Case 1:21-cv-01453-RGA Document 14 Filed 01/18/22 Page 1 of 122 PageID #: 963
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG SEMICONDUCTOR,
`INC.,
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`
`Plaintiffs,
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`v.
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`
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`NETLIST, INC.,
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`
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`
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`
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`Defendant.
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`
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`C.A. No. 21-1453 (RGA)
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`DEMAND FOR JURY TRIAL
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`FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND UNENFORCEABILITY; BREACH OF CONTRACT
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`Plaintiffs Samsung Electronics Co., Ltd. (“SEC”) and Samsung Semiconductor,
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`Inc. (“SSI” and together with SEC, “Samsung”) seek a declaration that Samsung does not directly
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`or indirectly infringe United States Patent Nos. 10,217,523 (the “’523 patent”), 10,474,595 (the
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`“’595 patent”), 9,858,218 (the “’218 patent”), 7,619,912 (the “’912 patent”), 10,860,506 (the “’506
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`patent”), 10,949,339 (the “’339 patent”), and 11,016,918 (the “’918 patent”) (collectively, the
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`“Patents-in-Suit”) (Exhibits 1–7), either literally or under the doctrine of equivalents; a declaration
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`that certain of the Patents-in-Suit are unenforceable due to inequitable conduct and unclean hands;
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`and, alternatively, a ruling that Defendant Netlist, Inc. (“Netlist”) has breached contractual
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`obligations owed to Samsung, including obligations to license its allegedly essential patents and
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`patent applications to Samsung and its affiliates on reasonable and non-discriminatory (“RAND”)
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`terms and conditions, as follows:
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`
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`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 1
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`

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`NATURE OF THE ACTION
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`1.
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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.
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`2.
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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 litigation against a user of Samsung products,
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`in license demands made to Samsung, and in litigation against Samsung. Thus, Samsung seeks a
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`declaration that it does not infringe the Patents-in-Suit and that certain of the Patents-in-Suit are
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`unenforceable. In the alternative, Netlist has breached its commitment to license on RAND terms
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`and conditions, as Netlist insists the Patents-in-Suit are necessarily infringed by the practice of
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`certain standards promulgated by the Joint Electron Device Engineering Council (“JEDEC”) and
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`implemented by the accused Samsung memory modules.
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`3.
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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 certain of the
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`Patents-in-Suit are unenforceable due to inequitable conduct and unclean hands, and, alternatively,
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`relief for Netlist’s breaches of contractual obligations owed to Samsung, including obligations to
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`license its allegedly essential patents and patent applications to Samsung and its affiliates on
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`RAND terms and conditions.
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`2
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`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 2
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`

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`Case 1:21-cv-01453-RGA Document 14 Filed 01/18/22 Page 3 of 122 PageID #: 965
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`
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`THE PARTIES
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`4.
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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.
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`5.
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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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`6.
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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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`7.
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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–XI) under 28 U.S.C. §§ 1331,
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`1338(a), and 2201(a).
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`8.
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`This Court has subject matter jurisdiction over the breach of contract claim
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`(Count XII) 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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`9.
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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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`10.
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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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`3
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`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 3
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`

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`11.
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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 certain of the
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`Patents-in-Suit are unenforceable.
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`12.
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`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
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`Samsung memory modules infringe Netlist’s patents, including the ’523, ’595, and ’218 patents.
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`Netlist sent this letter after filing a lawsuit against Samsung seeking a judicial declaration that
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`Samsung’s license has been terminated.
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`13. Moreover, Netlist previously asserted the ’523, ’595, and ’218 patents in
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`litigation against SK hynix, and in doing so served claim charts that purport to demonstrate
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`infringement based on compliance with certain JEDEC memory standards. The Samsung memory
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`modules at issue in this action implement those same standards.
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`14.
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`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. Netlist first provided notice to
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`Google on May 19, 2021, in the form of a claim chart, that Netlist would assert that JEDEC
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`standard-compliant DDR4 LRDIMM and RDIMM memory modules incorporated in Google’s
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`servers infringe claim 16 of the ’912 patent. Netlist’s amended infringement contentions, served
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`on June 18, 2021, formally alleged that certain JEDEC standard-compliant DDR4 LRDIMM and
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`RDIMM memory modules—including memory modules supplied by SSI—practice each and
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`every limitation in claim 16. As a direct and proximate result of Netlist’s patent enforcement
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`4
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`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 4
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`

