DCT
2:21-cv-00168
mCom IP LLC v. Unicom Systems Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: mCom IP, LLC (Texas)
- Defendant: Unicom Systems, Inc. (California)
- Plaintiff’s Counsel: Ramey & Schwaller, LLP
- Case Identification: 2:21-cv-00168, E.D. Tex., 05/14/2021
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district, located in Plano, Texas, and conducts substantial business in the forum.
- Core Dispute: Plaintiff alleges that Defendant’s software development toolkit for the banking industry infringes a patent related to unifying disparate electronic banking channels into a single, personalized system.
- Technical Context: The technology addresses the challenge of integrating various customer-facing financial service points—such as ATMs, websites, and mobile apps—onto a common server platform to provide consistent user experiences and enable targeted marketing.
- Key Procedural History: Subsequent to the filing of this complaint, an Inter Partes Review Certificate for the patent-in-suit (U.S. Patent No. 8,862,508 K1) was issued on April 26, 2023. The certificate indicates that asserted independent claims 1 and 7, along with numerous other claims, have been cancelled. This post-filing event fundamentally affects the viability of the infringement allegations presented in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2005-11-14 | ’508 Patent Priority Date |
| 2014-10-14 | ’508 Patent Issue Date |
| 2021-05-14 | 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 describes a problem where conventional electronic banking systems like ATMs, kiosks, and online banking websites exist as "stand-alone systems," which limits a financial institution's ability to provide a consistent, "personalized e-banking experience" for customers across these different channels and creates difficulties in managing the systems centrally (’508 Patent, col. 1:53-64).
- The Patented Solution: The invention proposes a client-server architecture centered on a "common multi-channel server" that connects to and unifies a financial institution's various "e-banking touch points" (’508 Patent, col. 2:21-28). This server collects and stores customer transaction data and preferences, allowing for a personalized experience (e.g., pre-filled transaction amounts) and targeted marketing content to be delivered to the customer at any touch point, as illustrated in the system architecture of Figure 1 (’508 Patent, Fig. 1; col. 2:31-36).
- Technical Importance: This approach sought to move beyond siloed banking channels to create an integrated digital ecosystem, enabling financial institutions to leverage customer data for personalization and marketing across all points of interaction (’508 Patent, col. 2:8-17).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 7, and reserves the right to assert claims 2-6 and 8-20 (Compl. ¶8).
- Independent Claim 1 (Method):
- Providing a common multi-channel server coupled to more than one e-banking touch point (of at least two different types, e.g., ATM, website) and a control console.
- Receiving an actionable input from a touch point.
- Retrieving previously stored data (e.g., user preferences) associated with the input.
- Delivering the retrieved data to the touch point.
- Storing new transactional usage data.
- Monitoring a user's active session in real-time for selection of targeted marketing content correlated to user preferences.
- Selecting and transmitting that marketing content in real-time to the touch point for user response.
- Independent Claim 7 (Method):
- Providing a common multi-channel server coupled to one or more e-banking touch points (e.g., ATM, website, kiosk) associated with a financial institution.
- Receiving an actionable input from a touch point.
- Retrieving previously stored data (from financial institutions and user preferences).
- Delivering the retrieved data to the touch point.
- Storing new transactional usage data.
- Monitoring, selecting, and transmitting targeted marketing content in real-time during an active session based on user preferences.
III. The Accused Instrumentality
Product Identification
- UNICOM® Digital Transformation Toolkit (UDTT™), formerly known as UNICOM® Multichannel Bank Transformation Toolkit (BTT™) (Compl. ¶9, p. 3). The complaint also references UNICOM® Intelligence as part of the infringing system (Compl. p. 7).
