Diablo Technologies, Inc. v. Netlist, Inc.

I'll research this case thoroughly before drafting the overview.

Let me dig deeper into the '833 patent, the Diablo complaint, and the IPR history.

Let me verify a few remaining points: Diablo's corporate trajectory, the '833 patent's later assertion history, and the IPR outcomes.

Case Overview & Background

Diablo Technologies, Inc. v. Netlist, Inc., No. 4:13-cv-03901-YGR (N.D. Cal., Oakland Div., filed Aug. 23, 2013) — an early-round declaratory judgment action by Diablo Technologies, Inc., a now largely defunct Ottawa, Ontario fabless semiconductor company (founded 2003) that designed controller chips ("Rush" and "Bolt") and memory-channel module designs (TeraDIMM/MegaDIMM) for high-speed NAND-flash-backed server memory (docket; Netlist Third Am. Compl. ¶ 4). The defendant, Netlist, Inc., is an Irvine, California memory-module operating company (founded 2000; Nasdaq: NLST) that designs and sells server/storage memory (HyperCloud®, NVvault®, EXPRESSvault®) to OEMs including IBM, HP and Dell, and holds a large high-performance-memory patent portfolio. Netlist is a genuine operating/product company rather than a classic shell NPE (Stanford's NPE Litigation Database classifies it as a "Product company," npe.law.stanford.edu), but it has also become one of the most prolific patent asserters in the memory industry (later campaigns against Google, Samsung, Micron, and SK hynix). Notably, case No. 4:13-cv-03901 was not a classic NPE assertion: it was one flank of a multi-front commercial war between a supplier (Netlist) and a competitor/former contractor (Diablo) over Netlist's confidential "DxD/LRD/rank-multiplication" memory-channel technology.

The accused technology and patents. Netlist's Aug. 22, 2013 pre-suit notice letter (captured as an IPR exhibit) accused Diablo, Smart Modular, Smart Storage Systems, Smart Worldwide and SanDisk of infringing five Netlist patents "at least through the making, using, offering for sale and/or selling of the recently announced ULLtraDIMM product" — the first commercial "memory channel storage" SSD, in which Diablo's controller chips let SanDisk/Smart Storage stack flash behind DRAM on a standard DIMM slot (DLA Piper notice letter; Bartko press release). The five patents were: 8,001,434 and 8,359,501 (memory board with self-testing capability); 8,301,833 ("Non-Volatile Memory Module" — the patent flagged in the case metadata); 8,516,185 (distributed byte-wise buffers on a memory module); and 8,516,187 ("Data Transfer Scheme for Non-Volatile Memory Module"). The '833 patent, one-line technical sketch: a memory system having a volatile (DRAM) subsystem and a non-volatile (flash) subsystem in which a controller backs up DRAM to flash upon a trigger condition (e.g., power failure), with the DRAM operated at different clock frequencies depending on whether it is talking to the host or to the flash (reduced frequency during backup/restore) — priority to a June 1, 2007 provisional, filed Sept. 29, 2008, issued Oct. 30, 2012 (IPR petition overview; IPR2022-00418 FWD). Netlist later added two more patents to the fray — 7,881,150 and 8,081,536 (rank multiplication / selective isolation of memory ranks) — by second amended answer in January 2014, bringing the total to seven asserted patents.

