Commerce Bancshares v. Intellectual Ventures II LLC

I'll research this case across the docket, PTAB records, and press coverage.

Let me dig into the PTAB records and the Federal Circuit opinion specifics.

Case Overview and Background

The parties and their business models. This appeal arises from one of the largest coordinated NPE campaigns ever directed at a single industry. The patent holder and appellant/real party in interest is Intellectual Ventures II LLC ("IV II"), a Bellevue, Washington LLC that is part of the Intellectual Ventures enterprise founded by Nathan Myhrvold. IV II is a classic non-practicing entity/patent assertion entity: it does not make, use, or sell banking products, but acquires and licenses patents. As the Western District of Missouri found in the related fee litigation, IV is "deeply involved in the business of invention," had "earned more than $3 billion by licensing its patents to third parties" as of June 2013, and "since 2009, Intellectual Ventures, IV, and related companies have filed more than 80 patent lawsuits" (W.D. Mo. Order, ECF 102, Sept. 29, 2017). The appellees/cross-appellants are operating community and regional banks: Commerce Bancshares, Inc. and Commerce Bank (Kansas City, Missouri), together with co-appellees Compass Bank (BBVA Compass) and First National Bank of Omaha, which jointly litigated and jointly petitioned the PTAB. Commerce's counsel below included Senniger Powers (St. Louis) and, on appeal, Kutak Rock (Omaha) and Jones Day (Kutak Rock, Aug. 3, 2017; Fed. Cir. judgment, CourtListener). Note on caption: the Federal Circuit docket styles the appeal Intellectual Ventures II LLC v. Commerce Bancshares, Inc., because IV II was the appellant (it lost at the PTAB) and the banks were appellees/cross-appellants; the underlying district case, No. 2:13-cv-04160-NKL, was captioned IV II v. Commerce Bancshares, Inc. and Commerce Bank. The case-metadata designation of Commerce Bancshares as "plaintiff" reflects the underlying posture rather than the appellate one.

The accused technology and the patents. IV II filed against Commerce on June 20, 2013 — one day after sending a demand letter — accusing Commerce's online/mobile banking and data-security operations, and specifically its compliance with the Payment Card Industry Data Security Standard (PCI DSS) for encrypting data in communication sessions, of infringing five patents (W.D. Mo. Order at 1–3; IPR2014-00724 Petitioner's Notice of Related Matters). The patents (the same five asserted against Chase, SunTrust, U.S. Bancorp, Huntington, BBVA Compass, PNC, Capital One and others) are:

• U.S. Patent No. 5,745,574 — "Security Infrastructure for Electronic Transactions" (Sead Muftic; filed Dec. 15, 1995; issued Apr. 28, 1998): a hierarchical public-key infrastructure in which policy certifying authorities and certification authorities request, issue, update, revoke and validate public key certificates across organizational boundaries — the patent the case metadata identifies as at issue, and the one accused via PCI DSS encryption.
• U.S. Patent No. 6,715,084 — "Firewall System and Method via Feedback from Broad-Scope Monitoring for Intrusion Detection" (Aaron & Anschutz; filed Mar. 26, 2002): network-based intrusion detection in which a central "data collection and processing center" correlates traffic from many hosts/sites and alerts or adjusts firewalls on devices anticipated to be affected.
• U.S. Patent No. 6,826,694 — asserted via Commerce's "Security Practices"; the claims recite packet filtering using packet header parameters, payload contents and "access rules" (title not verified in the sources I reviewed).
• U.S. Patent No. 6,314,409 — "System for Controlling Access and Distribution of Digital Property" (filed Oct. 26, 1998; issued Nov. 6, 2001): controlling access to digital content via access-rights rules; accused via Commerce's ROAMPay mobile payment product and PCI DSS technology.
• U.S. Patent No. 7,634,666 — a cryptographic engine; IV accused Commerce's use of the IBM System z10 mainframe crypto card, then signed a covenant not to sue and dismissed that claim in May 2014 after Commerce showed the hardware did not use the card (W.D. Mo. Order at 2–3).

