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UNITED STATES INTERNATIONAL TRADE COMMISSION

Washington, D.C.

Before the Honorable Charles E. Bullock


Chief Administrative Law Judge

In the Matter of
Inv. No. 337-TA-1089
CERTAIN MEMORY MODULES AND
COMPONENTS THEREOF

COMPLAINANT NETLIST, INC.’S UNOPPOSED MOTION FOR


PARTIAL TERMINATION OF THE INVESTIGATION WITH
RESPECT TO CERTAIN ASSERTED CLAIMS OF U.S. PATENT NO. 9,606,907

Pursuant to Commission Rules 210.21(a)(1) and 210.15 and Ground Rule 5, Complainant

Netlist, Inc. (“Netlist”) respectfully moves for partial termination of the Investigation with

respect to allegations of infringement of Claims 43, 44, 45, 47, 48, 50, 52, and 58 of U.S. Patent

No. 9,606,907 (“the ’907 patent”) against SK hynix Inc., SK hynix America Inc. and SK hynix

memory solutions Inc. (collectively “Respondents” or “SK hynix”) based on partial withdrawal

of the Complaint in this Investigation as to these claims only. Netlist moves to terminate as to

these eight claims solely in an effort to help streamline the case and to conserve the resources of

the Chief ALJ, Staff, and the private parties.

Ground Rule 5.1.2 Certification

Pursuant to Ground Rule 5.1.2, Netlist requested the respective positions on this motion

of the Commission Investigative Staff and Respondents on September 19, 2018. Respondents do

not oppose the motion. The Staff has reviewed a draft of this Motion for compliance with the

regulations for Termination of Investigations. The Staff is of the view that the instant motion

substantially complies with the Commission’s requirements, and accordingly, terminating the

investigation as to the above listed asserted claims is appropriate.

Investigation No. 337-TA-1089


Complainant Netlist, Inc.’s Unopposed Motion for Partial Termination of the Investigation with Respect to Certain Asserted
Claims of U.S. Patent No. 9,606,907
I. Background

The Commission instituted this Investigation to determine whether Respondents violate

Section 337 through their importation into the United States, sale for importation, or sale within

the United States after importation of certain memory modules and components thereof, that

infringe two patents, including the ’907 patent. On June 14, 2018, the ALJ set August 5, 2019 as

the amended target date for completion of this Investigation. See Order No. 14 (June 14, 2018).

An evidentiary hearing is scheduled for January 14-18, 2019. See Order No. 18 (Sep. 13, 2018).

The claims of the ‘’907 patent currently asserted in this Investigation include Claims 43,

44, 45, 47, 48, 50, 52, and 58.1 This motion seeks partial termination of the Investigation with

respect to allegations of infringement of these claims of the ’907 patent against Respondents

based on partial withdrawal of the Complaint in this Investigation as to these claims only. 2

II. Relevant Law

Commission Rule 210.21(a)(1) states that “[a]ny party may move at any time prior to the

issuance of an initial determination on violation of section 337 of the Tariff Act of 1930 to

terminate an investigation in whole or in part as to any or all respondents, on the basis of

withdrawal of the complaint . . . .” A complainant may seek partial termination of an

investigation by “withdrawal of the complaint or certain allegations contained therein . . . .”

Commission Rule 210.21(a)(1); see also Certain Tool Handles, Tool Holders, Tool Sets,

Components Therefor, Inv. No. 337-TA-483, Order No. 7, at 1 (Apr. 22, 2003) (granting motion

1
On March 19, 2018 ALJ Pender issued an Initial Determination Terminating the Investigation
as to Certain Claims 30, 31, 32, 33, 34, 35, and 38 of the ‘907 Patent. See Order No. 12 (Mar.
19, 2018).

