EXHIBIT D 

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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

VALTRUS INNOVATIONS LTD.,

 Plaintiff,

 vs. 

SAP AMERICA, INC. AND SAP SE, 

 Defendants. 

Civil Action No. 2:24-cv-21

JURY TRIAL DEMANDED

 

DEFENDANTS’ INITIAL DISCLOSURES

Pursuant to Federal Rule of Civil Procedure 26(a)(1) and the Discovery Order (Dkt. No. 

33), Defendants SAP America, Inc. and SAP SE (collectively, “SAP”) makes the following initial 

disclosures based on the information reasonably available to SAP at this time.

SAP is continuing its investigation into relevant documents and witnesses and will, as 

necessary, disclose further documents and witnesses in a timely manner. SAP reserves the right 

to supplement, revise, correct, clarify, or otherwise amend the information disclosed herein, 

consistent with the Federal Rules of Civil Procedure and any applicable orders of the court, 

including after SAP receives and reviews any applicable discovery or other information from third 

parties, other defendants, or from Plaintiff Valtrus Innovations Ltd. (“Valtrus”).

By making these disclosures, SAP does not intend to waive any applicable privilege or 

work product protection and expressly reserves its right to object to the production of any of the 

information identified herein on those grounds. SAP also reserves its right to object to the 

admissibility of any of the information disclosed below. Subject to these reservations, SAP

provides the following information: 

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(a) The correct names of the parties to the lawsuit.

RESPONSE:

The correct name for the named defendants are SAP America, Inc. and SAP SE. On 

information and belief, the correct name for Plaintiff is Valtrus Innovations Ltd.

(b) The name, address, and telephone number of any potential parties.

RESPONSE:

SAP is continuing its investigation into this issue and reserves the right to supplement this 

response and identify additional parties to the lawsuit. At this time, however, SAP is not aware of 

any potential parties to this lawsuit.

(c) The legal theories and, in general, the factual bases of the disclosing party’s claims or 

defenses (the disclosing party need not marshal all evidence that may be offered at 

trial).

RESPONSE:

SAP denies the allegations against it contained in Valtrus’s Complaint for Patent 

Infringement (Dkt. No. 1). SAP further contends that venue is inconvenient in this forum and that 

the case should be transferred to the Sherman Division of the Eastern District of Texas (Dkt. No. 

22). SAP further contends that Valtrus is not entitled to recover any damages or other relief from 

SAP for the reasons set forth below (which are subject to and presented without waiver of any 

defenses and/or counterclaims that SAP may present in any amended answer in this action). 

Non-infringement

 SAP does not infringe and has not infringed, under any theory of infringement 

(including directly (whether individually or jointly) or indirectly (whether contributorily or 

by inducement)), any valid, enforceable claim of the alleged Patents in Suit. 

Invalidity

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Each asserted claim of the Patents in Suit is invalid for failure to comply with one 

or more of the requirements of United States Code title 35—including, without limitation, 

35 U.S.C. §§ 101, 102, 103, and/or 112—and the rules, regulations, and laws pertaining 

thereto. 

Limitations On Damages Pursuant to 35 U.S.C. § 286 

Valtrus claims for damages are limited in time by 35 U.S.C. § 286. To the extent 

that Valtrus seeks damages, or seeks to assert any right more than six years prior to filing 

suit, Valtrus’s claims for damages based on the patents-in-suit would be barred by the 

applicable statute of limitations and other limitations.

Limitations On Damages Pursuant to 35 U.S.C. § 287 

To the extent that Valtrus and alleged predecessors in interest to the Patents in Suit, 

and their respective licensees, failed to properly mark any of their relevant products as 

required by 35 U.S.C. § 287 or otherwise give proper notice that SAP’s actions allegedly 

infringed the Patents in Suit, SAP is not liable to Valtrus for the acts alleged to have been 

performed before it received actual notice that it was allegedly infringing the Patents in 

Suit. Accordingly, upon information and belief, Valtrus’s claims for recovery of alleged 

damages may be limited by 35 U.S.C. § 287. In addition, upon information and belief, 

Valtrus’s claims for recovery of alleged damages are limited by 35 U.S.C. § 286, and 

Valtrus is barred from recovering costs in connection with this action under 35 U.S.C. § 

28. 

