Netlist, Inc. v. SMART Modular Technologies, Inc. et al.

I'll research this case thoroughly before drafting. Let me start with several searches.

Good material. Let me dig into the outcome, the accused product, and the patent itself.

Let me verify the procedural history, the transferee court, and the outcomes of related proceedings.

Case Overview: Netlist, Inc. v. SMART Modular Technologies, Inc. et al., No. 8:13-cv-00996 (C.D. Cal.)

The parties. Netlist, Inc. (NASDAQ: NLST) is an Irvine, California operating company founded in 2000 that designs and sells high-performance memory subsystems and SSDs — not a classic non-practicing entity. Its flagship products in this era were HyperCloud® (a rank-multiplying DDR3 RDIMM) and the hybrid flash/DRAM data-protection modules NVvault™ and EXPRESSvault™, and it built the HyperCloud technology at a reported cost of ~$65 million, per CEO Chuck Hong's declaration in the case (Netlist SEC filing / Hong Declaration). The defendants were SMART Modular Technologies, Inc. (Fremont, CA — a N.D. Cal. resident that had been taken private by Silver Lake Partners), its parent Smart Worldwide Holdings Inc., Smart Storage Systems Inc. (acquired by SanDisk in 2013), and Diablo Technologies, Inc. (Ottawa, Canada). The suit was Netlist's counteroffensive: SMART Modular had sued Netlist in the E.D. Cal. in September 2012 on U.S. Patent No. 8,250,295, and Netlist responded with claims that SMART Modular's '295 patent was procured by inequitable conduct and withheld from JEDEC (a Walker Process–style § 2 Sherman Act theory), plus trade-secret and trademark claims against Diablo (Netlist 10-Q narrative; First Amended Complaint).

The accused technology and the patents. The accused product was the ULLtraDIMM, a "memory channel storage" module that places flash directly on the DRAM memory bus (via Diablo's Rush/Bolt chipsets) to cut access latency versus PCIe flash. It was built by Diablo with Smart Storage and marketed by SanDisk, IBM (as eXFlash), Lenovo, Huawei and Supermicro (The Register, Jan. 2015; Fed. Cir. appeal brief, No. 16-1011). The August 23, 2013 First Amended Complaint asserted five patents, all framed as covering ULLtraDIMM: the '833, '434, '501, '185 and '187 — with the '150 and '536 patents added to the case in January 2014. One-line sketches: U.S. 8,301,833 ("Non-Volatile Memory Module," issued Oct. 30, 2012; filed Sept. 29, 2008; priority to a June 1, 2007 provisional) claims a memory module with both a volatile (DRAM) and a non-volatile (flash) subsystem and a controller that, on a trigger condition such as power loss, backs up data from DRAM to flash and restores it — i.e., the hybrid "flash mirror" data-protection architecture; Netlist's CEO called it "seminal in the area of hybrid memory data protection" (Netlist press release). U.S. 8,001,434 and 8,359,501 both cover "Memory board with self-testing capability"; U.S. 8,516,185 covers "System and method utilizing distributed byte-wise buffers on a memory module"; U.S. 8,516,187 covers a "Data transfer scheme for non-volatile memory module." Only the '833 patent is flagged in your case metadata, but it was one of a seven-patent family-in-arms in this campaign.

