throbber
1
`
`
`
`
`
` UNITED STATES DISTRICT COURT
` WESTERN DISTRICT OF TEXAS
` WACO DIVISION
`NEONODE SMARTPHONE, LLC
`) Docket No. WA 20-CA-505 ADA
` )
`vs.
` ) Waco, Texas
` )
`APPLE, INC.
`) October 23, 2020
`__________________________________________________________
` UNITED STATES DISTRICT COURT
`
`
` WESTERN DISTRICT OF TEXAS
` WACO DIVISION
`NEONODE SMARTPHONE, LLC
`) Docket No. WA 20-CA-507 ADA
` )
`vs.
` ) Waco, Texas
` )
`SAMSUNG ELECTRONICS CO., )
`LTD., SAMSUNG ELECTRONICS )
`AMERICA, INC.
`) October 23, 2020
`
`
`
`
` TRANSCRIPT OF TELEPHONIC CONFERENCE
`BEFORE THE HONORABLE ALAN D. ALBRIGHT
`
`APPEARANCES:
`For the Plaintiff:
`
`For Apple, Inc.:
`
`Mr. Philip J. Graves
`Hagens, Berman, Sobol,
`Shapiro, LLP
`301 North Lake Avenue, Suite 920
`Pasadena, California 91101
`Mr. Craig D. Cherry
`Haley & Olson, P.C.
`100 North Ritchie Road, Suite 200
`Waco, Texas 76712
`
`Ms. Betty H. Chen
`Fish & Richardson, PC
`111 Congress Avenue, Suite 810
`Austin, Texas 78701
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 1
`
`

`

`2
`
`(Appearances Continued:)
`For Samsung Electronics: Mr. John M. Guaragna
`DLA Piper, LLP
`401 Congress Avenue, Suite 2500
`Austin, Texas 78701
`
`Court Reporter:
`
`
`Ms. Lily Iva Reznik, CRR, RMR
`501 West 5th Street, Suite 4153
`Austin, Texas 78701
`(512)391-8792
`
`Proceedings reported by computerized stenography,
`transcript produced by computer-aided transcription.
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 2
`
`

`

`3
`
`THE COURT: Good afternoon. It's Alan Albright.
`Ms. Miles, would you call the case, please.
`THE CLERK: Sure.
`Telephonic scheduling conference in Civil Action
`6:20-CV-505, styled, Neonode Smartphone, LLC vs. Apple,
`Incorporated; and Case No. 6:20-CV-507, styled, Neonode
`Smartphone, LLC vs. Samsung Electronics Company, Limited
`and Samsung Electronics America, Incorporated.
`THE COURT: Welcome, everyone.
`If I could hear announcements from counsel,
`please, starting with the plaintiff.
`MR. CHERRY: Your Honor, this is Craig Cherry
`with Haley & Olson on behalf of plaintiff, and Philip
`Graves of the Hagens Berman law firm. And Mr. Graves will
`be speaking on behalf on all points this afternoon, your
`Honor.
`
`THE COURT: Welcome. Thank you.
`MR. GRAVES: Good afternoon, your Honor.
`This is Philip Graves on behalf of plaintiffs.
`THE COURT: And for defendant?
`MS. CHEN: Good afternoon, your Honor --
`MR. GUARAGNA: John Guaragna --
`MS. CHEN: Hi, John.
`This is Betty Chen of Fish & Richardson on behalf
`of Apple.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:29:54
`
`13:30:00
`
`13:30:02
`
`13:30:03
`
`13:30:05
`
`13:30:10
`
`13:30:17
`
`13:30:20
`
`13:30:25
`
`13:30:26
`
`13:30:27
`
`13:30:31
`
`13:30:33
`
`13:30:35
`
`13:30:39
`
`13:30:43
`
`13:30:43
`
`13:30:49
`
`13:30:50
`
`13:30:53
`
`13:30:58
`
`13:30:59
`
`13:31:02
`
`13:31:03
`
`13:31:07
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 3
`
`

