Last week, an Eastern District of Texas jury returned a verdict awarding Netlist a combined $445M for the infringement of two memory patents by Micron Technology in one of several cases between these two parties. The jury also found the infringement to have been willful, but the bulk of its award corresponds to a patent claim that the Patent Trial and Appeal Board (PTAB) canceled last month through inter partes review (IPR). Meanwhile, a Central District of California jury has found both that a provision of a November 2015 Joint Development and License Agreement (JDLA) between Netlist and Samsung required the latter to supply certain products to Netlist “without limitation to” a joint development project between the two and that Samsung’s breach of that provision is material. These findings are key to a multifront patent infringement battle between Netlist and Samsung because the JDLA grants them cross-licenses to each other’s patent portfolios.

Patent litigants regularly seek mandamus review for certain types of adverse district court rulings. While a successful petition may result in a reversal and remand, it is less common for the Federal Circuit to agree with a district judge only to have the latter change his mind and reverse himself. That unusual scenario recently came to pass in the East Texas leg of the already complicated dispute between Netlist and Micron Technology, the latter of which filed a mandamus petition after Magistrate Judge Roy S. Payne waited until a scheduled trial was looming to recommend the denial of its motion to stay pending the outcome of multiple inter partes reviews (IPRs) against the remaining patents-in-suit. The appellate court denied that petition, after which—in late January—District Judge Rodney Gilstrap adopted Judge Payne’s recommendation over defendant Micron’s objection. However, earlier this month, Judge Gilstrap apparently had a change of heart, reversing himself sua sponte (without the request of either party), citing efficiency concerns in a weekend decision staying the case.

Last week, Central District of California Judge Mark C. Scarsi denied a Netlist motion for summary judgment that its November 2015 Joint Development and License Agreement (JDLA) with Samsung was properly terminated based on several theories of breach. In October, the Ninth Circuit reversed an earlier grant of essentially the same motion, remanding for further proceedings based on its ruling that the relevant provision of the JDLA itself is ambiguous as a matter of law. Termination of the JDLA is central to a multifront patent infringement battle between these parties because the JDLA grants them cross-licenses to each other’s patent portfolios. Meanwhile, in its likewise multifront infringement dispute with Netlist, Micron Technology has deployed Idaho’s “Bad-Faith Patent Assertion” state law, just as it did in the face of affirmative patent infringement claims from a plaintiff associated with Texas monetization firm Longhorn IP LLC.

This summer, Netlist ratcheted up its long-running memory technology campaign, filing new suits against Micron Technology (2:22-cv-00203, 2:22-cv-00294) and Samsung (2:22-cv-00293) in the Eastern District of Texas. Meanwhile, on August 1, 2022, Delaware District Judge Richard G. Andrews resolved a set of motions filed in connection with a declaratory judgment action that Samsung initiated against Netlist last October, a day after a California court ruled, among other things, that Samsung’s license to Netlist’s patents had been properly terminated. That ruling will also affect a 2009 case that Netlist filed against Alphabet (Google), as Samsung’s customer—litigation that came back to life after an extensive reexamination of the patent-in-suit concluded but was stayed again, in mid-July of this year, to await Judge Andrews’s ruling.

Samsung (1:21-cv-01453) has filed a District of Delaware complaint seeking, among other things, declaratory judgments of noninfringement, invalidity, and unenforceability of four memory technology patents from a Netlist portfolio that has been in litigation since 2008. The case follows a May 2020 complaint that Netlist filed against Samsung in the Central District of California alleging breach of a November 2015 joint development and license agreement between the parties. Samsung’s case also drops after a ten-year stay in litigation between Alphabet (Google) and Netlist was lifted earlier this year, after the patent asserted there—one of the four subject to Samsung’s new complaint—emerged from extensive and multiple reexamination proceedings.