Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 1 of 82 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG SEMICONDUCTOR,
`INC.,
`
`
`Plaintiffs,
`
`
`
`Defendant.
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`
`
`
`NETLIST, INC.,
`
`
`
`
`v.
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`
`
`
`
`
`
`C.A. No. _______
`
`
`DEMAND FOR JURY TRIAL
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`)
`)
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`
`
`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT AND
`UNENFORCEABILITY; BREACH OF CONTRACT
`
`Plaintiffs Samsung Electronics Co., Ltd. and Samsung Semiconductor, Inc.
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`(collectively, “Samsung”) seek a declaration that Samsung does not directly or indirectly infringe
`
`United States Patent Nos. 10,217,523 (the “’523 patent”), 10,474,595 (the “’595 patent”),
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`9,858,218 (the “’218 patent”), and 7,619,912 (the “’912 patent”) (collectively, the “Patents-in-
`
`Suit”) (Exhibits A-D), either literally or under the doctrine of equivalents; a declaration that the
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`Patents-in-Suit are unenforceable due to inequitable conduct and unclean hands; and a ruling that
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`Defendant Netlist, Inc. (“Netlist”) has breached contractual obligations owed to Samsung,
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`including obligations to license its allegedly essential patents to Samsung and its affiliates on
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`reasonable and non-discriminatory (“RAND”) terms and conditions, as follows:
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`NATURE OF THE ACTION
`
`
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`This is an action for a declaratory judgment and breach of contract arising
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`under the patent laws of the United States, Title 35 of the United States Code, the Declaratory
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`Judgment Act, 28 U.S.C. § 2201 et seq., and state contract law.
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 1
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`

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`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 2 of 82 PageID #: 2
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`
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`Samsung requests this relief because Netlist has, without justification,
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`unilaterally attempted to terminate a November 2015 Joint Development and License Agreement
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`(“Agreement”) in which Netlist granted Samsung a perpetual, paid-up, worldwide license to,
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`among others, the Patents-in-Suit. Samsung believes that it is licensed to the Patents-in-Suit under
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`the Agreement. Netlist, however, claims it has terminated the Agreement, and Netlist asserts that
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`Samsung infringes the Patents-in-Suit, including in ongoing litigation against a user of Samsung
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`products and in license demands made to Samsung. Thus, Samsung seeks a declaration that it does
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`not infringe the Patents-in-Suit and that the Patents-in-Suit are unenforceable. In the alternative,
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`Netlist has breached its commitment to license on RAND terms and conditions, as Netlist insists
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`the Patents-in-Suit are necessarily infringed by the practice of certain standards promulgated by
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`the Joint Electron Device Engineering Council (“JEDEC”) and implemented by the accused
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`Samsung memory modules.
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`
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`Accordingly, for the reasons set forth herein, Samsung seeks a declaratory
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`judgment that it does not infringe the Patents-in-Suit, a declaratory judgment that the Patents-in-
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`Suit are unenforceable due to inequitable conduct and unclean hands, and relief for Netlist’s
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`breaches of contractual obligations owed to Samsung, including obligations to license its allegedly
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`essential patents to Samsung and its affiliates on RAND terms and conditions.
`
`THE PARTIES
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`
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`Samsung Electronics Co., Ltd. (“SEC”) is a corporation organized and
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`existing under the laws of the Republic of Korea, with its principal place of business at 129,
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`Samsung-ro, Yeongtong-gu, Suwon-si, Gyeonggi-do, 443-742, Republic of Korea.
`
`2
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`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 2
`
`

