DCT
1:24-cv-00756
SAP America Inc v. Valtrus Innovations Ltd
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SAP America, Inc. (Delaware)
- Defendant: Valtrus Innovations Limited (Ireland), Key Patent Innovations Limited (Ireland), and Patent Platform Services, LLC (Delaware)
- Plaintiff’s Counsel: Duane Morris LLP
- Case Identification: 1:24-cv-00756, D. Del., 07/18/2024
- Venue Allegations: Plaintiff SAP America Inc v. Valtrus Innovations Ltd asserts that venue is proper in the District of Delaware because Defendant Patent Platform Services is a Delaware LLC, and Defendants Valtrus and KPI are foreign corporations subject to suit in any district where personal jurisdiction exists. The complaint alleges personal jurisdiction is proper due to Defendants' business activities directed at Delaware, including acquiring the patents-in-suit and engaging in licensing and enforcement activities against Delaware-incorporated companies.
- Core Dispute: Plaintiff seeks a declaratory judgment that its enterprise software products do not infringe twelve patents asserted by Defendants, and further alleges that Defendants' licensing practices violate the Delaware Consumer Fraud Act.
- Technical Context: The patents-in-suit cover a wide range of enterprise computing technologies, including network communication management, database replication and history, fault tolerance, system monitoring, and processor cache architecture, which are foundational to modern data center, cloud, and business software services.
- Key Procedural History: The complaint describes pre-suit licensing negotiations beginning in March 2022, when Defendants first accused SAP products of infringement. The parties operated under a standstill agreement dated October 18, 2023. Upon its expiration, Valtrus sued SAP for patent infringement in the Eastern District of Texas. SAP subsequently filed this declaratory judgment action in Delaware. The patents-in-suit originated from Hewlett Packard Enterprise Company.
Case Timeline
| Date | Event |
|---|---|
| 2000-10-17 | Earliest Priority Date for ’173 Patent |
| 2000-10-31 | Earliest Priority Date for ’244 Patent |
| 2001-01-31 | Earliest Priority Date for ’139 Patent |
| 2001-09-24 | Earliest Priority Date for ’866 Patent |
| 2001-09-28 | Earliest Priority Date for ’409 Patent |
| 2002-03-06 | Earliest Priority Date for ’264 Patent |
| 2003-06-06 | Earliest Priority Date for ’182 Patent |
| 2003-07-25 | Earliest Priority Date for ’738 Patent |
| 2004-02-10 | ’139 Patent Issued |
| 2004-06-14 | Earliest Priority Date for ’575 Patent |
| 2004-11-23 | ’409 Patent Issued |
| 2004-12-22 | Earliest Priority Date for ’929 Patent |
| 2005-02-01 | ’866 Patent Issued |
| 2005-03-22 | ’264 Patent Issued |
| 2005-05-03 | ’244 Patent Issued |
| 2005-06-22 | Earliest Priority Date for ’588 Patent |
| 2006-12-19 | ’182 Patent Issued |
| 2007-07-31 | ’588 Patent Issued |
| 2007-12-25 | ’575 Patent Issued |
| 2010-03-02 | ’929 Patent Issued |
| 2011-01-25 | Earliest Priority Date for ’984 Patent |
| 2011-05-03 | ’738 Patent Issued |
| 2012-04-24 | ’173 Patent Issued |
| 2016-01-05 | ’984 Patent Issued |
| 2022-03-04 | Defendants send first letter alleging infringement to SAP |
| 2023-10-18 | SAP and Valtrus enter into a standstill agreement |
| 2024-07-18 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,166,173 - “Inviting Assistant Entity into a Network Communication Session,” issued April 24, 2012
The Invention Explained
- Problem Addressed: The patent addresses scenarios in network-based communications, such as "shop with a friend" web collaboration, where participants may require assistance from a third party, like a customer service representative (CSR), without disrupting the existing session (U.S. Patent No. 8,166,173, col. 1:5-17).
- The Patented Solution: The invention provides a method where a "service system" determines the "context" of an ongoing communication session (e.g., the web page being viewed) and, based on that context, selects an appropriate "assistant entity" (such as a specialized CSR or an automated bot) from a group of potential assistants to invite into the session (’173 Patent, Abstract; col. 2:10-21).
- Technical Importance: This approach allows for dynamic and context-sensitive support in collaborative online environments, aiming to connect users with the most relevant assistance automatically.
