SanDisk Corporation v. Netlist, Inc.

I'll research this case and the surrounding litigation to build an accurate overview.

Good foundation. Let me dig deeper on the district court case, the patent itself, and the PTAB outcome.

Let me verify the patent title, the district court docket, and the outcome of the parallel litigation.

Case Overview — SanDisk Corp. v. Netlist, Inc., IPR2014‑00994 (PTAB)

A framing correction up front: IPR2014‑00994 is not a district‑court infringement case. It is an inter partes review petition filed by SanDisk Corporation against Netlist, Inc. at the Patent Trial and Appeal Board, and the metadata's "court/division/judge" fields don't map onto it — the decision‑makers were a three‑APJ panel (Linda M. Gaudette, Bryan F. Moore — opinion author — and Georgianna W. Braden). The real courtroom fight it was tethered to was Netlist, Inc. v. Smart Storage Systems/SanDisk et al., N.D. Cal. No. 4:13‑cv‑05889‑YGR, before Judge Yvonne Gonzalez Rogers, plus the companion trade‑secret case Netlist v. Diablo Technologies, 4:13‑cv‑05962‑YGR. So the "parties" here are inverted from the West Coast litigation: Netlist was the infringement plaintiff there and is the Patent Owner here; SanDisk was the accused infringer there and is the Petitioner here.

The parties. Netlist, Inc. (NASDAQ: NLST; Irvine, CA; founded 2000) is a publicly traded memory‑module company — not a university, and not a conventional NPE shell. It built and sold real products (HyperCloud LRDIMMs, NVvault NVDIMMs, HyperVault, EXPRESSVAULT) and holds a large high‑performance‑memory portfolio; Stanford's NPE Litigation Database codes the litigation involving the '833 patent as involving product‑company defendants, and Netlist's own operating history is well documented. By 2014, however, its module business had shrunk drastically and it was monetizing through litigation and licensing, so press and later coverage often describe it in patent‑assertion terms even though it is a genuine operating company. SanDisk Corporation (since 2016 part of Western Digital; now SanDisk LLC) was at the time the largest flash‑memory/SSD vendor, and its co‑defendant Diablo Technologies supplied the memory‑channel‑storage controller chips. Two earlier Netlist campaigns against Smart Modular/SMART Storage Systems (which SanDisk acquired) are also part of the backdrop.

The accused technology and the patent. The accused product was SanDisk's ULLtraDIMM, a memory‑channel‑storage DIMM built with Diablo's "Rush"/"Bolt" MCS controller chips and pushed into servers from IBM (eXFlash), Lenovo, Huawei and Supermicro. Netlist asserted this accusedly infringing, and the '833 patent is U.S. Pat. No. 8,301,833, titled "Non‑Volatile Memory Module" (App. No. 12/240,916, filed Sept. 29, 2008; issued Oct. 30, 2012; priority to provisional 60/941,586 of June 1, 2007). In one line: it claims a method/system for running a hybrid DRAM‑plus‑flash memory module in which the DRAM runs at a fast first clock in host‑communication mode and at a slower third clock in a second (backup/restore) mode while the flash runs at a second clock — i.e., clock‑ and buffer‑management for non‑volatile DIMMs. It is the parent of Netlist's "Flash‑DRAM Hybrid Memory Module" family ('831, '684, '186, 9,928,186, 11,016,918, 11,232,054, etc.), and Netlist's own '187 patent (IPR2014‑00982) is a division of it. Claims 1–30 were challenged, with independent method claim 1 and system claim 15 as the crux.

