`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Case No. 6:20-cv-1210-ADA
`
`§
`
`§§
`
`
`§
`§
`§
`§
`§
`§
`
`§§
`
`
`
`OCEAN SEMICONDUCTOR LLC,
`
`Plaintiff,
`
`vs.
`
`MEDIATEK INC. AND MEDIATEK
`USA INC. (“MEDIATEK”),
`
`Defendant.
`
`MEDIATEK INC.’S AND MEDIATEK USA INC.’S OPPOSITION TO MOTION FOR
`CONSOLIDATION OF CO-PENDING RELATED CASES
`
`IPR2021-01348
`Ocean Semiconductor Exhibit 2031
`
`
`
`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 2 of 10
`
`I.
`
`INTRODUCTION
`
`Consolidation is only appropriate when it promotes judicial efficiency without
`
`prejudicing or unfairly advantaging any party. Arnold & Co., LLC v. David K. Young Consulting,
`
`LLC, No. SA-13-CV-00146-DAE, 2013 WL 1411773, at *2 (W.D. Tex. Apr. 8, 2013). During
`
`the parties’ meet and confer, Ocean explained that it seeks consolidation not just to coordinate
`
`the schedules and Markman proceedings across the seven cases—which the Court routinely
`
`accomplishes without formal consolidation—but also to limit the Defendants’ ability to
`
`individually take discovery and submit briefing. Those limitations would prejudice MediaTek’s
`
`ability to adequately defend its interests among a group of Defendants with different accused
`
`products manufactured by different permutations of foundries who implement different
`
`semiconductor-manufacturing tools. And there is no legal basis for such limitations, either. In
`
`fact, the Court’s Order Governing Proceedings (“OGP”) explicitly provides that, even in
`
`consolidated cases, defendants shall receive the same number of discovery requests and
`
`summary-judgment pages they would receive if the consolidated cases were proceeding
`
`individually. OGP Version 3.3, at n.2.
`
`Judicial efficiency can be achieved—without prejudicing MediaTek—by treating this
`
`case and the six others Ocean filed in this District just like the Court treats most other related
`
`cases: by coordinating the schedules, given that all cases were filed on the same day, and by
`
`holding a coordinated Markman hearing. There is no need for formal consolidation, and Ocean’s
`
`request should be denied.
`
`II.
`
`LEGAL STANDARD
`
`Federal Rule of Civil Procedure 42(a) gives the district court discretion to consolidate
`
`actions if doing so promotes judicial efficiency. In re Air Crash Disaster at Fla. Everglades, 549
`
`1
`
`IPR2021-01348
`Ocean Semiconductor Exhibit 2031
`
`
`
`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 3 of 10
`
`F.2d 1006, 1012 (5th Cir. 1977).1 But a district court must weigh its interest in judicial efficiency
`
`against the potential for prejudice caused by consolidation. See Arnold, 2013 WL 1411773, at *2.
`
`Consolidation “does not merge the suits into a single action or change the rights of the parties;
`
`rather, consolidation is intended only as a procedural device used to promote judicial efficiency
`
`and economy and the actions maintain their separate identities.” Lay v. Spectrum Clubs, Inc., No.
`
`SA-12-CV- 00754-DAE, 2013 WL 788080, at *2 (W.D. Tex. Mar. 1, 2013) (internal quotations
`
`omitted). The party seeking consolidation bears the burden to show it is appropriate in the case at
`
`hand. Certified/LVI Envtl. Servs., Inc. v. PI Constr. Corp., No. SA-01-CA-1036-FB-NN, 2003
`
`WL 1798542, at *2 (W.D. Tex. March 3, 2003).
`
`III.
