[00:00:00] Speaker 03:
We have four cases this afternoon.

[00:00:02] Speaker 03:
The first is number 23 1920 United services on a real association versus PNC Bank.

[00:00:09] Speaker 04:
Mr. Zimmer Good afternoon, your honors and may it please the court David Zimmer on behalf of USA and the first of these appeals which involves the five five nine patent the board in this case committed two legal errors first it misapplied the motivation to combine framework and second it misconstrued a

[00:00:29] Speaker 04:
the accepting limitation.

[00:00:30] Speaker 04:
And I'd like to focus first on motivation to combine.

[00:00:34] Speaker 04:
The fundamental legal error in the board's decision is that it found that a skilled artisan would have been motivated to combine the Randall and Garcia references while disclaiming the need to make any finding concerning how often a skilled artisan would have expected that combination to actually work.

[00:00:51] Speaker 04:
That is wrong as a matter of law.

[00:00:53] Speaker 04:
Put simply, a skilled artisan cannot have been motivated to combine Randall and Garcia if a skilled artisan would not have expected that that combination would result in a usable invention.

[00:01:04] Speaker 01:
So you're saying it has to assume that it would always work in order for there to be a substantial enough motivation?

[00:01:13] Speaker 04:
No, not at all, Your Honor.

[00:01:14] Speaker 04:
I think that our argument is just that there has to have been an expectation that it would work in a way that would have motivated a skilled artisan to make the combination.

[00:01:22] Speaker 04:
So if you think about it, if we were in the field, it depends on what that will look like.

[00:01:25] Speaker 01:
So what is your argument?

[00:01:26] Speaker 01:
What you just said made me think that you were saying it wouldn't always work.

[00:01:30] Speaker 04:
So I think it depends on the field, right?

[00:01:33] Speaker 04:
So if you imagine we're talking about a cure for a rare form of cancer, right?

[00:01:39] Speaker 04:
I think at that point, if a skilled artisan would have expected that a combination would work 5% of the time, there probably would be a motivation to make that combination.

[00:01:47] Speaker 04:
If you're talking about commercial aviation, a combination that would have expected to result in a plane that made it from point A to point B without crashing 5% of the time,

[00:01:55] Speaker 04:
There's not going to be a motivation.

[00:01:57] Speaker 03:
Well, I don't read the board's decision the same way you do.

[00:02:00] Speaker 03:
I record their statement that it happens sometimes to be a kind of a throwaway alternative at the end.

[00:02:06] Speaker 03:
I view them as having said that the combination would generally work.

[00:02:11] Speaker 04:
Well, I guess I don't read it that way.

[00:02:14] Speaker 04:
And I think it's pretty clear that that's not what they were saying.

[00:02:17] Speaker 04:
If you look at pages 36 to 37 and page 44, I think it's on 37 that they say, even if it wouldn't usually work, it doesn't matter.

[00:02:24] Speaker 04:
All that matters is that it would work sometimes.

[00:02:27] Speaker 04:
And I think that is really the foundation

[00:02:29] Speaker 04:
of what the board proceeded to say about Garcia, because nothing in Garcia, you know, at best, I think all the board read Garcia to do is teach that it would work sometimes, but not often.

[00:02:40] Speaker 04:
And I think that that's really the only way you could read Garcia, because Garcia doesn't actually, yes, Judge Cunningham, I'm sorry, is that?

[00:02:48] Speaker 02:
So how often do you contend that it would need to work?

[00:02:51] Speaker 02:
It sounds like following up on Judge Pro's question, you're not saying always, but how frequently are you contending it would need to work?

[00:02:58] Speaker 04:
well i think we need to work

[00:03:00] Speaker 04:
you know, frequently enough that a skilled artisan would have expected, would have found it to be desirable.

[00:03:06] Speaker 04:
And I think those are, there's obviously, those are findings that the board needed to make and explicitly disclaimed the need to make.

[00:03:12] Speaker 04:
And I know that we're not asking, saying there's some specific number of the board needed to find, but what it needed to find was, here's what a skilled artisan would have needed to find a motivation.

[00:03:22] Speaker 04:
And they would have expected to be able to hit that target.

[00:03:26] Speaker 04:
And what the board did is they just said,

[00:03:28] Speaker 04:
They just bypass the entire inquiry.

[00:03:30] Speaker 04:
And that's, I think, particularly problematic because the board actually agreed with us on pages 39 to 40 that a skilled artisan would have recognized significance and ultimately insurmountable problems with the

[00:03:43] Speaker 01:
Well, there's a notion called obvious to try.

[00:03:46] Speaker 01:
And what the board said at the bottom of page 36 is we need not decide how often the system would have successfully deposited the check because claim one simply requires the system to have the capability of performing the recited limitations.

[00:04:02] Speaker 01:
And you think that's wrong as a matter of law?

[00:04:05] Speaker 04:
I mean, yes, Your Honor, because I think as cases like nuvasive show, to show obviousness, it's not enough to show that all the limitations were disclosed.

[00:04:14] Speaker 04:
There has to be some affirmative reason that a skilled artisan would have thought to make the combination.

[00:04:19] Speaker 04:
And here, the board accepted the evidence.

[00:04:22] Speaker 03:
But because of the traditional obviousness analysis, if you left off that remark about

[00:04:28] Speaker 03:
It only has to work some of the time.

[00:04:30] Speaker 03:
It would be a perfectly fine decision.

[00:04:32] Speaker 03:
There's nothing wrong with it.

[00:04:34] Speaker 04:
Well, no.

[00:04:34] Speaker 04:
Again, I disagree with that.

[00:04:35] Speaker 04:
Because I think that the way that the board read Garcia was really based on this legally flawed statement about it doesn't matter how often it works.

[00:04:43] Speaker 04:
So I think, let me just talk about Garcia a little bit.

[00:04:46] Speaker 04:
Because what Garcia discloses, and I think it's important to be very clear about what Garcia does and doesn't disclose.

[00:04:53] Speaker 04:
So yeah, it discloses the use in some way

[00:04:56] Speaker 04:
of a mobile phone image of a check in the check deposit process.

[00:04:59] Speaker 04:
But it's very clear that it doesn't disclose, doesn't even suggest that you could use that image to extract all of the relevant information, and especially the check amount.

[00:05:10] Speaker 04:
So Garcia states over and over again, and I think the clearest statements are on 1385 and 1392, that the user has to enter the check amount.

[00:05:18] Speaker 04:
And the board agreed with this.

[00:05:20] Speaker 04:
The board, if you look at pages 30 and 43,

[00:05:22] Speaker 04:
The board characterized Garcia as requiring the user to enter the amount of the check.

[00:05:29] Speaker 04:
Garcia never even suggests that the images that it was talking about were of enough quality that you could apply OCR to extract the check image.

[00:05:40] Speaker 02:
Yes, please.

[00:05:43] Speaker 04:
So it discloses what Garcia says about OCR.

[00:05:46] Speaker 04:
There's one reference to it at page 1391 that says that the computer at the bank has to have the capability to do OCR.

[00:05:53] Speaker 04:
But it doesn't really say anything about what exactly you would do.

[00:05:57] Speaker 04:
And it, I think, makes very clear that what you couldn't do or that Garcia certainly didn't envision that you would use that OCR

[00:06:04] Speaker 04:
to extract the check amount, because Garcia says over and over that the user has to enter the check amount.

[00:06:10] Speaker 04:
I mean, it's very clear about this.

[00:06:12] Speaker 04:
At 1385, Garcia says that the user enters data associated with the document itself, such as the amount,

[00:06:19] Speaker 04:
Same at 1392.

[00:06:22] Speaker 04:
And the board didn't disagree with that.

[00:06:23] Speaker 04:
The board also, at 30 and 43, says, Garcia teaches that a user enters data associated with the check, such as the amount.

[00:06:31] Speaker 04:
So I think Garcia is very clear that at least as to the check amount that's being entered by the user.

[00:06:36] Speaker 04:
And so Garcia is really consistent with all of the other evidence that the board credited from Lev and from PNC's own experts that nobody thought in 2006 that you could take a mobile phone image of a check

[00:06:48] Speaker 04:
and have any hope in any kind of reliable, regular way.

[00:06:52] Speaker 03:
But there was testimony by Noble that you could, right?

[00:06:56] Speaker 04:
No, there was testimony by Noble that a mobile phone was capable of taking pictures of sufficient resolution to meet the thing in Randall.

[00:07:03] Speaker 04:
But resolution was only one of numerous issues that are identified.

[00:07:07] Speaker 04:
If you look at Lab, I think Lab is the best example.

[00:07:10] Speaker 03:
And you had no expert testimony, right?

[00:07:12] Speaker 04:
Well, we had PNC's own expert testimony, which was honestly better than any expert testimony that we could have.

[00:07:18] Speaker 03:
There's a question as to whether that's even admissible under the federal rules of evidence.

[00:07:22] Speaker 04:
Well, the board admitted it.

[00:07:24] Speaker 03:
That wasn't, I mean... No, but if the board could have excluded it, the fact that it gave it very little weight seems consistent with the federal rules.

[00:07:36] Speaker 04:
Well, so first of all, the board said that it gave it very little weight.

[00:07:41] Speaker 04:
But it actually described the testimony in a good deal of detail.

[00:07:44] Speaker 04:
And it didn't give it no weight.

[00:07:46] Speaker 04:
And ultimately, again, the board's findings at pages 39 to 40 are entirely consistent with that testimony and entirely consistent with Lev, which certainly was admissible.

[00:07:56] Speaker 04:
And Lev was, again, PNC's own reference.

[00:08:00] Speaker 03:
I don't understand what you're saying.

[00:08:02] Speaker 03:
They're consistent with the testimony.

[00:08:05] Speaker 03:
My recollection is they said that the testimony, if it had weight, simply showed that it was challenging to take a mobile image on the phone and use it for deposit.

[00:08:19] Speaker 04:
Well, right.

[00:08:20] Speaker 04:
I mean, what the board said, I mean, is that it went through and listed all of the problems.

[00:08:24] Speaker 04:
It summarized all of PNC's expert's testimony.

[00:08:26] Speaker 04:
It summarized LAV, which described these images virtually useless for computer readability.

[00:08:32] Speaker 04:
And then the board said that there would have been significant challenges with lighting, skew, rotation, and that those challenges couldn't have been overcome with existing algorithms.

[00:08:40] Speaker 03:
And the reason that— They said the challenges couldn't have been overcome.

[00:08:45] Speaker 04:
I mean, what they said, this is at 39 to 40, they said, the board found, this is a direct quote, that the existing algorithms were not able to reliably and consistently correct these problems in images actually captured by users and working systems, end quote.

[00:09:02] Speaker 04:
That's a direct quote.

[00:09:04] Speaker 04:
from the board.

[00:09:05] Speaker 04:
So again, I think that with the way that the only way to.

[00:09:10] Speaker 01:
Where is that quote?

[00:09:11] Speaker 01:
I'm looking at 39, 38, 39.

[00:09:12] Speaker 04:
No, it's at the bottom.

[00:09:14] Speaker 04:
I think it's at the bottom of 39 or the top of 40, but I think it's the bottom of 39.

[00:09:18] Speaker 04:
And again, it says the top of 40 top of 40 sorry sorry your honor.

[00:09:23] Speaker 04:
But, and I think that the way like the only way to really read the board's conclusion and light of that discussion on 39 to 40 is to go back to what it said at pages 36 to 37 and on 44.

[00:09:37] Speaker 04:
Where the board said, look, all that matters is whether a skilled artisan would have thought this would ever work, even if it didn't usually work.

[00:09:44] Speaker 04:
That's the way the board reconciled all of this.

[00:09:46] Speaker 03:
Look, they say on that same page, we are nonetheless persuaded that an ordinary skilled artisan would have reasonably expected a check image captured by Garcia's mobile device with an integrated camera can be processed by Randall's check processing system.

[00:10:01] Speaker 04:
I mean, again, but if you go back to 36 to 37, what they're saying is that it can be processed sometimes while disclaiming the need to make any finding as to how often it would be processed.

[00:10:15] Speaker 01:
But isn't it a little backwards?

[00:10:17] Speaker 01:
I mean, you don't know at the time.

[00:10:18] Speaker 01:
Their motivation to combine, you're saying the only motivation is if you know that it's going to consistently or always perform the function as I would like it.

[00:10:28] Speaker 04:
Well, you don't need to always know but you need to have an expectation that it will work, that it will actually be usable right and so again we're not saying they needed to expect it to work 100% of the time, we need to, they just need to make a finding that it would have worked.

[00:10:44] Speaker 04:
sufficiently reliably to actually be worth making the combination.

[00:10:47] Speaker 04:
I mean, just to take an extreme example, if a skilled artisan would have expected that once in 10,000 times it would have worked, obviously nobody would make that.

[00:10:58] Speaker 04:
That's useless.

[00:10:59] Speaker 04:
Nobody would have expected that.

[00:11:00] Speaker 01:
What about the concept of the obviousness to try?

[00:11:03] Speaker 01:
That doesn't require any certitude that it's going to work effectively most or a lot of the time.

[00:11:10] Speaker 04:
I mean, I don't know that that's true, your honor.

[00:11:11] Speaker 04:
I mean, if something's not obvious to try, I don't think something would be obvious to try if there's no expectation.

[00:11:16] Speaker 04:
I mean, you know, if there's no expectation that it would that it would ever most of the time.

[00:11:23] Speaker 01:
I don't know.

[00:11:23] Speaker 04:
I think there I mean, again, I think that there has to be some finding, you know, that there has to be some finding that a skilled artisan would have had some expectation that the trying it would work.

[00:11:34] Speaker 04:
And again, the board just didn't

[00:11:36] Speaker 03:
That's not an accurate characterization.

[00:11:39] Speaker 03:
Some understanding that would work.

[00:11:40] Speaker 03:
Or some expectation.

[00:11:41] Speaker 03:
Some expectation.

[00:11:42] Speaker 03:
I mean, the board's opinion is filled with findings that this combination would work and would enable a deposit by using a mobile phone.

[00:11:53] Speaker 04:
I mean, I don't read it that way.

[00:11:55] Speaker 04:
And I think that if that were the case, I don't know why the board would have had this discussion where they effectively credited all of the evidence that we relied on, including Lev and including their expert's testimony, and had this paragraph on 39 to 40, where they acknowledge all of these challenges that mobile phone images would have

[00:12:17] Speaker 04:
that artisans would have expected from mobile phone images.

[00:12:20] Speaker 04:
I think that this would be a different case if the board had somehow said, and I don't think they really could have said this on this record, but if the board had said, no, a skilled artisan would have had no concerns at all that mobile phone images could have worked in Randall because mobile phone images were great and everybody knew they were great.

[00:12:39] Speaker 04:
that's not what they found and they couldn't have found it on this record because again you had I mean I think Lev is really you know Lev is their reference and it describes says that skilled art you know it says the mobile phone images of checks would have been virtually useless for many of the purposes for which they typically serve and a piece of art that was all about that was all about

[00:13:00] Speaker 04:
reading data from documents.

[00:13:04] Speaker 04:
And so I don't think the board could have made that conclusion on this record.

[00:13:08] Speaker 04:
And without a finding like that, without finding that a skilled artisan would have expected these images to be usable to extract things like the check amount, I just don't see how you could find a motivation to combine here.

[00:13:21] Speaker 04:
And that's why I think that this legally erroneous approach was so important.

[00:13:27] Speaker 03:
But just spending one more minute on this question of the admissibility of the testimony, the expert testimony from the district court proceeding.

[00:13:36] Speaker 03:
Yeah.

[00:13:36] Speaker 03:
As I understand the federal rules of evidence, you can't just take testimony from another proceeding and introduce it.

[00:13:44] Speaker 04:
Well, obviously, I mean, I could be mistaken about this, but I don't think that the Federal Rules of Evidence, you know, necessarily apply.

[00:13:51] Speaker 04:
Well, they do apply.

[00:13:53] Speaker 03:
I mean, there was no... They do apply to court proceedings.

[00:13:57] Speaker 04:
Well, but they weren't... I mean, there was no objection that these documents were in it.

[00:14:00] Speaker 03:
No, but I'm asking you a question.

[00:14:02] Speaker 03:
I mean, it's your burden here to show that they made an error.

[00:14:07] Speaker 03:
And I'm asking you, isn't it true that they could have excluded this testimony from the other proceeding entirely?

[00:14:14] Speaker 04:
I mean, in all honesty, I think what the important point is is that they didn't exclude it.

[00:14:20] Speaker 04:
And I don't think that it would be a basis, for instance, for affirming or rejecting a district court decision for this court of evidence that was admitted and there was no objection to the admission.

[00:14:30] Speaker 04:
It was before the court.

[00:14:31] Speaker 04:
And it was relied on.

[00:14:33] Speaker 04:
And again, that just wasn't the basis for the board's decision here.

[00:14:35] Speaker 04:
The board didn't say this evidence wasn't admissible.

[00:14:40] Speaker 04:
The board considered the evidence.

[00:14:41] Speaker 04:
It had this, what I think is another error in saying that it was not entitled to very much weight because it was given in the context of enablement.

[00:14:48] Speaker 04:
I mean, that was the board's only basis for discounting that testimony.

[00:14:53] Speaker 04:
And that's just wrong for the reasons in our brief.

[00:14:56] Speaker 04:
This wasn't really testimony about enablement.

[00:14:58] Speaker 04:
It was a testimony about the state of the art at the time.

[00:15:01] Speaker 04:
Um, but, but again, I don't think the court could say, could affirm on the basis that the board could have, but did not exclude testimony that it actually considered and gave some weight to.

[00:15:11] Speaker 04:
All right.

[00:15:13] Speaker 03:
I think we're out of time.

[00:15:14] Speaker 03:
Is Judge Cunningham has further questions?

[00:15:18] Speaker 03:
Not here.

[00:15:19] Speaker 04:
Thank you very much.

[00:15:22] Speaker 02:
Do I agree that I agree that the board did did make that yes they did they did find them obvious under our construction

[00:15:40] Speaker 04:
We disagree with that, obviously, but they did find that.

[00:15:43] Speaker 03:
Okay, we'll give you two minutes for rebuttal.

[00:15:45] Speaker 03:
And just to alert counsel, because of the remote aspect of this argument, just be conscious when Judge Cunningham indicates by raising her hand that she has a question to stop and listen to her.

[00:15:59] Speaker 00:
Thank you.

[00:15:59] Speaker 00:
I'll take a peek over there periodically.

[00:16:02] Speaker 03:
Good afternoon.

[00:16:04] Speaker 00:
Good afternoon.

[00:16:04] Speaker 00:
May it please the court, Andrew Danford on behalf of PNC Bank.

[00:16:08] Speaker 00:
The board carefully considered all the record evidence and issued an 87-page final written decision finding all claims of the 559 patent invalid for obviousness.

[00:16:18] Speaker 00:
While USA now disagrees with how the board ultimately weighed the evidence, it's failed to show that any of the board's factual findings lacked substantial evidence.

[00:16:26] Speaker 00:
And let me start with this issue on the motivation to combine Garcia and Randall.

[00:16:31] Speaker 00:
The board found a motivation to combine based on several things, first starting with the disclosure of the references themselves.

[00:16:39] Speaker 00:
The board found that Garcia, which is a reference from 2003 titled Method of Transmission, Authentication, and Automatic Processing of Digitized Documents, was all focused on how you submit checks

[00:16:53] Speaker 00:
that are captured by a mobile phone to a bank, they receive the image of the check, process it, and that's how you do the check deposit.

[00:17:04] Speaker 00:
Garcia explains that when the bank receives those images, it should extract relevant information from the checks using optical character recognition.

[00:17:12] Speaker 00:
That's on appendix page 1391.

[00:17:13] Speaker 00:
And Garcia further explains that the check image is processed by, quote, the usual means truncation systems.

[00:17:22] Speaker 00:
PNC's expert Dr. Noble opined that the Randall prior art discloses exactly what Garcia is referring to in terms of the usual means, truncation systems.

[00:17:31] Speaker 00:
The board credited those opinions as supported by the disclosures of Garcia and Randall, and it in fact noted that there was no evidence in the record that a person of ordinary skill in the art would have processed check images captured by Garcia

[00:17:45] Speaker 00:
in any other way.

[00:17:47] Speaker 00:
And that's not a coincidence.

[00:17:48] Speaker 00:
USAA didn't offer any expert testimony from its own witnesses in this proceeding.

[00:17:53] Speaker 00:
There just isn't evidence on the other side of this issue and the board... Well, what about the evidence they rely on from the district court proceeding?

[00:18:01] Speaker 00:
Sure.

[00:18:02] Speaker 00:
The board considered the evidence from the district court proceeding and discounted it for a couple of reasons.

[00:18:08] Speaker 00:
One being the board had the express disclosure of mobile check deposit from Garcia, which is a written disclosure contemporaneous from the relevant time period.

[00:18:20] Speaker 00:
And it reasonably concluded that it should assign much more weight to those contemporaneous documents than to what experts were saying addressing other issues in a different proceeding.

[00:18:30] Speaker 00:
And so this is just a classic example of the board weighing evidence in its role as fact finder.

[00:18:37] Speaker 00:
deciding to give certain evidence greater weight than others.

[00:18:40] Speaker 01:
Can I take you back to the point you started with and the one we spent most of our time with Mr. Zimmeron, which is what the board sent at 37 or 36 and those pages where it appeared to acknowledge that this was unlikely to work or at least work effectively much of the time and how that should have affected our analysis of motivation?

[00:19:02] Speaker 00:
So I don't think that the board said that it wouldn't work most of the time.

[00:19:06] Speaker 00:
There's that one throwaway line that Judge Dyke referenced earlier, but that comes at the end of a very long discussion where the board gives its reasons for why a person of skill and error would expect it to work.

[00:19:17] Speaker 00:
And I direct your attention to appendix page 35.

[00:19:20] Speaker 01:
The throwaway line?

[00:19:21] Speaker 01:
I don't know.

[00:19:22] Speaker 01:
Maybe there's more than one.

[00:19:23] Speaker 01:
But the throwaway line, we need not decide how often the system would have successfully worked.

[00:19:28] Speaker 00:
What I understood the throwaway line to mean is on appendix page 37, where the claims do not require a system that always does so, and then in parentheses, or even usually does so.

[00:19:39] Speaker 00:
I don't think the or even usually does so if necessary to the board's decision.

[00:19:44] Speaker 00:
It was addressing USAA's argument because remember this came up in the context of USAA criticizing Dr. Noble's opinion saying Dr. Noble should have addressed how often this would work.

[00:19:55] Speaker 00:
And the board said, well, your claims don't recite a certain threshold.

[00:19:59] Speaker 00:
And there's a reason for that.

[00:20:00] Speaker 00:
These claims don't claim an improvement over some prior.

[00:20:04] Speaker 00:
They just generically claim mobile check deposit with the steps that a bank would do to process those deposits.

[00:20:10] Speaker 00:
So there's nothing that's disclosed or claimed about how you improve this.

[00:20:14] Speaker 00:
achieving a certain level of operability or an improvement over operability before.

[00:20:20] Speaker 00:
It's just doing mobile check deposit.

[00:20:23] Speaker 03:
I guess the point is that if it didn't work some reasonable amount of time that there wouldn't be a motivation to combine because there wouldn't be a reasonable expectation of success.

[00:20:34] Speaker 00:
That's correct, Your Honor.

[00:20:35] Speaker 00:
And what the board concluded was that a person with skill in the art would expect this to work a reasonable amount of time based on the disclosure of Garcia.

[00:20:43] Speaker 01:
Where did they say that?

[00:20:45] Speaker 00:
I direct you to appendix page 35.

[00:20:47] Speaker 00:
As a result, Garcia is strong evidence that a person of ordinary skill in the art would have expected to be able to remotely deposit a check using a mobile phone.

[00:20:58] Speaker 00:
So that's based on the disclosure of Garcia and the fact that Garcia is all about depositing checks with images captured from a mobile phone.

[00:21:10] Speaker 00:
I did want to come back to the issue about what Garcia's disclosure actually is because Garcia, I don't think that USA is accurately characterizing this and their arguments are certainly not consistent with the board's findings.

[00:21:22] Speaker 00:
The board found that Garcia expressly discloses using OCR to process the check images and that the most reasonable interpretation of Garcia is that it discloses reading that information off the face of the check, for example, the bank routing number.

[00:21:41] Speaker 03:
With a reference to the user entering the amount as just one embodiment of Garcia, right?

[00:21:47] Speaker 00:
Correct.

[00:21:48] Speaker 00:
Entering the amount is one embodiment.

[00:21:49] Speaker 00:
And it's not to the exclusion of automatically processing or reading the information off the check with OCR.

[00:21:55] Speaker 00:
USA's own patent discloses the user entering the amount.

[00:21:59] Speaker 00:
In fact, one of the claim limitations is that you compare the user entered amount to the amount that's read off the check.

[00:22:04] Speaker 00:
So that entering the amount is not to the exclusion of doing this automatic processing that Garcia discloses.

[00:22:13] Speaker 00:
And I would also like to address the arguments with respect to LEV.

[00:22:17] Speaker 00:
This, again, is about how the board weighs the evidence.

[00:22:22] Speaker 00:
I believe the passages that USA relies upon with respect to the Lev reference relate to Judge Cunningham.

[00:22:30] Speaker 02:
What is your response to USA's argument that Lev shows that Randall and Garcia were mutually exclusive?

[00:22:38] Speaker 00:
I don't think that Lev shows that.

[00:22:40] Speaker 00:
I think that the part of Lev that USA is focused on talks about capturing full page images of the documents.

[00:22:48] Speaker 00:
And we're not talking about the challenges of a full page when you're dealing with a check, which is much smaller than that.

[00:22:54] Speaker 00:
And Dr. Noble offered opinions on that and compared it to the size of the areas that are captured by Lev.

[00:23:01] Speaker 00:
I'd also direct your attention to Appendix Page 74.

[00:23:05] Speaker 00:
which is where the board addresses Lev.

[00:23:08] Speaker 00:
And it actually, it rejects USA's argument and finds that the disclosures in Lev, because Lev is ultimately about using a mobile phone to capture document images and says you can do this.

[00:23:22] Speaker 00:
Here's how.

[00:23:23] Speaker 00:
And makes the finding based upon that, that if anything, Lev teaches toward the invention of the 559 patent, not away from it.

[00:23:31] Speaker 00:
So I don't think that USA's arguments are supported by Lev and certainly aren't supported by the board's findings.

[00:23:39] Speaker 02:
While I have you, let me also ask you a follow-up on some of the questions that I want to say both Judge Prost and Judge Dyke were asking.

[00:23:48] Speaker 02:
Following up on what your opposing counsel said about he thought how frequently a need to work with someone dependent on field, what is your take on that particular point that he raised in the opening argument?

[00:23:59] Speaker 00:
I do think that's true that it is field dependent, but the board made the finding that in this field, based on the disclosures of Garcia, a person of skill in the art would reasonably have expected this to be able to work to deposit a check.

[00:24:14] Speaker 00:
And again, I direct your attention to the discussion on appendix page 35 and the discussion surrounding that, where the board really does dig in

[00:24:22] Speaker 00:
on the disclosure in Garcia.

[00:24:25] Speaker 00:
And again, we're not relying on a motivation to combine for the teaching of using a mobile phone to deposit a check.

[00:24:33] Speaker 00:
That is all contained within the express disclosure of Garcia.

[00:24:37] Speaker 00:
The question is, when you have that express disclosure of use a mobile phone to capture an image of a check,

[00:24:44] Speaker 00:
and process it for deposit.

[00:24:45] Speaker 00:
How do you actually process the deposit?

[00:24:48] Speaker 00:
Garcia says use the usual means, truncation systems.

[00:24:52] Speaker 00:
Dr. Noble opined that Randall is such a system, a truncation system, and the board accepted those findings as supported by the disclosure of the references.

[00:25:02] Speaker 00:
So we think this is a straightforward case based on the expressed teachings in the art and that the board's findings are amply supported by the record.

[00:25:11] Speaker 00:
Unless you have further questions for me on motivation to comply, I'll just briefly touch on the accepting issue.

[00:25:17] Speaker 00:
And there are multiple layers here.

[00:25:22] Speaker 00:
USA has to prevail on all of them and its arguments.

[00:25:28] Speaker 00:
should be rejected with respect to each step.

[00:25:30] Speaker 00:
So the first step, of course, is what the actual claim construction of accepting is.

[00:25:36] Speaker 03:
I find the accepting limitation to be rather puzzling, because I don't know how a device can control whether another bank accepts the image for deposit purposes or not.

[00:25:53] Speaker 03:
I mean, it doesn't make a lot of sense in that respect.

[00:25:58] Speaker 00:
Just to take a step back, USAA's position has been, and I don't think the parties are disputing this, that the computing device that's recited in the preamble can be multiple servers in different locations.

[00:26:13] Speaker 00:
That's what USAA said.

[00:26:15] Speaker 00:
If you look at appendix page 14, the board discusses USAA's position on that.

[00:26:21] Speaker 00:
And I think that if you start from the proposition that we're already talking about multiple servers that can be in different places,

[00:26:27] Speaker 00:
There's no reason why.

[00:26:29] Speaker 00:
the accepting has to refer only to the payee bank.

[00:26:34] Speaker 00:
Remember, it's not accepting the deposit.

[00:26:35] Speaker 00:
The deposit doesn't have to be completed.

[00:26:37] Speaker 00:
It is accepting for deposit.

[00:26:40] Speaker 00:
And there are a number of banks involved in the process of accepting a check image for deposit.

[00:26:45] Speaker 00:
That's shown in Figure 1 of the 559 patent, where there's Bank 130, 140, and 150.

[00:26:53] Speaker 00:
There's that cloud that has the lines that come out of it that go to the different banks.

[00:26:59] Speaker 00:
columns 5 and 6 of the 559 patent describe the roles of those different banks in the check deposit process.

[00:27:08] Speaker 00:
And so once you're already at the point where you have multiple servers in different locations, there's nothing that limits this to just the payee bank.

[00:27:18] Speaker 00:
Other banks are involved in the check deposit process as described in the patent.

[00:27:22] Speaker 00:
But I think that the actual resolution of the claim construction is beside the point because the board actually

[00:27:28] Speaker 00:
accepted, for the sake of argument, addressed the issue of obviousness under USA's claim construction.

[00:27:36] Speaker 00:
And it found two grounds on which we should prevail.

[00:27:40] Speaker 00:
The first being that it is inherent in the arguments that were presented in the petition that the pay ease bank accepts the deposit.

[00:27:48] Speaker 00:
And that's got to be right.

[00:27:49] Speaker 00:
It is true that when you have a bank that

[00:27:55] Speaker 00:
like your reference like Garcia that discloses accepting check deposits, the payee's bank is the first stop for that check.

[00:28:04] Speaker 00:
And before it goes on to say the clearinghouse bank or the payor's bank, the payee's bank has to accept that image for deposit.

[00:28:12] Speaker 00:
The board found that amply disclosed by the references, and USA hasn't disputed that the references actually disclose that it is apparent from the face of the references and inherent in the arguments made in the petition.

[00:28:26] Speaker 00:
And the second ground, which is independent, are these on-us transactions.

[00:28:30] Speaker 00:
So a situation where someone submits a check that's drawn on the same bank from which the check is issued.

[00:28:38] Speaker 00:
Those, the payor and payee bank, are the same.

[00:28:42] Speaker 00:
That's disclosed.

[00:28:42] Speaker 00:
And that was one of the arguments that was advanced in the petition as well at appendix page 309 and 310.

[00:28:51] Speaker 00:
USAA, I think, has made an argument that those on-us transactions are not covered by their patent somehow.

[00:29:00] Speaker 00:
But that's not true.

[00:29:01] Speaker 00:
The on-us transactions are disclosed in USAA's patent in column 12.

[00:29:08] Speaker 00:
And that's column 12, lines 14 to 21 on appendix page 125.

[00:29:13] Speaker 00:
It's also in column 6, lines 47 to 49 on appendix page 122.

[00:29:20] Speaker 00:
And then more fundamentally, USAA actually relied on those on-us transactions for this limitation in that other IPR petition that PNC filed where there was an issue about the written description in the patent.

[00:29:36] Speaker 00:
and explicitly relied on those on-us transactions, and the board accepted that.

[00:29:40] Speaker 00:
So that's at appendix page 2446, where USA made the argument, and appendix page 2929, where the board accepted that.

[00:29:49] Speaker 00:
So there really shouldn't be any dispute that those on-us transactions are covered by this claim limitation, and they are undisputedly disclosed and argued in the petition.

[00:30:01] Speaker 00:
So unless the panel has any further questions for me, I'll submit the rest.

[00:30:05] Speaker 03:
Judge Cunningham?

[00:30:11] Speaker 03:
Mr. Zimmer, you have two minutes.

[00:30:16] Speaker 04:
Thank you.

[00:30:17] Speaker 04:
Two things quickly.

[00:30:18] Speaker 04:
First, on the problems with the mobile phone check images, Judge, I do think that the PNC expert testimony would have been admissible under Rule 801 as an exception, adverse party statement from a prior proceeding.

[00:30:31] Speaker 03:
So I really don't... Well, you better research that question because the weight of authority is against you.

[00:30:38] Speaker 03:
There's a Third Circuit case called Kirk and various follow-on cases from that which say that they're not

[00:30:44] Speaker 04:
All right, I mean, this was never an issue before the board because PNC didn't dispute it and the board admitted the evidence.

[00:30:50] Speaker 04:
But so, you know, anyway, the evidence was in the record and the board didn't discount it on that ground.

[00:30:57] Speaker 03:
And I think if you actually look at this... They did say it's another proceeding.

[00:31:01] Speaker 04:
Well, what they said was that it was given in the context of enablement.

[00:31:04] Speaker 04:
I mean, it wasn't another proceeding.

[00:31:06] Speaker 04:
That's just a fact.

[00:31:07] Speaker 04:
But the board's reason for discounting it was that it was given about enablement.

[00:31:12] Speaker 04:
But if you actually look at what the testimony was, it was just about the state of the art at the time.

[00:31:18] Speaker 04:
And in fact, the header under which it came was, and this is a direct quote from 4339, the state of the prior art slash the relative skill of those in the art.

[00:31:29] Speaker 04:
That was the header.

[00:31:30] Speaker 04:
And Dr. Kia then went on to give this testimony about how the state of the art was that nobody expected that any of this stuff could be used.

[00:31:36] Speaker 04:
And I think if you look at the Peterson testimony at 43.96 to 44.02 and the Kia testimony at 43.67 to 78, I mean, these statements are very unequivocal about how a skilled artisan would not have expected this to work.

[00:31:50] Speaker 04:
I think that's why the board ultimately at 39 to 40 had to agree with us effectively about this and why their decision rests so fundamentally on this legally flawed understanding that it just doesn't matter if it didn't work very much.

[00:32:03] Speaker 04:
And I really didn't hear anything that my colleague said that suggests in any way that the board, that really explains what the board said other than this idea that as long as it would work once in a blue moon, that's enough for motivation.

[00:32:18] Speaker 04:
And I just don't think that that's right.

[00:32:20] Speaker 03:
Okay, I think we're out of time.

[00:32:21] Speaker 03:
Thank you.

[00:32:22] Speaker 03:
Thank you very much.