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

I'll research this case thoroughly before drafting the overview.

Let me dig deeper into the specifics of the patent, the IPR outcomes, and the related litigation.

Let me verify the patent specifics, party corporate identities, and the downstream litigation history.

Case Overview & Background

Parties and technology. SMART Modular Technologies, Inc. v. Netlist, Inc., No. 4:13-cv-03916-YGR (N.D. Cal., filed Aug. 23, 2013), was a declaratory‑judgment action brought by SMART Modular Technologies — a Newark, California–based manufacturer of DRAM memory modules, SSDs and embedded/industrial memory products (Stanford's NPE Litigation Database classifies it as a "Product company," not an NPE/PAE) — against Netlist, Inc., an Irvine, California memory‑module and NVDIMM developer that is publicly traded and has itself been a prolific patent enforcer (also classified by Stanford as a product company, though its assertion activity is often characterized as aggressive). The dispute was not really about SMART Modular's own modules: it grew out of the emerging "memory channel storage"/NVDIMM market, in which Diablo Technologies designed controller chipsets and SMART Storage Systems (acquired by SanDisk in August 2013 for a reported $307M) sold the ULLtraDIMM SSD — a product the N.D. Cal. court noted resulted from "a partnership between Diablo and Smart Storage, not Smart Modular." Netlist had threatened SMART Modular by letter dated Aug. 22, 2013 (asserting U.S. Pat. No. 8,516,187), and SMART Modular responded the next day with a DJ complaint seeking declarations of non‑infringement and invalidity as to five Netlist patents: Nos. 8,001,434; 8,359,501; 8,516,185; 8,516,187; and 8,301,833 (the '833 patent is the only one carried in this database entry). Roughly 30 minutes after Netlist amended its Central District complaint to name SMART Modular, SMART Modular filed in N.D. Cal. — a textbook race to the courthouse.

The patent and procedural posture. U.S. Pat. No. 8,301,833 B1, titled "Non‑Volatile Memory Module," issued Oct. 30, 2012, from Application No. 12/240,916 (filed Sept. 29, 2008, a continuation of App. No. 12/131,873 filed June 2, 2008). In one line: it claims a hybrid memory system in which the DRAM/volatile subsystem runs at a high clock frequency when talking to the host but drops to a lower third clock frequency during backup/restore of volatile memory to non‑volatile (flash) memory — the ancestral patent of Netlist's "Flash‑DRAM Hybrid Memory Module" family, from which the later '831, '684, '186, '918 and '054 patents descend. The case was assigned to Judge Yvonne Gonzalez Rogers (N.D. Cal., Oakland), who on Oct. 11, 2013 denied Netlist's motions to dismiss or transfer to the Central District, rejecting both the first‑to‑file argument (based on Netlist's earlier C.D. Cal. complaint, which contained no patent claims) and the "anticipatory suit" theory. Venue mattered because Netlist is headquartered in the Central District while SMART Modular's principal place of business is in the Northern District, Diablo had most of its personnel there, and SanDisk — the parent of accused‑product seller SMART Storage — was in Milpitas; Judge Gonzalez Rogers found convenience factors did not favor the Central District. The court entered a case schedule (Dkt. 52, Jan. 6, 2014) with an early summary judgment motion by SMART Modular, Netlist infringement contentions served Jan. 21, 2014, and claim construction set for mid‑2014. That schedule never ran: on Feb. 7, 2014 the parties stipulated to dismissal without prejudice of both SMART Modular's DJ action (order entered Feb. 12, 2014, Dkt. 62) and Netlist's transferred infringement case (No. 4:13‑cv‑05889), and the 03916 docket closed.

