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 IPR2022-00049
`Case IPR2022-00050
`_________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,402,638
`_________________________________________
`
`PETITIONER’S PETITION RANKING AND EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS
`
`
`
`
`
`
`
`
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`PNC BANK, N.A.,
`Petitioner,
`v.
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`_________________________________________
`Case IPR2022-00049
`Case IPR2022-00050
`_________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,402,638
`_________________________________________
`
`PETITIONER’S PETITION RANKING AND EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`Introduction
`
`Petition Ranking
`IPR2022-00049 and IPR2022-00050
`
`Petitioner is concurrently filing two petitions for inter partes review of U.S.
`
`Patent No. 10,402,638 (“’638 patent”). Petitioner respectfully requests the Board
`
`to exercise its discretion to institute both petitions because they are based on
`
`different priority dates and different sets of prior art references. The issues at play
`
`are complex such that, given the different priority dates and prior art references,
`
`Petitioner reasonably requires two petitions to adequately set forth its grounds.
`
`Petitioner respectfully submits this notice of ranking of its petitions pursuant
`
`to the 2019 PTAB Consolidated Trial Practice Guide. Specifically, this paper (A)
`
`ranks the petitions, (B) explains the material differences between the petitions, and
`
`(C) explains why the Board should exercise its discretion to institute both petitions.
`
`II. Ranking of Petitions
`
`Although Petitioner believes that its petitions are each meritorious and
`
`justified, Petitioner requests, at this stage, that the Board consider the petitions in
`
`the following order:
`
`Rank
`
`Petition
`
`References
`
`1
`
`2
`
`
`
`
`
`Oakes-I, Oakes-II,
`Medina, and Roach
`Garcia, Byrne, Lev,
`Watanabe, and Maeda
`
`IPR2022-00050
`(“Petition 1”)
`IPR2022-00049
`(“Petition 2”)
`
`
`
`- 1 -
`
`
`
`Petition Ranking
`IPR2022-00049 and IPR2022-00050
`
`III. Petition 1 And Petition 2 Are Materially Different
`
`Petition 1 and Petition 2 are materially different because they are premised
`
`on different priority positions and rely on non-overlapping sets of prior art
`
`references.
`
`1. Different Priority Dates
`
`The ’638 patent is part of a chain of continuation applications claiming
`
`priority to U.S. Application No. 11/590,974 (“’974 Application”), filed October
`
`31, 2006. Petition 1 demonstrates that, despite the priority claim, the ’638 patent
`
`claims are not entitled to a priority date earlier than July 28, 2017 because of a
`
`priority break. Specifically, Petition 1 explains that:
`
`
`
`the ’974 Application does not provide written description support for
`
`claim limitations of the ’638 patent, including (1) “handheld mobile device with a
`
`digital camera,” (2) “check for errors before the submitting is performed by the
`
`customer’s handheld mobile device,” (3) “confirm that the mobile check deposit
`
`can go forward after optical character recognition is performed on the check,” and
`
`(4) particular sequences of check deposit steps; and
`
`
`
`these limitations are, at the earliest, supported by an intermediate
`
`patent in the priority chain, filed on July 28, 2017.
`
`Petition 1 sets forth evidence of this priority chain break and demonstrates,
`
`under the priority date of July 28, 2017, that the challenged claims are invalid.
`
`
`
`- 2 -
`
`
`
`
`
`Petition 2, on the other hand, demonstrates that, even if the ’638 patent were
`
`Petition Ranking
`IPR2022-00049 and IPR2022-00050
`
`entitled to the claimed priority date of October 31, 2006, the challenged claims are
`
`nonetheless invalid. Accordingly, Petition 1 and Petition 2 rely on different
`
`priority dates, and, on that basis alone, are materially different.
