The Federal Circuit recently issued a decision in United Servs. Auto. Ass'n v. PNC Bank N.A., 2025 U.S. App. LEXIS 14442 (2025), where the lack of disclosure in the specification resulted in a patent being invalidated under 35 U.S.C. § 101.

United Services Auto Association (USAA) asserted U.S. Patent Nos 10,769,598; 10,402,638; and 9,224,136 against PNC Bank in the Eastern District of Texas.  The Federal Circuit decision focused on claim 20 of U.S. Patent No. 10, 402,638 (’638 patent) since U.S. Patent No. 9,224,136 was dropped from the suit, and U.S. Patent No. 10,769,598 was found invalid in a separate IPR proceeding.  PNC Bank, 2025 U.S. App. LEXIS at 1 and 2.

The ’638 Patent is directed to remote check deposit technology.  ’638 Patent at Abstract.  The operations of the ’638 Patent include instructing a user to have a digital camera take photos of a check, displaying an instruction on a display of a handheld mobile device to assist the user in having the digital camera take photos, and assisting the user regarding an orientation for taking photos with the digital camera.  Id. at Abstract and 2:26-67.  Furthermore, the ’638 Patent describes performing Optical Character Recognition (OCR) on an image of the check to extract information from the check.  Id. at 11:38 – 12:45.

The district court granted USAA’s motion for summary judgment finding the claims of the ’638 Patent were not directed to an abstract idea, and that PNC Bank infringed claim 20 of the ’638 Patent.  PNC Bank, 2025 U.S. App. LEXIS at 4.

The Federal Circuit reversed the district court’s holding finding that the asserted claim of the ’638 Patent recites patent ineligible subject matter.  Id. at 9-11.  The Federal Circuit first concluded that the claim 20 of the ’638 patent is directed to the abstract idea of collecting and analyzing information. Id. at 6.  Particularly, the Federal Circuit concluded that claim 20 of the ’638 Patent “recites routine data collection and analysis steps that have been traditionally performed by banks and people depositing checks.”  Id. at 8.  Although USAA argued that the check deposit process recited in claim 20 of the ’638 Patent required the development of non-obvious algorithms, the Federal Circuit noted that these algorithms were not claimed, and were not found in the specification.  Id. at 8-9.  As such, the Federal Circuit concluded that a mobile device used by a user to perform the features of claim 20 of the ’638 Patent “is merely a tool to perform the conventional steps associated with check depositing.”  Id. at 10.

The Federal Circuit next determined that claim 20 of the ’638 Patent does not recite an inventive concept that transforms the abstract idea into a patent-eligible subject matter. Id. at 10.  Particularly, the Federal Circuit concluded that claim 20 of the ’638 Patent “recites nothing more than routine image capture, OCR, and data processing steps – all of which were well-known and routine.” Id. at 11.

Here, the lack of disclosure in the specification resulted in the invalidation of claim 20 of the ’638 Patent. In this regard, the failure to disclose the algorithms that USAA relied upon as the inventive concept of claim 20 resulted in claiming image capture technology at a high level of generality.  That is, instead of claiming in detail the algorithms that USAA considered inventive, claim 20 of the ’638 Patent merely recited a routine image capture process, which led to the invalidation of claim 20 of the ’638 Patent under 35 U.S.C. § 101.

The Federal Circuit’s decision in PNC Bank demonstrates the dangers of relying on conventional processes and generic components, or providing limited disclosure on the purported inventive concept.  When drafting the specification, to avoid scrutiny under 35 U.S.C. § 101, the patent applicant must ensure that the inventive concept is disclosed with sufficient detail and recited in the claims.  Without these detailed disclosures, any resulting claim will likely recite the inventive concepts with a high level of generality, resulting in an invalidation under 35 U.S.C. § 101.