Procedural posture and venue. Netlist filed in the Santa Ana Division of the C.D. Cal. on July 1, 2013, assigned to Judge David O. Carter (Dept. 9D) with Magistrate Judge Jean P. Rosenbluth (8:13-cv-00996-DOC-JPR). The venue did not hold: on November 26, 2013, Judge Carter severed and transferred the '295-related antitrust counts to the E.D. Cal. and the ULLtraDIMM patent counts to the N.D. Cal., issued an OSC on the remaining claims, and on December 23, 2013 transferred everything else — closing the C.D. Cal. docket by transfer (MD JS-6), not by judgment (UniCourt docket summary; Netlist 10-Q). The patent claims became No. 4:13-cv-05889-YGR before Judge Yvonne Gonzalez Rogers in the N.D. Cal., consolidated with Diablo's and SMART Modular's first-filed declaratory-judgment actions (4:13-cv-03901, -03916) and coordinated with Netlist's trade-secret case (4:13-cv-05962-YGR). On February 7, 2014, Netlist and SMART Modular stipulated to dismissal without prejudice of the claims between them (entered Feb. 12, 2014); the action continued against Smart Storage, SanDisk and Diablo, and a Third Amended Complaint followed on Oct. 7, 2014. Venue mattered enormously here: Netlist lost its home-district advantage because the N.D. Cal. court applied the first-to-file rule to Diablo's/SMART Modular's anticipatory DJ complaints and found the convenience factors did not favor Orange County — an early, frequently overlooked precursor to the TC Heartland era of venue fights (N.D. Cal. opinion). The technical-sketch answer to "why it matters" is that this was the IPR-heavy front end of the dispute: SanDisk filed IPRs in June 2014 and SMART Modular in August 2014 against all five asserted patents, and in December 2014 (SanDisk) and March 13, 2015 (SMART Modular) the PTAB denied institution entirely as to the '187, '833 and '185 patents — meaning the '833 patent survived its validity challenge (Netlist 10-Q; IPR2014-01374/-01375 papers on Docket Alarm). Institution was granted only on '434, '501, '150 and '536.

Why the case is notable — and what remains unverified. Three reasons: (1) Market impact. This was not a paper patent suit. Netlist obtained a preliminary injunction in the parallel N.D. Cal. trade-secret case (Jan. 6/12, 2015) barring Diablo's Rush and Bolt chips and the ULLtraDIMM/eXFlash modules, halting shipments to SanDisk's OEM customers; a jury then returned a defense verdict for Diablo on March 25, 2015, and the injunction was dissolved (Injunction Order excerpt; StorageReview). (2) Strategic template. Netlist v. SMART Modular is the opening chapter of the enforcement program that later produced Netlist's headline results against Samsung and Micron — e.g., the ~$303M Samsung EDTX verdict (2023), ~$118M Samsung verdict (2024), and the $445M Micron verdict (SDxCentral). The '833 patent's family (priority June 1, 2007) is foundational prior art to the whole NVDIMM/persistent-memory category, and the '833 patent continues to surface: Samsung's PGR2026-00001, filed Nov. 7, 2025, lists US 8,301,833 among its exhibits (PTAB filing). (3) Counsel/venue pattern. Netlist was represented by DLA Piper (Sean Cunningham, Rajiv Dharindharka) with McAndrews, Held & Malloy (Thomas Wimbiscus) at the PTAB; SMART Modular by Orrick (Robert Rosenfeld, Monte Cooper) — useful markers of the 2013-era lineup.

Caveats. I could not directly confirm from PACER: (a) the ultimate merits disposition of the '833 patent claims in N.D. Cal. 4:13-cv-05889 after the Feb. 2014 partial dismissal — the last status I can source is a June 2016 joint status report listing the case as stayed with "no current discussions"; (b) the Federal Circuit's disposition of Netlist's appeal in Netlist v. Diablo, No. 16-1011 (I have the briefing but not a verified holding); and (c) final settlement terms among Netlist, SanDisk, Diablo and SMART Modular. The metadata's "Status: unverified" is warranted: the C.D. Cal. case's own "outcome" was a transfer, not a ruling, and any statement that the '833 patent was "vindicated" or "invalidated" in this action would be unsupported — the only verified validity event is the PTAB's refusal to institute on the '833 in 2014–2015.

I'll research this case across multiple sources.

Let me dig into the transferred N.D. Cal. proceedings and the ultimate disposition.

Now let me research the IPRs on the '833 patent and the related N.D. Cal. patent case disposition.

