Untitled case

I'll research this case using web search.

Case Overview: Intellectual Ventures II LLC v. JPMorgan Chase & Co., No. 2014-1724 (Fed. Cir.)

Parties. The appellant/defendant group is JPMorgan Chase & Co.; JPMorgan Chase Bank, N.A.; Chase Bank USA, N.A.; Chase Paymentech Solutions, LLC; and Paymentech LLC (collectively "JPMC") — a global bank holding company and its payment-processing subsidiaries. The appellee/plaintiff is Intellectual Ventures II LLC ("IV II"), a Delaware LLC with its principal place of business in Bellevue, Washington (per JPMC's counterclaims, Dkt. 34). IV II is an invention-holding/assertion subsidiary of Intellectual Ventures; it does not make or sell products, and commentary (including the Harvard JOLT Federal Circuit digest) describes it flatly as a patent troll/PAE. This was one arm of IV's 2013 financial-services campaign: IV II filed the same five patents against JPMC in S.D.N.Y. and against six other banks in six other districts (D. Neb., N.D. Ala., W.D. Mo., N.D. Ga., D. Minn., S.D. Ohio), as catalogued in footnote 1 of the Federal Circuit opinion. JPMC's appellate counsel was Mark A. Lemley (Durie Tangri; argued), with Kirkland & Ellis LLP (Brent P. Ray et al.) also on the briefs — see the Kirkland 28(j) letter of Nov. 21, 2014 in the CAFC docket. IV II's appellee counsel included Eric F. Citron (argued) and Marc Belloli (Unified Patents docket, 2014-1724).

Accused technology and patents. The accused instrumentalities were IBM 4765 PCIe Cryptographic Coprocessor cards ("IBM Crypto Cards") that JPMC deployed inside its cybersecurity/encryption infrastructure — i.e., IV targeted a bank's use of a third party's security hardware, not a bank product. The five asserted patents (all recited in the opinion and in Finnegan's case note) were: U.S. 6,826,694 ("High resolution access control" — a firewall receives a packet, uses header information to refer it to an access-control proxy that inspects the payload and selects/applies a rule; inventors Dutta, Kumar and Lerner, from AT&T's GeoPlex project, per the PTAB's IPR2014-00587 rehearing decision); U.S. 7,634,666 (a "crypto-engine" co-processor with a modular arithmetic unit and interface control unit that can execute both RSA and ECC public-key encryption — the only patent to survive to trial-stage); U.S. 6,314,409, 6,715,084, and 5,745,574 (network-security/access-control patents from the same portfolio; the '694 and '409 were also attacked through PTAB proceedings). I could not verify the formal titles of the '084, '409 and '574 from primary sources in this session — Wiley's bulletin characterizes all five collectively as "relat[ing] to computer network security," and that is the safest description.

Procedural posture and venue. The case is S.D.N.Y. No. 1:13-cv-03777-AKH, before Judge Alvin K. Hellerstein (complaint filed June 4, 2013). Venue matters here for two reasons: (1) S.D.N.Y. is JPMC's home forum and Judge Hellerstein ran the case aggressively, refusing to stay on Aug. 11, 2014 over IV's asserted entitlement to a speedy resolution (2014 WL 10919562), which set up the appeal; and (2) the appeal itself is purely jurisdictional. JPMC moved to stay pending four promised CBM petitions; it filed only two (on the '409 and '574, July 11 and 18, 2014). Before the PTAB acted, the district court denied the stay, applying AIA § 18(b)(1)'s four-factor test (assumed without deciding). JPMC took an interlocutory appeal under § 18(b)(2). On April 1, 2015, a 2-1 panel (O'Malley, joined by Bryson; Hughes dissenting) dismissed for lack of jurisdiction: § 18's grant of interlocutory review "must be construed narrowly," and a CBM "proceeding" does not exist until the Director institutes it, so a stay denial predicated on unfiled or pending petitions is unreviewable — Intellectual Ventures II LLC v. JPMorgan Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015). The PTAB later instituted CBM review of the '409 (CBM2014-00157, Jan. 14, 2015) and denied the '574 petition (CBM2014-00160, Jan. 29, 2015), as the opinion notes.