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`Case 1:21-cv-01453-RGA Document 14 Filed 01/18/22 Page 5 of 122 PageID #: 967
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`activities with respect to the ’912 patent, Samsung has received demands for indemnification,
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`including from Google and Lenovo.
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`15.
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`In addition, Netlist previously asserted the ’912 patent in litigation against
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`Inphi Corporation, and in doing so served claim charts that purport to demonstrate infringement
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`based on compliance with certain JEDEC memory standards.
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`16.
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`Netlist has also accused SEC, SSI, and one of their affiliates, in a case
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`Netlist filed on December 20, 2021, of infringing the ’506, ’339, and ’918 patents in connection
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`with the making, sale, use, and/or importation of certain Samsung memory modules.
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`17.
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`Netlist has also recently asserted patents, including patents related to the
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`Patents-in-Suit, in multiple litigations against Micron Technology, Inc. and its affiliates
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`(collectively, “Micron”), which are competitors of Samsung with respect to at least certain of the
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`memory products at issue. Netlist, Inc. v. Micron Technology, Inc. et al., Case No. 6:21-cv-430
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`(W.D. Tex.) (the “Micron -430 Litigation”); Netlist, Inc. v. Micron Technology, Inc. et al., Case
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`No. 6:21-cv-431 (W.D. Tex.) (the “Micron -431 Litigation”). In the Micron -431 Litigation, Netlist
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`alleges that Micron’s JEDEC standard-compliant memory modules infringe three patents, two of
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`which are related to the ’506 patent at issue in the present case. See Micron -431 Litigation, D.I. 1,
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`¶ 2. Specifically, the ’506 patent is a continuation of Application No. 15/820,076, now U.S. Patent
`
`No. 10,268,608 (the “’608 patent”), which is a continuation of Application No. 15/426,064, now
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`U.S. Patent No. 9,824,035 (the “’035 patent”). Netlist has accused Samsung of infringement with
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`respect to memory modules implementing the same standards to which the ’608 and ’035 patents
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`are allegedly essential.
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`18.
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`In the Micron -430 Litigation, Netlist alleges that certain Micron memory
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`products infringe U.S. Patent No. 8,301,833 (the “’833 patent”). The ’833 patent is a parent of the
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`5
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`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 5
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`

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`Case 1:21-cv-01453-RGA Document 14 Filed 01/18/22 Page 6 of 122 PageID #: 968
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`
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`’918 patent at issue in the present case, by way of several intermediate continuation and
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`continuation-in-part applications.
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`19.
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`Furthermore, between May 2020 and the present, Netlist made demands that
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`Samsung take a second license to Netlist’s portfolio of patents based on Netlist’s claim that it
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`terminated the fully paid-up, worldwide patent license granted in the Agreement.
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`20.
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`Accordingly, as set forth herein, Netlist has engaged in affirmative acts
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`related to the enforcement of the Patents-in-Suit against specific Samsung products currently being
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`sold and used throughout the United States and against third-party products that implement the
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`same standards as the Samsung products. 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
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`28 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 Threats
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`21.
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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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`22.
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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
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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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`23.
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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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`6
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`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 6
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`

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`24.
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`The Agreement required SEC to make a payment to Netlist of $8 million
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`subject to the terms and conditions therein. SEC made this payment to Netlist except for a portion
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`that was remitted as tax withholding to the Korean tax authorities, which later refunded the
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`withheld portion to Netlist.
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`25.
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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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`26.
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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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`Netlist did not allege, and has never alleged, that Samsung breached the Agreement in any way
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`related to the patent cross-license. In the same letter—which was the first time Netlist raised its
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`breach allegations—Mr. Frechette informed Mr. Sung that Netlist had filed a complaint in U.S.
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`District Court for the Central District of California with respect to the alleged breach by Samsung
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`and provided a copy of the complaint for reference.
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`27.
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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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`28.
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`Netlist subsequently wrote to SEC to terminate the Agreement, including
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`the patent license to SEC and its subsidiaries. On July 15, 2020, Netlist’s Chief Licensing Officer,
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`Marc J. Frechette, wrote to Mr. Seung Min Sung of SEC and stated that “Netlist is hereby
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`terminating, effective immediately, the Agreement including the patent license granted to
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`Samsung . . . .”
`
`7
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`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 7
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`

