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UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

NETLIST, INC.,

Plaintiff,

v.

SK HYNIX INC. and SK HYNIX 

AMERICA INC. 

Defendants.

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Civil Action No. 6:20-cv-00525

JURY TRIAL DEMANDED

NETLIST, INC.’S COMPLAINT FOR PATENT INFRINGEMENT

Pursuant to Federal Rule of Civil Procedure 15(a)(1)(B), Plaintiff Netlist, Inc. (“Netlist” or 

“Plaintiff”) files this complaint for patent infringement (“Complaint”) and for jury trial against 

Defendants SK hynix, Inc. and SK hynix America Inc. (collectively “SK hynix” or “Defendants”). 

Netlist alleges as follows:

THE PARTIES

1. Plaintiff Netlist is a corporation organized and existing under the laws of the State 

of Delaware, having a principal place of business at 175 Technology Drive, Suite 150, Irvine, 

California 92618.

2. Netlist is the owner by assignment of U.S. Patent No. 10,217,523 (“the ’523 

patent”) (attached as Exhibit 1) (the “Asserted Patent”). This patent is essential to certain DDR4

memory module standards promulgated by the Joint Electron Device Engineering Council, or 

“JEDEC,” the standard-setting body for the microelectronics industry. The Asserted Patent is

therefore “standard essential.”

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3. On information and belief, Defendant SK hynix Inc. is a corporation organized and 

existing under the laws of the Republic of Korea (“Korea”), having a principal place of business 

at 2091, Gyeongchung-daero, Bubal-eup, Icheon-si, Gyeonggi-do, 17336, Korea. On information 

and belief, SK hynix Inc. is the worldwide parent corporation for Defendant SK hynix America 

Inc., and is responsible, either directly or indirectly through subsidiaries, for its infringing 

activities. References herein to the acts of SK hynix America Inc. should be understood to 

encompass such acts by SK hynix Inc.

4. On information and belief, Defendant SK hynix America Inc. is a corporation 

organized and existing under the laws of California, having a principal place of business at 3101 

North 1st Street, San Jose, CA 95134, United States. On information and belief, Defendant SK 

hynix America Inc. is a wholly owned subsidiary of SK hynix Inc. and is a United States operating 

company for SK hynix Inc. On information and belief, Defendant SK hynix America Inc. provides 

support for sales, technical, and customer/client relationship operations, including the testing, 

certification, and qualification of the accused LRDIMM memory modules for use in customer 

server products.

5. SK hynix America Inc. is registered to do business in Texas.

6. On information and belief, SK hynix America Inc. maintains a registered agent for 

service of process within this District, The Prentice-Hall Corporation System, 211 E. 7th Street, 

Suite 620, Austin, TX 78701.

7. On information and belief, SK hynix America Inc. maintains one or more physical 

fixed places of business in Texas, including offices at 4201 West Parmer Lane Bldg. B, Suite 245, 

Austin, TX 78727, at which, as alleged below, personnel perform certain activities directly related 

to the products accused of infringement in this case.

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8. Defendants place, have placed, or contributed to placing infringing products like 

Load Reduced Dual In-line Memory Modules (“LRDIMMs”)1into the stream of commerce via an 

established distribution channel knowing or understanding that such products would be sold and 

used in the United States, including in the Western District of Texas. On information and belief, 

Defendants have also derived substantial revenues from infringing acts in this District including 

from the sale and use of infringing LRDIMM products.

JURISDICTION AND VENUE

9. This is an action for patent infringement arising under the patent laws of the United 

States, Title 35 of the United States Code § 1, et seq. Accordingly, this Court has subject matter 

jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).

10. This Court has specific personal jurisdiction over Defendants at least in part 

because Defendants conduct business in this Judicial District. Netlist’s causes of action arise, at 

least in part, from Defendants’ contacts with and activities in the State of Texas and this District. 

