Trials@uspto.gov
`$71-272-7822
`
`Paper No. 21
`Date: March 2, 2022
`
`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.
`
`IPR2021-01381
`Patent 10,013,681 B1
`
`Before JONT Y. CHANG, KRISTEN L. DROESCH,and
`MICIIALL R. ZECIMR, Administrative Patent Judges.
`
`ZECHER,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 USC. $314
`
`
`$71-272-7822
`
`Paper No. 21
`Date: March 2, 2022
`
`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.
`
`IPR2021-01381
`Patent 10,013,681 B1
`
`Before JONT Y. CHANG, KRISTEN L. DROESCH,and
`MICIIALL R. ZECIMR, Administrative Patent Judges.
`
`ZECHER,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 USC. $314
`
`
`
`IPR2021-01381
`Patent 10,013,681 B1
`
`I. INTRODUCTION
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`Petitioner, PNC Bank N.A. (‘“PNC”),filed a Petition requesting an
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`inter partes review (“IPR”) of claims 1-30 of U.S. Patent No. 10,013,681
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`BI (Ex. 1001, “the ’681 patent”). Paper 3 (“Pet.”). Patent Owner, United
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`Services Automobile Association (“USAA”),filed redacted and un-redacted
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`versions of a Preliminary Response (Papers 8 and 10 (Prelim. Resp.”’)),
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`along with a Joint Motion to Seal Exhibit 2006 and certain portions of the
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`Preliminary Responsethat reference this exhibit (Paper 9). With our
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`- authorization, PNC filed redacted and un-redacted versions of a Preliminary
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`Reply (Papers 12 and 13 (“Pet. Reply”)), along with a Motionto Seal certain
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`portions of the Preliminary Reply that reference Exhibit 2006 (Paper 11),
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`and USAA filed redacted and un-redacted versions of a Preliminary
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`Sur-reply (Papers 14 and 17 (“PO Sur-reply’”)), along with a Joint Motionto
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`Seal certain portions ofthe Preliminary Sur-reply that reference Exhibit
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`2006 (Paper 16).
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`PNC’s Preliminary Reply and USAA’s Preliminary Sur-reply each
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`weretailored narrowly to address the following three issues: (1) whether
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`PNC’s Petition should be denied under 35 U.S.C. § 312(a)(2) because Mitek
`Systems,Inc. (“Mitek”) should have been namedas a realparty in interest
`(“RPI”); (2) whether the arguments and evidence presented in PNC’s
`Petition were considered and rejected previously in prior proceedings; and
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`(3) whether the non-exclusivelist of six factors set forth in Apple Inc.v.
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`Fintiv, Inc., [PR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
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`(Order authorizing supplemental briefing) (“Fintiv”) warrants us exercising
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`our discretion to deny institution of an IPR whenthereis a related district
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`court case involving the samepatent.
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`IPR2021-01381
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`Based on the authority delegated to us by the Director under 37 C.F.R.
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`§ 42.4(a), we may notinstitute an IPR unless the information presented in
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`the Petition and any response thereto shows“there is a reasonable likelihood
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`that the petitioncr would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. § 314(a) (2018). Taking into account
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`USAA’s Preliminary Response together with the arguments presentedin the
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`authorized briefing, we concludethat the information presented in the
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`Petition does not establish that there is a reasonable likelihood that PNC
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`would prevail in challenging any one of claims 1-30 of the ’681 patent as
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`unpatentable. We, therefore, deny PNC’s Petition.
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`A. Related Matters
`
`Theparties indicate that USAA asserted twopatents, including the
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`°681 patent, against PNC inadistrict court case captioned United Services
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`Automobile Ass’n v. PNC Bank N.A., No. 2:21-cv-00110-JRG (E.D.Tex.)
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`(“PNCIT’). Paper 6 (USAA’s Mandatory Notices Pursuant to 37 C.F.R.
`
`§ 42.8), 2; Paper 18 (PNC’s Updated Mandatory Notices Pursuant to
`
`37 C.F.R. § 42.8), 1. The parties also indicate that USAA asserted four
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`additional patents, including two children patents of the ’681 patent, against
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`PNCin a district court case captioned United Services Automobile Ass’n v.
