FCX Solar, LLC v. FTC Solar, Inc.

Filing 50

ORDER granting (49) Letter Motion to Consolidate Cases 1:21-cv-3556 (as Lead Case) with 1:21-cv-8766 in case 1:21-cv-03556-RA-DCF. Application granted. The Clerk of Court is respectfully requested to consolidate 21-cv-3556 and 21-cv-8766 under the master file of 21-cv-3556. (Signed by Judge Ronnie Abrams on 11/19/2021) Filed In Associated Cases: 1:21-cv-03556-RA-DCF, 1:21-cv-08766-RA (ate)

November 18, 2021

Matthew J. Moffa
[e-mail]
D. +1.212.261.6857
F. +1.212.399.8057

VIA ECF
Hon. Ronnie Abrams, USDJ
United States District Court
Southern District of New York
40 Foley Square Room 2203
New York, NY 10007
Re:

FCX Solar, LLC v. FTC Solar, Inc., Case No. 1:21-CV-03556-RA

Dear Judge Abrams:
The parties in the above-captioned matter (the “License Action”) submit this joint letter motion
requesting that this case be consolidated for all purposes, including trial, with FTC Solar, LLC v.
FTC Solar, Inc., 1:21-CV-08766-RA (the “Patent Action”) pursuant to Rule 42(a) of the Federal
Rules of Civil Procedure.
The Complaint in the License Action was filed on April 21, 2021. It asserts contract and tort
claims arising out of FTC’s alleged breach of a patent license agreement between the parties.
FTC provided notice of termination of the license agreement by letter dated April 30, 2021. In
the Patent Action, FCX alleges that FTC continued to offer, sell, and encourage use of products
infringing one of FCX’s patents after the termination of the license. FTC disputes that it
breached the license agreement or that it sells or sold products that infringe FCX’s patents.
FCX filed the Patent Action in the United States District Court for the Western District of Texas
on May 29, 2021. FTC’s Motion to Transfer the action was granted on October 25, 2021, and
the case was transferred to this district and assigned to Judge Crotty. (No. 21-cv-548-ADA, ECF
No. 30.) FCX filed Related Case Statements in both the License Action and the Patent Action on
October 29, 2021. (No. 21-cv-3556-RA, ECF No. 41; No. 21-cv-8766-RA, ECF No. 32.) Your
Honor accepted transfer of the Patent Action on November 9, 2021.
The parties jointly request (and grant their express consent) that the License Action and the
Patent Action be consolidated pursuant to Rule 42(a). See, e.g., Szymczak v. Nissan N. Am., Inc.,
2012 WL 1877306, at *1 (S.D.N.Y. May 15, 2012) (consolidating actions “[o]n the consent of
all parties”). “[A]s long as there will be a fair and impartial trial,” a district court should exercise
its discretion to “consolidate actions for trial where there are common questions of law or fact to
avoid unnecessary costs or delay.” Garnett-Bishop v. N.Y. Cmty. Bancorp, Inc., 299 F.R.D. 1, 5

Hon. Ronnie Abrams
November 18, 2021
Page 2
(E.D.N.Y. 2014). The License Action and the Patent Action raise common questions of law and
fact regarding the relationship between FCX’s intellectual property and certain aspects of FTC’s
solar tracker products. Consolidating the actions will reduce the burden on the parties and the
Court from overlapping discovery, expedite trial, and enhance judicial economy. Devlin v.
Transp. Commc’ns Int’l Union, 175 F.3d 121, 130 (2d Cir. 1999).
The parties respectfully request that this letter motion be granted. Should the Court grant this
motion, the parties will provide a proposed common scheduling order for the consolidated cases
within one week of the Court’s order.
Respectfully submitted,
/s/ Matthew J. Moffa
Matthew J. Moffa
cc:

All counsel of record (via ECF)

Application granted. The Clerk of Court
is respectfully requested to consolidate
21-cv-3556 and 21-cv-8766 under the
master file of 21-cv-3556.
SO ORDERED.

___________________
Hon. Ronnie Abrams
11/19/2021