Netlist, Inc. v. Google Inc.

Filing 18

ANSWER to Complaint with Jury Demand for Patent Infringement, COUNTERCLAIMS against Netlist, Inc., filed by Google Inc.. (Ezgar, Geoffrey) (Filed on 2/12/2010) Modified on 2/16/2010 (jlm, COURT STAFF).

Netlist, Inc. v. Google Inc.

Doc. 18

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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 pending) [e-mail] ROBERT F. PERRY [e-mail] DANIEL C. MILLER (pro hac vice pending) [e-mail] MARK H. FRANCIS (pro hac vice pending) [e-mail] KING & SPALDING LLP 1185 Avenue of the Americas New York, NY 10036-4003 Telephone: [phone] Facsimile: [phone] Attorneys for Defendant GOOGLE INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION NETLIST, INC., Plaintiff, v. GOOGLE INC. Defendant. Case No. 09-cv-05718-SBA Honorable: Judge Saundra B. Armstrong

GOOGLE INC.'S ANSWER TO PLAINTIFF'S COMPLAINT FOR PATENT INFRINGEMENT; AND ASSERTION OF COUNTERCLAIMS JURY TRIAL DEMANDED

GOOGLE INC.'S ANSWER TO PLAINTIFF'S COMPLAINT FOR PATENT INFRINGEMENT; AND ASSERTION OF COUNTERCLAIMS CIVIL ACTION NO. CV 09-05718

Dockets.Justia.com

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GOOGLE INC.'S ANSWER TO PLAINTIFF'S COMPLAINT FOR PATENT INFRINGEMENT; AND ASSERTION OF COUNTERCLAIMS Defendant Google Inc. ("Google") answers the Complaint of Netlist, Inc. ("Netlist") as

4 follows. 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 7. 6. 4. 1. Jurisdiction and Venue Google admits that Complaint purports to be an action arising under the United

States patent laws. Google denies any remaining allegations of paragraph 1 of the Complaint. 2. Google admits that this Court has subject matter jurisdiction over actions arising

under 28 U.S.C. §§ 1331 and 1338(a). Google denies any remaining allegations of paragraph 2 of the Complaint. 3. Google admits that venue is proper in the Northern District of California. Google

denies any remaining allegations of paragraph 3. The Parties Google admits that Netlist, Inc. has asserted that it is a corporation organized and

existing under the laws of the State of Delaware, with its principal place of business at 51 Discovery in Irvine, California 92618 5. Google admits that Google Inc. is a Delaware corporation with a principal place

of business at 1600 Amphitheatre Parkway, Mountain View, California 94043. Google admits that Google Inc. is authorized to do business in California. Intradistrict Assignment Google admits that under Civil Local Rules 3-2(c) and 3-5, Intellectual Property

Actions may be assigned on a district-wide basis. Google denies any remaining allegations of paragraph 6 of the Complaint. Facts Relevant to the Claim Google is without knowledge or information sufficient to form a belief as to the

26 truth of the allegations of paragraph 7, and therefore denies them. 27 28 2
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8.

Google admits that U.S. Patent No. 7,619,912 ("the `912 patent") is titled

"Memory Module Decoder" and bears an issuance date of November 17, 2009. Google further admits that what purports to be a copy of the `912 patent was attached to Netlist's Complaint as Exhibit 1. Google is without knowledge or information sufficient to form a belief as to the truth of any remaining allegations of paragraph 8, and therefore denies them. 9. Google denies the allegations of paragraph 9. Claim for Patent Infringement 10. Paragraph 10 of the Complaint does not contain any allegations, and therefore no

9 response is required. Google incorporates its responses to paragraphs 1 through 9 of this Answer 10 as if fully set forth herein. 11 12 13 14 11. 12. 13. 14. Google denies the allegations of paragraph 11. Google denies the allegations of paragraph 12. Google denies the allegations of paragraph 13. The Prayer for Relief does not contain any allegations. To the extent any