Procedural posture, venue fight, and why it matters. The '3901 action was a race-to-the-courthouse DJ complaint filed hours ahead of Netlist's own infringement suit: Netlist's Aug. 22, 2013 notice letter promised a First Amended Complaint in C.D. Cal. the next morning; Diablo filed its N.D. Cal. declaratory-relief complaint first (seeking declarations of non-infringement/invalidity on the same five patents), Netlist filed its amended complaint in C.D. Cal. less than two hours later, and Netlist then moved to dismiss or transfer under the first-to-file rule. Judge Yvonne Gonzalez Rogers denied the motion on Oct. 11, 2013 (Dkt. 20), holding that Diablo's DJ complaint was the first-filed action as to those five patents and that the "anticipatory suit" factor was not, by itself, enough to warrant dismissal (Order, Dkt. 20). On April 8, 2014 the court consolidated '3901 into Netlist v. Smart Storage Systems, Inc., No. 4:13-cv-05889-YGR (the lead case; '3901 was administratively closed) and coordinated discovery with the parallel trade-secret case, No. 4:13-cv-05962-YGR (consolidation order, Dkt. 84). Venue mattered because the N.D. Cal./Oakland forum sat where SanDisk (which acquired Smart Storage in Aug. 2013) was headquartered, and Diablo had more personnel in the district than in the Central District — the court credited that convenience evidence in denying transfer. The case is notable on several counts: (1) it is a textbook anticipatory DJ / first-to-file ruling in a patent case; (2) it is the patent-law flank of the ULLtraDIMM trade-secret war, in which Netlist obtained a rare January 2015 preliminary injunction barring Diablo's Rush/Bolt chips and the ULLtraDIMM itself, only to see the injunction dissolved after a March 25, 2015 jury verdict for Diablo on trade-secret, contract and inventorship claims (Netlist recovered just $2.00 in nominal Lanham Act damages) (judgment; findings of fact); and (3) it spawned a large parallel IPR campaign — SanDisk, Diablo and Smart Modular filed IPR petitions in mid-2014 against the asserted Netlist patents; the '833 patent survived institution denials in both IPR2014-00994 (SanDisk) and IPR2014-01370 (Smart Modular), while Diablo's IPRs on the '150 and '536 patents were instituted and eventually produced the Federal Circuit's construction decision in Netlist, Inc. v. Diablo Technologies, Inc., 701 F. App'x 1001 (Fed. Cir. July 25, 2017) (vacating the Board's constructions of "selectively electrically coupling" and "selectively isolating") (Fed. Cir. slip op.; IPR2014-00883 remand decision; Netlist 10-Q descriptions of the IPR waves are in Netlist's SEC filings, e.g. investors.netlist.com). The '833 patent's market significance outlived this case: it later became one of Netlist's most-asserted patents (against Google, Samsung, SK hynix and Micron), and after surviving three earlier IPRs it was finally held unpatentable in Micron's IPR2022-00418 (Final Written Decision, Aug. 28, 2023, claims 1, 3–17, 19–30 obvious over Best/Bonella/Mills), a ruling that fed directly into Netlist's W.D. Tex. Micron action and Micron's Idaho "bad-faith patent assertion" countersuit.

Sourcing caveats. (i) The case metadata lists only 8,301,833 as "patents at issue"; the record shows Diablo's DJ complaint and the ensuing litigation actually concerned five Netlist patents (plus two added later), so the metadata is a subset. (ii) The docket status "unverified" in the metadata is consistent with the fact that '3901 was administratively closed upon consolidation into '5889 and all further filings went to the lead case. (iii) I could not verify from the sources reviewed the final disposition of the consolidated patent case (No. 4:13-cv-05889) or of the '833 patent's infringement claims against Diablo/SanDisk specifically — docket activity continued into at least 2018 (e.g., Dkt. 362, Sept. 5, 2018), and I would flag any asserted final judgment as unconfirmed. (iv) I likewise could not confirm from primary sources Diablo Technologies' post-2015 corporate fate (bankruptcy/asset sale), so I have not stated one.

I'll research this case thoroughly, starting with the docket and key rulings.

Let me dig into the docket and subsequent developments.

Now let me trace the later history of the consolidated case and the '833 IPRs.

Diablo Technologies v. Netlist — Key Legal Developments and Outcome

Important framing correction. The metadata's one-line summary ("Declaratory judgment/offensive action brought by Diablo Technologies against Netlist on the '833 patent") undersells the case in two respects:

1. Diablo was the declaratory plaintiff, not the offensive party. On 2013‑08‑23 Diablo filed a DJ complaint in N.D. Cal. seeking declarations of invalidity/non-infringement as to five Netlist patents — U.S. Pat. Nos. 8,001,434; 8,301,833; 8,359,501; 8,516,185; and 8,516,187 — the family Netlist had just accused the Diablo/SanDisk ULLtraDIMM module of infringing. The '833 patent was one of five (later seven) patents in the fight, not the sole patent. Netlist then counterclaimed for infringement, so the case became claim-and-counterclaim.
2. Case No. 4:13‑cv‑03901 has no independent judgment. It was consolidated into 4:13‑cv‑05889‑YGR on 2014‑04‑08 and administratively closed; the lead case thereafter was Netlist, Inc. v. Smart Storage Systems, Inc., et al., No. 4:13‑cv‑05889‑YGR (N.D. Cal.), which was in turn stayed on 2015‑04‑09 pending the IPRs and, per the sources I could retrieve, never reached Markman or trial. The 2015 jury trial and the only merits verdict/a appeal came from the companion trade-secret case (4:13‑cv‑05962‑YGR).

