`From: Zhong, Annita <HZhong@irell.com>
`Sent: Thursday, January 5, 2023 5:34 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: DL Samsung Netlist IPRs <dlsamsungnetlistiprs@BakerBotts.com>; Chandler, Ted
`<ted.chandler@bakerbotts.com>; Eliot.Williams@BakerBotts.com; #NetlistIPR [Int]
`<NetlistIPR@irell.com>
`Subject: IPR2022-00639, -00711, 00996, 00999
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
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`
`Dear Honorable Board,
`
`
`Patent Owner Netlist respectfully seeks the Board’s guidance regarding Petitioner Samsung’s
`unexpected and—to Netlist’s knowledge—unprecedented violation of binding stipulations submitted to
`the Board by its counsel in multiple proceedings, including IPR2022-00639 (Ex. 1083), IPR2022-00711
`(Ex. 1043), IPR2022-00996 (Ex. 1074), and IPR2022-00999 (Ex. 1074). In each of these instituted IPRs,
`Samsung stipulated that if the Board instituted an IPR, it would not “pursue an invalidity defense in the
`Eastern District of Texas action (C.A. No. 21-463-JRG) that the patent claims subject to the instituted IPR
`are invalid based on grounds that were raised or reasonably could have been raised in the IPR.” See the
`attached. Yet, that is precisely what Samsung has done.
`
`
`On Thursday, December 22, Samsung served an expert report in the Eastern District of Texas action
`asserting invalidity of the four patents at issue in these instituted IPR proceedings based on several of
`the same references asserted in these IPRs, as well as alleged applicant admitted prior art (APA), a 2006
`IEEE publication, documents from the standards setting organization JEDEC, and the knowledge of a
`person of ordinary skill in the art as reflected in these references. The invalidity grounds asserted in this
`report reasonably could have been raised in the IPR proceedings, and thus fall within the scope of
`Samsung’s stipulations in which it agreed on the record not to pursue any such defenses in district
`court.
`
`
`For example, Samsung’s district court expert asserts that U.S. Patent No. 10,949,339 is invalid based on
`a combination of APA and the same two references—US 2006/0277355 (Ellsberry) and US 7,024,518
`(Halbert)—at issue in IPR2022-00639. This ground clearly could have been raised in the IPR. Both
`Ellsberry and Halbert were, in fact, asserted to the Board, and the combinations of APA with patents or
`printed publications is permitted under current agency guidance for filing in opening IPR petitions. See
`Katherine K. Vidal, Updated Guidance on the Treatment of Statements of the Applicant in the
`Challenged Patent in Inter Partes Reviews under § 311, at 4 (June 9, 2022) (“If an IPR petition relies on
`admissions in combination with reliance on one or more prior art patents or printed publications, those
`admissions do not form ‘the basis’ of the ground and must be considered by the Board in its
`patentability analysis.”).
`
`
`By way of further example, Samsung’s district court expert asserts that U.S. Patent Nos. 11,016,918 and
`11,232,054 are invalid based on a combination of APA and one of the same references—US
`2006/0174140 (Harris)—at issue in IPR2022-00996; a combination of APA, Harris, and another reference
`at issue in IPR2022-00996—US 7,724,604 (Amidi); a combination of APA and another reference at issue
`in IPR2022-00996—US 2006/0080515 (Spiers); and a combination of APA, Spiers, and Amidi. Samsung
`
`

`

`also asserts variations of these four invalidity grounds relying on the combination of APA and the
`knowledge of one skilled in the art, but it relies on the same three references also asserted in IPR2022-
`00996 (Harris, Amidi, and Spiers) for that knowledge. Samsung additionally asserts an invalidity ground
`based on JEDEC specifications already in the record of IPR2022-00996/999 (EX1027-1028) combined
`with either a 2006 IEEE publication (Shi) or Shi and the Amidi reference at issue in IPR2022-00996.
