UNITED STATES INTERNATIONAL TRADE COMMISSION

WASHINGTON, D.C.

Before the Honorable Charles E. Bullock

Chief Administrative Law Judge

In the Matter of

CERTAIN MEMORY MODULES AND Investigation No. 337-TA-1089

COMPONENTS THEREOF

COMPLAINANT NETLIST INC.’S

TWELFTH DECLARATION PURSUANT TO GROUND RULE 7.7

1. I, Matthew S. Galica, am an associate at the law firm of Mintz, Levin, Cohn,

Ferris, Glovsky, and Popeo P.C., and represent Netlist, Inc. in the present investigation.

2. Pursuant to Ground Rule 7.7,1 Netlist continues to examine the asserted patents

and claims in this investigation to determine whether it can reduce the scope of this Investigation

by further narrowing the number of claims asserted.

3. The patents and claims currently at issue in this investigation are as follows:

Patent Independent Asserted Claims Dependent Asserted Claims

2, 3, 4, 5, 6, 7, 8, 10, 12, 14,
15, 17, 18, 19, 20, 21, 22, 24,
9,606,907 1, 16, 43, 58
25, 27, 29, 44, 45, 47, 48, 50,
and 52
2, 3, 4, 5, 7, 8, 9, 10, 11, 13,
9,535,623 1, 12, 21 14, 15, 17, 18, 19, 20, 22, 23,
24, 25, 27, and, 29

1
Netlist notes that ALJ Pender is no longer the presiding ALJ in this Investigation. Netlist
nonetheless submits this declaration pursuant to his Ground Rules that remain in effect.
Investigation No. 337-TA-1089
Complainant Netlist, Inc.’s Twelfth Declaration Pursuant to Ground Rule 7.7
 4. On March 14, 2018, in an effort to decrease the number of claim terms for

construction, streamline the case, and conserve the resources of the ALJ, Staff and the private

parties, Complainant filed an Unopposed Motion for Partial Termination of the Investigation

with Respect to Seven Asserted Claims of U.S. Patent No. 9,606,907 (Mot. No. 1089-010) (Mar.

14, 2018). Order No. 12 (EDIS Doc. No. 639346) granted the termination of this Investigation

as to claims 30, 31, 32, 33, 34, 35, and 38 of U.S. Patent No. 9,606,907 on March 19, 2018.

5. On June 26, 2018, Respondents served Complainant with their Ground Rule 7.5

Disclosure of Invalidity Contentions. Complainant reviewed Respondents’ contentions, and, at

this time, nothing presented in Respondents’ contentions alters Complainant’s position that the

currently asserted claims of the ’907 and ’623 patents are valid and infringed by Respondents.

6. On August 30, 2018, ALJ Pender issued Order No. 17 construing the disputed

terms in this Investigation. Order No. 17 (EDIS Doc. No. 654420). Netlist believes that this

order resolved all disputed claim terms in Netlist’s favor. Nonetheless, Netlist seeks to simplify

the investigation, streamline the hearing, and conserve judicial, Staff, and private party

resources. In an effort to do so, and consistent with Ground Rule 7.7, Netlist has filed an

unopposed motion for partial termination of the investigation as to the following claims of the

’907 patent: 43, 44, 45, 47, 48, 50, 52, and 58. (EDIS Doc. No. 656330)2.

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 Twelfth Declaration Pursuant to Ground Rule 7.7
2
 7. Netlist will continue to assess the asserted patents and claims in this investigation,

and, to the extent it determines further reduction of the asserted claims is warranted, it will move

accordingly.

Executed on September 20, 2018 /s/ Matthew S. Galica

Matthew S. Galica

Counsel for Netlist, Inc.

Investigation No. 337-TA-1089

Complainant Netlist, Inc.’s Twelfth Declaration Pursuant to Ground Rule 7.7
3
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)