IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

NETLIST, INC.

Plaintiff,

vs.

SK HYNIX INC. and 

SK HYNIX AMERICA INC.

Defendants

Civil Action No. 6:20-cv-00194-ADA

Civil Action No. 6:20-cv-00525-ADA

JURY TRIAL DEMANDED

PLAINTIFF NETLIST, INC.’S OPENING CLAIM CONSTRUCTION BRIEF

AS TO U.S. PATENT NO. 10,217,523

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 1 of 30
ii

TABLE OF CONTENTS

I. INTRODUCTION ...............................................................................................................1

II. BACKGROUND OF THE TECHNOLOGY ......................................................................2

III. LEGAL PRINCIPLES GOVERNING CLAIM CONSTRUCTION ..................................3

IV. LEVEL OF ORDINARY SKILL IN THE ART .................................................................5

V. DISPUTED CLAIM TERMS FOR CONSTRUCTION .....................................................5

A. The “Mode” Claim Terms .............................................................................................5

1. Intrinsic Evidence Compels Netlist’s Construction.................................................6

2. Extrinsic Evidence Also Supports Netlist’s Construction .......................................8

3. Defendants’ Proposal Incorrectly Seeks to Import Limitations into the Claim 

Language..................................................................................................................8

B. The “Data Handler” Claim Elements...........................................................................10

1. The ‘523 Patent Specification Demonstrates The Scope of “Data Handler Logic 

Element[s]” and “Data Handler” ...........................................................................11

2. Defendants’ Attempt to Import Unsupported Limitations into the Claim Language 

Should be Rejected ................................................................................................12

3. Defendants’ Prior Positions and the Extrinsic Record Contradicts Defendants’ 

Proposed Constructions .........................................................................................15

C. “Data Module” .............................................................................................................17

1. Defendants’ Proposed Construction is Erroneous in View of the ‘523 Patent 

Specification ..........................................................................................................18

2. Claim Differentiation Prohibits Reading in “Multiple Data Handlers”.................20

VI. CONCLUSION..................................................................................................................20

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iii

TABLE OF AUTHORITIES

Page(s)

Cases

Acumed LLC v. Stryker Corp.,

483 F.3d 800 (Fed. Cir. 2007)....................................................................................................7

CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG,

224 F.3d 1308 (Fed. Cir. 2000)................................................................................................17

Chimie v. PPG Indus., Inc.,

402 F.3d 1371 (Fed. Cir. 2005)..........................................................................................13, 14

Cont’l Circuits LLC v. Intel Corp.,

915 F.3d 788 (Fed. Cir. 2019)....................................................................................................7

Curtiss-Wright Flow Control Corp. v. Velan, Inc.,

438 F.3d 1374 (Fed. Cir. 2006)................................................................................................20

Digital Retail Apps, Inc. v. H-E-B LP,

Civ. No. 6-19-CV-00167-ADA, 2020 U.S. Dist. LEXIS 11094 (Jan. 23, 2020) 

(Albright, J.)...........................................................................................................................4, 7

Edwards Lifesciences LLC v. Cook Inc.,

582 F.3d 1322 (Fed. Cir. 2009)................................................................................................14

Eko Brands, LLC v. Adrian Rivera Maynez Enters.,

946 F.3d 1367 (Fed. Cir. 2020)................................................................................................14

Hewlett-Packard Co. v. Repeat-O-Type Stencil Mfg. Corp., Inc.,

123 F.3d 1445 (Fed. Cir. 1997)..................................................................................................9

Intamin Ltd. v. Magnetar Techs., Corp.,

483 F.3d 1328 (Fed. Cir. 2007)................................................................................................20

Internet Machs. LLC v. Alienware Corp.,

No. 6:10-CV-023, 2011 WL 2551295 (E.D. Tex. June 24, 2011) ....................................13, 14

Kroy IP Holdings, LLC v. Safeway, Inc.,

No. 2:12-cv-800-WCB, 2014 U.S. Dist. LEXIS 102136 (E.D. Tex., July 28, 

2014) ........................................................................................................................................11

O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd.,

521 F.3d 1351 (Fed. Cir. 2008)..................................................................................................3

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005) (en banc)........................................................................ passim

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 3 of 30
iv

SanDisk Corp. v. Memorex Products, Inc.,

415 F.3d 1278 (Fed. Cir. 2005)..................................................................................................9

Seachange Int’l, Inc. v. C-COR Inc.,

413 F.3d 1361 (Fed. Cir. 2005)................................................................................................17

Sparton Corp. v. United States,

68 Fed. Cl. 34 (2005)...............................................................................................................13

Tech. Properties Ltd. LLC v. Huawei Techs. Co.,

849 F.3d 1349 (Fed. Cir. 2017)..............................................................................................5, 8

Thorner v. Sony Computer Entm’t Am. LLC,

669 F.3d 1362 (Fed. Cir. 2012)........................................................................................ passim

Toshiba Corp. v. Imation Corp.,

681 F.3d 1358 (Fed. Cir. 2012)..................................................................................................9

U.S. Surgical Corp. v. Ethicon, Inc.,

103 F.3d 1554 (Fed. Cir. 1997)................................................................................................14

Vitronics Corp. v. Conceptronic, Inc.,

90 F.3d 1576 (Fed. Cir. 1996)....................................................................................4, 6, 11, 18

World Class Tech. Corp. v. Ormco Corp.,

769 F.3d 1120 (Fed. Cir. 2014)................................................................................................20

Zodiac Pool Care, Inc. v. Hoffinger Indus.,

206 F.3d 1408 (Fed. Cir. 2000)..................................................................................................4

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 4 of 30
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TABLE OF EXHIBITS

Exhibit Description

1 U.S. Patent No. 9,858,218

2 U.S. Patent No. 10,474,595

3 Brent Keeth et al., DRAM CIRCUIT DESIGN (IEEE, 2008)

4

Claim Construction Order, Certain Memory Modules and Components Thereof, 

and Products Containing Same, Inv. No. 337-TA-1089, Order No. 17 (USITC 

Aug. 30, 2018)

