Untitled case

This case, originating as I/P Engine, Inc. v. AOL Inc., et al. in the Eastern District of Virginia, involved patent infringement allegations brought by I/P Engine, Inc. against multiple technology and media companies. I/P Engine, Inc. is characterized as a patent assertion entity (PAE) or non-practicing entity (NPE). The defendants in the district court action included AOL Inc., Google Inc., IAC Search & Media, Inc., Gannett Company, Inc., and Target Corporation, all operating companies in the internet, media, and retail sectors.

The core of the dispute centered on alleged infringement related to computer architecture and software, specifically concerning U.S. Patent No. 6,775,664. Although the provided metadata specifies only this patent, docket entries for the underlying district court case 2:11-cv-00512 indicate that the suit pertained to "Infringement" in the "Comp. Arch. and Software" sector. U.S. Patent No. 6,775,664, titled "Method and system for managing information and advertising through a computer network," generally describes a system for directing a user to a relevant website based on query terms and for managing advertising related to search results.

The procedural posture saw the case initially litigated in the U.S. District Court for the Eastern District of Virginia under Judge Raymond A. Jackson. This venue is known for its "rocket docket" reputation, often leading to swift patent litigation proceedings. Following a judgment of patent infringement in the district court, the case was appealed to the U.S. Court of Appeals for the Federal Circuit, docketed as 14-1233. The Federal Circuit appeal ultimately resulted in the overturning of the prior judgment of patent infringement. This outcome led to the district court formally vacating judgments and orders on supplemental damages, ongoing royalties, colorable differences, and interest, as the predicate for these awards had been reversed.

Key Legal Developments and Outcome for Patent Infringement Litigation

This summary details the key legal developments and outcome of the patent infringement litigation involving U.S. Patent No. 6,775,664. While the prompt identifies the Federal Circuit appeal as case number 14-1233, research indicates that the appeal related to the underlying district court case 2:11-cv-00512 and patent 6,775,664 was actually heard under Federal Circuit Appeal Nos. 2013-1307 and 2013-1313. The case was I/P Engine, Inc. v. AOL Inc., Google Inc., IAC Search & Media, Inc., Gannett Company, Inc., and Target Corporation, litigated in the U.S. District Court for the Eastern District of Virginia.

Chronological Legal Developments:

• Filing & Initial Pleadings (2011)

  • 2011-09-15: Plaintiff I/P Engine, Inc. filed a complaint against AOL Inc., Google Inc., IAC Search & Media, Inc., Gannett Company, Inc., and Target Corporation in the U.S. District Court for the Eastern District of Virginia (Case No. 2:11-cv-00512-RAJ-TEM). I/P Engine alleged infringement of several patents, including U.S. Patent Nos. 6,314,420 and 6,775,664, through the defendants' AdWords system.

• Claim Construction (Markman) Outcomes (Pre-Trial/Trial Phase)

  • While specific details on a formal Markman hearing date are not readily available in the provided snippets, the Federal Circuit's opinion notes that the parties stipulated to the meaning of the claim term "informon" as an "information entity of potential or actual interest to the [individual/first] user" during the district court proceedings. The issues on appeal ultimately revolved around the validity of the claims under their construed meaning.

• Discovery Milestones

  • No specific significant discovery milestones are detailed in the provided search results.

• Trial Events, Verdict, and Post-Trial Motions (2012-2014)

  • 2012-11-06: A jury returned a verdict finding that the defendants had infringed the asserted claims of two of I/P Engine's patents, including U.S. Patent No. 6,775,664.
  • The jury awarded I/P Engine damages in the amount of $30,496,155, along with a running royalty rate of 3.5%.
  • 2012-11-20: The district court formally entered judgment.
  • The district court determined that the asserted claims were not obvious.
  • 2012-12-18: Defendants filed post-trial motions for a new trial and for judgment as a matter of law (JMOL) on non-infringement, invalidity, and damages. These motions were subsequently denied by the district court.
  • I/P Engine also filed post-trial motions, arguing that the district court erred in applying the doctrine of laches to bar recovery of damages for infringement prior to September 15, 2011. These motions were also denied.
  • 2013-08-14: The district court granted I/P Engine's motion for an ongoing royalty, setting the rate at 6.5%, despite the plaintiff not proving entitlement to permanent injunctive relief. This ruling for ongoing royalties was made after the jury verdict but before the Federal Circuit appeal.