On information and belief, Defendants have committed acts of infringement within the State of 

Texas and this District by, among other things, directly and/or indirectly using, selling, offering to 

sell, or importing products that infringe one or more claims of the ’523 patent.

11. On information and belief, Defendants conduct business in this District and 

maintain regular and established places of business within this District. For example, SK hynix

America Inc. has maintained regular and established places of business with offices and/or other 

facilities in this District, including at least such offices and/or facilities at 4201 West Parmer Lane 

Bldg. B, Suite 245, Austin, TX 78727. On information and belief, personnel working at this facility 

in Austin engage in activities directly related to the LRDIMM products at issue in this case. 

 

1 The SK hynix HMA84GL7AMR4N-UHTE is an exemplary infringing LRDIMM product.

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12. For example, on information and belief, personnel employed by SK hynix America 

Inc. working at this location are semiconductor professionals, including field application 

engineers, senior technical marketing managers, and senior quality managers. On information and 

belief, these personnel have expertise in, among other aspects of the accused products, 

semiconductors, application specific integrated circuits, embedded systems, and testing and 

qualification of computer memory modules. On information and belief, one of the Defendants’ 

largest customers within the United States, Dell Technologies, is based in the Austin area, and 

many of the personnel working at the SK hynix America Inc. location in Austin direct their efforts 

to providing Dell with the accused products. These efforts include, on information and belief, 

extensive testing, certification, and qualification of the accused LRDIMM memory modules for 

specific use in Dell server products.

13. On information and belief, Defendants have placed or contributed to placing 

infringing products including, but not limited to, SK hynix LRDIMM products into the stream of 

commerce knowing or understanding that such products would be sold and used in the United 

States, including in this District. For example, apart from SK hynix America Inc.’s own activities 

within this District described above, SK hynix America Inc. also has a distributor—N.F. Smith & 

Associates, LP—with a location in this District. On information and belief, this distributor also 

sells SK hynix LRDIMM products into the stream of commerce within this District.

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14. On information and belief, SK hynix America Inc. has also derived substantial 

revenues from infringing acts in this District, including from the sale and use of infringing products 

including, but not limited to, SK hynix’s LRDIMM products.

 

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See https://www.skhynix.com/eng/support/distributor.jsp; see also 

https://www.smithweb.com/global-locations/.

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15. Defendants have committed acts within this District giving rise to this action, and 

have established sufficient minimum contacts with the State of Texas such that the exercise of 

jurisdiction would not offend traditional notions of fair play and substantial justice.

16. Venue in this District is proper as to SK hynix Inc. under 28 U.S.C. § 1391(c)(3) 

because it is a foreign corporation. In re HTC Corp., 889 F.3d 1349, 1354 (Fed. Cir. 2018).

17. Venue is proper in this District as to SK hynix America Inc. pursuant to 28 U.S.C. 

§ 1391(b), (c), and 1400(b) because SK hynix America Inc. (1) has committed and continue to 

commit acts of patent infringement in this District by, among other things, directly and/or 

indirectly using, selling, offering to sell, or importing products that infringe one or more claims of 

the ’523 patent, and (2) has done and continue to do business in this District by maintaining regular 

and established places of business, including at least at 4201 West Parmer Lane Bldg. B, Suite 

245, Austin, TX 78727. In re Cray Inc., 871 F.3d 1355, 1362-63 (Fed. Cir. 2017).

FACTUAL BACKGROUND

18. Since its founding in 2000, Netlist has been a leading innovator in highperformance memory module technologies. Netlist designs and manufactures a wide variety of 

high-performance products for the cloud computing, virtualization and high-performance 

computing markets. Netlist’s technology enables users to derive useful information from vast 

amounts of data in a shorter period of time. These capabilities will become increasingly valuable 

as the volume of data continues to dramatically increase.

19. The technologies disclosed and claimed in the asserted patent relate generally to 

memory modules. Generally speaking, a memory module is a printed circuit board that contains, 

among other important components, DRAM integrated circuits. A memory module is typically 

installed into a memory slot on a computer motherboard and serves as memory for that computer 

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system. The ’523 patent relates to memory subsystems and, more specifically, a self-testing 

architecture for memory modules.

