559 patent, claims 1-10
`
`computing device
`
`Agreed Construction
`
`Term (Patent/Claim)
`
`USAA and PNC have agreed to the following constructions:
`
`Agreed Constructions
`
`Exhibit A
`
`Case 2:20-cv-00319-JRG Document 170-1 Filed 08/16/21 Page 1 of 2 PageID #: 7063
`
`Page 6 of 117
`
`
`
`2
`
`Preamble is limiting.
`
`money to be credited to an account”
`“providing a check to a depository in a form sufficient to allow
`
`If preambles are limiting:
`
`‘681 patent, claim 30
`
`a non-transitory computer readable medium storing an app
`‘779 patent, claims 1, 10
`
`‘571 patent, claims 1, 9
`
`depositing a check
`
`Agreed Construction
`
`Term (Patent/Claim)
`
`Case 2:20-cv-00319-JRG Document 170-1 Filed 08/16/21 Page 2 of 2 PageID #: 7064
`
`Page 7 of 117
`
`
`
`Exhibit B10: ‘623 Patent
`Exhibit B9: ‘754 Patent
`Exhibit B8: ‘786 Patent
`Exhibit B7: ‘788 Patent
`Exhibit B6: ‘605 Patent
`Exhibit B5: ‘681 Patent
`Exhibit B4: ’779 Patent
`Exhibit B3: ’571 Patent
`Exhibit B2: ’559 Patent
`Exhibit B1: ’432 Patent
`
`Proposed Claim Constructions for Disputed Terms
`
`Exhibit B
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 1 of 15 PageID #: 7065
`
`Page 8 of 117
`
`
`
`1
`
`Term lacks patentable weight.
`
`patentable weight.
`No further construction necessary. Term has
`
`“validating information in the check image”
`
`No further construction necessary.
`
`Terms lack patentable weight.
`mobile device”
`“digital camera that is separate from the
`digital camera”
`moved manually that is separate from the
`“computing device capable of being easily
`
`patentable weight.
`No further construction necessary. Terms have
`
`No further construction necessary.
`
`digital camera
`
`“handheld computing device”
`
`mobile device
`
`bank computer
`
`checking for errors
`illustration
`lighting / displaying a graphical
`/ assisting the customer with
`instructing / giving an instruction
`
`PNC’s Proposed Construction
`
`USAA’s Proposed Construction
`
`Term (Patent/Claim)
`
`Exhibit B1: Proposed Constructions for the ’432 Patent
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 2 of 15 PageID #: 7066
`
`Page 9 of 117
`
`
`
`2
`
`Term lacks patentable weight.
`image capture device”
`moved manually associated with a separate
`“computing device capable of being easily
`
`first processor”
`“processor different from the
`
`patentable weight.
`No further construction necessary. Term has
`
`instructions
`control[ling] display of
`
`image capture device”
`“handheld computing device associated with an
`
`image capture device
`mobile device associated with an
`
`No further construction necessary.
`
`second processing circuitry
`
`“first processor”
`
`No further construction necessary.
`
`first processing circuitry
`
`place of the original check”
`original check that can be used by a bank in
`“suitable for creating a paper copy of the
`
`legal requirements”
`credited to an account in compliance with all
`“in a form sufficient to allow money to be
`
`limiting; otherwise not limiting.
`The references to “computing device” are
`
`Preambles are limiting.
`
`check
`suitable for creating a substitute
`
`method comprising
`remote deposit of a check, the
`computing device to process a
`method for controlling a
`computing device comprising / a
`a remote deposit of a check, the
`a computing device for processing
`
`PNC’s Proposed Construction
`
`USAA’s Proposed Construction
`
`Term (Patent/Claim)
`
`Exhibit B2: Proposed Constructions for the ’559 Patent
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 3 of 15 PageID #: 7067
`
`Page 10 of 117
`
`
`
`No further construction necessary.
`
`visible through the camera”
`field of view: “the part of the world that is
`
`monitoring criterion”
`check [in the field of view] passes the
`“at or after the moment the image of the
`
`No further construction necessary.
