Case 6:20-cv-00505-ADA Document 43 Filed 02/09/21 Page 1 of 6
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`NEONODE SMARTPHONE LLC,
`
`
`
`
`
`APPLE INC.,
`
`
`v.
`
`
`
`
`
`
`
`
`Plaintiff,
`
`Defendant.
`
`Civil Action No. 6:20-cv-00505-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`PLAINTIFF NEONODE SMARTPHONE LLC’S MOTION FOR ISSUANCE OF
`LETTER OF REQUEST TO EXAMINE PERSONS, INSPECT DOCUMENTS AND
`INSPECT PROPERTY PURSUANT TO THE HAGUE CONVENTION ON THE
`TAKING OF EVIDENCE ABROAD IN CIVIL OR COMMERCIAL MATTERS
`
`Plaintiff Neonode Smartphone LLC (“Neonode”) hereby moves for issuance of a Letter of
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`Request for International Judicial Assistance (“Letter of Request”) to compel the attendance at
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`deposition of, and production of documents and physical evidence by, two witnesses residing in
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`Sweden: Magnus Goertz, the inventor named on the two patents in suit, and Björn Thomas
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`Eriksson (“Thomas Eriksson”), the co-founder (with Mr. Goertz) of the Swedish company that
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`developed and commercialized the technology claimed in the patents.
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`Neonode requests issuance of the Letter of Request pursuant to Rule 28(b) of the Federal
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`Rules of Civil Procedure, 28 U.S.C. § 1781, and the Hague Convention of 18 March 1970 on the
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`Taking of Evidence Abroad in Civil or Commercial Matters, T.I.A.S. 7444, 23 U.S.T. 2555,
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`reprinted in 28 U.S.C. § 1781 (“Hague Evidence Convention”), which is in force between the
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`United States and Sweden. A proposed Letter of Request is attached hereto as Exhibit A, following
`
`the model set out in the Hague Evidence Convention.
`
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 1
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`

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`Case 6:20-cv-00505-ADA Document 43 Filed 02/09/21 Page 2 of 6
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`MEMORANDUM OF POINTS AND AUTHORITIES
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`Neonode brings the present application because it believes that Magnus Goertz and
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`Thomas Eriksson possess information relevant to this litigation involving both Apple and
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`Samsung.1 Mr. Goertz is the inventor of the patents at issue in this litigation – U.S. Patent Nos.
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`8,095,879 (“the ‘879 Patent”) and 8,812,993 (“the ‘993 Patent;” collectively, “the Patents in Suit”).
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`Mr. Goertz co-founded, with Mr. Eriksson, a company in Sweden in 2000, which was later
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`renamed Neonode AB, to develop and commercialize a mobile phone that would integrate an
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`innovative gestural user interface with touch screen technology. Messrs. Goertz and Eriksson
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`referred to this user interface as the “Neno” technology, and it is the subject of the Patents in Suit.
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`Mr. Eriksson co-founded this company with Mr. Goertz, worked with him to commercialize the
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`technology, and presented a prototype of what later became the Neonode N1 mobile phone at a
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`trade show in Germany in March 2002 – evidence that Mr. Goertz had conceived of and had
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`diligently worked to reduce the patented technology to practice long before he filed the application
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`to which the Patents in Suit claim priority, on December 10, 2002.
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`This evidence is relevant to the validity of the Patents in Suit. Apple alleges in its Answer
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`that the Patents in Suit are invalid for failure to comply with the requirements of, e.g., 35 U.S.C.
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`§§ 102 and 103. (Dkt. # 14, at 33) In addition, Apple and Samsung have petitioned the Patent
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`Trial and Appeal Board (“PTAB”) for inter parties review of the asserted claims of the Patents in
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`Suit, alleging that they are obvious in light of a variety of references, including references claiming
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`priority to 2001 and 2002. Neonode has reason to believe that Mr. Goertz conceived of the
`
`
`1 The Court has coordinated this action, Case No. 6:20-cv-00505, with Neonode Smartphone LLC’s action alleging
`infringement of the Patents in Suit by Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc., Case
`No. 6:20-cv-00507. Accordingly, Neonode seeks the testimony and documents requested pursuant to the attached
`Letter of Request for use in both of the coordinated actions.
`
`
`
`2
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`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 2
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`