20. The accused SK hynix DDR4 LRDIMM memory modules are designed for use in 

servers, such as those supporting cloud-based computing and other data-intensive applications. 

The structure, function, and operation of server memory modules like the accused devices is 

defined, specified, and standardized by JEDEC (Joint Electron Device Engineering Council), the 

standard-setting body for the microelectronics industry. The accused LRDIMMs are a type of 

memory module that is JEDEC-standard compliant. JEDEC released the second version of the 

standard for one of the important memory module components of LRDIMMs, the DDR43register 

control device, or RCD, in August of 2019.

21. Netlist “committed” the Asserted Patent to the relevant JEDEC standards pursuant 

to the JEDEC Patent Policy, which sets certain obligations for owners of patents (like the Asserted 

Patents) that are essential to one or more JEDEC standards. Netlist has in all respects and at all 

times acted in a manner consistent with the JEDEC Patent Policy, as set forth in the JEDEC Manual 

of Organization and Procedure, which states in relevant part that “[a] license will be offered, to 

applicants desiring to utilize the license for the purpose of implementing the JEDEC Standard 

under reasonable terms and conditions that are free of any unfair discrimination . . . .” Netlist 

contacted SK hynix in 2015 regarding its need for a license to Netlist’s essential patent portfolio 

and has since been negotiating in good faith to reach a resolution—but SK hynix still refuses to 

take a license to Netlist’s patents. 

 

3 DDR4 refers to the latest generation of DRAM memory. Older, slower generations of memory 

modules used DDR3 DRAM; even older memory modules used DDR2 DRAM.

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22. In the course of these negotiations, and years before bringing this action, Netlist 

offered to license to SK hynix, among other patents in its standard-essential portfolio, the direct 

parents of the currently-asserted patent under reasonable terms and conditions that are free of any 

unfair discrimination. Unfortunately, SK hynix has not acted as a willing licensee. From the 

beginning, SK hynix has taken unreasonable positions and refused to attribute any meaningful 

value to Netlist’s fundamental patents. Faced with an intransigent infringer of its standard-essential 

patents, Netlist turned to litigation in order to obtain fair compensation for SK hynix’s 

unauthorized use of its intellectual property, including in federal district court and at the 

International Trade Commission. In turn, SK hynix launched extensive collateral attacks on Netlist 

and its intellectual property, including filing multiple post-grant challenges to over a dozen of 

Netlist’s standard-essential patents. As a result, the parties have made no progress towards 

resolution, despite multiple substantive exchanges, over many years of negotiation, and Netlist’s 

multiple, reasonable offers to license.

23. In June 2016, consistent with its obligations under the JEDEC Patent Policy, Netlist 

sent SK hynix a formal letter outlining Netlist’s offer to license Netlist’s patent portfolio related 

to, among other technology, its LRDIMM technology on reasonable terms and conditions that are 

free of any discrimination. Netlist again identified the direct parents of the asserted patent, and 

informed SK hynix that their DDR4 LRDIMMs, among other relevant products, practice these 

patents (and additional of Netlist’s standard essential patent (“SEP”) assets) without authorization. 

Despite this, SK hynix has continued to hold out, and has refused to accept any of Netlist’s 

reasonable and non-discriminatory offers for a license to its SEPs. Notably, the Chief 

Administrative Law Judge of the International Trade Commission has twice rejected SK hynix’s 

allegations that Netlist violated its obligations under the JEDEC patent policy.

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24. In parallel with its two International Trade Commission complaints, Netlist filed 

two federal district court complaints in the Central District of California,4one in the fall of 2016 

and the second a year later. After consolidation, those cases were stayed based on the co-pending 

action before the International Trade Commission. Those complaints asserted different patents 

from those asserted in this case and, prior to being stayed, no patent claims were construed by the 

court, and no meaningful discovery had been exchanged among the parties.