`

`4
`
`THE COURT: Okay. And are there any issues we
`need to take up?
`MR. GUARAGNA: Your Honor, John Guaragna, just in
`case I was cut off there, for Samsung Defendants.
`THE COURT: Okay.
`MR. GUARAGNA: At least from the defendants, your
`Honor, we do have a couple of issues we'd like to take up
`with respect to some pre-Markman items.
`THE COURT: Okay.
`MR. GUARAGNA: And speaking for Samsung, your
`Honor, there are a couple of areas of third-party
`discovery that we'd like leave to commence prior to the
`Markman hearing. And I'm going to address one of those
`issues, and I think Ms. Chen's going to address another
`one.
`
`With respect to the first issue, your Honor, we
`believe that there are material prior art references
`located with Sony, and we would like leave to commence
`that third-party discovery of Sony to identify and
`hopefully obtain the evidence with respect to those
`third-party products that we think are going to be
`important pieces of prior art in this case. We'd like to
`commence that discovery as soon as possible.
`We're hopeful but, unfortunately, we think there
`may be a need to seek some of the discovery from Sony
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:31:08
`
`13:31:10
`
`13:31:13
`
`13:31:15
`
`13:31:18
`
`13:31:23
`
`13:31:25
`
`13:31:27
`
`13:31:30
`
`13:31:33
`
`13:31:35
`
`13:31:40
`
`13:31:44
`
`13:31:47
`
`13:31:49
`
`13:31:50
`
`13:31:53
`
`13:32:00
`
`13:32:04
`
`13:32:10
`
`13:32:14
`
`13:32:18
`
`13:32:20
`
`13:32:24
`
`13:32:26
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 4
`
`

`

`5
`
`overseas. And as your Honor obviously has experience,
`that can take some time and will take likely even longer
`during the pandemic. So with your Honor's permission,
`we'd like to commence that discovery of Sony. Hopefully
`we won't need to go through the Hague and go overseas, but
`it looks like that is probably the case; but we'll avoid
`it if we can.
`But, in essence, we'd just like to get those
`documents, no deposition. Just simply documents and get
`that perhaps started now so we'll have it because it will
`matter in the litigation.
`THE COURT: Yeah. Let me tell you what I'm
`trying -- and, Mr. Guaragna, as part of my committee, this
`is an issue I think we're going to try and address on a
`more permanent basis because it's coming up a good bit,
`especially worse with the COVID situation and the
`inability to travel.
`So I am absolutely fine with you commencing
`anything that is going to make the case go more smoothly.
`If you are subpoenaing things for -- I'm not sure exactly
`what format you're using to try and obtain what it is
`you're trying to obtain from Sony, the only thing I would
`suggest that you do is, make sure that the plaintiffs are
`given a chance to -- if there's something they also need
`from Sony or anyone else you're going to be sending a
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:32:31
`
`13:32:36
`
`13:32:39
`
`13:32:43
`
`13:32:45
`
`13:32:47
`
`13:32:51
`
`13:32:53
`
`13:32:56
`
`13:32:59
`
`13:33:01
`
`13:33:03
`
`13:33:05
`
`13:33:09
`
`13:33:12
`
`13:33:15
`
`13:33:20
`
`13:33:22
`
`13:33:26
`
`13:33:32
`
`13:33:37
`
`13:33:41
`
`13:33:44
`
`13:33:52
`
`13:33:55
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 5
`
`

