WILMINGTON (LN) — A Delaware federal judge on Monday refused to throw out Assurant Inc.'s declaratory judgment lawsuit against patent licensing firm Intellectual Ventures, ruling that IV's targeted infringement presentations, an "urgent" licensing demand, and a pattern of suits against similarly situated financial institutions were enough to establish a live controversy under the Declaratory Judgment Act.
U.S. District Judge Gregory B. Williams denied the motion to dismiss filed by Intellectual Ventures I LLC, Intellectual Ventures II LLC, and co-defendant Callahan Cellular L.L.C., which had argued the parties' exchanges amounted to nothing more than cordial negotiations — "consisting of a few e-mail exchanges and one relatively short video-conference" — that never rose to the level of a litigation threat.
The court disagreed. According to the complaint as recited in the opinion, IV's vice president of licensing, Steve Joroff, first emailed Assurant on January 3, 2024, to discuss intellectual property and licensing matters, proposing an initial discussion covering IV's expansive patent portfolio and its relevance to Assurant's operations. When Assurant did not respond, Joroff followed up nine days later with an "urgent" email emphasizing "the pressing need for a patent license agreement with Assurant."
What followed was more pointed still. IV provided Assurant with a presentation titled "Banking Tech Presentation" that identified specific software platforms Assurant allegedly used — Docker, Kubernetes, Zelle, and 3DSecure2 — and mapped each to specific patent claims IV contended those platforms practiced. A second presentation, "IFF Licensing Opportunity: Assurant," alleged that Assurant's use of Apache Hadoop infringed a fifth patent and included an overview of IV's litigation history defending its portfolio. IV circulated a draft license agreement on March 13, 2024.
Assurant filed suit two days later, on March 15, 2024, after telling IV it did not infringe and did not intend to take a license.
Judge Williams concluded that the communications reflected "targeted communications directed at Plaintiff and its specific products" and that IV's argument — that it never explicitly threatened to sue — did not carry the day. Citing the Federal Circuit's decision in Danisco U.S. Inc. v. Novozymes A/S, the court noted that Article III "does not mandate that the declaratory judgment defendant have threatened litigation or otherwise take action to enforce its rights before a justiciable controversy can arise."
The court also leaned on IV's broader enforcement record. By the time Assurant filed, IV had already sued Liberty Mutual, Comerica, and JPMorgan Chase in the Eastern District of Texas over the same patents at issue. After the filing, IV went on to sue Southwest Airlines, American Airlines, and Bank of New York Mellon in Texas federal courts on the same patents. Judge Williams acknowledged that later events cannot create jurisdiction where none existed, but said they "may reinforce the correctness of a court's conclusion regarding the existence of an actual controversy."
Assurant had argued that IV is "a notorious non-practicing entity with a pattern of aggressive – not cordial – tactics" that "followed the same strategy against Assurant as it has with dozens of other targets." The court did not adopt that characterization wholesale, but its analysis tracked the same logic: under the totality of the circumstances, IV's conduct "can be reasonably inferred as demonstrating its intent to enforce its patent rights."
The five patents at issue — the '785, '080, '844, '167, and '391 patents — remain in dispute, and the case now proceeds past the threshold jurisdictional question toward the merits of Assurant's non-infringement claims.