`
`“handheld computing device”
`
`criterion”
`[in the field of view] passes the monitoring
`“at or after the moment the image of the check
`electronic processing and clearing”
`obtained from the image without error during
`so that check data can be electronically
`image feature is within acceptable thresholds
`“determining that the quality of the monitored
`operating system”
`moved and that is controlled by a mobile
`“computing device capable of being easily
`
`Preambles are not limiting.
`
`Preambles are limiting.
`
`PNC’s Proposed Construction
`
`USAA’s Proposed Construction
`
`Term (Patent/Claim)
`
`Exhibit B3: Proposed Constructions for the ’571 Patent
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 4 of 15 PageID #: 7068
`
`3
`
`criteria by the system”
`criteria based on analysis of the monitoring
`take in order to satisfy one or more monitoring
`“instructions to the user regarding actions to
`
`monitoring criterion
`of the check with respect to the
`feedback . . . regarding the image
`
`monitoring criterion
`the field of view] passes the
`when the image of the check [in
`
`passes the monitoring criterion
`
`mobile device
`
`for depositing a check
`computer-readable instructions]
`readable medium comprising
`[a non-transitory computer-
`
`Page 11 of 117
`
`
`
`camera as a digital image of the check”
`“record in memory the light then entering the
`
`Corresponding structure: Indefinite
`
`Function: Image monitoring and capture
`
`Subject to § 112(6).
`
`further construction necessary.
`Not subject to § 112(6) and not indefinite. No
`
`module
`image monitoring and capture
`
`PNC’s Proposed Construction
`
`USAA’s Proposed Construction
`
`Term (Patent/Claim)
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 5 of 15 PageID #: 7069
`
`4
`
`Terms lack patentable weight.
`
`patentable weight.
`No further construction necessary. Terms have
`
`No further construction necessary.
`
`instructions
`/ feedback / feedback comprises
`instructions that provide feedback
`
`[with / using] the camera
`capture the image of the check
`
`Page 12 of 117
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`
`
`5
`
`inventors regard as the invention.
`Does not claim the subject matter which the
`
`alignment guide”
`the image of the check aligns with the
`/ “the processor ascertains by calculation that
`of the check aligns with the alignment guide”
`“ascertain by calculation whether the image
`
`camera as a digital image of the check”
`“record in memory the light then entering the
`
`inventors regard as the invention.
`Does claim the subject matter which the
`
`such that the image can be electronically read”
`the check is within an acceptable threshold
`“determining that the alignment of the image of
`
`the alignment guide
`check is determined to align with
`alignment guide / the image of the
`of the check aligns with the
`determin[ing] whether the image
`
`No further construction necessary.
`
`capture the image of the check
`
`“system operated by a depository”
`
`“handheld computing device”
`
`credited to an account”
`in a form sufficient to allow money to be
`“a system for providing a check to a depository
`
`operating system”
`moved and that is controlled by a mobile
`“computing device capable of being easily
`
`Preambles are not limiting.
`
`Preambles are limiting.
`
`deposit system
`
`mobile device
`
`check
`instructions] for depositing a
`readable medium comprising
`[a non-transitory computer-
`[a system] for depositing a check /
`
`PNC’s Proposed Construction
`
`USAA’s Proposed Construction
`
`Term (Patent/Claim)
`
`Exhibit B4: Proposed Constructions for the ’779 Patent
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 6 of 15 PageID #: 7070
`
`Page 13 of 117
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`
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`6
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`third edge] of the image of the check aligns”
`second edge/ a first edge, second edge and a
`that at least [one edge / a first edge and a
`“when the processor ascertains by calculation
`
`No further construction necessary.
`
`aligns
`edge] of the image of the check
`edge, second edge, and a third
`edge and a second edge / a first
`when at least [one edge / a first
`
`alignment guide”
`that the image of the check aligns with the
`“when the processor ascertains by calculation
`
`guide”
`is determined to align with the alignment
`“at or after the moment the image of the check
`
`alignment guide
`determined to align with the
`when the image of the check is
`
`PNC’s Proposed Construction
`
`USAA’s Proposed Construction
`
`Term (Patent/Claim)
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 7 of 15 PageID #: 7071
`
`Page 14 of 117
`
`
`
`7
`
`Terms lack patentable weight.
`
`have patentable weight.
