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

United States Court of Appeals
for the Federal Circuit
______________________
UNITED SERVICES AUTOMOBILE ASSOCIATION,
Plaintiff-Cross-Appellant
v.
PNC BANK N.A.,
Defendant-Appellant
______________________
2023-1639, 2023-1866, 2025-1276, 2025-1341
______________________
Appeals from the United States District Court for the
Eastern District of Texas in Nos. 2:21-cv-00246-JRG, 2:22-
cv-00193-JRG, Judge J. Rodney Gilstrap.
______________________
Decided: June 12, 2025
______________________
WILLIAM M. J AY , Goodwin Procter LLP, Washington,
DC, argued for plaintiff-cross-appellant. Also represented
by REBECCA CARSON, L ISA G LASSER , S TEPHEN P AYNE,
ANTHONY ROWLES , Irell & Manella LLP, Newport Beach,
CA; J ASON SHEASBY , ANDREW J EFFREY STRABONE , Los An-
geles, CA.
MARK CHRISTOPHER F LEMING, Wilmer Cutler Pickering
Hale and Dorr LLP, Boston, MA, argued for defendant-ap-
pellant. Also represented by ANDREW J. D ANFORD,
MAKENZI G. HERBST , J OSEPH J. MUELLER, SARAH B. P ETTY;
RONALD G REGORY I SRAELSEN, G REGORY H. L ANTIER,
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 2
G ERARD A NDREW SALVATORE , Washington, DC, MELISSA R.
SMITH , Gillam & Smith LLP, Marshall, TX.
______________________
Before D YK, CLEVENGER , and HUGHES , Circuit Judges.
HUGHES , Circuit Judge.
PNC Bank, N.A. appeals the U.S. District Court for the
Eastern District of Texas’s grant of United Services Auto-
mobile Association’s motion for summary judgment of pa-
tent eligibility under 35 U.S.C. § 101. This appeal concerns
U.S. Patent No. 10,769,598, U.S. Patent No. 10,402,638,
and U.S. Patent No. 9,224,136. We limit our discussion to
the ’638 patent because we have separately affirmed an in-
ter partes review of the ’598 patent finding the asserted
claims unpatentable under 35 U.S.C. § 103, see United Ser-
vices Automobile Ass’n. v. PNC Bank N.A., No. 23-2171,
2025 WL 339662 (Fed. Cir. Jan. 30, 2025), and an inter
partes review of the ’136 patent also finding the asserted
claims unpatentable under 35 U.S.C. § 103, see United Ser-
vices Automobile Ass’n. v. PNC Bank N.A., No. 23-2244,
2025 WL 706080 (Fed. Cir. Mar. 5, 2025).1 Because the as-
serted claim of the ’638 patent is directed to an abstract
idea and does not contain an inventive concept, we reverse.
I
A
USAA owns the ’638 patent, entitled “Digital Camera
Processing System,” which is directed to remote check
1 Since we have affirmed the invalidity of these pa-
tents, we need not reach the § 101 issue as to these patents.
See XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294
(Fed. Cir. 2018) (“[A]n affirmance of an invalidity finding,
whether from a district court or the Board, has a collateral
estoppel effect on all pending or co-pending actions.”).
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 3
deposit technology. USAA alleges that it wanted to improve
upon early remote check deposit systems, which required
specialized check scanners to ensure high quality check im-
age capture. The ’638 patent contemplates a customer us-
ing her personal mobile device, like a cell phone, to take a
picture of a check and transmit that image to her financial
institution. In order to ensure the check image is appropri-
ately captured and increase the likelihood that the check
will be accepted for deposit, the patent discusses imple-
menting real-time error checking steps, like using optical
character recognition (OCR) to read the account number,
routing number, and check number, to ensure the resultant
image is of sufficient quality for computer-based check
recognition systems.
