Supreme Court declines USAA's challenge to the rule that computer-implemented claims must improve the computer

2026-05-18Supreme Court

United Services Automobile Association v. PNC Bank N.A., No. 25-853 (U.S. May 18, 2026) (petition for a writ of certiorari denied; Alito, J., took no part), leaving in place United Services Automobile Association v. PNC Bank N.A., 139 F.4th 1332 (Fed. Cir. June 12, 2025), rehearing denied September 16, 2025

The Supreme Court denied United Services Automobile Association's certiorari petition, which asked whether the Federal Circuit "has wrongly extended the prohibition on patenting an 'abstract idea'" to "concrete technological processes," and whether it "has wrongly held that, as a matter of law, a computer-implemented technological invention is patent-eligible only if it claims improvements to computer functionality itself." The patents, including United States Patent Nos. 10,402,638 and 10,013,605, claim remote check deposit using a handheld device's camera, an application that guides the user in capturing images of the front and back of a check, and optical character recognition to confirm that the deposit can proceed. Juries in the Eastern District of Texas had awarded $218,450,000 for willful infringement in one case and $4,300,000 in another. On June 12, 2025 the Federal Circuit held claim 20 of the '638 patent ineligible under Section 101 of Title 35 of the United States Code, as directed to the abstract idea of depositing a check using a handheld mobile device with no inventive concept, in a precedential opinion, and applied the same analysis to three related patents in a nonprecedential one, eliminating both verdicts. PNC waived its response, the Court requested one, and the American Intellectual Property Law Association filed an amicus brief. The petition was denied after the May 14 conference, with Justice Alito taking no part.

What it changesThe Federal Circuit's line between claims that improve computer functionality and claims that use a computer to improve a user's task stands without Supreme Court review, and the Court declined even after asking for a response. That line decides most claims to applied artificial intelligence, because a model that makes a business process faster or more accurate improves the task, not the computer, unless the claim recites what changes in the computing system. Draft accordingly: put the change to the system, such as the memory footprint, the data path, the training procedure or the hardware interaction, in the independent claim, and keep the user benefit in the specification. For enforcement, eligibility can erase a verdict of more than $200 million after trial, so a plaintiff's budget should assume a Section 101 appeal, and the claims chosen for trial should recite the technical mechanism. Any broader relief will have to come from Congress, where the eligibility bills remain pending.

More on Eligibility of software and AI claims

← All recent developments · Search all developments

Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

This is general information about a published decision, agency guidance or piece of legislation. It is not legal advice and does not create an attorney-client relationship. Items concerning offices outside the United States are reported for information only and are not counsel on the law of those countries.