USAA v. PNC: Costume Changes in the IPR Theatre

by Dennis Crouch

Last week a friend of mine was stopped by the police for jaywalking across Ninth Street here in Columbia, Missouri. If you know that block by Sparky’s, you know it functions almost like a pedestrian mall. She was asked to sit on the curb while the officer wrote the ticket — meanwhile a dozen other folks made the same cross‑over. Same place, same manner of crossing, but only one citation. The experience was mildly absurd and somewhat humiliating and it captures a basic fairness intuition that also animates administrative law: treat like cases alike.

That is the theme of a new petition for certiorari in USAA v. PNC, arguing that the USPTO’s IPR decision was “arbitrary and capricious” because it failed to “justify a different result reached on saliently similar facts, but involving a different party.”  [20250805161943722_1. Petition][20250805161952153_1a. Petition Appendix]

Although police officers are rarely required to explain inconsistent decisions – administrative agencies are different.  The petition here presents a circuit split between the D.C. Circuit and Federal Circuit over when agencies must explain inconsistent decisions, with the Federal Circuit affirming two PTAB decisions finding USAA’s mobile‑check‑deposit claims obvious after the same Board had upheld the same patents against Wells Fargo on (arguably) substantially similar prior art combinations.

USAA’s patents cover mobile-check-depositing technology that the association developed to serve military families stationed around the world — and use of the technology exploded. U.S. Patent Nos. 8,977,571 and 8,699,779.

These patents have been challenge two different sets of IPR’s the original Wells Fargo cases confirmed validity. But, the later IPR by PNC resulted in a finding of obviousness.  The Board did provide a brief explanation as to why the teaching away principles from the first case did not apply in the second case.  On appeal, the court found that explanation sufficed under the Administrative Procedure Act.

USAA’s petition reframes the case as an administrative law problem about equal treatment, invoking the D.C. Circuit’s recent decision in Grayscale Investments, LLC v. SEC, 82 F.4th 1239 (D.C. Cir. 2023), which vacated the SEC’s refusal to approve a spot‑bitcoin ETF because the Commission did not adequately explain why it treated similar products differently. The petition collects Federal Circuit authority (notably Vicor Corp. v. SynQor, Inc., 869 F.3d 1309 (Fed. Cir. 2017)) vacating PTAB decisions where the agency offered no reasoned basis for opposite outcomes, and argues the panel here “blessed” a Board about‑face by allowing it to avoid the prior Wells Fargo reasoning through what might be seen as patent law’s version of a costume change:  swapping Luo for Yoon and Acharya for Nepomniachtchi without any material difference.

The petition’s narrative of sameness runs as follows. Both prior art pairings disclose remote check deposit and alignment‑based autocapture (mobile document capture + alignment triggers). In Wells Fargo, the Board found a skilled artisan would have expected the combination to increase computational burden and offer little marginal benefit over existing alignment solutions; in PNC, facing “interchangeable” references and “virtually identical” motivations to combine, the Board credited the combination’s benefits. According to USAA, the Board never identified a substantive difference between Yoon and Luo or between Nepomniachtchi and Acharya that would justify the divergent results—and the Federal Circuit reduced Vicor‘s “reasoned basis” requirement to a narrow rule applicable only when the records, references, and parties are identical.

As a matter of first principles, the petition’s “treat like cases alike” frame has real doctrinal resonance. The APA requires reasoned decisionmaking under 5 U.S.C. § 706(2)(A); agencies must either adhere to consistent analysis in indistinguishable cases or offer a cogent explanation for departures.  The Federal Circuit decision appears to accept this law, with the question of how much explanation is necessary.  In particular, the appellate panel accepted the Board’s explanation that the earlier Wells Fargo panels relied on prior art features and record admissions “not asserted” or “not present” in the PNC record, and therefore regarded those decisions as “of marginal relevance.” In other words, the court concluded the Board did offer a reasoned distinction—differences in references and record evidence—and that was enough. Whether one agrees with the Board’s distinction is a fact‑bound substantial‑evidence question; the panel treated it as such.