PNC Financial Services Group, Inc. et al. v. Intellectual Ventures I LLC

I'll research this case and its related litigation before drafting.

Good initial results. Let me verify the district court posture, judge, and the Federal Circuit outcome.

Let me verify the PNC district court outcome, the '298 patent's provenance, and the parallel PTAB proceedings.

Case Overview: PNC Financial Services Group v. Intellectual Ventures I, CBM2014-00032

The parties. This proceeding is the PTAB-side mirror image of a district court suit: the petitioners are The PNC Financial Services Group, Inc. and PNC Bank, N.A. (with PNC Merchant Services Company, L.P. added in the later-filed case) — a Pittsburgh-based, top-ten U.S. bank holding company (NYSE: PNC) whose accused conduct is its consumer and commercial online/mobile banking and electronic payments channels. The patent owner is Intellectual Ventures I LLC (with affiliate Intellectual Ventures II LLC in the district court actions), the assertion subsidiaries of Intellectual Ventures, the Bellevue, Washington invention-fund founded in 2000 by Nathan Myhrvold and backed by institutional/sovereign investors. IV is a classic NPE/PAE — it does not make or sell products; it acquires, develops, and licenses patent portfolios and litigates when licensing talks fail. Neither party is a university or a product-market competitor of the other, so the dispute is a pure monetization/defense contest. (IV's own complaint describes it as "deeply involved in the business of invention," creating and filing patents for license — IV complaint, ¶ 10.)

The technology and patents. IV's complaint, Intellectual Ventures I LLC v. PNC Financial Services Group, Inc., No. 2:13-cv-00740-AJS (W.D. Pa., filed May 29, 2013), accused PNC's online banking "and other systems and services via electronic means," expressly identifying pnc.com, pncsites.com, and PNC's Popmoney person-to-person payments portal (pnc.pogopayment.com). Five patents were asserted, with these one-line sketches: US 7,634,666 — accessing records in a mainframe database (accused via PNC's use of IBM System z/zEnterprise hardware); US 5,745,574 — "Security Infrastructure for Electronic Transactions" (accused via PCI-DSS-compliant session encryption); US 6,546,002 — an "intelligent and mobile menu-interface agent" for remote data/file access; US 7,757,298 — "Method and Apparatus for Identifying and Characterizing Errant Electronic Files," i.e., server-side screening that flags illicit or unauthorized files by file size/aggregate-size thresholds, filename-vs-content mismatch, or data past an end-of-data marker, then confirms via checksum comparison against a library of known bad files (priority to 1999 provisionals; issued July 13, 2010); and US 6,314,409 — controlling access to and distribution of digital property. The '298 patent was the sole subject of CBM2014-00032, which challenged claims 1–16 on a single ground: 35 U.S.C. § 101. Notably, the '298 is a web-hosting/anti-pornography-and-piracy file-screening patent whose specification talks about hosting services, not banking — and IV's complaint never particularized which PNC system practiced it, a gap that became dispositive at the Board.

Procedural posture and why it matters. PNC petitioned for CBM review on November 12, 2013; the Board denied institution on May 22, 2014 in Paper 13, PNC Financial Services Group, Inc. v. Intellectual Ventures I LLC, CBM2014-00032 (P.T.A.B.), panel of APJs Thomas L. Giannetti, Hyun J. Jung (author), and Gregg I. Anderson (decision PDF; PTAB Trial Blog summary). The Board never reached § 101: it held PNC failed the AIA § 18(a)(1)(E) / 37 C.F.R. § 42.301(b) threshold because it argued only that the '298 was "deemed" a covered business method patent by virtue of being asserted against a bank, without citing the specification, claims, file history, or even its own expert declaration for anything financial. The claims, the Board said, "describe software systems that have general utility not specific to any application," and "the mere assertion of a patent against a bank or other financial institution is not sufficient by itself to transform a patent into a 'covered business method patent.'" This was a decision of first impression on § 18's financial-prong and is still cited by petitioners and the Board in later CBM eligibility fights (see, e.g., a later petition quoting "CBM2014-00032, Paper 13 at 7, 11–12" for the proposition that an expert must actually explain the financial nexus). Because institution was denied, there was no final written decision, no PTAB estoppel, and no appeal — institution denials are non-appealable — so PNC's CBM gambit produced no merits ruling at all.

