IP Law Daily, PATENT—Fed. Cir.: PTAB’s obviousness finding affirmed in check mobile deposit dispute, (Feb 3, 2025)

By Kevin M. Finson

The Board’s obviousness determinations were affirmed because they did not contradict an earlier decision and were supported by substantial evidence.

PNC Bank successfully demonstrated the obviousness of patent claims related to taking photographs of checks using a mobile device, the U.S. Court of Appeals for the Federal Circuit has held. The PTAB’s decision on that issue was not called into question by an earlier opinion which had reached a different conclusion on a different record among different parties (United Services Automobile Association v. PNC Bank N.A., No. 23-2124 (Fed. Cir. Feb. 3, 2025)).

United Services Automobile Association (USAA) was the owner of U.S. Patents Nos. 8,977,571 (the ’571 patent) and 8,699,779 (the ’779 patent), which claimed systems and methods related to the automatic capturing and alignment of check images used in mobile deposits on mobile devices. PNC Bank, N.A. (PNC) petitioned for inter partes review on the ground of obviousness over a collection of prior art references. The Patent Trial and Appeal Board (PTAB) instituted review and found that all of the challenged claims were unpatentable as obvious. USAA appealed.

Inconsistent decisions. USAA argued that the Board erred because its decision was inconsistent with an earlier decision in a inter partes review proceeding brought by Wells Fargo Bank, N.A., in which the PTAB had held that a motivation to combine what USAA argued were substantially the same prior art references had not been shown.

The Federal Circuit found no error in the Board’s reaching different conclusions on different records in proceedings brought by different parties, and noted that the Board had itself already addressed this issue. The court specifically pointed out that its decision in the present proceeding was based on technological features and arguments not raised in the prior proceeding.

Motivation to combine. USAA argued that PNC had failed to show a motivation to combine two prior art references, specifically one which taught an on-screen alignment guide and one which taught an auto-capture function, suggesting that using the two in concert would increase computational burden and would both capture aligned images which were not suitable for deposit, and would fail to capture non-aligned images which were otherwise suitable for deposit. The court reviewed the references and found that one, by its terms, explicitly taught this combination, so there was no error in the Board finding a motivation to combine.

The Federal Circuit affirmed the decisions of the Board.

The Case is Nos. 23-2124, 23-2125.

Judge: Prost, S.

Attorneys: William M. Jay (Goodwin Procter LLP) for United Services Automobile Association. Gregory H. Lantier (Wilmer Cutler Pickering Hale and Dorr LLP) for PNC Bank N.A.

Companies: United Services Automobile Association; PNC Bank N.A.

Cases: Patent FedCirNews USPTO