Trials@uspto.gov
`571-272-7822
`
`Paper 21
`Date: January 20, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PNC BANK,N.A.,
`Petitioner,
`
`Vv.
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`
`IPR2021-01071
`Patent 10,482,432 B1
`
`Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN,and
`JULIET MITCHELL DIRBA,Administrative Patent Judges.
`
`McMILLIN,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motionsto Seal and Entering Protective Order
`37 CFR. §§ 42.14, 42.54
`
`
`571-272-7822
`
`Paper 21
`Date: January 20, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PNC BANK,N.A.,
`Petitioner,
`
`Vv.
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`
`IPR2021-01071
`Patent 10,482,432 B1
`
`Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN,and
`JULIET MITCHELL DIRBA,Administrative Patent Judges.
`
`McMILLIN,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motionsto Seal and Entering Protective Order
`37 CFR. §§ 42.14, 42.54
`
`
`
`IPR2021-01071
`Patent 10,482,432 B1
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background and Summary
`
`PNC Bank, N.A.(“Petitioner”) filed a Petition to institute an inter
`
`partes review of claims 1-23 of U.S. Patent No. 10,482,432 B1 (Ex. 1001,
`
`“the ’432 patent”) pursuant to 35 U.S.C. § 311 et seq. Paper 4 (“Petition” or
`““Pet.”), United Services Automobile Association (“Patent Owner’)filed a
`Preliminary Response. Paper8 (“Preliminary Response”or “Prelim.
`
`Resp.”). Pursuant to our authorization (see Paper 12, 2), Petitioner filed a
`
`Reply, Paper 13 (“Reply”), and Patent Ownerfiled a Sur-reply, Paper 17
`(“Sur-reply”).!
`
`Wehaveauthority under 35 U.S.C. § 314, which provides that an
`
`inter partes review may notbeinstituted unless the information presented in
`
`the Petition and the Preliminary Response showsthat“there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challengedin the petition.” 35 U.S.C. § 314(a) (2018). After
`
`considering the Petition, the Preliminary Response, the Reply, the Sur-reply,
`
`and the evidence of record, we do notinstitute an inter partes review as to
`
`the challenged claimsof the ’432 patent.
`
`B.
`
`Related Proceedings
`
`The parties identify United Services Automobile Association v. PNC
`
`Bank N.A., No. 2:20-CV-00319-JRG (E.D. Tex.) (‘the District Court
`
`litigation”) as a related proceeding in which the °432 patentis asserted.
`
`Pet. 2; Paper 6, 2. The parties also identify United Services Automobile
`
`' Papers 8, 13, and 17 werefiled under seal, and Papers 11, 16, and 20,
`respectively, are the corresponding public versions. This Decision does not
`refer to any information that was redacted from the public documents.
`2
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`
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`IPR2021-01071
`Patent 10,482,432 B1
`
`Association v. PNC Bank N.A., No. 2:21-CV-00110-JRG (E.D. Tex.) as a
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`related proceeding in which U.S. Patent No. 10,013,681, a parent of the °432
`
`patent is asserted. Pet. 2; Paper 6, 2-3.
`The parties further identify IPR2021-01074, an additional interpartes
`proceeding challenging the °432 patent, that was filed concurrently with this
`
`proceeding. Pet. 3; Paper 6,3. The parties additionally identify post-grant
`
`proceedings involving patents in the °432 patent’s family: CBM2019-00027
`
`(institution denied (Paper 13)) (challenging U.S. 9,224,136); and IPR2020-
`
`01650 (institution denied (Paper 21)) and CBM2019-00028(institution
`
`denied (Paper 14)) (challenging U.S. 10,013,681). Pet. 3; Paper 6,3. And,
`
`although not identitied by the parties, there are fuur other post-grant
`
`proceedingsfiled by Petitioner challenging patents in the °432 patent’s
`
`family: IPR2021-01076 and IPR2021-01077 (challenging U.S. 10,621,559),
`
`IPR2021-01381 (challenging U.S. 10,013,681), and IPR2022-00075
`
`(challenging U.S. 9,224,136).
