Intel Corporation et al. v. 3D Surfaces, LLC

This case involves an inter partes review (IPR) initiated by Intel Corporation, Dell Technologies, Inc., and Dell, Inc. (collectively, "Petitioners") against 3D Surfaces, LLC ("Patent Owner") before the Patent Trial and Appeal Board (PTAB). The Petitioners, all operating companies and significant players in the semiconductor and computer manufacturing industries, sought to challenge the patentability of claims from U.S. Patent No. 7,245,299. 3D Surfaces, LLC is identified as a patent assertion entity (PAE), also known as a non-practicing entity (NPE), which holds intellectual property primarily in graphics processing and surface rendering technologies but does not manufacture products.

The patent at issue, U.S. Patent No. 7,245,299, is directed to a "bicubic surface real-time tessellation unit" or, more broadly, a method and apparatus for real-time tessellation of graphics objects for 3D rendering. The technology focuses on minimizing computations required for subdividing bicubic surfaces into triangles for real-time display on a computer system, a process integral to modern GPU rendering pipelines and 3D graphics processing, including DirectX 11 tessellation stages. While there isn't a directly "accused product" in an IPR, the challenge by Intel and Dell suggests that their products incorporating advanced graphics processing units (GPUs) would likely be implicated in any associated patent infringement litigation.

The procedural posture of this case is an Inter Partes Review (IPR2022-01589) before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. The PTAB has already issued a Final Written Decision, determining that all challenged claims of US Patent 7,245,299 are unpatentable. This IPR was linked to broader district court litigation, specifically 3D Surfaces, LLC v. Dell Techs. Inc., et al., No. 1:22-cv-00854 in the Western District of Texas, which was stayed pending the PTAB's final decision. The case's notability stems from its illustration of common NPE assertion patterns against industry giants in critical technology sectors like graphics processing, and the strategic use of IPRs by operating companies to challenge patent validity in parallel with infringement lawsuits. The invalidation of these claims, subsequently affirmed by the Federal Circuit (Case No. 24-1909, 24-1910) on January 8, 2026, reinforces lessons about the vulnerability of certain patents, particularly reissued patents, when asserted against well-resourced defendants.

Key Legal Developments and Outcome for Intel Corporation et al. v. 3D Surfaces, LLC (IPR2022-01589)

This IPR proceeding, challenging U.S. Patent No. 7,245,299, was part of a broader dispute involving 3D Surfaces, LLC, Intel Corporation, and Dell Technologies, Inc., including a parallel patent infringement lawsuit and multiple appeals to the Federal Circuit. The core outcome involved the invalidation of claims from U.S. Patent No. 7,245,299 (and related Patent No. RE42,543) as unpatentable.

1. Initial Pleadings: District Court Litigation (2021-2022)

• Complaint Filing: 3D Surfaces, LLC initiated a patent infringement lawsuit against Dell Technologies, Inc., and Dell Inc., asserting U.S. Patent No. 7,245,299 B2 (and U.S. Patent No. RE42,543, a reissue patent) related to graphics processing technology. The initial district court case was filed under No. 6:21-cv-01107 in the Western District of Texas, later re-filed as No. 1:22-cv-00854 (W.D. Tex.). The lawsuit targeted Dell's DirectX 11-capable computing products.

2. Pre-trial Motions: Stay Pending IPR (2022)

• Motion to Stay: The district court litigation was stayed "through the PTAB's issuance of its final written decision," indicating that Dell (and later Intel, as a real party-in-interest) successfully sought a stay pending the outcome of inter partes review proceedings at the Patent Trial and Appeal Board (PTAB).

3. Parallel PTAB IPR Proceedings (2022-2024)

Intel Corporation, Dell Technologies, Inc., and Dell Inc. collectively challenged U.S. Patent No. 7,245,299 (and other related patents) through multiple IPR petitions.

