Case 3:17-cv-03980-WHA Document 73 Filed 09/28/17 Page 1 of 9
`
`
`
`Jon A. Birmingham (Cal. Bar No. 271034)
`jbirmi@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`21700 Oxnard Street, Suite 1740
`Woodland Hills, California 91367
`Telephone:
`(818) 715-7025
`Facsimile:
`(818) 715-7033
`
`Timothy P. Maloney (admitted pro hac vice)
`tpmalo@fitcheven.com
`Joseph F. Marinelli (admitted pro hac vice)
`jmarinelli@fitcheven.com
`David A. Gosse (admitted pro hac vice)
`dgosse@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603
`Telephone: (312) 577-7000
`Facsimile: (312) 577-7007
`
`Attorneys for Plaintiff,
`LONE STAR SILICON INNOVATIONS LLC
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`
`
`
`LONE STAR SILICON INNOVATIONS LLC,
`
`
`Plaintiff,
`
`
`v.
`
`SEMICONDUCTOR MANUFACTURING
`INTERNATIONAL CORPORATION, ET AL.,
`Defendants.
`
`
`
`
`Case No 3:17-cv-03980-WHA
`
`
`PLAINTIFF’S NOTICE OF MOTION AND
`MOTION TO CONSOLIDATE RELATED
`CASES PURSUANT TO FED. R. CIV. P. 42(A)
`
`Date: November 2, 2017
`Time: 8:00 AM
`Place: Courtroom 8, 19th Floor
`Judge: Hon. William H. Alsup
`
`
`Plaintiff’s Notice of Motion and Motion To Consolidate Related Cases
`3:17-cv-03980-WHA
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-03980-WHA Document 73 Filed 09/28/17 Page 2 of 9
`
`
`
`PLAINTIFF’S NOTICE OF MOTION AND MOTION TO CONSOLIDATE
`RELATED CASES PURSUANT TO FED. R. CIV. P. 42(A)
`TO ALL PARTIES AND THEIR COUNSEL OF RECORD:
`PLEASE TAKE NOTICE THAT pursuant to Federal Rule of Civil Procedure 42(a), Plaintiff Lone
`Star Silicon Innovations LLC moves the Court to consolidate Case Nos. 3:17-cv-03980-WHA, 3:17-cv-
`03981-WHA, 3:17-cv-04032-WHA, 3:17-cv-04033-WHA, 3:17-cv-04034-WHA, and 3:17-cv-05458-
`WHA (“Related Cases”). This Motion is noticed for hearing if necessary on Thursday, November 2, 2017,
`at 8:00 am, at Courtroom 8, 19th Floor, San Francisco Courthouse, 450 Golden Gate Avenue, San
`Francisco, CA 94102 before the Honorable William Alsup.
`Plaintiff requests consolidation for all pretrial issues because the Related Cases involve the same
`Plaintiff and have overlapping patents-in-suit. Consolidating these Related Cases, which share issues of
`fact and law, will promote judicial economy, help preserve the resources of both the Court and the parties,
`and prevent contradictory outcomes from numerous proceedings.
`This Motion is based upon this Notice of Motion, the accompanying Memorandum of Points and
`Authorities, the Declaration of Joseph F. Marinelli, the attached proposed order, all other pleadings and
`papers on file in this action, and any other evidence and argument that may be presented before or during
`the hearing on this Motion.
`
`DATED: September 28, 2017
`
`FITCH, EVEN, TABIN & FLANNERY LLP
`
`/s/ Jon A. Birmingham
`Jon A. Birmingham (Cal. Bar No. 271034)
`
`Attorneys for Plaintiff,
`LONE STAR SILICON INNOVATIONS LLC
`
`
`
`
`
`
`
`
`
`Plaintiff’s Notice of Motion and Motion To Consolidate Related Cases
`3:17-cv-03980-WHA
`
`
`1
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-03980-WHA Document 73 Filed 09/28/17 Page 3 of 9
`
`
`
`I.