`
`C.
`
`The ’432 Patent
`
`The °432 patent claims priority based on a series of continuation
`
`applications which began with the filing of U.S. Patent Application
`
`No. 11/591,247 (the “’247 application”) (Ex. 1042) on October 31, 2006.
`
`Ex. 1001, code (63), 1:7-21. As these applications are continuations, the
`
`Specification of the ’432 patent is substantively the same as the
`
`Specification ofthe earliest filed application in this chain, the ’247
`
`application. Compare Ex. 1001 (the ’432 patent), with Ex. 1042 (the ’247
`
`application); see also Pet. 30 (“Oakes [Ex. 1038] is the patent that issued
`
`from the ’247 application, and shares the specification with the °432
`
`patent.”); Prelim. Resp. 21 n.6 (“The Petitioner refers to the ‘’247
`3
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`
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`IPR2021-01071
`Patent 10,482,432 B1
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`application,’ whichis the first application in a chain of direct continuation
`
`applications leading to the ’432 patent and thus substantively identical to
`
`the °432 patent specification.”). As related to the issues in this case, the text
`
`of the Specification of the ’432 patent (Exhibit 1001) is identical to the text
`
`of the ’247 application (Exhibit 1042) and Oakes (Exhibit 1038), the patent
`
`that issued from the 247 application. Ex. 1038, code (21); see also Ex.
`
`1001, 1:18-19.
`
`The °432 patentis titled “Systems and Methods for Remote Deposit of
`
`Checks.” Ex. 1001, code (54). The ’432 patent explains that “[c]hecks
`
`typically provide a safe and convenient method for an individual to purchase
`
`goods and/or services” but “receiving a check may put certain burdens on
`the payee, such as the time and effort required to deposit the check. For
`example, depositing a check typically involves going to a local bank branch
`
`and physically presenting the check to a bankteller.” Jd. at 1:22—24, 2:1-6.
`
`In addition, traditional check deposit and clearing do not provide quick
`
`access to the funds from the check. /d. at 2:1-27. Thus, the ’432 patent
`
`explains, “there is a need for a convenient method of remotely depositing a
`
`check while enabling the payee to quickly access the funds from the check.”
`
`Id. at 2:27-30. The ’432 patent addresses this need by systems and methods
`
`for remote deposit of checksfacilitated by a financial institution, whereby
`
`“[a] customer’s general purpose computer and image capture device may be
`
`leveraged to capture an image of a check and deliver the imageto financial
`
`institution electronics” such that a “[check deposit] transaction can be
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`automatically accomplished utilizing the images and data thus acquired.”
`
`Id., code (57) (Abstract).
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`IPR2021-01071
`Patent 10,482,432 B1
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`Figure 1 of the °432 patent is reproduced below.
`
` o_o
`
`FIGURE1
`
`Figure 1 depicts a system in which the °432 patent’s remote deposit systems
`
`and methods may be employed. Jd. at 3:15—16, 3:46-47.
`
`Figure 1 illustrates a system 100 including: (i) a “customer-
`
`controlled, general purpose computer 111” used by an account owner110,
`
`e.g., a bank customer located at the customer’s private residence;(ii) an
`
`“image capture device 112 [that] may be communicatively coupled to the
`computer”; and(iii) financial institutions 130, 140, and 150, whichare retail
`
`banks, investment banks, investment companies, or other type ofentities
`
`capable of processing a transaction involving a negotiable instrument. Jd.
`
`at 3:46-4:64, 5:4-14. Account owner 110 ownsan account 160 held at
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`financial institution 130. Jd. at 5:26-31. When account owner 110 wishes
`
`to deposit a check into the account, “[a]ccount owner 110 may deposit the
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`check into account 160 by converting the check into electronic data and
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`sending the data to financial institution 130.” Jd. at 5:62-65. “[A]ccount
`owner 110 may convert the checkinto a digital image by scanningthe front
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`
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`IPR2021-01071
`Patent 10,482,432 Bl
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`and/or back of the check using image capture device 112.” Id. at 6:4—7.
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`Account owner 110 then sends the imageto financial institution 130. Id.
`
`at 6:6-9. Uponreceiving the image,financial institution 130 communicates
`
`with other financial institutions (e.g., 140 and 150) to clear the check and-
`credit the funds to account 160. Jd. at 6:12—49.
`|
`
`Figure 2 of the ’432 patent is reproduced below.
` Instruct Customer to
`
`Provide Image of Check|
`—
`instruct Customerto Edit
`Image of Check
`
`206
`
`Place image in Storage
`Location
`207)
`
`208
`Additional Desirea
`Images?
`
`{ \ I j |{ { |1 I
`
`| | |I | {| | || | I|
`
`Generate Log Fife
`
`209
`
`Send Image(s)/Log File to
`Server
`102
`
`FIGURE 2
`
`
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`IPR2021-01071
`Patent 10,482,432 Bl
`Figure 2 illustrates a method for facilitating deposit of a check from the
`customer-controlled general purpose computer. /d. at 3:17—19, 6:50-53.
`
`The °432 patent explains that the steps in Figure 2 “may be viewedas
`
`performed by a server computerassociated with a financial institution, in
`
`conjunction with a software componentthat operates from a customer-
`
`controlled general purpose computer.” Jd. at 6:52—58. More particularly,
`
`“the darker boxes[in Figure 2] indicate steps that are performed by the
`
`server, for example by delivering information to the user through the user’s
`
`browserapplication,” while “[the] lighter boxes inside 211 indicate steps
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`that are performed by the software component, as it executes on the
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`customer computer,” with “alternative configurations. .
`
`. readily achievable
`
`by moving functions from server to software componentor vice-versa.” Id.
`
`at 6:59-7:2. As shown in Figure 2, after downloading or otherwise
`
`accepting a software component(e.g., from a financial institution’s server)
`
`to be installed on the customer-controlled general purpose computer 200, the
`
`customerhas the capability to make deposits from his general purpose
`
`computer. /d. at 7:3-42. After identifying a deposit account, identifying an
`amountof a check or other negotiable instrument the customer wishes to
`
`deposit, and endorsing the check (steps 201-204 in Figure 2), “[t]he
`
`customer may next be instructed to provide an image ofa front side of a
`
`check 205, for example, by using an image capture device.” Jd. at 7:47-8:7.
`
`For example, “the customer maybe instructed to place the check face down
`
`on a flatbed scanner, and mayfurther be instructed as to the location and
`
`orientationof the check on the scanner,”or “the customeris instructed to
`
`take a digital photograph of the check using a digital camera. .
`
`. [and]
`
`instructed as to the position and orientation of the check,lighting, angle of
`7
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`IPR2021-01071
`Patent 10,482,432 Bl
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`camera, distance and focal length (zoom) of camera, and so forth.” Jd.
`
`at 8:5-21. The software component on the customer’s device may guide the
`
`customerby providing a graphicalillustration of how the customer should
`
`provide the image. Jd.
`
`The software component on the customer’s device “may next cause
`
`the image of the check to be presented to the customerfor editing, e.g. by
`
`asking the customerto crop and/or rotate the check image to a
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`predeterminedorientation 206.” Jd. at 8:45-48. The customer mayalso be
`
`asked to indicate the bottom right corner of the check image, and the image
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`may be croppedto contain only the check image, thereby removing a portion
`
`of the originally obtained image. Jd. at 8:51-55. After obtaining andstoring
`
`(in a storage location, step 207) imagesoffront and back sides of the check,
`
`a log file may be generated 209 to collect data for processing or
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`troubleshooting the deposit transaction. Jd. at 8:56-64. Once the desired
`
`imagesare collected and edited, they are delivered to the bank server for
`
`‘processing the deposit 210. Jd. at 9:1-3. If the bank’s (or otherfinancial
`
`institution’s) server determinesthat the delivered images and any
`
`corresponding data are sufficient to go forward with the deposit, the
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`customer’s accountis provisionally credited, and a confirmation page is
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`delivered to the customer via customer's browser application 212. Id. at 9:3-
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`11.
