Litigation

Actus, LLC v. Bank of America

Patents at issue (2)

6030999
7249099

Plaintiffs (1)

Defendants (1)

Summary

Case noted for disambiguation because it asserted U.S. 7,249,099, a different patent from 6,030,999.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case across multiple sources before writing.

Key finding: the 2009 E.D. Tex. case appears to have asserted the '189 and '099 patents — not 6,030,999. Let me verify what 6,030,999 is and whether it was ever in this case.

Overview

Parties. Actus, LLC v. Bank of America Corp., No. 2:09-cv-102-TJW (E.D. Tex., Marshall Div.), was filed April 9, 2009 by Actus, LLC, a Texas limited liability company with its principal place of business in Marshall, Texas — the East Texas forum itself — against 21 defendants. The lead defendant, Bank of America Corp., is a national bank holding company; the remaining defendants fell into three buckets: card networks and issuers (Visa Inc., MasterCard International, Capital One Financial, JPMorgan Chase & Co., M&T Bank Corp., Meta Financial Group, Green Dot Corp.), payment/e-commerce technology providers (Google Inc., Obopay Inc., Blaze Mobile, Javien Digital Payment Solutions, Sonic Solutions, Enable Holdings, WildTangent, Agileco), and large merchants/media companies (Wal-Mart Stores, The Walt Disney Co., Vivendi Universal U.S. Holding and Vivendi Universal S.A., The Western Union Co.). Actus did no operating business of its own; it was a purpose-formed patent-holding entity — a classic PAE — and the patents it asserted were acquired from the original applicant, PayByClick Corporation of Phoenix, Arizona, naming Marvin T. Ling as inventor. Secondary coverage at filing described Actus as "a recently formed US holding company" asserting "four patents related to an electronic payments system for e-commerce" (Finextra, reporting Law360's account).

Accused technology and patents. The theory was that general-purpose online stored-value and "one-click"/tokenized checkout systems practiced the claims. Per Law360's contemporaneous reporting, the accused products included gift cards offered by Bank of America, JPMorgan and Visa, and Google's Checkout payment service; the claims recite "electronic tokens" issued and maintained by a vendor that also sells goods/services purchasable with those tokens, with tokens bought on-line by credit card or off-line by check/money order. Two patents were pleaded as Counts I and II: U.S. Patent No. 7,328,189 — a single independent method claim to "conducting electronic commerce" via a user account at a "first member vendor," issuance/exchange of two types of electronic tokens, and settlement between member vendors; and U.S. Patent No. 7,249,099 — method claims to a "mall service provider server" coordinating multiple vendor web servers plus a database and inter-vendor compensation transfer, with an independent claim 16 drawn to the server itself (a point Actus pressed to defeat the joint-infringement attack). Actus also sought treble damages for willfulness and a permanent injunction.

Posture, venue, and significance. The case landed in the Marshall Division before Judge T. John Ward (with Magistrate Judge Chad Everingham), then the most plaintiff-friendly patent venue in the country — a "rocket docket" with fast trial settings, frequent jury trials, and locally familiar counsel; Actus's Marshall residence made venue essentially uncontestable in the pre-TC Heartland era, and every defendant in the April 2009 wave was haled into the same division. The early merits fight was about divided infringement: Visa moved to dismiss under Rules 12(b)(1), (6) and (7), arguing Actus had not pleaded "control or direction"/"mastermind" liability under Muniauction v. Thomson and had failed to join the patent owner. Judge Ward denied the joint motion to dismiss as "premature" on February 10, 2010 (Dkt. 188 motion; Dkt. 248 Memorandum Opinion and Order), noting that numerous co-defendants had already been dismissed, and Actus itself argued the motion improperly sought merits claim construction at the pleading stage. On July 21, 2010, Judge Ward set an August 30 status conference and deemed September 29, 2010 the initial case management conference date, with Disclosure of Asserted Claims and Infringement Contentions due September 17, 2010 (Dkt. 279) — i.e., the case was heading into claim construction on Local Patent Rule timelines. What makes the case notable is less the individual docket than the campaign: Actus filed serially against overlapping universes of banks, card networks, retailers and tech companies (a later wave named Apple, Amazon, Best Buy, American Express, Citigroup, eBay and others), monetizing a 1990s "electronic tokens" family against virtually anyone with a stored-payment or stored-value checkout — a textbook example of the multi-defendant, Marshall-centered NPE model that dominated 2009–2012 discourse and later drove Alice/TC Heartland reform. The portfolio had an afterlife: U.S. 7,177,838, listed on this case's AO 120 form, later surfaced in AML IP, LLC's 2021 W.D. Tex. assertion campaign, suggesting the family was re-sold to another aggregator.

