United Services Automobile Association

Patent Trials and Appeals Board

Jan 11, 2021

IPR2019-01081 (P.T.A.B. Jan. 11, 2021)

Trials@uspto.gov Paper 39
571.272.7822 Entered: January 11, 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.
____________

IPR2019-01081
Patent 9,336,517 B1
____________

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

WHITE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Claims Unpatentable
Dismissing Patent Owner’s Motion to Exclude
35 U.S.C. § 318(a)

IPR2019-01081
Patent 9,336,517 B1

I. INTRODUCTION
Wells Fargo Bank, N.A. (“Petitioner”) filed a Petition requesting an
inter partes review of claims 1, 5–10, 12–14, and 17–20 (“the challenged
claims”) of U.S. Patent No. 9,336,517 B1 (Ex. 1001, “the ’517 patent”).
Paper 2 (“Pet.”). United Services Automobile Association (“Patent Owner”)
filed a Preliminary Response. Paper 6. Based on our review of these
submissions and associated evidence, we instituted inter partes review of the
challenged claims. Paper 9 (“Dec.”). After institution, Patent Owner filed a
Patent Owner Response (Paper 17, “PO Resp.”), Petitioner filed a Reply
(Paper 22, “Reply”), and Patent Owner filed a Sur-Reply (Paper 23,
“Sur-Reply”). Patent Owner filed a Motion to Exclude certain evidence
submitted by Petitioner (Paper 29), Petitioner filed an Opposition (Paper 30),
and Patent Owner filed a Reply (Paper 33).
A combined oral hearing with cases IPR2019-01081, IPR2019-01082,
and IPR2019-01083 was held on September 23, 2020, and a transcript of the
hearing is included in the record (Paper 38, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Decision is issued
pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine
Petitioner has not shown, by a preponderance of the evidence, that claims 1,
5–10, 12–14, and 17–20 of the ’517 patent are unpatentable. We dismiss as
moot Patent Owner’s Motion to Exclude.
A. Related Matters
The parties indicate that the ’517 patent is involved in United Services
Automobile Association v. Wells Fargo Bank N.A., No. 2:18-CV-00245-JRG
(E.D. Tex., filed Jun. 7, 2018). Pet. 65; Paper 4, 2. The ’517 patent also was
the subject of a petition under the transitional program for covered business
IPR2019-1081
Patent 9,336,517 B1

3

method patents (“CBM”). See Wells Fargo Bank N.A. v. United Servs. Auto.
Ass’n, CBM2019-00003, Paper 25 (PTAB June 3, 2019) (Denying
Institution).
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. 8,977,571 B1 (CBM2019-00004 and
IPR2019-01082); (3) U.S. Patent No. 8,699,779 B1 (CBM2019-00005 and
IPR2019-01083); (4) U.S. Patent No. 9,224,136 B1 (CBM2019-00027); (5)
U.S. Patent No. 10,013,681 B1 (CBM2019-00028); (6) U.S. Patent No.
10,013,605 B1 (CBM2019-00029). See Paper 4, 2−3; Paper 35, 1–3.
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) (Denying
Institution); Wells Fargo Bank, N.A. v. United Servs. Auto. Ass’n,
CBM2019-00003, Paper 25 (PTAB June 3, 2019) (Denying Institution);
Wells Fargo Bank, N.A. v. United Servs. Auto. Ass’n, CBM2019-00004,
Paper 22 (PTAB May 15, 2019) (Denying Institution); Wells Fargo Bank,
N.A. v. United Servs. Auto. Ass’n, CBM2019-00005, Paper 25 (PTAB June
3, 2019) (Denying Institution); Wells Fargo Bank, N.A. v. United Servs.
Auto. Ass’n, CBM2019-00027, Paper 13 (PTAB Oct. 1, 2019) (Denying
Institution); Wells Fargo Bank, N.A. v. United Servs. Auto. Ass’n,
IPR2019-1081
Patent 9,336,517 B1

4

CBM2019-00028, Paper 14 (PTAB Oct. 1, 2019) (Denying Institution);
Wells Fargo Bank, N.A. v. United Servs. Auto. Ass’n, CBM2019-00029,
Paper 13 (PTAB Oct. 1, 2019) (Denying Institution); Wells Fargo Bank,
N.A. v. United Servs. Auto. Ass’n, IPR2019-00815, Paper 17 (PTAB Aug.
26, 2019) (Denying Institution). Final Written Decisions have been entered
for two additional inter partes reviews between these parties regarding
related patents: 8,977,571 B1 (IPR2019-01082, Paper 39) and 8,699,779 B1
(IPR2019-001083, Paper 41).
B. The ’517 Patent
The ’517 patent is titled “Systems and Methods For Alignment Of
Check During Mobile Deposit.” Ex. 1001, code (54). Figure 1 of the ’517
patent is reproduced below.

