Intellectual Ventures I LLC v. Erie Indemnity Company

Overview and Background

Parties. Plaintiff‑appellant Intellectual Ventures I LLC is an assertion entity within the Intellectual Ventures (IV) family of Bellevue, Washington — the patent‑aggregation fund founded in 2000 by Nathan Myhrvold, which by the time of this suit advertised a portfolio of roughly 70,000 patents and applications and does not itself make or sell products. IV I is the entity that holds and litigates a subset of that portfolio; in this campaign it asserted patents acquired from operating companies and individual inventors (the '298 patent names Gary Stephen Shuster as inventor). Defense‑side, Erie Indemnity Company is not a technology company at all: it is the publicly traded management company and attorney‑in‑fact for the Erie Insurance Exchange, i.e., the operating entity that runs the Erie Insurance Group from Erie, Pennsylvania. That operating‑company‑versus‑PAE posture matters to how the case was resolved — Erie had no interest in a technology story and instead attacked the patent at the pleading stage. (See O‑G news coverage, Aug. 26, 2016, quoting IV's complaint describing its business model; Patent Docs, Nov. 14, 2017.)

Accused technology and patent. IV sued in August 2014 (W.D. Pa. No. 1:14‑cv‑00220‑MRH), alleging Erie infringed four patents and seeking unspecified damages. Three of them — U.S. Patent Nos. 6,519,581 (collecting information about a device/user across a communication link), 6,510,434 (retrieving database information using an index of XML tags and metafiles), and 6,546,002 (intelligent/mobile menu‑interface agent) — were knocked out in the district court's September 25, 2015 opinion, 134 F. Supp. 3d 877, and that ruling was affirmed in the companion appeal, Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315 (Fed. Cir. Mar. 7, 2017) (standing as to the '581 patent; § 101 as to the '434 and '002 patents). Only U.S. Patent No. 7,757,298, "Method and Apparatus for Identifying and Characterizing Errant Electronic Files" (filed June 3, 2005; issued July 13, 2010), remained for the 2017‑1147 appeal. Technically, the '298 patent claims a computer‑implemented method that screens stored files for illicit or infringing content (child pornography, pirated music/software) to shield hosters from liability: it (i) selects candidate files using any of three heuristics — an aggregate size of identically sized files exceeding a threshold, content that doesn't match the file type in the filename, or data beyond an end‑of‑file marker; (ii) generates an identification value (a hash/digital signature) over the file content; (iii) compares it to values for known unauthorized files; and (iv) characterizes a match as unauthorized, with deletion contemplated. Notably, the publicly available opinions do not identify the specific Erie system or software accused of practicing this method; the case was resolved on the pleadings, so no claim construction or infringement fact‑finding ever fixed the accused instrumentality. What is documented is only IV's allegation that Erie "used such a system without permission" (O‑G, Aug. 26, 2016).

Posture, venue, and significance. The suit was filed in the Western District of Pennsylvania, Erie Division, before U.S. District Judge Mark R. Hornak and consolidated for pretrial purposes with IV's parallel insurer suits against Old Republic and Highmark; that venue was the defendants' home district (Erie Insurance's headquarters; Highmark in Pittsburgh) rather than a PAE‑friendly forum, and Hornak proved receptive to early § 101 attack. After the PTAB declined to institute IBM's IPR on the '298 patent (IPR2014‑01516, filed Sept. 17, 2014; institution denied Mar. 30, 2015; rehearing denied Aug. 24, 2015) and denied Symantec's earlier CBM petition (CBM2014‑00032, institution denied May 22, 2014), Erie moved under Rule 12(b)(6); the court granted dismissal in August 2016, 200 F. Supp. 3d 565 (W.D. Pa. 2016), 2016 WL 4147300, analogizing the claims to "a librarian tasked with marking and removing books containing pornographic material," and entered final judgment September 15, 2016. On appeal (docketed as 17‑1147; appellant brief Jan. 17, 2017; appellee brief Mar. 20, 2017; reply Apr. 3, 2017), a panel of Chief Judge Prost and Judges Reyna and Wallach affirmed in a nonprecedential opinion by Judge Wallach on November 1, 2017, 711 F. App'x 1012, holding the claims directed to the abstract idea of identifying unwanted files and lacking an inventive concept, and distinguishing Enfish and McRO on the ground that the claims "merely implement an old practice in a new environment."