The district court side ran in parallel before Judge Arthur J. Schwab in the Pittsburgh division of the W.D. Pa. (Docket: [2:

I'll research this. Note upfront: the metadata frames CBM2014-00032 as the "case," but that's a PTAB proceeding, not a district-court infringement action — so I'll cover the CBM and the underlying/parallel district court litigation that the petition arose from.

Key thread identified: the CBM arose from Intellectual Ventures I LLC v. PNC Financial Services, Inc., No. 2:13-cv-00740 (W.D. Pa.). Let me dig into that docket and the other PTAB challenges to the '298 patent.

Now let me get the district court docket history and disposition for the PNC case, plus the later Symantec IPR outcome.

Preliminary correction to the case framing

The metadata describes CBM2014-00032 as "this patent infringement litigation," but CBM2014-00032 is a PTAB covered-business-method review that was never instituted — there is no complaint, answer, Markman, discovery, trial, or verdict in it. The actual infringement action that generated the petition was:

Intellectual Ventures I LLC & Intellectual Ventures II LLC v. PNC Financial Services Group, Inc. & PNC Bank, N.A., No. 2:13-cv-00740 (W.D. Pa.) — filed 2013-05-29, Pittsburgh Division, assigned to Judge Arthur J. Schwab. (Justia docket)

I therefore trace both tracks below and flag where the record is thin.

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I. Chronology

1. Filing and initial pleadings — W.D. Pa., 2013-05-29

IV I and IV II sued PNC Financial Services Group and PNC Bank, asserting five patents: US 7,634,666 ('666, IBM System z mainframe), US 5,745,574 ('574, PCI DSS encryption), US 6,553,002 ('002), US 7,757,298 ('298, "Method and Apparatus for Identifying and Characterizing Errant Electronic Files"), and US 6,314,409 ('409). The accused services were PNC's online-banking platforms (pnc.com, pncsites.com, Pogo payment site) and PCI DSS validation functionality. (complaint text; RPX copy)

• The complaint pleaded direct, induced, and contributory infringement of the '298 patent, with the inducement theory aimed at PNC's merchant/PCI-validation customers ("'298 Direct Infringers").
• PNC answered and counterclaimed (Justia docket reflects PNC Financial and PNC Bank as counterclaimants against both IV entities), presumably seeking declaratory judgment of non-infringement/invalidity. I could not retrieve the answer's filing date or its specific counts from a primary source.

2. The CBM petition — 2013-11-12

PNC petitioned for CBM review of claims 1–16 of the '298 patent solely on 35 U.S.C. § 101 grounds. (CBM2014-00032 docket listing) This was one of a series of PNC-filed PTAB challenges to patents in the W.D. Pa. case (PNC also appears as petitioner in CBM2014-00177 on US 6,237,095, per its exhibit filings).

3. Institution denied — 2014-05-22 (Paper 13)

The Board (Giannetti, Jung, Anderson; opinion by Jung) denied institution in a 15-page decision. Decision PDF

Reasoning, in short:

• § 18(a)(1) of the AIA limits CBM review to patents 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."
• PNC's only argument was that IV had asserted the patent against PNC's financial services — i.e., that the patent is "deemed" covered by virtue of the infringement allegation, relying on Sen. Schumer's statement at 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011).
• The Board rejected that categorical rule: assertion against a bank is one factor, and "[t]he mere assertion of a patent against a bank or other financial institution is not sufficient by itself to transform a patent into a 'covered business method patent.'" The claims recite software of "general utility not specific to any application," and neither the specification, prosecution history, nor PNC's expert declaration identified anything financial. (Nat'l Law Review summary; Lexology analysis)

This was a case of first impression on the CBM "financial product or service" gate and became a standard citation for the proposition that accused-product identity does not confer CBM jurisdiction.

Procedural consequence: institution denials are not appealable (35 U.S.C. § 324(e)), so the CBM ended at Paper 13. No POP/expanded-panel review, no Federal Circuit review. PNC obtained no PTAB estoppel and no invalidity ruling.

4. Parallel PTAB attack — IBM's IPR2014-01516

• 2014-09-17 — IBM petitioned for IPR of the '298 patent on §§ 102/103 grounds (Ex. 1001 Kemmerer declaration; Symantec's later papers reuse this exhibit set).
• 2015-03-30 — Board denied institution (Paper 7, 20 pages).
• 2015-08-24 — Rehearing denied (Paper 9, 12 pages). Int'l Bus. Mach. Corp. v. Intellectual Ventures I LLC, IPR2014-01516. (exhibit index)

This matters to the litigation: the W.D. Pa. defendants deferred their § 101 motion on the '298 patent while PTAB proceedings were pending, and the Erie court expressly noted the '298 patent was excluded from its first dismissal round for that reason.

