McOm Ip, LLC v. HSBC Bank USA, N.A.

Case: 24-1828 Document: 56 Page: 1 Filed: 05/15/2026 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit ______________________ MCOM IP, LLC, Plaintiff-Appellant v. HSBC BANK USA, N.A., Defendant-Appellee ______________________ 2024-1828 ______________________ Appeal from the United States District Court for the Southern District of New York in No. 1:23-cv-08801-DLC, Senior Judge Denise Cote. ______________________ Decided: May 15, 2026 ______________________ WILLIAM PETERSON RAMEY, III, Ramey LLP, Houston, TX, argued for plaintiff-appellant. RESHMA C. GOGINENI, Wilmer Cutler Pickering Hale and Dorr LLP, Palo Alto, CA, argued for defendant-appel- lee. Also represented by THOMAS SAUNDERS, Washington, DC. ______________________ Before DYK, MAYER, and TARANTO, Circuit Judges. Case: 24-1828 Document: 56 Page: 2 Filed: 05/15/2026 2 MCOM IP, LLC v. HSBC BANK USA, N.A. TARANTO, Circuit Judge. In 2023, mCom IP, LLC, which owns U.S. Patent No. 8,862,508, brought the present action against HSBC Bank USA, N.A., in the U.S. District Court for the South- ern District of New York, alleging HSBC’s infringement of the ’508 patent—as now relevant, claim 17 of that patent. Around the same time, mCom asserted claim 17 and other claims of the same patent against another financial insti- tution in the U.S. District Court for the Southern District of Florida. Both complaints were dismissed with prejudice for failure to state a claim—in the present case because there was no plausible allegation of infringement, and in the Florida case for noninfringement and for invalidity (in- cluding of claim 17). See mCom IP, LLC v. HSBC Bank USA, N.A., No. 1:23-cv-8801, 2024 WL 1704506, at *2–5 (Dismissal). mCom appealed each dismissal as to a single common asserted claim, claim 17. We treated the appeals as companions. Today, in the companion appeal, we affirm the holding that claim 17 is invalid. That invalidity ruling has preclusive effect here, preventing mCom from assert- ing claim 17 in this appeal. For that reason, and because mCom has not shown that the district court erred in dis- missing its complaint with prejudice, we affirm. I The pertinent facts in this appeal—including the rele- vant claim language, the allegations in the complaint, the activity accused of infringement, and some of the reasons for dismissal—are substantially similar to those in the companion case, mCom IP, LLC v. City National Bank of Florida, No. 24-2089, slip op. at 2–8, ___ F.4th ___, ___ (Fed. Cir. 2026), argued to our panel and decided today. We set them forth in brief. mCom owns the ’508 patent, which describes and claims a “unified electronic banking system,” as relevant here. See, e.g., ’508 patent, Abstract; id., col. 8, line 44, through col. 9, line 24. Claim 17, which is the only claim Case: 24-1828 Document: 56 Page: 3 Filed: 05/15/2026 MCOM IP, LLC v. HSBC BANK USA, N.A. 3 at issue on appeal, depends on claim 13. The two claims read as follows: 13. A unified electronic banking system, said sys- tem comprising: a common multi-channel server, wherein said multi-channel server is communicatively coupled to one or more independent computer systems; wherein each of one or more independent computer systems is associated with an independent finan- cial institution, and each of said computer systems is communicatively coupled to said multi-channel server; one or more e-banking touch points, each of which comprise one or more of an automatic teller/trans- action machine (ATM), a self-service coin counter (SSCC), a kiosk, a digital signage display, an online accessible banking website, a personal digital as- sistant (PDA), a personal computer (PC), a laptop, a wireless device, or a combination of two or more thereof, wherein one or more of said e-banking touch points are communicatively coupled to said multi-channel server, and wherein at least one of said e-banking touch points is in communication with one or more financial institutions through said multi-channel server; and a data storage device, wherein transactional usage data associated with a transaction initiated by a user through one of said e-banking touch points is stored in said data storage device and accessed by one or more of said other e-banking touch points; wherein said active session is monitored via said server in real-time for selection of tar- geted marketing content correlated to said user-defined preferences, said targeted mar- keting content correlated to said user- Case: 24-1828 Document: 56 Page: 4 Filed: 05/15/2026 4 MCOM IP, LLC v. HSBC BANK USA, N.A. defined preferences is selected subsequent to said monitoring and transmitted in real-time to at least one of said e-banking touch points for acceptance, rejection, or no response by a user, and wherein said response by said user is used during said active session to deter- mine whether transmission of additional in- formation related to said marketing content occurs during said active session. 