IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

NETLIST, INC.,

Plaintiff,

v.

SK HYNIX INC. and SK HYNIX 

AMERICA INC.,

Defendants.

Civil Action No. 6:20-cv-00194-ADA

JURY TRIAL DEMANDED

DEFENDANTS’ REPLY IN SUPPORT OF OPPOSED MOTION TO

TRANSFER VENUE PURSUANT TO THE FIRST-TO-FILE RULE OR, 

ALTERNATIVELY, 28 U.S.C. § 1404(a)

Case 6:20-cv-00194-ADA Document 31 Filed 05/26/20 Page 1 of 11
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Table of Contents

I. The Pending Cases in California Satisfy any Threshold Requirement for Transfer........... 1

II. Transfer Is Warranted Pursuant to the First-To-File Rule .................................................. 2

III. Transfer is Also Warranted Under Section 1404(a) ........................................................... 4

IV. In The Alternative, This Case Should Be Transferred to Austin........................................ 5

Case 6:20-cv-00194-ADA Document 31 Filed 05/26/20 Page 2 of 11
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TABLE OF AUTHORITIES

Page(s)

Cases

Adv. Processor Techs. LLC v. Amtel Corp.,

No. 2:12-cv-152, 2013 WL 1279053 (E.D. Tex. Mar. 26, 2013)..............................................5

In re ASM Int’l, N.V.,

774 Fed. App’x 650 (Fed. Cir. 2019).........................................................................................3

Aventis Pharms. Inc. v. Teva Pharms. USA Inc.,

No. 06-469, 2007 WL 2823296 (E.D. Tex. Sept. 27, 2007)..................................................2, 3

Candela Corp. v. Palomar Med. Techs., Inc.,

No. 06-277, 2007 U.S. Dist. LEXIS 19994 (E.D. Tex. Feb. 22, 2007).................................2, 3

Cummins-Allison Corp. v. Glory Ltd.,

No. 03-358, 2004 U.S. Dist. LEXIS 13839 (E.D. Tex. May 26, 2004).............................2, 3, 4

Datamize, Inc. v. Fid. Brokerage Servs., LLC,

No. 03-321, 2004 U.S. Dist. LEXIS 29100 (E.D. Tex. Apr. 22, 2004).....................................3

Document Generation Corp. v. Allscripts,

No. 08-479, 2009 U.S. Dist. LEXIS 149038 (E.D. Tex., May 19, 2009)..................................3

Garmin Ltd. v. TomTom, Inc.,

No. 06-338, 2007 U.S. Dist. LEXIS 15214 (E.D. Tex. Mar. 5, 2007) ......................................3

j2 Glob. Commun’s., Inc. v. Protus IP Sols., Inc.,

No. 08-211, 2008 U.S. Dist. LEXIS 103609 (E.D. Tex. Dec. 23, 2008)...................................3

Leach v. Day To Day Imports, Inc.,

No. 17-7351, ECF No. 50 (C.D. Cal. Nov. 14, 2017) ...............................................................2

Tinnus Enters., LLC v. Telebrands Corp.,

No. 15-551, 2015 U.S. Dist. LEXIS 178419 (E.D. Tex. Aug. 31, 2015)..................................3

Statutes and Rules

28 U.S.C. § 1404(a) .............................................................................................................1, 2, 4, 5

Fed R. Civ. P. 45..............................................................................................................................5

Fed. R. Civ. P. 45(c)(1)(B) ..............................................................................................................5

Fed. R. Civ. P. 45(c)(1)(B)(ii)..........................................................................................................5

Case 6:20-cv-00194-ADA Document 31 Filed 05/26/20 Page 3 of 11
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Local Rule CV-5(b) .........................................................................................................................1

Case 6:20-cv-00194-ADA Document 31 Filed 05/26/20 Page 4 of 11
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Netlist’s opposition [ECF No. 27] does not dispute that (i) the California actions involve 

the same parties, accused products, infringement theories, and discovery that would be needed in 

this action, see Mot. [ECF No. 26] at 6, 8–9 & nn.6–7; (ii) the patents asserted here are 

continuations of the patents asserted in California, with the same specification, inventor, and

priority date, see Mot. at 5; and (iii) the claims asserted here were found by the Patent Office to 

be “not patentably distinct” from those asserted in California, see Mot. at 5 & n.4. Netlist 

repeatedly suggests it will no longer litigate the patents in California given the PTAB’s Final 