`

`6
`
`request to, that they be able to cross-subpoena -- or if
`they choose to. They can do whatever they want. But
`we've got a couple of cases recently where one side was
`concerned because the other side had subpoenaed some
`things, but not everything.
`So I'm actually fine for you to do that. Also,
`just at a more macro level that may or may not apply to
`what y'all are doing here, I think what I'm going to start
`doing is -- and encouraging, actually. And, of course,
`with lawyers of y'all's caliber, I probably don't need to
`encourage, that you're probably going to do it without
`that.
`
`But, you know, anything that you can do in terms
`of either documents, possible art, or inventors for sure
`that are foreign, I'm going to allow those efforts to take
`place immediately in terms of trying to get them arranged.
`But I don't think I'm going to allow the discovery, for
`example, the deposition to take place until, you know,
`after the Markman.
`But anything that a party wants to do to
`accelerate the process of getting discovery done once the
`Markman has taken place, I'm probably going to be okay
`with.
`
`MR. GUARAGNA: Thank you, your Honor.
`I think to your point about collaboratively
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:33:59
`
`13:34:03
`
`13:34:07
`
`13:34:10
`
`13:34:14
`
`13:34:15
`
`13:34:19
`
`13:34:24
`
`13:34:27
`
`13:34:31
`
`13:34:35
`
`13:34:37
`
`13:34:37
`
`13:34:41
`
`13:34:48
`
`13:34:53
`
`13:35:00
`
`13:35:04
`
`13:35:09
`
`13:35:10
`
`13:35:16
`
`13:35:19
`
`13:35:22
`
`13:35:25
`
`13:35:27
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 6
`
`

`

`7
`
`approaching this, I think the parties have already agreed
`to coordinate discovery in this case generally. And so,
`we would certainly welcome an opportunity to make it as
`easy as possible on Sony. And to the extent the plaintiff
`has any issues it intends to seek doing that in
`conjunction or doing that collaboratively, I think, is
`certainly fine with us and makes a lot of sense. So we
`appreciate that, your Honor.
`We will -- we do intend to issue subpoenas.
`Hopefully we can issue them just to the U.S. entity and
`obtain any information we need. If we don't, we will move
`forward with the overseas efforts. And we will hold off
`on any depositions until after the Markman hearing, as
`your Honor has indicated.
`THE COURT: Now, of course, if -- and that -- and
`by the way, that is sort of a generic concern. If you
`were to find out, for some reason, that you needed to take
`some -- actually take some kind of discovery because it
`might not still exist, you know, if there's a person that
`might no longer be with Sony, for example, or I guess
`worse situation. But if there's any need to take
`discovery because there's no -- it may not be available
`after the Markman, just, you know, try and work that out
`yourselves. But if you can't, certainly bring it to my
`attention, and on a micro level, I'm happy to deal with
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:35:33
`
`13:35:35
`
`13:35:38
`
`13:35:42
`
`13:35:44
`
`13:35:48
`
`13:35:51
`
`13:35:53
`
`13:35:56
`
`13:35:59
`
`13:36:05
`
`13:36:07
`
`13:36:10
`
`13:36:13
`
`13:36:13
`
`13:36:16
`
`13:36:21
`
`13:36:26
`
`13:36:31
`
`13:36:34
`
`13:36:41
`
`13:36:42
`
`13:36:44
`
`13:36:48
`
`13:36:50
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 7
`
`

`

`8
`
`any issues you all have of whether or not to allow
`discovery. But I will probably always err on the side of
`making sure that the discovery is able to be taken.
`But for the generic discovery that, Mr. Guaragna,
`you're talking about, hopefully my plan works. If you
`find, by the way, that there is some problem that's kind
`of baked in that I'm just missing, please let me know
`because, as I think everyone on the call knows, my goal is
`to make this as user or lawyer-friendly as possible, and
`if something I'm not allowing you to do or allowing you to
`do, or we need to do it some other way that's more
`efficient for you all, that is my ultimate goal.
`So that was Mr. Guaragna. Does Ms. Chen need to
`take up anything for her client?
`MS. CHEN: Yes. Thank you, your Honor.
`So I think here, we have the exact situation that
`you're talking about where it is a unique situation, and
`we would ask to take discovery and depositions before
`Markman for certain foreign entities and the foreign
`inventor.
`And so, if I can give you some of the facts so
`you understand the situation here, we have an entity
`called Neonode, Inc., and that entity was original
`assignee of the patents when they were issued. Neonode,
`Inc. is located in Sweden, and it still has profit-sharing
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:36:54
`
`13:36:57
`
`13:37:01
`
`13:37:04
`
`13:37:08
`
`13:37:12
`
`13:37:17
`
`13:37:22
`
`13:37:26
`
`13:37:32
`
`13:37:37
`
`13:37:39
`
`13:37:43
`
`13:37:51
`
`13:37:53
`
`13:37:54
`
`13:37:59
`
`13:38:03
`
`13:38:07
`
`13:38:13
`
`13:38:13
`
`13:38:15
`
`13:38:20
`
`13:38:25
`
`13:38:29
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 8
`
`

