Oracle America, Inc. v. Realtime Data LLC d/b/a IXO

I'll research this proceeding and the underlying patent family before drafting.

I'll research this. Note upfront: the metadata frames this as IPR2017-00167, a PTAB proceeding—not a district court infringement suit—so I'll cover the IPR itself plus the parallel district court litigation between these parties on the '812 patent.

Let me dig into the specific PTAB decisions and the district court docket.

Good — I have the termination decision. Now let me verify the parallel IPR2016-00783 outcome and the Federal Circuit appeal, plus the district court pleadings.

Threshold note on posture

Two things worth flagging before the chronology:

1. The metadata caption is inverted relative to the district court. At the PTAB, Oracle was the petitioner (hence "Oracle America, Inc. v. Realtime Data LLC"). In the district court, Realtime was the plaintiff — Realtime Data LLC d/b/a IXO v. Oracle America, Inc., No. 6:16-cv-00088-RWS-JDL (E.D. Tex., Tyler Div.) — and Oracle was the defendant.
2. There was no trial, no Markman hearing in the Oracle case proper, no verdict, no JMOL/fee motion, and no appeal in the Oracle dispute. IPR2017-00167 died pre-institution by joint motion after settlement. So the "litigation" here resolves into two tracks: a short-lived E.D. Tex. case that settled with prejudice in May 2017, and a separate PTAB proceeding on the same '812 patent brought by Oracle's co-defendants (IPR2016-00783), which invalidated every claim Oracle had been accused of infringing — but only after Oracle had already exited.

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Chronological developments

1. First E.D. Tex. suit and service of the '812 complaint (2015)

Realtime Data sued Oracle America, HPE and HP Enterprise Services in Realtime Data LLC v. Oracle America, Inc., No. 6:15-cv-00467 (E.D. Tex., filed 2015-05-08), asserting the '812 patent among others. Proof of service was filed at ECF 16. This 2015 complaint became the evidentiary hook for the § 315(b) time-bar fight two years later (Realtime Ex. 2012–2013 in IPR2017-00167). That case was later consolidated into the 2016 action.

2. Complaint in the lead case (2016-02-26)

Realtime filed No. 6:16-cv-00088-RWS-JDL against Oracle, HPE and HPES, asserting five patents: U.S. Pat. Nos. 7,161,506; 9,054,728; 6,597,812; 7,358,867; and 7,395,345 (per the AO-120 form filed 2016-02-29, Dkt. 5). The '812 infringement theory against Oracle was indirect infringement (inducement and contributory) directed at Oracle Database Hybrid Columnar Compression used with Exadata — the same accused technology Realtime pleaded in its later, narrower complaint.

Strategic note: the '812 was never the centerpiece; Realtime spread five patents across a defendant group, and the '812 was simultaneously under attack by the SAP/Dell/HP/Teradata coalition at the PTAB.

3. Answer and counterclaims (2016-05-03)

Oracle filed its Answer to Realtime Data LLC's Complaint and Counterclaims on 2016-05-03 (22 pages), pleading declaratory-judgment counterclaims of non-infringement and invalidity. ⚠️ Sourcing caveat: I located the filing and date via a brief's appendix index rather than the docket text itself, and I could not verify whether Oracle pleaded additional counts (e.g., unenforceability/inequitable conduct). Treat the counterclaim count list as unconfirmed.

4. Parallel IPR on the '812 by the other defendants (2016-04-01 → 2016-10-05)

SAP America, Sybase, Dell, HPE, HPES and Teradata Operations filed IPR2016-00783 on 2016-04-01, challenging claims 1–4, 8, 14–17, 21 and 28 of the '812 over O'Brien in view of Nelson (and O'Brien + Nelson + Welch for claims 14–17, 21). Institution granted 2016-10-05 (Paper 19). This is the proceeding that mattered: it used essentially the same O'Brien/Nelson obviousness theory Oracle later pressed in IPR2017-00167.