Why it matters. First, the case is a well‑known N.D. Cal. first‑to‑file/anticipatory‑suit venue decision arising from a dead heat of same‑day filings — the type of ruling that governs how accused infringers can use the Declaratory Judgment Act to pick a home forum. Second, it is the opening chapter of Netlist's decade‑long, multi‑front assertion campaign over the '833 and its progeny: after dismissing the district‑court case, SMART Modular filed five IPR petitions on Sept. 22, 2014 through King & Spalding (Michael F. Heafey) — IPR2014‑01370 ('833), ‑01371 ('187), ‑01372 ('434), ‑01373/‑01374 ('501) and ‑01375 — a defensive, third‑party IPR strategy launched only after the DJ action was voluntarily dismissed; SanDisk and Diablo filed parallel petitions, and the PTAB ultimately stayed the consolidated SanDisk/Diablo litigation (No. 4:13‑cv‑05889). The '833 survived those challenges — institution was denied in IPR2014‑01370 (Paper 13, Mar. 13, 2015) and in SanDisk's IPR2014‑00994 — and the same patent was later asserted by Netlist against Micron (W.D. Tex. 6:21‑cv‑00430/431), Samsung, and SK hynix, becoming the centerpiece of Micron's Idaho "bad‑faith patent assertion" suit under Idaho Code § 48‑1703. Its validity trajectory ultimately inverted: in IPR2022‑00418, the PTAB held claims 1, 3–17 and 19–30 of the '833 unpatentable (Final Written Decision, Aug. 28, 2023). Third, the surrounding N.D. Cal. litigation — consolidated with Diablo Technologies, Inc. v. Netlist, Inc., No. 4:13‑cv‑03901, and with Netlist's trade‑secret/breach‑of‑contract case against Diablo (No. 4:13‑cv‑05962) — produced a rare January 2015 preliminary injunction by Judge Gonzalez Rogers barring Diablo's controller chips and SanDisk/SMART Storage's ULLtraDIMM from the market, making this corner of N.D. Cal. the epicenter of the fight over flash‑on‑DIMM/memory‑channel architecture that later defined the NVDIMM and DDR5 module markets.

Sourcing caveats. The docket facts above are grounded in the PTAB petition exhibits (which quote and attach the DJ complaint and the Feb. 12, 2014 dismissal order), the Oct. 11, 2013 venue order, and the Jan. 6, 2014 case scheduling order; I was unable to run additional verification against PACER directly for the final 03916 docket sheet, so the precise last docket entry number, any fee/attorney details, and the current corporate affiliation of SMART Modular (e.g., its relationship to SMART Global Holdings, SGH) are not verified here. Likewise, I have not independently confirmed the appellate status of the '833 final written decision or any later settlement of the SanDisk/Diablo matters within this session.

I'll research this case through the docket, court opinions, and patent office records.

I have strong leads. Let me dig into the specific docket, the '833 IPR, and the Federal Circuit appeal.

Bottom line first

Case No. 4:13-cv-03916-YGR was not a conventional infringement suit. It was a declaratory-judgment action that SMART Modular filed on the morning after Netlist's threat letter, squarely in the middle of a multi-front war over Netlist's memory-module patents. The docket was closed just under six months after it was filed — on 2014-02-12, by joint stipulation of dismissal without prejudice (Dkt. 62), the same order that dismissed Netlist's mirror-image infringement case against SMART Modular (No. 4:13-cv-05889). The merits fight over the '833 patent therefore migrated into Netlist's transferred affirmative case (05889) and into the PTAB, where both petitions against the '833 patent — SanDisk's and SMART Modular's — were denied institution. The '833 patent emerged from this round intact.

Because the two N.D. Cal. cases (03916 and 05889) and the IPRs are factually inseparable, the chronology below follows the litigation as it actually unfolded.