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`29.
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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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`30.
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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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`31.
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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.
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`32.
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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
`
`8
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`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 8
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`

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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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`33.
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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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`34.
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`On October 14, 2021, the court in the Breach Action issued a confidential
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`order granting summary judgment in favor of Netlist on Netlist’s Third Claim for Relief, which
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`seeks a declaration that Netlist terminated Samsung’s license effective July 20, 2020. See Netlist
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`Inc. v. Samsung Electronics Co., Ltd., No. 8:20-cv-00993-MCS, D.I. 186 (C.D. Cal.). The court
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`also granted summary judgment in Netlist’s favor that Samsung was liable for certain alleged
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`breaches of other provisions in the Agreement. See id.
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`35.
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`Beginning on December 1, 2021, the court in the Breach Action held a jury
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`trial on damages for one of the alleged breaches (the alleged failure to fulfill Netlist’s orders for
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`NAND and DRAM products). On December 3, 2021, the jury returned a verdict in Samsung’s
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`favor, finding that Netlist failed to prove that it suffered any damages for this alleged breach. See
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`Breach Action, D.I. 276. The court in the Breach Action will decide whether or not Netlist is
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`entitled to its alleged damages for the remaining alleged breach (the withholding of taxes) as a
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`matter of law. The parties are briefing the court on this dispute. On January 10, 2022, Samsung
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`filed a motion for entry of judgment in Samsung’s favor as to Netlist’s First and Second Claims
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`for Relief and, as to Netlist’s Third Claim for Relief, for entry of judgment in Samsung’s favor or,
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`in the alternative, a trial on the claim.
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`36.
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`Despite losing at trial, Netlist issued a press release claiming to be “very
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`pleased with the overall outcome of the case as it confirmed that Samsung no longer has a valid
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`license to Netlist patents and therefore requires a licensing agreement.” Netlist Provides Update
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`9
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`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 9
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`

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`on Action in Federal Court Against Samsung, https://investors.netlist.com/websites/netlist/
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`English/2120/us-press-release.html?airportNewsID=a661884d-0025-46ea-a055-bae8d8e4570b
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`(last visited Jan. 18, 2022).
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`37.
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`SEC intends to challenge the summary judgment ruling in the Breach
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`Action through further proceedings in the district court and, if necessary, on appeal. SEC maintains
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`that it did not breach the Agreement, that the Agreement has not been terminated, and that it
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`continues to hold a paid-up, worldwide, non-exclusive license to Netlist’s patents, including the
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`Patents-in-Suit. Further, regardless of whether the Agreement was properly terminated (which
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`Samsung disputes), Samsung, its customers, and its end users are not liable for infringement of the
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`Patents-in-Suit for any memory modules made, used, sold, offered for sale, or imported before
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`July 20, 2020, the date of which the purported termination became effective.
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`B.
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`Netlist’s Patent Infringement Lawsuits
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`38.
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`Over the past decade, Netlist has engaged in a widespread litigation
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`campaign against suppliers of JEDEC standard-compliant memory modules, component suppliers,
`
`and users of memory modules. During this campaign, Netlist has alleged infringement of each of
`
`the Patents-in-Suit based on the practice of JEDEC memory standards.
`
`39.
`
`In Netlist’s litigation against SK hynix, a competitor of Samsung, Netlist
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`asserted the ’523, ’595, and ’218 patents—the three patents identified in Netlist’s October 2020
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`letter to Samsung—based on the practice of certain JEDEC memory standards. On October 15,
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`2021, SEC filed petitions for Inter Partes Review (“IPR”) challenging the validity of all claims of
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`the ’523, ’595, and ’218 patents. See IPR2022-00063 (’523 patent); IPR2022-00064 (’595 patent);
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`IPR2022-00062 (’218 patent). The Patent Trial and Appeal Board previously instituted trial on the
`
`same claims and on the same grounds based on petitions filed by SK hynix. See IPR2020-01421
`
`10
`
`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 10
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`

