Litigation

Peter Henrik Pedersen v. Oracle Corporation

Transferred

6:22-cv-00410

Patents at issue (1)

Defendants (1)

Summary

Infringement action by Peter Henrik Pedersen against Oracle Corporation concerning US Patent 6,965,920. The case was transferred from Waco to the Austin Division of the Western District of Texas on August 24, 2023; claims survived transfer, there was no merits ruling, and the case remained open.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

Based on my research (docket records, PTAB filings, Unified Patents/RPX coverage, and the Federal Circuit's 2026 affirmance), here is the case overview:


Parties. Plaintiff Peter Henrik Pedersen is an individual inventor residing in Denmark (Gammel Hareskovvej 285, Værløse), the sole owner of U.S. Patent No. 6,965,920 ("the '920 Patent"), which issued November 15, 2005, from Application No. 09/904,270. Unified Patents describes Pedersen as "believed to be associated with AiPi Solutions," and he litigates through William P. Ramey III of Ramey LLP, a high-volume patent-assertion firm in the Western District of Texas. Defendant Oracle Corporation is a Delaware corporation with its principal address at 2300 Oracle Way, Austin, TX 78741 — a major enterprise software and cloud-services company, including the Oracle Responsys marketing-automation platform (acquired by Oracle in 2014). Oracle was represented by Shearman & Sterling (Aaron L. Morris, David P. Whittlesey, Yue Wang) and Reichman Jorgensen Lehman & Feldberg (Matthew G. Berkowitz).

Patent and accused product. The complaint (filed April 22, 2022, Dkt. 1) asserts the '920 Patent, titled "Profile Responsive Electronic Message Management System," and identifies Oracle's Responsys platform as the accused instrumentality. The patent is directed to a system and method for the central specification and management of how electronic messages from multiple senders are distributed to recipients: recipients supply "messenger-specific profiles" with delivery parameters governing "where, when and how specific types of messages from each messenger are delivered." Claim 1 (the lead claim asserted, literally and under the doctrine of equivalents, under 35 U.S.C. § 271(a)) requires a recipient profile application that receives and stores recipient-specified delivery parameters over a global network. Pedersen sought damages and injunctive relief.

Procedural posture and venue. The case was filed in the Waco Division of the Western District of Texas and assigned to Judge Alan D. Albright (case 6:22-cv-00410-ADA), then the leading patent-docket judge in the country following TC Heartland. Venue was premised on Oracle's "regular and established place of business" at its Austin campus (28 U.S.C. § 1400(b)) and on Oracle's sales of Responsys in the district. After Oracle moved to transfer intra-district (June 7, 2023), Pedersen filed a notice of venue discovery but withdrew his opposition (August 23, 2023), and Judge Albright granted the unopposed transfer to the Austin Division on August 24, 2023, where the case was renumbered 1:23-cv-01020 (Albright retained the docket). The case did not reach a merits ruling: the parties settled, the district court claims were dismissed with prejudice, and on September 27, 2023, they jointly moved to terminate Oracle's parallel IPR (IPR2023-00867), which the PTAB terminated pre-institution on October 11, 2023, under a confidential agreement.

