Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Case No. 6:20-cv-1210-ADA
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`OCEAN SEMICONDUCTOR LLC,
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`Plaintiff,
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`vs.
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`MEDIATEK INC. AND MEDIATEK
`USA INC. (“MEDIATEK”),
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`Defendant.
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`MEDIATEK INC.’S AND MEDIATEK USA INC.’S OPPOSITION TO MOTION FOR
`CONSOLIDATION OF CO-PENDING RELATED CASES
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`IPR2021-01342
`Ocean Semiconductor Exhibit 2034
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`

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`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 2 of 10
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`I.
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`INTRODUCTION
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`Consolidation is only appropriate when it promotes judicial efficiency without
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`prejudicing or unfairly advantaging any party. Arnold & Co., LLC v. David K. Young Consulting,
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`LLC, No. SA-13-CV-00146-DAE, 2013 WL 1411773, at *2 (W.D. Tex. Apr. 8, 2013). During
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`the parties’ meet and confer, Ocean explained that it seeks consolidation not just to coordinate
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`the schedules and Markman proceedings across the seven cases—which the Court routinely
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`accomplishes without formal consolidation—but also to limit the Defendants’ ability to
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`individually take discovery and submit briefing. Those limitations would prejudice MediaTek’s
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`ability to adequately defend its interests among a group of Defendants with different accused
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`products manufactured by different permutations of foundries who implement different
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`semiconductor-manufacturing tools. And there is no legal basis for such limitations, either. In
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`fact, the Court’s Order Governing Proceedings (“OGP”) explicitly provides that, even in
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`consolidated cases, defendants shall receive the same number of discovery requests and
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`summary-judgment pages they would receive if the consolidated cases were proceeding
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`individually. OGP Version 3.3, at n.2.
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`Judicial efficiency can be achieved—without prejudicing MediaTek—by treating this
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`case and the six others Ocean filed in this District just like the Court treats most other related
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`cases: by coordinating the schedules, given that all cases were filed on the same day, and by
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`holding a coordinated Markman hearing. There is no need for formal consolidation, and Ocean’s
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`request should be denied.
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`II.
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`LEGAL STANDARD
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`Federal Rule of Civil Procedure 42(a) gives the district court discretion to consolidate
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`actions if doing so promotes judicial efficiency. In re Air Crash Disaster at Fla. Everglades, 549
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`1
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`IPR2021-01342
`Ocean Semiconductor Exhibit 2034
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`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 3 of 10
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`F.2d 1006, 1012 (5th Cir. 1977).1 But a district court must weigh its interest in judicial efficiency
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`against the potential for prejudice caused by consolidation. See Arnold, 2013 WL 1411773, at *2.
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`Consolidation “does not merge the suits into a single action or change the rights of the parties;
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`rather, consolidation is intended only as a procedural device used to promote judicial efficiency
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`and economy and the actions maintain their separate identities.” Lay v. Spectrum Clubs, Inc., No.
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`SA-12-CV- 00754-DAE, 2013 WL 788080, at *2 (W.D. Tex. Mar. 1, 2013) (internal quotations
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`omitted). The party seeking consolidation bears the burden to show it is appropriate in the case at
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`hand. Certified/LVI Envtl. Servs., Inc. v. PI Constr. Corp., No. SA-01-CA-1036-FB-NN, 2003
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`WL 1798542, at *2 (W.D. Tex. March 3, 2003).
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`III.
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`FACTUAL BACKGROUND
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`Ocean’s seven cases accuse Defendants’ semiconductor products of infringing between
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`seven and nine patents. In this case, Ocean accuses almost 125 MediaTek semiconductor
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`products used in consumer electronics like phones, tablets, and networking devices. See Dkt. 1 at
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`¶¶ 7, 15. Ocean alleges that foundries—in MediaTek’s case, Taiwan Semiconductor
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`Manufacturing Company (“TSMC”) and United Microelectronics Corporation (“UMC”)—use
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`semiconductor-manufacturing tools that perform the patented methods when making the accused
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`semiconductor products. See id. at 8.