5

Initial Determination, Certain Memory Modules and Components Thereof, and 

Products Containing Same, Inv. No. 337-TA-1089 (USITC Oct. 21, 2019)

6 Computer Desktop Encyclopedia (9th Ed., 2001)

7 Microsoft Computer Dictionary (5th Ed., 2002)

8

Hearing Transcript, Certain Memory Modules and Components Thereof, and 

Products Containing Same, Inv. No. 337-TA-1023, (USITC May 8, 2017)

9

SK hynix v. Netlist, IPR2020-01044, Paper No. 1, Petition for Inter Partes Review 

(PTAB Jun. 8, 2020)

10 SK hynix v. Netlist, IPR2020-01042, Paper No. 1, Petition for Inter Partes Review 

(PTAB Jun. 8, 2020)

11

Notice of Comm’n Det. to Review In Part Final ID, Certain Memory Modules and 

Components Thereof, and Products Containing Same, Inv. No. 337-TA-1089, 

(USITC Jan. 31, 2020)

12 ’595 Patent IDS dated March 1, 2019

13

Rebuttal Witness Statement of Robert Murphy, Certain Memory Modules and 

Components Thereof, and Products Containing Same, Inv. No. 337-TA-1089 

(USITC Nov. 30, 2018) (Confidential)

14 The IEEE Standard Dictionary of Electrical and Electronics Terms (6th Ed., 1996)

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Exhibit Description

15

Transcript of the Deposition of Robert G. Wedig, Certain Memory Modules and 

Components Thereof, and Products Containing Same, Inv. No. 337-TA-1023 

(USITC Mar. 30, 2017) (Confidential)

16

Initial Determination, Certain Memory Modules and Components Thereof, and 

Products Containing Same, Inv. No. 337-TA-1023, Initial Determination (USITC 

Nov. 11, 2017)

17 Merriam-Webster’s Collegiate Dictionary (10th ed., 2001)

18

Rebuttal Witness Statement of Dr. William Mangione-Smith, Certain Memory 

Modules and Components Thereof, and Products Containing Same, Inv. No. 337-

TA-1023 (USITC Apr. 14, 2017) (Confidential)

19

Corrected Witness Statement of Robert G. Wedig, Certain Memory Modules and 

Components Thereof, and Products Containing Same, Inv. No. 337-TA-1023 

(USITC Apr. 6, 2017) (Confidential)

20 Deposition Transcript Excerpt of Robert G. Wedig, Ph.D. dated October 16, 2018 

(CBI)

21 U.S. Patent No. 10,217,523 

22

Witness Statement of William Mangione-Smith, Certain Memory Modules and 

Components Thereof, and Products Containing Same, Inv. No. 337-TA-1023 

(USITC Apr. 6, 2017) (Confidential)

23

Initial Determination, Certain Memory Modules and Components Thereof, and 

Products Containing Same, Inv. No. 337-TA-1023 (USITC Nov. 14, 2017)

24 Non-Final Rejection (USPTO March 9, 2016)

25 Applicant Arguments (USPTO July 11, 2016)

26 Final Rejection (USPTO October 20, 2016)

27

SK hynix’s Pre-Hearing Brief, Certain Memory Modules and Components Thereof, 

and Products Containing Same, Inv. No. 337-TA-1023 (USITC April 18, 2017) 

(Confidential)

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Exhibit Description

28

Rebuttal Witness Statement of William Hoffman, Certain Memory Modules and 

Components Thereof, and Products Containing Same, Inv. No. 337-TA-1023

(USITC Apr. 16, 2017)

29 U.S. Patent No. 8,689,064

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 7 of 30
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TABLE OF DISPUTED TERMS AND PROPOSED CONSTRUCTIONS

Claim Term Plaintiff Defendants

“first mode” The term “first” does not require 

construction.

The term “mode” means “a distinct 

behavioral state that a system may 

be switched to.”

“normal mode”

“second mode” The term “second” does not require 

construction.

The term “mode” means “a distinct 

behavioral state that a system may 

be switched to.”

“self-test mode”

“data handler 

logic element[s]”

The term “data handler logic 

element[s]” does not require 

construction and should receive its 

plain and ordinary meaning as 

understood by a person of ordinary 

skill in the art at the time of the 

invention.

“logic element(s) that generate and 

manage data, where generate means 

to produce (i.e., bring into 

existence, including by 

transformation or modification of 

information and/or data received 

from another component), which 

does not include packing and 

unpacking data from a packet, and 

manage means to process, transfer 

and/or control the movement of”

“data handler” The term “data handler” does not 

require construction and should 

receive its plain and ordinary 

meaning as understood by a person 

of ordinary skill in the art at the 

time of the invention.

“circuitry that generates and 

manages data, where generate and 

manage have the meanings set forth 

above”

“data module” The term “data module” does not 

require construction and should 

receive its plain and ordinary 

meaning as understood by a person 

of ordinary skill in the art at the 

time of the invention.

“module including multiple [data 

handlers]” 

(footnote: handlers construed 

separately below)

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 8 of 30
Pursuant to the Amended Scheduling Order Governing the ‘525 And ‘194 Cases (Dkt. No.

73), Plaintiff Netlist, Inc. (“Netlist”) submits its opening claim construction brief on the disputed

claim terms of U.S. Patent No. 10,217,523 (Ex. 21

1

) (the “ʼ523 Patent”).

I. INTRODUCTION

Patent claims should be interpreted as written. Phillips v. AWH Corp., 415 F.3d 1303, 

1312-13 (Fed. Cir. 2005) (en banc). Ignoring this axiom, Defendants seek to re-write the claims to 

incorporate unclaimed limitations taken from certain embodiments, dependent claims, and even 

related patents. For example, Defendants attempt to rewrite the terms “first mode” and “second 

mode” to recite specific modes of operation disclosed in the specification. This contravenes basic 

claim construction law. There is no support for limiting these terms to two specific modes disclosed 

in the specification, as Defendants seek to do here. 

