Trials@uspto.gov
`571-272-7822
`
`Paper No. 25
`Entered: December 15, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`PNC BANK N.A.,
`Petitioner,
`
`v.
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`
`IPR2021-01399
`Patent 10,013,605 B1
`
`
`
`
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing of Decision
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`

`

`IPR2021-01399
`Patent 10,013,605 B1
`
`I. INTRODUCTION
`
`On April 6, 2022, PNC Bank N.A. (“Petitioner”), filed a Request for
`
`Rehearing under 37 C.F.R. § 42.71(d). Paper 22 (“Req. Reh’g”). On the
`
`same day, Petitioner also filed a request for review by the precedential
`
`opinion panel (“POP”). Ex. 3002. On December 6, 2022, the POP denied
`
`review. Paper 24.
`
`Petitioner’s Request for Rehearing seeks reconsideration of our
`
`Decision Denying Institution of Inter Partes Review with respect to
`
`claims 1–29 (“challenged claims”) of U.S. Patent No. 10,013,605 B1
`
`(Ex. 1001, “’605 Patent”), in which we determined that Petitioner did not
`
`demonstrate that Oakes-I, Oakes-II, Medina, and Roach applied in each of
`
`the four asserted grounds of unpatentability qualify as prior art to the
`
`challenged claims of the ’605 Patent (Paper 20, “Decision” or “Dec.”).
`
`More specifically, Petitioner contends that we misapprehended the correct
`
`legal standard for written description support when determining that the
`
`parent application of the ’605 Patent (i.e., U.S. Patent Application
`
`No. 11/590,974 (Ex. 1042, “’974 Application”)) provided sufficient written
`
`description support for “a portable device” and “a digital camera”/“handheld
`
`mobile device with a digital camera” (“the device limitations”). Req.
`
`Reh’g 1–2, 5–9. Petitioner also asserts that the we overlooked disclosures in
`
`the ’974 Application that conflict with the conclusion that the ’974
`
`Application provides written description support for “the transmitted copy of
`
`the electronic images . . . having a different electronic format than the
`
`images captured with the digital camera” (“the ‘different electronic format’
`
`limitations”). Id. at 2–3, 9–12. According to Petitioner, had we not
`
`misapprehended the legal standard for written description and had we
`
`considered the conflicting disclosures in the ’974 Application, we would
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`2
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`

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`IPR2021-01399
`Patent 10,013,605 B1
`
`have concluded that the ’974 Application does not provide sufficient written
`
`description support for the challenged claims of the ’605 Patent. See id.
`
`As explained below, we have considered the arguments presented by
`
`Petitioner in the Request for Rehearing. We are not persuaded that we
`
`misapprehended or overlooked arguments or evidence presented in the
`
`Petition, or that we abused our discretion in rendering our Decision.
`
`Accordingly, we deny Petitioner’s Request for Rehearing.
`
`II. STANDARD OF REVIEW
`
`A party requesting rehearing bears the burden of showing that the
`
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`
`specifically all matters it believed the Board misapprehended or overlooked,
`
`and the place where each matter was addressed previously. Id. When
`
`rehearing a decision on a petition, we review the decision for an abuse of
`
`discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the
`
`decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an
`
`erroneous conclusion of law; (3) rests on clearly erroneous fact findings;
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`or (4) involves a record that contains no evidence on which the Board could
`
`rationally base its decision.” Redline Detection, LLC v. Star Envirotech,
`
`Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (quoting Abrutyn v. Giovanniello,
`
`15 F.3d 1048, 1050–51 (Fed. Cir. 1994) (citation omitted)).
`
`III. BACKGROUND
`
`The Petition presented the following grounds of unpatentability: (1)
`
`claims 12–23 and 26–29 of the ’605 Patent are unpatentable under § 103(a)
`
`over Oakes-I (Ex. 1037) and Oakes-II (Ex. 1038); (2) claims 12–23
`
`and 26–29 of the ’605 Patent are unpatentable under § 103(a) over Oakes-I,
`
`Oakes-II, and Medina (Ex. 1058); (3) claims 1–11, 24, and 25 of the ’605
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`3
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`

