Litigation

Intellectual Ventures I & II LLC v. PNC Financial Services Group, Inc. et al.

counterclaimed

2:13-cv-00740

Filed
2013-05-29

Patents at issue (1)

Summary

Intellectual Ventures I & II sued PNC Financial Services Group and PNC Bank; PNC counterclaimed.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

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

Let me dig into the docket history and the PTAB proceedings on the '409 patent.

Case Overview & Background — Intellectual Ventures I & II LLC v. PNC Financial Services Group, Inc., No. 2:13-cv-00740-AJS (W.D. Pa., Pittsburgh Div., Judge Arthur J. Schwab)

The parties. The plaintiffs are two related patent-holding entities in the Intellectual Ventures family, Intellectual Ventures I LLC and Intellectual Ventures II LLC (Bellevue, WA), affiliates of Intellectual Ventures Management LLC — the patent aggregation firm founded in 2000 by former Microsoft CTO Nathan Myhrvold. IV is a classic non-practicing entity/PAE: by 2013 it publicly claimed to have acquired more than 70,000 patents and to have generated over $3 billion in licensing revenue, and it does not make or sell products (TribLive, June 3, 2013; GeekWire, May 29, 2013). Ownership is split: IV II holds the patents asserted in this family, while IV I holds at least one (2014 complaint, RPX Insight doc. 10800855). The defendants are The PNC Financial Services Group, Inc. and PNC Bank, N.A., the Pittsburgh-based bank holding company and its national bank subsidiary (principal place of business at One PNC Plaza, 249 Fifth Avenue, Pittsburgh); the later-filed companion suit added PNC Merchant Services Company, L.P. (complaint ¶¶ 4–6). PNC answered in July 2013 with counterclaims for declaratory judgments of invalidity and non-infringement — the source of the docket's "counterclaimed" status (PNC 10-K disclosure).

Accused technology and patents. IV's theory targeted PNC's online and electronic banking channel rather than any device: the pnc.com and pncsites.com online banking and bill-pay platforms, PNC's Wealth Insight wealth-management system, its Visa personal/business check-card programs, merchant-side payment-card validation, PCI Data Security Standard encryption of cardholder data, ACH processing under the NACHA Operating Rules, and PNC's Pogo person-to-person/mobile payments service — as well as PNC's use of IBM System Z/zEnterprise mainframes (TribLive; 2014 complaint ¶¶ 21–73). Notably, much of the infringement theory rests on the bank's compliance with industry standards and on inducement of PNC's own customers (§ 271(b) theories premised on instructions posted on PNC's website), not on a discrete infringing product. The single patent flagged for this case in the case metadata is U.S. Patent No. 6,314,409, "System for Controlling Access and Distribution of Digital Property" (inventors Paul B. Schneck and Marshall D. Abrams; filed Oct. 26, 1998; issued Nov. 6, 2001; assigned to IV II) — claim 1 is essentially a two-step scheme of protecting portions of data and then openly distributing the protected portions, with access governed by rules/usage controls, which IV mapped onto PCI-DSS-encrypted card, ACH and Pogo payment flows. The litigation family also asserted a broader set: the '574 patent (5,745,574, "Security Infrastructure for Electronic Transactions" — session encryption/key management, again tied to PCI DSS); the '666 patent (7,634,666 — asserted at least at claim 4 against PNC's IBM System Z mainframe usage); the '002 patent (6,546,002, "System and Method for Implementing an Intelligent and Mobile Menu-Interface Agent"); the '298 patent (7,757,298, "Method and Apparatus for Identifying and Characterizing Errant Electronic Files"); and the '382 patent (7,603,382), which the PTAB record confirms was asserted in this very docket (CBM2014-00030 Final Written Decision, Apr. 24, 2015).

