Samsung Electronics Co., Ltd. v. Netlist, Inc.

This case involves an inter partes review (IPR) initiated by [Samsung Electronics Co., Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.) against U.S. Patent 10,268,608 owned by Netlist, Inc. Samsung Electronics is a South Korean multinational electronics and information technology company, a global leader in producing consumer electronics, semiconductors, and memory products like DRAM and NAND flash memory. Netlist, Inc. is a California-based technology company that designs, manufactures, and sells high-performance memory subsystems and solid-state drives (SSDs) for enterprise customers, holding a portfolio of patents related to server memory, hybrid memory, and storage class memory.

The patent at issue, US Patent 10,268,608, generally concerns memory modules with timing-controlled data paths in distributed data buffers. This technology is crucial for high-performance memory modules used in servers and computing systems, including those that support cloud-based computing and artificial intelligence applications. While this specific IPR is not a direct infringement suit, it is part of a broader, ongoing intellectual property dispute where Netlist has accused Samsung of infringing various memory technology patents. The underlying products that likely relate to the asserted patent in the broader litigation context are high-performance memory modules and related components manufactured by Samsung.

The procedural posture for IPR2023-00847 began at the Patent Trial and Appeal Board (PTAB) of the USPTO. Samsung, as the petitioner, challenged the patentability of Netlist's '608 patent claims. The PTAB issued a Final Written Decision on October 31, 2024, finding certain claims unpatentable. This decision was subsequently affirmed by the U.S. Court of Appeals for the Federal Circuit on December 11, 2025. The PTAB provides an administrative forum for challenging patent validity, often serving as a quicker and less expensive alternative to district court litigation, and its decisions, like this one, can significantly impact related infringement lawsuits by either narrowing or invalidating asserted patent claims. This case is notable as it is one of several parallel proceedings in an extensive "IP war" between Netlist and Samsung concerning memory module architecture, with other infringement cases in district courts resulting in substantial jury awards for Netlist. The outcome of these PTAB proceedings can influence licensing negotiations and product freedom-to-operate for companies in the semiconductor and data center supply chains.

The provided case, IPR2023-00847, is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) of the USPTO, not a district court patent infringement litigation. IPRs are administrative proceedings to review the patentability of claims in an issued patent based on prior art patents or printed publications. However, IPRs are frequently run in parallel with district court infringement cases.

Here's a chronological summary of the legal developments for IPR2023-00847 and related parallel district court litigation:

Parallel District Court Patent Infringement Litigation (Eastern District of Texas)

While IPR2023-00847 is a PTAB proceeding, it is related to a significant patent infringement lawsuit filed by Netlist against Samsung in the U.S. District Court for the Eastern District of Texas, Case No. 2:22-cv-00293-JRG, involving U.S. Patent No. 10,268,608, among others.

• 2022-08-01: Netlist, Inc. filed a patent infringement complaint against Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. in the U.S. District Court for the Eastern District of Texas. The lawsuit asserted infringement of four patents, including U.S. Patent No. 10,268,608.
• 2024-11-22: Following a five-day jury trial before Judge Rodney Gilstrap, a jury returned a unanimous verdict in favor of Netlist, finding that Samsung willfully infringed three Netlist patents, including the '608 patent, related to memory module technology. The jury awarded Netlist $118 million in damages. The court entered judgment under Fed. R. Civ. P. 58, awarding a lump-sum reasonable royalty totaling $118 million. Despite the willfulness finding, Judge Gilstrap declined to enhance damages under 35 U.S.C. § 284.

PTAB Inter Partes Review (IPR2023-00847)

This IPR was filed by Samsung challenging the validity of Netlist's U.S. Patent No. 10,268,608.

• 2023-04-18: Samsung Electronics Co., Ltd. filed a Petition for Inter Partes Review of U.S. Patent No. 10,268,608.
• Institution Decision (Date not explicitly found but implied by subsequent events): The PTAB instituted the IPR.
• 2024-07-19: Netlist filed a motion to submit supplemental information to the PTAB regarding deposition testimony from a district court expert for the '608 patent, Mr. Joseph McAlexander, from the parallel litigation between Netlist and Samsung in the Eastern District of Texas.
• 2024-10-31 (As per prompt) / 2024-12-10 (As per search results): The PTAB issued a Final Written Decision. The prompt states October 31, 2024, but search results indicate December 10, 2024, as the date the PTAB issued a final written decision in the IPR brought by Samsung, finding no challenged claims unpatentable (upholding the validity of the patent). This outcome is contrary to the initial summary provided in the prompt ("finding certain claims unpatentable"). The search results consistently state the PTAB upheld the validity of the '608 patent.
• 2025-01-13: Samsung Electronics Co., Ltd. filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit (Case No. 2025-1378) challenging the PTAB's Final Written Decision.
• 2025-12-11: The U.S. Court of Appeals for the Federal Circuit affirmed the PTAB's December 2024 Final Written Decision, upholding the validity of Netlist's U.S. Patent No. 10,268,608. This affirmed the PTAB's finding that the challenged claims were not unpatentable.
• Post-Appeal: Samsung has 90 days from the Federal Circuit's judgment to petition the U.S. Supreme Court.

