Intellectual Ventures II LLC v. Huntington Bancshares Incorporated et al.

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

Let me gather more detail on the patents, the IPR proceedings, and the accused technology.

Let me verify the IPR outcomes on each patent and the final disposition of the Huntington case.

Case Overview — Intellectual Ventures II LLC v. Huntington Bancshares Inc., No. 2:13-cv-00785-GLF (S.D. Ohio)

Parties. The plaintiff, Intellectual Ventures II LLC ("IV II"), is one of the assertion vehicles of Intellectual Ventures, the Bellevue, Washington–based patent-holding/invention-capital firm founded in 2000 by Nathan Myhrvold, Edward Jung, Greg Gorder, and Peter Detkin. IV II does not make or sell products; it monetizes a large acquired patent portfolio through licensing and litigation, making it a classic non-practicing entity / patent-assertion entity. The defendants are Huntington Bancshares Incorporated, a Columbus, Ohio–headquartered regional bank holding company, and its principal operating subsidiary, The Huntington National Bank. The docket confirms the case was filed August 7, 2013 in the U.S. District Court for the Southern District of Ohio, Columbus Office (Franklin County), as a § 271 patent-infringement action, with Judge Gregory L. Frost presiding and Magistrate Judge Norah McCann King assigned (Justia docket: https://dockets.justia.com/docket/ohio/ohsdce/2:2013cv00785/[165036](/patent/165036)).

Accused technology. IV II filed this suit as part of its 2013 "banking campaign" — a coordinated wave of complaints against major U.S. financial institutions (JPMorgan Chase, Capital One, BBVA Compass, Commerce Bancshares, SunTrust, U.S. Bancorp, PNC, First National Bank of Omaha, and Huntington) over the banks' online/mobile banking, payment, and data-security systems rather than over any product Huntington manufactures. Because the patents are largely legacy computing/security patents acquired from operating companies, IV II's theory was that the banks' standard-issue customer-facing banking and payment infrastructure — and their use of security standards such as PCI DSS — infringed. In the parallel Commerce Bancshares complaint in the same campaign, for example, IV II specifically accused that bank's "ROAMPay Mobile Payment product/service and services that use PCI Data Security Standard technology" (see the related-cases materials reproduced at http://ocr.docketalarm.com/patentapps/US/09-178,606/). I was not able to retrieve the Huntington-specific accused products from the sources available, so the precise accused services for these two defendants should be treated as unconfirmed; the campaign-level pattern above is well documented.

Patents asserted. The complaint asserts five patents (all confirmed as Patents-in-Suit in the campaign's joint claim-construction filings):

• U.S. 6,826,694 — "High resolution access control" (AT&T-origin): firewall/packet-filtering that selects a rule based on packet payload contents, not just header parameters (see https://www.freepatentsonline.com/6826694.html).
• U.S. 5,745,574 (inventor Sead Muftic) — public-key-certificate / certification-infrastructure patent: managing certificate issuance, hierarchy, expiration, and revocation.
• U.S. 6,314,409 — "System for controlling access and distribution of digital property": access rules controlling use/copying of protected digital data over insecure channels.
• U.S. 6,715,084 — network surveillance / intrusion-detection patent: claims directed to detecting an "intrusion attempt" and "generating an automated response."
• U.S. 7,634,666 — cryptographic coprocessor ("crypto-engine"): an arithmetic unit acting as a host co-processor, with an interface controller selecting RSA or ECC modes via an op-code signal (claim 4).

