Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: June 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICRON TECHNOLOGY, INC., MICRON SEMICONDUCTOR
`PRODUCTS, INC., and MICRON TECHNOLOGY TEXAS LLC,
`Petitioner,
`v.
`NETLIST, INC.,
`Patent Owner.
`
`IPR2023-00406
`Patent 11,016,918 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, JON M. JURGOVAN, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`JURGOVAN, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Entered: June 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICRON TECHNOLOGY, INC., MICRON SEMICONDUCTOR
`PRODUCTS, INC., and MICRON TECHNOLOGY TEXAS LLC,
`Petitioner,
`v.
`NETLIST, INC.,
`Patent Owner.
`
`IPR2023-00406
`Patent 11,016,918 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, JON M. JURGOVAN, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`JURGOVAN, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`IPR2023-00406
`Patent 11,016,918 B2
`
`I. DISCUSSION
`Inter partes review of U.S. Patent 11,016,918 B2 (“’918 patent”) was
`instituted in IPR2022-00996 (“996 IPR”) based on a petition filed by
`Samsung Electronics Co., Ltd. (“Samsung”). 996 IPR, Papers 1, 10. In this
`proceeding, Micron Technology, Inc., Micron Semiconductor Products, Inc.,
`and Micron Technology Texas LLC (collectively “Petitioner”) concurrently
`filed a Petition (Paper 1) and a Motion for Joinder (Paper 3) seeking to be
`joined as a petitioner in the 996 IPR. Petitioner represents that Samsung, the
`petitioner in the 996 IPR, does not oppose joinder. Motion 2. Patent Owner
`did not file an opposition to the Motion.
`The statute governing inter partes review joinder states the following:
`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`35 U.S.C. § 315(c).
`The time for filing a preliminary response to the Petition has expired,
`and Patent Owner did not file one. See 37 C.F.R. 42.107(b) (“The
`preliminary response must be filed no later than three months after the date
`of a notice indicating that the request to institute an inter partes review has
`been granted a filing date.”); Paper 4 (filing date notice entered on
`January 23, 2023).
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition and any
`preliminary response shows “there is a reasonable likelihood that the
`
`2
`
`
`
`IPR2023-00406
`Patent 11,016,918 B2
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.”
`The patentability challenges in the 996 IPR met the “reasonable
`likelihood” standard of § 314(a). 996 IPR, Paper 10 at 55. Petitioner
`represents that the Petition “is substantively identical to” the petition in the
`996 IPR. Motion 1. Petitioner presents the following grounds in this
`Petition, which are identical to the instituted grounds in the 996 IPR:
`Claim(s)
`Challenged
`1–3, 8, 14, 15, 23
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`103(a)1
`
`1–30
`
`1–30
`
`1–30
`1–30
`
`103(a)
`
`103(a)
`
`103(a)
`103(a)
`
`Harris2, FBDIMM Standards3
`Harris, FBDIMM Standards,
`Amidi4
`Harris, FBDIMM Standards,
`Amidi, Hajeck5
`Spiers6, Amidi
`Spiers, Amidi, Hajeck
`
`Pet. 3; see 996 IPR, Paper 10 at 8, 55 (identifying same grounds and
`instituting inter partes review).
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103 and became effective
`March 16, 2013. For this proceeding, Petitioner assumes that the ’918 patent
`has an effective priority date before this date (Pet. 3–4) and applies the
`pre-AIA version of § 103.
`2 US 2006/0174140 A1, published Aug. 3, 2006 (Ex. 1023).
`3 JESD82-20 and JESD205 standards published March 2007 (Ex. 1027,
`Ex. 1028).
`4 US Patent No. 7,724,604 B2, issued May 25, 2010 (Ex. 1024).
`5 US Patent No. 6,856,556 B1, published Apr. 13, 2006 (Ex. 1038).
`6 US 2006/0080515 A1, published Apr. 13, 2006 (Ex. 1025).
`
`3
`
`
`
`IPR2023-00406
`Patent 11,016,918 B2
`We determine that Petitioner has demonstrated a reasonable likelihood
`of prevailing with respect to at least one challenged claim of the ’918 patent
`for the reasons given in the institution decision in the 996 IPR and that the
`Petition warrants institution. See 996 IPR, Paper 10 at 8–55.
`As discussed above, Petitioner’s Motion is unopposed by Samsung
`or Patent Owner. We have reviewed the Motion, and we determine that it
`is appropriate under these circumstances to join Petitioner as a party to the
`996 IPR.
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.4,
`an inter partes review is hereby instituted on the challenge raised in the
`Petition;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2022-00996 is granted, and Petitioner is hereby joined as a petitioner in
`IPR2022-00996;
`FURTHER ORDERED that the grounds on which trial in
`IPR2022-00996 was instituted are unchanged, and no other grounds are
`added in IPR2022-00996;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2022-00996 (Paper 11) and the Parties’ stipulation to modify Dates 1, 2,
`and 3 (Paper 15) shall govern the trial schedule in IPR2022-00996;
`FURTHER ORDERED that Petitioner’s role in IPR2022-00996 shall
`be limited as stated by Petitioner in the Motion for Joinder (Paper 3 at 5–9)
`unless and until Samsung is terminated from that proceeding;
`
`4
`
`
`
`IPR2023-00406
`Patent 11,016,918 B2
`FURTHER ORDERED that the case caption in IPR2022-00996 shall
`be changed to reflect joinder of Petitioner in accordance with the attached
`example;
`FURTHER ORDERED that a copy of this Decision be entered into
`the record of IPR2022-00996; and
`FURTHER ORDERED that all further filings shall be made in
`IPR2022-00996.
`
`5
`
`
`
`IPR2023-00406
`Patent 11,016,918 B2
`PETITIONER:
`Eliot D. Williams
`Theodore W. Chandler
`Ferenc Pazmandi
`Mark A. Speegle
`Brianna L. Potter
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`ted.chandler@bakerbotts.com
`ferenc.pazmandi@bakerbotts.com
`aashish.kapadia@bakerbotts.com
`brianna.potter@bakerbotts.com
`
`
`Juan C. Yaquian
`Michael R. Rueckheim (pro hac vice to be submitted)
`WINSTON & STRAWN LLP
`jyaquian@winston.com
`mrueckheim@winston.com
`
`
`PATENT OWNER:
`Hong Annita Zhong
`Jonathan M. Lindsay
`IRELL & MANELLA LLP
`hzhong@irell.com
`jlindsayg@irell.com
`
`
`6
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD, MICRON TECHNOLOGY, INC.,
`MICRON SEMICONDUCTOR PRODUCTS, INC., and
`MICRON TECHNOLOGY TEXAS LLC, 7
`Petitioner,
`v.
`NETLIST, INC.,
`Patent Owner.
`
`IPR2022-00996
`Patent 11,016,918 B2
`
`
`
`
`
`
`
`
`7 Micron Technology, Inc., Micron Semiconductor Products, Inc., and
`Micron Technology Texas LLC filed a motion for joinder and a petition in
`IPR2023-00406 and have been joined as petitioners in this proceeding.
`
`
`
`
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