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`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 3 of 82 PageID #: 3
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`
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`Samsung Semiconductor, Inc. (“SSI”) is a corporation organized and
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`existing under the laws of the State of California, with its principal place of business at 3655 North
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`First Street, San Jose, California 95134.
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`
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`On information and belief, Netlist is a corporation organized and existing
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`under the laws of the State of Delaware, with its principal place of business at 175 Technology
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`Drive, Suite 150, Irvine, California 92618.
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`JURISDICTION AND VENUE
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`
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`This Court has subject matter jurisdiction over the claims for declaratory
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`judgments of non-infringement and unenforceability (Counts I–VII) under 28 U.S.C. §§ 1331,
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`1338(a), and 2201(a).
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`
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`This Court has subject matter jurisdiction over the breach of contract claim
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`(Count VIII) pursuant to 28 U.S.C. § 1367. The breach of contract claim forms part of the same
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`case or controversy as the claims for declaratory judgment of non-infringement and
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`unenforceability asserted by Samsung in this action.
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`
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`This Court has personal jurisdiction over Netlist, a corporation organized
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`and existing under the laws of the State of Delaware.
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`
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`Venue is proper in this District under 28 U.S.C. § 1391(b)-(c) because
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`Netlist is subject to personal jurisdiction in this District.
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`
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`An immediate, real, and justiciable controversy exists between Samsung
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`and Netlist as to whether Samsung has infringed the Patents-in-Suit and whether the Patents-in-
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`Suit are unenforceable. For example, and as discussed more fully below, shortly after Netlist
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`unilaterally declared that Samsung was no longer licensed to Netlist’s patent portfolio, Netlist
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`issued a “Notice of Infringement” letter to SEC and SSI, in which Netlist asserted that certain
`
`3
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 3
`
`

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`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 4 of 82 PageID #: 4
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`Samsung memory modules infringe Netlist’s patents, including the ’523, ’595, and ’218 patents.
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`Netlist previously asserted these same patents in litigation against SK hynix, and in doing so served
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`claim charts that purport to demonstrate infringement based on compliance with certain JEDEC
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`memory standards. The Samsung memory modules at issue in this action implement those same
`
`standards. In addition, in an ongoing patent infringement lawsuit against Google, Netlist recently
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`amended its infringement contentions to allege that Google’s servers (which include Samsung’s
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`standard-compliant memory modules) infringe the ’912 patent. As a direct and proximate result of
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`Netlist’s patent enforcement activities with respect to the ’912 patent, Samsung has received
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`demands for indemnification, including from Google and Lenovo. Furthermore, between May
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`2020 and the present, Netlist made demands that Samsung take a second license to Netlist’s
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`portfolio of patents. Accordingly, as set forth herein, Netlist has engaged in affirmative acts related
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`to the enforcement of the Patents-in-Suit against specific Samsung products currently being sold
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`and used throughout the United States. Because this action presents an actual controversy with
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`respect to the Patents-in-Suit, the Court may grant the declaratory relief sought pursuant to 28
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`U.S.C. § 2201 et seq.
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`BACKGROUND
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`A.
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`Netlist’s Extraordinary License Demand and Infringement Claims
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`
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`On November 12, 2015, Netlist and SEC entered into a Joint Development
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`and License Agreement (the “Agreement”). The Agreement contains cross-license, joint
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`development, and product supply provisions.
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`
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`In the Agreement, Netlist granted SEC and its subsidiaries, including SSI,
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`a perpetual, paid-up, worldwide, non-exclusive license to all patents owned or controlled by Netlist
`
`4
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 4
`
`

