Case 2:22-cv-00134-JRG-RSP Document 69-3 Filed 03/09/23 Page 1 of 5 PageID #: 1154
`Case 2:22-cv-00134-JRG-RSP Document 69-3 Filed 03/09/23 Page 1o0f5 PagelD#: 1154
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`EXHIBIT C
`EXHIBIT C
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`Case 2:22-cv-00134-JRG-RSP Document 69-3 Filed 03/09/23 Page 2 of 5 PageID #: 1155
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`Jason N. Haycock
`jason.haycock@klgates.com
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`T +1 415 882 8200
`F +1 415 882 8220
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`March 7, 2023
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`By Email and Personal Service
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`Dr. Lisa Su, Chief Executive Officer
`Henry Wolin, General Counsel
`Kevin O’Neil, Vice President, Intellectual Property & Licensing
`Advanced Micro Devices, Inc.
`2485 Augustine Dr.
`Santa Clara, CA 95054
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`Dear Dr. Su and Messrs. Wolin and O’Neil:
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`We represent Realtek Semiconductor Corp. (“Realtek”). We write to demand that Advanced
`Micro Devices, Inc. and ATI Technologies ULC, (collectively, “AMD”) promptly cure the breach of
`AMD’s obligations under the Khronos Group Membership Agreement (“Membership Agreement”).
`AMD breached the Membership Agreement when it asserted claims against Realtek for
`infringement of U.S. Patent No. 11,184,628 (“’628 patent”) based on Realtek’s use of graphics
`processor technology for implementing the Adaptive Scalable Texture Compression (“ASTC”)
`standard. As you know, Arm Limited (“Arm”) supplied Realtek with the accused Graphics
`Processing Units (“GPUs”) that implement ASTC.1
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`Realtek’s use of Arm’s GPUs is licensed pursuant to the Membership Agreement. In particular,
`the Membership Agreement provided Arm with a royalty-free license to practice any patent claims
`necessary to implement the ASTC standard. Because AMD’s theory of infringement rests upon
`Realtek’s use of Arm GPUs in implementing the ASTC standard, AMD breached its obligations
`under the Membership Agreement in asserting infringement of the ’628 patent, and Realtek has
`a complete defense to AMD’s infringement claim. Realtek therefore demands that AMD dismiss
`all of its patent infringement claims relating to the ’628 patent, including all such claims asserted
`in Certain Graphics Systems, Components, Thereof, and Digital Televisions Containing the
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`1 The Khronos Group lists AMD and Arm as “Promoter Members.” See
`https://www.khronos.org/members/member_list (last visited March 6, 2023). As Promoter Members, AMD
`Arm both were required to, and did, agree to abide by all terms of the Membership Agreement. See
`https://www.khronos.org/files/member_agreement.pdf (last visited March 6, 2023).
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`K&L GATES LLP
`FOUR EMBARCADERO CENTER SUITE 1200 SAN FRANCISCO CA 94111
`T +1 415 882 8200 F +1 415 882 8220 klgates.com
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`Case 2:22-cv-00134-JRG-RSP Document 69-3 Filed 03/09/23 Page 3 of 5 PageID #: 1156
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`Same, ITC Investigation No. 337-TA-1318 (“1318 Investigation”) and in Advanced Micro Devices,
`Inc. et al. v. TCL Industries Holdings Co., Ltd., et al., Case No. 22-cv-00134-JRG-RSP (E.D. Tex.)
`(“E.D. Tex. Action”), and that AMD reimburse Realtek for all fees and costs associated with
`defending against such patent infringement claims, including costs incurred in other proceedings
`related to the ’628 patent.
