United Services Automobile Association v. Pnc Bank N.a.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
UNITED SERVICES AUTOMOBILE ASSOCIATION,
Appellant
v.
PNC BANK N.A.,
Appellee
______________________
2023-2124, 2023-2125
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2021-
01070, IPR2021-01073.
______________________
Decided: February 3, 2025
______________________
WILLIAM M. J AY , Goodwin Procter LLP, Washington,
DC, argued for appellant. Also represented by
ROHINIYURIE T ASHIMA; L ISA G LASSER , STEPHEN P AYNE,
ANTHONY ROWLES , Irell & Manella LLP, Newport Beach,
CA; J ASON SHEASBY , Los Angeles, CA.
G REGORY H. L ANTIER , Wilmer Cutler Pickering Hale
and Dorr LLP, Washington, DC, argued for appellee. Also
represented by D AVID L ANGDON CAVANAUGH , R ONALD
Case: 23-2124 Document: 55 Page: 1 Filed: 02/03/2025

-- 1 of 8 --

UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 2
G REGORY I SRAELSEN; ANDREW J. DANFORD, MARK
CHRISTOPHER F LEMING, MONICA G REWAL , Boston, MA.
______________________
Before D YK, P ROST , and CUNNINGHAM , Circuit Judges.
P ROST , Circuit Judge.
United Services Automobile Association (“USAA”) ap-
peals two final written decisions of the Patent Trial and
Appeal Board (“Board”) in inter partes reviews (“IPR”) de-
termining claims 1–6, 9, 10, 12, and 13 of U.S. Patent
No. 8,977,571 (“the ’571 patent”) and claims 1, 2, 7–10, and
15–17 of U.S. Patent No. 8,699,779 (“the ’779 patent”) are
unpatentable. For the following reasons, we affirm.
BACKGROUND
PNC Bank, N.A. (“PNC”) petitioned for IPR of claims
1–6, 9, 10, 12, and 13 of the ’571 patent. PNC Bank, N.A.
v. United Servs. Auto. Ass’n, No. IPR2021-01073, 2023 WL
317521 (P.T.A.B. Jan. 19, 2023) (“IPR2021-01073”). The
’571 patent describes a system and method for monitoring
a check image for mobile deposit such that “[w]hen the im-
age of the check in the field of view passes monitoring cri-
teria, an image may be taken by the camera and provided
from the mobile device to a financial institution.” ’571 pa-
tent col. 1 ll. 43–46. In its final written decision, the Board
determined that all challenged claims of the ’571 patent
are unpatentable as obvious over four prior art references.
IPR2021-01073, 2023 WL 317521, at *36–37.
PNC also petitioned for IPR of claims 1, 2, 7–10, and
15–17 of the ’779 patent. PNC Bank, N.A. v. United Servs.
Auto. Ass’n, No. IPR2021-01070, 2023 WL 316806
(P.T.A.B. Jan. 19, 2023) (“IPR2021-01070”). The ’779 pa-
tent describes a system and method for the alignment of a
check during mobile deposit, which includes the use of “[a]n
alignment guide . . . in the field of view of a camera associ-
ated with a mobile device used to capture an image of a
Case: 23-2124 Document: 55 Page: 2 Filed: 02/03/2025

-- 2 of 8 --

UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 3
check.” ’779 patent col. 1 ll. 40–42. “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.” Id. at col. 1 ll. 42–
45. In its final written decision, the Board determined that
all challenged claims of the ’779 patent are unpatentable
as obvious over prior art references Acharya1 and Luo.2
IPR2021-01070, 2023 WL 316806, at *24.
USAA timely appealed, and we have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
USAA makes two principal arguments on appeal:
(1) the Board erred by issuing conflicting IPR decisions
without providing a rational explanation, and (2) a skilled
artisan would not have been motivated to combine Acharya
and Luo.3 We reject both arguments.
“We review the Board’s factual findings for substantial
evidence and its legal conclusions without deference.” Ken-
nametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
1381 (Fed. Cir. 2015) (cleaned up). “[T]he subsidiary obvi-
ousness questions of whether a skilled artisan would be
motivated to combine prior art references and whether a
skilled artisan had a reasonable expectation of success in
1 U.S. Patent No. 8,768,836 (“Acharya”), J.A. 1738–
52. 2 Chinese Patent App. Pub. No. CN 1897644A
(“Luo”), J.A. 1753–84.
3 USAA’s arguments apply to both the ’571 patent
and the ’779 patent. The relevant sections of the IPRs are
almost identical. Compare IPR2021-01073, 2023 WL
317521, at *12–24 with IPR2021-01070, 2023 WL 316806,
at *10–22. While we discuss and cite to the ’571 patent and
the corresponding IPR, the analysis applies equally with
respect to the ’779 patent and associated IPR.
Case: 23-2124 Document: 55 Page: 3 Filed: 02/03/2025