`
`D.
`
`Challenged Claims
`
`Petitioner challenges all 23 claims of the ’432 patent. Pet. 5. Claim 1
`
`is the only independent claim. Ex. 1001, 14:23-48. Claim 1 recites:
`
`
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`IPR2021-01071
`Patent 10,482,432 Bl
`
`1. A system comprising:
`a customer’s mobile device including a downloadedapp,the
`downloaded app provided by a bank to control check
`deposit by causing the customer’s mobile device to
`perform:
`instructing the customerto have a digital camera take
`a photo of a check;
`giving an instructionto assist the customerin placing
`the digital cameraat a proper distance away from
`the check for taking the photo;
`presenting the photo of the check to the customer
`after the photo is taken with the digital camera;
`using a wireless network, transmitting a copy ofthe
`photo from the customer’s mobile device and
`submitting the check for mobile check deposit in
`the bank after presenting the phulo of the check
`to the customer; and
`a bank computer programmed to update a balance of an
`account to reflect an amountof the check submitted for
`mobile check deposit by the customer’s mobile device;
`wherein the downloaded app causes the customer’s mobile
`device to perform additional steps including:
`confirming that the mobile check deposit can go
`forward after optical character recognition is
`performed on the check in the photo; and
`checking for errors before the submitting step.
`
`Id. Our decision notto institute trial is based on our analysis of the
`
`arguments and evidencerelated to independentclaim 1.
`
`E.
`
`The Asserted Ground
`
`Petitioner challenges claims 1—23 of the ’432 patent based on the
`
`groundset forth in the table below.
`
`
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`IPR2021-01071
`Patent 10,482,432 Bl
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`Claims Challenged
`
`35 U.S.C.§
`
`Reference(s)/Basis
`Oakes”, Roach’
`
`Pet. 5. Petitioner supports its assertions of unpatentability of the challenged
`
`claims of the ’432 patent with the Declaration of Brian Noble, Ph.D.
`(Ex. 1002).
`.
`
`Il.
`
`ANALYSIS
`
`Legal Standards
`A.
`A patent claim is unpatentable as obviousif the differences between
`the claimed subject matter and the prior art are such that the subject matter,
`as a whole, would have been obviousat the time the invention was madeto a
`person having ordinary skill in the art to which said subject matter pertains.
`
`KSR Int’! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousnessis resolved on the basis of underlying factual determinations
`
`including: (1) the scope and content ofthe priorart; (2) any differences
`
`between the claimed subject matter and the priorart; (3) the level of ordinary
`
`skill in the art; and (4) objective evidence of non-obviousness. Graham v.
`
`John Deere Co., 383 U.S. 1, 17-18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challengesis
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity .. . the evidence that supports the
`groundsfor the challenge to each claim’’)). Petitioner cannotsatisfy its
`
`* US 7,873,200 B1, filed Oct. 31, 2006, issued Jan. 18, 2011 (Ex. 1038).
`3 US 2013/0155474 A1, published June 20, 2013 (Ex. 1040).
`_
`10
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`
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`IPR2021-01071
`Patent 10,482,432 Bl
`
`burden of proving obviousness by employing “mere conclusory statements.”
`Inre Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`B.
`Level of Ordinary Skill in the Art
`
`With regard to the level of ordinary skill in the art, Petitioner contends
`
`that:
`
`A person ofordinary skill in the relevant field or art
`(“POSITA”’)at relevant times (2006-2017) of the °432 patent
`would have had a Bachelor’s degree in computerscience,
`computer engineering, electrical engineering, or equivalent
`field, and two years of experience in software development and
`programmingin 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. 12 (citing Ex. 1002 { 38). Patent Ownernotesthat “[fJor the purposes
`of this Preliminary Response only, [Patent Owner] applies the level of skill
`
`in the art proposed by Petitioner.” Prelim. Resp. 18. For purposesofthis
`
`decision, we adopt Petitioner’s definition of the level of ordinary skill in the
`
`art becauseit is consistent with the ’432 patent and the assertedart.