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`If AMD does not provide assurances, by Friday, March 10, 2023, that it will dismiss all claims
`against Realtek premised on infringement of the ’628 patent, Realtek will initiate an action against
`AMD in the Northern District of California,2 which is the venue that Section 6.5 of the Membership
`Agreement selects. Realtek’s action will assert, among other claims, breach of the Membership
`Agreement. It is well established that Realtek, as the purchaser of technology licensed via the
`Membership Agreement, is a third-party beneficiary of that agreement. See Membership
`Agreement, Attachment A §1 (“Reciprocal License” defined as “the perpetual, royalty-free, fully
`paid, worldwide, nonexclusive, non-transferable license under any Necessary Patent Claims to
`make, have made, use, import, offer to sell and sell Compliant Portions, together with the right
`without royalty or fee to sublicense to third parties (a) the right to distribute Compliant Portions
`through the normal tiers of distribution to end users or to resellers, distributors, dealers and
`authorized manufacturers and others in the distribution channel”); see also Microsoft Corp. v.
`Motorola, Inc., 696 F.3d 872 (9th Cir. 2012); Realtek Semiconductor Corp. v. LSI Corp., 946
`F.Supp.2d 998 (N.D. Cal. 2013); Implicit, LLC v. Imperva, Inc., Case No. 19-cv-00040-JRG-RSP
`(LEAD), 2020 WL 10356908 (E.D. Tex. Apr. 22, 2020).
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`I.
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`The Khronos Group Membership Agreement, “Necessary Patent Claims,” and
`AMD’s Licenses to Arm
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`AMD and Arm are Promoter Members of the Khronos Group, and as indicated, each Member
`must sign and agree to the Membership Agreement. The Membership Agreement includes
`Attachment A, which governs the intellectual property rights of the Members. Attachment A
`defines “Necessary Patent Claims” as:
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`[C]laims of a patent or patent application, other than design patents and design
`registrations, issued or filed in any country, to which a Member or its Affiliates has
`the right to grant licenses in accordance with the terms and conditions of this
`Attachment A at any time during the term of the Agreement, and which are
`necessarily infringed by any Compliant Portion.
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`Membership Agreement, Attachment A §1. Section 2.2 of the Membership Agreement provides
`each Member, including Arm, a license to all Necessary Patent Claims, unless the Member takes
`explicit actions to exclude operation of the license:
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`Each Member agrees to grant a Reciprocal License under any of its Necessary
`Patent Claims not excluded in accordance with the following sections for any
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`2 Realtek is sending this letter before filing a complaint because, as Judge Alsup has explained, “[c]ease-
`and-desist letters can efficiently lead to a resolution and save vast resources.” Sonos v. Google LLC, No.
`C 21-07559 WHA, at 5 (N.D. Cal. Mar. 16, 2022).
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`Case 2:22-cv-00134-JRG-RSP Document 69-3 Filed 03/09/23 Page 4 of 5 PageID #: 1157
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`Ratified Specification on the date of Ratification in reciprocity to all other Members
`that also grant a Reciprocal License to Member. Such Reciprocal License is
`granted whether or not the licensor or licensee Member ever had any knowledge
`of the existence of such Necessary Patent Claims.
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`Id. § 2.2. The Membership Agreement makes clear that a Member must take explicit steps to opt
`out of the automatic, royalty-free license offered to other Members. Attachment A of the
`Membership Agreement specifically notes: “A Member is not required to disclose a Necessary
`Patent Claim if the Member commits to license such Necessary Patent Claim according to the
`terms and conditions of the Reciprocal License.” Id. at §3.2. However, if a Member “has actual
`knowledge of claims that may be Necessary Patent Claims owned or controlled by that Member
`with respect to that Member’s Contributions or any other aspect of a Draft Specification that will
`not be licensed under the Reciprocal License, the Khronos Representative of such Member must
`submit an IP Disclosure Certificate with the submission of a Contribution or as soon as is
`reasonably possible.” Id. § 3.3 (emphasis added). Accordingly, AMD granted Arm a Reciprocal
`License to all Necessary Patent Claims not excluded by an IP Disclosure Certificate. Based on
`our review of public Khronos Group documents, it is our understanding the ’628 patent was never
`excluded from the scope of a Reciprocal License.
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`jointly “developed by Arm and AMD.”
