Case 6:20-cv-01212-ADA Document 28 Filed 06/04/21 Page 1 of 7
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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-1212-ADA
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`§§§§§§
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`§
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`§§
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`OCEAN SEMICONDUCTOR LLC,
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`Plaintiff,
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`vs.
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`NXP USA, INC.,
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`Defendant.
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`NXP USA, INC.’S OPPOSITION TO OCEAN SEMICONDUCTOR’S
`MOTION FOR PRE-TRIAL CONSOLIDATION OF CO-PENDING RELATED CASES
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`IPR2021-01348
`Ocean Semiconductor Exhibit 2032
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`Case 6:20-cv-01212-ADA Document 28 Filed 06/04/21 Page 2 of 7
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`I.
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`INTRODUCTION
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`Essentially, Ocean complains that its decision to sue 10 defendants across 3 forums on
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`various combinations of 10 total asserted patents has created work it would rather not do.
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`Although Ocean offers no concrete proposal for how consolidation would apply to the 7 cases
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`pending before this Court, Plaintiff’s general objective is clear enough: it wants the Court to treat
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`7 cases as a single case for Plaintiff’s convenience. During the parties’ meet and confer, Plaintiff
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`explained that it seeks consolidation not just to coordinate the schedules and Markman
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`proceedings across the 7 cases—which the Court routinely accomplishes without formal
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`consolidation and to which NXP does not object—but also, contrary to the Court’s Order
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`Governing Proceedings (“OGP”)1, to limit the Defendants’ ability to take individual discovery
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`and submit separate briefing. Such limitations would unfairly prejudice NXP’s defense among a
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`group of Defendants with different accused products manufactured by different combinations of
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`foundries that implement different semiconductor-related tools.
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`II.
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`APPLICABLE LAW
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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, *2 (W.D. Tex. April 8, 2013). Federal
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`Rule of Civil Procedure 42(a) gives the district court discretion to consolidate actions if doing so
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`promotes judicial efficiency. In re Air Crash Disaster at Florida Everglades, 549 F.2d 1006,
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`1 OGP Version 3.3, at n.2, 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.
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`IPR2021-01348
`Ocean Semiconductor Exhibit 2032
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`Case 6:20-cv-01212-ADA Document 28 Filed 06/04/21 Page 3 of 7
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`1012 (5th Cir. 1977).2 But a district court must weigh its interest in judicial efficiency against the
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`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). Ocean bears the burden of showing consolidation is appropriate. Certified/LVI
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`Environmental Servs., Inc. v. PI Construction Corp., No. SA-01-CA-1036-FB-NN, 2003 WL
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`1798542, *2 (W.D. Tex. March 3, 2003).
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`III.
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`ARGUMENT
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`The Court should deny Ocean’s request for consolidation because (1) Ocean cannot meet
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`the threshold requirement to show common questions of law and fact, and (2) pre-trial
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`consolidation would not significantly reduce the time or cost of litigating the cases but instead
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`prejudice NXP and the other Defendants.
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`A.
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`Ocean Failed Its Burden to Show Common Questions of Facts and Law
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`The Motion should be denied because Ocean cannot meet the threshold showing that the
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`seven cases share “common question[s] of law or fact” warranting consolidation. YETI Coolers,
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`LLC v. RTIC Drinkware, LLC, No. 1:16-CV-909-RP, 2017 WL 5505325, at *2 (W.D. Tex. Jan.
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`18, 2017). While Ocean has accused each Defendant of infringing 7–9 patents, the accused
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`products for each Defendant are different, and the Defendants are unrelated, separate—and in
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`2 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, *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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`IPR2021-01348
`Ocean Semiconductor Exhibit 2032
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`

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`Case 6:20-cv-01212-ADA Document 28 Filed 06/04/21 Page 4 of 7
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`most instances, competitor—entities. The following table shows the variability in accused tools,
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`manufacturers, and asserted patents across the 7 cases before this Court:
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`Table 1: Accused Tools & Foundries by Defendant
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`Foundry
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`TSMC,
`UMC
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`TSMC,
`UMC, Own
`Fab
`STMicro*
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`MediaTek
`NVIDIA**
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`NXP*
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`TSMC,
`Kioxia, Own
`Fab
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`Western
`Digital
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`TSMC, Own
`Fab
`TSMC
`camLine SiLabs Renesas
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`Applied
`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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`Ocean incorrectly assumes that common questions of fact and law exist because there are
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`overlapping patents and all 7 Defendants have accused devices manufactured by foundries using
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`allegedly infringing tools or software. Multiple distinctions exist beyond the obvious distinction
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`that the accused products differ between each of the Defendants. First, NXP possesses internal
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`fabrication capabilities and is necessarily unique on that basis alone. Second, as the above table
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`shows, there is no overarching commonality of third party fabs. Third, the fact that validity and
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`infringement of overlapping patents is at issue in separate actions does not justify consolidation
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`because Ocean’s infringement contentions remain unique to each Defendant and their particular
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`methods and products. See, e.g., Fenner Invs., Ltd. v. 3Com Corp., No. CIV.A.6:08-CV-61,
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`2008 WL 4876816, at *1 (E.D. Tex. Nov. 12, 2008) (denying consolidation where validity and
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`infringement of same patents were at issue in separate cases); Talon Research, LLC v. Toshiba
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`Am. Elec. Components, Inc., Case No. 4:11-cv-4819-CW, Dkt No. 70 (N.D. Cal. Mar. 5, 2012)
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`(denying motion to relate cases involving a single patent because Section 299 of the America
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`Inventions Act evinces Congress’s intent to not group multiple, unrelated defendants together
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`IPR2021-01348
`Ocean Semiconductor Exhibit 2032
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`Case 6:20-cv-01212-ADA Document 28 Filed 06/04/21 Page 5 of 7
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`simply because they allegedly infringe the same patent). Even the invalidity issue weighs against
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`commonality because Western Digital has filed IPR petitions that will impose preclusive effects
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`on Western Digital if instituted that would not apply to NXP.
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`In YETI, this Court denied a motion to consolidate a set of cases involving drinkware
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`products with separate cases involving soft-sided coolers even though the plaintiff, RTIC, accused
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`the same defendant, YETI, using mirror-image legal claims of patent and trade dress infringement.
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`2017 WL 5505325, at *1. The Court was not persuaded that there were “common question[s] of
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`fact and law” “simply because [the cases] involve the same types of claims and the products at
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`issue happen to be manufactured by the same companies.” Id. at *2. Rather, “the factual inquiries
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`RTIC believe are common to these cases are actually different inquiries relating to different
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`products, with different appearances and different designs.” Id. The holding in YETI applies here,
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`and with greater force given that the parties differ across the cases and are differently situated as
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`shown in Table 1.
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`Finally, Ocean fails to carry its burden because by its own admission its cases against
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`Defendants are both in flux and pleaded with the minimum specificity required to satisfy its notice
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`pleading obligation. Ocean admits that the possibility of an even greater divergence exists by
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`reserving the right in its Motion to assert additional infringement theories based on yet-unnamed
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`foundries, importers, or tools. (Dkt. 25 at 2, nn. 1-2.) And without infringement contentions
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`specifying what claims are asserted on what basis against which Defendants, Ocean’s current
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`assertions are merely catch-all allegations that NXP infringes “at least one claim of” a given
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`asserted patent. (Dkt. 1 at ¶¶ 112, 132, 152, 194, 214, 234.)
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`IPR2021-01348
`Ocean Semiconductor Exhibit 2032
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`Case 6:20-cv-01212-ADA Document 28 Filed 06/04/21 Page 6 of 7
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`B.
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`Consolidation Would Not Aid Judicial Efficiency; It Would Only Unfairly
`Prejudice NXP And The Other Defendants
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`Ocean asserts that consolidation will promote judicial efficiency through consolidated
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`discovery but does not identify any particular proposed procedures beyond “consolidated
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`briefing.” (Dkt. 25 at 6–7.) More importantly, Ocean fails to explain why the Court’s standard
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`procedures and current OGP provisions are inadequate to address any fair consideration of
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`efficiency. This Court already has procedures in place for scheduling, discovery, claim
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`construction, and briefing to streamline the disposition of related cases, and consolidation would
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`not yield any additional efficiencies that would significantly reduce the time or cost of litigation.
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`And, as set forth in the OGP, the Court’s preference is to impose consistent limits “per side” that
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`renders consolidation irrelevant for purposes of each Defendants’ discovery limits. (See OGP at
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`p. 2 n.2.) (“In the event that the Court consolidates related cases for pretrial purposes, with
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`regard to calculating limits imposed by this Order, a “side” shall be interpreted as if the cases
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`were proceeding individually.”).
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`Ultimately, Ocean seeks not judicial economy, but unfair advantage in litigation by
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`reducing Defendants’ briefing throughout the litigation, as well as its own workload in pursuing
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`the seven different cases Ocean chose to file. Consolidation would yield no particular
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`efficiencies, but it would create one massively complex seven-defendant case implicating
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`different parties, products, and issues. Under the circumstances, each case should proceed
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`individually under the Court’s current procedures.
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`IV.
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`CONCLUSION
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`For the foregoing reasons, NXP respectfully requests that the Court deny Ocean’s Motion
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`for Pre-Trial Consolidation.
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`IPR2021-01348
`Ocean Semiconductor Exhibit 2032
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`Case 6:20-cv-01212-ADA Document 28 Filed 06/04/21 Page 7 of 7
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`Dated: June 4, 2021
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`Respectfully submitted,
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` /s/ Bradley D. Coburn
`Barry K. Shelton
`Texas State Bar No. 24055029
`Bradley D. Coburn
`Texas State Bar No. 24036377
`SHELTON COBURN LLP
`311 RR 620, Suite 205
`Austin, TX 78734-4775
`bshelton@sheltoncoburn.com
`coburn@sheltoncoburn.com
`(512) 263-2165 (Telephone)
`(512) 263-2166 (Facsimile)
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`Attorneys for Defendants
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served on all counsel of record via the Court’s ECF system.
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` /s/ Bradley D. Coburn
`Bradley D. Coburn
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`IPR2021-01348
`Ocean Semiconductor Exhibit 2032
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`