`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. AND
`APPLE INC.
`
`Petitioners
`
`v.
`
`NEONODE SMARTPHONE LLC
`Patent Owner.
`
`_____________________
`
`Case No. IPR2021-00145
`U.S. Patent No. 8,812,993
`_____________________
`
`
`
`PETITIONERS SAMSUNG ELECTRONICS CO. LTD AND
`SAMSUNG ELECTRONICS AMERICA, INC.’S
`MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`Samsung-Petitioners’ Motion to Exclude Evidence
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.64(c), Petitioners Samsung Electronics Co. Ltd.
`
`and Samsung Electronics America, Inc. (“Samsung-Petitioners”),1 hereby move to
`
`exclude portions of Exhibits 2015 (“Bystedt Declaration”) and 2016 (“Bäcklund
`
`Declaration”). Exhibits 2015 and 2016 were submitted by Neonode Smartphone
`
`LLC (“Patent Owner” or “Neonode”) in support of its Patent Owner Response
`
`(Paper 29). Patent Owner filed its Response on September 22, 2021, and Samsung-
`
`Petitioners timely served its objections to the evidence on September 29, 2021
`
`(Paper 30).2 Patent Owner did not serve supplemental evidence in response to
`
`Petitioner’s objections.
`
`
`
` 1
`
` Due to a confidentiality dispute regarding Exhibits 2015 and 2016 at the time of
`
`the objections regarding material not to be disclosed to Apple, the objections were
`
`filed only by Samsung-Petitioners.
`
`2 Objections were served within five (5) business days of evidence proffered with
`
`Patent Owner’s Response. See 37 C.F.R. § 42.64(b)(1).
`
`
`
`
`
`Samsung-Petitioners’ Motion to Exclude Evidence
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`The identified portions of Exhibits 2015 and 2016 should be excluded as
`
`improper expert opinions and/or inadmissible hearsay. See Federal Rules of
`
`Evidence3 (“FRE”) 702 and 801.
`
`II.
`
`Improper Expert Opinions
`A. Exhibit 2015 – Declaration of Per Bystedt
`Paragraphs 3 and 5 of the Bystedt Declaration constitute improper expert
`
`opinions and should be excluded. Patent Owner’s response relies on these
`
`statements at pages 14, 64, 66 (Paper 29), and Patent Owner’s Sur-reply relies on
`
`the statements at page 26 (Ex. 2028). Mr. Bystedt offered unsupported, improper
`
`opinions regarding the ultimate issues of novelty and conception. For example, ¶ 3
`
`of the Bystedt Declaration refers to the N1 device as “innovative” and “novel,”
`
`without providing any associated analysis. Likewise, ¶ 5 of the Bystedt declaration
`
`asserts that “[Neonode] conceived of the gesture-based user interface.” Ex. 2015 at
`
`¶ 5. Neither Mr. Bystedt nor Neonode produced any documents that allegedly
`
`supports or could have otherwise informed Mr. Bystedt’s opinion. Ex. 2015 at ¶ 3
`
`(“I saw numerous articles . . . on the Internet, in Swedish and international
`
`magazines, and in the business press”). Mr. Bystedt’s opinions rest entirely on his
`
`
`
` 3
`
` The Federal Rules of Evidence apply to these proceedings according to the
`
`provisions of 37 C.F.R. § 42.62(a).
`
`
`
`
`
`Samsung-Petitioners’ Motion to Exclude Evidence
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`own knowledge and understanding that are not supported in his declaration.
`
`Likewise, Mr. Bystedt asserts in ¶ 11 that Neonode “enjoyed substantial
`
`commercial success” without providing any analysis or corroborating evidence.
`
`Mr. Bystedt acknowledged that he did not review any documents or numbers
`
`related to these statements. See Ex. 1055 (Bystedt Deposition) at 18:2-7 (“I – I
`
`don’t remember exactly. But I would say, my guess, and it’s a guess . . ..”), 18:20-
`
`19:3 (“[A]s I recollect, again I haven’t checked the numbers. . .. I don’t have the
`
`books . . .. That’s my memory. But it – you know, it’s a memory.”). His conclusion
`
`as to Neonode’s alleged commercial success lacks any examination beyond his
`
`own unverifiable opinion.
