Trials@uspto.gov
`571-272-7822
`
`Paper 48
`Date: December 6, 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, 1
`Petitioner,
`v.
`NETLIST, INC.,
`Patent Owner.
`
`IPR2022-00996
`Patent 11,016,918 B2
`
`
`
`
`
`Before PATRICK M. BOUCHER, JON M. JURGOVAN, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`JURGOVAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Patent Owner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`
`
`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. See
`Paper 26.
`
`
`
`
`571-272-7822
`
`Paper 48
`Date: December 6, 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, 1
`Petitioner,
`v.
`NETLIST, INC.,
`Patent Owner.
`
`IPR2022-00996
`Patent 11,016,918 B2
`
`
`
`
`
`Before PATRICK M. BOUCHER, JON M. JURGOVAN, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`JURGOVAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Patent Owner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`
`
`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. See
`Paper 26.
`
`
`
`
`
`IPR2022-00996
`Patent 11,016,918 B2
`
`On October 4, 2023, Patent Owner submitted an authorized Motion to
`
`Submit Supplemental Information (Paper 43, “Mot.”) pursuant to 37 C.F.R.
`§ 42.123(b). On October 11, 2023, Petitioner submitted an Opposition
`(Paper 45, “Opp.”) to Petitioner’s Motion. On October 18, 2023, Patent
`Owner filed its Reply (Paper 46) to Petitioner’s Opposition. For the reasons
`below, we deny Patent Owner’s Motion.
`The testimony Patent Owner seeks to admit into the record is from
`joined Petitioner Micron’s corporate representative, Mr. Boe Holbrook,
`under Fed.R.Civ.P. 30(b)(6) from a deposition taken in parallel litigation.
`Mot. 1. Mr. Holbrook was to testify as to all facts and circumstances related
`to non-infringement of U.S. Patent No. 11,016,918 (“the ’918 patent”). Id.
`Patent Owner seeks to admit testimony to the effect that Mr. Holbrook, who
`is not an expert in FBDIMMs 2 but who Patent Owner contends is a person
`of ordinary skill in the art, testified that there is a difference between
`encoded data and data signals in terms of controlling memory devices on a
`module. Id. at 3; see also Reply 1–2. Patent Owner further argues that
`Mr. Holbrook’s testimony corroborates that “form factor” in the context of
`the ’918 patent means the shape of the module, and not how information is
`passed (we presume between the memory module and memory controller).
`Mot. 4.
`Petitioner argues that it was not given notice of Mr. Holbrook’s
`deposition and did not have an opportunity to question the witness, that
`Micron is limited to an “understudy” role in this proceeding, that Patent
`Owner never sought discovery from Micron in this proceeding, and that we
`
`
`2 Fully-Buffered Dual In-Line Memory Modules.
`
`2
`
`
`
`IPR2022-00996
`Patent 11,016,918 B2
`
`previously advised Patent Owner that no new evidence may be entered and
`that we would likely deny any such future requests from Patent Owner.
`Opp. 1.
`Petitioner further argues that Patent Owner failed to show that
`Mr. Holbrook’s testimony is relevant to a claim at issue in this proceeding
`under 37 C.F.R. 42.123(a)(2). Opp. 1–3. Petitioner contends that Patent
`Owner seeks construction of the term “signals” but argues that the Federal
`Circuit has not identified extrinsic factual testimony of a non-expert witness
`as relevant to claim construction. Id. at 2. Petitioner also argues
`Mr. Holbrook’s testimony is not relevant in this proceeding because there is
`no inconsistency with any position taken by any Petitioner, including
`Micron. Id. at 2. Petitioner further argues that Mr. Holbrook was never
`asked about the meaning of the disputed claims, nor was he designated on
`that topic. Id. Mr. Holbrook also testified, when asked whether an AMB3
`for an FBDIMM uses encoded data as opposed to data signals, that he would
`not know and that AMB and FBDIMM was not his area of expertise. Id. at
`2–3.
`
`We agree with Petitioner that the proffered testimony is not relevant
`in this proceeding. The claims of the ’918 patent” recite “power, data,
`address and control signals” (see, e.g., claim 1) but do not recite anything to
`do with encoding. And Patent Owner does not argue that the encoded data
`received by an FBDIMM AMB do not contain data, address, and control
`signals. Patent Owner’s argument is thus to the format of the data, address,
`and control signals, not their content. Furthermore, Mr. Holbrook has not
`
`
`3 Advanced Memory Buffer.
`
`3
`
`
`
`IPR2022-00996
`Patent 11,016,918 B2
`
`been shown to be qualified to testify as to claim construction, and in any
`case, he testified as to non-infringement concerning DDR54 modules, not
`patentability of the modules as at issue in this proceeding. We agree with
`Petitioner that this testimony would be of little probative value and is
`substantially outweighed by unfair prejudice, delay, and wasting time.
`FRE 403.
`Petitioner also contends that Patent Owner’s testimony comes too late
`in this proceeding to be considered. Opp. 5. We agree. Patent Owner’s
`Motion is the first mention of “form factor” in relation to “the shape of the
`module, not how information is passed,” in this proceeding, and would
`present a new issue that has not been fully briefed. Patent Owner does not
`satisfactorily explain why it did not seek to depose Mr. Holbrook in this
`proceeding or why it did not depose Mr. Holbrook earlier.
`Patent Owner has not shown that consideration of the supplemental
`information would be in the interests of justice, as required under 37 C.F.R.
`§ 42.123(b) at this late stage of the proceeding.
`
`
`I.
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion to Submit Supplemental
`Information is denied.
`
`
`
`
`
`
`
`4 Double Data Rate, 5th Generation.
`
`4
`
`
`
`IPR2022-00996
`Patent 11,016,918 B2
`
`FOR PETITIONER:
`
`Eliot D. Williams
`Theodore W. Chandler
`Ferenc Pazmandi
`Ashish Kapadia
`Brianna Potter
`BAKER BOTTS LLP
`eliot.williams@bakerbotts.com
`ted.chandler@bakerbotts.com
`ferenc.pazmandi@bakerbotts.com
`aashish.kapadia@bakerbotts.com
`brianna.potter@bakerbotts.com
`
`Juan Yaquian
`WINSTON & STRAWN LLP
`jyaquian@winston.com
`
`FOR PATENT OWNER:
`
`Hong Annita Zhong
`IRELL & MANELLA LLP
`hzhong@irell.com
`
`
`5
`
`
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