Case 2:17-cv-00932-JLR Document 66-1 Filed 03/26/18 Page 1 of 6
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`Exhibit A
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`Case 2:17-cv-00932-JLR Document 66-1 Filed 03/26/18 Page 2 of 6
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`Owais Siddiqui
`Executive Patent Litigation Director
`HTC America, Inc.
`owais_siddiqui@htc.com
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`October 2, 2017
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`VIA EMAIL to gregoire.delongchamps@st.com and andrew.mayo@st.com
`
`Grégoire Barry Delongchamps, Esq.
`ST Microelectronics Asia Pacific Pte. Ltd.
`5A Serangoon North Avenue 5
`554574 Singapore
`
`Andrew Mayo, Esq.
`STMicroelectronics, Inc.
`750 Canyon Dr., Suite 300
`Coppell, TX 75019-4009
`
`
`Re: CyWee Group Ltd. v. HTC Corp. and HTC America, Inc.
`Civil Action No. 17-cv-932 (U.S. District Court for the Western District of
`Washington)
`
`
`Dear Grégoire and Andrew,
`
`HTC Corporation and its affiliates, predecessors, successors, parents, subsidiaries,
`partners, employees, agents, heirs, and assigns (collectively, “HTC”) hereby provide
`notice to ST Microelectronics Asia Pacific Pte. Ltd., STMicroelectronics, Inc., and any
`other entities that provided STM Products (defined below) to HTC (collectively, “STM”)
`of the lawsuit entitled CyWee Group Ltd. v. HTC Corporation and HTC America, Inc.,
`Civil Action No. 17-cv-932, pending in the United States District Court for the Western
`District of Washington (the “Lawsuit”). For your convenience, I enclose a copy of both
`the original and amended complaints for patent infringement in the Lawsuit.
`
`In the complaints, CyWee Group alleges that certain HTC devices infringe two U.S.
`patents related to calculating the movements and rotations of a machine using, in one
`patent, a six-axis motion sensor module, and in another patent, a nine-axis motion
`sensor module. See, e.g., Complaints at ¶¶ 19-169. HTC uses STM sensor hub chips
`(“STM Products”), including at least STM32F411CEY6TR, in a number of its devices,
`including in many of the devices accused in the Complaint, and the allegedly infringing
`functionality in accused HTC devices appears to be centered around functionality
`provided by STM Products.
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`On July 14, 2017, CyWee Group’s outside counsel, Ari Rafilson, sent a letter to HTC that,
`among other things, acknowledged that the 2013 CyWee/STMicro license agreement
`includes a non-assertion clause covering License Products, as defined in the agreement:
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`
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`308 Occidental Ave. S., Floor 3 ▪ Seattle, WA 98104 ▪ USA ▪ Tel: +1 858.480.1804
`www.htc.com
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`CONFIDENTIAL
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`Case 2:17-cv-00932-JLR Document 66-1 Filed 03/26/18 Page 3 of 6
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`License Product and Licensed Technology are defined in the agreement as follows:
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`“Licensed Product” is defined as “any ST product that is sold or distributed
`with the Licensed Technology.” License at 2.
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`“Licensed Technology” is defined as “the existing firmware described in
`Annex 1, the firmware resulting from . . .Annex 2 . . . and any firmware
`that will be provided by CyWee for future porting into additional ST
`products, all Updates and all Upgrades of the Licensed Technology.”
`
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`For your convenience, I enclose a copy of Mr. Rafilson’s July 14, 2017 letter.
`
`In a follow-up letter sent on September 21, 2017, CyWee Group’s counsel further
`demanded information relating to the identification of products containing ST Micro
`components and licensed technology. For example, the letter demands information
`relating to the following:
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`Microcontroller: Devices including one or more CPUs along with memory, which
`are ultimately included in HTC Products, and which, when shipped with said
`products, include Sensor Fusion Technology and/or CyWee Licensed Technology.
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`Sensor Fusion Software: Software that combines data from at least an
`accelerometer and gyroscope to calculate orientation information.
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`ST Microcontroller: Microcontroller manufactured or sold by STMicroelectronics.
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`ST Micro: Any STMicroelectronics entity.
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`For your convenience, I also enclose a copy of the September 21, 2017 letter from CyWee
`Group’s counsel.
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`HTC requests, therefore, that STM defend, indemnify, and hold HTC harmless in the
`Lawsuit. STM’s obligations stem from, inter alia, the Terms and Conditions of HTC
`Corporation’s purchase of STM Products from STM, a copy of which is enclosed for your
`convenience. For example, paragraph 6, titled WARRANTY, contains a representation
`and warranty that “the Products shall not infringe on any patent, trademark, trade
`secret, or other intellectual property right of HTC or any third party.” In addition,
`paragraph 7, titled INDEMNITY, contains an obligation for STM to
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`defend …, indemnify and hold HTC and HTC Related Parties harmless
`from and against all proceedings, governmental actions, claims, liabilities,
`fines, losses, damages, costs and/or expenses (including reasonable
`attorney’s fees), whether direct or indirect, arising from or relating to a
`claim brought by a third party claiming or alleging that the manufacture,
`use, sale, and/or distribution of the Products constitutes infringement,
`
`
`
`308 Occidental Ave. S., Floor 3 ▪ Seattle, WA 98104 ▪ USA ▪ Tel: +1 858.480.1804
`www.htc.com
`
`
`CONFIDENTIAL
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`Case 2:17-cv-00932-JLR Document 66-1 Filed 03/26/18 Page 4 of 6
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`violation or misappropriation [of] an intellectual property right or other
`proprietary right of such third party.
