International Business Machines Corporation v. Intellectual Ventures II LLC

I'll research this case before drafting. Note upfront: the metadata frames this as "litigation," but IPR2014-00180 is a PTAB inter partes review — I'll verify and reconcile that with any parallel district court action.

Good progress. Now let me pin down the FWD outcome, the appeal, and the parallel district court cases.

Let me pull the Final Written Decision text and verify the appeal outcome and certificate.

Important framing correction

IPR2014-00180 is not a district court infringement action. It is an inter partes review petition filed by IBM against an Intellectual Ventures patent at the USPTO's Patent Trial and Appeal Board (Alexandria, VA). The actual infringement litigation involving this patent was a separate, parallel campaign in which IV sued IBM's customers — most prominently Intellectual Ventures II LLC v. JP Morgan Chase & Co., No. 1:13-cv-03777-AKH (S.D.N.Y.) before Judge Alvin K. Hellerstein. The two proceedings are tightly linked, and the IPR exists because of the litigation. I've summarized both and flagged where the record is thinner than I'd like.

Parties and the patent/technology at issue

IBM is a global operating company (hardware, software, IT services) — and here it plays a dual role: it is the IPR petitioner and the original equipment manufacturer of the accused product. Intellectual Ventures II LLC is an assertion vehicle affiliated with Intellectual Ventures, the Bellevue, Washington–based patent-holding/licensing fund founded in 2000 by Nathan Myhrvold and Edward Jung. IV II does not manufacture products; it monetizes acquired patents through licensing and litigation, i.e., the classic NPE/PAE profile. (Note that IV uses a family of sibling entities — e.g., "Intellectual Ventures I LLC" appeared in the parallel Citigroup suit — so the "IV II" designation matters for docket hygiene.)

The single patent at issue is U.S. Patent No. 7,634,666 (the "'666 patent"), which IV acquired from outside its own R&D. One-line technical sketch: a hardware "crypto-engine" — a co-processor used alongside a host processor that performs both RSA and elliptic-curve (ECC) public-key cryptography using shared modular-arithmetic hardware (a multiplication unit, addition unit, sign-inversion unit, memory/SRAM block, and an interface controller that generates "op-code" signals selecting RSA or ECC mode). Claim 1 and the asserted claim 4 recite this architecture; the PTAB's FWD describes the invention as a co-processor "for executing both Rivest-Shamir-Adleman ('RSA') and Elliptic Curve Cryptography ('ECC') public key encryption algorithms" sharing a common arithmetic operation (FWD, IPR2014-00180).

The accused technology: IBM's PCIe Cryptographic Coprocessor cards — the IBM 4765 (a/k/a "Y4," Crypto Cards 3/4) and IBM 4767 (a/k/a "Sentry," Crypto Card 5) — as deployed by bank defendants in PIN processing, key management, and SSL/TLS security. IV's infringement theory pointed to an "Otello" microchip as the claimed arithmetic unit and the card's MCPU as the claimed cryptographic controller, arguing the card was capable of executing ECC and RSA based on op-code signals. JPMC countered that Otello performs only RSA (ECC capability was added via MCPU software in 2010), and that no op-code is sent to Otello directly. Notably, IV's complaint against Commerce Bancshares (W.D. Mo. 2:13-cv-04160) accused an "IBM System z10 Business Class Server" on the same '666 patent — showing IV varied its accused instrumentation against the same IBM crypto technology.

Procedural posture and venue

The IPR: IBM filed the petition on November 20, 2013 (roughly five months after IV sued JPMC on June 4, 2013), challenging claims 1–11 on §103 grounds — the FWD's claim table reflects, for example, a Matsuzaki-and-Dworkin combination against claim 10. The Board instituted on April 16, 2014, and the Final Written Decision issued April 3, 2015, written by APJ David C. McKone, with APJs James A. Tartal and Miriam L. Quinn (Patexia case summary; FWD link above). The FWD applied the broadest reasonable interpretation standard then in force, citing In re Cuozzo Speed Techs., 778 F.3d 1271 (Fed. Cir. 2015) — a construction posture deliberately broader than the district court's Phillips-based Markman. IBM appealed to the Federal Circuit (No. 2015-1837); the court issued a Rule 36 summary affirmance on February 5, 2016 (argued for IBM by Kenneth R. Adamo of Kirkland & Ellis), per the Rule 36 judgment PDF as reported by IPBiz. PTAB records show the proceeding terminated February 7, 2018, on issuance of the IPR certificate (per your case metadata).

