Compass Bank et al. v. Intellectual Ventures II LLC

I'll research this case thoroughly before drafting.

Let me dig deeper into the parallel district court cases, the IBM IPRs, and the appeals.

Case Overview — Compass Bank, Commerce Bancshares & First National Bank of Omaha v. Intellectual Ventures II LLC, IPR2014-00786

Parties and accused technology. The petitioners are three U.S. regional banks — Compass Bank (the BBVA Compass affiliate), Commerce Bancshares, Inc. (with Commerce Bank), and First National Bank of Omaha — all operating companies that were defending parallel infringement suits filed by Intellectual Ventures II LLC ("IV II"), the Bellevue, Washington–based patent-holding/assertion subsidiary of Intellectual Ventures (founded by Nathan Myhrvold; the NPE/PAE archetype, described by petitioner's counsel Kutak Rock as holding "more than 70,000 patents"). IV II is a Delaware LLC and does not make or sell products; it acquired the asserted patent rather than developing it. The accused technology was the banks' online-banking and network-security infrastructure — IV's complaints targeted the banks' "Security Practices" and alleged that use of their consumer-facing banking websites (e.g., commercebank.com) directly infringed, and that the banks induced and contributorily contributed to infringement by their customers. The asserted patent in this IPR is U.S. Patent No. 6,826,694 B1, "High Resolution Access Control" (filed Oct. 22, 1999 as App. 09/422,952; priority to provisional 60/105,188 filed Oct. 22, 1998; issued Nov. 30, 2004; inventors Partha Dutta, Mahesh Kumar, and Micah Lerner, originally AT&T/Lucent's "GeoPlex" project). It is a single-claim patent: claim 1 recites a method of filtering a packet at a firewall — (a) receiving a packet having a header parameter and a payload; (b) selecting an access rule based on the packet's payload contents; and (c) implementing the rule, "wherein the access rule is selected based upon a combination of the contents of the packet received in step a and the contents of at least one other packet." In plainer terms: inspect not just headers but payloads, including information fragmented across multiple packets, to decide PASS or DROP — a "high resolution" firewall. The parallel district court cases asserted additional IV patents beyond the '694 patent (in the Commerce case, e.g., the '574, '409, '084, and '666 patents), but this IPR was limited to claim 1 of the '694 patent.

Procedural posture. This is a Patent Trial and Appeal Board proceeding, not a district court case — "venue" is the PTAB in Alexandria, Virginia, with no jury and a statutory 12-month clock. The petition was filed May 20, 2014 (accorded filing date May 20, 2014); APJ James T. Moore was designated managing judge, and the panel was Moore, Meredith C. Petravick, and Benjamin D. M. Wood. IV's preliminary response attacked the petition on real-party-in-interest grounds and argued the grounds were duplicative of IBM's co-pending IPR2014-00587 under 35 U.S.C. § 325(d); the Board nevertheless instituted on September 24, 2014, and issued its Final Written Decision on September 23, 2015, holding claim 1 unpatentable — anticipated by Rubin ("Blocking Java Applets at the Firewall," 1997) and obvious over Norman + Rubin (and over Abraham + Rubin). The Board construed "contents of the packet" in step (c) as the header and/or payload, rejecting IV's narrower reading. Notably, a concurrent FWD in IBM's IPR2014-00587 (same day, same panel) went the other way: the Board found claim 1 not proven unpatentable because IV successfully antedated IBM's Hughes and Abraham references by showing an actual reduction to practice by June 11, 1996 (inventor Dutta's testimony corroborated by Dr. Vrsalovic's testimony about the GeoPlex prototype). The banks' petition succeeded because it rested on Rubin, a 1997 printed publication that IV could not antedate. The Federal Circuit affirmed under Rule 36 in Intellectual Ventures II LLC v. Compass Bank, No. 2016-1416, 671 F. App'x 788 (Fed. Cir. Dec. 9, 2016) (Dyk, Plager, Reyna, JJ.); a separate IV appeal concerning the '084 patent was resolved against IV in March 2017. The IPR certificate issued February 12, 2018, cancelling claim 1. Petitioners' counsel included Jason S. Jackson and Sean P. Connolly (Kutak Rock, Omaha), Geoffrey K. Gavin (Jones Day, Atlanta), and Marc Vander Tuig (Senniger Powers, St. Louis); IV was represented by Herbert D. Hart III and Aaron F. Barkoff (McAndrews, Held & Malloy), Ian N. Feinberg and Elizabeth Day (Feinberg Day), and on appeal by Brenton R. Babcock and Ted M. Cannon (Knobbe Martens).