`

`9
`
`rights with monetization of these patents. So Neonode has
`at least six foreign subsidiaries and various joint
`ventures. They range from places in Japan and South
`Korea, Taiwan and Sweden.
`And from looking at the public documents so, for
`example, Neonode, Inc.'s 10-K, it looks like some of these
`entities have rights to develop and license touchscreen
`technologies. But to be honest, it's just a hodgepodge of
`foreign entities, and we can't figure out who does what
`from just looking at the public documents.
`And so, what we had is this multiple layer of
`entity -- foreign entity discovery. We have to first
`conduct the discovery to figure out which entities are --
`have which rights. And then, we have the second layer of
`foreign discovery to obtain licensing assignment and
`conception, valuation documents. And so, if we were to
`start in April on the depositions, I just don't think we
`have enough time within a seven-month period of discovery.
`So for the entities, we would ask to take the
`depositions and collect documents in advance. So
`separately, we also have --
`THE COURT: Let me --
`MS. CHEN: -- the coinventor -- okay.
`THE COURT: Let me hear if there's any objection
`to that from the plaintiff.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:38:33
`
`13:38:37
`
`13:38:42
`
`13:38:45
`
`13:38:47
`
`13:38:50
`
`13:38:54
`
`13:38:58
`
`13:39:01
`
`13:39:04
`
`13:39:05
`
`13:39:11
`
`13:39:14
`
`13:39:18
`
`13:39:21
`
`13:39:29
`
`13:39:31
`
`13:39:36
`
`13:39:40
`
`13:39:43
`
`13:39:49
`
`13:39:51
`
`13:39:53
`
`13:39:54
`
`13:39:56
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 9
`
`

`

`10
`
`MR. GRAVES: Yes. Thank you, your Honor.
`This is Phil Graves.
`We do object for several reasons. First, it's
`not accurate to suggest that Neonode, Inc. is a foreign
`entity. It's actually a Delaware corporation with a place
`of business in San Jose, California. Second, you know,
`the ownership -- it's a little unclear what bearing any
`information concerning ownership or licensing would have
`on any issues that need to be addressed prior to the
`Markman.
`We're fine with Apple commencing the process of
`obtaining foreign discovery against, you know, whatever
`foreign Neonode-affiliated entities they think may have
`discoverable information. But we just don't think it's
`efficient to conduct depositions and undertake, you know,
`significant intensive discovery on these issues prior to
`the Markman.
`So we do object to this request, but, you know,
`we're fine commencing the process as Samsung has
`requested, right, but we just don't think it's efficient.
`And we don't think it's going to yield anything useful for
`Apple to be, you know, running all over the world, taking
`depositions of a bunch of entities that really are
`unlikely to have any material information or evidence in
`any event.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:40:02
`
`13:40:03
`
`13:40:05
`
`13:40:09
`
`13:40:15
`
`13:40:19
`
`13:40:25
`
`13:40:30
`
`13:40:33
`
`13:40:37
`
`13:40:38
`
`13:40:43
`
`13:40:45
`
`13:40:51
`
`13:40:54
`
`13:40:59
`
`13:41:04
`
`13:41:05
`
`13:41:08
`
`13:41:14
`
`13:41:17
`
`13:41:21
`
`13:41:23
`
`13:41:26
`
`13:41:31
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 10
`
`

