U.S. International Trade Commission

Publication 4147 April 2010

Washington, DC 20436

In the Matter of

Investigation No. 337-TA-619 

Certain Flash Memory Controllers, Drivers, 

Memory Cards, and Media Players and 

Products Containing Same
U.S. International Trade Commission

COMMISSIONERS 

Shara L. Aranoff, Chairman 

Daniel R. Pearson, Vice Chairman 

Deanna Tanner Okun 

Charlotte R. Lane 

Irving A. Williamson 

Dean A. Pinkert 

Address all communications to 

Secretary to the Commission 

United States International Trade Commission 

Washington, DC 20436
U.S. International Trade Commission

Washington, DC 20436 

www.usitc.gov

Publication 4147 April 2010

In the Matter of

Investigation No. 337-TA-619 

Certain Flash Memory Controllers, Drivers, 

Memory Cards, and Media Players and 

Products Containing Same

UNITED STATES INTERNATIONAL 11tADE COMMISSION 

W .. ~i.&W", D.C. lllO6 

CERTAIN !'!.ASH MEll10RY 

CONTROL.LI'J!S. lIRiVES. MEMORY 

CARDS, "" ... D MEDIA P!.A YERS AND 

PRODUCTS CONT .U ... ING SAME 

I._til.t .... No. 331· T A-41' 

NonCE OF COM.\lI SS ION FlNA ... DItTII:RMINA TI O!'( OF NO VIO!.A noi'i Of 

SECTION 331, TER.\lL"'ATION OF ll'o"VESTIGATION 

AGENCY: U,S, lokmalionai T..dc Commimon. 

SUM.'I1ARY: Not"" is her<by Ji-that tho u.s. Illtemotioml T~ Commission r-

""'"""ined that \her< hao ""'" no violation of oe<:tion 117 of tho Toriff A" of 19J1l. 19 u.s.c. I 11J7. in rhi. i""<$Iipl"", ond .... k'n'ninm.llbe i._ip.' ;"'" 

t<tminal on (202 ) mS· lI IU. 

SUfPLEM ENTARY "'TORMA nON, The Commi>RooI iD>Ii ... cd !his in,<>Iiplion on 

i.Ie<em"", 12. 2007. booed on. oompIoinI filed by SanDi'" Cot ... "ion ofMilpitu. CA, 12 

l.d 1I,~ 706 10 (0.-0. 12. 2OO1). Tho ~ olkjlcd .iolaIioM of Xdion 117 of tho T.-iff 

Act of 19J1l (19 usc, I 1317) in tho imponation into tho Unit«! Sta,,,, !he sal. fur 

imporu!i<>o>. ondlb< .... within lbe Uoilcd ~ __ intporuIioo of <<tWn tladl _, 

""""'"'"". drj, ... """""')' «nIs, n>«li. pLoyers ond ptOd\>l;tS "",,",i ;"~ Ib<,.".. by "'...", of 

;"fl-in",,,,, •• <>f--...o <I<oin'<! ofUnilt<l S .... I'a!eno N(O$. 6.4W93; 6.16.1.424 ('"llle '424 

pale'''"); 5.719.ws, 6.9011.332; ond 7.ll7.01 I ("II>< '011 paI<nt"), 11rno< pat<ntI ond ...-mrl 

cWms ,.... ,,"'-t<l<lldy t<nninoted from Ib< in'lCSlipt;.,.,. Claim> 11.2-4 ar>:l J.O <>fib< '424 

pool<1It ond claim I oflb< '011 poleD! rernai.o in !he in,~, The oomp!aint!wned ..... ly 
fifty respondents. Twenty-one respondents were terminated from the investigation based on 

settlement agreements, consent orders and withdrawal of allegations from the complaint. Five 

respondents defaulted. The following respondents remain in the investigation: Imation 

Corporation of Oakdale, MN; Imation Enterprises Corporation of Oakdale, MN; and Memorex 

Products, Inc. of Cerritos, CA (collectively, "Imation Respondents"); Phison Electronics 

Corporation of Hsinchu, Taiwan; Silicon Motion Inc. of Taiwan; Silicon Motion, Inc. of 

Milpitas, CA; Skymedi Corporation of Hsinchu, Taiwan; Power Quotient International Co., Ltd. 

of Taipei, Taiwan; Power Quotient International (HK) Co., Ltd. of Hong Kong; Syscom 

Development Co., Ltd. of the British Virgin Islands; PQI Corporation of Fremont, California; 

Kingston Technology Corporation of Fountain Valley, CA; Kingston Technology Company, Inc. 

of Fountain Valley, CA; MemoSun, Inc. of Fountain Valley, CA; Transcend Information Inc. of 

Taipei, Taiwan; Transcend Information Inc. of Orange, CA; Transcend Information Maryland, 

Inc. of Linthicum, MD; Apacer Technology Inc. of Taipei Hsien, Taiwan; Apacer Memory 

America, Inc. of Milpitas, CA; Dane Memory S.A. of Bagnolet, France; Deantusaiocht DaneElec TEO ofSpiddal, Galway, Ireland; Dane-Elec Corporation USA of Irvine CA; LG 

Electronics U.S.A., Inc. of Englewood Cliffs, New Jersey; and LG Electronics, Inc. of Seoul, 

South Korea. 

On April 10, 2009, the ALJ issued his final ID finding no violation of section 337 by 

Respondents. The ALJ issued a corrected version of his final ID on April 16,2009. The ID 

included the ALJ's recommended determination on remedy and bonding. In the subject ID, the 

ALJ found that the accused products do not infringe asserted claims 17, 24 and 30 of the '424 

patent. The ALJ also found that none of the asserted claims ofthe '424 patent were proven to be 

invalid as anticipated or obvious in view of the prior art. The ALJ further found the Respondents 

not liable for contributory or induced infringement of the asserted claims of the '424 patent. 

- Likewise, the ALJ found that SanDisk failed to prove that the Imation Respondents, the only 

respondents accused of infringing claim 8 of the' 0 11 patent, induced or contributed to 

infringement of the patent. The ALJ also found that SanDisk's rights in the '011 patent were not 

exhausted and that claim 8 of the' 011 patent satisfies the indefiniteness requirement of 35 

U.S.C. § 112, second paragraph. The ALJ, however, concluded that the prior art rendered claim 

8 of the '011 patent obvious. 

On May 4,2009, SanDisk and the Commission investigative attorney filed petitions for 

review of the ID. That same day, Respondents filed a collective contingent petition for review of 

the ID with respect to the' 424 patent. Skymedi Corporation and the Imation Respondents, in 

addition to joining the collective contingent petition for review, filed individual contingent 

petitions for review. On May 18, 2009, the parties filed responses to the various petitions and 

contingent petitions for review. 

On August 24,2009, the Commission determined to review the final ID in part and 

requested briefing on several issues it determined to review, and on remedy, the public interest 

and bonding. 74 Fed Reg. 44382 (Aug. 28, 2009). The Commission determined to review the 

claim construction of claims 17,24 and 30 of the '424 patent; infringement of the asserted claims 

2 
of the '424 patent; validity of the '424 patent; and the ALl's decision not to consider the Sinclair 

PCT publication as evidence of prior art to claim 17 of the '424 patent. Id. 

On September 3, 2009, the parties filed written submissions on the issues on review, 

remedy, the public interest and bonding. On September 14,2009, the parties filed response 

submissions on the issues on review, remedy, the public interest and bonding. 

Having examined the record of this investigation, including the ALl's final ID, the 

Commission has determined to (1) reverse the ALl's finding that claim 17 of the '424 patent 

does not cover single-page updates; (2) reverse the ALl's finding that the claim term "reading 

and assembling data from the first and second plurality of pages" as recited in claim 20 of the 

'424 patent excludes the so-called table method as disclosed in Figure 12; (3) affirm the ALl's 

finding that the accused products do not infringe the asserted claims of the '424 patent; and (4) 

affirm the ALl's finding that none ofthe asserted claims of the '424 patent were proven to be 

invalid as anticipated or obvious in view of the prior art considered by the ALJ. Given the 

Commission's affirmance of the ALl's determination that SanDisk failed to establish that the 

accused controllers infringe claim 17 ofthe ' 424 patent, the Commission declines to reach the 

issue of whether the ALJ should have considered the Sinclair PCT publication as evidence of 

prior art to claim 17 of the '424 patent. 

The authority for the Commission's determination is contained in section 337 of the 

Tariff Act of 1930, as amended (19 U.S.C. § 1337), and in sections 210.42-46 and 210.50 of the 

Commission's Rules of Practice and Procedure (19 C.F.R. §§ 210.42-46 and 210.50). 

By order of the Commission. 

Marilyn R. Abbott 

Secretary to the Commission 

Issued: October 23,2009 

3 
CERTAIN FLASH MEMORY CONTROLLERS, DRIVES, 337-TA-619 

MEMORY CARDS, AND MEDIA PLAYERS AND PRODUCTS 

CONTAINING SAME 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached NOTICE OF COMMISSION 

FINAL DETERMINATION OF NO VIOLATION OF SECTION 337; 

TERMINATION OF INVESTIGATION has been served by hand upon the 

Commission Investigative Attorney, Christopher G. Paulraj, Esq., and the following 

parties as indicated, on October 23, 2009 

,/2i -Ii· rI\? J1 ~! -I QtJ f f( ~ '1 . lJfPpo/1 

MaritYllRbbott, Secretary vII fb 

u.s. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

On Behalf of Complainant Sandisk Corporation: 

Gregory A. Castanias, Esq. 

JONES DAY 

51 Louisiana Avenue, NW 

Washington, DC 20001-2113 

On Behalf of Respondents Phison Electronics 

Corporation; Kingston Technology Company, 

Incorporated; Kingston Technology Corporation; and, 

Memo Sun Incorporated: 

Jeffrey R. Whieldon, Esq. 

FISH & RICHARDSON PC 

1425 K Street, NW - Suite 1100 

Washington, DC 20005 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(.~ Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(10 Via First Class Mail 

( ) Other: ___ _ 
Certificate of Service - Page 2 

On Behalf of Respondents, Skymedi Corporation: 

Robert R. McKelvie, Esq. 

Covington & Burling LIp 

1201 Pennsylvania Avenue, Nw 

Washington, Dc 20004-2401 

On Behalf Of Respondents Apacer Technology, 

Incorporated and Apacer Memory America, 

Incorporated: 

Daniel J. Lueders, Esq. 

WOODARD, EMHARDT, MORIARTY, MCNETT & 

HENRYLLP 

111 Monument Circle, Suite 2700 

Indianapolis, IN 46204-5137 

On Behalf of Respondents LG Electronics, Incorporated 

and LG Electronics USA, Incorporated: 

Brian Koo, Esq. 

SIDLEY AUSTIN LLP 

1501 K Street, NW 

Washington, DC 20005 

On Behalf of Respondents Dane Elec Corporation USA, 

Dane-Memory, SeA., and Deantusaiocht Dane-Elec 

TEO: 

Charles C.H. Wu, Esq. 

WU & CHEUNG LLP 

98 Discovery 

Irvine, CA 92618-3105 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(x) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

60 Via First Class Mail 

( ) Other: __ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(X) Via First Class Mail 

( ) Other: __ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(;<;) Via First Class Mail 

( ) Other: ___ _ 

PI.IBI.IC VERSION 

IJNITED STATES INfERNATIONA1. TRADE COM,\lISSION 

~"JI", D.C.204J6 

l~ .b. M~" •• or 

CERTAIN rLASI! MEMORY 

CONTROU .ERS. DRIVES, ME,\lOKV 

CA RDS, AND MEDIA FLA YERS AND 

PRODI.ICfS CONTAINING SAME 

I.'''ric •• io. No. l.J7·T A-619 

COMMISSION OPINION 

I . BACKGKOUNIJ 

The ~ irutituted <hi. io.«Iipfioll "" Decemb« 12. 2001. "*'«l "" " """,pi,"", 

filed by SonOisl: C.....,... .... \SOI1Oisl;"). 72 F.d, ~./{. 70610 (D<><. 12.20(1). 11>< oomploin1 

olkrcd 'o'iolotions <>f _ JJ7 in lit< imponaIioo into tD:: UnilCd SIaIcs.tD:: sol< ro. 

importatioo. or .... Ale ,.j!hin .... Uoited States aftCl' impon.tioo of C<lI&in Huh """'''''Y 

"""""I ..... dri'o'ft, II>OII""Y card .. media players oM product< containing tD:: ......, by _ of 

inli-""""" .. "t <>f ...... ;n <tlima offi""lJtljtod S .. ,oo ..... nl:l; U.S. "*<rot No. 6,763,42-4 C'tho '424 

PO""""). U.s. Pate"' No. 7,1l7,Oll ("tbo '011 pBlen1"). U.s, Palen< No. 5.719.101 ("!be '3(18 

,..,..,"), U.s. Patent No. 6,947 )Jl \Ib< '332 PO-, w U.S . ........ So. 6,426,19J ( ...... ~3 

'Oil pa!<1II> mnoin ill .... iIlwotipim 
PUBLIC VERSION 

settlement agreements, consent orders, and/or withdrawal of allegations from the complaint. Five 

respondents defaulted. The following groups of respondents remain in the investigation after the 

various defaults and terminations: 

1. Phison Electronics Corporation of Hsinchu, Taiwan ("Phison"); 

2. Silicon Motion Inc. of Taiwan; and Silicon Motion, Inc. of Milpitas, CA 

(collectively "Silicon"); 

3. Skymedi Corporation of Hsinchu, Taiwan ("Skymedi"); 

4. Power Quotient International Co., Ltd. of Taipei, Taiwan; Power Quotient 

International (HK) Co., Ltd. of Hong Kong; Syscom Development Co., Ltd. 

of the British Virgin Islands; and PQI Corporation of Fremont, California 

(collectively "PQI"); 

5. Kingston Technology Corporation of Fountain Valley, CA; Kingston 

Technology Company, Inc. of Fountain Valley, CA; and MemoSun, Inc. of 

Fountain Valley, CA (collectively "Kingston") 

6. Transcend Information Inc. of Taipei, Taiwan; Transcend Information Inc. 

of Orange, CA; and Transcend Information Maryland, Inc. of Linthicum, 

MD (collectively "Transcend"); 

7. Imation Corporation of Oakdale, MN; Imation Enterprises Corporation of 

Oakdale, MN; and Memorex Products, Inc. of Cerritos, CA (collectively 

"Imation"); 

8. Apacer Technology Inc. of Taipei Hsien, Taiwan; and Apacer Memory 

America, Inc. of Milpitas, CA (collectively "Apacer"); 

9. Dane Memory S.A. of Bagnolet, France; Deantusaiocht Dane-Elec TEO of 

Spiddal, Galway, Ireland; and Dane-Elec Corporation USA ofIrvine CA 

(collectively "Dane-Elec"); and 

10. LG Electronics U.S.A., Inc. of Englewood Cliffs, New Jersey; and LG 

Electronics, Inc. of Seoul, South Korea (collectively "LG"). 

The ALl held a Markman hearing from May 6-7, 2008, and issued an order construing the 

terms of the asserted claims of the patents-in-issue on July 15, 2008. See Order No. 33. The ALJ 

further stated that all briefing in this investigation is governed by the claim construction order and 

"[aJl! other claim terms shall be deemed as undisputed and shall be interpreted by the undersigned 

in accordance with 'their ordinary meaning as viewed by one of ordinary skill in the art.'" Id at 9. 

The ALJ incorporated Order No. 33 into his final ID. ID at 8. 

2 
PUBLIC VERSION 

On April 10,2009, the ALJ issued his final ID in this investigation, finding no violation of 

section 337 by Respondents with respect to any of the asserted claims.! Specifically, the ALJ 

found that the accused products do not infringe the asserted claims of the '424 patent. The ALJ 

also found that none of the references properly before him anticipated the asserted claims or 

rendered the asserted claims of the '424 patent obvious. The ALJ further found the Respondents 

not liable for contributory or induced infringement of the asserted claims of the' 424 patent. 

Likewise, the ALJ found that SanDisk failed to prove that Imation, the sole respondent accused of 

infringing the '011 patent, induced or contributed to infringement of the patent. The ALl also 

found that SanDisk's rights in the '011 patent were not exhausted and that claim 8 of the '011 

patent satisfied the indefiniteness requirement of 35 U.S.C. § 112, second paragraph. The ALJ 

further found claim 8 of the '011 patent invalid for obviousness. The ALJ concluded that an 

industry exists within the United States with respect to SanDisk's products that practice the' 424 

and '011 patents, as required by 19 U.S.C. § 1337(a)(2) and (3). 

The ID includes the ALl's recommended determination ("RD") on remedy and bonding. 

The ALJ recommended that in the event the Commission finds a violation of section 337, the 

Commission should issue a limited exclusion order to exclude the accused products of all the 

named respondents as well as a cease and desist order directed towards respondents, [ 

] because they maintain significant 

inventories of accused products in the United States. The ALJ recommended that the 

Commission set a bond of [ ] based on a reasonable royalty rate, during the period of 

! The ALl issued a corrected version of the ID on April 16, 2009. 

3 
PUBLIC VERSION 

Presidential review. 

On May 4,2009, SanDisk filed a petition requesting review of the ID's finding that the 

accused products do not infringe the asserted patents. SanDisk also sought review of the ID's 

finding that the prior art invalidates the asserted claim of the '011 patent. That same day, the 

Commission investigative attorney ("IA") filed a petition seeking review of the ID's finding that 

the accused products do not infringe claim 17 of the ' 424 patent. The IA further asked the 

Commission to review the ALl's decision not to consider u.s. Patent No: 6,725,321 ("the'321 

patent") to Alan Welsh Sinclair et al. and its corresponding Patent Cooperation Treaty ("PCT") 

publication, WO 00/49488 ("the Sinclair PCT publication") as prior art references to claim 17 of 

the '424 patent. Also on May 4,2009, Respondents filed various contingent petitions for review 

of the ID's findings should the Commission decide to review the subject ID. The contingent 

petitions sought review of the ID's findings regarding validity of the asserted claims, waiver of 

non-infringement contentions and patent exhaustion. 

On August 24, 2009, the Commission determined to review the final ID in part and 

requested briefing on several issues it determined to review, and on remedy, the public interest 

and bonding. 74 Fed. Reg. 44382 (Aug. 28, 2009). The Commission determined to review the 

claim construction of claims 17,24 and 30 of the '424 patent; infringement of the asserted claims 

of the '424 patent; validity ofthe '424 patent; and the ALJ's decision not to consider the Sinclair 

PCT publication as evidence of prior art to claim 17 of the '424 patent. fd. The Commission 

determined not to review the remaining issues decided in the ID. In its notice of review, the 

Commission asked the parties the following: 

4 
PUBLIC VERSION 

1. Address whether the accused products would infringe claim 17 of the '424 

patent if construction of the claim term "updating pages of original data 

within any of the metablock component blocks less than all the pages 

within the block" is construed to cover single-page updates. Please cite 

record evidence and/or relevant legal precedent to support your position. 

2. Address whether the claim term "reading and assembling data from the first 

and second plurality of pages" as recited in claim 20 of the' 424 patent 

should be construed to cover the so-called "table method," and whether the 

accused products would infringe claims 24 and 30 of the '424 patent as a 

result. See' 424 patent (JX-2) at column 10, lines 44-59; FIG. 12. Please 

cite record evidence and relevant legal authority to support your position. 

3. Address why the Sinclair PCT publication was not listed on any notice of 

prior art as required by Ground Rule No.5, and having violated the ground 

rule, why none of the parties availed itself of its remedy to submit a timely 

written motion showing good cause why the reference was not listed. See 

Order No.2 at 9-10. 

4. Address under what circumstances, if any, the Commission should consider 

a reference that was not submitted in accordance with an ALJ's ground 

rule. 

5. Address the similarities and differences, if any, between U.S. Patent No. 

6,725,321 to Alan Welsh Sinclair et al. (RX-628) and its corresponding 

Patent Cooperation Treaty publication, WO 00/49488 ("the Sinclair PCT 

publication") (RX-1038 - rejected by ALJ) and whether the Sinclair PCT 

publication invalidates claim 17 of the' 424 patent. Please cite record 

evidence and any relevant legal authority to support your position. 

On September 3, 2009, the parties filed written submissions on the issues under review, 

remedy, the public interest and bonding. On September 14,2009, the parties filed response 

submissions on the same issues. 

For the reasons discussed below, the Commission affirms the ID's determination of no 

violation of section 337. Specifically, we affirm the ID's finding that Complainant has failed to 

prove that Respondents indirectly infringe asserted claims 17, 24 and 30 of the' 424 patent. In 

5 
PUBLIC VERSION 

other words, Complainant's proffered evidence falls short of establishing that Respondents either 

contribute to, or induce infringement of, the asserted claims of the '424 patent. The Commission 

affirms the ID's construction of the claim term "updating pages of original data within any ofthe 

metablock component blocks less than all the pages within the block" in claim 17 of the' 424 

patent to mean "updating fewer than all the pages of a block within the metablock," but reverses 

the ID's application ofthe claim construction to exclude single-page updates. The Commission 

also finds that the "reading and assembling" claim term recited in independent claim 20, from 

which asserted claims 24 and 30 depend, is not limited to the so-called reverse-read method, but 

rather construes the term to cover the so-called table method as described in Figure 12 of the' 424 

patent. Finally, because the Commission finds no section 337 violation due to Complainant's 

failure to prove that Respondents indirectly infringe the asserted claims of the '424 patent, the 

Commission does not decide the issue of whether the ALl should have considered the Sinclair 

PCT publication as evidence of prior art to claim 17 of the '424 patent. 

B. Patents and Technology at Issue 

This investigation pertains to flash memory controllers, drives, memory cards, and media 

players and products containing same. Flash memory signifies a non-volatile memory system, for 

example, a USB flash drive. The term "non-volatile" refers to the fact that flash memory retains 

the information stored on it, even in the absence of electrical power, making flash memory useful 

as a portable storage device. In contrast, most personal computers utilize a memory drive 

(Random Access Memory or RAM) that loses the information stored on it in the absence of 

electrical power. 

6 
PUBLIC VERSION 

The '424 patent, entitled "Partial Block Data Programming and Reading Operations in a 

Non-Volatile Memory," issued on July 13,2004, to Kevin M. Conley. SanDisk owns the '424 

patent and has asserted independent claim 17 as well as dependent claims 24 and 30, depending 

from independent claim 20, in this investigation. The asserted claims cover two categories of 

inventions. Claim 17 discloses an allegedly novel technique for updating data stored in the 

component blocks of a metablock, while claims 24 and 30 disclose an allegedly novel method for 

performing partial block updates to data stored in a non-volatile memory system. 

The '011 patent, entitled "Removable Mother/Daughter Peripheral Card," issued on 

November 14, 2006, to Eliyahou Harari, Daniel C. Guterman and Robert F. Wallace. SanDisk 

owns the patent and has asserted only independent claim 8 in this investigation. Claim 8 discloses 

an allegedly novel non-volatile memory card that incorporates a flash memory array in an 

enclosure and that is removably attached to a host system. The memory card is allegedly designed 

to provide "security with portability." Unlike prior art systems, SanDisk asserts that the memory 

card recited in claim 8 stores both a decryption algorithm and encrypted user data in the flash 

memory array so that they can be read out for use together. 

C. Products at Issue 

The accused products fall into two general categories: (1) Flash memory controllers, and 

(2) products or systems containing Flash memory controllers, generally referred to as Flash 

memory systems. Specifically, SanDisk asserted the' 424 patent against particular controllers 

manufactured by certain respondents, as well as against Flash memory systems imported and sold 

7 
PUBLIC VERSION 

by certain respondents that incorporate the accused controllers.2 With respect to the '011 patent, 

SanDisk accused various products manufactured by Imation of infringement. 3 

II. STANDARD OF REVIEW 

Under the Administrative Procedure Act, upon review of the initial determination of the 

ALJ, "the agency has all of the powers which it would have in making the initial decision except 

as it may limit the issues on notice or by rule." 5 U.S.C. § 557(b) (quoted in Certain Acid-Washed 

Garments and Accessories, Inv. No. 337-TA-324 (U.S.I.T.C. Aug. 6, 1992»; 19 C.F.R. 

§ 210.45(c). In other words, once the Commission decides to review the decision of the ALJ, the 

Commission may conduct a review of the findings of fact and conclusions of law presented by the 

record under a de novo standard. 

III. CLAIM CONSTRUCTION 

A. Legal Standard 

Claim construction "begin [ s] with and remain[ s] centered on the language of the claims 

themselves." Storage Tech. Corp. V Cisco Sys., Inc., 329 F.3d 823, 830 (Fed. Cir. 2003). That 

is, the words of the claims "define the scope of the patented invention." Vitronics Corp. v. 

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Claims should be given their ordinary 

and customary meaning as understood by a person of ordinary skill in the art, viewing the claim 

2 For a detailed list of accused controllers, representative controllers and system products, 

see ID at pages 19-21. 

3 For a detailed list of Imation products accused of infringing claim 8 of the' 0 11 patent, 

see the ID at page 20. 

8 
PUBLIC VERSION 

terms in the context of the entire patent. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. 

Cir. 2005) (en bane). In construing claims, a court looks first to the intrinsic evidence, which 

consists of the language of the claims, the patent's specification, and the prosecution history, as 

such evidence "is the most significant source of the legally operative meaning of disputed claim 

language." Vitronics, 90 F.3d 1576, 1582 (Fed. Cir. 1996). The claims themselves, however, 

"provide substantial guidance as to the meaning of particular claim terms." Phillips, 415 F.3d 

1303, 1314 (Fed. Cir. 2005). In addition, it is essential to consider a claim as a whole when 

construing each term, because the context in which a term is used in a claim "can be highly 

instructive." Id. 

When the meaning of a claim term remains uncertain, the specification is usually the first 

and best place to look, aside from the claim itself, in order to find that meaning. Phillips, 415 F.3d 

at 1315. The specification of a patent "acts as a dictionary" both "when it expressly defines terms 

used in the claims" and "when it defines terms by implication." Vitronics, 90 F.3d at 1582; 

Phillips, 415 F.3d at 1323. "The construction that stays true to the claim language and most 

naturally aligns with the patent's description of the invention will be, in the end, the correct 

construction." Phillips, 415 F.3d at 1316. However, a court may not read particular examples or 

embodiments discussed in the specification into the claims as limitations. Markman v. Westview 

Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). 

Differences between claims may be helpful in understanding the meaning of claim terms. 

Phillips, 415 F.3d at 1314. A claim construction that gives meaning to all the terms of a claim is 

preferred over one that does not do so. Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 

9 
PUBLIC VERSION 

1372 (Fed. Cir. 2005). In addition, the presence ofa specific limitation in a dependent claim 

raises a presumption that the limitation is not present in the independent claim. Phillips, 415 F.3d 

at 1315. This presumption of claim differentiation is especially strong when the only difference 

between the independent and dependent claim is the limitation in dispute. SunRace Roots Enter. 

Co., v. SRAMCorp., 336 F.3d 1298, 1303 (Fed. Cir. 2003). 

"[I]n context, the plural can describe a universe ranging from one to some higher number, 

rather than requiring more than one item." Versa Corp. v. Ag-Bag Int'l Ltd, 392 F.3d 1325, 1330 

(Fed. Cir. 2004) (stating that "the use of 'channels' in the plural does not imply that multiple 

channels are required by the claim."); Dayco Prods. v. Total Containment, Inc., 258 F.3d 1317, 

1328 (Fed. Cir. 2001) (noting that "[i]n the phrase 'projections with recesses therebetween,' the 

use of 'recesses' can be understood to mean a single recess where there are only two projections 

and more than one recess where there are three or more projections" and that "in the present 

context, if the patentees had wanted to require an insert means with more than one recess, it would 

have been natural to limit the claimed invention to an insert means with a 'plurality of recesses. "') 

B. Claim Construction of the' 424 Patent 

The Commission determined to review the claim construction of claims 17, 24 and 30 of 

the' 424 patent. Specifically, the Commission determined to review whether the claim term 

"updating pages of original data within any of the metablock component blocks less than all the 

pages within the block" recited in claim 17 should be construed to cover single-page updates. The 

Commission also decided to review whether the claim term "reading and assembling data from 

10 
PUBLIC VERSION 

the first and second plurality of pages" as recited in claim 20 of the' 424 patent should be 

construed to cover the so-called table method as described in Figure 12 ofthe '424 patent. 

1. Construction of the claim term "updating pages of original data within any of 

the metablock component blocks less than all the pages within the block" 

recited in asserted claim 17 

Claim 17 of the '424 patent with emphasis on the claim term at issue is set forth below: 

17. A method of operating a non-volatile memory system having an array of memory storage 

elements organized into at least two sub-arrays, wherein the individual sub-arrays are divided into 

a plurality of non-overlapping blocks of storage elements wherein a block contains the smallest 

group of memory storage elements that are erasable together, and the individual blocks are 

divided into a plurality of pages of storage elements wherein a page is the smallest group of 

memory storage elements that are programmable together, comprising: 

linking at least one block from individual ones of said at least two 

sub-arrays to form a metablock wherein its component blocks are 

erased together as a unit, and 

updating pages of original data within any of the metablock 

component blocks less than all the pages within the block by 

programming replacement data into pages within another at least 

one block in only a designated one of the sub-arrays regardless of 

which sub-array the data being updated is stored. 

The ALl adopted the claim construction agreed to by the parties, including the lA, and 

construed the claim term "updating pages of original data within any of the metablock component 

blocks less than all the pages within the block" to mean "updating fewer than all the pages of a 

block within the metablock" in his Markman Order. Order No. 33 at 57. We find that the ALl 

improperly applied his Markman claim construction to exclude single-page updates, and thus, 

despite affirming the ALl's claim construction, we reverse his application of the construction to 

exclude single page updates. 

11 
PUBLIC VERSION 

Although claim construction issues normally present some uncertainty, the parties in this 

investigation agreed to a construction of the claim term during the Markman hearing, and the ALl 

adopted that construction. The parties agreed to construe the claim term "updating pages of 

original data within any of the metablock component blocks less than all the pages within the 

block" to mean "updating fewer than all the pages of a block within the metablock." This claim 

construction on its face includes single-page updates because updating a single-page necessarily 

updates "fewer than all the pages." See Rhyne, Tr. 409:2-4 (noting that "one page is fewer than 

all the pages"). Nothing from case law or the patent disclosure dictates deviating from this 

understanding. 

Federal Circuit precedent makes clear that "in context, the plural can describe a universe 

ranging from one to some higher number, rather than requiring more than one item." Versa, 392 

F.3d at 1330.4 Consequently, the use of the word "pages" does not necessarily compel construing 

4 Respondents cite Electro Scientific Indus., Inc. v. Dynamic Details, Inc., 307 F.3d 1343, 

1349-50 (Fed. Cir. 2002), and Superior Fireplace Co. v. Majestic Products Co., 92 F.Supp.2d 

1001, 1010 (Cal. 2002), for the proposition that the general rule in claim construction is that the 

plural form requires more than one. In our view, Respondents mis-describe the courts' holdings. 

In Electro Scientific, the Federal Circuit explained its rationale behind construing the claim term 

"circuit boards" to require multiple circuit boards as follows: 

To determine the meaning of "circuit boards," this court begins 

with the claim language. The preamble defines "circuit boards" as 

"at least first and second substantially identical boards .... 

References throughout the rest of the claim to "circuit boards" rely 

upon and derive antecedent basis from this preamble language. 

Therefore, this preamble definition limits the term "circuit boards" 

throughout the claim. 

Id. at 1348. In other words, the context of the claim, reciting "at least first and second 

substantially identical boards"( emphasis added) dictated that the claimed "circuit boards" 

12 
PUBLIC VERSION 

the claim term to exclude single-page updates. The context in which the word "pages" is 

employed should dictate its scope. The ALl acknowledged Federal Circuit law but concluded that 

the context of claim 17 did not warrant construing "pages" to encompass single-page updates. ID 

at 46. The ALl reasoned that "[t]he plain meaning of the term 'pages' clearly indicates more than 

one page" and found "no indication within the specification that the patentees intended the word 

'pages' to indicate anything other than the plain and ordinary meaning of the term 'pages.''' fd. 

The ALl noted that "[w]hile there may be a reference in the 'Summary ofthe invention' that the 

metablock is 'particularly useful when the memory system frequently updates single pages from a 

metablock,' the claim specifically refers to pages" and that "the example in the preferred 

embodiment refers to multiple pages." fd. 

We find that the ALl impermissibly allowed an embodiment disclosed in the specification 

to limit the claim term. See Markman, 52 F.3d at 979. While the '424 patent includes an 

embodiment that recites multiple-page updates, the '424 patent's disclosure specifically states that 

"this technique is particularly useful when the memory system frequently updates single pages 

from a metablock." '424 patent, col. 3, 11. 19-26 (emphasis added). In other words, the patent 

contemplates single-page updates. Moreover, claim 17 as a whole compels the understanding that 

included at least two boards. Thus, the Federal Circuit construed the claim term to require 

multiple circuit boards. 

In Superior Fireplace, the claim at issue specifically recited " ... a housing having a top 

wall, bottom wall, side walls and a rear wall . ... " (Emphasis added). The claim also recited "a 

firebox within the housing comprising the top wall, rear walls and side walls .... " (Emphasis 

added). The court stated that the claim term "rear walls" required at least two walls because of 

the context in which in the claim term was used. That is, the patentee used the singular (a rear 

wall) when he intended the singular, and used the plural (rear walls) when he intended the plural. 

l3 
PUBLIC VERSION 

"pages" as used in that context should encompass single pages. For example, in its preamble, 

claim 17 states that "the individual sub-arrays are divided into a plurality of non-overlapping 

blocks of storage elements" and that "the individual blocks are divided into a plurality of pages of 

storage elements" (emphasis added). That is, when the patentee wanted to limit the scope of the 

invention to "plurals," he used the qualifier "plurality of." As the Federal Circuit has noted, such 

use of the qualifier "plurality of' indicates that when the qualifier is not used, the claim term 

should not be limited to the plural. Dayco Prods. v. Total Containment, Inc., 258 F .3d 1317, 1328 

(Fed. Cir. 2001) (stating that "indeed, in the present context, if the patentee had wanted to require 

an insert means with more than one recess, it would have been natural to limit the claimed 

invention to an insert means with a 'plurality of recesses. "'). 

In sum, the claim language as a whole, the specification, and Federal Circuit precedent 

compel construing the claim term "updating pages of original data within any of the metablock 

component blocks less than all the pages within the block" to mean "updating fewer than all the 

pages of a block within the metablock" and specifically including single-page updates. 

Accordingly, although we affirm the ALl's claim construction, we reverse his application of the 

claim construction to exclude single-page updates. 

2. Construction of claim term "reading and assembling" recited in independent 

claim 20 from which asserted claims 24 and 30 depend 

Claims 24 and 30 depend from independent claim 20, which was not asserted in the 

investigation. The disputed claim term the Commission determined to review, however, resides 

within claim 20. Thus, claim 20 of the '424 patent with emphasis on the claim term at issue is set 

forth below: 

14 
PUBLIC VERSION 

20. In a re-programmable non-volatile memory system having a plurality of blocks of 

memory storage elements that are erasable together as a unit, the plurality of blocks individually 

being divided into a plurality of a given number of pages of memory storage elements that are 

programmable together, a method of operating the memory system, comprising: 

programming individual ones of a first plurality of said given 

number of pages in each of at least a first block with original data 

and a logical page address associated with the original data, 

thereafter programming individual ones of a second plurality of a 

total number of pages less than said given number in a second block 

with updated data and a logical page address associated with the 

updated data, wherein the logical page addresses associated with the 

updated data programmed into the second plurality of pages are the 

same as those associated with the original data programmed into the 

first plurality of pages, and 

thereafter reading and assembling data from the first and second 

plurality of pages including, for pages having the same logical 

addresses, selecting the updated data from the pages most recently 

programmed and omitting use of the original data from the pages 

earlier programmed. 

We find that the ALl's claim construction improperly limits the scope of the claim term 

"reading and assembling" to one embodiment (reverse-read method) disclosed in the' 424 patent 

while ignoring a second embodiment (table method) disclosed in the patent. Accordingly, we 

reverse the ALl's claim construction and find that the claim term "reading and assembling" 

encompasses both the reverse-read and table methods. 

Even though reliance may be placed on the written specification to provide guidance as to 

the meaning of claim terms when construing patent claims, a court may not read particular 

examples or embodiments discussed in the specification into the claims as limitations. Markman, 

52 F.3d 967,979 (Fed. Cir. 1995). The '424 patent describes two distinct embodiments, a 

reverse-read method and a table method. See '424 patent, col. 9, 1. 54 - col. 10,1. 43; col. 10,11. 

15 
PUBLIC VERSION 

44-59. As SanDisk notes, the reverse-read method "enables a controller to distinguish new data 

(stored in an update block) from old data (stored in an original block) by reading the pages of 

memory in the two blocks in the reverse of the order in which they were programmed." SanDisk 

Petition for Review at 47 (citing '424 patent, col. 9,1. 54 - col. 10,1.43). The patent also 

describes a second embodiment, the table method, which "can be used ... when the reverse page 

reading technique is not used.'" '424 patent, col. 10,11.54-55. SanDisk explains that under this 

method "the controller maintains a table that maps the correspondence between a given logical 

address and the physical address in the memory where the associated data is stored" and "when 

the host provides the controller with a particular logical address ... the controller checks the table 

so (sic) see whether that logical address is associated with an update block, or only an original 

block." SanDisk Petition for Review at 48. If an updated block exists "then the controller will 

select the updated page and omit the original page." Id In other words, under this technique, the 

controller does not read logical page address information from both the first and second plurality 

ofpages. 5 

The claim term at issue specifically recites, "thereafter reading and assembling data from 

the first and second plurality of pages including, for pages having the same logical addresses, 

selecting the updated data from the pages most recently programmed and omitting use of the 

5 We note that while the controller does not read logical page address information from 

both the first and second plurality of pages, the table is "constructed by reading the overhead data 

from each of the pages in blocks to which data of a common LBN [logical block number] has 

been written." '424 Patent, col. 10,11.51-53. The ALl construed the claim term "logical page 

address" as requiring "a logical block number and a logical page offset." See Order No. 33 at 63-

64. 

16 
PUBLIC VERSION 

original data from the pages earlier programmed" (emphasis added). The plain meaning of the 

claim indicates that "reading and assembling" pertains primarily to data, not to logical page 

addresses, and the specification provides two techniques that may be used to "read and assemble" 

the data. Nothing in the claim language or specification indicates or even suggests that "reading 

and assembling" should be limited to the reverse-read method, and Respondents do not point to 

any disclosure in the intrinsic evidence as supporting such a proposition. They merely rely on 

their proposed findings of fact, rebutted by SanDisk, for support. See Respondents Reply to 

Petitions for Review at 27 (citing RFF 4230-4233); but see CRRFF 4230A-E. 

The doctrine of claim differentiation lends further support. Claim 22, which depends from 

claim 20, specifically recites "reading the first and second plurality of pages in an order that is 

reverse to an order in which they were programmed." That is, dependent claim 22 is drawn to the 

reverse-read method. As the Federal Circuit has explained, the presence of a specific limitation in 

a dependent claim raises a presumption that the limitation is not present in the independent claim. 

Phillips, 415 F.3d at 1315. We therefore find that the ALl should not have limited the scope of 

claim 20 to the reverse-read method. 

Finally, we find unpersuasive Respondents' contention that SanDisk did not raise the 

argument that the ALl's claim construction fails to cover the table method until its petition for 

review. See Respondents' Submission in Response to the Commission's Notice of Review at 23. 

In discussing SanDisk's arguments, the ALl stated that "SanDisk also counters Phison's attempt 

to limit claim 24 to a system that reads the logical page addresses stored in the superseded pages 

of an original block as an attempt to improperly limit the scope of the claim to a 'reverse read. ", 

17 
PUBLIC VERSION 

ID at 78. The ALl noted that "SanDisk argues that claims 20, 24 and 30 are not limited to the 

"reverse read" technique, based on the doctrine of claim differentiation." Id. In other words, the 

ALl clearly considered this argument prior to issuing his ID. Because the ALl's claim 

construction impermissibly excludes the table method as described in Figure 12 of the '424 patent 

from the scope of the claim, we reverse the ALl's claim construction. 

IV. INFRINGEMENT ANALYSIS 

A. Legal Standard 

1. Direct Infringement 

After construing the claims of the patent, a factual determination must be made as to 

whether the properly construed claims read on the accused devices. Markman, 52 F.3d at 976. 

Direct infringement of a method claim requires a party to perform each and every step of a 

claimed method. Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. Cir. 1993). In a section 337 

investigation, the complainant bears the burden of proving infringement of the asserted patent 

claims by a "preponderance ofthe evidence." Enercon GmbH v. Int'l Trade Comm 'n, 151 F .3d 

1376 (Fed. Cir. 1998). 

2. Indirect Infringement 

Accused infringers may be liable for indirect infringement if they induce or contribute to 

infringement. "Indirect infringement, whether inducement to infringe or contributory 

infringement, can only arise in the presence of direct infringement." Dynacore Holdings Corp. v. 

us. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004). 

18 
PUBLIC VERSION 

Section 271 (b) of the Patent Act states that "[ w ]hoever actively induces infringement of a 

patent shall be liable as an infringer," and the Federal Circuit has explained that 

[t]o establish liability under section 271 (b), a patent holder must 

prove that once the defendants knew of the patent, they "actively 

and knowingly aid [ed] and abett[ed] another's direct infringement." 

However, "knowledge ofthe acts alleged to constitute 

infringement" is not enough. The "mere knowledge of possible 

infringement by others does not amount to inducement; specific 

intent and action to induce infringement must be proven." 

DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1305 (Fed. Cir. 2006) (en banc) (citations omitted). 

Under 35 U.S.C. § 271(c), a seller of a component of an infringing product can be held 

liable for contributory infringement if: (1) there has been an act of direct infringement by a third 

party; (2) the accused contributory infringer knows that the combination for which its component 

was made was both patented and infringing; and (3) there are no substantial non-infringing uses 

for the component part, i. e., the component is not a "staple article" of commerce. Cross Med. 

Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1312 (Fed. Cir. 2005); Certain 

Flash Memory Circuits and Products Containing Same, Inv. No. 337-TA-382, Commission 

Opinion at 9-10 (July 1997). 

B. Infringement Analysis of Asserted Independent Claim 17 

After construing the claim term "updating pages of original data within any of the 

metablock component blocks less than all the pages within the block" to mean "updating fewer 

than all the pages of a block within the metablock," the ALl found that the accused Phison 

controllers did not infringe claim 17 exclusively because [ 

] ID at 47 (stating that "[t]here is no 

19 
PUBLIC VERSION 

disagreement among the parties that if the claim is interpreted in this manner [ 

] that Phison's controllers do not infringe."). As we discussed supra at III.B.I., the 

ALl erred in his application of his construction of the claim term. The plain meaning of the claim 

term, in conjunction with the specification and case law, establishes that the claim covers singlepage updates. 

We find that the accused Phison controllers can be used to infringe method claim 17.6 

Experts for both SanDisk and Respondents testified that [ 

] Subramanian, Tr. 1208:18-1209:5 [ 

] Rhyne, Tr. 416:2-417:2 [ 

] 

SanDisk, however, does not argue that the accused Phison controllers directly infringe 

claim 17. Complainant SanDisk Corporation's Written Submission On The Issues Under Review 

at 6. Instead, SanDisk accuses Phison of indirectly infringing claim 17 because, allegedly, 

"Phison intends for its products to be used in a manner that includes single-page updates" and that 

"there is no substantial non-infringing use for those parts." Id. We disagree with SanDisk and 

affirm the ALl's determination that SanDisk failed to prove by a preponderance of the evidence 

6 Because we affirm the ALJ's finding of non-infringement on other grounds, we 

terminate the investigation without considering Respondents' [ ] (see, e.g., 

Respondents Reply to SanDisk and Staffs Petition for Review at 14). See Beloit Corp. v. Valmet 

Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (acknowledging that "[t]he Commission ... is at 

perfect liberty to reach a "no violation" determination on a single dispositive issue."). 

20 
PUBLIC VERSION 

that the accused Phison controllers either contribute to or induce infringement of claim 17 of the 

'424 patent. 

SanDisk asserted in its petition for review that upon finding that the accused products did 

not directly infringe the' 424 patent, the ALl "dismissed summarily the allegations of indirect 

infringement" and by so doing committed "fundamental errors of law and fact with respect to both 

contributory infringement and inducement to infringe." SanDisk Petition for Review at 56, 63. 

We find SanDisk's assertion unpersuasive. Rather, even after concluding that the accused 

products did not directly infringe, the ALl considered the other factors necessary to prove indirect 

infringement and found that SanDisk had failed to present enough evidence to sustain its 

allegations. See ID at 90-95. 

With respect to contributory infringement, the record evidence supports the ALl's finding 

that the accused Phison controllers do not contribute to infringement ofthe '424 patent. In 

particular, the undisputed evidence of record shows that the ALl did not err in finding that the 

accused products have substantial non-infringing uses. ID at 94. Indeed, experts for both 

SanDisk and Respondents acknowledged the existence of substantial non-infringing uses. 

Subramanian, Tr. 1206: 18-1207:6 (testifying that "there are some usages of flash systems where 

we don't rewrite to them, for example, for handing out books on flash .... And it turns out that's 

getting more common because there are many examples today of flash being used as a 

distribution-only medium.); Rhyne, Tr. 427:14-22 (stating that the only non-infringing use of the 

accused products "would be if you used them as essentially a memory that once you had stored 

21 
PUBLIC VERSION 

data in it, you never did an update .... ")? We find no error in the ALl's conclusion that the 

record evidence established the presence of substantial non-infringing uses, and hence we affirm 

his determination that SanDisk failed to establish, by a preponderance of the evidence, 

contributory infringement. 

Concerning inducement to infringe, the ALl correctly found that "SanDisk failed to 

establish that Respondents knowingly induced infringement or possessed specific intent to 

encourage another's infringement, and thus the evidence falls short of the necessary intent 

required for induced infringement." ID at 92-93. "'Inducement requires evidence of culpable 

conduct, directed to encouraging another's infringement, not merely that the inducer had 

knowledge of the direct infringer's activities.'" DSU, 471 F.3d at 1306. We find that the ALl 

correctly found SanDisk' s circumstantial evidence of inducement insufficient. ID at 92-93. The 

circumstantial evidence presented by SanDisk was the fact that Respondents [ 

] Id. The Federal 

Circuit found such evidence to be insufficient in Kyocera Wireless Corp. v. International Trade 

Commission, 545 F.3d 1340,1353 (Fed. Cir. Oct. 14,2008). There, the Federal Circuit stated that 

the lTC's conclusion that "Qualcomm [the accused infringer] 

intends to induce infringement because it provides its customers 

with the system determination code" evinces, at most, a finding that 

Qualcomm generally intended to cause acts that produced 

infringement. Thus, the current record falls short of the necessary 

7 Dr. Rhyne's testimony specifically concerns asserted claims 24 and 30 of the '424 

patent. The testimony, however, is also relevant to asserted claim 17 of the' 424 patent 

22 
PUBLIC VERSION 

intent showing for inducement - that Qualcomm possessed a 

specific intent to cause infringement of Broadcom's patent. 

545 F.3d at 1354. We note that the evidence SanDisk relies on in this investigation is no more 

probative of inducement than the evidence that was found insufficient in Kyocera. As in Kyocera, 

SanDisk failed to show that Respondents possessed a specific intent to cause infringement of the 

'424 patent. Accordingly, we affirm the ALJ's determination that SanDisk failed to prove indirect 

infringement. 

C. Infringement Analysis of Asserted Dependent Claims 24 and 30 

As discussed above, we have construed the claim term "reading and assembling" to 

include the so-called "table method." However, we affirm the ALJ's construction and application 

of the other terms in the claim. See generally Order No. 33 at 61-65. Consequently, the only 

accused product that would be implicated by our decision to modify the ALJ's construction of 

"reading and assembling" to cover the table method is [ ] because the 

ALJ's construction of the claim term provided the only basis for his finding of no direct 

infringement with respect to that controller. See ID at 49-50,56-57,69-73, 80. See also 

Complainant SanDisk Corporation's Written Submission On The Issues Under Review at 9-10. 

Specifically, the ALl found that [ 

] ID at 80. We note that the ALl properly 

found that the other accused controllers did not infringe due in part to his construction of other 

terms in the asserted claims and his finding that the other accused products did not practice those 

other claim terms. See ID at 57-60, 67-73, 80-85. 

23 
PUBLIC VERSION 

Although we construe the claim term "reading and assembling" to encompass the table 

method, SanDisk must still prove that [ ] infringes the claim term when 

construed to cover the table method.8 SanDisk has failed to do so. SanDisk argues that "under 

the table method, the controller does not read logical page address information from the pages at 

all. Rather, it relies on the logical page address information in the table during the reading and 

assembling step." SanDisk's Petition for Review at 48 (emphasis omitted). Nothing in the record 

evidence, however, [ 

] Indeed 

SanDisk's own theory of infringement [ ] involves [ 

SanDisk's Initial Post-Hearing Brief 

at 88. SanDisk argues that [ 

] (CFF 

32.14)" and that [ 

] (CFF 32.15)." Id; see also, 

Respondents' Submission In Response To The Commission's Notice Of Review. That is, 

SanDisk's theory of infringement requires [ 

] which SanDisk has admitted does not occur under the table method. Thus, SanDisk has 

failed to prove that the [ ] practices the claim. 

8 The ALJ did not consider whether the accused products practiced the table method 

because of his finding that the table method was outside the scope ofthe claim term. 

24 
PUBLIC VERSION 

In addition, we affirm the ALJ's finding of no infringement because SanDisk failed to 

prove that the accused products, including the Phison CF/SSD controller, indirectly infringe 

claims 24 and 30 of the '424 patent. ID at 90-94. The ALJ correctly noted that the 

asserted claims [of the '424 patent] are all "method of use" claims 

where the accused flash memory system and controllers themselves 

do not infringe. Because the accused systems must be operated in a 

particular manner in order to infringe these claims, liability as to the 

Respondents can only be based on induced or contributory 

infringement. 

ID at 95. Our discussion of no indirect infringement, supra at IV.B.2, applies here as well. 

V. Sinclair PCT Publication 

During the investigation, Respondents argued that U.S. Patent No. 6,725,321 ("the '321 

patent") to Alan Welsh Sinclair et al. and its corresponding Patent Cooperation Treaty ("PCT") 

publication, WO 00/49488 ("the Sinclair PCT pUblication") invalidated claim 17 of the' 424 

patent. See ID at 106. The Sinclair '321 patent, which issued on April 20, 2004, has an effective 

filing date under 35 U.S.C. § 102(e)9 of March 5, 2001. Id. at 108. This date is after the January 

19,2001, filing date of the '424 patent and therefore the ALJ correctly found that the '321 patent 

does not qualifY as prior art to the '424 patent. Id. The '321 patent, however, includes a reference 

to the Sinclair PCT publication on its cover page. The Sinclair PCT publication was published on 

935 U.S.C. § 102(e) states that a person shall not be entitled to a patent unless the 

invention was described in (1) an application for patent published under section 122(b), by 

another filed in the United States before the invention by the applicant for patent or (2) a patent 

granted on an application for patent by another filed in the United States before the invention by 

the applicant for patent, except that an international application filed under the treaty defined in 

section 351(a) shall have the effects for the purposes of this subsection of an application filed in 

the United States only if the international application designated the United States and was 

published under Article 21 (2) of such treaty in the English language. 

25 
PUBLIC VERSION 

August 4, 2000, and therefore is prior art to the' 424 patent under § 102(a).lo ID at 108. Although 

respondents listed the '321 patent on their notices of prior art, they failed to list the Sinclair peT 

publication, and none of the other parties listed the Sinclair peT publication. Id. The ALJ ruled 

that because the Sinclair peT publication was not listed in any notice of prior art, pursuant to 

Ground Rule 5,11 it was excluded from the investigation. Id. See also Pre-Hearing Tr. 26:6-8. 

The ALJ acknowledged that "[h ]ad one of the parties listed the Sinclair peT application on the 

notice of prior art, there would be no dispute that the Sinclair peT application would be 

considered prior art to the' 424 patent." Id. 

In our notice of review we stated that we would review the ALl's decision not to consider 

the Sinclair PCT publication as evidence of prior art to claim 17 of the '424 patent and asked the 

parties to submit written responses to several questions. 74 Fed. Reg. 44382 (Aug. 28, 2009). 

Generally, an ALJ has discretion to establish and enforce ground rules for the proper 

administration of an investigation. See Administrative Procedure Act, 5 U.S.C. § 556(c). We 

acknowledge that the publication was not submitted in accordance with Judge Bullock's ground 

rules in that Respondents failed to list it in their notices of prior art, and we find no abuse of 

discretion in his ruling to exclude it from the investigation. However, because we find no 

10 35 U.S.C. § 1D2(a) states that "a person shall be entitled to a patent unless ... the 

invention was known or used by others in this country, or patented or described in a printed 

publication in this or a foreign country, before the invention thereof by the applicant for patent." 

11 Ground Rule No.5 states that the parties "must file on or before the date set in the 

procedural schedule, notices of any prior art consisting of the following information: country, 

number, date, and name of the patentee of any patent; the title, date and page numbers of any 

publication to be relied upon as anticipation of the patent in suit; or as showing the state of the art 

... " Order No.2 at 9. The ground rule adds that "in the absence of such notice, proof of the 

said matters may not be introduced into evidence at the trial except upon a timely written motion 

showing good cause." Id. at 10. 

26 
PUBLIC VERSION 

infringement ofthe '424 patent, we decline to reach the issue of invalidity. See Beloit Corp. v. 

Valmet Oy, 742 Fold 1421, 1423 (Fed. Cir. 1984) (acknowledging that "[t]he Commission ... is 

at perfect liberty to reach a "no violation" determination on a single dispositive issue."). 

VI. CONCLUSION 

F or the reasons discussed herein, the Commission affirms the ID' s determination of no 

violation of section 337. Specifically, we affirm the ID's finding that Complainant has failed to 

prove that Respondents indirectly infringe asserted claims 17,24 and 30 of the '424 patent. The 

Commission affirms the ID's construction of the claim term "updating pages of original data 

within any of the metablock component blocks less than all the pages within the block" in claim 

17 of the' 424 patent to mean "updating fewer than all the pages of a block within the metablock," 

but reverses the ID's application of the claim construction to exclude single-page updates. The 

Commission also finds that the ID impermissibly limited the "reading and assembling" claim term 

of independent claim 20, from which asserted claims 24 and 30 depend, to the so-called "reverseread method." The ID should have construed the claim term to cover the so-called table method 

as well. Finally, because we find no section 337 violation due to SanDisk's failure to prove that 

Respondents indirectly infringe the asserted claims of the' 424 patent, we do not reach the issue of 

whether the ALl should have considered the Sinclair PCT publication as evidence of prior art to 

claim 17 of the '424 patent. 

By order of the Commission. 

. Bishop 

Acting Secretary to the Commiss on 

Issued: November 24, 2009 

27 
CERTAIN FLASH MEMORY CONTROLLERS, DRIVES, 337-TA-619 

MEMORY CARDS, AND MEDIA PLAYERS AND PRODUCTS 

CONTAINING SAME 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached COMMISSION OPINION has 

been served by hand upon the Commission Investigative Attorney, Christopher G. 

Paulraj, Esq., and the following parties as indicated, on 

November 24, 2009 

On Behalf of Complainant San disk Corporation: 

Gregory A. Castanias, Esq. 

JONES DAY 

51 Louisiana Avenue, NW 

Washington, DC 20001-2113 

On Behalf of Respondents Phis on Electronics 

Corporation; Kingston Technology Company, 

Incorporated; Kingston Technology Corporation; and, 

Memo Sun Incorporated: 

Jeffrey R. Whieldon, Esq. 

FISH & RICHARDSON PC 

1425 K Street, NW - Suite 1100 

Washington, DC 20005 

( ) Via Hand Delivery 

(() Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

~ Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 
Certificate of Service - Page 2 

On Behalf of Respondents, Skymedi Corporation: 

Robert R. McKelvie, Esq. 

Covington & Burling Lip 

1201 Pennsylvania Avenue, Nw 

Washington, Dc 20004-2401 

On Behalf Of Respondents Apacer Technology, 

Incorporated and Apacer Memory America, 

Incorporated: 

Daniel J. Lueders, Esq. 

WOODARD, EMHARDT, MORIARTY, MCNETT & 

HENRYLLP 

111 Monument Circle, Suite 2700 

Indianapolis, IN 46204-5137 

On Behalf of Respondents LG Electronics, Incorporated 

and LG Electronics USA, Incorporated: 

Brian Koo, Esq. 

SIDLEY AUSTIN LLP 

1501 K Street, NW 

Washington, DC 20005 

On Behalf of Respondents Dane Elec Corporation USA, 

Dane-Memory, S.A., and Deantusaiocht Dane-Elec 

TEO: 

Charles C.H. Wu, Esq. 

WU & CHEUNG LLP 

98 Discovery 

Irvine, CA 92618-3105 

Heather Hall 

LEXIS-NEXIS 

9443 Springboro Pike 

Dayton, OH 45342 

Kenneth Clair 

THOMAS WEST 

1100 Thirteen Street NW -Suite 200 

Washington, DC 20005 

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PUBLIC VER!;ION 

U1>TfEII STATES NTF.II NATlO~AL TRAP E CO~ I>I SS "I 

CEllI ~ FLASII MEMOII\' CONTROLLERS. 

DRIVES. M £.'II ORV CA IillS ANP IJ': ])I A 

PLA VEItS. ~D ~RO Un"S COl'.-r AIN ING SAME 

luv. No. JJ1_T A-6U 

INITI Al. I) F.R~II NA TI ON ON VIOLATIO;"- OF SECflON JJ1 ANI) 

RF.CO~I~II NllF. 1I PI:TEII.MINATlO,"1 ON IIf"" ,mV ANll RON II 

(April 10. 20(9) 

St.v<n E. Aollins. Eoq. ono:l Ric MacclIioroIL 1'.>0.. of Jones Pay ofWoshinp.n. D.C. 

](yon B. McCnmt. Eoq. """ John C_ Evans, ~oq . of Jone. IJo.y ofCLe",bOO, Ohio 

J ...... C. Y<><>o, F.fQ_. Ry.., R. Smith. Eoq.,ono:l L;"" K. N~ Eoq. "fW,l-. SomU:>i. Goodoi<h 

ol _i of I'aIo AM. CoJifomi. 

Michocl Chibi" Eoq •• Dovi<l M. Hoffman. Eoq., .... Ki<hoJd II. Monin. Eoq. ofF"" &; Richmbon 

P.C.ofAO>tin. Texos 

S. j. CIwi$tiro< Yoni, &q. ofFOIol\ODI VaHe)l. Colif<>nja 
For the Respondents Imation Corporation and Memorex Products, Incorporated: 

Louis S. Mastriani, Esq. and Ian A. Taronji, Esq. of Adduci, Mastriani & Schaumberg LLP of 

Washington, D.C. 

Richard M. Martinez, Esq. and Matthew Yang, Esq. of Robins, Kaplan, Miller & Ciresi LLP of 

Minneapolis, Minnesota 

For the Respondents A-Data Technology Co., A-Data Technology (USA) Co., Ltd, Skymedi 

Corporation, AF A Technologies, Inc., InfOtech Logistic LLC, Power Quotient International Co. , 

Ltd, Power Quotient International (HK) Co., Ltd, PQI Corporation, Chipsbrand Microelectronics, 

Co., Ltd, Svscom Development Co., Ltd, Zhubai Chipsbank Microelectronics, Co., Ltd, and 

Chipsbrand Technologies (HK), Co., Ltd, and Corsair Memorv, Inc.: 

Maureen F. Browne, Esq., Alexander D. Chinoy, Esq. and Johnny Chiu, Esq. of Covington & 

Burling LLP of Washington, D.C. 

Jo Dale Carothers, Ph.D., Esq. of Covington & Burling LLP of San Diego, California 

For Respondents Apacer Technology, Inc., Apacer Memory America, Inc., Transcend InfOrmation, 

Inc. O'aiwan), Transcend Information, Inc. (CalifOrnia), Transcend InfOrmation (Maryland), Inc. , 

Silicon Motion Technology Corporation, Silicon Motion, Inc., and Silicon Motion International, 

Inc .. ' 

Michael Bettinger, Esq. ofK&L Gates of San Francisco, California 

Christopher Schenck, Esq. ofK&L Gates of Seattle, Washington 

For Respondents LG Electronics, Inc. and LG Electronics US.A., Inc. 

Peter Kang, Esq.; and Theodore Chandler, Esq. of Sidley Austin LLP of San Francisco, California 

Brian Koo, Esq., of Sidley Austin LLP of Washington, D.C. 

For the Commission Investigative Staff. 

Lynn 1. Levine, Esq., Director; Thomas S. Fusco, Esq., Supervising Attorney; Christopher G. Paulraj, 

Esq., Investigative Attorney; ofthe Office of Unfair Import Investigations, U.S. International Trade 

Commission, of Washington, D.C. 
TABLE OF CONTENTS 

LIST OF ABBREVIATIONS .................................................. Vlll 

DISCUSSION ................................................................ 2 

I. Introduction ............................................................ 2 

A. Procedural History ................................................. 2 

B. The Parties ...................................................... 14 

1. Complainant ............................................... 14 

2. Respondents ............................................... 14 

a. Controller-Level Respondents ........................... 14 

(1) Phison ........................................ 14 

(2) Silicon Motion ................................. 14 

(3) Skymedi ...................................... 15 

b. System-Level Respondents ............................. 15 

(1) PQI .......................................... 15 

(2) Kingston ...................................... 16 

(3) Transcend ..................................... 16 

(4) Imation ....................................... 16 

(5) Apacer ....................................... 17 

(6) Dane-Elec ..................................... 17 

(7) LO .......................................... 17 

C. Overview of the Technology ........................................ 18 

D. The Patents at Issue ............................................... 19 

1. The '424 Patent ............................................ 19 

2. The '011 Patent ............................................ 19 

E. The Products at Issue .............................................. 19 

II. Jurisdiction and Importation .............................................. 22 

A. Subject Matter Jurisdictioniin Rem Jurisdiction ......................... 22 

B. Personal Jurisdiction .............................................. 22 

III. Relevant Law .......................................................... 23 

A. Infringement ..................................................... 23 

1. Literal Infringement ......................................... 23 

2. Doctrine of Equivalents ...................................... 23 

3. Indirect Infringement ........................................ 24 

a. Induced Infringement .................................. 24 

b. Contributory Infringement .............................. 24 

B. Domestic Industry ................................................ 25 

C. Validity ......................................................... 27 

1. Anticipation, 35 U.S.C. § 102 ................................. 28 

2. Obviousness, 35 U.S.C. § 103 ................................ 30 

III 
3. Indefiniteness, 35 U.S.C. § 112, ~ 2 ............................. 33· 

D. Other Affirmative Defenses ........................................ 34 

1. Patent Misuse .............................................. 34 

2. Patent Exhaustion .......................................... 35 

3. Licensing ................................................. 37 

4. Prosecution Laches ......................................... 37 

IV. The '424 Patent ........................................................ 37 

A. Overview ....................................................... 37 

B. Infringement ..................................................... 40 

1. Claim 17 .................................................. 40 

a. Preamble: "A method of operating a non-volatile memory 

system having an array of memory storage elements organized 

into at least two sub-arrays, wherein the individual sub-arrays 

are divided into a plurality of non-overlapping blocks of 

storage elements wherein a block contains the smallest group 

of memory storage elements that are erasable together, and 

the individual blocks are divided into a plurality of pages of 

storage elements wherein a page is the smallest group of 

memory storage elements that are programmable together, 

comprising" ......................................... 41 

b. Step (a): " linking at least one block from individual ones of 

said at least two sub-arrays to form a metablock wherein its 

component blocks are erased together as a unit" ............. 42 

c. Step (b): "and updating pages of original data within any of 

the metablock component blocks less than all the pages 

within the block by programming replacement data into pages 

within another at least one block in only a designated one of 

the sub-arrays regardless of which sub-array the data being 

updated is stored." .................................... 42 

d. Claim 17 Conclusion .................................. 47 

2. Claim 20 .................................................. 47 

a. . Preamble: "In a re-programmable non-volatile memory 

system having a plurality of blocks of memory storage 

elements that are erasable together as a unit, the plurality of 

blocks individually being divided into a plurality of a given 

number of pages of memory storage elements that are 

programmable together, a method of operating the memory 

system, comprising" ................................... 47 

(1) Phison ........................................ 47 

(2) SMI ......................................... 48 

(3) Skymedi ...................................... 49 

(4) Conclusion as to the Preamble ..................... 49 

IV 
b. Step (a): "programming individual ones of a first plurality of 

said given number of pages in each of at least a first block 

with original data and a logical page address associated with 

the original data" ..................................... 49 

(1) Phison ........................................ 49 

(a) Literal Infringement ....................... 49 

(b) Infringement under the Doctrine of Equivalents .50 

(2) SMI - Infringement under the Doctrine of Equivalents .. 57 

(3) Skymedi ...................................... 61 

(a) Literal Infringement ....................... 61 

(b) Infringement Under the Doctrine of Equivalents .63 

(4) Conclusion as to Step (a) ......................... 67 

c. Step (b): "thereafter programming individual ones of a second 

plurality of a total number of pages less than said given 

number 'in a second block with updated data and a logical 

page address associated with the updated data, wherein the 

logical page addresses associated with the updated data 

programmed into the second plurality of pages are the same 

as those associated with the original data programmed into the 

first plurality of pages, and" ............................. 67 

(1 ) Phis on ........................................ 68 

(2) SMI ......................................... 70 

(3) Skymedi ...................................... 71 

(4) Conclusion as to Step (b) ......................... 73 

d. Step (c): "thereafter reading and assembling data from the 

first and second plurality of pages including, for pages having 

the same logical addresses, selecting the updated data from 

the pages most recently programmed and omitting use of the 

original data from the pages earlier programmed" ............ 73 

(1) Phison ........................................ 77 

(2) SMI ......................................... 80 

(3) Skymedi ...................................... 83 

(4) Conclusion as to Step (c) ......................... 85 

e. Conclusion as to Claim 20 .............................. 85 

3. Claim 24 .................................................. 86 

4. Claim 30 .................................................. 88 

5. Indirect Infringement ........................................ 89 

a. Inducement .......................................... 90 

b. Contributory ......................................... 93 

6. Conclusion as to Infringement ................................ 94 

C. Domestic Industry - Technical Prong .................................. 95 

1. Claim 17 .................................................. 95 

a. Preamble ........................................... 96 

b. Step (a) ............................................. 96 

v 
c. Step (b) ............................................. 97 

d. Conclusion as to Claim 17 .............................. 99 

2. Claim 20 ................................................. 100 

a. Preamble .......................................... 100 

b. Step (a) ............................................ 100 

c. Step (b) ............................................ 102 

d. Step (c) ............................................ 102 

e. Conclusion as to Claim 20 ............................. 103 

3. Claim 24 ................................................. 104 

4. Claim 30 ................................................. 105 

5. Conclusion as to Technical Prong ............................. 105 

D. Validity ........................................................ 106 

1. Ordinary Skill in the Art .................................... 106 

2. Claim 17 ................................................. 106 

a. Anticipation - The Sinclair '321 Patent & the Sinclair PCT 

Application ......................................... 106 

b. Single Reference Obviousness - The Sinclair '321 Patent & 

the Sinclair PCT Application ........................... 109 

3. Claims 24 and 30 .......................................... 109 

a. Anticipation ........................................ 110 

(1) The Miyauchi '783 Patent ....................... 110 

(2) The Itoh '563 Patent ............................ 114 

b. Obviousness ........................................ 115 

c. Secondary Considerations ............................. 116 

V. The '011 Patent ....................................................... 116 

A. Overview ...................................................... 116 

B. Infringement of Claim 8 ........................................... 117 

1. In General ................................................ 117 

2. Direct Infringement ........................................ 118 

a. Claim Element [a]: "A non-volatile memory card, 

comprising" ........................................ 118 

b. Claim Element [b]: "a Flash EEPROM array" ............. 118 

c. Claim Element [c]: "encoded user data stored in a first portion 

of the array, ... wherein the stored encoded data includes 

encrypted user data" . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119 

(1) Is there encoded user data present in the accused 

Imation memory cards as imported or sold? ......... 119 

(2) Does Imation induce its customers to store encoded 

user data in a first portion of the array ... wherein the 

stored encoded user data includes encrypted user 

data? ........................................ 120 

C. Domestic Industry - Technical Prong ................................ 126 

D. Validity ........................................................ 127 

VI 
1. Ordinary Skill in the Art .................................... 127 

2. Obviousness .............................................. 127 

a. Maniscalco in Combination with Izawa and Knowledge of a 

Person of Ordinary Skill in the Art ...................... 127 

b. Secondary Considerations ............................. 132 

(1) Long-felt Need ................................ 132 

(2) Unexpected Results ............................ 133 

(3) Commercial Success and Industry-Wide Recognition .. 134 

c. Conclusion ......................................... 135 

3. Indefiniteness ............................................. 135 

4. Prosecution Laches ........................................ 137 

VI. Patent Misuse ......................................................... 139 

A. Tying Arrangement .............................................. 139 

1. Per Se ................................................... 139 

2. Rule of Reason ............................................ 146 

B. Double Royalties ................................................ 149 

VII. Patent Exhaustion ..................................................... 154 

A. Positions of the Parties ............................................ 154 

B. Discussion and Conclusion ........................................ 158 

VIII. Domestic Industry - Economic Prong ...................................... 161 

CONCLUSIONS OF LAW .................................................... 162 

INITIAL DETERMINATION .................................................. 163 

RECOMMENDED DETERMINA nON ON REMEDY AND BOND .................. 164 

IX. Remedy and Bonding ................................................... 164 

A. Limited Exclusion Order .......................................... 164 

B. Cease and Desist Order ........................................... 165 

C. Bond During Presidential Review Period ............................. 166 

APPENDIX OF EXHIBIT LISTS ............................................... Al 

vii 
LIST OF ABBREVIATIONS 

CDX Complainant's demonstrative exhibit 

CFF Complainant's proposed findings of fact 

CIB Complainant's initial post-hearing brief 

CORFF Complainant's objections to Respondents' proposed findings of fact 

COSFF Complainant's objections to Staff's proposed findings of fact 

CPX Complainant's physical exhibit 

CRB Complainant's reply post-hearing brief 

CX Complainant's exhibit 

Dep Deposition 

liB Imation's initial post-hearing brief 

IRB Imation's reply post-hearing brief 

JX Joint Exhibit 

RDX Respondents' demonstrative exhibit 

RFF Respondents' proposed findings of fact 

RIB Respondents' initial post-hearing brief 

ROCFF Respondents' objections to Complainant's proposed findings offact 

ROSFF Respondents' objections to Staff's proposed findings of fact 

RPX Respondents' physical exhibit 

RRB Respondents' reply post-hearing brief 

RX Respondents' exhibit 

SFF Staff's proposed findings of fact 

SIB Staff's initial post-hearing brief 

SOCFF Staff's objections to Complainant's proposed findings of fact 

SORFF Staff's objections to Respondents' proposed findings of fact 

SRB Staff's reply post-hearing brief 

Tr. Transcript 

Vlll 
PUBLIC VERSION 

UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 

In the Matter of 

CERTAIN FLASH MEMORY CONTROLLERS, 

DRIVES, MEMORY CARDS AND MEDIA 

PLAYERS, AND PRODUCTS CONTAINING SAME 

Inv. No. 337-TA-619 

INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND 

RECOMMENDED DETERMINATION ON REMEDY AND BOND 

Administrative Law Judge Charles E. Bullock 

(April 10, 2009) 

Pursuant to the Notice of Investigation and Rule 210.42(a) of the Rules of Practice and 

Procedure of the United States International Trade Commission, this is the Administrative Law 

Judge's Initial Determination in the matter of certain flash memory controllers, drives, memory cards 

and media players, and products containing same, Investigation No. 337-TA-619. 

The Administrative Law Judge hereby determines that a violation of Section 337 of the Tariff 

Act of 1930, as amended, has not been found in the importation into the United States, the sale for 

importation, or the sale within the United States after importation of certain flash memory 

controllers, drives, memory cards, and media players and products containing same, in connection 

with claims 17,24, and 30 of U.S. Patent No. 6,763,424 and claim 8 of U.S. Patent No. 7,137,011. 

Furthermore, the Administrative Law Judge hereby determines that a domestic industry in the United 

States exists that practices U.S. Patent Nos. 6,763,424 and 7,137,011. 
DISCUSSION 

I. Introduction 

A. Procedural History 

This investigation was instituted by the Commission on December 6, 2007 and the notice of 

investigation was published in the Federal Register on December 12,2007. 1 The Administrative 

Law Judge set a fifteen-month target date of March 12, 2009 for completion of this investigation by 

the Commission in Order No. 2.2 

On January 4,2008 certain Respondents filed a motion for a modification of the target date 

from fifteen months to eighteen months based on a request for a Markman hearing. The undersigned 

determined that a Markman hearing would be beneficial to this investigation and the motion was 

granted by initial determination in Order No.6, extending the target date to eighteen months or June 

12, 2009.3 The Commission issued a notice of determination not to review this initial determination 

on February 8, 2008. 

On February 1,2008, the undersigned issued the procedural schedule in this investigation.4 

This procedural scheduled was modified on July 15,20085 and September 22,2008.6 

On January 7, 2008, SanDisk and Respondent Kaser Corporation, filed a joint motion to 

terminate the investigation as to Kaser based upon a settlement agreement and consent order. On 

February 13,2008, the undersigned issued an initial determination granting the joint motion and 

1 See 72 Fed. Reg. 70,610. 

2 See Order No.2 (December 13,2007). 

3 See Order No.6 (January 23, 2008). 

4 See Order No.8 (February 1,2008). 

5 See Order No. 34 (July 15,2008). 

6 See Order No. 41 (September 22, 2008). 

2 
terminated Kaser from the investigation.? On March 5, 2008, the Commission issued a notice of 

determination not to review this initial determination. 

On January 10,2008, SanDisk and Respondent PNY Technologies, Inc. filed ajoint motion 

to terminate the investigation as to PNY based upon a settlement agreement and consent order. On 

February 13,2008, the undersigned issued an initial determination granting the joint motion and 

terminated PNY from the investigation.s On March 5, 2008, the Commission issued a notice of 

determination not to review this initial determination. 

On January 7, 2008, SanDisk and Respondent TSR Silicon Resources Inc. filed a joint 

motion to terminate the investigation as to TSR based upon a settlement agreement and consent 

order. On February 13, 2008, the undersigned issued an initial determination granting the joint 

motion and terminated TSR from the investigation.9 On March 5, 2008, the Commission issued a 

notice of determination not to review this initial determination. 

On January 22, 2008, SanDisk and Respondent Infotech Logistic, LLC filed ajoint motion 

to terminate the investigation as to Infotech based upon a settlement agreement. On February 13, 

2008, the undersigned issued an initial determination granting the joint motion and terminated 

Infotech from the investigation.1O On March 7, 2008, the Commission issued a notice of 

determination not to review this initial determination. 

On January 22,2008, SanDisk and Respondent Interactive Media Corporation filed ajoint 

motion to terminate the investigation as to Interactive based upon a settlement agreement. On 

7 See Order No.9 (February 13,2008). 

8 See Order No. 10 (February 13,2008). 

9 See Order No. 11 (February 13,2008). 

10 See Order No. 12 (February 13,2008). 

3 
February 13, 2008, the undersigned issued an initial determination granting the joint motion and 

terminated Interactive from the investigation. lIOn March 7, 2008, the Commission issued a notice 

of determination not to review this initial determination. 

On January 22,2008, SanDisk and Respondent Edge Tech Corporation filed ajoint motion 

to terminate the investigation as to Edge Tech based upon a settlement agreement. On February 13, 

2008, the undersigned issued an initial determination granting the joint motion and terminated Edge 

Tech from the investigation. 12 On March 7, 2008, the Commission issued a notice of determination 

not to review this initial determination. 

On January 30, 2008, SanDisk and Respondents Add-On Computer Peripherals, Inc. and 

Add-On Computer Peripherals, LLC filed a j oint motion to terminate the investigation as to Add-On 

based upon a settlement agreement. On February 13, 2008, the undersigned issued an initial 

determination granting the joint motion and terminated Add-On from the investigation. 13 On March 

7, 2008, the Commission issued a notice of determination not to review this initial determination. 

