Litigation

Netlist, Inc. v. SMART Storage Systems, Inc. et al.

unverified

4:13-cv-05889-YGR

Patents at issue (1)

8301833

Plaintiffs (1)

Summary

Netlist's 2013 N.D. Cal. action asserting the '833 patent (among others) against SMART entities and Diablo Technologies. Outcome not verified from primary source.

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 thoroughly before drafting the overview.

Let me dig into the '833 patent specifically and the case outcome.

Now let me verify the IPR history on the '833 patent and the case's overall trajectory.

Case Overview and Background

The parties. Plaintiff Netlist, Inc. (NASDAQ: NLST, Irvine, CA) is an operating memory-technology company — not an NPE/PAE — that sells HyperCloud® hybrid memory modules and virtualized memory ASICs; the Stanford NPE Litigation Database classifies Netlist as a "product company" asserter (Stanford NPE DB). Defendants are the SMART family of memory-module companies (SMART Storage Systems, Inc., SMART Modular Technologies, Inc., and SMART Worldwide Holdings, Inc.) and Diablo Technologies, Inc., the Canadian memory-controller/ASIC designer that supplied the accused technology. SanDisk Corporation — which acquired SMART Storage Systems in August 2013 for ~$307M — later appeared as a defendant/successor in interest (The Register, Dec. 16, 2013); by the time of final dismissal the named defendants were "SMART Storage Systems, Inc. and SanDisk Corporation" (Dkt. 381–382). SMART Modular and SMART Worldwide were dismissed without prejudice early in the case (Feb. 12 and Apr. 15, 2014, per Netlist's SEC quarterly report). The litigation was embedded in a broader, acrimonious dispute: Netlist filed in C.D. Cal. in July 2013 (Case No. 8:13-cv-00996), Diablo and SMART Modular filed competing declaratory-judgment actions in N.D. Cal. on Aug. 23, 2013 (4:13-cv-03901 and 4:13-cv-03916), and Netlist asserted trade-secret misappropriation and antitrust/unfair-competition claims alongside patent infringement (4:13-cv-05962) — all after Netlist's CEO received an anonymous whistleblower letter (postmarked from Canada) alleging that Diablo "took Netlist's flagship product, HyperCloud™, 'as-is'" to build its product (Netlist press release, Dec. 16, 2013; SEC filing).

Accused technology and patents. The accused product is the ULLtraDIMM™, a flash-based module that places NAND flash on the server's DDR3 DRAM memory channel, developed by Diablo (its "memory channel"/TeraDIMM architecture) in partnership with SMART Storage and marketed into IBM X-Series servers in early 2014 (The Register). Netlist alleged the ULLtraDIMM embodied the hybrid volatile/non-volatile memory architecture it had commercialized as HyperCloud. The case began with five Netlist patents asserted in the Aug. 2013 amended Central District complaint and grew to seven asserted patents against the ULLtraDIMM after the court granted leave to add two more in February 2014 (per Netlist's SEC report of the Jan. 21, 2014 motion and Feb. 5, 2014 order). The metadata patent, U.S. Patent No. 8,301,833 ("Non-Volatile Memory Module," issued Oct. 30, 2012; Amidi et al.; filed Sept. 29, 2008 as a continuation of the June 2, 2008 application, priority to provisional 60/941,586 of June 1, 2007) claims a hybrid memory system in which a controller couples/decouples a volatile (DRAM) subsystem and a non-volatile (flash) subsystem and backs up the volatile memory to flash on a trigger condition such as power loss — operating the DRAM at a reduced clock frequency during backup/restore (Micron v. Netlist, IPR2022-00418, Final Written Decision at § II.C; IPR2014-00994, Paper 8). Related asserted Netlist patents appearing in the docket materials include the '536 and '386 load-isolation/rank-emulation patents (Dkt. 224) and the '187 patent (SanDisk IPR2014-00982) — I could not verify the complete asserted-patent list from a single primary source, so treat the "seven patents" figure as drawn from Netlist's own SEC disclosure.

Posture, venue, and significance. The case is Netlist, Inc. v. SMART Storage Systems, Inc., No. 4:13-cv-05889-YGR (N.D. Cal., Oakland Division), before Judge Yvonne Gonzalez Rogers. Venue mattered: Judge Gonzalez Rogers denied Netlist's motions to dismiss/transfer the Diablo and SMART Modular declaratory-judgment actions, holding that the first-filed Diablo DJ complaint controlled and that N.D. Cal. was at least as convenient as C.D. Cal. (SMART Modular's principal place of business and Diablo personnel were in the Northern District, and SanDisk's headquarters were there) (Order, 4:13-cv-03901, Dkt. 20). She then consolidated 4:13-cv-05889 and 4:13-cv-03901 for all purposes (05889 as lead) and coordinated discovery with the trade-secret case (Order, Apr. 8, 2014). The court denied Smart Storage and Diablo's motion to stay pending IPR without prejudice (Dkt. 249, Aug. 21, 2014), reasoning the litigation had progressed and it was speculation whether the PTO would institute. Institution was indeed refused at that stage: IPR2014-00994 (SanDisk, filed June 20, 2014) and IPR2014-01370 (SMART Modular) both resulted in decisions denying institution of review of the '833 patent (Paper 8, Dec. 16, 2014; exhibits filed at Dkts. 309, 316). The case's notability is threefold: (1) it was Netlist's first major assertion campaign over hybrid/DIMM memory technology — the template for its later, far more consequential suits against SK hynix, Google, Samsung, and Micron; (2) it illustrates an IPR-estoppel/coordinated-petition dynamic, with Netlist arguing that SMART and Diablo split petitions to dodge statutory estoppel (Dkt. 224 at 10); and (3) it shows how long such campaigns can lie dormant — the case was kept alive on compliance hearings for years, then Diablo was dismissed without prejudice on Nov. 9, 2018 (Dkt. 368), with the court clarifying on Jan. 17, 2019 (Dkt. 371) that claims against SMART Storage and SanDisk remained, and it finally ended on May 19, 2020, when Judge Gonzalez Rogers granted a joint stipulation dismissing all remaining claims without prejudice, except Netlist's infringement claims on the DDR3-only ULLtraDIMM, which were dismissed with prejudice, each side bearing its own costs and fees (Dkts. 381–382). The '833 patent's story did not end with this case: after a third failed challenge (SK hynix, IPR2017-00649, institution denied), the PTAB in Micron's IPR2022-00418 held claims 1, 3–17, and 19–30 of the '833 patent unpatentable in a Final Written Decision dated Aug. 28, 2023 — a decision arising from Netlist's W.D. Tex. Micron litigation — underscoring how the patent first tested in this 2013 case became central to Netlist's later, multi-hundred-million-dollar campaigns.

Sourcing caveats. The Dec. 19, 2013 filing date, Oakland Division, and Judge Gonzalez Rogers as presiding judge are confirmed by the docket and her signed orders; some third-party databases (e.g., Dockets.Justia) list the case as "3:2013cv05889," show a different presiding judge, and classify the nature of suit as antitrust — these appear to be data artifacts and conflict with the court's own orders. The ultimate disposition of the coordinated trade-secret case (4:13-cv-05962) is not verified here.

Key legal developments & outcome

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

I'll research this case across multiple sources.

Let me dig deeper into specific events and parallel proceedings.

Netlist, Inc. v. SMART Storage Systems, Inc., No. 4:13-cv-05889-YGR (N.D. Cal.)

Bottom line up front: This case – one front in the multi-front Netlist/Diablo/SMART/SanDisk war over the ULLtraDIMM hybrid memory module – never reached claim construction, summary judgment, or trial. It was stayed for roughly five years (April 2015 – May 2020) pending PTAB review of the seven asserted patents (the '833 patent's own petitions were denied institution), and was ultimately dismissed by joint stipulation on May 15/19, 2020, without any merits ruling and without any damages award. Defendants bore their own costs and fees.

A note on sourcing: some of the early procedural mechanics below are reconstructed from PTAB papers and CourtListener/Justia RECAP PDFs rather than a full PACER docket pull, and I have flagged the points where the record is thin.

1. Party / case structure (important context)

  • Plaintiff: Netlist, Inc. (Irvine, CA).
  • Defendants: SMART Modular Technologies, Inc.; SMART Storage Systems, Inc.; SMART Worldwide Holdings, Inc.; and Diablo Technologies, Inc. SanDisk Corporation later appears as a defendant/co-party in the stay papers (SanDisk acquired SMART Storage Systems).
  • Accused product: the ULLtraDIMM flash/DRAM hybrid module (Diablo "Rush"/"Bolt" chips integrated by SMART Storage).
  • Patents-in-suit (seven, including the '833): U.S. Pat. Nos. 8,001,434; 8,301,833; 8,359,501; 8,516,185; 8,516,187; 7,881,150; and 8,081,536 (per the parties' 2016 Joint Status Report to the PTAB).
  • Judge: Yvonne Gonzalez Rogers (YGR). Courtroom 1, Oakland.

2. Filing and initial pleadings (2013–2014)

Date Event
2013-08-22 Netlist demand letter to SMART Modular, SMART Storage, SMART Worldwide and Diablo re the ULLtraDIMM (DLA Piper).
2013-08-23 Netlist files its First Amended Complaint in C.D. Cal. (No. 8:13-cv-00996-DOC-JPR) asserting the '833 and six other patents (this is the "complaint accusing Petitioner, and others, of infringing the '833 patent" referenced in the PTAB petitions).
2013-08-23 Same day, Diablo files a declaratory judgment action in N.D. Cal. (Diablo Techs., Inc. v. Netlist, Inc., 4:13-cv-03901-YGR); SMART Modular files its own DJ action (4:13-cv-03916-YGR).
2013-12-19 N.D. Cal. docket shows Netlist, Inc. v. Smart Modular Technologies, Inc., 4:13-cv-05889-YGR is opened (the case at issue here) against the four SMART/Diablo defendants.
2014-02-12 The district court dismissed Diablo's DJ complaint without prejudice (PTAB later held this meant § 315(a)(1) did not bar Diablo's IPR petition — "as if the complaint never existed").
2014-02-17 Diablo files its Second Amended Answer and Counterclaims in the DJ action (4:13-cv-03901).
2014-02-21 Netlist serves its Disclosure of Asserted Claims and Infringement Contentions (Dkt. 146-6) on the ULLtraDIMM.
2014-06-06 SMART Storage and Diablo serve Invalidity Contentions with extensive exhibit sets (A–H); a corrected Joint Claim Construction Statement was also exchanged in this window.
2014-10-07 Netlist files its Third Amended Complaint for patent infringement (Dkt. ~Doc. 21 pp.).