15 response is required to any paragraph of Plaintiff's Prayer for Relief, including without limitation 16 paragraphs 1 through 9, Google denies paragraphs 1 through 9 of Plaintiff's Prayer for Relief. 17 18 19 1. Affirmative Defenses First Defense Google does not infringe and has not infringed (directly, contributorily, or by

20 inducement) any claim of the `912 patent. 21 22 2. Second Defense The claims of the `912 patent are invalid for failure to satisfy one or more of the

23 requirements of Sections 100 et seq., 101, 102, 103, and 112 of Title 35 of the United States 24 25 26 27 28 3. Code. Third Defense The claims of the `912 patent are unenforceable, in whole or in part, by the

doctrines of laches, waiver, and/or estoppel, including prosecution history estoppel. 3
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Fourth Defense The claims of the `912 patent are unenforceable due to unclean hands. Fifth Defense Google has an implied or express license to the `912 patent. Sixth Defense Netlist has failed to state a claim upon which relief can be granted. Seventh Defense Any and all products or actions accused of infringement have substantial uses that

do not infringe and do not induce or contribute to the alleged infringement of the asserted claims of the `912 patent. Eighth Defense The owner of the `912 patent has dedicated to the public all methods, apparatus,

13 and products disclosed in the `912 patent, but not literally claimed therein, and is estopped from 14 claiming infringement by any such public domain methods, apparatus, or products. 15 16 9. Ninth Defense Netlist's claim for damages, if any, against Google for alleged infringement of the

17 `912 patent are limited by 35 U.S.C. §§ 286, 287, and 288. 18 19 20 21 22 23 24 25 26 27 28 1. 10. Tenth Defense This case is exceptional against Netlist under 35 U.S.C. § 285. COUNTERCLAIMS The Parties Google Inc. is a corporation organized and existing under the laws of the State of

Delaware, with its principal place of business at 1600 Amphitheatre Parkway, Mountain View, California 94043. 2. On information and belief, Netlist, Inc. is a corporation organized and existing

under the laws of the State of Delaware, with its principal place of business at 51 Discovery in Irvine, California 92618. 4
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Jurisdiction and Venue Subject to Google's affirmative defenses and denials, Google alleges that this

Court has jurisdiction over the subject matter of these Counterclaims under, without limitation, 28 U.S.C. §§ 1331, 1367, 1338(a), 2201, and 2202, and venue for these Counterclaims is proper in this district. 4. This Court has personal jurisdiction over plaintiff. Factual Background In its Complaint, Netlist asserts that Google has infringed U.S. Patent 7,619,912

("the `912 patent"). 6. 7. `912 patent. COUNT ONE Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,619,912 Google restates and incorporates by reference its allegations in paragraphs 1-7 of Google does not infringe any valid and enforceable claim of the `912 patent. Consequently, there is an actual case or controversy between the parties over the

its Counterclaims. 9. An actual case or controversy exists between Google and Netlist as to whether the

`912 patent is infringed by Google. 10. A judicial declaration is necessary and appropriate so that Google may ascertain

its rights regarding the `912 patent. 11. Google has not infringed and does not infringe, directly or indirectly, any valid

and enforceable claim of the `912 patent. 12. This is an exceptional case under 35 U.S.C. § 285 because Netlist filed its

Complaint with knowledge of the facts stated in this Counterclaim.

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COUNT TWO Declaratory Judgment of Invalidity of U.S. Patent No. 7,619,912 Google restates and incorporates by reference its allegations in paragraphs 1­12

4 of its Counterclaims. 5 14. An actual case or controversy exists between Google and Netlist as to whether the

6 `912 patent is invalid. 7 15. A judicial declaration is necessary and appropriate so that Google may ascertain

8 its rights as to whether the `912 patent is invalid. 9 16. The claims of the `912 patent are invalid under one or more of 35 U.S.C. §§ 100

10 et seq., 101, 102, 103, and 112. 11 17. This is an exceptional case under 35 U.S.C. § 285 because Netlist filed its