Why it matters. The case sits at the center of IV's 2013 financial-services assertion wave: IV filed seven district court actions on the '694 patent alone (including IV II v. BBVA Compass Bancshares, No. 2:13-cv-01106 (N.D. Ala., Judge Abdul K. Kallon, filed June 12, 2013); IV II v. Commerce Bancshares, No. 2:13-cv-04160 (W.D. Mo., filed June 20, 2013); IV II v. First National Bank of Omaha, No. 8:13-cv-00167-LSC (D. Neb.); and IV II v. JPMorgan Chase, No. 1:13-cv-03777 (S.D.N.Y.)). It is a leading illustration of IPR linkage to district court litigation: the W.D. Mo. court stayed its case on June 4, 2014 pending the IPRs and dismissed without prejudice, the S.D.N.Y. case produced a 2015 invalidity/non-infringement ruling, and the N.D. Ala. case ended in dismissal with prejudice for Compass Bank — outcomes driven substantially by the PTAB's cancellation of claim 1. It also illustrates defensive collaboration among operating companies: three unrelated banks jointly petitioned (and also jointly filed related IPRs such as IPR2014-00724 against the '409 patent), effectively coordinating with IBM's parallel challenges. Finally, it is a well-known study in the antedating/corroboration doctrine — the same claim survived IBM's challenge because of a proven 1996 reduction to practice, yet fell to a different petitioner's § 102(b) art, and the panel's contrary constructions of "contents of the packet" show how outcome-determinative BRI claim construction was in the AIA's early IPR era. Counsel publicly framed the result as a significant blow to NPE assertion against banks.

Sourcing and caveats. Party names, panel, dates (filing 5/20/2014, institution 9/24/2014, FWD 9/23/2015, certificate 2/12/2018), claim text, and grounds are drawn from the PTAB record (petition, patent owner preliminary response, oral hearing transcript, and the FWD, available via PTAB/PTAB Trial Blog and Docket Alarm) and match the case metadata. The Rule 36 affirmance and citation come from the Federal Circuit and CourtListener. The district court docket details (case numbers, judges, stay, dismissal) come from the respective court dockets and law-firm case pages. Two points I could not fully verify and flag as uncertain: (1) the precise real-party-in-interest argument IV raised and the Board's reasoning in the institution decision (I confirmed institution occurred on 9/24/2014 but did not review the institution decision itself); and (2) the disposition of Commerce Bancshares' post-judgment § 285 attorney-fee motion in W.D. Mo. — I reviewed the court's recitation of the litigation history in that opinion but not its final ruling. Little to nothing turns on either for the overview above.

I'll research this case. Note at the outset: the metadata identifies this as a PTAB IPR (IPR2014-00786), not a district court case — so I'll cover both the IPR itself and the parallel district court litigation involving these parties and patent.

Good initial results. Let me pin down the IPR decisions, appeal, and parallel district court cases.

Let me research the district court cases, related IPRs, and the appeal/certificate details.

Threshold point on the record

The docket you've given me — IPR2014-00786, Compass Bank et al. v. Intellectual Ventures II LLC — is a PTAB inter partes review, not a district court infringement suit. There is therefore no complaint, answer, counterclaim, Markman order, discovery, verdict, or JMOL in this case. The "patent infringement litigation" the banks were defending sits in three parallel district court actions (N.D. Ala., W.D. Mo., D. Neb.). Below I cover both tracks in chronological order, and flag where I could not verify a fact.

The patent: U.S. 6,826,694 B1, "High Resolution Access Control," issued 2004-11-30 from App. 09/422,952 (filed 1999-10-22), priority to provisional 60/105,188 (1998-10-22). Sole claim 1 (method of filtering a packet; selecting an access rule based on payload contents, and, per step c, based on "a combination of the contents of the packet received in step a and the contents of at least one other packet"). Inventors Partha Dutta, Mahesh Kumar, Michah Lerner (AT&T GeoPlex project). IV II asserted it against financial institutions in seven district court suits, per Patent Owner's mandatory notices (2014-06-10).

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I. 2013 — The district court campaign (the underlying infringement litigation)

Counsel of record in the district court track included Jones Day (Geoffrey K. Gavin, Joseph Melnik, Kenneth R. Adamo, Eugene Goryunov, Ryan Hubbard, Brent Ray), Kutak Rock (Jason S. Jackson, Sean P. Connolly), Senniger Powers (Marc Vander Tuig), and local Alabama counsel (e.g., A.H. Gaede, Jr., Bainbridge Mims Rogers & Smith; Marcus Chatterton). For IV: Knobbe Martens (Brenton Babcock, Ted Cannon), Feinberg Day, and in-house Donald Coulman.

