IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`GREENTHREAD, LLC
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`v.
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`OMNIVISION TECHNOLOGIES, INC.
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`GREENTHREAD, LLC
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`v.
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`TEXAS INSTRUMENTS
`INCORPORATED
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`GREENTHREAD, LLC
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`v.
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`AMS-OSRAM AG et al
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`2:23-cv-00212-JRG
`(Lead Case)
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`2:23-cv-00157-JRG
`(Member Case)
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`2:23-cv-00179-JRG
`(Member Case)
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`DEFENDANT OMNIVISION TECHNOLOGIES, INC.’S
`ANSWER AND COUNTERCLAIMS TO PLAINTIFF’S
`COMPLAINT FOR PATENT INFRINGEMENT
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`Defendant OmniVision Technologies, Inc. (“Defendant” or “OmniVision”), by and
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`through its attorneys, submits its answer, defenses, and counterclaims to Plaintiff
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`Greenthread, LLC’s (“Plaintiff” or “Greenthread”) complaint. OmniVision reserves the right
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`to amend its answer if it subsequently gains additional information.
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`OmniVision’s reproduction below of the headings and paragraphs set forth in the
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`Complaint is solely for the purpose of convenience and is not, and should not be construed
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`as, an admission by OmniVision that any allegation or other statements in the headings or
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`IPR2024-001, -00016, -00017,
`-00018, -00019, -00020, -00021
`Ex. 3001
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`the paragraphs of the Complaint, whether explicit or implied, are true, correct, or admitted by
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`OmniVision. All allegations in Greenthread’s Complaint, including those in the headings, that
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`OmniVision does not specifically admit or deny in this Answer are denied by OmniVision.
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`RESPONSES
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`THE NATURE OF THE ACTION
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`1.
`This is a patent infringement action. Two related actions are pending in this
`court for infringement of the same patents: Greenthread, LLC v. OSRAM GMBH et al., 23-
`cv-00179- JRG (E.D. Tex.) and Greenthread, LLC v Texas Instruments Incorporated, 23-cv-
`00157-JRG (E.D. Tex.). This Court has already construed the claims of the patents-in-suit
`and/or patents of the same family in Greenthread, LLC v. Samsung Electronics Co., Ltd. et
`al., 19-cv-00147-JRG (E.D. Tex.). See Dkt. 67.
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`RESPONSE: OmniVision admits that Greenthread asserts patent infringement and
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`that Greenthread, LLC v. OSRAM GMBH et al., 23-cv-00179- JRG (E.D. Tex.) and Greenthread,
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`LLC v Texas Instruments Incorporated, 23-cv-00157-JRG (E.D. Tex.) are pending in this Court
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`and assert the same patents. OmniVision denies that the Court construed the claims of the
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`Asserted Patents based entirely on the disclosures set forth in the asserted patents or that
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`the same claim terms were in dispute or addressed by the Court. OmniVision also denies that
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`OmniVision is precluded from presenting appropriate claim constructions to the Court.
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`2.
`Greenthread owns a family of patents related to transistors and other
`components of integrated semiconductor devices. Greenthread’s patented inventions describe
`semiconductor devices that employ graded dopants and well regions for creating electric fields
`for aiding and/or limiting the movement of carriers to (or from) the semiconductor surface
`to (or from) the semiconductor substrate. These inventions improve semiconductor devices
`by (1) creating faster, more efficient, and more reliable processors, logic devices, and image
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`sensors; and (2) allowing manufacturers to scale down the feature size of their semiconductor
`products.
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`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
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`the allegations contained in this paragraph and therefore denies them. OmniVision further
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`denies that Greenthread has provided any allegations directed to the movement of carriers
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`to (of from) the semiconductor surface to (or from) the semiconductor substrate in the
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`OmniVision OV24A1Q accused product.
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`3.
