Case 6:21-cv-01066-ADA-DTG Document 35 Filed 05/18/22 Page 1 of 3
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`SONRAI MEMORY LIMITED,
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`Plaintiff,
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`v.
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`TEXAS INSTRUMENTS INC.,
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`Defendant.
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` Case No. 6:21-cv-1066-ADA-DTG
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`JURY TRIAL DEMANDED
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`ORDER
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`Before the Court is Defendant Texas Instruments Incorporated’s (“TI”) Opposed Motion
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`to Stay Pending Resolution of Inter Partes Review (the “Motion”). ECF No. 22. The Court held a
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`hearing and heard argument on the Motion on May 12, 2022. ECF No. 32.
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`The relevant facts are as follows. Plaintiff Sonrai Memory Limited (“Sonrai”) filed several
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`lawsuits in this District on February 23, 2021 alleging infringement of U.S. Patent No. 6,874,014
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`(“the ’014 Patent”) including a suit against Google LLC (“Google”). Sonrai Memory Limited v.
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`Google LLC, Case No. 6:21-cv-00167-ADA (W.D. Tex.). Google filed a petition for inter partes
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`review against claims 1–3, 5–9, 11–13, and 15–19 on August 30, 2021. PTAB-IPR2021-01454,
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`Paper 1. On October 13, 2021, Sonrai filed suit against TI alleging infringement of at least claim
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`1 of the ’014 Patent. ECF No. 1. Sonrai served TI with a copy of the complaint on October 15,
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`2021. Sonrai served TI with infringement contentions on January 17, 2022, identifying that, along
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`with independent claim 1, dependent claims 3 and 5 were being asserted.
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`On March 4, 2022, the Patent Trial and Appeal Board instituted Google’s petition for inter
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`partes review of all asserted claims of the ’014 Patent (the “Google IPR”). ECF No. 22-2. TI served
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`Scramoge Technology Ltd.
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`its preliminary invalidity contentions on March 15, 2022. ECF No. 23. The PTAB found that the
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`invalidity arguments Google made in the IPR were “persuasive” for the purposes of institution for
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`at least claim 1. ECF No. 22-3. Sonrai choose not to file a preliminary patent owner response to
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`Google’s petition for inter partes review. ECF No. 25. TI contends that had it filed its own IPR
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`petition on October 13, 2021, the PTAB would not have instituted that IPR sooner than the Google
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`IPR was instituted. ECF No. 26. On April 1, 2022, TI filed a copycat petition and moved to join
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`the Google IPR. ECF No. 22-3, 22-4. That motion is still pending before the PTAB. See PTAB-
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`IPR2022-00801. On April 5, 2022, TI filed the present Motion and requested that the Court stay
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`this case through the issuance of a Final Written Decision in the Google IPR. ECF No. 22.
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`In this case, fact discovery will not open until June 13, 2022. ECF No. 23 at 2. The parties
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`had not started Markman briefing as of the hearing on TI’s motion to stay. Id. A Markman Hearing
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`is tentatively set for July 12, 2022. Id. A Final Written Decision in the Google IPR is expected by
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`March 4, 2023. Under the current schedule, fact discovery will have closed and expert discovery
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`will be underway, but the parties in this case will not have completed expert discovery or served
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`rebuttal expert reports at that time. Id. Additionally, the parties will begin dispositive motion
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`briefing on April 18, 2023, and the placeholder date for trial is set several months later for July
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`2023. Id.
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`Furthermore, the Google District Court case is well into discovery at this point. A
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`Markman hearing was held on February 25, 2022, the Court is already familiar with the patents,
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`and a trial is expected in early 2023.
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`“District courts typically consider three factors when determining whether to grant a stay
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`pending inter partes review of a patent in suit: (1) whether the stay will unduly prejudice the
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`nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
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`2
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`including whether discovery is complete and a trial date has been set, and (3) whether the stay will
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`likely result in simplifying the case before the court.” NFC Tech. LLC v. HTC Am., Inc., No. 2:13-
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`cv-1058, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015); see also CyWee Grp. Ltd. V.
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`Samsung Elecs. Co., No. 2:17-CV-00140-WCB-RSP, 2019 WL 11023976, at *2 (E.D. Tex. Feb.
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`14, 2019) (Bryson, J.).
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`The Court finds that any likelihood that a stay will result in simplifying the case before the
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`Court is too speculative. In the Court’s experience and because the IPR proceedings add to the
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`intrinsic record of a patent, IPR proceedings do not simplify issues in district court cases. The
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`Court further finds that whether TI will be allowed to join the Google IPR proceeding is similarly
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`speculative. The Court further notes that statutorily defined estoppel under 35 U.S.C. § 315(e)(2)
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`is potentially narrow because TI is a joining party to Google’s IPR. At the hearing, TI made a
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`qualified offer to be estopped as if it were the petitioner under 35 U.S.C. § 315(e)(1), but confirmed
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`the limited nature of any such estoppel. Accordingly, the Court finds estoppel would not simplify
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`the issues in this case. Accordingly, TI’s request that the Court stay this case through the issuance
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`of a Final Written Decision in the Google IPR is DENIED.
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`SO ORDERED this 18th day of May, 2022
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`___________________________________
`DEREK T. GILLILAND
`UNITED STATES MAGISTRATE JUDGE
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`3
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