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`STATEMENT OF RELIEF REQUESTED
`Pursuant to Federal Rule of Civil Procedure 42(a), Plaintiff Lone Star Silicon Innovations LLC
`(“Lone Star” or “Plaintiff”), by and through its counsel, respectfully requests that the Court consolidate
`the following closely-related patent infringement actions currently pending in the Northern District of
`California for all pretrial issues in the lowest-numbered action, Case No. 3:17-cv-03980-WHA:
`Case Name
`Case No.
`
`Lone Star Silicon Innovations LLC v. Semiconductor
`Manufacturing International Corporation, et al.
`Lone Star Silicon Innovations LLC v. Renesas Electronics
`Corporation, et al.
`Lone Star Silicon Innovations LLC v. Nanya Technology
`Corporation, et al.
`Lone Star Silicon Innovations LLC v. United
`Microelectronics Corporation, et al.
`Lone Star Silicon Innovations LLC v. Toshiba Corporation,
`et al.
`Lone Star Silicon Innovations LLC v. Micron Technology,
`Inc., et al.
`
`3:17-cv-03980-WHA
`
`3:17-cv-03981-WHA
`
`3:17-cv-04032-WHA
`
`3:17-cv-04033-WHA
`
`3:17-cv-04034-WHA
`
`3:17-cv-05458-WHA
`
`The above-referenced cases (the “Related Cases”) were transferred to this District from the United
`States District Court for the Eastern District of Texas. These actions involve the same plaintiff, many of
`the same patents, common witnesses and sources of discovery, and overlapping issues of claim
`construction and validity. Accordingly, the Related Cases involve common core legal and factual issues
`for which consolidation will save the Court and the parties substantial time and effort. Consolidation will
`also promote consistency in the determinations of facts and application of the law.
`Furthermore, all but two of the Related Cases were consolidated for pretrial purposes before they
`were transferred to this District, and all of the Defendants except Renesas and Micron consent to
`consolidation.
`II.
`FACTUAL AND PROCEDURAL BACKGROUND
`In the Related Cases, Lone Star alleges that Defendants directly or indirectly infringe one or more
`of the following patents related to the design of and the processes for fabricating semiconductor devices
`(collectively, the “patents-in-suit”) as indicated below:
`
`Plaintiff’s Notice of Motion and Motion To Consolidate Related Cases
`3:17-cv-03980-WHA
`
`
`2
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-03980-WHA Document 73 Filed 09/28/17 Page 4 of 9
`
`
`
`
`
`5,872,038
`5,912,188
`5,973,372
`6,023,085
`6,046,089
`6,097,061
`6,103,611
`6,153,933
`6,326,231
`6,380,588
`6,388,330
`RE39,518
`
`SMIC
`3:17-cv-
`03980-
`WHA
`
`
`Renesas
`3:17-cv-
`03981-
`WHA
`
`
`Nanya
`3:17-cv-
`04032-
`WHA
`
`
`UMC
`3:17-cv-
`04033-
`WHA
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Toshiba
`3:17-cv-
`04034-
`WHA
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Micron
`3:17-cv-
`05458-
`WHA
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(Id. ¶4.) As shown above, U.S. Patent No. 6,388,330 (“the ’330 Patent”) is asserted against all of the
`Defendants. Several other of the patents-in-suit are asserted against multiple defendants. All of the
`patents-in-suit originated from a common assignee—Advanced Micro Devices Inc. (“AMD”)—and all
`are now under the common ownership of Lone Star. (Id. ¶5.)
`Before these cases were transferred to this District, on December 20, 2016, the Eastern District of
`Texas consolidated the cases involving Defendants Toshiba, Nanya, UMC, and Micron for all pretrial
`issues except for venue. (Id. ¶6.) Lone Star’s cases against Defendants SMIC and Renesas were not
`consolidated with the other cases. (Id.)
`Each of the Defendants other than Micron has proposed a case schedule in the course of preparing
`for the upcoming Case Management Conference. All of the proposed schedules are either identical for all
`dates or have only a few dates that differ by no more than a few days. All of the proposed schedules
`
`Plaintiff’s Notice of Motion and Motion To Consolidate Related Cases
`3:17-cv-03980-WHA
`
`
`3
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-03980-WHA Document 73 Filed 09/28/17 Page 5 of 9
`
`
`
`propose the same claim construction briefing deadlines, claim construction hearing, and trial dates. (Id.
