DCT
3:13-cv-00358
Intellectual Ventures I LLC v. Bank Of America
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Intellectual Ventures I LLC & Intellectual Ventures II LLC (Delaware)
- Defendant: Bank of America, National Association (North Carolina)
- Plaintiff’s Counsel: Feinberg Day Alberti & Thompson LLP; Erwin, Bishop, Capitano & Moss, P.A.
- Case Identification: 3:13-cv-00358, W.D.N.C., 09/05/2013
- Venue Allegations: Venue is alleged to be proper as Defendant has its headquarters, conducts substantial business, provides services, and has committed alleged acts of infringement within the Western District of North Carolina.
- Core Dispute: Plaintiffs allege that Defendant’s online banking platforms, credit card services, and ATM systems infringe five patents related to secure financial transactions, customized web interfaces, and digital data management.
- Technical Context: The patents-in-suit relate to foundational technologies in e-commerce and digital banking, including methods for securing transactions, personalizing user web experiences, and managing financial and image data.
- Key Procedural History: This First Amended Complaint was filed on September 5, 2013. Subsequent to the filing, Bank of America filed petitions for Covered Business Method (CBM) review at the Patent Trial and Appeal Board against all five patents-in-suit. These proceedings (CBM2014-00028, -00029, -00030, -00031, -00033) resulted in the cancellation of all claims asserted in this complaint.
Case Timeline
| Date | Event |
|---|---|
| 1998-05-26 | Priority Date for ’382 Patent |
| 1998-10-28 | Priority Date for ’894 Patent |
| 2000-04-20 | Priority Date for ’701 Patent |
| 2000-08-17 | Priority Date for ’587 Patent |
| 2001-02-06 | Issue Date for U.S. Patent No. 6,182,894 |
| 2002-07-09 | Priority Date for ’137 Patent |
| 2007-08-21 | Issue Date for U.S. Patent No. 7,260,587 |
| 2009-10-13 | Issue Date for U.S. Patent No. 7,603,382 |
| 2010-02-16 | Issue Date for U.S. Patent No. 7,664,701 |
| 2011-12-27 | Issue Date for U.S. Patent No. 8,083,137 |
| 2013-09-05 | First Amended Complaint Filed |
| 2016-01-12 | Post-Grant Certificate Issued Cancelling Asserted ’137 Claims |
| 2016-01-13 | Post-Grant Certificate Issued Cancelling Asserted ’701 Claims |
| 2016-01-15 | Post-Grant Certificate Issued Cancelling Asserted ’382 Claims |
| 2016-01-15 | Post-Grant Certificate Issued Cancelling Asserted ’587 Claims |
Note: The Post-Grant Review certificate for the ’894 Patent was issued on October 23, 2014, cancelling the asserted claim. The table reflects the later dates for the other patents to show the full scope of the post-filing invalidations.
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,664,701 - "Masking Private Billing Data By Assigning Other Billing Data To Use In Commerce With Businesses," Issued February 16, 2010
The Invention Explained
- Problem Addressed: The patent identifies the risk of theft of consumer financial data, such as credit card numbers, which are stored in databases maintained by online businesses after a transaction is complete ('701 Patent, col. 2:1-8). While protocols like SSL secure data in transit, they do not protect data at rest on a merchant's potentially vulnerable server.
- The Patented Solution: The invention describes a "billing service" that acts as an intermediary. Instead of providing their actual credit card number to a business, a user obtains substitute, business-specific billing data from the billing service. The user provides this substitute data to the business for a transaction. The billing service then links the charge against the substitute data back to the user's private account, shielding the user's real information from the business. ('701 Patent, Abstract; Fig. 3).
- Technical Importance: This method provided a way to compartmentalize risk in e-commerce by preventing a data breach at a single merchant from exposing a consumer's primary financial account information. ('701 Patent, col. 1:49-57).
Key Claims at a Glance
- The complaint asserts independent claim 5 (Compl. ¶21).
- Essential elements of claim 5 include:
- A billing service registering a user;
- The billing service receiving identification of a first and a second business with which the user intends to conduct purchasing transactions;
- The billing service associating a first and a second billing data, that are separate and distinct, with the first and the second business respectively; and
- The billing service providing the first and second billing data for use by the user as substitutes for personal billing data for subsequent purchasing transactions.
U.S. Patent No. 7,603,382 - "Advanced Internet Interface Providing User Display Access of Customized Webpages," Issued October 13, 2009
The Invention Explained
- Problem Addressed: The patent describes conventional websites as static and impersonal, forcing all users through the same "virtual gauntlet" of menus and links to find information, regardless of their individual needs or interests ('382 Patent, col. 1:47-62).
- The Patented Solution: The invention proposes a system where a user maintains one or more detailed profiles (e.g., a "business profile" and a "personal profile") containing various personal characteristics. When accessing a website, the user's selected profile is transmitted to the site's server, which then dynamically constructs a tailored webpage from different content modules or "data streams" that are chosen based on the attributes in the user's profile. ('382 Patent, Abstract; Fig. 5A).