Verification notes (important)

  • The 6,030,999 discrepancy. The case metadata lists U.S. 6,030,999, but I found no record of that patent in this docket. The court's own opinion describes the case as asserting "U.S. Patent Nos. 7,328,189 ... and 7,249,099" (Dkt. 248 at 1), and the AO 120 form filed at Dkt. 5 lists 7,328,189, 7,249,099, 7,177,838 and 7,376,621 (the form also bears a typo docket number, 2:09-cv-00109). I could not verify what 6,030,999 covers or that Actus ever asserted it; the "’999"/"’099" shorthand collision flagged in the prior case summary is the most likely explanation, but that is inference, not a sourced fact. Treat 6,030,999 as unconfirmed as an asserted patent pending a PACER pull of the operative complaint and infringement contentions.
  • Unverified items. I could not verify the case's final disposition (settlement, dismissal, or judgment), the identity/business of Actus's principals beyond the "holding company" description, the specific Actus attorney-of-record roster beyond the "William Davis" signature block on Justia filings, or any PTAB proceeding on these patents (none surfaced; IPR did not exist until 2012, so invalidity would have run through district court and possibly ex parte reexamination — unverified).
  • Attributed but secondary-sourced. The 2009 Techdirt/Joe Mullin reporting noted that Actus's litigation counsel appeared to share an office address with the son of the presiding judge (also a patent attorney). That is press characterization, not a court finding, and I did not locate any recusal motion or ruling addressing it — flag as unconfirmed.
  • Sources: Dkt. 248 memo opinion (docs.justia.com/cases/federal/district-courts/texas/txedce/2:2009cv00102/115490/248); Dkt. 279 order (…/115490/279); Dkt. 5 AO 120 (…/115490/5); Dkt. 101 Visa motion to dismiss (cases.justia.com/…/115490/101/0.pdf); Finextra/Law360 (finextra.com/news/fullstory.aspx?newsitemid=19929); Techdirt (techdirt.com/company/actus/).

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case systematically, starting with identifying the actual docket and key rulings.

Let me pull the full docket and look for later-stage events.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and counsel appearances for this case.

The docket number appears to be 2:09-cv-102-TJW. Let me pull the full docket and verify which patents were actually asserted.

Now let me verify the 6,030,999 patent and check the full docket for every plaintiff-side appearance.

Bottom line

Only one attorney appears as counsel of record for plaintiff Actus, LLC in the filings I could locate: William E. "Bo" Davis III of The Davis Firm, PC in Longview, Texas. He signed the plaintiff's papers as "Lead Attorney" / "Attorney for Plaintiff," and no separate local counsel, of-counsel, or in-house appearance for Actus appears in the materials reviewed.

Important threshold caveat on the patents: The docket and the court's own opinion in this case identify the patents-in-suit as U.S. 7,328,189, 7,249,099, 7,177,838 and 7,376,621. I found no reference to U.S. 6,030,999 anywhere in the Actus v. Bank of America record I could access — consistent with the case-summary note flagging 6,030,999/7,249,099 as a disambiguation issue. So the counsel identification below is for the Actus–Bank of America action asserting the '099 patent (No. 2:09-cv-102-TJW); I could not confirm a docket in which 6,030,999 was actually asserted against Bank of America.

Counsel of record for Plaintiff Actus, LLC

Attorney Role Firm / office Note on experience
William E. "Bo" Davis III (Tex. Bar No. 24047416) Lead counsel — sole plaintiff-side signatory; also effectively local counsel (Longview, E.D. Tex.) The Davis Firm, PC, 111 West Tyler Street, Longview, Texas 75601 (ph. 903-230-9090; fax 903-230-9661) Baylor J.D. (2004); listed in The Best Lawyers in America since 2019 for Litigation–Intellectual Property and Patent Law; the Davis Firm later became known for the TQDelta DSL/communications patent campaign in the E.D. Tex. (e.g., TQDelta v. Nokia), per Davis Firm filings in that litigation.

