Trials <Trials@USPTO.GOV>
`Wednesday, November 29, 2023 10:29 AM
`Yaquian, Juan C.; Williams, Eliot D.; Lindsay, Jonathan; Trials
`Winston-IPR-NetList; #NetlistIPR [Int]; DL Samsung Netlist IPRs; Chandler, Ted
`RE: IPR2022-00996, IPR2022-00999 (918/054) - Request to Supplement
`
`Follow up
`Flagged
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Follow Up Flag:
`Flag Status:
`
`Counsel,
`
`From the Board –
`
`Patent Owner’s requests to supplement the records of these proceedings with testimony from another case are
`denied. These requests come too late in these proceedings to be considered and in any case would not be helpful to
`resolving the issues presented in these cases.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Yaquian, Juan C. <JYaquian@winston.com>
`Sent: Tuesday, November 28, 2023 12:01 PM
`To: Williams, Eliot D. <Eliot.Williams@BakerBotts.com>; Lindsay, Jonathan <jlindsay@irell.com>; Trials
`<Trials@USPTO.GOV>
`Cc: Winston-IPR-NetList <Winston-IPR-NetList@winston.com>; #NetlistIPR [Int] <NetlistIPR@irell.com>; DL Samsung
`Netlist IPRs <dlsamsungnetlistiprs@BakerBotts.com>; Chandler, Ted <ted.chandler@bakerbotts.com>
`Subject: RE: IPR2022-00996, IPR2022-00999 (918/054) - Request to Supplement
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
`
`Dear Honorable Board,
`
`In response to Patent Owner’s email below, Petitioner Micron submits its position for the Board’s
`consideration:
`
`Micron opposes the request and opposes Netlist’s improper arguments in the joint email. 1) Netlist is
`attempting to circumvent the Board’s rules by taking untimely depositions in unrelated proceedings in order
`to try and develop additional arguments in the IPR without properly seeking discovery in the IPR. 2) The
`request improperly attempts to circumvent the Protective Order for the litigation which states “Documents,
`information or material produced pursuant to any discovery request in this Action, including but not limited to
`Protected Material designated as DESIGNATED MATERIAL, shall be used by the Parties only in the litigation of
`this Action and shall not be used for any other purpose.” 3) The deposition is part of a litigation that does not
`1
`
`Netlist EX2072-p. 1
`Samsung v Netlist
`IPR2022-00996
`
`

`

`involve the ‘918 and ‘054 patents. 4) Netlist has no excuse for its late request: The discovery period in the
`litigation opened on November 2022 (over a year ago) but Netlist waited until October 11, 2023 to serve a
`deposition notice on Scott Cyr. Further, Netlist had the opportunity to depose Mr. Cyr much earlier in the prior
`EDTX Case No. Case No. 6:21-cv-203 between Netlist and Micron, which Netlist has already used to improperly
`attempt to develop testimony to support its IPR positions with respect to the irrelevant testimony of Mr.
`Holbrook. 5) The cited testimony is irrelevant and mischaracterized. Further, the witness is a Micron engineer
`who is not a witness on Netlist’s patents, has not read any of the IPR papers, and not a testifying expert as to
`how terms in the patent should be interpreted. Netlist is improperly and unfairly using litigation depositions
`of fact witnesses who are not aware of the issues in the IPR proceedings in a last ditched effort attempt to
`obtain soundbites to somehow improve its IPR record and the Board should deny this blatant and improper
`gamesmanship.
`
`For at least these reasons, Petitioner Micron does not believe that a call with the Board is necessary or
`appropriate.
`
`Regards,
`
`Juan C. Yaquian
`Lead Counsel for Petitioner Micron
`
`Juan C. Yaquian
`Associate Attorney
`Winston & Strawn LLP
`D: +1 713-651-2645
`F: +1 713-651-2700
`VCard | winston.com
`
`From: Williams, Eliot D. <Eliot.Williams@BakerBotts.com>
`Sent: Monday, November 27, 2023 9:59 AM
`To: Lindsay, Jonathan <jlindsay@irell.com>; Trials <Trials@USPTO.GOV>
`Cc: Winston-IPR-NetList <Winston-IPR-NetList@winston.com>; #NetlistIPR [Int] <NetlistIPR@irell.com>; DL Samsung
`Netlist IPRs <dlsamsungnetlistiprs@BakerBotts.com>; Chandler, Ted <ted.chandler@bakerbotts.com>
`Subject: RE: IPR2022-00996, IPR2022-00999 (918/054) - Request to Supplement
`
`Dear Honorable Board:
`
`In response to Patent Owner’s email below, Petitioner Samsung submits its position for the Board’s
`consideration:
`
`Petitioner Samsung’s position: Petitioner Samsung’s position is that a call is not necessary or
`appropriate, for several reasons.
`
`2
`
`Netlist EX2072-p. 2
`Samsung v Netlist
`IPR2022-00996
`
`

