Case 2:22-cv-00134-JRG-RSP Document 72-2 Filed 04/05/23 Page 1 of 9 PageID #: 1192
`Case 2:22-cv-00134-JRG-RSP Document 72-2 Filed 04/05/23 Page 1 of 9 PagelD #: 1192
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` EXHIBIT 1
`EXHIBIT 1
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`

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`Case 2:22-cv-00134-JRG-RSP Document 72-2 Filed 04/05/23 Page 2 of 9 PageID #: 1193
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`C.A. No. 2:22-cv-00134-JRG-RSP
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`JURY TRIAL DEMANDED
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`§
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`§ §
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`§
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`§ §
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`ADVANCED MICRO DEVICES, INC.
`AND ATI TECHNOLOGIES ULC,
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`v.
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`Plaintiffs,
`
`§
`TCL INDUSTRIES HOLDINGS CO., LTD.;
`§
`TCL INDUSTRIES HOLDINGS (H.K.)
`LIMITED; TCL ELECTRONICS HOLDINGS §
`LIMITED; TCL TECHNOLOGY GROUP
`§
`CORPORATION; TTE CORPORATION; TCL §
`HOLDINGS (BVI) LIMITED; TCL KING
`§
`ELECTRICAL APPLIANCES (HUIZHOU)
`§
`CO. LTD.; SHENZHEN TCL NEW
`§
`TECHNOLOGIES CO., LTD.; TCL MOKA
`§
`INTERNATIONAL LIMITED; TCL SMART
`§
`DEVICE (VIETNAM) CO., LTD;
`§
`MANUFACTURAS AVANZADAS SA DE
`§
`CV; TCL ELECTRONICS MEXICO, S DE
`§
`RL DE CV; TCL OVERSEAS MARKETING §
`LTD.; and REALTEK SEMICONDUCTOR
`§
`CORP.,
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`§ §
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`Defendants.
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`§
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`REALTEK SEMICONDUCTOR CORP.’S
`INITIAL AND ADDITIONAL DISCLOSURES
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`Pursuant to Federal Rule of Civil Procedure 26(a)(1) and the Discovery Order in this case,
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`Defendant Realtek Semiconductor Corp. (“Realtek”) hereby makes these Initial and Additional
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`Disclosures. The following disclosures are made based on the information reasonably available
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`to Realtek at this time, and Realtek reserves the right to supplement, correct, or amend these
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`disclosures pursuant to Federal Rule of Civil Procedure 26(e). Realtek makes these disclosures
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`without waiving any claim for privilege and/or work product protection, or any objection the
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`discoverability, disclosure, relevance, or admissibility of information.
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`

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`Case 2:22-cv-00134-JRG-RSP Document 72-2 Filed 04/05/23 Page 3 of 9 PageID #: 1194
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`INITIAL DISCLOSURES
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`(a) Correct Names of Parties
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`Realtek believes the names of the parties to be correct.
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`(b) Potential Parties
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`Realtek is unaware of any potential parties not presently named.
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`(c) Legal Theories and Factual Bases of Disclosing Party’s Claims or Defenses
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`1. Non-Infringement
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`AMD’s infringement contentions are inadequate, vague, and generally fail to put Realtek
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`on notice of its full theories of infringement. Discovery is in its infancy. To the extent Realtek
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`can understand any of the infringement theories in this case, Realtek has not directly or indirectly
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`infringed, contributed to, or induced infringement of any valid and enforceable claims of the
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`Asserted Patents, either literally or under the doctrine of equivalents. Facts supporting Realtek’s
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`non-infringement contentions include, but are not limited to, the structure, characteristics, and
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`operation of the Realtek accused products; the Asserted Patents and its prosecution histories; and
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`any admissions by Plaintiffs regarding the Asserted Patents.
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`2. Invalidity
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`One or more of the Asserted Patents are invalid or void for failure to satisfy one or more
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`of the requirements in Part II of the Title 35 of the United States Code, including, but not limited
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`to, limited to, §§ 101, 102, 103, and/or 112. More specifically, with respect to its defenses under
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`35 U.S.C. §§ 102 and 103, Realtek currently identifies as prior art for each of the asserted patents
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`against Realtek the prior art references listed on the face of each asserted patent. This prior art is
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`exemplary only and should not be construed as limiting in any way the defenses that Realtek will
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`present in this investigation. Realtek’s investigation is ongoing. In addition to any art that is cited
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`2
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`Case 2:22-cv-00134-JRG-RSP Document 72-2 Filed 04/05/23 Page 4 of 9 PageID #: 1195
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`on the face of the Asserted Patents, Realtek may also rely upon admissions in the patents or their
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`file histories, and any other references that Realtek or any other Defendant may identify. Invalidity
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`contentions are not yet due in this case, but will be served at the appropriate time. Once served, it
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`is Realtek’s intention that such invalidity contentions are to be automatically incorporated in full
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`by reference into this disclosure. Realtek’s invalidity assertions are made on information and
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`belief as it continues its invalidity investigation and prepares its Invalidity Contentions.
