Oracle Corporation v. Peter Henrik Pedersen

Case Overview: Oracle Corporation v. Peter Henrik Pedersen (IPR2023-00867)

Parties and patent. Although styled as "litigation," this matter is an inter partes review before the PTAB — the defensive counterpart to a parallel district court suit. Petitioner Oracle Corporation is the enterprise software and cloud giant (Oracle Cloud, database, and marketing-automation platforms). Patent owner Peter Henrik Pedersen is a Denmark-based individual inventor believed by Unified Patents to be associated with AiPi Solutions; he has asserted the patent-in-suit against a broad sweep of email-marketing and SaaS companies (Google, Microsoft, Yahoo, Adobe, Salesforce, Zoho, Intuit, Wix, Zendesk, Blackbaud, Constant Contact, Monday.com, Aurea Software, Ziff Davis, and Oracle, among others), typically through Ramey LLP in the Western District of Texas (see Unified Patents, "Pedersen '920 message distribution patent challenged" and "AiPi affiliate Pedersen message distribution patent confirmed invalid by Fed. Circuit"). The patent at issue is U.S. Patent No. 6,965,920, "Profile Responsive Electronic Message Management System," issued November 15, 2005 to Pedersen from App. No. 09/904,270 (filed July 12, 2001; priority to Prov. App. 60/217,719, July 12, 2000) (RPX Insight; Google Patents). The '920 patent claims an electronic message management system in which recipients enter profile data specifying delivery parameters — where, when, and how specific types of messages from specific messengers are delivered — while messengers maintain identity/profile data and upload messages, and an "individual message generator" assembles personalized messages per recipient. In short, a centralized, profile-driven email/message distribution system (Fed. Cir. slip op., Pedersen v. Unified Patents, No. 24-2090 (Mar. 26, 2026)).

Accused product and procedural posture. In the underlying suit, Pedersen v. Oracle Corp., No. 6:22-cv-00410 (W.D. Tex.), Pedersen alleged that Oracle's Responsys marketing-automation/email-campaign platform infringed the '920 patent; the complaint targeted Oracle's Austin, Texas operations, and the case was initially assigned to the Waco Division (Judge Alan D. Albright) — a venue notorious for patent-plaintiff-friendly dockets — before being transferred to the Austin Division (re-docketed as No. 1:23-cv-01020) (Complaint, Ex. 1008 to IPR petition; PatSnap case analysis; Joint Motion to Terminate, Paper 10). Oracle answered with this IPR petition (IPR2023-00867, filed April 24, 2023) challenging claims 1–11 and 14–18 on two obviousness grounds: Law (U.S. Patent 7,058,586) in view of Joshi, and Smith in view of Padwick (Petition, Table of Contents; IPVerse case record). The petition also briefed Fintiv and General Plastic factors, signaling concern over the parallel WDTX litigation. Pedersen filed a Preliminary Response on August 23, 2023 (with a Scheyer expert declaration), but before the November 23, 2023 institution deadline the parties settled: a confidential settlement agreement (Ex. 2003) was filed September 27, 2023 with a joint motion to terminate, the district court case was dismissed with prejudice, and the Board (panel including Administrative Patent Judges Larry J. Hume and Stacey G. White) granted termination on October 11, 2023, treating the agreement as business confidential under 35 U.S.C. § 317(b); Oracle's ~$22,500 post-institution fee was refunded October 13, 2023 (Termination Decision, IPR2023-00867, Paper 13; Notice of Refund).

Why the case matters. The IPR is a textbook example of the "WDTX + Ramey LLP" assertion wave against marketing-technology vendors: a single inventor-owned patent asserted against a dozen-plus operating companies, triggering a cascade of defensive IPRs (Unified Patents' IPR2023-00029, Adobe's IPR2023-00986, and Oracle's IPR2023-00867). The Oracle-specific proceeding ended quietly and early — pre-institution, with no merits decision — so Oracle's settlement terms (likely a license, per the sealed agreement) are unknown. Critically, the parallel Unified Patents IPR continued to a final written decision on May 10, 2024 holding claims 1 and 14–17 of the same patent unpatentable as obvious, which the Federal Circuit affirmed on March 26, 2026 in Pedersen v. Unified Patents (No. 24-2090). That post-hoc invalidation underscores the strategic asymmetry of pre-institution settlements: Oracle paid (or otherwise resolved) to exit litigation over a patent that was later shown to be invalid, while Unified Patents — a non-practicing "stakeholder" challenger — obtained the merits ruling that the individual assertor could not survive.

