mCom IP, LLC v. HSBC Bank USA, N.A.

Background

mCom IP, LLC owns, by assignment, U.S. Patent No. 8,862,508, which concerns a system and method for providing unified, multi-channel retail banking services. mCom sued HSBC Bank USA, N.A., alleging direct, induced, and contributory patent infringement involving claims 2, 7, 14, and 17. HSBC moved to dismiss the First Amended Complaint under the pleading standard requiring enough factual content to make infringement plausible.

Before this lawsuit, the Patent Trial and Appeal Board had determined that claims 1, 3–7, 9–13, 15, 16, and 18–20 were unpatentable. mCom did not appeal, and the Patent Office issued a certificate canceling those claims on April 26, 2023. Claim 7 was among the canceled claims. Claims 14 and 17 depended on claim 13, and claim 2 depended on claim 1.

The Court’s Analysis

The court held that canceled claim 7 could not support an infringement action. Once the claim was canceled, mCom no longer had a cause of action based on it.

For claims 2 and 14, the amended complaint did not identify any allegedly infringing HSBC product. Although mCom argued in opposition that the product was “HSBC Digital Banking,” that name did not appear in the amended complaint. The court therefore dismissed the claims based on claims 2 and 14.

For claim 17, the amended complaint included a claim chart referring to HSBC marketing materials and screenshots of web pages, including pages concerning ways to bank and cookies. The court found that these materials did not identify a specific accused product or explain how the separate offerings were related. The allegations also did not plausibly show that an HSBC product met every limitation of claim 17. In particular, they did not plausibly allege the required real-time monitoring and targeted-marketing functions or the “common point of control” that distinguishes claim 17 from the canceled claim 13.

Because mCom had not adequately pleaded direct infringement, the court also dismissed its claims for indirect infringement. Those claims required factual allegations supporting the existence of at least one direct infringer.

Disposition

HSBC’s motion to dismiss the First Amended Complaint with prejudice was granted. The court also granted HSBC’s request for dismissal with prejudice because mCom had already amended once after receiving notice of HSBC’s arguments and did not explain what additional allegations could cure the deficiencies. The opinion’s conclusion states that HSBC’s January 26 motion to dismiss the First Amended Complaint with prejudice was granted.