IBM v. Intellectual Ventures II LLC

I'll research this case thoroughly before drafting the overview.

Good foundation. Now let me dig into the parties, the parallel district court campaign, the mandamus petition, and the later IPRs.

Now let me verify the outcome of the later IBM IPRs, the inventors/assignee history, and IBM's own interest in the patent.

Case Overview: IBM Corp. v. Intellectual Ventures II LLC, IPR2014-00672

A framing note. The caption and case number here identify an AIA inter partes review petition, not a district-court infringement suit. IBM filed IPR2014-00672 on April 18, 2014 (corrected petition April 28, 2014), seeking review of claims 1–11 and 13–21 of U.S. Patent No. 6,314,409; on September 22, 2014 the Board denied institution on the merits (Paper 12), written by APJ Kristen L. Droesch and joined by APJs Jennifer S. Bisk and Justin Busch. So the "litigation" backdrop is really the district-court campaign against the '409 patent that prompted IBM's petition — because IBM itself was never sued on this patent.

Parties and the technology. IBM is a global hardware/software/services operating company (Armonk, NY) and was the real party-in-interest as petitioner; the Board expressly noted that "none of the district court proceedings name Petitioner as a defendant," meaning IBM filed as a third-party challenger, not a defendant fending off a claim (Paper 12). The patent owner, Intellectual Ventures II LLC (Bellevue, WA; an affiliate of Intellectual Ventures I LLC and of IV Management, per the record address 3150 139th Ave SE in the Capital One pleadings), is part of the Intellectual Ventures family — the quintessential non-practicing patent-holding/assertion entity, widely reported as founded in 2000 by Nathan Myhrvold and Edward Jung with investor backing (I did not independently re-verify those founding details in this session). The '409 patent, "System for Controlling Access and Distribution of Digital Property" (App. No. 09/178,606; inventors Paul B. Schneck and Marshall D. Abrams; filed Oct. 26, 1998; issued Nov. 6, 2001; now assigned to IV II), is an early digital-rights-management patent: a distributor packages data into an encrypted body plus unencrypted portions and encrypted access rules, distributes it "openly" over an insecure channel, and an "access mechanism" enforces the rules so that even access to the decrypted ("unprotected") form is limited — i.e., it targets secondary distribution after a legitimate user has decrypted the file. Claim 1 and independent claim 21 (and claim 24) recite those access-limitation elements; claim 12 contained the payment language later central to the CBM fight. The accused technology in the underlying suits was banking and payment infrastructure — the '409 was asserted against core banking, ATM, online/mobile banking, and credit-card transaction systems (Capital One, JPMorgan Chase/Chase Paymentech, BBVA Compass, Commerce Bancshares, First National Bank of Omaha, SunTrust, U.S. Bancorp, and Huntington) in eight suits filed May 2013–January 2014.

Procedural posture and the merits ruling. In IPR2014-00672 the Board construed claims under the broadest reasonable interpretation, found no term required explicit construction, and rejected every ground: anticipation by Cooper (U.S. Pat. No. 5,689,560) and by Digibox (Sibert et al., USENIX Workshop on Electronic Commerce, 1995), and obviousness over Digibox+Stefik and Cooper+Stefik. The failure was essentially one of petition craft — the Board held IBM's claim charts and expert declaration did not sufficiently explain how the references disclosed "rules defining access rights to the data" or that "each and every access to an unprotected form of the protected portions" was limited "as enforced by an access mechanism." IBM sought rehearing (denied, on the ground that an expert declaration cannot be incorporated by reference), then petitioned the Federal Circuit for a writ of mandamus in In re International Business Machines Corp., Misc. No. 15-119 (Fed. Cir.) — filed Jan. 23, 2015, PTO response Feb. 3, 2015, denied March 24, 2015 (Lourie, J.), holding that 35 U.S.C. § 314(d) forecloses appeal of institution decisions, mandamus was unavailable, and IBM had no "procedural right" to a particularized standard for weighing expert evidence. As to venue: an IPR is heard by the PTAB in Alexandria, VA — there is no district, division, or Article III judge. The parallel district cases, by contrast, were deliberately spread across many districts (S.D.N.Y. before Judge Alvin K. Hellerstein, D. Md. before Judge Paul W. Grimm in Greenbelt/Southern Division, N.D. Ala., W.D. Mo., D. Neb., N.D. Ga., S.D. Ohio, D. Minn.), a diffusion pattern Capital One later characterized as part of IV's serial-litigation model.

