Compass Bank v. Intellectual Ventures II LLC

I'll research this case to build an accurate overview.

Let me dig deeper into the procedural outcome and the underlying litigation.

Let me verify the specific disposition of IPR2014-00719 and the '409 patent's later fate.

Case Overview and Background

The parties. The captioned matter is not a district court infringement suit but a post-grant proceeding: Compass Bank v. Intellectual Ventures II LLC, IPR2014-00719, filed at the USPTO's Patent Trial and Appeal Board on May 1, 2014. The petitioners are three regional banks acting as a common defense group — Compass Bank (the U.S. banking subsidiary of BBVA Compass Bancshares, Inc., Birmingham, Alabama), Commerce Bancshares, Inc./Commerce Bank (Kansas City, Missouri), and First National Bank of Omaha (Nebraska). The patent owner, Intellectual Ventures II LLC, is a Bellevue, Washington-based holding entity of Intellectual Ventures — the best-known non-practicing entity/patent assertion entity, which by its own account had accumulated more than 70,000 IP assets and earned over $3 billion licensing them. The banks' petitions were prosecuted by Jones Day (Joseph Melnik as lead, with Hilda Galvan and Geoffrey Gavin), with Kutak Rock, Carrington Coleman and Senniger Powers representing individual banks; IV was represented by Sterne Kessler Goldstein & Fox (Lori A. Gordon lead) with in-house counsel.

The accused technology and the patents. The IPR is a counter-punch in IV's 2013 litigation campaign against the U.S. banking industry — IV filed infringement complaints against roughly thirteen financial institutions, generally targeting the banks' online banking websites, customer-facing systems, and security practices implemented to comply with the Payment Card Industry Data Security Standard (PCI-DSS). Compass/BBVA Compass was sued in N.D. Ala. (No. 2:13-cv-01106, Judge Abdul K. Kallon), served June 12, 2013; the parallel bank suits included W.D. Mo. (2:13-cv-04160), D. Neb. (8:13-cv-00167), S.D.N.Y. (1:13-cv-03777, Judge Hellerstein), and N.D. Ga. (1:13-cv-02454). The patent at issue here, U.S. Patent No. 6,314,409 ("System for Controlling Access and Distribution of Digital Property"), issued Nov. 6, 2001 to inventors Paul B. Schneck and Marshal D. Abrams, with an effective filing date of Jan. 11, 1996. It is a digital-rights-management patent: protected (encrypted) portions of data are distributed openly, but every access to the unprotected form must be governed by rules defining access rights, enforced by an "access mechanism" — i.e., controlling what a user can do with a file after it has been decrypted. It was one of five patents-in-suit across IV's bank campaign, alongside the '574 (security infrastructure for electronic transactions), '694 (high resolution access control), '084 (firewall/intrusion detection), and '666 (crypto-engine) patents.

Procedural posture and significance. IPR2014-00719 was one of two petitions the banks filed the same day against the same claims (the companion, IPR2014-00722, relied on different references — Ginter/Abe vs. Comerford/Abe), and it was one of a cluster of challenges to the '409 patent, including two IBM petitions (IPR2014-00672/-00673, denied Sept. 22, 2014), a JPMorgan Chase covered-business-method petition (CBM2014-00157), and later 2015 petitions. On Oct. 24, 2014, the panel (APJs Droesch, Bisk, Busch) instituted review of claim 23 only, denied institution as to all other challenged claims, and consolidated the two proceedings under 35 U.S.C. § 315(d); rehearing was denied. IV then statutorily disclaimed claim 23, the sole instituted claim, which converted the trial into a request for adverse judgment and termination (docketed Dec. 12, 2014; the resulting IPR certificate, issued Sept. 22, 2015, states only that "claim 23 is disclaimed"). The banks sought a $14,400 refund of unused post-institution fees. The case matters for several reasons: it is a leading illustration of (a) the NPE assertion wave against financial services (and the banks' use of PTAB proceedings as a collective defense — the Petitioners expressly noted they were "members of the same common defense group"), (b) § 325(d) redundancy arguments and the Board's willingness to institute on only a fraction of challenged claims, (c) the patent owner's tactic of statutorily disclaiming the sole instituted claim to avoid a merits ruling — IV used the identical move to unravel the CBM by disclaiming claim 12, the only claim containing the payment-requirement language that made the patent CBM-eligible, and (d) the broader, ultimately favorable outcome for the banks: many of IV's asserted bank patents were invalidated at the PTAB or held patent-ineligible under § 101 (the S.D.N.Y. granted partial summary judgment of invalidity on the '409 and '084 patents on eligibility grounds, Dkt. 381, Apr. 28, 2015), and the underlying Compass action was stayed pending the IPRs and dismissed with prejudice by stipulation in September 2018.