Why the case is notable. This is the first precedential appellate construction of AIA § 18(b)(2) — the only statutory route to immediate review of a CBM stay denial — and it produced a practical rule that CBM petitioners must file early, since pre-institution stay denials are effectively unreviewable. The dissent's uniformity rationale was sharpened by the reality that other district courts did stay the parallel IV bank suits (SunTrust, Commerce Bancshares, Huntington), while Judge Hellerstein did not. The decision sits in the line of authority later discussed in Wi-Fi One on the reviewability/scope of PTO institution-related rulings. On the merits, the campaign largely collapsed: Judge Hellerstein granted partial summary judgment of invalidity under § 101 on three of the five patents on April 28, 2015 (2015 WL 1941331), the '574 was withdrawn on consent in September 2015, leaving only the '666; and the defense side also drove parallel PTAB attacks, including IBM's IPR2014-00587 on the '694 (IBM was simultaneously the maker of the accused crypto cards, an early example of supplier-side IPR defense) plus a dozen third-party IPRs. The remaining '666 case went to appeal and was affirmed without opinion under Fed. Cir. R. 36 on Dec. 17, 2018 (No. 2017-2429) — so IV II ultimately recovered nothing against JPMC.

Sourcing caveats. (i) The exact three patents invalidated under § 101 on April 28, 2015 are inferred from the docket record ("three of the patents" invalidated, one withdrawn, one remaining) and contemporaneous reporting; I could not pull the 2015 WL 1941331 order text itself. (ii) The Harvard JOLT digest's statement that the district court invoked "the plaintiff's Sixth Amendment right to a speedy trial" appears to be an error — the district court's framing (and the Federal Circuit's paraphrase) was Fed. R. Civ. P. 1's "just, speedy, and inexpensive determination." (iii) I could not confirm whether the December 2018 affirmance rested on a jury verdict or a post-trial/summary judgment ruling on the '666 patent.

I'll research this case thoroughly. Let me start with several searches.

I've identified the case. Let me dig deeper into the underlying district court litigation and the parallel PTAB proceedings.

Let me dig into the district court merits (Markman, § 101 summary judgment) and the subsequent appeal.

Intellectual Ventures II LLC v. JPMorgan Chase & Co. — Litigation Analysis

Bottom line: The case number in the prompt (Fed. Cir. No. 2014‑1724) is not the merits appeal of the patent case. It is the precedential interlocutory appeal in which the Federal Circuit held it lacked jurisdiction under AIA § 18(b)(2) to review a pre‑institution CBM stay denial. The underlying infringement action — Intellectual Ventures II LLC v. JPMorgan Chase & Co., No. 1:13‑cv‑03777‑AKH (S.D.N.Y.) (Judge Alvin K. Hellerstein) — was filed 2013‑06‑04, and the asserted ’694 patent (U.S. 6,826,694, “High Resolution Access Control”) was held invalid under 35 U.S.C. § 101 on 2015‑04‑28. That ruling, plus parallel PTAB proceedings, effectively ended the ’694 assertions.

Sources available to me are the Federal Circuit opinions, district‑court orders reproduced in PTAB exhibits/dockets, PTAB papers, and secondary summaries. Where I could not verify a fact, I say so.