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`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 5 of 82 PageID #: 5
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`or any of its subsidiaries having an effective first filing date on or prior to November 12, 2020.
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`The license extends through the expiration of the last to expire of the licensed patents.
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`
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`SEC similarly granted Netlist and its subsidiaries a perpetual, paid-up,
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`worldwide, non-exclusive license to all patents owned or controlled by SEC or any of its
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`subsidiaries having an effective first filing date on or prior to November 12, 2020.
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`
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`The Agreement required SEC to make a payment to Netlist of $8 million.
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`SEC made this payment in accordance with the terms of the Agreement.
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`
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`Netlist is now taking extraordinary actions to back out of its grant of a patent
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`license to Samsung.
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`
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`On May 27, 2020, Netlist’s Chief Licensing Officer, Marc J. Frechette,
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`wrote to Mr. Seung Min Sung of SEC, and alleged that Samsung materially breached the
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`Agreement by “repeatedly fail[ing] to fulfill Netlist’s request for NAND and DRAM products
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`throughout the term of the Agreement” and, allegedly, by improperly deducting withholding taxes.
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`In the same letter—which was the first time Netlist raised its breach allegations—Mr. Frechette
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`informed Mr. Sung that Netlist had filed a complaint in U.S. District Court for the Central District
`
`of California with respect to the alleged breach by Samsung and provided a copy of the complaint
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`for reference.
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`
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`On May 28, 2020, the U.S. District Court for the Central District of
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`California docketed Netlist’s breach of contract complaint against SEC. Netlist Inc. v. Samsung
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`Electronics Co., Ltd., No. 8:20-cv-00993-MCS (C.D. Cal.) (“Breach Action”).
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`
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`Netlist next wrote to SEC to terminate the Agreement, including the patent
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`license to SEC and its subsidiaries. On July 15, 2020, Netlist’s Chief Licensing Officer, Marc J.
`
`5
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`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 5
`
`

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`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 6 of 82 PageID #: 6
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`Frechette, wrote to Mr. Seung Min Sung of SEC and stated that “Netlist is hereby terminating,
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`effective immediately, the Agreement including the patent license granted to Samsung . . . .”
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`
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`One week later, on July 22, 2020, Netlist amended its complaint in the
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`Breach Action, seeking a declaration that the license it granted Samsung, but not the license
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`Samsung granted Netlist, is terminated. In the Breach Action, Netlist seeks monetary damages and
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`a declaration “that Netlist has terminated the Agreement pursuant to Section 13.2 and that
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`Samsung’s licenses and rights under the agreement have ceased.”
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`
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`Netlist then issued a “Notice of Infringement” to Samsung and a demand
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`that Samsung take a second license to Netlist’s patents.
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`
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`Specifically, on October 15, 2020, Netlist’s outside counsel in the Breach
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`Action wrote to SEC’s outside counsel in the Breach Action and to the General Counsel of SSI,
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`copying Netlist’s Chief Licensing Officer, Marc J. Frechette, providing notice of Samsung’s
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`alleged infringement of Netlist’s portfolio of patents. Netlist stated that because it had terminated
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`the Agreement, “Samsung is no longer licensed to any of Netlist’s portfolio of patents.” Netlist
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`further asserted that its patents relate to Load Reduced Dual In-Line Memory Modules
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`(“LRDIMMs”) and/or Registered Dual In-Line Memory Modules (“RDIMMs”). Netlist then
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`alleged: “Despite the termination of the Joint Development and License Agreement, Samsung
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`continues to unlawfully utilize Netlist’s innovations and to infringe Netlist’s patents, including
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`United States Patent Nos. 10, 217,523, 10,474,595, and 9,858,218.” Netlist concluded the letter by
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`demanding that “Samsung and its subsidiaries honor third-party intellectual property rights” and
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`engage in “formal licensing discussions.” Netlist further stated that it “reserves all rights and
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`remedies” with respect to the alleged infringement.
`
`6
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 6
`
`

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`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 7 of 82 PageID #: 7
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`
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`Netlist resumed its communications with Samsung in 2021. On February 2,
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`2021, Netlist’s Chief Licensing Counsel, Mr. Marc J. Frechette, indicated by email that Samsung
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`must take a second license, coupled with the demand that Netlist “be made whole” for any alleged
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`breach asserted in the Breach Action.
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`
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`Accordingly, Netlist seeks to double-dip, with a demand that Samsung take
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`a second license to Netlist’s patents.
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`
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`On June 18, 2021, Netlist accused Google of infringing the ’912 patent (at
`
`issue here and licensed to Samsung through the Agreement) based on Google’s use of DDR4
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`LRDIMM and RDIMM memory modules supplied by SSI in Google’s computer systems and
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`servers. Specifically, Netlist amended its infringement contentions in Netlist, Inc. v. Google Inc.,
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`No. 09-cv-05718 (N.D. Cal.) (“Google Infringement Action”) to include the contention that DDR4
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`LRDIMM and RDIMM memory modules infringe claim 16 of the ’912 patent.
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`
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`Netlist also seeks an injunction in the Google Infringement Action, which
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`would preclude Google from using the JEDEC-compliant LRDIMM and RDIMM memory
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`modules supplied by SSI to Google.
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`
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`On July 6, 2021, Google made an indemnification request to SSI in
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`connection with Netlist’s assertion in the Google Infringement Action of the ’912 patent against
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`Google’s use of Samsung’s DDR4 LRDIMM and RDIMM memory modules.
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`
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`On July 19, 2021, Lenovo made an indemnification request to SSI in
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`connection with Netlist’s assertion in the Google Infringement Action of claim 16 of the ’912
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`patent against Google’s use of Lenovo’s “Octopod” servers, which contain Samsung’s DDR4
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`LRDIMM and RDIMM memory modules.
`
`7
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 7
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`

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`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 8 of 82 PageID #: 8
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`B.
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`Netlist Patents and Standard Essential Allegations
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`
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`Netlist asserts that the Patents-in-Suit are essential to one or more of JEDEC
`
`standards JESD79-4C, JESD82-31, JEDEC82-31A, and JESD82-32 (“the DDR4 Standards”),
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`which were developed by the JEDEC JC-40 committee (JESD82-31 and JESD82-32), JC-40.4
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`committee (JESD82-31A), and JC-42.3C committee (JESD79-4C).
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`
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`Netlist contends that the ’523, ’595, and ’218 patents are essential to one or
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`more of the DDR4 Standards. In its October 15, 2020 “Notice of Infringement” letter, Netlist
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`asserts that it owns “over 100 patents and patent applications related to memory technologies,”
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`including LRDIMM and RDIMM, and accuses Samsung of infringing these three patents.
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`Furthermore, Netlist contended that each of these patents is essential to certain DDR4 Standards
`
`in previous litigation against SK hynix. See Netlist, Inc. v. SK hynix Inc., No. 6:20-cv-00194 (W.D.
`
`Texas), D.I. 1 ¶¶ 27, 37, D.I. 1-5 (’218 Claim Chart for DDR4 LRDIMM), D.I. 1-6 (’218 Claim
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`Chart for DDR4 RDIMM), D.I. 1-10 (’595 Claim Chart for DDR4 LRDIMM), D.I. 1-11 (’595
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`Claim Chart for DDR4 RDIMM); Netlist, Inc. v. SK hynix Inc., No. 6:20-cv-00525 (W.D. Texas),
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`D.I. 1 ¶ 27, D.I. 1-2 (’523 Claim Chart for DDR4 LRDIMM). In asserting the ’523, ’595, and ’218
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`patents against SK hynix, Netlist’s complaint included claim charts for each patent, in which
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`Netlist mapped various claim limitations to the DDR4 Standards. See id.
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`
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`Netlist contends that the ’912 patent is essential to one or more of the DDR4
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`Standards. Specifically, in the Google Infringement Action, Netlist asserts that memory modules
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`used by Google (which include Samsung’s LRDIMM and RDIMM memory modules) infringe the
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`’912 patent based on an implementation of the JESD79-4C standard.
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`
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`In the present action, SEC and SSI seek declarations that Samsung’s
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`LRDIMM and RDIMM memory modules that comply with the DDR4 Standards (“Samsung
`
`8
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 8
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`

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`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 9 of 82 PageID #: 9
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`DDR4 Memory Modules”) do not infringe the Patents-in-Suit. SEC and SSI also seek a declaration
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`that the Patents-in-Suit are unenforceable due to inequitable conduct and unclean hands.
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`
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`If, as Netlist contends, the Patents-in-Suit are essential to the DDR4
`
`Standards (which they are not), Netlist is obligated to license the patents on RAND terms. As
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`discussed below, Netlist has failed to offer such a license to Samsung.
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`C.
`
`Samsung Does Not Infringe the Patents-in-Suit and Netlist’s Inequitable
`Conduct and Unclean Hands Renders the Claims Unenforceable
`1.
`
`Overview of the ’523 Patent
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`
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`The ’523 patent relates to a self-testing memory module for testing a
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`plurality of memory devices mounted thereon. Ex. A (’523 Patent) at 5:4–27. An illustrative
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`example is shown in FIG. 2, below.
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`As shown there, the memory module (12) includes a control module (22)
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`
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`that generates address and control signals for testing memory devices (20) and a data module (28)
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`that includes a plurality of distributed data handlers (30) that are each located in proximity to a
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`corresponding memory device (20) and act as a buffer between the memory device (20) and system
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`memory controller (14). The data handlers (30) of the data module (28) generate test patterns to
`
`9
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 9
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`

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`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 10 of 82 PageID #: 10
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`write to the memory devices (20) and compare test patterns read from the memory devices (20) to
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`the written patterns to identify faults. Id. at 5:28–34, 9:22–42.
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`
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`Figure 3 provides additional detail regarding the control module, data
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`handlers and their components and interconnections:
`
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`Netlist appears to argue that the DB-to-DRAM Write Delay Training
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`
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`(“MWD Training”), as described in JESD82-32, practices one or more claims of the ’523 patent.
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`According to the standard, “for the DB-to-DRAM write delay training, the MDQ-MDQS delay
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`adjustments are performed in the data buffer so that the DRAM receives the MDQ and MDQS
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`signals with the optimal phase relationship.” Ex. E (JESD82-32) at pg. 32. “[T]he data that is
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`written to the DRAM comes from the data buffer’s internal data control words that are written
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`through the DDR4 register via the BCOM bus.” Id. The Standard further explains:
`
`To perform DB-to-DRAM write training, the host will first enable
`the MDQ-MDQS write delay training mode in the Training Mode
`Control Word (BC0C) and it will also program the MPRs F5BC0x
`through F5BC3x and F6BC0x through F6BC3x. After that the host
`sends write commands to an arbitrary DRAM location without
`
`10
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 10
`
`

`

`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 11 of 82 PageID #: 11
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`driving data on the host interface. The data for these write
`commands come from the DB MPRs.
`
`. . .
`
`To check whether the writes were successful, the host reads the data
`back from the same DRAM location and the data buffer performs a
`bit wise comparison with the data in the MPRs. If the data pattern is
`matched, the DQ pins are driven to “1” until the next comparison
`takes place or until the training mode is disabled. If the data pattern
`is not matched, the DQ pins are driven to “0.”
`
`Id.
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`
`
`For at least the reasons explained in Count I, the Samsung DDR4 Memory
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`Modules do not infringe the claims of the ’523 patent.
`
`2.
`
`Overview of the ’595 and ’218 Patents
`
`
`
`The ’595 and ’218 patents describe “a method of establishing a handshake
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`mechanism based on notification signaling” that “can be implemented by adding a new interface
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`(notifying) signal between the MCH [i.e., system memory controller] and the memory subsystem
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`controller,” Ex. B (’595 Patent) at 4:5–12, and this interface “can be an open drain signaling from
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`the memory subsystem controller to the MCH.” Id. at 4:12-16.
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`
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`According to the ’595 patent, “there [was] no existing method of
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`handshaking between the MCH (e.g., system memory controller) and a memory subsystem (e.g.,
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`memory module) during initialization.” Id. at 2:64–67. And “in conventional systems, the system
`
`memory controller does not monitor the error-out signal from the memory subsystem.” Id. at 2:67-
`
`3:2. The ’595 patent states that “[i]n a typical server (e.g., an Intel or AMD or other chipset based
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`server), the lack of any handshaking between the MCH and the memory subsystem during the
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`server initialization period has not been a serious issue since the MCH generally has complete
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`control over the initialization procedure.” Id. at 3:3-8.
`
`11
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 11
`
`

