Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 8
`
`Entered: July 27, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROTHSCHILD MOBILE IMAGING INNOVATIONS, LLC,
`Petitioner,
`
`v.
`
`MITEK SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00457
`Patent 8,379,914 B2
`____________
`
`
`
`
`
`Before JONI Y. CHANG, MICHAEL R. ZECHER, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 8
`
`Entered: July 27, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROTHSCHILD MOBILE IMAGING INNOVATIONS, LLC,
`Petitioner,
`
`v.
`
`MITEK SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00457
`Patent 8,379,914 B2
`____________
`
`
`
`
`
`Before JONI Y. CHANG, MICHAEL R. ZECHER, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-00457
`Patent 8,379,914 B2
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`
`I. INTRODUCTION
`
`Rothschild Mobile Imaging Innovations, LLC (hereafter “Rothschild”
`
`or “Petitioner”) filed a Petition (“Pet.”) requesting an inter partes review of
`
`claims 1–10 of U.S. Patent No. 8,379,914 B2 (“the ’914 patent,” Ex. 1002).
`
`Paper 2. Mitek Systems, Inc. (hereafter “Mitek” or “Patent Owner”) timely
`
`filed a Preliminary Response (“Prelim. Resp.”). Paper 7.
`
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
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`unless the information presented in the Petition shows “there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” Taking into account Mitek’s Preliminary
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`Response, and for the reasons that follow, we conclude that the information
`
`presented in the Petition does not establish that there is a reasonable
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`likelihood that Rothschild will prevail in challenging claims 1 and 10 as
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`anticipated under 35 U.S.C. §102, or claims 1–10 as unpatentable under 35
`
`U.S.C § 103(a). Pursuant to 35 U.S.C. § 314, we hereby decline to institute
`
`an inter partes review of the ’914 patent.
`
`II. BACKGROUND
`
`A.
`
`Related Matters
`
`According to the parties, there are no pending matters relating to the
`
`’914 patent. Pet. 1; Paper 4, 1.
`
`B.
`
`The’914 Patent
`
`The ’914 patent, titled “Systems and Methods for Mobile Image
`
`Capture and Remittance Processing,” issued February 19, 2013, from U.S.
`
`Patent Application No. 13/622,329, filed on September 18, 2012. Ex. 1002,
`
`at [54], [45], [21], [22]. The ’914 patent claims priority to the following
`
`applications: (1) continuation-in-part of U.S. Patent Application No.
`
`
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`2
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`IPR2016-00457
`Patent 8,379,914 B2
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`12/906,036, filed on October 15, 2010; (2) continuation-in-part of U.S.
`
`Patent Application No. 12/778,943, filed on May 12, 2010; (3) continuation-
`
`in-part of U.S. Patent Application No. 12/346,026, filed on December 30,
`
`2008—now U.S. Patent No. 7,078,900; (4) U.S. Provisional Application No.
`
`61/561,772, filed on November 18, 2011; and (5) U.S. Provisional
`
`Application No. 61/022,279, filed on January 18, 2008. Id. at [63], [60].
`
`The ’914 patent is directed to optimization and enhancement of image
`
`capture and processing for remittance coupons. Ex. 1002, Abstract.
`
`Remittance coupons are slips or coupons that customer can include with a
`
`payment, and they generally include customer account information, an
`
`amount due, and a due date for payment. Id. at 1:41–42, 1:47–49. The
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`customer account information may include the account holder name, mailing
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`address, and a customer account number. Id. at 1:49–51. Other information
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`on the remittance coupon can include the mailing address of the bank or
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`business, and bar codes or code lines. Id. at 1:51–54. An image of a
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`remittance coupon is captured by an image capture device. Id. at 7:27–30,
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`9:9–12. The image capture device is coupled with, or embedded within, a
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`mobile device. Id. The captured image may be processed by a series of
`
`image processing steps on the mobile device. Id. at 9:23–42. The image is
`
`received by a remote server for additional image processing and extraction
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`to capture the content of the remittance coupon. Id. at 15:49–52.
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`There are a series of steps performed to verify the accuracy of the
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`content captured from the image. Ex. 1002, Fig. 2. An address of a biller on
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`the remittance coupon is matched by comparing address content in the
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`extracted content with an address database. Id. at 18:14–34. The biller
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`profile information of the biller, which includes an identity of the biller on
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`3
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`the remittance coupon, is then identified. Id. at 18:36–46. A second content
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`recognition pass is performed on the corrected image to extract content from
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`the remittance coupon. Id. at 20:20–64. The final values determined are
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`then submitted for actual processing of payment. Id. at 21:42–45.
`
`
`Illustrative Claims
`
`C.
`
` Of the challenged claims, claims 1 and 10 are independent claims.
`
`Claims 2–9 depend directly or indirectly from claim 1. Claim 1 is
`
`reproduced below:
`
`A method of processing a remittance coupon captured by
`1.
`a mobile device, comprising:
`
`receiving an image of a remittance coupon
`captured by a mobile device;
`
`correcting at least one aspect of the image to
`produce a corrected image;
`
`performing a first content recognition pass on the
`corrected image to extract content from the remittance
`coupon;
`
`identifying an address of a biller on the remittance
`coupon by comparing address content in the extracted
`content with an address database;
`
`determining biller profile information of the biller
`including an identity of the biller on the remittance
`coupon, by comparing the identified address of the biller
`with a database of biller profile information;
`
`producing a set of billing information, including
`the extracted content and the identity of the biller, for
`processing a payment of the bill; and
`
`using the biller profile information of the biller to
`perform a second content recognition pass on the
`corrected image to extract content from the remittance
`coupon, wherein the biller profile information includes at
`4
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`least one of a remittance coupon format, a remittance
`coupon mask, a location of at least one field on the
`remittance coupon and a format of at least one field.
`
`Ex. 1002, 63:53–64:10.
`
`
`
`D.
`
`Prior Art Relied Upon
`
`Rothschild relies upon the following prior art references:
`
`Patent
`Reference
`
`Identifier
`
`Hoyos
`
`Pandian
`
`Baker
`
`Sipe
`
`Du
`
`Hung
`
`Bressan
`
`
`
`U.S. Patent Publication No.
`2004/0093222 A1
`U.S. Patent No. 7,734,729
`B2
`U.S. Patent No. 6,749,120
`B2
`U.S. Patent No. 7,826,665
`B2
`
`U.S. Patent Publication No.
`2002/0037097 A1
`U.S. Patent Publication No.
`2005/0289182 A1
`U.S. Patent No. 5,862,243 March 6, 1996
`
`Publication or
`Filing Date
`
`March 28, 2002
`
`December 29, 2005 1003
`
`Exhibit
`No.
`
`1001
`
`May 13, 2004
`
`1004
`
`1005
`
`December 31, 2003 1007
`
`December 11, 2000 1008
`
`December 12, 2005 1009
`
`E.
`
`Alleged Grounds of Unpatentability
`
`Rothschild challenges claims 1–7, 9, and 10 of the ’914 patent based
`
`on the alleged grounds of unpatentability set forth in the table below. Pet.
`
`3–5.
`
`Reference(s)
`Hoyos
`
`Hoyos and Pandian
`
`Hoyos and Hung
`
`
`
`Claim(s) Challenged
`1 and 10
`
`1, 4, and 10
`
`2
`
`Basis
`§ 102(b)
`
`§ 103(a)
`
`§ 103(a)
`
`5
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`Reference(s)
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`Basis
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`Claim(s) Challenged
`
`Hoyos, Pandian, and Hung § 103(a)
`
`Hoyos and Bressan
`
`Hoyos, Pandian, and
`Bressan
`Hoyos and Baker
`
`Hoyos, Pandian, and
`Baker
`Hoyos and Sipe
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Hoyos, Pandian, and Sipe
`
`§ 103(a)
`
`Hoyos, Sipe, and Baker
`
`§ 103(a)
`
`Hoyos, Pandian, Sipe, and
`Baker
`Hoyos and Du
`
`§ 103(a)
`
`§ 103(a)
`
`Hoyos, Pandian, and Du
`
`§ 103(a)
`
`2
`
`3
`
`3
`
`5
`
`5
`
`6
`
`6
`
`7
`
`7
`
`9
`
`9
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`
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`As discussed further below, infra Section III.D, Rothschild states that
`
`it is challenging claim 8 in the Petition (Pet. 1), but fails to include this claim
`
`in the grounds.
`
`III. ANALYSIS
`
`A. Claim Interpretation
`
`
`
`We construe claims by applying the broadest reasonable interpretation
`
`in light of the specification. 37 C.F.R. § 42.100(b). Under the broadest
`
`reasonable interpretation standard, and absent any special definitions, claim
`
`terms are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art, in the context of the entire
`
`disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). A claim term, however, “will not receive its ordinary meaning if the
`
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`patentee acted as his own lexicographer and clearly set forth a definition of
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`the disputed claim term in either the specification or prosecution history.”
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`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`If an inventor acts as his or her own lexicographer, the definition must be set
`
`forth in the specification with reasonable clarity, deliberateness, and
`
`precision. Renishaw PTC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`
`1249 (Fed. Cir. 1998)
`
`
`
`Mitek proposes that the claim term “mobile device” be construed as
`
`“a mobile communication device, such as a mobile telephone handset or
`
`Personal Digital Assistant, that includes an imaging device, such as a
`
`scanner or camera, or functionality that allows it to connect to an imaging
`
`device, such as a scanner or camera.” Prelim. Resp. 10. Rothschild does not
`
`propose a per se construction of the claim term “mobile device,” but
`
`contends that “[the] ’914 Patent clearly state[s] that a scanner can be the
`
`mobile device.” Pet. 23 (citing Ex. 1002, 7:56–59).
`
`
`
`Mitek argues that its proposed construction of “mobile device” is
`
`consistent with the claims and Specification of the ’914 patent. Prelim.
`
`Resp. 10. Mitek alleges that “under the plain reading of the claims, two
`
`things are required: (i) a mobile device; and (ii) functionality that allows the
`
`mobile device to capture an image.” Id. Turning to the Specification, Mitek
`
`refers to its disclosures describing the “mobile device” as “a mobile
`
`telephone handset, Personal Digital Assistant, or other mobile
`
`communication device.” Id. at 11 (quoting Ex. 1002, 7:54–56; also citing id.
`
`at 7:23–27, 60:50–52).
`
`Mitek also argues that the “mobile device is either connected to or has
`
`embedded within it an ‘image capture device’ such as a camera or scanner.”
`
`
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`7
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`Prelim. Resp. 11. To support this assertion, Mitek references a portion of
`
`the Specification that states, in part, “the mobile device activates an image
`
`capture device to capture an image of a remittance coupon with the image
`
`capture device, such as a camera, that is coupled with, or embedded within,
`
`the mobile device,” and where “[t]he mobile device can include a camera or
`
`other imaging device, such as a scanner, or might include functionality that
`
`allows it to connect to a camera or other imaging device.” Id. (quoting Ex.
`
`1002, 9:9–11, 21:57–67, also citing Ex. 1002, 7:27–39, 7:56–59) (emphasis
`
`omitted). Mitek further contends that “[e]very embodiment” of the
`
`Specification relating to a mobile device describes an imaging device, such
`
`as a camera or scanner, that is coupled to or embedded within the mobile
`
`device. Id. at 12 (citing Ex. 1002, 2:43–48, 3:37–38, 7:18–20, 8:5–6, 37:2–
`
`6, 38:64–65, 43:40–41). Figure 50, reproduced below, is also identified as
`
`additional support for Mitek’s allegation that a mobile device has an imaging
`
`device such as a scanner or camera embedded or coupled to it. See id. at 12–
`
`13.
`
`Figure 50 is a block diagram of functional elements of a mobile device in
`embodiments of the invention. Ex. 1002, 6:61–63.
`8
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`The Specification states that
`
`
`
`The system 100 includes a mobile device 102, such as a cellular
`phone, smartphone, tablet, personal digital assistant (PDA) or
`other portable electronic device that may be connected with a
`communications network. The mobile device 102 will include
`an image capture device (not shown), such as a digital camera
`or a portable scanning device, which is capable of capturing an
`image of a document.
