Bank of America, N.A. et al. v. Intellectual Ventures I LLC

Bank of America, N.A. and PNC Financial Services, Inc., both major U.S. financial institutions offering a wide range of services including commercial banking, wealth management, and investment banking, initiated a Covered Business Method (CBM) review against Intellectual Ventures I LLC. Intellectual Ventures I LLC is a well-known Non-Practicing Entity (NPE) or Patent Assertion Entity (PAE), characterized by its business model of acquiring extensive patent portfolios and then licensing or asserting them in litigation, often leading to it being described as a "patent troll". The CBM proceeding, CBM2014-00030, specifically challenged U.S. Patent No. 7,603,382, titled "Advanced internet interface providing user display access of customized webpages." This patent generally describes a system for providing customized web pages and navigation data to a user based on their preferences and browsing history, with capabilities such as selectively offering coupons. While the patent's abstract does not explicitly mention financial services, Intellectual Ventures was known to assert patents, including those broadly related to security and electronic banking, against financial institutions during this period.

This case was heard before the Patent Trial and Appeal Board (PTAB) as a Covered Business Method (CBM) review. The CBM program, established under the America Invents Act (AIA), was specifically designed to review patents claiming methods or apparatuses for performing operations used in financial products or services, as long as they were not deemed "technological inventions". This venue was significant because it allowed petitioners to challenge patentability on all statutory grounds, including patent eligibility under 35 U.S.C. § 101, which proved to be a powerful tool against business method patents, especially in the wake of Supreme Court decisions like Alice Corp. v. CLS Bank Int'l.

The proceeding is notable as it reflects a strategic defensive action by operating companies (the banks) against an aggressive patent assertion campaign by a prominent NPE (Intellectual Ventures). Intellectual Ventures had filed numerous infringement lawsuits against major banks during the early 2010s, alleging infringement across various electronic banking and data security technologies. The high success rate of CBM petitions, with over 95% finding at least one claim invalid, made them a critical mechanism for financial institutions to challenge the validity of such patents. The eventual expiration of the CBM program in September 2020 has led to concerns within the financial industry about a potential increase in patent litigation from entities asserting business method patents.

Here's a summary of the key legal developments and outcome for the patent infringement litigation context surrounding CBM2014-00030:

Parallel Patent Infringement Litigation (District Court)

• Filing & Initial Pleadings: Intellectual Ventures I LLC (IV) initiated a broad patent infringement campaign against numerous financial institutions in 2013. Among these, IV filed separate patent infringement lawsuits against Bank of America and PNC Financial Services Group, Inc. in June and August 2013, respectively. While the specific case number directly linking both Bank of America and PNC as defendants asserting infringement of US7603382 from IV is not explicitly detailed as the originating suit for the CBM in the provided results, the CBM itself indicates that Bank of America, N.A. and PNC Financial Services, Inc. were the petitioners challenging IV's patent. Many of these lawsuits, including those against Capital One, involved patents related to financial technologies, with some allegations pointing to infringement based on compliance with Payment Card Industry Data Security Standards (PCI-DSS). The provided snippets also indicate that IV sued PNC Financial Services Group, Inc., PNC Bank, NA, and PNC Merchant Services Company, L.P. in the Western District of Pennsylvania (No. 2:14-cv-00832) on June 25, 2014, and this case was later consolidated with an earlier case (No. 2:13-cv-00740).
• Pre-trial Motions: In a related case, Intellectual Ventures I LLC v. Capital One Financial Corp. (E.D. Va.), involving U.S. Patent No. 8,083,137 and U.S. Patent No. 7,603,382, the court concluded that the patents were invalid for lack of patentable subject matter on April 16, 2014, prior to the Supreme Court's Alice decision in June 2014. This ruling led to stays in other pending cases involving the same patents. The Federal Circuit later affirmed the invalidity rulings for several patents, including those asserted against Capital One, under Section 101 as claiming ineligible subject matter.
• Claim Construction (Markman) Outcomes: Specific Markman outcomes for US7603382 in a case directly involving Bank of America and PNC against Intellectual Ventures are not explicitly detailed in the provided information. However, the invalidation of the patent claims in the CBM proceeding effectively negated the need for claim construction in the CBM itself for those invalidated claims.
• Discovery Milestones: General references to "extensive discovery" were made in related IV patent infringement cases, such as the one against Capital One in the District of Maryland.
• Trial Events, Verdict, and Post-trial Motions: No trial or verdict information for a direct patent infringement case involving US7603382 with Bank of America or PNC as defendants was found, likely due to the parallel CBM proceeding and the outcome of related cases.
• Settlement, Dismissal, Judgment, or Appeal: The outcome of Intellectual Ventures I LLC v. Capital One Financial Corp., where the '382 patent was found invalid under § 101, had a significant impact on related litigation. The Federal Circuit affirmed the invalidity findings for several patents asserted by Intellectual Ventures against financial institutions, including those in the Capital One case, in March 2017.

Parallel PTAB CBM Proceeding (CBM2014-00030)

• Filing & Initial Pleadings (CBM Petition): Bank of America, N.A. and PNC Financial Services, Inc. filed a Covered Business Method (CBM) patent review petition against Intellectual Ventures I LLC regarding U.S. Patent No. 7,603,382 on November 12, 2013.
• Institution Decision: The PTAB instituted the CBM review. The CBM process typically involves the Board deciding whether to institute review based on the likelihood of the petitioner prevailing, and then issuing a final written decision within 12-18 months of institution.
• Final Written Decision: A Final Written Decision was issued on November 12, 2014, in CBM2014-00030. The PTAB found claims 1-6, 16-19, 21-23 of U.S. Patent No. 7,603,382 to be unpatentable.
• Effect on Litigation: The PTAB's decision to find claims of US7603382 unpatentable would typically lead to a stay or dismissal of any co-pending district court litigation asserting those claims. The PTAB prioritizes expeditious resolution of CBMs, generally completing them within one year of institution, and typically denies motions to stay CBM proceedings even in the face of favorable district court rulings for the patent owner, given the statutory mandate for timely completion.
• Appeal: No appeal of the CBM2014-00030 Final Written Decision specifically to the Federal Circuit is indicated in the provided search results. However, Federal Circuit decisions related to other Intellectual Ventures CBMs and district court cases, particularly regarding Section 101 eligibility, have consistently ruled against Intellectual Ventures, finding various patents, including those in the financial sector, ineligible. This broader trend underscores the legal landscape in which CBM2014-00030 was decided. The USPTO will not issue a certificate canceling claims until appeals are exhausted.

Richard A. Crudo of Sterne Kessler was counsel of record representing Bank of America, N.A. and PNC Financial Services Group, Inc. in the CBM2014-00030 proceeding.

Here is the information for the identified attorney:

• Name: Richard A. Crudo
• Role: Lead Counsel
• Firm: Sterne, Kessler, Goldstein & Fox P.L.L.C.
• Office Location: Washington, D.C. (Sterne Kessler is based in Washington, D.C.)
• Relevant Patent Litigation Experience: Richard A. Crudo is a director in Sterne Kessler's Electronics and Trial & Appellate Practice Groups, with over a decade of experience litigating intellectual property cases, including representing petitioners in CBM proceedings where finance and Internet-related patents were invalidated under § 101.

Counsel of Record for Intellectual Ventures I LLC

In CBM2014-00030, Intellectual Ventures I LLC was represented by attorneys from Finnegan, Henderson, Farabow, Garrett & Dunner LLP.

The following attorneys were involved:

• Michael J. Flibbert

  • Role: Lead Counsel. Flibbert has over 20 years of patent litigation experience, including serving as lead counsel in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB), district court litigations, and appeals at the U.S. Court of Appeals for the Federal Circuit. He has specific experience representing patent holders in cases across various technology areas, including pharmaceuticals, biotechnology, chemistry, and materials science. He also lectures on PTAB practice.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Washington, DC office.
  • Relevant Experience Note: Extensive experience in PTAB IPR proceedings, Federal Circuit appeals, and district court patent litigation, particularly for pharmaceutical patent holders.

• D. Brian Kacedon

  • Role: Lead Counsel. Kacedon is recognized for his expertise in IP transactions and patent litigation. He has drafted and negotiated numerous agreements across various technologies and has successfully litigated multiple lawsuits and arbitrations based on his transactional experience.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Washington, DC office.
  • Relevant Experience Note: Specializes in patent and technology licensing and litigation, with a strong background in IP transactions and litigating agreement disputes.

While a comprehensive list of all appearing attorneys on the PTAB docket for this specific CBM is not directly available from the search results, Michael J. Flibbert and D. Brian Kacedon are prominently associated with Finnegan's representation of Intellectual Ventures in PTAB and related patent litigation concerning the '382 patent. Other Finnegan attorneys may have also been involved in various capacities.