throbber
Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`DOCKET NO.: 1652875.00151US11
`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)
`
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Avenue, NW
`Washington, DC 20006
`Email: monica.grewal@wilmerhale.com
` david.cavanaugh@wilmerhale.com
` gregory.lantier@wilmerhale.com
` tim.cho@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 IPR2022-00049
`U.S. Patent No. 10,402,638
`_______________________________________
`PETITION FOR INTER PARTES REVIEW
`OF CLAIMS 20 AND 22
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`Table of Contents
`
`Page
`
`Table of Contents ............................................................................................. i
`I.
`INTRODUCTION............................................................................ 1
`II.
`MANDATORY NOTICES .............................................................. 2
`Real Party-In-Interest ................................................................. 2
`Related Matters .......................................................................... 2
`Counsel ...................................................................................... 4
`Service Information ................................................................... 4
`CERTIFICATION OF GROUNDS FOR STANDING .................. 4
`OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .... 5
`Prior Art References .................................................................. 5
`Grounds for Challenge ............................................................... 7
`TECHNOLOGY BACKGROUND ................................................. 7
`Remote Check Capture/Deposit System ................................... 7
`1.
`Image Capture Device ......................................................... 8
`2. Customer-Operated Device ................................................. 9
`Downloaded Application and Interactive Sessions ................... 9
`THE ’638 PATENT ....................................................................... 10
`Brief Description ..................................................................... 10
`Prosecution History ................................................................. 11
`
`III.
`IV.
`
`V.
`
`VI.
`
`A.
`B.
`C.
`D.
`
`A.
`B.
`
`A.
`
`B.
`
`A.
`B.
`
`i
`
`

`

`A. 
`
`A. 
`
`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`CLAIM CONSTRUCTION ........................................................... 12 
`“Handheld Mobile Device” ..................................................... 13 
`PERSON OF ORDINARY SKILL IN THE ART ......................... 14 
`PRIOR ART REFERENCES ......................................................... 14 
`Garcia (EX1103) ...................................................................... 14 
`A. 
`Byrne (EX1104) ....................................................................... 16 
`B. 
`Lev (EX1105) .......................................................................... 18 
`C. 
`D.  Watanabe (EX1106) ................................................................ 18 
`E. 
`Maeda (EX1107) ..................................................................... 18 
`SPECIFIC GROUNDS FOR UNPATENTABILITY ................... 19 
`Ground I: Claims 20 and 22 are Obvious over Garcia in
`combination with Byrne, Lev, and Watanabe ......................... 19 
`1.  Garcia in view of Byrne, Lev, and Watanabe ................... 19 
`2.  Claim 20 ............................................................................ 34 
`3.  Claim 22 ............................................................................ 51 
`Ground II: Claims 20 and 22 are Obvious over Garcia in
`combination with Byrne, Lev, Watanabe and Maeda ............. 54 
`1.  Claim 20 ............................................................................ 54 
`2.  Claim 22 ............................................................................ 59 
`DISCRETIONARY DENIAL IS NOT WARRANTED ............... 60 
`Fintiv Factors Favor Institution ............................................... 60 
`New Prior Art and Arguments Favor Institution. .................... 61 
`CONCLUSION .............................................................................. 62 
`
`B. 
`
`A. 
`B. 
`
`ii
`
`VII. 
`
`VIII. 
`IX. 
`
`X. 
`
`XI. 
`
`XII. 
`
`
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`
`
`
`I.
`
`INTRODUCTION
`Claims 20 and 22 of U.S. Patent No. 10,402,638 (the “’638 patent”) recite
`
`long-known, routine operations for depositing a bank check using a personal
`
`computing device. Although the ʼ638 patent purports to claim a novel system for
`
`capturing a check image using a mobile device and submitting the check image to
`
`a bank computer for electronic processing, every element of the challenged claims
`
`was known at the time the ʼ638 patent was allegedly invented.
`
`Specifically, claim 20 of the ’638 patent recites “a customer’s handheld
`
`mobile device including a downloaded app” that performs interactive operations
`
`for a remote check deposit. The claim further requires that the mobile device
`
`performs “instructing the customer to take a photo of the check,” “using a display
`
`of the customer’s handheld mobile device to assist the customer in taking the
`
`photo,” “assisting the customer as to an orientation for taking the photo,” and
`
`“check[ing] for errors before” submitting the check for deposit.