17. The system of claim 13, wherein said system provides said one or more financial institu- tions with a common point of control of func- tionality provided by said system. Id., col. 10, line 35, through col. 11, line 4; col. 11, lines 15– 17 (emphases added). In February 2023, the Patent and Trademark Office (PTO), in an inter partes review under 35 U.S.C. §§ 311– 19, ruled that claims 1, 3–7, 9–13, 15–16, and 18–20 of the ’508 patent are unpatentable, slating them for cancellation. Unified Patents, LLC v. mCom IP, LLC, No. IPR2022- 00055, 2023 WL 1824005, at *1 (P.T.A.B. Feb. 8, 2023). Af- terward, in October 2023, mCom brought the present ac- tion against HSBC, alleging infringement of claim 17. Dismissal, at *1. 1 mCom’s complaint included a claim chart for claim 17 and its independent claim (claim 13) with screenshots of HSBC webpages called “Ways to Bank,” “Mobile Banking,” and “Online Privacy Statement.” 1 mCom asserted claims 2, 7, 14, and 17. The PTO had already held claim 7 unpatentable, and mCom states that including claim 7 in this action was accidental. mCom Opening Br. at 4 n.7, 21. The district court ruled against mCom on all four asserted claims, Dismissal, at *3–5, but mCom appeals only as to claim 17, mCom Opening Br. at 21. Thus, we discuss only claim 17. Case: 24-1828 Document: 56 Page: 5 Filed: 05/15/2026 MCOM IP, LLC v. HSBC BANK USA, N.A. 5 J.A. 42–52. mCom based its charge of HSBC’s infringe- ment of claim 17 on the screenshots. J.A. 36. That December, HSBC moved to dismiss for failure to state a claim because the complaint did not allege facts suf- ficient to support the claim of infringement, detailing the deficiencies on which HSBC was relying, and mCom op- posed. J.A. 53–78, 125–42. The district court allowed mCom leave to amend pursuant to Federal Rule of Civil Procedure (Rule) 15, specifically warning mCom that fur- ther leave to amend was unlikely to be granted. J.A. 123– 24. mCom then timely filed an amended complaint (the operative complaint here), mooting the already-filed mo- tion to dismiss. J.A. 143–99, 200–01. In the amended com- plaint, mCom included new allegations that the asserted claims were valid, but the amended complaint is otherwise substantially unchanged from the original complaint, in- cluding with respect to its infringement allegations. Com- pare J.A. 143–99 with J.A. 34–52. HSBC again moved to dismiss under Rule 12(b)(6), with prejudice, for essentially the same reasons it had pre- viously identified. It contended, as now relevant, that the complaint does not adequately plead infringement of claim 17 because it does not allege facts needed to make it plau- sible that HSBC was practicing the “real-time” elements or the “common point of control” element of that claim. J.A. 204–28. mCom opposed and, in the alternative, requested leave to amend, though it did not specify what amendments it sought to make. J.A. 287–304. The district court dismissed the complaint with preju- dice in April 2024. The district court specifically held that the complaint lacks allegations that give rise to a plausible inference that HSBC was practicing the “real-time” claim elements or the “common point of control” element. Dis- missal, at *2–5. The court denied leave to amend because mCom had not explained or justified any proposed amend- ment. Id. at *5. Case: 24-1828 Document: 56 Page: 6 Filed: 05/15/2026 6 MCOM IP, LLC v. HSBC BANK USA, N.A. This timely appeal followed. We have jurisdiction un- der 28 U.S.C. § 1295(a)(1). II mCom challenges, only as to claim 17, both the district court’s Rule 12(b)(6) dismissal and the district court’s re- fusal to grant leave to amend. Under the applicable stand- ards of review of the regional circuit, here the Second Circuit, we review the Rule 12(b)(6) dismissal without def- erence, accepting the well-pleaded allegations in the com- plaint as true and drawing all reasonable inferences in favor of the plaintiff. Melendez v. Sirius XM Radio, Inc., 50 F.4th 294, 298–99 (2d Cir. 2022). We review the denial of leave to amend in this case for abuse of discretion. Id. at 309. We apply our own law to patent-law issues even when presented as part of other issues. See, e.g., ParkerVision, Inc. v. Qualcomm Inc., 116 F.4th 1345, 1355–56 (Fed. Cir. 2024); In re Queen’s University at Kingston, 820 F.3d 1287, 1290–91 (Fed. Cir. 2016). We reject mCom’s challenges and affirm. A In the companion Florida case, we today affirm a deter- mination that claim 17 is invalid. mCom v. City National, slip op. at 11–12. Under well-established general princi- ples of issue preclusion (collateral estoppel), our judgment affirming the invalidity ruling in mCom v. City National— a matter of patent law—“collaterally estops [mCom] from asserting [claim 17] in any further proceedings.” XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018) (collecting cases); see Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1580–84 (Fed. Cir. 1994) (enforcing estoppel cre- ated by intervening appellate invalidity judgment against patentee in appeal from district court infringement ver- dict); Masco Corp. v. United States, 303 F.3d 1316, 1329– 32 (Fed. Cir. 2002) (explaining that appellate court’s affir- mance on a ground creates estoppel even if district court relied as well on an alternative ground); SFM Holdings, Case: 24-1828 Document: 56 Page: 7 Filed: 05/15/2026 MCOM IP, LLC v. HSBC BANK USA, N.A. 7 Ltd. v. Banc of America Securities, LLC, 764 F.3d 1327, 1338 (11th Cir. 2014) (same); In re Peters, 642 F.3d 381, 386 (2d Cir. 2011); Restatement (Second) of Judgments § 27 comment o. 2 None of the circumstances that some- times prevent the