- Technical Importance: The technology aimed to shift web design from a one-size-fits-all model to a dynamic, personalized experience tailored in real-time to the individual user's stated preferences and identity. ('382 Patent, col. 2:20-24).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶32).
- Essential elements of claim 1 include:
- A system for providing web pages accessed from a web site in a manner which presents the web pages tailored to an individual user;
- An interactive interface configured to provide dynamic web site navigation data to the user;
- The interface comprising a display depicting portions of the web site visited by the user as a function of the web site navigation data; and
- A display depicting portions of the web site visited by the user as a function of the user's personal characteristics.
U.S. Patent No. 6,182,894 - "Systems And Methods For Authorizing A Transaction Card," Issued February 6, 2001
- Technology Synopsis: The patent addresses fraud in remote (e.g., internet or telephone) transactions where a merchant cannot physically inspect the card. It proposes using a "card identification code" (distinct from a secret PIN) printed on the card itself, which a user must provide during the transaction to prove physical possession of the card. The system verifies this code against a value stored in a database linked to the account number. (’894 Patent, Abstract; col. 2:44-54).
- Asserted Claims: Independent claim 18 (Compl. ¶43).
- Accused Features: Bank of America’s "BankAmericard Cash Rewards Credit Card products and services" are accused of infringing by authorizing transactions using an account code and an identification code that have a predetermined logical relationship (Compl. ¶43).
U.S. Patent No. 8,083,137 - "Administration of Financial Accounts," Issued December 27, 2011
- Technology Synopsis: This patent describes a system allowing a user to establish self-imposed spending limits on a category-by-category basis (e.g., $500/month on "clothing"). The system tracks spending against these budgets and provides notifications to the user or a third party when a limit is approached or exceeded, thereby providing timely information to guide purchasing decisions without necessarily blocking the transaction. (’137 Patent, Abstract; col. 2:9-18).
- Asserted Claims: Independent claim 12 (Compl. ¶54).
- Accused Features: Bank of America's Visa Credit Card services, particularly a "Visa Information Source Select feature," are accused of infringing by causing communication of transaction summary data from a database that stores transaction categories and spending limits (Compl. ¶54).
U.S. Patent No. 7,260,587 - "Method for Organizing Digital Images," Issued August 21, 2007
- Technology Synopsis: The patent discloses a method for organizing large batches of physical documents, like photographs, by scanning them into digital form. The system uses scannable instruction sheets or labels, placed with groups of photos, to automatically associate metadata (e.g., categories, dates, events) with the resulting digital image files, streamlining the organization process. (’587 Patent, Abstract; col. 2:23-33).
- Asserted Claims: Independent claim 18 (Compl. ¶65).
- Accused Features: Bank of America's "ATM Banking system/service" is accused of infringing by automatically organizing digitally scanned images (e.g., deposited checks) according to a predetermined criteria (Compl. ¶65).
III. The Accused Instrumentality
Product Identification
- The complaint identifies several accused instrumentalities, each tied to a specific patent:
- ’701 Accused Services: Online Bill Payment/Bill Pay Center, Email and Mobile Transfers, and Send and Receive Money system/service (Compl. ¶21).
- ’382 Accused Services: The BankAmeriDeals service (Compl. ¶32).
- ’894 Accused Products: BankAmericard Cash Rewards Credit Card products and services (Compl. ¶43).
- ’137 Accused Services: Visa Credit Card products/services featuring the "Visa Information Source Select feature" (Compl. ¶54).
- ’587 Accused Services: The ATM Banking system/service (Compl. ¶65).
Functionality and Market Context
- The complaint alleges these products and services are part of Bank of America's broader online banking offerings provided through its website and physical infrastructure (Compl. ¶19). The complaint describes the functionality of these services at a high level, alleging they perform the functions recited in the patents, such as masking billing data, providing customizable webpages, authorizing transactions, managing transaction data, and organizing scanned images (Compl. ¶¶ 21, 32, 43, 54, 65). The complaint does not provide specific technical details about the internal operation of any of the accused instrumentalities.
Visual Evidence
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain claim charts or detailed infringement theories mapping specific product features to claim elements. The following charts are based on the general allegations in the complaint.