Figure 1 above illustrates a system “in which example embodiments and
aspects may be implemented.” Id. at 2:55−57. 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 2:57−64, 3:16−34. User 102 may deposit
IPR2019-1081
Patent 9,336,517 B1

5

check 108 in account 160 and financial institution 130 may process and clear
check 108. Id. at 3:20−22. 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 3:57−60.
The ’517 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, 1:30–35. Thus, “[t]o reduce such burdens for the
payee, systems and methods have been developed to enable the remote
deposit of checks.” Id. at 1:35–37. The ’517 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 1:38–42. The ’517 patent, however, recognizes that “such 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 1:42–47. In
addition, the ’517 patent discloses that electronically exchanging a check
image requires compliance with the “Check 21 compliant format.” Id.
at 9:5–8. 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
IPR2019-1081
Patent 9,336,517 B1

6

standard for electronic exchange is defined in the standard DSTU
X9.37-2003 (“X9.37”). It is a binary interchange format.
Id. at 9:9–15 (emphasis added).
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 1:51–57 (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 3:66–4:3 (emphasis added).
Figure 3 of the ’517 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 6:12−14.
Image 230 may be provided in the field of view of the camera during image
capture of the check. Id. at 6:24−25. The user may move the camera or the
IPR2019-1081
Patent 9,336,517 B1

7

check so that check image 247 appears within or lines up with alignment
guide 235. Id. at 6:25−28.
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 4:10–13 (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 5:53–59 (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 8:66–9:4 (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 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
IPR2019-1081
Patent 9,336,517 B1

8

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 15:19–33.
C. Illustrative Claim
Of the challenged claims, claims 1 and 10 are independent. Claims 5–
9 depend from claim 1, and claims 12–14 and 17–20 depend from claim 10.
Claim 1 is illustrative and is reproduced below.
1. A system, comprising:
a mobile device having a processor, wherein the processor is
configured to:
generate an alignment guide adapted to align with an
instrument, wherein the alignment guide is associated with an
information capture component, wherein the information
capture component is associated with the mobile device, and
wherein the mobile device is adapted to capture information
of the instrument;
monitor at least one feature of the instrument detected by the
information capture component;
determine whether the at least one feature of the instrument
aligns with the alignment guide;
automatically capture information of the instrument when the
at least one feature aligns with the alignment guide; and
transmit the captured information from the mobile device to
a server via a communication pathway between the mobile
device and the server.
Ex. 1001, 18:49–67.
IPR2019-1081
Patent 9,336,517 B1

9

D. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability (Pet. 23)1:
Claim(s) Challenged 35 U.S.C. § Reference(s)
1, 5, 6, 9, 10, 12, 13, 18–20 103 Nepomniachtchi,2 Yoon3
7, 8, 14, 17 103 Nepomniachtchi, Yoon, Cho4
II. ANALYSIS
A. Level of Ordinary Skill in the Art
To determine whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17
(1966). The resolution of this question is important because it allows us to
“maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–
Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing 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 omitted).
Generally, it is easier to establish obviousness under a higher level of

1 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.
2 U.S. Pat. No. 7,778,457 B2 (Ex. 1003, “Nepomniachtchi”).
3 U.S. Pat. App. No. 2007/0262148 A1 (Ex. 1005, “Yoon”).
4 U.S. Pat. No. 7,120,461 B2 (Ex. 1033, “Cho”).
IPR2019-1081
Patent 9,336,517 B1

10

ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637
F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill
generally favors a determination of nonobviousness . . . while a higher level
of skill favors the reverse.”).
Here, we initially adopted Petitioner’s description of a person of
ordinary skill in the art. Dec. 28–29. Petitioner asserts that, as of August
2009, a person of ordinary skill in the art would have been a person having
at least a bachelor’s degree in electrical engineering, computer 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. 11 (citing Ex. 1002 ¶ 15). Patent Owner
does not dispute this description and “applies this level of ordinary skill in
the art.” PO Resp. 23 (citing Dec. 29). 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). Based on our review of the complete
record, we agree with Petitioner’s assessment and maintain the decision to
adopt Petitioner’s description of the level of skill in the art.
B. Claim Construction
In an inter partes review proceeding, 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). 37 C.F.R.
§ 42.100(b) (as amended Oct. 11, 2018). 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
IPR2019-1081
Patent 9,336,517 B1

