Litigation

Netlist, Inc. v. Diablo Technologies, Inc.

unverified

4:13-cv-05962

Filed
2013-12-26

Patents at issue (1)

8301833

Plaintiffs (1)

Summary

Netlist's 2013 N.D. Cal. infringement action against Diablo Technologies; the '833 patent was among the patents in Netlist's 2013 campaign. Outcome not verified.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case across multiple sources.

Let me dig into the patent case specifics and the IPR history.

Let me check the outcome of the patent case and the later IPR challenges to the '833 patent.

Case Overview and Background

The parties. Netlist, Inc. is an Irvine, California–based, publicly traded (NASDAQ: NLST) memory-technology company that designs and sells high-performance memory subsystems — its flagship HyperCloud® DDR3 module (a load-reduced DIMM using Netlist's "LRD" load-reduction and "DxD" rank-multiplication chipset architecture) and its NVvault non-volatile DIMM. Netlist is best characterized as an operating company asserting its own commercialized technology, not an acquired-portfolio shell; the Stanford NPE Litigation Database classifies it as a "Product company" (category 8) across the cases in this docket family (NPE Litigation Database, '833; Netlist Form 10-K, Dec. 28, 2013). Diablo Technologies, Inc. is an Ottawa, Canada–based fabless chip company that supplies memory-channel controller ASICs (its "Rush" and "Bolt" chips) and, with partner Smart Storage Systems (acquired by SanDisk in August 2013 for ~$307M), the ULLtraDIMM flash-on-the-memory-channel module (The Register, Dec. 16, 2013). The relationship was not arm's-length: in March 2008 Netlist and Diablo executed a mutual NDA and a development/supply agreement under which Diablo was to embed Netlist's DxD/LRD technology exclusively for Netlist; the litigation centers on Netlist's allegation that Diablo instead used that confidential technology for itself (PI Order, Dkt. 277 at 3; Daily Journal, Jan. 14, 2015).

The accused technology. The accused product is the ULLtraDIMM, a "memory channel storage" module that places NAND flash (and later Diablo's Memory1/MCS architecture) directly on a server's DDR3 DRAM memory bus, appearing to the host as a standard DIMM while delivering low-latency, persistent storage — a direct competitor to Netlist's HyperCloud/NVvault line. It was built by Diablo using its Rush and Bolt ASICs and commercialized with Smart Storage Systems/SanDisk, with IBM introducing it in X-Series servers around January 2014 (The Register; StorageNewsletter, Feb. 4, 2014).

The patent(s) asserted — with an important docket caveat. The case metadata lists U.S. Patent No. 8,301,833 ("Non-Volatile Memory Module," issued Oct. 30, 2012 from Application No. 12/240,916, filed Sept. 29, 2008; inventors Chi-She Chen et al.; assignee Netlist). In one line: the '833 claims a hybrid memory module combining a volatile (DRAM) subsystem, a non-volatile (flash) subsystem, a data manager and a controller that routes data among the memory controller and the two memory subsystems over the DRAM protocol — the NVvault/NVDIMM clocking-and-buffering concept (SanDisk IPR2014-00994 petition; StorageNewsletter, Mar. 18, 2015). Note, however, that the docket record shows the '833 was one of seven Netlist patents actually asserted in the companion infringement case, Netlist, Inc. v. Smart Storage Systems, Inc. & Diablo Technologies, Inc., No. 4:13-cv-05889-YGR, alongside the '434 and '501 (memory-board self-test), the '185 (distributed byte-wise buffer architecture), the '187 (data transfer for NV modules), and the '150 and '536 (load reduction). Case No. 4:13-cv-05962-YGR, the number in this prompt, was the trade-secret/breach-of-contract/Lanham Act case against Diablo — the two cases were coordinated for discovery but not consolidated (Consolidation Order, Apr. 8, 2014; Joint Status Report, IPR2015-01021, June 16, 2016). The NPE-database linkage of the '833 to 4:13-cv-05962 appears to be a case-number artifact; I could not find any pleading asserting the '833 in 05962 itself.

