Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 42
`Entered: September 27, 2023
`
`
`
`
`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.
`
`
`
`IPR2022-00615 (Patent 7,619,912 B2)
`IPR2022-00996 (Patent 11,016,918 B2)
` IPR2022-00999 (Patent 11,232,054 B2)1
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, JON M. JURGOVAN,
`DANIEL J. GALLIGAN, and KARA L. SZPONDOWSKI,
`Administrative Patent Judges.2
`
`JURGOVAN, Administrative Patent Judge.
`
`
`
`1 Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron
`Technology Texas LLC filed motions for joinder and petitions in
`IPR2023-00203, IPR2023-00405, and IPR2023-00406, and have been joined
`as petitioners in each of the captioned proceedings.
`2 This Order addresses issues that apply in each of the captioned
`proceedings. We therefore exercise our discretion to issue one Order to be
`filed in each proceeding. This is not an expanded panel, the proceedings
`have not been consolidated, and the parties are not authorized to use this
`heading style without prior Board approval.
`
`
`571-272-7822
`
`
`
`
`Paper 42
`Entered: September 27, 2023
`
`
`
`
`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.
`
`
`
`IPR2022-00615 (Patent 7,619,912 B2)
`IPR2022-00996 (Patent 11,016,918 B2)
` IPR2022-00999 (Patent 11,232,054 B2)1
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, JON M. JURGOVAN,
`DANIEL J. GALLIGAN, and KARA L. SZPONDOWSKI,
`Administrative Patent Judges.2
`
`JURGOVAN, Administrative Patent Judge.
`
`
`
`1 Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron
`Technology Texas LLC filed motions for joinder and petitions in
`IPR2023-00203, IPR2023-00405, and IPR2023-00406, and have been joined
`as petitioners in each of the captioned proceedings.
`2 This Order addresses issues that apply in each of the captioned
`proceedings. We therefore exercise our discretion to issue one Order to be
`filed in each proceeding. This is not an expanded panel, the proceedings
`have not been consolidated, and the parties are not authorized to use this
`heading style without prior Board approval.
`
`
`
`IPR2022-00615 (Patent 7,619,912 B2)
`IPR2022-00996 (Patent 11,016,918 B2)
`IPR2022-00999 (Patent 11,232,054 B2)
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`On September 15, 2023, a conference call was held between Samsung
`Electronics Co., Ltd., Micron Technology, Inc., Micron Semiconductor
`Products, Inc., and Micron Technology Texas LLC (collectively
`“Petitioner”), Netlist, Inc. (“Patent Owner”), and Judges Jurgovan, Galligan,
`and Boucher. During the call, we discussed Patent Owner’s request for
`authorization to file a Motion to Submit Supplemental Information under
`37 C.F.R. § 42.123(b). Patent Owner’s request for authorization to file the
`Motion is granted.
`In an e-mail dated September 5, 2023, Patent Owner requested
`authorization to file the Motion, asserting that, in a concurrently pending
`district court litigation, a deposition transcript of Micron’s corporate
`representative on technical matters related to the ’912, ’918, and ’054
`patents shows Petitioner is taking positions that are inconsistent with those
`advanced in these proceedings. IPR2022-00615, Ex. 3017; IPR2022-00996,
`Ex. 3002; IPR2022-00999, Ex. 3002. According to Patent Owner, “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).”3 IPR2022-00615, Ex. 3017; IPR2022-00996, Ex. 3002;
`IPR2022-00999, Ex. 3002.
`
`
`3 Patent Owner also asserted that Micron improperly designated the
`deposition transcript as confidential under the district court’s protective
`order (IPR2022-00615, Ex. 3017; IPR2022-00996, Ex. 3002;
`
`
`2
`
`
`
`IPR2022-00615 (Patent 7,619,912 B2)
`IPR2022-00996 (Patent 11,016,918 B2)
`IPR2022-00999 (Patent 11,232,054 B2)
`
`In an e-mail dated September 5, 2023, Petitioner Micron opposed
`Patent Owner’s request, arguing that (1) Micron is merely an understudy in
`the captioned proceedings, (2) Patent Owner did not properly seek leave
`from the Board to conduct discovery in the relevant inter partes review
`proceedings, (3) the deposition occurred after the deadline for submitting
`new evidence in the captioned proceedings, and (4) Patent Owner
`misrepresents the referenced testimony as being from a Micron “corporate
`representative.” IPR2022-00615, Ex. 3018; IPR2022-00996, Ex. 3003;
`IPR2022-00999, Ex. 3003.