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`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 12 of 82 PageID #: 12
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`
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`Figure 1 shows a computer system including memory module 10, coupled
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`to a memory controller 14 via “output 12,” which is driven by notification circuit 20 of controller
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`circuit 18.
`
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`Id. at 4:24–42, FIG. 1. Memory module 26 is also shown, and has essentially the same structure
`
`as module 10, having “output 24” driven by notification circuit 30 of controller circuit 28. Id.
`
`at 6:23–44.
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`
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`In one specific example of handshaking, the interface between the memory
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`controller (MCH) and memory subsystem controller is implemented using a technique called open
`
`drain signaling. Id. at 4:12–16, 9:47–53, FIGs. 2–3. Specifically, output 12 of module 10 and
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`output 24 of module 26 are both tied to the same bus 32 using an open drain configured transistor.
`
`Id.
`
`
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`In that configuration, when starting an initialization procedure, each
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`memory module will drive the gate of the transistor of its open drain output high, placing a logic
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`level low (low impedance) signal on bus 32. When the initialization is complete, the memory
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`module can drive the gate of the transistor, placing a logic level high (high impedance) signal on
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`bus 32. However, because all of the outputs of multiple memory modules are tied to the same bus
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`32 in an open drain configuration, the state of bus 32 will remain logic level low (low impedance)
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`until each memory module drives the gate of the transistor of its open drain output low, placing a
`
`12
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 12
`
`

`

`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 13 of 82 PageID #: 13
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`logic level high (high impedance) on its output, which then allows “the bus 32 [to] be pulled high
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`by the internal pull-up configuration 40 of the system memory controller 14.” Id. at 9:47–10:50.
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`In this manner, the system memory controller may be provided a notification signal, notifying that
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`the module is currently executing or has completed initialization. Id. at 9:47–10:50.
`
`
`
`Netlist appears to allege that the Clock-to-CA training, as described in
`
`JESD82-31, practices one or more claims of the ’595 and ’218 patents. According to the standard,
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`“[i]n Clock-to-CA training mode the DDR4RCD01 ORs all enabled Dn inputs every other cycle
`
`together and loops back the result to the ALERT_n output pin.” Ex. F (JESD82-31) at pg. 44
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`(emphasis in original). “In this mode, the DPAR input is sampled at the same time as the other Dn
`
`inputs,” and “[t]he ALERT_n latency relative to the DQn inputs is the same 3 cycles as in the
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`normal parity mode.” Id.
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`
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`For at least the reasons explained in Counts II and III, the Samsung DDR4
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`Memory Modules do not infringe the claims of the ’595 and ’218 patents, respectively.
`
`3.
`
`Overview of the ’912 Patent
`
`
`
`The ’912 patent describes memory modules that purportedly have the
`
`capability of expanding the number of memory devices that can be accessed by a computer.
`
`The ’912 patent provides:
`
`The memory capacity of a memory module increases with the
`number of memory devices. The number of memory devices of a
`memory module can be increased by increasing the number of
`memory devices per rank or by increasing the number of ranks. For
`example, a memory module with four ranks has double the memory
`capacity of a memory module with two ranks and four times the
`memory capacity of a memory module with one rank.
`
`Ex. D (’912 Patent) at 2:23–30.
`
`13
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 13
`
`