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`That pattern—accused devices manufactured by foundries using allegedly infringing
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`tools—is the basis for Ocean’s complaints in all seven suits. But the factual allegations diverge
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`in two key ways: (1) the foundries Ocean alleges manufacture the accused products in each case,
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`1 Consolidation is a procedural, non-patent issue to which Fifth Circuit law applies. See
`DynaEnergetics Eur. GmbH v. Hunting Titan, Inc, KTech, 6:20-cv-00069-ADA, 2020 WL
`3259807, at *1 (W.D. Tex. June 16, 2020) (citing K-Tech Telecomms., Inc. v. Time Warner
`Cable, Inc., 714 F.3d 1277, 1282 (Fed. Cir. 2013).
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`2
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`IPR2021-01342
`Ocean Semiconductor Exhibit 2034
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`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 4 of 10
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`and (2) the tools used to do so. While PDF’s Exensio, Applied Materials’ E3, and ASML’s
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`YieldStar and TWINSCAN tools are accused in each case, Ocean also alleges the accused
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`products were made by camLine’s LineWorks, Applied Materials’ SmartFactory, or both. No
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`two cases have complete overlap between the foundries and tools named in Ocean’s complaints,
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`as shown in the table below.
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`Table 1
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`Foundry
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`TSMC, UMC
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`TSMC
`SiLabs
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`TSMC, Own
`Fab
`Renesas
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`TSMC, UMC,
`Own Fab
`STMicro*
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`TSMC, Kioxa,
`Own Fab
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`MediaTek
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`NXP*
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`NVIDIA**
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`Western
`Digital
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`camLine
`Applied
`Smart
`Factory
`Both
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`Tool
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`*
`**
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`Ocean also asserts the ’097 Patent.
`Ocean also asserts the ’170 and ’383 Patents.
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`Notably, Ocean reserves the right in its Motion to assert infringement theories based on
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`additional foundries, importers, or tools leaving open the possibility that the cases will diverge
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`even more. Dkt. 19 at nn. 1, 2.
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`IV.
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`ARGUMENT
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`MediaTek does not oppose the judicial-efficiency measures this Court routinely takes in
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`cases asserting the same patents, like entering coordinated schedules and holding coordinated
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`Markman proceedings. Ocean filed all seven of its cases on the same day and filed notices of
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`case readiness in all cases within a ten-day span. So, entering similar schedules in each case
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`makes sense and would allow the Court to consider claim construction, discovery disputes, and
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`dispositive motions on similar timelines for each case. Holding a joint Markman hearing among
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`all cases also makes sense, so long as each Defendant can reasonably pursue its individual
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`interests.
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`3
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`IPR2021-01342
`Ocean Semiconductor Exhibit 2034
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`

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`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 5 of 10
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`Ocean’s Motion does not explain what consolidation measures it seeks beyond the
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`Court’s routine practices or why such measures are required to promote judicial efficiency. But,
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`as Ocean described during the parties’ meet-and-confer, it wants the Court to give Ocean
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`substantive and procedural advantages under the guise of judicial efficiency. For example, Ocean
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`wants the Court to limit Defendants’ written discovery and require Defendants to file joint briefs,
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`even on dispositive motions.2 Consolidation, particularly under these terms, would prejudice
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`MediaTek without improving judicial efficiency.
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`A.
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`Consolidation would prejudice MediaTek.
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`As explained above in the Factual Background, Ocean’s seven cases do not completely
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`overlap. Because Ocean accuses different combinations of foundries and tools in each case,
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`MediaTek’s interests are unique. Even where Ocean asserts the same seven patents, each
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`foundry’s different implementation of the various tools necessitates different positions on
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`infringement, claim construction, and (potentially) invalidity. Further, MediaTek does not have
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`its own fabrication capabilities3 and is unlikely to have any relevant technical documents.
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`Therefore, this case may present different discovery issues than those where Ocean accuses the
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`Defendant’s own fabrication activities. See supra, Table 1 (entries for Renesas, ST Micro, NXP,
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`and Western Digital).
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`2 While less specific than Ocean’s representations on the parties’ meet-and-confer, Ocean’s
`Motion also implies that it wants to limit Defendants’ ability to separately brief issues. Dkt. 19 at
`4 (complaining that “every defendant has filed a Motion to Dismiss”); 7 (proposing that by
`consolidating the cases, the Court could “only consider[] a single set of briefs”). Ocean’s Motion
`does not mention discovery limitations.
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`3 See https://i.mediatek.com/about-mediatek (“MediaTek is the world’s 4th largest global fabless
`semiconductor company and powers more than 2 billion devices a year.”)
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`4
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`IPR2021-01342
`Ocean Semiconductor Exhibit 2034
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`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 6 of 10
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`Western Digital’s two IPRs are a more concrete example of the Defendants’ divergent
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`interests. In both IPR petitions, Western Digital agrees that if the PTAB institutes the IPRs,
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`Western Digital will not “pursue invalidity on the same grounds in district court.” Ex. A, IPR
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`No. 2021-00864, Paper 1 at 6; Ex. B, IPR No. IPR2021-00929, Paper 1 at 7. But MediaTek, who
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`has not yet filed IPRs and is not a real party in interest to Western Digital’s IPRs, is not bound by
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`that stipulation. Therefore, MediaTek can raise those invalidity grounds regardless of whether
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`the PTAB institutes Western Digital’s IPRs. Forcing MediaTek to pursue the same invalidity
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`positions as Western Digital, by requiring either joint invalidity contentions or joint briefing on
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`invalidity issues, would therefore prejudice MediaTek.
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`This divergence alone is sufficient grounds to deny Ocean’s Motion, as Ocean bears the
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`burden to establish as a threshold matter that the cases have common questions of law and fact.
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`YETI Coolers, LLC v. RTIC Drinkware, LLC, No. 1:16-CV-909-RP, 2017 WL 5505325, at *2
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`(W.D. Tex. Jan. 18, 2017). It is not enough that the cases entail similar questions. Id. (denying
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`consolidation where “the questions arising in each case are not the same and necessarily can be
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`resolved differently for each category of products”).
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`Any arrangement that inhibits MediaTek’s ability to defend its interests—such as limiting
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`its discovery rights or forcing it to submit joint briefs—is prejudicial. This is especially true
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`because the limitations Ocean seeks would provide MediaTek fewer rights than a typical
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`defendant sued in this Court would receive. The OGP provides limits—on both discovery and
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`summary-judgment motions—that apply to each “side.” OGP Version 3.3, at pp. 2, 7. The OGP
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`defines “side” as including “related defendants sued together.” Id. at n.2. But if “the Court
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`consolidates related cases for pretrial purposes, with regard to calculating limits imposed by this
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`Order, a ‘side’ shall be interpreted as if the cases were proceeding individually.” Id. In other
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`5
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`IPR2021-01342
`Ocean Semiconductor Exhibit 2034
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`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 7 of 10
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`words, Ocean seeks limitations beyond what this Court finds to be appropriate, even in
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`consolidated cases. Imposing limits on MediaTek that are stricter than limitations applied in any
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`other case is inherently prejudicial.
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`Further, Ocean provides no authority to support its request that, if consolidated,
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`Defendants should have to file joint briefs even for dispositive motions. MediaTek is unaware of
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`any case where this Court has imposed such a limitation and doing so would be improperly
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`prejudicial. Cf Lay, 2013 WL 788080, at *2 (consolidation “does not merge the suits into a single
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`action or change the rights of the parties”); St. Bernard Gen. Hosp., Inc. v. Hosp. Serv. Ass’n of
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`New Orleans, Inc., 712 F.2d 978, 989 (5th Cir. 1983) (“Consolidation is improper if it would
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`prejudice the rights of the parties.”); Dupont v. S. Pac. Co., 366 F.2d 193, 196 (5th Cir. 1966)
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`(“Where prejudice to rights of the parties obviously results from the order of consolidation, the
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`action of the trial judge has been held reversible error.”). Ocean’s request should be denied.
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`B.
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`Consolidation will not increase judicial efficiency, but merely provide Ocean
`with a litigation advantage.
