Inventive Concepts Must Be Included in the Claim Language
Contributed by Knobbe Martens. Originally published on Patexia; republished here as part of the LexDana archive.
Written by: Jeremiah S. Helm, Ph.D. and Jacob S. Etling
United Services Automobile Association v. PNC BANK N.A.,
Before Dyk, Clevenger, and Hughes. Appeal from the United States District Court for the Eastern District of Texas.
Summary: A claim that merely recites a system for conducting routine steps without providing sufficient specificity as to the technical improvement behind the claimed invention is patent-ineligible subject matter.
United Services Automobile Association (USAA) sued PNC Bank (PNC) alleging infringement of USAA’s patent describing a system for allowing a customer to deposit a check to a mobile banking application using a handheld mobile device and reviewing the deposited check for errors using optical character recognition (OCR). Both USAA and PNC filed for summary judgment motions seeking, respectively, judgement that the claim was or was not patent eligible under 35 U.S.C. § 101. The district court granted USAA’s motion and denied PNC’s, holding that the asserted claim was patent eligible under § 101. The district court concluded that the claim was not directed to an abstract idea and therefore did not meet the first step in the Alice analysis.
On appeal, the Federal Circuit reversed. First, the Federal Circuit held that the claim was directed to an abstract idea under Alice step one. The Federal Circuit explained the claim was directed to the abstract idea of depositing a check using a mobile device. The Federal Circuit reasoned that the steps for depositing a check using a mobile device were routine data collection and analysis steps (e.g., depositing checks, reviewing for errors, storing the data, etc.). The court further noted that, even if the implementation required the development of “non-obvious algorithms,” the claim required no particular configuration for the otherwise abstract steps. Thus, including a handheld device to carry out conventional steps without additional details did not make the claim any less abstract.
Editor: Sean Murray
More insights
The Prosecution Data Most IP Attorneys Never Look At
Most prosecution strategy is set before anyone looks at who is actually examining the application. What is sitting there unused Every examiner has a history: allowance rate, average number of office actions, how often an interview changes the outcome. None…
Federal Circuit Affirms Invalidation of Patent for Lack of Enablement of Claims Directed to a Method of Treating a Patient with a Unit Dosage in Wyeth Llc v Astrazeneca Pharmaceuticals Lp
Written by : Eric Furman, Ph.D. and Ashley C. Morales Key Takeaway: Federal Circuit invalidates patent claims directed to a method for treating non-small cell lung cancer through administration of “a unit dosage” of an irreversible epidermal…
When About Becomes Indefinite Federal Circuit Provides Guidance for Life Science Patent Applications Regarding Limits of Approximation in Enviro Tech v Safe Foods
Written by : Jason J. Jardine and Kenneth O. Aruda, Ph.D. Key Takeaway: The term “about” remains useful in biotech and pharmaceutical claims, but only if the patent provides objective guidance about what the term means. Absent that guidance,…