Why the case is notable. This is one node of a broad, single-patent assertion campaign by an individual inventor (with alleged AiPi Solutions ties) against email-marketing and messaging vendors. Pedersen first sued in November 2021 against Alphabet/Google, Mailgun, Microsoft, and Ziff Davis (f/k/a J2 Global), then added Oracle, Salesforce (6:22-cv-00409), and Zoho (6:22-cv-00408) in April 2022, with later assertions against Yahoo, Intuit, Adobe, Wix.com, Zendesk, Blackbaud, Constant Contact, Monday.com, and Aurea Software. The campaign's trajectory illustrates the standard W.D. Tex. dynamics of the era: Waco filing before Judge Albright, aggressive venue-transfer pressure from big-tech defendants (Oracle's unopposed Waco-to-Austin transfer; Zoho's parallel transfer), and IPR-based attack. Critically, the patent did not survive collateral challenge: Unified Patents' IPR2023-00029 resulted in a PTAB Final Written Decision (May 10, 2024) holding all challenged claims (1 and 14–17) unpatentable as obvious over Funk in view of Law or Kamakura, and the Federal Circuit affirmed on March 26, 2026 (Pedersen v. Unified Patents, LLC, No. 24-2090, nonprecedential), finding substantial evidence supported the Board's obviousness determination. Oracle's own IPR (IPR2023-00867) and Adobe's (IPR2023-00986) both terminated via settlement on the same day (October 11, 2023), underscoring how the campaign was resolved defendant-by-defendant through confidential settlements while Unified Patents pursued a merits kill of the patent. One caveat: the precise district-court dismissal docket entry and any fee terms of the Oracle settlement are not public in the sources reviewed; the dismissal with prejudice is confirmed by the parties' own IPR termination filing, and the overall case status is confirmed by RPX/Patexia.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Peter Henrik Pedersen v. Oracle Corporation — Key Legal Developments & Outcome

Case No. 6:22-cv-00410-ADA (W.D. Tex., Waco Div.) → transferred to Austin Div., renumbered 1:23-cv-01020; U.S. Patent 6,965,920 ("electronic message management system"). Judge Alan D. Albright (Waco, then Austin Division). Below is the chronological record, with source-grounded items distinguished from items I could not independently verify.


1. Filing & Initial Pleadings

  • 2022-04-22 — Complaint filed. Pedersen (a Danish citizen) sued Oracle in the Waco Division of the W.D. Tex., asserting infringement of U.S. Patent No. 6,965,920, with a jury demand (Dkt. 1; attached Exhibit A and the patent; AO 120 form at Dkt. 2). Cause: 35 U.S.C. § 271. The complaint targeted Oracle's email-marketing platform (per RPX contemporaneous reporting, the asserted patent covers managing "electronic messages" based on recipient profiles, with the accused product being Oracle Responsys). (Docket excerpt, Ex. 1024 to IPR2023-00867 petition; RPX News, 2022-04-29; Justia docket 6:2022cv00410.)
  • 2022-04-25 — Service on Oracle; answer initially due 2022-05-16 (Dkt. 5).
  • 2022-05-10 — Extension. Answer deadline reset to 2022-06-30 (Dkts. 6–7).
  • 2022-06-30 — Oracle counsel appearances. Pro hac vice motions for Matthew G. Berkowitz (Reichman Jorgensen Lehman & Feldberg) and Yue (Joy) Wang (Shearman & Sterling) filed (Dkts. 8–9). Lead local counsel: David P. Whittlesey and Aaron L. Morris (Shearman & Sterling). Plaintiff's counsel: William P. Ramey III (Ramey LLP).
  • Answer/counterclaims: The answer due 2022-06-30 is reflected in the docket structure, but I could not confirm from public sources the exact filing date or whether Oracle asserted counterclaims (e.g., declaratory judgment of non-infringement/invalidity). The docket excerpt I located cuts off before those entries, so this remains unverified — treat as a gap rather than a fact.

2. Pre-Trial Motions of Substance

  • 2023-06-07 — Oracle's Motion to Transfer (Waco → Austin Division of W.D. Tex.), filed on convenience/venue grounds under the court's divisional-transfer practice. (PatSnap litigation summary of the PACER record.)
  • 2023-08-23 — Pedersen withdrew his opposition (after having noticed venue discovery but not conducting it); Oracle filed a notice of non-opposition citing the passed response deadline. (PatSnap litigation summary.)
  • 2023-08-24 — Transfer granted. Judge Albright granted the unopposed motion and transferred the case to the Austin Division; the case was renumbered 1:23-cv-01020 (W.D. Tex.). This is a procedural venue change only — no merits ruling on infringement or validity. (PatSnap; case metadata; IPR2023-00867 joint termination motion referencing the renumbered case.)