`
`
`Samsung also asserts an invalidity ground relying on the combination of APA and the knowledge of one
`skilled in the art, but it relies on the same two references asserted in IPR2022-00639 (Ellsberry and
`Halbert) for that knowledge, and the Federal Circuit has held that, for example, “[a]lthough the prior art
`that can be considered in inter partes reviews is limited to patents and printed publications, it does not
`follow that we ignore the skilled artisan’s knowledge when determining whether it would have been
`obvious to modify the prior art.” Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337 (Fed. Cir.
`2020). Samsung additionally asserts an invalidity ground based on known JEDEC documents combined
`once again with the same two references asserted in IPR2022-00639 (Ellsberry and Halbert). Samsung
`has previously (and improperly) asserted JEDEC documents in IPR proceedings. See, e.g., IPR2022-00062,
`-00064. Moreover, Samsung has argued in this very IPR that the person of ordinary skill in the art “would
`have been familiar with the standards of the day including JEDEC industry standards.” IPR2022-00639,
`Paper 15, at 13 (Oct. 19, 2022) (Institution Decision). Yet another ground was again based on
`documents that Samsung treats as non-confidential either alone or yet again in combination with
`Ellsberry and Halbert.
`
`
`Additionally, Samsung’s district court expert also asserts that U.S. Patent No. 10,860,506 is invalid based
`on a combination of APA and three of the same references—US 2006/0277355 (Ellsberry), US
`2010/0312956 (Haraishi), and US 2007/008791 (Butt)—at issue in IPR2022-00711. Samsung also asserts
`an invalidity ground relying on the combination of APA and the knowledge of one skilled in the art, but it
`relies on the same three references also asserted in IPR2022-00711 (Ellsberry, Haraishi, and Butt) for
`that knowledge. Samsung additionally asserts an invalidity ground based on JEDEC documents either
`alone or combined - once again - with the same three references asserted in IPR2022-00711 (Ellsberry,
`Haraishi, and Butt). As with the ’339 patent, Samsung also asserts that combination(s) of the same three
`IPR references and allegedly non-confidential product specifications would render the ’506 patent
`obvious.
`
`
`Netlist is willing to submit the relevant portions of the report to the PTAB, which are based primarily on
`documents that Samsung has made public or were public, so long as Samsung agrees not to hide behind
`the protective order.
`
`It is difficult to understand how Samsung could believe in good faith that continuing to assert these
`invalidity grounds by including them in the expert report in district court would not violate its
`stipulations. Samsung’s extensive failure to comply with its own stipulations appears to violate its duties
`of candor and good faith, and also appears to constitute an abuse of the IPR process. Netlist contacted
`Samsung’s litigation and IPR counsel the same night after the service of the December 22
`report. Samsung’s litigation counsel only responded after the meet-and-confer between Netlist’s
`counsel and Samsung’s IPR counsel on January 3 and after Samsung’s IPR counsel indicated that he
`would reach out to Samsung’s litigation counsel. And despite having been pointed out the specific
`transgressions, Samsung refused to withdraw invalidity grounds that are in clear violation of the
`stipulation or to dismiss the IPRs. And once again, Samsung tries to hide behind the improper
`confidentiality designation. Given the unusual nature of the situation and the lack of clear precedent,
`
`

`

`Netlist respectfully asks the Board for guidance regarding the most appropriate way to formally present
`this issue for consideration and potential corrective action.
`
`
`
`Petitioner’s position: Petitioner Samsung’s position is that a call is not
`necessary, because any dispute about the stipulation made in the district court
`action (and thus the proper scope of the expert report in that action) should be
`resolved by the judge in that court, not by the Board, for at least the five reasons
`below:
`
`
`First, both the stipulation in dispute, and the expert report in dispute, were
`provided in the Eastern District of Texas by Samsung’s counsel in the Eastern
`District of Texas, to Netlist’s counsel in the Eastern District of Texas, and they
`concern the litigation in the Eastern District of Texas. That court is best
`positioned to determine the impact of the stipulation on the arguments and
`positions taken by the parties in that case.
