Texas Instruments Inc. v. Greenthread, LLC

Texas Instruments Inc. v. Greenthread, LLC involved an Inter Partes Review (IPR) petition, IPR2024-00774, filed by petitioner Texas Instruments Inc. against patent owner Greenthread, LLC, concerning U.S. Patent No. 11,316,014. Texas Instruments Inc. is a multinational semiconductor company headquartered in Dallas, Texas, known for designing and manufacturing analog chips and embedded processors, and is a major player in the semiconductor industry. Greenthread, LLC, based in Texas, operates as a non-practicing entity (NPE), also known as a patent assertion entity (PAE), asserting semiconductor-related patents that it acquired, including those from inventor G.R. Mohan Rao. The IPR was terminated due to settlement on April 18, 2024, a week after its filing.

The IPR stemmed from an underlying patent infringement litigation, Greenthread, LLC v. Texas Instruments Inc., filed in the U.S. District Court for the Eastern District of Texas (Case No. 23-cv-00157, filed April 6, 2023). In this litigation, Greenthread accused Texas Instruments of infringing U.S. Patent No. 11,316,014, among other related patents in a family referred to as the "Greenthread Patents". These patents generally relate to semiconductor devices that incorporate graded dopants and well regions to create electric fields, which aid or limit the movement of charge carriers within the semiconductor material. The specific accused products or technology would be Texas Instruments' semiconductor devices that allegedly embody these features. The Eastern District of Texas is a well-known venue for patent litigation due to its reputation for a fast-paced docket and judges experienced in patent law.

This case is notable as it exemplifies a common pattern of NPEs like Greenthread, LLC asserting semiconductor patents against large operating companies in the tech industry. Greenthread has a history of asserting its portfolio against multiple major technology companies, including Intel, Dell, Samsung, Cirrus Logic, and Monolithic Power Systems, often leading to IPR challenges from the defendants. The early termination of this IPR due to settlement indicates a resolution between the parties, likely including the underlying district court litigation, consistent with how many NPE assertions conclude. This highlights the strategic interplay between district court infringement suits and parallel IPR proceedings in patent disputes involving NPEs.

Key Legal Developments and Outcome

The district court litigation between Greenthread, LLC and Texas Instruments Inc. was a short-lived case, marked by its swift resolution following the filing of a parallel proceeding at the Patent Trial and Appeal Board (PTAB). The case exemplifies a common strategy where the filing of an Inter Partes Review (IPR) acts as a catalyst for settlement.

Chronological Developments:

• 2023-04-06: Complaint Filed
  Greenthread, LLC filed a patent infringement complaint against Texas Instruments Inc. in the U.S. District Court for the Eastern District of Texas (Case No. 2:23-cv-00157-JRG). The lawsuit alleged that Texas Instruments' semiconductor products infringed on a family of six patents, including U.S. Patent No. 11,316,014. The asserted patents generally relate to improved semiconductor device structures. This case was one of several similar lawsuits Greenthread filed around the same time against other major technology companies like OmniVision Technologies and OSRAM, which were all handled by Judge Rodney Gilstrap.

• 2023-06-20: Answer and Counterclaims
  Texas Instruments filed its answer to the complaint, denying infringement and asserting that Greenthread's patents were invalid. Concurrently, Texas Instruments filed counterclaims seeking a declaratory judgment of non-infringement and invalidity of the asserted patents.

• 2024-04-10: IPR Petition Filed
  In a move to challenge the validity of the asserted patent outside of the district court, Texas Instruments filed a petition for an Inter Partes Review (IPR) with the PTAB (Case No. IPR2024-00774). The petition challenged the patentability of claims in U.S. Patent No. 11,316,014, one of the key patents in the litigation.

• 2024-04-18: Settlement and Termination of IPR
  Just eight days after the IPR was filed, the parties reached a settlement. A joint motion was filed at the PTAB requesting the termination of the IPR proceeding based on a settlement agreement. The PTAB granted the motion and terminated the IPR on the same day. This rapid sequence strongly suggests that the filing of the IPR petition prompted a swift business resolution between the parties. Under PTAB rules, parties must file their settlement agreement to terminate a proceeding.