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`IPR2021-01399
`Patent 10,013,605 B1
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`Patent are unpatentable under § 103(a) over Oakes-I, Oakes-II, and Roach
`
`(Ex. 1040); and (4) claims 1–11, 24, and 25 of the ’605 Patent are
`
`unpatentable under § 103(a) over Oakes-I, Oakes-II, Roach, and Medina.
`
`See Pet. 6, 34–91. Petitioner contends that each of Oakes-I, Oakes-II,
`
`Roach, and Medina qualifies as prior art because the challenged claims of
`
`the ’605 Patent are not entitled to the benefit of a filing date earlier than
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`July 28, 2017. See id. at 1, 12–32. To support this argument, Petitioner
`
`asserts that the ’974 Application, the parent application of the ’605 Patent,
`
`does not provide sufficient written description support for, inter alia, the
`
`device limitations and the “different electronic format” limitations. See id.
`
`at 12–29, 31–32.
`
`The ’605 Patent claims entitlement to the benefit of an earlier
`
`effective filing date through an intervening continuation application back to
`
`the ’974 Application. Ex. 1001, code (63). The ’974 Application was filed
`
`on October 31, 2006, and issued as Oakes-I on April 29, 2014. Ex. 1037,
`
`codes (21), (22), (45). Oakes-II issued on January, 18, 2011, and also was
`
`filed on October 31, 2006. Ex. 1038, codes (22), (45). Medina issued on
`
`September 8, 2015, and claims the benefit of the filing date of three
`
`provisional applications filed on June 8, 2010. Ex. 1058, codes (45), (60).
`
`Roach was published on June 20, 2013, and claims the benefit of a
`
`continuation-in-part application filed on December 30, 2008. Ex. 1040,
`
`codes (43), (63). On their faces, Oakes-I, Oakes-II, Medina, and Roach
`
`qualify as prior art to the challenged claims of the ’605 Patent only if the
`
`4
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`

`

`IPR2021-01399
`Patent 10,013,605 B1
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`challenged claims are not entitled to the benefit of a filing date earlier than
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`July 28, 2017. See Pet. 4.1
`
`In the Decision, we did not agree with Petitioner’s contentions that the
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`challenged claims are not entitled to the benefit of an earlier effective filing
`
`date. See Dec. 17–27. Beginning with the device limitations, we noted that,
`
`contrary to Petitioner’s suggestion, a claim can be broader than the
`
`embodiments disclosed in the specification. See id. at 18. We then
`
`explained that Petitioner did not show that the breadth of the claims that
`
`include the device limitations resulted in a lack of written description
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`support. See id. at 18–22. In addition, after reviewing the ’974 Application,
`
`we made the following factual findings:
`
`[T]he ’974 Application . . . describes an invention for
`remote deposit of a check using a general purpose computer
`(such as a laptop) that receives an image of the check from an
`associated image capture device (such as a digital camera).
`What is important to the invention is that the image capture
`device and general purpose computer are communicatively
`coupled, not their locations relative to one another. In addition,
`the ’974 Application does not limit its invention to only those
`remote deposits performed using a general purpose computer
`that is separate from an image capture device. The ’974
`Application broadly describes the image capture device, noting
`it can be “a scanner or digital camera.” The ’974 Application
`also indicates that the general purpose computer and image
`capture device are “customer-controlled” and “electronics that
`today’s consumers actually own or can easily acquire.” In light
`of these disclosures, we find that a person of ordinary skill in
`the art would have understood the ’974 Application to
`reasonably convey possession of both integrated and
`nonintegrated configurations.
`
`
`1 The parties do not appear to dispute that the ’605 Patent is identical
`substantively to Oakes–I and the ’974 Application. Pet. 32; Paper 10 (Patent
`Owner Preliminary Response), 24 n.6.
`
`5
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`

