DCT
1:19-cv-02810
Grecia v. Bank Of New York Mellon Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: William Grecia (Pennsylvania)
- Defendant: The Bank of New York Mellon Corporation (New York)
- Plaintiff’s Counsel: Wawrzyn & Jarvis LLC
- Case Identification: 1:19-cv-02810, S.D.N.Y., 07/05/2019
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendant BNY Mellon conducts continuous and systematic business and maintains corporate offices in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Tokenized Payments service, which utilizes the Zelle payment network, infringes a patent related to a process for transforming a user access request for cloud-based digital content into a computer-readable authorization object.
- Technical Context: The technology operates in the domain of digital rights management (DRM) and secure, authenticated access to data or services hosted in a distributed or "cloud" environment.
- Key Procedural History: The complaint notes that claim terms from the patent-in-suit were previously construed in a separate case, Grecia v. Mastercard Int’l Inc. It also highlights that the U.S. Patent and Trademark Office has denied three different petitions for inter partes review (IPR) filed against the patent-in-suit, with the complaint quoting the USPTO as having found an "inventive concept."
Case Timeline
| Date | Event |
|---|---|
| 2010-03-21 | '308' Patent Priority Date |
| 2014-11-11 | U.S. Patent No. 8,887,308 Issues |
| 2016-08-30 | USPTO denies IPR petition from Unified Patents Inc. |
| 2017-01-19 | USPTO denies IPR petition from DISH Network, L.L.C. |
| 2017-07-03 | USPTO denies IPR petition from Mastercard Int'l Inc. |
| 2018-09-08 | Claim construction order entered in Grecia v. Mastercard |
| 2019-07-05 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,887,308 - "Digital Cloud Access (PDMAS Part III)"
- Patent Identification: U.S. Patent No. 8,887,308, "Digital Cloud Access (PDMAS Part III)," issued November 11, 2014.
The Invention Explained
- Problem Addressed: The patent describes the limitations of traditional Digital Rights Management (DRM) systems, which often lock digital content to specific devices, create compatibility issues, and risk terminating user access if a content provider discontinues service or if a user’s hardware fails (’308 Patent, col. 2:37-65).
- The Patented Solution: The invention proposes a process to provide more flexible and persistent access to "cloud digital content." It transforms a user's access request into a secure "authorization object" by using a verification token (e.g., a membership credential) to initiate a multi-step authentication process. This process involves establishing an API communication with a "database apparatus" that is distinct from the initial verification database, retrieving user identification data, and then creating the authorization object, which can be used for subsequent access (’308 Patent, col. 14:36-15:14).
- Technical Importance: The described approach sought to decouple content access rights from specific hardware, instead linking them to a user's persistent identity managed through a web service, aiming to provide "unlimited interoperability" (’308 Patent, col. 3:11-14).
Key Claims at a Glance
- The complaint asserts infringement of independent Claim 1 (’308 Patent, Prayer for Relief ¶(a)).
- The essential elements of Claim 1 include:
- (a) Receiving an access request for cloud digital content, where the request includes "verification data" recognized as a "verification token."
- (b) Authenticating the verification token using a "verification token database."
- (c) Establishing an API communication with a "database apparatus" that is different from the verification token database, where the API is related to a "verified web service" and requires a credential.
- (d) Requesting "query data" (at least one verified web service account identifier) from the database apparatus via the API communication session.
- (e) Receiving the requested query data.
- (f) Creating a "computer readable authorization object" by writing the verification data and/or the query data to a data store, which is later used to determine user access permissions.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is BNY Mellon's "Tokenized Payments" service, which is alleged to operate "through and with" the BNY App and to incorporate the Zelle peer-to-peer payment service (Compl. ¶17, 21).