Docket source: https://dockets.justia.com/docket/california/candce/4:2013cv03901/[269462](/patent/269462)

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I. The race to the courthouse (July–August 2013)

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II. Pleadings, venue/first-to-file, and early motion practice (Sept 2013 – Feb 2014)

• 2013‑09‑13 / 2013‑09‑26 / 2013‑10‑29 — In C.D. Cal., Smart Modular/Smart Worldwide move to dismiss or sever the '295 counts; Diablo moves to dismiss Netlist's trade-secret, contract and unfair-competition claims; Smart Modular and Diablo move to dismiss or transfer the ULLtraDIMM patent claims.
• 2013‑11‑26 — C.D. Cal. severs and transfers the '295 claims to E.D. Tex. (stayed 2014‑03‑07 pending reexamination) and transfers the ULLtraDIMM patent claims to N.D. Cal.; orders the parties to show cause why the remaining claims should not also be transferred.
• 2013‑11‑13 / 2013‑12‑13 — A whistleblower letter postmarked from Canada (alleging Diablo built ULLtraDIMM from Netlist's HyperCloud architecture) arrives; Netlist files a Form 8-K attaching a redacted copy. Diablo files an ex parte application for sanctions/OSC; denied 2014‑01‑03 for failure to show the material was confidential.
• 2013‑12‑23 — C.D. Cal. orders the remaining claims transferred to N.D. Cal. — the entire C.D. Cal. action is now in N.D. Cal.
• 2013‑10‑10 (entered 10‑11) — Judge Gonzalez Rogers denies Netlist's motions to dismiss or transfer the Diablo and Smart Modular DJ complaints (Case No. 4:13‑cv‑03901, Dkt. 20). Holding: the Diablo DJ complaint is the first-filed action on the five patents; Netlist's pre-existing C.D. Cal. complaint involved different parties and no patent claims; the "anticipatory suit" theory is only one factor (citing Electronics for Imaging); and Netlist failed to show convenience/§1404 factors favored C.D. Cal. This is the seminal ruling that anchored the patent litigation in the Northern District.
  • Full text: https://cases.justia.com/federal/district-courts/california/candce/4:2013cv03901/269462/20/0.pdf
• 2014‑01‑21 — Netlist serves its Disclosure of Asserted Claims and Infringement Contentions and moves for leave to file a Second Amended Answer and Counterclaims adding two more patents ('150 and '536) — seven patents total against ULLtraDIMM.
• 2014‑02‑05 — Leave granted; new case schedule entered (the prior 03901 schedule was at Dkt. 68).
• 2014‑02‑12 — Smart Modular's parallel DJ action (4:13‑cv‑03916) is dismissed without prejudice on joint stipulation. (This mattered later: the dismissal "as if it never existed" was the basis for arguing 35 U.S.C. § 315(a)(1) did not bar Smart Modular's IPR petition.)
• 2014‑02‑17 — Netlist files its Second Amended Answer and Counterclaims in 4:13‑cv‑03901, asserting infringement of the seven patents (including the '833) against Diablo.

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III. Discovery and contention battles (Jan – Aug 2014) — strategically the decisive skirmish

• 2014‑01‑21 — Netlist's infringement contentions (≈237 pages, 71 pages of claim charts) mapped every element of every asserted claim onto the ULLtraDIMM based only on public materials, patent applications and Netlist-drafted diagrams — the accused product was not yet commercially available and Diablo refused to produce a sample.
• 2014‑02‑28 (noticed for hearing 2014‑04‑08) — Diablo moves to strike the infringement contentions and stay infringement discovery under Patent L.R. 3‑1, arguing Netlist failed the "reverse engineering or its equivalent" standard (citing Bender, Shared Memory Graphics, Infineon v. Volterra), used a photograph of a prototype with a testing port, and repeated "discovery is likely to show" for 50+ limitations; Diablo also invoked Rule 11.
  • Diablo motion: https://storage.courtlistener.com/recap/gov.uscourts.cand.[273071](/patent/273071).149.0.pdf
  • Netlist opposition (Dkt. 160): https://storage.courtlistener.com/recap/gov.uscourts.cand.273071.160.0.pdf (arguing a patentee may rely on publicly available information when the accused product is unavailable, citing SAGE Electrochromics v. View, and that a bright-line reverse-engineering rule would nullify § 271 "offer for sale" liability).
• 2014‑04‑01 — Diablo's motion to strike is DENIED; Netlist's contentions are held to satisfy Patent L.R. 3‑1. (Diablo's motion for relief from that and the discovery order below was denied 2014‑04‑08.)
• 2014‑04‑07 — Netlist's motion to compel ULLtraDIMM-related discovery is granted; the court also grants Netlist's motion for letters rogatory to Canadian courts to depose two former Diablo employees named in the whistleblower letter (those depositions occurred in late August 2014).
• 2014‑04‑30 — Diablo's request to re-designate Netlist's Amended Trade Secret Disclosure from "Highly Confidential – Attorneys' Eyes Only" is denied (coordination dispute with the 4:13‑cv‑05962 trade-secret case).
• 2014‑06‑06 — Diablo and Smart Storage serve invalidity contentions (Exhibits D‑1 to D‑6 / E.1–E.7).
• 2014‑08‑27 — Joint Claim Construction and Prehearing Statement (Patent L.R. 4‑3) filed — 28 pages. This is the last claim-construction step reflected in the record before the stay.

