Trials@uspto.gov
`571-272-7822
`
`Paper: 15
`Date: May 16, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TRUIST BANK,
`Petitioner,
`
`V.
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`
`IPR2023-00143
`Patent 10,482,432 B1
`
`Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN,and
`JULIET MITCHELL DIRBA,Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge McMILLIN.
`
`Opinion Concurring filed by Administrative Patent Judge DIRBA.
`
`MeMILLIN, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of /nter Partes Review
`35 US.C. $314
`
`
`571-272-7822
`
`Paper: 15
`Date: May 16, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TRUIST BANK,
`Petitioner,
`
`V.
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`
`IPR2023-00143
`Patent 10,482,432 B1
`
`Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN,and
`JULIET MITCHELL DIRBA,Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge McMILLIN.
`
`Opinion Concurring filed by Administrative Patent Judge DIRBA.
`
`MeMILLIN, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of /nter Partes Review
`35 US.C. $314
`
`
`
`IPR2023-00143
`Patent 10,482,432 B1
`
`I.
`
`INTRODUCTION
`
`Truist Bank (“Petitioner”) filed a Petition to institute an inter partes
`
`review of claims 1—23 (the “challenged claims”) of U.S. Patent No.
`
`10,482,432 B1 (Ex. 1001, the “’432 patent’’) pursuant to 35 U.S.C. § 311 er
`
`seq. Paper 1 (“Petition” or “Pet.”). United Services Automobile
`
`Association (“Patent Owner’) filed a Preliminary Response. Paper 11
`
`(“Preliminary Response”or “Prelim. Resp.”). With our authorization (see
`
`Ex. 1032), Petitioner filed a Reply to the Preliminary Response (Paper 12
`
`(“Preliminary Reply” or “Prelim. Reply’’)) and Patent Ownerfiled a Sur-
`
`reply to the Preliminary Reply (Paper 14 (‘Preliminary Sur-reply” or
`
`“Prelim. Sur reply”)).
`
`We haveauthority under 35 U.S.C. § 314, which provides that an
`
`inter partes review maynotbeinstituted 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 challenged in the petition.” 35 U.S.C. § 314(a) (2018). After
`
`considering the Petition, the Preliminary Response, the Reply, and the Sur-
`
`reply and the evidence of record, we do notinstitute an inter partes review
`
`of the °432 patent on the grounds of unpatentability presented in the Petition.
`
`A.
`
`Related Proceedings
`
`Theparties identify the following district court litigation as related
`
`matters because they involve the ’432 patent: (1) United Services
`
`Automobile Association v. Truist Bank, 2:22-cv-00291-JRG-RSP(E.D.
`
`Tex.); (2) United Services Automobile Association v. BBVA USA,
`
`2:21-cv-00311-JRG (E.D. Tex.); and (3) United Services Automobile
`
`
`
`IPR2023-00143
`Patent 10,482,432 B1
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`Association v. PNC Bank N.A., 2:20-cv-00319-JRG-RSP (E.D. Tex.).
`
`Pet. 73; Paper 5 (Patent Owner’s Mandatory Notices), 2.
`
`Theparties also identify the following completed (institution denied)
`
`proceedings before the Board as involving the ’432 patent: PNC Bank, NA
`
`v. United Services Automobile Association, IPR2021-01071; and PNC Bank,
`
`NA v. United Services Automobile Association, IPR2021-01074. Pet. 73;
`
`Paper5, 2.
`
`And, Patent Owneridentifies “IPR2023-00144 [that] wasfiled
`
`concurrently by Petitioner also challenging the ’432 patent” as a related
`
`matter. Paper 5, 2; see also Paper 3 (Petitioner’s Notice Ranking Petitions).
`
`B.
`
`The ’432 Patent
`
`The °432 patentis titled “Systems and Methods For Remote Deposit
`
`Of Checks.” Ex. 1001, code (54). The disclosure relates to “[r]emote
`
`deposit of checks .. . facilitated by a financial institution[, a] customer’s
`
`general purpose computer[,] and image capture device .