Venue matters here in two distinct ways. First, the IPR forum is the PTAB, not a court: no jury, no presumption of validity, preponderance standard, and (then) BRI claim construction. Second, the litigation venue was S.D.N.Y., a finance-heavy district chosen by IV to reach bank defendants, and Judge Hellerstein refused to stay the case pending PTO review — a refusal the Federal Circuit declined to review on interlocutory appeal, holding it lacked jurisdiction under AIA §18(b)(2) because no CBM proceeding had yet been instituted (Intellectual Ventures II LLC v. JPMorgan Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015), dismissing appeal from 2014 WL 10919562 (S.D.N.Y. Aug. 11, 2014)). That non-stay made the IPR's outcome consequential in real time.

Why the case is notable

This is a textbook supplier-defends-customers IPR: rather than being sued directly, IBM used AIA post-grant review to attack the patent IV was wielding against IBM's banking customers. It is part of the 2013–2015 wave of IV financial-services suits over crypto/data-security patents — IV II v. JPMorgan Chase (S.D.N.Y.), IV v. Commerce Bancshares (W.D. Mo.), IV v. SunTrust (N.D. Ga., 1:13-cv-02454), IV v. BBVA Compass (N.D. Ala., 2:13-cv-01106-AKK), and IV I v. Citigroup (S.D.N.Y., 1:14-cv-04638-AKH). The '666 patent became the last claim standing in the JPMC case: Judge Hellerstein invalidated the '084, '409, and '694 patents under §101 post-Alice (see 2015 WL 1941331 (S.D.N.Y. Apr. 28, 2015)); the '574 patent was withdrawn; only the '666 patent survived, and JPMC's two non-infringement summary judgment motions were denied (June 30, 2015; July 21, 2016). That §101 collapse also produced a precedential collateral-estoppel ruling (Fed. Cir. No. 16-1077, Mar. 7, 2017, holding JPMC's partial SJ order triggered estoppel in the Capital One case).

Two further points of practitioner interest: (1) the Board's August 7, 2014 Order (Paper 26) denying IBM leave to file a redacted inventor-deposition transcript as supplemental information under 37 C.F.R. § 42.123(b) is widely cited on the proper use of that vehicle (see PTAB Trial Blog); and (2) because the Federal Circuit disposed of the appeal by Rule 36, the case generated no precedential appellate law — the FWD and certificate are the whole record.

Sourcing caveats (please verify before relying): (a) I could not confirm from the retrieved sources which claims, if any, were held unpatentable in the FWD. That IBM (the petitioner) appealed and lost implies the Board did not cancel the challenged claims as IBM sought — i.e., the '666 patent survived — which is consistent with the patent remaining live in the JPMC litigation; but the authoritative documents are the FWD (Paper 35) and the §318(b) IPR certificate, which should be pulled directly. (b) The February 7, 2018 termination date is ~2 years after the Rule 36 affirmance; I could not verify the reason for the gap (rehearing/certiorari activity or administrative delay are possibilities, not findings). (c) Some secondary sources (e.g., National Law Review's write-up) mislabel this proceeding as "CBM2014-00180" — a known typo; the correct number is IPR2014-00180. (d) I did not verify the '666 patent's original assignee/inventors (its op-code/Fujitsu-style drafting suggests an acquired non-IV origin, but treat that as unconfirmed).

I'll research this. Note up front: the authoritative case metadata identifies this as PTAB IPR2014-00180, an inter partes review — not a district court infringement action. To answer your question fully I'll cover (a) the IPR itself and (b) the parallel IBM–Intellectual Ventures district court litigation involving the '666 patent. Let me search.

This is clearly an IPR, not a district court case. Let me dig into the IPR record, the Federal Circuit appeal, and the related litigations.

Now let me confirm the Federal Circuit appeal outcome and the parallel district court actions.

Threshold point: the case you've described is not an infringement action

The authoritative metadata here — IPR2014-00180, IBM Corp. v. Intellectual Ventures II LLC, Patent 7,634,666 — is a PTAB inter partes review, not a district court case. So there is no complaint, answer, counterclaims, Rule 12 motion, Markman hearing, trial, verdict, or JMOL on this docket. What exists is the AIA trial itself. Below I give (A) the IPR chronology in full, (B) the parallel district court litigation in which the '666 patent was actually asserted (where the pleadings/Markman/SJ events you asked about did occur), and (C) the Federal Circuit appeal of the IPR.

---

A. The IPR itself: IPR2014-00180

Parties: Petitioner IBM Corp. (not a defendant in any of the underlying suits — IBM manufactured the accused crypto cards and filed the petitions as a non-party); Patent Owner Intellectual Ventures II LLC. Panel: APJs David C. McKone (opinion author), James A. Tartal, Miriam L. Quinn.

Counsel (per the FWD signature block): Petitioner — Kenneth R. Adamo and Eugene Goryunov, Kirkland & Ellis LLP. Patent Owner — Herbert D. Hart III, Jonathan R. Sick, et al., McAndrews, Held & Malloy, Ltd.

Substance of the Final Written Decision

The IPR turned almost entirely on motivation to combine, not on claim scope. Key holdings:

• Claim construction (BRIS): IBM proposed that "multiplication unit," "addition unit," and "sign inversion unit" each be limited to units "solely" capable of that single function. The Board rejected the "solely" limitation. (This aligned with the district court's parallel constructions — see below.)
• The "feedback" limitation: The Board agreed with IV that Matsuzaki does not disclose the claim 1/4 limitation that the outputs of the multiplication, addition, and sign inversion units are fed back to the arithmetic controller — in Matsuzaki's Fig. 17 the multiplier and sign-inverting unit outputs feed the adder, not the controller. IBM expressly conceded this was the only arguably missing element.
• Dworkin didn't cure it: IBM shifted theories between the Petition and Reply (conceding on Reply that Dworkin does not disclose the claimed arithmetic units), which the Board declined to credit.
• No articulated reason to combine: The Board held that IBM relied solely on similarity between Matsuzaki and Dworkin plus a bare invocation of "common sense," which is legally insufficient to supply a rational underpinning. It cited Wyers v. Master Lock, Perfect Web Techs. v. InfoUSA, and (InTouch Techs. v. VGO), 751 F.3d 1327 (Fed. Cir. 2014), and noted the absence of expert testimony on motivation "weighs heavily against" IBM.
• Result: "Petitioner has not met its burden of showing, by a preponderance of the evidence, that any of claims 1–11 would have been obvious over Matsuzaki and Dworkin."

This is a claim-survival outcome for IV — an unusual result for the 2014–2015 IPR wave, and it meant the '666 patent remained live for further assertion.

---

B. The parallel district court litigation where the '666 patent was actually asserted

The '666 patent was part of IV's 2013 banking campaign — the same five patents ('084, '409, '574, '694, '666) asserted against seven financial institutions, with the IBM Crypto Cards (4765 / 4767 PCIe Cryptographic Coprocessors) as the accused products. This is why IBM filed IPRs: it was the supplier/indemnitor.

Cases (per the Federal Circuit's footnote in IV II v. JPMorgan Chase, 781 F.3d 1372):

• IV II v. JPMorgan Chase & Co., No. 1:13-cv-03777 (S.D.N.Y.) — complaint 2013-06-04
• First National Bank of Omaha, No. 8:13-cv-167 (D. Neb.) — 2013-05-29
• BBVA Compass, No. 2:13-cv-01106 (N.D. Ala.) — 2013-06-12
• Commerce Bancshares, No. 2:13-cv-4160 (W.D. Mo.) — 2013-06-20
• SunTrust Banks, No. 1:13-cv-2454 (N.D. Ga.) — 2013-07-24
• U.S. Bancorp, No. 0:13-cv-2071 (D. Minn.) — 2013-07-31
• Huntington Bancshares, No. 2:13-cv-785 (S.D. Ohio) — 2013-08-07
• IV I v. Citigroup, No. 1:14-cv-04638 (S.D.N.Y.) (later, per N.D. Tex. claim-construction charts)

Pleadings / counterclaims (JPMC, the lead case): JPMC "answered and filed counterclaims seeking a declaratory judgment as to invalidity and noninfringement of the patents" (per Judge Hellerstein's July 2016 opinion). IV initially asserted only claim 4 of the '666 patent.

Stay motions pending IPR/CBM:

• JPMC moved to stay pending CBM review; denied (IV II v. JPMorgan Chase, 2014 WL 10919562 (S.D.N.Y. 2014-08-11)). JPMC's interlocutory appeal was dismissed for lack of jurisdiction — IV II v. JPMorgan Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015-04-01) (O'Malley, J.), holding §18(b)(2) of the AIA does not permit review until the PTAB institutes a CBM proceeding. (Notably, that same opinion records that JPMC's stay motion was also premised on 12 third-party IPR petitions — including IBM's.)
• In SunTrust (N.D. Ga., Doc. 175, 2014), the court addressed a motion to stay pending IPR, observing that institution on all claims of the '666 patent created "a reasonable likelihood" the asserted claims were invalid, and that the PTAB would rule by Oct. 2015 (or Apr. 2016 for good cause). (I could not verify the ultimate disposition of that stay motion from the available sources.)

Claim construction (Markman) — S.D.N.Y.:

• Markman hearing 2014-03-05; Markman Order ECF No. 82, 2014-03-18.
• "op-code signal" construed as a "signal capable of indicating an RSA operation when it has one characteristic and an ECC operation when it has a different characteristic."
• "sign inversion unit" construed (with both parties' agreement at the hearing) as "a unit that changes positive numbers to negative numbers and changes negative numbers to positive numbers."

Substantive dispositive motions (S.D.N.Y.):

• 2015-04-28 — Partial summary judgment for JPMC under 35 U.S.C. §101: three patents ('694, '084, '409) held to claim patent-ineligible subject matter (2015 WL 1941331).
• 2015-05-12 — JPMC's first MSJ of noninfringement (Dkt. 388); denied 2015-06-30 (Dkt. 449) — IV raised triable issues on whether the crypto card had the capability of executing both ECC and RSA (the court declined to read claim 4 as limited to actual performance).
• 2015-09-17 — The '574 patent withdrawn on consent (ECF 519), leaving the '666 patent as the only patent remaining in the case.
• 2015-11-05 — Order denying JPMC's motion to strike IV's infringement contentions but granting in part cross-motions to compel; court found IV's initial contentions "inadequate" under Yama Capital (ECF 296).
• 2016-06-29 / 2016-07-14 / 2016-07-20 — IV moved for rehearing of the Markman construction of "sign inversion unit" (ECF 556–557); opposition (ECF 560–562); denied (ECF 568). Judge Hellerstein: "IV's sole reason to change the Markman order is its regret. Regret is not a legal excuse."
• 2016-07-21 — JPMC's second MSJ of noninfringement denied — the court rejected IV's "mere capability" and "modular arithmetic" theories as unsupported, but found the record insufficiently developed to resolve infringement as a matter of law.

Post-2016 disposition of the district court cases: I was unable to verify the ultimate disposition of IV II v. JPMC or the other bank cases (settlement, dismissal, or judgment). You should treat that as an open item; I won't speculate.