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1. Parties, patents, and the broader campaign

• Plaintiff/patent owner: Intellectual Ventures II LLC (Bellevue, WA).
• Defendants: JPMorgan Chase & Co.; JPMorgan Chase Bank, N.A.; Chase Bank USA, N.A.; Chase Paymentech Solutions LLC; Paymentech LLC (collectively “JPMC”/“Chase”). Chase answered that it provides online banking via chase.com and payment‑processing services.
• Patents‑in‑suit (five): U.S. 5,745,574; 6,314,409; 6,715,084; 6,826,694; 7,634,666.
• The ’694 patent: filed 1999‑10‑22, issued 2004‑11‑30, single claim (claim 1), inventors Partha Dutta, Mahesh Kumar, and Micah Lerner; developed in AT&T’s “GeoPlex” project; later acquired by IV.
• The ’694 patent was asserted in seven coordinated suits (per IV’s mandatory notice in IPR2014‑00786): First National Bank of Omaha, No. 8:13‑cv‑167 (D. Neb., filed 2013‑05‑29); BBVA Compass Bancshares, No. 2:13‑cv‑1106 (N.D. Ala., 2013‑06‑12); JPMorgan Chase, No. 1:13‑cv‑3777 (S.D.N.Y., 2013‑06‑04); Commerce Bancshares, No. 2:13‑cv‑4160 (W.D. Mo., 2013‑06‑20); SunTrust Banks, No. 1:13‑cv‑2454 (N.D. Ga., 2013‑07‑24); U.S. Bancorp, No. 0:13‑cv‑2071 (D. Minn., 2013‑07‑31); Huntington Bancshares, No. 2:13‑cv‑785 (S.D. Ohio, 2013‑08‑07). These parallel suits are recited in footnote 1 of the Federal Circuit opinion in 14‑1724.

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2. Chronology of key developments

A. Filing and initial pleadings (2013)

B. Claim construction (Markman) — 2014

• 2014‑01‑15: Joint Proposed Claim Constructions filed (ECF No. 64). For the ’694 patent the parties disputed “packet,” “payload,” and the “wherein” clause requiring selection of the access rule based on “a combination of the contents of the packet received in step a and the contents of at least one other packet.”

• 2014‑02‑27: IV’s opening claim‑construction brief (’694 discussion at pp. 43–46).

• 2014‑03‑18: Markman Order issued — “Order Regarding Claim Construction and Patent Summaries,” ECF No. 82 (S.D.N.Y. Mar. 18, 2014). The court construed:

  • “packet” = “Discrete unit of information being routed through a computer network, often to a designated addressee”;
  • “payload” = “Data conveyed by the packet outside the header segment”;
  • “access rule” = “A rule for filtering information traveling between a source and a destination.”

  Notably, the district court’s construction did not resolve the parties’ dispute over whether “contents of the packet” means header and/or payload — the same dispute later litigated at the PTAB under the broadest reasonable interpretation.

C. Motions of substance

1) Motion to stay pending PTAB review (S.D.N.Y.)

• JPMC moved to stay based on (a) third‑party IPR petitions (12 filed by third parties, incl. IBM) and (b) CBM petitions it filed (and promised to file).
• 2014‑08‑11: Judge Hellerstein denied the stay (ECF No. 154). Applying the four § 18(b)(1) factors, he found: only a subset of patents/claims was under PTAB attack; the case was moving swiftly to trial (fact discovery expected to close by year‑end, case resolved by summer 2015); the PTAB process plus appeal could take three‑plus years; and a stay would give JPMC an unfair tactical advantage. The court assumed without deciding that § 18(b)(1) applied.

2) Interlocutory appeal (the “2014‑1724” case)

• Sept.–Nov. 2014: JPMC noticed an interlocutory appeal under AIA § 18(b)(2); IV moved to dismiss for lack of jurisdiction (Fed. Cir. Dkt. 36, dated 2014‑09‑22). The district court denied JPMC’s motion to stay pending appeal.
• 2014‑11‑21: JPMC (through Kirkland & Ellis LLP) filed a Rule 28(j) letter citing Versata Software, Inc. v. Callidus Software, Inc., No. 2014‑1468 (Fed. Cir. Nov. 20, 2014), arguing Versata foreclosed IV’s jurisdictional position.
• 2015‑04‑01: Federal Circuit dismisses the appeal for lack of jurisdiction. Intellectual Ventures II LLC v. JPMorgan Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015) (O’Malley, J., joined by Bryson, J.; Hughes, J., dissenting). Holding: under § 18(b)(1)–(2), a CBM “proceeding” does not begin until the PTAB institutes review; pending petitions do not confer § 18(b)(2) jurisdiction. Because the PTAB had not acted on JPMC’s two CBM petitions when the district court ruled, the appeal was premature. Judge Hughes would have found jurisdiction but would have affirmed the stay denial on the merits.