`No further construction necessary. Terms
`
`in a desktop or laptop configuration”
`computer running an Apple operating system,
`operating system or a Macintosh brand
`“a personal computer running a Windows
`
`particular purpose”
`“computer that is not specialized for a
`
`Preamble is not limiting.
`
`Preamble is limiting.
`
`Preamble is not limiting.
`
`Preamble is limiting.
`
`assisting the customer
`/ instructing a customer /
`the user/ instructing the customer
`/ giving an instruction / assisting
`displaying a graphical illustration
`
`general purpose computer
`with a digital camera
`customer’s own mobile device
`to deposit a check using the
`a system for allowing a customer
`
`character recognition (OCR)
`system for use with optical
`an image capture and processing
`
`[portable device/mobile device]”
`“digital camera that is separate from the
`
`digital camera”
`moved manually that is separate from the
`“computing device capable of being esily
`
`digital camera”
`moved manually that is separate from the
`“computing device capable of being easily
`
`No further construction necessary.
`
`digital camera
`
`“handheld computing device”
`
`mobile device
`
`moved manually”
`“computing device capable of being easily
`
`portable device
`
`PNC’s Proposed Construction
`
`USAA’s Proposed Construction
`
`Term (Patent/Claim)
`
`Exhibit B5: Proposed Constructions for the ‘681 Patent
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 8 of 15 PageID #: 7072
`
`Page 15 of 117
`
`
`
`8
`
`it be deposited”
`“submitting the check with the goal of having
`
`No further construction necessary.
`
`check] deposit
`submitting the check for [mobile
`
`Term lacks patentable weight.
`
`patentable weight.
`No further construction necessary. Term has
`
`third-party vendor computer
`
`“validating information in the check image”
`
`No further construction necessary.
`
`checking for errors
`
`PNC’s Proposed Construction
`
`USAA’s Proposed Construction
`
`Term (Patent/Claim)
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 9 of 15 PageID #: 7073
`
`Page 16 of 117
`
`
`
`Terms lack patentable weight.
`
`software for use as a personal organizer”
`“a handheld computer with specialized
`
`in a desktop or laptop configuration”
`computer running an Apple operating system,
`operating system or a Macintosh brand
`“a personal computer running a Windows
`
`particular purpose”
`“computer that is not specialized for a
`
`Preamble is not limiting.
`
`Preamble is limiting.
`
`Preamble is not limiting.
`
`Preamble is limiting.
`
`9
`
`have patentable weight.
`No further construction necessary. Terms
`
`assist[ing] the customer
`instruction / assisting the user /
`instructing / displaying an
`
`No further construction necessary.
`
`PDA
`
`general purpose computer
`device with a digital camera
`customer’s own handheld mobile
`to deposit a check using the
`a system for allowing a customer
`camera
`system for use with a digital
`an image capture and processing
`
`[portable device/handheld mobile device]”
`“digital camera that is separate from the
`
`digital camera”
`while held in the hand that is separate from the
`“computing device designed to be operated
`
`digital camera”
`moved manually that is separate from the
`“computing device capable of being easily
`
`No further construction necessary.
`
`digital camera
`
`“handheld computing device”
`
`handheld mobile device
`
`moved manually”
`“computing device capable of being easily
`
`portable device
`
`PNC’s Proposed Construction
`
`USAA’s Proposed Construction
`
`Term (Patent/Claim)
`
`Exhibit B6: Proposed Constructions for the ‘605 Patent
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 10 of 15 PageID #: 7074
`
`Page 17 of 117
`
`
`
`10
`
`the customer’s account”
`of automated events resulting in a crediting of
`“taking any action that sets in motion a chain
`
`it be deposited”
`“submitting the check with the goal of having
`
`No further construction necessary.
`
`No further construction necessary.
`
`mobile check deposit
`initiating the deposit / initiating the
`
`check] deposit
`submitting the check for [mobile
`
`Term lacks patentable weight.
`
`patentable weight.
`No further construction necessary. Term has
`
`third-party vendor computer
`
`PNC’s Proposed Construction
`
`USAA’s Proposed Construction
`
`Term (Patent/Claim)
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 11 of 15 PageID #: 7075
`
`Page 18 of 117
`
`
`
`11
`
`No further construction necessary.