`

`IPR2021-01399
`Patent 10,013,605 B1
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`Id. at 19–20 (citations and footnote omitted); see also id. at 19 (“[T]he
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`Petition identifies (and we perceive) no reason why the relative location of
`
`the general purpose computer and the image capture device is even relevant
`
`to the invention described in the ’974 Application.”).
`
`Turning to “the “different electronic format” limitations, we made the
`
`following factual findings:
`
`The ’974 Application discloses: (1) a customer-controlled
`computer (such as a laptop) that has image capture device
`control software and/or image edit software; (2) it can be useful
`to include a mechanism for converting images from a first
`format to a second bi-tonal TIFF format required by Check 21
`legislation; and (3) it may be cost effective to require customers
`to send in only images of specified formats to lower
`development costs of the system. See Ex. 1042 ¶¶ 59, 65, 69,
`Fig. 5. Therefore . . . the ’974 Application discloses reducing
`system development costs by requiring customers to send in
`(i.e., transmit) images in bi-tonal TIFF format, which is
`required by Check 21 legislation, by first using the customer-
`controlled computer to convert a check image from a first
`format to the second bi-tonal TIFF format prior to sending (i.e.,
`transmitting) the image to the server.
`
`Dec. 26–27.
`
`IV. ANALYSIS
`
`We have considered each of Petitioner’s arguments, but they do not
`
`demonstrate that we misapprehended or overlooked a matter presented in the
`
`Petition or that we abused our discretion in not instituting an inter partes
`
`review of claims 1–29 of the ’605 Patent. We begin by addressing
`
`Petitioner’s arguments directed to the device limitations, followed by
`
`addressing Petitioner’s arguments directed to the “different electronic
`
`format” limitations.
`
`6
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`