Written Decisions of invalidity, but at the same time Netlist has refused to dismiss those patents 

with prejudice and instead has filed an appeal in the Federal Circuit, see Ex. 39,1 which is why 

both of Netlist’s California actions remain pending. And Netlist does not even mention, let alone 

dispute, that SK hynix’s RAND counterclaims in California encompass the two patents asserted 

here and are likely to moot this case. See Mot. at 1–3, 10. Even if Netlist were to dismiss its 

California claims, the RAND counterclaims would still proceed in California, overlapping with 

this case with respect to essentiality (i.e., infringement) and the calculation of RAND royalties. 

See Mot. at 10. Tellingly, Netlist itself successfully persuaded Judge Staton in California not to 

bifurcate the RAND counterclaims from its patent claims because that would “burden itself, the 

parties, third parties, and witnesses with two trials.” Ex. 17 at 3:20; Ex. 18 at 1 (denying 

bifurcation). That is precisely why this action should be transferred to Judge Staton under both 

the “first-to-file” rule and 28 U.S.C. § 1404(a), so that she can resolve all of the claims and 

counterclaims between the parties in the most efficient manner possible.

I. The Pending Cases in California Satisfy any Threshold Requirement for Transfer

Netlist argues that the “threshold” for transfer is not met because it “could not have filed 

this case” in C.D. Cal. Opp’n at 1; see id. at 10. But no such “threshold” exists for transfer 

under the first-to-file rule. Having sued SK hynix twice in C.D. Cal. on closely related patents, 

Netlist “waived [its] right to contest venue” when it brought its “initial action in that [venue].” 

 1 Unless stated otherwise, cited exhibits are attached to the Hatcher Declaration [ECF No. 

26-3].

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Leach v. Day To Day Imports, Inc., No. 17-7351, ECF No. 50 at 4 & n.1 (C.D. Cal. Nov. 14, 

2017). And with respect to the threshold requirement for transfer under § 1404(a), the 

proceedings in C.D. Cal. establish that all parties have “consented” to venue in that district. Id.

at 4 n.1; Mot. at 11 (citing Ex. 10, ¶ 8; Ex. 13, ¶ 8; Ex. 22, ¶ 8; Ex. 26, ¶ 8). Moreover, the 

claims here “might have been brought” in C.D. Cal. because Netlist could have sought leave to 

amend its complaint in California to add the patents asserted here. For at least these reasons, 

transfer is warranted. If this case is not transferred, it should be stayed or dismissed, see Mot. at 

8, not proceed as a duplicative case as Netlist would prefer.

II. Transfer Is Warranted Pursuant to the First-To-File Rule

Netlist agrees the “first-to-file” rule is governed by Fifth Circuit law, see Opp’n at 5 n.4,

which directs that “once the district court [finds] that the issues might substantially overlap, the 

proper course of action [is] for the court to transfer,”2 Mot. at 8. The overlap between the two 

cases does not need to be “nearly complete” as Netlist misleadingly suggests. See Opp’n at 5.3

Netlist also incorrectly asserts that there is “no case in which a court has invoked the 

Fifth Circuit first-to-file rule in a case involving different asserted patents.” Opp’n at 1. To the 

contrary, transfer under the first-to-file rule was granted in a case where the “patents [asserted in 

E.D. Tex.] protect[ed] distinct inventions from those involved in the [first-filed] New Jersey 

actions.” Aventis Pharms. Inc. v. Teva Pharms. USA Inc., No. 06-469, 2007 WL 2823296, at *2

(E.D. Tex. Sept. 27, 2007). The Court “reject[ed] the suggestion that the cases will not 

substantially overlap,” finding that the parties, infringement theories, and accused products were 

the same, see id., just like here, see Mot. at 6, 8–9 & nn.6–7.

