DCT

1:24-cv-00614

Samsung Electronics Co Ltd v. Netlist Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-00614, D. Del., 05/22/2024
  • Venue Allegations: Venue is alleged to be proper based on Defendant Netlist, Inc. being subject to personal jurisdiction in the District of Delaware, and because the action arises in part from allegations made in a related case in the same district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its memory module products do not infringe Defendant's patent related to memory initialization and error reporting, and alternatively alleges that Defendant has breached its contractual obligations to license the patent on reasonable and non-discriminatory (RAND) terms.
  • Technical Context: The dispute centers on high-performance computer memory modules (LRDIMMs and RDIMMs) and a patented method for managing communication between a memory module and a system controller during system startup, a critical process for server stability and efficiency.
  • Key Procedural History: This action follows extensive litigation between the parties. The patent-in-suit is a continuation of two parent patents that were previously asserted by Netlist against Samsung. Those parent patents were invalidated in their entirety by the Patent Trial and Appeal Board (PTAB) following inter partes review proceedings initiated by Samsung. The complaint notes Netlist missed the deadline to appeal the PTAB's decisions. Netlist has allegedly asserted that patents in this family are essential to JEDEC memory standards, which forms the basis for Samsung's alternative claim that Netlist is obligated to offer a license on RAND terms.

Case Timeline

Date Event
2009-06-12 Earliest Priority Date for ’319 Patent (Provisional Application)
2015-11-12 Netlist and Samsung enter Joint Development and License Agreement
2020-07-20 Date Netlist's purported termination of license agreement became effective
2021-10-15 Samsung files DJ action on parent patents ('218 and '595)
2021-10-15 Samsung files IPRs on parent patents ('218 and '595)
2023-05-09 PTAB issues Final Written Decisions finding parent patents unpatentable
2024-01-23 U.S. Patent No. 11,880,319 Issues
2024-05-22 Complaint for Declaratory Judgment Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,880,319 - "MEMORY MODULE HAVING OPEN-DRAIN OUTPUT FOR ERROR REPORTING AND FOR INITIALIZATION", issued January 23, 2024

The Invention Explained

  • Problem Addressed: The patent's background section describes that, in conventional computer systems, there was "no existing method of handshaking" between the system memory controller (MCH) and a memory subsystem (e.g., a memory module) during initialization (Compl. ¶68; ’319 Patent, col. 2:65-3:1). This forced the MCH to either perform "blind execution" or insert an inefficient, predetermined waiting period while the memory module completed tasks, a problem exacerbated in advanced configurations like Load-Reduced DIMMs (LR-DIMMs) where initialization times can vary (Compl. ¶68; ’319 Patent, col. 3:4-24).
  • The Patented Solution: The invention proposes a handshake mechanism using a dedicated notification signal from the memory module back to the MCH (Compl. ¶67; ’319 Patent, col. 4:6-14). This signal, which can be implemented via an open-drain output, informs the MCH of the memory module's status (e.g., initialization in progress or complete), allowing the MCH to proceed with other tasks instead of idly waiting ('319 Patent, Abstract, col. 4:1-5). The detailed description explains that when multiple modules are present, they can share a bus line, holding it in one state until the last module has finished its initialization, at which point the bus is released to signal completion to the MCH (Compl. ¶¶70-71; ’319 Patent, col. 9:47-10:24).
  • Technical Importance: This handshake mechanism was designed to reduce inefficiencies and delays during system startup, improving overall system performance and responsiveness, particularly in complex server environments with multiple, varied memory modules (’319 Patent, col. 2:56-60).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of non-infringement of all claims, identifying independent claims 1 and 11 as exemplary (Compl. ¶¶108, 111).
  • Independent Claim 1 (System) Essential Elements:
    • A memory subsystem with dynamic random access memory (DRAM) elements and a memory subsystem controller.
    • The controller has an open drain output.
    • The subsystem provides a "first signaling interface" via the open drain output during "normal operations."
    • The subsystem provides a "second signaling interface" via the same open drain output during an "initialization operation."
    • Crucially, the "second signaling interface is distinct from the first signaling interface," and the "initialization operation is distinct from any of the normal operations."
    • During normal operations, the first interface outputs a "parity error signal."
    • During the initialization operation, the second interface outputs a signal related to "initialization operation sequences."
  • The complaint notes that dependent claims 2-10 and 12-20 are not infringed because they depend on claims 1 and 11, respectively (Compl. ¶111).

III. The Accused Instrumentality

Product Identification

The complaint identifies Samsung's Load-Reduced Dual Inline Memory Modules (“LRDIMMs”) and Registered Dual Inline Memory Modules (“RDIMMs”) as the instrumentalities at issue (Compl. ¶14). Specifically, the dispute covers those modules that comply with the DDR4 and DDR5 standards developed by the Joint Electron Device Engineering Council (JEDEC) (Compl. ¶64).

