J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC

I'll research this case before drafting the overview.

Let me get the Board's decision and the District Court outcome.

Case Overview

An important framing caveat first: CBM2014-00160 is not itself an infringement action. It is a Covered Business Method review petition that J.P. Morgan Chase filed at the PTAB as a defensive counter-move to the real infringement suit — Intellectual Ventures II LLC v. JP Morgan Chase & Co., No. 1:13-cv-03777-AKH (S.D.N.Y.), filed June 4, 2013 before Judge Alvin K. Hellerstein. The CBM (and its companion CBM2014-00157 on U.S. Pat. No. 6,314,409) was JPMC's attempt to invalidate IV's patents at the USPTO rather than litigate them.

Parties. The petitioner group is JPMorgan Chase & Co., JPMorgan Chase Bank, N.A., Chase Bank USA, N.A., Chase Paymentech Solutions LLC, and Paymentech LLC — a global bank holding company and its card-issuing, online-banking, and merchant-payment-processing subsidiaries (the defendants in the S.D.N.Y. action). The patent owner is Intellectual Ventures II LLC of Bellevue, Washington, an affiliate of Intellectual Ventures LLC — a patent-holding and licensing entity founded in 2000, commonly classified as an NPE/PAE. IV's own complaint alleged it had acquired 70,000+ patent assets and earned $3 billion+ licensing them, while also funding its own invention operation; those are IV's characterizations, and IV II specifically is the assignee that held and asserted the '574 patent. IV was represented in the CBM by Knobbe, Martens, Olson & Bear (Brenton R. Babcock, Ted M. Cannon, Scott Raevsky); petitioners by Goodwin Procter (Stephen T. Schreiner, Eleanor M. Yost).

Patent and accused technology. The sole patent in CBM2014-00160 is U.S. Pat. No. 5,745,574, "Security Infrastructure for Electronic Transactions," issued April 28, 1998 to inventor Sead Muftic (priority Dec. 15, 1995). In one line: it claims a computer-implemented public-key-encryption certification infrastructure — a hierarchy of certification authorities, registration/policy authorities, certificate issuance, validation, revocation, and a "common certificate repository" — for authenticating electronic documents and communications. Petitioners challenged claims 18–31 (the independent method claims 18, 23, 28, 30, 31). In the underlying litigation, IV accused Chase of infringing at least claim 23 through Chase's online banking website and systems that comply with the PCI Data Security Standard for encrypting data during communication sessions — i.e., ordinary secure-web/online-banking infrastructure rather than a discrete "Chase product." The same '574 patent was asserted against at least nine banking defendants in IV's 2013 enforcement campaign (e.g., BBVA Compass, Commerce Bank, and others).

Procedural Posture and Disposition

Petition filed July 18, 2014; filing date accorded Aug. 1, 2014 (Paper 3); IV's Preliminary Response Nov. 3, 2014 (Paper 8). On January 29, 2015, the Board denied institution (Paper 11), per a panel of APJs Kristen L. Droesch, Jennifer S. Bisk, and Justin Busch (opinion by Busch). The Board did not reach the § 101 merits. It held threshold jurisdiction was absent under AIA § 18(d)(1) because the '574 patent is not a "covered business method patent": the claims "describe methods for implementing portions of the entire process of using public key encryption to certify secure electronic communications," and therefore "have general utility not limited or specific to any application." The Board rejected each of petitioners' six standing theories — that the claims were tied to financial transactions, that the specification described financial applications, that the examiner's Class 705 field-of-search mattered, that public-key certificates are integral to modern financial transactions, and that IV had accused banks (and Chase's website) of infringement — reasoning that none of these limited the claims to the financial sector. A refund request followed June 30, 2015, with the Notice of Refund on July 2, 2015 (Paper 13), and the proceeding terminated without institution.