`
`.
`
`. leveraged to
`
`capture an image of a check and deliver the imageto financial institution
`
`electronics” such that a “[check deposit] transaction can be automatically
`
`accomplished utilizing the images and data thus acquired.” /d., code (57).
`
`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.” /d. 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 addresses “a need for a
`
`
`
`IPR2023-00143
`Patent 10,482,432 B1
`
`convenient method of remotely depositing a check while enabling the payee
`
`to quickly access the funds from the check.” /d. at 2:27—30.
`
`Figure | of the ’432 patent is reproduced below.
`
` a
`
`FIGURE 4
`
`Figure | of the 432 patent, reproduced above,
`“illustrates a broad view of a [network] system
`in which the described embodiments may be
`employed.” /d. at 3:15-16.
`
`The system 100 includes:
`
`(1) a “customer-controlled, general purpose
`
`computer 111” used by an account owner110, e.g., a bank customer located
`
`at the customer’s private residence; (11) an “image capture device 112 [that]
`
`may be communicatively coupled to the computer”; and (111) financial
`
`institutions 130, 140, and 150, whichareretail banks, investment banks,
`
`investment companies, or other type of entities capable of processing a
`
`transaction involving a negotiable instrument.
`
`/d. at 3:46-4:64, 5:4—14.
`
`Account owner 110 owns an account 160 held at financial
`
`institution 130.
`
`/d. at 5:26-31. When account owner 110 wishes to deposit
`
`a check into the account, “[a]ccount owner 110 may deposit the check into
`
`account 160 by converting the check into electronic data and sending the
`
`
`
`IPR2023-00143
`Patent 10,482,432 B1
`
`data to financial institution 130.” /d. at 5:62—65. “[A]ccount owner 110
`
`may convert the check into a digital image by scanningthe front and/or back
`
`of the check using image capture device 112.” /d. at 6:4—-7. Account
`
`owner 110 then sends the imageto financial institution 130.
`
`/d. 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.
`
`/d. at 6:12—49.
`
`Figure 2 of the 432 patent is reproduced below.
`
`
`
`IPR2023-00143
`Patent 10,482,432 B1
`
`instruct Customer to Le
`Provide image of Check |
`2054
`Serer
`
` instruct Custemer to Edit |
`image of Check
`ask
`
`enc
`Place image in Storage |
`Losatian
`i
`207:
`
`eRGB
`<<” Additional Desired
`
`
` Generate Log File
`
`~LREGES
`
`
`
`
`
` “t
`
`4 send fmageis/Log Fite te
`i
`Server
`| Lenmammummnmmmnemanmemnnedehe 344
`Bi
`FIGURE 2
`
`Figure 2, reproduced above, “illustrates a method
`for facilitating deposit of a check from the customer
`controlled general purpose computer.” /d. at 3:17—
`19.
`
`The °432 patent explains that the steps “may be viewedas performed by a
`
`server computer associated with a financial institution, in conjunction with a
`
`software componentthat operates from a customer-controlled general
`
`purpose computer.” /d. at 6:52-58. More particularly, “the darker boxes[in
`
`
`
`IPR2023-00143
`Patent 10,482,432 B1
`
`Figure 2] indicate steps that are performed by the server, for example by
`
`delivering information to the user through the user’s browser application,”
`
`while “[the] lighter boxes inside 211 indicate steps that are performed by the
`
`software component, as it executes on the customer computer,” with
`
`“alternative configurations .
`
`.
`
`. readily achievable by moving functions from
`
`server to software componentor vice-versa.” Id. at 6:59—7:2.
`
`As shownin 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
`
`amount of a check or other negotiable instrument the customer wishesto
`
`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.” /d. at 7:47-8:7.
`
`For example, “the customer maybe instructed to place the check face down
`
`on a flatbed scanner, and may further be instructed as to the location and
`
`orientation of the check on the scanner,” or “the customer is 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
`
`camera, distance and focal length (zoom) of camera, and so forth.”
