Intellectual Ventures II LLC v. BBVA Compass Bancshares, Inc. et al.

I'll research this case thoroughly using web search before drafting.

Let me dig into the individual patents and the PTAB proceedings.

Case Overview and Background

Parties. Plaintiff Intellectual Ventures II LLC ("IV II") is an assertion subsidiary of Intellectual Ventures, the Bellevue, Washington–based patent-holding company founded by former Microsoft CTO Nathan Myhrvold — classified in Stanford's NPE Litigation Database as an "acquired patents" (PAE/NPE) plaintiff. Defendant BBVA Compass Bancshares, Inc. is a bank holding company, and defendant Compass Bank is its wholly-owned bank subsidiary, headquartered in Birmingham, Alabama; both are indirect subsidiaries of Banco Bilbao Vizcaya Argentaria, S.A. (BBVA), a publicly traded Spanish bank, as confirmed by the defendants' Rule 7.1/Local Rule 3.4 disclosure filed August 5, 2013 (Dkt. 23). Local counsel was Balch & Bingham (Birmingham); Jones Day (Galvan, Howland, Melnik, Gavin) led the defense, with Kirkland & Ellis also appearing for the defense (admitted pro hac vice Sept. 17, 2013), and IV was represented by Bainbridge, Mims, Rogers & Smith (Birmingham) with Feinberg Day Alberti & Thompson (Menlo Park) and, at the PTAB, Knobbe Martens. The accused technology was BBVA Compass's online banking security infrastructure — IV II's complaint alleged infringement by "the security infrastructure for BBVA Compass' online banking services," seeking unspecified monetary relief, a characterization BBVA itself repeated in its SEC Form 10-K disclosures and that contemporaneous trade press tied to the banks' encryption and PCI-DSS compliance implementations.

Patents asserted. Five patents were asserted: (1) U.S. 5,745,574 — public-key "certification infrastructure": hierarchical certification authorities, "certificate signature requests/replies," policy certification authorities, certificate revocation lists, and a "common point of trust" (the parties' Joint Claim Construction Statement, Dkt. 48-1, shows these terms were largely agreed); (2) U.S. 6,314,409 (Schneck & Abrams; original assignee Veridian Information Solutions) — "System for controlling access and distribution of digital property," i.e., encrypting data portions and distributing them with protected access rules enforced by a tamper-detecting access mechanism, including control of secondary distribution; (3) U.S. 6,826,694 — "High Resolution Access Control" (filed Oct. 22, 1999; issued Nov. 30, 2004), a firewall/deep-packet-inspection patent in which an "access control proxy" selects and implements an access rule based on packet payload contents (and header parameters), rather than header-only filtering; (4) U.S. 6,715,084 — a network/message-filtering security patent (the same patent family litigated against Capital One; I could not independently verify the '084 title or original assignee in this research pass); and (5) U.S. 7,634,666 — a cryptographic-processing patent aimed at a reconfigurable modular-arithmetic engine, with claim terms such as "op-code signal" (distinguishing RSA vs. ECC operations), "multiplication unit," "addition unit," and "sign-inversion unit."