Counsel of record: Netlist — DLA Piper LLP (US) (Sean C. Cunningham, Stanley J. Panikowski, Erin P. Gibson, Ryan W. Cobb). Diablo — McDermott Will & Emery LLP (Russell Hayman, Fabio Marino); King & Spalding (Tim Scott) appears in early correspondence. SMART Storage/SanDisk — McAndrews, Held & Malloy, Ltd. (Thomas J. Wimbiscus, Gregory C. Schodde, Ronald H. Spuhler).

3. Pre-trial motions of substance

a) Venue / first-to-file motions (2014) — denied.
Netlist moved to dismiss or transfer the Diablo and SMART Modular declaratory-judgment complaints, arguing its C.D. Cal. action was first-filed and that the N.D. Cal. DJ suits were anticipatory. Judge Gonzalez Rogers denied the motions, holding the Diablo DJ complaint was the first-filed action on the five Netlist patents, that Netlist's original C.D. Cal. complaint "did not include any allegations regarding the Five Netlist Patents, or any patent infringement-related claims at all," and that convenience/§ 1404 factors did not favor the Central District. (Order in 4:13-cv-03901-YGR; see Justia/RECAP PDF.)

b) Discovery motion over infringement contentions (2014) — Netlist prevailed.
Diablo moved to strike/compel more particular infringement contentions under Patent L.R. 3-1, arguing Netlist had to reverse-engineer the ULLtraDIMM. In an order filed 2014-04-01 (Dkt. 176), the court denied the motion, holding Rule 3-1 "does not require Plaintiff to reverse engineer every product it has accused, especially where the products are not reasonably available to the public," and that if Diablo believed the product wasn't made/offered for sale, the vehicle was a motion to dismiss or summary judgment — not a discovery motion.

c) Motion to stay pending IPR — first denied, then granted.

  • 2014-06-24: SMART Storage/SanDisk move to stay pending IPR; Diablo joins.
  • 2014-07-10: Netlist opposes.
  • 2014-08-21 (Dkt. 249): Court DENIES the stay without prejudice to re-filing "upon a decision by the PTO on the pending requests for inter partes review."
  • 2015-01-20: SanDisk/SMART Storage renew the stay motion (Dkt. Nos. 283, 308); Diablo joins.
  • 2015-04-06: Hearing.
  • 2015-04-09 (Dkt. 330): Court GRANTS the stay pending IPR. Applying the three Evolutionary Intelligence/Facebook factors, the court found that "in light of the decision of the PTAB to grant IPR petitions as to the majority of the seven patents-in-suit, and all or nearly all claims at issue in those patents, a stay pending resolution of those petitions is warranted." On litigation progress, the court noted that "only written discovery is concluded. Depositions and expert discovery remain. No claim construction or trial date is scheduled," and that the case had not reached "any 'point of no return.'"

d) No summary judgment, no Markman order, no trial in this case.

4. Claim construction (Markman)

Never reached. The April 9, 2015 stay order expressly stated the litigation "has not advanced to the point of a claim construction decision." A Corrected Joint Claim Construction Statement was exchanged and cited in later PTAB IDS filings, but the court issued no claim construction ruling before the stay, and the case was dismissed in 2020 without one.

5. Discovery milestones of strategic significance

  1. Written discovery concluded; fact/expert depositions never taken (per the court's April 2015 stay analysis).
  2. Source-code and product-access fights: Diablo's failed attempt to force Netlist to reverse-engineer the ULLtraDIMM (Dkt. 176) is the key discovery ruling — the ULLtraDIMM was not "reasonably available," so Netlist was permitted to rely on publicly available materials, patent applications and diagrams.
  3. Confidentiality/competition discovery: In the stay briefing, defendants used Netlist's March 2014 SEC filing (listing competitors as SK hynix, Samsung, Micron, STEC, SMART Modular, Agigatech, Viking Interworks — with no mention of Diablo or SMART Storage) to attack Netlist's irreparable-harm narrative, an early sign of the market-definition theme that dominated the companion trade-secret trial.

6. The long stay, compliance hearings, and partial dismissals (2015–2020)

  • 2016-01-11 (Dkt. 336): Compliance hearing continued to 2016-04-01; parties ordered to file a joint statement on IPR status five business days prior.
  • 2016-03-29 (Dkt. 339): Hearing continued to 2016-08-26.
  • 2016-06-16: "Updated Joint Status Report" filed in parallel IPR2015-01021 confirming the '05889 case was Stayed, patents at issue listed as the seven patents above, "Settlement Discussions: No Current Discussions."
  • 2018-08-17: Joint Status Report Regarding Inter Partes Review (4 pp.).
  • 2018-09-05 (Dkt. 362-1): Declaration of Jeff McMullen filed.
  • 2018-09-19 (Dkt. 363): McDermott Will & Emery granted leave to withdraw as counsel for Diablo; compliance hearing continued.
  • 2018-11-07/09 (Dkts. 367, 368): Joint stipulation dismissing Diablo without prejudice; order entered 2018-11-09.
  • 2019-01-17 (Dkt. 371): Order amending the 11/9/2018 order — the dismissal applied only to Diablo; "the claims between plaintiff Netlist Inc. and Defendants SMART Storage Systems, Inc. and SanDisk Corporation remain at issue." Case reopened as to those defendants; next joint status report due 2019-06-07.
  • 2020-05-15 / 2020-05-19 (Dkts. 381, 382): Joint Stipulation of Dismissal and Order Dismissing Case, Judge Gonzalez Rogers. Terms:
    • All claims between Netlist and the remaining defendants (SMART Storage Systems and SanDisk) dismissed without prejudice,
    • EXCEPT Netlist's infringement claims regarding the DDR3-only ULLtraDIMM product, which were dismissed with prejudice,
    • "each party will bear its own costs and attorneys' fees."
    • The 5/22/2020 compliance hearing was vacated.

