Google Inc. v. Netlist, Inc.

Filing 105

SECOND AMENDED JOINT CASE MANAGEMENT STATEMENT and Proposed Order, filed by Google Inc., Netlist, Inc.. (Ezgar, Geoffrey) (Filed on 2/22/2010) Modified on 2/23/2010 (jlm, COURT STAFF).

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TIMOTHY T. SCOTT (CA Bar No. 126971/[e-mail]) GEOFFREY M. EZGAR (CA Bar No. 184243/[e-mail]) LEO SPOONER III (CA Bar No. 241541/[e-mail]) KING & SPALDING LLP 333 Twin Dolphin Drive, Suite 400 Redwood Shores, CA 94065 Telephone: [phone]/Facsimile: [phone] SCOTT T. WEINGAERTNER (pro hac vice/[e-mail]) ROBERT F. PERRY ([e-mail]) ALLISON ALTERSOHN (pro hac vice/[e-mail]) SUSAN KIM (pro hac vice/[e-mail]) MARK H. FRANCIS (pro hac vice/[e-mail]) DANIEL MILLER (pro hac vice/[e-mail]) King & Spalding LLP 1185 Avenue of the Americas New York, NY 10036-4003 Telephone: [phone]/Facsimile: [phone] Attorneys for Plaintiff, GOOGLE INC. Adrian M. Pruetz (CA Bar No. 118215/[e-mail]) Erica J. Pruetz (CA Bar No. 227712/[e-mail]) PRUETZ LAW GROUP LLP 200 N. Sepulveda Blvd., Suite 1525 El Segundo, CA 90245 Telephone: [phone]/Facsimile: [phone] Enoch H. Liang (CA Bar No. 212324/[e-mail]) Steven R. Hansen (CA Bar No. 198401/[e-mail]) Edward S. Quon (CA Bar No. 214197/[e-mail]) LEE TRAN & LIANG PLC 601 S. Figueroa St., Suite 4025 Los Angeles, CA 90017 Telephone: [phone]/Facsimile: [phone] Attorneys for Defendant, NETLIST, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA (OAKLAND DIVISION) GOOGLE INC., Plaintiff, v. NETLIST, INC., Defendant. AND RELATED COUNTERCLAIMS. Case No. C 08-04144 SBA SECOND AMENDED JOINT CASE MANAGEMENT CONFERENCE STATEMENT Date: March 4, 2010 Time: 3:15 p.m Dept.: Telephonic

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Google Inc. ("Google") and Netlist, Inc. ("Netlist") hereby respectfully submit the following Second Amended Joint Case Management Conference Statement. 1. Jurisdiction and Service This is an action arising under the patent laws of the United States, Title 35, United States Code. This Court has jurisdiction over the claims and defenses of this action pursuant to 35 U.S.C. § 1 et seq., and 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202. The parties do not believe that any jurisdiction or venue issues exist at this time. No parties remain to be served. 2. A Brief Description of the Facts and Procedural History Netlist is listed with the United States Patent and Trademark Office ("USPTO") as the assignee of record of U.S. Patent No. 7,289,386 ("the `386 Patent"). In May of 2008, Netlist sent Google a letter asserting ownership of the `386 Patent and alleging that Google was infringing the patent by using technology covered by the 386 Patent in its servers. The technology related to memory modules used in the server memory. Netlist's outside counsel sent additional letters to Google in June of 2008 reiterating its allegations. On August 29, 2008, Google initiated this action for declaratory judgment of non-infringement and invalidity of the `386 Patent; Netlist then counterclaimed for patent infringement and related claims. On February 2, 2009, the parties filed a Joint Case Management Statement. On February 18, 2009, the parties telephonically participated in a Case Management Conference with this Court. On February 19, 2009 this Court issued a scheduling order for the period through claim construction proceedings. On June 12, 2009, the parties filed their Joint Claim Construction Statement. The parties submitted their respective claim construction briefs during JulySeptember 2009. The parties filed an Amended Joint Case Management Statement on November 2, 2009, and the Court conducted a Markman Hearing on disputed claim construction issues on November 12, 2009. The Court issued its Order Re Claim Construction on November 12, 2009, and issued an Order For Pretrial Preparation setting the schedule for the remainder of the case on November 18, 2009.