`
`However, none of these features are new. WO 2005/043857 to “Garcia”
`
`discloses a remote check deposit system in which a user’s mobile device provides
`
`an interactive session for capturing a check image and submitting it to a bank
`
`computer. U.S. Publication No. 2006/0249567 to “Byrne” teaches an application
`
`downloaded from a bank that provides an interactive session for a check deposit
`
`
`
`1
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`and checks for errors in the check image before it is sent to the bank. U.S.
`
`Publication No. 2006/0164682 to “Lev” further teaches that the interactive session
`
`includes instructing a user to take a photo of the check. U.S. Patent No. 7,027,171
`
`to “Watanabe” teaches using a display of a handheld mobile device to assist the
`
`customer in taking the photo and assisting the customer as to an orientation for
`
`taking the photo. It would have been obvious to combine Garcia’s system with
`
`Byrne’s downloaded application, Byrne’s error checking mechanism, Lev’s
`
`interactive session, and Watanabe’s use of the handheld mobile device’s display
`
`and assistance as to orientation for taking a photo of the check.
`
`Accordingly, Petitioner respectfully requests cancellation of the claims
`
`challenged in this Petition.
`
`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.
`
`(“Petitioner”) is the real party-in-interest.
`
`B. Related Matters
`Under 37 C.F.R. § 42.8(b)(2), Petitioner states that Patent Owner (“PO”) has
`
`asserted the ’638 patent and two additional patents in United Servs. Auto. Ass’n
`
`(“USAA”) v. PNC Bank N.A., Case No. 2:21-cv-00246-JRG (E.D. Tex.) (“PNC
`
`III”). PO has also asserted four patents in USAA v. PNC Bank N.A., Case No.
`
`2:20-cv-00319-JRG (E.D. Tex.) (“PNC I”) and two additional patents—including a
`2
`
`
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`grant-parent of the ’638 patent—in USAA v. PNC Bank N.A., Case No. 2:21-cv-
`
`00110-JRG (E.D. Tex.) (“PNC II”). In PNC I, Petitioner has asserted
`
`counterclaims against PO, asserting four patents: U.S. Patent Nos. 7,949,788;
`
`8,868,786; 8,380,623; and 8,682,754. PO has filed IPR petitions challenging
`
`validity of U.S. Patent Nos. 7,949,788 and 8,868,786. USAA v. PNC Bank, N.A.,
`
`IPR2021-01163, IPR2021-01248.
`
`Three prior post-grant proceedings pertaining to the ’638 patent family have
`
`been filed by third parties:
`
`Challenged Patent
`U.S. 10,013,605
`
`U.S. 10,402,638
`
`Case No.
`IPR2020-01742
`CBM2019-00029
`IPR2020-01516
`
`Petitioner is concurrently filing an inter partes review petition (IPR2022-
`
`00050) challenging U.S. Patent No. 10,402,638. Petitioner has also filed inter partes
`
`review petitions challenging the following patents asserted against Petitioner:
`
`Challenged Patent
`U.S. 8,699,779
`U.S. 8,977,571
`U.S. 10,482,432
`
`U.S. 10,621,559
`
`U.S. 10,013,605
`U.S. 10,013,681
`
`Case No.
`IPR2021-01070
`IPR2021-01073
`IPR2021-01071
`IPR2021-01074
`IPR2021-01076
`IPR2021-01077
`IPR2021-01399
`IPR2021-01381
`
`3
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`
`C. Counsel
`Under 37 C.F.R. §§ 42.8(b)(3)-(4), Petitioner identifies the following lead
`
`and backup counsel, to whom all correspondence should be directed.
`
`Lead Counsel:
`
`
`
`Monica Grewal (Reg. No. 40,056)
`
`First Backup Counsel: David Cavanaugh (Reg. No. 36,476)
`
`Backup Counsel:
`
`Gregory Lantier (pro hac vice to be filed)
`
`Taeg Sang Cho (Reg. No. 69,618)
`
`D.
`
`Service Information
`E-mail:
`
`monica.grewal@wilmerhale.com
`david.cavanaugh@wilmerhale.com
`gregory.lantier@wilmerhale.com
`tim.cho@wilmerhale.com
`
`Post and hand delivery: Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Telephone: 617-526-6000
`Facsimile: 617-526-5000
`
`
`Petitioner consents to service by e-mail on lead and backup counsel.