`
`Mr. Bystedt does not possess any scientific, technical, or specialized
`
`knowledge that would support his conclusions. Patent Owner’s Response relies on
`
`these statements at page 63. Paper 29. Neonode did not identify or seek to qualify
`
`Mr. Bystedt as an expert in any field or specialty, and Mr. Bystedt has not claimed
`
`any specific knowledge or specialty. That alone, should preclude the opinions
`
`offered in these paragraphs. But Mr. Bystedt also confirmed that he did not
`
`perform any technical or financial analyses prior to submitting his declaration. Ex.
`
`1055 (Bystedt Deposition) at 10:20-11:1 (“Q: Did you perform any kind of
`
`financial analysis related to the declaration that you provided in this proceeding?
`
`A: No. I don’t – really understand that question either, what that should have been,
`
`
`
`
`
`Samsung-Petitioners’ Motion to Exclude Evidence
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`but no, I haven’t.”), 11:7-14 (“Q: Did you perform any type of technical analysis
`
`related to the patent at issue in this proceeding as it would relate to the statements
`
`made in your declaration? A: I – I don’t really understand. But I – in general, I
`
`made no specific preparations for the declaration.”). This complete failure of
`
`analysis prevents these opinions under FRE 702.
`
`Because Mr. Bystedt’s opinions as to the ultimate issues of novelty,
`
`conception, and commercial success are not based on any particular knowledge or
`
`expertise and lack sufficient analysis and facts in the record, ¶¶ 3, 5, and 11 of the
`
`Bystedt Declaration should be excluded.
`
`III. Hearsay
`A. Exhibit 2015 – Declaration of Per Bystedt
`The statements in ¶¶ 5 and 9 of the Bystedt Declaration constitute
`
`inadmissible hearsay offered to prove the truth of the matter being asserted not
`
`subject to any valid exception and should be excluded. Patent Owner’s Response
`
`relies on these statements at pages 14, 66. Paper 29.
`
`In ¶ 9, Mr. Bystedt’s declaration invokes uncorroborated, third-party
`
`statements to prove the matter at issue; the alleged existence of “Industry Respect”
`
`for the N1 product. Mr. Bystedt’s own words acknowledge his reliance on alleged
`
`statements made by another. Mr. Bystedt concludes that “Samsung’s management
`
`was extremely impressed by the Neonode N1,” and relies on statements by Mr.
`
`
`
`
`
`Samsung-Petitioners’ Motion to Exclude Evidence
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`Lee, i.e., that “[Mr. Lee] told us,” and what “Mr. Lee told Samsung’s negotiators—
`
`in our presence … .” Ex 2015, ¶ 9.4 Moreover, Mr. Bystedt injects his own
`
`meaning to the words, saying that “Samsung’s management was extremely
`
`impressed” and unilaterally suggests that Mr. Lee’s statements were “referring to
`
`the Neonode’s N1 gesture-based user interface”. Patent Owner Neonode
`
`compounds the prejudice by also relying on Mr. Bystedt and these third-party
`
`statements to prove the truth of the matter. Paper 29, at 66-67 (“Mr. Lee told
`
`Samsung’s negotiators—in Neonode’s presence—…”). Mr. Bystedt’s and Patent
`
`Owner’s reliance on these out-of-court statements and their further attempts to
`
`impute their own preconceptions into the same remove this evidence from any
`
`legitimate use.
`
`Mr. Bystedt’s declaration also acknowledges that his opinions as to the
`
`conception of the N1 interface and the zForce technology at ¶ 5 are based on third-
`
`party out of court statements made two years after the alleged conception. Ex. 2015
`
`at ¶ 4 (“I began meeting with [Thomas and Magnus] in early 2004”); id. at ¶ 5
`
`(“They told me that after they had conceived of the gesture-based user interface . . .
`
`they found that then-existing . . . touch screen technology [was insufficient]. So
`
`
`
` 4
`
` The full contents of the identified statements are not provided here due to a
`
`confidentiality dispute between the parties.
`
`
`
`
`
`Samsung-Petitioners’ Motion to Exclude Evidence
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`Magnus invented a new technology that they called zForce”). Neonode and Mr.
`
`Bystedt rely on these alleged third-party, out-of-court statements to prove the truth
`
`of the matter being asserted, that Neonode conceived of the N1 user interface. See
`
`Paper 29 at 13-14.