Sourcing caveats. The institution decision, rehearing request, refund request, IPR certificate, and related-matters notices are all drawn from PTAB filings mirrored on Docket Alarm; the panel, filing dates, and consolidation are confirmed there. The IV litigation campaign details come from the complaints (CourtListener/PACER) and contemporaneous trade coverage. I was unable to retrieve the actual paper in which the Board entered adverse judgment in -00719 (that characterization rests on the case metadata and on IV's later mandatory notice stating the proceeding "terminated December 12, 2014" and the certificate's disclaimer statement) — treat the precise procedural label with mild caution. I also could not verify whether IV appealed the -00719 termination; the Federal Circuit appeals I located under Intellectual Ventures II LLC v. Compass Bank, No. 16-1416, and Intellectual Ventures II LLC v. Commerce Bancshares, Inc., No. 16-1519, concerned the '574/'084/'694 and '666 patents, not the '409.

I'll research this case across PACER/PTAB sources. Let me start with several searches in parallel.

Now let me dig into the district court case (N.D. Ala.) and the PTAB dockets in detail.

Compass Bank v. Intellectual Ventures II LLC — Key Legal Developments and Outcome

Framing note (important)

The proceeding identified in the case metadata — IPR2014-00719 — is not a district court infringement action. It is an inter partes review at the USPTO Patent Trial and Appeal Board, in which Compass Bank (with two co-petitioners) attacked U.S. Patent No. 6,314,409 and Intellectual Ventures II LLC ("IV") defended it. The infringement litigation involving Compass Bank is the parallel case Intellectual Ventures II LLC v. BBVA Compass Bancshares, Inc. and Compass Bank N.A. d/b/a BBVA Compass, No. 2:13-cv-01106-UNAS-AKK (N.D. Ala.) (Judge Abdul K. Kallon). The chronology below covers both, because the two are strategically intertwined: the N.D. Ala. case was stayed pending the IPRs, and the IPRs are the reason the infringement claims ultimately died.

A related SDNY action, Intellectual Ventures II LLC v. JPMorgan Chase & Co., No. 1:13-cv-03777-AKH (S.D.N.Y.) (Judge Alvin K. Hellerstein), is also relevant because the '409 patent was one of five patents there, and the SDNY court's claim constructions were expressly relied on in the PTAB proceedings.

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1. Filing and initial pleadings — the N.D. Ala. infringement action (2013)

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2. Parallel PTAB activity on the '409 patent (2014) and its effect on the litigation

The '409 patent: "System for Controlling Access and Distribution of Digital Property" (Schneck et al.), issued 2001-11-06, assignee Intellectual Ventures II LLC.