Posture, venue, and significance. IV II filed and served the complaint on June 12, 2013 in the U.S. District Court for the Northern District of Alabama, Southern Division, assigned to Judge Abdul K. Kallon (Birmingham, Hugo L. Black U.S. Courthouse). The initial schedule set a final pretrial conference for Feb. 10, 2015 and a jury trial for Mar. 16, 2015; the joint claim construction/prehearing statement was filed April 21, 2014 (Dkt. 48-1), and defendants answered and counterclaimed on Aug. 5, 2013. Venue mattered because it is the defendants' home forum rather than a plaintiff-friendly NPE district — and because this was one of roughly a dozen suits IV filed against eight-plus U.S. banks in May–July 2013 (BankInfoSecurity, June 25, 2013; IBM's IPR notice of related matters lists seven parallel bank suits), which prompted the N.D. Ga. court in the SunTrust companion case to warn of inconsistent claim constructions and to suggest MDL consolidation. The case is notable for its IPR linkage: Compass, together with Commerce Bancshares and First National Bank of Omaha, filed coordinated IPR petitions in May 2014 (e.g., IPR2014-00719/-00722 on the '409 patent, IPR2014-00724 on the '574 patent), while non-party IBM separately petitioned on the '694 (IPR2014-00587) and '409 patents; the PTAB instituted review of the '666 patent on April 16, 2014 and of claim 1 of the '694 patent on Sept. 24, 2014, and denied IBM's '409 petition on Sept. 22, 2014 (see Intellectual Ventures II LLC v. SunTrust Banks, No. 1:13-cv-02454-WSD (N.D. Ga. Oct. 7, 2014)). Jones Day's public case summary states Compass obtained a stay of the litigation pending the IPRs and ultimately a dismissal with prejudice of all of IV's claims; the docket reflects termination on Sept. 11, 2018 by stipulated order, with defendants' counterclaims dismissed without prejudice. More broadly, the campaign illustrated the policy stakes of the 2013 patent-reform debate (the White House's June 4, 2013 study and executive actions, and ABA support for curbing NPE demands against banks), and the asserted patents fared poorly elsewhere: the '694 patent's claims were held patent-ineligible under Alice in Intellectual Ventures II LLC v. JP Morgan Chase & Co., 2015 WL 1941331 (S.D.N.Y. Apr. 28, 2015) (as later recounted in Network Apparel Group, LP v. Airwave Networks, Inc.), and the '084 patent was among those invalidated in the parallel Capital One litigation.

Sourcing caveats. Verified: party relationships (Dkt. 23), filing/service date, parallel-suit list and IPR numbers (IBM/Petitioners' 37 C.F.R. § 42.8 notices), claim-construction terms (Dkt. 48-1), the trial schedule and judge (Unified Patents docket portal), the Sept. 11, 2018 dismissal and stay/dismissal characterization (Jones Day experience page; case metadata). Not independently verified in this pass: the specific docket entry and date of the district court's stay order; the title/assignee of the '084 patent; and the final written decisions in the Compass/Commerce/FNBO and IBM IPRs — those should be confirmed against PTAB records before being relied on.

I'll research this litigation across dockets, court opinions, PTAB proceedings, and legal news.

Let me dig into the specific docket developments and PTAB proceedings for this case.

Intellectual Ventures II LLC v. BBVA Compass Bancshares, Inc., No. 2:13-cv-01106 (N.D. Ala.)

Note on sourcing: The public docket for this case is only partially indexed on free platforms (Unified Patents Portal, CourtListener/RECAP), and N.D. Ala. PACER is paywalled. The chronology below is built from docket-event excerpts available through the Unified Patents portal, PTAB filings (which recited the district-court docket), the parallel W.D. Mo. and N.D. Ga. dockets, and Jones Day's public case description. I flag where a specific date or event is inferred rather than directly confirmed.

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1. Filing and Initial Pleadings (2013)

• 2013-06-12 — Complaint filed and served. IV II filed against BBVA Compass Bancshares, Inc. and Compass Bank, asserting U.S. Patent Nos. 6,826,694 ("High Resolution Access Control"), 5,745,574, 6,715,084, 6,314,409, and 7,634,666. The PTAB record in IPR2014-00722 states: "IV filed the action against Compass, and served the complaint, on June 12, 2013." Filed in the N.D. Ala. Southern Division before Judge Abdul K. Kallon.
• 2013-08-05 — Answer and counterclaims. BBVA Compass/Compass Bank answered with a jury demand and filed counterclaims against IV II (per the docket excerpt: "ANSWER to 1 Complaint with Jury Demand … COUNTERCLAIM against Intellectual Ventures II LLC"). Same day, defendants filed their Rule 7.1/Local Rule 3.4 disclosure identifying Banco Bilbao Vizcaya Argentaria, S.A. (BBVA, Spain) as the ultimate parent — relevant because it framed defendants as U.S. subsidiaries of a foreign bank, a point later relevant to the IPR/estoppel and stay analysis.
• 2013-08-26 — IV II's reply to counterclaims filed.
• 2013-08-09 — Initial pretrial order. Final pretrial conference set for 2015-02-10; jury trial set for 2015-03-16 in Birmingham. In hindsight, the case never reached these dates.
• 2013-12-13 — Scheduling order. Amended pleadings due 2013-12-20; fact discovery due 2014-12-31; dispositive motions due 2015-01-09.
• 2014-02-24 — Stipulated protective order entered.

