EXHIBIT A

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UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

IMMERSION CORPORATION, 

Plaintiff, 

v. 

SAMSUNG ELECTRONICS CO., LTD. and 

SAMSUNG ELECTRONICS AMERICA, INC. 

Defendants. 

Civil A. No. 2:17-CV-572-JRG-RSP 

Civil. A. No. 2:18-CV-055-JRG 

SAMSUNG’S OPPOSED MOTION TO 

CONSOLIDATE CASES FOR PRETRIAL PURPOSES 

Pending before this Court are two cases with common parties, common technology, 

common accused products, common accused features, common counsel on both sides, and a 

common licensing history. This duplication is a result of Immersion’s decision to bring two 

separate suits against Samsung, which of course only increases the litigation burden on the Court 

and the parties. Consolidation makes sense. It will conserve the judicial resources of the Court, 

conserve resources of the parties and witnesses, promote efficiency, and eliminate the need for 

duplicative discovery. Accordingly, Samsung moves to consolidate this action, Immersion 

Corporation v. Samsung Electronics America, Inc. et al., No. 2:17-cv-572 (the “First Action”) 

with Immersion Corporation v. Samsung Electronics America, Inc. et al., No. 2:18-cv-055 (the 

“Second Action”) for pre-trial purposes, pursuant to Federal Rule of Civil Procedure 42(a).1 

To accommodate this consolidation in an efficient manner, Samsung requests a slightly 

shorter than typical schedule for the Second Action and a slight extension for the schedule for the 

 

1

 This motion is being filed concurrently in both the First and Second Actions. 

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First Action. In this way, the pre-trial proceedings in both actions, including Markman 

disclosures, the Markman hearing, fact discovery, expert discovery, and dispositive motions, will 

be all on the same schedule, avoiding duplication and confusion of two almost identical cases 

running on two different schedules. 

FACTUAL BACKGROUND 

Both the First and Second Actions Immersion filed against Samsung include common 

asserted technology, accused products, accused features, and licensing history. 

A. The First and Second Actions 

Plaintiff Immersion Corporation (“Immersion”) filed its First Action against Samsung on 

August 3, 2017, asserting five patents in two patent families: U.S. Patent Nos. 6,429,846 (“the 

’846 patent”); 7,969,288 (“the ’288 patent”); 7,982,720 (“the ’720 patent”); 8,031,181 (“the ’181 

patent”); and 9,323,332 (“the ’332 patent”), and accusing the vibration feedback features in 

Samsung’s smartphone devices of infringement. Of these five patents, the ’288 and ’332 patents 

(the “Braun patents”) are related, and the ’846, ’720, and ’181 patents (the “Rosenberg patents”) 

are related. 

Just seven months later, perhaps in recognition of the looming expiration of several of the 

patents in the First Action, Immersion filed its Second Action against Samsung on March 8, 2018, 

asserting one patent, U.S. Patent No. 8,619,051 (“the ’051 patent”), against the very same 

vibration feedback features in Samsung’s smartphones it had accused in its First Action. 

Immersion could have easily filed suit on the ’051 patent in the First Action since the patent 

issued five years earlier, in 2013. In fact, Immersion was aware that the ’051 patent was in its 

portfolio and a candidate for assertion even before it filed its First Action: it actually litigated the 

’051 patent against Apple starting in 2016, one year before filing suit against Samsung. See 

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generally Immersion Corporation v. Apple Inc. et al., 1:16-cv-0077; Certain Mobile and 

Portable Electronic Devices Incorporating Haptics (Including Smartphones and Laptops) and 

Components Thereof, 337-TA-990. 

B. The Asserted Patents 

Immersion acknowledges that both the First and Second Actions involve the same haptic 

feedback technology. See D1 (First Action) at 1; D1 (Second Action) at 1. The technology is so 

similar between the First Action and Second Action that each of Immersion’s Complaints include 

the very same word for word description of the claimed “Haptic Feedback Technology.” See D1 

(First Action) at 3-4; D1 (Second Action) at 3-4. 