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`PNCBank N.A., No. 2:20-cv-00319-IRG (F.D. Tex.) (“PNC I’). Id.
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`According to the parties, the district court consolidated PNC/ and PNCII
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`into a single action captioned United Services Automobile Ass’n v. PNC
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`Bank N.A., No. 2:20-cv-00319-JRG, Dkt, No. 144 (E.D. Tex. July 16, 2021).
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`Id. Lastly, the parties indicate that USAA asserted three additional patents,
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`one of which comes from the same family as the ’681 patent, against PNC in
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`IPR2021-01381
`Patent 10,013,681 Bl
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`a district court case captioned United Services Automobile Ass’n v. PNC
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`Bank N.A., No. 2:21-cv-00246-JRG (E.D.Tex.). Id.
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`In addition to PNC’s Petition, Wells Fargo Bank, N.A.(“Wells
`
`Fargo”), filed a petition challenging claims 1 30 of the °681 patent ina
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`proceeding captioned Wells Fargo Bank, N.A. v. United Services Automobile
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`Ass ’n, CBM2019-00028, Paper 2 (PTAB Mar. 27, 2019). Pet. 2; Paper6,3.
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`In CBM2019-00028, Wells Fargo’s Petition was denied because Wells
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`Fargo did not meet its burden of demonstrating that the ’681 patent qualifies
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`as a covered business method patentthat is eligible for review, as defined by
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`§ 18(d)(1) of the Leahy-Smith America Invents Act (“AIA”). CBM2019-
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`00028, Paper 14 (PTAB Oct. 1, 2019). Roughly a year later, Mitek filed a
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`petition challenging claims 1-30 of the 681 patent in a proceeding
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`captioned Mitek Systems, Inc. v. United Services Automobile Ass’n,
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`IPR2020-01650, Paper 1 (PTAB Sept. 18, 2020). In IPR2020-01650,
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`Mitek’s Petition was denied because Mitek did not present a sufficient
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`rationale to combinethe teachings ofthe asserted prior art in the manner
`
`required to accountforall the limitations of the challenged claims.
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`IPR2020-01650, Paper 21 (PTAB Mar. 9, 2021).
`
`B. The ’681 Patent
`
`The ’681 patent, titled “System and Method for Mobile Check
`
`Deposit,” issued from U.S. Patent Application No. 15/663,305 (“the ’305
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`application”), filed on July 28, 2017. Ex. 1001, codes (54), (45), (21), (22).
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`The ’681 patent has an extensive chain ofpriority that ultimately results in it
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`claiming the benefit of U.S. Patent Application No. 11/591,247 (Ex. 1042,
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`“the ’247 application”), which wasfiled on October 31, 2006, and issued as
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`U.S. Patent No. 7,873,200 B1 (Ex. 1038, “Oakes”). Ex. 1001, code (63).
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`4
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`The ’681 patent recognizesthat “[c]hecks typically provide a safe and
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`convenient methodfor an individual to purchase goods and/orservices.”
`Ex. 1001, 1:4-5. The 681 patentstates that, “[although] a check may
`provide a payor with a convenient and secure form of payment, receiving a
`
`check mayput ccrtain burdens on the paycc,” one of whichis the “time and
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`effort required to deposit the check.” Jd. at 1:50-53. For instance,
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`depositing a check by visiting a local bank branch and physically presenting
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`the check to a bankteller requires a certain time commitment on behalf of
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`the payee. Jd. at 1:53-60. The ’681 patentalso states that “[a] check may
`pose other burdensfor the payee.” Jd. at 1:61. For instance, a payee may be
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`limited in how it uses funds from a check because purchasing goods and/or
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`services using the check requires the payee to endorse the check and then
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`have a third party accept the check; such transactions often are disfavored
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`becausethe seller of the goods and/or services “maynot be willing to accept
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`the risk that .
`al 1:61—2:3.
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`.
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`. [there are] insufficient funds to cover the check.” Jd.
