Intellectual Ventures I & II LLC v. Fifth Third Bancorp et al.

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

Interesting — I've found a potential conflict between the case metadata (patent 6,314,409) and the complaint's actual asserted patents. Let me dig deeper.

Let me check the full docket and the specific IPRs linked to Fifth Third.

Case Overview — Intellectual Ventures I & II LLC v. Fifth Third Bancorp, No. 1:13-cv-00378 (S.D. Ohio)

Parties and posture. Plaintiffs Intellectual Ventures I LLC and Intellectual Ventures II LLC are the licensing arms of Intellectual Ventures Management, LLC (founded 2000, Bellevue, WA), the archetypal large-scale patent aggregator/PAE. IV's own complaint describes a hybrid model — in-house invention, "invention sessions" with a network of ~4,000 inventors, and acquisition of patents from individual inventors, universities and institutions — reporting more than 70,000 assets purchased and over $3 billion in licensing revenue (Compl. ¶¶ 9–12, Dkt. 1, https://storage.courtlistener.com/recap/gov.uscourts.ohsd.[163506](/patent/163506).1.0.pdf). Defendants are Fifth Third Bancorp and Fifth Third Bank, the Cincinnati-headquartered bank holding company and its national bank subsidiary — operating companies, not NPEs. The case was filed June 4, 2013 in the U.S. District Court for the Southern District of Ohio, Western Division (Cincinnati), before Judge Michael R. Barrett (docket: https://www.courtlistener.com/docket/[4363390](/patent/4363390)/intellectual-ventures-i-llc-v-fifth-third-bancorp/). Fifth Third answered on July 19, 2013, denying infringement and asserting counterclaims (Dkt. 26). IV's counsel were Charles J. Faruki and Donald E. Burton (Faruki Ireland & Cox, Cincinnati) with Ian N. Feinberg, M. Elizabeth Day, Marc C. Belloli, David L. Alberti and others of Feinberg Day Alberti & Thompson (Menlo Park, CA); Fifth Third was represented by Glenn V. Whitaker, Eric W. Richardson and Adam C. Sherman (Vorys, Sater, Seymour & Pease, Cincinnati) with Allan J. Sternstein and Michael S. Golenson (Lathrop & Gage, Chicago).

Accused technology and the asserted patents (with an important discrepancy to flag). The complaint targets Fifth Third's consumer and commercial banking IT — specifically its Online Bill Payment system/service ('701 patent, asserted for induced and contributory infringement of claim 5), its online banking web interface/customized pages ('382), its Fifth Third Bank Credit Card system/service ('894 patent, claim 18, including inducement through the www.53.com website), its Commercial Card system/service ('137 patent, claim 12), and its digital-image-related services ('587) (Compl. ¶¶ 21–46, Dkt. 1). One-line sketches: U.S. 7,664,701 — "Masking Private Billing Data by Assigning Another Billing Data to Use in Commerce with Businesses" (iss. Feb. 16, 2010; IV I); U.S. 7,603,382 — "Advanced Internet Interface Providing User Display Access of Customized Webpages" (iss. Oct. 13, 2009; IV I); U.S. 6,182,894 — "Systems and Methods for Authorizing a Transaction Card" (iss. Feb. 6, 2001; IV II); U.S. 8,083,137 — "Administration of Financial Accounts" (iss. Dec. 27, 2011; IV I); U.S. 7,260,587 — "Method for Organizing Digital Images" (iss. Aug. 21, 2007; IV II). Note: your case metadata lists U.S. Patent No. 6,314,409 ("System for Controlling Access and Distribution of Digital Property," filed Oct. 26, 1998, issued Nov. 6, 2001) as the patent at issue. The operative complaint and Fifth Third's answer (which recites the patents-in-suit at ¶ 8) identify the five patents above and neither mentions the '409 patent; the '409 patent was asserted against other banks in IV's parallel 2013 campaign (JPMorgan Chase, SunTrust, BBVA Compass, Commerce, First National Bank of Omaha, U.S. Bancorp, Huntington, Capital One, PNC), per IPR2014-00722 Petitioners' Updated Notice of Related Matters (July 17, 2014) and IV's Dec. 30, 2014 FRAP 28(j) letter in IV II v. JPMorgan Chase, No. 14-1724 (Fed. Cir.). I could not find any source tying the '409 patent to this docket, so I flag the metadata entry as likely an artifact of campaign-level consolidation; the docket record is what I report.

