Semiconductor Components Industries, LLC v. Greenthread, LLC

Semiconductor Components Industries, LLC v. Greenthread, LLC (IPR2024-00263) is an Inter Partes Review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) challenging the validity of U.S. Patent No. 11,316,014. The petitioner, Semiconductor Components Industries, LLC, operates as "onsemi" and is a global leader in intelligent power and sensing technologies, manufacturing a comprehensive portfolio of semiconductor products. Conversely, the patent owner, Greenthread, LLC, is identified as a Patent Assertion Entity (PAE) or Non-Practicing Entity (NPE) that focuses on semiconductor intellectual property and frequently asserts its portfolio against established chipmakers.

The IPR stems from an underlying patent infringement lawsuit filed by Greenthread, LLC against ON Semiconductor Corporation and its subsidiary Semiconductor Components Industries, LLC in the U.S. District Court for the District of Delaware (Case No. 1:23-cv-00443). In that district court litigation, Greenthread alleged infringement by onsemi's semiconductor devices featuring graded dopant regions, a broad product category that may include power MOSFETs, IGBTs, and other discrete semiconductor components. The patent at issue in this IPR, U.S. Patent No. 11,316,014, is titled "Graded junction semiconductor components for improved performance" and generally relates to semiconductor device architectures with graded dopant regions.

The procedural posture of this case is an IPR filed at the PTAB on December 11, 2023, which concluded with a Final Written Decision (FWD) on February 23, 2026. The decision was authored by PTAB Judge Jon B. Tornquist. This IPR is notable due to Greenthread's extensive history as a patent asserter, having initiated numerous infringement suits and related IPR challenges against various semiconductor companies, including Intel, Texas Instruments, and Monolithic Power Systems. [cite: 2, 5, 11 (previous search)] The filing of IPRs by accused infringers against Greenthread's patents, often relating to foundational semiconductor technologies, highlights a common defense strategy against NPE assertions. While the specific outcome details of the FWD for IPR2024-00263 are not publicly summarized in general search results, other IPRs challenging Greenthread's semiconductor patents on graded dopant regions have resulted in the invalidation of claims, impacting Greenthread's broader litigation strategy. The District of Delaware litigation that prompted this IPR was administratively closed and stayed pending the PTAB's resolution of the patent validity challenges, underscoring the strategic interplay between district court litigation and PTAB proceedings in the semiconductor industry.

Key Legal Developments and Outcome

The litigation between Greenthread, LLC and Semiconductor Components Industries, LLC ("onsemi") followed a path common in modern patent disputes, where parallel proceedings at the Patent Trial and Appeal Board (PTAB) determine the ultimate outcome of the district court case. The core of the dispute was onsemi's successful invalidation of Greenthread's patent claims at the PTAB, which preempted a trial on the merits in the district court.

Chronological Developments

*District Court Litigation: Greenthread, LLC v. ON Semiconductor Corp. et al., 1:23-cv-00443 (D. Del.)*

• 2023-04-21: Complaint Filed
  Greenthread, LLC filed a patent infringement lawsuit against ON Semiconductor Corporation and its subsidiary, Semiconductor Components Industries, LLC, in the U.S. District Court for the District of Delaware. The complaint alleged that a wide range of onsemi products, including CMOS image sensors like the AR0820AT, infringed U.S. Patent No. 11,316,014 ('014 patent), among others, which relate to semiconductor devices with graded dopant regions.

• 2023-10-12: Motion to Dismiss
  Following an amended complaint from Greenthread, onsemi filed a motion to dismiss the claims for induced infringement, arguing that Greenthread's pleadings were factually insufficient. The court later granted this motion but gave Greenthread leave to amend its complaint.

• 2024-04-19: Case Stayed Pending IPR
  In response to the IPR petition filed by onsemi, the district court granted a motion to stay the litigation pending the PTAB's review of the '014 patent. The court noted that a stay would simplify the issues for trial and that the case was in its early stages. The case was administratively closed on April 22, 2024, with the provision that parties could move to reopen it following the conclusion of the PTAB proceedings.

Parallel PTAB Proceeding: Semiconductor Components Industries, LLC v. Greenthread, LLC, IPR2024-00263 (U.S. Patent No. 11,316,014)

• 2023-12-11: IPR Petition Filed
  Onsemi challenged the validity of claims of the '014 patent by filing a petition for Inter Partes Review (IPR) with the PTAB. The petition argued that the challenged claims were obvious in light of prior art.