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`The ’681 patent purports to address these burdensby providing “a
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`convenient method of remotely depositing a check while enabling the payee |
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`to quickly access the funds from the check.” Ex. 1001, 2:8-10. Figure 2 of
`
`the °681 patent, reproduced below,illustrates one embodimentfor depositing
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`a check using a customer-controlled general purpose computer. Jd. at 2:64—
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`67.
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`
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`IPR2021-01381
`Patent 10,013,681 Bl
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`POenaany
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`BOI RAPesees,
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`rror
`a
`ut
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`
`Send Imago(s)/Lag File ta
`i
`ryagbercer
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`
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`
`
`
`
`
`
`
`
`aGeratuetCsieoe“ty ue
`ey t
`Customaissi
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`on ‘Identify!Account!AHLIBARBHOtooGitBAASWeon3
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`
`
`
`
`eeeecgeNagasUAT ats
`Re
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`nstrilet‘Gustomer, as
`6Che:
`ny
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`Instruct Customer to
`Provide Imageof Chesg,.
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`instruct Customer to Edit
`_image«of Check
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`Place imageiin es
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`Location
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`KaditionalDesired
`
`
`images?
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`Generate Log File 209
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`rver
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`FIGURE 2
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`°
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`The methodof depositing a checkillustrated in Figure 2, reproduced above,
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`begins with delivering or downloading a software componentto the
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`customer-controlled general purpose computerat step 200. Jd. at 6:48-49.
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`After downloading the software component, and assuming the customer-
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`controlled general purpose computer has an appropriate image capture
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`device, the customerbegins the deposit transaction by, for example, using a
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`browserapplication to access “a bank website, where a link may be available
`‘that causes the bank servertoinitiate a deposit transaction [at step] 201.” Id.
`at 7:17—23.
`‘
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`Asfurther shownin Figure 2, reproduced above, the customer
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`identifies the account into which he/she wishes to deposit the check at
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`6
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`
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`IPR2021-01381
`Patent 10,013,681 B1
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`step 202, identifies the amount of the check he/she wishesto depositin the
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`selected account at step 203, and then endorses the check at step 204.
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`Ex. 1001, 7:25—26, 7:42-44, 7:48-49. The customeruses the image capture
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`device to provide an image of the check at step 205.
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`fed. at 7:50-52. Lor
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`example, “[i]f the customeris instructed to take a digital photographof the
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`check using a digital camera, the customer may beinstructed as to the
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`position and orientation of the check, lighting, angle of [the] camera,
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`distance and focal length (zoom)of [the] camera, and so forth.” Jd. at 7:55—
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`60. The software componentnext causes the image of the check to be
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`presented to the customerfor editing (e.g., “by asking the customer to crop
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`and/or rotate the check imageto a predeterminedorientation [at step] 206”).
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`Id. at 8:22-25.
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`In another embodiment,after the user receives an image of the check,
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`Optical Character Recognition (“OCR”) may be performed on the Magnetic
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`Ink Character Recognition (“MICR”) line location of the check to determine
`information, such as the payor bank’s routing number, the account number,
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`and the check number. Ex. 1001, 9:17-22. The 681 patent explains that the
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`use of the OCR process permits reading (1) the bank’s routing number on ©
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`the checkitself so that it may be validated againsta list of valid routing
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`numbers, (2) both sides of the check to confirm that the check image
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`includes a front image and back image (to avoid the problem where two
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`front sides are scanned), and (3) the check amountlocation so that it may be
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`compared to an amountpreviously indicated by the user, such as in step 203.
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`Td. at 9:23-27, 9:35—46, 10:36-44.
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`The processillustrated in Figure 2 continues by placing “[aJn
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`appropriately edited image of the check”in a storage location at step 207
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`7
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`IPR2021-01381
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`and,if further images of the check are necessary at step 208, steps 205—207
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`may berepeated. Ex. 1001, 8:33-35. A log file also may be generatedat
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`step 209 “to collect data for processing or troubleshooting the deposit
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`transaction” and placed in a storage location, along with the various images
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`of the check. Jd. at 8:40-44. After receiving and editing the desired images
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`of the check, the log file is delivered to the bank server for processing the
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`deposit at step 210. Jd. at 8:45-47. If the bank server determinesthat the
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`images of the check and any corresponding data “are sufficient to go
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`forward with the deposit, the customer’s account may be provisionally
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`credited, and a confirmation page may be delivered to the customervia the
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`customer’s browserapplication [at step] 212.” Id. at 8:49—54.