Strategic significance: the April 2014 rulings let Netlist litigate infringement without ever reverse-engineering the accused part, and the Canadian depositions fed the parallel trade-secret case that went to trial in March 2015. They also removed the pressure point Diablo hoped would knock out the infringement case before the IPRs were decided.

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IV. Consolidation (2014‑04‑08)

On Netlist's Rule 42(a)(2) motion (filed 2014‑03‑04), Judge Gonzalez Rogers ordered:

• 4:13‑cv‑05889‑YGR and 4:13‑cv‑03901‑YGR CONSOLIDATED for all purposes; 05889 is the lead case; "Case number 4:13‑CV‑03901‑YGR shall be administratively closed."
• Discovery coordinated with the trade-secret case (4:13‑cv‑05962); consolidation of 5962 denied without prejudice.
• Smart Worldwide dismissed without prejudice 2014‑04‑15; a Third Amended Complaint for patent infringement was filed in 5889 on 2014‑10‑07.
• Order text: https://cases.justia.com/federal/district-courts/california/candce/4:2013cv05962/[273188/158](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=273188-0158)/0.pdf

From this point forward, all filings were in 4:13‑cv‑05889. Case 4:13‑cv‑03901 has no further independent docket activity or judgment.

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V. Parallel PTAB proceedings on the asserted patents (2014 – 2015)

Sources: Netlist 10‑Q/10‑K disclosures (https://www.sec.gov/Archives/edgar/data/[1282631](/patent/1282631)/000155837016010109/nlst-20161001.xml; http://www.getfilings.com/sec-filings/[160517](/patent/160517)/NETLIST-INC_10-Q/); Smart Modular IPR2014‑01370 institution denial (hosted as IPR2022‑00996 Ex. 1017); Diablo's IPR2014‑00883 amended mandatory notice (https://www.docketalarm.com/cases/PTAB/IPR2014-00883/).

Bottom line for the '833: it survived both 2014–2015 IPR institution challenges (SanDisk and Smart Modular), and it was therefore not the patent driving the stay.

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VI. Stay pending IPR (2014 – 2015)

• 2014‑06‑24 — SanDisk moves to stay the N.D. Cal. patent cases pending the IPRs (Diablo later joins); Netlist opposes (2014‑07‑10), arguing unsubstantiated competitive harm and noting defendants never moved for a PI.
• 2014‑08‑21 — Stay DENIED without prejudice (case still at an early stage but Board had not yet acted).
• 2015‑01‑20 — SanDisk renews; Diablo joins (reply brief: https://storage.courtlistener.com/recap/gov.uscourts.cand.273071.229.0.pdf — arguing no undue prejudice, no competition evidence, no Markman, no fact/expert depositions, no trial date).
• 2015‑04‑09 — The Court GRANTS the stay of the patent cases pending resolution of the IPRs.

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VII. Claim construction (Markman)

The consolidated patent case never reached a claim-construction ruling. The only claim-construction milestone in the record is the Joint Claim Construction and Prehearing Statement (Patent L.R. 4‑3) filed 2014‑08‑27; the April 2015 stay intervened before a Markman hearing or order, and the sources I retrieved show no later claim-construction order. This is a notable feature of the case: the IPR stay permanently displaced the district court's construction of the '833 (and sibling) claims, leaving the PTAB and later Federal Circuit panels to construe the family.

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VIII. The companion trial and appeal (2015 – 2016) — where the only verdict came from

These were litigated in 4:13‑cv‑05962‑YGR (trade secrets/breach of contract/trademark), coordinated with, but not consolidated into, the patent case:

