Unified Patents LLC v. mCom IP LLC

1. Case Identification

• Case #: IPR2022-00055
• Patent #: 8,862,508
• Filed: October 15, 2021
• Petitioner(s): Unified Patents, LLC
• Patent Owner(s): mCom IP, LLC
• Challenged Claims: 1, 3-7, 9-13, 15-16, and 18-20

2. Patent Overview

• Title: Unified Electronic Banking Environment
• Brief Description: The ’508 patent discloses a method and system for a unified banking environment that delivers personalized content to users. The system uses a multi-channel server to connect various e-banking touch points (e.g., ATMs, PDAs, PCs) with financial institutions, allowing users to conduct transactions and receive targeted marketing during an active session.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lawlor, Bouve, De Leo, and Looney - Claims 1, 3, 5-7, 9, and 11-12 are obvious over Lawlor in view of Bouve, De Leo, and Looney.

• Prior Art Relied Upon: Lawlor (Patent 5,870,724), Bouve (Patent 5,682,525), De Leo (Application # 2003/0141360), and Looney (Patent 7,925,549).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lawlor, the primary reference, taught a unified electronic banking system with a central computer (a multi-channel server) connected to remote terminals (e-banking touch points) and member banks. Lawlor disclosed storing user data, retrieving it upon user input (a PIN), and delivering targeted advertising. To the extent Lawlor did not explicitly teach a "control console," Bouve supplied this element by teaching an operator-controlled computer system for managing and modifying a remote database. Petitioner asserted that De Leo taught using a variety of modern e-banking touch points, such as ATMs, PDAs, and kiosks, which was a simple expansion of Lawlor’s remote terminals. Finally, Looney was cited for teaching the real-time selection of targeted marketing content based on user-specific information and real-time data, an improvement over Lawlor's more static ad selection.
  • Motivation to Combine: A POSITA would combine these references to improve the functionality of Lawlor's foundational system. Specifically, a POSITA would combine Bouve with Lawlor to implement a well-known method for managing the system's database. De Leo would be added to expand the system's reach to more common and capable devices, a natural evolution to attract more users. Looney would be incorporated to enhance the targeted advertising feature—an express goal of Lawlor—by making it more dynamic and effective, thus improving return on investment.
  • Expectation of Success: Petitioner contended a POSITA would have a high expectation of success because each combination involved applying known, conventional technologies for their intended purposes to achieve predictable results. Integrating a control console (Bouve), supporting more device types (De Leo), and using real-time ad selection (Looney) were all straightforward improvements to a system like Lawlor's.

Ground 2: Obviousness over Lawlor, Bouve, De Leo, Looney, and Kawan - Claims 13, 15-16, and 19-20 are obvious over the combination of Ground 1 and Kawan.

• Prior Art Relied Upon: Lawlor (’724 patent), Bouve (’525 patent), De Leo (’360 application), Looney (’549 patent), and Kawan (Patent 5,796,832).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address system claims requiring the multi-channel server to be coupled to "one or more independent computer systems" associated with "an independent financial institution." Petitioner argued that while Lawlor inherently disclosed this, Kawan explicitly taught that financial institutions utilize independent automated systems, including host computers, for maintaining customer account records. Kawan's teaching was asserted to directly map onto the "independent computer system" limitation.
  • Motivation to Combine: A POSITA would combine Kawan with the Lawlor-based system because Lawlor's system required communication with backend banking systems to function. Kawan merely provided the well-known, explicit details of how such independent banking systems operate. A POSITA would have naturally looked to a reference like Kawan to implement the necessary backend infrastructure for Lawlor's services.
  • Expectation of Success: Success was expected because implementing Kawan's conventional independent banking system was a necessary and predictable step to make the Lawlor system fully operational. The integration required no significant modification.

Ground 3: Obviousness over Lawlor, Bouve, De Leo, Looney, and Arsenault - Claims 4 and 10 are obvious over the combination of Ground 1 and Arsenault.

• Prior Art Relied Upon: Lawlor (’724 patent), Bouve (’525 patent), De Leo (’360 application), Looney (’549 patent), and Arsenault (Patent 7,877,290).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Arsenault to address dependent claims requiring the step of "determining whether said marketing content is classified as being one or more of current or approved content." Petitioner alleged that Arsenault taught a system for delivering advertisements to remote devices that specifically addressed this problem. Arsenault disclosed only caching and displaying advertisements that are on a current roster and discarding those that are expired or incompatible with the receiving device's sophistication.
  • Motivation to Combine: When creating a system with a diverse range of touch points (as taught by De Leo), a POSITA would be motivated to ensure that the delivered advertisements are both current and suitable for each specific device. Arsenault provided a known solution to this predictable problem, making its combination a logical step to improve system reliability and user experience.
  • Expectation of Success: A POSITA would expect success because adding Arsenault's content control logic would involve rudimentary software checks at the remote terminals, requiring no significant hardware or architectural changes to the combined system.
• Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 18 (Ground IV) based on the combination of Lawlor, Bouve, De Leo, Looney, Kawan, and Arsenault, relying on the same rationale provided in Grounds 2 and 3.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv would be improper. It asserted that it is not a party to any of the 33 parallel district court litigations involving the ’508 patent. Furthermore, Petitioner argued that those cases were in very early stages, with most trial dates not yet set, meaning an IPR decision would be available long before any trial. Petitioner contended these factors weighed heavily against denial and in favor of institution to promote judicial efficiency.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-7, 9-13, 15-16, and 18-20 of the ’508 patent as unpatentable.