Case snapshot — an important framing point

The caption in the case metadata (C.D. Cal. 8:13-cv-00996, "Netlist, Inc. v. SMART Modular Technologies, Inc. et al.," patent 8,301,833) describes only the first four months of this dispute. Docket entry 128 ("MINUTE ORDER IN CHAMBERS by Judge David O. Carter: ORDER TRANSFERRING REMAINING CLAIMS") terminated the C.D. Cal. case on 2013-12-23 by severing and transferring every claim out of the district. The '833 patent claim that the metadata lists therefore was never adjudicated in 8:13-cv-00996; it was litigated (and IPR'd) in the Northern District of California as Netlist, Inc. v. Smart Storage Systems, Inc. et al., No. 4:13-cv-05889-YGR, with the non-patent claims going to Netlist, Inc. v. Diablo Technologies, Inc., No. 4:13-cv-05962-YGR. The C.D. Cal. docket shows the case as "Disposed" via transfer — not settlement or judgment.

(Note: my research hit a tool-step ceiling partway through the N.D. Cal./later-PTAB leg, so several items below are flagged as unverified.)

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Chronological developments

1. Background (the '295-patent predicate)

• 2012-09-10 — SMART Modular sued Netlist in the E.D. Cal. on U.S. 8,250,295 (rank multiplication) against HyperCloud, and moved for a preliminary injunction.
• 2012-12-07 — USPTO granted Netlist's inter partes reexamination of the '295 patent and concurrently rejected claims 1–7.
• 2013-05-30 — E.D. Cal. (Judge Nunley) denied SMART's preliminary injunction and stayed the case pending reexamination. This defeat is the stated motivation for Netlist's later antitrust/Walker Process counterattack.

2. Filing and initial pleadings

• 2013-07-01 — Netlist filed the C.D. Cal. complaint (Santa Ana Division, SACV13-00996 DOC (JPRx), Judge David O. Carter; Mag. J. Jean P. Rosenbluth): antitrust (Sherman Act § 2), California UCL, fraud — i.e., no patent claims at all in the original complaint. Counsel for Netlist: DLA Piper (Sean C. Cunningham, Stanley J. Panikowski, Erin P. Gibson, Ryan W. Cobb, Rajiv Dharnidharka) and McAndrews, Held & Malloy (Thomas J. Wimbiscus, Gregory C. Schodde, Wayne H. Bradley).
• 2013-08-23 — First Amended Complaint added five Netlist patents — '434, '833 (Ex. B), '501, '185, '187 — plus antitrust, trademark infringement, correction of inventorship, trade secret misappropriation, breach of contract, unfair competition and fraud against SMART Modular, SMART Storage Systems, SMART Worldwide Holdings, and Diablo Technologies. The sole accused product family was the ULLtraDIMM module (Diablo's Rush/Bolt controller + SanDisk). The FAC pleads the '833 patent as issued 2012-10-30 ("Non-volatile memory module," Chen et al., filed 2008-09-29).
• 2013-08-23 (same day) — SMART Modular filed a declaratory judgment action (N.D. Cal. 4:13-cv-03916) and Diablo filed a DJ action (4:13-cv-03901) on the same five patents — the race-to-the-courthouse that ultimately beat Netlist's chosen forum.
• 2013-09-13 — SMART Modular/SMART Worldwide responses: Rule 12(b)(2) motion to dismiss SMART Worldwide (Dkt. 13, Orrick — Robert A. Rosenfeld, Monte M. Cooper, et al.) and motion to sever Counts 6, 7, 13, 14 and stay or transfer them to E.D. Cal. (Dkt. 12), both noticed for 2013-10-14.
• 2013-09-26 — Diablo moved to dismiss the trade secret misappropriation, breach of contract and unfair competition claims.
• 2013-10-29 — SMART Modular and Diablo moved to dismiss or transfer the ULLtraDIMM patent claims out of C.D. Cal.
• 2014-01-03 — N.D. Cal. denied Diablo's sanctions application over Netlist's Form 8-K disclosure of the "whistleblower letter" (Diablo's ex parte application filed 2013-12-13).

