mCom IP LLC v. M&T Bank Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: mCom IP, LLC (Texas)
  • Defendant: M&T Bank Corporation (New York)
  • Plaintiff’s Counsel: Ramey LLP; David J. Hoffman
• Case Identification: 1:23-cv-08793, S.D.N.Y., 10/06/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district, has committed alleged acts of infringement in the district, and conducts substantial business there.
• Core Dispute: Plaintiff alleges that Defendant’s unified digital banking systems and services infringe a patent related to integrating disparate e-banking "touch points" to provide a personalized customer experience.
• Technical Context: The technology involves using a central server to unify customer interactions across various banking channels, such as ATMs and online portals, to enable personalized services and targeted marketing.
• Key Procedural History: An Inter Partes Review (IPR) proceeding, IPR2022-00055, concluded with a certificate issued on April 26, 2023, cancelling numerous claims of the patent-in-suit. This certificate was issued over five months before the complaint was filed. The complaint asserts four claims, each of which appears to be either directly cancelled or dependent upon a cancelled claim, raising a threshold question about the viability of the infringement allegations as pleaded.

Case Timeline

Date	Event
2005-11-14	’508 Patent Priority Date
2014-10-14	’508 Patent Issue Date
2023-04-26	IPR Certificate Issued, Cancelling Claims
2023-10-06	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 Oct. 14, 2014)

The Invention Explained

• Problem Addressed: The patent describes conventional electronic banking channels—such as ATMs, self-service kiosks, and web interfaces—as "stand-alone systems" that are "deficient in that they limit the ability of financial institutions to provide a more personalized e-banking experience to customers." (’508 Patent, col. 1:56-62). This fragmentation also prevents a "unified means for regulating their systems through a common set of control consoles." (’508 Patent, col. 1:62-64).
• The Patented Solution: The invention proposes a "client-server platform configured to unify a plurality of e-banking touch points" through a "common multi-channel server." (’508 Patent, col. 2:9-12, 2:22-23). This server integrates with existing banking channels, collects customer and transaction data, and uses this information to deliver personalized content, such as customized transaction options or targeted advertisements, across any of the unified touch points. (’508 Patent, col. 2:23-36). For instance, the system can store a customer's typical withdrawal amount and prompt them with that specific option on subsequent visits to any networked ATM to create an "accelerated transaction experience." (’508 Patent, col. 5:25-34).
• Technical Importance: The described system aims to provide a "consistent, reliable and high quality transactional environment" across a bank's otherwise disconnected electronic service channels. (’508 Patent, col. 2:13-15).

Key Claims at a Glance

• The complaint asserts infringement of claims 2, 7, 14, and 17. (Compl. ¶8).
• An Inter Partes Review Certificate issued April 26, 2023 cancelled claims 1, 3-7, 9-13, 15, 16, and 18-20.
• Of the asserted claims, Claim 7 is an independent claim that was cancelled by the IPR. Claims 2, 14, and 17 are dependent claims. Claim 2 depends from cancelled Claim 1; Claims 14 and 17 depend from cancelled Claim 13.
• The essential elements of asserted (but cancelled) independent Claim 7 include:
  • providing a common multi-channel server coupled to e-banking touch points and computer systems
  • receiving an actionable input from a touch point
  • retrieving previously stored data associated with the input
  • delivering the retrieved data to the touch point
  • storing transactional usage data from the session
  • monitoring the active session in real-time for selection of targeted marketing content
  • selecting the targeted marketing content in real-time based on monitoring
  • transmitting the targeted content to the touch point for user response, which determines if additional related information is sent
• The complaint does not explicitly reserve the right to assert other claims, but its infringement allegations are described as "preliminary." (Compl. ¶9).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities 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 describe the specific functionality of any of M&T Bank's products, such as its mobile application, online banking portal, or ATM network. The allegations are directed at a generic "unified banking system" which is alleged to "construct" a system for providing "personalized financial services." (Compl. ¶7, ¶10). No further technical details regarding the operation of the accused instrumentalities are provided.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint states that support for its infringement allegations is found in a "preliminary exemplary table attached as Exhibit B." (Compl. ¶9). This exhibit was not filed with the complaint. The body of the complaint contains only conclusory allegations that Defendant's systems infringe, without providing specific facts that map any feature of an accused product to the elements of the asserted patent claims. (Compl. ¶8). The complaint does not provide sufficient detail for analysis of infringement on a claim-by-claim basis.

