Netlist, Inc. v. Google Inc.

Filing 36

ANSWER/REPLY to Counterclaim with Jury Demand, filed by Netlist, Inc.. (Pruetz, Adrian) (Filed on 3/8/2010) Modified on 3/9/2010 (jlm, COURT STAFF).

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Case4:09-cv-05718-SBA Document36 Filed03/08/10 Page1 of 11 1 PRUETZ LAW GROUP LLP 2 3 4 5 6 7 8 Enoch H. Liang (Bar No. 212324) 9 ehl@ltlcounsel.com 10 11 12 13 14 16 17 18 19 20 21 NETLIST, INC., 22 23 24 25 26 27 28 Plaintiff Netlist, Inc.s Reply to Google Inc.s Counterclaims vs. GOOGLE INC., Defendant. Plaintiff, CASE NO. CV09-05718-SBA PLAINTIFF NETLIST, INC.'S REPLY TO DEFENDANT GOOGLE INC.'S COUNTERCLAIMS [JURY TRIAL DEMANDED] LEE TRAN & LIANG APLC Adrian M. Pruetz (Bar No. 118215) ampruetz@pruetzlaw.com Erica J. Pruetz (Bar No. 227712) ejpruetz@pruetzlaw.com 200 N. Sepulveda Blvd., Suite 1525 El Segundo, CA 90245 Phone: 310.765.7650 Fax: 310.765.7641 Steven R. Hansen (Bar No. 198401) srh@ltlcounsel.com Edward R. Quon (Bar No. 214197) eq@ltlcounsel.com 601 S. Figueroa Street, Suite 4025 Los Angeles, CA 90017 Phone: 213.612.3737 Fax: 213.612.3773 NETLIST, INC. UNITED STATES DISTRICT COURT NOERTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION 15 Attorneys for Defendant Case4:09-cv-05718-SBA Document36 Filed03/08/10 Page2 of 11 1 Plaintiff Netlist, Inc. ("Netlist" or "Plaintiff"), by and through its undersigned 2 counsel, hereby files its Reply and Affirmative Defenses to Defendant Google Inc.s 3 ("Google" or "Defendant") Counterclaims (the "Counterclaims"), as follows: 4 5 6 1. COUNTERCLAIMS The Parties Netlist admits that Google has asserted that it is a corporation organized 7 and existing under the laws of the State of Delaware, with its principal place of 8 business at 1600 Amphitheatre Parkway, Mountain View, California 94043. 9 2. Netlist admits that it is a corporation organized and existing under the 10 laws of the state of Delaware, and its principal place of business is located at 51 11 Discovery, Irvine, California 92618. 12 13 3. Jurisdiction And Venue Netlist admits that the court has subject matter jurisdiction over claims 14 arising under 28 U.S.C. §§ 1331, 1367, 1338(a) and 2202. Netlist denies the 15 remaining allegations in paragraph 3. 16 17 18 19 20 5. 6. 7. 4. Netlist admits the allegations in paragraph 4. Factual Background Netlist admits the allegations in paragraph 5. Netlist denies the allegations in paragraph 6. Netlist admits that there is an actual case or controversy concerning 21 Googles infringement of the ,,912 Patent. Except as expressly admitted herein, 22 Netlist denies the allegations of paragraph 7. 23 24 25 27 28 8. 9. 10. COUNT ONE Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,619,912 Netlists responses to paragraphs 1 through 7 are incorporated by Netlist admits the allegations of paragraph 9. Netlist denies the allegations of paragraph 10. -1Plaintiff Netlist, Inc.s Reply to Google Inc.s Counterclaims 26 reference. Case4:09-cv-05718-SBA Document36 Filed03/08/10 Page3 of 11 1 2 3 4 5 7 8 9 10 11 12 13 11. 12. Netlist denies the allegations of paragraph 11. Netlist denies the allegations of paragraph 12. COUNT TWO Declaratory Judgment of Invalidity of U.S. Patent No. 7,619,912 13. 14. 15. 16. 17. Netlists responses to paragraphs 1 through 12 are incorporated by Netlist denies the allegations of paragraph 14. Netlist denies the allegations of paragraph 15. Netlist denies the allegations of paragraph 16. Netlist denies the allegations of paragraph 17. COUNT THREE Fraud/Deceit/Concealment 18. Netlist admits that JEDEC is a solid state technology standard setting 6 reference. 14 organization. Except as expressly admitted herein, Netlist denies the allegations of 15 paragraph 18. 16 17 19. 