`
`B.
`Exhibit 2016 – Declaration of Marcus Bäcklund
`The statements in ¶¶ 4 and 12 of the Bäcklund Declaration constitute
`
`inadmissible hearsay offered to prove the truth of the matter being asserted, are not
`
`subject to any valid exception, and therefore should be excluded. Patent Owner’s
`
`response relies on these statements at pages 14, 66 (Paper 29), and Patent Owner’s
`
`Sur-reply (Ex. 2028) relies on these statements at page 26.
`
`Paragraph 12 of Mr. Bäcklund’s declaration relies on third party statements
`
`and his own supplemental presumptions to prove the matter of “Industry
`
`Skepticism.” Mr. Bäcklund acknowledges that he is relying on third-party
`
`statements. In ¶ 12, Mr. Bäcklund states “they told us that the touch screen might
`
`get greasy from user’s fingers performing gestures” and “they told us they thought
`
`that users were used to buttons to navigate mobile phones and would be hesitant to
`
`accept one without them.” Ex. 2016 at ¶ 12. Neither Mr. Bäcklund nor Patent
`
`Owner provides any corroboration for these alleged third-party statements. Mr.
`
`Bäcklund also attributes his own understanding to that of the third party in order to
`
`reach his ultimate conclusion, “skepticism.” Ex. 2016, at ¶ 12 (“they were
`
`
`
`
`
`Samsung-Petitioners’ Motion to Exclude Evidence
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`impressed” and “they were skeptical”). Likewise, Neonode relies on Mr. Bäcklund
`
`and the underlying impermissible hearsay to prove the same point. Paper 29 at 66.
`
`Paragraph 4 of Mr. Bäcklund’s declaration mirrors the defects of ¶ 5 of Mr.
`
`Bystedt’s declaration regarding improper use of hearsay to prove the matter of
`
`“conception.” Mr. Bäcklund states: “they told us how they had developed the user
`
`interface” and “they told me that Magnus invented a new optical touch screen
`
`technology called zForce.” Ex. 2016 at ¶ 4. During deposition, Mr. Bäcklund
`
`acknowledged that he did not have personal knowledge of these events and was
`
`relying on the statements of others. Ex. 1056 (Bäcklund Deposition Transcript),
`
`19:15-23 (“In Section 4, I described the initial meetings I had with them. And
`
`obviously I haven’t [sic] stand over their shoulder looking at them developing this.
`
`So at that point, I had to trust their words, that they had developed this, that they
`
`hadn’t steal [sic] another one’s product.”), 22:14-23 (“Yeah, I refer to what is
`
`written in the [declaration]. At this point, Magnus told me that he has invented this
`
`zForce technology.”) Likewise, Neonode relies on the same defective statements to
`
`support its arguments regarding conception and commercialization of the N1
`
`device. Paper 29 at 13-14.
`
`
`
`
`
`
`
`Samsung-Petitioners’ Motion to Exclude Evidence
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`
`
`IV. CONCLUSION
`For at least the foregoing reasons, the evidence proffered by Patent Owner as
`
`Exhibits 2015 and 2016 fail to comply with the Federal Rules of Evidence, and
`
`should therefore be excluded.
`
`Date: February 23, 2022
`
`
`
`
`Respectfully Submitted,
`/Tiffany C. Miller/
`Tiffany C. Miller, Reg. No. 52,032
`James M. Heintz, Reg. No. 41,828
`
`Attorneys for Samsung-Petitioners
`
`
`
`
`
`Samsung-Petitioners’ Motion to Exclude Evidence
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that service
`
`was made on the Patent Owner as detailed below:
`
`Date of Service:
`
`February 23, 2022
`
`Manner of Service:
`
`Electronic Mail
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`tmurphy@sunsteinlaw.com
`ahans@sunsteinlaw.com
`philipg@hbsslaw.com
`greers@hbsslaw.com
`markc@hbsslaw.com
`sunsteinip@sunsteinlaw.com
`
`Documents Served:
`
`Samsung-Petitioners’ Motion to Exclude Evidence
`
`Persons Served:
`
`Robert M. Asher, Bruce D. Sunstein, Timothy M.
`Murphy, Arne Hans, Phil J. Graves, Greer N.
`Shaw, Mark S. Carlson
`
`
`
`
`
`
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
