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Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

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Recently, the U.S. Court of Appeals for the Federal Circuit issued a decision in <a href="https://www.cafc.uscourts.gov/opinions-orders/23-1639.OPINION.6-12-2025_2529490.pdf">United Services Automobile Association v. PNC Bank N.A., No. 2023-1639 (June 12, 2025)</a>, reversing a district court's final judgment of infringement, holding the asserted claim patent ineligible.

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In 2023, USAA sued PNC for infringement of U.S. Patent No. 10,402,638, which is directed to remote check deposit technology. The sole asserted claim from the ’638 patent recited a system that allowed a customer to deposit a check from their mobile device by performing a series of steps, including “instructing the customer to take a photo of the check,” using the device’s display “to assist the customer,” assisting “as to an orientation for taking the photo,” and “submitting the check for mobile check deposit.”

After discovery, the parties filed cross-motions for summary judgment on whether the asserted claim was eligible for patent protection under 35 U.S.C. § 101. The district court found that the claim was eligible, and a subsequent jury trial resulted in a finding of infringement. USAA appealed.

The Federal Circuit reversed. Applying the Supreme Court’s two-part patent eligibility inquiry established in Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208 (2014), the Federal Circuit first considered whether the claim at issue was “directed to a patent-ineligible concept.” The Court concluded that the “abstract idea of depositing a check using a handheld mobile device” was indeed ineligible. According to the Court, although the steps within the claim utilized a handheld mobile device, they constituted “routine processes” implemented “in a conventional way” and were steps that had traditionally been performed by banks and individuals without the need for additional hardware. The Court held that the claim’s steps lacked the “requisite specificity” to show how the addition of the claimed hardware would provide a desired improvement.

The Court then proceeded to the second part of the Alice eligibility inquiry and considered whether the claim contained an “inventive concept sufficient to transform” it into a patent-eligible claim. The Court held that there was no such concept here. The steps of the claim, both individually and in combination, were “well-known and routine.” The claimed implementation of the handheld mobile device was “generic” and insufficient to demonstrate an inventive concept because it did not improve the underlying technology. Accordingly, the Court concluded that the claim was ineligible for patent protection.

CAFC Holds Check Deposit System Patent Ineligible Under Alice

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