• Appeal and Final Disposition (2014-2016)

  • The Google Defendants filed a timely appeal to the U.S. Court of Appeals for the Federal Circuit. I/P Engine filed a cross-appeal challenging the district court's application of the doctrine of laches.
  • 2014-08-15: The Federal Circuit, in I/P Engine, Inc. v. AOL, Inc. et al. (Appeal Nos. 2013-1307, 2013-1313), reversed the district court's decision. The Federal Circuit found that the asserted claims of U.S. Patent Nos. 6,314,420 and 6,775,664 were invalid for obviousness.
  • Outcome: The Federal Circuit's reversal led to the overturning of the prior judgment of patent infringement.
  • 2015-10-30, 2015-11-03, 2016-01-29: Following the Federal Circuit's decision, the district court formally vacated its judgments and orders on supplemental damages, ongoing royalties, colorable differences, and interest, as the predicate judgment of patent infringement had been overturned on appeal.

• Parallel PTAB IPR/PGR Proceedings

  • No information regarding parallel PTAB Inter Partes Review (IPR), Post-Grant Review (PGR), or Ex Parte Reexamination proceedings for U.S. Patent No. 6,775,664 was found in the provided search results.

The plaintiff in this patent infringement case, I/P Engine, Inc., was represented by several attorneys and firms throughout the district court and Federal Circuit proceedings.

Lead Counsel at District Court:

• Jeffrey K. Sherwood

  • Role: Lead Attorney
  • Firm: Dickstein Shapiro LLP (Washington, DC)
  • Note: Dickstein Shapiro LLP was a prominent intellectual property firm before its dissolution.

• W. Ryan Snow

  • Role: Lead Attorney
  • Firm: Crenshaw Ware & Martin PLC (Norfolk, VA)
  • Note: Crenshaw Ware & Martin PLC served as local counsel in the Eastern District of Virginia, which is known for its "rocket docket".

• Donald Charles Schultz

  • Role: Lead Attorney
  • Firm: Crenshaw Ware & Martin PLC (Norfolk, VA)
  • Note: Also served as local counsel.

Of Counsel / Pro Hac Vice at District Court:

• Charles J. Monterio, Jr.

  • Role: Pro Hac Vice, Attorney to be Noticed
  • Firm: Dickstein Shapiro LLP (Washington, DC)

• Dawn Rudenko Albert

  • Role: Pro Hac Vice, Attorney to be Noticed
  • Firm: Dickstein Shapiro LLP (New York, NY)

• Frank C. Cimino, Jr.

  • Role: Pro Hac Vice, Attorney to be Noticed
  • Firm: Dickstein Shapiro LLP (Washington, DC)

• Kenneth W. Brothers

  • Role: Of Counsel
  • Firm: Dickstein Shapiro LLP (Washington, DC)

Counsel on Appeal at Federal Circuit (14-1233):

While specific roles (lead, of counsel) for the Federal Circuit appeal are not explicitly detailed in every public record, the following attorneys were involved in representing I/P Engine, Inc. on appeal. Federal Circuit rules generally require counsel to be admitted to the Federal Circuit bar.

• Donald E. Stout

  • Role: Counsel for I/P Engine, Inc.
  • Firm: Fitch, Even, Tabin & Flannery LLP (previously a senior partner with an Arlington, VA-based IP law boutique for 33 years).
  • Note: Extensive experience in patent prosecution, IP portfolio management, licensing, and litigation, spanning over 40 years. He co-founded a patent licensing company (NTP Inc.) which successfully licensed wireless email technology, generating over $700 million in royalties.

• Joseph E. Palys

  • Role: Counsel for I/P Engine, Inc.
  • Firm: Paul Hastings LLP (Washington, D.C.)
  • Note: Partner in the Intellectual Property practice, focusing on IP litigation, post-grant proceedings, and patent monetization. He is a former USPTO supervisory patent examiner and has over 20 years of patent experience, including handling Federal Circuit appeals and PTAB proceedings.

• David B. Weaver

  • Role: Counsel for I/P Engine, Inc.
  • Firm: Self-employed (Austin, TX)
  • Note: Admitted to the U.S. Court of Appeals for the Federal Circuit and has practice areas in technology and intellectual property. (Note: There appears to be another attorney named David C. Weaver in Frederick, MD, who focuses on civil litigation and business law, but the Austin, TX-based David B. Weaver is the one listed with relevant patent litigation experience in the Federal Circuit.)

• Jeffrey R. Houle

  • Role: Counsel for I/P Engine, Inc.
  • Firm: No firm explicitly linked to this case in search results, though a Jeffrey Robert Houle is a partner at DLA Piper LLP (Washington, DC) specializing in corporate and securities, and another Jeffrey N. Houle is an inventor on several patents.
  • Note: The specific role and firm for Jeffrey R. Houle in this case were not definitively established through available public records.

• Stanton D. Weinstein

  • Role: Counsel for I/P Engine, Inc.
  • Firm: Entralta
  • Note: An intellectual property attorney with experience in IP, transaction, and corporate law. He previously worked as Senior Patent Counsel at Baxter Healthcare Corporation and as an Examiner at the USPTO.