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`Please acknowledge your receipt of this letter and acceptance of STM’s defense,
`indemnity, and hold-harmless obligations as soon as possible. We look forward to
`working with you in addressing these issues in a cooperative and efficient manner.
`Thank you in advance for your prompt response.
`
`Very truly yours,
`
`
`Owais Siddiqui
`Executive Patent Litigation Director
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`Enclosures (5)
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`cc: James Yoon, Esq., HTC’s outside counsel (jyoon@wsgr.com)
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`
`
`308 Occidental Ave. S., Floor 3 ▪ Seattle, WA 98104 ▪ USA ▪ Tel: +1 858.480.1804
`www.htc.com
`
`
`CONFIDENTIAL
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`Case 2:17-cv-00932-JLR Document 66-1 Filed 03/26/18 Page 5 of 6
`宏達國際電子股份有限公司
`採購單編號
`3000139791
`HTC Corporation
`廠別
`TW10
`電話: +88633753252 傳真: +88633753253
`頁碼
`1 of 2
`日期
`2017/07/28
`版本
`V
`0
`
`:::::
`
`廠商
`STMS
`STMicroelectronics Asia Pacific
`Pte Ltd
`聯絡處:
`
`裝運至
`宏達國際電子股份有限公司
`No.23, Xinghua Rd., Taoyuan
`City,
`330 TAOYUAN COUNTY
`TAIWAN
`
`電話: 886928298588
`傳真:
`
`黃淑貽_93562
`
`採購者
`採購者
`電話
`遞送訊息
`國貿條件 : CIF(成本、保險和運費) /TPE
`Airport
`付款條件 : End of month 45 days
`貨幣單位 : USD
`End of month 45 days
`
`項次 請購
`單編
`號
`
`10
`
`料號及品名規格
`
`交貨日 單位 數量
`
`單價 稅率 金額
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`倉庫 聯絡處
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`30H80366-00M A
`Controller,STM32F411CEY6TR,WLCSP,ST,85/-
`
`1.12.2017
`
`EA
`
`45,000.00 0.870000 0.00 39,150.00
`
`9000 黃淑貽
`
`39150.00
`0.00
`39150.00
`額
`注 意 事 項：隨貨附發票及送貨單，或未註明本公司訂單號碼及項次，若延誤貴公司貨款本公司不負任何責任。
`(1) 發票地址 :
`(2) 統一編號 :
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`未稅價
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`稅 總
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`1.
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`2.
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`6.
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`Terms and Conditions of Purchase Order for HTC Corporation
`The Supplier agrees to accept the terms and conditions of thisPurchase Order by (i) confirming the Purchase Order in two
`calendar daysvia email, facsimile or other electronic means, (ii) signing back theoriginal copy to HTC Procurement department
`within seven calendar daysor (iii) shipping the Products to HTC designated place on the shipmentdate stated herein. The terms
`and conditions of this Purchase Ordershallapply to any and all supply of any kind of product by the Supplier to HTC unless
`otherwise governed by other written agreement. HTC will onlypayfor the Products in accordance with the payment terms set forth
`inthe Purchase Order or the applicable supply agreement.
`The terms and conditions stated herein, including quantity, unitprice, payment terms, payment date, etc. shall not be changed
`withoutHTC's prior writing consent.
`In the event that Supplier fails to deliver the quantities ofProducts according to this Purchase Order, Supplier shall pay HTC
`on adaily basis an amount equal to three (3) percent of total purchase priceof such delayed Products as delay charges and HTC
`may deduct such amountfrom the purchase price to be paid to Supplier. The Supplier shall alsobe liable to HTC for any possible
`damages and losses that occur as aresult of such shipment delay.In addition to the damages and losses, HTCshall have the right
`to cancel the delayed Products, in whole or inpart, without incurring any liability towards the Supplier.
`Supplier is under obligation to deliver products complying withHTC inspection standard, and HTC reserves the right to perform
`IncomingQuality Control ("IQC")and/or Outgoing Box Audit ("OBA"). The applicable"Failure Rate" is (i) 100 Defective Parts Per
`Million ("DPPM") forelectrical engineering (EE) parts, (ii) 600 DPPM for mechanicalengineering (ME) parts, and (iii) 1200 DPPM
`for ME parts with CNCprocesses.In the event that the HTC IQC and/or HTC OBA failure rate ofthe Products exceeds 50% of the
`Failure Rate, Supplier shall immediatelyimplement a recovery plan (together with HTC if required) in order toresolve the
`problems within three (3) working days. If the IQC and/orOBA failure rate of the Products exceeds the Failure Rate, HTC shall
`beentitled to order Supplier to stop shipments immediately, create ataskforce with both Supplier and HTC experts in order to
`agree on ashort-term solution within one (1) working day.