The IPR and why it matters. SanDisk filed the petition on June 20, 2014 (Paper 1); Netlist's 60‑page preliminary response came in on October 2, 2014 (Paper 7) — the same day Judge Gonzalez Rogers denied the defendants' motion to stay the N.D. Cal. case, remarking that merely filing an IPR "says little about whether review will be granted." On December 16, 2014, the Board denied institution in full (Paper 8, 16 pp.), finding no reasonable likelihood of prevailing on the anticipation and obviousness grounds built on Fukuzo and Panabaker (with Bonella/Mills in the parallel Smart Modular petition), largely because the petitioner never clearly identified the "volatile memory subsystem" or showed it operated at the required third clock frequency. Because institution denial is unappealable under § 315(d), the case ended there and no claims were cancelled. Context makes this notable: SanDisk and Smart Modular collectively filed roughly fifteen IPRs against seven Netlist patents, and the PTAB denied institution on the '185, '833 and '187 patents outright — a rare clean sweep, which Netlist's CEO publicly touted and which, combined with the § 315(b) one‑year bar running from Netlist's August 23, 2013 complaint, foreclosed a SanDisk refiling on the '833. The '833 survived and has since been re‑attacked by other players (SK hynix IPR2017‑00649; Micron IPR2022‑00418/IPR2023‑00405; Samsung‑related PGR2026‑00001, which cites this very decision as an exhibit), and it remains part of Netlist's broader assertion campaign against Samsung, Micron and others. Meanwhile the underlying district‑court story went badly for Netlist: it won a January 6, 2015 preliminary injunction against Diablo's chips and the ULLtraDIMM, but the March 25, 2015 jury verdict rejected its trade‑secret, contract and inventorship claims (awarding $2 on Lanham Act claims), the injunction was lifted April 24, 2015, and post‑trial relief was denied that September — a useful reminder that an IPR win for the patent owner did not translate into litigation success.

Sourcing notes / open items. The decision text, ground references and docket papers above are drawn from the full text of PTAB Paper 8 and the petition as reproduced in later filings and exhibit collections (e.g., Micron IPR2023‑00405 Ex. 1015; Samsung PGR2026‑00001 Ex. 1015; the Justia/Google Patents '833 and '918 family listings); party/product/timeline details come from Netlist's own SEC filings and contemporaneous trade press (StorageNewsletter, The Register, Law360, StorageReview). Two details I could not fully pin down and would flag rather than assert: the exact N.D. Cal. case number and disposition docket for SanDisk's own August 23, 2013 declaratory‑judgment complaint over the '833 (the petition, Exs. 1022/1025, says only that it was dismissed without prejudice on February 12, 2014), and the precise dates/amounts of the later Netlist–Samsung and Netlist–Micron verdicts, which I did not re‑verify in this session and which concern a different (later) set of Netlist patents.

I'll research this case thoroughly. Note the metadata frames this as an IPR, so I'll investigate both the PTAB proceeding itself and the underlying district court litigation between these parties over the '833 patent.

I have the IPR core details. Now let me dig into the underlying district court litigation in N.D. Cal. that asserted the '833 patent, plus the related PTAB proceedings.

Scope note

The metadata frames this as IPR2014-00994 (PTAB), which is itself the parallel administrative proceeding. The "infringement litigation" it belonged to was Netlist, Inc. v. Smart Modular Technologies, Inc., et al., No. 4:13-cv-05889-YGR (N.D. Cal.) (originally captioned Netlist v. Smart Storage Systems), in which Netlist asserted the '833 patent against SanDisk, Diablo Technologies, Smart Modular/Smart Storage Systems, and related entities. Below I trace that litigation chronologically, with the IPR history interleaved. Where I could not verify a fact from retrieved sources, I say so explicitly.

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1. Filing & initial pleadings

Counterclaims: The docket evidence I retrieved shows the defendants litigated the patent case on the merits (invalidity/non-infringement defenses) and pressed a motion to stay rather than a Rule 12 motion. I did not retrieve a specific document identifying the defendants' answer/counterclaim counts, so I am not asserting a particular counterclaim set beyond that.