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`C. Challenged Claims
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`Ofthe challenged claims, claims 1, 12, and 30 are independent claims.
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`Independentclaim 1 is directed to “[a]n image capture and processing
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`system for use with optical character recognition”; independent claim 12 is
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`directed to “[a] system for allowing a customer to deposit a check using the
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`customer’s own mobile device with a digital camera”; and independent
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`claim 30 is directed to “[a] non-transitory computer readable medium storing
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`an app thal, when dowuloaded and run by a custumer’s mobile device,
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`causes the customer’s mobile device to perform”certain operations.
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`Ex. 1001, 13:65-66, 15:18-20, 16:39-41. Claims 2-11 directly or indirectly
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`depend from independent claim 1, and claims 13—29 directly or indirectly
`depend from independent claim 12. Independentclaim 12 isillustrative of
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`the challenged claims and is reproduced below:
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`12. Asystem for allowing a customerto deposit a check
`using the customer’s own mobile device with a digital camera,
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`
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`IPR2021-01381
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`the system configured to ask the customerto log in using a user
`name and password, the system including:
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`a customer’s mobile device including:
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`camera software that works with the digital camera; and
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`a downloadedapp associated with a bank to workwith the
`camera softwareandto control submission of a check for deposit
`by causing the customer’s mobile device to perform:
`instructing the customer to have the digital camera
`take photos of front and back sides of the check;
`the
`displaying a graphical
`illustration to assist
`customerin having the digital camera take the photos of
`the check,theillustration assisting the customerin placing
`the digital camera a proper distance away from the check
`for taking the photos;
`presenting the photos of the check to the customer
`after the photos are taken;
`confirming that the mobile check deposit can go
`forward after
`the system performs optical character
`recognition on the check,the optical character recognition
`Uetenuining au amount of the check aid teading a
`Magnetic Ink Character Recognition (MICR)line; and
`using a wireless network, transmitting a copy ofthe
`photos over a public communications network from the
`customer’s mobile device and submitting the check for
`mobile check deposit in the bank after the photos of the
`check are presented to the customer;
`a computer associated with the bank programmed to
`update a balance of an accountto reflect the check submitted for
`mohile check deposit hy the customer’s mohile device,
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`the system configured to generate a log file for the mobile
`check deposit, the log file including an image of the check
`submitted for mobile check deposit.
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`Ex. 1001, 15:18-56.
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`
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`IPR2021-01381
`Patent 10,013,681 B1
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`D. Asserted Prior Art References
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`
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`PNCrelies on the prior art references set forth in the table below.
`me[eden[twRENo.
`
`
`
`
`
`
`
`
`
`rae
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`E. Asserted Grounds of Unpatentability
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`PNCchallenges claims 1—30 of the ’681 patent based on the asserted
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`grounds of unpatentability set forth in the table below. Pet. 5, 28-104.
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`Claims Challenged|35 U.S.C.§? Reference(s)
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`Il. RPI ARGUMENTS UNDER§ 312(a)(2) AND DISCRETIONARY
`DENTAT. ARGUMENTS UNDER§ 314(a)
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`Aswe explain below in detail, we are denying PNC’s Petition on the
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`merits because PNCfails to demonstrate that the challenged claims of the
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`°681 patent are not entitled to claim priority to the ’247 application. Thatis,
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`' Forclarity and ease of reference, we only list the first named inventor.
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`* The AIA, Pub. L. No. 112-29, 125 Stat. 284, 287-88 (2011), amended 35
`U.S.C. §§ 102 and 103, effective March 16, 2013. Because the ’681 patent
`claimspriority to the ’247 application, which wasfiled before this date, the
`pre-AIA versions of §§ 102 and 103 apply. Ex. 1001, code (63).