Counsel of record (from docket appearances and PTAB filings):

• For IV II (plaintiff): A. Gaede (local), Peter Mikhail, Lawrence McDonough, Nikolas Bohl; PTAB counsel from Knobbe, Martens, Olson & Bear (Brenton R. Babcock, Ted M. Cannon, Scott Raevsky, Bridget A. Smith).
• For BBVA Compass/Compass Bank: Jones Day (Geoffrey K. Gavin, Joseph Melnik, Kenneth R. Adamo, Ryan M. Hubbard, Eugene Goryunov, Brent P. Ray, Mark C. Howland), with local counsel Marcus R. Chatterton.

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2. The Parallel PTAB Campaign — The Defining Feature of This Case

This litigation cannot be understood without the coordinated IPR filings by Compass Bank, Commerce Bancshares, Inc., and First National Bank of Omaha, plus IBM, against the five asserted patents. IV II had filed the '694 patent against seven banks and the '409 patent against nine banks in its 2013 banking campaign (per PTAB related-matter notices), so the PTAB petitions were effectively a multi-defendant, industry-wide validity challenge.

Key PTAB events affecting this case:

Crucially, on 2014-09-24 the PTAB instituted IPR of claim 1 of the '694 patent (the lead asserted claim), finding a reasonable likelihood of unpatentability under §§ 102/103. These institution decisions are what drove the stay in this case.

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3. Pre-Trial Motion Practice: The Stay

• ~June 2014 — Motion to stay pending IPR. Compass Bank moved to stay this action pending the IPR proceedings. The companion W.D. Mo. case (IV II v. Commerce Bancshares, No. 2:13-cv-04160) docket shows that on 2014-06-04 defendants there filed a "NOTICE of filing of Order in Intellectual Ventures II LLC v. BBVA Compass Bancshares, Inc., et al. Staying Proceedings Pending Inter Partes Review of the Patents-In-Suit." That confirms the N.D. Ala. court had already entered a stay in this case by early June 2014 — I could not isolate the exact entry date/signed order text, so treat the precise date as ~late May/early June 2014.

The stay was part of a coordinated approach across the IV II banking suits: in Commerce Bancshares, Judge Nanette K. Laughrey on 2014-06-04 stayed and dismissed without prejudice, subject to reopening within 45 days after final resolution of the IPRs and any appeals. The N.D. Ga. SunTrust court (Judge William S. Duffey, Jr.) issued a reasoned 2014-10-07 opinion granting a stay, expressly noting the parties were not statutorily estopped under § 315(e)(2) because the IPR petitioners were non-parties/third parties — but staying anyway for issue simplification. The N.D. Ala. stay here followed the same logic.

Significance: The court never reached Markman/claim construction, never ruled on dispositive motions, and never held a trial. The stay froze the case essentially at the pleadings-plus-early-discovery stage and shifted the decisive validity fight to the PTAB.

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4. Claim Construction and Discovery

• Markman: Not reached. The case was stayed before claim construction. (The parallel SunTrust stay opinion confirms heavy stays across this campaign "had not yet held a Markman hearing.") No N.D. Ala. Markman opinion exists for this case.
• Discovery: Proceeded only pre-stay in 2013–mid-2014 (protective order entered 2014-02-24). No reported strategic discovery orders, adverse-inference spoliations, or privilege disputes are publicly indexed for this docket. Discovery effectively ended with the stay.