'701 Patent Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a billing service registering a user | The complaint alleges Bank of America’s services, such as Online Bill Pay and Send/Receive Money, register users to perform transactions. | ¶21 | col. 8:62-64 |
| the billing service receiving identification of a first and a second business with which the user intends to conduct... transactions | The services allegedly require identification of businesses or other users to whom payments or transfers are directed. | ¶21 | col. 9:22-26 |
| the billing service associating a first and a second billing data, that are separate and distinct, with the first and the second business respectively | The services allegedly provide unique billing data functionality for transactions with different businesses or users. The complaint does not specify what this data is. | ¶21 | col. 9:30-34 |
| the billing service providing the first and second billing data for use by the user as substitutes for personal billing data... | The services allegedly provide "Billing Data functionality" that masks a user's private billing data by assigning other billing data for use in commerce. | ¶21 | col. 9:35-39 |
'382 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for providing web pages... tailored to an individual user | The complaint alleges the "BankAmeriDeals" service provides "Customizable Webpages." | ¶32 | col. 3:40-44 |
| an interactive interface configured to provide dynamic web site navigation data to the user... | The complaint alleges BankAmeriDeals provides an advanced Internet interface. | ¶32 | col. 4:28-35 |
| a display depicting portions of the web site visited by the user as a function of the web site navigation data | The complaint does not provide specific facts alleging how the BankAmeriDeals service depicts portions of the site based on user navigation data. | ¶32 | col. 3:19-24 |
| and a display depicting portions of the web site visited by the user as a function of the user's personal characteristics | The complaint alleges BankAmeriDeals provides webpages "tailored to an individual user," suggesting a reliance on personal characteristics. | ¶32 | col. 3:45-51 |
Identified Points of Contention
- Claim Validity: The central and likely dispositive issue is that all asserted claims in this litigation were subsequently cancelled in CBM review proceedings initiated by Bank of America. This raises the question of whether any viable infringement claim remains.
- Scope Questions: For the ’701 Patent, a question may be whether services that transfer funds between known bank accounts (like Bill Pay or Zelle) meet the "substitutes for personal billing data" limitation, which the patent specification primarily describes in the context of anonymous, temporary credit card numbers for e-commerce purchases. For the ’587 Patent, a question may be whether automated check processing at an ATM constitutes "organizing" images in the manner claimed, which focuses on a consumer's curation of personal photographs.
- Technical Questions: For the ’382 Patent, a key question is what evidence exists that the "BankAmeriDeals" service functions using the detailed, user-generated "profiles" described in the patent, as opposed to more common targeted advertising methods based on transaction history or broad demographic data. The complaint does not provide facts to support the use of such profiles.
V. Key Claim Terms for Construction
Term from '701 Patent: "billing data"
- Context and Importance: The definition of this term is critical to determining the scope of infringement. The case may turn on whether "billing data" is limited to credit card numbers, as heavily featured in the patent's examples, or if it broadly covers other financial identifiers like bank account and routing numbers used in the accused transfer services.
- Evidence for a Broader Interpretation: The claims use the general term "billing data" without express limitation to credit cards, and the specification mentions "bank account numbers" as an example of private data to be protected ('701 Patent, col. 3:6-9). This may support a construction covering a variety of financial identifiers.
- Evidence for a Narrower Interpretation: The background and detailed description repeatedly frame the problem and solution around "credit card data" and "credit card numbers" in the context of online purchases from a "business" ('701 Patent, col. 1:49-57; col. 5:11-13). This focus could support a narrower construction tied to payment card information.
Term from '382 Patent: "user's personal characteristics"
- Context and Importance: This term defines the input for the claimed tailoring system. Practitioners may focus on this term because its construction will determine whether the accused "BankAmeriDeals" service, which likely uses some form of user data, uses the specific type of data required by the patent.
- Evidence for a Broader Interpretation: The claim language itself is broad and could be argued to encompass any data about a user, such as simple transaction history or demographic information.
- Evidence for a Narrower Interpretation: The specification provides highly detailed examples of the "personal characteristics" intended to be used, illustrating complex, multi-faceted "business" and "personal" profiles with numerous specific attributes like political affiliation, education, and employer type ('382 Patent, Figs. 4A-4C; col. 4:50-67). This may support a narrower construction requiring a rich, user-defined profile structure.
VI. Other Allegations
Indirect Infringement
- For each asserted patent, the complaint alleges that Bank of America induces infringement by instructing users on how to use the accused services through its website (e.g., Compl. ¶¶ 24, 35, 46). It also alleges contributory infringement, asserting that the accused services are a material part of the claimed inventions, are especially adapted for infringement, and are not staple articles of commerce having substantial non-infringing uses (e.g., Compl. ¶¶ 27-28, 38-39).
Willful Infringement
- The complaint alleges willful infringement for all five patents. The basis for willfulness is alleged actual knowledge of the patents, arising from a pre-suit notice letter sent to Bank of America's Chief IP Counsel and from the receipt of the original complaint in the action (e.g., Compl. ¶¶ 22, 33, 44). The complaint also alleges Bank of America was willfully blind to its infringement (e.g., Compl. ¶¶ 26, 37, 48).
VII. Analyst’s Conclusion: Key Questions for the Case
- Jurisdictional and Procedural Viability: The central issue in this case is procedural. Given that all asserted claims from all five patents-in-suit were cancelled in Covered Business Method reviews subsequent to the filing of the complaint, the primary question is what legal basis, if any, remains for the action to proceed.
- Evidentiary Sufficiency: Should the case proceed despite the claim cancellations, a key question would be one of evidence. The complaint makes high-level, conclusory allegations of infringement. A court would need to determine if Plaintiffs could produce sufficient factual evidence to demonstrate that the accused services (e.g., "BankAmeriDeals," "Send and Receive Money") actually operate in the specific manner required by the detailed claim limitations, or if there is a fundamental mismatch in technical operation.