`¶7.)
`
`Toshiba, SMIC, Nanya, and UMC defendants do not oppose Lone Star’s motion for consolidation.
`The Renesas Defendants oppose consolidation. (Id. ¶8.) The Micron Defendants have neither consented
`to nor opposed consolidation. (Id.)
`II.
`LEGAL STANDARD
`Rule 42(a) of the Federal Rules of Civil Procedure states that “[i]f actions before the court involve
`a common question of law or fact, the court may: (1) join for hearing or trial any or all matters at issue in
`the actions; (2) consolidate the actions; or (3) issue any other orders to avoid unnecessary cost or delay.”
`Under Rule 42, a district court has “broad discretion” to consolidate cases pending in its district. Pierce v.
`County of Orange, 526 F.3d 1190, 1203 (9th Cir. 2008); In re Adams Apple, Inc., 829 F.2d 1484, 1487
`(9th Cir. 1987). “While a district court does have broad discretion in determining whether consolidation
`is appropriate, typically, consolidation is favored.” Tse v. Apple, Inc., No. C 12-02653 SBA, 2013 U.S.
`Dist. LEXIS 15646, at *9 (N.D. Cal. Feb. 5, 2013). Furthermore, Rule 42(a) only requires that cases
`desired to be consolidated involve a common question of law or fact. Ind. State Dist. Council of Laborers
`& Hod Carriers Pension Fund v. Gecht, Nos. C-06-7274 EMC, C-06-7453 EMC, and C-07-0698 EMC,
`2007 U.S. Dist. LEXIS 26529, at *5 (N.D. Cal. Mar. 22, 2007). The “common question or questions do
`not have to predominate.” Id. The district must only find the existence of the common questions and that
`consolidation will be “beneficial.” Id. In determining whether to consolidate cases, the court “weighs the
`saving of time and effort consolidation would produce against any inconvenience, delay, or expense that
`it would cause.” Huene v. United States, 743 F.2d 703, 704 (9th Cir. 1984).
`
`Plaintiff’s Notice of Motion and Motion To Consolidate Related Cases
`3:17-cv-03980-WHA
`
`
`4
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-03980-WHA Document 73 Filed 09/28/17 Page 6 of 9
`
`
`
`III. ARGUMENT
`A.
`Consolidation Is Proper Due To Common Questions Law And Fact
`The Related Cases involve the same plaintiff, one patent (the ’330 Patent) that is asserted against
`all Defendants, eight patents (U.S. Patent Nos. 5,872,038; 5,912,188; 5,973,372; 6,023,085; 6,097,061;
`6,103,611; 6,326,231 and Reissue No. 39,518) that are asserted against multiple Defendants, and three
`patents (U.S. Patent Nos. 6,046,089; 6,153,933; 6,380,588) asserted only against Renesas. See Table on
`page 3. All of the Related Cases stem from Lone Star’s claims for infringement of the patents-in-suit
`against Defendants, who are similarly situated with respect to their unlawful practice of the accused
`technology.
`Given the overlap in the asserted patents, the Related Cases involve multiple common questions
`of law and fact, as discussed below.
`First, all of the patents-in-suit relate to a common technology—the design and fabrication of
`transistors for use in semiconductor devices. (Marinelli Decl. ¶4.) Consequently, there will be common
`technical discovery issues among all of the Defendants. For example, Defendants have already (or will)
`produce similar types of industry-standard documents that are used for fabricating the accused
`semiconductor devices. This commonality exists even for patents-in-suit that are asserted against only one
`Defendant because the general subject matter of all of the patents-in-suit are closely related. In addition,
`multiple defendants have indicated in their draft Case Management Statements that they intend to seek
`discovery on many of the same topics, including Lone Star’s acquisition of the patents-in-suit, conception
`and reduction to practice, AMD’s financial interest in the outcome of these cases, and Lone Star’s
`licensing practices. (Id. ¶9.) Considering these factors, courts in this District have repeatedly consolidated
`cases that involved related patents with common legal issues and overlapping facts. See, e.g. Solannex,
`Inc. v Miasole, Inc., Nos. CV 11-00171 PSG and CV 12-00832 PSG, 2013 U.S. Dist. LEXIS 15057, at *3
`(N.D. Cal. Feb. 1, 2013) (consolidating patent infringement actions involving the same parties and patents
`from the same family with many of the same claim terms); Monolithic Power Sys., Inc. v. O2 Micro Int’l
`Ltd., Nos. C 04-2000 CW and C 06-2929 CW, 2006 U.S. Dist. LEXIS 58916, at *8 (N.D. Cal. 2006)
`(granting motion to consolidate two cases where patents at issue “relate[d] to the same technology” and
`belonged to the same party).