There is no evidence in the record I found of a Rule 12(b)(6) or Rule 12(b)(2) dismissal motion, a stay pending IPR motion, or a summary judgment motion having been filed or decided. The case never reached those stages on the merits.


3. Claim Construction (Markman)

Not reached. No Markman hearing, claim-construction order, or § 101/§ 112 decision was issued in the district court. The only substantive claim interpretation occurred at the PTAB (petitioner's proposed constructions in the IPR petitions), not in a district court Markman ruling. The case settled and was dismissed with prejudice before claim construction.


4. Discovery Milestones

  • 2022–2023: Standard early-case activity (pro hac vice admissions, extension of the answer deadline) occurred through mid-2022.
  • 2023-06/08: Pedersen filed a Notice of Venue Discovery in connection with the transfer fight, but withdrew opposition without conducting that discovery — a signal that the venue contest was not cost-effective to pursue (per PatSnap's docket analysis).
  • No substantive discovery milestones (document productions, depositions, expert reports) are documented in publicly available sources before the case was transferred and settled. The case did not proceed to fact or expert discovery completion.

5. Parallel PTAB Proceedings (decisive)

The litigation's strategic center of gravity was the PTAB, not the district court.

  • IPR2023-00867 (Oracle v. Pedersen):
    • 2023-04-24 — Oracle filed its IPR petition challenging claims of the '920 patent (same day its petition exhibits included the district court complaint, Dkt. 1, and the live W.D. Tex. docket). Lead counsel: Matt Berkowitz (Reichman Jorgensen). (IPR case docket; greyB/ipVerse.)
    • 2023-08-23 — Patent Owner's Preliminary Response filed with a Scheyer declaration (opposing institution).
    • 2023-09-27 — Joint Motion to Terminate filed, citing a settlement agreement; the parties confirmed that "Patent Owner's claims against Petitioner in the following related lawsuit have been dismissed with prejudice: Peter Pedersen v. Oracle Corporation, Case No. 1:23-cv-01020 (W.D. Tex. 2022) (transferred from Case No. 6:22-cv-00410 (W.D. Tex. 2022))." A request to keep the agreement confidential accompanied the motion. (DocketAlarm copy of the joint motion, 2023-09-27.)
    • 2023-10-11 — PTAB terminated the IPR as settled, pre-institution ("Termination Decision: Pre-DI settlement"); Oracle received a refund of post-institution fees (2023-10-13). (ipVerse/greyB: status "Terminated-Settled," termination date 2023-10-11.)
  • IPR2023-00029 (Unified Patents, LLC v. Pedersen) — the parallel, third-party challenge with the bigger consequences:
    • Filed October 2022 by Unified Patents (Haynes & Boone: Jon Bowser, Angela Oliver, Michael McCarty; later Unified in-house: Kelly Hughes, Alyssa Holtslander), challenging claims 1 and 14–17 of the '920 patent.
    • 2024-05-10 — PTAB Final Written Decision holding all challenged claims unpatentable (obviousness), effectively invalidating the asserted claims of the '920 patent. (Unified Patents insight, 2024-05-13.)
    • 2026-03-26 — Federal Circuit affirmed the PTAB's unpatentability determination (appeal No. 24-2090, Pedersen v. Unified Patents), confirming the claims are invalid and unenforceable. (Unified Patents insight, 2026-03-26; PatSnap appeal summary.)