• 2014‑10‑06 — Netlist moves for a preliminary injunction against manufacture/sale of Diablo's Rush and Bolt chips and ULLtraDIMM modules.
• 2015‑01‑06 — PI GRANTED in part (enjoining the chips/modules); trial advanced to 2015‑03‑09. Diablo and SanDisk appeal; the Federal Circuit denies expedited briefing and Diablo's stay request, but stays the injunction as to SanDisk's existing inventory. (Diablo's PI appeal: Fed. Cir. No. 2015‑1174; the consolidated‑case docket reference appears at 4:13‑cv‑05889 Dkt. 305/309/316.)
• 2015‑03‑09 to 2015‑03‑23 — Two-week jury trial; verdict 2015‑03‑25: for the defendants on breach of contract, trade-secret misappropriation and inventorship; for Netlist on the trademark and false-advertising counts.
• 2015‑04‑24 — After briefing and argument, the court dissolves the preliminary injunction; Findings of Fact/Conclusions of Law on the §17200 unfair-competition claim grant no relief.
• 2015‑07‑08 — Post-trial motions argued.
• 2015‑09‑01 — JMOL denied for both sides; Netlist's new-trial motion denied; Diablo's attorney's-fee motion denied; Diablo's motion to recover the $900,000 PI bond and its costs GRANTED.
• 2016‑07‑11 — Federal Circuit AFFIRMS (per curiam: Moore, Linn, O'Malley), non-precedential. Netlist (DLA Piper – Panikowski) appealed; Diablo (McDermott Will & Emery – Marino) prevailed.
  • https://www.courtlistener.com/opinion/[4237270](/patent/4237270)/netlist-inc-v-diablo-technologies-inc/

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IX. Final disposition / present posture

• 4:13‑cv‑03901‑YGR: terminated by administrative closure on 2014‑04‑08 when consolidated into 4:13‑cv‑05889‑YGR. No verdict, judgment, or appeal issued in that docket number itself. Netlist's infringement counterclaims on the '833 and six other patents lived on in 5889.
• 4:13‑cv‑05889‑YGR (lead consolidated patent case): stayed 2015‑04‑09 pending the IPRs, with docket activity continuing thereafter (e.g., Dkt. 362‑1, Declaration of Jeff McMullen, filed 2018‑09‑05). I could not verify, from the sources retrieved, a final judgment, verdict, stipulated dismissal, or appeal in 5889. Treat any statement of a definitive "outcome" for the patent case as unverified pending a PACER pull of the 5889 docket for 2016–2020. (The trade-secret case's Fed. Cir. affirmance on 2016‑07‑11 disposed of 05962.)
• Later life of the '833 patent (reported, not fully verified): Netlist's own SEC disclosures state that in a subsequent round of IPRs filed by a memory manufacturer, the PTAB granted institution as to the '833 patent and, on 2023‑08‑28, determined that all challenged claims of the '833 patent were unpatentable. I could not confirm the specific proceeding number in this research pass — candidates include Samsung's IPR2022‑00996 and Micron's 2023 '833 petition — and the "August 28, 2023" date sits awkwardly with petitions filed in 2023, so verify the IPR number and date before relying on it. See Netlist filing summary: https://stockanalysis.com/quote/otc/NLST/filings/[2687606](/patent/2687606)/
• There is also apparently continuing PTAB activity touching the '833 family as of late 2025 (an exhibit reproducing the IPR2014‑01370 institution denial was filed in a Nov. 2025 Samsung petition, PGR2026‑00001). Low confidence; flagged for verification.

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X. Quick reference — key dates

Confidence note: the pre-2015 chronology, the venue order, the consolidation, the contention/discovery rulings, the IPR institution decisions on the '833, and the 2015–2016 trade-secret trial/appeal are all well-sourced above. The docket history of the consolidated patent case after the 2015 stay (including whether it was ever dismissed or went to judgment) and the 2022–2024 IPRs on the '833 are not verified in this pass and should be confirmed against PACER (4:13‑cv‑05889‑YGR) and the PTAB's Patent Trial and Appeal Board End‑to‑End system.

I'll research press coverage of this case, starting with the provided articles and expanding to other outlets.

Let me verify the specific articles cited in the task and search for more coverage.

I found substantial trade-press coverage. Here is what the press has reported.

Press coverage of Diablo Technologies v. Netlist (N.D. Cal. 4:13-cv-03901)

The case drew steady trade-press attention, mostly as the patent flank of the ULLtraDIMM trade-secret war. The Register covered the dispute from the start: on 2013-12-16 it reported that The Register Netlist had sued Diablo and Smart Storage "after whistleblower reveals alleged IP theft," quoting the anonymous letter (obtained via Netlist's 8-K) alleging that Diablo took Netlist's HyperCloud design "as-is" and that employees were told not to discuss Netlist's product with customers such as IBM and HP; the same piece put Netlist's HyperCloud development cost at "$65m" and noted SanDisk's $307m acquisition of Smart Storage. The Register followed with The Register on 2014-09-25, reporting that Diablo counter-sued Netlist "for unfair business practices," quoting Diablo CEO Riccardo Badalone's statement that "products based on the Memory Channel Storage architecture do not use any Netlist IP," and again on 2014-10-07, The Register, describing Netlist's PI application as returning Diablo's "sueball" and noting IBM, Huawei and Supermicro had licensed the ULLtraDIMM tech.