Procedural posture, venue and why it matters. Filed May 29, 2013 in the Western District of Pennsylvania, Pittsburgh Division, before Judge Schwab (2:13-cv-00740-AJS) (Justia docket). Venue was essentially self-executing: PNC Bank is headquartered in Pittsburgh, so the district was the defendant's home forum — a deliberate contrast to the many-bank campaign IV launched the same day (First National Bank of Omaha in D. Neb.; later BBVA Compass, Commerce, JPMorgan Chase, SunTrust, U.S. Bancorp, Huntington and Capital One), producing ten-plus parallel suits on the '409 alone spread across a dozen districts. In November 2013 PNC filed CBM/post-grant review petitions at the PTO attacking all five asserted patents, and on December 6, 2013 the district court dismissed IV's claims as to two of the patents and stayed the entire case pending the PTO's rulings and any appeals — IV's own PTAB filings describe this docket as "terminated December 6, 2013" (IPR2015-01322, Paper 4 (June 22, 2015); PNC 10-K). IV refiled against PNC, PNC Bank and PNC Merchant Services on June 25, 2014 in 2:14-cv-00832, which was consolidated into this docket in August 2014 (PTAB petition record). The case is notable on several axes: it was IV's first sustained foray into banking, an industry it had largely avoided, and it converted standard-compliance (PCI DSS, NACHA) into an infringement theory; it triggered unusually coordinated industry defense — Bank of America and PNC petitioned jointly in CBM2014-00028/29/30/33 (WilmerHale for petitioners), JPMorgan filed CBM2014-00157, Compass/Commerce/FNBO filed IPR2014-00719/-00722, and IBM — whose mainframes were named in IV's '666 theory — filed IPR2014-00672/-00673 and IPR2015-01322 against the '409 (PTAB institution decisions; Unified Patents PTAB portal, IPR2015-01322); and the resulting PTAB rulings were consequential in the Alice era — the Board invalidated an IV web/business-method patent asserted against BofA and PNC in April 2015 (Law360, Apr. 24, 2015), while IV's statutory disclaimer of claim 12 of the '409 was used to try to defeat CBM eligibility (CBM2014-00157 conference call, Feb. 9, 2015). The parallel JPMorgan litigation also produced the Federal Circuit's early CBM-scope decision, Intellectual Ventures II LLC v. JPMorgan Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015), which shaped how other IV bank cases (including any revived PNC proceedings) could be managed.

Sourcing gaps to flag. (1) The 2013 complaint's precise five-patent set is not fully documented in the sources I could retrieve; the '382 is confirmed by the CBM2014-00030 record, and the 2014 consolidated complaint asserted the '666, '574, '002, '298 and '409, but I did not verify the 2013 list item-by-item. (2) I could not confirm the fifth, PNC-only CBM (CBM2014-00032 appears in the record as a PNC matter) or which patent it covered. (3) District-court counsel of record for either side, claim-construction rulings in this docket, and the ultimate disposition (settlement vs. dismissal) are not verified in the material I retrieved — the last confirmed litigation events are the December 2013 stay, the August 2014 consolidation, and the 2015–2016 PTAB outcomes, after which activity appears to have gone quiet; any terminal settlement figure should be treated as unconfirmed absent a PACER pull.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case systematically, starting with the docket and key rulings.

Let me dig into the docket timeline and outcomes.

Bottom line up front

This case (the "IV 1" action, 2:13-cv-00740, W.D. Pa., Judge Arthur J. Schwab) never reached trial, Markman, or any merits judgment in the district court. It was filed in May 2013, counterclaimed by PNC in July 2013, then effectively taken off the district court's merits track in December 2013 by a stay pending PNC's covered-business-method (CBM) petitions at the PTAB. The PTAB invalidated the patents still at issue (April/May 2015, §101/Alice), and IV dismissed its remaining claims with prejudice in October/November 2015. A second, related suit (the "IV 2" action, 2:14-cv-00832) was filed in June 2014, consolidated into IV 1 in August 2014, and stayed; as of PNC's most recent litigation disclosure I located (FY2017 Form 10-K, filed 2018-02), that consolidated case remained stayed pending resolution of parallel proceedings against other defendants.

One caveat on the metadata: the prompt lists the patent at issue as 6,314,409. The '409 patent ("System for controlling access and distribution of digital property," issued 2001-11-06) does appear in the IV 2 complaint and generated parallel PTAB proceedings, but the dockets and complaints show the litigation as a whole asserted five patents per case, not one. I've flagged everywhere the record is ambiguous.


1. Filing and initial pleadings

2013-05-29 — IV 1 complaint. Intellectual Ventures I LLC and Intellectual Ventures II LLC filed Case No. 2:13-cv-00740 in the Western District of Pennsylvania (Pittsburgh), assigned to Judge Arthur J. Schwab; jury demand by both sides. IV I and IV II asserted five patents against PNC Financial Services Group, Inc. and PNC Bank, N.A. over PNC's online-banking and electronic-services systems (PNC's FY2017 10-K patent-litigation note; Docketbird docket entry).