Functionality and Market Context
- The complaint alleges UDTT is a software framework that provides a "runtime infrastructure based on IBM WebSphere Application Server" for the banking industry (Compl. ¶9, p. 3). It is described as supporting "faster multichannel application development" and providing a "bridge between a client app and a BTT application program" running on an application server (Compl. ¶9, p. 4). The system is alleged to support various client devices, including web browsers and mobile devices, and to provide "common services across channels" for creating financial transactions (Compl. ¶9, pp. 4-5). An architectural diagram provided in the complaint depicts UDTT as a central toolkit connecting a runtime framework, integrated development tools, and support for various client devices (Compl. ¶9, p. 4).
IV. Analysis of Infringement Allegations
8,862,508 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing at least one common multi-channel server coupled to more than one e-banking touch points... | Defendant provides UDTT, described as a "runtime infrastructure" that supports multichannel application development for the banking industry. | ¶9, p. 3 | col. 4:28-36 |
| ...said more than one plurality of e-banking touch points are comprised of at least two different types of e-banking touch point devices... | The UDTT system supports various devices including web browsers and mobile devices, which act as a bridge to applications running on an application server. | ¶9, p. 4 | col. 11:55-63 |
| receiving an actionable input from at least one e-banking touch point; | The UDTT product facilitates the creation of financial transactions, which are initiated by user input on devices like a mobile app. The complaint includes screenshots of a mobile transfer screen as evidence of this input (Compl. ¶9, p. 5). | ¶9, p. 5 | col. 11:66-67 |
| retrieving previously stored data associated with said actionable input, wherein said previously stored data is accessible to any one of said e-banking touch points... | Upon login, the accused system displays a "Customer Profile" containing account summary data, which is allegedly retrieved from stored sources and made accessible. A screenshot showing a user's account list is provided as evidence (Compl. ¶9, p. 6). | ¶9, p. 6 | col. 12:1-4 |
| delivering said retrieved data to said at least one e-banking touch point... | The retrieved customer profile and account data are delivered to and displayed on the user's touch point (e.g., a web browser). | ¶9, p. 6 | col. 5:12-14 |
| storing transactional usage data associated with said at least one e-banking touch point... | The accused system facilitates banking scenarios including "Account Inquiry" and "Account Transfer," which necessarily involve storing transactional data. | ¶9, p. 6 | col. 12:5-11 |
| monitoring via said server an active session in real-time for selection of targeted marketing content correlated to said user-defined preferences; | The accused system allegedly includes "Campaign Management" features for "Target marketing," which requires monitoring user sessions and preferences. | ¶9, p. 7 | col. 6:31-41 |
| ...selecting in real-time said targeted marketing content... and transmitting in real-time said targeted marketing content... | The UNICOM Intelligence product is alleged to gain insight into people's "attitudes, preferences and opinions" to drive customer behavior, which is presented as evidence of selecting and transmitting targeted content. | ¶9, p. 7 | col. 7:17-21 |
8,862,508 Patent Infringement Allegations (Claim 7)
(The complaint provides largely identical evidence for Claim 7 as for Claim 1)
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a common multi-channel server coupled to one or more e-banking touch points... | Defendant provides UDTT, described as a "runtime infrastructure" for the banking industry. | ¶9, p. 8 | col. 4:28-36 |
| ...each of which comprise one or more of an automatic teller/transaction machine (ATM)... an online accessible banking website, a personal digital assistant (PDA)... | The UDTT "Client Engine" allegedly provides an API that acts as a bridge between applications running on a server and client apps running on a "web browser or mobile device." | ¶9, p. 9 | col. 12:48-55 |
| receiving an actionable input from at least one e-banking touch point; | The UDTT product is alleged to have tooling to create a "financial transaction covered from front to end," which begins with user input. The complaint shows mobile banking screenshots as an example (Compl. ¶9, p. 10). | ¶9, p. 10 | col. 12:58-59 |
| retrieving previously stored data... and said previously stored data comprises data from one or more financial institutions and one or more user-defined preferences; | The complaint alleges that after a user logs in, the system retrieves and displays customer account information, as shown in a "Customer Profile" screenshot (Compl. ¶9, p. 11). | ¶9, p. 11 | col. 12:60-65 |
| storing transactional usage data... | The accused system allegedly supports "Common Banking Scenarios" such as "Account Transfer" and "Pay Bill," which involve the storage of transactional data. | ¶9, p. 11 | col. 10:1-5 |
| monitoring... selecting... and transmitting... targeted marketing content... | The UDTT system's alleged "Campaign Management" and "Target marketing" capabilities, combined with the UNICOM Intelligence product's function to understand "attitudes, preferences and opinions," are cited as evidence. | ¶9, p. 12 | col. 10:6-11 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether providing a software "toolkit" (UDTT) for customers to build and deploy their own applications constitutes "providing" a "multi-channel server" and performing the "monitoring" and "transmitting" steps of the claimed method. The analysis may distinguish between what the Defendant's product is versus what it enables a customer to do.
