Dell Technologies Inc. et al. v. Greenthread, LLC

Case Overview: Semiconductor Patent Challenge Ends in Settlement

This Inter Partes Review (IPR) at the Patent Trial and Appeal Board (PTAB) was a defensive action by Dell Technologies Inc. against a patent held by Greenthread, LLC, a Texas-based patent assertion entity (PAE). The IPR was filed in an attempt to invalidate a patent Greenthread was asserting in a parallel district court lawsuit. The proceeding, IPR2023-00510, was short-lived, terminating just a few months after it was filed, which points to a global settlement between the parties that resolved both the district court case and this PTAB challenge. This dynamic—an operating company using the IPR process to counter a PAE's infringement claims—is a common feature of modern patent litigation, especially in the high-tech sector.

The dispute centered on semiconductor technology. Greenthread, LLC is a non-practicing entity (NPE) that holds and asserts a portfolio of patents originally from inventor G.R. Mohan Rao. These patents are generally directed at methods of manufacturing semiconductor devices. On the other side, Dell Technologies is a major global technology company that sells a wide range of computer hardware, including laptops and servers. The infringement allegations in the underlying district court case targeted Dell laptops (such as the Inspiron, XPS, and Alienware lines) that incorporated Intel's 10th, 11th, and 12th generation processors. Greenthread alleged that these specific semiconductor components, used in Dell's products, infringed its patents.

The case is notable as an example of a broader assertion campaign by Greenthread, which has sued numerous major technology companies including Intel, Samsung, and Monolithic Power Systems over the same family of semiconductor patents. The patent at issue in this IPR, U.S. Patent No. 11,316,014, is described as relating to "graded junction semiconductor components for improved performance". The IPR was filed as a direct response to a lawsuit Greenthread brought against Dell and Intel in the U.S. District Court for the Western District of Texas (Case No. 6:22-cv-00105), a venue known for a high volume of patent litigation. The termination of this IPR, along with others filed by Dell and Intel, was reportedly due to a settlement that resolved the district court litigation, a common outcome where the high cost and risk of continued litigation for both sides leads to a business resolution.

Key Legal Developments and Outcome

The Inter Partes Review (IPR) IPR2023-00510 was a component of a larger intellectual property dispute between Greenthread, LLC and Dell Technologies Inc., which also involved a parallel district court litigation. The entire dispute was resolved through a global settlement, leading to the dismissal of the court case and termination of the IPR.

Parallel District Court Litigation

2022-01-27: Complaint Filed in the Western District of Texas
Greenthread, LLC filed a patent infringement lawsuit against Dell Technologies Inc., Dell Inc., and Intel Corporation in the U.S. District Court for the Western District of Texas (W.D. Tex.), captioned Greenthread, LLC v. Intel Corporation, et al., Case No. 6:22-cv-00105. Greenthread alleged that processors and flash memory products, manufactured by Intel and incorporated into Dell products, infringed a family of its patents related to semiconductor manufacturing. U.S. Patent No. 11,316,014, the patent at issue in this IPR, was included in the district court action.

2022-04-29: First Amended Complaint
Greenthread filed a First Amended Complaint, maintaining its infringement allegations against the defendants.

2022-12-27: Claims Against Intel Severed and Transferred
The court granted Intel's motion to sever the claims against it and transfer them to the District of Oregon. The case against Dell remained in the Western District of Texas.

Inter Partes Review (IPR) Proceedings

2023-01-27: Dell Files IPR Petition
Exactly one year after the initial district court complaint was filed, Dell Technologies Inc. and Dell Inc. (Petitioners) filed petition IPR2023-00510, seeking an inter partes review of U.S. Patent No. 11,316,014, owned by Greenthread, LLC (Patent Owner). This was one of several IPRs Dell and co-defendant Intel filed against Greenthread's patents around the same time.

Settlement and Final Disposition

Late-April 2023: Global Settlement Reached
Evidence from related IPRs filed by co-defendant Intel indicates that a global settlement was reached. On April 25, 2023, counsel for Intel informed the Patent Trial and Appeal Board (PTAB) that Intel and Greenthread had "entered into a release agreement, resolving their dispute as to the patents at issue in these IPRs." Counsel for the parties jointly requested authorization to file motions to terminate the pending IPRs.

2023-05-03: District Court Case Against Dell Dismissed
Following the settlement, the underlying district court litigation against Dell in the Western District of Texas was dismissed.

