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N OTE: This disposition is nonprecedential.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,
Plaintiff-Appellee
v.
PNC BANK N.A.,
Defendant-Appellant
______________________
2023-1778, 2025-1277
______________________
Appeals from the United States District Court for the
Eastern District of Texas in Nos. 2:20-cv-00319-JRG-RSP,
2:21-cv-00110-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 MATTHEW G INTHER; REBECCA CARSON, L ISA G LASSER ,
STEPHEN P AYNE, ANTHONY R OWLES , Irell & Manella LLP,
Newport Beach, CA; J ASON SHEASBY , A NDREW J EFFREY
STRABONE , Los Angeles, CA.
MARK CHRISTOPHER F LEMING, Wilmer Cutler Pickering
Hale and Dorr LLP, Boston, MA, argued for defendant-ap-
pellant. Also represented by MAKENZI G. H ERBST ; RONALD
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 2
G REGORY I SRAELSEN , G REGORY H. L ANTIER , G ERARD
ANDREW SALVATORE , Washington, DC.
______________________
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, as well as the district
court’s denial of PNC’s post-trial motions. This appeal con-
cerns U.S. Patent No. 10,013,605, U.S. Patent
No. 10,013,681, U.S. Patent No. 10,482,432, U.S. Patent
No. 8,977,571, U.S. Patent No. 8,699,779, and U.S. Patent
No. 10,621,559. We limit our discussion to the ’605 patent,
the ’681 patent, and the ’432 patent because we have sepa-
rately affirmed an inter partes review of the ’571 patent and
the ’779 patent finding the asserted claims unpatentable as
obvious, see United Services Automobile Ass’n. v. PNC
Bank N.A., No. 23-2124, 2025 WL 370141 (Fed. Cir. Feb. 3,
2025), and an inter partes review of the ’559 patent also
finding the asserted claims unpatentable as obvious, see
United Services Automobile Ass’n. v. PNC Bank N.A.,
No. 23-1920, 2025 WL 341868 (Fed. Cir. Jan. 30, 2025).1
Because the asserted claims of the ’605, ’681, and ’432 pa-
tents are directed to an abstract idea and do not contain an
inventive concept, we reverse.
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
I
USAA owns the ’605 patent, the ’681 patent, and the
’432 patent, which it refers to collectively as the “mobile
remote deposit capture” (MRDC) patents. The patents are
directed to a system for remotely depositing a check using
general purpose consumer electronics and devices. ’605 pa-
tent, 16:30–33; ’681 patent, 13:65–14:3; ’432 patent,
14:23–24.2
USAA sued PNC for infringement of the asserted pa-
tents. Both parties cross-moved for summary judgment on
whether the claims were patent eligible under 35 U.S.C.
§ 101. The magistrate judge recommended granting
USAA’s motion, and the district court adopted that recom-
mendation, finding the claims patent eligible. J.A. 157,
164, 175–76. The district court then held a five-day jury
trial on claims 1, 3, 5, and 21 of the ’432 patent; claims 12,
13, 22, 26, and 30 of the ’681 patent; and claims 12, 13, and
22 of the ’605 patent.3 The jury found that PNC infringed
at least one claim of the asserted patents and that no
claims were invalid. J.A. 180–83.
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. We have jurisdiction under
28 U.S.C. § 1295(a)(1).4
2 Exemplary claims for the ’605, 681, and ’432 pa-
tents are set forth in Appendix A of this opinion.
3 The trial also involved claims 1, 2, 9, 12, and 13 of
the ’571 patent. J.A. 178.
4 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. 10,621,559 in this case and U.S. Patent
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 4
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.
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
No. 9,224,136 in case No. 2023-1639. ECF No. 58. 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. 60. 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. 61.
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 5
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
At Alice step one, we look to whether the claims are
directed to a patent-ineligible concept. Alice, 573 U.S.
at 218. We have held that claims directed to collecting in-
formation, 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) (collecting cases).
The magistrate judge’s report and recommendation
found the claims patent-eligible at Alice step one because
the claims “improve[] specialized check processing ma-
chines by enabling the function of those machines to be per-
formed without specialized equipment.” J.A. 164 (citation
omitted). The magistrate judge said this was shown “by the
claim specifically reciting a ‘general purpose’ computer and
then providing features that enable the recited general
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 6
purpose computer to perform the same functions as the
specialized check processing machines of the prior art.” Id.
We disagree and conclude that the claims are directed
to the abstract idea of depositing a check using a mobile
device. Today, in a companion case, we hold that claims di-
rected to this abstract idea are not patent eligible. See
United Servs. Auto. Ass’n v. PNC Bank N.A., No. 23-1639,
slip op. at 7 (Fed. Cir. 2025). The claims here are no less
abstract.