`

`11
`
`THE COURT: Well, let me ask this. It sounds to
`me like maybe the place to jump off on this is to allow
`Apple to take a 30(b)(6) deposition of the United States
`entity and we can -- and that person should be prepared to
`tell us whether or not the information that they're
`seeking with regard to licensing, and the other
`assignments, and the other issues is available from
`someone in the United States or whether or not everyone
`will have to go to a foreign country to do that.
`And then, it seems to me, we can make a more
`informed decision at that point, the extent of dis --
`whether or not we actually need to do discovery right now
`or whether or not we just need to allow -- I need to allow
`the defendant to lay the predicate, as it were, to get the
`discovery done once the Markman takes place.
`So, Ms. Chen, is there a downside to that I'm
`missing?
`MS. CHEN: I don't see a downside. That works
`
`for us.
`
`THE COURT: What is the relationship -- and I'm
`not asking a legal relationship. Just if I were to allow
`the deposition of that entity to take place, does the
`plaintiff's counsel have the ability to coordinate that
`kind of deposition or does -- or are they a pure third
`party that -- what's the situation there?
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:41:31
`
`13:41:37
`
`13:41:45
`
`13:41:52
`
`13:41:57
`
`13:42:03
`
`13:42:05
`
`13:42:09
`
`13:42:13
`
`13:42:19
`
`13:42:23
`
`13:42:26
`
`13:42:29
`
`13:42:33
`
`13:42:39
`
`13:42:41
`
`13:42:47
`
`13:42:48
`
`13:42:50
`
`13:43:00
`
`13:43:02
`
`13:43:05
`
`13:43:07
`
`13:43:12
`
`13:43:17
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 11
`
`

`

`12
`
`MR. GRAVES: Yes, your Honor.
`Neonode, Inc. is a third party. We are not
`representing -- we are not counsel for Neonode, Inc.
`THE COURT: Okay. Well, in that case, I'll allow
`-- I will allow that discovery to take place. I assume
`that they will cooperate with what I'm asking to be done;
`if not and if Apple needs to come back to the Court for
`some kind of order, I'm happy to do that, as well. Just
`let me know.
`So does that resolve that issue as far as
`everyone's concerned?
`MS. CHEN: From Apple's side, yes, your Honor.
`MR. GRAVES: Yes, your Honor.
`THE COURT: Okay. And, Ms. Chen, I interrupted
`you earlier. What is the next issue?
`MS. CHEN: Sure.
`So it's similar in that the sole inventor of the
`patent, someone named Magnus Goertz, is located in Sweden.
`THE COURT: Okay.
`MS. CHEN: And Neonode in this case has claimed a
`priority date of May 25th, 2000. The first patent in the
`case was filed on December 10th, 2002. And as far as
`we've seen so far, Neonode hasn't produced any conception
`or reduction to practice documents dating back to the May
`25th, 2000 date. We've asked Neonode to confirm that it's
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:43:19
`
`13:43:22
`
`13:43:25
`
`13:43:29
`
`13:43:33
`
`13:43:40
`
`13:43:45
`
`13:43:49
`
`13:43:51
`
`13:43:52
`
`13:43:55
`
`13:43:58
`
`13:44:03
`
`13:44:03
`
`13:44:05
`
`13:44:09
`
`13:44:10
`
`13:44:14
`
`13:44:20
`
`13:44:21
`
`13:44:25
`
`13:44:29
`
`13:44:34
`
`13:44:38
`
`13:44:42
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 12
`
`

