Samsung Electronics Co Ltd v. Netlist Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiffs: Samsung Electronics Co., Ltd. (Republic of Korea); Samsung Semiconductor, Inc. (California); Samsung Electronics America, Inc. (New York); and Avnet, Inc. (New York)
  • Defendant: Netlist, Inc. (Delaware)
  • Plaintiff's Counsel: Morris, Nichols, Arsht & Tunnell LLP
• Case Identification: 1:26-cv-00821, D. Del., 07/29/2026
• Venue Allegations: Venue is alleged to be proper in the District of Delaware as Defendant Netlist, Inc. is a Delaware corporation and is subject to personal jurisdiction in the district.
• Core Dispute: Plaintiffs seek a declaratory judgment that their memory products do not infringe Defendant's patent related to memory module clocking technology, that the patent is unenforceable due to inequitable conduct, and, in the alternative, that Defendant has breached its contractual obligations to license the patent on reasonable and non-discriminatory (RAND) terms.
• Technical Context: The dispute centers on high-performance computer memory modules (DIMMs), specifically technology for managing clock signal timing across numerous memory chips, a critical factor for enabling increased memory speed and density.
• Key Procedural History: The complaint details an extensive and contentious litigation history between Samsung and Netlist involving a terminated licensing agreement, multiple patent infringement lawsuits in U.S. district courts and the ITC, and German litigation. The complaint places significant emphasis on prior inter partes review (IPR) proceedings where claims of patents related to the patent-in-suit were found unpatentable over prior art. Plaintiffs allege this same prior art was knowingly and intentionally withheld from the U.S. Patent and Trademark Office during the prosecution of the patent-in-suit, forming the basis for an inequitable conduct claim.

Case Timeline

Date	Event
2013-07-27	'407 Patent Priority Date
2015-11-12	Samsung and Netlist enter Joint Development and License Agreement (JDLA)
2020-07-15	Netlist sends letter to Samsung terminating the JDLA
2021-10-15	Samsung files first declaratory judgment action against Netlist in Delaware
2021-12-20	Netlist files patent infringement lawsuit against Samsung in the Eastern District of Texas
2022-03-22	Samsung files IPR petition against related Netlist U.S. Patent No. 10,860,506
2023-10-17	PTAB issues final written decision finding claims of the '506 patent unpatentable
2024-11-01	Application for the '407 patent is filed
2025-12-09	Federal Circuit affirms PTAB's decision on the '506 patent
2026-07-07	U.S. Patent No. 12,675,407 issues
2026-07-07	Netlist files suit against Samsung asserting the newly issued '407 patent
2026-07-29	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 12,675,407 - "Memory Module with Local Clock Signals"

• Patent Identification: U.S. Patent No. 12,675,407, "Memory Module with Local Clock Signals," issued July 7, 2026 (the "'407 Patent"). Compl. ¶95

The Invention Explained

• Problem Addressed: The patent's background explains that as computer memory modules become faster and denser, ensuring that clock and control signals arrive at all memory chips at precisely the right time becomes increasingly difficult. Variations in signal path lengths and electrical loads across the module can cause timing skews, which conventional compensation methods employed by the main memory controller cannot sufficiently correct. '407 Patent, col. 1:36-2:27
• The Patented Solution: The invention proposes a memory module with distributed intelligence. Instead of relying on a single clock signal distributed from a central point, the module uses data buffer circuits associated with different groups of memory devices. These buffers generate their own "local" clock signals, each with an independently programmable phase relationship relative to the main system clock. '407 Patent, abstract '407 Patent, col. 9:1-10 This allows for fine-grained timing adjustments for each specific group of memory chips, creating locally synchronized zones on the module to overcome timing skews. The complaint includes a diagram, labeled Figure 1, showing a memory module with a module control device (116), multiple memory devices (112), and data buffers (118) connected to a memory controller (101). Compl. p. 18
• Technical Importance: This decentralized approach to clock synchronization is designed to enable higher memory densities and operating speeds by isolating and correcting timing issues at a local level on the module. '407 Patent, col. 2:19-27