`another format without altering the content”
`“converting the response from one format to
`content”
`format to another without altering the
`“module that converts a response from one
`
`No further construction necessary.
`another format without altering the content”
`“converting the message from one format to
`content”
`format to another without altering the
`“module that converts a message from one
`receive messages from the data source”
`whether the external system has permission to
`messages to the external system and
`the data source has permission to send
`parameter(s) of the message to determine if
`“using information contained in the header
`system”
`“The message is addressed to an external
`USAA’s Proposed Construction
`
`a message or request to the service”
`data source system, locates a service, and forwards
`“Component that authenticates and authorizes the
`time.
`No additional construction is necessary at this
`
`time.
`No additional construction is necessary at this
`message from the data source system”
`“A system external to the institution receiving the
`
`secure service router
`
`transforming the response
`
`response transformer
`
`external system
`
`No further construction necessary.
`
`transforming the message
`
`No further construction necessary.
`
`module
`message transformation logic
`
`No further construction necessary.
`
`PNC’s Proposed Construction
`
`No further construction necessary.
`
`the external system
`rights of the data source system and
`verifying access and transmission
`external system
`the message to be transmitted to an
`
`Term
`
`Exhibit B7: Proposed Constructions for the ‘788 Patent
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 12 of 15 PageID #: 7076
`
`Page 19 of 117
`
`
`
`12
`
`Indefinite.
`
`time. Not indefinite.
`No additional construction is necessary at this
`
`web server
`a second keystore coupled to the
`
`No further construction necessary
`another format without altering the content”
`“converting the response from one format to
`
`No further construction necessary
`another format without altering the content”
`“converting the request from one format to
`
`USAA’s Proposed Construction
`
`a message or request to the service”
`data source system, locates a service, and forwards
`“Component that authenticates and authorizes the
`time.
`No additional construction is necessary at this
`request from the data source system”
`“A system external to the institution receiving the
`
`secure service router
`transforming . . . the response
`transform the response /
`
`external system
`
`PNC’s Proposed Construction
`
`No further construction necessary
`
`transforming the request
`
`Term
`
`Exhibit B8: Proposed Constructions for the ‘786 Patent
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 13 of 15 PageID #: 7077
`
`Page 20 of 117
`
`
`
`13
`
`than the width of the sixth bar)”
`(i.e., the width of the fifth bar is narrower
`“wherein the fifth bar is inside the sixth bar
`
`than the width of the fourth bar)”
`(i.e., the width of the third bar is narrower
`“wherein the third bar is inside the fourth bar
`
`than the width of the first bar)”
`(i.e., the width of the second bar is narrower
`“wherein the second bar is inside the first bar
`“rectangular-shaped object”
`
`No further construction needed.
`period]”
`be [during the first / second / third time
`“projecting what the customer’s income will
`
`USAA’s Proposed Construction
`
`No further construction needed.
`No further construction needed.
`accessible by its customers”
`that is hosted by the bank and that is remotely
`“Displaying to a bank customer a user interface
`
`PNC’s Proposed Construction
`
`No further construction needed.
`
`positioned within the sixth bar
`fourth bar / wherein the fifth bar is
`third bar is positioned within the
`within the first bar / wherein the
`wherein the second bar is positioned
`bar
`
`customer
`displaying a user interface to the
`period
`during the first /second / third time
`estimating income to the customer
`
`Term
`
`Exhibit B9: Proposed Constructions for the ’754 Patent
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 14 of 15 PageID #: 7078
`
`Page 21 of 117
`
`
`
`14
`
`request”
`by the user during the initial funds transfer
`funding account based on the date identified
`“transferring the amount of funds back to the
`of pictures or diagrams instead of text”
`“a representation of information in the form
`operations, such as ‘dragging’ or ‘dropping’”
`banking transactions using graphical
`“an interface that allows users to schedule
`
`a date field and intended use field”
`intended use based on the user’s entries into
`“the processor tags the funds with a date and
`
`No further construction necessary
`
`USAA’s Proposed Construction
`
`No further construction necessary
`
`No further construction necessary
`
`intended use
`funding account on the date of
`at least one receiving account to the
`transferring the amount of funds from
`
`No further construction necessary
`
`a graphical representation
`
`No further construction necessary
`
`time.
