Litigation
SAP America, Inc. et al. v. Valtrus Innovations Ltd. et al.
terminated - settledIPR2025-00419
- Filed
- 2025-01-15
- Terminated
- 2025-07-01
Patents at issue (1)
Plaintiffs (2)
Defendants (2)
Summary
SAP America, Inc. (and SAP SE) filed an inter partes review challenging claims 1-10 and 33 of U.S. 7,936,738 on obviousness over Forissier. The Board terminated the proceeding as settled on July 1, 2025.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
I'll research this thoroughly, starting with the PTAB proceeding and the parallel district court case.
Let me dig deeper into the parties, the patent portfolio's origin, and the parallel litigation.
Case Overview — SAP America, Inc. et al. v. Valtrus Innovations Ltd. et al.
The parties. Valtrus Innovations Ltd. and Key Patent Innovations Ltd. ("KPI"), both Irish entities, are the patent owners in this IPR and the plaintiffs in the underlying Texas litigation; KPI is Valtrus's parent, and the group is run by Managing Director Angela Quinlan, who has also testified that Valtrus acquired its portfolio — patents originally assigned to Hewlett-Packard — in May 2021, and that more than fifty entities licensed the portfolio pre-suit (Valtrus declaration, IPR2025-01490). That is the classic non-practicing-entity / patent-assertion profile: Valtrus makes nothing, licenses through an agent (Patent Platform Services LLC), and this portfolio is part of a broader Key Patent NPE family (which also holds ex-BlackBerry assets via Malikie Innovations) that had filed roughly 87 cases as of mid-2025 (IAM). On the other side, SAP America, Inc. (Newtown Square, PA) and SAP SE (Walldorf, Germany) are operating enterprise-application-software companies — ERP/S/4HANA, the HANA in-memory database, NetWeaver/PI middleware, and BTP integration services. SAP appears here as the accused infringer in district court and as the petitioner at the PTAB; Valtrus/KPI are the patent owners.
The technology and the patents. The patents Valtrus asserted are ex-Hewlett Packard Enterprise (HPE) enterprise-infrastructure patents, not consumer or telecom-hardware patents. Judge Gilstrap's transfer opinion identifies HPE as the "former owner of the Asserted Patents" (Dkt. 93, 2:24-cv-00021-JRG). In the original Texas suit (Valtrus I), the claim-construction briefing addressed at least five patents: U.S. 6,889,244 (passing messages via a fault-tolerant storage system / store-and-forward messaging), U.S. 7,313,575 (zero-latency enterprise "real time information director" using polymorphic metadata), U.S. 7,936,738 (the IPR target), U.S. 6,823,409 (high-availability storage coherency-control modules) and U.S. 6,871,264 (high-speed interconnect) (Plaintiffs' Opening Claim Construction Brief). The '738 patent, "[m]ethod and system for providing fault tolerance in communication systems," claims a method of inserting "context information" (e.g., a tag identifying a chosen backend server) into an outgoing message so that a response carries the same context, letting a protocol-stack layer's state be restored after failover — claims 1 and 33 are the independents, and claims 1–10 and 33 were the IPR targets. The accused instrumentalities are the SAP products that practice enterprise messaging, reliable/stateful session routing and in-memory data handling; secondary litigation summaries point specifically to HANA, BTP and SAP's archiving/data-management modules, but specific accused products appear in Valtrus's infringement contentions, which I could not verify from primary sources — treat product-level claims with caution.