`
`FACTUAL BACKGROUND
`
`Ocean’s seven cases accuse Defendants’ semiconductor products of infringing between
`
`seven and nine patents. In this case, Ocean accuses almost 125 MediaTek semiconductor
`
`products used in consumer electronics like phones, tablets, and networking devices. See Dkt. 1 at
`
`¶¶ 7, 15. Ocean alleges that foundries—in MediaTek’s case, Taiwan Semiconductor
`
`Manufacturing Company (“TSMC”) and United Microelectronics Corporation (“UMC”)—use
`
`semiconductor-manufacturing tools that perform the patented methods when making the accused
`
`semiconductor products. See id. at 8.
`
`That pattern—accused devices manufactured by foundries using allegedly infringing
`
`tools—is the basis for Ocean’s complaints in all seven suits. But the factual allegations diverge
`
`in two key ways: (1) the foundries Ocean alleges manufacture the accused products in each case,
`
`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).
`
`2
`
`IPR2021-01348
`Ocean Semiconductor Exhibit 2031
`
`
`
`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 4 of 10
`
`and (2) the tools used to do so. While PDF’s Exensio, Applied Materials’ E3, and ASML’s
`
`YieldStar and TWINSCAN tools are accused in each case, Ocean also alleges the accused
`
`products were made by camLine’s LineWorks, Applied Materials’ SmartFactory, or both. No
`
`two cases have complete overlap between the foundries and tools named in Ocean’s complaints,
`
`as shown in the table below.
`
`Table 1
`
`Foundry
`
`TSMC, UMC
`
`TSMC
`SiLabs
`
`TSMC, Own
`Fab
`Renesas
`
`TSMC, UMC,
`Own Fab
`STMicro*
`
`TSMC, Kioxa,
`Own Fab
`
`MediaTek
`
`NXP*
`
`NVIDIA**
`
`Western
`Digital
`
`camLine
`Applied
`Smart
`Factory
`Both
`
`Tool
`
`*
`**
`
`Ocean also asserts the ’097 Patent.
`Ocean also asserts the ’170 and ’383 Patents.
`
`Notably, Ocean reserves the right in its Motion to assert infringement theories based on
`
`additional foundries, importers, or tools leaving open the possibility that the cases will diverge
`
`even more. Dkt. 19 at nn. 1, 2.
`
`IV.
`
`ARGUMENT
`
`MediaTek does not oppose the judicial-efficiency measures this Court routinely takes in
`
`cases asserting the same patents, like entering coordinated schedules and holding coordinated
`
`Markman proceedings. Ocean filed all seven of its cases on the same day and filed notices of
`
`case readiness in all cases within a ten-day span. So, entering similar schedules in each case
`
`makes sense and would allow the Court to consider claim construction, discovery disputes, and
`
`dispositive motions on similar timelines for each case. Holding a joint Markman hearing among
`
`all cases also makes sense, so long as each Defendant can reasonably pursue its individual
`
`interests.
`
`3
`
`IPR2021-01348
`Ocean Semiconductor Exhibit 2031
`
`
`
`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 5 of 10
`
`Ocean’s Motion does not explain what consolidation measures it seeks beyond the
`
`Court’s routine practices or why such measures are required to promote judicial efficiency. But,
`
`as Ocean described during the parties’ meet-and-confer, it wants the Court to give Ocean
`
`substantive and procedural advantages under the guise of judicial efficiency. For example, Ocean
`
`wants the Court to limit Defendants’ written discovery and require Defendants to file joint briefs,
`
`even on dispositive motions.2 Consolidation, particularly under these terms, would prejudice
`
`MediaTek without improving judicial efficiency.
`
`A.
`
`Consolidation would prejudice MediaTek.
`
`As explained above in the Factual Background, Ocean’s seven cases do not completely
`
`overlap. Because Ocean accuses different combinations of foundries and tools in each case,
`
`MediaTek’s interests are unique. Even where Ocean asserts the same seven patents, each
`
`foundry’s different implementation of the various tools necessitates different positions on
`
`infringement, claim construction, and (potentially) invalidity. Further, MediaTek does not have
`
`its own fabrication capabilities3 and is unlikely to have any relevant technical documents.
`
`Therefore, this case may present different discovery issues than those where Ocean accuses the
`
`Defendant’s own fabrication activities. See supra, Table 1 (entries for Renesas, ST Micro, NXP,
`
`and Western Digital).
`
`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.
`
`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.”)
`
`4
`
`IPR2021-01348
`Ocean Semiconductor Exhibit 2031
`
`
`
`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 6 of 10
`
`Western Digital’s two IPRs are a more concrete example of the Defendants’ divergent
`
`interests. In both IPR petitions, Western Digital agrees that if the PTAB institutes the IPRs,
`
`Western Digital will not “pursue invalidity on the same grounds in district court.” Ex. A, IPR
`
`No. 2021-00864, Paper 1 at 6; Ex. B, IPR No. IPR2021-00929, Paper 1 at 7. But MediaTek, who
`
`has not yet filed IPRs and is not a real party in interest to Western Digital’s IPRs, is not bound by
`
`that stipulation. Therefore, MediaTek can raise those invalidity grounds regardless of whether
`
`the PTAB institutes Western Digital’s IPRs. Forcing MediaTek to pursue the same invalidity
`
`positions as Western Digital, by requiring either joint invalidity contentions or joint briefing on
`
`invalidity issues, would therefore prejudice MediaTek.
`
`This divergence alone is sufficient grounds to deny Ocean’s Motion, as Ocean bears the
`
`burden to establish as a threshold matter that the cases have common questions of law and fact.
`
`YETI Coolers, LLC v. RTIC Drinkware, LLC, No. 1:16-CV-909-RP, 2017 WL 5505325, at *2
`
`(W.D. Tex. Jan. 18, 2017). It is not enough that the cases entail similar questions. Id. (denying
`
`consolidation where “the questions arising in each case are not the same and necessarily can be
`
`resolved differently for each category of products”).
`
`Any arrangement that inhibits MediaTek’s ability to defend its interests—such as limiting
`
`its discovery rights or forcing it to submit joint briefs—is prejudicial. This is especially true
`
`because the limitations Ocean seeks would provide MediaTek fewer rights than a typical
`
`defendant sued in this Court would receive. The OGP provides limits—on both discovery and
`
`summary-judgment motions—that apply to each “side.” OGP Version 3.3, at pp. 2, 7. The OGP
`
`defines “side” as including “related defendants sued together.” Id. at n.2. But if “the Court
`
`consolidates related cases for pretrial purposes, with regard to calculating limits imposed by this
`
`Order, a ‘side’ shall be interpreted as if the cases were proceeding individually.” Id. In other
`
`5
`
`IPR2021-01348
`Ocean Semiconductor Exhibit 2031
`
`
`
`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 7 of 10
`
`words, Ocean seeks limitations beyond what this Court finds to be appropriate, even in
`
`consolidated cases. Imposing limits on MediaTek that are stricter than limitations applied in any
`
`other case is inherently prejudicial.
`
`Further, Ocean provides no authority to support its request that, if consolidated,
`
`Defendants should have to file joint briefs even for dispositive motions. MediaTek is unaware of
`
`any case where this Court has imposed such a limitation and doing so would be improperly
`
`prejudicial. Cf Lay, 2013 WL 788080, at *2 (consolidation “does not merge the suits into a single
`
`action or change the rights of the parties”); St. Bernard Gen. Hosp., Inc. v. Hosp. Serv. Ass’n of
`
`New Orleans, Inc., 712 F.2d 978, 989 (5th Cir. 1983) (“Consolidation is improper if it would
`
`prejudice the rights of the parties.”); Dupont v. S. Pac. Co., 366 F.2d 193, 196 (5th Cir. 1966)
`
`(“Where prejudice to rights of the parties obviously results from the order of consolidation, the
`
`action of the trial judge has been held reversible error.”). Ocean’s request should be denied.
`
`B.
`
`Consolidation will not increase judicial efficiency, but merely provide Ocean
`with a litigation advantage.
`
`In complaining about how much work it did to respond to Defendants’ Motions to
`
`Dismiss, Ocean’s Motion ignores an obvious point—it chose to file seven lawsuits at once in this
`
`District (and three others in the Eastern District of Texas and the District of Massachusetts).
`
`Responding to seven motions to dismiss is not the result of Defendants’ conspiracy against
`
`Ocean or an example of prejudice; it is merely the ordinary and foreseeable result of suing seven
`
`defendants. Ocean’s Motion seeks not judicial economy, but an advantage in litigation by
`
`reducing the work needed to prosecute its seven cases. Consolidation is improper when it gives
`
`one party an unfair litigation advantage, which would inherently prejudice the other party. St.
`
`Bernard Gen. Hosp., 712 F.2d at 989; Certified/LVI, 2003 WL 1798542, at *2 (finding that a
`
`6
`
`IPR2021-01348
`Ocean Semiconductor Exhibit 2031
`
`
`
`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 8 of 10
`
`“well-drafted” motion for consolidation will argue that consolidation would not result in unfair
`
`prejudice).
`
`As explained above, there is no legal basis or precedent for consolidating Ocean’s seven
`
`cases and then requiring all Defendants to file joint briefing. Even if requiring a single, joint brief
`
`on every issue would increase judicial efficiency, the Court’s interest in judicial efficiency must
`
`be weighed against the potential prejudice to a party. See Arnold, 2013 WL 1411773, at *2. And
`
`consolidating the cases under the terms explained in the OGP (i.e. giving each Defendant its full
`
`discovery and briefing rights) provides little judicial economy beyond the coordinated schedule
`
`and Markman proceedings that are routine in this Court.
`
`Ocean argues that consolidation will eliminate the risk for legally or factually
`
`inconsistent rulings, thereby increasing judicial efficiency. But its primary basis for that
`
`argument is the assumption that consolidation will yield a single brief for each issue, not
`
`“briefing spread across the actions” which could “easily lead this Court to making inconsistent
`
`decisions.” Dkt. 19 at 6. Again, requiring a single set of briefs is improper.
`
`Further, the fact that all cases are already pending before the same Judge substantially
`
`reduces the risk of inconsistent results. Keranos, LLC v. Analog Devices, Inc., No. 2:10-CV-207,
`
`2012 WL 12892441, at *3 (E.D. Tex. Feb. 1, 2012) (denying consolidation and finding no risk of
`
`inconsistent rulings where five patent infringement cases were before the same judge). Because
`
`the cases will proceed on very similar schedules, similar motions should be ripe for adjudication
`
`at similar times. And the Court can just as easily compare each Defendant’s brief for consistency
`
`across cases as it can within a consolidated case. Therefore, consolidation does not increase
`
`judicial efficiency or reduce the risk of inconsistent results.
`
`7
`
`IPR2021-01348
`Ocean Semiconductor Exhibit 2031
`
`
`
`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 9 of 10
`
`V.
`
`CONCLUSION
`
`Other than a litigation advantage to itself, Ocean has not identified any benefits that
`
`would flow from a consolidated case handled under the OGP’s “per-side” limitations. And
`
`consolidation under the terms Ocean seeks would impose prejudicial discovery and briefing
`
`limitations. Either way, consolidation is improper and unnecessary here and Ocean’s request
`
`should be denied.
`
`8
`
`IPR2021-01348
`Ocean Semiconductor Exhibit 2031
`
`
`
`Case 6:20-cv-01210-ADA Document 25 Filed 06/04/21 Page 10 of 10
`
`Dated: June 4, 2021
`
`/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.
`
`CERTIFICATE OF SERVICE
`
`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.
`
`/s/ David H. Harper
`
`9
`
`IPR2021-01348
`Ocean Semiconductor Exhibit 2031
`
`