3) Motion for summary judgment of patent ineligibility (S.D.N.Y.)

• 2015‑04‑28: Judge Hellerstein granted JPMC’s motion for partial summary judgment, holding claim 1 of the ’694 patent (and claims of the ’409 and ’084 patents) invalid as directed to patent‑ineligible subject matter under § 101 as applied in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). ECF No. 381; 2015 WL 1941331. As to the ’694 patent, the court found the claim (selecting/implementing an access rule based on contents of two or more packets) “amounts to a mental process”; the patent “does not describe the nature of the rule, what in the [packet] determines the rule to be selected, how the rule determines who may access the packet and to what degree, or anything about the rule itself”; the “firewall” is “not a physical thing, but a metaphor”; and the claims raise preemption concerns because they are not tied to any particular device or program. On Alice step two, the court held IV’s “programmed computer”/In re Alappat argument failed because the patent did not tie the idea to a specific way of doing something with a computer.
• 2015‑05‑13: In its updated mandatory notice in IPR2014‑00786, IV stated it planned to appeal the § 101 judgment.
• 2015‑10‑14: Judge Hellerstein denied JPMC’s Rule 54(b) motion for entry of partial final judgment (ECF No. 527), citing the historic policy against piecemeal appeals (iLOR v. Google; Harriscom Svenska). He observed that only U.S. 7,634,666 remained in the case, that JPMC intended to move for summary judgment on that patent with briefing complete by mid‑December 2015, and that a final judgment (or a spring 2016 trial) would follow.

D. Discovery milestones of strategic significance

• Aug. 2014: The S.D.N.Y. court had not yet held a Markman hearing by mid‑2014, and fact discovery was still open when the stay motion was decided — the court found the case “moving speedily and efficiently to trial,” with fact discovery to close by year‑end 2014 and resolution expected by summer 2015.
• In the N.D. Ga. (SunTrust) companion case, by contrast, the court noted that only four depositions had been taken and no Markman hearing held when it granted a stay (order at ECF No. 175, ~Oct. 2014). (SunTrust’s stay was granted on the strength of the PTAB’s 2014‑09‑24 institution of IPR on ’694 claim 1 and on ’666.)
• The JPMC court’s April 2015 opinion notes that additional discovery motions relating to the ’084 patent were denied as moot after the § 101 ruling — a fact the Federal Circuit later relied on in finding the partial SJ final enough for collateral estoppel.

E. Trial, verdict, post‑trial motions

• No jury trial or verdict is reflected for the ’694 patent in the S.D.N.Y. case. The ’694 patent was resolved on § 101 summary judgment, not at trial.
• Post‑trial‑type motion of note: JPMC’s Rule 54(b) motion (denied 2015‑10‑14).
• Docket reflects the case terminated 2017‑07‑12, with related Federal Circuit appeals listed as 14‑1724 (the stay appeal) and 17‑2429 (a later merits appeal). I could not verify the specific disposition document (e.g., stipulation of dismissal, settlement, or judgment) or the outcome of Fed. Cir. No. 17‑2429; treat the settlement/final‑judgment characterization as unconfirmed.

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3. Parallel PTAB proceedings on the ’694 patent

Effect on the litigation: The ’694 IPR did not invalidate the patent — IV won IPR2014‑00587. But the ’694 patent’s IPR victory was overtaken by the § 101 invalidity ruling in the very forum IV had resisted staying. The PTAB litigation also generated the estoppel/duplicativeness fights and the antedating record (GeoPlex, Dutta, Kumar, Vrsalovic) that dominates the ’694 IPR file.