Procedural posture and venue. Netlist first sued in the C.D. Cal. (Santa Ana), but after Diablo filed an anticipatory declaratory-judgment action in N.D. Cal., Judge Yvonne Gonzalez Rogers denied Netlist's motion to dismiss or transfer on first-to-file grounds (Oct. 10, 2013) and the C.D. Cal. claims were severed and transferred to the Northern District; the N.D. Cal. cases were docketed in December 2013 (the patent case as 4:13-cv-05889 and the trade-secret case as 4:13-cv-05962, both before Judge Gonzalez Rogers, Oakland Division) (DJ Order, 4:13-cv-03901 Dkt. 20). Venue mattered for two reasons: Netlist's real target was SanDisk/Smart Storage (Milpitas, in-district) even though SanDisk was never named as a party in the trade-secret case, and N.D. Cal. is a demanding forum for patentees on Patent L.R. 3-1 infringement contentions — Diablo moved to strike Netlist's contentions, and the court denied the motion (Apr. 1, 2014, on the ground that Netlist need not reverse-engineer a product that was not commercially available) (Dkt. 176).

Resolution and why the case is notable. The trade-secret case went to trial first: on Oct. 6, 2014 Netlist moved for a preliminary injunction against the ULLtraDIMM, which Judge Gonzalez Rogers granted in part on Jan. 6, 2015 — a rare chip-level manufacturing/sales ban covering Diablo's Rush and Bolt chips and ULLtraDIMM modules — and expedited trial to March 9, 2015 (Daily Journal). The jury returned a mixed verdict on March 25, 2015: for Diablo on trade-secret misappropriation, breach of contract and inventorship, but for Netlist on trademark and false advertising; the injunction was dissolved, Netlist's JMOL/new-trial motions were denied Sept. 1, 2015, Diablo recovered the $900,000 PI bond, and the Federal Circuit affirmed without opinion on July 11, 2016 (No. 2016-1011, Rule 36) (Fed. Cir. Rule 36 judgment; Netlist 10-Q, Q3 2015). The patent case was stayed on Apr. 9, 2015 pending IPRs and was still stayed as of mid-2016; I could not verify a final disposition. The IPR linkage is the case's most durable legacy: SanDisk (IPR2014-00994, filed June 20, 2014) and Smart Modular (IPR2014-01370, filed Aug. 22, 2014) both challenged the '833, and the PTAB denied institution both times (Dec. 16, 2014 and Mar. 13, 2015), construing "clock frequency" narrowly — a rarity — while roughly fifteen total petitions were filed against the seven-patent family (StorageNewsletter; IPR2014-01370 documents). The '833 remained a live asset for Netlist's later, much larger campaigns against Samsung and Micron (the same portfolio produced billion-dollar-scale N.D. Cal. and E.D. Tex. verdicts), and Micron later petitioned again against the '833 in IPR2023-00405 (filed Jan. 6, 2023); I did not verify the outcome of that later petition. Two features make this case a useful study: a genuine operating company pairing patent claims with trade-secret and contract claims against a former supplier that had "transformed itself from a contract design house to a 'products company'" (Netlist press release, Mar. 25, 2014), and an early illustration of a coordinated multi-defendant IPR defense strategy that nevertheless failed to kill the asserted patents. Counsel of record included Benjamin K. Riley (Bartko Zankel) for Netlist at trial and Stanley J. Panikowski / DLA Piper on appeal, and Fabio E. Marino (McDermott Will & Emery) for Diablo (Fed. Cir. 2016-1011).

Caveats: Diablo's corporate fate after 2016, the ultimate dismissal/settlement date of the patent case 4:13-cv-05889, and the outcome of IPR2023-00405 were not verified in this research; the exact division assignment (Oakland) is sourced to contemporaneous press coverage rather than the docket caption.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case thoroughly using web searches across the sources you mentioned.

Let me dig deeper into the docket, the IPR proceedings, and the appellate history.

Threshold note on case identity (important)

The metadata labels this docket as a patent-infringement case on U.S. Patent No. 8,301,833. The public record shows a more layered picture that matters for any legal analysis:

  • No. 4:13-cv-05962-YGR is Netlist's trade-secret / breach-of-contract / trademark / UCL action against Diablo — the "trade secret case." Its operative pleading was the Second Amended Complaint (2014-03-21), and it was tried to a jury in March 2015. (Netlist's own 10-Qs call 4:13-CV-05962 "the trade secret case"; see Netlist 10-Q, http://www.getfilings.com/sec-filings/[160517](/patent/160517)/NETLIST-INC_10-Q/.)
  • The '833 patent infringement claims were asserted in the coordinated patent case, Netlist, Inc. v. Smart Modular Technologies, Inc., No. 4:13-cv-05889-YGR (consolidated with Diablo's declaratory-judgment action, Diablo Techs., Inc. v. Netlist, Inc., No. 4:13-cv-03901-YGR), which the court consolidated for all purposes on 2014-04-08 and later stayed pending IPR.
  • The '833 patent was also the subject of Diablo's own DJ complaint filed 2013-08-23 (which the court dismissed without prejudice on 2014-02-12), and of IPR petitions filed by both SanDisk and Diablo in 2014.