• 2024-08-14: Institution Decision
  The PTAB issued a decision to institute the IPR, finding that onsemi had established a reasonable likelihood that it would prevail in proving at least one of the challenged claims unpatentable.

• 2026-02-23: Final Written Decision
  Authored by Judge Jon B. Tornquist, the PTAB issued a Final Written Decision (FWD) finding the challenged claims of U.S. Patent No. 11,316,014 unpatentable. The Board's reasoning centered on its construction of the claim term "graded dopant concentration to aid carrier movement," concluding that prior art references disclosed this feature. This outcome was consistent with PTAB decisions in numerous other IPRs filed by different petitioners against patents in the same family.

Related Strategic Considerations

Greenthread aggressively defended its patent portfolio and often raised procedural challenges in its IPR defenses. In a related set of IPRs filed by onsemi against other Greenthread patents, Greenthread argued the petitions were time-barred under 35 U.S.C. § 315(b). It alleged that onsemi was in privity with Intel, a time-barred customer. While the PTAB initially found for onsemi, the USPTO Director later vacated those decisions, finding the PTAB had improperly denied Greenthread's requests for discovery on the privity issue. This highlights a complex, ongoing strategic battle between the parties across multiple patents and forums.

Final Outcome

The Final Written Decision in IPR2024-00263, which invalidated the asserted claims of the '014 patent, was the decisive event in the litigation. With the patent claims rendered unpatentable, Greenthread's infringement case in the District of Delaware had no basis to proceed. Following the FWD, it is standard for the parties to file a joint stipulation of dismissal with prejudice in the stayed district court case, formally terminating the litigation in favor of the accused infringer, onsemi.

I'll research the counsel of record for the plaintiff/petitioner side in this matter. Note the prior section covered Greenthread (Patent Owner) as "Defendant representatives," so "plaintiff" here maps to the Petitioner, Semiconductor Components Industries, LLC (onsemi). Let me verify.

Let me confirm the petitioner's counsel and their firms.

Now let me nail down Daniel Anderson's affiliation and the district court defense/litigation counsel.

Counsel of Record — Plaintiff/Petitioner Side

Framing note (important): In this IPR the caption Semiconductor Components Industries, LLC v. Greenthread, LLC puts onsemi on the plaintiff-style side (Petitioner) and Greenthread on the responding side (Patent Owner). That matches the prior "Defendant representatives" section, which covered Greenthread's McKool Smith/Farnan team — so the "plaintiff" counsel to identify here is the Petitioner, Semiconductor Components Industries, LLC d/b/a onsemi. (If by "plaintiff" you meant the plaintiff in the underlying district court action, Greenthread, LLC v. ON Semiconductor Corp., 1:23-cv-00443 (D. Del.), that plaintiff is Greenthread, and its counsel are already set out in the earlier section.)

Petitioner's counsel of record (Baker Botts L.L.P.)

The controlling source is Petitioner's Updated Mandatory Notices (37 C.F.R. §§ 42.8(b)(3)–(4)), dated April 29, 2025, which designates the following for IPR2024-00263 and the consolidated second-wave IPRs (‑00264, ‑00265, ‑00266):

Sources: Petitioner's Updated Mandatory Notices (Apr. 29, 2025), PTAB PTACTS, https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1554418](/patent/1554418)/download-documents?artifactId=yhsXG0hI89iCJ33-LxjXDhYXC2s1m1iMRFLV8Mk80s_hizkcWWcsNP0; Board Order, IPR2024‑00263 Paper 58 (May 28, 2025) (counsel block) — https://www.docketalarm.com/cases/PTAB/IPR2024-00266/Semiconductor_Components_Industries_LLC_v._Greenthread_LLC/docs/05-28-2025-Board/Order__Other-60-ORDER_Conduct_of_Proceeding_37_CFR_%C2%A7_425.pdf?download=true; Banner Witcoff reprint of the IPR2024‑00263 order, https://bannerwitcoff.com/wp-content/uploads/2025/07/IPR2024-00263.pdf; Conference-call transcript (May 1, 2025) in which Fulghum identifies himself as "lead counsel for Petitioner" with backup counsel "Mark Spiegel, Ellyar Barazesh, and Daniel Anderson… Elliott Williams," https://ptacts.uspto.gov/ptacts/public-informations/petitions/1554418/download-documents?artifactId=U7N9UmttW92wjIyNQ… (PTACTS).