`
`Id. at 8:5—21. The software component on the customer’s device may guide
`
`the customer by providing a graphical illustration of how the customer
`
`should provide the image.
`
`/d.
`
`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
`
`
`
`IPR2023-00143
`Patent 10,482,432 B1
`
`asking the customer to crop and/or rotate the check image to a
`
`predetermined orientation 206.” /d. at 8:45—48. The customer may also be
`
`asked to indicate the bottom right corner of the check image, and the image
`
`may be cropped to contain only the check image, thereby removing a portion
`
`of the originally obtained image.
`
`/d. at 8:51—55. After obtaining and storing
`
`(in a storage location, step 207) images of front and back sides of the check,
`
`a log file may be generated 209 to collect data for processing or
`
`troubleshooting the deposit transaction.
`
`/d. at 8:56—64. Once the desired
`
`images are collected and edited, they are delivered to the bank server for
`
`processing the deposit 210.
`
`/d. at 9:1—3. If the bank’s (or other financial
`
`institution’s) server determinesthat the delivered images and any
`
`corresponding data are sufficient to go forward with the deposit, the
`
`customer’s account1s provisionally credited, and a confirmation page 1s
`
`delivered to the customer via customer's browser application 212.
`
`/d. at 9:3-
`
`11.
`
`C.
`
`Challenged Claims
`
`Of the challenged claims (which constitute all claims of
`
`the ’432 patent), claim 1 is the only independent claim. Ex. 1001, 14:23-
`
`16:20 (all claims). Claim 1 recites:
`
`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 instruction to assist the customerin placing the
`digital camera at a proper distance away from the check
`for taking the photo;
`
`
`
`IPR2023-00143
`Patent 10,482,432 B1
`
`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 of the photo
`from the customer’s mobile device and submitting the
`check for mobile check deposit in the bank after
`presenting the photo of the check to the customer; and
`
`a bank computer programmedto 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.
`
`Ex. 1001, 14:23-48 (emphasis added).
`
`D.
`
`The Asserted Grounds
`
`Petitioner challenges claims 1—23 of the ’432 patent based on the
`
`groundsset forth in the table below. Pet. 2-3.
`
`
`
`
`1,2, 8,9,11-17,22,23] §103|Acharya,! King,
`
`
`
` 3,4 § 103 Acharya, King, Dance,
`Slater*
`Acharya, King,|Dance,
`Maloney?
`
`
`Acharya, King, Dance,
`Maloney, Jones®
`
`
`§ 103
`
`"US 2005/0267843 Al, pub’d Dec. 1, 2005 (Ex. 1005).
`7 US 2006/0026140 A1, pub’d Feb. 2, 2006 (Ex. 1006).
`3 US 2003/0086615 Al, pub’d May8, 2003 (Ex. 1007).
`* US 7,792,753 B1, issued Sep. 7, 2010 (Ex. 1008).
`> US 7,028,886 B1, issued Apr. 18, 2006 (Ex. 1009).
`© US 2002/0145035 Al, pub’d Oct. 10, 2002 (Ex. 1010).
`
`9
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`
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`IPR2023-00143
`Patent 10,482,432 B1
`
`
`
`
`
`
`
`
`
`
`10, 18-20
`
`Acharya, King, Dance,
`Beck’
`Acharya, King, Dance,
`Takehara®
`
`Petitioner asserts that, “[a]ssuming an effective filing date of
`
`October 31, 2006,” (see Ex. 1001, code (63)), then the cited references
`
`qualify as prior art. Pet. 1-2. Patent Owner does not contest this assertion.
`
`See generally Prelim. Resp.
`
`Petitioner additionally relies on the Declaration of Dr. David
`
`Doermann (Ex. 1003 (“Doermann Decl.”’)).
`
`II.