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`Case 1:21-cv-01453-RGA Document 14 Filed 01/18/22 Page 11 of 122 PageID #: 973
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`(’523 patent); IPR2020-01042 (’595 patent); IPR2020-01044 (’218 patent). The SK hynix
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`proceedings were terminated due to settlement shortly after institution.
`
`40.
`
`Netlist has asserted the ’912 patent (at issue here and licensed to Samsung
`
`through the Agreement) in a lawsuit filed against Google. See Netlist, Inc. v. Google Inc., No. 09-
`
`cv-05718 (N.D. Cal.) (“Google Infringement Action”). On June 18, 2021, Netlist amended its
`
`infringement contentions to accuse Google of infringing the ’912 patent based on Google’s use of
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`DDR4 LRDIMM and RDIMM memory modules supplied by SSI in Google’s computer systems
`
`and servers. Specifically, Netlist’s amended infringement contentions include the contention that
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`DDR4 LRDIMM and RDIMM memory modules infringe claim 16 of the ’912 patent. On
`
`information and belief, until Netlist served a claim chart on Google in May 2021, just prior to
`
`formally serving amended infringement contentions in June 2021, Netlist had not previously
`
`accused DDR4 memory modules supplied by SSI in the Google Infringement Action.
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`41.
`
`On information and belief, Netlist’s amended infringement contentions in
`
`the Google Infringement Action allege that JEDEC standard-compliant DDR4 memory modules—
`
`including DDR4 memory modules supplied by SSI—practice each and every limitation in
`
`claim 16. See Google Infringement Action, D.I. 174-1 (Ex. 8) at 2 (“[C]laim 16 reads on the DDR4
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`standard and later technology.”); id. at 3 (“Netlist asserted claim 16 against Google’s memory
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`modules compliant with certain portions of the JEDEC DDR4 standards on May 19, 2021.”); id.
`
`at 9 (“[A]s to standardized products, currently only DDR4 DIMMs that comply with certain
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`JEDEC DDR4 standards while operating in PDA mode (or products that operate in a similar
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`manner) infringe claim 16.”); Google Infringement Action, D.I. 194 (Ex. 9) at 4 (“Netlist served
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`Google infringement contentions explaining how memory modules compliant with certain
`
`11
`
`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 11
`
`

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`Case 1:21-cv-01453-RGA Document 14 Filed 01/18/22 Page 12 of 122 PageID #: 974
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`portions of the JEDEC standards for DDR4 infringe claim 16 when operating in PDA mode.”).
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`Netlist’s infringement allegations, therefore, are based on the practice of the DDR4 standards.
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`42.
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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.
`
`43.
`
`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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`44.
`
`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.
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`45.
`
`As noted above, Netlist has also asserted the ’912 patent against Inphi, a
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`chip supplier, based on the practice of certain JEDEC memory standards.
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`46.
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`On December 20, 2021, Netlist filed a lawsuit against SEC, SSI, and a
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`related company, Samsung Electronics America, Inc. (“SEA”), in the U.S. District Court for the
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`Eastern District of Texas alleging direct and indirect infringement of the ’506, ’339, and ’918
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`patents. Netlist, Inc. v. Samsung Electronics Co., Ltd., No. 2:21-cv-00463, D.I. 1 (E.D. Tex.) (the
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`“Texas Infringement Action”). Netlist alleges that the defendants directly infringe the ’506 and
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`’339 patents in connection with the making, selling, using, and/or importing of DDR4 LRDIMM
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`memory modules, see id., ¶¶ 40, 53, and that the defendants directly infringe the ’918 patent in
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`connection with the making, selling, using, and/or importing of DDR5 LRDIMM, RDIMM,
`
`12
`
`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 12
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`

