IP Law Daily, PATENT—S.D.N.Y.: Infringement claim dismissed in electronic banking system dispute, (Apr 23, 2024)
Law Firms Mentioned:Law Office of David J. Hoffman | Wilmer Cutler Pickering Hale and Dorr LLP
Organizations Mentioned:HSBC Bank USA, N.A. | HSBC Bank USA, NA | Wilmer Cutler Hale & Dorr, LLP | mCom IP, LLC
By Kevin M. Finson
The complaint failed to tie the claims to an accused product.
A patent holder failed to plead either direct or indirect infringement by any identifiable product related to banking retail systems, the U.S. District Court in New York has held. While the level of detail required to plead a plausible claim varies, the complaint here failed to draw a connection between the valid claims and any specific accused product (mCom IP, LLC v. HSBC Bank USA, N.A., April 19, 2024, Cote, D.).
mCom IP, LLC (mCom) was the owner of U.S. Patent No. 8,862,508 (the ’508 patent), which claimed a system and method for delivering a retail banking “multi-channel solution that unifies interactive electronic banking touchpoints” in order to provide personalized financial services and a common point of control. Several of the claims of the ’508 patent were cancelled by the USPTO following inter partes review. mCom, a non-practicing entity, brought suits for infringement against numerous banks, including in the present case HSBC Bank USA, N.A. (HSBC). HSBC moved to dismiss.
Direct infringement. One of the asserted claims, Claim 7, had previously been cancelled by the USPTO and therefore could not support a claim. As to the remaining asserted claims, the complaint and attached claim chart either completely failed to identify an accused product in connection with the claim or included only screenshots of HSBC’s website without either explaining how the product in the screenshot identified an accused product, or plausibly alleging that the product satisfied all limitations of the asserted claim.
Indirect infringement. Because there was no plausible allegation of any act of direct infringement, the court held that the claims of indirect infringement must be dismissed.
The court granted the motion to dismiss and denied leave to appeal, finding that mCom had previously been given an opportunity to amend and that it failed to articulate any additional allegations that could save its infringement claims.
The Case is No. 23-cv-8801.
Attorneys: David John Hoffman (Law Office of David J. Hoffman) for mCom IP, LLC. Rauvin A. Johl (Wilmer Cutler Pickering Hale and Dorr LLP) for HSBC Bank USA, N.A.
Companies: mCom IP, LLC; HSBC Bank USA, N.A.
Cases: Patent NewYorkNews