6. Settlement, Dismissal & Final Disposition

  • Late September 2023 — Settlement. The parties reached a settlement agreement in connection with the Oracle IPR; as part of it, Pedersen's claims against Oracle were dismissed with prejudice in the transferred district court action, 1:23-cv-01020 (formerly 6:22-cv-00410). This is affirmatively documented in the IPR2023-00867 joint motion to terminate (2023-09-27). The exact district court dismissal order/docket entry date is not confirmed from a directly retrieved PACER entry, but it necessarily preceded the 2023-09-27 joint motion, which describes the dismissal as already accomplished.
  • 2023-10-11 — IPR terminated (settled, pre-institution).
  • Net disposition: The district court case ended by voluntary settlement and dismissal with prejudice — not by judgment on the merits. Oracle achieved its objectives (settlement + termination of its IPR with a refund), while the broader '920 patent was later invalidated by PTAB (2024-05-10), affirmed by the Federal Circuit (2026-03-26) — eliminating any residual enforcement value of the asserted claims against anyone.

7. Trial / Post-Trial

None. No trial, verdict, JMOL, new-trial motion, or fee award occurred. The case was resolved by settlement before claim construction, summary judgment, or trial. No appeal of the district court case exists (the only Federal Circuit appeal was Pedersen's unsuccessful appeal of the Unified Patents IPR).


Bottom Line

Item Result
Filing 2022-04-22, W.D. Tex. (Waco), Judge Albright
Transfer 2023-08-24, Waco → Austin Div. (renumbered 1:23-cv-01020)
Oracle IPR IPR2023-00867, filed 2023-04-24, terminated 2023-10-11 (settlement, pre-institution)
Settlement Late Sept. 2023 — claims dismissed with prejudice against Oracle
Third-party IPR IPR2023-00029 (Unified Patents) — '920 claims 1, 14–17 held unpatentable (FWD 2024-05-10), affirmed by Fed. Cir. 2026-03-26
Trial/Markman/SJ Never reached
Final posture Closed via settlement/dismissal with prejudice; asserted patent subsequently invalidated

Caveat on sourcing: The precise docket numbers/dates for Oracle's answer (and any counterclaims) and the exact district court dismissal order entry are not directly retrievable from the public sources I accessed (the W.D. Tex. docket excerpt cuts off at June 2022, and the transfer-era docket is paywalled). The settlement/dismissal fact is firmly corroborated by the PTAB joint-termination filing, which is the most authoritative public statement of the disposition.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Based on the available docket records (the W.D. Tex. civil docket sheet for 6:22-cv-00410, as captured in the IPR2023-00867 record at DocketAlarm; Justia's docket; and PatSnap/RPX litigation profiles), here is the counsel-of-record picture for the plaintiff.

Plaintiff's counsel of record

William P. Ramey III — Lead counsel (the only attorney of record for Pedersen)

  • Firm: Ramey LLP, 5020 Montrose Blvd., Suite 800, Houston, TX 77006
  • Contact on docket: (713) 426-3923; wramey@rameyfirm.com; Texas State Bar No. 24027643
  • Role: Ramey signed the Complaint (Dkt. 1, filed 4/22/2022), the AO 120 patent form, summons request, extension of time, and the venue filings through the transfer. He is Texas-licensed and located in-state, so he served as both lead and (in effect) local counsel; no separate pro hac vice or local counsel appears on the plaintiff side.
  • Experience note: Ramey is a well-known Houston patent litigator and founder of Ramey LLP, which has run a large solo-inventor patent monetization docket in W.D. Tex. — including the entire Pedersen email-management campaign against Oracle (6:22-cv-00410), Salesforce (6:22-cv-00409), Zoho (6:22-cv-00408), Alphabet/Google, Microsoft, J2 Global, Mailgun, and Verizon (Yahoo).

Notes on the other attorneys on the docket

The other attorneys listed on the docket sheet — Aaron L. Morris, David Philip Whittlesey, Yue (Joy) Wang (Shearman & Sterling LLP) and Matthew G. Berkowitz (Reichman Jorgensen Lehman & Feldberg LLP), along with Charles S. Bullock, Patrick R. Colsher, and Taylor Mauze per PatSnap — are Oracle's defense counsel, not plaintiff's counsel.