`
`ANALYSIS
`
`Wedenythe Petition and do notinstitute trial, because Petitioner
`
`relies on the combination of Acharya and Kingforall the asserted grounds
`
`and Petitioner has failed to establish that a skilled artisan would have been
`
`motivated to combine Acharya and Kingasasserted in the Petition.
`
`A.
`
`Legal Standards
`
`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'l 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 of the prior art; (2) any differences
`
`between the claimed subject matter and the priorart; (3) the level of ordinary
`
`TUS 7,996,312 B1, issued Aug. 9, 2011 (Ex. 1011).
`5 JP 2004-23158 A, pub’d Jan. 22, 2004 (Ex. 1014).
`
`10
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`
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`IPR2023-00143
`Patent 10,482,432 B1
`
`skill in the art; and (4) when presented, objective evidence of
`
`non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`Whenevaluating a combination of teachings, we must also “determine
`
`whether there was an apparent reason to combine the known elements in the
`
`fashion claimed bythe patentat issue.” KSR, 550 U.S. at 418 (citing /n re
`
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); Unigene Labs., Inc. v. Apotex,
`
`Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (‘[O]bviousness requires the
`
`additional showing that a person of ordinary skill at the time of the invention
`
`would have selected and combined those prior art elements in the normal
`
`course of research and developmentto yield the claimed invention.”’).
`
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
`
`unpatentable.” Harmonic Inc. vy. 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
`
`grounds for the challenge to each claim”)). Petitioner, however, cannot
`
`satisfy its burden of proving obviousness by employing “mere conclusory
`
`statements.” [n re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1380
`
`(Fed. Cir. 2016).
`
`B.
`
`Level Ordinary Skill in the Art
`
`With regard to the level of ordinary skill in the art, Petitioner
`
`contends:
`
`A person of ordinary skill in the art (POSA) of the
`°432 patent would have had either:
`(1) a Bachelor of Science
`degree in Electrical Engineering, Computer Engineering,
`Computer Science, or an equivalentfield, with at least two
`years of academicor industry experiencein financial
`technology, including image processing; or (2) a Master of
`
`11
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`
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`IPR2023-00143
`Patent 10,482,432 B1
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`Science degree in Electrical Engineering, Computer
`Engineering, Computer Science, or an equivalent field, with at
`least a year of academic or industry experience in the same
`field. Higher levels of education may offset less experience and
`vice versa.
`
`Pet. 5 (citing Doermann Decl. §] 24-26). “For the purposesofthis
`
`Preliminary Response only, Patent Owner applies the skill level of a [POSA]
`
`proposedby Petitioner,” but “may proposea different level of skill in the art
`
`in the event that the Board institutes review.” Prelim. Resp. 22.
`
`Petitioner’s proposal is consistent with the technology described in the
`
`Specification of the ’432 patent and the cited prior art. In order to determine
`
`whether Petitioner has demonstrated a reasonable likelihood of showing the
`
`unpatentability of at least one of the challenged claims, we adopt Petitioner’s
`
`proposed level of skill in the art.
`
`C.
`
`Claim Construction
`
`Weconstrue claims using the same claim construction standard that
`
`would be used in a civil action under 35 U.S.C. § 282(b), as articulated by
`
`the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`
`(en banc), and subsequent cases. See 37 C.F.R. § 42.100(b). Under the
`
`standard set forth in Phillips, claim terms are given their ordinary and
`
`customary meaning, as would have been understood by a person of ordinary
`
`skill in the art at the time of the invention,in light of the language of the
`
`claims, the specification, and the prosecution history of record. See Thorner
`
`v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365-66 (Fed. Cir. 2012).
`
`There is a “heavy presumption,” however, that a claim term carriesits
`
`ordinary and customary meaning. CCSFitness, Inc. v. Brunswick Corp.,
`
`288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
`
`12
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`IPR2023-00143
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`Petitioner asserts that “the Board need not construe any terms|]
`
`because the claims are invalid under any reasonableinterpretation.” Pet. 7
`
`(citing Ex. 1003 (Doermann Decl.) §{] 27-31). “Patent Owner doesnot take
`
`any position regarding claim construction at this stage in the proceedings.”
