NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit ______________________ 

TERADATA CORPORATION, TERADATA US, INC., 

TERADATA OPERATIONS, INC.,

Plaintiffs-Appellants

v.

SAP SE, SAP AMERICA, INC., SAP LABS LLC,

Defendants-Appellees

______________________ 

2022-1286

______________________ 

Appeal from the United States District Court for the 

Northern District of California in No. 3:18-cv-03670-WHO, 

Judge William H. Orrick, III.

______________________ 

Decided: August 1, 2023 

______________________ 

DEANNE MAYNARD, Morrison & Foerster LLP, Washington, DC, argued for plaintiffs-appellants. Also represented by DAVID D. CROSS, SAMUEL BENJAMIN GOLDSTEIN,

BRIAN ROBERT MATSUI, MARY PRENDERGAST, MARK L.

WHITAKER; JAMES SIGEL, San Francisco, CA.

 KANNON K. SHANMUGAM, Paul, Weiss, Rifkind, Wharton & Garrison LLP, Washington, DC, argued for defendants-appellees. Also represented by KENNETH A. GALLO; 

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2 TERADATA CORPORATION v. SAP SE

JOSEPH BEAUCHAMP, JOSH LEE FUCHS, Jones Day, Houston, TX; GREGORY A. CASTANIAS, Washington, DC; 

NATHANIEL GARRETT, San Francisco, CA; THARAN GREGORY 

LANIER, CATHERINE TARA ZENG, Palo Alto, CA.

 PATRICK MICHAEL KUHLMANN, Antitrust Division, 

United States Department of Justice, Washington, DC, argued for amicus curiae United States. Also represented by 

DANIEL EDWARD HAAR, NICKOLAI LEVIN. 

 CORY A. TALBOT, Holland & Hart LLP, Salt Lake City, 

UT, for amici curiae Heski Bar-Isaac, Gary Biglaiser, Timothy Bresnahan, Sylvain Chassang, Allan Collard-Wexler, 

Jesse David, Michael Dinerstein, Martin Gaynor, Matthew 

Grennan, Joseph Harrington, Jakub Kastl, George Korenko, Fernando Luco, Aviv Nevo, Stephen Ryan, Andrew 

Sweeting, Steve Tadelis, Jonathan Williams, Thomas Wollmann, Mo Xiao, Jidong Zhou. Also represented by ANNA C.

VAN DE STOUWE, Denver, CO.

 BRADLEY GROSSMAN, Office of General Counsel, United 

States Federal Trade Commission, for amicus curiae Federal Trade Commission. Also represented by ANISHA S.

DASGUPTA, JOEL MARCUS. 

 ______________________ 

Before LOURIE, TARANTO, and HUGHES, Circuit Judges.

TARANTO, Circuit Judge. 

Teradata Corp., Teradata Operations, Inc., and Teradata US, Inc. (collectively, Teradata) brought the present 

action against SAP America, Inc., SAP Labs LLC, and SAP 

SE (collectively, SAP) in the U.S. District Court for the 

Northern District of California. Teradata’s allegations, as 

it ultimately narrowed them, were that SAP (1) tied the 

offering of two of its products together in violation of antitrust laws, see 15 U.S.C. §§ 1, 14, and (2) misappropriated 

Teradata’s technical trade secrets relating to its “batched 

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TERADATA CORPORATION v. SAP SE 3

merge” method and certain business trade secrets, actionable under 18 U.S.C. § 1836 et seq. and California Civil 

Code § 3426 et seq. SAP was permitted to file counterclaims asserting, as ultimately narrowed by SAP, that Teradata infringed SAP’s U.S. Patent Nos. 9,626,421, 

8,214,321, and 7,617,179. Eventually, as relevant here, the 

district court granted summary judgment in favor of SAP 

on Teradata’s tying claim and technical-trade-secret claim

and entered final judgment under Federal Rule of Civil 

Procedure 54(b) on those claims (while staying proceedings 

on Teradata’s business-trade-secret claim and SAP’s patent counterclaims, having partially addressed the latter). 

Teradata timely appealed.

We decide only the issue of this court’s jurisdiction under 28 U.S.C. § 1295(a)(1), which, as the parties agree, depends on whether SAP’s patent-infringement 

counterclaims arise out of the same transaction or occurrence as Teradata’s relevant technical-trade-secret claims

so that they are compulsory counterclaims. We answer 

that question in the negative. Holding that we lack jurisdiction, we transfer this appeal to the U.S. Court of Appeals 

for the Ninth Circuit, where appellate jurisdiction lies. 

I 

A 

SAP produces and sells enterprise resource planning 

(ERP) software. ERP applications generally “deliver an integrated suite of business applications” covering information about finance, human resources, distribution, 

manufacturing, service, supply chains, and other topics. 

J.A. 15367–68; see J.A. 11418–19. An ERP application requires a “transactional” database (also called an online 

transaction processing [OLTP] database) that “store[s] the 

data directly inputted or created by business application 

transactions” and provides the stored “data back to the application for reporting.” J.A. 10173. Transactional systems 

are used for, e.g., the processing of banking, airlineCase: 22-1286 Document: 91 Page: 3 Filed: 08/01/2023
4 TERADATA CORPORATION v. SAP SE

reservation, retail-sale, phone-call, and credit-card-payment transactions. J.A. 10189. Such transactional databases may, “[a]t any instant,” run “thousands (if not tens of 

thousands) of transactions . . . simultaneously . . . , some of 

which read or write exactly the same data.” Id. Each database use is characteristically small in data size, but a “response time in milliseconds” is often required. J.A. 10190. 

Teradata, on the other hand, produces and sells analytical enterprise data warehouse (EDW) systems and services based on such systems. EDW systems call for 

analytical databases (also called online analytical processing [OLAP] databases). Analytical systems “are designed to gain insight from data for the purposes of 

improv[ing] decision making and business intelligence.” 

J.A. 10189. By way of example, “a retail store, such as 

Home Depot,” may “analyze[] its sales records over a certain time period to understand buying habits of individuals 

based on the location and/or the different days of the week.” 

J.A. 10191. Such “analytical queries may involve a small 

number of queries with a large number of complex records,” 

and “complex analytical queries . . . may take several hours 

to execute.” J.A. 10191–92. Transactional systems and analytical systems thus “serve very different needs of organizations” and involve databases that often are structured 

differently. J.A. 10192–93. But if an EDW is to “serve[] 

the needs of the entire enterprise,” J.A. 10486, it can be 

important for it to be able to pull data stored in the transactional databases of ERP systems (such as SAP’s), J.A. 

10190–91.

Teradata’s “flagship” EDW product, Teradata Opening 

Br. at 4, is Teradata Database (now called Teradata Vantage). Teradata Database has a “parallel architecture,” 

J.A. 15401, that gives it “massively parallel processing 

(MPP) capabilities,” J.A. 15395. Teradata’s narrowed technical trade secrets, as characterized by Teradata and SAP,

concern a command issued by the application layer of Teradata’s EDW system (the software with which the 

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TERADATA CORPORATION v. SAP SE 5

information-seeking user directly interacts) to its underlying Teradata Database that takes advantage of the parallel-processing architecture of the underlying database. 