Key Claims at a Glance
- The complaint asserts non-infringement of at least independent claim 1 (Compl. ¶67).
- Essential elements of independent claim 1 include:
- Establishing a communication session by a service system.
- The service system determining a context of the existing session based on context data.
- Selecting an assistant entity from a group of assistant entities based upon the determined context.
- Joining the selected assistant entity to the communication session.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,672,929 - “Database Modification History,” issued March 2, 2010
The Invention Explained
- Problem Addressed: Database management systems (DBMS) need to record a history of changes to data, including information about when the change was made and by whom, for purposes of auditing and recovery (U.S. Patent No. 7,672,929, col. 1:11-29).
- The Patented Solution: The patent describes a method where an "encoder module" intercepts a database access command, determines if the command will cause a change to a data record, and if so, executes the command against a "revision control archive module" to log the modification (’929 Patent, Abstract; Fig. 1). This ensures that a modification history is created for changes to the database.
- Technical Importance: This method provides a systematic way to create a database modification history, which is crucial for data integrity, security auditing, and version control in enterprise systems.
Key Claims at a Glance
- The complaint asserts non-infringement of at least independent claim 1 (Compl. ¶74).
- Essential elements of independent claim 1 include:
- Receiving a signal representing a database access request.
- Generating a database access command.
- Determining whether the database access command causes a change to a data record in the database.
- Executing the command against a revision control archive module if the command causes a change.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsules
U.S. Patent No. 6,889,244, “Method and Apparatus for Passing Messages Using Fault Tolerant Storage System,” issued May 3, 2005
- Technology Synopsis: The patent describes a method for passing messages between nodes (e.g., client and server) by using a fault-tolerant storage system (FTSS) as the transport mechanism. A message from a first node is transmitted to a communication agent within the FTSS, which then transmits it to the second node, leveraging the storage system for reliability (’244 Patent, Abstract).
- Asserted Claims: At least claim 1 (Compl. ¶80).
- Accused Features: SAP Cloud Integration is accused of infringement (Compl. ¶79).
U.S. Patent No. 7,251,588, “System for Metric Introspection in Monitoring Sources,” issued July 31, 2007
- Technology Synopsis: This patent relates to system monitoring. It describes providing metric definitions in a machine-readable format that a monitoring tool can access via an "introspection interface." The tool can then "autonomously comprehend" these definitions to process monitoring data from a component (’588 Patent, Abstract).
- Asserted Claims: At least claim 13 (Compl. ¶86).
- Accused Features: SAP Solution Manager is accused of infringement (Compl. ¶85).
U.S. Patent No. 6,850,866, “Managing Performance Metrics Describing a Relationship Between a Provider and a Client,” issued February 1, 2005
- Technology Synopsis: The technology involves managing and evaluating the performance of a service. A service is defined using a subset of metrics from a catalog, each associated with a threshold value. The performance of the service is then evaluated by comparing determined metric values against their corresponding thresholds (’866 Patent, Abstract).
- Asserted Claims: At least claim 1 (Compl. ¶92).
- Accused Features: SAP Solution Manager is accused of infringement (Compl. ¶91).
U.S. Patent No. 9,229,984, “Parameter Expressions for Modeling User Defined Function Execution in Analytical Data Processing Systems,” issued January 5, 2016
- Technology Synopsis: The patent describes a data processing system that identifies a call to a user-defined function (UDF). The UDF call includes both an input argument and a "parameter expression" that defines a parameter value, allowing for more flexible and model-driven execution of UDFs in analytical queries (’984 Patent, Abstract).
- Asserted Claims: At least claim 1 (Compl. ¶98).
- Accused Features: SAP HANA System is accused of infringement (Compl. ¶97).
U.S. Patent No. 6,823,409, “Coherency Control Module for Maintaining Cache Coherency in a Multi-Processor-Bus System,” issued November 23, 2004
- Technology Synopsis: This patent relates to processor architecture, specifically a mechanism for efficiently filtering snoop requests in a multi-processor, multi-bus system to maintain cache coherency. A "coherency control module" acts as a snoop filter to reduce unnecessary snoops (’409 Patent, Abstract).
- Asserted Claims: At least claim 1 (Compl. ¶104).
- Accused Features: The complaint alleges that this patent is implicated by SAP software running on third-party processors from AMD, Ampere, and/or Intel (Compl. ¶103).