Why it matters. Three threads make this case notable. (1) NPE assertion patterns and the "banking campaign." IV's 2013–14 wave of suits against banks on the '409 and related patents produced one of the most-cited PAE antitrust counterattacks: Capital One's Sherman § 2 and Clayton § 7 counterclaims alleging that IV accumulates banking-technology patents, conceals their scope, and serially litigates to force portfolio-wide licenses — the D. Md. opinion memorably called IV "a 'patent troll,' and not just any patent troll, but a veritable Dovregubben" (Intellectual Ventures I LLC v. Capital One Fin. Corp., No. PWG-14-111 (D. Md. Dec. 1, 2017), ECF No. 686). Judge Grimm granted IV summary judgment on the antitrust claims on Noerr-Pennington/collateral-estoppel grounds; Capital One appealed (Fed. Cir. No. 18-1367) and the Federal Circuit affirmed in 2019 (I have not independently verified the reporter citation). (2) § 101 and post-Alice DRM patents. The Board's § 102/§ 103 denial in 2014 did not save the patent: on April 28, 2015, Judge Hellerstein invalidated the '409 (with the '084 and '694) as patent-ineligible under Alice in Intellectual Ventures II LLC v. JPMorgan Chase & Co., 2015 WL 1941331 (S.D.N.Y.), which then collaterally estopped IV in the Capital One case; the Federal Circuit affirmed in Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017). (3) IPR/CBM linkage. The '409 drew five-plus PTAB petitions — IBM's IPR2014-00672 and -00673 (both denied Sept. 22, 2014); Compass Bank/FNBO's IPR2014-00719 and -00722 (denied as to all claims but claim 23 on Oct. 24, 2014, after which IV statutorily disclaimed claim 23, reflected in the IPR certificate of Sept. 22, 2015); and JPMorgan's CBM2014-00157, where IV disclaimed claim 12 to try to defeat CBM standing, yet the Board proceeded and in its Jan. 12, 2016 Final Written Decision held claims 1–11, 13–21, 24–27, 29–30, 32–33, and 36–39 unpatentable. IBM's follow-on IPR2015-01322/-01323 (filed June 1, 2015) were finally instituted Dec. 8, 2015, with IPR2015-01323 then terminated in part as moot on April 7, 2016 as to claims already invalidated, leaving only claim 40. The net effect is a textbook illustration of AIA-era parallelism: a merits denial at the PTAB in 2014, statutory disclaimers used as a docket-management tool, and the patent's ultimate demise at the PTAB and in the courts under § 101 rather than § 102/§ 103. One additional detail worth flagging: among the prior art Capital One identified against the '409 was IBM's own 1995 "Cryptolopes" rights-management announcement — a plausible, though not documented in the sources I reviewed, link between IBM's commercial interest in DRM and its willingness to fund third-party IPR challenges.

Sourcing confidence: Party names, patent data, panel composition, the Paper 12 denial, the related-proceeding list, the mandamus ruling, the CBM final written decision, and the § 101 rulings are grounded in the PTAB/Federal Circuit documents and firm write-ups cited above. IBM's precise motivation for petitioning is not documented in the materials I found — I have not verified a separate IBM–IV litigation or license dispute that would explain it, so treat that as an open question rather than an established fact.

I'll research this case. Note the metadata indicates this is a PTAB IPR proceeding (not a district court case), so I'll focus on the IPR and any parallel litigation involving the '409 patent.

Let me gather more detail on the rehearing, the Federal Circuit mandamus petition, and the parallel proceedings' outcomes.

Let me research the parallel district court litigation and Federal Circuit appeal, plus the outcome of IBM's 2015 IPR round.

Framing note (important)

The case in the metadata — IBM v. Intellectual Ventures II LLC, IPR2014-00672 — is not a district-court infringement action. It is an inter partes review (IPR) petition filed by IBM against IV's U.S. Patent No. 6,314,409 before the Patent Trial and Appeal Board. There is therefore no complaint, answer, counterclaims, Markman proceeding, trial, verdict, JMOL, or settlement in this matter in the ordinary sense. IBM was never a defendant in IV's '409 infringement suits; it filed IPRs preemptively (its petition states IBM "has not been served with a complaint alleging infringement of the '409 Patent"). Below I map your requested categories onto the actual record and then cover the parallel PTAB proceedings and district-court litigation that did involve the '409 patent, because those supply the practical "outcome" for the patent.

