Symantec Corporation v. Intellectual Ventures I LLC

Overview and Background

This docket is a PTAB proceeding, not a district-court infringement case — and the caption runs in the opposite direction from the underlying litigation. IPR2016-01433 is Symantec Corporation v. Intellectual Ventures I LLC, an inter partes review of U.S. Patent No. 7,757,298 that Symantec filed on July 14, 2016 and that terminated with a Final Written Decision on January 5, 2018

I'll research this case thoroughly. Note at the outset that IPR2016-01433 is a PTAB proceeding, so I'll need to trace both the IPR and the underlying district court litigation it interleaves with.

Good — I've established the IPR timeline. Now let me pin down the final written decision outcome and the underlying district court case.

Now I have the IPR outcome. Let me investigate the parallel district court litigation and other PTAB proceedings on the '298 patent.

Threshold correction: IPR2016-01433 is a PTAB trial, not a district court case

The case number in the metadata is an inter partes review before the Patent Trial and Appeal Board (Symantec Corp. v. Intellectual Ventures I LLC, Case IPR2016-01433, U.S. Pat. No. 7,757,298 B2), not a civil action. It therefore contains no complaint, answer, counterclaims, Rule 12/56 motions, Markman order, jury, JMOL, or fee motion — those events exist only in the parallel district court tracks on the same patent, which I've reconstructed below. Filing date 2016-07-14; final written decision 2018-01-05 — both consistent with the metadata.

Two district court tracks litigated the '298 patent in the same window: W.D. Pa. (IV v. Erie Indemnity, Judge Hornak) and, on the IPR record, E.D. Tex. (IV v. Symantec, No. 6:15-cv-660-JRG, Judge Gilstrap).

---

Chronology

1. District court pleadings and § 101 dismissal (W.D. Pa.)

The court held the '298 claims directed to the abstract idea of identifying and categorizing electronic files — a long-prevalent problem predating computers — and found no inventive concept: "selecting files based on identifiers and matching different files/identifiers is just what computers do." It rejected IV's machine-or-transformation argument and held that the appended source code did not save the claims because the patent claims a process, not the code. 200 F. Supp. 3d at 576–77.

2. E.D. Tex. infringement action and claim construction (spring 2016)

IV sued Symantec in the Eastern District of Texas, Tyler Division, No. 6:15-cv-660-JRG (Judge Rodney Gilstrap), jury demand. The IPR record preserves the claim construction activity in that case as IV Exhibits 2002–2005:

• 2016-04-04 — Dkt. 66-1, Exhibit "A," Agreed Constructions
• 2016-05-04 — Dkt. 75, IV's Opening Claim Construction Brief
• 2016-05-25 — Dkt. 79, IV's Reply Claim Construction Brief
• 2016-06-01 — Dkt. 80-1, LPR 4-5(d) Joint Claim Construction Chart

IV also lodged dictionary definitions of "part" and "portion" (IV Ex. 2001, New Collegiate Dictionary (1973)), indicating a disputed '298 term. I could not verify the Markman ruling, trial date, or final disposition of 6:15-cv-660 from available sources — treat those as open.

3. The IPR itself (IPR2016-01433)

I'll start by running several searches in parallel to find coverage from multiple angles.

Initial searches mostly surface the Delaware district court case (IV v. Symantec, $17M verdict), not the IPR. Let me dig into the specific PTAB proceeding and the '298 patent.

Press coverage of Symantec v. Intellectual Ventures, IPR2016-01433

Bottom line: I found essentially no press coverage of this IPR itself. Searches on the case number, the caption, the patent number, and party names returned no Law360, Reuters, Bloomberg Law, IPWatchdog, or Patently-O article reporting on the Board's January 5, 2018 final written decision in IPR2016-01433. The only case-specific records I located are primary-source and docket materials rather than journalism: a Law360 PTAB docket page confirming the caption, July 14, 2016 filing date, and "Final Written Decision" status; the oral hearing transcript of October 12, 2017 before APJs Giannetti, Jung, and Anderson (Joseph Richetti and Alexander Walden of Bryan Cave for Symantec; John King and Ted Cannon of Knobbe Martens for IV); and a later district-court filing that lists the IPR's paper trail, including institution on January 18, 2017 (Paper 6) and the 37-page § 318(a) decision of January 5, 2018 (Paper 25). Because these are court/agency records, they establish the procedural history but contain no journalistic analysis, and I did not find any outlet characterizing the outcome. Notably, the docket materials show the parties fully briefed and argued the '298 patent's claims — but no press account of what the Board ultimately held surfaced in my searches, so I cannot verify the outcome from news coverage at all.

What did generate substantial press is the adjacent, frequently confused litigation between the same two parties in Delaware — Intellectual Ventures I LLC v. Symantec Corp., No. 10-cv-1067-LPS — which concerned different patents ('050, '142, and '610) and is not IPR2016-01433. Reuters reported on 2015-02-06 that a Delaware federal jury ordered Symantec to pay $17 million for infringing two IV patents, "far less than the $298 million Intellectual Ventures had been seeking," while clearing Symantec on a third patent. BBC News framed the verdict as IV's first jury payout and noted the judge had barred Symantec from using the term "patent troll," quoting IV chief litigation counsel Melissa Finocchio ("We remain committed to defending inventor rights…") and a Symantec spokesman saying the company was "pleased the verdict came back for substantially less" than sought. Law360 and World IP Review put the demand at roughly $299–300 million, and GeekWire highlighted that Symantec had unsuccessfully tried to bar IV from seeking hundreds of millions on a patent it acquired for under $1 million. IV's own counsel, Susman Godfrey, issued a 2015-02-10 release describing the nine-day trial and quoting Parker Folse that it "represented a jury's first look at Intellectual Ventures' security software patents."

Accounts diverge most sharply on what happened next, and that divergence matters for anyone reading the '298 IPR in context. Law360 reported that on 2016-09-30 IV's appeal "backfired," as the Federal Circuit affirmed invalidity of two patents and invalidated a third, reversing a favorable $8 million verdict; IPWatchdog and Wiley analyzed the § 101 holdings in detail, while Patently-O and the Free Software Foundation treated Judge Mayer's concurrence calling for categorical exclusion of software patents as the real story — the FSF going so far as to say the ruling was "not, however, a total victory," a characterization more advocacy than reporting. Separately, Law360 (Kelcee Griffis, 2017-02-15) quoted Symantec's Dean Dunlavey saying IV was "batting 0 for 7" on patents asserted against Symantec — an executive statement that is the closest thing I found to commentary connecting the parties' broader patent war, though even that article concerns the '533 storage patent, not the '298 patent.

Caveat on conflating sources. The '298 patent's public paper trail runs mainly through Intellectual Ventures I LLC v. Erie Indemnity Co. (W.D. Pa.), where the court held the '298 patent ineligible under § 101 — a ruling I found only in court-opinion aggregators and the opinion text itself (CourtListener), not in press coverage. I would flag that none of the articles above reports on IPR2016-01433, and any summary that presents the $17 million verdict or the Federal Circuit's § 101 decision as "the outcome" of this IPR would be inaccurate: the '298 patent was not among the patents tried in Delaware, and the PTAB proceeding rose and fell on different grounds.

Sources

• UNITED STATES PATENT AND TRADEMARK OFFICE
• Federal Circuit Clarifies 'Inventive Concept' as Applied to Computers - Federal Circuit Clarifies ‘Inventive Concept’ as Applied to Computers
• Intellectual Ventures I LLC v. Symantec Corp. (Fed. Cir. 2016)
• Federal Circuit invalidates three software patents; Judge Mayer calls for ban on all software patents
• IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
• Intellectual Ventures I LLC v. Symantec Corp. - From Casetext: Smarter Legal Research
• Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307
• Intellectual Ventures I LLC v. Erie Indemnity Co. – CourtListener.com - 📣 The Wait is Over
• U
• Intellectual Ventures I LLC v. Erie Indemnity Co.
• INTELLECTUAL VENTURES I LLC v. ERIE INDEMNITY COMPANY
• Intellectual Ventures- Latest News on Intellectual Ventures | Read Breaking News on Zee News

I'll research this case's docket and counsel. Let me start with several searches.

Now let me dig into the petition's counsel listing and related records.

Let me pull the actual Power of Attorney and updated mandatory notices from this docket.

Threshold point: "plaintiff" needs a translation in this case

IPR2016-01433 is not a district-court infringement action — it is an inter partes review before the PTAB, so there is no PACER civil docket, no complaint, and no "local counsel." The party aligned with "plaintiff" in your caption is the petitioner, Symantec Corporation; Intellectual Ventures I LLC is the patent owner (the real party in interest defending the '298 patent). Everything below therefore addresses Symantec's* petitioner-side* counsel of record. (Note: the third-party Patexia docket styles the case "Symantec Corporation et al. v. Intellectual Ventures I LLC," but every Board paper I located — including the hearing transcript and the Final Written Decision — names only Symantec Corporation as petitioner, so treat the "et al." as unverified.)

---

Counsel of record for Petitioner Symantec Corporation

Key sourcing: Record of Oral Hearing, Paper 24 (Oct. 30, 2017), appearances page — "ON BEHALF OF THE PETITIONER: JOSEPH J. RICHETTI, ESQ., ALEXANDER WALDEN, ESQ., Bryan Cave LLP, 1290 Avenue of the Americas, New York, New York 10104-3300"; hearing transcript colloquy ("Joseph Richetti from Bryan Cave for Symantec. With me, my colleague Alexander Walden, also from Bryan Cave"). Docket: Petition (Paper 2) and Power of Attorney (Paper 1) filed July 14, 2016; Updated Mandatory Notices (Paper 18) filed July 31, 2017; Final Written Decision (Paper 25) entered January 5, 2018.

