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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 LLC1
`Petitioner,
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`v.
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`NETLIST, INC.,
`Patent Owner.
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`
`___________________
`
`Case No. IPR2022-00996
`Patent No. 11,016,918
`___________________
`
`
`PATENT OWNER’S REPLY TO OPPOSITION TO MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION PURSUANT TO 37 C.F.R. §42.123(b)
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`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`1 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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`112070115
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`Case No. IPR2022-00996
`Patent No. 11,016,918
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`For the first time in its Opposition, Petitioner formally seeks a construction of
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`“power, data, address, and control signals” that includes “encoded data” and
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`“encoded packet[s]” of data. The specification makes no reference to “encoded
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`data” or “encoded packets” as “power, data, address, and control signals.” Petitioner
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`is unable to identify a single passage in the specification describing these specific
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`signals as being encoded signals. This is not an accident. Using encoded data packets
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`requires a de-coding functionality on the module, which is nowhere disclosed. This
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`is not a picayune dispute. One of the insights in the specification is that control
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`signals can be passed to both volatile (DRAM) and non-volatile (Flash) memory on
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`the module. EX1001, 12:44-51; 13:47-56. There is no discussion of how this could
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`occur in the specification (or in the record before the PTAB) if encoded packets were
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`sent. And to be clear, the claims do not just recite “signals,” and the question is not
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`whether encoded data packets are “signals.” The claims recite very specific types
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`of signals: “power, data, address, and control signals.” The question is whether
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`encoded data packets are these four specific signals. Not whether an encoded data
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`packet is generically a “signal.” Mr. Holbrook admitted “encoded data” is different
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`than “signals” plural. Attachment A, 53:7-13. This testimony is relevant because for
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`the first time on reply Petitioner attempted to correct a clear defect in its Petition:
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`the Petition points to “signals” from the AMD to the memory devices as satisfying
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`the limitation, while ignoring the relevant interface is between the off-module
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`11270115
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`- 1 -
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`Case No. IPR2022-00996
`Patent No. 11,016,918
`memory controller and the edge of the module. Petition, 22-23; POR, 11-15. Once
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`this was pointed out, Petitioner said for the first time on reply that encoded data
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`packets satisfy the limitation. Reply, 7-9. But there is nothing in the Petition, the
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`expert declaration submitted with the Petition, nor the expert testimony that
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`supported this pivot.
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`The Opposition assertion that this is just “extrinsic evidence” and that “undue
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`reliance on extrinsic evidence poses the risk that it will be used to change the
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`meaning of claims ….” Opp. at 4. But it is Petitioner that is seeking to construe
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`“power, data, address, and control signals” as “encoded packets.” If the Petitioner
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`is claiming that the “power, data, address, and control signals” should be decided
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`solely on the intrinsic record, then the Petition fails. There is nothing in the intrinsic
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`record that treats “power, data, address, and control signals” as “encoded packets.”
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`The transcript is admissible under FRE 801(d)(2) as Petitioner Micron is a
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`party to both the litigation and this IPR, and Micron designated Mr. Holbrook as its
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`corporate representative on “all facts and circumstances” relating to non-
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`infringement, which necessarily requires an understanding of the claims. The
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`transcript is also admissible under FRE 804(b)(3) as a “statement against interest”
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`where Mr. Holbrook was “unavailable” under at least FRE 804(a)(5)(B). Mr.
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`Holbrook was not identified until August 3 and not made available for deposition
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`until August 30, well after the close of discovery in this proceeding.
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`Case No. IPR2022-00996
`Patent No. 11,016,918
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`Dated: October 18, 2023
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`Respectfully submitted,
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`By /Jonathan Lindsay/
`H. Annita Zhong (Reg. No. 66,530)
`Jonathan Lindsay (Reg. No. 45,810)
`Jason Sheasby (pro hac vice)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`Tel: (310) 277-1010
`Fax: (310) 203-7199
`Attorneys for Patent Owner
`Netlist, Inc.
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`- 3 -
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`Case No. IPR2022-00996
`Patent No. 11,016,918
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. section 42.6, that on October 18,
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`2023, a complete copy of the foregoing document PATENT OWNER’S REPLY
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`TO OPPOSITION TO MOTION TO SUBMIT SUPPLEMENTAL
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`INFORMATION PURSUANT TO 37 C.F.R. §42.123(b) was served by
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`electronic mail, as agreed to by the parties, upon the following:
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`Eliot D. Williams, Reg. No. 50,822
`Theodore W. Chandler, Reg. No. 50,319
`Ferenc Pazmandi, Reg. No. 66,216
`Brianna L. Potter, Reg. No. 76,748
`DLSamsungNetlistIPRs@BakerBotts.com
`
`Juan C. Yaquian
`Michael Rueckheim
`Winston-IPR-Netlist@winston.com
`
`
`/Susan M. Langworthy/
` Susan M. Langworthy
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