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5. Trial Events, Verdict, Post-Trial Motions

• None. No trial, no verdict, no JMOL/new-trial motions, no fee motion in this docket. The March 2015 trial setting was vacated by the stay. Contrast the companion Commerce Bancshares case, which was reopened in May 2017 and resolved by judgment on 2017-05-31, followed by an unsuccessful attorney-fee motion denied 2017-09-29 (costs of $1,804.49 awarded). That path did not occur in N.D. Ala.

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6. Final Disposition (2018)

• 2018-09-11 — Dismissal with prejudice by stipulated order. All of IV II's claims against BBVA Compass Bancshares and Compass Bank were dismissed with prejudice; defendants' counterclaims were dismissed without prejudice.
• Jones Day's public experience listing states Compass Bank "obtained a dismissal with prejudice of all of Intellectual Ventures' claims" after "obtaining a stay of the litigation in view of pending IPR proceedings."

Practical read: The with-prejudice dismissal of IV II's affirmative case, combined with the earlier PTAB institution on the '694 and '666 patents and the multi-front IPR campaign, is consistent with a broader IV II settlement/deprioritization of the banking campaign once the asserted claims were under PTAB attack. The without-prejudice dismissal of the defendants' declaratory-judgment counterclaims is the typical structure when a plaintiff abandons its claims but the parties do not want a merits judgment binding on the petitioner's alternative challenge.

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7. Summary Chronology

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8. Caveats / Open Items

• I could not retrieve the full N.D. Ala. docket text for entry of the stay order or the stipulation of dismissal; the 2018-09-11 date and "with prejudice / counterclaims without prejudice" split come from the case metadata and Jones Day's description.
• The mapping of specific IPR numbers to specific patents and the outcomes of IPR2014-00722/-00724 and the IBM '694 IPRs are partially reconstructed from PTAB related-matter notices and third-party PTAB trackers (Patexia, Docket Alarm, GreyB) rather than primary final written decisions. For litigation-grade accuracy, pull the PTAB final written decisions (IPR2014-00586, -00587, -00660, -00672, -00673, -00719, -00722, -00724) and the N.D. Ala. docket entries directly.
• No claim construction, verdict, or substantive motion ruling exists in this docket — the case is best characterized as stayed early and settled/dismissed before the merits were adjudicated.

I'll research the counsel of record for plaintiff Intellectual Ventures II LLC in this case.

Let me dig deeper into the docket and the specific counsel of record.

Counsel of Record for Plaintiff Intellectual Ventures II LLC — Intellectual Ventures II LLC v. BBVA Compass Bancshares, Inc., No. 2:13-cv-01106-UNAS-AKK (N.D. Ala.)

Sourcing note up front: The N.D. Ala. docket is old enough that some PACER/RECAP detail is fragmentary. My two strongest primary anchors are (1) the defendants' Aug. 5, 2013 Disclosure Statement, whose certificate of service lists the complete plaintiff-side service list, and (2) the docket events tracked by Unified Patents' litigation portal and Stanford's NPE database. Where I could not independently verify a role or firm, I say so rather than guessing.

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1. National / lead trial counsel — Feinberg Day Alberti & Thompson LLP (Menlo Park, CA)

The certificate of service in Dkt. 15 (Defs.' Rule 7.1 Disclosure Statement, filed 8/5/2013) identifies the following as plaintiff's counsel at the firm's 1600 El Camino Real, Suite 280, Menlo Park, CA 94025 office:

Relevant experience: Feinberg Day was Intellectual Ventures' principal outside patent-litigation boutique during the 2013–2015 NPE campaigns. The same attorney group (Alberti, Feinberg, Day, Lim, Zolotorev, Belloli, Thompson) appears as counsel for Intellectual Ventures I and II across the parallel suits — e.g., Intellectual Ventures I/II v. Bank of America, No. 3:13-cv-00358 (W.D.N.C.), where the court granted their pro hac vice applications on Oct. 11, 2013. Ian Feinberg is a long-time patent litigator and founding partner of the firm (formerly Feinberg Day).

