Intellectual Ventures II LLC v. U.S. Bancorp et al.

I'll research this case across multiple sources to build a well-grounded overview.

Let me verify the patent details, procedural history, and IPR linkage.

Let me verify the patent titles and the full IPR/CBM picture.

Case Overview and Background

Intellectual Ventures II LLC v. U.S. Bancorp, No. 0:13-cv-02071 (D. Minn., filed July 31, 2013)

The parties. Intellectual Ventures II LLC ("IV II") is not an operating company but an assertion vehicle inside the Intellectual Ventures patent-holding empire — the Bellevue, Washington–based firm founded by former Microsoft CTO Nathan Myhrvold, widely described as the largest and most prominent non-practicing entity/patent assertion entity in the market. IV II is a distinct legal entity from Intellectual Ventures I LLC; the two entities were used in parallel to assert different portfolios (IV I handled the Capital One/antitrust-facing litigation, IV II handled the security/cryptography family at issue here). U.S. Bancorp (NYSE: USB) is the Minneapolis-based bank holding company and the parent of U.S. Bank, one of the largest national banks in the United States; it is the quintessential accused "end-user" defendant — a regulated financial institution accused of infringing through systems it buys or builds, not through making the accused technology. Both defendants are named in the caption and are effectively the same corporate family. IV II's PTAB filings identify its counsel as Knobbe, Martens, Olson & Bear (Brenton Babcock, Ted Cannon) with in-house counsel from Intellectual Ventures Management (Donald Coulman, Tim Seeley); U.S. Bank's district-court counsel is not something I could verify from the public record I retrieved, and I would treat the reported fact that U.S. Bank and the lead IPR petitioner shared a law firm (Kirkland & Ellis) as a secondary-source claim rather than confirmed docket fact.

The accused technology and patents. This case was part of IV's 2013 "banking campaign" — a rapid-fire wave of roughly a dozen-plus suits filed against financial institutions beginning in late May 2013 (First National Bank of Omaha (D. Neb.), PNC, Capital One, Bank of America, BBVA Compass, Commerce Bancshares, JPMorgan Chase, SunTrust, then U.S. Bancorp, Huntington Bancshares, HSBC USA, and M&T Bank). IV publicly stated it approached banks about licensing and sued after negotiations failed. The accused technology was not a discrete product but core banking infrastructure: online banking systems, ATM/transaction processing, data-encryption and public-key-infrastructure ("PKI") security, and — critically — the banks' compliance with the Payment Card Industry Data Security Standard (PCI-DSS). Reporting on the parallel complaints (e.g., against First National Bank of Omaha) indicates IV's theory was that complying with PCI-DSS encryption requirements itself infringes; IV's complaints in those cases expressly pointed to PCI-DSS-compliant systems, and IV sought only damages, not an injunction. For U.S. Bank specifically, I could not verify from the public record I retrieved the precise accused products/services pleaded, though the patents and the campaign theory indicate the same online-banking/encryption/PCI-DSS theory was in play. The five asserted patents are: U.S. 5,745,574 ("Security infrastructure for electronic transactions") — a PKI/certification-authority patent covering hierarchical certificate issuance, validation and revocation-list updating (originally Entegrity Solutions); U.S. 6,826,694 ("High resolution access control") — a firewall patent claiming packet filtering based on payload contents of an initial packet plus at least one other packet (invented at AT&T's GeoPlex project); U.S. 6,715,084 ("Firewall system and method via feedback from broad-scope monitoring for intrusion detection") — intrusion detection using broad monitoring feedback; U.S. 6,314,409 ("System for controlling access and distribution of digital property") — digital-property access/distribution control; and U.S. 7,634,666 ("Crypto-engine for cryptographic processing of data") — a hardware/firmware crypto-processing engine.

