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In the Matter of
Inv. No. 337-TA-1089
CERTAIN MEMORY MODULES AND
COMPONENTS THEREOF
Pursuant to Commission Rules 210.21(a)(1) and 210.15 and Ground Rule 5, Complainant
Netlist, Inc. (“Netlist”) respectfully moves for partial termination of the Investigation with
respect to allegations of infringement of Claims 43, 44, 45, 47, 48, 50, 52, and 58 of U.S. Patent
No. 9,606,907 (“the ’907 patent”) against SK hynix Inc., SK hynix America Inc. and SK hynix
memory solutions Inc. (collectively “Respondents” or “SK hynix”) based on partial withdrawal
of the Complaint in this Investigation as to these claims only. Netlist moves to terminate as to
these eight claims solely in an effort to help streamline the case and to conserve the resources of
Pursuant to Ground Rule 5.1.2, Netlist requested the respective positions on this motion
of the Commission Investigative Staff and Respondents on September 19, 2018. Respondents do
not oppose the motion. The Staff has reviewed a draft of this Motion for compliance with the
regulations for Termination of Investigations. The Staff is of the view that the instant motion
substantially complies with the Commission’s requirements, and accordingly, terminating the
Section 337 through their importation into the United States, sale for importation, or sale within
the United States after importation of certain memory modules and components thereof, that
infringe two patents, including the ’907 patent. On June 14, 2018, the ALJ set August 5, 2019 as
the amended target date for completion of this Investigation. See Order No. 14 (June 14, 2018).
An evidentiary hearing is scheduled for January 14-18, 2019. See Order No. 18 (Sep. 13, 2018).
The claims of the ‘’907 patent currently asserted in this Investigation include Claims 43,
44, 45, 47, 48, 50, 52, and 58.1 This motion seeks partial termination of the Investigation with
respect to allegations of infringement of these claims of the ’907 patent against Respondents
based on partial withdrawal of the Complaint in this Investigation as to these claims only. 2
Commission Rule 210.21(a)(1) states that “[a]ny party may move at any time prior to the
issuance of an initial determination on violation of section 337 of the Tariff Act of 1930 to
Commission Rule 210.21(a)(1); see also Certain Tool Handles, Tool Holders, Tool Sets,
Components Therefor, Inv. No. 337-TA-483, Order No. 7, at 1 (Apr. 22, 2003) (granting motion
1
On March 19, 2018 ALJ Pender issued an Initial Determination Terminating the Investigation
as to Certain Claims 30, 31, 32, 33, 34, 35, and 38 of the ‘907 Patent. See Order No. 12 (Mar.
19, 2018).
the investigation as to [certain claims], on the ground that a reduction in the number of patent
claims at issue will allow the parties to focus their attention on the ‘primary’ patent claims in a
more expeditious manner and will also reduce the time and resources required from all of the
parties and the administrative law judge to proceed with the investigation”).
Further, the Commission has long held that, “in the absence of extraordinary
the prehearing stage of an investigation.” Certain Hand-Held Meat Tenderizers, Inv. No. 337-
TA-647, Order No. 6, at 2 (Sept. 5, 2008) (quoting Certain Ultrafiltration Membrane Systems,
and Components Thereof, Including Ultrafiltration Membranes, Inv. No. 337-TA-107, Comm’n
Action and Order, at 2 (March 11, 1982)). Likewise, partial termination with respect to a given
patent, or patent claims, is routinely granted at Complainant’s request. See, e.g., Certain
Communications or Computing Devices and Components Thereof, Inv. No. 337-TA-925, Order
No. 22 (March 20, 2015) (granting motion for partial termination as to certain claims); Certain
Laminated Floor Panels, Inv. No. 337-TA-545, Order No. 30 (Apr. 3, 2006) (“Laminated Floor
Panels”) (granting motion to withdraw certain patent claims from the investigation); Certain
Digital Processors and Digital Processing Sys., Components Thereof, and Products Containing
2
In the event this motion is granted, Claims 1, 2, 3, 4, 5, 6, 7, 8, 10, 12, 14, 15, 16, 17, 18, 19,
20, 21, 22, 24, 25, 27, and 29 of the ’907 patent would remain asserted.
Withdrawal of the allegations based on the claims identified above will simplify the
Investigation, streamline the hearing, and conserve judicial, OUII Staff, and private party
Thereof Including Generators, Inv. No. 337-TA-1110, Order No. 18, at 2 (Sept. 4, 2018)
(“Indeed, granting the motion will simplify the investigation, streamline the hearing, and
conserve resources by reducing the number of issues to be decided.”). “[G]ood cause need not be
investigation.” Laminated Floor Panels, Order No. 30, at 2. Nonetheless, factors such as
good cause to justify partial terminations. See Certain Semiconductor Timing Signal Generator
Devices, Components Thereof, and Products Containing Same, Inv. No. 337-TA-465, Order No.
25 (July 9, 2002); Certain HSP Modems, Software and Hardware Components Thereof, and
Products Containing Same, Inv. No. 337-TA-439, Order No. 16 (Feb. 16, 2001).
termination of this Investigation as to the subject patent claims. See, e.g., Certain Data Storage
Sys. & Components Thereof, Inv. No. 337-TA-471, Order No. 21, at 2-3 (Dec. 22, 2011) (“The
[ALJ] is unaware of any prejudice which respondents or the public may suffer as a result of the
withdrawal of 64 claims.”).
between Netlist and Respondents concerning the subject matter of the Investigation relevant to
For the foregoing reasons, Netlist respectfully requests that the Chief ALJ terminate the
Investigation with respect to Claims 43, 44, 45, 47, 48, 50, 52, and 58 of U.S. Patent No.
9,606,907.
3
This statement is not intended to include stipulations entered into by the private parties during
the course of the Investigation, e.g., to facilitate discovery.
Aarti Shah
MINTZ LEVIN COHN FERRIS
GLOVSKY AND POPEO PC
701 Pennsylvania Avenue, NW
Suite 900
Washington, DC 20004
Tel: 202-434-7300
Fax: 202-434-7400
Stephen J. Akerley
Philip C. Ducker
Adrian Kwan
MINTZ LEVIN COHN FERRIS
GLOVSKY AND POPEO PC
44 Montgomery Street, 36th Floor
San Francisco, CA 94104
Tel: 415-432-6000
Fax: 415-432-6001
NETLIST-ITC-1089@MINTZ.COM
CERTIFICATE OF SERVICE
I, Saron Harry, hereby certify that on September 20, 2018, true and correct copies of the
foregoing were served on the following parties listed below: