FILED UNDER SEAL

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

Valtrus Innovations Ltd.,

Plaintiff, 

§

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§

v.

SAP America, Inc. and SAP, SE, 

Defendants.

CIVIL ACTION NO. 

2:24-CV-00021-JRG

JURY TRIAL DEMANDED

PLAINTIFF’S SUR-REPLY IN OPPOSITION TO DEFENDANTS’ REPLY BRIEF IN 

SUPPORT OF THEIR MOTION FOR INTRA-DISTRICT TRANSFER 

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TABLE OF CONTENTS

Page

A. The Court Should Strike or Discredit Mr. Pandya’s New Declaration on Reply .... 1

B. The Relative Ease of Access to Sources of Proof is Neutral (Private Factor 1) ........ 2

C. Availability of Compulsory Process Weighs Against Transfer (Private Factor 2) ... 2

D. Trial Witness Convenience Slightly Weighs Against Transfer (Private Factor 3).... 3

E. Practical Problems Strongly Weigh Against Transfer (Private Factor 4) ................. 4

F. The Court’s Localized Interest Is Neutral (Public Factor 1) ..................................... 5

G. Court Congestion Weighs Against Transfer (Public Factor 2) .................................. 5

H. Conflict of Law Weighs Against Transfer (Public Factor 4) ...................................... 5

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TABLE OF AUTHORITIES

 Page(s) 

Federal Cases

In re Apple Inc., 

979 F.3d 1332 (Fed. Cir. 2020)..................................................................................................4

Athalonz LLC v. Under Armour, Inc., 

2023 WL 8809293 (E.D. Tex. Dec. 20, 2023) ...........................................................................4

In re Chamber of Com. of United States of Am., 

2024 WL 3042100 (5th Cir. June 18, 2024) ..............................................................................3

Chrimar Sys., Inc. v. Dell, Inc., 

2016 WL 9275408 (E.D. Tex. Feb. 29, 2016) ...........................................................................1

In re Clarke, 

94 F.4th 502 (5th Cir. 2024) ..........................................................................................1, 2, 4, 5

EcoFactor, Inc. v. Google LLC, 

2022 WL 17169178 (W.D. Tex. Nov. 1, 2022) .........................................................................5

In re EMC Corp., 

501 F. App’x 973 (Fed. Cir. 2013) ............................................................................................5

In re Fort Worth Chamber of Com., 

100 F.4th 528 (5th Cir. 2024) ................................................................................................1, 4

Freedom Patents LLC v. DISH Network Corp., 

2024 WL 1147828 (E.D. Tex. Mar. 15, 2024) ..........................................................................2

In re Google LLC, 

2021 WL 5292267 (Fed. Cir. Nov. 15, 2021) ............................................................................2

In re Planned Parenthood, 

52 F.4th 625 (5th Cir. 2022) ..................................................................................................2, 3

In re TikTok, 

85 F.4th 352 (5th Cir. 2023) ..................................................................................................1, 5

U.S. Ethernet Innovations, LLC v. Acer, Inc., 

2010 WL 2771842 (E.D. Tex. July 13, 2010) ...........................................................................6

VisionX Techs. LLC v. Sony Grp. Corp., 

2023 WL 3572898 (E.D. Tex. May 19, 2023) ...........................................................................4

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Rules

Fed. R. Civ. P. 45(c)(1)(A) ..............................................................................................................3

Fed. R. Civ. P. 45(c)(1)(B) ..............................................................................................................3

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SAP still does not address the full weight of recent Fifth Circuit case law, including In re 

Clarke, 94 F.4th 502 (5th Cir. 2024) and In re Fort Worth, 100 F.4th 528 (5th Cir. 2024), which 

clarified the applicable transfer factors and reaffirmed a movant’s high burden. SAP now analyzes 

In re TikTok but misinterprets it, ignoring that other courts share Valtrus’s interpretation. 

Nevertheless, it is clear that SAP’s “convenience” benefits cannot bear the weight that SAP places 

on them: (1) Messrs. Tumu and Padakal are neither relevant nor trial witnesses; (2) SAP’s 

assessment of Valtrus’s convenience is contrary to Fifth Circuit guidance; (3) SAP’s electronic 

evidence is no less accessible from Marshall; (4) no unwilling witnesses are closer to Sherman 

than Marshall; and (5) DFW’s proximity to Sherman has limited legal relevance since the bulk of

SAP’s identified employees require significant international travel no matter the venue. Moreover, 

three factors that SAP labeled “neutral” actually weigh against transfer, including “practical 

problems,” “court congestion,” and “conflict of law.” SAP’s motion should be denied. 

A. The Court Should Strike or Discredit Mr. Pandya’s New Declaration on Reply

SAP’s new declaration from Mr. Pandya states that 

 Pandya Decl. (Dkt. 45-1). The declaration is improper. First, it is new 

evidence on reply that was not disclosed during discovery. See Chrimar Sys., Inc. v. Dell, Inc., 

2016 WL 9275408, at *1 (E.D. Tex. Feb. 29, 2016). Indeed, at his deposition (as SAP’s sole 

30(b)(6) witness), Mr. Pandya didn’t know (and appeared to have not investigated) 

 See Opp. at 4.1

 Second, the declaration lacks credibility

because SAP has not submitted any actual evidence to support its 

1 Further, this follows a pattern from Mr. Pandya. For example, in his original declaration, Mr. Pandya 

proffered 18 individuals as likely witnesses but couldn’t explain the relevance of any of them. Opp. at 4-5. Nor could 

he fully explain why many of these witnesses went missing from SAP’s initial disclosures, suggesting three of them

were not relevant (but providing no explanation for the other missing witness). Id. at 5. Nor did SAP inform the Court 

about SAP’s changed position, 

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it is not an unwilling third-party, (2) SAP has not “alleged or shown that [HPE] would be unwilling 

to testify,” (see Planned Parenthood, 52 F.4th at 630-631); and (3) PPS is not an unwilling witness

(see Kumar Decl. at ¶9 (Dkt. 41-2)). As for the second clause, the Marshall Division has subpoena 

power over HPE and AMD because they regularly do business in Texas and can easily attend trial 

given their offices in Houston. See Fed. R. Civ. P. 45(c)(1)(B); Opp. at 8-9.3 

D. Trial Witness Convenience Slightly Weighs Against Transfer (Private Factor 3) 

SAP now acknowledges that this factor concerns only likely trial witnesses, but takes no 

position as to its own 18 identified employees. Reply at 3. Valtrus has confirmed that it won’t be 

calling Messrs. Tumu or Padakal at trial, making their location irrelevant. And all but two of SAP’s 

remaining witnesses reside abroad and require substantial international travel to attend trial in 

either division. SAP claims it intends to call Ms. Kumar, but doesn’t dispute recent Fifth Circuit

precedent holding that it cannot use the location of Valtrus or PPS personnel (as Valtrus’s advisors)

to defeat Valtrus’s choice of venue. See Opp. at 12 (citing In re Fort Worth, 2024 WL 1976963

(5th Cir. May 3, 2024); see also In re Chamber of Commerce, 2024 WL 3042100, at *6 (5th Cir. 

June 18, 2024) (“Because § 1404(a) is concerned with the convenience of parties, not attorneys, 

we do not consider the convenience of counsel.” (emphasis in original)). Nor does SAP dispute 

that the same precedent controls with respect to Ms. Quinlan. See Opp. at 11-12. 

Importantly, SAP does not dispute the relevance of its seven employees in Atlanta and 

Houston, which Valtrus identified as likely witnesses based on deposition testimony, the accused 

products, and public evidence. Instead, SAP purports that the number of direct flights to DFW and 

3 SAP now argues for the relevance of deposition subpoenas, but new arguments on reply are improper. And 

though SAP focuses only on the court’s 100-mile subpoena power under Rule 45(c)(1)(A), it doesn’t explain why 

Rule 45(c)(1)(B) lacks relevance. Either way, SAP’s failure to identify any unwilling witnesses dooms its argument.

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minor differences in flight costs from Atlanta and Houston should somehow control.4 Reply at 3. 

But none of these issues (even if they accurately represented flight options and prices at the time 

of trial) can fairly be considered “significant” convenience gains or cost savings to warrant transfer 

under In re Clarke (a key Fifth Circuit case SAP ignores). Opp. at 3. And SAP assumes (without 

evidence) that its Houston employees would prefer flying to DFW and driving to Sherman than

just driving ~3.5 hours directly to Marshall. As for its Atlanta employees, SAP assumes (also

without evidence) that the Atlanta flights to Shreveport are somehow too limited. 

SAP also charges Valtrus with quoting Athalonz out of context, but Valtrus also cites Fifth 

Circuit precedent (In re Fort Worth), Federal Circuit precedent (In re Apple), and an EDTX case

(VisionX Techs. v. Sony Grp.) to support its position. Opp. at 11. In any event, Valtrus properly 

cited Athalonz for the proposition that courts shouldn’t overweigh “travel inconvenience when the 

witnesses will be traveling a significant distance.” Id. 

E. Practical Problems Strongly Weigh Against Transfer (Private Factor 4) 

SAP now acknowledges that the overlap of the ’264 patent with Valtrus’s pending cases 

against T-Mobile and Verizon is a relevant consideration. Though SAP tries to minimize the 

significance of this issue, its argument (at most) would support moderately weighing this factor 

against transfer, not weighing it as neutral. In any event, SAP still ignores additional reasons that 

denying transfer promotes judicial economy, including avoiding (1) the unnecessary duplication 

of this Court’s efforts by a new Judge and (2) the risk of inconsistent claim construction rulings. 