---

I. Filing and initial pleadings (August 2013)

• 2013-08-22 — Netlist's counsel (S. Cunningham) sent SMART Modular a letter threatening suit on, inter alia, U.S. Patent No. 8,516,187 (and, per the parallel record, the '833 patent). Netlist sent the same-day notice to Diablo Technologies. (Heafey Decl. ¶ 2, IPR2014-01371, Ex. 1013/1024.)
• 2013-08-23 — Two declaratory-judgment complaints were filed in N.D. Cal. (San Francisco Division): Diablo Techs. v. Netlist, No. 4:13-cv-03901-YGR, and SMART Modular Techs. v. Netlist, No. 4:13-cv-03916-YGR. SMART Modular's complaint sought declarations that it did not infringe and that the asserted claims were invalid. Per the Heafey declaration in IPR2014-01370, the '833 patent was expressly among the patents at issue; the "Five Netlist Patents" identified in the venue order were the '434, '833, '501, '185 and '187 patents. (https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1549632](/patent/1549632)/download-documents; https://cases.justia.com/federal/district-courts/california/candce/4:2013cv03901/[269462](/patent/269462)/20/0.pdf)
• 2013-08-23 (same day, ~30 minutes later) — Netlist filed its First Amended Complaint in the Central District of California (8:13-cv-00996, Santa Ana), accusing SMART Modular, Smart Worldwide Holdings, Smart Storage Systems and Diablo of infringing five Netlist patents via the ULLtraDIMM memory module, plus Lanham Act, trade-secret, breach of contract and unfair competition claims. So the DJ complaints beat Netlist's amended complaint by minutes — the "anticipatory suit" fight below turns entirely on that. (Netlist 10-K/10-Q disclosure, https://investors.netlist.com/.../us-sec-filing.html)
• Responsive pleading in 03916 — Netlist's first substantive response was not an answer but a motion to dismiss or transfer the DJ complaint to the Central District (Dkt. 13 in 03916; Dkt. 13 in 03901), filed 2013-09-09. I did not locate any answer or infringement counterclaim filed in 03916 before the case was dismissed; Netlist's infringement theory instead lived in the C.D. Cal. action that was later transferred in. (Answer/counterclaim content in 03916: not verified.)

II. Threshold motions: venue, first-to-file, anticipatory suit (Sept.–Dec. 2013)

• 2013-10-11 (order docketed; the SEC filings say "denied on October 10, 2013") — Judge Yvonne Gonzalez Rogers issued the Order Denying Motions to Dismiss or Transfer (Dkt. 20 in 03901; the parallel order in 03916). Holding:
  • Netlist's July 2013 original C.D. Cal. complaint was not "first-filed" as to the five patents because it contained no patent claims and did not name Diablo; the Diablo DJ complaint was the first-filed case on those patents.
  • Netlist's claim that the "anticipatory" nature of the DJ actions warranted dismissal was rejected — under Federal Circuit law, anticipatory filing is one factor only, and Netlist had not shown convenience/efficiency factors favoring C.D. Cal. (courts cited Genentech, Electronics for Imaging).
  • Judicial economy did not favor transfer because all actions were filed the same day and none had progressed further.
    (https://law.justia.com/cases/federal/district-courts/california/candce/4:2013cv03901/269462/20/; https://dockets.justia.com/docket/california/candce/4:2013cv03901/269462)
• 2013-11-26 — In C.D. Cal., Judge Carter/DOC severed and (a) transferred the '295-patent claims to the E.D. Cal. (stayed 2014-03-07 pending reexamination) and (b) transferred the ULLtraDIMM patent claims to N.D. Cal.; the court also issued an OSC on the remaining claims.
• 2013-12-23 — C.D. Cal. ordered the remaining claims transferred to N.D. Cal., completing the consolidation in the Northern District. (Netlist SEC filings, supra.)

III. Consolidation, contentions and dismissal (Jan.–Apr. 2014)

• 2013-12-19 — Netlist's transferred affirmative case docketed in N.D. Cal. as Netlist, Inc. v. Smart Modular Techs., Inc., No. 4:13-cv-05889-YGR (against SMART Modular, Smart Storage Systems, SanDisk and Diablo), asserting the seven patents including the '833: '434, '833, '501, '185, '187, '150 and '536. (https://dockets.justia.com/docket/california/candce/3:2013cv05889/[273071](/patent/273071); NPE database, https://npe.law.stanford.edu/patent/8301833)
• 2014-01-21 — Netlist served its Patent L.R. 3-1 infringement contentions in both 03916 and 05889, including claim charts for the '833 (also '434, '501, '185, '187). This triggered a defense motion to strike for lack of specificity, filed 2014-02-28 (Dkt. 149 in 05889), arguing Netlist failed the "reverse engineering or equivalent" standard because ULLtraDIMM was not yet commercially available — early strategic friction that never matured to a ruling in 03916.
• 2014-01-21 → 2014-02-05 — Netlist moved for leave to file a second amended answer/counterclaims adding two more patents (to seven total); the Court granted that on 2014-02-05 and reset the schedule. (Netlist 10-Q.)
• 2014-02-07 — The parties jointly stipulated to dismiss without prejudice both (i) Netlist's claims against SMART Modular in 05889 and (ii) SMART Modular's declaratory-judgment action 03916.
• 2014-02-12 — Court entered the dismissal order in 03916 (Dkt. 62, "Joint Stipulation of Dismissal Without Prejudice and Proposed Order") and the companion order in 05889. This is the terminal event in the '833-vs-SMART Modular district-court docket. (Dkt. 62, reproduced at https://www.docketalarm.com/cases/PTAB/IPR2014-01374/.../Exhibit-1023; Heafey Decl. ¶ 6.)
• 2014-04-07 — Leave granted to file the Second Amended Complaint in the surviving patent case (05889).

No Markman proceeding, no discovery endgame, no trial, no verdict, no JMOL/fee motion occurred in 03916 — the case was dismissed roughly six months after filing, before claim construction. The N.D. Cal. NPE/analytics record confirms 03916 status "Closed" with activity concentrated in Aug. 2013–Apr. 2014.

IV. Parallel PTAB proceedings on the '833 (2014–2015)

• 2014-06-20 — SanDisk Corp. v. Netlist, IPR2014-00994 filed against the '833 patent. The Board denied institution (Paper 8) — expressly noted in the '833 institution decision below.
• 2014-08-22 / corrected 2014-09-22 — SMART Modular Techs., Inc. v. Netlist, Inc., IPR2014-01370, petition challenging claims 1–30 of U.S. Pat. No. 8,301,833 (grounds included Long '552 + Leete '210 Pub. under § 103 and Tsunoda '618 under § 102), with a Patent Owner Preliminary Response filed 2014-12-16.
• 2015-03-13 — Decision Denying Institution of Inter Partes Review, IPR2014-01370, Paper 13 (Judges Gaudette, Moore, Braden; opinion by Moore). The Board found no reasonable likelihood that SMART Modular would prevail on any challenged claim, so no IPR was instituted on the '833 patent. This is the key '833-specific PTAB outcome. (Decision reproduced as Ex. 1017 in IPR2022-00996, https://www.docketalarm.com/cases/PTAB/IPR2022-00996/...; also cited in later Netlist patents, e.g., https://patents.google.com/patent/[US11016918B2](/patent/US11016918B2)/en)
• Companion SMART Modular petitions filed the same day and their outcomes: IPR2014-01369 ('185) — institution denied 2015-03-09; IPR2014-01371 ('187) — denial (per the docket exhibits of 2015-03-17); IPR2014-01372 ('434) and IPR2014-01374 ('501) — instituted (institution decisions dated 2015-03-09/10), proceeding to final written decisions; IPR2014-01373 ('434) and IPR2014-01375 ('501) — institution denied 2015-03-13. Netlist also faced a SanDisk IPR on the '501 (IPR2014-00971), FWD 2015-12-14 finding several claims unpatentable.