No verdict, no judgment on validity/infringement, no damages, no injunction, and no appeal in 4:13-cv-05889.

7. Parallel PTAB proceedings on the '833 patent (and their effect)

On the '833 patent specifically — every petition failed or came too late to matter to this case:

Proceeding Petitioner Key dates Outcome
IPR2014-00994 SanDisk Corporation POPR 2014-10-02; Decision 2014-12-16 (Paper 8); rehearing denied (Paper 10) Institution DENIED as to claims 1–30. Board construed "clock frequency."
IPR2014-01370 SMART Modular Technologies Inc. Petition/corrected petition 2014-08-22; POPR 2014-12-16; Decision 2015-03-13 (Paper 13) Institution DENIED as to claims 1–30; Board found no term needed express construction.
IPR2017-00649 (third-party challenger) 2017 Institution DENIED (Paper 7) — no FWD on the '833 in that round.

Consequence for this litigation: the '833 patent's claims were never cancelled and thus never mooted any part of this case under Fresenius. The '833 rode through the entire stay intact.

On the other six asserted patents — institution was granted, which is what actually drove the stay:

  • Institution decisions issued 2014-12-16 in several SanDisk IPRs (e.g., IPR2014-00882 and IPR2014-01011 on the '7,881,150; IPR2014-00883 on the '8,081,536; IPR2014-01029 on the '8,516,185).
  • The PTAB granted review on "the majority of the seven patents-in-suit, and all or nearly all claims at issue in those patents" (quoting the 2015-04-09 stay order), covering patents such as the '8,001,434; '8,359,501; '8,516,185; and '8,516,187.
  • SMART Modular's 2014-08-22 petitions were decided 2015-03-13: denied as to three patents, but additional reviews instituted on the '8,001,434 and '8,359,501.
  • The court's rationale for the stay was that the PTAB would simplify (or eliminate) the claims and avoid "inconsistent results," and that the non-instituted claims "cover technologies that are interrelated to those under review, and are all combined in the single accused product."

Later-life of the '833 (post-dismissal, for completeness — flagged as partially unverified):

  • Netlist later asserted the '833 patent against Samsung/Micron in W.D. Tex. (No. 6:21-cv-00430).
  • Micron filed an IPR petition against the '833 patent (Paper 2) in the 2022 round; a PTAB Final Written Decision dated 2023-08-28 addressed the '833 patent, and the PTAB in a related proceeding invalidated a claim "nearly identical to the '833 patent's claim 15" in IPR2017-00692. Sibling 2024 Final Written Decisions invalidated all claims of the '417 and '215 patents (2024-07-30), with Director Review denied (2024-10-08). I could not verify from a primary PTAB document in this session the exact IPR number and the precise holding of the 2023-08-28 '833 FWD — treat that specific point as unconfirmed.

8. The companion case that DID go to trial (critical to understanding the outcome)

The merits trial everyone remembers from this dispute happened in the parallel N.D. Cal. trade-secret/contract action, Netlist, Inc. v. Diablo Technologies, Inc., No. 4:13-cv-05962-YGR (filed 2013-07-01) — not in 4:13-cv-05889:

  • 2015-01-06/12: Court granted a preliminary injunction barring manufacture/sale of the Diablo Rush and Bolt chips and ULLtraDIMM modules containing them; trial advanced to 2015-03-09.
  • 2015-03-09: Jury trial begins; two weeks.
  • 2015-03-25: Jury verdict — for Diablo on breach of the NDA, breach of the Development and Supply Agreement, trade-secret misappropriation (all eight alleged secrets held not secret), and correction of inventorship; for Netlist on Lanham Act trademark infringement and false advertising, with $1.00 nominal damages each ($2 total).
  • 2015-03-26: Federal Circuit stayed the preliminary injunction (SanDisk's inventory carve-out granted; Diablo's stay request denied).
  • 2015-04-24: Court dissolved the preliminary injunction and entered judgment for Diablo on the UCL claim, ordering Diablo to pay Netlist $2.00 total and Netlist to "take nothing" on trade secrets, contract, UCL and inventorship.
  • 2015-09-01/02: Court denied Netlist's motion to set aside the verdict/new trial and ordered the full injunction bond paid to Diablo as partial compensation for lost profits.

9. Final disposition / present posture

  • 4:13-cv-05889-YGR is CLOSED as of 2020-05-19 (Dkt. 382), dismissed by joint stipulation, with the DDR3-only ULLtraDIMM claims dismissed with prejudice and everything else without prejudice.
  • The net effect for the '833 patent: no court ever adjudicated its validity or infringement in this action, and no IPR ever cancelled its claims during the pendency — the case simply expired via the stay and dismissal.
  • Related events: Netlist's ITC § 337 investigation No. 337-TA-1089 against SK hynix (different patents, the '907 and '623) ended in a Commission final determination of no violation, terminating the investigation — Federal Register notice published 2020-04-13. Netlist's separate campaigns against Samsung (E.D. Tex. verdict ~$303M, 2023-04-21) and Micron continued after this case closed.