This is not surprising as the asserted patents substantially overlap in claim elements. For 

example, the ’332 patent asserted in the First Action claims “a haptic computer system” 

comprising “a processor,” “a computer memory,” and “an actuator.” Ex. A, ’332 patent at 47:21-

31. The ’051 patent asserted in the Second Action claims these same elements—a “haptic 

feedback system” comprising “a processor,” “a memory,” and “an actuator.” Ex. B, ’051 patent 

at 7:40-61. Other asserted patents in the First Action contain similar or identical claim elements 

to the ’051 patent. 

C. The Accused Products and Features 

Both actions also accuse the same products and features. The First Action identifies the 

accused phones as “touch screen mobile phones that Samsung had not commenced commercially 

producing, distributing, and selling before January 1, 2016.” D1 (First Action) at 5. Similarly, 

the Second Action identifies Accused Phones as including “touch screen mobile phones that 

Samsung had not commenced commercially producing, distributing, and selling before January 1, 

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2016.” D1 (Section Action) at 4-5. Immersion specifically identified the same phone models in 

both actions: 

Accused Phones (First Action) Accused Phones (Second Action) 

Galaxy S8 Galaxy S8 

Galaxy S8+ Galaxy S8+ 

Galaxy S8 Active Galaxy S8 Active 

Galaxy Note 8 Galaxy Note 8 

Galaxy S7 Galaxy S7 

Galaxy S7 Edge Galaxy S7 Edge 

Galaxy J7 Sky Pro 4G Galaxy J7 Sky Pro 

Galaxy J7 Perx Galaxy J7 Perx 

Galaxy J7 V Galaxy J7 V 

Galaxy J7 Galaxy J7 

Galaxy J3 Eclipse Galaxy J3 Eclipse 

Galaxy J3 Emerge Galaxy J3 Emerge 

Galaxy J3 Galaxy J3 

Galaxy Grand Prime2 

Compare Ex. D, Feb. 2, 2018 Amended P.R. 3-1 Infringement Contentions (First Action) at 8-21, 

with D1 (Second Action) at 5. The First and Second Action also accuse, not only the same 

phones, but the exact same features on the phones. For example, in the First Action, Immersion 

accuses Samsung’s “haptic feedback technology (‘haptic feedback’) in mobile devices” of 

infringement. D1 (First Action) at 1. This is the identical technology that Immersion accuses of 

infringement in the Second Action. D1 (Second Action) at 1 (accusing “haptic feedback 

technology (‘haptic feedback’) in mobile devices”). Specifically, Immersion cites the 

“performHapticFeedback” method of the View class and “long press,” “keyboard tap” and 

“virtual key” haptic patterns in the exact same manner. Compare D1 (Second Action) at 5-6 with 

 

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 The only accused product from the First Action not identified in the Second Action is the Galaxy Grand Prime, 

which is likely only a ministerial error, as the Galaxy Grand Prime was previously incorrectly identified by 

Immersion as being released after January 1, 2016. 

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Ex. C, Feb. 2, 2018 Amended P.R. 3-1 Infringement Contentions, Exhibit 64 (First Action) at 3-

4. The overlap in accused products and features is unsurprising given the overlap in claim 

elements, and all of this supports the common sense approach to consolidation of these nearly 

mirror image First and Second Actions. 

D. Licensing History 

Along with the overlap in technology, the history between the parties is replete with the 

same course of dealing and licensing history between the parties, relevant to both the First and 

Second Actions. In fact, Immersion provides the same description of the parties’ dealings in the 

Complaint in the First Action as it does in the Second Action. Compare D1 (First Action) at ¶ 1 

(claiming, “For many years, Samsung had licensed software from Immersion to implement haptic 

feedback in its flagship phones. At the beginning of January 2013, Samsung expanded its license 

to allow it to use Immersion’s patented technology even in products that do not use Immersion 

software.”) and D1 (Second Action) at ¶ 2 (same). 