`
`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies under 37 C.F.R. § 42.104(a) that the patent for which
`
`review is sought is available for inter partes review and under 37 C.F.R. §§
`
`42.101(a)-(c) that Petitioner is not barred or estopped from requesting an inter
`
`partes review challenging the patent claims on the grounds identified in this
`
`Petition.
`
`
`
`4
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Under Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner requests
`
`cancellation of claims 20 and 22 of the ’638 patent.
`
`A.
`Prior Art References
`According to its prosecution history (EX1111 [’638 Patent FH]), the
`
`application for the ’638 patent was filed on October 19, 2018 (EX1111 [’638
`
`Patent FH], 1-67), and through a series of continuation applications claims priority
`
`to U.S. Patent Application No. 11/590,974 (“’974 Application”), filed on October
`
`31, 2006, that issued as U.S. Patent No. 8,708,227. (EX1101, cover). The
`
`following references, none of which formed the basis of a rejection of the ’638
`
`patent during prosecution, are pertinent to the grounds of unpatentability presented
`
`below:
`
`1.
`
`International Patent Application Publication No. WO 2005/043857
`
`(“Garcia”) (EX1103)1, published May 12, 2005, is prior art under at least 35
`
`U.S.C. § 102(b). Garcia is not of record on the face of the ’638 patent.
`
`
`Garcia was originally published in Spanish. Exhibit A of EX1103 includes
`
`1
`
`the original Spanish publication, and Exhibit B of EX1103 includes a certified
`
`translation of the Spanish publication. This Petition’s citations to “EX1103” refer
`
`specifically to Exhibit B of EX1103.
`
`
`
`5
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`U.S. Patent Application Publication No. 2006/0249567 (“Byrne”) (EX1104),
`
`2.
`
`filed February 9, 2006, and claiming priority to U.S. Provisional Application
`
`No. 60/652,078, filed February 10, 2005, is prior art under at least 35 U.S.C.
`
`§ 102(e).
`
`3.
`
`U.S. Patent Publication No. 2006/0164682 (“Lev”) (EX1105), filed January
`
`24, 2006, and published July 27, 2006, claiming priority to U.S. Provisional
`
`Application No. 60/646,511, filed January 25, 2005, is prior art under at
`
`least 35 U.S.C. §§ 102(a), (e).
`
`4.
`
`U.S. Patent No. 7,027,171 (“Watanabe”) (EX1106), filed March 29, 2000,
`
`and issued April 11, 2006, is prior art under at least 35 U.S.C. §§ 102(a), (e).
`
`5.
`
`U.S. Patent Publication No. 2003/0051138 (“Maeda”) (EX1107), published
`
`March 13, 2003, is prior art under at least 35 U.S.C. § 102(b). Maeda is not
`
`of record on the face of the ’638 patent.
`
`Byrne, Lev, and Watanabe are of record on the face of the ’638 patent but
`
`did not form the basis of a rejection during prosecution. Byrne and Watanabe
`
`formed the basis of the invalidity grounds presented in IPR2020-01516, but the
`
`IPR proceeding was terminated by the parties before the Board made a decision on
`
`whether to institute the proceeding.
`
`
`
`6
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`
`B. Grounds for Challenge
`Petitioner requests cancellation of claims 20 and 22 of the ’638 patent as
`
`unpatentable under 35 U.S.C. § 103. The grounds for challenge are:
`
`Ground
`
`References
`
`Basis
`
`Claims Challenged
`
`I
`
`II
`
`Garcia, Byrne, Lev,
`
`§ 103
`
`20, 22
`
`Watanabe
`
`Garcia, Byrne, Lev,
`
`§ 103
`
`20, 22
`
`Watanabe, Maeda
`
`This Petition, supported by the declaration of Dr. Mowry (EX1102),
`
`demonstrates that there is a reasonable likelihood that the Petitioner would prevail
`
`with respect to at least one challenged claim. 35 U.S.C. § 314(a). Petitioner
`
`respectfully requests institution. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`
`V. TECHNOLOGY BACKGROUND
`A. Remote Check Capture/Deposit System
`Remote check capture/deposit system provides a needed alternative to
`
`depositing physical checks. EX1121; EX1123, [0004]. Remote capture/deposit
`
`systems, enabled partly by the Check 21 Act, refer to technology that allows a
`
`customer to take an image of a check and send it to a bank so the bank can clear
`
`the check using the check image rather than the physical check. EX1124; EX1121,
`
`5. EX1102, ¶32.
