mCom IP LLC v. Goldman Sachs Bank

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: mCom IP, LLC (Texas)
  • Defendant: Goldman Sachs Bank, USA (New York)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 4:22-cv-03821, S.D. Tex., 11/02/2022
• Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established place of business in the district, committing alleged acts of infringement in the district, and conducting substantial business in the forum.
• Core Dispute: Plaintiff alleges that Defendant’s unified banking systems infringe a patent related to integrating e-banking touch points and providing personalized financial services.
• Technical Context: The technology concerns client-server architectures for financial institutions, designed to unify disparate customer interaction points (e.g., ATMs, websites) into a single, centrally managed system for data collection and personalization.
• Key Procedural History: An Inter Partes Review (IPR) was filed against the patent-in-suit on October 15, 2021 (IPR2022-00055). On April 26, 2023, the U.S. Patent and Trademark Office issued a certificate cancelling claims 1, 3-7, 9-13, 15, 16, and 18-20. The complaint, filed prior to the IPR's conclusion, asserts infringement of claims 1-20. The cancellation of all asserted independent claims (claims 1 and 7) raises a threshold question about the viability of the infringement allegations as currently pleaded.

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"

The Invention Explained

• Problem Addressed: The patent describes a problem where conventional electronic banking systems like ATMs and online portals exist as "stand-alone systems" ('508 Patent, col. 1:56-57). This fragmentation limits a financial institution's ability to offer a "personalized e-banking experience" and requires costly upgrades to legacy systems ('508 Patent, col. 1:60-65).
• The Patented Solution: The invention proposes a "client-server environment" that uses a "common multi-channel server" to integrate and unify various e-banking "touch points" ('508 Patent, col. 2:18-24). This server collects transactional and customer-related data from all touch points, allowing it to be managed from a central location and used to deliver personalized content, such as targeted marketing or customized transaction options, back to the customer at any touch point ('508 Patent, col. 2:24-35; Fig. 1).
• Technical Importance: The described solution aims to provide financial institutions a unified platform to manage diverse electronic channels, enhance customer experience through personalization, and create new marketing opportunities without replacing existing infrastructure ('508 Patent, col. 2:9-14).

Key Claims at a Glance

• The complaint asserts infringement of independent claims 1 and 7, among others ('Compl. ¶8). It should be noted that an IPR certificate has since cancelled these claims.
• Independent Claim 1 (Cancelled):
  • Providing a common multi-channel server coupled to multiple e-banking touch points and at least one computer system with a control console.
  • The touch points comprise at least two different device types (e.g., ATM, kiosk, website, mobile device).
  • Receiving an "actionable input" from a touch point.
  • Retrieving previously stored data associated with the input (including user-defined preferences).
  • Delivering the retrieved data back to the touch point.
  • Storing new transactional usage data from the interaction.
  • Monitoring the session to select and transmit targeted marketing content.
• Independent Claim 7 (Cancelled):
  • Providing a common multi-channel server coupled to one or more 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 data to the touch point.
  • Storing new transactional data.
  • Monitoring the session for selection of targeted marketing content.
  • Transmitting the marketing content for user response (acceptance, rejection, or no response).
• The complaint reserves the right to assert infringement of dependent claims 2-6 and 8-20 (Compl. ¶8, ¶10, ¶11).

III. The Accused Instrumentality

Product Identification

The complaint does not identify specific Goldman Sachs products or services by name. It broadly accuses "systems, products, and services of unified banking systems that [Defendant] maintains, operates, and administers" (Compl. ¶8).

Functionality and Market Context

The complaint alleges that Defendant’s systems provide for a "unified banking system" (Compl. ¶7). It further alleges that Defendant has "put the inventions claimed by the '508 Patent into service (i.e., used them)" (Compl. ¶8). The complaint does not provide further technical detail on the functionality or architecture of the accused systems. 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 this exhibit was not included with the filed complaint (Compl. ¶9). In the absence of a claim chart, the infringement theory must be drawn from the complaint’s narrative allegations. The core allegation is that Defendant's "unified banking systems" practice the methods claimed in the '508 Patent (Compl. ¶8). The complaint does not, however, map specific features of any accused system to the elements of the asserted claims.