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Chronological developments

Pre-filing context (patent background)

• 2001-11-06 — U.S. Patent No. 6,314,409 B2, "System for controlling access and distribution of digital property," inventors Paul B. Schneck and Marshall D. Abrams, issues. Filed 1998-10-26 as a division of App. No. 08/968,887. Originally assigned to Veridian Information Solutions; later held by Intellectual Ventures II LLC. The patent claims methods/devices/systems for controlling access to, use, distribution, and secondary distribution of data (digital-rights-management subject matter).

Filing & initial pleadings (petition phase)

• 2014-04-18 — IBM files IPR2014-00672, challenging claims 1–11 and 13–21 of the '409 patent. Concurrently, IBM files IPR2014-00673 challenging claims 23–27, 29–30, 32–33, and 36–40. (Petitioner's Amended Mandatory Notices, Paper 8; Board's institution decision notes a "Corrected Petition filed April 28, 2014.") Counsel for IBM: Kenneth R. Adamo, Brent Ray, Joel Merkin, Eugene Goryunov (Kirkland & Ellis LLP). Counsel for IV: Lori Gordon, Omar Amin (Sterne, Kessler, Goldstein & Fox PLLC).
• 2014-04-18 (with petition) — IBM files an Ex. 1004 submission under 35 U.S.C. § 301 / 37 C.F.R. § 1.501, identifying prior art bearing on the challenged claims, including Sibert et al., "DigiBox: A Self-Protecting Container for Information Commerce" (USENIX, July 1995) and U.S. Patent No. 5,689,560 to Cooper et al. IBM also submitted statements IV made in the district-court proceedings about claim scope — a preview of the prosecution-disclaimer-type arguments it would press.
• 2014-05-09 — IBM files Amended Mandatory Notices (Paper 8), disclosing the related proceedings: eight district-court suits asserting the '409 patent (none naming IBM as a defendant), four co-pending IPR petitions on the '409 patent, and confirming IBM is the sole real party-in-interest.
• Mid-2014 — IV files its Patent Owner Preliminary Response (Paper 9).

Pre-institution motions/decisions of substance

• 2014-09-22 — Decision Denying Institution (Paper 12). Panel: Kristen L. Droesch (author), Jennifer S. Bisk, Justin Busch. Under 35 U.S.C. § 314(a), the Board found the petition did not show a reasonable likelihood of prevailing on any challenged claim. Key holdings:
  • Claim construction: claims given their broadest reasonable interpretation (BRI); although the parties disputed "openly distributing," "environmental characteristics," and "internal rule," the Board found no term required explicit construction and applied ordinary and customary meanings.
  • Cooper anticipation (§102): petition failed to explain sufficiently how Cooper discloses rules defining access rights to the data and how access to the decrypted software object (unprotected form of the protected data) is limited in accordance with those rules as enforced by Cooper's file-management program (the asserted "access mechanism"). "Preferable prevention of copying" and "trial interval data" were held insufficient.
  • Digibox anticipation (§102(b)): petition addressed only controlled access to protected forms and did not show Digibox discloses limited/controlled access to unprotected forms of the protected data as required by claims 1 and 21 (the Board credited IV's "derivative works" argument distinguishing Ginter/Digibox).
  • Obviousness (§103(a)): the Digibox+Stefik and Cooper+Stefik combinations failed because Stefik did not cure the deficiencies, and IBM provided no sufficient articulated reasoning with rational underpinning (citing Graham v. John Deere and KSR).

Rehearing / appellate challenge to non-institution

• 2014-12-23 — Board denies IBM's Request for Rehearing (Paper 14). The Board explained that an expert declaration (here, IBM's) cannot be incorporated by reference into the petition, and the petition itself did not discuss the cited declaration portions with enough detail.
• Early 2015 — Because 35 U.S.C. § 314(d) bars appeals of institution decisions, IBM petitions the Federal Circuit for a writ of mandamus: In re International Business Machines Corp., Misc. No. 15-119 (Fed. Cir.) (arising from IPR2014-00672 & -00673).
  • 2015-02-03 — The PTO Director's response (Nathan K. Kelley, Solicitor; Scott C. Weidenfeller, Associate Solicitor) argues mandamus is extraordinary relief, that the Federal Circuit already held non-institution decisions are not subject to mandamus review, and that IBM had an alternative avenue (rulemaking, in which IBM had already submitted comments).
  • 2015-03-24 — Federal Circuit denies the mandamus petition (nonprecedential; Lourie, J.). The court held IBM had no "procedural right" to a particularized standard for considering expert evidence and failed to show injury "beyond a generally available grievance about the government."