The January 2015 preliminary injunction produced the most consequential reporting, including the only published damages/settlement estimates. Computerworld reported on 2015-01-13 that the court had barred Diablo and SanDisk from making and selling the ULLtraDIMM controller chips, that the ban "affects all modules containing Diablo components" (with knock-on effects for IBM, Huawei, Lenovo and Supermicro), and — reporting beyond the court record — that analyst firm Needham estimated the case "could be settled for a sum between US$25 million to $50 million at the low end, which could effectively double the market cap of Netlist," while Craig-Hallum analysts said they "would not be surprised if this injunction initiated settlement discussions." Netlist's own Bartko Pavia press release (January 2015) supplied the quotation that the evidence showed Netlist "likely to prevail" and that Diablo "gained an advantage it would not have otherwise had." On the PTAB side, StorageNewsletter reported on 2015-01-01 (via Netlist's release) that the USPTO had denied several SanDisk IPR petitions, with Netlist VP Noel Whitley claiming "Netlist had just over a 3% chance of achieving this result," and identifying the '833 patent alongside the '185 and '187 as patents covering "clocking and buffering techniques" for hybrid modules that survived institution. Earlier, StorageNewsletter reported Netlist's addition of the '150 and '536 patents (2014-02-04), and StorageNewsletter reported the stay denial (2014-09-03), quoting C.K. Hong's welcome of the decision to "allow the patent lawsuit to continue."

The 2017 press coverage is dominated by two events — the Federal Circuit's affirmance and Diablo's collapse. On 2017-11-14 Netlist issued a release, carried by PR Newswire and syndicated (e.g., EPICOS, MarketScreener), stating the Federal Circuit "affirmed earlier decisions from the … PTAB confirming the validity of certain claims of Netlist's U.S. Pat. Nos. 8,001,434 … and 8,359,501," describing them as patents "cover[ing] self-test technologies widely used in LRDIMMs, SSDs, and Storage Class Memory," noting they were "asserted … as part of a seven-patent lawsuit against SanDisk and Diablo Technologies," and quoting C.K. Hong that this brought "the total to five Netlist patents that have prevailed." Netlist's PTAB firm McAndrews (2017-11-16) characterized the outcome as six IPR challenges with "18 Netlist claims" upheld. One month later, The Register reported on 2017-12-14 that Diablo's counsel Fabio Marino had told a December 1 hearing in Netlist v. Smart Modular (4:13-cv-05889) "day-to-day operations" were suspended, that Diablo's website was down, and that Marino was considering withdrawal — framing it as "Optane may have hit Memory1 hard." The Ottawa Citizen (Bagnall column, 2017-12-22; I retrieved a syndicated mirror at the Windsor Star) reported the bankruptcy itself: Diablo "filed for bankruptcy earlier this month" (Dec. 8), with trustee Ernst & Young listing "total claims of $14.3 million, including $4.9 million in claims unsecured against any assets," against "just $40,000 in cash," $935,000 in employee severance, a $5,943,041 City National Bank claim, and — a notable detail given the litigation — McDermott Will & Emery listed as a creditor (a $1.4M-plus claim). That column also supplied the case's most-cited causation narrative: the January 2015 preliminary injunction, later lifted, was described as doing lasting damage by depriving Diablo of momentum.

Where accounts differ, or go beyond the record. (i) The PR framing is materially stronger than the underlying rulings: the Nov. 2017 headline says the Federal Circuit "prevailed" on "validity," but the PTAB's actual holdings (as the earlier sections noted, and as the National Law Review analysis of the companion Smart Modular v. Netlist IPR2014-01374 decision reflects) were that the petitioner "had not established … unpatentability" — a failure of proof, not an affirmative validity finding, and the NLRN piece details a panel split (Judge Clements dissenting) and a mid-case claim-construction reversal on "generate." (ii) The Register's 2017 piece asserts Netlist "will now feel vindicated in its actions against Diablo, despite failing to prevail"; that characterization reflects the trade-secret verdict, not the patent docket, where the patent claims against SanDisk/Smart Storage remained pending subject to the stay (per Netlist's own SEC filings, which also state the court **dismissed all claims against Diablo without prejudice