`
`
`
`7
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`A remote capture/deposit system typically includes: (1) an image capture
`
`device; (2) a computing device associated with the image capturing device; and (3)
`
`a server for processing a check image for deposit. One example of a remote
`
`deposit system that uses a mobile device with an integrated camera is illustrated in
`
`the figure below. EX1103, FIG. 1, 12:4-13:5. EX1102, ¶¶33-34.
`
`
`
`EX1103, FIG. 1. EX1102, ¶34.
`
`Variations within this general architecture were well-known, as described
`
`below. EX1102, ¶35.
`
`1.
`Image Capture Device
`It was well-known that the image capture device may be implemented using
`
`visual sensors with adequate resolution, including scanners (e.g., EX1125, [0023];
`
`EX1112, 3:14-15) and digital cameras. EX1103, 12:4-9. EX1102, ¶36.
`8
`
`
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`2.
`Customer-Operated Device
`It was well-known that the customer-operated device could take various
`
`forms including desktop computers (e.g., EX1125, [0023]; EX1104, [0047]),
`
`laptops, personal digital assistants (PDAs), and mobile phones. EX1126, [0004];
`
`EX1103, 9:19-11:6. EX1102, ¶37.
`
`B. Downloaded Application and Interactive Sessions
`Some customer-operated computing devices used a software application to
`
`provide an interactive check capture session. EX1103, 7:15-17; EX1104, [0050]-
`
`[0056]. In some cases, this software application was downloaded from the bank.
`
`EX1104, [0046]-[0047], [0064]. EX1102, ¶38.
`
`The interactive session provided instructions on how the user should capture
`
`a check image. For example, the interactive session instructed a user to move their
`
`camera closer to or further from a document such as a check. EX1105, [0117];
`
`EX1108, [0072]-[0075]. EX1102, ¶39.
`
`The interactive session also checked for errors in the check image or the
`
`captured data before submitting them to the bank. For example, the user’s device
`
`verified that a check was properly scanned or that the user endorsed the check.
`
`EX1104, [0175]-[0178]. EX1102, ¶40.
`
`
`
`9
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`
`VI. THE ’638 PATENT
`A. Brief Description
`The ’638 patent’s remote check capture/deposit system includes (1) an
`
`image capture device; (2) a general-purpose computer2; and (3) a server
`
`associated with a financial institution that receives information from the general-
`
`purpose computer via a publicly accessible network. EX1101, 4:7-24. The
`
`general-purpose computer may be a desktop computer or a laptop (id., 4:13-16)
`
`or a PDA (id., 8:22-25) and the image capture device may be a scanner or a digital
`
`camera. Id., 6:59-64. EX1102, ¶41.
`
`
`
`
`In this Petition, color annotations and emphases are added unless noted
`
`2
`
`otherwise.
`
`
`
`10
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`
`EX1101, FIG. 1. EX1102, ¶41.
`
`The general-purpose computer includes a software component for
`
`capturing an image of a check using the image capture device and transmitting the
`
`captured information to the server. EX1101, FIG. 6, 13:63-14:2, 14:20-28.
`
`EX1102, ¶42.
`
`Once the requisite check image is sent to the server, the financial
`
`institution processes the check image using routine check and image processing
`
`techniques and initiates deposit of the check. EX1101, 11:38-50, 12:46-57.
`
`EX1102, ¶43.
`
`B.
`Prosecution History
`The ’638 patent, filed on October 19, 2018, claims priority to U.S. Patent
`
`Application No. 11/590,974 (issued as U.S. Patent No. 8,708,227) filed on October
`
`31, 2006, through three intervening applications. EX1111 [’638 Patent FH], 7, 16.
`
`This priority chain is illustrated below. EX1102, ¶44.
`
`
`
`11
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`
`
`
`EX1102, ¶44.
`
`VII. 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. Ltd., 868
`
`F.3d 1013, 1017 (Fed. Cir. 2017).