  • Patents confirmed as asserted in IV 1: U.S. 7,603,382 (the '382 patent — confirmed by the PTAB's CBM2014-00030 Final Written Decision, which lists IV I v. PNC, No. 2:13-cv-00740 as a related proceeding) and U.S. 7,757,298 (the '298 patent — confirmed by the related-proceeding identification in CBM2014-00032, Paper 13).
  • PNC's 10-K describes the asserted patents as five, and describes PNC filing CBM petitions against "all five."
  • The exact identity of all five IV 1 patents is one of the things I could not fully pin down from free sources (see §8). The four CBMs the PTAB instituted (May 2014) and the one it declined to institute (the '298) are documented; mapping them one-to-one onto the five IV 1 patents is not.

2013-07 — PNC's answer and counterclaims. PNC answered, denied liability, and counterclaimed for declaratory judgments that the asserted patents are invalid and not infringed (PNC 10-K). This is the source of the "counterclaimed" status in the case metadata. I found no docket-level detail (entry numbers) for the answer/counterclaim in the free sources I reviewed.

2014-06-25 — IV 2 complaint (2:14-cv-00832). IV I and IV II filed a second action against PNC Financial Services Group, PNC Bank, N.A., and PNC Merchant Services Company, L.P., again in W.D. Pa. before Judge Schwab. The complaint I retrieved (reproduced at RPX Insight, doc. 10800855) asserts five patents:

  • U.S. 7,634,666 (the '666 patent), asserted by IV II on systems using IBM System Z / zEnterprise mainframes (claim 4); infringement notice letter dated 2014-06-23;
  • U.S. 5,745,574 (the '574 patent), "Security Infrastructure for Electronic Transactions," asserted by IV II (claim 18, PCI DSS encryption);
  • U.S. 7,?,002 (the '002 patent), "System and method for implementing an intelligent and mobile menu-interface agent," issued 2003-04-08 (IV II);
  • U.S. 7,757,298 (the '298 patent) — IV I — the patent dismissed in IV 1 and not subjected to PTAB review (see below);
  • U.S. 6,314,409 (the '409 patent), "System for controlling access and distribution of digital property," issued 2001-11-06 (IV II) — the patent flagged in your case metadata.

2014-07-02 to 2014-09-08 — service and responsive pleadings in IV 2. PNC entities were served 2014-07-02; a stipulation (filed 2014-07-11) extended the answer deadline to 2014-09-08. Pro hac vice admissions for IV's counsel (Ian N. Feinberg; Vinay Kumar Malik; Peter Mikhail; Clayton W. Thompson) were entered 2014-07-01 through 2014-07-09; NOC appearances (Thomas L. Allen; Justin J. Kontul) for PNC entities on 2014-07-11 (plainsite/dockets.justia entries).


2. Pre-trial motions of substance

2013-11 — PNC's CBM petitions (the pivotal "motion" equivalent). Rather than litigating the merits, PNC went to the PTAB in November 2013, filing covered-business-method review petitions against all five IV 1 patents (PNC 10-K). PTAB dockets I could confirm include CBM2014-00028, CBM2014-00029, CBM2014-00030 (each captioned Bank of America, N.A., PNC Financial Services Group, Inc., and PNC Bank, N.A. v. Intellectual Ventures I LLC) and CBM2014-00032 (PNC alone, on the '298 patent). I did not verify the fifth PNC petition's number.

2013-12-06 — narrowing plus stay. PNC's disclosure: "In December 2013, the court dismissed the plaintiffs' claims as to two of these patents and entered a stay of the lawsuit pending the PTO's consideration of PNC's review petitions, including any appeals from decisions of the PTO." This is the substantive turning point: no Markman, no summary judgment practice, and no trial ever occurred in the district court.

  • Note a discrepancy worth flagging: IV's own PTAB mandatory notice in IPR2015-01322 states that No. 2:13-cv-00740 was "terminated December 6, 2013." That is consistent with the December 2013 order being entered as the effective closure of the merits track (administrative termination/stay), even though the docket number later served as the lead consolidated case. I could not confirm from primary sources whether a formal dismissal order versus a stay/administrative closure was entered on that date.

2014-08-12 — consolidation and stay in IV 2. Order by Judge Schwab granting the motion to consolidate IV 2 with IV 1 and to stay the consolidated case pending the PTO review petitions (and any appeals) — dockets.justia entry for 2:14-cv-00832, Filing 37. (Note the somewhat unusual sequencing: IV 2 was consolidated into the older IV 1 docket, and the parties then continued filing in that lead case.)

2015-10 — IV's motion to deconsolidate and lift the stay — DENIED. IV moved to deconsolidate IV 1 and IV 2 and lift the stay; the court denied the motion in October 2015, continuing the stay until certain court proceedings against other defendants involving the same patents were resolved (PNC 10-K).