`Epidemic Failure:In the event where the estimated product returnrate exceeds 1% on one (1) single cause ("Epidemic Failure"),
`HTC shallbe entitled to cancel any or all orders of such Product and return anyor all such purchased Products. In such an
`event, Supplier shall berequired to pay a breach penalty of 10% of the total retail value ofsuch returned/cancelled Product and
`shall otherwise compensate HTC forall of its damages and costs incurred as result of or in connection withsuch Epidemic
`Failure.
`WARRANTY: Supplier represents and warrants that, for a period asstipulated in this Purchase Order or, in the absence of such
`stipulation, for a period of one (1) year after the date of HTC's acceptance ofthe Products ("Warranty Period"), each Product
`supplied hereunder shall(a) be new (except agreed otherwise with HTC), free from epidemic issuesand with a defect rate not
`higher than the Failure Rate set forthherein, (b) comply with the specification agreed by the Parties, and (c)shall be free
`from any defect in design, material and workmanship.Inaddition, Supplier represents and warrants that the Products shall
`notinfringe on any patent, trademark, trade secret, or other intellectualproperty right of HTC or any third party. Supplier
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`Case 2:17-cv-00932-JLR Document 66-1 Filed 03/26/18 Page 6 of 6
`宏達國際電子股份有限公司
`採購單編號
`3000139791
`HTC Corporation
`廠別
`TW10
`電話: +88633753252 傳真: +88633753253
`頁碼
`2 of 2
`日期
`2017/07/28
`版本
`V
`0
`
`:::::
`
`Terms and Conditions of Purchase Order for HTC Corporation
`further representsand warrants that its Products and its manufacturing sites shall be incompliance with all applicable laws,
`rules, orders, and regulations,including but not limited to RoHS, WEEE, SAR and other environmentalprotection rules. Supplier
`represents and warrants that all Productssupplied to HTC do not contain conflict minerals and their derivativesas defined by
`the United States, the European Union or other governmentor intergovernmental organization as applicable. In the event
`anyProduct delivered is not in conformity with any of the warranties,Supplier shall, at HTC's option and at Supplier's expense,
`repair orreplace the defective Products or return the purchase price plusinterest, and Supplier shall compensate HTC for all
`expenses or damagesincurred therefrom.
`INDEMNITY
`(a) Supplier agrees to defend (upon HTC's request therefor),indemnify and hold HTC, its affiliates, and each of their
`respectivedirectors, officers, employees, agents, contractors and customers ("HTCRelated Parties") harmless from and against
`all proceedings,governmental actions, claims, liabilities, fines, losses, damages, costsand/or expenses (including reasonable
`attorney's fees), whether director indirect, arising from, related to or in connection with (i) theinaccuracy,
`misrepresentation or breach of any representation orwarranty made by Supplier hereunder; (ii) any breach of this Agreementby
`Supplier; (iii) any product liability claim against HTC andattributable to the Products, or (v) the violation of any applicable
`lawor regulation.
`(b) Supplier shall defend (upon HTC's request therefor),indemnify and hold HTC and HTC Related Parties harmless from and
`againstall proceedings, governmental actions, claims, liabilities, fines,losses, damages, costs and/or expenses (including
`reasonable attorney'sfees), whether direct or indirect, arising from or relating to a claimbrought by a third party claiming or
`alleging that the manufacture, use,sale, and/or distribution of the Products constitutes infringement,violation or
`misappropriation an intellectual property right or otherproprietary right of such third party.
`Supplier agrees to take responsibility for any damage incurredby the loss or improper transfer of documentation or sample
`provided byHTC.
`Supplier is prohibited from subcontracting or selling to othercompanies the tooling, design materials owned by HTC without
`HTC's priorwritten consent.
`HTC may reschedule the shipment date or redirect the deliveryaddress of any undelivered Products multiple times without any
`charge orliability. HTC may cancel all or any part of the Products orderedhereunder at any timewithout any liability.
`The terms and conditions form part of the purchase order andsupersede any oral purchase agreement previously made.
`This Purchase Order shall be governed exclusively by thesubstantive laws of Taiwan, Republic of China, regardless if
`itsconflict of law doctrine. Any dispute or controversy in connection,related to or arising out of this Purchase Order shall be
`subject to theexclusive jurisdiction of the District of Taipei City, Taiwan, Republicof China.
`The HTC part number suffixed as "P" or "M" is compliant with HTCHSF(Hazardous Substance Free) requirements. Supplier shall
`providepart/material in accordance with HTC part number and HTC HSFrequirements.
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`7.
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`11.
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`13.
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