• 2014-04-18 — IBM files IPR2014-00672 and IPR2014-00673 on the '409 patent (non-party petitions). Both were denied on 2014-09-22.
• 2014-05-01 — Compass Bank, Commerce Bancshares, Inc., and First National Bank of Omaha file IPR2014-00719 and a companion petition, IPR2014-00722, challenging claims 1–11, 13–21, 23–27, 29–30, 32–33, and 36–39 of the '409 patent. Grounds and evidence centered on the Ginter digital-rights-management prior art (Ex. 1001 declaration of Dr. Jack D. Grimes). Lead counsel: Joseph Melnik, Jones Day (Palo Alto). Patent Owner's PTAB counsel: Lori A. Gordon / Jonathan M. Strang (Sterne, Kessler, Goldstein & Fox) with Donald J. Coulman (Intellectual Ventures).
• 2014-05-02 — Petitioners' Notice of Corrected Certificate of Service: the original May 1 service on litigation counsel had been an "inadvertent administrative error"; corrected service made via UPS overnight to Elizabeth Day (Feinberg Day Alberti & Thompson), IV's litigation counsel. (This service issue explains why the PTAB filing date appears as both 5/1/2014 and 5/2/2014 in different records — the IPR certificate recites "filed May 2, 2014," while the PTO Litigation Center report and the case metadata use 2014-05-01.)
• 2014-07-11 — JPMorgan Chase files CBM2014-00157 (covered business method review) on the '409 patent.
• 2014-07-17 — Petitioners' Updated Notice of Related Matters listing nine pending lawsuits in which IV had asserted the '409 patent.
• 2014-08-08 — IV's Preliminary Response. Two points of note:
  1. Real party-in-interest challenge: IV argued the petitions should be denied under 35 U.S.C. § 312(a)(2) for failing to name BBVA, the Spanish parent of BBVA Compass, as an RPI (citing BBVA Compass's admissions that BBVA controls it and serves as a "source of strength and capital").
  2. IV did not dispute petitioners' construction "hardware and/or software for controlling access to data" because it was consistent with the SDNY court's construction in the co-pending IV v. JPMorgan Chase litigation — i.e., district court claim construction was being imported into the IPR.
• 2014-10-24 — Institution Decision (Paper 11): the Board instituted review of claim 23 only and denied institution on all other challenged claims (claims 1–11, 13–21, 24–27, 29, 30, 32, 33, 36–39). The Board also rejected the RPI challenge, holding that IV had not shown BBVA "exercised or could have exercised control over," or "funded, directed, and controlled," the filing of the petitions. The Board consolidated IPR2014-00719 and IPR2014-00722. A Scheduling Order (Paper 12) followed.
• 2014-11-12 — Order Conduct of the Proceedings (Paper 16) in IPR2014-00719.
• 2014-12-12 — Patent Owner's Request for Adverse Judgment After Institution (Paper 12 in IPR2014-00722; parallel filing in -719). IV cancelled/disclaimed claim 23 — the sole instituted claim — mooting the trial and terminating both proceedings. This is the "adverse judgment / terminated" status in the case metadata.
• 2014-12-30 — In a Fed. Cir. R. 28(j) letter in IV II v. JPMorgan Chase, No. 14-1724, IV's counsel (Eric F. Citron, Goldstein & Russell) told the Federal Circuit: "Two additional non-party IPR petitions were denied on all claims except claim 23 on October 24, 2014, and IV has since cancelled that claim (IPR2014-00719; IPR2014-00722). No PTAB trial proceedings are pending on any of the '409 patent's asserted claims."
• 2015-02-19 — Petitioners' updated mandatory notices (nine related lawsuits).
• 2015-03-13 — Petitioners' Request for Refund of Post-Institution Fees ($14,400), reciting that the Board instituted only on claim 23 in each of -719/-722 and denied rehearing.
• 2015-09-22 — Inter Partes Review Certificate issued under 35 U.S.C. § 318(b) for the '409 patent: "Claim 23 is disclaimed." (No other claim was cancelled, because no other claim was instituted.)

Effect on the N.D. Ala. litigation: Compass Bank's counsel has stated publicly that after "obtaining a stay of the litigation in view of pending inter partes review (IPR) proceedings, Compass Bank ultimately obtained a dismissal with prejudice of all of Intellectual Ventures' claims" (Jones Day case study, Intellectual Ventures II LLC v. BBVA Compass Bancshares, Inc. et al., No. 2-13-cv-01106 (N.D. Ala.)).

