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N OTE: This disposition is nonprecedential.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
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2023-1920
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
01077.
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Decided: January 30, 2025
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D AVID Z IMMER, Goodwin Procter LLP, Boston, MA, ar-
gued for appellant. Also represented by WILLIAM M. J AY ,
ROHINIYURIE T ASHIMA, Washington, DC; L ISA G LASSER ,
STEPHEN P AYNE, ANTHONY R OWLES , Irell & Manella LLP,
Newport Beach, CA; JASON SHEASBY , Los Angeles, CA.
ANDREW J. D ANFORD, Wilmer Cutler Pickering Hale
and Dorr LLP, Boston, MA, argued for appellee. Also rep-
resented by MARK CHRISTOPHER F LEMING, M ONICA
Case: 23-1920 Document: 47 Page: 1 Filed: 01/30/2025

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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 2
G REWAL ; D AVID L ANGDON CAVANAUGH , R ONALD G REGORY
I SRAELSEN, G REGORY H. L ANTIER, Washington, DC.
______________________
Before D YK, P ROST , and CUNNINGHAM , Circuit Judges.
P ROST , Circuit Judge.
United Services Automobile Association (“USAA”) ap-
peals a final written decision of the Patent Trial and Ap-
peal Board (“Board”) in an inter partes review determining
that all challenged claims of U.S. Patent No. 10,621,559
(“the ’559 patent”) are unpatentable. PNC Bank, N.A. v.
United Servs. Auto. Ass’n, No. IPR2021-01077, 2023 WL
1077305 (P.T.A.B. Jan. 20, 2023) (“Final Written Deci-
sion”). We affirm.
BACKGROUND
The ’559 patent describes a remote check deposit sys-
tem and contemplates “a system, method and computer-
readable medium with computer-executable instructions
for remotely redeeming a negotiable instrument.” ’559 pa-
tent col. 2 ll. 35–38.
In its final written decision, the Board determined that
the challenged claims (i.e., claims 1–18) of the ’559 patent
are unpatentable as obvious over seven prior-art refer-
ences. Final Written Decision, 2023 WL 1077305, at *34.
USAA timely appealed, and we have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
USAA makes two arguments on appeal: (1) a skilled ar-
tisan would not have been motivated to combine prior-art
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 3
references Garcia1 and Randle2 with a reasonable expecta-
tion of success, and (2) the Board erred in its construction
of the “accepting” limitation in claims 1 and 10 of the
’559 patent. 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). “The Board’s ultimate
claim constructions and any underlying determinations
based on intrinsic evidence . . . present a question of law
that we review de novo.” Polaris Innovations Ltd. v. Brent,
48 F.4th 1365, 1372 (Fed. Cir. 2022).
Here, substantial evidence supports the Board’s deter-
minations that a skilled artisan would have been moti-
vated to combine Garcia and Randle with a reasonable
expectation of success. In its analysis, the Board found
that “Garcia describes a method for remotely depositing a
check using a mobile device.” Final Written Decision, 2023
WL 1077305, at *11. The Board then found that “Garcia
suggests implementing its invention using computer equip-
ment at a bank that can [apply optical character recogni-
tion] and store a check image as well as the bank’s
traditional systems for processing checks, and Randle dis-
closes such a system.” Id. at *12. The Board found that
“an ordinarily skilled artisan would have had a reasonable
expectation of success in making the proposed Garcia-
Randle combination,” id., and substantial evidence sup-
ports the Board’s findings.
Next, we consider USAA’s argument that the Board
misconstrued the claim term “accepting” in claims 1 and 10
1 PCT App. No. WO 2005/043857 (“Garcia”),
J.A. 1352–97.
2 U.S. Patent App. Pub. No. 2006/0106717
(“Randle”), J.A. 1398–1422.
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 4
of the ’559 patent. The parties dispute the claim construc-
tion, yet, the Board found in the alternative that even “as-
sum[ing] [USAA]’s understanding of the requirements of
this limitation,” “the Garcia-Randle combination teaches
. . . a second processing circuitry and second memory that
‘accept[s] the digital image for check deposit in place of the
check depicted in the digital image.’” Id. at *18. That find-
ing is supported by substantial evidence.
CONCLUSION
We have considered USAA’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we af-
firm the Board’s determination that all challenged claims
of the ’559 patent are unpatentable.
AFFIRMED
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