II. 2014 — IPR petitions, stays of the district court cases, and institution

• 2014-04-07 (corrected 2014-04-16): IBM Corp. files IPR2014-00587 against the '694 patent (Hughes + Abraham, Coss + RFCs, Rubin + RFC 793 grounds).
• 2014-05-06: D. Neb. FNBO case closed. (Docket shows "Closed (05/06/14)"; the docket text/order is not in my materials — I could not verify whether this was a stay-dismissal or a voluntary dismissal.)
• 2014-05-20: IPR2014-00786 petition accorded its filing date by Compass Bank, Commerce Bancshares, Inc., and First National Bank of Omaha. Notice mailed 2014-05-30; APJ James T. Moore designated to manage. Counsel listed for petitioners: Jason Jackson & Sean Connolly (Kutak Rock), Geoffrey Gavin (Jones Day), Marc Vander Tuig (Senniger). Grounds: (1) §103 over Abraham + Rubin; (2) §102(b) anticipation by Rubin ("Blocking Java Applets at the Firewall," Feb. 1997); (3) §102(e) anticipation by Cunningham (6,219,786); (4) §103 over Norman + Rubin.
• 2014-06-04: In the W.D. Mo. case, Judge Nanette K. Laughrey granted the defendants' motion to stay (Doc. 63) pending IPR and dismissed the case without prejudice, subject to reopening within 45 days after all IPR petitions are denied or, if instituted, after final written decisions (and any appeals) in each IPR involving the patents-in-suit. Intellectual Ventures II LLC v. Commerce Bancshares, Inc., No. 2:13-cv-04160-NKL (W.D. Mo. June 4, 2014) (Laughrey, J.).
• 2014-06-04 (N.D. Ala.): the Commerce defendants filed notice of the N.D. Ala. order staying the BBVA Compass case pending IPR — i.e., the N.D. Ala. court stayed around late May/early June 2014. (I have the notice; I do not have the stay order itself, so the exact order date is unverified.)
• 2014-06-10: IV files mandatory notices in the IPR identifying the parallel district court actions (N.D. Ala., W.D. Mo., D. Neb.).
• ~Aug. 2014 (Patent Owner Preliminary Response, IPR2014-00786): IV argued (i) the petition failed to name all real parties-in-interest; (ii) "contents of the packet" should be construed as "contents of the header and payload" (not "header and/or payload"); (iii) grounds 1–3 were duplicative of IBM's IPR2014-00587 under 35 U.S.C. § 325(d); and (iv) grounds were horizontally/vertically redundant.
• 2014-09-24: Institution decision in IPR2014-00786 (same date as institution in IBM's IPR2014-00587). The Board rejected the § 325(d)/duplication and RPI arguments and instituted.
• 2014-11-19: In the companion IPR2014-00724 (Compass/Commerce/FNBO v. IV II, U.S. 5,745,574), the Board denied IV's requests to file motions under § 315(d) to terminate, consolidate, or join with IPR2014-00660 (explaining that potential settlement of the other case was not enough, and that joinder/consolidation would not improve efficiency). Same panel family (Droesch, Bisk, Busch).
• 2014-11: IV also filed a second petition (IPR2014-01465, IBM v. IV II, '694) — my search did not surface its institution/outcome; outcome unverified.

III. Claim construction in this dispute

There was no district court Markman ruling on the '694 patent in any of the three stayed/dismissed cases that I could locate. The constructions that matter come from two sources:

1. Party-agreed constructions (D. Neb., Joint Claim Construction Statement, Doc. 49, 2014-03-24): for the '694 patent — "filtering" = "selectively prohibiting or allowing"; "access rule" = "a rule that selectively prohibits or allows transmission of [a packet]." Disputed-but-unresolved terms in that case are reflected in the parties' competing charts (e.g., the '084 patent's "network based-intrusion detection techniques").
2. PTAB BRI constructions (both '694 IPRs, FWDs of 2015-09-23):
   • "contents of the packet" (step c) = "the contents of the header and/or payload of the packet" — the Board rejected IV's narrower "header and payload" reading, holding step c is an additional limitation and does not replace step b's payload requirement.
   • "selecting" — the Board held claim 1 does not require choosing a rule from a plurality/set of rules; "selecting" means identifying/choosing the rule based on the recited contents. This construction was outcome-determinative against IV's Rubin arguments.

