International Business Machines Corporation v. Intellectual Ventures I LLC

I'll research this case and the patent at issue.

Case Overview — IBM Corp. v. Intellectual Ventures I LLC, IPR2014-01516 (PTAB), U.S. Patent 7,757,298

Parties. The petitioner, International Business Machines Corporation, is the Armonk, New York operating company and one of the largest patent holders in the world; its

I'll research this case and its underlying litigation. Let me start with parallel searches.

The PTAB metadata points to a broader dispute. Let me locate the underlying district court litigation involving IBM and IV.

Let me get the actual PTAB papers and the related-matters section of the petition.

I'll search for press coverage of this specific IPR and the related litigation.

Press coverage assessment

Searches across the case caption, the case number (IPR2014-01516), the patent number (7,757,298), and the party names did not surface any Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF, or JD Supra article reporting on this IPR itself. That is unsurprising: the proceeding ended at the institution stage on 2015-08-24, produced no final written decision, no claim construction ruling, no damages or settlement, and therefore no verdict or monetary figure for the trade press to report. On this record I found no reported damages sought or awarded, no settlement terms, and no market-impact commentary tied to IPR2014-01516.

The only contemporaneous mention of the proceeding I located is a docket roundup: the National Law Review "PTO Litigation Center Report – September 18, 2014" listed IPR2014-01516 as a new PTAB filing dated 9/17/2014, identifying U.S. Patent 7,757,298 ("Method and Apparatus for Identifying and Characterizing Errant Electronic Files"), patent owner Intellectual Ventures I LLC, petitioner International Business Machines Corporation, and Tech Center 2400. That entry is a filing notice, not analysis, and it says nothing about the merits or the later denial.

The denial itself is recorded and later cited in the district court record rather than in the press: the opinion in Intellectual Ventures I LLC v. Erie Indemnity Co. (W.D. Pa. 2015), available via CourtListener, notes that the '298 patent was then subject to PTAB proceedings and that "the PTAB declined to initiate an inter partes review proceeding against the '298 Patent on 35 U.S.C. §§ 102 or 103 grounds. See Int'l Bus. Mach. Corp. v. Intellectual Ventures I LLC, IPR2014-01516 (P.T.A.B. Aug. 24, 2015)." The most substantive published commentary on the '298 patent came from that parallel § 101 fight, not the IPR: Patent Docs (Michael Borella, 2017-11-14) analyzed the Federal Circuit's affirmance that the claims were abstract under Alice, quoting the district court's "librarian tasked with marking and removing books containing pornographic material" analogy and the Federal Circuit's holding that the claims were "directed to the identification of unwanted files in a particular field (i.e., a computer network)." The same piece was cross-posted by JD Supra. Notably, that commentary treats the patent as invalidated on eligibility grounds and does not frame the PTAB's refusal to institute as a win for IV — a divergence worth flagging, since the IPR denial and the later § 101 dismissal point in opposite directions on the patent's fate.

One caveat on the broader picture: IBM's 2013–2015 PTAB campaign against IV's portfolio (dozens of petitions, largely filed while IV was suing banks such as JPMorgan Chase, SunTrust, Commerce Bancshares and PNC) drew press attention in the financial-services context. Law360 covered the related IV v. JPMorgan Chase litigation, including a 2017-07-05 report that JPMorgan told a New York federal court IV could not keep its suit alive by "pinning it to a previous, failed challenge to the patent's validity that IBM brought to the U.S. Patent Trial and Appeal Board." I did not find any comparable article discussing IPR2014-01516 or the '298 patent, and the petitioner-side narrative of IBM as a hired-gun challenger appears in case filings — e.g., IBM's amended mandatory notices in the companion IPR2014-00673 listing nine IV bank suits in which IBM was not a defendant — rather than in press reporting I could verify.

Sources

• INTELLECTUAL VENTURES
• PTO Litigation Center Report – September 18, 2014 - September 02, 2024
• Intellectual Ventures I LLC v. Erie Indemnity Co. (Fed. Cir. 2017)
• Federal Circuit – Page 41 – Patent Docs
• Patentable Subject Matter – Page 22 – Patent Docs
• Intellectual Ventures I LLC v. Erie Indemnity Co. – CourtListener.com - 📣 The Wait is Over
• U
• IBM v
• IPR2014- 00171; Inter Partes Review of Patent No
• INTELLECTUAL VENTURES I LLC v. ERIE INDEMNITY COMPANY
• Intellectual Ventures I LLC v. Erie Indem. Co. - Intellectual Ventures I LLC v. Erie Indem. Co.
• Intellectual Ventures I LLC v. Erie Indemnity Co. (Fed. Cir. 2017) | JD Supra - Intellectual Ventures I LLC v. Erie Indemnity Co. (Fed. Cir. 2017)

I'll research the counsel of record for IBM (the petitioner/plaintiff) in IPR2014-01516.