25. Each of the Defendants has been aware of the parents of the asserted patents since 

at least January 2016 when Netlist presented to the Defendants detailed claim charts related to 

the parent of the asserted patents. Further, each of the Defendants has been aware of the ’523

patent since at least June 9, 2020, when Netlist provided Defendants with detailed claim charts 

describing how Defendants’ LRDIMM products infringed claims of the ’523 patent. 

COUNT I

DEFENDANTS’ INFRINGEMENT OF U.S. PATENT NO. 10,217,523

26. Netlist restates and incorporates by reference all of the allegations made in the 

preceding paragraphs as though fully set forth herein.

27. The ’523 patent, entitled “Multi-mode memory module with data handlers,” issued 

to inventors Dr. Hyun Lee, Jayesh R. Bhakta, and Soonju Choi on February 26, 2019. The ’523 

patent is a continuation of U.S. patent application Ser. No. 13/745,790, filed Jan. 19, 2013, now 

U.S. Pat. No. 8,689,064 (“the ’064 patent”), which is a continuation of U.S. patent application Ser. 

No. 13/183,253, filed Jul. 14, 2011, now U.S. Pat. No. 8,359,501 (“the ’501 patent”), which is a 

continuation of U.S. patent application Ser. No. 12/422,925, filed Apr. 13, 2009, now U.S. Pat. 

 

4 Defendants do not appear to have any employees or physical presence in the Central District of 

California.

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No. 8,001,434 (“the ’434 patent”). Netlist owns by assignment the entire right, title and interest in 

and to the ’523 patent. The ’523 patent is essential to the JEDEC DDR4 LRDIMM standard. Netlist 

committed the ’523 patent to these standards pursuant to the JEDEC Patent Policy and has, at all 

times, observed and adhered to its obligations under this policy.

28. On information and belief, Defendants directly infringed and are currently 

infringing at least the independent and dependent claims of the ’523 patent identified in the chart 

below (“the ’523 Asserted Claims”) by, among other things, making, using, selling, offering to 

sell, and/or importing within this District and elsewhere in the United States, without authority, 

the accused LRDIMM products.

’523 Independent Claims ’523 Dependent Claims

1 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 

17, 18

19 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 

33, 34

29. An exemplary claim chart comparing the asserted independent claims of the ’523

patent to an exemplary accused LRDIMM product (part number HMA84GL7AMR4N-UHTE) is 

attached as Exhibit 2.

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5 This claim chart is exemplary, and is based on relevant information presently within Netlist’s 

possession, custody, or control. Netlist expressly reserves the right to amend, modify and/or 

supplement this exemplary disclosure as new information, documents, source code, testimony, or 

knowledge come to light, whether received from Defendants or non-parties. Further, Netlist 

expressly reserves the right to amend, modify and/or supplement this exemplary disclosure by 

identifying, charting, and relying on additional information that describes the disclosures and 

information already contained within these exemplary disclosures. Further, Netlist reserves the 

right to supplement this exemplary disclosure as this case proceeds, including, but not limited, 

following any Markman order in this case. The Asserted Claims have not been construed, and 

nothing contained in this exemplary disclosure is an express or implied admission with respect to 

the proper construction of the Asserted Claims, or any issue relating to any alleged invalidity of 

such claims.

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30. On information and belief, each of Defendants has been aware of the ’064, ’501, 

and ’434 patents, the parent patents of the ’523 patent, and the patents’ disclosures, since at least 

January 2016. Defendants have been specifically aware of the ’523 patent since at least as early as 

June 9, 2020. 

31. As a result of Defendants’ infringement of at least the ’523 Asserted Claims, Netlist 

has suffered and is continuing to suffer monetary damages and is entitled to a monetary judgment 

in an amount adequate to compensate for Defendants’ past infringement. Netlist is also entitled to 

enhanced damages, attorneys’ fees, interest, and costs due to Defendants’ willful, egregious,

wanton, deliberate and flagrant conduct with regard to Netlist’s patent rights. 