`No additional construction is necessary at this
`other financial institution”
`“A financial account maintained by a bank or
`
`account and at least one receiving account”
`transfer an amount of funds between a funding
`“A request to a bank by a banking customer to
`
`PNC’s Proposed Construction
`
`graphical banking interface
`intended use of the amount of funds
`amount of funds and a date of
`intended purpose of use of the
`processor, a designation of an
`accepting, from the user, using the
`
`account
`receiving account
`funding account and at least one
`an amount of funds between a
`a funds transfer request by a user of
`
`Term
`
`Exhibit B10: Proposed Constructions for the ’623 Patent
`
`Case 2:20-cv-00319-JRG Document 170-2 Filed 08/16/21 Page 15 of 15 PageID #: 7079
`
`Page 22 of 117
`
`
`
`Exhibit C10: ‘623 Patent
`Exhibit C9: ‘754 Patent
`Exhibit C8: ‘786 Patent
`Exhibit C7: ‘788 Patent
`Exhibit C6: ‘605 Patent
`Exhibit C5: ‘681 Patent
`Exhibit C4: ‘779 Patent
`Exhibit C3: ‘571 Patent
`Exhibit C2: ‘559 Patent
`Exhibit C1: ‘432 Patent
`
`USAA’s Identification of Intrinsic and Extrinsic Evidence
`
`Exhibit C
`
`Case 2:20-cv-00319-JRG Document 170-3 Filed 08/16/21 Page 1 of 54 PageID #: 7080
`
`Page 23 of 117
`
`
`
`1
`
`Thomas Conte)
`513:19-514:25 (Testimony of Dr.
`393:9-396:4, 512:23-513:14,
`Trial Transcript at 390:22-392:24,
`N.A., Case No. 2:18-cv-366-JRG,
`Association v. Wells Fargo Bank,
`United Services Automobile
`
`Opinion and Order), at 20-25
`Construction Memorandum
`(July 29, 2019 Claim
`Dkt. 57
`N.A., Case No. 2:18-cv-366-JRG,
`Association v. Wells Fargo Bank,
`United Services Automobile
`
`35-38 and exhibits cited therein.
`Declaration of Stephen Mott, ¶¶
`
`Remarks), at 10, 13-16
`(“’432 PH”) (11-07-2018 Applicant
`Appl. No. 15/983,983 Prosecution History
`
`5.
`45, 7:17-24, 13:46-48, 14:14-20, and Figs. 1-
`‘432 Pat., at 3:46-4:2, 4:3-25, 4:59-5:3, 3:31-
`
`computing device”
`“handheld
`
`6, 13, 21, 23
`‘432 patent, claims 1,
`
`mobile device
`
`USAA’s Identification of
`
`Extrinsic Evidence
`
`USAA’s Identification of Intrinsic
`
`Evidence
`
`Term (Patent/Claim) USAA’s Proposed
`
`Construction
`
`Exhibit C1: USAA’s Identification of Intrinsic and Extrinsic Evidence for the ’432 Patent
`
`Case 2:20-cv-00319-JRG Document 170-3 Filed 08/16/21 Page 2 of 54 PageID #: 7081
`
`Page 24 of 117
`
`
`
`2
`
`Thomas Conte)
`513:19-514:25 (Testimony of Dr.
`393:9-396:4, 512:23-513:14,
`Trial Transcript at 390:22-392:24,
`N.A., Case No. 2:18-cv-366-JRG,
`Association v. Wells Fargo Bank,
`United Services Automobile
`
`Opinion and Order), at 20-25
`Construction Memorandum
`(July 29, 2019 Claim
`Dkt. 57
`N.A., Case No. 2:18-cv-366-JRG,
`Association v. Wells Fargo Bank,
`United Services Automobile
`
`35-38 and exhibits cited therein.
`Declaration of Stephen Mott, ¶¶
`
`priority date of the present invention.”)
`and conventional. All the more so in 2006, the
`other ‘additional elements’ were no routine
`deposit on a customer's mobile device and the
`software and to control submitting a check for
`associated with a bank to work with camera
`the second half of 2009, downloaded apps
`Arguments (“In other words, even entering
`’681 PH at 2018-01-25: Amendment and
`
`device.”)