10. Condensed timeline

Date Event
2013-08-22 Netlist demand letter re ULLtraDIMM
2013-08-23 Netlist 1st Am. Compl. (C.D. Cal. 8:13-cv-00996); Diablo DJ suit (N.D. Cal. 4:13-cv-03901)
2013-12-19 4:13-cv-05889 docket opened (N.D. Cal.)
2014-02-12 Diablo DJ complaint dismissed without prejudice
2014-02-21 Netlist infringement contentions served
2014-04-01 Dkt. 176 — Diablo's Rule 3-1 reverse-engineering motion denied
2014-06-06 Defendants' invalidity contentions
2014-06-24 First motion to stay pending IPR
2014-08-21 Dkt. 249 — stay DENIED without prejudice
2014-10-07 Third Amended Complaint
2014-12-16 PTAB denies '833 institution (IPR2014-00994, SanDisk)
2015-01-20 Renewed motion to stay (Dkts. 283, 308)
2015-03-13 PTAB denies '833 institution (IPR2014-01370, SMART Modular)
2015-03-25 Jury verdict in companion case 4:13-cv-05962 (mostly for Diablo; $2 nominal)
2015-04-09 Dkt. 330 — Stay GRANTED pending IPR
2016–2019 Continued compliance hearings; joint status reports; Diablo dismissed without prejudice (2018-11-09; clarified 2019-01-17)
2020-05-15/19 Dkts. 381/382 — Joint stipulation of dismissal; case closed
2023-08-28 PTAB Final Written Decision addressing the '833 patent in later IPR round (details unverified)

Confidence notes

  • High confidence (primary documents): the 2014-08-21 stay denial (Dkt. 249), the 2015-04-09 stay grant (Dkt. 330), the 2014-04-01 discovery order (Dkt. 176), the PTAB denial decisions (IPR2014-00994 Paper 8; IPR2014-01370 Paper 13), the 2018/2019/2020 dismissal orders (Dkts. 368, 371, 382), and the companion 4:13-cv-05962 verdict/judgment.
  • Medium confidence: exact filing-location mechanics between C.D. Cal. No. 8:13-cv-00996 and N.D. Cal. No. 4:13-cv-05889, and the precise contents of the defendants' answers/counterclaims in 05889 (I confirmed Diablo's counterclaims in the DJ action 4:13-cv-03901, not in 05889 itself).
  • Low confidence / needs verification: the specific IPR number and holding of the 2023-08-28 '833 Final Written Decision, and the petitioner identity in IPR2017-00649. I recommend a PACER pull of the 4:13-cv-05889 docket (Dkts. 1–30 for pleadings, 160–180 for the contentions dispute) and a PTAB API check on Netlist IPRs to close those gaps.

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 in this case. Let me search multiple sources.

I have strong leads. Let me verify the counsel roster on the N.D. Cal. docket directly.

Let me verify the specific attorney appearances on the N.D. Cal. docket and check attorney backgrounds.

Plaintiff's Counsel of Record — Netlist, Inc. v. SMART Storage Systems, Inc., et al., No. 4:13-cv-05889-YGR (N.D. Cal.)

Sourcing note (read first): I did not pull PACER directly; the roster below is reconstructed from primary court filings that are mirrored on CourtListener, Justia, and Docket Alarm (signature blocks on Netlist's own pleadings in this docket), plus a Law360 case report. Where a name comes only from a secondary report and not from a signature block I saw, I flag it. No attorneys are inferred or invented.

Lead counsel — McAndrews, Held & Malloy, Ltd. (Chicago, IL)

All four appeared pro hac vice in this case (consistent with McAndrews being the out-of-district lead firm and Bartko serving as local counsel). McAndrews' attorneys signed Netlist's Third Amended Complaint (Dkt. 267, filed Oct. 7, 2014) and the final Joint Stipulation of Dismissal (Dkt. 381/382, dated May 15, 2020) — so this firm was on the case from start to finish.

Name Role Bar/Reg. No. Note
Thomas J. Wimbiscus Lead counsel; Patent Owner's designated Lead Counsel in the parallel IPRs Reg. No. 36,059 McAndrews shareholder; the IPR mandatory notices in IPR2014-01371/-1374/-1375 list him as lead counsel for Netlist as patent owner, defending the '833, '501, '185, '187 family. (email: twimbiscus@mcandrews-ip.com)
Gregory C. Schodde Backup/lead trial counsel Reg. No. 36,668 McAndrews shareholder; co-signed Netlist's pleadings throughout, including the 2020 dismissal.
Ronald H. Spuhler Counsel (signed final dismissal) Reg. No. 52,245 McAndrews; signed the May 15, 2020 Joint Stipulation of Dismissal as the first-listed "Attorney for Plaintiff."
Wayne H. Bradley Counsel Reg. No. 39,916 McAndrews; co-signed Netlist's 2014–2020 filings in this docket.

Local counsel — Bartko, Zankel, Bunzel & Miller (San Francisco, CA)

Appear on Netlist's N.D. Cal. pleadings (e.g., Dkt. 267 and the Feb. 7, 2014 stipulation of dismissal of SMART Modular), supplying the N.D. Cal. local-counsel presence for the Chicago-based team.

Name Role CA Bar No. Note
Benjamin K. Riley Local counsel (lead local) 112007 Listed first among Bartko attorneys on Netlist signature blocks; longtime Bay Area commercial/IP litigator.
Robert N. Bunzel Local counsel 99395 Bartko name partner; franchise/antitrust and IP litigation.
C. Griffith Towle Local counsel 146401 Appears on the Jan. 30, 2015 fee stipulation (Dkt. 313 in related 4:13-cv-05962) for Netlist.
W. Paul Schuck Local counsel 203717 On Netlist signature blocks in this docket.
Sony B. Barari Local counsel 243379 On Netlist signature blocks in this docket.
Simon R. Goodfellow Local counsel 246085 On Netlist signature blocks in this docket.
Sean R. McTigue Local counsel 286839 Appears on the 2015 Bartko signature block for Netlist.