- Technical Questions: The complaint alleges that features like "Campaign Management" and "Target marketing" satisfy the claim limitations related to monitoring and selecting marketing content. A technical question is whether these general marketing features perform the specific real-time monitoring of an active user session to select and transmit content correlated to preferences as required by the claims.
V. Key Claim Terms for Construction
The Term: "common multi-channel server"
Context and Importance: This term is the architectural core of the invention. Its construction will determine whether the accused UDTT "runtime infrastructure" and "application server" environment falls within the scope of the claims. Practitioners may focus on whether the term requires a single, monolithic server or can encompass a distributed software framework that provides equivalent functionality.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the server's function as integrating "existing channel systems" and unifying "transactional and customer related data," which could suggest a functional rather than strictly structural definition (’508 Patent, col. 2:21-28).
- Evidence for a Narrower Interpretation: Figure 1 depicts the multi-channel server (102) as a distinct, centralized hardware component connecting various touch points and databases, which could support an interpretation requiring a more defined, singular entity (’508 Patent, Fig. 1).
The Term: "monitoring via said server an active session in real-time"
Context and Importance: This term is critical to the targeted marketing aspects of the claims. The dispute may turn on the required level of server involvement and the definition of "real-time" monitoring. The complaint points to general marketing capabilities, and the court may need to decide if this meets the specific, active monitoring required.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that marketing staff can monitor a customer's response "in real-time while his transaction is being processed," which could be read broadly to cover any system that tracks user activity during a session for marketing purposes (’508 Patent, col. 7:31-33).
- Evidence for a Narrower Interpretation: The claim language "monitoring... for selection of targeted marketing content" suggests an active, purposeful analysis of the session as it happens, not merely passive data logging for later use. The patent's description of prompting a user about a promotion and immediately receiving the response supports a narrow, interactive definition of "real-time" (’508 Patent, col. 7:21-35).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement and contributory infringement, asserting that UNICOM actively encourages and instructs its customers on "how to construct a unified banking system" using its products in a way that causes infringement (Compl. ¶¶10-11).
- Willful Infringement: The complaint alleges UNICOM has known of the ’508 patent and the underlying technology "from at least the date of issuance of the patent" (Compl. ¶¶10-11). This alleged pre-suit knowledge forms the basis for the willfulness claim (Compl. Prayer for Relief ¶e).
VII. Analyst’s Conclusion: Key Questions for the Case
- Procedural Viability: The most significant issue is the legal status of the complaint following the post-filing cancellation of asserted independent claims 1 and 7 by the USPTO. A primary question for the court will be whether any basis for the lawsuit remains.
- Direct vs. Enabled Infringement: A core technical and legal issue at the time of filing was one of agency: does providing a software toolkit that enables a customer to build an infringing system constitute direct infringement of a method claim by the toolkit provider, or does this theory rely entirely on indirect infringement?
- Functional Specificity: An evidentiary question centers on functional mapping: does the accused product's general-purpose "Campaign Management" and "Target marketing" functionality perform the specific, dynamic, and real-time session monitoring, content selection, and transmission steps recited in the asserted claims, or is there a mismatch in the technical operation?