`
`C.
`
`Obviousness Ground Based on Oakes and Roach
`
`Petitioner contends that the subject matter of claims 1-23 would have
`
`been obvious over the combination of Oakes and Roach. Pet. 5, 30—93.
`Petitioner argues that Oakes and Roach are prior art because the claims of
`the °432 patent are not entitled to a priority date earlier than July 28, 2017.
`
`Id. at 12-30. In support of this contention, Petitioner argues that the
`
`specification of the ’247 application (Ex. 1042), the ultimate parent
`
`application of the ’432 patent, does not provide written description support
`
`for (1) a “mobile device” that has an integrated “digital camera” and (2)
`
`11
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`“checking for errors before the submitting step” as recited in the claim 1 of
`
`the °432 patent. Jd. Patent Owner contendsthat Petitioner fails to establish
`
`a reasonable likelihood of succeeding on this challenge because Petitioner
`
`fails to sufficiently show that Oakes and Roach qualify as prior art. Prelim.
`Resp. 22-58.
`|
`Having reviewed the parties’ arguments and evidence, we determine
`
`that Petitioner has not demonstrated a reasonable likelihood thatit will
`
`prevail in showing that Oakes and Roacharepriorart,* and asaresult,
`
`Petitioner fails to sufficiently show that any claim would have been
`
`unpatentable over Oakes and Roach.
`
`1.
`
`The '432 Patents Privrity Claim
`
`The application that led to the °432 patent was filed on May18, 2018.
`
`Ex. 1001, code (22). As noted above, the ’432 patent claimspriority through
`
`a series of continuation applications back to U.S. Application No.
`
`11/591,247 (“the 247 application”). Jd. at code (63). The parties agree that
`
`the Specification of the ’432 patent is substantively identical to the
`
`specification of the ’247 application. Pet. 30; Prelim. Resp. 21 n.6.
`
`The ’247 application was filed on October 31, 2006, andit issued as
`
`Oakes on January 18, 2011. Ex. 1038, codes (22), (45). Roach was
`
`published on June 20, 2013, and it claims the benefit of an application filed
`
`4 “Tn an inter partes review, the burden of persuasionis on the petitioner to
`prove ‘unpatentability by a preponderance of the evidence,’ .
`.
`. and that
`burden nevershifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C.
`§ 316(e)). Although the burden of production can shift to Patent Owner(id.
`at 1380), Petitioner has the ultimate burden to persuade us that Oakes and
`Roachare priorart to the °432 patent (see id. at 1378).
`12
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`on December30, 2008. Ex. 1040, codes (22), (43), (63). Thus, Oakes and
`
`Roacharepriorart only if the °432 patent is not entitled to claim priority to
`
`the °247 application. See Pet. 4—S.
`
`2. The Parties’ Dispute
`
`Petitioner contendsthat the °432 patent’s priority claim to the ’247
`
`application is improper because the ’247 application does not provide
`
`written description support for the claims of the °432 patent. Pet. 1, 12-13.
`
`Specifically, Petitioner asserts the Specification of the °432 patent does not
`
`provide written description support for: (1) “a mobile device with an
`
`integrated digital camera” (id. at 15—27)° and (2) “checkingfor errors before
`
`the submitting step” (id. at 27-30). Petitioner contendsthat “[t]his lack of
`
`written description support is fatal to the priority claim of all claims of the
`
`°432 patent.” Id. at 16.