No motions to dismiss, transfer, or for summary judgment of substance were litigated to decision on the merits in this case that I could find. The §101 challenges were prosecuted at the PTAB, not via Rule 12(b)(6) in W.D. Pa. (contrast Content Extraction & Transmission LLC v. Wells Fargo/PNC, D.N.J., where PNC won a §101 Rule 12(b)(6) dismissal — a different case and different patents, though it also involved PNC and shows PNC's parallel litigation strategy.)


3. Claim construction

No district-court Markman proceeding occurred in either IV 1 or IV 2 — the December 2013/October 2015 stays froze the case before claim construction.

Claim construction did happen in the parallel CBM proceedings under the broadest reasonable interpretation standard:

  • In CBM2014-00030 (the '382 patent), the Board construed "interactive interface" as "an Internet interface that provides a medium for information users to communicate with information providers," and construed the "display depicting portions of the web site visited by the user as a function of web site navigation data" limitation as "data representing portions of the web site visited by the user and display of same" (Institution Decision at 7, adhered to in the Final Written Decision, 2015-04-24).
  • IV's request for rehearing argued the Board misapprehended expert testimony; rehearing was denied 2015-06-25 (CBM2014-00030, Paper 34).

4. Discovery milestones with strategic significance

I found no documented discovery milestones of strategic significance — because the case was stayed within roughly six months of filing (IV 1) and within seven weeks of filing (IV 2, consolidated and stayed 2014-08-12). The only pre-stay activity visible in the docket excerpts is pro hac vice admissions, notices of appearance, a service return, and an answer-deadline stipulation. Any discovery that occurred was not reported in the sources I reviewed, and no dispositive motion or expert-discovery event is documented.

The strategically significant "discovery" work in this dispute actually happened at the PTAB (petitions, preliminary responses, expert declarations such as the Peter Martin declaration discussed in the '382 CBM).


5. Trial events, verdict, and post-trial motions

None. There was no trial, no verdict, no damages award, no injunction, and no JMOL/new-trial/fee motion in this case. The litigation was resolved entirely by (a) PTAB invalidation of the asserted patents and (b) voluntary dismissal of IV's claims. This distinguishes IV v. PNC (W.D. Pa.) sharply from IV's other bank campaigns and from the later PNC/USAA litigation in Texas (where the Federal Circuit in June 2025 reversed ~$223M in verdicts on §101 grounds — a different case and different patents, per WilmerHale's 2025-07-14 announcement).


6. Parallel PTAB proceedings and their effect on the litigation

Proceeding Patent Petitioners Key ruling Effect on W.D. Pa. case
CBM2014-00030 7,603,382 ('382) Bank of America + PNC Financial + PNC Bank Final Written Decision 2015-04-24: all claims 1–23 unpatentable under 35 U.S.C. §101 / Alice (abstract idea of tailoring web pages to a user); rehearing denied 2015-06-25 Removed the '382 from IV 1 on the merits
CBM2014-00032 7,757,298 ('298) PNC only Institution DENIED 2014-05-22 (Paper 13, Judges Giannetti, Jung, Anderson) — first-of-its-kind holding that merely asserting a patent against a bank does not make it a covered business method patent The '298 was the one IV 1 patent not subject to PTAB review; claims on it had already been dismissed in December 2013, and IV re-asserted it in IV 2
CBM2014-00028 / -00029 / -00033 8,083,137; 7,664,701; 7,260,587 BofA and/or PNC (as captioned) Oral hearing held jointly 2015-03-02 Part of the same coordinated bank campaign; these were the other instituted reviews referenced in PNC's 10-K
IPR2014-00672 and IPR2015-01322 6,314,409 ('409) petitioner not identified in the sources I reviewed IV II filed mandatory/updated mandatory notices (2015-02-13; 2015-06-22) tying both proceedings to 2:14-cv-00832 Explains why the '409 is the patent flagged in the case metadata; contributed to the stay of IV 2
Unnamed PTAB proceeding one IV 2 patent brought by another defendant Decision upholding patentability April 2015; affirmed by the Federal Circuit February 2016 One IV 2 patent survived PTAB; stayed case awaited the appeal

Net effect of the PTAB proceedings:

  • April/May 2015: "the PTO invalidated all claims with respect to the patents that were still at issue in IV 1" (two separate Final Written Decisions, April and May 2015) (PNC 10-K).
  • The Federal Circuit affirmed the invalidity of the two patents at issue in both IV 1 and the Federal Circuit appeal (PNC 10-K). I was unable to retrieve the specific Federal Circuit opinion citation for the appeals from CBM2014-00030 and its companion in this session; do not treat a citation here as verified.
  • October 2015: IV voluntarily dismissed without prejudice its claims on three of the five IV 2 patents, after adverse decisions "in the PTO and several U.S. District Courts on three of the remaining patents," leaving two patents at issue in IV 2 (PNC 10-K).

