Earlier this month, the Federal Circuit heard oral argument in Netlist, Inc. v. Micron Technology, Inc., a case formerly styled Netlist, Inc. v. Samsung Electronics Co. This is a patent case we have been following because it attracted an amicus brief. In this case, Netlist appeals a judgment of the Patent Trial and Appeal Board in an inter partes review, which resulted in the invalidation of a claim of a Netlist patent. Judges Dyk, Linn, and Chen heard the oral argument. This is our argument recap.
Jeffrey Lamken argued on behalf of Netlist. He began with a discussion of claim construction, arguing “the claim itself and the intrinsic evidence all indicate that the recited ‘ranks’ have more than one memory device.” Lamken likened the claim language to saying, “I’m going to select one or two classrooms, and I will speak to only one student at a time.” Lamken suggested the Board’s construction would permit “those to be single student classrooms.” According to Lamken, however, “it doesn’t make sense to speak in that way.”
One judge asked whether the claim language “foreclose[s] that interpretation.” Lamken responded by saying “it comes as close as you can without saying flat out, haec verba, this is foreclosed.” Lamken maintained “the only question is: does [the claim] have that trivial case, that kind of edge case [where] somehow you have a ‘rank’ that only has one device in it?” Lamken argued “that’s just not normal in modern memory systems, and you wouldn’t read this language to be trying to reach that abnormal case.”
Finally, Lamken addressed the Board’s decision regarding a prior application from which Netlist seeks to claim priority over alleged prior art. According to Lamken, “the Board gave only one reason” for its decision that Netlist was not entitled to priority. According to Lamken, “that one reason was a 2024 website the Board dug up itself,” which means “[i]t wasn’t subject to adversary presentation.”
Melanie Bostwick argued on behalf of Micron Technology. She, too, began with claim construction. She argued that, “to get to the construction of ‘rank’ that Netlist prefers, you have to add words both to the claim itself and to the specification’s description of the embodiments.” She said “neither of those say that you send a command to a single device within a rank.” Bostwick suggested that, instead of “ordinary language and . . . the natural reading,” “in this context the most instructive evidence . . . is the technical definition.” According to Bostwick, the definition states “a ‘rank of memory’ is a bank of one or more DRAM devices.” Bostwick argued “there is nothing in the claim language or the specification that provides a reason to depart from that [definition].”
A judge suggested “the objective of this invention is to use as many low-cost memory devices as possible.” If so, he asked, “in the context of this patent why would you ever have a ‘rank’ that only has one memory device?” Bostwick responded by arguing “two ‘ranks’ with one memory device each, that’s still better than one rank with one memory device.” She continued, explaining this “expand[s] the capacity of the device in one of the two ways that the patent describes.” Bostwick also argued that, while “using multiple lower density devices in those ranks [may] achieve[] some further purpose economically,” the claim “doesn’t require anything about the respective density of the devices or the ranks.”
Responding to a judge’s question about the Board’s “independent consultation of a website, and then relying on it,” Bostwick indicated “that that was improper. But, she said, “it was not essential to the Board’s analysis, and so, under this Court’s [precedent], that’s not enough reason to vacate the Board’s opinion.” Bostwick also contended the Board’s conclusion “was supported by substantial evidence . . . in the testimony of both experts.”
On rebuttal, Lamken argued the technical definition “actually shows exactly why skilled artisans would not interpret this invention . . . [to] have a single device rank.” According to Lamken, that definition “gives the one example of when you might have a rank of one”: “an embedded system that does not require much capacity.” Lamken argued “a skilled artisan reading this patent is not going to think we’re talking about that edge case.”
We will continue monitoring this case and report on developments.