Litigation
Peter Henrik Pedersen v. Zendesk, Inc.
Active6:22-cv-00927
- Filed
- 2022-09-08
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Infringement action by Peter Henrik Pedersen against Zendesk, Inc. concerning US Patent 6,965,920. The case was open or active according to Unified Patents data.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
Based on my research, here is the case overview and background:
Parties and dispute. Peter Henrik Pedersen v. Zendesk, Inc., No. 6:22-cv-00927 (W.D. Tex., Waco Div.), is a patent infringement suit filed September 8–9, 2022 (docket entry dated 9/9/2022) by individual patent owner Peter Henrik Pedersen, who is classified as a non-practicing entity/individual NPE by the Stanford NPE Litigation Database and is "believed to be associated with AiPi Solutions" per Unified Patents. Pedersen is represented by William P. Ramey III of Ramey LLP (Houston). Defendant Zendesk, Inc. is a well-known SaaS provider of customer-service, ticketing, and messaging software (taken private in 2022 by a Permira/Hellman & Friedman-led investor group); defense counsel appears to be Duane Morris LLP per a Patexia firm profile, though I could not confirm counsel from primary PACER sources. The suit was filed alongside coordinated Ramey LLP actions against Blackbaud, Constant Contact, Monday.com, Wix.com, and Zendesk over the same patent (per Ramey's firm announcement), and the Unified Patents docket shows the same '920 patent asserted against Zoho, Ziff Davis, Intuit, Salesforce, and Aurea Software, and previously against Google, Microsoft, Yahoo, Oracle, Adobe, and others. The specific accused Zendesk instrumentalities are not confirmed in my sources (the complaint's Exhibits A–B were not accessible); based on the patent's scope and Ramey's description, the accusation centers on Zendesk's electronic message management/distribution functionality.
Patent and procedural posture. The sole asserted patent is U.S. Patent No. 6,965,920, "Profile responsive electronic message management system," filed July 12, 2000, issued November 15, 2005 to inventor Peter Henrik Pedersen. In brief, claim 1 is directed to an electronic message management system comprising a recipient profile application (recipients specify where/when/how messages from particular messengers are delivered), a messenger profile application (messenger identifying data), a message input application, and an individual message generator that generates messages according to the stored delivery parameters, with separate recipient-profile, messenger-profile, and message databases. The case was assigned to Judge Alan D. Albright in the Waco Division of the Western District of Texas—historically the most patentee-friendly forum in the country, which drew a disproportionate share of NPE filings before the Federal Circuit's 2022 mandamus rulings tightened venue/transfer practice; this case was one of many Albright-division assertions in Pedersen's campaign. Docket entries show Zendesk was served September 15, 2022 (answer due October 6, 2022), with an unopposed extension filed September 19, 2022. DocketAlarm currently flags the case "PATENT and STAYED," indicating the district court action has been stayed—consistent with parallel PTAB proceedings—although I could not retrieve the specific stay order or date from my sources, and Unified Patents still lists the case as "Open."
Why it matters. The case is notable as a component of a broad serial-NPE campaign by an individual asserting a turn-of-the-century messaging patent against major SaaS/tech companies, and for its decisive IPR linkage. Unified Patents petitioned for IPR (IPR2023-00029, petition filed October 2022), and on May 10, 2024 the PTAB issued a final written decision holding all challenged claims (1 and 14–17) of the '920 patent unpatentable as obvious; the Federal Circuit affirmed in a nonprecedential opinion in Pedersen v. Unified Patents, LLC (Fed. Cir., March 26, 2026), finding the Board's decision supported by substantial evidence. The CAFC appeal in that matter appears to be No. 24-2090 (filed July 15, 2024, per Unified Patents' litigation list), though I could not confirm the caption/appeal number pairing from a primary source. A separate Oracle-initiated IPR (IPR2023-00867, filed April 24, 2023) was terminated as settled on October 11, 2023 before institution, following dismissal with prejudice of Pedersen's related case against Oracle. With the patent invalidated on the merits and that result now affirmed on appeal, the stayed Zendesk action—and Pedersen's broader campaign against the other SaaS defendants—has been effectively gutted, illustrating how coordinated PTAB challenges by Unified Patents and industry defendants can neutralize serial NPE litigation.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
Peter Henrik Pedersen v. Zendesk, Inc. — Key Legal Developments & Outcome
Case: 6:22-cv-00927 (W.D. Tex., Waco Division, Judge Alan D. Albright)
Patent: U.S. 6,965,920 ("Profile responsive electronic message management system," issued 2005-11-15)
Filing: 2022-09-08 (docketed 2022-09-09)
Status as of today (2026-09-01): Open but stayed; effectively dead after PTAB/Federal Circuit invalidation of the asserted patent.
