Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 1 of 25

1 2 3 4 5 6 7 8 9 10 11 12 13 14

NORMAN C. HILE (STATE BAR NO. 57299) nhile@orrick.com STACY E. DON (STATE BAR NO. 226737) sdon@orrick.com ORRICK, HERRINGTON & SUTCLIFFE LLP 400 Capitol Mall, Suite 3000 Sacramento, CA 95814-4497 Telephone: (916) 447-9200 Facsimile: (916) 329-4900 MICHAEL F. HEAFEY (STATE BAR NO. 153499) mheafey@orrick.com MONTE COOPER (STATE BAR NO. 196746) mcooper@orrick.com ALAN M. CHEN (STATE BAR NO. 263126) alanchen@orrick.com ORRICK, HERRINGTON & SUTCLIFFE LLP 1000 Marsh Road Menlo Park, CA 94025-1021 Telephone: (650) 614-7400 Facsimile: (650) 614-7401 Attorneys for Plaintiff SMART MODULAR TECHNOLOGIES, INC. UNITED STATES DISTRICT COURT

15 EASTERN DISTRICT OF CALIFORNIA 16 17 18 19 20 21 22 23 24 25 26 27 28

COMPLAINT FOR PATENT INFRINGEMENT

SMART MODULAR TECHNOLOGIES, INC., Plaintiff, v. NETLIST, INC., Defendant.

Case No. COMPLAINT FOR PATENT INFRINGEMENT JURY TRIAL DEMANDED

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 2 of 25

1 2 3 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

Plaintiff SMART Modular Technologies, Inc. for its complaint against Defendant Netlist, Inc. hereby alleges as follows: JURISDICTION AND VENUE 1. This infringement action arises under the patent laws of the United States, Title 35,

United States Code. This Court has jurisdiction of this action under 28 U.S.C. 1331 and 1338(a). 2. SMART is a Delaware corporation with its principal place of business at 39870

Eureka Drive, Newark, California 94560. 3. On information and belief, Netlist is a Delaware corporation with its principal

place of business at 51 Discovery, Suite 150, Irvine, California 92618. Netlist makes, imports, uses, offers to sell, and/or sells within the United States, including the state of California and the judicial district, products, including, but not limited to, computer memory subsystems. 4. Upon information and belief, this Court has personal jurisdiction over Netlist

because Netlist has conducted and continues to conduct business on a systematic and continuous basis within the United States, including the State of California and this judicial district. 5. Upon information and belief, Netlist has placed infringing products into the stream

of commerce throughout the United States, including California, and those products have been offered for sale and/or sold and used within this judicial district. 6. Venue is proper in this judicial district under 28 U.S.C. 1400(b). GENERAL ALLEGATIONS 7. SMART is a technology leader in the design, development and deployment of

computer memory products. As a core component of its business, SMART designs, manufactures and sells computer memory subsystems. 8. The memory subsystem technology at issue is a memory module with rank

multiplication capability, which enables, inter alia, a memory module to provide a given memory capacity using greater numbers of lower-capacity, lower-cost Dynamic Random Access Memory /// -1COMPLAINT FOR PATENT INFRINGEMENT

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 3 of 25

1 2 3 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

(DRAM) devices, as opposed to using lower numbers of higher-capacity, higher-cost DRAM devices that would otherwise be imposed by memory controller limitations. 9. SMART is a leading innovator in memory technology and is the assignee and

owner of all rights, title, and interest in U.S. Patent No. 8,250,295 (the 295 Patent) (Application No. 10/752,151 (the 151 application)), entitled Multi-Rank Memory Module That Emulates A Memory Module Having A Different Number of Ranks. The 295 Patent was duly and legally issued on August 21, 2012, by the United States Patent and Trademark Office. A copy of the 295 Patent is attached hereto as Exhibit A. 10. capability. COUNT ONE (NETLISTS INFRINGEMENT OF THE 295 PATENT) 11. 12. Each of the foregoing paragraphs 1-10 is incorporated by reference. On information and belief, Netlist manufactures, uses, offers for sale, sells, Netlists HyperCloud memory module products provide rank multiplication