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On February 26, 2009, Netlist served its Disclosure of Asserted Claims and Infringement Contentions. On April 13, 2009, Netlist served an Amended Disclosure of Asserted Claims and Infringement Contentions, and also on April 13, 2009 Google served its Invalidity Contentions. The only motion filed to date in this case concerned a discovery dispute. On May 19, 2009, the parties filed a letter brief with the Honorable Judge Spero, in which Netlist requested a physical inspection of one of Google's servers, to which Google objected. A telephonic hearing was held on the issue on May 29, 2009. The parties submitted a proposed order concerning the scope of the inspection on June 24, 2009, which order issued on June 25, 2009. On December 4, 2009, Netlist filed a separate action (Netlist, Inc. v. Google, Inc., C 095718 SBA) against Google asserting infringement of U.S. Patent No. 7,619,912 (the "`912 Patent"), which issued on November 17, 2009. The `912 Patent is a continuation of the '386 Patent asserted in this case. The parties filed a Joint Motion To Consolidate Cases on January 6, 2010, which this Court denied on February 3, 2010. 3. Principal Factual Issues Disputed by the Parties Whether Google has infringed the `386 Patent; Whether the accused Google products have substantial non-infringing uses; Whether the `386 Patent is invalid; Whether Netlist failed to meet its disclosure or other obligations under applicable JEDEC rules and policies; Whether infringement was willful; and Appropriate damages and equitable relief for any infringement.

Principal Legal Issues Disputed by the Parties Claim construction of terms in the `386 Patent; Whether any or all claims of the `386 Patent are invalid under 35 U.S.C. §§ 101, 102, 103, or 112; Whether the `386 Patent is unenforceable;

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Whether Google has properly pled a claim of unenforceability, including unenforceability based on alleged non-compliance with disclosure or other obligations under applicable JEDEC rules and policies;

Whether the claims set forth in Netlist's counterclaims are barred by waiver; Whether the claims set forth in Google's complaint are barred by waiver; Whether the claims set forth in Netlist's counterclaims are barred by Netlist's unclean hands;

Whether the claims set forth in Google's complaint are barred by Google's unclean hands;

Whether the claims set forth in Netlist's counterclaims are barred by estoppel; Whether the claims set forth in Google's complaint are barred by estoppel; Whether the Court should declare the case exceptional under 35 U.S.C. § 285 and award attorneys fees to the prevailing party; and

Whether and what relief should be granted.

Motions There has been one motion in this case, which concerned a discovery dispute. On May

19, 2009, the parties filed a letter brief with the Honorable Judge Spero, in which Netlist requested a physical inspection of one of Google's servers, to which Google objected. A telephonic hearing was held on the issue on May 29, 2009. The parties submitted a proposed order concerning the scope of the inspection on June 24, 2009, which order issued on June 25, 2009. The inspection was performed on August 19, 2009. No motions are currently pending. Both Google and Netlist anticipate filing motions for summary judgment and, to the extent it becomes necessary, motions relating to discovery. 6. Amendment of Pleadings The parties may amend their claims and defenses as discovery progresses, but do not plan to add or dismiss claims at this time.

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7.

Evidence Preservation The parties' proposal for document preservation is described in Section 9, below.

8.

Disclosures The parties exchanged the information required by Fed. R. Civ. Proc. 26(a)(1) on

February 5 and 6, 2009. The parties have supplemented their disclosures through the course of discovery. 9. Discovery A. Discovery Taken to Date Both parties have served and responded to written discovery. The parties have met and conferred regarding their respective discovery responses. Both parties have substantially completed their respective document productions. Google has provided a server for inspection, per court order, and Netlist inspected the server on August 19, 2009. Google has deposed the named inventors, Netlist employees Jayesh Bhakta and Jeffrey Solomon. Google's position is that their depositions revealed the existence of relevant documents that had not at that point been produced during the course of this litigation, and as such the depositions should be held open to address any questions that arise in light of the production of such documents at some later date. Google has also deposed third party witnesses Arun Kamat and William Gervasi, who were both former employees of Netlist. Google has issued subpoenas for written discovery and depositions from third parties, and has collected documents from and taken depositions of certain of these third parties. In December 2009, Google served a Rule 30(b)(6) Notice of Deposition seeking testimony from Netlist on a variety of topics related to non-infringement, invalidity, damages, and the JEDEC standards. The parties agreed this deposition would not proceed on January 15, 2010, as originally noticed, and are in the process of

