SMART Announces that Patent Office Confirms Rejection of 17 out of 20 Claims of Netlist '501 Patent

NEWARK, CA, March 22, 2016SMART Modular Technologies, Inc., a leader in specialty memory, storage and hybrid solutions including memory modules, Flash memory cards and other solid state storage products, today announced that the Patent Trial and Appeal Board ("PTAB") confirmed that 17 out of 20 claims of Netlist, Inc. U.S. Patent 8,359,501 (" '501") were unpatentable. While SMART's inter partes review ("IPR") against '501 was not successful, the PTAB's rejection of 17 claims in a prior IPR against Netlist's '501 and the PTAB's rejection of 18 claims of Netlist U.S. Patent 8,001,434 (" '434"), prevents Netlist from asserting any of these claims against all participants who manufacture certain memory and storage products. The rejected claims relate to memory modules (including LRDIMMs), solid state drives or SSDs, and storage class memory devices.

In its decision on SMART's IPR the PTAB pointed out that:

"The '501 patent also is the subject of [SanDisk®] IPR2014-00971 ("IPR-971"). We entered a final written decision in that case on December 14, 2015, concluding that claims 1-3, 5-8, and 11-20 are unpatentable…"

SMART brought its IPR against the '501 patent on additional grounds which the PTAB did not accept. There was one PTAB judge who issued a dissenting opinion expressing his agreement with SMART's position.

Regarding the remaining claims of the '501 patent, the PTAB stated:

"Petitioner Sandisk Corporation has requested rehearing of our determination that it did not meet its burden to show unpatentability of claims 4, 9, and 10, and our determination that it failed to show unpatentability of claim 15 as anticipated by U.S. Patent Application Publication No. 2005/0257109 A1."

Regarding SMART's IPR, SMART believes that its reasons for invalidity are correct and is preparing a petition for reconsideration. SMART will pursue appeals if the reconsideration is not successful.

During IPR appeals, Netlist's infringement lawsuits on the patents that are involved in these IPRs remain stayed.

The rulings against SMART in the IPRs on Netlist's '434 and '501 do not affect the considerable successes that SMART had in invalidating substantially all of the claims of Netlist U.S. Patents 7,289,386; 7,619,912; and 7,864,627.

About SMART Modular Technologies
SMART Modular Technologies is a global leader in specialty memory, storage and hybrid solutions serving the electronics industry for over 25 years. SMART Modular delivers solutions to a broad customer base, including OEMs that compete in the computing, networking, communications, storage, mobile and industrial markets. Focused on providing extensive customer-specific design capabilities, technical support and value-added testing services, SMART collaborates closely with their global OEM customers throughout their design process and across multiple projects to create memory, storage and hybrid solutions for demanding applications with differentiated requirements. Taking innovations from the design stage through manufacturing and supply, SMART Modular has developed a comprehensive product line comprised of DRAM, Flash and hybrid memory technologies across various form factors. SMART Modular is part of the SMART family of global companies. See www.smartm.com for more information.

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Contact:
Bruce Goldberg
SMART Modular Technologies
(510) 624-8159