The opinion
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
SONRAI MEMORY LIMITED,
Plaintiff,
v. 6:21-cv-00167-ADA
GOOGLE LLC,
Defendant.
ORDER RECONSIDERING, ALTERING, AND AMENDING THE ORDER DEYING
GOOGLE LLC’S OPPOSED MOTION TO STAY PENDING FINAL RESOLUTION OF
PLAINTIFF’S MANUFACTURER LAWSUIT [ECF NO. 49]
Under Federal Rule of Civil Procedure 52, this Court “is free to reconsider and reverse its
decision” in an interlocutory order “for any reason it deems sufficient, even in the absence of new
evidence or an intervening change in or clarification of the substantive law.” Lavespere v. Niagara
Mach. & Tool Works, Inc., 910 F.2d 167, 185 (5th Cir. 1990). The Court will, in view of new
representations by Defendant Google LLC, exercise that discretion here to reconsider and vacate
its order at ECF No. 49 denying Google’s requested stay (the “Original Order”).
I. DISCUSSION
Plaintiff Sonrai Memory Limited is prosecuting eight patent infringement actions, all of
which are before this Court. Sonrai is suing entities the Court will refer to as “the Manufacturers”:
Kioxia Corporation and Kioxia America, Inc. (collectively, “Kioxia”); Western Digital
Technologies, Inc. (“Western Digital”); and Samsung Electronics Co., Ltd. (“SEC”). It is also
suing several entities the Court will refer to as “the Customers”: SEC and Samsung Electronics
America, Inc. (collectively “Samsung”);1 Google LLC; LG Electronics Inc. and LG Electronics
1 SEC is both a Customer Defendant, because it manufactures and sells downstream products
that incorporate the Accused Kioxia and Western Digital Chip,” and a Manufacturer Defendant,
U.S.A., Inc. (collectively, “LG”); Dell Technologies Inc.; Apple Inc.; Kingston Technology
Company, Inc. and Kingston Technology Corporation (collectively, “Kingston”); and
Amazon.com, Inc.
Sonrai initiated suit against Kioxia, No. 6:21-cv-00400-ADA (the “Kioxia Action”),
Western Digital, No. 6:21-cv-01168 (the “Western Digital Action”), and Samsung, No. 6:21-cv-
00169-ADA (the “Samsung Action) (collectively the “Manufacturer Actions”). Sonrai initiated
suit against Google, LG, 6:21-cv-00168 (the “LG Action”), Dell (the “Dell Action”), Apple (the
“Apple Action”), Kingston (the “Kingston Action”), and Amazon, No. 6:21-cv-00991 (the
“Amazon Action”) (collectively, the “Customer Actions”). In each case, Sonrai is accusing NAND
flash memory chips of infringing certain Sonrai patents. One such chip is the SanDisk/Toshiba
64L 3D NAND flash chip with the die identifier FRN1256G. The Court will refer to this chip as
the “Accused Kioxia and Western Digital Chip” because Kioxia Corporation and Western Digital
co-designed it. Another is a NAND flash memory with package marking SEC 110 BOE1
KLUDG4UHDC SD3P300B. The Court will refer to this chip as the “Accused Samsung Chip”
because SEC designed it.
Google joined an Omnibus Motion filed by all the Customers, ECF No. 32, to request that
certain infringement claims against it be severed from this Action and stayed pending resolution
of the relevant Manufacturer Actions pursuant to the customer-suit exception.
In the Kioxia Action, Sonrai alleges that Kioxia infringes U.S. Patent Nos. 6,724,241 (the
“’241 patent”) and 7,436,232 (the “’232 patent”) by commercializing the Accused Kioxia and
Western Digital Chip and downstream products including that chip. In the Western Digital Action,
because it also manufactures the Accused Samsung Chip Sonrai separately accuses of
infringement.
Sonrai alleges that Western Digital infringes the ’241 patent and ’232 patent by commercializing
the Accused Kioxia and Western Digital Chip and downstream products including that chip.
In this Action, Sonrai alleges that Google infringes the ’241 patent by commercializing
downstream products including the Accused Kioxia and Western Digital Chip. Google requests
that the ’241 patent claim against it be stayed pending resolution of the Kioxia Action and the
Western Digital Action. Omnibus Motion at 20. (Sonrai has also accused Google of infringing the
’014 patent; Google requests that that claim be severed. Id.) Google agrees to be bound by any
infringement determination in the Kioxia Action and the Western Digital Action as to the Accused
Kioxia and Western Digital Chips. Id. at 15.
On February 23, 2022, the Court issued the Original Order denying Google’s requested
stay because Google did not agree to be bound by any validity/invalidity determination in the
Manufacturer Actions as to the ’241 patent. See Original Order at 7. Yet the Court granted similar
stays requested by LG, Dell, Apple, and Kingston, at least because each agreed to be bound by
such validity/invalidity determinations. See, e.g., LG Action, ECF No. 40. On March 18, 2022,
counsel for Google contacted the Court’s clerk via email, representing that “Google will agree to
be bound by any validity or invalidity determination as to the ’241 patent in the KIOXIA
Manufacturer Action if the Court would stay the Google case as to the ’241 patent pending
resolution of the KIOXIA Manufacturer Action.” Sonrai’s counsel opposed Google’s renewed
request for a stay. On March 23, 2022, the Court inquired as to whether Google is “willing to be
bound by any validity or invalidity determination as to the ’241 patent in the Western Digital
Manufacturer Action.” That same day, Counsel for Google responded:
KIOXIA is the exclusive supplier of the KIOXIA/Toshiba-branded
flash memory chips that are accused against Google in this case. See
Dkt. 32-5 (Decl. of M. Chitlu) at ¶4. Therefore, in this case, Google
is only a customer of KIOXIA and is not a customer of Western
Digital. However, to obtain the requested stay, Google will agree to
be bound by any validity or invalidity determination as to the ’241
patent in both the KIOXIA and Western Digital Manufacturer
Actions, on the terms of the original moving defendants.
In this Court’s judgment, Google has shown that, like LG, Dell, Apple, and Kingston (and
later, Amazon), it too 1s entitled to a stay. Accord LG Action, ECF No. 40; Amazon Action, ECF
No. 34.
II. CONCLUSION
For the foregoing reasons, the Court reconsiders the Original Order at ECF No. 49 in the
above-captioned Action. It is therefore ORDERED that the Orginal Order at ECF No. 49 in the
above-captioned Action is VACATED and SUPERSEDED by the Instant Order. It is further
ORDERED that Sonrai’s °241 patent claims against Google (Count I) are severed pursuant to
Federal Rule of Civil Procedure 21. That severed action shall be STAYED (1) as to Accused
Kioxia and Western Digital Chip pending resolution of the Kioxia Action and Western Digital
Action. This Action will otherwise proceed.
The Court’s Clerk is instructed to:
e VACATE ECF No. 49 in this Action;
e SEVER Count I, as described in ECF No. 1, from this Action; and
e STAY the Severed Action (which should include all the parties at issue in this
Action).
SIGNED this 30th day of March, 2022.
CDrm O\or st
ALAN D ALBRIGHT
UNITED STATES DISTRICT GE