Google Inc. v. Netlist, Inc.

Filing 187

Reply Memorandum re 182 Motion to Stay Pending Reexamination of U.S. Patent No. 7,289,386 filed by Google Inc.. (Ezgar, Geoffrey) (Filed on 9/10/2010) Modified on 9/13/2010 (jlm, COURT STAFF).

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TIMOTHY T. SCOTT (SBN 126971/[e-mail]) GEOFFREY M. EZGAR (SBN 184243/ [e-mail]) LEO SPOONER III (SBN 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]) DANIEL MILLER (pro hac vice/[e-mail]) SUSAN KIM (pro hac vice/[e-mail]) MARK H. FRANCIS (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. UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION GOOGLE INC., Plaintiff, v. NETLIST, INC., Defendant. GOOGLE INC.'S REPLY IN SUPPORT OF ITS MOTION TO STAY PENDING REEXAMINATION OF U.S. PATENT NO. 7,289,386 Date: Time: Place: Judge: September 21, 2010 1:00 p.m. Courtroom 3 Hon. Saundra Brown Armstrong Case No. CV08-04144 SBA [Related to Case No: CV09-05718 SBA]

GOOGLE'S REPLY ISO ITS MOTION TO STAY PENDING REEXAMINATION Case No. CV08-04144 SBA

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Plaintiff Google Inc. ("Google") is in complete agreement with the significant aspect of Netlist, Inc.'s ("Netlist") Statement of Non-Opposition--that judicial economy dictates that the present case be stayed until the conclusion of the pending reexamination of U.S. Patent No. 7,289,386 ("the `386 Patent"). As Netlist readily acknowledges in its Statement of Non-

Opposition, it is in the best interests of preserving judicial economy to have the present case stayed thereby conserving the valuable resources of this Court, and of course the parties to the action. Google files this Reply merely to correct a misstatement of law from Netlist and to register its disagreement with Netlist's gratuitous statements concerning the timing of Google's Motion. Netlist argues incorrectly that once the current reexamination of the `386 Patent is concluded, Google will be "collaterally estopped from challenging the validity of the `386 Patent based on the prior art... making the trial of the matter simpler and more efficient." omitted). Google agrees that if the `386 patent survives reexamination with its claims in a form capable of assertion against Google, then a trial--if any--would be simpler and far more efficient. But Google will not be completely precluded from raising prior art invalidity arguments, as Netlist contends. The inter partes reexamination estoppel on use of prior art is limited only to patents or printed publications1 that could have been raised in the reexamination.2 Google will be permitted to raise prior art sales and public uses, as well as newly discovered printed publications and any non-prior art invalidity arguments. (D.I. 186) (citation

"Substantial new questions of patentability must be based on prior art patents or printed publications. Other matters, such as public use or sale [under 35 U.S.C. 102(b)], inventorship, 35 U.S.C. 101, 35 U.S.C. 112, fraud, etc., will not be considered ... and should not be presented in the request." U.S. Patent Office Manual of Patent Examining Procedure 2617. 2 "A third-party requester whose request for an inter partes reexamination results in an order under section 313 is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings." 35 U.S.C. § 315(c) (emphasis added).
GOOGLE'S REPLY ISO ITS MOTION TO STAY PENDING REEXAMINATION Case No. CV08-04144 SBA

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Google respectfully submits that, in view of the reasoning presented in its opening brief, and in further view of the Netlist's non-opposition paper, a stay is appropriate in this case until the conclusion of the reexamination proceedings for the `386 Patent.

DATED: September 10, 2010

KING & SPALDING LLP By: /s/ Geoffrey Ezgar Geoffrey Ezgar (SBN 184243) Attorneys for Plaintiff GOOGLE INC. .

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GOOGLE'S REPLY ISO ITS MOTION TO STAY PENDING REEXAMINATION Case No. CV08-04144 SBA