Litigation

Sentient Sensors, LLC v. Xilinx Incorporated

Stayed pending IPR; active

1:22-cv-00173-MN

Filed
2022-02-08

Patents at issue (1)

6938177PTAB: final decision

Summary

Sentient accused Xilinx's Zynq-7000, Zynq UltraScale+ (incl. Kria), and Versal product families of infringing the '177 patent; stayed pending IPR2023-00195.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

Case Overview & Background

Parties. Plaintiff Sentient Sensors, LLC is a small Albuquerque, New Mexico patent-holding entity tied to sole inventor Kenneth Blemel and his company Management Sciences Inc. ("MSI"); in the IPR, Sentient identified itself and MSI as the only real parties-in-interest (PO Mandatory Notices, IPR2023-00195, Paper 4). Sentient has run a focused monetization campaign on this single patent against programmable-logic/SoC vendors, previously suing National Instruments (as Blemel Technologies LLC, E.D. Tex./W.D. Tex.), Microsemi (E.D. Tex., over its SmartFusion2 SoC FPGAs), and Cypress Semiconductor (D. Del. No. 19-1868-MN, before the same Judge Noreika, dismissed with prejudice). Defendant Xilinx Incorporated is the pioneering FPGA and adaptive-SoC manufacturer (San Jose, CA, Delaware-incorporated); its Rule 7.1 disclosure identifies Advanced Micro Devices, Inc. as an affiliate (D.I. 12), reflecting AMD's acquisition of Xilinx that closed days after suit was filed — and AMD and ATI Technologies ULC later joined Xilinx as co-petitioners in the IPR. Accused products. Sentient alleges direct and induced infringement (and willfulness, based on notice letters to then-CEO Moshe Gavrielov and IP Director Justin Liu in 2016–2017) by Xilinx's processor-plus-programmable-logic "system-on-chip" families: the Zynq-7000 SoC, Zynq UltraScale+ MPSoC (including the Kria SOM line), and Versal ACAP devices and their development kits (Complaint ¶¶ 16–24). Patent. The sole asserted patent is U.S. Patent No. 6,938,177 B1, "Multi-Chip Module Smart Controller" (issued Aug. 30, 2005; filed Dec. 19, 2001), whose independent claim 1 is drawn to an instrument controller combining non-volatile and volatile memory, a processor with embedded initialization memory and high/low-frequency oscillators, an FPGA coupled to the processor and configured to run independent processes in parallel with it, and multiple analog-to-digital converters digitizing at variable bit depths — with one portion of the FPGA gates performing signal processing and another operating as a signal-distribution matrix for rerouting signals. The patent traces to Air Force-funded work at Kirtland AFB under a CRADA, with roots in the 1980s Strategic Defense Initiative program (Complaint ¶ 14; PTAB FWD background).

Procedural posture. Filed Feb. 8, 2022 in the District of Delaware (Wilmington), No. 1:22-cv-00173-MN, with a jury demand, the case was assigned to Judge Maryellen Noreika, a former patent litigator who handles a heavy patent docket in Delaware — an efficient, experienced forum where Xilinx, as a Delaware corporation, is subject to suit and where Sentient had already litigated (and resolved) the same patent against Cypress. Xilinx moved to dismiss for failure to state a claim (D.I. 10–11, Apr. 1, 2022) while preparing a PTAB challenge, filing IPR2023-00195 on Feb. 3, 2023 against all 20 claims across five obviousness grounds built on the Lyke MCM patent plus Dehkordi, Frantz, Faura, Krasner, Christian, and Steele, and stipulating (Sotera-style) not to pursue the instituted grounds in district court (IPR petition Ex. 1022). The PTAB instituted Sept. 20, 2023, and the district case was stayed pending the IPR — the parties' 2024 IPR filings still list the Delaware action as "(stayed)" and "active." The Board issued its Final Written Decision on Sept. 18, 2024 finding the challenged claims unpatentable as obvious, and Sentient appealed to the Federal Circuit (No. 25-1058), arguing claim-construction error over the "independent processes in parallel" limitation; on April 10, 2026, the Federal Circuit affirmed in a nonprecedential Rule 36 judgment per curiam (Judges Chen, Cunningham, Stark) (CAFC Rule 36 Judgment, 25-1058). As of the metadata date, the district case remains stayed/active, presumably awaiting final disposition now that the PTAB invalidation is final.