I'll research the key legal developments, covering both the PTAB IPR and the parallel district court litigation.

Good start. Now let me dig into the district court docket events — transfer motion, answer, and the Austin Division dismissal — plus the parallel IPRs.

The transfer details are emerging. Now let me get the full WDTX docket entries, Oracle's answer/counterclaims, and the dismissal in the Austin case, plus the parallel IPRs.

Key Legal Developments & Outcome — Pedersen v. Oracle Corp. / Oracle Corp. v. Pedersen (IPR2023-00867)

Below is the chronological development of the dispute, covering the parallel district court action (Pedersen v. Oracle Corp., No. 6:22-cv-00410-ADA, W.D. Tex., later No. 1:23-cv-01020) and the PTAB IPR that is the nominal "case" in the metadata. Where a fact is not directly verified by retrieved records, I flag it explicitly.

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1. District court filing & initial pleadings (2022)

• 2022-04-22 — Complaint filed. Peter Henrik Pedersen sued Oracle Corporation in the Waco Division of the Western District of Texas, No. 6:22-cv-00410-ADA, assigned to Judge Alan D. Albright, with a jury demand (DocketAlarm/Justia docket; Complaint at Filing 1, WDTX). The single-count complaint alleged infringement of U.S. Patent No. 6,965,920 ("Profile Responsive Electronic Message Management System") under 35 U.S.C. § 271(a), expressly invoking at least claim 1 and naming Oracle's Responsys marketing-automation platform as the accused instrumentality (Complaint ¶¶ 12–20, attached as Ex. 1008 to the IPR petition and reproduced in the PTACTS record). Venue/personal-jurisdiction allegations centered on Oracle's Austin, Texas operations (2300 Oracle Way, Austin, TX 78741). Pedersen was represented by William P. Ramey III of Ramey LLP.
• 2022-04-25 — Service. Oracle was served; answer was due 2022-05-16 (Justia docket, Filing 5).
• 2022-05-10 — Extension. The parties obtained an extension of Oracle's answer deadline to 2022-06-30 (Justia docket, Filing 6).
• Oracle's answer. The actual answer document was not retrieved in this research pass; its content (including any declaratory-judgment counterclaims of non-infringement/invalidity) is not verified. Oracle's defense team comprised Shearman & Sterling (Aaron L. Morris, David P. Whittlesey, Yue "Joy" Wang) and Reichman Jorgensen Lehman & Feldberg (Matthew G. Berkowitz, Patrick R. Colsher, Taylor Mauze, Charles S. Bullock) (WDTX docket, Ex. 1024 to IPR petition; Notice of Refund, IPR2023-00867).

2. Defensive IPR petition (2023)

• 2023-04-24 — IPR petition filed. Oracle filed IPR2023-00867 challenging claims 1–11 and 14–18 of the '920 patent on two obviousness grounds: (i) Law (U.S. Patent 7,058,586) in view of Joshi, and (ii) Smith in view of Padwick, supported by the Martin expert declaration (Petition; IPVerse case record). The petition included the WDTX docket, USDC trial-date statistics, and "ADA Cases"/case-management exhibits, signaling Fintiv and General Plastic briefing in anticipation of the parallel Waco litigation.
• 2023-06-02 — Power of attorney filed by patent owner; 2023-08-23 — Patent Owner's Preliminary Response with the Scheyer expert declaration and CV (IPVerse document list).
• 2023-08-29 — Updated mandatory notices by patent owner.

3. Venue/transfer motion in district court (2023)

• 2023-06-07 — Oracle moved to transfer the case from the Waco Division to the Austin Division of WDTX (per PatSnap's PACER-based analysis of the 6:22-cv-00410 docket).
• 2023-08-23 — Pedersen withdrew his opposition to transfer (after filing a Notice of Venue Discovery but without completing that discovery), leaving the motion unopposed.
• 2023-08-24 — Transfer granted. Judge Albright granted Oracle's unopposed motion; the case was re-docketed in the Austin Division as No. 1:23-cv-01020 (PatSnap case analysis; Joint Motion to Terminate, Paper 10, IPR2023-00867, which cites the transferred case number). Notably, this transfer occurred after the IPR petition was filed, so the IPR preceded (and likely pressured) the venue resolution.
• No motion to dismiss, no stay-pending-IPR motion, no summary-judgment motion, and no Markman proceeding are evidenced in the retrieved record — the case settled before claim construction or any merits ruling. I found no verified docket entry for a formal stay motion; flag: not confirmed in this research pass.