---

C. Effect of the IPR on the litigation

• Because the claims survived (FWD 2015-04-03, affirmed 2016-02-05), the IPR did not knock the '666 patent out of the district court cases — the opposite of the result the petitions obtained against the '084, '409 and '694 patents (invalidated on §101 at the district court level). The '666 patent remained the last patent standing in IV v. JPMC.
• Conversely, the parallel ITC/PTO activity was used by IV defensively: IV's infringement charts and claim-construction positions in later cases expressly cite the Patent Owner Response dated 2014-07-16 in IPR2014-00180 and the Fed. Cir. appellee brief in No. 2015-1837 (Dkt. 28) as intrinsic-style authority.
• IBM also filed companion petitions in the same campaign, including IPR2014-00587 on the '694 patent (6,826,694) — which included a request for rehearing on institution and a reduction-to-practice/inventorship fight. A 2014 N.D. Ga. opinion tallies thirteen IPR petitions filed by IBM, BBVA Compass, Commerce Bancshares, and First National of Nebraska against these five patents.

---

D. Afterlife of the '666 patent (useful posture context)

• Ownership later passed to Longhorn Automotive Group, LLC (an Alpha Alpha Intellectual Partners entity), which asserted the '666 patent against Nissan (E.D. Tex., No. 2:24-cv-00554-JRG). Claim-construction filings in that case (Sept. 2025) still cite IPR2014-00180 (POR at pp. 49–50) and the 2015-1837 appellee brief.
• Unified Patents announced in late 2024/early 2025 that prior art had been crowdsourced against the '666 patent in its PATROLL contest — i.e., the patent remains a live validity target more than a decade after this IPR.

---

E. What does not exist here (to close the loop on your checklist)

Sourcing note: the FWD text and panel are drawn from the Finnegan-hosted copy of the decision; the procedural orders from the PTAB Trial Blog and National Law Review; the appellate disposition from CourtListener (636 F. App'x 1008) and IPBiz (which links the Fed. Cir. Rule 36 judgment of 2016-02-05); the district court chronology from Judge Hellerstein's opinions, the Federal Circuit's 781 F.3d 1372 opinion, Justia dockets, and the VitalLaw/Studicata summaries. The 2018-02-07 certificate date comes from the case metadata you supplied and I could not independently corroborate it.

I'll search for press coverage of this IPR and the underlying IBM v. Intellectual Ventures dispute.

Let me dig into the outcome, any appeal, and broader press coverage.

Now let me look for mainstream/trade press on the broader IBM–IV dispute and related trials.

Press and analyst coverage of IBM v. Intellectual Ventures II (IPR2014-00180)

Coverage of the IPR itself is essentially confined to patent-law blogs and practitioner newsletters. I found no Reuters, Bloomberg, Law360, Ars Technica, The Verge, Patently-O, EFF Deeplinks, or JD Supra article that discusses IPR2014-00180 by name. The most substantive contemporaneous reporting is from law-firm blogs tracking PTAB procedural rulings. Harness IP's AIA blog noted that on April 16, 2014 the Board instituted review of claims 1–11 of U.S. Patent No. 7,634,666 (Paper 10) in International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00180. The same blog, in a post titled "Inventor Testimony Irrelevant", reported that the panel (Judges McKone, Tartal, and Quinn) denied IBM's request to introduce named-inventor deposition testimony from the co-pending district court case as supplemental information, reasoning that an inventor's testimony about how the invention operates "has little relevance" to an IPR. That ruling was also covered by the PTAB Trial Blog and by Drinker Biddle's IP Litigation group in the National Law Review, both of which framed the takeaway as: a motion for supplemental information is not a vehicle to explain the significance of testimony or to gain extra pages beyond the 15-page reply limit. McDermott Will & Emery, writing in the National Law Review, made the same point and added that litigation-derived inventor testimony "would likely be little probative value for purpose of claim construction." Drinker Biddle's summary of the initial conference call also reported that the Board denied IV's request for authorization to seek additional discovery on alleged real parties-in-interest, holding that shared counsel with defendants in the parallel district court cases is not by itself evidence of "control."