Discovery milestones with strategic significance

• There was no discovery in IPR2014-00672, because trial was never instituted (discovery follows institution). The strategically significant discovery fight occurred in IBM's later IPR round — see IPR2015-01322/-01323 below.

Claim construction / trial / verdict / post-trial motions

• None in IPR2014-00672. The only claim-construction event was the Board's BRI analysis in the 2014-09-22 non-institution decision. Because review was not instituted, there was no trial, no final written decision, no JMOL/new-trial/fee practice, and no §315(e) estoppel attached to IBM from this petition.

Final disposition of IPR2014-00672

• Final disposition: petition denied institution on the merits (2014-09-22), rehearing denied (2014-12-23), mandamus denied (Fed. Cir. 2015-03-24). This matches your metadata status: "not instituted — merits." The practical winner of IPR2014-00672 was IV, whose claims 1–11 and 13–21 survived IBM's first challenge.

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Parallel PTAB proceedings on the '409 patent (and their effect)

Strategic effects:

• The CBM2014-00157 proceeding (JPMorgan) proved decisive. Its 2016-01-12 final written decision invalidated nearly all of the '409 patent's claims (including the claims IBM had challenged in -00672), and IV let the appeal deadline lapse. That mooted IBM's later IPR2015-01322/-01323 challenges to the same claims.
• IPR2015-01322 shows the §315(b) time-bar/privity fight: IV moved for additional discovery to prove IBM was in privity with JPMC (via IBM's standard customer agreements giving IBM a right/duty to control defense and indemnify), which IV argued made IBM's petition time-barred. The Board denied additional discovery (Paper 11, 2015-09-24, applying the Garmin factors), finding IV showed only "possibility and allegation," not evidence "beyond speculation."
• The Board also addressed a third-party declarant (Lindsey Miles) issue in IPR2015-01322 (Paper 15, 2016-02-02), authorizing a subpoena to compel cross-examination and warning that a defective/unsworn "declaration" would be given little weight.
• IPR2015-01323 was terminated-in-part (Paper 22, 2016-04-07) as to claims 21, 24–27, 29, 30, 32, 33, and 36–39 (already held unpatentable in the CBM FWD, and moot), with adverse judgment entered as to claim 40 (which the CBM had not addressed).

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Parallel district-court litigation involving the '409 patent (context for the "litigation" framing)

Per IBM's mandatory notices, IV asserted the '409 patent in at least eight district-court suits (none naming IBM as a defendant), including: IV I v. Capital One, 8:14-cv-00111 (D. Md.); IV II v. Huntington Bancshares, 2:13-cv-00785 (S.D. Ohio); IV II v. U.S. Bancorp, 0:13-cv-02071 (D. Minn.); IV II v. SunTrust Banks, 1:13-cv-02454 (N.D. Ga.); IV II v. Commerce Bancshares, 2:13-cv-04160 (W.D. Mo.); IV II v. BBVA Compass, 2:13-cv-01106 (N.D. Ala.); IV II v. JP Morgan Chase, 1:13-cv-03777 (S.D.N.Y.); and IV II v. First National Bank of Omaha, 8:13-cv-00167 (D. Neb.).

• 2015-04-28 — In the S.D.N.Y. JPMorgan case, Judge Hellerstein granted summary judgment of invalidity under 35 U.S.C. § 101 (Dkt. 381) as to the '409 patent.
• 2015-06-11 / 2015-09-04 — In IV v. Capital One (D. Md.), Special Master Raphael Lupo issued a report and recommendation (Dkts. 315, 382) recommending the '409 patent be invalidated as directed to unpatentable subject matter, before Judge Paul Grimm.
• 2014-12-30 — IV filed a FRAP 28(j) letter in Intellectual Ventures II LLC v. JP Morgan Chase & Co., No. 14-1724 (Fed. Cir.), updating the court on the PTAB posture of the five patents-in-suit, including that the two non-party IPR petitions (IPR2014-00672 and -00673) were denied on 2014-09-22 and that the -00719/-00722 petitions were denied on all claims but claim 23 on 2014-10-24, after which IV cancelled claim 23.

These rulings fed directly into the PTAB CBM proceeding — JPMorgan's CBM reply (June 2015) cited the S.D.N.Y. §101 summary-judgment order and the D. Md. special master's R&R as support for invalidating the '409 claims.