• IPR Petition Filing (IPR2022-01589): On October 1, 2022, Intel Corporation, along with Dell Technologies, Inc. and Dell Inc. (identified as real parties-in-interest), filed a petition for inter partes review, IPR2022-01589, challenging claims 1-4, 9-11, 17, and 18 of U.S. Patent No. 7,245,299 B2.
• Institution Decision: On April 19, 2023, the PTAB issued an Institution Decision, instituting the requested review of claims 1-4, 9-11, 17, and 18 of the '299 patent.
• Claim Construction: During the IPR, the PTAB interpreted "Unit Terms" within the patent claims as means-plus-function limitations subject to 35 U.S.C. § 112, ¶ 6.
• Oral Hearing: An oral hearing was held on January 16, 2024.
• Final Written Decision: On April 16, 2024, the PTAB issued its Final Written Decision (Paper 33) in IPR2022-01589, determining that Petitioner (Intel, Dell Technologies, and Dell) had shown by a preponderance of the evidence that claims 1-4, 9-11, 17, and 18 of the '299 patent were unpatentable as obvious under 35 U.S.C. § 103.
• Related IPRs:
  • IPR2023-00004: This IPR, also challenging U.S. Patent No. 7,245,299, was joined with IPR2022-01589 and similarly resulted in a Final Written Decision on April 16, 2024, finding claims unpatentable.
  • Other IPRs on the '299 patent (IPR2022-01588, IPR2023-00003) were not instituted.
  • IPRs were also filed against U.S. Patent No. RE42,543 (e.g., IPR2022-01591, IPR2023-00006), with Final Written Decisions also finding claims unpatentable.

4. Appeal to the Federal Circuit (2024-2026)

• Appeal Filing: 3D Surfaces, LLC appealed the PTAB's adverse Final Written Decisions concerning U.S. Patent No. 7,245,299 (from IPR2022-01589 and IPR2023-00004) to the U.S. Court of Appeals for the Federal Circuit. This appeal was docketed as Case No. 24-1909. An appeal for U.S. Patent No. RE42,543 was also filed as Case No. 24-1910. The appeal for 24-1909 was filed on June 5, 2024.
• Federal Circuit Decision: On January 8, 2026, the Federal Circuit issued a per curiam decision (Rule 36 judgment) in 3D Surfaces, LLC v. Intel Corp. (Case No. 24-1909), affirming the lower tribunal's (PTAB's) finding of invalidity/cancellation for U.S. Patent No. 7,245,299. The court also affirmed the cancellation of U.S. Patent No. RE42,543 in Case No. 24-1910. The Federal Circuit's ruling reinforced rigorous patentability scrutiny for hardware-level graphics innovations.

5. Final Disposition: District Court Judgment (2026)

• Final Judgment: Following the Federal Circuit's mandate that invalidated core claims of both U.S. Patent No. 7,245,299 and U.S. Patent No. RE42,543, the U.S. District Court for the Western District of Texas entered final judgment in favor of Dell Technologies, Inc. on February 27, 2026. The claims were found invalid as obvious under 35 U.S.C. § 103. This outcome effectively ended the infringement litigation with a win for the defendants, Dell and Intel, based on the invalidity of the asserted patents.

In the inter partes review case IPR2022-01589, Intel Corporation, Dell Technologies, Inc., and Dell, Inc. were represented by attorneys from Wilmer Cutler Pickering Hale and Dorr LLP. This counsel also represented the appellees in the subsequent appeal to the Federal Circuit, 3D Surfaces, LLC v. Intel Corporation, et al., No. 24-1909.

The counsel of record for the plaintiff(s) (Petitioners in the IPR and Appellees in the Federal Circuit appeal) include:

• Louis W. Tompros

  • Role: Lead Counsel (argued at Federal Circuit)
  • Firm: Wilmer Cutler Pickering Hale and Dorr LLP
  • Office Location: Boston, MA
  • Notable Experience: Mr. Tompros has significant experience in patent litigation and appeals.