The case is notable on three fronts. First, it is a clean data point in the post‑Alice wave of software claims being invalidated on a Rule 12(b)(6) motion, before claim construction, expert discovery, or any infringement analysis — a practice that dramatically lowered the cost of defending PAE suits against non‑tech defendants. Second, it illustrates the parallel‑forum dynamic of 2014–2017: the '298 patent was under near‑continuous PTAB attack (CBM, IBM IPR, then Symantec's IPR2016‑01433, which was instituted and argued on October 12, 2017 — while the Federal Circuit appeal was pending), yet the estate ultimately died in court on eligibility rather than in an IPR on prior art. Third, it is part of IV's insurer‑focused assertion campaign, which also targeted Old Republic, Highmark, and (on the '081 patent) Capital One, and which largely collapsed on § 101 grounds.

Sourcing caveats. Docket‑level details above are drawn from the Fed. Cir. opinion (cafc.uscourts.gov/sites/default/files/17-1147.Opinion.11-1-2017.1.pdf), the W.D. Pa. opinions on CourtListener/Justia (Nos. 7321480 and 117), and the PTAB exhibit lists reproduced at patents.google.com/patent/US10235442. I could not verify from accessible sources (a) the precise accused Erie product or system, (b) appellate counsel specifically for 17‑1147 — the attorney listings I found (Ian Feinberg/Feinberg Day and Christian Hurt/Nix Patterson for IV; Matthew Moore/Latham, Gregory Lantier/WilmerHale, Vernon Winters/Sidley for Erie) are from the companion 850 F.3d appeal — or (c) the final outcome of Symantec's IPR2016‑01433, which post‑dates the affirmance. Those items should be confirmed against PACER/CM‑ECF and PTAB docketing before being relied on.

I'll research this case systematically, starting with the Federal Circuit opinion and district court docket.

Good foundation. Now let me pin down the district court docket specifics, the second dismissal opinion, and the PTAB proceedings.

Now let me get the district court docket details, the exact date of the second dismissal, and the Symantec IPR outcome.

Intellectual Ventures I LLC v. Erie Indemnity Co. — Chronology & Disposition

Scaffold (from case metadata, treated as authoritative): Fed. Cir. No. 2017-1147; U.S. Patent No. 7,757,298; affirmed 2017-11-01; nonprecedential. District court: W.D. Pa. No. 1:14-cv-00220-MRH (Judge Mark R. Hornak). Note that the '298 appeal is the second Federal Circuit appeal in this litigation family — the first, Nos. 2016-1128/-1132 (850 F.3d 1315, decided 2017-03-07), addressed the '581, '434, and '002 patents and is essential context.

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I. Filing and Initial Pleadings

2014-08-21/22 — Complaints filed (three companion suits). Intellectual Ventures I LLC and Intellectual Ventures II LLC filed in W.D. Pa. against three insurer groups:

• No. 1:14-cv-00220-MRH — Erie Indemnity Co., Erie Insurance Exchange, Erie Insurance Property & Casualty Co., Erie Insurance Co., Flagship City Insurance Co., Erie Family Life Insurance Co. (the "Erie Defendants"). This is the only one of the three in which the '298 patent was asserted.
• No. 1:14-cv-01130 — Old Republic entities.
• No. 1:14-cv-01131 — Highmark entities.

The Erie complaint asserted four patents: the '581 patent (6,519,581), the '434 patent (6,510,434), the '002 patent (6,546,002), and the '298 patent (7,757,298). See 134 F. Supp. 3d 877, 881 n.6; Fed. Cir. No. 17-1147 slip op. The three actions were consolidated for pretrial purposes and later deconsolidated (134 F. Supp. 3d at 881 n.4). Docket databases list the Erie action as filed 2014-08-21; contemporaneous reporting (Law360, reproduced in secondary summaries) says the suits were filed 2014-08-22.

Answer / counterclaims — not verified. I was unable to pull the Erie Defendants' answer and any declaratory-judgment counterclaims (invalidity/non-infringement) from the sources reached. The later appeal number (a 2017-series number rather than a 2016 one) is consistent with the district court entering a final, appealable judgment only in early 2017 — which in turn would imply that counterclaims or other claims remained pending after the August 2016 dismissal — but I could not confirm that from the record. Flag as unsourced.