`that ASTC was
`In addition, we understand
`https://github.com/ARM-software/astc-encoder (last visited March 6, 2023). Accordingly, Arm has
`rights to the technology necessary to implement ASTC independent of the Membership
`Agreement. As the co-developer of ASTC, Arm has rights to include ASTC in its products,
`regardless of any AMD patent, and Arm’s customers benefit from Arm’s rights.
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`II.
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`AMD’s Patent Infringement Allegations and ASTC
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`In its Complaint requesting ITC Investigation No. 337-TA-1318, AMD asserted that Realtek
`infringes the ’628 patent based exclusively on its use of Arm GPUs to implement the ASTC
`standard. See ITC Complaint ¶¶ 112, 113, and Ex. 43. Notably, AMD cites only the ASTC
`standards to establish infringement of non-generic limitations of the ’628 patent. See Ex. 43 to
`ITC Complaint.
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`Pursuant to the Membership Agreement, all patents necessary to the ASTC standard are
`licensed, royalty-free, to Arm. In particular, OpenGL ES 3.2 expressly incorporates and requires
`ASTC, and the Khronos Group has ratified OpenGL ES 3.2,3 which is the trigger for a grant of
`license rights to all Members. See Membership Agreement § 1.2.
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`We understand that, in the 1318 Investigation and in the E.D. Tex. Action, AMD accuses Realtek
`of infringing the ’628 patent by using Mali “Bifrost” GPUs, the Mali-G51 GPU, the Mali-57 GPU,
`and the Mali G310 GPU to implement the ASTC standard. We understand from Arm that such
`GPUs fully comply with OpenGL ES 3.2, and such compliance is the basis for AMD’s claims
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`3 OpenGL 3.2 uses Data Format 1.3.1 (the Khronos ASTC data format specification).
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`Case 2:22-cv-00134-JRG-RSP Document 69-3 Filed 03/09/23 Page 5 of 5 PageID #: 1158
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`against Realtek. As such, Realtek’s use of the accused GPUs to implement the ASTC standard
`is protected by the Reciprocal License that the Membership Agreement granted to Arm. See
`Membership Agreement, Attachment A §1 (“Reciprocal License”); Microsoft Corp., 696 F.3d 872;
`Realtek Semiconductor Corp., 946 F.Supp.2d 998; Implicit, LLC, 2020 WL 10356908.
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`III.
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`Realtek’s Demand
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`Realtek demands that AMD promptly dismiss all claims against Realtek for infringement of the
`’628 patent, including all such claims asserted in the 1318 Investigation and the E.D. Tex. Action.
`If AMD does not confirm, by Friday, March 10, 2023, that it will dismiss all such claims, then
`Realtek will initiate an action against AMD in the Northern District of California. Realtek will bring,
`among others, claims for breach of the Khronos Group Membership Agreement. Realtek is also
`investigating additional claims, and depending upon the result of its investigation, Realtek may
`assert, for example, antitrust and abuse of process claims.
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`Realtek further demands that AMD and all persons under its control preserve all evidence related
`to the facts discussed in this letter. This demand for preservation of evidence includes, but is not
`limited to, preserving paper and electronic documents, data-bases, document management
`systems, video and oral recordings, photographs, electronic images, internet images, instant
`messages, text messages, social media, voice mails, e-mails (including message contents,
`headers, html source, attachments and logs of e-mail system usage), electronic calendars and
`schedules, metadata, file fragments, browser logs, internet download logs, internet logs, browser
`logs, network access logs, cookies, browser caches, work logs, telephone logs, local and long
`distance telephone records, imaged files and drives, backup media, transcripts (of depositions or
`hearings), and pleadings. AMD must also preserve all instrumentalities and methods by which
`such evidence is created or maintained. The evidence is to be preserved in its native format, and
`the demand includes preservation of software, tools, applications, utilities and the like needed to
`access the evidence in its native format. Further, the request includes the suspension of routine
`document destruction and the preservation of all evidence created after the date of this letter.
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`We look forward to your prompt response and hope that AMD will take corrective action
`immediately.
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`Sincerely,
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`Jason N. Haycock
`Jas Dhillon
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`March 7, 2023
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