Trials@uspto.gov
`571-272-7822
`
`
` Paper 26
`
`Entered: January 13, 2023
`
`
`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.
`____________
`
`IPR2022-00050
`Patent 10,402,638 B1
`____________
`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, TERRENCE W. McMILLIN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing of
`Decision Denying Institution
`37 C.F.R. § 42.71(d)
`
`
`
`

`

`IPR2022-00050
`Patent 10,402,638 B1
`
`
`I. INTRODUCTION
`On June 10, 2022, Petitioner, PNC Bank N.A. (“Petitioner”), filed the
`following: (1) a Request for Rehearing under 37 C.F.R. § 42.71(d) (Paper 23
`(“Req. Reh’g”)); and (2) a request for review by the precedential opinion
`panel (Ex. 3001 (“POP Request”)). On December 6, 2022, the POP Request
`was denied. Paper 25.
`The Request for Rehearing seeks reconsideration of our Decision
`Denying Institution of Inter Partes Review (“IPR”) with respect to claims 1–
`30 of U.S. Patent No. 10,402,638 B1 (Ex. 1001, “the ’638 patent”), in which
`we determined that Petitioner did not demonstrate that Oakes-I, 1 Oakes-II,2
`Medina, 3 and Roach, 4 applied in the three asserted grounds of
`unpatentability presented in the Petition, qualify as prior art to the
`challenged claims of the ’638 patent (Paper 22, “Decision” or “Dec.”).
`More specifically, Petitioner contends that we misapprehended the legal
`standard for written description when determining that the ultimate
`predecessor application of the ’638 patent (i.e., U.S. Patent Application No.
`11,590,974 (Ex. 1007, “the ’974 application”)) provided sufficient written
`description support for the following limitations: (1) “customer’s handheld
`mobile device” and “digital camera” (“the device limitations”); and (2) “the
`
`
`1 U.S. Patent No. 8,708,227 B1, filed Oct. 31, 2006, issued April 29, 2014
`(Ex. 1003).
`2 U.S. Patent No. 7,873,200 B1, filed Oct. 31, 2006, issued Jan. 18, 2011
`(Ex. 1004).
`3 U.S. Patent No. 9,129,340 B1, filed Dec. 30, 2010, issued Sept. 8, 2015
`(Ex. 1005).
`4U.S. Patent Application Publication No. 2013/0155474 A1, filed Feb. 19,
`2013, published June 20, 2013 (Ex. 1006).
`2
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`IPR2022-00050
`Patent 10,402,638 B1
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`system being configured to check for errors before the submitting is
`performed by the customer’s handheld device” (“the ‘checking for errors’
`limitation”). Req. Reh’g 5–14. According to Petitioner, if we had not
`misapprehended the legal standard for written description, we would have
`concluded that the information presented in the Petition established that
`Petitioner was reasonably likely to prevail in challenging any one of claims
`1–30 of the ’638 patent. See id. at 3, 14.
`As we explain below, we have considered the arguments presented by
`Petitioner in its Request for Rehearing. We, however, maintain our initial
`determination that Petitioner did not demonstrate that the ’974 application
`fails to provide written description support for: (1) the device limitations
`and (2) the “checking for errors” limitation. As a result, we determine that
`Petitioner has not demonstrated that Oakes-I, Oakes-II, Medina, and Roach
`qualify as prior art to the challenged claims of the ’638 patent and, therefore,
`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 we misapprehended or overlooked, and the place
`where each matter was addressed previously in a motion, an opposition, or a
`reply. 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; or (4) involves a record that contains no evidence on which the
`Board could rationally base its decision.” Redline Detection, LLC v. Star
`
`3
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`IPR2022-00050
`Patent 10,402,638 B1
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`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)).
`With this in mind, we address Petitioner’s arguments.