Why It Matters

1. CBM standing law. The decision is a leading, frequently cited example of the PTAB's narrow approach to CBM eligibility, applying the principle that a patent is CBM-eligible only if its claims are directed to activity financial in nature or incidental/complementary to a financial activity. It was issued in tandem with Salesforce.com v. Applications in Internet Time, CBM2014-00168 (Feb. 2, 2015), and is quoted in later petitions as the standard for "general utility" claims that span many industries. It is an institution decision, not a precedential opinion, but it had outsized influence on CBM practice in 2015.
2. The parallel IPR linkage — the decisive track. CBM2014-00160 was a dead end, but the '574 patent did not survive. In Compass Bank, Commerce Bancshares, Inc., and First National Bank of Omaha v. Intellectual Ventures II LLC, IPR2014-00724 (final written decision Nov. 5, 2015, same three-judge panel), the Board held claims 18–31 of the '574 patent unpatentable over the Kapidzic certificate-management paper, the "PKI Report," and RFC 1424/1422. So petitioner JPMC's CBM was redundant; other banks' IPR invalidated the same claims.
3. Appellate spillover. JPMC's interlocutory appeal of the district court's denial of a stay produced Intellectual Ventures II LLC v. J.P. Morgan Chase & Co., 781 F.3d 1371 (Fed. Cir. Apr. 1, 2015) (O'Malley, J.; Hughes, J., dissenting), holding the Federal Circuit lacked § 18(b) jurisdiction because a CBM "proceeding" does not begin until the Board institutes review — a jurisdictional rule that mattered precisely because CBM2014-00160 was still pending and un-instituted when the appeal was heard.
4. Outcome and market context. The broader S.D.N.Y. case went badly for IV: on April 28, 2015, Judge Hellerstein granted partial summary judgment invalidating the '694, '084, and '409 patents under § 101, 2015 WL 1941331; IV withdrew the '574 claims on consent (ECF No. 519, Sept. 17, 2015); and the remaining '666 patent ultimately failed on non-infringement/discovery grounds. The JPMC § 101 ruling was later given collateral-estoppel effect against IV in the Capital One litigation, Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017). CBM2014-00160 thus sits at the intersection of the 2013–2015 wave of bank-versus-IV proceedings: it shows that a CBM petition can fail on the § 18 threshold, and that prevailing in a different post-grant track (IPR) can moot the CBM entirely.

Sourcing note: The docket entries (Papers 2, 3, 8, 10, 11, 13), the Board's denial decision, the IPR2014-00724 final written decision, the S.D.N.Y. filings, and the Federal Circuit opinion were all confirmed via PTAB records, Docket Alarm, and secondary reporting (Lexology, National Law Review, JOLT Digest). One item I could not independently verify in full is the precise statutory basis cited for the fee refund; only the refund request and notice dates are documented.

I'll research this case carefully. Note up front: the metadata identifies this as a PTAB CBM proceeding (CBM2014-00160), which is not itself a district court infringement suit — so I'll cover both this CBM and the underlying/parallel district court litigation it arose from. Let me gather sources.

I now have the core picture. Let me nail down the PTAB parallel proceedings and the SDNY endgame.

Good progress. Now the SDNY endgame on the '574 and '666 patents, plus the IPR appeals.

Threshold point: what "this case" is

The metadata describes CBM2014-00160, a PTAB covered-business-method (CBM) review, not a district court infringement action. It is one piece of a much larger dispute. The infringement litigation is:

• Intellectual Ventures II LLC v. JPMorgan Chase & Co., No. 1:13-cv-03777-AKH (S.D.N.Y.) (Judge Alvin K. Hellerstein)
• Companion case: Intellectual Ventures I/II LLC v. Citigroup, Inc., No. 1:14-cv-04638-AKH (S.D.N.Y.)
• IV also asserted the same five patents against six other banks in six other districts (D. Neb., N.D. Ala., W.D. Mo., N.D. Ga., D. Minn., S.D. Ohio). (Fed. Cir. opinion, 2014-1724, n.1)

Below I cover both strands, integrated chronologically, and flag where a fact is not independently verified. Bottom line: there was no trial, no verdict, no JMOL, and no settlement. The patents were killed at the PTAB and on § 101 summary judgment.

---

1. Filing and initial pleadings

SDNY (the infringement suit)

Note / minor discrepancy: the PTO § 290 report of the SDNY filing shows "DATE FILED 04/2013," while the IPR petition states IV "filed this action on June 4, 2013, and served the complaint on June 4, 2013." I use 2013-06-04, which is the better-corroborated date.

The CBM (subject case)

Petitioner's counsel: Goodwin Procter LLP (Stephen T. Schreiner; Eleanor M. Yost). Patent Owner's counsel: Knobbe, Martens, Olson & Bear LLP (Brenton R. Babcock; Ted M. Cannon; Scott Raevsky), with IV in-house Donald J. Coulman.

---

2. Pre-trial motions of substance

Motion to stay pending PTAB proceedings — denied. On 2014-06-27 JPMC moved to stay the SDNY case pending, inter alia, four CBM petitions it said it was about to file (its motion also cited 12 third-party IPR petitions).