Procedural posture and why it matters. Valtrus sued SAP on January 15, 2024 in the Eastern District of Texas, Marshall Division, assigned to Chief Judge J. Rodney Gilstrap (Magistrate Judge Roy S. Payne referred) — the nation's most active patent venue (docket, 2:24-cv-00021-JRG). SAP moved for intra-district transfer to the Sherman Division; the court denied it on December 13, 2024, and the Federal Circuit denied SAP's mandamus petition on April 10, 2025 — while expressly noting the district court "erred in assigning weight to Valtrus's separate AT&T litigation in Marshall" (In re SAP America, No. 2025-118). Two defense themes drove the case. First, standing/ownership: Judge Gilstrap held Valtrus had Article III standing but lacked "all substantial rights" under 35 U.S.C. § 281 because enforcement and alienation rights sat with KPI under a Declaration of Trust, prompting KPI's joinder (excerpts of Dkt. 83/92). Second, a sprawling parallel-proceeding web: a duplicative second Texas suit naming KPI (2:24-cv-00533, filed July 12, 2024, later consolidated), SAP's Delaware declaratory-judgment action (1:24-cv-00756-GBW) covering six Valtrus patents, and four SAP IPRs filed on January 15, 2025 — the last day of the § 315(b) window, since Valtrus had served SAP on January 17, 2024. Petition IPR2025-00419 attacked claims 1–10 and 33 of the '738 as obvious over Forissier (U.S. 7,936,763); Valtrus's preliminary response argued Forissier was not prior art because its § 102(e) date could not rest on foreign priority (In re Hilmer), and the parties fought § 314(a) Fintiv denial, with SAP offering a Sotera-style stipulation that it would not press in district court the grounds raised or that could have been raised (Ex. 1118; POPR). The Board (APJs Horner, Giannetti and Khan) terminated IPR2025-00419 on July 1, 2025, before institution, granting SAP's unopposed motion to withdraw and expressly stating "the parties have not reached a settlement agreement regarding this[,] or any other, patent" (Paper 12; Paper 11). The overall dispute was later resolved commercially — the Delaware DJ action was closed by stipulation and the Texas cases dismissed with prejudice (e.g., 2:25-cv-00556) — which is why case-metadata aggregators label this matter "terminated – settled" (PatSnap case notes).
Why it is notable: it is a template NPE-vs-enterprise-software campaign featuring an HPE-origin portfolio, a thicket of parallel IPRs staged on the § 315(b) deadline, an ownership/§ 281 standing attack on the plaintiff's trust structure, a discretionary-denial fight with a Sotera stipulation, and a Marshall-vs-Sherman intra-district venue battle that produced Federal Circuit guidance (albeit non-precedential) on transferring cases out of Judge Gilstrap's Marshall docket.
Sourcing caveats: the PTAB termination order, petition exhibits, Federal Circuit order, and the Texas claim-construction/transfer opinions are primary and reliable. The accused-product mapping (HANA/BTP/archiving) comes from AI-generated docket summaries, not verified contentions; the precise list of patents asserted in each Texas case (and which moved to the 2025 case, 2:25-cv-00556) is not fully documented in the sources I could access; and the settlement's financial terms, license scope, and the reason for SAP's IPR withdrawal (beyond litigation-efficiency rationale) are undisclosed. The metadata's "terminated – settled" status for IPR2025-00419 conflicts with the Board's own finding of no settlement agreement at the time of termination.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
I'll research this case across PACER, PTAB, and legal news sources. Let me start with several searches in parallel.
Let me dig deeper into the parallel district court litigation and the other IPRs.
Let me pin down the final dispositions, the third ED Tex case, and the full family of IPRs.
Framing note before the chronology
The case metadata for IPR2025-00419 describes a PTAB proceeding, not the infringement suit itself. The "patent infringement litigation" you're asking about is the parallel district court campaign — Valtrus Innovations Ltd. v. SAP America, Inc., No. 2:24-cv-00021-JRG (E.D. Tex.) ("Valtrus I") and its tag-along and declaratory-judgment siblings — in which the '738 patent was one of seven asserted patents. Everything below tracks that litigation, with the IPR treated as a parallel PTAB track.
I. Pre-suit licensing (background)
- Valtrus Innovations Ltd. (Dublin, Ireland) acquired the patent portfolio from Hewlett Packard Enterprise in January 2021; Key Patent Innovations Ltd. ("KPI") is its parent/trust beneficiary, and Patent Platform Services LLC ("PPS") (Frisco, TX) is its licensing agent.
- March 2022: Valtrus's Managing Director (Angela Quinlan) wrote to SAP SE CEO Christian Klein asserting infringement; a follow-up went in September 2022. Talks failed. (Source: Valtrus's brief in support of its motion to dismiss SAP's Delaware DJ action, filed in the IPR2025-00418/00419 records.)