Lack of Sufficient Knowledge

To the extent that Valtrus asserts that SAP indirectly infringes, either by 

contributory infringement or inducement of infringement, SAP is not liable to Valtrus for 

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the acts alleged to have been performed before SAP knew that its actions would allegedly 

cause indirect infringement. 

No Enhanced Damages Pursuant to 35 U.S.C. § 285 

There is no basis in law or in fact for Valtrus’s claim for enhanced damages and 

accordingly, any award of fees, costs, or enhanced damages should be denied. 

Exceptional Case Finding Pursuant to 35 U.S.C. § 285 

Valtrus’s infringement allegations against SAP are objectively baseless. The 

allegedly infringing products cannot possibly infringe the asserted claims of the patentsin-suit. Accordingly, SAP is entitled to its attorneys’ fees and costs in this matter.

Limited Claim Scope

The claims of the Patents in Suit are not entitled to a scope sufficient to encompass 

any system employed or process practiced by SAP. 

No Injunctive Relief

Valtrus is not entitled to injunctive relief because any alleged injury to Valtrus is 

not immediate or irreparable and because Valtrus has an adequate remedy—if any—at law

Prosecution History Estoppel and/or Disclaimer 

Valtrus’s claims are barred in whole or in part by prosecution-history estoppel 

and/or prosecution-history disclaimer. 

 License, Release and/or Patent Exhaustion 

On information and belief, Valtrus’s claims are barred, at least in part, by the 

existence of licenses (whether express or implied) or releases between Valtrus and potential 

customers of SAP. 

Equitable Defenses

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(e) Any indemnity and insuring agreements under which any person or entity may be 

liable to satisfy part or all of a judgment entered in this action or to indemnify or 

reimburse for payments made to satisfy the judgment.

RESPONSE:

At this time, SAP is not currently aware of the existence of any insurance or indemnity 

agreements under which any person or entity carrying may be liable to satisfy part or all of a 

judgment entered in this action against SAP or to indemnify or reimburse for payments made to 

satisfy the judgment against SAP. 

SAP further reserves the right to amend or supplement this response in the future. 

(f) Any settlement agreements relevant to the subject matter of this action.

RESPONSE:

At this time, SAP is not currently aware of any settlement agreements relevant to this case 

other than those disclosed by Valtrus. 

(g) Any statement of any party to the litigation. 

RESPONSE:

Beyond those statements already made part of the record in this case, SAP, at this time, is 

not currently aware of any statement by any party to the litigation. SAP is continuing its 

investigation into this issue and reserves the right to supplement this response in the future. 

DATED: April 15, 2024 Respectfully submitted,

/s/ Michael A. Bittner 

Thomas M. Melsheimer

State Bar No. 13922550 

tmelsheimer@winston.com

M. Brett Johnson 

State Bar No. 00790975 

mbjohnson@winston.com 

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Michael A. Bittner

State Bar No. 24064905 

mbittner@winston.com 

Patrick Clark

Texas Bar No. 24115706 

PClark@winston.com 

WINSTON & STRAWN LLP

2121 N. Pearl St., 9th Floor 

Dallas, TX 75201 

Telephone: (214) 453-6500 

ATTORNEYS FOR 

SAP AMERICA, INC. and SAP SE

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CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing document was filed electronically in 

compliance with Local Rule CV-5(a). Therefore, this document was served on all counsel who 

are deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to 

Federal Rule of Civil Procedure 5(d) and Local Rule CV-5(d) and (e), all other counsel of record 

not deemed to have consented to electronic service were served with a true and correct copy of the 

foregoing by email. 

 /s/ Michael A. Bittner 

Michael A. Bittner

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