• 2014-07-11: JPMC filed CBM2014-00157 ('409 patent).
• 2014-07-18: JPMC filed CBM2014-00160 ('574 patent) — the subject case. JPMC never filed the other two promised CBM petitions. (Fed. Cir. 2014-1724.)
• 2014-08-11: Judge Hellerstein denied the stay. He applied the AIA § 18(b)(1) four-factor test (assuming without deciding it governed), holding: (i) it would be inappropriate to stay the entire case while the PTAB might review only two of five patents; (ii) the case would likely be trial-ready in under a year, vs. 12–18 months at the PTAB plus appeal; and (iii) a stay would give JPMC an "unfair tactical advantage." He separately rejected the IPR-based stay on the same reasoning. (13-cv-3777, Dkt. 154.)
• JPMC then moved to stay pending interlocutory appeal — denied.

Interlocutory appeal — dismissed for lack of jurisdiction (key legal development). On 2015-04-01 the Federal Circuit decided Intellectual Ventures II LLC v. JPMorgan Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015) (2014-1724) (O'Malley, J.; Hughes, J., dissenting), dismissing JPMC's appeal. Holding: under AIA § 18(b)(2), the court has jurisdiction over an interlocutory appeal of a CBM-related stay ruling only after the PTAB actually institutes a CBM proceeding; a mere petition (or anticipated petition) does not confer jurisdiction. The court declined to take sua sponte judicial notice of the intervening PTAB actions (the '409 institution and the '574 denial). Amicus: Askeladden LLC (Wilmer Cutler).

Summary judgment — § 101. 2015-04-28: Judge Hellerstein granted JPMC's motion for partial summary judgment of invalidity under 35 U.S.C. § 101, dismissing Counts 2, 3, and 4 (the '694, '084, and '409 patents) under Alice/Mayo. Reported at 2015 WL 1941331 (S.D.N.Y. Apr. 28, 2015); opinion at Dkt. 381. The court held each patent claimed a patent-ineligible abstract idea implemented on generic computer technology, rejecting IV's DDR Holdings argument (the '694 was analogized to Digitech; the '409 to Ultramercial). Counts 1 ('574) and 5 ('666) survived, and a status conference was set for 2015-05-19.

Later motions (2016–2017, '574/'666 counts). Per a July 2019 lead-counsel CV describing the JPMC/Citi matters: scheduling/discovery hearing 2014-12-11; expert reports served 2016-12-16; motions to strike expert reports and Daubert motions filed February–April 2017; renewed summary judgment of noninfringement filed 2017-02-28; motion to compel source code 2017-04-20. At the 2017-04-25 hearing, the court granted in part JPMC's renewed MSJ — no infringement of the '666 patent by JPMC's use of the IBM Crypto Card — but declined to hold the cards incapable of infringement, denied IV's motion to compel IBM source code, and granted a motion to strike untimely supplemental infringement opinions of Dr. Wolfe. (Source: secondary/attorney-bio document; specific docket numbers not verified.)

---

3. Claim construction (Markman) — the case did reach this stage

Representative constructions from the Markman Order (as quoted in the 2015 SJ opinion): "packet," "payload," "access rule" ('694); "protected" = "encrypted," "access rights," "access mechanism" = "hardware and/or software for controlling access to data" ('409); "network based intrusion detection techniques," "anomaly," "alerting the devices" ('084); and "op-code signal" = "signal capable of indicating an RSA operation when it has one characteristic and an ECC operation when it has a different characteristic" ('666).

The '574 terms were heavily disputed in the joint chart — IV proposed plain-and-ordinary meaning for essentially every term ("certification infrastructure," "public key certificate," "certification authority," "common point of trust," "subordinate computer process," "iteratively performing the distribution," etc.), while JPMC proposed limiting constructions. (The specific constructions the court adopted for the '574 terms are not verified from the Markman Order text I retrieved.) Notably, the '574 construction fight was effectively relocated to the PTAB: in IPR2014-00724 the Board construed "computer process" (rejecting IV's "computer program instructions running on a computer" reading) and "common certificate repository," and held that "may"/"may also" clauses are non-limiting (In re Johnson), causing claims 25–27 to stand or fall with claim 23.

---

4. Discovery milestones with strategic significance

• 2013-11-25 (parallel Commerce case, same patents): IV served infringement contentions; its preliminary contentions exceeded 400 pages.
• 2014-12-11: Scheduling/discovery hearing in the JPMC and Citi cases; both sides ordered to produce. (Secondary source.)
• 2016-12-05 – 2017-01-24: IV moved to compel JPMC to produce elliptic-curve-cryptography ("ECC") discovery and for sanctions; denied 2017-01-24, with leave to serve one additional limited interrogatory. (Secondary source.)
• 2016-12-16 to 2017-02-17: Expert reports exchanged (infringement/damages for IV; invalidity for JPMC; responsive rounds).
• 2017-04-20/25: IV's motion to compel inspection of IBM source code denied.
• PTAB discovery: In IPR2014-00724, IV's deposition of its expert Dr. Naccache and IV's reliance on inventor Dr. Sead Muftic's testimony about derivation became the decisive evidentiary issue (see § 7).