imports, or induces the same, products falling within the scope of one or more of the claims of the 295 Patent, including, but not limited to, HyperCloud. As a result, Netlist has infringed, literally or by equivalents, or both, continues to infringe, or threatens infringement of one or more of the claims of the 295 Patent as defined by 35 U.S.C. 271. 13. SMART has suffered damage by reason of Netlists infringement and will

continue to suffer additional damage until this Court enjoins the infringing conduct. 14. On information and belief, Netlist is contributing to or inducing, or both, the

infringement of one or more claims of the 295 Patent by offering to sell and selling its systems, including, but not limited to, HyperCloud, to customers, buyers, sellers, users and others that directly infringe the 295 Patent 15. On information and belief, Netlist had knowledge of SMARTs 151 application.

Netlist had knowledge that the 151 Application would issue as a patent, and the possibility that its products infringe that patent, and has willfully, deliberately and intentionally infringed the 295 Patent. -2COMPLAINT FOR PATENT INFRINGEMENT

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 4 of 25

1 2 3 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 ///

16.

SMART believes that Netlist will continue to infringe the 295 Patent unless

enjoined by this Court. Such infringing activity causes SMART irreparable harm and will continue to cause such harm without the issuance of an injunction. 17. As a result of the infringement of the 295 Patent, SMART has been damaged, will

be further damaged, and is entitled to be compensated for such damages, pursuant to 35 U.S.C. 284, in an amount to be determined at trial. 18. SMART is also entitled to enhanced damages pursuant to 35 U.S.C. 284 for

Defendants willful, deliberate, and intentional infringement of the 295 Patent. 19. NetLists infringement has harmed SMART irreparably at least by denying to

SMART business opportunities. Monetary damages cannot adequately compensate SMART for this harm. PRAYER FOR RELIEF WHEREFORE, SMART respectfully requests that this Court enter judgment in its favor and against Netlist and grant the following relief: A. judgment that Netlist has and is infringing one or more of the claims of the 295 Patent, either directly, contributorily, and/or by inducement, either literally and/or under the doctrine of equivalents; B. judgment that Netlists infringement of the 295 Patent has been and continues to be, willful and deliberate; C. judgment awarding damages adequate to compensate SMART for its lost profits, but not less than a reasonable royalty, for the infringement of the 295 Patent by Netlist, including enhanced damages for Netlists willful infringement of the 295 Patent, treble damages, costs, and all other categories of damages allowed by 35 U.S.C. 284; D. preliminary and permanent injunctive relief enjoining Netlist, its employees, agents, affiliates and all other persons in active concert or participation with it as follows:

-3-

COMPLAINT FOR PATENT INFRINGEMENT

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 5 of 25

1 2 3 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 G. E. F.

(i)

from making, using, offering to sell, selling, or importing any products falling within the scope of the claims of the 295 Patent;

(ii)

from actively inducing others to infringe any of the claims of the 295 Patent;

(iii)

from engaging in acts constituting contributory infringement of any of the claims of the 295 Patent; and

(iv)

from all other acts of infringement of any of the claims of the 295 Patent;

an accounting of all revenues Netlist derived from its infringing activities; a finding in favor of SMART that this is an exceptional case, under 35 U.S.C. 285, and an award to SMART of its costs, including its reasonable attorney fees and other expenses incurred in connection with this action; and such other and further relief as this Court deems just and proper under the circumstances. DEMAND FOR JURY TRIAL

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, SMART hereby demands a trial by jury on this action. Dated: September 10, 2012 NORMAN C. HILE MICHAEL F. HEAFEY MONTE COOPER STACY E. DON ALAN M. CHEN Orrick, Herrington & Sutcliffe LLP

By: /s/ Michael F. Heafey MICHAEL F. HEAFEY Attorneys for Plaintiff SMART MODULAR TECHNOLOGIES, INC.

OHSUSA:751102078.4

-4-

COMPLAINT FOR PATENT INFRINGEMENT

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 6 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 7 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 8 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 9 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 10 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 11 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 12 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 13 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 14 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 15 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 16 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 17 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 18 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 19 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 20 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 21 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 22 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 23 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 24 of 25

Case 2:12-cv-02319-MCE-EFB Document 1 Filed 09/10/12 Page 25 of 25