NETLIST, INC., A Delaware
Corporation
Plaintiff,
v.
INPHI CORPORATION, A Delaware
Corporation
Defendant.
Case No. 2:09-cv-06900-FMO(RNBx)
JOINT STATUS REPORT
REGARDING STATUS OF
REEXAMINATION PROCEEDINGS
Honorable Fernando M. Olguin
II. NETLIST AND INPHI PROPOSALS REGARDING THE CASE
A. Netlist Proposal This case has been stayed for over a decade of extensive post-grant review proceedings challenging the validity of, among others, the asserted ’912 Patent. After the Court of Appeals for the Federal Circuit endorsed the validity of the reexamined claims of the ’912 Patent, the Patent and Trademark Office issued a Reexamination Certificate on February 8, 2021. Several days after this, successor counsel for Netlist appeared in this matter on February 12, 2021. Successor counsel for Netlist only received the case file from predecessor counsel—in hard copy file boxes—a week before the filing of the Parties’ last Joint Status Report. In view of the current procedural posture and circumstances of this case, Netlist respectfully requests that (1) the case be reopened, and (2) a CMC convene at which a scheduling order, hopefully mutually agreed among the parties, could be considered and entered by this Court. To the extent the issue of intervening rights might be amenable to early determination, Netlist would be willing to explore that option, along with some limited accompanying discovery to enable a candid assessment by each side of the claims and defenses following the Reexamination Certificate of the ’912 Patent. Finally, Netlist does not believe that substantive briefing of the kind Inphi includes in its portion of this filing belongs in a Joint Status Report of this nature, but reserves the right to respond to these arguments when it is necessary and appropriate.
B. Inphi Proposal As noted in the last joint status report, Netlist, in its First Amended Complaint filed in 2009, asserted that Inphi sold “components used in computer memory modules that incorporate the Netlist technology claimed in the ‘537 Patent, ‘912 Patent, and ‘274 Patent. The allegedly infringing products include but are not limited to the Inphi’s Isolation Memory Buffer or ‘iMB’” (First Amended Complaint ¶ 8). The First Amended Complaint did not identify any specific claim of these Asserted Patents that was infringed, instead generically alleging infringement of the patents. (First Amended Complaint ¶¶ 8-20). To date, Netlist has failed to identify any specific claim of the Asserted Patents that was allegedly infringed by any Inphi product, the iMB in particular. The Reexamination proceedings involving the Asserted Patents concluded that all claims of the ‘274 patent are invalid, all claims of the ‘537 patent that remain were substantively amended with additional limitations, and could not have been the basis for the original infringement allegations, and from the ‘912 patent, other than formerly dependent claims 16 and 17, all claims that remain were substantively amended with additional limitations, and could not have been the basis for the original infringement allegations. As to dependent claims 16 and 17, dependent claim 16 was amended into independent form during the reexamination, and there exists a defense of intervening rights with respect to claims 16 and 17. These facts demonstrate that there cannot be infringement and Netlist has not provided facts to show otherwise. The Inphi iMB is a semiconductor chip, which has many different functions in it that are selectively available for use, but clearly does not include limitations that the reexamined patent claims require. For the Court’s convenience, Inphi includes the example of non-infringement of now independent claim 16 of the ‘912 patent provided in the last joint status report. As seen below, there are a host of claim limitations that are plainly not part of the Inphi iMB as shown in the underlined and bolded elements below that are not met, without even bringing up technical specifications that lead to other non- infringement defenses: While Inphi still believes that early summary judgment of non-infringement and intervening rights is appropriate, those may be unnecessary if there is no basis for any allegations, and as such if the Court is inclined to re-open the case, Inphi respectfully requests that the Court require Netlist to identify the allegedly infringed claims and provide evidence to support the filing of the original complaint.
III. CONCLUSION Counsel for Netlist and Inphi request that the Court move this case forward based upon the above proposals, in a manner that the Court determines appropriate.
Dated: July 22, 2021 MINTZ LEVIN COHN FERRIS GLOVSKY & POPEO, P.C. By: /s/ Nada I. Shamonki Nada I. Shamonki Attorneys for Plaintiff NETLIST, INC. Dated: July 22, 2021 PILLSBURY WINTHROP SHAW PITTMAN LLP By: /s/ Carolyn S. Toto Carolyn S. Toto Attorneys for Defend
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