7. Final disposition / present posture

  • IV 1 (2:13-cv-00740): In October/November 2015, after the PTAB invalidations, IV moved to dismiss with prejudice its claims on the patents not previously dismissed, and the court granted that dismissal. Combined with the December 2013 dismissal of claims on the other patents, all patents asserted in IV 1 were either dismissed or invalidated, and IV 1 has no live merits claims.
  • IV 2 (2:14-cv-00832, consolidated into IV 1): Two patents remained asserted after October 2015; IV's motion to deconsolidate and lift the stay was denied (October 2015), and the case remained stayed pending resolution of related proceedings against other defendants involving the same patents.
  • Latest posture I could verify: PNC's Form 10-K for FY2017 (filed 2018-02) still discloses the consolidated patent litigation as pending and stayed. I could not verify a later dismissal, judgment, or appeal terminating the consolidated case; the Docketbird status flag ("counterclaimed") is a docket descriptor, not an outcome.
  • No appeal of the district court case (as opposed to the appeals of the PTAB decisions) is documented — there was nothing final in the district court to appeal.

Key counsel appearing in the record:

  • PNC / PNC Bank (PTAB): Donald R. Steinberg, Gregory H. Lantier, Monica Grewal (Wilmer Cutler Pickering Hale & Dorr) — appearances at the 2015-03-02 CBM oral hearing; Mark Fleming's WilmerHale team is the firm PNC credits for later §101 wins.
  • PNC (district court): Thomas L. Allen and Justin J. Kontul (NOC appearances, 2014-07-11).
  • Intellectual Ventures: Ian N. Feinberg, Vinay Kumar Malik, Peter Mikhail, Clayton W. Thompson, Samantha Quinn (district court pro hac vice/NOC entries); Henry A. Petri, Jr. and James Murphy (Novak Druce Connolly Bove & Quigg) and John R. King and Ted M. Cannon (Knobbe, Martens, Olson & Bear) at the PTAB.

8. Sourcing, and what I could not verify

Well sourced:

  • Case caption/number/court/judge/filing date: Docketbird docket page for 2:13-cv-00740 (filed 2013-05-29; Judge Arthur J. Schwab; both sides demanded a jury).
  • IV 2 filing date (2014-06-25), parties, and the 2014-08-12 Order granting consolidation and stay (Filing 37): dockets.justia.com docket for 2:14-cv-00832.
  • Complaint allegations and patent list (the '666, '574, '002, '298, '409 patents) in the 2014 complaint: RPX Insight litigation document 10800855.
  • Litigation narrative (answer/counterclaims, Nov. 2013 CBM petitions, Dec. 2013 dismissal-plus-stay, May 2014 institution on four of five patents, April/May 2015 invalidation, Oct. 2015 dismissals, denial of deconsolidation/lift-stay, Feb. 2016 Federal Circuit affirmance of one patent's validity): PNC Financial Services Group Form 10-K patent-litigation note (FY2017, filed 2018-02), reproduced at investor.pnc.com and capedge.com; corroborated by PNC's Q3 2015 Form 10-Q.
  • CBM2014-00030 Final Written Decision dated 2015-04-24 and rehearing denied 2015-06-25: PTAB decisions reproduced at ptabtrialblog.com and docketalarm.com; summarised at Law360 (2015-04-24) and Lexology (2015-05-22).
  • CBM2014-00032 institution denial, 2014-05-22 (Paper 13), holding that asserting a patent against a bank does not by itself make it a CBM patent: National Law Review and Lexology (2014-06-13).
  • CBM2014-00028/-00029/-00030/-00033 joint oral hearing 2015-03-02: PTAB hearing transcript (docketalarm).
  • IPR2015-01322 mandatory notices (2015-06-22) and IPR2014-00672 updated mandatory notices (2015-02-13) naming this litigation as related: PTAB filings via docketalarm/PTACTS.

