Netlist Reiterated Patent Trial and Appeal Board Confirmed Validity of Two U.S. Patents

Netlist, Inc. reiterated that the Patent Trial and Appeal Board (PTAB) has confirmed the validity of U.S. Patent Nos. 8,001,434 and 8,359,501 following Inter Partes Reviews (IPRs) initiated by SanDisk Corp. and Smart Modular Technologies, Inc.

Netlist’s ‘434 and ‘501 patents cover self-test technologies widely used in high-performance memory modules, including LRDIMM, SSDs, and Storage Class Memory.

The PTAB has now conducted two full reviews of both patents and twice confirmed their validity. In its December, 2015 decisions on the SanDisk IPRs, the PTAB confirmed the validity of 17 total claims from the ‘434 and ‘501:  claims 2, 5, 6, 7-13, 17, 18, 26 and 35 from the ‘434, and claims 4, 9, and 10 from the ‘501.

Smart Modular filed two IPR petitions against each of the ‘434 and ‘501 patents. The PTAB denied two of the petitions at the outset, one against each patent, refusing to institute reviews based on the arguments put forward by Smart Modular in its petitions. The PTAB did institute reviews based on the other two petitions. In final written decisions issued earlier this month, the PTAB confirmed all of the claims under review in the ‘434 and ‘501 patents, finding that Smart Modular failed in its attempt to invalidate any of the claims in either patent. Netlist has posted the final written decision from the PTAB on its website in the investor relations section and provided additional comments on the validity of specific claims in this release to clarify actual events and address recent reports.

“We are very pleased with the remarkable success we’ve had defending our intellectual property against numerous challenges over many years,” said Noel Whitley, Netlist’s VP, IP and licensing. “Smart Modular challenged our self-test patents four times using the IPR process and failed to invalidate a single claim of either patent.”

The ‘434 and ‘501 patents are part of a seven-patent lawsuit Netlist filed in the U.S. District Court of the Northern District of California against the ULLtraDIMM product from SanDisk and Diablo Technologies, Inc. In respose to the lawsuit, SanDisk, Diablo and Smart Modular filed a total of 17 IPRs attempting to invalidate the seven Netlist patents. With these latest results, Netlist has now been successful in defending five of the seven asserted patents.

Contrary to recent reports, over 90 claims related to LRDIMM have been confirmed by the examiner in the consolidated reexamination of Netlist’s U.S. Patent No. 7,619,912 brought by Google, Inphi Corporation, and Smart Modular. The ‘912 reexamination is now on appeal at the PTAB with a decision expected later this year.

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Netlist Prevailed Vs. Smart Modular Technologies
In final Inter Partes Reviews of two patents related to self-test used in memory modules including LRDIMM, SSDs and Storage Class Memory
2016.03.15 | Press Release