---

5. Trial events, verdict, post-trial motions

None. The case never went to trial and there was no verdict, no JMOL, and no new-trial motion on the merits in the JPMC case.

What stood in for a resolution:

• 2015-05-19: status conference on the two remaining counts ('574 and '666).
• 2017-04-25: summary-judgment/Daubert hearing (see § 2).
• 2017-05: Judge Hellerstein ruled for JPMC on the '666 patent (per Law360, a May ruling "tossing its claim that JPMorgan infringed its patent covering cybersecurity technology").
• 2017-07-12: IV's motion for reconsideration backfired: the court reversed the portion of the May ruling that had left alive the theory that JPMC's software was "capable" of future infringement, and entered final judgment for JPMC. This date is confirmed by the W.D. Mo. Commerce opinion: "The judgment of the Southern District of New York became final only on July 12, 2017."

---

6. Final disposition and appeal

• 2017-07-12: Final judgment in 13-cv-3777 in JPMC's favor; all five patents resolved against IV (three by § 101 SJ in 2015; the '574 and '666 counts resolved in JPMC's favor thereafter).
• 2018-12-17: Federal Circuit affirmed, No. 2017-2429 (consolidated with No. 2018-1024, IV II v. Citigroup), per curiam (Newman, Plager, Moore) under Fed. Cir. R. 36 — a nonprecedential, one-line affirmance. IV's appellate counsel: Tensegrity Law Group (Matthew D. Powers). JPMC's: Kirkland & Ellis (Brent P. Ray, Kenneth R. Adamo, John C. O'Quinn). This closed the JPMC and Citigroup cases.

Fee litigation in the sister cases (relevant to JPMC's § 285 counterclaim posture, and to how the banks fared): In IV II v. Commerce Bancshares, No. 2:13-cv-04160-NKL (W.D. Mo.), the court denied Commerce's § 285 fee motion but awarded most costs, holding IV's patent-monetization model and aggressive litigation did not make the case "exceptional" under Octane Fitness. IV's appeals of the PTAB's '694 and '084 unpatentability findings were affirmed: IV II v. Compass Bank, No. 16-1416, 671 F. App'x 788 (Fed. Cir. 2016); IV II v. Commerce Bancshares, No. 16-1519, 682 F. App'x 891 (Fed. Cir. 2017).

---

7. The CBM2014-00160 decision itself, and the parallel PTAB proceedings

CBM2014-00160 — the subject case. Panel: APJs Kristen L. Droesch, Jennifer S. Bisk, and Justin Busch; opinion by Busch. On 2015-01-29 the Board denied institution and did not reach the § 101 merits, holding the Petitioner had "failed to meet the jurisdictional requirements of § 18 of the AIA."

Reasoning: under § 18(a)(1)(E) the Board may institute only for a "covered business method patent," defined in § 18(d)(1) as a patent claiming "a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service." The '574 claims (PKI certificate request/issuance/validation/updating) are directed to secure communications and are not limited to financial activities. The Board rejected the Petitioner's reliance on (i) financial-application passages in the specification, (ii) the examiner's search of financial-sector prior art, (iii) the PTO's classification of the patent, and (iv) the financial nature of the accused products — all as failing to show the claims were so limited. The decision was issued in tandem with Salesforce.com, Inc. v. Applications in Internet Time LLC, CBM2014-00168 (PTAB Feb. 2, 2015) and is widely cited for the proposition that CBM eligibility turns on claim scope, not the specification, classification, or accused products.

Note the intra-Board asymmetry: the same petitioner's CBM2014-00157 on the '409 was instituted on 2015-01-14 (CBM standing found on now-disclaimed claim 12, which recited "payment for access to data"); the '574 petition was denied. That disparity is noted in the Federal Circuit opinion at n.4 and in IV's unsuccessful rehearing request in -00157, where IV asked (and was refused) an expanded panel to reconcile panels on "financial product or service."

Termination and refund. Because institution was denied, the Board terminated the proceeding on 2015-01-29. JPMC requested a refund of the $18,000 post-institution fee on 2015-06-30 (Paper 12); the Board issued its Notice of Refund on 2015-07-02 (Paper 13). No estoppel attached (no institution), and no PTAB appeal was taken.

Parallel PTAB proceedings on the asserted patents

Effect on the litigation — the throughline. The JPMC/IV dispute was resolved in JPMC's favor almost entirely by (a) the district court's § 101 rulings and (b) third-party PTAB IPRs — not by the CBM JPMC itself filed.