`
`Prelim. Resp. 22.
`
`Weagree with Petitioner that no claim construction is necessary to
`
`makethis decision on institution. See Nidec Motor Corp. v. Zhongshan
`
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining
`
`that construction is needed only for termsthat are in dispute, and only as
`
`necessary to resolve the controversy).
`
`D.
`
`Cited References
`
`The only two cited references discussed in this decision are Acharya
`
`and King which are summarized below.
`
`1.
`
`Acharya (Ex. 1005)
`
`Acharya1s titled “System and Method for Electronic Deposit of
`
`Third-Party Checks by Non-Commercial Banking Customers from Remote
`
`Locations.” Ex. 1005, code (54). Acharya“relates generally to a system
`
`and methodfor initiating a deposit transaction, where the depositor is a non-
`
`commercial banking customer located at a remote location, and where the
`
`item to be deposited is a paper check.” /d. 41.
`
`“The enabling system features a Remote Customer Terminal (RCT)
`
`with certain input devices[] connected to a bank system.” /d., code (57).
`
`The preferred embodiment includes an RCT located at a home and
`
`constituting “a personal computer with an attached image scanner.” Jd. ¢ 14.
`
`To remotely deposit the check, a bank customer uses the system to capture
`
`13
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`IPR2023-00143
`Patent 10,482,432 B1
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`an image of the check and transmit the image to a bank offirst deposit
`
`(BOFD). Id.
`
`Acharya’s Figure 2, reproduced below (next page), illustrates a “flow
`
`diagram from the perspective of a bank customer, according to one
`
`embodimentof the invention.” /d. 417. The process “begins when the bank
`
`customer receives a check payable to him/her 200.” Jd. 9 33. The bank
`
`customer may “log on” to a BOFD system from a RCT “using a Personal
`
`Identification Number (PIN), password, and/or other meansof identification
`
`210.” Id. 934. After “select[ing] “check deposit’ from a menu of
`
`transaction options 220,” the bank customer “may respond to prompts for
`
`14
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`IPR2023-00143
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`Pager Check
`eae
`
`Log On ic Rank Systern
`ato
`
`Seteot Check Ussecrast
`Transaction
`
`Depost TransacKars
`
`Enter Requested Data §
`
`Boiatty Complie?
`
`Sank for Processing
`280
`
`Ackrmdendgmens
`
`Receive Recuitis of
`
`Acharya’s Figure 2, reproduced above,illustrates a process that
`“begins when the bank customerreceives a check payable to
`him/her 200.” Jd. 9 32-33.
`
`each item of data needed to deposit the check.” Jd. J] 34-35. “[T]he
`
`[bank] customer may enter a predeterminedset of data all at once [230], for
`
`example whereall data input fields are visible on a video display screen.”
`
`Id. 435. “A complete set of data may comprise customeridentification,
`
`15
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`IPR2023-00143
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`customer account number, name of payor, name and routing numberof
`
`payor's bank, the amount of the check, an imageof the check, and other
`
`information.” /d. “The [bank] customer may be prompted to supply missing
`
`information [240].” /d. After providing “[a] complete set of data”
`
`preferably “all at once,” the bank customer “may then submit the transaction
`
`data to the BOFD system for processing 250” and, in response,“may receive
`
`acknowledgment from the BOFD system that the transaction is being
`
`processed 260.” Jd. J] 35-36. The bank customeralso “may receive a
`
`response 270 indicating .
`
`.
`
`. that immediate provisional credit has been
`
`given, that full credit has been awarded,or that the transaction request has
`
`been denied.” /d. 4 37. If the bank customer wasissued provisional credit,
`
`“the paper check may be subjected to certain check actions 280 in order to
`
`prevent re-deposit of the same check,” such as marking the check “by human
`
`or machine readable ink” or physically capturing the check by the RCT for
`
`“deposit into an [automated teller machine (ATM)] vault.” /d. 7 38.