The claims each recite a system for allowing a customer
to deposit a check using a mobile device, but, similar to the
claims in the companion case, the claim elements recite
only routine and well-known steps taken when depositing
checks, like authenticating the customer, capturing check
images, reading the check amount and account infor-
mation, and checking for errors. See Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l. Ass’n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (“And banks have, for
some time, reviewed checks, recognized relevant data such
as the amount, account number, and identity of account
holder, and stored that information in their records.”). Fur-
ther, the claims and the specification are silent as to spe-
cific software or technical advances; they do not explain
how the general-purpose computers are made to act like
specialized check scanners. There is no elaboration or spec-
ificity on how steps like “checking for errors” or “monitoring
lighting” are performed—the patents just disclose that
these steps happen and discuss them in a results-oriented
manner. We conclude that the claims are directed to the
abstract idea of depositing a check using a mobile device,
and that there is no technological solution within the
claims that pull them out of the realm of an abstract idea.
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. 7
two. We do and conclude that the claim is not eligible under
§ 101.5
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 requires more
than mere application of the abstract idea, or “the mere
recitation of a generic computer.” Alice, 573 U.S. at 223.
We conclude there is no inventive concept that would
support patent eligibility under step two. The abstract idea
cannot be the inventive concept. See Recentive Analytics,
Inc. v. Fox Corp., 134 F.4th 1205, 1215 (Fed. Cir. 2025) (ex-
plaining a concept is not inventive when it does “no more
than claim[] the abstract idea itself”). The claims merely
provide for mobile-device implementation of routine or con-
ventional activities long-associated with depositing checks.
USAA focuses on the notion of mobile check deposits being
inventive, see e.g., J.A. 8994 (“The . . . [p]atents provide a
technological solution to the challenges of accurate detec-
tion and extraction of the necessary information from digi-
tal images of checks using general-purpose mobile
devices . . . .”) (emphasis added), but this simply cabins the
abstract idea of check deposits to a particular technological
environment, which is insufficient, see Intell. Ventures I
LLC v. Cap. One Bank (USA), 792 F.3d 1363, 1366
(Fed. Cir. 2015) (discussing that limiting a claim to “a par-
ticular field of use or technological environment” is not
5 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. 8
sufficient to supply an inventive concept). We do not find
an inventive concept in the claims—only the implementa-
tion of routine activities using generic devices.
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
and determine the claim is not directed to patent-eligible
subject matter, we need not reach PNC’s post-trial motions
as all asserted claims have been rendered invalid so 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 inva-
lidity of a patent “has an immediate issue-preclusive effect
on any pending or co-pending actions involving the pa-
tent”); Senju Pharm. Co. v. Lupin Ltd., 780 F.3d 1337, 1353
(Fed. Cir. 2015) (declining to reach issues of infringement
and estoppel when the underlying claims were deemed in-
valid).
REVERSED
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APPENDIX A
Claims 1 and 12 of the ’605 patent, claims 12 and 30 of
the ’681 patent, and claim 1 of the ’432 patent are set forth
below.
Claim 1 of U.S. Patent No. 10,013,605
1. An image capture and processing system for use
with a digital camera, the image capture and pro-
cessing system comprising:
a portable device comprising a general pur-
pose computer including a processor cou-
pled to a memory, the memory storing:
camera software comprising instructions
that, when executed by the processor, con-
trol the digital camera;
a downloaded software component config-
ured to control the camera software and to
manage capturing electronic images, the
software component comprising instruc-
tions that, when executed by the processor,
cause the portable device to perform opera-
tions including:
instructing a user of the portable
device to place a check in front of
the digital camera and have the
digital camera capture electronic
images of front and back sides of
the check;
displaying an instruction on a dis-
play of the portable device to assist
the user in having the digital cam-
era capture the electronic images of
the check; assisting the user as to
an orientation for capturing the
electronic images of the check;
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 10
presenting the electronic images of
the check to the user after the digi-
tal camera captures the electronic
images;
transmitting, using a wireless net-
work, a copy of the electronic im-
ages over a public electronic
communications network from the
portable device, wherein the trans-
mitted copy of the electronic im-
ages is a modified version of the
electronic images captured with
the digital camera, the modified
version having a different elec-
tronic format than the images cap-
tured with the digital camera; and
submitting the check for deposit af-
ter the system authenticates the
user and after presenting the elec-
tronic images of the check to the
user;
a plurality of processors coupled to a plu-
rality of memory devices storing instruc-
tions that, when each instruction of the
instructions is executed by a processor of
the plurality of processors coupled to a
memory device of the plurality of memory
devices storing that instruction, cause the
system to perform additional operations in-
cluding:
confirming that the deposit can go
forward after performing an optical
character recognition on the check,
the optical character recognition
including determining an amount
of the check, comparing the
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 11
determined amount to an amount
entered by the user into the porta-
ble device, and reading a MICR line
of the check;
initiating the deposit after the con-
firming; and generating a log file
for the deposit, the log file includ-
ing a bitonal image of the check;
and
another computer, remote from the porta-
ble device, comprising a processor coupled
to a memory storing instructions that,
when executed by the processor, cause the
other computer to update a balance to re-
flect the amount of the check submitted for
deposit by the portable device.