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2. Consolidation and the first stay fight (2014)

• 2014-03-04 — Netlist moves to consolidate/coordinate the related cases under Rule 42(a)(2) (filed in 4:13-cv-05962).
• 2014-04-08 — Order (Judge Yvonne Gonzalez Rogers): 4:13-cv-05889 and 4:13-cv-03901 consolidated for all purposes, with -05889 as the lead case; discovery coordinated with the trade-secret case (4:13-cv-05962) but that case is not consolidated (denied without prejudice).
• 2014-06-24 — Smart Storage's motion to stay pending IPR (ECF 218/219). Diablo later joined.
• 2014-08-21 — Court denies the stay without prejudice (Netlist, Inc. v. Smart Storage Systems, Inc., No. 13-cv-5889-YGR (N.D. Cal. Aug. 21, 2014)), applying the three-factor test (stage of litigation / simplification / prejudice) and noting the PTO had not yet decided whether to institute. Critically, the court also amended the schedule to eliminate "early claim construction" and to hold claim construction "in conjunction with any summary judgment motions or, alternatively, at the time of trial."

Markman: The upshot is that no Markman/claim construction order was ever issued in this case. Claim construction was deferred, and then the case was stayed before it occurred.

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3. The PTAB wave and the '833 IPR

2014-06-20 — SanDisk files IPR2014-00994, challenging claims 1–30 of U.S. Patent No. 8,301,833 B1 ("Flash-DRAM hybrid memory module" family; the '187 patent is a division of the '833). Grounds included anticipation and obviousness over Fukuzo and Panabaker.

• The '833 patent claims a hybrid memory system with a three-clock scheme: a first (high) clock between host and volatile memory; a second (slower) clock between volatile and non-volatile memory; and a third clock frequency for the volatile subsystem in backup mode that is less than the first (claim 1).
• 2014-10-02 — Netlist files its Patent Owner Preliminary Response (Paper 7, 60 pp.).
• 2014-12-16 — PTAB Denies Institution (Paper 8, 16 pp.; APJs Gaudette, Moore (author), Braden). The Board found no reasonable likelihood of prevailing on any challenged claim, reasoning that Petitioner never adequately identified the "volatile memory subsystem" in the prior art or showed that Fukuzo or Panabaker discloses a volatile memory subsystem operating at the third clock frequency — and that the obviousness grounds simply assumed that missing limitation. The petition's mapping of the controller/SPD/buffer was found "inconsistent with the specification," which discloses a controller separate from the memory subsystems.
• Consequence: No claims were cancelled. Under § 315(e)(1), SanDisk (and Diablo) were barred from filing further IPRs on the '833, '185, and '187 patents.

The broader June/August 2014 IPR wave (context for why the case got stayed):

Netlist's characterization (press release, 2014-12-31 and 2015-03-18): of the SanDisk petitions, three denied in their entirety and a fourth denied as to some claims — with the three surviving patents being the '185, '833, and '187 (the NVDIMM clocking/buffering patents); the Smart Modular petitions were denied in their entirety as to the same three patents and instituted only as to the '434 and '501.

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4. Renewed stay motion and the freeze of the litigation

• 2015-01-20 — SanDisk renews the motion to stay, as the court had invited.
• 2015-01-23 / 2015-01-27 — Netlist obtains an extension and the parties stipulate to suspend briefing until the PTAB rules on the remaining (Smart Modular) petitions; the court grants the stipulation.
• 2015-03-13/2015-03-18 — After the last PTAB decisions, SanDisk files a supplemental statement renewing the stay request (ECF 308), arguing that four of seven patents-in-suit are in review, that no depositions had been taken, and that expert discovery and claim construction had not begun.
• 2015-04-09 — The court grants the stay pending resolution of the IPRs (per Netlist's Q3 2015 SEC filing). The case thereafter sat dormant for years.
• 2016-06-16 — The parties' Joint Status Report in IPR2015-01021 (the '536 IPR) lists the N.D. Cal. case as "Stayed," with "No Current Discussions" on settlement — and notes the case had been stayed since 2015.
• I retrieved a 2018-09-05 filing in the same docket (supplemental declaration of Daniel E. Alberti in support of a motion to withdraw as counsel), indicating the case was still open and stayed into late 2018. I could not verify from retrieved sources a later dismissal, settlement, or judgment in 4:13-cv-05889, and the recently filed PTAB papers I reviewed (2023–2026) do not describe a SanDisk–Netlist final disposition. Treat the ultimate disposition of the stay as unverified.

