Case 2:22-cv-00134-JRG-RSP Document 70 Filed 03/21/23 Page 1 of 6 PageID #: 1159
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ADVANCED MICRO DEVICES, INC. ET
`AL.,
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`TCL INDUSTRIES HOLDINGS CO., LTD.,
`ET AL.
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`v.
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`§
`§
`§
`§
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`§
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`CASE NO. 2:22-cv-00134-JRG-RSP
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`DEFENDANT REALTEK SEMICONDUCTOR
`CORP.’S MOTION FOR RELIEF FROM THE STAY
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`Defendant Realtek Semiconductor Corp. (“Realtek”) respectfully moves for relief from the
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`stay. Realtek seeks the Court’s permission to file a motion seeking an order striking Plaintiffs’
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`Second Amended Complaint for Patent Infringement; Declaratory Judgement of No Breach of
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`Contract; and Declaratory Judgment of No License (“Second Amended Complaint”), and seeking
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`an order to show cause.
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`1.
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`Plaintiffs Advanced Micro Devices, Inc. and ATI Technologies ULC (collectively,
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`“AMD”) filed the Second Amended Complaint on March 9, 2023, six months after this Court’s
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`September 12, 2022 Order staying this case “in its entirety.” Dkt. 65 at 3. AMD cannot claim
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`ignorance of the Court’s order because the Court entered it at AMD’s insistence, over Realtek’s
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`objection. AMD has flouted the Court’s order by filing an amended complaint without first
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`seeking an order lifting the stay. Indeed, AMD’s Second Amended Complaint contradicts the
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`Court’s specific instructions within the order staying this case—which permit only one subsequent
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`submission. AMD’s actions are doubly concerning because the license at issue in AMD’s new
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`claims expressly requires parties to bring all claims arising out of the license in either Santa Clara
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`Case 2:22-cv-00134-JRG-RSP Document 70 Filed 03/21/23 Page 2 of 6 PageID #: 1160
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`Superior Court or the Northern District of California. Realtek has met and conferred with AMD,
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`in hopes of convincing it to withdraw the unauthorized and unjustified Second Amended
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`Complaint, but AMD refuses to do so. Realtek therefore respectfully seeks relief from the stay to
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`allow it to file a motion asking the Court to strike Defendant’s Second Amended Complaint and
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`to enter an order to show cause as to why AMD should not be held in contempt.
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`2.
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`AMD filed this action against Realtek on May 5, 2022 alleging infringement of five
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`U.S. patents. Dkt. 1. AMD filed a Motion for a Discretionary Stay, Dkt. 37, which Realtek
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`opposed. Dkt. 43. The Court granted AMD’s motion to stay, and ordered that this case “be stayed
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`in its entirety until final resolution” of the parallel ITC proceeding on September 12, 2022. Dkt.
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`65 at 3 (emphasis added). The Court’s stay order allows only a single subsequent filing: “a joint
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`notice within 30 days from the resolution of the ITC Proceeding” that “inform[s] the Court of the
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`outcome of the ITC Proceeding and whether the stay should be lifted in this case.” Id. (emphasis
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`added).
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`3.
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`Realtek sent a letter to AMD on March 7, 2023, notifying AMD of its intention to
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`bring an action in the Northern District of California against AMD for breaching a license that
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`protects Realtek against AMD’s claims.1 Dkt. 69 Ex. C.
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`4.
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`In the letter, Realtek explained that the License Agreement provides a license to
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`companies, such as Realtek, in “the normal tiers of distribution” for Arm, including “resellers,
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`distributors, dealers, and authorized manufacturers and others in the distribution channel.” Id. at
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`1 Realtek provided advance notice to AMD of its intention to bring claims pursuant to the notice
`provisions in the License Agreement and pursuant to the strong preference in the N.D. California
`for pre-suit letters. See https://www.khronos.org/files/member_agreement.pdf (cited in Dkt. 69
`Ex. C, at 1 n.1); see also Dkt. 69 Ex. C at 2 n.2. 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 70 Filed 03/21/23 Page 3 of 6 PageID #: 1161
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`2. The letter identified that AMD’s infringement contentions target the Arm GPU that Realtek
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`sells within its accused systems-on-a-chip (“SoCs”), and Realtek therefore has the benefit of Arm’s
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`license from AMD. Id.
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`5.