In part to enable Teradata’s EDW systems to use the 

data of SAP’s ERP systems, SAP and Teradata collaborated to develop “bridge” software that would enable Teradata Database (which uses one version of a structuredquery language) and SAP’s ERP system (which uses a different version) to interact. J.A. 15203–04. For this Bridge 

Project, the parties entered into two relevantly similar mutual non-disclosure agreements (collectively, MNDA) and a 

Software Development Cooperation Agreement (SDCA). 

The MNDA, effective as of June 2008, required the marking of information in order to maintain its confidentiality. 

The SDCA, in effect by February 2009, provided for, among 

other things, rights of ownership or use of particular subject matter involved in the collaboration. 

When the Bridge Project began, SAP offered three

products of particular relevance to this case: its ERP product; its Business Warehouse product (SAP BW); and its 

MaxDB product. SAP’s ERP system, as already noted, did 

transactional processing. SAP BW, a data warehousing 

and reporting product, was capable of extracting data from 

SAP’s ERP system and providing some analytical processing of that data. SAP’s MaxDB was a database (described here by SAP as transactional) with which SAP BW 

interacted. The bridge to be created by the Bridge Project 

was to be from SAP BW, via MaxDB, to Teradata Database. 

Specifically, MaxDB was to convert commands issued from 

SAP BW to the language used by Teradata Database. 

Early in the collaboration (seemingly around July 

2008), a Teradata engineer working on the Bridge Project 

asked about “SAP’s plan for . . . translat[ing] core database 

commands issued by SAP’s BW application” to something 

usable by Teradata Database. J.A. 15205. The core database command of relevance that SAP was using to retrieve 

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6 TERADATA CORPORATION v. SAP SE

desired data from the underlying database was called “Select for All Entries” (SFAE). Id.; SAP Response Br. at 14. 

An SAP employee working on the Bridge Project responded

by explaining how SAP would translate its SFAE command

for use by Teradata Database. J.A. 15205–06. But according to Teradata’s characterization in this case, the Teradata engineer suggested a different approach—

translating the SFAE command issued by SAP BW into 

what Teradata here labels a command using a “batched

merge” method, J.A. 15211–12—and SAP adopted that approach when it released the result of the Bridge Project, 

i.e., Teradata Foundation, in May 2011. See J.A. 15219; 

J.A. 15716. 

Meanwhile, SAP had been developing its own next-generation database, called HANA. SAP describes HANA as a 

“translytical” database—structured to support transactional and analytical functions. J.A. 10204; J.A. 12191; 

J.A. 21277. HANA was fully released in June 2011, after 

an earlier version was released in 2010. J.A. 15638. Like 

Teradata Database, HANA has a parallel architecture. 

J.A. 11387. Teradata contends that SAP, to take advantage of that parallel architecture, implemented the 

“batched merge” method “into the interface between SAP 

applications and HANA.” J.A. 14; see J.A. 15291; J.A. 

16646. SAP notified Teradata that it would stop selling or 

supporting Teradata Foundation in an August 2011 letter, 

effective in February 2012. J.A. 15520.

In conjunction with its design of HANA, SAP also developed updated ERP and BW software, S/4HANA and 

BW/4HANA, designed to work specifically with the new 

HANA, taking advantage of its features. See J.A. 10205–

17; J.A. 14137; J.A. 21107–15; J.A. 21278. SAP released 

S/4HANA in 2015. See J.A. 10241; J.A. 10475–77. SAP 

has asserted that, in choosing to structure its ERP application to depend on functionalities it had built into its database, it was following a course already adopted by Oracle 

and Microsoft, major ERP rivals of SAP. See J.A. 10174–

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TERADATA CORPORATION v. SAP SE 7

75. Of importance in this case, SAP required customers 

that purchased its latest ERP software, S/4HANA, also to 

purchase a “runtime” license for HANA, allowing uses of

the HANA database only with certain SAP products, including S/4HANA; a “full use” license to HANA (covering 

uses with non-SAP products) was not required, but it was 

separately offered as a higher-priced option. J.A. 15928–

29; J.A. 16115–16; J.A. 17698–99; see J.A. 13899–900. 

B 

Teradata’s allegations of misappropriation of technical 

trade secrets—at the heart of the jurisdictional issue we 

decide here—changed over time in this action. In its Second Amended Complaint, in December 2018, Teradata incorporated by reference “a detailed list” of alleged trade 

secrets allegedly misappropriated by SAP. J.A. 801. The 

list had 77 items on it. N.D. Cal. Dkt. No. 66-3. But Teradata amended the list several times, including in May

2019, when the list of alleged trade secrets lengthened to 

several hundred, see J.A. 2040; N.D. Cal. Dkt. No. 305-3 at 

2; and by June 2020, the list stood at 146 alleged trade secrets, N.D. Cal. Dkt. No. 267; see also N.D. Cal. Dkt. No. 

335. Teradata’s basic theory was that SAP used the Bridge 

Project to take Teradata trade secrets and develop 

HANA—including aspects of HANA’s fundamental parallel 

architecture. J.A. 801–02, 807–08. 

In December 2020, in accordance with an agreed-to discovery schedule adopted by the court in July 2020, N.D. 

Cal. Dkt. No. 278, Teradata drastically narrowed its list of 

trade secrets to items 1.4, 1.11, 1.15, 1.16, 1.20, 24–31, 54–

56, and 58–60. N.D. Cal. Dkt. No. 364; see also N.D Cal. 

Dkt. No. 394-3. Trade secrets 1.4, 1.11, 1.15, 1.16, 1.20, 

24–31, 58, and 59, which were technical, Teradata explained, “center around . . . specific ways of selecting large 

volumes of data to solve problems arising in MPP [massively parallel processing] databases such as SAP HANA.” 

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8 TERADATA CORPORATION v. SAP SE

N.D. Cal. Dkt. No. 395 at 8. The few other items on the list

were business-related. Id. 

Teradata then further shortened its list of technical 

trade secrets. In August 2021, shortly before the parties 

filed motions for summary judgment, Teradata served an 

updated list of trade secrets on SAP that, on the technical 

side, included only trade secrets 24–31, 58, and 59. See J.A. 

10139 (citing J.A. 10611–14, which is an excerpted version 

of N.D. Cal. Dkt. No. 464-14); J.A. 15164. Before us, in discussing jurisdiction, the parties have not differentiated 

among these alleged trade secrets, which they treat as a 

unit as setting forth the “batched merge” method, in varying language and with varying degrees of specificity.1 

In addition to its trade-secret claims, Teradata alleged 

that SAP illegally tied HANA and S/4HANA. Teradata 

also brought an attempted-monopolization claim under 

Section 2 of the Sherman Act, and copyright-infringement 

claims, but it ultimately dropped the Section 2 claim and 

stipulated to dismissal of the copyright claims.

C 

1 

Teradata filed its Second Amended Complaint in December 2018, J.A. 790, and in May 2019, SAP moved for 

1 It appears that the August 2021 SAP filing docketed as N.D. Cal. Dkt. No. 464-14 contains only excerpts of 

the list of trade secrets that Teradata served in August 

2021. But the March 2021 Teradata filing docketed as N.D. 

Cal. Dkt. No. 394-3 contains fuller excerpts of the then-operative list of asserted trade secrets, including all of items

24–31, 58, and 59. Item 59 in that list matches item 59 in 

Dkt No. 464-14, and the parties have not asserted that the 

March and August 2021 filings are different at all with respect to items 24–31, 58, and 59. 

