Teradata Corporation v. Sap Se

Case: 22-1286 Document: 91 Page: 1 Filed: 08/01/2023

NOTE: This disposition is nonprecedential.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, Wash-
ington, DC, argued for plaintiffs-appellants. Also repre-
sented 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, Whar-
ton & Garrison LLP, Washington, DC, argued for defend-
ants-appellees. Also represented by KENNETH A. GALLO;
Case: 22-1286 Document: 91 Page: 2 Filed: 08/01/2023

2 TERADATA CORPORATION v. SAP SE

JOSEPH BEAUCHAMP, JOSH LEE FUCHS, Jones Day, Hou-
ston, 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, ar-
gued 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, Tim-
othy Bresnahan, Sylvain Chassang, Allan Collard-Wexler,
Jesse David, Michael Dinerstein, Martin Gaynor, Matthew
Grennan, Joseph Harrington, Jakub Kastl, George Ko-
renko, Fernando Luco, Aviv Nevo, Stephen Ryan, Andrew
Sweeting, Steve Tadelis, Jonathan Williams, Thomas Woll-
mann, 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 Fed-
eral 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 Te-
radata 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 anti-
trust 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, action-
able under 18 U.S.C. § 1836 et seq. and California Civil
Code § 3426 et seq. SAP was permitted to file counter-
claims asserting, as ultimately narrowed by SAP, that Te-
radata 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 pa-
tent counterclaims, having partially addressed the latter).
Teradata timely appealed.
We decide only the issue of this court’s jurisdiction un-
der 28 U.S.C. § 1295(a)(1), which, as the parties agree, de-
pends on whether SAP’s patent-infringement
counterclaims arise out of the same transaction or occur-
rence 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 juris-
diction, 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 in-
tegrated suite of business applications” covering infor-
mation about finance, human resources, distribution,
manufacturing, service, supply chains, and other topics.
J.A. 15367–68; see J.A. 11418–19. An ERP application re-
quires 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 ap-
plication for reporting.” J.A. 10173. Transactional systems
are used for, e.g., the processing of banking, airline-
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4 TERADATA CORPORATION v. SAP SE

reservation, retail-sale, phone-call, and credit-card-pay-
ment transactions. J.A. 10189. Such transactional data-
bases 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 da-
tabase use is characteristically small in data size, but a “re-
sponse time in milliseconds” is often required. J.A. 10190.
Teradata, on the other hand, produces and sells ana-
lytical enterprise data warehouse (EDW) systems and ser-
vices based on such systems. EDW systems call for
analytical databases (also called online analytical pro-
cessing [OLAP] databases). Analytical systems “are de-
signed 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 cer-
tain 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 an-
alytical systems thus “serve very different needs of organi-
zations” 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 trans-
actional 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 Van-
tage). Teradata Database has a “parallel architecture,”
J.A. 15401, that gives it “massively parallel processing
(MPP) capabilities,” J.A. 15395. Teradata’s narrowed tech-
nical trade secrets, as characterized by Teradata and SAP,
concern a command issued by the application layer of Te-
radata’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 underly-
ing Teradata Database that takes advantage of the paral-
lel-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 collabo-
rated to develop “bridge” software that would enable Te-
radata Database (which uses one version of a structured-
query language) and SAP’s ERP system (which uses a dif-
ferent version) to interact. J.A. 15203–04. For this Bridge
Project, the parties entered into two relevantly similar mu-
tual non-disclosure agreements (collectively, MNDA) and a
Software Development Cooperation Agreement (SDCA).
The MNDA, effective as of June 2008, required the mark-
ing 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 sub-
ject matter involved in the collaboration.
When the Bridge Project began, SAP offered three
products of particular relevance to this case: its ERP prod-
uct; 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 pro-
cessing of that data. SAP’s MaxDB was a database (de-
scribed 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 data-
base 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 “Se-
lect 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 accord-
ing to Teradata’s characterization in this case, the Te-
radata 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 ap-
proach 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-gen-
eration database, called HANA. SAP describes HANA as a
“translytical” database—structured to support transac-
tional 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 ad-
vantage 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 de-
veloped 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 applica-
tion to depend on functionalities it had built into its data-
base, 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, in-
cluding 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 Sec-
ond Amended Complaint, in December 2018, Teradata in-
corporated 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 Te-
radata 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 se-
crets, 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 dis-
covery 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 ex-
plained, “center around . . . specific ways of selecting large
volumes of data to solve problems arising in MPP [mas-
sively 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 dis-
cussing 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 vary-
ing 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 De-
cember 2018, J.A. 790, and in May 2019, SAP moved for