`Defendant has infringed and continues to infringe six Greenthread patents:
`U.S. Patent Nos. 8,421,195 (“the ’195 Patent”), 9,190,502 (“the ’502 Patent”), 10,510,842
`(“the ’842 Patent”), 10,734,481 (“the ’481 Patent”), 11,121,222 (“the ’222 Patent”), and
`11,316,014 (“the ’014 Patent”), (collectively “the Greenthread Patents”), copies of which are
`attached hereto as Exhibits 1-6, respectively. Defendant has infringed and continue to infringe
`the Greenthread Patents by making, using, selling, offering for sale, and/or importing into
`the United States, semiconductor devices with infringing graded dopant regions and/or
`electronic products containing the same.
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`RESPONSE: OmniVision denies all allegations of patent infringement in this
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`paragraph, including any acts related to “semiconductor devices with infringing graded
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`dopant regions and/or electronic products containing the same.” OmniVision admits that
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`Greenthread attached copies of the patents-in-suit as Exhibits 1-6.
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`THE PARTIES
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`4.
`Plaintiff Greenthread, LLC (“Greenthread”) is a limited liability company
`organized and existing under the laws of Texas, having its principal place of business at 7424
`Mason Dells Drive, Dallas, Texas 75230-3244.
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`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
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`the allegations contained in this paragraph and therefore denies them.
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`5.
`Defendant OmniVision Technologies, Inc. is a corporation organized and
`existing under the laws of Delaware. Defendant may be served with process by serving its
`registered agent, the Corporation Trust Company, at 1209 Orange Street, Wilmington,
`Delaware, 19801.
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`RESPONSE: Admitted.
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`6.
`OmniVision designs and develops digital imaging products for use in mobile
`phones, security & surveillance, automotive, computing, medical, and emerging applications.
`OmniVision describes itself as a “global fabless semiconductor organization” who has “enabled
`smoother human/machine interfacing solutions within the automotive, medical, security
`&surveillance, computing, mobile phone, and emerging technology spaces.” (footnote
`referencing https://www.ovt.com/company/about-us).
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`RESPONSE: Admitted.
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`7.
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`OmniVision controls the www.ovt.com internet domain.
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`RESPONSE: Admitted.
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`8.
`OmniVision designs, tests, imports into the United States, uses, sells, and
`offers to sell OmniVision Accused Products, which occurs in the United States. OmniVision
`has employees throughout the United States including responsible for these functions,
`including in Texas, California, Colorado, Illinois, and Michigan. (footnote referencing
`https://www.ovt.com/company/contact-us/).
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`RESPONSE: OmniVision admits that it designs, tests, and imports into the United
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`States certain products and that it has employees in California and other locations.
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`OmniVision denies the remainder of this paragraph.
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`9.
`During Omnivision’s markeing [sic], testing, and quality control, OmniVision
`uses and sells sample products of the Omnivision [sic] Accused Products in the United States.
`(footnote referencing https://www.ovt.com/partners/) Those uses of the OmniVision Accused
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`Products are essential to its ability to make sales to customers world-wide, including in the
`United States.
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`RESPONSE: OmniVision admits that the above screenshot is an accurate depiction
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`of a portion of the page at http://www.ovt.com/partners and that sample products can be
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`sold for evaluation purposes. OmniVision denies the remainder of the allegations in the
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`paragraph.
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`10.
`Further, OmniVision partners with United States authorized distributors to sell
`OmniVision Accused Products in the United States and directs potential U.S. consumers to
`purchase OmniVision products through these U.S. distributors and “representatives” on its
`website.
`(Footnote
`referencing
`https://www.ovt.com/contact-sales/distribution-channels;
`https://www.arrow.com/en/manufacturers/omnivision-technologies/view-all)
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`RESPONSE: OmniVision admits
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`that certain distributors,
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`including Arrow
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`Electronics, Inc., sell certain OmniVision products in the United States. OmniVision denies
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`the remainder of the allegations contained in this paragraph.