• Mark Christopher Fleming

  • Role: Counsel
  • Firm: Wilmer Cutler Pickering Hale and Dorr LLP
  • Office Location: Not specified in the provided search results, but generally a partner at WilmerHale.
  • Notable Experience: Often involved in appellate matters, particularly at the Federal Circuit.

• Cynthia D. Vreeland

  • Role: Counsel
  • Firm: Wilmer Cutler Pickering Hale and Dorr LLP
  • Office Location: Not specified in the provided search results.
  • Notable Experience: Likely focuses on intellectual property litigation.

• Liv Leila Herriot

  • Role: Counsel
  • Firm: Wilmer Cutler Pickering Hale and Dorr LLP
  • Office Location: Palo Alto, CA
  • Notable Experience: Involved in patent litigation for technology companies.

• Helena Rachael Million-Perez

  • Role: Counsel
  • Firm: Wilmer Cutler Pickering Hale and Dorr LLP
  • Office Location: Denver, CO
  • Notable Experience: Actively practices in intellectual property law.

While specific roles like "lead counsel" for the PTAB proceeding itself were not explicitly detailed in the Federal Circuit opinion, Louis W. Tompros is noted as having argued for the appellees in the Federal Circuit appeal, suggesting a lead role in the overall dispute strategy.

Regarding in-house counsel:

• Steven R. Rodgers is the Senior Vice President and General Counsel for Intel Corporation. He leads Intel's Law and Policy Group and is responsible for the company's legal work, serving on Intel's senior executive team. He joined Intel in 2000 as a senior litigation attorney.
• Rich Rothberg is the General Counsel for Dell Technologies. He oversees the global legal department and manages government affairs, compliance, and ethics. He joined Dell Technologies in 1999.
• Peter Jovanovic is a Legal Director, IP at Dell Technologies. He is responsible for patent portfolio development, patent litigation, open source management, and license drafting and negotiation.

These in-house counsel play significant oversight and strategic roles in managing patent litigation for their respective companies, though they may not be the appearing counsel of record in specific court or PTAB filings.

In the IPR2022-01589 case, 3D Surfaces, LLC, the Patent Owner, was represented by attorneys from Fletcher Yoder, a firm specializing in intellectual property matters. Fletcher Yoder has offices in Houston and Dallas, Texas.

The counsel of record for 3D Surfaces, LLC in this IPR and the related Federal Circuit appeal (Case No. 24-1909, 24-1910) include:

• Daniel L. McKeithan

  • Role: Lead Counsel (represented Patent Owner at Federal Circuit)
  • Firm: Fletcher Yoder
  • Office Location: Houston, TX.
  • Notable Experience: Mr. McKeithan has significant experience in patent litigation and appeals, representing patent owners.

• Thomas H. Daniel

  • Role: Counsel
  • Firm: Fletcher Yoder
  • Office Location: Houston, TX.
  • Notable Experience: Concentrates his practice in intellectual property law.

• Christopher J. Stambaugh

  • Role: Counsel
  • Firm: Fletcher Yoder
  • Office Location: Houston, TX.
  • Notable Experience: Focuses on patent prosecution and litigation.

• Dustin R. Jones

  • Role: Counsel
  • Firm: Fletcher Yoder
  • Office Location: Houston, TX.
  • Notable Experience: Practices in various areas of intellectual property law.

• Nathaniel S. Wilson

  • Role: Counsel
  • Firm: Fletcher Yoder
  • Office Location: Houston, TX.
  • Notable Experience: Involved in patent procurement and enforcement.

• David P. Bennett

  • Role: Counsel
  • Firm: Fletcher Yoder
  • Office Location: Houston, TX.
  • Notable Experience: Specializes in intellectual property law, including litigation support.

• Jason D. Johnson

  • Role: Counsel
  • Firm: Fletcher Yoder
  • Office Location: Houston, TX.
  • Notable Experience: Focuses on patent law and related matters.

Fletcher Yoder prides itself on offering prompt, personal service to clients from experienced attorneys in intellectual property matters, including complex litigation and high-tech prosecution.