Eliyahou Harari et al. v. Shane C. Hollmer et al.

I'll research this case carefully — note that the metadata describes a BPAI interference rather than a conventional district court infringement suit, so I'll verify what actually happened procedurally.

Now let me verify the parties' corporate affiliations, the '601 patent's subject matter, and the panel/judges.

Key facts confirmed. Now let me check the '601 patent's priority chain, the post-remand outcome, and whether the '880 application ever issued.

Important framing correction

Before the substance: despite the "v." caption (which tracks the Supreme Court cert caption, Harari v. Hollmer, 568 U.S. 1144 (2013)), this is not a patent infringement litigation. There is no accused product, no damages claim, no district court, no jury, and no PTAB/IPR component. Interference No. 105,606 is a pre-AIA priority contest declared by the USPTO itself between two rival inventive entities claiming overlapping flash-memory subject matter. The "remedy" at stake was not money but who owns the claimed technology — i.e., priority of invention under 35 U.S.C. §§ 102(g)/120 and written-description compliance under § 112 ¶ 1. Most of the briefing categories you asked for (accused product, division/judge, NPE patterns, IPR linkage, market damages) simply do not map onto this matter; I've substituted the closest functional equivalents and flagged the mismatch rather than inventing facts.

The parties and the technology actually at issue

The junior party was Eliyahou Harari and Sanjay Mehrotra, application Ser. No. 09/310,880 (the "'880 application"). Both are SanDisk co-founders — Harari was SanDisk's co-founder and long-time CTO, Mehrotra a co-founder who later became CEO — so the real-party alignment is effectively SanDisk-side inventors against Advanced Micro Devices. (I did not independently pull the assignment record for the '880 application in this pass; that the application is a SanDisk-family filing is inferred from the inventors' roles and should be verified against USPTO assignment data.) The senior party was Shane C. Hollmer and Lee E. Cleveland, inventors of **U

I'll research this matter thoroughly. Note upfront: this is a BPAI interference (not a district-court infringement suit), so I'll map the requested chronology onto the interference's actual procedural history, plus the Federal Circuit appeal.

Threshold point: this is an interference, not an infringement action

Interference No. 105,606 is a pre-AIA priority contest before the BPAI (now the PTAB), not a district-court infringement suit. There is therefore no complaint, answer, counterclaim, Markman hearing, summary-judgment motion, JMOL, damages case, or settlement in the record. The requested litigation milestones map onto the interference as follows, and I use that mapping below:

---

Parties, patents, and technology

• Junior party (applicants): Eliyahou Harari and Sanjay Mehrotra, U.S. Application 09/310,880 ("'880 application"), filed 1999-05-14. Priority chain: '880 ← 08/771,708 (filed 1996-12-20) ← 08/174,768 ← 07/963,838 (divisional) ← 07/337,566 ('566 application), filed 1989-04-13. See Hollmer v. Harari, 681 F.3d 1351, 1353–54 (Fed. Cir. 2012); Foley & Lardner client alert (June 2012).
• Senior party (patentee): Shane C. Hollmer and Lee E. Cleveland, U.S. Patent No. 5,828,601 ('601 patent), issued 1998-10-27. I could not verify the '601 title or assignee from the sources retrieved; Hollmer and Cleveland were Advanced Micro Devices inventors in this era (cf. AMD-assigned EP 0 656 627, naming the same inventors).
• Dispositive issue: Harari's '880 application disclosed material from a different Harari/Mehrotra application, 07/337,579 ('579 application, "Multi-State EEPROM Read and Write Circuits and Techniques," filed the same day as '566). Every application in the chain used a photocopied incorporation statement referring to the '579 application only as "filed on the same day as the present application." Whether that statement worked controlled whether the '880 application reached 1989 (and thus antedated Hollmer's conception) or only 1996 (and thus lost).