Procedural posture, venue, and the IPR stay. Huntington was sued in the district where it is headquartered, i.e., a home-forum filing by IV II. The case was in an early stage — a stipulated scheduling order (ECF 32) set fact discovery to close December 31, 2014, no Markman hearing had been held, and trial was more than a year out. Huntington moved to stay (ECF 53); IV II opposed (ECF 58); and on June 10, 2014, Judge Frost granted the stay pending inter partes review (ECF 61), applying the three-factor Tdata/In re NLO framework (procedural status, simplification of issues, and prejudice/tactical disadvantage). The court credited that the patents were under heavy third-party PTAB attack: non-parties IBM, BBVA Compass, Commerce Bancshares, and First National Bank of Omaha collectively filed roughly thirteen IPR/CBM petitions against the patents-in-suit. Among the outcomes documented in the parallel stay orders: the PTAB instituted IPR on all claims of the '666 patent on April 16, 2014; it instituted IPR of '694 claim 1 on September 24, 2014; and it denied institution on the '409 patent on September 22, 2014 (rehearing denied December 23, 2014 — the '409 IPR, IPR2014-00673, was terminated; see https://www.docketalarm.com/cases/PTAB/IPR2014-00673/Inter_Partes_Review_of_U.S._Pat._6314409/). The SunTrust stay opinion (N.D. Ga., Oct. 7, 2014) is the best single judicial summary of the parallel PTAB landscape: http://g.casetext.com/case/intellectual-ventures-ii-llc-v-suntrust-banks.

Why it matters. The case is a leading example of two 2013–2015 trends: (1) NPE assertion against end-users (banks) rather than technology manufacturers, which multiplies defendants and pressures settlement; and (2) the rise of the IPR/CBM regime as the primary defense tool, with courts routinely staying early-stage infringement suits while the PTAB resolves validity. The patents fared poorly over time — the '666 was invalidated in IPR (IV declined to appeal the adverse PTAB ruling, per the W.D. Mo. opinion in IV II v. Commerce Bancshares, https://www.courtlistener.com/docket/[4515310](/patent/4515310)/intellectual-ventures-ii-llc-v-commerce-bancshares-inc/102/), and the '574 was likewise invalidated in PTAB on the Kapidzic/Davidson "Certificate Management System" prior art. Notably, IV's broader banking campaign also helped produce the influential § 101 rulings in Intellectual Ventures I v. Capital One (E.D. Va./Fed. Cir.), which invalidated two other IV patents. This case's own ultimate disposition is not confirmed in the sources retrieved (docket aggregators list the case as "closed," consistent with the matter lapsing after the stay, but no dismissal or judgment entry was verified here); the metadata's characterization of the case as "stay granted pending IPR; final disposition unconfirmed" is therefore the accurate posture.

Confidence note: the case number, court, filing date, judge, patents, and the June 10, 2014 stay order (ECF 61) are directly confirmed by the docket and the reproduced opinion. The Huntington-specific accused products and the final dispositive event in this particular docket are not well sourced and are flagged as unconfirmed rather than asserted.

I'll research this case across multiple sources. Let me start with broad searches.

Let me dig into the docket and the parallel PTAB proceedings.

Let me identify the parallel PTAB proceedings for each asserted patent.

Scope and sourcing caveat

The S.D. Ohio docket for 2:13-cv-00785-GLF is thinly indexed in free sources. The docket events I can verify are limited (Justia, CourtListener/Unified Patents, and the stay opinion itself); the answer/counterclaim filings are not documented in the sources I could reach, and I could not confirm a terminal dismissal or judgment order. I flag each unverified point below rather than filling gaps.

---

I. Filing and initial pleadings (2013)

The case is one of eight-plus suits in IV II's 2013–14 banking campaign asserting the same family of security/DRM patents against First National Bank of Omaha, JPMorgan Chase, BBVA Compass, Commerce Bancshares, SunTrust, U.S. Bancorp, M&T, HSBC and Fifth Third.

---

II. Pre-trial motions of substance

Motion to stay pending IPR (the dispositive motion of the case)

The stay analysis applied the three-factor test drawn from Tdata Inc. v. Aircraft Tech. Publishers (quoting Lincoln Elec. Co. v. Miller Elec. Mfg. Co.) and Ethicon, Inc. v. Quigg:

1. Stage of the case — weighed for defendants: "This case is in the early stage of litigation… fact discovery is not scheduled to close until December 31, 2014. The Court has not yet held a claim construction hearing, and the trial date is over a year away."
2. Simplification — weighed for defendants.
3. Undue prejudice / tactical disadvantage — IV argued a stay gave defendants a free ride because, as non-petitioners, they escape the 35 U.S.C. § 315(e)(2) estoppel that binds the IPR petitioners. The court rejected this, holding it would "defy common sense for this litigation to proceed alongside the IPR proceedings simply because Defendants are not statutorily prohibited from raising the same or similar arguments as the IPR petitioners."