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`Case 6:20-cv-00505-ADA Document 43 Filed 02/09/21 Page 3 of 6
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`inventions claimed in his patents by no later than the year 2000, and diligently worked to reduce
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`his inventions to practice thereafter, which would entitle the Patents in Suit to priority over at least
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`two of the references relied on by defendants in their IPR petitions. E.g., ATI Technologies ULC
`
`v. Iancu, 920 F.3d 1362, 1369-75 (Fed. Cir. 2019). Accordingly, evidence such as the testimony
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`of Messrs. Goertz and Eriksson on the topics identified in Attachment A to the Letter of Request,
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`and documents and physical evidence (i.e., prototypes of the Neonode mobile phone that were
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`demonstrated at marketing events prior to the priority date of the Patents in Suit) concerning the
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`development of the user interface of the Neonode mobile phone and their work on commercializing
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`the phone as specified in Attachment B to the Letter of Request, is relevant to the validity of the
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`Patents in Suit.
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`In addition, Neonode believes that Mr. Goertz and Mr. Eriksson possess knowledge
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`pertinent to secondary considerations of nonobviousness, such as the commercial success of the
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`Neonode N1, N1m and N2 mobile phones that incorporated the patented Neno user interface, and
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`industry praise for the patented Neno user interface. Moreover, Mr. Goertz and Mr, Eriksson
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`possess knowledge concerning a (now expired) license agreement that Neonode Sweden AB
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`entered into with Samsung Electronics Co., Ltd., on or about July 13, 2005, and that Mr. Goertz
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`signed on behalf of Neonode Sweden AB, pursuant to which Samsung was licensed under the
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`patent application that later matured into the ‘879 Patent and to which the ‘993 Patent claims
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`priority. (Case No. 6:20-cv-00507, Dkt. #1, ¶ 17) Their knowledge concerning their discussions
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`and negotiation with Samsung concerning this license of the application to which the Patents in
`
`Suit claim priority is relevant to, e.g., the value of a reasonable royalty for infringement of the
`
`patents.
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`
`
`3
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`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 3
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`

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`Case 6:20-cv-00505-ADA Document 43 Filed 02/09/21 Page 4 of 6
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`Moreover, Mr. Eriksson was involved in discussions with Samsung and its counsel over
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`the course of several years concerning the Neno user interface, the technology for which was
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`asserted by Samsung against Apple’s “swipe to unlock” patent in the Apple v. Samsung litigation.
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`(Case No. 6:20-cv-00507, Dkt. #1, ¶¶ 18, 25-26) Among other things, Mr. Eriksson signed at least
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`one affidavit and one “statement” concerning the Neno user interface technology at the request of
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`Samsung in that litigation. Mr. Eriksson’s knowledge concerning his communications with
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`Samsung and its counsel are relevant to Samsung’s knowledge of the Patents in Suit, and therefore
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`to Samsung’s potential liability for indirect infringement as well as willfulness.
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`Since the requested discovery is pertinent to the priority dates of the Patents in Suit, it is
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`pertinent to the issues to be addressed in the next few months in two Petitions for Inter Parties
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`Review, one against each of the Patents in Suit, recently filed jointly by Apple and Samsung.
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`Sweden has filed a declaration under the Hague Evidence Convention stating that “Letters of
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`Request issued for the purpose of obtaining pre-trial discovery of documents as known in common
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`law countries will not be executed,” and has clarified that such document requests include any that
`
`seek
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`broad
`
`categorical
`
`discovery
`
`of
`
`the
`
`type
`
`common
`
`in U.S.
`
`litigation.
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`https://www.hcch.net/en/instruments/conventions/status-
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`table/notifications/?csid=560&disp=resdn. Accordingly, it may be necessary to serially pursue
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`multiple Letters of Request, identifying particular documents as they become known through
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`deposition testimony. Given the likely need for multiple round trips and the importance of this
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`evidence to the IPRs filed against the Patents in Suit, Neonode requests that the Court permit the
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`requested discovery to go forward at this time.
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`Although the Court has vacated all non-venue deadlines in this action pending the
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`resolution of Apple’s motion to transfer this action to the Northern District of California, (Dkt.
`
`
`
`4
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`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 4
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`