So the items you asked for split across two dockets that were coordinated for discovery. I cover both and flag where each event sits. The Stanford NPE database lists both '833 and '501 under 4:13-cv-05962 (https://npe.law.stanford.edu/patent/8301833), which appears to aggregate patents across the Netlist–Diablo family of suits rather than reflect the pleading in 4:13-cv-05962 itself.

1. Background and pre-suit posture

2. Filing and initial pleadings (4:13-cv-05962)

  • 2013-12-26 — Netlist filed No. 4:13-cv-05962-YGR in N.D. Cal. (per the docket metadata and contemporaneous reporting; e.g., Daily Journal, 2015-01-14, https://www.bartkopavia.com/a/web/6TkQay5RyuVQRtM4zEvMib/netlist-wins-computer-chip-sales-ban-daily-journal-january-2015.pdf). Caveat: the Court's later Findings of Fact state the action was "brought" on 2013-07-01, which appears to trace to Netlist's original Central District complaint; the two dates are not reconciled in the public record I could verify.
  • 2014-01-21 — Netlist moved for leave to file a second amended answer/counterclaims to add two more patents (bringing the total asserted against ULLtraDIMM to seven). Granted 2014-02-05 with an extended schedule.
  • 2014-03-21 — Netlist filed the Second Amended Complaint in the trade-secret case (misappropriation, breach of the NDA and Supply Agreement, UCL § 17200, correction of inventorship as to Diablo's '917 patent, and Lanham Act trademark/false-advertising claims) and served an Amended Trade Secret Disclosure identifying roughly 60 trade secrets.
  • 2014-04-09 — Diablo filed a motion to dismiss the SAC and a motion for judgment on the pleadings; heard 2014-05-13 and denied on 2014-09-04 on all grounds except one uncontested point.

3. Pre-trial motions of substance

Venue / first-to-file (patent and trade-secret family). Netlist moved to dismiss or transfer Diablo's and Smart Modular's DJ complaints to C.D. Cal. on first-to-file grounds. The court denied the motions, holding that Diablo's N.D. Cal. DJ complaint was the first filed as to the five patents, that Netlist's original C.D. Cal. complaint asserted no patent claims and did not name Diablo, and that the anticipatory-suit doctrine was only one factor. (Order, https://cases.justia.com/federal/district-courts/california/candce/4:2013cv03901/269462/20/0.pdf.)

Consolidation/coordination. 2014-03-04 motion; 2014-04-08 order consolidated 4:13-cv-05889 and 4:13-cv-03901 for all purposes and coordinated discovery with the trade-secret case 4:13-cv-05962, but denied full consolidation of the trade-secret case. (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.)

Discovery motions (early 2014). 2014-04-01: denial of Diablo's motion to strike Netlist's infringement contentions (court found the contentions satisfied Patent L.R. 3-1). 2014-04-07: grant of Netlist's motion to compel ULLtraDIMM-related discovery and of Netlist's motion for Letters Rogatory to Canada for two former Diablo employees. 2014-04-08: denial of Diablo's motion for relief from those rulings; denial of Diablo's bid to re-designate Netlist's Amended Trade Secret Disclosure from "Highly Confidential – Attorneys' Eyes Only" (2014-04-30). Parties stipulated to dismiss Smart Worldwide (2014-04-15) and Smart Modular (2014-02-12) without prejudice.

Anti-SLAPP. Diablo's counterclaims in the trade-secret case (breach of the Supply Agreement based on statements in the SAC; tortious interference with customer relationships) drew a special motion to strike under Cal. Code Civ. Proc. § 425.16, which the court granted: the counterclaims arose from protected petitioning activity (the filing and content of the SAC and communications about the litigation), and Diablo could not show a probability of prevailing. (Order, https://bartkolaw.com/wp-content/uploads/2021/08/Order-Granting-Special-Motion-to-Strike-pleading-Netlist-v.-Diablo-Technologies-[1582766](/patent/1582766).1-T.pdf.) I could not verify the precise ruling date from the sources retrieved.

Stay pending IPR.