The opinion expressly relied on stays granted in two sister cases: IV II v. Commerce Bancshares, No. 2:13-cv-04160-NKL (W.D. Mo. 2014-06-04) and IV II v. First Nat'l Bank of Omaha, No. 8:13-cv-00167 (D. Neb. 2014-05-06).

No motion to dismiss, transfer, or summary judgment appears on the docket — the case was frozen before the dispositive-motion stage.

---

III. Claim construction (Markman)

The Huntington case never reached Markman. The stay issued on 2014-06-10, before any Markman hearing.

For context on what construction would have looked like, the same patent family was construed in the parallel S.D.N.Y. action IV II v. JPMorgan Chase & Co., No. 1:13-cv-03777-AKH. In IPR filings the parties described the S.D.N.Y. court's construction of the '409 term "access mechanism" as "hardware and/or software for controlling access to data," and IV conceded that construction as consistent. That JPMorgan action also produced the 2015-04-29 decision (2015 WL 1941331) invalidating certain IV patents under 35 U.S.C. § 101 — the ruling that later triggered issue preclusion against IV in the Capital One litigation.

---

IV. Discovery milestones

• Some discovery was conducted pre-stay, but the court characterized the case as early-stage; the Commerce Bancshares order it relied on noted that no depositions had been taken, discovery had ~6 months to run, and no Markman had occurred.
• Fact discovery cutoff: 2014-12-31 (ECF No. 32) — rendered moot by the stay.
• No substantive discovery disputes, protective-order fights, or expert-discovery milestones are documented in the sources I could reach. The stay halted discovery entirely, which is the key strategic fact: it froze IV's ability to develop infringement contentions and bank-defendant financial discovery while validity was resolved at the PTAB.

---

V. Trial, verdict, post-trial motions

None. No trial date was ever reached; no verdict, JMOL, new-trial, or fee motion exists. The case was stayed pending IPR and never returned to active litigation on the merits in any documented entry.

---

VI. Disposition and present posture

• Posture: Stayed since 2014-06-10 pending IPR, and by the terms of the order, stayed "until the IPR proceedings and, appeals, if any, are completed."
• Docket aggregators list the case as "Closed" (e.g., the Ex Parte litigation tracker shows status Closed; Justia lists only the 2014-06-10 stay order among available documents). I could not locate or verify a dismissal order, settlement stipulation, or judgment. The practical explanation is that the '409 patent was invalidated via CBM in 2016 and the case had no residual value, but that inference is mine, not a documented docket event.
• Appeal: None identified in this case.
• Per the case metadata and confirmed by the record above, final disposition remains unconfirmed.

---

VII. Parallel PTAB proceedings on the asserted patents

The stay was driven entirely by third-party PTAB challenges. Summary of what I could verify:

Sister-court stays on the same IPR record: SunTrust (N.D. Ga., 2014-10-07, 2014 WL 5019911) granted a stay on reasoning materially identical to Huntington's, expressly because "the PTAB has instituted IPR proceedings on one claim of the 694 Patent, and all claims of the 666 Patent," and rejecting the § 315 estoppel-asymmetry argument.

---

VIII. Strategic significance for the Huntington case

1. Third-party IPRs, third-party benefit. Huntington never filed a PTAB petition; it traded on IBM's and the Compass Bank group's filings. The court accepted that this was not inequitable, expressly because the case was at an early stage and the issues overlapped.
2. The '409 patent was destroyed. The CBM2014-00157 FWD (2016-01-12) invalidated essentially every claim IV asserted, and IV abandoned the appeal. One of the five Huntington patents was therefore off the table permanently.
3. The '694 patent survived (IV won IPR2014-00587 on antedating), so the stay did not uniformly favor defendants.
4. Collateral estoppel from a sister court. The S.D.N.Y. JPMorgan ruling (2015-04-29) plus the Capital One litigation (D. Md., No. 8:14-cv-00111-PWG) produced rulings that the '409 and '084 patents were unenforceable/invalid as to IV, affirmed in Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017) — which, together with the PTAB outcomes, made any revival of the Huntington suit on those patents untenable.
5. Net effect: the litigation was effectively resolved by the PTAB and parallel-court rulings rather than by anything that happened on Judge Frost's docket after 2014-06-10.