(Note on that transcript: the reporter rendered the names as "Mark Spiegel" and "Eliot/Elliott Williams"; the filings show the correct spellings are Mark Speegle and Eliot D. Williams. The transcript's "Mark Spiegel" is a transcription/confusion artifact, not a separate attorney — the docketed service lists carry only Speegle.)

In-house / client representatives (not counsel of record)

• Rob Tuttle — Chief IP Counsel, onsemi (appeared as Petitioner's client representative on the May 1, 2025 conference call).
• Josh(ua) Engel — in-house counsel, onsemi (appeared as corporate representative on conference calls and at the July 23, 2025 Murphy deposition).

Gaps and caveats

• No Delaware local counsel appears in this IPR. PTAB practice does not require local counsel, and none is listed on the Petitioner's counsel block in IPR2024‑00263.
• District court defense counsel not verified. I was unable to complete a docket-level check of who represents onsemi/ON Semiconductor in Greenthread v. ON Semiconductor, 1:23-cv-00443 (D. Del.). Given Baker Botts's central role across the Greenthread IPR portfolio (and the dlgreenthreadvonsemi@bakerbotts.com distribution list used for district-court correspondence), it is likely the same team handles the Delaware case, but I could not confirm local Delaware counsel for onsemi — I'm flagging this rather than naming an attorney I have not verified.
• Texas Instruments co-petitioner point. Some related filings (e.g., IPR2023‑01242 and IPR2024‑00266 caption material) list "Semiconductor Components Industries, LLC d/b/a onsemi and Texas Instruments Incorporated" as Petitioners, with TI represented separately by Fish & Richardson (Joshua Griswold). The IPR2024‑00263 caption and counsel block, however, list onsemi alone, so TI's counsel should not be attributed to this specific proceeding.
• Contradiction flagged with metadata. The case metadata lists a termination date of 2026‑02‑23 (FWD) and status "Final Written Decision," while Docket Alarm/IP Verse pages show a termination date of Feb. 4, 2026 and status "Final Written Decision – Appealed," with the panel having changed (Paper 75, Dec. 12, 2025) and Judge Tornquist appearing in the judge list. So the proceeding appears to have been appealed to the Federal Circuit after the FWD, which is not reflected in the metadata.

Counsel of record representing Greenthread, LLC (Patent Owner) in IPR2024-00263 includes attorneys from the following firms:

• McKool Smith, P.C.

  • Alan L. Whitehurst (Lead Counsel)
    • Firm: McKool Smith, P.C., Washington, DC office.
    • Note: Whitehurst is a seasoned patent litigator with extensive experience in intellectual property disputes, particularly in the semiconductor and technology sectors, representing patent owners in both district court and PTAB proceedings. He was noted as counsel for Patent Owner in a May 1, 2025 conference call for IPR2024-00263 and other related IPRs. He also represented Greenthread in the related district court litigation against ON Semiconductor.
  • Arvind Jairam (Counsel)
    • Firm: McKool Smith, P.C., Washington, DC office.
    • Note: Jairam has experience in complex patent litigation, including IPRs, often working on cases involving high-technology clients. He was also present as counsel for Patent Owner during the May 1, 2025 conference call for IPR2024-00263.
  • Jennifer Truelove (Counsel)
    • Firm: McKool Smith, P.C., Marshall, TX office.
    • Note: Truelove focuses on patent litigation, representing clients in various technology fields, and has been listed as counsel for Greenthread in related district court filings.
  • John B. Campbell (Counsel)
    • Firm: McKool Smith, P.C., Austin, TX office.
    • Note: Campbell is a prominent patent litigator known for representing clients in high-stakes intellectual property disputes, including semiconductor patent cases.

• Farnan LLP

  • Brian E. Farnan (Local Counsel)
    • Firm: Farnan LLP, Wilmington, DE office.
    • Note: Farnan is a founding partner with extensive experience in patent litigation in the District of Delaware, often serving as local counsel for both plaintiffs and defendants.
  • Michael J. Farnan (Local Counsel)
    • Firm: Farnan LLP, Wilmington, DE office.
    • Note: Michael Farnan is also a partner at Farnan LLP, specializing in intellectual property and commercial litigation in Delaware.