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4. Downstream effect of the S.D.N.Y. § 101 ruling

• The JPMC partial summary judgment had collateral consequences beyond the case: in Intellectual Ventures I LLC v. Capital One Financial Corp., Fed. Cir. No. 16‑1077 (decided 2017‑03‑07), the Federal Circuit held that, under Fourth Circuit law, the JPMC partial SJ order invalidating the ’084 patent was final enough to support defensive collateral estoppel, rejecting IV’s reliance on Vardon Golf (Seventh Circuit finality standard). The court noted the JPMC court had “nothing left to resolve absent a reversal and remand.” This makes the JPMC § 101 ruling one of the more consequential NPE‑era rulings, even though the ’694 patent itself was not the patent at issue in the Capital One appeal.

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5. Present posture

• The Federal Circuit appeal that carries this case’s number — 14‑1724 — ended 2015‑04‑01 with dismissal for lack of jurisdiction, 781 F.3d 1372 (precedential).
• The S.D.N.Y. action was terminated on 2017‑07‑12, with a related appeal docketed as Fed. Cir. 17‑2429. The exact disposition (final judgment on the remaining ’666 patent and affirmance, versus settlement/dismissal) is not verified in the sources I could retrieve.
• The ’694 patent was adjudicated invalid under § 101 by the S.D.N.Y. (2015‑04‑28), while surviving the § 103 IPR challenge (PTAB FWD 2015‑09‑23).

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6. Sourcing notes / open items to verify

Well‑sourced: complaint date and parties (Fed. Cir. 781 F.3d 1372 n.1); the Aug. 11, 2014 stay denial (S.D.N.Y. ECF 154, reproduced at robinskaplan.com); the Markman Order (S.D.N.Y. ECF 82, Mar. 18, 2014, quoted in the ’409 IPR exhibits); the Apr. 28, 2015 § 101 opinion (S.D.N.Y. ECF 381; 2015 WL 1941331; Justia/lexology summaries); the Oct. 14, 2015 Rule 54(b) denial (S.D.N.Y. ECF 527, text reproduced in the docket excerpt); the IPR2014‑00587 FWD (2015‑09‑23, PTAB Trial Blog PDF; Nat’l Law Review summary); the Fed. Cir. 14‑1724 opinion and the Kirkland & Ellis Rule 28(j) letter; the Fed. Cir. 16‑1077 collateral‑estoppel opinion.

Unverified / flagged: (i) the precise final disposition of S.D.N.Y. 13‑cv‑3777 and of Fed. Cir. 17‑2429; (ii) the outcomes of IPR2014‑00786 and IPR2014‑01465; (iii) how the ’574 patent left the S.D.N.Y. case before Oct. 2015; (iv) the outcome of JPMC’s anticipated ’666 summary‑judgment motion; (v) any appeal of the IPR2014‑00587 final written decision to the Federal Circuit; (vi) counsel identities beyond Kirkland & Ellis for JPMC on appeal (a student‑blog reference to “Mark Lemley” for defendants is low‑reliability and I do not credit it). PACER/PTAB “Patent Trial and Appeal Board End‑to‑End” docket pulls would resolve items (i)–(v).

I'll research this case starting with the Federal Circuit docket and the patent's litigation history.

I've identified the case. Now let me find the Federal Circuit docket and counsel details.

This is Intellectual Ventures II LLC v. JPMorgan Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015). Let me pull the Federal Circuit docket and brief counsel.

Case Identification

The appeal is Intellectual Ventures II LLC v. JPMorgan Chase & Co., No. 2014-1724 (Fed. Cir.), decided April 1, 2015, reported at 781 F.3d 1372. The panel (O'Malley, Bryson, Hughes) dismissed JPMC's interlocutory appeal for lack of jurisdiction under AIA § 18(b)(2). The underlying infringement suit was Intellectual Ventures II LLC v. JPMorgan Chase & Co., No. 1:13-cv-03777-AKH (S.D.N.Y.) (Judge Alvin K. Hellerstein). The plaintiff/appellee — the party you asked about — is Intellectual Ventures II LLC ("IV II").