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`11.
`OmniVision sells OmniVision Accused Products in the United States through
`its distributors on OmniVision-branded product pages.
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`RESPONSE: Denied. Further, OmniVision
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`lacks sufficient knowledge and
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`information to admit or deny the allegations to the extent they relate to third-party activities
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`and therefore denies them.
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`12.
`OmniVision’s U.S.-based employees include personnel responsible for sales of
`OmniVision Accused Products to the U.S. automotive industry.
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`RESPONSE: Denied.
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`13.
`OmniVision maintains an office in this district at 1255 W. 15th Street, Suite
`370 Plano, TX 75075-4216. On information and belief, OmniVision uses its Plano office to
`serve and make infringing sales of the Accused Products to its customer Texas Instruments
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`Inc. (“Texas Instruments”) in this district. (Footnote referencing https://www.ti.com/about-
`ti/company/ti-at-a-glance/manufacturing/richardson.html#more- information)
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`RESPONSE: OmniVision admits that it maintains an office in this district at 1255
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`W. 15th Street, Suite 370 Plano, TX 75075-4216. OmniVision denies the remainder of the
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`allegations in this paragraph.
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`14.
`Texas Instruments incorporates OmniVision Accused Products into its
`products, including, on information and belief at Texas Instruments facilities in this district.
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`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
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`the allegations contained in this paragraph and therefore denies them.
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`15.
`For example, Texas Instruments markets an “Automotive 1.3-MP Low-Cost
`Camera Module Reference Design With YUV422, PMIC, FPD-Link III, and POC” which
`includes an OmniVision Accused Product, a “1.3-MP OX01F10 image sensor from
`Omnivision.”
`(footnote referencing https://www.ti.com/lit/ug/tidubf0/tidubf0.pdf?ts=1683552290038)
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`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
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`the allegations contained in this paragraph and therefore denies them.
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`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
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`the allegations contained in this paragraph and therefore denies them.
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`16.
`For example, Texas Instruments also markets a “Low-Power Wireless Camera
`Reference Design for Extended Battery Life” stating that it includes an OmniVision Accused
`Product: “This design utilizes the OmniVision OA7000 to enable secured live video streaming
`with a resolution of up to 1080p at 48 FPS (1920 × 1080).” (Footnote referencing
`https://www.ti.com/lit/ug/tiduez4/tiduez4.pdf?ts=1683652725026&ref_url=https%253A%252F%2
`52Fwww.google.com%252F)
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`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
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`the allegations contained in this paragraph and therefore denies them.
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`17.
`For example, Texas Instruments also markets a “ADAS 8-Channel Sensor
`Fusion Hub Reference Design With Two 4-Gbps Quad Deserializers” which is “built around
`… an OmniVision OV2775 imager,” which is an OmniVision Accused Product.
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`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
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`the allegations contained in this paragraph and therefore denies them.
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`SUBJECT MATTER JURISDICTION
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`18.
`This action arises under the patent laws of the United States, namely 35 U.S.C.
`§§ 271, 281, and 284-285, among others.
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`RESPONSE: OmniVision admits that the Complaint purports to be an action for
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`patent infringement arising under Title 35 of the United States Code. OmniVision denies all
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`allegations of patent infringement.
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`19.
`This court has subject matter jurisdiction over the patent infringement claims
`asserted in this case under 28 U.S.C. §§ 1331 and 1338(a).
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`RESPONSE: The allegations of this paragraph constitute a conclusion of law to which
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`no response is required.
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`PERSONAL JURISDICTION AND VENUE
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`20.
`This Court has specific personal jurisdiction over Defendant because it has
`committed acts within this District giving rise to this action (including acts of infringement)
`and has established minimum contacts with this forum such that the exercise of jurisdiction
`over Defendant would not offend traditional notions of fair play and substantial justice. Such
`acts include selling, offering to sell, demonstrating, and marketing OmniVision Accused
`Products to Texas Instruments in this district.
