Case 6:20-cv-00505-ADA Document 48 Filed 03/09/21 Page 1 of 4
`
`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
`
`APPLE INC.’S UNOPPOSED MOTION FOR ISSUANCE OF
`LETTER OF REQUEST TO EXAMINE PERSONS AND
`INSPECT DOCUMENTS PURSUANT TO HAGUE CONVENTION
`
`
`TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
`
`
`Defendant Apple Inc. (“Apple”) respectfully requests that this Court issue a Letter of
`
`Request in the form attached hereto as Exhibit A, addressed to the Central Authority of Sweden,
`
`to compel the attendance at deposition and production of documents by Magnus Goertz, a resident
`
`of Sweden, and the inventor named on the two patents in suit. Plaintiff Neonode Smartphone LLC
`
`(“Neonode Smartphone”) does not oppose this request.
`
`This Application is made pursuant to Rule 28(b)(1) of the Federal Rules of Civil Procedure
`
`and in conformity with the Hague Convention on the Taking of Evidence Abroad in Civil or
`
`Commercial Matters, T.I.A.S. 7444, 23 U.S.T. 2555, reprinted in 28 U.S.C. § 1781 (“Hague
`
`Evidence Convention”), which is in force between the United States and Sweden. Issuance of the
`
`Letter of Request under the Hague Evidence Convention is a proper method for collecting
`
`documents and the taking of testimony of persons residing abroad. See Fed. R. Civ. P. 28(b); Pain
`
`v. United Tech. Corp., 637 F.2d 775, 788-90 (D.C. Cir. 1980), cert. denied, 454 U.S. 1128 (1991).
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 1
`
`

`

`Case 6:20-cv-00505-ADA Document 48 Filed 03/09/21 Page 2 of 4
`
`The proposed Letter of Request is attached hereto as Exhibit A, following the model set
`
`out in the Hague Evidence Convention.
`
`STATEMENT OF THE CASE
`
`Although the Court has vacated all non-venue deadlines in this action pending the
`
`resolution of Apple’s motion to transfer this action to the Northern District of California (see Dkt.
`
`No. 40), there is no reason to delay taking this discovery. The Court’s OGP – Patent Case, v. 3.2,
`
`provides that “the Court will permit limited discovery by agreement of the parties, or upon request,
`
`where exceptional circumstances warrant. For example, if discovery outside the United States is
`
`contemplated, the Court will be inclined to allow such discovery to commence before the Markman
`
`hearing.” Because Mr. Goertz is a third party that resides in Sweden, this is exactly such discovery.
`
`Furthermore, this Court specifically authorized taking Mr. Goertz’s deposition prior to Markman
`
`because of his unique knowledge about alleged conception and reduction to practice of the claimed
`
`inventions in the patents-in-suit. See Dkt. No. 26 (Case Management Conference Tr.) at 16-19.
`
`Finally, Neonode Smartphone’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 (Dkt. No. 43) indicates that it too believes that
`
`discovery related to Mr. Goertz should occur before the Markman hearing in this case.
`
`PROCEDURE
`
`Apple respectfully asks this Court to issue a Letter of Request to examine Mr. Goertz and
`
`inspect documents as set forth in Exhibit A to the Request for International Judicial Assistance
`
`below in order to fully develop its claims and defenses in this action. The evidence sought in the
`
`Letter of Request cannot be obtained by other means.
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 2
`
`