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Plaintiff’s Notice of Motion and Motion To Consolidate Related Cases
`3:17-cv-03980-WHA
`
`
`5
`
`

`

`Case 3:17-cv-03980-WHA Document 73 Filed 09/28/17 Page 7 of 9
`
`
`
`Second, the overlap in the asserted patents and technology will yield common claim construction
`and invalidity issues in all of the Related Cases. The Defendants have asserted substantially the same
`invalidity references against the commonly asserted patents-in-suit. For example, 76 of the 84 references
`that Renesas asserted against the’611, ’330, and ’231 Patents were also asserted as alleged prior art by
`other Defendants. (Id. ¶10.)
`Third, there will be overlapping third-party discovery. For example, all Defendants will want to
`depose the same inventors for overlapping patents. Moreover, all of the patents-in-suit have the same
`original assignee—AMD. The majority of Defendants have indicated that they want to take discovery
`regarding AMD’s financial interest in the outcome of the litigation and regarding the transfer of ownership
`of the patents-in-suit to Lone Star from AMD. (Id. ¶9.)
`Fourth, all of the cases operate under substantially similar Protective Orders and ESI Orders. (Id.
`¶11.) There is no risk that consolidation will create inconsistencies in the way information is protected
`or electronically stored information is handled.
`Although Renesas opposes consolidation, the conservation of time and effort that consolidation
`will provide far outweigh any purported disadvantages. Renesas opposes on the basis that three of the six
`patents asserted against Renesas are not asserted against the other Defendants. However, the other three
`patents asserted against Renesas are asserted against multiple other Defendants, ensuring common issues
`of law and fact regarding those patents. As stated above, 76 of the 84 references that Renesas asserted
`against the’611, ’330, and ’231 Patents were also asserted by other Defendants. (Id. ¶10.) Moreover, as
`discussed above, Renesas is seeking discovery on issues common to multiple other defendants, including
`Lone Star’s acquisition of the patents-in-suit, conception reduction to practice, AMD’s financial interest
`in the outcome of these cases, and Lone Star’s licensing practices. (Id. ¶9.) In addition, the three patents-
`in-suit that Lone Star asserts only against Renesas are directed to technologies similar to those of the
`patents-in-suit asserted against the other Defendants. Indeed, the ’588 Patent, which is only asserted
`against Renesas, is a divisional of the ’611 Patent, which is asserted against four other Defendants in
`addition to Renesas. (Id. ¶12.) Thus, even though the ’588 Patent is only asserted against Renesas, it is in
`the same family as a patent asserted against the other Defendants. Renesas’s invalidity contentions confirm
`this relatedness because Renesas asserts 10 of the same references against both the ’588 and ’611 Patents.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Plaintiff’s Notice of Motion and Motion To Consolidate Related Cases
`3:17-cv-03980-WHA
`
`
`6
`
`

`

`Case 3:17-cv-03980-WHA Document 73 Filed 09/28/17 Page 8 of 9
`
`
`
`(Id.) When “lawsuit[s]…require a jury to understand the same underlying technology and the same claim
`terms in order to determine if the products at issue infringe,” the proceedings may be consolidated even if
`an action involves additional patents. See, e.g., Paxonet Communs., Inc. v. Transwitch Corp., 303 F. Supp.
`2d 1027, 1029 (N.D. Cal. Dec. 15, 2003).
`B.