V. Effect of the IPRs on the district court and the wind-down of 05889

• 2015-03-10 / 2015-03-17 / 2015-03-24 — The PTAB institution/denial decisions were filed as exhibits in the district court (Dkt. 309, 316 in 05889), and the court held status hearings on the IPRs (transcripts at Dkt. 305-7, 316-3).
• 2016-03-09 — PTAB final written decisions in IPR2014-01372 and IPR2014-01374: the Board held SMART Modular failed to prove any claim of the '434 or '501 patents unpatentable — a clean win for Netlist (announced by Netlist's IPR counsel McAndrews, Held & Malloy; oral argument had been consolidated and held 2015-11-17). Netlist's disclosure framed the campaign as: "SanDisk, Diablo and Smart Modular filed a total of 17 IPRs attempting to invalidate seven of Netlist's patents. Netlist has now been successful in defending five of the seven asserted patents." (https://www.mcandrews-ip.com/results/netlist-wins-big-two/)
• 2016-03-29 — N.D. Cal. continued the compliance hearing regarding the status of the pending IPRs (Dkt. 339 in 05889). The Joint Status Reports through 2016-06-16 show 05889 as "Stayed" with patents '434, '833, '501, '185, '187, '150 and '536 still in suit and "No Current Discussions" on settlement. (https://www.docketalarm.com/cases/PTAB/IPR2015-01021/.../Notice-28-Updated_Joint_Status_Report.pdf)
• 2016-2666 — Smart Modular Techs. v. Netlist, Inc. (Fed. Cir.) — SMART Modular appealed the adverse PTAB rulings; the Federal Circuit posted oral argument audio on 2017-11-07 (https://www.cafc.uscourts.gov/11-07-2017-2016-2666-smart-modular-technologies-v-netlist-inc-audio-uploaded/). The outcome of that appeal is not verified in the sources retrieved — I will not state a disposition I could not confirm.
• 2018-11-09 / 2019-01-17 — Stipulated dismissal without prejudice as to Diablo in 05889 (Dkt. 368); the court then amended that order, clarifying that claims against Smart Storage Systems and SanDisk remained live (Dkt. 371).
• 2020-05-19 — Order dismissing 05889 on the parties' joint stipulation (Dkt. 381–382). This closed the last district-court vehicle in which the '833 patent had been asserted against SMART Modular's successor-in-interest, without any liability finding on the '833.

VI. Final disposition / present posture

Net effect: the '833 patent was never adjudicated on the merits against SMART Modular. SMART Modular's DJ attack was voluntarily withdrawn six months in; the PTAB twice refused to institute on the '833; and Netlist's own infringement case on the patent was stayed and ultimately dismissed in 2020. The '833 patent survived the 2013–2016 round and later re-entered litigation against other parties (e.g., Netlist's assertion against Micron in the W.D. Tex. in 2021, which spawned Micron's Idaho bad-faith-assertion suits and a 2024–2026 Fed. Cir. appeal, No. 24-2281).

Verification caveats

• Unverified: the content of any answer/counterclaim in 03916 (Dkt. 13 was a motion to dismiss/transfer, not an answer); the precise docketed date of the venue order (Oct. 10 vs. Oct. 11, 2013 — SEC filings say Oct. 10, the docket entry shows Oct. 11); the exact entry dates of the denial decisions in IPR2014-01369/-01371/-01373/-01375; and the Federal Circuit's disposition in 2016-2666.
• Counsel identified from the record: SMART Modular's IPR counsel was Michael F. Heafey, King & Spalding LLP (Palo Alto) (Reg. No. 38,178); Netlist's PTAB counsel was McAndrews, Held & Malloy (Winslade, Wimbiscus, McBride, Bradley, Schodde, Spuhler). District-court counsel of record in 03916 are listed on the signature pages of Dkt. 62 but I did not independently verify their firms, so I am not naming them.

I'll research press coverage of this case, starting with the provided article list and then broadening to case-specific coverage.

I have substantial coverage. Now let me verify the specific listed articles and look for additional case-specific reporting.

Press coverage: what exists, and how thin it is on this docket

*Bottom line: I found essentially no press coverage about SMART Modular Technologies, Inc. v. Netlist, Inc., No. 4:13-cv-03916-YGR as its own case.* The '833 patent and SMART Modular's short-lived declaratory-judgment action surface in the press only as background inside reporting on the larger Netlist-vs.-Diablo/SanDisk/SMART Modular war (N.D. Cal. cases 4:13-cv-03901, ‑05889 and ‑05962). Two of the closest things to case-specific reporting are a Law360 story of April 2, 2014 ("Tech Co. Can't Dodge Netlist's IP Suit On Hypothetical Product"), which recites the five Netlist patents at issue — Nos. 8,001,434; 8,301,833; 8,359,501; 8,516,185; and 8,516,187 — and describes Netlist's July 2013 suit against SMART Modular, noting the case as 4:13-cv-05889 rather than the 03916 DJ action; and a National Law Review summary of a PTAB discovery order in the companion Smart Modular Technologies Inc. v. Netlist, Inc. IPRs (IPR2014‑01372/‑01374, on the '434 and '501 patents), which is the same petition campaign as the '833 challenge but not the '833 itself. I also encountered the PRNewswire release PRNewswire (Feb. 19, 2019), but it is about the '912 patent and the separate dismissal of SMART Modular's '295-patent case in the E.D. Cal. — not this case.

What the surrounding coverage actually reports. The most detailed contemporaneous accounts come from the trade press covering the ULLtraDIMM fight. The Register reported on 2013‑12‑16 that Netlist's August 2013 filings accused Diablo, SMART Modular, SMART Storage and Smart Worldwide of infringing five Netlist patents "based in part on the recently-announced ULLtraDIMM," and that the claims rested on a whistleblower letter alleging Diablo took Netlist's HyperCloud architecture "as-is"; it also noted that SanDisk had bought SMART Storage for $307m in August 2013, and repeated Netlist's claim that HyperCloud had cost $65m to develop. Computerworld and EE Times both reported on 2015‑01‑13 on Judge Gonzalez Rogers' preliminary injunction barring Diablo's controller chipsets and the ULLtraDIMM, quoting the court's finding that "the evidence indicates that Netlist is likely to prevail" and Netlist CEO C.K. Hong's statement that the ruling "clears the path for Netlist products." The Register reported on 2015‑03‑10 that settlement talks had failed and the case had gone to a jury, framing "a potential $1bn server flash DIMM market" as on hold and listing IBM, Lenovo, Huawei and Supermicro as affected OEMs. Notably, I found no coverage in the sources retrieved of the ultimate March 25, 2015 jury verdict going against Netlist on the trade-secret and breach-of-contract counts and the dissolution of the injunction — that outcome appears in Netlist's own SEC filings (its Form 10-Q, which states the jury found for the defendants on those

Sources

• ATTORNEY REFERENCE NO.: 21584-112005.2 FILED VIA PRPS ON: September 22, 2014
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Patent Owner's Preliminary Response, Smart Modular Tech v
• UNITED STATES PATENT AND TRADEMARK OFFICE
• UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA
• 8301833 | NPE Litigation Database
• SEA is merely an alleged purchaser or user of the accused products, and not a real party in interest, which the Petition correct...
• IN THE UNITED STATES PATENT AND TRADEMARK OFFICE FILED VIA THE PATENT REVIEW PROCESSING SYSTEM
• Despite this admission, Netlist's expert testified that a single 1- byte (8- bit) data path could be viewed as an upper "nibble"...
• DLA Piper LLP (us) 401 B Street, Suite 1700 San Diego, California 92101- 4297 www
• Bartko Pavia
• Netlist's Amended Complaint Provides Details in ULLtraDIMM Litigation -- Sixty Trade Secrets Believed Stolen by Diablo

I'll research the counsel of record for SMART Modular Technologies in this case.

Initial results point to King & Spalding as SMART Modular's counsel. Let me verify with the docket itself.

Let me pull the actual docket entries and signature pages for case 4:13-cv-03916.

Counsel of Record — Plaintiff SMART Modular Technologies, Inc.

Case 4:13-cv-03916-YGR (N.D. Cal.), SMART Modular Technologies, Inc. v. Netlist, Inc.

Important scope caveat first

This case had an unusually short life: it was a declaratory-judgment action filed August 23, 2013 and was dismissed without prejudice by stipulated order on February 12, 2014 (Dkt. 62 in 4:13-cv-03916; the same stipulation was filed as Dkt. 142 in the companion case 4:13-cv-05889). I was not able to retrieve the complete attorney-appearance list from the 916 docket sheet itself (the RECAP/CourtListener docket for the 916 case was not accessible in my searches; PACER is paywalled). The identifications below are grounded in the signed filings and PTAB papers that ARE public, and I flag where appearance in the district court is inferred rather than directly confirmed.