• Post-Settlement: Dismissal in District Court
  Following the IPR termination, the parties would have filed a joint stipulation of dismissal in the Eastern District of Texas case, bringing the patent infringement lawsuit to a close. While the exact date is not in the search results, this is the standard procedural step after a settlement is reached. The case did not advance to significant pretrial milestones such as a Markman claim construction hearing or trial.

Parallel Proceedings and Overall Context

The dispute between Greenthread and Texas Instruments did not occur in a vacuum. Greenthread, a non-practicing entity (NPE), has engaged in a broad litigation campaign, asserting its patent portfolio against numerous semiconductor companies, including Intel, Dell, Cirrus Logic, and Monolithic Power Systems. This broader context is relevant, as defendants in these parallel litigations also challenged Greenthread's patents at the PTAB. For example, in a separate set of IPRs (IPR2023-01242, -01243, -01244) involving Greenthread and another company, the PTAB's decisions on discovery and other procedural matters were subject to Director Review, indicating the high stakes and complexity of these related challenges.

The outcome of this case—a rapid settlement and dismissal following the filing of an IPR—is a textbook example of the strategic interplay between district court litigation and PTAB proceedings. For an accused infringer like Texas Instruments, an IPR offers a more specialized, and often faster, venue to argue patent invalidity. The filing of a meritorious IPR petition can significantly increase the patent owner's risk and litigation costs, thereby creating strong leverage for a favorable settlement. The quick resolution here indicates that Greenthread likely preferred to settle rather than face the possibility of the PTAB instituting a trial and potentially invalidating its patent claims.

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The user is asking for the counsel of record for the plaintiff(s), Texas Instruments Inc., in the patent infringement case Greenthread, LLC v. Texas Instruments Inc., 23-cv-00157.
I need to find the attorneys who represented Texas Instruments Inc. in the underlying district court litigation.
For each attorney, I need to provide their name, role, firm and office location, and a one-line note on relevant patent litigation experience.

I will use the case number 23-cv-00157 for the District Court case to search for the counsel of record.Texas Instruments Inc. was represented by attorneys from the firm McKool Smith, P.C. in the underlying patent infringement litigation, Greenthread, LLC v. Texas Instruments Inc., Case No. 23-cv-00157, in the U.S. District Court for the Eastern District of Texas.

While a comprehensive list of all appearing counsel is not immediately available from the provided snippets, one attorney identified as having been involved is:

• Nicholas Theodore Matich, IV (Role not specified, but likely counsel)
  • Firm: McKool Smith, P.C.
  • Office Location: Not specified in the provided search results. (McKool Smith has offices in Dallas, Austin, Houston, and Washington D.C., among others).
  • Note: Matich's representation for Texas Instruments in this case was terminated on March 3, 2025. He is known for his experience in patent litigation.

Further details on specific roles (lead counsel, local counsel) and office locations for other McKool Smith attorneys representing Texas Instruments in this particular case would require reviewing the detailed docket entries of Greenthread, LLC v. Texas Instruments Inc., Case No. 23-cv-00157.

Greenthread, LLC was represented by attorneys from the firm McKool Smith, P.C. in the patent infringement litigation, Greenthread, LLC v. Texas Instruments Inc., Case No. 23-cv-00157, in the U.S. District Court for the Eastern District of Texas.

The following attorneys made appearances on behalf of Greenthread, LLC:

• Samuel Franklin Baxter (Role not specified, but a prominent patent litigator)

  • Firm: McKool Smith, P.C.
  • Office Location: Not specified in the provided search results. (McKool Smith has offices in Dallas, Austin, Houston, and Washington D.C., among others).
  • Note: Samuel Baxter is a well-known and highly experienced patent litigator, frequently appearing in the Eastern District of Texas.

• John Bruce Campbell, Jr. (Role not specified)

  • Firm: McKool Smith, P.C.
  • Office Location: Austin, TX (based on other Greenthread related filings listing his office)
  • Note: John Campbell, Jr. is a patent litigator with experience representing Greenthread in other patent infringement cases.

• Arvind Jairam (Role not specified)

  • Firm: McKool Smith, P.C.
  • Office Location: Washington, DC
  • Note: Arvind Jairam has represented Greenthread in other IPR proceedings and patent-related matters.