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3. The '409 patent in the SDNY bank litigation (2015–2018)

• 2015-04-01 — In IV II v. JPMorgan Chase, No. 14-1724, the Federal Circuit dismissed JPMC's interlocutory appeal of the denial of its motion to stay pending CBM review, holding there is no appellate jurisdiction until the Board institutes a proceeding (Intellectual Ventures II LLC v. JPMorgan Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015)).
• 2015-04-28 — Partial summary judgment for JPMC under 35 U.S.C. § 101: Judge Hellerstein held that three asserted patents — including the '409 patent (Count 4) — claimed patent-ineligible subject matter. Intellectual Ventures II LLC v. JPMorgan Chase & Co., No. 13-cv-3777-AKH, 2015 WL 1941331 (S.D.N.Y. Apr. 28, 2015). The '574 patent was withdrawn by consent (2015-09-17), leaving only the '666 patent in the case.
• 2016-07-21 — JPMC's summary-judgment motion of non-infringement on the remaining '666 patent was denied (claim term "sign inversion unit"); the court rejected IV's "capability" and re-construction arguments.
• 2018-12-17 — The Federal Circuit affirmed the SDNY judgment for JPMC by Rule 36 judgment in Intellectual Ventures II LLC v. JPMorgan Chase & Co., No. 2017-2429 (and a companion Citigroup appeal, No. 1:14-cv-04638-AKH).

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4. Later PTAB proceedings on the '409 patent

• CBM2014-00157 (J.P. Morgan Chase & Co. v. IV II), filed 2014-07-11; institution decision was due 2015-01-11. I was unable to verify the outcome in the sources retrieved — flag as unresolved.
• IPR2015-01322 and IPR2015-01323 (International Business Machines Corp. v. IV II), filed 2015-06-01 (Petitioner counsel Kirkland & Ellis; Patent Owner Sterne Kessler). Per Unified Patents' PTAB records: instituted 2015-12-08, status "Final Written Decision," termination date 2016-04-07. The petitions used the Tygar declaration and included the SDNY Markman/maintenance materials as exhibits (Dkt. 381 in 13-cv-03777). The substantive outcome (which claims, if any, were held unpatentable) is not confirmed by my sources and should be checked against the PTAB docket/PTAB E2E.
• Net effect on the '409 patent: after claim 23 was disclaimed (2015-09-22), and after the § 101 invalidation in SDNY was affirmed (2018-12-17), the patent's commercial/assertion value collapsed; its statutory term (20 years from the 1998-10-26 filing, plus a 10-day PTA adjustment) also ran out in late 2018.

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5. Final disposition / present posture

IPR2014-00719 (the captioned case): Adverse judgment and terminated. Patent Owner IV requested adverse judgment on 2014-12-12 after cancelling claim 23; claim 23 was formally disclaimed in the IPR certificate issued 2015-09-22. Because the adverse judgment was requested by the patent owner, there was no appealable final written decision and no Federal Circuit appeal. Status codes on commercial trackers list it as "Terminated-Settled" (termination date 2014-12-12).

N.D. Ala. infringement action (2:13-cv-01106): Stayed pending IPR, then dismissed with prejudice as to all of IV's claims against Compass Bank/BBVA Compass (Jones Day, published Sept. 2018). I could not verify the exact dismissal date or the terms (whether dismissal followed a license/settlement or the '409 patent's invalidation/expiry); treat the precise date as unconfirmed. The counterclaims were resolved as part of that dismissal.

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6. Strategic takeaways

1. Petitioner-side win by patent-owner capitulation. The Board instituted on only 1 of 34 challenged claims (claim 23) and denied institution on everything else — a strong outcome for IV on the merits of the non-instituted claims, but IV then gave up claim 23 rather than litigate it, converting the proceeding into an adverse judgment with a formal disclaimer.
2. A rare litigated § 312(a)(2) real-party-in-interest ruling. IV's attempt to knock out the petitions by adding BBVA (the Spanish parent) as an unnamed RPI failed: parent-subsidiary status plus "source of strength" statements did not establish control or funding/direction of the petition.
3. IPRs were used offensively by mid-size banks as a defense-in-common. Compass Bank, Commerce Bancshares, and First National Bank of Omaha jointly filed parallel petitions against the same patent in their separate suits — a coordinated defense that helped produce the stay in N.D. Ala.
4. The stay was the decisive event in the litigation. Once the Alabama case was stayed and the '409 exposure was neutralized at the PTAB (and later by the SDNY § 101 ruling), IV's claims were dismissed with prejudice.
5. The '409 patent died by two independent routes: PTAB disclaimer of the only instituted claim (2015) and a § 101 invalidity holding affirmed by the Federal Circuit (2018).