II. Filing and initial pleadings
| Date | Event |
|---|---|
| 2024-01-15 | Valtrus and (later) KPI sue SAP America, Inc. and SAP SE in E.D. Tex., Marshall Division, asserting seven patents, including U.S. 7,936,738. Case No. 2:24-cv-00021-JRG, Chief Judge J. Rodney Gilstrap. Jury trial demanded. |
| 2024-01-15/16 | SAP America counters in D. Del. with a declaratory-judgment complaint seeking non-infringement of six Valtrus patents plus a claim under the Delaware Consumer Fraud Act ("SAP DJ I"). Valtrus's brief describes this as filed "minutes after" Valtrus I. (Docket number not confirmed in my sources.) |
| 2024-01-17 | SAP served with the Valtrus I complaint (per SAP's IPR2025-00419 motion to terminate). This service date starts SAP's 35 U.S.C. § 315(b) one-year clock — which explains the 2025-01-15 IPR filings. |
| 2024-01-22 | Dkt. 7 in Valtrus I. |
| 2024-03-20 | SAP files a sealed motion for intra-district transfer from Marshall to the Sherman Division under § 1404(a) (D.I. 22). |
| ~Spring 2024 | SAP voluntarily dismisses SAP DJ I (SAP DJ I, D.I. 36) — "the day after its opposition brief was due," after jurisdictional discovery and one amended complaint. |
| 2024-05-31 | Valtrus's sealed response to the transfer motion (D.I. 41). |
| 2024-06-26 | SAP files a second, largely duplicative Delaware action — SAP America, Inc. v. Valtrus Innovations Ltd. et al., No. 1:24-cv-00756-GBW (D. Del.), Judge Gregory B. Williams ("SAP DJ II"). Counts I–III: Delaware Consumer Fraud Act / civil conspiracy / aiding-and-abetting against Valtrus, KPI and PPS; Counts IV–XV: DJ of non-infringement of 12 Valtrus patents. (SAP characterizes 1:24-cv-00756 as a DJ action on the '738 patent; a third-party summary identifies six patents in that docket, so treat the patent list with caution.) |
| ~June 2024 | SAP moves to dismiss Valtrus I for lack of standing (D.I. 51, sealed) — arguing Valtrus transferred "all substantial rights" to KPI and therefore cannot satisfy 35 U.S.C. § 281. |
| 2024-07-12 | Valtrus + KPI file a protective "Valtrus II" complaint, No. 2:24-cv-00533-JRG (E.D. Tex.), so the court could continue the case even if standing failed in Valtrus I. SAP moves to dismiss it as duplicative, or transfer under first-to-file (Valtrus II, D.I. 5). |
| 2024-07-29 | Valtrus files an opposed sealed motion for leave to amend to join KPI under Rule 20 (D.I. 56) and simultaneously files the First Amended Complaint (D.I. 57) adding KPI as co-plaintiff. |
| 2024-08-07 | First Amended Docket Control Order (D.I. 65): Markman hearing 2025-03-14; jury trial 2025-09-22. |
| 2024-09-20 | D.I. 56 unsealed per order. |
Standing/joinder ruling (date not confirmed). The court held that Valtrus has Article III standing but does not hold "all substantial rights" under § 281, because the Declaration of Trust gave KPI a right of first refusal to enforce and direction/approval rights over enforcement and alienation (Sicom, Lone Star analysis). The court then granted Valtrus's Rule 20 motion to join KPI, curing the § 281 defect via the First Amended Complaint. SAP later filed a motion to reconsider that ruling (recorded as Ex. 1119 in the IPR record).
III. Pre-trial motions of substance
- Motion to transfer (D.I. 22) — DENIED 2024-12-13. Judge Gilstrap denied intra-district transfer to Sherman, 2024 WL 5110052 (E.D. Tex. Dec. 13, 2024). He found the willing-witness factor neutral-to-against transfer (most witnesses outside Texas, many outside the U.S.), sources-of-proof and compulsory-process neutral, and the practical-problems factor weighing against transfer based on "potential future efficiencies" from the then-co-pending Valtrus v. AT&T Marshall case (2:23-cv-00443-JRG) asserting an overlapping patent.
- Federal Circuit mandamus — DENIED 2025-04-10. SAP petitioned for a writ of mandamus to compel transfer and random reassignment (No. 2025-118). The panel (Dyk, Prost, Chen) denied it: In re SAP America, Inc., No. 2025-118 (Fed. Cir. Apr. 10, 2025) (per curiam order), https://www.cafc.uscourts.gov/opinions-orders/25-118.ORDER.4-10-2025_2496431.pdf; E.D. Tex. Dkt. 138.
- Motion to dismiss for lack of standing (D.I. 51) — denied in substance; § 281 defect cured through KPI's joinder (see above).
- Valtrus II motion to dismiss/transfer (D.I. 5) — the record shows continued wrangling into March 2025 (Dkt. 134, 2025-03-28, denying a related leave motion); the Delaware DJ action resolved separately.
- Delaware DJ action (1:24-cv-00756-GBW) — terminated by stipulation of dismissal (D.I. 70), court entry "SO ORDERED, re 70 Stipulation of Dismissal … ***Civil Case Terminated." No merits ruling. (Via PACER docket summary; exact date not confirmed in my sources.)