`
`2.
`
`King (Ex. 1006)
`
`Kingis titled “Content Access with Handheld Document Data
`
`Capture Devices.” Ex. 1006, code (54). King “relates generally to search
`
`and retrieval of electronic materials and, more specifically, to data gathering
`
`systems and methodsfor use in providing accessto digital content from
`
`searches based on information captured from rendered documents.” /d., § 4.
`
`King describes “[s]canning or capturing [as] the process of systematic
`
`examination to obtain information from a rendered document”and that “may
`
`involve optical capture using a scanner or camera (for example a camera in a
`
`cellphone).” /d., 21. The disclosed “capture device” is generalized as
`
`follows:
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`16
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`IPR2023-00143
`Patent 10,482,432 B1
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`Each capture device is able to communicate with other
`parts of the system such as a computer 212 and a mobile station
`216 (e.g., a mobile phone or PDA)usingeither a direct wired or
`wireless connection, or through the network 220, with whichit
`can communicate using a wired or wireless connection[.] In
`some embodiments, the capture device is integrated in the
`mobile station, and optionally shares some of the audio and/or
`optical components used in the device for voice
`communications and picture-taking.
`
`Id. 431. Describing needed capabilities of the capture device, King states:
`
`A capture device for use with the system needslittle
`more than a way of capturing text from a rendered version of
`the document. As described earlier (Section 1.2), this capture
`may be achieved through a variety of methods including taking
`a photograph of part of the document or typing some wordsinto
`a mobile phone keypad. This capture may be achieved using a
`small hand-held optical scanner capable of recordinga line or
`two of text at a time, or an audio capture device such as a voice-
`recorder into which the useris reading text from the document.
`The device used may be a combination of these-an optical
`scanner which could also record Voice annotations, for
`example-and the capturing functionality may be built into some
`other device such as a mobile phone, PDA, digital camera or
`portable music player.
`
`Id. § 277.
`
`Describing a “Scanner as Payment, Identity and Authentication
`
`Device,” King states “the capture process generally begins with a device of
`
`somesort, typically an optical scanner. . . [;] this device may be used as a
`
`key that identifies the user and authorizes certain actions.” /d. 4109. Then
`
`describing a corresponding meansto “Associate Scanner with Phone,”
`
`Kingstates “[t]he device may be embedded in a mobile phone or in some
`
`other way associated with a mobile phone account[;]” e.g., “a scanner may
`
`be associated with a mobile phone account by inserting a SIM card
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`17
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`IPR2023-00143
`Patent 10,482,432 Bl
`
`associated with the account into the scanner.” /d. 110. Kingalso states the
`
`“scanner will often communicate with some other device,”e.g., “a PC, PDA,
`
`phoneor digital camera to perform many of the functions of the system,
`
`including more detailed interactions with the user.” /d. § 231. Describing
`
`image capture by a mobile phone, Kingstates:
`
`In some embodiments, the camera built into many mobile
`phonesis used to capture an image ofthe text. The phone
`display, which would normally act as a viewfinder for the
`camera, may overlay on the live camera image information
`about the quality of the image andits suitability for OCR,
`which segmentsof text are being captured, and even a
`transcription of the text if the OCR can be performed on the
`phone.
`
`In some embodiments, the phone is modified to add
`dedicated capture facilities, or to provide such functionality in a
`clip-on adaptor or a separate Bluetooth-connected peripheral in
`communication with the phone. ... A phone typically has
`sufficient processing power for many ofthe functions of the
`system to be performed locally, and sufficient storage to capture
`a reasonable amountof data.
`
`Id. ¥§, 307-308.
`
`E.
