Netlist Said to Defeat SanDisk in ULLtraDIMM Patent Case

Netlist, Inc. announced that the United States Patent and Trademark Office (USPTO) denied petitions requesting Inter Partes Review (IPR) of Netlist patents asserted against the ULLtraDIMM.

The petitions were filed by SanDisk Corp. who partnered with Diablo Technologies, Inc. to produce the ULLtraDIMM.

Both are co-defendants in Netlist’s patent infringement action pending in the United States District Court of the Northern District of Californiawww.cand.uscourts.gov.

In denying its petitions, the Patent Trial and Appeal Board (PTAB) found that SanDisk failed to establish a reasonable likelihood of showing the unpatentability of at least one claim from the challenged patents. SanDisk and Diablo are now barred from filing additional IPRs on the 4 Netlist patents with claims that the PTAB refused to review.

Of the five petitions filed by SanDisk, three were denied in their entirety and a fourth was denied as to some of the challenged claims.

The PTAB granted petitions to review three other Netlist patents that have also been asserted in the litigation.

Noel Whitley, Netlist’s VP of IP and licensing said: “In court papers filed in June 2014, SanDisk suggested that the PTAB had granted about 83% of petitions for IPR. According to statistics relied upon by SanDisk, Netlist had just over a 3% chance of achieving this result. By any measure, this was a highly successful outcome and speaks to the strength of our patents in this case. Claims from these four patents represent a substantial infringement position against the ULLtraDIMM. With the PTAB having reviewed and rejected the defendant’s arguments on invalidity, the defendants face an uphill climb to convince a jury that the same patents are invalid, particularly where the threshold for invalidating claims is higher in District Court than before the PTAB.”

The PTAB denied institution as to all claims of U.S. Pat. No. 8,516,185 which relates to the fundamental distributed buffer architecture created by Netlist and is integral to the architecture of the ULLtraDIMM. Among other functions, the distributed buffer architecture allows a proprietary DIMM containing various types of memory to appear to the system as standard DRAM memory. Netlist’s architecture has been widely adopted by the industry on the DDR4 LRDIMM.

Two other Netlist patents for which SanDisk’s IPR petitions were denied cover critical design features of hybrid memory modules, including ULLtraDIMM, that employ NAND flash in the DRAM channel. U.S. Pat. No’s 8,301,833 and 8,516,187 relate to clocking and buffering techniques for moving data between the volatile and non-volatile subsystems on a hybrid memory module, developed as part of Netlist’s pioneering work on its NVvault. The PTAB also denied institution as to three claims from U.S. Pat. No. 8,001,434 which cover self-test features that are generally applicable to memory modules including the ULLtraDIMM.

C.K. Hong, Netlist’s CEO said: “We are very pleased with this outcome and the overall progress in our multi-year legal proceedings against ULLtraDIMM and SanDisk. The technologies covered by our patents are critical for the enterprise computing and storage space. We believe this ruling by the PTAB is a clear validation of our IP in this area and a testament to the years of seminal development work and ongoing investment.“