Identified Points of Contention

• Claim Viability: The primary and potentially dispositive issue is that all claims asserted in the complaint (2, 7, 14, 17) appear to be invalid, having been either directly cancelled (Claim 7) or rendered unassertable as dependents of cancelled claims (Claims 2, 14, 17) by an IPR certificate that issued before the lawsuit was filed. This raises the question of whether the complaint states a viable claim for relief.
• Factual Basis: Should the plaintiff be permitted to amend its complaint to assert surviving claims, a central issue will be whether it can plead sufficient facts to meet the plausibility standard under Twombly/Iqbal. The current complaint lacks any specific factual allegations tying the operation of M&T Bank's systems to the limitations of any patent claim, such as the requirements for real-time monitoring and selection of targeted marketing content. (e.g., ’508 Patent, col. 10:5-18).

V. Key Claim Terms for Construction

Analysis is based on asserted (but cancelled) independent Claim 7.

Term: "e-banking touch point"

• Context and Importance: The scope of this term is fundamental to the patent, as it defines the universe of devices the claimed system unifies. Practitioners may focus on this term because its construction will determine whether a diverse range of modern banking interfaces, such as mobile apps, websites, and ATMs, are covered by the claims.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification provides a non-exhaustive list of examples, including 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. 11:55-62). This broad list suggests an inclusive definition covering nearly any electronic interface used for banking.
  • Evidence for a Narrower Interpretation: A party could argue that to be a "touch point" within the meaning of the claim, the device must be capable of performing all the functions recited in the claim, including receiving "targeted marketing content" and enabling a user response. (’508 Patent, col. 10:13-18). This could potentially exclude devices with more limited or non-interactive functionalities.

Term: "targeted marketing content"

• Context and Importance: This term is critical for the marketing-related limitations of Claim 7. Its definition will determine whether generic advertisements suffice, or if the content must be specifically selected based on the real-time activity of the user during a particular session.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent states that marketing content may include "advertisements, promotions, ticker-style messages, comparisons of services offered by competing financial institutions or any other suitable source of authored content." (’508 Patent, col. 6:45-49). This could support an argument that a wide variety of promotional material qualifies.
  • Evidence for a Narrower Interpretation: Claim 7 requires that the "targeted marketing content" be selected "in real-time" based on "monitoring... an active session." (’508 Patent, col. 10:9-13). The specification further describes a detailed workflow where marketing personnel manage and schedule "targeted campaigns" for delivery. (’508 Patent, col. 7:1-8). This language may support a narrower construction requiring a dynamic, session-specific selection process, as opposed to the display of pre-scheduled, generic ads.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement. (Compl. ¶10-11). It alleges inducement based on Defendant encouraging or instructing customers on "how to construct a unified banking system," an allegation that appears directed at the wrong actor, as customers use rather than construct the system. (Compl. ¶10). The basis for knowledge is pleaded as of "at least the filing date of the lawsuit." (Compl. ¶10, fn. 1; ¶11, fn. 2).

Willful Infringement

The complaint seeks a finding of willful infringement and treble damages, based on alleged post-suit knowledge of the patent. (Compl. ¶V.e; Compl. ¶10, fn. 1).

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

• A core issue will be one of claim viability: can the lawsuit proceed when every asserted patent claim was either cancelled or rendered unassertable by an Inter Partes Review certificate issued months prior to the filing of the complaint? This raises a threshold question about the legal sufficiency of the pleading under Federal Rule of Civil Procedure 12(b)(6).
• A second key question will be one of factual sufficiency: assuming Plaintiff amends its complaint to assert surviving claims, can it provide specific, non-conclusory allegations detailing how Defendant’s accused banking platform actually performs the functions required by the patent, particularly the claimed real-time, session-based monitoring and targeted content delivery, to satisfy the pleading standards of Twombly and Iqbal?