• Identified Points of Contention:
  • Threshold Legal Question: The primary issue is whether Plaintiff's action can be maintained given that all asserted independent claims (1 and 7) and most asserted dependent claims were cancelled by an IPR certificate issued after the complaint was filed. A complaint premised on cancelled claims may be subject to dismissal.
  • Pleading Sufficiency: A potential issue is whether the complaint's broad, conclusory allegation that Defendant operates "unified banking systems" without identifying a specific product or its functionality provides sufficient notice under federal pleading standards.
  • Technical Questions: Assuming the case proceeds, a central technical question would be whether Defendant’s banking infrastructure, whatever its architecture, practices the specific "common multi-channel server" model described and claimed in the patent. For example, does it "unify transactional and customer related data processed throughout all e-banking touch point services" in the manner required by the patent? ('508 Patent, col. 2:24-27).

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of specific claim construction disputes. However, based on the patent's technology, the following terms from the (now cancelled) independent claims would likely be central to any infringement analysis.

• The Term: "common multi-channel server"

• Context and Importance: This term is the central component of the claimed invention. Its construction determines the required architecture of an infringing system. Practitioners may focus on this term to dispute whether a modern, distributed, or cloud-based banking platform qualifies as the single, logically unified server described in the patent.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the server's function as to "integrate[] with existing channel systems provided by financial institutions, associating and connecting them to a common multi-channel server" ('508 Patent, col. 2:21-24), which could suggest a focus on function over a specific physical or software structure.
  • Evidence for a Narrower Interpretation: Figure 1 depicts a distinct server (102) as a central hub connecting various touch points and databases. The description of this server as a "single operational platform" residing "in an IT center of any particular banking branch" could support a narrower construction tied to a more centralized, non-distributed architecture ('508 Patent, col. 4:29-32).

• The Term: "e-banking touch points"

• Context and Importance: The scope of this term defines the types of customer interfaces that must be unified by the accused system. The claims require the system to connect to "at least two different types" of these devices ('508 Patent, col. 11:51-54). The dispute would likely concern whether Defendant's specific set of customer-facing applications (e.g., a mobile app and a website) meet the definition and are "coupled" to a central server in the claimed manner.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: Claim 1 provides a broad, 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. 11:57-col. 12:4).
  • Evidence for a Narrower Interpretation: A defendant might argue that the term, in the context of the specification, implies devices physically located at or associated with a "financial branch location" ('508 Patent, col. 3:31), potentially attempting to exclude purely remote or web-based interactions not tied to a physical branch network.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant "actively encouraged or instructed others (e.g., its customers...)" on how to "construct a unified banking system" ('Compl. ¶10). It also alleges contributory infringement based on encouraging the use of its products and services (Compl. ¶11). These allegations are not supported by specific factual examples, such as citations to user manuals or marketing materials.
• Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the '508 patent "from at least the filing date of the lawsuit" (Compl. ¶10, ¶11). This allegation appears to be based on post-suit knowledge only, though Plaintiff reserves the right to amend if pre-suit knowledge is discovered.

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

1. Threshold Viability: The most immediate and central question is one of legal survival: can this lawsuit proceed when its infringement allegations are premised on claims, including all asserted independent claims, that were cancelled in a concluded IPR proceeding?
2. Pleading Specificity: A key procedural question is one of sufficiency: do the complaint’s generalized allegations against unnamed "unified banking systems," without reference to specific products or functionalities, meet the plausibility standard required to state a claim for patent infringement?
3. Technical Scope: Should the case move forward, a core issue will be one of definitional scope: can the term "common multi-channel server," which is described in the context of a 2005-era client-server architecture, be construed to read on Defendant's modern, likely distributed or cloud-based, financial technology platform?