Key Claims at a Glance

The complaint focuses on independent claims 1 and 6 for its non-infringement arguments. Compl. ¶96

• Independent Claim 1: The essential elements include:
  • A memory module with a PCB, memory devices organized in groups, and circuitry.
  • The circuitry is configurable to generate a "plurality of local clocks" corresponding to the groups of memory devices.
  • These local clocks have "respective phase relationships with the system clock," with these relationships being "programmable independently of each other."
  • A respective local clock is output to its "corresponding group of the memory devices and not to any other group of the memory devices" to perform memory operations. Compl. ¶96
• Independent Claim 6: This claim is similar but recites generating a first local clock with a first programmable phase shift and a second local clock with a second, independently programmable phase shift. Compl. ¶98
• The complaint notes that dependent claims 2-5 and 7-20 are also not infringed because they depend on claims 1 or 6. Compl. ¶101

III. The Accused Instrumentality

Product Identification

• The complaint identifies the accused products as "Samsung DIMM Products," including various types such as DDR5, LRDIMMs, and RDIMMs. Compl. ¶12 Compl. ¶16

Functionality and Market Context

• The complaint is a declaratory judgment action for non-infringement and thus focuses on how the accused products allegedly differ from the patent's claims. It states that the Samsung DIMM Products do not use the claimed technology. Compl. ¶97
• Samsung asserts that Netlist's infringement theory incorrectly equates "control words" in the accused DDR5 products with the "local clocks" required by the claims, arguing they do not have independently programmable phase relationships. Compl. ¶98
• Samsung also disputes Netlist's apparent allegation that a "DDR5 RCD" (Registering Clock Driver) in the accused products, which allegedly "produces four separate clock pairs," satisfies the claim requirement of outputting a local clock only to its corresponding group of memory devices. Compl. ¶99
• The complaint frames the accused products as compliant with JEDEC industry standards, a fact that underpins its alternative claim for breach of RAND licensing obligations. Compl. ¶¶66-69 Compl. ¶130

IV. Analysis of Infringement Allegations

The complaint seeks a declaration of non-infringement, outlining the infringement theories it anticipates from Netlist and providing its counterarguments.

'407 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality (as rebutted by Samsung)	Complaint Citation	Patent Citation
...generate a plurality of local clocks corresponding, respectively, to the plurality of groups of the memory devices, the plurality of local clocks having respective phase relationships with the system clock, the respective phase relationships being programmable independently of each other;...	The accused DDR5 DIMM Products allegedly use "control words" that are purported to be the claimed "local clocks," but the complaint asserts these do not have the required independently programmable phase relationships.	¶98	col. 18:28-36
...output the plurality of local clocks to the memory devices, wherein a respective local clock having a respective programmable phase relationship with the system clock is output to a corresponding group of the memory devices and not to any other group of the memory devices...	The accused DDR5 DIMM Products allegedly have a "DDR5 RCD" that produces "clock pairs," but the complaint asserts these are not output exclusively to a corresponding group of memory devices as required by the claim.	¶99	col. 18:37-44
A memory module operable in a computer system having a memory controller and a system bus...	The Samsung DIMM Products are sold as standalone components and not as part of a complete "computer system having a memory controller and a system bus."	¶100	col. 18:10-14

Identified Points of Contention

• Technical Question: The core technical dispute appears to be whether the accused products' "control words" or RCD-generated "clock pairs" are functionally and structurally the same as the "local clocks" with "independently programmable phase relationships" described in the '407 Patent. This raises the question of whether the accused signals are true periodic clock signals and whether their timing can be adjusted independently as claimed.
• Scope Question: A key definitional issue is whether the term "local clocks" can be construed broadly enough to read on the "control words" that Samsung alleges its products use.
• System Claim Dispute: The allegation that Samsung does not sell the full "computer system" recited in the claim preamble Compl. ¶100 suggests a potential dispute over divided infringement and whether Netlist can prove direct infringement by an end user and inducement by Samsung.