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`RESPONSE: Denied.
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`21.
`Venue is proper under 28 U.S.C. §§ 1391(b) and 1400(b), because OmniVision
`has a regular and established place of business in this district, including at 1255 W. 15th
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`Street, Suite 370 Plano, TX 75075-4216 and has committed acts of infringement in this
`district, including sales to Texas Instruments.
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`RESPONSE: OmniVision admits that it has a place of business at 1255 W. 15th
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`Street, Suite 370 Plano, TX 75075-4216. OmniVision denies the remainder of allegations in
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`this paragraph.
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`22.
`This Court has personal jurisdiction over OmniVision in accordance with the
`Texas Long Arm Statute, Tex. Civ. Prac. & Rem. Code § 17.042, because, among other things,
`OmniVision has (1) committed acts of infringement in Texas, including, on information and
`belief, selling, offering to sell, and demonstrating OmniVision Accused Products in Texas,
`including to Texas Instrument, and (2) recruited Texas residents for employment, including
`at OmniVision’s facility in Plano Texas.
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`RESPONSE: Denied.
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`23.
`“OmniVision Accused Products” are products accused of meeting the claim
`limitations of a Greenthread Patent in this suit. OmniVision designs, manufactures, sells, and
`uses semiconductor devices containing transistors and other structures that infringe the
`Greenthread Patents in the United States.
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`RESPONSE: OmniVision admits that it designs, sells, and uses semiconductor
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`devices containing transistors. OmniVision denies the remainder of the allegations in the
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`paragraph.
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`24.
`The infringing structures within semiconductor devices identified in Exhibit 8
`have application, not only in the product identified in Exhibit 8 (OV24A1Q), but in many
`types of devices designed and manufactured by OmniVision, including image sensors, ASICs,
`CameraCubeChip®, LCOS, power management, touch & display, OVMed® ISP, and OVMed®
`cable module devices. (footnote referencing https://www.ovt.com/company/about-us/) To obtain
`the benefits of the claimed technology, on information and belief, OmniVision incorporates
`the infringing structures similar to those described in Exhibit 8 into transistors in its other
`products, including ASICs, CameraCubeChip®, LCOS, power management, touch & display,
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`OVMed® ISP, and OVMed® cable module devices. The infringement described in Exhibit 8
`is therefore exemplary of infringement by transistors in other OmniVision products.
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`RESPONSE: Denied. OmniVision further denies that Greenthread has attempted to
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`chart all of the limitations of any Asserted Patent claim.
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`25.
`Exhibit 8 demonstrates how exemplary OmniVision Accused Products meet the
`claim limitations of Greenthread Patents and is herein incorporated by reference.
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`RESPONSE: Denied. OmniVision further denies that Greenthread has attempted to
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`chart all of the limitations of any Asserted Patent claim.
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`THE GREENTHREAD PATENTS
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`26.
`On April 16, 2013, the U.S. Patent and Trademark Office duly and legally
`issued U.S. Patent No. 8,421,195 (“the ’195 Patent”), entitled “Semiconductor Devices with
`Graded Dopant Regions,” listing Dr. Mohan Rao as the inventor, from a patent application
`filed January 12, 2007. The ’195 Patent claims priority from U.S. Patent Application No.
`10/934,915 (footnote referencing Pub. No. US 2006/0049464), filed on September 3, 2004. A
`true and correct copy of the ’195 Patent is attached hereto as Exhibit 1 and incorporated
`herein by reference.
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`RESPONSE: OmniVision admits that the face of the ’195 Patent lists an issue date of
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`January 12, 2007, is titled “Semiconductor Devices with Graded Dopant Regions,” lists Dr.
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`Mohan Rao as the purported inventor, lists a filing date of January 12, 2007, and that a copy
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`of what purports to be the ’195 patent is attached as Exhibit 1. OmniVision states the
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`question of priority is a conclusion of law, rather than a statement of fact, to which no
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`response is required. To the extent a response is required, OmniVision admits September 3,
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`2004 appears to be the earliest filing date listed on the face of the ’195 Patent. OmniVision
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`lacks sufficient knowledge and information to admit or deny the remaining allegations
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`contained in this paragraph and therefore denies them.
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`27.
`On November 17, 2015, the U.S. Patent and Trademark Office duly and legally
`issued U.S. Patent No. 9,190,502 (“the ’502 Patent”), entitled “Semiconductor Devices with
`Graded Dopant Regions,” listing Dr. Mohan Rao as the inventor, from a patent application
`filed October 16, 2014. The ’502 Patent claims priority from U.S. Patent Application No.
`10/934,915 (footnote referencing Pub. No. US 2006/0049464), filed on September 3, 2004. A
`true and correct copy of the ’502 Patent is attached hereto as Exhibit 2 and incorporated
`herein by reference.
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`RESPONSE: OmniVision admits that the face of the ’502 Patent lists an issue date
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`of November 17, 2015, is titled “Semiconductor Devices with Graded Dopant Regions,” lists
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`Dr. Mohan Rao as the purported inventor, lists a filing date of October 16, 2014, and that a
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`copy of what purports to be the ’502 patent is attached as Exhibit 2. OmniVision states the
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`question of priority is a conclusion of law, rather than a statement of fact, to which no
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`response is required. To the extent a response is required, OmniVision admits September 3,
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`2004 appears to be the earliest filing date listed on the face of the ’502 Patent. OmniVision
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`lacks sufficient knowledge and information to admit or deny the remaining allegations
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`contained in this paragraph and therefore denies them.
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`28.
`On December 17, 2019, the U.S. Patent and Trademark Office duly and legally
`issued U.S. Patent No. 10,510,842 (“the ’842 Patent”), entitled “Semiconductor Devices with
`Graded Dopant Regions,” listing Dr. Mohan Rao as the inventor, from a patent application
`filed on May 9, 2017. The ’842 Patent claims priority from U.S. Patent Application No.
`10/934,915 (footnote referencing Pub. No. US 2006/0049464), filed on September 3, 2004. A
`true and correct copy of the ’842 Patent is attached hereto as Exhibit 3 and incorporated
`herein by reference.
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`RESPONSE: OmniVision admits that the face of the ’842 Patent lists an issue date
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`of December 17, 2019, is titled “Semiconductor Devices with Graded Dopant Regions,” lists
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`Dr. Mohan Rao as the purported inventor, lists a filing date of May 9, 2017, and that a copy
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`of what purports to be the ’842 patent is attached as Exhibit 3. OmniVision states the question
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`of priority is a conclusion of law, rather than a statement of fact, to which no response is
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`required. To the extent a response is required, OmniVision admits September 3, 2004 appears
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`to be the earliest filing date listed on the face of the ’842 Patent. OmniVision lacks sufficient
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`knowledge and information to admit or deny the remaining allegations contained in this
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`paragraph and therefore denies them.
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`29.
`On August 4, 2020, the U.S. Patent and Trademark Office duly and legally
`issued U.S. Patent No. 10,734,481 (“the ’481 Patent”), entitled “Semiconductor Devices with
`Graded Dopant Regions,” listing Dr. Mohan Rao as the inventor, from a patent application
`filed on December 17, 2019. The ’481 Patent claims priority from U.S. Patent Application
`No. 10/934,915 (footnote referencing Pub. No. US 2006/0049464), filed on September 3, 2004.
`A true and correct copy of the ’481 Patent is attached hereto as Exhibit 4 and incorporated
`herein by reference.
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`RESPONSE: OmniVision admits that the face of the ’481 Patent lists an issue date
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`of August 4, 2020, is titled “Semiconductor Devices with Graded Dopant Regions,” lists Dr.
