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 REPLY CLAIM CONSTRUCTION BRIEF AS 

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

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 1 of 19
ii

TABLE OF CONTENTS

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

II. DEFENDANTS MISSTATE THE LAW............................................................................1

III. DISPUTED CLAIM TERMS FOR CONSTRUCTION .....................................................3

A. The “Mode” Claim Terms .............................................................................................3

B. The “Data Handler” Claim Terms .................................................................................5

C. “Data Module” ...............................................................................................................9

IV. CONCLUSION..................................................................................................................10

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 2 of 19
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TABLE OF AUTHORITIES

Page(s)

Cases

Alloc, Inc. v. Int’l Trade Comm’n,

342 F.3d 1361 (Fed. Cir. 2003)..................................................................................................2

Bell Atlantic Network Servs., Inc. v. Covad Commc’ns. Grp., Inc.,

262 F.3d 1258 (Fed. Cir. 2001)..............................................................................................2, 3

Bettcher Industries, Inv. v. Bunzl USA, Inc.,

F.3d 629, 639-640, 100 USPQ2d 1433 (Fed. Cir. 2011)...........................................................6

In re Schreiber,

128 F.3d at 1478, 44 USPQ2d at 1432 ......................................................................................6

Info-Hold, Inc. v. Applied Media Techs. Corp.,

783 F.3d 1262, 1265-66 (Fed. Cir. 2015) ..................................................................................2

Kapusta v. Gale Corp.,

155 F. App'x 518 (Fed. Cir. 2005).............................................................................................2

Karlin Tech., Inc. v. Surgical Dynamics, Inc.,

177 F.3d 968 (Fed. Cir. 1999)....................................................................................................8

Meds. Co. v. Mylan, Inc.,

853 F.3d 1296 (Fed. Cir. 2017)..................................................................................................3

Nystrom v. TREX Co., Inc.,

424 F.3d 1136 (Fed. Cir. 2005)..................................................................................................2

Phillips v. AWH Corp.,

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

SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,

242 F.3d 1337 (Fed. Cir. 2001)..................................................................................................2

Thorner, 669 F.3d at 1365 ...........................................................................................................2, 5

Trs. of Columbia Univ. v. Symantec Corp,

811 F.3d 1359, 1364-65 (Fed. Cir. 2016) ..................................................................................3

Ultimatepointer, LLC v. Nintendo Co.

816 F.3d 816 (Fed. Cir. 2016)....................................................................................................3

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 3 of 19
iv

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)

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 4 of 19
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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

30 U.S. Patent No. 8,001,434

31 U.S. Patent No. 8,359,501

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 6 of 19
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TABLE OF DISPUTED TERMS AND PROPOSED CONSTRUCTIONS

Brief 

Section

Claim 

Term Plaintiff Defendants

The 

“mode” 

claim 

terms

“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 “data 

handler” 

claim 

terms

“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 “data 

module” 

claim 

term

“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 at least one 

[data handler]”1

 

1 SK hynix revised its construction in its responsive briefing from what it originally proposed.

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 7 of 19
I. INTRODUCTION

Patent claims should be interpreted as written. Since Phillips, the Federal Circuit has 

consistently instructed that claims should not be rewritten absent the patentee expressly redefining 

a term or disavowing its full scope. Defendants uniformly ignore this precept, and attempt to 

rewrite the present patent’s claims with limitations stolen from different patents. Specifically, 

Defendants attempt to inject the term “generate” into the present claims, because the accused 

categories of products were found to not infringe the “generate” term of the ’523 Patent’s parent

patents. But that term does not exist in the claims here. Instead, the ’523 Patent claims include the 

term “provide,” which Defendants previously admitted does not mean “generate.” Nonetheless, 

Defendants seek to read “generate”—and a litany of other extraneous limitations—into the claims

without support in the specification. Separately, but equally in conflict with established claim 

construction precedent, Defendants attempt to inject limitations from the preferred embodiments 

into the simple words “first” and “second.” This approach is fundamentally improper.

By contrast, each of Netlist’s proposed constructions is proper in view of the intrinsic 

record and well-established claim construction precedent. Netlist’s constructions should be 

adopted, and Defendants’ improper proposals should be rejected.

II. DEFENDANTS MISSTATE THE LAW

Much like their improper approach to the first round of claim construction briefs in this 

consolidated case (see ECF Nos. 58, 63, 71), Defendants’ Responsive Brief (ECF No. 89 (“DBr.”)) 

relies on pre-Phillips and inapposite case law to try to read unclaimed limitations from the 

embodiments into the claims. As previously explained, rewriting the claims like this would 

contravene well-established claim construction law. ECF Nos. 61 and 66. For example, and 

contrary to the entire thrust of Defendants’ approach to claim construction in this case, the Federal 

Circuit has “expressly rejected the contention that if a patent describes only a single embodiment, 

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 8 of 19
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the claims of the patent must be construed as being limited to that embodiment.” Phillips, 415 F.3d 

at 1323. This is black letter law—law that is completely ignored by Defendants. “It is not enough 

for a patentee to simply disclose a single embodiment or use a word in the same manner in all 

embodiments, the patentee must clearly express an intent to redefine the term.” Thorner, 669 F.3d 

at 1365; see also Kapusta v. Gale Corp., 155 F. App'x 518, 521 (Fed. Cir. 2005). Nothing 

Defendants cite or argue contradicts this long-held standard. Contrary to Defendants assertion, 

Netlist does not suggest that “turning a blind eye to the specification” is proper. DBr. at 6. In fact,

Netlist’s claim construction arguments are the only ones actually supported by the specification.

Likewise, Defendants somehow contend that foundational Federal Circuit authority is 

somehow an “incomplete and incorrect statement of law.” DBr. at 4-5. In particular, 

a skilled artisan reads claim language in the context of the claims, the specification, 

and the prosecution history, using them to resolve any uncertainties. Though the 

claim term may appear plain on its face, we may depart from that plain meaning 

‘1) when a patentee sets out a definition and acts as his own lexicographer, or 2) 

when the patentee disavows the full scope of the claim term either in the 

specification or during prosecution.’

Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265-66 (Fed. Cir. 2015) (quoting 

Thorner, 669 F.3d at 1365). Defendants ignore this standard, apparently because it undermines all 

of their claim construction arguments.

As a separate issue, Defendants cite to out-of-date cases to argue that aspects of the 

disclosure taught in the specification should be read into the claims as limitations. DBr. at 5-8 

(citing SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 

2001); Bell Atlantic Network Servs., Inc. v. Covad Commc’ns. Grp., Inc., 262 F.3d 1258 (Fed. Cir. 

2001); Nystrom v. TREX Co., Inc., 424 F.3d 1136 (Fed. Cir. 2005); Alloc, Inc. v. Int’l Trade 

Comm’n, 342 F.3d 1361 (Fed. Cir. 2003)). These cases apply a pre-Phillips claim construction 

standard that is no longer good law. This court should follow the en banc decision in Phillips—

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 9 of 19
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which has been the settled law on claim construction for fifteen years. Phillips v. AWH Corp., 415 

F.3d 1303 (Fed. Cir. 2005).

But even the post-Phillips cases identified by Defendants do not stand for the proposition 

they argue. For example, in Ultimatepointer, LLC v. Nintendo Co. 816 F.3d 816, 824 (Fed. Cir. 

2016), the court found both clear and unambiguous disavowal and patentee lexicography—not that 

an embodiment should be read into the claims. Id. 823 (finding that the specification expressly 

limits the invention to an embodiment, and disparages an alternative embodiment), 824 (finding 

that the patentee provided lexicography of the preferred embodiment). Likewise, while Trs. of 

Columbia Univ. v. Symantec Corp. cautioned against an overly rigid disavowal analyses, the court 

in that case found disavowal of claim scope in the specification and prosecution history. DBr. at 

7-8; 811 F.3d 1359, 1364-65 (Fed. Cir. 2016) (finding that describing features as “most 

informative” is disavowal of claim scope). Similarly, the situation in Meds. Co. v. Mylan, Inc. is 

inapposite. Meds. Co. v. Mylan, Inc., 853 F.3d 1296 (Fed. Cir. 2017). In that case, the court rejected 

the plaintiff’s construction because it was a means-plus-function limitation with nothing in the 

specification to justify such scope. Id. at 1306. Absent any limitation in the claims themselves, the 

court looked to the specification for guidance. Id. at 1306-09. In other words, none of the 

circumstances present in Defendants’ post-Phillips cases exist here. 

