DCT

1:23-cv-23427

mCom IP LLC v. City National Bank Of Florida

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-23427, S.D. Fla., 09/08/2023
  • Venue Allegations: Venue is alleged based on Defendant having a regular and established place of business in the district, conducting substantial business there, and committing acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s unified e-banking systems and services infringe a patent related to integrating various electronic banking "touch points" through a central server to provide personalized services.
  • Technical Context: The technology addresses the integration of disparate customer-facing banking channels, such as ATMs and online portals, into a unified platform for consistent data management and personalized marketing.
  • Key Procedural History: An Inter Partes Review (IPR) proceeding, IPR2022-00055, concluded with a certificate issued on April 26, 2023. This IPR resulted in the cancellation of numerous claims of the asserted patent, including independent claims 1, 7, and 13. The complaint, filed after the IPR's conclusion, asserts dependent claims 2, 8, 14, and 17, all of which depend from the now-cancelled independent claims.

Case Timeline

Date Event
2005-11-14 U.S. Patent No. 8,862,508 Priority Date
2014-10-14 U.S. Patent No. 8,862,508 Issue Date
2023-04-26 IPR Certificate issued cancelling claims of '508 Patent
2023-09-08 Complaint Filing Date

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," Issued October 14, 2014

  • The Invention Explained:
    • Problem Addressed: The patent describes a problem where various electronic banking systems—such as ATMs, self-service coin counters, and online banking websites—operate as "stand-alone systems." This fragmentation limits a financial institution's ability to provide a "personalized e-banking experience" and to regulate its systems from a "common set of control consoles" ('508 Patent, col. 1:56-65).
    • The Patented Solution: The invention proposes a client-server architecture centered on a "common multi-channel server" that connects to and unifies these disparate "e-banking touch points." This server collects and manages transactional and customer data from all touch points, allowing the financial institution to monitor activity, deliver personalized content and marketing, and enable customers to customize their experience across different channels ('508 Patent, col. 2:20-36; Fig. 1).
    • Technical Importance: The technology aims to solve the business and technical challenge of creating a consistent, data-driven customer experience across a growing number of digital and physical self-service banking channels ('508 Patent, col. 2:7-14).
  • Key Claims at a Glance:
    • The complaint asserts dependent claims 2, 8, 14, and 17 (Compl. ¶8). However, the IPR certificate provided with the patent document indicates that the independent claims upon which these claims depend (claims 1, 7, and 13) have been cancelled.
    • Independent claim 1 (cancelled) described a method comprising:
      • Providing a common multi-channel server coupled to multiple different types of e-banking touch points (e.g., ATM, kiosk, website).
      • Receiving an actionable input from a touch point.
      • Retrieving previously stored data (including user-defined preferences).
      • Delivering the retrieved data to the touch point.
      • Storing new transactional usage data.
      • Monitoring the session for selection of targeted marketing content.
      • Transmitting the marketing content to the touch point for user response.
    • Independent claim 7 (cancelled) recited a similar method.
    • Independent claim 13 (cancelled) recited a system with a common multi-channel server, e-banking touch points, and a data storage device configured to perform a similar process.

III. The Accused Instrumentality

  • Product Identification: The complaint does not name specific accused products. It broadly identifies "systems, products, and services of unified banking systems that [Defendant] maintains, operates, and administers" (Compl. ¶8).
  • Functionality and Market Context: The complaint alleges that Defendant's actions "put the inventions claimed by the '508 Patent into service" by causing the "claimed-invention embodiments... to perform" (Compl. ¶8). It further alleges that Defendant's customers are instructed on "how to construct a unified banking system" (Compl. ¶10). The complaint does not provide sufficient detail for analysis of the specific functionality of the accused systems.

IV. Analysis of Infringement Allegations

The complaint references a "preliminary exemplary table attached as Exhibit B" to support its infringement allegations but does not include this exhibit (Compl. ¶9). In the absence of a claim chart, the infringement theory is based on the general allegation that Defendant operates a "unified banking system" that practices one or more of the asserted claims (Compl. ¶8). The complaint does not contain specific factual allegations mapping elements of the asserted claims to discrete features of the accused banking systems.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

Analysis of claim terms is predicated on the claims being valid. Assuming the asserted claims were not dependent on cancelled claims, the following terms would be central to the dispute.

  • The Term: "common multi-channel server"
  • Context and Importance: This term appears in all independent claims (1, 7, 13) and is the technological core of the invention. Its definition is critical because infringement would hinge on whether the Defendant's back-end infrastructure, which may be a distributed or cloud-based system, can be characterized as a "common" server that "unifies" distinct channels.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests the server may not be a single physical unit, stating that "additional multi-channel servers may be collectively networked into system 100" ('508 Patent, col. 3:39-42). It is described functionally as providing a "single operational platform" and pulling touch points into an "extended client-server framework" ('508 Patent, col. 4:30-37).
    • Evidence for a Narrower Interpretation: Figure 1 depicts a single, centralized server (102) as the hub connecting all other components, such as touch points (106a, 106b, 106c) and databases (112a-d). Language describing the server as residing in an "IT center of any particular banking branch" could also support a more physically constrained interpretation ('508 Patent, col. 4:28-32).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendant "actively encouraged or instructed others (e.g., its customers)" on how to use the infringing "unified banking system" (Compl. ¶10). Contributory infringement is based on the same alleged conduct (Compl. ¶11).
  • Willful Infringement: Willfulness is alleged based on Defendant having knowledge of the '508 patent "from at least the filing date of the lawsuit" (Compl. ¶¶10-11). The complaint reserves the right to amend if pre-suit knowledge is discovered (Compl. ¶10, n.1).

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

  1. Threshold Validity Question: The central issue is whether this case can proceed. All asserted claims (2, 8, 14, 17) are dependent claims whose independent base claims (1, 7, 13) were cancelled in a final, post-grant IPR proceeding that concluded before the complaint was filed. The court will first need to resolve whether any asserted claims remain valid as a matter of law.
  2. Definitional Scope: Should the case move forward, a key question will be one of architectural scope: can the term "common multi-channel server," which the patent illustrates as a central hardware hub, be construed to read on a modern, likely distributed or cloud-based, banking infrastructure?
  3. Evidentiary Sufficiency: A primary evidentiary question will be whether the plaintiff can produce evidence to support its bare allegations. Given the lack of specific product identification or feature-by-feature analysis in the complaint, the case will turn on what discovery reveals about the actual operation of Defendant's systems and whether they perform the specific data retrieval, storage, monitoring, and transmission steps required by the patent's claims.