mCom IP LLC v. DIME Community Bancshares

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: mCom IP, LLC (Texas)
  • Defendant: Dime Community Bancshares, Inc. d/b/a Dime Community Bank (New York)
  • Plaintiff’s Counsel: David J. Hoffman; Ramey LLP
• Case Identification: 1:23-cv-08806, 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 there, and conducts substantial business in the forum.
• Core Dispute: Plaintiff alleges that Defendant’s unified banking systems and services infringe a patent related to integrating various electronic banking "touch points" through a central server to provide personalized financial services.
• Technical Context: The technology addresses the integration of disparate customer-facing banking channels, such as ATMs, online portals, and kiosks, into a unified system for consistent and personalized user experiences.
• Key Procedural History: An Inter Partes Review (IPR) proceeding, IPR2022-00055, was previously filed against the patent-in-suit. The resulting IPR certificate, issued on April 26, 2023, cancelled claims 1, 3-7, 9-13, 15, 16, and 18-20. The complaint, filed after the IPR certificate was issued, asserts infringement of claims 2, 7, 14, and 17. The validity of these asserted claims is a threshold issue, as claim 7 is expressly cancelled, and claims 2, 14, and 17 are dependent on other claims that were cancelled by the IPR (claims 1 and 13).

Case Timeline

Date	Event
2005-11-14	'508 Patent Priority Date
2014-10-14	'508 Patent Issue Date
2021-10-15	IPR2022-00055 Filed Against '508 Patent
2023-04-26	IPR Certificate Issued, Cancelling Numerous '508 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"

• 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's background describes the problem of conventional electronic banking systems, such as ATMs and online banking portals, existing as "stand-alone systems" ('508 Patent, col. 1:55-60). This fragmentation limits a financial institution's ability to provide a "personalized e-banking experience" and regulate its various electronic channels through a "common point of control" ('508 Patent, col. 1:60-67).
• The Patented Solution: The invention proposes a client-server architecture centered on a "common multi-channel server" that integrates with a financial institution's various "e-banking touch points" (e.g., ATMs, kiosks, web interfaces) ('508 Patent, col. 2:21-24, Fig. 1). This server is designed to collect and unify transactional and customer data from all touch points, allowing the institution to manage marketing, monitor system activity, and deliver a personalized experience (e.g., pre-set withdrawal amounts, targeted ads) to customers regardless of which touch point they use ('508 Patent, col. 2:24-36).
• Technical Importance: This approach aims to transform disconnected transaction points into a cohesive, centrally managed network, enabling consistent personalization and marketing across all electronic channels.

Key Claims at a Glance

• The complaint asserts dependent claims 2, 7, 14, and 17 (Compl. ¶8). However, the IPR certificate indicates claim 7 is cancelled and claims 2, 14, and 17 depend from other cancelled claims.
• Independent Claim 7 (Cancelled): This was a method claim for constructing a unified banking environment, with key elements including:
  • 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 (including user-defined preferences).
  • Delivering the retrieved data back to the touch point.
  • Storing new transactional usage data.
  • Monitoring the session for selection of targeted marketing content.
  • Transmitting the marketing content for user response.
• The complaint reserves the right to assert additional claims (Compl. ¶8).

III. The Accused Instrumentality

Product Identification

• The complaint does not name specific products. It accuses Defendant's "systems, products, and services of unified banking systems" generally (Compl. ¶8).

Functionality and Market Context

• The complaint alleges that Defendant "maintains, operates, and administers" these unified banking systems (Compl. ¶8). The functionality is not described in detail, but is characterized as infringing by allowing the "construction of a unified banking system" (Compl. ¶10). The complaint does not provide sufficient detail for analysis of the specific technical operation of the accused systems or their market positioning.

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 but does not include the exhibit (Compl. ¶9). The narrative allegations are high-level. Plaintiff alleges that Defendant's unified banking systems infringe the '508 patent by enabling customers to use various electronic touch points that are unified through a central system (Compl. ¶7-8). The complaint asserts that Defendant directly infringes by using the claimed systems and also induces and contributes to infringement by instructing and encouraging its customers to use the infringing systems (Compl. ¶10-11). The allegations lack specific details correlating features of Defendant's banking platform to the discrete limitations of any asserted claim.

• Identified Points of Contention:
  • Claim Validity: The primary and likely dispositive issue is the validity of the asserted claims. As noted, the complaint asserts claims that the USPTO's public records show are either expressly cancelled (claim 7) or dependent on cancelled claims (claims 2, 14, 17). The court will have to address whether a viable claim for infringement can be maintained.
  • Technical Questions: Assuming any claim were found to be valid, a key technical question would be whether Defendant's infrastructure actually employs a "common multi-channel server" that unifies disparate touch points as claimed, or if the various channels (e.g., web, mobile app, ATM network) operate on separate, non-integrated platforms that merely access a common back-end database. The complaint does not provide evidence to resolve this question.

V. Key Claim Terms for Construction

Given that all asserted claims appear to be invalid post-IPR, claim construction may be a moot point. However, should the case proceed, the following term from the now-cancelled independent claims would be central.

• The Term: "e-banking touch point" (from cancelled independent claims 1 and 7)
• Context and Importance: This term defines the scope of the devices and systems that are being "unified." The breadth of this term is critical to determining infringement. A narrow definition could exclude some of Defendant's services, while a broad one would be more likely to read on them. Practitioners may focus on this term because its definition determines whether the patent covers only specific hardware listed in the specification or extends more broadly to any modern customer interaction channel, such as a mobile app.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims themselves list a wide variety of devices in the alternative ("one or more of 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") ('508 Patent, col. 8:54-62). This extensive list could support an argument that the term was intended to be interpreted broadly to cover any electronic means of interacting with a bank.
  • Evidence for a Narrower Interpretation: An accused infringer could argue the term should be limited to the specific examples and embodiments described. The specification repeatedly refers to unifying physical, on-premises hardware like ATMs and SSCCs with web portals ('508 Patent, col. 3:33-37; Fig. 1). An argument could be made that the term's meaning is anchored to the types of distinct, fragmented systems that existed at the time of invention, potentially creating a distinction with modern, natively integrated digital platforms.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement by asserting Defendant "actively encouraged or instructed others (e.g., its customers)" on how to use its products to "construct a unified banking system" ('508 Patent, ¶10). It also alleges contributory infringement on a similar basis (Compl. ¶11).
• Willful Infringement: The complaint alleges knowledge of the '508 patent "from at least the filing date of the lawsuit" and reserves the right to amend if pre-suit knowledge is discovered (Compl. ¶10, fn. 1; ¶11, fn. 2). This pleading seeks to establish a basis for post-suit willful infringement.

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

This case presents foundational challenges for the Plaintiff that will likely be addressed at the earliest stages of litigation. The central questions for the court appear to be:

1. A dispositive question of claim viability: Can the Plaintiff maintain an infringement action based on claims that public USPTO records, specifically the IPR certificate for IPR2022-00055, indicate have been cancelled or rendered invalid by virtue of depending from cancelled claims?

2. A question of pleading sufficiency: Even if any asserted claim were deemed valid, does the complaint's high-level accusation against "unified banking systems" without identifying specific products or mapping them to claim limitations meet the plausibility standard required for patent infringement complaints under Iqbal/Twombly?

3. A core question of technical scope: Should the case proceed to the merits, the dispute would turn on whether the term "common multi-channel server" can be construed to read on the Defendant's potentially more modern, cloud-based, or distributed banking architecture, as opposed to the specific client-server model depicted in the patent.