Investigation No. 337-TA-1089


Complainant Netlist, Inc.’s Unopposed Motion for Partial Termination of the Investigation with Respect to Eight Asserted
Claims of U.S. Patent No. 9,606,907
2
for partial termination as to certain claims where complainant “determined not to proceed with

the investigation as to [certain claims], on the ground that a reduction in the number of patent

claims at issue will allow the parties to focus their attention on the ‘primary’ patent claims in a

more expeditious manner and will also reduce the time and resources required from all of the

parties and the administrative law judge to proceed with the investigation”).

Further, the Commission has long held that, “in the absence of extraordinary

circumstances, termination of the investigation will be readily granted to a complainant during

the prehearing stage of an investigation.” Certain Hand-Held Meat Tenderizers, Inv. No. 337-

TA-647, Order No. 6, at 2 (Sept. 5, 2008) (quoting Certain Ultrafiltration Membrane Systems,

and Components Thereof, Including Ultrafiltration Membranes, Inv. No. 337-TA-107, Comm’n

Action and Order, at 2 (March 11, 1982)). Likewise, partial termination with respect to a given

patent, or patent claims, is routinely granted at Complainant’s request. See, e.g., Certain

Communications or Computing Devices and Components Thereof, Inv. No. 337-TA-925, Order

No. 22 (March 20, 2015) (granting motion for partial termination as to certain claims); Certain

Laminated Floor Panels, Inv. No. 337-TA-545, Order No. 30 (Apr. 3, 2006) (“Laminated Floor

Panels”) (granting motion to withdraw certain patent claims from the investigation); Certain

Digital Processors and Digital Processing Sys., Components Thereof, and Products Containing

Same, 337-TA-529, Order No. 17 (July 8, 2005) (same).

2
In the event this motion is granted, Claims 1, 2, 3, 4, 5, 6, 7, 8, 10, 12, 14, 15, 16, 17, 18, 19,
20, 21, 22, 24, 25, 27, and 29 of the ’907 patent would remain asserted.

Investigation No. 337-TA-1089


Complainant Netlist, Inc.’s Unopposed Motion for Partial Termination of the Investigation with Respect to Eight Asserted
Claims of U.S. Patent No. 9,606,907
3
III. Discussion

Withdrawal of the allegations based on the claims identified above will simplify the

Investigation, streamline the hearing, and conserve judicial, OUII Staff, and private party

resources. See Certain Stronium-Rubidium Radioisotope Infusion Systems, and Components

Thereof Including Generators, Inv. No. 337-TA-1110, Order No. 18, at 2 (Sept. 4, 2018)

(“Indeed, granting the motion will simplify the investigation, streamline the hearing, and

conserve resources by reducing the number of issues to be decided.”). “[G]ood cause need not be

shown in support of a complainant’s voluntary request to withdraw patent claims from an

investigation.” Laminated Floor Panels, Order No. 30, at 2. Nonetheless, factors such as

simplification of the Investigation and conservation of resources have supported a finding of

good cause to justify partial terminations. See Certain Semiconductor Timing Signal Generator

Devices, Components Thereof, and Products Containing Same, Inv. No. 337-TA-465, Order No.

25 (July 9, 2002); Certain HSP Modems, Software and Hardware Components Thereof, and

Products Containing Same, Inv. No. 337-TA-439, Order No. 16 (Feb. 16, 2001).

Moreover, no extraordinary circumstances exist that would prevent the partial

termination of this Investigation as to the subject patent claims. See, e.g., Certain Data Storage

Sys. & Components Thereof, Inv. No. 337-TA-471, Order No. 21, at 2-3 (Dec. 22, 2011) (“The

[ALJ] is unaware of any prejudice which respondents or the public may suffer as a result of the

withdrawal of 64 claims.”).

Investigation No. 337-TA-1089


Complainant Netlist, Inc.’s Unopposed Motion for Partial Termination of the Investigation with Respect to Eight Asserted
Claims of U.S. Patent No. 9,606,907
4
Netlist hereby represents that there are no agreements, written or oral, express or implied

between Netlist and Respondents concerning the subject matter of the Investigation relevant to

the adjudication of this motion.3

For the foregoing reasons, Netlist respectfully requests that the Chief ALJ terminate the

Investigation with respect to Claims 43, 44, 45, 47, 48, 50, 52, and 58 of U.S. Patent No.