---

What I could not verify

• Huntington's answer, counterclaims, and any motion to dismiss/transfer (no docket entries located).
• Any dismissal, settlement, or judgment order terminating 2:13-cv-00785.
• Case numbers/outcomes for the '666, '574, and '084 IPRs, and the outcome of IPR2014-00786.
• Whether Huntington's case was formally dismissed as moot after the 2016 CBM final written decision.

If you need these closed out, the next step would be pulling the full PACER docket for 2:13-cv-00785 and the PTAB docket sheets for IPR2014-00682 and the '666/'574 petitions.

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

I have some initial leads. Let me dig into the actual district court docket and filings.

The docket listing shows several names but doesn't clearly separate plaintiff from defense counsel. Let me identify which attorneys represented IV II.

Short answer

I could not fully verify the plaintiff-side counsel list from the sources reachable here, and I want to be explicit about that rather than guess. Here is what the public docket shows, what I can and cannot attribute, and what is solidly documented.

The case: Intellectual Ventures II LLC v. Huntington Bancshares Inc. et al., No. 2:13-cv-00785-GLF (S.D. Ohio, Columbus Div.), filed Aug. 7, 2013, assigned to Judge Gregory L. Frost (Magistrate Judge Norah McCann King). Stay granted pending IPR on June 10, 2014 (ECF No. 61, granting ECF No. 53). Aggregators (Justia, Docket Alarm, Ex Parte) list the case as closed/stayed.

Attorneys appearing on the public docket for this case

The attorney-of-record field on the aggregator docket sheets (Justia/Docket Alarm) lists these names:

Important caveat: These aggregator pages collapse the counsel lists for all parties into a single "Represented By" field, and the underlying party-by-party headers were not recoverable in the search results. I therefore cannot reliably state which of these twelve are plaintiff's counsel, defense counsel, or local counsel, and I am not going to assign firm affiliations I have not verified. Two observations, offered as weak inferences only:

1. The names Alberti, Day, Feinberg, Lim, and Zolotorev travel together and match the roster profile of the patent-owner–side boutique that did a substantial volume of Intellectual Ventures work in this period (the group associated with Feinberg Day Alberti & Thompson LLP, Menlo Park, CA, formed by alumni of Russ August & Kabat). That is consistent with a plaintiff-side pro hac vice team, but I could not confirm it from a primary source.
2. Faruki (Faruki Ireland & Cox) is a known Ohio IP litigation boutique of the type used for local counsel. Party alignment unverified.

I also note that Kenneth R. Adamo (Kirkland & Ellis, New York) has publicly stated that he represented defendants as lead or co-counsel in the IV banking campaign including Huntington Bancshares (Adamo lead-trial-counsel list), which is a useful cross-check that the aggregator lists are incomplete — Adamo's name does not appear in the twelve-name list, so that list is not exhaustive. The same source confirms IV served infringement contentions on Huntington on Dec. 2, 2013 (asserting the '084 and '694 patents against IBM products) and that Huntington served invalidity contentions in January 2014.

What is solidly documented: the plaintiff's PTAB counsel (a different set of lawyers)

Since the district case was stayed pending IPR, the best-sourced IV II advocacy records for these five patents are the parallel IPRs, where each patent was farmed out to a different firm:

• U.S. Pat. 5,745,574 — Knobbe, Martens, Olson & Bear, LLP (Irvine, CA): lead Brenton R. Babcock (Reg. 39,592), backup Ted M. Cannon (Reg. 55,036), plus IV's Donald J. Coulman (IPR2014-00724) (PTAB mandatory notice).
• U.S. Pat. 6,715,084 — Sterne, Kessler, Goldstein & Fox P.L.L.C. (Washington, D.C.): lead Jonathan M. Strang, backup Lori A. Gordon (IPR2014-00682) (mandatory notice).
• U.S. Pat. 6,314,409 — Sterne Kessler: lead Lori A. Gordon, backup Omar Amin (IPR2014-00673) (mandatory notice).
• U.S. Pat. 6,826,694 — McAndrews, Held & Malloy, Ltd. (Chicago): lead Herbert D. Hart III, backup Aaron F. Barkoff, plus Donald J. Coulman (IPR2014-00786) (mandatory notice).
• In-house (PTAB appearances): Donald J. Coulman (Reg. 50,406), Tim R. Seeley (Reg. 53,575), James R. Hietala (Reg. 51,802) — Intellectual Ventures, Bellevue, WA.
• Defense-side IPR counsel (for contrast): Kutak Rock LLP (Omaha — Jason S. Jackson, Sean P. Connolly), Jones Day (Atlanta/Palo Alto — Geoffrey K. Gavin, Joseph Melnick), Senniger Powers LLP (St. Louis — Marc Vander Tuig).

Recommendation to close the gap

To get an authoritative plaintiff-only list, pull the full docket sheet and the Rule 7.1/disclosure and pro hac vice filings on PACER for S.D. Ohio No. 2:13-cv-00785 (or the RECAP/CourtListener copy), starting with the complaint (Aug. 7, 2013) and its signature block, plus the motion-to-stay papers (ECF Nos. 53, 58, 60‑2) and the order at ECF No. 61, whose service lists name the active attorneys for each side. I found no indication in the sources reviewed that filings in this case are sealed; the limitation is aggregator coverage, not sealing.

Bottom line: I can list twelve attorneys shown on the public docket for this case, and I can document IV II's PTAB counsel with precision, but I cannot presently verify which of the twelve were plaintiff's counsel of record, and I have declined to invent that attribution. Name / role / firm for those twelve remain unconfirmed pending the PACER docket sheet.

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

Let me dig into the docket sheet and identify which attorneys represent which party.

Let me look at the CourtListener docket and the stay motion papers, plus check individual attorney names.

Bottom line

I was able to retrieve the aggregator docket entry for Intellectual Ventures II LLC v. Huntington Bancshares Inc., No. 2:13-cv-00785-GLF (S.D. Ohio, Judge Gregory L. Frost; Mag. J. Norah McCann King), but not the underlying PACER docket text or the appearances/answer filings themselves. That matters here, because the Justia docket page for this case returns a single merged "Represented By" list that mixes both sides' counsel, so the names have to be sorted party-by-party using corroborating sources. I did that below, and I flag explicitly what is verified versus inferred.

Important correction up front: the attorneys most frequently associated with this case in search results — Charles J. Faruki and Donald E. Burton (Faruki Ireland & Cox) and the Feinberg Day Alberti & Thompson group — were on Intellectual Ventures' side, not Huntington's. Anyone reading the raw docket list should not attribute them to the defendants.

---

Defendants' counsel of record (Huntington Bancshares Inc. / The Huntington National Bank)

The names on the docket that do not appear on IV's counsel roster in the companion S.D. Ohio case are:

Basis for treating these four as defense-side: Justia's party-grouped attorney lists for the parallel IV banking case, Intellectual Ventures I/II LLC v. Fifth Third Bancorp, No. 1:13-cv-00378 (S.D. Ohio), contain a plaintiff-side roster of Alberti, Belloli, Burton, Day, Faruki, Feinberg, Lim, Thompson, Zolotorev (plus Glenn V. Whitaker) — and that case's own filings confirm Faruki and Burton signed as "Attorneys for Plaintiffs Intellectual Ventures I LLC and Intellectual Ventures II LLC." The Huntington docket list contains the same IV-side names plus Curphey, Davison, Hall, and Yurkiw, who appear nowhere on IV's side in Fifth Third. That is a strong but circumstantial basis for assigning those four to Huntington. The four names are also in alphabetical order, consistent with a separate party block. I could not confirm their firm affiliations, bar numbers, or whether any of them is lead vs. local counsel.

Because the case was stayed on June 10, 2014 (ECF No. 61, granting ECF No. 53) at a very early stage — no Markman hearing had occurred, fact discovery had not closed, and trial was more than a year out — the record is thin, and any later substitution or withdrawal of counsel would occur after the stay and would not be reflected in the material I retrieved. I found no evidence of any appearance, substitution, or withdrawal filing.

---

Plaintiff-side counsel (flagged so they are not mis-attributed)

These appear on the same docket list but are attributable to Intellectual Ventures II LLC, and are documented:

• Charles J. Faruki — trial counsel, Faruki Ireland & Cox P.L.L. (Dayton, Ohio; offices also in Cincinnati). Partner; well-known Ohio IP litigator and long-time local/regional counsel for IV in the 2013 banking campaign. Confirmed: he personally told Columbus Business First (Aug. 13, 2013) that IV "is employing Dayton law firm Faruki Ireland & Cox for suits against both Huntington and Fifth Third."
• Donald E. Burton — Faruki Ireland & Cox P.L.L., Ohio. Signed as counsel for IV I/II in the parallel Fifth Third case, No. 1:13-cv-00378 (S.D. Ohio), ECF No. 51 (Dec. 5, 2013).
• Ian N. Feinberg; M. Elizabeth Day; David L. Alberti; Marc C. Belloli; Sal Lim; Yakov M. Zolotorev — Feinberg Day Alberti & Thompson LLP (Menlo Park / Silicon Valley, CA), a patent-litigation boutique that regularly staffed IV's district-court campaign. Inference, not confirmation: these names appear on the IV-side roster in the companion Fifth Third docket, but I did not retrieve a signature block tying them to the Huntington case specifically.

---

Related PTAB-side counsel (context; petitioner identity not confirmed)

The IPRs attacking the asserted patents (e.g., IPR2014-00673 on the '409 patent, IPR2014-00682 on the '084 patent) generated filings that list the Huntington case as a related matter. Counsel on those petitioner-side filings included:

• Jason S. Jackson (Reg. No. 56,733) — lead counsel, Kutak Rock LLP, Omaha, NE; back-up Sean P. Connolly (Reg. No. 56,668), Kutak Rock, Omaha.
• Geoffrey K. Gavin (Reg. No. 47,591) — Jones Day, Atlanta, GA; and Joseph Melnick, Jones Day, Palo Alto, CA.
• Marc Vander Tuig (Reg. No. 57,964) — Senniger Powers LLP, St. Louis, MO.

IV's IPR-side counsel was Sterne, Kessler, Goldstein & Fox P.L.L.C. (Washington, D.C.) in some proceedings and Knobbe, Martens, Olson & Bear, LLP (Irvine, CA) in others, with in-house support from Intellectual Ventures (Bellevue, WA). Caveat: I could not confirm from the retrieved documents that Huntington itself was the petitioner in those IPRs — the filings list the Huntington litigation as a related matter, which is equally consistent with a co-defendant bank being the petitioner. Do not assume Jackson/Gavin/Vander Tuig were Huntington's district-court counsel without pulling the appearances.

---

What I could not verify (and how to close the gap)

• Firm, office, and role for Curphey, Davison, Hall, and Yurkiw — not sourced. PACER Docket Report for 2:13-cv-00785, plus ECF Nos. 1–61 (especially the appearances, the Rule 7.1 corporate disclosures, the answer/counterclaims, and the motion-to-stay briefs at ECF 53/60), would resolve this.
• Whether all four are actually Huntington's counsel — inferred, not confirmed.
• Final disposition — Justia shows the June 10, 2014 stay order as the last substantive entry in the available document list, and one aggregator labels the case "Closed," but I found no dismissal order, judgment, or termination entry. Consistent with the existing case summary: stay granted pending IPR; final disposition unconfirmed.

Sources retrieved: Justia Docket (dockets.justia.com/docket/ohio/ohsdce/2:2013cv00785/165036); Justia Docket for IV I/II v. Fifth Third Bancorp, 1:13-cv-00378; CourtListener/RECAP PDF of ECF No. 51 in 1:13-cv-00378 (Faruki/Burton signature block); Columbus Business First, Aug. 13, 2013 ("Huntington hit with patent suit targeting several big banks"); S.D. Ohio stay opinion at docs.justia.com (ECF No. 61); USPTO PTAB petition papers in IPR2014-00673 and IPR2014-00682 (mandatory notices; petitioner counsel lists).