Procedural posture, venue, and why the case matters. The case was assigned to Judge Ann D. Montgomery, with the docket suffix "ADM/JJG" reflecting Magistrate Judge Jeanne J. Graham; the August 7, 2014 stay ruling is reported as issued by Magistrate Judge Janie S. Mayeron, which suggests a reassignment later in the case (a discrepancy I flag as not fully confirmed). Venue was significant because the District of Minnesota is U.S. Bancorp's home district (Minneapolis headquarters) — a natural forum for IV and one that other banks in the campaign were not subject to. The case's defining feature is its IPR/CBM linkage: U.S. Bank moved to stay pending inter partes review of all asserted patents, and the court granted the stay on August 7, 2014, denying IV's motion to strike U.S. Bank's reply brief (see Akin Gump's report on the ruling: akingump.com). Notably, the court declined to condition the stay on an estoppel agreement with the third-party petitioner, and the ruling tracked the reasoning of the parallel stay orders in the sister cases (Commerce Bancshares, W.D. Mo.; First National Bank of Omaha, D. Neb.; Huntington Bancshares, S.D. Ohio), which became frequently cited authority for the "liberal policy in favor of granting stays" pending IPR. The IPRs and CBMs were driven largely by third parties, not U.S. Bank alone: IBM filed a dozen IPR petitions against the five patents (e.g., IPR2014-00587 ('694, final written decision Sept. 23, 2015, finding claim 1 not shown unpatentable after IV established a pre-1996 reduction to practice), IPR2014-00672 ('409), IPR2014-00682 ('084)), Compass Bank filed IPR2014-00786 ('694), and JPMorgan Chase filed CBM2014-00157 ('409, instituted Jan. 14, 2015) and CBM2014-00160 ('574, denied Jan. 29, 2015). The campaign also generated Federal Circuit precedent on the scope of AIA § 18(b)(2) interlocutory review: in Intellectual Ventures II LLC v. JPMorgan Chase & Co. (Fed. Cir. Apr. 1, 2015), the court dismissed JPMC's appeal for lack of jurisdiction, holding that a CBM "proceeding" does not exist until the PTAB institutes review. On the merits elsewhere, the patents fared badly: Judge Hellerstein in S.D.N.Y. granted summary judgment on April 28, 2015 invalidating the '694, '084, and '409 patents under § 101, and that ruling collaterally estopped IV's '409/'084 claims in the Capital One litigation (affirmed, Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017)). The case is also a landmark in the NPE-vs.-financial-services story: it prompted industry warnings of a "domino effect" across banks, mooted PCI-DSS standard-essential-patent and PCI SSC covenant-not-to-sue issues, and fed into the FFIEC's consideration of vendor-indemnification approaches and the post-2013 White House/legislative push on patent assertion. Disposition: the docket shows the case closed on August 7, 2014, the date of the stay order; consistent with the sister cases, this was almost certainly an administrative closure/dismissal without prejudice subject to reopening after the IPRs, and I could not confirm any final judgment, settlement, or reopening — a fact worth stating plainly rather than assuming.

Sourcing note: the party identities, patent numbers, filing date, and the 2013 banking-campaign scope are well documented (USPTO § 290 report; PTAB mandatory notices; Federal Circuit opinion 14-1724). The stay ruling's reasoning and date come from secondary sources (Akin Gump; Studicata case summary), not a verified opinion PDF, and the exact accused products for U.S. Bank, the identity of the assigned judge at the time of the stay, and the final disposition are not confirmed in the sources I reviewed.

I'll research this case thoroughly using multiple targeted searches.

I'll research the docket and counsel for Intellectual Ventures II LLC in this case.

I found the complaint's signature block. Let me verify the district court docket entries and any later substitutions of counsel.

Let me check the CourtListener docket for this case directly to confirm appearances and any substitution of counsel.

Counsel of Record for Plaintiff Intellectual Ventures II LLC

Bottom line: The counsel I can confirm for this case are those who signed the complaint (D.I. 1, filed July 31, 2013). Plaintiff IV II used a two-tier structure typical of its 2013 campaigns: a California patent-litigation boutique (Feinberg Day Alberti & Thompson LLP, Menlo Park) as lead trial counsel appearing pro hac vice, plus a Minnesota patent firm (Vidas, Arrett & Steinkraus, P.A., Eden Prairie) as local counsel. Those are the names on the signature block; I was unable to retrieve the full PACER docket sheet to verify later pro hac vice admissions, substitutions, or withdrawal entries, so treat "counsel of record" here as "counsel confirmed on the filed complaint."