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`3. Prosecution History Estoppel
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`On information and belief, Plaintiffs’ claims of patent infringement are barred in whole or
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`in part by the doctrine of prosecution history estoppel by reason of statements, representations,
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`concessions, admissions, arguments, and/or amendments, whether explicit or implicit, made by or
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`on behalf of the applications during the prosecution of the patent application that led to the issuance
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`of the Asserted Patents.
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`4. Limitation on Patent Damages
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`On information and belief, any claim for damages based on the alleged infringement of the
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`claims of the Asserted Patents must be limited according to 35 U.S.C. §§ 286, 287, and/or 288.
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`Also, Plaintiffs are not entitled to an award of attorneys’ fees, costs, pre-judgment or post-
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`judgment interest under 35 U.S.C. §§ 284 or 285, or any applicable law.
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`5. No Entitlement to Injunctive Relief
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`Plaintiffs are not entitled to injunctive relief under any theory, including without limitation,
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`because any alleged injury to Plaintiffs are not immediate or irreparable, Plaintiffs have an
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`adequate remedy at law, and/or public policy concerns weigh against any injunctive relief.
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`3
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`Case 2:22-cv-00134-JRG-RSP Document 72-2 Filed 04/05/23 Page 5 of 9 PageID #: 1196
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`6. License, Covenant Not to Sue, and/or Patent Exhaustion
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`Plaintiffs’ claim for remedial relief, if any, against Realtek for alleged infringement of the
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`Asserted Patents, is barred in whole, or in part, by the doctrine of patent exhaustion, implied
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`license, express license, an obligation not to assert and/or covenant not to sue, including, but not
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`limited to, Plaintiffs’ commitments to the Khronos Group and/or any other entity who otherwise
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`is licensed to the Asserted Patents.
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`(d) Persons with Knowledge
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`Realtek reserves the right to supplement these disclosures as it learns the identities and/or
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`subject matter of additional witnesses Realtek may use to support its claims or defenses.
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`Realtek’s investigation is in its infancy and ongoing. No persons with relevant knowledge
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`of relevant facts have yet been identified. Realtek intends to supplement these disclosures with
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`relevant persons with knowledge as they are discovered. Individuals that may possess information
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`relevant to Realtek’s claims or defenses, such as information related to non-infringement,
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`invalidity, and/or unenforceability of the Asserted Patents include, but are not limited to: (i)
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`authors and creators of prior-art products, publications, and/or patents relevant to the subject matter
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`of the Asserted Patents; (ii) individuals having knowledge of any prior art use, sale, offer to sell,
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`or invention relevant to the subject matter of the Asserted Patents; (iii) individuals having
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`knowledge of the ordinary skill in the art to which the alleged inventions pertain; (iv) individuals
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`having knowledge of any license to the Asserted Patents, any offer to license the Asserted Patents,
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`any obligation not to assert the Asserted Patents or to license the Asserted Patents, and/or any
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`refusal to license the Asserted Patents; (v) individuals having knowledge of the circumstances or
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`manner in which the alleged inventions are disclosed in the Asserted Patents; (vi) individuals
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`having knowledge of the ownership of, or rights to, the Asserted Patents and/or the subject matter
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`4
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`Case 2:22-cv-00134-JRG-RSP Document 72-2 Filed 04/05/23 Page 6 of 9 PageID #: 1197
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`of the Asserted patents; (viii) individuals having knowledge of Plaintiffs’ and any prior assignee
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`and/or purported owner’s licensing activities, including but not limited to licenses incorporated in
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`settlement agreements, may have knowledge relevant to alleged damages issues; (viii) individuals
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`having knowledge of the design, manufacture, or structure of the accused product; (ix) individuals
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`having knowledge of the sale, importation, offer for sale, or use of the accused products in the
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`United States (or the lack thereof), and (x) individuals having knowledge of facts related to the
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`calculation of a reasonable royalty and plaintiff’s claim for damages.
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`Realtek further incorporates by reference the identity of any individual identified in the file
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`histories of the Accused Patents and/or any related applications and/or file histories, or involved
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`in the prosecution of the Asserted Patents and/or any related applications or reexaminations
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`thereof, and the identity of the authors, named inventors, and other individuals reflected or
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`referenced in the publications and patents that are listed in the Asserted Patents and any related
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`applications and/or file histories, as persons having knowledge of relevant facts.
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`Realtek reserves the right to identify additional witnesses who may have particular
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`knowledge related to any further contentions of Plaintiffs. Realtek reserves the right to supplement
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`these disclosures as it learns the identities and/or subject matter of additional witnesses Realtek
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`may use to support its claims or defenses. By indicating the general subject matter of information
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`individuals may possess, Realtek is in no way limiting its right to call any individual(s) listed to
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`testify concerning other subjects. Further, Realtek is not admitting that testimony of any of the
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`individuals would be admissible or that discovery may properly be sought from them consistent
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`with Fed. R. Civ. P. 26. Realtek will disclose testifying expert witness when required by the
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`Docket Control Order.