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5. The companion trade-secret case — the only merits trial in this dispute

This is where the parties actually went to verdict, and it drove settlement leverage:

• 2014-10-06 — Netlist moves for a preliminary injunction.
• 2015-01-12 — Judge Gonzalez Rogers grants the PI, barring Diablo from making/selling the "Rush" and "Bolt" controller chipsets used by SanDisk in the ULLtraDIMM, and blocking marketing/distribution of the ULLtraDIMM (also affecting IBM eXFlash modules). The court found Netlist likely to show Diablo misused Netlist technology supplied under the Development and Supply Agreement, and that Netlist's NVvault/HyperVault efforts were harmed.
• 2015-01-13 — Court denies Diablo's request to stay the injunction pending appeal and advances trial to 2015-03-09.
• 2015-03-26 — The Federal Circuit stays the injunction pending appeal.
• 2015-03-25 — Jury verdict: Diablo wins on breach of contract, trade-secret misappropriation, and correction of inventorship; Netlist wins only nominal $1 + $1 on Lanham Act trademark/false-advertising claims (total $2). The jury found none of the eight alleged trade secrets qualified as secret.
• 2015-04-24 — Judgment (Dkt. 459 in 4:13-cv-05962): Diablo to pay $2.00; Netlist takes nothing on trade secrets, breach, UCL, and inventorship. Same date, the court dissolves the preliminary injunction and, after hearing, rules for Diablo on the § 17200 UCL claim (findings of fact/conclusions of law).
• 2015-09-02 — Court denies Netlist's motion for new trial and rejects Diablo's challenge to the Lanham Act findings, leaving the verdict intact.
• Netlist noticed an appeal to the Federal Circuit (No. 16-1011). A court filing summarizing the litigation states the appeal was dismissed by Netlist on 2016-01-28; I could not independently confirm this on the Federal Circuit docket, so treat the appellate disposition as partially sourced. Diablo also publicly announced the litigation was "resolved" in April 2015.

Strategic significance: Netlist's contractual/trade-secret theory collapsed, but its patent case (the one containing the '833 patent) survived the IPR wave intact — a rare 3-of-5 denial rate. The two tracks cut in opposite directions, which is consistent with the patent case being left stayed rather than pressed.

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6. Later assertions of the '833 patent (post-SanDisk)

The '833 patent re-appeared in Netlist's later campaigns, which is relevant to its current posture:

• 2017 — SK hynix petitions for IPR of the '833 patent, IPR2017-00649; Netlist files its Patent Owner Preliminary Response on 2017-05-01. (Outcome not verified in retrieved materials.)
• c. 2022–2023 — Netlist asserts the '833 patent against Micron in the Western District of Texas. Per Netlist's SEC disclosures, Micron filed an Idaho state-court suit on 2023-12-11 (Case No. CV01-23-19920) alleging Netlist violated Idaho's bad-faith patent-assertion statute (Idaho Code § 48-1703) by asserting the '833 patent in WDTX. Netlist removed to the District of Idaho; the district court remanded to state court on 2024-08-16; Netlist appealed the remand to the Federal Circuit (No. 2024-2281) on 2024-08-20 and moved to stay the remand; the Federal Circuit denied Micron's motion to dismiss/transfer the appeal on 2024-12-19, leaving the appeal and stay motion pending; the Idaho trial was set for 2025-10-27.
• 2025-11-07 — Samsung, in PGR2026-00001, filed the IPR2014-00994 institution denial as Exhibit 1015 — i.e., the SanDisk-era '833 denial is still being cited in 2025–2026 as evidence of the strength/weakness of Netlist's hybrid-memory claims.

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7. Bottom line

• IPR2014-00994: Filed 2014-06-20; PO Response 2014-10-02; institution denied 2014-12-16 (Paper 8); terminated 2014-12-16; no claims cancelled. The denial turned on the petitioner's failure to identify the "volatile memory subsystem" and the third clock frequency in Fukuzo/Panabaker.
• District court (the infringement suit): Filed 2013-08-23 (N.D. Cal. 4:13-cv-05889-YGR, consolidated with -03901 on 2014-04-08); no Markman order (deferred by the 2014-08-21 scheduling order); stay denied without prejudice 2014-08-21; stay granted 2015-04-09 and still in place per the 2016-06-16 joint status report, with the docket still active in 2018. No trial, no verdict, no damages, no injunction in the patent case.
• The merits verdict went the other way: in the coordinated trade-secret case, Diablo/SanDisk won on 2015-03-25 (judgment 2015-04-24), and Netlist's post-trial motion was denied 2015-09-02. The '833 patent itself was never adjudicated on the merits in district court.