Additional plaintiff-side firm — DLA Piper LLP (US) (San Diego, with Sacramento and East Palo Alto offices)

DLA Piper filed Netlist's affirmative case in the Central District (No. 8:13-cv-00996-DOC), whose ULLtraDIMM patent claims were severed and transferred into this N.D. Cal. action, and its attorneys continued to appear on Netlist's behalf in the N.D. Cal. consolidated litigation — e.g., the Jan. 7, 2016 Joint Status Report Regarding Inter Partes Review (Dkt. 335) lists Sean C. Cunningham alongside McAndrews as "Attorneys for Plaintiff Netlist, Inc."

Name Role CA Bar No. Note
Sean C. Cunningham Lead DLA Piper counsel for Netlist 174931 Signed Netlist's First Amended Complaint (C.D. Cal.) and later N.D. Cal. joint filings; the Aug. 22, 2013 pre-suit infringement notice letter to all four defendants is on DLA Piper letterhead over his name.
Stanley J. Panikowski, III Counsel 224232 Argued Netlist v. Diablo, Fed. Cir. No. 2016-1011, for Netlist; DLA Piper partner, San Diego.
Erin P. Gibson Counsel 229305 DLA Piper; appeared for Netlist in this litigation and in the related Smart Modular v. Netlist (E.D. Cal.) matter.
Ryan W. Cobb Counsel 277608 DLA Piper, San Diego; appeared for Netlist in this and the Netlist–SK hynix actions.
Rajiv Dharnidharka Counsel 234756 DLA Piper, Sacramento; appeared for Netlist in this and related matters.

Reported but not confirmed on a signature block I directly reviewed

  • Keller Rackauckas Umberg Zipser LLP (Irvine, CA) — Dean J. Zipser (CA Bar No. 94680). A Law360 report on this case (April 2014, archived via Bartko's website) states: "Netlist is represented by Bartko Zankel Bunzel & Miller PLC, DLA Piper, McAndrews Held & Malloy Ltd. and Keller Rackauckas Umberg Zipser LLP," identifying case number 4:13-cv-05889. Zipser also appears in the earlier C.D. Cal. phase (Declaration of Chuck Hong in the Nov. 26, 2013 OSC). I could not independently confirm a formal appearance by Zipser/Keller Rackauckas on the N.D. Cal. docket itself, so treat this as reported, not verified.

In-house counsel

No in-house Netlist attorney appears as counsel of record in the filings I reviewed for this case. Netlist's executive involvement in the litigation runs through CEO C.K. Hong (declarant in the related C.D. Cal. OSC proceeding) rather than a named in-house attorney, and I found no source identifying a Netlist general counsel of record here. I'm flagging this rather than guessing at a name.

Important disambiguation (avoid a common error)

  • McDermott Will & Emery LLP (Fabio E. Marino, L. Kieran Kieckhefer, Nitin Gambhir, Barrington Dyer, Teri H.P. Nguyen; Menlo Park) represented Diablo Technologies — a defendant, not Netlist. Some OCR-merged third-party dockets make it look like MWE signed for Netlist; it did not.
  • Jones Day (Gregory L. Lippetz, Kathleen D. Lynott, Steven J. Corr) and King & Spalding (Michael F. Heafey, Sanjiva K. Reddy) represented the SMART/SanDisk defendants. Steptoe & Johnson (William F. Abrams, Sanjeet K. Dutta, Douglas R. Peterson) represented Diablo.

Procedural posture relevant to the roster

  • The case was dismissed on May 19, 2020 (Order, Dkt. 382, granting the joint stipulation at Dkt. 381) — all claims dismissed without prejudice except Netlist's infringement claims on the DDR3-only ULLtraDIMM product, dismissed with prejudice, each side bearing its own fees and costs. The plaintiff's signature on that final stipulation is Ronald H. Spuhler / McAndrews (with Wimbiscus, Schodde, Bradley), so McAndrews was Netlist's counsel of record at the close of the case, and no plaintiff-side withdrawal order appears in the record.
  • The lead defense withdrawal in 2018 (Order, Dkt. 363) was McDermott stepping off for Diablo — a defense-side event, not a change in Netlist's representation.
  • Netlist's parallel PTAB work on the same patent family (including the '833 patent) was handled by the same McAndrews team (Wimbiscus as Lead Counsel, Schodde/Spuhler/Bradley as backup), which is useful context for assessing the patent-litigation depth of plaintiff's counsel.

Confidence: High for the McAndrews and Bartko rosters and for DLA Piper's participation in the consolidated N.D. Cal. matter (multiple signature blocks and a Law360 report). Medium for Keller Rackauckas/Zipser (secondary source only). No in-house plaintiff counsel identified. If you need exact pro hac vice order dates or the attorney-appearance entries from PACER, I'd recommend a direct PACER docket pull or a CourtListener party-attorney query, as the mirrored dockets I used are OCR-noisy.

Defendant representatives

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

I'll research the defense-side counsel of record in this case. Let me run several targeted searches.

Good initial data. Let me dig into the docket and specific firms.