application of issue preclusion is present here. See Papst Licensing GmbH v. Samsung Electronics America, Inc., 924 F.3d 1243, 1250–51 (Fed. Cir. 2019). It is appropriate to invoke this clear barrier to mCom’s asser- tion of claim 17 based on our ruling in the companion case today. See XY, 890 F.3d at 1294–95. Accordingly, we af- firm the district court’s judgment because issue preclusion based on our ruling today in the Florida case bars mCom from recovering on invalidated claim 17. In the alternative, and independently, we affirm the Rule 12(b)(6) dismissal on the district court’s rationale. Specifically, we hold that mCom did not plausibly allege that HSBC practices the “real-time” or “common point of control” elements of claim 17 and therefore fails to state a claim of infringement. To state a claim for patent infringe- ment, a complaint must contain “some factual allegations that, when taken as true, articulate why it is plausible that the accused [activity] infringes.” Bot M8 LLC v. Sony Corp., 4 F.4th 1342, 1353 (Fed. Cir. 2021); see also Bell At- lantic Corp. v. Twombly, 550 U.S. 544, 570 (2007) (facts must “nudge[ ]” claim “across the line from conceivable to plausible”); Ashcroft v. Iqbal, 556 U.S. 662, 680 (2009). We agree with the district court that mCom’s complaint does not do so, given what claim 17 requires. As to the “real-time” elements, claim 17 has several re- lated requirements: monitoring, content selection, content 2 We see no material difference among the applicable preclusion principles stated in our circuit’s precedents, those of the Eleventh Circuit (where the Florida case was litigated), or those of the Second Circuit (where the present case was litigated). Case: 24-1828 Document: 56 Page: 8 Filed: 05/15/2026 8 MCOM IP, LLC v. HSBC BANK USA, N.A. transmission, user action, and financial institution reac- tion, all in real time in a single active session. ’508 patent, col. 10, line 61, through col. 11, line 4. The crux of the com- plaint’s infringement theory is that HSBC “monitors cus- tomers activity in real time using Cookies . . .place[d] [ ] on customers devices,” and HSBC “then send[s] targeted mar- keting ads based on this information . . . when [customers] log in to their bank accounts.” J.A. 183–86 (emphases added). For support, the complaint cites HSBC’s Online Privacy Statement, highlighting a portion of that webpage that states, “[C]ookies [ ] are retained on your computer af- ter your visit ends so we can identify your preferences and enhance your future visits.” J.A. 183 (some emphases re- moved). Those allegations plainly state that HSBC uses cookies across two customer visits—a first visit, during which a cookie is placed on a customer’s device, and a sec- ond visit, after that same customer has later logged back in. The facts set forth in the complaint do not state any- thing that makes it plausible that HSBC practices the “real-time” elements in a single active session. The complaint similarly fails to plead facts that give rise to a plausible inference that HSBC satisfies claim 17’s “common point of control” element. The claimed system must “provide[ ] . . . [a] financial institution[ ] with a com- mon point of control,” ’508 patent, col. 11, lines 15–17, but mCom’s complaint alleges simply that HSBC allows cus- tomers “to access the same banking information with a sin- gle log-in menu as well as a single menu for navigation from all their digital banking touch points,” J.A. 187. The bare fact that HSBC provides customers with consistent menus across different platforms does not, taken as true, give rise to a plausible inference that HSBC itself has the claimed common point of control over its e-banking offer- ings on the back end. What is more, mCom never explained to the district court why it should, or even that it should, make such an inference based on mCom’s pleaded facts. See J.A. 187, 299–300. It was not incumbent on the district Case: 24-1828 Document: 56 Page: 9 Filed: 05/15/2026 MCOM IP, LLC v. HSBC BANK USA, N.A. 9 court to “invent factual allegations that [mCom had] not pled.” Chavis v. Chappius, 618 F.3d 162, 170 (2d Cir. 2010). We thus affirm the district court’s judgment on the independent ground that mCom failed to plausibly allege infringement. B We discern no abuse of discretion in the district court’s denying leave to amend. “[F]ailure to cure deficiencies by amendments previously allowed” can justify denying leave to amend. Foman v. Davis, 371 U.S. 178, 182 (1962). Here, mCom had an opportunity to amend and was warned that another would not be forthcoming. J.A. 123–24. Leave to amend may also be denied if the requester “fails to specify . . . how amendment would cure the pleading deficiencies in [its] complaint.” Melendez, 50 F.4th at 309 (quoting TechnoMarine SA v. Giftports, Inc., 758 F.3d 493, 505 (2d Cir. 2014)). In this case, despite an earlier opportunity and warning, mCom failed to cure the deficiencies in its com- plaint or to specify what it would change by amendment. See Dismissal, at *5; J.A. 302–03. mCom points to no au- thority that makes dismissal with prejudice an abuse of discretion in these circumstances. III We have considered mCom’s remaining arguments and find them unpersuasive. For the foregoing reasons, we af- firm the judgment of the district court. AFFIRMED