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`Paper No. 33
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD., MICRON TECHNOLOGY, INC.,
`MICRON SEMICONDUCTOR PRODUCTS, INC., and
`MICRON TECHNOLOGY TEXAS LLC,†
`Petitioner,
`v.
`NETLIST, INC.,
`Patent Owner
`
`
`IPR2022-00996
`Patent 11,016,918 B2
`
`
`
`
`
`
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`
`
`
`
`† Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron
`Technology Texas LLC filed a motion for joinder and a petition in IPR2023-00406
`and have been joined as petitioners in this proceeding.
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ......................................................................................... 1
`I.
`II. ARGUMENT .................................................................................................. 2
`A.
`Evidence not properly submitted as exhibits is improper (37
`C.F.R. § 42.63(a)) .................................................................................. 2
`The evidence is untimely (37 C.F.R. § 42.23(b)) ................................. 3
`B.
`III. CONCLUSION .............................................................................................. 4
`
`
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`Applied Materials, Inc. v. Ocean Semiconductor LLC,
`IPR2021-01340, Paper 52 (PTAB Feb. 7, 2022) ................................................... 2
`Ford Motor Company, v. Safe Driving Technologies LLC,
`IPR2021-01446, Paper 28 (PTAB Mar. 10, 2023) ................................................. 3
`Hamilton Technologies LLC v. Tehrani,
`IPR2020-01199, Paper 57 (PTAB Dec. 28, 2021) .............................................3, 4
`Intel Corp. v. Parkervision, Inc.,
`IPR2020-01265, Paper 44 (PTAB Jan. 21, 2022) .................................................. 3
`Regulations
`37 C.F.R. § 42.23(b) ..............................................................................................3, 4
`37 C.F.R. § 42.62 ....................................................................................................... 1
`37 C.F.R. § 42.63(a) ................................................................................................... 2
`37 C.F.R. § 42.64(c) ................................................................................................... 1
`37 C.F.R. § 42.7(a) ..................................................................................................... 4
`Other Authorities
`PTAB Consolidated Trial Practice Guide (Nov. 2019) ............................................. 3
`
`
`
`
`iii
`
`

`

`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.64(c) and the Federal Rules of Evidence (FRE),
`
`which apply here, see 37 C.F.R. § 42.62, Petitioner hereby moves to exclude
`
`materials referenced with three URLs submitted with the Patent Owner Sur-Reply
`
`on August 4, 2023 (Paper No. 31), which Petitioner timely objected to on August
`
`URL
`
`11, 2023 (Paper No. 32):
`
`Page of Sur-Reply
`(Paper 31)
`
`Page 1 n.2:
`
`Page 24:
`
`
`
`
`
`
`
`1
`
`

`

`Page of Sur-Reply
`(Paper 31)
`
`URL
`
`Page 26:
`
`
`
`II. ARGUMENT
`A. Evidence not properly submitted as exhibits is improper (37
`C.F.R. § 42.63(a))
`Patent Owner failed to submit the materials cited via these URLs as exhibits,
`
`as required under 37 C.F.R. § 42.63(a), which states that “[e]vidence consists of
`
`affidavits, transcripts of depositions, documents, and things” and further that “[a]ll
`
`evidence must be filed in the form of an exhibit.” Id. (emphasis added). In a
`
`similar situation, the Board has granted a motion to exclude citations to URLs
`
`(where no corresponding exhibit was filed) because “the content of the URL is
`
`transitory…” and, thus, permitting the URL in the brief “would leave ambiguity in
`
`[the] record.” Applied Materials, Inc. v. Ocean Semiconductor LLC, IPR2021-
`
`01340, Paper 52, at 61–62 (PTAB Feb. 7, 2022) (granting “Petitioner’s motion to
`
`exclude the URL cited at page 8 of Patent Owner’s Sur-reply” and holding that
`
`
`
`2
`
`