`III. BACKGROUND
`In the Petition, Petitioner contends that (1) claims 23–25 and 28–30 of
`the ’638 patent are unpatentable under § 103 as obvious over the combined
`teachings of Oakes-I and Oakes-II; (2) claims 23–25 of the ’638 patent are
`unpatentable under § 103 as obvious over the combined teachings of Oakes-
`I, Oakes-II, and Medina; and (3) claims 1–22, 26, and 27 of the ’638 patent
`are unpatentable under § 103 as obvious over the combined teachings of
`Oakes-I, Oakes-II, Medina, and Roach. Pet. 5, 32–100. Petitioner argues
`that each of Oakes-I, Oakes-II, Medina, and Roach qualifies as prior art
`because the challenged claims of the ’638 patent are not entitled to a priority
`date earlier than July 28, 2017. Id. at 4–5, 11–29. To support its priority
`argument, Petitioner asserts that the ’974 application does not provide
`sufficient written description support for the following limitations: (1) the
`device limitations and (2) the “checking for errors” limitation. Id. at 13–26.
`The application that issued as the ’638 patent was filed on October 19,
`2018. Ex. 1001, code (22). The ’638 patent claims priority through a series
`of continuation applications to the ’974 application filed on October 31,
`2006. Ex. 1001, code (63), 1:6–18. Oakes-I is a U.S. patent that issued
`from the ’974 application and has the same specification as the ’638 patent. 5
`
`
`5 There does not appear to be a dispute between the parties that the
`specification of the ’638 patent is identical substantively to the specifications
`of Oakes-I and the ’974 application. Pet. 29 (“Oakes-I issued from the ’974
`4
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`IPR2022-00050
`Patent 10,402,638 B1
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`Ex. 1003, codes (21), (22); see also Pet. 29. Oakes-II also issued from an
`application filed on October 31, 2006. Ex. 1004, code (22). Medina issued
`from an application filed on December 30, 2010 (Ex. 1005, code (22)) and
`Roach issued from an application filed on February 19, 2013 (Ex. 1006,
`code (22)). On their faces, Oakes-I, Oakes-II, Medina, and Roach qualify as
`prior art to the challenged claims of the ’638 patent only if the challenged
`claims are not entitled to claim priority to the ’974 application. See Pet. 4–5.
`In the Decision, we did not agree with Petitioner’s priority arguments.
`See Dec. 16–36. 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. 6 Id. at 23. We then explained
`that Petitioner had not shown that the breadth of the claims that include the
`device limitations resulted in a lack of written description support. Id. at 23–
`27. 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
`
`
`Application, and shares the specification and figures with the ’638 patent.”);
`Paper 12 (Patent Owner Preliminary Response), 26 n.5.
`6 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir.
`2015) (“This court has repeatedly ‘cautioned against limiting the claimed
`invention to preferred embodiments or specific examples in the
`specification.’” (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
`1313, 1328 (Fed. Cir. 2002))); see also Phillips v. AWH Corp., 415 F.3d
`1303, 1323 (Fed. Cir. 2005 (en banc)) (“[C]laims may embrace ‘different
`subject matter than is illustrated in the specific embodiments in the
`specification.’”) (citations and internal quotation marks omitted).
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`IPR2022-00050
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`
`the invention is that the image capture device and general
`purpose computer are communicatively coupled, not their
`relative location. Moreover, 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. . . . [W]e find that a person of ordinary skill in the art
`would have understood the ’974 application to describe an
`invention that is agnostic to whether the mobile device and image
`capture device are separate or integrated.
`Id. at 24–25 (citations and footnote omitted) (emphases added); see also id.
`at 24 (“[T]he 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 “checking for errors” limitation, we made the
`following factual finding: “By providing instructions to the customer to
`approve the image and/or modify the image to meet certain criteria, the
`system performs error checking at the customer’s general purpose computer
`prior to delivering the image to the financial institution electronics (i.e., the
`server).” Dec. 28–29 (citing Ex. 1007 ¶¶ 9, 74, 76–78). Based on this
`factual finding, we determined that “the ’9[74] application describes error
`checking at the customer’s computer.” Id. at 30.