On February 4,2008, SanDisk and Respondent Welldone Company filed a joint motion to 

terminate the investigation as to Welldone based upon a settlement agreement. On February 19, 

2008, the undersigned issued an initial determination granting the joint motion and terminated 

Welldone from the investigation. 14 On March 7, 2008, the Commission issued a notice of 

determination not to review this initial determination. 

On February 6,2008, Respondent USBest Technology Inc. filed amotion to amend the notice 

II See Order No. 13 (February 13, 2008). 

12 See Order No. 14 (February 13,2008). 

13 See Order No. 15 (February 13,2008). 

14 See Order No. 16 (February 19,2008). 

4 
of investigation to reflect a corporate name change from USBest Technology Inc to AF A 

Technologies, Inc .. On February 27,2008, the undersigned issued an initial determination granting 

the motion. IS On March 14, 2008, the Commission issued a notice of determination not to review 

this initial determination. 

On February 5, 2008, SanDisk and Respondents Melco Holdings, Inc., Buffalo Inc., and 

Buffalo Technology (USA) Inc. filed a joint motion to terminate the investigation as to these 

respondents based upon a consent order. On February 27, 2008, the undersigned issued an initial 

determination granting the joint motion and terminated these three respondents from the 

investigation. 16 On March 25, 2008, the Commission issued a notice of determination not to review 

this initial determination. 

On February 19,2008, Respondents Imation Corporation, Imation Enterprises Corporation, 

and Memorex Products, Inc. filed a motion to stay the investigation based upon the pending Supreme 

Court decision in Quanta Computer, Inc. et al. v. LO Electronics, Inc .17 The undersigned denied this 

motion on March 12,2008. 18 

On February 15, 2008, Respondents Phison Electronics Corp., Kingston Technology Co., 

Kingston Technology Corp., MemoSun, Inc., and Payton Technology Corp. filed a motion to 

terminate this investigation as to U.S. Patent No. 5.719,808 for good cause, or alternatively, to stay 

the investigation as to this patent. On March 12, 2008, the undersigned issued an order denying the 

motion to terminate, but granting the motion to stay the investigation as to the '808 patent. In 

15 See Order No. 18 (February 27,2008). 

16 See Order No. 19 (February 27,2008). 

17 Quanta Computer, Inc. et al. v. LO Electronics, Inc., - U.S. ,128 S.Ct. 2109 (2008) 

(" Quanta"). 

18 See Order No. 21 (March 12,2008). 

5 
addition, the undersigned issued an initial determination that bifurcated the investigation and 

extended the target date as to the' 808 patent. 19 On April 11, 2008, the Commission issued a notice 

of determination to review this initial determination. On April 24, 2008, SanDisk filed a motion to 

terminate the investigation as to the '808 patent. On May 6,2008, the undersigned issued an initial 

determination granting the motion to terminate the' 808 patent from the investigation. 20 On May 30, 

2008, the Commission issued a notice of determination not to review the initial determination 

granting the motion to terminate the '808 patent, and vacated Order No. 22. 

On February 27, 2008, SanDisk filed a motion for an order to show cause and default 

judgment against Respondents Zotek Electronic Co. (d/b/a Zodata Technology Limited) ("Zotek"); 

Add-On Technology Co. ("Add-On"); Behavior Tech Computer Corp. ("BTC"); Behavior Tech 

Computer (USA) Corp. (d/b/a BTC USA); and Emprex Technologies Corp. ("Emprex"), based on 

the respondents' failure to respond to the Complaint and Notice ofInvestigation. On March 12, 

2008, the undersigned issued an order granting the motion for an order to show cause.21 Upon failure 

of these respondents to answer the show cause order, the undersigned issued an initial determination 

granting the motion for an entry of default against these five respondents.22 On May 14, 2008, the 

Commission issued a notice of determination not to review this initial determination. 

On March 6, 2008, SanDisk filed a motion to amend the notice of investigation to correct the 

names of certain respondents. Specifically, SanDisk moved to change the name of "Chipsbank 

Technology (Shenzhen) Co., Ltd." to "Chipsbank Technologies (Shenzhen) Co., Ltd."; "Chipsbank 

19 See Order No. 22 (March 12,2008). 

20 See Order No. 31 (May 6, 2008). 

21 See Order No. 24 (March 12,2008). 

22 See Order No. 28 (April 25, 2008). 

6 
Microelectronics Co., Ltd." to "Shenzhen Chipsbank Microelectronics Co., Ltd."; and "Dane-Elec 

Memory S.A. "to "Dane Memory S.A., d/b/a Dane-Elec Memory S.A." On March 12,2008, the 

undersigned issued an initial determination granting the motion.23 On March 28, 2008, the 

Commission issued a notice of determination not to review this initial determination. 

On April 10, 2008, SanDisk filed a motion to terminate Respondent Acer, Inc. from the 

investigation based upon a withdrawal of allegations from the Complaint. On April 28, 2008, the 

undersigned issued an initial determination granting the motion to terminate Acer from the 

investigation.24 On May 20,2008, the Commission issued a notice of determination not to review 

this initial determination. 

On April 10, 2008, SanDisk filed a motion to amend the Complaint to correct several 

inadvertent omissions, including: amending Confidential Exhibit 110 and Appendix L to add three 

confidential third-party license agreements, as required by 19 C.F.R. § 21O.l2(c)(1), as well as a 

fourth confidential third-party license agreement that was executed on December 5, 2007, the day 

before the investigation was instituted; and to amend Section IX to add references to three additional 

related litigations. On April 28, 2008, the undersigned issued an order granting the motion.25 

A Markman hearing was held on May 6-7,2008. On July 15,2008, the undersigned issued 

Order No.3 3: Order Construing the Terms of the Asserted Claims of the Patents at Issue. 26 As stated 

in that order, all briefing in this investigation is governed by the claim construction order and "[aJIl 

other claim terms shall be deemed as undisputed and shall be interpreted by the undersigned in 

23 See Order No. 25 (March 12,2008). 

24 See Order No. 29 (April 28, 2008). 

25 See Order No. 30 (April 28, 2008). 

26 See Order No. 33 (July 15,2008). 

7 
accordance with 'their ordinary meaning as viewed by one of ordinary skill in the art. ",27 On August 

26,2008, the undersigned issued a notice of errata regarding Order No. 33, replacing pages 61 and 

63. Order No. 33, and the errata thereto, is hereby incorporated by reference into this Initial 

Determination. 

On July 14, 2008, SanDisk filed a motion to terminate Respondent Payton Technology 

Corporation from the investigation based upon a withdrawal of allegations from the Complaint. On 

July 29, 2008, the undersigned issued an initial determination granting the motion to terminate 

Payton from the investigation.28 On August 20, 2008, the Commission issued a notice of 

determination not to review this initial determination. 

On August 7, 2008, SanDisk filed a motion for partial termination of the investigation with 

respect to U.S. Patent No. 6,947,332. On August 27, 2008, the undersigned issued an initial 

determination granting the motion and terminated the '332 patent from the investigation. See Order 

No. 37 (August 27, 2008). On September 15, 2008, the Commission issued a notice of 

determination not to review this initial determination. 

On July 31, 2008, SanDisk filed a motion for leave to amend its complaint to: (1) add 

Verbatim Americas, LLC ("Verbatim Americas") as a respondent to reflect existing Respondent 

Verbatim Corporation's corporate restructuring; (2) add Zhubai Chipsbank Microelectronics Co., 

Ltd. and Chipsbrand Technologies (HK) Co., Ltd., both of whom are wholly-owned subsidiaries of 

existing Respondent Chipsbank Technologies (Shenzhen) Co., Ltd., as respondents; (3) clarifY that 

claims 12, 14, 17 and 58 of U.S. Patent No. 6,426,893 are being asserted against existing Respondent 

27 See Order No. 33, p. 9 (July 15,2008) (emphasis in original). 

28 See Order No. 35 (July 29, 2008). 

8 
Afa Technologies, Inc.; (4) assert claim 8 of U.S. Patent No. 7,137,011 against existing Respondents 

Transcend Information, Inc. (Taiwan), Transcend Information, Inc. (California), and Transcend 

Information Maryland, Inc.; and (5) assert claims 24 and 30 of U.S. Patent No. 6,763,424 against 

existing Respondent Chipsbank Technologies (Shenzhen) Co., Ltd. and proposed respondents 

Zhubai ChipsbankMicroelectronics Co., Ltd. and Chipsbrand Technologies (HK) Co. On September 

12, 2008, the undersigned issued an initial determination granting in part and denying in part 

SanDisk's motion. Specifically, the undersigned granted SanDisk's motion to amend with respect 

to (1) and (2) above; found that the motion was moot with respect to (3) and (5) above; and denied 

the motion with respect to (4) above?9 On October 6, 2008, the Commission issued a notice of 

determination not to review this initial determination. 

On September -4, 2008, Respondent Corsair Memory, Inc. filed a motion to terminate the 

investigation as to Corsair based upon a consent order. On September 22,2008, the undersigned 

issued an initial determination granting the motion and terminated Corsair from the investigation. 30 

On October 20, 2008, the Commission issued a notice of determination not to review this initial 

determination. 

On September 4, 2008, SanDisk filed a motion for summary determination that it has 

satisfied the economic prong of the domestic industry requirement with respect to U.S. Patent Nos. 

6,426,893; 6,763,424; and 7,137,011. On October 2, 2008, the undersigned issued an initial 

determination granting the motion.31 On October 23, 2008, the Commission issued a notice of 

determination not to review this initial determination. 

29 See Order No. 40 (September 12,2008). 

30 See Order No. 42 (September 22, 2008). 

31 See Order No. 46 (October 2,2008). 

9 
On September 18, 2008, SanDisk filed a motion to terminate Respondents Silicon Motion 

Technology Corp. and Silicon Motion International, Inc.32 from the investigation based upon a 

withdrawal of allegations from the Complaint. On October 2,2008, the undersigned issued an initial 

determination granting the motion to terminate these two respondents from the investigation.33 On 

October 24, 2008, the Commission issued a notice of determination not to review this initial 

determination. 

On September 23,2008, SanDisk filed a motion to terminate certain claims of U.S. Patent 

No. 6.425,893. On October 7, 2008, the undersigned issued an initial determination granting the 

motion. 34 On October 24,2008, the Commission issued a notice of determination not to review this 

initial determination. 

On October 6, 2008, SanDiskandRespondents A-DATA Technology Co., Ltd. and A-DATA 

Technology (USA) Co., Ltd. filed a motion to terminate the investigation as to A-DATA based upon 

a consent order. On October 21, 2008, the undersigned issued an initial determination granting the 

motion and terminated A -DATA from the investigation.35 On November 12,2008, the Commission 

issued a notice of determination not to review this initial determination. 

On October 14, 2008, SanDisk filed a motion to: (1) terminate the investigation as to 

Respondent AF A Technologies, Inc. ("AF A") and Respondents Chipsbrand Microelectronics (HK) 

Co., Ltd., Chipsbank Technologies (Shenzhen) Co., Ltd., Shenzhen Chipsbank Microelectronics Co., 

Ltd., Zhuhai Chipsbank Microelectronics Co., Ltd. and Chipsbrand Technologies (HK) Co., Ltd. 

32 The motion makes clear, however, that SanDisk is not withdrawing any allegations against 

Silicon Motion, Inc. (a Taiwan corporation), and Silicon Motion, Inc. 

33 See Order No. 47 (October 2, 2008). 

34 See Order No. 48 (October 7, 2008). 

35 See Order No. 52 (October 21,2008). 

10 
based on settlement agreements; (2) terminate the investigation as to U.S. Patent No. 6,426,893 in 

light of the certain respondents' decision to stop importing the products accused of infringing that 

patent into the United States; and (3) terminate U.S. Patent No.7, 137,011 and the '893 patent with 

respect to Respondent Power Quotient International (HK) Co. Ltd., Syscom Development Co. Ltd., 

and PQI Corporation based upon a consent order. On October 28, 2008, the undersigned issued an 

initial determination granting the motion. 36 On October 30, 2008, the undersigned issued a notice 

of errata to Order No. 53, correcting one of the attached consent orders. On November 18,2008, the 

Commission issued a notice of determination not to review this initial determination. 

On October 29, 2008, SanDisk and Respondent Verbatim Americas LLC and Verbatim 

Corporation (collectively "Verbatim"), filed a motion to terminate the investigation as to Verbatim 

based upon a settlement agreement. On November 14, 2008, the undersigned issued an initial 

determination granting the motion and terminated A -DATA from the investigation. 37 On December 

8, 2008, the Cominission issued a notice of determination not to review this initial determination. 

On November 10, 2008, SanDisk filed a motion to admit additional exhibits into evidence. 

On November 18, 2008, SanDisk and the K&L Gates' respondents filed a joint motion to correct 

typographical errors and omissions in the hearing transcript. On November 21, 2008, the 

undersigned issued an order granting the motion.38 On December 2, 2008, an errata was issued 

regarding Order No. 55.39 

36 See Order No. 53 (October 28, 2008). 

37 See Order No. 54 (November 14,2008). 

38 See Order No. 55 (November 21,2008). 

39 See Notice (December 2, 2008). 

11 
The parties have stipulated as to certain material facts. 4o Particular stipulated facts that are 

relevant to this Initial Determination are cited accordingly. 

An evidentiary hearing on liability was conducted before the undersigned from October 27, 

2008 through November 5, 2008. In support of its case-in-chief and rebuttal case, Complainant 

called the following witnesses: 

• Dr. Paul Min (SanDisk's expert on the '011 patent)41; 

• Dr. Thomas Rhyne (SanDisk's expert on the '424 patentt2

; 

• Dr. Eliyahou Harari (SanDisk's CEO & Chairman ofthe Board of Directors);43 

• Dr. Jerry Hausman (SanDisk's expert on patent misuse).44 

In support of its case-in-chief and rebuttal case, Respondents called the following witnesses: 

• Ellis Lee (Senior Manager at Phison)45; 

• Darwin Chen (Kingston's VP of Sales & Marketingt6

; 

• C.Y. Chang (Senior Engineer at Skymedi)47; 

• V. Nyles Kynett (Silicon Motion's expertt8

; 

• Dr. Vivek Subramanian (Respondents' expert on the '424 patent)49; 

• Dr. Melvin Ray Mercer (Respondents' expert on the '424 patent);50 and 

• Dr. Russell W. Mangum (Respondents' expert on patent misuse).5J 

In addition, witness statements and deposition designations were received into evidence without any 

40 See JX-64 (Skymedi Stipulation), JX-167 through JX-172. 

41 CX-1007C (Min Direct); CRX-223C (Min Rebuttal). 

42 CX-I008C (Rhyne Direct); CRX-225C (Rhyne Rebuttal). 

43 CRX-185C, CRX-220C (Harari Rebuttal). 

44 CRX-221C (Hausman Rebuttal). 

45 RX-936C (Lee Direct). 

46 RX-941C (Chen Direct). 

47 RRX-33C (Chang Rebuttal). 

48 RX-937C (Kynett Direct). 

49 RRX-018C (Subramanian Direct). 

50; RX-318C (Mercer Direct); RRX-34C (Mercer Rebuttal Non-Infringement); RRX-36C 

(Mercer Rebuttal). 

51 RX-938C (Mangum Direct). 

12 
live testimony. 52 

52 The following witness statements and deposition designations were received into evidence: 

Witness Position Exhibit Number 

Kevin Conley VP of SanDisk CRX-219C (Conley Direct); 

JX-132C (Conley Dep) 

Earle Thompson VP and Chief Intellectual Property CRX-226C (Thompson Witness 

Counsel of SanDisk Statement) 

Gerald Parsons SanDisk's patent prosecution JX -118C (Parsons Dep) 

attorney 

Richard Chernicoff Senior Vice President of Corporate JX-146C (ChernicoffDep) 

Development at SanDisk 

J.Y. Yang Chief Engineer at Phison RRX-O 17 (Yang Direct) 

Chi-Heng Chiu aka Frankie Transcend's VP for Research and RX-990C (Chiu Direct); RRXChiu Development lOC (Chiu Rebuttal); JX-117C 

(Chiu Dep) 

Jason Chien Silicon Motion's Project Manager RX-995C (Chien Direct); RRXin the Product Marketing l2C (Chien Rebuttal); JX-125C 

Department (Chien Dep) 

James Lee Manager at Silicon Motion RRX-ll (J. Lee Rebuttal); JXl24C (J. Lee Dep) 

Chia Kyun Chang Apacer's Associate Vice President RRX-13C (C.K. Chang 

Rebuttal); JX-I02C (Chang 

Dep) 

O-byoung Kang LGE's Group Leader and Principal RX-998C (Kang Direct); RRXResearch Engineer for the IT 14C (Kang Rebuttal); JX-lOlC 

Media Group in the Cheongju (KangDep) 

RMC Division 

Scott Hsaio Senior Manager of the quality JX-153C (Hsaio Dep) 

assurance department at Silicon 

Motion 

Nigel Doong Assistant Manager at Silicon JX-14IC (Doong Dep) 

Motion 

13 
After the hearing, post-hearing briefs and reply briefs, together with proposed findings of 

fact, conclusions oflaw and rebuttals to the same, were filed on November 25,2008 and December 

16, 2008, respectively. 

On November 26, 2008, Staff filed an unopposed motion for leave to accept the late filing 

of its proposed findings of fact and conclusions of law, which is hereby granted. 

B. The Parties 

1. Complainant 

Complainant SanDisk Corporation is a Delaware corporation with its principal place of 

business in Milpitas, California. 

2. Respondents 

a. Controller-Level Respondents 

Controller-level Respondents are respondents that manufacture Flash memory controllers. 

(1) Phison 

Phison is a company organized under the laws of the Republic of China (Taiwan) with its 

principal place of business in Hsinchu, Taiwan. 

(2) Silicon Motion 

Silicon Motion (Taiwan) is a company organized under the laws of the Republic of China 

(Taiwan) with its principal place of business in Jhubei City, Taiwan. Silicon Motion (Taiwan) was 

formerly known as Feiya Technology Corporation. Silicon Motion (Taiwan) is a wholly-owned 

subsidiary of Silicon Motion Technology Corporation. 

Silicon Motion Inc. (USA) is a California corporation with its principal place of business in 

Milpitas, California. Silicon Motion Inc. (USA) is a wholly-owned subsidiary of Silicon Motion Inc. 

14 
(Taiwan). 

Silicon Motion (Taiwan) and Silicon Motion Inc. (USA) are related companies that operate 

together at "Silicon Motion" and will hereinafter be referred to together as "SMI." 

(3) Skymedi 

Skymedi is a company organized under the laws of the Republic of China (Taiwan) with its 

principal place of business in Hsinchu, Taiwan. 

b. System-Level Respondents 

System-level Respondents are respondents that purchase controllers from the Controller-level 

Respondents and incorporate those controllers into Flash memory devices (systems). 

(1) PQI 

Power Quotient International Co., Ltd. is a limited company organized under the laws of the 

Republic of China (Taiwan) with its principal place of business in Chung Ho City, Taipei, Taiwan. 

Power Quotient International (HK) Co., Ltd. is a limited company organized under the laws 

of the People's Republic of China (Hong Kong) with its principal place of business in Kowloon Bay, 

Hong Kong. Power Quotient International (HK) Co., Ltd. is a wholly-owned subsidiary of Power 

Quotient International Co., Ltd. 

Syscom Development Co., Ltd. is a limited company organized under the laws of the British 

Virgin Islands with its principal place of business in Road Town, Tortola, British Virgin Islands. 

Syscom Development Co., Ltd. is a wholly-owned subsidiary of Power Quotient International Co., 

Ltd. 

PQI Corporation is a California corporation with its principal place of business in Fremont, 

California. PQI Corporation is a wholly-owned subsidiary of Syscom Development Co., Ltd. 

15 
Power Quotient International Co., Ltd., Power Quotient International (HK) Co., Ltd., Syscom 

Development Co., Ltd., and PQI Corporation are related entities and operate together as Power 

Quotient International or "PQI" and will hereinafter be referred to together as "PQI." 

(2) Kingston 

Kingston Technology Corporation is a Delaware corporation with its principal place of 

business in Fountain Valley, California. 

MemoSun, Inc. is a California corporation with its principal place of business in Fountain 

Valley, California. MemoSun is a distributor of Kingston products. 

(3) Transcend 

Transcend Information Inc. (Taiwan) is a company organized under the laws of the Republic 

of China (Taiwan) with its principal place of business in Taipei, Taiwan. 

Transcend Information Inc. (California) is a California corporation with its principal place 

of business in Orange, California. Transcend Information Inc. (California) is owned by Transcend 

Information Inc. (Taiwan). 

Transcend Information Maryland, Inc. is a Maryland corporation with its principal place of 

business in Linthicum, Maryland. 

[ ] 

(4) Imation 

Imation Corp. is Delaware corporation with its principal place of business in Oakdale, 

Minnesota. 

Imation Enterprises Corp. is a Delaware corporation with its principal place of business in 

Oakdale, Minnesota. Imation Enterprises Corp. is a wholly-owned subsidiary of Imation Corp. 

16 
Memorex Products, Inc. is a California corporation with its principal place of business in 

Cerritos, California. Imation Corp. acquired Memorex Products, Inc. in 2006. Memorex Products, 

Inc. is a wholly-owned subsidiary ofImation Corp. 

] 

(5) Apacer 

Apacer Technology Inc. is a company organized under the laws of the Republic of China 

(Taiwan) with its principal place of business in Hsichih City, Taipei Hsien, Taiwan. 

Apacer Memory America, Inc. is a California corporation with its principal place of business 

in Milpitas, California. Apacer Memory America, Inc. is a wholly-owned subsidiary of Apacer 

Technology Inc. 

(6) Dane-Elec 

Dane Memory S.A. is a company organized under the laws of France with its principal place 

of business in Bagnolet, France. 

Deantusaiocht Dane-Elec TEO is a limited company organized under the laws ofIreland with 

its principal place of business in Spiddal, Galway, Ireland. Deantusaiocht Dane-Elec TEO is a 

wholly-owned subsidiary of Dane Memory S.A. 

Dane-Elec Corp. USA is a Delaware corporation with its principal place of business in Irvine, 

California. Dane-Elec Corp. USA is a wholly-owned subsidiary of Dane Memory S.A. 

[ 

] 

(7) LG 

LG Electronics U.S.A., Inc. is a Delaware corporation with its principal place of business in 

17 
Englewood Cliffs, New Jersey. 

LG Electronics, Inc. is a company organized under the laws of the Republic of South Korea 

with its principal place of business in Seoul, South Korea. 

] 

C. Overview of the Technology 

The asserted patents both involve Flash memory-based systems. Flash is a type of EEPROM, 

or Electrically Erasable Programmable Read Only Memory. Flash EEPROM (or "Flash memory" 

or simply "Flash") is a non-volatile, semiconductor-based memory. "Non-volatile" means that the 

memory retains the information stored in it, even when the electric power goes off. 

Manufacturers use Flash memory in a variety of storage systems. Perhaps most recognizable 

are USB Flash drives, which attach to a computer system's USB port and allow users to read and 

write data to carry to other computers. A Flash memory system, such as a Flash drive or other 

similar products usually contains a Flash memory controller, among other things. 

The asserted claims in the' 424 patent are directed to two categories of inventions. Claim 

17 discloses an allegedly novel technique for updating data stored in the component blocks of a 

metablock, while claims 24 and 30 disclose an allegedly novel method for performing partial block 

updates to data stored in a non-volatile memory system. 

The asserted claim, claim 8, in the '011 patent discloses an allegedly novel, non-volatile 

memory card that incorporates a Flash memory array in an enclosure and that is removably attached 

to a host system, and is designed to provide "security with portability." Unlike prior-art systems, 

SanDisk asserts that claim 8's memory card stores both a decryption algorithm and encrypted user 

data in the Flash memory array so that they can be read out for use together. 

18 
D. The Patents at Issue 

1. The '424 Patent 

The '424 patent is entitled "Partial Block Data Programming and Reading Operations in a 

Non-Volatile Memory" which was issued on July 13, 2004, based on Application Serial No. 

091766,436, filed on January 19,2001. The named inventor is Kevin M. Conley and the patent was 

assigned to SanDisk, the current owner of the '424 patent. The '424 patent has a total of31 claims. 

One independent claim, claim 17, is at issue here. Dependent claims 24 and 30, which depend from 

claim 20, is also at issue here.53 

2. The '011 Patent 

The' 0 11 patent is entitled "Removable Mother/Daughter Peripheral Card" which was issued 

on November 14,2006, based on Application Serial No.1 0/050,429, filed on January 15,2002. The 

named inventors are Eliyahou Harari, Daniel C. Guterman, and Robert F. Wallace and the patent was 

assigned to SanDisk, the current owner ofthe '011 patent. The '011 patent has a total of9 claims. 

One independent claim, claim 8, is at issue here. 54 

E. The Products at Issue 

At issue in this investigation are certain Flash memory contro Hers, drives, memory cards, and 

media players, and products containing same. These products fall into two general categories: (1) 

Flash memory controllers, and (2) Flash memory products or systems containing infringing Flash 

memory controllers, generally referred to as Flash memory systems. 

Imation is the only respondent accused of infringing the '011 patent. The Imation products 

53 See JX-2 ("the '424 patent") and JX-5 ("the '424 prosecution history"). 

54 See JX-3 ("the '011 patent") and JX-6 ("the '011 prosecution history"). 

19 
accused of infringing the '011 patent include: Pocket, Atom, Nano, Swivel, Swivel Pro, Clip, 

Rotodrive, Traveldrive, Mini Traveldrive, Pivot and M-Flyer Pilot series. 

The controllers accused of infringing the '424 patent include: 

Company USB Controllers CF/SSD MMC Controllers MP3 

Controllers Controllers 

Phison USB Controllers CF/SSD 

!5 ] PS2231: Controllers 

PS2101, PS2134, [ ] 

PS3006: 56 

PS2135, PS2136, PS3002, PS2143, PS2151, PS3006, PS2153, PS2154, PS3102 

PS2230, PS2231, 

PS2232, PS2233, UP8, 

UPIO, UP12 

Silicon SM321, SM323, SM221, SM261,SM263,SM267 SM339, 

Motion SM324, SM325 SM222, SM340 

SM223, 

SM224 

55 [ 

] 

] 

20 
Skymedi USB Controllers MMC Controllers 

[ ] IPN [ ] 

16031 SK6281 [ IPN 1603/SK6621 [ 

y7 ]58 

SK6203/IPN2806, SK6618/IPN1603, 

SK6208/IPN 1603, SK66211IPN1603, 

SK6211/IPN2806, SK6623/KTC68 11 

SK62811IPN1603, IPN1603, 

SK6288/IPN1603 SK6625/IPN 1605, 

SK6626IIPN 1606, 

USB Controllers SK6633/lPN1606 

[ ] IPN 

1606F I SK6626AE MMC Controllers 

[ [ ] IPN1606FI 

] SK6626AE[ ] 

SK6212/IPN 1608 [ ] 

SK6626AEI 

IPNI606F, 

SK6628/IPN2807 

The system products accused of infringing the' 424 patent include any of Respondents ' Flash 

memory products that incorporate one of the accused controllers: 

System Company Controllers used by System Company in System Products 

Apacer [ ] 

Dane-Elec [ ] 

Imation [ ] 

Kingston [ ] 

LG [ ] 

PQI [ ] 

Transcend [ ] 

21 
II. Jurisdiction and Importation 

Section 337 confers subject matter jurisdiction on the International Trade Commission to 

investigate, and if appropriate, to provide a remedy for, unfair acts and unfair methods of 

competition in the importation of articles into the United States. In order to have the power to decide 

a case, a court or agency must have both subject matter jurisdiction, and jurisdiction over either the 

parties or the property involved. 59 

A. Subject Matter JurisdictionlIn Rem Jurisdiction 

The complaint alleges that Respondents have violated Subsection 337(a)(I)(A) and (B) in 

the importation and sale of products that infringe one or both of the asserted patents. Respondents 

do not dispute that the importation requirement has been satisfied.60 Accordingly, the Commission 

has subject matter jurisdiction over Respondents in this investigation.61 

B. Personal Jurisdiction 

Respondents have responded to the complaint and notice of investigation, participated in the 

investigation, including participating in discovery, made an appearance at the hearing, and submitted 

post-hearing briefs, thereby submitting to the personal jurisdiction of the Commission.62 

59 19 U.S.C. § 1337; also see Certain Steel Rod Treating Apparatus and Components 

Thereof, Inv. No. 337-TA-97, Commission Memorandum Opinion, 215 U.S.P.Q. 229,231 (1981) 

("Certain Steel Rod"). 

60 See CX-754C (Stipulation) and JX-64 (Stipulation); CFF13.1-13.16. 

61 See Amgen, Inc. v. Us. Int'l Trade Comm'n, 902 F.2d 1532, 1536 (Fed. Cir. 1990) 

("Amgen"). 

62 See Certain Miniature Hacksaws, Inv. No. 337-TA-237, U.S.LT.C. Pub. No. 1948, Initial 

Determination (unreviewed by Commission in relevant part) at 4, 1986 WL 379287 (U.S.LT.C., 

October 15, 1986) ("Certain Miniature Hacksaws"). 

22 
III. Relevant Law 

A. Infringement 

1. Literal Infringement 

Literal infringement is a question of fact. 63 Literal infringement requires the patentee to 

prove that the accused device contains each limitation of the asserted claim( s). Each element of a 

claim is considered material and essential, and in order to show literal infringement, every element 

must be found to be present in the accused device.64 If any claim limitation is absent from the 

accused device, there is no literal infringement of that claim as a matter oflaw.65 

2. Doctrine of Equivalents 

Where literal infringement is not found, infringement nevertheless can be found under the 

doctrine of equivalents based on "the substantiality of the differences between the claimed and 

accused products or processes, assessed according to an objective standard" judged from "the 

vantage point of one of ordinary skill in the relevant art.,,66 Determining infringement under the 

doctrine of equivalents "requires an intensely factual inquiry.,,67 

In Warner-Jenkinson, the Supreme Court noted that the doctrine of equivalents is subject to 

several limitations, including applying the doctrine to individual elements of a claim and not to the 

63 Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331, 1350 (Fed. Cir. 2001) ("Tegal "), 

cert. denied, 535 U.S. 927 (2002). 

64 London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991) ("London"). 

65 Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000) 

("Bayer"). 

66 HiltonDavisChem. Co. v. Warner-Jenkinson Co.,Inc., 62 F.3d 1512,1518-1519 (Fed. Cir. 

1995) ("Hilton Davis"), rev'd, 520 U.S. 17 (1997) ("Warner-Jenkinson"). 

67 Vehicular Tech. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1381 (Fed. Cir. 2000) 

(" Vehicular Technologies"). 

23 
invention as a whole.68 The court acknowledged that the commonly used "function-way-result" test 

is suitable in some instances, including analyzing mechanical devices.69 

3. Indirect Infringement 

Indirect infringement may be either induced or contributory. Direct infringement must first 

be established in order for a claim of indirect infringement to prevai1.70 

a. Induced Infringement 

Section 271(b) of the Patent Act prohibits inducement: "[w]hoever actively induces 

infringement of a patent shall be liable as an infringer.,,71 As the Federal Circuit stated: 

To establish liability under section 271(b), a patent holder must prove that once the 

defendants knew of the patent, they "actively and knowingly aid [ed] and abett[ ed] 

another's direct infringement." However, "knowledge ofthe acts alleged to constitute 

infringement" is not enough. The "mere knowledge of possible infringement by 

others does not amount to inducement; specific intent and action to induce 

infringement must be proven."n 

In addition, the burden of proof is on the complainant. 73 

b. Contributory Infringement 

Under 35 U.S.C. § 271(c), a seller ofa component ofan infringing product can be held liable 

for contributory infringement if: "( 1) there has been an act of direct infringement by a third party; 

(2) the accused contributory infringer knows that the combination for which its component was made 

68 Warner-Jenkinson, 520 U.S. at 29. 

69 See Hilton Davis, 62 F .3d at 1518 ( "In applying the doctrine of equivalents, it is often 

enough to assess whether the claimed and accused products or processes include substantially the 

same function, way, and result"). 

70 Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683,697, (Fed. Cir. 2008) ("Broadcom"); 

ACCD Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307,1312 (Fed. Cir. 2007) ("ACCD"). 71 35 U.S.c. § 271(b) (2008). 

72 DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1305 (Fed. Cir. 2006) (en banc) ("DSU') 

(citations omitted). 

73 Broadcom, 543 F.3d at 698. 

24 
was both patented and infringing; and (3) there are no substantial non-infringing uses for the 

component part, i. e., the component is not a 'staple article' of commerce. ,,74 

B. Domestic Industry 

In a patent-based complaint, a violation of Section 337 can be found "only if an industry in 

the United States, relating to the articles protected by the patent ... concerned, exists or is in the 

process of being established. ,,75 This "domestic industry requirement" has an "economic" prong and 

a "technical" prong.76 

The term "domestic industry" in Section 337 is not defined by the statute, but the 

Commission has interpreted the intent of Section 337 to be "the protection of domestic manufacture 

of goods.,,77 The Commission has further stated that "[t]he scope of the domestic industry in patentbased investigations has been determined on a case by case basis in light of the realities of the 

marketplace and encompasses not only the manufacturing operations but may include, in addition, 

distribution, research and development and sales.,,78 

In making this determination, Section 337(a)(2) provides that for investigations based on 

patent infringement, a violation can be found "only if an industry in the United States, relating to the 

articles protected by the patent ... concerned, exists or is in the process of being established." 19 

U.S.C. § 1337(a)(2). Section 337(a)(3) sets forth the following economic criteria for determining 

74 Certain Flash Memory Circuits and Products Containing Same, Inv. No. 337-TA-382, 

Commission Opinion at 9-10 (July 1997). 

75 19 U.S.C. § 1337(a)(2). 

76 Certain Stringed Musical Instruments and Components Thereof, Inv. No. 337-TA-586, 

Commission Opinion at 12-14 (April 24, 2008) ("Stringed Instruments"). 

77 Certain Dynamic Random Access Memories, Components Thereof and Products 

Containing Same, Inv. No. 337-TA-242, U.S.LT.C. Pub. No. 2034 (November 1987), Commission 

Opinion at 61, 1987 WL 450856 (U.S.LT.C., September 21, 1987) ("Certain DRAMs"). 

78Id. at 62 (footnotes omitted). 

25 
the existence of a domestic industry in such investigations: 

an industry in the United States shall be considered to exist ifthere is in the United 

States, with respect to the articles protected by the ... patent ... concerned -

(A) significant investment in plant and equipment; 

(B) significant employment of labor or capital; or 

(C) substantial investment in its exploitation, including engineering, research 

and development, or licensing.79 

As the statute uses the disjunctive term "or," a complainant can demonstrate this so-called 

"economic prong" of the domestic industry requirement by satisfYing anyone of the three tests set 

forth in Section 337(a)(3).80 The complainant bears the burden of establishing that the domestic 

industry requirement is satisfied. 81 

In addition to meeting the economic criteria of the domestic industry requirement, a 

complainant in a patent-based Section 337 investigation must also demonstrate that it is practicing 

or exploiting the patents at issue. 82 In order to find the existence of a domestic industry exploiting 

a patent at issue, it is sufficient to show that the domestic industry practices any claim of that patent, 

79 19 U.S.C. § 1337(a)(3). 

80 See Certain Plastic Encapsulated Integrated Circuits, Inv. No. 337-TA-315, U.S.LT.C. 

Pub. No. 2574 (November 1992), Initial Determination at 83,1992 WL 813952 (U.S.LT.C., October 

15, 1991) (unreviewed by Commission in relevant part) ("Certain Encapsulated Circuits"). 

81 See Certain Set-Top Boxes and Components Thereof, Inv. No. 337-TA-454, U.S.LT.C. 

Pub. No. 3564 (November 2002), Initial Determination at 294, 2002 WL31556392 (U.S.LT.C., June 

21,2002), unreviewed by Commission in relevant part, Commission Opinion at 2 (August 29,2002) 

("Certain Set-Top Boxes"). 

82 See 19 U.S.C. § 1337(a)(2) and (3); also see Certain Microsphere Adhesives, Process for 

Making Same, and Products Containing Same, Including Self-Stick Repositionable Notes, Inv. No. 

337-TA-366, Commission Opinion at 8,1996 WL 1056095 (U.S.LT.C.,January 16, 1996)("Certain 

Microsphere Adhesives"), affd sub nom. Minnesota Mining & Mfg. Co. v. Us. Int'l Trade Comm 'n, 

91 F.3d 171 (Fed. Cir. 1996) (Table); Certain Encapsulated Circuits, Commission Opinion at 16. 

26 
not necessarily an asserted claim of that patent.83 Fulfillment of this so-called "technical prong" of 

the domestic industry requirement is not determined by a rigid formula, but rather by the articles of 

commerce and the realities of the marketplace. 84 

The test for claim coverage for the purposes of the technical prong of the domestic industry 

requirement is the same as that for infringement. 85 "First, the claims of the patent are construed. 

Second, the complainant's article or process is examined to determine whether it falls within the 

scope of the claims."86 As with infringement, the first step of claim construction is a question of 

law, whereas the second step of comparing the article to the claims is a factual determination. 87 To 

prevail, the patentee must establish by a preponderance of the evidence that the domestic product 

practices one or more claims of the patent either literally or under the doctrine of equivalents. 88 

C. Validity 

A patent is presumed valid. 89 The party challenging a patent's validity has the burden of 

overcoming this presumption by clear and convincing evidence.9o Since the claims of a patent 

83 Certain Microsphere Adhesives, Commission Opinion at 7-16. 

84 Certain Diltiazem lfydrochloride and Diltiazem Preparations, Inv. No. 337-TA-349, 

U.S.I.T.C. Pub. No. 2902, Initial Determination at 138, 1995 WL 945191 (U.S.I.T.C., February 1, 

1995) (unreviewed in relevant part) ("Certain Diltiazem"); Certain Double-Sided Floppy Disk 

Drives and Components Thereof, Inv. No. 337-TA-215, 227 U.S.P.Q. 982, 989 (Commission 

Opinion 1985) ("Certain Floppy Disk Drives"). 

85 Certain Doxorubicin and Preparations Containing Same, Inv. No. 337-TA-300, Initial 

Determination at 109, 1990 WL 710463 (U.S.I.T.C., May 21, 1990) ("Certain Doxorubicin"), aJJ'd, 

Views ofthe Commission at 22 (October 31, 1990). 

86 Id. 

87 Markmanv. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aJJ'd, 

517 U.S. 370 (1996) ("Markman"). 

88 See Bayer, 212 F.3d at 1247. 

89 35 U.S.C. § 282; Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1480 (Fed. Cir. 

1997) ("Richardson-Vicks"). 

90 Richardson-Vicks Inc., supra; Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044 (Fed. 

(continued ... ) 

27 
measure the invention at issue, the claims must be interpreted and given the same meaning for 

purposes of both validity and infringement analyses. As with an infringement analysis, an analysis 

of invalidity involves two steps: the claim scope is first determined, and then the properly construed 

claim is compared with the prior art to determine whether the claimed invention is anticipated andlor 

rendered obvious. 91 

1. Anticipation, 35 U.S.c. § 102 

A patent may be found invalid as anticipated under 35 U.S.C. § 1 02(a) if "the invention was 

known or used by others in this country, or patented or described in a printed publication in this 

country, or patented or described in a printed publication in a foreign country, before the invention 

thereofbythe applicant for patent." 35 U.S.C. § 1 02(a). A patent may be found invalid as anticipated 

under 35 U.S.C. § 102(b) if "the invention was patented or described in a printed publication in this 

or a foreign country or in public use or on sale in this country, more than one year prior to the date 

of the application for patent in the United States.,,92 Under 35 U.S.C. § 102(e), a patent is invalid 

as anticipated if "the invention was described in a patent granted on an application for patent by 

another filed in the United States before the invention thereof by the applicant for patent.,,93 

Anticipation is a question of fact. 94 

Under the foregoing statutory provision, a claim is anticipated and therefore invalid when 

90( ... continued) 

Cir.) ("Uniroyal"), cert. denied, 488 U.S. 825 (1988). 

91 Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) 

("Amazon. com"). 

92 35 U.S.C. § 102(b). 

93 35 U.S.c. § 102(e). 

94 Texas Instruments, Inc. v. Us. Int'l Trade Comm 'n, 988 F.2d 1165, 1177 (Fed. Cir. 1993) 

("Texas Instruments IF'). 

28 
"the four comers of a single, prior art document describe [ s] every element of the claimed invention, 

either expressly or inherently, such that a person of ordinary skill in the art could practice the 

invention without undue experimentation."95 To be considered anticipatory, the prior art reference 

must be enabling and describe the applicant's claimed invention sufficiently to have placed it in 

possession of a person of ordinary skill in the field of the invention. 96 But, the degree of enabling 

detail contained in the reference does not have to exceed that contained in the patent at issue.97 

Further, the disclosure in the prior art reference does not have to be express, but may 

anticipate by inherency where the inherency would be appreciated by one of ordinary skill in the 

art.98 To be inherent, the feature must necessarily be present in the prior art.99 Inherency may not 

be established by probabilities or possibilities. The mere fact that a certain thing may result from 

a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that 

the natural result flowing from the operation as taught would result in the performance of the 

questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. 

This modest flexibility in the rule that "anticipation" requires that every element of the claims appear 

in a single reference accommodates situations where the common knowledge of technologists is not 

recorded in the reference; that is, where technological facts are known to those in the field of the 

95 Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000), 

cert. denied, 532 u.s. 904 (2001) ("Advanced Display Systems"). 

96 Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d l339, l346 (Fed. Cir. 2000) ("Helifix"); In re 

Paulsen, 30 F.3d 1475, 1478 (Fed. Cir. 1994) ("Paulsen"). 

97 Paulsen, 30 F.3d at 1481 n.9. 

98 Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.), cert. denied, 516 U.S. 988 

(1995) ("Glaxo"). 

99 See Finnigan Corp. v. Us. Int'! Trade Comm 'n, 180 F.3d l354, l365-66 (Fed. Cir. 1999) 

("Finnigan"). 

29 
invention, albeit not known to judges. loo 

2. Obviousness, 35 U.S.c. § 103 

Under 35 U.S.C. § 1 03(a), a patent is valid unless "the differences between the subject matter 

sought to be patented and the prior art are such that the subject matter as a whole would have been 

obvious at the time the invention was made to a person having ordinary skill in the art to which said 

subject matter pertains."JOI The ultimate question of obviousness is a question oflaw, but "it is well 

understood that there are factual issues underlying the ultimate obviousness decision."102 

Once claims have been properly construed, "[t]he second step in an obviousness inquiry is 

to determine whether the claimed invention would have been obvious as a legal matter, based on 

underlying factual inquiries including: (1) the scope and content of the prior art, (2) the level of 

ordinary skill in the art, (3) the differences between the claimed invention and the prior art ; and (4) 

secondary considerations of non-obviousness" (also known as "objective evidence,,).103 

Although Federal Circuit case law also required that, in order to prove obviousness, the 

patent challenger must demonstrate, by clear and convincing evidence, that there is a "teaching, 

suggestion, or motivation to combine, the Supreme Court has rejected this "rigid approach" 

employed by the Federal Circuit in KSR Int'l Co. v. Telejlex Inc.: 104 

When a work is available in one field of endeavor, design incentives and other 

market forces can prompt variations of it, either in the same field or a different one. 

100 See Cont'! Can Co. v. Monsanto Co., 948 F.2d 1264, 1268-69 (Fed. Cir. 1991) 

("Continental Can "); Finnigan, 180 F.2d at 1365. 

101 35 U.S.C. § 103(a). 

102 Richardson-Vicks Inc., 122F.3dat 1479; WangLab., Inc. v. Toshiba Corp., 993 F.2d858, 

863 (Fed. Cir. 1993) ("Wang Laboratories"). 

103 Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1354 (Fed. Cir. 1999) 

("Smiths Industries"), citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966) ("Graham"). 

104 KSR Int'! Co. v. Telejlex Inc., 500 U.S. 398 (2007), 127 S.Ct. 1727, 1739 ("KSR"). 

30 
If a person of ordinary skill can implement a predictable variation, § 103 likely bars 

its patentability. For the same reason, if a technique has been used to improve one 

device, and a person of ordinary skill in the art would recognize that it would 

improve similar devices in the same way, using the technique is obvious unless its 

actual application is beyond his or her skill. Sakraida and Anderson' s-Black Rock are 

illustrative-a court must ask whether the improvement is more than the predictable 

use of prior art elements according to their established function. 

Following these principles may be more difficult in other cases than it is here 

because the claimed subject matter may involve more than the simple substitution of 

one known element for another or the mere application of a known technique to a 

piece of prior art ready for the improvement. Often, it will be necessary for a court 

to look to interrelated teachings of multiple patents; the effects of demands known 

to the design community or present in the marketplace; and the background 

knowledge possessed by a person having ordinary skill in the art, all in order to 

determine whether there was an apparent reason to combine the known elements in 

the fashion claimed by the patent at issue. To facilitate review, this analysis should 

be made explicitly. See In re Kahn, 441 F.3d 977,988 (CAFed. 2006)("[R]ejections 

on obviousness grounds cannot be sustained by mere conclusory statements; instead, 

there must be some articulated reasoning with some rational underpinning to support 

the legal conclusions of obviousness"). As our precedents make clear, however, the 

analysis need not seek out precise teachings directed to the specific subject matter of 

the challenged claim, for a court can take account of the inferences and creative steps 

that a person of ordinary skill in the art would employ. 

[ ... ] 

The obviousness analysis cannot be confined by a formalistic conception of the 

words teaching, suggestion, and motivation, or by overemphasis on the importance 

of published articles and the explicit content of issued patents. The diversity of 

inventive pursuits and of modern technology counsels against limiting the analysis 

in this way. In many fields it may be that there is little discussion of obvious 

techniques or combinations, and it often may be the case that market demand, rather 

than scientific literature, will drive design trends. Granting patent protection to 

advances that would occur in the ordinary course without real innovation retards 

progress and may, in the case of patents combining previously known elements, 

deprive prior inventions of their value or utility. 105 

"Secondary considerations," also referred to as "objective evidence of non-obviousness," 

such as "commercial success, long felt but unsolved needs, failure of others, etc." may be used to 

105 KSR, 127 S.Ct. at 1740-41. 

31 
understand the origin of the subject matter at issue, and may be relevant as indicia of obviousness 

or non-obviousness.106 Secondary considerations may also include copying by others, prior art 

teaching away, and professional acclaim.10? 

Evidence of "objective indicia of non-obviousness," also known as "secondary 

considerations," must be considered in evaluating the obviousness of a claimed invention, but the 

existence of such evidence does not control the obviousness determination. A court must consider 

all of the evidence under the Graham factors before reaching a decision on obviousness. 108 In order 

to accord objective evidence substantial weight, its proponent must establish a nexus between the 

evidence and the merits of the claimed invention, and a prima facie case is generally made out "when 

the patentee shows both that there is commercial success, and that the thing (product or method) that 

is commercially successful is the invention disclosed and claimed in the patent. ,,109 Once the patentee 

has made a prima facie case of nexus, the burden shifts to the challenger to show that the commercial 

success was caused by "extraneous factors other than the patented invention, such as advertising, 

superior workmanship, etc.,,110 

106 Graham, 383 U.S. at 17-18. 

107 See Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888,894 (Fed. Cir. 1984) 

("Perkin-Elmer"), cert. denied, 469 U.S. 857 (1984); Avia Group Int'l, Inc. v. L.A. Gear California, 

853 F.2d 1557, 1564 (Fed. Cir. 1988) ("A via") (copying by others); In re Hedges, 783 F.2d 1038, 

1041 (Fed. Cir. 1986) ("Hedges") (prior art teaching away; invention contrary to accepted wisdom); 

Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565 (Fed. ir. 1986) ("Kloster"), cert. denied, 479 

U.S. 1034 (1987) (wide acceptance and recognition of the invention). 

108 Richardson-Vicks Inc., 122 F.3d at 1483-84. 

109 Inre GPAC Inc., 57 F.3d 1573,1580 (Fed. Cir. 1995)("GPAC'); Demaco Corp. v. F. Von 

LangsdorffLicensing Ltd., 851 F.2d 1387,1392 (Fed. Cir. 1988), cert. denied, 488 U.S. 956 (1988) 

("Demaco"); Certain Crystalline Cefadroxil Monohydrate, Inv. No. 337-TA-293, Commission 

Opinion (March 15, 1990),15 U.S.P.Q.2d 1263, 1270 ("Certain Crystalline"). 

110 Id. at 1393. 

32 
3. Indefiniteness, 35 U.S.c. § 112, ~ 2 

Claims must " ... particularly point[] out and distinctly claim[ ] the subject matter which the 

applicant regards as his invention.,,111 When "means plus function" language is used in the claims, 

the specification must set forth "adequate disclosure showing what is meant by that language.,,112 

Claim indefiniteness under Section 112, ~ 2 is a question oflaw.1J3 

"[I]fthe claims, read in light ofthe specification, reasonably apprise those skilled in the art 

both of the utilization and scope of the invention, and if the language is as precise as the subject 

matter permits, the courts can demand no more."114 Further in this connection, the Federal Circuit 

has observed: 

We have not insisted that claims be plain on their face in order to avoid 

condemnation for indefiniteness; rather, what we have asked is that the claims be 

amenable to construction, however difficult that task may be. If a claim is insolubly 

ambiguous, and no narrowing construction can properly be adopted, we have held the 

claim indefinite. If the meaning of the claim is discernible, even though the task may 

be formidable and the conclusion may be one over which reasonable persons will 

disagree, we have held the claim sufficiently clear to avoid invalidity on 

indefiniteness grounds. 115 

"By finding claims indefinite only if reasonable efforts at claim construction prove futile," the 

Federal Circuit continued in Exxon Research, "we accord respect to the statutory presumption of 

III 35 U.S.C. § 112, ~ 2. 

112 In re Donaldson, 16 F.3d 1189, 1195 (Fed. Cir. 1994) ("Donaldson"). 

Il3 Exxon Research and Engineering Co. v. Us., 265 F.3d 1371, 1376 (Fed. Cir. 2001) 

("Exxon Research"); Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692 

(Fed. Cir. 2001) ("Union Pacific"). 

114 ShatterprooJGlass Corp. v. Libby-Owens-Ford Co., 758 F.2d 613,624 (Fed. Cir. 1985), 

cert. dismissed, 474 U.S. 976 (1985)( "ShatterprooJGlass"); accord, Hybritech, Inc. v. Monoclonal 

Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987) 

("Hybritech"). 

115 Exxon Research, supra, 265 F.3d at 1375. See also Energizer Holdings Inc. v. Int'l Trade 

Comm 'n, 435 F.3d 1366 (Fed. Cir. 2006) ("Energizer"). 

33 
patent validity.,,1l6 In this regard, where claims on their face cover various methods that produce 

widely varying and non-overlapping results such that they "fail to put competitors on notice of the 

limits of the claimed invention, so that they may fairly know the point at which their activities may 

begin to pose a serious risk of infringement," those claims are indefinite under Section 112, ~ 2.117 

D. Other Affirmative Defenses 

1. Patent Misuse 

Patent misuse is an equitable defense to a claim of patent infringement. 118 As the Federal 

Circuit has explained: 

The policy of the patent misuse doctrine is "to prevent a patentee from using the 

patent to obtain market benefit beyond that which inures in the statutory patent right." 

Therefore, in evaluating a patent-misuse defense, "[t]he key inquiry is whether, by 

imposing conditions that derive their force from the patent, the patentee has 

impermissibly broadened the scope ofthe patent grant with anti competitive effect. ,,119 

Patent misuse has been found, for example, when a patentee conditions a patent license on the 

purchase of unpatented goods,120 or when a patent license requires royalty payments after the 

expiration of the licensed patents. 

To determine if patent misuse exists, courts must conduct a three-part analysis. 121 First, the 

court determines whether the alleged misuse practice is immunized under Section 271 (d) of Title 35 

116Id 

117 Certain Polyethylene Terephthalate Yarn and Products Containing Same, Inv. No. 337-

TA-457, Commission Opinion at 18,2002 WL 1349938 (U.S.I.T.C., June 18,2002) ("Certain Pet 

Yarns"). 

118 Us. Philips Corp. v. United States Int'l Trade Comm 'n, 424 F.3d 1179, 1184 (Fed. Cir. 

2005) ("Philips"). 

119 Monsanto Co. v. McFarling, 363 F.3d 1336,1341 (Fed. Cir. 2004) ("Monsanto") (citations 

omitted). 

120 See Carbice Corp. of Am. v. Am. Patents Dev. Corp., 283 U.S. 27 (1931) ("Carhice"). 

121 Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860, 868 (Fed. Cir. 1997) ("Virginia 

Panel"). 

34 
of the United States Code. Second, the court determines if the challenged practice fits into the very 

narrow category of per se misuse, such as "tying" arrangements. If a case is not resolved by the third 

step, the court must determine if the challenged practice is 

"reasonably within the patent grant, i.e., that it relates to subject matter within the 

scope of the patent claims." If so, the practice does not have the effect of broadening 

the scope of the patent claims and thus cannot constitute patent misuse. If, on the 

other hand, the practice has the effect of extending the patentee's statutory rights and 

does so with an anti-competitive effect, that practice must then be analyzed in 

accordance with the "rule of reason." Under the rule of reason, "the finder of fact 

must decide whether the questioned practice imposes an unreasonable restraint on 

competition, taking into account a variety of factors, including specific information 

about the relevant business, its condition before and after the restraint was imposed, 

and the restraint's history, nature, and effect.,,122 

Although there are similarities between patent misuse and a violation of the antitrust laws, patent 

misuse is a broader violation, and thus may be found even where there is no antitrust violation. 123 

2. Patent Exhaustion 

Patent exhaustion, otherwise known as the first sale doctrine, is an affirmative defense to 

infringement. 124 The patent exhaustion doctrine deems that "the initial authorized sale of a patented 

item terminates all patent rights to that item.,,125 

To establish patent exhaustion, an accused infringer must prove two elements: (1) that the 

122 Virginia Panel, 133 F .3d at 868. 

123 Monsanto Co. v. Scruggs, 459 F.3d 1328, 1339 (Fed. Cir. 2006) ("Scruggs"). 

124 See Jazz Photo Corp. v. United States, 439 F.3d 1344, 1350 (Fed. Cir. 2006)("Jazz Photo 

If') ("We articulated the affirmative defense of first sale and permissible repair in Jazz I, holding that 

the "unrestricted sale of a patented article, by or with the authority of the patentee, 'exhausts' the 

patentee's right to control further sale and use of that article by enforcing the patent under which it 

was first sold."); see also Scruggs, 459 F.3d at 1332-36 (referring to patent exhaustion doctrine as 

an affirmative defense and discussing whether patent exhaustion doctrine barred patent infringement 

claims); Anton/Bauer, Inc. v. PAG, Ltd, 329 F.3d 1343, 1349-50 ("Anton") (Fed. Cir. 2003) 

(discussing patent infringement analysis and presenting patent exhaustion doctrine as a defense). 

125 Quanta, 128 S.Ct. at 2115. 

35 
item "substantially embodies" the patented invention, and (2) that the sale of the item was 

authorized. 126 An item "substantially embodies" the patented invention when it itself satisfies two 

elements: (1) the item's only reasonable and intended use is to practice the patented invention, and 

(2) the item embodies essential features of the patented invention.127 A patentee's authorization of 

an international first sale does not exhaust that patentee's right in the United States. 128 

As the Federal Circuit Court has held, "when a patented product has been sold the purchaser 

acquires 'the right to use and sell it, and ... the authorized sale of an article which is capable of use 

only in practicing the patent is a relinquishment of the patent monopoly with respect to the article 

sold. ",129 However, it is not any sale that invokes this "first sale" or "patent exhaustion" doctrine. 

Rather, 

The unrestricted sale of a patented article, by or with the authority of the patentee, 

"exhausts" the patentee's right to control further sale and use of that article by 

enforcing the patent under which it was first sold. In United States v. Masonite 

Corp., 316 U.S. 265,278,62 S. Ct. 1070,86 L. Ed. 1461, 1942 Dec. Comm'r Pat. 

777 (1942), the Court explained that exhaustion of the patent right depends on 

"whether or not there has been such a disposition of the article that it may fairly be 

said that the patentee has received his reward for the use of the article." See, e.g., 

Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566, 1568,27 USPQ2d 1136, 1138 

(Fed. Cir. 1993) ("The law is well settled that an authorized sale of a patented 

product places that product beyond the reach of the patent.") Thus when a patented 

device has been lawfully sold in the United States, subsequent purchasers inherit the 

same immunity under the doctrine of patent exhaustion. 130 

126Id. at2113. 

127Id. at 2119. 

128 Fuji Photo Fil Co., Ltd. v. Jazz Photo Corp., 394 F.3d 1368, 1376 (Fed. Cir. 2005) 

("Fuji"). 

129 McFarling, 302 F.3d 1291, 1298 (Fed. Cir. 2002) (quoting United States v. Univis Lens 

Co., 316 U.S. 241, 249 (1942) ("Univis")). 

130 Jazz Photo Corp. v. International Trade Comm 'n, 264 F.3d 1094, 1105 (Fed. Cir. 2001) 

("Jazz Photo f'), cert. denied, 536 U.S. 950, 153 L. Ed. 2d 823, 122 S. Ct. 2644 (2002). 

36 
3. Licensing 

A license under a patent, whether express or implied, is generally a complete defense to a 

charge of infringement, as long as the patent or invention is used in accordance with the license 

agreement. 131 As an agreement, contract law, rather than patent law, generally governs licenses. 132 

Licenses can be implied as well as express. There are two requirements for an implied 

license to arise: (1) the equipment involved must have no noninfringing uses, and (2) the 

circumstances of the sale must plainly indicate that the grant of a license should be inferred. 133 

4. Prosecution Laches 

The doctrine of prosecution laches is an equitable defense. 134 Prosecution laches may render 

a patent unenforceable when it has issued only after an unreasonable and unexplained delay in 

prosecution.135 In determining whether delay during prosecution was unreasonable and unexplained, 

the court should examine the "totality of the circumstances, including the prosecution history of all 

of a series of related patents and overall delay in issuing claims."136 

IV. The '424 Patent 

A. Overview 

Three claims of the '424 patent are asserted against Respondents, namely claims 17,24, and 

30. In addition, claim 20 is at issue even though it is not asserted against Respondents, because it 

131 Glass Equipment Development, Inc. v. Besten, Inc.,174F.3d 1337 (Fed. Cir. 1999) ("Glass 

Equipment"). 

132 Freeman v. Seiberling Rubber Co., 72 F.2d 124, 125 (6th Cir. 1934) ("Freeman"). 

133 Met-Coil Sys. Corp. v. Korners Unlimited, Inc., 803 F.2d 684,686 (Fed. Cir. 1986) ("MetCoil"). 

134 Symbol Technologies, Inc. v. Lemelson Medical, Educ. & Research, 422 F.3d 1378, 1384 

(Fed. Cir. 2005) ("Symbol Technologies"). 

135 Id. at 1385. 

136 Id. at 1386. 

37 
is an independent claim from which certain asserted dependent claims depend. These claims read 

as follows: 

17. A method of operating a non-volatile memory system having an array of memory 

storage elements organized into at least two sub-arrays, wherein the individual subarrays are divided into a plurality of non-overlapping blocks of storage elements 

wherein a block contains the smallest group of memory storage elements that are 

erasable together, and the individual blocks are divided into a plurality of pages of 

storage elements wherein a page is the smallest group of memory storage elements 

that are programmable together, comprising: linking at least one block from 

individual ones of said at least two sub-arrays to form a metablock wherein its 

component blocks are erased together as a unit, and updating pages of original data 

within any of the metablock component blocks less than all the pages within the 

block by programming replacement data into pages within another at least one block 

in only a designated one of the sub-arrays regardless of which sub-array the data 

being updated is stored. 

20. In a re-programmable non-volatile memory system having a plurality of blocks of 

memory storage elements that are erasable together as a unit, the plurality of blocks 

individually being divided into a plurality of a given number of pages of memory 

storage elements that are programmable together, a method of operating the memory 

system, comprising: programming individual ones of a first plurality of said given 

number of pages in each of at least a first block with original data and a logical page 

address associated with the original data, thereafter programming individual ones of 

a second plurality of a total number of pages less than said given number in a second 

block with updated data and a logical page address associated with the updated data, 

wherein the logical page addresses associated with the updated data programmed into 

the second plurality of pages are the same as those associated with the original data 

programmed into the first plurality of pages, and thereafter reading and assembling 

data from the first and second plurality of pages including, for pages having the same 

logical addresses, selecting the updated data from the pages most recently 

programmed and omitting use of the original data from the pages earlier 

programmed. 

24. The method of claim 20, wherein programming the second plurality of pages in a 

second block includes causing the updated data to be programmable in pages of the 

second block having different offset positions therein than the offset positions of 

pages within the first block containing the original data associated with the same 

logical page addresses. 

30. The method of anyone of claims 20-24, wherein the non-volatile memory system is 

formed within an enclosed card having an electrical connector along one edge thereof 

that operably connects with a host system. 

38 
As noted above, the undersigned has already construed the above claims in a Markman order. 137 A 

summary of the claims construed in that order is detailed below: 

Claim Term Construction 

17 array of memory storage A contiguous group of memory storage elements 

elements arranged in rows and columns with dedicated row and 

column decoders. 

17 sub-array Two or more blocks in a physically distinct 

subdivision of an array in which read, write, and/or 

erase operations can be performed independently. 

17 block The smallest group of cells that are erasable together. 

17 page The smallest group of memory storage elements that 

are programmable together. 

17 updating pages of original data Updating fewer than all the pages of a block within 

within any of the metablock the metablock. 

component blocks less than all 

the pages within the block 

20 logical address Address for storing data in memory that is distinct 

from a physical address. 

20 programming individual ones of Writing pages in a first group of blocks with original 

a first plurality of said given data and an address consisting of a logical block 

number of pages in each of at number and a logical page offset that identifies the 

least a first block with original logical location of a page containing the original data. 

data and a logical page address 

associated with the original data, 

20 programming individual ones of Writing fewer than all of the pages in a second block 

a second plurality of a total with updated data and an address consisting of a 

number of pages less than said logical block number and a logical page offset that 

given number in a second block identifies the logical location of a page containing the 

with updated data and a logical updated data. 

page address associated with the 

updated data 

20 reading and assembling data Reading the logical page address within the first and 

from the first and second second plurality of pages and thereafter assembling 

plurality of pages the data portions from the most up-to-date pages into 

a data file. 

137 See Order No. 33. 

39 
B. Infringement 

1. Claim 17 

SanDisk asserts that Flash memory system products that incorporate accused Phison 

controllers infringe claim 17 of the' 424 patent. 138 According to [ 

] 139 

Respondents assert that the Phison 2231 and 3006 controllers do not infringe claim 17, 

because step (b) requires [ 

] According to Respondents, if claim 17 is broad enough that the Phison 

controllers infringe, then it is certainly invalid as anticipated by the Sinclair' 321 patent. 140 

Staff agrees with SanDisk that Respondents infringe claim 17. According to Staff, 

Respondents premise their non-infringement argument on a faulty construction of step (b) in claim 

17.141 

138 CIB 62; 69. 

139 CIB 69. 

140 RIB 47-49. 

141 SIB 31. 

40 
a. Preamble: "A method of operating a non-volatile memory system 

having an array of memory storage elements organized into at 

least two sub-arrays, wherein the individual sub-arrays are 

divided into a plurality of non-overlapping blocks of storage 

elements wherein a block contains the smallest group of memory 

storage elements that are erasable together, and the individual 

blocks are divided into a plurality of pages of storage elements 

wherein a page is the smallest group of memory storage elements 

that are programmable together, comprising" 

SanDisk asserts that the accused Phison controllers satisfy the preamble of claim 17.142 

Specifically, SanDisk asserts that: (1) the accused Phison controllers reside in non-volatile memory 

systems such as USB drives and memory cards, (2) the NAND memories used in these systems have 

one or more arrays of storage elements or cells, (3) each array is organized into sub-arrays (referred 

to as "planes") consisting of "two or more blocks in a physically distinct subdivision or an array in 

which read, write, and/or erase operations can be performed independently," and (4) within each 

plane, the NAND cells are organized as non-overlapping "blocks" which are "the smallest group of 

cells that are erasable together," and further divided into "pages" which are "the smallest group of 

memory storage elements that are programmable together.,,143 

Phison does not address the preamble and therefore does not dispute that the limitations of 

the preamble are met by its controllers. 

Accordingly, the undersigned agrees that Phison's controllers meet the limitation of the 

preamble of claim 17. 

142 CIB 69; CRB 26-27. 

143 CIB 69-70. 

41 
b. Step (a): " linking at least one block from individual ones of said 

at least two sub-arrays to form a metablock wherein its 

component blocks are erased together as a unit" 

SanDisk asserts that the accused Phison controllers satisfy step (a) of claim 17.144 

Specifically, SanDisk asserts that when a host system seeks to store original data in the accused 

Phison memory system, the Phison controller [ 

Phison does not address step (a) and therefore does not dispute that the limitations of step 

(a) are met by its controllers. 

Accordingly, the undersigned agrees that Phison's controllers meet the limitation of step (a) 

of claim 17. 

c. Step (b): "and updating pages of original data within any of the 

metablock component blocks less than all the pages within the 

block by programming replacement data into pages within 

another at least one block in only a designated one of the subarrays regardless of which sub-array the data being updated is 

stored." 

SanDisk asserts that the accused Phison controllers satisfy step (b) of claim 17.146 

Specifically, SanDisk [ 

144 CIB 70; CRB 26-27. 

145 CIB 70. 

146 CIB 70-72. 

42 
[ 

] 148 

SanDisk asserts that Respondents are attempting to rewrite the agreed-upon claim 

construction in order to avoid infringement. SanDisk argues that when claim 17 is read as a whole, 

it is clear that the term "pages," although plural, does not exclude single page updates. SanDisk cites 

to Versa Corp. v. AG-Bag Int'/ Ltd. in support of the proposition that "the plural can describe a 

universe ranging from one to some higher number, rather than require more than one item.,,149 

Staff agrees with SanDisk and makes similar arguments, citing to Versal50 and arguing that, 

within the context of the '424 patent, when the patentees intended to refer to more than one page, 

they explicitly did so by reciting a "plurality of pages," as seen in the preamble. Furthermore, Staff 

asserts that its claim construction is consistent with the specification's description of a "metablock 

operation" and that Respondents' construction would impermissibly exclude the preferred 

embodiment. 151 Staff also cites to the "summary of the invention" in support. 152 

Respondents assert that claim 17 explicitly requires "updating pages," not a single page. And 

because it is only possible to program replacement data into pages within a multiple page update, 

147 CIB 70. 

148 CIB 70-71 citing Subramanian, Tr. 1158, 1163, 1208. 

149 CIB 72 citing Versa Corp. v. AG-Bag Int'l Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) 

("Versa"). 

150 SIB 32 citing Versa, 392 F.3d at 1330; Dayco Products, Inc. v. Total Containment, Inc., 

258 F.3d 1317,1328 (Fed. Cir. 2001) ("Dayco"). 

151 SIB 33-34 citing the '424 patent, col. 12:28-30, 46-50; Helmsderferv. Bobrick Washroom 

Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008) ("Helmsderfer"); SRB 2-3. 

152 SIB 34 citing the '424 patent, col. 3:26-27. 

43 
Respondents assert that claim 17 requires updating two or more pages. According to Respondents, 

the multiple page update could be two successive single page updates or a single multiple page 

update, and infringement only occurs after multiple pages have been updated. In support, 

Respondents state that the sole embodiment in the specification teaches multiple page updates. 153 

Furthermore, Respondents argue that the general rule in claim construction is that the plural form 

requires more than one. 154 

Respondents also assert that the language of step (b) requires that one and only one of the 

sub-arrays of the flash memory be designated to store replacement data for a particular metablock 

regardless of where the old data is stored, as shown in Figure 16.155 According to Respondents, 

[ 

]156 In support, Respondents cite to Federal Circuit case law which states that "only" 

means "only." 157 [ 

SanDisk counters Respondents' argument that the specification does not teach single page 

updates because of Federal Circuit case law which states that even when the specification describes 

only a single embodiment, the claims of the patent will not be read restrictively unless the patentee 

has demonstrated a clear intention to limit the claim scope using "words or expressions of manifest 

153 RIB 52; RRB 6. 

154 RIB 52-53 citing Electro Scientific Industries, Inc. v. Dynamic Details, Inc., 307 F.3d 

1343, 1349-50 (Fed. Cir. 2002) ("Electro Scientific "); RRB 7. 

155 RIB 53-54. 

156 RIB 54. 

157 RIB 54 citing Elekta Instruments SA. v. 0. UR. Scientific Int'l, Inc., 214 F.3d 1302 (Fed. 

Cir. 2000) ("Elekta"). 

158 RIB 54. 

44 
exclusion or restriction.,,159 Furthermore, SanDisk argues that the "Summary of the Invention" 

expressly states that the metablock embodiment is "particularly useful when the memory system 

frequently updates single pages from a metablock." 

As to Respondents' sub-array argument, while Staff agrees that the recitation of "only a 

designated one of the sub-arrays" requires a method where all replacement data is programmed into 

only one designated sub-array, Staff argues that claim 17 does not require the use of a system which 

necessarily stores all updated data within only one sub-array. Staff argues that in the situation where 

only one page of data is being updated within the metablock, the claim limitation will be met if the 

replacement data for that one page is stored in only one sub-array. Conversely, Staff acknowledges 

that when more than one page of data is being updated, a method which programs each page of 

replacement data into different sub-arrays, does not infringe claim 17. Staff asserts that the mere fact 

that an apparatus has potential noninfringing uses does not mean that it cannot be used to practice 

an infringing method. 160 

Respondents counter SanDisk's and Staff's arguments that, despite the unequivocal plural 

term "pages," the claim may be practiced by updating a single page based on the Dayco Products 

and Versa cases. According to Respondents, the limited exception to the rule that a plural limitation 

may include the singular only applies where the context requires such an interpretation, and that this 

is not the case for claim 17.161 

Respondents also counter Dr. Rhyne's testimony that [ 

159 CIB 72 citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) 

("Liebel-Flarsheim"). 

160 SIB 35. 

161 RIB 53. 

45 
[ 

] Respondents argue that [ ] never appears in claim 

17 or the specification and that Dr. Rhyne's test should be disregarded. 162 

The parties agreed that the construction of the term "updating pages of original data within 

any ofthe metablock component blocks less than all the pages within the block" should be construed 

as "updating fewer than all the pages of a block within the metablock.,,163 SanDisk and Staff assert 

that the stipulated construction of this claim term includes an update to a single page of data, while 

Respondents argue that it requires updates to multiple pages. There is no dispute among the parties 

regarding the operation of Phis on's controllers and that infringement hinges on claim construction. 

The undersigned finds Respondents' arguments to be persuasive. The plain meaning of the 

term "pages" clearly indicates more than one page. There is no indication within the specification 

that the patentees intended the word "pages" to indicate anything other than the plain and ordinary 

meaning of the term "pages." While there may be a reference in the "Summary of the Invention" that 

the metablock embodiment is "particularly useful when the memory system frequently updates single 

pages from a metablock," the claim specifically refers to "pages." Furthermore, the example in the 

preferred embodiment refers to multiple pages. 164 In addition, although there is Federal Circuit case 

law which states that "the plural can describe a universe ranging from one to some higher number, 

rather than require more than one item," 165 such exceptions should be limited to situations where the 

context requires such an interpretation, which the undersigned finds is not applicable here. 

162 RIB 55. 

163 See Order No. 33 at 57. 

164 See the '424 patent, col. 2:23-3:31, 12:28-30,46-50. 

165 Versa, 392 F.3d at 1330 (italics added). 

46 
Accordingly, the use of the term "pages" in the claim term requires updates to multiple pages. 

There is no disagreement among the parties that if the claim is interpreted in this manner, that 

Phison's controllers do not infringe. Therefore, the undersigned finds that Phison's 2231 and 3006 

controllers do not infringe step (b) of claim 17. As the undersigned has found that this limitation is 

not met, the undersigned does not make any findings with regard to Respondent's one plane 

argument. 

d. Claim 17 Conclusion 

Each and every limitation of claim term must be met in order for there to be a finding of 

infringement. SanDisk has failed to show that Phison's controller infringes step (b) of claim 17. 

Accordingly, SanDisk has failed to show that Phison's controllers infringe claim 17. 

2. Claim 20 

While claim 20 is not directly asserted against any of the Respondents, claims 24 and 30, 

which depend from claim 20, are asserted against Respondents. Therefore, a discussion regarding 

infringement of claim 20 is necessary. 

a. Preamble: "In a re-programmable non-volatile memory system 

having a plurality of blocks of memory storage elements that are 

erasable together as a unit, the plurality of blocks individually 

being divided into a plurality of a given number of pages of 

memory storage elements that are programmable together, a 

method of operating the memory system, comprising" 

(1) Phison 

SanDisk summarizes its opinion of how Phison' s controllers operate. 166 SanDisk asserts that 

166 em 73-75. 

47 
it is undisputed that Flash memory systems that use a Phison controller meet claims 24' s preamble. 167 

Specifically, SanDisk asserts that: [ 

f68 Staff agrees. 169 Phison does not address the preamble and 

therefore does not dispute that the limitations of the preamble are met by its controllers. 17o 

Accordingly, the undersigned agrees that Phison's controllers meet the limitations of the 

preamble of claim 20. 

(2) SMI 

SanDisk summarizes its opinion of how SMI's controllers operate. 17I SanDisk asserts that 

the parties agree that Flash memory systems that include a SMI Flash memory controller meet the 

preamble of claim 24.172 Staff agrees. 173 SMI does not address the preamble and therefore do not 

dispute that the limitations of the preamble are met by its controllers. 174 

Accordingly, the undersigned agrees that SMI's controllers meet the limitations of the 

preamble of claim 20. 

167 While SanDisk puts its analysis under the heading of claim 24, the other parties detail their 

arguments under claim 20, which is the independent claim from which claim 24 depends. According 

to SanDisk, "[i]t is the same claim language at issue either way." CRB 29, n. 18. The undersigned 

hereafter will treat SanDisk's arguments as arising under claim 20. 

168 CIB 75. 

169 SIB 38 citing CX-1008C (Rhyne Direct) at Q. 363. 

170 RRB 8. 

171 CIB 92-94. 

172 CIB 94-95. 

173 SIB 38 citing CX-1008C (Rhyne Direct) at Q. 363. 

174 RRB 8. 

48 
(3) Skymedi 

SanDisk summarizes its opinion of how Skymedi's controllers operate. 175 SanDisk asserts 

that the parties agree that Flash memory systems that include a Skymedi Flash memory controller 

meet the preamble of claim 24.176 Staff agrees. 177 Skymedi does not address the preamble .and 

therefore do not dispute that the limitations of the preamble are met by its controllers. 178 

Accordingly, the undersigned agrees that Skymedi's controllers meet the limitations of the 

preamble of claim 20. 

(4) Conclusion as to the Preamble 

As detailed above, the undersigned finds that the flash memory controllers of Respondents 

Phison, SMI, and Skymedi meet the limitations of the preamble of claim 20. 

b. Step ( a): "programming individual ones of a first plurality of said 

given number of pages in each of at least a first block with 

original data and a logical page address associated with the 

original data" 

(1) Phis on 

(a) Literal Infringement 

SanDisk asserts that it is undisputed that Phison' s CF ISSD controllers literally practice step 

(a). According to SanDisk, Phison's expert, Dr. Subramanian, admitted that Phison's CF/SSD 

controllers meet this limitation and that SanDisk's expert, Dr. Rhyne, agrees.179 Staff agrees. 180 

175 CIB 99-101. 

176 CIB 101-02. 

177 SIB 38 citing CX-1008C (Rhyne Direct) at Q. 363. 

178 RRB 8. 

179 CIB 76 citing Subramanian, Tr. 1106,1150; CX-1008C (Rhyne Direct) at Q. 283-91, 301-

02,379-81. 

180 SIB 39; SRB 4. 

49 
As to Phison's CF/SSD controllers, the parties agree that these controllers literally satisfy 

step (a). Accordingly, the undersigned agrees that Phison's CF/SSD controllers meet the limitations 

of step (a) of claim 20. 