Confirmed from the Complaint (D.I. 1, July 31, 2013)

Sources: complaint signature block as reproduced at docshare.tips ("Intellectual Ventures II v. U.S. Bancorp et al."); Federal Circuit docket listing for No. 2014-1724; W.D. Mo. docket excerpts for No. 13-cv-4160.

Related PTAB counsel — not district court counsel of record

Because this case was stayed pending IPR (metadata), you may see different names listed as IV II's representatives in the inter partes reviews of these same patents. These are PTAB appearances, and should not be conflated with the D. Minn. docket:

• Sterne, Kessler, Goldstein & Fox PLLC (Washington, D.C.) — Jonathan M. Strang (lead, IPR2014-00682 re '084) and Lori A. Gordon (lead, IPR2015-01322 re '409), in IV II's 37 C.F.R. § 42.8 mandatory notices.
• Intellectual Ventures in-house — Donald J. Coulman and Tim R. Seeley (Bellevue, WA) listed as backup/patent-owner counsel.
• Knobbe, Martens, Olson & Bear LLP (Irvine, CA) — Brenton R. Babcock, Ted M. Cannon, Scott Raevsky, Bridget A. Smith, on the '574 IPR (IPR2014-00724) and related CBMs.

Gaps and caveats

• No confirmation of post-2013 appearances. I could not pull the live PACER/CourtListener docket sheet (docket no. 0:13-cv-02071-ADM) to confirm pro hac vice grants, notices of substitution, or withdrawals. It is possible additional or replacement counsel appeared in 2014 before the case was administratively closed/stayed; I have no evidence of any and will not speculate.
• One aggregator lists the case as closed 08/07/2014 (patent docket summaries), which sits awkwardly with the "stayed pending IPR; final disposition unconfirmed" characterization in the case metadata. I could not verify which is correct.
• Firm continuity. Feinberg Day Alberti & Thompson and Vidas, Arrett & Steinkraus have both since gone through name/roster changes; treat the firm names as those appearing in the 2013 filing.
• Nothing suggests any in-house IV attorney entered an appearance on the district court docket in this case; IV's in-house names appear only in the PTAB papers.

Counsel of Record for Defendants U.S. Bancorp / U.S. Bank — IV II v. U.S. Bancorp, No. 0:13-cv-02071 (D. Minn.)

Important sourcing caveat up front: I could not retrieve a live PACER docket sheet or RECAP docket entry listing the appearances in this specific case during this research pass (the case is a 2013–2014 file, and the docket appears only in secondary databases). The names below come from related PTAB filings, contemporaneous blog summaries of the stay order, and one attorney's own published engagement list. I am flagging confidence levels for each attorney rather than presenting an unverified roster as fact. Anyone needing a definitive list should pull the D.I. 1–30 range on PACER (the "Attorney Appearance" and Answer entries).

Defendants

US Bancorp and U.S. Bank (U.S. Bank National Association) — a single corporate family, jointly defended. The docket caption and all PTAB related-matter notices name them together as "U.S. Bancorp and U.S. Bank."

Attorneys identified with reasonable confidence

Kenneth R. Adamo — Kirkland & Ellis LLP (Chicago / New York) — lead counsel (probable).

• His published "Significant Lead Trial Counsel Representations" list expressly names U.S. Bancorp (January 10, 2014) in connection with the IV banking campaign and the '694 patent contentions, alongside the parallel Intellectual Ventures II v. JPMorgan Chase litigation (S.D.N.Y.). See Adamo's own CV: http://www.kradamo.com/ken_files/significantleadtrialcounselrepresentationsjuly2019.pdf
• Registered patent attorney (Reg. No. 27,299); long-time Kirkland IP trial/PTAB lead, including as lead counsel for IBM in the IV II IPR proceedings on the '409, '084, and '666 patents (IPR2014-00672/-673, -00682; IPR2014-00722) and the resulting Federal Circuit appeal (Fed. Cir. 15-1837, Rule 36 affirmance, Feb. 2016).
• Note: The same list also describes him as defense lead/co-counsel across the JPMC case, where the defense team was Kirkland + Durie Tangri (Clement Roberts, Michael Feldman, Mark Lemley) + Dontzin Nagy & Fleissig (Tibor Nagy). Those two firms are documented counsel in the JPMC case; I did not find confirmation they appeared for U.S. Bancorp in the Minnesota case, so I am not attributing them here.