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`SODIMM, and UDIMM memory modules, see id. ¶ 68. Netlist also alleges indirect infringement
`
`of all three patents under 35 U.S.C. § 271(b) and (c). See id. ¶¶ 49, 50, 64, 65, 76, 77.
`
`47.
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`Among other things, Netlist’s prayer for relief requests “all equitable relief
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`the Court deems just and proper as a result of Samsung’s infringement.” Id. at 48.
`
`48.
`
`Netlist’s Complaint in the Texas Infringement Action states that Netlist
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`intends to assert against SEC, SSI, and SEA a patent resulting from pending Application
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`No. 17/138,019 (the “’019 application”), once it issues from the United States Patent and
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`Trademark Office (“Patent Office”). See id. ¶ 32. The ’019 application, which is a continuation of
`
`the ’918 patent, is expected to issue on January 25, 2022, as U.S. Patent No. 11,232,054.
`
`49.
`
`Netlist filed the Texas Infringement Action the same day that it moved to
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`dismiss the present action based on, inter alia, an alleged lack of any case or controversy over
`
`Samsung’s declaratory judgment claims. See D.I. 11 at 3 (arguing that the present case does not
`
`involve a “substantial controversy of sufficient immediacy”).
`
`50.
`
`The claims in the Texas Infringement Action overlap substantially with the
`
`claims asserted in the original complaint in the present action. For example, all of the patents relate
`
`to the same area of technology—computer memory modules—and as discussed below, Netlist
`
`contends that all of the patents are essential to JEDEC standards relating to such modules.
`
`Samsung’s original complaint in the present action was directed to LRDIMMs and RDIMMs—
`
`the products identified in Netlist’s October 2020 notice letter—and Netlist likewise accuses both
`
`LRDIMMs and RDIMMs in the Texas Infringement Action. Moreover, all of the patents are
`
`subject to the license Netlist granted to Samsung in the Agreement and later attempted to terminate.
`
`51.
`
`The claims asserted in the Texas Infringement Action also implicate
`
`Samsung’s breach of contract claim in the present case (Count XII). As with the original patents-
`
`13
`
`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 13
`
`

`

`Case 1:21-cv-01453-RGA Document 14 Filed 01/18/22 Page 14 of 122 PageID #: 976
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`
`
`in-suit in this case, Netlist contends that practice of the JEDEC standard constitutes infringement
`
`of the patents asserted in the Texas Infringement Action, and yet Netlist has failed to offer a RAND
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`license for any of those patents. Indeed, Netlist failed to provide any notice of the alleged
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`infringement before filing the Texas Infringement Action. This conduct violates Netlist’s
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`contractual commitments for the reasons set forth in Count XII.
`
`52.
`
`As noted above, Netlist has asserted several patents, including three patents
`
`related to the Patents-in-Suit, against Micron, a competitor of Samsung. The cases against Micron
`
`remain ongoing. On December 23, 2021, Micron filed IPR petitions on the ’035 and ’608 patents,
`
`which are related to the ’506 patent at issue in the present suit. See IPR2022-00236 (’035 patent);
`
`IPR2022-00237 (’608 patent). On January 14, 2022, Micron filed an IPR petition on the ’833
`
`patent, which is related to the ’918 patent at issue in the present suit. See IPR2022-00418.
`
`C.
`
`Netlist Patents and Standard Essential Allegations
`
`53.
`
`Netlist asserts that the Patents-in-Suit are essential to one or more of (a)
`
`JEDEC standards JESD79-4C, JESD82-31, JEDEC82-31A, and JESD82-32 (“the DDR4
`
`Standards”), which were developed by the JEDEC JC-40 committee (JESD82-31 and JESD82-
`
`32), JC-40.4 committee (JESD82-31A), and JC-42.3C committee (JESD79-4C), and (b)
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`JESD301.1, JESD82-511, and JESD79-5 (“the DDR5 Standards”), which were developed by the
`
`JEDEC JC-40.1 committee (JESD301.1), JC-40.4 committee (JESD82-511), and JC-42.3
`
`committee (JESD79-5). Netlist further asserts that the Patents-in-Suit are essential to one or more
`
`of the standards encompassed by JESD21-C (together with the DDR4 Standards and the DDR5
`
`Standards, “the JEDEC Standards”).
`
`54.
`
`Netlist contends that the ’523, ’595, and ’218 patents are essential to one or
`
`more of JEDEC Standards. In its October 15, 2020 “Notice of Infringement” letter, Netlist asserts
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`that it owns “over 100 patents and patent applications related to memory technologies,” including
`
`14
`
`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 14
`
`