I'll research this case across multiple angles, then synthesize what the press actually reported.

The first pass mostly surfaced primary PTAB/docket documents. Let me search the news and trade-press angles directly.

Press coverage of SanDisk Corp. v. Netlist, Inc., IPR2014-00994

There is essentially no mainstream or general legal-trade coverage of IPR2014-00994 as a standalone proceeding. My searches did not turn up any Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF Deeplinks, or JD Supra article reporting on the '833 petition itself. Instead, the proceeding appears in two places: specialist memory/storage trade press covering the broader Netlist-versus-SanDisk/Diablo "ULLtraDIMM" dispute, and a docket-style roundup. The National Law Review's "PTO Litigation Center Report – June 23, 2014" is a bare listing — it records Trial Number IPR2014-00994, filing date 6/20/2014, Patent No. 8,301,833 ("Non-Volatile Memory Module"), petitioner SanDisk Corporation — with no analysis. In other words, for this particular IPR, the press record is a filing notice plus aggregated coverage of the surrounding campaign, not dedicated reporting.

The most directly on-point trade coverage came after the December 16, 2014 denial. StorageNewsletter reported on January 1, 2015 that the PTAB "denied petitions requesting Inter Partes Review (IPR) of Netlist patents asserted against the ULLtraDIMM," filed by "SanDisk Corp. who partnered with Diablo Technologies," and it specifically names the '833 patent as one whose petition was denied — describing U.S. Pat. Nos. 8,301,833 and 8,516,187 as covering "clocking and buffering techniques for moving data between the volatile and non-volatile subsystems on a hybrid memory module." (The piece is a Netlist press release edited by the outlet.) StorageReview covered the same wave in an undated article headlined "4 Out Of 5 Petitions To Review Netlist Patents Denied," reporting that three petitions were denied in their entirety and a fourth denied as to some challenged claims, and quoting the PTAB's finding that SanDisk "failed to establish a reasonable likelihood of showing the unpatentability of at least one claim from the challenged patents." StorageReview framed it as Netlist "win[ning] a victory today" but cautioned the ruling "won't end the legal battle," while noting the dispute centers on the ULLtraDIMM and that each side accuses the other of using technology that is fundamental to the product's architecture.

Follow-on coverage treated the '833 denial as part of a pattern rather than a discrete event. StorageNewsletter reported on March 18, 2015 that Netlist had "prevailed against a second wave of attacks" after the PTAB denied all remaining SanDisk and Smart Modular petitions (the last decisions on March 13, 2015), again listing the '833 alongside the '187 and '185 patents and noting the three are "part of a patent infringement action against SanDisk and Diablo" pending in the Northern District of California. StorageNewsletter later reported on December 17, 2015 that Netlist had prevailed in IPRs of two other patents, the '434 and '501, and stated that "a total of five Netlist patents asserted against ULLtraDIMM have survived the rigors of IPR proceedings," with the '833 and '187 described as relating to "clocking and buffering techniques that are critical to the design of Non-Volatile DIMMs (NVDIMMs)."