5. District court, 2014–2015 — no Markman, no trial

• IV's W.D. Pa. campaign against financial institutions

I'll search for press coverage on this CBM proceeding and the related litigation.

Let me search additional angles, including Law360, IPWatchdog, and the related district court/Federal Circuit proceedings.

Now let me look for coverage of the parallel district court case and Federal Circuit outcome, plus trade press on the CBM ruling.

Press coverage summary

Coverage of CBM2014-00032 itself is sparse and entirely legal-trade: I found no Reuters, Bloomberg, Law360, Ars Technica, The Verge, or mainstream business-press article about this petition. The proceeding was reported on by PTAB-focused practitioner outlets because of the legal question it resolved, not because of the parties or any money at stake. There are no reported damages figures, no settlement, and no market-impact commentary in any account I located — consistent with the fact that the Board never reached the merits of PNC's § 101 challenge.

The most substantive account is from the PTAB Trial Blog, which reported in late May 2014 that the Board (Giannetti, Jung, Anderson; opinion by Jung) denied institution of CBM review of claims 1–16 of the '298 patent on May 22, 2014, because PNC failed to satisfy the jurisdictional requirements of AIA § 18. Its stated takeaway: "The mere assertion of a patent in district court against a bank or other financial institution is not sufficient by itself to transform a patent into a 'covered business method patent.'" The same post, republished by the National Law Review on 2014-05-28, explained that PNC's sole argument for CBM eligibility was that Intellectual Ventures had asserted the '298 patent against PNC's financial services, and that neither the petition nor PNC's expert declaration pointed to anything in the specification tying the claims to finance; the Board instead found the claims have "general utility not specific to any application." The blog also noted the Board rejected PNC's reliance on a statement by Senator Schumer in the AIA legislative history.

Lexology published a longer analysis on 2014-06-13 under the headline "Not so fast! PTAB rules patent not covered business method," characterizing the ruling as "a case of first impression" in which the Board "did not even reach the merits of the dispute." That piece emphasized the contrast with earlier Board decisions that read the CBM definition broadly — including where the specification, rather than the claims, discussed financial matters — and distilled the practical lesson that a petitioner "should not rely solely on the fact that the patent was asserted against a financial product or service." Note that this framing (a sharp doctrinal break) is the author's characterization and goes somewhat beyond the Board's own opinion, which presented itself as applying the existing claim-focused framework to insufficient evidence.

Coverage of the '298 patent's fate after the CBM denial came through the parallel litigation rather than this docket: Mealey's reported on 2017-11-15 (and again on 2017-11-07) that the Federal Circuit affirmed on 2017-11-03 in Intellectual Ventures I LLC v. Erie Indemnity Co., No. 17-1147, that the file-identification patent was properly held ineligible and the infringement allegations dismissed under Rule 12(b)(6) — the outcome PNC had sought on the merits in its unsuccessful CBM petition. One further data point worth flagging for accuracy: the CBM ruling on the '298 patent is frequently cited in later PTAB petitions as precedent, whereas the Board did institute and invalidate a different IV patent asserted against PNC in the companion proceeding, CBM2014-00030 (the '382 patent), a 2015 final written decision covered by Lexology. I found no press reporting on any PNC–IV settlement or license.

Sources

• service or monetary matter
• Trials@uspto
• IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA
• Docket Alarm | Litigation Outcomes, Delivered - - All Courts
• Decision Denying Institution of Covered Business Method Patent Review CBM2014-00032 - ptabtrialblog
• Not so fast! PTAB rules patent not covered business method - Register now for your free, tailored, daily legal newsfeed service.
• Covered business method patent held invalid under 35 USC 101 and Alice - Register now for your free, tailored, daily legal newsfeed service.
• PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Intellectual Ventures, Decision Denying Institution of Covered Business Method Patent Review - September 21, 2026
• ing each claim of the asserted patents was unnecessary
• INTELLECTUAL VENTURES I LLC et al v. PNC FINANCIAL SERVICES GROUP, INC. et al
• We are persuaded by Petitioner that at least claim 1 encompasses activities that are financial in nature, incidental to a financ...
• 5. Upon information and belief, Defendant, PNC Bank NA ("PNC Bank"), is a Pennsylvania corporation with a principal place of bus...