`
`In response, Patent Ownerasserts that Petitioner “fails to put forth
`
`credible evidence supporting its assertion that the °432 patent claims lack
`support in the original specification.” Prelim. Resp. 23. Patent Owner
`
`contendsthat the ?247 application provides written description support for:
`
`(1) “mobile device with an integrated digital camera” (id. at 27-52) and (2)
`
`“checking for errors before submitting the check”(id. at 52-58). From this,
`
`Patent Ownersubmits that Petitioner fails to sufficiently show that Oakes
`
`> Petitioner relies on Patent Owner’s allegations in the District Court
`litigation that “claim 1 is broad enough to read on a mobile device with an
`integrated digital camera” based on Patent Owner’s “construction and
`application of the terms ‘mobile device’ and ‘digital camera”” as recited in
`claim 1. See Pet. 10-13, 15.
`
`13
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`and Roach qualify as prior art to the °432 patent and, thus, that institution
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`should be denied. Jd. at 22—23.
`
`3.
`
`Analysis of Written Description Support
`
`a)
`
`Principles ofLaw
`
`“Tt is elementary patent law that a patent application is entitled to the
`
`benefit of the filing date of an earlier filed application only if the disclosure
`
`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). ‘“lo satisfy the written
`
`description requirement[in § 112,] the disclosure of the prior application
`
`must ‘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
`
`sufficiency of written description support is based on “an objective inquiry
`
`into the four comers 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 showthat the
`
`inventor actually invented the invention claimed.” Jd. “The 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.” /d. 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.
`
`14
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`The written description requirement “guards against the inventor’s
`
`overreaching by insisting that he recount his invention in such detail that his
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`future claims can be determined to be encompassed withinhis original
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`creation.” Vas-Cath, 935 F.2d at 1561; see also Cooper Cameron Corp.v.
`
`Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1323 (Fed. Cir. 2002) (“[A]
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`broad claim is invalid when the entirety of the specification clearly indicates
`
`that the invention is of a much narrowerscope.”’). However, “[a] claim will
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`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 Resource Mapping,
`
`Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005); Rexnord Corp. v. Laitram Corp.,
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`274 F.3d 1336, 1344 (Fed. Cir. 2001) (“An applicant is not required to
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`describe in the specification every conceivable and possible future
`
`embodiment ofhis 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 considerthe precise location ofthe lockout to be an elementofhis
`
`invention, he was free to draft [his claim] broadly (within the limits imposed
`
`by the priorart) to exclude the lockout’s exact location as a limitation of the
`
`claimed invention. Such a claim would not be unsupported by the
`
`specification even though it would beliterally infringed by undisclosed
`
`embodiments.”(citations omitted)).
`
`15
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`IPR2021-01071
`Patent 10,482,432 Bl
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`b)
`
`“a mobile device with an integrated digital camera”
`
`Webegin ouranalysis by clarifying the issue presented with respect to
`
`Petitioner’s first argument.® Petitioner contends the ’247 application does
`
`not provide sufficient written description support for claim 1, because claim
`
`1 is broad enoughto include “a mobile device with an integrated digital
`camera”’ and such a deviceis not described in the ’247 application. See
`
`Pet. 15-27. Notably, elsewhere, Petitioner affirmatively contends that the
`
`°247 application discloses the relevant limitations of claim1 (i.e., “a
`
`customer’s mobile device”and “digital camera’’)—in fact, Petitioner’s
`
`obviousness argumentis predicated on this contention. See Pet. 33, 36-37
`
`(arguing that Oakes, the patent that issued from the ’247 application, alone
`
`teaches these limitations). Accordingly, for its written description argument,
`
`Petitioner takes issue only with the scope of the claim. See id. at 17-18, 36—
`
`37 (addressing the interplay between the written description and obviousness
`
`arguments). Thus, this case is unlike many written description disputes, in
`
`which a party contendsthat the priority documentfails to include a
`
`disclosure of a claim limitation. Here, the issue is specifically whether the
`
`claim is overbroad (and thus lacking in written description support) because
`it allows the digital camera to be integrated into the mobile device.
