Case 6:21-cv-00167-ADA Document 55 Filed 03/30/22 Page 1 of 4
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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,
` Plaintiff,
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`v.
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`GOOGLE LLC,
` Defendant.
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`6:21-cv-00167-ADA
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`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]
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`Under Federal Rule of Civil Procedure 52, this Court “is free to reconsider and reverse its
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`decision” in an interlocutory order “for any reason it deems sufficient, even in the absence of new
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`evidence or an intervening change in or clarification of the substantive law.” Lavespere v. Niagara
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`Mach. & Tool Works, Inc., 910 F.2d 167, 185 (5th Cir. 1990). The Court will, in view of new
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`representations by Defendant Google LLC, exercise that discretion here to reconsider and vacate
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`its order at ECF No. 49 denying Google’s requested stay (the “Original Order”).
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`I. DISCUSSION
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`Plaintiff Sonrai Memory Limited is prosecuting eight patent infringement actions, all of
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`which are before this Court. Sonrai is suing entities the Court will refer to as “the Manufacturers”:
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`Kioxia Corporation and Kioxia America, Inc. (collectively, “Kioxia”); Western Digital
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`Technologies, Inc. (“Western Digital”); and Samsung Electronics Co., Ltd. (“SEC”). It is also
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`suing several entities the Court will refer to as “the Customers”: SEC and Samsung Electronics
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`America, Inc. (collectively “Samsung”);1 Google LLC; LG Electronics Inc. and LG Electronics
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`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,
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`1
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`Case 6:21-cv-00167-ADA Document 55 Filed 03/30/22 Page 2 of 4
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`U.S.A., Inc. (collectively, “LG”); Dell Technologies Inc.; Apple Inc.; Kingston Technology
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`Company, Inc. and Kingston Technology Corporation (collectively, “Kingston”); and
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`Amazon.com, Inc.
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`Sonrai initiated suit against Kioxia, No. 6:21-cv-00400-ADA (the “Kioxia Action”),
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`Western Digital, No. 6:21-cv-01168 (the “Western Digital Action”), and Samsung, No. 6:21-cv-
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`00169-ADA (the “Samsung Action) (collectively the “Manufacturer Actions”). Sonrai initiated
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`suit against Google, LG, 6:21-cv-00168 (the “LG Action”), Dell (the “Dell Action”), Apple (the
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`“Apple Action”), Kingston (the “Kingston Action”), and Amazon, No. 6:21-cv-00991 (the
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`“Amazon Action”) (collectively, the “Customer Actions”). In each case, Sonrai is accusing NAND
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`flash memory chips of infringing certain Sonrai patents. One such chip is the SanDisk/Toshiba
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`64L 3D NAND flash chip with the die identifier FRN1256G. The Court will refer to this chip as
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`the “Accused Kioxia and Western Digital Chip” because Kioxia Corporation and Western Digital
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`co-designed it. Another is a NAND flash memory with package marking SEC 110 BOE1
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`KLUDG4UHDC SD3P300B. The Court will refer to this chip as the “Accused Samsung Chip”
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`because SEC designed it.
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`Google joined an Omnibus Motion filed by all the Customers, ECF No. 32, to request that
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`certain infringement claims against it be severed from this Action and stayed pending resolution
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`of the relevant Manufacturer Actions pursuant to the customer-suit exception.
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`In the Kioxia Action, Sonrai alleges that Kioxia infringes U.S. Patent Nos. 6,724,241 (the
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`“’241 patent”) and 7,436,232 (the “’232 patent”) by commercializing the Accused Kioxia and
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`Western Digital Chip and downstream products including that chip. In the Western Digital Action,
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`because it also manufactures the Accused Samsung Chip Sonrai separately accuses of
`infringement.
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`Case 6:21-cv-00167-ADA Document 55 Filed 03/30/22 Page 3 of 4
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`Sonrai alleges that Western Digital infringes the ’241 patent and ’232 patent by commercializing
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`the Accused Kioxia and Western Digital Chip and downstream products including that chip.
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`In this Action, Sonrai alleges that Google infringes the ’241 patent by commercializing
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`downstream products including the Accused Kioxia and Western Digital Chip. Google requests
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`that the ’241 patent claim against it be stayed pending resolution of the Kioxia Action and the
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`Western Digital Action. Omnibus Motion at 20. (Sonrai has also accused Google of infringing the
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`’014 patent; Google requests that that claim be severed. Id.) Google agrees to be bound by any
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`infringement determination in the Kioxia Action and the Western Digital Action as to the Accused
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`Kioxia and Western Digital Chips. Id. at 15.
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`On February 23, 2022, the Court issued the Original Order denying Google’s requested
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`stay because Google did not agree to be bound by any validity/invalidity determination in the
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`Manufacturer Actions as to the ’241 patent. See Original Order at 7. Yet the Court granted similar
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`stays requested by LG, Dell, Apple, and Kingston, at least because each agreed to be bound by
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`such validity/invalidity determinations. See, e.g., LG Action, ECF No. 40. On March 18, 2022,
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`counsel for Google contacted the Court’s clerk via email, representing that “Google will agree to
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`be bound by any validity or invalidity determination as to the ’241 patent in the KIOXIA
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`Manufacturer Action if the Court would stay the Google case as to the ’241 patent pending
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`resolution of the KIOXIA Manufacturer Action.” Sonrai’s counsel opposed Google’s renewed
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`request for a stay. On March 23, 2022, the Court inquired as to whether Google is “willing to be
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`bound by any validity or invalidity determination as to the ’241 patent in the Western Digital
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`Manufacturer Action.” That same day, Counsel for Google responded:
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`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
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`Case 6:21-cv-00167-ADA Document 55 Filed 03/30/22 Page 4 of 4
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`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.
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`In this Court’s judgment, Google has shown that, like LG, Dell, Apple, and Kingston (and
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`later, Amazon), it too is entitled to a stay. Accord LG Action, ECF No. 40; Amazon Action, ECF
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`No. 34.
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`II. CONCLUSION
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`For the foregoing reasons, the Court reconsiders the Original Order at ECF No. 49 in the
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`above-captioned Action. It is therefore ORDERED that the Original Order at ECF No. 49 in the
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`above-captioned Action is VACATED and SUPERSEDED by the Instant Order. It is further
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`ORDERED that Sonrai’s ’241 patent claims against Google (Count I) are severed pursuant to
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`Federal Rule of Civil Procedure 21. That severed action shall be STAYED (1) as to Accused
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`Kioxia and Western Digital Chip pending resolution of the Kioxia Action and Western Digital
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`Action. This Action will otherwise proceed.
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`The Court’s Clerk is instructed to:
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`• VACATE ECF No. 49 in this Action;
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`• SEVER Count I, as described in ECF No. 1, from this Action; and
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`• STAY the Severed Action (which should include all the parties at issue in this
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`Action).
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`SIGNED this 30th day of March, 2022.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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`4
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