Several elements of the reporting go beyond the court/PTAB record and should be read as party advocacy. The January 2015 StorageNewsletter piece attributes to Netlist's then-VP of IP and licensing, Noel Whitley, the claim that SanDisk had argued in June 2014 filings that Netlist had "just over a 3% chance" of this outcome, and quotes CEO C.K. Hong calling the ruling "a clear validation of our IP"; the March 2015 piece quotes Hong saying the PTAB's rejection "not once, but twice" was "a rare outcome." Those are executive statements, not holdings. The same outlet also reported that "SanDisk and Diablo are now barred from filing additional IPRs on the 4 Netlist patents" — a characterization of the statutory estoppel consequences drawn by the patent owner, not a court finding. Wider business context appears in The Register, which reported on December 16, 2013 that SanDisk had "bought SMART Storage in August for $307m," and in Electronics360 (January 13, 2015), which reported a preliminary injunction against Diablo's chipset used in SanDisk's ULLtraDIMM and suggested the injunction "was likely to bring SanDisk to the table for negotiations on an out-of-court settlement." The Daily Journal, as republished by Bartko, similarly covered the sales ban and quoted Netlist's lead counsel, while noting the related patent case against SanDisk was "joined for discovery." None of these outlets reported damages figures or a settlement tied to IPR2014-00994 specifically — consistent with the case ending in a denial of institution with no claims cancelled. I found no article offering independent analyst commentary on the '833 IPR itself; the "significance" framing (a rare win against a large competitor's IPR campaign) comes almost entirely from Netlist's own statements as relayed by the trade press.

Sources

• On August 23, 2013, Netlist filed a complaint in the United States District Court for the Central District of California allegin...
• UNITED STATES PATENT AND TRADEMARK OFFICE

• 12

  Petition for Inter Partes Review of U

• Exhibit #	Description
  1001	U

• Flash-DRAM hybrid memory module - Charles C
• Method and apparatus for presearching stored data - Petition for Inter Partes Review of U
• Dispositivo de memoria hibrida con interfase individual. - US8301833B1 (en) | 2007-06-01 | 2012-10-30 | Netlist, Inc
• PTO Litigation Center Report – June 23, 2014 - Published on The National Law Review https://natlawreview
• Netlist Said to Have Prevailed Vs. SanDisk in Inter Partes Review - Netlist Said to Have Prevailed Vs. SanDisk in Inter Partes Review
• Second Amended Answer and Counterclaims to Plaintiff's Complaint for Declaratory Judgment, Diablo Technologies, Inc
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Exhibit, Transcript of Official Electronic Sound Recording Proceeding, Netlist v

I'll research the counsel of record for the petitioner (SanDisk) in this IPR. Let me start with several searches.

I found the key document — the PTAB denial decision listing counsel. Let me verify the specific counsel for IPR2014-00994 and gather firm/experience details.

Bottom line

IPR2014-00994 is a PTAB inter partes review, not a district court infringement suit — so the "plaintiff‑side" party is the petitioner, SanDisk Corporation (Netlist, the patent owner, is the defendant‑side party). The authoritative list of SanDisk's counsel of record is the Board's caption in its December 16, 2014 Decision Denying Institution (SanDisk Corp. v. Netlist, Inc., IPR2014‑00994, Paper 8 (PTAB Dec. 16, 2014) (Moore, APJ)), which names three Jones Day attorneys for the Petitioner. There is no local counsel in a PTAB proceeding (no local‑counsel rule applies).

SanDisk Corporation — petitioner's counsel of record (Jones Day)

Sources for the caption: the denial decision appears as an exhibit in later proceedings, e.g. PGR2026‑00001, Ex. 1015, and PTACTS/Micron v. Netlist IPR2023‑00406, Ex. 1015 ("EX1015 – Denying Institution PTAB IPR2014‑00994‑8 ('833)"), listing PETITIONER counsel as Cochran, Sauer and Nightingale (dcochran@ / jmsauer@ / jrnightingale@jonesday.com).

Also likely on the power of attorney but not named in the '994 caption: Matthew W. Johnson (Jones Day, Reg. No. 59,108). He appears on SanDisk's power of attorney in the companion IPR2014‑00971 (same SanDisk '501 family filings, June 2014) together with Cochran, Sauer and Nightingale, but I could not confirm his individual appearance in the '994 docket itself.

In‑house: SanDisk's power of attorney in the parallel IPRs was signed by its "Senior Director, Litigation" (name not shown in the retrieved document; telephone 408‑801‑1000). No in‑house attorney is named as counsel of record in the '994 caption.

Important caveats

• Roles are not formally designated in the sources I retrieved. The Dec. 16, 2014 caption simply lists the three Jones Day attorneys; it does not say which is "lead" vs. "back‑up." I've noted Cochran as the senior/lead figure based on his firm role and the ordering, but treat that as an inference, not a docketed fact. I could not open the '994 petition's own "Lead and Back‑up Counsel" section (37 C.F.R. § 42.8(b)(3)) directly.
• Do not misattribute King & Spalding. A separate 2014 petition on the '833 patent (filed ~Sept. 22, 2014, and referencing SanDisk's '187 petition) lists Michael F. Heafey and Sanjiva K. Reddy of King & Spalding as petitioner's counsel. That filing is distinct from IPR2014‑00994 (which was filed June 20, 2014 by Jones Day) and appears tied to the parallel Smart Modular Technologies '833 petition (IPR2014‑01370). If you were to search generically for "SanDisk '833 IPR counsel," you could easily conflate the two.
• Patent‑owner side (for completeness): Netlist's counsel in the '994 caption were Thomas J. Wimbiscus, Gregory C. Schodde, Scott P. McBride, Ronald H. Spuhler and Wayne Bradley, all of McAndrews, Held & Malloy (Chicago).
• Procedural outcome: The Board denied institution on Dec. 16, 2014; SanDisk filed a request for rehearing Jan. 15, 2015, which was denied May 21, 2015 — so the Jones Day team remained SanDisk's counsel through that rehearing phase. No claims were cancelled.
• Parallel district court representation (same client): In the underlying N.D. Cal. case Netlist, Inc. v. Smart Storage Systems, Inc., Diablo Technologies, Inc., and SanDisk Corp., No. 4:13‑cv‑05889‑YGR, SanDisk was also represented by Jones Day — e.g., Steven J. Corr (L.A. office), Gregory L. Lippetz, Tharan Gregory Lanier and Kathleen D. Lynott (Palo Alto office) signed SanDisk's stay briefing. This corroborates Jones Day as SanDisk's lead outside patent counsel across the IPR/district‑court dispute.

If you need the exact lead/back‑up designation and service addresses as filed, the definitive document is the '994 petition's Power of Attorney and § 42.8(b)(3) counsel section (Paper 1 / POA exhibit) in PTACTS; I was unable to open that specific PDF and am flagging it rather than guessing.

I'll research the counsel of record for Netlist, Inc. in IPR2014-00994 and related proceedings.

Let me verify the specific counsel filings in IPR2014-00994 and gather firm/experience details.

Let me check the actual IPR2014-00994 docket sheet and confirm the Netlist mandatory notice filings.

Counsel of Record — Netlist, Inc. (Patent Owner / "Defendant") in IPR2014-00994

Framing caveat first: IPR2014-00994 is a PTAB inter partes review, not a district-court infringement suit. The case metadata designates Netlist as the "defendant"; in the IPR itself, Netlist is the Patent Owner/respondent, defending U.S. Patent No. 8,301,833 against SanDisk's petition. There is therefore no "local counsel" role in this forum — PTAB practice under 37 C.F.R. § 42.8(b)(3) uses only lead counsel and back-up counsel.

All of Netlist's counsel of record came from a single firm: McAndrews, Held & Malloy, Ltd., 500 West Madison Street, 34th Floor, Chicago, IL 60661 (main: 312-775-8000; fax: 312-775-8100); service consent e-mail Netlist-IPR@mcandrews-ip.com. The names below are drawn from the caption/attorney listing of the Board's Decision Denying Institution, Paper 8 (Dec. 16, 2014) — the operative record in this proceeding.

Sources: Denying Institution decision listing (reproduced as Ex. 1015 in PGR2026-00001) — names Wimbiscus, Schodde, McBride, Spuhler, and Bradley as "PATENT OWNER" counsel (dcochran/jmsauer/jrnightingale listed as Petitioner's counsel); and the parallel Netlist mandatory-notices filing in IPR2014-01374, which uses the identical McAndrews team and explicitly designates Wimbiscus as Lead Counsel with Schodde, McBride, Spuhler and Bradley as Backup Counsel (docketalarm, IPR2014-01374, Paper 5, Sept. 12, 2014, signed /Thomas J. Wimbiscus/).