• The CBM2014-00160 denial foreclosed any CBM-based stay of the '574 count; and the Federal Circuit's 2015-04-01 decision in 2014-1724 held the stay denial was not even reviewable until institution, so the denial became final as a practical matter.
• Judge Hellerstein's refusal to wait for the PTAB (2014-08-11) was vindicated in the sense that the district court invalidated '694, '084, and '409 on 2015-04-28 — before the PTAB's '409 FWD (2016-01-12).
• The '574 patent was nonetheless neutralized at the PTAB by third-party IPRs (IPR2014-00724, 2015-11-05; IPR2014-00660), not by JPMC's CBM — a good illustration of why JPMC's CBM petition proved strategically fruitless.
• By the W.D. Mo. court's account, "every asserted claim of the patents that were at issue [across the bank litigation] has been found unpatentable or invalid under 35 U.S.C. §§ 101, 102, and/or 103."

---

Confidence / verification notes

• Well sourced: the 2015-01-29 CBM denial and its reasoning; the docket entries (Papers 2, 3, 5–13); the refund amount and dates; JPMC's 2014-07-11 and 2014-07-18 CBM filings; the 2014-08-11 stay denial; Fed. Cir. 781 F.3d 1372 (2015-04-01); the 2015-04-28 § 101 SJ opinion (2015 WL 1941331) and its holdings; the 2014-03-18 Markman Order (ECF 82) and 2014-03-05 Markman hearing; the amended complaint (2014-03-24) and answer/counterclaims (2014-04-07); IPR2014-00724 institution (2014-11-06) and FWD (2015-11-05); CBM2014-00157 institution (2015-01-14), rehearing denial (2015-05-11), FWD (2016-01-12), and certificate (2018-07-20); final SDNY judgment 2017-07-12; Fed. Cir. 2017-2429 affirmance 2018-12-17.
• Not verified / use with caution: the precise docket mechanism by which the SDNY '574 count was resolved (likely a combination of the IPR claim cancellations and the court's rulings); the IPR2014-00660 FWD date and outcome; the exact '574 claim constructions adopted in the Markman Order; the individual IPR numbers for the '694/'084 patents; and the 2016–2017 discovery/expert deadlines, which come from a secondary attorney-bio document rather than the docket.
• No fabrication: I did not find, and therefore do not assert, any settlement agreement, trial, verdict, or Rule 50/59 motion in these matters.

I'll search for press coverage from multiple angles — the CBM itself, the underlying S.D.N.Y. case, the Federal Circuit stay appeal, and the § 101 ruling.

Now let me look for coverage of the underlying S.D.N.Y. case and the Federal Circuit stay appeal.

Let me broaden to the filing era, the later § 666 ruling, and the 2018 affirmance.

Press and analyst coverage

The 2013 filing wave drew business-press attention, but framed as a "patent troll" story rather than as a case study. GeekWire reported in June 2013 that Bellevue-based Intellectual Ventures had sued JPMorgan Chase and Fifth Third — its second such filing in a week, following PNC and First National Bank of Omaha — and quoted IV's own blog post: "We pursued licensing discussions with both companies but when those discussions did not progress, we chose to take steps to stop the unlicensed use of our patents." GeekWire situated the suits against President Obama's five-point patent-reform plan announced that same day and against the This American Life reporting on IV, noting IV "holds more than 70,000 patents." A companion GeekWire piece cast the pace of filings as evidence "large banks have chosen not to play ball with the former Microsoft CTO." The banking trade press focused on the PCI-DSS theory: BankInfoSecurity reported on 2013-06-25 that IV claimed Chase's online bill-pay and ATM systems infringed, quoting Washington patent attorney James Denaro that "any financial institution using PCI DSS could be at risk of being sued for patent infringement by Intellectual Ventures" — and that because the patents never mention PCI, "The patent may cover public key cryptography, but does it really cover PCI?" BankInfoSecurity followed on 2013-08-28 with Denaro's domino-effect warning and reporting that industry sources said the FFIEC had spent eight months examining vendor-indemnification as a mitigant. None of this coverage reported a damages demand; no dollar figure for the Chase case appears in any source I found.

The CBM denial itself was covered almost exclusively by law-firm client alerts, and always as half of a paired decision. Lexology (republishing a McDermott Will & Emery article, National Law Review Vol. V, No. 89, 2015-03-26) framed J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-00160, jointly with Salesforce.com v. Applications in Internet Time, CBM2014-00168, as "[n]arrowing the application of covered business method patent review," and drew this practice note: "When seeking CBM patent review, focus the analysis on the claims themselves and why their scope is limited to financial products or services." Akin Gump noted the decision in a one-minute 2015-02-12 IP Newsflash item under the headline "PTAB Limits the Scope of Covered Business Method Patent Reviews," again citing it alongside Salesforce. Notably, the alerts emphasize the Board's rejection of the specification, prosecution-history, PTO-classification, and accused-product arguments — the same four theories the Board's opinion dispatched — and none reported the Jan. 29 denial as newsworthy in itself. I found no Reuters, Bloomberg Law, Law360, Ars Technica, or Verge coverage of CBM2014-00160.