Bottom line up front

I could not verify the counsel of record for IBM in IPR2014-01516 from retrievable sources, and I am not going to name attorneys on inference. Here is what I can establish, what I cannot, and exactly where the answer is documented.

A framing correction that matters for the research: the case in the metadata is not a district-court infringement action. IPR2014-01516 is an inter partes review at the PTAB, so there is no "plaintiff" in the Rule 7.1/Fed. R. Civ. P. 11 sense. The party aligned with "plaintiff" is the petitioner, International Business Machines Corp.; the "defendant" is the patent owner, Intellectual Ventures I LLC. Counsel of record is therefore established by two PTAB papers, not by a civil docket:

• Paper 2 — Power of Attorney (filed Sept. 17, 2014, 3 pages), which identifies IBM's counsel and typically designates lead and back-up counsel under 37 C.F.R. § 42.10(a).
• Paper 4 — Patent Owner Submission of Mandatory Notice Information under 37 C.F.R. § 42.8(a) (filed Oct. 8, 2014, 5 pages), which does the same for IV I.

Both papers are listed on the face of the proceeding's document set and are indexed in the exhibit/reference listings reproduced at patents.google.com/patent/US10235442 and shuster.com/pat/US10235442.pdf. They are public, non-sealed PTAB papers — so the answer is available, just not in any secondary source I could reach.

What the record does confirm

Note that the metadata's termination date of Aug. 24, 2015 corresponds to the denial of IBM's request for rehearing, not the initial institution denial (Mar. 30, 2015). IBM therefore lost twice on the merits before the Board.

One unverified data point on IBM-side counsel

A set of "significant lead trial counsel representations" posted at kradamo.com lists "IBM v. IV I LLC, Inter Partes Review of 7757298, IPR2014-01516 (USPTO)" and, in the adjacent description column, the phrase "Acting as co-trial counsel to lead counsel."

I am flagging this rather than using it, for three reasons: (a) the PDF is an attorney's self-reported CV, not a court or PTAB record; (b) the OCR fragment does not make clear whether the "co-trial counsel to lead counsel" description attaches to this matter or to a neighboring entry; and (c) it does not state which side he represented. It is a lead worth chasing, not a fact I would put in a brief-adjacent memo. I also could not confirm the firm affiliation for that attorney from the retrieved material.

I did not find any Law360, Reuters Legal, or court-opinion citation naming IBM's IPR counsel for the '298 patent. The reported decisions that mention IPR2014-01516 do so in a footnote for the proposition that the Board declined to institute — e.g., Intellectual Ventures I LLC v. Erie Indemnity Co., 134 F. Supp. 3d 877 (W.D. Pa. 2015), and the later Erie opinion available at courtlistener.com/opinion/7321480 — and none reach counsel.

How to close the gap definitively

1. PTAB End-to-End / PTAB Center (P-TACTS) — docket for IPR2014-01516; open Paper 2 (IBM Power of Attorney) and Paper 4 (IV I Mandatory Notice). These are the controlling documents and are not sealed. Paper 2 will name lead counsel and back-up counsel and, because IBM is a corporate petitioner, will also identify whether counsel was in-house (IBM's Armonk, NY IP law department) or outside firm.
2. Paper 1 (the Petition, 65 pages), signature block at the end — the practitioner who signed the petition under § 42.104(b) is generally lead counsel; the cover page typically carries the firm name, address, and telephone/fax block.
3. Paper 8 (Request for Rehearing, 18 pages), signature block — confirms who remained of record after the March 2015 denial.
4. If you need the "plaintiff-side" counterpart from the related litigation rather than the IPR: the '298 patent was also subject to CBM2014-00032 (PNC Financial Services Group / PNC Bank v. Intellectual Ventures I), decided May 22, 2014, and was asserted in the W.D. Pa. Erie action. Those dockets will show IV's litigation counsel and the defendants' PTAB counsel, which is often the same team.

Explicit caveat

I have not identified any attorney as "counsel of record" in IPR2014-01516, because I could not open the Power of Attorney or the Petition signature block within this research session. Nothing above should be cited as a finding that a specific lawyer appeared for IBM in this proceeding. If you can pull Papers 1, 2, and 8 from PTAB Center, I can characterize each attorney's role, firm and office, and litigation track record accurately.

I'll research counsel of record for the patent owner/defendant side (Intellectual Ventures I LLC) in IPR2014-01516.