The cases cited by Netlist are easily distinguished. See Opp’n at 6, 8. They either 

 2 Unless stated otherwise, all emphasis in quotes has been added.

3 The cases cited by Netlist confirm this. See, e.g., Candela Corp. v. Palomar Med. Techs., 

Inc., No. 06-277, 2007 U.S. Dist. LEXIS 19994, at *3 (E.D. Tex. Feb. 22, 2007) (“[T]he first-tofile rule applies regardless of whether the suits are identical as long as they overlap on 

substantive issues.”); Cummins-Allison Corp. v. Glory Ltd., No. 03-358, 2004 U.S. Dist. LEXIS 

13839, at *6 (E.D. Tex. May 26, 2004) (“The cases need not be identical to be duplicative.”).

Case 6:20-cv-00194-ADA Document 31 Filed 05/26/20 Page 6 of 11
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involved unrelated patents or accused products,4 unrelated defendants,

5 or a previous decision by 

the first-filed court that it did not want to proceed with the patents asserted in the second-filed 

court.6 In contrast, the facts here align with previous cases granting transfer under the first-filed 

rule. See Mot. at 9–10;7 Aventis, 2007 WL 2823296, at *2. As explained above, the California 

actions “substantially overlap” with this action, as they involve the same parties, products, and 

infringement theories, and SK hynix’s RAND counterclaims encompass the patents asserted here 

 4 See In re ASM Int’l, N.V., 774 Fed. App’x 650, 651–52 (Fed. Cir. 2019) (“[T]he four patents in 

the Oregon action were directed to different subject matter than the seven patents in the California 

action. . . . [T]his case involves different asserted patents, claim terms, and technology than are at 

issue in the Northern California action.”); Tinnus Enters., LLC v. Telebrands Corp., No. 15-551, 

2015 U.S. Dist. LEXIS 178419, at *11-12 (E.D. Tex. Aug. 31, 2015) (declining to transfer patent 

case to earlier suit “invoking separate and distinct legal doctrines” of trademark, copyright, and 

fraud); Candela, 2007 U.S. Dist. LEXIS 19994, at *4-5 (noting the patents at issue had “different 

claims and specifications” and the second case involved different products); Document Generation 

Corp. v. Allscripts, No. 08-479, 2009 U.S. Dist. LEXIS 149038, at *18-20 (E.D. Tex., May 19, 2009) 

(“it is not clear that the same set of products had been accused” and the patents are merely 

continuations-in-part that contain “new matter and different claims,” which “could have a substantial 

impact on claim construction and other issues in the case,” including “different infringement 

arguments and different damages theories”); j2 Glob. Commun’s., Inc. v. Protus IP Sols., Inc., No. 

08-211, 2008 U.S. Dist. LEXIS 103609, at *21 & n.5 (E.D. Tex. Dec. 23, 2008) (“Defendants 

have not shown that . . . similar products are at issue. . . . [T]hese cases involve different 

defendants” and with respect to the one common defendant it “has not shown that the same or 

similar products will be at issue in both this case and the California case.”); Garmin Ltd. v. 

TomTom, Inc., No. 06-338, 2007 U.S. Dist. LEXIS 15214, at *5-7 (E.D. Tex. Mar. 5, 2007) 

(“[T]he ’378 patent is not in the same family as the patents in the Wisconsin case.”).

5 Datamize, Inc. v. Fid. Brokerage Servs., LLC, No. 03-321, 2004 U.S. Dist. LEXIS 29100 at 

*11 (E.D. Tex. Apr. 22, 2004) (“different defendants... different accused products, and a 

different industry”).

6 Cummins-Allison, 2004 U.S. Dist. LEXIS 13839, at *2-3, *8-9 (at the urging of the 

defendants, the first-filed court “refused to allow the additional patents to be added” and instead 

ruled “they should be the subject of a new cause of action”); see also Aventis, 2007 WL 

2823296, at *2 (distinguishing Cummins-Allison on this basis). Here, Netlist never asked SK 

hynix or Judge Staton about adding these patents to the pending California litigation.