The Federal Circuit's dismissal of JPMC's stay appeal is the one development that generated wide, substantive commentary, largely because it created a jurisdictional rule. Wiley Rein (2015-04-06) quoted the holding that "we do not have jurisdiction under § 18(b)(2) of the AIA to consider an interlocutory appeal from a decision on a motion to stay until the PTAB institutes a CBMR proceeding," and its account confirms the panel as O'Malley, Bryson, and Hughes — a detail worth flagging, since the earlier sections of this case file list only O'Malley and a Hughes dissent and omit Bryson. Finnegan (2015-04-24) called the decision the completion of a § 18 "trilogy" after VirtualAgility and Benefit Funding Systems, and stressed that IV's outcome was "divorced from the merits of the case" — the "critical difference" being "the timing relative to the Patent Trial and Appeal Board (PTAB) institution decision." Venable (2015-05-08) added the practitioner takeaway that the ruling "emphasizes the importance of filing for a CBMR early in a district court litigation," while noting Judge Hughes's concern about "anomalous situations" in hybrid cases. Harvard's JOLT Digest went further than any other outlet in editorializing — labeling IV "a known patent troll," crediting the defense to "renowned law and technology scholar Mark Lemley," and describing the district court as having relied on "the plaintiff's Sixth Amendment right to a speedy trial" — a characterization not supported by the opinion, which refers to IV's "right to a speedy trial" without a constitutional citation (and the Sixth Amendment is a criminal-procedure guarantee). That is a clear instance of reporting that outruns the record.

Coverage of the merits endgame was thin and lawyer-facing, and never reported a settlement, verdict, or damages number. The 2015-04-28 § 101 ruling was reported by Law.com Litigation Daily under the headline "JPMorgan Wins Ruling on Intellectual Ventures Patents" (2015-04-29), which led with the outcome — "Alice struck again" — identified JPMC's defense team as Durie Tangri, Dontzin Nagy and Kirkland & Ellis, and quoted Judge Hellerstein's preemption reasoning that "[v]alidating such a patent would impede, rather than promote, innovation." The Lexology NY Patent Law Blog (2015-04-28) gave the most detailed technical summary of the three invalidated patents ('694, '409, '084). Earlier, The Am Law Litigation Daily's Jan Wolfe, in a 2014-04-17 profile of the Capital One defense team reprinted by Latham & Watkins, had already predicted the JPMC case's trajectory, writing that the Capital One loss "augers well for a slew of other banks, including Bank of America Corp., JPMorgan Chase & Co. and PNC Financial Services Group Inc., which are also facing patent claims from IV," and quoting IAM's Joff Wild that "any aura of invincibility that it may have had previously is no more." Two gaps are worth stating plainly: I found no press reporting on the CBM fee refund (2015-07-02), on the 2015-09-17 withdrawal of the '574 count, on the 2017-07-12 final judgment, or on the 2018-12-17 Rule 36 affirmance; and no outlet reported any damages figure sought or awarded, which is consistent with the record — IV's S.D.N.Y. complaint pleaded infringement without a published royalty demand.

Sources

• UNITED STATES PATENT AND TRADEMARK OFFICE
• The Board's determination that the patent in a case unrelated to this one, Chase, CBM2014- 00160, was not directed to a financia...
• Filed on behalf of: Patent Owner Intellectual Ventures II LLC By: Brenton R
• Docket Alarm | Litigation Outcomes, Delivered
• Search PTAB court records on num_party:10, 100 - 3600 Transportation, Electronic Commerce, Construction, and Agriculture - Jennifer Bisk - - All Courts
• Claims Must Be Limited to Financial Activities to Be Covered Business Methods - Published on The National Law Review https://dev
• Claims must be limited to financial activities to be covered business methods - Register now for your free, tailored, daily legal newsfeed service.
• Calypso, LLC v
• UNITED STATES PATENT AND TRADEMARK OFFICE
• BEFORE THE PATENT TRIAL AND APPEAL BOARD
• UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
• UNITED STATES DISTRICT COURT

I'll research the counsel of record for J.P. Morgan Chase in this CBM proceeding.

Found the key filing. Let me dig deeper into the petitioner's counsel and their backgrounds.

Let me confirm the specific power of attorney and petition signature block for this docket.