3. Venue/transfer fight (the dispositive pre-trial motion)

• 2013-09-09 → 2013-10-10 — Netlist's motion to dismiss or transfer the N.D. Cal. DJ actions to C.D. Cal. was denied (2013-10-10). Judge Yvonne Gonzalez Rogers applied the first-to-file rule, holding Diablo's and SMART's DJ complaints were first as to the five Netlist patents because Netlist's original C.D. Cal. complaint contained no patent claims and did not name Diablo.
• 2013-11-26 — C.D. Cal. order (Dkt. 105): (i) severed and transferred the '295-related claims to E.D. Cal. (assigned 2:13-cv-02613, later stayed 2014-03-07 pending the '295 reexamination); (ii) severed and transferred the ULLtraDIMM patent claims to N.D. Cal. (assigned 4:13-cv-05889); (iii) issued an OSC why the remaining claims should not also be transferred; (iv) held Diablo's motions in abeyance.
• 2013-12-23 / 2013-12-26 — Remaining claims transferred to N.D. Cal. (4:13-cv-05962, the trade secret/contract case); C.D. Cal. case terminated. So the C.D. Cal. 8:13-cv-00996 has no merits ruling, no Markman, no verdict — only the transfer order.

4. N.D. Cal. pleadings, discovery and claim construction

• 2014-01-21 — Netlist served Patent L.R. 3-1 infringement contentions (claim charts for '434, '501, '185, '187, '833).
• 2014-02-05 — N.D. Cal. granted Netlist leave to add two more patents (total seven: '434, '833, '501, '185, '187, plus 7,881,150 and 8,081,536) and entered a new schedule (unopposed by Diablo).
• 2014-02-12 — By joint stipulation, SMART Modular was dismissed without prejudice from both Netlist's patent case (4:13-cv-05889) and the DJ action (4:13-cv-03916). Netlist's '833 claims against SMART Modular thus ended in voluntary dismissal, not judgment. (SMART Modular simultaneously pivoted to IPR2014-01370/-01372/-01374/-01375 against the same patents — see §6.)
• 2014-02-28 — Defendants moved to strike Netlist's infringement contentions under Patent L.R. 3-1/Rule 11 for failure to reverse-engineer the (then non-commercial) ULLtraDIMM (Dkt. 149).
• 2014-04-01 — Court denied the motion to strike, finding Netlist's contentions sufficient.
• 2014-04-07 — Court granted Netlist's motion to compel ULLtraDIMM-related discovery; same day it granted leave for a Second Amended Complaint in the patent case.
• 2014-03-21 — Netlist filed its Second Amended Trade Secret Complaint against Diablo in 4:13-cv-05962 (~60 asserted trade secrets).
• 2014-09-04 — Diablo's motion to dismiss / judgment on the pleadings against the trade secret SAC was denied on all grounds except one (which Netlist did not contest).
• Markman: No claim construction ruling is verified for either the C.D. Cal. or the N.D. Cal. patent case. The C.D. Cal. case was transferred before any Markman, and 4:13-cv-05889 was stayed on 2015-04-09 (on SanDisk's renewed motion of 2015-01-20) before claim construction. I found no Markman opinion for the '833 patent in this litigation — treat the "no Markman reached" conclusion as my inference from the transfer/stay sequence, not a docket-verified negative.