IV. 2015 — IPR trial, concurrent final written decisions, and appeal preservation

• Discovery in the IPR consisted of expert declarations (IV's expert Dr. Mir; petitioners' experts), deposition of IV's expert, deposition cross-examination on the AT&T GeoPlex reduction-to-practice evidence (Dr. Vrsalovic; inventor Dutta), motions to exclude, and an oral hearing (a transcript of the hearing is in the record; the specific hearing date is not confirmed in my materials — likely mid-2015).
• 2015-09-23 — concurrent Final Written Decisions in both '694 IPRs:
  • IPR2014-00786 (Compass Bank, Paper 54 not confirmed): "Petitioner has shown by a preponderance of the evidence that the sole claim of the '694 patent is unpatentable." The Board found claim 1 anticipated by Rubin and also unpatentable as obvious over Norman + Rubin. IV's arguments on Rubin's February 1997 publication date and on claim scope failed.
  • IPR2014-00587 (IBM), Paper 54: claim 1 was NOT shown unpatentable. The Board agreed with petitioners' construction of "contents of the packet," but found IV antedated Hughes and Abraham (Hughes eff. 1996-06-18; Abraham eff. 1997-03-11) by proving actual reduction to practice "at least as early as early 1996 but no later than June 11, 1996," corroborated by Dr. Vrsalovic (the Board found the AT&T documents alone insufficient). IBM's Request for Rehearing (Paper 55) was denied.
  • Observation / tension worth noting: the two panels reached opposite outcomes on the same claim in contemporaneous decisions. In -00587 IV's 1996 reduction-to-practice defeated patent-art references; in -00786 the Board nonetheless invalidated over Rubin (a Feb. 1997 printed publication) and evidently did not credit IV's antedating evidence to the same effect. I do not have the full -00786 FWD text on the prior-invention analysis, so I cannot confirm the Board's precise reasoning on that point.
• 2015-10-28 / 2015-11-20: IV (joined by IBM, and unopposed) requested, and the Board granted, preservation of the record under seal pending appeal in both IPR2014-00587 and IPR2014-00786 (37 C.F.R. § 42.56). The order noted that IV's witness testimony about the AT&T GeoPlex project raised questions whether the sealed material was truly confidential. (Order dated 2015-11-20, Paper 59 in -00587.)

V. 2016–2018 — Federal Circuit and final disposition

• IV appealed the -00786 decision. Fed. Cir. No. 2016-1416, Intellectual Ventures II LLC v. Compass Bank, Commerce Bancshares, Inc., First National Bank of Omaha. Briefing ran early-to-mid 2016 (IV opening brief 2016-04-04; appellees' brief 2016-06-16/28, after a rejection for non-compliance; IV reply 2016-07-19), and Mark C. Howland appeared for Compass Bank.
• 2016-12-09: AFFIRMED, per curiam (Dyk, Plager, Reyna) under Fed. Cir. R. 36 (nonprecedential). That is the Federal Circuit's final resolution of IPR2014-00786 as I can verify it.
• Related appeals (verify before relying): Kutak Rock reports that IV's appeal in Intellectual Ventures II, LLC v. Commerce Bancshares, Inc., Nos. 2016-1519, 2016-1520, 2016-1528, 2017 WL 1130320 (Fed. Cir. March 27, 2017) was dismissed/affirmed, with Commerce, Compass and FNBO as cross-appellants. The same firm's August 2017 client note describes the March 2017 action as dismissing IV's appeal of the PTAB's invalidation of "a firewall patent." I could not reconcile the two Federal Circuit dispositions (-1416 on 2016-12-09 and -1519/-1520/-1528 on 2017-03-27) from the docket text available to me — they appear to be two separate appeals, not one; treat the mapping of appeal numbers to individual IPRs (‑00724 '574, ‑00786 '694, ‑00801) as unconfirmed.
• IPR certificate issued 2018-02-12 for IPR2014-00786, cancelling claim 1. (The ~14-month gap after the Rule 36 affirmance is consistent with a rehearing/en banc period, a potential certiorari window, and USPTO certificate-processing time; I did not find a document explaining the gap, so I would not assert a reason.)
• District court final dispositions:
  • N.D. Ala. (2:13-cv-01106): stayed pending IPR; ultimately dismissed with prejudice as to all of IV's claims (Jones Day experience page, dated Sept. 2018; exact dismissal date and order text unverified). There was no trial, verdict, JMOL, or new-trial motion.
  • W.D. Mo. (2:13-cv-04160): stayed and dismissed without prejudice on 2014-06-04; on the later docket, "Defendants' motion for attorney fees is denied. Defendants may recover costs in the amount of $1,804.49" (Judge Laughrey) — i.e., the bank defendants won the fee fight only as to costs (a modest taxable-costs award), not § 285 fees. Order date unverified.
  • D. Neb. (8:13-cv-00167): closed 2014-05-06 (reason unverified).

VI. Parallel PTAB proceedings on U.S. 6,826,694 and their effect

Related non-'694 matters in the same bank campaign: IPR2014-00801 (Commerce Bancshares v. IV II) and IPR2014-00722 (Compass Bank v. IV II — status "Terminated–Settled"). Note the distinction: IPR2014-00786 did not settle — it went to a merits FWD. Broader context: IV's 2013 bank suits also produced the interlocutory appeal in Intellectual Ventures II LLC v. J.P. Morgan Chase & Co., 2014-1724 (Fed. Cir. Apr. 1, 2015), dismissing a § 18 interlocutory appeal for lack of jurisdiction (patent overlap with '694 not confirmed).

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VII. Bottom line

• Final disposition of IPR2014-00786: final written decision for petitioners (Compass Bank, Commerce Bancshares, FNBO) on 2015-09-23; claim 1 of the '694 patent held unpatentable; affirmed by the Federal Circuit 2016-12-09 (Rule 36, No. 2016-1416); IPR certificate issued 2018-02-12 cancelling claim 1.
• Underlying infringement litigation: no case ever reached Markman ruling, trial, verdict, or JMOL. All three suits were stayed and then dismissed in light of the IPRs; the N.D. Ala. case ended in a dismissal with prejudice of IV's claims, and the W.D. Mo. court denied the defendants' attorney-fee motion while awarding $1,804.49 in costs.
• Strategic significance: because the banks' petition used a 1997 printed publication (Rubin) rather than patent art, they avoided the prior-invention/antedating defense that defeated IBM in IPR2014-00587 — a licensing of the same patent's other challenger through prior-art selection. Kutak Rock publicly framed the result as a blow to NPE enforcement against banks (Aug. 2017 client note).

Caveats on sourcing: dates and outcomes for the IPRs, the Federal Circuit, and the district court stay/dismissal orders come from PTAB filings, the FWDs (Finnegan and PTAB Trial Blog copies), the Federal Circuit Rule 36 judgment (16-1416, 2016-12-09), and law-firm/docket aggregators (Jones Day, Kutak Rock, CourtListener, Unified Patents, Docket Alarm). I could not verify: the -00786 institution decision's paper number/date text (I rely on the case metadata and the 12-month FWD date), the -00786 FWD paper number, the oral-hearing date, the exact N.D. Ala. stay and dismissal-with-prejudice dates, the D. Neb. closure reason, the W.D. Mo. fee-order date, the outcome of IPR2014-01465, and the mapping of Fed. Cir. Nos. 2016-1519/-1520/-1528 to individual IPRs.

I'll search multiple angles for press and analysis coverage of this IPR and the related bank litigation.

Good initial hits. Let me look for more outlet coverage — Federal Circuit 2017 ruling, IPWatchdog/Patently-O, and any IV-side statements.

Press and analysis coverage — what was actually published

The trade press covered the Final Written Decision promptly, but almost entirely through the banking/IP lens rather than as a PTAB merits story. Law360 (Matthew Bultman) reported on 2015-09-24 — the day after the decision — that "[t]he Patent Trial and Appeal Board on Wednesday invalidated an Internet packet-filtering patent that Intellectual Ventures II LLC has sued several banks for infringing, ruling its sole claim was unpatentable." That article sits in Law360's banking section, not its IP section, which is itself telling about how the dispute was framed. (I could see only Law360's published summary; the full article is paywalled.) The petitioners' lead firm issued its own account: Kutak Rock announced on 2015-10-06 that the Board "invalidated a patent owned by Intellectual Ventures that had been asserted against a number of banks in district court litigation," identifying Jason Jackson as lead counsel for FNBO, Compass Bank, and Commerce Bank, and describing the dispositive art as "a 1997 publication of the Institute of Electrical and Electronics Engineers" (Rubin) plus an obviousness combination with "another article describing a prior art firewall" (Norman). A pre-decision Kutak Rock note from 2015-08-03 previewed the hearing argument in language that tracks the FWD's antedating analysis: that IV "cannot now claim, nearly twenty years after the patent was filed, that the subject matter of the patent was actually invented years before the patent's filing date." On the patent-owner side, the National Law Review (via Drinker Biddle's IP litigation group, 2015-11-15) analyzed the concurrent IBM decision, IPR2014-00587, emphasizing that the Board accepted the "header and/or payload" construction but found IV had antedated Hughes and Abraham through Dr. Vrsalovic's corroboration — i.e., the press coverage of the two same-day, same-panel decisions diverged along firm-client lines, with no outlet I found comparing the outcomes head-to-head.

The "why it matters" framing came almost entirely from the winning side's counsel, and it was pitched at the industry level rather than the case level. Kutak Rock ran a 2017-08-03 release headlined "Appeals Court Affirmation of Firewall Patent's Invalidity Will Have 'Positive Lasting Impact' on Financial Services Industry," quoting 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." The same release supplied the often-repeated description of IV as "perhaps the best-known NPE," which "allegedly holds more than 70,000 patents." Jones Day framed the result in similar terms on its Compass Bank experience page, describing three IPRs against patents relating to "security certificate management, packet filtering, and intrusion detection" that together resulted in the PTAB holding unpatentable "all of the claims of these three patents that Intellectual Ventures had asserted in the district court litigation," and noting that IV "elected not to appeal one of the PTAB's decisions" while Compass prevailed on the two that were appealed. Notably, no coverage I found reported any damages figure, settlement payment, or licensing term — unsurprising, since an IPR is not a damages forum and the district court cases were stayed and then dismissed rather than tried.