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`Mohan Rao as the purported inventor, lists a filing date of December 17, 2019, and that a
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`copy of what purports to be the ’481 patent is attached as Exhibit 4. OmniVision states the
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`question of priority is a conclusion of law, rather than a statement of fact, to which no
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`response is required. To the extent a response is required, OmniVision admits September 3,
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`2004 appears to be the earliest filing date listed on the face of the ’481 Patent. OmniVision
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`lacks sufficient knowledge and information to admit or deny the remaining allegations
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`contained in this paragraph and therefore denies them.
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`30.
`On September 14, 2021, the U.S. Patent and Trademark Office duly and legally
`issued U.S. Patent No. 11,121,222 (“the ’222 Patent”), entitled “Semiconductor Devices with
`Graded Dopant Regions,” listing Dr. Mohan Rao as the inventor, from a patent application
`filed on July 27, 2020. The ’222 Patent claims priority from U.S. Patent Application No.
`10/934,915 (footnote referencing Pub. No. US 2006/0049464), filed on September 3, 2004. A
`true and correct copy of the ’222 Patent is attached hereto as Exhibit 5 and incorporated
`herein by reference.
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`RESPONSE: OmniVision admits that the face of the ’222 Patent lists an issue date
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`of September 14, 2021, is titled “Semiconductor Devices with Graded Dopant Regions,” lists
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`Dr. Mohan Rao as the purported inventor, lists a filing date of July 27, 2020, and that a copy
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`of what purports to be the ’222 patent is attached as Exhibit 5. OmniVision states the
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`question of priority is a conclusion of law, rather than a statement of fact, to which no
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`response is required. To the extent a response is required, OmniVision admits September 3,
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`2004 appears to be the earliest filing date listed on the face of the ’222 Patent. OmniVision
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`lacks sufficient knowledge and information to admit or deny the remaining allegations
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`contained in this paragraph and therefore denies them.
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`31.
`On April 26, 2022, the U.S. Patent and Trademark Office duly and legally
`issuedU.S. Patent No. 11,316,014 (“the ’014 Patent”), entitled “Semiconductor Devices with
`Graded Dopant Regions,” listing Dr. Mohan Rao as the inventor, from a patent application
`filed on July 9, 2021. The ’014 Patent claims priority from U.S. Patent Application No.
`10/934,915 (footnote referencing Pub. No. US 2006/0049464), filed on September 3, 2004. A
`true and correct copy of the ’014 Patent is attached hereto as Exhibit 6 and incorporated
`herein by reference.
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`RESPONSE: OmniVision admits that the face of the ’014 Patent lists an issue date
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`of April 26, 2022, is titled “Semiconductor Devices with Graded Dopant Regions,” lists Dr.
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`Mohan Rao as the purported inventor, lists a filing date of July 9, 2021, and that a copy of
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`what purports to be the ’014 patent is attached as Exhibit 6. OmniVision states the question
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`of priority is a conclusion of law, rather than a statement of fact, to which no response is
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`required. To the extent a response is required, OmniVision admits September 3, 2004 appears
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`to be the earliest filing date listed on the face of the ’014 Patent. OmniVision lacks sufficient
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`knowledge and information to admit or deny the remaining allegations contained in this
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`paragraph and therefore denies them.
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`32.
`The ’195, ’502, ’842, ’481, ’222, and ’014 Patents are collectively referred to as
`the “Greenthread Patents.”
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`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
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`the allegations contained in this paragraph and therefore denies them.
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`33.
`Greenthread exclusively owns all rights, title, and interest in the Greenthread
`Patents necessary to bring this action, including the right to recover past and future damages.
`Certain of the Greenthread Patents were previously owned by Dr. G.R. Mohan Rao (“Dr.
`Rao”). On April 27, 2015, Dr. Rao assigned to Greenthread the then-issued Greenthread
`Patents and all related “continuations, continuations-in-part and extensions of said
`Applications and Patents and any pending applications or issued patents that directly claim
`or are amended to claim priority to any of the Applications or Patents.” Dr. Rao’s assignment
`was recorded with the U.S. Patent and Trademark Office on May 13, 2015, and again on July
`22, 2021, and is attached hereto as Exhibit 7. Greenthread has therefore owned all rights to
`the Greenthread Patents necessary to bring this action throughout the period of Defendant’s
`infringement and still owns those rights to the Greenthread Patents.
`
`RESPONSE: OmniVision admits that a copy of what purports to be patent
`
`assignments is attached as Exhibit 7. OmniVision denies that Greenthread is the owner of
`
`the Asserted Patents and that it has standing to bring this action.
`
`34.
`
`Defendant is not currently licensed to practice the Greenthread Patents.
`
`RESPONSE: Defendant admits that it is not a party to any agreement providing
`
`OmniVision with a license to practice the Greenthread Patents and that it has not sought to
`
`obtain a license to practice the Greenthread Patents. OmniVision lacks sufficient knowledge
`
`and information to admit or deny whether existing licenses provide OmniVision with a license
`
`to practice the Greenthread Patents in some manner, and therefore denies the allegations
`
`contained in this paragraph.
`
`35.
`
`The Greenthread Patents are valid and enforceable.
`
`RESPONSE: Denied.
`
`
`
`
`
`17
`
`

`

`FACTUAL BACKGROUND
`
`36.
`Dr. G.R. Mohan Rao (“Dr. Rao”), the sole inventor of the Greenthread Patents,
`has been an innovator in the semiconductor industry since the 1960s. He is a named inventor
`on more than 100 Patents worldwide and authored numerous technical publications over the
`last 50 years.
`
`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
`
`the allegations contained in this paragraph and therefore denies them.
`
`37.
`In September 1968, Dr. Rao received a Ph.D. in physics with a specialization
`in electronics from Andhra University in Waltair, India. He then traveled to the United States
`to attend a graduate program in physics at the University of Cincinnati.
`
`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
`
`the allegations contained in this paragraph and therefore denies them.
`
`38.
`After learning of an opportunity to work with Professor William Carr of
`Southern Methodist University (“SMU”), Dr. Rao transferred to SMU where he earned a
`Ph.D. in Electrical Engineering. While there, he worked in the SMU laboratory with Jack
`Kilby of Texas Instruments (a pioneering electrical engineer who would later receive a Nobel
`Prize for his work), on metal- oxide-silicon transistors (“MOS devices”), which are used for
`switching and amplifying electronic signals in electronic devices. MOS devices form the basis
`of modern electronics and are the most widely used semiconductor devices in the world. The
`U.S. Patent and Trademark Office has called this device a “groundbreaking invention that
`transformed
`life
`and
`culture
`around
`the world.”
`(footnote
`referencing
`https://www.uspto.gov/about-us/news-updates/remarks-director-iancu-2019-international-lectual-
`property-conference). Dr. Rao built these devices from scratch while a graduate student at
`SMU.
`
`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
`
`the allegations contained in this paragraph and therefore denies them.
`
`39.
`Through his mentor, Jack Kilby, Dr. Rao interviewed with—and was ultimately
`hired by—Texas Instruments to continue his work on MOS devices in 1972. Dr. Rao worked
`at Texas Instruments for the next twenty-two years, rising from an engineer to a Senior
`
`
`
`18
`
`

`

`Fellow. At that time, Texas Instruments had only 12 Senior Fellows out of approximately
`20,000 engineers. Eventually, Dr. Rao moved into a management position at Texas
`Instruments, ultimately becoming a Senior Vice President in 1985.
`
`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
`
`the allegations contained in this paragraph and therefore denies them.
`
`40.