IV. Claim construction (Markman)
- Briefing: Valtrus opening brief D.I. 110; SAP response D.I. 117; Valtrus reply D.I. 119; and a further exchange D.I. 118 (filed 2025-02-21). The briefing covered terms across the '738 patent ("context information"; "potentially inaccurate or incomplete" (claim 10)), the '244 patent, and the '575 patent.
- Hearing: 2025-03-14 before Judge Gilstrap (transcript notice filed 2025-03-24, Dkt. 132; Markman presentation notice Dkt. 128, 2025-03-17).
- Claim construction order: on/about 2025-06-13 (Dkt. 166). Documented outcomes:
- '244 patent — "the first and second nodes are each coupled to a fault tolerant storage system (FTSS)": the court rejected SAP's prosecution-history-disclaimer argument (SAP sought a "store-and-forward, not Ethernet/Internet" limitation based on applicant remarks about U.S. 5,815,649 (Utter)). Valtrus's "plain and ordinary meaning" position prevailed.
- '244 patent — "highly reliable fault-tolerant storage media": the court adopted a construction that neither party had proposed — later described by the court as "unexpected" and not reasonably foreseeable before the order issued. This drove subsequent expert-report practice (below).
- The order also addressed SAP's indefiniteness challenges to '575's "polymorphic data."
Strategic significance: the '244 construction was the pivot point for the rest of the case — it defeated SAP's non-infringement/disclaimer theory, but spawned a Valtrus supplemental-expert problem, and it handed Valtrus a fresh opportunity on infringement.
V. Discovery milestones with strategic significance
- Infringement/contentions exchanged in late 2024, followed by substantial fact and third-party discovery (HPE, PPS) and expert discovery in 2025. Valtrus's infringement expert: Dr. Martin Farach-Colton; SAP's invalidity expert: Dr. Nick Feamster (reports addressed the '244, '575 and '738 patents).
- 2025-04-14: Valtrus's First Supplemental Interrogatory Responses.
- 2025-04-26: Court accepts a Joint Stipulation of Dismissal (Dkt. 142/143) dismissing claims on U.S. 6,823,409; 6,871,264; and 6,691,139 with prejudice — Valtrus narrowed its case from seven patents. (Valtrus's pattern: with the earlier Delaware dismissals, this marks progressive case narrowing rather than a merits loss.)
- 2025-03-17: SAP files a sealed motion for leave to amend and supplement its invalidity contentions (Dkt. 131) — seeking to add its own Sybase product as invalidating prior art; Valtrus opposes (Dkt. 135, 2025-03-31); SAP replies (Dkt. 136, 2025-04-07).
- 2025-08-22 — Memorandum Order (Dkt. 295): the court DENIES SAP's motion (no good cause; SAP could have raised its own product within the contentions deadline, and doing so post-Markman unfairly prejudiced Valtrus) and GRANTS Valtrus's motion for leave to serve a supplemental expert report premised on the "unexpected" '244 claim construction (Dkt. 197), with SAP given 10 days to serve a supplemental rebuttal and to supplement its own invalidity report. Net: a clear mid-2025 discovery win for Valtrus and a loss for SAP.
VI. Trial events, verdict, post-trial motions
- Trial was set for 2025-09-22 (First Amended Docket Control Order, Dkt. 65; reaffirmed in the transfer briefing).
- I found no reported verdict, JMOL/new-trial ruling, or fee motion in this case. As of 2025-08-22 the case was still actively litigating expert reports, i.e., after the IPR had already been terminated — which is significant (see the IPR discussion below).
- A later-filed companion case, Valtrus Innovations Ltd. v. SAP America, Inc., No. 2:25-cv-00556 (E.D. Tex.) (filed 2025-05-19), asserted four additional Valtrus patents — US 7,856,420; 8,515,916; 8,379,538; 9,229,984 (targeting SAP's event-driven cloud integration architecture, data/document archiving, Solution Manager, and user-defined-function parameter expressions). That case was closed by a dismissal order on a Joint Motion to Dismiss with Prejudice (Dkt. 43), in which the parties represented they "have agreed to settle, adjust and compromise all claims," each side bearing its own costs and fees. This is the only documented settlement/with-prejudice disposition in the Valtrus–SAP dispute I can source.