1 It appears that the August 2021 SAP filing dock-
eted 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-op-
erative 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 re-
spect 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 infringe-
ment 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 contain-
ing software, including Teradata Database, Teradata Ana-
lytics for SAP Solutions, Teradata OLAP Connector,
Teradata’s Business Model Extensions, and Teradata In-
telligent 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 op-
posing the addition of SAP’s counterclaims to the case, as-
serted that SAP “can bring those claims in a separate
lawsuit.” N.D. Cal. Dkt. No. 109 at 9 (emphasis added) (cit-
ing Xyratex Technology, Ltd. v. Teradyne, Inc., No. 08-cv-
04545, 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-compul-
sory, 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 Septem-
ber 2008 application tracing to a September 2007 provi-
sional application. It describes and claims a database that
“is able to generate up-to-date” OLTP data without redun-
dancy 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 im-
plementation 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 in-
formation 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 row-
based database information and notify the column-based
component of the update. Id., col. 20, lines 12–24. The col-
umn-based component can then update the column-based
database information. Id. Finally, the column-based com-
ponent 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 pro-
gram for processing database information for both
transacting and reporting, said computer program
being executed by said computer system, the com-
puter system comprising:
a processor;
a memory;
a relational database management system
component, implemented by the computer sys-
tem, wherein said relational database man-
agement component stores said database
information in a row format; and
a column-oriented data processing compo-
nent, 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 data-
base management system component notifies
said column-oriented data processing compo-
nent 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 compo-
nent 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 re-
sponse.
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 applica-
tion. 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 origi-
nal)). As SAP’s validity expert explained, “[a]t a high
level[,] this organization is accomplished by assigning a ta-
ble 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 as-
signed to an entity type and storing entities of
its entity type;
providing a set of online analytical pro-
cessing 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 ta-
bles 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 ta-
bles, the sub-set of database tables comprising
database tables of one or more entity types;
mapping a sub-set of the set of online ana-
lytical processing cubes to the at least one class
of online analytical processing cubes;
invoking an online analytical processing
component to fill the online analytical pro-
cessing cubes with transactional data;
processing the entities stored in the sub-
set 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 applica-
tion 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 inte-
grate 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) que-
ries, issued to databases, “express what results are re-
quested but do not state how the results should be
obtained.” Id., col. 2, lines 59–60. Query optimizers per-
form 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 gener-
ating 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 (ta-
bles), 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 opti-
mizer, 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 con-
text in which it is used.” Id., col. 3, lines 28–31. The pa-
tent’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 optimiz-
ing 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, iden-
tifying 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-compu-
ting 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 ex-
ecution 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 Pro-
cedure 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” (capi-
talization altered)); J.A. 8878–86 (March 2021).
In May 2021, following Teradata’s last severance mo-
tion, the district court severed SAP’s ’437 patent-infringe-
ment counterclaim from this case but declined to do so at
that time for the three other remaining counterclaims—as-
serting 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 par-
ties, 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 dic-
tionary cache, and the counterclaim asserting infringe-
ment 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 pre-
sented 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 prod-
uct HANA”; that “[t]here are common questions of fact be-
tween 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 be-
tween witnesses and documentary evidence[] weigh
against severance” except for the ’437 patent. Id. The
court reiterated the preliminary nature of its determina-
tion, 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 sum-
mary 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 Te-
radata’s economic expert. J.A. 1–2, 21–38, 46–49. The dis-
trict 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 tech-
nical trade secrets: the Batched Merge method,” J.A. 7, re-
ferring 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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TERADATA CORPORATION v. SAP SE 17