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discussing the Notice and setting dates for depositions on some or all of the noticed topics. Google anticipates seeking leave of the Court to amend its invalidity contentions following the depositions of Netlist. Netlist has deposed two Google employees, Rick Roy and Andrew Dorsey. Netlist states that Mr. Dorsey and Mr. Roy were involved in the development of the accused four-rank FBDIMMs and participated in meetings with Netlist concerning its patented technology prior to the filing of this lawsuit. It is Google's assertion that the development of the accused four-rank FBDIMMs was done by Intel. Netlist's position is that Mr. Roy's deposition and Mr. Dorsey's deposition revealed the existence of relevant documents that have not been produced during the course of this litigation and that the depositions should be held open to address any questions that arise in light of the production of such documents at a later date. Netlist has requested that Google produce documents identified by Mr. Roy and Mr. Dorsey during their depositions, and Google has not yet responded to Netlist's requests. Netlist deposed Google employee, Robert Sprinkle, on February 18, 2010. Mr. Sprinkle is the key Google employee involved in the design and development of the accused 4-Rank FBDIMMs. In early January 2010, Netlist served a 30(b)(6) Deposition Notice seeking testimony from Google on a variety of topics related to infringement, damages, and validity issues. Google designated Mr. Sprinkle to testify to certain of the noticed topics relating to technical aspects of the accused 4-Rank FBDIMMs on February 18, 2010. Google has identified Norm Haus and Jack Ancone as additional Rule 30(b)(6) designees to testify to the remainder of the noticed topics. Both of these depositions are scheduled to take place in mid-March 2010. Netlist anticipates seeking leave of the Court to amend its infringement contentions following Mr. Sprinkle's deposition. Netlist deposed third party Desi Rhoden on February 17, 2010. Mr. Rhoden was identified by Google as a person with knowledge of the practices and procedures of

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the JEDEC standard setting organization and Netlist's participation in JEDEC standards development. Anticipated Discovery

Google anticipates taking the depositions of one or more Netlist witnesses under Rule 30(b)(6) on topics including the conception and reduction to practice of the `386 Patent, the prosecution of the `386 Patent, the sale of any products alleged to embody the `386 Patent, Netlist's knowledge of prior art during the prosecution of the `386 Patent, Netlist's participation in the JEDEC standards process, Netlist's licensing of the `386 Patent and other topics related to the enforceability of the `386 Patent and Netlist's claim for damages. Google has also noticed the deposition of Mario Martinez and the parties are in the process of setting a date for this deposition. Depending on the information developed through discovery, Google may seek discovery from third parties relating to development of Netlist's memory modules using rank multiplication technology and licensing efforts of the subject matter of the `386 Patent. Google also anticipates serving additional written discovery on Netlist directed to the foregoing topics. Netlist anticipates deposing one or more Google witnesses under Rule 30(b)(6) and on topics including the structure and operation of the accused 4-Rank FBDIMMs, damages, and willfulness. Netlist also anticipates deposing additional Google employees who are identified as knowledgeable about the foregoing topics and serving additional written discovery directed to the foregoing topics. Depending on the information developed through such discovery, Netlist may seek discovery from third parties involved in the development of the components used to manufacture the accused four-rank FBDIMMs. C. Discovery Schedule

The Court issued a scheduling order which sets a discovery cut-off of March 30, 2010. D. Discovery Limits

The parties agree to the following limits on discovery. Maximum of 30 interrogatories, including contention interrogatories, for each party.

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Maximum of 50 requests for admission by each party, excluding those directed solely to authenticating exhibits for trial.

Maximum of 10 non-expert depositions, including third party depositions, for each party.

With respect to expert reports and discovery, the parties agree that final expert reports and materials identified by the experts as relied upon in their reports are discoverable. (If an expert indicates in deposition that he or she relied upon a document or source not otherwise specified in the final report, that information is also discoverable.) Any attorney communications to or from any expert, any draft reports, and any notes of experts relating to any communication to or from an attorney are not discoverable and do not need to be logged in a privilege log. Electronic Discovery and Document Preservation

In order to avoid discovery disputes, the parties make the following proposals concerning electronic discovery: Preservation: Each party shall send a Document Retention Notice to employees it believes are likely to possess relevant, responsive electronic documents. This Document Retention Notice shall request that the identified employee refrain from deleting or destroying relevant electronic documents for the pendency of the litigation. No claim for sanctions shall lie in the inadvertent deletion of electronic documents. No party shall suspend the recycling or deletion of backup tapes or backup copies of electronic documents unless and until such suspension is explicitly requested by a Requesting Party. If such a request for suspension of deletion of backups is made, the Requesting Party shall specifically identify the electronic documents that should be maintained, as well as the duration for such maintenance. The Requesting Party must pay the costs associated with maintaining said backups, although the Requesting Party can choose to rescind or modify its request for the suspension of recycling or deletion at any time.