---

1. Michael F. Heafey — Lead counsel

• Firm / office: King & Spalding LLP, 601 South California Avenue, Suite 100, Palo Alto, CA 94304 (tel. 650-422-6700).
• Identifiers: California State Bar No. 153499; USPTO Registration No. 38,178.
• Record basis: Heafey signed the joint stipulation of dismissal resolving the 916 and 05889 cases, dated Feb. 7, 2014 (entered Feb. 12, 2014), as counsel for SMART Modular; the signature block lists him under KING & SPALDING LLP with 601 S. California Ave., Palo Alto, and his direct email mheafey@kslaw.com.
• Role in the related PTAB proceedings: He was the named lead counsel on SMART Modular's September 22, 2014 IPR petitions against Netlist's patents, including the petition against U.S. Pat. No. 8,301,833 — the very patent at issue here — in IPR2014-01370, and the parallel petitions on the '501 (IPR2014-01374/-01375), '187 (IPR2014-01371) and related Netlist patents. In the supporting declaration he states: "I am a partner in the law firm King & Spalding LLP, counsel to Petitioner SMART Modular Technologies, Inc."
• Note on experience: Career patent litigator who led SMART Modular's multi-front campaign against Netlist — both the N.D. Cal. declaratory-judgment actions and roughly the full set of 2014 IPRs (SMART Modular, SanDisk and Diablo collectively filed ~17 IPRs against seven Netlist patents, per Netlist/McAndrews press materials). He later continued representing SMART Modular at Troutman Sanders LLP (San Francisco) in the long-running E.D. Cal. case Smart Modular Techs. v. Netlist, No. 2:12-cv-02319 (see the March 21, 2018 stipulation to stay pending Federal Circuit appeal, where he appears with Ryan A. Lewis and Anup M. Shah for SMART Modular).

2. Sanjiva K. Reddy — Back-up counsel (PTAB side)

• Firm / office: King & Spalding LLP, 1185 Avenue of the Americas, New York, NY 10036.
• Identifiers: USPTO Registration No. 70,816.
• Record basis: Identified as back-up counsel alongside Heafey in SMART Modular's IPR petitions (e.g., the '833 petition, IPR2014-01370).
• Caveat: I found no signed district-court filing in 4:13-cv-03916 bearing his name, so his participation appears to be PTAB-only; do not treat him as a confirmed district-court attorney of record.

---

What I could not confirm

• Full docket-sheet appearance list for 4:13-cv-03916 (i.e., every attorney who formally entered an appearance under Civ. L.R. 11-3). The public signature pages I located for the case list only Heafey on SMART Modular's side.
• No separate local-counsel firm for SMART Modular in this case was identified. K&S's Palo Alto office functioned as the appearing (California-barred) counsel; there is no Bartko Zankel–type local-counsel entry for SMART Modular comparable to what Netlist used.
• No in-house counsel for SMART Modular appears in the public filings I could access; SMART Modular's legal department did not sign the stipulation or the IPR papers.
• Any sealed filings: nothing found indicating sealed attorney filings; but the case's short, pre-discovery posture means the appearance record may simply be thin.

Cross-check for the reader (opposing side, same posture)

For contrast, Netlist's counsel of record in the parallel/related N.D. Cal. matters were DLA Piper LLP (Sean C. Cunningham, Stanley J. Panikowski, Erin P. Gibson, Rajiv Dharnidharka, Ryan W. Cobb), Bartko, Zankel, Bunzel & Miller, and McAndrews, Held & Malloy (Thomas J. Wimbiscus, Gregory C. Schodde, Wayne H. Bradley, Ronald H. Spuhler) — useful context because it confirms the 916/05889 filings are the same, jointly-signed dismissal record on which SMART Modular's counsel identification rests.

Bottom line: The one attorney I can document as SMART Modular's counsel of record in 4:13-cv-03916 is Michael F. Heafey of King & Spalding LLP (Palo Alto), with Sanjiva K. Reddy (King & Spalding, New York) documented as PTAB back-up counsel. Any additional names beyond these two would require a direct PACER pull of the 916 docket, which I was unable to complete.

I'll research the docket and Netlist's counsel in this N.D. Cal. action.