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 agreed-
to 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 Te-
radata appealed to this court, SAP moved to transfer the
appeal to the Ninth Circuit, a motion that Teradata op-
posed. 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 per-
suasion falls on the appellant to establish that we indeed
possess the jurisdiction [that the appellant] seeks to in-
voke,” 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 in-
fringement 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 sub-
ject 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 ju-
risdiction 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 ap-
peal 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 sepa-
rate action. See Rule 13, 1937 Adv. Comm. Note 7; Baker
v. Gold Seal Liquors, Inc., 417 U.S. 467, 469 (1974); Amer-
ican 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-infringe-
ment counterclaims—specifically, those involving SAP’s
’421, ’321, and ’179 patents—are compulsory because, Te-
radata urges, they arise out of the same transaction or oc-
currence that is the subject matter of Teradata’s technical-
trade-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 opin-
ion. 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 fed-
eral rules,” we have explained that, to implement that ap-
proach, 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, includ-
ing 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-in-
fringement 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 re-
futes 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 omit-
ted) (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) (dis-
cussing 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 plain-
tiff’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 de-
fenses, 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” anal-
ysis, 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 consider-
ation 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 be-
tween what the plaintiff must establish to prove its claim
and what the defendant must establish to prove its coun-
terclaim.” Nasalok, 522 F.3d at 1326.
Of relevance here, for jurisdictional purposes, the oper-
ative 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 com-
plaint or voluntarily dismissing them without prejudice (ef-
fectively 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 with-
out prejudice all patent-infringement claims prior to the
appeal). As we explained in Chamberlain, “[d]ismissals
without prejudice are de facto amendments to the com-
plaint,” 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 con-
structive 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 jurisdic-
tion. 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 extin-
guished by amendment, the effect is the same. The parties
were left in the same legal position with respect to the pa-
tent 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.” Fed-
eral Rule of Civil Procedure Rule 15(a)(1), (2); see Wright &
Miller § 1479. Here, when Teradata amended its list of as-
serted trade secrets, incorporated into the Second
Amended Complaint, after SAP answered, Teradata had
both SAP’s consent and the court’s leave. The parties stip-
ulated 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 stip-
ulated 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 preju-
dice. 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 misappropri-
ation of its trade secrets 24–31, 58, and 59 so that SAP
would lose its ability to bring these claims (against the ac-
cused products) if it did not press them in this action initi-
ated 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 counter-
claims as presented, SAP must demonstrate that an ac-
cused 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 be-
tween direct or indirect infringement.
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24 TERADATA CORPORATION v. SAP SE

