From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Nicholas T. Matich
`Trials
`Greenthread-Omnivision-MS; Greenthread-Cirrus-MS; Greenthread-ams-OSRAM-MS; OSRAM-
`GREENTHREAD@lockelord.com; Paul, Rajesh; Nicholas T. Matich; Park, Han; Sharma, Anupam;
`bgreene@duanemorris.com; waliddell@duanemorris.com; dnguyen@lockelord.com;
`emma.bennett@lockelord.com; david.bluestone@bfkn.com; Weidenfeller, Scott
`Cirrus Logic Inc. et al. v. Greenthread LLC, IPR2024-00001, -00016, -00017, -00018, 00019, 00020, 0021
`Wednesday, November 1, 2023 8:43:20 AM
`
`IPR2024-00001, -00016, -00017, -00018, 00019, 00020, 0021
`
`Your Honors,
`
`Patent Owner Greenthread LLC requests a conference call with the Board so that it may request
`authorization to file a motion for additional discovery in the above-referenced proceedings. The
`proposed additional discovery pertains to whether the Petitions are time barred under 35 U.S.C. §
`315(b). Patent Owner’s request is similar to the discovery Patent Owner seeks in Semiconductor
`Components Industries LLC (d.b.a. OnSemi) v. Greenthread, IPR2023-01242, IPR2023-01243,
`IPR2023-01244, where the Board already granted leave for Patent Owner to file motions for
`additional discovery.
`
`Intel and Sony (by virtue of Sony’s RPI relationship with Dell) are time-barred from filing a petition on
`the patents at issue. Samsung is time-barred with respect to U.S. Patents 8,421,195 at issue in
`IPR2024-00017 and 9,190,502 at issue in IPR2024-00018. Intel, Sony, and Samsung are also Patent
`Owner’s licensees. Publicly available information indicates that at least one of Cirrus Logic, Inc.,
`OmniVision Technologies, Inc., and ams Sensors USA, Inc. (the Petitions refer to these entities
`collectively as “Petitioner”) (and/or GlobalFoundries U.S., which is listed as an RPI in the Petitions) is
`a manufacturer/supplier to each for Intel, Samsung, and Sony. For example, RPI Global Foundries
`recently said publicly to investors that it manufactures products for Intel, Samsung, and Sony.
`Petitioner OmniVision supplies to Intel the OV9282 image sensor, which is accused in the currently
`pending litigation against OmniVision. Petitioner Cirrus Logic has publicly disclosed that Sony and
`Samsung are its customers. If, as it appears, Petitioners (and RPI GlobalFoundries) are acting on
`behalf of Patent Owner’s licensees under the “have made” clause of the licenses, then Petitioners
`(and RPI GlobalFoundries) are in privity with the time-barred licensees. Thus, the instant Petitions
`would be time-barred.
`
`Patent Owner seeks discovery of:
`1. The identity of products Petitioner (and RPI GlobalFoundries U.S.) sold to or made for Intel, Sony,
`or Samsung.
`
`2. Agreements between Petitioner (and RPI GlobalFoundries U.S.) and Intel, Dell, and/or Sony
`relating to the products Petitioner sells to Intel, Dell, and/or Sony, including sales contracts and
`design agreements.
`
`3. Communications between Petitioner (or its affiliates) and Intel, Dell, and/or Sony relating to the
`design of products Petitioner makes for them.
`
`
`Greenthread Ex 2017, p.1 of 2
`Cirrus Logic, et. al. v. Greenthread
`
`

`

`4. Whether each Petitioner entity believes that it is making or selling products under Patent Owner’s
`licenses to Intel, Sony, or Samsung, including whether it intends to assert the defense of license with
`regards to any products in this the concurrent district court litigation (or future litigation as to
`GlobalFoundries).
`
`Patent Owner met and conferred with Petitioner prior to sending the present email.
`
`Petitioner’s position: Petitioner opposes Patent Owner's request. The request is nothing more than a
`fishing expedition that would waste both party and administrative resources. On its face, the request
`violates at least two Garmin factors.
`
`First, Patent Owner has not met its burden to show by “more than a possibility and mere allegation
`that something useful will be discovered” under factor one. Other than the OmniVision OV9282,
`which is an accused product for the OmniVision litigation (and is thus, by Patent Owner’s own
`contentions, outside the scope of the licenses Patent Owner has with the time-barred parties),
`Patent Owner is not pointing to specific products at issue in the prior cases that would lead to a
`privity issue. Instead, they are seeking broad and generic discovery without a reasonable basis to
`believe they will find evidence of privity.
`
`Second, Patent Owner’s request number four, which asks Petitioners to identify whether “it is
`making or selling products under Patent Owner’s licenses . . . , including whether it intends to assert
`the defense of license with regards to any products in this [sic] the concurrent district court
`litigation,” seeks Petitioners’ “litigation positions or the underlying basis for those positions” in
`violation of Garmin factor two.
`
`If the Board would find it helpful, the parties are available for a conference call during the following
`dates:
`Thursday and Friday, Nov. 2-3
`If the above dates do not work, then the parties are happy to provide alternative dates for the
`conference.
`
`Respectfully,
`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 2017, p.2 of 2
`Cirrus Logic, et. al. v. Greenthread
`
`