Preliminary injunction (trade-secret case). Netlist moved for a PI on 2014-10-06. On 2015-01-06 the court granted it in part, enjoining manufacture/sale/distribution of Diablo's Rush and Bolt controller chips and any ULLtraDIMM module containing them, and advanced trial to 2015-03-09. (:contentReference[oaicite:0]{index=0}same 10-Q; Daily Journal, 2015-01-14.) The court denied Diablo's motion to stay the PI pending appeal on 2015-01-13 (https://cases.justia.com/federal/district-courts/california/candce/4:2013cv05962/[273188/283](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=273188-0283)/0.pdf). On appeal, the Federal Circuit denied expedited briefing for both, denied Diablo's stay, but granted SanDisk's narrower stay as to its existing enjoined inventory; the injunction was ultimately stayed on 2015-03-26. (10-Q; Findings of Fact ¶1.)

4. Claim construction (Markman)

I found no Markman order in the trade-secret case, and none is expected — the March 2015 trial was on contract, trade-secret, trademark, and inventorship theories, not patent infringement. The patent case where the '833 claims would have been construed was stayed on 2015-04-09 before any Markman ruling I could locate. The only claim-construction activity on these patents in this period was at the PTAB (see §7).

5. Discovery milestones of strategic significance

  • Service of the Amended Trade Secret Disclosure (~60 secrets) on 2014-03-21, and the court's refusal to downgrade its "Attorneys' Eyes Only" designation (2014-04-30) — this shaped how much of Netlist's technical case Diablo's outside counsel could see.
  • Compelled ULLtraDIMM discovery (2014-04-07) and the Canadian Letters Rogatory depositions of two former Diablo employees named in the whistleblower letter, taken late August 2014 — the whistleblower evidence was the backbone of Netlist's PI motion.
  • Coordination of discovery across the patent and trade-secret dockets (2014-04-08) let Netlist use the patent case's infringement contentions and invalidity contentions (Diablo's invalidity contentions are dated 2014-06-06) in the trade-secret case, and vice versa.

6. Trial, verdict, post-trial motions

  • 2015-03-09 — Jury trial commenced before Judge Yvonne Gonzalez Rogers; closing arguments 2015-03-23.
  • 2015-03-25 — Verdict (Dkt. 420): for Diablo on breach of the NDA, breach of the Development and Supply Agreement, trade-secret misappropriation (none of the eight secrets tried was "secret"), and correction of inventorship of the '917 patent; for Netlist on trademark infringement and Lanham Act false advertising, with nominal damages of $1.00 each. (Findings of Fact ¶3, http://business.cch.com/ald/NetlistDiablo4242015.pdf.)
  • 2015-04-24 — The court dissolved the preliminary injunction in light of the verdict and, on the remaining UCL claim, issued Findings of Fact and Conclusions of Law granting no relief (rejecting Netlist's "head-start" theory for a 10-month-27-day injunction against Rush/Bolt). (http://business.cch.com/ald/NetlistDiablo4242015.pdf.)
  • 2015-05/06 — Post-trial briefing: Netlist moved for JMOL on breach of contract and for a new trial on trade secrets; Diablo moved for attorney's fees.
  • 2015-07-08 — Oral argument on post-trial motions.
  • 2015-09-01 — Court denied both sides' JMOL motions, Netlist's new-trial motion, and Diablo's fee motion, but granted Diablo recovery on the $900,000 preliminary-injunction bond plus its bill of costs. (Netlist 10-Q, https://investors.netlist.com/download/companies/270109a/SECFiling/Q3%202015.pdf.)

7. Parallel PTAB proceedings

On the '833 patent (the patent in your metadata):

On the other patents in the family (which drove the litigation's trajectory):

Effect on the litigation: the IPRs are why the patent case (4:13-cv-05889, which carried the '833 infringement claims) was stayed on 2015-04-09 — leaving the trade-secret case (4:13-cv-05962) as the case that actually went to verdict.

8. Final disposition / posture

Trade-secret case (4:13-cv-05962):

Patent case (4:13-cv-05889): stayed 2015-04-09 pending the IPRs. Post-'833-denial, the consolidated patent case was the vehicle for Netlist's infringement claims on the '434/'501 (upheld) and '150/'536 (invalidated) patents. I was unable to verify from the sources retrieved how and when the stayed patent case was finally resolved (settlement vs. dismissal), and I will not speculate — treat the patent case's true endpoint as unverified.