1. Filing & Initial Pleadings
- 2022-09-08/09: Pedersen filed a patent infringement complaint against Zendesk under 35 U.S.C. § 271, with a jury demand. Case assigned to Judge Albright's Waco docket. (Unicourt docket; Stanford NPE Litigation Database; DocketAlarm). Plaintiff's counsel of record: William P. Ramey III (Ramey LLP).
- 2022-09-09: AO 120 patent/trademark form filed; summons requested; certificate of interested parties filed (Unicourt docket entries #2–#4).
- 2022-09-15: Zendesk served; answer due 2022-10-06 (docket #6).
- 2022-09-19: Unopposed extension of time to answer filed by Pedersen (docket #7).
- The docket beyond late 2022 is not publicly indexed in the sources retrieved. Zendesk was represented by Duane Morris (per Patexia firm-profile data), but I could not verify the exact answer date, affirmative defenses, or counterclaims from the available docket sources. This is a gap — treat the answer/counterclaim specifics as unverified.
2. Parallel PTAB Proceedings (decisive for this litigation)
The '920 patent was challenged in two IPRs, and both directly shaped the district case:
a) IPR2023-00029 — Unified Patents, LLC v. Pedersen
- 2022-10-14: Unified Patents filed the IPR petition challenging claims 1 and 14–17 (IPverse/GreyB PTAB database; Unified Patents).
- 2023-02-17: Patent Owner's Preliminary Response.
- 2023-05-15: Institution granted as to all challenged claims (claims 1, 14–17).
- 2023-08-09: Patent Owner's Response (with Scheyer declaration).
- 2023-11-15: Petitioner's Reply.
- 2024-01-22 / 2024-03-20: Oral argument ordered and transcript issued.
- 2024-05-10: Final Written Decision — all challenged claims (1, 14–17) held unpatentable. Panel: White, Wormmeester, Hume (FWD authored by Judge White). (IPverse; Unified Patents Insight, 2024-05-13.)
- 2024-07-12/15: Pedersen appealed to the Federal Circuit (Notice of Appeal 2024-07-12; Fed. Cir. docket 24-2090 opened 2024-07-15). New appellate counsel: Dunlap Bennett & Ludwig PLLC (Greenspoon, Dunlap, Flachsbart, Magas) for Pedersen; Unified in-house (Hughes, Holtslander, Mansinghani) for appellee (PatSnap/Eureka litigation data).
- 2026-03-26: Federal Circuit affirmed the PTAB's invalidation in a written opinion. (Unified Patents Insight, 2026-03-26.)
b) IPR2023-00867 — Oracle Corp. v. Pedersen
- 2023-04-24: Oracle filed a second IPR on the same '920 patent (IPverse/GreyB).
- 2023-08-23: Patent Owner's Preliminary Response (which listed the Zendesk case as "6:22-cv-00927 … Pending" as of 2023-08-29) (DocketAlarm copy of updated mandatory notice).
- 2023-09-27: Joint motion to terminate (settlement) filed by patent owner.
- 2023-10-11: PTAB terminated the proceeding pre-institution due to settlement; post-institution fee refund approved 2023-10-13. (IPverse; DocketAlarm PTAB record.)
Net effect of the IPRs: The Unified Patents IPR invalidated every claim of the asserted patent; the Oracle IPR was settled/terminated but mooted by Unified's FWD.
3. District Court: Stay and (Absence of) Merits Proceedings
- The W.D. Tex. docket carries the case flags PATENT and STAYED (DocketAlarm case header). The case was stayed — consistent with the standard Albright practice of staying pending IPR once institution was granted (2023-05-15), and with the case remaining "Open" but dormant thereafter (Unified Patents litigation portal still lists the case as "Open").
- No motions to dismiss, transfer, or for summary judgment of substance were reached in the available record; the case appears to have been stayed before any Markman hearing, trial, or merits ruling.
- No claim construction (Markman) order occurred in the district court on the available record.