scope of the patent claims, on one hand, and the composi-
tion of Teradata’s accused products, on the other. Patent
validity is not among the required showings, but one ac-
cused of infringement, like Teradata, may put patent inva-
lidity 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., Te-
radata 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 con-
sent.” 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 stand-
ards.
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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 in-
quiry, see Rearden, 841 F.3d at 1332; Nasalok, 522 F.3d at
1325, point against Teradata’s suggested affirmative an-
swer 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 con-
clude otherwise. There is undisputedly some overlap in ev-
idence; after all, understanding the different accused
products and the asserted trade secrets and asserted pa-
tent claims will call for explanations of various database-
structure-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 in-
fringement 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 relation-
ship 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-or-
lose 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 consti-
tutes 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 circum-
stance-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 differ-
ent from Holmes Group (the case whose result Congress
was abrogating by amending § 1295(a) in 2011), the Su-
preme Court case to which the “logical relationship” formu-
lation traces, and most, if not all, of the cases on which
Teradata relies for its position on appeal. Without suggest-
ing that this difference is always critical in a compulsory-
counterclaim 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 (as-
serting that the plaintiff’s product infringed defendant’s
patent)—which the Supreme Court noted was a compul-
sory counterclaim. 535 U.S. at 828. In Moore v. New York
Cotton Exchange, 270 U.S. 593 (1926), which used the “log-
ical 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 declara-
tory judgment that it owned the same patents and also
sued for infringement, proof of which itself required estab-
lishment 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 de-
claratory judgment that certain of its own products (ex-
change-traded funds) did not infringe Mopex’s patents, and
the court held that Mopex’s charge of trade-secret misap-
propriation involving the American Stock Exchange prod-
ucts was a compulsory counterclaim, noting that Mopex
essentially conceded that the opposing claims involved es-
sentially 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 counter-
claim was “compulsory” when a patent owner’s communi-
cations to potential infringers were the subject of both the
plaintiff’s state-law claims (alleging that the communica-
tions 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 com-
pulsory-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 com-
pulsory 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 ma-
terially different from the present case and themselves un-
derscore 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 pa-
tents newly asserted in an amended complaint met the
Rule 15 test insofar as the very same products were ac-
cused—where the new and original patents involved suffi-
ciently similar technology that proof of infringement would
not be substantially different—while requiring a remand
for consideration of the allegation against products differ-
ent from those initially accused. 934 F.3d at 1370–71. In
In re EMC Corp., 677 F.3d 1351 (Fed. Cir. 2012), we ad-
dressed joinder of patent claims against different defend-
ants 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. Med-
tronic PLC, No. 2016-2422, 2017 WL 6210801 (Fed. Cir.
Jan. 27, 2017), the plaintiff Foundation sought an account-
ing from Medtronic under a license to the Foundation’s pa-
tents, and Medtronic counterclaimed for a declaration of
noninfringement (by various Medtronic products) and in-
validity (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 Med-
tronic’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 Founda-
tion 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 conten-
tion. The plaintiff Leap Wireless sued the defendant for
patent infringement, and the defendant filed a counter-
claim/cross-claim seeking a declaratory judgment of inva-
lidity 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) defend-
ants. 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 infringe-
ment 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 coun-
terclaim 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 Te-
radata’s products and does not assert invalidity of Te-
radata’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 as-
serts, which is, simply, infringement by Teradata’s prod-
ucts, 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 pa-
tents at issue that (either publicly or in SAP’s hands) pre-
date the asserted trade-secret misappropriation. See At-
lantic 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 is-
sue 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 estab-
lished here that the patent claims, understood in light of
the specifications, disclose the asserted trade secrets’ par-
ticular 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 pa-
tent counterclaims now at issue from Teradata’s affirma-
tive claims. The district court focused on severance under

10 Of course, the Atlantic Research principle is avail-
able for SAP to invoke, in defending against the trade-se-
cret claim, based on temporally relevant disclosures in a
published patent (or in other publications) even if the as-
serted 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 Te-
radata’s antitrust claims, which Teradata does not invoke
for its compulsory-counterclaim argument here, the dis-
trict 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 techno-
logical process entails and who invented the technology
first” and “[t]he interests of judicial economy and the over-
lap between witnesses and documentary evidence.” J.A.
9523. Those considerations, even the unelaborated refer-
ence 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 fo-
cused on the compulsory character of the counterclaims) do
not show that the patent counterclaims at issue were com-
pulsory. We do not read SAP’s assertions supporting al-
lowance 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 over-
lap 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-in-
fringement 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 trade-
secret claims that supports its present contention that the
patent counterclaims are compulsory. To the contrary, Te-
radata asserted that SAP could bring its patent-
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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 allega-
tions qualified as a compulsory counterclaim.
For these reasons, we conclude that SAP’s counter-
claims do not arise out of the same transaction or occur-
rence 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, there-
fore, 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 in-
stead 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 (cur-
rently counterclaims), if and when adjudicated in an ap-
pealable judgment, will not necessarily end up part of an
eventual Ninth Circuit appeal. If SAP’s patent-law coun-
terclaims 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 evalu-
ated 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 & Mil-
ler § 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 dis-
trict court’s ability to hear or try separate-case claims to-
gether, or even consolidate the cases, under Rule 42(a). See
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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 pa-
tent-infringement allegations made by SAP might well be
reviewed in this court while an appealable judgment on Te-
radata’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 trans-
ferred to the U.S. Court of Appeals for the Ninth Circuit
pursuant to 28 U.S.C. § 1631.
No costs.
TRANSFERRED