On the merits, the reporting indicates IBM lost. The Board's Final Written Decision (available as a PDF hosted by Finnegan and summarized by Patexia, which lists the decision date as April 3, 2015, Judge McKone writing) rejected IBM's obviousness case over Matsuzaki in view of Dworkin. The panel found that Matsuzaki's Figure 17 does not disclose the claimed feedback limitation — the multiplier and sign-inversion outputs feed the adder, not the arithmetic controller — and that IBM failed to articulate an adequate reason to combine the references, noting that merely invoking "common sense" was insufficient under Wyers v. Master Lock and Perfect Web Technologies v. InfoUSA. Patexia's case summary lists no claims invalidated, consistent with IV prevailing. The IPBiz blog reported in February 2016 that IBM lost its appeal to the Federal Circuit (No. 15-1837), where the court issued a Rule 36 affirmance on February 5, 2016, and that Kenneth R. Adamo of Kirkland & Ellis argued for IBM. No outlet I found reported any damages figure, settlement, or license terms in connection with this IPR — none exist, since an IPR is a validity proceeding, not a damages action.

Where coverage goes beyond the IPR, it concerns the parallel district court litigation over the same patent. The closest thing to trade-press reporting I located is IP Law Daily (VitalLaw), which reported on July 2, 2015 that Judge Hellerstein of the S.D.N.Y. denied JPMorgan Chase's summary judgment of non-infringement of claim 4 of the '666 patent in Intellectual Ventures II LLC v. JP Morgan Chase & Co., finding triable issues as to whether the accused IBM cryptographic coprocessor cards ("crypto cards," containing the Otello chip and MCPU) were capable of executing both RSA and ECC algorithms. A year later, IP Law Daily reported on July 22, 2016 that the court again denied JPMC's second summary judgment motion, rejecting IV's "mere capability" theory and its bid to loosen the Markman construction of "sign inversion unit," with the court quoted as saying IV's "sole reason to change the Markman order is its regret" and that "[r]egret is not a legal excuse." That same outlet noted the '666 patent was the last of five IV patents asserted against JPMC in 2013, the others having been withdrawn or invalidated under § 101.

Assessment. For a case that ran from a November 2013 petition to a February 2018 IPR certificate, the press footprint is remarkably thin — it is a procedural-ruling story in law-firm blogs, not a mainstream news story. Two cautions on sourcing: the PTAB Trial Blog and the National Law Review/Drinker Biddle post both caption the proceeding as "CBM2014-00180" in places, which appears to be an error — the institution decision and final written decision are IPR2014-00180. I also found no reporting explaining the roughly two-year gap between the February 2016 Rule 36 affirmance and the February 7, 2018 certificate date in the case metadata; I would flag that as unexplained by any source I could locate rather than assume a cause.

Sources

• U

• embody articles it argues Petitioner should have addressed in the Petition
• Petitioner, however, does not point to evidence sufficient to explain how shifting the partial products to the left results in s...
• Trails@uspto
• UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
• UNITED STATES DISTRICT COURT
• Denying Motion for Leave to File Supplemental Information IPR2014-00180
• IBM Corp. v. Intellectual Ventures II LLC: Denying Motion for Leave to File Motion to file Supplemental Information IPR2014-0018...
• Case 1:13-cv-03777-AKH Document 77 Filed 03/14/14 Page 1 of 5
• PATENT—S.D.N.Y.: JP Morgan Chase unable to shake assertion entity’s remaining infringement claim
• Paper Date: July 3, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD - KIPDF.COM - Paper Date: July 3, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
• December 30, 2014

I'll research the counsel of record for the petitioner (IBM) in IPR2014-00180, and also check for any parallel district court litigation.

This is an IPR at the PTAB, not a district court infringement suit — so I need to pin down the petitioner (IBM) side counsel and note the party posture. Let me dig further.

Let me confirm the mandatory notices at filing and check for any counsel changes during the proceeding, plus verify the biographical details.