`
`2. Different, Non-Overlapping Prior Art References
`
`The two petitions rely on different, non-overlapping sets of prior art
`
`references. In Petition 1, because of the priority break, the patent that issued from
`
`the ’974 Application—U.S. Patent No. 8,708,227 (“Oakes-I”)—is available as
`
`prior art to the ’638 patent. Accordingly, Petition 1 relies on Oakes-I and other
`
`references, to demonstrate that the challenged claims are obvious.
`
`Petition 2, on the other hand, relies on prior art references that predate the
`
`claimed priority date of October 31, 2006—Garcia, Byrne, Lev, Watanabe, and
`
`Maeda. As is evident, the two petitions rely on non-overlapping sets of prior art
`
`references, and are thus materially different.
`
`IV. The Board Should Exercise Its Discretion To Institute Both Petitions
`
`Petitioner respectfully requests the Board to exercise its discretion to
`
`institute both Petition 1 and Petition 2.
`
`The Board frequently institutes multiple petitions when petitions are based
`
`on different priority dates. The 2019 PTAB Consolidated Trial Practice Guide
`
`provides “a dispute about priority date requiring arguments under multiple prior art
`
`
`
`- 3 -
`
`
`
`
`references” as an example of a “circumstance[] in which more than one petition
`
`Petition Ranking
`IPR2022-00049 and IPR2022-00050
`
`may be necessary.” 2019 Consolidated Practice Guide, 59.
`
`Indeed, the PTAB has held that a “dispute” about “the priority date for the
`
`challenged patent... can… justify two petitions.” Samsung Elecs. Co., Ltd. v.
`
`Acorn Semi LLC, IPR2020-01206, Paper 22, 42 (PTAB Jan. 13, 2021) (instituting
`
`trial on both IPR petitions). In Samsung, the patent-at-issue claimed priority to an
`
`original application filed on August 1, 2006. Petitioner, however, contended the
`
`challenged claims were not entitled to a priority date earlier than February 7, 2011
`
`and filed two petitions, one based on the 2011 priority date and another based on
`
`the claimed 2006 priority date. Id. at 15-16. The Board instituted both petitions,
`
`explaining that the Board was “persuaded the challenges are sufficiently different
`
`and premised on different priority positions that it is appropriate to allow parallel
`
`petitions, so the issues can be addressed separately.” Id. at 42. See also NRG
`
`Energy, Inc. and Talen Energy Corp. v. Midwest Energy Emissions Corp.,
`
`IPR2020-00926, Paper 19 at 26 (PTAB Dec. 2, 2020) (instituting two petitions
`
`premised on different priority dates).
`
`The same is true here. Petition 1 and Petition 2 are premised on the earliest-
`
`supported 2017 priority date and the claimed 2006 priority date, respectively, and
`
`present sufficiently different invalidity challenges based on non-overlapping prior
`
`art references. In view of the material differences and the strength of both
`
`
`
`- 4 -
`
`
`
`
`petitions, Petitioner respectfully requests the Board to institute both petitions. If
`
`Petition Ranking
`IPR2022-00049 and IPR2022-00050
`
`the Board so desires, both proceedings can be consolidated on a single schedule
`
`with a single oral argument to mitigate any inconvenience or burden of instituting
`
`more than one petition.
`
`For these reasons, Petitioner respectfully requests that the Board institute
`
`inter partes review on both petitions.
`
`***
`
`“[A] table to aid in identifying the similarities and difference between
`
`petitions” is provided below. 2019 Consolidated Practice Guide, 60.
`
`
`Ranking
`Priority Date
`Prior Art References
`
`
`
`IPR2022-00050
`Rank 1
`July 28, 2017
`Oakes-I, Oakes-II,
`Medina, and Roach
`
`IPR2022-00050
`Rank 2
`October 31, 2006
`Garcia, Byrne, Lev,
`Watanabe, and Maeda
`
`
`
`
`
`Respectfully Submitted,
`
`Date: October 21, 2021 By: /Monica Grewal/
`Monica Grewal
`Reg. No. 40,056
`
`
`
`
`
`- 5 -
`
`
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