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`Case 6:20-cv-00505-ADA Document 43 Filed 02/09/21 Page 5 of 6
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`#40) there is no reason to delay taking this discovery. The Court’s OGP – Patent Case, v. 3.2,
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`provides that “the Court will permit limited discovery by agreement of the parties, or upon request,
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`where exceptional circumstances warrant. For example, if discovery outside the United States is
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`contemplated, the Court will be inclined to allow such discovery to commence before the Markman
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`hearing.” This is exactly such discovery.
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`Accordingly, the Court should grant Neonode’s motion and issue the attached Letter of
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`Request pursuant to the Hague Convention. In the event the Court grants the instant application,
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`Neonode requests that the Court execute the Letter of Request with the Court’s signature and seal
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`and provide an original of the executed Letter of Request to Neonode’s undersigned counsel for
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`forwarding to the appropriate authority in the Netherlands. Neonode will then transmit the
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`executed Letter of Request to the Swedish authority for execution.
`
`DATED: February 9, 2021
`
`
`
`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) 776-3336
`Facsimile: (254) 776-6823
`
`
`Respectfully submitted,
`
`By: /s/ Philip Graves
`
`
`
`
`
`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
`
`
`Counsel for Plaintiff Neonode Smartphone
`LLC
`
`
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`5
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`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 5
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`Case 6:20-cv-00505-ADA Document 43 Filed 02/09/21 Page 6 of 6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 9th day of February 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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`
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`
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`/s/ Philip Graves
` Philip Graves
`
`
`
`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
`
`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
`
`Attorneys for Defendant Apple Inc.
`
`
`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
`
`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
`
`6
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`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 6
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`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 Page 1 of 19
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`
`
`EXHIBIT A
`
`
`
`
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`
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`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 7
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`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 Page 2 of 19
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`NEONODE SMARTPHONE LLC,
`
`
`
`
`
`APPLE INC.,
`
`
`v.
`
`
`
`
`
`
`
`
`Plaintiff,
`
`Defendant.
`
`Civil Action No. 6:20-cv-00505-ADA
`
`JURY TRIAL DEMANDED
`
`TO THE APPROPRIATE AUTHORITY IN SWEDEN:
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 8
`
`

`

`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 Page 3 of 19
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`
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`The United States District Court for the Western District of Texas presents its
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`compliments to the Ministry of Justice and has the honor of requesting its assistance in obtaining
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`evidence for use at trial in a civil proceeding now pending before this court in the above-
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`captioned matter.
`
`
`
`The Court respectfully requests the assistance described herein as necessary in the
`
`interests of justice. The assistance that is requested is that the Ministry of Justice, Division for
`
`Criminal and International Judicial Cooperation, compel the testimony of and production of
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`documents and physical evidence by the persons named below. Based on the Plaintiff’s
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`allegations and Defendant’s responses, the evidence and information provided to this Court, and
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`the information set forth in Sections 7 and 8 below, this Court finds there are sufficient grounds
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`to obtain testimony and evidence sought through this Letter of Request, that is highly relevant to
`
`the issues in dispute.
`
`1.
`
`Sender
`
`2.
`
`Central Authority of the
`Requested State
`
`3.
`
`Persons to whom the
`executed request is to be
`returned
`
`
`Office of the Clerk
`United States District Court for the Western District of
`Texas, Waco Division
`800 Franklin Avenue, Room 301
`Waco, Texas 76701
`United States of America
`Phone: (254) 750-1510
`Division for Criminal Cases and International Judicial
`Co-operation
`Ministry of Justice
`SE-103 33 Stockholm, Sweden
`Telephone: +46 8 405 45 00
`Facsimile: +46 8 405 46 76
`ju.birs@gov.se
`Philip J. Graves (CA State Bar No. 153441)
`HAGENS BERMAN SOBOL SHAPIRO LLP
`301 North Lake Avenue, Suite 920
`Pasadena, CA 91101
`Telephone: (213) 330-7147
`Facsimile: (213) 330-7152
`Email: philipg@hbsslaw.com
`
`
`
`
`2
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`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 9
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`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 Page 4 of 19
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`4.
`
`Date by which the
`requesting authority
`requires receipt of the
`response to the Letter of
`Request:
`
`On Behalf Of:
`
`Office of the Clerk
`United States District Court for the Western District of
`Texas, Waco Division
`800 Franklin Avenue, Room 301
`Waco, Texas 76701
`United States of America
`Phone: (254) 750-1510
`Plaintiff requests that the requested materials be
`produced and the testimony be provided by April 30,
`2021, because the materials and testimony are relevant
`to an expedited proceeding that the defendants have
`filed in the United States Patent and Trademark Office
`seeking cancellation of certain claims of the Patents in
`Suit (defined below).
`In conformity with Article 3 of the Convention, the undersigned applicant, the United States
`District Court for the Western District of Texas, respectfully submits the following request:
`5.
`a. Requesting judicial
`United States District Court for the Western District of
`authority (article 3, a)
`Texas, Waco Division
`800 Franklin Avenue, Room 301
`Waco, Texas 76701
`United States of America
`Phone: (254) 750-1510
`Division for Criminal Cases and International Judicial
`Co-operation
`Ministry of Justice
`SE-103 33 Stockholm, Sweden
`Telephone: +46 8 405 45 00
`Facsimile: +46 8 405 46 76
`ju.birs@gov.se
`Neonode Smartphone LLC v. Apple Inc. Civil Action
`File Number 6:20-cv-505-ADA
`
`
`
`
`
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`
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`6.
`
`
`
`
`
`b. To the competent
`authority of Sweden
`(article 3, a)
`
`c. Name of the case and
`any identifying number
`Name and addresses of the
`parties and their
`representatives (including
`representatives in the
`requested state)
`Plaintiff
`
`Representatives
`
`Neonode Smartphone LLC
`30 N. Gould Street, Suite R
`Sheridan, WY 82801
`
`Philip J. Graves (CA State Bar No. 153441)
`HAGENS BERMAN SOBOL SHAPIRO LLP
`301 North Lake Avenue, Suite 920
`Pasadena, CA 91101
`
`3
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 10
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`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 Page 5 of 19
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`
`
`
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`Defendant
`
`Representatives
`
`7.
`
`a. Nature of the
`proceedings (article 3, c)
`
`
`
`b. Summary of complaint
`
`8.
`
`a. Evidence to be obtained
`or other judicial act to be
`performed (article 3, d)
`
`Telephone: (213) 330-7147
`Facsimile: (213) 330-7152
`Email: philipg@hbsslaw.com
`
`Jakob Falkman
`Advokatfirman Hammarskiöld & Co
`Skeppsbron 42, P.O. Box 2278,
`103 17 Stockholm
`Phone +46 8 578 450 26
`Mobile +46 708 145 481
`jakob.falkman@hammarskiold.se
`Apple Inc.
`One Infinite Loop
`Cupertino, CA 95014
`Betty H. Chen
`Fish & Richardson PC
`111 Congress Avenue, Suite 810
`Austin, TX 78701
`Telephone: (512) 472-5070
`Fax: (512) 320-8935
`Email: Bchen@fr.com
`The nature of the litigation from which the Requests
`stem is a complaint of patent infringement involving
`U.S. Patent Nos. 8,095,879 and 8,812,993 (“the Patents
`in Suit”).
`The complaint alleges that Apple has infringed and
`continues to infringe the Patents in Suit by making,
`using, selling, offering for sale and importing into the
`United States iPhones and iPads (a) presenting a user
