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.
`
`IPR2023-00144
`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 Dissenting filed by Administrative Patent Judge DIRBA.
`
`MeMILLIN,Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of /nter Partes Review
`35 US.C. $314
`
`

`

`IPR2023-00144
`Patent 10,482,432 Bl
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Truist Bank (“Petitioner”) filed a Petition to institute an inter partes
`
`review of claims 1—8 and 10—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 et seg. Paper 1 (“Petition” or “Pet.”) 1,3. United Services
`
`Automobile Association (“Patent Owner’’) filed a Preliminary Response.
`
`Paper 9 (“Preliminary Response”or “Prelim. Resp.”). With our
`
`authorization (see Ex. 1039), 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); 37 C.F.R.
`
`§ 42.4(a) (“The Boardinstitutes trial on behalf of the Director”).
`
`The principal issue presented is whether the ’432 patentis entitled to
`
`the benefit of the filing date of the initial application (U.S. Patent
`
`Application No. 11/591, 247 filed October 31, 2006) in the chain of
`
`continuation applications from which the °432 patent claimspriority.
`
`Ex. 1001, code (63), 1:7-21. The primary reference asserted in the present
`
`challenges to the claims of the ’432 patent is the first patent to issue from
`
`this chain of applications (U.S. Patent No. 7,873,200 B1 (Ex. 1005,
`
`“Oakes”)). See Pet. 4. Petitioner asserts Oakes does not provide written
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`

`

`IPR2023-00144
`Patent 10,482,432 Bl
`
`description support for a “mobile device”as recited in the challenged claims
`
`of the *432 patent. See, e.g., Ex. 1001, 14:23—48 (“A system comprising: a
`
`customer’s mobile device... .” (sole independent claim 1); “mobile device”
`
`recited four more times in claim 1). Accordingto Petitioner, the lack of
`
`written description support breaks the °432 patent’s chain of priority to
`
`Oakesforall of the challenged claims and Oakes qualifies as prior art to the
`
`‘432 patent. See Pet. 13-27. Petitioner characterizes this issue as
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`“dispositive.” Jd. at 1.
`
`Patent Owner contendsthat we “should denyinstitution because
`
`Petitioner has failed to demonstrate a reasonable likelihood of success on the
`
`merits” of its priority/written description argument. Prelim. Resp. 12.
`
`Specifically, Patent Owner argues:
`
`[A]ll of Petitioner’s asserted grounds rely on “Oakes,” which
`issued on January 18, 201 1—-several years after the claimed
`priority date of the “432 patent—andis therefore not prior art
`unless Petitioner could demonstrate that the claims lack
`adequate written description in the originally-filed priority
`application. See Pet., 14 (not disputing the continuity of
`priority chain back to Appl. No. 11/591,247, filed October 31,
`2006). Petitioner does not come close to meeting its burden to
`do so.
`
`ld.
`
`After considering the Petition, the Preliminary Response, the Reply,
`
`the Sur-reply, and the evidence of record, we agree with Patent Ownerthat
`
`Oakesprovides written description support for “mobile device”as recited in
`
`the °432 patent claims. As aresult, Oakesis not prior art to the ’432 patent
`
`and the challengesto the claimsfail.
`
`

`

`IPR2023-00144
`Patent 10,482,432 Bl
`
`B.
`
`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
`
`Association v. PNC Bank N.A., 2:20-cv-00319-JRG-RSP (E.D. Tex.).
`
`Pet. 83; Paper 5 (Patent Owner’s Mandatory Notices), 2.
`
`Theparties also identify the following completed (institution denied)
`
`proceedings before the Board involving the °432 patent: PNC Bank, NA y.
`
`United Services Automobile Association, IPR2021-01071; and PNC Bank,
`
`NA v. United Services Automobile Association, IPR2021-01074. Pet. 83;
`
`Paper5, 2.
`
`And, Patent Owneridentifies “IPR2023-00143 [that] was filed
`
`concurrently by Petitioner also challenging the °432 patent”as a related
`
`matter. Paper 5, 2.
`
`C.
`
`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
`
`

`

`IPR2023-00144
`Patent 10,482,432 B1
`
`“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
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`check to a bank teller.” /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
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`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.
`
`FIGURE 7
`
`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.
`
`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, which areretail banks, investment banks,
`
`

`

`IPR2023-00144
`Patent 10,482,432 Bl
`
`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
`
`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 sendsthe 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.
`
`

`

`IPR2023-00144
`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
`
`

`

`IPR2023-00144
`Patent 10,482,432 Bl
`
`Figure 2] indicate steps that are performedbythe 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
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`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
`
`

`

`IPR2023-00144
`Patent 10,482,432 Bl
`
`asking the customer to crop and/or rotate the check image to a
`
`predetermined orientation 206.” /d. 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 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,
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`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
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`customer’s account is provisionally credited, and a confirmation pageis
`
`delivered to the customer via customer's browser application 212.
`
`/d. at 9:3-
`
`11.
`
`D.
`
`Challenged Claims
`
`Petitioner challenges claims 1—8 and 10— 23 of the ’432 patent.!
`
`Pet. 4. Claim 1 is the sole independent claim. Ex. 1001, 14:23-16:20 (all
`
`claims). Claim 1 recites:
`
`1. A system comprising:
`
`a customer’s mobile device including a downloaded app, the
`downloaded app provided by a bank to control check deposit
`by causing the customer’s mobile device to perform:
`
`instructing the customer to have a digital camera take a photo
`of a check;
`
`' The only claim of the ’432 patentthat is not challenged is claim 9 which
`recites “the customer’s mobile device is a laptop.” Ex. 1001, 15:5-6.
`
`

`

`IPR2023-00144
`Patent 10,482,432 Bl
`
`giving an instruction to assist the customerin placing the
`digital camera at 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 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 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.
`
`Ex. 1001, 14:23—48 (emphasis added).
`
`E. The Asserted Grounds
`
`Petitioner challenges claims 1—8 and 10—23 of the °432 patent based
`
`on the groundsset forth in the table below. Pet. 4.
`
`10
`
`

`

`IPR2023-00144
`Patent 10,482,432 Bl
`
`Oakes,” Singfield?
`
`1-8, 10-23
`
`Petitioner additionally relies on the Declaration of Dr. David Doermann
`
`(Ex. 1003 (‘Doermann Decl.”’)).
`
`I.
`
`ANALYSIS
`
`A.
`
`Legal Standards
`
`“It 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 claims of the later
`
`application, as required by 35 U.S.C. § 112.” PowerQasis, Inc. v. T-Mobile
`
`USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). “To 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 of the invention.’” Id.
`
`(alteration in original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
`
`1563-64 (Fed. Cir. 1991)).
`
`“TThe 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 corners of the specification from the perspective of a person of
`
`ordinary skill in the art.” /d. “Based on that inquiry, the specification must
`
`2 US7,792,753 B1, filed October 31, 2006; issued January 18, 2011.
`(Ex. 1005).
`7 US 2005/0097046 A1, published May 5, 2005 (Ex. 1006).
`* WO 2005/043857 Al, published May 12, 2005 (Ex. 1008).
`
`11
`
`

`

`IPR2023-00144
`Patent 10,482,432 Bl
`
`describe an invention understandable to that skilled artisan and show that the
`
`inventor actually invented the invention claimed.” /d. “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 obvious the
`
`claims does not provide adequate written description support.
`
`/d. at 1352.
`
`The written description requirement “guards against the inventor’s
`
`overreaching by insisting 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; see also Cooper Cameron Corp.v.
`
`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 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
`
`describe in the specification every conceivable and possible future
`
`embodiment of his invention.”); see also Ethicon Endo-Surgery, Inc. vy. U.S.
`
`Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (“Tf [the applicant]
`
`did not considerthe precise location of the lockout to be an elementof his
`
`invention, he wasfree to draft [his claim] broadly (within the limits imposed
`
`by the prior art) to exclude the lockout’s exact location as a limitation of the
`
`claimed invention. Such a claim would not be unsupported by the
`
`12
`
`

`

`IPR2023-00144
`Patent 10,482,432 B1
`
`specification even though it would beliterally infringed by undisclosed
`
`embodiments.”(citations omitted)).
`
`“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 of 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
`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. 4 (citing Doermann Decl. 4] 4-13, 26-28). Patent Owner does not
`
`address the level of ordinary skill in the art. See generally Prelim. Resp.
`
`Petitioner’s proposal is consistent with the technology described in the
`
`Specification of the ’432 patent and the cited prior art. For that reason, and
`
`in order to determine whether Petitioner has demonstrated a reasonable
`
`13
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`

`IPR2023-00144
`Patent 10,482,432 Bl
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`likelihood of showing the unpatentability of at least one of the challenged
`
`claims, we adopt Petitioner’s proposed level of skill in theart.
`
`C.
`
`Claim Construction
`
`In an inter partes review, “|[claims] of a patent .
`
`.
`
`. shall be construed
`
`using the same claim construction standard that would be used to construe
`
`the [claims] in a civil action under 35 U.S.C. § 282(b), including construing
`
`the [claims] in accordance with the ordinary and customary meaning of such
`
`claims as understood by oneof ordinary skill in the art and the prosecution
`
`history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2018); see also
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005).
`
`Because the dispositive priority/written description issue is related to
`
`the meaning of “mobile device,” the only claim term we need to consideris
`
`“mobile device.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction 1s
`
`needed only for terms that are in dispute, and only as necessary to resolve
`
`the controversy).
`
`The Petition states:
`
`For the purposes ofthis Petition, Petitioner adopts the
`claim constructions USAA advanced and the Court adopted in
`USAA v. PNC Bank N.A., No. 2:20-CV-319 (E.D. Tex.)
`(“PNCLitigation’). Ex. 1009. USAA is estopped from
`arguing against this construction, including that the “mobile
`phone” means “handheld computing device” and excludes
`laptops from its scope. /d., 20.
`
`14
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`

`

`IPR2023-00144
`Patent 10,482,432 Bl
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`Pet. 8. Petitioner asserts that the District Court in the PNC Litigation
`
`construed “mobile device” as a “handheld computing device’ excluding
`
`laptops” as shown in this excerpt fromatable in the Petition.°> /d. at 9.
`
`
`
`fogotte decwee fala~ne 1 $2|thanchheld2 & aasomnrine Reverse’? ew ce legebiee oe
`
`
`
`
`
`“mobde device” (clans 1, 8.9, 13.|“handheld computing device’ excludmg
`ae
`oy
`-
`BL FR
`ame Sig amet fT
`
`laptops (Ex. 1008, 18, 20; Ex. LOTS, 22, 25)
`
`Id. This table contains an inaccurate statement of the two cited district court
`
`claim construction orders® in which “mobile device” was construed as
`
`“handheld computing device.” Ex. 1009, 20; Ex. 1015, 25. Critical to the
`
`issue before us, the two cited district court claim construction orders do not
`
`> In the Petition filed in IPR2023-00143 on the samedayasthe Petition in
`this proceeding, Petitioner provides a similar table but states that the District
`Court’s construction of “mobile device” in the PNC Litigation was simply
`“handheld computing device,”1.e., it did not contain the phrase “excluding
`laptops.” IPR2023-00143, Paper 1, 6. In support of this construction,
`Petitioner cites to page 20 of the same District Court Claim Construction
`Memorandum Opinion and Order (Exhibit 1015 in IPR2023-00143) that it
`relies on in this proceeding (Exhibit 1009). IPR2023-00143, Paper1, 6.
`Petitioner does not ask that we construe “mobile device” in IPR2023-00143.
`Id. at 7. The Petition in IPR2023-00143 states, “laptops are mobile personal
`computers.” /d. at 15. Petitioner’s declarant, Dr. Doermann,testifies in
`IPR2023-00143 that “laptops are mobile personal computers.” [PR2023-
`00143, Ex. 1003 4 65.
`° Exhibit 1009 is the “Claim Construction Memorandum Opinion and
`Order” in the PNC Litigation in which the construction of “mobile device”
`in the °432 patent wasat issue. Ex. 1009, 4, 14. Exhibit 1015 is the “Claim
`Construction Memorandum Opinion and Order” in United Services
`Automobile Association v. Wells Fargo Bank, N.A., 2:18-cv-00366-JRG
`(E.D. Tex.) in which the construction of “mobile device” in U.S. Patent No.
`10,013,681, (the parent of the °432 patent through a continuation application
`and containing a substantially identical Specification as the ’432 patent) was
`at issue.
`
`15
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`

`

`IPR2023-00144
`Patent 10,482,432 Bl
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`contain the phrase “excluding laptops,” as asserted by Petitioner. Ex. 1009,
`
`20; Ex. 2015, 25. And, the cites to these two district court claim
`
`construction orders do not support adding “excluding laptops”to the
`
`construction of “mobile device.” To the contrary, Exhibit 1009 at page 18
`
`states, “there may be some overlap between ‘handheld’ and ‘laptop.’” Page
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`20 of Exhibit 1009 has no discussion even reasonably related to excluding
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`laptops from the construction of “mobile device” and states the construction
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`of “mobile device” is “handheld computing device.” Page 22 of Exhibit
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`1015 provides that a “‘mobile device’ should .
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`.
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`. be understood as a device
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`that is capable of easily being moved .
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`.
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`. with the understanding that the
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`ease of movementis with reference to a human moving the device by
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`hand.”’ Page 25 of Exhibit 1015 states “mobile device’ means ‘handheld
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`computing device.’”
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`The only other evidence that Petitioner cites in support of its proposed
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`claim construction is the Declaration of Dr. Doermann. See Pet. 10 (citing
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`Ex. 1003 4] 37-42). However,it does not appear that Petitioner’s declarant,
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`Dr. Doermann, conducted any analysis relating to claim construction.
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`Dr. Doermanntestifies “I have been informed that, for the purposes of this
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`Petition, the Petitioner adopts the following claim constructions, which were
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`7 A laptop computer would be understoodbya skilled artisan as a device
`that is capable of easily being moved by a human by hand. See Ex. 2011
`(Merriam-Webster on-line dictionary), 2 (defining “laptop”as “a portable
`microcomputer”); [PR2023-00143, Ex. 1024 (Microsoft Computer
`Dictionary, Fifth Edition, Microsoft Corporation (2002)), 315 (defining
`“laptop” as a “small, portable personal computer’’). Petitioner’s declarant,
`Dr. Doermann, agrees. See IPR2023-00143, Ex. 1003 4] 55 (“[P]rior to the
`°423 patent, a ‘laptop’ was knownto be ‘a small, portable personal
`computer.’”), 65 (“laptops are mobile personal computers”).
`
`16
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`

`

`IPR2023-00144
`Patent 10,482,432 B1
`
`issued in a Claim Construction Order on November 22, 2021, in the PNC
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`Litigation [Ex. 1009]” and “I apply these constructions throughoutthis
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`declaration.” Ex. 1003 4 40, 41. Dr. Doermann’s testimony on claim
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`construction is not based on any independent analysis of any intrinsic or
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`extrinsic evidenceandis entitled to little or no weight. See 37 C.F.R.
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`§ 42.65(a). The total reliance by Petitioner’s declarant on Petitioner’s
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`unsupported contention on the construction of “mobile device”provides a
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`reason to give little or no weight to Dr. Doermann’s adopted construction of
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`“mobile device” as a ““handheld computing device’ excluding laptops” and
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`his testimony based on this claim construction.
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`Petitioner asserts that it is adopting the construction of “mobile
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`device” advanced by the Patent Owner in the PNC Litigation. Pet. 8. This
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`also appears to be inaccurate. The construction of “mobile device” proposed
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`by Patent Owner in the PNC litigation was “handheld computing device”
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`(without the phrase “excluding laptops”). See Ex. 1009, 14. And, as noted
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`by the District Court in its claim construction order in the PNC Litigation,
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`Patent Ownerargued “that ‘some handheld computing devicesare
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`configured as laptops’” and that the Specification of the ’432 patentstates
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`that “any ‘general purpose computer 111 may be in a desktop or laptop
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`configuration,” and “meaning that 1t encompasses systems configured with
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`separate components (“desktop configuration’) or with integrated
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`components(‘laptop configuration’).” Ex. 1009, 16 (internal citations
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`omitted).
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`Petitioner relies entirely on its misinterpretation of the district court
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`claim construction order and Patent Owner’s arguments in the PNC
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`Litigation to support its proposed construction of “mobile device” as a
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`17
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`

`

`IPR2023-00144
`Patent 10,482,432 Bl
`
`“handheld computing device’ excluding laptops.” See Pet. 8—13
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`(addressing “Claim Construction’’). And, as discussed above, both the claim
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`construction order and Patent Owner’s argument contradict, rather than
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`support, Petitioner’s proposed construction. Petitioner has provided no
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`support for adding the phrase “excluding laptops”to the construction of
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`“mobile device” as “handheld computing device.”
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`Wealso note that the claim construction proposed by Petitioner,
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`especially as it relates to the phrase “excluding laptops,” is contradicted by
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`claim 9 of the ’432 patent, which dependsfrom claim | and explicitly
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`recites, “the customer’s mobile device is a laptop.” Ex. 1001, 15:5-6. As
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`noted previously, claim 9 is the only claim of the ’432 patent that is not
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`challenged. Pet. 4. Petitioner does not address or discuss claim 9 anywhere
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`in its Petition. See generally id.
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`Forits part, Patent Ownerstates, “[t]he Board should apply the
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`District Court’s actual claim construction .
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`.
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`. that ‘mobile device’ means
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`‘handheld computing device.” Prelim. Resp. 18 (citing Ex. 1009, 20).
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`With regard to “excluding laptops” from the construction of “mobile
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`device,” Patent Owner providesextrinsic evidence supporting the conclusion
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`that a skilled artisan would read “laptop”or “laptop configuration”as
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`described in the Specification of the ’432 patent as “a portable
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`microcomputer.” /d. at 19 (citing Ex. 2011, 2).
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`On this record and for purposes of deciding whetherto institutetrial,
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`we construe “mobile device” as “handheld computing device,” because both
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`parties ask us to adopt the District Court’s claim construction. ® We do not
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`8 Petitioner does not dispute that we should “adopt[] the claim constructions
`[Patent Owner] advanced and the Court adopted in [the PNC Litigation].”
`
`18
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`