11

progeny. Under this standard, the words of a claim are generally given their
“ordinary and customary meaning,” which is the meaning the term 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 claim terms in the related district court proceeding. Pet. 12–13
(citing Ex. 1034, 8−9; Exs. 1035−1037 (the parties’ district court claim
construction briefs)). Petitioner addresses directly the claim terms
“identification information pertaining to the instrument” and “determin[ing]
whether the at least one feature of the instrument aligns with the alignment
guide.” Id. at 13−17. Further, Petitioner addresses an alleged “obvious
drafting error in dependent claim 12.” Id. at 17–19. Ultimately, Petitioner
asserts that the parties’ claim construction disputes do not affect the outcome
of this Petition with respect to any claim. Id. at 12, 15, 18, 19.
In our Institution Decision, we construed “identification information
pertaining to the instrument” and “determin[ing] whether the at least one
feature of the instrument aligns with the alignment guide,” and declined to
address the alleged drafting error in dependent claim 12. Dec. 22–28. In its
Response, Patent Owner addresses the claim terms “mobile device” and
“determin[ing] whether the at least one feature of the instrument aligns with
the alignment guide.” PO Resp. 23−29. On Reply, Petitioner asserts that no
construction is necessary for either of the phrases addressed in the Patent
Owner Response and reiterates its request that we address the alleged
drafting error in claim 12. Reply 1–6. According to Petitioner, these claim
IPR2019-1081
Patent 9,336,517 B1

12

construction disputes are not dispositive, but it asserts that our analysis may
be streamlined if the terms are construed. Tr. 6:13–16.
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).
C. Overview of the Asserted Prior Art
1. Nepomniachtchi (Exhibit 1003)
Nepomniachtchi discloses methods and systems for mobile image
capture and processing of checks. Ex. 1003, code (54), Abstract.
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 discloses 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
IPR2019-1081
Patent 9,336,517 B1

13

out-of-focus images, unequal contrast or brightness, or other optical defects,
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 a surface when
photographed or the angle at which the document was photographed,” and
“[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.

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
IPR2019-1081
Patent 9,336,517 B1

14

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 the check. Id. at 9:41−50. The
application also conducts image processing to determine if the quality of the
image 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.
10:19−20. In some embodiments, some or all data processing might be
performed at the mobile 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
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
IPR2019-1081
Patent 9,336,517 B1

15

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. Yoon’s Figure 1 is set forth below.

Figure 1 shows a block diagram of a portable terminal that includes
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
IPR2019-1081
Patent 9,336,517 B1

16

“determines whether the boundary lines of the business card received from
the image processor 104 coincide with the reference boundary lines.” Id.
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
IPR2019-1081
Patent 9,336,517 B1

17

which all of the boundary lines of the business card coincide with all of the
reference boundary lines. Id. ¶ 28.
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 all the boundary lines of the business card.” Id. ¶ 29. If
so, the portable terminal photographs the business card. Id.
3. Cho (Exhibit 1033)
Cho discloses a camera phone and photographing method for a
camera phone. Ex. 1033, Abstract. 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
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
IPR2019-1081
Patent 9,336,517 B1

18

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.
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.
IPR2019-1081
Patent 9,336,517 B1

19

D. Asserted Obviousness over Nepomniachtchi and Yoon
Petitioner asserts that claims 1, 5, 6, 9, 10, 12, 13, and 18–20 are
unpatentable under § 103(a) as obvious over Nepomniachtchi and Yoon,
citing the Declaration of Dr. Peter Alexander for support. Pet. 27–54 (citing
Ex. 1002). Patent Owner counters that Petitioner fails to articulate a
sufficient reason to combine the teachings of Nepomniachtchi and Yoon.
PO Resp. 29–51.
1. Independent Claims 1 and 10
We will address independent claims 1 and 10 together because the
limitations of these claims are substantially similar. See Ex. 1001, 18:49–67,
19:29–41. As to these claims, Petitioner alleges that one of ordinary skill in
the art would have found them to be obvious over the teachings of
Nepomniachtchi and Yoon. See Pet. 31−44, 48−50.
As to the preamble of claim 1 “[a] system” and the limitation “a
mobile device having a processor,” as recited in claim 1, and “[a]” non-
transitory computer-readable medium comprising instructions executed by a
processor of a mobile device, as recited in claim 10, Petitioner asserts that
Nepomniachtchi teaches using a mobile device to capture and process an
image of “a check that is to be deposited,” and “[t]he mobile device could be
a ‘mobile telephone handset, Personal Digital Assistant, or other mobile
communication device.’” Id. at 31−33, 48–49 (citing Ex. 1003, 6:19−24,
6:50−53).
As to the limitation “generat[ing] an alignment guide adapted to align
with an instrument, wherein the alignment guide is associated with an
information capture component, wherein the information capture component
IPR2019-1081
Patent 9,336,517 B1