Functionality and Market Context

The accused products are high-density memory modules used in servers and high-performance computing. The complaint states that Netlist's infringement theory in prior litigation involving parent patents was that compliance with certain JEDEC standards, such as the "Clock-to-CA training" protocol, necessarily results in infringement (Compl. ¶72). Samsung alleges that compliance with JEDEC standards is imperative for its products to be commercially viable, as it ensures interoperability with other computer components (Compl. ¶77).

IV. Analysis of Infringement Allegations

Samsung, as the declaratory judgment plaintiff, asserts non-infringement. The core of its argument is that its products do not meet a key limitation present in both independent claims 1 and 11. The complaint includes a diagram from the patent, Figure 1, showing a computer system with a memory module (10) coupled to a memory controller (14) via an output (12) driven by a notification circuit (20) (Compl. ¶69, p. 19).

’319 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality (Samsung's Basis for Non-Infringement) Complaint Citation Patent Citation
... a memory subsystem is configured to provide a first signaling interface via the open drain output during normal operations and a second signaling interface via the open drain output during an initialization operation ... wherein the second signaling interface is distinct from the first signaling interface and the initialization operation is distinct from any of the normal operations; The complaint alleges that the Samsung Memory Modules fail to satisfy this limitation because the signaling interface used during initialization is not "distinct from the first signaling interface." ¶110 col. 15:56-65
wherein, during the normal memory read or write operations, the memory subsystem controller is further configured to output via the open drain output a parity error signal... The complaint's non-infringement theory focuses on the "distinct" interface limitation and does not specifically contest this element. ¶¶108, 110 col. 15:66-16:2
wherein, during the initialization operation, the memory subsystem controller is configured to output via the open drain output a signal related to one or more parts of the initialization operation sequences. The complaint's non-infringement theory focuses on the "distinct" interface limitation and does not specifically contest this element. ¶¶108, 110 col. 16:2-4

Identified Points of Contention

  • Scope Questions: The central dispute raised in the complaint is the meaning of the claim phrase "the second signaling interface is distinct from the first signaling interface." The case may turn on whether using the same physical pin for different functions (error reporting vs. initialization status) at different times constitutes two "distinct" interfaces, or if the term requires a more fundamental separation in hardware or control logic.
  • Technical Questions: What is the specific signaling protocol implemented in Samsung's DDR4 and DDR5 memory modules for error reporting and for initialization procedures like Clock-to-CA training? The complaint asserts a legal conclusion of non-infringement but does not provide the underlying technical details of Samsung's implementation for comparison against the patent's teachings.

V. Key Claim Terms for Construction

  • The Term: "second signaling interface is distinct from the first signaling interface"
  • Context and Importance: This term is the lynchpin of the non-infringement argument presented in the complaint (Compl. ¶110). The outcome of the infringement analysis will likely depend on whether the court adopts a broad or narrow construction of "distinct." Practitioners may focus on this term because its definition will determine whether multiplexing different functions over a single physical output pin falls within the scope of the claims.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests that an existing pin, such as an "error-out pin," can be repurposed to transmit the initialization notification signal (’319 Patent, col. 8:10-21, 8:26-31). An argument could be made that using the same hardware for a different, non-standard purpose ("status notification") during a different operational mode ("initialization") makes the resulting interface "distinct" in function, if not in structure.
    • Evidence for a Narrower Interpretation: The patent explicitly teaches an embodiment where a multiplexer selects between a "task_in_progress signal" and an "error signal" to drive the output transistor, suggesting distinct logical inputs for the two functions (’319 Patent, Fig. 3, col. 11:20-33). This could support an interpretation that "distinct" requires separate control logic or pathways, not just different signal content on the same wire. Furthermore, claim 1 links the distinctness of the interfaces to the distinctness of the operations ("wherein the second signaling interface is distinct from the first... and the initialization operation is distinct from any of the normal operations"), which could be argued to reinforce a need for more than a temporal separation of functions on a single pin.

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaration that Samsung is not liable for indirect infringement under 35 U.S.C. § 271(b)-(c) (Compl. ¶114). It does not contain affirmative allegations of indirect infringement.
  • Willful Infringement: The complaint makes no allegations regarding willfulness. It notes that in a prior case on parent patents, Netlist had alleged willful infringement against Samsung (Compl. ¶47).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. A core issue will be one of definitional scope: can the claim requirement for two "distinct" signaling interfaces be met by functionally multiplexing different signal types over a single physical pin during different operational modes (initialization vs. normal operation), or does it require a more concrete separation in hardware or control logic as suggested by certain embodiments in the patent?
  2. A parallel question is contractual enforceability: has Netlist created a binding obligation under its JEDEC membership to offer Samsung a license to the '319 patent on RAND terms, as alleged in Count II of the complaint? A finding for Samsung on this count could provide a separate path to resolution or cap potential damages, regardless of the infringement outcome.
  3. The central evidentiary question will be one of technical operation: does the actual signaling protocol used in Samsung's accused JEDEC-compliant memory modules align with the court's ultimate construction of a "distinct" interface, or is there a fundamental mismatch between the claimed invention and the accused implementation?