20. Netlist admits the allegations of paragraph 19. Netlist is without sufficient information or belief to enable it to answer 18 the allegations in paragraph 20, and, on such ground, denies the allegations of 19 paragraph 20. 20 21 22 21. 22. 23. Netlist denies the allegations of paragraph 21. Netlist denies the allegations of paragraph 22. Netlist admits that JEDEC has a process by which attendees can 23 confirm their attendance at particular JEDEC meetings. Except as expressly 24 admitted herein, Netlist denies the allegations of paragraph 23. 25 24. Netlist admits that the application for the ,,912 patent was filed on 26 September 27, 2007. Netlist also admits that the application for the ,,912 Patent is a 27 continuation of U.S. Patent Application No. 11/173,175, which was filed on Jul. 1, 28 2005 and issued as U.S. Patent No. 7,289,386. Netlist further admits that the -2Plaintiff Netlist, Inc.s Reply to Google Inc.s Counterclaims Case4:09-cv-05718-SBA Document36 Filed03/08/10 Page4 of 11 1 application for the ,,912 Patent claims the benefit of U.S. Provisional Patent 2 Application No. 60/588,244, filed on Jul. 15, 2004, U.S. Provisional Patent 3 Application No. 60/550,668, filed on Mar. 5, 2004, and U.S. Provisional Patent 4 Application No. 60/575,595, filed on May 28, 2004. Netlist denies any remaining 5 allegations of paragraph 24. 6 7 25. 26. Netlist denies the allegations of paragraph 25. Netlist admits that a set of June 2007 minutes of the JEDEC JC-45 8 Committee meeting refer to an "FYI Showing" made by Intel concerning an "AMB 9 Quad Rank Support" proposal. Netlist also admits that a set of minutes which 10 appear to be for an August 2007 meeting of a JEDEC JC-45 Committee, but which 11 also bear the dates August 29-30, 2006, refer to a discussion by Intel concerning 12 "FB DIMM Quad Rank SPD Bytes." Netlist further admits that a set of December 13 2007 minutes of a JEDEC JC-45 Committee meeting refer to a ballot review for an 14 "FB DIMM Quad Rank SPD Bytes" proposal. Except as expressly admitted herein, 15 Netlist denies the allegations of paragraph 26. 16 27. Netlist admits that the names Mario Martinez, Hyun Lee and Jeff 17 Solomon appear on a set of minutes for a June 2007 JEDEC JC-45 committee 18 meeting and that the same set of minutes refers to an "FYI Showing" made by Intel 19 concerning an "AMB Quad Rank Support" proposal. Netlist also admits that the 20 same meeting minutes state that "In response to a question by the secretary, Mr. 21 Tsang (Intel) indicated that IP filings are likely and he will pursue this information. 22 He further indicated that Intel would likely be willing to meet the JEDEC RAND 23 terms for any such IP." Netlist further admits that Jeff Solomon is a named 24 inventor on the ,,386 and ,,912 patents. Except as expressly admitted herein, Netlist 25 denies the allegations of paragraph 27. 26 28. Netlist admits that name Mario Martinez appears on a set of JEDEC 27 JC-45 meeting minutes which appear to be for the period August 29-30, 2007 but 28 which also bear the dates August 29-30, 2006. Netlist also admits that the same -3Plaintiff Netlist, Inc.s Reply to Google Inc.s Counterclaims Case4:09-cv-05718-SBA Document36 Filed03/08/10 Page5 of 11 1 meeting minutes reference a discussion by Intel concerning an "FB DIMM Quad 2 Rank SPD Bytes" proposal. Netlist further admits that the same meeting minutes 3 state "Motion by Intel and seconded by Netlist to authorize the SPD task group to 4 issue a committee ballot on the material." Except as expressly admitted herein, 5 Netlist denies the allegations of paragraph 28. 