Why it matters. The case illustrates a recurring NPE pattern: a single inventor-origin patent of government-funded vintage, asserted serially against every major vendor shipping microprocessor-plus-FPGA heterogeneous SoCs — the architectural centerpiece of Xilinx's (now AMD's) Zynq and Versal adaptive-computing franchises. Its notability lies in (1) the stakes of AMD/Xilinx choosing to litigate validity in the PTAB across all claims rather than license, with AMD and ATI ULC formally joined as petitioners; (2) the district-court stay and Sotera stipulation, which funneled the entire dispute into IPR2023-00195; and (3) the outcome — a complete obviousness invalidation of a 20-claim patent affirmed by the Federal Circuit in 2026, effectively ending the campaign against Xilinx and likely extinguishing the district court infringement case. The oral argument in Appeal No. 25-1058 (available on CourtListener and CAFC) captures the dispositive fight over whether the claimed FPGA "independent processes" required more than merely separate processor/FPGA operations.

Sources: Justia docket for 1:22-cv-00173-MN; complaint and PTAB filings (PTACTS / IPR2023-00195 papers, incl. PO Mandatory Notices and the Board's Final Written Decision as posted at bannerwitcoff.com); ipverse.greyb.com IPR2023-00195 case page; CAFC Rule 36 Judgment (25-1058, Apr. 10, 2026); Law360 Delaware/Aerospace headlines (Apr. 10, 2026); CourtListener oral-argument audio. The specific district-court docket entry effecting the stay was not independently verified on PACER in this research and is inferred from the parties' IPR filings and case metadata.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Sentient Sensors, LLC v. Xilinx Incorporated — Key Legal Developments & Outcome

Case: 1:22-cv-00173-MN (D. Del., Judge Maryellen Noreika) · Patent: U.S. 6,938,177 B1 (all 20 claims) · Parallel IPR: IPR2023-00195 · Federal Circuit appeal: No. 25-1058

Below is the chronological record, with source citations and explicit flags where facts rest on inference rather than a verified docket entry. It builds on (and does not repeat) the earlier case overview.

1. Filing & Initial Pleadings

Date Event
2022-02-08 Complaint filed with jury demand, alleging direct, induced, and contributory infringement and willfulness of the '177 patent; accused Xilinx's Zynq-7000, Zynq UltraScale+ (incl. Kria), and Versal product families (D.I. 1; Docket Report in PTAB Ex. 1021, retrieved 2023-01-14). Plaintiff's Delaware counsel: Farnan LLP; trial team later included Andrew J. Cochran (Cahill), Gerald J. Flattmann Jr. (Cahill), Michael Shanahan, John C. Stellabotte, and Scott H. Kaliko (pro hac entries, D.I. 19–27).
2022-02-08/09 Summons issued (D.I. 4); Xilinx served 2022-02-09 (D.I. 5).
2022-02-16 Case assigned to Judge Maryellen Noreika.
2022-03-03 Xilinx (then represented by Richards, Layton & Finger — Cottrell/Ewing) stipulated to extend its answer deadline to 2022-04-01; so ordered (D.I. 6–8). Note: Richards Layton counsel were terminated 2022-04-26 as Fish & Richardson (Mabey, Hoffman, Shneidman) and Robins Kaplan (Fahrenkrog, Tremblay, Pheng, Jones) took over (D.I. 9 and related pro hac entries).
2022-11-09 Xilinx's Answer with jury demand (D.I. 28) — filed only after the Rule 12 motion was denied; no counterclaims are reflected in the docket text.

Filing note on counterclaims: The docket entry for D.I. 28 identifies it simply as an "ANSWER to 1 Complaint, with Jury Demand." I found no indication of counterclaims. That portion of the docket has not been independently verified on PACER.

2. Pre-Trial Motions of Substance

  • Motion to dismiss (Rule 12(b)(6)) — DENIED. Xilinx moved to dismiss for failure to state a claim on 2022-04-01 (D.I. 10–11, with Rule 7.1 disclosure identifying AMD as an affiliate at D.I. 12). Following briefing and a motion hearing on 2022-10-26, Judge Noreika denied the motion; per the Minute Entry (D.I. 26), "The transcript shall serve as the Court's ruling" (Court Reporter: Dale Hawkins). The court's reasoning was not published in a written opinion; it exists only in the hearing transcript.
  • Motion to transfer: None identified.
  • Motion to stay pending IPR — GRANTED (by inference, not verified entry). Xilinx filed IPR2023-00195 on 2023-02-03; the PTAB instituted on 2023-09-20. The district case was thereafter stayed pending the IPR: Sentient's May 2024 mandatory notices in the IPR list the Delaware action as "(stayed)" (Sentient PO Mandatory Notices, IPR2023-00195, dated 2023-05-03/2024-05-03). Flag: I have not located the specific district-court docket entry granting the stay (D.I. number/date) in open sources; it is inferred from the parties' IPR filings and the case-status metadata. The stay's timing relative to institution (before vs. after 2023-09-20) is likewise unverified.
  • Summary judgment: None — the case never reached merits SJ; the dispositive merits determination occurred in the PTAB, not the district court.
  • Sotera-style stipulation: As noted in the prior overview, Xilinx stipulated in the IPR not to pursue the instituted grounds in the district court (IPR petition Ex. 1022), ensuring the IPR would be case-dispositive.

3. Claim Construction (Markman)

  • No district-court Markman ruling was ever issued. Judge Noreika's 2022-11-09 oral order (D.I. 29) directed the parties to propose a scheduling order consistent with guidance on final infringement/invalidity contentions, indicating the case was moving toward standard Delaware claim-construction procedures — but the IPR petition (2023-02-03) and the resulting stay intervened.
  • The parties did produce a Joint Claim Construction Brief in the district court at some point; Xilinx later filed that brief as Exhibit 1051 in the IPR on 2024-03-21 (Patexia document index for IPR2023-00195). Flag: The date the JCCB was filed in the district court is not confirmed; it may have been completed while a stay motion was pending, or the exhibit date may reflect only its submission in the IPR. Either way, the operative constructions were decided by the PTAB, not Judge Noreika.
  • Dispositive construction (in the IPR): The Board construed the "independent processes in parallel" limitation (claim element 1.5) to permit either type of independence — FPGA processes running separately from each other or separately from the processor — rejecting Sentient's narrower reading that the processes must be computational and run without computational assistance from the processor (see FWD, IPR2023-00195; Patent Owner's and Petitioner's demonstratives; CAFC oral-argument audio, 2025-1058, arguing Dec. 2025–Apr. 2026). This construction drove the obviousness outcome and was the sole substantive issue on appeal.

4. Discovery Milestones with Strategic Significance

Because the case was stayed early and never went to trial, no substantive merits discovery occurred in the district court. Strategically significant events instead clustered around:

  • Willfulness notice discovery (never reached): The complaint pled willfulness based on 2016–2017 notice letters to then-CEO Moshe Gavrielov and IP Director Justin Liu and reserved discovery on that issue (Complaint ¶¶ 16–18) — discovery that was forestalled by the stay and ultimately mooted by invalidation.
  • Scheduling-order stage: The Court's D.I. 29 (2022-11-09) guidance on final contentions shows the case was being pushed toward early final contentions under Judge Noreika's streamlined practice, but the record does not show a formal scheduling order or any fact/ expert discovery cutoff before the stay.
  • No expert discovery, no depositions of consequence, no privilege battles are documented in open sources.

5. Trial, Verdict, and Post-Trial Motions

  • No trial occurred; there was no verdict, no JMOL, no new-trial motion, and no § 285 fee motion. The entire merits phase was displaced by the PTAB proceeding (the Sotera stipulation plus the stay funneled the dispute entirely into IPR2023-00195).