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Bottom line / present posture

• IPR2014-00672 itself is closed: institution denied on the merits (2014-09-22), rehearsing denied, mandamus denied. No estoppel attached to IBM.
• The '409 patent did not survive the broader fight. The CBM2014-00157 final written decision (2016-01-12) invalidated essentially all asserted claims, the appeal window lapsed, and IBM's follow-on IPRs (IPR2015-01322/-01323) were terminated as moot on 2016-04-07, with adverse judgment on claim 40. The parallel district-court §101 rulings (S.D.N.Y. and D. Md.) pointed the same way.
• Net practical result: IBM's initial IPR strategy against the '409 patent failed at the institution stage, but the patent was ultimately knocked out through the JPMorgan CBM proceeding and parallel §101 invalidation in district court.

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Sourcing caveats

• The docket-entry specifics for IPR2014-00672 (Papers 8, 9, 12, 14) and the Sept. 22, 2014 decision are well sourced (PTAB decision text via PTAB Trial Blog and the National Law Review summary; Docket Alarm copies of the amended notices). The Federal Circuit disposition in In re IBM, No. 15-119, is sourced to McDermott/NatLawReview summaries of the 2015-03-24 nonprecedential opinion.
• The district-court appeal outcome in No. 14-1724 is only partially sourced here (I could confirm IV's Dec. 30, 2014 FRAP 28(j) letter and IV's motion to dismiss that appeal, but not the Federal Circuit's final resolution). Treat 14-1724's ultimate disposition as unverified. Likewise, I did not confirm whether the D. Md. Capital One §101 R&R was ultimately adopted in a final judgment, or any subsequent appeal — flag these as not confirmed.
• No attorneys, dates, or rulings above are invented; where I could not verify a fact, I have said so.

I'll search several angles for press coverage of this IPR and the related '409 patent campaign.

Now let me look for mainstream and trade press coverage, including the mandamus appeal and the IV banking campaign.

Press and analyst coverage

Media coverage of IPR2014-00672 was sparse and essentially trade/legal-blog in nature — there is no mainstream press file on this proceeding. My searches (case caption, "IPR2014-00672," the '409 patent number, the party names, and the Federal Circuit mandamus) surfaced no Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, or Patently-O article on this IPR, and no IPWatchdog piece on it either. What exists is a small cluster of law-firm client alerts and PTAB-focused blogs. The PTAB Trial Blog summarized the Board's September 22, 2014 Paper 12, reporting that the panel "found that Petitioner had not shown a reasonable likelihood that it would prevail as to the unpatentability of any of the challenged claims (1-11 and 13-21) of the '409 Patent," that no disputed term "required an explicit construction," that the Cooper anticipation ground failed because IBM did not "explain sufficiently how Cooper discloses rules defining access rights to the data," and that DigiBox was distinguished because IBM "only addressed limited or controlled access to protected forms of the data." The National Law Review carried the same analysis under the byline of Drinker Biddle's Intellectual Property Litigation group (Vol. IV, No. 273, 2014), framing it as a practice takeaway: "A petitioner must fully explain how every element of the claim is disclosed in the reference to succeed on a ground of unpatentability based on anticipation. A claim chart with citations to certain portions of the reference is not enough." The two accounts are substantially the same text — the blog post and the firm alert appear to be the same write-up, so they are not independent corroboration.

The one piece of this story with a genuine appellate angle — IBM's mandamus petition — was covered only as a Federal Circuit practice note, not as news. McDermott Will & Emery (also published via Mondaq, dated May 8, 2015, and on JD Supra) reported on In re International Business Machines Corp., No. 15-119 (Fed. Cir. Mar. 24, 2015), explaining that IBM "filed two IPR petitions attacking a patent owned by Intellectual Ventures," that the Board declined institution because the expert declaration "could not be incorporated by reference into the petitions," and that IBM sought a writ compelling the PTO to "issue a written, clear, binding, and definitive/particularized standard for all of the PTAB merits panels to follow for considering petitions requesting inter partes review." The firm noted that "IBM was forced to seek a writ instead of appealing the Board's institution decision because 35 U.S.C. § 314(d) explicitly prohibits appeals," and that the Federal Circuit rejected IBM's asserted "procedural right," finding no "injury beyond a generally available grievance about the government" and noting IBM could pursue the same relief through the PTO's pending rulemaking (where IBM had already filed comments). That framing — mandamus as a workaround for the § 314(d) appeal bar — is the only significance any outlet assigned to this case; none of the coverage discusses IBM's commercial motivation for challenging an IV patent it was never accused of infringing.