Sources

• UNITED STATES PATENT AND TRADEMARK OFFICE
• Diablo Technologies Inc v. Netlist Inc
• WILLIAM F
• Second Amended Answer and Counterclaims to Plaintiff's Complaint for Declaratory Judgment, Diablo Technologies, Inc
• NETLIST, INC
• UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA
• Diablo Technologies Inc v. Netlist Inc, 4:13-cv-03901
• On March 21, 2014, Netlist filed a Second Amended Complaint against Diablo in the Northern District Court, Case No
• Case 4:13- cv- 05889- YGR Document 178 Filed 04/04/14 Page 1 of 2
• On August 23, 2013, Netlist filed an amended complaint for patent infringement, antitrust violations and trade secret misappropr...
• Netlist's Amended Complaint Provides Details in ULLtraDIMM Litigation -- Sixty Trade Secrets Believed Stolen by Diablo
• Netlist Provides Update on Lawsuit Against Diablo Technologies, Smart Modular Technologies, Smart Storage Systems and Smart Worl...

I'll research the docket and counsel appearances for this case.

Let me dig into the specific docket for case 4:13-cv-03901.

Now let me find who appeared for Diablo in case 4:13-cv-03901 itself.

Counsel of Record for Plaintiff Diablo Technologies, Inc. (N.D. Cal. No. 4:13-cv-03901-YGR)

Important framing caveat before the roster: Case 4:13-cv-03901 was consolidated for all purposes into Netlist, Inc. v. Smart Storage Systems, Inc., No. 4:13-cv-05889-YGR on April 8, 2014 (Dkt. 84), and 03901 was administratively closed, with "[a]ll further filings … filed in the lead case number C-13-5889-YGR only." (Justia docket for 4:13-cv-03901; consolidation order text). The case was also assigned to the same judge, Hon. Yvonne Gonzalez Rogers, who denied Netlist's motion to dismiss/transfer on October 11, 2013 (Dkt. 20) (Justia, Doc. 20). Practically, therefore, Diablo's counsel of record in 03901 is the same team that appeared for Diablo in the lead patent case. I was not able to view the 03901 docket's individual attorney-appearance entries (the case file is largely reproduced only in the related/lead cases and secondary databases), so the attributions below are drawn from signature blocks and party designations in the live filings of the consolidated litigation and from contemporaneous Law360 coverage.

Steptoe & Johnson LLP — Diablo's litigation counsel in the N.D. Cal. patent cases

McDermott Will & Emery LLP — Diablo's lead trial counsel (trade secret case) and PTAB counsel

What I could not verify

• The name on the 03901 complaint itself. The Aug. 23, 2013 declaratory-judgment complaint (seeking a declaration that the five Netlist patents, including the '833 patent, are invalid; Diablo's DJ complaint was the first-filed action as to those patents) — I could not retrieve its signature block. Given that Steptoe was Diablo's N.D. Cal. patent-case counsel and McDermott was its trade-secret/IPR counsel in the same period, attribution of the 03901 filings to one or both of these firms is an inference from the consolidated record, not a direct sighting of the 03901 appearance docket.
• Local counsel. No separate "local counsel" designation for Diablo distinct from the Palo Alto/Menlo Park offices above was identified; Bay Area offices of Steptoe and McDermott appear to have filled that function.
• In-house counsel. No Diablo in-house attorney (e.g., general counsel) appears in the materials I reviewed; Diablo was Canada-based (Kanata/Ottawa), and I found no named in-house signatory. This should be treated as unverified.
• Jones Day (Gregory L. Lippetz, Kathleen D. Lynott — Palo Alto; Steven J. Corr — Los Angeles) appears in N.D. Cal. patent-case filings in the same document as the Steptoe block, but without a party designation tying them to Diablo; I am not attributing them to Diablo, as they more likely represented co-defendant Smart Storage Systems/SanDisk. (Source document)
• A docket discrepancy worth flagging: Diablo's own IPR petition on the '833 patent (filed Sept. 22, 2014) states that "On February 12, 2014, the District Court dismissed Petitioner's complaint without prejudice" (Ex. 1025), cited to avoid the § 315(a)(1) bar. Netlist's SEC filings date the Feb. 12, 2014 dismissal to the parties' joint stipulation dismissing Smart Modular (a third-party plaintiff in 03901 per the Justia docket) without prejudice, and the 03901 case file remained active through the April 8, 2014 consolidation order. I could not resolve which reading is correct from available sources. (IPR petition text; Netlist 10-Q)

Bottom line

For plaintiff Diablo Technologies, Inc., the counsel of record in this N.D. Cal. patent action (as it merged into lead case 4:13-cv-05889) were Steptoe & Johnson LLP (William F. Abrams, Sanjeet K. Dutta, Douglas R. Peterson) as Diablo's patent-litigation counsel, alongside McDermott Will & Emery LLP (Fabio E. Marino as lead, with L. Kieran Kieckhefer, Nitin Gambhir, Barrington Dyer, Teri H.P. Nguyen, and PTAB back-up Bernie Knight), who handled Diablo's parallel trade-secret defense and its IPR challenges. Any exercise requiring a PACER-certified per-attorney appearance list for docket 03901 should be re-run against the 03901 docket sheet directly, since the filings themselves are now resident in the consolidated lead case.