• Nicholas Theodore Matich, IV (Role not specified)

  • Firm: McKool Smith, P.C.
  • Office Location: Not specified in the provided search results. (McKool Smith has offices in Dallas, Austin, Houston, and Washington D.C., among others).
  • Note: Nicholas Matich, IV has represented Greenthread in patent cases. His appearance for Texas Instruments was terminated on March 3, 2025, which might indicate a change in representation or a conflict given McKool Smith's overall involvement with Greenthread.

• Neil Vasant Ozarkar (Role not specified)

  • Firm: McKool Smith, P.C.
  • Office Location: Houston, TX (based on other Greenthread related filings listing his office)
  • Note: Neil Ozarkar is a patent litigator who has represented Greenthread in multiple patent infringement cases.

• Jennifer Leigh Truelove (Role not specified)

  • Firm: McKool Smith, P.C.
  • Office Location: Not specified in the provided search results.
  • Note: Jennifer Leigh Truelove appeared on behalf of Greenthread in this case.

• Emily Brantley Tate (Role not specified)

  • Firm: Not specified in the provided search results, but likely McKool Smith, P.C. given the other appearances.
  • Office Location: Not specified in the provided search results.
  • Note: Emily Brantley Tate appeared on behalf of Greenthread in this case.

• Alan Whitehurst (Lead Counsel, based on IPR filings for Greenthread)

  • Firm: McKool Smith, P.C.
  • Office Location: Washington, DC
  • Note: Alan Whitehurst is identified as lead counsel for Greenthread in IPR proceedings and has significant experience in patent litigation for the firm.

It is notable that McKool Smith, P.C. has a strong presence in patent litigation, particularly in the Eastern District of Texas, and frequently represents patent owners in assertions of intellectual property.Greenthread, LLC was represented by a team of attorneys from McKool Smith, P.C. in the underlying patent infringement litigation, Greenthread, LLC v. Texas Instruments Inc., Case No. 23-cv-00157, in the U.S. District Court for the Eastern District of Texas.

The counsel of record for Greenthread, LLC included:

• Samuel Franklin Baxter (Counsel)

  • Firm: McKool Smith, P.C.
  • Office Location: While not explicitly stated in the provided snippets for this specific case, McKool Smith has offices in Dallas, Austin, Houston, and Washington D.C.
  • Note: Samuel Baxter is a highly experienced and well-known patent litigator, particularly active in the Eastern District of Texas.

• John Bruce Campbell, Jr. (Counsel)

  • Firm: McKool Smith, P.C.
  • Office Location: Austin, TX.
  • Note: John Campbell, Jr. is a patent litigator who has represented Greenthread in various patent infringement cases.

• Arvind Jairam (Counsel)

  • Firm: McKool Smith, P.C.
  • Office Location: Washington, DC.
  • Note: Arvind Jairam has represented Greenthread in IPR proceedings and other patent-related matters.

• Nicholas Theodore Matich, IV (Counsel)

  • Firm: McKool Smith, P.C.
  • Office Location: While not explicitly stated, McKool Smith has offices in multiple major U.S. cities.
  • Note: Nicholas Matich, IV has represented Greenthread in patent cases. It's noteworthy that his representation for Texas Instruments in a different matter was terminated in March 2025, suggesting a potential shift in roles or a firm-level involvement with both parties.

• Neil Vasant Ozarkar (Counsel)

  • Firm: McKool Smith, P.C.
  • Office Location: Houston, TX.
  • Note: Neil Ozarkar is a patent litigator with experience representing Greenthread in multiple patent infringement cases.

• Jennifer Leigh Truelove (Counsel)

  • Firm: McKool Smith, P.C.
  • Office Location: Not specified in the search results.
  • Note: Jennifer Leigh Truelove entered an appearance for Greenthread in this case.

• Emily Brantley Tate (Counsel)

  • Firm: Likely McKool Smith, P.C., given the firm's pervasive representation of Greenthread in this case and related matters.
  • Office Location: Not specified in the search results.
  • Note: Emily Brantley Tate entered an appearance for Greenthread in this case.

• Alan Whitehurst (Lead Counsel, in IPR contexts)

  • Firm: McKool Smith, P.C.
  • Office Location: Washington, DC.
  • Note: Alan Whitehurst is identified as lead counsel for Greenthread in Inter Partes Review proceedings and possesses significant experience in patent litigation.

The consistent representation by McKool Smith, P.C. across these attorneys underscores their firm's significant role in representing patent owner Greenthread, LLC in its patent assertion campaigns.