Page 1 of 3
`
`From: Williams, Eliot D. <Eliot.Williams@BakerBotts.com>
`Sent: Tuesday, September 5, 2023 5:07 PM
`To: Lindsay, Jonathan <jlindsay@irell.com>; Trials <Trials@USPTO.GOV>
`Cc: DL Samsung Netlist IPRs <dlsamsungnetlistiprs@BakerBotts.com>; winston-ipr-netlist@winston.com;
`#NetlistIPR [Int] <NetlistIPR@irell.com>
`Subject: RE: IPR2022-00996, IPR2022-00999 - Request for Conference Call
`
`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, 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,
`because Netlist’s apparent dispute (which counsel for Samsung in this IPR knows nothing
`about) is only with Micron, who was joined to each of these three IPRs as an “understudy,”
`meaning Micron has had no active involvement in these IPRs. If and when Samsung is
`terminated from these proceedings, and Micron becomes an active petitioner, then Netlist can
`renew its request for a call with the Board about Micron, but until then, Netlist has not provided
`an appropriate basis for a call with the Board. See IPR2022-00615, Paper 58, at 14
`(“[Micron]’s role in IPR2022-00615 shall be limited as stated by [Micron] in the Motion
`for Joinder (Paper 1 at 6–9) unless and until Samsung is terminated from that
`proceeding”); IPR2022-00996, Paper 26, at 4 (similar); IPR2022-00999, Paper 27, at 4
`(similar).
`
`Furthermore, it appears that Netlist’s dispute with Micron must be resolved by the judge in the
`district court action, not the Board. Netlist has made reference to “a deposition transcript of
`Micron’s corporate representative, but Micron has improperly designated the transcript as confidential
`under the district court’s protective order.” Again, counsel for Samsung in this IPR knows nothing
`about the transcript that Netlist is referring to or what Netlist’s apparent dispute concerns, but
`the public docket for the district court action between Netlist and Micron shows that a stipulated
`Protective Order was entered which 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): “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.” Netlist, Inc. v. Micron Tech., Inc., No.
`2:22-cv-00203, ECF No. 46, at 3, ¶ 5 (E.D. Tex. Nov. 1, 2022). Indeed, in a similar situation,
`the Board specifically admonished Netlist on this issue: “Any dispute regarding the scope or
`alleged violation of stipulations proffered by a party should be addressed in the district
`court proceedings in which such stipulations are to have effect.” IPR2022-00996, Paper
`14, at 2 (PTAB Jan. 18, 2023).
`
`IPR2022-00996, IPR2022-00999
`Ex. 3004
`
`

`

`Page 2 of 3
`
`Samsung is also concerned about the timing of Netlist’s request for a call with the Board.
`Netlist sent an email, out of the blue, over Labor Day Weekend, on Saturday, September 2,
`2023, unilaterally stating that it was going to email the Board about an issue that it had never
`raised before and which counsel for Samsung in this IPR knows nothing about. Netlist made
`no effort to “meet and confer to resolve any disputes.” Furthermore, the deadline for Netlist to
`submit evidence in these three IPRs has already passed: Netlist filed its Patent Owner
`Response in IPR2022-00615 on August 10, 2023 (after a five-month delay, see Paper 63), and
`Netlist filed its sur-replies in IPR2022-00996 and -00999 on August 4, 2023 (after an extension
`of 30 days and an email from the Board on July 27, 2023, stating, “No new evidence may be
`entered. See 37 C.F.R. § 42.23(b). Any such future requests from Patent Owner are likely to be denied.”). In
`light of the schedules for these three IPRs — which have already been delayed at Netlist’s
`request — it appears that Netlist’s request to submit additional evidence is untimely.
`
`Finally, it is unclear how testimony by “Micron’s corporate representative” in 2023 could be
`relevant to these three IPRs (where the alleged date of invention was over 10 years ago), and
`why (if such evidence could be relevant) Netlist did not seek authorization for such discovery in
`these IPRs within the time limits established by the Board’s scheduling orders. In general, fact
`testimony by corporate representatives is not normally considered relevant for issues like claim
`construction and invalidity, because those issues are “in the clear purview of experts[,] and lay
`witness testimony on such issues does not comply with the Federal Rules of Evidence or Civil
`Procedure.” HVLPO2, LLC v. Oxygen Frog, LLC, 949 F.3d 685, 689 (Fed. Cir. 2020)
`(emphasis added); see also Fed. R. Evid. 701–02.
`
`For at least these reasons, Petitioner Samsung does not believe that a call with the Board is
`necessary or appropriate.
`
`Respectfully,
`
`Eliot D. Williams
`BAKER BOTTS LLP■
`+1 202 639-1334 (Direct Dial)
`
`From: Lindsay, Jonathan <jlindsay@irell.com>
`Sent: Tuesday, September 5, 2023 4:16 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: DL Samsung Netlist IPRs <dlsamsungnetlistiprs@BakerBotts.com>; winston-ipr-netlist@winston.com;
`#NetlistIPR [Int] <NetlistIPR@irell.com>
`Subject: IPR2022-00996, IPR2022-00999 - Request for Conference Call
`
`[EXTERNAL EMAIL]
`
`Dear Board,
`
`Patent Owner requests a conference call with the Board to disclose positions Micron has taken in the
`parallel district court proceeding which are inconsistent with positions it has taken in the above IPR
`proceedings which directly impact the merits of the IPR challenge. This information is contained in a
`deposition transcript of Micron’s corporate representative on technical matters relating to the 918/054
`patents, and who discussed the difference between AMB packets and signals. This deposition did not
`occur until August 30. The next day Netlist asked for the relevant testimony be de-designated so that it
`
`IPR2022-00996, IPR2022-00999
`Ex. 3004
`
`

`

`Page 3 of 3
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`can be used. Micron has improperly designated the transcript as confidential under the district court’s
`protective order, and therefore Patent Owner is unable to submit the information itself as supplemental
`information. Moreover, failure on Micron’s part to disclose this information is a direct non-compliance
`with its obligation to disclose inconsistent information under 36 CFR 42.51(b)(1). Netlist has made
`Micron aware of its concerns regarding compliance with 36 CFR 42.51(b)(1).
`
`Patent Owner respectfully requests a conference call with the Board to seek guidance on how to proceed
`including, if necessary, seeking leave to file a motion to compel discovery.
`
`The parties are available at the following time:
`
`•
`•
`
`Wednesday, September 6, between 11:00am and 3:30pm Eastern
`Thursday, September 7, between 11:00am and 3:30pm Eastern
`
`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. Any distribution or use of this communication by anyone other than the intended recipient(s) is
`strictly prohibited and may be unlawful. If you are not the intended recipient, please notify the sender by
`replying to this message and then delete it from your system. Thank you.
`
`Confidentiality Notice:
`
`The information contained in this email and any attachments is intended only for the recipient[s] listed above and may be
`privileged and confidential. Any dissemination, copying, or use of or reliance upon such information by or to anyone other
`than the recipient[s] listed above is prohibited. If you have received this message in error, please notify the sender
`immediately at the email address above and destroy any and all copies of this message.
`
`IPR2022-00996, IPR2022-00999
`Ex. 3004
`
`