UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`The Honorable Thomas B. Pender
`Administrative Law Judge
`
`
`In the Matter of:
`
`CERTAIN MEMORY MODULES AND
`COMPONENTS THEREOF
`
`
`
`
`
`Inv. No. 337-TA-1089
`
`
`RESPONDENTS SK HYNIX INC., SK HYNIX AMERICA INC. AND SK HYNIX
`MEMORY SOLUTIONS INC.’S CASE MANAGEMENT STATEMENT
`
`
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`Respondents SK hynix Inc., SK hynix America Inc., and SK hynix memory solutions Inc.
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`(collectively, “SK hynix”) submit this Case Management Statement pursuant to Ground Rule
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`6.3.
`
`I.
`
`
`
`INTRODUCTION
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`With this Investigation, Netlist essentially seeks an impermissible do-over of the
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`allegations that Netlist asserted, and the Commission rejected, in Netlist’s previously-filed ITC
`
`investigation against Respondents, Inv. No. 337-TA-1023 (“1023 Investigation”). In the 1023
`
`Investigation, Netlist asserted six patents (it withdrew one prior to hearing) that Netlist claimed
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`were standard essential to certain JEDEC standards governing memory modules. The accused
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`products in the 1023 Investigation were the same SK hynix standard-complaint DDR4 RDIMM
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`and LRDIMM memory modules accused here. On January 16, 2018, the Commission affirmed
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`Chief Administrative Law Judge Bullock’s Initial Determination that SK hynix does not infringe
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`any asserted patent in the 1023 Investigation. The patents Netlist asserts in this Investigation are
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`related to those Netlist asserted in the 1023 Investigation – they are children of the parent patents
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`asserted in the 1023 Investigation. They have the same specifications as, and claims strikingly
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`similar to, the previously asserted patents, and they issued during discovery in the 1023
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`1
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`

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`Investigation, but Netlist did not seek to add them to the 1023 Investigation. Instead, Netlist
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`impermissibly burdens the Commission, the Administrative Law Judge, the Office of Unfair
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`Imports and Investigations, and Respondents with duplicitous, burdensome litigation.
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`By way of background, the products at issue in this investigation are memory modules
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`that comply with JEDEC’s industry standards. The accused memory modules, DDR4 RDIMM
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`and LRDIMM,1 plug into servers, and they serve as main memory. JEDEC, a microelectronics
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`industry standard-setting organization, sets standards that allow interoperability between servers
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`and memory devices, such as these modules.
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`Netlist does not design or manufacture JEDEC compliant DDR4 RDIMM or LRDIMM,
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`and it never has. It does not compete with Respondents. And, Netlist freely admits that it made
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`no technical contribution to any JEDEC standard. Others contributed the technologies JEDEC
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`adopted into its standards, which JEDEC compliant products implement. Indeed, in years past
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`when Netlist designed and sold memory modules, its business model was to sell non-JEDEC
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`compliant memory modules; these are the products, according to Netlist, from which the patents
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`arose. Tellingly, despite having litigated the patents and defended IPRs, Netlist did not even
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`disclose four of the five patents asserted at the 1023 hearing to JEDEC as potentially essential to
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`the standard until years after the patents issued, and just months before filing its 1023 complaint.
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`All of this reflects a shift in Netlist’s overall strategy. After operating at a loss for all but one
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`year of its existence, Netlist now touts that “[t]he Company is focused on monetizing its patent
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`portfolio” and that it “plans to pursue an intellectual property-based licensing business in which
`
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`1 RDIMM is an acronym for registered dual in-line memory module. LRDIMM is an acronym
`for load reduced dual in-line memory module.
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`
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`2
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`

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`it would generate revenue by selling or licensing its technology, and it intends to vigorously
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`enforce its patent rights against infringers of such rights.” Netlist 10-Q, Aug. 2016 at 6, 19.