On the categories the task asks about specifically, the reporting says nothing. No article I found reports any damages sought or awarded, any settlement, or any market impact — unsurprising, since this was an instituted-or-not IPR petition with no infringement claim, no accused product, and no money at stake in the proceeding itself. No executive statements or third-party industry reaction specific to IPR2014-00672 appear in the coverage. The broader "IV versus the banks" story did generate significant commentary, and the '409 patent was one of the five patents in that campaign, but the widely quoted color — Judge Grimm's line calling IV "a 'patent troll,' and not just any patent troll, but a veritable Dovregubben" — comes from the Capital One summary-judgment opinion itself (D. Md., Dec. 1, 2017), not from a news article about this IPR. Accounts do not conflict, because there is effectively only one account of the denial and one of the mandamus denial, both derivative of the underlying orders.

Sourcing caveat: every claim above is drawn from the linked pages I actually retrieved. The Drinker Biddle/National Law Review alert and the PTAB Trial Blog post are duplicative rather than independent, and I could not locate any mainstream, wire-service, or general-technology-press coverage of IPR2014-00672 in this session — treat the absence of such coverage as a finding, but one limited to the searches I ran.

Sources

• Trials@uspto
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Published on The National Law Review https://natlawreview
• IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION
• on-point case law that this Court can (or should) grant itself such broad authority
• UNITED STATES PATENT AND TRADEMARK OFFICE
• UNITED STATES PATENT AND TRADEMARK OFFICE
• On **7 September 5, 2013, at the same time VIS I and VIS II were proceeding before this Court, and while Defendant’s summary j...
• UNITED STATES PATENT AND TRADEMARK OFFICE
• UNITED STATES PATENT AND TRADEMARK OFFICE
• _A
• #36 in Tranxition, Inc. v. Lenovo (United States) Inc. (Fed. Cir., 15-1907) – CourtListener.com - IPR2014-00672

I'll verify counsel of record against the actual PTAB filings and firm sources.

Now let me pull the Second Amended Mandatory Notices and the petition signature block to confirm the full counsel roster.

Let me check the Second Amended Mandatory Notices and the Federal Circuit mandamus filing for any roster changes.

Counsel of record — "plaintiff" (petitioner) side

Threshold framing. IPR2014-00672 has no plaintiff in the Article III sense; the party occupying the plaintiff/petitioner chair is International Business Machines Corporation ("IBM"). Per 37 C.F.R. § 42.8(b)(3), counsel is designated in the Petitioner's Mandatory Notices rather than in an appearance docket, and because the Board denied institution on 2014‑09‑22, the counsel roster is fixed by the petition-stage papers — there are no later appearances, substitutions, or withdrawals. The controlling filings are:

• Paper 4 — Corrected Petition for Inter Partes Review (filed Apr. 28, 2014)
• Paper 8 — Petitioner's Amended Mandatory Notices, § 42.8(b)(3) counsel designation (May 9, 2014)
• Paper 11 — Petitioner's Second Amended Mandatory Notices (July 28, 2014), cited by the Board in Paper 12 for related matters (Docket Alarm index; Paper 8 full text)
• Paper 12 — Decision Denying Institution (Sept. 22, 2014), whose caption block lists the full petitioner counsel line (Decision text; copy filed in Fed. Cir. No. 14-1724, Doc. 36)

Designated lead and back-up counsel (Paper 8, § 42.8(b)(3))

Additional petitioner counsel appearing on the papers (Paper 12 caption)

Caveat on the roster's completeness. The Paper 12 caption (reproduced in the Fed. Cir. appendix at storage.courtlistener.com) shows four Kirkland names; the Paper 8 mandatory notices designate only Adamo (lead) and Shah (back-up). I could not retrieve the text of Paper 11 (Second Amended Mandatory Notices, July 28, 2014) — Docket Alarm indexes it but the body did not surface in search — so I cannot rule out a counsel update there. Patexia's case page reports "Petitioner Attorneys: 13" for the proceeding (Patexia), a count I could not reconcile with the four names in the decision caption; treat the four-name roster as the verified core and the "13" as unexplained. No IBM in-house counsel are identified anywhere in the § 42.8 notices — IBM designated only outside counsel, which is permitted for a corporate petitioner.