Later life of the '833 patent (context that shows why this docket matters): the '833 patent was later asserted by Netlist against SK hynix (C.D. Cal. 8:16-cv-01605), Micron (WDTX 6:21-cv-00430/00431, later transferred to 1:22-cv-00134/00136 and stayed 2022-05-11 pending IPR), and Samsung (E.D. Tex. 2:22-cv-00293). Micron's Idaho bad-faith-assertion suit over the '833 patent remains active as of the 2026 SEC filings. (Netlist 10-K, https://www.sec.gov/Archives/edgar/data/[1282631](/patent/1282631)/000110465926032152/nlst-20251227x10k.htm.)

Compact chronology

Date Event Docket/Forum
2008-03-20 Netlist–Diablo Mutual NDA —
2013-08-23 Netlist amended patent complaint (5 patents incl. '833); Diablo & Smart Modular DJ actions C.D. Cal.; 4:13-cv-03901-YGR; 4:13-cv-03916-YGR
2013-11-13 Whistleblower letter received —
2013-12-26 Trade-secret suit filed 4:13-cv-05962-YGR
2014-01-03 Diablo sanctions application denied 4:13-cv-05962
2014-03-21 Second Amended Complaint; Amended Trade Secret Disclosure 4:13-cv-05962
2014-04-08 Patent cases consolidated; discovery coordinated; trade-secret case not consolidated 4:13-cv-05889 / -03901 / -05962
2014-04-09 Diablo MTD / judgment on pleadings 4:13-cv-05962
2014-06-20/22 SanDisk IPR2014-00994 ('833); Diablo IPR2014-00882 ('150) & -00883 ('536) PTAB
2014-08-21 Stay pending IPR denied without prejudice 4:13-cv-05889
2014-09-04 Diablo MTD denied (except one uncontested ground) 4:13-cv-05962
2014-09-22 Diablo IPR petition on '833 claims 1–30 PTAB
2014-10-06 Netlist PI motion 4:13-cv-05962
Dec. 2014 '833, '187, '185 IPR petitions denied; '434 partial; '150/'536/'501 instituted USPTO/PTAB
2015-01-06 PI granted (Rush/Bolt, ULLtraDIMM); trial advanced to 3/9/15 4:13-cv-05962
2015-03-09–25 Jury trial; verdict for Diablo on contract/trade-secret/inventorship; $1 nominal each for Netlist on trademark/false advertising 4:13-cv-05962
2015-04-09 Patent case stayed pending IPR 4:13-cv-05889
2015-04-24 PI dissolved; no relief on UCL claim 4:13-cv-05962
2015-09-01 JMOL/new trial/fees denied; $900K bond awarded to Diablo 4:13-cv-05962
2015-12-14 PTAB finals: '434/'501 partly valid; '150/'536 invalid PTAB
2016-07-11 Federal Circuit AFFIRMED (Rule 36), No. 16-1011 Fed. Cir.
2017-07-25 Fed. Cir. vacates/remands '150/'536 constructions (701 F. App'x 1001) Fed. Cir. 16-1742
2018-03-29 PTAB on remand: '150/'536 claims unpatentable PTAB

Bottom line: On the '833 patent specifically, the key legal development in this litigation was negative for Diablo's invalidity attack — the PTAB refused to institute all '833 IPRs in December 2014, which removed the IPR-based reason to stay as to that patent. But the case that carried the litigation to judgment, 4:13-cv-05962, was not a patent case on the merits; it ended in a defense verdict for Diablo affirmed by the Federal Circuit on 2016-07-11, with Netlist receiving only nominal relief. Several endpoints (the anti-SLAPP order date, the ultimate resolution of the stayed 4:13-cv-05889 patent case, and whether any post-2016 settlement occurred) are not verified in the sources retrieved and should be confirmed against PACER before being relied on.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the counsel of record for Netlist, Inc. in this case.

Let me dig deeper into the specific roles and the patent-assertion side of Netlist's 2013 campaign.

Let me confirm the docket-level appearances and each firm's current status.

Counsel of Record for Plaintiff Netlist, Inc. — Netlist, Inc. v. Diablo Technologies, Inc., No. 4:13-cv-05962-YGR (N.D. Cal.)

Bottom line: Three firms appeared for Netlist. Bartko, Zankel, Bunzel & Miller (San Francisco) was the lead/local trial team, with Benjamin K. Riley as lead counsel; McAndrews, Held & Malloy (Chicago) supplied the patent/PTAB specialists pro hac vice; and DLA Piper LLP (US) (San Diego) appeared as patent litigation and appellate counsel. I found no public filing identifying Netlist in-house counsel of record.

1. Bartko, Zankel, Bunzel & Miller — San Francisco, CA (lead / local trial counsel)

One Embarcadero Center, Suite 800, San Francisco, CA 94111. This is the firm named in the signature blocks on Netlist's filings in this action, including the anti-SLAPP fee stipulation (Dkt. 313, entered 2/3/2015) and on the preliminary-injunction papers.

Name Role Notes
Benjamin K. Riley (CA Bar 112007) Lead counsel for Netlist Described in the Daily Journal as "Netlist's lead counsel"; argued the 2014–15 preliminary-injunction motion that produced a rare sales ban on Diablo's memory-channel chips, and led the March 2015 trial. Firm managing partner.
Robert N. Bunzel (CA Bar 99395) Of counsel / name partner on the team Named in every Netlist signature block in the case; firm name partner.
C. Griffith Towle (CA Bar 146401) Team member; signatory on Netlist's anti-SLAPP/fee papers Signed the joint stipulation approved in Dkt. 313.
W. Paul Schuck (CA Bar 203717) Team member IP/commercial litigator, named on Netlist filings.
Sony B. Barari (CA Bar 243379) Team member Named on Netlist filings.
Simon R. Goodfellow (CA Bar 246085) Team member Named on Netlist filings.
Sean R. McTigue (CA Bar 286839) Associate Appears earliest in the signature blocks; youngest of the recorded team.

Firm note: The firm (now practicing under the Bartko banner, with a website at bartkopavia.com) handled Netlist's breach-of-contract/trade-secret case from the 2013 complaint through the 2015 trial; its own press release lists the team as "Ben Riley, Rob Bunzel, Griff Towle, Paul Schuck, Sony Barari, Simon Goodfellow and Sean McTigue."

2. McAndrews, Held & Malloy — Chicago, IL (patent/IPR counsel, pro hac vice)

500 W. Madison St., 34th Floor, Chicago, IL 60661. Listed with Bartko as "Attorneys for Plaintiff NETLIST, INC." in this case.

Name Role Notes
Gregory C. Schodde (pro hac vice) Patent counsel of record McAndrews partner; part of the McAndrews team that defended Netlist's patents in the IPR wave filed by SanDisk/Diablo/Smart Modular.
Wayne H. Bradley (pro hac vice) Patent counsel of record McAndrews partner; named among Netlist's PTAB counsel in the McAndrews release ("Netlist is represented by McAndrews attorneys Christopher Winslade, Thomas Wimbiscus, Scott McBride, Wayne Bradley, Gregory Schodde and Ronald Spuhler").

Additional McAndrews attorneys appearing for Netlist in the related patent filings and PTAB (not necessarily of record in this docket): Thomas J. Wimbiscus and Ronald H. Spuhler (pro hac vice), both listed among the country's most active IPR practitioners by Docket Navigator; plus Christopher Winslade and Scott McBride (IPRs). (Sourced to McAndrews' own release, so treat firm self-descriptions with the usual caution.)

3. DLA Piper LLP (US) — San Diego, CA (patent litigation / appellate counsel)

401 B St., Suite 1700, San Diego, CA 92101.

Name Role Notes
Sean C. Cunningham (CA Bar 174931) Counsel of record; district-court + appellate Listed as Netlist's counsel in the signature block of Dkt. 313 and in the related patent action papers; also on the Federal Circuit brief with Panikowski.
Stanley J. Panikowski III Appellate counsel — argued the Federal Circuit appeal Per the Federal Circuit's July 11, 2016 per curiam disposition in Netlist, Inc. v. Diablo Technologies, Inc., No. 2016-1011 (Moore, Linn, O'Malley, JJ.): "STANLEY JOSEPH PANIKOWSKI, III, DLA Piper LLP (US), San Diego, CA, argued for plaintiff-appellant. Also represented by SEAN C. CUNNINGHAM." (I did not verify the outcome of that nonprecedential appeal, so I don't characterize it.)

Important caveats

  1. In-house counsel not identified. I found no Netlist in-house attorney listed in the public filings I reviewed. If in-house counsel entered an appearance, it isn't reflected in the documents surfaced.
  2. Patent vs. non-patent posture of No. 4:13-cv-05962. The docketed 05962 action (filed 12/26/2013) was tried principally as Netlist's trade secret misappropriation, breach of Supply Agreement, UCL, and Lanham Act (trademark/false advertising) case against Diablo — the March 2015 jury returned a defense verdict for Diablo on the contract/trade-secret claims. The patent claims from Netlist's 2013 campaign (asserting, inter alia, the '833 patent) were severed/transferred from C.D. Cal. into N.D. Cal. and were coordinated with the related action No. 4:13-cv-05889-YGR (Netlist v. Smart Storage Systems, Inc./SanDisk, with Diablo appearing as a co-defendant in that docket), and those patent claims were stayed on 4/9/2015 pending the IPRs. The same three firms (Bartko, McAndrews, DLA Piper) appear as Netlist's counsel across the related dockets, so the roster above is accurate for Netlist's patent-side representation in the 2013–2016 period as well.
  3. Docket-level precision. My confirmations come from documents hosted on Justia/CourtListener (Dkt. 313 order; opposition and stipulation filings) and the Federal Circuit's 2016-1011 order, rather than from a live PACER counsel query. Firm titles/offices are as of those filings; several individuals have since moved (e.g., the McDermott defense team members have since scattered — Fabio Marino, for instance, is now at Womble Bond Dickinson/Polsinelli per a Daily Journal profile, which is defense side and noted only for context). I did not verify current employment for every Netlist-side attorney, so treat "firm" as the firm of record in this case.
  4. Case outcome note (for context): Diablo filed for bankruptcy 12/8/2017, and the N.D. Cal. dismissed all claims against Diablo without prejudice on 11/9/2018; the patent claims remained pending against Smart Storage/SanDisk subject to the stay (per Netlist's SEC disclosures).

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

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

Confirmed the core defense team. Let me verify the full roster and individual roles.

Let me verify individual attorney roles and check for any other defense counsel appearing on the 05962 docket.

Counsel of Record for the Defendant — Netlist, Inc. v. Diablo Technologies, Inc., No. 4:13-cv-05962-YGR

Scope note / docket reality check (flagged, not resolved silently): The case metadata labels 4:13-cv-05962 a patent infringement case on U.S. Pat. No. 8,301,833. As the prior sections of this case already found, and as the dockets confirm, 05962 is the trade-secret/breach-of-contract/Lanham Act case, and the '833 patent was actually asserted against Diablo in the coordinated patent case, Netlist, Inc. v. Smart Storage Systems, Inc. & Diablo Technologies, Inc., No. 4:13-cv-05889-YGR (which the PTAB mandatory notices and Netlist's 10-Q both describe as the "related case" (Diablo Amended Mandatory Notice, Dec. 15, 2014)). Diablo is the sole defendant in 05962; SanDisk/Smart Storage was never a party to it. I therefore report (a) Diablo's 05962 counsel, and (b) Diablo's counsel in the 05889 patent case, since that is where the '833 was in play. If the drafting intent was "counsel for the alleged infringer on the '833," the 05889 roster (Steptoe) is the operative one.

A. Counsel of record for Diablo Technologies in 05962 (McDermott Will & Emery LLP)

All of the following appear in the signature block captioned "Attorneys for Defendant DIABLO TECHNOLOGIES, INC." on the joint filing approved by the court in this case — Dkt. 313, Order Approving Netlist's and Diablo's Agreement re Attorneys' Fees (Feb. 3, 2015) (Dkt. 313) — and in the post-trial briefing (Dkt. 491, Diablo's Reply ISO Renewed Motion for JMOL, May 29, 2015). Firm address of record: McDermott Will & Emery LLP, 275 Middlefield Road, Suite 100, Menlo Park, CA 94025-4004.

Attorney Role Firm / office Note
Fabio E. Marino (CA Bar 183825; USPTO Reg. 43,339) Lead counsel of record; lead IPR counsel; argued the Federal Circuit appeal McDermott Will & Emery, Menlo Park, CA Registered patent attorney; the constant across Diablo's district-court defense and its IPR campaign. Named in the Fed. Cir. Rule 36 judgment as Diablo's arguing counsel (Netlist v. Diablo, No. 2016-1011, July 11, 2016).
Russell Hayman Lead trial counsel (partner) McDermott Will & Emery, Silicon Valley / Menlo Park Former federal prosecutor; McDermott's own release says the trial team was "led by partners Russell Hayman and Fabio Marino" (McDermott, Mar. 25, 2015); his firm bio credits him as lead trial counsel in this 3-week jury trial (bio).
L. Kieran Kieckhefer (CA Bar 251978) Counsel of record (trial team) McDermott Will & Emery, Menlo Park, CA Longtime MWE patent/trade-secret litigator in the Silicon Valley office.
Nitin Gambhir (CA Bar 259906) Counsel of record (trial team); also on the appellate brief McDermott Will & Emery, Menlo Park, CA Listed on the Fed. Cir. judgment as representing Diablo.
Barrington Dyer (CA Bar 264762) Counsel of record (trial team); also back-up counsel in Diablo's IPRs McDermott Will & Emery, Menlo Park, CA Named back-up counsel in Diablo's IPR powers of attorney/mandatory notices (IPR2014-00883, Second Am. Mandatory Notice, Apr. 16, 2015).
Teri H.P. Nguyen (CA Bar 267498) Counsel of record (trial team) McDermott Will & Emery, Menlo Park, CA Also signed Diablo's filings in the related 05889 case.
Natalie A. Bennett Post-trial / appellate counsel McDermott Will & Emery, Washington, DC Signed Diablo's JMOL reply in this case (Dkt. 491) and listed on the Fed. Cir. judgment.
Judith S.H. Hom MWE attorney of record on joint filings McDermott Will & Emery Appears with Marino on a joint statement in the coordinated cases (Dkt. 270).
Michael Nadel and Miller Baker Appellate team (trial partners) McDermott Will & Emery Per McDermott's release, "the appellate efforts were led by Trial partners Michael Nadel and Miller Baker as well as Mr. Marino and Ms. Bennett" (McDermott).
Bernie Knight (USPTO Reg. L0911) Back-up IPR counsel McDermott Will & Emery, Washington, DC Appears in Diablo's IPR powers of attorney, not in the district-court signature blocks I could confirm.

No in-house counsel for Diablo is identified in any docket document I reviewed. Local counsel: none separate — MWE's Menlo Park office served as the in-district presence; the court's own order confirms MWE signed for Diablo (Dkt. 313).

B. Counsel for Diablo in the related patent case 4:13-cv-05889 (where the '833 was asserted)

The '833 and the other six patents were litigated in 05889, and Diablo's counsel there were different — a fact worth flagging because the IPR defense later migrated from Steptoe to McDermott:

  • Steptoe & Johnson LLP — William F. Abrams (SBN 88805), Sanjeet K. Dutta (SBN 203463; USPTO Reg. 46,145), Douglas R. Peterson (SBN 215949; Reg. 53,458), and Ellie Ong (Reg. 72,048), offices in Palo Alto and Los Angeles — "Attorneys for Defendant DIABLO TECHNOLOGIES, INC." in the joint claim-construction filing (Defendants' Proposed Preliminary Claim Constructions). Abrams argued Diablo's Patent L.R. 3-1 motion to strike Netlist's infringement contentions (hearing transcript, Dkt. 305). Dutta/Peterson/Ong were Diablo's lead and back-up IPR counsel on the '536 before the April 2015 substitution order moving the IPRs to Marino/McDermott (PTAB Order, IPR2014-00882/-00883/-01011, Apr. 10, 2015).
  • Co-defendant Smart Storage Systems, Inc. (not a party to 05962) was represented by Jones Day — Gregory L. Lippetz, Kathleen D. Lynott, Steven J. Corr (same joint filing).

C. Plaintiff's counsel (for contrast, already partly covered above)

Netlist was represented by Bartko Zankel Bunzel & Miller (Benjamin K. Riley, Robert N. Bunzel, C. Griffith Towle, W. Paul Schuck, Sony B. Barari, Simon R. Goodfellow, Sean R. McTigue) with McAndrews, Held & Malloy (Gregory C. Schodde, Wayne H. Bradley) and DLA Piper (Sean C. Cunningham, Stanley J. Panikowski) — per Dkt. 313; the Fed. Cir. judgment confirms Panikowski/Cunningham/DLA Piper argued the appeal for Netlist.

Caveats and unverified points

  • Patent-count discrepancy stands: I found no pleading asserting the '833 in 05962 itself, and no defense counsel appearance in 05962 tied to the '833. If your source treats 05962 as the '833 patent case, the metadata conflicts with the docket and should be corrected or reconciled.
  • Roles are inferred where not labeled in a filing. "Lead trial counsel" for Hayman and "appellate" for Nadel/Baker come from McDermott's press release and Hayman's bio, not from a court order designating lead counsel; the docket signature blocks do not rank the MWE attorneys.
  • Appearance dates not verified. I did not retrieve the individual notices of appearance in 05962, so I cannot state the exact date each MWE attorney entered or withdrew. There is also a possibility that additional MWE associates appeared on filings I did not review; the names above are those I could ground in specific documents.
  • Bernie Knight's district-court role is not established — he appears only in the IPR papers.
  • Diablo's in-house legal staff (if any) is not identified in any public filing I found; if in-house counsel participated, they did not sign as counsel of record.