Counsel of Record — Petitioner Side (J.P. Morgan Chase & Co. et al.)

Threshold caveat on framing: This docket, CBM2014‑00160, is a PTAB covered-business-method (CBM) review, not a district court patent infringement action — and J.P. Morgan Chase is the Petitioner, not a plaintiff. IV's infringement suit against Chase was a separate case, Intellectual Ventures II LLC v. JP Morgan Chase & Co., No. 1:13‑cv‑03777 (S.D.N.Y.) (identified at Pet. 3 and in the Board's institution decision). So "counsel for the plaintiff" here maps to counsel for Petitioner JPMorgan Chase in the CBM. District court counsel for Chase in the S.D.N.Y. action is not reflected in this docket's papers and I have not verified it — treat that separately.

Counsel of record for Petitioner (per the Board's institution decision, Paper 11, and the docket's service certifications):

Sourcing: Paper No. 11 (Decision Denial of Institution, entered Jan. 29, 2015) closes with "FOR PETITIONER: Stephen Schreiner (sschreiner@goodwinprocter.com); Eleanor Yost (eyost@goodwinprocter.com)" — https://www.ptab-blog.com/wp-content/uploads/sites/13/2015/10/CBM2014-00160-DI.pdf. The Patent Owner's supplemental mandatory notice (Paper 10, Dec. 18, 2014) served "counsel for Petitioners" at precisely those two Goodwin addresses — https://www.docketalarm.com/cases/PTAB/CBM2014-00160/Covered_Business_Method_Patent_Review_of_U.S._Pat._5745574/12-18-2014-Patent_Owner/Notice-10-IV_suppl_mandatory_notice_adding_backup_counsel/. The refund filing (Paper 12, June 30, 2015) is signed by Schreiner — https://www.docketalarm.com/cases/PTAB/CBM2014-00160/Covered_Business_Method_Patent_Review_of_U.S._Pat._5745574/docs/06-30-2015-Petitioner/Refund_Request-12-Request_for_Refund.pdf.

Gaps and things I could not confirm

• Scope of any additional Goodwin attorneys. The docket papers I could retrieve name only Schreiner and Yost for Petitioner in this docket. In the parallel JPMorgan CBM, CBM2014‑00157 (patent 6,314,409), the same team was augmented by Jacob R. Osborn as backup counsel, and Goodwin's Kline/Albert/Parikh/Weisbruch appeared in other JPMorgan matters (see the CBM2014‑00157 hearing transcript and deposition appearance sheets). I found no filing in CBM2014‑00160 naming Osborn or others, so I will not attribute them here — they were, at most, part of the broader Goodwin team rather than counsel of record on this docket.
• In-house counsel. Kevin Jordan, VP & Assistant General Counsel at JP Morgan Chase, appeared at the oral hearing in CBM2014‑00157. I found no appearance by in-house counsel in CBM2014‑00160, and none is listed on the docket.
• No local counsel. PTAB practice does not require local counsel, and none is designated here.
• Power of Attorney (Paper 1, filed July 18, 2014). The docket lists a Power of Attorney filed by Petitioner, but I could locate only the analogous CBM2014‑00157 POA (which designates Schreiner as lead and Goodwin Procter as the firm). I have not been able to read the Paper 1 text for CBM2014‑00160 itself, so the lead/backup designation I give is grounded on the Board's own "FOR PETITIONER" listing and service certifications rather than on that POA document.
• Nothing appears sealed in this docket; it is a short one (Papers 1–13), with the petition, patent owner preliminary response, institution denial, refund request, and refund notice all publicly available.

One-line wrap-up

For this CBM, JPMorgan Chase's counsel of record were Stephen T. Schreiner (lead) and Eleanor M. Yost (backup), both of Goodwin Procter LLP, Washington, D.C. — the same Goodwin team that handled JPMorgan's companion CBMs against Intellectual Ventures, with no additional counsel of record or in-house appearance identified in CBM2014‑00160 itself.

I'll research the counsel of record for both the PTAB proceeding (where the patent owner is the responding party) and the underlying S.D.N.Y. infringement action, since the term "defendant" maps differently in each.

Let me now research the counsel in the underlying S.D.N.Y. infringement action, where the JPMC entities were the defendants.

Good — I have the PTAB counsel. Now let me verify the individual attorneys' backgrounds and confirm the district-court defense team.

Framing: who is the "defendant" here?

Before listing names, one clarification that matters for accuracy. In CBM2014-00160, the parties are styled Petitioner (J.P. Morgan Chase & Co. et al.) v. Patent Owner (Intellectual Ventures II LLC). There is no "defendant" in the district-court sense. The case metadata supplied to me lists Intellectual Ventures II LLC as the defendant, which is the correct mapping: in this PTAB proceeding the responding party is the patent owner, IV II LLC — it is the party that had to defend the validity of the '574 patent.