`
`Petitioner and PO have yet to propose constructions for the ’638 patent
`
`claim terms in the co-pending district court litigation PNC III. However, in PNC II
`
`that involves a grand-parent of the ’638 patent—U.S. Patent No. 10,013,605 (the
`
`
`
`12
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`“’605 patent”)—the parties have proposed and are currently briefing constructions
`
`of the ’605 patent claim terms that also appear in the ’638 patent claims. See
`
`EX1109 [Joint Claim Construction Statement], 6, 17-18, 52-58, 103-110. It is
`
`presumed that the parties will propose the same constructions for these overlapping
`
`terms in PNC III unless otherwise compelled. See z4 Techs., Inc. v. Microsoft
`
`Corp., 507 F.3d 1340, 1348 (Fed. Cir. 2007) (“[W]e presume, unless otherwise
`
`compelled, that the same claim term in the … related patents carries the same
`
`construed meaning.”). EX1102, ¶49.
`
`In this IPR proceeding, other than “handheld mobile device” and “digital
`
`camera,” resolving potential disputes over the overlapping terms is unnecessary
`
`because those terms are taught by the prior art references regardless of the
`
`construction. Any term not construed shall be understood according to ordinary
`
`and customary meaning. 37 C.F.R. §42.100(b); Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005) (en banc). EX1102, ¶50.
`
`A.
`“Handheld Mobile Device”
`For purposes of this IPR proceeding, Petitioner relies on PO’s district court
`
`construction for the terms “handheld mobile device” found in the ’605 patent—a
`
`grand-parent of the ’638 patent—reproduced below. See z4 Techs, 507 F.3d at
`
`1348. Rule 37 C.F.R. § 42.104(b)(3) “does not require Petitioner to express its
`
`subjective agreement regarding correctness of its proffered claim constructions or
`
`
`
`13
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`to take ownership of those constructions.” Western Digital Corp. v. SPEX Tech.
`
`Inc., IPR2018-00084, Paper 14, 11-12 (P.T.A.B. Apr. 25, 2018). EX1102, ¶50.
`
`Term
`“handheld mobile
`device”
`
`EX1109, 17. EX1102, ¶50.
`
`PO’s Proposed Construction
`“handheld computing device”
`
`VIII. PERSON OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the relevant field or art (“POSITA”) as of the
`
`claimed priority date of the ’638 patent 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 capture/scanning
`
`technology, involving transferring and processing of image data to and at a server.
`
`Less work experience may be compensated by a higher level of education and vice
`
`versa. EX1102, ¶¶45-47.
`
`IX. PRIOR ART REFERENCES
`A. Garcia (EX1103)
`Garcia teaches a remote check deposit technique “for processing and
`
`accepting documents, such as, for example, bank checks, … using … a mobile
`
`device capable of capturing and sending images via an Internet connection.”
`
`EX1103, 1:7-13. Garcia provides “greater simplicity, speed, and security in the
`
`process of accepting bank documents and bills, and particularly in depositing
`
`
`
`14
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`checks, by replacing the traditional check reader with a multi-purpose mobile
`
`device.” Id., 7:18-22. EX1102, ¶52.
`
`Garcia’s Figure 2, reproduced below, shows Garcia’s deposit system. The
`
`system includes a user’s “mobile device,” a “mobile communications network,”
`
`and “computer equipment at the financial institution.” EX1103, FIG. 2, 9:11-18.
`
`EX1102, ¶53.
`
`
`
`Id., FIG. 2. EX1102, ¶53.
`
`As part of the check deposit routine, the mobile telephone can: (1) open a
`
`“computer application” that engages in an interactive session with the computer
`
`equipment at the financial institution and the user (EX1103, 9:19-10:9); (2)
`
`“[c]aptur[e] the digital image of the obverse and the reverse side of the [check]”
`
`
`
`15
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`(id., 10:10-11); (3) “[c]aptur[e] the data associated with the [check], such as the
`
`amount and the check number” (id., 10:12-13); and (4) “[t]ransmit[] the digital
`
`image … to the institution” over the mobile communication network (id., 10:16-
`
`18, 11:20-12:3). The mobile telephone can capture the check image using an
`
`incorporated “digital camera.” Id., 12:4-9. See also id., 15:12-20. EX1102, ¶54.
`
`
`
`Once the financial institution receives information, the institution
`
`recognizes, verifies, and processes the information using “an optical character
`
`recognition (OCR) system,” “ultimately obtaining a digital photograph of the
`
`check and a data set that allows it to automatically process the deposit of the
`
`check.” EX1103, 11:7-15, 12:17-22. Subsequently, the institution transmits “an
`
`SMS message … to the user informing him that the transaction has been completed
`
`successfully or not.” Id., 12:22-13:5. EX1102, ¶¶55-56.
`
`B.
`Byrne (EX1104)
`Byrne relates to “a system and method for providing a browser plug-in that
`
`allows a bank customer to scan checks using a personal computer and deposit the
`
`checks via the browser to a bank account.” EX1104, [0003]. Figure 1 of Byrne,
`
`reproduced below, illustrates the system:
`
`
`
`16
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`
`
`
`Id., FIG. 1. This system includes a personal computer that runs a plug-in (id.,
`
`[0048]); and an “enterprise server[]” (e.g., a server at a bank) that includes a
`
`“desktop deposit application” (also called C21 App) (id., [0047], [0048], [0087]).
`
`EX1102, ¶¶58-59.
`
`Byrne explains that, as an initial step, a user “authenticates with a desktop
`
`deposit application” in an “enterprise server[].” EX1104, [0047], [0048]. “After
`
`authentication, C21 App is launched and the appropriate desktop deposit plug-in(s)
`
`is downloaded onto the client PC.” Id., [0047]. Subsequently, “[t]he user launches
`
`a session for scanning checks from the browser window running the plug-in(s),”
`
`“scan[s] one or more checks,” and transmits the “scanned images … by the
`
`browser window running the plug-in(s) to a check image repository.” Id., [0048].
`
`
`
`17
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`Before the check images are transmitted and submitted for deposit, the user’s
`
`computer “detect[s] whether the check is endorsed,” and “check[s] … that the
`
`check had been properly scanned.” Id., [0174]-[0178]. EX1102, ¶60.
`
`C. Lev (EX1105)
`Lev is directed to converting “printed documents” such as “bank checks”
`
` “into electronic ones” using “a standard portable wireless device” “such as camera
`
`phones [and] camera enabled PDAs.” EX1105, [0042], [0072]. See also id.,
`
`[0008]. Lev teaches that a document’s image can be “captured during an
`
`interactive session.” Id., [0071]. EX1102, ¶62.
`
`D. Watanabe (EX1106)
`Watanabe is directed to a digital camera that has a “document photographing
`
`mode.” EX1106, 2:49-54. In this mode, “a display unit [of the camera] displays
`
`[a] guidance to notify a user of photographing conditions of a document during
`
`displaying of the picture of the subject on the monitor before it is photographed.”
`
`Id. The “guidance” is provided in the form of “a guidance frame on the LCD
`
`105.” Id., 7:21-23. EX1102, ¶64.
`
`E. Maeda (EX1107)
`Maeda discloses a “mobile terminal authentication method, which enables
`
`users to easily find out a user ID and password and transmit them to an
`
`authentication server.” EX1107, [0007]. “A user can communicate with servers
`
`[used by a bank for settling their financial accounts] … through a mobile terminal
`18
`
`
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`… over a mobile communication network … and a general communication
`
`network such as the Internet.” Id., [0030]. Maeda teaches that the mobile terminal
`
`has “a biometric information reader” which “reads biometric information such as a
`
`fingerprint.” Id., [0031]-[0032]. EX1102, ¶66.
`
`Maeda teaches that the “mobile terminal … performs a fingerprint
`
`authentication … and then reads out and sends user data … [from the user data
`
`administration table] to the server … only when the fingerprint authentication
`
`[succeeds].” EX1107, [0065]; see also id., [0034], [0058]-[0064], [0066], FIG. 8.
`
`“Fingerprint authentication” involves the “mobile terminal … read[ing] his/her
`
`fingerprint and stor[ing] the fingerprint data in area B of the … memory…. The
`
`previously registered fingerprint data are assumed to be stored in area A of the …
`
`memory.” Id., [0043]. The mobile device then “collates” the “registered
`
`fingerprint data from area A” and the “user’s fingerprint data from area B.” Id.
`
`EX1102, ¶67.
`
`X. SPECIFIC GROUNDS FOR UNPATENTABILITY
`A. Ground I: Claims 20 and 22 are Obvious over Garcia in
`combination with Byrne, Lev, and Watanabe
`1.
`Garcia in view of Byrne, Lev, and Watanabe
`Garcia teaches using a customer’s handheld mobile device to capture a
`
`check image and transmit the image to a bank for processing. Although certain
`
`implementation details recited in the challenged claims are not expressly described
`
`
`
`19
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`in Garcia, these details would have been obvious in view of analogous art,
`
`including Byrne, Lev, and Watanabe. EX1102, ¶70.