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`IPR2021-01399
`Patent 10,013,605 B1
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`A. The Device Limitations
`
`Petitioner contends that, with respect to our written description
`
`analysis for the device limitations, we erroneously relied on what would
`
`have been obvious to a person of ordinary skill in the art, rather than what
`
`the inventor possessed. Req. Reh’g 1–2 (citing Dec. 19–22; D Three
`
`Enters., LLC v. SunModo Corp., 890 F.3d 1042, 1050 (Fed. Cir. 2018)), 4–7
`
`(citing Dec. 20–22; Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
`
`1351–52 (Fed. Cir. 2010) (en banc)). We disagree. Although Petitioner is
`
`correct that “a description that merely renders the invention obvious” is not
`
`enough (Ariad, 598 F.3d at 1352 (quoted by Req. Reh’g 6)), our Decision is
`
`not to the contrary.
`
`In the portion of the Decision cited by Petitioner, we did not agree
`
`with Petitioner’s argument that the ’974 Application fails to provide
`
`sufficient written description support of the claimed “genus” because it
`
`describes only one “species.” See Decision 21–22 (explaining that Petitioner
`
`contends the device limitations represent a genus that includes a “general
`
`purpose computer separate from the digital camera that captures check
`
`images” and “an integrated digital camera that captures check images.”). In
`
`so doing, we referenced our earlier analysis, which found, inter alia, that “a
`
`person of ordinary skill in the art would have understood the ’974
`
`Application to reasonably convey possession of both integrated and non-
`
`integrated configurations.” Id. at 20. Petitioner does not allege error in this
`
`finding, and this finding, by itself, is sufficient to support our conclusion.2
`
`
`2 Petitioner contends that we “speculated that the inventors had possession of
`a portable/mobile device with an integrated camera.” Req. Reh’g 5. To the
`contrary, we merely disagreed with Petitioner’s argument that the ’974
`Application fails to show possession of the claimed inventions, which
`
`7
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`IPR2021-01399
`Patent 10,013,605 B1
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`Instead, Petitioner appears to take issue with a single sentence in our
`
`Decision that used the phrase “would have understood.” See Req. Reh’g 5
`
`(citing Dec. 20–22). In context, however, it is clear that we properly
`
`considered the existing knowledge of a person of ordinary skill in the art in
`
`order to determine whether disclosure of a “species” was sufficient
`
`disclosure of the claimed “genus.” See Decision 20–22. The relevant
`
`passage of our Decision stated:
`
`According to Petitioner, “this single species (general purpose
`computer separate from the digital camera that captures check
`images) fails to provide written description support for the full
`scope of the genus claimed . . . , which . . . includes an
`integrated digital camera that captures check images as
`claimed.” Petitioner acknowledges that the ’974 Application
`discloses the former, and we find that to be representative of
`both alternatives, given the ’974 Application’s disclosure, as
`discussed above. We also find that a person of ordinary skill in
`the art, defined by Petitioner as having a relatively high level of
`skill in image capture/scanning technology, would have
`understood the ’974 Application to reasonably convey
`possession of the single non-enumerated species—indeed, as
`Patent Owner notes, “one would only need to think of the only
`other configuration of portable/handheld mobile device in the
`market.” Further, Petitioner does not provide evidence to
`demonstrate that the other, non-enumerated species was in any
`way unpredictable.
`
`Dec. 21 (citations omitted). Thus, we considered “the existing knowledge in
`
`the particular field” and “the predictability of the aspect at issue,” consistent
`
`with binding law, to evaluate whether the genus claim was sufficiently
`
`disclosed by a species. Ariad, 598 F.3d at 1351; see also Bilstad v.
`
`
`instead recite “a portable device” and “a digital camera,” and “handheld
`mobile device with a digital camera.” Ex. 1001, 15:9–14 (claim 1),
`16:30–33 (claim 12).
`
`8
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`Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir. 2004) (“If the difference
`
`between members of the group is such that the person skilled in the art
`
`would not readily discern that other members of the genus would perform
`
`similarly to the disclosed members, i.e., if the art is unpredictable, then
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`disclosure of more species is necessary to adequately show possession of the
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`entire genus.”); cf. Regents of the Univ. of California v. Eli Lilly & Co., 119
`
`F.3d 1559, 1568 (Fed. Cir. 1997) (explaining that a generic chemical
`
`formulae is sufficient disclosure of the genus because “[o]ne skilled in the
`
`art can distinguish such a formula from others and can identify many of the
`
`species that the claims encompass”). Accordingly, we do not agree that we
`
`applied the wrong legal standard.
`
`Petitioner also contends that our reasoning conflicts with two prior
`
`Board decisions. See Req. Reh’g 6–8 (citing Mylan Pharms Inc. v. Sanofi-
`
`Aventis Deutschland GmbH, IPR2018-01680, Paper 22, 23 n.11, 26–27
`
`(PTAB Apr. 3, 2019) (Institution Decision); Mylan Pharms Inc. v. Sanofi-
`
`Aventis Deutschland GmbH, IPR2018-01680, Paper 110, 21, 20 (PTAB
`
`May 29, 2020) (Final Written Decision)). Neither of these decisions was
`
`cited in the Petition, therefore, we could not have misapprehended or
`
`overlooked arguments and evidence that Petitioner did not present
`
`previously. Moreover, these decisions are non-precedential.
`
`Finally, Petitioner contends that we improperly distinguished Reckitt
`
`and overlooked the holding in PowerOasis. See Req. Reh’g 8–9 (citing
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed.
`
`Cir. 2008); Reckitt Benckiser LLC v. Ansell Healthcare Products LLC,
`
`IPR2017-00063, Paper 38, 12, 14–15 (Jan. 30, 2018) (Final Written
`
`Decision)). These arguments also are unavailing. Petitioner fails to identify
`
`the allegedly overlooked discussion of PowerOasis (see Req. Reh’g 9), and
`
`9