Documentation for the appearance:

What I could not confirm (stated explicitly)

  • No additional plaintiff-side counsel. I found no pro hac vice admission, no separate E.D. Tex. local-counsel designation, and no in-house counsel of record for Actus. Actus was described in briefing as an exclusive licensee (not owner) of the '189 and '099 patents, so it is possible an owner-side attorney appeared later in the case; I did not locate such an entry and am not naming anyone.
  • Edward Chin is identified as "Of Counsel" at The Davis Firm in a later Davis Firm filing (TQDelta matter, E.D. Tex.) — https://storage.courtlistener.com/recap/gov.uscourts.txed.[208414](/patent/208414)/gov.uscourts.txed.208414.202.4.pdf — but I found no appearance by him in the Actus docket, so he should not be listed as counsel here without a docket confirmation.
  • No sealed-counsel issue identified. The signature blocks are visible in the public filings; the limitation is my inability to view the full PACER docket sheet, not sealing.
  • Press allegation, unverified: Techdirt (June 3, 2009) reported that Actus's lawyer appeared to share an office/address with a patent attorney who is the son of the presiding judge (Judge T. John Ward) — https://www.techdirt.com/2009/06/03/store-payment-info-in-your-online-store-watch-out-for-patent-infringement-lawsuits/. I could not verify the underlying facts, and the docket shows Judge Ward continuing to preside (he signed the Feb. 10, 2010 order), so no recusal is reflected in the materials I reviewed. Treat that report as unconfirmed.
  • Filing-era address: The Davis Firm's address in this case was 111 W. Tyler Street, Longview; the firm later used 213 N. Fredonia St., Suite 230, Longview.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research this docket and the defendant's counsel of record.

Bottom line

I was not able to verify, from any source I could retrieve, the names of the attorneys of record for Bank of America in this matter. Rather than populate a counsel table with guesses, I'm reporting exactly what the record shows and where the gap is. There is also a substantive discrepancy between the case metadata and the docket that needs to be resolved before counsel research can be done reliably.

1. What the record does confirm

The case is Actus, LLC v. Bank of America Corp., et al., No. 2:09-cv-00102-TJW (E.D. Tex., Marshall Div.), filed April 9, 2009, before Judge T. John Ward. Bank of America Corporation was the first-named defendant among 21 (Bank of America Corp., Blaze Mobile, Capital One, Enable Holdings, Google, Green Dot, Javien, JPMorgan Chase, MasterCard, Meta Financial, M&T, Obopay, Sonic Solutions, Visa, Vivendi Universal U.S., Vivendi Universal S.A., Wal-Mart, Walt Disney, Western Union, WildTangent, AgileCo).

Verified events involving BofA's representation:

  • BofA filed its own Rule 12(b)(6) motion to dismiss on June 4, 2009 (Dkt. 77), "Defendant Bank of America Corporation's Motion to Dismiss for Failure to State a Claim." See Actus's unopposed extension motion, which recites: "Bank of America filed its motion to dismiss on June 4, 2009. (Dkt. 77)" and certifies that "Counsel for Actus conferred with counsel for Bank of America and Bank of America does not oppose." — Dkt. 132, docs.justia.com
  • BofA's motion was one of the two lead defense motions that co-defendants incorporated by reference. Visa's motion states it is "based on the same arguments advanced by Defendants MasterCard ... and Bank of America ... in their motions to dismiss filed on June 3, 2009 and June 4, 2009, respectively," and that Visa "incorporates by reference the facts and arguments advanced by MasterCard and Bank of America." — Dkt. 101, cases.justia.com
  • Judge Ward denied the joint motion to dismiss as premature on February 10, 2010 (Dkt. 248). — Dkt. 248

So counsel had appeared for BofA by June 4, 2009 — this is not a case where the defendant had not yet appeared or where counsel is sealed off. The problem is purely that the signature blocks and the docket's attorney listing were not captured in any of the documents I could retrieve.

2. Why I cannot give you the names

The accessible copies of the docket (Justia's PACER-derived page for No. 2:09-cv-00102) surface filing entries and text, but the underlying PDFs I could open for this case were those of co-defendants (MasterCard's and Visa's motions, Enable Holdings' answer/counterclaims, Actus's briefing). None of them contains BofA's signature block, and BofA's own Dkt. 77 and its answer were not in the retrievable set. I did not find a Law360, Reuters Legal, or firm-website page naming BofA's Actus team. I will not infer names from BofA's counsel in unrelated matters or from the co-defendants' firms.

3. Documented co-defendant counsel (for contrast — not BofA's counsel)

These are verified from the filings, and are useful because BofA's motion was the companion brief that MasterCard's and Visa's motions incorporated:

Attorney Role Firm / office Note
Robert C. Scheinfeld Lead (MasterCard) Baker Botts LLP, New York Registered patent attorney; longtime Baker Botts IP litigator
Eliot D. Williams Of counsel (MasterCard) Baker Botts LLP, New York Patent litigator, ex-Fish & Neave
Eric J. Faragi Associate (MasterCard) Baker Botts LLP, New York
S. Calvin Capshaw Local counsel (MasterCard) Capshaw DeRieux LLP, Longview/Gladewater, Tex. Prolific E.D. Tex. local patent counsel
Elizabeth L. DeRieux Local counsel (MasterCard) Capshaw DeRieux LLP
N. Claire Abernathy / D. Jeffrey Rambin Local counsel (MasterCard) Longview, Tex.

Source: MasterCard's motion to dismiss, Dkt. 58.

4. Discrepancy in the case metadata — flag this before relying on the file

The metadata lists the patents at issue as 6,030,999 and 7,249,099. The docket does not match that:

  • The AO-120 form filed at case opening lists 7,328,189; 7,249,099; 7,177,838; and 7,376,621 — all titled "Method and Apparatus for Conducting Electronic Commerce Transactions Using Electronic Tokens." Dkt. 5
  • The February 2010 opinion describes the asserted patents as the '189 patent and the '099 patent. The '099 patent (issued July 24, 2007) has two independent claims, including apparatus claim 16 directed to a server operated by a single entity.
  • U.S. Patent No. 6,030,999 does not appear anywhere in the record I retrieved for this case — not in the AO-120 form, not in the infringement counts, not in the opinion.

This is consistent with the existing case summary's disambiguation note, and it means the "6,030,999" entry in the metadata is likely either a typo for one of the Actus token patents (7,177,838 or 7,376,621 are the closest candidates) or reflects a different, later Actus filing I could not locate. I found no docket for any Actus v. Bank of America case asserting 6,030,999. Because my search budget ran out before I could exhaustively check, treat that as "not found," not "does not exist." This matters for your counsel question: if the operative case is a later, separate complaint, the BofA litigation team may be entirely different from the 2009 team.

5. What to pull to close the gap

  1. PACER docket for 2:09-cv-00102-TJW — the party/attorney screen, and the signature pages of Dkt. 77 (BofA's motion to dismiss) and BofA's answer. In E.D. Tex. practice of that era, expect a local counsel firm (Tyler/Longview/Marshall) listed first with a national firm behind it.
  2. The certificate of service on the original complaint — it typically lists each defendant's counsel once appearances are entered.
  3. The 2010 docket after Dkt. 248 — check for a settlement/dismissal order and any consolidated lead-case number (the Actus campaign had multiple member cases, e.g., 2:09-cv-168-TJW against Amazon/Apple/eBay et al., same plaintiff's counsel William E. "Bo" Davis III of The Davis Firm, Longview).
  4. PTAB: I did not verify any IPR petitions by Bank of America against the '099 patent in this search. The '099 patent's claim 16 apparatus claim was the centerpiece of Actus's infringement theory, which is the kind of claim a bank defendant would have petitioned on — but I have no sourced confirmation, so do not record an IPR as fact.

If you can pull the Dkt. 77 signature page or the PACER attorney listing, I can complete the counsel table with roles, firm offices, and prior-case notes.

Record id: 6030999-actus-llc-v-bank-of-america-et-al · edit in Admin