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Attorney profiles

Kenneth R. Adamo — lead counsel. In 2014 he was a partner in Kirkland & Ellis's Chicago (and New York) IP group, having joined the firm in 2011 from Jones Day; he is now Principal at the Law Office of KRAdamo, Chicago, and appears regularly at the PTAB and Federal Circuit (ICLG bio; Concurrences bio). His IBM relationship pre-dates this petition and is documented in Kirkland's own 2011 announcement: he had represented IBM in § 146 proceedings involving Rambus Inc. and defended IBM in a patent infringement suit brought by Auburn University — i.e., IBM was already a long-standing Kirkland–Adamo client when the '409 IPRs were filed (Kirkland & Ellis, "Kirkland & Ellis Nabs IP Veteran From Jones Day," Mar. 2011). He has tried major patent cases to verdict, including Texas Instruments v. Hyundai Electronics (jury verdict of validity and willful infringement, $25.2M, settled with a $1.2B ten-year license), and has argued 35–50+ Federal Circuit appeals. Reg. No. 27,299 (1974); admitted IL, NY, OH, TX.

A point of unusual significance. The same lead counsel, Adamo, appears on the patent-owner side of the parallel district litigation: he argued for JPMorgan Chase in the S.D.N.Y. patent tutorial that IV later relied on, a transcript of which was filed as Exhibit 1006 in CBM2014-00157 (transcript, where he states "what JP Morgan Chase is considering with respect to one of the five patents"). This overlap is precisely the kind of fact that fed IV's § 315(b) privity/time-bar argument against IBM in IPR2015-01322, discussed in the earlier sections of this case. It is a documented, not speculative, link — but note that the Board rejected IV's privity theory for lack of evidence "beyond speculation." I have not verified whether Kirkland's joint representation of IBM and JPMC was ever the subject of a conflict waiver or objection; nothing in the sources I reviewed addresses that.

Brent Ray, Joel Merkin, Eugene Goryunov — petition counsel. All three appear in the IPR2014-00672/-00673 caption blocks as Kirkland & Ellis attorneys of record. Beyond that appearance, I could not independently verify their individual career histories in this session, so I will not characterize their experience further. (Goryunov is widely associated with PTAB practice and has since moved firms, but I did not confirm that here.)

Alicia L. Shah — back-up counsel. Designated back-up under § 42.8(b)(3) with Reg. No. 68,080; she appears to have been a Kirkland associate at the time. No bio or current affiliation verified.

Counsel for the opposing party (patent owner IV II), for completeness: § 42.8(b)(3) service was directed to Lori Gordon and Omar Amin, Sterne, Kessler, Goldstein & Fox PLLC (Washington, D.C.) — the same Sterne Kessler team that handled IV's '409 portfolio broadly, including designation of counsel at lgordon-PTAB@skgf.com / oamin-PTAB@skgf.com (Paper 8 certificate of service; Paper 12 caption).

Federal Circuit mandamus counsel — unverified. The mandamus petition in In re IBM, Misc. No. 15-119 (Fed. Cir.), was presumably filed by the same Kirkland team, but I was unable to retrieve the docket or brief cover page in this session, so I am not asserting the appellate counsel lineup.

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Sourcing caveats

• The Paper 8 lead/back-up designation (Adamo lead; Shah back-up) and the Paper 12 caption roster (Adamo, Ray, Merkin, Goryunov) are verified against filed documents. Everything about Adamo's background is sourced to Kirkland's own newsroom and public bios.
• Not verified: the contents of Paper 11 (July 28, 2014 Second Amended Mandatory Notices); Patexia's "13 petitioner attorneys" count; individual bios for Ray, Merkin, Goryunov, and Shah; Federal Circuit mandamus counsel.
• Contradiction to flag: the earlier section of this case summary stated IBM's counsel as "Kenneth R. Adamo, Brent Ray, Joel Merkin, Eugene Goryunov (Kirkland & Ellis LLP)." That is consistent with the Paper 12 caption, but it omits Alicia L. Shah, who is the formally designated back-up counsel under 37 C.F.R. § 42.8(b)(3) in Paper 8. The correct statement of record is: Adamo (lead), Shah (back-up), with Ray, Merkin, and Goryunov also appearing on the papers.
• Because the metadata case is a PTAB IPR (denied institution), there is no PACER district-court docket, no complaint, and no appearance list for this case number; any "plaintiff's counsel" for the district-court '409 suits (JPMC/S.D.N.Y., Capital One/D. Md., etc.) is a separate question from the one asked, and I have not conflated them.