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`Consistent with this strategy, Netlist has secured third-party funding for its litigation
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`campaign against SK hynix, which is by no means limited to the two investigations in the ITC.
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`Netlist recently announced that it “obtained outside investment to finance the legal fees and costs of
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`its legal action against SK hynix” from TR Global Funding V, LLC. See http://www.netlist.com/
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`investors/financial-news/press-release-details/2017/Netlist-And-TRGP-Announce-Financing-To-
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`Cover-All-Costs-Of-Legal-Actions-Against-SK-hynix/default.aspx. With this funding, and in
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`addition to the present investigation, Netlist has filed six additional patent infringement suits against
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`SK hynix and/or SK hynix customers in the U.S., Germany and China:
`
`1. On August 31, 2016, Netlist initiated a six patent infringement action against
`SK hynix and two of its affiliates in the U.S. District Court for the Central
`District of California, Civil Action No. 8:16-cv-01605-JLS-JCG (hereinafter
`“1605 Central District Action”). In addition to damages, Netlist sought a
`permanent injunction against SK hynix’s sale of the accused standard-
`compliant products.
`
`2. The following day, Netlist initiated the 1023 investigation against SK hynix
`at the ITC. In its ITC action, Netlist sought an exclusion order barring the
`importation of SK hynix’s accused standard-compliant products, as well as a
`cease and desist order directed to inventory in the U.S. As discussed above,
`the Commission terminated the investigation January 16, 2018 with a
`finding of no violation.
`
`3. On June 14, 2017, Netlist initiated another patent infringement action against
`SK hynix and two of its affiliates in U.S. District Court for the Central
`District of California, Civil Action No. 8:17-cv-01030-JLS-JCG. This
`action asserts the same two patents asserted in this Investigation. Netlist
`again sought a permanent injunction against SK hynix’s sale of the accused
`standard-compliant products in addition to damages.
`
`4. On July 11, 2017, Netlist filed a fourth patent infringement suit in the
`Beijing Intellectual Property Court. In that suit, Netlist again seeks an
`injunction against SK hynix. Netlist also seeks to enjoin SK hynix
`customers that purchase LRDIMMs designed by SK hynix Inc.
`
`
`
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`3
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`

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`5. On July 11, 2017, Netlist filed a fifth patent infringement action in the
`District Court of Munich. In Germany, Netlist Luxembourg S.à r.l accuses
`SK hynix Inc. and Hewlett-Packard GmbH, who allegedly purchases
`LRDIMM designed by SK hynix Inc., of patent infringement.
`
`6. On August 11, 2017, Netlist filed a sixth patent infringement action in the
`Beijing Intellectual Property Court, this time against SK hynix alleged
`customers. In this suit, Netlist also seeks an injunction. Netlist seeks to
`enjoin alleged customers that purchase LRDIMMs designed by SK hynix Inc.
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`In each of the seven suits, Netlists seeks to enjoin SK hynix’s sales of standard-complaint
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`products not because those sales diminish Netlist product sales (Netlist does not sell competing
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`product), but because Netlist seeks to exploit the threat of an injunction to make absurd royalty
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`demands contrary to its commitments.
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`Indeed, for years, SK hynix has attempted to secure peace with Netlist through licensing.
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`Netlist concedes that it is obligated to license the asserted patents on reasonable terms and
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`conditions that are demonstrably free of any unfair discrimination (i.e., “RAND” terms). Yet
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`despite its RAND commitment, Netlist refuses to license SK hynix on reasonable terms, insisting
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`on royalties that far exceed those charged by holders of much larger and more established patent
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`portfolios in this industry or, indeed, any appropriate benchmark.