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Discovery and Form of Production: The parties agree to meet and confer concerning the format for the production of any remaining documents that may be produced during the remainder of the litigation. Assertion of Privilege After Production: The inadvertent production of any privileged material shall not be deemed a waiver of any claim of privilege of the information. Upon receiving oral or written notice from the Producing Party that privileged material has been inadvertently produced, all such privileged material and any copies thereof shall immediately be returned to the Producing Party and the receiving party shall not use any such privileged material or privileged information therein for any purpose absent further Order of this Court. 10. Class Actions This case is not currently a class action. Related Cases There is one related case, Netlist, Inc. v. Google, Inc., C 09-5718 SBA, which is currently pending before this Court. In this related case, Netlist asserts that Google's 4-Rank FBDIMMs infringe U.S. Patent No. 7,619,912 (the "'912 Patent"), which issued on November 17, 2009. The `912 Patent is a continuation of the `386 Patent asserted in this case. 12. Relief Google seeks the following relief: A declaration that Google does not infringe any valid and enforceable claim of the `386 Patent; A declaration that the `386 Patent is invalid and unenforceable; A declaration that this case is exceptional under 35 U.S.C. § 285 and an award of its costs, disbursements, and attorney fees in connection with this case under 35 U.S.C. § 285 and any other authority deemed appropriate by the Court; and Any other and further relief that this Court deems just, reasonable, and proper.

Netlist seeks the following relief: A judgment that Google has infringed the `386 Patent;

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A finding that such infringement was willful and deliberate; Monetary damages and injunctive relief based on such infringement; A finding that this case is exceptional under 35 U.S.C. § 285 and an award of its costs, disbursements, and attorney fees in connection with this case under 35 U.S.C. § 285 and any other authority deemed appropriate by the Court; and

Any other and further relief that this Court deems just, reasonable, and proper.

Settlement and ADR The parties have met and conferred in compliance with ADR L.R. 3-5 and reached a

stipulation pursuant to Civil L.R. 16-8 and ADR L.R. 3-5 to participate in private mediation. The parties filed this stipulation with the Court on December 12, 2008. The parties held a private mediation with Anthony Piazza in March 2009, and were unable to resolve the case. In its Order of February 2, 2010, this Court ordered the parties to file a joint statement regarding whether they wish to conduct a settlement conference before a Magistrate Judge or a private mediator. On February 16, 2010, the parties filed a Stipulation indicating their preference to have the settlement conference proceed before a Magistrate Judge, but that they have not yet reached agreement on the specific Magistrate Judge to handle such settlement conference. The parties subsequently met-and-conferred and now agree to have the matter referred to Magistrate Judge Trumbull for an early settlement conference. 14. Consent to Magistrate Judge For All Purposes A declination to proceed before a United States Magistrate Judge was filed in this matter. Other References The parties do not believe that this case is suitable for reference to binding arbitration, a special master, or the Judicial Panel on Multidistrict Litigation. 16. Narrowing of Issues While the parties may reach or agreements or file dispositive motions narrowing the issues in this case, it is premature at this time to determine the number and/or subject matter of any such agreements or motions.

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17.

Expedited Schedule The parties do not believe there is any need for an expedited schedule.

18.

Scheduling On November 12, 2009, the Court issued an Order For Pretrial Preparation (Dkt. 81) that

governs the case through trial. 19. Trial This case will be tried before a jury. Trial is scheduled to begin November 1, 2010. The parties expect that the trial will last for 7-9 days. 20. Disclosure of Non-party Interested Entities or Persons Both Google and Netlist have filed the "Certification of Interested Entities or Persons" required by Civil L.R. 3-16. No non-party interested entities or persons exist at this time. 21. Other issues At this time, the parties are not aware of any other issues that may facilitate the just, speedy and inexpensive disposition of this matter. Dated: February 22, 2010 KING & SPALDING LLP

By: /s/ Geoffrey M. Ezgar_________________ GEOFFREY M. EZGAR Attorneys for Plaintiff GOOGLE INC.

Dated: February 22, 2010

STEVEN R. HANSENLEE TRAN & LIANG APLC

By: /s/ Steven R. Hansen STEVEN R. HANSEN Attorneys for Defendant NETLIST, INC.

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DECLARATION OF CONSENT Pursuant to General Order No. 45, Section X(B) regarding signatures, I attest under penalty of perjury that concurrence in the filing of this document has been obtained from Steven R. Hansen.

KING & SPALDING LLP By: /s/ Geoffrey M. Ezgar GEOFFREY M. EZGAR Attorneys for Plaintiff GOOGLE INC.

PURSUANT TO STIPULATION, IT IS SO ORDERED. Dated: February __, 2010 SAUNDRA BROWN ARMSTRONG United States District Judge

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