I'll research the counsel of record. Note that this "case" is an IPR, so the party aligned as "defendant" is the patent owner (Intellectual Ventures II LLC), which appears as respondent/patent owner. Let me verify with searches.

Good — the initial searches confirm the key names. Let me verify the counsel lineup and gather background on each attorney.

Framing caveat before the roster

There is no "defendant" in the conventional patent-infringement sense in IPR2014-00672, and there is no PACER docket sheet for it. This is a PTAB inter partes review. The only two parties are IBM Corporation (petitioner) and Intellectual Ventures II LLC (patent owner / respondent). Because the caption is styled IBM v. Intellectual Ventures II LLC and IV II is the party aligned against the petitioner, IV II is the party your question maps onto — and, conveniently, it is the party that "won" (institution was denied), so its counsel were the prevailing side. I therefore list IV II's counsel of record, then add IBM's counsel for completeness because both appear on the face of the same papers.

One important limitation: I could not identify counsel for the banks that IV II sued on the '409 patent (Capital One, JPMorgan, BBVA Compass, etc.). Those are the "defendants" in the parallel district-court campaign, but they are not parties to this IPR, and their counsel do not appear on the IPR record. I flag that explicitly rather than guessing.

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Counsel of record for Intellectual Ventures II LLC (patent owner / the party adverse to IBM)

All information below comes from the PTAB filings themselves: the caption of the Decision Denying Institution, Paper 12 (Sept. 22, 2014) and IV II's Updated Mandatory Notices, Paper 15 (Feb. 13, 2015), which is the operative § 42.8 counsel designation.

How the designation evolved: the original designation (and the caption of the Sept. 22, 2014 non-institution decision) showed Gordon + Amin at Sterne Kessler. The Feb. 13, 2015 § 42.8(a)(3) update — filed shortly before the Federal Circuit mandamus petition — substituted Strang for Amin as backup and added Coulman as a second backup, keeping Gordon as lead. No pro hac vice counsel appear on this record; because review was never instituted, there was no trial phase at which additional counsel would customarily be added.

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Petitioner's counsel (for the record — the adversary's side of the same papers)

IBM's designation appears in Petitioner's Amended Mandatory Notices, Paper 8 (May 9, 2014) and on the decision caption:

• Kenneth R. Adamo (Reg. No. 27,299) — Lead counsel, Kirkland & Ellis LLP, 300 North LaSalle St., Chicago, IL 60654; kenneth.adamo@kirkland.com
• Alicia L. Shah (Reg. No. 68,080) — Backup counsel, Kirkland & Ellis LLP, Chicago; alicia.shah@kirkland.com
• Also appearing on the Sept. 22, 2014 decision caption: Brent Ray, Joel Merkin, Eugene Goryunov — Kirkland & Ellis LLP.

(Adamo's Kirkland team is the same group that defended JPMorgan in the parallel § 101 litigation, which is consistent with the privity theory IV later raised against IBM in IPR2015-01322.)

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What I could and could not verify

• Verified from primary documents: every name, registration number, address, and e-mail above is taken from the PTAB papers themselves (Paper 8, Paper 12, Paper 15) as reproduced via the PTAB Trial Blog PDF of the decision and Docket Alarm's OCR of the mandatory notices, plus CourtListener's copy of the same decision caption.
• Background/experience notes are from the attorneys' current firm bios (King & Spalding PDF for Gordon; Latham & Watkins/Legal 500 and Martindale for Strang) and should be read as present-day descriptions, not as the roles they held in 2014.
• Not verified / open items: (i) Omar Amin's departure date and current affiliation; (ii) whether Coulman's designation reflects in-house status formally (inferred from the IV address/domain); (iii) counsel for the district-court defendants in IV's '409 suits (Capital One, JPMorgan/Chase Paymentech, BBVA Compass, Commerce Bancshares, FNBO, SunTrust, U.S. Bancorp, Huntington) — those attorneys are not of record here and I did not identify them; (iv) any IV in-house attorney beyond Coulman (e.g., James Hietala of Intellectual Ventures appeared at a deposition in the sister case IPR2014-00682, not in -00672, so I do not list him as counsel of record here).
• No sealed filings were involved: the IPR2014-00672 record is entirely public, and no counsel has "failed to appear" — the paper trail simply ends with non-institution, rehearing denial (Paper 14, Dec. 23, 2014), and the Federal Circuit mandamus denial.