I'll research counsel of record, starting with the PTAB docket and the parallel district court case.

Threshold correction on party roles

Before naming anyone, one framing issue has to be flagged, because it determines whose counsel you're actually asking for.

The case metadata labels PNC as "Plaintiff(s)," but in CBM2014-00032 PNC is the petitioner (the party that filed the CBM on 2013-11-12) and Intellectual Ventures I LLC is the patent owner. The Board's decision caption confirms the alignment: PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Intellectual Ventures I LLC, CBM2014-00032, Paper 13 (May 22, 2014), and it identifies the "Related Matter" as Intellectual Ventures I LLC and Intellectual Ventures II LLC v. PNC Financial Services, Inc. and PNC Bank NA, No. 2:13-cv-00740 (W.D. Pa., filed May 29, 2013) — i.e., in the only actual infringement suits, IV was the plaintiff and PNC the defendant. So I've listed (A) PNC's PTAB counsel of record, since PNC is the party your metadata designates as plaintiff, and (B) IV's counsel on the plaintiff side of the parallel infringement actions, since that is the only place a true "plaintiff's counsel" exists in this dispute.

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A. PNC's counsel before the PTAB (the party designated "plaintiff" in the metadata)

The same WilmerHale team handled the entire PNC/IV CBM family filed in November 2013 (CBM2014-00028, -00029, -00030, -00031, -00032, -00033), and the Board's papers in those proceedings list them as petitioners' counsel:

Important sourcing caveat: I identified PNC's counsel from the Board's counsel/service blocks in the companion IV CBMs and from the consolidated oral-hearing transcript, not from a page-by-page read of CBM2014-00032's own papers. The '298 docket does contain a Power of Attorney (Paper 5, filed Nov. 12, 2013) and a further Power of Attorney (Paper 7, filed Dec. 3, 2013), but I could not retrieve their text. Because CBM2014-00032 was filed the same day by the same PNC interests and was denied institution without a hearing, the same WilmerHale team appearing for PNC in every other IV CBM is a strong — but technically inferential — attribution. This should be confirmed against the Paper 5/Paper 7 POA designations in PTAB E2E before being cited as established.

Also note there was no trial and no oral hearing in CBM2014-00032 (institution denied May 22, 2014), so there is no "counsel who appeared" beyond the papers.

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B. Plaintiff-side counsel in the parallel infringement actions (IV as plaintiff)

If the question is really about "counsel for the plaintiff in the patent infringement case," that is IV's side of Intellectual Ventures I/II LLC v. PNC Financial Services Group, Inc., No. 2:13-cv-00740-AJS (W.D. Pa., filed May 29, 2013, before Judge Arthur J. Schwab; terminated Dec. 6, 2013), and the refiled/related W.D. Pa. action No. 2:14-cv-00832:

Caveats / open items:

• The attorney list for No. 2:13-cv-00740 as returned from the Justia docket is a combined, side-agnostic list; I have attributed the Feinberg Day names to IV and WilmerHale names to PNC based on each firm's known role in the IV campaign, not on individual appearance slips. The names truncated in that listing (e.g., "Thomas L. ___," "Jonathan L. ___," "Justin J. ___," "Daniel E. ___," "Ian N. ___," "Joseph F. ___") are most likely PNC-side WilmerHale and local counsel, but I will not guess at full names.
• I did not locate a W.D. Pa. local counsel appearance for IV (Pennsylvania counsel admitted to the bar of the Western District) in either 2:13-cv-00740 or 2:14-cv-00832; that may simply not be reflected in the sources I could reach.
• IV's counsel of record in CBM2014-00032 itself would have been disclosed in its "Patent Owner Submission of Mandatory Notice Information Pursuant to 37 C.F.R. § 42.8(a)" (Paper 8, filed Dec. 4, 2013). I did not read that paper, so the Petri/Novak Druce attribution above comes from the companion decisions, though it is the same panel and same patent owner and same filing window.
• Nothing in this docket is sealed; the reason for the thin record is simply that institution was denied on the § 18(d)(1) jurisdictional threshold without reaching the merits.

Bottom line: for the party your metadata calls the plaintiff, the counsel of record are Donald R. Steinberg and Monica Grewal (WilmerHale, Boston), with Gregory H. Lantier and James L. Quarles III (WilmerHale, D.C.) acting pro hac vice in the related IV CBMs; on the true plaintiff side of the infringement suits, IV was represented by David Alberti, Elizabeth Day, Sal Lim and colleagues at Feinberg Day Alberti & Thompson, with Coulman/Seeley in-house and Petri/Murphy of Novak Druce before the PTAB.