6. The Parallel IPR and Its Effect on the Litigation (the case's real outcome)

Date IPR / Appeal Event
2023-02-03 IPR2023-00195 petition filed by Xilinx (joined by co-petitioners Advanced Micro Devices, Inc. and ATI Technologies ULC; appellees in the CAFC appeal) challenging all 20 claims on five § 103 grounds built on Lyke + Dehkordi/Frantz/Faura (+ Krasner, Christian, Steele).
2023-09-20 PTAB institution decision on all grounds (Paper 12).
2023–2024 Patent Owner Response (Paper 18, Peck decl.), Petitioner Reply (Paper 21, Shanfield supp. decl. — filed with the district-court JCCB as Ex. 1051 on 2024-03-21), Sur-reply (Paper 24).
2024-05-03 Sentient's mandatory notices list the Delaware action as "stayed" and otherwise active.
2024-06-26 IPR oral hearing (transcript Paper 35) — the fight centered entirely on claim construction of "independent processes in parallel" and the level of ordinary skill.
2024-09-18 Final Written Decision: all challenged claims (1–20) found unpatentable as obvious (IPR2023-00195, Paper 36). The Board found the claimed gate-array/independent-process and converter elements taught by the cited art under its constructions.
~2024-11 Sentient appeals to the Federal Circuit (No. 25-1058), raising claim-construction error and substantial-evidence challenges.
2026-04-08 Oral argument before Judges Chen, Cunningham, and Stark (audio on CAFC/CourtListener) — Sentient argued the Board erred in not requiring both forms of independence (computational processes running without computational assistance); Xilinx argued plain meaning and that the art met either reading.
2026-04-10 Federal Circuit AFFIRMED in a nonprecedential Rule 36 judgment per curiam (Chen, Cunningham, Stark) — "AFFIRMED. See Fed. Cir. R. 36." (25-1058 Judgment, Doc. 49, filed 2026-04-10; also reported by Law360 and ScaleJuris).

7. Settlement, Dismissal, Judgment, or Appeal — Present Posture

  • No settlement and no stipulated dismissal occurred.
  • The dispositive "judgment" in substance is the PTAB's Final Written Decision (2024-09-18), now final after the Federal Circuit's 2026-04-10 Rule 36 affirmance. With all 20 claims invalidated and no further appeal available (no petition for cert. has been identified as of 2026-09-09), the '177 patent is dead as a matter of res judicata/collateral estoppel, and the Sotera stipulation plus § 315(e) estoppel bar Xilinx/AMD from re-litigating the instituted grounds — while Sentient is equally barred from recovering on the invalidated claims.
  • Present posture (as of 2026-09-09): The district action remains on the docket as stayed/active. No district-court docket entry terminating the case (voluntary dismissal, judgment on the pleadings, or lift-of-stay-and-dismiss) has been confirmed in open sources. The practical expectation is that the district case will be dismissed or closed without trial now that the IPR invalidation is final — but that final administrative step had not been confirmed as of the research date.
  • What did not happen: no claim construction ruling by Judge Noreika; no discovery disputes; no summary judgment; no trial; no damages award; no fee award; no settlement.

Sources

  • District-court Docket Report for 1:22-cv-00173-MN (retrieved 2023-01-14), filed as Ex. 1021 in IPR2023-00195 (PTACTS) — D.I. 1, 5, 8, 10–12, 26, 28, 29 events; counsel lineup.
  • Justia docket page for 1:22-cv-00173-MN (retrieved 2022-04-01) — early filings (D.I. 1–12).
  • IPR2023-00195 Final Written Decision (Paper 36, 2024-09-18), hosted at bannerwitcoff.com; PO Mandatory Notices (Paper 4, and May 2024 notices); oral-hearing transcript (Paper 35) and demonstratives via PTACTS.
  • CAFC Rule 36 Judgment, Sentient Sensors LLC v. Xilinx, Inc. et al., No. 25-1058 (Doc. 49, entered 2026-04-10) (cafc.uscourts.gov; law.justia.com); oral-argument audio (2026-04-08, CourtListener/CAFC).
  • Law360 Delaware (2026-04-10) and ScaleJuris coverage of the affirmance.
  • Patexia document index for IPR2023-00195 (Ex. 1051 — district-court Joint Claim Construction Brief, 2024-03-21); ipverse.greyb.com IPR2023-00195 case page.

Unverified items (flagged): the exact district-court docket entry and date of the stay order; any scheduling order entered before the stay; the district-court filing date of the Joint Claim Construction Brief; and the absence/presence of counterclaims beyond the docket text for D.I. 28.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Plaintiff's counsel of record — Sentient Sensors, LLC v. Xilinx Inc., No. 1:22-cv-00173-MN (D. Del.)