`
`Motivation to Combine Acharya and King
`
`As shown above,Petitioner relies on combining the teachings of
`
`Acharya and Kingforall the asserted grounds. Pet. 2—3. Sole independent
`
`claim | recites two customer devices: (1) a “mobile device” and (2) a
`
`“digital camera.” Ex. 1001, 14:23-48. Despite acknowledging that Acharya
`
`discloses neither a “mobile device”nor a “digital camera,” (see Pet. 12, 21),
`
`Petitioner contendsthat “Acharya alone discloses most elements;” “Acharya
`
`discloses the core principles of the °432 patent;” and “[t]he ’432 patent
`
`claimsare indistinguishable from Acharyain principle” (id. at 7).
`
`18
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`IPR2023-00143
`Patent 10,482,432 B1
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`Patent Ownerargues that Petitioner has failed to establish that a
`
`skilled artisan would have been motivated to combine the relevant teachings
`
`of Acharya and King. See generally Prelim. Resp. The Preliminary
`
`Responsestates:
`
`The challenged claims are directed to a system using a
`customer’s mobile device with a downloaded app that controls
`the mobile device andits digital camera to perform a mobile
`check deposit. See Ex. 1001, cl. 1. Petitioner does not identify
`any prior art system that possessed this functionality. Instead,
`Petitioner’s asserted grounds are based on hindsight
`reconstruction of the challenged claims by beginning with a
`scanner-based remote deposit system—Acharya—andpicking
`and choosing portions of other references to supply features,
`such as a digital camera, that Petitioner asserts in entirely
`conclusory fashion are obvious to “substitute.” Petitioner does
`not identify any reason whya person ofordinary skill would
`have made any of these changes to Acharya.
`
`Prelim. Resp. 1.
`
`Petitioner relies on a combination of the teachings of Acharya and
`
`King for the “mobile device” element as recited in claim 1. See Pet. 10-17.
`
`Petitioner acknowledges that Acharya does not teach a “mobile device” and
`
`relies on King for teaching this claim element. /d. at 12 (“Acharya does not
`
`expressly disclose a customer’s mobile device, but King does.”’). In support
`
`of combining these teachings of Acharya and King, Petitioner contends“[iJt
`
`would have been obvious to POSAs[personsofskill in the art] to implement
`
`Acharya’s RCT [Remote Customer Terminal] as a “mobile device’ such as
`
`King’s mobile phone, laptop, or PDA.” /d. at 13.
`
`With regard to motivation to combine these teachings of Acharya
`
`and King, the Petition states, “‘[t]he teachings and motivations disclosed
`
`in Acharva suggest the combination with King’s mobile devices.” Id.
`
`19
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`
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`IPR2023-00143
`Patent 10,482,432 B1
`
`at 14. However,the only “teachings and motivations disclosed in
`
`Acharya” discussed in the Petition are:
`
`Acharya suggests mobile devices may be used as the RCT, so
`long as the device is “capable of collecting data and
`communicating with [Bank of First Deposit] BOFD
`system 110” and allows non-commercial bank customers to
`deposit checks from the convenience of their home. Acharya,
`[0009], [0014], [0022]. Acharya stresses convenience, speed,
`and independence as key motivations behind its invention.
`id.,
`[0004], [0010].
`
`Id. at 13. Petitioner’s contention that Acharya “suggests mobile devices”
`
`is not further explained or supported. But, “obviousness grounds cannot
`
`be sustained by mere conclusory statements; instead, there must be some
`
`articulated reasoning with somerational underpinning to support the
`
`legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting /n re
`
`Kahn, 441 F. 3d 977, 988 (Fed. Cir. 2006)). And, none of the paragraphs
`
`cited in Acharya suggest a “mobile device.” See Ex. 1005 4¥ 4, 9, 10,
`
`14, 22. Paragraph 4 discusses the advantages of Electronics Fund
`
`Transfer (EFT) in the “Background of the Invention” and doesnot
`
`address the system or RCT of Acharya.