Brent P. Ray — Kirkland & Ellis LLP (Chicago) — defense team (likely, unconfirmed for this docket).

• Documented as part of the Kirkland defense team in the related IV banking litigation and as a named defense attorney in the parallel IV II / JPMC matter and related PTAB papers (brent.ray@kirkland.com). Kirkland Chicago PTAB notices in the IV banking campaign list him with Adamo. I could not confirm his specific appearance in the Minnesota docket.

Local counsel — not confirmed

• No Minnesota firm is confirmed on the record from the sources available to me. U.S. Bank is a repeat client of several Twin Cities firms (e.g., Winthrop & Weinstine lists "U.S. Bank, National Association" as a representative client), and Greene Espel's Sybil L. Dunlop has litigated a patent claim against U.S. Bank on the plaintiff side (not this matter) — none of that establishes an appearance here. Treat local counsel as unverified.

In-house counsel

• Not identified. U.S. Bancorp's legal department (Minneapolis) would have overseen the matter, but no in-house name appears in the materials I could reach.

Related counsel worth distinguishing (IPR petitioners — NOT defendant counsel)

Because the court's stay order (M.J. Mayeron, Aug. 7, 2014) turned on a joint defense agreement between the defendants and the IPR petitioner, it is important not to conflate these:

• Kutak Rock LLP (Jason S. Jackson, Sean P. Connolly — Omaha) — petitioner counsel, Compass Bank et al., IPR2014-00786 ('694).
• Jones Day (Geoffrey K. Gavin — Atlanta) — petitioner counsel.
• Senniger Powers LLP (Marc Vander Tuig — St. Louis) — petitioner counsel.
• These represent the petitioners (Compass Bank et al.), who are separate parties; the blog summary of the stay order states defense counsel acknowledged a joint defense agreement but represented the defendants had "absolutely no involvement" in the IPRs. Docket Report blog, Intellectual Ventures II LLC v. US Bancorp et al., No. 0-13-cv-02071 (D. Minn. Aug. 7, 2014) (Mayeron, M.J.): http://docketreport.blogspot.com/2014/08/defendants-joint-defense-agreement-with.html

For completeness on the other side (plaintiff IV II, not asked but useful context): the PTAB mandatory notices show IV II's district-court team straddled several firms — Sterne, Kessler, Goldstein & Fox on the '084, McAndrews, Held & Malloy on the '694, and Knobbe Martens on the '574 CBM.

Contradiction / confusion to flag

• A Delaware file stamp "Case 1:13-cv-02071-GMS" (Judge Gregory M. Sleet) appears on exhibits in later IV-related CBM petitions (e.g., CBM2014-00188). The case number is identical in its numeric portion to the Minnesota case but the district and judge are different; it appears to be a separate IV docket, not this Minnesota action. The Minnesota case is consistently cited in every PTAB related-matter notice as 0:13-cv-02071 (D. Minn.) and was assigned to Judge Ann D. Montgomery (ADM), referred to Magistrate Judge Janie S. Mayeron. I would not treat the "GMS" citation as an appearance in this case.
• The AI-compiled case index shows the matter as "Closed (08/07/14)," which corresponds to the August 7, 2014 stay/administrative-closure date rather than a merits disposition — consistent with the existing summary that final disposition was never confirmed.

Bottom line

The best-supported identification is Kirkland & Ellis LLP (Kenneth R. Adamo, with Brent P. Ray likely on the team) as lead defense counsel for U.S. Bancorp/U.S. Bank, with Minnesota local counsel unnamed and unconfirmed in the available sources. If a definitive roster is required, the appearances will be in the first ~30 docket entries of 0:13-cv-02071-ADM; PACER is the authoritative source and I was unable to pull it directly here.