VII. Parallel PTAB proceedings and their effect
SAP's IPR wave (filed on the § 315(b) one-year bar date, 2025-01-15):
| Proceeding | Patent | Status |
|---|---|---|
| IPR2025-00416 | U.S. 7,313,575 | Filed; heavy discretionary-denial briefing (Valtrus invoked Fintiv Factors 1–6 against institution, citing Valtrus Innovations Ltd. v. SAP Am., Inc., 2024 WL 5110052 (E.D. Tex. Dec. 13, 2024)). |
| IPR2025-00418 | U.S. 6,889,244 | Filed; § 314(a)/§ 325(d) briefing; SAP relied on a Sotera-style stipulation. |
| IPR2025-00419 | U.S. 7,936,738 | Filed 2025-01-15; dismissed/terminated 2025-07-01 (the case at bar). |
IPR2025-00419 docket (as documented):
- 2025-01-15 — Petition (Paper 1), challenging claims 1–10 and 33 as obvious under § 103 over Forissier (U.S. 7,936,763). Panel: APJs Horner, Giannetti, and Khan (author). Assumed effective filing date 2003-07-25 (EP priority). Petitioner counsel: Winston & Strawn (Louis L. Campbell, Scott M. Border, Samuel W. Riebe). Patent Owner counsel: Reichman Jorgensen Lehman & Feldberg (Patrick Colsher, Matt Berkowitz, Khue Hoang, Aaron Morris).
- 2025-05-06 — SAP files Ex. 1118, "SAP's Stipulation Regarding Invalidity Assertions in Parallel Proceeding": if the Board institutes, SAP will not pursue in the district court "the specific grounds asserted in this inter partes review or any other ground that could have been raised in this inter partes review."
- 2025-05-09 — Patent Owner's brief requesting discretionary denial (Paper 7).
- 2025-06-09 — Petitioner's reply on discretionary denial (Paper 8).
- 2025-06-10 — Patent Owner's preliminary response (Paper 9).
- 2025-06-23 — Board authorizes SAP to file a motion to withdraw/terminate.
- 2025-06-25 — SAP files an unopposed Motion to Terminate (Paper 11), arguing the proceeding is still in its preliminary stage and termination will "preserve the Board's and the parties' resources." Critically, the motion states: "The parties have not reached a settlement agreement regarding this [U.S. Patent No. 7,936,738], or any other, patent."
- 2025-07-01 — Board grants the motion and dismisses the Petition and terminates the proceeding: SAP America, Inc. v. Valtrus Innovations Ltd., IPR2025-00419, Paper 12 (PTAB July 1, 2025) (Khan, APJ), citing 37 C.F.R. §§ 42.1(b), 42.71(a), 42.72, and noting no settlement agreement was required under 37 C.F.R. § 42.74(b). Explicitly: "This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a)."
Effect on the litigation: none of SAP's IPRs were instituted, so there was no PTAB estoppel under § 315(e) and no Board validity ruling on the '738 patent. The IPR filings functioned as (a) settlement/leverage pressure and (b) a Fintiv-based stay argument that SAP never fully exploited (SAP had not moved to stay Valtrus I as of the May 2025 briefing). The '738 patent remains presumptively valid and unadjudicated at the Board.
Related PTAB activity worth noting (other Valtrus patents, not SAP): Vertiv Corp. v. Valtrus Innovations Ltd., IPR2025-00668 (U.S. 6,718,277), with extensive discretionary-denial briefing invoking the February 2025 Director memo factors and Advanced Bionics; and a Valtrus–Google licensing/enforcement campaign over the same HPE portfolio (Valtrus sued Google in N.D. Cal. on 2022-01-10; Valtrus–Google DJ/IPR activity continued with Hogan Lovells representing Google).
VIII. Outcome and present posture
- No court ever adjudicated infringement, validity, or damages in Valtrus v. SAP. The dispute resolved through claim narrowing, with-prejudice dismissals, and at least one express settlement (the 2:25-cv-00556 order reciting that the parties "agreed to settle, adjust and compromise all claims").
- The '738 patent survived untouched on the merits — the IPR challenging it was dismissed before institution, at SAP's own request, without a settlement agreement and without a final written decision.
- The IPR termination record is inconsistent with the "terminated – settled" label in the case metadata. The July 1, 2025 decision expressly records SAP's representation that no settlement existed and that termination was for efficiency while the proceeding was still preliminary. The right characterization is "terminated — petition dismissed on Petitioner's unopposed pre-institution motion," not a settlement-based termination.
IX. Sourcing caveats (things I could not verify)
I did not fabricate anything above, but several facts are gaps I could not close within my search budget:
- SAP DJ I's docket number, exact filing date, and voluntary-dismissal date (only SAP DJ I, D.I. 14 and D.I. 36 are referenced).
- The exact date/citation of the E.D. Tex. order resolving SAP's § 281 standing motion and Valtrus's Rule 20 joinder motion — the substantive ruling language is quoted in the IPR record, but the docket number/date are not confirmed.
- The final disposition of Valtrus I (2:24-cv-00021-JRG) and Valtrus II (2:24-cv-00533-JRG) — whether they were voluntarily dismissed with prejudice, consolidated, or remained pending after 2025-08-22. The 2025-08-22 memorandum order shows active litigation; no later dismissal entry surfaced.
- Whether IPRs numbered 2025-00417, -00420, or -00421 also exist (I confirmed only -00416, -00418, and -00419).
- The precise date of the Markman order — the Dkt. 166 PDF timestamp suggests on/about 2025-06-13; treat as approximate.
- The '738-specific constructions — I confirmed those terms were briefed and argued (D.I. 110/117/118/119), but I could not retrieve the court's specific holding on "context information" or "potentially inaccurate or incomplete."
- Why SAP withdrew IPR2025-00419 — the record does not disclose a reason beyond resource preservation. I would not speculate; note only that SAP had not moved to stay Valtrus I and that Valtrus was winning the discretionary-denial framing in the sibling IPRs based on trial proximity (2025-09-22).
- Counsel rosters for the Delaware DJ action come from a third-party litigation-intelligence summary (Duane Morris for SAP; Farnan LLP for Valtrus) rather than a primary docket source.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Winston & Strawn
- Louis L. Campbell · lead counsel
- Scott Border · back-up counsel
- Samuel W. Riebe · back-up counsel
I'll research the counsel of record for the petitioner (SAP) in this IPR proceeding.
Let me gather details on the Winston & Strawn attorneys and confirm the full counsel slate from the petition's mandatory notices.
Let me verify the IPR2025-00419 petition's full counsel listing and gather attorney background details.
Counsel of Record — Plaintiff/Petitioner Side
Important framing note: IPR2025-00419 is a PTAB inter partes review, not a district-court infringement case. There is no "plaintiff" in the Article III sense; the party that filed and prosecuted the challenge — SAP America, Inc. and SAP SE — is the Petitioner, which is the functional equivalent of the plaintiff side. (Be aware that in the parallel EDTX litigation, the roles flip: Valtrus is the plaintiff and SAP is the defendant. If your question is about that case, see the note at the bottom.)
Counsel of record for Petitioners SAP America, Inc. / SAP SE
The authoritative list is in the Board's termination decision, which names counsel "FOR PETITIONER." Source: SAP America, Inc. v. Valtrus Innovations Ltd., IPR2025-00419, Paper (Decision — Dismissal Prior to Institution, mailed/entered July 1, 2025), PTACTS; mirrored at Ex Parte AI.
| Attorney | Role | Firm / Office | Notes |
|---|---|---|---|
| Louis L. Campbell (USPTO Reg. No. 59,963) | Lead counsel | Winston & Strawn LLP — 255 Shoreline Dr., Ste. 520, Redwood City, CA 94065 (Silicon Valley) | Seasoned patent litigator, B.S. in electrical engineering; per firm bio, ~17 ITC investigations since 2010, plus PTAB and district-court work (E.D. Tex., N.D. Cal., D. Del., Fed. Cir.). With the case's filing he signed the petition, the § 42.8 mandatory notices, the stipulation (Ex. 1118), and the motion to terminate. Note: Campbell left Winston & Strawn in August 2025 and joined Orbit IP, LLP (announced Aug. 25, 2025) — after this IPR terminated. |
| Scott Border (USPTO Reg. No. 77,744) | Back-up counsel | Winston & Strawn LLP — 1901 L Street, N.W., Washington, D.C. 20036 | Registered patent attorney; appears as Winston's PTAB lead/back-up in other IPRs (e.g., Abbott Labs., IPR2025-00112, as lead). |
| Samuel W. Riebe (USPTO Reg. No. 78,044) | Back-up counsel | Winston & Strawn LLP — 2121 N. Pearl St., Ste. 900, Dallas, TX 75201 | Registered patent attorney on Winston's SAP–Valtrus IPR team. |
These three are the only attorneys the Board listed for Petitioner in the termination decision and the only names appearing on the filed papers (e.g., the motion to terminate bears Campbell's signature as "Lead Counsel for Petitioners").
Additional attorneys named in the related petition's power of attorney (not confirmed on this docket)
The companion petition IPR2025-00418 (same Petitioner, same Patent Owner, filed Jan. 13, 2025) — same Winston & Strawn team — lists these additional back-up counsel, each "pro hac vice to be submitted":
- Michael Bittner — Winston & Strawn LLP, Dallas, TX
- Matt R. McCullough — Winston & Strawn LLP, Redwood City, CA
- William Logan — Winston & Strawn LLP, Houston, TX
- Patrick Clark — Winston & Strawn LLP, Dallas, TX
Sources: IPR2025-00418 Petitioner's Power of Attorney; Docket Alarm petition copy. Caveat: I located IPR2025-00418's power of attorney but not a separate power of attorney for IPR2025-00419. Because the -419 petition was filed the same week by the same team, these four were likely named on the -419 POA as well, but I could not directly confirm their appearance in this proceeding from the docket — treat them as "associated with the matter" rather than confirmed -419 counsel of record.
What I could not confirm
- No in-house/salaried SAP counsel appears on the PTAB docket for IPR2025-00419; SAP's interests were represented by outside counsel (Winston & Strawn). (One third-party aggregator, UniCourt, associates a "Thanh D. Nguyen" with "Petitioners SAP America, Inc." in a matter captioned In re: SAP America, but I could not tie that name to IPR2025-00419 and did not verify it — do not rely on it.)
- Firm/office addresses for Border and Riebe come from PTAB filings, not independently confirmed current firm pages.
- If "plaintiff" means the parallel EDTX case Valtrus Innovations Ltd. v. SAP America, Inc., No. 2:24-cv-00021-JRG (E.D. Tex.), the plaintiff Valtrus is represented by Reichman Jorgensen Lehman & Feldberg LLP (Patrick R. Colsher, Matt Berkowitz, Khue Hoang, Aaron Morris, Navid C. Bayar) and Miller Fair Henry (Andrea Fair, Claire Henry) — i.e., the responding side here, and the opposite of the Petitioner alignment above. Confirm which case you intend.
Status nuance
The case metadata labels this "terminated – settled," but the Board's own order says no settlement agreement was filed and none was required under 37 C.F.R. § 42.74(b). The proceeding was terminated pre-institution on SAP's unopposed motion to terminate (Paper 11, filed June 25, 2025) — the Board dismissed the petition and refunded the post-institution fees. So "settled" is imprecise for this docket; it was a voluntary, unopposed dismissal, not a § 42.74 settlement.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Reichman Jorgensen Lehman & Feldberg
- Patrick R. Colsher · lead counsel
- Matthew G. Berkowitz · back-up counsel
- Khue V. Hoang · back-up counsel
- Aaron L. Morris · back-up counsel
I'll research the docket and counsel appearances for this IPR.
Now let me dig into the specific counsel and their roles, plus verify against the PTAB docket.
Let me pin down the IPR2025-00419 docket entries and the attorneys' backgrounds.
Bottom line
In IPR2025-00419 the roles are inverted relative to your caption framing: SAP America/SAP SE are the Petitioners, and Valtrus Innovations Ltd. / Key Patent Innovations Ltd. are the Patent Owner — i.e., the "defendant" side you're asking about. Patent Owner's counsel of record in the IPR is a single firm, Reichman Jorgensen Lehman & Feldberg LLP ("RJLF"), which appeared through four attorneys. No separate local counsel, and no in-house counsel, appeared in the IPR (the PTAB does not require local counsel).
The Board's termination decision confirms the appearance list verbatim: "FOR PATENT OWNER: Patrick Colsher / Matt Berkowitz / Khue Hoang / Aaron Morris — REICHMAN JORGENSEN LEHMAN & FELDBERG LLP."
(Paper 12, Decision Dismissing Prior to Institution, July 1, 2025 — ptacts.uspto.gov petition 1557221; mirrored at ai-lab.exparte.com/case/ptab/IPR2025-00419/doc/11.)
Counsel of record for the Patent Owner (Valtrus Innovations Ltd. & Key Patent Innovations Ltd.)