7 Netlist’s attempt to distinguish these cases falls short. See Opp’n at 6–7. Netlist’s 

suggestion that the “first-to-file” rule should only apply to cases “filed close in time” raises a 

distinction without a difference: the chronological order of the cases—not the absolute length of 

time between them—is the relevant consideration under a first-to-file analysis. Nor is there any 

merit to Netlist’s assertion that the Ninth Circuit applies a “more lenient” articulation of the 

“first-to-file” rule than the Fifth Circuit. Opp’n at 6–7 & n.5. As SK hynix explained, the two 

circuits apply the same rule, see Mot. at 9 n.10, and thus the factually analogous cases SK hynix 

has identified are persuasive authority to which Netlist offers no meaningful response.

Case 6:20-cv-00194-ADA Document 31 Filed 05/26/20 Page 7 of 11
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and would proceed even if Netlist dismissed its patents in California with prejudice (which it has 

refused to do).

Netlist incorrectly states “SK hynix has agreed that the parties should not litigate in 

California, including in the most recent status report.” Opp’n at 3.8 To the contrary, SK hynix 

has merely consented to Judge Staton’s stated preference that the proceedings in C.D. Cal. be 

held in abeyance pending resolution of related IPR and ITC proceedings; SK hynix never 

suggested, much less agreed, that the parties should never litigate in California. Moreover, the 

parties’ most recent joint status report to Judge Staton explicitly stated that “the parties intend to 

submit an interim status report addressing the status of this litigation and the stay after [W.D. 

Tex.] rules on SK hynix’s pending motion to transfer.” Dkt. 27-4, Ex. 1 at 2:12–:17. Netlist’s 

complaint that “SK hynix does not ask to consolidate the present case with the California 

Actions,” Opp’n at 9, is equally misplaced because consolidation is an issue for Judge Staton to 

resolve after transfer, not something to be decided here. See, e.g., Cummins-Allison, 2004 U.S. 

Dist. LEXIS 13839, at *6-7 (once “substantial overlap” is identified, “the ‘first-to-file’ rule gives 

the first-filed court the responsibility to determine which case should proceed”); Mot. at 7–8.

III. Transfer is Also Warranted Under Section 1404(a)

Transfer under § 1404(a) is also warranted. See Mot. at 11–15. Netlist does not dispute 

that the handful of SK hynix employees in Austin are irrelevant to the issues in this case, as 

 8 Netlist also argues that the California actions have not been “heavily litigated,” Opp’n at 1–

2, but that is not the test under the first-filed rule, where often the two cases are filed close in 

time and thus little litigation has taken place in either forum. In any event, Netlist’s argument

ignores the substantial discovery and motion practice that has occurred in California. See Mot. at 

2–4. For instance, Judge Staton has issued four opinions totaling dozens of pages that resolved 

disputed issues, see Exs. 16, 18, 21, 25, including one requiring the Judge to conduct “a 

comparison of [Netlist’s] experts’ testimony in the ITC trial and in the present declarations [that] 

show[ed] extensive elaboration and a few entirely new opinions,” including regarding the ‘837 

patent, Ex. 21 at 2. Netlist dismisses most of the discovery in C.D. Cal. as irrelevant because it 

was part of a cross-use agreement between the ITC and C.D. Cal., see Opp’n at 3, 8–9, but that 

cross-use agreement only favors application of the first-to-file rule because it does not apply to 

this action. The possibility that this discovery could conceivably (though not necessarily) 

become available in this case is irrelevant to the first-to-file analysis, as that possibility is true in 

every case in which the first-to-file rule involves identical parties (which is usually the case).

Case 6:20-cv-00194-ADA Document 31 Filed 05/26/20 Page 8 of 11
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confirmed by the fact that after years of discovery, dozens of depositions, and two trials 

involving the same products, theories of infringement, and RAND issues, neither party ever 

asked any of those employees to testify. See Mot. at 7, 14; Kim Decl. ¶¶ 10–11 [ECF No. 26-4]. 

And California is clearly more convenient to the witnesses, which is why the vast majority of the 

depositions took place there, and none took place in Texas. See Hatcher Decl. ¶¶ 6–11 [ECF No. 

26-3]. The fact that Netlist’s employees sometimes travel to Texas does not change the fact they 

all live and work in C.D. Cal. where Netlist is headquartered, and they could not be compelled to 

testify here.