Threshold clarification: this is an IPR, not a district-court infringement suit

IPR2014-00180 is an inter partes review before the PTAB, so there is technically no "plaintiff" — the parties are the Petitioner and the Patent Owner. Treating IBM (the petitioner, i.e., the party on the plaintiff side of the caption) as the "plaintiff":

• Petitioner (plaintiff-side): International Business Machines Corporation
• Patent Owner: Intellectual Ventures II LLC

Worth flagging because the roles reverse in the parallel district-court litigation over the same '666 patent: there, IV II was the plaintiff (e.g., Intellectual Ventures II LLC v. JP Morgan Chase & Co., No. 1:13-cv-03777 (S.D.N.Y.); IV II v. SunTrust Banks, No. 1:13-cv-02454 (N.D. Ga.)), and the accused instrumentalities were IBM crypto cards (IBM 4765/4767 PCIe Cryptographic Coprocessors). IBM was a non-party petitioner in the IPRs, not a party to those suits. (SunTrust stay opinion, N.D. Ga.; S.D.N.Y. opinion)

Petitioner IBM's counsel of record (Kirkland & Ellis LLP)

All of IBM's counsel in this proceeding came from Kirkland & Ellis LLP. The Board's own orders list only two names for petitioner, and they are consistent across every paper I found:

Additional Kirkland attorneys who appear on the appellate record for IBM (Fed. Cir. 2015-1837, IBM v. Intellectual Ventures II, nonprecedential aff'g the Board, Feb. 8, 2016): Brent P. Ray (Reg. No. 54,390, Kirkland Chicago, backup counsel in companion IBM IPRs), Meredith Zinanni (Kirkland), and John C. O'Quinn (Kirkland, Washington, DC). (Fed. Cir. slip op.)

Sourcing for the designations

• Board order of July 3, 2014 (Paper 6) and May 16, 2014 initial-conference-call order both list petitioner's counsel as: PETITIONER: Kenneth R. Adamo, Eugene Goryunov, Kirkland & Ellis LLP. (July 3, 2014 order; May 16, 2014 order)
• Letters of representation in the companion IBM/IV proceedings (IPR2014-00682, -00672, -00673, -01385) name Adamo and Goryunov as IBM's appointed practitioners, with Goryunov as lead and Adamo and Ray as backup in the later case. (IPR2014-00682 POA)

Caveats on completeness

• No local counsel — this is a PTAB proceeding, so there is no local-counsel requirement and none appears.
• In-house counsel — I found no IBM in-house attorney named as counsel of record; the POAs were executed by outside Kirkland counsel (signed by Goryunov).
• I did not directly retrieve IPR2014-00180's own § 42.8 mandatory notices to confirm the precise lead-vs-backup labels within this specific docket; the lead/backup split above is inferred from the Board's caption listings and the companion-IBM POAs/mandatory notices. The names (Adamo and Goryunov as petitioner's counsel of record) are well corroborated, but the lead/backup label for the '180 case specifically is a reasonable inference, not a verbatim quote from that docket.
• Filings were not sealed to my knowledge; there were redactions (e.g., a redacted inventor-deposition transcript discussed in Paper 26), but none bearing on counsel identity.

For completeness — opposing (Patent Owner) counsel

Because the caption can be confusing, the Patent Owner side was represented by McAndrews, Held & Malloy, Ltd. (Herbert D. Hart III, Jonathan R. Sick, Peter J. McAndrews) and, on appeal, Sterne Kessler Goldstein & Fox PLLC (Lori A. Gordon, Byron L. Pickard, Jonathan M. Strang). (Fed. Cir. slip op.; July 3, 2014 order)

Bottom line: IBM's counsel of record were Kenneth R. Adamo and Eugene Goryunov, both of Kirkland & Ellis LLP, Chicago, with Adamo as the principal/arguing counsel; Brent P. Ray, Meredith Zinanni, and John C. O'Quinn (Kirkland, Washington, DC) joined on the Federal Circuit appeal.

I'll research the Patent Owner side counsel (the "defendant"-side party in this IPR) plus, for completeness, the defendants in the parallel district-court litigation.

Let me pin down the IPR-specific power of attorney/mandatory notices and the parallel district-court defense teams.

Threshold clarification: who the "defendant" is in this proceeding

IPR2014-00180 is an inter partes review at the PTAB, not a district-court infringement suit, so there is no "defendant" in the Fed. R. Civ. P. sense. The party occupying the defense side of the caption is the Patent Owner, Intellectual Ventures II LLC. (In the parallel district-court litigation over the same '666 patent, IV II was actually the plaintiff and JPMorgan Chase was the defendant — see below.) I answer for the IPR Patent Owner side first, then add the district-court defense teams for completeness.

