Netlist, Inc.

Patent Trials and Appeals Board

May 6, 2021

IPR2020-01044 (P.T.A.B. May. 6, 2021)

Trials@uspto.gov Paper 24
571-272-7822 Date: May 6, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SK HYNIX INC. and SK HYNIX AMERICA INC.,
Petitioner,
v.
NETLIST, INC.,
Patent Owner.

IPR2020-01042 (Patent 10,474,595 B2)
IPR2020-01044 (Patent 9,858,218 B1)
IPR2020-01421 (Patent 10,217,523 B1)1

Before BRYAN F. MOORE, JON M. JURGOVAN, SHEILA F. McSHANE
and KARA L. SZPONDOWSKI, Administrative Patent Judges.2
PER CURIAM.
TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317, 37 C.F.R. § 42.74

1 We exercise our discretion to issue one order for all of the above captioned
proceedings. The proceedings have not been consolidated, and the parties
are not authorized to use this caption format.
2 This is not an expanded panel of the Board. It is a listing of all Judges on
the panels of the above-listed proceedings.
IPR2020-01042 (Patent 10,474,595 B2)
IPR2020-01044 (Patent 9,858,218 B1)
IPR2020-01421 (Patent 10,217,523 B1)

2
I. INTRODUCTION
With the Board’s authorization, Petitioner SK hynix Inc. and SK
hynix America Inc. (“Petitioner”) and Netlist, Inc. (“Patent Owner”)
(collectively “the Parties”) filed in each of the above proceedings a Joint
Motion to Withdraw Petition for Inter Partes Review in each of the above-
identified proceedings (“Joint Motion”). Paper 22.3 In support of the Joint
Motion, the Parties filed in each proceeding a corresponding Confidential
Agreement, Ex. 2035 (“Settlement Agreement”),4 as well as a corresponding
Joint Request to Keep Agreement Confidential and Separate pursuant to
37 C.F.R. § 42.74(c), Paper 23 (“Joint Request”).5
II. DISCUSSION
In each Joint Motion, the Parties represent that Petitioner and Patent
Owner have resolved their disputes and request that “the Board terminate
this proceeding in its entirety.” Joint Motion 1–2. The Parties represent that
the Agreement is “a true copy of any agreement [and] understanding . . .
made in connection with, or in contemplation of, the withdrawal of the
Petition for the proceeding under 37 CFR 42.74(b).” Id. at 1. The Parties

3 For purposes of expediency, we cite to Papers filed in IPR2020-01044,
unless otherwise noted. The Parties filed a similar Motion in IPR2020-
01042 (Paper 23) and IPR2020-01421 (Paper 14). Although the Parties
were authorized to file a Joint Motion to Terminate the Proceedings under
37 C.F.R. § 42.72, the Parties stylize their Motion as a Motion to Withdraw
Petition for Inter Partes Review. We treat the Motion as a Joint Motion to
Terminate the proceedings under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72.
4 For purposes of expediency, we cite to Exhibits filed in IPR2020-01044.
The Settlement Agreement was filed in IPR2020-01042 as Exhibit 2035 and
in IPR2020-01421 as Exhibit 2022.
5 The Parties filed a similar Request in IPR2020-01042 (Paper 24) and
IPR2020-01421 (Paper 15).
IPR2020-01042 (Patent 10,474,595 B2)
IPR2020-01044 (Patent 9,858,218 B1)
IPR2020-01421 (Patent 10,217,523 B1)

3
further represent that they have “filed a joint motion to dismiss with
prejudice” the concurrent district court litigation regarding the patents at
issue, and “do not anticipate further litigation between them concerning the
. . . patent[s].” Id. Accordingly, the Parties jointly request termination of
these proceedings. Id. at 2.
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Consolidated Trial Practice guide, 86 (Nov. 2019) (Consolidate TPG”); see
35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Here, although the Board has
instituted inter partes review in each of the above-identified proceedings, the
Board has not decided the merits of these proceedings. Under these
circumstances, therefore, we determine that it is appropriate to terminate
these proceedings as to the Parties, without rendering a final written
decision.
In each Joint Request, the Parties request that the Settlement
Agreement be treated as business confidential information and be kept
separate from the files of the patent involved in these inter partes
proceedings. Joint Request 1. After reviewing the Settlement Agreement,
we find that the Settlement Agreement contains confidential business
information regarding the terms of settlement. We determine that good
cause exists to treat the Settlement Agreement as business confidential
information pursuant to 37 C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).

IPR2020-01042 (Patent 10,474,595 B2)
IPR2020-01044 (Patent 9,858,218 B1)
IPR2020-01421 (Patent 10,217,523 B1)

4
III. ORDER
In consideration of the foregoing, it is hereby
ORDERED that the Joint Motion to Terminate each proceeding is
granted, and the above-identified proceedings are terminated; and
FURTHER ORDERED that the Joint Request to Keep Agreement
Confidential and Separate in each proceeding is granted, and the Settlement
Agreement shall be kept separate from the file of Patents; 10,474,595 B2,
9,858,218 B1, and 10,217,523 B1 and made available only to Federal
Government agencies on written request, or to any person on a showing of
good cause, pursuant to 37 C.F.R. § 42.74(c).
IPR2020-01042 (Patent 10,474,595 B2)
IPR2020-01044 (Patent 9,858,218 B1)
IPR2020-01421 (Patent 10,217,523 B1)

5
FOR PETITIONER:
Joseph A. Micallef
Michael D. Hatcher
SIDLEY AUSTIN LLP
jmicallef@sidley.com
mhatcher@sidley.com

FOR PATENT OWNER:
William Meunier
Serge Subach
Matthew S. Galica
Andrew H. DeVoogd
MINTZ, LEVIN, COHN, FERRIS,
GLOVSKY AND POPEO, P.C.
wameunier@mintz.com
ssubach@mintz.com
msgalica@mintz.com
ahdevoogd@mintz.com