Similarly, Defendants borrow the “generate” limitation from the claims of patents not at 

issue here and attempt to force that term into the “data module,” “data handler,” and “data handler 

logic elements” claim terms of the ’523 Patent. Not stopping there, Defendants take the 

extraordinary additional step of seeking to further construe two unsupported sub-terms they 

injected into their proposed construction—neither of which are in the ’523 Patent claims. To make

this unsupported argument, Defendants point to ordinary words widely used in the field: data, 

module, handler, and logic elements. To prevail, Defendants must show that the patentee acted as 

its own lexicographer and redefined these terms, but they cannot do so.

The Court should reject Defendants’ inappropriate attempts to rewrite the claims.

 

1 Exhibits numbering continues from the last round of claim construction briefing. See ECF Nos. 

053, 061, 066.

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 9 of 30
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II. BACKGROUND OF THE TECHNOLOGY

As with the other patents for construction in this consolidated matter, the technology 

relevant to the ’523 Patent pertains to memory modules. Memory modules fit into a memory slot 

on a computer motherboard and serve as memory, storing information for fast access by the 

computer system’s processor. Memory modules like the products accused in this case are printed 

circuit boards (PCBs) that contain DRAM chips (among other components) mounted on both sides 

of the PCB. These are called dual in-line memory modules (“DIMMs”). 

As depicted below, multiple DIMMs can be inserted into the sockets of a server or 

computer workstation in order to serve as the external memory of a CPU. See, e.g., Ex. 22, Witness 

Statement of William Mangione-Smith, 1023 Inv., at Q/A 96, 221. The CPU interacts with the 

DIMMs via memory controller, as depicted below. 

The type of DIMMs accused of infringing the ’523 Patent are referred to as Load-Reduced 

DIMMs (“LRDIMMs”). LRDIMMs utilize a distributed architecture, including multiple data 

buffers (“DBs”) in addition to a register clock driver device (“RCD”). See, e.g., id. at Q/A 64. As 

shown in the figure below depicting the LRDIMM architecture, nine data buffers (boxed in red)

reside on the PCB. Id. at Q/A 67-71. The DBs are electrically connected to the DRAM chips, the 

RCD, and—via the gold connectors at the bottom of the DIMM—the host memory controller.

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 10 of 30
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This distributed architecture reduces congestion and the electrical load on the host memory 

controller caused by the high volume of read and write transactions, allowing the LRDIMM to 

achieve faster performance. Id.

To avoid failures of memory components in the system, prior to normal use DIMMs 

undergo a number of tests both individually and as part of a fully assembled system. See, e.g., ’523 

Patent at 1:41-3; Ex. 22 at Q/A 67-71. An external tester or test apparatus can be used to apply 

stimulus, e.g., test patterns, and may assist in verifying the results of the test. See, e.g., Ex. 22 at 

Q/A 74-77. Another approach is “self-test,” which occurs when parts of the device or system under 

test are used as part of the test apparatus. Id. This reduces the complexity or amount of work an 

external tester needs to perform. Id. When extra circuitry or modes are added to the circuits or 

module to perform the testing, this can be referred to as Built-In Self-Test (“BIST”). Id. BIST may 

still require the use of an external tester to test a particular device, or there might be fully contained 

testing functionality in a device or system. Id.

III. LEGAL PRINCIPLES GOVERNING CLAIM CONSTRUCTION 

“The purpose of claim construction is to ‘determine the meaning and scope of the patent 

claims asserted to be infringed.’” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 

F.3d 1351, 1360 (Fed. Cir. 2008) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 

976 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370 (1996)). The analysis begins with the words of 

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 11 of 30
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the claim, which are given their ordinary and customary meaning as understood by a person of 

skill in the art at the time of the invention. Phillips, 415 F.3d at 1312-13. “Importantly, the person 

of ordinary skill in the art is deemed to read the claim term not only in the context of the particular 

claim in which the disputed term appears, but in the context of the entire patent, including the 

specification.” Id. at 1313. As a result, claim construction focuses on the claims, the specification, 

and the prosecution history. These materials comprise the “intrinsic” evidence. Id. at 1315. 

Only when the intrinsic evidence fails to shed light on the meaning of claim terms may 

courts consider extrinsic evidence, such as expert testimony, dictionaries, treatises, and prior art 

not cited in the prosecution history. Zodiac Pool Care, Inc. v. Hoffinger Indus., 206 F.3d 1408, 

1414 (Fed. Cir. 2000) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-84 (Fed. 

Cir. 1996)). But, “extrinsic evidence in general, and expert testimony in particular, may be used 

only to help the court come to the proper understanding of the claims; it may not be used to vary 

or contradict the claim language.” Vitronics, 90 F.3d at 1584 (citing Markman, 52 F.3d at 981). 

There are only two exceptions to the general rule that claims are given their ordinary and 

customary meaning, when the patentee: (1) acts as his/her own lexicographer or (2) disavows the 

full scope of the claim term either in the specification or during prosecution. Digital Retail Apps, 

Inc. v. H-E-B LP, Civ. No. 6-19-CV-00167-ADA, 2020 U.S. Dist. LEXIS 11094, at *5 (Jan. 23, 

2020) (Albright, J.) (citing Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365-66 

(Fed. Cir. 2012)). “To act as its own lexicographer, a patentee must clearly set forth a definition 

of the disputed claim term other than its plain and ordinary meaning” and “clearly express an intent 

to redefine the term.” Id. Disavowal requires “a clear and unmistakable disclaimer.” Thorner, 669 

F.3d at 1366-67. “If the challenged statements are ambiguous or amenable to multiple reasonable 

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 12 of 30
5

interpretations, prosecution disclaimer is not established.” Tech. Properties Ltd. LLC v. Huawei 

Techs. Co., 849 F.3d 1349, 1358 (Fed. Cir. 2017) (citation omitted). 

IV. LEVEL OF ORDINARY SKILL IN THE ART 

The ITC concluded with regard to the Parent Patents2of the ’523 Patent that a person of 

ordinary skill in the art would have “a Bachelor’s degree in electrical engineering, computer 

engineering, or in a related field and at least one year of work experience relating to memory 

systems, and would be familiar with the design of memory devices, memory modules, and builtin-self test or BIST.” Ex. 23, Initial Determination, 1023 Inv., at 19. This Court should adopt the 

same definition here, for the same reasons. 

V. DISPUTED CLAIM TERMS FOR CONSTRUCTION

A. The “Mode” Claim Terms

Claim Term Plaintiff Defendants

“first mode” The term “first” does not require construction.

The term “mode” means “a distinct behavioral state that a 

system may be switched to.”

“normal mode”

“second mode” The term “second” does not require construction.

The term “mode” means “a distinct behavioral state that a 

system may be switched to.”

“self-test mode”

The Court should adopt Netlist’s proposed construction that “mode” means “a distinct 

behavioral state that a system may be switched to.” The Court should also decline to construe the 

terms “first” and “second,” which are easily understandable by laypersons and skilled artisans 

alike. Netlist’s proposal is supported by the intrinsic evidence, which alone compels adopting it. 

 

2 The parent patents to the ’523 Patent are U.S. Patent Nos. 8,001,434, 8,359,501, and 8,689,064. 

(collectively, the “Parent Patents”). Netlist asserted these parent patents against Defendants in 

International Trade Commission Investigation No. 337-TA-1023.

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 13 of 30
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Extrinsic evidence also supports Netlist’s proposed construction. Defendants’ proposal fails to 

define the disputed term, “mode,” and instead improperly attempts to import elements of the 

preferred embodiments of the patents into the claims.

1. Intrinsic Evidence Compels Netlist’s Construction 

Claim interpretation starts with the intrinsic record, “the patent itself, including the claims, 

the specification and, if in evidence, the prosecution history. Such intrinsic evidence is the most 

significant source of the legally operative meaning of disputed claim language.” Vitronics, 90 F.3d 

at 1582 (citing Markman, 52 F.3d at 979). Here, the specification supports, if not compels, the 

conclusion that “mode” means “distinct behavioral state that a system may be switched to.” The 

specification discusses, for example, “a memory subsystem [that] is operable in any of a plurality 

of modes including a normal mode and a test mode[]” as separate and distinct exemplary modes 

during which operations occur. ʼ523 Patent at 2:38-47 (emphasis added). With this, the 

specification clearly contemplates additional modes beyond merely one “normal mode” and one 

“test mode.” Further, the specification discloses: 

For example, the memory module 10 may default to a non-test mode (e.g., normal 

operational mode) and the switches 44 of the data handlers 30 and the memory 

device controller 34 are not configured in a test mode. . . . For example, configuring 

the test mode may include switching (e.g., by configuring the test controller 36) the 

mode of the memory module 10 from a normal operation mode to the test mode.

Id. at 13:59-14:4 (emphasis added). Therefore, the exemplary modes taught in the specification 

are just that: exemplary and not limiting. But it is also plain that these exemplary modes are also 

distinct—in other words, the module may operate in one mode or another, but not both at the same 

time. Netlist’s construction captures that meaning of mode taught by the patent. By contrast, and 

even apart from their improper attempt to read limitations into the claim language based on 

exemplary embodiments, Defendants’ constructions fail to even address its meaning.

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Moreover, contrary to Defendants’ proposals, the claimed “modes” are not limited to

“normal” and “self-test.” As noted, the modes taught in the specification are merely exemplary, 

and should not be injected into the claims. See Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 

797-98 (Fed. Cir. 2019) (embodiments should not be read into claim terms); Acumed LLC v. 

Stryker Corp., 483 F.3d 800, 805 (Fed. Cir. 2007) (quoting Phillips, 415 F.3d at 1323) 

(“‘[A]lthough the specification often describes very specific embodiments of the invention, we 

have repeatedly warned against confining the claims to those embodiments.’”). Specifically, the 

claimed modes may be any “plurality of modes” having distinct behavioral states taught by the 

specification. ʼ523 Patent at 2:38-47.

The claims, not exemplary modes described in the specification, limit the properties of the 

recited first and second modes. Indeed, the claims expressly set forth what the respective “modes”

require. See id. at claim 1 (“wherein the control module in the first mode is configured to receive 

system address and control signals from the system memory controller ... wherein the control 

module in the second mode is configured to output second memory address and control signals to 

the address and control ports of the memory devices, ....”).

There is nothing in the specification that supports, let alone requires, Defendants’ 

construction that the “first” mode must be a “normal” mode. See, e.g., ʼ523 Patent at 15:9-12 (“For 

example, the testing logic (e.g., the control module 22 and/or the data module 28) may be generally 

inactive and the memory module 10 may default to a functional (e.g., non-test) mode.”) (emphasis 

added). There is also nothing in the specification indicating that the patentee intended to act as a 

lexicographer, such as one that might impose a requirement that “second” can only mean “selftest.” See Digital Retail Apps, Inc., 2020 U.S. Dist. LEXIS 11094, at *5 (“To act as its own 

lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than 

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 15 of 30
8

its plain and ordinary meaning” and must “clearly express an intent to redefine the term.”) 

(emphasis added) (citing Thorner, 669 F.3d at 1365-66). 

In addition, disavowal requires “a clear and unmistakable disclaimer.” Thorner, 669 F.3d 

at 1366-67. If language in the prosecution history is “ambiguous or amenable to multiple 

reasonable interpretations, prosecution disclaimer is not established.” Tech. Properties Ltd. LLC, 

849 F.3d at 1358 (citing MIT v. Shire Pharm., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016)). Netlist 

is aware of nothing in the record that might come close to supporting such unmistakable disclaimer. 

2. Extrinsic Evidence Also Supports Netlist’s Construction 

Although it is unnecessary here to consult extrinsic evidence given the clear teachings of 

the intrinsic record, technical dictionaries also support Netlist’s proposed construction. For 

example, the Computer Desktop Encyclopedia defines “mode” as “[a]n operational state that a 

system, has been switched into” which “implies at least two possible conditions.” Ex. 6, Computer 

Desktop Encyclopedia (9th Ed.) at 1023NETLIST_01831458. Likewise, the Microsoft Computer 

Dictionary defines “mode” as “the operational state of a computer or a program. For example, edit 

mode is the state in which a program accepts changes to a file.” Ex. 7, Microsoft Computer 

Dictionary (5th Ed., 2002) at NETLIST_WDTEX-0000009-11. A skilled artisan would be familiar 

with these accepted technical definitions.

3. Defendants’ Proposal Incorrectly Seeks to Import Limitations into the 

Claim Language

Defendants’ proposals are overly limiting on their face. In particular, Defendants’ proposed 

construction, “‘first mode’ means ‘normal mode’ [and] ‘second mode’ means ‘self-test mode,’” 

seeks to import into the claims exemplary embodiments taught in the specification. The 

specification states that a “memory subsystem [that] is operable in any of a plurality of modes 

including a normal mode and a test mode.” ʼ523 Patent at 2:38-47 (emphasis added). The Federal 

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9

Circuit has repeatedly recognized that the plain-English term “including” is an open-ended and 

non-limiting word in the context of claim language. See SanDisk Corp. v. Memorex Products, Inc., 

415 F.3d 1278, 1284 (Fed. Cir. 2005) (“As a patent law term of art, ‘includes’ means ‘comprising.’ 

Neither includes, nor comprising, forecloses additional elements that need not satisfy the stated 

claim limitations.” (citations omitted)); Hewlett-Packard Co. v. Repeat-O-Type Stencil Mfg. Corp., 

Inc., 123 F.3d 1445, 1451, (Fed. Cir. 1997) (“The claim term ‘including’ is synonymous with 

‘comprising,’ thereby permitting the inclusion of unnamed components.”). Therefore, it would be 

improper to limit the “first mode” and “second mode” to the “normal mode” and “[self-]test mode”

disclosed in the exemplary embodiments taught in the specification.

Defendants’ constructions also do not comport with the understanding one skilled in the 

art would have of the plain language of the claims. Defendants’ construction contravenes a longestablished principle of claim construction law by improperly importing limitations. Absent clear 

and unmistakable disclaimer, or the patentee acting as its own lexicographer, claim construction 

“involves little more than the application of the widely accepted meaning of commonly understood 

words.” Phillips, 415 F.3d at 1312. Here, Defendants can find no disclaimer or lexicography in the 

specification or file history to import their overly narrow restrictions into the words “first” and 

“second,” just as there is no support in the record for importing additional limitations into the term 

“mode.” Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1369 (Fed. Cir. 2012) (“Absent 

disclaimer or lexicography, the plain meaning of the claim controls.”). 

The prosecution history further supports Netlist’s position that the normal and self-test are 

exemplary modes. For example, in a March 9, 2016 non-final rejection, the examiner rejected a 

then-pending claim because the “plurality of modes” claim limitation referred only to a “test mode” 

and was thus allegedly too vague. Ex. 24, March 9, 2016 Non-Final Rejection at 5. According to 

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10

the examiner, “the interrelationship and/or interconnection between the plurality of modes are 

unclear.” Id. In response, the Applicant amended the challenged claim and argued that “a ‘normal 

mode’ is added as another exemplary mode of the plurality of modes[.]” Ex. 25, July 11, 2016, 

Applicant Arguments at 16 (emphasis added). The Examiner did not renew his objection. See Ex. 

26, October 20, 2016 Final Rejection. Thus, the examiner understood and agreed, and the public 

was thereby on notice, that “normal” and “test” modes are merely exemplary of the plurality of 

modes taught by the specification. 

B. The “Data Handler” Claim Elements

Claim Term Plaintiff Defendants

“data handler 

logic element[s]”

The term “data handler logic 

element[s]” does not require 

construction and should 

receive its plain and ordinary 

meaning as understood by a 

person of ordinary skill in 

the art at the time of the 

invention.

“logic element(s) that generate and manage 

data, where generate means to produce 

(i.e., bring into existence, including by 

transformation or modification of 

information and/or data received from 

another component), which does not 

include packing and unpacking data from a 

packet, and manage means to process, 

transfer and/or control the movement of”

“data handler” The term “data handler” does 

not require construction and 

should receive its plain and 

ordinary meaning as 

understood by a person of 

ordinary skill in the art at the 

time of the invention.

“circuitry that generates and manages data, 

where generate and manage have the 

meanings set forth above”

The terms “data handler logic element[s]” and “data handler” need no construction. These 

simple terms are readily understood by a person of ordinary skill in the art reading the ’523 Patent 

specification. See Phillips, 415 F.3d at 1314 (“the ordinary meaning of claim language as 

understood by a person of skill in the art may be readily apparent even to lay judges, and claim 

construction in such cases involves little more than the application of the widely accepted meaning 

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 18 of 30
11

of commonly understood words.”). Defendants’ proposed constructions for these terms do not 

resolve any ambiguity or dispute over claim scope, or provide any clarity that might be lacking 

from the plain language of the claims. Instead, Defendants’ proposed construction seeks to 

substitute simple four-word and two-word claim terms with constructions comprised of over 50 

words of unnecessary and ambiguous verbiage—including two derivative constructions—that 

would also improperly import embodiments as limitations into the claims. Further, none of these 

terms are difficult technical terms for which a construction would help the jury understand the 

meaning of the term. Kroy IP Holdings, LLC v. Safeway, Inc., No. 2:12-cv-800-WCB, 2014 U.S. 

Dist. LEXIS 102136, at *2 (E.D. Tex., July 28, 2014). 

In short, these claim terms do not need to be construed.

1. The ‘523 Patent Specification Demonstrates The Scope of “Data 

Handler Logic Element[s]” and “Data Handler”

As noted, claim interpretation starts with the intrinsic record, which “is the most significant 

source of the legally operative meaning of disputed claim language.” Vitronics, 90 F.3d at 1582 

(citing Markman, 52 F.3d at 979). The claim terms should be “read in view of the specification, of 

which they are a part.” Phillips, 415 F.3d at 1309. Here, to the extent there might be any doubt in 

view of the readily understood and plain language of the claim language itself, the specification 

provides ample additional guidance to a person skilled in the art.

For example, Figure 3, annotated and excerpted below, demonstrates how the “data handler 

logic element” and “data handler” are related to the other components. See ’523 Patent at Fig. 3. 

According to the specification, the memory module “includes a data module 28,” highlighted in 

red below, “comprising a plurality of data handlers 30,” highlighted in blue below. ’523 Patent at 

5:15-16. Further, “the data handlers 30 ... includes a data handler logic element 46,” highlighted 

in green below. ’523 Patent at 10:37-38. However, the data handlers need not necessarily comprise 

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 19 of 30
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a data generation element, as Defendants may contend. Rather, the components depicted in Figure 

3 are merely exemplary. Id. at 12:44-50 (components may include “the switch 44, the data handlers 

30, the data handler logic element 46, the data generation element 54, and/or verification element 

56”) (emphasis added).

Based on these express teachings of the intrinsic evidence alone, there is no need to redefine these 

terms. See Phillips, 415 F.3d at 1317. Thus, the Court should decline to construe these terms and 

instead adopt a plain and ordinary meaning.

2. Defendants’ Attempt to Import Unsupported Limitations into the 

Claim Language Should be Rejected

Defendants propose a potpourri of limitations, each one both less helpful and more 

erroneous than the last. To best understand it, the table below deconstructs this proposal3:

 

3 While this table shows the construction for “data handler logic element[s],” Defendants’ 

construction of “data handler” suffers from the same deficiencies.

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 20 of 30
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Defendants’ Construction Deconstruction

“logic element(s) that generate and manage

data, where generate means to produce (i.e., 

bring into existence, including by 

transformation or modification of information 

and/or data received from another component), 

which does not include packing and unpacking 

data from a packet, and manage means to 

process, transfer and/or control the movement 

of”

(1) Using the terms that it attempts to define.

(2) Ambiguous, extraneous, and unsupported

verbs.

(3) First derivative construction of non-claimterm “generate.”

(4) Additional negative limitation.

(5) Second derivative construction of nonclaim-term “manage.”

 First, shown in red above, Defendants do not propose a construction of “data” and “logic 

elements,” but rather includes these terms in the construction itself, resulting in an improper 

circular definition. See Sparton Corp. v. United States, 68 Fed. Cl. 34, 47 (2005) (stating 

that a “circular definition (i.e., one that uses the word that it attempts to define in the 

definition itself) [is] clearly improper”). 

 Second, shown in blue above, Defendants propose that the only remaining word –

“handler” – means something that “generates and manages data.” But recognizing that 

adopting this language would necessarily introduce unhelpful and confusing ambiguities, 

Defendants are forced to clarify. See Internet Machs. LLC v. Alienware Corp., No. 6:10-

CV-023, 2011 WL 2551295 (E.D. Tex. June 24, 2011), at *6 (rejecting proposed unhelpful 

and confusing construction); Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1377 (Fed. Cir. 

2005) (“Courts construe claim terms in order to assign a fixed, unambiguous, legally 

operative meaning to the claim.”). Importantly, there is no support in the intrinsic record

requiring the terms “generate” and “manage” to be read into the claims. See Thorner, 669 

F.3d at 1366.

 Third, shown in purple above, Defendants propose the first of two derivative constructions 

of their own construction, with a definition for “generate” that would also inject additional 

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 21 of 30
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ambiguity and confusion into the claim term. As the Federal Circuit has made clear, 

construing terms that do not appear in the claims is typically not acceptable. See Edwards 

Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009) (“we do not ordinarily 

construe words that are not in claims.”). No basis exists to depart from this general practice.

 Fourth, shown in green above, Defendants propose adding an unsupported negative

limitation to purportedly clarify what the non-claim-term “generate” does not include. See

Eko Brands, LLC v. Adrian Rivera Maynez Enters., 946 F.3d 1367, 1381 (Fed. Cir. 2020) 

(“Negative limitations added during claim construction must find support either in the 

specification or the prosecution history.”). In particular, the “packing and unpacking” 

limitation has absolutely no support in the intrinsic record and is both ambiguous and 

confusing. Internet Machs. LLC, 2011 WL 2551295 at *6; Chimie, 402 F.3d at 1377 

(“Courts construe claim terms in order to assign a fixed, unambiguous, legally operative 

meaning to the claim.”).

 Fifth, shown in orange above, Defendants propose the second of two derivative 

constructions of their own construction, with a definition for “manage.” This is 

unnecessary and improper for the same reasons that adding a derivative construction for 

the term “generate” would be improper. See Edwards Lifesciences LLC, 582 F.3d at 1334 

(“we do not ordinarily construe words that are not in claims.”).

Defendants’ fractured, unsupported, and unhelpful approach fails to serve the central 

purpose of claim construction, namely “to clarify and when necessary to explain what the patentee 

covered by the claims.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) 

(emphasis added). And nothing in the specification justifies Defendants’ multi-layered approach 

to construing these terms. Claims should be given their plain and ordinary meaning unless one of 

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 22 of 30
15

two circumstances exists: a patentee acts as her own lexicographer, or disavows the full scope of 

a claim term. Thorner, 669 F.3d at 1365-66. Both avenues require a clear and explicit statement 

by the patentee. Id. Neither circumstance exists in the record.

At best Defendants may try to point to certain embodiments in the specification to justify 

importing the extraneous limitations. But Phillips cautions against rewriting the claims to fit the 

disclosed embodiments. Phillips, 415 F.3d at 1323 (“we have repeatedly warned against confining 

the claims to those embodiments.”). Moreover, the mere fact that some embodiments, or even all 

embodiments, contain a particular limitation is “not enough” to read those limitations from the 

specification into the claims. Id. at 1466-67 (“We do not read limitations from the specification 

into claims; we do not redefine words. Only the patentee can do that.”). As noted, there is no reason 

here to deviate from the plain and ordinary meaning of these claim terms. The Court should decline 

to improperly rewrite the claims as Defendants urge.

3. Defendants’ Prior Positions and the Extrinsic Record Contradicts

Defendants’ Proposed Constructions

Even worse, Defendants’ attempts to read the verbs “generate” and “manage” into the 

terms, when viewed in the context of the entire claim element, run directly counter to prior 

positions Defendants have taken. The relevant claim element in the ’523 Patent reads: “the data 

module in the second mode is configured . . . to transmit one or more second data signals including 

data patterns provided by the data handler logic elements to the data ports” (claim 1) and “each 

respective data handler is configured to provide respective data patterns” (claim 19). ’523 

Patent. Thus, the operative verb with respect to “data handler logic elements” and “data handler” 

is “provide.” See id.

Importantly, Defendants previously took the position that, with respect to the Parent 

Patents with the same specification, the verb “generate” is incompatible with the verb “provide.” 

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 23 of 30
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Specifically, where parent patent claims actually claimed data handlers that “generate” (unlike 

here), Defendants argued that data handlers that “merely provided” cannot meet this limitation. 

Ex. 27, SK hynix’s Pre-Hearing Brief, 1023 Investigation, at 71-72. Further, Defendants’ expert 

testified that “the term ‘generate’ . . . does not include . . . ‘provide.’” Ex. 28, Rebuttal Witness 

Statement of William Hoffman at Q/A 234 (emphasis added). Defendants expressly took the same 

position. Ex. 27, Excerpt from SK hynix’s Pre-Hearing Brief at 68. Defendants’ demonstrative 

excerpted below shows that Defendants and their expert believe that “generate” does not mean

“provide.” Ex. 28, Rebuttal Witness Statement of William Hoffman at Q/A 234.

Defendants now attempt to adopt the exact opposite position, namely, that a data handler 

that “provides” data according to a patent’s plain claim terms nonetheless means a data handler 

that “generates” data. The problem for Defendants is that, unlike the Parent Patents, the ’523 Patent 

at issue here does not claim a data handler that “generates” data. See generally ’523 Patent at 

claims. By contrast, for example, Parent Patent 8,689,064 expressly claims “a plurality of data 

handlers . . . configured to generate.” Ex. 29, U.S. Patent No. 8,689,064 at claim 16 (emphasis 

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 24 of 30
17

added). But as explained above, the ’523 Patent expressly claims a data handler that provides data; 

not one that generates data. 

Thus, according to the prior positions of Defendants and their expert, a data handler that 

“provides” need not “generate.” To argue otherwise, as Defendants appear to do now out of the 

other side of the mouth, runs contrary to their long-held positions in litigation involving the Parent 

Patents. Worse still, adopting this position would endorse the plainly improper attempt to read 

limitations from the claims of different patents into the claims of the patent actually before the 

Court. Cf. Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005) (“two 

independent claims have different scope when different words or phrases are used in those 

claims”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. 

Cir. 2000) (“the use of . . . different terms in the claims connotes different meanings”).

Finally, Defendants’ attempt to inject the term “manage” into the claims is equally 

improper. Defendants’ proposed construction finds no support in the intrinsic record, and, instead, 

adds ambiguity, confusion, and uncertainty to a claim term that is otherwise straightforward and 

easy to understand.

C. “Data Module”

Claim Term Plaintiff Defendants

“data module” The term “data module” does not 

require construction and should 

receive its plain and ordinary 

meaning as understood by a person 

of ordinary skill in the art at the 

time of the invention.

“module including multiple [data 

handlers]” 

(footnote: handlers construed 

separately below)

The term “data module” needs no construction. The term is readily understandable to a 

person of ordinary skill in the art reading the claim terms alone, and certainly within the context 

of the ’523 Patent specification. Phillips, 415 F.3d at 1314 (“the ordinary meaning of claim 

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 25 of 30
18

language as understood by a person of skill in the art may be readily apparent even to lay judges, 

and claim construction in such cases involves little more than the application of the widely 

accepted meaning of commonly understood words.”). Claim 1 of the ’523 Patent already sets forth 

that the “data module” must be “mounted on the circuit board and coupled between the data ports 

of the memory devices and the system memory bus,” and coupled to the “control module.” ’523 

Patent at Claim 1. Further, it sets forth how the “data module” must be configured in each 

respective mode. Id.

Defendants’ proposed construction is unsupported and improper, and should be rejected

for at least two reasons. First, the construction is contradicted by the ’523 Patent specifications and 

impermissibly attempts to read unclaimed features of exemplary embodiments into the claims. 

Second, principles of claim differentiation prohibit Defendants’ approach.

1. Defendants’ Proposed Construction is Erroneous in View of the ‘523 

Patent Specification

Starting as we must with the plain language of the claim terms and the intrinsic record, 

Vitronics, 90 F.3d at 1582 (citing Markman, 52 F.3d at 979), the disputed claim term “data 

module” should be “read in view of the specification, of which they are a part.” Phillips, 415 F.3d 

at 1309. Here, there is nothing in the claim term “data module” itself that suggests—let along 

mandates—a particularized construction. Moreover, the specification demonstrates that 

Defendants’ proposed construction is improper.

First, because Defendants’ construction of “data module” incorporates by reference their 

proposed construction for “data handler,” this construction is incorrect for all the reasons set forth 

above with regard to “data handler.” See supra Section B.

Second, Defendants’ proposed construction is not only unsupported by the specification, it 

actually contradicts the express teachings of the patent. Nothing in the ’523 Patent specification 

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 26 of 30
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requires the data module to include “multiple data handlers.” In other words, the data module may 

include multiple data handlers, but does not have to include multiple data handlers. Instead, the 

’523 Patent specification teaches that the data module can be comprised of various exemplary 

subcomponents, including but not limited to “the switch 44, the data handlers 30, the data handler 

logic element 46, the data generation element 54, and/or verification element 56.” Id. at 10:7-8, 

12:44-46. Additionally, the data module “may include discrete logic, one or more applicationspecific integrated circuits (ASICs)[,] one or more microprocessors, one or more fieldprogrammable gate arrays (FPGAs), or one or more computers programmable logic devices 

(CPLDs).” Id. at 12:46-50 (emphasis added). Thus, unlike Defendants’ proposed construction, a 

data module does not require multiple data handlers.

In fact, according to the specification, the data module does not require any data handlers 

at all. As annotated in red above (supra Section B.1), Fig. 3 of the ’523 Patent shows an exemplary 

block diagram of a data module. Id. at 9:32-34, Fig. 3. While Fig. 3 shows that the data module 

may comprise a plurality of data handlers, the specification clarifies that “one or more of the 

various functional blocks... of the data module 28 of FIG. 3 may not be included.” Id. at 12:50-

52 (emphasis added). Indeed, the data module may comprise merely “one physical component” 

according to the specification. Id. at 12:60-62. Further contrary to Defendants’ proposed 

construction, only “in certain embodiments, the data module 28 comprises a plurality of data 

handlers 30.” Id. at 10:10-11 (emphasis added). In other words, a plurality of data handlers is a 

possible—but not necessary—configuration of a data module taught by the patent.

Defendants’ proposed construction attempts to read an unclaimed limitation into this claim 

term. But it would be legally improper to rewrite the claim term to adhere only to the disclosed

exemplary embodiments. Phillips, 415 F.3d at 1323 (“we have repeatedly warned against 

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 27 of 30
20

confining the claims to those embodiments.”). The mere fact that some embodiments, or even all 

embodiments, contain a particular limitation is “not enough” to read those limitations from the 

specification into the claims. Id. at 1466-67 (“We do not read limitations from the specification 

into claims; we do not redefine words. Only the patentee can do that.”); Thorner, 669 F.3d at 1366. 

The Court should decline to rewrite the claims as Defendants urge.

2. Claim Differentiation Prohibits Reading in “Multiple Data Handlers”

Principles of claim differentiation demand that “an independent claim should not be 

construed as requiring a limitation added by a dependent claim.” Curtiss-Wright Flow Control 

Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006). “[T]he presence of a dependent claim 

that adds a particular limitation gives rise to a presumption that the limitation in question is not 

present in the independent claim.” Phillips, 415 F.3d at 1315; Intamin Ltd. v. Magnetar Techs., 

Corp., 483 F.3d 1328, 1335 (Fed. Cir. 2007) (“An independent claim impliedly embraces more 

subject matter than its narrower dependent claim.”). Defendants’ proposed construction does not, 

and cannot, overcome this strong presumption.

Independent claim 1 of the ’523 Patent does not expressly claim “wherein the data module 

includes a plurality of data handlers.” Yet dependent claim 2 includes that exact limitation. See 

’523 Patent at claims 1, 2. Because this limitation is positively recited in a dependent claim, it is 

not, and cannot be, imported into the independent claims. World Class Tech. Corp. v. Ormco 

Corp., 769 F.3d 1120, 1125 (Fed. Cir. 2014). Thus, construing “data module” to necessarily 

include “multiple data handlers” is improper and the Court should decline doing so.

VI. CONCLUSION

For the foregoing reasons, the Court should adopt Netlist’s proposed constructions for “first 

mode” and “second mode,” and decline to construe the remaining terms. The Court should reject 

the unsupported and erroneous constructions advanced by Defendants.

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 28 of 30
21

Dated: January 20, 2021

/s/ Andrew H. DeVoogd

James M. Wodarski

 (Admitted pro hac vice)

 Massachusetts BBO No. 627036

 E-mail: JWodarski@mintz.com

Andrew H. DeVoogd 

 (Admitted to practice in WDTX)

 Massachusetts BBO No. 670203

 E-mail: AHDeVoogd@mintz.com

Matthew S. Galica

 (Admitted pro hac vice)

 Massachusetts BBO No. 696916

 E-mail: MSGalica@mintz.com

MINTZ LEVIN COHN FERRIS GLOVSKY AND 

 POPEO P.C.

One Financial Center

Boston, MA 02111

Tel: 617-542-6000

Fax: 617-542-2241

J. Stephen Ravel

 Texas State Bar No. 16584975

 Email: steve.ravel@kellyhart.com

KELLY HART & HALLMAN LLP

303 Colorado, Suite 2000

Austin, Texas 78701

Tel: (512) 495-6429

Attorneys for Plaintiff Netlist Inc.

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 29 of 30
22

CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the foregoing document 

has been served on January 20, 2021 to all counsel of record who are deemed to have consented 

to electronic service via the Court’s CM/ECF system.

/s/ Andrew H. DeVoogd

Andrew H. DeVoogd

Case 6:20-cv-00194-ADA Document 80 Filed 01/20/21 Page 30 of 30