9,606,907.

3
This statement is not intended to include stipulations entered into by the private parties during
the course of the Investigation, e.g., to facilitate discovery.

Investigation No. 337-TA-1089


Complainant Netlist, Inc.’s Unopposed Motion for Partial Termination of the Investigation with Respect to Eight Asserted
Claims of U.S. Patent No. 9,606,907
5
Dated: September 20, 2018 Respectfully submitted,

/s/ Andrew H. DeVoogd


James M. Wodarski
Michael T. Renaud
Andrew H. DeVoogd
Kristina R. Cary
Matthew S. Galica
Matthew A. Karambelas
Tiffany M. Knapp
Robert J. Moore
Daniel B. Weinger
MINTZ LEVIN COHN FERRIS
GLOVSKY AND POPEO PC
One Financial Center
Boston, MA 02111
Tel: 617-542-6000
Fax: 617-542-2241

Aarti Shah
MINTZ LEVIN COHN FERRIS
GLOVSKY AND POPEO PC
701 Pennsylvania Avenue, NW
Suite 900
Washington, DC 20004
Tel: 202-434-7300
Fax: 202-434-7400

Stephen J. Akerley
Philip C. Ducker
Adrian Kwan
MINTZ LEVIN COHN FERRIS
GLOVSKY AND POPEO PC
44 Montgomery Street, 36th Floor
San Francisco, CA 94104
Tel: 415-432-6000
Fax: 415-432-6001

NETLIST-ITC-1089@MINTZ.COM

Counsel for Complainant Netlist, Inc.

Investigation No. 337-TA-1089


Complainant Netlist, Inc.’s Unopposed Motion for Partial Termination of the Investigation with Respect to Eight Asserted
Claims of U.S. Patent No. 9,606,907
6
United States International Trade Commission
Investigation No. 337-TA-1089
Certain Memory Modules and Components Thereof

CERTIFICATE OF SERVICE

I, Saron Harry, hereby certify that on September 20, 2018, true and correct copies of the
foregoing were served on the following parties listed below:

The Honorable Lisa R. Barton ⌧ Via EDIS


Secretary to the Commission  Via Hand Delivery
U.S. INTERNATIONAL TRADE COMMISSION ⌧ Via Federal Express Overnight Delivery
500 E Street S.W., Room 112
Washington, D.C. 20436

The Honorable Charles E. Bullock  Via Hand Delivery


U.S. INTERNATIONAL TRADE COMMISSION ⌧ Via Federal Express Overnight Delivery
500 E Street S.W., Room 317 ⌧ Via Electronic Mail
Washington, D.C. 20436 michael.turner@usitc.gov

Monisha Deka, Esq.  Via Hand Delivery


Office of Unfair Import Investigations  Via Federal Express Overnight Delivery
U.S. INTERNATIONAL TRADE COMMISSION ⌧ Via Electronic Mail
500 E Street S.W., Suite 401 monisha.deka@usitc.gov
Washington, D.C. 20436

Counsel for Respondents SK hynix Inc., SK hynix  Via Hand Delivery


America Inc., and SK hynix memory solutions Inc.  Via Federal Express Overnight Delivery
⌧ Via Electronic Mail
Michael R. Franzinger SKHynixNetlistSidleyTeam@sidley.com
SIDLEY AUSTIN LLP
1501 K Street, N.W.
Washington, D.C. 20005

/s/ Saron Harry


Saron Harry
Legal Specialist
MINTZ, LEVIN, COHN, FERRIS,
GLOVSKY AND POPEO, P.C.
One Financial Center
Boston, MA 02111
Email: SSHarry@mintz.com
(617) 348-3037 (Telephone)