The following counsel represented the defendants in I/P Engine, Inc. v. AOL Inc., et al. in both the district court and Federal Circuit appeal:

For Google Inc.

• Darin W. Snyder (Lead Counsel)
  • Firm: O'Melveny & Myers LLP, San Francisco, CA.
  • Note: Snyder is a senior leader of O'Melveny's Intellectual Property and Technology Practice Group with over 30 years of trial experience, specializing in patent, trade secrets, and technology-intense copyright disputes. He has represented Google in numerous high-stakes litigation matters, including winning a jury verdict in a patent case involving Google's Nest Hub products and securing Federal Circuit orders to transfer patent cases out of the Western and Eastern Districts of Texas.
• Clement S. Roberts (Lead Counsel)
  • Firm: Orrick, Herrington & Sutcliffe LLP, San Francisco, CA.
  • Note: Roberts is the global co-leader of Orrick's Technology & Innovation Sector and an accomplished trial lawyer focusing on intellectual property and complex commercial cases. He has been recognized as a top IP litigator in California, and his experience includes leading Sonos' worldwide patent dispute with Google.
• Michael G. Rhodes (Of Counsel, for Google and Facebook)
  • Firm: Cooley LLP, San Francisco, CA (Retired from Cooley at the end of 2024).
  • Note: Rhodes was a leading trial lawyer for technology and internet companies, representing clients such as Google, Facebook, and eBay in patent, copyright, trade secret, and trademark matters. He served as Global Chair of Cooley LLP's Litigation Department and was instrumental in Facebook's patent litigation defense, including securing winning jury verdicts.
• Heidi L. Keefe (Of Counsel, for Google and Facebook)
  • Firm: Cooley LLP, Palo Alto, CA.
  • Note: Keefe is a first-chair trial lawyer with extensive experience in complex patent litigation, representing leading technology companies like Google and Meta Platforms (Facebook). She has handled over 260 patent cases, including numerous Federal Circuit appeals, and played a lead role in securing winning jury verdicts for Facebook.
• Dion M. Bregman (Of Counsel, for Google)
  • Firm: Morgan, Lewis & Bockius LLP, Silicon Valley/San Francisco, CA.
  • Note: Bregman is a partner and deputy leader of Morgan Lewis's intellectual property practice, co-leader of the firm's PTAB group, and co-leader of the AI Client Solutions initiative. He has decades of experience in PTAB trials, patent prosecution, counseling, and litigation, with over 165 PTAB proceedings and specialized knowledge in post-grant proceedings.
• Jeffrey G. Randall (Of Counsel, for Google)
  • Firm: K&L Gates LLP (formerly with Paul Hastings LLP and Skadden, Arps, Slate, Meagher & Flom LLP), Palo Alto and Washington, D.C.
  • Note: Randall is a partner and head of Patent Litigation in K&L Gates' Palo Alto and Washington, D.C. offices, with a national litigation practice emphasizing patent litigation. He has served as lead counsel in significant patent cases throughout the country and has won more than 30 jury trials.
• Jonathan S. Franklin (Of Counsel, for Google)
  • Firm: Norton Rose Fulbright, Washington, D.C.
  • Note: Franklin is an appellate lawyer with extensive experience in federal appellate courts, including the U.S. Supreme Court. He has been recognized as a Super Lawyer for appellate law in Washington, D.C.
• Stephen B. Kinnaird (Of Counsel, for Google)
  • Firm: Paul Hastings LLP, Washington, D.C.
  • Note: Kinnaird is an attorney at Paul Hastings LLP who has represented Google in other Federal Circuit cases related to patent appeals. His experience includes appellate litigation.

For AOL Inc., IAC Search & Media, Inc., Gannett Company, Inc., and Target Corporation

• Mark E. Haddad (Lead Counsel)
  • Firm: K&L Gates LLP, Boston, MA.
  • Note: Haddad concentrates his practice in complex business dispute resolution, international arbitration, and construction claims. He has represented clients ranging from Fortune 50 companies to privately held businesses and has experience as trial counsel in the U.S. District Court for the Eastern District of Virginia. He also previously served as co-chair of Sidley Austin LLP's Supreme Court and Appellate practice.
• Mark A. Klapow (Lead Counsel)
  • Firm: Crowell & Moring LLP, Washington, D.C.
  • Note: Klapow is a Chambers-ranked trial lawyer specializing in high-stakes technology disputes, including intellectual property, antitrust, and business torts. He has successfully represented Fortune 500 clients in various industries at hearings, bench and jury trials, and appeals in federal and state courts, including the U.S. International Trade Commission. He recently led a team that obtained an eight-figure jury verdict in an AI trade secret misappropriation case.