6 29. Netlist admits that the name Mario Martinez appears on a set of 7 meeting minutes for a December 2007 JEDEC JC-45 committee meeting and that 8 the same set of meeting minutes references a ballot for an "FBDIMM Quad Rank 9 SPD Bytes" proposal and states that "Netlist indicated that it may have some IP that 10 may apply to the quad rank logic and DIMM designs. Netlist will abide by the 11 JEDEC patent policy and provide a RAND letter in a timely manner." Netlist also 12 admits that JEDEC Committee Ballot Records indicate that on or before November 13 28, 2007, a vote was taken on an "FBDIMM Quad Rank SPD Bytes" proposal 14 sponsored by Micron and that the same Committee Ballot Records state that "Netlist 15 may have some IP that might apply to any Quad Rank logic and DiMM design 16 ballots. Netlist will abide by the JEDEC patent policy and will provide a RAND 17 letter in a timely manner." Netlist additionally admits that the name Mario Martinez 18 appears on a set of meeting minutes for a December 2007 JEDEC JC-40 committee 19 meeting and that the same set of meeting minutes references a ballot for an "AMB 20 Quad Rank Support" proposal and states that "Netlist indicated that it may have 21 some IP that may apply to the ballot material-Mr. Martinez indicated that Netlist 22 will abide by the JEDEC patent policy and a RAND letter will be provided in a 23 timely manner." Netlist further admits that JEDEC Committee Ballot Records 24 indicate that on or before November 29, 2007 a vote was taken on an "AMB Quad 25 Rank Support Standard" sponsored by Intel. Netlist further admits that the same 26 Committee Ballot Records state that "Netlist may have some IP that might apply to 27 any Quad Rank logic and DiMM design ballots. Netlist will abide by the JEDEC 28 Plaintiff Netlist, Inc.s Reply to Google Inc.s Counterclaims -4- Case4:09-cv-05718-SBA Document36 Filed03/08/10 Page6 of 11 1 patent policy and will provide a RAND letter in a timely manner." Except as 2 expressly admitted herein, Netlist denies the allegations of paragraph 29. 3 30. Netlist admits that on January 8, 2008, Jayesh Bhakta sent a letter on 4 behalf of Netlist to Mian Quddus which bears the subject line "Re: U.S. Patent No. 5 7,289,386" and that the letter speaks for itself. Netlist further admits that Jayesh 6 Bhakta is a named inventor on the ,,386 and ,,912 patents. Except as expressly 7 admitted herein, Netlist denies the allegations of paragraph 30. 8 31. Netlist admits that at least certain portions of an Intel proposal for 9 AMB Quad Rank Support were incorporated in a JEDEC Standard bearing the 10 standard number JESD82-20A. Except as expressly admitted herein, Netlist denies 11 the allegations of paragraph 31. 12 13 14 15 16 17 32. 33. 34. 35. 36. 37. Netlist denies the allegations of paragraph 32. Netlist denies the allegations of paragraph 33. Netlist denies the allegations of paragraph 34. Netlist denies the allegations of paragraph 35. Netlist denies the allegations of paragraph 36. Netlist admits that it has alleged infringement by Google of the ,,912 18 Patent. Except as expressly admitted herein, Netlist denies the allegations of 19 paragraph 37. 20 21 22 23 25 26 27 28 39. 40. 41. 42. 43. 24 reference. Netlist denies the allegations of paragraph 40. Netlist denies the allegations of paragraph 41. Netlist denies the allegations of paragraph 42. Netlist denies the allegations of paragraph 43. -538. Netlist denies the allegations of paragraph 38. COUNT FOUR Negligent Misrepresentation Netlists responses to paragraphs 18 through 38 are incorporated by Plaintiff Netlist, Inc.s Reply to Google Inc.s Counterclaims Case4:09-cv-05718-SBA Document36 Filed03/08/10 Page7 of 11 1 44. Netlist admits that it has alleged infringement by Google of the ,,912 2 Patent. Except as expressly admitted herein, Netlist denies the remaining 3 allegations of paragraph 44. 4 5 6 7 9 46. 47. 