There is one material discrepancy between the press accounts and the court record, and it concerns which appeal was which. The Kutak Rock 2017 release describes the March 2017 Federal Circuit ruling as the affirmance of "the PTAB's ruling that invalidated a firewall patent," citing Intellectual Ventures II, LLC v. Commerce Bancshares, Inc., Nos. 2016-1519, 2016-1520, 2016-1528, 2017 WL 1130320 — and it dates the citation "Fed. Cir. March 27, 2016" in the text while describing events through 2017 (an apparent internal error). But the actual opinion (Taranto, J., joined by Newman and Dyk) resolves appeals from IPR2014-00801 and IPR2014-00682 concerning U.S. Patent 6,715,084 — the intrusion-detection patent, not the '694 patent at issue here — affirming the Board's obviousness holding over Porras and Cheswick and dismissing the banks' cross-appeal as moot. The '694 patent appeal was the separate Rule 36 affirmance of 2016-12-09 in No. 2016-1416 (CourtListener), and that affirmance drew essentially no press attention that I could locate — an asymmetry worth flagging, since the firm release that described the December 2016 argument at the Federal Circuit attached the "victory" narrative to the March 2017 '084 decision instead. Readers relying on the Kutak Rock release alone would mis-map the appeal numbers to the '694 IPR.

Adjacent coverage exists for the parallel validity attacks on the same patent, but it does not mention the banks. The NY Patent Law Blog, via Lexology (2015-04-28), reported that Judge Alvin Hellerstein in Intellectual Ventures II LLC v. JP Morgan Chase & Co., No. 13-cv-3777 (S.D.N.Y.) granted summary judgment that U.S. 6,826,694 — alongside the '409 and '084 patents — claimed patent-ineligible subject matter under Alice, reasoning that the '694 claim "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," and therefore "amounts to a mental process." That is a second, independent route to invalidity for the same claim, reported by patent-law commentators but never connected in the press to the banks' PTAB win. Law360 (Dave Simpson, 2018-12-18) later reported that the Federal Circuit "affirmed a district court's ruling that JPMorgan Chase & Co. did not infringe Intellectual Ventures LLC's firewall system and the district court's reversal of an earlier ruling that the banking company's software was 'capable' of infringing IV's patent" — the tail end of the same campaign, though the snippet I could access does not confirm the patent number.

Caveat on the scope of coverage. I found no reporting on this IPR in Reuters, Bloomberg Law, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF Deeplinks, or any mainstream outlet. The available coverage is essentially: one Law360 banking-desk story at the FWD (2015-09-24), firm-generated releases and experience pages from Kutak Rock (2015-08-03, 2015-10-06, 2017-08-03) and Jones Day, two National Law Review practitioner summaries (2014-12-05 on IPR2014-00801; 2015-11-15 on the IBM '694 decision), a Lexology blog post on the S.D.N.Y. Alice ruling, and a Patent Case Watch summary of the March 2017 '084 opinion. There is no press coverage of the IPR2014-00786 institution decision (2014-09-24), the Federal Circuit Rule 36 affirmance (2016-12-09), or the February 2018 certificate — and, consistent with the earlier sections' sourcing caveats, nothing in the press resolves the still-unverified items (the W.D. Mo. fee-order date, the D. Neb. closure reason, the N.D. Ala. dismissal date, or the outcome of IBM's IPR2014-01465).

Sources

• Again, understanding the context of this patent, understanding what the patent is teaching, it is saying the problem with the pr...
• MR
• UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
• Petition analysis | IPR2014-00786 | Compass Bank v. Intellectual Ventures II LLC | Ex Parte
• provide filtering based not only on header information but upon information
• Mahurkar, 79 F.3d at 1576–77; see Technology Lic
• Ex. 1011 | IPR2014-00786 | Compass Bank v. Intellectual Ventures II LLC | Ex Parte
• UNITED STATES DISTRICT COURT
• 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.
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Ex. 1010 | IPR2014-00587 | IBM Corp v. Intellectual Ventures II LLC | Ex Parte
• UNITED STATES PATENT AND TRADEMARK OFFICE

I'll research the counsel of record for the petitioners (the bank "plaintiffs") in this IPR. Let me run several searches.

I have strong leads. Let me verify the petitioners' power of attorney and lead/backup designation, plus district court counsel.

Counsel of record — clarifying the framing

A threshold note on "plaintiff(s)": the case metadata styles the banks (Compass Bank, Commerce Bancshares, and First National Bank of Omaha) as the plaintiffs/petitioners in IPR2014-00786. That is the PTAB posture. In the underlying infringement actions, the roles reverse: Intellectual Ventures II LLC was the plaintiff and the banks were the defendants. Because the metadata and this case file treat the banks as the petitioning "plaintiff" party, I identify counsel of record for the petitioners (the banks) below; where the same firms also defended the banks in the district courts, I note it.

Counsel of record for petitioners in IPR2014-00786

The petitioners' counsel block appears on the face of the Final Written Decision (Paper 40/41, Sept. 23, 2015) and in the Board's related orders, listed as: Jason S. Jackson; Sean P. Connolly; Geoffrey K. Gavin; Marc Vander Tuig.