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TERADATA CORPORATION v. SAP SE 9

permission to file counterclaims alleging that Teradata 

was infringing, or inducing or contributing to the infringement of, the ’421, ’321, and ’179 patents, along with U.S 

Patent Nos. 7,421,437 and 7,437,516, by making, using, 

selling, offering, or importing software or products containing software, including Teradata Database, Teradata Analytics for SAP Solutions, Teradata OLAP Connector, 

Teradata’s Business Model Extensions, and Teradata Intelligent Memory. J.A. 1796–802 (motion); see J.A. 2843–

46, 2870–76 (counterclaims); N.D. Cal. Dkt. No. 123 at 1–

26 (amended answer); id. at 26–63 (counterclaims). SAP 

did not assert that the counterclaims were compulsory and 

so would be lost if not filed in this action. Teradata, in opposing the addition of SAP’s counterclaims to the case, asserted that SAP “can bring those claims in a separate 

lawsuit.” N.D. Cal. Dkt. No. 109 at 9 (emphasis added) (citing Xyratex Technology, Ltd. v. Teradyne, Inc., No. 08-cv04545, 2009 WL 10702551, at *6 (C.D. Cal. Apr. 10, 2009)

(finding no prejudice to defendant to denying leave to file 

counterclaims because counterclaims were non-compulsory, as defendant conceded, and thus could be brought 

separately)). The district court allowed the filing of the 

counterclaims in July 2019. N.D. Cal. Dkt. No. 122.

2 

SAP’s ’421 patent issued in April 2017 from a September 2008 application tracing to a September 2007 provisional application. It describes and claims a database that 

“is able to generate up-to-date” OLTP data without redundancy and “without the need for extraction, translation and 

loading procedures.” See ’421 patent, Title; id., Abstract; 

id., col. 19, line 64, through col. 20, line 30. The patent also 

says that one feature of an embodiment is “elimination of

the traditional dichotomy between OLTP . . . systems and 

OLAP . . . systems,” as “validated with a prototypical implementation on the basis of SAP’s ERP . . . and DW (data 

warehouse) products.” Id., col. 3, lines 17–20; id., col. 3, 

lines 40–42. The claimed and described systems include “a 

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10 TERADATA CORPORATION v. SAP SE

relational database management system component” that 

“stores . . . database information in a row format.” Id., col. 

20, lines 3–6. The systems also include “a column-oriented 

data processing component” that “stores . . . database information in a column format.” Id., col. 20, lines 7–11. In 

the claimed systems and methods, in response to an update 

request, the relational component can update the rowbased database information and notify the column-based 

component of the update. Id., col. 20, lines 12–24. The column-based component can then update the column-based 

database information. Id. Finally, the column-based component can then respond to any query requests based on 

the column-oriented database information. Id., col. 20, 

lines 25–30. 

Independent claim 1 of the ’421 patent recites: 

1. A computer system storing a computer program for processing database information for both 

transacting and reporting, said computer program 

being executed by said computer system, the computer system comprising:

a processor;

a memory;

a relational database management system 

component, implemented by the computer system, wherein said relational database management component stores said database 

information in a row format; and

a column-oriented data processing component, implemented by the computer system, 

wherein said column-oriented data processing 

component stores said database information in 

a column format using vertical fragmentation,

in response to a database update request, 

said relational database management system 

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TERADATA CORPORATION v. SAP SE 11

component updates said database information 

stored in said row format, said relational database management system component notifies 

said column-oriented data processing component of said database update request, and said 

column-oriented data processing component 

updates said database information stored in 

said column format, whereby said relational 

database management system component and 

said column-oriented data processing component share a consistent view of said database 

information, and

in response to a query request to retrieve 

data, said column-oriented data processing 

component generates a query response based 

on said database information stored in said 

column format, wherein generating the query 

response accesses only one or more columns 

needed directly for generating the query response.

Id., col. 19, line 64, through col. 20, line 30.

SAP’s ’321 patent issued in July 2012 from a May 2004 

application tracing to a May 2003 foreign patent application. The patent “relates to ways to organize the tables and 

cubes used in databases so that they can be more easily and 

efficiently recognized and accessed.” N.D. Cal. Dkt. No. 

472-2 at 218 (SAP’s Maier Rebuttal Expert Report); see

N.D. Cal. Dkt. No. 472 at 1 (Teradata’s brief in support of 

its motion for summary judgment of invalidity) (“The ’321 

patent is directed to the . . . idea of associating . . . database 

tables and . . . [OLAP] cubes with respective classes for use 

with application programs.” (bracketed alteration in original)). As SAP’s validity expert explained, “[a]t a high 

level[,] this organization is accomplished by assigning a table or cube to a particular class,” with the “classes serv[ing] 

to group data structures storing related data, so an 

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12 TERADATA CORPORATION v. SAP SE

application can access the structures together.” N.D. Cal. 

Dkt. No. 472-2 at 218. 

Independent claim 1 of the ’321 patent reads: 

1. A data processing method comprising:

providing a set of database tables in a data 

warehouse, each database table being assigned to an entity type and storing entities of 

its entity type;

providing a set of online analytical processing cubes in a data warehouse, each online 

analytical processing cube specifying a layout 

for transactional data storage;

providing at least one application program 

for processing at least one class of database tables and at least one class of online analytical 

processing cubes;

mapping a sub-set of the set of database 

tables to the at least one class of database tables, the sub-set of database tables comprising 

database tables of one or more entity types;

mapping a sub-set of the set of online analytical processing cubes to the at least one class 

of online analytical processing cubes;

invoking an online analytical processing 

component to fill the online analytical processing cubes with transactional data;

processing the entities stored in the subset of database tables and the transactional 

data stored in the sub-set of online analytical 

processing cubes by the application program; 

and

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TERADATA CORPORATION v. SAP SE 13

providing analysis of the entities and the 

transactional data processed by the application program to a user.

’321 patent, col. 7, lines 12–37. 

SAP’s ’179 patent issued in November 2009 from an 

April 2004 application filed as a continuation in part of an 

application tracing to a June 2002 provisional application. 

It describes and claims methods and systems that integrate subquery optimization into a query optimizer’s plan 

for accessing a database to execute a query. ’179 patent, 

Abstract; id., col. 38, line 47, through col. 39, line 8. The 

patent explains that structured query language (SQL) queries, issued to databases, “express what results are requested but do not state how the results should be 

obtained.” Id., col. 2, lines 59–60. Query optimizers perform the task of determining “the best method of accessing 

the data to return the result required by the SQL query.” 

Id., col. 2, lines 63–65. Query optimizers do so “by generating different join strategies” (i.e., “join enumeration”)

“and, based on cost, choosing the best strategy.” Id., col. 3, 

lines 5–15. The patent provides that “[a] complete access 

plan comprises a join order for joining the relations (tables), join methods for each join operation, and an access 

method for each base table used in the query.” Id., col. 3, 

lines 21–24. For subqueries, though, “[a] database optimizer, in general, optimizes a subquery block separately 

from the rest of the query block the subquery is used in” 

and evaluates the subquery “when it is needed in the context in which it is used.” Id., col. 3, lines 28–31. The patent’s systems and methods purport to integrate subquery 

optimization into the general optimization plan “without 

significantly increasing the amount of memory required, or 

significantly increasing the search space the optimizer is 

considering.” Id., col. 3, line 64, through col. 4, line 10. 