Caveats

  • I did not access PACER directly; the identification is based on the publicly circulated docket sheet (DocketAlarm/PTAB exhibit), Justia's docket snapshot, and PatSnap/RPX counsel tables, which are consistent: only William P. Ramey III / Ramey LLP represents Pedersen.
  • There is no indication of any sealed appearance or additional plaintiff-side counsel (no pro hac vice entry for plaintiff, no second firm) in the available record through the August 24, 2023 transfer to the Austin Division. The case remained open after transfer with no merits ruling, and no later plaintiff-side appearance beyond Ramey was identified in the sources retrieved.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the counsel of record for Oracle in this case. Let me search multiple sources.

I found initial counsel names. Let me dig deeper into the docket, check for additional appearances, and verify details.

I have core counsel identified. Let me verify the additional names (Bullock, Colsher, Mauze) and check for in-house counsel and case outcome.

Based on my research (I was able to pull the PACER-derived docket sheet for 6:22-cv-00410, filed as Exhibit 1024 in the related IPR2023-00867, plus RPX Empower and PatSnap litigation summaries), here is the counsel of record for defendant Oracle Corporation.

Verified counsel of record (W.D. Tex. docket, PACER-derived)

Attorney Role Firm / Office Experience note
Aaron L. Morris Lead counsel; pro hac vice (granted 7/1/2022, docket entry 13) Shearman & Sterling LLP, San Francisco, CA Shearman IP-litigation partner; lead defense counsel for Oracle in this Waco patent case.
David Philip Whittlesey Lead counsel; Texas-licensed local counsel Shearman & Sterling LLP, Austin, TX (300 W. 6th St., Suite 2250) Austin-based Shearman litigator serving as the Texas local anchor for Oracle's defense after the case's Waco-to-Austin transfer.
Matthew G. Berkowitz Lead counsel; pro hac vice (granted 7/1/2022, docket entry 11) Reichman Jorgensen Lehman & Feldberg LLP, Redwood Shores, CA Patent litigator; also served as lead petitioner counsel for Oracle in the parallel IPR2023-00867 challenging the same patent (US 6,965,920) — that IPR terminated as settled on 10/11/2023 (per PTAB records via ipverse.greyb.com).
Yue (Joy) Wang Counsel; pro hac vice (granted 7/1/2022, docket entry 12) Shearman & Sterling LLP, Menlo Park, CA Shearman IP associate on the Oracle defense team.

Unverified names flagged by secondary sources

  • Charles S. Bullock, Patrick R. Colsher, and Taylor Mauze are listed as "counsel for Oracle" in the PatSnap litigation summary for this case. I could not verify their appearance, firm, or role from the docket snapshot I obtained, which appears to be from mid-2023 (around the transfer). They may have appeared later in the Austin Division or in the related IPR. Treat as unconfirmed unless validated against the current PACER docket.
  • No Oracle in-house counsel appeared on the docket snapshot I reviewed. If Oracle in-house attorneys were later added after the transfer, they are not reflected in the sources I could access.

Case-status context

  • Filed 4/22/2022 before Judge Alan D. Albright (Waco Division); Oracle's pro hac vice motions for Morris, Berkowitz, and Wang were all granted 7/1/2022 (docket entries 11–13).
  • Transferred intra-district to the Austin Division on 8/24/2023 per the case metadata; no merits ruling issued.
  • The parallel IPR (IPR2023-00867, Oracle as petitioner) settled and terminated 10/11/2023 — which often foreshadows a district-court dismissal, but I found no docket entry confirming a final dismissal in the district case. The docket should be checked on PACER for post-transfer entries (e.g., stipulations of dismissal).

Key caveat: The docket sheet I relied on (DocketAlarm PDF of the WDTX docket, appended as Ex. 1024 in IPR2023-00867) is a snapshot from approximately April 2023. If the case has since been dismissed or additional counsel entered after the transfer to Austin, those entries would not appear in my sources. For a definitive current list, PACER case 6:22-cv-00410 (now in the Austin Division) should be queried directly.