The only claim asserted from the ’638 patent is
claim 20, which recites:
20. A system for allowing a customer to deposit a
check using a customer’s handheld mobile device,
the system configured to authenticate the customer
using data representing a customer fingerprint, the
system including:
a customer’s handheld mobile device in-
cluding a downloaded app, the app associ-
ated with a bank and causing the
customer’s handheld mobile device to per-
form the following steps:
instructing the customer to take a
photo of the check;
using a display of the customer’s
handheld mobile device to assist
the customer in taking the photo of
the check;
assisting the customer as to an ori-
entation for taking the photo; and
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 4
using a wireless network, transmit-
ting a copy of the photo from the
customer’s handheld mobile device
and submitting the check for mo-
bile check deposit;
a bank computer programmed to update a
balance of an account to reflect an amount
of the check submitted for mobile check de-
posit by the customer’s handheld mobile
device;
the system being configured to check for er-
rors before the submitting is performed by
the customer’s handheld mobile device; and
the system being configured to confirm that
the mobile check deposit can go forward af-
ter optical character recognition is per-
formed on the check in the photo.
’638 patent, 16:44–17:3.
B
USAA sued PNC for infringement of the asserted pa-
tents. After discovery, both parties filed cross-motions for
summary judgment on whether the claims were patent el-
igible under 35 U.S.C. § 101. The district court granted
USAA’s motion for summary judgment and denied PNC’s,
concluding that the asserted claims were patent eligible
under § 101 because they are not directed to an abstract
idea. J.A. 64–65. The district court then held a five-day jury
trial.2 The jury found no invalidity of the asserted claims of
2 USAA dropped its contentions asserting infringe-
ment of the ’136 patent before trial. J.A. 88. The trial ac-
cordingly involved the ’598 and ’638 patents, as well as two
of PNC’s patents later severed into a new case and not at
issue in this appeal.
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 5
the ’598 and ’638 patents and that PNC had infringed
USAA’s patents. J.A. 10040–41.
After the district court entered final judgment, PNC
timely filed its notice of appeal of the district court’s sum-
mary judgment ruling on § 101. J.A. 10449–50. USAA
cross-appealed alleging improper damages testimony from
PNC’s experts during trial. J.A. 10487–89. We have juris-
diction under 28 U.S.C. § 1295(a)(1).3
II
We apply the law of the regional circuit when reviewing
a district court’s summary judgment ruling, and the Fifth
Circuit reviews these rulings de novo. Ericsson Inc. v. TCL
Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1324–25
(Fed. Cir. 2020); Tex. Soil Recycling, Inc. v. Intercargo Ins.
3 Before oral argument, we discovered that the rec-
ord was unclear as to whether there were final judgments
entered on PNC’s counterclaims of noninfringement and
invalidity under §§ 101, 102, 103, and/or 112 as to U.S. Pa-
tent No. 9,224,136 in this case, and U.S. Patent
No. 10,621,559 in case No. 2023-1778. ECF No. 61. We di-
rected the parties to address whether there were final judg-
ments on these claims at oral argument. Id. We determined
that the record remained unclear, and we remanded the
appeals to the district court for the limited purpose of en-
tering amended final judgments. ECF No. 63. After entry
of final judgment, the parties filed new notices of appeal.
United Servs. Auto. Assn. v. PNC Bank, N.A., No. 2025-
1276, ECF No. 1 (Fed. Cir. Dec. 12, 2024); United Servs.
Auto. Assn. v. PNC Bank, N.A., No. 2025-1341, ECF No. 1
(Fed. Cir. Jan. 1, 2025). We consolidated the cases and
elected to decide the appeals based on the prior-filed briefs
and the corresponding oral argument we heard on Novem-
ber 6, 2024. ECF No. 66.
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 6
Co., 273 F.3d 644, 648 (5th Cir. 2001). Summary judgment
is appropriate when, drawing all justifiable inferences in
the nonmovant’s favor, “there is no genuine dispute as to
any material fact and the movant is entitled to judgment
as a matter of law.” Fed. R. Civ. P. 56(a); Anderson v. Lib-
erty Lobby, Inc., 477 U.S. 242, 247–48, 255 (1986).
Patent eligibility under § 101 is a question of law based
on underlying findings of fact; we review a district court’s
legal conclusion of patent eligibility de novo. Interval Li-
censing LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir.
2018).
III
Section 101 provides that a patent may be obtained for
“any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. But there is an important excep-
tion: “[l]aws of nature, natural phenomena, and abstract
ideas are not patentable,” because tying up these “basic
tools of scientific and technological work” through patent
grants risks impeding innovation. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (internal quotations and ci-
tation omitted). The Supreme Court laid out a two-step in-
quiry in Alice to determine whether a patent is directed to
eligible subject matter under § 101. We first consider
“whether the claims at issue are directed to a patent-ineli-
gible concept.” Id. at 218. If the claims are directed to a pa-
tent-ineligible concept, we then “consider the elements of
each claim both individually and ‘as an ordered combina-
tion’ to determine whether the additional elements ‘trans-
form the nature of the claim’ into a patent-eligible
application.” Id. at 217 (quoting Mayo Collaborative Servs.
v. Prometheus Lab’ys, Inc., 566 U.S. 66, 78–79 (2012)).
A
The district court found USAA’s asserted patents were
not directed to an abstract concept and were therefore
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 7
eligible under § 101. J.A. 22, 64–65. We disagree; the as-
serted claim is directed to the abstract idea of depositing a
check using a handheld mobile device.
At Alice step one, we look to whether the claims are
directed to a patent-ineligible concept. Alice, 573 U.S.
at 218. The inquiry centers on whether the character of the
claims as a whole is directed to excluded subject matter,
not just whether the claims involve an abstract idea. Inter-
net Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015). We focus on the claims, not the spec-
ification, to determine eligibility, because “the level of de-
tail in the specification does not transform a claim reciting
only an abstract concept into a patent-eligible system or
method.” Accenture Glob. Servs., GmbH v. Guidewire Soft-
ware, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013).
We have previously held that claims directed to collect-
ing information, analyzing information by “steps people go
through in their minds, or by mathematical algorithms,
without more,” and presenting the results of collecting and
analyzing information fall “within the realm of abstract
ideas.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353–54 (Fed. Cir. 2016) (citing cases). In Enfish,
LLC v. Microsoft Corp., we further clarified that step one
of the Alice inquiry asks “whether the focus of the claims is
on the specific asserted improvement in computer capabil-
ities . . . or, instead, on a process that qualifies as an ‘ab-
stract idea’ for which computers are invoked merely as a
tool.” 822 F.3d 1327, 1335–36 (Fed. Cir. 2016).
The patent in this case claims “[a] system for allowing
a customer to deposit a check using a customer’s handheld
mobile device.” ’638 patent, 16:44–45. The claim includes
steps for carrying out this process, including “instructing
the customer to take a photo of check,” “using a wireless
network” to transmit a copy of the photo, and having the
configured system “check for errors.” Id. at 16:53–65. PNC
contends that these steps improve check depositing
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 8
technology by allowing checks to be deposited quickly and
remotely without requiring specialized equipment, thus
providing a technological solution to a technological prob-
lem. But these are routine processes implemented by a gen-
eral-purpose device (e.g., a handheld mobile device) in a
conventional way. We have repeatedly held that mere com-
puter-based implementation, without more, is not suffi-
cient to render claims directed to patent-eligible subject
matter at step one. See, e.g., Alice, 573 U.S. at 225–26
(holding patent-ineligible claims that “amount to nothing
significantly more than an instruction to apply the abstract
idea . . . using some unspecified, generic computer” and in
which “each step does no more than require a generic com-
puter to perform generic computer functions”) (internal
quotation marks and citation omitted).
Here, the claim recites routine data collection and anal-
ysis steps that have been traditionally performed by banks
and people depositing checks—namely reviewing checks,
recognizing relevant data, checking for errors, and storing
the resultant data. See Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1348
(Fed. Cir. 2014) (“And banks have, for some time, reviewed
checks, recognized relevant data such as the amount, ac-
count number, and identity of account holder, and stored
that information in their records.”).
The addition of a handheld mobile device to carry out
these routine steps does not make the claim any less ab-
stract. The claim is drafted in a result-oriented fashion,
without the requisite specificity needed to provide a non-
abstract technological solution. USAA discusses how “ac-
complishing check deposit on a consumer device required
the development of extremely non-obvious algorithms.”
USAA’s Response Br. 31 (internal citation omitted). But
those algorithms are not found within the claim or the spec-
ification—the claim merely recites a system that is “config-
ured to” “authenticate the customer,” “check for errors,”
and “confirm that the mobile check deposit can go forward”
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 9
without providing how the system is configured. ’638 pa-
tent, 16:44–17:3. In McRO, Inc. v. Bandai Namco Games
America Inc., we found that the claims were not directed to
ineligible subject matter because they incorporated specific
features of defined rules as claim limitations. 837 F.3d
1299, 1316 (Fed. Cir. 2016) (involving claims directed to
specific techniques for automating 3–D animation). But
here, we lack any clear description of how these processes
are performed and therefore do not have the same degree
of specificity concerning what the technological improve-
ment is and how it is accomplished. The claim instead pro-
vides a concept of improving the check deposit process by
using a handheld mobile device, which is insufficient to
render the claims directed to patent-eligible subject mat-
ter.
Further, “improving a user’s experience while using a
computer application is not, without more, sufficient to
render the claims directed to an improvement in computer
functionality.” Simio, LLC v. FlexSim Software Prods.,
Inc., 983 F.3d 1353, 1361 (Fed. Cir. 2020) (quotation marks
and citation omitted). The claim here is directed to improv-
ing the user’s experience of depositing a check by allowing
the use of familiar and easily acquired electronics. But the
claimed steps do not improve the way in which the
handheld mobile device functions; the device is merely a
tool to perform the conventional steps associated with
check depositing. We thus conclude that the claim is di-
rected to the abstract idea of depositing a check.
B
Because the district court concluded that the claim was
not directed to an abstract idea, it did not reach Alice step
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 10
two. We do and conclude that the claim is not eligible under
§ 101.4
At step two, we consider whether the elements of the
claim contain an inventive concept sufficient to transform
the abstract idea into a patent-eligible application. Alice,
573 U.S. at 217–18. “The ‘inventive concept’ may arise in
one or more of the individual claim limitations or in the
ordered combination of the limitations.” Bascom Glob. In-
ternet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1349 (Fed. Cir. 2016) (citing Alice, 573 U.S. at 217). The in-
ventive concept requires more than mere application of the
abstract idea, or “the mere recitation of a generic com-
puter.” Alice, 573 U.S. at 223. “[I]nvoking a computer
merely as a tool” to “improve a fundamental practice or ab-
stract process” does not make an otherwise abstract claim
non-abstract, Customedia Techs., LLC v. Dish Network
Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020), nor does limit-
ing the claim to “a particular field of use or technological
environment,” Intell. Ventures I LLC v. Cap. One Bank
(USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015).
We conclude there is no inventive concept that would
support patent eligibility under step two. Our precedent is
clear that computer-mediated implementation of routine or
conventional activity is not enough to provide an inventive
concept. See, e.g., Content Extraction, 776 F.3d.
at 1347–48. USAA alleges that the claim read as a whole,
considering the ordered combination of elements, contains
4 Because patent eligibility under § 101 is a question
of law that we review de novo, we may reach step two even
though the district court did not. See Chamberlain Grp.,
Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1346–49
(Fed. Cir. 2019) (reaching step two even though the district
court only reached step one when reviewing a district
court’s denial of a motion for judgment as a matter of law
on the issue of patent-eligibility under § 101).
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 11
an inventive concept because it solves the technological
problem of accurate detection and extraction of information
from digital images of checks using general purpose mobile
devices. We disagree.
The claim recites nothing more than routine image cap-
ture, OCR, and data processing steps—all of which were
well-known and routine. See Content Extraction, 776 F.3d
at 1348 (“[U]se of a scanner or other digitizing device to ex-
tract data from a document was well-known at the time of
filing, as was the ability of computers to translate the
shapes on a physical page into typeface characters.”). The
inclusion of a handheld mobile device in the claim does not
add an inventive concept as the use of a handheld mobile
device does “no more than claim[] the abstract idea itself.”
Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205, 1215
(Fed. Cir. 2025). Moreover, the mobile device is a piece of
generic hardware. USAA contends that the inventive con-
cept is implementing these steps on a customer’s mobile
device, instead of a specialized check scanner. See USAA’s
Response Br. 49. But such implementation is not inventive.
We may not limit the claim to a particular technological
environment, Capital One, 792 F.3d at 1366, and these
steps were already considered conventional. We do not find
an inventive concept in the claim—only the implementa-
tion of routine activities using a generic device.
We have found inventive concepts in cases where the
claims have fundamentally changed or improved how a
computer functions. See, e.g., Bascom, 827 F.3d at 1345,
1350–51 (discussing that optimized location of a computer
network filter improved network performance and went be-
yond the abstract idea of filtering); DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (ad-
dressing a problem in “conventional functioning of Internet
hyperlink protocol,” not merely the “use of the Internet”).
But here, there is no technological improvement—though
the claim recites a system that makes the remote check de-
posit process easier and more convenient for bank
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 12
customers, there is no fundamental change to how any of
the technology functions, because it is all operating in a
conventional way. Nor is there any disclosure of technology
for depositing a check using a handheld mobile device. We
conclude that the claim lacks an inventive concept that
would transform the claim into a patent-eligible applica-
tion of an abstract idea.
USAA argues that summary judgment should be de-
nied even if we reach step two, because there are still ma-
terial disputes of fact, namely that some claim elements,
like OCR, remote deposit applications, and cameras, were
not conventional. USAA’s Response Br. 46–47. We disa-
gree; there are no genuine disputes of material fact on this
issue. See Broadband iTV, Inc. v. Amazon.com, Inc.,
113 F.4th 1359, 1366–67 (Fed. Cir. 2024), cert. denied, No.
24-827, 2025 WL 1151241 (U.S. Apr. 21, 2025) (“Sec-
tion 101 patent eligibility may be resolved on summary
judgment so long as there is not a genuine dispute of ma-
terial fact.”). There is ample evidence in the record and in
our caselaw that OCR was known, see, e.g., J.A. 5585–86
(discussing that OCR technology was used in commercial
check depositing systems and that USAA does not claim to
have invented OCR technology); Content Extraction,
776 F.3d at 1349 (discussing “generic optical character
recognition technology” as a “routine function of scanning
technology”), and the patent itself touts as a key advantage
“its ability to operate in conjunction with electronics that
today’s customers actually own or can easily acquire, such
as a general purpose computer, a scanner, and a digital
camera,” ’638 patent, 4:21–24. We conclude that there are
no genuine disputes of material fact that prevent resolu-
tion of the § 101 analysis on summary judgment.
IV
We have considered USAA’s remaining arguments and
find them unpersuasive. Because we reverse the district
court’s grant of summary judgment on patent eligibility
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 13
and determine the claim is not directed to patent-eligible
subject matter, we need not reach USAA’s cross-appeal
concerning the alleged admission of improper expert testi-
mony on damages because there are no longer any valid
patents to support the jury verdict. See XY, 890 F.3d
at 1294 (dismissing appeal of district court issue as moot
because the court’s affirmance of invalidity of a patent “has
an immediate issue-preclusive effect on any pending or co-
pending actions involving the patent”); Senju Pharm. Co.
v. Lupin Ltd., 780 F.3d 1337, 1353 (Fed. Cir. 2015) (declin-
ing to reach issues of infringement and estoppel when the
underlying claims were deemed invalid).
REVERSED
COSTS
Costs against USAA.
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