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`Critically, Netlist demands licensing royalties that are magnitudes greater than it charged
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`SK hynix’s primary competitor Samsung. This is not only commercially unreasonable, but it
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`also violates Netlist’s RAND contractual obligation. Netlist entered a broad, portfolio license
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`with Samsung. Yet, Netlist has refused even to discuss the far more favorable terms given to
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`Samsung, the largest supplier of products in the United States competing with those that are the
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`subject of this Investigation. Netlist unreasonably maintains the position that its obligation to
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`offer a license to SK hynix on terms free of unfair discrimination imposes no limitation on the
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`terms it can demand.
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`4
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`It bears noting that in litigation currently pending in the District Court for the Central
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`District of California, SK hynix has sought the Court’s determination of the RAND terms for
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`Complainant’s alleged standard essential patents. Once those RAND terms have been judicially
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`determined, Netlist will be obligated to extend a license to SK hynix on those terms. And, for its
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`part, SK hynix has agreed to accept a license on the basis of such a final judicial determination.
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`Thus, the present Investigation is not necessary for Netlist to secure reasonable compensation for
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`the asserted patents, and Netlist ought not to be permitted consistent with its RAND obligations
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`to withhold a license and exclude or enjoin SK hynix’s products under these circumstances.
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`Hence, Netlist’s only goal in initiating and prosecuting the present Investigation (and injunction
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`actions abroad) is to use the threat of an exclusion order in order to pressure SK hynix into taking
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`a license on terms that are not RAND and that would be discriminatory vis-à-vis the Samsung
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`license.
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`As detailed in its Answer to the Complaint, SK hynix asserts several defenses relating to
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`Complainant’s RAND commitment and contends that any relief in favor of Netlist would be
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`contrary to the public interest.
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`
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`II.
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`
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`Below, SK hynix addresses each of the topics set forth in Ground Rule 6.3:
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`Status of Any Settlement Discussions
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`The private parties engaged in three settlement conferences, including a mediation, in the
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`1023 Investigation, with the last one occurring on April 19, 2017. Since then, the private parties
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`have engaged in additional settlement discussions, with the most recent such discussions
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`occurring on November 6, 2017. Little progress has been made to date because Netlist continues
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`to demand, in violation of the commitments it made to JEDEC to offer to license the patents on
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`RAND terms, royalties that are orders of magnitude higher than the royalty rates at which Netlist
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`
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`5
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`licensed SK hynix’s chief competitor, Samsung pursuant to a license agreement the parties refer
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`to as the Samsung JDLA.
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`III.
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`Status of Any Litigation That May Affect Any Issue in This Investigation
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`As noted and listed above, in addition to this Investigation, Netlist has filed six additional
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`patent infringement suits against SK hynix and/or SK hynix customers in the U.S., Germany and
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`China. Either the same patents asserted in this Investigation, or patents related thereto, are
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`asserted in each of the six additional suits listed above.
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`IV.
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`Status of Any Proceedings (Including Reexamination Proceedings) Before the
`United States Patent and Trademark Office
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`
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`Netlist asserts in this Investigation U.S. Patent No. 9,606,907 (the ’907 patent) and U.S.
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`Patent No. 9,535,623 (the ’623 patent). SK hynix has filed the following Inter Parte Review
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`(“IPR”) proceedings against the ‘907 and ‘623 patents in December of 2017, all of which are
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`awaiting Netlist’s preliminary response and the PTAB’s institution decision:
`
`IPR2018-00303 (‘623 patent), filed December 14, 2017
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`IPR2018-00362 (‘907 patent), filed December 22, 2017
`
`IPR2018-00363 (‘907 patent), filed December 22, 2017
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`IPR2018-00364 (‘907 patent), filed December 27, 2017
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`IPR2018-00365 (‘907 patent), filed December 27, 2017
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`
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`Furthermore, the ‘907 patent is a child patent issuing from a continuation application to
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`U.S. Patent No. 8,516,185 (“the ‘185 patent”) that Netlist asserted against SK hynix in the 1023
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`Investigation. SK hynix filed an IPR against the ‘185 patent on January 5, 2017 that the PTAB
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`instituted against all asserted claims. IPR2017-00577. Oral arguments in that proceeding are
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`scheduled for April 6, 2018 and the Final Written Decision is due by July 7, 2018.
