Google Inc. v. Netlist, Inc.

Filing 186

Statement of Non-Opposition to 182 Motion to Stay Pending Reexamination filed by Netlist, Inc.. (Pruetz, Adrian) (Filed on 9/9/2010) Modified on 9/10/2010 (jlm, COURT STAFF).

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PRUETZ LAW GROUP LLP Adrian M. Pruetz (Bar No. CA 118215) E-mail: [e-mail] Erica J. Pruetz (Bar No. CA 227712) E-mail: [e-mail] 200 N. Sepulveda Blvd. Suite 1525 El Segundo, CA 90245 Telephone: [phone] Facsimile: [phone] LEE TRAN & LIANG APLC Enoch H. Liang (Bar No. CA 212324) E-mail: [e-mail] Steven R. Hansen (Bar No. CA 198401) E-mail: [e-mail] Edward S. Quon (Bar No. 214197) E-mail: [e-mail] 601 S. Figueroa St., Suite 4025 Los Angeles, CA 90017 Telephone: [phone] Facsimile: [phone] Attorneys for Defendant and Counterclaimant NETLIST, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION

GOOGLE, INC., Plaintiff, vs. NETLIST, INC., Defendant.

CASE NO. C-08-04144 SBA [Related to CASE NO. C-09-05718 SBA] DEFENDANT NETLIST, INC.'S STATEMENT OF NON-OPPOSITION TO GOOGLE'S MOTION TO STAY Judge: Hon. Saundra Brown Armstrong

AND RELATED COUNTERCLAIMS.

NETLIST'S STATEMENT OF NON-OPPOSITION TO MOTION TO STAY

CASE NO. C-08-04144 SBA

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Netlist does not oppose Google's motion to stay this case until the United States Patent and Trademark Office concludes its Inter Partes Reexamination of Netlist's `386 patent. Netlist also believes that it is in the best interests of judicial economy and conserving the parties' resources to do so. However, for the record, Netlist does not agree with Google's other arguments in support of its motion. Google's motion to stay is untimely as its request for reexamination could have been filed at the outset of this litigation, instead of a few months before the trial date. Indeed, Google chose to preemptively file a declaratory judgment action in this Court on August 29, 2008 in an attempt to invalidate the `386 Patent. Google likely performed an analysis at that time to determine the nature of its invalidity case and also to determine which forum would be most favorable to Google's interests. Google could have easily decided at that time in the summer of 2008 to pursue a reexamination of the `386 Patent, but Google chose to initiate litigation in this Court instead. Furthermore, as Google has been aware of all of the alleged prior art cited in its reexamination request since at least April of 2009, 1 Google's feeble attempt to explain its failure to file its reexamination request at an earlier date strains all credibility. If its prior art invalidity arguments were as strong as Google would have this Court believe, Google would have filed a summary judgment motion of invalidity based on the prior art. Instead, it retreated from the forum of its choosing at the eleventh hour to seek refuge in the Patent Office. While Netlist takes serious issue with Google's excuse for its delay, and with the great inconvenience it has caused to Netlist, Netlist agrees that considerations of judicial economy and the parties' resources favor a stay of this matter until the pending reexamination of the `386 patent is concluded, and the validity of the patent confirmed. At that time, Google will be Google's reexamination request cites five documents that are alleged to be prior art and all can also be found in Google's invalidity contentions from April 2009: 1) U.S. Patent No. 4,368,515; 2) U.S. Patent No. 6,209,074; 3) U.S. Patent No. 6,414,868; 4) U.S. Patent Application No. 2006/0117152; and 5) an article entitled "Programmable Logic: What's it to Ya?" by Michael Barr. See Reexamination Request attached as Exh. 2 to the Declaration of Allison Altersohn in Support of Google Inc.'s Motion to Stay Pending Reexamination of U.S. Patent No. 7,289,386.
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NETLIST'S STATEMENT OF NON-OPPOSITION TO MOTION TO STAY

CASE NO. C-08-04144 SBA

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collaterally estopped from challenging the validity of the `386 Patent based on the prior art, 35 U.S.C. § 315(c), making the trial of this matter simpler and more efficient.

Dated:

September 9, 2010

PRUETZ LAW GROUP LLP

By:

/s/ Adrian M. Pruetz Adrian M. Pruetz Attorneys for Defendant and Counterclaimant NETLIST, INC.

NETLIST'S STATEMENT OF NON-OPPOSITION TO MOTION TO STAY

CASE NO. C-08-04144 SBA