`a check for deposit’ on a customer's mobile
`camera software and to control submission of
`associated with a bank to work with the
`claim 12 include ‘a downloaded app
`Arguments (“The ‘additional elements’ of
`(“’681 PH”) at 2018-01-25: Amendment and
`Appl. No. 15/663,305 Prosecution History
`
`Remarks), at 10-11, 13-16
`(“’432 PH”) (11-07-2018 Applicant
`Appl. No. 15/983,983 Prosecution History
`
`5.
`45, 7:17-24, 13:46-48, 14:14-20, and Figs. 1-
`‘432 Pat., at 3:46-4:2, 4:3-25, 4:59-5:3, 3:31-
`
`necessary.
`construction
`No further
`
`6, 13, 21, 23
`‘432 patent, claims 1,
`
`digital camera
`
`USAA’s Identification of
`
`Extrinsic Evidence
`
`USAA’s Identification of Intrinsic
`
`Evidence
`
`Term (Patent/Claim) USAA’s Proposed
`
`Construction
`
`Case 2:20-cv-00319-JRG Document 170-3 Filed 08/16/21 Page 3 of 54 PageID #: 7082
`
`Page 25 of 117
`
`
`
`3
`
`10:52-11:2, and Figs. 2, 3
`‘432 Pat., at 6; 9:1-10, 9:42-10:18, 10:19-46,
`priority date of the present invention.”)
`and conventional. All the more so in 2006, the
`other ‘additional elements’ were no routine
`deposit on a customer's mobile device and the
`software and to control submitting a check for
`associated with a bank to work with camera
`the second half of 2009, downloaded apps
`Arguments (“In other words, even entering
`’681 PH at 2018-01-25: Amendment and
`
`device.”)
`a check for deposit’ on a customer's mobile
`camera software and to control submission of
`associated with a bank to work with the
`claim 12 include ‘a downloaded app
`Arguments (“The ‘additional elements’ of
`(“’681 PH”) at 2018-01-25: Amendment and
`Appl. No. 15/663,305 Prosecution History
`
`Remarks), at 13-16
`(“’432 PH”) (11-07-2018 Applicant
`Appl. No. 15/983,983 Prosecution History
`
`‘432 Pat., at 2:33-45, 8:5-24, 8:37-44, 8:56-62
`
`necessary.
`construction
`No further
`
`‘432 patent, claim 1
`
`checking for errors
`
`6, 14, 21, 23
`‘432 patent, claims 1,
`
`weight.
`have patentable
`necessary. Terms
`construction
`No further
`
`graphical illustration
`lighting / displaying a
`the customer with
`instruction / assisting
`instructing / giving an
`
`USAA’s Identification of
`
`Extrinsic Evidence
`
`USAA’s Identification of Intrinsic
`
`Evidence
`
`Term (Patent/Claim) USAA’s Proposed
`
`Construction
`
`Case 2:20-cv-00319-JRG Document 170-3 Filed 08/16/21 Page 4 of 54 PageID #: 7083
`
`Page 26 of 117
`
`
`
`4
`
`22, 9:40-10:18, 12:6-21, and Figs. 2, 3
`‘432 Pat., at 5:15-25, 6:50-7:2, 9:1-10, 9:17-
`
`patentable weight.
`necessary. Term has
`construction
`No further
`
`‘432 patent, claims 1
`
`bank computer
`
`USAA’s Identification of
`
`Extrinsic Evidence
`
`USAA’s Identification of Intrinsic
`
`Evidence
`
`Term (Patent/Claim) USAA’s Proposed
`
`Construction
`
`Case 2:20-cv-00319-JRG Document 170-3 Filed 08/16/21 Page 5 of 54 PageID #: 7084
`
`Page 27 of 117
`
`
`
`Memorandum Opinion and Order), at 9-20
`(July 29, 2019 Claim Construction
`366-JRG, Dkt. 57
`Wells Fargo Bank, N.A., Case No. 2:18-cv-
`United Services Automobile Association v.