E. The Current Schedules 

The schedules between the First Action and Second Action will overlap. While a 

scheduling order in the Second Action has not yet issued, Samsung has answered the Complaint 

in the Second Action already. Accordingly, discovery in the Second Action will begin shortly. 

Discovery in the First Action, however, does not close until September. 

In the First Action, Samsung answered the Complaint on October 24, 2017. Immersion 

served its initial infringement contentions three weeks later on November 14, 2018. The 

Markman hearing is scheduled for August 15, 2018, close of fact discovery is scheduled for 

September 7, 2018, and jury selection is scheduled for February 19, 2019. While document 

discovery is proceeding in the First Action, no deposition schedule has been finalized and no 

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deposition have been taken by either party. And while Samsung’s deadline to respond to the 

Complaint in the Second Action was June 28, 2018, Samsung has already answered the 

Complaint to minimize the difference in the schedule between the First Action and Second 

Action. Accordingly, the schedules of both Actions can be easily combined without prejudice to 

the parties, and with great savings in time expense to all parties and especially to the Court. 

GOVERNING LEGAL STANDARDS 

Rule 42(a) of the Federal Rules of Civil Procedure empowers a court to consolidate 

actions pending before it if those actions involve a “common question of law or fact.” Fed. R. 

Civ. P. 42(a); Miller v. United States Postal Service, 729 F.2d 1033, 1036 (5th Cir. 1984) (“The 

proper solution to the problems created by the existence of two or more cases involving the same 

parties and issues, simultaneously pending in the same court would be to consolidate them under 

Rule 42(a) of the Federal Rules of Civil Procedure.”). A court has considerable discretion in 

applying Rule 42. In re EMC Corp., 677 F.3d 1351, 1360 (Fed. Cir. 2012). Courts have the 

discretionary power to consolidate cases if the cases are of “like nature and relative to the same 

question” to “avoid unnecessary cost and delay.” Mutual Life Ins. Co. of New York v. Hillmon, 

145 U.S. 285, 292 (1982); Gentry v. Smith, 487 F.2d 571, 581 (5th Cir. 1973) (“The stated 

purpose of Rule 42(a) is to ‘avoid unnecessary costs or delay’, and hence the decision to invoke 

the rule is entirely within the discretion of the district court as it seeks to promote the 

administration of justice.”). The Fifth Circuit has stated that “district judges are urged to make 

good use of Rule 42(a)” to “expedite the trial and eliminate unnecessary repetition and 

confusion.” In re Air Crash Disaster at Florida Everglades, 549 F.2d 1006, 1013 (5th Cir. 

1977). And typically, “[a]ctions involving the same parties are apt candidates for consolidation.” 

Wright & Miller, Fed. Prac. & Proc. § 2384. 

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ARGUMENT 

Consolidation of the First and Second Actions is entirely appropriate because there are 

common questions of law and fact, it will avoid unnecessary cost and burden on both the parties 

and the Court, it will avoid confusion, and it will not cause any significant delay. 

Both the First and Second Actions involve multiple common questions of law and fact. 

Although Immersion asserts different patents in each case, there is substantial overlap in the 

subject matter of the asserted claims, all claiming pieces of a haptic feedback system with similar 

claim elements. See, e.g., ’051 patent, 7:40-61; ’332 patent, 46:35-45, 47:21-31; ’288 patent 

46:52-62. The accused functionality Immersion points to in the Complaint in the Second Action 

and the infringement contentions in the First Action are also identical, specifically the 

““performHapticFeedback” method of the View class and “long press,” “keyboard tap,” and 

“virtual key” haptic patterns. Compare D1 (Second Action) at 5-6 with Ex. C, Feb. 2, 2018 

Amended P.R. 3-1 Infringement Contentions, Exhibit 64 (First Action). Further, Immersion 

identifies the years-long history between the parties related to the accused haptic features, which 

would be relevant to and identical in both the First and Second Actions to color the disputes. 

There is no reason for the Court to be burdened twice simply because Immersion was tardy in 

bringing the Second Action. 

Both Actions thus abound with substantial common questions of law and fact. Claim 

construction issues regarding the scope of the technology is nearly identical in both actions and 

the Court should not be burdened with two Markman hearings. Invalidity issues regarding prior 

art will overlap in both Actions as claim elements between the patents in the First and Second 

action overlap. Issues regarding the operation of the accused products, including nonCase 2:23-cv-00382-JRG-RSP Document 99-2 Filed 01/29/24 Page 8 of 14 PageID #: 848 Case 2:17-cv-00572-JRG Document 48 Filed 04/27/18 Page 7 of 13 PageID #: 218
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infringement, will be common as Immersion accuses the same features of the same mobile 

phones. Likewise, damages issues are deeply intertwined in light of the common licensing 

history. 

Consolidation would also facilitate judicial economy and equity—it will avoid 

unnecessary cost and burden on both the parties and the Court. Because of the substantial 

overlap, discovery between the two cases will inevitably target the same sources, custodians, 

witnesses, and documents from both parties. Consolidating the cases will relieve the parties and 

the Court of the significant burden associated with duplicative fact and expert discovery, 

duplicative claim construction proceedings, and duplicative summary judgment proceedings. It 

is highly likely that the parties will identify the same fact and expert witnesses in each case, 

duplicating depositions and expert reports. Having to regurgitate and re-litigate these same 

issues would cause a significant and otherwise avoidable burden on the Court and the parties in 

both cost and time. Immersion’s delay in bringing the Second Action should not burden the 

parties and the Court to have to litigate two separate cases that are in reality both about the same 

thing. Immersion could have filed suit on the ’051 patent in the First Action, as it had already 

asserted that patent against Apple in 2016. Instead, it chose to wait to bring a second action to 

assert a patent it had available and knew about at the time of the First Complaint against the 

same accused products and same accused features. It is not equitable for Immersion to seek to 

double the burden on the Court and Samsung to litigate identical issues when those issues could 

easily be litigated efficiently in one proceeding. Immersion should not benefit from its tactical 

delay at the expense of the Court and Samsung. Immersion’s refusal to agree to consolidation of 

pre-trial issues to allow a single Markman hearing, fact discovery period, expert discovery 

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period, and dispositive motion schedule only highlights their desire to increase litigation burdens 

rather than efficiently litigate this dispute. 

While consolidation will facilitate judicial economy and equity, it will not cause any 

significant delay. Because of the efficiencies gained from consolidation, Samsung is agreeable 

to a shorter schedule for the Second Action that would otherwise be feasible in a separate action 

so that the Second Action can be blended into a slightly extended schedule for the First Action. 

Samsung proposes that a roughly three month extension to the jury selection dates in the First 

Action from February to May 2019 and a corresponding extension to the Markman hearing from 

August to November 2018 so that the First Action and Second Action could to proceed on the 

same pretrial schedule. This extension in the First Action would thus result a single Markman

hearing, single discovery period, and single dispositive motion schedule for both the First and 

Second Actions. This adjustment is fair to both parties and allows both actions to proceed on the 

same schedule. 

This short extension is reasonable in light of the current schedule in the First Action, 

which has jury selection set for February 19, 2019, some sixteen months after Samsung’s answer 

date of October 24, 2017. In the Second Action, Samsung answered on April 20, 2018, triggering 

deadlines for infringement contentions, invalidity contentions, Markman disclosures, and the 

Markman hearing under the Patent Local Rules. If the Court provides a schedule on a similar 

timeline for the Second Action, jury selection would begin sixteen months later in the Second 

Action in August 2019, only six months later than jury selection in the First Action jury selection. 

Splitting the baby, and setting First Action three months later (May 2019) and the Second Action 

three months earlier (May 2019) would not work a great hardship on anyone and would get both 

Actions on the same schedule. 