`

`“absent citation to the stricken URL, [Patent Owner's] argument lacks evidentiary
`
`support”).
`
`B.
`The evidence is untimely (37 C.F.R. § 42.23(b))
`Even had Patent Owner submitted its URL evidence in their proper form as
`
`exhibits, submission of such evidence would be improper as untimely (as Patent
`
`Owner recently learned in IPR2022-00639, suggesting that Patent Owner’s actions
`
`here were a deliberate attempt to try to circumvent the relevant rule). Rule
`
`42.23(b) provides a “blanket prohibition” on submitting new evidence filed with a
`
`sur-reply other than “deposition transcripts of the cross-examination of any reply
`
`witness.” Intel Corp. v. Parkervision, Inc., IPR2020-01265, Paper 44, at 74
`
`(PTAB Jan. 21, 2022); 37 C.F.R. § 42.23(b); PTAB Consolidated Trial Practice
`
`Guide at 73 (Nov. 2019). Indeed, the Board has routinely excluded improper
`
`evidence filed with a sur-reply. See, e.g., Hamilton Technologies LLC v. Tehrani,
`
`IPR2020-01199, Paper 57, at 52 (PTAB Dec. 28, 2021); Ford Motor Company, v.
`
`Safe Driving Technologies LLC, IPR2021-01446, Paper 28, at 81–83 (PTAB Mar.
`
`10, 2023).
`
`None of the evidence submitted via URL consists of a deposition transcript
`
`of a cross-examination of a reply witness. All three citations in question are
`
`websites referenced via URLs, with no direct connection to the present proceeding.
`
`
`
`3
`
`

`

`Because these exhibits are not “deposition transcripts of a cross-
`
`examination,” 37 C.F.R. § 42.23(b) requires exclusion. Patent Owner could have
`
`sought the Board’s authorization to submit additional evidence, but has failed to do
`
`so, and thus Patent Owner was unjustified in submitting this evidence (even setting
`
`aside that it was not submitted as exhibits). Hamilton Technologies, IPR2020-
`
`01199, Paper 57, at 52 (“[O]ur rules do not permit a party to file exhibits without
`
`authorization… Our rules only authorize limited exhibits that may be filed with a
`
`sur-reply.” (citing 37 C.F.R. § 42.7(a) and 42.23(b))). Accordingly, even if the
`
`citations in question were submitted as exhibits, they are barred by rule.
`
`III. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`exclude the evidence described above.
`
`
`
`4
`
`

`

`Dated: August 16, 2023
`
`
`/Eliot D. Williams/
`Eliot D. Williams, Reg. #50,822
`BAKER BOTTS L.L.P.
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`T: (650) 739-7511
`F: (650) 739-7611
`
`Theodore W. Chandler
`Reg. No. 50,319
`BAKER BOTTS L.L.P.
`1801 Century Park East
`Suite 2400
`Los Angeles, CA 90067
`T: (213) 202-5702
`F: (213) 202-5732
`
`Ferenc Pazmandi
`Reg. No. 66,216
`BAKER BOTTS L.L.P.
`101 California Street
`Suite 3200
`San Francisco, CA 94111
`T: (415) 291-6255
`F: (415) 291-6355
`
`Brianna L. Potter
`Reg. No. 76,748
`BAKER BOTTS L.L.P.
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`T: (650) 739-7556
`F: (650) 739-7656
`
`Counsel for Petitioner
`Samsung Electronics Co., Ltd.
`
`
`
`
`5
`
`

`

`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 16th day of August,
`
`2023, Petitioner’s Motion to Exclude was served by email on the following
`
`counsel for Patent Owner and Micron:
`
`Hong Annita Zhong (Reg. No. 66,530)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`Phone: (310) 277-1010
`Fax: (310) 203-7199
`Email: hzhong@irell.com
`
` NetlistIPR@irell.com
`Juan C. Yaquian (Reg. No. 70,755)
`WINSTON & STRAWN LLP
`800 Capital Street, Suite 2400
`Houston, TX 77002-2925
`Tel. (713) 651-2600
`Fax. (713) 651-2700
`Email: JYaquian@winston.com;
`Winston-IPR-Netlist@winston.com
`
`Dated: August 16, 2023
`
`
`
`
`
`Jason Sheasby (not admitted)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`Phone: (310) 277-1010
`Fax: (310) 203-7199
`Email: jsheasby@irell.com
`
`Michael R. Rueckheim (not admitted)
`WINSTON & STRAWN LLP
`255 Shoreline Drive, Suite 520
`Redwood City, California 94065
`Phone: (650) 858-6500
`Fax: (650) 858-6550
`Email: mrueckheim@winston.com;
`Winston-IPR-Netlist@winston.com
`
`
`/Eliot D. Williams/
`Eliot D. Williams, Reg. #50,822
`BAKER BOTTS L.L.P.
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`T: (650) 739-7511
`F: (650) 739-7611
`Counsel for Petitioner Samsung
`Electronics Co., Ltd.
`
`
`
`6
`
`

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