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`IPR2021-01399
`Patent 10,013,605 B1
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`we perceive no such discussion in the Petition. Cf. Pet. 92 (citing
`
`PowerOasis in the context of preemptively addressing discretionary denial
`
`arguments). Once again, we could not have misapprehended or overlooked
`
`arguments and evidence that Petitioner did not present previously.
`
`Moreover, to the degree Petitioner now contends that PowerOasis
`
`demonstrates that our Decision included an error of law, this contention is
`
`not explained sufficiently (see Req. Reh’g 9), and we perceive no such error.
`
`As for Reckitt, Petitioner’s analysis is flawed. See Req. Reh’g 8.
`
`Petitioner contends that we improperly distinguished Reckitt, arguing that
`
`we quoted from its claim construction discussion. See id. at 8–9 (citing
`
`Reckitt, IPR2017-00063, Paper 38 at 12). Petitioner, however, narrowly
`
`focuses on the location of that quote, while ignoring Reckitt’s analysis of
`
`written description, which relied upon the same statements that “[t]he
`
`present invention is predicated on . . . pre-vulcaniz[ation],” for example.
`
`Reckitt, IPR2017-00063, Paper 38 at 14–15 (cited by Decision 19). But,
`
`even if Petitioner was correct, this still would not show an abuse of
`
`discretion because, as explained previously, “Reckitt is a non-precedential
`
`Board decision, which is not binding on this panel.” Dec. 19.
`
`In sum, Petitioner merely disagrees with our written description
`
`analysis of the device limitations and argues that we should have reached a
`
`different result. It is well-settled that mere disagreement with our analysis or
`
`conclusion is not a proper basis for requesting rehearing. It is not an abuse
`
`of discretion to have reached a conclusion with which Petitioner disagrees.
`
`See, e.g., EMC Corp. v. PersonalWeb Techs., LLC, IPR2013-00085,
`
`Paper 29 at 4 (PTAB June 5, 2013) (“EMC Corp.”) (stating the same).
`
`10
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`IPR2021-01399
`Patent 10,013,605 B1
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`B. The “Different Electronic Format” Limitations
`
`Petitioner contends that we overlooked that paragraph 65 of the ’974
`
`Application discloses that the server receives an image from the customer
`
`computer in an “original format” which is different from the bi-tonal TIFF
`
`format. See Req. Reh’g 2–3 (citing Dec. 26–27; Ex. 1042 ¶ 65; Hologic,
`
`Inc. v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed Cir. 2018)), 9–10
`
`(citing Ex. 1042 ¶ 65). Petitioner contends that the written description
`
`analysis in the Decision “overlooked this disclosure when it relied on the
`
`same paragraph from the ’974 application to conclude that ‘the ’974
`
`Application discloses reducing system development costs by requiring
`
`customers to send in (i.e., transmit) images in bi-tonal TIFF format,
`
`which is required by Check 21 legislation.’” Id. at 10 (quoting Dec. 26–27).
`
`Petitioner contends that had we considered the conflicting disclosures of
`
`paragraph 65 of the ’974 Application, we would have concluded that
`
`the ’974 Application does not provide written description support for the
`
`“different electronic format” limitations. See id. at 10–11.
`
`Petitioner, however, does not squarely address that our factual
`
`findings regarding the “different electronic format” limitations were based
`
`on the disclosures in paragraph 65 of the ’974 Application together with the
`
`disclosures in paragraphs 59 and 69 and Figure 5 of the ’974 Application.
`
`Petitioner’s analysis only focuses on the disclosure of paragraph 65. As
`
`explained in the Decision,
`
`The ’974 Application discloses: (1) a customer-controlled
`computer (such as a laptop) that has image capture device
`control software and/or image edit software; (2) it can be useful
`to include a mechanism for converting images from a first
`format to a second bi-tonal TIFF format required by Check 21
`legislation; and (3) it may be cost effective to require customers
`to send in only images of specified formats to lower
`
`11
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`IPR2021-01399
`Patent 10,013,605 B1
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`development costs of the system. See Ex. 1042 ¶¶ 59, 65, 69,
`Fig. 5. Therefore . . . the ’974 Application discloses reducing
`system development costs by requiring customers to send in
`(i.e., transmit) images in bi-tonal TIFF format, which is
`required by Check 21 legislation, by first using the customer-
`controlled computer to convert a check image from a first
`format to the second bi-tonal TIFF format prior to sending (i.e.,
`transmitting) the image to the server.
`
`Dec. 26–27. Petitioner’s arguments appear to be an attempt to challenge our
`
`findings that the disclosures of paragraphs 59, 65, and 69 and Figure 5 of
`
`the ’974 Application together, as a whole, provide sufficient written
`
`description support for the “different electronic format” limitations. As
`
`explained above, mere disagreement with our analysis or conclusion is not a
`
`proper basis for requesting rehearing. It is not an abuse of discretion to have
`
`reached a conclusion with which Petitioner disagrees. See, e.g., EMC Corp.,
`
`Paper 29 at 4.
`
`V. CONCLUSION
`
`For the foregoing reasons, Petitioner does not demonstrate that we
`
`misapprehended or overlooked arguments or evidence presented in the
`
`Petition or that we abused our discretion in rendering our Decision Denying
`
`Institution of Inter Partes Review.
`
`VI. ORDER
`
`Accordingly, it is hereby ORDERED that Petitioner’s Request for
`
`Rehearing is denied.
`
`
`
`
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`12
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`IPR2021-01399
`Patent 10,013,605 B1
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`PETITIONER:
`
`Monica Grewal
`David Cavanaugh
`R. Gregory Israelsen
`Jonathan P. Knight
`Scott Bertulli
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`monica.grewal@wilmerhale.com
`david.cavanaugh@wilmerhale.com
`greg.israelsen@wilmerhale.com
`jonathan.knight@wilmerhale.com
`scott.bertulli@wilmerhale.com
`
`
`PATENT OWNER:
`
`Anthony Q. Rowles
`Michael R. Fleming
`IRELL & MANELLA LLP
`trowles@irell.com
`mfleming@irell.com
`
`
`
`13
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`