I'll research the docket and filings to identify Netlist's counsel of record in this case.

Now let me pull the docket sheet for the DJ case and the appearances/lead counsel details.

Let me pull the docket sheet's attorney appearances and check for in-house counsel.

Counsel of record for the defendant — Netlist, Inc. (4:13-cv-03901-YGR)

Bottom line: The defendant in this DJ action is Netlist, Inc. (Diablo is the declaratory-judgment plaintiff and Netlist is the defendant/counterclaimant asserting, among other patents, the '833 patent). Netlist's defense team on the '3901 docket is a two-firm core: DLA Piper LLP (US) (San Diego, with an East Palo Alto/Sacramento presence) as lead patent counsel, plus McAndrews, Held & Malloy, Ltd. (Chicago) as patent-side co-counsel appearing pro hac vice. Bartko, Zankel, Bunzel & Miller (San Francisco) functioned as Netlist's local/trial firm in the consolidated related cases; I flag below that I could not confirm a separate appearance by Bartko attorneys in the '3901 docket itself.

Critical procedural caveat that affects any counsel inquiry: the '3901 case was consolidated with 4:13-cv-05889-YGR and administratively closed on 2014-04-08 (lead case = 05889; all further filings in the lead case only; In the news section above cites Dkt. 84). See Justia docket, 4:13-cv-03901, Dkt. 20 & general docket. So the '3901 docket captures appearances only from Aug. 23, 2013 through Apr. 8, 2014; anything later is under 4:13-cv-05889 (CourtListener docket 4180539). The names below are drawn from the '3901 docket's attorney listing plus signature blocks in '3901 papers (e.g., Netlist, Inc.'s Disclosure of Asserted Claims and Infringement Contentions, Case No. 4:13-cv-03901-YGR, reproduced at Ex. 1013 in IPR2014-00883) and in the consolidated/related N.D. Cal. filings.

Netlist, Inc. — defense/counterclaim team

What I could not verify (stated explicitly)

• No appearance by Netlist in-house counsel appears anywhere in the '3901 record I could retrieve. I found no evidence that Netlist's in-house lawyers (or its CEO, C.K. Hong, who is referenced in declarations) entered an appearance in '3901; Hong appears as a declarant, not as counsel:
• I could not access PACER directly and relied on the Justia docket mirror, CourtListener/RECAP, and the party signature blocks quoted in the IPR exhibits. Firm affiliations for Jason Blake Cunningham and the precise scope of Bartko Zankel's '3901 appearance are therefore flagged as unconfirmed rather than asserted.
• Nothing in the '3901 record appears sealed as to counsel identity; the limitation is the Apr. 8, 2014 administrative closure, after which Netlist's appearances/filings (including any substitution or withdrawal) would appear under 4:13-cv-05889.

For orientation — the plaintiff's team (Diablo), not the requested defendant

Diablo was represented by McDermott Will & Emery LLP, Menlo Park (Fabio E. Marino, L. Kieran Kieckhefer, Nitin Gambhir, Barrington Dyer, Teri H.P. Nguyen; and Judith S.H. Hom in the patent case), and, in the parallel IPRs, by Steptoe & Johnson LLP (Sanjeet K. Dutta, Douglas R. Peterson, Ellie Ong; Stephanie L. Schonewald later withdrew) — per Diablo's Amended Mandatory Notice in IPR2014-00883 and McDermott's 2015 press release. This is offered only so the two sides aren't conflated, since some signature blocks interleave both.

Sources: Justia docket, Diablo Techs., Inc. v. Netlist, Inc., 4:13-cv-03901; Netlist's infringement contentions/Cunningham declaration reproduced at DLA Piper signature block, IPR2014-00883 Ex. 1013; Dkt. 313, Netlist v. Diablo, 4:13-cv-05962; Dkt. 223, 4:13-cv-05889 (CourtListener); Fed. Cir. order, No. 2016-1011; Diablo Amended Mandatory Notice, IPR2014-00883; McDermott press release, 2015-03-25.