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`10
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`weare not persuaded by PNC’s arguments that the ’247 application does not
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`provide sufficient written description support for the following: (1) a
`portable/mobile device with an integrated digital camera; (2) the
`portable/mobile device “checking for crrors” before submitting a checkfor
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`remote deposit; and (3) the portable/mobile device transmitting a copy of a
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`check image having “a different electronic format than the [images captured
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`by/photos taken with] the digital camera.” As a result, we determinethat
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`PNC hasnot demonstrated that Oakes, Medina, and Roach qualify as prior
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`art to the challenged claims of the ’681 patent. Based on our determination
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`in this regard, we need not reach the following three issues: (1) whether
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`PNC’s Petition should be denied under § 312(a)(2) because Mitek should
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`have been named as RPI; (2) whether the arguments and evidence presented
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`in PNC’s Petition were considered and rejected previously in prior
`proceedings; and (3) whether the non-exclusivelist of six factors set forth in
`Fintiv warrants us exercising our discretion to deny institution of an IPR
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`whenthereis a related district court case involving the ’681 patent. See
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`Prelim. Resp. 5—21; Pet. Reply 1-8; PO Sur-reply 1-8. Because weare
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`denying the Petition on the merits, we make no reference in this Decision to
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`the documents and information protected as confidential information in this
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`proceeding. See Paper 19 (Order granting the parties’ Motionsto Seal).
`
`fl. ANALYSIS
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`A, Claim Construction
`In an IPR proceeding based ona petition filed on or after November
`13, 2018, such as here, claim terms are construed using the same claim
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`construction standardas in a civil action under 35 U.S.C. § 282(b). See 37
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`11
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`IPR2021-01381
`Patent 10,013,681 B1
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`C.F.R. § 42.100(b) (2019). That is, claim terms generally are construed in
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`accordancewith their ordinary and customary meaning, as would have been
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`understood by a person of ordinary skill in the art and the prosecution
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`history pertaining to the patent at issuc. fd. The ordinary and customary:
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`meaning of a claim term “is its meaning to the ordinary artisan after reading
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`the entire patent,” and “as of the effective filing date of the patent
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`application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1321 (Fed. Circ.
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`2005) (en bau).
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`PNCcontendsthat, for purposes of this proceeding, we should adopt
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`the constructions that USAA proposesin district court for the claim terms
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`“mobile device,” “portable device,” and “digital camera.” Pet. 9 (citing
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`Ex. 1002 94 33, 34 (Declaration of Dr. Brian Noble, Ph.D., in support of
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`Petition)). The constructions that USAA proposes in district court for these
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`three claim termsare set forth in the table below.
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`
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`“portable device”
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`“digital camera”
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`
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`“computing device capable of being
`casily moved manually”
`Nofurther construction necessary
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`
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`/d. (citing Ex. 1028, 15° (Joint Claim Construction and Prehearing
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`Statement)).
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`In response, USAA contends that, on November22, 2021, the district
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`court issued a claim construction order that expressly rejects the
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`3 All references to the page numbersin the Joint Claim Construction and
`Prehearing Statement refer to the page numbersinserted by PNCin the
`bottom, left-hand corner of each page in Exhibit 1028.
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`12
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`IPR2021-01381
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`constructions proposed by PNCin that forum and, instead, adopts USAA’s
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`proposedconstructions. Prelim. Resp. 22 (citing Ex. 1054, 18-19 (Claim
`Construction Memorandum Opinion and Order)). The district court’s
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`constructions arc summarized in the table below.
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`~"“Giaim Term
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`“mobile device”
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`
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`
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`
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`“portable device”
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`“mobile device associated with an
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`image capture device”
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`
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`
`
`
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`District Court’s Construction
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`“handheld computing device”
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`Plain meaning (apart from the
`district court’s construction of
`“mobile device”
`“computing device capable of being
`easily moved manually”
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`
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`Id. at 23 (citing Ex. 1054, 20). USAA, however,arguesthat, for purposes of
`this proceeding, PNC departs from its narrow constructions advancedin the
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`district court and, instead, requests that we adopt the constructions that
`USAA proposedin the district court. Jd. According to USAA, PNC’s
`approach to claim construction violates the requirement of 37 C.F.R.