`IV. ANALYSIS
`We have considered each of Petitioner’s arguments, but they do not
`reveal that we misapprehended or overlooked any matter in rendering our
`Decision, or that we abused our discretion in not instituting an inter partes
`review of claims 1–30 of the ’638 patent. We begin by addressing
`Petitioner’s arguments directed to the device limitations, then we turn to
`Petitioner’s argument directed to the “checking for errors” limitations.
`
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`IPR2022-00050
`Patent 10,402,638 B1
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`A. The Device Limitations
`First, 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, 5–6 (citing Dec. 24–25; D Three
`Enters., LLC v. SunModo Corp., 890 F.3d 1042, 1050 (Fed. Cir. 2018);
`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 cited portion of the Decision, 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 Dec. 25–26 (explaining that Petitioner contends the device
`limitations represent “a broad genus of a mobile device that can work with
`either a separate or an integrated digital camera.”). In so doing, we found
`that “a person of ordinary skill in the art would readily recognize the single
`non-enumerated species from the ’974 application—indeed, as Patent Owner
`notes, ‘one would only need to think of the only other configuration of
`mobile device in the market.’” Id. at 26 (citing Paper 12 (Preliminary
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`Response), 47). Petitioner does not allege error in this finding, and this
`finding, by itself, is sufficient to support our conclusion. 7
`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
`(quoting Dec. 24–25). In context, 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 Dec. 24–25. The relevant passage of our Decision
`stated:
`According to Petitioner, the device limitation is “a broad genus
`of a mobile device that can work with either a separate or an
`integrated digital camera.” Id. at 24. Petitioner acknowledges
`that the ’974 application discloses the former (see id. at 22–23),
`and we find that to be representative of both alternatives, given
`the ’9[74] application’s disclosure, as discussed above. See, e.g.,
`Ex. 1007 ¶¶ 8–9, 19, 29, 33–34, 49–50, Figs. 1–3. We also find
`that a person of ordinary skill in the art would readily recognize
`the single non-enumerated species from the ’974 application—
`indeed, as Patent Owner notes, “one would only need to think of
`the only other configuration of mobile device in the market.”
`Prelim. Resp. 47. Further, there is no evidence that the other,
`non-enumerated species was in any way unpredictable.
`Id. at 26. Thus, we considered “the general predictability of the electrical
`arts further supports our finding that disclosure of one of the two species
`
`
`7 Petitioner states that we speculated “that the inventors had possession of a
`mobile device with an integrated camera.” Req. Reh’g 5. Not so. We
`simply disagreed with Petitioner’s argument that the ’974 application fails to
`show possession of the claimed inventions, which instead recite a
`“customer’s handheld mobile device” and “digital camera.” Ex. 1001,
`15:20–61 (claim 1), 17:9–55 (claim 23), 18:20–52 (claim 28).
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`sufficiently discloses the genus on these particular facts.” Id.; see also
`Bilstad v. 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 disclosure of more species is necessary to adequately show possession
`of the 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.
`Second, Petitioner contends that our reasoning conflicted with two
`prior Board decisions. Req. Reh’g 5–7 (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, 29 (PTAB May
`29, 2020) (Final Written Decision)). Neither of these two decisions was
`cited in the Petition so we could not have misapprehended or overlooked
`arguments that Petitioner never presented or explained in the first instance.
`Moreover, these two decisions are non-precedential, so to the extent
`Petitioner alleges that we abused our discretion by failing to analyze or
`properly follow binding precedent, we disagree.
`Finally, Petitioner contends that we improperly distinguished Reckitt
`and overlooked the holding in PowerOasis. Req. Reh’g 8–9 (citing
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir.
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`2008); Reckitt Benckiser LLC v. Ansell Healthcare Products LLC, IPR2017-
`00063, Paper 38, 12, 14–5 (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 8–9), and we
`perceive no such discussion in the Petition. Cf. Pet. 101 (citing PowerOasis
`in the context of preemptively addressing discretionary denial arguments).
`Once again, we could not have misapprehended or overlooked arguments
`that Petitioner never presented or explained in the first instance. 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 8–9), and we perceive no such error.