Sources: Unified Patents Fed. Cir. docket 2014-1724; CourtListener opinion; Wiley alert.

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Counsel of Record for the Plaintiff-Appellee (Intellectual Ventures II LLC)

Federal Circuit (appellate) counsel

Docket basis: the Federal Circuit docket reflects "Response to oral argument order from the Appellee Intellectual Ventures II LLC designating Marc Belloli as arguing attorney," and a separate response "designating Eric F. Citron as arguing attorney," followed by post-argument submission by "Eric F. Citron for Intellectual Ventures II LLC." (Unified Patents docket).

Other attorney appearing for IV II in this appeal

• Thomas R. Burns, Jr. — submitted the affidavit in support of Plaintiff-Appellee IV II's opposition to JPMC's motion to stay / jurisdiction papers in the appellate record (cited in IV II's Sept. 2, 2014 opposition). Firm not confirmed from the sources retrieved — do not rely on a firm attribution without checking the docket entry itself.

Related representation of the same plaintiff at the PTAB (different forum, same patents/IPR family)

Because IV II defended the same five patents in the parallel CBM/IPR proceedings, its PTAB counsel is relevant context (not "counsel of record" in 2014-1724):

• Brenton R. Babcock — lead counsel (Reg. No. 39,592)
• Ted M. Cannon — backup counsel (Reg. No. 55,036)
• Scott Raevsky — additional backup counsel (Reg. No. 54,384)
• All at Knobbe, Martens, Olson & Bear, LLP, Irvine, CA (2040 Main St., 14th Floor).

Source: IV II's Supplemental Mandatory Notice Adding Backup Counsel, JPMorgan Chase v. Intellectual Ventures II LLC, CBM2014-00160 (Dec. 17, 2014) (docketalarm copy).

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Important Caveats (read before citing)

1. Not every attorney of record was retrievable. The Federal Circuit docket shows at least two "Entry of Appearance" filings by Appellee IV II (Fed. Cir. Doc. Nos. 64 and 87) that were rejected with Notices of Deficiency (missing/defective proof of service; not text-searchable; the Doc. 87 form failed to list all parties represented). Those corrected appearance forms, which would enumerate the full attorney roster, were not available in the sources I could reach. A PACER pull of the 2014-1724 docket (entries 64, 87 and the corrected versions) is needed to produce a definitive, complete "counsel of record" list.

2. No sealed materials issue identified, but the underlying S.D.N.Y. protective-order material was not reviewed here.

3. What is firmly grounded: (a) the case identity and posture; (b) that IV II was plaintiff-appellee; (c) that Eric F. Citron and Marc Belloli were the appellee's designated arguing attorneys; (d) the Knobbe Martens PTAB team. What is not firmly grounded: the firm/office for Thomas R. Burns, Jr.; the precise corporate title of Marc Belloli at the time; the exact composition of the district-court trial team in No. 1:13-cv-03777-AKH. I am flagging these rather than guessing.

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For Contrast — Appellants' (Defendants') Counsel

Not asked, but useful in a counsel chart: Mark A. Lemley argued for JPMorgan Chase (then of Durie Tangri LLP, Stanford Law professor), and Goodwin Procter LLP (Stephen T. Schreiner, Eleanor M. Yost, Washington, D.C.) handled the CBMR petitions (JPMorgan Chase v. Intellectual Ventures II LLC, CBM2014-00160/00157) — the very petitions whose non-institution defeated appellate jurisdiction.

Recommended next step to finalize

Pull the paid PACER/CM-ECF docket for CAFC No. 2014-1724 and retrieve Doc. Nos. 36, 64, 70-1, 87, and 96 (plus corrected appearance forms), which carry the complete signature blocks and party-representation statements for IV II.