`
`
`Second, it does not appear that Netlist has met and conferred with Samsung’s
`counsel in the Eastern District of Texas about this dispute, even though it
`concerns the expert report in the Eastern District of Texas. Furthermore,
`invalidity contentions in the Eastern District of Texas were served over six
`months ago, on June 29, 2022 (see ECF No. 54 in Case No. 2:21-cv-00463), and
`the Board’s first Institution Decision was over two months ago on October 19,
`2022, in IPR2022-00639, so Netlist has had months to raise this dispute in the
`Eastern District of Texas but apparently never did.
`
`
`Third, Petitioner is not aware of any authority or precedent for the Board to
`intervene in a dispute about the proper scope of an expert report in a district
`court proceeding. To the contrary, there are many examples of district courts
`resolving disputes like these (without involvement of the Board): See, e.g.,
`Chemours Company FC, LLC v. Daikin Industries, Ltd., No. 17-1612, 2022 WL
`2643517 (D. Del. July 8, 2022); General Access Solus. v. Sprint Spectrum LLC,
`No. 2:20-cv-00007, 2021 WL 5154085 (E.D. Tex. July 21, 2021).
`
`
`Fourth, it would be impractical for the Board to resolve this dispute, as it would
`result in a “trial within a trial” about the scope of an expert report in a different
`proceeding involving different lawyers and a different expert and different
`invalidity arguments. Netlist’s description above of the expert report appears
`inaccurate and misleading, and it would require careful consideration of the
`actual arguments in the expert report and their relevance to all issues in that
`proceeding to resolve the factual and legal disputes that Netlist is
`raising. Moreover, as a practical matter this Board is unlikely to be able to
`develop a sufficient record to resolve this dispute, because it is our
`understanding that the expert report was marked “Confidential” on the basis of
`non-Samsung materials, and that the Protective Order proposed by Netlist and
`signed by the judge precludes any use of that expert report outside of the
`litigation in the Eastern District of Texas: “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.
`Any person or entity who obtains access to DESIGNATED MATERIAL or the contents
`thereof pursuant to this Order shall not make any copies, duplicates, extracts,
`summaries or descriptions of such DESIGNATED MATERIAL or any portion thereof
`except as may be reasonably necessary in the litigation of this Action.” Moreover, we
`understand that the prior art discussion in the expert report, about which Netlist
`complains, are potentially relevant to issues other than validity, requiring the
`Board to familiarize itself with the potential infringement and damages issues in
`the district court case in order to resolve the dispute. As noted above, the district
`court is better positioned to resolve these issues.
`
`
`Fifth, Netlist never raised the Fintiv factors or the disputed stipulation in these
`IPRs, and the Board’s Institution Decisions also never raised the Fintiv factors or
`the disputed stipulation in these IPRs. Indeed, Petitioner’s only statement to the
`Board regarding the stipulations consisted of accurately informing the Board in
`updated mandatory notices that the stipulation had been provided in the Eastern
`District of Texas. See IPR2022-00639, Paper 12; IPR2022-00711, Paper 11;
`IPR2022-00996, Paper 9; IPR2022-00999, Paper 10. Thus it appears that the
`Eastern District of Texas has a much more significant interest in resolving this
`dispute than the Board.
`
`
`On the merits, Samsung does not believe that its expert report in the Eastern
`District of Texas contradicts its stipulation in the Eastern District of Texas. In any
`event, Samsung still agrees to follow its stipulation that “Samsung will not pursue
`an invalidity defense in the Eastern District of Texas action (C.A. No. 21-463-JRG) that
`the patent claims subject to the instituted IPR are invalid based on grounds that were
`raised or reasonably could have been raised in the IPR.” Samsung will of course
`follow any ruling by the judge in the Eastern District of Texas deciding whether or
`not the disputed arguments in the expert report “pursue an invalidity defense …
`based on grounds that were raised or reasonably could have been raised in the IPR.”
`
`
`
`
`Respectfully,
`
`
`H. Annita Zhong
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`Telephone: (310) 203-7183
`Fax: (310) 556-5385
`
`
`
`
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