20

is associated with the mobile device, and wherein the mobile device is
adapted to capture information of the instrument,” as recited in claim 1,
Petitioner relies upon Yoon to teach an alignment guide. Id. at 36−37. 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 recited “information capture component [being]
associated with the mobile device,” and “the mobile device [being] adapted
to capture information of the instrument,” Petitioner points out that
Nepomniachtchi teaches “that the mobile device used to capture an image of
the check ‘may include a camera,’” and that “the mobile device could use
optical character recognition to extract information, such as the check
amount, from the check image.” Id. at 34 (citing Ex. 1003, 6:19–24, 9:64–
10:3, 10:21–22.
With respect to the limitation “monitor[ing] at least one feature of the
instrument detected by the information capture component,” as recited in
claim 1, and “monitor[ing] at least one feature of an instrument that is within
a field of view of a camera associated with the mobile device, wherein the
mobile device is adapted to capture information of the instrument,” as
recited in claim 10, Petitioner asserts that Yoon teaches “monitoring the face
or edges of an image of a business card” and “determin[ing] whether the
boundary lines of the business card received from the image processor . . .
coincide with the reference boundary lines.” Id. at 37−38, 49–50 (citing
Ex. 1005 ¶ 19, Fig 2).
IPR2019-1081
Patent 9,336,517 B1

21

For the limitation “determin[ing] whether the at least one feature of
the instrument aligns with the alignment guide,” as recited in clam 1, and
“determin[ing] whether the at least one feature aligns with an alignment
guide adapted to align with an instrument,” as recited in claim 10, Petitioner
asserts Yoon teaches “determining whether the face or edges of an image of
a business card align[s] with rectangular reference boundary lines displayed
on the portable terminal’s display.” Id. at 38−39, 49–50 (citing Ex. 1005
¶ 19, Fig. 2 (steps 211, 215, 225)).
Regarding the limitation “automatically captur[ing] information of the
instrument when the at least one feature aligns with the alignment guide,” as
recited in claim 1 and similarly recited in claim 10, Petitioner relies upon
Yoon to teach that its controller 100 “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
40−41, 49–50 (citing Ex. 1005 ¶ 19, Fig. 2 (step 223), Fig. 3D).
For the limitation “transmit[ting] the captured information from the
mobile device to a server via a communication pathway between the mobile
device and the server,” as recited in claim 1, and “transmit[ting] the captured
information from the mobile device to a server,” as recited in claim 10,
Petitioner relies upon Nepomniachtchi to teach transmitting the captured
image of a check from the mobile device to a server via a communication
pathway. Id. at 41−42, 49–50 (citing Ex. 1003, 6:28−33, 9:41–57, Fig. 7).
In addition, 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 information of an instrument
IPR2019-1081
Patent 9,336,517 B1

22

using Yoon’s alignment guide.” Id. at 42. Petitioner acknowledges that
Nepomniachtchi does not teach “projecting an alignment guide in the
display of the mobile device, monitoring the alignment of the check with the
alignment guide, and automatically capturing an image of the check when it
was aligned with the alignment guide.” Id. Petitioner contends that Yoon
teaches “using a mobile device to perform all of these steps when capturing
the image of a business card.” Id. Petitioner also contends 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 Ex. 1002 ¶ 112).
Petitioner contends that Nepomniachtchi taught two methods to deal
with low quality images. Id. at 43. “The first solution was to detect whether
the image was of poor quality and prompt[] the user to take another image.
The second solution was to process the image to correct the defect.” Id.
(citing Ex. 1003, 7:55–59, 8:54–63) (internal citations omitted). Petitioner
asserts 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.” Id. at 43 (citing Ex. 1002 ¶ 115) (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. at 43–44 (citing Ex. 1005 ¶ 7) (emphasis added).
IPR2019-1081
Patent 9,336,517 B1