- No discovery of strategic significance, trial, verdict, or post-trial motions (JMOL/new trial/fees) occurred — the stay halted the case before those stages.
- I could not verify from the retrieved sources the exact entry of the stay order (date/docket number) or whether Zendesk formally moved for the stay. Flag as unverified.
4. Related Sister Cases (context)
- The same patent was asserted against numerous other defendants (Zoho, Ziff Davis, Intuit, Salesforce, Blackbaud, Constant Contact, Monday.com, Aurea, Oracle, Google, Microsoft, Yahoo, Adobe, Wix, SAP, Madwire, etc.) (Stanford NPE database; Unified Patents).
- A parallel Oracle case (6:22-cv-00925 / related 6:22-cv-00410) was dismissed 2023-08-23 (per the patent owner's IPR2023-00867 mandatory notice).
5. Final Disposition / Present Posture
- The Zendesk case has not been formally dismissed or reduced to judgment on the public record; as of the most recent data it remains "Open" and stayed in W.D. Tex. (Unified Patents portal; DocketAlarm).
- But the substance is over: the PTAB's 2024-05-10 FWD cancelled all asserted claims, and the Federal Circuit affirmed on 2026-03-26 (Fed. Cir. No. 24-2090). With the only asserted patent's claims cancelled and affirmed, Pedersen has no enforceable claim against Zendesk; the expected next step is an agreed or unopposed dismissal (and possibly a Zendesk fee/mootness motion) once the stay is lifted — but no such dismissal entry was found in the sources retrieved.
Bottom Line
This case never got past the pleading stage in substance. It was filed 2022-09-08 in Judge Albright's court, Zendesk was served 2022-09-15, the case was stayed pending IPR (case flag "STAYED"), the Unified Patents IPR (IPR2023-00029) invalidated all challenged claims on 2024-05-10, a second Oracle IPR settled/terminated on 2023-10-11, and the Federal Circuit affirmed invalidation on 2026-03-26. The Zendesk action remains technically "open/stayed" but is functionally defeated; the controlling outcome is the PTAB/Federal Circuit invalidation of U.S. Patent 6,965,920, not any district court merits ruling.
Key sources: Unicourt docket (6:22-cv-00927); DocketAlarm case header (PATENT/STAYED flags) and IPR2023-00867 record; IPverse/GreyB PTAB case summaries for IPR2023-00029 and IPR2023-00867; Unified Patents insights of 2024-05-13 and 2026-03-26; Stanford NPE Litigation Database; PTACTS document archive. Caveats: answer/counterclaim details, the specific stay order date, and any post-affirmance district court dismissal could not be verified from the retrieved sources and should be confirmed against PACER (docket 6:22-cv-00927) before reliance.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Ramey
- William P. Ramey III · lead counsel
- Jacob B. Henry · PTAB lead counsel
Plaintiff's Counsel of Record — Pedersen v. Zendesk, Inc., 6:22-cv-00927 (W.D. Tex.)
Based on the complaint on file, the district court docket, and related PTAB records, the plaintiff's counsel of record is as follows:
William P. Ramey III
- Role: Lead / counsel of record for Plaintiff Peter Henrik Pedersen (signatory on the Original Complaint and all plaintiff-initiated filings through the docket entries captured to date)
- Firm: Ramey LLP — 5020 Montrose Blvd., Suite 800, Houston, Texas 77006 (Texas Bar No. 24027643; wramey@rameyfirm.com)
- Experience note: Serial plaintiff-side patent litigator in W.D. Tex. (Judge Albright) cases; filed this suit and the coordinated '920 patent actions against Blackbaud, Constant Contact, Monday.com, Wix.com, and Zendesk. He also serves as back-up counsel to Pedersen in the parallel PTAB IPRs involving the same patent (e.g., IPR2023-00029, IPR2023-00867) and represented Pedersen in earlier '920 patent suits against Oracle and others.
Sources: Complaint signature block (cdn.lawlytics.com PDF, "William P. Ramey, III … Attorneys for Peter Pedersen"); UniCourt docket summary for 6:22-cv-00927 ("Plaintiff Attorney: William P. Ramey, III," docket entries filed by "(Ramey, William)"); Justia Dockets; Ramey LLP firm announcement; PTAB power-of-attorney in IPR2023-00867 listing Ramey III as back-up counsel.
