Google Inc. v. Netlist, Inc.

Filing 184

Memorandum in Opposition re 181 MOTION to Shorten Time filed byNetlist, Inc.. (Attachments: # 1 Declaration of Daniel Taylor)(Hansen, Steven) (Filed on 9/1/2010)

1 PRUETZ LAW GROUP LLP 2 Email: [e-mail] 3 Erica J. Pruetz (Bar No. CA 227712)
Email: [e-mail] 4 200 N. Sepulveda Blvd., Suite 1525 El Segundo, CA 90245 5 Telephone: [phone] Facsimile: [phone] Adrian M. Pruetz (Bar No. CA 118215)

6

7 LEE TRAN & LIANG APLC 8 Email: [e-mail]

Enoch H. Liang (Bar No. CA 212324) Steven R. Hansen (Bar No. CA 198401)

9 Email: [e-mail] 10 Edward S. Quon (Bar No. CA 214197)
Email: [e-mail] 11 601 S. Figueroa Street, Suite 4025 Los Angeles, CA 90017 12 Telephone: [phone] Facsimile: [phone]

13 15 16 17 18 19

14 Attorneys for Plaintiff
NETLIST, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION

20 GOOGLE INC., 21 22 23 24 25 26 27 28
v. NETLIST, INC. Defendant. Plaintiff,

CASE NO. C08 04144 SBA [Related to civil Action No. C09-05718 SBA] DEFENDANT NETLIST, INC.'S OPPOSITION TO GOOGLE INC'S MOTION TO SHORTEN TIME

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NETLIST, INC.'S OPPOSITION TO MOTION TO SHORTEN TIME CASE NO. C08 04144 SBA

1

Defendant and Counterclaimant Netlist, Inc. ("Netlist") hereby opposes

2 Plaintiff and Counterdefendant Google Inc.'s ("Google") motion to shorten time on 3 its Motion to Stay Pending Reexamination of U.S. Patent No. 7,289,386 (the 4 "Motion to Stay"). 5 6 7 8 I. 9 10 11 GOOGLE CANNOT SHOW SUBSTANTIAL HARM OR PREJUDICE FROM HAVING ITS MOTION TO STAY HEARD ON THE SCHEDULE IMPOSED BY THE LOCAL RULES Google has not made the showing required to shorten time on its Motion to ARGUMENT

12 Stay under this Court's Local Rules. According to the Court's calendar, the next 13 available date for a hearing on Google's Motion to Stay is October 26, 2010. The 14 parties currently have three (3) summary judgment motions scheduled to be heard 15 on September 14, 2010. The motions were filed in June and were originally 16 scheduled to be heard on July 27, 2010. See Dkt. Nos. 141, 150 and 172. 17 However, Google now seeks to rush its Motion to Stay by asking the Court to add 18 it as a fourth motion to be heard on September 14, 2010. Google's request should 19 be denied because Google has made no showing of good cause for shortening time 20 and because the briefing schedule requested by Google would deprive Netlist of 21 meaningful time to oppose the Motion to Stay. 22 Under Local Rule 6-3(a)(3), a party seeking an order shortening time on a 23 motion must identify the substantial harm or prejudice that would occur if the 24 Court did not change the time. Google cannot make the required showing. The 25 only harm identified by Google is that the "Motion to Stay should be heard as soon 26 as practically possible so that the parties and especially the Court can avoid 27 expending significant work in preparing for the remaining portions of the this 28 case". Motion p. 1. Google's argument presupposes that its reexamination will
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NETLIST, INC.'S OPPOSITION TO MOTION TO SHORTEN TIME CASE NO. C08 04144 SBA

1 "resolve all issues in the litigation" and result in the cancellation of the asserted 2 Netlist claims. Otherwise, the "work" that Google references will be deferred, not 3 avoided. The Patent Office has now issued a first Office Action based on the 4 references cited by Google. Taylor Decl., ¶2, Exh. "A". However, Netlist has two 5 months to respond to the Office Action and, if necessary, the right to appeal an 6 adverse decision to the Board of Patent Appeals and Interferences, and ultimately, 7 the Federal Circuit Court of Appeals. Id.; 35 U.S.C. §§ 134, 141, 415. If the 8 references were as strong as Google would have the Court believe, Google would 9 have filed a Motion for Summary Judgment of Invalidity based on the prior art 10 months ago. It did not do so. Instead, after taking written discovery of Netlist and 11 questioning Netlist's inventors and expert about the prior art at deposition, Google 12 realized that it was unlikely to prevail on its prior art invalidity arguments. Thus 13 unsatisfied with the results in this forum, Google sought another bite at the apple in 14 the Patent Office. 15 Further, Google has raised invalidity challenges in this lawsuit that cannot 16 be resolved in the reexamination proceeding. Google filed a Motion for Summary 17 Judgment of Invalidity based on the written description requirement of 35 U.S.C. § 18 112, ¶ 1. See Dkt. No. 150. Invalidity under 35 U.S.C. § 112, ¶ 1 cannot be 19 decided in a reexamination proceeding. By statute, reexamination proceedings 20 may only consider invalidity of issued patent claims based on "patents or printed 21 publications." 35 U.S.C. §§ 301 and 311. See also, 37 C.F.R. § 1.906 (a) and (c) 22 (limiting consideration of the patentability requirements of 35 U.S.C. § 112 to 23 "subject matter added or deleted in the reexamination proceeding") (emphasis 24 added). Thus, the reexamination proceeding will not even resolve all of Google's 25 invalidity challenges, much less the entire lawsuit, further indicating that even with 26 a stay--at best--work on this lawsuit will be deferred, not avoided. 27 Google could have sought reexamination instead of filing this lawsuit.
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NETLIST, INC.'S OPPOSITION TO MOTION TO SHORTEN TIME CASE NO. C08 04144 SBA

28 Instead, it consumed the resources of this Court for two years and forced Netlist to

1 defend its patent in this forum. Netlist has devoted substantial resources to 2 litigating this case and has distinguished the prior art asserted by Google from the 3 asserted patent claims. Contrary to Google's assertions, a stay would unduly 4 prejudice and impose a clear tactical disadvantage on Netlist. This type of 5 manipulation of the Federal Courts should not be tolerated. 6 Finally, Google's requested hearing date of September 14, 2010 would 7 unnecessarily deprive Netlist of adequate time to respond to Google's Motion to 8 Stay. Under Local Rule 6-3(c) and Fed. R. Civ. P. 6, Netlist's opposition to this 9 Motion to Shorten Time is due on September 1, 2010; yet under Google's 10 proposed schedule, Netlist's Opposition to the Motion to Stay would be due on 11 September 3, 2010, merely two days later. Such a brief time period to prepare on 12 opposition to a motion seeking to stay a significant action shortly before trial is 13 severely prejudicial to Netlist. Given the lack of any compelling reason for 14 inflicting such prejudice on Netlist, the Court should hear Google's Motion to Stay 15 on its normal schedule. 16 17 18 19 20 21 22 23 24 25 26 27 28
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NETLIST, INC.'S OPPOSITION TO MOTION TO SHORTEN TIME CASE NO. C08 04144 SBA

CONCLUSION For the foregoing reasons, Google's Motion to Shorten Time should be denied. DATED: September 1, 2010 LEE TRAN & LIANG APLC

By: /s/ Daniel J. Taylor Daniel J. Taylor Attorneys for Plaintiff NETLIST, INC.