Additional counsel appearing on appeal (same petitioner group)

The Federal Circuit's Rule 36 disposition adds two names that were not part of the PTAB trial block but appeared as appellate counsel:

• Hilda C. Galvan — Jones Day, Dallas, TX (appellate co-counsel for appellees).
• Mark Howland — Carrington Coleman Sloman & Blumenthal, Dallas, TX — counsel specifically for Compass Bank (stated on the face of the Federal Circuit opinion: "Appellee Compass Bank also represented by MARK HOWLAND, Carrington Coleman…").

Sources: Intellectual Ventures II LLC v. Compass Bank, No. 2016-1416, 671 F. App'x 788 (Fed. Cir. Dec. 9, 2016), https://www.finnegan.com/a/web/[114950](/patent/114950)/2G4qRC/16-1416-12-09-16.pdf and https://www.courtlistener.com/opinion/[4328712](/patent/4328712)/intellectual-ventures-ii-llc-v-compass-bank/.

How the counsel designations are grounded

• PTAB counsel of record. Patent Owner's Mandatory Notices (Paper 3, June 10, 2014) certifies service on petitioners' counsel at the four addresses above — Jackson and Connolly at Kutak Rock (Omaha); Gavin at Jones Day (Atlanta); Vander Tuig at Senniger Powers (St. Louis) — and the same four are reproduced in the FWD's "PETITIONER" caption and in the Board's Order Granting Request to Preserve Record (Paper 49, Nov. 20, 2015) in the consolidated IPR2014-00587/-00786 record. (PTAB/PTACTS docket, https://ptacts.uspto.gov; Docket Alarm IPR2014-00587 Paper 59.)
• Party-specific alignment. The PTAB oral-hearing transcript records Jackson stating on the record, "My name is Jason Jackson; I represent the Petitioners in this proceeding… First National Bank of Omaha and Compass Bank and Commerce Bank." In the related bank IPR on the '409 patent (IPR2014-00724), Kyle Gottuso (Senniger Powers) appeared "representing Commerce Bank" and Geoffrey Gavin (Jones Day) for the petitioner group — consistent with the division of labor (Kutak Rock as lead, Jones Day for the group, Senniger Powers for Commerce).

Caveats and things I could not fully verify

• Lead vs. backup designation for -00786 specifically. I did not locate the -00786 Power of Attorney itself. The lead/backup labels above are inferred from the FWD caption ordering, the Mandatory Notices service list, and who argued. The related IPR2014-00722 Power of Attorney names Marc Vander Tuig as backup counsel for Commerce, which is consistent with the assignment shown here but is a different proceeding.
• First National Bank of Omaha's separate district-court counsel. The banks used different outside firms in the underlying suits (e.g., Mark Howland/Carrington Coleman for Compass Bank; Senniger Powers for Commerce). I did not confirm a named firm for First National Bank of Omaha in D. Neb. No. 8:13-cv-00167, so I won't attribute one.
• Firm site/practice details. I confirmed firm and office addresses from the PTAB and Federal Circuit filings; individual practice-biography specifics (bar admissions, representative matters) beyond the '694-patent matters are not independently verified here.
• No sealing issue affects the identity of counsel — the petitioners' counsel block is unsealed and appears on the public FWD and Board orders (the seal in these proceedings covered the AT&T GeoPlex technical exhibits, not counsel identities).

I'll research the counsel of record — focusing on the respondent/patent owner's side (per the case metadata, the "defendant" is Intellectual Ventures II LLC) while also verifying the petitioners' side for completeness.

Good — I've confirmed the respondent-side lead counsel. Let me verify the additional IV-side attorneys, in-house counsel, and the firm bios.

Let me verify the Feinberg Day attorneys' role and the Knobbe Martens appellate team, plus IV's district-court counsel.

Counsel of Record — Parties' Representation in IPR2014-00786

Posture note (important for reading this section). The case-metadata caption lists the banks as "Plaintiff(s)" and Intellectual Ventures II LLC as the "Defendant." That is the correct alignment for this IPR: IV II is the Patent Owner / Respondent, and the three banks are the Petitioners. The "defendant" label is a metadata artifact of the fact that the same parties were aligned in reverse in the parallel district court infringement suits (IV II v. Commerce Bancshares, etc.), where IV was plaintiff and the banks were defendants. I therefore lead with IV II's counsel (the "defendant" per the metadata, i.e., the respondent/patent owner), then set out the banks' counsel for completeness, since a reader asking "who defended this case" could mean either side.

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A. Intellectual Ventures II LLC — Patent Owner / Respondent (the "Defendant" per case metadata)

Herbert D. Hart III — Lead Counsel.
McAndrews, Held & Malloy, Ltd., 500 West Madison St., 34th Floor, Chicago, IL (Reg. No. 30,063). He signed the Patent Owner's Preliminary Response (Sept. 2, 2014) expressly as "Lead Counsel for Patent Owner INTELLECTUAL VENTURES II LLC," and the Board's Oct. 23, 2014 Conduct-of-the-Proceeding order in the companion IPR2014-00587 (same panel, same patent) lists him first among Patent Owner's counsel of record. Hart is a McAndrews shareholder; his practice is PTAB/interference-heavy — a former Vice-Chair of the ABA's Committee 104 on patent inter partes proceedings, an expert witness on interference law, and (per Law360's Q&A) active in AIA post-grant rulemaking. He has been IV's lead PTAB counsel across multiple IPR families (e.g., IPR2014-01195, IPR2014-00787) and has also represented petitioners such as Shell Oil. (Patent Owner's Preliminary Response signature block; IPR2014-00587 Order re Conduct of Proceedings; Law360 Q&A with Herb Hart)

Aaron F. Barkoff — Backup/Of-Record Counsel.
McAndrews, Held & Malloy, Ltd., Chicago. Listed as IV II's counsel in the IPR2014-00587/00786 joint conference-call order alongside Hart and Coulman, and consistently docketed as IV's backup PTAB counsel in the same period. (I did not locate a registration number or a firm bio in the search window — flagging that as unverified.)

Donald J. Coulman — Backup Counsel (In-House).
Intellectual Ventures Management, Bellevue, WA (Reg. No. 50,406; dcoulman@intven.com — the IV corporate domain). Coulman is IV's in-house registered practitioner and was designated backup counsel in this proceeding; the PTAB record confirms he remained IV in-house counsel until 2019, when IV moved to withdraw his and Tim Seeley's appearances in parallel IPRs because Coulman "is no longer in-house counsel for IV." (Power of Attorney, CBM2014-00084; IPR2014-00787, Paper 83 (withdrawal motion); IPR2014-00787, Paper 84 (order granting withdrawal))

Appellate counsel (Rule 36 appeal, No. 2016-1416):

• Brenton R. Babcock, Knobbe, Martens, Olson & Bear, LLP, Irvine, CA — argued for IV II at the Federal Circuit. He remains a leading PTAB/Federal Circuit advocate for patent owners, including IV entities.
• Edward M. ("Ted") M. Cannon, Knobbe Martens — "also represented by" IV II on the brief (the judgment spells his given name "Edward"; the prior case summary's "Ted M. Cannon" is the same attorney).
  Both appear on the face of the Federal Circuit judgment. (CourtListener — Intellectual Ventures II LLC v. Compass Bank, No. 2016-1416)

B. The Banks — Petitioners here, but "Defendants" in the underlying district court suits

If the question is really aimed at the bank-side defense team (the defendants in the parallel infringement actions), the IPR and appellate record shows:

Sources: Patent Owner's Preliminary Response certificate of service; Federal Circuit Rule 36 judgment; W.D. Mo. docket No. 80 (Vander Tuig signature).

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C. Flags and caveats (including one contradiction with the earlier summary)

1. Feinberg Day's role is not confirmed in IPR2014-00786 itself. The previously generated Case Overview states that IV was "represented by Herbert D. Hart III and Aaron F. Barkoff (McAndrews...), Ian N. Feinberg and Elizabeth Day (Feinberg Day)." My searches confirm Feinberg Day Alberti & Thompson LLP (Ian N. Feinberg; Margaret Elizabeth Day) as IV's longtime litigation counsel in the district courts — e.g., pro hac vice appearances for IV entities in D. Md. and as counsel for IV II in the S.D.N.Y. JPMorgan Chase case — but I found no Feinberg Day appearance or power of attorney in IPR2014-00786's PTAB record; the IPR-of-record team appears to have been McAndrews (Hart/Barkoff) plus IV in-house (Coulman). I therefore treat the Feinberg Day attribution as counsel for IV in the parallel district court litigations, not verified as IPR2014-00786 counsel of record. This is a soft contradiction I am flagging rather than resolving.
2. No sealed/withheld appearances surfaced. IV II's counsel information in this proceeding was public (preliminary response, mandatory notices, Board orders); nothing in the record I found indicates sealed or in camera counsel information for this IPR.
3. Barkoff's registration number and current firm were not verified in the search window.
4. Angela/other IV in-house counsel: Coulman is the only IV in-house practitioner I can confirm of record in this proceeding. Tim Seeley (IV in-house) appears in other IV IPRs; I have no evidence he appeared here.
5. If the intended "defendants" are the banks as they were styled in the district court complaints (IV II v. BBVA Compass Bancshares, No. 2:13-cv-01106 (N.D. Ala.); IV II v. Commerce Bancshares, No. 2:13-cv-04160 (W.D. Mo.); IV II v. First National Bank of Omaha, No. 8:13-cv-00167 (D. Neb.)), their district-court trial counsel may include additional locally admitted attorneys beyond the IPR team in the table above; I did not pull the attorney appearance sheets from those three district dockets, so the table should be read as the IPR/appellate representation rather than a complete district-court appearance list.