12 Complaint with knowledge of the facts stated in this Counterclaim. 13 14 15 16 17 18 19 20 18. COUNT THREE Fraud/Deceit/Concealment The Joint Electron Devices Engineering Council ("JEDEC") is the leading

developer of standards for the solid-state industry. 19. 20. 21. Upon information and belief, Netlist has been a member of JEDEC since 2000. Google has been a member of JEDEC since 2006. JEDEC Patent Policy requires its members to disclose to the other members any

issued patents or pending patent applications that are, or may be, relevant to pending or issued

21 standards. Therefore, Netlist, as a member of JEDEC, has a duty to disclose to its fellow JEDEC 22 members those patents and patent applications, including applications for patents, that are

23 relevant to pending or issued JEDEC standards. 24 25 26 27 28 22. JEDEC Patent Policy further requires that a JEDEC committee cannot consider a

standard that calls for the user of patented item or process unless, the JEDEC member who is the patent holder offers: (1) a license without compensation to all applicants desiring to utilize the patent for the purpose of implementing the standard(s); or (2) a license made available to all 6
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applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination. 23. Upon information and belief, at each JEDEC meeting, each person in attendance

must sign in and check a box agreeing to abide by the JEDEC Patent Policy and Netlist attendees conformed to this requirement. 24. Netlist filed the `912 patent on September 27, 2007, which patent is a

continuation of and claims priority to U.S. Patent No. 7,289,386 ("the `386 patent"), and which Netlist filed on July 1, 2005 and for which patent, Netlist claims a priority date of March 5, 2004. 25. Upon information and belief, Netlist has not yet met with the disclosure

requirements of JEDEC for the `912 patent. 26. In May, June, August, and December 2007 JEDEC JC-45 committee meetings,

Intel Corporation proposed an addition to JEDEC Standards, including at least JESD82-20, for the purpose of standardizing an implementation of a quad-rank FBDIMM design. 27. According to minutes from the June 2007 JEDEC JC-45 committee meeting, the

meeting opened with a review of the JEDEC patent policy. The meeting minutes also demonstrate that Intel made an extensive presentation of its quad-rank FB-DIMM design, after which Intel indicated that it would likely file related IP, which it would offer to license on JEDEC RAND terms. The meeting minutes also show that the June 2007 JEDEC JC-45 committee meeting was attended by three Netlist representatives: Mario Martinez, Hyun Lee, and Jeff Solomon (a named inventor on both the `386 and `912 patents). Upon information and belief, Netlist and its representative withheld the existence of any of Netlist's relevant patents and/or patent applications at this meeting from the JEDEC members. 28. According to minutes from the August 2007 JEDEC JC-45 committee meeting,

the meeting opened with a review of the JEDEC patent policy. The meeting minutes also indicate that Intel made a second presentation of its quad-rank FB-DIMM design, after which there was a motion by Intel and seconded by Netlist to authorize the task group to issue a committee ballot on the material. The meeting minutes also showed that the August 2007 7
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JEDEC JC-45 committee meeting was attended by one Netlist representative: Mario Martinez. Upon information and belief, Netlist and its representative withheld the existence of any of Netlist's patents and/or patent applications from the JEDEC members at this meeting. 29. According to minutes from the December 2007 JEDEC JC-45 committee

5 meeting, the meeting opened with a review of the JEDEC patent policy. Upon information and 6 7 belief, before the December 2007 JEDEC JC-45 committee meeting, JC-45 held and closed the vote on the Intel proposed changes, which meant that a member could not change their vote after

8 the close. The meeting minutes also indicate that there was a ballot review of Intel's proposed 9 addition to the standard of its quad-rank FB-DIMM design, after which Netlist indicated for the 10 first time they may have some IP that may apply to the quad rank logic and DIMM designs. The 11 meeting minutes further show that Netlist promised to abide by the JEDEC patent policy and 12 provide a RAND letter. The meeting minutes also showed that the December 2007 JEDEC JC13 45 committee meeting was attended by one Netlist representative: Mario Martinez. 14 30. On January 8 2008, Jayesh Bhakta (a named inventor on both the `386 and `912