`Consolidation Will Promote Judicial Economy And Conserve Resources
`Consolidation is in the interest of judicial economy and will also conserve the Court’s and the
`parties’ resources. It will be more efficient to conduct one claim construction hearing for all of the Related
`Cases than six separate hearings with six separate sets of briefing covering the same or similar claim terms.
`Moreover, because the overlap in the patents asserted in the Related Cases, Defendants will likely
`propound similar documents in discovery and take similar depositions from both Plaintiff and third parties.
`Separate, duplicative discovery and motion practice on common prior art contentions and rebuttals will
`needlessly burden the Court and inflict additional expenses upon the parties.
`Moreover, the substantial synchronization in case schedules among the Related Cases weighs in
`favor of consolidation because there is no risk that consolidation would impose a scheduling burden on
`any one Defendant. Each of the Defendants, other than Micron1, have proposed schedules are either
`identical for all dates or have only a few dates that differ by no more than a few days. All of the proposed
`schedules propose the same claim construction briefing deadlines, claim construction hearing, and trial
`dates. (Id. ¶7.)
`To the extent that Renesas objects that the additional patents asserted solely against Renesas weigh
`against consolidation, this argument is not compelling. The Court may easily address this issue by
`providing certain extensions to Renesas and Lone Star to address those patents, for example, by extending
`page limits for claim construction briefing to fairly accommodate any purported additional burden to
`Renesas. In addition, to the extent Renesas claims that discovery limits must be made larger to
`accommodate the three patents asserted against Renesas only, it is a relatively straightforward exercise to
`adjust those limits. In any event, any alleged burden on Renesas does not outweigh the conservation of
`the Court’s and the parties’ resources afforded by consolidating the cases.
`
`
`1
`The Micron case has only recently been transferred to this Court, so Micron has not yet proposed
`a case schedule.
`Plaintiff’s Notice of Motion and Motion To Consolidate Related Cases
`3:17-cv-03980-WHA
`
`
`7
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:17-cv-03980-WHA Document 73 Filed 09/28/17 Page 9 of 9
`
`
`
`Consolidation Will Avoid The Risk And Prejudice Of Contradictory Outcomes
`C.
`Consolidation will also mitigate the risk of inconsistent rulings. With this significant overlap of
`common issues, consolidation is necessary to avoid inconsistent rulings. See, e.g., Pactiv Corp. v.
`Multisorb Techs, Inc., No. 10C461, 2011 U.S. Dist. LEXIS 15991, at *12 (N.D. Ill. Feb. 15, 2011)
`(consolidating cases due, in part, to “the parties having the same discovery disputes in both cases, raising
`the possibility of inconsistent rulings.”). For example, if these cases were not consolidated, separate claim
`construction briefing would ensue in the cases and the Court would conduct six separate claim
`construction hearings, potentially at different times. Not only is this unnecessarily burdensome to the
`Court, but it also risks inconsistent, conflicting rulings on the same patents and claims being asserted in
`separate cases. Consolidation provides the opportunity to approach overlapping issues in the six cases in
`an organized and consistent way.
`IV. CONCLUSION
`The Related Cases involve the same Plaintiff and have overlapping patents-in-suit. Consolidating
`these Related Cases, which share many of the same issues of fact and law, will promote judicial economy,
`help conserve the resources of both the Court and the parties, and prevent contradictory outcomes from
`numerous proceedings. Any purported additional burden to the parties is easily remedied, and is greatly
`outweighed by the advantages consolidation provides. Accordingly, Lone Star respectfully requests that
`this Court grant its Motion to Consolidate Related Cases into the lowest-numbered action, Case No. 3:17-
`cv-03980-WHA.
`
`
`Date: September 28, 2017
`
`
`
`Plaintiff’s Notice of Motion and Motion To Consolidate Related Cases
`3:17-cv-03980-WHA
`
`
`FITCH, EVEN, TABIN & FLANNERY LLP
`
`/s/ Jon A. Birmingham
`Jon A. Birmingham (Cal. Bar No. 271034)
`
`Attorneys for Plaintiff,
`LONE STAR SILICON INNOVATIONS LLC
`
`
`
`
`
`
`
`8
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`