`
`/d. ¥ 4 (“Two principal
`
`advantages of EFT, from the perspective of the customer, are
`
`convenience and speed. They are convenient to the extent that they do
`
`not require customersto physically visit the bank in orderto initiate a
`
`financial transaction.’”’). Paragraph 9 states, “it is one object of the
`
`invention to provide a system and method for allowing non-commercial
`
`bank customers to deposit third-party checks from remote locations.”
`
`Paragraph 10 states that it is an object of the invention to provide a
`
`system and methodto “initiate .
`
`.
`
`. transactions from home” especially
`
`“for customers who are confined to their homesdue to poorhealth,
`
`20
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`
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`IPR2023-00143
`Patent 10,482,432 B1
`
`disability, or for other reasons.” Thus, paragraph 10 would seem to
`
`suggest that “mobile devices” would be less useful or not needed.
`
`Paragraph 14 states, “[i]n the preferred embodimentof the invention, the
`
`RCTis located at home, and is a personal computer with an attached
`
`scanner.” Paragraph 22 states “The RCT [Remote Customer Terminal]
`
`100 may be a telephone, fax machine, personal computer, ATM,or any
`
`other computer, apparatus, or system capable of collecting data and
`
`communicating with BOFD [Bankof First Deposit] system 110.” Although
`
`none of these passages prohibit using a mobile device as an RCT, there also
`
`is no suggestion to do so. Indeed, someof these passages suggest that the
`
`RCTshould be located “at home,” which seemsto indicate that the only
`
`requirementis that a RCT needsto be located within a user’s home,in
`
`contrast to a RCT being required to be located within a user’s homeas well
`
`as other locations outside a user’s home. And, our review of Acharya
`
`indicates that Acharya doesnot suggest the use of a “mobile device”
`
`elsewhere.
`
`In the Petition, it is contended that “Acharya at least suggests using a
`
`mobile device, such as a laptop, because Acharya discloses using a PC or
`
`any type of computer.” Pet. 9 (citing Ex. 1005 4 22). The cited paragraph of
`
`Acharya,in its entirety, states: “The RCT [Remote Customer Terminal] 100
`
`may be a telephone, fax machine, personal computer, ATM,or any other
`
`computer, apparatus, or system capable of collecting data and
`
`communicating with BOFD [Bankof First Deposit] system 110.” Ex. 1005
`
`422. There is no explicit teaching of using a mobile devicein this passage.
`
`In the next paragraph, Acharyastates, “The RCT input devices 101 may
`
`comprise a keypad, a keyboard, a microphone, a Magnetic Ink Character
`
`21
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`
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`IPR2023-00143
`Patent 10,482,432 B1
`
`Reader (MICR), a Digital Image Scanner (DIS), and any other device
`
`capable of collecting data.” /d. 423. At the least, the use of “a Magnetic
`
`Ink Character Reader (MICR)”or “a Digital Image Scanner (DIS)” would
`
`restrict mobility. And, we do not agree that disclosing the use of a PC or
`
`any type of computer suggests a mobile device.
`
`Moreover, considering the entirety of Acharya’s disclosure, it does
`
`not appear to suggest the use of a mobile device. Acharyastates that “[i]n
`
`the preferred embodimentof the invention, the RCTis located at home, and
`
`is a personal computer with an attached image scanner.” Ex. 1005 § 14
`
`(emphasis added). A “personal computer with an attached image scanner”
`
`that “is located at home” doesnot suggest a “mobile device.” And, in the
`
`“Summary of the Invention,” Acharya provides the following two objects of
`
`the invention:
`
`It is another object of the invention to provide a
`system and method that would allow bank customers to
`initiate such transactions at home. Such a method would
`be a convenience to many bank customers, and provide a
`new level of independence for customers who are confined
`to their homes due to poor health, disability, or for other
`reasons.
`It is another object of the invention to provide a
`method that would allow bank customers to deposit third
`party checks at ATM machines. Most ATM's simply
`provide a means for holding paper checks until they are
`collected for processing. The
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