`
`Memorandum Opinion and Order), at 9-18
`(June 13, 2019 Claim Construction
`245-JRG, Dkt. 100
`Wells Fargo Bank, N.A., Case No. 2:18-cv-
`United Services Automobile Association v.
`
`5
`
`Gilder, the check is generated by the
`"metadata." (Gilder at col. 7, 11. 1-20). In
`check is stored in a database as
`checks, where information regarding the
`generating and process digitally originated
`Arguments (“Gilder discloses a system for
`’136 PH at 2015-07-23: Amendment and
`
`12:57-62, 11:34-12:21
`‘559 Pat., at 6:17-49, 9:1-16, 11:3-13,
`
`preambles)
`remote deposit of a check” in the
`in the bodies of the claims refer back to “a
`recognition applied to the digital image”
`obtained via the optical character
`based at least in part on information
`the check depicted in the digital image
`and “perform duplicate check detection on
`recognition applied to the digital image,”
`check based on the optical character
`amount for the remote deposit of the
`deposit of the check,” “determine an
`check submitted by a user for the remote
`image depicting at least portions of the
`‘559 Pat., claims 1, 10 (“receive a digital
`
`USAA’s Identification of Extrinsic
`
`Evidence
`
`USAA’s Identification of Intrinsic
`
`Evidence
`
`limiting.
`Preambles are
`
`Construction
`
`Proposed
`USAA’s
`
`1, 10
`‘559 patent, claims
`
`comprising
`the method
`deposit of a check,
`to process a remote
`computing device
`controlling a
`method for
`comprising / a
`computing device
`check, the
`remote deposit of a
`for processing a
`a computing device
`
`(Patent/Claim)
`
`Term
`
`Exhibit C2: USAA’s Identification of Intrinsic and Extrinsic Evidence for the ‘559 Patent
`
`Case 2:20-cv-00319-JRG Document 170-3 Filed 08/16/21 Page 6 of 54 PageID #: 7085
`
`Page 28 of 117
`
`
`
`6
`
`back sides of a check", "update a balance
`capture electronic images of front and
`portable device to have the digital camera
`physical checks: "instructing a user of the
`1 is configured to image and process
`Arguments (“the system of present Claim
`’681 PH at 2018-01-25: Amendment and
`
`data processing system.”)
`instructions for processing checks in a
`apparatus and computer implemented
`2002/0152169 Al teaches a method,
`et al.: US Publication Number
`Allowance (“The closest prior art of Dutta
`’681 PH at 2018-03-13: Notice of
`
`processing.”)
`physical financial instrument
`(Buchanan), reference is directed to
`Allowance (“closest prior art of record
`(“’332 PH”) at 2012-11-02: Notice of
`Appl. No. 12/963,513 Prosecution History
`
`device.”)
`and a back side of a check from a remote
`as disclosing receiving images of a front
`the cited portions of Gilder cannot be seen
`payee. (Gilder at col. 9, 11. 23-24). Thus,
`system and delivered electronically to the
`
`USAA’s Identification of Extrinsic
`
`Evidence
`
`USAA’s Identification of Intrinsic
`
`Evidence
`
`Construction
`
`Proposed
`USAA’s
`
`(Patent/Claim)
`
`Term
`
`Case 2:20-cv-00319-JRG Document 170-3 Filed 08/16/21 Page 7 of 54 PageID #: 7086
`
`Page 29 of 117
`
`
`
`Check and Image Data (Domestic)
`(Specifications for Electronic Exchange of
`2016), ANS X9.100-180-2006,
`revisions X9.100-187-2013 and X9.100-187-
`Data (Domestic) (including subsequent
`for Electronic Exchange of Check and Image
`Data, ANS X9.100-187-2008 (Specifications
`Electronic Exchange of Check and Image
`e.g., DSTU X9.37-2003, Specifications for
`ANSI X9 Standards for Electronic Checks,
`
`Memorandum Opinion and Order), at 9-20
`(July 29, 2019 Claim Construction
`366-JRG, Dkt. 57
`Wells Fargo Bank, N.A., Case No. 2:18-cv-
`United Services Automobile Association v.
`
`Memorandum Opinion and Order), at 9-18
`(June 13, 2019 Claim Construction
`2
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