Let me pin down SMART Modular's counsel and verify the Steptoe/McDermott transition for Diablo.

Note: my tool budget for further searches was exhausted mid-verification, so a few points below (flagged explicitly) remain unconfirmed from a primary filing.

Defense Counsel of Record — Netlist, Inc. v. SMART Storage Systems, Inc., No. 4:13-cv-05889-YGR (N.D. Cal.)

The defense side was split into two principal representation camps for most of the case's life: Jones Day for the SMART/SanDisk side and McDermott Will & Emery for Diablo (which had earlier been represented by Steptoe & Johnson). All names below come from signature blocks on filings bearing the 4:13-cv-05889-YGR caption, from the CourtListener docket (docket 4180539), or from court orders.

1. SMART Storage Systems, Inc. (and, after Oct. 2014, SanDisk Corporation) — Jones Day

The same three Jones Day attorneys sign every defense-side SMART/SanDisk filing in the 05889 docket through at least January 2016, both as "Attorneys for Defendant SMART STORAGE SYSTEMS, INC." and later as "Attorneys for Defendant SANDISK, INC." (Joint Status Report re IPR, Dkt. 335 (Jan. 7, 2016); Joint Statement, Dkt. 270; Order, Dkt. 278 (Oct. 31, 2014)).

Attorney Role Firm / Office Notes
Gregory L. Lippetz (SBN 154228) Lead counsel for SMART Storage Systems (primary signatory on defense joint filings) Jones Day, Silicon Valley office, 1755 Embarcadero Rd., Palo Alto, CA Longtime Jones Day patent litigator; led the SMART Storage defense in the patent case and appears in the related stay/IPR briefing (Dkts. 270, 335)
Steven J. Corr (SBN 216243) Co-lead / signatory Jones Day, 555 South Flower St., Los Angeles, CA Signed as "Attorneys for Defendant SANDISK, INC." on the Oct. 31, 2014 order/stipulation (Dkt. 278); also filed a supplemental declaration in the 2015 stay proceedings (Dkt. 309)
Kathleen D. Lynott (SBN 268387) Associate / supporting counsel Jones Day, Palo Alto, CA Appears on all signature blocks alongside Lippetz and Corr

Corroboration that Jones Day was the SMART/SanDisk patent-case firm also appears in the joint defense claim-construction filings, where the Jones Day block is captioned "Attorneys for Defendant SMART STORAGE SYSTEMS, INC. AND SANDISK" (Corrected Joint Claim Construction and Prehearing Statement, Aug. 19, 2014).

Sourced only indirectly: I did not locate a Jones Day in-house or separate local counsel entry for SanDisk in this docket; SanDisk's IPR-side work appears to have been handled in part through other firms, but I could not verify SanDisk IPR counsel from a primary source within my search budget.

2. Diablo Technologies, Inc.

(a) Later phase (July 2014 – Sept. 2018): McDermott Will & Emery LLP — the firm that defended Diablo at the end

  • Fabio E. Marino (SBN 183825) — lead counsel for Diablo; partner, McDermott Will & Emery LLP, 275 Middlefield Road, Suite 100, Menlo Park, CA 94025. Notice of appearance filed July 23, 2014 (CourtListener docket, entries after July 2014). He is repeatedly identified in press coverage as "Diablo's lead counsel and a Menlo Park-based partner at McDermott Will & Emery" (Daily Journal, Jan. 14, 2015) and as the lawyer who announced at the Dec. 1, 2017 compliance hearing that Diablo had suspended operations (The Register, Dec. 14, 2017). He is also the reason the patent and trade-secret strands of this dispute are intertwined — he was Diablo's lead in both 4:13-cv-05889 and 4:13-cv-05962, and by 2016 his signature block covers "Defendants Diablo Technologies, Inc." Opposing counsel described him as an IP trial lawyer with a computer-science background (Daily Journal profile).
  • L. Kieran Kieckhefer (SBN 251978) — McDermott, Menlo Park; notice of appearance July 23, 2014; appears in the docket signature blocks (Dkt. 310).
  • Nitin Gambhir (SBN 259906) — McDermott, Menlo Park; notice of appearance July 23, 2014.
  • Barrington E. Dyer (SBN 264762) — McDermott, Menlo Park; notice of appearance July 23, 2014.
  • Teri H.P. Nguyen (SBN 267498) — McDermott, Menlo Park; appears on the 2015 McDermott signature block (Dkt. 310; also listed with the McDermott team in the related 4:13-cv-05962 filings).
  • Judith S.H. Hom — McDermott; co-signed the Sept. 2014 joint statement as counsel for Diablo (Dkt. 270).
  • Daniel E. Alberti — McDermott; filed the September 2018 supplemental declaration supporting the firm's motion to withdraw (Dkt. 362, Sept. 5, 2018).

End of the McDermott representation: the court granted McDermott Will & Emery's motion to withdraw as counsel for Diablo effective September 25, 2018, and directed that the order be served on Diablo's bankruptcy trustee, Ernst & Young (Order, Dkt. 363, signed Sept. 19, 2018). This is the last defense-counsel event for Diablo; Diablo was dismissed without prejudice on Nov. 9, 2018 (Dkt. 368).