Counsel of record for Patent Owner Intellectual Ventures II LLC (the defense side of IPR2014-00180)

All papers in this docket caption Patent Owner's counsel identically:

PATENT OWNER: Herbert D. Hart III / Jonathan R. Sick / Peter J. McAndrews — McAndrews, Held & Malloy, Ltd.
(July 3, 2014 Order, Paper 22; Final Written Decision caption)

Sourcing and role caveats

• The names are firmly corroborated — the same three-attorney McAndrews team appears in the July 3, 2014 Order (Paper 22), the May 16, 2014 initial-conference-call order (Paper 15), and the Final Written Decision caption.
• The Board's caption lists the three attorneys without lead/backup labels. I did not retrieve IPR2014-00180's own § 42.8 mandatory notice or § 42.10(b) power of attorney, so the lead-vs-backup split for this docket is an inference. The inference is supported by IV II's practice in companion proceedings, where Hart is designated lead counsel (e.g., IPR2014-01195 mandatory notice substituting Hart as lead, Nov. 3, 2014). Flag this as an inference, not a verbatim docket quote.
• No local counsel and no in-house counsel appear on the record — normal for a PTAB proceeding.
• No filings in this docket appear sealed; there were redactions (e.g., the redacted inventor-deposition transcript at issue in Paper 26), but none affecting counsel identity.

Appellate counsel for IV II (Fed. Cir. 2015-1837)

The appellee team blended the trial-level firm with IV's principal appellate/post-grant firm:

(Fed. Cir. slip op.)

Pattern worth noting: across the IBM–IV IPR family, McAndrews, Held & Malloy handled the PTAB merits while Sterne Kessler handled appellate work and later PTAB lead designations. That is consistent with the split seen here.

For completeness — the parallel district-court "defendants"

Because the caption confusion is likely why this task was asked, the real district-court defendants over the '666 patent were JPMorgan Chase entities in Intellectual Ventures II LLC v. JP Morgan Chase & Co., No. 1:13-cv-03777 (S.D.N.Y.) (and parallel financial-institution suits, e.g., IV II v. SunTrust Banks, No. 1:13-cv-02454 (N.D. Ga.)). On that side:

• Goodwin Procter LLP (Eleanor Yost, Jacob Osborn, Justin Cabell Pierce) represented J.P. Morgan Chase as petitioner in the parallel PTAB proceedings (CBM2014-00157 over the '409 patent), per the deposition transcript of record (CBM2014-00157 Ex. 1023). Note this is a different patent and docket, offered only to show who defended JPMC on the PTAB side of the same litigation campaign.
• The IP Law Daily coverage of the S.D.N.Y. summary-judgment rulings lists firms appearing in the matter — Dontzin Nagy & Fleissig LLP, Dunnegan & Scileppi LLC, Durie Tangri LLP, Feinberg Day Alberti & Thompson LLP, Kirkland & Ellis LLP (VitalLaw, July 22, 2016). I could not verify from the sources retrieved which of these firms represented JPMC versus IV II, so I will not assign them by party. Treat that list as unconfirmed for attribution.

Bottom line

• IPR2014-00180 defense side = Patent Owner Intellectual Ventures II LLC, represented throughout by McAndrews, Held & Malloy, Ltd. (Chicago): Herbert D. Hart III, Jonathan R. Sick, and Peter J. McAndrews — with Hart the likely lead by firm practice (inference, not a verbatim docket designation) and McAndrews arguing the Federal Circuit appeal.
• Sterne Kessler Goldstein & Fox (Washington, DC) — Jonathan M. Strang, Byron Leroy Pickard, Lori A. Gordon joined on the appeal.
• No local counsel or in-house counsel appear; no counsel-identity-affecting seals.
• Sourcing flag: the names and firms are directly grounded in the Board's orders and the FWD caption; the lead/backup labels within this specific docket are inferred from IV II's companion-case practice and were not confirmed against IPR2014-00180's own power of attorney, which I was unable to retrieve.