32. Defendants also indirectly infringed, and are currently infringing, the ’523 Asserted 

Claims. In particular, on information and belief, users making routine use of the accused LRDIMM 

products infringe at least the ’523 Asserted Claims. On information and belief, each of the 

Defendants has induced, and currently induces, the infringement of the ’523 patent. For example, 

each of Defendants was aware that the accused LRDIMM products infringe at least the ’523

Asserted Claims, and was aware that users making routine use of the accused LRDIMM products 

infringe those claims. On information and belief, each of Defendants specifically intended that 

users of the accused LRDIMM products infringe at least the ’523 Asserted Claims, and acted with 

the intent of causing the infringing acts, including the infringing routine use of the accused 

LRDIMM products by users. For example, on information and belief, Defendants provide 

specifications, datasheets, instruction manuals, and/or other materials that encourage and facilitate 

infringing use of the accused LRDIMM products by users with the intent of inducing infringement. 

See, e.g., Exhibits 3 and 4.

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33. On information and belief, each of Defendants has contributed, and currently 

contributes to, the infringement of at least the ’523 Asserted Claims, including the infringing 

routine use of the accused LRDIMM products by users. On information and belief, Defendants 

have sold, offered for sale and/or imported within the United States the accused LRDIMM 

products for use in an infringing manner. On information and belief, the accused LRDIMM 

products have no substantial noninfringing use, and constitute a material part of the patented 

invention. On information and belief, Defendants are aware that the product or process that 

includes the accused LRDIMM products may be covered by one or more of the ’523 Asserted 

Claims or may satisfy one or more of the ’523 Asserted Claims under the doctrine of equivalents. 

On information and belief, the use of the product or process that includes the accused LRDIMM 

products infringes at least the ’523 Asserted Claims.

34. Defendants have committed these acts of direct and indirect infringement with 

knowledge of the ’523 Asserted Claims and thus have acted with willful, egregious, wanton, 

deliberate, and flagrant disregard for Netlist’s rights in the ’523 patent.

35. As a result of Defendants’ direct, indirect, and willful infringement of the ’523

Asserted Claims, Netlist has suffered and is continuing to suffer monetary damages and is entitled 

to a monetary judgment in an amount adequate to compensate for Defendants’ past infringement. 

Netlist is also entitled to enhanced damages, attorneys’ fees, interest, and costs due to Defendants’

willful, egregious, wanton, deliberate, and flagrant conduct with regard to Netlist’s patent rights.

PRAYER FOR RELIEF

WHEREFORE, Netlist respectfully requests that judgment be entered:

A. Declaring that Defendants have infringed and are infringing, directly and indirectly, 

the claims of the asserted patent;

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B. Compensating Netlist for all damages caused by Defendants’ infringement of the 

asserted patent;

C. Ordering Defendants to account for and pay damages caused to Netlist by 

Defendants’ unlawful acts of patent infringement;

D. Entering judgment that Defendants’ acts of patent infringement are willful, 

egregious, wanton, deliberate, and flagrant conduct and enhancing Netlist’s damages up to three 

times their amount under 35 U.S.C. § 284;

E. Granting Netlist pre- and post-judgment interests, together with all costs and 

expenses;

F. Granting Netlist its reasonable attorneys’ fees under 35 U.S.C. § 285;

G. Awarding such other relief as this Court may deem just and proper.

DEMAND FOR JURY TRIAL

Plaintiff demands a jury trial for all issues deemed to be triable by a jury.

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Dated: June 15, 2020

/s/ Andrew H. DeVoogd

Andrew H. DeVoogd 

 E-mail: AHDeVoogd@mintz.com

James M. Wodarski (pro hac vice to be submitted)

 E-mail: JWodarski@mintz.com

Matthew S. Galica (pro hac vice to be submitted)

 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

 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.

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