`
`
`*
`
`
`
`*
`
`
`
`*
`
`The mobile device can comprise a mobile telephone handset,
`Personal Digital Assistant, or other mobile communication
`device. The mobile device can include a camera or other
`imaging device, such as a scanner, or might include
`functionality that allows it to connect to a camera or other
`imaging device. The connection to an external camera or other
`imaging device can comprise a wired or wireless connection. In
`this way the mobile device can connect to an external camera or
`other imaging device and receive images from the camera or
`other imaging device.
`
`Ex. 1002, 7:23–30, 7:54–63.
`
`We find no disclosure in the Specification contrary to Mitek’s
`
`characterization that a mobile device has an image capture device included,
`
`embedded in, or coupled to it. The Specification also consistently indicates
`
`that the mobile device may have other functionalities, including, for
`
`instance, providing transmission of captured images, and elements within the
`
`mobile device provide that functionality. See, e.g., Ex. 1002, 7:30–33, Fig.
`
`50.
`
`We do not find a special definition offered for the term “mobile
`
`device” in the Specification because its descriptions fall within a broad
`
`meaning that would be generally ascribed to it. However, viewing the term
`
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`“mobile device” to mean “any device that is mobile” would be overly broad
`
`because, as discussed supra, the Specification contains clear and consistent
`
`descriptions of the term “mobile device” that lend further guidance to its
`
`meaning. The construction of the term “mobile device” proffered by Mitek
`
`of “a mobile communication device, such as a mobile telephone handset or
`
`Personal Digital Assistant, that includes an imaging device, such as a
`
`scanner or camera, or functionality that allows it to connect to an imaging
`
`device, such as a scanner or camera” is, in our view, consistent with the
`
`descriptions of the term as it is used in the Specification, and does not
`
`impermissibly import limitations from various embodiments. On the other
`
`hand, we view Rothschild’s statement that “[the] ’914 Patent clearly state[s]
`
`that a scanner can be the mobile device,” as inconsistent with the
`
`Specification because it discloses that an image capture device, such as a
`
`scanner, is included in or coupled to a mobile device, however, a scanner is
`
`not, in and of itself, a “mobile device.” See Pet. 23. As such, we view
`
`Mitek’s proposed construction of the claim term “mobile device” as
`
`consistent with a broadest reasonable construction in the context of the
`
`disclosure, and we adopt the same for the purposes of this Decision.
`
`
`
`Rothschild proposes a construction for the claim term “code line.”
`
`Pet. 20–21. Mitek proposes an alternative construction for this term, as well
`
`as a construction for the claim term “address database.” Prelim. Resp. 13–
`
`20. We need not assess these proposed constructions for purposes of this
`
`Decision because they are not necessary to resolve the issue discussed
`
`below. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999) (explaining that only those claim terms or phrases that
`
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`are in controversy need to be construed, and only to the extent necessary to
`
`resolve the controversy).
`
`B. Alleged Anticipation of Claims 1 and 10 by Hoyos
`
` Rothschild contends that independent claims 1 and 10 of the ’914
`
`patent are anticipated by Hoyos. Pet. 22–32. To support its contentions,
`
`Rothschild provides explanations as to how Hoyos purportedly discloses
`
`each claim limitation. Id. Rothschild also relies upon the Declaration of
`
`Dr. Fang Qiu (“Qiu Declaration”) (Ex. 1016) to support its contentions.
`
`Mitek counters that Hoyos does not anticipate claims 1 and 10 because it
`
`does not disclose, among other things, the element of a “mobile device.”
`
`Prelim. Resp. 20–30. Based on the evidence of record, we are not persuaded
`
`that Rothschild properly accounts for this element of the independent claims.
`
`We begin our discussion with a brief summary of Hoyos, and then
`
`address the basis of the contentions.
`
`1. Hoyos (Ex. 1001)
`
`Hoyos generally discloses the use of an automated transaction
`
`machine that includes a scanner that can receive a bill or a coupon. Ex. 1001,
`
`Abstract, ¶¶ 1, 2. Figure 10, reproduced below, depicts an embodiment of
`
`an automated transaction machine.
`
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`Figure 10 depicts a block diagram of a preferred embodiment of an
`automated transaction machine. Ex. 1001 ¶ 150.
`
`In an embodiment, the automated transaction machine includes
`
`
`
`computer 1000 with memory 1002, where computer 1000 is connected to
`
`touch screen display 1004. Ex. 1001 ¶ 150. Touch screen display 1004 is
`
`used to present visual information and receive instructions and data from a
`
`customer. Id. The automated transaction machine includes scanner 1008,
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`described as a “standard black and white scanner,” configured to receive a
`
`coupon from a customer. Id. ¶ 152. The automated transaction machine
`
`also has card reader 1006, cash dispenser 1010, and cash acceptor 1012. Id.
`
`¶¶ 151, 154.
`
`Once the bill or coupon is scanned by a scanner, Hoyos discloses that
`
`“[t]he coupon is processed by application of connected component analysis,
`
`segmentation, coupon matching, and data extraction to determine an
`
`associated vendor and customer account information. This information is
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`used to complete a payment transaction.” Ex. 1001, Abstract. The system
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`of Hoyos is depicted in Figure 1 reproduced below:
`
`
`
`Figure 1 is a block diagram depicting a preferred embodiment of a system
`of Hoyos. Ex. 1001 ¶ 16.
`
`
`
`The Hoyos system includes scanner 112, database of coupon data 116,
`
`and coupon engine 114, which compares a coupon image received from
`
`scanner 112 with the database of coupon data 116 to determine the type of
`
`coupon and to extract the relevant fields. Ex. 1001 ¶ 16. The scanned image
`
`is corrected for imperfections from the scanning process. Id. ¶ 50. Relevant
`
`portions of the coupon image are identified, an optical character recognition
`
`(“OCR”) engine is applied to these portions, and the resulting character
`
`strings are compared to a database for identification purposes. See id. ¶¶ 7,
`
`144, 145. The type of extracted content that is determined includes: “(1)
`
`barcode, (2) line, (3) frame, (4) magnetic ink character recognition
`
`(“MICR”) line, (5) table, (6) horizontal region (or text word), (7) logo, (8)
`
`text line, (9) vertical region, (10) text area, (11) OCR line, and (12)
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`connected component types.” Id. ¶ 45. Information from the segmentation
`
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`process is compared with information from the coupon database. Id. ¶ 46.
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`A comparison identifies the coupon type and associated vendor. Id. ¶ 30.
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`2. Analysis
`
`Rothschild alleges that Hoyos discloses all the limitations of claim 1.
`
`In particular, as to the elements of claim 1, reciting, “[a] method of
`
`processing a remittance coupon captured by a mobile device” and
`
`“receiving an image of a remittance coupon captured by a mobile device”1
`
`(Ex. 1002, 63:53–56 (emphasis added)), Rothschild refers to the Qiu
`
`Declaration in support of its assertion that Hoyos anticipates the “mobile
`
`device” limitations. Pet. 22–24 (citing Ex. 1016, 19–20).2 The evidence and
`
`argument that Rothschild provides in the Petition in support of its assertion
`
`that Hoyos discloses a “mobile device” is limited and conclusory. Dr. Qiu
`
`states that
`
`Hoyos further discloses a scanner that scans the image and
`generates an electronic representation of the coupon. [Ex.
`1001] [] ¶ [0032]. Further, it is also stated in the Specification
`of the ’914 Patent that the mobile device can be a scanner. See
`Ex. 1002, col. 7, ll. 56–59. Thus, in my opinion the scanner is
`the mobile device that captures an image of the coupon and
`provides the image data to an associated computer for further
`processing. See id., [0004].
`
`Ex. 1016, 19.
`
`Similarly, Rothschild argues that
`
`
`1 Claim 10 includes a similar step, which is, “receiving an image of a
`remittance coupon captured by a mobile device.” Ex. 1002, 64:44–45.
`2 The Petition refers to the Qiu Declaration at pages 15 and 16 for support of
`its assertions relating to these limitations, but the citations appear to reflect
`an inadvertent error. Instead, we presume that pages 19 and 20 of the
`Declaration should have been identified for the discussion on these
`limitations. See Pet. 23–24.
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`̕[the] ‘914 Patent clearly state[s] that a scanner can be the
`mobile device: ‘[t]he mobile device can include a camera or
`other imaging device, such as a scanner, or might include
`functionality that allows it to connect to a camera or other
`imaging device.’ See e.g., Ex. 1002, col. 7, ll. 56–59. Hence,
`the scanner of Hoyos is the ‘mobile device’ recited in the
`preamble of the claim.
`
`Pet. 23.
`
`In response, Mitek argues that Hoyos fails to teach the use of a
`
`“mobile device” under its proposed construction of the claim term, and that
`
`the “the ’914 patent explicitly distinguishes between a mobile device and a
`
`scanner.” Prelim. Resp. 22–23. Mitek alleges that, although Hoyos may
`
`disclose a “scanner,” which is an imaging device, “it is not a mobile
`
`communication device that includes or connects to an imaging device.” Id.
`
`at 23. Mitek further contends that Hoyos discloses an “automated
`
`transaction machine” that includes a scanner, however, Hoyos’s “automated
`
`transaction machine is in fact an automatic teller machine or ATM, as it
`
`contains a ‘card reader,’ a ‘cash dispenser,’ and a ‘cash acceptor’ in addition
`
`to a scanner.” Id. (citing Ex. 1001 ¶ 150, Fig. 10). Mitek then states that
`
`“ATMs are not mobile.” Id.
`
`On this record, we are not persuaded that Rothschild presents
`
`sufficient evidence that would support a finding that Hoyos describes a
`
`“mobile device,” as required by independent claims 1 and 10. “A claim is
`
`anticipated only if each and every element as set forth in the claim is found,
`
`either expressly or inherently described, in a single prior art reference.”
`
`Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631
`
`(Fed. Cir. 1987). Under the construction adopted for the purposes of this
`
`Decision, see supra Section III.A, Rothschild does not sufficiently
`
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`15
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`IPR2016-00457
`Patent 8,379,914 B2
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`demonstrate that Hoyos explicitly or inherently discloses a “mobile device.”
`
`Rothschild itself points out that the ’914 patent states that “[t]he mobile
`
`device can include a camera or other imaging device, such as a scanner.”’
`
`Pet. 23 (citing Ex. 1002, 7:56–57) (emphasis added). Under the adopted
`
`claim construction, a mobile device “includes” an imaging device such as
`
`Hoyos’s scanner, but there is no evidentiary basis provided to support that a
`
`scanner itself is the same as, or equivalent to, a mobile device, as Rothschild
`
`contends. Indeed, the weight of the evidence indicates that a “mobile
`
`device” and “scanner” are different elements with different functions.
`
`Moreover, there is no evidence or argument presented by Rothschild
`
`to support that Hoyos’s scanner is “mobile.” Hoyos’s scanner, which
`
`Rothschild relies upon for the teaching of a mobile device, is part of
`
`“automated transaction machine” in some embodiments. Rothschild fails to
`
`direct us to an explicit teaching in Hoyos to support that either its
`
`“automated transaction machine” or its scanner is mobile. Alternatively, in
`
`order to demonstrate that a reference inherently discloses this claim element,
`
`Rothschild would have had to provide some basis that the reference
`
`“‘necessarily functions in accordance with, or includes, the claimed
`
`limitations.’” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed.
`
`Cir. 2002) (citing MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362,
`
`1365 (Fed. Cir. 1999)). Rothschild has not presented any argument or
`
`evidence to support that the scanner of Hoyos is inherently mobile.
`
`Accordingly, based on the information presented in the Petition, we
`
`determine that Rothschild has not established a reasonable likelihood of
`
`prevailing in showing that claims 1 and 10 of the ’914 patent are anticipated
`
`by Hoyos.
`
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`Patent 8,379,914 B2
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`C. Alleged Obviousness of Claims 1, 4, and 10 Over Hoyos and Pandian
`
`
`
`Rothschild also contends that independent claims 1 and 10, as well as
`
`dependent claim 4, are unpatentable under 35 U.S.C. § 103(a) over Hoyos
`
`and Pandian. Pet. 33–39. Claim 4 depends directly from claim 1. Ex. 1002,
`
`64:18–20. As discussed above in the anticipation ground based on Hoyos,
`
`Rothschild has not shown sufficiently that Hoyos discloses the “mobile
`
`device” of independent claims 1 and 10. Hoyos does not allege that Pandian
`
`teaches or discloses this element of claims 1 and 10, but rather relies upon
`
`Hoyos to teach this limitation based on its anticipation challenges only, and
`
`without providing any supplementation in its obviousness evidence and
`
`arguments. Pet. 34, 39. In light of Rothschild’s failure to demonstrate a
`
`reasonable likelihood of prevailing on its assertion that claims 1 and 10 are
`
`anticipated by Hoyos, the obviousness ground based, in part, on Hoyos, also
`
`fails as to claims 1 and 10. By virtue of dependency to independent claim 1,
`
`the challenge to claim 4 also fails.
`
`D. Alleged Obviousness of Claims 2, 3, and 5–9 Over Various Prior Art
`
`
`
`Rothschild contends that claims 2, 3, 5–7, and 9 are unpatentable
`
`under 35 U.S.C. § 103(a) over various prior art combinations. Pet. 39–57.
`
`Rothschild identifies a challenge to claim 8 in the Petition (Pet. 1), and the
`
`Qiu Declaration contains a discussion relating to alleged obviousness of
`
`claim 8 (Ex. 1016, 42–43). The Petition, however, fails to identify or
`
`provide any ground on which a challenge to claim 8 is based, does not
`
`provide any related argument, and does not identify any evidence in support
`
`of a challenge to this claim.3 As such, the Petition fails to meet the
`
`
`3 Mitek does not provide any arguments relating to claim 8 because it takes
`17
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`IPR2016-00457
`Patent 8,379,914 B2
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`requirements of 35 U.S.C. § 314(a) as to claim 8, and we therefore deny
`
`institution of an inter partes review as to this claim.
`
`Claims 2, 3, 5–7, and 9 depend directly or indirectly from claim 1.
`
`Ex. 1002, 64:11–17, 64:21–40. As discussed above in the anticipation
`
`ground based on Hoyos, Rothschild has not shown sufficiently that Hoyos
`
`discloses the “mobile device” of claim 1. Rothschild does not allege that the
`
`additional prior art that serves as the basis of the obviousness challenges
`
`teaches this element of claim 1, but rather relies upon this additional prior art
`
`to teach only the additional limitations recited in claims 2, 3, 5–7, and 9,
`
`respectively. Pet. 39–57. In light of Rothschild’s failure to demonstrate a
`
`reasonable likelihood of prevailing on its assertion that claim 1 is anticipated
`
`by Hoyos, the obviousness ground based, in part, on Hoyos, that challenges
`
`dependent claims 2, 3, 5–7, and 9 also fails.
`
`
`
`IV. CONCLUSION
`
`
`
`For the foregoing reasons, the information presented in the Petition
`
`does not demonstrate that there is a reasonable likelihood that Rothschild
`
`would prevail in challenging claims 1 and 10 as anticipated under 35 U.S.C.
`
`§102(b), or claims 1–10 as unpatentable under 35 U.S.C § 103(a).
`
`
`the position that Petitioner does not challenge this claim. See Prelim. Resp.
`21.
`
`18
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`IPR2016-00457
`Patent 8,379,914 B2
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`
`
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`Accordingly, it is:
`
`V. ORDER
`
`ORDERED that the Petition is denied as to claims 1–10 of the ’914
`
`patent; and
`
`FURTHER ORDERED that no inter partes review is instituted.
`
`
`
`For PETITIONER:
`
`Scott Sample
`twright@cunninghamswaim.com
`
`Thomas Wright
`ssample@ipoftexas.com
`
`For PATENT OWNER:
`
`Edward J. Benz III
`Naveen Modi
`PAUL HASTINGS
`joebenz@paulhastings.com
`naveenmodi@paulhastings.com
`
`
`
`19
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