mCom IP LLC v. American Express

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: mCom IP, LLC (Texas)
  • Defendant: American Express (Utah)
  • Plaintiff’s Counsel: Law Office of David J. Hoffman; Ramey LLP
• Case Identification: 1:23-cv-09612, S.D.N.Y., 11/01/2023
• Venue Allegations: Venue is alleged based on Defendant maintaining a regular and established place of business within the district and committing the alleged acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s unified electronic banking systems infringe a patent related to integrating e-banking touch points and providing personalized services.
• Technical Context: The technology concerns the creation of a centralized server-based system to unify disparate electronic banking channels, such as ATMs and online portals, to track customer behavior and deliver a personalized user experience.
• Key Procedural History: An Inter Partes Review (IPR) proceeding (IPR2022-00055), initiated on October 15, 2021, resulted in the U.S. Patent and Trademark Office issuing a certificate on April 26, 2023, cancelling all independent claims (1, 7, 13) and numerous dependent claims of the patent-in-suit. This complaint was filed approximately six months after the issuance of that IPR certificate.

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, issued October 14, 2014.

The Invention Explained

• Problem Addressed: The patent describes a problem where conventional electronic banking systems, such as ATMs and online banking portals, operate as "stand-alone systems," which limits a financial institution's ability to provide a consistent, personalized customer experience and to centrally manage these different channels ('508 Patent, col. 1:56-66).
• The Patented Solution: The invention proposes a client-server architecture centered on a "common multi-channel server." This server integrates various "e-banking touch points" (e.g., ATMs, kiosks, web interfaces), unifies the data from them, and uses this data to deliver personalized content and transaction options to customers across all touch points ('508 Patent, col. 2:21-36; Fig. 1). For example, the system can track a user's typical withdrawal amount at an ATM and later offer that same amount as a one-click option ('508 Patent, col. 5:29-41).
• Technical Importance: The described approach sought to move beyond siloed banking channels toward an integrated platform, enabling financial institutions to offer a more cohesive customer experience and centrally manage marketing and operations across their electronic footprint ('508 Patent, col. 2:9-14).

Key Claims at a Glance

• The complaint asserts infringement of "one or more of claims 1-20" (Compl. ¶8).
• However, an IPR certificate has cancelled all independent claims (1, 7, 13) and many dependent claims, leaving only claims 2, 8, 14, and 17 in force (U.S. 8,862,508 K1 Certificate).
• For context, the original independent method claim 1, now cancelled, included the following essential elements:
  • Providing a common multi-channel server coupled to multiple, remote e-banking touch points and at least one control console.
  • The touch points comprising at least two different device types (e.g., ATM, kiosk, PC, PDA).
  • Receiving an actionable input from a touch point.
  • Retrieving previously stored data associated with the input, where the data includes 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 to the touch point for user response.
• The complaint reserves the right to amend its infringement contentions (Compl. ¶9).

III. The Accused Instrumentality

Product Identification

• The complaint accuses "systems, products, and services of unified banking systems" that are maintained, operated, and administered by Defendant American Express (Compl. ¶8).

Functionality and Market Context

• The complaint does not identify any specific American Express product or service by name (e.g., the Amex Mobile App, the American Express website). It alleges in general terms that the accused instrumentalities are "unified banking systems" that allow for the "construction of unified banking" services (Compl. ¶¶ 8, 11). The complaint does not provide sufficient detail for analysis of the specific functionality of the accused instrumentalities.

IV. Analysis of Infringement Allegations

The complaint states that support for its allegations may be found in a "preliminary exemplary table attached as Exhibit B" (Compl. ¶9). This exhibit was not included with the complaint document provided for analysis. In its absence, the infringement theory must be inferred from the body of the complaint. The complaint alleges that Defendant's "unified banking systems" infringe the '508 Patent because Defendant put the claimed inventions "into service (i.e., used them)" (Compl. ¶8). No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Legal Question: The primary issue is how the Plaintiff can assert a patent where all independent claims have been cancelled by the USPTO. The infringement analysis depends entirely on whether Plaintiff can plausibly allege infringement of one of the four remaining dependent claims (Claims 2, 8, 14, or 17).
  • Technical Question: Assuming the case proceeds on a dependent claim, a key question will be whether the accused American Express systems practice the specific limitations added by those claims. For example, dependent claim 2 (which depends from cancelled claim 1) requires storing usage data "in association with a customer profile" ('508 Patent, col. 10:1-3). The case would require evidence that Defendant’s systems create and associate data with such a specific profile structure.

V. Key Claim Terms for Construction

While the independent claims are cancelled, their terms remain relevant as they are incorporated into the surviving dependent claims. The construction of the following term would be central to any dispute over the '508 patent.

• The Term: "e-banking touch point"
• Context and Importance: This term defines the universe of devices and interfaces to which the patented method and system apply. Its construction is critical to determining the patent's scope, especially in relation to modern, software-based banking services that did not exist or were not prevalent when the patent's priority date was set in 2005. Practitioners may focus on this term because the accused "unified banking systems" likely include modern mobile applications, and the parties would dispute whether such applications are covered.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification provides a broad, exemplary list of devices, including 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. 11:59-62). This list suggests the term was intended to be technologically inclusive.
  • Evidence for a Narrower Interpretation: The detailed description repeatedly frames the invention in the context of physical devices located at "branch locations 104," such as an "automatic teller/transaction machine (ATM) touch point 106b" and a "self-service coin counter (SSCC) touch point 106a" ('508 Patent, col. 3:31-36; Fig. 1). This could support an argument that the term is limited to hardware-based terminals managed by a financial institution, not purely software applications on a customer's personal device.

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...)" on how to use its products to "construct a unified banking system" (Compl. ¶¶ 10-11). These allegations are conclusory and do not specify the nature of the instructions or encouragement.
• Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of the '508 patent "from at least the filing date of the lawsuit" (Compl. ¶¶ 10-11). This allegation, if proven, could only support a finding of post-suit willful infringement, as no facts supporting pre-suit knowledge are alleged.

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

1. Viability of the Asserted Claims: The central threshold question for the court will be whether Plaintiff has a viable cause of action. Given that an IPR certificate has cancelled all independent claims of the '508 patent, Plaintiff must demonstrate how Defendant’s systems plausibly infringe one of the few remaining, narrow dependent claims.
2. Sufficiency of Pleading: A second key question is whether the complaint's highly generalized allegations against Defendant's unnamed "unified banking systems" satisfy the plausibility pleading requirements under Federal Circuit precedent. The lack of specific product identification or functional description may be a focus of early dispositive motions.
3. Scope of "Touch Point": Should the case proceed, a dispositive issue will be one of definitional scope: whether the term "e-banking touch point," conceived in an era of physical kiosks and early online banking, can be construed to cover the modern, app-centric financial service platforms that likely comprise the accused systems.