`
`From: Weidenfeller,Scott
`
`
`
`
`To:NicholasT,Matich; Park,Han;Sharma,Anupam; boreene@duanemorris.com; waliddell@duanemorris.com;
`
`GREENTHREAD@lockelord.com;Paul,Rajesh
`
`Subject:
`RE: Cirrus Logic Inc.et al. v. Greenthread LLC, IPR2024-00001, IPR2024-00016, IPR2024-00017
`Date:
`Tuesday, October 24, 2023 4:11:12 PM
`Attachments:
`
`
`
`Nick,
`
`Cirrus Logic, GlobalFoundries, OmniVision, and ams OSRAM (collectively, "Petitioners") object to
`Patent Owner's requests. Petitioners have identified all real parties in interest and have
`demonstratedthat the petitions are not time barred. Patent Owner has not shownanyjustification
`for the extremely broad discovery it seeks, other than thatij Intel,i (collectively,
`"Prior Petitioners") may have beenPetitioners’ customers and that Petitioners are members of a
`joint defense group. Neither establishes that any unnamedparty is a real party in interest.
`
`Moreover,virtually all modern electronic products contain transistors, and your requests "relating to
`transistor products" would seemingly cover all communications and agreementsPetitioners ever
`had with Prior Petitioners about any electronic products. We note that none of Petitioners had any
`discussions with Prior Petitioners regarding the priorlitigations before Patent Ownerfiled complaints
`against Cirrus Logic, OmniVision, and ams OSRAM.
`
`Finally, Petitioners have no knowledge as to what products madeorsold by Prior Petitioners are
`covered by Patent Owner's licenses and whetherthe products contain any products madeorsold by
`Petitioners. In fact, Patent Ownerhas taken the position in the EDTX litigations that there are no
`products made underthe licenses: “Greenthread does not allege that Greenthreaditself, or any
`companyholding a license to the Patents-in-Suit, made, used, offered forsale, or sold any product
`that embodiesor uses any alleged invention covered by the Patents-in-Suit.”
`
`Please let us know whether Patent Ownerwill reconsiderits position.
`
`Regards,
`Scott
`
`Scott Weidenfeller
`
`Covington & Burling LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001-4956
`T +1 202 662 5923 | sweidenfeller@cov.com
`Www.cov.com
`
`COVINGTON
`
`This messageis from a law firm and maycontain information thatis confidential or legally privileged. Ifyou are not the
`intended recipient, please immediately advise the sender by reply e-mail that this message has been inadvertently
`transmitted to you and delete this e-mail from your system. Thank you for your cooperation.
`
`Greenthread Ex 2016, p.1 of 3
`Cirrus Logic, et. al. v. Greenthread
`
`
`
`PUBLIC VERSION
`
`From: Nicholas T. Matich <nmatich@McKoolSmith.com>
`Sent: Tuesday, October 24, 2023 9:03 AM
`To: Weidenfeller, Scott <SWeidenfeller@cov.com>; Park, Han <HPark@cov.com>; Sharma, Anupam
`<asharma@cov.com>; bgreene@duanemorris.com; waliddell@duanemorris.com;
`dnguyen@lockelord.com; emma.bennett@lockelord.com; david.bluestone@bfkn.com
`Cc: Greenthread-Omnivision-MS <Greenthread-Omnivision-MS@mckoolsmith.com>; Greenthread-
`Cirrus-MS <Greenthread-Cirrus-MS@mckoolsmith.com>; Greenthread-ams-OSRAM-MS
`<Greenthread-ams-OSRAM-MS@mckoolsmith.com>
`Subject: RE: Cirrus Logic Inc. et al. v. Greenthread LLC, IPR2024-00001, IPR2024-00016, IPR2024-
`00017
`
`[EXTERNAL]
`Counsel,
`
`Please let us know when we can expect a response to the below.
`
`Sincerely,
`Nick Matich
`
`NOTICE OF CONFIDENTIALITY: The information contained in and transmitted with this e-mail is SUBJECT TO THE ATTORNEY-CLIENT and
`ATTORNEY WORK PRODUCT PRIVILEGE and is CONFIDENTIAL. It is intended only for the individual or entity designated above. You are
`hereby notified that any dissemination, distribution, copying, use or reliance upon the information contained in and transmitted with this
`e-mail by or to anyone other than the addressee designated above by the sender is unauthorized and strictly prohibited. If you have
`received this e-mail in error, please notify the sender by reply immediately. Any e-mail erroneously transmitted to you should be
`immediately destroyed.
`
`From: Nicholas T. Matich <nmatich@McKoolSmith.com>
`Sent: Friday, October 20, 2023 12:24 PM
`To: Sweidenfeller@cov.com; Hpark@cov.com; Asharma@cov.com; bgreene@duanemorris.com;
`waliddell@duanemorris.com; dnguyen@lockelord.com; emma.bennett@lockelord.com;
`david.bluestone@bfkn.com
`Cc: Greenthread-Omnivision-MS <Greenthread-Omnivision-MS@mckoolsmith.com>; Greenthread-
`Cirrus-MS <Greenthread-Cirrus-MS@mckoolsmith.com>; Greenthread-ams-OSRAM-MS
`<Greenthread-ams-OSRAM-MS@mckoolsmith.com>
`Subject: Cirrus Logic Inc. et al. v. Greenthread LLC, IPR2024-00001, IPR2024-00016, IPR2024-00017
`
`Counsel,
`
`Petitioners in the above captioned matters have the burden of identifying all real parties in interest
`
`Greenthread Ex 2016, p.2 of 3
`Cirrus Logic, et. al. v. Greenthread
`
`
`
`PUBLIC VERSION
`
`(RPIs) in the petition and demonstrating that the petitions are not time barred. Samsung Electronics
`Co. Ltd. v. Netlist Inc., IPR2022-00615, Paper 40 (Director Vidal Feb. 3, 2023) (quoting Worlds Inc. 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.
`
` were served with complaints
`More than one year before the filing of these petitions, Intel and
` was an RPI of
`alleging infringement of Greenthread’s patents at issue.
`
` was
`served with a complaint alleging infringement of the ‘195 patent more than one year ago. As the
`attached documents indicate, at least one petitioner and/or Global Foundries is a supplier to each of
`Intel, Dell, Samsung, and Sony. Therefore, petitioners and Global Foundries may be operating, in
` Accordingly, at least one
`part, under Greenthread’s licenses to Intel,
` and/or
`petitioner and/or its RPI is in privity with Intel,
` (or they are RPIs) and the
`petitions are time barred.
`
`If petitioners do not withdraw its petitions, then each petitioner and Global Foundries should
`produce:
`
`
`1. All agreements with Intel,
`made for them or the prior litigations.
`2. All communications with these Intel,
`prior litigations.
`
` relating to transistor products sold to or
`
` relating to such products or the
`
`
`Further, each petitioner and Global Foundries should provide a sworn declaration stating whether it
`believes any of its activities are covered by Greenthread’s licenses.
`
`Second, we understand that there is a joint defense agreement among defendants in district court
`actions involving these patents. Therefore, petitioners should (1) withdraw their petitions, (2)
`amend the petitions to include the other defendants as RPIs, or (3) produce any joint defense
`agreement and any communications with other members of the joint defense group relating to the
`patents at issue (including under a 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 common interest agreements”).
`
`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 2016, p.3 of 3
`Cirrus Logic, et. al. v. Greenthread
`
`