-- 3 of 8 --

UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 4
making such a combination are factual, and we review
them for substantial evidence.” Schwendimann v. Neenah,
Inc., 82 F.4th 1371, 1380 (Fed. Cir. 2023).
I
We first address USAA’s argument that the Board
erred in issuing inconsistent IPR decisions without ra-
tional explanation. USAA contends that a prior-art combi-
nation in a different IPR proceeding (“Wells Fargo IPR”)4
“was in substance the same as PNC’s: a reference disclos-
ing mobile remote check deposit with manual capture . . .
and a reference disclosing either manual or automatic cap-
ture of the image of a business card when it satisfied an
alignment guide.” Appellant’s Br. 33. Because the Wells
Fargo IPR panel found that a skilled artisan would not
have been motivated to combine the prior art presented,
USAA argues that the Board should have found likewise
here, that a skilled artisan would not have been motivated
to combine the “functionally identical prior art” Acharya
and Luo. USAA also relies heavily on Vicor to argue that
the Board erred in reaching its inconsistent decisions with-
out providing a rational explanation. See Vicor Corp. v.
SynQor, Inc., 869 F.3d 1309, 1323 (Fed. Cir. 2017) (“Be-
cause the Board did not provide any reasoned explanation
for the inconsistent result across the two reexaminations,
we vacate and remand the Board’s decision.”).
4 We refer to Wells Fargo’s IPR challenging the
’571 patent as the “Wells Fargo IPR.” Wells Fargo Bank,
N.A. v. United Servs. Auto. Ass’n, No. IPR2019-01082, 2019
WL 6826497 (P.T.A.B. Dec. 13, 2019). Wells Fargo also
brought an IPR, involving similar arguments, against the
’779 patent. See Wells Fargo Bank, N.A. v. United Servs.
Auto. Ass’n, No. IPR2019-01083, 2020 WL 6938004
(P.T.A.B. Nov. 24, 2020).
Case: 23-2124 Document: 55 Page: 4 Filed: 02/03/2025

-- 4 of 8 --

UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 5
PNC responds that “[t]his case is completely different
from cases like Vicor, ‘where a panel simultaneously is-
sue[d] opinions on the same technical issue between the
same parties on the same record, and reache[d] opposite
results without explanation.’” Appellee’s Br. 43 (quoting
Vicor, 869 F.3d at 1322) (cleaned up). Unlike Vicor, PNC
contends that the “Board’s decisions here and in [the] Wells
Fargo [IPR] assessed different motivations to combine dif-
ferent references asserted by a different party on a differ-
ent record.” Id. (cleaned up). And, according to PNC, if a
“direct conflict” between the Board’s decision and the Wells
Fargo IPR decision existed (which PNC denies), “affir-
mance is still warranted as long as the Board ‘at least pro-
vide[d] some reasoned basis for its opposite holdings,’”
which the Board here did. Id. at 44 (quoting Vicor,
869 F.3d at 1323).
In the Board’s decision denying USAA’s request for re-
hearing, the Board addressed USAA’s argument that the
Board failed to justify its departure from the Wells Fargo
IPR panel’s findings. The Board “not[ed] that the Wells
Fargo [IPR] panel’s findings were based on the particular
technical features of prior art references not asserted in
this proceeding.” J.A. 161. And in its final written deci-
sion, the Board found that the Wells Fargo IPR “panel de-
termined that adding pre-capture monitoring and auto-
capturing features on Nepomniachtchi’s[5] mobile device
(per the teachings of Yoon[6]) would not have decreased
computational burden on the mobile device, because
Nepomniachtchi teaches correcting skew at the server, not
the mobile device.” IPR2021-01073, 2023 WL 317521,
at *20. The Board here did “not understand the Wells
5 U.S. Patent No. 7,778,457 (“Nepomniachtchi”),
J.A. 4428–64.
6 U.S. Patent App. Pub. No. 2007/0262148 (“Yoon”),
J.A. 4313–20.
Case: 23-2124 Document: 55 Page: 5 Filed: 02/03/2025