III. DISPUTED CLAIM TERMS FOR CONSTRUCTION

A. The “Mode” Claim Terms

Defendants do not attempt to interpret the operative word, “mode.” Rather, their circular 

constructions offer only to rewrite the terms. Defendants rely on pre-Phillips claim construction 

standards, citing Bell Atlantic Network Servs., Inc. v. Covad Comm. Group, Inc., 262 F.3d 1258, 

1268 (Fed. Cir. 2001). There, the court constrained the term “plurality of different modes” where 

the specification expressly confined “mode” to only three enumerated modes. Here, by contrast, 

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 10 of 19
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the specification does not confine the disclosed “modes” to the exemplary modes. Instead, the 

patent is clear that “a plurality of modes” exist. ʼ523 Patent at 2:38-47.

Of course, the patent claims are “of primary importance, in the effort to ascertain precisely 

what it is that is patented.” Phillips, 415 F.3d at 1312. Yet Defendants ignore the context of the 

claims, instead arguing semantics. The terms “first” and “second” are not limitations on the 

claimed “modes” above and beyond being used to differentiate the claimed “modes.” Put another 

way, the plain language of the claims clarifies that the “first mode” is a distinct behavioral state 

from the “second mode.” That is all. Beyond this, it is the specific limitations recited in the claims 

that define the scope of each “mode.” Netlist’s construction is the only one that honors this.

Specifically, the claims set forth specific requirements for configuring the control module 

and data module in each respective “mode.” Independent claim 1 states that the control module in 

the “first mode” must be: 

configured to receive system address and control signals from the system memory 

controller and to output first memory address and control signals to the memory 

devices according to the system address and control signals

’523 Patent at Claim 1. Likewise, the data module in the “first mode” must be:

configured to propagate one or more first data signals between the memory devices 

and the system memory controller, the one or more first data signals being 

transmitted or received by at least a portion of the memory devices in response to 

the first memory address and control signals

Id. Similarly, independent claim 1 also sets forth that the control module in the “second mode” 

must be “configured to output second memory address and control signals to the address and 

control ports of the memory devices.” Id. Finally, the data module in the “second mode” must be:

configured to isolate the memory devices from being accessed by the system 

memory controller and to transmit one or more second data signals including data 

patterns provided by the data handler logic elements to the data ports of the memory 

devices according to one or more commands output from the control module, and 

wherein at least a portion of the memory devices are configured to receive the one 

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 11 of 19
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or more second data signals according to the second memory address and control 

signals from the control module.

Id. Independent Claim 19 includes similar requirements for the claimed “modes.” Id. at Claim 19. 

Each claimed “mode” is satisfied when a memory module is configured to perform the 

functionality of each “mode” recited in the claims. There is no ambiguity to resolve. Rather than 

look to the context of the claims, Defendants attempt to re-write the adjectives “first” and “second” 

to be additional limitations above and beyond what the claims already require.

Defendants fail to identify any valid justification for rewriting the claims as they urge. DBr. 

at 9-10. That is because their position is contrary to current law. Thorner, 669 F.3d at 1366-68. 

The best Defendants can muster as support for rewriting the claims are Netlist’s statements in a 

related IPR, but these statements are taken out context and facially mischaracterized. See DBr. at 

10 (citing Ex. 69, POPR at 14-15). The quote is taken from an “Overview of the ’523 Patent” 

section of Netlist’s POPR, in which Netlist did not provide any representations concerning claim 

construction or scope. Ex. 69, POPR at 14-15. Regardless, Netlist was clear that the memory 

module “operates in at least two distinct modes of operation.” Ex. 69, POPR at 14 (emphasis 

added). As a throwaway, Defendants also rely on a statement from Netlist’s expert in an IPR for 

an unrelated patent to oddly suggest “mode” is not being used in its ordinary sense. DBr. at 12 

(citing Ex. 54 at 77:14-25). In reality, Netlist’s expert stated the opposite. Ex. 54 at 8:23-9:2.

Nothing Defendants argue or cite suggests this Court should ignore binding Federal Circuit 

precedent on claim construction. No circumstance exists that could justify importing limitations 

from the specification into the claims. Only Netlist’s proposed construction should be adopted.

B. The “Data Handler” Claim Terms

Defendants suggest that, during prosecution, Netlist argued the terms of the patent were 

not well-known. DRBr. at 13 (“[Netlist] told the Patent Office that these terms were not ‘wellCase 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 12 of 19
6

known’ or ‘conventional.’”) (emphasis added); DRBr. at 15 (stating “that ‘data handlers’ and ‘data 

handler logic elements’ (and ‘data module’ addressed in the next section) are not well-known or 

conventional terms in the art.”) (emphasis added). Netlist made no such argument. Instead, Netlist 

stated, in response to a Section 101 rejection, that “no prior art memory module with the structural 

and functional features recited in claim 1” exists. Ex. 70 at 384; see also id. (stating that, “[a]t the 

time the present application was filed, there were no well-known and conventional/generic 

memory modules” that performed the functions recited in the claims); see also id. (noting that the 

examiner failed to identify where the claimed functionality existed in any prior art structure) (citing 

In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; Bettcher Industries, Inv. v. Bunzl USA, 

Inc., F.3d 629, 639-640, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011))). 

That the specific hardware structures and their functionality did not exist in the art, 

however, does not mean that a POSITA would not understand the plain and ordinary meaning of 

the terms Netlist used to claim them. Defendants incorrectly conflate these two concepts. As 

Netlist explained, the “data module,” “data handler logic elements,” and “data handlers” are 

“specifically structured hardware” designed to perform the functions recited in the claims. Ex. 70 

at 383-384. Defendants provide no persuasive argument that a POSITA would not understand what 

the terms “data,” “handler,” “logic,” or “element,” alone, or in combination, would mean in view 

of the ’523 Patent’s specification. To the contrary: a POSITA would readily understand the plain 

and ordinary meaning of the terms in the context of the claims and specification. PBr. at 10-20.

Separately, and in keeping with the theme of their other arguments, Defendants also 

attempt to rewrite the ’523 Patent claims without any attention to claim context. Specifically, 

Defendants use the “data handler” claim elements—which lack any mention of “generate and 

manage” limitations—to attempt to improperly introduce these unclaimed limitations from the 

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 13 of 19
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Parent Patents.2 This Court should reject Defendants’ attempt to rewrite the present claims to 

include unclaimed limitations from the Parent Patents’ claims, and should also reject Defendants’ 

attempt to improperly further construe those same unclaimed limitations.

Defendants’ argument rests on its admitted dismissal of the claims’ context as “irrelevant.” 

DBr. at 18. That is improper. Info-Hold, Inc., 783 F.3d at 1268 (“a skilled artisan reads claim 

language in the context of the claims, the specification, and the prosecution history, using them 

to resolve any uncertainties.”) (emphasis added)); Phillips, 415 F.3d at 1312 (“the claims are of 

primary importance”). The context of the claims clearly shows that the claimed “data handler logic 

elements” “provide data patterns.” Contrary to Defendants’ arguments, nothing in the claims 

requires that the claimed “data handler” manage or generate data patterns. For example, the claim 

element in independent claim 1 contains the disputed claim term:

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 of the memory devices according to one or more commands output 

from the control module

’523 Patent at Claim 1 (emphasis added). The term “data handler logic elements” is already limited 

by the plain claim language. A POSITA reading the claim would understand that the data handler 

logic elements provide one or more second data signals including data patterns for transmission to 

the data ports. Similarly, the term “data handlers” is limited by the claim language in Claim 19:

wherein, in the first mode, ... the data handlers are configured to propagate one 

or more data signals associated with the memory read or write operations between 

the memory devices and the connector ... wherein, in the second mode, the data 

handler logic element in the each respective data handler is configured to 

provide respective data patterns to the respective group of one or more memory 

devices

 

2 The “Parent Patents” to the ’523 Patent are U.S. Patent Nos. 8,001,434, 8,359,501, and 8,689,064. 

Netlist asserted these Parent Patents against Defendants in International Trade Commission 

Investigation No. 337-TA-1023 and in C.D. Cal. (No. 8:16-CV-01605).

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 14 of 19
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Id. at Claim 19 (emphasis added). A POSITA understands, based even on the plain language of 

the claims alone, that the data handler is configured to propagate one or more data signals 

associated with the memory read or write operation in the first mode, and is configured to provide 

data patterns to memory devices in the second mode. There is no uncertainty that must be resolved.

Defendants ignore this context and instead seek to inject into the ’523 Patent claims several 

unclaimed limitations from claims of the Parent Patents—none of which are asserted here. There 

is no justification for this approach: “different words or phrases used in separate claims are 

presumed to indicate that the claims have different meanings and scope.” Karlin Tech., Inc. v. 

Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed. Cir. 1999). 

Defendants allege that “Netlist and its experts have stated that the “data handlers generate

data to test the memory devices” but fail to provide any context. DBr. at 15. None of those 

statements relate to the claims at issue here. Rather, those statements relate to different claims that 

expressly claimed “data handlers” that “generate” data. See e.g., Ex. 30, ’434 Patent at Claim 1 

(claiming “each of the data handlers ... configured to generate”); Ex. 31, ’501 Patent at Claim 1 

(claiming “one or more data handlers ... are configured to generate”); Ex. 29, ’064 Patent at Claim 

1 (claiming “a plurality of data handlers ... configured to generate”). To state the obvious from 

the plain claim language here, the ’523 Patent claims do not claim data handlers that generate data. 

Instead, they claim “data patterns provided by the data handler logic elements” and “data handler

[] configured to provide.” ’523 Patent at Claims 1, 19. “Provide” and “generate” are not 

interchangeable terms. Defendants have conceded this fact. DBr. at 18 (“‘generate’ and ‘provide’ 

do not have the same meaning”).

Yet Defendants ignore that the claims plainly recite that the “data handler logic elements” 

and “data handlers” “provide” data, and do not mention “generating” data. Instead, they ask the 

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 15 of 19
9

Court to rewrite these claim elements to require the “data handler logic elements” and “data 

handlers” to “generate” data. DBr. at 13. Not only is such a request improper, but, in doing so, 

Defendants inject unnecessary ambiguity into the claims. Defendants’ proposed construction adds 

little more than a potpourri of unhelpful limitations, none of which are mandated by the intrinsic 

record. See PBr. at 12-14 (ECF No. 80). Defendants attempt to justify their multiple derivative 

constructions as “avoid[ing] O2 Micro issues.” DBr. at 18. But no perceptible O2 Micro issues 

exist. The only issue stems from Defendants’ attempt to improperly import unclaimed limitations 

from different patents.

Defendants ignore the many other problems with their proposed construction: the circular 

definition, the unsupported negative limitation, and the ambiguity it creates. See generally, DBr.

at 13-19. Most importantly, Defendants contradict established law to argue that the additional 

limitations should be imported “absent lexicography or disclaimer.” Id. at 18. This is clearly 

erroneous and contrary to clear precedent. See Info-Hold, Inc.., 783 F.3d at 1265-66.

C. “Data Module”

Defendants tacitly acknowledge their original proposed construction was improper by 

revising their construction “to address certain of Netlist’s criticisms.” DBr. at 20, n. 13. Defendants 

now agree that the claimed “data module” does not necessarily include multiple data handlers. Id. 

However, Defendants’ proposed construction remains inappropriate for numerous reasons. 

First, Defendants incorporate by reference their improper construction of “data handler.” 

Defendants’ proposed construction for “data module” is improper in so far as it includes 

Defendants’ improper construction of “data handler.” See Section III.B, supra.

Second, Defendants’ suggestion that Netlist argued that a data module was “not a 

conventional or well-known term in the art” is incorrect. Netlist never made that argument. As 

explained above, Netlist took the position that “no prior art memory module with the structural 

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 16 of 19
10

and functional features recited in claim 1” exists. Ex. 70 at 384; see also Section III.B, supra.

Defendants improperly conflate (1) whether a POSITA would understand what the term “data 

module” means in view of the specification and (2) whether the specific hardware structures and 

functionality claimed in the ’523 Patent existed in the art. Netlist argued against the latter, not the 

former. A POSITA would clearly understand what a “data module” means in view of the 

specification. PBr. at 17-20. 

Third, Defendants’ revised construction still fails because it ignores explicit disclosures in 

the specification. According to the specification, the data module does not require any data 

handlers. The specification clearly states 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.” Id. at 12:60-62. The specification 

further explains that, 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 possible—but not 

required—configuration of a data module may include one or more data handlers. 

There is no justification for importing the “data handler” claim limitation into the “data 

module” claim term. Defendants’ argument to the contrary requires limiting the claims to certain 

embodiments while ignoring others. See DBr. at 20. That is improper. Phillips, 415 F.3d at 1323.

IV. CONCLUSION

The Court should adopt Netlist’s proposed constructions and should reject the unsupported 

and erroneous constructions advanced by Defendants.

Case 6:20-cv-00194-ADA Document 92 Filed 02/23/21 Page 17 of 19
11

Dated: February 23, 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 92 Filed 02/23/21 Page 18 of 19
12

CERTIFICATE OF SERVICE

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

has been served on February 23, 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 92 Filed 02/23/21 Page 19 of 19