5. Oracle's first IPR wave (2016-06-27 / 2016-07-01)

Oracle (with co-petitioners) filed an earlier cluster of petitions in early 2016: the Board instituted IPR2016-00373 and IPR2016-00374 on 2016-06-27, and denied institution in IPR2016-00375, -00376 and -00377 on 2016-07-01. ⚠️ I could not confirm from the sources reviewed which of Realtime's other four asserted patents each of these five petitions targeted; they did not cover the '812.

6. Claim construction — the '812 terms were construed in the Actian consolidated order (2016-07-28)

This is the single most important procedural point about "Markman" in this matter: there were no disputed '812 terms left to construe in the Oracle case.

• In the consolidated Actian litigation (No. 6:15-cv-463-RWS-JDL), Magistrate Judge John D. Love issued a Report and Recommendation on 2016-07-28 (Dkt. 360) recommending denial of defendants' motion for partial summary judgment of indefiniteness as to the '812, '530 and '908 patents — including rejection of HP's argument that "similar" (claims 1, 4, 8, 14, 17, 21, 28 of the '812) was indefinite. The court held "similar" means "data blocks that can be treated as the same for purposes of run-length encoding." That R&R was adopted over HP's objections (Dkt. 47) in No. 6:16-cv-88, Doc. 84 (Oct. 2016). This was a defense loss and a scope win for Realtime.
• The court also denied defendants' attempt to narrow "characteristic, attribute, or parameter" to "data type" in the '513/'728 family, following Actian.
• The formal Markman order in No. 6:16-cv-88 (Doc. 83, 2016-10-28) construed only one disputed term — "one or more encoders are associated with the one or more parameters or attributes of the data" ('728 claim 24) — which the court held needs no construction (plain and ordinary meaning), rejecting defendants' "selected based

I'll research this PTAB proceeding. Note upfront: IPR2017-00167 is an inter partes review at the PTAB, not a district court infringement case, so "plaintiff" maps to the petitioner (Oracle). Let me pull the docket and related materials.

Good — I have the petition's counsel block. Now let me verify the full docket (any later appearances, pro hac vice motions, powers of attorney) and attorney backgrounds.

Let me pull the actual docket sheet for the proceeding and confirm whether any counsel were added after the petition.

Threshold clarification: who is "plaintiff" here

IPR2017‑00167 is not a district‑court infringement suit — it is an inter partes review at the USPTO's Patent Trial and Appeal Board. The caption Oracle America, Inc. v. Realtime Data LLC is the Board's own caption, with Oracle as Petitioner (the party that filed and prosecuted the challenge) and Realtime Data LLC d/b/a IXO as Patent Owner. There is no "plaintiff" in the Rule 3 / FRCP sense; the functional equivalent of plaintiff-side counsel is Oracle's petitioner counsel. (The infringement actions ran separately, e.g., Realtime Data LLC d/b/a IXO v. Oracle America, Inc., No. 6:17‑cv‑00046 (E.D. Tex., filed Jan. 23, 2017), where Realtime was plaintiff and Oracle defendant — a different counsel lineup. Say the word if you want that side pulled instead.)

Counsel of record for Oracle America, Inc. (Petitioner)

Source for both: the Petition for Inter Partes Review filed Nov. 2, 2016, whose signature block reads "Filed on behalf of Oracle America, Inc. By: Monica Grewal, Reg. No. 40,056 (Lead Counsel); Donald Steinberg, Reg. No. 37,241 (Back-up Counsel), Wilmer Cutler Pickering Hale and Dorr LLP, 60 State Street Boston, MA 02109" (PTAB petition document, IPR2017‑00167), and the Board's Order Conduct of the Proceeding, Paper 14 (Mar. 30, 2017), in the consolidated caption IPR2017‑00108/‑00167/‑00168, which lists the service e‑mails Monica.grewal@wilmerhale.com and Don.steinberg@wilmerhale.com as Oracle's counsel of record as of the settlement.

Status of appearances — what is and isn't in the record

• No change of counsel, and no later pro hac vice admissions, are reflected in anything I could retrieve. The proceeding was filed Nov. 2, 2016 and terminated Apr. 11, 2017 — roughly five months — without an institution decision, so there was no scheduling order, no motion practice on the merits, and no opportunity for the usual PHV admissions that follow institution. The same two WilmerHale attorneys appear as Oracle's counsel in the petition and in the last pre‑termination Board paper.
• No in‑house Oracle attorney is identified in the petition's counsel block or the Board's service list. Oracle's real party‑in‑interest statement identifies Oracle America, Inc. (no listed in‑house counsel appeared of record).
• I could not open the full PTAB E2E / Docket Alarm document list for this specific proceeding (the search tool returned the consolidated order and third‑party petition copies rather than the IPR2017‑00167 docket index itself). So I cannot rule out a ministerial paper — e.g., a power of attorney or updated mandatory notice — that did not add a new name. Treat the two-attorney list as accurate to a high confidence level, and this as the one residual gap.
• Nothing here is sealed. The settlement agreement was filed "Board Only" as confidential under 37 C.F.R. § 42.74(c) pursuant to the Mar. 30, 2017 order — that document is sealed, but it contains no counsel information.

For completeness: opposing counsel

Realtime Data (Patent Owner) was represented by Sterne, Kessler, Goldstein & Fox PLLC (Jason D. Eisenberg, Donald J. Featherstone, Robert G. Sterne, Tyler Dutton, Zhu He — Washington, DC) with Noroozi PC (William P. Rothwell; Kayvan B. Noroozi admitted pro hac vice) — names drawn from the same Paper 14 service list and Realtime's mandatory notices. These are adverse counsel, not plaintiff-side.

Related Oracle/Raltime PTAB matters with the same team

The Grewal–Steinberg WilmerHale pairing also represented Oracle as petitioner against Realtime in the companion proceedings terminated the same day: IPR2017‑00108 (U.S. Pat. No. 9,054,728) and IPR2017‑00168 (also the '812 patent), plus Oracle's earlier IPR2016‑00373/‑00374 ('513 patent) where Grewal filed the ADR statement.

Confidence note: attorney names, roles, firm, office and registration numbers are directly sourced from filed PTAB papers and are reliable. Biographical "notable case" details for Ms. Grewal are sourced from WilmerHale's own bio page and PTAB Bar Association materials (2005-era litigation credits are the firm's own characterizations); I did not independently verify a specific marquee trial win for Mr. Steinberg, so I have limited his note to what the PTAB filings themselves show.

I'll research the counsel of record for Realtime Data LLC in this IPR proceeding.

Let me dig into the actual filings for this specific IPR.

Now let me find the actual docket documents (power of attorney, mandatory notices, termination order) for this specific IPR.

Threshold clarification on the caption

A framing note before the attorney list, because it affects how "defense counsel" should be read:

IPR2017-00167 is not a district-court infringement suit. It is an inter partes review before the PTAB. There is no plaintiff or defendant; Oracle America, Inc. was the Petitioner and Realtime Data LLC d/b/a IXO was the Patent Owner / Respondent. Under the case metadata's convention, "defendant" = Realtime Data, the patent owner, and that is the side I researched. There is likewise no "local counsel" role in PTAB practice the way there is in E.D. Tex.; PTAB practice uses lead counsel and back-up counsel (37 C.F.R. § 42.10(a)–(c)).

The proceeding was terminated on April 11, 2017 following a joint motion to terminate in view of the Oracle–Realtime settlement (the Board authorized the joint motions in IPR2017-00108, No. 14, Order — Conduct of the Proceeding (P.T.A.B. Mar. 30, 2017), which was entered in IPR2017-00108, -00167, and -00168).

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Counsel of record for Realtime Data LLC

Realtime was represented in IPR2017-00167 by two firms: Sterne, Kessler, Goldstein & Fox P.L.L.C. (Washington, D.C.) and Noroozi PC (Sugar Land, Texas at the time).

Best-sourced service list. The Board's March 30, 2017 Order in the companion proceedings carries a "PATENT OWNER" service block applicable to IPR2017-00167 listing exactly two e-mail contacts:

• Jason Eisenberg — Jasone-ptab@skgf.com
• William Rothwell — william@noroozipc.com

Third-party PTAB databases (GreyB/IPVerse) list Jason Eisenberg as the sole "Respondent Counsel" for IPR2017-00167 — that entry is incomplete, as the Board's own order and the parallel filings below show.

Caveats and sourcing

• The role labels above are reconstructions, not verbatim PTAB designations. The IPR2017-00167 power of attorney and mandatory notices themselves are not reproduced in the publicly indexed material I retrieved; the March 30, 2017 Order's service block is the strongest direct evidence of who was of record. The "lead vs. back-up" split for Eisenberg vs. Rothwell is inferred from: (a) Eisenberg's appearance first on the -00167 service block and in the GreyB docket aggregation, and (b) Rothwell's designation as "Lead Counsel" in Realtime's April 18, 2017 power of attorney (IPR2017-00557) and in the June 20, 2017 SKGF withdrawal motion (IPR2017-00179) — documents dated after -00167 terminated. Treat the Eisenberg/Rothwell lead designation as probable, not certain.
• Nothing about counsel is sealed. What was sealed is the settlement itself: the Board authorized the parties to file the settlement agreement and related papers as "Board Only" under 37 C.F.R. § 42.74(c). The termination filings are therefore not public, but appearances are.
• The SKGF withdrawal never happened in -00167. SKGF was replaced by Noroozi PC (Rothwell as lead, Noroozi as back-up) in Realtime's surviving IPRs in June–July 2017. IPR2017-00167 had already terminated on April 11, 2017, so no withdrawal motion was needed there — the Eisenberg/SKGF appearance simply lapsed with termination.
• Not invented / not attributable: No in-house Realtime attorney appears of record in this IPR; Realtime's principal place of business in this period was 5851 Legacy Circle, Plano, Texas. I found no in-house counsel signature on any -00167 filing.

For context — Realtime's parallel district-court team (different forum)

In the co-pending E.D. Tex. infringement suits where Realtime was the plaintiff (e.g., Realtime Data LLC d/b/a IXO v. Oracle America, Inc., No. 6:16-cv-00088-RWS-JDL), Realtime's counsel were Marc A. Fenster, Reza Mirzaie, Adam S. Hoffman, Paul A. Kroeger, C. Jay Chung, James N. Pickens, and Philip X. Wang of Russ August & Kabat (Los Angeles), with E.D. Tex. counsel including Claire Abernathy Henry and Johnny Ward, Jr. These attorneys did not appear in the PTAB proceeding and should not be listed as counsel of record in IPR2017-00167.

Key sources

• IPR2017-00108, No. 14, Order — Conduct of the Proceeding, 37 C.F.R. § 42.5 (P.T.A.B. Mar. 30, 2017), entered in IPR2017-00108 / -00167 / -00168 — Patent Owner service block naming Eisenberg and Rothwell; authorization for joint termination and confidential settlement papers.
• Oracle America, Inc. v. Realtime Data LLC, IPR2016-00373, Joint Notice (Apr. 17, 2017) — signed by Joseph E. Mutschelknaus and William P. Rothwell as "Counsel for Patent Owner."
• Realtime Data LLC's Updated Power of Attorney, IPR2017-00557 (Apr. 18, 2017) — Rothwell as lead counsel, Noroozi as back-up (PHV pending), Eisenberg/Featherstone/Mutschelknaus/Sterne/Asthana listed.
• Patent Owner Realtime Data LLC's Motion to Withdraw Sterne Kessler Goldstein and Fox PLLC as Counsel, IPR2017-00179 (June 20, 2017); see also IPR2017-00806, No. 15, Order Granting Motion to Withdraw Counsel (P.T.A.B. July 7, 2017).
• GreyB/IPVerse, IPR2017-00167 case page (counsel field: Petitioner — Monica Grewal; Respondent — Jason Eisenberg).
• Noroozi PC, "Federal Circuit Affirms Three IPR Wins For Realtime Data" (firm site) — Rule 36 affirmances on the '728, '530, and '908 patents.