Claim 12 of U.S. Patent No. 10,013,605
12. A system for allowing a customer to deposit a check
using a customer’s own handheld mobile device with a
digital camera, the system configured to authenticate
the customer, the system including:
a customer’s handheld mobile device in-
cluding:
camera software that controls the
digital camera; and
a downloaded app associated with
a bank configured to control the
camera software and to control sub-
mitting
a check for deposit by causing the
customer’s handheld mobile device
to perform the following steps:
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 12
instructing the customer to have
the digital camera take photos of
front and back sides of the check;
using a display of the customer’s
handheld mobile device to assist
the customer in having the digital
camera take the photos of the
check;
presenting the photos of the check
to the customer after the digital
camera takes the photos; and
transmitting, using a wireless net-
work, a copy of the photos over the
Internet from the customer’s
handheld mobile device; and
submitting the check for mobile
check deposit in the bank after the
system authenticates the customer
and after presenting the photos of
the check to the customer;
a computer associated with the bank pro-
grammed to update a balance of an account
to reflect an amount of the check submitted
for a mobile check deposit by the customer’s
handheld mobile device; and
the system configured to perform addi-
tional steps including:
confirming that the mobile check
deposit can go forward after per-
forming an optical character recog-
nition on the check, the optical
character recognition determining
the amount of the check and read-
ing a MICR line;
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 13
initiating the mobile check deposit
after performing the confirming
step; and
generating a log file for the mobile
check deposit, the log file including
an image of the check submitted for
the mobile check deposit.
Claim 12 of U.S. Patent No. 10,013,681
12. A system for allowing a customer to deposit a check
using a customer’s own mobile device with a digital
camera, the system configured to ask the customer to
log in using a user name and password, the system in-
cluding:
customer’s handheld mobile device includ-
ing:
camera software that works with
the digital camera; and a down-
loaded app associated with a bank
to work with the camera software
and to control submission of a
check for deposit by causing the
customer’s handheld mobile device
to perform:
instructing the customer to have
the digital camera take photos of
front and back sides of the check;
displaying a graphical illustration
to assist the customer in having the
digital camera take the photos of
the check, the illustration assisting
the customer in placing the digital
camera a proper distance away
from the check for taking the pho-
tos;
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 14
presenting the photos of the check
to the customer after the photos are
taken; and transmitting, using a
wireless network, a copy of the pho-
tos over the Internet from the cus-
tomer’s handheld mobile device;
and
confirming that the mobile check
deposit can go forward after the
system performs optical character
recognition on the check, the opti-
cal character recognition determin-
ing an amount of the check and
reading a Magnetic Ink Character
Recognition (MICR) line;
using a wireless network, transmit-
ting a copy of the photos over a pub-
lic communications network from
the customer’s mobile device and
submitting the check for mobile
check deposit in the bank after the
photos of the check are presented to
the customer;
a computer associated with the bank pro-
grammed to update a balance of an account
to reflect the check submitted for mobile
check deposit by the customer’s mobile de-
vice; and
the system configured to generate a log file
for the mobile check deposit, the log file in-
cluding an image of the check submitted for
mobile check deposit.
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 15
Claim 30 of U.S. Patent No. 10,013,681
30. A non-transitory computer readable medium stor-
ing an app that, when downloaded and run by a cus-
tomer’s mobile device to perform:
instructing a customer to have a digital
camera take photos of front and back sides
of a check;
displaying a graphical illustration to assist
the customer in having the digital camera
take the photos of the check;
giving an instruction to assist the customer
in placing the digital camera at a proper
distance away from the check for taking the
photos;
presenting the photos of the check to the
customer after the photos are taken;
confirming that the mobile check deposit
can go forward after optical character
recognition is performed on the check, the
optical character recognition determining
an amount of the check and reading a Mag-
netic Ink Character Recognition (MICR)
line;
using a wireless network, transmitting a
copy of the photos over a public communi-
cations network from the customer’s mobile
device and submitting the check for mobile
check deposit after the customer is authen-
ticated, the photos of the check are pre-
sented to the customer, and the customer’s
mobile device checks for errors.
Claim 1 of U.S. Patent No. 10,482,432
1. A system comprising:
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 16
a customer’s mobile device including a
downloaded app, the downloaded app pro-
vided by a bank to control check deposit by
causing the customer’s mobile device to
perform:
instructing the customer to have a
digital camera take a photo of a
check;
giving an instruction to assist the
customer in placing the digital
camera at a proper distance away
from the check for taking the photo;
presenting the photo of the check to
the customer after the photo is
taken with the digital camera;
using a wireless network, transmit-
ting a copy of the photo from the
customer’s mobile device and sub-
mitting the check for mobile check
deposit in the bank after present-
ing the photo of the check to the
customer; and
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 mobile device;
wherein the downloaded app causes the
customer’s mobile device to perform addi-
tional steps including:
confirming that the mobile check deposit
can go forward after optical character
recognition is performed on the check in the
photo; and
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UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N. A. 17
checking for errors before the submitting
step.
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