Procedural posture, venue, and why the case matters. The infringement suit was filed in the U.S. District Court for the Western District of Missouri, Central Division, before Judge Nanette K. Laughrey (Jefferson City). Venue was deliberate on IV's part: it sued each bank in its home district — Commerce in W.D. Mo., BBVA Compass in N.D. Ala. (Judge Kallon), First National Bank of Omaha in D. Neb., SunTrust in N.D. Ga. (Judge Duffey), and JPMorgan Chase in S.D.N.Y. (Judge Hellerstein) — producing parallel claim-construction proceedings and, as Judge Duffey observed, "the prospect for inconsistency in a complex and unfamiliar area of the law" (SunTrust stay order, Oct. 7, 2014). The litigation was rapidly displaced by AIA post-grant proceedings. Commerce's motion to stay was granted on June 4, 2014, with the case dismissed without prejudice subject to reopening after the IPRs (W.D. Mo. Order at 3). The banks (with IBM filing separately) challenged every asserted patent: IPR2014-00724 (Compass/Commerce/FNBO v. IV II, filed May 1, 2014; instituted Nov. 6, 2014) ended in a Final Written Decision on Nov. 5, 2015 holding claims 18–31 of the '574 patent unpatentable — claims largely anticipated by the Kapidzic certificate-management paper and by the MITRE PKI Report (alone or with RFC 1424) (IPR2014-00724 FWD; Nat'l L. Rev. summary); IBM's parallel IPR2014-00660 (instituted Oct. 20, 2014; consolidated with IPR2014-01410) reached the same result on Oct. 19, 2015. IV never appealed the '574 decisions — a point Judge Laughrey emphasized in denying Commerce's § 285 fee motion, where she also rejected IV's attempt to disqualify Kapidzic as its own inventor's work because Dr. Muftic's testimony was uncorroborated (W.D. Mo. Order at 17). The appeals that were taken (Nos. 2016-1519, 2016-1520, 2016-1528) concerned the '084 firewall/intrusion-detection patent: the Banks' IPR2014-00801 (instituted Dec. 1, 2014 on Aucsmith under § 102(e); claims 26, 28 and 30–32 held anticipated, claim 33 not) and IBM's IPR2014-00682 (instituted Oct. 30, 2014; Porras + Cheswick). After argument on Dec. 9, 2016, a nonprecedential panel (Dyk, Plager, Reyna) affirmed on March 27, 2017, holding that claim construction of the "data collection and processing center" was dispositive — the Board correctly read it to permit indirect analysis through results reported by other network devices — and that IBM's IPR2014-00682 rendered all claims at issue in both proceedings obvious, mooting the Banks' cross-appeal on claim 33 (Fed. Cir. opinion, 2016-1519; CourtListener opinion; 682 F. App'x 891 (Fed. Cir. 2017)). A companion appeal, No. 2016-1416, resolved the '694 patent against IV (671 F. App'x 788 (Fed. Cir. 2016)); Commerce then reopened the district case, obtained final judgment, and lost its bid for attorney fees (costs of $1,804.49 awarded) on Sept. 29, 2017.

The case is notable on several axes. First, it is the leading illustration of an industry-coordinated IPR defense: competitors' non-party petitions (IBM) plus the defendants' own petitions wiped out every asserted claim of all five patents within roughly two and a half years, and district courts in multiple circuits stayed their cases to let the PTAB act — a template that banks and other PCI-mandated end users relied on. Second, it exposes the policy vulnerability of the IV bank campaign: IV was asserting that compliance with a mandatory security standard (PCI DSS) infringed, which drew the attention of the FFIEC, the ABA, state attorneys general and the White House's June 2013 patent-assertion study (Bank Info Security, June 25, 2013; Aug. 28, 2013). Third, it produced useful doctrinal data points: the failed CBM2014-00160 petition by JPMC on the '574 patent (denied because the '574 was a "technological invention" and not a covered business method patent, CBM2014-00160 decision), contrasted with the successful IPRs; the corroboration/derivation fight over the Kapidzic prior art; the § 285 fee denial showing the post-Octane limits on fee-shifting even when all patents fall; and the antitrust spillover in Capital One's monopolization counterclaims against IV, in which the FTC and DOJ filed amicus briefs on Noerr-Pennington (FTC/DOJ brief).

Sourcing caveats. I verified the district-court record, PTAB papers and Federal Circuit opinion through the sources linked above; I did not independently retrieve PACER docket sheets for the appellate case or confirm every docket-entry number from PACER, so those should be checked before being quoted. Two ambiguities deserve flagging rather than resolution by assumption: (1) the metadata assigns the '574 patent to this appeal, while the Federal Circuit's 2016-1519 merits opinion resolved the '084 patent (the '574 was invalidated by the PTAB and never appealed) — the '574 is nonetheless the foundational patent of the IV v. Commerce dispute and is listed as such in the case metadata; and (2) the precise allocation of appeal numbers (2016-1519 vs. 2016-1520 vs. 2016-1528) among Commerce, Compass and FNBO is not confirmed by the sources I reviewed, though the three were consolidated and decided together. The '574's 20-year term from a December 1995 filing date would have run in December 2015 absent any adjustment; I have not verified any patent term extension or adjustment.

I'll research this case systematically across the sources you mentioned.

Good initial data. Let me dig deeper into the Federal Circuit opinion, PTAB decisions, and district court docket specifics.

Let me pin down the Federal Circuit opinion details and the PTAB outcomes for the '574 patent.

Key Legal Developments — Chronology

A note on the case metadata. The district‑court action at the root of this matter asserted five patents, and the tracker‑supplied "patent at issue" (U.S. 5,745,574) is the lead/ flagship patent of the underlying W.D. Mo. case. The consolidated Federal Circuit appeal captioned Intellectual Ventures II LLC v. Commerce Bancshares, Inc., Nos. 2016‑1519/-1520/-1528 (Fed. Cir. 2017) — the appeal identified by case number 2016‑1519 — actually ruled on the PTAB's decisions concerning U.S. Patent 6,715,084 (the '084 "firewall" patent), with the '574 patent handled in separate PTAB proceedings that IV elected not to appeal. I flag this because it matters for the "parallel PTAB" analysis below.