`As for Reckitt, Petitioner’s analysis is flawed. See Req. Reh’g 8–9.
`Petitioner contends that we improperly distinguished Reckitt, arguing that
`we quoted from its claim construction discussion. Id. at 8 (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 found the claims lacked written description because they
`lacked a pre-vulcanization requirement even though Rickett’s “present
`invention is predicated on . . . pre-vulcaniz[ation].” Reckitt, IPR2017-
`00063, Paper 38 at 14–15 (cited by Dec. 23–24). But, even if Petitioner
`were correct, this still would not show an abuse of discretion because, as we
`explained, “Reckitt is a non-precedential Board decision that is not binding
`on this panel.” Dec. 23.
`At bottom, 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
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`conclusion is not a proper basis for requesting rehearing. It is not an abuse
`of discretion to have made 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).
`B. The “Checking for Errors” Limitation
`According to Petitioner, “the only disclosure in the ’974 application of
`the system being configured to check for errors . . . only describes a server
`performing error-checking after receiving a check image submitted by the
`customer’s device, and could not have provided written description support
`for the [sic] ‘the system being configured to check for errors before the
`submitting is performed by the customer’s handheld mobile device.’” Req.
`Reh’g 14 (citing Ex. 1007 ¶ 61). Petitioner also argues that “the
`’974 application’s disclosures . . . clearly describe that the customer checks
`for errors, not the system as required by the claims.” Id. at 13.
`Petitioner’s argument is both self-contradictory and contrary to the
`arguments presented and developed in the Petition. As noted, Petitioner
`contends that the ’974 application “only describes a server performing error-
`checking” (Req. Reh’g 14) and Petitioner also contends, in contradiction,
`that the ’974 application “clearly describe[s] that the customer checks for
`errors” (id. at 13). And, in making this argument, Petitioner contradicts the
`contention in the Petition that “[t]he ’974 Application consistently describes
`error-checking as being performed solely by a server.” Pet. 26. This was
`the sole basis asserted in the Petition to support Petitioner’s allegation that
`the “checking for errors” limitation was not supported by the ’974
`application. See Pet. 26–27. The Decision stated, “we do not agree with
`Petitioner’s argument because it is based on the false premise that all error
`
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`checking described in the ’974 application is done at the financial
`institution’s server.” Dec. 30. Petitioner’s argument in the Request for
`Rehearing does not persuasively establish that this statement in the Decision
`was made in error.
`Petitioner also acknowledges that paragraphs 9 and 76–78 of the
`’974 application were relied upon “as evidence that there was written
`description for performing error checking at the customer’s device.” Req.
`Reh’g 13. Petitioner, however, does not address squarely our factual finding
`in the Decision that “by providing instructions to the customer to approve
`the image and/or modify the image to meet certain criteria, the system
`performs error checking at the customer’s general purpose computer prior to
`delivering the image to the financial institution electronics (i.e., the server).”
`Dec. 28–29. Based on paragraphs 9 and 76–78 of the ’974 application, we
`found that “the ’9[74] application describes error checking at the customer’s
`computer.” Id. at 30.
`This argument is nothing more than a thinly veiled attempt to
`challenge our finding that the ’974 application provides sufficient written
`description support for the “checking for errors” limitation. As we explain
`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 made
`a conclusion with which Petitioner disagrees. See, e.g., EMC Corp.,
`Paper 29 at 4.
`
`V. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we
`misapprehended or overlooked any matter in rendering the Decision, or we
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`abused our discretion in not instituting an inter partes review of claims 1–30
`of the ’638 patent.
`
`VI. ORDER
`Accordingly, it is hereby ORDERED that Petitioner’s Request for
`Rehearing is denied.
`
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`IPR2022-00050
`Patent 10,402,638 B1
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`For 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
`
`For PATENT OWNER:
`
`Anthony Q. Rowles
`Michael R. Fleming
`IRELL & MANELLA LLP
`trowles@irell.com
`mfleming@irell.com
`
`
`
`14
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