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N OTE: This disposition is nonprecedential.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
______________________
2023-2244
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
00075.
______________________
Decided: March 5, 2025
______________________
ANTHONY ROWLES , Irell & Manella LLP, Newport
Beach, CA, argued for appellant. Also represented by
L ISA G LASSER , STEPHEN P AYNE; J ASON SHEASBY , Los
Angeles, CA; WILLIAM M. J AY , ROHINIYURIE T ASHIMA,
Goodwin Procter LLP, Washington, DC.
ANDREW J. D ANFORD, Wilmer Cutler Pickering Hale
and Dorr LLP, Boston, MA, argued for appellee. Also
represented by MARK CHRISTOPHER F LEMING, M ONICA
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 2
G REWAL , AMY L. MAHAN, ALEX N EMTZOW ; D AVID L ANGDON
CAVANAUGH , G REGORY H. L ANTIER, Washington, DC.
______________________
Before D YK, P ROST , and CUNNINGHAM , Circuit Judges.
CUNNINGHAM , Circuit Judge.
United Services Automobile Association (“USAA”)
appeals from a final written decision issued by the Patent
Trial and Appeal Board in an inter partes review of U.S.
Patent No. 9,224,136. PNC Bank N.A. v. United Servs.
Auto. Ass’n, No. IPR2022-00075, Paper 47 (P.T.A.B. June
9, 2023) (“Decision”).1 The Board found all claims of the
’136 patent unpatentable under 35 U.S.C. § 103. Id. at
66–67. For the reasons discussed below, we affirm the
Board’s decision.
I. BACKGROUND
USAA owns the ’136 patent, which is titled “Systems
and Methods for Remote Deposit of Checks.” The patent
was filed on March 20, 2014, and claims a priority date of
October 31, 2006. The patent is generally directed to
remote check deposit technology. ’136 patent col. 2 ll. 40–
43. The patent describes systems for facilitating check
deposit, involving a financial institution server receiving
one or more images of a check and processing the transac-
tion using the images and other information ac-
quired. Id. col. 2 l. 40 to col. 3 l. 10. Claims 1 and 14 are
illustrative and recite:
1 Citations in this opinion are to the version of the
Board’s decision in the Joint Appendix. See J.A. 1–69.
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 3
1. A system comprising:
a processor; and
a memory storing processor-executable in-
structions that, when executed by the pro-
cessor, cause the processor to:
receive an account identification number,
check amount indication, and check im-
age, where the check image is an image of
a check captured by a camera;
perform optical character recognition on
the check image to determine a routing
number for the check image;
validate the routing number for the check
image; and
initiate a check deposit for the check im-
age.
14. A system for processing a check deposit, com-
prising:
a plurality of processors, each having a
memory associated therewith, configured
to execute instructions to:
receive a customer identification of an ac-
count for a deposit;
receive an image of a front side of a check
captured by a camera, wherein the image
of the front side of the check is received
from a remote device;
receive an image of a back side of the
check captured by the camera, from the
remote device;
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 4
process the image of the front side of the
check to obtain deposit information for the
check;
process the image of the back side of the
check to determine whether a mark is pre-
sent on the image of the back side of the
check by:
determining whether a mark is present at
an endorsement location in the image of
the back side of the check without further
performing a signature identification pro-
cedure; and
generate a log file, the log file comprising
at least a portion of the deposit infor-
mation for the check.
Id. col. 14 ll. 9–20, col. 15 l. 5 to col. 16 l. 2.
On November 5, 2021, PNC Bank N.A. (“PNC”) filed
the IPR underlying this appeal, challenging all eighteen
claims of the ’136 patent. J.A. 73; J.A. 104–83. PNC
alleged each of the ’136 patent claims was obvious over
one of seven combinations of prior art references, assert-
ing that: (1) claims 1–3 and 7–9 were obvious over the
combination of Garcia,2 Acharya,3 and Richardson;4
2 International Patent Application Publication
No. WO 2005/043857, (filed Oct. 30, 2003; published May
12, 2005) J.A. 1092–137 (“Garcia”).
3 International Patent Application Publication
No. WO 01/61436 (filed Feb. 16, 2001; published Aug. 23,
2001), J.A. 1138–52 (“Acharya”).
4 U.S. Patent Application Publication
No. 2005/0281450 (filed June 20, 2005; published Dec. 22,
2005), J.A. 1153–82 (“Richardson”).
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 5
(2) claims 5, 11, and 13 were obvious over the combination
of Garcia, Acharya, Richardson, and Randle;5 (3) claims 6
and 12 were obvious over the combination of Garcia,
Acharya, Richardson, and Slater;6 (4) claims 4 and 10
were obvious over the combination of Garcia, Acharya,
Richardson, and Pintsov;7 (5) claims 14–16 were obvious
over the combination of Garcia, Acharya, Richardson,
Randle, and Davis;8 (6) claim 17 was obvious over the
combination of Garcia, Acharya, Richardson, Randle,
Davis, and Pintsov; and (7) claim 18 was obvious over the
combination of Garcia, Acharya, Richardson, Randle,
Davis, and Slater. Decision at 6; J.A. 112–15.
On June 9, 2023, the Board issued a final written de-
cision concluding that PNC had shown by a preponder-
ance of the evidence that all claims of the ’136 patent
were unpatentable as obvious. Decision at 66–67.
USAA timely appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
II. D ISCUSSION
“We review the Board’s legal conclusions de novo and
its fact findings for substantial evidence.” Game & Tech.
5 U.S. Patent Application Publication
No. 2006/0106717 (filed May 15, 2004; published May 18,
2006), J.A. 1214–38 (“Randle”).
6 European Patent Application Publication No.
0984410 (filed July 7, 1999; published Mar. 8, 2000),
PNC, No. IPR2022-00075, Ex. 1006 (“Slater”).
7 U.S. Patent Application Publication No.
2007/0118747 (filed Nov. 18, 2005; published May 24,
2007), PNC, No. IPR2022-00075, Ex. 1007 (“Pintsov”).
8 U.S. Patent Application Publication No.
2005/0216410 (filed Mar. 26, 2004; published Sept. 29,
2005), J.A. 1239–55 (“Davis”).
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 6
Co. v. Wargaming Grp. Ltd., 942 F.3d 1343, 1348 (Fed.
Cir. 2019). “Whether a claimed invention is unpatentable
as obvious is a question of law that is reviewed de novo,
based on underlying findings of fact reviewed for substan-
tial evidence.” Redline Detection, LLC v. Star Envirotech,
Inc., 811 F.3d 435, 449 (Fed. Cir. 2015).
“Substantial evidence means such relevant evidence
as a reasonable mind might accept as adequate to support
a conclusion.” FanDuel, Inc. v. Interactive Games LLC,
966 F.3d 1334, 1343 (Fed. Cir. 2020) (internal quotation
marks and citation omitted). “The substantial evidence
standard . . . involves examination of the record as a
whole, taking into account evidence that both justifies and
detracts from an agency’s decision.” OSI Pharms., LLC v.
Apotex Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019) (internal
quotation marks and citation omitted).
USAA raises two issues on appeal. First, USAA ar-
gues that substantial evidence does not support the
Board’s finding that Randle discloses a negative limita-
tion present in claims 14–18. Appellant’s Br. 21–30.
Second, USAA argues that the Board’s determination that
a person of ordinary skill in the art would have been
motivated to combine Garcia with Richardson is not
supported by substantial evidence. Id. 30–39. We find
both arguments unpersuasive.
A.
USAA argues that the Board erred in finding that
Randle discloses the negative limitation in claims 14–18
based on its misinterpretation of Randle’s disclosure. Id.
21–30. We disagree.
Claim 14 requires “determining whether a mark is
present at an endorsement location in the image of the
back side of the check without further performing a
signature identification procedure.” ’136 patent col. 15
ll. 19–22. Claims 15–18 depend from claim 14 and incor-
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 7
porate this limitation. Id. col. 16 ll. 3–21. The Board
construed this claim limitation to mean “the presence of
the mark is determined by any suitable means without
further performing a procedure (1) to determine the
presence of a signature on the check or (2) to determine
that a signature on a check matches a particular known
signature.” Decision at 12. Neither party contests the
Board’s construction. See Appellant’s Br. 21; Appellee’s
Br. 29.
The Board determined that Randle teaches the limita-
tion at issue. Decision at 59–62. Randle “relates general-
ly to end to end electronic transaction processing.” J.A.
1227 ¶ 2. As part of this process, Randle discloses a
quality assurance procedure which includes a step for
checking whether an endorsement is present. J.A. 1224,
Fig. 9B (disclosing the step of “[e]ndorsement [i]s it there”
at box 124); see also J.A. 1231 ¶ 42; J.A. 1235 ¶ 74. The
Board noted that “Randle makes no mention of determin-
ing whether the endorsement is a signature or looks like a
signature” and that “although Randle discloses verifying
the signature on the front of the check, Randle discloses
checking only for the presence of the endorsement on the
back of the check.” Decision at 61; see J.A. 1224, Fig. 9B
(disclosing the step of “[s]ignature [c]heck [i]s it [t]here” at
box 122 and “[s]ignature [v]alidation [c]ompare to that on
file” at box 123); J.A. 1235 ¶ 74. The Board also credited
the testimony of Dr. Brian Noble, PNC’s expert, that a
skilled artisan would understand that Randle’s endorse-
ment checking process did not involve performing signa-
ture identification on the endorsement location. See
Decision at 61 (citing PNC, No. IPR2022-00075, Ex. 1025
at 33–34 ¶ 46 (P.T.A.B. Jan. 17, 2023)); see also J.A.
1063–67 ¶¶ 199–203; J.A. 1846–47 ¶¶ 42–43.
USAA argues that the Board relied on Randle’s “si-
lence” with respect to its endorsement checking procedure
to find that Randle taught looking for a mark without
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 8
further performing a signature identification procedure.
Appellant’s Br. 24–25. Here too, we disagree.
“Silence is generally not disclosure.” Novartis
Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013,
1017 (Fed. Cir. 2022), cert. denied sub nom. Novartis
Pharms. Corp. v. HEC Pharm Co., 143 S. Ct. 1748 (2023).
However, “a reference need not state a feature’s absence
in order to disclose a negative limitation.” AC Techs. S.A.
v. Amazon.com, Inc., 912 F.3d 1358, 1367 (Fed. Cir. 2019).
In determining what a prior art reference discloses, we
look to what a skilled artisan would understand from
reading the reference, which includes the internal context
within the reference. See Almirall, LLC v. Amneal
Pharms. LLC, 28 F.4th 265, 273 (Fed. Cir. 2022) (“[I]t was
reasonable for the Board to find that, in the context of [a
prior art reference], a skilled artisan would recognize that
the reference discloses a complete formulation—excluding
the possibility of an additional active ingredient.”).
Here, the Board relied on such context, as well as
Dr. Noble’s testimony on how a skilled artisan would
interpret Randle in light of that context. As the Board
explained, “Randle explicitly distinguishes determining
the presence of the check writer’s signature on the front of
the check and verifying that signature from merely check-
ing for the presence of the payee’s endorsement on the
back of the check.” Decision at 61–62. Contrary to
USAA’s assertion, the Board’s conclusion is not founded
solely on Randle’s silence.
Because a check endorsement is usually a signature,
USAA also argues that Randle’s process of checking for an
endorsement is the same as, or at least necessarily in-
cludes, checking for the presence of a signature. See
Appellant’s Br. 22–24. USAA acknowledges that the
category of endorsements is broader than signatures. See
id. at 22 (recognizing that “in certain instances (such as
business checks) a stamp may be used in place of a hand-
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 9
written signature”). As the Board explains, checking for
the presence of an endorsement does not necessitate
checking for the presence of one of its subcategories. See
Decision at 61–62. Accordingly, we agree with the Board
that USAA’s position improperly conflates the terms
endorsement and signature.
For the above reasons, we conclude that substantial
evidence supports the Board’s conclusion that Randle
teaches the negative limitation present in claims 14–18.
B.
USAA challenges the Board’s determination that a
skilled artisan would have been motivated to combine
Garcia and Richardson on two separate bases. First,
USAA argues that the Board failed to consider USAA’s
proffered prior art reference of Dance9 and the associated
arguments. Appellant’s Br. 31–35. Second, USAA con-
tends that the Board incorrectly interpreted Garcia to
disclose using optical character recognition (“OCR”) to
extract data from check images. Appellant’s Br. 35–39.
We disagree with both of USAA’s arguments.
USAA contends that the Board failed to consider its
argument that Dance “taught away from combining a
system that captures images of documents using a mobile
camera . . . with a technique employing optical character
recognition to process the captured images and extract
data.” Appellant’s Br. 31; see id. at 32–35. While the
Board’s decision does not explicitly mention Dance, it
addresses USAA’s argument based on Mitek Sys., Inc. v.
United Servs. Auto. Ass’n, No. IPR2020-01650 (P.T.A.B.
9 U.S. Patent No. 6,922,487 (filed Nov. 2, 2001; is-
sued July 26, 2005), J.A. 4106–23 (“Dance”).
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 10
filed Sept. 18, 2020).10 Decision at 40–41. Because we
conclude that USAA’s Dance argument is the same as its
Mitek argument, we hold that the Board did consider and
address USAA’s Dance argument.
In the Patent Owner Response, USAA stated that the
Board in Mitek “recognized that the prior art taught a
[person of ordinary skill in the art] about ‘the difficulties
with using a digital camera instead of a traditional scan-
ner to capture check images to perform the OCR process’
(citing EX2033, Dance).” J.A. 596–97 (quoting Mitek,
IPR2020-01650, Paper 21, at 26). After acknowledging
differences between the prior art asserted in Mitek and in
the underlying IPR, USAA argued that concerns regard-
ing the “quality of the image” were nevertheless relevant
as they “directly impact[ed] whether a [person of ordinary
skill in the art] would have been motivated to use OCR-
based check processing techniques . . . with images cap-
tured by a mobile device.” J.A. 597 (emphasis omitted).
In support of this assertion, USAA raised the same argu-
ment based on the same section of Dance that it now
identifies on appeal. Compare J.A. 597–98 (citing J.A.
4118 at col. 1 ll. 14–53) with Appellant’s Br. 31–32 (citing
J.A. 4118 at col. 1 ll. 32–53). USAA’s Patent Owner’s
Response demonstrates that the arguments based on
Mitek and Dance are one and the same in the context of
the Board’s final written decision. The Board adequately
addressed the Mitek argument, and USAA does not con-
10 In 2020, Mitek Systems, Inc. filed an IPR on a re-
lated patent, U.S. Patent No. 10,013,681. Mitek,
No. IPR2020-01650, Paper 1 (P.T.A.B. Sept. 18, 2020).
Dance was among the prior art references asserted in the
Mitek petition. Id. at 9. The Board denied institution of
the Mitek IPR. Mitek, No. IPR2020-01650, Paper 21, at
39 (P.T.A.B. Mar. 9, 2021).
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 11
tend otherwise. See Decision at 40–41; see, e.g., Novartis
AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1328 (Fed.
Cir. 2017) (“[F]ailure to explicitly discuss every issue or
every piece of evidence does not alone establish that the
tribunal did not consider it.”). We conclude that the
Board did consider USAA’s Dance argument.
USAA next challenges the Board’s finding of a moti-
vation to combine on the basis that it relies on an incor-
rect interpretation of Garcia. Appellant’s Br. 35–39. The
Board interpreted Garcia as disclosing “a system that
employs a camera on a mobile device and uses OCR of the
[check] image.” Decision at 28; see J.A. 1131 at col. 11
ll. 7–15. The Board found that Richardson teaches “tech-
niques to validate or verify the information obtained from
OCR of the check image including the bank routing num-
ber.” Decision at 33; see J.A. 1167 ¶¶ 39–42. Noting that
“Garcia does not expressly disclose details about how a
check image is recognized, verified and processed,” the
Board agreed with PNC that a skilled artisan “would have
had reason to seek out implementation details, such as
those disclosed by Richardson, concerning the recognition,
verification, and processing of information.” Decision at
22; see also id. at 33–36. Therefore, the Board found that
a skilled artisan would have been motivated to combine
Garcia and Richardson. Id. at 36.
USAA argues that the Board’s conclusion that Garcia
discloses a system where “the content of the check images
are machine read, not input by the customer” is unsup-
ported by the evidence in the record. Appellant’s Br. 35–
36 (quoting Decision at 25, 29); see id. 35–39. We disa-
gree.
In reaching its determination, the Board relied on
Garcia’s description of its “[p]referred embodiment of the
[i]nvention,” which includes steps for “[c]apturing the
digital image of the obverse and the reverse side of the
document,” “[c]apturing the data associated with the
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 12
document, such as the amount and the check number,”
and “[t]ransmitting the digital image and the recognition
data, once encrypted, to the institution that must accept
the document.” J.A. 1129–30 at col. 9 l. 9 to col. 10 l. 18;
see Decision at 28–29. The Board also cited the testimony
of Dr. Charles Creusere, USAA’s expert, which it under-
stood as “acknowledg[ing] that Garcia’s preferred embod-
iment expressly teaches that the content of the check
images [is] machine read with OCR, not input by the
customer.” Decision at 29–30; see J.A. 1934–36 at 155:24–
157:21; J.A. 1936 at 157:15–21 (Q: Okay. And the institu-
tion when it receives that information sent by the user
applies optical character recognition to it, cor-
rect? . . . The Witness: It does say it applies optical
character recognition to -- to the information that is sent
to it.”). At a minimum, the Board presents reasonable
interpretations of Garcia and Dr. Creusere’s testimony.
See Velander v. Garner, 348 F.3d 1359, 1378 (Fed. Cir.
2003) (“[I]t is not for us to second-guess the Board’s as-
sessment of the evidence.”). We conclude that the Board’s
finding that Garcia uses OCR on check images captured
by a mobile camera is supported by substantial evidence.
For the reasons stated, we conclude that substantial
evidence supports the Board’s finding that a skilled
artisan would have been motivated to combine Garcia and
Richardson.
III. CONCLUSION
We have considered USAA’s remaining arguments
and find them unpersuasive. We affirm the Board’s final
written decision finding all eighteen claims of the ’136
patent unpatentable for obviousness.
AFFIRMED
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