9

 See also Adv. Processor Techs. LLC v. Amtel Corp., No. 2:12-cv-152, 2013 WL 

1279053, at *8 (E.D. Tex. Mar. 26, 2013) (discounting where parties “frequently travel” in 

§ 1404(a) analysis). Regarding the nine third-party witnesses in California, Netlist misleadingly 

argues that “Dr. Hyun Lee [the sole inventor on the asserted patents] and Mr. Noel Whitley [the 

key executive relevant to the RAND issue] both voluntarily participated in the ITC actions,” 

Opp’n at 12, but that was before they left Netlist, and Netlist provides no reason to believe they 

would volunteer to travel from C.D. Cal. to Texas now. Netlist also ignores that two of the three 

third-party suppliers of the components accused of infringement produced their witnesses in C.D. 

Cal., see Hatcher Decl. ¶ 9 [ECF No. 26-3] (Rambus and Montage), and that the prosecutor of 

the patents could be compelled to testify in C.D. Cal. but not here, see Fed. R. Civ. P. 

45(c)(1)(B)(ii). Netlist does not identify any relevant witnesses in Texas, much less in Waco.

IV. In The Alternative, This Case Should Be Transferred to Austin

Netlist does not provide any cogent justification for why, if the Court retains this case, it 

should not be transferred to the Austin Division. The only connections Netlist identifies to this 

District are the SK hynix employees in Austin discussed above, nothing in Waco.

 9 The 2013 amendments to Rule 45 clarified that only “a party or a party’s officer” — not a 

mere employee, like Netlist points to when it argues its personnel travel to Texas, Opp’n at 4 —

can be compelled to testify in a state where he “regularly transacts business in person,” Fed. R. 

Civ. P. 45(c)(1)(B). Thus, none of Netlist’s witnesses could be compelled to testify here.

Case 6:20-cv-00194-ADA Document 31 Filed 05/26/20 Page 9 of 11
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Date: May 26, 2020

David C. Giardina

Illinois Bar No. 6225008 (pro hac vice)

SIDLEY AUSTIN LLP

One South Dearborn

Chicago, IL 60603

Telephone: (312) 853-7000

Facsimile: (312) 853-7036

dgiardina@sidley.com

Theodore W. Chandler

California Bar No. 219456 (pro hac 

vice)

SIDLEY AUSTIN LLP

555 West Fifth Street

Los Angeles, CA 90013

Telephone: (213) 896-6000

Facsimile: (213) 896-6600

tchandler@sidley.com

Brian R. Nester

DC Bar No. 460225 (pro hac vice)

Joseph A. Micallef

DC Bar No. 443679 (pro hac vice 

forthcoming)

SIDLEY AUSTIN LLP

1501 K Street, N.W.

Washington, D.C. 20005

Telephone: (202) 736-8000

Facsimile: (202) 736-8711

bnester@sidley.com

jmicallef@sidley.com

Respectfully submitted,

By: /s/ Brian R. Nester

Michael D. Hatcher (pro hac vice)

Texas Bar No. 24027067

SIDLEY AUSTIN LLP

2021 McKinney Avenue, Suite 2000

Dallas, TX 75201

Telephone: (214) 981-3300

Facsimile: (214) 981-3400

mhatcher@sidley.com

Barry K. Shelton

Texas State Bar No. 24055029

SHELTON COBURN LLP

311 RR 620, Suite 205

Austin, TX 78734-4775

Telephone: (512) 263-2165

Facsimile: (512) 263-2166

bshelton@sheltoncoburn.com

COUNSEL FOR DEFENDANTS

SK HYNIX INC. AND SK HYNIX AMERICA INC.

Case 6:20-cv-00194-ADA Document 31 Filed 05/26/20 Page 10 of 11
CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the above and foregoing 

document has been served on May 26, 2020, to all counsel of record who are deemed to have 

consented to electronic service via the Court’s CM/ECF system per Local Rule CV-5(b). 

/s/ Brian R.Nester

Brian R. Nester

Case 6:20-cv-00194-ADA Document 31 Filed 05/26/20 Page 11 of 11