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Samsung understands that the hearing dates will depend on the Court’s availability, but a 

jury selection date the week of May 27, 2019 and a Markman hearing date the week of November 

28, 2018, for example, would allow a consolidated schedule of all pretrial dates. Given these 

proposed jury selection dates, the parties should be able to agree on tweaking the interim 

deadlines and the Court can set one Markman hearing date in accordance with its schedule and 

convenience. 

CONCLUSION 

Consolidation of the both the First and Second Actions will promote efficiency during 

pretrial proceedings, eliminate the need for duplicative discovery, and aid in the preservation of 

the Court’s and the parties’ resources. For these reasons, Samsung respectfully requests that the 

Court consolidate the First and Second Actions for all pretrial issues, and enter a common 

scheduling order for both Actions as suggested herein or as the Court deems most appropriate to 

accommodate such consolidation. 

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Date: April 27, 2018 Respectfully submitted, 

By: /s/ Melissa R. Smith 

 Ruffin B. Cordell 

TX Bar No. 04820550 

cordell@fr.com 

Michael J. McKeon 

D.C. Bar No. 459780 

mckeon@fr.com 

Indranil Mukerji 

MA Bar 644059 

mukerji@fr.com 

FISH & RICHARDSON P.C. 

The McPherson Building 

901 15th St, NW, Suite 700 

Washington, DC 20005 

Telephone: (202) 783-5070 

Facsimile: (202) 783-2331 

Leonard E. Davis 

TX Bar No. 05521600 

ldavis@fr.com 

Jane Du 

TX Bar No. 24076355 

du@fr.com 

FISH & RICHARDSON P.C. 

1717 Main Street, Suite 5000 

Dallas, TX 75201 

Telephone: (214) 747-5070 

Facsimile: (214) 747-2091 

Frank J. Albert 

CA Bar No. 247741 

albert@fr.com 

FISH & RICHARDSON P.C. 

12390 El Camino Real 

San Diego, CA 92150 

Telephone: (858) 678-5070 

Facsimile: (858) 378-5099 

Tom Gorham 

TX Bar No. 24012715 

gorham@fr.com 

FISH & RICHARDSON P.C. 

1717 Main Street, Suite 5000 

Dallas, TX 75201 

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Telephone: (214) 747-5070 

Facsimile: (212) 747-2091 

Katherine Reardon 

NY Bar No. 5196910 

kreardon@fr.com 

FISH & RICHARDSON P.C. 

601 Lexington Avenue, 52nd Floor 

New York, NY 10022-4611 

Telephone: (212) 765-5070 

Facsimile: (212) 258-2291 

Tony Nguyen 

TX Bar No. 24083565 

nguyen@fr.com 

FISH & RICHARDSON P.C. 

1221 McKinney Street, Ste. 2800 

Houston, TX 77010 

Telephone: (713) 654-5300 

Facsimile: (713) 652-0109 

Melissa Smith 

TX Bar No. 24001351 

melissa@gillamsmithlaw.com 

GILLAM & SMITH LLP 

303 South Washington Avenue 

Marshall, Texas 75670 

Telephone: (903) 934 – 8450 

Facsimile: (903) 934-9257 

COUNSEL FOR DEFENDANTS SAMSUNG 

ELECTRONICS AMERICA, INC. AND SAMSUNG 

ELECTRONICS CO., LTD.

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CERTIFICATE OF SERVICE 

The undersigned hereby certifies that a true and correct copy of the above and foregoing 

document has been served on April 27, 2018 to all counsel of record who are deemed to have 

consented to electronic service via the Court’s CM/ECF system per Local Rule CV-5(a)(3). 

/s/ Melissa R. Smith

 Melissa R. Smith 

CERTIFICATE OF CONFERENCE 

 On April 18, 2018, pursuant to Local Rule CV-7(h), counsel for Defendants met and 

conferred with counsel for Plaintiff, and counsel for Plaintiff indicated that it is opposed to the 

relief sought by this Motion. 

/s/ Melissa R. Smith 

 Melissa R. Smith 

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