Page 1 of 3
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Tuesday, September 12, 2023 2:07 PM
`To: Lindsay, Jonathan <jlindsay@irell.com>; Trials <Trials@USPTO.GOV>
`Cc: DL Samsung Netlist IPRs <dlsamsungnetlistiprs@BakerBotts.com>; Winston-IPR-NetList <Winston-IPR-NetList@winston.com>; #NetlistIPR [Int] <NetlistIPR@irell.com>; Yaquian, Juan C.
`<JYaquian@winston.com>
`Subject: RE: IPR2022-00996, IPR2022-00999 - Request for Conference Call
`
`[EXTERNAL EMAIL]
`
`Counsel,
`
`A conference call is scheduled for Friday, September 15, 2023 at 2pm Eastern time to discuss whether a motion to submit supplemental information is appropriate under 37 C.F.R. Sect.
`42.123(b).
`
`The dial-in number is: 877-935-1046 and the passcode is: 8629657#.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Lindsay, Jonathan <jlindsay@irell.com>
`Sent: Monday, September 11, 2023 7:12 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: DL Samsung Netlist IPRs <dlsamsungnetlistiprs@BakerBotts.com>; Winston-IPR-NetList <Winston-IPR-NetList@winston.com>; #NetlistIPR [Int] <NetlistIPR@irell.com>; Yaquian, Juan C.
`<JYaquian@winston.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 Board,
`
`As an update to Patent Owner’s request below for a conference call regarding certain admissions by Petitioner Micron in the parallel litigation, the deposition transcript in
`question has now been unsealed. Therefore, Patent Owner no longer requires guidance for a motion to compel, but instead seeks leave to file a motion to submit the
`transcript as supplemental information under 36 CFR 42.123(a). The specific information relates to Micron’s testimony about the differences between AMB packets and
`signals, as identified in the original email below.
`
`Jonathan Lindsay
`For Patent Owner Netlist, Inc.
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Thursday, September 7, 2023 9:34 AM
`To: Lindsay, Jonathan <jlindsay@irell.com>; Trials <Trials@USPTO.GOV>
`Cc: DL Samsung Netlist IPRs <dlsamsungnetlistiprs@BakerBotts.com>; Winston-IPR-NetList <Winston-IPR-NetList@winston.com>; #NetlistIPR [Int] <NetlistIPR@irell.com>; Yaquian, Juan C.
`<JYaquian@winston.com>
`Subject: RE: IPR2022-00996, IPR2022-00999 - Request for Conference Call
`
`Counsel,
`
`The Board will contact the parties next week concerning these matters.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Lindsay, Jonathan <jlindsay@irell.com>
`Sent: Tuesday, September 5, 2023 6:22 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: DL Samsung Netlist IPRs <dlsamsungnetlistiprs@BakerBotts.com>; Winston-IPR-NetList <Winston-IPR-NetList@winston.com>; #NetlistIPR [Int] <NetlistIPR@irell.com>; Yaquian, Juan C.
`<JYaquian@winston.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:
`
`Patent Owner disagrees with the argumentative nature and characterizations below, but will refrain from responding at this time in order to comply with PTAB rules against emailed
`arguments. Patent Owner looks forward to clarifying the record for the Board during the conference call.
`
`Jonathan
`
`From: Yaquian, Juan C. <JYaquian@winston.com>
`Sent: Tuesday, September 5, 2023 2:44 PM
`To: Lindsay, Jonathan <jlindsay@irell.com>; Trials <Trials@USPTO.GOV>
`Cc: DL Samsung Netlist IPRs <dlsamsungnetlistiprs@BakerBotts.com>; Winston-IPR-NetList <Winston-IPR-NetList@winston.com>; #NetlistIPR [Int] <NetlistIPR@irell.com>
`Subject: RE: IPR2022-00996, IPR2022-00999 - Request for Conference Call
`
`IPR2022-00996, IPR2022-00999
`Ex. 3005
`
`

`

`Page 2 of 3
`
`Your Honors,
`
`To clarify joined Petitioners’ (Micron) position regarding Patent Owner Netlist’s below email to the Board, counsel for Netlist sent an email (a different email than the below email sent to
`the Board) on Saturday, September 2, 2023 stating that it was going to unilaterally email the Board regarding issues that have yet to be discussed between Netlist and Micron. Micron
`responded with its availability for a meet and confer to understand the issues raised by Netlist’s Saturday email, as well as expressing Micron’s concerns with the substance of the email.
`Netlist did not respond, and instead emailed the Board. If the Board sets a conference time to discuss Netlist’s improper email, during that telephone conference, Micron will ask for
`clarification regarding the issues raised by Netlist’s emails.
`
`A copy of the email correspondence between Netlist and Micron prior to Netlist’s email to the Board is shown as follows:
`
`Respectfully,
`Juan C. Yaquian
`
`Juan C. Yaquian
`Associate Attorney
`Winston & Strawn LLP
`D: +1 713-651-2645
`F: +1 713-651-2700
`VCard | winston.com
`
`From: Lindsay, Jonathan <jlindsay@irell.com>
`Sent: Tuesday, September 5, 2023 3:16 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: DL Samsung Netlist IPRs <dlsamsungnetlistiprs@BakerBotts.com>; Winston-IPR-NetList <Winston-IPR-NetList@winston.com>; #NetlistIPR [Int] <NetlistIPR@irell.com>
`Subject: IPR2022-00996, IPR2022-00999 - Request for Conference Call
`
`Dear Board,
`
`IPR2022-00996, IPR2022-00999
`Ex. 3005
`
`

`

`Page 3 of 3
`
`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 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.
`
`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 in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.
`
`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. 3005
`
`