Independent claim 1 of the ’179 patent reads: 

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14 TERADATA CORPORATION v. SAP SE

1. In a database system, a method for optimizing a database query for execution by a processor, 

the method comprising:

receiving a database query including at 

least one subquery;

building a query optimization graph for 

each query block of the database query, the 

query optimization graph including plan nodes 

representing subqueries of each query block;

prior to optimization of a query block, identifying alternative strategies for evaluation of 

a subquery plan node of the query block based 

on subquery type and semantic properties of 

the database query;

for each alternative strategy, pre-computing a subquery access method and subquery 

join method for use during optimization of the 

query block, wherein the subquery access 

method includes an estimate of execution 

costs;

generating a set of access methods and join 

methods for other plan nodes of the query 

block;

optimizing each query block to determine 

an optimal access plan for the query block 

based upon selecting pre-computed subquery 

access methods and join methods for subquery 

plan nodes of the query block as well as access 

methods, join methods, and join order for other 

plan nodes of the query block having favorable 

execution costs, wherein each query block is 

optimized without transformation of the 

subqueries using the pre-computed access 

methods and join methods; and

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TERADATA CORPORATION v. SAP SE 15

constructing a detailed access plan for execution of the database query based upon the 

optimal access plan determined for each query 

block.

Id., col. 38, line 47, through col. 39, line 8.2

3 

Both before and after the allowance and filing of the 

counterclaims, Teradata, citing Federal Rule of Civil Procedure 21, requested that the district court sever SAP’s 

counterclaims from Teradata’s affirmative claims. See, 

e.g., N.D. Cal. Dkt. Nos. 109 (June 2019), 174 (September 

2019), 395 (March 2021). SAP opposed that request. See, 

e.g., J.A. 2041–42 (June 2019); J.A. 4092–96 (September 

2019); N.D. Cal. Dkt. No. 175-4 (SAP’s September 2019 

“statement of common issues of fact between Teradata’s 

trade secret claims and SAP’s patent counterclaims” (capitalization altered)); J.A. 8878–86 (March 2021).

In May 2021, following Teradata’s last severance motion, the district court severed SAP’s ’437 patent-infringement counterclaim from this case but declined to do so at 

that time for the three other remaining counterclaims—asserting infringement of the ’421, ’321, and ’179 patents. 

J.A. 9523. Specifically, the court said that “[t]he record 

would benefit from the testimony of the experts and 

2 We omit descriptions of the ’516 patent and the 

’437 patent. In February 2021, upon stipulation of the parties, the court dismissed the counterclaim involving the 

’516 patent without prejudice. J.A. 144; N.D. Cal. Dkt. No. 

391. The ’437 patent concerns certain uses of a data dictionary cache, and the counterclaim asserting infringement of that patent was severed from the case in May 2021 

(as noted infra). Neither patent plays a material role, if 

any role, in the resolution of the compulsory-counterclaim 

issue now before us.

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16 TERADATA CORPORATION v. SAP SE

briefing on motions for summary judgment,” which would 

occur soon, but that “[i]t appears from the argument presented at this juncture that SAP’s counterclaims arise out 

of the same transaction or occurrence as Teradata’s trade 

secret and antitrust claims, the development of SAP’s product HANA”; that “[t]here are common questions of fact between both sets of claims, except for SAP’s ’437 patent 

infringement counterclaim, such as what the technological 

process entails and who invented the technology first”; and 

that “[t]he interests of judicial economy and the overlap between witnesses and documentary evidence[] weigh 

against severance” except for the ’437 patent. Id. The 

court reiterated the preliminary nature of its determination, stating that it “may reconsider these issues as part of 

case/trial management after the dispositive motions.” Id.

D 

In November 2021, the district court granted SAP summary judgment on Teradata’s remaining antitrust claim, 

namely, its tying claim, a ruling based to a large extent on 

the court’s exclusion of several aspects of the opinion of Teradata’s economic expert. J.A. 1–2, 21–38, 46–49. The district court also granted SAP summary judgment on 

Teradata’s technical-trade-secret claims, which had been 

“narrowed and now focus[ed] on only one category of technical trade secrets: the Batched Merge method,” J.A. 7, referring to trade secrets 24–31, 58, and 59. See J.A. 7–21. 

The district court rested that ruling on determinations that 

Teradata did not adequately mark the method confidential 

under the MNDA when disclosing it to SAP during the 

Bridge Project and that, at any rate, Teradata irrevocably 

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licensed SAP the method to use in any SAP product under 

the SDCA. J.A. 10–18.3

Two weeks later, the district court entered an agreedto final judgment on those claims under Rule 54(b), while 

staying further proceedings on the business-trade-secret 

claim and the patent counterclaims. J.A. 69–77. After Teradata appealed to this court, SAP moved to transfer the 

appeal to the Ninth Circuit, a motion that Teradata opposed. We denied the motion and directed the parties to 

address the jurisdictional issue in their merits briefs. 

II

“We must . . . fulfill our obligation to satisfy ourselves 

of our jurisdiction over any appeal,” Vermont v. MPHJ 

Technology Investments, LLC, 803 F.3d 635, 642 n.1 (Fed. 

Cir. 2015), while bearing in “mind[] that the burden of persuasion falls on the appellant to establish that we indeed 

possess the jurisdiction [that the appellant] seeks to invoke,” Palmer v. Barram, 184 F.3d 1373, 1377 (Fed. Cir. 

1999). We apply Federal Circuit law when determining 

whether we have jurisdiction under the relevant statute, 

28 U.S.C. § 1295(a)(1). In re Rearden LLC, 841 F.3d 1327, 

1331 (Fed. Cir. 2016).

Under 28 U.S.C. § 1295(a)(1), we have 

exclusive jurisdiction . . . of an appeal from a final 

decision of a district court of the United States . . . 

in any civil action arising under, or in any civil 

3 The district court also granted Teradata’s motion 

for summary judgment on two issues involving the three 

remaining patents: ineligibility, under 35 U.S.C. § 101, of 

the claims of the ’321 patent (which SAP contested); and 

unavailability, under 35 U.S.C. § 287, of damages for infringement of the ’179 and ’421 patents before May 21, 2019 

(which SAP did not contest). J.A. 49–64, 68.

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18 TERADATA CORPORATION v. SAP SE

action in which a party has asserted a compulsory 

counterclaim arising under, any Act of Congress 

relating to patents or plant variety protection.[4] 

Our jurisdiction in this appeal turns on the applicability of 

the “compulsory counterclaim” clause. Congress added 

that clause to § 1295(a)(1) through the America Invents Act 

in 2011, abrogating the Supreme Court’s holding in Holmes 

Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 

U.S. 826 (2002), that a compulsory patent-infringement 

counterclaim did not bring a case within § 1295(a)(1) as 

then written. The 2011 Congress limited the extension to 

cases in which the patent-law-based counterclaim was 

compulsory, in contrast to a 2006 bill addressing Holmes 

Group—referred to in the discussions of the 2011 bill that 

was enacted—that had more broadly extended § 1295(a)(1) 

to cases in which any party asserted a patent-law-based 

claim. See Joe Matal, A Guide to the Legislative History of 

the America Invents Act: Part II of II, 21 Fed. Cir. Bar J. 

