PUBLIC VERSION
`PUBLIC VERSION
`
`From:NicholasT.Matich
`
`To:
`Sweidenfeller@cov.com; Hpark@coy.com; Asharma@coy.com; bgreene@duanemorris.com;
`
`Cc:
`Subject:
`Date:
`Attachments:
`
`Counsel,
`
`Greenthread-Omnivision-MS; Greenthread-Cirrus-MS; Greenthread-ams-OSRAM-MS
`Cirrus Logic Inc.et al. v. Greenthread LLC, IPR2024-00001, IPR2024-00016, IPR2024-00017
`Friday, October 20, 2023 11:26:18 AM
`
`
`
`Petitioners in the above captioned matters have the burdenofidentifying all real parties in interest
`(RPls) in the petition and demonstrating that the petitions are not time barred. Samsung Electronics
`Co. Ltd. v. Netlist Inc., |PR2022-00615, Paper 40 (Director Vidal Feb. 3, 2023) (quoting WorldsInc.v.
`Bungie, Inc., 903 F.3d 1237, 1242 Fed. Cir. 2018); 35 U.S.C. § 322(a). The petitions should be
`withdrawn because they do not to meet these requirements.
`
`More than oneyearbeforethefiling of these petitions, Intel and jij wereserved with complaints
`alleging infringement of Greenthread’s patentsatissue. Jj was an RP! offi] IY was
`served with a complaint alleging infringement of the ‘195 patent more than oneyear ago. As the
`attached documentsindicate, at least one petitioner and/or Global Foundriesis a supplier to each of
`intel,RE. Therefore, petitioners and Global Foundries may be operating,in
`part, under Greenthread’slicensesto Intel,J and/orJ Accordingly,at least one
`petitioner and/orits RPIis in privity with Intel,ME, and/or[Mj (or they are RPls) and the
`petitions are time barred.
`
`If petitioners do not withdrawits petitions, then each petitioner and Global Foundries should
`produce:
`
`(1) All agreements with Intel,iE relating to transistor products sold to or
`madefor them orthepriorlitigations.
`(2) All communications with these Intel,EE relating to such products or the
`priorlitigations.
`
`Further, each petitioner and Global Foundries should provide a sworn declaration stating whetherit
`believes anyofits activities are covered by Greenthread’slicenses.
`
`Second, we understand that thereis a joint defense agreement among defendantsin district court
`actions involving these patents. Therefore, petitioners should (1) withdraw their petitions, (2)
`amendthe petitions to include the other defendants as RPls, or (3) produce any joint defense
`agreement and any communications with other membersof the joint defense group relating to the
`patents at issue (including undera privilege log if necessary) so that we can evaluate any claim by
`petitioners that other defendants were not involved in these IPRs. Mitek Sys., Inc. v. United Servs.
`Auto. Ass'n, No. IPR2020-00882, 2020 WL 4375112, at *7 (P.T.A.B. July 30, 2020) (“granting USAA's
`request for any joint defense or commoninterest agreements”).
`
`Greenthread Ex 2011, p.1 of 2
`Cirrus Logic, et. al. v. Greenthread
`
`

`

`PUBLIC VERSION
`
`
`Sincerely,
`Nick Matich
`Counsel for Patent Owner Greenthread LLC
`
`McKool Smith | Nicholas T. Matich
`Principal | Washington | Tel: (202) 370-8301 | Mobile: (703) 863-7922
`
`Greenthread Ex 2011, p.2 of 2
`Cirrus Logic, et. al. v. Greenthread
`
`