The counsel of record for plaintiff Sentient Sensors, LLC (from the district-court docket as retrieved Jan. 14, 2023 via the PTAB's PTACTS docket-history print, cross-checked against the parties' IPR2023-00195 mandatory-notice and power-of-attorney filings and the Federal Circuit Rule 36 judgment in Appeal No. 25-1058):

Substantive / pro hac vice counsel (lead and support)

  • Gerald J. Flattmann, Jr. — Lead counsel for plaintiff (designated "Lead Counsel" in the patent owner's IPR2023-00195 mandatory notices; pro hac vice in D. Del.). Firm: Cahill Gordon & Reindel LLP, 32 Old Slip, New York, NY 10005 (he joined Cahill as an IP litigation partner on Jan. 3, 2023, and is co-chair of the firm's IP Litigation and Life Sciences Patent Litigation practices). Experience: 30+ year patent trial lawyer (Harvard Law/Yale), Chambers- and Legal 500-recognized, with lead roles in Delaware Hatch-Waxman/ANDA trials (e.g., Galderma v. Sun Pharmaceuticals, Galderma v. Amneal) and high-profile IPRs (Acorda, Amneal v. Supernus, Coalition for Affordable Drugs/Insys). He signed the patent owner's IPR filings and was counsel of record for Sentient on the Federal Circuit appeal.
  • Andrew J. Cochran — Pro hac vice / backup counsel (designated "Backup Counsel" in the IPR mandatory notices; argued the CAFC appeal for Sentient). Firm: Cahill Gordon & Reindel LLP, New York, NY (the Jan. 14, 2023 docket print still listed his email as acochran@kslaw.com, indicating he was at King & Spalding when he entered the case and moved to Cahill during the litigation — by the May 2024 IPR notices and the April 10, 2026 CAFC judgment he is listed at Cahill). Experience: argued Sentient Sensors LLC v. Xilinx, Inc., AMD, ATI Technologies ULC, No. 25-1058 (Fed. Cir.) against the PTAB's obviousness ruling; seasoned IP litigator.
  • John C. Stellabotte — Pro hac vice / backup counsel. Firm: Ellenoff Grossman & Schole LLP, 1345 Avenue of the Americas, 11th Fl., New York, NY 10105 (partner, IP & Litigation groups; registered patent attorney). Experience: 16 years at Proskauer Rose before EGS, plus Sullivan & Cromwell; handles patent, copyright, and trade-secret trials, Markman hearings, and IPR/reexamination matters across computer-hardware/software and telecom technologies.
  • Scott H. Kaliko — Pro hac vice. Firm: Ellenoff Grossman & Schole LLP, New York, NY (partner, IP Group; registered patent attorney with EE/physics background). Experience: 20+ years as IP counsel, first-chair in patent/copyright/trademark litigations, and prosecution/enforcement work; formerly of Kaliko & Associates PC. (Note: A third-party attorney index, exparte.com, additionally associates Michael Shanahan — now of YK Law LLP, formerly Kaliko & Associates — with this case as patent-owner-side counsel, but Shanahan does not appear in the Jan. 2023 docket-print attorney list, and I could not verify a formal appearance; treat that as unconfirmed.)

Delaware local counsel

  • Brian E. Farnan — Lead Delaware local counsel ("LEAD ATTORNEY; ATTORNEY TO BE NOTICED" on the docket). Firm: Farnan LLP, 919 N. Market St., 12th Fl., Wilmington, DE 19801. Experience: veteran Delaware IP litigator whose boutique (with Michael Farnan) regularly serves as local counsel in D. Del. patent cases, including Sentient's related earlier suit against Cypress before Judge Noreika (No. 19-1868-MN).
  • Michael J. Farnan — Delaware local counsel. Firm: Farnan LLP, Wilmington, DE. Experience: partner at the firm; handles Delaware patent dockets alongside Brian Farnan.

Former local counsel (substituted out)

  • Frederick L. Cottrell II and Alexandra M. Ewing — Original Delaware local counsel, Richards, Layton & Finger, P.A., Wilmington, DE, appearing at filing (early docket entries bear Cottrell's name) and terminated April 26, 2022, when Farnan LLP took over as local counsel.