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I. Filing, pleadings and counterclaims (2013)

II. Narrowing, mediation, and the '666 covenant (2013–2014)

• November 2013 — Court‑supervised mediation. IV then demanded sworn declarations that Commerce's zSeries mainframes lack the crypto card; Commerce's counsel supplied them on 2013‑11‑22.
• 2014‑05‑12 — After negotiating a covenant not to sue, the parties file a stipulation of dismissal of Count V ('666 patent) and the corresponding counterclaim count (Dkt. 74). This became a factor in the later fee fight: Judge Laughrey credited IV for "approaching this litigation in a reasonable manner" when it dropped the '666 claims.

III. Pre‑trial motions of substance: claim construction briefing and the stay (2014)

This case never reached a Markman hearing or a claim‑construction order. The sequence:

• 2014‑03‑28 — Joint Prehearing Statement and Claim Construction Chart (agreed + disputed terms, with intrinsic and extrinsic evidence).
• 2014‑04‑23 — Revised Joint Prehearing Statement and Claim Construction Chart.
• 2014‑04‑25 — Commerce moves to stay the action pending IPR (Dkt. 63), arguing IPR resolves validity "within 18 months of the date of the petition" and that "this case remains in its infancy. Very little discovery has been conducted, no depositions have been taken, and no substantive motions have been filed."
• 2014‑04‑28 — Opening claim‑construction briefs filed (Commerce Dkt. 65; IV Dkt. 66). Commerce's brief attached the '574, '694, '084 and '409 patents and their file histories.
• 2014‑05‑12 — IV's opposition to the stay (Dkt. 75); IV also filed an FNBO stay opposition as an exhibit.
• 2014‑05‑15 / 2014‑05‑19 — Commerce's reply (Dkt. 77) attaching its IPR petitions IPR2014‑00719, IPR2014‑00722 and IPR2014‑00724; responsive claim‑construction briefs filed (Dkt. 78, 79).
• 2014‑05‑22 — Notice that Commerce had filed final IPR petitions in IPR2014‑00786, IPR2014‑00793 and IPR2014‑00801 (Dkt. 80).
• 2014‑06‑04 — The court grants the stay and dismisses the case without prejudice (Dkt. 82), subject to reopening "within forty‑five days after all of the pending petitions for inter partes review are denied or, if any of the petitions are granted, the issuance of a final written decision pursuant to 35 U.S.C. § 318 in each of the inter partes review proceedings… or the final decision on any appeals taken therefrom, whichever is later." No dispositive motions (no motion to dismiss, no transfer motion, no summary‑judgment motion) were ever decided. No substantive discovery — no depositions, no expert discovery — occurred.

IV. Parallel PTAB proceedings and their effect on the litigation

Numerous petitions were filed against the four surviving asserted patents, by both the Banks and IBM:

'574 patent (5,745,574)

• IPR2014‑00660 (IBM) and IPR2014‑00724 (Compass Bank, Commerce Bancshares, FNBO), challenging claims 18–31, asserting the Kapidzic & Davidson "A Certificate Management System" paper, RFC 1422, and related art. 2014‑11‑19: Board denies IV's requests to terminate under § 315(d), consolidate, or join with ‑00660 (Paper 16; APJs Droesch, Bisk, Busch). IBM also filed IPR2014‑01410 (claim 30) on 2014‑08‑28.
• IV argued the Kapidzic paper was not prior art because the concepts were those of inventor Sead Muftic, not his graduate students.
• The PTAB's adverse decision on the '574 was not appealed by IV — a fact Judge Laughrey expressly relied on later. (The precise FWD date in the '574 IPRs is not confirmed in the sources I could verify; the decisions issued during 2015, roughly 18 months after the April/May 2014 filings.)

'694 patent (6,826,694)

• IPR2014‑00587 (IBM) and IPR2014‑00786 (Banks). FWDs issued in 2015 finding claims unpatentable.
• 2016‑12‑09 — Federal Circuit affirms by Rule 36 judgment in Intellectual Ventures II LLC v. Compass Bank, No. 2016‑1416, 671 Fed. App'x 788 (Fed. Cir. 2016) (per curiam; Dyk, Plager, Reyna). Counsel: Brenton Babcock/Edward Cannon (Knobbe Martens) for IV; Jason S. Jackson (Kutak Rock, Omaha) argued for the Banks, with Jones Day, Carrington Coleman (for Compass), and Marc Wade Vander Tuig (Senniger Powers, St. Louis) for Commerce Bancshares.

'084 patent (6,715,084)

• IPR2014‑00681 (IBM) — institution denied.
• IPR2014‑00682 (IBM) — instituted 2014‑10‑30 on claims 26, 28, 30–33; IBM's rehearing request over a claim‑construction issue was filed 2014‑11‑13. FWD 2015‑10‑21 held claims 26, 28 and 30–33 obvious over Porras ("Live Traffic Analysis of TCP/IP Gateways") in view of Cheswick ("Firewalls and Internet Security") — the Board rejecting IV's argument that the "data collection and processing center" must directly analyze network‑entering data.
• IPR2014‑00793 (Banks; Kesidis declaration) and IPR2014‑00801 (Banks) — ‑00801 instituted 2014‑12‑01 only on Aucsmith (US 2003/0110392) anticipation. FWD 2015‑10‑21: Aucsmith anticipated claims 26, 28 and 30–32, but not claim 33. IV's real‑party‑in‑interest attack (BBVA, IBM) was rejected. Panel: Droesch, Bisk, Busch (Bisk writing).

'409 patent (6,314,409)

• IPR2014‑00719 and IPR2014‑00722 (Banks); CBM2014‑00157; and a later IPR2015‑01323. The '409 patent was also invalidated in the PTAB. Related CBM activity included CBM2014‑00160 (JPMorgan, filed 2014‑07‑18).

'666 patent (7,634,666) — dismissed from the district case by covenant/stipulation; no PTAB outcome is material.

Effect on the district case: By the time of reopening, "every asserted claim of the patents that were at issue has been found unpatentable or invalid under 35 U.S.C. §§ 101, 102 and/or 103." Judge Laughrey cited five proceedings: the S.D.N.Y. JPMorgan decision, IPR2014‑00786, IPR2014‑00682, IPR2014‑00801, and CBM2014‑00157.

V. The Federal Circuit appeals (2016–2017)

• 2016‑1519, 2016‑1520 and 2016‑1528 were consolidated. IV appealed the PTAB's unpatentability determinations in both the IBM proceeding (IPR2014‑00682) and the Banks' proceeding (IPR2014‑00801); the Banks cross‑appealed the Board's finding that Aucsmith did not anticipate claim 33.
• 2016‑12‑09 — Kutak Rock reports Jason Jackson argued for the Banks before the Federal Circuit. (Caution: the same date appears as the Rule 36 judgment date in 2016‑1416, so treat the argument date as reported rather than confirmed.)
• 2017‑03‑27 — *Decision: Intellectual Ventures II LLC v. Commerce Bancshares, Inc., Nos. 2016‑1519, ‑1520, ‑1528, 682 Fed. App'x 891 (Fed. Cir. 2017) (nonprecedential).*
  • Held: claim construction was dispositive. IV's challenge "rests entirely on a claim‑construction challenge," which the court rejected. The Board's construction of "analyzing data" under the broadest reasonable construction — permitting the data collection and processing center to indirectly analyze network data by analyzing results of analyses performed by other devices — was supported by ordinary meaning and the specification (Patterson + Sheridan summary).
  • Result: Affirmed the Board's cancellation of claims 26, 28 and 30–33 in IBM's IPR2014‑00682, which disposed of all claims at issue in both proceedings.
  • Because that affirmance "leaves no live issue in the Banks' proceeding," the court dismissed the appeal and cross‑appeal in IPR2014‑00801 as moot, citing Synopsys, Inc. v. Lee, 812 F.3d 1076, 1077–78 (Fed. Cir. 2016) and 13C Wright & Miller § 3533.10.
• Practical significance: two of IV's bank‑suit "firewall/digital security" patents ('084, '694) were finally cancelled; the '574 went down without appeal. Press coverage (Kutak Rock, 2017‑08‑03) framed this as "a significant blow to the business model of non‑practicing entities," and Jones Day touted the result for Compass Bank.

VI. Back in the district court: reopening, judgment, and the § 285 / costs fight (2017)

• 2017‑05‑11 / 2017‑05‑31 — Case reopened; Commerce moves for final judgment in its favor on the remaining claims (Dkt. 83–85). The court enters final judgment for Commerce, and a Clerk's Judgment follows.
• 2017‑06‑14 — Commerce files its motion for attorney fees under 35 U.S.C. § 285 ("exceptional case") and a proposed bill of costs (Dkt. 86–89); briefing continues through 2017‑08‑02 (Dkt. 100–101), with sealed submissions (Dkt. 91–92, 99).
• 2017‑09‑29 — Order (Dkt. 102): IV's motion for attorney fees is DENIED; Commerce recovers costs of $1,804.49 ($325 less than requested). Reasoning:
  • IV's "monetization" of patents and its 80+ lawsuits since 2009 do not establish improper purpose; the exercise of the patent right, "even in an aggressive fashion, does not by itself render litigation exceptional" (citing Checkpoint Systems, 858 F.3d 1371; Octane Fitness).
  • IV's pre‑suit investigation was deficient (it never contacted Commerce to confirm product use), but that alone does not support fees (citing Ulead Systems v. Lex Computer, 351 F.3d 1139).
  • The infringement contentions were sufficiently particular given the "infancy" of the case and the non‑public nature of the accused systems; and Commerce never moved to dismiss for insufficient particularity.
  • IV's invalidity positions were not objectively baseless — the § 101 landscape (pre/post-Alice) was in flux, and the PTAB gave IV's '574 and '084 arguments "several pages" of consideration. The court did fault IV for failing to submit independent evidence corroborating Dr. Muftic's testimony that he conceived the Kapidzic paper's concepts, but that single factor was insufficient.
  • The court disallowed $325 in assignment‑record costs (Commerce never pleaded a standing defense) but allowed the file‑history costs, notwithstanding IV's objection that Commerce should have paid the PTO rate.
• 2017‑10‑02 — Clerk's Judgment (Dkt. 103). 2017‑10‑05 — withdrawal of counsel (Dkt. 104) — docket activity consistent with closure.

VII. Related parallel litigation (context)

• *S.D.N.Y.: Intellectual Ventures II LLC v. JPMorgan Chase & Co., No. 13‑cv‑03777 (AKH) (Judge Alvin K. Hellerstein).* The court invalidated the asserted '409 and '084 patents under § 101 (Alice), 2015 U.S. Dist. LEXIS 56092 (S.D.N.Y. Apr. 28, 2015). That judgment became final 2017‑07‑12 and was relied on by Judge Laughrey as one of the five proceedings disposing of the asserted claims. The '084 patent's validity litigation history was also cited in the Capital One litigation (Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017)).
• The same five patents were asserted against Compass Bank (N.D. Ala.), First National Bank of Omaha (D. Neb.), SunTrust, U.S. Bancorp, Huntington, and PNC — the "banks" campaign.

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Bottom line

There was no trial, no verdict, no JMOL/new‑trial practice, no Markman order, and no settlement. The litigation was stayed on 2014‑06‑04 and dismissed without prejudice roughly nine months after filing, in deference to IPR. When every asserted claim fell at the PTAB (or in the parallel S.D.N.Y. § 101 case), Commerce moved to reopen and obtained final judgment in its favor (2017‑05‑31). Commerce's § 285 fee motion was denied and it recovered only $1,804.49 in costs (2017‑09‑29). On the appellate side, the Federal Circuit affirmed the PTAB's cancellation of the '084 claims (682 Fed. App'x 891, 2017‑03‑27) and dismissed the Banks' cross‑appeal as moot; a companion affirmance on the '694 patent issued by Rule 36 (671 Fed. App'x 788, 2016‑12‑09). The '574 patent — the patent the case metadata lists as "at issue" — was invalidated at the PTAB and IV declined to appeal, one of the reasons the district court declined to find the case exceptional.

Sourcing caveats: the 2016‑1519 disposition, the '084 IPR holdings, the W.D. Mo. docket entries and the 2017‑09‑29 fee order are well documented (CAFC opinion; CourtListener/Justia dockets for 2:13‑cv‑04160, Dkt. 18, 63, 74, 82, 102; 682 Fed. App'x 891). The exact final‑written‑decision dates for the '574 IPRs (IPR2014‑00660/‑00724), the Federal Circuit panel composition in 2016‑1519/-1520/-1528, and the precise oral‑argument date for that appeal are not confirmed by the sources I could retrieve, and I have flagged them rather than guess.

I'll search several angles to find press coverage of this litigation.

Let me broaden to trade press, blogs, and the underlying bank-campaign coverage.

Press and Media Coverage

The filing wave (2013) drew the most press attention — and it was framed as an industry-wide threat, not as a Commerce case. Bank Info Security (Tracy Kitten, 2013-06-25) reported that Intellectual Ventures had "filed eight lawsuits against U.S. banking institutions in recent weeks," naming Commerce Bancshares among eight banks, and it is one of the few outlets to describe this specific complaint: "In the most recent lawsuit, which was filed June 20 against Commerce Bank, Intellectual Ventures claims the bank's encryption of data contained on its website as well as within its systems and services — designed to comply with the PCI DSS — infringes two patents," identifying one patent as "for encryption, originally assigned to Entegrity, and a separate patent… for firewall/intrusion detection, originally assigned to BellSouth." That article's real focus was policy, not the Commerce docket: it quoted CipherLaw Group's James Denaro that "essentially every single financial institution is at risk of being accused of infringement" and that "any financial institution using PCI DSS could be at risk of being sued." A follow-up, Bank Info Security (2013-08-28), counted "some 13 banks" sued by IV since May, reported that the FFIEC "has for the last eight months been reviewing ways it might get involved" via vendor indemnification clauses, that "state attorneys general are turning to consumer protection laws," and quoted Axinn Veltrop's Michael Bednarek doubting indemnification would work. Mainstream coverage treated the campaign as a business-model story: The New York Times (2013-07-17) reported IV had "vacuumed up 70,000 patents," filed "14 lawsuits so far" in 2013 — "more than all the lawsuits it had previously filed since its founding in 2000" — with "[e]ight of the 14 lawsuits… against banks," and noted the FTC was expected to open an investigation. Global Legal Post, relaying Financial Times reporting, quoted IV general counsel David Kris denying the suits were "frivolous" and saying IV was "forced to act as the banks failed to sign licensing deals," while an unnamed industry expert called IV "a 'drag on innovation.'"

The PTAB and appellate wins were covered almost entirely through law-firm channels rather than the press. The clearest on-the-record reaction to the outcome came from Kutak Rock, whose client alert (2017-08-03) quoted partner Jason Jackson: "This is a tremendous victory for our clients, and it will have a positive lasting impact on the entire financial services industry… It deals a significant blow to the business model of non-practicing entities who acquire patents for the purpose of bringing lawsuits alleging that technology commonly used in the banking industry is infringing." Jones Day's experience page describes the same result for Compass Bank — three IPRs covering "security certificate management, packet filtering, and intrusion detection," all asserted claims held unpatentable, with IV electing "not to appeal one of the PTAB's decisions" — and lists Nos. 16-1519 and 16-1416 as the appellate wins. Earlier, Kutak Rock (2015-10-06) had announced the September 23, 2015 Board decision "invalidat[ing] a patent owned by Intellectual Ventures that had been asserted against a number of banks," with Jackson "lead counsel for petitioners First National Bank of Omaha, Compass Bank, and Commerce Bank."

Where accounts diverge from the court record. (1) Kutak Rock's 2017 alert misdescribes the disposition — it says the Federal Circuit "dismissed Intellectual Ventures' appeal" and cites the decision as "Fed. Cir. March 27, 2016" — whereas the opinion affirmed the Board's cancellation of claims 26, 28 and 30–33 and dismissed only the IPR2014-00801 appeal and cross-appeal as moot. (2) The same alert states Jackson "argued for the Banks before the United States Court of Appeals for the Federal Circuit" on 2016-12-09; the opinion's caption block lists Marc Vander Tuig (Senniger Powers) as the arguing attorney for the cross-appellants, and 2016-12-09 is the date of the Rule 36 judgment in the companion No. 16-1416 appeal. (3) Kutak Rock's October 2015 alert describes the invalidated patent as "directed to Internet firewalls" and anticipated by "a 1997 publication of the Institute of Electrical and Electronics Engineers," but the proceeding it cites, IPR2014-00786, concerned the '694 packet-filtering patent — a conflation of the two patents that recurs in firm marketing. (4) Bank Info Security's 2013 account says the Commerce complaint asserted "two patents," whereas the complaint pleaded five.

What is notably missing. I found no Reuters, Bloomberg Law, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF, or Law360 article reporting specifically on the 2017-03-27 decision in Nos. 2016-1519/-1520/-1528; the Law360 pieces that surfaced concern adjacent IV matters — Law360 (2017-03-07) on the Capital One Alice affirmance, Law360 (2018-12-18) on the JPMorgan non-infringement affirmance, and a NY Patent Law Blog/Lexology note (2015-04-28) on Judge Hellerstein's § 101 invalidation of the '694, '409 and '084 patents. Critically, no coverage I located reports any damages figure, license demand, or settlement amount for the Commerce action — consistent with the record, since the case was stayed in June 2014, dismissed without prejudice, and never tried. The fee-and-costs outcome (denial of § 285 fees; $1,804.49 in costs, W.D. Mo. ECF 102, 2017-09-29) likewise appears to have gone unreported in the press. Commerce itself issued no public statement that I could find; the only quoted party-side commentary is from Kutak Rock (Jackson) and Jones Day, both defense-side, so the press record here is one-sided and promotional rather than journalistic.

Sources

• UNITED STATES PATENT AND TRADEMARK OFFICE
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Intellectual Ventures II LLC v. Commerce Bancshares, Inc. – CourtListener.com - Headmatter
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Petition analysis | IPR2014-00786 | Compass Bank v. Intellectual Ventures II LLC | Ex Parte
• Ex. 1011 | IPR2014-00786 | Compass Bank v. Intellectual Ventures II LLC | Ex Parte
• 16-1519: INTELLECTUAL VENTURES II LLC v. COMMERCE BANCSHARES, INC. OPINION, Nonprecedential - U.S. Court of Appeals for the Federal Circuit
• Smartflash and Clarilogic are also readily distinguishable with the "technological improvement" framework in mind
• Intellectual Ventures II LLC v. Commerce Bancshares, Inc.
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Trails@uspto
• S.D.N.Y. grants motion for summary judgment on patents found to claim patent-ineligible subject matter - Register now for your free, tailored, daily legal newsfeed service.

I'll research this case across dockets, court opinions, and firm announcements.

Now let me confirm the specific attorney roles, offices, and firms.

Counsel of Record — Commerce Bancshares, Inc.

Important caption caveat first. The metadata in this prompt labels Commerce Bancshares as the "plaintiff," but that is only true in the PTAB proceedings (Commerce Bancshares was a petitioner in IPR2014‑00724 and IPR2014‑00801). On the Federal Circuit appeal No. 2016‑1519, Commerce Bancshares was a cross‑appellant (with Compass Bank and First National Bank of Omaha, collectively "the Banks"), and IV II was the appellant. In the underlying district court case, Intellectual Ventures II LLC v. Commerce Bancshares, Inc., No. 2:13‑cv‑04160‑NKL (W.D. Mo.), IV was the plaintiff and Commerce was the defendant. The names below are the attorneys who represented Commerce Bancshares in these proceedings.

Patent caveat. The metadata lists U.S. Patent 5,745,574 (the '574 patent). The '574 patent was challenged by the Banks in IPR2014‑00724, and IV declined to appeal that decision (the W.D. Mo. fee opinion notes IV "declin[ed] to appeal the adverse PTAB decision concerning the '574 Patent"). Appeal 2016‑1519 itself arose from IPR2014‑00801 and concerned U.S. Patent 6,715,084 (the '084 patent), decided in Intellectual Ventures II LLC v. Commerce Bancshares, Inc., 682 F. App'x 891 (Fed. Cir. Mar. 27, 2017) (nonprecedential, Taranto, J.). The '574 patent thus appears to be a portfolio-level tag in the metadata rather than the patent actually on appeal in 2016‑1519.

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A. Federal Circuit, Nos. 2016‑1519 / 2016‑1520 (appellee/cross‑appellant side)

The counsel listing in the opinion (682 F. App'x at 891–92) is the authoritative record:

The opinion page also shows counsel for the other parties: Byron L. Pickard and Lori A. Gordon (Sterne, Kessler, Goldstein & Fox, Washington, DC) for IV II (appellant); Joel R. Merkin, Kenneth R. Adamo, Eugene Goryunov, Meredith Zinanni (Kirkland & Ellis, Chicago) for IBM in No. 2016‑1528; and Mark Howland (Carrington Coleman Sloman & Blumenthal, Dallas) for Compass Bank only.

B. PTAB — IPR2014‑00801 (Commerce Bancshares, Inc., et al. v. IV II, '084 patent)

• Oral hearing (July 23, 2015, Paper 22 record): "ON BEHALF OF THE PETITIONER: ROBERT M. EVANS, JR., ESQ.; KYLE G. GOTTUSO, ESQ.; MARC W. VANDER TUIG, ESQ." — all Senniger Powers.
• Service list in the parallel IPR2014‑00724 (the '574 patent, Commerce/Compass/FNBO): Geoffrey K. Gavin and Joseph Melnik (Jones Day, Atlanta and Palo Alto); Marc Vander Tuig (Senniger Powers); Jason S. Jackson (Kutak Rock, Omaha). A companion PTAB certificate of service also lists Sean P. Connolly (Kutak Rock).
• IV II's side (for contrast, not your question): Brenton R. Babcock, Ted M. Cannon, Scott Raevsky, Bridget A. Smith (Knobbe, Martens, Olson & Bear, Irvine, CA) and in‑house Donald J. Coulman (Intellectual Ventures, Bellevue, WA).

C. District court, W.D. Mo. No. 2:13‑cv‑04160‑NKL

• Marc Vander Tuig (Senniger Powers) appears as the filer on Commerce's district‑court submissions (e.g., Dkt. 80, Notice of filing final IPR petitions, filed 5/22/2014).
• Kyle Gottuso (Senniger Powers) identifies himself as "representing Commerce Bank" on the record at a January 6, 2015 PTAB deposition.
• Jason S. Jackson (Kutak Rock) appears on the Banks' shared service lists.

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Employment status / role caveats

• Local counsel: I found no separate "local counsel" designation on the Federal Circuit side (none is required), and in the W.D. Mo. case the St. Louis Senniger Powers team functioned in that role for Commerce.
• In‑house counsel: I found no in‑house attorney for Commerce Bancshares appearing on the Federal Circuit or PTAB filings in this matter. If Commerce used in‑house IP counsel, they were not listed on the public filings I could locate.
• Firm/attorney current affiliation: Robert M. Evans, Jr. appears in later third‑party filings under Stinson LLP (St. Louis); I could not independently verify his move or its timing from a Senniger Powers or Stinson source, so treat that as unconfirmed.
• Kutak Rock's press release inflates its role somewhat: it says Jackson "argued for the Banks before the Federal Circuit" on December 9, 2016 and that the court affirmed on March 27, 2017. December 9, 2016 is the date of the judgment in the companion Compass Bank appeal (No. 2016‑1416), not the argument in 2016‑1519, where Vander Tuig argued and Jackson was one of several co‑counsel. Sources: Kutak Rock alert; Fed. Cir. judgment, 2016‑1416.
• Sourcing limits: I was not able to pull the Federal Circuit PACER docket sheet or the Docket Alarm/PTAB docket entries directly to confirm each appearance; the counsel identifications above come from the published opinion's caption block, PTAB papers (hearing transcripts, mandatory notices, certificates of service), and firm publications. Where an attorney's appearance is based only on a firm statement rather than a court filing, I have flagged it.

Key sources:

• Intellectual Ventures II LLC v. Commerce Bancshares, Inc., 682 F. App'x 891 (Fed. Cir. 2017) — https://www.courtlistener.com/opinion/[4378493](/patent/4378493)/intellectual-ventures-ii-llc-v-commerce-bancshares-inc/
• Fed. Cir. opinion page, No. 16‑1519 — https://www.cafc.uscourts.gov/3-27-2017-16-1519-intellectual-ventures-ii-llc-v-commerce-bancshares-inc-opinion-16-1519-opinion-3-22-2017-1/
• IPR2014‑00801 oral hearing record (Paper 22) and institution decision (Paper 7) — Docket Alarm / PTAB
• IPR2014‑00724 petition and certificates of service (PTAB P‑TACTS) — https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1459175](/patent/1459175)/
• Intellectual Ventures II LLC v. Commerce Bancshares, Inc., No. 2:13‑cv‑04160‑NKL (W.D. Mo. Sept. 29, 2017) (fee/costs order) — https://www.courtlistener.com/docket/[4515310/102](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=4515310-0102)/intellectual-ventures-ii-llc-v-commerce-bancshares-inc/
• Jones Day experience page — https://www.jonesday.com/en/practices/experience/2017/03/compass-bank-prevails-in-ipr-proceedings-challenging-intellectual-ventures-patents

I'll research counsel of record for the defendant banks across the district, PTAB, and appellate proceedings.