I'll research counsel of record for the patent owner/defendant, Intellectual Ventures I LLC, in CBM2014-00032.

I found the Patent Owner's counsel named in the denial decision. Let me verify against the docket and the mandatory notices/power of attorney.

Framing note (important)

CBM2014-00032 is not a patent infringement case; it is a Patent Trial and Appeal Board covered business method review, and the caption runs PNC Financial Services Group, Inc. et al. v. Intellectual Ventures I LLC. There is therefore no "defendant" in the Rule 12/Answer sense and no complaint. The party occupying the defensive/respondent role is Intellectual Ventures I LLC, styled "Patent Owner." Counsel of record for that party are listed below. (The parallel infringement action in which PNC were the defendants was Intellectual Ventures I LLC v. PNC Financial Services Group, Inc., No. 2:13-cv-00740 (W.D. Pa.) — a separate docket referenced in the Board's decision as a "Related Proceeding.")

Counsel of record for Intellectual Ventures I LLC (Patent Owner)

The Board's own caption in the decision denying institution is the controlling source — PNC Fin. Servs. Group, Inc. v. Intellectual Ventures I LLC, CBM2014-00032, Paper 13 at 16–17 (PTAB May 22, 2014) — and it lists exactly two attorneys, both at Knobbe, Martens, Olson & Bear, LLP, with the firm's Irvine, California address and @knobbe.com service emails.

Notes on this designation:

• The two-attorney caption is not an inference: the decision's signature block reads verbatim "FOR PATENT OWNER: Brenton R. Babcock / Ted M. Cannon / KNOBBE, MARTENS, OLSON & BEAR, LLP / 2brb@knobbe.com / 2tmc@knobbe.com."
• The same pairing appears in IV's filings in sibling proceedings as lead/back-up counsel, e.g., Intellectual Ventures II LLC mandatory notices substituting "Brenton R. Babcock … as lead counsel and Ted M. Cannon … as back-up counsel," with the identical Irvine address and registration numbers.
• A Patent Owner power of attorney was filed in this proceeding on 2013-12-03 (Paper 7, 4 pages); the '298 patent's USPTO bibliographic data lists "Knobbe, Martens, Olson & Bear, LLP" as the attorney/agent firm of record, so the PTAB counsel were also the patent's prosecution-side firm.
• No in-house IV attorney appears in the CBM2014-00032 caption. This is worth flagging because in contemporaneous IV matters IV's in-house practitioners (e.g., Donald J. Coulman, Reg. No. 50,406, and Tim R. Seeley, Reg. No. 53,575, of Intellectual Ventures, Bellevue, WA) were listed as back-up counsel. They are not listed here, and I found no filing in this docket naming them. Do not assume they appeared.
• Likewise, Novak Druce Connolly Bove & Quigg LLP (Henry A. Petri, Jr.; James Murphy) appeared in the consolidated CBM2014-00028/-00029/-00030/-00033 oral hearing, not in -00032. The oral-hearing transcript from March 2, 2015 covers those four cases only; -00032 had already been denied institution ten months earlier and had no hearing. Attributing Novak Druce to this docket would be an error.
• Because institution was denied, there was never a trial, no protective order, and no sealing issues in this docket. There is also no "local counsel" concept at the PTAB.

Record gaps I could not close

• I could not retrieve a complete, page-by-page PTAB docket sheet for CBM2014-00032 (PTAB E2E / PTAB Trial Tracker); my access was to the Board's decision PDF and secondary docket indexes. It is possible Paper 7 (the POA) names additional practitioners associated with a Knobbe customer number who technically held power of attorney but never entered an appearance. Only Babcock and Cannon are of record in the papers I could verify.
• The earlier PTAB filing date is 2013-11-12 (petition), with the denial issued 2014-05-22 — consistent with the case metadata.

For contrast: the other side (not asked, but relevant to the record)

Petitioners PNC Financial Services Group, Inc. and PNC Bank, N.A. were represented by Wilmer Cutler Pickering Hale and Dorr LLP — Donald R. Steinberg and Monica Grewal (Boston, 60 State Street) are named "FOR PETITIONERS" in the same Paper 13 caption. This matters analytically because the Board's denial turned on the sufficiency of PNC's showing, not on any submission by IV's counsel.