`

`Case 6:20-cv-00505-ADA Document 48 Filed 03/09/21 Page 3 of 4
`
`In the event the Court grants the instant application, Apple requests that the Court execute
`
`the Letter of Request with the Court’s signature and seal, and provide an original of the executed
`
`Letter of Request to Apple’s undersigned counsel. Apple will then transmit the executed Letter of
`
`Request to the Swedish authority for execution.
`
`Accordingly, Apple requests that the Court sign under seal and issue the attached Letters
`
`of Request to the appropriate authority in conformity with the Hague Evidence Convention,
`
`including requests to compel the attendance at deposition and production of documents by Magnus
`
`Goertz in the form as attached as Exhibit A.
`
`Date: March 9, 2021
`
`
`
`
`
`
`By:
`
`Respectfully submitted,
`
`FISH & RICHARDSON P.C.
`
`/s/ Benjamin C. Elacqua
`Benjamin C. Elacqua
`Texas Bar Number 24055443
`elacqua@fr.com
`Kathryn A. Quisenberry
`Texas Bar Number 24105639
`quisenberry@fr.com
`FISH & RICHARDSON P.C.
`1221 McKinney Street, Suite 2800
`Houston, TX 77010
`Telephone: 713-654-5300
`Facsimile: 713-652-0109
`
`Betty Chen
`Texas Bar Number 24056720
`bchen@fr.com
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Telephone: 650-839-5070
`Facsimile: 650-839-5071
`
`Jared A. Smith (admitted Pro Hac Vice)
`California Bar No. 306576
`jasmith@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Telephone: 858-678-5070
`Facsimile: 858-678-5099
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 3
`
`

`

`Case 6:20-cv-00505-ADA Document 48 Filed 03/09/21 Page 4 of 4
`
`
`Aamir A. Kazi (admitted Pro Hac Vice)
`Georgia Bar Number 104235
`kazi@fr.com
`FISH & RICHARDSON P.C.
`1180 Peachtree Street, NE, 21st Floor
`Atlanta, GA 30309
`Telephone: 404-582-5005
`Facsimile: 404-582-5002
`
`COUNSEL FOR DEFENDANT APPLE INC.
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of the above document was served on March
`
`9, 2021 to all counsel of record via ECF.
`
`
`
`/s/
`
`Benjamin C. Elacqua
`
`
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 4
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 1 of 30
`
`
`
`EXHIBIT A
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 5
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 2 of 30
`
`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
`
`APPLE INC.’S 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
`
`
`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
`
`Betty H. Chen
`Fish & Richardson P.C.
`111 Congress Avenue, Suite 810
`Austin, TX 78701
`Telephone: (512) 472-5070
`Fax: (512) 320-8935
`Email: Bchen@fr.com
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 6
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 3 of 30
`
`4.
`
`Date by which the
`requesting authority
`requires receipt of the
`response to the Letter of
`Request:
`
`As soon as reasonably practicable.
`
`In conformity with Article 3 of the Convention, the United States District Court for the Western
`District of Texas, Waco Division, presents its compliments to the competent judicial authority in
`Sweden and respectfully submits the following request:
`
`5.
`
`a. Requesting judicial
`authority (article 3, a)
`
`
`
`
`
`
`
`
`
`6.
`
`b. To the competent
`authority of (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)
`
`Defendant
`
`Representatives (US)
`
`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
`
`Neonode Smartphone LLC v. Apple Inc. Civil Action File
`Number 6:20-cv-505-ADA
`
`Apple Inc.
`One Apple Park Way
`MS 169-2NYJ
`Cupertino, CA 95014
`Betty H. Chen (TX State Bar No. 24056720)
`Fish & Richardson P.C.
`111 Congress Avenue, Suite 810
`Austin, TX 78701
`Telephone: (512) 472-5070
`Fax: (512) 320-8935
`Email: bchen@fr.com
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 7
`
`