`

`Case 1:21-cv-01453-RGA Document 14 Filed 01/18/22 Page 15 of 122 PageID #: 977
`
`
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`LRDIMM and RDIMM, and accuses Samsung of infringing these three patents. 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. Tex.),
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`D.I. 1 ¶¶ 27, 37, D.I. 1-5 (’218 Claim Chart for DDR4 LRDIMM), D.I. 1-6 (’218 Claim Chart for
`
`DDR4 RDIMM), D.I. 1-10 (’595 Claim Chart for DDR4 LRDIMM), D.I. 1-11 (’595 Claim Chart
`
`for DDR4 RDIMM); Netlist, Inc. v. SK hynix Inc., No. 6:20-cv-00525 (W.D. Tex.), D.I. 1 ¶ 27,
`
`D.I. 1-2 (’523 Claim Chart for DDR4 LRDIMM). In asserting the ’523, ’595, and ’218 patents
`
`against SK hynix, Netlist’s complaint included claim charts for each patent, in which Netlist
`
`mapped various claim limitations to the DDR4 Standards. See id.
`
`55.
`
`Netlist contends that the ’912 patent is essential to one or more of the DDR4
`
`Standards. Specifically, in the Google Infringement Action, Netlist asserts that memory modules
`
`used by Google (which include Samsung’s LRDIMM and RDIMM memory modules) infringe the
`
`’912 patent based on an implementation of the JESD79-4C standard.
`
`56.
`
`In the Texas Infringement Action, Netlist alleges that “any Samsung DDR4
`
`LRDIMM products” infringe the ’506 and ’339 patents. See Texas Infringement Action, D.I. 1,
`
`¶¶ 37, 40, 53. Netlist relies on the implementation of the JESD82-32A standard in alleging
`
`infringement of the ’506 patent, id. ¶ 46, and Netlist relies on the implementation of the JESD79-
`
`4C DDR4 SDRAM, JEDEC 21C, and JESD82-32A standards in alleging infringement of the ’339
`
`patent, id. ¶¶ 59–63.
`
`57.
`
`Netlist further alleges that the ’918 patent and the ’019 application “provide
`
`for the effective operation of DDR5 memory modules,” id. ¶ 33, and that “any Samsung DDR5
`
`LRDIMM and DDR5 RDIMM products . . . that are JEDEC standard-compliant memory
`
`modules” infringe the ’918 patent, id. ¶ 38. Netlist also accuses Samsung’s DDR5 SODIMM and
`
`15
`
`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 15
`
`

`

`Case 1:21-cv-01453-RGA Document 14 Filed 01/18/22 Page 16 of 122 PageID #: 978
`
`
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`UDIMM memory modules of infringing the ’918 patent. Id. ¶ 36. Netlist relies on the
`
`implementation of the JESD301-1, JESD82-511, and JESD79-5 standards in alleging infringement
`
`of the ’918 patent. Id. ¶¶ 72–75.
`
`58.
`
`In the present action, SEC and SSI seek declarations that Samsung’s
`
`LRDIMM and RDIMM memory modules that comply with the DDR4 Standards or any standard
`
`requiring materially similar functionality (“Samsung DDR4 Memory Modules”); and Samsung’s
`
`SODIMM, UDIMM, and RDIMM memory modules that comply with the DDR5 Standards or any
`
`standard requiring materially similar functionality (“Samsung DDR5 Memory Modules” and
`
`together with the Samsung DDR4 Memory Modules, the “Samsung Memory Modules”), do not
`
`infringe the Patents-in-Suit. SEC and SSI also seek a declaration that certain of the Patents-in-Suit
`
`are unenforceable due to inequitable conduct and unclean hands.
`
`59.
`
`If, as Netlist contends, the Patents-in-Suit are essential to any of the JEDEC
`
`Standards (which they are not), Netlist is obligated to license the patents on RAND terms. As
`
`discussed below, Netlist has failed to offer such a license to Samsung.
`
`D.
`
`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
`
`60.
`
`The ’523 patent relates to a self-testing memory module for testing a
`
`plurality of memory devices mounted thereon. Ex. 1 (’523 Patent) at 5:4–27. An illustrative
`
`example is shown in FIG. 2, below.
`
`16
`
`Samsung Electronics Co., Ltd.
`Ex. 1069, p. 16
`
`

`

`Case 1:21-cv-01453-RGA Document 14 Filed 01/18/22 Page 17 of 122 PageID #: 979
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`
`
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`As shown there, the memory module (12) includes a control module (22)
`
`61.
`
`that generates address and control signals for testing memory devices (20) and a data module (28)
`
`that includes a plurality of distributed data handlers (30) that are each located in proximity to a
`
`corresponding memory device (20) and act as a buffer between the memory device (20) and system
`
`memory controller (14