4. Settlement, dismissal & IPR termination (2023)

• 2023-09-27 — Settlement and joint termination papers. The parties filed: (1) a confidential settlement agreement (Ex. 2003) under seal as "Board and Parties Only"; (2) a request to treat the agreement as business confidential under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and (3) a Joint Motion to Terminate the IPR under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.71(a) (Papers 10–12; IPVerse docket). The Joint Motion states the agreement "fully resolves their dispute concerning the '920 Patent," that Pedersen's district court claims against Oracle had already been dismissed with prejudice in No. 1:23-cv-01020 (transferred from 6:22-cv-00410), and that there were no other collateral agreements (Joint Motion, Paper 10, ¶¶ 4–6). Termination was sought before the statutory institution deadline (the Preliminary Response of 2023-08-23 set the institution deadline at 2023-11-23).
• 2023-10-11 — Board termination. The PTAB panel (including Administrative Patent Judges Larry J. Hume and Stacey G. White) granted the joint motion and terminated the IPR pre-institution, with no decision on the merits (Termination Decision, Paper 13; IPVerse status "Terminated-Settled").
• 2023-10-11/13 — Fee refund. Oracle requested, and the Board granted, a refund of the $22,500 post-institution fee (Notice of Refund, dated 2023-10-13).

Final disposition: The district court case ended by dismissal with prejudice (per the parties' representation in the Joint Motion, as of 2023-09-27), and the IPR ended by Board termination on 2023-10-11 due to settlement. The settlement terms (likely a license or similar commercial resolution) remain sealed/confidential and unknown publicly. There was no trial, verdict, JMOL, new-trial motion, or fee award, and no appeal by Oracle or Pedersen in this specific proceeding.

5. Parallel PTAB proceedings on the same patent & their effect

• Unified Patents IPR2023-00029 (filed by non-practicing challenger Unified Patents on the same '920 patent; petition exhibits dated as early as 2022-10-14) continued past institution — unlike Oracle's IPR — and reached a Final Written Decision on 2024-05-10 holding claims 1 and 14–17 unpatentable as obvious (case overview; Fed. Cir. disposition).
• Federal Circuit affirmance — 2026-03-26. In Pedersen v. Unified Patents, No. 24-2090, the Federal Circuit affirmed the Board's invalidation (Fed. Cir. slip op., Mar. 26, 2026). This post-dated Oracle's settlement.
• Adobe IPR2023-00986 — a third IPR on the '920 patent filed in the same wave (per the case overview's identification of the assertion campaign); its disposition was not verified in this research pass.
• Strategic effect. The parallel Unified Patents outcome is the pivotal development: the very claims Oracle paid to resolve (claims 1 and 14–17, which Oracle itself challenged) were later held unpatentable and affirmed on appeal, meaning the pre-institution settlement let Pedersen monetize a patent that the PTAB and Federal Circuit subsequently invalidated. Because Oracle's IPR terminated without an institution decision, no estoppel or merits ruling bound Oracle — but the public record also contains no merits vindication for Oracle in its own proceeding.

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Source grounding & caveats

• Well-sourced: complaint/service/deadline docket entries (Justia; DocketAlarm Ex. 1024 WDTX docket), IPR petition and document list (IPVerse; PTACTS), Joint Motion to Terminate and Notice of Refund (DocketAlarm/PTACTS PDFs), and the transfer timeline (PatSnap PACER-based analysis; PatSnap is a secondary source and its motion date of 2023-06-07 should be confirmed against PACER).
• Not verified in this session: the exact answer filing date and counterclaim content; any stay/summary-judgment motion; the precise dismissal order date in 1:23-cv-01020 (the Joint Motion confirms dismissal with prejudice occurred on or before 2023-09-27); and the status of Adobe IPR2023-00986.

I'll research the counsel of record. Note that this "case" is actually an IPR (petitioner = Oracle, patent owner = Pedersen), so I'll interpret "plaintiff" as the patent owner/plaintiff in the underlying district court case, Peter Henrik Pedersen, and also confirm Oracle's petitioner-side counsel for completeness. Let me search.

I have Oracle's IPR-side counsel (Reichman Jorgensen) and Pedersen's district court counsel (William P. Ramey III, Ramey LLP). Now I need the patent owner's counsel of record in the IPR itself — IPVerse lists "Henry, Jacob et al" as respondent counsel. Let me dig deeper.