23

Petitioner further contends that an ordinarily skilled artisan “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.” Id. at 43 (citing Ex. 1002 ¶¶ 113–114). Petitioner argues that the
person of ordinary skill in the art “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. at 44 (citing Ex. 1002 ¶ 115); see Ex. 1005 ¶ 7 (noting that Yoon
sought to solve the problem that “the business card may be photographed to
be too large, small or dark, thereby lowering the probability of satisfactorily
recognizing the business card.”). Petitioner contends that such an artisan
“therefore would have been motivated to combine Nepomniachtchi’s mobile
phone check imaging embodiment with Yoon’s techniques for aligning a
document with a mobile device camera to obtain a good, well-aligned
photograph of a document.” Id. (emphasis added).
Patent Owner asserts that the challenges based on the combination of
Nepomniachtchi and Yoon must fail because Petitioner has not established a
sufficient motivation to combine the teachings of these references. See 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.
a) Yoon Would Not Reduce Computational Burden
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
IPR2019-1081
Patent 9,336,517 B1

24

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. Pet. 42−43 (citing Ex. 1002
¶¶ 113−114) (emphases added). Dr. Alexander supports this argument by
testifying 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 ¶ 114. He further opines that “Yoon presented a
viable means of reducing the burden of computations performed by the
mobile device.” Id. ¶ 115 (emphasis added). Petitioner further asserts that
“[Patent Owner] confuses the similar computational burdens in analyzing
image quality with the vastly different computational burdens in improving
image quality.” Reply 10. We disagree. Patent Owner does not contend
that “the computational efficiency analysis step would be essentially the
same for Yoon or Nepomniachtchi” (see Reply 10), but rather, that
“[Petitioner] cannot assert that Yoon teaches a different way of assessing
image alignment that is more efficient, or requires less analysis, than
Nepomniachtchi’s technique” (see PO Resp. 33).
Patent Owner further argues that most likely the combination would
increase the computational burden on the mobile device. PO Resp. 32−40;
Sur-reply 10−14; Ex. 2032 ¶ 30. Patent Owner contends that moving the
alignment analysis to the pre-capture phase would dramatically increase the
computational burden because “Nepomniachtchi’s processing/analysis is
performed on a single check image taken by the user. Pre-capture image
quality analysis, on the other hand, would need to be performed thirty times
or more per second in order to determine when to automatically capture the
IPR2019-1081
Patent 9,336,517 B1

25

check image (as well as determining what feedback instructions to
provide).” PO Resp. 37 (citing Ex. 2032 ¶ 30). Petitioner contends that the
cited art does not require that this analysis happens thirty times per second
and that there is “no reason why a [person of ordinary skill] could not design
the system to examine one single frame to provide feedback to the user.”
Reply 13. Patent Owner argues that
[i]n the proposed combination, however, the image quality
would also need to be analyzed prior to image capture to
determine whether the check image was aligned with the
alignment guide and trigger the automatic capture process. See
Ex. 2032 ¶ 30. As Mr. Mott’s declaration explains, this pre-
capture analysis would need to be performed repeatedly for the
processor to decide when to capture the check image, since it can
no longer rely on the user initiating “manual capture.” Id. As a
result, “pre-capture check image quality analysis is more
computationally intensive than post-capture check image quality
analysis.” Id.
Sur-Reply 13. Patent Owner identifies that Petitioner’s declarant did not
rebut Mr. Stephen Mott’s analysis as to this point. Id. at 14. Patent Owner
also argues that Petitioner fails to provide a motivation to support its
mention of a possible alternative design that examines one frame at time. Id.
Patent Owner asserts that such a design would be “nonsensical” because “the
system would be incapable of capturing a check image except in the rare
situation where the very first analyzed frame satisfied the alignment check.”
Id. We agree that a discussion of motivation to make such a modification is
required. 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, 1073 (Fed. Cir. 2015). The Petition does not
IPR2019-1081
Patent 9,336,517 B1

26

propose to modify Nepomniachtchi’s system to examine one single frame to
provide feedback to the user, much less articulate a motivation to make such
a modification. See Pet. 33−41, 51−52.
We find Patent Owner’s arguments and evidence to comport with the
disclosures of the references. Yoon states that “[t]he image 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.” Ex. 1005
¶ 21 (emphasis added); see Ex. 1003 ¶¶ 84, 128, 139 (each citing Ex. 1005
¶ 21). Yoon’s controller does not allow automatic photography to begin
until after the system has determined that the image is sufficiently bright and
appropriately aligned. Ex. 1005 ¶¶ 19, 26, 28. Thus, Yoon’s system is
performing a pre-capture analysis on “units of frames” in order to ascertain
whether the image is appropriate for capture. Id.
Petitioner, however, is correct that there is no requirement that this
analysis happen thirty times per second, but as Mr. Mott points out “[i]n
order to determine when to capture the check image, the system would have
to monitor, in realtime, the quality of the check image in view.” Ex. 2032
¶ 30. Mr. Mott does not describe a frequency of thirty frames per second as
a requirement, but rather just an example of the high frequency in which this
analysis would have to be performed. Id. (“[P]re-capture check image
quality analysis is more computationally intensive than post-capture check
image quality analysis, because it must be performed repeatedly (for
example, 30 times per second, when analyzing a 30 frames-per-second live
camera preview), as opposed to analyzing a single, captured check image.”).
Thus, the proposed system would include some number of iterations of the
pre-capture analysis in order to obtain a well-aligned image. It stands to
IPR2019-1081
Patent 9,336,517 B1