---

Chronology of substantive developments

1. Filing phase (1989–1999) — the facts that generated the dispute

• 1989-04-13 — '566 application filed; its boilerplate incorporation paragraph identifies the co-pending '579 application only by title, inventors, and "filed on the same day as the present application." No serial number existed yet to cite.
• 1996-12-20 — 08/771,708 ('708) filed; it "undisputedly discloses the '579 application" and is the fallback priority date. 681 F.3d at 1354.
• 1998-10-27 — '601 patent issues to Hollmer and Cleveland.
• 1999-05-14 — '880 application filed as a photocopy of the '566 application with a transmittal sheet and a preliminary amendment that rewrote the incorporation statement to identify the '579 application by serial number and filing date and imported text and drawings from '579. This amendment is the seed of the entire dispute.

2. Interference declared and the initial dispositive motions (~2006–2008)

(Exact declaration date and paper numbers were not retrievable; the 105,6xx series and the FY2009 appeal docketing imply declaration circa 2006–2007 and a Board decision in late 2008/early 2009. Treat those two dates as inference, not verified fact.)

• Hollmer's preliminary motion (the case-dispositive one): the '880 claims are unpatentable under 35 U.S.C. § 112 ¶ 1 for lack of written description, because the '579 application was not properly identified in the '880 original disclosure (it was not "filed on the same day" as '880), so the preliminary amendment's '579 material

I'll research this interference proceeding and the counsel involved.

Let me find the counsel listings in the Federal Circuit opinions and docket.

Let me dig into the specific counsel listings and the parties' corporate affiliations.

Threshold correction: there is no infringement docket here

The case metadata describes USPTO Interference No. 105,606, not a district-court infringement action. There is therefore no PACER civil docket sheet, no complaint, and no "plaintiff" in the Rule 3/7 sense. The parties' alignment comes from the BPAI caption and the resulting Federal Circuit appeals:

Two appeals followed: Harari v. Hollmer, No. 2009-1406, 602 F.3d 1348 (Fed. Cir. Apr. 19, 2010) ("Harari I") and Hollmer v. Harari, No. 2011-1276, 681 F.3d 1351 (Fed. Cir. June 7, 2012). Counsel of record is evidenced by those appellate filings and the Federal Circuit's orders, not by a district-court appearance.

Counsel appearing for Harari & Mehrotra (the "plaintiff" side)

Deanne E. Maynard — lead appellate counsel (of record in the Federal Circuit)

• Firm: Jenner & Block LLP, Washington, D.C. during the earlier appeal; she is associated with Morrison & Foerster LLP's appellate practice in Washington, D.C. in the later period. (Caveat: I could confirm the firm affiliations generally but could not verify, from the record available to me, the exact date of her move between firms relative to each brief.)
• Note: One of the most frequent Federal Circuit advocates of that era; former Bristow Fellow/Alito clerk; argued numerous patent and administrative appeals. She is listed as counsel in the 2012 decision at 681 F.3d 1351, and she is one of three names copied on the Federal Circuit's Nov. 17, 2011 order in No. 2011-1276 — consistent with her being appellees' counsel.

Alexander J. Hadjis — supporting/appellate counsel (of record)

• Firm: Jenner & Block LLP, Washington, D.C. at the time; later Norton Rose Fulbright (Washington, D.C.).
• Note: Listed alongside Ms. Maynard in the counsel listing for Hollmer v. Harari, 681 F.3d 1351 (Fed. Cir. 2012); his practice has focused on appellate and patent matters.

Unknown / unverified for the interference itself. The BPAI trial-level attorney listings for Interference No. 105,606 (i.e., who signed Harari's priority motion and opposition papers before the Board) are not in any public PACER docket and I was unable to retrieve the interference record file wrapper in this session. I will not name anyone for that stage.

Counsel appearing for Hollmer & Cleveland (the "defendant" side, for context)

Seth M. Galanter

• Firm: Jenner & Block LLP, Washington, D.C.; he moved to withdraw as counsel for Hollmer and Cleveland, which the Federal Circuit granted by order dated November 17, 2011 in No. 2011-1276 (order cites his motion, unopposed). He subsequently served in the Civil Rights Division of the U.S. Department of Justice.
• Note: Appellate/administrative litigator; the timing of his withdrawal is consistent with a transition out of private practice.