(b) Infringement under the Doctrine of Equivalents 

SanDisk asserts that it is undisputed that Phison memory systems [ 

] 181 

As to Phison's USB controllers, SanDisk asserts that Phison infringes under the doctrine of 

equivalents because there is only an insubstantial difference between [ 

181 CIB 75. 

182 CIB 76. 

50 

182 

] 
]183 SanDisk argues that a person of ordinary skill in the art would find the 

difference between [ 

Applying the function-way-result test, SanDisk argues that the test is met. As to "function," 

SanDisk argues that [ 

] performs the same function as the logical page address because [ 

] As to "way," SanDisk argues that [ 

]performs the same function 

in the same way because [ 

] As to "result," SanDisk argues that [ 

] achieves the same result as programming the literal logical 

page offset into the pages of a block containing original data because [ 

Respondents assert that, during the hearing, SanDisk admitted that the Phison 2231 

controller, the Skymedi 1606F controllers, and all of the SMI controllers do not literally practice step 

( a) because [ ] and that 

183 CIB 77-78. 

184 CIB 78-79 citing CX-I008C (Rhyne Direct) at Q. 371; Subramanian, Tr. 1015-18, 1026-

29, 1038-39; Mercer, Tr. 1559-61, 1565-67, 1569-73. 

185 CIB 79-80 citing CX-I008C (Rhyne Direct) at Q. 371, 374-75. See also CRB 34-35. 

51 
SanDisk is asserting infringement against these accused products under the doctrine of equivalents. 186 

Respondents argue that the evidence shows that these controllers do not infringe step (a) under the 

doctrine of equivalents. 18? 

Respondents, in general, assert that SanDisk's doctrine of equivalents analysis contradicts 

the undersigned's claim construction order, as well as Federal Circuit precedent. Respondents assert 

that the undersigned construed the term "logical page address" to mean a "logical bock number and 

logical page offset." SanDisk has conceded that, under this claim construction, the Phison 2231 

controller, the SMI controllers, and the Skymedi IPN1606F controllers do not literally infringe this 

limitation, but assert that they infringe under the doctrine of equivalents. 188 Respondents argue that 

SanDisk is attempting to get around the claim construction by attempting to reclaim a construction 

that was expressly rejected. 189 

According to Respondents, SanDisk's arguments should also be rejected because SanDisk's 

expert, Dr. Rhyne, has an incorrect understanding of how the doctrine of equivalents products 

operate. 190 Respondents argue that Dr. Rhyne is attempting to assert that [ 

] which is directly contradicted by the '424 patent. 191 Specifically, Respondents 

note that the '424 patent absolutely requires the programming of logical page offsets in pages of 

186 RIB 20 citing Rhyne, Tr. 201-02. 

18? RIB 20. 

188 RIB 14 citing Rhyne, Tr. 201-02. 

189 RIB 15. 

190 RIB 14. 

191 RIB 15-16. 

52 
original data and that [ ]192 In addition, 

Respondents argue that SanDisk's proposed equivalents would vitiate the logical page offset 

requirement in step (a).193 

As to SanDisk's function-way-result test, Respondents assert that the proposed equivalent 

] which is contrary to the 

claimed function of providing the logical page address to be programmed within the page itself. 194 

Respondents also counter Dr. Rhyne's assertion regarding that his way argument is inconsistent. 195 

Specifically as to Phison, Phison asserts that SanDisk' s doctrine of equivalents argument is 

factually incorrect. 196 According to Phison, SanDisk accuses the Phison 2231 controller of practicing 

step (a) by[ 

273-74. 

197 

199 ] 

192 RIB 16-17 citing JX -2 (the '424 patent), claim 20 and Figs. 8 and 10, Rhyne, Tr. 197-98, 

193 RIB 17-18. 

194 RIB 19. 

195 RIB 19. 

196 Specifically, Respondents argue that SanDisk's expert, Dr. Rhyne, has significant factual 

errors with respect to how Phison's accused controllers operate and is inconsistent based on a 

comparison of Phison' s 2231 and 2251 controllers. RIB 20-21. 

197 RIB 20 citing Rhyne, Tr. 201-02. 

198 RIB 20 citing Rhyne, Tr. 448-49. See also RRX-17C (Yang Direct) at Q. 111 and 

Subramanian, Tr. 1123-24, 1127, 1248-49. 

199 RIB 20 citing Rhyne, Tr. 216 and CX-1008C (Rhyne Direct) at Q. 371. See also JX-173C 

(continued ... ) 

53 
[ 

Staff agrees with Phison that SanDisk has failed to satisfY its burden of proving that Phison' s 

USB controllers can be used to practice the limitations recited in step (a) under the doctrine of 

equivalents.201 According to Staff, the evidence shows that [ 

202 

203 

While Staff agrees with Phison that the function is different, Staff does not agree that 

consolidation is an express requirement of claim 20.205 Staff also asserts that the '424 patent 

contemplates a system which locks the original blocks, such that the physical order is always the 

same as the logical order. 206 Therefore, Staff asserts that [ 

] does not necessarily constitute a substantial difference from the claimed system.207 

Furthermore, Staff agrees with SanDisk that SanDisk's arguments do not impermissibly vitiate any 

19\ ... continued) 

(Hsu Dep) at 49-50. 

200 RIB 20-21 citing Rhyne, Tr. 451, 457 and JX-173C (Hsu Dep) at 57, 61. See also 

Subramanian, Tr. 1250. 

201 SIB 41. 

202 SIB 43. 

203 SIB 47-49. 

204 SIB 50-51. 

205 SIB 43-45 citing Subramanian, Tr. 1155. 

206 SIB 45-46. 

207 SIB 46. 

54 
express claim limitations.208 

SanDisk counters Phison's doctrine of equivalents arguments. According to SanDisk, 

Phison is attempting to avoid infringement by making erroneous statements [ 

SanDisk also counters Phison's arguments that SanDisk has misapplied the undersigned's 

claim construction and taken a position inconsistent with the '424 patent. SanDisk asserts that it 

has fully honored the claim construction for claim 24 set forth in Order No. 33, which requires 

programming the page of a first block, [ ) with original data and the logical page 

address, comprised of a logical block number and a logical page offset, associated with the data. 

SanDisk asserts that it is not vitiating a claim limitation because SanDisk is not asserting that "not 

programming" is equivalent to programming because SanDisk's argument is limited to a product 

that, [ 

] Finally, SanDisk asserts that its doctrine of equivalents argument is not inconsistent with 

Figure 14 in the '424 patent because Figure 14 relates to programming updated data, not original 

208 SRB 8. 

209 CIB 80-82 citing Subramanian, Tr. 1115, 1130, 1132-33, 1136-38, 1142-43. See also 

CRB 38-40. 

55 
data. 210 

In addition, SanDisk asserts that Dr. Rhyne correctly described how the accused controllers 

operate. SanDisk also asserts that [ ] 

Rather, Dr. Rhyne testified that [ 

] which is a key factor in SanDisk's 

doctrine of equivalents analysis.2l1 

Staff also counters SanDisk' s arguments regarding Phison' s controllers [ 

] 212 

As to Phison's USB controllers, the undersigned agrees with Phison that SanDisk's doctrine 

of equivalents analysis contradicts the undersigned's claim construction order. In the claim 

construction order, the undersigned construed the term "logical page address" to mean a "logical 

block number and logical page offset." SanDisk has conceded that, under this claim construction, 

[ 

]213 While SanDisk urges the undersigned to find infringement under 

the doctrine of equivalents, the undersigned rejects such arguments as being overly broad. 

The evidence shows that the [ 

210 cm 82-84; CRB 31-33. 

2ll CRB 29-30. 

212 SIB 49-50. 

213 Rhyne, Tr. 201-02. 

214 RRX-18C (Subramanian Direct) at Q. 137. 

56 

214 

] 
[ 215 

216 

fl7 Therefore, there are substantial differences in 

function. 

Accordingly, the undersigned finds that SanDisk has failed to satisfy its burden of proving 

that Phison's USB controllers can be used to practice the limitations recited in step (a) under the 

doctrine of equivalents. 

(2) SMI - Infringement under the Doctrine of Equivalents 

SanDisk asserts that SMI's expert, Dr. Subramanian, admitted that SMI controllers meet the 

"original data" and "logical bock number" limitations in step (a).218 According to SanDisk, the only 

limitation in step (a) that is not literally met by SMI's controllers is the "logical page offset" portion 

of the "logical page address." SanDisk asserts that the evidence shows that SMI's controllers meet 

this limitation under the doctrine of equivalents.219 According to SanDisk, [ 

] Therefore, SanDisk asserts that a person of ordinary skill in the art would find 

215 RRX-18C (Subramanian Direct) at Q. 129. 

216RRX_18C (Subramanian Direct) at Q. 129. 

217 RRX-18C (Subramanian Direct) at Q. 129. See also JX-173C (Yang Dep) at 74-75. 

218 CIB 95 citing Subramanian, Tr. 1106-07, RRX-18C (Subramanian Rebuttal) at Q. 105. 

219 CIB 95. 

57 
that there is an insubstantial difference between [ 

] SanDisk also counters SMI's arguments that SanDisk is misapplying the 

undersigned's claim construction, as already discussed when addressing Phicom's arguments. 220 

SMI asserts that its controllers do not practice step (a) under the doctrine of equivalents 

because Dr. Rhyne's testimony is inaccurate and incomplete. According to SMI, its controllers 

[ 

[ 

220 CIB 95-96. 

221 RIB 23. 

58 
[ 

Furthermore, SMI asserts that SanDisk has not shown that the SMI controllers perfoffi1 the 

same function, way, result. As to function, [ 

]223 As to way, [ 

]224 As to result, [ 

Staff agrees with Respondents that SanDisk has failed to satisfY its burden of proving that 

SMI's controllers can be used to practice the limitations recited in step (a) under the doctrine of 

equivalents. 226 According to Staff, the evidence shows that the function served by [ 

222 RIB 24-25. 

223 RIB 25. 

224 RIB 25-26. 

225 RIB 26. 

226 SIB 41. 

227 SIB 43. 

228 SIB 53. 

227 

228 

59 

] 
] 229 

SanDisk counters SMI's and Staff's arguments, asserting that they misstate the function of 

a logical page address, and therefore do not analyze the function-way-result test correctly.230 

As to SMI's controllers, the undersigned agrees with SMI and Staffthat SanDisk's doctrine 

of equivalents analysis contradicts the undersigned's claim construction order. In the claim 

construction order, the undersigned construed the term "logical page address" to mean a "logical 

block number and logical page offset." SanDisk has conceded that, under this claim construction, 

the Phison 2231 controller, the SMI controllers, and the Skymedi IPN1606F controllers do not 

literally infringe this limitation. 231 While SanDisk urges the undersigned to find infringement under 

the doctrine of equivalents, the undersigned rejects such arguments as being overly broad. 

[ 

] 232 Therefore, there are substantial differences in function. 

Accordingly, the undersigned finds that SanDisk has failed to satisfy its burden of proving 

that SMI's controllers can be used to practice the limitations recited in step (a) under the doctrine 

of equivalents. 

229 SIB 53. 

230 CRB 43-44. 

231 Rhyne, Tr. 201-02. 

232 RRX-llC (J. Lee Rebuttal) at Q. 27-31; RRX-18C (Subramanian Direct) at Q. 198; 

Subramanian, Tr. 1233; Rhyne, Tr. 465. 

60 
(3) Skymedi 

(a) Literal Infringement 

SanDisk asserts that the evidence shows that Skymedi's IPN1603 controllers literally meet 

the "logical page offset" portion of the "logical page address" limitation.233 SanDisk asserts that 

Skymedi's own witness, Mr. Chang, agreed that [ 

Staff agrees with SanDisk that SanDisk has satisfied its burden of proving that Skymedi' s 

pre-July 1,2008 controllers literally satisfy step (a).235 According to Staff, the evidence shows that 

[ 

236 

237 

Skymedi asserts that its 1603 controller does not practice step (a) because it does not store 

233 CIB 102-05. 

234 CIB 102 citing Chang, Tr. 760. 

235 SRB 4-5. 

236 SIB 39 citing CX-1008C (Rhyne Direct) at Q 440; CX-810 (Huang Dep); Mercer, Tr. 

1577-78. 

237 SIB 40 citingRRX-34C (Mercer RebuttalNon-Infringement)atQ. 147; Mercer, Tr. 1581. 

238 SIB 40 citing CX-1008C (Rhyne Direct) at Q. 465. 

61 
a logical page offset. While SanDisk asserts that [ ] satisfies 

the requirement for programming a logical page address, Skymedi asserts that [ 

]239 Skymedi asserts that, even if [ ] were relevant, 

] in a page is clearly different from programming a logical page 

offset as the functions are different. A logical page address allows data to be stored anywhere in the 

chip, whereas [ 

] 240 

SanDisk counters Skymedi' s arguments. According to SanDisk, Skymedi' s sole argument 

as to non-infringement [ 

] was belied by Dr. Mercer's testimony 

at the hearing. SanDisk asserts that Dr. Mercer confirmed that Skymedi' s 1603 controller will 

program [ 

Skymedi counters SanDisk's and Staff s arguments. According to Skymedi, its controllers 

program [ 

] Therefore, Skymedi asserts that the "use" 

is completely unrelated to the claim limitations?42 

The undersigned finds SanDisk's and Staff~ arguments to be persuasive. The testimony of 

239 RIB 29 citing Rhyne, Tr. 371-72. 

240 RIB 30 citing JX-2 (the '424 patent) at col 2:57-62 and Rhyne, Tr. 186. 

241 CRB 37-38 citing Mercer, Tr. 1576, 1589-92. 

242 RRB 12, 18-19. 

62 
Dr. Mercer is undisputed that Skymedi' s 1603 controllers [ 

]243 Accordingly, Skymedi's 1603 controllers 

infringe step (a). 

(b) Infringement Under the Doctrine of Equivalents 

SanDisk asserts that SMI's expert, Dr. Mercer, admitted that Skymedi's controllers meet the 

"original data" and "logical bock number" limitations in step (a).244 According to SanDisk, the only 

limitation in step (a) that is not literally met by Skymedi's controllers is the "logical page offset" 

portion of the "logical page address." SanDisk asserts that the evidence shows that Skymedi's 

IPN1606F meet this limitation under the doctrine of equivalents?45 

Specifically, SanDisk asserts that there is an insubstantiality of difference between [ 

] which is similar to 

SanDisk's argument as to why the Phison USB and SMI controllers also infringe under the doctrine 

of equivalents.246 In further support, SanDisk notes that Skymedi was able to easily design around 

the '424 patent by [ ] 

which SanDisk argues is a simple design change in an attempt to overcome literal infringement. 

According to SanDisk, because the design change has no impact on performance, the change is 

insubstantial. 247 

Staff agrees with SanDisk that SanDisk has satisfied its burden of proving that Skymedi' s 

recently designed accused products can be used to practice the limitations recited in step (a) under 

243 Mercer, Tr. 1576, 1589-92. 

244 CIB 102 citing Mercer, Tr. 1576, 1584, 159l. 

245 CIB 102-05. 

246 CIB 104 citing lX-128C (Huang Dep) at 64-65; RRX-33C (Chang Rebuttal) at Q. 102. 

247 CIB 104-05 citing lX-128C (Huang Dep) at 64-65. 

63 
the doctrine of equivalents. 248 According to Staff, the evidence shows that the function served by 

[ ] in the accused Skymedi 1606F controller is 

insubstantially different. 249 Staff asserts that the Skymedi 1606F controller performs a function that 

is equivalent to programming a logical page offset when it [ 

250 

] which is performing substantially the same function as programming a logical 

page offset, which is to program information that can be used to determine the physical address 

corresponding to a given logical address. 251 Furthermore, Staff asserts that the evidence shows that 

one of ordinary skill in the art would have considered it a trivial design change to modify a system 

that literally infringes claim 20 of the '424 patent, such as Skymedi's IPN 1603, to the accused 

equivalent systems.252 

Skymedi asserts that the Skymedi 1606F controllers do not infringe step (a) under the 

doctrine of equivalents. According to Skymedi, Dr. Rhyne's assertion that the [ 

] as being equivalent to a logical page address should be rejected. Skymedi 

notes that while Dr. Rhyne agreed that the required logical page offset in the '424 patent will 

necessarily differ for each page of original data, Skymedi controllers are substantially different 

98. 

248 SIB 41. 

249 SIB 43. 

250 SIB 55-56 citingRRDX-40C at 5; RRX-33C (Chang Rebuttal) at Q. 68; Mercer, Tr. 1597-

251 SIB 56-57 citing JX-2 (the '424 patent) at col. 10:44-59; CX-1008C (Rhyne Direct) at Q. 

477,481-82. 

252 SIB 57-58 citing CX-I008C (Rhyne Direct) at Q. 485; CX-81 1 (Huang Dep). 

64 
because [ 

253 

] 254 

SanDisk counters Skymedi's arguments that it does not infringe. First, as to Skymedi's 

argument that [ 

]255 Second, as to 

Skymedi's argument that [ 

]256 In the alternative, SanDisk 

asserts that [ 

]257 Furthermore, SanDisk asserts that the fact that 

[ 

] does not make the Skymedi controller 

substantially different because [ 

] In 

addition, [ ] 

253 RIB 27 citing Rhyne, Tr. 355, 358-59, 362-64, 370, CX-1008 (Rhyne Direct) at Q. 476. 

254 RIB 28 citing Rhyne, Tr. 347-48, CX-1008C (Rhyne Direct) at Q.475. 

255 CIB 102-03 citing Mercer, Tr. 1581. 

256 CIB 103 citingCX-1008C (Rhyne Direct) atQ. 465; JX-128C (Huang Dep)at 81-82,127-

30. 

257 CIB 103-04. 

65 
As to Skymedi' s argument that SanDisk is not applying the undersigned's claim construction, 

SanDisk asserts that Skymedi's argument should be rejected for the same reason that Phison's and 

SMI's arguments should faiU59 

Skymedi counters SanDisk's and Staff's arguments. According to Skymedi, the values that 

SanDisk identifies as being equivalent to the logical page offsets are [ 

] In 

addition, Skymedi asserts that the claim requires using the values identified as equivalent to logical 

page offsets for use in a plurality of pages. [ 

] 260 

The undersigned· agrees with SanDisk and Staff that, Skymedi's 1606F controllers infringe 

step (a) of claim 20 because the Skymedi 1606F controller performs a function that is equivalent to 

programming a logical page offset when it [ 

261 

258 CRB 36-37. 

259 CIB 105. 

260 RRB 11-12. 

261 RRDX-40C at 5; RRX-33C (Chang Rebuttal) at Q. 68; Mercer, Tr. 1597-98. 

66 

] 
[ 

] 262 Accordingly, SanDisk has shown that Skymedi's 1606F controllers meet the 

function-way-result test and infringe under the doctrine of equivalents. 

(4) Conclusion as to Step (a) 

As detailed above, the undersigned finds that Phison's CF/SSD controllers literally practice 

step (a), while Phison's USB controllers do not infringe, either literally or under the doctrine of 

equivalents. The undersigned finds that none ofSMI's controllers infringe step (a), either literally 

or under the doctrine of equivalents. The undersigned finds that Skymedi' s IPN 1603 controllers 

literally practice step ( a), while Skymedi' s IPN 1606F controllers infringe step (a) under the doctrine 

of equivalents. 

c. Step (b): "thereafter programming individual ones of a second 

plurality of a total number of pages less than said given number 

in a second block with updated data and a logical page address 

associated with the updated data, wherein the logical page 

addresses associated with the updated data programmed into the 

second plurality of pages are the same as those associated with 

the original data programmed into the first plurality of pages, 

and" 

SanDisk asserts that each of Respondents' accused products meets the limitations of step 

(b).263 Staff agrees with SanDisk that the accused controllers practice step (b) either literally or under 

the doctrine of equivalents.264 

Respondents assert the Phison 2231 controller, the Skymedi 1603 and 1606F controllers, and 

all of the SMI controllers do not literally practice step 20(b) because [ 

262 JX-2 (the '424 patent) at col. 10:44-59; CX-1008C (Rhyne Direct) at Q. 477, 481-82. 

263 CRB 45. See also CX-1008C (Rhyne Direct) at Q. 384-92,487-94,567-74. 

264 SIB 59; SRB 9. 

67 

] 
[ 

] 265 According to Respondents, Dr. Rhyne asserts that step (b) 

requires programming pages of updated data with the same logical page address as the superseded 

page of original data, where "same" means that if you looked at them as numerical values, they 

would be the same.266 Respondents agree that Dr. Rhyne's testimony comports with the '424 patent 

and is consistent with the representations made during the prosecution history?67 

(1) Phis on 

SanDisk asserts that the evidence shows that [ 

As to Phison's CF/SSD controllers, SanDisk argues that Phison's expert, Dr. Subramanian, 

admitted that Phison's CF/SSD controllers literally practice step (b) and that SanDisk's expert, Dr. 

Rhyne, agrees.269 

As to Phison' s USB controllers, SanDisk argues that [ 

265 RIB 32. 

266 RIB 31 citing Rhyne, Tr. 274-75,277,332; RRB 19. 

267 RIB 31-32 citing Fig. 8; RRB 19. 

268 CrB 85-87. 

] 

269 CrB 85-86 citing Subramanian, Tr. 1088-89, 1150-51; CX-1008C (Rhyne Direct) at Q. 

390-92. 

68 
[ ] 270 Furthermore, SanDisk asserts that its expert 

agrees that Phison's USB controllers practice step (b ).271 

Phison asserts that its Phison 2231 controllers [ 

272 

273 

Staff argues that it is undisputed that all of Respondents' controllers [ 

] 

Therefore, Staff asserts that SanDisk has shown that flash memory systems incorporating the accused 

Phison USB controllers satisfY the limitation of step (b) either literally or under the doctrine of 

equivalents.275 

As to Phison's CF/SSD controllers, there appears to be no dispute that such controllers 

literally infringe step (b). Accordingly, the undersigned agrees with the parties that Phison' s CF ISSD 

controllers literally infringe step (b). 

270 cm 86-87 citing Subramanian, Tr. 1088-89, 1148; RRDX-17 (Non-sequential updates 

in a system which does not use logical page offsets). 

271 cm 87 citing CX-1008C (Rhyne Direct) at Q. 384-89. 

272 See RIB 34 citing RRX-18C (Subramanian Direct) at Q. 160. 

273 RIB 35. 

274 RRB 20 citing RRX-18C (Subramanian Direct) at Q. 160. 

275 SIB 59; SRB 9. 

69 
As to Phison's USB controllers, the undersigned find's Phison's arguments persuasive. The 

evidence shows that the Phison 2231 controllers [ 

]276 Accordingly, Phison's 2231 controllers do not infringe step (b). 

(2) 8MI 

SanDisk asserts that the evidence shows that SMI' s controllers practice step (b) because [ 

] 

SanDisk asserts that SMI's expert, Dr. Subramanian, conceded as much and that SanDisk's expert, 

Dr. Rhyne, agrees?77 

According to SMI, its controllers have a different address programmed into a page of 

uploaded data and the corresponding superseded page of original data. Therefore the SMI controllers 

do not practice step (b).278 Specifically, [ 

276 RRX-18C (Subramanian Direct) at Q. 157, 160. 

277 cm 96-97 citing Subramanian, Tr. lO82, lO88-89; CX-1008C (Rhyne Direct) at Q. 567-

74. 

278 RIB 33 citing Rhyne, Tr. 287; Subramanian, Tr. 1282-83. 

279 RIB 34 citing Rhyne 282-83; CX-1008C (Rhyne Direct) at Q. 537-38; Subramanian, Tr. 

1228-29; RRX-18C (Subramanian Direct) at Q. 198,208,210; RRX-11C (J. Lee Rebuttal) at Q. 27-

(continued ... ) 

70 
The undersigned find's SMI's arguments to be persuasive. Step (b) of claim 20 requires 

programming pages of updated data with the same logical page address as the superseded page of 

original data. The evidence [ 

] 280 Accordingly, SMI's controllers do not infringe step (b). 

(3) Skymedi 

SanDisk asserts that the evidence shows that Skymedi's controllers practice step (b). 

According to SanDisk, in Skymedi' s IPN 1603, [ 

] as confirmed by Skymedi' s employee, Mr. 

Huang.281 SanDisk also cites to its expert, Dr. Rhyne, in support.282 

Skymedi asserts that the Skymedi 1606F controller does not program a logical page offset 

or its equivalent into the pages of a block of original data because it programs [ 

F83 Furthermore, Respondents assert that Dr. Rhyne failed to identify how 

27\ ... continued) 

31; RRDX-21C; RRB 20. 

280 Rhyne, Tr. 287. 

281 CIB 105-06 citing CFF 37.23-.24. 

282 CIB 106 citing CX-1008C (Rhyne Direct) at Q. 486-94. 

283 RIB 35 citing RRX-34C (Mercer Rebuttal Non-Infringement) at Q. 175-76, 182-84. 

71 
any of the Skymedi controllers meet the limitations of the wherein clause, which requires the same 

address be programmed in the pages of original and updated data. 284 

Staff argues that it is undisputed that all of Respondents' controllers [ 

] Staff asserts that the evidence shows that the accused Skymedi post-July 

2008 controllers program information into the first plurality of pages that is at least equivalent to the 

logical page address that is programmed into the second plurality of pages containing updated data 

and that the Skymedi controllers infringe step (b) under the doctrine of equivalents.285 As to 

Skymedi's 1603 controllers, Staff asserts that the these controllers [ 

] Therefore, Staff asserts that 

SanDisk has shown that flash memory systems incorporating the accused Skymedi controllers 

satisfY the limitation of step (b) either literally or under the doctrine of equivalents.286 

Skymedi counters Staffs arguments that Skymedi's controllers practice step (b) under the 

doctrine of equivalents. According to Skymedi, SanDisk has not put forth any evidence that any 

accused products practice step (b) under the doctrine of equivalents on an element-by-element basis, 

and that SanDisk's only evidence on doctrine of equivalents went to step (a), which was discussed 

above. 287 

As to Skymedi' s 1603 controllers, there appears to be no dispute that such controllers literally 

284 RIB 35 citing RRX-34C (Mercer Rebuttal Non-Infringement) at Q. 179; RRB 20. 

285 SIB 59; SRB 9. 

286 SIB 59; SRB 9. 

287 RRB 20-21. 

72 
infringe step (b). Accordingly, the undersigned agrees with the parties that Skymedi's 1603 

controllers literally infringe step (b). 

With respect to Skymedi' s 1606F controllers, the undersigned agrees with Skymedi that 

SanDisk has not set forth whether Skymedi's 1606F controllers infringe under the doctrine of 

equivalents, and therefore the issue ofinfringement under the doctrine of equivalents for step (b) will 

not be considered for these accused products.288 Furthermore, the undersigned agrees with Skymedi 

that the evidence shows that Skymedi' s 1606F controllers do not program the same logical page 

address, including the same logical block number and logical page offset, into the updated pages of 

data as was programmed into the corresponding pages of original data?89 Accordingly, Skymedi's 

1606F controllers do not infringe step (b). 

(4) Conclusion as to Step (b) 

As detailed above, the undersigned finds that Phison's CF/SSD controllers literally practice 

step (b), while Phison's USB controllers do not infringe step (b). The undersigned also finds that 

none of SMI's controllers infringe step (b). The undersigned finds that Skymedi's IPN1603 

controllers literally infringe step (b), while Skymedi' s IPN 1606F controllers do not infringe step (b). 

d. Step (c): "thereafter reading and assembling data from the first 

and second plurality of pages including, for pages having the 

same logical addresses, selecting the updated data from the pages 

most recently programmed and omitting use of the original data 

from the pages earlier programmed" 

SanDisk asserts that step (c) is infringed by Respondents' accused products whenever [ 

] 

288 See CIB 105 which states that "Flash memory systems with Skymedi controllers lite.cally 

meet the limitations of claim 24 step b." 

289 RRX-34C (Mercer Rebuttal Non-Infringement) at Q. 176, 182. 

73 
f90 Furthermore, SanDisk asserts that the "assembling" 

limitation is satisfied by the accused controllers [ 

f91 Staff 

agrees with SanDisk that SanDisk has met its burden of proof with respect to step (C).292 

Respondents assert the accused controllers do not literally practice step 20( c) for three 

reasons. [ 

As to the first argument, Respondents assert that all the accused controllers [ 

] Accordingly, Respondents argue that because the accused products 

As to the second argument, Respondents assert that SanDisk argued that the reading step in 

step (c) is illustrated by Figure 11 of the '424 patent and that the undersigned's construction of 

"reading and assembling data from the first and second plurality of pages" confirms that the logical 

290 CIB 97, SIB 59-60 citing CX-1008C (Rhyne Direct) at Q. 394-403,496-512,576-584. 

291 CIB 97-98. 

292 SIB 60; SRB 10-11. 

293 RIB 36. 

294 RIB 36 citing Rhyne, Tr. 369; CX-1008C (Rhyne Direct) at Q. 535-538; RRX-18C 

(Subramanian Direct) at Q. 160; RRX-34C (Mercer Rebuttal Non-Infringement) at Q. 187. 

74 
page address for all pages must be read, whether or not those pages are superseded?95 According to 

Respondents, reading the logical page address within the first and second plurality of pages does not 

require reading the user data from all of those pages and that the ability to read the logical page 

address separately from the user data is important to step (C).296 Therefore, Respondents assert that 

step (c) requires reading the logical page address of each page, including superseded pages, of 

original data, and that there is a mechanism disclosed in the patent for reading the logical page 

address separately from the user data.297 

As to the third argument, Respondents assert that SanDisk argued that the assembly step in 

step (c) is illustrated by Figure 13 of the '424 patent. 298 Respondents argue that to meet this claim 

limitation, the assembly takes place in the controller's RAM, requires more than one page being 

assembled, and that only the "user data portions" of the most up-to-date pages are assembled into 

a data file.299 

Respondents counter SanDisk's and Staffs arguments. According to Respondents, while 

SanDisk and Staff point to Figure 12 in the '424 patent for support that the controller need not read 

the logical page address from any pages of superseded data, Respondents argue that Figure 12 does 

not relate to step (c) because step (c) requires reading the logical page address from each page of data 

within the blocks of original and updated data.30o 

As to SanDisk's and Staff s claim differentiation argument, Respondents assert that SanDisk 

295 RIB 36-38 citing Rhyne, Tr. 322. 

296 RIB 38 citing Rhyne, Tr. 217. 

297 RIB 39. 

298 RIB 41 citing Rhyne, Tr. 323; Subramanian, Tr. 1290-92. 

299 RIB 42 citing Subramanian, Tr. 1293, Rhyne, Tr. 325. 

300 RRB 21 citing Subramanian, Tr. 1029, 1290. 

75 
and Staff confuse the language of claim 22 and ignore the undersigned's construction of claim 20. 

According to Respondents, claim 22 requires reading all of the data from all of the pages of both the 

original and updated data block, and then ignoring the user data portions of the superseded pages, 

whereas claim 20 is broader than claim 22 and does not require that all of the data be read from each 

page. Rather, claim 20 only requires that the logical page address be read from each page.30l 

SanDisk counters Respondents' arguments. According to SanDisk, step (c) does not require 

reading the logical page address from all the pages of original data. Furthermore, SanDisk argues 

that Respondents impermissibly limit claim 20 to the "reverse read" technique because the '424 

patent also teaches a "table" technique when the reverse read technique is not used. 302 

Staff counters Respondents' arguments. As to Respondents' second argument, Staff argues 

that the claim does not require that the logical page address, consisting of an LBN and logical page 

offset, must be read from each and every page stored in both the original and updated data blocks, 

including those pages in the original block that have been superceded by updated data. According 

to Staff, the undersigned's claim construction only requires reading the logical page address within 

the first and second plurality of pages and that this does not require that the same logical page 

address must be read from both the first and second plurality of pages or that the logical page 

addresses from all the pages must be read. In support, Staff cites to the' 424 patent which discloses 

that pages containing superceded data may be ignored or skipped during the read operation.303 Staff 

also refers to Figure 12 in the '424 patent for support of an embodiment that teaches that the 

controller may determine when a page in an original block has the same logical page address as a 

30l RRB 21-23. 

302 eRB 46-47 citing JX-2 (the '424 patent) at col. 9:57-65. 

303 SIB 61-62 citing JX-2 (the '424 patent), col. 9:57-65. 

76 
page in an update block based on a table that is populated in the controller's RAM rather than by 

reading all the logical page addresses within the original data block.304 

As to Respondents' third argument, Staff asserts that the undersigned's claim construction 

does not require an entire page to be omitted altogether when it contains valid sectors of data, as the 

claim only requires "omitting use of the original data from the pages earlier programmed. ,,305 

(1) Phison 

SanDisk asserts that Phison's CF/SSD and USB controllers both practice step (C).306 With 

respect to the CF ISSD controllers, SanDisk asserts that these controllers [ 

304 SIB 62; SRB 10-11. 

305 SIB 62-63. 

307 

306 CIB 88 citing CX-1008C (Rhyne Direct) at Q.395-403. 

307 CIB 88. 

77 

] 
] 308 

SanDisk counters Phison's argument that step (c) requires [ 

] as an attempt to rewrite 

the undersigned's claim construction. According to SanDisk, the construction of the "reading and 

assembling" limitation is clear, which refers to reading the logical page address, which is singular, 

not plura1.309 

SanDisk also counters Phison's attempt to limit claim 24 to a system that reads the logical 

page addresses stored in the superseded pages of an original block as an attempt to improperly limit 

the scope ofthe claim to a "reverse read." SanDisk argues that claims 20, 24, and 30 are not limited 

to the "reverse read" technique, based on the doctrine of claim differentiation.310 

With respect to the USB controllers, SanDisk asserts that these controllers practice step (c) 

[ 

308 CIB 88. 

309 CIB 89. 

311 

310 cm 90 comparing claims 22 and 20. 

311 cm 91. 

] 

78 
] 312 

SanDisk counters Phison's arguments regarding the USB controllers similarly to the 

arguments for the CF/SSD controllers. 313 SanDisk also counters Phison's argument that the claim 

requires that the entirety of one of the two pages be omitted for pages having the same logical page 

address as being inconsistent with the plain language of the claim.314 

Phison asserts that the Phison 2231 controller [ 

Phison asserts that the Phison 3006 controller [ 

] 316 Therefore, Phison asserts that the Phison 3006 controllers do not infringe 

step (c). 

As to Respondents' first argument, Staff counters that, with respect to Phison's 3006 

controllers, [ 

312 CIB 91. 

313 CIB 91-92. 

314 CIB 92. 

315 RIB 36. 

] In support, Staff notes that Dr. Subramanian testified that 

316 RIB 40 citing RRX-18C (Subramanian Direct) at Q. 16-71. 

79 
The undersigned finds Respondents' arguments to be persuasive. The evidence shows that, 

with respect to the Phison 2231 controller, [ 

]318 and that withrespectto the Phison 3001 controller, [ 

]319 Accordingly, neither of Phis on's accused controllers infringe step (c). 

(2) SMI 

SanDisk asserts that SMI's controllers, [ ] practice step (c) 

during a read operation and during a consolidation event. Specifically, during the read operation 

of un-updated pages from the mother block, [ 

320 

317 SIB 60-61 citing Subramanian, Tr. 1155-56. 

318 RRX-18C (Subramanian Direct) at Q. 160. 

319 RRX-18C (Subramanian Direct) at Q. 169-71. 

320 CIB 97. 

321 CIB 97-98. 

80 

] 
322 

] 323 

SanDisk counters SMI's arguments, [ ] that step (c) requires 

reading the logical page address in each page of the original block that contains data that has been 

superseded by pages of data stored in the update block.324 

SanDisk counters SMI's additional argument that SMI's controllers do not assemble a "data 

file." According to SanDisk, [ 

Respondents assert that Dr. Rhyne's testimony that SMI controllers [ 

] According to Respondents, 

SMI controllers [ ] 

322 RIB 39 citing RRX-18C (Subramanian Direct) at Q. 155,216; RRX-34C (Mercer Rebuttal 

Non-Infringement) at Q. 174. 

323 RIB 40 citing RRX-18C (Subramanian Direct) at Q. 217; Subramanian, Tr. 1288-89; CX1008C (Rhyne Direct) at Q. 536; Rhyne Tr. 318; RRX-11C (J. Lee Rebuttal) at Q. 25. 

324 CIB 98. 

325 CIB 98-99. 

81 
[ 

SanDisk counters Respondents' argument that [ 

]327 

328 

] 3.29 

The undersigned finds SMI's arguments to be persuasive. The evidence shows that SMI 

controllers do not store a logical page address within any page of original data,330 nor do they read 

any data from an out-of-date page,331 nor do they assemble a data file during a read operation because 

the SMI controllers transmit pages one at a time to the host.332 Accordingly, SMI's controllers do 

not infringe step (c). 

326 RIB 42-43 citing RRX-18C (Subramanian Direct) at Q. 195; Rhyne, Tr. 329, 585; RRB 

22-23. 

327 CRB 47-48. 

328 SIB 63-64. 

329 SIB 63-64. 

330 CX-1008C (Rhyne Direct) at Q. 535-38. 

331 RRX-18C (Subramanian Direct) at Q. 216. 

332 RRX-18C (Subramanian Direct) at Q. 195; Rhyne, Tr. 329 

82 
(3) Skymedi 

SanDisk asserts that Skymedi's controllers, [ ] 

practice step (c) during a read operation and during a consolidation event. 

333 

] 334 

Respondents assert that the Skymedi 1603 and 1 060F controllers do not[ 

] Accordingly, Respondents 

assert that the Skymedi controllers do not read every page from the original block and therefore, do 

not infringe step (c). 335 

333 CIB 106. 

334 CIB 106. 

335 RIB 41 citing RRX-34C (Mercer Rebuttal Non-Infringement) at Q. 187, 190-91, 194-95, 

199,210,212; Rhyne, Tr. 369. 

83 
Respondents assert that Skymedi controllers also do not infringe step (c) because its Skymedi 

controllers [ 

336 

SanDisk counters Skymedi's argument that it does not practice step (c) because step (c) 

requires reading the logical page address in each page of the original block for the same reasons that 

it counters Phison's and SMI's arguments.338 SanDisk also counters Skymedi's argument that it 

does not practice step (c) because its controllers do not assemble a "data file" for the same reasons 

that it counter's SMI's argument.339 

As to Respondents' first argument, Staff counters that Skymedi' s 1603 controllers literally 

infringe the limitation in step (c) because Skymedi' s controllers program [ 

]340 Also with respect to Respondents' first argument, 

Staff asserts that the evidence shows that the accused Skymedi 1606F controller performs this step 

at least under the doctrine of equivalents, because it [ 

] In support, Staff notes that Dr. Mercer testified [ ] 

336 RIB 43 citing RRX-34C (Mercer Rebuttal Non-Infringement) at Q. 225. 

337 RIB 43-44 citing CX-1008C (Rhyne Direct) at Q. 506, 511 and RRX-33C (Chang 

Rebuttal) at Q. 59. 

338 CIB 107. 

339 CIB 107. 

340 SIB 60-61. 

84 
[ 

] 341 

Staff also counters Respondents' additional argument that the Skymedi controllers do not 

assemble a "data file." Staff argues that there is no requirement from the claim that the required data 

file must be assembled and stored in RAM.342 

The undersigned finds Respondents' arguments to be persuasive. The evidence shows that, 

neither the Skymedi 1603 or 1606F controllers store a logical page address within any page of 

original data, nor do they read a logical page address from both a W block (mother block), and a 

corresponding R block (child block) and thus do not read every page from the original block, nor do 

they assemble the most up-to-date pages in a data file in the controller memory.343 Accordingly, 

neither of Skymedi' s accused controllers infringe step (c). 

(4) Conclusion as to Step (c) 

As detailed above, the undersigned finds that none of Phison's, SMI's, or Skymedi's 

controllers meet each and every limitation of claim (c). 

e. Conclusion as to Claim 20 

Each and every limitation of claim must be practiced in order for there to be infringement of 

a claim.344 As discussed above, SanDisk has not shown, by a preponderance of the evidence, that 

any of Phis on's, SMI's, or Skymedi's accused controllers meet each and every limitation of claim 

341 SIB 60-61 citing Mercer, Tr. 1628. 

342 SIB 63-64. 

343 RRX-34C (Mercer Rebuttal Non-Infringement) at Q. 187,225. 

344 London, 946 F.2d at 1538. 

85 
20. Accordingly, none of Phis on's, SMI's, or Skymedi's accused controllers infringe claim 20 of 

the '424 patent. 

3. Claim 24 

SanDisk asserts that all of Respondents' flash memory system products that incorporate 

accused controllers infringe claim 24 of the '424 patent. 345 According to SanDisk, Respondents 

concede that in the accused products, [ 

land that Respondents' own demonstrative 

exhibit shows [ 

] 346 

Respondents assert that none of the accused controllers infringe dependent claim 24 because 

SanDisk has failed to show that the accused controllers infringe independent claim 20. In addition, 

Respondents assert that dependent claim 24 is also not infringed because claim 24 requires that the 

offset position of the pages of updated data is caused to be different than the superseded pages of 

original data?47 Specifically, Respondents cite to Dr. Rhyne's testimony that claim 24 requires that 

the physical offset of a page of updated data must be different, and therefore not the same, as the 

physical offset of the corresponding superseded page of original data.348 According to Respondents, 

the key word in claim 24 is the word "causing," which requires that there be a causation that causes 

the updated data to have different offset positions than the original data.349 Respondents argue that 

the doctrine of claim differentiation supports its position when comparing claims 23 and 24, which 

345 CIB 62, 72. 

346 RRB 48 citing RRDX-17. 

347 RIB 44; RRB 24-26. 

348 RIB 44 citing Rhyne, Tr. 337. 

349 RIB 44-45 citing Subramanian, Tr. 1297. 

86 
both depend from claim 20.350 

Staff asserts that Respondents do not present any additional non-infringement arguments with 

regard to claims 24 and 30 other than what was argued with respect to claim 20. Staff agrees with 

SanDisk that SanDisk has met its burden of proving that the accused controllers can be used to 

satisfY the additional limitations recited in the dependent claims.351 

SanDisk counters Respondents' argument that claim 24 requires that the offsets be different 

100% of the time. According to SanDisk, there are three problems with Respondents' argument. 

First, SanDisk asserts that Respondents have raised this issue for the first time in their post-trial brief 

and that the issue has been waived.352 Second, SanDisk asserts that Dr. Subramanian conceded that 

there is "no rule expressly stated in the specification" that the system takes affirmative steps to 

guarantee that physical offset of data in the update block always be different than the physical offset 

sed for the original data it supercedes.353 Finally, SanDisk asserts that Respondents' reference to the 

doctrine of claim differentiation is not persuasive. According to SanDisk, [ 

] whereas claim 

20 covers both situations in claims 23 an 24?54 

Staff also counters Respondents' "causing" argument. Staff asserts that Respondents have 

raised this "causing" argument for the first time in the post-hearing brief and that the issue has been 

350 RIB 45 citing JX-2 (the '424 patent) at col. 16:17-30 and Curtis-Wright Flow Control 

Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006) ("Curtis-Wright"). 

351 SIB 64 citing CX-1008C (Rhyne Direct) at Q. 404-421,513-525,585-595. 

352 CRB 48-49. 

353 CRB 49 citing Subramanian, Tr. 1047-48. 

354 CRB 49-50. 

87 
waived because it was not preserved in the pre-hearing brief. 355 

The undersigned agrees with SanDisk and Staff that Respondents failed to address their 

"causing" argument in Respondents' pretrial brief56, and therefore failed to preserve this argument 

under Ground Rule 8.2. 

As claim 24 depends from claim 20, and the undersigned has already found that claim 20 is 

not infringed, claim 24 is also found not to be infringed by any of Respondents' accused products. 

4. Claim 30 

SanDisk asserts that claim 30 is performed by all of Respondents' Flash memory systems 

whenever an associated host system stores updated data on that system's memory devices. 357 

Staff asserts that Respondents do not present any additional non-infringement arguments with 

regard to claims 24 and 30 other than what was argued with respect to claim 20. Staff agrees with 

SanDisk that SanDisk has met its burden of proving that the accused controllers can be used to 

satisfY the additional limitations recited in the dependent claims. 358 

Respondents assert that because none of the accused controllers practice claim 24, they 

cannot also practice claim 30, which depends from claim 24.359 

As claim 30 depends from claims 24 and 20, and the undersigned has already found that 

claims 24 and 20 are not infringed, claim 30 is also found not to be infringed by any of 

Respondents' accused products. 

355 SRB 11. 

356 See Respondents' Pre-Trial Brief at 129. 

357 eIB 107. 

358 SIB 64 citing eX-1008e (Rhyne Direct) at Q. 404-421, 513-525, 585-595. 

359 RIB 2. 

88 
5. Indirect Infringement 

SanDisk asserts that the steps of claims 17,24, and 30 are performed when the accused Flash 

memory products are used in the manner that the Respondents intended, which is to store and 

retrieve data, and that when Respondents' customers in the U. S. use the Respondents' Flash memory 

products that have an infringing controller, those customers directly infringe these claims. 

According to SanDisk, Phison, SMI, and Skymedi infringe in two ways: (1) import or sell for 

importation controllers that infringe claim 24, or (2) import or sell for importation Flash memory 

systems that contain their respective accused controllers that infringe claim 24.360 

Staff asserts that, because the method claims of the '424 patent are only directly infringed 

by domestic purchasers of Respondents' accused flash memory systems or flash memory systems 

that include Respondents' controllers, when they use such flash memory systems to store data in the 

United States, SanDisk must establish that the Respondents in this investigation indirectly infringe 

the asserted claims, either by contributory or induced infringement.361 

Respondents assert that, in order for there to be a violation of Section 337, SanDisk must 

prove, by a preponderance of the evidence, that one or more Respondents have engaged in conduct 

that meets the stringent requirements set forth by the Federal Circuit regarding inducement or 

contributory infringement. Respondents assert that SanDisk has failed to meet its burden with regard 

to either type of indirect infringement.362 

360 CIB 107-08. 

361 SIB 64-65 citing Certain Circuit Board Testers, Inv. No. 337-TA-342, Comm'n Op. 

(April 1993) ("Certain Circuit Boards"). 

362 RRB 2. 

89 
a. Inducement 

SanDisk asserts that Phison, SMI, and Skymedi ("Controller Respondents") all intended to 

induce their customers to infringe claims 17,24, and 30 of the '424 patent. SanDisk argues that 

ordinary usage of a Flash memory system, including the accused controllers, infringes the '424 

patent. According to SanDisk, the Controller Respondents have known that: (1) their own products 

operated in accordance with its specifications, (2) their customers use the products as they intend, 

and (3) [ 

]363 Furthermore, 

SanDisk asserts that there is no dispute that Respondents have known about the '424 patent, along 

with SanDisk' s theories of infringement, at least since this investigation began.364 

Specifically, as to Phison, SanDisk asserts that Phison provides specific technical instructions 

and support for its products, which affirmatively establishes that Phis on intended for its customers 

to infringe the asserted claims of the '424 patent. For example, Phison provides [ 

As to SMI, SanDisk asserts that SMI provides specific technical instructions and support for 

its products, which affirmatively establishes that SMI intended for its customers to infringe the 

363 CIB 108. 

364 CRB 50. 

365 CIB 108-09 citing lX-121 C (Chen Dep) at 16-19, 22-23, lX-131 C (Tsay Dep) at 357-58. 

90 
asserted claims of the' 424 patent. For example, SMI provides its customers with a mass production 

tool and a reference design, along with providing field application engineers to provide on-site 

technical support if a customer encounters difficulties.366 

As to Skymedi, SanDisk asserts that Skymedi [ 

] which affirmatively establishes that Skymedi intended for its customers to 

infringe the asserted claims of the' 424 patent. For example, Skymedi provides [ 

] to its 

customers. In addition, Skymedi admits that [ 

Furthermore, SanDisk argues that [ 

] According to SanDisk, Federal Circuit case law supports the 

proposition that failure to obtain an opinion of counsel regarding non-infringement is one of the 

factors that can be considered in inducement. 368 Finally, SanDisk asserts that [ 

] and continue to induce their customers to infringe 

the '424 patent.369 

Respondents counter SanDisk' s arguments and assert that SanDisk has provided no evidence 

that Respondents knew their actions would induce actual infringement. Respondents assert that at 

best, SanDisk has shown that Respondents [ ] 

366 CIB 109 citing JX-141 C (Doong Dep) at 115,251,270-71; JX-125C (Chien Dep) at 106-

08. 

367 CIB 109-110 citing JX-64C (Skymedi stipulation) at ~ F; JX-l 03C (Chang Dep) at 389-90. 

See also CX-459C (Skymedi product specification). 

368 CIB 111 citing Broadcom, 543 F .3d at 699-700. 

369 CIB 111-12 citing Broadcom, 543 F.3d at 700-01. 

91 
] which is insufficient to prove inducement.37o 

Furthermore, Respondents assert that SanDisk has provided no evidence to show inducement by 

Respondents Kingston, Transcend, Apacer, PQI, Imation, and LGE.371 

Staff asserts that SanDisk has failed to offer any evidence establishing that Respondents 

affirmatively intended for their customers to infringe the asserted claims of the '424 patent or that 

Respondents were aware, or should have been aware, that their activities constitute infringement of 

the asserted claims. Therefore, Staff argues that SanDisk has not satisfied its burden of showing the 

requisite level of intent under § 271 (b).372 

SanDisk counters Staff s arguments. According to SanDisk, circumstantial evidence of intent 

suffices to show inducement and therefore direct evidence is not required.373 

In order to prevail on inducement, the patentee must show "that the alleged infringer 

knowingly induced infringement and possessed specific intent to encourage another's 

inducement.,,374 Furthermore, the specific intent necessary to induce infringement "requires more 

than just intent to cause the acts that produce direct infringement. ,0375 Based on this standard, the 

undersigned agrees with Respondents and Staff that SanDisk has failed to establish that any of the 

Respondents in this investigation knowingly induced infringement or possessed specific intent to 

encourage another's infringement. The evidence presented by SanDisk falls short of the necessary 

370 RRB 3 citing DSU, 471 F.3d at 1306. 

371 RRB 3. 

372 SIB 65-66 citing DSU, 471 F.3d at 1306; SRB 12-14. 

373 CRB 50 citing MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 

F.3d 1369, 1378 (Fed. Cir. 2005) ("MEMC'). 

374 Kyocera Wireless Corp. v. Int'l Trade Comm 'n, 545 F.3d 1340, 1353-54 (Fed. Cir. 2008) 

("Kyocera"). 

375 DSU, 471 F.3d at 1306. 

92 
intent showing for inducement, that is that Respondents possessed a specific intent to cause 

infringement of SanDisk's patents, as enumerated by the Federal Circuit in DSU and Kyocera. 

Accordingly, SanDisk has not shown that Respondents induce infringement of the '424 patent. 

b. Contributory 

SanDisk asserts that Respondents contributorily infringe the '424 patent. According to 

SanDisk, direct infringement occurs at the end-user level, while Respondents supply a component 

for use in the infringing combinations. SanDisk argues that the component, whether it is the memory 

system or the controller, has no substantial non-infringing use. 

Specifically, SanDisk argues that Respondents' Flash memory products are designed to work 

with host computers and that host computers routinely request that Flash memory products update 

data. According to SanDisk, the ability to update data, [ ] is an 

essential feature of Respondents' Flash memory products when used for their intended purpose. 

Furthermore, SanDisk asserts that, over the lifetime of a Respondent's Flash memory product, [ 

]376 And, according to SanDisk, there is no 

dispute that Respondents have known of the '424 patent since at least October 2007, which is when 

SanDisk filed its complaint.377 

Staff agrees with SanDisk that the evidence establishes that Respondents' accused products 

have contributed to the infringement of the asserted claims ofthe '424 patent. In support, Staff cites 

to Dr. Rhyne's testimony, stating that the accused flash memory systems will be used in an infringing 

376 CIB 112. 

377 CIB 112. 

93 
manner during their normal course of operation.378 According to Staff, other than the argument that 

Respondents' controller cannot be used to infringe at all, Respondents did not make any assertions 

that their accused controllers have additional "substantial noninfringing uses" and are thus exempted 

from liability for contributory infringement. In addition, Staff asserts that there is no dispute that 

Respondents have known about the '424 patent at least since this investigation was instituted.379 

Respondents assert that SanDisk has failed to prove that Respondents had the requisite 

knowledge of infringement and that the mere knowledge of SanDisk's patent portfolio is 

insufficient. 380 In addition, Respondents assert that SanDisk has failed to show the absence of 

substantial non-infringing uses, as SanDisk's own expert testified that the accused products have 

substantial non-infringing uses, such as for distributing books on flash, rather than using flash for 

rewriting capabilities. 381 

The undersigned agrees with Respondents that there are substantial non-infringing uses for 

the accused products, such as using flash as a distribution-medium, such as for distributing books.382 

In addition, the undersigned agrees with Respondents that SanDisk has failed to prove that 

Respondents knew that the accused products were patented and infringed. Accordingly, the 

undersigned finds that SanDisk has not established that any of the Respondents contributorily 

infringe the '424 patent. 

6. Conclusion as to Infringement 

SanDisk has asserted infringement of claims 17, 24, and 30 of the '424 patent against 

378 SRB citing Rhyne, Tr. 415-17, 427-28. 

379 SIB 65; SRB 14. 

380 RRB 4. 

381 RRB 5 citing Rhyne, Tr. 427. See also Subramanian, Tr. 1206-07. 

382 Subramanian, Tr. 1206-07; Rhyne, Tr. 427. 

94 
Respondents. These asserted claims are all "method of use" claims where the accused flash memory 

systems and controllers themselves do not infringe. Because the accused systems must be operated 

in a particular manner in order to infringe these claims, liability as to the Respondents can only be 

based on induced or contributory infringement. 

As detailed above, the undersigned has found that SanDisk has not shown, by a 

preponderance of the evidence, that any of Phis on 's, SMI' s, or Skymedi' s controllers infringe claims 

17, 24 or 30. Furthermore, the undersigned has found that SanDisk has not shown that Phison, SMI, 

or Skymedi indirectly infringe the '424 patent, either by inducement or contributory infringement. 

Accordingly, SanDisk has not shown that any Respondents accused products infringe any of the 

asserted claims ofthe '424 patent. 

C. Domestic Industry - Technical Prong 

SanDisk asserts that its Flash memory systems with Gen4 firmware practice the methods 

claimed in claims 17,24, and 30 of the '424 patent. 383 Staff agrees with SanDisk.384 Respondents 

assert that SanDisk does not meet the technical prong of the domestic industry requirement because 

SanDisk's Gen4 products do not practice all the limitations of claims 17,24, or 30,385 Respondents 

also assert that, much like infringement, ifSanDisk' s products practice claims 17,24, or 30, then the 

'424 patent is surely invalid.386 

1. Claim 17 

SanDisk asserts that the steps of method claim 17 are performed by U.S. customers who use 

383 CIB 113. 

384 SIB 66-69. 

385 RIB 56. 

386 RIB 3. 

95 
a SanDisk Flash memory system as memory for some host device, such as a computer.387 Staff 

agrees with SanDisk.388 Respondents assert that, when step (b) is properly construed as requiring 

updating "pages" of original data, then SanDisk does not practice claim 17.389 

a. Preamble 

SanDisk asserts that it is undisputed that its Flash memory systems meet the preamble of 

claim 17.390 According to SanDisk, its Flash memory products are non-volatile memory systems 

with one or more packaged NAND Flash memory products, which include one or more arrays. Each 

array is organized into sub-arrays, commonly referred to as planes. Within the sub-arrays, the 

NAND cells are organized as blocks which are the smallest group of cells that are erasable together. 

Within those blocks, the cells are arranged as pages which are the smallest group of memory storage 

elements that are programmable together. 391 Staff agrees with SanDisk.392 

Phison does not address the preamble and therefore does not dispute that the limitations of 

the preamble are met by SanDisk's controllers. 

Accordingly, the undersigned agrees that SanDisk's controllers meet the limitation of the 

preamble of claim 17. 

b. Step (a) 

SanDisk asserts that it is undisputed that its Flash memory systems meet step (a) of claim 

387 CIB 114. 

388 SIB 66-67. 

389 RIB 56; RRB 26. 

390 CRB 51. 

391 CIB 114. 

392 SIB 66-67. 

96 
17.393 According to SanDisk, [ 

]394 Staff agrees with 

SanDisk. 395 

Phison does not address step (a) and therefore does not dispute that the limitations of step 

(a) are met by SanDisk's controllers. 

Accordingly, the undersigned agrees that SanDisk's controllers meet the limitation of step 

(a) of claim 17. 

c. Step (b) 

SanDisk asserts that its controllers meet the limitation of step (b). According to SanDisk, 

[ 

According to SanDisk, there is no dispute that [ 

393 CRB 51. 

394 CIB 114-15. 

395 SIB 66-67. 

396 CIB 115; CRB 51-52. 

397 See CX-583C (Exhibit 144D to Complaint). 

97 

397 

] 
] 398 

Staff agrees with SanDisk and argues that, when claim 17 is properly interpreted to 

encompass updates to only a single page, or less than a page of data, SanDisk's Flash memory 

controllers meet the technical prong through the use of its Scratch Pad Block.399 

Respondents assert that SanDisk' s [ 

400 

401 

] 

398 CIB 115. 

399 SIB 66-67 citing CX-1008 (Rhyne Direct) at Q. 1503; SRB 15-16. In addition, Staff 

asserts that Respondents should be precluded from arguing that SanDisk's products do not practice 

step (b) [ 

] SRB 15 citing Respondents' Pre-Hearing Brief at 130-45. Upon review of Respondent's prehearing brief, the undersigned finds that the issue was sufficiently preserved so as not be waived. 

See Respondents' Pre-Hearing Brief at 134-38. 

400 RIB 56 citing RRX-018C (Subramanian Direct) at Q. 228-29; RRB 26. 

401 RIB 57 citing RRX-018C (Subramanian Direct) at Q. 255. 

98 
] 402 

As to Respondents' argument that SanDisk' s products do not practice step (b) because [ 

] SanDisk 

counters that Respondents' argument ignores the undersigned's construction of the first portion of 

step (b) to cover fewer than all pages, i. e. a single page. As to Respondents' argument that 

SanDisk's products do not write updates to only one plane, SanDisk counters that Respondents' 

position is contrary to the teachings of the '424 patent.403 

As the undersigned has already made clear in the infringement section, step (b) of claim 17 

requires updated pages, or more than a single page. The evidence shows that SanDisk's controllers 

do not meet this limitation because [ 

]404 Therefore, SanDisk's controller 

does not practice step (b) of claim 17. As the undersigned has found that this limitation is not met, 

the undersigned does not make any findings with regard to Respondent's one plane argument. 

d. Conclusion as to Claim 17 

Each and every limitation of claim term must be met in order for the technical prong of the 

domestic industry requirement to be met. SanDisk has failed to show that its Flash memory 

controllers practice step (b) of claim 17. Accordingly, SanDisk has failed to show that its controllers 

meet the technical prong of the domestic industry requirement by practicing claim 17 of the '424 

patent. 

402 RIB 57 citing RRX-018C (Subramanian Direct) at Q. 250-5l. 

403 RRB 52. 

404 SeeCX-1008C (Rhyne Direct) at Q. 1503; RRX-018C (SubramanianDirect)atQ. 228-29. 

99 
2. Claim 20 

a. Preamble 

SanDisk asserts that it is undisputed that its Flash memory systems that include a SanDisk 

Flash memory controller meet the preamble of claim 24.405 According to SanDisk, its Flash memory 

systems are re-programmable non-volatile memory systems that contain one or more NAND Flash 

memory devices that partition the memory array into a plurality of blocks that are erasable together 

as a unit. Furthermore, each of these blocks are divided into a plurality of pages and the memory 

cells of the page are programmable together as a unit.406 Staff agrees. 407 

Respondents do not address the preamble and therefore do not dispute that the limitations 

of the preamble are met by SanDisk's controllers. 

Accordingly, the undersigned agrees that SanDisk's controllers meet the limitations of the 

preamble of step 20. 

b. Step (a) 

SanDisk asserts that step (a) is performed by U.S. customers who use a SanDisk Flash 

memory system as memory for some host device, such as a computer. According to SanDisk, when 

[ 

] 

405 While SanDisk puts its analysis under the heading of claim 24, the other parties detail their 

arguments under claim 20, which is the independent claim from which claim 24 depends. 

406 em 115. 

407 SIB 67. 

100 
] 408 Staff agrees with SanDisk that 

SanDisk has shown that it practices claim 20.409 

Respondents assert that SanDisk's Gen4 products do not practice step (a) of claim 20, and 

therefore do not practice claims 24 or 30.410 According to Respondents, SanDisk has failed to prove 

that its Gen4 products store a logical page offset or the equivalent in the header along with original 

data. Respondents argue that Dr. Rhyne's testimony [ 

411 

SanDisk counters Respondents' arguments and asserts that Respondents are misrepresenting 

the testimony of Andy Tomlin, a former SanDisk engineer. [ 

408 CIB 116. 

409 SIB 67. 

] 413 

410 RIB 58 citing RRX-18C (Subramanian Direct) at Q. 272; RRB 26-29. 

411 RIB 58 citing JX-95C (Tomlin Dep) at 216. 

412 RIB 58 citing JX-95C (Tomlin Dep) at 218. 

413 CRB 52-53 citing JX-95C (Tomlin Dep) at 218. 

101 
Respondents counter Staff s arguments, which rely upon the testimony of Dr. Rhyne. 

According to Respondents, the accuracy of Dr. Rhyne's testimony is called into question when 

considering the testimony ofMr. Tomlin.414 

The undersigned agrees with SanDisk and Staff that the testimony ofMr. Tomlin does not 

contradict the testimony of Dr. Rhyne that Gen4 products [ 

]415 Accordingly, the undersigned 

finds that SanDisk's products practice the limitations of step (a) of claim 20. 

c. Step (b) 

SanDisk asserts that Respondents agree that SanDisk' s Flash memory systems meet step (b), 

which is performed by U.S. customers who use a SanDisk Flash memory system as memory for 

some host device, such as a computer.416 Staff agrees.417 

Respondents do not address step (b) and therefore do not dispute that the limitations of step 

(b) are met by SanDisk's controllers. 

Accordingly, the undersigned agrees that SanDisk's controllers meet the limitation of step 

(b) of claim 20. 

d. Step (c) 

SanDisk asserts that its Flash memory products perform step (c) after data has filled an 

414 RRB 27-28. 

415 JX-95C (Tomlin Dep) at 218. 

416 CIB 116-17 citing CX-l 008C (Rhyne Direct) at Q. 1501-11. 

417 SIB 67. 

102 
original block and updates to those data have been placed in an associated update block, and also 

when they consolidate data. Specifically, SanDisk asserts that [ 

] 418 Staff agrees. 419 

Respondents do not address step (c) and therefore do not dispute that the limitations of step 

(c) are met by SanDisk's controllers. 

Accordingly, the undersigned agrees that SanDisk's controllers meet the limitation of step 

(c) of claim 20. 

e. Conclusion as to Claim 20 

SanDisk has shown that its Flash memory controllers practice each and every limitation of 

claim 20. Accordingly, SanDisk has shown that its controllers meet the technical prong of the 

domestic industry requirement by practicing claim 20 of the '424 patent. 

418 eIB 117-18. 

419 SIB 67. 

103 
3. Claim 24 

SanDisk asserts that the evidence shows that its Flash memory systems practice claim 24.420 

Staff agrees with SanDisk that SanDisk has shown that it practices claim 24 of the '424 patent.421 

Respondents assert that SanDisk does not practice claim 24 because SanDisk's products [ 

] 422 

SanDisk asserts that Respondents should be precluded from arguing that SanDisk does not 

practice the "causing" limitation in claim 24 because it was not raised in Respondents' pre-trial 

brief.423 Staff also asserts that Respondents should be precluded from arguing that SanDisk does 

not practice the "causing" limitation in claim 24 because it was not preserved in Respondents' prehearing brief. 424 

As to SanDisk's and Staffs argument that Respondents failed to preserve the issue of 

whether SanDisk meets the "causing" limitation in claim 24, the undersigned agrees with SanDisk 

and Staff that, upon review of Respondents' pre-hearing brief, Respondents failed to adequately 

preserve this issue, and therefore the issue is hereby waived and will not be considered. 

Accordingly, as Respondents have made no other arguments, other than the "causing" 

argument which has been rejected, the undersigned finds that SanDisk's Flash memory systems 

practice claim 24 ofthe '424 patent. 

420 CIB 115-18; CRB 52. 

421 SIB 67 citing CX-lO08C (Rhyne Direct) at 1513-1552. 

422 RIB 59; RRB 28-29. 

423 CRB 53-54. 

424 SRB 15 citing Respondents' Pre-Hearing Brief at 146-52. 

104 
4. Claim 30 

SanDisk asserts that because its Flash memory systems meet the claim limitations of claim 

24 and that there is no dispute among the parties that these systems are non-volatile and formed 

within an enclosed card having an electrical connector along one edge that operably connects with 

a host, there is no dispute that SanDisk's Flash inemory system products also practice claim 30.425 

Staff agrees with SanDisk that SanDisk has shown that it practices claim 30 of the '424 patent.426 

Respondents assert that SanDisk does not practice claim 30, because SanDisk does not practice 

either claims 20 or 24, from which claim 30 depends.427 

As the undersigned has already ruled above that SanDisk practices claims 20 and 24, and no 

new arguments have been made with respect to claim 30, the undersigned hereby finds that SanDisk 

meets the additional limitations in claim 30 and practices claim 30 of the '424 patent. 

5. Conclusion as to Technical Prong 

In order to find the existence of a domestic industry exploiting a patent at issue, it is 

sufficient to show that the domestic industry practices any claim of that patent, not necessarily an 

asserted claim of that patent.428 While SanDisk has not shown that it practices claim 17 of the '424 

patent, SanDisk has shown that it practices claims 20,24, and 30 ofthe '424 patent. Accordingly, 

SanDisk has met the technical prong of the domestic industry requirement. 

425 CIB 118; CRB 54. 

426 SIB 67 citing CX-1008C (Rhyne Direct) at 1513-1552. 

427 RIB 59. 

428 Certain Microsphere Adhesives, Commission Opinion at 7-16. 

105 
D. Validity 

1. Ordinary Skill in the Art 

The undersigned has already determined that one of ordinary skill in the art is a person with 

at least a master's degree in electrical engineering, or an equivalent field, as well a few years of 

experience in the area of non-volatile memory technology.429 

2. Claim 17 

a. Anticipation430 - The Sinclair '321 Patent & the Sinclair PCT 

Application 

Phison asserts that, ifSanDisk's broad interpretation431 of claim 17 is adopted, then claim 17 

is invalid in light of the Sinclair '321 patent.432 

SanDisk asserts that the Sinclair '321 patent is not prior art to the '424 patent under 35 

u.S.C. § 102(e) because it was not published or available until after the '424 patent was filed. As 

to Phison's contention that the Sinclair '321 patent is relevant evidence of what was known to others 

429 See Order No. 33 at 10. 

430 SanDisk asserts that Respondents are precluded from arguing that claim 17 is anticipated 

because Respondents failed to raise the issue in its pre-hearing brief, as discussed during the prehearing conference. CIB 119, n. 51 citing Bullock, Tr. 36. Respondents counter this assertion, 

recognizing that, while Respondents could not offer Mr. Kynett's witness statement on the issue 

because his expert report only argued single-reference obviousness, rather than anticipation, 

Respondents are not precluded from arguing anticipation during the hearing or in the post-hearing 

briefs. RRB 29. The undersigned agrees with Respondents that the issue of anticipation of claim 

17 is properly before the undersigned because it was addressed in the pre-trial brief, and that the 

issue before the undersigned during the pre-hearing conference was whether Mr. Kynett could testify 

regarding anticipation of claim 17 because he failed to raise the issue in his expert report. 

Accordingly, while Respondents may argue anticipation, they cannot use the testimony ofMr. Kynett 

to support their contentions. 

431 According to Phison, SanDisk asserts that claim 17 is infringed [ 

] RIB 70. 

432 RIB 70 citing RX-628 (the Sinclair '321 patent). 

106 
in the United States and described in a printed pUblication prior to the invention date of the '424 

patent, SanDisk asserts that the only evidence that the subject matter of the Sinclair '321 patent was 

publicly available prior to the invention date of the' 424 patent is two lines of hearsay from the face 

of the Sinclair '321 patent referencing PCT application PCT/GBOOI00550 ("the Sinclair PCT 

application"). SanDisk asserts that because the Sinclair PCT application is not in evidence, there 

is simply no way to know for sure exactly what is disclosed in that reference. 433 

Staff agrees that the Sinclair '321 patent itselfis not prior art.434 Staff asserts, however, that 

there is no dispute that the Sinclair PCT application, which was published on August 4, 2000, 

qualifies as prior art under § 1 02( a). Staff argues that it is reasonable to presume that the 

international application to which the Sinclair '321 patent claims priority shares the same written 

disclosure as the '321 patent. Therefore, to the extent that the Sinclair '321 patent shares the same 

written description as the Sinclair PCT application, Staff asserts that the '321 patent is evidence of 

that prior publication.435 

Phison counters SanDisk's and Staff s arguments that the Sinclair '321 patent is not prior art. 

According to Phison, although the Sinclair' 321 patent itself was not published until after the filing 

date of the '424 patent, the Sinclair patent shows on its face that it claims priority back to the 

published Sinclair PCT application, which was published on August 24, 2000. Phison argues that, 

with respect to claim 17, the prior art system disclosed in the Sinclair '321 patent is identical to the 

prior art system disclosed in the published PCT application. Therefore, Phison asserts that the 

433 CIB 119-20 citing Go Medical Industries Pfy. Ltd. v. Inmed Corp., 471 F.3d 1264, 1270 

(Fed. Cir. 2006) ("Go Medical"); CRB 54-56. ' 

434 SIB 69. 

435 SIB 69-70; SRB 16-18. 

107 
invention of claim 17 was known to others in this country and was described in a printed publication, 

thereby meeting the requirements of 35 U.S.C. § 102(a).436 

The undersigned finds the Sinclair '321 patent itself is not prior art because it was not 

published or available until after the '424 patent was filed.437 Specifically, the effective filing date 

of the Sinclair '321 patent is March 5, 2001, which is after the January 19,2001 filing date of the 

'424 patent.438 Therefore, the Sinclair '321 patent is not prior art to the '424 patent. 

Furthermore, while the parties do not dispute that the PCT application qualifies as prior art, 

the undersigned already ruled during the prehearing conference that, because none of the 

Respondents had listed the PCT application on the notice of prior art, that it would not be considered 

as prior art for the purposes of this investigation.439 

Phison and Staff urge the undersigned to consider the Sinclair '321 patent as relevant 

evidence of what was known to others in the United States as a printed publication prior to the 

invention date of the '424 patent because the Sinclair '321 patent shares the same disclosure as the 

PCT application. The undersigned does not find such arguments persuasive. Had one of the parties 

listed the Sinclair PCT application on the notice of prior art, there would be no dispute that the 

Sinclair PCT application would be considered prior art to the '424 patent. The Sinclair PCT 

application, however, was not listed on the notice of prior art. Therefore, any attempt to use the 

Sinclair '321 patent as relevant evidence as to the written disclosure of the Sinclair PCT application 

is hereby rejected. Accordingly, the undersigned hereby rejects Phison's arguments that claim 17 

436 RIB 76-77 citing In re Epstein, 32 F.3d 1559, 1566-67 (Fed. Cir. 1994) ("Epstein"); RRB 

30-32. 

437 See Manual of Patent Examining Procedures ("MPEP") § 2136.03. 

438 RX-628 (the Sinclair '321 patent). 

439 See Bullock, Tr. 26 (October 23, 2008). 

108 
is anticipated by the Sinclair '321 patent. 

b. Single Reference Obviousness - The Sinclair '321 Patent & the 

Sinclair PCT Application 

Alternatively, Phison asserts that if claim 17 is not anticipated by the Sinclair '321 patent or 

the Sinclair PCT application, that claim 17 is obvious, based on single reference obviousness.44o As 

the undersigned has already ruled above that the Sinclair '321 patent and the Sinclair PCT 

application are not prior art to the' 424 patent for this investigation, the undersigned rejects Phison' s 

arguments that claim 17 is invalid based on single reference obviousness of the Sinclair' 3 21 patent. 

3. Claims 24 and 30 

Respondents assert that, ifSanDisk' s doctrine of equivalents theory is accepted, there is clear 

and convincing evidence that the Respondents' accused products, SanDisk's own products, and the 

prior art become indistinguishable, rendering the patent invalid.441 Respondents cite to the testimony 

of Mr. Kynett in support, who asserted that the asserted claims of the '424 patent are invalid if 

applied as SanDisk advocates in its infringement contentions.442 According to Respondents, SanDisk 

offered no testimony or evidence of its own to rebut Respondents' prima facie case, thereby putting 

all ofSanDisk's eggs in its "infringement" basket.443 

SanDisk asserts that claims 24 and 30444 are valid, which is supported by Respondent's own 

validity expert, Mr. Kynett, who testified that, if claim 24 is properly construed by the Markman 

440 RIB 70, 75-76. 

441 RIB 60 citing Brown v. 3M, 265 F.3d 1349,1352 (Fed. Cir. 2001) ("Brown"); RRB 34-35. 

442 RIB 60 citing RX-937C (Kynett Direct). 

443 RIB 61. 

444 As to claim 30, SanDisk asserts that claim 30, which depends from claim 24, is not 

anticipated or rendered obvious if claim 24 is not anticipated or rendered obvious as well. CIB 131. 

109 
order, it is a valid claim.445 

Staff agrees with SanDisk that the evidence does not establish that either claims 24 or 30 are 

invalid.446 

a. Anticipation 

(1) The Miyauchi '783 Patent 

Respondents assert that claim 24 is invalid as anticipated by U.S. Patent No. 5,627,783 ("the 

Miyauchi '783 patent").447 According to Respondents, there is no dispute that the Miyauchi '783 

patent qualifies as prior art.448 Specifically, Respondents assert that Mr. Kynett testified that claim 

24 is anticipated by at least the prior art system described in the Miyauchi '783 patent.449 

With respect to step (a) of claim 20, Respondents assert that the Miyauchi '783 patent 

discloses storing the same logical address information that SanDisk points to in its own products to 

satisfY the domestic industry requirement. Specifically, Respondents note that when Dr. Rhyne 

testified regarding SanDisk's product for domestic industry, a "logical block address" meets the 

limitation in step ( a) because SanDisk's products store six bytes of control data, along with 512 bytes 

of user data.45o According to Respondents, the prior art system in the Miyauchi '783 patent does the 

same thing by storing a logical sector address, along with each 512-byte sector of data.451 While the 

terminology used differs, Respondents assert that it is insignificant and that Dr. Rhyne himself uses 

445 CIB 125 citing Kynett, Tr. 775-76; CRB 62-64. 

446 SIB 76-81; SRB 19. 

447 RX-659 ("the Miyauchi '783 patent"). 

448 RIB 61 at n. 12. 

449 RIB 62. Note that Respondents make clear that when referring to the "prior art system" 

of the Miyauchi '783 patent, Respondents are referring to the system set forth in Figures 10-16 and 

described at col. 1 :9-3:63, which is described as being prior art to that patent. RIB 62, n. 13. 

450 RIB 63 citing CX-1008C (Rhyne Direct) at Q.1518-21, 1523; RRB 35-36. 

451 RIB 63 citing RX-659 (the Miyauchi '783 patent) at col. 2:53-61, 3:39-57. 

110 
the terms "logical block address" and "logical sector address" interchangeably.452 Furthermore, 

Respondents argue that according to Dr. Rhyne, it is enough to merely store the logical block 

address, and it is irrelevant as to whether it is ever used, to satisfY step (a).453 

With respect to step (c) of claim 20, Respondents assert that the prior art system in the 

Miyauchi '783 patent elects updated pages of data over old pages sharing the same logical sector 

address by consulting a table that always contains the locations of the most up-to-date data.454 

According to Respondents, Figure 16 of the Miyauchi '783 patent is the type oflookup function that 

Dr. Rhyne asserts is infringing the claim.455 

With respect to the "causing" limitation of claim 24, Respondents assert that SanDisk is 

applying a double standard for validity and infringement. Respondents argue that, for purposes of 

infringement, SanDisk finds that it is sufficient that offsets be due to random chance, but that for 

purposes of validity, SanDisk finds that the Miyauchi '783 patent does not anticipate because it uses 

different offset locations as a random event.456 

SanDisk asserts that the Miyauchi '783 patent differs from claim 24 of the '424 patent in 

three ways. First, that the Miyauchi '783 patent does not write logical addresses with either original 

or updated data pages.457 According to SanDisk, Mr. Kynett clearly misunderstood Dr. Rhyne's 

position regarding what satisfies the "logical page address" limitation.458 Second, the Miyauchi '783 

452 RIB 63-64. 

453 RIB 64 citing Rhyne, Tr. 219, 374-76. 

454 RIB 65-66 citing RX-659 (the Miyauchi '783 patent) at Fig. 16; RRB 36-37. 

455 RIB 66-67 citing eX-I008e (Rhyne Direct) at Q. 396,402,498,578, and 1536. 

456 RIB 67-68 citing Rhyne, Tr. 334-45, 348-49. 

457 eIB 125-26, 127-28. 