539, 539–40 (2012) (discussing Senator Kyl’s recognition of 

departure from earlier, broader 2006 bill); H.R. Rep. No. 

112-98 at 54, 81 (2011) (referring to 2006 bill). 

We look to Federal Rule of Civil Procedure 13(a) for 

what constitutes a compulsory counterclaim. Rearden, 841 

F.3d at 1332. Subject to certain exceptions not relevant 

here, Rule 13(a) deems a counterclaim “compulsory” if it 

“arises out of the transaction or occurrence that is the subject matter of the opposing party’s claim.” A defendant that 

fails to assert a counterclaim in the action where it is 

4 Under 28 U.S.C. § 1291, the Ninth Circuit has jurisdiction over this appeal if we do not. Under 28 U.S.C. 

§ 1631, if we conclude that we lack jurisdiction, we “shall, 

if it is in the interest of justice, transfer such action or appeal to any other such court . . . in which the . . . appeal 

could have been brought at the time it was filed or noticed 

. . . ,” here, the Ninth Circuit.

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TERADATA CORPORATION v. SAP SE 19

“compulsory” cannot assert it (even as a “claim”) in a separate action. See Rule 13, 1937 Adv. Comm. Note 7; Baker 

v. Gold Seal Liquors, Inc., 417 U.S. 467, 469 (1974); American Mills Co. v. American Surety Co., 260 U.S. 360 (1922). 

Deeming a counterclaim compulsory thus has a significant 

assert-now-or-lose consequence.

Teradata contends now that SAP’s patent-infringement counterclaims—specifically, those involving SAP’s 

’421, ’321, and ’179 patents—are compulsory because, Teradata urges, they arise out of the same transaction or occurrence that is the subject matter of Teradata’s technicaltrade-secret claims.5 As we explain below, the relevant 

trade-secret claims are only Teradata’s enumerated 

“batched merge method” alleged trade secrets. Those trade 

secrets remain secret, so details are not recited in this opinion. But having examined them, and having conducted the 

required case-specific analysis, we conclude that SAP’s 

’421, ’321, and ’179 patent-infringement counterclaims are 

not compulsory and thus cannot support our jurisdiction. 

A 

Noting courts’ general agreement that Rule 13(a)’s 

“transaction or occurrence” “words should be interpreted 

liberally in order to further the general policies of the federal rules,” we have explained that, to implement that approach, we have identified our use of 

three tests to determine whether the transaction 

or occurrence test of Rule 13(a) is met: (1) whether 

the legal and factual issues raised by the claim and 

5 Teradata does not invoke its other claims, including its antitrust or business-related trade-secret claims, as 

making SAP’s remaining counterclaims compulsory. And 

Teradata does not assert that the severed ’437 patent-infringement claim or the dismissed-without-prejudice ’516 

patent-infringement claim support our jurisdiction.

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20 TERADATA CORPORATION v. SAP SE

counterclaim are largely the same; (2) whether 

substantially the same evidence supports or refutes both the claim and the counterclaim; and (3) 

whether there is a logical relationship between the 

claim and the counterclaim. 

Rearden, 841 F.3d at 1332 (internal quotation marks omitted) (quoting Nasalok Coating Corp. v. Nylok Corp., 522 

F.3d 1320, 1325 (Fed. Cir. 2008)).6 At least as a general 

matter, the application of these standards to particular 

cases presents a question of law. See Anza Technology, Inc. 

v. Mushkin, Inc., 934 F.3d 1359, 1367 (Fed. Cir. 2019) (discussing related Rule 15 issue). Regardless, the parties 

have not urged or supported an exception to that review 

standard that would make any difference here. 

When performing this analysis, we “look to the plaintiff’s operative complaint and the counterclaims at the time 

of filing to determine jurisdiction.” Rearden, 841 F.3d at 

1333 n.2 (citing Jang v. Boston Scientific Corp., 767 F.3d 

1334, 1338 (Fed. Cir. 2014)). At that time, “no one can be 

certain what the issues” in the case will be, Charles A. 

Wright & Arthur R. Miller, Federal Practice & Procedure

§ 1410 (3d ed. updated Apr. 2023), so we decline to consider 

“[t]he mere possibility that, as a result of affirmative defenses, the first suit might involve additional issues,” 

6 Whether the counterclaim could not separately be 

asserted in another action (if not presented in the action at 

issue) is a prescribed consequence of the “compulsory” analysis, as noted supra, not a separate factor in the analysis. 

Similarly, we have declined to consider in the analysis 

whether res judicata would bar a subsequent action on the 

counterclaim if not asserted in the first action (once the 

first action has gone to judgment), deeming such consideration circular. Nasalok, 522 F.3d at 1326 & n.4 (citing 6 

Charles A. Wright & Arthur R. Miller, Federal Practice & 

Procedure § 1410 & n.8 (3d ed. updated Apr. 2023)). 

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TERADATA CORPORATION v. SAP SE 21

Nasalok, 522 F.3d at 1326. Instead, “[i]n each of the three 

tests[,] . . . the question is the extent of factual overlap between what the plaintiff must establish to prove its claim 

and what the defendant must establish to prove its counterclaim.” Nasalok, 522 F.3d at 1326.

Of relevance here, for jurisdictional purposes, the operative complaint is not necessarily the original complaint. 

Our jurisdiction depends on the complaint as amended. 

See Chamberlain Group, Inc. v. Skylink Technologies, Inc., 

381 F.3d 1178, 1189 (Fed. Cir. 2004); Rearden, 841 F.3d at 

1333 n.2 (same for counterclaim-based § 1295 analysis). 

When a plaintiff drops certain claims by amending its complaint or voluntarily dismissing them without prejudice (effectively amending the complaint), the required analysis 

treats the case as if the dropped ones had never been 

brought, focusing just on the (formally or effectively) 

amended complaint. See Chamberlain, 381 F.3d at 1189; 

Gronholz v. Sears, Roebuck & Co., 836 F.2d 515, 516–19 

(Fed. Cir. 1987) (concluding that we lack jurisdiction over 

an appeal in which the plaintiff voluntarily dismissed without prejudice all patent-infringement claims prior to the 

appeal). As we explained in Chamberlain, “[d]ismissals 

without prejudice are de facto amendments to the complaint,” and “we do not differentiate between actual and 

constructive amendments; both divest us of jurisdiction if 

they eliminate all issues of patent law.” 381 F.3d at 1189. 

In contrast, “[d]ismissals with prejudice are adjudications 

on the merits, and not constructive amendments to the 

complaint.” Id. at 1189–90 (citing Zenith Electronics Corp. 

v. Exzec, Inc., 182 F.3d 1340, 1346 (Fed. Cir. 1999)). 

Chamberlain itself involved the amendment or constructive amendment of a complaint to remove patent 

claims, where the complaint itself (e.g., asserting claims 

under patent law) was the direct basis for § 1295 jurisdiction. But the Chamberlain analysis should apply also 

where it is the counterclaims (because of their relation to 

the claims) that must support any § 1295 jurisdiction. We 

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22 TERADATA CORPORATION v. SAP SE

still “look to the plaintiff’s operative complaint”—i.e., the 

amended one—“and the counterclaims at the time of filing 

to determine jurisdiction.” Rearden, 841 F.3d at 1333 n.2

(emphasis added)). Whether claims or counterclaims are 

the direct basis for § 1295 jurisdiction, an amendment of 

the complaint to drop claims (expressly or in effect) renders 

the dropped claims “as if . . . never . . . filed.” Chamberlain, 

381 F.3d at 1190; see also Nilssen v. Motorola, Inc., 203 

F.3d 782, 785 (Fed. Cir. 2000) (“[R]egardless whether the 

patent claims were dismissed without prejudice or extinguished by amendment, the effect is the same. The parties 

were left in the same legal position with respect to the patent claims as if they had never been filed.”). 