27

reason that the number of iterations would generally be greater than one
because if it were typical for checks to be immediately well aligned then
there would be little incentive to improve alignment in the first place.
Neither Petitioner nor Dr. Alexander explains sufficiently how adding
Yoon’s monitoring and capturing features on Nepomniachtchi’s mobile
device would avoid increasing the computational burden on the mobile
device. Pet. 42−44; Ex. 1002 ¶¶ 111−115. 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 12.
Petitioner asserts that “the combination [of Nepomniachtchi and
Yoon] lowers the burden of the [post-capture] 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 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.” Ex. 1003,
10:17−20, 10:55−56. Thus, any reduction in the correction processing
would result in an efficiency gain at the server, not the mobile device.
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, 10:21−22. The Petition, however, fails
to reference this passage in its discussion of the motivation to combine.
IPR2019-1081
Patent 9,336,517 B1

28

Pet. 42–44. In its Reply, there is some suggestion that Nepomniachtchi’s
correction processing is performed on the mobile device. Reply 10−14. We
must, however, ascertain whether this is a new argument that should not be
considered in this proceeding. Petitioner cites this passage twice in its
discussion of claim 1. First, Petitioner cites it to support an assertion that
“Nepomniachtchi disclosed using a mobile device to deposit a check.”
Pet. 27 (citing Ex. 1003, 6:19–20, 6:50–53, 10:21–26). Second, Petitioner
cites that passage to support an assertion that “Nepomniachtchi also taught
that the mobile device could use optical character recognition to extract
information, such as the check amount, from the check image.”5 Id. (citing
Ex. 1003, 9:64–10:3, 10:21–22). Thus, there is no argument in the Petition
that Nepomniachtchi’s post-capture image correction steps would have been
performed on this mobile device. Petitioner had an opportunity to present
argument as to why a relevant artisan would have used the 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-Sys,

5 A similar argument is made as to claim 5. See Pet. 44–46.
IPR2019-1081
Patent 9,336,517 B1

29

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”)6 74 (Nov. 2019);
see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). Accordingly, we decline to
consider Petitioner’s new argument 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. 42−44; Ex. 1002 ¶¶ 111−115. 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 ¶ 114 (emphasis added). Moreover, Patent
Owner’s declarant 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

6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2019-1081
Patent 9,336,517 B1

30

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 also 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,
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.’” Id. at 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
IPR2019-1081
Patent 9,336,517 B1

31

Nepomniachtchi that performing image correction on the server is
disadvantageous.” Sur-reply 11.
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
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.
Sur-reply 11−12 (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. Sur-reply
11–12. 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. Thus, Petitioner fails to recognize that Nepomniachtchi already
IPR2019-1081
Patent 9,336,517 B1

32

teaches a solution to address the problem of requesting retakes at the server,
by performing the image quality analysis on the mobile device.
Further, Patent Owner asserts that mobile CPU processing was limited
in the relevant timeframe and that moving the image analysis from the
server, as discussed in Nepomniachtchi, to the mobile device, as discussed in
Yoon, would be counterproductive for someone seeking to reduce the
computational burden on the mobile device. Id. at 37–39. Dr. Alexander
agreed that mobile CPU burden was an issue at interest to developers at the
relevant time, but he had no opinion as to whether Yoon placed an increased
burden on the mobile device’s CPU as compared to Nepomniachtchi.
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.
Q. Okay. Do you know if CPU burden on mobile devices was
something that was relevant to developers in the 2008 and 2009
time period?
A. I’m sure they were concerned with it.
Ex. 2039, 67:20–68:3 (deposition of Dr. Alexander). We find Patent
Owner’s arguments to be persuasive. Therefore, we are not persuaded by
Petitioner’s argument that Nepomniachtchi teaches away from its server
embodiment. Reply 12. For the foregoing reasons, we 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. 42−44; Ex.
1002 ¶¶ 111−115.
IPR2019-1081
Patent 9,336,517 B1

33

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
(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
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, 79:24−81:14 (emphases added).
Neither the Petition nor Dr. Alexander’s original Declaration includes
argument that “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.” See Pet. 42–44; Ex. 1002 ¶¶ 111−115 (emphases
IPR2019-1081
Patent 9,336,517 B1

34

added). Petitioner could have presented those arguments in its Petition, but
chose not to do so.
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-Sys, 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 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,
79:24−81:14; 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 86 (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
IPR2019-1081
Patent 9,336,517 B1

35

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
lacking in the record.” Estee Lauder Inc. v. L’Oréal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997) (citations omitted). 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, 79:24−81:14), 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
IPR2019-1081
Patent 9,336,517 B1

36

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
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 at
least one feature of the instrument detected by the information capture
component” and “determine whether the at least one feature of the
instrument aligns with the alignment guide.” See, e.g., Ex. 1001, 18:49−61.
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. 37−39,
49−50. 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. Hence, Petitioner’s new
arguments and Dr. Alexander’s deposition testimony do not support
Petitioner’s position that a relevant artisan would 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.”
IPR2019-1081
Patent 9,336,517 B1

37

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.” Id. 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. 42−44).
Petitioner’s argument amounts to nothing more than impermissible
hindsight. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (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 “temptation to read into the prior art the
teachings of the invention in issue”)).
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
IPR2019-1081
Patent 9,336,517 B1

38

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) Petitioner Has Not Established That One of
Ordinary Skill in the Art Would Remove User Judgement
Petitioner asserts that “[person of ordinary skill in the art] would have
been motivated to combine Nepomniachtchi and Yoon so that a mobile
device would automatically capture information of an instrument using
Yoon’s alignment guide and the mobile device would transmit the captured
information to a server.” Pet. 42. Patent Owner contends that “a
fundamental problem” with Petitioner’s proposed combination that
incorporates Yoon’s automatic capture technique into Nepomniachtchi is
that it “results in [a] 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. According
to Patent Owner, Petitioner’s proposed combination “replace[s] the user’s
judgment . . . regarding when to capture the image of the check. The
decision to capture an image can only be made once: either triggered
manually by the user, as in Nepomniachtchi, or triggered automatically by
the system, as in Yoon.” Id. at 42 (citing Ex. 2032 ¶ 29) (internal citations
omitted). “Eliminating this user judgment and relying solely on alignment
to determine when to capture the check image would result in significant
problems. For example, an automatically-captured check image that is
perfectly aligned, but inverted in Nepomniachtchi’s system is worthless
because the MICR is read based on location.” Id. at 44.
IPR2019-1081
Patent 9,336,517 B1

39

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
Nepomniachtchi, with an automatic capture based on alignment alone.
Pet. 42−44. 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 42 (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
regardless of whether the image was suitable in other aspects. Sur-reply 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
IPR2019-1081
Patent 9,336,517 B1

40

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 before the portable
terminal photographs the business card. Id. ¶¶ 25−29, Figs. 2, 3A−3D.
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. 17.
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. 44−46. 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. at 44. Dr. Alexander confirms
during deposition that “I don’t see any capability in Yoon for detecting
IPR2019-1081
Patent 9,336,517 B1

41

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.
In its Reply, Petitioner argues that the claims do not require capturing
an image that is suitable for deposit. Reply 17. As Patent Owner notes,
The Nepomniachtchi system is a check deposit system; it
captures images of checks for deposit. Nepomniachtchi does not
prompt users to retake check images if they do not satisfy the
requirements of the ’517 Patent claims; it prompts users to retake
check images if their quality is too poor for check deposit. See
Ex. 1003, 7:55–59. A [person of ordinary skill in the art]
interested in reducing the frequency of prompting the user to
retake images would thus be concerned not with the limitations
of the ’517 Patent claims but with the overall quality of the check
images captured by the combined system.
IPR2019-1081
Patent 9,336,517 B1

42

Sur-Reply 18. We agree. The question here is not whether deposit
suitability is an element of the claims, but rather whether one of skill in the
art looking to improve upon Nepomniachtchi would look to the teachings of
Yoon. 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. 17. 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). Therefore, Petitioner’s argument
that the claims do not require capturing an image that is suitable for deposit
is unavailing. See 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.” Id. at
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.
IPR2019-1081
Patent 9,336,517 B1

43

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-Sys,
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
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. 42 (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
IPR2019-1081
Patent 9,336,517 B1