-- 5 of 8 --

UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 6
Fargo IPR panel to have made general findings of teach-
ings away that would be applicable to prior art references
[Acharya and Luo] not asserted in that proceeding.” Id.
Additionally, in the Wells Fargo IPR, the “panel found that
[p]atent [o]wner’s evidence undermined the petitioner’s ar-
gument on the particular facts of that proceeding, includ-
ing the particular technical features of prior art references
not asserted here.” Id. Thus, the Board concluded that
“the Wells Fargo IPR panel’s findings [we]re of marginal
relevance here.” Id.
In its request for rehearing decision, the Board distin-
guished the Wells Fargo IPR panel’s findings from its find-
ings in IPR2021-01070 and IPR2021-01073. “The Wells
Fargo [IPR] panel found that the petitioner’s admission
that Nepomniachtchi’s skew correction algorithm was com-
putationally intensive was one factor undermining the pe-
titioner’s reduced computational burden theory.” J.A. 161.
And though the Board found that the Wells Fargo IPR “pe-
titioner had failed to persuasively support its theory of re-
duced computational burden and, therefore, did not meet
its burden,” such “arguments and evidence particular to
the Wells Fargo IPR and the findings based on those argu-
ments and evidence are not general findings of teachings
away that would be applicable to other prior art references,
such as Acharya and Luo.” J.A. 161–62.
We agree with the Board and thus reject USAA’s argu-
ment that the Board erred in issuing inconsistent IPR de-
cisions without rational explanation.
II
Next, we consider USAA’s argument that a skilled ar-
tisan would not have been motivated to combine Acharya
and Luo. USAA argues that “an on-screen alignment guide
. . . and add[ed] autocapture would increase computational
burden, capture aligned images that could not be depos-
ited, and fail to capture non-aligned images that could be
deposited.” Appellant’s Br. 51 (emphasis omitted). USAA
Case: 23-2124 Document: 55 Page: 6 Filed: 02/03/2025

-- 6 of 8 --

UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 7
contends, based on PNC’s expert testimony (from a district
court proceeding), that “a skilled artisan would not have
viewed alignment as sufficient to ensure a usable check im-
age; instead, identifying the correct ‘monitoring criteria’
and ‘appropriate ranges’ would have been ‘extremely diffi-
cult.’” Appellant’s Br. 54 (quoting J.A. 5850–51). And, ac-
cording to USAA, “[g]iven how the proposed combination
would have led to both overinclusive and underinclusive
image capturing, a skilled artisan would not have been mo-
tivated to combine Acharya and Luo.” Appellant’s Br. 61.
Here, the Board found PNC’s evidence of obviousness
to be “particularly strong and straightforward.” IPR2021-
01073, 2023 WL 317521, at *12–24. The Board found “the
benefits of Luo’s alignment guide and automatic capture to
document capture, such as in Acharya, are not uncertain
and, instead, are straightforward and expressly stated in
Luo.” Id. at *24. The Board also found that “Luo expressly
teaches automatic capture used in conjunction with refer-
ence lines, and describes the combined solution as one tech-
nique to reduce projective distortion in a captured image,
resulting in more accurate optical character recognition.”
Id. at *23. The Board determined that “even if the evidence
suggested that manual capture had advantages over auto-
matic capture (it does not), ‘just because better alternatives
exist in the prior art does not mean that an inferior combi-
nation is inapt for obviousness purposes.’” Id. (quoting In
re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012)). Addition-
ally, the Board noted that the expert testimony that USAA
relied upon was about enablement, not obviousness. The
Board found “little, if any, relevance by the testimony of a
person who is not a witness in [its] proceeding regarding
an issue that [was] not present in [its] proceeding.” Id.
at *28.
Thus, substantial evidence supports the Board’s find-
ings that a skilled artisan would have been motivated to
combine Acharya and Luo.
Case: 23-2124 Document: 55 Page: 7 Filed: 02/03/2025

-- 7 of 8 --

UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 8
CONCLUSION
We have considered USAA’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we af-
firm the Board’s determination that claims 1–6, 9, 10, 12,
and 13 of the ’571 patent and claims 1, 2, 7–10, and 15–17
of the ’779 patent are unpatentable.
AFFIRMED
Case: 23-2124 Document: 55 Page: 8 Filed: 02/03/2025

-- 8 of 8 --