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`§ 42.104(b)(3) that the Petition set forth “how the challenged claim is to be
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`construed.” Jd. at 24. USAA asserts that we should decline to institute an
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`IPR on thebasis that PNC fails to comply with this rule. Jd. at 25.
`|
`Although USAA takes issue with PNC’s approachto claim
`-construction for purposesof this proceeding, it does not appear that USAA
`disputes PNC’s position that we should apply the constructions for the claim
`terms “mobile device,” “portable device,” and “digital camera” that USAA
`proposedin the district court and, eventually, the district court adopted.
`. Compare Ex. 1028, 15, with Ex. 1054, 20. Because there is no dispute
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`13
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`IPR2021-01381
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`between the parties as to the construction of these three claim terms, we
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`need not construe them for purposes of this Decision. See, e.g., Nidec Motor
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`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
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`Cir. 2017) (“[W]c need only construc terms ‘that arc in controversy, and
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`only to the extent necessary to resolve the controversy.’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`B. Anticipation by Oakes and Obviousness Based, In Part, on Oakes
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`PNC contendsthat (1) claims 12—24, 26, 27, and 29 of the ’681 patent
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`are unpatentable under § 102(b) as anticipated by Oakes; (2) claims 12-24,
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`26, 27, and 29 of the ’681 patent are unpatentable under § 103(a) as obvious
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`over the combined teachings of Oakes and Medina; (3) claims 1-11, 25, 28,
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`and 30 of the ’681 patent are unpatentable under § 103(a) as obvious over
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`the combined teachings of Oakes and Roach; and (4) claims 1-11, 25, 28,
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`and 30 of the ’681 patent are unpatentable under § 103(a) as obvious over
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`the combined teachings of Oakes, Roach, and Medina. Pet. 28-104. PNC
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`argues that each of Oaks, Roach, and Medina qualifies as prior art to the
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`’681 patent because the challenged claims of the 681 patent are not entitled
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`to a priority date earlier than July 28, 2017. Jd. at 4-5, 10-27. To support
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`its priority argument, PNCasserts that the ’247 application, whichis the
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`ultimate parent application of the ’681 patent, does not provide sufficient
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`written description support for the following: (1) a portable/mobile device
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`with an integrated digital camera; (2) the portable/mobile device “checking
`for errors” before submitting a check for remote deposit; and (3) the
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`portablc/mobile devicc transmitting a copy of a check image having “a
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`different electronic format than the [images captured by/photos taken with]
`
`the digital camera.” Jd. at 10-27. In response, USAA contends that PNC
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`fails to demonstrate that Oakes, Medina, and Roach qualify as priorart to the
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`°681 patent. Prelim. Resp. 25-64.
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`After reviewing the parties’ arguments and evidence, we determine
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`that TNC has not demonstrated that Oakc3, Mcdina, and Roach qualifya3
`
`priorart to the challenged claimsof the ’681 patent and, as a result, PNC has
`
`not demonstrated that there is a reasonable likelihood that it would prevail in
`
`challenging any one of claims 1—30 of the ’681 patent. We begin our
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`analysis with the principles of law that generally apply to a priority dispute,
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`followed by an assessment of the level of skill in the art, and then we focus
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`on the parties’ contentions as to whether PNC demonstrates that Oakes,
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`Medina, and Roach qualify as prior art to the *681 patent.
`1. Principles ofLaw
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`“Tt is elementary patent law that a patent application is entitled to the
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`benefit of the filing date of an earlier filed application only if the disclosure
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`of the earlier application provides support for the claimsofthe later
`application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile
`
`USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quoting Jn re Chu, 66 F.3d
`
`292, 297 (Fed. Cir. 1995)). “To satisfy the written description requirement
`
`fin 8 112, first paragraph] the disclusure of the privr applicalivu must
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`‘convey with reasonable clarity to those skilled in the art that, as of the filing
`
`date sought, [the inventor] was in possession ofthe invention.” Id.
`
`(alteration in original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
`1563-64 (Fed. Cir. 1991).