`

`13
`
`produced all conception, reduction to practice documents,
`and it says it has, but Mr. Goertz might have more.
`So here, you know, again, we feel like we're put
`in a distinct disadvantage by not being able to conduct
`discovery of Mr. Goertz before the Markman, and we'd ask
`to be able to take a deposition of him and be able to
`collect documents because we need to prepare invalidity
`contentions and understand this purported priority date
`that goes back to 2000.
`THE COURT: Well, I'm not sure if the plaintiffs
`have given you that date and they've acted in good faith,
`in other words, if you have a lawyer on their side who is
`-- who has represented to you what that date is, it seems
`to me that you do your invalidity contentions based on
`that, and if it turns out that in -- there wasn't a
`good-faith basis for that to be made, then you can raise
`that with me again.
`Here's the only reason I say that is basically,
`you know, I think you should get -- you're going to get
`one opportunity to speak through deposition to the
`inventor. And so, you know, if you -- if I were to allow
`you to take the deposition of the inventor now, that would
`be your -- you know, your one opportunity. And that may
`be fine with you, and if it is -- and it sounds to me like
`you'll probably be doing it by Zoom, then I'm open to
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:44:47
`
`13:44:50
`
`13:44:55
`
`13:44:59
`
`13:45:04
`
`13:45:08
`
`13:45:12
`
`13:45:16
`
`13:45:20
`
`13:45:22
`
`13:45:26
`
`13:45:29
`
`13:45:33
`
`13:45:38
`
`13:45:40
`
`13:45:44
`
`13:45:47
`
`13:45:48
`
`13:45:54
`
`13:45:57
`
`13:46:02
`
`13:46:06
`
`13:46:10
`
`13:46:13
`
`13:46:19
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 13
`
`

`

`14
`
`hearing that, as well.
`But with the understanding that this would be the
`only deposition that would be allowed of the inventor,
`what would -- what would your preference be?
`MS. CHEN: Well, with that understanding, that
`what I would ask for is for the May 25th, 2000 date to be
`-- to be stricken, quite honestly, because we don't have
`any of the documents, any documents at all from the
`plaintiff to support that date.
`And they've said that they've provided us with
`all documents, but I believe the document that goes back
`the farthest is May 2001. And so, without any documents
`that support that early date, then it's really hard for us
`to be able to prepare our case and our defense with a date
`that has no support.
`THE COURT: Well, how about -- how about this.
`My recollection was that -- my recollection is that it was
`a legitimate 30(b)(6) topic to -- a legitimate 30(b)(6)
`topic for someone to ask for that they -- the plaintiff
`produce someone who would testify and bind the company
`with respect to the date of conception. What if I allowed
`you to have a deposition of a 30(b)(6) witness -- I can't
`imagine it would take longer than an hour -- of the
`plaintiff who you would then have a 30(b)(6)
`representative who would be telling you what they believe
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:46:22
`
`13:46:24
`
`13:46:30
`
`13:46:32
`
`13:46:37
`
`13:46:38
`
`13:46:48
`
`13:46:50
`
`13:46:52
`
`13:46:55
`
`13:46:57
`
`13:47:00
`
`13:47:05
`
`13:47:10
`
`13:47:13
`
`13:47:16
`
`13:47:21
`
`13:47:28
`
`13:47:37
`
`13:47:41
`
`13:47:44
`
`13:47:48
`
`13:47:53
`
`13:47:56
`
`13:48:00
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 14
`
`

`

`15
`
`the date of conception to be, and we would go from there.
`MS. CHEN: That works for us. Thank you, your
`
`Honor.
`
`MR. GRAVES: Your Honor, might I respond?
`THE COURT: Yes, sir.
`MR. GRAVES: So the -- so, first of all, the date
`that we've provided in our disclosure of preliminary
`infringement contentions and priority date does have a
`good-faith basis. We have informed defense counsel that
`the plaintiff here, Neonode Smartphone, has produced all
`materials in its possession, custody or control that
`evidence conception or reduction to practice. That has
`been done.
`But Neonode Smartphone does not control the
`inventor, Mr. Goertz. So we've also informed defense
`counsel, Mr. Goertz may have additional materials that
`bear on conception or reduction to practice and obviously
`has information along those lines. But again, since
`Neonode Smartphone does not control Mr. Goertz and can't
`necessarily obtain information from him, complete or
`otherwise, that would enable it to respond to an inquiry
`at a 30(b)(6) deposition, you know, it doesn't appear to
`me that that would be, you know, the most effective way to
`get at these issues. I mean, we're --
`THE COURT: Well, don't you have -- you just said
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:48:03
`
`13:48:07
`
`13:48:09
`
`13:48:09
`
`13:48:12
`
`13:48:13
`
`13:48:18
`
`13:48:22
`
`13:48:25
`
`13:48:31
`
`13:48:36
`
`13:48:40
`
`13:48:45
`
`13:48:45
`
`13:48:52
`
`13:48:56
`
`13:49:03
`
`13:49:06
`
`13:49:11
`
`13:49:16
`
`13:49:22
`
`13:49:25
`
`13:49:30
`
`13:49:35
`
`13:49:39
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 15
`
`