What I could not verify — stated explicitly

• Symantec in-house counsel: No in-house attorney is identified in the public papers I reviewed. Do not assume one; the PTAB papers designate outside counsel only. (Contrast: IV had a corporate representative, Russ Rigby, at the hearing — a representative, not counsel of record.)
• Contents of the Power of Attorney (Paper 1) and Updated Mandatory Notices (Paper 18): these are the controlling § 42.8(b)(3) counsel designations, and I could not retrieve their text. Crowe's name is an inference from Symantec's boilerplate Bryan Cave POA in parallel IPRs, not a verified fact for IPR2016-01433.
• Local counsel: none exists in a PTAB proceeding; if you were expecting one, that expectation comes from the co-pending district-court case, not this docket.

Context you may actually be after

If your underlying research question is the district-court litigation, the roles invert: Intellectual Ventures I LLC was plaintiff and Symantec the defendant in Intellectual Ventures I LLC v. Symantec Corp., No. 6:15-cv-660-JRG (E.D. Tex., Tyler Division) — the case whose claim-construction papers were filed in this IPR as IV Exhibits 2003–2005. The plaintiff-side (IV) counsel in that litigation are not on this PTAB record and would need a separate PACER pull; I won't guess at them.

For completeness on the other side of this IPR: IV's counsel of record were John King (lead) and Ted M. Cannon (back-up), Knobbe Martens, 2040 Main Street, 14th Floor, Irvine, CA 92614 — per the same hearing transcript.

I'll research the counsel of record for Intellectual Ventures I LLC in this IPR proceeding.

Bottom line up front

A few important framing points before the names:

1. This is not a district‑court infringement case. IPR2016‑01433 is an inter partes review at the PTAB, so there is no "local counsel," no PACER civil docket, and no complaint. The party you're calling the "defendant" is the patent owner/respondent, Intellectual Ventures I LLC; Symantec Corporation was the petitioner.
2. Verified from docket metadata: the panel was Administrative Patent Judges Hyun J. Jung (lead/opinion author), Gregg I. Anderson, and Thomas L. Giannetti; petition filed July 14, 2016; institution January 18, 2017 (Paper 6); final written decision January 5, 2018 (Paper 25) (Patexia docket summary).
3. Confidence flag: I was not able to pull the caption block of IV's Mandatory Notice (37 C.F.R. § 42.8(b)(3)) or the final written decision PDF for this specific docket number in this session. The attorney identifications below are drawn from Intellectual Ventures' PTAB counsel designations in contemporaneous IV IPRs handled by the same team in the same 2016–2018 window (e.g., IPR2015‑01323, Patent Owner's Updated Mandatory Notices, May 17, 2016). Treat them as highly probable but requiring confirmation against Papers 3/4 and the FWD caption of IPR2016‑01433 before you cite them in a filing.

---

Intellectual Ventures I LLC — PTAB counsel of record (as designated in contemporaneous IV proceedings)

Source for the designations (IV's § 42.8(b)(3) notice in a parallel IV IPR): Patent Owner's Updated Mandatory Notices, IPR2015‑01323 (May 17, 2016).

---

Caveats and what to verify

• No local counsel exists in this forum. PTAB practice uses only lead and backup counsel under 37 C.F.R. § 42.10(a); litigation counsel from IV's district-court teams (e.g., the Delaware and E.D. Tex. actions) appear in IPRs only if separately admitted pro hac vice, and I found no evidence of that here. Do not describe anyone as "local counsel" for this matter.
• Roles are designation-based, not outcome-based. "Lead" vs. "backup" reflects the § 42.8(b)(3) caption, not who argued at the October 12, 2017 oral hearing. The hearing transcript (Record of Oral Hearing, Paper 24) is the document that would tell you who actually argued for IV.
• Not verified for this docket specifically: the exact Papers 3/4 caption for IPR2016‑01433, and whether Gordon or Wright was named lead. To confirm, pull PTAB E2E / PTAB Center for IPR2016‑01433, Papers 3 and 4 (mandatory notices) and the caption page of Paper 25 (Final Written Decision, Jan. 5, 2018, 37 pages).
• Nothing was sealed or counsel-less. This proceeding ran to a full trial and FWD, so counsel of record definitively existed throughout; the gap is in my retrieval, not in the record.

If you need the petitioner side for symmetry (Symantec's IPR counsel, which would be the "plaintiff" here), say the word and I'll run that down separately rather than guess.