I now have both the IPR-side patent owner counsel and the district court plaintiff counsel. Let me verify a few details — whether any additional counsel appeared for Pedersen in the transferred district court case, and background on the attorneys.

Counsel of Record — Plaintiff / Patent Owner Side

A threshold clarification: the docketed "case" in the metadata (IPR2023-00867) is a PTAB inter partes review, which has a petitioner (Oracle) and a patent owner (Peter Henrik Pedersen) — not a plaintiff/defendant structure. The true "plaintiff" in the underlying patent infringement suit is Peter Henrik Pedersen, who sued Oracle in Pedersen v. Oracle Corp., No. 6:22-cv-00410-ADA (W.D. Tex. Waco, filed Apr. 22, 2022; later transferred/re-docketed as 1:23-cv-01020, Austin Division). Below are the counsel of record for Pedersen in both the IPR and the district court suit.

In the IPR (IPR2023-00867) — Patent Owner's counsel of record

Per Pedersen's Mandatory Notices (Paper 7, filed June 2, 2023) and his Power of Attorney (executed April 2023, appointing Ramey LLP, USPTO Customer No. 63,467), both available via PTACTS/Docket Alarm:

These two are the only patent-owner attorneys of record on the PTAB docket (IPVerse also lists respondent counsel as "Henry, Jacob et al."). Pedersen's Preliminary Response (filed Aug. 23, 2023, with the Scheyer expert declaration) and the confidential settlement agreement (Ex. 2003, Sept. 27, 2023) were filed under this same Ramey LLP representation.

In the underlying district court action (plaintiff's counsel)

PatSnap's case analysis likewise identifies William P. Ramey III / Ramey LLP as the sole plaintiff-side counsel, with Oracle represented by Shearman & Sterling (Aaron L. Morris, David P. Whittlesey, Yue "Joy" Wang) and Reichman Jorgensen Lehman & Feldberg (Matthew G. Berkowitz, Patrick R. Colsher, Charles S. Bullock, Taylor Mauze) — the Reichman Jorgensen team doubling as Oracle's IPR petitioner counsel (Matt Berkowitz, lead; Michael J. X. Matulewicz-Crowley and Patrick Colsher, backup).

Experience / notable background (where known)

• William P. Ramey III is the managing partner of Ramey LLP, a Houston IP litigation boutique, and the architect of Pedersen's multi-defendant assertion campaign over U.S. Patent 6,965,920 (suits against Google, Microsoft, Yahoo, Salesforce, Zoho, Intuit, Oracle, Adobe, and others, filed mostly in WDTX before Judge Albright). He is a prolific, well-known serial patent-plaintiff attorney. Separately, RPX reported (Jan. 2024) that a Colorado magistrate judge ordered Ramey to show cause over alleged neglectful conduct (failure to appear at a scheduling conference, failure to serve discovery) in a related AiPi-related matter — an indication of scrutiny he has faced in this campaign.
• Jacob B. Henry is a Ramey LLP practitioner who served as lead PTAB counsel for Pedersen in this IPR; he also handles the firm's USPTO-side filings for the Pedersen '920 campaign.

Gaps / caveats

• I could not verify (within search limits) whether any additional or replacement counsel appeared for Pedersen in the transferred Austin Division case (1:23-cv-01020) before its dismissal with prejudice; the available WDTX Waco docket and PatSnap data show only Ramey LLP for the plaintiff, and the IPR's termination filings were handled by Henry/Ramey.
• The settlement agreement itself (Ex. 2003) is sealed as business confidential under 35 U.S.C. § 317(b), so no separate settlement counsel is visible.
• Oracle's side is not plaintiff counsel, but for completeness: in the IPR, lead petitioner counsel was Matt Berkowitz (Reichman Jorgensen Lehman & Feldberg LLP, Redwood Shores, CA), with backup counsel Michael J. X. Matulewicz-Crowley (NY) and Patrick Colsher (added via updated mandatory notices Aug. 29, 2023); in the district court, Oracle added Shearman & Sterling (Morris, Whittlesey, Wang) as co-counsel.

Bottom line: Pedersen's counsel of record — both as patent owner in IPR2023-00867 and as plaintiff in the parallel WDTX suit — is Ramey LLP (Houston): Jacob B. Henry (lead, IPR) and William P. Ramey III (backup in the IPR; lead plaintiff's counsel in the district court action). No other plaintiff-side attorneys appeared of record in the sources reviewed.