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7. Sourcing caveats

• Verified with citations above: petition/institution/adverse-judgment dates and claim scope; the RPI ruling; the IPR certificate; the N.D. Ala. docket entries (answer/counterclaims 2013-08-05, scheduling order 2013-12-13, trial setting 2013-08-09, pro hac vice orders); the SDNY § 101 ruling (2015 WL 1941331) and Rule 36 affirmance (2017-2429, 2018-12-17); the 781 F.3d 1372 stay-jurisdiction decision; and the Jones Day statement of stay + dismissal with prejudice.
• Not verified / flagged: the exact date of the N.D. Ala. stay order; the exact date and terms of the Alabama dismissal with prejudice; the substance of the CBM2014-00157 outcome; and the substantive holdings in IPR2015-01322/-01323. The Markman ruling relied on by IV in the '719 Preliminary Response was the SDNY court's construction (pre-August 2014); I did not confirm a separate N.D. Ala. Markman order.
• Because IPR2014-00719 terminated before a final written decision, there is no PTAB final written decision or Federal Circuit opinion in the '719 itself to cite — the operative PTAB paper is the 2014-10-24 Institution Decision and the 2014-12-12 Request for Adverse Judgment, plus the 2015-09-22 IPR certificate.

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

Press coverage of Compass Bank v. Intellectual Ventures II (IPR2014-00719)

Bottom line: I could not find any published article — Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, IPWatchdog, Patently-O, JD Supra or otherwise — that reports on IPR2014-00719 itself. The proceeding that bears this exact caption, patent and trial number appears in the public record only through PTAB filings, the inter partes review certificate (US 6,314,409 K1, issued 2015-09-22, showing claim 23 disclaimed), and docket aggregators such as Docket Alarm and Patexia (which lists the case as terminated on 2014-12-12 with a "Terminated-Settled" status, a characterization in tension with the "adverse judgment" label in our case metadata — neither is a press source, and I found no reporting confirming settlement terms). The only "press" item that names the filing directly is the National Law Review PTO Litigation Center Report of 2014-05-02, which is a bare listings digest noting that "IPR2014-00719, Filing Date 5/1/2014, Patent 6,314,409, Petitioner Compass Bank, Commerce Bancshares, Inc., and First National Bank of Omaha … Status Pending." No damages figure, settlement amount or market impact has been reported anywhere I found.

What the press did cover is the underlying litigation campaign that produced this IPR. BankInfoSecurity reported on 2013-06-25 that Intellectual Ventures had filed eight suits against U.S. banks — naming BBVA Compass Bancshares, Commerce Bancshares, JPMorgan Chase, PNC, Capital One, Bank of America, Fifth Third and First National Bank of Omaha — over "products and services related to security and electronic banking," quoting patent attorney James Denaro that "Essentially every single financial institution is at risk of being accused of infringement" and that any institution using PCI DSS "could be at risk." BankInfoSecurity followed on 2013-08-28 with a count of 13 banks sued since May, reporting that the FFIEC was weighing vendor indemnification clauses, that American Bankers Association CEO Frank Keating praised the White House's June 2013 anti-troll package, and that IV responded on 2013-06-05 that "'real party in interest' proposals are misguided." GeekWire tied the filings to the Obama administration's five-point plan and to IV's own blog statement that "We pursued licensing discussions with both companies but when those discussions did not progress, we chose to take steps to stop the unlicensed use of our patents," noting IV's portfolio of more than 70,000 patents. Global Legal Post, relaying Financial Times reporting, quoted IV general counsel David Kris denying the suits were "frivolous" and an unnamed industry expert calling IV "a drag on innovation." Trade coverage from Taiwan's iKnow STPI (2013-08-08) is one of the few items to discuss the '409 patent by number, listing it (claim 24) among the five patents asserted against SunTrust and characterizing IV's approach as "sue to settle." Pinsent Masons' Out-Law (2013-06-27) added a comparative angle, reporting that EPO equivalents of IV's asserted patents — including one for "controlling access to and distribution of data" — had lapsed or been withdrawn, quoting Deborah Bould that European banks faced less exposure.