(b) Early phase (2013 – mid-2014): Steptoe & Johnson LLP

Before McDermott's July 2014 appearances, Diablo's district-court filings were signed by Steptoe & Johnson:

  • William F. Abrams (SBN 88805) — Steptoe & Johnson LLP, 1001 Page Mill Road, Bldg. 4, Suite 150, Palo Alto, CA.
  • Sanjeet K. Dutta (SBN 203463; USPTO Reg. No. 46,145) — Steptoe, Palo Alto. He was also lead counsel on Diablo's PTAB petitions on the same Netlist patents, e.g., IPR2014-00883 amended mandatory notice.
  • Douglas R. Peterson (SBN 215949; Reg. No. 53,458) — Steptoe, 2121 Avenue of the Stars, Suite 2800, Los Angeles, CA; backup counsel on the Diablo IPRs.
  • Ellie Ong (Reg. No. 72,048) — Steptoe, Palo Alto; backup IPR counsel.

These four are captioned "Attorneys for Defendant DIABLO TECHNOLOGIES, INC." on a Diablo preliminary claim-construction filing bearing the "Case No. 13-CV-05889 YGR / Jury Trial Demanded" caption, which also carries the Jones Day block for SMART Storage (reproduced as Ex. 2004 in IPR2014-00971). Steptoe also represented Diablo in the parallel PTAB proceedings on the '501, '536, and '187 patents.

Caveat / contradiction flag: the record shows two different Diablo defense teams (Steptoe, then McDermott, with notices of appearance in July 2014); I could not locate a substitution/withdrawal order for Steptoe in the 05889 docket within my search budget, so the precise hand-off date and whether Steptoe formally withdrew or merely stopped appearing is unverified. Treat the Steptoe/McDermott split as a documented chronology, not a documented substitution.

3. SMART Modular Technologies, Inc. — Orrick, Herrington & Sutcliffe LLP (strongly indicated, but not verified for the 05889 docket)

SMART Modular was dismissed from 05889 without prejudice on Feb. 12, 2014 (Dkt. 142), so its counsel's appearance window in this case was short.

  • Michael F. Heafey (SBN 153499) — Orrick, Herrington & Sutcliffe LLP, 1000 Marsh Road, Menlo Park, CA. Identified by Law360 as counsel for SMART Modular Technologies in California district-court patent litigation against Netlist (Law360 attorney page); also the Orrick signatory for SMART Modular in Smart Modular Techs., Inc. v. Netlist, Inc., No. 2:12-cv-02319 (E.D. Cal.) (Dkt. 150).
  • Other Orrick attorneys on that same SMART Modular team: Norman C. Hile (SBN 57299), Stacy E. Don (SBN 226737), Monte Cooper (SBN 196746), Travis M. Jensen (SBN 259925) — Orrick Sacramento and Menlo Park offices.
  • For the PTAB side, SMART Modular was represented by King & Spalding LLP — a King & Spalding partner (USPTO Reg. No. 38,178) declares himself "counsel to Petitioner SMART Modular Technologies, Inc." in the IPR2014-01375 papers (Ex. 1010). That declaration transcript does not show the declarant's name in the retrieved snippet, so I am not naming the individual King & Spalding partner, to avoid attribution error.

Unverified: whether Orrick filed the appearance in 4:13-cv-05889 specifically, and the identity of counsel for SMART Worldwide Holdings, Inc. (dismissed ~Apr. 15, 2014 per Netlist's SEC quarterly report). The Orrick–SMART Modular link is documented for the related 2012–13 litigation and the 4:13-cv-03916 declaratory-judgment action, not directly for 05889.

4. In-house counsel

Not identified. No in-house counsel name for SMART Storage, SanDisk, SMART Modular, or Diablo appears in any filing retrieved. Notably, the withdrawal record in 2018 shows McDermott serving the withdrawal order on Diablo's bankruptcy trustee (Ernst & Young) rather than on in-house counsel — consistent with Diablo having ceased operations and having no active in-house legal function by then (Dkt. 363; The Register).

Summary table

Defendant Firm Key attorneys Role
SMART Storage Systems / SanDisk Jones Day (Palo Alto & LA) Gregory L. Lippetz (lead), Steven J. Corr, Kathleen D. Lynott Defense lead throughout, including 2015 stay/IPR briefing
Diablo Technologies Steptoe & Johnson LLP (Palo Alto & LA) William F. Abrams, Sanjeet K. Dutta, Douglas R. Peterson, Ellie Ong Early district-court defense and PTAB lead counsel
Diablo Technologies McDermott Will & Emery LLP (Menlo Park) Fabio E. Marino (lead), L. Kieran Kieckhefer, Nitin Gambhir, Barrington E. Dyer, Teri H.P. Nguyen, Judith S.H. Hom, Daniel E. Alberti July 2014 – withdrawal effective Sept. 25, 2018
SMART Modular Technologies Orrick, Herrington & Sutcliffe LLP (Menlo Park/Sacramento) — indicated, not confirmed for 05889 Michael F. Heafey, Norman C. Hile, Stacy E. Don, Monte Cooper, Travis M. Jensen Counsel in related SMART–Netlist litigation; 05889 appearance unverified
SMART Modular Technologies (PTAB) King & Spalding LLP Name not verified Petitioner counsel in IPR2014-01370/01374/01375
SMART Worldwide Holdings Unknown — No counsel identified

Methodological note: all attorney names above are drawn from signed filings bearing the 4:13-cv-05889-YGR caption, from CourtListener docket entries, or from court orders — none are inferred. Where a name is tied to a related case rather than 05889, I have said so. Additional searches to confirm the SMART Modular 05889 appearance, the Steptoe→McDermott substitution, and SMART Worldwide's counsel were cut off by my search-step limit.