`

`First, the testimony in question by Micron’s engineer is in a case that does not involve the 918/054
`patents challenged in these IPRs and instead involves the 912 patent which is from a different patent
`family. See Netlist, Inc. v. Micron Tech., Inc., No. 2:22-cv-00293 (E.D. Tex. filed Aug. 1,
`2022). Neither party’s mandatory notices has ever identified the 912 patent (or cases involving the
`912 patent) as being relevant to these IPRs.
`
`Second, Micron is joined only as an “understudy” in these IPRs, see IPR2022-00996, Paper 26, at 4;
`IPR2022-00999, Paper 27, at 4, and Samsung has never seen or heard the testimony in question by
`Micron’s engineer, which apparently is still under seal pursuant to the Protective Order in the
`case. That Protective Order apparently prohibits Netlist from using any evidence from the district
`court action in this proceeding without first obtaining approval from the judge (which Netlist has not
`indicated that it has received). See Netlist, Inc. v. Micron Tech., Inc., No. 2:22-cv-00293, ECF No. 60,
`at 3, ¶ 5 (E.D. Tex. Dec. 12, 2022).
`
`Third, Netlist made little effort to “meet and confer to resolve any disputes.” Netlist emailed the Board less
`than 24 hours after raising this issue with Samsung for the first time. Samsung knows nothing about
`the testimony and thus it is unfair to ask Samsung to take a position or participate in a call with the
`Board now.
`
`Fourth, Netlist’s last motion to submit supplemental information is still pending (IPR2022-00996,
`Papers 42–43; IPR2022-00999, Papers 44–45), and it appears that many of Samsung’s reasons for
`opposing that motion would apply here (IPR2022-00996, Paper 45; IPR2022-00999, Paper 47), such
`as: fact testimony by a lay witness in 2023 is not relevant to claim construction of a patent filed over
`15 years ago; it does not appear that Micron designated the witness to testify about claim
`construction; the testimony is inadmissible hearsay since Samsung was not at the deposition; and the
`evidence is too late — Netlist made no effort to depose Micron in this IPR and the time for discovery
`is now over and Final Written Decisions are due in less than two weeks. In short, as Samsung
`previously predicted, “To permit Netlist to submit this extrinsic evidence from a fact witness in
`another proceeding at this late date would invite every party to bombard the Board with
`endless motions to submit random evidence from outside the IPR.” IPR2022-00996, Paper 45 at
`5.
`
`For at least these reasons, Petitioner Samsung does not believe that a call with the Board is
`necessary or appropriate.
`
`Respectfully,
`
`3
`
`Netlist EX2072-p. 3
`Samsung v Netlist
`IPR2022-00996
`
`

`

`Eliot D. Williams
`
`BAKER BOTTS LLP■
`
`+1 202 639-1334 (Direct Dial)
`
`From: Lindsay, Jonathan <jlindsay@irell.com>
`Sent: Wednesday, November 22, 2023 9:43 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: winston-ipr-netlist@winston.com; #NetlistIPR [Int] <NetlistIPR@irell.com>; Williams, Eliot D.
`<Eliot.Williams@BakerBotts.com>; DL Samsung Netlist IPRs <dlsamsungnetlistiprs@BakerBotts.com>
`Subject: IPR2022-00996, IPR2022-00999 (918/054) - Request to Supplement
`
`[EXTERNAL EMAIL]
`
`Dear Honorable Board,
`
`The Board previously granted leave for Patent Owner to file a motion for leave to supplement the record
`to include testimony by a Micron corporate representative on technical infringement issues, Mr. Boe Holbrook.
`This briefing is complete. Micron has recently replaced Mr. Holbrook on technical infringement matters with a
`different representative, Mr. Scott Cyr. On November 20, a deposition of Mr. Cyr occurred. Mr. Cyr has
`designed memory modules at Micron for over 24 years, and has been responsible for modules from DDR1
`through the present. This deposition did not occur until November 20. The next day Netlist requested that
`Micron and Samsung agree to the submission of this testimony. The Netlist patents that Mr. Cyr addressed
`share important common claim terms with the ’054 and ’918 patents. These Netlist patents are also asserted
`against Samsung. The Samsung and Micron litigations are occurring in parallel before the same Court. And
`Micron and Samsung are operating under a common interest agreement. Mr. Cyr provided highly material
`testimony on the following subject
`
`The meaning of the term “power, data, address and control signals between the memory module
`(a)
`and the host systems.” Micron’s corporate representative testified that using address and control signals sent
`from the host system to the memory module is a “different technology” from using packetized information
`delivered from a host system to an AMB on a FBDIMM. This is inconsistent with the position of the
`Petitioner’s before the PTAB.
`
`The meaning of the term “memory module.” Micron’s corporate representative testified that a
`(b)
`memory module is defined by the presence of an off-module memory controller and testified that a PCIE card
`with an on-board memory controller is not a memory module. This is inconsistent with the position of the
`Petitioner’s before the PTAB.
`
`4
`
`Netlist EX2072-p. 4
`Samsung v Netlist
`IPR2022-00996
`
`

`

`Patent Owner is acutely aware that the tolerance of the PTAB for post-hearing submissions is limited. But the
`nature of the structure Congress has set up creates the potential for binding testimony elicited in one forum (a
`district court) to be highly material in another (PTAB) and vice versa.
`
`Patent Owner seeks leave to submit this additional testimony without any argument or explanation.
`
`Yesterday morning, Patent Owner requested Petitioner’s position and availability for a call with the Board, but
`did has not heard back as of the sending of this email.
`
`Due to the importance of this matter, Patent Owner can be available at any time, if the Board deems a call
`necessary or helpful.
`
`Jonathan M. Lindsay
`
`IRELL & MANELLA LLP
`
`840 Newport Center Drive, Suite 400
`
`Newport Beach, CA 92660
`
`Direct: 949.760.5220
`
`PLEASE NOTE: This message, including any attachments, may include privileged, confidential and/or inside information.
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`delete it from your system. Thank you.
`
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`
`The information contained in this email and any attachments is intended only for the recipient[s] listed above and may be privileged
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`above and destroy any and all copies of this message.
`
`5
`
`Netlist EX2072-p. 5
`Samsung v Netlist
`IPR2022-00996
`
`

`

`The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this
`message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained
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`
`6
`
`Netlist EX2072-p. 6
`Samsung v Netlist
`IPR2022-00996
`
`