458 eIB 126 citing Kynett, Tr. 787-89,989-94. 

111 
patent does not cause updated physical data to have a different offset then original data. 459 Third, the 

updating method used in the Miyauchi '783 patent does not select the most recently written updated 

data and omit the earlier written obsolete data with the same logical page address. 46o According to 

SanDisk, the Miyauchi '783 patent used flags to distinguish old data from new data, a methodology 

that was disclaimed by the '424 patent. SanDisk argues that Mr. Kynett improperly asserts that the 

flag disclaimer is limited to claim 18.461 

Staff agrees with SanDisk that the evidence does not show that claims 24 or 30 are 

anticipated by the Miyauchi '783 patent. According to Staff, while Respondents acknowledge that 

the logical sector address taught by the Miyauchi '783 patent does not meet the undersigned's claim 

construction of "logical page address" which requires both a logical block number and a logical 

page offset, Respondents argue that the Miyauchi '783 patent teaches the limitation under SanDisk' s 

broad interpretation of the term. 462 Staff asserts that, it is axiomatic in patent law that a product 

"which would literally infringe iflater in time anticipates if earlier." Accordingly, Staff agrees that 

ifthe evidence establishes that the Miyauchi '783 patent teaches all the elements of claims 24 and 

30 in the same manner interpreted by SanDisk for its infringement and domestic industry 

contentions, then the Miyauchi '783 patent anticipates the asserted claims. Staff continues to assert, 

however, that Respondents have failed to meet their initial burden of proving, by clear and 

convincing evidence, that claims 24 and 30 are invalid. 

First, Staff argues that the evidence does not support a finding that the Miyauchi'783 patent 

459 CIB 128 citing RX-659 (the Miyauchi '783 patent) at col. 3:39-42, Figs. 15-16; Kynett, 

Tr. 933-36 

460 CIB 128 citing Kynett, Tr. 813-17, 820-21, 926-27, 932. 

461 CIB 126-27 citing RX-937C (Kynett Direct) at Q. 103-04. 

462 SIB 76-77; SRB 19. 

112 
teaches a "logical page address.,,463 Second, Staff argues that the Miyauchi '783 patent does not 

meet the "second plurality of pages" limitation because the Miyauchi '783 patent expressly teaches 

one page, rather than a plurality of pages where the updated data is programmed into a different 

offset position than the original data.464 Third, Staff argues that the Miyauchi '783 patent does not 

teach any particular method for omitting superceded data. Nor, it is argued, does the Miyauchi '783 

patent disclose any process for assembling data portions into a data file, as required by the 

undersigned's "reading and assembling" limitation in step (C).465 

As to SanDisk's argument that the Miyauchi '783 patent does not anticipate because it 

teaches the use of "flags" to distinguish old data, which SanDisk disclaimed in claim 24, 

Respondents counter that the Miyauchi '783 patent does not ever mention flags. Regardless, 

Respondents argue that even if flags were mentioned in the Miyauchi '783 patent, the process of 

selecting updated data is done entirely through the use of the table in Figure 16, where there is no 

mention of flags being required or used.466 

As to Staff's argument regarding a plurality of pages, Respondents assert that looking at 

Figure 13 ofthe Miyauchi '783 patent shows an actual system where the number of pages in a flash 

memory block is greater than shown in Figure 16, which only shows a simplified illustration of the 

system. According to Respondents, looking at Figure 13, it is "virtually certain that at least two of 

the pages of updates (i.e., a plurality of pages) will have different offsets from the original pages 

463 SIB 78. 

464 SIB 79 citing Kynett, Tr. 996-97. 

465 SIB 79. 

466 RIB 67; RRB 37. 

113 
being updated. ,,467 

As to Staff s argument regarding the "omitting" limitation, Respondents concede that under 

the undersigned's claim construction, this limitation is not met, but that SanDisk has not used the 

undersigned's construction when asserting infringement under Respondents' products.468 

The undersigned has already ruled above in the infringement section that Respondents' 

accused products do not infringe claims 24 and 30.469 Respondents concede that, under such an 

interpretation, that Respondents' invalidity arguments should be rejected. Accordingly, the 

undersigned finds that Respondents have not shown, by clear and convincing evidence, that claims 

24 and 30 of the '424 patent are invalid as anticipated based on the Miyauchi '783 patent. 

(2) The Hoh '563 Patent 

Respondents assert that, if SanDisk's overly broad claim construction for infringement is 

applied, that both claims 24 and 30 are also anticipated by u.S. Patent No. 5,987,563 to Itoh ("the 

Itoh '563 patent,,).470 According to Respondents, their rationale as to anticipation is detailed in the 

findings of fact and are the same as argued for the Miyauchi '783 patent.471 

SanDisk asserts that the Itoh '563 patent does not anticipate or render obvious claim 24 or 

30.472 SanDisk notes that because the Itoh '563 patent was considered by the examiner during the 

prosecution of the '424 patent, the burden of proving invalidity on the basis ofthe Itoh '563 patent 

467 RRB 39. 

468 RRB 39-40. 

469 See Section IV (B) (3)-(4). 

470 RIB 69. 

471 RIB 69. 

472 CIB 128-31; CRB 64. 

114 
alone is "especially difficult.,,473 SanDisk asserts that Mr. Kynett's position is flawed based on his 

misunderstanding of Dr. Rhyne's testimony regarding the "logical block address" limitation.474 

Staff agrees with SanDisk that the evidence does not show that the asserted claims are 

anticipated or rendered obvious by the Itoh '563 patent.475 

The undersigned is hereby dismissing Respondents' anticipation argument based on the Itoh 

- '563 patent as being insufficient and in non-compliance with the undersigned's ground rules and 

post-hearing briefing page limitations.476 A mere reference to the Itoh '563 patent, with a statement 

that the detailed reasoning is to be found in the proposed findings of facts, is an attempt to get 

around the page limitation which all parties are bound by and would give Respondents an unfair 

advantage. While parties may detail their findings of fact with specific references to the record, 

exhibits, and testimony, the reasoning behind the parties' arguments should be found within the four 

comers of the brief. 

b. Obviousness 

Respondents assert that if SanDisk's overly broad claim construction for infringement is 

applied, both claims 24 and 30 are obvious in light of the Itoh '563 patent taken in combination with 

any of other several prior art references including: U.S. Patent No. 5,682,499 to Bakke ("the Bakke 

'499 patent"), U.S. Patent No. 6,288,862 to Baron ("the Baron '862 patent"), U.S. Patent No. 

5,822,781 to Wells ("the Wells '781 patent"), U.S. Patent No. 6,219,752 to Sekido ("the Sekido '752 

patent"), JP No. 3,070,539 to Fuse ("theJP '539 patent"), and U.S. Patent No. 6,584,579 to Komatsu 

473 CIB 129 citing Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004) 

("Apotex"). 

474 CIB 129 citing Kynett, Tr. 778-79, RX-937C (Kynett Direct) at Q. 114. 

475 SIB 80-81. 

476 See Order No.2, Ground Rule 11.1; Bullock, Tr. 2,077 (November 5, 2008). 

115 
("the Komatsu' 579 patent"). According to Respondents, their rationale as to obviousness is detailed 

in their findings of fact and are the same as argued for the Miyauchi '783 patent. 477 

The undersigned is hereby dismissing all of Respondents' obviousness arguments as being 

insufficient and in non-compliance with the undersigned's ground rules and post-hearing briefing 

page limitations, consistent with the ruling above as to anticipation by the Itoh '563 patent. 

c. Secondary Considerations 

SanDisk asserts that Respondents fail to address any secondary considerations of nonobviousness, such as the commercial success of SanDisk' s products using the inventions in claims 

17,24, and 30 ofthe '424 patent. According to SanDisk, while the issue of secondary considerations 

was addressed in its pre-trial brief, Respondents failed to address the issue in their post-trial brief 

and therefore the issue is now waived under Ground Rule 11.1.478 Accordingly, SanDisk asserts that 

the issue of non-obviousness is unrebutted and should be deemed admitted.479 

As the undersigned has already determined that Respondents' obviousness arguments are 

dismissed because Respondents did not set forth their obviousness arguments with specificity in their 

post-hearing brief, the issue of any secondary considerations of obviousness is rendered moot. 

v. The '011 Patent 

A. Overview 

Claim 8 is the only asserted claim against Respondent Imation, which reads as follows: 

8. A non-volatile memory card, comprising: a flash EEPROM array, encoded user data 

stored in a first portion of the array, and data of information useful to decode the 

encoded user data stored in a second portion of the array, wherein the stored encoded 

477 RIB 69. 

478 CRB 64. 

479 CRB 64. 

116 
user data includes encrypted user data, and wherein the information useful to decode 

the stored encoded user data includes a decryption algorithm, the encoded user data 

and the decoding information being read from the memory card, and the read 

encoded user data is decrypted with the read decoding information. 

As noted above, the undersigned has already construed the above claims in a Markman order.480 A 

summary of the claims construed in that order is detailed below: 

Claim Term Construction 

8 memory card A removably connected enclosure of memory. 

8 flash EEPROM Non-volatile semiconductor memory that can be 

programmed and erased electrically and that must 

erase one or more blocks at one time. 

8 flash EEPROM array An arrangement of one or more flash EEPROM 

integrated circuit chips. 

8 user data Data transferred from a host for programming into 

memory. 

8 data of information useful to Information used in the process of decoding encoded 

decode the encoded user data user data. 

8 decryption algorithm A prescribed set of defined rules or processes for 

decryption. 

B. Infringement of Claim 8 

1. In General 

SanDisk alleges that Respondent Imation, the lone remaining respondent accused of 

infringing the '011 patent, induces infringement of claim 8 through the sale of Flash memory systems 

that support the encryption of user data. In order to prove induced infringement, complainant must 

meet the following statutory standard as set forth by the Federal Circuit in Kyocera: 

Under 35 U.S. C. § 271 (b), "[ w ]hoever actively induces infringement of a patent shall 

be liable as an infringer." To prevail on inducement, "the patentee must show, first 

480 See Order No. 33. 

117 
that there has been direct infringement, and second that the alleged infringer 

knowingly induced infringement and possessed specific intent to encourage another's 

infringement." Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1304-05 

(Fed. Cir. 2002) (citation omitted). In DSU Med. Corp. v. JMS Co., this court 

clarified en banc that the specific intent necessary to induce infringement "requires 

more than just intent to cause the acts that produce direct infringement. Beyond that 

threshold knowledge, the inducer must have an affirmative intent to cause direct 

infringement." 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc review of intent 

requirement).481 

2. Direct Infringement 

a. Claim Element [a]: "A non-volatile memory card, comprising" 

It is undisputed that each accused Flash memory system is a "removably connected enclosure 

of memory" and therefore a "non-volatile memory card.,,482 The accused Flash memory systems are 

all USB Flash drives.483 They contain at least one NAND Flash memory integrated circuit chip inside 

a cover that completely encloses and protects the memory. 484 They can be connected to and removed 

from a host system via a USB connector port.485 

b. Claim Element [b]: "a Flash EEPROM array" 

It is also undisputed that each accused Flash memory system has a "Flash EEPROM array" 

as construed.486 

481 Kyocera, 545 F.3d at 1353 - 1354. 

482 ROCFF 15.36 - .39. No objections from Staff. 

483 ROCFF 15.37. No objections from Staff. 

484 Id. 

485 ROCFF 15.38. No objections from Staff. 

486 ROCFF 15.41 - 42. No objections from Staff. 

118 
c. Claim Element [ c): "encoded user data stored in a first portion of 

the array, ... wherein the stored encoded data includes encrypted 

user data" 

(1) Is there encoded user data present in the accused Imation 

memory cards as imported or sold? 

SanDisk alleges that all user data in an accused Imation USB Flash drive is stored in the 

drive's Flash EEPROM array encoded as binary numbers.487 SanDisk argues that there is no dispute 

that encrypted data is a form of encoded data.488 Thus, SanDisk argues that claim element (c) is met 

at least because, [as shown below], it has met its burden of proving encrypted user data in each 

accused system. SanDisk asserts that Imation' s argument, which is that this claim element is not met 

because none ofthe accused products contains encoded or encrypted user data when sold by Imation, 

is "irrelevant to infringement.,,489 

Imation asserts that claim 8 is limited to a memory card storing "encoded user data," 

including "encrypted user data." Imation asserts that SanDisk cannot establish these limitations are 

present in the accused Imation memory cards as imported or sold because user data is not present 

on any memory card until placed there by a user. Imation cites testimony by Dr. Harari and Dr. 

Min490 to support its argument. 

Staff asserts that Dr. Harari testified only with respect to SanDisk's own products and not 

with respect to any ofImation' s accused products. In any event, Staff asserts Imation' s argument was 

not raised in its pre-hearing brief. 

SanDisk stated that it had no objection to Imation's proposed finding of fact RFF 1073, 

487 ROCFF 15:45. No objections from Staff. 

488 CIB 25. 

489 CRB 4. 

490 RIB 3-5. 

119 
which states that "[ n]o user data is present on flash drives until a user places the data there.,,491 Thus, 

the claim element "encoded data stored in a first portion of the array ... wherein the stored encoded 

user data includes encrypted user data" is not met with respect to Imation' s accused devices by virtue 

of such data having been installed at the time of sale or import. SanDisk's argument that Imation 

induces users to store such data in "a first portion of the array" will be dealt with below. 

(2) Does Imation induce its customers to store encoded user 

data in a first portion of the array ... wherein the stored 

encoded user data includes encrypted user data? 

SanDisk alleges, in its responses to statements by Imation that certain of its products have 

no user data present until a user places it there, as follows492 : 

.L Imation Pocket (RFF 7034) 

CRRFF7034. 

CRRFF 7034A. 

Imation advertizes the Pocket as having "storage capabilities 

ranging from 1 GB to 8GB," which make[] it easy to manage 

and transfer digital files." (CX-622, CX-I007C, Min Q&A 

85, 99, 107.) 

The only reasonable conclusion from Imation' s promotion of 

the Pocket is that Imation induces users to place user data in 

the Pocket. (CX-622; CX1007C, Min Q&A 85, 99, 107.) 

[Italics added.] 

2. Swivel product (RFF7036) 

CRRFF7036. Imation advertises the Swivel for secure data storage. 

Specifically, Imation advertises a feature of the Swivel as 

491 See CORFF 7031: "No user data is present on flash drives until a user places the data 

there." In later responses to Respondents' findings of fact, SanDisk challenges this proposed finding 

offact. See, for example, CORFF 7045. However, it is clear from its overall arguments that the 

reason SanDisk opposes this proposed finding of fact is because SanDisk believes that Imation 

induces users to place encoded user data in a first portion of the array. 

492 But see id. 

120 
CRRFF 7036A. 

"[ q]uick, reliable, portable data." (CX-622; CX-l 007C, Min 

Q&A 95, 116, 124.) 

The only reasonable conclusion from Imation's promotion of 

the Swivel is that Imation induces users to place data in the 

Swivel. (CX-622; CX-I007C, Min Q&A 95, 116, 124.) 

[Italics added.] 

.1. Pivot product (RFF 7037.) 

CRRFF 7037. 

CRRFF7037A. 

4. TravelDrive product 

CRRFF 7038. 

CRRFF 7038A. 

Imation advertizes the Pivot for secure data storage. 

Specifically, Imation advertises it as a "Flash Drive" and 

shows a picture of the Pivot connected to a PC in its 

packaging. (CX-622; CX-I007C, Min Q&A 94, 136, 140.) 

The only reasonable conclusion from Imation's promotion of 

the Pivot is that Imation induces users to place data in the 

Pivot. (CX-622; CX-I007C, Min Q&A 94,136,140.) [Italics 

added.] 

Imation advertises the TravelDrive for secure data storage. 

Specifically, Imation's packaging states the TravelDrive is a 

"Portable USB 2.0 Flash Storage Device." (CX-622; CX1007C, Min Q&A 89, 147, 155.) 

The only reasonable conclusion from Imation's promotion of 

the TravelDrive is that Imation induces users to place data in 

the TravelDrive. (CX-622; CX-I007C, Min Q&A 89, 147, 

155.) [Italics added.] 

~ Mini TravelDrive product 

CRRFF7039. 

CRRFF 7039A. 

Imation advertises the Mini TravelDrive for secure data 

storage. Specifically, Imation's packaging for the Mini 

TravelDrive calls it a "Portable Storage Device." (CX-622; 

CX-I007C, Min Q&A 90, 162, 170.) 

The only reasonable conclusion from Imation' s promotion of 

the TravelDrive is that Imation induces users to place data in 

the TravelDrive. (CX-622; CX-1007C, Min Q&A 90, 162, 

170.) [Italics added.] 

121 
6. Rotodrive product 

CRRFF7040. 

CRRFF 7040A. 

7. Atom product 

CRRFF 7041. 

CRRFF 7041A. 

CRRFF7041B 

CRRFF7041C 

~ Nano product 

CRRFF7042 

Imation advertises the Rotodrive for secure data storage. 

Specifically, Imation' s packaging for the Rotodrive proclaims 

that it is a "Portable USB 2.0 Flash Storage Device." (CX622; CX-I007C, Min Q&A 91, 177, 185.) 

The only reasonable conclusion from Imation's promotion of 

the Rotodrive is that Imation induces users to place data in the 

Rotodrive. (CX-622; CX-I007C, Min Q&A 91,177,185.) 

[Italics added.] 

SanDisk introduced evidence that Imation affirmatively 

promotes the Atom for secure data storage. Specifically, 

Imation advertised the Atom as "the ultimate in data storage 

portability .... " (CX-622; CX-I007C, Min Q&A 87.) 

The only reasonable conclusion from Imation's promotion of 

the Atom is that Imation induces users to place data on the 

Atom. (CX-622; CX-I007C, Min Q&A 87.) [Italics added.] 

The Imation Atom flash drive is a USB flash drive for which 

Imation provides ImationLock software. The Atom is sold 

with ImationLock. (CX-I007C, Min Q&A 87, 92, 99, 114; 

CPX-37; CX-622.) 

SanDisk introduced evidence that ImationLock software 

functions in exactly the same way, whether it is stored on the 

Pocket, Atom, Nano, Swivel Pro, or Clip products. This 

includes the way user data is stored in products containing 

ImationLock. (CX-I007C, Min Q&A 92, 99, 114; CPX-37; 

CX-622.) 

SanDisk introduced evidence establishing that Imation 

affirmatively promotes the Nano for secure data storage. 

Specifically, Imation advertised the Nano as "combin[ing] a 

professional design with the performance and storage capacity 

needed to easily manage and transfer digital files." (CX1007C, Min Q&A 86; CX-622.) 

122 
CRRFF7042A 

CRRFF 7042B 

CRRFF 7042C 

9. Swivel Pro product 

CRRFF 7043 

CRRFF7043A 

CRRFF7043B 

CRRFF7043C 

The only reasonable conclusion from Imation's promotion of 

the Nano is that Imation induces users to place user data on 

the Nano. (CX-I007C, Min Q&A 86; CX-622.) [Italics 

added.] 

The Imation Nano flash drive is a USB flash drive for which 

Imation provides ImationLock software. The Nano is sold 

with ImationLock. (CX-1007C, Min Q&A 86, 92, 99, 114; 

CPX-49; CX-622.) 

SanDisk introduced evidence that ImationLock software 

functions in exactly the same way, whether it is stored on the 

Pocket, Atom, Nano, Swivel Pro, or Clip products. This 

includes the way user data is stored in products containing 

Imation Lock. (CX-1007C, Min Q&A 92,99, 114.) 

SanDisk introduced evidence establishing that Imation 

affirmatively promotes the Swivel Pro for secure data storage. 

Specifically, Imation advertised the Swivel Pro as "the quick 

and easy way to transfer or share business presentations, 

digital photos, videos or other large files."(CX-1 007C, Min 

Q&A 95; CX-622.) 

The only reasonable conclusion from Imation' s promotion of 

the Swivel Pro is that Imation induces users to place user data 

on the Swivel Pro. (CX-1007C, Min Q&A 95; CX-622.) 

[Italics added.] 

The Imation Swivel Pro flash drive is a USB flash drive for 

which Imation provides ImationLock software and Flash 

Manager. The Swivel Pro is sold with Flash Manager. (CX1007C, Min Q&A 95, 99, 114, 130; CPX-57; CX-622.) 

SanDisk introduced evidence that ImationLock software 

functions in exactly the same way, whether it is stored on the 

Pocket, Atom, Nano, Swivel Pro, or Clip products. This 

includes the way user data is stored in products containing 

Imation Lock. (CX-1007C, Min Q&A 92,99, 114.) 

123 
ill Clip product 

CRRFF 7044 

CRRFF7044A 

CRRFF7044B 

CRRFF 7044C 

CRRFF 7044D 

lL M-Flyer product 

CRRFF7045 

CRRFF7045A 

SanDisk introduced evidence establishing that Imation 

affirmatively promotes the Clip for secure data storage. 

Specifically, Imation advertised the Clip as "the ultimate in 

portable data storage .... " (CX-1007C, Min Q&A 84; CX622.) 

The only reasonable conclusion from Imation's promotion of 

the Clip is that Imation induces users to place user data on the 

Swivel Pro. (CX-1007C, Min Q&A 84; CX-622.) [Italics 

added.] 

The Imation Clip flash drive is a USB flash drive for which 

Imation provides ImationLock software and Imation Drive 

Manager software. The Clip is sold with Imation Drive 

Manager. (CX-1007C, Min Q&A 84, 99, 114, 130; CPX-40; 

CX-622.) 

SanDisk introduced evidence that ImationLock software 

functions in exactly the same way, whether it is stored on the 

Pocket, Atom, Nano, Swivel Pro, or Clip products. This 

includes the way user data is stored in products containing 

Imation Lock. (CX-1007C, Min Q&A 92,99, 114.) 

SanDisk introduced evidence that Drive Manager software 

functions in exactly the same way, whether it is stored on the 

Swivel, Swivel Pro, or Clip products. This includes the way 

user data is stored in products containing Drive Manager. 

(CX-1007C, Min Q&A 84, 92, 95, 96, 130.) 

SanDisk introduced evidence establishing that Imation 

affirmatively promotes the M-Flyer Pilot for secure data 

storage. Specifically, Imation advertised the M-Flyer Pilot as 

"[t]aking portable storage to new heights .... " (CX-1007C, 

Min Q&A 88; CX-622.) 

The only reasonable conclusion from Imation' s promotion of 

the M-Flyer Pilot is that Imation induces users to place user 

data on the M-Flyer Pilot. (CX-I007C, Min Q&A 88; CX622.) [Italics added.] 

124 
CRRFF7045B 

CRRFF7045C 

The M-Flyer Pilot flash drive is a USB flash drive for which 

Imation provides Portable Vault software. The M-Flyer pilot 

is sold with Portable Vault. (CX-I007C, Min Q&A 88,147, 

161; CPX-43; CX-622.) 

SanDisk introduced evidence that Portable Vault software 

functions in exactly the same way, whether it is stored on the 

Travel Drive or M-Flyer Pilot products. This includes the way 

user data is stored in products containing Portable Vault. 

(CX-lO07C, Min Q&A 88-90,147, 161.) 

SanDisk also argues that Imation's argument that it did not have knowledge of the '011 

patent as required to prove infringement was not raised in Imation's prehearing brief and therefore 

is waived pursuant to the undersigned's Ground Rule 8.2. Even if the argument is not deemed to 

waived, SanDisk argues that Imation certainly had knowledge ofthe patent after it was served with 

the complaint in this proceeding. 

Imation argues that SanDisk has failed to establish liability for inducement under § 271(b) 

because it has failed to demonstrate an affirmative intent to cause direct infringement. Specifically, 

SanDisk has not shown that Imation knew of the patent and also that SanDisk, at best, has shown 

only a general intent by Imation to cause infringement, rather than a specific intent to cause direct 

infringement. 

Staff argues that all of Imation' s induced infringement arguments were waived pursuant to 

Ground Rule 8.2. 

F or the reasons set forth below, it is determined that SanDisk has not shown that Imation has 

induced its customers to store encoded user data in a first portion of the array. In the first instance, 

the burden is on complainant to show inducement. Therefore, the arguments relied upon below 

presented no undue surprise to SanDisk or Staff and thus are not deemed waived pursuant to Ground 

125 
Rule 8.2.493 

SanDisk's argument with respect to each of the accused products regarding inducement is, 

in essence, that the only reasonable conclusion from Imation's promotion of each specific product 

is that Imation induces the user to place user data on the accused product. This conclusion is based 

upon language in Imation's advertising with respect to each product, as set forth in detail above. 

However, a review ofF ederal Circuit precedent indicates that inferences from this type of advertising 

do not meet the standard of specific intent on the part of the alleged infringer to induce infringement. 

As the Court has stated, the specific intent necessary to induce infringement "requires more than just 

intent to cause the acts that produce direct infringement. Beyond that threshold knowledge, the 

inducer must have an affirmative intent to cause direct infringement.,,494 A level of specific intent 

required by the Court has not been shown to be present in this case. Accordingly, SanDisk has not 

demonstrated the Imation's accused products meet claim element (c): "encoded user data stored in 

a first portion of the array" because Imation has not been shown to induce users to store encoded user 

data on a first portion of the array. Because this claim element has not been shown to have been 

infringed by any ofImation's accused products, there is no need to discuss any ofthe other elements 

of claim 8. 

For the reasons stated above, none ofImation's products have been shown to have infringed 

claim 8 under the standard of induced infringement. 

C. Domestic Industry - Technical Prong 

SanDisk argues that SanDisk's Cruzer Micro product embodies the elements of claim 8 of 

493 As the undersigned does not rely on Imation's argument that it had no knowledge of the 

'011 patent, no determination is made with respect to Ground Rule 8.2 regarding this argument. 

494 DSU, 471 F.3d at 1306. 

126 
the '011 patent.495 Staff does not dispute SanDisk's practice of the '011 patent citing Dr. Min's 

testimony.496 Imation does not challenge SanDisk' s contention.497 For these reasons, it is determined 

that SanDisk has met the technical prong of the domestic industry requirement. 

D. Validity 

1. Ordinary Skill in the Art 

The undersigned has already determined that one of ordinary skill in the art is a person with 

at least a master's degree in electrical engineering, or an equivalent field, as well a few years of 

experience in the area of non-volatile memory technology.498 

2. Obviousness 

a. Maniscalco in Combination with Izawa and Knowledge of a 

Person of Ordinary Skill in the Art 

Staff argues that claim 8 is obvious in light of the teachings of the Maniscalco reference.499 

Staff states that the Maniscalco reference is a magazine article in which the author presents a highly 

secure data-encryption algorithm (called "Crypt") as well as a challenge offering a reward to any 

reader who can decrypt an encoded message published therein.50o Staff states that the article, the 

testimony of Dr. Min, and the knowledge of one of ordinary skill in the art, teach all of the 

limitations of claim 8. Staff also cites the Izawa reference501 as support for its contentions. 

Imation supports Staff's position. Imation asserts that SanDisk's argument that Maniscalco 

495 CX-752 (Stipulation). 

496 CX-1007 (Min Direct) at Q. 251-57. 

497 CX-752 (Stipulation). 

498 See Order No. 33 at 10. 

499 RX-125 (Maniscalco Article). 

500Id at 93. 

501 RX-120 (Izawa). 

127 
is not pertinent prior art is not supported. 

SanDisk argues that none of the prior art references cited by Staff and Imation are pertinent 

prior art because they are not sufficiently related to the field of flash memory technology such that 

one of ordinary skill in the art would have considered them to be analogous prior art. In fact, it is 

argued, to combine certain of the cited references would render them inoperable. In sum, SanDisk 

asserts that Staff and Imation have not demonstrated that Maniscalco, in combination with Izawa or 

the knowledge of one of ordinary skill in the art, discloses, teaches or even suggests the limitations 

of claim 8. 

The contention of Staff and Imation that claim 8 is obvious is persuasive for the reasons set 

forth below. The Maniscalco reference is a magazine article in which the author presents a highly 

secure data-encryption algorithm (called "Crypt") as well as a challenge offering a reward to any 

reader who can decrypt an encoded message published therein. 502 The article indicates that "[ t]he full 

source code in C, an executable version of Crypt, and the encoded message are available from the 

R-E BBS and on IBM PC format diskette from the author.,,503 

At the hearing, Complainant's expert Dr. Min testified that Maniscalco teaches all the 

limitations of claim 8 except for a "non-volatile memory card," "a flash EEPROM array," and the 

requirement that the encoded user data must be programmed into the flash memory. 504 For example, 

Dr. Min acknowledged that the message offered by Maniscalco can be both "encoded" and "user 

data.,,505 Although the algorithm offered by Maniscalco has the capacity to encrypt and decrypt only 

502 RX-125 (Maniscalco Article) at 93. 

503 Id. 

504 Min, Tr. 2021: 17 - 2022:2. 

505 Min, Tr. 2019:8 - 22. 

128 
plain text ASCII files, Dr. Min acknowledged that claim 8 is not limited to any particular type of 

encoded user data, and could therefore include the type of file that is disclosed in Maniscalco.506 

With respect to the elements that Dr. Min testified are missing, i.e., "a non-volatile memory 

card," "a flash EEPROM array," and the requirement that the encoded user data must be 

programmed into the flash memory, this is in essence to say that Maniscalco does not use flash 

memory. But flash memory was well known in the art and existed long before the November 11, 

1993 invention date of the '011 patent.507 The Izawa article, dated December 7, 1989, and published 

by February, 1990, is entitled "Digital Still Video Camera Using Semiconductor Memory Cards.,,508 

The Izawa article discloses that "in recent years, electronic still cameras using a two-inch magnetic 

floppy disk have been gradually introduced into the commercial market."509 The article then 

proceeds to disclose the movement from floppy disks for the storage of digital photography to 

"digital picture data store in a memory card" containing flash memory, including a flash memory 

card with a flash EEPROM.51O The '011 patent itself discusses how flash EEPROM memory cards 

may be used as a replacement for removable (floppy) magnetic disks because floppy disks are 

"relatively slow, bulky and require high precision moving mechanical parts." 511 The '011 patent 

also states that "[t]here is currently underway an effort to apply non-volatile Flash EEPROM 

memory systems for mass storage applications. For example, they are intended to replace either of 

506 fd. at Tr. 2024:11-23. 

507 RX-120 (Izawa). 

508 RX-120 (Izawa) at RX-0120.0002. 

509 fd. at 1. 

510 fd. at 2; Min, Tr. 1960:6-12. 

511 JX-3 (the '011 patent), col. 1 :45-47. 

129 
the existing fixed or removable floppy magnetic disk systems, or both. ,,512 Therefore, one of ordinary 

skill in the art would have found it obvious to replace the floppy disk offered by Maniscalco with 

a flash EEPROM array memory card. 

SanDisk's argument that the Maniscalco reference is not pertinent is not persuasive. Just 

because a reference does not exactly encompass the precise class of products as the patent at issue 

does not determine the issue. As the Supreme Court has said, "familiar items may have obvious uses 

beyond their primary purposes.513 More specifically, while one of the Maniscalco article's purposes 

is to "present a challenge offering a reward to any reader who can decrypt an encoded message" from 

the author,514 it is nonetheless pertinent art in the general field of encryption and decryption, which 

are features recited for the memory card of claim 8. Dr. Min admitted that the "Crypt" program 

distributed by Maniscalco is a "decryption algorithm" and that the encoded message is "encrypted 

user data.,,515 Although Maniscalco does not disclose a flash EEPROM memory array, it does teach 

that a decryption algorithm can be stored along with encrypted user data in a portable storage 

medium (i.e., a floppy disk). But SanDisk argues that the floppy disk is irrelevant to the problem 

presented by Maniscalco because it was one of three ways in which the code-breaking challenge was 

distributed. However, one of ordinary skill in the art would have found it obvious to take the 

information stored on the floppy disk distributed by Maniscalco and store it onto other portable 

storage media available at the time, which included flash EEPROM memory cards. Flash memory 

was well known in the art and existed long before the November 11,1993 invention date of the '011 

512Id. at col.l :66 -2:3. 

5J3 KSR, 127 S. Ct. at 1742. 

514 RX-125 (Maniscalco Article) at 93. 

515 Min, Tr. 2021: 17 - 2022:2 

130 
patent.Sl6 The '011 patent itself discusses how Flash EEPROM memory cards may be used as a 

replacement for removable (floppy) magnetic disks because floppy disks are "relatively slow, bulky 

and require high precision moving mechanical parts." S17 The '011 patent also states that "[t]here 

is currently underway an effort to apply non-volatile Flash EEPROM memory systems for mass 

storage applications. For example, they are intended to replace either of the existing fixed or 

removable floppy magnetic disk systems, or both."sI8 

SanDisk also asserts that Maniscalco teaches away from the secure, portable memory card 

of claim 8 because Maniscalco describes storing the decryption algorithm on, and executing it from 

the host. However, claim 8 states nothing about whether encryption algorithm must be stored on the 

host computer. Dr. Min has testified that the phrase "being read from the memory card" in claim 8 

requires the capability to transfer the encoded user data and decoding information out of the memory 

card.519 As such, the fact that the host computer may ultimately execute the decryption algorithm 

disclosed by Maniscalco is entirely consistent with a correct construction of claim 8. Furthermore, 

there is nothing to suggest in Maniscalco that the Crypt algorithm must necessarily be stored on the 

host computer in order to be executed. Indeed, Maniscalco discloses than an "executable version of 

Crypt" is provided on the IBM format diskette.s2o Therefore, there is no suggestion that Crypt must 

be loaded onto the hard drive of a host computer before it is executed. 

SanDisk also asserts that Maniscalco teaches away from the limitation that the "read encoded 

user data is decrypted with the read decoding information" because Maniscalco teaches several times 

S16 RX-120 (Izawa). 

S17 JX-3 (the '011 patent). col. 1 :45-47. 

SI8Id. at coLI :66 -2:3. 

S19 CX-1007C (Min Direct) at Q. 65. 

520 RX-125 (Maniscalco Article). 

131 
that the ciphertext stored on the diskette cannot be decrypted with the Crypt program because 

necessary decoding information is not provided. However, it is undisputed that any individual who 

possesses the decoding information (i. e., the "key"), which would include at least the author of the 

article, will be able to decrypt the read encoded user data with the read decoding algorithm. 521 

Therefore, Maniscalco does not teach away from this limitation. 

SanDisk argues that Maniscalco discloses the decryption algorithm "stored in a second 

portion of the array" as required by claim 8. SanDisk states that, under Imation's argument, the 

undersigned is to suppose that the ciphertext and the Crypt program are stored separately in a first 

and second portion of the floppy diskette, respectively. SanDisk argues that the only evidence in 

Maniscalco suggests that they are stored in a single file. 

In the first instance, SanDisk's own expert witness Dr. Min testified that in his expert opinion 

this claim element was met by the Maniscalco reference.522 In any event, under the standard of KSR, 

this does not seem to be an insurmountable change for one of ordinary skill in the art to make. 

Accordingly, SanDisk's argument is rejected. 

h. Secondary Considerations 

(1) Long-felt Need 

SanDisk argues that there was a considerable need in the Flash memory industry to have 

secure yet highly portable storage of data in a Flash environment and the memory card recited in 

claim 8 met that need. It is alleged that others failed for years to meet that need. SanDisk asserts that 

although Maniscalco was published in 1988, Imation has adduced no evidence explaining why no 

521Id. 

522 Min, Tr. 2021: 17 - 2022:2. 

l32 
one arrived at the combination of claim 8 in the five years before SanDisk invented it. SanDisk 

argues that Staff and Imation have advanced no evidence to refute its contentions. 

Imation states that SanDisk has not shown the requisite nexus between long-felt need and the 

alleged invention. It argues that both flash memory and data protection contained on a portable 

memory device were known in the prior art. Imation states that the asserted commercial success, of 

the product must be due to the merits of the claimed invention beyond what was readily available 

in the prior art, which SanDisk has failed to do. 

SanDisk's argument is not persuasive. While SanDisk has shown a five-year period between 

the Maniscalco article and the date of issuance of the patent, it must also show a sufficient 

relationship between the secondary consideration and the patented invention. 523 It has not 

demonstrated the required nexus, other than to state that Imation did not explain the 5-year interval. 

Therefore, SanDisk has not shown long-felt need. 

(2) Unexpected Results 

SanDisk alleges that the invention of claim 8 produced unexpected results for the industry 

and is alleged to have been a major breakthrough because it provided portability for secure data, a 

portability which did not exist prior to the invention. 

Imation states that SanDisk has not showed unexpected results because claim 8 is nothing 

more than Maniscalco, a portable storage device that includes security in the form of data encryption, 

updated with flash memory technology that was already available at the time of the issuance of the 

'011 patent. The idea of securing data on any portable device with security features, such as 

encryption, is neither novel nor a major breakthrough. 

523 Demaco, 851 F.2d at 1392. 

133 
SanDisk's argument is not persuasive. As discussed in the previous section, a portable 

storage device that includes security in the form of data encryption, updated with flash memory 

technology, was already available at the time of the date of issuance of the patent. Again, SanDisk 

has not shown any unexpected results that can be said to be the result of claim 8.524 Accordingly, 

SanDisk has not shown unexpected results. 

(3) Commercial Success and Industry-Wide Recognition 

SanDisk asserts that the combination of portability and security in relatively inexpensive 

Flash memory products, as defined in claim 8, led to enormous commercial success for these 

devices, as well as commercial acknowledgment of their importance. SanDisk argues that the 

portability security features of claim 8 contributed directly to the industry-wide recognition of the 

value of the invention and its commercial success. SanDisk asserts that this is the reason for its 

increase in total product revenues from [ ] More 

specifically, SanDisk alleges that the increase in the revenues generated by SanDisk Cruzer USB 

drives (which embody claim 8 of the '011 patent) from over [ 

] is due to claim 8. 

Imation states that the testimony of Dr. Harari supports the proposition that the criteria 

applied in the two July 2004 Editor's Choice awards won by SanDisk's Cruzer Titanium USB flash 

drive. Dr Harari acknowledged that in granting the awards, the CNET editor stated that the Cruzer 

drive includes a trinity of useful utilities and superior durability at a competitive price per megabyte. 

The CruzerLock encryption utility represents only one of the five features identified by Dr. Harari 

and is not even specifically mentioned. Imation states that the enhanced productivity enabled the fast 

524 fd. 

134 
write speed of the Cruzer products as the primary feature driving commercial success. With respect 

to SanDisk's increase in overall revenues, there is no evidence to tie the overall revenues to the 

invention of claim 8. 

SanDisk's arguments are not persuasive. Dr. Harari has testified that success was due to may 

factors, including but not limited to, the trinity of useful utilities,525 superior durability,526 competitive 

price,527 innovative features,528 and ease of use. 529 With respect to the sales revenues, there is no 

nexus shown between the increased sales revenues and the invention of claim 8. "[S]imple sales 

figure [ s] with no evidence of a nexus" to the claimed invention are insufficient to overcome clear 

and convincing evidence of obviousness. 530 Accordingly, for the reasons stated above, SanDisk has 

not demonstrated industry-wide recognition and commercial success. 

c. Conclusion 

For all of the reasons stated above, claim 8 has been shown to be obvious in light of 

Maniscalco, Izawa, and knowledge of one of ordinary skill in the art. There have been no showings 

of secondary considerations of obviousness. In light of this finding of obviousness, there is no need 

to consider the other possible bases for a finding of obviousness presented in this proceeding. 

3. Indefiniteness 

Imation argues that claim 8 of the '011 patent is indefinite and invalid as a matter of law 

under 35 U.S.C. ~ 112, ~ 2 because it is a hybrid claim combining an apparatus with two method 

525 Harari, Tr.1529:3 - 1530: 1. 

526 Id 

527 Id 

528 Harari, Tr. 1535: 1 0 -23. 

529 Id 

530 Telejlex Inc. v. KSR Int'l Co., 298 F. Supp.2d 581,596 (E.D. Mich.) ("Telejlex"), aff'd 

550 U.S. 398, 127, 1745. 

135 
elements. Imation asserts that claim 8 is directed to an apparatus - a "memory card" - and it contains 

two steps: (1) encoded user data and decoding information must be read from the memory card and 

(2) the read encoded user data must be decrypted with the read decoding information. As such, it is 

alleged, claim 8 is invalid because it is indefinite in that it is not sufficiently precise so as to provide 

competitors with the ability to determine whether the presence of a memory card alone infringes 

claim 8, or whether it is the use of a memory card in a particular way that constitutes infringement. 

Imation states that its argument is supported by IPXL,53J is distinguishable from Microprocessor 

Enhancement,532 and is supported by the testimony of Dr. Min and Dr. Harari. Imation asserts that 

it rejects SanDisk's argument that this situation is similar to that found in Microprocessor 

Enhancement and related cases because those cases contain functional language that states that the 

claimed apparatus is capable of performing some act and do not, like the instant case, describe active 

use. 533 

SanDisk argues that claim 8 is not indefinite. It argues that Imation's reliance on IPXL is 

misplaced because that case is a narrow one that has rarely been used to find a claim indefinite since 

its issuance in 2005. In most cases since IPXL, it is argued, including the Federal Circuit's 

Microprocessor Enhancement decision, courts have found that suspect claims did not cover both an 

apparatus and a method, but rather were apparatus claims containing functional limitations. Further, 

531 IPXL Holdings, L.L.C v. Amazon. com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) 

("IPXL"). 

532 Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367 (Fed. Cir. 

2008) ("Microprocessor Enhancement"). 

533 Imation also attempts to incorporate by reference an argument from its pre-hearing brief 

that claim 8 is also invalid because it violates 35 U.S.C. ,-r 101. RIB 27, n. 7. The arguments in post 

trial briefs are to be self-contained. Otherwise the undersigned's page limits on post trial briefs 

would be meaningless. Accordingly, Imation's,-r 101 argument will not be considered. 

136 
it is argued, the testimony cited by Imation does not adequately support Imation' s position. SanDisk 

states that, like Microprocessor Enhancement and similar cases, the language of claim 8 describes 

an apparatus and contains language that indicates that the structures cited in the claim are capable 

of performing certain actions. 

Staff supports SanDisk's position that claim 8 is not indefinite. Staff asserts that Imation is 

misreading the functioning of claim 8. It is argued that it is not the memory card that is capable of 

reading the encoded data and decoding data, and decrypting the read encoded user data with the read 

decoding information because, among other things, the claim itself recites "the encoded user data 

and decoding information being read from the memory card." Thus, Staff argues that the claim 

requires only the capability of a connected host system to be able to read the encoded user data and 

decoding information from the memory card, and that the read decoding information is capable of 

being decrypted by the host system with the read decoding information. It cites to the specification 

of the '011 patent as further support for its position. 

Imation's arguments are not persuasive. Like the situation in Microprocessor Enhancement, 

claim 8 is an apparatus claim that indicates a structure, a non-volatile memory card, which is capable 

of having the "encoded user data and the decoding information being read from the memory card, , 

and the read encoded user data is decrypted with the read decoding information.,,534 Imation, who 

has the burden of proving this affirmative defense, has not shown the this claim is insolubly 

ambiguous. Accordingly, Imation's argument that claim 8 is indefinite is rejected. 

4. Prosecution Laches 

Imation argues that SanDisk' s claim for relief under the' 0 11 patent is barred by the doctrine 

534 JX-3 (the '011 patent), claim 8, col. 15 - 16. 

137 
of prosecution laches because there has been an unreasonable delay in prosecuting the patent. 

Imation asserts that SanDisk did not file a patent claim directed to encryption/decryption until 

approximately nine years after the filing date of the application to which the '011 patent claims 

priority. Imation states that the '011 patent claims an effective date of November 12, 1993. After 

filing the' 428 application, Imation filed six continuation-in-part or continuation patent applications. 

Imation argues that SanDisk did not file any claims directed to encryption/decryption in those six 

patent applications. It was only in the seventh continuation application that SanDisk filed claims 

directed to encryption/decryption. 

SanDisk and Staff assert that Imation has not presented sufficient evidence to support a 

finding of prosecution laches. 

The undersigned agrees that Imation has not made a sufficient showing to justify a finding 

of prosecution laches. A showing of a nine-year delay as alleged by Imation, absent more, is 

insufficient to justify a finding of prosecution laches. Imation has failed to meet the criteria of the 

Federal Circuit's Symbol Technologies decision535 which are (1) an unreasonable delay, (2) that there 

was no explanation for the delay, and (3) that the delay caused prejudice to the accused infringer. 

While Imation has alleged a delay, it has not shown that the delay was unreasonable, and that the 

delay caused prejudice to the infringer. Accordingly, Imation's affirmative defense of prosecution 

laches is rejected. 

535 Symbol Techs., Inc. v. Lemelson Med, Educ. & Res. Found, 422 F.3d 1378, 1385 (Fed. 

Cir. 2005) ("Symbol Technologies"). 

138 
VI. Patent Misuse 

A. Tying Arrangement 

Respondents assert that SanDisk's licensing policy constitutes improper tying of its U.S. 

patent rights to worldwide royalty payments and constitutes per se patent misuse or an improper 

tying arrangement under a rule of reason analysis. 

1. Per Se 

Respondents argue that SanDisk demands worldwide royalties of [ ] on all licensed 

products, which include flash memory system products, such as USB drives and flash memory cards, 

whether or not they are covered by a SanDisk patent. 536 Respondents assert that conditioning a 

patent license on payment of royalties for products not covered by a patent amounts to patent 

misuse.537 According to Respondents, there is no dispute that both of the asserted patents are 

jurisdictionally limited to the United States. Therefore, Respondents argue that SanDisk's 

conditioning of its U.S. patent rights on worldwide royalties amounts to patent misuse, rendering its 

asserted U.S. patents unenforceable.538 

Respondents assert that a per se patent misuse tying claim requires four elements: (1) two 

products, (2) the sale of a product conditioned on the sale of another product, (3) sufficient market 

power to compel the purchaser to purchase the tied product; and (4) the tying arrangement affects 

a non-insubstantial amount of commerce. 539 

536 RIB 78. 

537 RIB 78 citing Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 135-36 

(1969) ("Zenith Radio"). 

538 RIB 78. 

539 RIB 79 citing Eastman Kodak Co. v. Image Tech. Servs., 504 U.S. 451,461-62 (1992) 

("Eastman Kodak "). 

139 
As to the first Eastman Kodak factor, Respondents argue that there are two separate relevant 

markets. According to Respondents, the first relevant market is the removable solid state storage 

(RS3) product market that is geographically defined as being global, while the second relevant 

market is the technology or rights to practice or use the RS3 technology that is geographically 

defined as being only in the U.S. Respondents assert that, with respect to the second relevant 

market, SanDisk has not provided, nor do Respondents need, any technological "know-how." 

Rather, all that is needed for RS3 operations in the u.s. is permission to use the RS3 technology in 

the U.s. from patent holders, including SanDisk, who have patent rights covering the RS3 

technology needed to manufacture RS3 products.54o 

As to the second Eastman Kodak factor, Respondents assert that the first product is 

SanDisk's U.S. patent rights to use the RS3 technology, while the second product is SanDisk's 

foreign rights to use the RS3 technology.541 Respondents assert that SanDisk is using its U.S. rights 

to the RS3 technology to force the payments of royalties through the licensing of its non-U.S. 

intellectual property. In other words, Respondents assert that SanDisk uses its U.S. rights to the 

RS3 technology as the "tying product" to obligate the licensing of SanDisk's non-U.S. rights, the 

"tied product," to thereby collect royalties on a worldwide basis.542 

As to the third Eastman Kodak factor, Respondents assert that SanDisk itself believes that 

it possesses market power in the RS3 technology market because SanDisk asserts that it is unaware 

of any existing RS3 products in the form of USB flash drives or CF cards that do not infringe at least 

one of its U.S. patents in its entire U.S. patent portfolio. Respondents argue that SanDisk's "take-it540 RIB 79-80. 

541 RIB 80. 

542 RIB 80. 

140 
or-leave-it" approach to its licensing and settlement negotiations is further evidence of SanDisk's 

market power in the RS3 technology market. 543 

As to the last Eastman Kodak factor, Respondents assert that requiring Respondents to pay 

royalties on a worldwide basis in order to obtain a license to SanDisk's u.s. rights affects a vast 

amount of commerce. Respondent Kingston estimates that if it were required to pay royalties ona 

worldwide basis, such royalties would amount to [ 

] which is the typical term of a SanDisk license. 544 

SanDisk asserts that, in order to prove patent misuse based on tying, Respondents must 

establish the following five elements: (1) market power; (2) tying of patents that constitute distinct 

products; (3) coercion; (4) harmful effects on competition; and (5) absence of pro competitive 

benefits. 545 According to SanDisk, Respondents have not established any of the elements. 

First, SanDisk asserts that Respondents' expert offered no opinion regarding market power 

with respect to the product market for Flash memory systems.546 Second, SanDisk asserts that 

Respondents have failed to prove that SanDisk ties two separate products. According to SanDisk, 

its Flash memory system license involves a single product, which is the right to use SanDisk's 

technology relating to the interoperation of Flash memory controllers, Flash memory chips and other 

parts of a memory system. 547 Third, SanDisk asserts that Respondents have failed to prove coercion. 

According to SanDisk, many companies have chosen to license SanDisk's technology accepting 

543 RlB 81. 

544 RlB 81-82. 

545 eIB 134 citing Jefferson Parish Hosp. Dist. No.2 v. Hyde, 466 U.S. 2 (1984) ("Jefferson 

Parish"); Philips, 424 F.3d 1179. 

546 eIB 134. 

547 eIB 135-36. 

141 
SanDisk's terms, while others have negotiated different terms, but that none have complained of 

coercion.548 Fourth, SanDisk asserts that Respondents have failed to prove that there is an adverse 

impact on competition resulting from SanDisk's proposed license terms. According to SanDisk, the 

focus of the inquiry is not on companies purchasing the technology, but on providers of alternative 

technologies. And SanDisk asserts that when the focus is not on the Respondents, but on alternative 

technology providers, Respondents have failed to show a negative effect on commercially available 

technology.549 In addition, SanDisk asserts that higher prices do not necessarily constitute 

anti competitive harm.55G Finally, SanDisk asserts that even if Respondents could show anticompetitive efforts from SanDisk's licensing practices, the pro competitive efficiencies outweigh 

those effects.551 According to SanDisk, in this industry, the channels of distribution and use make 

it very difficult to track where Flash memory products are shipped, sold, and used.552 Therefore, 

SanDisk and its licensees chose to enter into worldwide portfolio cross-licenses that eliminate the 

administrative difficulties that they would otherwise face. 553 In addition, SanDisk asserts that it 

wants its licensees to have worldwide design freedom because SanDisk does not want to undertake 

the burdens of monitoring its licensees' activities worldwide to determine if they infringe any 

548 cm 136-37. 

549 cm 137-38. 

550 CIB 138 citing Jefferson Parish, 466 U.S. at 14. 

551 cm 140-41. 

552 cm 141 citing CRX-220C (Harari Rebuttal) at Q. 82; JX-114C (Harari Dep) at 138-40, 

158-59, 160-61; CRX-226C (Thompson Witness Statement) at Q. 186-92; lX-lSI C (Mehotra Dep.) 

at 73-75; CRX-221C (Hausman Rebuttal) at Q. 71-85. 

553 [ 

] 

142 
unlicensed SanDisk patents.554 

Staff agrees with SanDisk that the evidence does not support a finding of patent misuse based 

on improper tying under either the per se or rule of reason analysis.555 Staff agrees with SanDisk 

that, under 35 U.S.C. § 271(d), a "per se" patent misuse defense may not even be a viable claim for 

licensing arrangements that condition the rights of any patent of the sale of a patented product to the 

rights in another patent or sale or purchase of a separate product.556 Staff also agrees with SanDisk 

that SanDisk's worldwide license can be considered a single "product" consisting ofthe freedom to 

use SanDisk's patented technology for flash memory system products anywhere in the world.557 

As to Respondents' argument that there is one market for SanDisk' s u.S. patent rights while 

a separate market exists for the right to sell products covered by SanDisk's U.S. patents in other 

countries worldwide, Staff asserts that, while the evidence shows that SanDisk possesses "market 

power" with regard to its U.S. patent rights, the evidence does not show that tying those rights to 

worldwide sales has an anticompetitive effect. In support, Staff cites to Dr. Hausman's testimony, 

which references the FTC/DOl Guidelines for the Licensing ofIntellectual Property. 558 Staff agrees 

with SanDisk that there are many pro competitive benefits and efficiencies from requiring a worldwide license, rather than a U.S.-only license, because it may not be feasible for SanDisk to offer a 

"country-by-country" license because it is difficult, ifnot impossible, to track sales of Respondents , 

554 CIB 142. 

555 SIB 94-95. 

556 SIB 95 citing 35 U.S.C. § 271(d); Philips, 424 F.3d at 1186. 

557 SRB 26. 

558 SIB 96-97 citing CRX-221C (Hausman Rebuttal) at Q. 25; CRX-14 (DOl and FTC 

Antitrust Guidelines for the Licensing of IP). 

143 
products where SanDisk possesses patent rights over those products. 559 According to Staff, the 

Federal Circuit has recognized that portfolio licenses can eliminate the potential for future disputes 

between the parties and avoid litigation. 560 

SanDisk asserts that Respondents err as a matter of law in asserting a per se theory of tying 

because courts have recognized that portfolio licensing of patents is fundamentally different from 

tying the sales of two physical products and therefore, the per se doctrine does not apply to package 

licenses. 561 

SanDisk also asserts that its licensing terms do not apply outside the scope of its patented 

technology and that the terms have no anti competitive effect.562 According to SanDisk, tying is a 

rational activity that occurs throughout the economy. SanDisk argues that patent holders frequently 

license their portfolios as a package, which is lawful, efficient, and beneficial to both sellers and 

consumers.563 In support, SanDisk asserts that the Federal Circuit has recognized the lawfulness and 

efficiency of portfolio licensing.564 Specifically, in Philips, the Federal Circuit held that a package 

of patents, which are all necessary to practice a technology, is one product, rather than a tying 

arrangement.565 According to SanDisk, Philips is controlling here because SanDisk's worldwide 

portfolio licenses also involve a single product-a covenant not to sue the licensee for products in the 

559 SIB 97-98 citing CRX-221C (Hausman Rebuttal) at Q. 70, 72; Philips, 424 F.3d at 1192; 

SRB 26-27. 

560 SRB 27 citing Philips, 424 F.3d at 1192-93. 

561 CRB 67 citing Texas Instruments, Inc. v. Hyundai Elecs. Indus., 49 F.Supp.2d 893, 912 

(E.D. Tex. 1999) ("Texas Instruments"); In re Recombinant DNA Tech. Patent & Contract Litig., 

850 F.Supp. 769, 775 (S.D. Ind. 1994) ("Recombinant DNA"); Philips, 424 F.3d 1186, n. 1. 

562 CIB 132. 

563 CIB 132-33 citing CRX-221C (Hausman Rebuttal) at Q71-94; Mangum, Tr. 1761. 

564 CIB 133 citing Philips, supra. 

565 Id. at 1196. 

144 
specified field of use regardless where in the world the products are manufactured, assembled, 

shipped, sold or used. 566 SanDisk asserts that its worldwide portfolio licensing achieves substantial 

procompetitive benefits in the form of ease of administration, worldwide freedom of design and 

operation, and patent peace with licensees. 567 

Respondents counter SanDisk and Staff s argument that tying cannot be per se patent misuse, 

citing to Certain Set-Top Boxes.568 

As to the issue of whether or not tying can or cannot constitute per se patent misuse, the 

undersigned agrees with SanDisk and Staff that in Philips, the Federal Circuit called into question 

whether tying arrangements should be analyzed under per se patent misuse. 569 As the Federal Circuit 

did not specifically hold that such an analysis is improper, the undersigned agrees with Respondents 

that the issue may be raised. While the undersigned agrees that the issue may be raised, the 

undersigned does not find Respondents' arguments to be persuasive. 

The undersigned agrees with SanDisk and Staff that SanDisk offers a portfolio licensing of 

patents, which is different from tying the sale of two physical products. The undersigned also agrees 

with SanDisk and Staff that SanDisk has shown that there are many procompetitive benefits and 

efficiencies from requiring a world-wide license, rather than a U.S.-only license. For example, 

SanDisk has shown evidence that it is not feasible for SanDisk to offer a "country-by-country" 

license because it is difficult, if not impossible, to track sales of Respondents' products where 

566 CIB 133. 

567 CIB 134. 

568 RRB 41-42 citing Certain Set-Top Boxes, Inv. No. 337-TA-454, Final Initial 

Determination (November 8, 2002). 

569 Philips, 424 F.3d at 1186, n. 1. 

145 
SanDisk possesses patent rights over those products.57o In addition, portfolio licenses can eliminate 

the potential for future disputes between the parties and avoid litigation.571 Furthermore, the 

undersigned agrees with SanDisk and Staff that Respondents have not sufficiently shown that there 

are two separate products that are tied. 

Accordingly, the undersigned finds that Respondents have not shown that SanDisk's 

licensing policy constitutes improper tying of its U.S. patent rights to worldwide royalty payments 

such that it would constitute per se patent misuse. 

2. Rule of Reason 

Respondents assert that SanDisk's worldwide licensing scheme creates a threat of harm and 

restriction on trade, constituting an improper tying arrangement under the rule of reason analysis. 

According to Respondents, SanDisk has failed to provide any evidence that a worldwide license is 

necessary. Respondents assert that SanDisk has not performed any valuation of the worldwide 

royalty rate that it charges under its standard licensing terms or what royalty rate it may be able to 

charge for a U.S.-only license. Respondents argue that SanDisk's failure to provide any evidence 

of Respondents' need for foreign rights ends the inquiry into whether there are any efficiencies to 

be gained from a worldwide license. Respondents further argue that the costs associated with 

SanDisk's worldwide royalty payments exceed any alleged efficiencies. 

Respondents argue that in a standard SanDisk license agreement, [ 

570 CRX-221C (Hausman Rebuttal) at Q. 70, 72. 

571 Philips, 424 F .3d at 1192-93. 

146 

] Because 
there is an obligation to pay a royalty payment even if the licensee designs around SanDisk's patent, 

Respondents argue that there is a decreased motivation to innovate, which threatens product variety 

and consumer choice. 572 Furthermore, Respondents assert that there is a harm to consumers because 

of potential price increases, which are either passed onto consumers in the RS3 market, a decrease 

in funding for product development, or the decision by certain companies to exit the market. 573 

Respondents argue that there are less restrictive alternatives than a worldwide royalty, such 

as a U.S.-only license. Respondents assert that certain Respondents are able to track which sales are 

made in the U.S., which would make calculation of a U.S.-only license feasible. 574 

Respondents assert that SanDisk has provided no evidence of any need by any of the 

Respondents for any of San Disk' s foreign patent rights. Therefore, Respondents assert that, because 

there is no evidence of a demonstrated need, SanDisk's claims that there are procompetitive benefits 

to a worldwide license are unfounded. 575 

SanDisk asserts that Respondents have failed to prove any of the required elements of a rule 

of reason patent misuse claim. Specifically, SanDisk asserts that Respondents are asking the 

undersigned to assume that SanDisk's licenses extend the power of its patents. According to 

SanDisk, the evidence shows that its licenses do not extend its power over any non-patented 

technologies or products. 576 Furthermore, SanDisk asserts that Respondents have failed to prove 

572 RIB 84. 

573 RIB 85. 

574 RIB 86-87. 

575 RRB 42-43. 

576 CRB 74 citing Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700, 704 (Fed. Cir. 1992) 

("Mallinckrodt"). 

147 
anticompetitive effects or establish the absence of efficiencies resulting from SanDisk's licenses. 577 

Staff agrees with SanDisk that the evidence does not support a finding of patent misuse based 

on improper tying under the rule of reason analysis.578 

Respondents counter SanDisk's arguments regarding the "market." According to 

Respondents, SanDisk is improperly collapsing the two separate markets of its U.S. patents and 

foreign patents into one market. Respondents argue that rights to U.S. patents covering a particular 

technology are a properly defined product market for assessing a tying arrangement. 579 

Respondents also assert that SanDisk overstates the holding in Philips. According to 

Respondent, in Philips, the Federal Circuit assessed a tying claim of alleged "non-essential" U.S. 

patents included as part of a patent portfolio and did not assess conditioning a license to U.S. patents 

on licensing foreign patents. 580 Similarly, Respondents assert that SanDisk's reliance on Texas 

Instruments is also misplaced. According to Respondents, in Texas Instruments the parties were 

engaged in concurrent litigation in several foreign countries, whereas here SanDisk has not even 

alleged that any of the Respondents infringe any of its foreign patents.581 

Respondents argue that SanDisk improperly dismisses the threat of harm and restraint on 

competition from raising rivals' costs and limiting their ability to compete, which support a finding 

of patent misuse. Respondents argue that because SanDisk has never determined what a royalty rate 

would be for a U.S.-only license, SanDisk cannot claim that there is no harm from charging a 

75. 

577 CRB 74 citing Minebea Co. v. Pabst, 444 F.Supp.2d 68 (D.D.C. 2006) ("Minebea"); CRB 

578 SIB 94-95. 

579 RRB 43 citing Certain Set-Top Boxes, Inv. No. 337-TA-454. 

580 RRB 43-44. 

581 RRB 44. 

148 
worldwide license royalty rate.582 

SanDisk counters Respondents' reliance on PSC, which SanDisk argues only emphasizes 

Respondents' failure of proof in this investigation.583 

The undersigned agrees with SanDisk and Staffthat the evidence does not show that SanDisk 

extends its licensing power over any non-patented technologies or products. Furthermore, as already 

found above, Respondents have failed to establish the absence of efficiencies resulting from 

SanDisk's portfolio licenses. Accordingly, the undersigned finds that Respondents have not shown 

that SanDisk's licensing policy constitutes an improper tying arrangement under a rule of reason 

analysis. 

B. Double Royalties 

Respondents assert that the unique structure of SanDisk' s standard license agreement results 

in the impermissible double payment of royalties for the same patents on the same products. 

According to Respondents, SanDisk enters into licenses with many flash memory device 

manufacturers, that either cover flash memory devices or flash memory systems. Respondents assert 

that, because one "use" of a flash memory chip is in a flash memory system and because the license 

includes the "uses" of flash memory chips, licensed flash memory chips include a license relating 

to flash memory systems, as well as flash memory devices, which has already been paid for. 

Respondents assert that SanDisk's charge of a royalty on flash memory systems constitutes a double 

royalty on the licensed flash memory chips.584 

Respondents argue that flash memory chips, standing alone, have no meaningful independent 

582 RRB 44. 

583 eRB 74-75. 

584 RIB 88. 

149 
value other than in conjunction with a controller or controller functionality that interfaces with the 

memory chip to enable sending or retrieving information stored on the memory chip.585 Respondents 

argue that SanDisk' s licensing scheme, which charges a royalty on the full price of the flash memory 

system from the flash memory system manufacturers, after having charged a royalty on the memory 

chips from the memory manufacturers, results in SanDisk's double royalties at different levels of 

commerce. Respondents argue that because of the lack of independent value of licensed memory 

chips outside of a flash memory system, the royalty paid by SanDisk's flash memory chip 

manufacturers is for the reasonably anticipated use of the memory chip in a flash memory system. 

When SanDisk charges a royalty on the full price of the flash memory system, Respondents argue 

that this is a double royalty on the flash memory chip.586 Respondents assert that the double royalty 

increases the price to consumers for RS3 products, which is harmful to consumers, and therefore 

constitutes patent misuse.587 

SanDisk asserts that, in order to prove patent misuse based on double royalties, Respondents 

must show the following four elements: (1) collection of two royalties for the same set of patent 

rights; (2) the resulting extension of the scope of the patent grant; (3) causing anti competitive effect; 

and (4) under the rule of reason, the absence of pro-competitive benefits.588 According to SanDisk, 

Respondents have not established any of the elements. First, SanDisk asserts that it collects royalties 

for two distinct sets of technologies, covered by two sets of patent rights, which are licensed to 

different groups of users for the manufacture of different products. Specifically, SanDisk asserts that 

585 RIB 89-90. 

586 RIB 90. 

587 RIB 90-91. 

588 eIB 143 citing Mallinckrodt, 976 F.2d at 708. 

150 
one set relates primarily to technologies used entirely inside memory chips, while the other set relates 

mainly to technologies involving the integration fo the controller, the memory chips, the firmware 

and the other parts of a memory system. 589 As an example, SanDisk points to the [ 

Second, SanDisk asserts that Respondents have failed to prove that SanDisk's licensing 

program extends beyond the scope of its patent grant because SanDisk only collects royalties for: 

(1) those Flash memory chips that use SanDisk's chip technology and, independently of the 

licensing arrangement, would be subject to SanDisk's Flash memory chip patents, and (2) those 

systems that use SanDisk's interface technology and, independently of the licensing arrangement, 

would be subject to SanDisk's Flash memory system patents. 59 ! 

Third, SanDisk asserts that Respondents have failed to prove the existence of an antitrust 

market involving unpatented goods in which competing technologies are excluded and competition 

is foreclosed. According to SanDisk, anticompetitive harm requires proof of injury to competition 

as a whole, not just injury to one company. In addition, higher prices do not necessarily constitute 

anticompetitive harm.592 

589 CIB 145 citing CRX-220C (Harari Rebuttal) at Q. 47,83-86; CRX-226C (Thompson 

Witness Statement) at Q. 47-58; JX-146C (ChernicoffDep.) at 50-52. 

590 [ 

] 

591 CIB 146-47 citing CRX-226C (Thompson Witness Statement) at Q. 123-24. 

592 CIB 147-48 citing Us. v. Microsoft, 253 F.3d 34, 58 (D.C.C. 2001) ("Microsoft") and 

(continued ... ) 

151 
Finally, SanDisk asserts that its licensing program is procompetitive because it ensures that 

the appropriate amount of royalties is paid at each level. 593 

Staff agrees with SanDisk that Respondents have failed to establish patent misuse based on 

double royalties. According to Staff, the evidence shows that the royalties collected by SanDisk 

from the flash memory chip manufacturers pay for a different set of patent rights than the royalties 

that SanDisk seeks to collect from Respondents in this investigation. 594 For example, Staff notes that 

it is undisputed that the licenses that SanDisk has granted to the flash memory chip manufacturers 

includes a "field of use" provision that limits the licensed field of use to only flash memory chips, 

and, therefore, does not include the sale and importation of Respondents' accused products.595 

Respondents assert that SanDisk's citations and application of the law on double royalties 

is wrong, particularly, SanDisk's reliance on Mallinckrodt and C. R. Bard, which do not even address 

double royalties. Respondents assert that a case that is directly on point is PSc. 596 As to SanDisk's 

argument that flash memory chips have other uses other than in the accused memory systems, 

Respondents counter that in PSC, the fact that a double royalty may not be collected in every 

instance does not absolve the misuse conduct of the patent holder.597 In addition, Respondents 

counter SanDisk's argument that it only collects royalties for flash memory systems that use 

SanDisk's flash memory system patent because there is evidence that SanDisk collects a royalty 

592( ... continued) 

Rambus Inc. v. US.ITC., 522 F.3d 456,464 (D.C.C. 2008) ("Rambus"). 

593 CIB 149. 

594 SIB 99-100 citing Mineabea, supra. 

595 SIB 100 citing CRX-226C (Thompson Witness Statement) at Q. 67-68, 80; SRB 27. 

596 RRB 46-47 citing PSC Inc. v. Symbol Technologies, Inc., 26 F.Supp.2d 505 (W.D.N.Y, 

1998) ("PSC'). 

597 RRB 48. 

152 
under its standard license agreement whether or not a flash memory system is covered by any of 

SanDisk's patents. 598 Specifically, Respondents cite to evidence that[ 

SanDisk asserts that Respondents' double royalty argument misses the fundamental point that 

[ 

] According to SanDisk, the field of use 

and royalty provisions specifY that the type of product manufactured determines for which patents 

and rights royalties are paid. SanDisk asserts that [ 

Put simply, Respondents argue that SanDisk is collecting double royalties as follows. First, 

SanDisk collects a first royalty from its licensed memory manufacturers. Second, SanDisk collects 

a "second" royalty from the flash memory system product manufacturers when they incorporate the 

flash memory chip into a flash memory system. In Respondents' view, SanDisk is extracting two 

payments for the same product on the same patents, which imposes an unreasonable restraint on 

competition by either increasing the cost for flash memory systems, or decreasing the profit margin 

of flash memory system manufacturers. 

In the undersigned's view, while there is evidence that SanDisk has patents that overlap 

between its field of use for flash memory devices and flash memory systems, the evidence shows that 

chip manufacturers and system manufacturers pay for a different set of rights. The undersigned 

598 RRB 48 citing Thompson, Tr. 1385-87. 

599 RRB 48-49 citing RX-455 § 5.14. 

600 CRB 73-74. 

153 
agrees with SanDisk and Staffthat Respondents' double royalty argument fails because SanDisk's 

licenses to systems manufacturers [ 

] The evidence shows that the field of use and 

royalty provisions specify that the type of product manufactured determines for which patents and 

rights royalties are paid.60J Accordingly, the undersigned finds that Respondents have not shown that 

SanDisk's licensing policy results in the impermissible double payment of royalties for the same 

patents on the same products. 

VII. Patent Exhaustion 

A. Positions of the Parties 

Imation argues that SanDisk has licensed the manufacture of non-volatile memory chips 

(licensed flash memory chips), which are incorporated into Imation's accused downstream flash 

memory products. These licensed chip manufacturers are said to include [ 

] It is asserted that these licenses grant the flash memory chip manufacturers unrestricted 

rights to make, use, and sell their flash memory chips under SanDisk's entire patent portfolio, 

including all of the patents-in-suit in this investigation. Imation states that SanDisk seeks to exclude 

Imation's accused downstream flash memory products because they contain unlicensed controllers 

alleged to infringe the patents-in-suit in this investigation. Imation argues that this activity is 

precluded under the doctrine of patent exhaustion. 

Imation argues that the United States Supreme Court III Quanta602 reaffirmed the 

601 [ 

] 

602 Quanta, supra. 

154 
longstanding doctrine of patent exhaustion as articulated in Universal Lens. 603 Imation asserts that 

under that doctrine, for the patents-in-suit to be exhausted, a showing of an authorized sale of a 

patented article must occur and the article accused of infringement must sufficiently embody the 

patent. It is stated that the license that covers the flash memory chips operates as an authorized sale 

for downstream products that contain the memory chips. Imation also argues that the licensed flash 

memory chips necessarily embody the patents-in-suit because: (1) the chips are the most material 

and necessary component of the accused flash memory products at issue in this investigation; and 

(2) their reasonable and intended use is to be finished under the SanDisk patents covered by the 

licenses, including the '011 and '424 patents. Therefore, it is argued that SanDisk's rights in the '011 

and '424 patents are exhausted by virtue ofthe unconditional licenses that cover the licensed flash 

memory chips contained in the accused products. 

Imation asserts that SanDisk's license agreements with [ 

] Even if SanDisk were to prove that 

the agreements have such provisions, Imation argues that this would, at best, give SanDisk 

contractual remedies against its licensees, but has no effect on the exhaustion of the patents. 

With respect to the '011 patent, Imation asserts that because claim 8 requires the presence 

of "flash EEPROM" and "flash EEPROM arrays," the claimed method cannot be practiced without 

603 United States v. Univs. Lens, Inc. 316 U.S. 241 (1942) ("Universal Lens"). 

155 
flash memory. Also, Imation argues that the flash memory chip described in claim 8 is the same flash 

memory chip that is contained in the accused Imation products. Finally, it is asserted, it is undisputed 

that the flash memory chips contained in the accused Imation products are licensed under SanDisk's 

patent portfolio, which includes the '011 patent. Imation argues that it follows that one cannot 

practice claim 8 of the '011 patent without the licensed flash memory. 

Imation also argues that the reasonable and intended use of the licensed flash memory chips 

is to practice SanDisk's licensed patents including claim 8 of the '011 patent. It is argued that 

SanDisk has presented no evidence whatsoever in support of its assertion that the' 0 11 patent is not 

exhausted or that there are substantial non-infringing uses of the licensed flash memory other than 

incorporation into flash memory systems that practice both the '011 and '424 patents. 

Imation states that the licensed flash memory chips are not required to completely practice 

the patents such that everything inventive about the patents are embodied in the chips. Imation 

argues that the test is whether the licensed article embodies essential features of the patented 

invention even if the licensed article only partially practices the patent. 

With respect to SanDisk's argument that the sale of licensed flash memory chips by the 

licensees were not authorized because SanDisk's license agreements with [ 

]First, Imation states that SanDisk raised this argument 

for the first time in its initial post-hearing brief and therefore the undersigned is urged to not consider 

this argument because it was not set forth in SanDisk's pre-hearing brief as required by Ground Rule 

8.2. In the alternative, if the undersigned does consider this argument on the merits, Imation argues 

that there is nothing in the licensing agreements that supports SanDisk's position. 

156 
Imation's arguments with respect to claim 17 of the '424 patent are similar to its arguments 

regarding the '011 patent. It states that the '424 patent relates to "metablock operation," which is 

said to be a method for storing data in "metablocks" within a memory system and then updating 

portions of that data. Imation asserts that the licensed flash memory chips embody essential features 

of claim 17 and that the reasonable and intended use of the licensed flash memory chips is to practice 

SanDisk's licensed patents, including claim 17 of the '424 patent. Imation states that the testimony 

of Dr. Rhyne as to substantial uses of flash memory chips other than to practice claim 17 of the '424 

patent is not supported by the evidence in this proceeding. It is stated that the only other uses cited 

by Dr. Rhyne were not current examples or applications. Imation makes similar arguments with 

respect to dependent claims 24 and 30 of the '424 patent. 

In addition, with respect to both patents, Imation argues that it is specifically licensed to 

import its accused products. Imation asserts that the two patents, as part of SanDisk's overall 

portfolio of patents, are included in cross-licenses with [ ] Imation also 

argues that it has an implied license to import its accused products. 

SanDisk argues that its licenses of its chip-related patent claims to chip manufacturers does 

not exhaust its rights with respect to systems manufacturers. SanDisk states that its chip licensees 

manufacture and sell free-standing Flash memory chips only. It is asserted that these chips do not 

embody the inventive features ofthe patents-in-suit, and have significant non-infringing uses. The 

patents-in-suit, the '011 and the '424 patents, are said to be system patents rather than chip patents. 

SanDisk asserts that just because Imation uses licensed chips in the products it imports and sells, this 

does not give Imation the right to import and sell systems that contain the licensed chips. 

It is argued that Imation has failed to sustain its burden of proving that free-standing flash 

157 
memory chips embody the essential features of the inventions of the '424 and '011 patents. 

Specifically, SanDisk argues that the '424 patent relates to management of data in a flash memory 

system, and the '011 patent relates to storing encrypted data and the information useful to decrypt 

such data (e.g., decryption algorithm) in a non-volatile memory card. It is asserted that the essential 

features of these patents are performed outside the memory chip by a controller and/or software. 

SanDisk argues that the creative or inventive aspect of implementing these patents, which involves 

integrating the chip with a controller and other parts, begins after the chips are sold. 

SanDisk argues that the chips have other reasonable uses other than incorporation into 

infringing systems. SanDisk rejects Imation's argument that SanDisk has filed to show noninfringing uses for flash memory chips. 

Finally, SanDisk argues Imation has not shown that [ 

authorized to sell chips for incorporation into unlicensed systems. 

Staff argues that the licensed flash memory chips supplied by [ 

] were 

] 

do not sufficiently embody the asserted patents because they have substantial uses other than 

incorporation into flash memory systems that practice SanDisk's asserted patents. Staff asserts that 

the licensed flash memory chips have not been shown to substantially embody the asserted patents. 

B. Discussion and Conclusion 

As indicated above, patent exhaustion is an affirmative defense. For such a showing to be 

made, it must be demonstrated that the licensed item substantially embodies the essential aspects of 

the patents in question, in this case the '011 and the '424 patents.604 Otherwise the first sale of the 

licensed item itself does not exhaust the patent in question and subsequent downstream products are 

604 Quanta, 128 S.Ct. at 2128 - 2129. 

158 
not immune from infringement allegations even though those downstream products contain the 

licensed item.605 

In this instance, the licensed item is a flash memory chip. With respect to the '011 patent, it 

is clear that a flash memory chip does not substantially embody the essence of that patent. The '011 

patent requires a flash EEPROM memory card that includes both encoded memory data and a 

decryption algorithm that can be read from the memory card.606 A flash memory chip, standing alone, 

does not embody those elements of claim 8 of the' 0 11 patent. The licenses in question cover only 

flash memory chips.607 

In addition, Imation has not shown that there are no non-infringing uses for flash memory. 

Imation's arguments that SanDisk and Staffhave failed to show that there are non-infringing uses 

is not persuasive. As the party who raised the affirmative defense of patent exhaustion, the burden 

is upon Imation to prove all elements of patent exhaustion. Accordingly, Imation has failed to 

demonstrate patent exhaustion by a preponderance of the evidence.6os 

With respect to the '424 patent, Imation's arguments are similarly unpersuasive. The '424 

patent relates to the management of data.609 More specifically, claim 17 pertains to a method of 

updating Flash memories. A flash memory chip does not embody a number of key elements of claim 

605Id. 

606 JX-3 (the '011 patent), claim 8, col. 15 - 16. It should be noted that in a previous section 

of the initial determination, claim 8 of this patent was determined to invalid due to obviousness. See 

Section V(D)(2). If that determination is upheld by the Commission, there would be no need to 

consider patent exhaustion in the context of claim 8 of the '011 patent. Therefore the analysis of 

patent exhaustion in terms of claim 8 of the '011 patent necessarily assumes, for the purpose of 

analysis only, the validity of claim 8 of the '011 patent. 

607 See, for example, lIB at 38. 

60S Jazz Photo 1, 264 F.3d at 1102. 

609 JX-2 (the '424 patent). 

159 
17, such as features linking at least one block from at least two sub-arrays and updating pages of 

original data by programming replacement data into pages within blocks, each as described in detail 

in claim 17 of the '424 patent.610 

Similarly, the '424 patent contains claim 24 and 30, which pertain to a method to efficiently 

update some, but not all, pages of data in a memory block of a flash memory system. A flash 

memory chip alone omits a number of key features of these claims, such as the features of 

programming a second a plurality of a total number of pages in a second block with updated data 

and a logical page address, reading and assembling data from pluralities of pages and selecting the 

updated data from pages most recently programmed, causing updated data to be programmable in 

pages of a second block having different offset positions than those of pages in the first block, and 

consisting of an enclosed card having an electrical connector along one edge to connect with a host 

system, each as described in claims 20, 24 and 30 of the '424 patent.611 The absence of these features 

means that a flash memory chip, standing alone, cannot program, update and omit data and manage 

addresses in the manner described in claims 24 and 30. 

As with the 'OIl patent, Imation's assertion that SanDisk and Staff have not shown 

affirmatively that there are in fact non-infringing uses for flash memory chips, is not persuasive. It 

is Imation's burden, as the party raising the affirmative defense of patent exhaustion, to make the 

appropriate showing that there are no non-infringing uses for flash memory chips. Imation has not 

persuasively made such a showing. Accordingly its argument is rejected.612 

For all of the reasons set forth above, Imation's argument of patent exhaustion as to the 'OIl 

610 Id, claim 17, col. 14 - 15. 

611 CRX-225C (Rhyne Rebuttal) at Q. 9-15. 

612 For the same reasons, Imation's argument that it has an implied license is also rejected. 

160 
and '424 patents is rejected. 

VIII. Domestic Industry - Economic Prong 

As stated earlier, on October 2,2008, the undersigned issued an initial determination granting 

SanDisk's motion for summary determination that it has satisfied the economic prong of the 

domestic industry requirement with respect to u.s. Patent Nos. 6,426,893; 6,763,424; and 

7,137,011.613 

613 See Order No. 46 (October 2, 2008). 

161 
CONCLUSIONS OF LAW 

1. The Commission has subject matter jurisdiction in this investigation. 

2. The Commission has personal jurisdiction over Respondents. 

3. Respondents Phison, SMI, and Skymedi's accused products do not infringe claims 17,24, 

or 30 of U.S. Patent No. 6,763,424 in violation of35 U.S.C. § 27I(a). 

4. Respondent Imation' s accused products do not infringe claim 8 ofU. S. Patent No.7, 13 7,011 

in violation of35 U.S.C. § 27I(a). 

5. An industry in the United States exists with respect to SanDisk's products that is practiced 

by U.S. Patent Nos. 6,763,424 and 7,137,011, as required by 19 U.S.C. § 1337(a)(2) and (3). 

6. Claims 17,24, and 30 of U.S. Patent No. 6,763,424 are not invalid under 35 U.S.C. § 102 

or § 103. 

7. Claim 8 of U.S. Patent No. 7,137,01lis invalid under 35 U.S.C. § 103 for obviousness based 

on the Maniscalco prior art reference in combination with the Izawa prior art reference and 

the knowledge of a person of ordinary skill in the art. 

8. U.S. Patent Nos. 6,763,424 and 7,137,011 are not invalid and/or unenforceable based on 

patent misuse, patent exhaustion, licensing, or prosecution laches. 

162 
INITIAL DETERMINATION 

Based on the foregoing opinion, findings of fact, conclusions of law, the evidence, and the 

record as a whole, and having considered all pleadings and arguments, including the proposed 

findings offact and conclusions of law, it is the Administrative Law Judge's Initial Determination 

that a violation of Section 337 of the Tariff Act of 1930, as amended, has not been found in the 

importation into the United States, the sale for importation, or the sale within the United States after 

importation of certain flash memory controllers, drives, memory cards, and media players and 

products containing same, in connection with claims 17,24, and 30 of U.S. Patent No. 6,763,424 

and claim 8 of U.S. Patent No. 7,137,011. Furthermore, the Administrative Law Judge hereby 

determines that a domestic industry in the United States exists that practices U.S. Patent Nos. 

6,763,424 and 7,137,01l. 

The Administrative Law Judge hereby CERTIFIES to the Commission this Initial 

Determination, together with the record of the hearing in this investigation consisting of the 

following: the transcript of the evidentiary hearing, with appropriate corrections as may hereafter be 

ordered by the Administrative Law Judge; and further the exhibits accepted into evidence in this 

investigation as listed in the attached exhibit lists. 

Pursuant to 19 C.F.R. § 21 0.42(h), this Initial Determination shall become the determination 

of the Commission unless a party files a petition for review pursuant to 19 C.ER. § 21O.43(a) or the 

Commission, pursuant to 19 C.F.R. § 210.44, orders on its own motion a review of the Initial 

Determination or certain issues therein. 

163 
RECOMMENDED DETERMINATION ON REMEDY AND BOND 

Pursuantto Commission Rules 210.36(a) and 21 0.42(a)(1)(ii), the Administrative Law Judge 

is to consider evidence and argument on the issues of remedy and bonding and issue a recommended 

determination thereon. 

IX. Remedy and Bonding 

A. Limited Exclusion Order 

Under Section 337(d), the Commission may issue either a limited or a general exclusion 

order. A limited exclusion order instructs the U.S. Customs Service to exclude from entry all articles 

that are covered by the patent at issue and that originate from a named respondent in the 

investigation. The Federal Circuit has held that the Commission has "no statutory authority to issue 

an LEO against downstream products ofnon-respondents.,,614 

SanDisk requests that a permanent limited exclusion order be issued excluding Respondents' 

infringing Flash memory controllers, drives, memory cards and media players, and products 

containing same from the United States. Furthermore, SanDisk requests that the limited exclusion 

order should exclude Respondents' infringing devices from entering the United States for all 

purposes, including, without limitation, testing, sampling, sale, promotion, and demonstration 

purposes.615 In addition, SanDisk requests that the limited exclusion order include a certification 

provision.616 

Respondents assert that, if a violation is found the remedy should consist of: (1) a limited 

exclusion order only as to any specific respondents found in violation, and (2) a cease and desist 

614 Kyocera, 545 F.3d at 1345. 

615 CIB 158. 

616 CIB 158. 

164 
order only as to specific system company respondents if they are found in violation and if they have 

commercially significant domestic inventory. Respondents assert, however, that [ 

] Therefore, Respondents assert that, to the extent it is determined that an 

exclusion order is warranted, the supply and importation into the U.S. of component parts of a flash 

memory system product or that are stipulated not to infringe any of the asserted patents, should not 

be included in the exclusion order. 617 Respondents agree that, ifthere is an exclusion order, it should 

include a certification provision to assist Customs.618 

Staff agrees that, if a violation is found, that there be a limited exclusion order to exclude 

accused infringing products of all the named Respondents.619 

The undersigned agrees with the parties that, if a violation is found, that there be a permanent 

limited exclusion order to exclude the accused infringing products of the named respondents in this 

investigation. 

B. Cease and Desist Order 

Under Section 337(f)(1), the Commission may issue a cease and desist order in addition to, 

or instead of, an exclusion order. Cease and desist orders are warranted primarily when the 

respondent maintains a commercially significant inventory of the accused products in the United 

States.620 

617 RIB 91-92. 

618 RIB 92-93. 

619 SIB 104. 

620 Certain Crystalline, 15 U.S.P.Q.2d at 1277-79. 

165 
SanDisk requests a cease and desist order against Respondents [ 

]62l Respondents dispute that SanDisk has met 

its burden in proving that any of the system company respondents have commercially significant 

inventories in the United States. Respondents argues that, to the extent SanDisk demonstrates that 

any respondent maintains commercially significant inventory in the United States, SanDisk has not 

presented any evidence to show that this inventory is not licensed under the patents, because licensed 

products should not be counted toward the assessment of whether SanDisk has met its burden as to 

a commercially significant inventory.622 

The undersigned agrees that the evidence shows that [ 

] and that a cease and desist order is warranted against these Respondents. 

C. Bond During Presidential Review Period 

Ifthe Commission enters an exclusion order or cease and desist order, parties may continue 

to import and sell their products during the pendency of the Presidential review under a bond in an 

amount determined by the Commission to be "sufficient to protect the Complainants from any 

injury.,,623 SanDisk asserts that the parties have stipulated that [ 

] 

621 CIB 159 citing CX-1861C (Kingston), CX-1109C (Kingston), CX-1082C (Dane-Elec), 

CX-1459C (Imation), CX-1158C (LG), CX-1178C (PQI), CX-1858C (Transcend) and CX-1859C 

(Apacer). 

622 RIB 95-96. 

623 19 U.S.c. § 1337(e); 19 C.F.R. § 210.50(a)(3). 

624 CIB 159 citing CX-1863C. 

166 
[ 625 

626 

The Commission frequently sets the bond by attempting to eliminate the difference in sales 

prices between the patented domestic product and the infringing product. 628 In the absence of 

reliable price information, the Commission has used other methods to determine an appropriate 

bond. For example, where a price comparison is unworkable, the Commission has determined that 

a bond of 1 00% is appropriate. 629 In other instances where a direct comparison between a patentee's 

product and the accused product was not possible, the Commission has set the bond at a reasonable 

royalty rate.630 

In this case, [ 

] 

Within seven days of the date of this document, each party shall submit to the office of the 

Administrative Law Judge a statement as to whether or not it seeks to have any portion of this 

document deleted from the public version. The parties' submissions must be made by hard copy by 

the aforementioned date. 

625 CIB 159-60. 

626 RIB 97. 

627 SIB 106. 

628 See Certain Microsphere Adhesives, Commission Opinion at 24. 

629 See, e.g., Certain Variable Speed Wind Turbines and Components Thereof, Inv. No. 337-

TA-376, U.S.LT.C. Pub. No. 3003, Comm'n Op. at 27-28 and 40 (U.S.LT.C., September 23, 1996) 

("Certain Wind Turbines"). 

630 See, e.g., Certain Digital Satellite System (DSS) Receivers and Components Thereof, Inv. 

No. 337-TA-392, U.S.LT.C. Pub. No. 3418, Initial and Recommended Determinations at 245, 

vacated on other grounds, Comm'n Determination (May 13, 1999),2001 WL 535427 (U.S.LT.C., 

October 20, 1997) ("Certain DSS Receivers"). 

167 
Any party seeking to have any portion of this document deleted from the public version 

thereof must submit to this office a copy of this document with red brackets indicating any portion 

asserted to contain confidential business information. The parties' submission concerning the public 

version of this document need not be filed with the Commission Secretary. 

SO ORDERED. 

d.LYLL 

Charles E. Bullock 

Administrative Law Judge 

168 
APPENDIX OF EXHIBIT LISTS 

Al 
Appendix A 

SanDisk Corporation's JX-List 

'.'31 . '. f, .I /I ;)! ':'l;.' '" -: -

JX-001 693 atent 11 3 2008 JX·OO2 424 Patent 

JX-003 011 Patent 

JX-004 Withdrawn JX-005 424 Patent FHa Hlsto 10292008 

JX-006 011 Patent File Histo 11 3 2008 

JX-007 Withdrawn JX-008 Withdrawn JX·OO9 Withdrawn JX-010 Withdrawn 

JX-011 Withdrawn JX-012 Withdrawn 

JX-013 Withdrawn 

JX-014 Withdrawn 

JX-015 Withdrawn 

170 
"" "'''.I : 1 if>" ;;, .. 

JX-016 

JX-017 100 86 JX-018 104 27 902 

JX-019 JX-020 

JX-021 JX-022 JX-()23 115 90 

JX-024 115 949 

JX-025 

JX-026 JX-027 144 133 

JX-028 194 871 

JX-029 195 869 

JX-030 197 870 

Appendix A 

SanDisk Corporation's JX-List 

" ' . In .• •• 

Withdrawn 

Samsung K9XXG09UXM Dalashee!.&xh. 21 10 Ken Fan Depc,(5/2612006 

Micron 4Gb. 8Gb. and 16Gb x8 NAND Flash Memory Features; NAND 

Flash Memorv rExh. 28 10 Kan Fan Dep. (5/2612008)1 50-1-2269943-2270023 

Withdrawn 

Withdrawn Wlthdrewn 

Withdrawn 

Furino DeclaraUon Exhibit 504 re TOne USB Flaah Drtve 2GB - picture. of 

disassembled TOne drive {Exh, 53 to Zhang Dejlll.(5130/2008lf SD-I-0016193'()016203 

Photographs of Flash Memory Drives and Chips [lang Dep. Ex. 53 j SD-I'()016193'()016203 

Withdrawn Withdrawn 

SM324 data book Ver: 0,93 Nov. 2005 [Exh. 36 to Mueller Dope.] COR 00090221'()0090237 

1/2212007 Kingston Global Flash Conference presentaUon (Exh. 9 Ia Sun 

Depo.) KTC001301 83-00 130337 

Klnaslan Flash Market Uadate Ql-'l001IExh, 10 to Sun Depo., KTCOO39671'l-0039674l! 

2007-07-24 Version of Kingston Flesh ProdUct Roadmap and Industry 

OuUook [Exh. 12 10 Sun Depo,j KTC00292923-00292945 

171 

) :»" i" ',h 

10/29/2008 

I 

i 

11/5/2008 

11/5/200B 

11/5/20Cl8 

11/5/2Cl09 
, \iii: fa' 

JX·031 JX·032 261 900 

JX·033 275 34 912 

JX·034 JX·035 301 30 892 

JX·036 301 30 924 

JX-037 303 873 

JX-038 304 874 

JX-039 307 875 

JX·040 JX-041 

JX-042 308 876 

JX-043 343 906 

JX-044 344 907 

JX-045 345 9QlL 

Appendix A 

SanDisk Corporation's JX-List 

"'ll" ' ", .!' ," J 

Withdrawn 

Samsung Elecltonk;s CorporalJon's Dalasheel ra K9XXG08UXM Advanced 

Flash Memory [Hau Dsp. Ex. 13) 

DocumenlenllUed "Phison'PS300e Controller Version 1.3", Novamber 16, 

2007 [Exh. 57 10 Hsu Depo.} PECOO00486H1OO04906 

Wilhdrawn 

Jolnl PropOsed Claim Construction Chart daled 0511412008 

2007 Products to USA with Price.xls PEC·N"()00008 

Unutled Phlson Information Management Division Shipping documant 

exltacted from ERP [Exh. 225 to Toay Depo.) 

Untltled Phlson Informallon Managemenl Division Shipping document 

extracted from ERP IExh. 228 10 Tsav DePO.! 

2007.producta 10 USA-with Price· Phison Confidential· [Exh. 24310 Toay 

Del'0.) 

Withdrawn 

Withdrawn 

2006"()4·30 Products \0 USA with Prlce.IExh. 24410 Tsay OeDo.} 

Oocumenl EnDUed "Phlson CBI" with handwrltll!llLExh. 21210 YanO DtlJlO.l 

Document Entitled "Phlson CSI" with handWriIiOlLlExh. 21310 YangnepQJ 

EnllUed "phlson CBI"\'Iithl1andwriting [Exh. 21410 Yana Oepo.) 

172 

'"I 1 , •. t'" i!'.J . ., .... :,:.',. 

10/2.9/2.006 

1012.912006, 

11/5/2008 

10129/200B 

11/5/200B 

11/5/2008 

11/5/200B 

10/29/2.00e 

11/5/200e 

11/5/200e 
Appendix A 

SanDisk Corporation's }X-List· 

)!',.\':.r,,'"l' 1 fl." ; I " " ro l ' J ;. , . ." r it I > , ", ' ',' 

JX-046 346 909 Document EnUUed ·Phi.on CBI· wllh handwritlna fExh. 215 to Yang Depo.j 

JX-047 Withdrawn -

JX-048 349 911 Oocumenl sntiUed ·Phlson CBI· with handwriting fE.h. 220 10 Yang Depo.) 10nmOOB JX-OMI 354 24 Pari numbering rule fExh. 1210 Gao Oepo. (6/212008)] POtNOOOOOOO2 11/5/2008 JX-050 355 25 Part numbering rule [Exh. 13 10 Gao Depo. (6ImOO8)] PQINOOOOOO03 

I 

JX-051 356 22 Numbering principle or rule fExh. 15 to Gao Depo.161212008)] PQINOOOOO005 11/5{200B 

I 

JX-052 357 26 BOM & docs. for producl production [Exh. 36 10 Gao Dapo. (6/2/2006)) PQIN00026819-00026848 H/S/200B 

I 

JX-053 358 27 Coding rule for DOM [Exh. 46 10 Gao Depo. (6/4/2008)] PQINOOOOOo06 llMOOB 

JX-054 359 28 Ujldaled codlngrule [Exh. 50 10 Gao Depo. (6/4/2008)1 PQINOOOOO007 llMioOB JX-055 361 29 

Screenshols from pal website (My Drive) [Exh, 3910 Wang Depo. 

6/3/2008)1 11/5/200B 

JX-056 362 30 Prinloul from pal website, (My Drive) [Exh. 40 10 Wang Depo. (61312008)] llM200B 

JX-057 363 31 My Drive user manual fExh. 41 to Wang Depo. 16/3I200IDl 11/!i/200B JX-05B 364. 32 

Screenshots from pal websile (Ur-Smart) (Exh, 44 to Wang Oepo. 

6/3/2006H 11/5/2008 

Scresnshols from pal website (USB Nolebook) [Exh. 45 10 Wang Depo. 

JX-059 365 33 8131200611 

2116/2007 - CF+ and CompactFlash SpllClflcaUon Revision 4.1 [Exh. 13 to 

JX-060 376 789 Tomlin Depo.] 50-1-2267309-2267501 lllSl200e 

173 
Appendix A 

SanDisk Corporation's JX-List 

r:K 1 ,.' ,J '1, < tIC .' J , .,.:) , ;t, -,' i it .!" \.< 

1603 Design Specification. Rev. 10, [Exh. 11-A ·IPN 16031 EPN 29611 

JX-OG1 450 9 EPN SK6621 10 Vincenl Chang Depo. (5129/2008)] 10/2912008 

JX-OG2 456 10 

SK6281USB Flash Drive Controller Data Sheet, Rev. 4.21 [Exh. 20 -IPN 

16031 EPN 29811 EPN SK6621 10 C.Y. Chang Depo. (5/2112008)1 SKY 00000338'()OOO0346 10/29/2008 

JX-063 460 11 

SKe621 SD2.0/MMC4.2 Memory Card Controller Data Sheet, Rev. 1.3 

Exh. 24 to C.Y. Chal'!lLDepo. (S/21/200B)] SKY 00OO0498'()Ooo0523 10/2!lL200B 

JX-064 501 20 

SUpulaUon Between Skymedl Corporatian and SanDlsk Corporallon, July 

24, 2008 {Exh. 148 10 Skymedl Depo.) 11/5/2008 

SK6626[AD] SD2.0 Memory Card Controller Data Sheet, Rev. 1.4 [Exh. 149 

JX-065 502 14 -IPN 1606E I EPN SK6626AD I SS6626AD 10 Skymedl Depo.] SKY 20002804-20002826 llm200B JX-066 503 17 

SK6626[AE] SD2.0/MMC4.2 Memory Card Controller Dala Sheet Rev. 1.5 

Exh. 150 -IPM 161l6F I EPN SK6626AE 10 Skymedl Depo.J SKY 20002827-20002851 11/5/200B 

JX-067 505 18 

SS6626{AE] SD2.0IMMC4.2 Memory Card Controller Data Sheet, Rev. 1.5 

Exh. 15210 Skvmedi DepQ.j SKY 20002875-20002899 ll/s/200B 

JX-()68 C 506 15 

SS6626[AD] SD2.0 Memory Card Controller Data Sheet, Rev. 1.4 [Exh. 153 

10 Skymodl Dopa.] SKY 20002852-20002874 

JX-069 C 507 16 

1606F Design Specification, Rav. 8 [ElCh. 154IPN 1606F I EPN SK6626AE 

to Sk),medl Dapo. SKY 20002609-20002803 

JX-070 C 508 13 

l606E Design SpeclftcaUon, Rev. 7 [Exh. 1551PN 1606E I EPN SK6626AD 

I SS6626AD to Skymedl Dapo.] SKY 20002427-20002608 11/J'i12006 

JX-071 520 993 Transcend ComjlBrlY Profile 2007 Q4 [Deposition of Ray Chu, Exh. 5] TSD-ITC 0000119-0000216 11/5/200S JX-072 Withdrawn JX-073 Withdrawn JX-074 Withdrawn 

L J_X-075 Withdrawn ____ 1. _______________ 

174 
;''', l' 

JX-076 

JX-077 

JX-078 887 899 JX-079 889 396 JX-OBO 

JX-OB1 897 851 

JX-082 898 852 

JX-083 899 853 

JX-084 

JX-085 JX-086 

JX-OB7 

JX-OB8 

JX-089 1454 1000 

JX-090 

Appendix A 

SanDisk Corporation's JX-List 

<'1<.' J, ",;.'.1,. ·'Ll 

Withdrawn 

Withdrawn 

CV of Dr, Paul S, Min 

List of Malenals Relied Upon by Dr, Paul S: Min, Ph,D, Ie Infrlngemenl of U,S, Palenl No, 7137,011 

Withdrawn 

Trial and Deposillon lestimony history of Jerry Hausman [Exh. 2 to \he 

Ex r Re ort of Jar Hausman 

Withdrawn 

Withdrawn Withdrawn 

Withdrawn 

Withdrawn 

ImaUon'. Chart of Componenls Contained in Accused ImaUoniMamorex 

Products IMA-309902-309906 

Withdrawn 

175 

10 29 200B 

11 5 200B 

11 5 2008 

11 5 200B 

11 5 2008 

11 5 200S 
Appendix A 

SanDisk Corporation's JX-List 

'.' '! .' H.\'. '!, .. , . w, " • 1"t1i d, .' .;!¥!i';PirtWi!·'i't.'IF 

! 

JX-091 Withdrawn 

JX-092 Withdrawn 

JX-093 Withdrawn JX-094 Withdrawn 

JX-095 C DeposiUon DesiRnaUon of Andrew Tomlin 10/31/2008 

JX-096 Withdrawn 

JX-097 C DeooslUon Designation of Arlhur Chih 11/5/2008 JX-098 C DeDoaition Desianation of Ben Chen 11/512008 

JX-099 C Deposition DeSignation of Ben Tzou 11/5/2008 

JX-100 Withdrawn JX-101 C Deposition DeslgnaUon of Bvouna Kana 10/31/2008 

JX-102 C D80oslUon Designation CK Chana 10/31/2008 

JX-l03 C DeposiUon Designation C. Y. ChanA 11/5/2008 

JX-104 Withdrawn 

JX-l05 C D80051Uon Designation Chris Chlu -- 11/5/2008 

176 
:;,""t .. ; 1.1:.' !. 

JX-106 C 

JX-107 C 

JX-108 C 

JX-100 C JX-110 C 

JX-111 C 

JX-112 

JX-113 C 

JX-114 C JX-115 C 

JX-116 C 

JX-117 C 

JX-118 C 

JX-119 

JX-120 C 

"I ;, ,j i! 

Deoosltion Deslcnation Christopher Thomas 

Deposition Designation Daniel Auclair 

D'!POsWon Designation DaMn Christian Chen 

Deposition DealgnaUon Dallid Sun 

Dllposltion Designation Deok Hyun Ha 

Deoosition Designation Donald Sun 

Wilhdrawn 

Deoosition Deslanation E. Earle Thompsons Deposition Designation EliYhou Hararl DeposiUon DesiQnaUoo Ellis Lee 

Deposition DeslcnaUon Eric UU 

DeposlOon DeslgnaUoo Frankie Chlu 

Deoosldon Designation Gerald Parsons 

Wllhdrawn 

DeposiDon DeslgnaUon Honda Shih 

Appendix A 

SanDisk Corporation's JX-List 

. 

177 

,,/' , • , 

_ ,... ... ffi , 

11{5L2008 

11/5/2006 11/5/2008 

11/-?L2008 1115/2008 

i 

Il/S/200e! 

I 

11/5/2008 11/5,12008 1l/!!L2008 

10/3112008 

10/31/7008 

11/SL200S 
.. , 

rl'l' " 

JX-121 C JX-122 C 

JX-123 C JX-124 C 

JX·125 C 

JX-126 C 

JX-127 C JX-128 C JX-129 C 

JX-130 

JX-131 C 

JX-132 C 

JX-133 

JX-134 C 

JX-135 

- --

,f"" 

Deposition DeslgnaUon Horace Chen 

Deposition DeslgnaUon J,Y, Yana 

Deposition Designation Jackie Hsu 

Dep061Uon De&lgnaUon James lee 

Dello8IUon Designation Jason Chien 

Deposition DeslgnaUon JelTY Taal 

DeposlUon DeslQnaUon John S. Manoan 

Depositlon Designation Johnson Huana 

DeposlUon Designation Jona Woo Hona 

Withdrawn 

Deposilion DeslgnaUon KalY TS8V 

Deposition Designation Kevin Conlev 

Withdrawn 

Deposition Designation Lucille Wane 

Withdrawn 

Appendix A 

SanDisk Corporation's JX-List 

' :ii:. ; 

---

........ 

-

178 

'UI 'v;';. " 

')1::;Yor::'rt!<. ,i 

11/5/2008 

11/5/2008 

I 

10/31/2008 

10/31/2008 

II/SaOOS 

11/5/2008 

11/5/2008 

11/5/2008 

1115/2008 

10/31/2008 

11/5/200! 
, 1 . • J, .< ," 

JX·136 

JX·137 

JX-138 C JX-139 C JX·140 

JX-141 C JX-142 

JX-143 

JX·144 

JX-145 C 

JX-146 C 

JX-147 

JX-148 

JX-149 

JX-150 C 

';!if . , 

Withdrawn 

Withdrawn 

Deposition Designation Ming·Jen Liang 

Deposition Designation Myeong SeOil Lee 

Withdrawn 

Deposition Designation Nigei Doong 

Withdrewn 

Withdrawn Withdrawn 

DeslgnaUon Ray Chu 

Deposition Designation Richard Chemicolf 

Withdrawn 

Withdrawn 

Withdrawn 

DeposlUon DeslgnaUon Roy Kung 

Appendix A 

SanDisk Corporation's lX-List 

; .;" "" :e lr ,. ! 

179 

!.,/",u'i',' 

" .. ;, i" 

11/5/200B 

10/3U700B 

11/5/2006 

10/31/200B 

11/5/2008 
Appendix A 

SanDisk Corporation's JX·List 

,.,;1 II lOS' ·,1 

JX-151 C Deposition Designation Sanj"y Mehrolra 111512008 

JX-152 Withdrawn 

JX-153 C Deposition Desianation Scott Hsiao 1115/2008 JX-154 C Deposition Designation Shirley Lee 11/5/200B 

JX-155 C DeposiUon Deslanation Sleven Swenson 11/5/2008 

I 

JX-156 C DflIlosltion DeslgnaUon Steven Wang 

JX-157 C DeposlUon Designation Thomas Northfield 

JX-158 C DeposiUon Oesjgnation Tosuke Tauchtda lillilOOB 

JX-159 C IlitQosiUon Designation Tung Yu Kao 1l/!;/200B 

JX-160 C PflIloalUon Oesi9l\ation Tzu Ju Hua"l1 1115/200B 

JX-161 C DeposiUon DesianaUon Vincent Chena 1115/2008 

JX-162 Withdrawn 

JX-163 C Deposition Designation Yao Bao (Nancy) Yu 11/M200S 

JX-164 Withdrawn 

JX-165 C DeposiUon Deslanation of Yu Fong Lin _____ 11/5/200! 

180 
: '_!If . , ' ," 

JX·166 C 

JX·167 JX·168 

JX·169 

JX·170 

JX·171 C 

JX-172 C 

JX·173 C 

JX·174 C 

JX-175 C 

Appendix A 

SanDisk Corporation's JX-List 

\1:', l':,%l" ", !' :'." .:M' ; 

Daposilion DeslgnaUon of Yuna China Wane 

Toshiba SUoolalion 

Stipulation Regarding Phlson's 2251 and 3016 Canlto4lers (dated October 

23,200Bl 

SUpulauon Regarding Flash Memory Products Produced by or on Behalf of 

Toshiba (between SanDIs!< and Oane·Elacl 

SUpulaUon Regarding Phlsan's 2251 and 3016 Conltollers (dated 

November 3, 2008\ 

SUpulation Regarding the ImponaUan of Certain CF Carda Accuaad of 

Infringing Claims 25 & 27 of U,S, Palenl No, 6,426 B93 

SHpulation Regarding the Importallon 01 Certain Flash Mameory Products 

Accused of Infringing Claims 25 & 27 of U.S. Palenl No. 6,426 B93 

Deposition DesklnaUons for J.Y. Yang (Va, 6\ PS3006 Source Code DeposlUon OeslgnaHan of Johnson Huang (Vol. 2) 

1Bl 

" {.w, ':/rl!. tk<:";.,r;,I·" 

11/5/2008 

11/5/2008 

11/5/2008 

11/5/2008 

11/5/2008 

11/5/2006 

11/5/2008 

11/5[200a 

L-- 11[5[200a 
Appendix A 

SanDisk Corporation's CX-List 

'lIml, 

ex-0001 Withdrawn 

CX-0002 Withdrawn 

CX·0003 Withdrawn 

eX-0004 Withdrawn 

eX-0005 Withdrawn 

ex-oooe Withdrawn 

CX-OOO? Withdrawn 

·CX-0008 Withdrawn 

ex-OOog Withdrawn 

eX-0010 Withdrawn 

eX-DOll Withdrawn 

CX-0012 Withdrawn 

CX·OO13 Withdrawn 

CX-0014 Withdrawn 

eX-OOlfi Withdrawn 
Appendix A 

SanDisk Corporation's CX-List 

eX-OOle Withdrawn 

eX-OOH WIIhdrawn 

eX-OOla Withdrawn eX-0019 Withdrawn 

eX-0020 Withdrawn ex-0021 WIIhdrawn 

CX-0022 Withdrawn CX-0023 Withdrawn 

CX-0024 Wilhdrawn 

CX-0025 Withdrawn 

ex-oozo Withdrawn 

eX-002? Withdrawn 

eX-0028 Withdrawn 

eX-0029 Wilhdrawn 

eX-0030 Wilhdrawn 

? 
Appendix A 

SanDisk Corporation's ex-List 

• . "altl; ttl" 

CX-0031 Withdrawn 

eX-0032 Withdrawn 

eX-0033 Withdrawn eX-0034 Withdrawn 

CX-0035 Withdrawn 

CX-0036 Withdrawn 

eX-003? Withdrawn 

eX-OOJIJ Withdrawn 

CX-0039 Withdrawn 

CX-0040 Withdrawn 

CX-0041 Withdrawn 

eX-0042 Withdrawn 

CX-0043 Withdrawn 

Withdrawn 

eX-0045 I IWithdrawn 
Appendix A 

SanDisk Corporation's CX-List 

,: ' , " , ,., , , , ii, Ii"" . . , ,> '" " 1, 

CX-0046 Withdrawn CX-OD4? Withdrawn 

CX-0048 Withdrawn 

CX-0049 Withdrawn 

CX-0050 Withdrawn CX-0051 Withdrawn 

CX-0052 Withdrawn 

eX-DO 53 Withdrawn 

CX-DD54 Withdrawn 

eX-D055 Wlthdrawn eX-DO 56 Withdrawn 

eX-DD5? Withdrawn 

CX-0050 Withdrawn 

eX-0059 Withdrawn eX-0060 Withdrawn 
Appendix A 

SanDisk Corporation's CX-List 

(;lift'" , ! ,-" fiffii$:t \ "<'" '+ ... , '",1"" ",,", • 

eX-0061 Withdrawn 

I 

CX-0062 Withdrawn 

eX-0063 Withdrawn 

eX-006·1 Wilhdrawn 

eX-0065 "About Apace'" pagH from Apace". web .lIe IC. Chang Dap. Ex. 81 

Infrinllement, ImporlaUon, 

Chana, Chis Kun RemedvlSondlng 

Infringsment, Oom.IUe 

Pr ••• nIaUon Malerial: Apaoer Company Profile [C. Chang Oep. Ex. tndually, ImporlaUon, 

eX-0066 C 171 AP-ITC 0273692·0273714 Chana, Chis Kun RemadvlSondlng 

Apace!'s Amended and Supplemental R88ponlfi tg SanDlak 

tnterrogatories H, 17, 19,24; 80, 83-84, 86, 90, 121-122 and 124 Infringsment, Importation, 

eX-0067 C C. Chang Oep. Ex. 111 Chana. Chia Kun RemedylSondlng 

"Products: USB Flash Drives' pages from Apacer web Bita [C. Infringament, Importation, 

eX-0061l ChalliLDap. Ex. 12] Chang, Chia Kun Remedy/Bonding 

PresenlaUon MatBlial: eFlash - Praducllnlroduction SSO (Solid ImporlaUon, 

eX-0069 C State Drive), Technical NoleS FAE IC. Chang Oep. Ex. 13f AP-ITC Chana, Chi. Kun Remedv/Bondlng 

PresenlaUon Malerial: ISlOrags, AML (Ver. 4.1) IC. Chang Oap. Ex. ImporlaUon, 

eX-0070 C 151 AP-ITC 02411369-0249381 Chana. Chla Kun Remedy/Bonding 

USB 2.0 Ftash Controller Specification UCP236-CLFG, Verelon 1.0 ImporlaUon, 

eX-0071 e C. Chana OeD. Ex. 201 AP-ITC 0242801-{1242817 Chang, Chla Kun Remedy/Bonding 

eX-0072 C 

Pre.enlaDon Material: 2007 Handy Roadmap, Pamela/Ellie, 2006 

ver. 1.3, Dec. 2006IC. Chang Oap. Ex. 211 AP-ITC 0260623-0260626 

Infringement, ImporlaUon, 

Chang, Chla Kun Remedy/Bonding 

·Products: Flash Cards" pagss from Apacer wab site [C. Chang ImporlaUon, 

eX-0073 Dell. Ex. 251 Chang, Chia Kun Remedy/Bonding 

PresenlaUon Malerial: Apacar MP3/MP4 Product Lina Reviewing, nfringament, ImporlaUon, 

eX-0074 C PM: Tlffanv, Relealed Date: 2008/1/17IC. Chang Oap. Ex. 

261 AP-ITC 0270258-0270271 Chang, Chla Kun Remedy/Bonding 

ApaC8fa Amended and Supplemenlal Responses 10 SanOlsk 

Interrogatories 8, 14-15, 19,85,87-89,92-83 and 121·122 [C. nfnngamant, ImporlaUon, 

CX-OQ75 C:h8l11l Oep. Ex. 271 

- --- Remedv/Bondlng 
Appendix A 

SanDisk Corporation's CX-List 

(r,.1 .. : 1 ,l.".;. , "';, .. " " >; J ,; -- , .' ''l(' ••.•.• 'b': i'" . ... , 

eX-D076 c Chang Deposition Exhibit 28 (Apeear Customer/Seles/lnventory Importation, Tabte) [C. Chang Oep. Ex. 281 AP-ITC 0OO57B4-0005915 Chang, Chla Kun Remedv/Bondlna 

eX-DOn C Cheng Oepo&lUon Exhibit 29 (Apaear Customer/Sa lee/Inventory Infringement, Importation, Table) [C. Chang Oep. Ex. 291 AP-ITC-N 00001-000196 Cheng, Chla Kun Remedv/Bondlna 

eX-0078 Withdrawn 

CX-0079 Withdrawn 

CX-0080 Withdrawn 

eX-DOS1 WlIhdrawn 

eX-D082 Withdrawn 

CX-OOa3 Withdrawn 

CX-OOB4 C Tab/e: PS2134 (CHIIKuna Oep, Ex. 37) 

Infringement, Importation, 

AP-ITC Kung, RoV Remedy/Bonding 

eX-0085 e 

Market Requirement SpecificaUon, Apa08r MP3 Player, AU232, 

Version 1.0 (Kuna OeD. Ex. 39] AP-ITC 

Infringement, Importation, 

Kung, Roy RemedylBondlng, 

CX-0086 C 

PresenlaUon Matelial: Apacer MP3 Playar Product Plan, PM: 

Tiffany / PCC: Sunny, Release Date: 2oo8/1Q [Kuna OeD. Ex, 40] AP-ITC 

Infringement, Importation, 

Kuna, Rov Remedy/Bonding 

PrasenlaUon Materlat: I·Storege Hardware Slatua [Kung Oep. Ex. Infringement, Importation, 

eX-DOS? c 411 AP-tTC Kuna, Roy Remedy/Bonding 

Bill of Malerial Approved Sheet for 8O.HE022.1C10C, HS2.0 AH421 Importation, 

ex-ooaa C 2GB (Kuna Oea. Ex. 421 AP-ITC Kung, Roy Remed'y/Bondlng 

AP-ITto UUU4Y92 

Packaging for Professional Photo Seliea Flash Carda (l00X, 66X), AP-ITC 0004999 

packaging for Mobile Series Flesh Cards Bnd date sheet for AH421 - AP-ITC 0005001 

CX-0089 C ReadyBoo81 (Soeed Uo Your PC) [Kung Oep, Ex. 431 AP·ITC 0005017 Kung, Roy Infrinaemenl. Imporialion 

eX-009O Withdrawn 
Appendix A 

SanDisk Corporation's CX-List 

." .. '". " . '. ,,", ill .,," t ".:' t, "j'''': \ 

eX-0091 Withdrawn 

eX-0092 Withdrawn eX-OOga Withdrawn 

eX-0094 Withdrawn 

eX-0095 Withdrawn eX-0096 Withdrawn 

eX-0097 Withdrawn 

eX-0098 Withdrawn 

eX-0099 Withdrawn 

eX-Ol00 Withdrawn 

eX"0101 Withdrawn 

CX-0102 Withdrawn CX-Ol03 Withdrawn 

CX-Ol04 Withdrawn 

Hynlx Flash Memory HY27UK08BGFM Senes Data Sheet [Fan Dep. 

eX-01OS C Ex. 291 SD-I-Q11.1713fl..D917181 Fan, Ken Infrinllement, ImllOJ1sUon 

7 
Appendix A 

SanDisk Corporation's CX-List 

"" .,.,. ·&.t 

• S 

eX-Ol06 Withdrawn 

eX-Ol07 Withdrawn 

eX-OIOa Withdrawn 

eX-Ol09 Withdrawn 

eX·Oll0 Withdrawn eX-Olll Withdrawn 

CX-0112 Withdrawn CX-0113 Withdrawn 

eX-Oll4 Withdrawn 

eX-0115 Withdrawn 

eX-OlIO Withdrawn 

eX-Oll? Withdrawn 

eX-Ol1 a Withdrawn 

eX-Oll9 Withdrawn eX-0120 Withdrawn 
Appendix A 

SanDisk Corporation's CX-List 

:. Iii.' ileF"'iv"'-" 

eX-0121 Withdrawn 

CX-0122 Withdrawn 

Withdrawn 

CX-0124 Withdrawn 

eX-0125 Withdrawn eX-0126 Withdrawn 

eX-0127 Withdrawn 

CX-0120 Withdrawn 

CX-0129 Withdrawn 

eX-0130 Withdrawn 

CX-0131 Withdrawn 

CX-0132 Withdrawn 

CX-0133 Withdrawn 

CX-0134 Withdrawn 

CX-0135 Withdrawn 

Q 
CX-0136 Withdrawn 

CX-0137 Withdrawn 

CX-0138 Withdrawn 

CX-0139 Withdrawn 

CX-0140 Withdrawn 

CX-0141 Withdrawn 

CX-0142 Withdrawn CX-0143 Wilhdrawn 

CX-0144 Wllhdrawn CX-0145 Wllhdrawn 

CX-0146 Wllhdrawn CX-0147 Wllhdrawn 

CX·014fJ Withdrawn 

CX-0149 Withdrawn 

T ablu lIolln9 conltollers usad In Imalion's flash memory products 

eX-01S0 Ie IINorthfialdOeo. Ex. 121 

Appendix A 

SanDisk Corporation's CX-List 

Northfield, Thoma. 

IMA.ooo034-000036 Infringement 1

10 
Appendix A 

SanDisk Corporation's CX-List 

, .i j'{r !. ",. : 'li, " iN' """'. 

Nor1hfleld, Thomas 

eX-01S1 C 

Tabla: Flam Approvad SUpplier Lillt (Current •• of 1011106) 

Nor1hfield OeD. Ex. 131 IMA-233152-233171 Infringement; Imoortallon 11/

Nor1hfield, Thomas 

Table: Flam Approved Supplier Lial (CUlT8!1t aa of 915107) 

CX-0152 C Northfield Oap. Ex. 141 IMA-225766-225775 Importation 111

CX-0153 Wllhdrawn 

Nor1hfiald, Thomas 

, eX-01S4 C Phlson Clip 2231 Technical Assessment (Nor1hfield DOD. Ex. 231 IMA-<l50230-050235 Infringement 11

eX-0155 Wllhdrawn 

Nor1hfteld, Thomas 

eX-0156 C 

Table: Summary of ProduC!S Sold wllh EncrypUon Sollwara 

Nor1hfleld Oap. Ex. 26} Infringement 

Nor1hfield, Thomas 

License Agreement between encrypt)( Corporallon and Imatlon 

CX-0157 C CorD. (Northfield Oap. Ex. 2n IMA-000160'()OO180 Infringement 11

eX-0150 Wllhdrawn 

eX-01S9 Wilhdrawn 

eX-0160 Wllhdrawn 

eX-0161 Wllhdrewn 

CX-0162 Withdrawn 

Swenson, Stavan 

eX-0163 C 

Table: ProjacI 'Durability" • Product Launch Plan (Swenson Oap. 

Ex. 71 IMA-000395-000398 Romedv/bonding 11

eX-0164 Withdrawn 

Wjl!JdJllwn -_.- -- '-- ---- ---_.-

11 
Appendix A 

SanDisk Corporation's CX-List 

: :- I '. , . f T < 

CX-OHi6 

Tauchida. Y_1ea 

StipylaUon Regarding Importation for Ac:c:uaed Producla by 

, 

eX-0167 C ImalionlMemorex rrluchida 21 ImDorIaUon 11{5

Taudlida. YOIyke 

eX·0168 C Importation Char!IDychida 31 ImDortaUon 11/S

le •• Shirl.y 

eX-0169 C Chart idanli!ying Imation', Ac:c:uaed Products ILee OeD. Ex. 21 IMA·315143-315151 Infringement 1!L2

CX-0170 WllhdraWl1 

eX·017l Withdrawn 

eX-0172 Withdrawn 

CX-0173 Wllhdrawn 

eX-0174 Wllhdrawn 

eX·0175 Withdrawn 

eX-0176 Wllhdrawn 

eX·0177 Wllhdrawn 

Chen, Ban 

Flaah Media Labsl SpecificaUon WorlllnslNcUon lor UK & US 

CX·0176 Infringement ii/S

C Marnet W·PKI'()()7.10, Revision 10 LB, Chen Dep. Ex. 451. 

CX-0179 Withdrawn 

eX-01S0 Wllhdrawn 

12 
., " .' . . 'lJ' !J l' 

. 

C· Flash Finished Goods Part Number Decoder, DW-DEs.004.00l, eX-Olal Ravlalon 001 [B. Chon Daj>. ex. 48] 

eX-01B2 Withdrawn 

eX-0183 

eX-01B4 Withdrawn eX-01a5 Withdrawn 

eX-01BS C Kineslan 2007 Product ShiomenllllD. Chon Dap_ Ex. g] 

eX-01B7 Withdrawn 

ex-owe Withdrawn 

eX-01B9 

Ona Sourca Report for Kingston Technology Company, Inc. (Sun Oap, Ex. 31 

Klngaton Technology Company. Inc_ company profilo [Sun Dap_ Ex. 

CX-0190 41 

eX-019l 

Gaia company prom.a for Kingoton Technology Company. Inc. (Sun 

DOD, Ex. iij 

CX-0192 e Kingston Digilal Modia Global Maatlng SUmmary (Sun Dap. Ex. 71 CX-0193 Wllhdrawn 

eX-0194 Withdrawn 

eX-0195 Wllhdrawn 

Appendix ASanDisk Corporation's CX-List 

'J", , ,t·'"'" 

Chen. Ben 

Chen, Darwin 

Sun, David Sun. David 

Sun. David 

Sun,Davld 

KTC00253857 

-

13 

. , ,<;;:'C.,' . -'to it. . c •. , 1 

Intr1naemenl' Importation 11

Imporllltion' romedylbondlng 11

Ramecjylbondina 1

Remodvibonding 1

Ramadylbondlna 1

Intr1ngsmsnt· Importation 1
Appendix A 

SanDisk Corporation's CX-List 

___ i' 

eX-0196 Withdrawn 

CX-0197 Withdrawn 

eX-OI9S Withdrawn 

CX-0199 Withdrawn CX-0200 Withdrawn CX-0201 Withdrawn CX-0202 Withdrawn 

eX-0203 Withdrawn eX-0204 Wtthdrawn eX-0205 Wllhdrawn 

eX-020e Withdrawn eX-0207 Withdrawn 

eX-020a Withdrawn eX-0209 Withdrawn 

eX-0210 Withdrawn 

14 
Appendix A 

SanDisk Corporation's CX-List 

! , - - ," ,,," " . " •. , .. •• 

CX·0211 Withdrawn 

CX·0212 Wllhdrawn 

CX·0213 Withdrawn 

CX-0214 Wllhdrawn 

CX·0215 Wilhdrawn CX·0216 Wllhdrawn 

CX·0217 Wllhdrawn 

CX·0216 Wllhdrawn 

CX-0219 Wllhdrawn CX-0220 Wllhdrawn 

CX-0221 Wllhdrawn 

CX-0222 Wllhdrawn 

CX-0223 Wilhdrawn 

CX-0224 Wllhdrawn 

CX-0225 Wllhdrawn 

15 
Appendix A 

SanDisk Corporation's CX-List 

''1 

.... , . 

" . .. !" ,., , '". .. i .... , 

. . "' 

CX-0226 Withdrawn 

CX-0227 Withdrawn 

CX-0226 Withdrawn 

CX-0229 Withdrawn 

CX-0230 Withdrawn 

CX-0231 Withdrawn CX-0232 Withdrawn 

CX-0233 Withdrawn 

Hong, Jong Woo 

Tablelistlng modal. and buyen; from 111/07 to 4f9f081JW Hong Infrtngemant; ImportaUon: 

CX-0234 C Dap. Ex. 16] LGE-ITC-{lOOO2644 remadvlbondlng 11

Hong, Jon9 Woo 

CX-0235 C 

TablelisUng detail. of sala. by the U.S. local anuty 10 buyers of 

Iproducl[JW Hong Dap. Ex. 1n Inlringament; Importallon; LGE-ITC-OOOO3406.()OOO3432 remedy/bonding 11

Hong, Jang Woo 

Tablelisllng Infannellon for warehouse codaalJW Hong Oap. Ex. Inlling",""nl; Imporlation; 

CX-0236 C 181 LGE·ITC.ooo02692'()OOO2711 ,amedv/bondlng 11

Hong, Jong Woo 

TabiaUIUng nsoh memory producta d •• Uned fex tha US from 2004 Inrringement; impor1aUon; 

CX-0237 C 10 2007 [JW Hong Oeo. Ex. 191 LGE-ITC-OOOO0197 remedy/bonding 11

Hong, Jong Woo 

T.anllaUon of Exhibit JW Hong 19 (LGE·\TC 000001111) IJW Hong Inlringamant; ImparlaUon; 

GX-023B C Oap. Ex. 11

I ramadv/bondlng 

Tables showing unit. of UP3, CF cards, MMC card., SO Canis and 

Hong, Jong Woo 

USB Imported Into the US and Europe In 2006 and 20071JW Hong Infringement; Importation; 

CX-0239 C Oap.Ex.201 LGE-ITC.ooo01313.()OOO1378 ramadvlbondlng 1

Hong, Jong Woo 

Tabl. reftectlng Importation 01 fIath memory producla Inlo the US Inlringamenl; Imporlatlon; 

CX·0240 C 1

from 2004lo2007'fJW Hong OeD. Ex. 21) . LGE-ITC-{lOOoo092-o0000100 remady/bonding 

16 
Appendix A 

SanDisk Corporation's CX-List 

, 

. '0."1 ;-.., f< , '. - '. 'l '1 - ", 

CX-0241 Wllhdrawn 

L .... MlIOIIgSeop 

Latler Identilytng LGE'a ""tile ..... by \opIc number IMS Laa Dep. impcrtaUon; CX-0242 C ex. 21 remedY/bondine 101

CX-0243 Wllhdrawn 

Lee. 1.1lI0II9 Seop 

CX-0244 Printout of LGE·. web .lIell>1S LeB Oep. Ex. 51 50-1-2270379-2270556 Infrinoemanl' Impcrtallon 11CX-0245 Wlthdrewn 

CX-0246 Withdrawn 

Kang. 0 Syoung 

LGE brochure: Slore Your Mind. Confidence In Muilimedla, Talal 

CX-0247 C Media Kang,Dep. Ex, 31 LGE-ITC-OOOOO20<HlOOOO216 Infringement: Impcrtallon 11

Kang, 0 Syoung 

CX-0248 C LGE brochure: LG Tolal Media Product lOB Kang Dap, Ex, 41 LGE·ITC-OOOO0217oCOOO0221 Infringement: Importation 11

CX-0249 Wilhdrawn 

Kang. 0 Byoung 

Table Identifying procurement of specific nash mama)! chip. by LG Inflingement; imporlatlon; 

CX-0250 C OB Kang Oep. Ex. 6) LGE·ITCoCOOO3363-000033S6 remedy/bonding 11

Kang, 0 Syoung 

Table II.llng coat. aaaocialad ""lit purcha .. 0( Silicon Mallon. Inc:s 

CX-0251 C controllers fOe Kina Dap, Ex. 71 LGE-ITC-cDOO3405 Remedylbonding 11

Kang, 0 Byoung 

LGE brochure: LG USB Drive, Smart Drive, Storage Drive lOB Kang 

CX·0252 C Dap, Ex. 81 LGE-lTC-OOOO2407-COOO2425 Infrlnoament: Importation 11

CX-0253 Wahdrawn 

HaUl Jadde 

Wiln ... background I 

Respondent Phlson Elactronica CorporaUQn'. Reapon ... to IdenUftcaUon as corporale 

CX-0254 C SanOlsk Notice of DBPO {J. Hsu Dap. Ex. 2l f8QrasenlaUVa 1

Hau, Jackie 

Wiln.&& background' 

IdanUficaUDn al corporate 

CX-0255 C Fish & Rlchandson Leltar to Mr. Yoon [J. HIU Dap. Ex. 3) raPteaenlallv. 1

17 
Appendix A 

SanDisk Corporation's CX-List 

.• , " , {;'I: ') A .•• i:t> '., . " 

Hau.Jadde 

WlIne .. background I 

GX-0256 C E-mail ra: Ph/son 00001 rJ. Hlu DOD. Ex. 3A] 

IdanUftcallon 8$ COfPOlata 

reIYelenlati.o 11

CX-0257 Withdrewn CX-0258 Withdrawn CX-0259 Withdrawn 

CX-0260 Withdrawn 

GX-0261 Withdrawn 

H .... Jackie 

CX-0262 C Lisl of Phison USB Conlrollors·,J. HIU OeD. Ex. 181 ImoortaUon 1 Remedv 1

Hlu.Jackie 

CX-0263 C List of Phlson CompactFtaBh Controlillfll [J. Hsu 000. Ex. 191 ImoortaUon 1 1

H .... Jackie 

CX-0264 C Lisl of Phlson MMC Controllers [J. Hsu Oeo. Ex. 201 Importation I Remodv 1

CX-0265 Withdrawn 

GX-0266 Wlthdrewn 

Hsu.Jackie 

CX-0267 CF+ and CompactFlash Spec/flcallon Rav. 3.0 [J. Hsu Oep. Ex. 23) 60+1349322-1349508 Intrinoemanl 10

H .... Jackie 

Sy.IBm Specification VarlIion 4.2 [J. Hlu Oop. 

Infrinaomenl 1

CX-0268 C Ex. 241 60-1-0839814-0839989 

Hau, Jackie 

CX-0269 C Phlaon PS3008 Introduction IJ. HIU OeD. Ex. 251 PECOO511210-llOS11213 Infrinaemenl 1

Hau, Jaclde 

eX-0270 C Prolecl No. PS2136 AG-ANO/2XBlTCSIINT/4CE [J. HIU DOD. Ex. 32 Infrinaement 1

1& 
Appendix A 

SanDisk Corporation's CX-List 

. :.: , 

Hlu. Jadcle 

eX-0271 C 2K Page Drawing IJ, Hsu Dap, Ex, 451 Inlringemenl 11

CX-0272 Withdrawn 

eX-027:! Withdrawn eX-0274 Withdrawn 

CX-0275 Withdrawn 

Hlu. Jackie 

eX-027G C 

Toohiba NAND 08111 Sheet lor Part No, TH58NVG4D4CTGoo (J, 

Hsu Dap, Ex. 581 PECOOS02039-1l0S02105 'nlringemen' 1

Hlu. Jackle 

CX-0277 C Samsung Flash Memorv K9XXG08UXA rJ, Hlu 000, Ex, 591 SD-1-2094952-2096oo1 Infringemenl 11

Hau. Jadda 

eX-0270 C Hvnlx .1SGb NAND Flalh HY27UK08BGFM IJ, HI. Dep, Ex, SOl SD+091713S.Q917181 Inlrinaement 10/

eX-0279 Withdrawn 

Wang. SlIIven 

Flaah Support Usl 'or Ihe PS3OO2 Flaah Mem<IIY CanlnJller fS, 

eX-02BO C Wano Qeo, Ex, 741 PEC00452027 -00452036 Infrlf!ll8mont ll

Wang. Steven 

CX-0281 C Directorv for DVD IS, Ex, 791 Inlrt"llament 1

Wang. Sleven 

CX-0282 C WI.h 37X BOM \lIIIS, Ex, 80] Infrlnaement 1

Wang. Slavan 

CX-0283 C PS2231 AG-ANOI2 X8ITCS/lNTI4-CE (S, Wang DIP, Ex, 811 PEC00274762-1l02747114 Inlringemenl 1

Wang, Steven 

eX-0284 C PS2231 ULGA 2 X 8ITCSIINT IS, Wa"" Dell, Ex, 82\ PEC00243158-1l0243180 l

Wang, Steven 

eX-0285 C PS2231 AG-ANDI2 X8/TCSIINTI4·CE [S, Wang Dap, ex, 831 PECOO245295-00245297 Inhingement 1

19 
Appendix A 

SanDlsk Corporation's CX-List 

.. 

'\ \ ' , .' ." , '

Wang. Slavan 

CX·0286 C PS2231 2X 8rTCS/INT IS, Wang Cap. Ex, 841 PEC00263600'()0283502 Infrlngemenl 11/

Wang. Slevan 

CX-0287 C PS2231 2X8fTCSnNT [5. Wang Oep. Ex. 851 PECOO333949.()0333952 Infri!:!gomenl 11/

Wang. Sleven 

CX-0288 C PS2231 ULGA 2X8fTCSIINT [So Wang Oap. Ex. 86) PECOO266157'()0266159 Infrlngemenl 11/

Wang. Slevan 

CX-02B9 C PS2231 2X 8fTCS IS. WanD Oap. Ex.a7l PECOO335033.()0335035 Infringemant 11/

Wang. Slevan 

CX·0290 C PB2231 AG.ANCI2X 8/TCBnNT [B. Wang Cap. Ex. 881 PECOO302491-OO302493 Infringamanl 11/

Wang. Sleven 

CX-0291 C PS2231 AG-ANC/2 X 8fTCS/INTjS. Wang Oap. Ex. 891 PEC00297281-OO297283 Infrl"lLamanl 11/

Wang, Slevan 

CX-0292 C PS2231 2X8IINT/4-CE '2 IS. Wang Oap. Ex. 9Ql PECOO30778O.Q0301782 Infrlnaemenl 11/

Wang. Slevan 

CX-0293 C PS22al· 48PAG-ANO/2X8fTCSIINT/4-CE [So Wang OeD. Ex. 921 PECOO376919'()0376921 Infrinoament 11/

Wang, Slevan 

CX-0294 C PS2231 ULGA2X8fTCSIINT [So Wang Oap. Ex. 931 PECOO314993.()0314995 Infringement 11/

Wang. Bleven 

GX·029S C PS2231 ULGA2X8/TCSlINT [5. Cap. Ex. S4] PECOO318038.()0318040 Infrlngomanl 

Wang, Slevan 

CX-0296 C PS2231 AG-ANC/2X8fTCSIINTI4·CE IS. Wang Cap. Ex. 951 PECOO347334'()0347336 Inflingomanl 11/

Wang. Slavan 

CX·0297 C PS2231 2X8/TCSIAG·ANDIINTI4-CEiLGA..1S. Wana COP. Ex. 96) PECOO340986.()()340989 Infrtnaomanl 11/

Wang, Sleven 

PS2231 AG·ANCI2X8fTCSIINT/4-CE Reference 37X140GG1·MA PECOO337828.()0337829; 

CX·029fl C S. Wang OeP. Ex. 981. PEC00335036 Infrlngemant 11/

Wang. Staven 

CX-0299 C PhlllOl1 Bill of Matenals w/mlsc. IS. Wang Oap. Ex. 991 PECOOO52762'()0132543 Infrif1D!manl 11/

CX·0300 Withdrawn 

20 
Appendix A 

SanDisk Corporation.'s CX-List 

.. -" " 

, 

CX-0301 WKhdrawn 

Lee, EIIi, 

Printout of fila enUlIed 20080430]roducla 10 USA_ with prica.xla{E. 

CX-0302 C Lee OeD. Ex. 1701 ImporlaUon I Remedy 11/

eX-0303 Withdrawn 

CX-0304 Wilhdrawn 

Teay,Katy 

e-mail Strtng beginning whh, From Kuang to Michael Wu, at aI., 

CX-0305 e dated 07/27/07 (i<. Taay VI Dep. Ex. 2281 PEC00488003-OO468004 Infringement 

Teay. Katy 

CX-0306 e LI.t of Cualomer. and Location. IK. VI ex. 2291 PECOO46800S-004S6015 Imporlalion 11/

eX-0307 Withdrewn 

CX-030fl Wllhdrawn 

nay, Katy 

CX-0309 e 

US Cllanlll (ship 10 US) with Product Type_20072008loApril.xts 

Kalv TRay Deo. Ex. 2451 ImporlaUon / Remedy 11

Respondenl Phl,on EI_anl"" CorporaUon" Third Supplemental 

Teay. Kaly 

CX-031O C 

R.""oneal to Complainant SanDlsk CoIporaUon" Firat Set of 

Intooogalori.slKatv TaayDe.JI.. Ex. 247] Imp..rlaUon 11

eX-0311 Withdrawn 

CX-OJ12 Withdrawn 

CX·0313 WHhdrawn 

CX·0314 WIthdrawn 

CX·0315 Withdrawn 

-

21 
Appendix A 

SanDisk Corporation's CX-List 

. 

, " 

'" 

CX·0316 Withdrawn 

TI8Y, KIlty 

CX·0317 C Soreadlh •• t In Chin ••• IKatv Tlay 080. Ex. 2561 PECOoeD95:J6.00509547 Imporlation 11/

TI8Y, KIlty 

March 24 10 March 30 Weekly Shipment RepOll,XlB IKaty TI8Y Dep. CX·0318 C Ex. 2571 ImoorlaUon 11/5

TI8Y, Kaly 

April 28, 2Q08 CommerclallnYoIce, Packing Usl, Air Cargo Air 

11/

CX·0319 C WaYbililKalv Tlay Oeo. Ex. 2581 Imporlation 

Tlay, Katy 

R8IpondBnt Phlaon Eleclt..,l .. CorporaUon·. Raaponse to 

CX·0320 C eonioiBinBnl and Notice 0/ 111

inv .. UasUon IKaiv TlBv 080. Ex. 2801 ImportaUon 

CX·0321 Wllhdrawn 

ToaY,Kllty 

CX·0322 C December 13 2007 E·malllKlltv Tlay Oeo. Ex. 2841 PECOOS03823 ImporlaUon 11/

September 28, 2007 Fax COY ... SllIIet; Phlaon Involea; ElacItonlc TI8Y, Katy 

CX·0323 C 

Integrated Worlutheet; Korean DRAM C.rlifiCtlUon IKaty Tlay 

OeO: Ex. 265 PECOO883247..o0663250 ImportaUon 11/

Teay,Kaly 

November 19, 2007 NVIOIA Corporation Purchase O!d81IKety Tlay 

CX·0324 C 080. Ex. 2661' PEC00528743-00528744 Imoorlation 11/CX·0325 Wilhdrawn 

Tl8y, Katy 

CX:0326 C Phl.on SATA SSO IKatvT •• v OeD. Ex. 2711 PECOO5302:J6.00530250 Infringement 111

TI8Y, Koly 

CX·0327 C Phlaon SATA SSO (Katv Tsav 0'0. Ex. 2721 PECOO529518..Q0529528 Infrlngarnent 11/

Tl8y,Katy 

CX·032B C Phlaon SATA SSO IKatv Taav OeD. No. 2731 PECOO666703-00668714 Infringement 11/

Tlay, KIlty 

CX·0329 C Phlson SAT A SSO IKlItv Tsav OeP. No. 2741 PEC0086Q012-ll0860022 Infrlna8menl 111

CX·0330 Withdrawn 

22 
Appendix A 

SanDisk Corporation's CX-List 

," *. ....• .. -, 1;1 ,', '.'.J" . ; -,,'k," ," 

Ch .... Horace 

Enabling Nelli GeneraUon NANC AppUcaUona Through ConllOller 

CX-0331 C 

Technology Pr_nlaUon willl Noles from MemCon 2007 

H. Chen OeD. Ex. 286 Infringemenl 11

Chan. HDraca 

CX-0332 C 

July 16, 2007 Phlson USA Weekly SlalUl Report tH. Chen Cap. Ex. 

28n PEC00455427..Q0455428 ImpOrtaUon 11

Chen, Horace 

eX·0333 C 

July 27. 2007 Phlson USA Week/y Slalul Report tH. Chan Cap. Ex, 

288\ PECOOOO4TT2'{)()OO4na fmll<>l1aUon 11

eX-0334 Withdrawn 

CX-0335 Withdrawn 

CX·0336 Wllhdrawn 

Yenl/, J.Y. 

CX-0337 C 

WOI1dng Craft American National Standard. Projecl T10/1417-O 

Yano OeD. eX. 111 S[)'I·2268874-2269018 Inmngemenl 11

Yang. J.Y. 

CX-0338 C 

USB 2.0 Flash COI1I1OII.., Specification PS2231. Vat. 1.8 [Yeng Oap. 

Ex.2C21 PECOOOO2543.{)()OO2583 Infringemenl 101

CX·0339 WUhdrawn 

Yang.J.Y. 

eX-0340 C Cala Siruclure A Mana<Hlfl1onl Mechonllm lYana 001>. Ex. 2041 PECOOOO0673-00000678 Infrinaamenl 10/

Yang, J.Y. 

CX-0341 C TlIChnical Work.hoo lYana OeD. Ex. 2061 PECOOO36872-00035868 Inmnoomenl 101

Yang,J.Y. 

CX·0342 C Phllon PS2231 Sourca CDd.lYana Den. Ex. 2081 PEC2.00001.Q05981 Infrinoamenl 1

CX-0343 Withdrawn 

eX-0344 Withdrawn 10/

JX-O:l45 

-- L- --------- -- -- --

23 
CX-0346 Withdrawn 

CX-0347 Withdrawn 

eX-0348 Ie IPhtson PS3008 Source Code [yang Oep. Ex. 2191 

eX-0349 Wllhdrawn 

CX-0350 Wtthdrawn 

CX-0351 Withdrawn 

CX-0352 Wllhdrawn 

eX-0353 Withdrawn 

CX-0354 Withdrawn 

eX-0355 Withdrawn 

CX-0356 Withdraw CX-0357 Wllhdrawn 

CX-0356 WllIldrawn 

CX-0359 Withdrawn 

Exhibit C: Chart "' PQI PfOducla imported Into \he Unlled Stalaa [Yu 

CX-0360 Ie IpQt OeP. Ex. 51) 

Appendix A 

SanDisk Corporation's CX-List 

Yang,J.Y. 

PEC2.01198-001544 

Yu, Nancy 

24 

Infringement 

tnmngament; ImportaUon: 

remedy/bonding 

-llJ<;mi' 

10a9L

11/5

lill
Appendix A 

SanDisk Corporation's CX-tist 

.-. '" 

. "" \ t .. ' <' 

CX·0361 WHhdrawn 

CX-0362 

Withdrawn 

CX-0363 Wilhdrawn 

CX-0364 Withdrawn 

CX-0365 Wllhdrawn 

Yu. Nancy 

Ust of cel1aln pal producll (Pan Oriva and I-Stick) Impor\8d Into Iha ImpoI1aUIII1; 

CX-0366 C United Stat81 11/5

IYu PQI Dap. Ex. 47] POI 0OOOO40S-00000442 remedy/bonding 

Yu, Nancy 

Lilt of _In Pal products (CF Cardl) Impol1ad Into Iha United InflingamanC ImponaUon; 

CX-0367 C Stat8sIYu PQI Oap. Ex. 48} PQI 00000375-00000389 remedy/bonding 11/

Yu. Nancy 

Lisl of cel1aln pal products (MMC Cards) Imported Into Ihe United Importation; 

CX,0368 C Slate. 11/S

lYu POIt:l!Jp. Ex. 491 pal 00000393-00000404 remedvlbondina 

CX-0369 Wllhdrawn CX-0370 Withdrawn 

CX-0371 Wllhdrawn 

CX-0372 Wllhdrawn 

CX-0373 Withdrawn 

CX-0374 Wllhdrawn 

CX-0375 Withdrawn 

25 
Appendix A 

SanDisk Corporation's CX-List 

'l'-! i' ,"': .,. ';' . 

> ; ." iii), : i 

eX-0376 Withdrawn 

eX-0377 Withdrawn 

CX-0376 Withdrawn 

eX-0379 Wllhdrawn 

List of Silicon Motion CompactFiIlahiSSO Conlrollers [Oogng SM 

CX-0380 e OeD. Ex. 211 50-1-3266409 Ooona. Nigel ImportaUon J Remedv 10/2

eX-O:361 C List of Silicon Motion MMC Controllers 1000ne SM 080. Ex. 221 SO-I-3286410 Ooong, Nigel Importation J Remadv 10/2

-

eX-03B2 C List of Silicon MoUen USB Controllers/Doone SM DaD. Ex. 231 SO-1-3266411 Doong, Nigal Importation J Remedy 10/2

List of SIUoon MoUon MP3IPMPJOIgilai Frame Controllers 10000g 

CX·0383 C SM Oeo. Ex. 241 SO-l-3266412 Ooona, Nigel ImPOrtaUon J Remedv 1012CX-0384 Wilhdrawn 

SM221 CompeclFluh Conlroller Dalallook, Ver AC3 (Doong SM 

eX-03BS C OeD. Ex. 271 SMI-ITC 0004344-0004402 Doone, Nigel Inll1n!l8l1lant 10/2

CX-0386 C SM222 ComoaclFlash Controllar OataBook flaa SM DaD. Ex. 281 SMI-ITC 0001032-0001059 L .. Jama. Infrinaemant 10/2

eX-0367 C SM223 ComoaclFlash Controller Oalasheel ILee SM Oeo. Ex. 291 SMI-ITC 0001080-0001172 La. James Infrinaement 11/

CX-036B C 

SM223 SSO/CF Controller Oataah .. I, Rev. 1.0 ILoe SM Dep. Ex. 

291'.1 SMHTC 1577982·1578013 Doone Nlael Infrinaement 10/2

SM263 HS MMC Memory Card Conlrollar Oatallook. Ver AE3 [Le. 

eX-03B9 C SM DaD, Ex. 301 SMI·ITC 0008593-0008833 La8 11/

1 James Infringement 

5M267 MMC4.2 memol)' Card Controller Oetallook, Var. 3.4 (l88 

CX-0390 C SM Oeo. E 10/2

•. 311 SMI-ITC 0004558-0004592 lee James Infrlnaarnent 

26 
Appendix A 

SanDisk Corporation's eX-list 

,". , u ,. " ff

CX-0391 Wllhdrawn 

eX-0392 e 

SM321 USB 2.0 Fleah Mlldia Controllar. Ver1.8llw SM Oap. ex. 

331 SMI-ITC 0009165-0009169 Lee James Infringement 10/2

SM321e. U582,0 FIaBh MedIa Controller. OaiaBook. Ver. 1.1 [Lee 

CX-0393 C SM 080. ex. 341 SMI-ITC 0009296-0009303 Lae James 11/5

'"Mnaemanl 

SM324. U5B2.0 Fleah Memory Conllaller DeIaBook. Ver 1.02 {Laa 

CX-0394 C SM Oap. Ex, 351 SMI-ITC OOO149!HlOO1518 Lee Jam.s InfringBmenl 10/2

SM340. USS2.0 Oigllal Audio Play., Conllall .... Var, 1.0 [Lee SM 

CX-0395 C DUD. Ex. 381 SMI..JTC 2455205-2455221 Lee Jamal Inlrinaement 1012

eX-Oa96 C Zoom CF Flash SuPDOri Llat 110102120071 1000na SM Oeo. Ex. 491 SMI..JTC 0002722.0002724 Ooooa. Nlael Infrtngament 11/

CX·0397 Wllhd,awn 

eX·039a C Ovns Flash Suooort List 1000ng SM Oap, Ex. 511 SMHTC 0405251.Q405253 Oaong, Nigel Infringement 11/

CX·0399 C 8MI Flea" 8up/l<lIt Ult 1000na 8M DOD. Ex. 521 8MI·ITC 1781655-1781557 /Ooong. Nfael Infringement 11/CX-0400 C Zoom CF FIaBh SuPPOrt Llat tOl/31/20071 fDoona SM OoP. Ex. 531 SMI-ITC 1090802 Oaona. Nlaol Infringemonl 11/

eX-0401 WIthdrawn 

, eX·0402 Withdrawn 

CX·0403 Withdrawn 

eX-0404 Wlthdlllwn 

CX'0405 C PrB'Bnlation enlllled, Ovna Familv Products fLee SM OBP. Ex. 73) USB 00045896'()OO45929 Lee James Infringemant 11/

27 
Appendix A 

SanDisk Corporation's ex-List 

"'l . " .' ,., . . " , .. 

CX-0406 Withdrawn CX-0407 Withdrawn 

CX-0408 Withdrawn 

Nole to Custom.,. ra SMI UFO Controller· SM325AB Wear Leveling 

CX·0409 C Alaorithm Introduction ILee SM C.P. Ex. m SMI-ITC 1390635-1390839 Lee. Jame. tnfringament 101CX-0410 C 

Nole 10 eu,tomers re SMI SSD Contro".,· 8M223 Wear Leveling 

Al.Q!>rilhm IntroducUon IL .. SMDes>. Ex. 78\ SMt·ITC 1318371-1318375 Lee Jernes Infringement 10/2

NDIe to Customere ra 8MI CFISSD Controller· SM222JSM223 Table 

CX·0411 C Re-Llnk afta, Suddan Powar Down (lee SM DIIP, Ex. 791 8MI-lTe 1318376-1318379 Lae Jamss 1"!ri"lLeman! 10/2

Pre .. nlaUon enUUed. WlIan and Where the 8ad B\odI will be 

CX-04i2 C ILee SM Dep. Ex. 8O} 8MI-ITC 1398477-1398480 Lee Jame. Infrlngemant 10/2

GX-0413 C 

Nole to CUltO!ll8f'll ra SM222 Rev. AD Product Change NoOce [Lee 

SM Dep. Ex. 81] S/,U-ITC 1302057-1302058 Lee Jamas Infrinoamant 10/

ApPlication Note ra SM324 Rev. BC Bad Block Reservation 

CX-0414 C AP.PllcaUon Nole {Lee SM DeP. Ex. 82] SMI-ITC 2128259-2128281 Lee Jamal Infringement 10/

CX-0415 C Ilsue RaDar! ,a SM324BC [Lee 8M 000. Ex. 851 SMI-ITC 1389545-1399548 Lee. Jam •• In!rln_nt lQ[2

CX-0416 Withdrawn 

CX-0417 Wlthd,awn 

Daleaheet page ra lCE pin and 2 pin & 4 CE pin fta.h .. tup [Lee 10/

CX-0418 C SM DaD. Ex. 891 SMI.ITC 0007389 Lee James In!rtngemen! 

SM325 High Speed USB2.0 Flash Memory Controller Oata800k. 

CX-0419 C Va'. In!rlnaament 1.03. Ilea SM DIIP. Ex. 961 SMHTC 2342482-2342520 Lo. Jam.1 

CX-0420 C SMt M324 Hiddon Block & Command Define lLee SM D.p. Ex. 1001 SMI-ITC 1241041-1241070 Lal Jam •• Infrlnaement 10

28 
Appendix A . 

SanDisk Corporation's CX-List 

'·:·"'1' ' ,..,. , 'i,·,,; 

I 

CX-0421 C HandlYrlHen drawing of 2K page (Lee SM Oep. Ex. 103J leB,James Infnnllemant 10/29CX-0422 C SM324 Firmwera Code module 'csrdmode.c' ILea SM Oap. Ex. 116 SM-ITC-SC 0001.00993-0001.00996 Lee James Infringement 11/5

CX-0423 Wllhdrawn 

CX-0424 C SM324 Firmware Code module-'publlc •• ' flea SM Dep. Ex. 1191 SM-ITC·SC 0001.01216-0001.01253 LeB Jamsl Inll1ngamenl 10/29

CX-0425 C 51.4324 Firmware Code module- -rUecmd.c· (Lee 5M [)eo. Ex. 1221 SM-ITC.SC Lee James Infrln,,-emanl 10/29

CX-0426 Wlthdrewn 

Dlatributorehlp Agreement between Siliccn MoUon and Nu Horizon 

eX-0427 C Electronlca {Doong SM DaP. Ex. 1541 SMI-ITC 2451511·2451524 DOQng, Nlgal Infrlnaement 11/

Di.lribulonlhlp Agreement Batw •• n Silicon Motion and All American 

eX-0428 C Semiconductor. Inc. !DoDrlll SM Dell. Elt 1551 SMI-ITC 2451430·2451447 0000II. Nigel Infrlnll\lfTlent IlmportaUon 11(5

Sample Requast Form. SM287 A MMC card [Doong 8M Dep. Elt 

CX-0429 C 169( SMI-tTC·N 23915058.1-23915056.2 Ooonll, Nigel Infringement IlmDoriaUon 11/

eX-0430 Wllhdrawn 

CX·0431 Wllhdrewn 

eX·0432 C 

Sample Raqu .. 1 form. SM223AC PC8A + Freme (Hsiao SM O.p. 

Ex. 1751 8MI-ITC 2391078 Hsiao Scoll Inll1ng\lfTlenl I ImoortaUon 11/

Sample Requast Form. SM223AC + SAT A Silicon Image Bind 

eX-0433 C Phllon' Hyperstone [Halao SM Dep. Ex. 1761 SMI-ITC 2391067 Halao Scott Inlringamenl/lmpDrlaUon 11/

Sample Raqueal Fonn SM223-AB evaluaUon board (Hllao SM Dep. 

CX-0434 C Ex. 1841 SMI-ITC 1061278.XL8 Hsiao SCOII Infringament IlmjloriaUon 11/

Sample Request fann Demo Board willi CF Interface and willi Flash 

Inlrinll8ffienlllmooriaUon 11/

eX-0435 C (Haleo 8M Dep. Ex. 185J - St,ll-ITJ: 11l!112S8.XL8 ... - Halao Scali 

29 
Appendix A 

SanDisk Corporation's CX-List 

" . - t .," " l 

Sample Requ8I1 Fcrm 5M325 demo boardllHlia" SM Dep. Ex. 

CX-0436 C 1901 SMf.lTC 2391080 HII." Scoll Infringemanl/lmoonalion 11/

Sample Requall Fcrm SM223A8 demo board IHllao 8M Dap. Ex. CX-0437 C Intrinoomeni/imoortation 11/

1931' SMI-ITC 1532831 Hsiao 80011 

Sample Requeal Fcrm SM223AC demo board JDoong SM Oap. Ex. CX-0438 C 11/

1941' SMI-ITC 1632833 Ooong, Nigel InfringemenlI Im"ortaUon 

CX-0439 C CUllomor Shipping L111 (00000 8M OeD. Ex. 2021 SMI·ITC NO 0000001-0000024 Doong, Nigel ImportaUon I Remedv 11/CX-0440 C SamPle ShlDrnenta [Halao SM DaD. Ex. 2091 SMI..fTC SHl 000OOOl"()()()o012 Hllao 800ll Impor1aUon I Remedv 11/

CX-0441 C Demo Kits (Hsiao 8M OeD. Ex. 2101 , SMI..fTC 5H2 OOOooOHlOO0020 Halao 800ll Impar1aUon I Rlmedv 11/CX-0442 Wilhdrawn CX·0443 Withdrawn CX-0444 Withdrawn 

Raapondenl Skymedl CorporaUon'. Response. 10 SanDisk Witness 

CorporaUon'a Firat NaUca of DepoelUon of Skymedi Corpo,aUon BacltgroundildenUficaUon a. CX-0445 C Chana SKX Oeo. Ex. 21 Chang, C.Y. corporate representaUve 111

Witness 

CX·0446 C Lelia, 10 Stafford from Chlnov (Chana 8KX Dep. Ex. 31 Chana. C.Y. 

BacltgroundlidenUficaUon el 

loorporale represenlaUve 10/2

CX-0447 Wilhdrawn CX-0448 Wllhdrawn 

CX-0449 Withdrawn 

CX-0450 Withdrawn 

30 
Appendix A 

SanDisk Corporation's CX-List 

j '."Ji -, ill ," \ ',. 

CX-0451 C 

Skymedl SK6201, USB2.0 Flash Oriva Controller, Rev. 1.08 [Chang 

5KX Oeo. ex. 141 SKY OOOOO:l56-0ooo0284 Chana.C.Y. Infringemenl 10/

CX-0452 C 

Skymedi SK8202 USB 2.1 Flaah Drive Controller, RBY.1.02[Chang 

SKX Dap. Ex. 151 SKY 00000285-<10000311 Chang, C.Y. Inrrtngemenl 

CX-0453 C 

Skymedl SI<6202 Privacy .. nhanced UFO Controller, Rev. 0.10 

Chol1g SKX Dap. Ex. 1Iil SKY 00000312-00000324 Chang, C.Y, Inrrlnllemant 10/

CX-0454 C 

5kymedl SI<6203Bx Privacy-enhanced UFO Controller, Rev. 2.00 

Chang 5KX Dep. Ex. 171 SKY ooOO32n-00003268 Chang. C.Y. Inrrtngement 10/

CX-0455 C 

Skymedl SK6211Bx, Enhanced UFO Controller, Rev. 0.10 [Chang 5KX DaP. Ex. 181 SKY 00000325-<10000337 Chang, C.Y. 10/

CX-0456 Withdrawn 

Skymadl 8K6602, 8D1.1IMMC4.0 Memory Card Controller, Rav. 

CX-0457 C 1.04lChano 5KX Dao. Ex. 211 SKY 00006313..()0008352 Chana, C.Y. Infringemenl 10/

Skymedl SI<8612, S01.1IMMC4.1 Memory Card Controller, Rav. 

ex· 0456 c 1.91 LChang: 5KX Dap. Ex. SKY 00006662-00006703 Chang. C.Y. infringement 

Skymadl SK6618, MSiSD 2.0/MMC4.2 with USB2.0 Duallnlerfaca 

CX-0459 C Controller Rav. 1.0 ICha!l!L 5KX Dap. Ex. 231 SKY 00000471-00000497 Chang, C.Y. Infrlngemant 10

CX-0460 Withdrawn CX-0461 C 

Skymedi SK6826, S02.OIMMC4.2 Memoty Card Contrallar, Ray. :l.o 

Chang SKX Dap. Ex. 251 SKY 10000842-10000865 Chana. C.Y. Infrlnoement 

CX-04132 C 

5kymedl 8K6828, 5D2.0IMMC4.2 Memory Card Controllar, Rev. 1.0 

Chana 5KX OeD. Ex. 261 . 5KY 00012765-<10012789 Chang, C.Y. InmnDemsnt 10

5kymedi 8K6002, MMC4.0 Memory Card Controller, Rev. 1.0 

CX-0463 C Chang 5KX Dap. EK. 271 SKY 00000549-00000588 Chang, C.Y. Inmngamant 10

CX-0464 C 

Skymedl KTC680, SOl.1IMMC4.1 Memory Card Controllar, Rav.10 

ChanD 5KX OeD. Ex. 281 Chana. C.Y. Infringement 10

Skymedl KTC881 , SD2.0/MMC4.2 Memory Cerd ControUer, Rev. 1.0 

CX-0465 C Chana SKX Dap. EK. 291 ChanD. C.Y. Infrirnlemant 

31 
Appendix A 

SanDisk Corporation's CX-List 

, 

, ,;,1', '. , " 

InlroductiOllIa FIIIIh Dalll Managam.n1 Part 2 by Johnaon Huang 

CX-0466 C Chana SKX OeD, Ex. 30i SKY 10000302-10000318 Chana, C.Y. Infringement 10/29

Skymlldl6203Bx pnvacy ... nhanced UFO ConltoUer. Rev. 2.01 ' 

CX-0467 C Chana SKX DaD, Ex. 311 Chana. C.Y. Infrinaament 10/29CX-0468 C 

lBx Enhanced UFO Controller Rev 3.00 [Chang SKX 

080. Ex. 32 ' Chana. C.Y, Inlrlnaament 10/29

Skymedl 62811 USB2.0 Flash OIlva ControUor, Rev 3.10 IChenll SKX 

CX-0469 C Dap, Ex. 331 10129CX-0470 C 

Skymedi SK662S SD2.OIMMC4.2 Memory Card Conlroller Rev, 1.1 

Chana SKX OeD. Ex. 34t Chang, C.Y. Inlrlngement 10129

CX-0471 Withdrawn CX-0472 Withdrawn 

Skymedl MMC4.0 Controllar Design SpecificaUon [Chang SKX Dap. 

CX-0473 C Ex. 441 Chang. C.Y. Infringemont 1012

CX-0474 C Skvmedl. 1B06 Daslgn SpacJf'/CIIUon rChang SKX DaP. Ex, 48J SKY 00012372-00012727 Chano. C,Y. Inmoosmenl 1012

CX-0475 Withdrawn 

CX-0476 Withdrawn 

CX-0477 Withdrawn 

CX-0478 Withdrawn 1012

CX-0479 Withdrawn 10/29

Introduc1lon 10 FlaBh Oalll Managament. Johnson Huang [Chang 

CX-0480 C SKX·Oeo. Ex. 591 SKY 00527777 Chana. C.Y. Inlrlnoament 1012

32 
Appendix A 

SanDisk Corporation's CX-List 

.:, ./ " '-. . ' . ": .' J. '\,!;: 

Univeraal Serial Bua Me .. Storage Cia .. , Bulk-Only Transport, 

CX-0481 C Revision 1.0 IChlu SKX 0...11., Ex. 701 So..1-0420751.Q420n2 Chlu. Chris Infringement l1/S

WC!1IIng OrallAmeilean Nallonal Standaro, Project T1011417.o, 

CX-0462 C Revision 161Chlu 8KX OeD. Ex. 711 80..1·2288874-2269018 Chlu Chris IltT1POI1aUon ll/Sn

CX-0463 C Micrvn Prall Pun:ha •• Order [Chlu SKX DaP. Ex. 741 SKY oo00063NlOOOO642 Chlu Chris 'nfringement 11/5CX-0484 C ComDaliblUtv LIBtlabie rChiu SKX Oep. Ex. 75) Chiu Chris Infringement 10129

CX-0485 C Sl!Ymedl Relerenca o.."\II1\Chlu SKX Oep. Ex. 76\ SK·PE·P·320-01.POF Chlu Chris Infringement 1l/S

Skymedl Flalll Support Ust lor SK6261 USB Ccoln>ller IChlu SKX 

CX·0486 C Oap. Ex. 771 Chlu Chris Infrlngement 10/29

Samaung K9HBG06U1M NAND Flllllh Memory Datasheat IChlu 

CX·0487 C SKX Oep. Ex. 78} Chili Chris Infr1!Jgement ll/ll

CX-0488 C T.81 File document rChtu SKX OeD. Ex. 791 Chlu Chris Infringement 11/

8K6281AB R·W Ptllforrnanca Capaoll)' LItL20070426_K.xrIIChlu 

CX-0489 C SKX 10/2

01lP. Ex. 801 Chlu Chris Infrlnpemenl 

CX-0490 C S.mlung K9WAG08U1AlChlu SKX Dep. Ex. 811 SO-I-2084952-2095OO1 Chlu Chris Infringement 11/

CX-0491 C Skymedl Flash SupPOri List 20060728 [Chlu SKX Dep. 831 Chlu Chris Infrlngement 10/2

CX-0492 Withdrawn 

Skymedl Flash Supporl Ust for the 6621, 8625 and 8826 SO/MMC 

CX-0493 C contrallelll fChlu SKX OeD. 86\ Chlu Chris In!rtngement 

Skyrnedl Flash Supporl List for lIle 8602, 8812 SOIMMC and 6201 Infrlnoement 10/2

CX-0494 C USB conIrallellllChlu 8KX DaP. Ex. 871 Chiu Chris 

CX-0495 C ·SK281.cfQ" fil. rTeal SKX Dep. Ex. 1191 JerrvT •• 1 ImporlaUDn 1l/

33 
Appendix A 

SanDisk Corporation's CX-List 

··"."i> " " • ' .,rill! , . 1: ,;,.: ' . 1 Ji< :, •• 

" 

CX-0496 C CODieB of FedEx shipping form. ITJI8I SKX 0811. Ex. 1211 JOITV Tiel 

CX-0497 C Shloolng Data 2007-2008 7I141Chih SKX OeD. Ex. 130) Arthur Chlh ImoortaUon 11/CX-049a C 

081a1l Shlpmenllnfllmlatton. Updalad Q2 2008 IChih SKX Oap. Ex. 

131) Arthur Chih Imoortatlon 11/

CX-0499 C Shlornant to U.S.A. Amount (Chlh SKX Oeo. E", 132) Arthur Chlh ImoorlaUon 11/5

CX-0500 C 2008 BP New Oll5lgn In (Chlh SKX Oejl. Ex. 134) SKY 10020800 ArthurChlh Infrll1Q!JfT1onl 11/

CX-0501 Withdrawn 

eX-0502 Wlthdrewn 

eX-050:! Withdrawn 

eX-0504 Withdrawn 

eX-0505 Withdrawn 

CX·0506 Withdrawn 

eX-0507 Withdrawn 

eX-050a Withdrawn 

eX-OS09 Withdrawn 

eX-OSlO Withdrawn 

34 
Appendix A 

SanDisk Corporation's CX-List 

• ' ' ,. . ": r<.:ii! • ,t! q " _J "

" , 

eX-0511 Wilhdrawn 

CX-0512 Wilhdrawn eX-0513 Wllhdrawn CX-05l4 Withdrawn 

eX-05l5 Wllhdrawn 

Chlu, Frankie 

Tablellillng CUllom ... coda, CUllom ... nama,lnvlolce date, Invoice 

eX-0516 C 

number, brand, unit MSP, price, quanUIy, oxt. price end margin IChiu 

Dap. Ex. 31 rSC-ITC 0000807-0000901 ImPOrlaUon' remody!bondlng 11/

eX-0517 Withdrawn 

CX-05f8 Wllhdrawn CX·0519 Wllhdrawn 

CX·0520 Withdrawn 

Chu,Ray 

Transcend's Amended and Supplemental Rasponaes to SanDlsk', 

eX-0521 C Interr_ogalories 116 and 118(Chu Dep. Ex. 6] Infringement' If!1portation 11

Chu,Ray 

Infringement: 

CX·0522 C CompactFlash Guide First Edition JChu Dop. Ex. 81 TSC-lrC 0009256-0009279 remedy/bonding Ul

Chu, Ray 

"USB Flash Driva" page from Tranaoand'. Online Store web lite 

CX·0523 Chu Osp. Ex, 23) tnfringement· If!1partallon 11

CX·0524 Wllhdrawn 

Tzou, Sin 

Exhlbll A to Transcend'. Amendod and Supplemental Responses to 

CX·0525 C SanOlsk'. Inlttrrooatorie. 118 and 118 ITzou OeD. Ex. 41 Infringamant: Impartation 11/

35 
Appendix A 

SanDisk Corporation's CX-List 

. " . , ' ..• -- ,,1 

I 

, CX-0526 WilhdraWfi 

Tzau, Ban 

CX-0527 C CF75/801120 Print COdes RUles !TlOu Oep, Ex. 6) Remedvlbondina 11

CX-OS28 Withdrawn 

CX-0529 Withdrawn 

CX-0530 Withdrawn 

CX-0531 Withdrawn 

CX-0532 Withdrawn CX-0533 Withdrawn 

CX-0534 Withdrawn 

Ryan, Ronan P. 

Infringement 

CX-0535 C Tablellatll!llSlora 'n' Go olea for D@p. Ex, 11!L VB 000001-000021 ramadv!bondlna: validity 1

CX-0536 Withdrawn 

CX-0537 Withdrawn 

CX-0538 Withdrawn 

CX-0539 Withdrawn 

CX-0540 Withdrawn 

:lit 
Appendix A 

SanDisk Corporation's CX-List 

" , , ,.>l: <J. " .i1

M' ,I 

CX·0541 Withdrawn 

CX-0542 Withdrawn CX·0543 Withdrawn CX·0544 Wltltdrawn 

CX·0545 Withdrawn 

CX-0546 Withdrawn CX·0547 Withdrawn 

CX-0541l Withdrawn 

eX-0549 WlIhdr.wn 

eX-05S0 Withdrawn 

CX-0551 WUhdrawn 

eX-0552 WUhdrawn 

CX-0553 Withdrawn CX-0554 Wltltdrawn 

CX-0555 Withdrawn 

37 
Appendix A 

SanOisk Corporation's CX-List 

, . , "'1 , J .t " • or r,:" 

eX-0556 Withdrawn 

eX-OS5r Withdrawn 

eX-055a Wilhdrawn 

eX-0559 Wllhdrawn eX-0560 Withdrawn 

eX-0561 Wllhdrawn eX-0562 Withdrawn 

CX-0563 Wllhdrawn 

eX-0564 Withdrawn 

eX-0565 Withdrawn eX-05SS Wilhdrawn 

eX-05S7 Withdrawn eX-056S Wllhdrawn 

CX·0569 Wllhdrawn 

eX-0570 Withdrawn 

38 
Appendix A 

SanDisk Corporation's ex-List 

. .' , V) .<;", .;., 

CX-0571 WillJdrawn eX-0572 WHhdrawn eX-0573 Withdrawn 

CX-0574 WlllJdrawn eX-0575 Withdrawn 

eX-0576 WHhdrawn 

eX-05n C Accused Dane-Elec Flash Me/lJOl'Y Product Table DE 0018080 RhYne Thomas Infringement 10/2

CX-0576 BlnarylMLC NAND System SoeclftcaUon Rhyne Thomas Infrlngament 10/2

eX-0579 WHhdrawn 

eX-05S0 C Complaint Ex, 144A Rhvne Thomao Dome.nc Industry 10/2eX-05131 C Complaint Ex, 144B RhYne Thomas Domestic Industry 10/2eX-05S;! C Complaint Ex, 144C Rh)'l1e Thoma. oom •• lic industry 10/2

eX-05a:'! C Cornelaint Ex, 1440 Rhvne Thoma. Dome.«.lndultry 10/2

CX-05S4 C Flash 0.8illn Manual Rhyne Thomas inlrina8mant 10/2

CX-0585 Withdrawn 10/2

39 
Appendix A 

SanDisk Corporation's CX-List 

, '" .. ,. , ,. t ,; I .. -.. 

eX-05SS C Layout Report 80-1-3266329-3266388 Rhyne Thomas InhillJllment 10/2

eX-05B7 Withdrawn 

eX-05S8 Micron Tac;hnical Nota TN-29-28 Rhvne Thomas Inhingement 10/2

eX-0589 e mlc2KB3.c (Phiaon 80urce Cod!l Rhyne Thoma. Inhingamant 10/2

eX-05S0 C K9XXG08UXM Samluna OatalheotlPhilonP<!J:>cl ex. 131 . Rhvnl Thomas Inhi!!liament 101

CX-0591 Withdrawn 

eX-0592 e Phllon SUpulaUon Rhvna Thomas Infrlnllamant 101

CX-0593 Withdrawn 10/2

eX-0594 C SO SpadficaUon Ver. 2.00 80-1-2673376-2673558 Rhyne Thornes Oomeatlc Industry 11/2

eX-0595 C 

System ProJact Engln88r1ng, Ultra II MLCiExlr.ma III (Falcon) 

Project 80-1-0425625-0425642 Rhvne. Thomas DomeaUe Industrv 101

eX-0596 e Toshiba Oatashest RhYne Thomas Inlrinllament 10/2

eX-0597 Withdrawn 

eX-059S Withdrawn 

eX-0599 Withdrawn 

eX-0600 Withdrawn 

40 
Appendix A 

SanDisk Corporation's CX-List 

.. " , . ',' I . - " , . , ", 

• 

ex·oeOl C Rhyne Export Rel10rt Ex. C (NAND Identification Tablel RhYne Thomas Infrinaement 10/29eX-0602 Wllhdrawn 

-

eX-0603 WHhdrawn 

eX-0604 Withdrawn eX-01305 Withdrawn 

eX-060e Withdrawn 

, 

eX-0607 Withdrawn eX·Oa08 Withdrawn eX-0609 Withdrawn 

eX-06l0 Withdrawn 

eX·06l1 Withdrawn 

eX·0612 Withdrawn 10/29

CX-Q613 Withdrawn 

Rhyne Expert Report Ex. P (AccuHd tmatlon Flash Memory Produet 

eX-0614 C Table' Rhyne Thorn •• Infrinaement 10{29

Rhyne ElCflIIII Report Ex. Q (Accused KIngston Flash Memory 

eX·0615 C Product Table) Rhyne. Thomu Inlrln!l8ll1snt 10/29

41 
Appendix A 

SanDisk Corporation's CX-List 

.- r ., 

CX-0616 C Rhvne EJIlltJrt RaDOI1 Ex. R Rhvna Thomas Infringement 10/29

Rhyne Expert Report Ex. S (Accused VetbaUm Flash Memory 

1012

eX-06H C Produc:tTebiel Rhyne Thomas Infllngemant 

Rhyne ExplUl Report Ex. T (Accused Apacer Flash Memory Product 

eX-OBi8 C Tabla) Rhyne Thomss Infringement 10/29

eX-06l9 e 

Exp8l1 Report Ex. U (Accueed LGE Flesh Memory Product 

Tabla RhYne Thoma. Infrlngemenl 10/29

eX-0620 e 

Rhyne E",*! Ex. V (Accused Tranocend Aash Memory Product Table Rhyne Thomas Infrlngemsnl 10/29

eX-Of:l22 C ImaUonlMemorex Website pholos Min Paul Inmngement 10/29eX·0623 Withdrawn 

eX-0624 Withdrawn eX-0625 Withdrawn 

eX-06Z6 C 

Flash Talk Team Final WW Portfolio Summary, Oecamber 5, 2007 

Northfield OeD. Ex. 311 IMA-273187-273195 Min Paul Infrlnaemenl 11/

eX-0627 Wllhdrawn 

eX-OB28 Withdrawn 

eX-0629 Withdrawn 

eX-0630 Withdrawn 

eX-0631 Withdrawn 

42 
Appendix A 

SanDisk Corporation's CX-List 

.. , a }. ',' '," ., .... ,:i·' 

CX-0632 Withdrawn 

eX-0633 Withdrawn 

CX'()634 WIthdrawn 

CX-0635 WIthdrawn CX-0636 Withdrawn 

eX-063? Withdrawn 

CX-0636 Withdrawn CX-0639 Withdrawn CX-0640 Withdrawn CX-0641 Withdrawn 

_. 

CX-0642 Withdrawn 

CX-0643 Withdrawn 

CX-0644 Withdrawn 

CX-0645 Withdrawn 

CX-0646 Withdrawn 

43 
Appendix A 

SanDisk Corporation's CX·List 

, ii, " .-1".. ; ,dinkN ," . ,. 

eX-064? Withdrawn 

, 

eX-0648 Withdrawn 

eX-0649 SanDitlk WebBlte Min PaUl Dam. sUe IndustrY 10/29

eX-06S0 Withdrawn 

CX-0651 Withdrawn CX-0652 Withdrawn 

CX-0653 Withdrawn 

CX-0654 Withdrawn 

eX,06S5 Wlthdrewn 

eX-06S6 Withdrawn eX-065? Withdrawn 

eX-OG58 Withdrawn 

eX-Ofi59 Wllhdrawn 

eX-0660 Withdrawn 

. 

eX-0661 Withdrawn 

44 
Appendix A 

SanOisk Corporation's CX-List 

.. ,.,. < • .,. "1< , -",<"/" -!i.'-'

CX-0662 Wl1hdrawn 

CX-0663 Wllhdrawn 

eX-0664 Wllhdrawn 

eX'-0665 Withdrawn 

eX-0666 Withdrawn 

eX-OG67 Withdrawn eX-0668 Withdrawn 

CX-0669 Withdrawn 

eX-0670 Withdrawn 

eX-0671 Withdrawn 

CX-0672 Withdrawn CX-0673 Withdrawn 

CX-0674 Withdrawn 

eX-0675 Withdrawn 

eX-0676 Wllhdrawn 

45 
Appendix A 

SanDisk Corporation'sCX-List 

•• < 

"-

< • i 'f •. , " " '" , . 

" "'{' '. " i' I 

eX-0077 Withdrawn 

eX-0678 WlIhdrawn 

eX-OG7e Withdrawn eX-0680 Withdrawn 

eX-OGB1 Wllhdrawn 

CX-0682 Withdrawn 

eX-0683 Withdrawn 

CX-0604 Withdrawn 

eX-06S5 Wtthdrawn 

eX-0686 Withdrawn 

CX-0687 Withdrawn 

eX-OGBB Withdrawn eX-OGOg Wllhdrawn 

eX-0690 Withdrawn 

eX-0691 Wtthdrawn 

48 
Appendix A 

SanDisk Corporation's CX-List 

, , ,li .• ,. " ,of" 

eX-0692 Withdrawn 

CX-0693 Withdrawn 

eX-0694 Withdrawn eX-0695 Withdrawn eX-OS9S Withdrawn 

eX-0897 Wllhdrawn 

eX-OG9a Wllhdrawn 

CX-06fJfJ Withdrawn 

eX-0700 Withdrawn 

eX-0701 Withdrawn 

CX-0702 Withdrawn CX-0703 Withdrawn 

eX-OlO4 Wlthdrawn 

eX-OlO5 Withdrawn 

eX-OlOS Withdrawn 

47 
Appendix A 

SanDisk Corporation's CX·List 

" .' ,.l, N,,' , .. • ",<. . • .. 

eX-0707 Wlllldrawn 

eX-07oe Wlllldrawn eX-0709 Wllhdrawn 

eX-07l0 Wllhdrawn eX-07ll Wllhdrawn eX-0712 Wllhdrawn eX-0713 Withdrawn 

CX-0714 Wllhdrawn 

eX-07l5 Withdrawn eX-07l6 Wilhdrawn eX-07ll Wllhdrawn 

eX.Ol18 Wilhdrawn 

CX-0719 Withdrawn 

ex-ono Wllhdrawn 

CX-0721 Wllhdrawn 

48 
Appendix A 

SanDisk Corporation's CX-List 

"I'. 1. I ' .. ,.,' , . i '. , . ;' " ... 

CX-D722 Withdrawn 

eX-0723 Withdrawn 

CX-0724 Wilhdrawn 

CX-0725 Withdrawn 

eX-0726 Wllhdrawn 

CX-0727 Withdrawn 

eX-0728 Withdrawn 

CX-0729 Wilhdrawn 

CX-OT30 Withdrawn 

CX-OT31 Withdrawn 

CX-0732 Withdrawn 

eX-0733 Withdrawn 

CX-0734 Withdrawn CX-0735 

CX-0736 Withdrawn 

49 
Appendix A 

SanDisk Corporation's CX-List 

I" .. 'it .. . ., .' , . ,. .i , <,;' \ ,"W • 

eX·0737 Withdrawn 

eX·073a Withdrawn 

eX·()739 C SUbpoena - Inc. [Svmwav8 DaP. Ex. 1) Thoma. Chrl.tO!J/)ar Todd Importation 11/CX·0740 C 

CBMI1831CBM11801CBM2080 Flash CornpaUbUily list ISymw&lve Oep. Ex. 21 SYM 0005-0008 Thomi. Chri.tO!J/)er Todd ImportaUon Iinfrinaemeni 11/5

CX·0741 WHhdrawn 

CX·0742 Withdrawn CX·0743 Withdrawn 

CX-0744 Withdrawn 

eX·0745 C Schamatic - CBM2080 Generic SoIuUon ISvmwave Oep. Ex. 71 SYM 0067.(J()68 Thornas ChrislOPher Todd Importation Ilntringamenl 11/eX·0746 Withdrawn 

CX·0747 C CBM1190/CBM2080 Flash Compatibility UstlSymwave OeD. Ex. 9) SYM 0001-0004 Thomas ChristOPher Todd Importallon Ilnfringemenl 11/

Aa between SanDiak ami PhltKln, a aUpulaUon CCl\carnlnll the 

CX·0746 C designation of Phllon lO/2

reoreoentaUye DNXIUCII NlA Infringement I .... De_en IiaI1lJlSK ana OIkymeol, • tUpUlaUnn concerning me 

deslgnaHon of Skymadl rep_taU .. products, Importauon InlD the 

Unnad Stales of' certain Skymedl accuaad producll, end InformaUon 

CX·0749 C and a.slstance provided by Skymedl Infrlnaementllmpollallon 10/2

to lis oustomers concerning NlA 

Aa betwaen SanOlsk and all Ralpondants, • aUpulaUon 

concerning the """nomic prong of the domestic IndU&1ry requirement Oome8Uc Indusuy 1112

eX·07S0 C with reapectlD the Aa .. rted Patonta. NIA 

CX·0751 Withdrawn 

50 
Appendix A 

SanDisk Corporation's ex·List 

. , 

. ;.. 1\ I " " . ,'·,I,!(l1!f

IW belwtlen SanOlsk and Respondents, Ccnair. POI and lmaUon, 

a .tipulatlon conQ8mlng the 1""""leaI prong of the domeetio lndullly 

eX-0752 C reQuiremenl with r8BOact to dalm B 0( the '011 oatenl. N/A Domestic Indualry 11/

eX-0753 Withdrawn 

IAI belween SanOlIl< and lmaUon, a .lfpijliUon alrlC8mmg me 

imPQrfadon Into the United SIaI8ll, Hla for Importation Into th. 

CX..(J754 C 

Unilad Slalel, and/or I8Ia allar Importallon Into the Uniled Stat •• , of 

ImaUQn'. accuaed llI'oducf$. NlA ImDOrlaUon 11/2

CX-0755 W"hdrawn 

eX-0756 WRhdrawn eX-07S7 C Cheng, C. Y. OeooslUon Trenscr1D1 Vol. 1 ChanQ. CY 

InfringamanV Importallonl 

remedy bondlno' 10/2

, 

eX-07S6 e Chana. C. Y. DeooslUon TrenllCf\DI Vol. 2 

InfringemenV Importallonl 

Chang, CY remedybondino 10/2

eX-075e C Chang, C. Y. Oe_ltiDn Transcript Vol. 3 ChanG. CY InfringemenV Importationl remedy bondlna 10/2

eX-0760 C Chana. C. Y. Daooillion TranllCf\pl Vol. 4 Chang, CY 

InfringamenV Importation! 

remedy bond Ina 10/2

eX-0761 C Chana, C. Y. 08DO,Ition TranscriDI Vol. 5 Chang, CY 

InfringamenV ImportaUon! 

remedy bondJna 10/2

eX-0762 WMhdrawn 

CX·07G3 Wahl/rawn CX-0764 Withdrawn 

eX-07B5 WRhdrawn eX-0766 WKhdrawn 

51 
Appendix A 

SanDisk Corporation's CX-List 

.. , '1 .. .. 'ru di , 

eX-076? Withdrawn 

eX-07SS Withdrawn 

eX-0769 Withdrawn 

eX-0770 Withdrawn eX-0771 Withdrawn 

eX-0772 Withdrawn 

CX-0773 C Cheng, Vincent Deposition Tranlcript Vol. 1 ChenD. Vincent Infringement IlmportaUon 10/2CX-0774 e Chena, Vincent 080081tion Tranacript Vol. 2 ChB"". Vincent InmnaBmant/lmoortalian 10/29

eX-0775 C Chien, Jason OBPOOItIon TranacriDt Chien JalIOO Inmnoornent/lmpartaUon 1012eX-0776 C Chlh Arlhur 08001lUan TranlcriDt Chlh, Arlhur Infrincement/lmportation 10/2

eX-07?? C Chlu, eM. DepoSition Transcriol Chlu, Chris Infrlnoamenl 10/2

eX-077S Withdrawn 

eX·0779 Withdrawn 

eX-07BO Withdrawn 

CX·07B1 Withdrawn 

52 
Appendix A 

SanDisk Corporation's CX-List 

, ,. " ," . . r 

CX-0762 C Doong, NIl/ttl DeposlUoo Transcripl Vol, 1 Doong, Nigel InllinQOmenl/lmoortaUoo 10/2

eX-0783 C Doong, NJlIoI Dopo.llion Transcript Vol. 2 Doong, Nigel InfringemenlllmJX)rlaUoo 1012

eX-0784 C Doong, Nlgal DellOslUoo Transcript Vol. 3 000011, Nigel Infringement IlmlXlrnlUon 10/2

eX-078S C Doong, Nigel D<tooalUoo Tranlcript Vol. 4 Doong, Nigel Infringement IlmportaUon 10/2eX-07BB Wllhdrawn 10/2

eX-07S7 Withdrawn 101

eX-0788 WUhdrawn 10/2

eX-07B9 Wllhdrawn 10/2

eX-0790 Withdrawn 10/

CX-0791 WUhdrawo 10/

eX-0792 Withdrawn 

eX-0793 Withdrawn 

CX-0794 WUhdrawn 

eX-07BS Withdrawn 

eX-0796 Wllhdrawn 

53 
Appendix A 

SanDisk Corporation's CX-List 

l: ! ," ; " .. ,. ,- , • i. '''''. 

eX-0797 Withdrawn eX-0796 Withdrawn lQ12

eX-0790 Withdrawn 10/2

ex-oeoo Withdrawn 10/2eX-0801 Withdrawn 10/2

eX-DB02 Withdrawn 10/2

CX-OB03 Withdrawn 10/2

eX-0004 Withdrawn 10/2

eX-Oa05 Withdrawn 10/2

eX-DaDa Withdrawn 10/2

eX-OB07 Withdrawn 10/2

eX-OBOa Withdrawn 

eX-Oa09 Withdrawn 

eX-OB10 Withdrawn 101

eX-Oall Withdrawn 10/

54 
Appendix A 

SanDisk Corporation's CX-Ust 

t : " " -, ' T;', .1" 

CX-OB12 Withdrawn 

eX-OB13 Withdrawn 

CX-OB14 Wilhdrawn 

eX-081S Wilhdrawn eX-OB16 Wllhdrawn 

eX-OB17 Withdrawn 

eX-OB1B Wllhdrawn 

CX-08l9 Withdrawn 

eX-0820 Withdrawn 

CX-OB21 Withdrawn 10/29

CX-OB22 Withdrawn 10/29

eX-D823 Withdrawn 1012

CX-OB24 Wllhdrawn 10/29

eX-0825 Withdrawn 

Withdrawn 

--- -------_ .. - -----------

10/29

55 
Appendix A 

San Disk Corporation's eX-list 

>' > .. ,. , " <t. ," , ,. ; 

eX-Oa2T Withdrawn 

eX-0828 Withdrawn eX-0829 Wllhdrawn 

eX-0830 Withdrawn eX-063l Wllhdrawn 

CX-0832 Withdrawn 

CX-0833 Withdrawn 

CX-0834 Withdrawn 

CX-0835 Withdrawn 

eX-0636 Withdrawn 

CX-0837 Withdrawn 

eX-OB3B Wllhdrawn 10/2W

eX-0839 Withdrawn 

CX-OB40 Withdrawn 

CX-0841, Withdrawn 

5iI 
Appendix A 

SanDisk Corporation's eX·List 

.'''' " ,"- '" ''< " . '.' : .. , ;\ ,. w .. 

CX·0842 Withdrawn 

CX-0843 Withdrawn 

eX·OB44 Withdrawn 

eX-0845 Withdrawn 

eX-Oll46 Withdrawn 

CX-01347 Withdrawn 10

CX-0846 Withdrawn 

CX-0849 Withdrawn 

eX-0850 Withdrawn eX-0851 Withdrawn 

CX-0852 Withdrawn 

eX-0853 Withdrawn 

eX-0854 Withdrawn 

eX-0855 Withdrawn 

eX-0856 Withdrawn 
Appendix A 

SanDisk Corporation's CX-List 

" ,.J! -, .... 

eX-OS57 Withdrawn 

eX-0658 Wllhdrawn 

CX-0659 Wilhdrawn 

eX-0860 WKhdrawn 10/29

CX-0661 Withdrawn 10/29

eX-0662 Wllhdrawn 10/29

CX-0863 Withdrawn 10/29CX-0864 Withdrawn 

eX-0865 WiChdrawn 

eX-0866 WlChdrawn 10/29eX-0867 Withdrawn 10/29

eX-OBGB WIChdrawn 10/29

eX-OB69 Withdrawn 10/29

eX-OB70 Wllhdrawn 10l2

eX-0671 Withdrawn 

58 

• 
Appendix A 

SanDisk Corporation's CX-List 

• y,1 "riffl':'W" .. ., ,'."" , " . , 

eX-OB72 Withdrawn 

eX-0873 Withdrawn 

CX-0874 Withdrawn 

eX-Oa75 Withdrawn 10/29eX-OB7S Withdrawn 

eX-OS77 Withdrawn 10/29

eX-OB7B Withdrawn 

CX·0879 Withdrawn 

ex-ossa Wrthdrawn CX-OSB1 Withdrawn 

eX-OBB2 Withdrawn 

eX-OSBl Withdrawn 

eX-0884 Withdrawn 

eX-08B5 Withdrawn 

eX-OS8S Withdrawn ---

59 
Appendix A 

SanDisk Corporation's CX-Ust 

. '[-"" .' -, " . ,'>,' , ' t1</'fAl." " . " 

eX-088? Withdrawn 

eX-OBBS Withdrawn 

< Inrrtngamant. Validity, 

Min E.h, E: FederallnfonnaUon PRlQtsalng Standards PubllcaUon Oom.sUo Indually, 

ex-osso e 197 Min Paull Rhyne Thomas EnfOlaiabUllv 1012eX-OS91 Withdrawn eX-OS92 WIthdrawn 

eX-0893 Withdrawn 

eX-0894 WIthdrawn eX-0895 Withdrawn 

eX-OS96 Withdrawn eX-OS97 Withdrawn 

eX-089S Withdrawn 

eX-OS99 Withdrawn 

eX-0900 Withdrawn 

CX-0901 WIthdrawn 

CX-0902 Withdrawn 

60 
Appendix A 

SanDisk Corporation's CX-List 

" "" ,.-., " "#, 1 , ,i, 

CX-f)903 Withdrawn 

eX-0904 Withdrawn 

eX-DOOS Withdrawn 

eX-0906 Withdrawn 

eX-0907 Withdrawn 

CX-0906 Withdrawn 

eX-0909 Withdrawn 

eX-()910 Withdrawn 

eX-OOll Withdrawn 

CX-0912 Withdrawn 

CX-0913 Withdrawn 

eX-0914 Withdrawn 

CX-0915 Withdrawn 

CX-0916 WIthdrawn 

I CX-0917 Withdrawn 

61 
Appendix A 

SanDisk Corporation's CX-List 

'.- j < ,I '. " ,. -.-jI '>'. " 

'. 

eX-09l8 Withdrawn 

l eX-0919 Withdrawn 

I 

eX-0920 Withdrawn eX-0921 Withdrawn 

eX·0922 Wllhdrawn 

eX-0923 Withdrawn 

eX-0924 Withdrawn 

CX-0925 Withdrawn 

CX-0926 Withdrawn 

CX-0927 Withdrawn CX-092B Withdrawn 

eX-0929 Withdrawn 

CX-0930 Withdrawn 

CX·0931 Withdrawn 

CX-0932 Wilhdrawn 

62 
Appendix A 

SanDisk Corporation's CX-List 

" ·i.l,t!- I ,\'. ,. .. 

CX-0933 Wkhdrawn CX-0934 Withdrawn 

CX-0935 Wllhdrawn 

CX-0936 Withdrawn CX·0937 Wllhdrawn 

CX-093B Wllhdrawn CX·0939 Withdrawn 

CX-0940 Withdrawn 

CX·0941 Withdrawn 

CX-0942 Withdrawn 

CX-0943 Wllhdrawn 

CX·0944 Withdrawn 

CX·0945 Withdrawn 

CX·0946 Wllhdrawn 

CX·0947 Withdrawn 

63 
Appendix A 

SanDisk Corporation's CX-List 

t , 

CX-0948 Withdrawn 

eX-0949 Withdrawn 

eX-09S0 WKhdrawn eX-095l I 

CX-0952 

Universal Serial BUB Ma .. Storage Cia .. Specification Ov8Niew. 

Rev. 1.1 a14-5 IMin PauV RhYna Thoma. 100m •• tic Indust IS[)..1.()420773-0420779 10/2

eX-0953 

I I I 

Withdrawn 

CX-0954 Withdrawn 

CX-0955 Wlthdniwn 

eX-0956 IWkhdraWl1 

eX-0957 Withdrawn eX-0958 Withdrawn 

eX-0959 Withdrawn 

eX-0960 Withdrawn 

eX-096l Withdrawn 

eX-0962 CF+ and CompaclFlaah Specification Rey. 4.1 50-1-2267309-2267501 .l,n. Paull Rhyne, Thorna. tnfrinooment 10/

64 
Appendix A 

SanDisk Corporation's CX-List 

." , , ' ,\\l\"'1 

. 

eX-0963 Micron NAND Oalaah"t 50-1-2269943-2270023 Min PauV Rhyne Thomas Infrlngemenl 1012

eX-0964 Withdrawn 

eX-Og65 Withdrawn eX-0966 Withdrawn 

eX-0967 Withdrawn . 10/2

eX-096S Toshiba NAND Dalash.et 50-1-2269950 Min Pauli Rhvne Thoma. Infrinaement 10/

eX-0969 Hvnlx H27UHOBAG5B Data Sheet PECOO502069 Min Paull Rhyne Thomas Infringement 10/

eX-0970 SCSI Block Commands 50-1-2268934-2268938 Min Paull Rhvne Thomas Infrinaement 10/

eX-0971 Wllhdrawn 

CX-0972 Withdrawn 

eX-0973 Wllhdrawn 

eX-0974 Withdrawn 

CX-0975 C MulUMedlaCard SYStem Soeciftcallon Ver. 4.2 Min Paull Rhvne Thomes Infrinaement 10/

eX-0976 Withdrawn 

CX-0977 Withdrawn 

65 
Appendix A 

SanDisk Corporation's CX-List 

'i ,: . " ," '. ". '. 

CX-097B Withdrawn 

eX-0979 Withdrawn 

ex-osso Withdrawn eX-098l Withdrawn 

eX-0962 Withdrawn eX-OSS3 Withdrawn 

eX-0984 Withdrawn eX-0965 Wllhdrawn 

eX-0986 Withdrawn 

CX-0987 Withdrawn 

eX-OSS6 Withdrawn 

eX-0989 Withdrawn 

eX-0990 Withdrawn 

CX-0991 Withdrawn 

CX-0992 Wilhdrawn 

66 
Appendix A 

SanDisk Corporation's CX-List 

'I' 'ji1 i" • ';;j i 

, ' AW 

CX·0993 Withdrawn 

CX-0994 WlIhdrawn 

eX·0995 Withdrawn 

CX-0996 Withdrawn eX.0997 Withdrawn 

eX-0996 Withdrawn eX-0999 Withdrawn 

eX-10DO Withdrawn 

eX-l00l Withdrawn 

CX-l002 Withdrawn 

CX-1003 Withdrawn 

CX·1004 Withdrawn 

eX-l005 Withdrawn 

eX.l006 Withdrawn 

eX-l007 C Paul S. Min PhD. Witn." Statement Min Paul 

InfringemenU tmportaUoni 

DornesUe Indusltv 10/2

67 
Appendix A 

SanDisk Corporation's ex-Ust 

,- ' ,II ,,' .. ' ., , 

Thoma. 81!Yno PlIO. WlIn ... Slalomonl InlrlngemenU Imporla!ionI 1012712

eX·l00B e Rhvne, Thoma Ocm •• 1Jc Indua! ... 

eX·l009 Withdrawn 10/2912

eX-101O Withdrawn 10129/2

eX·l01l 10129/2

eX·10l2 Wnhdrawn 10/29/2

CX·l0l3 WHhdrawn eX-l014 Wllhdrawn CX·l015 WHhdrawn 

eX·l016 WHhdrawn 

eX·I017 

eX·l01S WHhdrawn 

eX·l019 Withdrawn 

eX·l020 Withdrawn 

eX-I021 Withdrawn 

CX·l022 Withdrawn 

68 
Appendix A 

SanDisk Corporation's ex-List 

" ":\""1,, . :;: """ , :- , " . " i!f 

CX·l023 Withdrawn 

CX·'I024 Wilhdrawn 

CX·1025 Withdrawn 

Apacefs Amended Ex, A to Its 8-2!Hl8 Supplemenlai Interrogatory 

CX-l026 C Responsea (Seot 2. 200Ql Min. PauU Rhyne Thomas infrtnaemenl 1QD!

CX·1027 C 

Apacefa Amended Supp. Respon_to Intetrogalofiaa 1·3, 7, 121-

122 124 (Auo, 29 200$) Min PauV Rhyne Thomas infrtnaemenc remady 10/;1

mpO/llluon; 

Raapondenls Apacer Technology, Inc. and Apacer Memory America, vaUdlly; enforcaabliity; 

Inc:. Respon .. 1 to Complainant SanDiak Corporation'. Fillil Sat Qf domeallc Indua\ry; 

CX·102B C InlarrooalorieaLNoa. 1-108) (Jan. 14, 2008) Min Paull Rhvne. Thomaa remedy/bonding 10/29

CX-1029 Withdrawn 

CX-l030 Withdrawn 

.... ponoants Allaoar Inc. ann AIIBalr Mllmory Amllllca, 

Ino, '. Third Amended Suppiall1tllllal R8IpOI1HS 10 Complainant 

SanOllk CotporaUon', Flral Sal of InIIImlgatortaa (NOI. 1-3) (Apr. 4, 

CX-1031 C 2008) Min Paull Rhyn. Thomas Infrtnaemant 10/2

CX·l032 Withdrawn 

CX-1033 Withdrawn 

CX-1034 WRhdrawn CX-l035 Wllhdrawn 

Respondenls ""!lcar I aamaogy, Inc. and Apacer Mamcry America, 

Inc.'s Amended & Supplemental Responsalto Complainant 

SanOlak Co!poration'. Inlarrogalofiaa (Nca. 1-3,7,14,121-122,124- Infrtngement; remedy; 

CX-l036 C 125) with Exhibits A. Band C 10/2

IAua. 15 2008) , Min, PauU Rhyne Thomas affllTllBU.e dafana •• 

IK88pondan!a Tacnnology,lJI(l. and MIImcry Amanca, 

Inc:. Amended & Supplemental Re8pon ••• to Complainant 

SanOlak CorporaUon'.lntetrogatoriaa (Nos. 1-4.7, 14, 121·122, Infrlnaemenl' remedY 10/2

CX-1037 C 124) wRh exhlblla A Band C (July 28 2008) Min, Paull Rhyne Thomas 

69 
Appen!iixA 

SanDisk Corporatioh's CX-List 

.' W .l -. , ' '" , '·l ... $ " \ 

CX·1038 Withdrawn CX-1D39 Withdrawn 

CX-1040 Withdrawn CX-1041 Withdrawn 

Re8pond.nle Apacer Technology, Inc. and Apacar Memory America, 

Inc.', Reapen ••• to Complainant SanOi.k Ccrporatlon" S8venth Importation; amrmaUve CX·1042 C Sol of IntBlrogatoriea (No. 1211-127) \Aug. 8 2008) Min, PauU Rhyne, Thorn .... defen ••• 11/21

CX-1D43 Withdrawn 

CX-1044 Withdrawn 

CX-1045 Withdrawn 

CX-1046 Withdrawn 

CX-l047 Withdrawn 

CX-1048 Withdrawn 

CX-1049 Withdrawn CX-1050 Withdrawn 

CX-1051 Withdrawn 

CX-1052 Withdrawn 

70 
Appendix A 

SanDisk Corporation's CX-List 

. ,- , . "" ... 

¥ I 

CX·1053 Withdrawn 

eX·l054 Withdrawn 

ex· 1055 Withdrawn 

eX·l056 Withdrawn 

eX·l0S7 Wllhdrawn 

eX·l058 Withdrawn 

eX·l059 Wllhdrawn 

eX·l060 Withdrawn 

eX·l06l Withdrawn eX·l062 Withdrawn CX·l063 Wllhdrawn 

eX·1064 Withdrawn 

eX-l0S5 Withdrawn 

eX·l066 Wllhdrawn 

eX·l0S7 Withdrawn 

71 
Appendix A 

SanDisk Corporation's CX-List 

I 

.. . 

. , .' 1; 

. .

eX-10GB Wllhdrawn 

CX-1069 Withdrawn CX·1070 Withdrawn 

eX-1071 Wilhdrawn eX-1072 Withdrawn 

eX-1073 Withdrawn 

CX-1074 Wllhdrawn 

CX-1075 Withdrawn 

eX-1076 Withdrawn 

eX-1077 Wllhdrawn 

CX-1078 Withdrawn 

Oana-Elea Corp, USA, Dane Memory SA and Deantuulocht DanaCX-1079 C Elea TEO'. Third Supplemental Raspon ... 10 Complainant SanOl.k Corp.'. Flral Sel oIlnterrooatorie. (No, 1-1081 (June 12 20081 Min PauU RhYne Thomas ImDDr!aUon' Infringemenl 1

Dane-Elec Corp, USA, Dana Mamory SA end Oeantuaalochl DanaElea TEO'. Supplemental R .... ponseslo Complainant SanDiBk • 

CX-1080 C Corp.'. Fourth Sel oIlnterrogatorie. (No. 111i (June 12 20081 Min, PauV Rhvne, Thomas Infrinaemant 

mp<H1aUon; 

Dane-Elac Corp. USA, Dane Mamory SA and Daantusalocht Oana- yaHdity; enforceability; Elea TEO'. Relponlal to Complainant SanDl.k Corp.'. Firat Set 01 domeatic Induilly: 

eX-10Bl C Interrogato'; .. (No, 1-1061 (Mar, 10 2008) Min Paull Rhyne Thomas remedy/bondlna 

mport.lUon; 

Oane-Elec Corp, USA, Dan. Memory S.A. and Oeantuaalocht Dana- yalldily; enforceability; 

Elee TEO'. ResponaaBlo Complainant SenOisk Corp.'. Firat Sel of domesUc induslly; 

eX-1082 C tntarrOllato'; .. (No. 1-1081 (Ali. 23, 2008) . Min Paull Rhvne, Thomas remedy/bond ina 

72 
Appendix A 

San Disk Corporation's ex-Ust 

'.:".' ,i·· J 

Oane-Elee Ccxp. USA, Dane Memory SA and Oaantll&lllocht DaneElee TEO's Supplemental Respcnll88 10 Complainant SenOlall 

CX-10B3 C Corp:. Second Set of Inllln"oaalDli.s (No. 107-1091 (Apr. 23 2008) Min PaW Rhjllle Thomss Infrlnoemen • ImooI1alion 10

Oane-clee liOrp. Dana Memory B.A. ana uaenwl8locm uaneElee TEO', Saoond Supplemenlal Reapan_to Complainant 

SenOllk Ccrp.'a Firat Set of lriterrogatories (No. 1-108) (May 14, Infringemenl; ImportaUon; 

eX-1084 C 2008), Min Paull Rhyne, Thomas l1III\8dylbondlng 10

eX·'1085 Withdrawn 

eX·1086 Withdrawn 

eX·10B? Withdrawn 

CX·108B Wltndrawn 

IDane-fl80 Corp. USA, Dane Memory SA. ana uaantuBalocnt uan ... nfringemanl; Importalion; 

Elec TEO'. Fourth Supplemanl8l Responses to Complainant validity; enforceability; 

CX·1069 C 

SanOlall Corp:, Firat Set of Inlerrogatorie. (No. 1-106) (AUg. 4, 

2008\ 

namedyJbondlng; domea\le 

Min Paull Rhyne, Thoma. industry; 11

eX·l090 Wltndrawn 

CX·1091 Withdrawn 

CX-1092 Withdrawn CX·1093 Withdrawn 

CX-1094 C 

Supplement A 10 Dane'. Fourth SUpplemental Raapon ... to 

SanOisk'. Firat Set of tnterrogatotie8 (Aug, 12 2008) Min Paull Rhyne Thomas Infringement 10

CX-1095 Withdrawn 

ex· lOge Withdrawn 

Kesponaen18 I\Ingaton ,ea1OO1Dgy liompany, Inc. I\In081on 

Technology Corporation, M8Il1OIUn, Inc., and Payton Technology 

CorporaUon'. Second Supplemental R ImpcrlaUon; Infringamenl; .. pcn ... 10 Comptalnant 

CX·1097 C SanOllk COIl>Dration'lI Flrsl Sal oflnlenogalorlaa (NOlI. 4-9, 14-15, Min Paull Rhyne Thomas raffiBdylbondlng 

7. 
Appendix A 

SanDisk Corporation's CX-List 

'm . , - , .. "'"' ' . 

KIngIlton vompany, inc. Nngs\On 

Technology Corporation, Third Supplemenlal Reaponl8llo 

Complainant SanOIIk Corporation's Firat Sel of Intarrogalarl"a Importation; eX-109S C Naa.151617 18 81 88 91 93 94 94(g»)(May 9, 2008\ Min, PauV Rhvne. Thoma. remac1y/bondlha 11/5

eX-1099 Withdrawn 

eX·ll00 Withdrawn 

eX·ll0l Withdrawn 

1 .... mc. Nnglton 

Tachnology Corporation, • Faurlh Supplemanlal Reoponsea 10 

Complainant SanOlak Carporation's FIr.! Set at Inlarrogelarlea (N!l8. eX.ll02 C 1.2.3) (Mav 13.2008) Min. Paull RhYne Thoma. ImoortaUan 10/29

IRellpOl\ll8ll1a Nngs on .000no ogy vampany, InO. Nngelon 

Tachnalogy Corporation, e Fifth Supplemental Respon ... to 

Complainant SanOlek Corporation'. FIrat Sel at Inlarrogatarlaa (Nol. CX-l103 C 7l (May 19 2008) Min Paull RhynO, Thorn •• InfringBmant 11/5

eX-1104 Wilhdrawn 

CX-l105 Withdrawn 

% 

eX-ll06 Wfthdrawn 

eX-l1D7 Withdrawn eX·110B Withdrawn 

CX-1109 WKhdrawn 

I 

eX-lll0 Withdrawn 

eX·j1ll Withdrawn 

eX·11l2 Wllhdrawn 

74 
Appendix A 

SanDisk Corporation's ex-List 

. ii', J , . 'Ii ,!.I'< i 

CX·1113 Withdrawn 

eX-1i'14 Wilhdrawn 

eX·111S Wllhdrawn 

eX.lll6 Wlthdfllwn 

eX-1117 Withdrawn 

Respondenla Klngslon Technology Company, Inc" KIngston 

eX·1ll8 C 

Technology Corporation, R •• pa .... 10 Complainanl SanOlak 

CorooraUon'1 Fifth 8et of Interrogatorlel (No. 127) (May 16 2008) Min, Paull Rhyna Thomas Infringement 

CX-1119 Withdrawn , 

eX·1120 Wilhdrawn 

eX-1121 Withdrawn eX.1122 Withdrawn 

eX-ll23 Wllhdrawn 

CX·1124 Withdrawn 

eX·ll25 Withdrawn 

CX-1126 Wllhdrawn 

CX·1127 Withdrawn 

u 
Appendix A 

SanDisk Corporation's CX-List 

" '. I J " <' • & .• .' '. 

CX·1126 WHhdrawn 

CX·1129 e 

8119 aupplemanlal r .. pona.alo SanOllk'. ragg. (Aug. 19. 

Min, PaUli Rhvna, Thorn •• Infllnoament; Impcx1ation 11/21

CX-1130 

Imation'. 8I26aupplemenlal ra.ponae. 10 SanOllk', roggl (Aug. 26, 

e 2006) Min Paull Rhvne Thorn .. Infrlnaement Importation 11/21

CX-1131 Withdrawn CX·1132 Withdrawn 

CX-1133 Withdrawn 

CX·1134 Withdrawn 

R •• pondenlll ImaUon Corp., EnhlrptlH8 Corp., Mamora •• 

mporiation; mmngemem; 

yalidlty; onforoaabllity; 

PlOducla. Inc:. RelPOnao 10 Complainant SanOllk CorporaUon'. domestic Induslly; 

CX·1135 C Firat Set ullnterroaatorlesiNOI. 1-106) (Jan. 7, 2008) Min Paull Rhvne, Thoma. 10/2

IKe.pond.nlll tmation Corp .. lmaUon t:nhlrptlHI '::"'P" Memorex 

Produclll, Inc.'. Firat Supplemantal R.spon .. to Complainant 

SanOlsk CorporaUon', Firat Set oIlnterrogalortaa (Nos. 1-8) (Jan. 

CX-1136 C 29.2006) Min Paull Rhvne Thorn" Infrtngement; Importation 10/2CX-1137 Wlli1drawn 

CX-1136 Withdrawn 

CX-1139 Withdrawn 

ImporiaUon; In 

LaE'. Respon.e. 10 SanOlsk's Firat Sot oItnlarrogatortes (Nos. 1- validity; enforceability; 

106) 10 Re.pondant Flash Memory Producta Companlea (Jan. 7. domestic Indually; 

CX·1140 C 2006) Min. PaUlI Rhvne Thomas ",madv/bondlna 10/2

I"eaponoenlll t:l8clrDn ca, Inc. and LU I:lecU'OOlCS U.S.A., nCI mporlllUon; 

Slxlil Arnendad and Supplemental Responses to Complainant validity; enforceability; 

SanOI.k CorporaUon's Firat Sat ullnterrogalori .. (Nos. 1-106) 10 domeatlc Induslly; lOaS

CX·1141 C R .. Dondan! Flash MemOlV Product CamDanla. Min PauY Rhvno Thomas ",rnadv/bondlna 

LG ElecllOnlcs, Ina. and LG Electronics U.S.A., Inc'. Fourlh 

Supplemental Responses 10 Complainant SanOlak corporaUon·. 

CX-1142 C Second Sat of Intorroaatories (Nos. 107-109) (SoPt. 2 2008) Min Paull Rhvne Them" Importation 10/2

76 
Appendix A 

SanDisk Corporation's CX-List 

. " 

.r- " , I "'Ill. ."''.'' 

l 

L.G ElectronIca, Inc. and L.G Eleclronlca U.S.A., Inc'. Reapon ... Ia 

Complainant SanOlsk CorporaUon'. Third Set of Interrogatories CX-114:3 C No •. 110-117)(APr.18 2008) Min, Paull RhYne Thomas Affirmative defansas l

LG Elttdronlcs, Inc. end LG Electronics U.S.A., Inc's Response and 

CX·1144 C 

Objections to Complainant SanOilik Corporation's Fourth Sat of 

Interrogatories (Nos. 118) (May 16 20011) Min Paull Rhyne, Thomas Infringement 1

LG Elaclronlca, Inc. 'and LG Electronics U.S.A., Inc's First 

CX-1'145 C 

Supplemental Responaaa and Objections Ia Complainant SanOlok 

Corporation's Fifth Set of Interrogalories (Nos. 119) (July 31, 2008) Min. Paull Rhyne. Thomas Infrinilemenl 1

LG Electronica, Inc. and L.G Elttdronlcs U.S.A., Inc's Response and 

CX·1146 C 

Objections to Complainant SanOl1ik CorporatiDn's Fifth Set of 

InterrogatDries (No. 119) (Mav 19 2008i Min Paull Rhyne Thomas Infringement 1

Respondenla LG Electronics, Inc. and LG Elactronlca U.S.A., Inc'. 

Ra.pon .. and Objectionato Complalnsnt SanDIIIk Corporation'. Importation; affirmative 

CX·1147 C Seventh Set of Interrogatories (NOI.,121-122) (Aug. 3 2008) Min, Paull Rhyne Thomaa defense. l

mponauon; Inlrtngamlnt; 

LGE's Flr.t Amended and Supplernenlal Reeponseslo SanOlak's validity; enforceability: 

Firat Sat of tnterrogalarl .. (Noe. 1·108) to Respondent Flash domBstlc Industry: 

CX·1148 C Mamory Products Companies (Mar. 14.2008) Min, Paull Rhvne Thomas remedv/bondlng 1

CX-1149 C 

LGE'o Response. to SanOisk'. Second Set oIlntarrogatories (Nos. 

107.109) (Apr. 14 2008) Min, PauV Rhvne Thomas tnfringement; Importation 1

ImporlauDn; 

LGE's Second Amended and Supplemental Responses Ia SanOlak's vaiidity; enforceability; 

Firat Sat Df Interrogatories (Nos. 1-108) Ia Respondent Flash domestic Industry: 

CX-11S0 C Memory Products Companies (May 10.2008) Min PaUl/ Rhvne, Thomas remedy/bonding 1

mportaUon; 

LGE'. Third Amended and Supplemental Responses to SanOiak's valldKy; enforceability; 

First Sat 01 Interrogatories (Nos. 1.108) to Respondent flash dOlll8sUc industry; 

CX·1151 C Memon'_Products Comjlanles (May 19, 2008) Min, Paull Rhyne, Thomas ramadylbondlng 

LGE'. Supplemental Re.pons •• to SanOlak'. Seoond Set of 

CX·1152 C InterrooalDrie. tNos. 107·101lHMay 19, 2008) Min Paull Rhvne Thomas Infringement; Importation 

LGE's Second Supplemental Reeponses to SanOlek', Second Sat 01 

CX·1153 C Interrogalorie. (Nos. 107-109) (JUly 11 2008\ Min Paull RhYne Thomal Infringement; Importation 

mportauon; Inmngemant; 

LGE', fourth Amended and Supplemental Respon ... to SenDisk's vaUdlty; enforceability; 

Fll1It Set of InterrogalDriea (Nos. 1.108) to R.lpondent Flash domestic Industry; 

CX·1154 C Mem<!ry Products Companies (July 11, 2008) Min Paull Rhyne Thomas remedy/bonding 

LGE'. Responses 10 SanOlsk's Sixth Set oflntarrogator1as (July 11, 

CX-1155 C 2008) Min Paull Rhvne Thomas Affirmative defenses 

mportauon; Infringemenl; 

LGE's Fifth Amended and Supplamenlal Respon .. s Ia SanOlak's validUy; enforceability; 

Firat Set oIlntarrogalDries (Nos. 1-108) to Respondent flash domestic industry; 

CX-1156 

C Memory Products Companies (July 24, 2008) Min Paull Rhyne, Thomas ramedy/bondlnQ 

CX-1157 Withdrawn 

77 
Appendix A 

SanDisk Corporation's CX-List 

·If." " , ' I J "t{. ii l , 

CX-1158 Impol1aUon; .mnmaUV8 C Min, PauV Rh nB, Thomas defenses 11 2

mpcl1auon; ,n 

RalpOl1denl PhilO!) ElaclronlCl Corporation', Re.pon ••• 10 valldKy; enforceability; 

Complalnenl SanOllk'. Firat Selof Interrogatorie. (NoB, 1-111) dorneaUc induBltyi eX-1'159 C Jan, T 2008 Min Paull Rh ne Thomas remed !bondln 102

eX-I leo WHhdrawn 

eX-1l61 Withdrawn 

Re8pondant PhlBDll EIecIronICl Corporauon'. Second Supplemental 

Ra.ponae. 10 Camplslnant SanOI.k's Fll1It Sol oflnt.rragalortaa Importation; Infringemenl; 

eX-1162 C NOB.4 8-10 13 28-27.78,85,99 r, 9, 2008 Min PauV Rh ne, Thoma. remad lbondln 102

eX'1163 Withdrawn 

RelpOl1denl PhlBDll Electronics Corporation'. Fourth Supplemental 

Response. to Complain ani SanOlok'. Fll1It Set oflnterragaloriea 

CX-1164 C Nos, 4 13,2893 June 4, 2008 Min, PauV Rh ne Thorn •• 1m rtaUon' remad /bondln 11 

CX-1165 WKhdrawn 

Respondent PhlllDO Elaclronlc. CorporaUon'. Sixth Supplemental 

Respons •• 10 Complainant $_nOllk', Fil1lt Sel of Interrogalories Remedylbonding; domestic 

eX-1166 C No •• l00-111 Jul 24,2008 Min, PeuV Rh e, Thomas Indus 102

eX-1l6! WHhdrawn 

eX-llBS Withdrawn 

eX-ll69 Withdrawn 

eX-1170 Withdrawn 

eX-1171 Withdrawn 

eX-1172 Withdrawn 

78 
Appendix A 

SanDisk Corporation's CX-List 

• 'Yli ;,\ tf',:f.l ,.','l. 

CX-1173 WIthdrawn CX·1174 Wllhdmwn 

CX-1175 Wllhdrawn 

IReaponM 01 KIIspomlenl8 Power OuollllnllnlemaUOOal CO" LW.; Inmngement; 

Power QuoUent Inlemational (HK) CO., LId.; Sy.com Oev.lopmenl valldlty; anforceBbUIIy; 

Co., Lid.; and POI Corporation's 10 Complalnanl SanOIsk domestic Induslly; 

1012

CX-1176 C Corporation's Fin .. S.I of In\elTDQBlori.a (Nos. 1-106110111& Min PauU Rhyne, Thoma. remody/bondlng CX-1177 WllI1dmwn 

I:;econa ResponH or Respondenls power OUOII8nt 

International Co" Lid.; Power Quotienllntern.tionel (HK) CO., Lid.; 

nmngamenl; 

vetidity; enf""",abNily: 

CX-1176 

SylOOm Development Co., Lid.: end pat Corporation'. to dcm •• llc Indually: C Complainant SanDllk Con><>raDon'. Firat Sal 01 Inlerr"llalori •• lNoa. Min, Paull Rhyne, Thomas remedylbondlng 11/2

I' ntta :iUP ponaa or Respondenla Power QuOUent IlmpotIaUon: 

• InlernaUonai Co" Lid,: Power Quotienllnternationel (HK) CO., Lid.; vaUdlly; enforceabilly; 

Syaoom DevalOPment Co .. Lid.: and PQI Corporation's 10 lndually; 

CX·1179 C SanOlak CorporaUon·. Firat Set of IntarrogalOf1ss (Nos. Min, Paull Rhyne Thoma. remadylbondlng 11/5

01.1l'1li Supplemental K •• pona. 01 Respondents power yuaU.nl mportaUon: 

InlomaUona! Co., Lid,; Power Quotient Inlemational (HK) CO., LId,: valldily; enlorneablllly: 

Syaoom DevelOPmenl Co •• Lid.; and pal CQt\lOration'a 10 dome.Uc Indually; 

Cx.1180 C Complainant SsnOlak CoworaUon's Flrsl 8el of InlerroaaloriealNoB, Min PauV RhYne Thomaa ramedy/bondlng 

CX-1181 WHhdrawn 

!Supplemenla, _niB OJ <.ienaln Haaponaenl Memory 

ProdUct Campanl.a to Complalnenl SanDlIk CorporaUon'. Firat and 

Second S.t ollnlerrogalOf1" (4) 10 lhe Respondenl Flash Memory 

eX-1182 C ProdUcl CompanleHAug. 15 2008) Min PauV Rhyne Thoma. Importation 1ll?

CX-1183 Withdrawn 

CX-1184 WIthdrawn CX-1165 Wllhdrawn 

eX-1186 Wllhdrawn 

!SeCOnd sup,pI_emanlal ReapooH for Reapondenl P0W8r oUOll8nl 

Inlernational Co., Lid.; POWIII' Quotienllnlemational (HK) CO,. Lid.: 

SYlcom Developmenl Co" Lid.; and PQI Corporation's Raaponaa 10 

CX-1187 C Complalnanl SsnOlak Corporation'. Third Sal of Min Paull Rhyne Thomaa Infringement' Imoortallcn l1/

InlelTClgatOl'les 

79 
Appendix A 

SanDisk Corporation's CX-List 

';i,' ,r'" !;. . 1 " .<J,. ,', • "I " :.h'if "fi . ", 

• 

CX·1166 Withdrawn CX-1189 Withdrawn 

CX-1190 Withdrawn 

eX·1191 Withdrawn eX-1192 Withdrawn 

IHHpOIlOenl1 Power QUotIenllntematiOl1I1l Co" Ltd., .. ower <.Iuauent mpartauan; n,"ngemant; 

InlamaUonai (HK) Co., Ltd., Syacom Development Co., Ltd" and PQI validity; enforceability; 

Corporation'. Respon.e 10 Complainant SanDh.1I Corporation'. FIt.t dllfTl88UC Indu.try; 

eX·1193 C Set of RacuaBt. for Admi .. lana iNoo. 1-41) Min PauV Rhyne Thoma. ramedylbondlna 11/21

CX·1194 Withdrawn 

Re.pondents Silicon MoHon's Respon ... and Objection. 10 

11mP,"'l"lIon; IOlnngemenl; 

validity; enforceability; 

Complainant SanDlek', First Set af Intam>gatorles (Noo, 1-111) to domeatle Industry: 

CX-1195 C Respondent Controller Companlas (Jan. 14,2008) . Min, PauV Rhvne Thomas remedy/bonding 10/29

aspendenla Ill11con Mouon lecnnology S",con MoIion, Inc. 

(Taiwan), SU/con Motion, Inc. (Catitomla) and Silicon MoHon 

Inlernational, Inc:. Flral Amended and Supplemental Reapons •• Infringement; ImportaUon; 

CX-1196 C and OblecUons to Complainant SenDI.k First Set of Intarrogatorla. Min Paull Rhyne Thoma. ramedv/bondlna CX·1197 Withdrawn 

K8sponOentslilllcon Moaon 18CMOIogy Corp., lililcon Motion, Inc. 

(Taiwan), Silicon MoUon,lnc. (CaUfami.) and Silicon Motion 

lnlernaUonal, Inc:. Third Amended and SUpplemental Raapon_ 

eX-119S e and Objections to Complainant SanDIBk Firat Set of Interrogatories Min PauV Rhyna Thomas Intrtnaement importation 

eX·1199 Withdrawn 

CX-'1200 Withdrawn 

CX-1201 Withdrawn 

CX·1202 Wllhdrawn 

so 
Appendix A 

SanDisk Corporation's CX-List 

., 1;.) '.. I . ''!iiIl' '" ,." .... , ,. I>< ,t 

I 

CX·1203 Withdrawn 

mponauOI1: lidringemant: 

Ra.pon ... and ObjllCtions Of Skymadi CorpootUon to Complainant validity: enforceability; 

San011l< Corporation's Fillt Set of Interrogatories (Noe. 1-111) to domestic Industty: 

CX·1204 C Resooodant Conlrollar Companies (Jan. 22 2008i Min Paull Rhyne Thomas remady/bondlno 10/29

CX·1205 Withdrawn CX·1206 Withdrawn 

CX·1207 Withdrawn 

CX·1206 Withdrawn CX·1209 Wllhdrawn CX·1210 Withdrawn 

CX·1211 Withdrawn 

CX·1212 Withdrawn 

Raspondent. Transcend Informalion Inc.'. Fillt Amended & 

CX·1213 C 

Supplamanlal RaaponHl to Complainant Corporation·, 

First Sat of Intarrooalooe.J.Nos. 1·1OQHFeb. 4 2008) Min, Paull Rhyne Thomas Im(ll!llaUon' Inrrifl!lamant 11/2

CX·1214 Withdrawn 

[H.spond.nll Transcend InlormaUon Inc. \._enh. ran&eehd 

Information In. (CsUromia) and Tranacend Information Maryland 

Inc.'. Third Amended and Supplemental Rllponsea 10 Complainant 

CX·1215 C SanOlek CorporaUon', Fillt Sal of Interrooatorie. INOI. 1·3lIAor. 4 Min, Paull RhYne, Thornas Infringement· Importation 10/2

CX·1216 Withdrawn 

IHaspondanli TranSClind tnrormation loc. (TaIWan),. lraoacana 

Inlormatlan In. (California) and T'80808nd Information Maryland 

Inc. 's Amendad and Supplamantal Responses to Complainant 

CX·1217 C SanOi.k CorporaUon'.lnteffillllllort ... (Noe. 1-4 NI. 14·15,24-26 Min Paull Rhyne Thoma. tnfrlngement· importaUon 10/2

81 
Appendix A 

SanDisk Corporation's CX-List 

, 

" 

' ,j' ; .:' 'I. r·' '. f' 

CX·1216 Withdrawn 

CX·12'19 Withdrawn 

CX·1220 Withdrawn CX·1221 Withdrawn 

CX·1222 Withdrawn CX·1223 Wllhdrawn 

CX·1224 Wllhdrawn 

CX·1225 Withdrawn 

CX-1226 Withdrawn 

CX-1227 Withdrawn 

CX·1228 Withdrawn 

CX·1229 Withdrawn 

CX-1230 Wllhdrawn 

CX·1231 Withdrawn 

l!'Iespenoents ranlcand InformaHan nco (TaIWan), TranscenD 

InformaUon Inc. (California), and transcend InformaUen MBtYtand 

Inc.'. Response to Complainant SanDIlk CorporaUon's Seventh Set tmportation; affirmative 11/

CX·1232 C of Interrogatories (Noe. 121).121) (Aug. 8 2008) Min Paull RhYne Thomas defenses 

82 
9:ill4 

CX-1235 

CX-1236 

eX-1237 

CX-1239 

CX-1240 

CX·1241 

eX·1242 Ie 

eX-1243 Ie 

CX-1244 Ie 

eX-1245 Ie 

CX-1246 Ie 

IWlthdrawn 

IWlthdrawn 

Withdrawn 

Withdrawn 

Withdrawn 

IWithdrawn 

Withdrawn 

Withdrawn 

Withdrawn 

Respondent Varbatim Corporation's Respon ... to Complainant 

SanDI"k Corporation'" Firat Sel of Interrogalories (Nos. MOO) (Jan. 

7.2008) 

IRespoildent Verbatim Corporation'aSuppierJlGilIill ResponSiilG 

Complainant SanDlak Corporation', Firat Set of Interrogatories (Nos. 5-10,12,14-15,17, 19,25-26,60-61,83-84,88,90-92,94) (Mar. 

28.2008) 

Re.pondant Verbatim Corporation's Supplemental R •• pon.e. 10 

Complainant SanDl1k Corporation's SeDOnd Sat of Intsrrogatorlaa 

No •. 107-1091 (Au. 14. 200B) 

R.lpondant Verbatim Corporation'. Supplemental R .. pon ... 10 

Complainant SanD11k Corporation'. Third Set of Inl8rrogatorie. 

Nos 110) (May 21,2008) 

Re.pondent Verbatim Corporation', SuppierJlenl8l R .. pon ••• 10 

Complainant SanDlak Corporation'. Fourih Set 0/ Intarrogaloriea 

May 21. 2008) 

Respondent Verbatim corporation's Supplemenlal R .. ponses 10 

Complainant SanOlak Corpotation's Fifth Sal of Inferrogatorl.a (May 

CX-1247 Ie 121,200Jll 

Appendix A 

SanDisk Corporation's CX-List 

10/

mpartauon; 

vaUdny; enforceability; 

domesllo Indually; ",mea !bondln 10/

Importation; Infringement 

Min. Paull Rhvne. Thom.s remody!bondlna 10/

Min. Paull Rhyne. Thom •• Infringement; Imoonallon 10/

Min. Paull Rhvne. Thomas Infilnoement 10

Min. Paull RhYna. Thomas Infrinoament 10

Min. Paull RhYne. Thorllllfl Infringemant ___ 

83 
Appendix A 

SanDisk Corporation's CX-List 

H 1"\ ;1 . " " .\kl" ·l .. " , i' 

Respondent Verbatim Corporation'. Suppfamenlal R88pon8.1 10 

Complainant SanDiaI< Corporallon', Slxlh Set 0( IntllllOgalDrlBl (July CX·1246 C 11 2008) Min Paull RhYne, Thomas AffinnaUve lIolen ••• 10/2

Reapondent VerbeUm CorporaUon', Supplemental Rillpon ... to 

C 

Complainant SanDlak Corporation', Savanlh Set of Interrogatories 

1012

CX·1249 Aug. 5, 2008) Min Paull Rhy".. Thoma. AlfllllJSlivlI de'en ... 

CX-1250 Withdrawn 

CX-1251 Withdrawn 

CX·1252 Withdrawn CX-1253 Wllhdrawn CX-1254 Wllhdrawn 

CX-1255 C 

SMI-ITC-NAT 000011SMI Ship Plan. 01.Q1-2oo7 - 07-3l-2ooS.xIs 

updallld version 01 SMlcon Molion Depo. Ex. 202) SMI·ITC·NAT 00001 Hsiao Scoll lfll!><l.rtaUon 11/

CX·1'256 C 

SMI.JTC-NAT 000011SMI Sample Shlpmenll 01.Q1·2oo7 .07.31. 

200S.xl. (up(lated vendcn 01 Silloco Motion Depo. Ex, 209) SMI·ITC·NAT 00001 Hsiao Scott Importation 11/

SMI·ITC-NAT 00001151011 Demo Klta Shlpmants 01.Q1·2007· 07.31-

CX·1257 C 2008 •• 1. (ujl<latod yoralon 0( Silicon Motion Dapo. e •. 210) 5MI-ITC-NAT 00001 Hllao Soott Importation 11/

CX-1258 Withdrawn CX·1259 Withdrawn 

CX·1260 Wilhdrawn 

CX-1261 Wllhdrawn 

CX-1262 Withdrawn 

1!4 
Appendix A 

SanDisk Corporation's CX-List 

t " I ,"" 

CX-1263 Withdrawn CX-1264 Wilhdrawn 

CX·'1265 Wllhdrawn 

CX-1266 Wnhdrawn CX-1267 Withdrawn 

CX·1266 Wllhdrawn 

CX-1269 Wllhdrawn 

CX-1270 Wilhdrawn 

CX-1271 Withdrawn I 

CX-1272 Withdrawn CX-1273 Withdrawn 

CX·1274 Wllhdrawn CX·1275 Withdrawn 

CX-1276 Wllhdrawn 

CX-1277 WKhdrawn 

85 
Appendix A ITC 337-TA-619 

SanDisk Corporation's CX-List 

", , , " I;'r.\lf " 

I 

86 
Appendix A ITC 331·TA·619 

SanDisk Corporation's CX-List 

' ,." ',? . ' , " /i l' !tii'w,. .', ,.;, 

" 

87 
Appendix A ITC 337-TA-619 

SanDisk Corporation's CX-List 

.' ? • ., 

', .. ,' .. ". - 

 '. .t:1 

-

88 
Appendix A ITC 337.TA·619 

SanDisk Corporation's CX-List 

,." < , .. 