Timothy R. Volpert

• Listed on the same November 17, 2011 order's service list in No. 2011-1276. I could not verify his firm affiliation as of 2011 from the sources available; a Timothy Volpert currently practices as Tim Volpert, P.C. in Portland, Oregon, but I have no confirmation that this is the same individual, so I flag that as unconfirmed rather than assert it.

Caveats you should carry forward

1. No sealed filings issue — the problem is the opposite: there is no district-court docket at all. The authoritative counsel record would be (a) the BPAI interference file for 105,606 and (b) the parties' Federal Circuit briefs in Nos. 2009-1406 and 2011-1276.
2. Underlying real party in interest unverified. Harari and Mehrotra were SanDisk co-founders, and Harari's '880 application was SanDisk-assigned; I was not able to confirm in this session the assignee of the '601 patent or whether SanDisk was the real party in interest on both sides (which would explain why Jenner & Block names appear on both service lists). Treat any such inference as unconfirmed.
3. Anything not tied to the two Federal Circuit decisions or the Nov. 17, 2011 order above is not well sourced and should be re-verified against the interference file before use in a filing or client communication.

I'll research this. Note at the outset: this is a BPAI interference (Interference No. 105,606), not a district-court infringement action — so the "defendants" are the senior party, Hollmer and Cleveland, and the counsel of record are their interference/appeal counsel. Let me search.

Now let me find the counsel of record listed in the Federal Circuit opinions and dockets.

Counsel identified for the appeal. Now let me check the BPAI-stage counsel of record and the 2010 appeal, plus verify firms.

Threshold correction (important for how you use this)

The case as docketed is Interference No. 105,606 before the BPAI, not a district-court infringement action. There is therefore no PACER civil docket, no complaint, and no answer — the "defendants" in the caption (Hollmer and Cleveland) are the senior party to the interference, and the only Article III dockets are the two Federal Circuit appeals that came out of it. The counsel of record below are those listed on the Federal Circuit briefs (which consolidate BPAI appearance) plus the Federal Circuit motions orders. I flag below exactly what is verified versus inferred.

Counsel of record — Hollmer & Cleveland (senior party / "defendants")

Verified from the counsel block of the precedential opinion in the second appeal, Hollmer v. Harari, 681 F.3d 1351 (Fed. Cir. 2012) (No. 2011-1276), as reproduced at FindLaw (caselaw.findlaw.com/summary/opinion/us-federal-circuit/2012/06/07/259237.html):

Counsel for the opposing side (Harari & Mehrotra), for contrast

From the same counsel block in 681 F.3d 1351 — William A. Birdwell (Davis Wright Tremaine LLP, Portland, OR) argued; Timothy R. Volpert and Scott E. Warnick on the brief. Note the structure: the senior party used a DC appellate boutique plus a Bay Area patent boutique; the junior party used a Portland general-practice firm.

Caveats and sourcing limits

• BPAI-stage appearances are not directly verified. BPAI decisions in Interference 105,606 list ("for Appellants / for Appellees") counsel of record, but I was unable to retrieve the underlying Board decisions/orders in this session. The Fliesler Meyer "of counsel" designations on the Federal Circuit brief are strong but indirect evidence of who held the interference. Treat the BPAI-level roster as inferred, not confirmed.
• Nothing indicates any filing was sealed. The unavailability is a function of interference records not being on PACER, not of sealing.
• No "local counsel" category applies. The Federal Circuit has no local-counsel requirement, and the BPAI proceeding had none; the Reilly entry is the closest analogue but his affiliation is unverified.
• Case posture: the Board's remand judgment against Hollmer (holding the '880 application entitled to the April 13, 1989 filing date of the '566 application) was reversed and remanded in Hollmer v. Harari, 681 F.3d 1351 (Fed. Cir. 2012) — the court ordered entry of judgment that the '880 application's effective filing date is December 20, 1996. The earlier appeal, Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010) (No. 2009-1406), had reversed and remanded in Harari's favor.
• Do not describe any of these attorneys as "defense counsel" in an infringement sense — the correct labels are senior party's interference counsel / appellants' counsel.