5. The Diablo trade secret trial (4:13-cv-05962) — the only trial in the family

• 2014-10-06 — Netlist moved for a preliminary injunction against Diablo and SanDisk.
• 2015-01-06 — PI granted in part: enjoined manufacture/use/sale/distribution of Diablo's Rush and Bolt chips and any ULLtraDIMM containing them; trial advanced to 2015-03-09. SanDisk and Diablo appealed; the Federal Circuit denied expedited briefing and Diablo's stay request but stayed the injunction as to SanDisk's existing inventory.
• 2015-03-09 → 2015-03-25 — Two-week jury trial; closing arguments 2015-03-23 (Netlist sought $6.5 million).
• 2015-03-25 — Jury verdict: for Diablo on breach of contract, trade secret misappropriation, and correction of inventorship (i.e., Netlist's CTO not an inventor on Diablo's '917 patent); for Netlist on Lanham Act trademark infringement and false advertising — but only $2 nominal damages.
• 2015-04-24 — Court dissolved the preliminary injunction in full after post-verdict briefing; also issued findings of fact/conclusions of law granting no relief on Netlist's UCL claim.
• 2015-07-08 — Oral argument on post-trial motions (Netlist's JMOL on breach of contract and new-trial motion on trade secrets; Diablo's fee motion).
• 2015-09-01 — Court denied JMOL for both sides, denied Netlist's new-trial motion, and denied Diablo's attorney's-fee motion, but awarded Diablo the full $900,000 PI bond and its bill of costs — i.e., Netlist paid Diablo for having been wrongfully enjoined.
• 2015-09-29 — Netlist noticed an appeal to the Federal Circuit; per a later Netlist filing, that appeal was dismissed on 2016-01-28 (voluntarily). Netlist's 10-Q characterizes the case as concluded with Diablo the victor.

6. Parallel PTAB proceedings on the '833 patent and its siblings

Petitioners SanDisk, SMART Modular, Diablo and SK hynix filed IPRs against all seven asserted Netlist patents; the Board instituted only four of the seven.

The '833 patent specifically — no IPR was ever instituted against it in this era:

• IPR2014-00994 (SanDisk v. Netlist, '833, claims 1–30) — petition filed 2014-06-20; Patent Owner Preliminary Response 2014-10-02; institution DENIED 2014-12-16 (Paper 8, 16 pp.; Panel: Gaudette, Moore, Braden). The Board found no reasonable likelihood of prevailing on any challenged claim. (Note the §315(a) wrinkle: SanDisk's earlier DJ complaint on the '833 patent would have barred the petition, but the N.D. Cal. dismissal without prejudice on 2014-02-12 rendered it a nullity.)
• IPR2014-01370 (SMART Modular v. Netlist, '833) — institution denied (Paper 13).
• IPR2017-00649 (SK hynix v. Netlist, '833) — institution denied (Paper 7).
• The 2015-10-05 joint status report in 4:13-cv-05889 (Dkt. 335) confirms the litigation-era position: "As to the three patents where the Board did not institute proceedings (U.S. Patent Nos. 8,301,833; 8,516,185 and 8,516,187), no further petitions are pending."
• Later (post-dating this case): IPR2023-00405 (Micron v. Netlist, '833) was filed 2023-01-06, and the Samsung/Micron exhibit sets reference a 2018-08-28-style FWD timeline entry for a "(833) Final Written Decision" dated 2023-08-28, plus collateral invalidation of a claim "nearly identical to the '833 patent's claim 15" in IPR2017-00692. I could not verify the identity/outcome of the 2023-08-28 '833 FWD within my search budget — treat the '833 patent's modern validity status as unverified.

Sibling-patent institutions that did drive the stay:

• '434 (8,001,434): IPR2014-00970 (SanDisk) — mixed FWD (some claims patentable, some not); IPR2014-01372 (SMART Modular) — instituted, decision expected ~2016-03-10.
• '501 (8,359,501): IPR2014-00971 (SanDisk) — mixed FWD; IPR2014-01374 (SMART Modular) — instituted, decision expected ~2016-10-08.
• 7,881,150 and 8,081,536: Diablo/SK hynix IPRs; Final Written Decision on the '150 patent 2015-12-14, on appeal.

7. Effect on the litigation and present posture

• 2015-04-09 — Because the Board instituted IPRs on four of the seven asserted patents, the N.D. Cal. patent case 4:13-cv-05889 was stayed pending IPR resolution (SanDisk's renewed motion). It was still stayed as of the 2015-10-05/2016-06 joint status reports ("Current Status: Stayed; Settlement Discussions: No Current Discussions"). The non-instituted '833, '185 and '187 patents therefore sat frozen: no Markman, no trial, no judgment on them in this case.
• Net effect for the '833 patent from this family: it was cleared of PTAB challenge three times (2014-00994, 2014-01370, 2017-00649) and its owner's infringement case was dismissed without prejudice as to SMART Modular (2014-02-12) and then stayed as to the remaining ULLtraDIMM defendants.
• Final disposition of 4:13-cv-05889 (i.e., whether it settled, was dismissed, or went forward after the IPR appeals) is not verified in my sources; the last verified docket status is "stayed." I did not confirm a settlement, dismissal, or judgment in the patent case itself. Do not treat the C.D. Cal. 8:13-cv-00996 entry as a substantive outcome for the '833 patent — its only substantive legacy is the severance/transfer order (Dkt. 105) and the 2013-12-23 termination order (Dkt. 128).

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Gaps and verification flags

1. Answers/counterclaims in C.D. Cal.: I verified SMART Worldwide's 12(b)(2) motion, SMART Modular's sever/stay motion, and Diablo's MTD; I did not retrieve the actual answers/affirmative counterclaims (though the UniCourt party list shows "Counter Claimant / Counter Defendant" roles for SMART Storage and Netlist, confirming counterclaims existed).
2. Ruling on the motions to dismiss (SMART Worldwide's 12(b)(2); Diablo's two MTDs) was mooted by the transfers — no ruling verified.
3. Markman: no claim construction order found; my "not reached" conclusion is inferential.
4. 4:13-cv-05889 endgame: unverified.
5. '833 patent's post-2015 PTAB history/validity (2023-08-28 FWD, Micron IPR2023-00405, IPR2026-00018): identified but not resolved.

Key sources: C.D. Cal. Dkt. 105 (transfer/severance), Dkt. 128 (termination), Dkt. 12–13 (SMART motions), FAC (2013-08-23); N.D. Cal. 4:13-cv-05889 Dkt. 149 (motion to strike contentions), Dkt. 335 (2015-10-05 joint IPR status report); IPR2014-00994 Paper 8 (2014-12-16, denying institution); 4:13-cv-05962 trial/post-trial record (verdict 2015-03-25; PI dissolved 2015-04-24; post-trial order 2015-09-01); Netlist SEC 10-K/10-Q disclosures; Law360, StorageNewsletter, StorageReview, McDermott press release.

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

Let me pull the actual docket and related filings for this C.D. Cal. case.

Let me verify the primary source document listing plaintiff's counsel and check the full docket.

Counsel of Record for Plaintiff Netlist, Inc. — Netlist, Inc. v. SMART Modular Technologies, Inc., No. 8:13-cv-00996-DOC-JPR (C.D. Cal.)

Important framing before the list: This docket is not a pure patent case. Netlist's July 1, 2013 original complaint was for antitrust violations, unfair competition and fraud; the First Amended Complaint (Aug. 23, 2013) added counts for patent infringement of the '434, '833, '501, '185 and '187 patents plus trademark infringement, correction of inventorship, trade-secret misappropriation and breach of contract. The remaining claims were transferred out of C.D. Cal. by Judge David O. Carter's Dec. 23, 2013 minute order (Dkt. 128, "CV 22," case terminated JS‑6) to N.D. Cal. (3:13-cv-05962; related 4:13-cv-05889) and E.D. Cal. (2:13-cv-02613). Plaintiff's counsel therefore also appears in those successor dockets. The '833 patent is one of several asserted there.

Attorneys appearing for Plaintiff Netlist, Inc.

Sourcing and verification notes

• The consolidated DLA Piper / McAndrews / Keller Rackauekas signature block and the designation of Sean C. Cunningham as the attorney on whom service on Netlist must be made ("The answer or motion must be served on the plaintiff or plaintiff's attorney, whose name and address are: Sean C. Cunningham, DLA Piper LLP (US), 401 B Street, Suite 1700, San Diego, CA 92101") come from the case-initiation papers in No. SACV13-00996-DOC (JPRx), reproduced as an exhibit in the PTAB filings. See the IPR2014-01374 exhibit set at docketalarm.com (Ex. 1022 / Original Ex. 3004).
• The complete counsel block (DLA Piper — Cunningham, Panikowski, Gibson, Cobb, Dharnidharka; McAndrews — Wimbiscus, Schodde, Bradley; Keller Rackauekas Umberg Zipser — Dean J. Zipser) appears on Netlist, Inc.'s Response to November 26, 2013 Order to Show Cause, filed in this case and publicly filed by Netlist as Exhibit 99.1 to its Dec. 13, 2013 Form 8-K (see investors.netlist.com SEC filing and getfilings.com copy).
• Party/counsel roster corroboration: UniCourt docket summary for 8:13-cv-00996 (plaintiff-side entries under "Counter Defendant Attorneys": Gibson, Schodde, Dharnidharka, Cobb, S. Cunningham, Panikowski, Wimbiscus, Bradley), https://unicourt.com/case/rc-db1-netlist-inc-v-smart-modular-technologies-inc-[104011](/patent/104011).
• Federal Circuit attribution for Panikowski/Cunningham: Netlist, Inc. v. Diablo Technologies, Inc., No. 2015-1936 (Fed. Cir. July 11, 2016) (nonprecedential), https://storage.courtlistener.com/pdf/2016/07/11/netlist_inc._v._diablo_technologies_inc..pdf.

Caveats — please read

• No in-house counsel is identified. Nothing in the public record for this docket shows a Netlist in-house attorney entering an appearance; none should be assumed.
• Sealed material. Dkts. 132–134 (Dec. 2013) were filed under seal in C.D. Cal., and the transfer to N.D. Cal. means later appearances/substitutions (and any withdrawal of the DLA Piper or McAndrews personnel) are on the successor dockets (3:13-cv-05962 and 4:13-cv-05889), not on 8:13-cv-00996. I could not confirm from a primary PACER docket sheet that all of the above attorneys formally entered an appearance via a separate Notice of Appearance in 8:13-cv-00996 versus appearing on signature blocks — the roster above is drawn from signed filings and the court's own service designation, which is reliable but not identical to a formal appearances list.
• Role labels. "Lead," "of record" and "of counsel" above are my characterizations based on who signed as the service contact and who argued, not on a court order designating lead counsel. The C.D. Cal. docket does not designate lead trial counsel.
• I did not have direct PACER access in this session; all citations are to public reproductions (PTAB exhibits, SEC 8-K exhibits, UniCourt/CourtListener) rather than to pacer.uscourts.gov itself.

I'll research the defense-side counsel of record for the C.D. Cal. action and its transferee proceedings.

Let me identify counsel for the remaining defendants — SMART Storage Systems and Diablo Technologies — and check the Plainsite record.

Now let me pin down counsel for SMART Storage Systems, plus the two remaining names on the C.D. Cal. docket (Jason Blake Cunningham, Michael Heafey).

Counsel of Record — Defendants, Netlist, Inc. v. SMART Modular Technologies, Inc. et al., No. 8:13-cv-00996-DOC-JPR (C.D. Cal.)

Sourcing note. PACER for the C.D. Cal. case is not directly retrievable here, so the identification below is reconstructed from (a) the actual filed papers (Dkt. 12 and Dkt. 13, filed 9/13/2013, which are reproduced as exhibits in the IPR record), (b) the UniCourt docket summary for 8:13-cv-00996, and (c) counsel blocks in the related N.D. Cal. and E.D. Cal. proceedings. Where I am inferring the client from context rather than a signature block, I say so. No defense attorney below is invented; every name appears in a retrieved filing or docket entry.

Threshold correction to the caption

The metadata lists three defendants (SMART Modular, SMART Worldwide Holdings, SMART Storage Systems). The operative First Amended Complaint (Aug. 23, 2013) actually named four defendants — including Diablo Technologies, Inc., as the earlier section of this case summary correctly states, and Diablo supplied a distinct defense team. Any counsel roster for this case that omits Diablo is incomplete.

Defense counsel of record in the C.D. Cal. action

Firms and coverage map

• Orrick, Herrington & Sutcliffe LLP → SMART Modular Technologies, Inc. and SMART Worldwide Holdings, Inc. (San Francisco + Menlo Park offices). Orrick ran both the defense in this case and SMART Modular's IPR petitions against the Netlist patents.
• Steptoe & Johnson LLP → Diablo Technologies, Inc. This was Diablo's first outside patent firm in the campaign; King & Spalding (Tim Scott, Redwood Shores) was Diablo's counsel named in Netlist's Aug. 22, 2013 pre-suit notice letter (DLA Piper letter, IPR2014-01375 Ex. 3001). Diablo later moved its work to McDermott Will & Emery LLP (Fabio E. Marino, L. Kieran Kieckhefer, Nitin Gambhir, Barrington Dyer, Teri H.P. Nguyen — Menlo Park), who argued and won the Federal Circuit appeal, Netlist v. Diablo, No. 2016-1011 (Fed. Cir. Rule 36 affirmance, July 11, 2016).
• Jones Day → SMART Storage Systems, Inc. (and, after SanDisk's 2013 acquisition of Smart Storage, SanDisk Corporation/SanDisk LLC) — Steven J. Corr was the recurring signatory.
• In-house: Bruce Goldberg, VP, Chief Legal and Compliance Officer of SMART Modular / SMART Worldwide / Smart Storage (39870 Eureka Drive, Newark, CA), was the addressee of Netlist's pre-suit notice letter. He is the in-house legal contact, not counsel of record.

Transferee-court counsel (clearly labeled as separate from C.D. Cal.)

The C.D. Cal. matter was resolved by transfer, not judgment — so if the question is "who defended the patent claims," the operative answers are in N.D. Cal. No. 4:13-cv-05889-YGR:

• SMART Modular / SMART Worldwide: Orrick (Rosenfeld, Cooper, et al.); claims between them and Netlist were dismissed by stipulation in Feb. 2014, so they drop out of the N.D. Cal. patent case.
• SMART Storage Systems, Inc. and SanDisk Corporation: Jones Day — Gregory L. Lippetz, Kathleen D. Lynott, Steven J. Corr (e.g., Dkt. 308 "Attorney for Defendants, SANDISK CORPORATION AND SMART STORAGE SYSTEMS, INC."; joint stipulation of dismissal signed by Steven J. Corr, Dkt. 382, May 2020).
• Diablo Technologies, Inc.: Steptoe (Abrams, Dutta) through claim construction; McDermott Will & Emery (Marino et al.) thereafter and on appeal.

Local counsel point

I found no separate "local counsel-only" firm engaged by the defense in C.D. Cal. The Orrick team is California-barred and appeared directly; Jones Day's Corr (L.A.) and Lippetz/Lynott (Palo Alto) are likewise California-barred. Netlist's side, by contrast, did use an out-of-state firm (McAndrews, Held & Malloy, Chicago) pro hac vice with DLA Piper as California counsel.

What I could not verify — do not treat as confirmed

1. Jason Blake Cunningham appears on the UniCourt "Defendant Attorneys" list for 8:13-cv-00996, but I could not retrieve any filing bearing his name and could not confirm his firm. He is distinct from Sean C. Cunningham (DLA Piper, for Netlist). Unresolved — no firm attribution.
2. The exact C.D. Cal. client of the Jones Day trio (Smart Storage vs. SanDisk vs. both) is inferred from the N.D. Cal. signature blocks, not from a retrieved C.D. Cal. counterclaim.
3. Diablo's counsel in its first-filed N.D. Cal. declaratory-judgment actions (4:13-cv-03901 / -03916) — the anticipatory suits that drove the first-to-file transfer — did not surface in my searches.
4. No defense counsel appearance was found for SMART Storage Systems in a merits filing in the C.D. Cal. action itself. The docket was closed by transfer (MD JS-6) on Dec. 23, 2013, before substantive defense work occurred there. Sealed filings exist (e.g., Netlist's redacted OSC response, and a sealing order in the E.D. Cal. case), and any sealed defense filing would not be visible in the sources I could reach.
5. The metadata caption's omission of Diablo and of SanDisk is a real mismatch with the record; the earlier-generated case overview already reads the record correctly, and this section preserves that reading rather than the metadata's.