Sandisk Technologies, Inc. v. Viasat, Inc. ( 2024 )

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 SANDISK TECHNOLOGIES, INC., et. al., Case No. 22-cv-04376-HSG 8 Plaintiffs, ORDER GRANTING PLAINTIFFS’ 9 v. MOTION TO SUBSTITUTE AND AMEND CASE CAPTION 10 VIASAT, INC., Re: Dkt. No. 121 Defendant. 11 12 On May 9, 2023, Plaintiffs Western Digital Technologies, Inc. (“WDT”), Western Digital 13 Ireland Ltd. (“WDI”), SanDisk 3D IP Holdings Ltd. (“SD3D”), SanDisk Technologies LLC 14 (“SDT LLC”), SanDisk Storage Malaysia Sdn Bhd. (“SDSM”) (collectively, “Plaintiffs”) filed a 15 first amended complaint against Defendant Viasat, Inc. (“Defendant”) alleging infringement of 16 U.S. Patent Nos. 9,424,400 (“’400 Patent”), 10,447,667 (“’667 Patent”), and 8,504,834 (“’834 17 Patent”).1 See Dkt. No. 38 (“FAC”). When the FAC was filed, WDT was the title owner, SD3D 18 was the exclusive licensee and WDI held “all other rights and interests” to the ’400 and ’667 19 Patents (collectively, “Asserted Patents”). Id. 20 On September 20, 2024, Plaintiffs filed the present motion to substitute and amend case 21 caption. See Mot. at 2. Plaintiffs seek to substitute SDT LLC for WDI and SanDisk 22 Technologies, Inc. (“SDT Inc.”) for WDT. Id. at 3–4. Plaintiffs represent that WDI “merged with 23 and into” SDT LLC effective October 30, 2023. Dkt. No. 121-2. Plaintiffs also represent that 24 WDT entered into an Intellectual Property Legal Title Transfer Agreement (“Agreement”) with 25 26 1 On May 24, 2023, Defendant moved to dismiss Count Three of Plaintiffs’ FAC, which alleged 27 infringement of the ’834 Patent. Dkt. No. 40. The Court granted Defendant’s motion after 1 SDT Inc. on May 6, 2024, which transferred “legal title/ownership,” including “the right to sue 2 and recover damages for past, present and future infringement claims,” for the ’400 and ’667 3 Patents from WDT to SDT Inc. Dkt. No. 121 at 3. 4 Federal Rule of Civil Procedure 25(c) states “[i]f an interest is transferred, the action may be 5 continued by or against the original party unless the court, on motion, orders the transferee to be 6 substituted in the action or joined with the original party.” Fed. R. Civ. P. 25(c). “Rule 25(c) is not 7 designed to create new relationships among parties to a suit but is designed to allow the action to 8 continue unabated when an interest in the lawsuit changes hands.” In re Bernal, 207 F.3d 595, 598 9 (9th Cir. 2000) (quoting Collateral Control Corp. v. Deal, 638 F.2d 1362, 1364 (5th Cir. 1981)). Rule 10 25(c) “leaves the substitution decision to the trial court’s sound discretion.” Uniloc USA Inc. v. LG 11 Elecs. U.S.A. Inc., No. 18-CV-06737-JST, 2019 WL 690290, at *1 (N.D. Cal. Feb. 19, 2019) (quoting 12 In re Bernal, 207 F.3d at 598). Accordingly, the court “may allow the transferee to be substituted for 13 the transferor or . . . it may retain the transferor as a party and order that the transferee be made an 14 additional party.” McKesson Info. Sols., Inc. Bridge Med., Inc., No. CIVS022669 FCD KJM, 2006 15 WL 658100, at *2 (E.D. Cal. Mar. 13, 2006). 16 Plaintiffs argue that SDT Inc. should be substituted for WDT, because “WDT held legal 17 title to the ’400 and ’667 Patents as the time of the filing of the litigation” and “[t]hose rights 18 . . . have been transferred to SDT Inc. by way of an assignment agreement.” Mot. at 4. Plaintiffs 19 further argue that SDT LLC should be substituted for WDI, because WDI merged into SDT LLC 20 and SDT LLC now “holds all of WDI’s interests in the Asserted Patents.” Id. The Court finds 21 substituting WDI with SDT LLC and WDT with SDT Inc. is appropriate here. WDT no longer 22 holds any rights in the Asserted Patents, and WDI no longer exists as a corporate entity. 23 Defendant will not be prejudiced by the substitution,2 and it is clear that “this litigation will be 24 most fairly and efficiently adjudicated” by allowing substitution. See MobileMedia Ideas LLC v. 25 Samsung Elecs. Co., Case No. 17-cv-01958-HSG, Dkt. 92 (N.D. Cal. Jul. 6, 2017). // 26 // 27 1 Accordingly, Plaintiffs’ motion to substitute and amend case caption is GRANTED. The 2 || Clerk is therefore DIRECTED to terminate Western Digital Technologies, Inc. and Western 3 Digital Ireland Ltd. from the docket and add SanDisk Technologies, Inc. The Clerk is further 4 DIRECTED to update the case caption to “SANDISK TECHNOLOGIES, INC., et. al., v. 5 VIASAT, INC.” 6 IT IS SO ORDERED. 7 Dated: = 11/27/2024 8 Ai AE S. GILLIAM, □□ □□ 10 United States District Judge 11 a 12 15 16 17 Z 18 19 20 21 22 23 24 25 26 27 28