`
`i. Downloaded App in View of Byrne
`Garcia discloses a “computer application” in a handheld mobile device that
`
`engages in an interactive session with a financial institution for a check deposit.
`
`EX1103, 9:19-10:18. Garcia does not expressly disclose that the computer
`
`application is a “downloaded app … associated with a bank.” EX1102, ¶71.
`
`However, such a downloaded app was well-known. For example, Byrne
`
`teaches a system that allows a bank customer to use a personal computer to deposit
`
`checks in an image form. EX1104, [0003]. As described in Section IX.B [Byrne],
`
`“[t]he user launches a session for scanning checks from the browser window
`
`running the plug-in(s).” Id., [0048]. “[P]lug-in software” is a type of a “thin-
`
`client” “application” that is “distributed [to a user’s computing device] with each
`
`invocation of the application software.” Id., [0013], [0046]. Byrne explains its
`
`plug-in software application, which is “downloaded onto the client PC” from the
`
`enterprise server, is used for carrying out a check deposit session. Id., [0046],
`
`[0047] (“After authentication, C21 App is launched and the appropriate desktop
`
`deposit plug-in(s) is downloaded onto the client PC.”), [0048]. The enterprise
`
`here is a bank. Id., [0087] (“The images of checks transmitted with the file are
`
`retained and archived by the enterprise, i.e. in this example, Wells Fargo bank
`
`
`
`20
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`(WFB)….”). Accordingly, Byrne’s plug-in(s) teaches a “downloaded app …
`
`associated with a bank.” EX1102, ¶72.
`
`A POSITA would have been motivated to combine Garcia and Byrne to
`
`provide Garcia’s mobile device with a “downloaded app … associated with a
`
`bank.” Although Garcia teaches that a handheld mobile device has a computer
`
`application, Garcia does not expressly explain how the handheld mobile device
`
`obtains the computer application. Accordingly, a POSITA would have been
`
`motivated to find a solution for distributing the computer application to the
`
`handheld mobile device, and a POSITA would have readily understood that there
`
`were well-known ways of doing so in 2006, including, for example, as taught by
`
`Byrne. Byrne teaches implementing the computer application using “thin-client”
`
`software, such as a plug-in, that can be readily implemented on Garcia’s handheld
`
`mobile device, as described below, to obtain a predictable result of providing a
`
`computer application on the handheld mobile device. EX1104, [0046], [0047].
`
`See also id., [0042] (“The spirit and scope of the invention covers any thin client
`
`with respect to any enterprise post processing and any type of capturing device and
`
`captured data object….”). EX1102, ¶73.
`
`Indeed, as of 2006, it was well-known that handheld mobile devices
`
`downloaded software from a server to receive software applications. For example,
`
`U.S. Patent Application Publication No. 2004/0267665 to “Nam” teaches that a
`
`
`
`21
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`“banking application” is a software program “mounted on a memory device of the
`
`mobile communication system.” EX1113 [Nam], [0041]-[0046]. The banking
`
`application “can perform both downloading and upgrading of [software] through a
`
`wireless network.” Id. U.S. Patent Application Publication No. 2005/0205660 to
`
`“Munte” also teaches a “client data entry application” used to create electronic
`
`records of paper documents by “taking a digital image … of [a] paper record …
`
`with [a] digital camera.” EX1114 [Munte], [0031], [0033]. The “client data entry
`
`application and a request for application installation [are] sent to [a] customer’s
`
`mobile wireless device via a wireless network” and then “[t]he wireless mobile
`
`device executes the installation of the data entry application.” Id., [0045]-[0046].
`
`EX1102, ¶74.
`
`A POSITA would have been further motivated because a “thin-client”
`
`reduces the burden of supporting “multiple, often back-leveled versions of
`
`software,” improves “ease and speed of software maintenance,” and improves
`
`“security.” EX1104 [Byrne], [0045]-[0046]. Indeed, it was well-known that thin-
`
`clients were well-suited for handheld mobile devices. EX1119 [Alagappan],
`
`[0003] (“A thin client for wireless use is often implemented to reduce memory and
`
`processor requirements for reduced power consumption, size, and cost—while at
`
`the same time, conserving wireless communication bandwidth for communication
`
`with a server or other devices over a communication channel (often wireless).”),
`
`
`
`22
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 10,402,638, Claims 20, 22
`[0004] (“Examples of such [wireless communication] d

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