`|
`“{T]he hallmark of written description is disclosure.” Ariad Pharm.,
`
`Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The
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`sufficiency of written description support is based on “an objective inquiry
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`into the four corners of the specification from the perspective of a person of
`ordinary skill in the art.” Jd. “Based on that inquiry, the specification must
`
`describe an invention understandable to that skilled artisan and show that the
`
`inventor actually invented the invention claimed.” fd. “[T]he level of detail
`
`required to satisfy the written description requirement” necessarily “varies
`
`depending on the nature and scope of the claims and on the complexity and
`
`predictability of the relevant technology.” Jd. The invention need not be
`
`described in haec verba, but a disclosure that merely renders obviousthe
`
`claims does not provide adequate written description support. Jd. at 1352.
`
`The written description requirement “guards against the inventor’s
`
`overreaching byinsisting that he recount his invention in such detail that his
`
`future claims can be determined to be encompassed within his original
`
`creation.” Vas-Cath, 935 F.2d at 1561 (quoting Rengo Co. v. Molins Mach.
`
`Co., 657 F.2d 535, 551 (3d Cir. 1981)); see also Cooper Cameron Corp.v.
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`KvaernerOilfield Prods., Inc., 291 F.3d 1317, 1323 (Fed. Cir. 2002) (“[A]
`
`broad claim is invalid when the entirety of the specification clearly indicates
`
`that the invention is of a much narrowerscope.”). However, “[a] claim will
`
`not be invalidated on section 112 grounds simply because the embodiments
`
`of the specification do not contain examples explicitly covering the full
`
`scope of the claim language.” LizardTech, Inc. v. Earth Res. Mapping, Inc.,
`
`424 F.3d 1336, 1345 (Fed. Cir. 2005); Rexnord Corp. v. Laitram Corp., 274
`
`F.3d 1336, 1344 (Fed. Cir. 2001) (“[A]n applicant is not required to describe
`
`in the specification every conceivable and possible future embodimentofhis
`
`invention.”); see also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93
`
`F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (“If [the applicant] did not consider the
`
`precise location of the lockout to be an elementof his invention, he was free
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`to draft [his claim] broadly (within the limits imposedbythepriorart) to
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`exclude the lockout’s exact location as a limitation of the claimed invention.
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`Such a claim would not be unsupported by the specification even thoughit
`
`would beliterally infringed by undisclosed embodiments.”(citation
`
`omitted)).
`
`2. Level ofSkill in the Art
`
`There is sufficient evidence in the current record that enablesus to
`
`determine the knowledgelevel ofa person ofordinary skill in theart.
`
`Relying on the testimony of Dr. Noble, PNC argues the following:
`
`. at the
`.
`[a] person of ordinary skill in the relevantfield of art .
`relevant time (2006-2017) of the ’681 patent would have had a
`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. Less
`work experience may be compensated by a higher level of
`education, and vice versa.
`Pet. 10 (citing Ex. 1002 J¥ 37, 38). In response, USAA states that, “[flor the
`
`purposesof[its] Preliminary Response only, USAA applies the level of skill
`
`in the art proposed by [PNC].” Prelim. Resp. 21. To the extent necessary,
`and for purposes of this Decision, we adopt PNC’s assessmentofthe level of
`skill in the art becauseit is supported by the testimony of Dr. Noble andit is
`
`consistent with the ’681 patent.
`
`3. Priority Dispute
`
`At the outset, we reiterate that the °305 application that issued as the
`
`’681 patent was filed on July 28, 2017. Ex. 1001, codes (21), (22). The
`
`’681 patent claims priority through a series of continuation applications back
`
`to the 247 application. Id. at code (63). The parties agree that the
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`17
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`specification of the 681 patentis substantively identical to the specification
`
`of the 247 application. Pet. 27 (stating that “Oakes issued from the °247
`[application], and shares the specification with the 681 patent.”); Prelim.
`Resp. 24 n.6 (stating that the °247 application “‘is the first application in a
`chain of direct continuation applications leading to the ’681 patent and thus
`
`substantively identical to the ’681 patent specification”).