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II. Pre-Trial Motions of Substance

A. First round: motions to dismiss the '581, '434 and '002 patents (2014–2015)

• Erie and Highmark moved under Rule 12(b)(1) to dismiss the '581 claims for lack of standing (broken chain of title via the AllAdvantage → Alset assignment), and the defendants moved under Rule 12(b)(6) that all three patents were ineligible under § 101. Old Republic joined the standing motion (Dkt. 77 in 14-220).
• Critically for the '298 patent: the Erie and Highmark Defendants expressly declined to challenge the '002 and '298 patents at that stage because those patents were then subject to USPTO proceedings. 134 F. Supp. 3d at 881 n.8. The court noted: "Because there is no pending Motion requesting to either stay or dismiss the action as to the '298 Patent, the case against the Erie Defendants will remain live as to the '298 Patent." Id. So the '298 claim survived the first wave by procedural accident.
• 2015-04-14 — day-long oral argument on the motions to dismiss (134 F. Supp. 3d at 879).
• 2015-09-25 — Opinion and Order (Dkt. 117), 134 F. Supp. 3d 877. Dismissed the '581 claims under Rule 12(b)(1) for lack of standing; held the '581, '434 and '002 patents ineligible under § 101 in the alternative/fuller analysis; did not substantively reach the '298 patent.

B. Second round: Erie's Rule 12(b)(6) motion on the '298 patent (2016)

• After the PTAB proceedings on the '298 patent concluded (see § VI below), Erie filed a new Rule 12(b)(6) motion urging § 101 ineligibility of the '298 patent (supported by Dkt. 133).
• **August 2016 — Opinion (Dkt

I'll research the counsel of record for Intellectual Ventures I LLC in this appeal and the underlying district court case.

Counsel of Record — Plaintiff/Appellant Intellectual Ventures I LLC

Sourcing note up front: The Federal Circuit's nonprecedential opinion in No. 2017‑1147 (711 F. App'x 1012, Nov. 1/3, 2017) does not carry a counsel block, and I could not pull the CAFC docket's "Attorney" entries directly (PACER-gated; CourtListener's appellate docket for this appeal was not retrievable in my searches). The roster below is therefore reconstructed from the W.D. Pa. docket, No. 1:14‑cv‑00220‑MRH (the case appealed), which is the same team that carried the appeal. Attorney names and firm affiliations are drawn from PACER-derived aggregators (UniCourt docket summary; VitalLaw/Mealey's case report). Where I could not independently confirm a firm assignment, I say so rather than guess.

Principal counsel (the two who argued and signed the appeal papers)

Other attorneys whose appearances are recorded on the district docket for IV

From the UniCourt transcription of the 1:14‑cv‑00220 docket (plaintiff-side appearance entries, including Dkt. Nos. 3, 6 and the Dkt. 136 withdrawal of Edward K. Chin):

• Christian J. Hurt — Nix Patterson & Roach LLP (trial team; firm assignment inferred from the Nix Patterson roster, not independently confirmed on the docket)
• Derek T. Gilliland — Nix Patterson & Roach LLP (same caveat)
• Ross Leonoudakis — firm not confirmed; appears on the IV plaintiff-side attorney list
• Kelly A. Williams — firm not confirmed; entered a notice of appearance for IV (Dkt. 6), consistent with the Picadio Sneath Pittsburgh team
• Robert L. Wagner — firm not confirmed; entered a notice of appearance for IV (Dkt. 3), consistent with Picadio Sneath
• Kirk A. Voss — firm not confirmed; listed among IV's plaintiff-side attorneys
• Edward K. Chin — appeared for IV and was terminated on the unopposed withdrawal motion at Dkt. 136 (order at Dkt. 137); firm not confirmed

Gaps and cautions

• No in-house IV attorney is reflected in the available docket-derived records. Intellectual Ventures' legal department (its in-house IP litigation group) may have been involved behind the scenes, but I found no appearance by an IV in-house lawyer, so I will not name one.
• Nothing indicates sealed or ex parte attorney appearances in this matter; the docket was public. The limitation is on my side: the appellate docket's attorney tab was not accessible.
• The docket is the controlling source for "of record" status. Aggregator data (UniCourt, Plainsite, VitalLaw) can lag or mis-assign firms; if you need a certified list for a Rule 26/FRAP 46 purpose, pull the "Attorneys" report from PACER for Fed. Cir. No. 17‑1147 and cross-check the ECF headers on the parties' opening and response briefs (which list "Counsel for Plaintiff-Appellant").
• Related appeal No. 2016‑1128 (IV v. Erie, 850 F.3d 1315 (Fed. Cir. 2017), the standing/§ 101 decision on the '581, '434 and '002 patents) was handled by the same IV team; that opinion likewise does not list counsel.