U.S. Patent No. 7,152,182, “Data Redundancy System and Method,” issued December 19, 2006
- Technology Synopsis: The invention describes a data redundancy method for fault tolerance between a primary and a secondary storage facility. The primary facility receives write requests, logs them, and forwards them as "send batches" to a secondary appliance, which receives them as "receive batches" for storage (’182 Patent, Abstract; claim 17).
- Asserted Claims: At least claim 17 (Compl. ¶110).
- Accused Features: SAP HANA is accused of infringement (Compl. ¶109).
U.S. Patent No. 7,313,575, “Data Services Handler,” issued December 25, 2007
- Technology Synopsis: The patent describes a "real time information director" (RTID) that transforms data for applications under the direction of "polymorphic metadata." The RTID dynamically instantiates "disassemblers" to break down inbound documents and "assemblers" to build outbound documents (’575 Patent, Abstract).
- Asserted Claims: At least claim 1 (Compl. ¶116).
- Accused Features: SAP Data Services is accused of infringement (Compl. ¶115).
U.S. Patent No. 6,691,139, “Recreation of Archives at a Disaster Recovery Site,” issued February 10, 2004
- Technology Synopsis: The invention is a method for creating a standby data system. It involves computing a "delta image" as the difference between an active data file (or redo log) and an archive data file at a primary site, transmitting the active file and the delta image separately to a standby site, and then combining them at the standby site to recreate the archive file (’139 Patent, Abstract).
- Asserted Claims: At least claim 1 (Compl. ¶122).
- Accused Features: SAP HANA is accused of infringement (Compl. ¶121).
U.S. Patent No. 7,936,738, “Fault Tolerant Systems,” issued May 3, 2011
- Technology Synopsis: This patent describes a method for storing context in an outgoing message within a protocol stack. A layer of the stack is selectively indicated to obtain context information, which is then added to the outgoing message so that a response to that message will also contain the context information, aiding in fault tolerance (’738 Patent, Abstract).
- Asserted Claims: At least claim 1 (Compl. ¶128).
- Accused Features: SAP Cloud Integration is accused of infringement (Compl. ¶127).
U.S. Patent No. 6,871,264, “System and Method for Dynamic Processor Core and Cache Partitioning on Large-Scale Multithreaded, Multiprocessor Integrated Circuits,” issued March 22, 2005
- Technology Synopsis: The patent discloses a method for dynamically allocating cache memory in a multiprocessor system. A "resource allocation controller" determines which cache memory controller is allowed to access an "allocable cache memory block," enabling flexible partitioning of cache resources among processors (’264 Patent, Abstract).
- Asserted Claims: At least claim 1 (Compl. ¶134).
- Accused Features: The complaint alleges this patent is implicated by SAP software running on third-party processors from AMD, Ampere, and/or Intel (Compl. ¶133).
III. The Accused Instrumentality
The complaint names several distinct SAP software products and services as the instrumentalities for which it seeks a declaration of non-infringement.
- SAP Service Cloud: A customer service platform. The complaint alleges that its SAP bot functionality is triggered by customer website searches, rather than by a determination of communication "context" as claimed in the ’173 Patent (Compl. ¶67).
- SAP HANA: An in-memory database platform. The complaint alleges that its system replication feature operates without the specific "determination" step required by the ’929 Patent and does not compute or transmit "delta images" between redo logs as required by the ’139 Patent (Compl. ¶¶74, 122). It further alleges HANA does not use the "send batches" and "receive batches" of write requests claimed by the ’182 Patent (Compl. ¶110).
- SAP Cloud Integration: A service for integrating cloud and on-premise applications. The complaint alleges it does not employ nodes coupled to a fault-tolerant storage system as required by the ’244 Patent and does not compute or transmit "context information" in the manner claimed by the ’738 Patent (Compl. ¶¶80, 128).
- SAP Solution Manager: A centralized administration and monitoring platform. The complaint alleges its Event Calculation Engine uses "configuration settings" rather than "metric definitions" as claimed by the ’588 Patent and that it monitors technical components rather than "evaluating the performance of the service" as claimed by the ’866 Patent (Compl. ¶¶86, 92).
- SAP Data Services: A data integration and transformation tool. The complaint alleges it does not use a "security model," "assembler," "disassembler," or "polymorphic metadata" as required by the ’575 Patent (Compl. ¶116).
- SAP Software running on third-party processors: For patents related to processor architecture (’409 and ’264 Patents), the complaint identifies the accused instrumentality as SAP's software running on processors made by AMD, Ampere, or Intel. It alleges these processors do not have the claimed hardware configurations (e.g., dual processor buses or a resource allocation controller) and that SAP does not direct or control their operation (Compl. ¶¶104, 134).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’173 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| selecting an assistant entity from a group of assistant entities based upon the determined context of the existing communication session | The SAP Service Cloud uses an "SAP bot" that "is triggered whenever a customer searches on the website—not based on any 'determined context.'" | ¶67 | col. 14:48-52 |
| a service system, [that determines] a context of the existing communication session based upon context data | Plaintiff argues that if the SAP bot is construed to be the "assistant entity," it cannot concurrently be the "service system" that determines the context of the communication session. | ¶68 | col. 14:42-47 |
- Identified Points of Contention:
- Scope Question: A primary issue will be whether triggering a bot based on a customer's website search query constitutes "determining... a context" and selecting an entity "based upon" that context as required by the claim. This raises a question of claim scope and the required nexus between the context and the selection.
- Technical Question: The complaint raises the question of whether a single software component (the "SAP bot") can concurrently embody two distinct functional elements recited in the claim: the "assistant entity" that is selected and the "service system" that performs the selecting.
’929 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| determining whether the database access command causes a change to a data record in the database | The complaint alleges that the "SAP HANA system does not make any such determination. Instead, SAP HANA triggers system replication without any determination step." | ¶74 | col. 8:17-21 |
- Identified Points of Contention:
- Technical Question: The central dispute appears to be factual: does the SAP HANA system perform the specific function of "determining whether the... command caused a change"? The analysis may turn on evidence of SAP HANA's internal operations and whether any of its processes are functionally equivalent to the claimed "determination" step, even if not explicitly labeled as such.
V. Key Claim Terms for Construction
’173 Patent
- The Term: "determined context of the existing communication session"
- Context and Importance: This term is critical because SAP’s non-infringement argument rests on its allegation that the accused SAP Service Cloud bot is triggered by a website search, which it contends is not a "determined context." The construction of this term will define the type of information and analysis required to trigger the selection of an assistant.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a precise definition of "context," stating it may relate to "the subject of the call" or other factors (col. 14:1-4). This lack of a specific, limiting definition could support a broader reading that includes inputs like a search query.
- Evidence for a Narrower Interpretation: The specification's examples often describe context in relation to an ongoing, collaborative session, such as co-browsing a specific webpage, which suggests a richer state than a single search query (col. 12:40-50). The term "existing communication session" may suggest that the context must be derived from an already-established interactive session.
’929 Patent
- The Term: "determining whether the database access command caused a change"
- Context and Importance: Practitioners may focus on this term because SAP alleges its system "triggers system replication without any determination step" (Compl. ¶74). The case may depend on whether this "determining" step must be an explicit, discrete action, or if it can be an inherent or implicit result of another database process.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the function abstractly, without mandating a specific algorithm or implementation for the "determining" step, which might allow for a broader interpretation of how this function is performed.
- Evidence for a Narrower Interpretation: The flowchart in Figure 3 of the patent depicts "DB Contents Modified?" as a distinct decision block (320) that occurs after executing a command (315) and before encoding data (325). This figure suggests "determining" is a discrete logical step separate from other actions, potentially supporting a narrower construction.
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaration that SAP does not infringe under theories of either contributory or induced infringement for all patents-in-suit (Compl. ¶¶ 66, 70). It does not, however, plead specific facts to negate the elements of knowledge and intent for an indirect infringement claim, relying on its arguments that the accused products do not meet the direct infringement limitations of the patent claims.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue across multiple patents will be one of functional mismatch: does the alleged operation of SAP's products (e.g., triggering replication "without any determination step" or initiating a bot based on a search) meet the specific, sequential functional requirements of the claims, or is there a fundamental difference in technical operation? This is exemplified by the dispute over the "determining" step in the ’929 patent.
- A second core issue will be one of definitional scope: can claim terms rooted in a specific context, such as "determined context of the existing communication session" from the ’173 patent, be construed to cover the broader functionalities alleged in SAP's products, such as a website search?
- Finally, the case presents a significant procedural and commercial question beyond the technical patent analysis: will the court address SAP's allegations that Defendants' portfolio licensing demands and negotiation tactics constitute violations of the Delaware Consumer Fraud Act, and how might those non-patent claims influence the overall dispute?