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`In complaining about how much work it did to respond to Defendants’ Motions to
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`Dismiss, Ocean’s Motion ignores an obvious point—it chose to file seven lawsuits at once in this
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`District (and three others in the Eastern District of Texas and the District of Massachusetts).
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`Responding to seven motions to dismiss is not the result of Defendants’ conspiracy against
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`Ocean or an example of prejudice; it is merely the ordinary and foreseeable result of suing seven
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`defendants. Ocean’s Motion seeks not judicial economy, but an advantage in litigation by
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`reducing the work needed to prosecute its seven cases. Consolidation is improper when it gives
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`one party an unfair litigation advantage, which would inherently prejudice the other party. St.
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`Bernard Gen. Hosp., 712 F.2d at 989; Certified/LVI, 2003 WL 1798542, at *2 (finding that a
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`6
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`IPR2021-01342
`Ocean Semiconductor Exhibit 2034
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`

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`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 8 of 10
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`“well-drafted” motion for consolidation will argue that consolidation would not result in unfair
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`prejudice).
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`As explained above, there is no legal basis or precedent for consolidating Ocean’s seven
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`cases and then requiring all Defendants to file joint briefing. Even if requiring a single, joint brief
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`on every issue would increase judicial efficiency, the Court’s interest in judicial efficiency must
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`be weighed against the potential prejudice to a party. See Arnold, 2013 WL 1411773, at *2. And
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`consolidating the cases under the terms explained in the OGP (i.e. giving each Defendant its full
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`discovery and briefing rights) provides little judicial economy beyond the coordinated schedule
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`and Markman proceedings that are routine in this Court.
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`Ocean argues that consolidation will eliminate the risk for legally or factually
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`inconsistent rulings, thereby increasing judicial efficiency. But its primary basis for that
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`argument is the assumption that consolidation will yield a single brief for each issue, not
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`“briefing spread across the actions” which could “easily lead this Court to making inconsistent
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`decisions.” Dkt. 19 at 6. Again, requiring a single set of briefs is improper.
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`Further, the fact that all cases are already pending before the same Judge substantially
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`reduces the risk of inconsistent results. Keranos, LLC v. Analog Devices, Inc., No. 2:10-CV-207,
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`2012 WL 12892441, at *3 (E.D. Tex. Feb. 1, 2012) (denying consolidation and finding no risk of
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`inconsistent rulings where five patent infringement cases were before the same judge). Because
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`the cases will proceed on very similar schedules, similar motions should be ripe for adjudication
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`at similar times. And the Court can just as easily compare each Defendant’s brief for consistency
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`across cases as it can within a consolidated case. Therefore, consolidation does not increase
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`judicial efficiency or reduce the risk of inconsistent results.
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`7
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`IPR2021-01342
`Ocean Semiconductor Exhibit 2034
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`

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`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 9 of 10
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`V.
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`CONCLUSION
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`Other than a litigation advantage to itself, Ocean has not identified any benefits that
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`would flow from a consolidated case handled under the OGP’s “per-side” limitations. And
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`consolidation under the terms Ocean seeks would impose prejudicial discovery and briefing
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`limitations. Either way, consolidation is improper and unnecessary here and Ocean’s request
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`should be denied.
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`8
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`IPR2021-01342
`Ocean Semiconductor Exhibit 2034
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`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 10 of 10
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`Dated: June 4, 2021
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`/s/ David H. Harper
`David H. Harper
`Texas Bar No. 09025540
`david.harper@haynesboone.com
`Stephanie Sivinski
`Texas Bar No. 24075080
`stephanie.sivinski@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`(214) 651-5000 (telephone)
`(214) 200-0615 (fax)
`
`COUNSEL FOR DEFENDANTS MEDIATEK INC.
`AND MEDIATEK USA INC.
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 4, 2021, a true and correct copy of the foregoing was served
`on all counsel of record via the Court’s CM/ECF System.
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`/s/ David H. Harper
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`9
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`IPR2021-01342
`Ocean Semiconductor Exhibit 2034
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`