mCom IP LLC v. Prosperity Bancshares Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: mCom IP, LLC (Texas)
  • Defendant: Prosperity Bancshares, Inc. (Texas)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: mCom IP LLC v. Prosperity Bancshares Inc, 6:23-cv-00253, W.D. Tex., 04/06/2023
• Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains a "regular and established place of business" within the district and has allegedly committed acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s unified banking systems infringe a patent related to integrating various electronic banking touch points to provide a centralized, personalized customer experience.
• Technical Context: The technology concerns a client-server platform designed to unify disparate e-banking terminals, such as ATMs and self-service kiosks, under a common control system to manage data and deliver targeted content.
• Key Procedural History: An Inter Partes Review (IPR) proceeding, IPR2022-00055, was previously filed against the patent-in-suit. An IPR certificate was issued on April 26, 2023, shortly after this complaint was filed. The IPR resulted in the cancellation of claims 1, 3-7, 9-13, 15, 16, and 18-20. This includes all three independent claims (1, 7, and 13) upon which the asserted dependent claims (2, 8, 14, and 17) rely, raising a fundamental question regarding the viability of the asserted claims.

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 conventional electronic banking systems, such as ATMs, as "stand-alone systems" that limit a financial institution's ability to offer a "personalized e-banking experience" or regulate its various systems through a "unified means." (col. 1:56-65).
• The Patented Solution: The invention proposes a "client-server environment" centered on a "common multi-channel server" that integrates various "e-banking touch points" (col. 2:20-24). This server is designed to unify customer and transaction data from all connected touch points, allowing a financial institution to centrally manage the systems and deliver personalized content, such as targeted advertisements, to customers during their transactions (col. 2:24-36; FIG. 1).
• Technical Importance: The technology aimed to provide an "added-value platform" to consolidate disparate banking terminals into a cohesive and centrally manageable network, enabling a more consistent and personalized customer experience (col. 2:1-4).

Key Claims at a Glance

• The complaint asserts dependent claims 2, 8, 14, and 17 (Compl. ¶8). These claims depend on independent claims 1, 7, and 13, respectively, which have been cancelled by the IPR proceeding noted in Section I.
• Independent Claim 1 (Method): The essential elements include:
  • providing a common multi-channel server coupled to multiple e-banking touch points and at least one computer system
  • 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 current session
  • monitoring the session for selection of targeted marketing content
  • selecting targeted marketing content based on user-defined preferences
  • transmitting the marketing content to the touch point for acceptance or rejection
• Independent Claim 13 (System): The essential elements include:
  • a common multi-channel server
  • one or more e-banking touch points (e.g., ATM, SSCC, kiosk) communicatively coupled to the server
  • a data storage device for storing transactional usage data
  • wherein the system monitors an active session for selection of targeted marketing content and transmits it to a touch point

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as Defendant’s "systems, products, and services of unified banking systems" (Compl. ¶8).

Functionality and Market Context

The complaint alleges that Defendant "maintains, operates, and administers" these unified banking systems, which are alleged to perform the methods claimed in the '508 patent (Compl. ¶8). The complaint does not provide specific technical details about the architecture or operation of the accused systems. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges infringement of claims 2, 8, 14, and 17 and refers to a "preliminary exemplary table" in Exhibit B for detailed support (Compl. ¶9). As this exhibit was not included with the public filing, an element-by-element analysis of the infringement allegations is not possible from the complaint itself. The pleading broadly alleges that Defendant's "unified banking systems" practice the inventions claimed in the ’508 Patent (Compl. ¶8).

V. Key Claim Terms for Construction

• The Term: "common multi-channel server" (appears in independent claims 1, 7, and 13)
  • Context and Importance: This term is the central component of the claimed system. Its construction is critical for determining whether a defendant's infrastructure, which may be physically distributed or cloud-based, falls within the scope of the claims. Practitioners may focus on this term to dispute whether a collection of logically separate servers can constitute a "common" server as envisioned by the patent.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes the server functionally as a platform that "unify[s] transactional and customer related data" and "integrates with existing channel systems" (col. 2:22-26). This functional language may support an interpretation that is not limited to a single physical machine.
  • Intrinsic Evidence for a Narrower Interpretation: The patent’s Figure 1 depicts a single, central "multi-channel server 102" as the hub connecting all other system components, which could be argued to support a more limited construction requiring a singular, centralized architecture (col. 3:28-32; FIG. 1).
• The Term: "e-banking touch point" (appears in independent claims 1, 7, and 13)
  • Context and Importance: The scope of this term defines the universe of customer-facing devices covered by the patent. A key issue may be whether modern interfaces like mobile banking applications or online banking websites, which differ from the physically-grounded examples in the patent, qualify as "touch points."
  • Intrinsic Evidence for a Broader Interpretation: Claim 1 recites a long list of exemplary devices, including an "online accessible banking website," a "personal digital assistant (PDA)," and a "wireless device," concluding with "or a combination of two or more thereof" (’508 Patent, col. 11:45-59).
  • Intrinsic Evidence for a Narrower Interpretation: The "Description of the Related Art" section focuses on physical, self-service systems like ATMs and coin counters located in financial institutions (col. 1:29-34). An argument could be made that the core inventive concept is tied to unifying these types of in-branch physical terminals.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement by asserting Defendant "actively encouraged or instructed others (e.g., its customers...)" to use its services to "construct a unified banking system" (Compl. ¶10). Contributory infringement is alleged on a similar basis (Compl. ¶11). The complaint does not provide specific factual allegations, such as references to user manuals or marketing materials, to support these claims.
• Willful Infringement: The willfulness allegation is based on alleged knowledge of the ’508 Patent "from at least the filing date of the lawsuit," which would support a claim for post-suit willfulness only (Compl. ¶10, fn. 1; Compl. ¶11, fn. 2).

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

• A threshold issue for the court will be one of case viability: Given that an IPR certificate issued after the complaint's filing cancelled all independent claims (1, 7, 13) of the '508 patent, on what legal basis can the asserted dependent claims (2, 8, 14, 17), which rely entirely on those cancelled claims, remain enforceable?
• Should the asserted claims be found to have survived the IPR, a central question will be one of technical scope: Can the term "common multi-channel server", which is depicted in the patent with a centralized architecture, be construed to read on the potentially distributed, cloud-hosted, or third-party-managed infrastructure common in modern banking systems?