Samsung's Counterattack... Filing Patent Lawsuit Against US Company

Published 13 Nov.2023 18:06(KST)

"netlist's Patent Non-Infringement and Contract Breach"

Samsung Electronics has launched a counterattack against the U.S. company Netlist, with which it has been engaged in a patent dispute for several years. The patent dispute between the two companies is entering a new phase as Samsung obtained a decision that the original application of the disputed patent is invalid and filed a new lawsuit.

Seoul Samsung Electronics Seocho Building. Photo by Jinhyung Kang aymsdream@

On the 9th of last month, Samsung Electronics filed a lawsuit against Netlist in the U.S. District Court for the District of Delaware, claiming ‘patent non-infringement and breach of contract.’

Netlist is a company established in 2000 in Irvine, California by Hong Mo, a Korean-American, to design and manufacture memory modules. It is known to hold more than 40 patent families (Patent Family: all related patents including the original patent filed in the home country). These patents mainly concern memory modules and circuits.

Netlist has engaged in multiple lawsuits against Samsung Electronics.

In 2021, Netlist sued Samsung Electronics in the U.S. Eastern District Court of Texas, claiming that Samsung infringed on their patent (‘024). This patent is used to improve the energy efficiency of memory semiconductor modules. Netlist argued that Samsung took and used this patented technology while collaborating on a different project. In April of this year, a jury in the Eastern District Court of Texas ruled that “Samsung Electronics must compensate for infringing Netlist’s patented technology.” In August, the court accepted the jury’s verdict and ordered Samsung to pay $303.15 million (approximately 398.9 billion KRW) in damages.

In response, Samsung Electronics began a counterattack against Netlist. When Netlist claimed infringement of two other patents (‘218 and ‘595) against Samsung, Samsung filed patent invalidation trials for these two patents in October 2021. The U.S. Patent Trial and Appeal Board (PTAB) and the appellate board decided in May 2022 that both patents were invalid. Netlist missed the opportunity to appeal and can no longer assert rights over these two patents.

Based on the invalidation decision, Samsung Electronics initiated a new lawsuit. Last month, Samsung filed a lawsuit against Netlist in the U.S. District Court for the District of Delaware regarding ‘patent non-infringement and breach of contract.’ Samsung argued that the disputed patent (‘024) is a continuation application of the two patents (‘218 and ‘595) that were already invalidated, so Netlist’s previous claims are not valid. Rather, Samsung claimed that Netlist violated contractual obligations and regulations related to standard patents.

Samsung first asserted that it did not infringe the disputed patent (‘024) while producing memory modules. According to Samsung, the main claim of the disputed patent (‘024) includes ‘the corresponding slot of the host system’ as a component. However, Samsung’s memory modules use a so-called ‘Clock-to-CA training’ configuration. Since the configurations differ, Samsung argued that it does not infringe the disputed patent.

Furthermore, Samsung claimed that even if the disputed patent (‘024) is a Standard Essential Patent (SEP), as Netlist asserts, Netlist violated the regulations of the JEDEC Solid State Technology Association (JEDEC), a national semiconductor standards organization, by proceeding with the lawsuit. Netlist allegedly violated the rule that ‘reasonable and non-discriminatory royalty negotiations with the other party must be conducted first.’

A patent expert commented, “The original application of the patent that Netlist claims was infringed has been invalidated, and there is also a possibility that they violated regulations related to Standard Essential Patents. For now, it seems that Samsung has secured an advantageous position in the ongoing lawsuit.”