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`Realtek’s letter further informed AMD that it would bring claims against AMD in
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`the Northern District of California, which has exclusive jurisdiction over such claims. In
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`particular, the license agreement AMD has breached provides:
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`The parties hereby agree that any dispute regarding the interpretation or validity of, or
`otherwise arising out of, this Agreement shall be subject to the exclusive jurisdiction of the
`California state courts of Santa Clara, County (or if there is federal jurisdiction, the United
`States District Court for the Northern District of California, San Jose), and the parties agree
`to submit to the personal and exclusive jurisdiction and venue of these courts.
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`See https://www.khronos.org/files/member_agreement.pdf (cited in Dkt. 68 Ex. C, at 1 n.1)
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`(emphasis added).
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`6.
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`Two days after Realtek sent its letter, on March 9, 2023, AMD filed a Second
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`Amended Complaint, in direct violation of the Court’s Order staying this case “in its entirety.”
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`Dkt. 65 at 3. The filing also violated Federal Rule of Civil Procedure 15(a)(2).
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`7.
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`The March 9, 2023 Second Amended Complaint adds facts, and two causes of
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`action, all of which arise directly from the license Realtek identified in its March 7, 2023 letter.
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`8.
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`Accordingly, the Second Amended Complaint not only violates the Court’s stay
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`order and Federal Rule of Civil Procedure 15(a)(2), but also contravenes the terms of the license
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`agreement on which AMD bases its new claims.
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`9.
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`Because AMD failed to seek relief from the stay before filing an unauthorized
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`pleading, Realtek is left in the untenable position of not knowing when, if ever, it must respond.
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`The Court’s stay order prevents Realtek from filing any response, and even if a response were
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`permitted without violating the Court’s order, Realtek cannot determine when such response would
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`Case 2:22-cv-00134-JRG-RSP Document 70 Filed 03/21/23 Page 4 of 6 PageID #: 1162
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`be due. The stay order supersedes the 14-day deadline ordinarily required by Federal Rule of Civil
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`Procedure 15 as well as the April 11, 2023 deadline under the pre-stay DCO. Thus, AMD’s
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`unauthorized pleading puts Realtek in the impossible position of either violating the Court’s order
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`or risking default. Striking AMD’s unauthorized Second Amended Complaint is the best way to
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`resolve the dilemma that AMD created.
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`10.
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`Accordingly, Realtek seeks limited relief from the stay in the form of an order
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`allowing it to file a motion to strike and a reply in support of the motion.
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`Case 2:22-cv-00134-JRG-RSP Document 70 Filed 03/21/23 Page 5 of 6 PageID #: 1163
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`Dated: March 21, 2023
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`Respectfully submitted,
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`By: /s/ G. Blake Thompson
`G. Blake Thompson
`State Bar No. 24042033
`Blake@TheMannFirm.com
`J. Mark Mann
`State Bar No. 12926150
`Mark@TheMannFirm.com
`MANN | TINDEL | THOMPSON
`112 E. Line Street, Suite 304
`Tyler, Texas 75702
`(903) 657-8540
`(903) 657-6003 (fax)
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`Jeffrey L. Johnson
`State Bar No. 24029638
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`609 Main, 40th Floor
`Houston, Texas 77002
`Telephone: 713.658.6400
`Facsimile: 713.658.6401
`jj@orrick.com
`
`Robert Benson
`CA Bar No. 155971
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614
`Telephone: 949.567.6700
`Facsimile: 949.567.6710
`rbenson@orrick.com
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`Attorneys for Defendant Realtek
`Semiconductor Corporation
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`Case 2:22-cv-00134-JRG-RSP Document 70 Filed 03/21/23 Page 6 of 6 PageID #: 1164
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`CERTIFICATE OF SERVICE
`The undersigned counsel hereby certifies that on March 21, 2023, a true and correct copy
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`of the foregoing was electronically filed with the Clerk of Court using the CM/ECF system, which
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`will automatically send notification of such filing to all attorneys of record.
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` /s/ G. Blake Thompson
`G. Blake Thompson
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`CERTIFICATE OF CONFERENCE
`The undersigned herby certifies that counsel for Realtek Semiconductor Corp., complied
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`with the meet and confer requirement in Local Rule CV-7(h) on March 21, 2023. AMD has
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`indicated that this motion is opposed, after a conference occurred involving, for AMD Adam Rizk
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`Matthew Karambelas, and Brian Craft and for Realtek, Jeffrey Johnson, Blake Thompson, and
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`Theodore Angelis. During the conference, Realtek explained its position, and after the conference,
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`it provided the authority indicating that AMD’s filing was unauthorized and should be stricken.
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`AMD declined to withdraw the complaint, and discussions ended in an impasse.
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` /s/ G. Blake Thompson
`G. Blake Thompson
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