V. Key Claim Terms for Construction

The Term: "local clocks"

• Context and Importance: This term is central to the invention and the infringement dispute. The complaint indicates that Netlist's infringement theory may equate this term with "control words" or "clock pairs" in Samsung's products. Compl. ¶¶98-99 The construction of "local clocks" will likely determine whether the accused functionality falls within the scope of the claims.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Parties seeking a broader definition may point to general statements about generating timing signals locally to solve distribution problems, arguing any locally generated signal that serves a timing function qualifies.
  • Evidence for a Narrower Interpretation: Parties seeking a narrower view may cite claim language requiring generation from a "system clock" and specific embodiments showing regeneration circuits like a Phase-Locked Loop (PLL). '407 Patent, col. 12:45-48 They may also argue that a "clock" implies a continuous, periodic signal, which a "control word" may not be.

The Term: "programmable independently of each other"

• Context and Importance: This limitation defines a key capability of the invention. Samsung explicitly alleges its products do not meet this requirement. Compl. ¶98 Proving that the phase relationships in the accused products are both "programmable" and "independent" for each local clock will be a critical task for Netlist.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that any ability to configure timing, even through static settings, satisfies the term "programmable."
  • Evidence for a Narrower Interpretation: The specification describes a specific training method involving write/read comparisons to determine and set phase adjustments, suggesting an active and specific programming process. '407 Patent, FIG. 7B '407 Patent, col. 14:1-24 This may support a construction requiring more than a simple static configuration.

VI. Other Allegations

Indirect Infringement

• While this is a declaratory judgment complaint for non-infringement, it explicitly seeks a declaration that Plaintiffs are not liable for indirect infringement under 35 U.S.C. § 271(b)-(c). Compl. ¶104 The argument that Samsung only sells the DIMM component, not the full "computer system," directly addresses a potential claim of induced infringement. Compl. ¶100

Inequitable Conduct

• The complaint makes a detailed allegation of inequitable conduct (Count II), asserting that Netlist and its prosecuting attorney intentionally deceived the USPTO. Compl. ¶¶105-128 The core of this claim is the alleged failure to disclose the "Hiraishi" and "Ellsberry" prior art references during prosecution of the '407 Patent. Compl. ¶120 The complaint alleges these references were known to be material because Netlist was aware that they were successfully used in IPR proceedings to invalidate claims of closely related Netlist patents. Compl. ¶115 Compl. ¶126

Breach of Contract (RAND Obligations)

• In an alternative claim (Count III), Samsung alleges that if its products are found to infringe, the '407 Patent would be essential to JEDEC standards. Compl. ¶130 As a JEDEC member, Netlist is allegedly obligated to license such standard-essential patents (SEPs) on RAND terms. Compl. ¶132 The complaint alleges Netlist breached this duty by making non-RAND licensing demands, thereby forfeiting its right to an injunction and limiting potential damages. Compl. ¶93 Compl. ¶138

VII. Analyst's Conclusion: Key Questions for the Case

1. A question of enforceability: Will the court find that Netlist committed inequitable conduct by not disclosing the Hiraishi and Ellsberry prior art to the patent office during prosecution of the '407 patent, especially given that Netlist was allegedly aware of the art's materiality from prior IPR proceedings on related patents? A finding of inequitable conduct would render the patent unenforceable and end the infringement dispute.
2. A question of technical scope: If the patent is found enforceable, a core issue will be whether the "control words" and "clock pairs" in Samsung's JEDEC-compliant DDR5 memory modules function as the claimed "local clocks" with "independently programmable phase relationships." The resolution will depend on the court's construction of these key terms and a technical comparison of the technologies.
3. A question of contractual obligation: In the event the patent is found valid, enforceable, and infringed, the focus may shift to contract law. The court would need to decide if the patent is essential to the JEDEC standard and, if so, whether Netlist's licensing demands violated its RAND commitments, which could significantly limit the available remedies.