Counsel of Record — Defendant Side (Intellectual Ventures I LLC, Patent Owner)

Threshold point on party role. In an IPR there is no "defendant" in the Rule 12 sense: IBM is the petitioner and Intellectual Ventures I LLC ("IV I") occupies the responding/defending seat as Patent Owner. This section therefore covers IV I's counsel of record. (If you instead need IBM's petitioner-side counsel for IPR2014-01516, that is a separate set of attorneys and I was not able to verify them in this pass either — flagging so the record isn't conflated.)

Bottom line: not verified in this pass

I was unable to confirm, from open sources, the specific attorneys of record for IV I in IPR2014-01516. I am not going to populate the table with names on inference. Two documents in the public PTAB file contain the answer definitively, and both are referenced in the exhibit listing reproduced in the patent's later file history (via Justia Patents / US 10,235,442 and shuster.com PDF):

These should be pulled directly from PTAB E2E (formerly PRPS) under IPR2014-01516, or from a Docket Alarm/LEX Reception PTAB docket for the case. Nothing in this proceeding was sealed — it terminated before institution, so the entire file is public — so this is purely an access gap, not a confidentiality barrier.

What can be said with sourcing: IV's counsel architecture in this period

Contemporaneous filings by IV entities in sibling PTAB matters in 2014–2015 show a consistent two-tier structure — outside PTAB specialists in Washington, D.C., plus IV's in-house PTAB team in Bellevue, Washington. From IV II's mandatory notices in IPR2015-01323 (filed 2015-06-22), available on Docket Alarm:

• Lori A. Gordon (Reg. No. 50,633) — lead counsel; Sterne, Kessler, Goldstein & Fox P.L.L.C., 1100 New York Avenue N.W., Washington, D.C. 20005. Sterne Kessler is one of the highest-volume PTAB patent-owner firms; Gordon led a substantial share of IV's IPR defense work in this era.
• Jonathan M. Strang (Reg. No. 61,724) — back-up counsel, same firm.
• Donald J. Coulman (Reg. No. 50,406) and Tim R. Seeley (Reg. No. 53,575) — Intellectual Ventures, 3150 139th Avenue S.E., Bellevue, WA 98005 — i.e., IV in-house counsel listed in the same notice.

Important caveat: that sourcing establishes IV's typical PTAB representation in this window; it does not establish that Gordon, Strang, Coulman, or Seeley appeared in IPR2014-01516. The same-architecture pattern repeated across IV's 2014–2017 proceedings (by 2017–2018, for example, IV II's lead PTAB counsel had shifted to Brad M. Scheller at Mintz, Levin, Cohen, Ferris, Glovsky and Popeo, P.C., with William Meunier and Michael T. Renaud as back-up — per IV II's updated mandatory notices in IPR2017-01537), which is exactly why inference here would be unsafe. Treat the names above as leads to check against Papers 4 and 5, not as findings.

I also found no Law360, Reuters, Bloomberg Law, or other press item naming counsel in this IPR — consistent with the news section's conclusion that the proceeding drew no trade-press coverage. Note that the '298 patent did have another, better-documented PTAB lifecycle: Symantec Corp. v. Intellectual Ventures I LLC, IPR2016-01433, where institution was granted 2017-01-18 and a final written decision issued 2018-01-05 — if you need a confirmed roster of the lawyers who actually defended the '298 patent claims, that file is the more productive target.

Flag: date/label discrepancy in the case metadata

The metadata records the case as terminated 2015-08-24 with "institution denied on the merits." The docket listing shows this is off by one paper:

• Paper 7 — Decision Denying Institution of Inter Partes Review, filed 2015-03-30 is the actual merits denial (the Board's § 314(a) determination on the §§ 102/103 grounds).
• Paper 9 — Decision Denying Request for Rehearing, dated 2015-08-24 is the rehearing denial arising from IBM's request for rehearing (Paper 8, filed 2015-04-29).

So 2015-08-24 is the correct termination date, but the merits denial occurred roughly five months earlier. The earlier news section's phrasing — "denied institution on the merits on August 24, 2015" — conflates the two. The Erie Indemnity opinion's citation to "(P.T.A.B. Aug. 24, 2015)" (via CourtListener) appears to point to the rehearing decision, not the institution decision. Worth correcting before this goes into anything filed or published.

Recommended next step

Pull Paper 4 (Oct. 8, 2014) and Paper 5 (Jan. 5, 2015) from PTAB E2E and I can finalize the attorney table with names, registration numbers, firm addresses, and roles — plus the same for IBM's petitioner-side counsel from the petition's Power of Attorney (Paper 2), which is also in the file.