Procedural arc, venue, and why it matters. Venue was unremarkable but strategically significant: Fifth Third is a Cincinnati-based, Ohio-incorporated bank headquartered at 38 Fountain Square Plaza, so IV sued in the defendant's home district (Fifth Third admitted doing business and serving customers in the district under §§ 1391/1400(b), Answer ¶ 6–7, while denying infringement). The case was pleaded in parallel with roughly a dozen other IV bank suits filed in 2013–2014 — the "IV v. banks" wave — and Fifth Third soon moved to stay pending USPTO review of the asserted patents (Dkt. 50, Nov. 2013); IV did not oppose the stay (Notice of Non-Opposition, Dkt. 51, Dec. 5, 2013, https://storage.courtlistener.com/recap/gov.uscourts.ohsd.163506.51.0.pdf). The docket shows a November 20, 2013 status conference and a contemplated Fifth Third motion to dismiss, after which the case was resolved by voluntary dismissal in 2015 (FJC IDB for 1:13-cv-00378 records termination Aug. 25, 2015 and disposition "voluntarily dismissed"; a third-party docket aggregator shows a May 19, 2015 closure date — I could not verify the dismissal order or its terms). The case is notable as a data point in three patterns: (1) PAE monetization of "end-user" financial-services IT, where banks are sued over standard online-banking and card products rather than the underlying technology; (2) coordinated industry defense, in which non-party banks and IBM filed IPR/CBM petitions on the campaign patents in an early example of "crowdsourced" PTAB challenges — for the sibling '409 patent, IPR2014-00672/-673 and IPR2014-00719/-722 were denied on the asserted claims (IPR2014-00673 decision, Sept. 22, 2014) while JPMorgan's CBM2014-00157 led IV to statutorily disclaim claim 12 of the '409 patent (Feb. 9, 2015 conference transcript), producing the appellate ruling Intellectual Ventures II LLC v. JPMorgan Chase & Co., 781 F.3d 1334 (Fed. Cir. 2015) (no appellate jurisdiction over PTAB institution decisions); and (3) the broader district-court trend of stays pending AIA review — compare the parallel stay ruling in IV II v. SunTrust Banks, No. 1:13-cv-02454 (N.D. Ga., Dkt. 175), and the same-patent dismissal/stay practice in IV II v. Commerce Bancshares, No. 2:13-cv-04160 (W.D. Mo.).

Sourcing note: the party identities, patent set, accused products, counsel, and the Dkt. 50/51 stay papers are grounded in the complaint, answer, and CourtListener RECAP documents cited above; the two IPR numbers, PTAB outcomes, and the Federal Circuit citation relate to the '409 patent's campaign record rather than to this docket, and I have not found a reported opinion, settlement figure, or licensing outcome for the Fifth Third case itself.

I'll research this case systematically across court records, opinions, and PTAB proceedings.

Let me pull the full docket and search for the case's disposition and related PTAB proceedings.

Let me dig into the docket sequence and disposition, and check whether the '409 patent was added.

Key developments and outcome — Intellectual Ventures I & II LLC v. Fifth Third Bancorp, No. 1:13-cv-00378-MRB (S.D. Ohio)

Important threshold caveat on the patent list

Two things in the record don't line up with the case metadata, and I want to flag them rather than paper over them:

• Your metadata lists only U.S. Patent No. 6,314,409 (the "'409 patent"). The complaint as docketed (Doc. 1, filed 2013-06-04) asserted five different patents: '701 (7,664,701), '382 (7,603,382), '894 (6,182,894), '137 (8,083,137) and '587 (7,260,587). See the Complaint and Fifth Third's Answer quoting ¶ 8 of the Complaint (Doc. 1; Doc. 26).
• The '409 patent was part of the same Summer-2013 IV bank campaign, but my research places it in the other bank suits, not the Fifth Third complaint. IV itself described the '409 as asserted in eight other actions — BBVA Compass, Commerce Bancshares, First National Bank of Omaha, JPMorgan Chase, SunTrust, U.S. Bancorp, Huntington and Capital One — with Fifth Third conspicuously absent from that list (IV Exhibit 2003 in IPR2014-00722, link).

I could not retrieve any amended complaint adding '409 to this docket, and I could not retrieve the docket entries after mid-December 2013. So either the metadata reflects the campaign-level patent set rather than this particular complaint, or there was a later amendment I can't source. Treat the five-patent list as the well-sourced one for this case and the '409 attribution as unverified here.

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1. Filing and initial pleadings

Counsel of record (from the filings, not inferred): for IV — Charles J. Faruki and Donald E. Burton (Faruki Ireland & Cox, Dayton/Cincinnati), with Ian N. Feinberg, M. Elizabeth Day and Marc C. Belloli (Feinberg Day Alberti & Thompson) admitted pro hac vice, plus later PHV admissions for Nickolas J. Bohl, Vinay K. Malik, Lawrence G. McDonough and Peter G. Mikhail (Oct. 2013). For Fifth Third — Glenn V. Whitaker, Eric W. Richardson and Adam C. Sherman (Vorys, Sater, Seymour & Pease) and Allan J. Sternstein and Michael S. Golenson (Lathrop & Gage). Jeffrey A. Pine and Jonathan Giroux withdrew as defense co-counsel on 2013-11-04 (Doc. 49).

2. Pre-trial motions of substance

• 2013-11-20 — Status conference. Defense counsel stated on the record that Fifth Third would file a motion to dismiss by 2013-12-02, that briefing would follow, and that the scheduling order was stayed. (Minute entry, docket; reported via the CourtListener docket feed.)
• c. 2013-12-02/04 — Defendants' Motion to Stay Pending Review of the Asserted Patents by the USPTO (Doc. 50).
• 2013-12-05 — Plaintiffs' Notice of Non-Opposition (Doc. 51): "Plaintiffs submit this document to state that they do not oppose Defendants' Motion to Stay…" (Doc. 51). The stay motion was therefore effectively uncontested.

What I could not verify: the contents of Doc. 50 (i.e., exactly which USPTO proceedings it invoked). Its title refers generically to "review of the asserted patents by the United States Patent and Trademark Office." Because the AIA post-grant petitions on these patents were not filed until 2014, the December 2013 motion most plausibly rested on earlier ex parte/reexamination activity or on the petitions being prepared; I can't confirm which. No claim-construction, summary-judgment, transfer, or § 101 ruling in this case appears in any source I could reach. The procedural posture of the case essentially froze after December 2013.

3. Claim construction (Markman)

No Markman ruling was ever issued. A hearing was calendared for 2014-08-21 (Doc. 31) but the case was stayed before it occurred. There is no Intellectual Ventures v. Fifth Third claim-construction opinion in the reporters or on CourtListener.

4. Discovery milestones

I found no docketed discovery of strategic significance — no fact-discovery cutoff order, no expert reports, no discovery motions. The case was still at the pleadings/early-scheduling stage when the stay was entered, which is consistent with your existing case summary ("pleadings stage") and with contemporaneous reporting that IV's bank suits were all filed on a template complaint with little case-specific development.

5. Trial, verdict, post-trial motions

None. No trial occurred, no verdict, no JMOL/new-trial motion, and no fee motion. The Nov. 2015 jury setting was vacated by the stay and the case was dismissed long before.

6. Final disposition / present posture

• Disposition: voluntary dismissal. The FJC Integrated Database entry for this docket reports Date Terminated: 2015-08-25, Disposition: "Voluntarily dismissed," and procedural progress of "Pretrial conference held." (CourtListener FJC/IDB record).
• Third-party trackers report the docket as Closed 2015-05-19 (ex parte case page), which I read as the date of the dismissal entry, with the FJC termination date reflecting a later administrative closing. I could not retrieve the dismissal order or stipulation itself, so the precise vehicle (Rule 41(a) stipulation vs. agreed order) and any settlement terms are unverified. No settlement amount has been publicly disclosed in any source I could reach.
• Practical read: the unopposed stay plus voluntary dismissal is consistent with a negotiated resolution of Fifth Third's exposure as part of a broader wind-down of IV's 2013 bank campaign — but that is inference, not a documented finding. There was no merits judgment in this case, so it carries no precedential weight on the patents.

7. Parallel PTAB proceedings and their effect

This is where the case's real significance lies — the asserted patents were shredded in other fora while this case sat stayed.