`In an e-mail dated September 5, 2023, Petitioner Samsung opposed
`Patent Owner’s request as well, arguing that (1) “a call is not necessary
`because Netlist’s apparent dispute . . . is only with Micron, who was joined
`to each of these three IPRs as an ‘understudy,’” (2) the request is untimely
`because “Netlist made no effort to ‘meet and confer to resolve any
`disputes’” on this matter, and “the deadline for Netlist to submit evidence in
`these three IPRs has already passed,” (3) “it is unclear how testimony by
`‘Micron’s corporate representative’ in 2023”—which “is not normally
`considered relevant for issues like claim construction and invalidity”—
`“could be relevant to these three IPRs (where the alleged date of invention
`was over 10 years ago),” and (4) “it is unclear . . . why . . . Netlist did not
`
`
`IPR2022-00999, Ex. 3002), to which Micron and Samsung offered rebuttals
`(IPR2022-00615, Exs. 3018–3019; IPR2022-00996, Exs. 3003–3004;
`IPR2022-00999, Exs. 3003–3004). In a subsequent e-mail dated September
`11, 2023, however, Patent Owner stated that “the deposition transcript in
`question has now been unsealed.” IPR2022-00996, Ex. 3005;
`IPR2022-00999, Ex. 3005. So, the confidentiality of the deposition
`transcript does not appear to be at issue.
`
`3
`
`
`
`IPR2022-00615 (Patent 7,619,912 B2)
`IPR2022-00996 (Patent 11,016,918 B2)
`IPR2022-00999 (Patent 11,232,054 B2)
`
`seek authorization for such discovery in these IPRs within the time limits
`established by the Board’s scheduling orders.” IPR2022-00615, Ex. 3019;
`IPR2022-00996, Ex. 3004; IPR2022-00999, Ex. 3004.
`
`During the conference call, the parties discussed their positions with
`Judges Jurgovan, Galligan, and Boucher. Having considered each party’s
`arguments, we grant Patent Owner’s request for authorization to file a
`Motion to Submit Supplemental Information under 37 C.F.R. § 42.123(b).
`Within seven calendar days from the date of this Order, Patent Owner
`may file a Motion to Submit Supplemental Information under 37 C.F.R.
`§ 42.123(b), not to exceed five (5) pages. The Motion should address (1) the
`subject and scope of the supplemental information Patent Owner seeks to
`submit; (2) why the supplemental information is relevant to the claims in
`each of these proceedings and how the supplemental information indicates
`Petitioner is taking an inconsistent position in each of these proceedings,
`with citations to the record; (3) why Micron’s deponent was speaking as a
`“corporate representative” within the scope of what the deponent was
`designated to testify, and in relation to the claim language of the involved
`patents; (4) why the supplemental information reasonably could not have
`been obtained earlier; and (5) why consideration of the supplemental
`information would be in the interests-of-justice.
`In addition, we request that Patent Owner file the supplemental
`information for which submission is sought as an attachment to the Motion,
`not as an exhibit.
`
`4
`
`
`
`IPR2022-00615 (Patent 7,619,912 B2)
`IPR2022-00996 (Patent 11,016,918 B2)
`IPR2022-00999 (Patent 11,232,054 B2)
`
`If desired, Petitioner, within seven calendar days of the filing date of
`Patent Owner’s Motion to Submit Supplemental Information, may file an
`Opposition to the Motion, not to exceed five (5) pages.
`If desired, within seven days of Petitioner’s Oppostion to the Motion,
`Patent Owner may file a Reply to the Opposition, not to exceed two (2)
`pages.
`
`In view of the foregoing, it is
`
`ORDERED that Patent Owner may file a Motion to Submit
`Supplemental Information under 37 C.F.R. § 42.123(b), limited to five
`pages, within seven calendar days from the date of this Order;
`FURTHER ORDERED that the Motion shall have as attachment(s)
`the supplemental information for which submission is sought, but the
`supplemental information at issue shall not be filed as exhibits;
`
`FURTHER ORDERED that Petitioner may file an Opposition to
`Patent Owner’s Motion, limited to five pages, within seven calendar days of
`the filing date of Patent Owner’s Motion.
`
`FURTHER ORDERED that Patent Owner may file a Reply, limited to
`two pages, within seven calendar days of Petitioner’s Opposition.
`
`
`
`
`
`5
`
`
`
`IPR2022-00615 (Patent 7,619,912 B2)
`IPR2022-00996 (Patent 11,016,918 B2)
`IPR2022-00999 (Patent 11,232,054 B2)
`
`
`FOR PETITIONER:
`Eliot D. Williams
`Theodore W. Chandler
`Ferenc Pazmandi
`Aashish Kapadia
`Brianna L. Potter
`BAKER BOTTS LLP
`eliot.williams@bakerbotts.com
`ted.chandler@bakerbotts.com
`ferenc.pazmandi@bakerbotts.com
`Aashish.kapadia@bakerbotts.com
`Brianna.potter@bakerbotts.com
`DLSamsungNetlistIPRs@bakerbotts.com
`
`Juan Yaquian
`WINSTON & STRAWN LLP
`jyaquian@winston.com
`Winston-IPR-Netlist@winston.com
`
`FOR PATENT OWNER:
`
`Hong Annita Zhong
`IRELL & MANELLA LLP
`hzhong@irell.com
`
`
`
`6
`
`
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