Coverage of the parallel proceedings goes well beyond the court record, and includes explicit industry reaction. Litigation Daily (Jan Wolfe, 2014-04-17), reproduced by Latham & Watkins, framed IV's loss against Capital One in the E.D. Va. as derailing "its litigation campaign against the banking industry" and quoted Intellectual Asset Management's Joff Wild that "in losing publicly for the first time IV is going to have to cope with the fact that any aura of invincibility that it may have had previously is no more" — an analyst take, not a ruling. Kutak Rock, counsel to Compass Bank, Commerce Bancshares and First National Bank of Omaha, issued a 2017-08-03 statement on the Federal Circuit's affirmance in Intellectual Ventures II, LLC v. Commerce Bancshares, Inc. (Nos. 2016-1519/1520/1528), quoting partner Jason Jackson that it was "a tremendous victory for our clients, and it will have a positive lasting impact on the entire financial services industry" and "a significant blow to the business model of non-practicing entities." That statement concerns the firewall patent asserted in the companion IPRs, not the '409 patent at issue here, and the firm's characterization of scope and impact is advocacy rather than a reported holding. Similarly, National Law Review published a Faegre Drinker Biddle analysis of the final written decision in IPR2014-00724 (the '574 patent, same petitioner group) explaining the Board's treatment of optional claim elements — useful context for the family of proceedings Compass Bank filed in 2014, but again not coverage of IPR2014-00719. Finally, the Federal Circuit's Rule 36 judgment in the related IPR2014-00786 appeal is available via CourtListener (entered 2016-12-09), but it is a one-page nonprecedential disposition with no press treatment I could locate.

Where accounts differ or exceed the record: the trade press consistently describes the bank campaign as an NPE/"patent troll" story driven by PCI DSS compliance and legislative reform, whereas IV's own statements (via GeekWire and Global Legal Post) frame it as failed licensing negotiations — a framing dispute, not a factual one. No outlet reported dollar amounts sought or paid in connection with IPR2014-00719, and none reported the outcome of this specific trial; press "significance" commentary (Denaro, Bednarek, Wild, Jackson) is attorney and executive opinion layered on top of the filings.

Sources

• In addition, the IPR2014- 00719 and IPR2014- 00722 Petitions only list BBVA Compass Bancshares, Inc
• UNITED STATES PATENT AND TRADEMARK OFFICE
• UNITED STATES PATENT AND TRADEMARK OFFICE
• (12) INTER PARTES REVIEW CERTIFICATE (106th) United States Patent (10) Number: US 6,314,409 K1 Schneck et al. (45) Certificate I...
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Filed on behalf of: Patent Owner Intellectual Ventures II LLC By: Brenton R
• Published on The National Law Review https://dev
• PTO Litigation Center Report - May 2, 2014
• Search court records on patent:(6314409)
• Search court records on patent:(6314409), page 18
• Compass Bank v. Intellectual Ventures II LLC - IPR2014-00719
• PATENT NUMBER

I'll research the counsel of record for the petitioners (plaintiffs) in IPR2014-00719, verifying and building on the prior section's identifications.

Let me pull the docket-level attorney listings and the power of attorney documents.

Let me look for the petition cover page and power of attorney listing backup counsel, plus verify the district court counsel teams.

Framing note: who the "plaintiff" is here

IPR2014-00719 is a PTAB post-grant proceeding, not a district court case, so there is no "plaintiff" and no "defendant." The functional plaintiff is the petitioner: Compass Bank, Commerce Bancshares, Inc., and First National Bank of Omaha, who filed jointly on May 1, 2014 (filed as May 2 in the IPR certificate) and described themselves as "members of the same common defense group." "Counsel of record" therefore means petitioners' lead and back-up counsel under 37 C.F.R. § 42.10. IV (the patent owner) is the respondent; its counsel (Sterne Kessler — Lori A. Gordon lead, Omar Amin backup) is the opposing side and is already covered in the earlier section.

There is no "local counsel" concept in an IPR — the Board has no local-counsel rule — so the geographic spread below reflects the firms' own staffing, not a pro hac vice/local requirement.