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`5
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`Case 2:22-cv-00134-JRG-RSP Document 72-2 Filed 04/05/23 Page 7 of 9 PageID #: 1198
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`(e) Indemnity Agreements
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`Realtek is unaware of any relevant indemnity agreements or insurance agreements.
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`(f) Relevant Settlements
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`Realtek is unaware of any relevant settlement agreements.
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`(g) Litigation Statements
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`Realtek is presently aware that statements by a party to this action may include, without
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`limitation, all statements made by a Party in this case and/or their predecessors-in-interest, and
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`their past or present directors, officers, agents, employees, attorneys and representatives, (1) in this
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`litigation, including in pleadings, disclosures, or other documents filed with the Court or served
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`upon counsel of record; (2) during USPTO examination of the Asserted Patents and any related
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`patents; and (3) in the co-pending ITC investigation (337-TA-1318), including in pleadings,
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`disclosures, or other documents filed with the Court or served upon counsel of record.
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`ADDITIONAL DISCLOSURES
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`(a) Disclosures required by the Patent Rules for the Eastern District of Texas
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`Realtek will make the disclosures required of it by the Patent Rules for the Eastern District
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`of Texas at the times stated in the Docket Control Order entered in this action, as modified by the
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`Discovery Order.
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`(b) Relevant Documents, Electronically Stored Information, and Tangible things in
`the Possession, Custody, or Control of the Party
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`Realtek identifies the following categories of non-privileged documents in the possession,
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`custody and/or control of Realtek, which it may use in support of its defenses in this action. This
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`information is based on Realtek’s investigation to date, which is ongoing. Realtek specifically
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`reserves the right to identify additional categories and locations as discovery proceeds.
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`6
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`Case 2:22-cv-00134-JRG-RSP Document 72-2 Filed 04/05/23 Page 8 of 9 PageID #: 1199
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`1. Documents produced in Investigation No. 337-TA-1318 before the United
`States International Trade Commission, to the extent relevant to the claims and
`defenses in this litigation and admissible in this litigation.
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`2. Documents sufficient to show the function, implementation, and operation of
`relevant aspects of the Realtek accused products.
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`3. Documents sufficient to show financial and/or sales information relating to the
`Realtek accused products.
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`4. Prior art references to the Asserted Patents.
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`5. Documents showing noninfringement of the Realtek accused products.
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`6. Documents showing the invalidity and/or unenforceability of the Asserted
`Patents.
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`7. Documents supporting a defense that Plaintiffs are not entitled to damages,
`including but not limited to defenses of license and patent exhaustion.
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`8. Documents supporting any defense Realtek may raise during the duration of the
`case.
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`To the extent that the foregoing documents are in the possession of Realtek, copies of the
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`aforementioned documents, electronically stored information and tangible things are or will be in
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`the possession of the undersigned counsel. Realtek anticipates producing the foregoing documents
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`after the Court has entered Discovery and Protective Orders to the extent they are relevant, non-
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`privileged, and not subject to consent or other obligation (e.g., restricted by Protective Order in
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`the ITC).
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`(c) Computation of Damages
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`Realtek may, upon prevailing in this suit, seek an award of attorneys’ fees under 35 U.S.C.
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`§ 285, the costs of this suit, and such other and further relief as the Court deems just and proper.
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`The numerical amount of that relief is not presently available. Realtek reserves the right to
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`challenge any damages calculations offered by Plaintiffs and to offer opposing calculations.
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`7
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`Case 2:22-cv-00134-JRG-RSP Document 72-2 Filed 04/05/23 Page 9 of 9 PageID #: 1200
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`Respectfully submitted,
`
`/s/ Jeffrey L. Johnson
`Jeffrey L. Johnson
`State Bar No. 24029638
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`609 Main, 40th Floor
`Houston, TX 77002
`Telephone: 713.658.6400
`Facsimile: 713.658.6401
`jj@orrick.com
`
`J. Mark Mann
`State Bar No. 12926150
`Mark@TheMannFirm.com
`G. Blake Thompson
`State Bar No. 24042033
`MANN | TINDEL | THOMPSON
`201 E. Howard St.
`Henderson, TX 75654
`Telephone: 657.8540
`Facsimile: 903.657.6003
`
`ATTORNEYS FOR DEFENDANT
`REALTEK SEMICONDUCTOR CORP.
`
`CERTIFICATE OF SERVICE
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`I certify that the foregoing document was served by email to the following on September 2,
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`2022:
`
`Michael T. Renaud
`Adam S Rizk
`Debra E. Gunter
`Matthew A. Karambelas
`Eric Findlay
`John P. Schnurer
`Kyle R. Canavera
`Blake Thompson
`Mark Mann
`
`mtrenaud@mintz.com
`arizk@mintz.com
`dgunter@findlaycraft.com
`makarambelas@mintz.com
`efindlay@findlaycraft.com
`jschnurer@perkinscoie.com
`kcanavera@perkinscoie.com
`Blake@TheMannFirm.com
`Mark@TheMannFirm.com
`
`/s/ Jeffrey L. Johnson
`Jeffrey L. Johnson
`
`8
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