Sandisk Technologies, Inc. v. Viasat, Inc.

Background

The plaintiffs had filed a patent-infringement lawsuit against Viasat concerning three United States patents. At the time of the amended complaint, Western Digital Technologies, Inc. held title to two of the patents, SanDisk 3D IP Holdings Ltd. was their exclusive licensee, and Western Digital Ireland Ltd. held the other rights and interests in those patents.

The plaintiffs later moved under Federal Rule of Civil Procedure 25(c), which permits a court to substitute or add a party when an interest in the lawsuit has been transferred. They asked to substitute SanDisk Technologies LLC for Western Digital Ireland Ltd. because Western Digital Ireland had merged into SanDisk Technologies LLC effective October 30, 2023. They also asked to substitute SanDisk Technologies, Inc. for Western Digital Technologies, Inc. because an agreement transferred legal title and the right to sue for past, present, and future infringement of the two patents.

Court’s Analysis

The court explained that Rule 25(c) allows a lawsuit to continue when an interest in the case changes hands and gives the trial court discretion to decide whether substitution is appropriate. The court found that Western Digital Technologies no longer held rights in the asserted patents and that Western Digital Ireland no longer existed as a corporate entity. It also found that Viasat would not be prejudiced by the substitutions and that substitution would allow the litigation to be handled more fairly and efficiently.

Disposition

Judge Haywood S. Gilliam granted the plaintiffs’ motion to substitute and amend the case caption. The clerk was directed to terminate Western Digital Technologies, Inc. and Western Digital Ireland Ltd. from the docket, add SanDisk Technologies, Inc., and update the caption to “SANDISK TECHNOLOGIES, INC., et. al., v. VIASAT, INC.” The order addressed the parties and caption only; the excerpt does not decide whether Viasat infringed the patents.