(a) The '409 patent (relevant to the campaign, per the caveat above):

• 2014-05-01/02 — Compass Bank, Commerce Bancshares and First National Bank of Omaha filed IPR2014-00719 and IPR2014-00722 against claims 1–11, 13–21, 23–27, 29–30, 32–33, 36–39 of the '409.
• 2014-09-22 — PTAB denied IBM's IPR2014-00672 and IPR2014-00673 (per IV's Federal Circuit status letter in IV II v. JPMorgan Chase, No. 14-1724, link).
• 2014-10-24 — Institution granted only as to claim 23, both proceedings consolidated under § 315(d); institution denied on all other challenged claims. (Institution Decision)
• 2015-03-13 — Petitioners sought refund of post-institution fees for the non-instituted claims (link).
• 2015-09-22 — IPR certificate issued: "Claim 23 is disclaimed." IV statutorily disclaimed the sole claim that had been instituted, mooting the trial. (IPR certificate)
• Net effect: no PTAB trial ever reached a final written decision on any '409 claim actually asserted in litigation.

(b) The four patents Fifth Third was actually sued on:

• CBM2014-00028 ('137), -00029 ('701), -00030 ('382), -00033 ('587) — filed by Bank of America and PNC, not Fifth Third. Oral hearing held 2015-03-02 before APJs Giannetti, Jung and Anderson; co-pending CBM petitions on the same patents were also filed by other campaign defendants, which is why the W.D. Mo. court in IV II v. Commerce Bancshares could note that "Defendants have since filed their own petitions for IPR with respect to each of the remaining patents-in-suit" (hearing transcript; Commerce stay order, 2014-06-04). That decision explains the estoppel leverage the banks obtained: defendants who file their own petitions get § 315(e) estoppel, which non-party petitioners do not confer.
• I could not locate a CBM/IPR on the '894 patent in the materials retrieved, so I make no claim either way.

(c) The dispositive parallel merits rulings (which is what really killed these patents):

• 2015-04-28 — S.D.N.Y. (Judge Hellerstein) held the '409 patent invalid under § 101 in IV II v. JPMorgan Chase, No. 13-3777, 2015 WL 1941331.
• 2015-09-04 — D. Md. (Judge Grimm), IV I v. Capital One, No. PWG-14-111, 2015 WL 5201356, found the '081 and '002 patents invalid under § 101 and held IV collaterally estopped as to the '409 and '084 patents based on the JPMorgan ruling. See opinion text.
• 2015 — Federal Circuit, Intellectual Ventures I LLC v. Capital One Fin. Corp., 792 F.3d 1368 (Fed. Cir. 2015), relied on by the district courts in the follow-on § 101 analysis.
• PTAB CBM outcomes on the '701/'382/'137/'587 claims were subsequently reviewed by the Federal Circuit in the Erie Indemnity line of appeals. I did not have search budget left to confirm the affirmance/reversal breakdown by patent and claim, so I am not stating one.

8. What remains unverified (flagged rather than guessed)

1. Whether an amended complaint ever added the '409 patent to this docket.
2. The text and legal basis of Doc. 50 (the stay motion) and the date/vehicle of the dismissal.
3. The docket entries between 2013-12-05 and the 2015 dismissal.
4. Any Fifth Third–filed IPR/CBM petitions on the four asserted patents.
5. Whether any consideration changed hands; no public settlement figure exists in the sources I retrieved.

Bottom line: IV v. Fifth Third is a stay-and-fold case. Filed 2013-06-04 with five asserted patents and a jury trial set for November 2015, it stalled at the pleadings stage behind a December 2013 USPTO-review stay that IV did not oppose, and it terminated by voluntary dismissal in mid-2015 (dismissal entry reported 2015-05-19; FJC termination date 2015-08-25) — with no Markman ruling, no discovery of consequence, no trial, no judgment, and no fee award. Its analytical significance is entirely derivative: the patents it asserted were being invalidated or cancelled in the PTAB CBM/IPR proceedings and in the JPMorgan and Capital One district court cases during the exact window in which this case was stayed and then dismissed.

I'll research the docket and counsel appearances for this case.

I have the core appearances. Let me verify affiliations for the pro hac vice attorneys and check for any later-filed appearances.

