No CBM: Check Deposit Patent Claims Technological Invention

Patent claims reciting a “medium comprising computer-readable instructions for depositing a check” included a “technological invention,” and thus were not eligible for Covered Business Method (CBM) review, held the Patent Trial and Appeal Board (PTAB) in Wells Fargo Bank, NA et al v. United Services Automobile Ass’n., Case CBM2019-00004, Patent 8,977,571 B1 (May 15, 2019). Even though U.S. Patent No. 8,977,571B1 may otherwise have been directed to a “financial product or service,” it qualified for the statute’s provision “that the term does not include patents for technological inventions.” America Invents Action § 18(d).

Representative claim 1 of the ’571 patent recites:

A non-transitory computer-readable medium comprising computer-readable instructions for depositing a check that, when executed by a processor, cause the processor to:

monitor an image of the check in a field of view of a camera of a mobile device with respect to a monitoring criterion using an image monitoring and capture module of the mobile device;

capture the image of the check with the camera when the image of the check passes the monitoring criterion; and

provide the image of the check from the camera to a depository via a communication pathway between the mobile device and the depository.

The PTAB devoted over half of its opinion to claim construction, including the patent owner’s contention that the claim preamble was limiting. The patent owner argued that “‘depositing a check’ is an essential component of the claims,” an understandable argument when you consider that the patent owner’s argument for invoking the “technological inventions” exception of AIA § 18(d) depended on an argument that the ’571 patent recited a technical solution that improved check depositing. The PTAB agreed that the claim preamble was limiting “because it imposes a structural limitation on the claim in addition to specifying its intended use.” Specifically, the claim required a processor to perform the monitoring, capturing, and providing steps recited in the body of the claim.

Further, although not requested by the parties, the PTAB also construed “passes the monitoring criterion” and “monitoring criterion.” The PTAB’s construction of “monitoring criterion” to include technical details telegraphed its conclusion that the ’571 patent was directed to a technical solution:

“a monitoring criterion” can include “one or more” features of an image of a check that can affect whether check data can be electronically obtained from the check, such as “light contrast on the image, light brightness of the image, positioning of the image, dimensions, tolerances, character spacing, skewing, warping, corner detection, and MICR (magnetic ink character recognition) line detection,” “proper lighting and/or framing of the check,” “positioning of the check,” and/or “[e]dge detection and/or corner detection.”

The Petitioner argued that the ’571 patent was directed to the problem of accurate detection and extraction of a check image from a mobile phone, and that “[t]he problem of taking a well-composed picture is not a technical one.” The Petitioner then argued that that the ’571 patent used generic components (processor, camera, etc.), and provided no improvement to computer technology.  But the PTAB agreed with the Patent Owner that taking a sufficiently good image of a check was a technical solution. The Petitioner’s expert had testified in parallel litigation about technical challenges of capturing sufficient quality images for machine recognition. The PTAB turned this testimony against the Petitioner to conclude that “using an image of a check to deposit the check presents technical difficulties.”

Further, the PTAB noted that “electronic deposit of a check, as required by claim 1, for example, requires compliance of certain technical specifications, further demonstrating that the ’571 patent is directed to a technical problem.” The fact that check images must comply with the Check 21 Act, said the PTAB, “further contradicts Petitioner’s assertion that the ’571 patent is not directed to a technical problem.” Further, the patent claimed a “technical solution” because – recall the above claim construction – “the processor monitors the image with respect to monitoring criteria, such as ‘skewing’ or ‘warping,’ and determines whether those criteria are satisfied or not.”

Lessons

This decision could certainly have gone the other way. The PTAB could have concluded that the patent disclosed and claimed known image processing techniques, and provided no improvement thereto. The “technical solution” that the PTAB identified – monitoring criteria for depositing checks – could instead of been held to be a business application of known technology. The PTAB has found a technological invention and denied CBM review in other recent seeming business method cases, even as it found no technological invention in yet others, so this decision may not be an outlier – but it nonetheless turns the head a bit.