`

`16
`
`you had provided to defendants a good-faith basis. And my
`sense of what you would be saying, if I were in your
`shoes, is that we've given them the best date we have, but
`it could very well be that they get -- that when the
`inventor talks, it could be an even earlier date because
`he might be able to say -- to have additional information.
`Is that what you're saying?
`MR. GRAVES: That's certainly one aspect of what
`I'm saying. Yes, your Honor.
`THE COURT: Well, in that case, you know, it
`seems to me that we probably ought to allow the defendant
`to take a deposition, if they could get one arranged, with
`the inventor to find out what he's going to say about the
`invention date. Because if the only thing the plaintiff
`is able to do is give a good-faith effort and I'm forcing
`the defendants to give invalidity contentions, it seems to
`me that they ought to have the benefit of that information
`from the inventor.
`And by the way, I understand what you're saying
`about the 30(b)(6) and I wouldn't want someone -- I
`wouldn't want to force you to have a 30(b)(6) from a
`witness who, you know, really would feel uncomfortable
`because he doesn't have any better information than what
`y'all have.
`So what is your proposal for a solution to this
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:49:43
`
`13:49:48
`
`13:49:51
`
`13:49:56
`
`13:50:01
`
`13:50:04
`
`13:50:07
`
`13:50:09
`
`13:50:13
`
`13:50:15
`
`13:50:21
`
`13:50:25
`
`13:50:28
`
`13:50:33
`
`13:50:36
`
`13:50:42
`
`13:50:48
`
`13:50:49
`
`13:50:51
`
`13:50:53
`
`13:50:57
`
`13:50:59
`
`13:51:03
`
`13:51:06
`
`13:51:06
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 16
`
`

`

`17
`
`before I tell you what mine is?
`MR. GRAVES: Well, your Honor, so -- you know,
`it's plaintiff's perspective that, you know, that
`testimony regarding the conception and reduction to
`practice doesn't really bear on the issues to be addressed
`at claim construction. The claim construction should just
`go forward, construing the claims based on the intrinsic
`and whatever extrinsic evidence bears on those issues.
`But with respect to, you know, the issue of a
`30(b)(6) versus a declaration or a deposition, rather, of
`Mr. Goertz, you know, it would be our position that a
`30(b)(6) would be fundamentally unfair to the plaintiffs
`due to constraints on the plaintiff's ability to obtain
`complete information regarding the evidence --
`THE COURT: Well, let me interrupt you because
`maybe I wasn't clear.
`I'm not going to make -- I get that. I'm not
`going to make you do a 30(b)(6). So I'm trying to figure
`out -- I'm trying to figure out what an alternate method
`is because I do think that -- I do think that the
`defendants ought to have a reliable date. And if you've
`given them a date, but you can't provide them in good
`faith -- I'm going to assume it is. But if you can't
`provide to them any information -- unless you have and you
`could tell me if you have -- that backs that date up, then
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:51:10
`
`13:51:16
`
`13:51:19
`
`13:51:25
`
`13:51:27
`
`13:51:30
`
`13:51:33
`
`13:51:37
`
`13:51:42
`
`13:51:45
`
`13:51:48
`
`13:51:51
`
`13:51:57
`
`13:52:01
`
`13:52:04
`
`13:52:06
`
`13:52:07
`
`13:52:10
`
`13:52:12
`
`13:52:15
`
`13:52:23
`
`13:52:29
`
`13:52:34
`
`13:52:36
`
`13:52:42
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 17
`
`