I'll research the defendants' counsel using the Federal Circuit docket, the S.D.N.Y. docket, firm press releases, and PTAB filings.

I have strong leads. Let me pull the appellate counsel filings and PTAB-side counsel for the defendants.

Defendants' Counsel of Record — Intellectual Ventures II LLC v. JPMorgan Chase & Co.

Scope note. "Defendant(s)" here means the five JPMC entities (JPMorgan Chase & Co.; JPMorgan Chase Bank, N.A.; Chase Bank USA, N.A.; Chase Paymentech Solutions, LLC; Paymentech LLC), who were defendants in S.D.N.Y. No. 1:13-cv-03777-AKH and appellants in Fed. Cir. No. 2014-1724 (the appeal in this case) and appellees in the later merits appeal, No. 2017-2429. Because I could not pull the live S.D.N.Y. CM/ECF docket in this session, the roster below is reconstructed from signed filings (answers, joint letter, appellate certificates of interest) plus the two Federal Circuit judgments and contemporaneous legal-press coverage. It is therefore nearly complete but should be confirmed against a current docket pull.

Headline: JPMC used a three-firm team — Dontzin Nagy & Fleissig LLP (New York; relationship/trial counsel), Durie Tangri LLP (San Francisco; patent and appellate strategy, including Mark Lemley), and Kirkland & Ellis LLP (Chicago/New York/D.C.; patent trial and PTAB/appellate work).

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1. The controlling source: Amended Certificate of Interest, Fed. Cir. Doc. 42 (Sept. 25, 2014)

This filing (signed by counsel "for Defendants-Appellants JPMorgan Chase & Co., et al.") enumerates the law firms and attorneys who had appeared for defendants in the district court or were expected to appear on appeal:

Source: Amended Certificate of Interest, CAFC 2014-1724 (archive.org)

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2. District court (S.D.N.Y. No. 1:13-cv-03777-AKH) counsel of record

Lead counsel / first-signed on the 2013 answer (Dkt. 34, Aug. 27, 2013):

Added / substituted later in the district court:

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3. Federal Circuit counsel — No. 2014-1724 (the appeal in this case)

JPMC was the appellant here (appealing Judge Hellerstein's Aug. 11, 2014 refusal to stay).

Local counsel footnote: JPMC is headquartered in Manhattan, so Dontzin Nagy & Fleissig functioned as the "home forum"/New York trial firm rather than a purely local-rules firm; Durie Tangri and Kirkland were the out-of-district patent specialists.

Dockets: Unified Patents, Fed. Cir. 2014-1724; CourtListener opinion 781 F.3d 1372.

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4. Federal Circuit counsel — No. 2017-2429 (the later merits appeal, JPMC as appellees)

From the Rule 36 judgment of Dec. 17, 2018:

"BRENT P. RAY, Kirkland & Ellis LLP, Chicago, IL, argued for defendants-appellees. Also represented by RYAN M. HUBBARD, BRIAN VERBUS; KENNETH R. ADAMO, New York, NY; JOHN C. O'QUINN, Washington, DC."

(Fed. Cir. 17-2429 Rule 36 judgment; Justia copy.) Notably, Durie Tangri and Dontzin Nagy do not appear on the 2018 brief — by the merits appeal, Kirkland had taken over the defense.

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5. PTAB-side counsel (CBM2014-00157 / CBM2014-00160) — ⚠️ NOT VERIFIED THIS SESSION

JPMC itself filed the two CBM petitions (on the '409 and '574) that drove the stay motion. I was unable to retrieve the mandatory notices for CBM2014-00157/00160 in this session (search budget exhausted), so I cannot independently confirm the petition counsel of record.