Functionality and Market Context
- The complaint alleges that the accused service allows a user to register an email address or mobile phone number, which is then transformed into a "payment token" for sending and receiving money (Compl. ¶17). The service allegedly authenticates the user's identifier, establishes a connection with a "Zelle service database" via an API, and creates a computer-readable object representing the user's "enrolled" status for use in subsequent payment transactions (Compl. ¶18, 21, 23). The complaint asserts that Zelle is offered directly within the BNY App (Compl. ¶19).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
Claim Chart Summary
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) receiving an access request for cloud digital content... wherein the access request further comprises verification data... recognized by the apparatus as a verification token | The BNY App receives a write request when a customer registers an email address and mobile telephone number. This identifier is alleged to be the "verification token." | ¶18 | col. 14:36-46 |
| b) authenticating the verification token of (a) using a database recognized by the apparatus of (a) as a verification token database | The Tokenized Payments service uses a database to authenticate a user's email address and mobile telephone number. | ¶20 | col. 14:47-49 |
| c) establishing an API communication between the apparatus of (a) and a database apparatus, the database apparatus being a different database from the verification token database of (b)... | The BNY App, through the Tokenized Payments service, establishes a connection to the Zelle service database via the Zelle services API. This Zelle database is alleged to be different from the one used to authenticate the user's email/phone number. | ¶21 | col. 14:50-62 |
| d) requesting the query data, from the apparatus of (a), from the API communication data exchange session of (c)... | The Tokenized Payments service, via the BNY App, requests data (e.g., "CXCTokens") from the Zelle service database. | ¶22 | col. 14:63-65 |
| e) receiving the query data requested in (d) from the API communication data exchange session of (c) | The BNY App receives the requested "CXCTokens" from the Zelle service. | ¶22 | col. 15:1-2 |
| f) creating a computer readable authorization object by writing... the received verification data... and the received query data... wherein the created computer readable authorization object is processed... during subsequent user access requests... | The service creates an authorization object by writing the "enrolled" verification and query data to its data storage. This object (e.g., a "tokenStatus String") is allegedly used in subsequent requests to "send money." | ¶23 | col. 15:3-14 |
Identified Points of Contention
- Scope Questions: The case may raise the question of whether "cloud digital financial account data" (Compl. ¶18) and a user's email/phone number used for a payment service fall within the patent's scope of "cloud digital content" and "verification token." The patent’s background focuses on DRM for media files like music and video (’308 Patent, col. 2:55-63), which suggests a potential mismatch in the technological field of use.
- Technical Questions: A central technical question will be whether the accused BNY Mellon/Zelle architecture actually employs two distinct databases as required by the claim: a "verification token database" for authenticating the user's initial identifier, and a separate "database apparatus" containing the "verified web service" (the Zelle service). The complaint alleges this separation exists (Compl. ¶21), but substantiating this architectural detail with evidence will be critical.
V. Key Claim Terms for Construction
The complaint states that several key terms were construed in prior litigation, which will heavily influence this case (Compl. ¶7).
The Term: "cloud digital content"
- Context and Importance: This term defines the subject matter to which access is being controlled. The infringement theory depends on "Zelle cloud digital financial account data" (Compl. ¶18) qualifying as "cloud digital content." The complaint cites a prior construction of this term as "data capable of being processed by a computer" (Compl. ¶7). This broad construction may support the plaintiff's theory.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the prior construction is very broad. The patent itself refers to "digital media," but also more generally to "electronic products" and "digital content" (’308 Patent, col. 1:16-24), which could support applying the claim to financial data.
- Evidence for a Narrower Interpretation: The specification repeatedly uses examples like "video file, audio file, container format, document, metadata as part of video game software" (’308 Patent, col. 5:51-54), which a defendant might use to argue the invention is limited to media and entertainment content, not financial transaction data.
The Term: "verification token"
- Context and Importance: The plaintiff's case hinges on construing a user's email address and/or phone number as a "verification token" (Compl. ¶18). The complaint cites a prior construction of this term as "data that represents permission to access digital media or cloud digital content" (Compl. ¶7). The dispute will likely focus on whether an email/phone number is merely an identifier or if it functionally "represents permission" in the manner required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent mentions a token can be a "structured or random password, e-mail address associated with an e-commerce payment system" (’308 Patent, col. 8:49-52), providing direct support for the plaintiff's allegation.
- Evidence for a Narrower Interpretation: The patent abstract describes a token in the context of a "device serial number, a networking MAC address, or a membership ID reference from a web service" (’308 Patent, Abstract), which may suggest the token is tied to a specific hardware or service identity rather than a general-purpose user identifier like an email address.
VI. Other Allegations
The complaint asserts a single count of direct infringement and does not contain allegations of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological application: Can a patent describing a process for managing access to digital media content, born from the problems of traditional DRM, be applied to the architecture of a modern financial peer-to-peer payment service? The court's interpretation will depend on whether the Zelle service's function can be persuasively mapped onto the patent's specific claim limitations.
- The central evidentiary question will be one of structural correspondence: Can the plaintiff produce evidence to demonstrate that BNY Mellon's system uses the specific two-database architecture required by Claim 1—a "verification token database" that is demonstrably "different" from the "database apparatus" (the Zelle service)—or will discovery reveal a more integrated system that does not align with the claim's structure?
- A key legal question will be the impact of prior proceedings: How will the court apply the claim constructions from the Mastercard case and weigh the significance of the three failed IPR challenges? While not binding in the same way, the extensive prior examination of the patent's validity and claim scope will likely feature heavily in arguments from both parties.