`

`18
`
`it seems to me that the person -- only person that really
`has that information is the inventor, and we might need to
`have him -- if he will make himself available, we might
`need to have him deposed.
`MR. GRAVES: And, your Honor, we or plaintiff
`would not oppose, you know, efforts to obtain a deposition
`of Mr. Goertz, of course, as long as, you know, all
`parties are provided an opportunity to ask some questions
`at that deposition.
`THE COURT: Well, I think that's -- you know,
`maybe I've been off the bench too long, but that's my
`recollection of how these things work. So -- unless they
`changed the rules and I missed it. So yes. If we're
`going to go the deposition route, yes, everyone would get
`to ask questions.
`So it sounds to me like we have a suggestion from
`the defendant and no opposition from the plaintiff. And
`so, that being said, I'm not sure exactly, Ms. Chen, how
`you go about arranging this deposition of the inventor,
`but I will tell you that, as far as I'm concerned, you are
`free to do so.
`MS. CHEN: Thank you, your Honor.
`One clarification. So with that, are we still
`limited to just the one deposition of the inventor?
`THE COURT: You know, number one, I'm not sure
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:52:46
`
`13:52:50
`
`13:52:53
`
`13:52:57
`
`13:53:00
`
`13:53:02
`
`13:53:08
`
`13:53:12
`
`13:53:19
`
`13:53:20
`
`13:53:23
`
`13:53:26
`
`13:53:31
`
`13:53:35
`
`13:53:40
`
`13:53:44
`
`13:53:48
`
`13:53:52
`
`13:53:56
`
`13:54:01
`
`13:54:04
`
`13:54:06
`
`13:54:07
`
`13:54:12
`
`13:54:16
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 18
`
`

`

`19
`
`that you'll be able to persuade this guy to give you one,
`to begin with. And so, what I would suggest you do is
`make this a full deposition of him, since he's -- unless
`-- let me start over.
`If you could get in agreement that you think you
`could trust and rely on that he would make himself
`available again -- I'm assuming this will be by Zoom. If
`you can get an agreement from him that you're sanguine
`with that he would appear again, then I would limit the
`deposition to just the issues of -- you're worried about
`with the date of conception.
`If you have a legitimate concern that he might
`not voluntarily appear again, then you are free to ask him
`whatever questions you can ask, and then, we'll just deal
`-- I will not say right now that I'm going to prohibit you
`from taking the deposition. All I'm saying is, you know,
`you may or may not -- you know, he may or may not agree to
`do it. But I would allow in this situation another
`deposition.
`MS. CHEN: Thank you, your Honor.
`THE COURT: Any other issues we need to take up?
`MS. CHEN: Yes, your Honor. Sorry. If I could
`indulge you with one more issue.
`So --
`THE COURT: Okay.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`13:54:18
`
`13:54:21
`
`13:54:29
`
`13:54:34
`
`13:54:35
`
`13:54:39
`
`13:54:43
`
`13:54:46
`
`13:54:50
`
`13:54:54
`
`13:55:00
`
`13:55:03
`
`13:55:08
`
`13:55:12
`
`13:55:15
`
`13:55:18
`
`13:55:24
`
`13:55:26
`
`13:55:28
`
`13:55:29
`
`13:55:33
`
`13:55:37
`
`13:55:38
`
`13:55:41
`
`13:55:43
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2006 - Page 19
`
`

`

`20
`
`MS. CHEN: -- the issue is this. So these
`patents in the suit are user interface patents. So, for
`example, one of the patents, the 879 patent, Neonode has
`accused glide or swipe typing, and the Apple iPhone, the
`feature's called QuickPath. And what happens is when you
`open up the keyboard, you can create words by moving your
`finger across the keyboard without ever lifting your
`finger up.
`So that's a feature that Apple developed and
`created. It's native to the phones when you buy them.
`Neonode has accused and allegedly charted this. But what
`Neonode has also done is it's accused ten apps that are
`entirely created by third parties, and it hasn't charted a
`single one of them.
`So all it's done is, it's included one screen
`shot for one app keyboard, and that's for one single
`limitation; and then, it just concludes that the program
`code for all third parties' s

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket