United Services Automobile Association

Patent Trials and Appeals Board

Nov 24, 2020

IPR2019-01083 (P.T.A.B. Nov. 24, 2020)

Trials@uspto.gov Paper 39
571-272-7822 Date: November 24, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WELLS FARGO BANK, N.A.,
Petitioner,
v.
UNITED SERVICES AUTOMOBILE ASSOCIATION,
Patent Owner.
____________

IPR2019-01083
Patent 8,699,779 B1
____________

Before JONI Y. CHANG, STACEY G. WHITE, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

CHANG, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Wells Fargo Bank, N.A. (“Petitioner”) filed a Petition requesting an
inter partes review (“IPR”) of claims 1−18 (“the challenged claims”) of
U.S. Patent No. 8,699,779 B1 (Ex. 1001, “the ’779 patent”). Paper 2
(“Pet.”). United Services Automobile Association (“Patent Owner”) filed a
Preliminary Response. Paper 6 (“Prelim. Resp.”). Upon consideration of
the Petition and Preliminary Response, we instituted the instant inter partes
review of all of the challenged claims and on all of the grounds presented in
the Petition. Paper 9 (“Dec.”).
Subsequent to institution, Patent Owner filed a Response (Paper 17,
“PO Resp.”) and a Sur-reply (Paper 23, “Sur-reply”); Petitioner filed a Reply
(Paper 22, “Reply”). An oral hearing was held on September 23, 2020, and
a transcript is included in the record as Paper 38 (“Tr.”).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons set forth below, Petitioner has not demonstrated by a
preponderance of the evidence that claims 1−18 of the ’779 patent are
unpatentable.
A. Related Matters
The parties indicate that the ’779 patent is involved in United Servs.
Automobile Ass’n v. Wells Fargo Bank, N.A., No. 2:18-CV-00245-JRG
(E.D. Tex., filed Jun. 7, 2018). Pet. 61; Paper 4, 2. The ’779 patent also was
involved in a proceeding under the transitional program for covered business
method patents (“CBM”), which was not instituted because the ’779 patent
was ineligible for CBM review. See Wells Fargo Bank, N.A. v. United
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Servs. Auto. Ass’n, CBM2019-00005, Paper 22 (PTAB May 15, 2019)
(Decision Denying Institution).1

1 In addition, Petitioner filed other petitions challenging the patentability of
certain subsets of claims in the following patents owned by Patent Owner:
(1) U.S. Patent No. 9,818,090 B1 (CBM2019-00002 and IPR2019-00815);
(2) U.S. Patent No. 9,336,517 B1 (CBM2019-00003 and IPR2019-01081);
(3) U.S. Patent No. 8,977,571 B1 (CBM2019-00004 and IPR2019-01082);
(4) U.S. Patent No. 9,224,136 B1 (CBM2019-00027); (5) U.S. Patent No.
10,013,681 B1 (CBM2019-00028); and (6) U.S. Patent No. 10,013,605 B1
(CBM2019-00029). See Paper 4, 2−3. To date, we dismissed the petition
and terminated the proceeding in CBM2019-00002, we denied the petition
because the involved patent was not eligible for covered business method
patent review in each of CBM2019-00003, CBM2019-00004, CBM2019-
00005, CBM2019-00027, CBM2019-00028, and CBM2019-00029, and we
denied the petition on the merits in IPR2019-00815. Wells Fargo Bank,
N.A. v. United Servs. Auto. Ass’n, CBM2019-00002, Paper 16 (PTAB Apr.
26, 2019) (Decision Denying Institution); Wells Fargo Bank, N.A. v. United
Servs. Auto. Ass’n, CBM2019-00003, Paper 25 (PTAB June 3, 2019)
(Decision Denying Institution); Wells Fargo Bank, N.A. v. United Servs.
Auto. Ass’n, CBM2019-00004, Paper 22 (PTAB May 15, 2019) (Decision
Denying Institution); Wells Fargo Bank, N.A. v. United Servs. Auto. Ass’n,
CBM2019-00005, Paper 25 (PTAB June 3, 2019) (Decision Denying
Institution); Wells Fargo Bank, N.A. v. United Servs. Auto. Ass’n,
CBM2019-00027, Paper 13 (PTAB Oct. 1, 2019) (Decision Denying
Institution); Wells Fargo Bank, N.A. v. United Servs. Auto. Ass’n,
CBM2019-00028, Paper 14 (PTAB Oct. 1, 2019) (Decision Denying
Institution); Wells Fargo Bank, N.A. v. United Servs. Auto. Ass’n,
CBM2019-00029, Paper 13 (PTAB Oct. 1, 2019) (Decision Denying
Institution); Wells Fargo Bank, N.A. v. United Servs. Auto. Ass’n,
IPR2019-00815, Paper 17 (PTAB Aug. 26, 2019) (Decision Denying
Institution). We instituted a review in IPR2019-01082. Wells Fargo Bank,
N.A. v. United Servs. Auto. Ass’n, IPR2019-01082, Paper 9 (PTAB Dec. 13,
2019) (Decision Granting Institution).
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B. The ’779 Patent
The ’779 patent is titled “Systems and Methods For Alignment Of
Check During Mobile Deposit.” Ex. 1001, code (54). Figure 1 of the ’779
patent is reproduced below.

Figure 1 above illustrates a system “in which example embodiments
and aspects may be implemented.” Id. at 2:44−46. As shown in Figure 1,
system 100 includes an account owner (user 102) and financial institutions
130, 140, 150 (e.g., banks), communicating with each other via networks
120 (e.g., the Internet). Id. at 2:46−53, 3:5−23. User 102 may deposit check
108 in account 160 and financial institution 130 may process and clear check
108. Id. at 3:9−11. For example, after endorsing check 108, user 102 uses
mobile device 106 that includes a camera to convert check 108 into a digital
image by taking a picture of the front and/or back of check 108. Id. at
3:46−49.
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The ’779 patent recognizes that “depositing a check typically involves
[a payee] going to a local bank branch and physically presenting the check to
a bank teller.” Ex. 1001, 1:19–24. Thus, “[t]o reduce such burdens for the
payee, systems and methods have been developed to enable the remote
deposit of checks.” Id. at 1:24–26. The ’779 patent states:
For example, the payee may capture a digital image of a check
using a mobile device. The financial institution may then receive
from the payee the digital image of the check. The financial
institution may then use the digital image to credit funds to the
payee.
Id. at 1:27–31. The ’779 patent, however, recognizes that “[s]uch a
technique requires the efficient and accurate detection and extraction of the
information pertaining to a check in the digital image” and that “[c]apturing
a digital image at a mobile device that allows for detection and extraction of
the information from the digital image is difficult.” Id. at 1:31–36. In
addition, the ’779 patent discloses that electronically exchanging a check
image requires the image to be in “Check 21 compliant format.” Id. at 8:61–
64. The Specification explains that:
The Check Clearing for the 21st Century Act (or Check 21 Act)
is a United States federal law that allows the recipient of a paper
check to create a digital version, thereby eliminating the need for
further handling of the physical document. The Check 21
standard for electronic exchange is defined in the standard DSTU
X9.37-2003 (“X9.37”). It is a binary interchange format.
Id. at 8:65–9:4.
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The Specification discloses an invention wherein:
An alignment guide may be provided in the field of view
of a camera associated with a mobile device used to capture an
image of a check. When the image of the check is within the
alignment guide in the field of view, an image may be taken by
the camera and provided from the mobile device to a financial
institution. The check may be deposited in a user's bank account
based on the image.
Id. at 1:40–46 (emphasis added).
The Specification explains that “[t]o increase the likelihood of
capturing a digital image of the check 108 that may be readable and
processed such that the check 108 can be cleared, an alignment guide may
be provided in the field of view of the camera of the mobile device 106.” Id.
at 3:55–59 (emphasis added).
Figure 3 of the ’779 patent is reproduced below.

As shown in Figure 3 above, image 230 comprises check image 247,
background image 250, and alignment guide 235. Id. at 6:1−3. Image 230
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may be provided in the field of view of the camera during image capture of
the check. Id. at 6:13−14. The user may move the camera or the check so
that check image 247 appears within or lines up with alignment guide 235.
Id. at 6:14−17.
The Specification states that “[t]he alignment guide may provide a
pre-image capture quality check that helps reduce the number of
non-conforming images of checks during presentment of the images to a
financial institution for processing and clearing.” Id. at 3:66–4:2 (emphasis
added). The Specification also explains that:
The alignment guide may be provided during image
capture to assist the user 102 in positioning the check 108 so that
the image of the check 108 may be captured in such a manner
that it may be more easily processed and cleared during
subsequent operations, such as those involving one or more
financial institutions.
Id. at 5:42–48 (emphasis added).
[T]he software object may capture the image of the check
108 and transmit that image to the server 322 that in turn may
perform those operations, verifies that the image quality is within
acceptable thresholds, and communicates that verification back
to the client 320, which can then instruct the user 102 to take a
picture of the other side of the check 108.
Id. at 8:55–60 (emphasis added).
The Specification describes the following about a disclosed
implementation:
At 960, when the image of the check is within the
alignment guide, a digital image of the check may be created
using the camera. In an implementation, the user may instruct
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the camera (e.g., by pressing a button on the camera or the mobile
device) to create the digital image. In another implementation,
the camera may automatically create the digital image as soon as
the image of the check is within the alignment guide. In this
manner, the user may point the camera at the check such that the
image of the check appears in the field of view, and after the
alignment guide has been adjusted (either by the user or
automatically by the camera, the mobile device, or the financial
institution via a communications network) and/or the check has
been repositioned within the alignment guide by the user, a
digital image of the check may be created without further user
intervention.
Id. at 15:6–20.
C. Illustrative Claim
Of the challenged claims, claims 1 and 10 are independent.
Claims 2−9 depend from claim 1, and claims 11−18 depend from claim 10.
Claim 1 is illustrative:
1. A system for depositing a check, comprising:
a mobile device having a camera, a display and a processor,
wherein the processor is configured to:
project an alignment guide in the display of the mobile device,
the display of the mobile device displaying a field of view of
the camera;
monitor an image of the check that is within the field of view;
determine whether the image of the check aligns with the
alignment guide;
automatically capture the image of the check when the image
of the check is determined to align with the alignment guide;
and
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transmit the captured image of the check from the camera to
a depository via a communication pathway between the
mobile device and the depository.
Ex. 1001, 18:36–51 (emphases added).
D. Prior Art Relied Upon
Petitioner relies upon the references listed below (Pet. 20–21):
Reference Date Exhibit No.
Nepomniachtchi, US 7,778,457 B22 Aug. 17, 2010 1003
Yoon, US 2007/0262148 A1 Nov. 15, 2007 1005
Acharya, WO 01/61436 A2 Aug. 23, 2001 1032
Cho, US 7,120,461 B2 Oct. 10, 2006 1033

2 Based on this entire trial record, we determine that Petitioner has made a
sufficient showing that Nepomniachtchi qualifies as prior art under § 102(e).
Pet. 21−25 (Nepomniachtchi “was filed on March 3, 2010, as a continuation
of application no. 12/346,026, filed on December 30, 2008, which in turn
claimed priority to provisional application no. 61/022,279, filed January 18,
2008, Ex. 1003, Cover”; and “every element of claim 1 of Nepomniachtchi
had § 112 support in both the parent and provisional applications as shown
in the table below.”). Patent Owner does not challenge the prior art status of
Nepomniachtchi. See generally PO Resp.
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E. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability
(Pet. 20−21)3:
Claims
Challenged 35 U.S.C. § References
1, 2, 4−12, 14−18 103(a) Nepomniachtchi, Yoon, Acharya
3, 13 103(a) Nepomniachtchi, Yoon, Acharya, Cho

II. ANALYSIS
A. Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(quotation marks omitted).
Here, Petitioner asserts that, as of August 2009, a person of ordinary
skill in the art in the context of the ’779 patent would have been a person
having at least a bachelor’s degree in electrical engineering, computer

3 For purposes of this Decision, we assume the claims at issue have an
effective filing date prior to March 16, 2013, the effective date of the
Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
(“AIA”), and we apply the pre-AIA version of 35 U.S.C. § 103.
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science, or computer engineering, or equivalent, and at least two years of
experience with image scanning technology involving transferring and
processing of image data to and at a server. Pet. 10−11 (citing Ex. 1002
¶ 15). Patent Owner does not dispute Petitioner’s assessment. PO Resp. 22
(stating that it “applies this level of ordinary skill in the art in its Response”).
We note that Petitioner’s assessment appears consistent with the level of
ordinary skill in the art at the time of the invention as reflected in the prior
art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001). As such, in this Final Written Decision, we apply Petitioner’s
assessment on the level of ordinary skill in the art.
B. Claim Construction
In an inter partes review proceeding based on a petition filed on or
after November 13, 2018, a patent claim shall be construed using the same
claim construction standard that would be used to construe the claim in a
civil action under 35 U.S.C. § 282(b). See Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358
(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). This rule adopts the
same claim construction standard used by Article III federal courts, which
follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and
its progeny. Under this standard, the words of a claim are generally given
their “ordinary and customary meaning,” which is the meaning the term
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would have to a person of ordinary skill at the time of the invention, in the
context of the entire patent including the specification. See Phillips, 415
F.3d at 1312–13.
Petitioner asserts that the parties disagree on the construction of
several terms from claims at issue in this Petition in the parallel district court
proceeding. Pet. 11−13 (citing Ex. 1034, 6−8; Exs. 1035−1037 (the parties’
claim construction briefs filed in the district court proceeding)). According
to Petitioner, however, “[t]hese construction disputes do not affect the
outcome of this petition with respect to any claim.” Id. at 11. For example,
Petitioner argues that the parties’ dispute regarding the construction of
“automatically capture the image of the check when the image of the check
is determined to align” is immaterial to this Petition because Yoon discloses
that the image is automatically captured without human intervention, which
would satisfy either party’s construction. Id. at 37−38.
Patent Owner notes that the district court issued a claim construction
order for certain claim terms of the ’779 patent and addresses the term
“determine whether the image of the check aligns with the alignment guide”
and the term “mobile device.” PO Resp. 23; Ex. 2026 (Claim Construction
Memorandum Opinion and Order). In its Reply, Petitioner counters that
construction of those terms are unnecessary. Reply 2−6.
Based on this entire trial record, we find that it is unnecessary to
construe any claim term for purposes of this Final Written Decision. See
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in
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controversy, and only to the extent necessary to resolve the controversy’”
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999))).
C. Principles of Law
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to 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 obviousness is 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 prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
D. Obviousness over Nepomniachtchi in view of Yoon and Acharya
Petitioner asserts that claims 1, 2, 4−12, and 14−18 are unpatentable
under § 103(a) as obvious over Nepomniachtchi, Yoon, and Acharya, and
that dependent claims 3 and 13 are unpatentable under § 103(a) as obvious
over Nepomniachtchi, Yoon, Acharya, and Cho, citing the Declaration of
Dr. Peter Alexander for support. Pet. 25–60 (citing Ex. 1002).
Patent Owner argues that Petitioner fails to articulate a sufficient
reason to combine the teachings of Nepomniachtchi and Yoon to arrive at
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the claimed invention. PO Resp. 29−51. For the reasons discussed below,
we agree with Patent Owner.
Based on the evidence in this entire trial record, we determine that
Petitioner has not demonstrated by a preponderance of the evidence that
claims 1−18 are unpatentable.
1. Nepomniachtchi (Exhibit 1003)
Nepomniachtchi discloses methods and systems for mobile image
capture and processing of checks. Ex. 1003, codes (54), (57).
Nepomniachtchi teaches that the “mobile image capture and processing
systems and methods may be used with a variety of documents, including
financial documents such as personal checks, business checks, cashier’s
checks, certified checks, and warrants.” Id. at 6:6−9. According to
Nepomniachtchi, by capturing and using an image of a check, “the check
clearing process is performed more efficiently.” Id. at 6:9−11.
Nepomniachtchi explains that “[b]efore a check amount is deducted from a
payer’s account, the amount, account number, and other important
information must be extracted from the check,” and that “[t]his highly
automated form of extraction is done by a check processing control system
that captures information from the Magnetic Ink Character Recognition
(‘MICR’) line . . . that [is] printed on the bottom of a check using magnetic
ink.” Id. at 1:25−32.
Nepomniachtchi also discloses that many different factors may affect
the quality of an image. Id. at 7:4−6. For example, optical defects, such as
out-of-focus images, unequal contrast or brightness, or other optical defects,
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might make it difficult to process an image of a document (e.g., a check,
payment coupon, deposit slip, etc.). Id. at 7:6−10. “The quality of an image
may also be affected by the document position on as surface when
photographed or the angle at which the document was photographed,” and
that “[t]his affects the image quality by causing the document to appear, for
example, right side up, upside down, skewed, etc.” Id. at 7:10−14 (emphases
added). According to Nepomniachtchi, a “document image taken using a
mobile device might have one or more of the defects discussed,” and
“[i]f the quality of an image is determined to be poor, a user may be
prompted to take another image.” Id. at 7:51−59.
Figure 7 of Nepomniachtchi is reproduced below.

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Figure 7 of Nepomniachtchi above illustrates a flowchart of an
example method. Id. at 9:23−24. In operation 701, a user logs into a
document capture system on a mobile device. Id. at 9:25−26. In operation
702, the user selects the type of document for a check, payment coupon, or
deposit slip. Id. at 9:33−35. In operation 704, an image is captured. Id. at
9:41. The application running on the mobile device may prompt the user to
take a picture of the front and back of a check. Id. at 9:41−50. The
application also conducts image processing to determine if the quality of the
images is sufficient for further processing. Id. at 9:50−54. At operation
706, an amount is entered. Id. at 9:58−59. In some embodiments, the
system determines the amount by processing the image using optical
character recognition (“OCR”). Id. at 9:64−10:8. In operation 708, the
image is transmitted to a server, and the server confirms that the image was
received by transmitting a message back to the mobile device. Id. at
10:9−15.
In operation 710, image processing is performed, in which the server
cleans up the image by “performing auto-rotate, de-skew, perspective
distortion correction, cropping, etc.” Id. at 10:16−19. The server also
processes the image to produce a bi-tonal image for data extraction. Id. at
10:19−20. In some embodiments, some or all data processing might be
performed at the mobile communication device. Id. at 10:21−22. And “in
some embodiments, a server based implementation might be employed to
off-load processing demands from the mobile device.” Id. at 10:54−56.
“Additionally, in some cases it might be quick as or quicker than a system
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that uses the mobile communication device to process an image to determine
image quality.” Id. at 10:56−59.
In operation 712, the processing of the document is completed. Id. at
10:29−30. When the server has confirmed that all necessary data can be
extracted from a received image, it transmits a status message to the mobile
device. Id. at 10:30−33. However, “if some necessary data cannot be
extracted, the server may transmit a request for additional data,” including a
request for an additional image. Id. at 10:33−36.
2. Yoon (Exhibit 1005)
Yoon is a U.S. patent application publication titled “Apparatus and
Method for Photographing a Business Card in Portable Terminal.”
Ex. 1005, code (54). According to Yoon, at the time of its invention,
portable terminals were “capable of photographing a business card using a
camera, and providing a business card recognition function.” Id. ¶ 6. Yoon
teaches that “[i]n the business card recognition function, the probability of
satisfactorily recognizing the business card in order to obtain the information
contained in the business card varies depending on photographing
conditions, such as the size, brightness, and image quality of the
photographed business card.” Id. ¶ 7.
Yoon teaches “an apparatus and method for allowing a business card
to be automatically photographed by detecting the boundary lines of the
business card.” Id. ¶ 3. Figure 1 of Yoon is reproduced below.
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Figure 1 shows a block diagram of a portable terminal comprised of
controller 100, camera unit 102, image processor 104, and display unit 106.
Id. ¶ 19. Controller 100 displays on “display unit 106 reference boundary
lines, for presenting a size and location, of a business card, which are
appropriate for recognizing the business card.” Id. Controller 100 also
“determines whether the boundary lines of the business card received from
the image processor 104 coincide with the reference boundary lines.” Id.
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Figures 3A−3D of Yoon are reproduced below (with green
highlighting added).

As shown in Figure 3A−3D of Yoon above, the reference boundary
lines (highlighted in green) “for presenting a size and location of a business
card, which are appropriate for recognizing the business card, are displayed
as a rectangular frame in the center of the display unit 106.” Id. ¶¶ 24−28
(emphasis added). Figure 3A above (left top) depicts the business card
located inside the reference rectangular frame. Id. ¶ 24. Figure 3B above
(right top) illustrates the situation in which one of the boundary lines of the
business card coincides with the left reference boundary line. Id. ¶ 27.
Figure 3C above (left bottom) shows the situation in which the boundary
lines of the business card coincide with the left and upper reference
boundary lines. Id. Figure 3D above (right bottom) shows the situation in
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which all of the boundary lines of the business card coincide with all of the
reference boundary lines. Id.
Yoon teaches that once “all the reference boundary lines completely
coincide with the boundary lines of the business card,” the portable terminal
“displays a message informing the user of the start of automatic
photographing for the business card” and “performs auto focusing in order to
photograph the business card.” Id. ¶¶ 28–29. After auto focusing, the
portable terminal checks again whether all of the reference boundary lines
“still coincide with the boundary lines of the business card.” Id. ¶ 29. If so,
the portable terminal photographs the business card. Id.
3. Acharya (Exhibit 1032)
Acharya discloses a system and method for electronic check deposits
from remote locations. Ex. 1032, code (57). In particular, Acharya teaches
a remote customer terminal comprised of a personal computer with an
attached image scanner, where a bank customer would capture an image of a
check and transmit the image to a depository in order to deposit remotely the
check into the customer’s account. Id. at 3:10−21.
4. Cho (Exhibit 1033)
Cho discloses a camera phone and photographing method for a
camera phone. Ex. 1033, code (57). According to Cho, “[i]n the
conventional art camera phone, it takes a long time to set up a composition
of a subject because the user must move the camera phone to and fro in
order to set up the composition of the subject.” Id. at 1:35−39. To solve this
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problem, Cho teaches “displaying a composition guideline on a display unit
of a device and photographing a subject through the displayed composition
guideline.” Id. at 1:59−65.
Figure 1 of Cho is reproduced below.

Figure 1 above shows camera phone 100 comprised of main body 15,
flap 16, input device 40, and display unit 20. Id. at 2:57−67. Composition
guideline 30 is provided on display unit 20. Id. at 2:65−67. “A user can
select a variety of different composition guidelines,” which “may be
provided in a menu (not shown) from which the user can then select a
desired composition guideline, or a standard composition guideline may be
initially displayed which the user may then adjust.” Id. at 2:67−3:5. “For
example, a user may adjust a type, shape and/or color of the composition
guideline using the input device 40, according to user preferences,” so that
the “user can precisely and easily photograph a subject through the
composition guideline.” Id. at 3:9−14.
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Figures 4A−4F of Cho are reproduced below.

Figures 4A−4F above illustrate exemplary types of composition
guidelines, which may be selected using a composition guideline selecting
menu of a photographing menu of the camera phone. Id. at 3:65−4:2.
“[N]umerous other useful types and/or combinations could be employed.”
Id. at 4:13−14.
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5. Alignment Guide, Monitoring and Capturing an Image of a Check
Claim 1 recites the following limitations:
A system for depositing a check, comprising:
a mobile device having a camera, a display and a processor,
wherein the processor is configured to:
project an alignment guide in the display of the mobile device,
the display of the mobile device displaying a field of view of the
camera;
monitor an image of the check that is within the field of view;
determine whether the image of the check aligns with the
alignment guide;
automatically capture the image of the check when the image of
the check is determined to align with the alignment guide . . . .
Ex. 1001, 18:36–48 (emphases added).
Claim 10 recites similar limitations. Id. at 19:19−31. By virtue of
their dependency, claims 2−9 and 11−18 also require these limitations.
6. Petitioner’s Arguments as to the Contents of the Prior Art
In its Petition, Petitioner asserts that the combination of
Nepomniachtchi, Yoon, and Acharya teaches the aforementioned limitations
as recited in claims 1 and 10. Pet. 33−41, 51−52.
With respect to the preamble of claim 1 “[a] system for depositing a
check” and the limitation “a mobile device having a camera, a display and a
processor,” as recited in claim 1, Petitioner asserts that Nepomniachtchi
teaches using a mobile device to capture and process an image of “a check
that is to be deposited,” and the mobile device comprised of a camera, a
display, and a processor. Id. at 29−31 (citing Ex. 1003, 6:19−24, 6:50−53).
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As to the limitation “project[ing] an alignment guide in the display of
the mobile device,” as recited in claims 1 and 10, Petitioner relies upon
Yoon to teach an alignment guide. Id. at 33−34, 51. In particular, Petitioner
notes that Yoon teaches that “the controller 100 displays on the display unit
106 reference boundary lines, for presenting a size and location, of a
business card, which are appropriate for recognizing the business card.” Id.
(citing Ex. 1005 ¶¶ 19, 22, 24, Fig. 2 (step 203), Fig. 3A).
With respect to the limitation “monitor[ing] an image of the check
that is within the field of view,” as recited in claims 1 and 10, Petitioner
asserts that Nepomniachtchi teaches “monitoring an image of a check,” and
“determining the quality of an image and prompting the user to capture
another image if the quality was poor.” Id. at 34−35, 51 (citing Ex. 1003,
6:19−20, 7:55−59). Petitioner also relies upon Yoon to teach “a processor
configured to monitor an image of a document, which could be a check, that
is within the field of view of the camera of the mobile device.” Id. at 35, 51
(citing Ex. 1005 ¶¶ 19, 21, 26, Fig. 2). Petitioner argues that a person of
ordinary skill in the art “would have understood Yoon to have disclosed
monitoring an image of the document that is within the field of view.” Id.
(citing Ex. 1002 ¶¶ 132−134).
For the limitation “determin[ing] whether the image of the check
aligns with the alignment guide,” as recited in clams 1 and 10, Petitioner
asserts that Yoon teaches “determining whether an image of a business card
aligns with rectangle reference boundary lines displayed on the portable
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terminal’s display.” Id. at 35−37, 51 (citing Ex. 1005 ¶ 19, Fig. 2 (steps 211,
215, 225)).
As to the limitation “automatically capture the image of the check
when the image of the check is determined to align with the alignment
guide,” as recited in claims 1 and 10, Petitioner relies upon Yoon to teach
that its controller “determines whether the boundary lines of the business
card received from the image processor 104 coincide with the reference
boundary lines,” and “[i]f they coincide with one another, the controller 100
controls automatic photographing to be performed.” Id. at 37−38, 51 (citing
Ex. 1005 ¶ 19, Fig. 2 (step 223), Fig. 3D) (emphasis added).
7. Petitioner’s Rationale to Combine Nepomniachtchi and Yoon
One of the parties’ main disputes is whether Petitioner has articulated
a sufficient rationale to combine the teachings of Nepomniachtchi and Yoon,
as proposed by Petitioner. Pet. 39−41; PO Resp. 28−51; Reply 8−20;
Sur-reply 7−19.
In its Petition, Petitioner asserts that a person of ordinary skill in the
art “would have been motivated to combine Nepomniachtchi and Yoon so
that a mobile device would automatically capture an image of a check using
Yoon’s alignment guide.” Pet. 39 (emphasis added).
Petitioner acknowledges that Nepomniachtchi does not teach:
(1) “projecting an alignment guide in the display of the mobile device,”
(2) “monitoring the alignment of the check with the alignment guide,” and
(3) “automatically capturing an image of the check when it was aligned with
the alignment guide.” Id. at 39−40. Petitioner contends that Yoon teaches
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“using a mobile device to perform all of these steps when capturing the
image of a business card.” Id. at 40. Petitioner also argues that a person of
ordinary skill in the art “would have understood that Yoon’s teachings
would apply to capturing images of checks as well as business cards.” Id.
(citing 1002 ¶ 110).
According to Petitioner, one of ordinary skill in the art “would have
been motivated to combine these references from Nepomniachtchi’s
teaching that capturing an image with a mobile device might cause one of
several defects that would cause the image to be of low quality and make it
difficult to electronically process the check.” Id. at 40 (citing Ex. 1003,
6:53−56, 6:67−7:3, 7:51−52). Petitioner explains that “[d]efects that might
occur from capturing the image with a mobile device included a poorly
aligned image and a poorly lit image.” Id. (citing Ex. 1003, 7:10−14,
7:27−38). Petitioner acknowledges that “Nepomniachtchi proposed two
solutions”—namely, “[t]he first solution was to detect whether the image
was of poor quality and prompting the user to take another image,” and
“[t]he second solution was to process the image to correct the defect.” Id.
Petitioner asserts that, from these teachings, one of ordinary skill in the art
“would have understood that the alignment of the image was important when
capturing the image of a check and that while it may be possible to correct a
skewed image with image processing, that processing was computationally
intensive,” and such an artisan would have been “motivated to minimize the
need for this algorithm,” citing Dr. Alexander’s testimony for support. Id.
(citing Ex. 1002 ¶¶ 111−112).
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In addition, Petitioner argues that one of ordinary skill in the art
“would have recognized that one way to minimize the need for the
geometrical correction algorithm or prompting user to retake the photo
would be to ensure that the check was properly aligned with the camera of
the mobile phone when the picture of the check was taken.” Id. at 41 (citing
Ex. 1002 ¶ 113) (emphasis added). Petitioner contends that an ordinarily
skilled artisan would have been led “to investigate ways to ensure checks
were well-aligned with the camera when images were being taken,” and that
such an artisan “would have found Yoon, which teaches techniques to
reduce the variance in ‘satisfactorily recognizing the business card in order
to obtain the information contained in the business card.’” Id. (citing
Ex. 1005 ¶ 7) (emphasis added).
Petitioner further contends that an ordinarily skilled artisan “seeking
to obtain better images of checks would have been motivated to add to
Nepomniachtchi the techniques of Yoon to solve for checks the same
problems Yoon solved for business cards.” Id. (citing Ex. 1002 ¶ 113).
Petitioner contends that such an artisan “therefore would have been
motivated to combine Nepomniachtchi’s mobile phone check imaging
embodiment with Yoon’s technique for aligning a document with a mobile
device camera to obtain a good, well-aligned photograph of a document.”
Id. (emphasis added).
8. Discussion
Patent Owner counters that Petitioner fails to articulate an adequate
motivation to combine Nepomniachtchi and Yoon to arrive at the claimed
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invention. PO Resp. 29−51. Based on the totality of this entire trial record,
we agree with Patent Owner that Petitioner does not articulate an adequate
reason to combine the teachings of Nepomniachtchi and Yoon, as proposed
by Petitioner.
In its Petition, Petitioner essentially argues that one of ordinary skill in
the art would have been motivated to combine Nepomniachtchi and Yoon to:
(1) reduce the computational burden; (2) ensure that the check was properly
aligned; and (3) minimize the need to ask the user to retake the photo. Pet.
39−41. We address below each of these theories advanced by Petitioner in
turn, along with its arguments in the Reply.
a. The combination allegedly would reduce the computation burden
In its Petition, Petitioner argues that a person of ordinary skill in the
art “would have understood that the alignment of the image was important
when capturing the image of a check and that while it may be possible to
correct a skewed image with image processing, that processing was
computationally intensive” and that such an artisan “would be motivated to
minimize the need for this algorithm” in Nepomniachtchi, citing to
Dr. Alexander’s testimony for support. Pet. 40−41 (citing Ex. 1002
¶¶ 110−113) (emphases added). Dr. Alexander testifies that “Yoon
presented a viable means of reducing the burden of computations performed
by the mobile device.” Ex. 1002 ¶ 113 (emphasis added).
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Patent Owner counters that the combination would increase, not
reduce, the computational burden on the mobile device. PO Resp. 32−39;
Sur-reply 9−19; Ex. 2032 ¶ 30.
We agree with Patent Owner, and we are not persuaded by
Petitioner’s argument and Dr. Alexander’s testimony. Petitioner fails to
recognize that Nepomniachtchi’s image correction processing is performed
on the server, so that any reduction of the correction processing would result
in an efficiency gain on the server, not the mobile device as alleged by
Petitioner and Dr. Alexander. Petitioner and Dr. Alexander also ignore the
additional computational burden on the mobile device caused by
implementing Yoon’s pre-capture monitoring and auto-capturing features on
the mobile device.
At the outset, Dr. Alexander’s testimony does not support Petitioner’s
argument. Ex. 1002 ¶¶ 110−113. Dr. Alexander does not explain how
implementing Yoon’s monitoring and capturing features on the mobile
device in Nepomniachtchi would reduce the computation burden on the
mobile device. Id. ¶¶ 110−113. Indeed, Dr. Alexander admits during
cross-examination that he did not make a burden comparison on the
processor of the mobile device between Yoon’s and Nepomniachtchi’s
systems. Ex. 2039, 67:20−24 (“Q. Okay. Is it your opinion that Yoon
places a greater burden on the CPU processor of the mobile device than the
Nepomniachtchi system? A. Well, I don’t know how you could make that
comparison. I don’t have any opinion on that, actually.” (emphasis
added)). The U.S. Court of Appeals for the Federal Circuit (“Federal
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Circuit”) has “repeatedly recognized that conclusory expert testimony is
inadequate to support an obviousness determination on substantial evidence
review.” TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352 (Fed. Cir.
2019); see also InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327,
1349 (Fed. Cir. 2014) (reversing district court’s judgment of invalidity
because the expert testimony “failed to provide any meaningful explanation
for why one of ordinary skill in the art would be motivated to combine these
references at the time of this invention”). Therefore, we find
Dr. Alexander’s testimony “Yoon presented a viable means of reducing the
burden of computations performed by the mobile device” conclusory and,
thus, inadequate to support Petitioner’s motivation to combine Yoon with
Nepomniachtchi. Ex. 1002 ¶ 113.
Significantly, Petitioner’s argument rests on the premise that “the
combination lowers the burden of the correction step” so that it would
reduce the burden of the computation performed by the mobile device.
Reply 10−14; see also Pet. 39−41; Ex. 1002 ¶¶ 110−113. Nepomniachtchi,
however, teaches using the server to perform the correction step in its
preferred embodiment. Ex. 1003, 10:17−20, 10:55−56. Notably,
Nepomniachtchi teaches that “the server may clean up the image by
performing auto-rotate, de-skew, perspective distortion correction, cropping,
etc.” and that “a server based implementation might be employed to off-load
processing demands from the mobile device.” Id. Any reduction in the
correction processing would result in an efficiency gain at the server, not the
mobile device. Therefore, Petitioner does not explain sufficiently how
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adding Yoon’s monitoring and capturing features on the mobile device
would reduce the computation burden on the mobile device. Pet. 39−40.
We recognize that Nepomniachtchi also states that “[i]n other
embodiments, some or all data processing might be performed at the mobile
communication device.” Ex. 1003, 10:21−25. However, the Petition makes
no reference to this statement or those embodiments, either in its discussion
of the claim limitations or in its motivation to combine. Pet. 33−41, 51−52.
To be clear, “[i]n an inter partes review, the petitioner shall have the
burden of proving a proposition of unpatentability by a preponderance of the
evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner
to prove unpatentable those issued claims that were actually challenged in
the petition for review and for which the Board instituted review.” Nike,
Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016), overruled on other
grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)
(en banc). The Petition itself is required to identify with particularity the
specific portions of the evidence that supports the grounds for each
challenged claim. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(5)
(The petition must identify “the relevance of the evidence to the challenge
raised, including identifying specific portions of the evidence that support
the challenge.”).
In its Reply, Petitioner improperly attempts to change its position,
suggesting that Nepomniachtchi’s correction processing is performed on the
mobile device. Reply 10−14. Petitioner had an opportunity to present its
argument in its Petition as to why a relevant artisan would have used the
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mobile device to perform the correction processing, or to identify the
specific embodiment disclosed in Nepomniachtchi that supports its
argument, but chose not to do so in the Petition.
As the Supreme Court of the United States has explained, “the
petitioner is master of its complaint,” and the statute “makes the petition the
center-piece of the proceeding both before and after institution.” SAS Inst.,
Inc. v. Iancu, 138 S. Ct. 1348, 1355, 1358 (2018). “It is of the utmost
importance that petitioners in the IPR proceedings adhere to the requirement
that the initial petition identify ‘with particularity’ the ‘evidence that
supports the grounds for the challenge to each claim.’” Intelligent
Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Acceleration Bay, LLC v.
Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018). “All arguments
for the relief requested in a motion must be made in the motion. A reply
may only respond to arguments raised in the corresponding opposition . . . or
patent owner response.” 37 C.F.R. § 42.23(b). A reply that “raises a new
issue or belatedly presents evidence may not be considered.” Patent Trial
and Appeal Board Consolidated Trial Practice Guide (“CTPG”)4 74
(Nov. 2019) (guidance for filing a reply); see also 84 Fed. Reg. 64,280
(Nov. 21, 2019).

4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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Accordingly, we decline to consider Petitioner’s new argument
presented for the first time in its Reply that Nepomniachtchi’s correction
processing is performed on the mobile device.
More importantly, neither Petitioner nor Dr. Alexander articulates a
reason to use the mobile device, instead of the server, to perform the
correction processing. Pet. 39−41; Ex. 1002 ¶¶ 110−113. Instead,
Dr. Alexander characterizes the correction processing as “computationally
intensive” and admits that a person of ordinary skill in the art “would have
understood that excessive computation performed on a mobile device would
necessarily lead to slower than desirable response times and potential user
dissatisfaction.” Ex. 1002 ¶ 112 (emphasis added). Moreover, Patent
Owner’s declarant, Mr. Stephen Craig Mott, testifies that “unlike pre-capture
analysis [in Yoon], post-capture analysis [in Nepomniachtchi] may be
off-loaded to a remote server in order to minimize the computational burden
on the mobile device.” Ex. 2032 ¶ 30 (citing Ex. 1003, 10:54−59). Based
on Nepomniachtchi, Dr. Alexander’s testimony, and Mr. Mott’s testimony,
a relevant artisan would have used the server to perform the correction
processing, instead of the mobile device, in order to avoid excessive burden
on the mobile device, slower response times, and user dissatisfaction.
Ex. 1003, 10:17−20, 10:54−67; Ex. 1002 ¶ 112; Ex. 2032 ¶ 30.
In its Reply, Petitioner argues that “[i]t also does not matter that
Nepomniachtchi taught offloading computation to a server” because
“Nepomniachtchi teaches away from its server embodiment,” citing
Dr. Alexander’s deposition testimony for support. Reply 12 (Ex. 2039,
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88:2−19 (stating that “the disadvantage of doing it on the server is that the
user performing the image capture may no longer be available”)).
Petitioner’s argument improperly conflates the image quality analysis
with the correction processing for the image. Petitioner admits that “[i]t is
undisputed that Nepomniachtchi teaches a two-part algorithm where the first
part ‘performs a detailed image quality analysis’ and the second part
‘processes the image to correct defects.’” Reply 10. Petitioner’s motivation
to combine the references rests on the premise that “the combination lowers
the burden of the correction step.” Id. (emphasis added). Petitioner fails to
recognize that Dr. Alexander’s deposition testimony and the portion of
Nepomniachtchi cited by Dr. Alexander are directed to the image quality
analysis, not the correction processing. Ex. 2039, 88:2−19 (stating that “he
says at column 10, line 40, ‘In some embodiments the quality of the image is
determined at the mobile device’”); Ex. 1003, 10:40−41 (disclosing “the
quality of the image is determined at the mobile device”). Neither
Dr. Alexander’s testimony nor the cited portion of Nepomniachtchi teaches
away from performing the correction processing on the server, as Petitioner
alleges. As Patent Owner points out, “[t]here is no suggestion whatsoever in
Nepomniachtchi that performing image correction on the server is
disadvantageous.” Sur-reply 10.
Furthermore, Petitioner ignores Nepomniachtchi’s teachings that “[i]t
will be understood, however, that in some embodiments, a server based
implementation might be employed to off-load processing demands from the
mobile device,” and that “[a]dditionally, in some cases it might be quick as
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or quicker than a system that uses the mobile communication device to
process an image to determine image quality.” Ex. 1003, 10:54−59
(emphases added). Indeed, Dr. Alexander admits at deposition that
Nepomniachtchi teaches that remote processing was quick as or quicker than
processing on the mobile device. Ex. 2039, 89:24−90:7.
Moreover, as Patent Owner points out, Nepomniachtchi performs the
image quality analysis on the mobile device in order to quickly determine
whether the image can be accepted, needs correction, or needs retaking the
image. Sur-reply 10−11 (citing Ex. 1003, 10:40−52). The purpose of the
image quality analysis is to “determine if the quality of the image or images
is sufficient for further processing in accordance with the systems and
methods” described in Nepomniachtchi, i.e., the correction processing.
Ex. 1003, 9:50−57, 10:9−20. Once the image quality analysis determines
that the image is of sufficient quality to be processed with the correction
processing, there is no need to ask the user to retake the image. Id. Thus,
the correction processing can be performed on the server without concern of
whether the user has moved away from the check or begun performing other
tasks. Id. Moreover, if the correction processing can correct the error, there
also is no need to prompt the user to retake the image. Petitioner fails to
recognize that Nepomniachtchi already teaches a solution to address the
problem of requesting retakes at the server, by performing the image quality
analysis on the mobile device.
Therefore, we are not persuaded by Petitioner’s argument that
Nepomniachtchi teaches away from its server embodiment. Reply 12.
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For the foregoing reasons, we also are not persuaded by Petitioner’s
argument that “the combination lowers the burden of the correction step” so
that it would reduce the burden of the computation performed by the mobile
device. Reply 10−14; see also Pet. 39−41; Ex. 1002 ¶¶ 110−113.
In addition, Petitioner ignores the additional burden on
Nepomniachtchi’s mobile device caused by implementing Yoon’s
monitoring and capturing features on the mobile device. Pet. 39−41.
Dr. Alexander admits that one of ordinary skill in the art at the time of the
invention would have been concerned with adding computational burden on
the mobile device because it may lead to slower response times and user
dissatisfaction. Ex. 1002 ¶ 112. Yet, Petitioner does not explain sufficiently
why such an artisan would have been motivated to increase computational
burden on Nepomniachtchi’s mobile device by implementing Yoon’s
monitoring and capturing features. Pet. 39−41.
In its Reply, Petitioner argues that “[i]t is not true that combining
Nepomniachtchi and Yoon would necessarily increase the computational
burden on the mobile device,” because Patent Owner’s argument is based on
the assumption that “the combined system must check the image for proper
alignment thirty times a second,” and that Patent Owner suggests “no reason
why a [person of ordinary skill in the art (POSITA)] could not design the
system to examine one single frame to provide feedback to the user.” Reply
13 (citing PO Resp. 32, 36−37).
Petitioner’s arguments are misplaced. Petitioner improperly attempts
to shift the burden to the Patent Owner. “In an inter partes review, the
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burden of persuasion is on the petitioner to prove ‘unpatentability by a
preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never
shifts to the patentees.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
800 F.3d 1375, 1378 (Fed. Cir. 2015). Even in the context of the burden of
production, “no burden shifts from the patent challenger to the patentee . . .
where the only issues to be considered are . . . whether there would have
been a motivation to combine the prior art, and whether that combination
would render the patented claims obvious.” In re Magnum Oil Tools Int’l,
Ltd., 829 F.3d 1364, 1375−76 (Fed. Cir. 2016).
Petitioner also ignores Patent Owner’s supporting evidence and
Yoon’s teachings. Notably, Mr. Mott, testifies that “incorporating Yoon’s
automatic capture techniques into Nepomniachtchi would add CPU
overhead to the system,” and “[i]n order to determine when to capture the
check image, the system would have to monitor, in real-time, the quality of
the check image in view.” Ex. 2032 ¶ 30. Mr. Mott also testifies that
“pre-capture check image quality analysis [in Yoon] is more
computationally intensive than post-capture check image quality analysis [in
Nepomniachtchi], because it must be performed repeatedly . . . , as opposed
to analyzing a single, captured check image.” Id. (emphasis added). To be
clear, Mr. Mott does not state that “this analysis must happen thirty times a
second,” but rather “for example, 30 times per second, when analyzing a 30
frames-per-second live camera preview.” Id. (emphasis added).
We credit Mr. Mott’s testimony (id.) as it is consistent with Yoon.
Ex. 1005 ¶¶ 19−28, Figs. 2, 3A−3D. Notably, Yoon teaches “[t]he image
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processor 104 processes the digital data received from the camera unit 102
in units of frames, and outputs the result of processing to be appropriate for
the characteristics and size of the display unit 106.” Id. ¶ 21 (emphasis
added). Yoon’s terminal repeatedly checks whether the brightness is
appropriate and whether the reference boundary lines coincide with the
boundary lines of the business card, until the brightness is appropriate and
all the reference boundary lines coincide with all the boundary lines of the
business card. Id. ¶¶ 24−28, Figs. 2, 3A−3D.
In short, we are not persuaded by Petitioner’s argument that Patent
Owner’s argument is based on the assumption that “the combined system
must check the image for proper alignment thirty times a second.” Reply 13.
Petitioner’s argument that Patent Owner suggests “no reason why a
POSITA could not design the system to examine one single frame to provide
feedback to the user” is also misplaced. Reply 13. “Obviousness concerns
whether a skilled artisan not only could have made but would have been
motivated to make the combinations or modifications of prior art to arrive at
the claimed inventions.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1074
(Fed. Cir. 2015). In its Petition, Petitioner does not propose to modify
Nepomniachtchi’s system to examine one single frame to provide feedback
to the user, much less articulates a motivation to make such a modification.
Pet. 33−41, 51−52. Petitioner’s “one single frame” argument also
contradicts Yoon’s teaching—namely, “[t]he image processor 104 processes
the digital data received from the camera unit 102 in units of frames.”
Ex. 1005 ¶ 21.
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Neither Petitioner nor Dr. Alexander explains sufficiently how adding
Yoon’s monitoring and capturing features on Nepomniachtchi’s mobile
device would not necessarily increase the computational burden on the
mobile device. Pet. 39−41; Ex. 1002 ¶¶ 110−113; Reply 13. As discussed
above, we agree with Mr. Mott’s testimony that such a modification would
increase computational burden on the mobile device. Ex. 2032 ¶ 30.
Therefore, we are not persuaded by Petitioner’s argument that “[i]t is not
true that combining Nepomniachtchi and Yoon would necessarily increase
the computational burden on the mobile device.” Reply 13.
In its Reply and during the oral hearing, Petitioner improperly and
untimely introduced several arguments for the first time. First, Petitioner
argues for the first time that “[t]his fact” that the combination lowers the
burden of the correction step “is largely a matter of common sense” as “the
combined system will lead to a larger percentage of properly aligned images
being captured in the first place” and “[t]he fewer uses of the correction
algorithm, the lower the computational burden.” Reply 10−11 (emphases
added). Second, Petitioner also argues for the first time that “the
combination leads to greater computational efficiency . . . by moving the
image correction step into the user’s brain,” citing Dr. Alexander’s
deposition testimony for support. Id. at 11 (citing Ex. 2039, 98:11−99:22
(testifying that “the user corrects misalignment by adjusting the position and
orientation of the physical copy to fit the alignment guide”)) (emphasis
added). Third, during oral hearing, Petitioner repeated those new arguments
and, for the first time, argued that the combination “would be a hybrid
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system that offers to the user the option of either manual capture or
automatic capture,” and that “the auto capture would occur once the user’s
brain has decided what needs to be done to satisfy the monitoring criterion.”
See, e.g., Tr. 15:18−18:15, 27:20−25, 79:24−80:14; Ex. 1051, 27
(Petitioner’s Demonstratives) (emphases added).
At the outset, neither the Petition nor Dr. Alexander’s original
Declaration includes an explanation as to “the combined system will lead to
a larger percentage of properly aligned images being captured in the first
place,” “moving the image correction step into the user’s brain,” or the
combination “would be a hybrid system that offers to the user the option of
either manual capture or automatic capture.” Pet. 33−41, 51−52; Ex. 1002
¶¶ 110−113 (emphases added). Tellingly, Petitioner’s improper new
arguments and Dr. Alexander’s deposition testimony suggest that the
Petition itself lacks sufficient particularity as to how the prior art teachings
were combined, and how the proposed combination would lead to greater
computation efficiency, as alleged by Petitioner. Petitioner could have
presented those arguments in its Petition, but chose not to.
We decline to consider those new arguments presented in its Reply
and Dr. Alexander’s deposition testimony that is presented to support those
new arguments, as they are improper under 37 C.F.R. § 42.23(b). Intelligent
Bio-Systems, 821 F.3d at 1370 (holding that “the Board did not err in
refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because IBS
relied on an entirely new rational to explain why one of skill in the art would
have been motivated to combine Tsien or Ju with a modification of
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Zavgorodny”); Acceleration Bay, 908 F.3d at 775 (holding that “[t]he Board
did not abuse its discretion in declining to consider the cited paragraphs in
Dr. Karger’s reply declaration” because “[t]he declaration raises a new
obviousness argument for this limitation that could have been made in the
petition”); CTPG 74.
We also decline to consider Petitioner’s untimely arguments that the
combination “would be a hybrid system that offers to the user the option of
either manual capture or automatic capture,” and that “the auto capture
would occur once the user’s brain has decided what needs to be done to
satisfy the monitoring criterion.” See, e.g., Tr. 15:18−18:15, 27:20−25,
79:24−80:14; Ex. 1051, 27. As the Federal Circuit has held, the “Board was
obligated to dismiss [the petitioner’s] untimely argument . . . raised for the
first time during oral argument.” Dell Inc. v. Acceleron, LLC, 884 F.3d
1364, 1369 (Fed. Cir. 2018); see also CTPG 85 (stating that “no new
evidence may be presented at the oral argument”); id. at 84 (stating that
“[d]emonstrative exhibits used at the final hearing are aids to oral argument
and not evidence” and they “cannot be used to advance arguments or
introduce evidence not previously presented in the record”).
Even if we were to consider those improper and untimely new
arguments and Dr. Alexander’s testimony, they still would be unavailing.
Notably, Petitioner does not proffer any data or evidence to support its new
argument that “the combined system will lead to a larger percentage of
properly aligned images.” Reply 10 (emphases added). It is well
established that “arguments of counsel cannot take the place of evidence
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lacking in the record.” Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997); see also In re Pearson, 949 F.2d 1399, 1405 (CCPA 1974)
(unsupported attorney argument in a brief cannot take the place of evidence).
Moreover, “references to ‘common sense’ . . . cannot be used as a wholesale
substitute for reasoned analysis and evidentiary support.” Arendi S.A.R.L. v.
Apple, Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016).
As to Petitioner’s new arguments that “the combination leads to
greater computational efficiency . . . by moving the image correction step
into the user’s brain” and the combination “would be a hybrid system that
offers to the user the option of either manual capture or automatic capture,”
and Dr. Alexander’s deposition testimony that “the user corrects
misalignment by adjusting the position and orientation of the physical copy
to fit the alignment guide” (Reply 11; Ex. 2039, 98:11−99:22; Tr.
15:18−18:15, 27:20−25, 79:24−80:14; Ex. 1051, 27), they suggest that any
computation efficiency gained in the combination would be the result of the
user using an alignment guide to monitor the alignment of the check, not
Yoon’s monitoring and auto-capturing features that are performed by the
processor of the mobile device. Neither Petitioner nor Dr. Alexander
explains with particularity how implementing Yoon’s monitoring and
auto-capturing features would increase computational efficiency.
More significantly, those new arguments and the new argument that
“the auto capture would occur once the user’s brain has decided what needs
to be done to satisfy the monitoring criterion” would change the
combination, as proposed in the Petition. And the new combination, as
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argued by Petitioner in its Reply and during oral hearing, would no longer
account for the “monitoring” and “determining” limitations recited in
claims 1 and 10 that requires “the processor is configured to . . . monitor an
image of the check” and “determine whether the image of the check aligns
with the alignment guide.” See, e.g., Ex. 1001, 18:37−45.
Those new arguments and Dr. Alexander’s deposition testimony also
contradict Petitioner’s original position advanced in the Petition. Petitioner
makes clear in its Petition that the processor of the mobile device, not the
user, performs the monitoring, determining, and capturing steps. Pet. 31−41,
51−52. In its Petition, Petitioner relies upon Yoon’s monitoring and
auto-capturing features to account for the “monitoring,” “determining,” and
“capturing” limitations recited in claims 1 and 10, as well as to support its
motivation to combine the references. Id. Petitioner argues that the parties’
claim construction dispute as to the “capturing” limitation “is immaterial to
this petition because . . . Yoon discloses that the image is automatically
captured without human intervention.” Id. at 38 (emphases added).
Petitioner also argues that a person of ordinary skill in the art “would have
been motivated to combine Nepomniachtchi and Yoon so that a mobile
device would automatically capture an image of a check using Yoon’s
alignment guide.” Id. at 39 (emphasis added). At the oral hearing,
Petitioner admitted that its “position of the Petition is that an auto capture is
required.” Tr. 27:10−24.
Hence, Petitioner’s new arguments and Dr. Alexander’s deposition
testimony do not support Petitioner’s position that a relevant artisan would
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have been motivated to add Yoon’s monitoring and auto-capturing features
on the mobile device in Nepomniachtchi.
Moreover, as discussed above, we are not persuaded by Petitioner’s
argument that “the combination lowers the burden of the correction step.”
Reply 10. Any reduction of the correction processing performed on the
server would result in an efficiency gain on the server, not the mobile
device. Petitioner also admits that “the proposed combination here is
additive, it does not replace Nepomniachtchi’s correction algorithm with
Yoon’s pre-capture feedback.” Reply 9. Petitioner fails to articulate a
reasoned explanation why a relevant artisan would have been motivated to
add Yoon’s monitoring and capturing features, which would increase the
burden on the mobile device, in order to reduce the correction processing
performed on the server. In re Nuvasive, 842 F.3d 1376, 1382 (Fed. Cir.
2016) (requiring a reasoned explanation why the additional information
would benefit an ordinarily skilled artisan in an obviousness determination).
More importantly, Petitioner does not explain, nor do we discern, why
a person of ordinary skill in the art would have moved the correction
processing to the mobile device, and then would have been motivated to
minimize the need for this algorithm and to add Yoon’s monitoring and
capture features on the mobile device, as Petitioner alleges (Pet. 39−41).
Petitioner’s argument amounts to nothing more than impermissible
hindsight. KSR, 550 U.S. at 421 (The fact finder must be aware “of the
distortion caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning.”) (citing Graham, 383 U.S. at 36 (warning against a
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“temptation to read into the prior art the teachings of the invention in
issue”)); Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir.
2012) (“[T]he need for Graham findings can be important to ward against
falling into the forbidden use of hindsight.”); In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (an obviousness analysis “may not . . . resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis”).
For the foregoing reasons, Petitioner’s argument that one of ordinary
skill in the art would have been motivated to minimize the need for the
correction processing is conclusory, not supported by Dr. Alexander’s
testimony or Nepomniachtchi’s disclosure. Obviousness cannot be
established “by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441
F.3d 997, 998 (Fed. Cir. 2006)).
b. The combination allegedly would ensure that the check was properly
aligned
In its Petition, Petitioner argues that a person of ordinary skill in the
art would have been motivated to combine Nepomniachtchi and Yoon “to
ensure that the check was properly aligned with the camera of the mobile
phone when the picture of the check was taken.” Pet. 41.
Patent Owner counters that the question “is not whether adding
Yoon’s alignment guide to Nepomniachtchi would result in better-aligned
check images” because Petitioner’s “theory is that the combination would
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‘automatically capture an image of a check using Yoon’s alignment guide.’”
PO Resp. 40 (quoting Pet. 39).
We agree with Patent Owner and we are not persuaded by Petitioner’s
argument. It is well established that the reason for combining references in
an obviousness analysis cannot focus on generic statements divorced from
the prior art elements, such as the generic desire to “build something better”
or to make it “more efficient, cheaper, or . . . more attractive to your
customers.” ActiveVideo Networks, Inc. v. Verizon Comm’ns., Inc., 694
F.3d. 1312, 1328 (Fed. Cir. 2012).
Here, Petitioner concedes that Nepomniachtchi does not teach:
(1) “projecting an alignment guide in the display of the mobile device,”
(2) “monitoring the alignment of the check with the alignment guide,” and
(3) “automatically capturing an image of the check when it was aligned with
the alignment guide.” Pet. 39−40 (emphases added). Petitioner relies upon
Yoon to teach “using a mobile device to perform all of these steps when
capturing the image of a business card.” Id. In particular, Petitioner relies
upon Yoon to teach “a processor configured to: project an alignment guide
in the display of the mobile device,” “monitor an image of the check,”
“determine whether the image of the check aligns with the alignment guide,”
and “automatically capture the image of the check when the image of the
check is determined to align with the alignment guide.” Id. at 31−38, 51−52
(citing Ex. 1005 ¶¶ 19−22, 24, 26, 28, Figs. 2, 3A, 3D) (emphases added).
Petitioner’s alleged benefit “to ensure the check was properly aligned”
is merely a generic statement for using an alignment guide. According to
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Petitioner, “the combination leads to greater computational efficiency . . . by
moving the image correction step into the user’s brain.” Reply 11
(emphasis added). And Dr. Alexander testifies during cross-examination
that it is the user who adjusts the position and orientation of the physical
copy to fit the alignment guide. Ex. 2039, 98:11−99:22. Petitioner’s
argument and Dr. Alexander’s testimony suggest that any computation
efficiency gained in the combination would be a result of the alignment
guide, not Yoon’s monitoring and auto-capturing features.
Significantly, Petitioner does not explain with particularity why a
relevant artisan would be motivated to add Yoon’s monitoring and
auto-capturing features to Nepomniachtchi’s mobile device, which would
increase the computation burden on the mobile device and may lead to
slower response times and user dissatisfaction. Pet. 39−41. As discussed
above, implementing Yoon’s monitoring and capturing features on the
mobile device in Nepomniachtchi also would increase the computation
burden on the mobile device.
Mr. Mott testifies that “incorporating Yoon’s automatic capture
techniques into Nepomniachtchi would add CPU overhead to the system”
and that “[i]n order to determine when to capture the check image, the
system would have to monitor, in real-time, the quality of the check image in
view.” Ex. 2032 ¶ 30. Mr. Mott also testifies that “pre-capture check image
quality analysis [in Yoon] is more computationally intensive than
post-capture check image quality analysis [in Nepomniachtchi], because it
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must be performed repeatedly . . . , as opposed to analyzing a single,
captured check image.” Id. (emphasis added).
We credit Mr. Mott’s testimony (id.), as it is consistent with Yoon.
Ex. 1005 ¶¶ 19−22, 24−26, 28, Figs. 2, 3A, 3D. Notably, Yoon repeatedly
checks whether the brightness is appropriate and whether “the reference
boundary lines coincides with the boundary lines of the business card,” until
the brightness is appropriate and “all the reference boundary lines still
coincide with all the boundary lines of the business card.” Id.
Therefore, implementing Yoon’s monitoring and capturing features on
the mobile device in Nepomniachtchi would increase the computation
burden on the mobile device. Dr. Alexander admits that a relevant artisan
“would have understood that excessive computation performed on a mobile
device would necessarily lead to slower than desirable response times and
potential user dissatisfaction.” Ex. 1002 ¶ 112 (emphasis added).
In short, even if a relevant artisan would have been motivated to use
Yoon’s alignment guide, Petitioner fails to articulate with particularity why a
relevant artisan would have been motivated to add Yoon’s monitoring and
capturing features to Nepomniachtchi’s mobile device, which would
increase the computation burden on the mobile device, and may lead to
slower response times and user dissatisfaction. See Nuvasive, 842 F.3d at
1382. Petitioner’s generic assertion “to ensure that the check was properly
aligned” for using an alignment guide, without more, is insufficient as a
motivation for implementing Yoon’s monitoring and capturing features on
Nepomniachtchi’s mobile device. See ActiveVideo, 694 F.3d. at 1328.
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In its Reply, Petitioner argues that “the petition also explains a
POSITA ‘would have been motivated to add to Nepomniachtchi the
techniques of Yoon to solve for checks the same problems Yoon solved for
business card,’” and that Patent Owner “has never even tried to rebut these
other reasons for the combination.” Reply 13−14 (citing Pet. 41).
Petitioner’s argument is misplaced. “[T]he burden of proving
invalidity in an IPR remains on the petitioner throughout the proceeding.”
Fanduel Inc. v. Interactive Games, 966 F.3d 1334, 1341 (Fed. Cir. 2020)
(citing 35 U.S.C. § 316(e)). “[A] patentee technically has no ‘burden’ to do
anything to defend the validity of its patent other than hold the patent
challenger to its own burden of persuasion.” E.I. DuPont de Nemours & Co.
v. Synvina C.V., 904 F.3d 996, 1008 (Fed. Cir. 2018).
In its Petition, Petitioner does not identify with particularity the
problems or variance in Yoon that would motivate a relevant artisan to
modify Nepomniachtchi, apart from “to obtain a good, well-aligned
photograph of a document.” Pet. 41. “[T]o obtain a good, well-aligned
photograph” essentially is the same as “to ensure that the check was properly
aligned,” which is nothing more than a generic statement for using an
alignment guide. Such a generic statement is insufficient as a motivation for
adding Yoon’s monitoring and capturing features on Nepomniachtchi’s
mobile device, which would increase the computation burden on the mobile
device and may lead to slower response times and user dissatisfaction. See
ActiveVideo, 694 F.3d at 1328.
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In its Reply, Petitioner also argues that Patent Owner “acknowledges
that the combination offers a benefit (although USAA asserts it is ‘marginal’
and ‘minimal’).” Reply 8 (citing PO Resp. 46). However, Patent Owner’s
statement relied upon by Petitioner is silent as to implementing Yoon’s
monitoring and capturing features on Nepomniachtchi’s mobile device. PO
Resp. 46. Merely acknowledging the marginal benefit for adding an
alignment guide is insufficient as a motivation for implementing Yoon’s
monitoring and capturing features on Nepomniachtchi’s mobile device,
which would increase the computation burden on the mobile device and may
lead to slower response times and user dissatisfaction. See ActiveVideo, 694
F.3d at 1328.
In its Reply, Petitioner also argues that the fact “that Nepomniachtchi
had alternative solutions does not mean it would not be beneficial to also
include Yoon’s solution, as the Board has recognized,” citing to the
Institution Decision for support. Reply 12 (citing Dec. 53).
Petitioner’s reliance on our Institution Decision is misplaced. “[T]he
decision to institute and the final written decision are ‘two very different
analyses,’ and each applies a ‘qualitatively different standard.’” Magnum
Oil, 829 F.3d at 1376 (quoting TriVascular, Inc. v. Samuels, 812 F.3d 1056,
1068 (Fed. Cir. 2016)); also compare 35 U.S.C. § 314(a), with id. § 316(e).
“[T]he different standards of proof required to institute versus to invalidate
permit the Board to adopt different views of the sufficiency of a petitioner’s
asserted obviousness arguments in its initial versus final decisions.”
Fanduel Inc. v. Interactive Games, 966 F.3d 1334, 1340 (Fed. Cir. 2020).
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“There is nothing inherently inconsistent about the Board instituting IPR on
obviousness grounds and then ultimately finding that the petitioner did not
provide preponderant evidence that the challenged claim was obvious.” Id.
“[T]he Board has an obligation to assess the question anew after trial based
on the totality of the record.” Magnum Oil, 829 F.3d at 1377.
More importantly, a generic statement for using an alignment guide,
without more, is insufficient to explain why a relevant artisan would have
been motivated to add Yoon’s monitoring and capturing features on
Nepomniachtchi’s mobile device, which would increase the computation
burden on the mobile device. Dr. Alexander admits that a relevant artisan
“would have understood that excessive computation performed on a mobile
device would necessarily lead to slower than desirable response times and
potential user dissatisfaction.” Ex. 1002 ¶ 112. As discussed above,
Mr. Mott testifies that incorporating Yoon’s features would add CPU
overhead. Ex. 2032 ¶ 30. Based on the totality of this trial record, we
determine that Petitioner has not met its burden to articulate a sufficient
reason why an ordinarily skilled artisan would have been motivated to
implement Yoon’s monitoring and capturing features on Nepomniachtchi’s
mobile device.
Petitioner also argues that a relevant artisan “would not have been
discouraged from combining Nepomniachtchi and Yoon,” and that Yoon
addresses the image defects identified by Nepomniachtchi. Reply 14−17.
The mere fact that Yoon addresses the identified image defects,
without more, does not explain why a relevant artisan would have been
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motivated to implement Yoon’s monitoring and capturing features in
Nepomniachtchi, which would increase the computation burden on the
mobile device and may lead to slower response times and user
dissatisfaction. As the Supreme Court has explained “[a] patent composed
of several elements is not proved obvious by merely demonstrating that each
of its elements was, independently, known in the prior art.” KSR, 550 U.S.
at 418. Moreover, “a conclusory assertion with no explanation is inadequate
to support a finding that there would have been a motivation to combine”
because “[t]his type of finding, without more, tracks the ex post reasoning
KSR warned of and fails to identify and actual reason why a skilled artisan
would have combined the elements in the manner claimed.” In re Van Os,
844 F.3d 1359, 1361−62 (Fed. Cir. 2017) (citing KSR, 500 U.S. at 418, 421).
In sum, Petitioner fails to articulate why a relevant artisan would have
been motivated to combine Nepomniachtchi and Yoon to arrive at the
claimed invention. We are not persuaded by Petitioner’s argument that a
relevant artisan “would not have been discouraged from combining
Nepomniachtchi and Yoon,” and that Yoon addresses the image defects
identified by Nepomniachtchi. Reply 14−17.
Petitioner also argues that “a POSITA would have recognized that
Nepomniachtchi’s solution was inadequate,” and, “[f]or example, images
could be so poorly aligned that not even Nepomniachtchi’s correction
algorithm could fix them,” citing to Dr. Alexander’s cross-examination
testimony for support. Reply 10 (citing Ex. 2039, 105:18−109:2
(“Nepomniachtchi cannot achieve perfection with his algorithms”)).
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However, Dr. Alexander’s testimony merely addresses a question
regarding image distortions. Ex. 2039, 105:18−109:2. Petitioner fails to
consider that Nepomniachtchi as a whole already provides a solution that
addresses image distortions. Nepomniachtchi teaches that the “perspective
distortion may occur because an image is taken using a camera that is placed
at an angle to a document rather than directly above the document,” and
“[w]hen directly above a rectangular document, it will generally appear to
be rectangular.” Ex. 1003, 8:39−43 (emphases added). Nepomniachtchi
also discloses that the image is automatically mapped onto a rectangular
bitmap in order to remove or decrease the perspective distortion. Id. at
8:54−63. Nepomniachtchi makes clear that its solution collectively
includes: (1) utilizing the user’s judgment (e.g., placing the camera directly
above the document, rather than at an angle, to avoid image distortion) for
the pre-capturing analysis; (2) performing the image quality analysis on the
mobile device to quickly determine whether the image can be accepted,
needs correction, or needs retaking while the user is still physically close to
the document and before starting another task; and (3) performing the
correction processing to “clean up the image by performing auto-rotate,
de-skew, perspective distortion correction, cropping, etc.” Id. at 7:55−57,
8:39−43, 8:54−63, 9:50−54, 10:9−20, 10:40−59, 11:29−30.
Neither Petitioner nor Dr. Alexander explains why the user would not
have placed the camera directly above the document to avoid document
distortion, as taught by Nepomniachtchi. Moreover, Dr. Alexander admits
that, even using Yoon’s alignment guide, the combination of
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Nepomniachtchi and Yoon was “not going to be 100 percent aligned because
he allows a margin of error.” Ex. 2039, 106:4−10. Dr. Alexander also
admits that the user may correct “misalignment by adjusting the position and
orientation of the physical copy to fit the alignment guide.” Id. at
98:25−99:5. Hence, even if a relevant artisan would have been motivated to
use an alignment guide, Petitioner and Dr. Alexander do not explain why
such an artisan would have been motivated to add Yoon’s monitoring and
capturing features on Nepomniachtchi’s mobile device, which would
increase the computation burden on the mobile device and may lead to
slower response times and user dissatisfaction. Therefore, we are not
persuaded by Petitioner’s argument that “a POSITA would have recognized
that Nepomniachtchi’s solution was inadequate.” Reply 10.
For the foregoing reasons, Petitioner’s generic assertion “to ensure
that the check was properly aligned” for merely using an alignment guide is
insufficient as a motivation for adding Yoon’s monitoring and capturing
features on Nepomniachtchi’s mobile device, which would increase the
computation burden on the mobile device and may lead to slower response
times and user dissatisfaction. See ActiveVideo, 694 F.3d. at 1328;
Nuvasive, 842 F.3d at 1382.
c. The combination allegedly would minimize the need for retake
Petitioner argues that a person of ordinary skill in the art would have
minimized the need for “prompting user to retake the photo,” citing
Dr. Alexander’s testimony for support. Pet. 41 (citing Ex. 1002 ¶ 113).
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Patent Owner counters that “the proposed combination would
(a) not reduce these errors, as Nepomniachtchi already addresses them; and
(b) introduce new, more problematic errors into the system.” Sur-reply 14;
see also PO Resp. 40−47.
We agree with Patent Owner and we are not persuaded by Petitioner’s
argument. At the outset, Petitioner’s argument is conclusory. The cited
portion of Dr. Alexander’s Declaration (Ex. 1002 ¶ 113) proffers no
explanation regarding minimizing the need for retake the images, let alone a
reason why “prompting user to retake the photo” is a problem such that it
would lead a person of ordinary skill in the art to implement Yoon’s
monitoring and capturing features on Nepomniachtchi’s mobile device.
In its Reply, to support its argument, Petitioner directs our attention to
Dr. Alexander’s deposition testimony that states: “as a person of ordinary
skill in the art, I would understand that improvements in alignment made
prior to capture by Yoon would certainly affect Nepomniachtchi’s need to
reimage documents.” Reply 13 (quoting Ex. 2039, 85:14−22) (emphasis
added). However, Dr. Alexander was responding to the question “Do you
know whether the Yoon alignment guide would actually improve the ability
to read the MIRC line?” Ex. 2039, 85:14−16 (emphasis added).
Dr. Alexander’s testimony is silent as to why a relevant artisan would have
been motivated to implement Yoon’s monitoring and capturing features in a
mobile device. Id.
At best, Dr. Alexander’s deposition testimony provides a general
reason to use an alignment guide. Such a generic statement for using an
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alignment guide, without more, is insufficient as a motivation for
implementing Yoon’s monitoring and auto-capturing features on
Nepomniachtchi’s mobile device. See ActiveVideo, 694 F.3d. at 1328.
Therefore, neither Dr. Alexander’s original Declaration nor his
deposition testimony supports Petitioner’s argument that a person of
ordinary skill in the art would have minimized the need for “prompting user
to retake the photo.” They also do not support Petitioner’s position that such
an artisan would have been motivated to add Yoon’s monitoring and
capturing features on Nepomniachtchi’s mobile device, which would
increase the computation burden on the mobile device. Dr. Alexander
admits that such an artisan “would have understood that excessive
computation performed on a mobile device would necessarily lead to slower
than desirable response times and potential user dissatisfaction.” Ex. 1002
¶ 112.
In sum, Petitioner’s argument that a person of ordinary skill in the art
would have minimized the need for “prompting user to retake the photo” is
conclusory, not supported by Dr. Alexander’s testimony or any evidence of
record. Pet. 41. An argument of counsel is not evidence. See Icon Health
& Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042–48 (Fed. Cir. 2017)
(holding that attorney argument is not evidence and the Board’s adoption of
petitioner’s brief did not “transform [the petitioner’s] attorney argument into
factual findings or supply the requisite explanation that must accompany
such findings”). As noted above, obviousness cannot be established “by
mere conclusory statements; instead, there must be some articulated
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reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 997, 998
(Fed. Cir. 2006)). Moreover, “a conclusory assertion with no explanation is
inadequate to support a finding that there would have been a motivation to
combine” because “[t]his type of finding, without more, tracks the ex post
reasoning KSR warned of and fails to identify and actual reason why a
skilled artisan would have combined the elements in the manner claimed.”
Van Os, 844 F.3d at 1361−62.
In addition, Petitioner alleges problems with Nepomniachtchi’s
solutions in attempt to create a motivation to combine the Nepomniachtchi
and Yoon. Pet. 39−41. Petitioner narrowly focuses on two aspects of
Nepomniachtchi’s teachings (the correction processing and requests for
retake), but fails to consider Nepomniachtchi as a whole, which already
provides the solutions to address the potential image defects. Id. When
evaluating claims for obviousness, “the prior art as a whole must be
considered.” In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986). “It is
impermissible within the framework of section 103 to pick and choose from
any one reference only so much of it as will support a given position, to the
exclusion of other parts necessary to the full appreciation of what such
reference fairly suggests to one of ordinary skill in the art.” Id.
As discussed above, Nepomniachtchi makes clear that its solutions
collectively include: (1) utilizing the user’s judgment (e.g., placing the
camera directly above the document, rather than at an angle) for
pre-capturing analysis; (2) performing the image quality analysis on the
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mobile device to quickly determine whether the image can be accepted,
needs correction, or needs retaking while the user is still physically close to
the check and before starting another task; and (3) performing the correction
processing on the server to “clean up the image by performing auto-rotate,
de-skew, perspective distortion correction, cropping, etc.” Ex. 1003,
7:55−57, 8:39−43, 8:54−63, 9:50−54, 10:9−20, 10:40−59, 11:29−30. Once
the image quality analysis determines that the image is of sufficient quality
to be processed with the correction processing, there is no need to ask the
user to retake the image. Id. Thus, the correction processing can be
performed on the server without concern of whether the user has moved
away from the check or begun performing other tasks. Id. Moreover, if the
correction processing can correct the error, there also is no need to prompt
the user to retake the image. Petitioner fails to recognize that
Nepomniachtchi already teaches a solution to minimize the number of
retakes requested.
Therefore, Petitioner does not provide a reasoned explanation why a
relevant artisan, reading Nepomniachtchi as a whole, would have been
motivated to minimize the need for retaking the images.
Furthermore, Petitioner admits that “[i]t is true that combining
Nepomniachtchi and Yoon would replace the user’s judgment about whether
the image was aligned.” Reply 15.
In its Petition, Petitioner does not explain with particularity why a
relevant artisan would have been motivated to replace the user’s judgment
for capturing quality check images that is based on numerous factors in
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Nepomniachtchi, with an automatic capture based on alignment alone.
Pet. 39−41. Petitioner merely states that a person of ordinary skill in the art
“would have been motivated to combine Nepomniachtchi and Yoon so that a
mobile device would automatically capture an image of a check using
Yoon’s alignment guide”—essentially, converting Nepomniachtchi to an
auto-capture system solely based on alignment. Id. at 39 (emphasis added).
As Patent Owner points out, the combination as proposed by
Petitioner in its Petition would automatically capture the image as soon as
the borders of the check image aligned with the rectangular alignment guide,
whether or not the image was suitable in other aspects. Sur-reply 16−17
(citing Ex. 2032 ¶¶ 29, 31). Mr. Mott testifies that “[i]n a manual capture
system, the user makes a determination of when to capture the image (for
example, by pressing a shutter button when the user judges that the check
image looks acceptable),” whereas “[i]n an automatic capture system, the
system itself must determine when to capture the image, without the aid of
the user’s judgment.” Ex. 2032 ¶ 29.
We credit Mr. Mott’s testimony, as it is consistent with Yoon.
Notably, Yoon teaches “allowing a business card to be automatically
photographed by detecting the boundary lines of the business card.”
Ex. 1005 ¶ 3. In particular, Yoon teaches that once it is determined that the
business card recognition and photographing mode has been selected,
Yoon’s terminal outputs an image and displays rectangular reference
boundary lines on the display unit. Id. ¶ 24. And then, the terminal
repeatedly checks whether the brightness is appropriate and whether the
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reference boundary lines coincide with the boundary lines of the business
card, until the brightness is appropriate and all the reference boundary lines
coincide with all the boundary lines of the business card before the portable
terminal photographs the business card. Id. ¶¶ 25−29, Figs. 2, 3A−3D.
As Patent Owner explains, another fundamental problem with
Petitioner’s combination is that “incorporating Yoon’s automatic capture
technique into Nepomniachtchi results in check image that [Petitioner]
asserts is better aligned, but not necessarily check images that are more
suitable for deposit, which is based on numerous factors other than
alignment.” PO Resp. 41.
Nepomniachtchi’s invention is for capturing suitable check images for
deposit. Ex. 1003, code (54), 6:58−61. Nepomniachtchi identifies a list of
criteria for capturing suitable check images for deposit. Ex. 1003, 7:4−7:59.
Dr. Alexander admits during deposition that to ensure that the check image
can be successfully deposited, “there are many factors: Focus, brightness,
smudgy images, torn checks, torn, folded checks, misaligned checks,
smudges over the check, bad handwriting.” Ex. 2039, 119:7−120:7.
Dr. Alexander concedes that alignment and brightness alone are not
sufficient to ensure that a check image is suitable for deposit. Id. Petitioner
also admits that “even when using the alignment guide, non-confirming
check images would still be presented,” and “[n]o matter what alignment
guide is used, there is no way to enable the system to be electronically read
an image of an illegible check.” Pet. 15−16.
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Moreover, as Patent Owner points out, replacing the user’s judgment
that is based on numerous factors, with an auto-capture system based solely
on alignment, would not minimize the need for retaking the images, but
would instead introduce additional errors. PO Resp. 43−45. For example,
Yoon’s alignment technique does not determine whether the check is upside
down or not, or whether the MICR information is in the correct location,
when the camera captures the image. Id. Dr. Alexander confirms during
deposition that “I don’t see any capability in Yoon for detecting upside
down images.” Ex. 2039, 92:23−93:1. As another example, resolution and
focus are important criteria for check image deposit. Ex. 1003, 7:60−8:34.
Dr. Alexander admits that, in the combination, moving the camera closer to
or farther away from the check so that the check would appear within the
alignment guide may increase resolution errors. Ex. 2039, 116:18−117:11.
Based on the evidence in this entire trial record, we agree with
Mr. Mott’s testimony that a relevant artisan “would have no reason to expect
that a system evaluating only alignment and/or brightness prior to capture
would automatically capture check images that were suitable for deposit
processing based on all of the criteria identified in Nepomniachtchi.”
Ex. 2032 ¶ 31 (citing Ex. 1003, 7:4−7:59). Hence, Petitioner fails to
articulate why a relevant artisan would have been motivated to replace the
user’s judgment for capturing quality check images that is based on
numerous factors in Nepomniachtchi, with an automatic capture based on
alignment alone. See Nuvasive, 842 F.3d at 1382.
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In its Reply, Petitioner argues that the claims do not require capturing
an image that is suitable for deposit. Reply 17. Petitioner’s argument is
misplaced. For its motivation to combine the teachings of Nepomniachtchi
and Yoon, Petitioner asserts in its Petition that a person of ordinary skill in
the art “would have been motivated to combine Nepomniachtchi and Yoon
so that a mobile device would automatically capture an image of a check
using Yoon’s alignment guide and the mobile device would transmit the
captured image to a depository.” Pet. 39 (emphasis added). Additionally,
Nepomniachtchi’s invention is for capturing suitable check images for
deposit. Ex. 1003, code (54), 6:58−61. Petitioner confirms that
Nepomniachtchi teaches “using a mobile device to capture the image of a
check for use in a check clearing process.” Pet. 39 (emphasis added).
Dr. Alexander concedes that alignment and brightness alone are not
sufficient to ensure that a check image is suitable for deposit. Ex. 2039,
119:7−120:7. Petitioner also admits that “even when using the alignment
guide, non-confirming check images would still be presented,” and “[n]o
matter what alignment guide is used, there is no way to enable the system to
be electronically read an image of an illegible check.” Pet. 15−16.
Moreover, Mr. Mott testifies that a relevant artisan “would have no reason to
expect that a system evaluating only alignment and/or brightness prior to
capture would automatically capture check images that were suitable for
deposit processing based on all of the criteria identified in Nepomniachtchi.”
Ex. 2032 ¶ 31 (citing Ex. 1003, 7:4−7:59).
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Therefore, Petitioner’s argument that the claims do not require
capturing an image that is suitable for deposit is unavailing. Reply 17.
In its Reply, Petitioner improperly argues for the first time that the
prior art shows that replacing the user’s judgment “was a good thing,” that
“Nepomniachtchi taught that images captured according to human judgment
of alignment often needed correction,” and that “Yoon taught that machine
judgment of image alignment was preferable to user judgment.” Reply
15−16 (citing Ex. 1003, 11:29−30; Ex. 1005 ¶¶ 7, 8, 11). During oral
hearing, Petitioner also presented that new argument and improperly
attempted to change its position by arguing that the combination would not
remove the user’s judgment. Tr. 28:22−23, 29:1−12.
Tellingly, Petitioner’s new arguments suggest that the Petition itself
lacks sufficient particularity as to what prior art teachings are being
combined and why a person of ordinary skill in the art at the time of the
invention would have been motivated to combine Nepomniachtchi and
Yoon. Petitioner could have presented those arguments in its Petition, but
chose not to. We decline to consider those new arguments, as they are
improper under 37 C.F.R. § 42.23(b) and untimely. See Intelligent
Bio-Systems, 821 F.3d at 1370; Dell, 884 F.3d at 1369; CTPG 74, 85.
Even if we were to consider the improper new arguments on the
merits, they still would be unavailing. At the outset, Petitioner’s new
argument that the combination would not remove the user’s judgment
(Tr. 28:22−23, 29:1−12) does not change the fact that Petitioner admits
unequivocally in writing that “[i]t is true that combining Nepomniachtchi
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and Yoon would replace the user’s judgment about whether the image was
aligned.” Reply 15. That new argument also contradicts Petitioner’s
original position asserted in the Petition that a person of ordinary skill in the
art “would have been motivated to combine Nepomniachtchi and Yoon so
that a mobile device would automatically capture an image of a check using
Yoon’s alignment guide.” Pet. 39 (emphasis added).
Furthermore, Petitioner’s new argument that replacing the user’s
judgment “was a good thing” is inconsistent with Petitioner’s other
argument and Dr. Alexander’s deposition testimony that rely on the user’s
judgment to achieve computational efficiency in the combination, which, as
discussed above, suggest that any computation efficiency gained in the
combination would be the result of the user using an alignment guide, not
Yoon’s monitoring and auto-capturing features. Reply 11 (“the combination
leads to greater computational efficiency . . . by moving the image correction
step into the user’s brain”); Ex. 2039, 98:11−99:22 (testifying that “the user
corrects misalignment by adjusting the position and orientation of the
physical copy to fit the alignment guide”).
Petitioner admits that “the difference between human judgment and
computer judgment could only come up with extreme situations.” Tr.
28:25−29:1. Yet, Petitioner does not explain why a relevant artisan would
have been motivated to add Yoon’s monitoring and auto-capturing features,
which would increase the burden on Nepomniachtchi’s mobile device and
may lead to slower response times and user dissatisfaction.
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In addition, we do not agree with Petitioner’s characterization of
Nepomniachtchi’s teaching as humans did not do a good job because they
need the correction processing. Reply 15; Tr. 29:1−3. Tellingly,
Petitioner’s combination that includes an auto-capture feature still would
need the correction processing. According to Petitioner, the combination
“does not replace Nepomniachtchi’s correction algorithm with Yoon’s
pre-capture feedback.” Reply 9. Dr. Alexander admits that, even using
Yoon’s alignment guide, the combination of Nepomniachtchi and Yoon was
“not going to be 100 percent aligned because he allows a margin of error.”
Ex. 2039, 106:4−10.
As discussed above, Petitioner also narrowly focuses on two aspects
of Nepomniachtchi’s teachings (the correction processing and requests for
retake), but fails to consider Nepomniachtchi as a whole, which already
provides the solutions to address the potential image defects. Ex. 1003,
7:55−57, 8:39−43, 9:50−54, 10:9−20, 10:40−59, 11:29−30.
Nepomniachtchi makes clear that its solutions collectively include:
(1) utilizing the user’s judgment (e.g., placing the camera directly above the
document, rather than at an angle, to avoid image distortion) for the
pre-capturing analysis; (2) performing the image quality analysis on the
mobile device to quickly determine whether the image can be accepted,
needs correction, or needs retaking while the user is still physically close to
the document and before starting another task; and (3) performing the
correction processing to “clean up the image by performing auto-rotate,
de-skew, perspective distortion correction, cropping, etc.” Id. Once the
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image quality analysis determines that the image is of sufficient quality to be
processed with the correction processing, there is no need to ask the user to
retake the image. Id. Thus, the correction processing can be performed on
the server without concern of whether the user has moved away from the
check or begun performing other tasks. Id. Moreover, if the correction
processing can correct the error, there also is no need to prompt the user to
retake the image. Petitioner fails to recognize that Nepomniachtchi already
teaches a solution to address the problem of requesting retakes.
Yoon’s preference of machine judgment is related to a system that
takes out the user’s judgment on aligning the business card with the
alignment guide and has no image quality analysis or correction processing.
Ex. 1005 ¶ 7. Petitioner does not explain with particularity how Yoon’s
machine judgment benefits Nepomniachtchi’s system, much less why a
relevant artisan would have replaced the user’s judgment for capturing
quality check images based on numerous factors with an auto-capture that is
based on alignment alone. Pet. 39−41; Reply 15−16. And as discussed
above, Petitioner does not provide a reasoned explanation why a relevant
artisan would have been motivated to add Yoon’s monitoring and capturing
features in Nepomniachtchi, which would increase the burden on the mobile
device. Dr. Alexander admits that a relevant artisan “would have understood
that excessive computation performed on a mobile device would necessarily
lead to slower than desirable response times and potential user
dissatisfaction.” Ex. 1002 ¶ 112.
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Therefore, we are not persuaded by Petitioner’s argument that the
prior art shows that replacing the user’s judgment “was a good thing.”
Reply 15−16.
In its Reply, Petitioner also argues that it “need not show that
Nepomniachtchi’s solution for misaligned checks was inadequate.” Reply
9−10. We are mindful that the Federal Circuit has held that a petitioner need
not prove that there was a known problem with the prior art in order to
demonstrate that there was a motivation to combine the references. Unwired
Planet, LLC v. Google Inc., 841 F.3d 995, 1002−03 (Fed. Cir. 2016).
Here, however, Petitioner chose to argue that there were problems
with Nepomniachtchi’s solutions and those purported problems would have
motivated a person of ordinary skill in the art “to minimize the need for
geometrical correction algorithm,” “to investigate ways to ensure checks
were well-aligned with the camera when images were being taken,” and “to
minimize the need for prompting user to retake photo.” Pet. 39−41. As
discussed above, Petitioner’s arguments are unavailing because Petitioner
fails to prove that those purported problems with Nepomniachtchi’s
solutions existed such that an ordinarily skilled artisan would have been
motivated to combine Nepomniachtchi and Yoon to overcome those
purported problems.
In short, Petitioner fails to prove the facts that it alleges and the
premise it offers for combining Nepomniachtchi and Yoon. Consequently,
we determine that Petitioner has failed to articulate an adequate reason to
combine Nepomniachtchi and Yoon to arrive at the claimed invention.
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See Arctic Cat Inc. v. Polaris Industries, Inc., 795 Fed. Appx. 827 (Fed. Cir.
2019) (“Although a challenger to a patent is not required to prove there was
a known problem with the prior art . . . , the Board did not misapply the law
by requiring Arctic Cat to prove the facts that it alleged.” (internal citation
omitted)).
For the foregoing reasons, Petitioner fails to show that a person of
ordinary skill in the art would have had a reason to minimize the need for
prompting user to retake the photo such that he or she would have been
motivated to implement Yoon’s monitoring and capturing features on
Nepomniachtchi’s mobile device. Petitioner’s argument that a person of
ordinary skill in the art “would have recognized that one way to minimize
the need for the geometrical correction algorithm or prompting user to retake
the photo would be to ensure that the check was properly aligned with the
camera of the mobile phone when the picture of the check was taken” is
conclusory, not supported by Dr. Alexander’s testimony or the prior art
disclosures. “To satisfy its burden of proving obviousness, a petitioner
cannot employ mere conclusory statements.” Magnum Oil, 829 F.3d at
1380; see also Rovalma, S.A. v. Böhler-Edelstahl GmbH & Co. KG, 856
F.3d 1019, 1025–26 (Fed. Cir. 2017) (vacating an obviousness finding
where it “did not cite any evidence, either in the asserted prior-art references
or elsewhere in the record, with sufficient specificity for us to determine
whether a person of ordinary skill in the art would have been so motivated”).
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Based on the evidence in this entire trial record, we determine that
Petitioner fails to articulate an adequate motivation to combine
Nepomniachtchi and Yoon to arrive at the claimed invention.
9. Conclusion on Obviousness
For the foregoing reasons, we determine that Petitioner has not
established by a preponderance of the evidence that claims 1, 2, 4−12,
14−18 are unpatentable under § 103(a) as obvious over Nepomniachtchi,
Yoon, and Acharya or that claims 3 and 13 are unpatentable under § 103(a)
as obvious over Nepomniachtchi, Yoon, Acharya, and Cho.
E. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude Evidence (Paper 29), seeking
to exclude Petitioner’s Exhibits 1008, 1013−1015, 1019−1021, and 1031.
Under the particular circumstances in this case, we need not assess the
merits of Patent Owner’s Motion to Exclude Evidence. As discussed above,
even without excluding Petitioner’s evidence, we have determined that
Petitioner has not demonstrated by a preponderance of the evidence that
claims 1−18 of the ’779 patent are unpatentable.
Accordingly, Patent Owner’s Motion to Exclude Evidence is dismissed
as moot.
III. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has not
established by a preponderance of the evidence that claims 1−18 of the ’779
patent are unpatentable.
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IV. ORDER
For the foregoing reasons, it is
ORDERED that claims 1−18 of the ’779 patent have not been shown
to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
In summary:
Claim(s) 35 U.S.C. § References
Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 2,
4−12,
14−18
103(a) Nepomniachtchi, Yoon, Acharya
1, 2, 4−12,
14−18
3, 13 103(a)
Nepomniachtchi,
Yoon, Acharya,
Cho
3, 13
Overall
Outcome 1−18

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For PETITIONER:
Louis L. Campbell
Michael M. Murray
WINSTON & STRAWN LLP
llcampbell@winston.com
mmurray@winston.com

For PATENT OWNER:
Michael R. Fleming
Babak Redjaian
Anthony Q. Rowles
IRELL & MANELLA LLP
mfleming@irell.com
bredjaian@irell.com
trowles@irell.com