WILMINGTON — U.S. District Judge Gregory B. Williams on Thursday denied a motion to dismiss, ruling that Assurant Inc.’s complaint sufficiently alleged subject matter jurisdiction for its declaratory judgment action against Intellectual Ventures I LLC.

The court held that the defendants’ conduct, viewed in light of the complaint’s allegations, demonstrated an intent to enforce their patent rights against the insurance provider, satisfying the “actual controversy” requirement under the Declaratory Judgment Act.

Assurant, a Delaware corporation with its principal place of business in Atlanta, sued Intellectual Ventures I LLC, Intellectual Ventures II LLC, and Callahan Cellular L.L.C. in March 2024, seeking a declaration that it does not infringe four patents held by the defendants.

The defendants, collectively known as “IV,” are non-practicing entities. IV I and IV II are based in Bellevue, Washington, while Callahan is based in Wilmington, Delaware. They own the ’785, ’080, ’844, and ’167 patents, which IV claims cover software platforms used by Assurant, including Docker, Kubernetes, Zelle, and 3DSecure2.

The dispute began in January 2024, when Steve Joroff, IV’s vice president of licensing, emailed Assurant to discuss “intellectual property and licensing matters,” according to the complaint.

Joroff stated he led a team responsible for negotiating patent license agreements “particularly within the realm of banking, insurance, and financial services” and proposed a discussion covering IV’s “expansive patent portfolio,” the complaint alleges.

When Assurant did not respond, Joroff sent a follow-up email nine days later emphasizing the “pressing need for a patent license agreement.”

IV then provided Assurant with a presentation titled “Banking Tech Presentation,” which identified specific software platforms allegedly used by Assurant and claimed they practiced specific patent claims.

The presentation alleged that Docker practices Claim 7 of the ’844 Patent; Kubernetes practices Claim 30 of the ’785 Patent; Zelle practices Claim 43 of the ’167 Patent; and 3DSecure2 practices Claim 18 of the ’391 Patent.

In February 2024, IV sent an additional presentation titled “IFF Licensing Opportunity: Assurant,” alleging that Assurant’s use of Apache Hadoop infringed the ’080 Patent and providing an overview of IV’s litigation history.

On March 13, 2024, IV circulated a draft license agreement to Assurant.

IV also sent a document titled “Intellectual Ventures Financial Services Licensing Program,” which indicated that IV developed pricing tiers based on potential damages and was “actively protecting its intellectual property rights by initiating various litigations.”

Assurant informed IV on March 15, 2024, that it did not infringe the patents and did not intend to take a license.

The next day, Assurant filed suit seeking a declaratory judgment of non-infringement.

IV moved to dismiss, arguing that no case or controversy existed because IV had not threatened litigation, had not outlined a specific infringement theory, and had not sent a formal notice letter.

IV characterized the negotiations as “cordial” and consisting of “a few e-mail exchanges and one relatively short video-conference.”

The court did not explicitly reject this characterization but found that IV’s actions constituted “targeted communications directed at Plaintiff and its specific products.”

Williams noted that IV’s enforcement actions against other financial institutions bolstered Assurant’s claim of an actual controversy.

The court cited multiple lawsuits IV had filed alleging infringement of the same patents, including suits against Liberty Mutual, Comerica, and JPMorgan Chase in November 2023.

The court also noted that IV had asserted the patents against Southwest Airlines, American Airlines, and The Bank of New York Mellon Corporation in late 2024 and early 2025.

“While '[l]ater events may not create jurisdiction where none existed of filing,' such events may reinforce the correctness of a court’s conclusion regarding the existence of an actual controversy,” Williams wrote, citing Microsoft Corp. v. DataTern, Inc.

The judge concluded that a patentee’s “aggressive enforcement strategy, even of direct threats against the declaratory plaintiff, may also support jurisdiction.”

Under the totality of the circumstances, the court concluded that IV’s conduct could be “reasonably inferred as demonstrating its intent to enforce its patent rights.”

Williams denied IV’s motion to dismiss, allowing Assurant’s declaratory judgment claim to proceed.