`At Texas Instruments, Dr. Rao received his first patent while working in a
`process and product engineering capacity to solve a production problem with Texas
`Instruments’ 4-kilobit RAM product. That patent was merely the beginning of Dr. Rao’s long
`inventive career. Indeed, from the late 1970s through the mid-1980s, Dr. Rao worked on or
`managed projects relating to Texas Instruments’ 64kb RAM, 256Kb RAM, 1Mb RAM, 4 Mb
`RAM, EEPROM, SRAM, and microcontrollers. For that work, Dr. Rao received numerous
`additional U.S. Patents.
`
`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
`
`the allegations contained in this paragraph and therefore denies them.
`
`41.
`The USPTO was not the only organization to recognize Dr. Rao’s achievements.
`Some of Dr. Rao’s work at Texas Instruments was so remarkable that it has been credited in
`multiple exhibits in the National Museum of American History at the Smithsonian Institution.
`the
`(footnote referencing http://smithsonianchips.si.edu/texas/wafer.htm) For example,
`Smithsonian has displayed Texas Instruments’ experimental 1-megabit CMOS DRAM,
`produced in April 1985 under Dr. Rao’s leadership, and credited Dr. Rao for the achievement.
`(footnote referencing http://smithsonianchips.si.edu/texas/t_360.htm)
`
`
`
`
`
`19
`
`

`

`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
`
`the allegations contained in this paragraph and therefore denies them.
`
`42.
`In 1994, Dr. Rao left Texas Instruments for Cirrus Logic. During his two-year
`tenure at Cirrus Logic, he received more U.S. Patents relating to his work on integrated
`graphics controllers and memory.
`
`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
`
`the allegations contained in this paragraph and therefore denies them.
`
`43.
`In 1996, Dr. Rao started a company called Silicon Aquarius. Through a
`relationship between Silicon Aquarius and Matsushita, Dr. Rao led a design team in working
`on a 256Mb DRAM chip. After Silicon Aquarius ceased operations, Dr. Rao did consulting
`work for a number of different consulting companies and devoted much of his free time to
`thinking about various challenges and problems with which the semiconductor industry had
`struggled for years.
`
`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
`
`the allegations contained in this paragraph and therefore denies them.
`
`44.
`In 2003, Dr. Rao and Philip John founded Greenthread to continue Dr. Rao’s
`pioneering work. A focal point of Dr. Rao’s research was poor refresh time and the related
`problem of how to deal with and control the movement of both wanted and unwanted carriers
`in semiconductor devices, including memory and logic devices. Dr. Rao realized that graded
`dopants could be used to create a “drift layer” and other structures to facilitate the
`movement—in an upward or downward direction, as appropriate—of carriers from the
`semiconductor surfaces down into the substrate and vice versa. It was Dr. Rao’s work on this
`problem that culminated in the Greenthread Patents.
`
`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
`
`the allegations contained in this paragraph and therefore denies them.
`
`
`
`20
`
`

`

`45.
`
`Dr. Rao resides in this district.
`
`RESPONSE: OmniVision lacks sufficient knowledge and information to admit or deny
`
`the allegations contained in this paragraph and therefore denies them.
`
`OMNIVISION’S INFRINGEMENT
`
`46.
`OmniVision has directly infringed, and continues to infringe, one or more
`claims of each of the Greenthread Patents through making, using, offering to sell, selling
`within the United States, and/or importing into the United States semiconductor products,
`including OV24A1Q, that practice the claimed inventions (i.e., the OmniVision Accused
`Products). A non-exhaustive, exemplary list of the types or categories of products or devices
`that infringe are further identified in Exhibit 8.
`
`RESPONSE: Denied.
`
`47.
`Further, in concert with its authorized distributors and customers, OmniVision
`causes or induces infringing accused products to be made, used, offered to be sold, sold within
`the United States, and/or imported into the United States. Omnivision has obtained
`knowledge of Greenthread’s patents and its infringement at least through the fili