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` A given total amount of module memory (e.g., 4GB) may be provided
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`by using a small number of high-density memory devices or a large number of low-density
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`memory devices. The ’912 patent states:
`
`Market pricing factors for DRAM devices are such that higher-
`density DRAM devices (e.g., 1Gb DRAM devices) are much more
`than twice the price of lower-density DRAM devices (e.g., 512 Mb
`DRAM devices). In other words, the price per bit ratio of the higher-
`density DRAM devices is greater than that of the lower density
`DRAM devices.
`
`Id. at 4:59–64.
`
`
`
`Figure 1A illustrates an exemplary memory module with four ranks of
`
`memory devices. The memory module 10 includes a logic element 40 and a register 60. Id. at 5:6–
`
`21. Input control signals, such as a row/column address signal (An+1), bank address signal (BAo-
`
`BAm), and chip select signals (CS0 and CS1), are received by logic element 40. Id. at 6:55–61. In
`
`response to the set of input control signals, the logic element 40 generates a set of output control
`
`signals, which includes address signals and a command signal. Id. at 6:61–63. Figure 1A shows a
`
`system configured for two ranks of memory per memory module (using chip select signals CS0
`
`and CS1), even though the memory module 10 is arranged in four ranks of memory devices. Id. at
`
`6:64–7:53. “Thus, in certain embodiments, even though the memory module 10 actually has the
`
`first number of ranks of memory devices 30, the memory module 10 simulates a virtual memory
`
`module by operating as having a second number of ranks of memory devices 30.” Id. at 7:9–13.
`
`14
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 14
`
`

`

`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 15 of 82 PageID #: 15
`
`
`
`Id., FIG. 1A.
`
`
`
`Netlist appears to allege that the Per DRAM Addressability (“PDA”) mode,
`
`as described in JESD79-4C and JESD82-31A, practices certain limitations of claim 16 of the
`
`’912 patent. Netlist has alleged that the PDA mode allows programmability of a given device on a
`
`rank using the Mode Register Set (“MRS”) function. In addition, Netlist has alleged that the Rank
`
`Multiplication Mode as described in JESD82-30 for LRDIMM DDR3 Memory Buffer (MB)
`
`Specification practices certain limitations of claims 1, 15, 28, 39, 77, 80, 82, 86, 88, and 90 of the
`
`’912 patent.
`
`
`
`For at least the reasons explained in Count IV, the Samsung DDR4 Memory
`
`Modules do not infringe the ’912 patent.
`
`4.
`
`The Patents-in-Suit Are Unenforceable
`
`
`
`The Patents-in-Suit also are unenforceable due to inequitable conduct and
`
`unclean hands.
`
`15
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 15
`
`

`

`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 16 of 82 PageID #: 16
`
`
`
`As fully set forth in Counts V and VI, individuals substantively involved in
`
`the prosecution of the ’523, ’595, and ’218 patents knew about material and non-cumulative prior
`
`art by virtue of their participation in JEDEC standards meetings, the citation of the prior art against
`
`patents in the same family, and/or petitions for Inter Partes Review (“IPR”) filed by SK hynix. On
`
`information and belief, these individuals specifically intended to deceive the United States Patent
`
`and Trademark Office (“Patent Office”) into believing that the claims of the ’523, ’595, and ’218
`
`patents were patentable by withholding the relevant art from the examiner during prosecution of
`
`the patents.
`
`
`
`As fully set forth in Count VII, individuals substantively involved in the
`
`reexamination of the ’912 patent made false and misleading statements to the Patent Office and
`
`the Federal Circuit that were material to the patentability of the amended claims. On information
`
`and belief, these individuals specifically intended to deceive the Patent Office and the Federal
`
`Circuit into believing that the amendment of certain claims in the ’912 patent were “narrowing” in
`
`scope, thereby distinguishing those claims from the prior art. On information and belief, these
`
`individuals misrepresented the intended effect of the amendments in order to secure allowance of
`
`the amended claims, knowing that Netlist would later adopt the position in litigation that the
`
`amendments were in fact not “narrowing” at all, but rather recited “inherent functions” that were
`
`already required by the original claims.
`
`D.
`
`Netlist Has Breached Contractual Obligations Owed to Samsung
`1.
`
`JEDEC and Semiconductor Memory Standards
`
`
`
`JEDEC is an independent, non-profit semiconductor engineering trade
`
`association and standardization body based in the United States. Over 300 companies in the
`
`computer and electronics industries are currently members of JEDEC, including Samsung and
`
`Netlist.
`
`16
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 16
`
`