A plaintiff may amend its complaint “as a matter of 

course” before the defendant answers and later “with the 

opposing party’s written consent or the court’s leave.” Federal Rule of Civil Procedure Rule 15(a)(1), (2); see Wright & 

Miller § 1479. Here, when Teradata amended its list of asserted trade secrets, incorporated into the Second 

Amended Complaint, after SAP answered, Teradata had 

both SAP’s consent and the court’s leave. The parties stipulated that Teradata would narrow its trade secret claims 

to no more than 25 by December 15, 2020, and no more 

than 15 by the close of expert discovery. N.D. Cal. Dkt. No. 

278. The stipulation provided similarly for SAP’s patent 

claims, and the court entered the stipulation. Id. 

Teradata’s first narrowing under the stipulated order

occurred when Teradata amended its list, on December 15, 

2020, to assert trade secrets 1.4, 1.11, 1.15, 1.16, 1.20, 24–

31, 54–56, and 58–60. N.D. Cal. Dkt. No. 364; see also N.D 

Cal. Dkt. No. 394-3. And following an extension of the 

deadline for the close of expert discovery to August 13, 

2021, N.D. Cal. Dkt. No. 393, Teradata, on August 13, 

2021, served its second and final narrowing under the stipulated order, leaving us with the operative list asserting, 

on the technical side, trade secrets 24–31, 58, and 59 and 

dropping trade secrets 1.4, 1.11, 1.15, 1.16, and 1.20. See 

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TERADATA CORPORATION v. SAP SE 23

J.A. 10139 (citing J.A. 10611–14). Those trade secrets, the 

parties agree, are narrowed down to the above-described 

batched merge method. See J.A. 10139; J.A. 15164. And 

the narrowing in both instances occurred without prejudice. See Hells Canyon Preservation Council v. U.S. Forest 

Service, 403 F.3d 683, 690 (9th Cir. 2005) (“It is axiomatic 

that prejudice does not attach to a claim that is properly 

dropped from a complaint under Rule 15(a) prior to final 

judgment.”). 

B 

The jurisdictional question before us is thus whether 

SAP’s claims for infringement of the ’421, ’321, and ’179 

patents arise out of the same transaction or occurrence that 

is the subject matter of Teradata’s claims for misappropriation of its trade secrets 24–31, 58, and 59 so that SAP 

would lose its ability to bring these claims (against the accused products) if it did not press them in this action initiated by Teradata. “[T]he question is the extent of factual 

overlap between what the plaintiff must establish to prove 

its claim and what the defendant must establish to prove 

its counterclaim.” Nasalok, 522 F.3d at 1326. Affirmative 

defenses that the opposing party might raise to the claims 

or counterclaims are not part of that comparison. Id. 

To prevail on any of its patent-infringement counterclaims as presented, SAP must demonstrate that an accused Teradata product satisfies all limitations of an 

asserted patent claim. See, e.g., SIMO Holdings Inc. v. 

Hong Kong uCloudlink Network Technology Ltd., 983 F.3d 

1367, 1380 (Fed. Cir. 2021).7 That showing turns on the 

7 The phrase in text is an appropriate shorthand 

here, as no argument has been made based on differences, 

e.g., between product and method claims, between making 

or selling or using or other direct-infringement acts, or between direct or indirect infringement.

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24 TERADATA CORPORATION v. SAP SE

scope of the patent claims, on one hand, and the composition of Teradata’s accused products, on the other. Patent 

validity is not among the required showings, but one accused of infringement, like Teradata, may put patent invalidity in issue in response. See Nasalok, 522 F.3d at 1326–

27 (discussing invalidity defenses in trademark and patent 

contexts).

To prevail on its trade-secret claims under the federal 

Defend Trade Secrets Act, codified at 18 U.S.C. § 1836 et 

seq., and under California Civil Code § 3426 et seq., Teradata must show the existence and misappropriation of an 

asserted trade secret.8 See Olaplex, Inc. v. L’Oreal USA, 

Inc., 855 F. App’x 701, 705 n.2 (Fed. Cir. 2021) (citations 

omitted). A trade secret is information that “(A) the owner 

thereof has taken reasonable measures to keep . . . secret; 

and (B) . . . derives independent economic value, actual or 

potential, from not being generally known to, and not being 

readily ascertainable through proper means by, another 

person who can obtain economic value from the disclosure 

or use of the information.” 18 U.S.C. § 1839(3); see Cal. Civ. 

Code § 3426.1(d) (similar). Misappropriation includes, 

subject to certain specific limitations, “disclosure or use of 

a trade secret of another without express or implied consent.” 18 U.S.C. § 1839(5)(B); Cal. Civ. Code § 3426.1(b)(2) 

(same). As presented to us, Teradata’s claim depends on 

the scope of the marking requirements and license 

8 “California has adopted without significant 

change the Uniform Trade Secrets Act (UTSA).” DVD Copy 

Control Association, Inc. v. Bunner, 75 P.3d 1, 9 (Cal. Aug. 

25, 2003), as modified (Cal. Oct. 15, 2003) (citing Cadence 

Design Systems, Inc. v. Avant! Corp., 57 P.3d 647 (Cal. 

2002)). Neither SAP nor Teradata suggests a difference 

material to this case between the federal and state standards.

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TERADATA CORPORATION v. SAP SE 25

provisions of the Teradata-SAP agreements, on one hand, 

and the composition of SAP’s products, on the other.

As this description indicates, the first two of the three 

“tests” we have used for the compulsory-counterclaim inquiry, see Rearden, 841 F.3d at 1332; Nasalok, 522 F.3d at 

1325, point against Teradata’s suggested affirmative answer to that inquiry. The “legal and factual issues raised 

by the claim” are not “largely the same”; and “substantially 

the same evidence” does not “support[] or refute[] both the 

claim and the counterclaim.” Indeed, the district court, in 

its preliminary severance ruling, J.A. 9523, did not conclude otherwise. There is undisputedly some overlap in evidence; after all, understanding the different accused 

products and the asserted trade secrets and asserted patent claims will call for explanations of various databasestructure-and-access technologies. But such same-field 

overlap does not make the issues “largely the same” or 

make the evidence supporting or refuting the particular 

claims and counterclaims “substantially the same.” And 

here, the elements of trade-secret misappropriation and infringement of specific patent claims containing multiple 

limitations, applied to the different parties’ products, mean 

that proof of the claim and proof of the counterclaim would 

not rely on substantially the same evidence. 