`
`Petitioner begins its argument with two premises, which we assume
`
`arguendo to be true for purposesof this Decision. First, Petitioner contends
`
`° We consider only the argumentspresented in the Petition. Although we
`reject these arguments, our Decision should not be construed as an
`independent assessment of whether the °247 application provides written
`description support for the invention claimedin the °432 patent.
`7 Claim 1 does not include this language;it recites a “customer’s mobile
`device” and a “digital camera.” Ex. 1001, 14:23-48.
`16
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`
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`IPR2021-01071
`Patent 10,482,432 Bl
`
`that, “[flor purposes of this IPR proceeding,” we should understand claim 1
`
`to be broad enoughto include a mobile device with an integrated digital
`
`camera. Pet. 10—13, 15; see also Ex. 1054 (District Court’s Claim
`
`Construction Order), 14—20 (construing the claim language in this manner).
`
`Second,Petitioner contends that the ’247 application—to which the °432
`
`patent claims priority—doesnot describe a mobile device with an integrated
`
`digital camera. Pet. 16; see also id. at 16—27 (analysis supporting assertion);
`
`cf. Prelim. Resp. 28-29 (appearing to agree that the document does not
`
`“expressly stat[e] that the two may bein a single housing”).
`
`But, even accepting these premises, we disagree with the conclusion
`
`Petitioner asks us to draw from them. In particular, Petitioner appears to
`
`contend that we should find that the ’247 application does not provide
`
`written description support for claim 1 merely because the scope ofthe
`
`claim includes a configuration that is not expressly described in that
`
`document. See Pet. 15-16, 21. But this reflects a misunderstanding of the
`
`law—a claim can be broader than the embodiments disclosed. See, e.g.,
`
`Rexnord, 274 F.3d at 1344 (“An applicantis 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) (noting that a claim maybe“literally
`
`infringed by undisclosed embodiments”andyet sufficiently supported);
`
`Application ofSmythe, 480 F.2d 1376, 1384 (C.C.P.A. 1973) (“We cannot
`
`agree with the broad proposition .
`
`.
`
`. that in every case where the description
`
`of the invention in the specification is narrower than that in the claim there
`
`has beena failure to fulfill the description requirementin section 112.”).
`
`17
`
`
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`IPR2021-01071
`Patent 10,482,432 Bl
`
`There are situations where a claim’s breadth results in a lack of
`
`written description support, but Petitioner fails to show that sucha situation
`is present here. In its argument, Petitioner primarily relies on Reckitt, but
`this case is unavailing. See Pet. 15-17, 21, 37 (citing Reckitt Benckiser LLC
`
`|
`
`v. Ansell Healthcare Products LLC, IPR2017-00063, Paper 38 (Jan. 30,
`
`2018)). First, Reckitt is a non-precedential Board decision, which is not
`
`binding on this panel.* Second, and perhaps more importantly, the case is
`
`readily distinguishable onits facts. See Prelim. Resp. 27-28, 39-40
`
`(distinguishing Reckitt). In particular, in Reckitt, the panel found that claims
`
`lacking a pre-vulcanization requirement lacked written description support
`
`in the priority document, noting that “pre-vulcanization [was] not some
`
`ancillary feature but rather the very heart ofthe invention.” Reckitt,
`
`IPR2017-00063, Paper 38 at 12, 14-15 (emphasis added). However,
`
`“Petitioner identifies nothing whatsoeverin the °247 application suggesting
`
`that it is important—muchless the ‘very heart of the invention’—that the
`
`described image capture device be in a housing entirely separate from the
`
`described general purpose computer.” Prelim. Resp. 28—29; see also id. at
`
`39. In fact, the Petition identifies (and we perceive) no reason whythe
`
`relative location of the general purpose computer and the image capture
`
`device is even relevantto the invention described in the ’247 application.
`
`8 In addition, written description is an “intensively fact-oriented” inquiry,
`and consequently, another case, with its “necessarily varied facts,”is highly
`unlikely to “control[] the resolution of the written description issue in this
`case.” Indivior UK Ltd. v. Dr. Reddy’s Lab’ys S.A., 18 F.4th 1323, 1329
`(Fed. Cir. 2021).
