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`Paper No. 37
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD., MICRON TECHNOLOGY, INC.,
`MICRON SEMICONDUCTOR PRODUCTS, INC., and
`MICRON TECHNOLOGY TEXAS LLC,†
`Petitioner,
`v.
`NETLIST, INC.,
`Patent Owner
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`
`IPR2022-00996
`Patent 11,016,918 B2
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`PETITIONER’S REPLY IN SUPPORT OF
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`† 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.
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION ......................................................................................... 1
`I.
`II. ARGUMENT .................................................................................................. 1
`A.
`Patent Owner’s hyperlink to PC Magazine is improper ....................... 1
`B.
`Patent Owner’s hyperlinks to images are improper, as are the
`images themselves ................................................................................. 3
`III. CONCLUSION .............................................................................................. 5
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
`Applied Materials v. Ocean Semiconductor LLC,
`IPR2021-01340, Paper 52 (PTAB Feb. 7, 2022) ................................................... 3
`Intel Corp. v. Parkervision, Inc.,
`IPR2020-01265, Paper 44 (PTAB Jan. 21, 2022) .................................................. 2
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .............................................................. 3
`Regulations
`37 C.F.R. § 42.23(b) ......................................................................................... 1, 3, 4
`37 C.F.R. § 42.63(a) ...................................................................................... 1, 3, 4, 5
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`
`ii
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`I.
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`INTRODUCTION
`Patent Owner’s opposition does not dispute that the URL-supported
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`materials in its Sur-Reply violate 37 C.F.R. §§ 42.63(a) and 42.23(b), which Patent
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`Owner does not even bother to cite. Instead, Patent Owner inappropriately
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`reiterates its claim construction arguments on the merits, under the premise of
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`arguing that the URL-supported materials are relevant. Paper 34 (“Opp’n”) at 1–4.
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`But alleged relevance does not excuse Patent Owner from following the proper
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`rules for submitting evidence in this proceeding. And the fact that Patent Owner is
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`so desperate to inject random extrinsic evidence into the record at this late date
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`merely highlights the weakness of Patent Owner’s claim construction positions.
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`II. ARGUMENT
`A.
`Patent Owner’s hyperlink to PC Magazine is improper
`Patent Owner’s arguments about the PC Magazine webpage focus on the
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`alleged relevance of that extrinsic evidence to Patent Owner’s claim construction
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`arguments. Opp’n at 1–3. But relevance has nothing to do with this Motion: this
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`Motion is about Patent Owner failing to follow well-established rules for
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`submitting evidence in an IPR. If Patent Owner genuinely needed to present new
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`evidence “to clarify a potential term of confusion that Netlist could not foresee as it
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`first arose in the Reply,” id. at 3, then Patent Owner should have sought permission
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`to submit new evidence as exhibits. Having failed to do so, Patent Owner cannot
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`now complain that its belated evidence is necessary to its arguments. See, e.g.,
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`1
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`Intel Corp. v. Parkervision, Inc., IPR2020-01265, Paper 44, at 74–75 (PTAB Jan.
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`21, 2022) (excluding evidence submitted with sur-reply).
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`To the extent the Board considers relevancy in resolving this Motion,
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`Petitioner disagrees with Patent Owner’s assertion of relevancy. The cited
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`statement from PC Magazine is irrelevant to the construction of “memory
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`module,” which is the actual claim term at issue. The phrase “main memory
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`module” does not appear in the specification or the claims—it comes only from
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`Patent Owner’s incorrect attempts to narrow the claims. As previously explained
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`by Petitioner, neither the District Court’s construction nor Dr. Wolfe’s prior
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`testimony limit a “memory module” to a “main memory module.” See Paper 25
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`(Reply) at 1–2. Patent Owner’s citation to PC Magazine is a textbook example of
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`why the Federal Circuit has held that such extrinsic evidence is unreliable:
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`“[T]here is a virtually unbounded universe of potential extrinsic evidence of some
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`marginal relevance that could be brought to bear on any claim construction
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`question. In the course of litigation, each party will naturally choose the pieces of
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`extrinsic evidence most favorable to its cause, leaving the court with the
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`considerable task of filtering the useful extrinsic evidence from the fluff. . . .
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`[U]ndue reliance on extrinsic evidence poses the risk that it will be used to change
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`the meaning of claims in derogation of the ‘indisputable public records consisting
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`of the claims, the specification and the prosecution history,’ thereby undermining
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`2
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`the public notice function of patents.” Phillips v. AWH Corp., 415 F.3d 1303,
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`1318–19 (Fed. Cir. 2005) (en banc).
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`Patent Owner mischaracterizes Applied Materials by arguing that “the ruling
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`is in connection with a motion to strike a new argument.” Opp’n at 3. To the
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`contrary, the Board’s decision in Applied Materials was to “grant Petitioner’s
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`motion to exclude the URL…[and] not strike the argument that the URL is cited as
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`supporting.” Applied Materials v. Ocean Semiconductor LLC, IPR2021-01340,
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`Paper 52, at 62 (PTAB Feb. 7, 2022) (emphasis added). There was no need to
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`move to strike the argument in Applied Materials because “absent citation to the
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`stricken URL, such argument lacks evidentiary support.” Id. The same is true
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`here.
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`B.
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`Patent Owner’s hyperlinks to images are improper, as are the
`images themselves
`Contrary to Patent Owner’s suggestion that “Petitioners do not seem to
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`object to the images themselves,” Opp’n at 5, this Motion is not limited to the
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`literal URLs and also seeks to exclude the “materials referenced with [the] URLs,”
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`Paper 33 at 1. The images related to the URLs are specifically identified and
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`reprinted in the first two pages of Petitioner’s Motion. Id. at 1–2. Those images
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`(as well as the underlying URLs) cannot be considered as evidence in this
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`proceeding because they do not comply with 37 C.F.R. §§ 42.63(a) and 42.23(b).
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`3
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`Patent Owner argues that the new images should be considered because their
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`“purpose” is similar to that of a “demonstrative.” Opp’n at 5. But unlike a
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`demonstrative, these new images have no basis in properly submitted evidence.
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`Rather, Patent Owner is trying to use the URL-cited images as new, untimely
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`support for new positions. That is not the same “purpose” as a demonstrative
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`illustration. In particular, Patent Owner is trying to use random images off the
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`Internet to try to contradict the actual disclosure of Spiers, which discloses memory
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`devices (yellow) on a module, resulting in a “memory module”:
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`Pet. at 95.
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`Furthermore, as a legal matter, Patent Owner cites no authority to support its
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`position that the “purpose” of the evidence creates an exception to 37 C.F.R.
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`§§ 42.63(a) or 42.23(b). In fact, this position directly contradicts the language of
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`4
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`37 C.F.R. § 42.63(a), which says that “[a]ll evidence must be filed in the form of
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`an exhibit.” Id. (emphasis added). Evidence, according to this same section,
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`“consists of affidavits, transcripts of depositions, documents, and things.” Id.
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`There is no distinction made for evidence serving different purposes. No matter
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`what “purpose” Patent Owner may have had in mind for the images and URLs,
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`they are still untimely and not in compliance with the rules.
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`III. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`exclude the evidence described above.
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`Dated: August 30, 2023
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`
`/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
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`5
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`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
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`Counsel for Petitioner
`Samsung Electronics Co., Ltd.
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`6
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 30th day of August,
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`2023, Petitioner’s Reply in Support of Petitioner’s Motion to Exclude
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`Evidence was served by email on the following counsel for Patent Owner and
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`Micron:
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`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
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`Dated: August 30, 2023
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`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
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`
`/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.
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`7
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