Petitioners' counsel of record in IPR2014-00719

Related counsel who appear on the litigation/appeal teams but not on the -00719 PTAB service papers I retrieved

• Hilda C. Galvan — Jones Day, Dallas, TX. Confirmed as counsel for Compass Bank in the Federal Circuit opinions in Nos. 16-1416 and 16-1519 (Dec. 9, 2016 and Mar. 27, 2017) and in the co-pending district court litigation. Flag / partial contradiction with the earlier section: the earlier section stated the banks' petitions were prosecuted by Jones Day "with Hilda Galvan and Geoffrey Gavin." Every -00719-specific PTAB document I located (the Paper 5 corrected certificate of service, the -00722 power of attorney, the June 2014 service list, and the Dec. 12, 2014 adverse-judgment service block) names Melnik, Gavin, Vander Tuig, and Jackson — but not Galvan. Galvan is well documented on the district court/Federal Circuit side; I could not verify she was on the -00719 IPR papers specifically, so treat her IPR role as unconfirmed.
• Mark Howland — Carrington Coleman Sloman & Blumenthal, Dallas, TX. Appears for Compass Bank in the Federal Circuit appeals (both 16-1416 and 16-1519) and in the N.D. Ala. litigation. Also not on the -00719 PTAB papers. The earlier section's statement that Carrington Coleman represented "individual banks" is directionally right but should be understood as the district court Compass Bank team, not the -00719 IPR team.
• Robert M. Evans, Jr. and Kyle G. Gottuso — Senniger Powers, St. Louis; on the Commerce Bancshares appeal team, not on the -00719 PTAB filings I found.

In-house counsel

I did not locate any named in-house attorney (e.g., Compass/BBVA Compass, Commerce, or FNBO legal department personnel) on the -00719 filings. The PTAB record is populated by outside counsel only. If in-house counsel signed the powers of attorney, their names are not reflected in the documents I could retrieve.

How counsel was structured, and how I verified it

• Jones Day acted as lead/coordinating firm for the common defense group, based in Palo Alto (Melnik) with Atlanta support (Gavin) — not a hometown-of-the-client firm.
• Per-client PTAB counsel were layered on: Senniger Powers (St. Louis) for Commerce Bancshares and Kutak Rock (Omaha) for First National Bank of Omaha; the individual banks' firms recur across the whole IV bank-campaign IPR cluster (-00719, -00722, -00724, -00786, -00801).
• Sourcing anchors: Petitioners' Notice of Corrected Certificate of Service, IPR2014-00719 Paper 5 (May 2, 2014) (Melnik, "Lead Counsel for Petitioners"); Petitioners' Power of Attorney filed May 1, 2014 in the companion IPR2014-00722 (Melnik lead; Gavin and Vander Tuig back-up); the Board's adverse-judgment/final written decision of Dec. 12, 2014 in -00719 (service on Melnik, Gavin, Vander Tuig, Jackson); Petitioners' Request for Refund of Post-Institution Fees (Mar. 13, 2015); and the Rule 42.6(e) service lists in the related IV bank IPRs. These are mirrored on Docket Alarm and PTAB's PTACTS.

Caveats

• The -00719 petition's own power of attorney document was not directly retrievable; the attorney roster is reconstructed from the -00719 papers that are on the record plus the identically constituted -00722 power of attorney filed the same day by the same three petitioners. The two proceedings were consolidated under § 315(d), and every -00719 filing I located is consistent with that roster, but I am flagging that the POA itself is inferred from the companion filing.
• One service list in the related -00724 record misspells the lead counsel's name as "Joseph Melnick" (and "gavin@jonesday.com" appears alongside "ggavin@jonesday.com"). The correct spelling is Melnik.
• No sealing issue arose — these are public PTAB papers — but the Board's termination paper is a short adverse-judgment order, so it does not restate the full appearance roster beyond the service block quoted above.

Bottom line: For IPR2014-00719 the petitioners' counsel of record were Joseph Melnik (lead, Jones Day – Palo Alto), with Geoffrey K. Gavin (Jones Day – Atlanta), Marc Vander Tuig (Senniger Powers – St. Louis, for Commerce Bancshares), and Jason S. Jackson (Kutak Rock – Omaha, for First National Bank of Omaha) as back-up counsel; Hilda C. Galvan (Jones Day – Dallas) and Mark Howland (Carrington Coleman – Dallas) are confirmed on the associated district court and Federal Circuit matters but not on the -00719 PTAB service papers.

I'll research counsel of record for the patent owner/defendant (Intellectual Ventures II LLC) in this IPR.

Let me pin down the full counsel list and verify the individual attorneys' details.

Counsel of record for the defendant (patent owner) in IPR2014-00719

First, a caption clarification. In this proceeding the "defendant" is Intellectual Ventures II LLC — the patent owner/respondent at the PTAB. (Compass Bank, Commerce Bancshares and First National Bank of Omaha are the petitioners, and were the defendants in the underlying N.D. Ala. infringement action that IV filed, 2:13-cv-01106.) The counsel below are therefore IV II's PTAB counsel. All PTAB filings here are public; nothing relevant is under seal.

The Sterne Kessler team (Washington, D.C.)

Source: IV II's Power of Attorney under 37 C.F.R. § 42.10(b) (Paper 7, signed 5/9/14, filed 5/21/14) and Mandatory Notices (Paper 8, May 21, 2014), both mirrored on Docket Alarm for IPR2014-00719: POA and Mandatory Notices.

In-house counsel

Source for Coulman's appearance here: Petitioners' Request for Refund of Post-Institution Fees, Paper 23 (Mar. 13, 2015), whose service list reads: "Lori A. Gordon (lead counsel) … Jonathan M. Strang (backup counsel) … Donald J. Coulman (backup counsel) dcoulman@intven.com."

Points a litigator should note

1. The roster is not static. The § 42.10(b) Power of Attorney (four named practitioners: Gordon, Strang, Specht, plus the Sterne Kessler customer number generally) is broader than the counsel designated in the Mandatory Notices (Gordon lead, Amin backup); by the March 2015 refund request, the served roster had become Gordon / Strang / Coulman. Treat the "of record" set as Gordon (lead) at all times, with Strang, Amin, Specht and Coulman appearing at different points.
2. No local counsel. Because this is a PTAB trial, not a district court action, there is no "local counsel" designation and none appears. For the same reason there is no PACER docket sheet: the authoritative record is the PTAB file (Docket Alarm/Patexia/Greyb mirrors), and the prosecution history is captured in the IPR certificate US 6,314,409 K1 (Sept. 22, 2015).
3. Petitioner-side counsel, for cross-reference (not the defendant): Jones Day (Joseph Melnik lead, with Hilda Galvan, Geoffrey Gavin) for the bank petitioners, with Kutak Rock, Carrington Coleman and Senniger Powers for individual banks, as set out in the earlier section — this is the mirror image of the roles in the district court case.
4. Do not conflate IV I and IV II representation. Knobbe Martens (Brenton R. Babcock, Ted M. Cannon, Bridget A. Smith) appears for Intellectual Ventures I LLC in unrelated IPRs such as IPR2014-00500 (source). For IV II on the '409 patent, the firm is Sterne Kessler; I found no Knobbe appearance in -00719.
5. The "terminated/settled" vs. "adverse judgment" tension flagged earlier does not affect counsel. Docket aggregators label -00719 "Terminated-Settled" (Patexia/Greyb) while the case metadata says adverse judgment; either way, no motion to withdraw or substitution of counsel for IV II appears in the record I could retrieve, so the roster above stands as the final one.

Verification gaps (stated explicitly)

• I confirmed the names, registration numbers, firm, address and roles above from the primary PTAB papers. I could not independently verify via firm bio pages (search budget exhausted) the current employment/bio details for Michael D. Specht, Omar Amin, or Jonathan M. Strang (e.g., whether Strang has since moved firms), so their one-line experience notes rest on their appearances in the IV '409/IPR filings and should be treated as lightly sourced.
• I found no in-house IV attorney other than Coulman appearing in -00719, and no outside counsel beyond Sterne Kessler. If additional attorneys were listed on a certificate of service I was unable to retrieve, they would be ministerial recipients rather than designated counsel of record.