I'll research the docket and related sources for counsel of record for Erie Indemnity.

Bottom line

I was able to confirm the party/case structure and the identity of the Erie-side local counsel from docket-derived records, but I could not fully verify the complete Erie-side appearance list from open-web sources in this session. The Federal Circuit's and W.D. Pa.'s actual docket sheets (which carry the authoritative appearance and signature-block information) were not retrievable in full. Below I separate what is sourced from what is not, and I flag the specific documents that would close the gaps. I have not invented any name, firm, or role.

Case anchors (verified)

• Appeal: No. 2017-1147, Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App'x 1012 (Fed. Cir. 2017) (nonprecedential). Opinion dated Nov. 1, 2017; posted to the Federal Circuit's opinions page Nov. 3, 2017 (CAFC, Nov. 3, 2017). Note the discrepancy with the case metadata (terminated 2017-11-01) versus Mealey's/CAFC posting date (Nov. 3) — the opinion's issue date is Nov. 1, the posting date Nov. 3.
• District court: No. 1:14-cv-00220 (W.D. Pa.), consolidated for pretrial purposes with 2:14-cv-01130 (Old Republic) and 2:14-cv-01131 (Highmark); Judge Mark R. Hornak. The '298 patent was asserted only against the Erie defendants. See Intellectual Ventures I LLC v. Erie Indem. Co., 134 F. Supp. 3d 877, 881 n.8 (W.D. Pa. 2015); 200 F. Supp. 3d 565 (W.D. Pa. 2016).
• Erie-side defendants: Erie Indemnity Company, Erie Insurance Exchange, Erie Insurance Property & Casualty Company, and Erie Family Life Insurance Company (the "Erie Defendants").
• Outcome: Affirmance of the § 101 dismissal of the '298 claims.

Erie-side counsel

Persons NOT to attribute to Erie: David C. Marcus (Wilmer Cutler Pickering Hale and Dorr LLP) and John G. Ebken (Gordon & Rees LLP) appear in the press reporting as counsel for the Highmark defendants, not Erie. See VitalLaw summary of the Sept. 25, 2015 W.D. Pa. ruling (vitalLaw). The Erie and Highmark defendants filed separate but coordinated dismissal motions (14-220 ECF 46 and 14-1131 ECF 47), so their counsel should not be conflated — a real risk given that UniCourt's public roster lumps all "Consolidated Defendant and Defendant Attorneys" into one undifferentiated list.

What I could not verify, and where to look

1. Lead trial counsel for Erie (the out-of-town firm signing the Erie briefs). The signature block on W.D. Pa. ECF No. 46 (Erie/Highmark motion to dismiss) and ECF No. 74 (standing motion) will name lead counsel directly. I was unable to open those PDFs in this session.
2. Appellate counsel of record. The counsel block printed at the head of 711 F. App'x 1012 (and the appearance entries on the Fed. Cir. docket for 2017-1147) is the definitive list for the appeal; it is common in these appeals for trial-team local counsel to remain on the brief alongside lead appellate counsel. I could not retrieve that block.
3. In-house counsel. No Erie in-house attorney is identified in any public source I found; Erie's patent defense appears to have been handled entirely by outside counsel. I found no evidence of an Erie in-house lawyer entering an appearance, but I also cannot rule it out.
4. Sealed material. Nothing in the sources reviewed indicates that Erie's appearances were sealed; the underlying § 101 dismissal briefing was public. The gap is my source access, not a sealing order.

Research roadmap to finalize

• PACER/W.D. Pa. 1:14-cv-00220: pull ECF 46, 74, 82 (signature blocks); the 2016 dismissal motion and ECF 165 (notice of appeal)