8 reference. Netlist admits that JEDEC has a process by which attendees can 10 confirm their attendance at particular JEDEC meetings. Except as expressly 11 admitted herein, Netlist denies the allegations of paragraph 47. 12 13 14 48. Netlist denies the allegations of paragraph 48. Prayer for Relief The Prayer for Relief does not contain any allegations. To the extent any 45. Netlist denies the allegations of paragraph 45. COUNT FIVE Breach of Contract Netlists responses to paragraphs 18 through 45 are incorporated by 15 response is required to any paragraph of Defendants Prayer for Relief, including 16 without limitation paragraphs a-l, Netlist denies paragraphs a through l of 17 Defendants Prayer for Relief. 18 19 AFFIRMATIVE DEFENSES Except where specifically noted below, each of the affirmative defenses 20 alleged is asserted as to each purported Counterclaim. By alleging the defenses set 21 forth below, Netlist is in no way agreeing or conceding that it has the burden of 22 proof or the burden of persuasion on any of the issues raised by the defenses. 23 Netlist reserves all affirmative defenses under Rule 8(c) of the Federal Rules of 24 Civil Procedure and any other defenses, at law or in equity, that may be available 25 now or may become available in the future based on discovery or any other factual 26 investigation in the case. 27 28 Plaintiff Netlist, Inc.s Reply to Google Inc.s Counterclaims -6- Case4:09-cv-05718-SBA Document36 Filed03/08/10 Page8 of 11 1 2 3 4 6 7 8 9 10 11 13 14 16 17 12 in whole or in part. FIRST AFFIRMATIVE DEFENSE The Counterclaims fail to state any claims upon which relief can be granted. SECOND AFFIRMATIVE DEFENSE The Counterclaims are barred on the ground that Google has unclean hands THIRD AFFIRMATIVE DEFENSE The Counterclaims are barred under the doctrine of estoppel. FOURTH AFFIRMATIVE DEFENSE The Counterclaims are barred under the doctrine of waiver. FIFTH AFFIRMATIVE DEFENSE Google has failed to make reasonable efforts to mitigate its damages, if any, SIXTH AFFIRMATIVE DEFENSE Google has failed to take reasonable and necessary steps to avoid damages, if SEVENTH AFFIRMATIVE DEFENSE Google at all times gave their consent, expressly or impliedly, to any and all 5 with respect to the matters alleged therein. 15 any, alleged in the Counterclaims. 18 acts, omissions, representations and course of conduct of Netlist alleged in the 19 Counterclaims. 20 21 23 24 26 27 22 litigation. NINTH AFFIRMATIVE DEFENSE Some or all of the Counterclaims are barred in that Netlist has fully performed TENTH AFFIRMATIVE DEFENSE The Counterclaims are not exceptional under 35 U.S.C. §285 and Google is EIGHTH AFFIRMATIVE DEFENSE Google is not entitled to recovery of its reasonable costs and expense of 25 under any contract, obligation or agreement alleged therein. 28 not entitled to recovery of attorneys fees, expert witness fees and costs. -7Plaintiff Netlist, Inc.s Reply to Google Inc.s Counterclaims Case4:09-cv-05718-SBA Document36 Filed03/08/10 Page9 of 11 1 2 4 5 6 7 3 Counterclaims. ELEVENTH AFFIRMATIVE DEFENSE Google lacks standing to sue on the allegations contained in its TWELFTH AFFIRMATIVE DEFENSE The Counterclaims are ambiguous and uncertain. THIRTEENTH AFFIRMATIVE DEFENSE The Counterclaims are barred in that Google ratified, consented to, had 8 knowledge of, and approved, ratified and accepted the actions in question with full 9 knowledge of the facts and matters of which Google now complains. 10 11 13 14 FOURTEENTH AFFIRMATIVE DEFENSE Google has expressly or impliedly by operation of law excused Netlist from FIFTEENTH AFFIRMATIVE DEFENSE The Counterclaims fail to state facts upon which relief may be based and 12 any and all obligations, if any relating to the subject matter of the Counterclaims. 15 Google is barred from recovery therein by reason of a failure of a condition 16 precedent. 