Let me pull the key filings that would list counsel of record in the 03916 action itself.

I hit my research-step limit before I could pull the 03916 docket sheet itself, so let me be precise about what is verified versus inferred.

Bottom line on verification

I could not directly retrieve the 4:13-cv-03916 docket sheet (CourtListener/PACER recap page for that case number) or the full OCR of the signature pages of the Feb. 12, 2014 stipulation of dismissal (Dkt. 62), which is where Netlist's counsel of record would be listed. The list below is therefore built from (a) the Dkt. 62 stipulation as captured in PTAB Exhibit 1023 (which the search index rendered only as "[Counsel listed on signature pages]"), and (b) filings in the co-pending/related N.D. Cal. matters that Netlist was litigating simultaneously with the same trial team. I flag each item's evidentiary basis individually rather than presenting a confirmed PACER-derived appearance list.

Also worth flagging a metadata inconsistency for your records: the case was docketed in the San Francisco division as 3:13-cv-03916-WHO (a Plainsite attorney record shows "3:13-cv-03916-WHO," i.e., Judge William H. Orrick), while every substantive filing I found carries the Oakland caption 4:13-cv-03916-YGR (Judge Yvonne Gonzalez Rogers). That is consistent with a division reassignment shortly after the Aug. 23, 2013 race-to-the-courthouse filing, but I have not confirmed the reassignment order.

Netlist, Inc.'s counsel (defendant in 03916)

Cross-check supporting the DLA Piper attribution: in E.D. Cal. No. 2:12-cv-02319, the signature blocks show DLA Piper (Cunningham, Edward H. Sikorski, Erin P. Gibson, Rajiv Dharnidharka, David R. Knudson) signing on behalf of "Defendant and Counterclaim Plaintiff NETLIST, INC.," while Troutman Sanders (Michael F. Heafey — formerly King & Spalding, SMART Modular's IPR counsel) signed for "Plaintiff and Counterclaim Defendant SMART MODULAR TECHNOLOGIES, INC." (Justia, Dkt. 212). That is the cleanest firm-to-party mapping in the record and matches the N.D. Cal. filings.

Counsel who were not Netlist's counsel — avoid confusion

• Steptoe & Johnson LLP (William F. Abrams, Sanjeet K. Dutta, Douglas R. Peterson) appeared for Diablo Technologies, not Netlist, in the 05889/related proceedings (Ex. 2004, IPR2014-00971). A Plainsite attorney page nonetheless associates Abrams with "3:13-cv-03916-WHO, Smart Modular v. Netlist"; that appears to be an aggregation artifact from the consolidated/related docket (Diablo was Netlist's adversary in 4:13-cv-03901/05889), and I could not corroborate a Steptoe appearance on Netlist's behalf in 03916. Treat as unverified.
• McDermott Will & Emery (Fabio E. Marino, L. Kieran Kieckhefer, et al.) — Diablo's counsel.
• Jones Day (Gregory L. Lippetz, Kathleen D. Lynott, Steven J. Corr) — SMART Storage's counsel.
• King & Spalding (Michael F. Heafey, Reg. No. 38,178) — counsel for SMART Modular (the plaintiff), both for the IPR petitioners and, on the signature evidence available, the DJ plaintiff side.

What would close the gaps

1. Dkt. 62 (Feb. 12, 2014 stipulation/order of dismissal) signature pages — the definitive 03916 counsel list. It is reproduced as Exhibit 1023 to the Heafey declaration in IPR2014-01374, but the OCR render I retrieved did not expose the names.
2. The 03916 appearance notices / ECF "Attorneys to be Noticed" section on the docket sheet (N.D. Cal. Civ. L.R. 5-1).
3. The Oct. 11, 2013 venue order and the Jan. 6, 2014 scheduling order (Dkt. 52) caption pages, which typically carry full appearance blocks.

I'd recommend pulling the 03916 docket directly from PACER before publishing this as a final counsel list; the DLA Piper/Bartko/McAndrews composition above is well-sourced for Netlist's related N.D. Cal. matters in the same window, not yet confirmed as the 03916 appearance of record.