`

`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 17 of 82 PageID #: 17
`
`
`
`JEDEC has become the global leader in developing open standards and
`
`publications for a broad range of semiconductor technologies, including memory products. As
`
`relevant here, JEDEC develops standards for semiconductor memory chips and modules, including
`
`standards implemented by Samsung’s products.
`
`
`
`JEDEC’s semiconductor memory standards enable interoperability, i.e., the
`
`ability of memory products made by different manufacturers to work together with computer and
`
`electronic devices made by others. JEDEC standards are widely implemented, and, for many types
`
`of semiconductor memory products, it is imperative that they comply with JEDEC standards in
`
`order to be commercially viable.
`
` Member companies participate in JEDEC’s standard-setting process
`
`through over 50 committees and subcommittees that address various technological areas. Through
`
`a collaborative process, members contribute to and vote on technical proposals for incorporation
`
`into JEDEC standards. Upon committee and Board approval, new standards are promulgated and
`
`made available to the public.
`
`
`
`In some cases, JEDEC members own patents covering the technology they
`
`or others seek to have included in a JEDEC standard. A patent that includes a claim or claims that
`
`would necessarily be infringed by the use, sale, offer for sale, or disposition of a portion of a
`
`product in order to be compliant with an industry standard is referred to as a “standard essential
`
`patent” or an “SEP.”
`
`
`
`Each owner of an SEP can, unless restrained, demand and obtain exorbitant
`
`royalties for the use of its patents, far in excess of the value, if any, that the patented technology
`
`would command had it not been incorporated into a standard. If unwilling to pay such excessive
`
`royalties, firms wishing to implement the standard face the risk of being foreclosed from using any
`
`17
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 17
`
`

`

`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 18 of 82 PageID #: 18
`
`portion of the standard, including unpatented and public domain technologies. This threat of
`
`foreclosure, if left unchecked, puts a manufacturer’s investment in developing standard-compliant
`
`products at risk and, in effect, permits the possibility that the SEP holder may capture up to the
`
`value of the standard as a whole for each unique implementer, rather than the true value of its
`
`specific contribution to the standard, independent of the incorporation of the technology into the
`
`standard. The exploitation of SEPs to extract unreasonable or discriminatory royalties is referred
`
`to as patent “hold-up.”
`
`
`
`The problem of “hold-up” is exacerbated in the context of standards, like
`
`those at issue here, as to which there are large numbers of SEPs and many different firms that
`
`claim to hold SEPs. The problem is likewise compounded when the products at issue, like those at
`
`issue here, may be required to implement multiple standards. The resulting problem of excessive
`
`aggregate royalties is referred to as “royalty stacking.”
`
`
`
`In order to mitigate these risks, JEDEC—like many other standard-setting
`
`organizations—has adopted a Patent Policy that seeks to ensure that owners of SEPs license those
`
`patents to manufacturers of standard-compliant products on RAND terms and conditions. Every
`
`firm that is a member of a JEDEC committee or a participant in a JEDEC committee meeting,
`
`including Netlist, agrees to abide by the JEDEC Patent Policy.
`
`All Committee Members, as a condition of committee membership
`or committee Participation, agree to abide by JEDEC rules and
`procedures, including this JEDEC patent policy (“Patent Policy”).
`
`Ex. G (JEDEC Manual No. 21T) § 8.2.2.1.
`
`
`
`Pursuant to the JEDEC Patent Policy, as a condition of committee
`
`membership or participation, all JEDEC committee members agree to disclose “Potentially
`
`Essential Patents” relevant to the work of the committee:
`
`18
`
`Samsung Electronics Co., Ltd.
`Ex. 1068, p. 18
`
`

`

`Case 1:21-cv-01453-UNA Document 1 Filed 10/15/21 Page 19 of 82 PageID #: 19
`
`Al