17 18 20 21 SIXTEENTH AFFIRMATIVE DEFENSE The failure of conditions subsequent to the allegations contained in the SEVENTEENTH AFFIRMATIVE DEFENSE The Counterclaims fail to state facts upon which relief may be based and 19 Counterclaims discharge Netlists obligations to Google. 22 Google is barred from any recovery therein on the grounds that Netlist was and is 23 justified in its non-performance in that Google did not perform in accordance with 24 the terms and conditions of the contract alleged in the Counterclaims. 25 26 28 Plaintiff Netlist, Inc.s Reply to Google Inc.s Counterclaims EIGHTEENTH AFFIRMATIVE DEFENSE Google is barred in whole or in part from any recovery in that Google 27 voluntarily and knowingly exposed itself to the alleged conditions that give rise to -8- Case4:09-cv-05718-SBA Document36 Filed03/08/10 Page10 of 11 1 this lawsuit and they assumed the risk of all harm and damages as are complained of 2 in the Counterclaims. 3 4 NINETEENTH AFFIRMATIVE DEFENSE Google is barred in whole or in part from any recovery in that Google, its 5 agents and/or employees were negligent and/or guilty of other intentional 6 misconduct or conduct which was unlawful and/or tortuous which did directly, 7 legally and/or proximately cause and or contribute to the incident complained of in 8 the Counterclaims and any damages suffered, if any there were, were the direct 9 lawful and proximate result to the conduct of Google and its agents and/or 10 employees and not Netlist. 11 12 14 15 TWENTIETH AFFIRMATIVE DEFENSE Some or all of the Counterclaims are barred in that Netlist has fully performed TWENTY-FIRST AFFIRMATIVE DEFENSE Google has failed to take reasonable and necessary steps to avoid its damages, 13 under any contract, obligation or agreement alleged therein. 16 if any, alleged in the Counterclaims. To the extent such damages, if any, were 17 incurred, Googles recovery, if any, should be reduced accordingly. 18 19 TWENTY-SECOND AFFIRMATIVE DEFENSE The Counterclaims fail to state facts upon which relief may be based and 20 Google is barred from recovery of punitive and/or exemplary damages therein on 21 the grounds such damages constitute an excessive fine in violation of Amendment 8 22 of the Constitution of the United States and Amendment 14 of the United States 23 Constitution and also by Article One, Section 17 of the California State Constitution 24 and as an unjust and drastic interference with a fundamental right guaranteed to all 25 people in the State and Nation. 26 27 28 Plaintiff Netlist, Inc.s Reply to Google Inc.s Counterclaims -9- Case4:09-cv-05718-SBA Document36 Filed03/08/10 Page11 of 11 1 2 RESERVATION OF ADDITIONAL DEFENSES Discovery in this action has not yet commenced and Netlist continues to 3 investigate the allegations set forth in the Counterclaims. Netlist specifically gives 4 notice that it intends to rely upon such other defenses as may become available by 5 law, or pursuant to statute, or discovery proceedings in this case, and hereby 6 reserves the right to assert such additional defenses. 7 8 10 11 12 14 16 17 DATED: March 8, 2010 18 19 20 21 22 23 24 25 26 27 28 Plaintiff Netlist, Inc.s Reply to Google Inc.s Counterclaims PRAYER FOR RELIEF 1. 2. 3. 4. That the Counterclaims be dismissed in their entirety, with prejudice; That Google take nothing by way of its Counterclaims; That Netlists Claims be declared exceptional pursuant to 35 U.S.C. § That Netlist be awarded its costs, attorneys fees and such other and 9 WHEREFORE, Netlist prays as follows: 13 285; and 15 further relief as may be just and proper. PRUETZ LAW GROUP LLP By: /s/ Adrian M. Pruetz Adrian M. Pruetz Attorneys for Plaintiff Netlist, Inc. -10-

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