Counsel of Record for the Defendant (Patent Owner) — IPR2023-00867

A threshold clarification on framing: in this PTAB proceeding, Oracle is the Petitioner and Peter Henrik Pedersen is the Patent Owner / Respondent (the "defendant" per the case metadata). In the parallel district court suit (Pedersen v. Oracle Corp., 6:22-cv-00410-ADA, W.D. Tex., later transferred to the Austin Division as 1:23-cv-01020), Pedersen is the plaintiff and Oracle is the defendant — so the same two attorneys below also served as Pedersen's plaintiff-side litigation counsel. The IPR file shows two counsel of record for Pedersen, both at Ramey LLP (Houston):

1. William P. Ramey III — Lead/Managing counsel for Patent Owner

• Role: Managing partner and lead counsel for Pedersen; signed and served as counsel of record in the IPR and as Pedersen's litigation counsel in the WDTX suit.
• Firm: Ramey LLP, 5020 Montrose Blvd., Suite 800, Houston, TX 77006 (tel. 713-426-3923; wramey@rameyfirm.com).
• Experience note: The architect of the nationwide '920 patent assertion campaign against email-marketing/SaaS vendors (Google, Microsoft, Yahoo, Adobe, Salesforce, Zoho, Intuit, Wix, Oracle, and others, mostly filed in Waco before Judge Albright). He is a highly active patent-plaintiff attorney who has drawn judicial criticism and sanctions exposure in the campaign — e.g., in November 2023–January 2024, a D. Colo. magistrate judge ordered him to show cause why he should not be referred to that court's Committee on Conduct for missed conferences and discovery failures, with his response revealing the scale (and funding arrangements) of the monetization operation (RPX Insight, Jan. 28, 2024).

2. Jacob B. Henry — Counsel of record for Patent Owner

• Role: Co-counsel of record for Pedersen in the IPR (appears on the PTAB service lists and Board orders); also a Ramey LLP associate appearing across Pedersen's campaign cases.
• Firm: Ramey LLP, Houston, TX (jhenry@rameyfirm.com; firm service address uspto@rameyfirm.com).
• Experience note: Handles the PTAB and district-court filings in Pedersen's campaign; was the served counsel on Oracle's post-termination refund request (Oct. 11, 2023) and appears on the Board's Termination Decision and Notice of Refund service lists for Patent Owner.

Sources for both: the PTAB Termination Decision (IPR2023-00867, Paper 12, Oct. 11, 2023, before APJs Hume, White, and Wormmeester — service list: "Jacob B. Henry … William P. Ramey, III"); Petitioner's Request for Refund of Post-Institution Fees (Paper 13) certifying service on "Jacob Henry / William Ramey" at Ramey LLP; the USPTO Notice of Refund (Oct. 13, 2023) listing both as Patent Owner counsel; and the WDTX docket (Ex. 1024 to the IPR petition) showing Ramey LLP's Houston address and phone.

Caveats

• Lead vs. backup designation: I could not retrieve Pedersen's Patent Owner Mandatory Notices (filed/updated ~Aug. 29, 2023, per IPVerse's docket log) in this session, so the formal lead/backup labels under 37 C.F.R. § 42.8 are not directly confirmed. What is confirmed from the Board's own decisions and service certificates is that Ramey and Henry were the only two counsel of record for the Patent Owner. In the underlying district-court case, Ramey appeared as the sole/lead attorney for Pedersen (he is Texas-barred, so no separate local counsel was needed).
• No in-house or additional counsel identified for Pedersen in this IPR; the settlement agreement (Ex. 2003) is sealed as business confidential, and the proceeding was terminated pre-institution on Oct. 11, 2023 without any merits decision.
• For completeness (the other side): Oracle's IPR counsel were Matt Berkowitz (lead; Reichman Jorgensen Lehman & Feldberg, Redwood Shores, CA), with backup Michael J. X. Matulewicz-Crowley (New York) and later-added Patrick Colsher (Redwood Shores); in the parallel WDTX suit Oracle was additionally represented by Shearman & Sterling attorneys Aaron L. Morris (San Francisco), David P. Whittlesey (Austin), Yue (Joy) Wang (Menlo Park), and Charles S. Bullock, plus RJLF's Taylor Mauze. Oracle's in-house counsel in these matters were not identified in the public docket entries retrieved.