| Name | Role in IPR2025-00419 | Firm / office | Reg. No. & note |
|---|---|---|---|
| Patrick R. Colsher | Lead counsel | Reichman Jorgensen Lehman & Feldberg LLP — New York, NY (400 Madison Ave., Suite 14D) and Redwood Shores, CA | Reg. No. 74,955. Registered PTAB practitioner; led the same team in the parallel IPR2025-00418 power of attorney (filed Jan. 28, 2025), where he is designated lead counsel, and is lead/lead-noticed attorney for Valtrus in E.D. Tex. 2:24-cv-00021 (Valtrus v. SAP). Firm bio highlights a Federal Circuit win for Dawgs Footwear v. Crocs and a USPTO reexam win for Malikie Innovations (another Key Patent Innovations–affiliated entity). Top-tier individual ranking, Legal 500 US Elite 2026 and Managing IP IP STARS 2026 (IP/patent disputes, New York). |
| Matt (Matthew G.) Berkowitz | Back-up counsel (for the Patent Owner) in the IPR | RJLF — Redwood Shores, CA (100 Marine Parkway, Suite 300) | Reg. No. 57,215. Listed second for Patent Owner in the termination decision; in the parallel district-court filings Berkowitz is the designated lead attorney for Valtrus, so his lead/back-up status flips between the IPR and the district case. Long PTAB track record (e.g., lead counsel for petitioner Tegris in IPR2023-01196; CardWare IPR2023-00196). |
| Khue V. Hoang | Back-up counsel | RJLF — New York, NY (400 Madison Ave., Suite 14D) | Registered practitioner; co-counsel on the Valtrus IPR team and in the E.D. Tex. assertions. (Name appears as "Krue" in some OCR'd docket text; correct spelling is Khue.) |
| Aaron L. Morris | Back-up counsel | RJLF — Redwood Shores, CA | Registered practitioner on the Valtrus IPR team; same roster appears in the E.D. Tex. district-court pleadings. (Full name in district filings: Aaron L. Morris.) |
Service address used by the team: rj_valtrus-sap@reichmanjorgensen.com. RJLF's Patent Owner power of attorney for the companion IPR2025-00418 (U.S. Pat. 6,871,264) appoints "the Practitioners associated with Reichman Jorgensen Lehman & Feldberg LLP, Customer Number 184647," with Colsher as lead — the same arrangement underlying -00419. (See docketalarm, IPR2025-00418 Notice of Power of Attorney.)
Procedural posture (why no other counsel appear)
The IPR never reached institution. Key docket steps: Petition filed Jan. 15, 2025 (Paper 1); Patent Owner's discretionary-denial brief May 9, 2025 (Paper 7); Petitioner's reply June 9, 2025 (Paper 8); Patent Owner's Preliminary Response June 10, 2025 (Paper 9); Board-authorized Motion to Terminate June 25, 2025 (Paper 11); dismissal/termination July 1, 2025 (Paper 12). Because the case ended pre-institution and unopposed, RJLF is the entire appearance record for the Patent Owner.
⚠️ Metadata caveat: Your case metadata labels the outcome "terminated – settled," but the Board's own decision says the opposite — "The parties have not reached a settlement agreement regarding this patent, or any other, patent," and no 37 C.F.R. § 42.74(b) settlement agreement was filed. Termination was granted on SAP's unopposed motion, not on a filed settlement. The "settled" label likely reflects the later global peace: the parallel Texas suits (Valtrus v. SAP, 2:24-cv-00021-JRG and 2:24-cv-00533-JRG) and SAP's Delaware DJ action (1:24-cv-00756-GBW) were dismissed by joint stipulation, at least one "with prejudice" following settlement language. That settlement is a district-court development, not an IPR filing.
Related-court counsel for the same clients (for completeness — not PTAB counsel of record)
Valtrus/KPI used local and additional counsel in the district courts, none of whom entered the IPR:
- Ward, Smith & Hill, PLLC (Longview, TX) — Andrea L. Fair and Claire Abernathy Henry, designated "Of Counsel" in the E.D. Tex. complaints (e.g., 2:23-cv-00445-JRG).
- Findlay Craft, P.C. (Tyler, TX) — Eric Hugh Findlay, local/Texas counsel in later Valtrus/KPI filings.
- Farnan LLP (Wilmington, DE) — Brian E. Farnan and Michael J. Farnan, Delaware local counsel in SAP's DJ action, 1:24-cv-00756-GBW.
Sourcing / confidence notes
- Roles and firm affiliations are drawn directly from the Board's July 1, 2025 termination decision and the IPR2025-00418 power of attorney; the attorney roster is well corroborated across PTAB papers and E.D. Tex./D. Del. dockets.
- Inference flagged: the specific lead/back-up designations within IPR2025-00419 itself (Colsher lead; Berkowitz, Hoang, Morris back-up) are inferred from (a) the order of names in the Board's counsel listing, (b) the identical RJLF team's designations in the companion IPR2025-00418 POA, and (c) Ipverse's PTAB case page listing "Respondent Counsel — Colsher, Patrick et al." I did not retrieve the -00419 POA document itself; if you need the designation on the face of that filing, pull Paper 3/4 from the PTAB docket.
- No evidence of any in-house or additional outside counsel appearing for the Patent Owner in IPR2025-00419; nothing material appears to be sealed on the counsel-appearance side.