Not verified / open items:

  1. The complete five-patent list for IV 1 (2013). Only the '382 and '298 are directly confirmed as IV 1 patents.
  2. Whether 2013-12-06 was a stay/administrative closure or a formal dismissal/termination, and the entry numbers for the answer, counterclaims, and the December 2013 order. Free dockets for this case are incomplete.
  3. The Federal Circuit opinion citations for the appeals from the CBM decisions invalidating the IV 1 patents, and the February 2016 affirmance of the IV 2 patent.
  4. The petitioner identities in IPR2014-00672 and IPR2015-01322 (the '409 patent IPRs) — not established by the documents I retrieved.
  5. Whether the consolidated case was ever formally closed after the FY2017 10-K disclosure, and whether any license/settlement ended it.
  6. Identity of the IV 2 patent that survived PTAB review (affirmed Feb. 2016) and of the specific "several U.S. District Courts" decisions that prompted IV's October 2015 dismissals of three IV 2 patents (the parallel W.D. Pa. litigation against Erie Indemnity and other banks involving IV's '002 and '298 patents would be the leading candidate, but I did not verify that link in this session).

Strategic takeaway: This case is a canonical example of the 2013–2016 CBM/§101 era. PNC (with Bank of America) used AIA post-grant review to convert a five-patent, multi-front district court campaign into a stay, then obtained Alice-based invalidation of the surviving claims at the Board rather than in front of a jury — and PNC's own litigation disclosures confirm the district court case never produced a merits ruling, damages number, or judgment.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the counsel of record for the plaintiffs in this case.

Let me pull the full docket and counsel listings.

Let me dig into the specific docket entries and the complaint's signature block.

Plaintiff-Side Counsel of Record — IV I & II v. PNC (W.D. Pa. 2:13-cv-00740)

Sourcing note up front. I could not query PACER directly in this session; the names below are drawn from the third-party docket mirrors (Justia/PlainSite) and PTAB papers, and from PHV filings and notices of appearance whose party attribution is stated verbatim in those mirrors. Two caveats you should carry into any filing:

  1. Docket-number ambiguity. The W.D. Pa. has two IV–PNC suits with the same caption: 2:13-cv-00740 (filed 5/29/2013, Judge Arthur J. Schwab) and 2:14-cv-00832 (filed 6/25/2014, adding PNC Merchant Services Co., L.P.). The plaintiff-side team is essentially identical in both, so the roster below is reliable even where I cannot disambiguate which docket a given pro hac vice motion sits on.
  2. Case-history discrepancy worth flagging. IPR2015-01322's mandatory notices describe No. 2:13-cv-00740 as "filed May 29, 2013, terminated December 6, 2013," which is inconsistent with the case metadata you've given me (status "counterclaimed") and with the filing of the 2014 complaint asserting the '409 patent. It appears the '409 patent was actually asserted in the June 2014 complaint (which pleads the '666, '574, '002 and '409 patents), and that the 2013 suit may have been dismissed/refiled before the cases were consolidated and stayed (Judge Schwab's 8/12/2014 order granting the motion to consolidate and to stay). Treat this as unresolved without a PACER pull.

Roster (plaintiff, Intellectual Ventures I LLC & Intellectual Ventures II LLC)

Attorney Role (inferred) Firm / office Note
Ian N. Feinberg Lead trial counsel (no formal "lead counsel" designation appears on the docket) Feinberg Day Alberti & Thompson LLP — Silicon Valley (Palo Alto), CA Long-standing outside patent-trial counsel for Intellectual Ventures; appeared PHV (motion filed with the IV plaintiffs).
Elizabeth Day Trial team / partner Feinberg Day Alberti & Thompson LLP — Silicon Valley, CA PHV motion granted on behalf of IV I & II (docket order at [7] on the mirrored docket); patent-litigation boutique partner.
David Alberti Trial team / partner Feinberg Day Alberti & Thompson LLP — Silicon Valley, CA PHV granted for the IV plaintiffs (order at [9]).
Clayton W. Thompson II Trial team / partner Feinberg Day Alberti & Thompson LLP — Silicon Valley, CA PHV motion filed by IV I & II; also appeared for IV in IV v. Capital One (E.D. Va. 1:13-cv-00740), per the Justia docket for that case.
Marc Belloli Co-counsel / partner Russ August & Kabat LLP — Los Angeles, CA (12424 Wilshire Blvd.) PHV granted for the IV plaintiffs (order at [8]); RAK is one of IV's principal plaintiff-side litigation firms.
Sal Lim Co-counsel / partner Russ August & Kabat LLP — Los Angeles, CA PHV granted for the IV plaintiffs (order at [10]).
Vinay K. Malik Of counsel / supporting Russ August & Kabat LLP — Los Angeles, CA (firm affiliation from RAK attorney listings; confirm on the PHV application) PHV motion filed by IV I & II; order granting at [15].
Peter Mikhail Of counsel / supporting Russ August & Kabat LLP — Los Angeles, CA (same caveat) PHV motion filed by IV I & II.
Samantha Quinn Of counsel / supporting Russ August & Kabat LLP — Los Angeles, CA (same caveat) Notice of appearance filed on behalf of IV I & II (mirrored docket).
Yakov Zolotorev Supporting Russ August & Kabat LLP — Los Angeles, CA (same caveat) Appears on the 2:13-cv-00740 counsel list; I could not independently confirm party attribution from a filing text.
Joseph F. Butcher Local counsel (W.D. Pa.), Pittsburgh Firm not confirmed from available sources — say so rather than guess Notice of appearance filed on behalf of IV I & II (mirrored docket). I could not verify his firm affiliation from any source in this session.