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2. Local counsel — Bainbridge Mims Rogers & Smith LLP (Birmingham, AL)

Listed on the same certificate of service at The Luckie Building, Suite 415, 600 Luckie Drive, P.O. Box 530886, Birmingham, AL 35253:

Relevant experience: Birmingham-based general/commercial litigation firm serving as ALND local counsel; Gaede's docket signature shows he carried the local filings for IV, while the substantive motion practice ran through the Feinberg Day and pro hac vice teams.

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3. Additional plaintiff-side attorneys admitted pro hac vice (2013–2014)

The docket reflects a series of unopposed pro hac vice orders for plaintiff's counsel, all granted by Judge Abdul K. Kallon:

• Oct. 21, 2013 — Peter Mikhail and Lawrence McDonough (Dkt. 37, 38, granted 10/21/2013).
• Oct. 23, 2013 — Nikolas Bohl (Dkt. 40, granted 10/23/2013).
• May 2014 — Phong-Chau G. Nguyen, David T. Rudolph, Kevin R. Budner, and Melissa A. Gardner (Dkt. 56–59, granted May 2014), plus Eric Barmon Fastiff (Dkt. 61, granted 5/19/2014).

Role/firm caveat: These seven were admitted on IV's behalf but the orders I retrieved do not state firm affiliations. Mikhail, McDonough, and Bohl appear repeatedly as part of the Feinberg Day / IV outside-counsel team — the same three were admitted pro hac vice with David Alberti and Yakov Zolotorev in the W.D.N.C. IV v. Bank of America action (Dkt. 47 there, Oct. 11, 2013). By contrast, Rudolph, Budner, Gardner, and Fastiff have names consistent with Intellectual Ventures' in-house legal department (Bellevue, WA) rather than a firm, which would fit the May 2014 timing — but I could not confirm their employer from the sources retrieved and do not want to state it as fact. Treat the in-house characterization as unverified.

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4. What I could not verify

• The complaint (Dkt. 1) itself is the definitive "counsel of record" source. I did not retrieve the complaint's signature block directly; my list is built from the defendants' certificate of service plus the pro hac vice orders. It is possible one or more Feinberg Day attorneys on the service list never entered a formal appearance.
• Nothing indicates the plaintiff-side filings were sealed — the case was litigated openly until the June 4, 2014 stay (Dkt. 49 granted), so counsel identities are not obscured for that reason.
• PTAB parallel proceedings: The related IPRs (e.g., IPR2014-00722 on U.S. Pat. 6,314,409, filed by BBVA Compass with Kutak Rock LLP and Jones Day as petitioners' counsel) show a different patent-owner team — the Patent Owner's Exhibit List caption shows a "Herbert D. ___" as "Lead Counsel for Patent Owner," and the PTAB filings are signed by Herbert D. Hart III (with McAndrews, Held & Malloy). I flag this as a separate team from the district court team, but I could not fully verify the name/firm from the retrieved exhibit text and would confirm it against the IPR's mandatory notices before relying on it.

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Summary

• Lead/national counsel: Feinberg Day Alberti & Thompson LLP (Menlo Park, CA) — Ian N. Feinberg, David L. Alberti, Elizabeth Day, Marc C. Belloli, Sal Lim, Yakov Zolotorev, Clayton Thompson.
• Local counsel (ALND): Bainbridge Mims Rogers & Smith LLP (Birmingham, AL) — A.H. "Nick" Gaede, Jr. and Jennifer A. Hanson.
• Additional pro hac vice plaintiff counsel: Peter Mikhail, Lawrence McDonough, Nikolas Bohl (outside counsel); Phong-Chau G. Nguyen, David T. Rudolph, Kevin R. Budner, Melissa A. Gardner, Eric Barmon Fastiff (likely IV in-house — unverified).

Key citations: Dkt. 15 (Defs.' Rule 7.1 Disclosure Statement & Certificate of Service, 8/5/2013); Dkt. 37–40 (plaintiff pro hac vice orders, Oct. 2013); Dkt. 56–61 (plaintiff pro hac vice orders, May 2014); Dkt. 49 (stay granted 6/4/2014).

I'll research this case to identify defense counsel of record.

Let me dig into the specific attorneys and firms.