The third “test” is whether “there is a logical relationship between the claim and the counterclaim.” Rearden, 

841 F.3d at 1332; Nasalok, 522 F.3d at 1325. That test 

should be of a piece with (though not be entirely redundant 

of) the first two tests, reflecting the significant assert-orlose consequence of a “compulsory” characterization and 

the results reached in various judicial decisions (some of 

them precedential for us, others not). See Nasalok, 522 

F.3d at 1326 (“In each of the three tests for what constitutes the same ‘transaction or occurrence,’ the question is 

the extent of factual overlap between what the plaintiff 

must establish to prove its claim and what the defendant 

must establish to prove its counterclaim.” (first emphasis 

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26 TERADATA CORPORATION v. SAP SE

added)); cf. ABS Global, Inc. v. Inguran, LLC, 914 F.3d 

1054, 1063–64 (7th Cir. 2019) (concluding that particular 

antitrust and patent claims were “quite different,” stating 

that “patent counterclaims are frequently permissive in 

antitrust cases,” and noting risk of too broad a concept of 

“logical relationship” where patents are concerned). We do 

not think that the test, which is to a large extent circumstance-specific, is met here.

An important consideration is that different parties’ 

different products are the direct subjects of Teradata’s 

claims (addressing SAP products), on one hand, and SAP’s 

counterclaims (addressing Teradata products), on the 

other. This fact makes the present case materially different from Holmes Group (the case whose result Congress 

was abrogating by amending § 1295(a) in 2011), the Supreme Court case to which the “logical relationship” formulation traces, and most, if not all, of the cases on which 

Teradata relies for its position on appeal. Without suggesting that this difference is always critical in a compulsorycounterclaim analysis, we conclude that it is important in 

the circumstances of this case.

In Holmes Group, the declaratory-judgment plaintiff’s 

own product was the subject of the plaintiff’s claim (seeking 

a declaration that it did not infringe the defendant’s trade 

dress rights) and also of the defendant’s counterclaim (asserting that the plaintiff’s product infringed defendant’s 

patent)—which the Supreme Court noted was a compulsory counterclaim. 535 U.S. at 828. In Moore v. New York 

Cotton Exchange, 270 U.S. 593 (1926), which used the “logical relationship” language, id. at 610, the defendant’s price 

quotations (regarding cotton contracts) were the subject of 

the plaintiff’s antitrust claim (challenging the defendant’s 

refusal to provide the plaintiff the quotations) and also of 

the defendant’s counterclaim asserting that the plaintiff 

and his company were “purloining” the defendant’s price 

information. Id. at 609–10. In Rearden, the plaintiff 

sought a declaratory judgment that it owned certain 

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TERADATA CORPORATION v. SAP SE 27

patents, and the defendants counterclaimed for a declaratory judgment that it owned the same patents and also 

sued for infringement, proof of which itself required establishment of defendants’ ownership. 841 F.3d at 1330–31, 

1332. And in Mopex, Inc. v. American Stock Exchange, 

LLC, No. 02 CIV. 1656 (SAS), 2002 WL 342522 (S.D.N.Y. 

Mar. 5, 2002), the American Stock Exchange sought a declaratory judgment that certain of its own products (exchange-traded funds) did not infringe Mopex’s patents, and 

the court held that Mopex’s charge of trade-secret misappropriation involving the American Stock Exchange products was a compulsory counterclaim, noting that Mopex 

essentially conceded that the opposing claims involved essentially same subject matter and were logically related for 

Rule 13(a) purposes. Id. at *2, *6. And though not relied 

on by Teradata, in Vermont, we determined that a counterclaim was “compulsory” when a patent owner’s communications to potential infringers were the subject of both the 

plaintiff’s state-law claims (alleging that the communications were deceptive) and the defendant’s counterclaim 

seeking a judgment that the state law applied to those 

same communications was preempted by federal patent 

law. 803 F.3d at 644–45. The present case does not involve 

shared direct subject matter of claim and counterclaim of 

the sorts involved in the foregoing cases.9

9 Teradata has not cited authority for resting a compulsory-counterclaim conclusion on the fact that competing 

products are the subject of claims and counterclaims. See

Mattel, Inc. v. MGA Entertainment, Inc., 705 F.3d 1108 

(9th Cir. 2013) (holding trade-secret counterclaim not compulsory where plaintiff’s claim was also a trade-secret 

claim and the accused products—Barbie and Bratz dolls—

were competing products).

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28 TERADATA CORPORATION v. SAP SE

Other decisions relied on by Teradata are likewise materially different from the present case and themselves underscore the significance of the same product or property 

being at issue. In Anza, we addressed the provision of Rule 

15 that governs relation back of amended complaints for 

statute-of-limitations purposes (an issue whose analysis 

was informed by Rule 13 standards). We held that the patents newly asserted in an amended complaint met the 

Rule 15 test insofar as the very same products were accused—where the new and original patents involved sufficiently similar technology that proof of infringement would 

not be substantially different—while requiring a remand 

for consideration of the allegation against products different from those initially accused. 934 F.3d at 1370–71. In 

In re EMC Corp., 677 F.3d 1351 (Fed. Cir. 2012), we addressed joinder of patent claims against different defendants under Rule 20 (an issue whose analysis was informed 

by Rule 13 standards). We emphasized the importance of 

whether “substantially the same” evidence was involved in 

the claims against the different defendants and remanded 

for application of the clarified standard to the infringement 

claims accusing different defendants’ products (which may 

well have been qualitatively similar). Id. at 1357–59.

A nonprecedential decision of this court, not relied on 

by Teradata, illustrates that even shared specific subject 

matter of a claim and counterclaim, though significant, is 

not always sufficient to make the latter compulsory. In 

University of Florida Research Foundation, Inc. v. Medtronic PLC, No. 2016-2422, 2017 WL 6210801 (Fed. Cir. 

Jan. 27, 2017), the plaintiff Foundation sought an accounting from Medtronic under a license to the Foundation’s patents, and Medtronic counterclaimed for a declaration of 

noninfringement (by various Medtronic products) and invalidity (of the patents). We held that the counterclaim

was not compulsory because all the Foundation had sought 

in its claim (so far) was an audit that would produce Medtronic’s product records, even though the plaintiff’s audit 

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TERADATA CORPORATION v. SAP SE 29

claim was likely a prelude to a demand from the Foundation for payment under the license, whose coverage was 

tied to infringement of the patents by Medtronic products. 

Id. at *2. 

Teradata relies on Leap Wireless International, Inc. v. 

MetroPCS Communications, Inc., No. 2:06-CV-240, 2007 

WL 541428 (E.D. Tex. Feb. 15, 2007), to support its contention. The plaintiff Leap Wireless sued the defendant for 

patent infringement, and the defendant filed a counterclaim/cross-claim seeking a declaratory judgment of invalidity of the patent because it was allegedly obtained based 

on trade-secret misappropriation, with this charge naming 

Leap Wireless and also naming new (cross-claim) defendants. As to the newly added (cross-claim) defendants, the 

district court addressed an issue of “ancillary venue” and 

concluded that the charge was a compulsory counterclaim 

because it was logically related to Leap Wireless’s infringement claim, noting that the patent and the alleged trade 

secret involved “the same underlying design concept.” Id.

at *3–5. 