Lastly, SAP suggests that Valtrus could consolidate its cases as a Multi-District Litigation. But it 

4 SAP doesn’t provide apples-to-apples price comparisons, ignoring that the “affordable” flights under 

$100 additionally charge for even carry-on bags. Accounting for this, the price difference between ATL to DFW vs. 

ATL to SHV is ~$100 ($157 to Dallas but $244 to Shreveport). Compare, Ex. E to Dkt. 41 with Ex. AF to Dkt. 45.

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makes little sense to transfer the case only to then consolidate it as an MDL in Marshall.5 

F. The Court’s Localized Interest Is Neutral (Public Factor 1) 

Under TikTok, this factor encompasses events that “gave rise to a suit,” so PPS’s attempts 

to resolve the dispute through pre-litigation licensing is irrelevant. Opp. at 13. Under In re Clarke, 

residency and presence in a venue does not create a local interest, so the presence of Mr. Tumu, 

Mr. Padakal, and Ms. Kumar near Sherman is irrelevant. Id. SAP argues that its “point of sale 

occurs via SAP’s Plano office,” but the argument is neither supported nor in SAP’s opening brief. 

G. Court Congestion Weighs Against Transfer (Public Factor 2) 

SAP states that “the progress of the case is relevant only when a party inexcusably delays 

filing its § 1404 motion.” Id. But TikTok (citing Planned Parenthood) embraced no such qualifier. 

See 85 F.4th at 363; see also EcoFactor, Inc. v. Google, 2022 WL 17169178, at *12 (W.D. Tex. 

Nov. 1, 2022) (“The Fifth Circuit has concluded that this factor weighs against transfer where the 

case ‘appears to be timely proceeding to trial.’” (citation omitted)). It makes little sense to disrupt 

a case by transferring it only to have it continue on as before, so this factor weighs against transfer.

H. Conflict of Law Weighs Against Transfer (Public Factor 4) 

SAP quibbles with the overlap of the “practical problems” and “conflict of law” factors but 

doesn’t dispute that the overlapping ’264 patent creates a risk of conflicting rulings with respect 

to patent ownership, marking, claim construction, and damages issues. See Opp. at 15. The fact 

is that multiple courts addressing similar issues both raises practical problems regarding judicial 

economy and risks conflicting rulings. As for U.S. Ethernet, Valtrus appropriately cited a footnote 

to highlight the importance of claim construction uniformity. This factor weighs against transfer.

5 In a footnote SAP cites In re EMC Corp., 501 F. App’x 973, 976 (Fed. Cir. 2013) for the proposition that 

transfer factors are determined based on “the situation which existed when suit was instituted,” but neglects to mention 

that the case also clarified that “a district court’s experience with a patent in prior litigation and the co-pendency of 

cases involving the same patent are permissible considerations in ruling on a motion to transfer venue.” 

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Dated: June 20, 2024 

Respectfully submitted, 

/s/ Matthew G. Berkowitz by permission Claire 

Abernathy Henry

Matthew G. Berkowitz – LEAD ATTORNEY

Patrick R. Colsher 

Navid C. Bayar 

Aaron L. Morris 

Reichman Jorgensen Lehman & Feldberg LLP 

100 Marine Parkway, Suite 300 

Redwood Shores, CA 94065 

Tel: (650) 623-1401 

mberkowitz@reichmanjorgensen.com 

pcolsher@reichmanjorgensen.com 

nbayar@reichmanjorgensen.com 

amorris@reichmanjorgensen.com 

Khue V. Hoang 

Reichman Jorgensen Lehman & Feldberg LLP 

400 Madison Avenue, Suite 14D 

New York, NY 10017 

Tel: (212) 381-1965 

khoang@reichmanjorgensen.com 

Of Counsel: 

Andrea L. Fair

Texas Bar No. 24078488 

Claire Abernathy Henry

Texas State Bar No. 24053063 

WARD, SMITH & HILL, PLLC

1507 Bill Owens Pkwy. 

Longview, TX 75604

Tel: (903) 757-6400 

andrea@wsfirm.com 

claire@wsfirm.com

Attorneys for Plaintiff

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CERTIFICATE OF SERVICE

The undersigned hereby certifies that on June 20, 2024, all counsel of record who are 

deemed to have consented to electronic service are being with a copy of this document via the 

Court’s CM/ECF system per Local Rule CV-5(a)(3). 

/s/ Claire Abernathy Henry

 Claire Abernathy Henry

CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL

The undersigned hereby certifies that pursuant to the protective order in the abovecaptioned case, this motion contains confidential information. Accordingly, this document is to be 

filed under seal. 

/s/ Claire Abernathy Henry

 Claire Abernathy Henry

 

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