UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION 

NETLIST, INC, 

Plaintiff, 

 vs. 

MICRON TECHNOLOGY, INC.; MICRON 

SEMICONDUCTOR PRODUCTS, INC.; 

MICRON TECHNOLOGY TEXAS LLC, 

Defendants. 

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Civil Action No. 2:23-cv-628-JRG 

 

JURY TRIAL DEMANDED 

NETLIST, INC.’S OPPOSITION TO DEFENDANTS’ 

MOTION TO MODIFY SCHEDULING ORDER (DKT. 18) 

This is a patent case, and the Court should not modify the scheduling order it issued on 

February 14, 2012 (Dkt. 15, “Order”) as wrongly suggested by Defendants Micron Technology, 

Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas LLC (collectively, 

“Micron”) in their Motion (Dkt. 18). As stated in the Amended Complaint, Netlist seeks, among 

other things, “a declaration that [the patent infringement lawsuits it filed against Micron in this 

District] were not brought in bad faith” and that “Netlist has not made a bad faith assertion of 

patent infringement under Idaho Code § 48-1703,” which is the Idaho Bad Faith Assertions of 

Patent Infringement Act. Dkt. 14, ¶¶ 2-3. Adjudicating these claims based on the positions Micron 

has taken implicates analysis of patent infringement and validity, and thus the Order properly 

includes patent case requirements, such as infringement and invalidity contentions.1

 

 

1

 Consistent with the Court’s Order, Netlist timely served Micron with infringement disclosures 

and accompanying document production. See Plaintiff Netlist, Inc.’s Notice of Compliance with 

P.R. 3-1 and 3-2 Disclosures, Dkt. 20 (Mar. 11, 2024). 

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Netlist cannot be found to have asserted claims of patent infringement in “bad faith” unless 

Micron can prove that Netlist’s claims were “objectively baseless in the sense that no reasonable 

litigant could realistically expect success on the merits.” Globetrotter Software, Inc. v. Elan 

Computer Grp., Inc., 362 F.3d 1367, 1376 (Fed. Cir. 2004). Indeed, Micron has conceded in 

parallel litigation that the Idaho statute at issue requires “a showing that Netlist’s assertion of the 

[subject] Patent against Micron was objectively baseless.” Netlist, Inc. v. Micron Tech., Inc., No. 

1:24-cv-00001 (D. Idaho), Dkt. 19, at 5. This in turn requires the Court to assess whether Netlist 

had a plausible basis for believing the asserted patents were valid and infringed at the time the 

suits were brought. Thus, to adjudicate the issue of objective baselessness under Micron’s theory, 

the Court must assess issues of patent infringement and patent validity as the Federal Circuit 

explained in Maxchief Investments Ltd. v. Wok & Pan, Ind., Inc., 909 F.3d 1134 (Fed. Cir. 2018): 

Here, to prevail on its tortious interference claim, Maxchief would have to prove 

that Wok engaged in “unfounded litigation,” which in turn would require Maxchief 

to prove non-infringement or invalidity of Wok’s patents. Our past cases have 

concluded that similar state law claims premised on allegedly false statements about 

patents raised a substantial question of federal patent law.... 

Id. at 1140, n.3 (emphases added) (internal citations and quotation marks omitted); see also Hunter 

Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d 1318, 1329 (Fed. Cir. 1998) (concluding that 

the plaintiff’s “injurious falsehood” claim arose under federal patent law because it turned on 

issues of patent validity and enforceability). 

Therefore, because Netlist has pleaded claims for declaratory relief that it “has not violated 

Idaho Code § 48-1703” (Dkt. 14, ¶¶ 83-100), which in turn under Micron’s theory requires a 

finding that Netlist had a plausible basis for believing the asserted patents were valid and infringed 

at the time the suits were brought as part of the “objectively baseless” inquiry, the patent case 

requirements are necessary, and the Court should deny Micron’s Motion. 

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Dated: March 18, 2024 Respectfully submitted, 

/s/ Philip Warrick

Samuel F. Baxter 

Texas State Bar No. 01938000 

sbaxter@mckoolsmith.com 

Jennifer L. Truelove 

Texas State Bar No. 24012906 

jtruelove@mckoolsmith.com 

MCKOOL SMITH, P.C. 

104 East Houston Street Suite 300 

Marshall, TX 75670 

Telephone: (903) 923-9000 

Facsimile: (903) 923-9099 

Philip Warrick 

New York Bar No. 4471413 

pwarrick@irell.com

IRELL & MANELLA LLP

750 17th Street NW, Suite 850 

Washington, DC 20006 

Tel. (310) 777-6512 

Fax (310) 317-7252 

Jason G. Sheasby (pro hac vice) 

jsheasby@irell.com 

Annita Zhong, Ph.D. (pro hac vice) 

hzhong@irell.com 

Thomas C. Werner (pro hac vice) 

twerner@irell.com 

Yanan Zhao (pro hac vice) 

yzhao@irell.com 

Michael W. Tezyan (pro hac vice) 

mtezyan@irell.com 

IRELL & MANELLA LLP 

1800 Avenue of the Stars, Suite 900 

Los Angeles, CA 90067 

Tel. (310) 277-1010 

Fax (310) 203-7199 

Attorneys for Plaintiff Netlist, Inc. 

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CERTIFICATE OF SERVICE 

I hereby certify that, on March 18, 2024, a copy of the foregoing was served to all counsel 

of record via the Court’s CM/ECF system. 

/s/ Philip Warrick 

Philip Warrick

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