Leap Wireless is not binding on this court, involved a 

venue issue raised by a cross-claim, and pre-dated this 

court’s decision in Nasalok, which explained that a counterclaim of patent invalidity is not necessarily compulsory 

in a suit brought to allege infringement, 522 F.3d at 1326–

27. Leap Wireless does, however, raise the possibility that 

a situation in which a defendant’s ability to, e.g., make, sell, 

or use its own product free of the plaintiff’s asserted right 

might be viewed as the shared subject of both the plaintiff’s 

claim and the defendant’s own counterclaim to invalidate 

the plaintiff’s asserted right. But we need not decide here 

if that is a proper characterization or, if so, when such an 

invalidity counterclaim would be compulsory.

SAP’s counterclaim is a claim of infringement by Teradata’s products and does not assert invalidity of Teradata’s asserted trade-secret right. As Nasalok makes 

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30 TERADATA CORPORATION v. SAP SE

clear, we assess the compulsory or noncompulsory nature 

of the counterclaim based on what the counterclaim asserts, which is, simply, infringement by Teradata’s products, not invalidity of the Teradata trade secrets. In 

particular, SAP did not counterclaim that the asserted 

trade secrets are invalid because of disclosures in the patents at issue that (either publicly or in SAP’s hands) predate the asserted trade-secret misappropriation. See Atlantic Research Marketing Systems, Inc. v. Troy, 659 F.3d 

1345, 1357 (Fed. Cir. 2011) (“A trade secret is secret. A 

patent is not. That which is disclosed in a patent cannot 

be a trade secret.”). Nor does the record establish that the 

alleged infringement of the particular patent claims at issue entails that the “batched merge method” trade secrets, 

with their sequences of steps identified by Teradata in its 

itemization of the trade secrets, cannot meet the standards 

for being trade secrets. More specifically, it is not established here that the patent claims, understood in light of 

the specifications, disclose the asserted trade secrets’ particular sequences of method steps as part of the claimed 

inventions.10

The district court did make a contrary determination 

when it made its preliminary decision not to sever the patent counterclaims now at issue from Teradata’s affirmative claims. The district court focused on severance under 

10 Of course, the Atlantic Research principle is available for SAP to invoke, in defending against the trade-secret claim, based on temporally relevant disclosures in a 

published patent (or in other publications) even if the asserted trade secret is not disclosed in such a patent’s 

claims. We also note that, even if a trade-secret-invalidity 

counterclaim were compulsory, it would not itself be the 

kind of compulsory counterclaim (involving patent or 

plant-variety-protection law) required for a case to come 

within § 1295(a)(1) based on a counterclaim. 

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TERADATA CORPORATION v. SAP SE 31

Rule 21 (perhaps also severance for trial under Rule 42), 

not whether the patent counterclaims were compulsory. In 

any event, as indicated by the court’s reference to Teradata’s antitrust claims, which Teradata does not invoke 

for its compulsory-counterclaim argument here, the district court’s decision took too general a view of what passes 

the same-transaction-or-occurrence test (at least for Rule 

13 purposes, let alone § 1295 purposes). Insofar as the 

court went beyond stating its conclusion, it referred merely 

to “common questions of fact, . . . such as what the technological process entails and who invented the technology 

first” and “[t]he interests of judicial economy and the overlap between witnesses and documentary evidence.” J.A. 

9523. Those considerations, even the unelaborated reference to “who invented the technology first,” are too general

and are insufficiently focused on just what the claims and 

counterclaims assert. 

The parties’ arguments in the district court (not focused on the compulsory character of the counterclaims) do 

not show that the patent counterclaims at issue were compulsory. We do not read SAP’s assertions supporting allowance of the filing of the counterclaims or opposing 

severance as doing more than responding to Teradata’s 

pre-narrowing collection of trade secrets and, particularly 

as to the narrowed group of trade secrets, showing an overlap in the sense that a factfinder would have to develop an 

understanding of technological concepts that amount to 

background knowledge in the database field in order to 

evaluate both the trade-secret claims and the patent-infringement counterclaims. See, e.g., N.D. Cal. Dkt. No. 106 

at 5; N.D. Cal. Dkt. No. 175–4 at 5–6, 15; N.D. Cal. Dkt. 

No. 398 at 6–7; J.A. 8881–82. That is not enough under the 

case law. Teradata, for its part, did not assert the kind of 

connection between the patent counterclaims and its tradesecret claims that supports its present contention that the 

patent counterclaims are compulsory. To the contrary, Teradata asserted that SAP could bring its patentCase: 22-1286 Document: 91 Page: 31 Filed: 08/01/2023
32 TERADATA CORPORATION v. SAP SE

infringement allegations in a separate action, N.D. Cal. 

Dkt. No. 109 at 9, which would not be true if those allegations qualified as a compulsory counterclaim.

For these reasons, we conclude that SAP’s counterclaims do not arise out of the same transaction or occurrence as the subject matter of Teradata’s narrowed 

technical trade secret claims so as to have compelled SAP 

to bring its patent counterclaims in this action or, therefore, to support our jurisdiction.

C 

Having concluded that SAP’s patent-infringement 

claims are not compulsory counterclaims in this case, we 

hold that we lack jurisdiction over this appeal, which instead belongs in the Ninth Circuit. Because it is plainly in 

the interest of justice to transfer the appeal to the Ninth 

Circuit, we do so under 28 U.S.C. § 1631. The appeal, 

based on the Rule 54(b) judgment, involves only (a subset 

of) Teradata’s claims, not SAP’s patent-law counterclaims. 

We add that SAP’s claims of patent infringement (currently counterclaims), if and when adjudicated in an appealable judgment, will not necessarily end up part of an 

eventual Ninth Circuit appeal. If SAP’s patent-law counterclaims are now severed under Rule 21—the district 

court to date having ruled only in a preliminary manner on 

that issue—the effect would be to place them in a separate 

case. When severance occurs under Rule 21, the initial 

case (no longer containing the severed matter) and the new 

case (containing the severed matter) are separately evaluated for appeal purposes, see, e.g., Herklotz v. Parkinson, 

848 F.3d 894, 898 (9th Cir. 2017); Rice v. Sunrise Express, 

Inc., 209 F.3d 1008, 1013–16 (7th Cir. 2000); Wright & Miller § 1689, as they are for venue-transfer purposes, see In 

re Nintendo of America, Inc., 756 F.3d 1363, 1364–65 (Fed. 

Cir. 2014). Those consequences are independent of the district court’s ability to hear or try separate-case claims together, or even consolidate the cases, under Rule 42(a). See 

Case: 22-1286 Document: 91 Page: 32 Filed: 08/01/2023
TERADATA CORPORATION v. SAP SE 33

Wright & Miller § 1689 (noting that Rule 21 severance does 

not bar consolidation for trial, under Rule 42(a), of what 

have become separate cases); Hall v. Hall, 138 S. Ct. 1118 

(2018) (holding that Rule 42 consolidation does not merge 

cases into a single case for appeal purposes). 

We have no occasion to decide the issue here, but for 

the reasons just indicated, if the Rule 21 severance course 

is followed, an eventual appealable judgment on the patent-infringement allegations made by SAP might well be 

reviewed in this court while an appealable judgment on Teradata’s non-patent claims would be reviewed in the Ninth 

Circuit. That end result would comport with Congress’s 

evident general appeal policy regarding patent-law claims.

III

For the foregoing reasons, we order this appeal transferred to the U.S. Court of Appeals for the Ninth Circuit 

pursuant to 28 U.S.C. § 1631. 

No costs. 

TRANSFERRED

Case: 22-1286 Document: 91 Page: 33 Filed: 08/01/2023