`

`IPR2023-00144
`Patent 10,482,432 Bl
`
`include the phrase “excluding laptops”as part of this construction as the
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`arguments in support of this construction in the Petition are contradicted by
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`the evidence andPetitioner has otherwise failed to support the inclusion of
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`this phrase in the construction.
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`D.
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`Written Description
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`Petitioner asserts that Oakesis prior art because it and the other
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`patents in the °432 patent’s chain of priority reaching to Oakes lack a written
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`description of “mobile device”as recited in the claims of the ’432 patent
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`because:
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`[T]he priority documents predating July 28, 2017, which
`have identical disclosures, unequivocally limit [Patent Owner]’s
`claims to using general purpose computers or PCs, such as
`laptops and desktops, for remote check deposit and fail to
`include any support or suggestion for using handheld devices
`for remote check deposit or even mention the terms “mobile
`device” or “handheld computing device”(or variations thereof).
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`Pet. 16-17. In support, Petitioner contends that “[l]aptop computers, as
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`mentioned in the Oakes disclosure, are not ‘mobile devices.” /d. at 18.
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`And, Petitioner therefore concludesthat “[a] POSA reviewing Oakes would
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`not have understood the inventors of the ’432 patent to be in possession of
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`completing remote check deposits with handheld devices from 2006
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`Pet. 8. And, we adopt the construction of “mobile device” that Patent
`Owner advancedand the District Court adopted in the PNC Litigation. We
`acknowledge that Petitioner does not agree with the construction we adopt
`for “mobile device,” because we do notinclude the phrase “excluding
`laptops.” And, although Petitioner does not say so, it seems from
`Petitioner’s efforts to explicitly exclude “laptops” from the construction of
`“mobile device”that Petitioner, at least impliedly, acknowledges that
`without this exclusionary phrase “handheld computing device” would be
`understood by a skilled artisan to include “laptops.” Otherwise, the
`exclusionary phrase would be superfluous.
`
`19
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`

`

`IPR2023-00144
`Patent 10,482,432 Bl
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`[because] Oakes lacks any disclosure of such devices.” /d. at 18-19. We
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`reject this argument.
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`This argument appears to present a fairly simple issue for resolution—
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`whether a skilled artisan would understand a “laptop”(as disclosed in the
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`priority document, the Specification of Oakes) to be a “mobile device”(as
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`recited in the challenged claims of the ’423 patent). Stated this way,after
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`consideration of the evidence and arguments before us, we determine the
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`answeris “yes.” Nonetheless, we believe that further discussion of the
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`arguments and evidence, as set forth below, 1s warranted and we elaborate
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`on the reasoning supporting the denial of institution.
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`Webegin with a straightforward comparison of the language of the
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`disclosure in Oakes with the relevant claim term. Oakes discloses a system
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`that includes “[a] general purpose computer ..
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`. ina... laptop
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`configuration” (see Ex. 1005, 3:56—57) and the claimsof the ’432 patent
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`recite a “mobile device” (Ex. 1001, 14:23—16:20). We determinethat a
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`skilled artisan would readily and immediately understand that a general
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`purpose, laptop computer is a mobile device.” The well-known,
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`conventional meaning of “laptop” is a mobile, general purpose computer.
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`” In IPR2023-00143, Petitioner stated that, “prior to the 432 patent, a
`‘laptop’ was knownto be a ‘small, portable personal computer.’” TPR2023-
`00143, Paper 1, 10 (citing the definition of “laptop” in the Microsoft
`Computer Dictionary, Fifth Edition, Microsoft Corporation (2002) (Exhibit
`1024, 315). The Merriam-Webster dictionary defines “laptop” as “of a size
`and design that makes operation and use on one’s lap convenient” and “a
`portable microcomputer having its main components (such as processor,
`keyboard, and display screen) integrated into a single unit capable of
`battery-powered operation.” Ex. 2011, 2.
`
`20
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`

`

`IPR2023-00144
`Patent 10,482,432 Bl
`
`Claim 9 of the °432 patent recites, “the customer’s mobile device is a
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`laptop.” Ex. 1001, 15:5-6. As noted above, claim 9 is the only claim ofthe
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`°A432 patent that Petitioner does not challenge, presumably becauseit directly
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`contradicts its argument that “laptops” are not “mobile devices.” In the
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`Declaration of Dr. Doermannfiled by Petitioner in IPR2023-00143 (also
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`challenging the ’432