`interface that includes the Home Bar or Control Bar, or
`(b) running iOS 13 and later versions of iOS, or (c)
`running iOS 8 and later versions of iOS as well as a
`third party keyboard application offering swipe-typing
`functionality. Plaintiff seeks an award of damages
`sufficient to compensate for Apple’s infringement,
`attorneys’ fees, and additional remedies.
`The nature of the proceeding being requested at this
`time is (1) a Request to Compel Testimony from
`Magnus Goertz on the topics set forth in Attachment A,
`(2) a Request for Production of Documents and
`Physical Evidence by Magnus Goertz as set forth in
`Attachment B, (3) a Request to Compel Testimony
`from Björn Thomas Eriksson on the topics set forth in
`Attachment A; and (4) a Request for Production of
`Documents and Physical Evidence by Björn Thomas
`Eriksson as set forth in Attachment B.
`
`4
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`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
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`b. Purpose of the judicial
`act sought
`
`The evidence sought is requested in the interests of
`justice, since the testimony of Magnus Goertz and
`Björn Thomas Eriksson and the documents in their
`possession that are requested to be produced are
`relevant evidence for the claims by Plaintiff against
`Defendant.
`
`Magnus Goertz is the inventor of the patents at issue in
`this litigation, U.S. Patent Nos. 8,095,879 and
`8,812,993 (“the Patents in Suit”). Mr. Goertz and Mr.
`Eriksson founded and managed several related
`companies in Sweden, beginning in the year 2000, to
`develop and commercialize a mobile phone that would
`integrate an innovative gestural user interface with
`touch screen technology. Messrs. Goertz and Eriksson
`referred to this user interface as the “Neno” user
`interface, and it is the subject of the Patents in Suit.
`They succeeded in developing and marketing a mobile
`phone under the brand “Neonode” during the 2000’s,
`which incorporated the Neno user interface technology.
`By early 2002 Messrs. Goertz and Eriksson had
`developed a prototype of the Neonode mobile phone
`that incorporated the Neno user interface technology
`claimed by the Patents in Suit. Mr. Eriksson
`demonstrated the prototype, and distributed product
`literature describing the Neno user interface, at the
`March 2002 CeBit trade show in Germany.
`
`After the CeBit trade show, Messrs. Goertz and
`Eriksson continued their work on the Neonode mobile
`phone. They unveiled a more fully developed version
`of their phone – the Neonode N1 – at a press
`conference in Stockholm in December 2002.
`
`This is evidence that Mr. Goertz had conceived of and
`had diligently worked to reduce the patented
`technology to practice long before he filed the
`application to which the Patents in Suit claim priority,
`on December 10, 2002. This evidence will show that
`the Patents in Suit are entitled to priority over at least
`one of the “prior art” references that Apple contends
`render the Patents in Suit invalid.
`
`In more detail, Mr. Goertz and Mr. Eriksson have
`knowledge and documents in their possession that are
`relevant to material evidentiary issues in the above-
`
`5
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`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 12
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`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 Page 7 of 19
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`referenced litigation, including (i) the dates on which
`Mr. Goertz conceived of the inventions claimed in the
`patents, and his efforts to diligently reduce his
`invention to practice; (ii) the activities of Mr. Goertz
`and Mr. Eriksson in connection with the March 2002
`CeBit trade show in Germany, at which a prototype of
`a Neonode mobile phone was displayed; (iii) the
`activities of Messrs. Goertz and Eriksson in connection
`with the December 2002 press conference in
`Stockholm, at which a more fully developed prototype
`of the Neonode mobile phone was demonstrated; (iv)
`secondary considerations of nonobviousness tending to
`prove that the Patents in Suit are not invalid, such as (a)
`sales of the Neonode mobile phone, including the large
`number of pre-orders for the device, (b) industry praise
`for the groundbreaking Neonode mobile phone
`incorporating the patented technology, or (c) an unmet
`need in the industry for a mobile phone with the
`functionality of the Neno user interface; (v)
`communications between Mr. Goertz and Mr. Eriksson,
`on the one hand, and Defendant Apple, on the other,
`concerning the patented technology and the patents in
`suit, which will show that Defendant knew of the
`Patents in Suit yet proceeded to infringe despite this
`knowledge, thereby entitling Plaintiff to recover for a
`broader scope of infringing conduct and to greater
`damages; (vi) communications between Mr. Goertz and
`Mr. Eriksson, on the one hand, and Samsung
`Electronics Col, Ltd. and its affiliates, on the other,
`concerning the patented technology and the patents in
`suit, which will help to establish the value of the
`Patents in Suit for the purpose of determining a
`reasonably royalty for Defendant’s infringement; (vii)
`the July 13, 2005 Research & Development and
`License Agreement between Neonode Sweden AB and
`Samsung Electronics Co., Ltd., which will help to
`establish the value of the Patents in Suit for the purpose
`of determining a reasonably royalty for Defendant’s
`infringement; and (viii) the business entities that Mr.
`Goertz and Mr. Eriksson established to facilitate their
`efforts to commercialize the patented technology, and
`the assignments of rights in the Patents in Suit to and
`among those entities, which establishes the chain of
`title to ownership of the Patents in Suit.
`
`
`6
`
`
`
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 13
`
`

`

`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 Page 8 of 19
`
`Plaintiff requests that the documents be produced in
`their native or original format, including metadata
`indicating the author and dates of creation and
`modification, because such metadata is necessary
`evidence proving the identity of the author of the
`document and the dates the document was created and
`last modified. Such evidence shows the time period in
`which Mr. Goertz and Mr. Eriksson developed the
`Neno user interface, and the Neonode mobile phone
`that incorporated the Neno technology claimed in the
`Patents in Suit.
`
`The knowledge and information and the documents in
`the possession of Mr. Goertz and Mr. Eriksson are
`unavailable from other sources.
`Magnus Goertz
`Personal id. No. 690626-0077
`Valhallavägen 5
`Lidingö
`181 32 SWEDEN
`
`Björn Thomas Eriksson
`Personal id. No. 700414-0054
`Narvavägen 20
`Stockholm
`115 22 SWEDEN
`See Attachment A
`
`See Attachment B
`
`The witnesses should be examined under oath or
`affirmation as permissible under Swedish law.
`
`This Letter of Request includes the following requests:
`
` 
`
`
`That this Letter of Request be granted and the
`evidence-taking proceeding be performed;
`
`That attorneys for the Plaintiff be permitted to
`ask the witness questions set forth in Attachment A
`including additional questions that are related to the
`subject matter set forth in Attachment A;
`
`7
`
`9.
`
`Identity and address of any
`person to be examined
`(Article 3, e)
`
`10. Questions to be put to the
`persons to be examined or
`statement of the subject
`matter about which they
`are to be examined (Article
`3, f)
`11. Documents or other
`property to be inspected
`(Article 3, (g))
`Requirement that the
`Evidence be Given on Oath
`or Affirmation (Art. 3(h))
`Special methods or
`procedure to be followed
`(Art. 3(i) and 9)
`
`12.
`
`13.
`
`
`
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 14
`
`

`

`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 Page 9 of 19
`
`
`That representatives of the parties be permitted
`to examine and/or cross-examine the witness;
`
`That the testimony be taken remotely via video
`link via a videoconferencing application, and recorded;
`
`That the testimony shall be transcribed and
`recorded by whatever method is permissible under
`Swedish law and the transcribed testimony be returned
`to the representatives of the parties;
`
`That an authorized interpreter for each side be
`present for the examination who shall translate the
`questions and oral testimony between Swedish and
`English;
`
`That the examinations take place as soon as
`possible at dates and times as may be determined in
`accordance with Swedish law with advance notice to
`the parties representatives identified in Section 6
`above;
`
`That the competent judicial authority apply the
`appropriate measures of compulsion if any of the
`witnesses fails to appear or fails to provide the
`requested documents; and
`
`That, to the extent that multiple examination
`dates are necessary to complete the taking of evidence
`sought in Attachment A, the examinations are
`scheduled on consecutive days or as close to each other
`as reasonably practicable.
`
`In the event the evidence cannot be taken in the manner
`or location requested, it is to be taken in such a manner
`or location as provided by local law. To the extent any
`request in this section is deemed incompatible with
`Swedish principles of procedural law, it is to be
`disregarded.
`
`Plaintiff has engaged the following counsel to assist
`with this process, and the relevant authorities in
`Sweden are authorized and requested to communicate
`directly with them concerning this process:
`
`Jakob Falkman
`Advokatfirman Hammarskiöld & Co
`Skeppsbron 42, P.O. Box 2278,
`103 17 Stockholm
`Phone +46 8 578 450 26
`Mobile +46 708 145 481
`jakob.falkman@hammarskiold.se
`
`8
`
`
`
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 15
`
`

`

`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 Page 10 of 19
`
`14.
`
`15.
`
`16.
`
`Request for information of
`time and place for the
`execution of the Request
`pursuant to Article 7 of the
`Convention
`Request for Attendance of
`Participation of Judicial
`Personnel of the
`Requesting Authority at the
`Execution of the Letter of
`Request (Art. 8)
`Specification of Privilege
`or Duty to Refuse to Give
`Evidence Under the Law of
`the State of Origin (Art. 11
`(b))
`
`17.
`
`Fees and costs (Art. 14 and
`26)
`
`DATE OF REQUEST
`
`
`
`
`It is requested that United States counsel for the
`Plaintiff at the address set forth in paragraph 6 above,
`should be contacted for any information relating to the
`execution of this Letter of Request.
`
`No attendance of judicial personnel is requested.
`
`The privilege or duty of the witness(es) to refuse to
`give evidence shall, in addition to what follows from
`the Swedish Procedural Code (Rättegångsbalken),
`include the right to withhold evidence if giving such
`evidence would (1) subject them to a real and
`appreciable danger of criminal liability in the United
`States, or (2) disclose a confidential and privileged
`communication between them and their respective
`attorneys.
`Plaintiff and, if the parties jointly request the issuance of
`a Letter of Request, Defendant shall bear any fees and
`costs within the scope of Articles 14 and 26.
`
`
`___________________ 2021
`
`
`
`_______________________________________
`United States District Court
`Western District of Texas
`800 Franklin Avenue, Room 301
`Waco, Texas 76701
`
`
`(signature and seal)
`
`9
`
`
`
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 16
`
`

`

`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 Page 11 of 19
`
`
`
`ATTACHMENT A
`
`
`
`
`
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 17
`
`

`

`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 Page 12 of 19
`
`
`
`REQUEST TO COMPEL TESTIMONY
`
`DEFINITIONS
`
`1.
`
`“Neonode” means, individually and collectively, the companies named
`
`Neo5 AB, Neonode AB, Neonode Sweden AB, Neonode Inc., and Neonode Technologies AB.
`
`2.
`
`The “Patents in Suit” means U.S. Patent No. 8,095,879 and U.S. Patent
`
`No. 8,812,993.
`
`INSTRUCTIONS
`
`1.
`
`The examination shall be conducted before a court reporter or other officer
`
`as designated or provided by the Central Authority of the Requested State.
`
`2.
`
`Representatives of the parties shall be permitted to examine and/or cross-
`
`examine the witness.
`
`3.
`
`The testimony shall be taken remotely via video link via a
`
`videoconferencing application, and recorded.
`
`4.
`
`The testimony shall be transcribed and recorded by whatever method is
`
`permissible under Swedish law and the transcribed testimony be returned to the representatives
`
`of the parties.
`
`5.
`
`An authorized interpreter for each side shall be present for the
`
`examination and shall translate the questions and oral testimony between Swedish and English.
`
`6.
`
`The examinations shall take place at dates and times as may be determined
`
`in accordance with Swedish law.
`
`7.
`
`To the extent that multiple examination dates are necessary to complete
`
`the taking of evidence sought in Attachment A, the examinations shall be scheduled on
`
`consecutive days or as close to each other as reasonably practicable.
`
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 18
`
`

`

`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 Page 13 of 19
`
`
`
`TOPICS OF TESTIMONY
`
`A. The Development of the Patented Neno User Interface Technology (Letter of
`Request, § 8(b), Items (i)-(iv))
`
`
`The creation, purpose, use and any other facts pertaining to the documents
`
`1.
`
`attached hereto as Exhibits 1-3.
`
`2.
`
`Magnus Goertz’s invention and development of the Neno user interface
`
`during the period January 1, 2000 to and including December 10, 2002.
`
`3.
`
`Magnus Goertz’s invention and development of the inventions claimed in
`
`the Patents in Suit during the period January 1, 2000 to and including December 10, 2002.
`
`4.
`
`Magnus Goertz’s and Thomas Eriksson’s efforts with respect to the
`
`development of the Neonode mobile phone during the period January 1, 2000 to and including
`
`December 10, 2002.
`
`5.
`
`The identities of, and work performed by, Neonode employees,
`
`consultants, contractors, and vendors, and others working with, for or under the direction of Mr.
`
`Goertz or Mr. Eriksson, with respect to the development of the Neonode mobile phone during
`
`the period January 1, 2000 to and including December 10, 2002.
`
`6.
`
`The development of a prototype of the Neonode mobile phone, during the
`
`period January 1, 2000 to and including December 10, 2002, including the prototypes
`
`demonstrated at the CeBit event in March 2002 and at the Stockholm press conference in
`
`December 2002.
`
`7.
`
`Work performed by the company No Picnic AB in connection with the
`
`design of the Neonode mobile phone during the period January 1, 2000 to and including
`
`December 10, 2002.
`
`
`
`2
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2007
`Page 19
`
`

`

`Case 6:20-cv-00505-ADA Document 43-1 Filed 02/09/21 P