What I could confirm from filing text (not just docket rosters)

  • PHV motions were filed by "INTELLECTUAL VENTURES I LLC, INTELLECTUAL VENTURES II LLC" for Thompson, Mikhail, Feinberg, and Malik.
  • Orders granting PHV for Day, Belloli, Alberti, Lim (and later Malik, Feinberg, Thompson) appear on the same docket.
  • Notices of appearance by Samantha Quinn and Joseph F. Butcher state they appear "on behalf of INTELLECTUAL VENTURES I LLC, INTELLECTUAL VENTURES II LLC."

Not appearing / no in-house counsel shown

  • No in-house IV attorney (e.g., IV's litigation department) appears as counsel of record on the mirrored docket. IV typically managed these campaigns through outside counsel; I will not name in-house personnel without a docket or firm source.
  • No part of the plaintiff's representation appears to have been filed under seal; the identified counsel are all publicly docketed.

Parallel PTAB representation (different team — useful cross-check)

In the co-pending PNC/Bank of America covered-business-method reviews (CBM2014-00028/-00029/-00030/-00033), patent owner Intellectual Ventures was represented by a different team than in district court:

  • Henry A. Petri, Jr. and James Murphy — Novak Druce Connolly Bove & Quigg LLP, Washington, D.C.
  • John R. King and Ted M. Cannon — Knobbe, Martens, Olson & Bear LLP, Irvine, CA

Source: PTAB Record of Oral Hearing, CBM2014-00033 (Mar. 2, 2015), available via Docket Alarm. The petitioner side there was WilmerHale (Donald R. Steinberg, Gregory H. Lantier, Monica Grewal), which aligns with PNC's district-court team alongside Reed Smith (Thomas L. Allen).

Unverified / open items

  • Joseph F. Butcher's firm — not confirmed.
  • Firm placement of Mikhail, Quinn, Zolotorev, Malik — the Los Angeles RAK attribution is my best read of public attorney listings, but the PHV applications themselves would settle it; I'd verify before relying on it.
  • Which docket each PHV entry belongs to — 2:13-cv-00740 vs. 2:14-cv-00832 — cannot be resolved without PACER.
  • Whether the 2013 case was in fact terminated on 12/6/2013 and superseded by the 2014 complaint.

Primary sources consulted: Justia dockets for 2:13-cv-00740 (https://dockets.justia.com/docket/pennsylvania/pawdce/2:2013cv00740/[210317](/patent/210317)) and 2:14-cv-00832 (https://dockets.justia.com/docket/pennsylvania/pawdce/2:2014cv00832/[217293](/patent/217293)); PlainSite docket mirror (https://www.plainsite.org/dockets/2cczpfync/…); Docket Alarm PTAB record for CBM2014-00033 and the IPR2015-01322 related-matters notice; PTAB CBM2014-00030 Final Written Decision (Apr. 24, 2015) identifying 2:13-cv-00740 as a related proceeding.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and counsel of record for the PNC defendants in this case.

Let me pull the actual docket and related filings.

Let me look for the specific attorney appearance entries and the CBM power of attorney.

Bottom line

The public record for IV I & II v. PNC, No. 2:13-cv-00740 (W.D. Pa.) identifies PNC's defense team as Wilmer Cutler Pickering Hale and Dorr LLP (WilmerHale), with a Pittsburgh/W.D. Pa. local-counsel component. The WilmerHale identification is solid because the same team litigated PNC's parallel PTAB proceedings (the CBM petitions against the very patents asserted here). The identity of the local-counsel attorney is not well sourced in what I could retrieve, and I flag that below rather than guess.

⚠️ Caveat on sourcing: I was able to retrieve the PTAB counsel record and docket-level attorney lists, but not a full PACER docket sheet with per-attorney appearance entries for this case. Where I could not attribute a firm, I say so explicitly.


Counsel of record for Defendants PNC Financial Services Group, Inc. and PNC Bank, N.A.

Both PNC entities are jointly represented by the same team (they are co-defendants and, after July 2013, co-counterclaimants, so counsel appears for both).

Attorney Role Firm / Office Notes
Donald R. Steinberg Lead counsel (PTAB lead; principal defense strategist) WilmerHale — Boston, MA (60 State Street) WilmerHale IP litigation partner; named first-chair for the PNC/Bank of America petitioners at the consolidated CBM oral hearing on Mar. 2, 2015. Long track record in financial-services and technology patent defense and in early CBM practice.
Gregory H. Lantier Lead trial counsel (district court); PTAB counsel WilmerHale — Washington, DC (2100 Pennsylvania Ave. NW) Appears on the district-court docket attorney list for 2:13-cv-00740 and argued for the PNC petitioners at the CBM hearing. Also lead WilmerHale counsel for other bank defendants in IV's W.D. Pa. campaign (e.g., IV v. Erie Indemnity Co., 2:14-cv-00220), so he is the attorney with the deepest exposure to IV's local patent assertions.
James L. Quarles III Counsel (appellate/strategic and PTAB) WilmerHale — Washington, DC Named in the docket attorney list for this case; filed a pro hac vice motion in the parallel CBM (CBM2014-00029, Doc. 18, July 7, 2014). Veteran WilmerHale trial/appellate litigator.
Monica Grewal Of counsel / PTAB backup WilmerHale — Boston, MA Appeared for the PNC/BofA petitioners at the Mar. 2, 2015 CBM hearing; part of the WilmerHale PTAB team on the IV CBMs.

Local counsel (W.D. Pa.) — Not confirmed. Justia's docket page for 2:13-cv-00740 shows a truncated combined "Represented By" field that includes, alongside the WilmerHale names above, Jonathan L. Hardt, Justin J. Kontul, and Daniel E. Krauth (plus several names that are plainly plaintiff-side — Ian N. Feinberg, Elizabeth Day, Marc Belloli, David Alberti, Sal Lim, Samantha Quinn). I could not verify from a primary filing which of Hardt/Kontul/Krauth hold the local-counsel role or their current firms, and I am not going to guess. The W.D. Pa. local rules required an in-district sponsor for the WilmerHale pro hac vice admissions, so someone served that function — I just can't source the name reliably.

In-house counsel: None disclosed. No PNC in-house attorney has surfaced in the docket material I retrieved.


What the record does establish about representation

  • WilmerHale filed PNC's PTAB challenges to the same patents. PNC filed CBM/post-grant petitions in November 2013 against all five asserted patents; the petition papers and pro hac vice motions (CBM2014-00029, Docs. 17–18, filed July 7, 2014) were filed by Lantier and Quarles. The consolidated CBM oral hearing transcript for CBM2014-00028/-29/-30/-33 lists "DONALD R. STEINBERG, ESQUIRE; GREGORY H. LANTIER, ESQUIRE; MONICA GREWAL, ESQUIRE — Wilmer, Cutler, Pickering, Hale & Dorr, LLP" appearing for petitioners Bank of America, PNC Financial Services Group and PNC Bank. That is the single best-sourced confirmation of the defense team.
  • Same firm across IV's bank campaign. WilmerHale (Lantier) also appeared for the bank defendants in IV's companion W.D. Pa. suits (e.g., IV I LLC v. Erie Indemnity Co., 2:14-cv-00220), consistent with PNC's representation here.
  • Case posture. Per PNC's own SEC Form 10-K disclosure, PNC answered and counterclaimed in July 2013, filed the November 2013 PTO petitions, and on December 6, 2013 the court dismissed claims as to two patents and stayed the case pending the PTO reviews and appeals — which is why district-court activity (and thus new attorney appearances) in 2014–2016 is sparse.
  • The '409 patent (the patent in your case metadata) was separately the subject of IPR2014-00672, and IV's updated mandatory notices (Feb. 13, 2015) list this district case among the related matters for the IV patents.

Honest gaps

  1. No sealed/appearance-level docket confirmation. I did not obtain a certified PACER attorney list; if any appearance was sealed or counsel withdrew, I cannot see it.
  2. Local counsel unidentified — the three candidate names (Hardt, Kontul, Krauth) are unattributed in my sources.
  3. CBM2014-00031 and -00032 involved PNC as petitioner; I did not retrieve the attorney signature blocks for those specific filings, so additional WilmerHale or local attorneys may appear there.

If you need certainty, the authoritative sources would be the ECF "Notice of Appearance" entries and the pro hac vice admission orders in 2:13-cv-00740, plus the signature blocks of PNC's Answer/Counterclaims (July 2013) and its CBM petitions (Nov. 12, 2013), all of which are on PACER.