• The earlier-generated section of this case summary attributes the CBM petitions to Goodwin Procter LLP (Stephen T. Schreiner, Eleanor M. Yost, Washington, D.C.).
• This is a live contradiction to flag. The only JPMC-side PTAB-capable attorney I could verify is Eugene Goryunov (Kirkland & Ellis, Chicago), who appears on JPMC's Fed. Cir. certificate of interest and who separately represented IBM in the parallel IPR2014-00672/-682/-682 filings on the same patents. The practical possibility is that Kirkland, not Goodwin Procter, handled the CBM petitions; or that both firms were involved. Do not cite Goodwin Procter for the CBM petitions until the CBM2014-00157/-160 mandatory notices are pulled.

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6. Not defendants' counsel, but supporting them: amicus

The Clearing House Association L.L.C. and Askeladden L.L.C. filed an amicus brief in 2014-1724 supporting JPMC's opposition to IV's motion to dismiss the appeal — Wilmer Cutler Pickering Hale and Dorr LLP (Daniel Aguilar, Robert A. Arcamona, Gregory H. Lantier, Richard W. O'Neill, James L. Quarles III, Thomas G. Saunders), Boston/D.C. (amicus brief, CAFC Doc. 143). List separately from defense counsel; Wilmer did not represent JPMC.

In-house counsel: I found no JPMC in-house attorney named on any filing in this matter. Unlike IV II (which designated in-house executive Marc Belloli to argue), JPMC's in-house legal department does not appear of record on the district or appellate dockets I could reach.

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7. Sourcing caveats and contradictions

1. No verified complete S.D.N.Y. docket. The district-court roster is reconstructed from signed filings (Dkt. 34 answer; Feb. 28, 2014 joint letter; Dkt. 462 / July 2015 answer) and from the Fed. Cir. certificates of interest. Additional appearances, withdrawals or substitutions may exist that I could not see. A PACER/CM-ECF pull of 1:13-cv-03777-AKH is needed for a definitive list.
2. Role labels are inferential. No filing I found formally designates a single "lead counsel." I labeled Dontzin (first-signed on the answer, NY forum) and Roberts/Adamo (patent substance) as leads by signature order and by who argued/wrote; treat those labels as analytical, not docketed.
3. Firm-status note. Durie Tangri LLP merged into Morrison Foerster LLP in January 2021; Mark Lemley left private practice (now of counsel/Stanford). Any current-affiliation statement should reflect that. Kirkland & Ellis and Dontzin Nagy & Fleissig practice under the same names.
4. One apparent conflict worth noting: Kirkland & Ellis attorneys appear both for JPMC and for IBM, the manufacturer of the accused IBM Crypto Cards, in the parallel IPRs on the same patents. That is grounded in the IPR2014-00682 deposition transcript and in the CAFC certificate of interest listing Goryunov; I did not find a court ruling addressing it, so I flag it as an observation, not a finding of impropriety.
5. Nothing appears sealed as to defense counsel identity; the only sealed material identified in the case is the ordinary S.D.N.Y. protective-order discovery, which does not affect the counsel roster.
6. Contradiction flagged against the case metadata: the earlier "Case overview" states the '084, '409 and '574 titles could not be verified. The defendants' own answer (Dkt. 92) recites the '574 title as "Security Infrastructure For Electronic Transactions" and the '084 title as "Firewall System And Method Via Feedback From Broad-Scope Monitoring For Intrusion Detection" (Dkt. 92). That partially closes caveat (i) in the earlier section and should be adopted. It also confirms the '694 was among the three patents invalidated under § 101 on April 28, 2015 (Counts 2, 3 and 4 = '694, '084, '409), correcting the earlier section's hedge.

Recommended next steps: (a) PACER pull of Fed. Cir. 2014-1724 entries 36, 64, 87, 96 and corrected appearances; (b) PTAB mandatory notices in CBM2014-00157 and CBM2014-00160 to resolve the Goodwin Procter vs. Kirkland question; (c) S.D.N.Y. docket sheet for 1:13-cv-03777-AKH to capture all appearances, withdrawals and any pro hac vice motions.