Jacob B. Henry (caveat)
- Role: Appeared for Pedersen as patent owner's lead counsel before the PTAB in IPR2023-00867 (and per IPVerse, respondent counsel in IPR2023-00029) — i.e., in the parallel inter partes reviews of the same '920 patent that prompted the district court stay. He is also at Ramey LLP (Houston).
- Caveat: I could not confirm from the available docket excerpts that Mr. Henry formally entered an appearance in the district court case itself. The public docket snapshots (UniCourt, Justia, Docket Alarm) show only Ramey III as plaintiff's attorney in 6:22-cv-00927. Treat his district-court appearance as unverified rather than confirmed.
Local counsel / in-house counsel
- Local counsel: None identified — none was needed, as Ramey LLP is Texas-based (Houston) and admitted in W.D. Tex.
- In-house counsel: None — Pedersen is an individual/NPE litigant (Stanford NPE Litigation Database classifies him as a non-practicing entity/individual), with no corporate in-house legal department.
Additional context
- The case was assigned to Judge Alan D. Albright (Waco Division) and has carried a STAYED case flag on Docket Alarm; the stay tracks the parallel PTAB IPRs (IPR2023-00029 and IPR2023-00867) challenging claims of U.S. Patent 6,965,920.
- In May 2024, the PTAB issued a final written decision in IPR2023-00029 holding the challenged claims unpatentable, and the Federal Circuit affirmed on March 26, 2026 (per Unified Patents reporting) — events that bear on the continued viability of this stayed infringement action.
- The docket excerpts available to me only run through late 2022 (UniCourt last update 11/08/2022; Justia last retrieval 09/19/2022), so if additional Ramey LLP attorneys (e.g., Henry) entered appearances after the stay, that would not be reflected in the sources I retrieved. I have not fabricated any names beyond those affirmatively shown in the complaint, docket, or PTAB filings.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
Defense Counsel of Record — Zendesk, Inc.
Based on the available search results, I can confirm the law firm representing Zendesk, but not the individual attorney names from the sources retrieved. Here is what is and is not supported:
Confirmed: Firm of record
- Duane Morris LLP — the firm's profile on Patexia (which aggregates PACER data) lists Duane Morris as counsel for the defendant in Peter Pedersen v. Zendesk, Inc., 6:22-cv-00927 (W.D. Tex., filed Sept. 9, 2022). (See: Patexia law-firm case listing, "DUANE MORRIS LLP Law Firm Profile," showing the case under the firm's cases as "Defendant," Texas Western District Court.) Duane Morris has a substantial IP litigation practice and regularly defends tech companies in patent cases before Judge Albright's Waco division.
Not confirmed (explicitly flagged)
Individual attorney names and roles (lead, local, in-house) could not be verified from the sources retrieved. The public docket excerpts available (Justia, UniCourt, DocketAlarm) show only the plaintiff's attorney (William P. Ramey III) in the early filings (Complaint through the unopposed extension of time to answer, docket entries 1–7). The defense's notice of appearance/answer was not visible in the snippets retrieved, and I did not locate a PACER docket entry or firm press release naming Zendesk's Duane Morris attorneys in this specific matter.
I am not inventing names. If you need the individual attorneys of record, the reliable next steps are:
- Pull the PACER docket for 6:22-cv-00927 (W.D. Tex.) and look for Zendesk's Notice of Appearance and the Answer/Motion to Dismiss filed after docket entry 7 (the answer deadline was extended from October 6, 2022); and
- Check Duane Morris's website for Zendesk patent-litigation matters, or search Law360/Reuters for coverage of the case.
Procedural context (relevant to counsel)
- The case was assigned to Judge Alan D. Albright (Waco division) and is flagged PATENT and STAYED on DocketAlarm's docket summary, consistent with the related PTAB proceeding IPR2023-00867 (Oracle Corp. v. Pedersen) challenging U.S. Patent No. 6,965,920 — the same patent asserted against Zendesk. The patent owner's updated mandatory notice in that IPR lists Pedersen v. Zendesk, Inc., 6:22-cv-00927 (WDTX), as "Pending." If the case is stayed, the defense team's active substantive filings may be limited pending IPR resolution, which would explain why individual counsel names are not prominent in public search results.
Bottom line
- Firm of record for Zendesk: Duane Morris LLP (confirmed via Patexia/PACER-derived data).
- Individual counsel of record: not confirmed from available sources — do not treat any names as accurate until verified against the PACER docket or the firm's own disclosure in the case.