• https://www.docketalarm.com/cases/PTAB/IPR2014-01374/Inter_Partes_Review_of_U.S._Pat._8359501/docs/09-12-2014-Patent_Owner/Notice-5-Related_Matters.pdf
• https://gaeflexstaging-dot-docketupdate.appspot.com/cases/PTAB/PGR2026-00001/Samsung_Electronics_Co._Ltd/11-07-2025-Petitioner/Exhibit-1015-EX1015___Denying_Institution_PTAB_IPR2014_00994_8_833/

Role note on identification of "lead" in this case: The Dec. 16, 2014 decision lists the five McAndrews attorneys in the order Wimbiscus → Schodde → McBride → Spuhler → Bradley, and the contemporaneous Netlist notices in the companion SanDisk/Smart Modular IPRs on the same '833 patent designate Wimbiscus as lead — so the lead/back-up split above is well grounded, though I could not locate the standalone IPR2014-00994 mandatory-notices paper itself (the PTAB record for this short-lived, denied proceeding is thin).

Relevant experience (what is verifiable vs. not)

• McAndrews, Held & Malloy is a Chicago IP boutique that served as Netlist's regular PTAB and litigation counsel through the SanDisk/Smart Modular/SK hynix/Micron memory-module campaigns. That is well documented across the Netlist IPR family, e.g., the Federal Circuit appeal in Netlist, Inc. v. SanDisk LLC, Nos. 2016-2274 et al. (Fed. Cir. Nov. 14, 2017), where Thomas J. Wimbiscus argued for Netlist, "also represented by Wayne Bradley, Scott P. McBride, Gregory Schodde, Ronald Spuhler" — i.e., the same team as here.
  • https://cases.justia.com/federal/appellate-courts/cafc/16-2274/16-2274-2017-11-14.pdf
• Greg Schodde also appears as Netlist's counsel in the related N.D. Cal. litigation (Netlist, Inc. v. SMART Storage Systems, Inc., No. 4:13-cv-05889-YGR), consistent with McAndrews serving as Netlist's trial-side counsel in the parallel district-court disputes over this patent family (CourtListener docket, Feb. 20, 2015).
  • https://www.courtlistener.com/docket/[4180539](/patent/4180539)/netlist-inc-v-smart-modular-technologies-inc/?entry_gte=228
• I did not find a public in-house Netlist attorney designated as counsel of record in this IPR, and I could not independently verify individual bar-admission dates or a full per-attorney case list for Wimbiscus, Schodde, McBride, Spuhler, and Bradley beyond their repeated Netlist appearances. I have not fabricated bios for them.

Procedural context confirming counsel were active

• Netlist (through this McAndrews team) filed its Patent Owner's Preliminary Response on Oct. 2, 2014 (listed alternatively as Paper 7/8 in exhibit citations), and the Board issued the Decision Denying Institution as to all challenged claims 1–30 on Dec. 16, 2014 (Paper 8, 16 pages; panel: Bryan F. Moore, Georgianna W. Braden, Linda M. Gaudette, Moore writing). No claims were cancelled.
  • https://services.patexia.com/lawsuits/SanDisk-Corporation-v-Netlist-Inc-id-63318

For completeness — opposing side (Petitioner SanDisk), not the defendant

SanDisk was represented by Jones Day (Cleveland office), with David B. Cochran (Reg. 39,142), Joseph M. Sauer (Reg. 47,919) and Joshua R. Nightingale (Reg. 67,865) listed as Petitioner's counsel in the Dec. 16, 2014 decision; Matthew W. Johnson (Reg. 59,108) appears on SanDisk's related powers of attorney. Note this is distinct from King & Spalding (Michael F. Heafey / Sanjiva K. Reddy), who appear in the '833/'501 family filings on a Sept. 22, 2014 docket — so if you are mapping firms, attribute King & Spalding carefully; it does not appear to be the IPR2014-00994 petitioner team.