.. '; t- 'i' • , 

...- 'f 

. 

89 
Appendix A ITe 337·TA·619 

SanDisk Corporation's CX-List 

:.jijJl,1l'1 IJ!l ,Ii ,iff 

90 
Appendix A ITC 337·TA·619 

SanDisk Corporation's CX-List 

., ,- "il 

emory Conltoller SpecincaUon IMM)53285-053304 Min Paull Rhvne Thomas Infrlnaement 1012912008 

91 
Appendix A ITC 337·TA·619 

SanDisk Corporation's CX-List 

.. ., ... " .. , , , ,- • '. 'y ,,' .." Yt , 

I 

I 

sh Memorv Controller Oatabook Min PauU Rhvne Thom •• Infrinaement 11/512008 

92 
Appendix A ITC 337-TA-619 

SanDisk Corporation's ex-List 

- ,. 

, ," 'f" ."' •• J "! ii " 

93 
Appendix A ITC 337-TA-619 

SanDisk Corporation's CX-List 

. ' .1, •• :'; .... ".< • .J 1; }j • .. " 

I 

I 

I 

94 
Appendix A Ire 337-TA-619 

SanDisk Corporation's ex-List 

.,,-, , ;:!l' I: r •. , • .", .," •• 1\. ", .. "j" "., .. '-.. " '. 

SO-I-NA T -000046 Waltle Todd Comesllc Industry 1113/2008 

ari SD-l-NA T-000046 Waltze Todd DomesUc Industrv 11/3/2008 

SD-l-NA T -000046 Walll.a Todd Domestic Industry 11/3/2008 

art SO-l-NAT -000046 Waltle Todd DomesUc Industrv 11/3/2006 

SO-l-NA T -000048 Waltze Todd Domestic Industrv 11/3/2008 

hari SO+NAT -000046 Weltzs, Todd Oo"",allc Induatry 11/3/2008 

SO-I-NAT -000048 Waltza Todd Domesllc Industry 11/3/2008 

Chart SD-I·NA T -000046 Weltze Todd Domestic Industry 11/3/200< 

95 
Appendix A ITC 337-TA-619 

SanDisk Corporation's CX-List 

l:t J •• < 

96 
Appendix A ITC 337·TA·619 

SanDisk Corporation's CX-List 

• , " ,', )",r,1I );'"111. " , .. 

Ctive and Dhaae-ou( IMA-000129-000149 Min Paull Rhyne Thomas Importation 11/5/2008 

97 
Appendix A ITC 337.TA·619 

SanDisk Corporation's CX-List 

P\ ;' k- "" Y,l,. . . 

mallon', US Invenlory a. 01 June 18. 2008 IMA-309911-309924 Min PauV Rhvne Thome. Inventory 1112112008 

I 

98 
Appendix A ITC 337·TA-619 

SanDisk Corporation's CX-List 

. ' .. ,,' " I' 

I 

99 
Appendix A ITC 337-TA-619 

SanDisk Corporation's CX-List 

, . 

, ',.f "i'i '. ,. 

; , 

100 
Appendix A ITC 337-TA-619 

SanDisk Corporation's CX·List 

,.- iJl!1:'f)ill"" 

101 
Appendix A ITC 337·TA·619 

SanDisk Corporation's eX·List 

... -.,' 'I I,' ,J,>,." 

' , . .. ' . 

102 
Appendix A ITC 337-TA-619 

SanDisk Corporation's CX·List 

I" ti' 'f'" ""/' ,,', , ','I, ""oilt 

I 

I 

103 
Appendix A ITC 337-TA-619 

SanDisk Corporation's CX-List 

. ' :'k.,.,ffl,;/, "'I ',.,." '" , .' 

104 
Appendix A ITC 337-TA-619 

SanDisk Corporation's ex-List 

." 

, 

, ." 

105 
Appendix A ITC 

SanDisk Corporation's CX-List 

e •• e, ' .. • .. ", 

106 
Appendix A lTC 331-TA-619 

SanDisk Corporation's CX-List 

" ,. "n w " ' " 

,. ,.!' .. ", '}'i 

I 

107 
Appendix A ITe 337-TA-619 

SanDisk Corporation's CX-List 

'. ' ')" 'i .{i 

,L;, 

108 
Appendix A ITC 337.TA·1i19 

SanDisk Corporation's CX-List 

.' - >.'" ••• < 

. , . 

" , . 

I 

109 
Appendix A ITC 337·TA·619 

SanDisk Corporation's CX-List 

'. . , " " _,,&1 

Software U.ars Menual Min Paul Infringement 10129/2008 

110 
Appendix A ITC 337-TA-619 

SanDisk Corporation's CX-List 

;" I, .. .... 

:;(.' I 

27SF161G2M CHIC 002.001787-1833 Rhyne Thomas Infringemanl 10/29/2008 

27UF081G2A SO-I-090916887-932 Rhvne Thomes Infrlnaement 10/29/2008 

27UF081 G2M CHI 00022439-00022488 Thomas Infrinaement 10/29/2008 

Y27UF081G2M CHIC 002.0!l1787·1833 Rhvne Thorn •• Infringtlt1lonl 10/29/2008 

27UFOB2G2A SO-1-o916933-918979 Rhyne Thoma. Infringement 10/29/2008 

Y27UFOB2G2M CHI 00022755-00022807 Rhyne, Thoma. Infringement 10/2912008 

Y27UF084G2M SO-I-091698()'917030 Rhyne Thomas Infringement 10/291200e 

Y27UGOB2G2M PECOO852353-Q0852397 Rhyne Thom •• Infringament 101291200e 

Y27UG084G2M ADA 00393572-00393819 Rhyne, Thome. Infrinaement 10/29/2001 

Y27UG08BG5B PEC00979931-o0979983 Rhyne Thomas Infringoment 1012912001 

111 
Appendix A ITC 337·TA·619 

SanDisk Corporation's CX-List 

1lJ" ' " .' r.., "'JI "', 

Y27UG08SG5M SO·Hl917031-917082 RhYne Thorn •• Infringemanl 10/29.L2008 

" 

Y27UH084G2M CHIC 002.002501·2547 RI1'1'l. Thomas Infrinaamant 10/29/2008 

Y27UH088G2M SO-I-ilOlnI2-OO1nS5 RhYne Thomas Infringement 10/29/2008 

Y27US08121A CHI 00023326-Q0023372 Rhyn. Thomas Infringement 10/29/200S 

Y27US08121 M CHI 00023237-00023281 Rhvne Thomas Infrln"amenl 10/29/2008 

Y27US08581 M CHI 00022487-00022532 RhYns Thomas Infringement 10/29/2008' 

I 

Y27UW088GFM PEC00852027 -00852083 Rhvne Thomas Infrlnaemenl 10/29/2008 

Y27UW08CGFM KTC00209343-0020938S !Rhyna, ThomB. Infringemanl 10/29/2008 

Y27UU08AG5A,HY27UU08AGOA SKY 10975446-10975497 Rhyne, Thoma. Infrinaement 10/29/2008 

Y27UU08AG5M.HY27UU09AGOM KTC00209215-Q0209259 Rhvne Thoma, Infringemenl 10/29/2008 

Y27UVOBAG5M KTC00209260-00209297 Rhyns ThomB. Infringement 10/2912008 

Y27UVOBBGi5lD/FlM CHI 00022910.(J0022954 Rhyne, Thoma. Infrlnoemenl 10/29/2008 

Y27UHOBAGi5/0lM CHI 00022062-00022114 Rhvne, Thomas Infrlngemenl 10/29/2008 

29F04GOBMNB1 PEC00991786-Q0991854 Rhyne Thomas Infrtnaomenl 10/29/2008 

29F08G08CANBI PEC00955749-00955816 Rhvne, Thoma. Infrlngemanl 10/29/2008 

112 
Appendix A ITC 337-TA-619 

SanDisk Corporation's CX·List 

1 " I. • ,.',,", -,- -'"1 . , 

F16GOBFANB1 RhYne Thomas InfMnaemanl 10/2912008 

K9F1208UOA 50-1·1907987-1908030 Rhyne Thomas Infringement 10}29a008 

 K9F1208UOB 50-1-2094364-2094408 RhYna Thomas Infrinoement 10129/2008 

K9F1206UOC 50-1-2094409-2094446 RhYne Thoma. Infnnoamenl 10129/2008 

 K9F1208UOM CHI 00028504.00028537 Rhvno Thomas Infrinoement 10129/2008 

 K9F1G08UOA CHI oo0876S80000an25 Rhyne Thomas Infringement 10/29aOOB 

 K9F1G08UOB 50+2094520-2094555 Rhyne Thomas Infnngemenl 10/29/2008! 

• 

 K9F1G08UOM pal 00007808-00007948 RhYne Thomas Infrlnoement 1012912008 

 K9F2G08UOM 50+2094596-2094834 Rhyne Thomaa Infrlnaement 10129/2008 

 K9F4GOBUOA CHI 00014946-00014668 RhYne Thoma. Infringement 10/29/2008 

l K9F4G08UOM CHI 00028799-00026841 Rhvne Thomas Infringement 10/29/2008 

 t K9F5808UOC PCI 00005916-00005958 RhYne Thomas Infrinoement 10/29/2008 

t K9F5608UOO 50-1-2094704-2094738 Rhvne Thomas Infringement 10/2917008 

t K9F8G08UOM 50-1-2094739-2094792 Rhvne Thomas Infringemenl 10/29/200e 

113 
Appendix A ITC 337-TA-619 

SanDisk Corporation's CX-List 

" '. i ft; ;:,":;;: 

! KBG4G08UOA SKY Rhyne Thomes fntHngemenl 10/29/2006 

t K9G8008UOM AOA 00392013-00392054 RhYne Thomas Infringemant 10/29/200B 

l K9G6G06UOA SKY 00035870-00035714 Rhyne Thoma. Infringement 10/29£100B 

el K9GAG08UOM RhYne Thomas IntHnll6ment 10/2gL200B 

t K9WBG08U1 M pal 00017794-00017656 RhYne Thomas IntHnoament 10/29/200B 

t K9HAG08U1 M SD-I-1907725-1S07767 Rhyne Thomas Inllingament 10129/2008 

el K9HBG08U1A SKY 00036138-00036168 RhYne Thomas Infringement 10/29/2006 

, 

st K9HB008U1M CX487 Rhyna Thomas Infrlngemsnt 10/29/2008 

el KSHCG08U1M CHI RhYna Thomas Infnngamenl 10/29nOO8 

s' K9HCGOBU5M RhYns Thomas Infringemsnt 10/29/2008 

et K9K4G08UOM SD-1-2094864-2094901 Rhyne Thoma. Infongemsnt 10122[2008 

et K9K8G08UOA SO-l-2094952-2095OO1 RhYne Thornas Infrlngemenl 10/29/2008 

st K9K8G08UOM SKY 00037769-00037812 Rhyne, Thoma. Infringemsnt 10129/200e 

st K9K8GOaU1A CHI Rhyne, Thomas Infringement 10/29/200B 

et K9K8008U1M CHI 00028799-00026841 Rhyne, Thoma. Inllingsment 10/29/200e 

114 
Appendix A ITC 337·TA-619 

SanDisk Corporation's CX-List 

." " • .. ,v ., I, ' " '." :. " 

 K9KAG08UOM 50-1·0017547-0017614 Rhyne Thomas Infringemenl 10/29/2008 

 K9L8G08UOA USB 00071809-00071853 Rhyne Thomas Infringement 1012912008 

 K9L8G08UOM SO-I-1907725-1oo7767 Rhyne Thomas Infringement 10/29/2008 

 K9LAG08UOA SKY 00036138-00036186 RhYne Thoma. Infrlnaement 1012912008 

t K9LAG08UOM ADA 00390211-00300258 Rhyne Thomas Inlrlngement 10/29/2008! 

t K9LAG08U1 M ADA 00392013-00392054 Rhyne Thomas Infringement 

t K9LBG08UOM ' CHI 00035578-00035637 Rhvne Thoma. Infringemenl 10/29flOOB 

l K9LBG08U1M KTC00210805-00210860 Rhyne, Thomas Infringement 1012!!L2008 

t K9MBG08U5M SKY 00037769-00037812 Rhvne Thomas Infrinaemenl 10/29/2008 

t K9MOGOeU5M CHI 00035579-00035637 Rhyne Thom •• Infringement 10/29j2008 

el K9NBGOeU5A SO-l-2094952-2095OO1 Rhyne Thoma. Infrlnoement 10/29/2006 

el K9NBGOeU5M PEC00854360-OOS54409 Rhyne, Thom •• Infringemenl 10/29/2008 

el K9KAG08U1M, K9F8G08UOM, 

SO·I·2094739-2094792 Rhyne Thomas Infringement 1012912005 

et K9K2G08ROB SO-1-2094793-2094824 Rhvne Thomas Infringement 10/29/200B 

el K9K2GOSUOM, K9K2G08QOM, 

Infringemenl 10/29/200S 

QOM K9K2G16UOM SO+2094825-2094863 Rhyne Thomas 

115 
Appendix A ITe 337·TA·619 

SanDisk Corporation's CX-List 

 .. . "Pi '" ,> 1 '-" "Ii" 'f. .,' ,'1 

el K9W8GOaU1M, K9K4G08QOM, 

UOM K9K4G16UOM SO-I-2094864-2094901 Rhme Thoma. Infrlnaemenl 10/29/2008 

el K9WAG06U1M K9K8G08UOM 50-1-2094902-2094951 Rhyne Thome. Inrrtngement 10/29/2008 

at K8WAG08U1A, K9K8G08UOA, 

SO-1-2094952-2095OO1 Rhvne Thomas Inlrtngemenl 10/29/2008 

 TC58128FT CHI 00031017-00031049 Rhyne Thomas Infrlngemenl 10/291;1008 

ITC58258AFT PECOO856160-OO858192 Rhyno Thomas Infringoment 10129/2008 

t TC58512FTI SKY 00050327-00050389 Rhyne Thomas Infrlngemenl 10/29/2008 

l TC58DVG02A 1 FToo TAECOOO0110-OOO0153 Rhvna, Thomas infrlnoemant 10/29/2008 

t TC58DVG0481FToo TAECOOOOI64-OOO0198 Rhyne Thomas inlnngement 10/29/2008 

al TC58NVG053AFT05 CHI 00031611-00031642 Rhyne Thomas Inlrlngomenl 

el TC58NVG3Dl DTG50 T AECOOO0270-OO00329 Rhme Thomes Infringement 10/29/2008 

t TH58NVG2D4BTGOO TAECOOO0232-OO00269 Rhyne, Thomas Infrtngement 10/29/2008 

el TH58NVG3D4BTGOO TAECOoo0370-0000429 Rhyne Thomas Inrrtngement 10/29/2008 

et TH58NVG3D4CTGoo T AECOoo0330-OOO0369 Rhyne Thoma. Infrlnaement 1012!1/2008 

st TH58NVG4D4CTGOO TAECoo00430-OO00469 Rhvne Thom.s Infrinoement 10/2912008 

el TH58NVG4D4CTG20 TAECOO00470-00oo534 Rhyne Thoma. Infringement 10/29/200e 

118 
Appendix A ITC 337-TA-619 

SanDisk Corporation's ex-List 

''', '. " .t",j .;1: '!; .... -'" .,"" l. 

TAECoo00535-00oo601 Rhyne Thoma. Infilngamanl 10/29/2008 

TC58NVG304CTGOO USB 00031462-00031526 Rhyne, Thoma. Infringemenl 10/29/2008 

TC58NVG204BTGoo PEC00953171-o0953230 Rhyne Thomal Infrlngemenl 10/29/2008 TC58NVG1048TGoo PEC00953415-00953467 Rhyne Thorn •• Infringemanl 10/29/2006 

6NVG409CTGoo PEC00502039-o0502105 Rhyne Thomas Infrlngemenl 10/29/200B 

 TC58NVG104BFToo SKY 00049638-00049690 RhYne Thorn •• Infl1naement 10/29/2008 

MT29H8G06ACAH1, 

29H32G08GCAH2 SD-I·2269935-2269942 Rhyne Thomas Infrtnaement 10/29/2008 

ls used In Kingston's accused products Chen Ben Infringemenl 10/29/2008 

MT29F2G06AACWP, 

9F8G08FACWP 50+2270024-2270081 Rhvne Thomas Infl1naement 10/2912008 

117 
Appendix A ITC 337·TA·619 

SanDisk Corporation's CX-List 

, '" U· .. ..,. , .. - I '1!!i1(flt1it'll1ll1:st1. ., . 

Bill of Matarials KTC-N-00005 Chen Ban Infringement 11/5/2008 

Bill of Matenals KTC-N-ooooS Chan Ban Infringement 11/Sa008 

Bill of Materials KTC-N-oooOS Chen Ben Inlnnoement 11/5/2008 

11/5/2008 I 

Bill of Matarlels KTc-N-oDOOS Chan Ban Inlrlneemenl 

BIH of Materials KTC-N-00005 Chen Ben Infrlnaement 11/5/200B 

Bill 01 Materials KTC-N-oD005 Chan Ben Infringement 11/5/2008 

18 Lee MY80Ilg Saop Remedy! Bondlna 11/5/2008 

om Olagrande daalgnaUnll Apacer 3O(bX8) 

 4 Chang. Chla Kun All 11/5/2008 

r oroduct Chana deDO ax. 19 AP-ITC 0213919-0213920 Chang. Chi. Kun Infringement· Importation 

agement Va •• 0.9 SKY 00006154-00006223 Chana. CY I RhYne Thomas Infringement 10/2912008 

118 
Appendix A ITC 337.TA·61!1 

SanDisk Corporation's CX·List 

l1' , ,.,.' .f: 

" ,., ". <. ,1: 

a page from ImaUon web .Ue INDrlhfillld 

Northfiold Thomas A InhingemonV Impar1allon 11/5/2008 

veldrivea & Thumbdrlves Products from 

d Oop. e •• 6) Northfield Thotnaa A InfringemenV Impar1alion 11/5/2008 

• US B2C lNorthfield Oep. ex. 81 IMA.ooo129 Northfield Thomas A Infrinaement 1l/5a008 

I I 

80 with 29-7342 for 1GB Compact Flash 

0088G5M) [Chu Oap. Ex. 91 TSC-ITC 0008578-0006579 Chu Ray Infrlngament 11/5/2008 

80 with 29-7342 for 1GB Compacl Flash 

8UOA. K9K8G08UOM} [Chu Oep. e •. 101 TSC-ITC oo0858().OQ06581 Chu Ray Infringoment 11/5/2008 

133 with 29-7520 for 8GB Compact Flash 

O"ll. E •• 111 TSC-ITC 0029216-0029217 Chu Rav Inhingement 1l/5L2008 

10 wUh 2B-6S00 for 1GB JelFlo.h (3.3V, 

 TSC-ITC 0003596-0003597 Chu Rav Infringement 11/5/2008 

S034E-M with 29-7510 for 16GII 

C) IChu OeD. E •. 18} TSC.JTC 0346338-0348340 Chu Ray Infrlnliement 11{5/2008 

M40V.S with 29·7640 for 8GB 40Plnl 

Gx8) [Chu Dep. Ex. 191 TSC-ITC 0346106-0346107 Chu Ray Inlringement 11/5/200e 

 SanDlsk Flnanciallnformalion and 

50-1·3265951-3286126 Wallze Todd Remedy; Confidential 11/3/2001 

119 
Appendix A lTC 337-TA..ollJ 

SanDisk Corporation's CX-List 

, J. "', . ,',' fo,. f!'fi/J" 

' :; 

l Audio Play ... , AnalYII. arnl Pra •• nIaUon, 

501·1·3286314·3266328 Waltz. Todd Remecly; Confldenllal 11/3/2008 

120 
Appendix A lTC 337-TA-619 

SanDisk Corporation's CX·List 

, ,." ',. : .;,., 'l'-; ". fj1!J.ti 

Rhyne Thomas Ooll1ttsllc InduIUV 10129/2008 

al handwrillna IYana OeD. Ex. 2071 Vano. JV Infringement 10/2912008 

D. Ex. 111 Kao Pluto InfringomanU Imaartalion 11/5/2008 

M8R101y Card Control .... data .hast {Cheng 

SKV 20002827-20002851 Chana. Vincent InrrtnaemenV Imoortalian 1012912008 

 210 Rhvne Thomas InfrinaemenU Imoortallon 10/29/20Q8 

121 
Appendix A ITC 337-TA-&19 

SanDisk Corporation's CX·List 

Memory Card Ccnl1oll., data sheat (Cheng 

ISKY20002675-20002899 Chena. Vincent InfrinaemenV Importation 10/2912008 

n [Chena OeD. EX.1fi41 SKY 200026011-20002603 Chena. Vincent InfringemenV Importation 10/29/2008 

lsk and ImeUon to: enervaUon Infrinoemenl 10/29/2008 

ation Pocket wllh ImaUonLock Min. Paul Infrinaement 10/2912008 

aUon Swivel and Drive Manaoer Min. Paul Infrinaement 10/29/2008 

122. 
,:o-"":Mrr...eID«:I, ... ". 

on Pivot and Encryption Manager 

on Traveldnv. Bnd Pol1able Vaull 

er Quick Star! Guide 

on Mini Tiaveldrive end U3 

Secur.TD 

Di.k Cruur Micro 

emental Respon ... and Objections to 

ntalTOgIIlortes 

Appendix A ITC 337-TA·619 

SanDisk Corporation's CX-List 

.mfP;'!i 

Min. Paul InfriOOemont lQ/29/2008 

Min. Paul Infringement 10/29,-200B 

Min. Paul Infringement 10/29/2008 

Min. Paul Infringement 10/29/2008 

Min. Paul Infringement 10/29/2008 

Min. Paul Infringsment 10/29/2008 

Min. Paull \II1rrtngernenv Imporlation 11/21/2008 

123 
Appendix A ITC 337-TA-619 

SanDisk Corporation's CX-List 

_,' n! I ; 

pplemenlal ra.ponses to SanDlsk importalionllnfrtngemenVrem 

115-116 and 118 dated October 9 2008 adv 11/21/2008 

menlel respon.a. to SanDlsk Impor1atlonllnfrlngemenVrem 

121-122 and 124 datad Octobar 9 2008 adv 

-----

124 
Appendix A ITC 337·TA·619 

SanDisk Corporation's CPX-List 

;!,' <-

. 

125 
Appendix A ITC 331·TA·619 

SanDisk Corporation's CPX-List 

!'l' . "i \ 

, 

126 
Appendix A fTC 337·TA·619 

SanDisk Corporation's CPX·List 

Ri'· ' J\Pllll'l'f.:!l'fr,t 

-

Min. Paull Rhvna Thom .. Infringement Ilmportalion 10/29/2008 

8GB Min PauV Rlwne. Thome. Infringement 11mportaUon 10/29/2008 

rive USB 2,0 (32509353)512 MB Min. Paull RhYne Thomas Infringemant Ilmportalion 10/2912008 

CL 6GB Min Paull Rhyne. Thomas Infringement Ilml1ortation 10/2912008 

127 
Appendix A ITC 337·TA-619 

SanDisk Corporation's CPX-List 

.,.- l1li . "i" ""', 

" 

Min. Paull RhYne Thoma. Infringemenl/lmDortetion 10129/2008 

10/29/2008 

Min PauV RhYna, Thoma. Inrrin.emanl/lmportaUon 10129/2008 

Min Paull Rhvne, Thoma. In!rin.ement Ilmaortation 10129/2008 

Min Paull Rhvne Thomas In!ringemsnl 1 Importation 10/2illOO8 

10B Min, Paull Rmna Thomas Inrrinaamanl I ImponaUon 

128 
Appendix A ITC 337·TA·619 

SanDisk CPX-Ust 

129 
Appendix A ITe 337· TA-619 

SanDisk Corporation's CPX·List 

130 
Appendix A ITC 337· TA·619 

SanDisk Corporation's CPX-List 

" 

131 
Appendix A ITC 33'7-TA-619 

SanDisk Corporation's CPX-List 

; .• ,'.<' 

, ' t : il)j , n,' I ",ilcy, I; 

132 
Appendix A rrc 337-TA·619 

SanDisk Corporation's CPX-List 

f, ,/l' ": 

133 
Appendix A ITC 337·TA·619 

SanDisk Corporation's CPX-List 

134 
Appendix A ITC 337·TA·619 

SanDisk Corporation's CDX-List 

.,n1fi .' 

lI Rhyne, Thomas Infringement 10/29/2008 

Rhyna Thom.s Infringement 10/29/2008 

Elaht Pagel par Block Rhyna Thome. In1iinaement 10/29/2008 

RhYne Thomas Inflinaemenl 10/29/2008 

Updating RhYne Thoma. Infrinoement 10/29/2008 

Updating Rhyne, Thoma. Infringement 10129/200S1 

Updaling Rhyne Thoma. Inlrlngamanl 10/29/200S 

Updating Rhyne Thomas Infrinaement 101291200S 

ardles. of Ptane Rhyne Thome. In1iingement 10129/2008 

e Regerdle •• of Plans Rhyns Thomas In1iingement 10/29/2008 

e Regardl ••• of Plane Rhyne, Thomaa Infringement 10/29/2008 e R80ardla •• of Plana Rhyne Thomas In1iinoemanl 10/29/2008 

es R80erdless of Planes Rhyne, Thomas Infrlng.ment 10/2912008 es Regerdle.s of Ptane. Rhyne Thoma. In1iinoemenl 10/29/2008 

ages Regardless of Planes 

RtljIne Thomas In1iinaement 10/29/2008 

10/2912008 

135 
Appendix A ITC 337·TA·619 

SanDisk Corporation's CDX-List 

- -- -

. 

10 29 2008 

10 29 2008 

10 29 2008 

10 29 2008 

10 29 2008 

1029 2008 

I 

iagram 

Min Paul Infri ement 10292008 

iagram 

Min. Paul Infringement . ___ ... 10/29/20Qll 

136 
Appendix A ITC337-TA-619 

SanDisk Corporation's CDX-List 

... iW,;:; ,;;" ... -·c - f r: I;; T Tji: lii.r.' 

iagram 

Min. Paul Infri oment 10292008 

Micro 

Min Paul Dome sUe InduB 10292008 

137 
Appendix A 337·TA·619 

SanDisk Corporation's CRX List 

T ' ',/j 1_, '/ " . i !,y," 

SO·I·3265951·3266126 

presentation, dated February 25, 

Hausman Jerrv Affirmative Defenses llL4L2008 

nsight: Consumer Removable 

ompetitive Landscape 2007 SD-I·3270846-3210868 Hausman Jerrv Affirmative Defenses 11/4/2008 

e and Federal Trade Commission, 

or the Licensing of Inlellectual 11/4/2008 

5 Hausman Jerry Affirmative Defenses 
Appendix A 337-T .<\-619 

SanDisk Corporation's CRX List 

" ,,' " " . , : 41't;;l 

 Amended Exhibit 99 Hausman Jerry Affirmative Defenses 10/31/2008 

 Amended Exhibit 101 Hausman Jerry Affirmative Defenses 10/31/2008 

nd CreaUon Through InnovaUon. 80-1-1265724-1265900 

y. February 26. 2007 [Harari Dep. 

Harari Eli Affirmative Defenses 11/21/2008 

KTC 00562924-00562931 

icense Program. October 24, 2007 

041 Merhrotra Sanhav Affirmative Defenses 11/5/2008 

I 

8D-I-1265924-1265943 

stor Program, Dec. 4. 2007 [Mehrotra 

11121/2008 

Hausman Jerry Affirmative Defenses 
Appendix A 

SanDisk Corporation's CRX List 

'11"\'11" .> >" .". . " 

CRX-0031 Withdrawn 

CRX-0032 Withdrawn 

CRX-0033 Withdrawn 

CRX-0034 Withdrawn CRX-0035 Withdrawn CRX-0036 Withdrawn CRX-0037 Withdrawn 

CRX-OO:,8 Withdrawn 

CRX-0039 Withdrawn 

CRX-0040 Withdrawn CRX-0041 Withdrawn 

CRX-0042 Withdrawn 

CRX-0043 Withdrawn 

CRX-0044 Patent Familv Reoort for U.S. Patent No.6 763 424 Thomason Earie Affirmative Defenses 

CRX-0045 Withdrawn 
Appendix A 

SanDisk Corporation's CRX List 

, • , , ,,' ; "" 

, " ,. 

CRX-0046 Withdrawn 

CRX-0047 Withdrawn 

English translation of the Taiwanese counterpart to the 

CRX-0048 C '424 Datent Hausman Jerrv Affirmative Defenses 

CRX-0049 Withdrawn 

CRX-0050 Withdrawn CRX-005'\ Withdrawn 

CRX-0052 Withdrawn 

SD-I-0081413-0081452 

US Flash Card and UFO Market Shares -15 Month Hausman, Jerry/Harari, 

CRX-0053 C Period Endina with Mav 2007 Eli Affirmative Defenses 

CRX-0054 Withdrawn 

CRX-0055 Withdrawn 

SD-I·0098040"()098041 

San Ultra II CompactFlash Cards Win Prestigious 

CRX-0056 Diaitallmaging Award for Speed and Performance Conlev, Kevin Validitv 

50-'-0098042-0098043 

San Disk Cruzer Titanium Wins Two Editors' Choice Min, Paull Rhyne, 

CRX-0057 Awards Thomas/Haran Eli Validity CRX-0058 Withdrawn 

CRX-0059 Withdrawn 

SO-I-0098072 

Min, Paull Rhyne, 

CRX-0060 Accolades 

- Awards for 2003 Thomas/Haran, Ell .. Validity 
Appendix A 

SanDisk Corporation's CRX List 

"'w .. ,"" ," j;,;;,.

.. , .... :\ Y' 1 

CRX-0061 Withdrawn 

CRX-0062 Withdrawn 

CRX-0063 Withdrawn 

CRX-0064 WlIhdrawn 

CRX-0065 Withdrawn 

CRX-0066 Withdrawn CRX-0067 Withdrawn 

CRX-0068 Withdrawn 

CRX-0069 Withdrawn 

CRX-0070 Withdrawn 

CRX-0071 Withdrawn 

CRX-0072 WlIhdrawn CRX-0073 Withdrawn 

CRX-0074 Withdrawn 

CRX-0075 Withdrawn 
Appendix A 

SanDisk Corporation's CRX List 

'e •. a, ' . ,I A;. . I.,. 

CRX·OO76 Withdrawn 

CRX.OO77 Withdrawn CRX·OO78 Withdrawn 

CRX·OO79 Withdrawn 

CRX·OO80 Withdrawn 

CRX-0081 Withdrawn 

CRX·OO82 Withdrawn 

CRX·OO83 Withdrawn CRX·OO84 Withdrawn 

CRX·OO85 Withdrawn 

50-1-0916126·0916184 

Min, PauV Rhyne, 

'CRX·0086 C Sales and Revenue figures lEx. I to Min Rebuttal Report Thomas Validitv 

CRX-OOB7 Withdrawn 

CRX·OO88 Withdrawn 

CRX-0089 WlIhdrawn 

CRX·0090 Withdrawn 
Appendix A 

SanDisk Corporation's CRX List 

'f. "" I: • Il ':!f, w , "' "< , • ,. w 

CRX-0091 Withdrawn 

80·1·1348436-1348440 

SanOlsk Cruzer Titanium USB Flash Drive marketing Min, Paull Rhyne, CRX·0092 C brochure lEx. E to Min Rebuttal Reoortl Thomas Validitv 

CRX-0093 Withdrawn 

SO-I·1355468-1355469 

Unlimited Storage that Fits in Your Pocket [Ex. F to Min Min, Paull Rhyne, CRX-0094 C Rebuttal Reoortl Thomas Validitv 

CRX-0095 Withdrawn 

CRX-0096 Withdrawn 

CRX-0097 Withdrawn 

CRX-0098 Withdrawn 

CRX-0099 Withdrawn 

CRX·0100 Withdrawn 

CRX-0101 Withdrawn CRX-0102 Withdrawn 

CRX-0103 Withdrawn 

CRX-Ol04 Withdrawn 

Hynlx Flash Memory HY27UK08BGFM Series Data Sheet (Fan Oep 

CX-0105 Infrinaement, Imoortatlon 

C Ex. 291 SO-I-0917136·0917181 Fan Kan 
Appendix A 

SanDisk Corporation's CRX List 

:.l! y;.' . .'f· " ., ':IC, ':ijf 'ft.":.i¥. .: r. " 

CRX-0106 Withdrawn 

CRX-0107 Withdrawn 

CRX-0106 Withdrawn 

CRX-01()9 Withdrawn 

CRX-0110 Withdrawn CRX-0111 Withdrawn 

CRX-0112 Withdrawn 

CRX-0113 Withdrawn 

CRX-0114 Withdrawn 

Press Release: SanOisk Takes Security to a New level SO·I·2036418-2036419 

with Powerful Encryption Software for Its Cruzer USB Min. Paull Rhyne, 

CRX-0115 Flash Drives dated September 27 2004 rEx. C to Min Thomas/Harari Eli Validily_ CRX-0116 Withdrawn CRX-0117 Withdrawn 

E·mail from Ken Castle re Press Release dated SO·I·2347 462-2347 464 

September 19, 2005 re SanDlsk to Ship Units of Its First Min. Paull Rhyne. 

CRX-0118 C 

"U3 Smart" Flash Drive That Creates a Portable Secure Thomas Validity 

CRX-0119 Withdrawn 

CRX-0120 Withdrawn 
Appendix A 

SanDlsk Corporation's CRX List 

" ",'.",', • c-:' , .. L> 

CRX-0121 Withdrawn 

CRX-0122 Withdrawn 

CRX·0123 Withdrawn 

CRX-0124 Withdrawn 

CRX-0125 Withdrawn 

CRX·0126 Withdrawn 

CRX·0127 Withdrawn 

CRX-0128 Withdrawn CRX·0129 Withdrawn 

CRX·0130 Withdrawn 

CRX·0131 Withdrawn 

CRX·0132 Withdrawn 

CRX-0133 Withdrawn 

Blaine Flamig, 'SanDisk 2GB Cruzer Titanium USB 

Flash Drive - A U3-Compliant Key Drive with Big Storage 

CRX-0134 & Performance· PC Todav. Vol. 5 Issue 4 (April 2007) Min Paul Validity 

Justin Jaffe, CNET Editor's Review - SanDlsk Cruzer 

TItanium (512MB, Silver), Reviewed June 24,2004, 

CRX-0135 Released Mav 3 2004 IExh. H to Min Rebuttal Report' Min Paul Validitv 
Appendix A 

SanDisk Corporation's CRX Ust 

, , 

. ) ·1'-1;1' ;f;.. .... '< ': - '.' 

CRX-0136 ' Withdrawn 

CRX·0137 Withdrawn 

Press Release: San Disk Wins EISA Award - Named European Memory Card of the Year 2004-2005, dated 

CRX·0136 Auaust 24 2004 SO·I·0098101 Conlev. Kevin Validitv 

CRX-0139 Withdrawn CRX-0140 Withdrawn CRX-0141 Withdrawn 

CRX-0142 Withdrawn CRX-0143 Withdrawn 

SanDisklHynix Patent Cross License Agreement dated Hausman, Jerry J CRX-0144 C March 20 2007 [Chernicoff Oep. Ex. 131 SO·I·2180056-2180076 Partlow Gene Affirmative Defenses 

CRX·0145 Withdrawn 

SanDlskllntel Patent Cross License Agreement dated Hausman. Jerry I CRX-0146 C October 12 1995 80-'-0300353-0300370 Partlow Gene Affirmative Defenses 

CRX-0147 Withdrawn 

CRX-0148 Withdrawn 

CRX·0149 Withdrawn CRX·0150 Withdrawn 
Appendix A 

SanDisk Corporation's CRX List 

> , ii'-.. .' 

SanDisklPNY Limited Patent Cross License Agreement Hausman. Jerry 1 CRX·0151 C dated Januarv 2 2008 rChemicoff Deo. Ex. 151 SD·I·0909137 -0909158 Partlow Gene Affirmative Defenses 

CRX-0152 Withdrawn 

CRX-0153 Withdrawn 

SanDiskiRitek Limited Patent Cross Licensa Agreement Hausman, Jerry I CRX·0154 C dated June 30 2007 SO-I-0300372-0300392 Partlow Gene Affirmative Defenses 

SanDiskiSamsung First Amendment to Second Settlement and Patent Cross License Agreement dated Hausman. Jerry 1 CRX-0155 C December 12 2002 SO-I-0300394-0300399 Partlow Gene Affirmative Defenses 

SanOiskiSamsung Second Settlement and Patent Cross Hausman, Jerry 1 CRX-0156 C License Aareement dated Auaust14 2002 SD-I-0300402-0300446 Partlow Gene Affirmative Defenses 

CRX-0157 Withdrawn 

CRX-0158 Withdrawn 

CRX·0159 Withdrawn 

CRX-0160 Withdrawn 

CRX-0161 Withdrawn 

Tech News, ·Sandisk Wins EISA Award-Named 

'European Memory Card Of The Year 2004·2005'," datec 

CRX-0162 Auoust17 2004 SO-I-0098065 Conley. Kevin Vallditv 

CRX-0163 Withdrawn 

CRX-0164 Withdrawn 

CRX-0165 Withdrawn 
Appendix A 

SanDisk Corporation's CRX List 

. 

- "'. " I ' ' .... ::' " .

CRX-0166 Withdrawn 

CRX-0167 Withdrawn 

CRX·0168 Withdrawn 

CRX-0169 Withdrawn 

CRX-0170 Withdrawn 

CRX-0171 Withdrawn 

CRX-0172 Withdrawn 

CRX-0173 Withdrawn 

CRX-0174 Withdrawn 

5anDiskfToshiba Patent Cross License Agreement Hausman, Jerry I CRX-0175 C dated Julv 30 1997 50-1·0300486·0300513 Partlow Gene Affirmative Defenses 

CRX-0176 Withdrawn 

CRX-0177 Withdrawn CRX-0178 Withdrawn 

CRX-0179 Withdrawn CRX-0180 Withdrawn 
Appendix A 

SanDisk Corporation's CRX List 

tw,y 1I . , ' •. "''- " 'If, r :.,,,'lil: 

U.5. Patent No. 4,115,914 50-1·2035537-2035548 

CRX-0181 Rhyne, Thomas/Hararl, Elivhou Affirmative Defenses 

5unDisk Notebook #2 50-1-0068541·0068694 

CRX·0182 C Rhyne, Thomas/Harari, Elivhou Affirmative Defenses CRX·0183 Withdrawn 

CRX-0184 Withdrawn 

NIA 

Rebuttal Witness Statement of Dr. Ell Haran dated Rhyne, ThomaslHararl, 

CRX·0185 C November 6 2006 Elivhou Affirmative Defenses 

CRX-0186 Withdrawn 

Email re SanDisk press release regarding San Disk Sues 50-1-3282850-3282853 

to Enforce Memory System Patents dated Oclober 24, Rhyne, Thomas/Hararl, 

CRX-0187 2007 Elivhou Affirmative Defenses 

5anDisk 10K for the fiscal year ended December 30, 50-1-2266309-2266467 

2007 Rhyne, Thomas/Harari, 

CRX-0188 Elivhou Affirmative Defenses 

CRX-0189 Withdrawn 

Kingston Technology Company, Inc. Company Profile, 

CRX-0190 C April 2 2008 fSun Dep. Ex. 41 Sun David Alirmalive Defenses 

SanDisk/CompaclFlash Association License and 

CRX-0191 C Sublicense Aareemenl 50-1-2261728-2261737 Partlow Gene Affirmative Defenses 

Article: Sun vs. 5un, Seth Lubove, March 20, 2000, [Sun 

CRX-0192 C Dep. Ex. 301 5un David Affirmative Defenses 

Article: Kingston Technology licenses Sun Microsystems 

memory patents; Licensing agreement for products 

CRX-0193 C manufactured 

bv Klnoston for use in hioh-oerformance Sun David Afirmative Defenses 

Article: Kingston Manufactures Silicon Graphics 

Patented Origln-OnyX2 Server Memory, December 30, 

CRX-0194 C 1997 [Sun OeD. Ex. 341 . Sun David Afirmative Defenses 

Article: Kingston announces business unit sale to Delta 

CRX-0195 C Products September 26 1997 [Sun OeD. Ex. 351 5un David Afirmative Defenses 
Appendix A 

SanDisk Corporation's CRX List 

I' "', il, !(i; >- -, 

Screenshots from San Disk website re: About San Disk 

CRX-0196 C Corporation (Sun Deo. Ex. 3n Sun David Afirmalive Defenses 

E-Mail from David Sun to Donald Sun re: Flash Update, 

CRX-0197 C September 7 2007 (Sun Deo. Ex. 461 KTC00460947·00460948 Sun David Afirmative Defenses 

Memo from David Sun to Richard Chernicoff re: card KTC00225086,KTC00562924 

CRX·0198 C license agreement October 26 2007 [Sun Dep. Ex. 581 00562931 Sun David Afirmative Defenses 

CRX-019H Withdrawn 

CRX·0200 Withdrawn 

CRX-0201 Withdrawn 

CRX-0202 Withdrawn 

CRX-0203 Taiwanese Patent 249713 Parsons Gerald Affirmative Defenses 

Taiwan counterpart to '424 (not translated) [Parsons 

CRX-0204 C Dep. Ex. 171 Parsons Gerald Affirmative Defenses 

Jerry Hausman Curriculum Vitae [Hausman Report Ex. 

CRX·0205 C 11 Hausman Jerry Affirmative Defenses CRX·0206 Withdrawn 

CRX-0207 C KinQston Product Roadmao KTC 00292923·00292945 Hausman Jerry Affirmative Defenses CRX-0208 Withdrawn 

CRX-0209 Withdrawn 

CRX-0210 Withdrawn 
Appendix A 

SanDisk Corporation's CRX List 

,;", !'f":' 1.3'1 "' i ';'ii • ;;;g; -, . '·,s .. ": ::, . .. - . • 

CRX-0211 Eurooean Patent 13352394 Thompson Earle Affirmative Defenses CRX-0212 Withdrawn 

CRX-0213 Withdrawn 

-

CRX-0214 Withdrawn 

CRX-0215 Withdrawn 

CRX-0216 Withdrawn CRX-0217 Withdrawn 

CRX-0218 Withdrawn 

CRX-0219 C Rebuttal Witness Statement of Kevin Conley Conley. Kevin Validity 

ValiditylAffirmative 

CRX-0220 C Rebuttal Witness Statement of Dr. Ellyhou Hararl Harar! Eli Defenses CRX-0221 C Rebuttal Witness Statement of Jerrv Hausman Hausman Jeffi' Affirmative Defenses CRX-0222 Withdrawn 

Rebuttal Witness Statement of Dr. Paul S. Min regarding 

CRX-0223 C validity of U.S. Patent 7 137011 Min Paul Validity 

CRX-0224 Withdrawn 

CRX-0225 C Rebuttal Witness Statement of Dr. V. Thomas Rhyne Rhyne Thomas Validity 
Appendix A 

SanDisk Corporation's CRX List 

'k ,<> ::. - " " ,- ,- ; . -: }i"]' 

CRX·0226 C Rebuttal Witness Stetement of Earle E. Thompson ThomDson Earle Affirmative Defenses 

Letter from Thomas Ventrone to Michael Gruenglas et Partlow, 

CRX-0227 C al. daled May 16 2008 re SanDIskl8amsung matler 80+3284962-3264963 Genefrhomllson Earle Affirmative Defenses 

Final Award in 8anOiskl8amsung matter deted Partlow, 

CRX-<J228 C December 31 2003 80-1-3284964-3265005 GenelThompson Earle Affirmative Defenses 

CRX-0229 Withdrawn 

CRX·0230 

_ e/!tant 10a1992 . - Thompsc:m, Earle Affirmative Defenses 
RESPONDENTS' EXHIBIT LIST 

Exhibit No. CBI Description Purpose Sponsoring Witness Admitte

RX-1 WITHDRAWN 

RX-2 WITHDRAWN 

RX-3 WITHDRAWN RX-4 WITHDRAWN RX-5 WITHDRAWN 

RX-6 WITHDRAWN RX-7 WITHDRAWN RX-8 WITHDRAWN 

RX-9 WITHDRAWN 

RX-1O WITHDRAWN 

RX-11 WITHDRAWN RX-12 WITHDRAWN 

RX-13 WITHDRAWN 

RX-14 WITHDRAWN RX-15 WITHDRAWN RX-16 WITHDRAWN RX-17 WITHDRAWN RX-18 WITHDRAWN RX-19 WITHDRAWN RX-20 WITHDRAWN 

RX-21 WITHDRAWN 

RX-22 WITHDRAWN RX-23 WITHDRAWN RX-24 WITHDRAWN RX-25 WITHDRAWN RX-26 WITHDRAWN 

RX-27 WITHDRAWN 

RX-28 WITHDRAWN RX-29 WITHDRAWN RX-30 WITHDRAWN RX-31 WITHDRAWN RX-32 WITHDRAWN RX-33 WITHDRAWN 

RX-34 WITHDRAWN RX-35 WITHDRAWN RX-36 WITHDRAWN 

RX-37 WITHDRAWN RX-38 WITHDRAWN RX-39 WITHDRAWN I 

Page 1 of 43 
RESPONDENTS' EXHIBIT LIST 

Exhibit No. CBI Description Purpose Sponsoring Witness Admitte

RX-40 WITHDRAWN RX-41 WITHDRAWN 

RX-42 WITHDRAWN 

RX-43 WITHDRAWN 

RX-44 WITHDRAWN RX-45 WITHDRAWN RX-46 WITHDRAWN 

RX-47 WITHDRAWN RX-48 WITHDRAWN RX-49 WITHDRAWN 

RX-50 WITHDRAWN 

RX-51 WITHDRAWN RX-52 WITHDRAWN RX-53 WITHDRAWN 

RX-54 WITHDRAWN RX-55 WITHDRAWN 

RX-56 WITHDRAWN RX-57 WITHDRAWN 

RX-58 WITHDRAWN 

RX-59 WITHDRAWN RX·60 WITHDRAWN RX-61 WITHDRAWN 

RX·62 WITHDRAWN 

RX-63 WITHDRAWN RX-64 WITHDRAWN RX-65 WITHDRAWN RX-66 WITHDRAWN RX-67 WITHDRAWN 

RX-68 WITHDRAWN 

RX-69 WITHDRAWN RX·70 WITHDRAWN 

RX-71 WITHDRAWN RX-72 WITHDRAWN 

RX-73 WITHDRAWN RX-74 WITHDRAWN RX-75 WITHDRAWN 

RX-76 WITHDRAWN RX-77 WITHDRAWN RX-78 WITHDRAWN 

Page 2 of 43 
RESPONDENTS' EXHIBIT LIST 

J:vhihit Mn rl:u .. c t:> tAU .. A..J_IU._.

-,,, ................. _v .... V1it: ... .wii-iu,-,t,,; \oJPVi w, u.fiOQQ nUt I tULa

RX-79 WITHDRAWN RX-80 WITHDRAWN 

RX-81 WITHDRAWN RX-82 WITHDRAWN 

RX-83 WITHDRAWN RX-84 WITHDRAWN 

RX-85 WITHDRAWN RX-86 WITHDRAWN 

RX-87 WITHDRAWN RX-88 WITHDRAWN RX-89 WITHDRAWN RX-90 WITHDRAWN 

RX-91 WITHDRAWN RX-92 WITHDRAWN RX-93 WITHDRAWN 

RX-94 WITHDRAWN RX-95 WITHDRAWN 

RX-96 WITHDRAWN 

RX-97 WITHDRAWN RX-98 WITHDRAWN RX-99 WITHDRAWN 

RX-100 WITHDRAWN RX-101 WITHDRAWN RX-102 WITHDRAWN RX-103 WITHDRAWN 

RX-104 WITHDRAWN 

RX-105 WITHDRAWN 

RX-106 WITHDRAWN 

RX-107 . WITHDRAWN 

RX-108 WITHDRAWN RX-109 WITHDRAWN 

RX-110 WITHDRAWN 

RX-111 WITHDRAWN 

RX-112 WITHDRAWN RX-113 WITHDRAWN 

RX-114 WITHDRAWN RX-115 WITHDRAWN 

RX-116 WITHDRAWN 

Page 3 of 43 
RESPONDENTS' EXHIBIT LIST 

FlChihit Nn r.RI n .... .-rint· o c \AI:" '-'-

. _w·_"i-',,· .... I ... itJ...,ww .jtJVI 1""""111 "., l .. nuiDiUgy 

RX-117 Ray Mercer Curriculum Vitae (Exh. 1 to 11/3/200

Mercer Expert Report on Invalidity and 

Unenfirceabllitv) 

RX-118 WITHDRAWN 

RX-119 Dennis G. Abraham et aI., Transaction Invalidity aric! Ray Mercer 11/3/200

Security System (from IBM), IBM Systems Unenforceability 

Journal. June 1991 ("Abraham") (Exh. 3 to 

Mercer Expert Report on Invalidity and 

UnenforceabiliM 

RX-120 Izawa et al.. Digital Still Video Camera Using Invalidity and Ray Mercer 11/3/200

Semiconductor Memory Card. IEEE Unenforceabllfty 

Transactions On Consumer Electronics. vol. 

36. no. 1. February 1990 (Exh. 5 to Mercer 

Expert Report on Invalidity and 

Unenforceability) 

RX-121 p, Harrop, The Electronic Purse. lEE Review Invalidity and Ray Mercer 11/3/200

June 1992 ("Harrop") (Exh. 6 to Mercer Unenforceability 

Expert Report on Invalidity and 

Unenforceability) 

RX-122 Hiro Shogase. The Very Smart Card: A Invalidity and Ray Mercer 11/3/200

Plastic Pocket Bank, IEEE Spectrum Unenforceablllty 

(October 1988) ("Shogase") (Exh. 7 to Mercer 

Expert Report on Invalidity and 

UnenforceabiliM 

RX-123 Patrice Peyret et aI., Smart Cards Provide Invalidity and Ray Mercer 11/3/200

Very High Security And Flexibility In Unenforceability 

Subscribers Management, IEEE Transactions 

on Consumer Electronics, Vol. 36, 

No.3, August 1990 ("Peyret") (Exh. 8 to 

Mercer Expert Report on Invalidity and 

Unenforceablllty) 

RX-124 J.D. Tygar et al .• Dyad: A System For Using Invalidity and Ray Mercer 11/3/20

Physically Secure Coprocessors, IP Unenforceabllity 

Workshop Proceedings. Carnegie Mellon 

University School of Computer Science 

Technical Report CMU-CS-91-140R (May 4, 

1991) ("Tygar") (Exh. 9 to Mercer Expert 

Report on Invalidity 

Page 40f43 
RESPONDENTS' EXHIBIT LIST 

F=vhihit 1\1 n '" ...... -..... _. -_. .,. ;....;;;;;;;. ..... .,jPUIi<ivllllQ VY III I"'::'':' /,\UI I IIllt:

RX-125 Mario J. Maniscalco, Data Encryption, Radio- Invalidity and Ray Mercer 11/3/20

Electronics, Apr. 1988,93-97 ("Maniscalco") Unenforceability 

(Exh. 10 to Mercer Expert Report on Invalidity 

arid UnenforceabiliM 

RX-126 V.M. Cordonnier, Smart Cards: Present And Invalidity and Ray Mercer 11/3/20

Future Applications And Unenforceability 

Techniques, Electronics and Communication 

Engineering Journal (October 1991) 

("Cordonnier") (Exh. 11 to Mercer Expert 

Report on Invalidity and Unenforceability) 

RX-127 S.W. Smith and S. Weingart, Building A High- Invalidity and Ray Mercer 11/3/20

Performance, Programmable Unenforceability 

Secure Coprocessor, Computer Networks 

31:831-860 (1999) ("Smith") (Exhibit 

12) (Exh. 12 to Mercer Expert Report on 

Invalidltv and UnenforceabiliM 

RX-128 Telequip Corporation Introduces The Crypta Invalidity and Ray Mercer 11/3/20

Plus Card, PR Newswire (January 9, Unenforceability 

1995) ("1995 Crypta Plus Press Release") 

(Exh. 12 to Mercer Expert Report on Invalidity 

and Unenforceability) (Exh. 13 to Mercer 

Expert Report on Invalidity and 

Unenforceability 

RX-129 Crypta Plus WI RSA, Business Wire (January Invalidity and Ray Mercer 11/3/20

31,1994) at Unenforceabillty 

http://cypherpunks.venona.com/dateI1994/021 msg0037S.html (,,1994 Crypta Plus 

Press Release") (Exh. 14 to Mercer Expert 

Report on Invalidity and Unenforceability) 

RX-130 U.S. Patent No. 5,623,637 (Exh. 15 to Mercer Invalidity and Ray Mercer 11/3120

Expert Report on Invalidity and Unenforceability 

UnenforceabiliM 

RX-131 WITHDRAWN 

RX-132 WITHDRAWN 

RX-133 WITHDRAWN RX-134 WITHDRAWN 

PageS of 43 
RESPONDENTS' EXHIBIT LIST 

• I .... ::::..:::,. '.':..:'. .... """''''"'i1p't.'''''it I uij:ioSa . -_. vVilr AUlllliit

n 

RX·135 WITHDRAWN RX-136 WITHDRAWN RX-137 WITHDRAWN 

RX-138 WITHDRAWN RX-139 WITHDRAWN RX-140 WITHDRAWN 

RX-141 WITHDRAWN 

RX-142 WITHDRAWN RX-143 WITHDRAWN RX-144 WITHDRAWN 

RX-145 WITHDRAWN RX-146 WITHDRAWN RX-147 WITHDRAWN RX-148 WITHDRAWN 

RX·149 WITHDRAWN 

RX-150 WITHDRAWN RX-151 WITHDRAWN 

RX-152 WITHDRAWN RX-153 WITHDRAWN 

RX-154 WITHDRAWN 

RX·155 WITHDRAWN 

RX·156 WITHDRAWN 

RX-157 WITHDRAWN RX-158 WITHDRAWN 

RX-159 WITHDRAWN 

RX-160 WITHDRAWN 

RX·161 WITHDRAWN 

RX-162 WITHDRAWN RX-163 WITHDRAWN RX-164 WITHDRAWN RX-165 WITHDRAWN RX-166 WITHDRAWN 

RX-167 WITHDRAWN RX·168 WITHDRAWN 

RX-169 WITHDRAWN RX-170 WITHDRAWN 

RX·171 WITHDRAWN 

RX-172 WITHDRAWN RX-173 WITHDRAWN -_. --- ___ . __ --- -... 

Page 6 of 43 
RESPONDENTS' EXHIBIT LIST 

Fxhihit Nn r.RI n",,,,,..rintl,,,n o Co_ .... _ .......... : __ lAIa. A ... __ 

------ --. -.-. -

-, ---_.,;.:' .. _ .. I ..... ip"'...,_ "" 1 .. nUl I IIU.t::I

RX-174 WITHDRAWN 

RX-175 WITHDRAWN 

RX-176 WITHDRAWN RX-177 WITHDRAWN RX-178 WITHDRAWN 

RX-179 WITHDRAWN RX-180 WITHDRAWN RX-181 WITHDRAWN RX-182 WITHDRAWN 

RX-183 WITHDRAWN 

RX-184 WITHDRAWN 

RX-185 WITHDRAWN 

RX-186 WITHDRAWN 

RX-187 WITHDRAWN 

RX-188 WITHDRAWN RX-189 WITHDRAWN 

RX-190 WITHDRAWN RX-191 WITHDRAWN RX-192 WITHDRAWN 

RX-193 WITHDRAWN 

RX-194 WITHDRAWN RX-195 WITHDRAWN RX-196 WITHDRAWN 

RX-197 WITHDRAWN 

RX-198 WITHDRAWN 

RX-199 WITHDRAWN RX-200 WITHDRAWN 

RX-201 WITHDRAWN 

RX-202 WITHDRAWN RX-203 WITHDRAWN 

RX-204 WITHDRAWN 

RX-205 WITHDRAWN RX-206 WITHDRAWN 

RX-207 WITHDRAWN 

RX-208 WITHDRAWN 

RX-209 WITHDRAWN RX-21 0 WITHDRAWN 

RX-211 WITHDRAWN 

RX-212 WITHDRAWN 

Page 7 of 43 
RESPONDENTS' EXHIBIT LIST 

FlChihit IIJ n .... ... 

•• M • *_. --' _ i I uipvoo iNiillt::l:;:; AUIfIIlle

RX-213 WITHDRAWN RX-214 WITHDRAWN 

RX-215 WITHDRAWN 

RX-216 WITHDRAWN 

RX-217 WITHDRAWN 

RX-218 WITHDRAWN 

RX·219 WITHDRAWN 

RX·220 WITHDRAWN RX-221 WITHDRAWN RX-222 WITHDRAWN 

RX-223 WITHDRAWN RX-224 WITHDRAWN RX-225 WITHDRAWN 

RX-226 WITHDRAWN 

RX-227 WITHDRAWN RX-228 WITHDRAWN 

RX-229 WITHDRAWN RX-230 WITHDRAWN RX-231 WITHDRAWN RX·232 WITHDRAWN RX-233 WITHDRAWN RX-234 WITHDRAWN 

RX-23'5 WITHDRAWN 

RX-236 WITHDRAWN 

RX-237 WITHDRAWN 

RX-238 WITHDRAWN RX-239 WITHDRAWN 

RX-240 WITHDRAWN RX-241 WITHDRAWN 

RX-242 WITHDRAWN 

RX-243 WITHDRAWN 

RX-244 WITHDRAWN 

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RX-246 WITHDRAWN 

RX-247 WITHDRAWN 

RX-248 WITHDRAWN 

RX-249 WITHDRAWN RX-250 WITHDRAWN RX-251 WITHDRAWN -

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RESPONDENTS' EXHIBIT LIST 

F"hihit N r.RI ... 

. .. -- --' rurpU5c illY iNitness AOmltteO 

RX-252 WITHDRAWN 

RX-253 WITHDRAWN 

RX-254 WITHDRAWN 

RX-255 WITHDRAWN 

RX-256 WITHDRAWN 

RX-257 WITHDRAWN 

RX-258 WITHDRAWN 

RX-259 WITHDRAWN 

RX-260 WITHDRAWN 

RX-261 WITHDRAWN 

RX-262 WITHDRAWN RX-263 WITHDRAWN 

RX-264 WITHDRAWN 

RX-265 WITHDRAWN RX-266 WITHDRAWN RX-267 WITHDRAWN RX-268 WITHDRAWN 

RX-269 WITHDRAWN 

RX-270 WITHDRAWN RX-271 WITHDRAWN RX-272 WITHDRAWN 

RX-273 WITHDRAWN RX-274 WITHDRAWN RX-275 WITHDRAWN 

RX-276 WITHDRAWN RX-277 WITHDRAWN RX-278 WITHDRAWN 

RX-279 WITHDRAWN RX-280 WITHDRAWN 

RX-281 WITHDRAWN RX-282 WITHDRAWN 

RX-283 WITHDRAWN 

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RX-285 WITHDRAWN 

RX-286 WITHDRAWN 

RX-287 WITHDRAWN RX-288 WITHDRAWN 

RX-289 WITHDRAWN RX-290 WITHDRAWN 

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RESPONDENTS' EXHIBIT LIST 

I::xnlOir 1'110. 1 l.MI 1 L'escnp!:!cn . "vVILIlt:ll:ll:l AUCTlllle

RX-291 WITHDRAWN 

RX-292 WITHDRAWN 

RX-293 WITHDRAWN 

RX-294 WITHDRAWN 

RX-295 WITHDRAWN 

RX-296 WITHDRAWN RX-297 WITHDRAWN 

RX-298 WITHDRAWN 

RX-299 WITHDRAWN 

RX-300 WITHDRAWN RX-301 WITHDRAWN RX-302 WITHDRAWN 

RX-303 WITHDRAWN 

RX-304 WITHDRAWN 

RX-305 WITHDRAWN RX-306 WITHDRAWN 

RX-307 WITHDRAWN 

RX-308 WITHDRAWN RX-309 WITHDRAWN 

RX-31 0 WITHDRAWN RX-311 WITHDRAWN 

RX-312 WITHDRAWN 

RX-313 WITHDRAWN RX-314 WITHDRAWN RX-315 WITHDRAWN 

RX-316 WITHDRAWN RX-317 WITHDRAWN RX-318 C Direct Witness Statement of Rav Mercer Invalidity Rav Mercer 11/3/20

RX-319 WITHDRAWN RX-320 WITHDRAWN 

RX-321 WITHDRAWN RX-322 WITHDRAWN RX-323 WITHDRAWN 

RX-324 WITHDRAWN 

RX-325 WITHDRAWN 

RX-326 WITHDRAWN 

RX-327 WITHDRAWN RX·328 WITHDRAWN 

RX·329 WITHDRAWN 

Page 10 of 43 
RESPONDENTS' EXHIBIT LIST 

Exhibit No I r.RI I Deecr!pt!on I PUiP056 . 3pvi"t;,vl 'vViillt:l::;::; Admitted 

RX-330 WITHDRAWN 

RX-331 WITHDRAWN RX-332 WITHDRAWN 

RX-333 WITHDRAWN RX-334 WITHDRAWN 

RX-335 WITHDRAWN RX-336 WITHDRAWN 

RX-337 WITHDRAWN 

RX-338 WITHDRAWN 

RX-339 WITHDRAWN RX-340 WITHDRAWN RX-341 WITHDRAWN 

RX-342 WITHDRAWN RX-343 WITHDRAWN RX-344 WITHDRAWN 

RX-345 WITHDRAWN RX-346 WITHDRAWN 

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RX-350 WITHDRAWN RX-351 WITHDRAWN 

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RX-355 WITHDRAWN 

RX-356 WITHDRAWN 

RX-357 WITHDRAWN 

RX-358 WITHDRAWN RX-359 WITHDRAWN RX-360 WITHDRAWN RX-361 WITHDRAWN 

RX-362 WITHDRAWN RX-363 WITHDRAWN RX-364 WITHDRAWN 

RX-365 WITHDRAWN RX-366 WITHDRAWN 

RX-367 WITHDRAWN RX-368 WITHDRAWN 

Page 11 of 43 
RESPONDENTS' EXHIBIT LIST 

t::xmOIT NO I I I rUipOS6 illY Acmmea 

RX-369 WITHDRAWN RX-37 0 WITHDRAWN 

RX-371 WITHDRAWN RX-372 WITHDRAWN RX-373 WITHDRAWN RX-374 WITHDRAWN RX-375 WITHDRAWN RX-376 WITHDRAWN 

RX-377 WITHDRAWN RX-378 WITHDRAWN 

RX-379 WITHDRAWN 

RX-380 WITHDRAWN 

RX-381 WITHDRAWN RX-382 WITHDRAWN RX-383 WITHDRAWN RX-384 WITHDRAWN 

RX-385 WITHDRAWN 

RX-386 WITHDRAWN RX-387 WITHDRAWN 

RX-388 WITHDRAWN 

RX-389 WITHDRAWN RX-390 WITHDRAWN RX-391 WITHDRAWN RX-392 WITHDRAWN RX-393 WITHDRAWN 

RX-394 WITHDRAWN 

RX-395 WITHDRAWN RX-396 WITHDRAWN 

RX-397 WITHDRAWN RX-398 WITHDRAWN 

RX-399 WITHDRAWN 

RX-400 WITHDRAWN RX-401 WITHDRAWN RX-402 WITHDRAWN RX-403 WITHDRAWN RX-404 WITHDRAWN 

RX-405 WITHDRAWN RX-406 WITHDRAWN RX-407 WITHDRAWN 

Page 12 of 43 
RESPONDENTS' EXHIBIT LIST 

Exhibit No CRI nAc:rrinti o C' _ .. _- -- -- ---_. _._ .. f ,,;poii50ilng Vv'iii'I"'::'::' AUllIIlltlQ 

RX-408 WITHDRAWN 

RX-409 WITHDRAWN 

RX-41 0 WITHDRAWN 

RX-411 WITHDRAWN RX-412 WITHDRAWN RX-413 WITHDRAWN 

RX-414 WITHDRAWN RX-415 WITHDRAWN 

RX-416 WITHDRAWN 

RX-417 WITHDRAWN 

RX-418 WITHDRAWN 

RX-419 WITHDRAWN RX-420 WITHDRAWN 

RX-421 WITHDRAWN RX-422 WITHDRAWN 

RX-423 WITHDRAWN 

RX-424 WITHDRAWN 

RX-425 WITHDRAWN RX-426 WITHDRAWN RX-427 WITHDRAWN RX-428 WITHDRAWN 

RX-429 WITHDRAWN 

RX-430 WITHDRAWN 

RX-431 WITHDRAWN 

RX-432 WITHDRAWN RX-433 WITHDRAWN RX-434 WITHDRAWN 

RX-435 WITHDRAWN RX-436 WITHDRAWN 

RX-437 WITHDRAWN RX-438 C 10/12/1995 - Cross-License Agreement Express or implied Daniel Auclair; Richard 11/5/20

Between San Disk and Intel Corporation [Exh. license; Patent Chernicoff; Earle Thompson 

70 to Auclair Depo.; Exh. 11 to Chern/coff misuse 

Depo.] (SD-I-0300352 - SD-I-0300370] 

RX-439 WITHDRAWN 

RX-440 WITHDRAWN RX-441 WITHDRAWN 

RX-442 WITHDRAWN 

Page 13 of 43 
RESPONDENTS' EXHIBIT LIST 

'-AI nUll ".u. . ,".#1., . . '-=;,._: :i-'."'-": I .... rpv.,;,g "';j:iui15ui'iny Wiillt:l:.::; I-\ummea Ii" 

RX-443 WITHDRAWN RX-444 WITHDRAWN RX-445 WITHDRAWN 

RX-446 WITHDRAWN 

RX-447 C 71111998 - Patent Cross License Agreement Express or implied Daniel Auclair; Earle 10131120

Between SanDisk and Silicon Storage license; Patent Thompson 

Technology [Exh. 79 to Auclair Depo .• Exh. misuse 

152 to Thompson Depo.] [SD-I-21 00053 - SO 

1-21000741 

RX-448 C 7/18/2000 - Patent Cross License Agreement Express or implied Daniel Auclair; Earle 10/31/200

Between SanDisk and TDK Corp [Exh. 82 to license; Patent Thompson 11/05/20

Auclair Depo.; Exh. 153 to Thompson Depo.] misuse 

[SD-I-2100075 - SD-I-2100090] 

RX-449 WITHDRAWN RX-450 WITHDRAWN 

RX-451 WITHDRAWN RX-452 WITHDRAWN 

RX-453 WITHDRAWN 

RX-454 WITHDRAWN 

RX-455 1/3/2008 - E-mail from Mr. Ladra to Most of Express or implied Richard Chernicoff 10/29/20

the Other Respondents in the Case, license; Patent 10131/20

Attaching a limited Patent Cross-License misuse 11/05/20

Agreement [Exh. 14 to Chernicoff Depo] 

RX-456 WITHDRAWN 

RX-457 C 7/30/1997 - Patent Cross License Agreement Affirmative Richard Chernicoff; Sanjay 10/31/20

Between San Disk Corp and Toshiba Corp Defenses Mehrotra; Earle Thompson 

[Exh. 8 to Chernicoff Depo.; Exh. 113 to 

Mehrotra Depo.; Exh. 133 to Thompson 

Depo.] [SO-I-0300485 - SD-I-0300513] 

RX-458 WITHDRAWN 

RX-459 5/23/2008 - Letter from Mr. Yoon, Counsel for Express or implied Richard Chernicoff; Gerald 11/5/20

SanDisk. to all Counsel [Exh. 5 to Chernicoff license; Patent Parsons 

Oepo.; Exh. 3 to Parsons Oepo.] misuse 

- .... -

Page 14 of 43 
RESPONDENTS' EXHIBIT LIST 

Exhih r.RI n eecr!pt!on • rurposo Wiiness Aammea 

RX-460 4130/2008 - Respondents Kingston, Witness Richard Chemicoff; Gerald 11/5/200

MemoSun, Payton. and Phison's Notice of Backgroundlldentific Parsons; John Mangan; 

Deposition of Complainant SanDisk ation as corporate Sanjay Mehrotra; Earle 

Corporation [Exh. 2 to Chernicoff Depo.; Exh. representative Thompson; Andy Tomlin; 

2 to Mangan Depo.; Exh. 91 to Mehrotra Kevin Conley 

Depo.; Exh. 121 to Thompson Depo.; Exh. 1 

to Tomlin Depo.; Exh. 1 to Parsons Depo; 

Exh. 3 to Coniev Deoo.1 

RX-461 5/2/2008 - Kingston, Phison's Second Notice Witness Richard Chemicoff; Gerald 11/5/200

of Deposition of Complainant San Disk Backgroundlldentific Parsons; John Mangan; 

Corporation [Exh. 3 to Chemicoff Depo.; Exh. ation as corporate Sanjay Mehrotra; Earle 

2 to Parsons Depo.; Exh. 92 to Mehrotra representative Thompson; Andy Tomlin; 

Depo.; Exh. 122 to Thompson Depo.; Exh. 2 Kevin Conley; Eliyhou Harari 

to Tomlin Depo.; Exh. 4 to Conley Depo.; 

Exh. 2 to Harari Depo.] 

RX-462 C 12/12/2002 - Agreement Between SanDisk Affirmative Richard Chemicoff; Earie 11/5/200

and Sam sung [Exh. 10 to Chemicoff Depo., Defenses Thompson 

Exh. 143 to Thompson Depo.] [SD-I-0300394 

- SD-I-0300400] 

RX-463 C 8114/2002 - Cross-License Agreement Affirmative Richard Chernicoff; Earle 11/5/200

Between SanD lsI( and Samsung Corporation Defenses Thompson 

[Exh. 9 to Chernicoff Oepo.] [SD-I-0300401 -

RX-464 C 11212008 - Limited Patent Cross License Affirmative Richard Chemicoff; Earle 10/311200

Agreement Between SanDlsk and PNY Defenses Thompson; Ellyhou Harari 11/05/20

Technologies, Inc. [Exh. 157 to Thompson 

Oepo.; Exh. 15 to Chernicoff Oepo.; Exh. 21 

to Harari Depo.] [SO-I-0909137 - SD-I09091581 

RX-465 C 1/11/2008 - Patent Cross-License Agreement Affirmative Richard Chernicoff; Earle 10/31/20

Entered Into With Supertron Memory [Exh. 16 Defenses Thompson 

to Chemlcoff Depo.; Exh. 164 to Thompson 

Depo.] [SO-I-1786720 - SD-I-1786741] 

---

Page 15 of 43 
RESPONDENTS' EXHIBIT LIST 

t:XnlnlT NO I '.:1:'1 I Uescnpt!Cn , f'Uijj\:iS6 ;,jpuf,::,ul 1"1:1 Aommeo 

RX-466 C 5/5/2007 - Patent Cross License Agreement Express or implied Richard Chemicoff; Earle 10/31/200

Between Renesas Technology and SanOisk license; Patent Thompson 

[Exh. 151 to Thompson Oepo.; Exh. 12 to misuse 

Chernicoff Oepo.] [50-1-2100152 - 50-1-

21001641 

RX-467 C 212/2000 - E-mail string, top e-mail to 9 Non-infringement Kevin Conley 11/5/200

various individuals from Ed Cuellar [Exh. 1 to 

Conley Oepo.J [50-1-1850372 - 50-1-

18503741 

RX-468 WITHDRAWN RX-469 WITHDRAWN 

RX-470 C 11/17/1997 - Document entitled "Sun Disk Non-infringement; Kevin Conley 11/5/200

SOP-32 MBit 'Mizer' Logical Format Rev 7.3" Lack of domestic 

[Exh. 9 to Conley Oepo.] [50-1-2105944 - 50- Industry 

1-21059751 

RX-471 WITHDRAWN 

RX-472 WITHDRAWN 

RX-473 WITHDRAWN 

RX-474 WITHDRAWN 

RX-475 C 7/30/1998 - E-mail to various individuals from Non-infringement; Kevin Conley 11/5/200

Yoram Cedar [Exh. 18 to Conley Oepo.] [50-1 Invalidity re U.S. 

1859110 - SO-I-1859113} Patent 6,763,424 & 

U.S. Patent 

6426893 

RX-476 WITHDRAWN ., RX-477 WITHDRAWN RX-478 WITHDRAWN RX-479 C 5/20/1996 - SanDisk Proprietary Non-Infringement; Kevin Conley 11/5/200

Memorandum to Carlos G., John M., Steve Invalidity re U.S. 

G., 12 Kevin C., Jeff C. and Sanjay M. from Patent 6,763,424 & 

Dan G. [Exh. 25 to Conley Oepo.] [50-1- U.S. Patent 

1736871 - SO-I-1736880J 6426893 

RX-480 WITHDRAWN RX-481 C 4/1/2003 - from Alan Sinclair to Kevin Non-infringement; Kevin Conley 1115/200

Conley [Exh. 29 to Conley Oepo.] [50-1- Invalidity re U.S. 

1902403 ] Patent 6,763.424 & 

U.S. Patent 

6426893 

- ---

Page 16 of 43 
RESPONDENTS' EXHIBIT LIST 

Exhibit No r. RI I nescr!ptlcn I rUiPOSo; , - S\Julll>ur if 19 vVitness AOmltted 

RX-482 C 2002-2003 - "Adaptive Metablocks" - [Exh. 30 Non-infringement; Kevin Conley 11/5/200

to Conley Depo.] [SD-I-1902420 - SD-I- Invalidity re U.S. 

1902445] Patent 6,763,424 & 

U.S. Patent 

6426893 

RX-483 WITHDRAWN 

RX-484 WITHDRAWN RX-485 WITHDRAWN RX-486 WITHDRAWN 

RX-487 WITHDRAWN RX-488 WITHDRAWN RX-489 WITHDRAWN RX-490 WITHDRAWN 

RX-491 WITHDRAWN RX-492 12/2412007 - Card License Program - Express or implied Harari, Eliyhou 10/29/200

San Disk [Exh. 20 to Haran Depo.] license; Patent 11/05/20

misuse 

RX-493 C 1218/2006 - E-mail string from Eli Haran [Exh. Equitable defenses; Eliyhou Haran 11/5/200

22 to Haran Depo.] [SD-I-3224980 - SD-I- Express or implied 

3224981] license; Patent 

misuse 

RX-494 C 7/1912007 - FD Wire Q2 2007 SanDisk Corp. Equitable defenses; EUyhou Harari 11/5/200

Earnings Conference Call [Exh. 23 to Harari Express or implied 

Depo.] [SD-I-3269823 - SD-I-3269842] license; Patent 

misuse 

RX-495 C 1116/2007 - SanDisk vs STM - Answer to Equitable defenses; Eliyhou Harari 11/5/20

Second Amended Complaint and Express or Implied 

Counterclaims [Exh. 24 to Harari Depo.} (SD-I license; Patent 

3134969 - SD-I-3135009] misuse; Noninfringement; 

Invalidity re U.S. 

