mCom IP LLC v. Tbk Bank SSB

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: mCom IP, LLC (Texas)
  • Defendant: TBK Bank, SSB (Illinois)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 1:23-cv-01606, D. Colo., 06/23/2023
• Venue Allegations: Venue is based on Defendant having a regular and established place of business in Fairplay, Colorado, within the judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s unified banking systems and services infringe a patent related to integrating various electronic banking touch points to provide personalized financial services.
• Technical Context: The technology involves a centralized server-based system designed to unify disparate customer-facing banking channels, such as ATMs and online portals, to create a consistent and personalized user experience.
• Key Procedural History: The patent-in-suit was the subject of an Inter Partes Review (IPR2022-00055), which concluded with a certificate issued on April 26, 2023, approximately two months before this complaint was filed. The IPR resulted in the cancellation of several claims, including independent claims 1 and 13. The complaint asserts claims 2, 7, 14, and 17. Claim 7 was directly cancelled in the IPR, and claims 2, 14, and 17 are dependent on the cancelled independent claims 1 and 13, raising a threshold question about the viability of the infringement allegations as pleaded.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,862,508 - "System and method for unifying e-banking touch points and providing personalized financial services"

• Patent Identification: U.S. Patent No. 8,862,508, "System and method for unifying e-banking touch points and providing personalized financial services," issued October 14, 2014.

The Invention Explained

• Problem Addressed: The patent describes a market where electronic banking systems like ATMs, kiosks, and online portals operate as standalone, disconnected systems. This fragmentation limits a financial institution's ability to offer a personalized customer experience and requires costly, separate upgrades for each channel. (’508 Patent, col. 1:52-68).
• The Patented Solution: The invention proposes a client-server architecture centered around a “multi-channel server.” This server integrates various “e-banking touch points,” unifies customer and transaction data from all channels, and uses this data to deliver personalized content and a consistent experience regardless of how the customer interacts with the bank. (’508 Patent, col. 2:20-36). The system architecture, depicted in Figure 1, illustrates how this central server (102) connects to various touch points (106) and data repositories (112) to create a unified platform. (’508 Patent, FIG. 1).
• Technical Importance: The described technology represents a shift from siloed banking channels to an integrated digital ecosystem, intended to enable financial institutions to conduct targeted marketing and provide a more streamlined, customized service to customers. (’508 Patent, col. 2:9-17).

Key Claims at a Glance

• The complaint asserts dependent claims 2, 7, 14, and 17. As noted, these claims were affected by a preceding Inter Partes Review.
• Asserted Claim 7: This method claim was directly cancelled by IPR2022-00055.
• Asserted Claim 2: This claim depends from independent method claim 1, which was cancelled by IPR2022-00055.
  • Cancelled Claim 1 (Independent): Recited a method for constructing a unified banking environment, comprising steps of providing a multi-channel server coupled to different types of e-banking touch points, receiving input, retrieving stored data (including user preferences), and delivering it back to the touch point. (’508 Patent, col. 8:45-col. 9:24).
  • Dependent Claim 2: Adds the limitation that the "stored transactional usage data is stored in association with a customer profile." (’508 Patent, col. 9:25-27).
• Asserted Claims 14 and 17: These claims depend from independent system claim 13, which was cancelled by IPR2022-00055.
  • Cancelled Claim 13 (Independent): Recited a unified banking system comprising a multi-channel server, one or more computer systems, multiple e-banking touch points, and a data storage device. (’508 Patent, col. 10:36-col. 11:4).
  • Dependent Claim 14: Adds the limitation that the "stored transactional usage data is stored in association with a customer profile." (’508 Patent, col. 11:5-8).
  • Dependent Claim 17: Adds the limitation that the system "provides said one or more financial institutions with a common point of control of functionality provided by said system." (’508 Patent, col. 11:15-18).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities broadly as "systems, products, and services of unified banking systems" that Defendant "maintains, operates, and administers." (Compl. ¶8).

Functionality and Market Context

The complaint does not specify the names or technical operational details of the accused banking systems. It alleges that these systems are used by Defendant to provide unified banking services to its customers and that Defendant derives "monetary and commercial benefit from it." (Compl. ¶8). The complaint does not provide sufficient detail for a more granular analysis of the accused functionality. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references a "preliminary exemplary table attached as Exhibit B" to support its infringement allegations (Compl. ¶9); however, no such exhibit was filed with the complaint. The narrative infringement theory alleges that Defendant’s operation of its "unified banking systems" constitutes direct infringement of claims 2, 7, 14, and 17. (Compl. ¶8). Given the lack of a claim chart and the procedural status of the asserted claims, a detailed element-by-element analysis is not possible based on the provided documents.

Identified Points of Contention

• Legal Question: The central issue is the legal viability of the complaint itself. A court must first determine whether a complaint that exclusively asserts claims that were either directly cancelled (claim 7) or depend from cancelled independent claims (claims 2, 14, 17) can state a claim upon which relief can be granted, particularly when the cancellation occurred before the complaint was filed.
• Factual Question: Should the case proceed, a primary factual question would be whether Defendant’s unspecified banking systems actually perform the functions recited in the patent, such as integrating disparate touch-points through a common multi-channel server to store and retrieve personalized customer data.

V. Key Claim Terms for Construction

As all asserted claims appear to be invalid following the IPR, claim construction may be a moot point. However, had the independent claims survived, the interpretation of certain terms would have been critical.

• The Term: "e-banking touch point" (from cancelled independent claims 1 and 13)
• Context and Importance: This term defines the universe of devices and interfaces the patented system is designed to unify. Its construction would be central to determining the scope of infringement, as it dictates whether Defendant's specific customer-facing technologies (e.g., modern mobile apps, web portals) fall within the patent's coverage.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims provide a non-exhaustive list including physical hardware and software interfaces: "an automatic teller/transaction machine (ATM), a self service coin counter (SSCC), a kiosk, a digital signage display, an online accessible banking website, a personal digital assistant (PDA), a personal computer (PC), a laptop, a wireless device, or a combination of two or more thereof." (’508 Patent, col. 8:54-61). This language suggests an expansive definition covering a wide range of electronic banking interfaces.
  • Evidence for a Narrower Interpretation: The "Description of the Related Art" section focuses on physical, self-service systems available "through financial institutions," such as ATMs and SSCCs. (’508 Patent, col. 1:28-34). A party could argue this context implies the invention was primarily concerned with unifying devices located within or controlled by a bank's physical branch network, potentially narrowing the term's scope.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement. The factual basis asserted is that Defendant "actively encouraged or instructed others (e.g., its customers...)" to use the accused unified banking systems. (Compl. ¶¶10, 11).

Willful Infringement

The complaint alleges Defendant has known of the '508 patent "from at least the filing date of the lawsuit" and seeks a declaration of willful infringement and treble damages. (Compl. ¶¶10, 11; V.e). This allegation appears to be based on post-suit knowledge.

VII. Analyst’s Conclusion: Key Questions for the Case

The resolution of this case will likely depend on preliminary legal issues rather than technical infringement analysis. The central questions are:

1. A dispositive question of legal viability: Can a patent infringement complaint, filed after the issuance of an IPR certificate, proceed when it exclusively asserts claims that were either directly cancelled or rendered invalid because they depend on cancelled independent claims?

2. A fundamental question of pleading sufficiency: Independent of the IPR issue, do the complaint's generalized allegations against unspecified "unified banking systems," without the inclusion of the referenced "Exhibit B" claim chart, meet the plausibility standard required to state a claim for patent infringement?