Holding: When determining whether a claim is directed to an abstract idea for Section 101 analysis, the focus is on the character of the claim as a whole rather than the specification to determine eligibility.
USAA owns US Patent No. 10,402,638 which is directed to a digital camera processing system for remote check deposit. The system includes implementing real-time error checking steps, such as using optical character recognition to read the account number, routing number, and check number to ensure that the image is of sufficient quality for computer-based check recognition systems.
USAA sued PNC for infringement of the ‘638 Patent, and after discovery, both parties filed cross-motions for summary judgment on whether claim 20 of the ‘638 Patent was patent-eligible under 35 U.S.C. § 101. The district court granted USAA’s motion for summary judgment finding that the asserted claims were patent-eligible because they were not directed to an abstract idea. At trial, the jury found that the ‘638 Patent was not invalid and that the PNC infringed.
The two step Alice test is used to determine whether a patent is directed to eligible subject matter under Section 101. The first consideration is whether the claims at issue are directed to a patent-ineligible concept. If the claims are found to be directed to a patent-ineligible concept, then the second step is to consider whether the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.
The Federal Circuit disagreed with the district court’s summary judgment ruling, finding that the ‘638 Patent is directed to the abstract idea of depositing a check using a handheld mobile device. For Step 1 of the Alice test, the inquiry is focused 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. The focus should be on the claims and not on the specification. The level of detail in the specification cannot transform a claim reciting an abstract concept into a patent-eligible system or method.
Claims directed to collecting information, analyzing information by steps that people can go through in their minds or by mathematical algorithms, and presenting the results of collecting and analyzing information fall within the category of abstract ideas. The ‘638 Patent claims a process that instructs a customer to take a photo of a check, use a wireless network to transmit a copy of the photo, and use a computer system to check for errors. The Federal Circuit found these to be routine processes implemented by a general-purpose handheld mobile device in a conventional way. The addition of a handheld mobile device to carry out the routine steps that are claimed do not make the claims any less abstract. Computer-based implementation, without more, is not sufficient to render claims directed to patent-eligible subject matter at Step One. Additionally, improving a user’s experience with a computer application without providing more detail is insufficient to make the claims patent-eligible.
Since the district court found that claim 20 of the ‘638 Patent was not directed to an abstract idea, the district court did not move on to Step Two of the Alice analysis. However, the Federal Circuit did move to Step Two and concluded that the claim is ineligible under Section 101. Step two requires that the elements of the claim include an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The implementation of routine or conventional activities using a computer is not sufficient to provide an inventive concept. The image capture, OCR, and data processing steps are all well-known and routine. Including the handheld mobile device does not add an inventive concept. Further, there is no technological improvement in the ‘638 Patent that improves how the computer system functions.
Federal Circuit Precedential 
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