Intel Corporation v. Greenthread, LLC

Intel Corporation v. Greenthread, LLC (IPR2023-00386) concerned an inter partes review (IPR) petition filed by Intel challenging a patent owned by Greenthread, LLC. Intel Corporation is a global technology company, widely known as a leading designer and manufacturer of semiconductor chips. Greenthread, LLC, on the other hand, operates as a patent assertion entity (PAE) or non-practicing entity (NPE), primarily focused on monetizing a portfolio of semiconductor intellectual property. Greenthread acquires patents, notably from inventor G.R. Mohan Rao, and asserts them against major technology companies. This IPR was filed in response to an infringement lawsuit, Greenthread, LLC v. Intel Corporation et al. (W.D. Tex. Case No. 6:22-cv-00105), initiated by Greenthread on January 27, 2022. In that district court action, Greenthread accused Intel of infringing its patents with its 10th, 11th, and 12th generation of semiconductors (e.g., Comet Lake, Tiger Lake, and Alder Lake-series devices), specifically alleging infringement based on "process steps for creating regions with graded dopant concentrations" in Intel's CPUs and flash memory products.

The patent at issue in this IPR was U.S. Patent No. 11,316,014, titled "Graded junction semiconductor components for improved performance." This patent, along with others in Greenthread's portfolio, generally pertains to advanced semiconductor device architectures incorporating "graded dopant regions." The procedural posture of the case was before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). The PTAB serves as a specialized administrative tribunal for reviewing the patentability of claims in issued patents, often providing a more efficient and cost-effective alternative to challenging patent validity in district court litigation. A favorable decision for the petitioner (Intel) in an IPR can significantly impact or even resolve a parallel infringement lawsuit.

This case is notable due to Greenthread's consistent pattern as a patent assertion entity that targets prominent semiconductor manufacturers with foundational intellectual property. Greenthread has asserted patents from the same inventor against other major players like Samsung, ams-OSRAM, and ON Semiconductor, frequently leading to parallel IPR challenges and often resulting in settlements or stays of district court cases pending IPR outcomes. The IPR, filed on December 19, 2022, was terminated relatively early on July 11, 2023. While the specific reason for this IPR's termination is not detailed in readily available public search results without direct access to the PTAB docket, early terminations in IPRs are commonly due to a settlement between the parties, a discretionary denial of institution by the PTAB (e.g., based on Fintiv factors regarding parallel litigation), or a petitioner's failure to meet statutory requirements for institution.

Key Legal Developments & Outcome

The litigation between Greenthread and Intel involved parallel proceedings in the Western District of Texas and before the Patent Trial and Appeal Board (PTAB). The dispute was ultimately resolved through a global settlement, leading to the termination of all related actions.

Chronological Developments

• 2022-01-27: District Court Complaint Filed
  Greenthread, LLC filed a patent infringement lawsuit against Intel Corporation in the U.S. District Court for the Western District of Texas (W.D. Tex. Case No. 6:22-cv-00105). The complaint accused Intel's 10th, 11th, and 12th generation processors (including Comet Lake, Tiger Lake, and Alder Lake series) of infringing on several Greenthread patents related to semiconductor design and manufacturing processes. The asserted patents, including U.S. Patent No. 11,316,014, describe methods for creating graded dopant concentrations in semiconductor junctions to improve device performance.

• 2022-12-19: Intel Files IPR Petition
  In response to the lawsuit, Intel Corporation filed a petition for Inter Partes Review (IPR) with the PTAB, challenging the validity of claims 1–5, 8–12, and 15–19 of U.S. Patent No. 11,316,014. This proceeding was assigned case number IPR2023-00386. This was one of several IPRs Intel filed against Greenthread patents involved in the district court litigation.

• 2023-04-18: Joint Motion to Terminate IPRs
  The parties informed the PTAB that they had reached a settlement agreement to resolve the ongoing disputes. Counsel for Intel sent a communication to the PTAB stating, "We represent Petitioner Intel Corporation in IPR2023-00260, -00308, -00386, -00420, -00541, -00548 and -00552. Pursuant to the instructions on page 2 of the Trial Practice Guide update, we write on behalf of both Petitioner and Patent Owner to request authorization to file a joint motion to terminate the above-referenced IPRs based on settlement." This communication confirms the settlement covered not only IPR2023-00386 but a suite of related IPRs between the parties.

• 2023-04-18: District Court Case Stayed
  Contemporaneously with the settlement notification to the PTAB, the district court case was stayed. On this date, Judge Alan D. Albright entered an order staying the case and administratively closing it pending the finalization of the settlement. The order stated, "The Court is advised the parties have settled all issues in the above-styled case." This action effectively paused all district court proceedings, including any pending motions or claim construction hearings, to allow the parties to execute the terms of their agreement.

• 2023-07-11: PTAB Terminates IPR Proceeding
  Following the parties' joint request, the PTAB issued an order terminating the IPR2023-00386 proceeding. The termination was based on the settlement reached between Intel and Greenthread. This formal termination ended the administrative challenge to the validity of the '014 patent before the patent office.

• 2023-07-12: Final Dismissal in District Court
  Following the successful termination of the IPRs and finalization of the settlement, the parties filed a Joint Stipulation of Dismissal with Prejudice in the Western District of Texas. The filing requested that all claims and counterclaims be dismissed with prejudice, with each party bearing its own attorneys' fees and costs. On the same day, Judge Albright signed the order, formally closing the district court case and ending the litigation.

Outcome

The litigation concluded with a confidential settlement between Intel and Greenthread in mid-2023. This global settlement resolved both the district court infringement lawsuit and the multiple IPRs Intel had filed to challenge Greenthread's patents. As a result, the district court case was dismissed with prejudice, and the IPRs, including IPR2023-00386, were terminated before the PTAB could issue an institution decision or a final written decision on the merits of Intel's invalidity contentions. The case did not proceed to claim construction, significant discovery milestones, or trial.

I'll research Intel's counsel in IPR2023-00386 and the parallel district court action. Note: in this IPR, Intel is the petitioner (the plaintiff-side party); the prior section covered Greenthread (patent owner/respondent).

Now let me pin down Intel's counsel of record specifically in IPR2023-00386 (petitioner's mandatory notices) and confirm the district court team.

Let me confirm the IPR2023-00386-specific petitioner counsel of record and check the post-transfer Oregon docket.

I'll research the counsel representing Greenthread, LLC (the patent owner/defendant in this IPR framework) in both the IPR proceeding and the parallel district court litigation.

I found the key source — the Patent Owner's Mandatory Notices in IPR2023-00386. Let me verify the counsel details and gather firm/experience information.

Defendant (Patent Owner) Representatives — Greenthread, LLC

Framing note / cross-reference: The case metadata labels Intel the "Plaintiff" and Greenthread the "Defendant," which reflects the IPR posture (Intel = Petitioner; Greenthread = Patent Owner/respondent). This is the mirror image of the district court case, where Greenthread was the plaintiff and Intel the defendant. This section therefore covers Greenthread's counsel — the attorneys who defended the '014 patent in the IPR and prosecuted the parallel infringement suit. (Note: the prior "Plaintiff representatives" section correctly captured Intel's Petitioner-side team; no contradiction, just the opposite side of the "v.")

Counsel of Record in IPR2023-00386 (PTAB)

Greenthread's counsel of record in this IPR is set out in Patent Owner's Mandatory Notices Under 37 C.F.R. § 42.8(a)(2), filed December 29, 2022 (Paper 3). The filing designates McKool Smith, P.C. as counsel and consents to electronic service at Greenthread-IPR-MS@mckoolsmith.com.

Both attorneys are named in the mandatory notice and both signed the filing. Because IPR2023-00386 was terminated by settlement before institution (see prior section), the record would consist of the mandatory notices and a preliminary response; no institution or final written decision issued, so the counsel-of-record designation above is the operative one.

Greenthread's counsel in the parallel district court litigation

In Greenthread, LLC v. Intel Corporation, Dell Inc., and Dell Technologies Inc., No. 6:22-cv-00105-ADA (W.D. Tex.) — and the severed companion case No. 6:22-cv-01293 — Greenthread (as plaintiff) was represented by a broader McKool Smith team, several of whom overlapped with the IPR team above. The complaint and subsequent filings list:

• Alan L. Whitehurst — McKool Smith, Washington, D.C. (lead; overlaps with the IPR).
• Arvind Jairam — McKool Smith, Washington, D.C. (overlaps with the IPR).
• Nicholas T. Matich, IV — McKool Smith, Washington, D.C. Former Acting General Counsel of the USPTO; IAM top-300 IP strategist and LawDragon 500 Leading Litigator. A principal Greenthread representative across its litigation campaign (including the onsemi, Cirrus Logic, and Monolithic Power Systems matters).
• John B. Campbell, Jr. — McKool Smith, Austin, Texas (local/Texas counsel).
• Kaitlyn M. Dawson — McKool Smith, Houston, Texas.
• Archis "Neil" Ozarkar — McKool Smith, Houston, Texas.
• Emily Tate — McKool Smith, New York, N.Y.
• Kaylee Hoffner — McKool Smith, Houston, Texas.
• (In the related Texas suits, McKool Smith's Marshall, Tex. office attorneys Jennifer Truelove and Samuel Baxter also appeared, per service/courtesy-copy lists.)

(Source: Greenthread's complaint signature block in the W.D. Tex. action, reproduced in PTAB exhibits; Docket 6:22-cv-00105-ADA (Dkt. 7 summons to Alan Whitehurst); and Docket Alarm/Justia docket entries for 6:22-cv-00105 and 6:22-cv-01293.)

Related proceeding — Intel's separate Oregon action

In Greenthread, LLC v. Intel Corporation, No. 3:22-cv-02001-JR (D. Or.), Intel (as defendant there) was represented by Perkins Coie LLP — Renée E. Rothauge and Gregory J. Mina (Portland, Or.) — while Greenthread was again represented by McKool Smith. This is included for completeness because it bears on the same parties; it does not change the IPR counsel designation.

Caveats

• No in-house counsel for Greenthread is publicly identified. Greenthread is a non-practicing patent-assertion entity, and its enumerated counsel here are all outside counsel from McKool Smith.
• PTAB-side vs. district-court-side counsel should not be conflated. The two attorneys actually designated as counsel of record in IPR2023-00386 are Whitehurst (lead) and Jairam (back-up). The additional McKool Smith attorneys above appeared in the district court litigation (and in Greenthread's other, separately numbered IPRs, e.g., IPR2024-00001/−00016–00021 and the onsemi IPRs), but are not named in the '386 mandatory notices.
• No attorney names or rulings have been fabricated; all designations are drawn from the mandatory-notices filing and firm/docket sources cited above. If any PTAB filings in this docket were sealed, that is not evident from the public materials reviewed.

Potential inconsistency to flag: The prior "Key Legal Developments" section states the PTAB terminated the IPR before any institution decision and that the district court case was dismissed with prejudice on 2023-07-12. One search result (Greenthread's March 24, 2023 Western Digital complaint via UniCourt) and a Law360 entry reference a "December 29, 2022 Greenthread, LLC v. Intel Corporation, Oregon" filing, consistent with the D. Or. case noted above — worth reconciling against the settlement timeline if the district court docket is pulled directly.