Observations

  • No in-house counsel of record: Sentient is a small New Mexico patent-holding entity; its IPR Power of Attorney was signed by Marlene K. Blemel (Managing Director), not by an attorney of record.
  • Representation timeline caveat: The district case has been stayed pending IPR2023-00195 since roughly late 2023, and the Jan. 14, 2023 docket print is the most recent complete counsel list I could confirm. The substantive team's firm affiliations shifted mid-case (Flattmann and Cochran moved from King & Spalding-era affiliations to Cahill; Flattmann joined Cahill Jan. 2023 and Cochran appears there by 2024–2026 filings). Because no merits filings have occurred during the stay, I could not confirm via PACER whether any substitution or withdrawal occurred after the stay; nothing I found indicates a change.
  • No filings are sealed that would obscure these appearances; the only unverified item is the possible additional appearance of Michael Shanahan (see above).

Key sources: PTACTS docket-history print of 1:22-cv-00173 (ptacts.uspto.gov, artifact eUfrn7KW5teiC4JtVfYtk_K6ylHJjYZnDLIBuRJIhhN19NkAeC3pfuo); Patent Owner's Mandatory Notices, IPR2023-00195 (May 3, 2024) and Patent Owner's Power of Attorney (May 2, 2024) (ptacts.uspto.gov); CAFC Rule 36 Judgment, No. 25-1058 (Apr. 10, 2026, cafc.uscourts.gov / Justia); Cahill firm news and Gerald Flattmann bio (cahill.com); EGS LLP attorney pages for Kaliko and Stellabotte (egsllp.com); Justia docket for 1:22-cv-00173; exparte.com attorney index (Shanahan entry, unverified).

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Counsel of Record for Defendant Xilinx Incorporated

A. Current/principal defense team — Fish & Richardson P.C.

The defense was (and remains) anchored by Fish & Richardson, which handled the district court case, the PTAB IPR (IPR2023-00195, with AMD and ATI Technologies ULC as co-petitioners), and the Federal Circuit appeal (No. 25-1058). The PACER/CM-ECF docket print (retrieved Jan. 14, 2023, via PTACTS) and Justia docket entries identify the following Fish attorneys of record for Xilinx in 1:22-cv-00173-MN:

Name Role Firm / Office Experience note
Warren K. Mabey Jr. Lead attorney / Delaware local counsel (marked LEAD ATTORNEY on the docket) Fish & Richardson P.C., Wilmington, DE Fish's Delaware office recruiting principal; former law clerk to Federal Circuit Judge Raymond T. Chen (2016–17) and a former DoD electrical engineer — deep D. Del. patent-litigation practice.
David M. Hoffman Pro hac vice; also lead petitioner counsel in IPR2023-00195 Fish & Richardson P.C., Austin, TX Registered practitioner who led the successful IPR petition invalidating all 20 claims of the '177 patent; also on the CAFC appellee briefs (Hoffman was listed with the firm's Minneapolis service address on PTAB filings but as Austin, TX in the CAFC judgment).
Jeffrey A. Shneidman Pro hac vice (district court); backup IPR counsel; argued the appeal Fish & Richardson P.C., Boston, MA Argued for Xilinx/AMD/ATI before the Federal Circuit in the April 10, 2026 Rule 36 affirmance of the PTAB's invalidation (Judges Chen, Cunningham, Stark); admitted pro hac vice in the IPR in Feb. 2024.
Daniel Lee Pro hac vice (admitted per D.I. 22, May 2022) Fish & Richardson P.C. Appeared with Hoffman and Shneidman via the May 10, 2022 PHV motion; office location not independently verified.
Kenneth Wayne Darby Jr. IPR backup counsel and CAFC appellee counsel (not confirmed on the district docket) Fish & Richardson P.C., Austin, TX Co-counsel on the IPR petition and the CAFC appeal (listed in the Rule 36 judgment).
Craig A. Deutsch IPR backup counsel (not confirmed on the district docket) Fish & Richardson P.C. (Minneapolis service address of record) Registered backup counsel for petitioners in IPR2023-00195 per the Final Written Decision and service certificates.
John A. Dragseth CAFC appellee counsel (not confirmed on the district docket) Fish & Richardson P.C., Minneapolis, MN Veteran Fish trial partner added for the Federal Circuit appeal per the Rule 36 judgment.