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`
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`6
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`

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`
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`Likewise, the ‘623 patent is a child patent issuing from a continuation application to U.S.
`
`Patent No. 8,489,837 (“the ‘837 patent”) that Netlist asserted against SK hynix in the 1023
`
`Investigation. SK hynix filed an IPR against the ‘837 patent on December 30, 2016 that the
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`PTAB instituted against all asserted claims. IPR2017-00548. Oral arguments in that proceeding
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`are scheduled for February 14, 2018 and the Final Written Decision is due by May 15, 2018.
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`V.
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`
`
`Proposal for Any Modification of the Protective Order (Order No. 1) Now In Effect
`for This Investigation
`
`None. The parties have already moved for, and the ALJ has ordered, an amendment to
`
`the Protective Order regarding source code. No further modifications are contemplated, to SK
`
`hynix’s knowledge.
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`
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`SK hynix does note that various third parties produced confidential information and
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`documents in the 1023 Investigation and/or in the companion district court cases that are on-
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`going. SK hynix has already secured permission from the third party it subpoenaed who
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`produced confidential information in the prior proceedings to use that information in this
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`Investigation as well. SK hynix understands that Netlist has done the same regarding the third
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`parties it subpoenaed.
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`VI.
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`Proposal for Any Modification of the Obligations or Deadlines Set Forth In These
`Ground Rules or the Procedural Schedule
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`
`
`Attached as Appendix A is a proposed schedule for this Investigation adopting all the
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`dates set forth in Appendix A to Order No. 6 and adding proposed dates for the other deadlines
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`set forth in Appendix A to Order No. 6, as well as a date for Staff’s prehearing brief after the
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`private parties’ prehearing brief deadline. All the dates are agreed between the private parties
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`and the Staff, provided that no additional patents are added to this Investigation.
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`
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`7
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`

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`VII. A Discussion of Any Issues That Exist, or Any Issues The Parties Foresee, That
`Would Hinder or Prevent Respondents From Meeting the Date Set Forth in the
`Procedural Schedule for the Mandatory Disclosure Of Products Within the Scope of
`the NOI Pursuant to Ground Rule 7.2
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`
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`SK hynix recently updated its sales date for the accused DDR4 LRDIMM and RDIMM
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`products in both the companion district court cases, which are on-going and have been since
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`discovery closed in the 1023 Investigation, and in this Investigation. Furthermore, SK hynix has
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`already responded to Netlist’s interrogatories in this Investigation listing the part numbers for all
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`the accused DDR4 LRDIMM and RDIMM products imported into and/or sold in the United
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`States from January 1, 2016 through the date of the most recent sales date (approximately
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`October 25, 2017), and provided detailed information about the components included in each
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`accused part number.
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`VIII. A Discussion of the Need For Third Party Discovery and Any Problems the Parties
`Foresee In Obtaining Said Third Party Discovery
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`
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`SK hynix does anticipate subpoenaing at least the prosecuting attorneys for the asserted
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`patents and the litigation funding entity, TR Global Funding V, LLC (“TR Global”), which is
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`currently financing Netlist’s serial litigation against SK hynix and has at least some control over
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`the litigation. SK hynix has already subpoenaed TR Global in the companion district court
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`litigation, but so far it has not responded to that subpoena. SK hynix thus anticipates there may
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`be issues with enforcing a subpoena against TR Global in this Investigation, particularly given
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`that Netlist has refused to produce an unredacted version of its funding agreement with TR
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`Global or any communications between it and TR Global regarding this and the other cases
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`against SK hynix.