`
`The ’247 application wasfiled on October 31, 2006, and issued as
`
`Oakes on January 18, 2011. Ex. 1038, codes (21), (22), (45). Medina issued
`on September 8, 2015, and claims the benefit of a provisional application
`filed on June 8, 2010. Ex. 1041, codes (43), (63). Roach was published on
`
`June 20, 2013, and claimsthe benefit of a continuation-in-part application
`
`filed on December30, 2008. Ex. 1040, codes (43), (63). On their faces,
`
`Oakes, Medina, and Roach qualify as prior art to the challenged claims of
`
`the ’681 patent only if the challenged claims are notentitled to claim priority
`
`back to the °247 application. See Pet. 4—5.
`
`PNC contendsthat the ’681 patent’s priority claim to the ’247
`
`application is improper because the ’247 application does not provide
`
`sufficient written description support for the claims of the 681 patent. See
`
`Pet. 4—5, 10-11. More specifically, PNC argues that the °247 application
`
`does not provide sufficient written description support for the following
`limitations: (1) “a portable device” and “a digital camera,” as recited in
`independentclaim 1, and “a customer’s mobile device” and “a digital
`
`camera,” as recited in independent claim 12, and similarly recited in
`independent30 (id. at 13-24); (2) “the portable device .
`.
`. checking for
`
`errors,” as recited in independentclaim 1, and “the customer’s mobile device
`
`... checking for errors,” as recited in independent claim 30, and similarly
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`recited in dependentclaim 28 (id. at 24—25); and (3) “the transmitted copy of
`
`the electronic images .
`
`.
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`. having a different electronic format than the
`
`images captured with the digital camera,” as recited in independentclaim 1,
`
`and “the copy has a different format than the photos taken with the digital
`
`camera,” as recited in dependent claim 25 (id. at 26—27). See Ex. 1001,
`
`14:1-30, 14:55—56, 15:18—23, 16:23-25, 16:32—33, 16:38-43. Put simply,
`
`PNCcontendsthat the lack of written description support in the ’247
`application for these limitations “is fatal to the °681 patent’s priority claim.”
`
`Id. at 14.
`
`In response, USAA asserts that PNC “fails to put forth credible
`
`evidence supporting its assertion that the °681 patent claims lack support in
`
`the original specification.” Prelim. Resp. 26. USAA contendsthat the ’247
`
`application provides sufficient written description support forall the
`
`limitations identified by PNC. Jd. at 30-54 (addressing a portable/mobile
`
`device with an integrated digital camera), 55-61 (addressing the
`
`portable/mobile device “checking for errors” before submitting a check for
`
`remote deposit), 61-64 (addressing the portable/mobile device transmitting a
`
`copy of a check image having “a different electronic format than the [images
`
`captured by/photos taken with] the digital camera’’). From this, USAA
`
`submits that PNC fails to demonstrate that Oakes, Medina, and Roach
`
`quality as prior art to the ’681 patent and, therefore, that institution should.
`
`be denied. Jd. at 25-26. We address the grouping of limitations identified
`
`above in turn.
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`IPR2021-01381
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`a. “a portable device” and “a digital camera”/“a customer’s mobile
`device” and “a digital camera”
`Beginning withthe first grouping of disputed limitations (which we
`
`refer to as “the device limitations”), we clarify the issue presented with
`
`respect to these limitations.*
`PNCcontendsthat the ’247 application does not provide sufficient
`
`written description support for the device limitations because these
`
`limitations are broad enoughto include “a portable/mobile device with an
`
`integrated digital camera” and such a device is not described in the *247
`
`application. See Pet. 13-24. Notably, elsewhere, PNC affirmatively
`
`contendsthat the ’247 application discloses these limitations—infact,
`PNC’s anticipation ground is predicated on this contention. See Pet. 28-33
`(arguing that Oakes, the patent that issued from the ’247 application, alone
`
`discloses this limitation). Accordingly, for its written description argument,
`
`PNCtakes issue only with the scope of these limitations. See id. at 31-32
`
`(addressing the interplay between the written description and anticipation
`arguments). Thus, this case is unlike many written description disputes, in
`
`which a party contendsthat the priority documentfails to include a
`
`disclosure of the limitations. Here, the issue is speci
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