2023-05-17: IPR Terminated
Consistent with the global settlement, the PTAB terminated IPR2023-00510. A joint motion to terminate based on settlement is the standard procedure for ending an IPR under such circumstances, as outlined in 35 U.S.C. § 317(a).

The termination of this IPR and the dismissal of the corresponding district court case marked the end of the legal dispute between Dell and Greenthread concerning the '014 patent.

While the Power of Attorney for IPR2023-00510 is not directly available because the case was terminated and settled early, documents from a parallel IPR (IPR2023-00509), filed by Dell against the same patent owner (Greenthread, LLC) on the same day, identify the petitioners' counsel. It is standard practice for the same legal team to handle such closely related filings.

Based on the petition filed in the parallel IPR, the following attorneys from Paul Hastings LLP represented Dell Technologies Inc. and Dell Inc.

Counsel for Plaintiff(s): Dell Technologies Inc. & Dell Inc.

• Name: Naveen Modi

  • Role: Lead Counsel
  • Firm: Paul Hastings LLP (Washington, D.C.)
  • Noteworthy Experience: Global Co-Chair of Paul Hastings' Intellectual Property practice, widely considered a leading attorney for PTAB and IPR proceedings, having been involved in over 1,000 post-grant proceedings.

• Name: Daniel E. Zeilberger

  • Role: Back-up Counsel
  • Firm: Paul Hastings LLP (Washington, D.C.)
  • Noteworthy Experience: An IP litigation partner with substantial experience in PTAB proceedings and appeals to the Federal Circuit, previously served as a patent examiner at the USPTO.

• Name: Wasim K. Bleibel

  • Role: Back-up Counsel
  • Firm: Paul Hastings LLP (Washington, D.C.)
  • Noteworthy Experience: An IP litigator whose practice focuses on patent litigation in federal district courts and post-grant proceedings before the PTAB.

• Name: Stephen B. Kinnaird

  • Role: Back-up Counsel
  • Firm: Paul Hastings LLP (Washington, D.C.)
  • Noteworthy Experience: A veteran trial lawyer and Chair of the ITC litigation practice at Paul Hastings, with extensive experience in patent litigation.

• Name: Igor V. Timofeyev

  • Role: Back-up Counsel
  • Firm: Paul Hastings LLP (Washington, D.C.)
  • Noteworthy Experience: An appellate and patent litigation partner who has argued numerous cases before the U.S. Court of Appeals for the Federal Circuit.

In the Inter Partes Review proceeding Dell Technologies Inc. et al. v. Greenthread, LLC, IPR2023-00510, before the Patent Trial and Appeal Board (PTAB), no counsel for the patent owner, Greenthread, LLC, formally entered an appearance.

The case was filed by Dell on January 27, 2023, and was terminated less than four months later on May 17, 2023. This timeline is shorter than the three-month window allotted for a patent owner to file a Preliminary Response to a petition. Under 37 C.F.R. § 42.8(a)(2), a patent owner has 21 days from the service of the petition to file Mandatory Notices, which include the designation of lead and backup counsel.

Given the swift termination of the proceeding, it is likely that the parties settled, or Dell voluntarily requested an adverse judgment, before Greenthread's appearance was required. As a result, no documents on the PTAB docket for this specific case identify counsel for the defendant.

However, in numerous other contemporaneous PTAB proceedings and district court litigations, Greenthread, LLC has been represented by attorneys from the intellectual property boutique Antonelli, Harrington & Thompson, LLP. This firm consistently appears on behalf of Greenthread in its patent assertion campaigns. For example, filings in other IPRs, such as IPR2025-00958, show attorneys from the firm representing Greenthread. While not counsel of record in this terminated case, had the IPR proceeded, the likely representatives for Greenthread would have been:

• Matthew J. Antonelli, Lead Counsel

  • Firm: Antonelli, Harrington & Thompson, LLP (Houston, TX)
  • Note: Antonelli is a founding partner of the firm and has extensive experience in patent litigation and PTAB trials, frequently representing patent owners.

• Zachary H. Hilton, Of Counsel

  • Firm: Antonelli, Harrington & Thompson, LLP (Houston, TX)
  • Note: Hilton's practice focuses on patent litigation and PTAB proceedings, often in conjunction with other attorneys at the firm.

• Larry D. Thompson, Jr., Of Counsel

  • Firm: Antonelli, Harrington & Thompson, LLP (Houston, TX)
  • Note: Thompson is another key attorney at the firm involved in Greenthread's various patent litigation matters.

Again, these attorneys did not formally appear in IPR2023-00510 because the proceeding was terminated before an appearance by the patent owner was made.