Plaintiff-side counsel of record — Intellectual Ventures I, LLC v. Fifth Third Bancorp, No. 1:13-cv-00378-MRB (S.D. Ohio)

How I verified this: the plaintiff's signature blocks on the complaint and on the filed papers (e.g., Doc. 1, filed 6/4/2013; Doc. 26, Answer, 7/19/2013; Doc. 51, Plaintiffs' Notice of Non-Opposition to Defendants' Motion to Stay, 12/5/2013), plus the seven pro hac vice motions filed 6/7/2013 (Docs. 6–12) and Judge Barrett's orders granting them (entered 6/13/2013). No sealing issue affects these — all appearances are on the public docket, and the Justia/CourtListener docket confirms nine attorneys listed for the two IV plaintiffs.

A. Local counsel — Faruki Ireland & Cox P.L.L. (Cincinnati / Dayton, Ohio)

B. Lead / out-of-town counsel — Feinberg Day Alberti & Thompson LLP (1600 El Camino Real, Menlo Park, CA)

All seven were admitted pro hac vice on 6/13/2013 (Docs. 6–12, granted by Judge Barrett; motions filed 6/7/2013). No formal "lead counsel" designation appears on the docket, so the lead/of-counsel split below is inferred from signature-block ordering and their public roles in IV's other suits.

C. Things to flag explicitly

• No IV in-house counsel appears on this docket. Unlike some IV matters, no Intellectual Ventures in-house attorney (e.g., Russell Rigby, who appears for IV in PTAB proceedings) entered an appearance in 1:13-cv-00378.
• No seal-related gap. The plaintiff appearances were all made in the public record in June 2013; the identification above is not based on sealed filings.
• Post-2013 changes. The case was stayed pending PTAB/CBM review and then terminated (voluntarily dismissed) in 2015 — FJC data lists a termination date of 8/25/2015, so the "pleadings stage" characterization in the case metadata reflects the case's early posture, not its final disposition. None of the attorneys above filed a withdrawal in the interim window I could verify, but I'd confirm against the final docket entries before characterizing them as "current" counsel.
• Patent-list discrepancy. The case metadata lists U.S. Patent 6,314,409 as the patent at issue, but the complaint and answer in this docket identify five different patents ('701, '382, '894, '137, '587 — Doc. 26 ¶ 8). The '409 patent appears in IV's parallel New York action against JPMorgan Chase (13-cv-3777) and in CBM2014-00157. I've treated the metadata as authoritative per instructions, but the plaintiff team is the same Feinberg Day/Faruki group across those sister cases, so the counsel answer is unaffected.

I'll research this case's docket and counsel of record now.

I have the initial docket. Now let me dig into the defense-side signature blocks and pro hac vice motions.

Now let me verify the pro hac vice admissions and get details on the defense firms.

Defense counsel of record — Intellectual Ventures I & II LLC v. Fifth Third Bancorp, No. 1:13-cv-00378-MRB (S.D. Ohio)

Both defendants (Fifth Third Bancorp and Fifth Third Bank) were represented by the same two-firm team: Vorys, Sater, Seymour and Pease LLP (Cincinnati) as local/trial counsel and Lathrop & Gage LLP (Chicago) as lead patent counsel. This roster is confirmed by two primary documents: the December 5, 2013 certificate of service in Doc. 51 and the November 20, 2013 status-conference minute entry, which records "Glenn Whitaker, Allan Sternstein and Michael Golenson appeared for Defendant."

Attorneys

1. Glenn V. Whitaker — Vorys, Sater, Seymour and Pease LLP — Cincinnati, OH (local/trial counsel)

• Great American Tower, 301 E. Fourth St., Suite 3500, Cincinnati, OH 45202 (per Martindale and the Doc. 51 certificate of service).
• First defense-side appearance: he filed the parties' stipulated answer extension on June 25, 2013 (docket entry 22, docketed as a stipulation after a June 27, 2013 notice of correction). He also appeared for defendants at the Nov. 20, 2013 status conference.
• Note: A long-time Cincinnati trial lawyer (former DOJ Special Litigation Counsel; Fellow, American College of Trial Lawyers; adjunct at Univ. of Cincinnati College of Law), his reported practice emphasis is complex commercial litigation, False Claims Act/qui tam and white-collar defense rather than patent prosecution — consistent with a local/trial-counsel role alongside Lathrop & Gage.

2. Allan J. Sternstein — Lathrop & Gage LLP — Chicago, IL (lead patent counsel)

• 155 N. Wacker Dr., Suite 3050, Chicago, IL 60606 (named as counsel for Defendants on the Doc. 51 certificate of service). Moved for pro hac vice admission in July 2013 together with Pine and Giroux; appeared for defendants at the Nov. 20, 2013 status conference.
• Registered patent attorney (USPTO Reg. No. 27,396) with a deep patent-litigation practice. His posted CV lists prior patent work for Fifth Third Bank (E.D. Tex., ~2012) and Fifth Third Bancorp (N.D. Ill.), as well as matters such as EMI v. Ohio Nuclear and New Venture Gear — i.e., he had an existing Fifth Third relationship when this case was filed (CV PDF).
• Caution: Lathrop & Gage merged with Gray Plant Mooty in 2020 to form Lathrop GPM; I could not confirm through primary sources his exact current title/affiliation, so treat his present-day firm name as unverified.

3. Michael S. Golenson — Lathrop & Gage LLP — Chicago, IL (defense team / patent counsel)

• Pro hac vice motion filed Oct. 29, 2013 (entry 46), granted Nov. 1, 2013 (entry 47, Judge Barrett); listed as counsel for Defendants on the Doc. 51 certificate of service; appeared at the Nov. 20, 2013 status conference.

4. Eric Wade Richardson — Vorys, Sater, Seymour and Pease LLP — Cincinnati, OH (local counsel)

• Notice of Appearance for both defendants filed July 16, 2013 (docket entry shown in the CourtListener docket for that date).

5. Adam C. Sherman — Vorys, Sater, Seymour and Pease LLP — Cincinnati, OH (local counsel)

• Notice of Appearance for both defendants filed July 16, 2013; he filed the defendants' pro hac vice motion(s) in July 2013 and the November 4, 2013 Notice of Withdrawal of Co-Counsel (entry 49); listed on the Doc. 51 certificate of service.

6. Jeffrey A. Pine — Lathrop & Gage LLP — Chicago, IL (former co-counsel; withdrew)

• Named in the July 2013 pro hac vice motion but withdrew as co-counsel on Nov. 4, 2013 (entry 49).

7. Jonathan (E.) Giroux — Lathrop & Gage LLP (later shown at Dykema Gossett PLLC, Chicago) — former co-counsel; withdrew

• Also named in the July 2013 pro hac vice motion and withdrawn Nov. 4, 2013 (entry 49). A later PTAB filing lists a "Jonathan E. Giroux" as pro hac vice at Dykema Gossett PLLC—Chicago, with a Lathrop & Gage-era email, suggesting he moved firms after this case; treat the Dykema affiliation as unconfirmed for this docket.

Notes / caveats

• No in-house attorney for Fifth Third appears as counsel of record in the docket materials reviewed. If any in-house lawyer was involved, they did not enter an appearance in this case.
• No sealed-counsel issue identified: the defense appearances and pro hac vice orders are on the public docket. I did not find any sealed attorney-appearance filings.
• I could not retrieve the specific order granting Sternstein's/Pine's/Giroux's pro hac vice motions in the searches run; his participation is confirmed instead by the Nov. 20, 2013 minute entry and the Dec. 5, 2013 certificate of service. Flagging that as a sourcing gap.
• Patents-at-issue discrepancy: The prompt metadata lists U.S. Patent No. 6,314,409, but the complaint and Fifth Third's answer/counterclaims (Doc. 26) identify the patents-in-suit as the '701, '382, '894, '137 and '587 patents. The '409 patent does not appear in the pleadings I reviewed; you may want to reconcile the metadata.
• Procedural posture: Defendants answered and counterclaimed for non-infringement/invalidity on July 19, 2013 (Doc. 26) and moved in December 2013 to stay pending USPTO review of the asserted patents (Doc. 50), which plaintiffs did not oppose (Doc. 51). Per the FJC IDB record, the case was terminated Aug. 25, 2015 (voluntarily dismissed); a separate aggregator lists closure on May 19, 2015. I did not verify the dismissal filing itself in this pass.