I have strong leads. Let me verify the district-court docket counsel entries and get background on each attorney.

Counsel of Record for the Defendants (the Banks)

Framing note. The instant appeal (2016-1519) is styled Intellectual Ventures II LLC v. Commerce Bancshares, Inc., because IV II was the appellant and the banks were appellees/cross-appellants — the reversal of the underlying posture the case metadata reflects. The "defendants" in the underlying patent infringement action, No. 2:13-cv-04160-NKL (W.D. Mo.), are Commerce Bancshares, Inc. and Commerce Bank. Across the coordinated PTAB proceedings and the consolidated Federal Circuit appeals, the same defense team also represented Compass Bank and First National Bank of Omaha (collectively "the Banks"). Below I list counsel by forum, as the roles shift slightly between the district case, the IPRs, and the appeal.

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1. District Court (W.D. Mo., No. 2:13-cv-04160-NKL) — Defendants Commerce Bancshares, Inc. and Commerce Bank

The Answer, Affirmative Defenses, and Counterclaims (Aug. 30, 2013, ECF 18) was signed by three Senniger Powers attorneys as "Attorneys for Defendants Commerce Bancshares, Inc. and Commerce Bank" (ECF 18, Defs.' Answer & Counterclaims):

I did not find any in-house counsel for Commerce appearing on the record in this case, and no separate local Kansas City counsel of record (Senniger Powers, though St. Louis-based, served as the Missouri counsel). The other names appearing in the CourtListener docket index (Steve N. Six, Ian Feinberg, Elizabeth Day, Marc Belloli, Melissa A. Gardner, Norman E. Siegel, Meredith L. Ainbinder, Joel R. Leeman) are plaintiff IV II's counsel — Siegel/Six of Stueve Siegel Hanson (Kansas City) as local counsel and Feinberg Day (Menlo Park, CA) as IV's patent counsel — not defense counsel.

2. PTAB — Petitioners Compass Bank, Commerce Bancshares, Inc., and First National Bank of Omaha

Powers of attorney and mandatory notices in IPR2014-00722, -00724, -00786 confirm the following "[c]ounsel for Petitioners" (IPR2014-00786 Power of Attorney / Mandatory Notice; IPR2014-00722 Power of Attorney):

3. Federal Circuit (Nos. 2016-1519, 2016-1520, 2016-1528) — Appellees/Cross-Appellants

The merits opinion recites the full defense line-up (Intellectual Ventures II LLC v. Commerce Bancshares, Inc., 682 F. App'x 891 (Fed. Cir. 2017); opinion PDF):

• Marc Wade Vander Tuig, Senniger Powers LLP, St. Louis — argued for the cross-appellants.
• Robert M. Evans, Jr., Senniger Powers LLP, St. Louis.
• Kyle G. Gottuso, Senniger Powers LLP, St. Louis — for cross-appellant Commerce Bancshares, Inc.
• Hilda C. Galvan, Jones Day, Dallas, TX.
• Geoffrey K. Gavin, Jones Day, Atlanta, GA.
• Jason Stewart Jackson, Kutak Rock LLP, Omaha, NE.
• Mark Howland, Carrington Coleman Sloman & Blumenthal, Dallas, TX — for cross-appellant Compass Bank.

The same team appeared in the companion '694 appeal, No. 2016-1416, where Jackson argued for the appellees (16-1416 opinion).

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Caveats and verification notes

• Role allocation. The Federal Circuit decisions do not designate a single "lead" among appellees' counsel; Senniger Powers (Commerce's counsel) argued the consolidated appeal via Vander Tuig, while Kutak Rock's Jackson argued the earlier '694 appeal. Kutak Rock's own press release describes Jackson as "lead counsel for the Banks" at the PTAB and the December 9, 2016 Federal Circuit argument (Kutak Rock, Aug. 3, 2017). Treat "lead counsel" designations as forum-specific.
• Attorney backgrounds. The bios and case histories above come from firm websites and Law360/martindale listings. I did not independently verify Geoffrey K. Gavin's or Hilda C. Galvan's specific prior case history beyond their appearance here (the Jones Day bio search returned no result before my research budget was exhausted), so I have not attributed any specific past matters to them.
• Firm movements. Vander Tuig left Senniger Powers for Armstrong Teasdale in April 2018, after this case concluded (Law360, Apr. 27, 2018). Firm affiliations stated above reflect the period of the litigation (2013–2017).
• Metadata contradiction (flagging, not resolving). The case metadata styles Commerce Bancshares as plaintiff; that reflects the underlying district posture. For appellate purposes Commerce and the other banks are the defendants below / appellees-cross-appellants, which is the capacity in which the counsel above appeared.
• Sealed filings. I found no indication that defense counsel appearances were sealed; the counsel identified above appear on the public docket, the PTAB mandatory notices, and the published opinions.