B. Initial defense team — Robins Kaplan LLP (pro hac vice) and Richards, Layton & Finger (local)

Before Fish & Richardson entered (May 2022), Xilinx appeared through a Robins Kaplan LLP national team with Richards, Layton & Finger as Delaware local counsel. Per D.I. 9 (filed Mar. 9, 2022) and the docket entries admitting them in March 2022, all four were added for Xilinx:

Name Role Firm / Office Experience note
William R. Jones Pro hac vice (admitted Mar. 10, 2022) Robins Kaplan LLP (Silicon Valley) Robins Kaplan patent-litigation partner; status on the docket at the time of the stay is unclear from the truncated docket print (no termination shown as of Jan. 2023).
Aaron R. Fahrenkrog Pro hac vice (admitted Mar. 11, 2022) Robins Kaplan LLP (Silicon Valley) Same team; no termination shown in the Jan. 2023 docket print.
Mary Pheng Pro hac vice (admitted Mar. 28, 2022) Robins Kaplan LLP (Silicon Valley) Same team; no termination shown in the Jan. 2023 docket print.
Emily J. Tremblay Pro hac vice (admitted Mar. 10, 2022; later terminated) Robins Kaplan LLP (Silicon Valley) The docket print marks her appearance as terminated (date not visible in the retrieved excerpt).
Frederick L. Cottrell II Lead/local Delaware counsel (appeared Mar. 3, 2022; terminated Apr. 26, 2022) Richards, Layton & Finger, P.A., Wilmington, DE Longtime prominent D. Del. patent litigator (RLF) who handled Xilinx's entry and early motion practice before Fish & Richardson's Wilmington office took over.
Alexandra M. Ewing Lead/local Delaware counsel (appeared Mar. 3, 2022; terminated Apr. 26, 2022) Richards, Layton & Finger, P.A., Wilmington, DE RLF associate on the same initial local-counsel team.

C. In-house counsel

None identified. Neither the PACER-derived docket prints nor the Justia/PTACTS entries reflect an appearance by a Xilinx, AMD, or ATI in-house attorney as counsel of record in the district court case. The Rule 7.1 disclosure (D.I. 12) naming AMD as an affiliate was filed through outside counsel. I found no public evidence of in-house counsel entering appearances.

D. Caveats and sourcing notes

  • No filings sealed, and counsel have appeared — the case is not one where defendant's counsel is hidden. The primary source is the PACER docket report reproduced at ptacts.uspto.gov (case 1:22cv173, retrieved Jan. 14, 2023) and the Justia docket (dockets.justia.com/docket/delaware/dedce/1:2022cv00173/77958, last retrieved Apr. 1, 2022), which show the PHV admission entries and the D.I. 9 and D.I. 22 motions.
  • Timeline inference (flagged): The appearance dates strongly suggest Xilinx initially retained Robins Kaplan (with RLF local) and then shifted to Fish & Richardson (with Fish's own Wilmington office, i.e., Mabey, as local counsel) around late April–May 2022 — RLF's termination date (Apr. 26, 2022) matches that transition, and Fish filed its PHV motion (D.I. 22) on May 10, 2022. I could not verify on the available docket excerpts whether the Robins Kaplan attorneys (Jones, Fahrenkrog, Pheng) formally remained on the case or withdrew, since only Tremblay's termination is visible in the truncated text. Treat the Robins Kaplan group as "initial counsel, possibly later replaced."
  • Darby, Deutsch, and Dragseth are confirmed as IPR/CAFC counsel from the PTAB Final Written Decision, service certificates, and the Federal Circuit Rule 36 judgment (25-1058, Apr. 10, 2026), but I did not confirm they appeared in the district court; the district docket print shows only Mabey, Hoffman, Shneidman (and Lee via D.I. 22) for Fish.
  • Daniel Lee's office and Robins Kaplan attorneys' specific office assignments were not independently verified; offices for Robins Kaplan counsel are inferred from the firm's Silicon Valley patent practice and the @robinskaplan.com addresses in the docket print.
  • The Andrew J. Cochran … @kslaw.com entry in the same docket print is plaintiff Sentient's counsel (Cochran moved from King & Spalding to Cahill Gordon and represented Sentient in the IPR/appeal) — included here only to avoid misattribution.