15 patents) sent a letter on behalf of Netlist to Mian Quddus, the chairman of the JEDEC JC-45 16 17 18 19 20 21 22 23 24 25 26 committee identifying only the `386 patent as relevant to a JEDEC standard and offering a license on RAND terms. This letter did not identify patent application 11/862,931, which issued as the `912 patent, filed as a continuation of the `386 patent on September 27, 2007 and not published until March 20, 2008. As a result, there was no public information available to JEDEC members to let them know that a continuation of the identified `386 patent had also been filed. To the extent that Netlist asserts that the `386 patent is relevant to JESD82-20A, which incorporates Intel's quad-rank FB-DIMM design introduced in JC-45 in June 2007, the `912 patent, a mere continuation of the `386 patent, should also have been disclosed. 31. The Intel proposed changes to JESD82-20 were incorporated in JESD82-20A.

The JEDEC members voted to issue the JESD82-20A standard, having all such JEDEC members, except for Netlist representatives, vote unaware of the patent application that led to the

27 `912 patent. 28 8
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32.

Upon information and belief, Netlist has not offered to JEDEC members who

practice JESD82-20A either: (1) a license without compensation to all applicants desiring to utilize the patent for the purpose of implementing the standard(s); or (2) a license made available

4 to all applicants under reasonable terms and conditions that are demonstrably free of any unfair 5 discrimination. 6 33. Netlist's concealment of the application that led to the `912 patent from JEDEC

7 members was a misrepresentation of facts that it knew to be relevant. Netlist has affirmatively 8 attempted to disclose the `386 patent as relevant to certain JEDEC standards, with knowledge 9 that they had filed a continuation of that patent, which was to issue as the `912 patent. 10 34. Under JEDEC Patent Policy, of which Netlist was aware, Netlist had a duty to

11 disclose the patent application that led to the `912 patent to JEDEC and yet failed to make that 12 disclosure to the JEDEC members. 13 35. Netlist's silence as to the patent application that led to the `912 patent induced the

14 other JEDEC members to rely upon that standard being free of intellectual property 15 encumbrances. The JEDEC members, including Google, were without information regarding the 16 pending patent application that was to issue as the `912 patent when JEDEC issued the JESD8217 20A standard. 18 36. JEDEC, including Google, justifiably relied on that silence and issued the

19 standard without knowledge of the `912 patent. If Google and the other JEDEC members had 20 been made aware of the patent application that led to the `912 patent, at a minimum, Netlist 21 would have been required to offer a license, and the JESD82-20A standard may not have issued. 22 Netlist did not offer to license the patent application that was to issue as the `912 patent to 23 JEDEC members, as would be required under the JEDEC patent provisions. 24 37. Because of Netlist's concealment, Google is now potentially incurring damages.

25 Netlist has alleged infringement by Google of the `912 patent in bringing this action. As a result, 26 27 28 9
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Google is now expending resources defending a litigation with regard to a patent, the disclosure

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of which was withheld from Google, and other JEDEC members, at the time they voted to ratify the JESD82-20A standard. 38. As a result, Netlist has committed the torts of fraud and deceit by concealment

against Google. COUNT FOUR Negligent Misrepresentation 39. 40. Google incorporates paragraphs 18-37 above. As discussed above, Netlist's concealment of the application that led to the `912

patent from JEDEC members was a misrepresentation of facts that it knew to be relevant. Netlist has affirmatively attempted to disclose the `386 patent as relevant to certain JEDEC standards, with knowledge that they had filed a continuation of that patent, which was to issue as the `912 patent. 41. As discussed above, under JEDEC Patent Policy, of which Netlist was aware,

Netlist had a duty to disclose the patent application that led to the `912 patent to JEDEC and yet failed to make that disclosure to the JEDEC members. 42. As discussed above, Netlist's silence as to the patent application that led to the

`912 patent induced the other JEDEC members to rely upon that standard being free of intellectual property encumbrances. The JEDEC members, including Google, were without information regarding the pending patent application that was to issue as the `912 patent when JEDEC issued the JESD82-20A standard. 43. As discussed above, JEDEC, including Google, justifiably relied on that silence

and issued the standard without knowledge of the `912 patent. If Google and the other JEDEC members had been made aware of the patent application that led to the `912 patent, at a minimum, Netlist would have been required to offer a license, and the JESD82-20A standard may not have issued. Netlist did not offer to license the patent application that was to issue as the `912 patent to JEDEC members, as would be required under the JEDEC patent provisions.

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44.

Because of Netlist's concealment, Google is now potentially incurring damages.

Netlist has alleged infringement by Google of the `912 patent in bringing this action. As a result, Google is now expending resources defending a litigation with regard to a patent, the disclosure of which was withheld from Google, and other JEDEC members, at the time they voted to ratify the JESD82-20A standard. 45. Netlist has engaged in the tort of negligent misrepresentation for Netlist's

omission in its duty to disclose under the JEDEC Patent Policy. COUNT FIVE Breach of Contract 46. 47. Google incorporates paragraphs 18-37 above. Google is a third party beneficiary of the JEDEC membership agreements and

12 JEDEC Patent Policy. Upon information and belief, every JEDEC member or guest who attends 13 14 15 a JEDEC meeting must sign in and check a box agreeing that they will abide by the JEDEC patent policy. Had Netlist abided by the JEDEC Patent Policy, they would have disclosed the patent application that led to the `912 patent and offered a license to JEDEC members, including

16 Google. As a result, Google would have a license to the `912 patent if Netlist has performed the 17 18 19 20 21 22 23 24 25 26 27 28 d. obligations required under the JEDEC Patent Policy. 48. Netlist has failed to abide by the JEDEC Patent Policy, thereby breaching its

implied or express contract as a JEDEC member. Prayer for Relief WHEREFORE, Google prays for judgment as follows: a. b. c. A judgment dismissing Netlist's Complaint against Google with prejudice; A judgment in favor of Google on all of its Counterclaims; A declaration that Google has not infringed, contributed to the infringement of, or induced others to infringe, either directly or indirectly, any valid and enforceable claims of the `912 patent; A declaration that the `912 patent is invalid; 11
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e.

A judgment that Netlist's claims are barred by the doctrines of laches, equitable estoppel, and/or waiver;

f. g. h. i.

A judgment that the `912 patent is unenforceable due to unclean hands; A judgment that Netlist committed the torts of fraud and deceit; A judgment that Netlist committed the tort of negligent misrepresentation; A judgment that Netlist specifically perform its obligations under the JEDEC Patent Policy;

j.

An award of damages adequate to compensate Google for Netlist's tortious acts and breach of contract;

k.

A judgment that this case is exceptional and an award to Google of its reasonable costs and expenses of litigation, including attorneys' fees and expert witness fees; and

l.

Such other and further relief as this Court may deem just and proper. Jury Demand

Netlist's demand that all issues be determined by a jury trial does not state any allegation, and Google is not required to respond. To the extent that any allegations are included in the demand, Google denies these allegations.

DATED: February 12, 2010

KING & SPALDING LLP

By: /s/ Geoffrey Ezgar __ Geoffrey Ezgar (SBN 184243) Attorneys for Defendant GOOGLE INC.

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DEMAND FOR JURY TRIAL In accordance with Rule 38 of the Federal Rules of Civil Procedure, Google Inc.

3 respectfully demands a jury trial of all issues triable to a jury in this action. 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 13
GOOGLE INC.'S ANSWER TO PLAINTIFF'S COMPLAINT FOR PATENT INFRINGEMENT; AND ASSERTION OF COUNTERCLAIMS CIVIL ACTION NO. CV 09-05718

DATED: February 12, 2010

KING & SPALDING LLP

__ By: /s/ Geoffrey Ezgar Geoffrey Ezgar (SBN 184243) Attorneys for Defendant GOOGLE INC.