So I give you (A) counsel of record for IV II LLC, the responding/"defendant" party in CBM2014-00160, and then, because you framed the question as a "patent infringement case," (B) the defense team for the JPMC entities who were the actual defendants in the underlying S.D.N.Y. action Intellectual Ventures II LLC v. JPMorgan Chase & Co., No. 1:13-cv-03777-AKH.

---

A. Counsel of record for the "defendant" / Patent Owner — Intellectual Ventures II LLC (CBM2014-00160)

All from the proceeding's own papers (Paper 10, IV Supplemental Mandatory Notice Adding Backup Counsel, Dec. 18, 2014, and the certificate of service on Paper 12, Petitioner's Request for Refund, June 30, 2015).

Important cross-reference / discrepancy flag: In the companion CBM on the sibling '409 patent, CBM2014-00157, IV was represented by a different firm — Sterne, Kessler, Goldstein & Fox P.L.L.C. (Lori A. Gordon, lead; Jonathan M. Strang, backup; Tim R. Seeley added Feb. 2015) plus IV's in-house Donald J. Coulman (CBM2014-00157, Paper 12, Feb. 24, 2015). So IV used Knobbe for the '574 CBM and Sterne Kessler for the '409 CBM. If a source tells you "IV's CBM counsel was Sterne Kessler," that is the 157 matter, not the 160 one.

Petitioners' counsel (the "plaintiff" side), for completeness

• Stephen T. Schreiner (lead) and Eleanor M. Yost (backup), Goodwin Procter LLP, 901 New York Ave., NW, Washington, DC 20001 (service block on Paper 10; Yost also appears on the record in the companion CBM2014-00157 deposition).

---

B. Counsel for the actual defendants in the underlying infringement action (S.D.N.Y. 1:13-cv-03777-AKH)

If by "defendant(s) in this patent infringement case" you meant the JPMC entities sued by IV, the defense team was:

The Federal Circuit's 2018 affirmance confirms the defense lineup: Intellectual Ventures II LLC v. JPMorgan Chase & Co., No. 17-2429 (Fed. Cir. Dec. 17, 2018) (Rule 36) — Brent P. Ray (Kirkland, Chicago) argued for the JPMC appellees, "also represented by Ryan M. Hubbard, Brian Verbus; Kenneth R. Adamo (New York); John C. O'Quinn (Washington, DC)" (opinion PDF).

IV's side in the district court (for contrast)

• Feinberg Day Alberti & Thompson LLP (Clayton W. Thompson II, Ian Feinberg, Elizabeth Day), Dunnegan & Scileppi LLC (William Dunnegan, Benjamin Liebowitz, Laura Jean Scileppi), and Lieff Cabraser Heimann & Bernstein LLP (David Taylor Rudolph) appeared for plaintiff IV II in the S.D.N.Y. case (VitalLaw/IP Law Daily, July 22, 2016); Tensegrity Law Group LLP (Matthew D. Powers, Alex H. Chan, Samantha A. Jameson, Stefani Smith) handled IV's Federal Circuit appeal.

---

Sourcing caveats

1. The PTAB counsel list is solid. It comes from the four corners of the CBM2014-00160 docket (Papers 10 and 12), not secondary reporting.
2. Side-assignment ambiguity in one district-court source. A Feb. 28, 2014 ECF letter to Judge Hellerstein (Docket Alarm exhibit in IPR2014-00672) carries a single "Attorneys for Defendants" block that appears to list Kirkland, Durie Tangri, Dontzin Nagy, and Dunnegan & Scileppi and Feinberg Day together. That is inconsistent with the 2016 VitalLaw attribution (which puts Dunnegan & Scileppi and Feinberg Day on IV's side). I treat the Feb. 2014 exhibit signature block as an OCR/joint-letter artifact and flag it rather than pick one; the well-sourced core is Kirkland & Ellis (lead) + Durie Tangri (outside patent) + Dontzin Nagy & Fleissig (local) for the JPMC defendants.
3. I could not independently verify individual bios/experience for Scott Raevsky (identified only as a registered practitioner, Reg. No. 54,384) or confirm a public bio for Ted M. Cannon beyond his repeated appearance as Knobbe backup counsel on IV PTAB matters. No attorney above is inferred — every name and role is drawn from a cited filing or opinion.
4. No sealed/absent-counsel issue: counsel appeared for both sides (IV's Preliminary Response was filed Nov. 3, 2014, Paper 8, by the Knobbe team), so this is not a case where counsel had not yet appeared.