`
`18
`
`
`
`IPR2021-01071
`Patent 10,482,432 Bl
`
`Stepping back, the ’247 application describes an invention for remote
`
`deposit of a check using a general purpose computer(such asa laptop) that
`
`receives an image of the check from an associated image capture device
`
`(such as a digital camera). F.g., Ex. 1042 F¥ 7-8, 20, 25, 32, 43. Whatis
`
`important to the inventionis that the image capture device and general
`
`purpose computer are communicatively coupled, not their relative location.
`
`See, e.g., id.; accord Prelim. Resp. 29-30. Moreover, the °247 application
`
`does notlimit its invention to only those remote deposits performed using a
`general purpose computerthat is separate from an imagecapture device.?
`
`Indeed, the ’247 application broadly describes the image capture device,
`
`noting it can be “a scanneror digital camera” or “other image capture
`apparatus.” Ex. 1042 4 8, 25. It also indicates that the general purpose
`computer and image capture device are “customer-controlled” and
`
`“electronics that today’s consumersactually own or can easily acquire.” Jd.
`
`{1 20-22. In light of this disclosure, we find that a person of ordinary skill
`
`in the art would have understood the °247 application to describe an
`
`invention that is agnostic to whether the mobile device and image capture
`
`device are separate or integrated. See also In re Rasmussen, 650 F.2d 1212,
`
`1215 (C.C.P.A. 1981) (explaining that claims with generic step of
`
`“adheringly applying” one layer to an adjacent layer satisfied the written
`
`? Petitioner contends that a person of ordinary skill in the art would have
`understood that certain aspects of the disclosure would not be necessary if
`the image capture device were integrated into the general purpose computer.
`See Pet. 18-19 (citing Ex. 1042 Jf 8, 25, 43-44, 75; Ex. 1002 f{ 43, 45-47).
`Evenif Petitioner were correct, those passages simply provide a discussion
`of an embodiment where these components are separate. They do not show
`that the invention requires the componentsto be separate.
`19
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`
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`IPR2021-01071
`Patent 10,482,432 B1
`
`description requirement because“one skilled in the art who read [the]
`specification would understandthatit is unimportant howthelayers are
`
`adhered, so long as they are adhered”).
`Petitioner’s reliance on LizardTech, Tronzo, and ICU Medicalis
`
`misplaced. See Pet. 22, 26-27 (citing ICU Med., Inc. v. Alaris Med. Sys.,
`
`558 F.3d 1368 (Fed. Cir. 2009); LizardTech, 424 F.3d 1336; Tronzo v.
`
`Biomet, Inc., 156 F.3d 1154 (Fed. Cir. 1998)). As the Federal Circuit
`
`explained, “[i]n each of those cases, the specification unambiguously limited
`
`the scope of the invention.” Crown Packaging Technology, Inc. v. Ball
`
`Metal Beverage Container Corp., 635 F.3d 1373, 1382 (Fed. Cir. 2011).
`However, Petitioner provides (and we perceive) no justification for coming
`to a similar conclusion here. Petitioner also cites to Anascape, but that case
`
`is similarly distinguishable. See Pet. 14, 21 (citing Anascape, Ltd. v.
`
`Nintendo ofAm. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010)); Anascape, 601
`
`F.3d at 1336-37 (“Nintendo counts over twenty explicit statements that the
`
`invention is directed to a single input memberthat is operable in six degrees
`
`of freedom,”and the patent “stresses the advantages of using a single input
`
`memberoperable in six degrees of freedom.”).
`
`Finally, we disagree with Petitioner’s genus-species analysis, which
`
`effectively reorganizes the same considerationsinto a different framework. !°
`
`See Pet. 21-24. Accordingto Petitioner, the device limitation is a genus
`
`“that includes (1) a mobile device separate from a digital camera and (2) a
`
`10 We query whether the genus-species framework is appropriate
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