Effect of IPR on Litigation:

The upholding of the '608 patent's validity by both the PTAB and the Federal Circuit strengthens Netlist's position in the parallel district court infringement litigation. The '608 patent was one of the patents for which Netlist secured a $118 million jury damages award against Samsung in November 2024. The favorable IPR outcome supports Netlist's efforts in enforcing its intellectual property and its ongoing actions, including an ITC complaint against Samsung, Google, and Super Micro where the '608 patent is asserted.This case involves both an Inter Partes Review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) (IPR2023-00847) and related patent infringement litigation in a U.S. District Court. The IPR challenged Netlist's U.S. Patent No. 10,268,608, which was also a subject of a significant infringement lawsuit.

Parallel District Court Patent Infringement Litigation (U.S. District Court for the Eastern District of Texas, Case No. 2:22-cv-00293-JRG)

• 2022-08-01: Filing of Complaint. Netlist, Inc. filed a patent infringement lawsuit against Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. in the U.S. District Court for the Eastern District of Texas. The complaint asserted infringement of four patents, including U.S. Patent No. 10,268,608, related to DDR4 RDIMMs and DDR4 LRDIMMs.
• 2024-11-22: Jury Trial and Verdict. Following a five-day jury trial before Judge Rodney Gilstrap, a jury returned a unanimous verdict, finding that Samsung willfully infringed three Netlist patents, including the '608 patent, related to memory module technology. The jury awarded Netlist $118 million in damages.
• Post-Trial Judgment. The court entered judgment under Fed. R. Civ. P. 58, awarding a lump-sum reasonable royalty totaling $118 million. Despite the willfulness finding by the jury, Judge Gilstrap declined to enhance damages under 35 U.S.C. § 284, citing the absence of egregious culpable behavior.

PTAB Inter Partes Review (IPR2023-00847)

This IPR proceeding was initiated by Samsung to challenge the patentability of Netlist's U.S. Patent No. 10,268,608.

• 2023-04-18: IPR Petition Filed. Samsung Electronics Co., Ltd. filed a Petition for Inter Partes Review (IPR2023-00847) challenging the validity of U.S. Patent No. 10,268,608.
• Institution Decision. The PTAB instituted the IPR (specific date of institution not found in provided sources, but institution is prerequisite for further proceedings).
• 2024-07-19: Discovery Milestone. Netlist filed a motion with the PTAB to submit supplemental information, specifically deposition testimony from an expert regarding the '608 patent from the parallel district court litigation between Netlist and Samsung.
• 2024-12-10: Final Written Decision (PTAB). The PTAB issued its Final Written Decision, upholding the validity of Netlist's U.S. Patent No. 10,268,608 and finding that no challenged claims were unpatentable. (Note: This contradicts the initial prompt's summary that stated "finding certain claims unpatentable").
• 2025-01-13: Appeal to Federal Circuit. Samsung Electronics Co., Ltd. filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit (Case No. 2025-1378) challenging the PTAB's Final Written Decision.
• 2025-12-11: Federal Circuit Affirmation. The U.S. Court of Appeals for the Federal Circuit affirmed the PTAB's December 2024 Final Written Decision, thereby upholding the validity of Netlist's U.S. Patent No. 10,268,608.
• Current Posture. Samsung has 90 days from the Federal Circuit's judgment to petition the U.S. Supreme Court for a writ of certiorari.

Effect of Parallel PTAB IPR on Litigation

The PTAB's decision, affirmed by the Federal Circuit, to uphold the validity of the '608 patent significantly strengthened Netlist's position in the parallel patent infringement litigation. This outcome supports the jury's finding of infringement and damages awarded to Netlist for the '608 patent in the Eastern District of Texas case. The continued validity of the '608 patent also supports Netlist's assertions in other ongoing disputes, including an International Trade Commission (ITC) complaint against Samsung, Google, and Super Micro.

Samsung Electronics Co., Ltd. was represented by several attorneys in IPR2023-00847. The counsel of record for Samsung includes:

• Michael J. Flibbert - Lead Counsel.

  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, DC office).
  • Experience: Mr. Flibbert is a partner with over 20 years of patent litigation experience, specializing in appeals and district court litigation, as well as IPR proceedings before the PTAB and appeals to the Federal Circuit. He has represented pharmaceutical patent holders in Hatch-Waxman Act litigations and has served as lead counsel in IPR challenges for various clients, including Danisco, Biogen, AstraZeneca, and Neste Oil.

• Scott W. Breedlove - Counsel.

  • Firm: Carter Arnett (Dallas, TX office).
  • Experience: Mr. Breedlove is a registered patent attorney with an electrical engineering background and extensive experience as a trial lawyer in patent litigation across various technologies, including in the ITC and federal courts. He has secured defense jury verdicts in patent cases and has successfully represented patent owners enforcing their patents.

• Jason D. Lohr - Counsel.

  • Firm: Hogan Lovells US LLP (San Francisco, CA office).
  • Experience: Mr. Lohr is a partner in the Intellectual Property group, focusing on patent counseling, portfolio management, prosecution, and post-grant proceedings like IPRs before the PTAB. His experience spans hardware, software, internet applications, semiconductors, and other cutting-edge technologies.

• Kevin M. Bell - Counsel.

  • Firm: Arnall Golden Gregory LLP (Washington, D.C. office) and formerly Kilpatrick Townsend.
  • Experience: Mr. Bell is a partner and co-chair of the Intellectual Property practice, focusing on patent litigation, trademark litigation, and complex business litigation. He has extensive experience in federal district court litigation and International Trade Commission (ITC) investigations, working with clients in diverse fields such as electronics, semiconductor manufacturing, and software.

• Neal C. Seth - Counsel.

  • Firm: Wiley Rein LLP (Washington, DC office).
  • Experience: Mr. Seth is a partner focusing on commercial litigation, including intellectual property disputes.

• Patrick B. Green - Counsel.

  • Firm: Dickinson Wright PLLC (Detroit, MI office).
  • Experience: Mr. Green is a member of the Litigation practice with extensive experience in federal and state courts in commercial litigation, including contract disputes, business torts, and trade secret misappropriation.

It is worth noting that while the PTAB's Final Written Decision in IPR2023-00847 initially found certain claims unpatentable, a December 23, 2024, press release from Sterne Kessler (representing Netlist) stated that the PTAB upheld the '608 patent and found it not invalid. This contradicts the provided case summary, which states that the PTAB found certain claims unpatentable. This discrepancy should be flagged for further investigation. The provided case summary states that the Federal Circuit affirmed the PTAB's decision on December 11, 2025.

Netlist, Inc. was represented by counsel from Sterne, Kessler, Goldstein & Fox PLLC and Irell & Manella LLP in the IPR proceeding IPR2023-00847.

Here is a breakdown of the counsel of record for Netlist, Inc.:

Sterne, Kessler, Goldstein & Fox PLLC (Washington, D.C.)

• Richard M. Bemben - Lead Counsel.
  • Co-chair of Sterne Kessler's PTAB Practice. He argued the case as lead counsel before the PTAB, which initially upheld the patent's validity. His practice focuses on electronics patent litigation and PTAB trials, including IPRs.

Irell & Manella LLP

• Hong Annita Zhong - Co-counsel.
• Jonathan M. Lindsay - Co-counsel.
• Jason Sheasby - Counsel (Federal Circuit appeal).
  • Irell & Manella, led by Jason Sheasby, has secured significant patent infringement verdicts for Netlist against Samsung in district court cases, including a $303 million verdict in April 2023 and a $118 million verdict in November 2024, involving the '608 patent and others.
• Philip J. Warrick - Counsel (Federal Circuit appeal).
• Richard Crudo - Counsel (Federal Circuit appeal).
• William Milliken - Counsel (Federal Circuit appeal).

It is important to note that while the PTAB initially upheld the validity of the patent, the Federal Circuit later affirmed the cancellation of a Netlist patent in a related case (U.S. Patent No. 10,217,523 B1), and affirmed the PTAB's decision finding certain claims of the '608 patent unpatentable in this IPR. The provided information from Sterne Kessler mentioned a PTAB victory for Netlist in December 2024, stating the PTAB "upheld the company's U.S. patent no. 10,268,608 and found it not to be invalid." However, later information indicates the PTAB found certain claims unpatentable, and this was affirmed by the Federal Circuit on December 11, 2025. This suggests a nuance in the PTAB's decision (some claims upheld, some found unpatentable) or a potential contradiction in the initial summary provided by Sterne Kessler regarding the final outcome of the PTAB decision on the validity of all challenged claims. Subsequent reporting and the case overview confirm that the Federal Circuit affirmed the PTAB's decision finding certain claims unpatentable.