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`Date: January 23, 2018
`
`
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`
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`Respectfully submitted,
`
`By: /s/ Brian R. Nester
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`8
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`David T. Pritikin
`Richard A. Cederoth
`David C. Giardina
`SIDLEY AUSTIN LLP
`One South Dearborn
`Chicago, IL 60603
`Telephone: (312) 853-7000
`Facsimile: (312) 853-7036
`
`Theodore W. Chandler
`SIDLEY AUSTIN LLP
`555 West Fifth Street, Suite 4000
`Los Angeles, CA 90013
`Telephone: (213) 896-6000
`Facsimile: (213) 896-6600
`
`Michael D. Hatcher
`SIDLEY AUSTIN LLP
`2021 McKinney Avenue, Suite 2000
`Dallas, TX 75201
`Telephone: (214) 981-3300
`Facsimile: (214) 981-3400
`
`
`
`Brian R. Nester
`Michael R. Franzinger
`Wonjoo Suh
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`Telephone: (202) 736-8000
`Facsimile: (202) 736-8711
`
`Steven S. Baik
`Jinyung Lee
`Ryuk Park
`SIDLEY AUSTIN LLP
`1001 Page Mill Road, Building 1
`Palo Alto, CA 94304
`Telephone: (650) 565-7000
`Facsimile: (650) 565-7100
`
`
`Counsel for Respondents SK hynix Inc.,
`SK hynix America Inc. and SK hynix
`memory solutions Inc.
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`9
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`CERTIFICATE OF SERVICE
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`I hereby certify that copies of the foregoing Respondents SK hynix Inc., SK hynix
`
`America Inc. and SK hynix memory solutions Inc.’s Case Management Statement were
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`served on the following parties this 23rd day of January, 2018 in the manner indicated below:
`
`Via EDIS
`
`Via Overnight Mail (2 Copies)
`Via Electronic Mail
`michael.turner@usitc.gov
`
`Via Electronic Mail
`monisha.deka@usitc.gov
`
`
`Via Electronic Mail
`Netlist-itc-1089@mintz.com
`
`The Honorable Lisa R. Barton
`Secretary to the Commission
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, DC 20436
`
`The Honorable Thomas B. Pender
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, SW
`Washington, DC 20436
`
`Monisha Deka
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, S.W., Suite 401
`Washington, D.C. 20436
`
`James M. Wodarski
`Mintz, Levin, Cohn, Ferris, Glovsky and
`Popep, P.C.
`One Financial Center
`Boston, MA 02111
`
`Counsel for Complainant Netlist, Inc.
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`/s/ Francis Quaynor
`Francis Quaynor
`Paralegal
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`10
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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Thomas B. Pender
`
`Administrative Law Judge
`
`
`
`In the Matter of
`
`
`CERTAIN MEMORY MODULES AND
`COMPONENTS THEREOF
`
`
`
`
`Investigation No. 337-TA-1089
`
`
`
`
`INDEX
`
`Exhibit
`
`Appendix A
`
`Description
`Respondents SK hynix Inc., SK hynix America Inc. and SK hynix
`memory solutions Inc.: Appendix A to SK hynix’s Case
`Management Statement
`
`
`
`Date
`
`
`
`
`
`

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`APPENDIX A
`
`APPENDIX A
`
`

`

`APPENDIX A to SK hynix Case Management Statement
`
`[done]
`
`PROCEDURAL SCHEDULE, CASE NO. 337-TA-1089
`Event
`Date
`Initial Case Management Conference
`Thursday, January 25, 2018
`Deadline for Propounding Ground Rule 6.2
`Interrogatories
`File identification of expert witnesses, including their
`expertise and curriculum vitae
`Deadline for Ground Rule 7.1 Disclosure of Priority
`Dates and Dates of Conception/Reduction to Practice
`Exchange list of claim terms for construction
`Exchange proposed claim constructions
`File joint claim construction chart
`Deadline for Ground Rule 7.2 Disclosure of Products
`First settlement conference
`Submit first settlement conference joint report
`Deadline for Ground Rule 7.3 Disclosure of Domestic
`Industry Contentions
`File initial claim construction briefs
`File reply claim construction briefs
`Deadline for Ground Rule 7.4 Disclosure of
`Infringement Contentions
`Deadline for Ground Rule 7.5 Disclosure of Invalidity
`Contentions
`Technical Tutorial
`Markman Hearing Start
`Markman Hearing End
`Issue Order Construing Terms (*tentative date*)
`Fact discovery cutoff and completion
`Second settlement conference
`Submit second settlement conference joint report
`Serve initial expert reports
`Serve rebuttal expert reports
`Deadline for filing summary determination motions
`Expert discovery cutoff and completion
`Third settlement conference
`Submit third settlement conference joint report
`File requests for receipt of evidence without a witness
`Serve proposed direct exhibit lists
`Serve proposed direct exhibits (including witness
`statements), with available proposed physical and
`demonstrative exhibits
`File objections to proposed direct exhibits (including
`witness statements)
`
`Friday, April 13, 2018
`Monday, April 23, 2018
`Monday, April 23, 2018
`Tuesday, April 24, 2018
`Tuesday, May 22, 2018
`Friday, July 13, 2018
`Monday, July 16, 2018
`Tuesday, July 17, 2018
`Friday, July 27, 2018
`Friday, August 17, 2018
`Monday, September 10, 2018
`Monday September 3, 2018
`Wednesday, August 29, 2018
`Thursday, August 30, 2018
`Friday, September 28, 2018
`Friday, September 7, 2018
`
`Monday, March 12, 2018
`
`Monday, February 12, 2018
` Friday, February 23, 2018
` Monday, March 5, 2018
`Monday, March 12, 2018
`Monday, February 26, 2018
`Tuesday, March 13, 2018
`Wednesday, March 14, 2018
`
`Friday, March 16, 2018
`Monday, March 26, 2018
`Monday, April 09, 2018
`
`Friday, April 13, 2018
`
`Friday, September 14, 2018
`
`Friday, September 21, 2018
`
`

`

`File responses to objections to proposed direct exhibits
`(including witness statements)
`Serve proposed rebuttal exhibit lists
`Serve proposed rebuttal exhibits (including witness
`statements), with available proposed rebuttal physical
`and demonstrative exhibits
`Private parties file pre-hearing statements and briefs
`Staff files pre-hearing statement and brief
`Submit on electronic media proposed direct and
`proposed rebuttal exhibits (including witness statements)
`with available proposed direct and proposed rebuttal
`physical and demonstrative exhibits
`Deadline for filing motions in limine
`File objections to proposed rebuttal exhibits (including
`witness statements)
`File responses to objections to proposed rebuttal exhibits
`(including witness statements)
`File responses to motions in limine
`Pre-hearing conference
`Hearing Start
`Hearing End
`File initial post-hearing briefs addressing issues on which
`the party bears the burden of proof
`File final exhibit lists
`Submit final direct and rebuttal exhibits (including
`witness statements) with direct and rebuttal physical and
`demonstrative exhibits
`File responsive post-hearing briefs
`File reply post-hearing briefs
`Initial Determination Due
`Target date for completion of investigation
`
`Wednesday, September 26, 2018
`Monday, September 24, 2018
`
`Friday, September 28, 2018
`Friday, October 05, 2018
`Friday, October 19, 2018
`
`Friday, October 05, 2018
`Friday, October 12, 2018
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`Tuesday, October 09, 2018
`
`Monday, October 15, 2018
`Friday, October 26, 2018
`Friday, November 09, 2018
`Friday, November 09, 2018
`Monday, November 19, 2018
`
`Friday, November 30, 2018
`Friday, November 30, 2018
`
`Friday, November 30, 2018
`Friday, December 14, 2018
`Friday, December 21, 2018
`Friday, March 01, 2019
`Wednesday, July 03, 2019
`
`2
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