44

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.
28:24−29:12. 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.
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:
IPR2019-1081
Patent 9,336,517 B1

45

(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
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. 42−44; 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
IPR2019-1081
Patent 9,336,517 B1

46

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 ¶ 114.
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.
c) Conclusion
Petitioner asserts that an artisan of ordinary skill “would have been
motivated to combine Nepomniachtchi and Yoon so that a mobile device
would automatically capture information of an instrument using Yoon’s
alignment guide and the mobile device would transmit the captured
information to a server.” Pet. 42. Further, 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.” Id. at 43. Finally, “[a person of ordinary skill in
the art] 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 . . . [and]
therefore would have been motivated to combine Nepomniachtchi’s mobile
phone check imaging embodiment with Yoon’s techniques for aligning a
document with a mobile device camera to obtain a good, well-aligned
photograph of a document.” Id. at 44.
IPR2019-1081
Patent 9,336,517 B1

47

We are not persuaded by Petitioner’s proffered rationale. As
explained above, we agree with Patent Owner’s argument that incorporating
the teachings of Yoon into Nepomniachtchi’s system would lead to a system
with increased – rather than decreased – computational burdens on the
mobile device at a time when developers were concerned with the burden on
a mobile CPU. We also are persuaded by Patent Owner’s argument that
Petitioner has not sufficiently explained the benefit that could flow from
replacing multi-faceted human judgment with machine judgment that is
singularly focused on alignment. As noted in Nepomniachtchi, alignment is
but one of many issues that can cause difficulties for Nepomniachtchi’s
system. See e.g., Ex. 1003, 7:60−8:34. Thus, we are not persuaded that one
of ordinary skill in the art would have looked to the teachings of Yoon to
improve Nepomniachtchi’s system because the evidence and arguments
advanced by Patent Owner establish that Yoon would have brought notable
deficiencies to Nepomniachtchi’s system without providing notable
improvements. Therefore, 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.
2. Dependent Claims 5, 6, 9, 12, 13, and 18–20
Petitioner asserts that dependent claims 5, 6, 9, 12, 13, and 18–20
would have been obvious over Nepomniachtchi and Yoon. Pet. 44–55.
These challenges, however, rely on the same motivation combine analysis
discussed above in relation to the independent claims. Thus, for the same
reasons discussed above, we determine that Petitioner has not established by
IPR2019-1081
Patent 9,336,517 B1

48

a preponderance of the evidence that claims 5, 6, 9, 12, 13, and 18–20 are
unpatentable under § 103(a) as obvious over Nepomniachtchi and Yoon.
E. Obviousness over Nepomniachtchi, Yoon, and Cho
Petitioner asserts that dependent claims 7, 8, 14, and 17 are
unpatentable under § 103(a) as obvious over Nepomniachtchi, Yoon, and
Cho. Pet. 55–64. These challenges, however, rely on the same motivation
combine analysis discussed above in relation to the independent claims. See
Pet. 63 (relying upon the same contentions discussed above in regards to the
previous ground). Thus, for the same reasons discussed above, we
determine that Petitioner has not established by a preponderance of the
evidence that claims 7, 8, 14, and 17 are unpatentable under § 103(a) as
obvious over Nepomniachtchi, Yoon, and Cho.
F. Patent Owner’s Motions to Exclude
Patent Owner requests Exhibits 1008, 1013–1015, 1019–1021, and
1031, be excluded from consideration as irrelevant under Federal Rule of
Evidence 402. Paper 29, 1–2. Patent Owner also requests that Exhibits
1013–1015, 1019–1021, and 1031, be excluded from consideration as not
properly authenticated per Federal Rule of Evidence 901. Id. at 2.
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, 5–10, 12–14, and 17–20 of the ’517 patent are unpatentable.
Accordingly, Patent Owner’s Motion to Exclude Evidence is dismissed
as moot.
IPR2019-1081
Patent 9,336,517 B1

49

III. CONCLUSION
In summary:

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has not established by a preponderance of
the evidence that claims 1, 5–10, 12–14, and 17–20 of the ‘517 patent are
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed as moot; 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.

Claim(s)
Challenged
35
U.S.C.
§
Reference(s)
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 5, 6, 9, 10,
12, 13, 18–20
103(a) Nepomniachtchi,
Yoon
1, 5, 6, 9, 10,
12, 13, 18–20
7, 8, 14, 17 103(a) Nepomniachtchi, Yoon, Cho
7, 8, 14, 17
Overall
Outcome
1, 5–10, 12–
14, 17–20
IPR2019-1081
Patent 9,336,517 B1

50

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