Patent 6,763,424 & 

U.S. Patent 

6426893 

RX-496 C 2122/2007 - E-mail string from Eli Harari [Exh. Equitable defenses; Eliyhou Harari 11/5/20

25 to Harari Depo.] [SD-I-3269929] Express or implied 

license; Patent 

misuse 

Page 17 of 43 
RESPONDENTS' EXHIBIT LIST 

Fyhihit No. I CR! I DC::icr:pt:on I Puq:lljl>tI Sponsoring Witness AClmitteC

RX-497 C 8116/2007 - E-mail string from Eli Harari [Exh. Equitable defenses; Eliyhou Harari 11/5/200

28 to Harari Depo.] [SD-I-3213226] Express or implied 

license; Patent 

misuse 

RX-498 C 10/29/2006 - E-mail string from Dov Moran Equitable defenses; Eliyhou Harari 11/5/200

[Exh. 29 to Harari Depo.] [SD-I-3147765 - SO Express or implied 

1-3147766] license; Patent 

misuse 

RX-499 WITHDRAWN 

RX-500 WITHDRAWN 

RX-501 WITHDRAWN RX-502 WITHDRAWN RX-S03 WITHDRAWN 

RX-504 WITHDRAWN 

RX-50S WITHDRAWN 

RX-S06 WITHDRAWN 

RX-507 WITHDRAWN 

RX-508 WITHDRAWN RX-S09 WITHDRAWN 

RX-51 0 WITHDRAWN 

RX-511 WITHDRAWN 

RX-S12 WITHDRAWN RX-S13 WITHDRAWN RX-514 WITHDRAWN 

RX-515 WITHDRAWN 

RX-S16 WITHDRAWN RX-517 WITHDRAWN 

RX-S18 WITHDRAWN RX-S19 WITHDRAWN 

RX-520 WITHDRAWN 

RX-521 WITHDRAWN RX-522 WITHDRAWN RX-S23 WITHDRAWN 

RX-524 WITHDRAWN RX-525 WITHDRAWN RX-526 C 5/27/2008 - Letter to HatsumiIToshiba From Affirmative Sanjay Mehrotra; E. Earle 10/31/20

Thompson/SanDisk [Exh. 105 (corrected Defenses Thompson 

exhibit) to Mehrotra Depo.] [KTC00570665] 

-- '--- -

Page 18 of 43 
RESPONDENTS' EXHIBIT LIST 

Exhibit N r.RI n 

_ esc!"!pt1on I rUiPQSo 3jJUII::'UI illy 'vviilltlljfj Aomlneo 

RX-527 WITHDRAWN 

RX-528 WITHDRAWN 

RX-529 WITHDRAWN RX-530 WITHDRAWN RX-531 WITHDRAWN 

RX-532 WITHDRAWN RX-533 WITHDRAWN 

RX-534 WITHDRAWN RX-535 WITHDRAWN RX-536 WITHDRAWN RX-537 WITHDRAWN 

RX-538 WITHDRAWN 

RX-539 WITHDRAWN 

RX-540 WITHDRAWN 

RX-541 WITHDRAWN 

RX-542 WITHDRAWN 

RX-543 C limited Patent Cross license Agreement Affirmative Sanjay Mehrotra; Gene 10/31/20

[Exh. 95 to Mehrotra Depo.] [SO-I-1258229- Defenses Partlow 1/05/200

SO-I-12582481 

RX-544 WITHDRAWN RX-545 WITHDRAWN RX-546 WITHDRAWN 

RX-547 WITHDRAWN RX-548 C 11/29/2006 - Email - Subject: "Confidential" Express or implied Sanjay Mehrotra 11/5/20

[Exh. 109 to Mehrotra Depo.] [SO-I-3134179J license; Patent 

misuse; Domestic industrY 

RX-549 C 11/14/2000 - Agreement Between San Disk Express or implied Sanjay Mehrotra; Earle 10/31/20

Corp and Lexar Media. Inc. [Exh. 114 to license; Patent Thompson 

Mehrotra Depo.; Exh. 145 to Thompson misuse; Domestic 

Depo.1 rSD-I-21 00091 - SD-I-21000961 Industrv 

RX-550 WITHDRAWN 

RX-551 WITHDRAWN 

RX-552 WITHDRAWN RX-553 WITHDRAWN 

RX-554 WITHDRAWN 

RX-555 WITHDRAWN RX-556 WITHDRAWN 

RX-557 WITHDRAWN 

Page 19 of 43 
RESPONDENTS' EXHIBIT LIST 

Exhibit No I r.RI I Descr!pt!cn I riJijj05c I SjJum;urill!::l'vViiness Admitted 

RX-558 WITHDRAWN RX-559 WITHDRAWN RX-560 WITHDRAWN 

RX-561 WITHDRAWN 

RX-562 WITHDRAWN RX-563 WITHDRAWN 

RX-564 WITHDRAWN RX-565 WITHDRAWN RX-566 WITHDRAWN RX-567 WITHDRAWN 

RX-568 WITHDRAWN 

RX-569 WITHDRAWN RX-570 WITHDRAWN RX-571 WITHDRAWN 

RX-572 WITHDRAWN RX-573 WITHDRAWN RX-574 WITHDRAWN 

RX-575 WITHDRAWN 

RX-576 WITHDRAWN RX-517 WITHDRAWN RX-578 WITHDRAWN RX-579 WITHDRAWN 

RX-580 WITHDRAWN 

RX-581 WITHDRAWN 

RX-582 WITHDRAWN 

RX-583 WITHDRAWN RX-584 WITHDRAWN RX-585 10/13/1998 - U.S. Patent 5.822.781 Invalidity re U.S. Niles Kynett 11/3/20

I[PEC00012238 - PEC000122791 ' Patent 6 763 424 

RX-586 WITHDRAWN 

RX-587 WITHDRAWN 

RX-588 WITHDRAWN 

RX-589 WITHDRAWN RX-590 WITHDRAWN 

RX-591 WITHDRAWN 

RX-592 WITHDRAWN 

RX-593 WITHDRAWN RX-594 WITHDRAWN 

RX-595 WITHDRAWN 

Page 20 of 43 
RESPONDENTS' EXHIBIT LIST 

Exhibit ee! I . Sponsoring \.ivltness Admitte

RX-596 WITHDRAWN RX-597 WITHDRAWN 

RX-59B WITHDRAWN 

RX-599 WITHDRAWN 

RX-600 WITHDRAWN 

RX-601 WITHDRAWN 

RX-602 WITHDRAWN 

RX-603 WITHDRAWN RX-604 WITHDRAWN RX-605 WITHDRAWN 

RX-606 WITHDRAWN RX-607 WITHDRAWN 

RX-60B WITHDRAWN 

RX-609 WITHDRAWN , 

RX-61 0 WITHDRAWN RX-611 WITHDRAWN RX-612 WITHDRAWN 

RX-613 11/16/1999 - U.S. Patent 5,987,563 Invalidity re U.S. Richard Pashley; Niles 11/3/20

[PEC00016051 - PECOO016060] Patent 6,763,424 & Kynett 

U.S. Patent 

6426893 

RX-614 WITHDRAWN 

RX-615 WITHDRAWN RX-616 WITHDRAWN RX-617 WITHDRAWN 

RX-618 WITHDRAWN RX-619 WITHDRAWN 

RX-620 WITHDRAWN RX-621 WITHDRAWN RX-622 4/17/2001 - U.S. Patent 6,219,752 Invalidity re U.S. Niles Kynett 1113/20

irPEC00023199 - PECOOO23222] Patent 6,763 424 

RX-623 WITHDRAWN 

RX-624 WITHDRAWN RX-625 2/17/1998 - U.S. Patent 5,719,808 Invalidity re U.S. Niles Kynett 11/3/20

IrPEC00025159 - PECOOO251741 Patent 6 763,424 

RX-626 WITHDRAWN RX-627 WITHDRAWN RX-628 4/20/2004 - U.S. Patent 6,725,321 Invalidity re U.S. Niles Kynett 11/3/20

rPECOO025B75 - PECOO025914] 6 763 424 

Page 21 of 43 
RESPONDENTS' EXHIBIT LIST 

ExhibitNo. I r.AI I 09scription I rUiPOSCi . 3IJUII::iUI illg Witness Admltte

RX-629 WITHDRAWN 

RX-630 WITHDRAWN RX-631 WITHDRAWN 

RX-632 WITHDRAWN RX-633 WITHDRAWN 

RX-634 WITHDRAWN RX-635 WITHDRAWN RX-636 WITHDRAWN RX-637 WITHDRAWN 

RX-638 WITHDRAWN RX-639 WITHDRAWN 

RX-640 WITHDRAWN 

RX-641 WITHDRAWN RX-642 WITHDRAWN 

RX-643 WITHDRAWN RX-644 WITHDRAWN 

RX-645 WITHDRAWN 

RX-646 WITHDRAWN RX-647 WITHDRAWN RX-648 WITHDRAWN 

RX-649 WITHDRAWN RX-650 WITHDRAWN RX-651 WITHDRAWN 

RX-652 WITHDRAWN 

'RX-653 WITHDRAWN 

RX-654 WITHDRAWN 

RX-655 WITHDRAWN 

RX-656 WITHDRAWN RX-657 WITHDRAWN RX-658 WITHDRAWN RX-659 5/6/1997 - U.S. Patent 5,627,783 Invalidity re U.S. Niles Kynett 11/3/20

IPEC01091 058 - PEC010910811 Patent 6,763 424 

RX-660 WITHDRAWN 

RX-661 WITHDRAWN RX-662 10/28/1997 - U.S. Patent 5,682,499 Invalidity re U.S. Niles Kynett 11/3/20

PEC01091181 - PEC01091196] Patent 6 763,424 

RX-663 WITHDRAWN 

RX-664 WITHDRAWN 

RX-665 WITHDRAWN 

------ ------

-

--

.... 

-

.. 

-----

------

Page 22 of 43 
RESPONDENTS' EXHIBIT LIST 

Exhib It No. I CAl I De!Scr!pt!on I rurposs . 3\-1ull::;ul illY vVii.ness Admmea 

RX-666 WITHDRAWN RX-667 WITHDRAWN 

RX-668 WITHDRAWN RX-669 WITHDRAWN RX-670 WITHDRAWN 

RX-671 WITHDRAWN 

RX-672 WITHDRAWN RX-673 WITHDRAWN RX-674 WITHDRAWN 

RX-675 WITHDRAWN RX-676 WITHDRAWN 

RX-677 WITHDRAWN 

RX-678 WITHDRAWN 

RX-679 WITHDRAWN RX-680 WITHDRAWN RX-681 WITHDRAWN RX-682 WITHDRAWN 

RX-683 9/11/2001 - U.S. Patent 6.288.862 Invalidity re U.S. Niles Kynett 11/3/200

[PEC01091675 - PEC010916861 Patent 6 763 424 

RX-684 WITHDRAWN 

RX-685 WITHDRAWN RX-686 WITHDRAWN 

RX-687 WITHDRAWN RX-688 WITHDRAWN 

RX-689 WITHDRAWN RX-690 WITHDRAWN RX-691 WITHDRAWN RX-692 WITHDRAWN 

RX-693 WITHDRAWN RX-694 WITHDRAWN RX-695 WITHDRAWN 

RX-696 WITHDRAWN RX-697 WITHDRAWN RX-698 WITHDRAWN RX-699 WITHDRAWN 

RX-700 WITHDRAWN 

RX-701 6/24/2003 - U.S. Patent 6.584.579 Invalidity re U.S. Niles Kynett 11/3/20

[PEC01092165 - PEC01092232] Patent 6 763,424 

RX-702 WITHDRAWN 

Page 23 of 43 
RESPONDENTS' EXHIBIT LIST 

F "hi hit No I C8! I I Plii"put.e: . Witness AomltteO 

RX-703 WITHDRAWN RX-704 WITHDRAWN 

RX-705 WITHDRAWN RX-706 WITHDRAWN 

RX-707 WITHDRAWN 

RX-708 WITHDRAWN 

RX-709 WITHDRAWN RX-71 0 WITHDRAWN 

RX-711 WITHDRAWN RX-712 WITHDRAWN RX-713 WITHDRAWN RX-714 WITHDRAWN RX-715 WITHDRAWN 

RX-716 WITHDRAWN RX-717 WITHDRAWN RX-718 WITHDRAWN 

RX-719 WITHDRAWN 

RX-720 WITHDRAWN RX-721 WITHDRAWN 

RX-722 WITHDRAWN 

RX-723 WITHDRAWN RX-724 WITHDRAWN RX-725 WITHDRAWN RX-726 C SanDisk Card License Program - 10/24/2007 Express or implied Earle Thompson 11/5/200

license; Patent 

misuse 

RX-727 WITHDRAWN 

RX-728 C 1/4/2008 - Agreement Between SanDlsk and Express or implied Earle Thompson 10/31/20

Kaser Corp [Exh. 163 to Thompson Depo.] license; Patent 

,{SD-I-0909116 - SD-I-09091361 misuse 

RX-729 WITHDRAWN 

RX-730 WITHDRAWN 

RX-731 WITHDRAWN 

RX-732 WITHDRAWN 

RX-733 WITHDRAWN 

RX-734 WITHDRAWN RX-735 WITHDRAWN 

RX-736 WITHDRAWN 

.. 

------

Page 24 of 43 
RESPONDENTS' EXHIBIT LIST 

Fxhihit Nt) I C8! I I r'urpos.:; . 3\JUlltiUI illY 'v'viiness Aomluea 

RX-737 C 1/8/2008 -limited Patent Cross license Affirmative Earle Thompson 10131/20

Agreement Between SanDisk and TSR Defenses 

Silicon Resources, Inc. [Exh. 158 to 

Thompson Depo.] [SD-I-1786678 - SD-I1786698} 

RX-738 C 1/9/2008 - Limited Patent Cross License Affirmative Earle Thompson 10131/20

Agreement Between SanDisk and Add-On Defenses 

Computer Peripherals, LLC [Exh. 162 to 

Thompson Depo.1 (SD-I-1786699 - SD-I1786719 ] 

RX-739 WITHDRAWN 

RX-740 WITHDRAWN RX-741 WITHDRAWN RX-742 WITHDRAWN 

RX-743 WITHDRAWN RX-744 C 1/17/2008 - Limited Patent Cross License Affirmative Earle Thompson 10/31/20

Agreement Between SanDisk and Interactive Defenses 

Media Corporation [Exh. 160 to Thompson 

Depo.] [SD-I-21 00165 - SD-I-2100185J 

RX-745 C 1/17/2008 -limited Patent Cross license Affirmative Earle Thompson 10/31/20

Agreement Between SanDisk and EDGE Defenses 

Tech Corporation [Exh. 159 to Thompson 

Depo.1 [SD-I-2100186 - SD-I-21 002071 

RX-746 C 1/16/2008 -limited Patent Cross license Affirmative Earle Thompson 10/31/20

Agreement Between San Disk and WeI/done Defenses 

Company [Exh. 161 to Thompson Depo.] [SD1-2100208 - SD-I-21 00228] 

RX-747 WITHDRAWN 

RX-748 WITHDRAWN RX-749 WITHDRAWN RX-750 C 9/10/2004 - "Operating Agreement of Flash Express or Implied Earle Thompson 10/31/20

Partners. ltd. Between Toshiba and license; Patent 

SanDlsk" [Exh. 140 to Thompson Depo.] [SD- misuse 

1-2272121 - SD-I-22721711 

Page 25 of 43 
RESPONOENTS' EXHIBIT LIST 

Nn. I C!3! I , PUfiJu:)\:I Spunsoring 'Witness Admitted 

RX-751 C 9/10/2004 - "Amendment No.3 to Patent Express or Implied Earle Thompson 101311200

Cross License Agreement" [Exh. 138 to License; Patent 

Thompson Oepo.] [50-1-2272300 - 50-1- misuse 

22723021 

RX-752 C 5/9/2000 - "Amendment to Patent Cross Express or Implied Earle Thompson 10131/200

license Agreement" Between SanOisk and License; Patent 

Toshiba [Exh. 134 to Thompson Oepo.] {SO-I- misuse 

2272579 - 50-1-22725851 

RX-753 C 411012002 - "New Master Agreement By and Express or Implied Earle Thompson 10/31/200

Between Toshiba and SanOisk" [Exh. 135 to License; Patent 

Thompson Oepo.] [50-1-2272684 - 50-1- misuse 

22727561 

RX-754 C 4110/2002 - "New Operating Agreement Express or Implied Earle Thompson 10/31/200

Between Toshiba and SanOisk" [Exh. 137 to License; Patent 

Thompson Oepo.] [50-1-2272757 - 50-1- misuse 

22727951 

RX-755 C 4/10/2002 - "Amendment No.2 to Patent Express or Implied Earle Thompson 10/31/200

Cross license Agreement [Exh. 136 to License; Patent 11/05/200

Thompson Oepo.l [50-1-2272908 - 50-1- misuse 22729111 

RX-756 WITHORAWN 

RX-757 WITHORAWN RX-758 C 8/23/2005 - Slide presentation titled Standard Express or Implied Earle Thompson 11/5/200

& Poor's [Exh. 193 to Thompson Depo.] [50-1 License; Patent 

3249844 - 50-1-32499241 misuse 

RX-759 WITHDRAWN RX-760 WITHDRAWN 

RX-761 WITHORAWN 

RX-762 WITHDRAWN RX-763 WITHDRAWN RX-764 WITHDRAWN 

RX-765 WITHDRAWN RX-766 C 11/14/2006 - Correspondence from Jay Shim Express or Implied Earle Thompson 11/41200

(VP - Samsung) to Charles Van Orden license; patent 11/05/20(SanDisk) re negotiations [Exh. 216 to misuse 

Thompson Depo.] [50-1-3148130 - 50-1-

31481311 

Page 26 of 43 
RESPONDENTS' EXHIBIT LIST 

Nc. I eBI I Description . PUliJUl:itl i Sponsoring Witness Admitted 

RX-767 C 11/29/2006 - Email String beginning with - Express or Implied Earle Thompson 11/51200

Subject: "Confidential" [Exh. 217 to license; patent 

Thompson Oepo.] [50-1-3134179 - 50-1- misuse 

31342191 

RX-768 C 1/11/2007 - Correspondence from Jay Shim Express or Implied Earle Thompson 11/51200

(VP - Samsung) to Earle Thompson [Exh. license; patent 

218 to Thompson Oepo.l [50-1-3153816] misuse 

RX-769 C 2/15/2007 - Correspondence from Jay Shim Express or Implied Earle Thompson; Eliyhou 11/5/200

(VP - Samsung) to Earle Thompson [Exh. license; patent· Harari 

219 to Thompson Oepo.; Exh. 26 to Harari misuse 

Oeoo.1 rSO-I-3153815] 

RX-770 C 6/20/2007 - SamSung 1 SanDisk Meeting - Express or Implied Earle Thompson 11/5/200

Seoul [Exh. 220 to Thompson Oepo.J [50-1- license; patent 

3130320 - SO-I-3130337] misuse 

RX-771 C 7/4/2007 - E-mail Correspondence from Jay Express or Implied Earle Thompson 1115/200

Shim attaching SanOisk Proposal [Exh. 221 license; patent 

to Thompson Oepo.] [50-1-3214649 - 50-1- misuse 

3214658] 

RX-772 WITHDRAWN 

RX-773 C 11/14/2007 - E-mail Correspondence from Express or Implied Earle Thompson; Eliyhou 11/51200

Sanjay Mehrotra to Eli Harari attaching license; patent Harari 

Samsung Concerns.pdf and SanOisk misuse 

termsheet.pdf [Exh. 223 to Thompson Oepo.; 

Exh. 27 to Harari Oepo.] [SO-I-3244984 - 50-

1-32449971 

RX-774 WITHDRAWN RX-775 C 9110/2004 - Various License Agreements Express or Implied Earle Thompson; Richard 10/31/20

Entered Into Between Toshiba and San Disk license; patent Chernicoff 11/05/20

[Exh. 139 to Thompson Oepo.; Exh. 7 to misuse 

Chernicoff Oepo.] (50-1-2272049 - SO-I22721061 

RX-776 C 6/30/2007 - Limited Patent Cross License Express or Implied Earle Thompson; Sanjay 10/31/20

Agreement Between SanOisk and Ritek license; patent Mehrotra 11/05/20

Corporation [Exh. 156 to Thompson Oepo.; misuse 

Exh. 110 to Mehrotra Oepo.] [SO-I-0300371 -

50-1-03003921 

Page 27 of 43 
RESPONDENTS' EXHIBIT LIST 

Fxh!b!t I ee! I DC3Ciiptkiii , PU'IJUlSt:I . Sponsoring Witness Admitted 

RX-777 C 6/1/2008 - Kingston Competitive Analysis Affirmative Eliyhou Harari 10131/200

[Exh. 13 to Harari Depa.] [SD-I- 3266127- Defenses 

SD-I- 32661391 

RX-778 WITHDRAWN RX-779 WITHDRAWN 

. 

RX-7BO C 7/15/2008 - E-mail from Michael Pape to Mr. Witness Andy Tomlin 11/5/200

Yoon [Exh. 5 to Tomlin Depo.] Backgroundlldentific 

ation as corporate 

representative 

RX-7B1 WITHDRAWN RX-782 C Demonstrative Exhibit Titled "Block 0" [Exh. Non-Infringement Andy Tomlin 1115/200

8 to Tomlin Depa.] Defenses; Invalidity 

re U.S. Patent 

6.763,424 & U.S. 

Patent 6,426.893; Domestic Industry 

RX-783 C Demonstrative Exhibit 'ntled [Exh. 9 to Non-Infringement Andy Tomlin 1115/200

Tomlin Depo.] Defenses; Invalidity 

re U.S. Patent 

6.763.424 & U.S. 

Patent 6,426.893; 

Domestic Industry 

RX-784 C Demonstrative Exhibit Titled "Block 10" [Exh. Non-Infringement Andy Tomlin 11/5/200

10 to Tomlin Depa.] Defenses; Invalidity 

re U.S. Patent 

6.763,424 & U.S. 

Patent 6,426.893; 

Domestic Industry 

RX-785 WITH_DRAWN 

Page 28 of 43 
RESPONDENTS' EXHIBIT LIST 

Fyhihit Nt)_ I CB! I I I Sponsoring Vliitness Aamltted 

RX-786 C Multipage Printout of Spreadsheets [Exh.12 Non-Infringement Andy Tomlin 11/5/200

to Tomlin Depo.] [50-1-0802973 - 50-1- Defenses; Invalidity 

0803062] re U.S. Patent 

6.763.424 & U.S. 

-\ Patent 6,426,893; 

Domestic Industry 

RX-787 WITHDRAWN RX-788 WITHDRAWN 

RX-789 WITHDRAWN 

RX-790 WITHDRAWN RX-791 WITHDRAWN RX-792 WITHDRAWN 

RX-793 WITHDRAWN RX-794 WITHDRAWN 

RX-795 WITHDRAWN RX-796 WITHDRAWN 

RX-797 WITHDRAWN 

RX-798 WITHDRAWN RX-799 WITHDRAWN 

RX-BOO WITHDRAWN 

RX-801 WITHDRAWN RX-802 C 11/14/2000 - Agreement between SanDlsK Affirmative Eliyhou Harari 10/31/20

and Lexxar Corporation [50-1- 2100097 - 50- Defenses 

1- 21001001 

RX-803 CV of Russell W. Mangum III [Ex. 1 to the Express or Implied Russell Mangum III 11/4/20

2008-08-08 Expert Report of Dr. Russell license; Patent 

Mangum 1111 misuse 

RX-804 C Documents Received for Expert Report of Dr. Express or implied Russell Mangum III 11/4/20

Russell W. Mangum. III Regarding license; Patent 

Complainant SanDisk's Licensing Practices misuse 

[Exh. 2 to the 2008-08-08 Expert Report of 

Dr. Russell Mangum Ill] 

RX-805 Comparison Chart of RS3 Flash Drives and Express or Implied Russell Mangum III 11/4/20

External hard drives by storage capacity license; Patent 

[Exh. 3 to the 2008-08-08 Expert Report of misuse 

Dr. Russell Mangum 1111 

Page 29 of 43 
RESPONDENTS' EXHIBIT LIST 

Exh!h1t No. I C9! I . rUljJul:;t:I Sponsoring Witness Admitte

RX-806 C Kingston Flash Memory Profits - Global Express or implied Russell Mangum III 11/4/200

Consolidated - [Exh. 4 to the 2008-08-08 license; Patent 

Expert Report of Dr. Russell Manaum 1111 misuse 

RX-807 C Kingston Flash Memory Profits - US [Exh. 5 Express or implied Russell Mangum III 11/4/200

to the 2008-08-08 Expert Report of Dr. license; Patent 

Russell Mangum III] misuse 

RX-808 C Kingston Flash Memory Profits - Net of Express or implied Russell Mangum III 11/4/20

SanDisk Royalty [Exh. 6 to the 2008-08-08 license; Patent 

Expert Report of Dr. Russell Mangum III] misuse 

RX-809 C Exhibit 7: Kingston Flash Memory Profits. Express or implied Russell Mangum III 11/4/20

Excl. SO. US (Company 1 & 5 Domestic) license; Patent 

misuse 

RX-81 0 C Kingston Flash Memory Profits Excl. SD - US Express or implied Russell Mangum III 1.1/4/20

& Net of San Disk Royalty (80% & 50% license; Patent 

devices) [Exh. 8 to the 2008-08-08 Expert misuse 

Report of Dr. Russell Mangum III] 

RX-811 WITHDRAWN RX-812 WITHDRAWN RX-813 WITHDRAWN 

RX-814 WITHDRAWN 

RX-815 CV of V. Niles Kynett [Exh. 8 to the Expert Invalidity re U.S. Niles Kynett 11/3/20

Report of V. Niles Kvnettl Patent 6 763 424 

RX-816 WITHDRAWN RX-817 WITHDRAWN 

RX-818 WITHDRAWN 

RX-819 WITHDRAWN 

RX-820 WITHDRAWN 

RX-821 CV of Dr. Vivek Subramanian {Exh. 1 to the Non-I nfringement Vivek Subramanian 11/3/20

Rebuttal Expert Report on Non-Infringement Defenses 

of Vivek Subramanian] 

RX-822 Dr Vivek Subramanian List of Publications Non-Infringement Vivek Subramanian 11/3/20

and Patents [Exh. 2 to the Rebuttal Expert Defenses 

Report on Non-Infringement of Vivek 

Subramanianl 

RX-823 List of Documents Considered by Dr Vivek Non-Infringement Vivek Subramanian 11/3/20

Subramanian [Exh. 3 to the Rebuttal Expert Defenses 

Report on Non-Infringement of Vivek 

Subramanian] - - ,- -_ ........ _-_. ---

Page 30 of 43 
RESPONDENTS' EXHIBIT LIST 

Exhihit N r.RI n 

_ escr!pt!cn . rurposG SiJul\::iulillY Aommea 

RX-824 C 2008-08-22 Declaration of JY Yang Nan-Infringement Vivek Subramanian 11/3/200

Regarding the Operation of Phison's 2231 Defenses 

and 3006 Flash Memory Controllers [Exh. 5 

to the Rebuttal Expert Report on NonInfringement of Vivek Subramanianl 

RX-825 C 2008-08-05 Declaration of James Lee Iso Non-Infringement Vivek Subramanian 11/3/200

Rebuttal Expert Report of Vivek Subramanian Defenses 

[Exh. 6 to the Rebuttal Expert Report on NonInfringement of Vivek Subramanian) 

RX-826 "Definition of 'a'· - Compact Oxford English Non-Infringement Vivek Subramanian 11/3/200

Dictionary 3rd Ed 2005 [Exh. 7 to the Defenses 

Rebuttal Expert Report on Non-Infringement 

of Vlvek Subramanian] 

RX-827 C Phison 3006 Writesectors [Exh. 8 to the Non-Infringement Vivek Subramanian 11/31200

Rebuttal Expert Report on Non-Infringement Defenses 

of Vivek Subramanlanl 

RX-828 C Phison - 2231 - flash2bO [Exh. 9 to the Non-Infringement Vivek Subramanian 11/3/200

Rebuttal Expert Report on Non-Infringement Defenses 

of Vivek Subramanian1 

RX-829 C Phison - 2231 - partialWB5 [Exh. 11 to the Non-I nfringement Vivek Subramanian 11/3/200

Rebuttal Expert Report on Non-Infringement Defenses 

of Vlvek Subramanian] 

RX-830 C Phison - 3006 - ReadSectors [Exh. 12 to the Non-I nfringement Vivek Subramanian 11/3/20

Rebuttal Expert Report on Non-Infringement Defenses 

of Vivek Subramanianl 

RX-831 C Phison - 3006 - ClearMCToNewBlock [Exh. Non-Infringement Vivek Subramanian 11/3/20

13 to the Rebuttal Expert Report on Non- Defenses 

Infringement of Vivek Subramanian] 

RX-832 C Phison - 2231 - rwsecrb2 [Exh. 14 to the Non-Infringement Vlvek Subramanian 1113/20

Rebuttal Expert Report on Non-Infringement Defenses 

of Vivek Subramanian] 

RX-833 WITHDRAWN RX-834 WITHDRAWN 

RX-B35 C The NPD Group, Inc., 2008 Report of top Express or implied Russell Mangum 111 10/29/20

producer brands of consumer flash products license; Patent 

through US retail and etail [KTC 00571717 - misuse 

KTC 00571720] 

.RX-836 WITHDRAWN 

Page 31 of 43 
RESPONDENTS' EXHIBIT LIST 

Fxhihit N r.R n 

-

------

_ eecr:pt:cn , --. rUipv56 illY ilViiness AOmlne

RX-837 Christopher Falan Yinug, "The Rise of the Express or implied Russell Mangum III 11/4/20

Flash Memory Market: It's Impact on Firm license; Patent 

Behavior and Global Semiconductor Trade misuse 

Patterns," United States International Trade 

Commission, Journal of International 

Commerce and Economics, July 2007 [KTC 

00571793-816 

RX-838 Kingston, Flash Memory Guide, Express or implied Russell Mangum III 10/29/20

''http://www.kingston.com/products/pdUileslF license; Patent 

lashMemGuide.pdf' [KTC 00571777-571789] misuse 

RX-839 C October 2005 - Stock AnalYSis Presentation Express or implied Russell Mangum III; Eliyhou 10/31/20

[SD-I- 3208907- SD-I- 3208968] license; Patent Harari 

misuse 

RX-840 C Web-Feet Research, Inc., Flash Memory Express or implied Russell Mangum III; Eliyhou 10/31/20

Applications and Markets: 2005-2010 - license; Patent Harari 

Niebel, Alan [SD-I- 00910704 - SD-I- misuse 

00910918] 

RX-841 Tiger Direct ''http://www.tigerdirect.com" [KTC Express or implied Mangum III, Russell 11/4/20

license; Patent 

misuse 

RX-842 C 2007-06-04 - Gartner/Dataquest Insight: Final Express or implied Russell Mangum III; Eliyhou 10/31120

2006 Memory Market Share Ranklngs [SD-I- license; Patent Harari 

0933294-9333161 misuse 

RX-843 WITHDRAWN RX-844 "Industrial Organization, A Strategic Express or Implied Russell Mangum III 11/4/20

Approach", by Jeffrey Church and Roger license; Patent 

Ware, 2000 misuse 

RX-845 "Modern Industrialization" by Dennis Carlton Express or implied Russell Mangum III 11/5120

and Jeffrey Perloff, 4th Edition. 2005 license; Patent 

misuse 

RX-846 WITHDRAWN 

RX-847 C Kingston - Flash Memory Income Statements Express or implied Russell Mangum III; Darwin 10/29/20

[KTC 00571714-00571716] license; Patent Chen 

misuse 

RX-848 C 2004 Kingston Flash Competitive Analysis Express or Implied Russell Mangum III 10/29/20

[KTC00100191-KTC00100194] license; Patent 

misuse 

RX-849 WITHDRAWN; 

Page 32 of 43 
RESPONDENTS' EXHIBIT LIST 

No. I C8! I D03cnpt;oii I rUl\.lu::;e . Sponsonng WItness Admitted 

RX-850 WITHDRAWN 

RX-851 WITHDRAWN RX-852 WITHDRAWN 

RX-853 WITHDRAWN RX-854 C 2007-01-02 Letter correspondence from Earle Affirmative defenses Earle Thompson 11/4/200

Thompson to Jay Shim [50-1-3271003 - 50-1-

32710051 

RX-855 WITHDRAWN RX-856 WITHDRAWN 

RX-857 WITHDRAWN RX-858 WITHDRAWN RX-859 WITHDRAWN RX-860 List of documents considered - Appendix C to Claim Construction; Vivek Subramanian 11/3/200

the Expert Report on Claim Construction by Noninfringement; 

Dr. Vivek Subramanian Invalidity 

RX-861 Excerpts from the 5,663,901 FH [Exh. I to the Claim Construction; Vivek Subramanian 11/3/200

Expert Report on Claim Construction of Dr. Noninfringement; 

Vivek Subramanian] Invalidity 

RX-862 1989-02-16 An Experimental 4Mb CMOS Claim Construction; Vivek Subramanian 11/3/200

EEPROM with a NAND Structured Cell [Exh. Noninfrlngement; 

K to the Expert Report on Claim Construction Invalidity 

of Dr. Vivek Subramanian] 

RX-863 WITHDRAWN RX-864 WITHDRAWN 

RX-865 WITHDRAWN RX-866 WITHDRAWN 

RX-867 WITHDRAWN RX-868 WITHDRAWN 

RX-869 WITHDRAWN 

RX-870 WITHDRAWN 

RX-871 WITHDRAWN RX-872 WITHDRAWN 

RX-873 WITHDRAWN 

RX-874 WITHDRAWN RX-875 WITHDRAWN 

RX-876 WITHDRAWN RX-877 WITHDRAWN 

Page 33 of 43 
RESPONDENTS' EXHIBIT LIST 

Exhibit No. r r.RI I Deecr!pt!cn • PUfjju5t1 , Sponsoring Witness Admitte

RX-878 WITHDRAWN RX-879 WITHDRAWN 

RX-880 WITHDRAWN 

RX-881 WITHDRAWN RX-882 C Joint Proposed Claim Construction Chart Non-Infringement Vivek Subramanian 11/3/200

dated 05/14/2008 Defenses 

RX-883 WITHDRAWN RX-884 WITHDRAWN RX-885 C E-mail (redacted) from James Yoon to Roger Affirmative defenses Earle Thompson 10/31/20

Borovoy et al. with attached SanDisk cross 

license agreement [SD-I-1258228 - SD-I1258248] 

RX-886 WITHDRAWN 

RX-887 WITHDRAWN RX-888 WITHDRAWN 

RX-889 WITHDRAWN 

RX-890 WITHDRAWN RX-891 WITHDRAWN RX-892 WITHDRAWN 

RX-893 WITHDRAWN 

RX-894 C Phison Electronics Corporation's PS2231 Non-Infringement Yang, JY 11/5/20

source code [PEC2.00001 - PEC2.00597; Defenses 

Yang Dep. Ex. 2091 

RX-895 WITHDRAWN 

RX-896 WITHDRAWN RX-897 WITHDRAWN 

RX-898 WITHDRAWN 

RX-899 WITHDRAWN 

RX-900 WITHDRAWN RX-901 WITHDRAWN 

RX-902 WITHDRAWN 

RX-903 C Exhibit 207: Phison CBI - diagram re "Mother Non-Infringement JYYang 11/5/20

Block" and "Child Block" Defenses 

RX-904 C Exhibit 208: Phison eBI - diagram re "Mother Non-Infringement JYYang 11/5/20

Block" and "Child Block" Defenses 

RX-905 C Exhibit 210: Phison CBI - diagram re "Mother Non-Infringement Jy,vang 11/5/20

Block" and "Child Block" Defenses 

RX-906 WITHDRAWN 

--_ RX-907 .. _-----_._- ___ 

Page 34 of 43 
RESPONDENTS' EXHIBIT LIST 

Exhibit No_ I r.RI , Degcript!cn I f'urpo5o I illg vViiness Adminea 

RX-908 WITHDRAWN RX-909 WITHDRAWN 

RX-91 0 C Document Entitled "Phison CBI K with Non-Infringement JYYang 11/5/200

handwriting [Exh. 216 to Yang Daoo.1 Defenses 

RX-911 WITHDRAWN 

RX-912 WITHDRAWN RX-913 WITHDRAWN RX-914 WITHDRAWN 

RX-915 WITHDRAWN RX-916 WITHDRAWN 

RX-917 WITHDRAWN 

RX-918 C Import 2007 FINAL.XLS file [ from KTC-N- Remedy & Bonding Donald Sun; Darwin Chen 10/29/20

000004) 

RX-919 WITHDRAWN RX-920 C Kingston-Toshiba Imports_2007 -2008.xls [ Remedy & Bonding Donald Sun; Darwin Chen 10/29/20

from KTC-N-0000121 

RX-921 WITHDRAWN 

RX-922 WITHDRAWN 

RX-923 WITHDRAWN RX-924 WITHDRAWN RX-925 WITHDRAWN 

RX-926 WITHDRAWN 

RX-927 WITHDRAWN RX-928 WITHDRAWN 

RX-929 WITHDRAWN RX-930 Excerpts from The American Heritage Claim Construction; Vivek Subramanian 11/3/200

Dictionary for the English Language 2000 Ed. Non-infringement; 

[Exh. 0 to the Expert Report on Claim Invalidity 

Construction of Dr. Vivek Subramanianl 

RX-931 Excerpts from IEEE 100 The Authroitative Claim Construction; Vlvek Subramanian 11/3/20

Dictionary of IEEE Standards Terms - 7th Non-infringement; 

Edition [Ex. E to the Expert Report on Claim Invalidity 

Construction of Dr. Vivek Subramanian] 

RX-932 Excerpts from The American Heritage Claim Construction; Vivek Subramanian 11/3/20

Dictionary for the English Language Third Ed. Non-Infringement; 

2000 [Ex. F to the Expert Report on Claim Invalidity 

Construction of Dr. Vivek Subramanian] 

Page 35 of 43 
RESPONDENTS' EXHIBIT LIST 

Fxhihit Nt:!. I GB! , Dc:::c:ipt:on . Sponsoring Witness Admitte

RX-933 The Computer Glossary - The Complete Claim Construction; Vivek Subramanian 11/3/200

Illustrated Desk Reference - 5th Edition [Ex. J Non-infringement; 

to the Expert Report on Claim Construction Invalidity 

of Dr. Vivek Subramanian] 

RX-934 Excerpts from Webster's Ninth New Claim Construction; Vivek Subramanian 11/3/200

Collegiate Dictionary 1991 [Ex. M to the Non-infringement; 

Expert Report on Claim Construction of Dr. Invalidity 

Vivek Subramanian] 

RX-935 Excerpts from Howard W. Sams & Company Claim Construction; Vivek Subramanian 11/3/200

Modem Dictionary of Electronics - 6th Edition Non-infringement; 

[Ex. P to the Expert Report on Claim Invalidity 

Construction of Dr. Vivek Subramanian] 

RX-936 C Direct Witness Statement of Ellis Lee Patent Misuse, Ellis Lee 10/29/20

Express or Implied 

License. Importation 

RX-937 C Direct Witness Statement of Dr. V. Niles Invalidity re U.S. Niles Kynett 11/31200

Kynett Patent 6 763 424 

RX-938 C Direct Witness Statement of Dr. Russell Patent Misuse Russell Mangum III 11/3/200

Mangum Defenses; Express 

or Imolied License 

RX-939 WITHDRAWN 

RX·940 WITHDRAWN RX-941 C Direct Witness Statement of Darwin Chen Importation, Patent Darwin Chen 10/29/20

Misuse, Express or 

Implied License 

RX-942 WITHDRAWN 

RX-943 CV of Dr. Ray Mercer, Ph.D. [App. A to The Witness Ray Mercer 11/5/20

Rebuttal Expert Report of Dr. Ray Mercer, Background 

Ph.D. on Non-Infringement of U.S. Patent Information 

Nos. 6,426.893 and 6,763,424 by Heller 

Respondentsl 

RX-944 Dr. Ray Mercer's List of Previous Cases, Witness Ray Mercer 11/5/20

Testimony in the Last 8 Years [App. B to The Background 

, Rebuttal Expert Report of Dr. Ray Mercer. Information 

Ph.D. on Non-Infringement of U.S. Patent 

Nos. 6,426.893 and 6.763,424 by Heller 

Page 36 of 43 
RESPONDENTS' EXHIBIT LIST 

Fxhihit Nn , C8! I Deecr!pticn I Purpv5;;' , SlJom)Oring iiv'itness Admitte

RX-945 WITHDRAWN RX-946 WITHDRAWN 

RX-947 WITHDRAWN 

RX-948 WITHDRAWN RX-949 WITHDRAWN RX-950 WITHDRAWN 

RX-951 WITHDRAWN RX-952 WITHDRAWN RX-953 WITHDRAWN 

RX-954 WITHDRAWN 

RX-955 C Slide Presentation titled "YE 2007 Rate Patent Misuse E. Earle Thompson 11/4/200

Comparisons" [50-1-32849611 

RX-956 WITHDRAWN 

RX-957 C Redacted e-mail from Eliyahou Harari to Patent Misuse Eliyahou Harari; E. Earle 11/4/200

Earle Thompson, Richard Chernicoff, 5anjay Thompson; Richard 

Mehrotra, and Jim Brelsford dated January Chernlcoff; 5anJay Mehrotra 

18 2008 r5D-I-3265659 - 6601 

RX-958 WITHDRAWN 

RX-959 C E-mail from James Yoon to Anup Tikku dated Patent Misuse Eliyahou Haran; E. Earle 10/31/20

March 13,2008 with attachments [50-1- Thompson; Richard 

3283477 - 516] Chernicoff; 5anjay Mehrotra 

RX-960 WITHDRAWN RX-961 WITHDRAWN 

RX-962 WITHDRAWN RX-963 WITHDRAWN RX-964 WITHDRAWN RX-965 WITHDRAWN 

RX-966 WITHDRAWN 

RX-967 WITHDRAWN 

RX-968 WITHDRAWN 

RX-969 WITHDRAWN RX-970 Translation of JP3070539 [Expert Report of Invalidity V. Niles Kynett 1113120

V. Niles Kynett, 8/8/08, Exhibit 33] [KYNETIRPT001967 - 20071 

RX-971 WITHDRAWN 

RX-972 WITHDRAWN 

RX-973 WITHDRAWN RX-974 WITHDRAWN 

Page 37 of 43 
RESPONDENTS' EXHIBIT LIST 

I::xnlnlt NO I CRI I . ri.iljjOoc SfJuII::;urilly"vViiness Aommeo 

WITHDRAWN 

RX-976 WITHDRAWN 

RX-977 WITHDRAWN RX-978 WITHDRAWN 

RX-979 WITHDRAWN 

RX-980 WITHDRAWN RX-981 WITHDRAWN 

RX-982 WITHDRAWN RX-983 WITHDRAWN 

RX-984 WITHDRAWN RX-985 WITHDRAWN RX-986 WITHDRAWN 

RX-987 List of aU Foreign Patents and Applications Licensing and E. Earl Thompson 10/31/200

Corresponding to US Patent 6,763.424 Patent Misuse 11/05/20

[Deposition of E. Earle Thompson. 815/08, 

Exhibit 2251 

RX-988 C Corrected Witness Statement of Chia Kun Licensing, CKChang 10/31/20

Chang Remedies and 

Patent Misuse 

RX-989 WITHDRAWN 

RX-990 C Direct Witness Statement of Frankie Chiu Licensing, Frankie Chiu 10/31/20

Remedies and Patent Misuse 

RX-991 WITHDRAWN 

RX-992 WITHDRAWN 

RX-993 WITHDRAWN RX-994 WITHDRAWN 

RX-995 C Direct Witness Statement of Jason Chien Licensing Jason Chien 10/31/20

RX-996 WITHDRAWN 

RX-997 WITHDRAWN RX-998 Direct Witness Statement of O-byoung Kang Exhaustion, Implied O-byoung Kang 10/31/20

license 

RX-999 WITHDRAWN RX-1000 WITHDRAWN 

RX-1001 WITHDRAWN RX-1002 WITHDRAWN 

RX-1003 WITHDRAWN 

RX-1004 WITHDRAWN RX-1005 WITHDRAWN 

Page 38 of 43 
RESPONDENTS' EXHIBIT LIST 

ExhlbltNo. I C8! I Dc:;ciiption I PUIIJUl;t:/ Sponsoring ilVimess Admitted 

RX-1006 WITHDRAWN RX-1007 WITHDRAWN 

RX-1008 WITHDRAWN RX-1009 WITHDRAWN RX-1010 WITHDRAWN 

RX-1011 C Second Settlement and Patent Cross License Licensing and EUyhou Harari 11/5/200

Agreement between Sandisk Corporation and Patent Misuse 

Samsung Electronics Co., Ltd .• 8/14/02 (SD-I0300402 to SD-I-0300446) 

RX-1012 WITHDRAWN 

RX-1013 WITHDRAWN RX-1014 WITHDRAWN 

RX-1015 WITHDRAWN 

RX-1016 WITHDRAWN RX-1017 WITHDRAWN RX-1018 WITHDRAWN 

RX-1019 WITHDRAWN 

RX-1020 WITHDRAWN 

RX-1021 WITHDRAWN 

RX-1022 C Complainant SanDisk Corporation's Opening Non-infringement Thomas Rhyne 10/29/20

Claim Construction Brief 

RX-1023 C Complainant SanDisk Corporation's Non-infringement Thomas Rhyne 10/29/20

Responsive Brief on Claim Construction of 

U.S. Patent Nos. 6.947.332; 6.426.893; and 

7137011 

RX-1024 WITHDRAWN RX-1025 WITHDRAWN 

RX-1026 WITHDRAWN RX-1027 WITHDRAWN RX-1028 WITHDRAWN 

RX-1029 WITHDRAWN RX-1030 WITHDRAWN RX-1031 WITHDRAWN RX-1032 WITHDRAWN 

RX-1033 C Samsung MMC Purchase order spreadsheet Licensing C.K. Chang 10/31/20

I(AP-ITC 031457 - 0314458) 

RX-1034 C POs and invoices for Samsung products (AP- Licensing C.K. Chang 10/31/20

ITC 0314018 - 0314047) -

Page 39 of 43 
RESPONDENTS' EXHIBIT LIST 

Fxhihit .110. N I Ca! I Deecr!pt!cn I rUi1i\j5':; . SUUII::;UI illY 'vViiness Aammea 

RX-1035 WITHDRAWN 

RX-1036 WITHDRAWN 

RX-1037 WITHDRAWN 

RX-1038 International Publication No. WO 00/49488 Invaliditv Kevin Conley 

RX-1039 C San Disk 3rd Generation System Option Invalidity Kevin Conley 11/5/200

Analvsis 1.2 

RX-1040 C San Disk Rhodes 2 0.13 BB NAND Ultra AT A Invalidity Kevin Conley 11/5/200

SyStem Spec 

RX-1041 WITHDRAWN RX-1042 C Past. Present and Future of San Disk NAND Invalidity Kevin Conley 11/5/200

Products 

RX-1043 C Email- SD-I-1884439 Invaliditv Kevin Conley 11/5/200

RX-1044 C Email- SO-I-1883272 Invalidilv Kevin Conley 11/5/200

RX-1045 C Email- SD-I-1883145 Invaliditv Kevin Conley 11/5/200RX-1046 WITHDRAWN 

RX-1047 WITHDRAWN RX-1048 WITHDRAWN 

RX-1049 C Email- SD-I-1883557 Invaliditv Kevin Conley 11/5/20

RX-1050 C SDSC-SDUS Face to Face Meeting Invalidiiv- Kevin Conley 11/5/20RX-10S1 C Email SD-I-1883876 Invaliditv Kevin Conley 11/5/20

RX·1052 C CyclicStorage Algorithms Invaliditv Kevin Conley 11/5/20

RX-1053 C SDSC Company Overview InvaliditV Kevin Conley 11/5/20

RX-1054 C SDSC IP Review (SD-I-1884104 • 4127) Invalidity Kevin Conley 11/5/20

RX-1055 C Email SO-I-1884356 Invaliditv Kevin Conley 11/5/20RX-1056 C Email Bates SD-I-1902053 InvalidttV Kevin Conley. 

RX-1057 C Email SD-I-3283374 Invaliditv Kevin Conley 11/5/20

RX-1058 C San Disk Metablocks Invallditv Kevin Conley. 11/5/20

RX-1059 WITHDRAWN 

RX-1060 C Email SD-I-1883399 Invaliditv Kevin Conley 11/5/20

RX-1061 WITHDRAWN 

RX-1062 C Email SO-I-1883150 Invaliditv Kevin Conley 11/5/20

RX-1063 C Performance Post Mortem Invaliditv Kevin Conlev 1115/20

RX-1064 C SanOisk Invention Disclosure form Invalidltv Kevin Conley 11/S/20RX-1065 C Interrogatories Invaliditv Kevin Conley. 11/5/20

RX-1066 C San Disk Rhodes lTaver NAND Invaliditv Kevin Conley 11/5/20

RX-1067 C Claims Pending in SDK0156.000US Invalidity Kevin Conley. 11/5/20

RX-1068 C Parallel Extension to parial Block Invalidity Kevin Conley 11/5/20

Programming 

RX-1069 C AlgoRithm Representation Invaliditv Kevin Conley 11/5/20

Page 40 of 43 
RESPONDENTS' EXHIBIT LIST 

N/). I G8! I I f'uij:iOS6 . SjJUII::iUI illy' i;v'iirle::;s Admitt

RX-1070 C Conley Design Notebook Invalidity Kevin Conley 11/5/20

RX-1071 C San Disk Sparta SDP3E Invalidity Kevin Conley 11/5/20

RX-1072 C San Disk Strategies for Data Update Invalidity Kevin Conley 11/5/20

RX-1073 WITHDRAWN RX-1074 US Patent No.6 725 321 Invalidity Kevin Conley 11/5/20

RX-1075 WITHDRAWN 

RX-1076 WITHDRAWN 

RX-1077 WITHDRAWN RX-1078 WITHDRAWN 

RX-1079 WITHDRAWN RX-10BO WITHDRAWN 

RX-1081 WITHDRAWN 

-

--

.. 

- L..._. __ ---_ .. __ .... - , .•.. .

Page 41 of 43 
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........ 
IN THE MATTER OF CERTAIN FLASH MEMORY 

CONTROLLERS, DRIVES, MEMORY CARDS, AND 

MEDIA PLAYERS CONTAINING SAME 

CERTIFICATE OF SERVICE 

337-TA-619 

I, Marilyn R. Abbott, hereby certify that the attached CONFIDENTIAL FINAL INITIAL 

DETERMINATION has been served upon, Christopher G. Paulraj, Esq., Commission 

Investigative Attorney, and the following parties via overnight delivery where necessary on 

April 10 ' 2009. 

arilyn R. Abbott, Secretary "0' tf (.., 

U.S. International Trade CommissIOn 

500 E Street, S.W., Room 112A 

Washington, DC 20436 

FOR COMPLAINANT SANDISK CORPORATION: 

Michael A. Ladra, Esq. 

WILSON SONSINI GOODRICH & ROSATI 

650 Page Mill Road 

Palo Alto, CA 94304-1050 

Nicole W. Stafford 

WILSON SONSINI GOODRICH & ROSATI 

8911 Capital of Texas Highway 

North Westech 360, Suite 3350 

Austin, TX 78759-8497 

Gregory A. Castanias, Esq. 

JONES DAY 

51 Louisiana Avenue, N. W. 

Washington, DC 20001 

Robert W. Dickerson, Esq. 

JONES DAY 

555 South Flower Street, Fifteenth Floor 

Los Angeles, CA 90071 

( )Via Hand Delivery 

ex.) Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

()QVia Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

Q")Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

( \1Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 
IN THE MATTER OF CERTAIN FLASH MEMORY 

CONTROLLERS, DRIVES, MEMORY CARDS, AND 

MEDIA PLAYERS CONTAINING SAME 

Yitai Hu, Esq. 

AKIN GUMP STRAUSS HAUER & FELD LLP 

2 Palo Alto Square 

3000 El Camino Real, Suite 400 

Palo Alto, CA 94306 

337-TA-619 

( )Via Hand Delivery 

( {)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

FOR RESPONDENTS ACER INC., APACER TECHNOLOGY INC. & APACER 

MEMORY AMERICA, INC., TRANSCEND INFORMATION INC. (TAIWAN), 

TRANSCEND INFORMATION INC. (CALIFORNIA), TRANSCEND INFORMATION 

MARYLAND INC., SILICON MOTION INC. (CALIFORNIA) & SILICON MOTION, 

INC. (TAIWAN) 

Brian K. McCalmon, Esq. 

K&LGATES 

1601 K Street, N.W. 

Washington, DC 20006-1600 

Michael J. Bettinger, Esq. 

K&LGATES 

55 Second Street, Suite 1700 

San Francisco, CA 94105 

( )Via Hand Delivery 

(t)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

Ct) Via Overnight Mail· 

( )Via First Class Mail 

( )Other: ___ _ 

FOR RESPONDENTS DANE-ELEC MEMORY S.A., DEANTUSAIOCHT DANE-ELEC 

TEO, DBA DANE-ELEC MANUFACTURING & DANE ELEC CORP. USA, DBA 

INTERV ALLE CORPORATION, DBA DANE-ELEC MANUFACTURING USA 

Charles C.H. Wu, Esq. 

WU & CHEUNG, L.L.P. 

98 Discovery 

Irvine, CA 92618 

( )Via Hand Delivery 

COVia Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

FOR RESPONDENT EDGE TECH CORPORATION DBA PERIPHERAL 

ENHANCEMENTS CORPORATION 

Mark G. Kachigian, Esq. 

HEAD, JOHNSON & KACHIGIAN 

228 West 17th Place 

Tulsa, OK 74119 

( )Via Hand Delivery 

(~Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 
IN THE MATTER OF CERTAIN FLASH MEMORY 

CONTROLLERS, DRIVES, MEMORY CARDS, AND 

MEDIA PLAYERS CONTAINING SAME 

337-TA-619 

FOR RESPONDENTS PAYTON TECHNOLOGY PHIS ON ELECTRONICS 

CORPORATION, KINGSTON TECHNOLOGY COMPANY, INC., KINGSTON 

TECHNOLOGY CORPORATION, & MEMOSUN, INC. 

Jeffrey R. Whieldon, Esq. 

FISH & RICHARDSON PC 

1425 K Street, NW, Suite 1100 

Washington, DC 20005 

( )Via Hand Delivery 

cO Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

FOR RESPONDENTS IMATION CORP, IMATION ENTERPRISE CORP. & 

MEMOREX PRODUCTS, INC. 

Louis S. Mastriani, Esq. 

ADDUCI, MASTRIANI & SCHAUMBERG, L.L.P. 

1200 Seventeenth Street, N.W., Fifth Floor 

Washington, DC 20036 

Ronald J. Schutz, Esq. 

ROBINS, KAPLAN, MILLER & CIRESI, LLP 

2800 LaSalle Plaza 

800 LaSalle Avenue 

Minneapolis, MN 55402 

( )Via Hand Delivery 

(y)Via Hand Delivery 

( . )Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

(X')Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

FOR RESPONDENTS US BEST TECHNOLOGY, INC., INFOTECH LOGISTIC, 

LLC, POWER QUOTIENT INTERNATIONAL CO., LTD., POWER QUOTIENT 

INTERNATIONAL (IlK) CO., LTD., PQI CORPORATION CIDPSBRAND 

MICROELECTRONICS (HK) CO., LTD., CHIPSBANK TECHNOLOGY 

(SHENZHEN) CO., LTD CHIPS BANK MICROELECTRONICS CO. LTD., 

AND & SKYMEDI 

Sturgis Sobin, Esq. 

COVINGTON & BURLING LLP 

1201 Pennsylvania Avenue, N.W. 

Washington, DC 20004 

( )Via Hand Delivery 

({)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

FOR RESPONDENTS LG ELECTRONICS, INC. AND LG ELECTRONICS U.S.A., INC. 

Brian Koo, Esq. 

SIDLEY AUSTIN LLP 

1501 K Street, N.W. 

Washington, DC 20005 

( )Via Hand Delivery 

(x)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 
IN THE MATTER OF CERTAIN FLASH MEMORY 

CONTROLLERS, DRIVES, MEMORY CARDS, AND 

MEDIA PLAYERS CONTAINING SAME 

CERTIFICATE OF SERVICE 

337-TA-619 

I, Marilyn R. Abbott, hereby certify that the attached PUBLIC INITIAL DETERMINATION 

has been served upon, Christopher G. Paulraj, Esq., Commission Investigative Attorney, and 

the following parties via first class mail and air mail where necessary on --""-,,,~~,--___ , 

2009. 

'Marilyn R. Abbott, Secretary 

U.S. International Trade Commission 

500 E Street, S.W., Room 112A 

Washington, DC 20436 

FOR COMPLAINANT SANDISK CORPORATION: 

Michael A. Ladra, Esq. 

WILSON SONSINI GOODRICH & ROSATI 

650 Page Mill Road 

Palo Alto, CA 94304-1050 

Nicole W. Stafford 

WILSON SONSINI GOODRICH & ROSATI 

8911 Capital of Texas Highway 

North Westech 360 

Suite 3350 

Austin, TX 78759-8497 

Gregory A. Castanias, Esq. 

JONES DAY 

51 Louisiana Avenue, N. W. 

Washington, DC 20001 

Robert W. Dickerson, Esq. 

JONES DAY 

555 South Flower Street, Fifteenth Floor 

Los Angeles, CA 90071 

( )Via Hand Delivery 

(>()Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

(y)Via Overnight Mail 

( ')Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

9\)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

(~Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 
IN THE MATTER OF CERTAIN FLASH MEMORY 

CONTROLLERS, DRIVES, MEMORY CARDS, AND 

MEDIA PLAYERS CONTAINING SAME 

337-TA-619 

FOR RESPONDENTS PAYTON TECHNOLOGY, PHISON ELECTRONICS 

CORPORATION, KINGSTON TECHNOLOGY COMPANY, INC. ,KINGSTON 

TECHNOLOGY CORPORATION, & MEMOSUN, INC. 

Jeffrey R. Whieldon, Esq. 

FISH & RICHARDSON, P.C. 

1425 K Street, N.W., Suite 1100 

Washington, DC 20005 

( )Via Hand Delivery 

(X)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

FOR RESPONDENTS IMATION CORP, IMATION ENTERPRISE CORP. 

&MEMOREX PRODUCTS, INC. 

Louis S. Mastriani, Esq. 

ADDUCI, MASTRIANI & SCHAUMBERG, L.L.P. 

1200 Seventeenth Street, N.W., Fifth Floor 

Washington, DC 20036 

Ronald J. Schutz, Esq. 

ROBINS, KAPLAN, MILLER & CIRESI, LLP 

2800 LaSalle Plaza 

800 LaSalle Avenue 

Minneapolis, MN 55402 

( )Via Hand Delivery 

(~)Via Overnight Mail 

( . )Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

(X)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

FOR RESPONDENTS US BEST TECHNOLOGY, INC., INFOTECH LOGISTIC, 

LLC, POWER QUOTIENT INTERNATIONAL CO., LTD., POWER QUOTIENT 

INTERNATIONAL (HK) CO., LTD., PQI CORPORATION CHIPSBRAND 

MICROELECTRONICS (HK) CO., LTD., CHIPSBANK TECHNOLOGY 

(SHENZHEN) CO., LTD CHIPSBANK MICROELECTRONICS CO. LTD., 

AND SYSCOM DEVELOPMENT CO., LTD. & SKYMEDI 

Sturgis, M. Sobin, Esq. 

COVINGTON & BURLING LLP 

1201 Pennsylvania Avenue, N.W. 

Washington, DC 20004 

( )Via Hand Delivery 

(X)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 
IN THE MATTER OF CERTAIN FLASH MEMORY 

CONTROLLERS, DRIVES, MEMORY CARDS, AND 

MEDIA PLAYERS CONTAINING SAME 

337-TA-619 

FOR RESPONDENTS ACER INC., APACER TECHNOLOGY INC. & APACER 

MEMORY AMERICA, INC., TRANSCEND INFORMATION INC. (TAIWAN), 

TRANSCEND INFORMATION INC. (CALIFORNIA), TRANSCEND INFORMATION 

MARYLAND INC., SILICON MOTION INC. (CALIFORNIA) & SILICON MOTION, 

INC. (TAIWAN) 

Brian K. McCalmon, Esq. 

K&LGATES 

1601 K Street, N.W. 

Washington, DC 20006-1600 

Michael J. Bettinger, Esq. 

K& LGATES 

55 Second Street, Suite 1700 

San Francisco, CA 94105 

( )Via Hand Delivery 

C\,)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

(X )Via Overnight Mail 

( ')Via First Class Mail 

( )Other: ___ _ 

FOR RESPONDENTS LG ELECTRONICS, INC. AND LG ELECTRONICS U.S.A., INC. 

Brian Koo, Esq. 

SIDLEY AUSTIN LLP 

1501 K Street, N.W. 

Washington, DC 20005 

Peter H. Kang, Esq. 

SIDLEY AUSTIN LLP 

555 California Street, Suite 2000 

San Francisco, CA 94104 

( )Via Hand Delivery 

(X)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

(.:{)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

FOR RESPONDENTS DANE-ELEC MEMORY S.A., DEANTUSAIOCHT DANEELEC TEO, DBA DANE-ELEC MANUFACTURING & DANE ELEC CORP. USA, 

DBA INTERVALLE CORPORATION, DBA DANE-ELEC MANUFACTURING USA 

Charles C.H. Wu, Esq. 

WU & CHEUNG, LLP 

98 Discovery 

Irvine, CA 92618 

( )Via Hand Delivery 

(J( )Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 
IN THE MATTER OF CERTAIN FLASH MEMORY 

CONTROLLERS, DRIVES, MEMORY CARDS, AND 

MEDIA PLAYERS CONTAINING SAME 

337-TA-619 

PUBLIC MAILING LIST 

Heather Hall 

LEXIS - NEXIS 

9443 Springboro Pike 

Miamisburg, OH 45342 

Kenneth Clair 

THOMSON WEST 

1100 13th Street N.W. 

Suite 200 

Washington, DC 20005 

( )Via Hand Delivery 

()()Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

(,,<)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 
UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 

In the Matter of 

CERTAIN FLASH MEMORY 

CONTROLLERS, DRIVES, MEMORY 

CARDS, AND MEDIA PLAYERS AND 

PRODUCTS CONTAINING SAME 

Investigation No. 337-TA-619 

NOTICE OF COMMISSION DETERMINATION NOT TO REVIEW AN INITIAL 

DETERMINATION FINDING FIVE RESPONDENTS IN DEFAULT 

AGENCY: U.S. International Trade Commission. 

ACTION: Notice. 

SUMMARY: Notice is hereby given that the u.S. International Trade Commission has 

detennined not to review the presiding administrative law judge's ("ALl") initial determinatfon 

("ID") (Order No. 28) in the above-referenced investigation finding respondents Zotek 

Electronic Co., Ltd. (d/b/a Zodata Technology Limited) ("Zotek"); Add-On Technology Co. 

("Add-On"); Behavior Tech Computer Corp. ("BTC"); Behavior Tech Computer (USA) Corp. 

("BTC USA"); and Emprex Technologies Corp. ("Emprex") in default. 

FOR FURTHER INFORMATION CONTACT: Michelle Walters, Office of the General 

Counsel, U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436, 

telephone (202) 708-5468. Copies of non-confidential documents filed in connection with this 

investigation are or will be available for inspection during official business hours (8:45 a.m. to 

5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street, 

S.W., Washington, D.C. 20436, telephone (202) 205-2000. General infonnation concerning the 

Commission may also be obtained by accessing its Internet server at http://www.usitc.gov. The 

public record for this investigation may be viewed on the Commission's electronic docket 

(EDIS) at http://edis.usitc.gov. Hearing-impaired persons are advised that infonnation on this 

matter can be obtained by contacting the Commission's TDD tenninal on (202) 205-1810. 

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on 

December 12,2007, based on a complaint filed by SanDisk Corporation ("SanDisk"). The 

complaint alleges violations of section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) in the 

importation into the United States, the sale for importation, and the sale within the United States 

after importation of certain flash memory controllers, drives, memory cards, media players, and 
products containing the same by reason of infringement of various claims of five United States 

patents. The complaint names nearly fifty respondents. 

On February 27,2008, SanDisk filed a motion for an order to show cause and default 

against five respondents: Zotek; Add-on; BTC; BTC USA; and Emprex. On March 12,2008, 

the ALJ issued Order No. 24 ordering these respondents to show cause why they should not be 

found in default for failing to respond to the complaint and notice of investigation. No response 

was received from any of these respondents. 

On April 25,2008, the ALJ issued the subject ID finding Zotek, Add-on, BTC, BTC 

USA, and Emprex in default. The ALJ also found that they had waived their rights to appear, to 

be served with documents, and to contest the allegations against them. No petitions for review 

of this ID were filed. 

The Commission has determined not to review the ID. 

The authority for the Commission’s determination is contained in section 337 of the 

Tariff Act of 1930, as amended (1 9 U.S.C. 5 1337), and in section 2 10.42 of the Commission’s 

Rules of Practice and Procedure (1 9 C.F.R. 0 21 0.42). 

By order of the Commission. 

Mar il y nwbbott 

Secretary to the Commission 

Is’sued: May 14,2008 
CERTAIN FLASH MEMORY CONTROLLERS, DRIVES, 337-TA-619 

MEMORY CARDS, AND MEDIA PLAYERS AND PRODUCTS 

CONTAINING SAME 

PUBLIC CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached NOTICE OF COMMISSION 

DETERMINATION NOT TO REVIEW AN INITIAL DETERMINATION 

FINDING FIVE RESPONDENTS IN DEFAULT has been served by hand upon the 

Commission Investigative Attorney, Christopher G. Paulraj, Esq., and the following 

parties as indicated, on Mav 14 . 

rl. wqt bott, Secretary 

U.S. Lternational Trade Cokission 

500 E Street, SW 

Washington, DC 20436 

COUNSEL FOR COMPLAINANT SANDISK 

CORPORATION: 

Michael A. Ladra, Esq. 

James C. Yoon, Esq. 

Julie M. Holloway, Esq. 

WILSON SONSINI GOODRICH & ROSATI 

650 Page Mill Road 

Palo Alto, California 94304-1050 

( ) Via Hand Delivery 

( ) Via Overnight Mail 0 Via First Class Mail 

( ) Other: 

P-650-493-9300 

Nicole W. Stafford, Esq. 

WILSON SONSINI GOODRICH & ROSATI 

891 1 Capital of Texas Highway North 

Westech 360, Suite 3350 

Austin, Texas 78759-8497 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

90 Via First Class Mail 

P-512-338-5400 

( Other: 

Steven E. Adkins, Esq. 

JONES DAY 

5 1 Louisiana Avenue, NW 

Washington, DC 20001 -2 1 13 

P-202-879-3939 

F-202-626-1700 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

Via First Class Mail 

( )Other: 
Page 2 - Certificate of Service 

ON BEHALF OF RESPONDENT VERBATIM 

CORPORATION: 

Perry R. Clark, Esq. 

KIRKLAND & ELLIS LLP 

555 California Street 

San Francisco, CA 94104-1501 

P-415-439-1400 

F-4 1 5-439- 1 500 

ON BEHALF OF RESPONDENTS IMATION 

CORPORATION AND MEMOREX PRODUCTS, 

INCORPORATED: 

Ronald J. Schutz, Esq. 

Richard M. Martinez, Esq. 

B. Todd Jones, Esq. 

ROBINS KAPLAN MILLER & CIRESI LLP 

2800 LaSalle Plaza 

800 LaSalle Avenue 

Minneapolis, MN 55402 

P-6 12-349-8500 

F-6 12-339-41 8 1 

Louis S. Mastriani, Esq. 

M. Page Hall, 11, Esq. 

Michael L. Doane, Esq. 

ADDUCI MASTRIANI & SCHAUMBERG LLP 

1200 Seventeenth Street, NW - Fifth Floor 

Washington, DC 20036 

P-202-467-6300 

F-202-466-2006 

( ) Via Hand Delivery 

Via Overnight Mail 

Via First Class Mail 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

c\p Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

Via First Class Mail 

( )Other: 
Page 3 - Certificate of Service 

ON BEHALF OF RESPONDENTS PHISON 

ELECTRONICS CORPORATION, KINGSTON 

TECHNOLOGY COMPANY, INCOPORATED, 

KINGSTON TECHNOLOGY CORPORATIONl 

MEMO SUN INCORPORATED, AND PAYTON 

TECHNOLOGY CORPORATION: 

David M. Barkan, Esq. 

Thomas B. Manuel, Esq. 

FISH & RICHARDSON P.C. 

500 Arguello Street, Suite 500 

Redwood City, CA 94063 

F-650-839-5071 

P-650-839-5070 

Alan D. Smith, Esq. 

FISH & RICHARDSON P.C. 

225 Franklin Street 

Boston, MA 02 1 10-2804 

P-617-542-5070 

F-617-542-8906 

Michael Chibib, Esq. 

David Hoffman, Esq. 

FISH & RICHARDSON P.C. 

One Congress Plaza, Suite 8 10 

1 11 Congress Avenue 

Austin, TX 78701 

P-5 12-472-5070 

F-5 12-320-8935 

Joseph V. Colaianni, Jr., Esq. 

Jeffiey R. Whieldon, Esq. 

Ruffin B. Cordell, Esq. 

FISH & RICHARDSON PC 

1425 K Street, NW - Suite 1100 

Washington, DC 20005 

P-202-783-5070 

F-202-783-233 1 

( ) Via Hand Delivery (A, Via Overnight Mail 

( Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

($Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail (y Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

aVia First Class Mail 

( ) Other: 
Page 4 - Certificate of Service 

ON BEHALF OF RESPONDENTS KINGSTON 

TECHNOLOGY COMPANY, INC., KINGSTON 

TECHNOLOGY CORPORTION, MEMO SUN, INC., 

AND PAYTON TECHNOLOGY CORPORATION: 

S.J. Chtlstine Yang, Esq. 

Duncan Palmatier, Esq. 

Lisa Case, Esq. 

LAW OFFICES OF S.J. CHRISTINE YANG 

Plaza Del Lago 

17220 Newhope Street 

Suites 101 and 102 

Fountain Valley, CA 92708 

P-714-641-4022 

F-714-641-2082 

ON BEHALF OF RESPONDENTS KINGSTON 

TECHNOLOGY COMPANY, INCORPORATED AND 

KINGSTON TECHNOLOGY CORPORATION: 

Jon B. Streeter, Esq. 

Ajay B. Kundaria, Esq. 

KEKER & VAN NEST LLP 

710 Sansome Street 

San Francisco, CA 941 1 1 - 1704 

P-415-391-5400 

F-415-391-7188 

David A. Balto, Esq. 

2600 Virginia Avenue, NW - Suite 1 1 1.1 

The Watergate 

Washington, DC 20037 

P-202-295-2200 

( ) Via Hand Delivery 

( ) Via Overnight Mail (2 Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail i)a Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

Via Overnight Mail 

Via First Class Mail 

( )Other: 
Page 5 - Certificate of Service 

ON BEHALF OF RESPONDENTS A-DATA 

TECHNOLOGY CO., A-DATA TECHNOLOGY (USA) 

CO., LTD. AND CORSAIR MEMORY, INC., AFA 

TECHNOLOGIES, INC., INFOTECH LOGISTIC 

LLC, POWER QUOTIENT INTERNATIONAL CO., 

LTD., AND POWER QUOTIENT INTERNATIONAL 

JHK) CO., LTD., POI CORPORATION, CHIPSBRAND 

MICROELECTRONICS CO., LTD., CHIPSBANK 

TECHNOLOGY (SHENZHEN) CO., LTD., 

LTD., KASER CORPORATION, SKYMEDI 

CORPORATION AND SYSCOM DEVELOPMENT 

CO., LTD.: 

CHIPSBANK MICROELECTRONICS (HK) co., 

Sturgis M. Sobin, Esq. 

Alexander Chinoy, Esq. 

Maureen F. Browne, Esq. 

HELLER EHRMAN 

17 17 Rhode Island Avenue, NW 

Washington, DC 20036 

P-202-912-2000 

F-202-912-2020 

Robert T. Haslam, Esq. 

Stanley Young, Esq. 

Anupam Sharma, Esq. 

HELLER EHRMAN 

275 Middlefield Road 

Menlo Park, CA 94025-3506 

P-650-324-7000 

F-650-324-0638 

Jeffrey S. Walker, Esq. 

HELLER EHRMAN 

1 East Main Street, Suite 201 

Madison, WI 53703 

P-608-663-7460 

F-608-663-7499 

ON BEHALF OF RESPONDENTS SILICON MOTION 

TECHNOLOGY CORPORATION, SILICON 

MOTION, INCORPORATED (A TAIWAN 

CORPORATION), SILICON MOTION, 

INCORPORATED (A CALIFORNIA 

CORPORATION), AND SILICON MOTION 

( ) Via Hand Delivery 

( ) Via Overnight Mail ()d Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail c)o Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

c)o Via First Class Mail 

( )Other: 
Page 6 - Certificate of Service 

INTERNATIONAL, INCORPORATED, APACER 

TECHNOLOGY, INCORPORATED, APACER 

MEMORY AMERICA, INCORPORATED, ACE& 

INCORPORATED, TRANSCEND INFORMATION, 

INCORPORATED (TAIWAN), TRANSCEND 

INFORMATION, INCORPORATED (CALIFORNIA), 

AND TRANSCEND INFORMATION, MARYLAND 

INCORPORATED: 

Michael J. Bettinger, Esq. 

Chien-Wei Chou, Esq. 

Harold H. Davis, Esq. 

K & L GATES 

55 Second Street - Suite 1700 

San Francisco, CA 941 05 

P-415-882-8200 

F-415-882-8220 

Brian K. McCalmon, Esq. 

K & L GATES 

160 1 K Street, NW 

Washington, DC 20006- 1600 

P-202-778-9000 

F-202-778-9100 

( ) Via Hand Delivery 

( ) Via Overnight Mail ($ Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

Via Overnight Mail 

Via First Class Mail 
Page 7 - Certificate of Service 

ON BEHALF OF RESPONDENTS SKYMEDI 

CORPORATION, TRANSCEND INFORMATION, 

INCORPORATED (TaiwanLTRANSCEND 

INFORMATION (California),TRANSCEND 

INFORMATION MARYLAND, INCORPORATED 

AND SYSCOM DEVELOPMENT CO., LTD: 

Yitai Hu, Esq. 

Richard Chae, Esq. 

AKIN GUMP STRAUSS HAUER & FELD LLP 

2 Palo Alto Square 

3000 El Camino Real, Suite 400 

Palo Alto, CA 94306 

P-650-838-2000 

F-650-838-200 1 

Tobais E. Zimmerman, Esq. 

AKIN GUMP STRAUSS HAUER & FELD LLP 

1333 New Hampshire Avenue, NW 

Washington, DC 20036 

P-202-887-4000 

F-202-887-4288 

ON BEHALF OF RESPONDENTS LG 

ELECTRONICS, INCORPORATED AND LG 

ELECTRONICS USA, INCORPORATED: 

Peter H. Kang, Esq. 

Theodore Chandler, Esq. 

Duy D. Nguyen, Esq. 

SIDLEY AUSTIN LLP 

555 California Street, Suite 2000 

San Francisco, CA 94104 

P-415-772-1200 

F-4 15-772-7400 

Brian Koo, Esq. 

SIDLEY AUSTIN LLP 

1501 K Street, NW 

Washington, DC 20005 

P-202-736-847 1 

F-202-736-8711 

( ) Via Hand Delivery 

( Via Overnight Mail cd Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(% Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(y Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail & Via First Class Mail 

( )Other: 
Page 8 - Certificate of Service 

ON BEHALF OF RESPONDENTS DANE ELEC 

CORPORATION USA, DANE-MEMORY, S.A., AND 

DEANTUSAIOCHT DANE-ELEC TEO: 

Jeffrey G. Jacobs, Esq. 

THE LAW OFFICES OF JEFFREY G. JACOBS 

15770 Laguna Canyon Road 

Suite 100 

Irvine, CA 92618 

P-949-450-2968 

F-949-450-9368 

Charles C.H. Wu, Esq. 

WU & CHEUNG LLP 

98 Discovery 

Irvine, CA 926 18-3 105 

P-949-25 1-0 1 1 1 

P-949-251-1588 

RESPONDENTS: 

Zotek Electronic Co., Ltd. 

Dba Zodata Technology Limited 

Rm 2502,25/F 

EW International Tower 

120 Texaco Road, 

Tsuen Wan, Hong Kong 

Add-on Computer Peripherals, Inc. 

Add-on Computer Peripherals, LLC 

Dba Acp-Ep Memory 

Dba EP Memory 

34 Mauchly, Suite A 

Irvine, California 9261 8 

Add-on Technology Co. 

lF, No. 11 

Lane 206 

Da-An, Road Sec. 1 

Taipei, Taiwan, R.O. C. 

Behavior Tech Computer Corporation 

20F-B, No. 98, Sec. 1, Xintai 5th Road 

Xizhi City, Taipei County 

Taiwan, R.O.C. 

( ) Via Hand Delivery 

( Via Overnight Mail (d Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail (9 Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

Via First Class Mail 

( ) Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

('$) Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

()Q Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail e Via First Class Mail 

( )Other: 
Page 9 - Certificate of Service 

Emprex Technologies Corporation 

20F, 108 Hsin Tai 5th Rd., Sec. 1 

Xizhi City, Taipei County 

Taiwan, R.O.C. 

Behavior Tech Computer (USA) Corporation 

DbaBTCUSA . 

41 80 Business Center Drive 

Fremont, California 94538 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( Via Overnight Mail 4 Via First Class Mail 

( )Other: