Case 3:21-cv-08872-EMC Document 68 Filed 09/03/21 Page 1 of 6
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE WESTERN DISTRICT OF TEXAS
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`WACO DIVISION
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`NEONODE SMARTPHONE LLC,
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`APPLE INC.,
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`v.
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`Plaintiff,
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`Defendants.
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`Civil Action No. 6:20-cv-00505-ADA
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`JURY TRIAL DEMANDED
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`PLAINTIFF NEONODE SMARTPHONE LLC’S AMENDED MOTION FOR ISSUANCE
`OF AN AMENDED LETTER OF REQUEST FOR INTERNATIONAL JUDICIAL
`ASSISTANCE PURSUANT TO THE HAGUE CONVENTION OF 18 MARCH 1970 ON
`THE TAKING OF EVIDENCE ABROAD IN CIVIL OR COMMERCIAL MATTERS,
`AND RESPONSE TO THE STOCKHOLM DISTRICT COURT’S ADVISORY LETTER
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`Plaintiff Neonode Smartphone LLC (“Neonode”) hereby moves for issuance of a response
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`to the Advisory (“Advisory”) from the Stockholm District Court (“Stockholm Court”) entered into
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`the docket in this action on June 30, 2021. (Dkt. #64). The Advisory states that the Stockholm
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`Court’s initial assessment of discovery requests from Neonode, Apple Inc., (“Apple”) and
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`Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. (collectively, “Samsung”)
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`was that the requests would fall under the exemption concerning pre-trial discovery of documents,
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`which under Swedish law could cause the request to be denied. The Advisory further states that
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`the Stockholm Court will give this Court an opportunity to address the question of pre-trial
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`discovery by providing a statement by no later than September 30, 2021. Neonode therefore
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`requests that this Court issue a response and amended Letter of Request for International Judicial
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`Assistance Pursuant to the Hague Convention of March 18, 1970 on the Taking of Evidence
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`Case 3:21-cv-08872-EMC Document 68 Filed 09/03/21 Page 2 of 6
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`Abroad in Civil or Commercial Matters as set forth in the attached Exhibit A (“the Amended Letter
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`of Request and Response”). This response clarifies and amends this Court’s previously-issued
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`Letter of Request for International Judicial Assistance Pursuant to the Hague Convention of March
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`18, 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters (the “Letter of
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`Request”), significantly narrowing the discovery sought by Neonode.
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`Neonode requests that the Court expeditiously rule on this Motion, as any response must
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`reach the Stockholm Court by September 30, 2021. Neonode’s counsel, assisted by Swedish
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`counsel, will provide this Court’s response to the Stockholm District Court immediately following
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`this Court’s entry of an order granting this motion.
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`On February 9, 2021, Neonode moved for issuance of the Letter of Request. The Letter of
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`Request was attached as Exhibit A to Neonode’s moving papers. The Letter of Request seeks
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`deposition testimony on specified topics and production of certain specified documents and
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`categories of documents from two residents of Sweden, Magnus Goertz and Thomas Eriksson.
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`Mr. Goertz is the inventor of the patents at issue in this litigation – U.S. Patent Nos. 8,095,879
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`(“the ‘879 Patent”) and 8,812,993 (“the ‘993 Patent” collectively, “the Patents in Suit”). Mr.
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`Goertz co-founded, with Mr. Eriksson, a company in Sweden in 2000, which was later renamed
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`Neonode AB, to develop and commercialize a mobile phone that would integrate an innovative
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`gestural user interface with touch screen technology. Messrs. Goertz and Eriksson referred to this
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`user interface as the “Neno” technology, and it is the subject of the Patents in Suit. Mr. Eriksson
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`co-founded this company with Mr. Goertz, worked with him to commercialize the technology, and
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`presented a prototype of what later became the Neonode N1 mobile phone at a trade show in
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`Germany in March 2002 – evidence that Mr. Goertz had conceived of and had diligently worked
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`Case 3:21-cv-08872-EMC Document 68 Filed 09/03/21 Page 3 of 6
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`to reduce the patented technology to practice long before he filed the application to which the
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`Patents in Suit claim priority, on December 10, 2002.
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`The deposition testimony and documents that Neonode seeks to obtain are directed to,
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`among other things, (i) Mr. Goertz’s conception and reduction to practice of the inventions claimed
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`in the ‘879 and ‘993 Patents, (ii) secondary considerations of nonobviousness, such as the
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`commercial success of the Neonode N1, N1m and N2 mobile phones that incorporated the patented
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`Neno user interface, and industry praise for the Neno interface, and (iii) the value of the patented
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`technology, as reflected in a (now expired) license agreement that Neonode Sweden AB entered
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`into with Samsung Electronics Co., Ltd., on or about July 13, 2005, and that Mr. Goertz signed on
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`behalf of the Swedish Neonode entity, pursuant to which Samsung was licensed under the patent
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`application that later matured into the ‘879 Patent and to which the ‘993 Patent claims priority.
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`(Case No. 6:20-cv-00507, Dkt. #1, ¶ 17).
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`Accordingly, the requested discovery is pertinent to, among other things, the priority date
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`of the ‘993 Patent. This is a highly material issue in the Inter Partes Review proceeding initiated
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`by Apple and Samsung and currently pending with respect to the ‘993 Patent (IPR2021-00145),
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`because the primary reference in one of Defendants’ two asserted obviousness combinations – JP
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`Published Patent Appl. No. 2002-55750 (“the Hisatomi reference”) – has a priority date of
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`February 20, 2002, just three weeks prior to the date on which Goertz and Eriksson were
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`demonstrating a functional prototype of the Neonode N1 smartphone incorporating the patented
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`user interface at the Cebit trade show in Hannover, Germany. Since it would not have been
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`possible to design and construct a functional prototype incorporating the user interface in less than
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`three weeks, the only reasonable inference to draw from these facts is that Goertz conceived of the
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`patented user interface and worked to reduce it to practice prior to Hisatomi’s priority date, which
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`Case 3:21-cv-08872-EMC Document 68 Filed 09/03/21 Page 4 of 6
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`if proven would eliminate Hisatomi as prior art in the pending IPR. Neonode’s Letter of Request
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`seeks testimony and documents concerning Goertz’s conception and reduction to practice of the
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`patented user interface.
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`By the Response to the Stockholm Court attached hereto as Exhibit A, Neonode seeks to
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`amend the Letter of Request, clarifying and narrowing the scope of its document requests in an
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`effort to address the Stockholm Court’s concerns regarding the breadth of the requested discovery.
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`The Stockholm District Court did not object to the deposition testimony sought by
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`Neonode, so there is no change to that portion of Neonode’s request (see Attachment A to Exhibit
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`A hereto). Although Neonode’s counsel drafted discovery requests that were substantially more
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`focused than the norm under procedure in U.S. federal courts, the Stockholm District Court did
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`object to Neonode’s request for production of documents, on the ground that it appears to seek
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`document discovery sufficiently broad as to exceed the bounds of what Sweden will enforce
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`pursuant to the Hague Convention. Accordingly, Neonode has drastically narrowed the scope of
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`the requested discovery, withdrawing all documents requests directed to Thomas Eriksson,
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`reducing the number of requested categories of documents and things directed to Magnus Goertz
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`from fourteen to three, and narrowing even the three remaining requests so they are more tightly
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`focused on documents that Mr. Goertz undoubtedly has in his possession. These revisions are
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`reflected at pages 6-7 of Exhibit A, and in Attachment B to Exhibit A.
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`Accordingly, the Court should grant Neonode’s motion and issue the attached Response to
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`the Stockholm Court. In the event the Court grants this motion, Neonode requests that the Court
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`execute the Amended Letter of Request and Response with the Court’s signature and seal and
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`provide an original of the executed Amended Letter of Request and Response to Neonode’s
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`Case 3:21-cv-08872-EMC Document 68 Filed 09/03/21 Page 5 of 6
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`undersigned counsel. Neonode’s counsel will then transmit the Response to the appropriate
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`Swedish authority.
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`Counsel for Neonode has attempted to confer with Apple’s counsel regarding the relief
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`requested in this motion. On August 27, 2021, Neonode’s counsel sent Apple’s counsel an email
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`informing Apple of Neonode’s intent to file this motion and requesting that Apple’s counsel advise
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`as to whether Apple would oppose the motion. Apple’s counsel requested a draft of the proposed
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`response to the Stockholm District Court. Neonode’s counsel provided a draft of the proposed
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`response, as well as of this motion and all supporting papers, on August 31, 2021, along with a
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`second request that Apple’s counsel advise as to whether Apple would oppose the motion. Apple’s
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`counsel did not respond. Accordingly, Neonode’s counsel filed the motion on September 1.
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`Neonode’s counsel then followed up with another request that Apple’s counsel advise as to
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`whether Apple would oppose the motion, and was again met with silence. Neonode then filed this
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`amended motion on September 3, adding the content reflected in this paragraph.
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`DATED: September 3, 2021
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`Craig D. Cherry (State Bar No. 24012419)
`Email: craig@swclaw.com
`Justin W. Allen (State Bar No. 24081977)
`Email: justin@swclaw.com
`STECKLER, WAYNE, COCHRANE
`CHERRY, PLLC
`100 N. Ritchie Road, Suite 200
`Waco, Texas 76712
`913 Franklin Ave., Suite 201
`Waco, Texas 76701
`Telephone: (254) 651-3690
`Facsimile: (254) 776-6823
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`By: /s/ Philip J. Graves
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`Philip J. Graves (CA State Bar No. 153441)
`Telephone: (213) 330-7147
`Email: philipg@hbsslaw.com
`Greer N. Shaw (CA State Bar No. 197960)
`Telephone: (213) 330-7145
`Email: greers@hbsslaw.com
`HAGENS BERMAN SOBOL SHAPIRO
`LLP
`301 North Lake Avenue, Suite 920
`Pasadena, CA 91101
`Facsimile: (213) 330-7152
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`Counsel for Plaintiff Neonode Smartphone
`LLC
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`Case 3:21-cv-08872-EMC Document 68 Filed 09/03/21 Page 6 of 6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 3rd day of September 2021, I electronically filed the foregoing
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`with the Clerk of Court using the CM/ECF system which will send notification of such filing to
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`the following:
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`/s/ Philip J. Graves
` Philip J. Graves
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`Betty H. Chen
`Fish & Richardson PC
`111 Congress Avenue, Suite 810
`Austin, TX 78701
`(512) 472-5070
`Fax: (512) 320-8935
`Email: Bchen@fr.com
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`Benjamin C. Elacqua
`Kathryn A. Quisenberry
`Fish and Richardson PC
`1221 McKinney Street Suite 2800
`Houston, TX 77010
`(713) 654-5300
`Fax: (713) 652-0109
`Email: Elacqua@fr.com
`Email: Quisenberry@fr.com
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`Attorneys for Defendant Apple Inc.
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`Jared A. Smith
`Fish & Richardson P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`(858) 678-5070
`Fax: (878) 678-5099
`Email: Jasmith@fr.com
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`Aamir A. Kazi
`Fish & Richardson P.C.
`1180 Peachtree Street NE, 21st Floor
`Atlanta, GA 90309
`(404) 892-5005
`Fax: (404) 892-5002
`Email: kazi@fr.com
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