`

`
`
`
`
`
`
`
`
`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 4 of 30
`
`Plaintiff
`
`Neonode Smartphone LLC
`30 N. Gould Street, Suite R
`Sheridan, WY 82801
`
`Representatives (US)
`
`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)
`
`b. Purpose of the evidence
`or judicial act sought
`
`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
`
`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
`
`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 listed above by
`making, using, importing, selling, and/or offering for sale
`various smartphones (e.g., iPhones) and tablets (e.g.,
`iPads) running iOS or iPadOS operating systems.
`
`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.
`
`The evidence sought is requested in the interests of the
`justice, to establish at trial information in the possession
`of the witnesses relating to the conception and reduction
`to practice of the alleged inventions claimed in the
`patents-in-suit, ownership of the patents-in-suit, and
`commercialization of products that allegedly embody
`certain aspects of the alleged inventions claimed in the
`patents-in-suit.
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 8
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 5 of 30
`
`By way of background, the earliest priority date for the
`patents-in-suit that is supported on the face of the patents
`Dec. 10, 2002. Neonode Smartphone, however, asserts
`without supporting evidence that both patents-in-suit are
`entitled to an earlier priority date of May 5, 2000.
`Neonode Smartphone has repeatedly directed Apple to
`seek information relating to the conception and reduction
`to practice of the patents-in-suit from Mr. Goertz, and
`Neonode Smartphone seeks the same with its own
`separate letter of request.
`
`Magnus Goertz
`Personal id. No. 690626-0077
`Valhallavägen 5
`Lidingö
`181 32 SWEDEN
`
`See Attachment A
`
`See Attachment B
`
`The witnesses should be examined under oath or
`affirmation as permissible under Swedish law.
`
`9.
`
`10.
`
`11.
`
`12.
`
`Identity and address of
`any person to be examined
`(Article 3, e)
`
`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)
`Documents or other
`property to be inspected
`(Article 3, (g))
`
`Requirement that the
`Evidence be Given on Oath
`or Affirmation (Art. 3(h))
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 9
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 6 of 30
`
`13.
`
`Special methods or
`procedure to be followed
`(Art. 3(i) and 9)
`
`
`
`
`
`
`
`
`
`
`
`
`
`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 Defendant be permitted to
`ask the witness additional questions that are related to the
`subject matter set forth in Attachment A.
`
`•
`That representatives of the parties be permitted to
`examine and/or cross-examine the witness;
`
`•
`That the testimony be taken remotely by means
`of a video conferencing application, and recorded;
`
`•
`That an authorized shorthand writer/court reporter
`be present at the examination who shall record the oral
`testimony verbatim (in English) and prepare a transcript
`of the evidence;
`
`•
`That an authorized shorthand writer/court reporter
`be present at the examination who shall record the oral
`testimony verbatim (in Swedish) and prepare a transcript
`of the evidence;
`
`•
`That an authorized interpreter for each side be
`present at the examination who shall translate the
`questions and oral testimony between Swedish and
`English;
`
`•
`That the examinations take place at dates and
`times as may be agreed upon between the witness and
`counsel for the parties; and
`
`•
`That, to the extent that multiple hearing dates are
`necessary to complete the taking of evidence sought in
`Attachment A and the additional questions related to the
`subject matter set forth in Attachment A, the hearings 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.
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 10
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 7 of 30
`
`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)
`
`It is requested that United States Counsel for the
`Defendant at the addresses 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 witnesses to refuse to give
`evidence shall, in addition to what follows from the
`Swedish Procedural Code (Rättegångsbalken), including
`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 Defendant shall bear any fees and costs
`within the scope of Articles 14 and 26.
`
`
`
`
`
`
`
`
`
`
`DATE OF REQUEST
`
`
`
`2021
`
`
`
`
`
`
`
`United States District Court
`Western District of Texas
`800 Franklin Avenue, Room 301
`Waco, Texas 76701
`
`
`
`(signature and seal)
`
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 11
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 8 of 30
`
`ATTACHMENT A
`
`
`
`
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 12
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 9 of 30
`
`ATTACHMENT A DEFINITIONS
`
`1.
`
`The Local Rules for the United States District Court of the Western District of
`
`Texas are hereby incorporated by reference.
`
`2.
`
`“You,” “Your,” or “Yours” shall mean Magus Goertz, Named Inventor of United
`
`States Patent Nos. 8,068,879 and 8,812,993.
`
`3.
`
`“Plaintiff” or “Neonode Smartphone” shall mean Neonode Smartphone LLC and
`
`all predecessors, successors, predecessors-in-interest, successors-in-interest, subsidiaries,
`
`divisions, parents, and/or affiliates, past or present, any companies that have a controlling
`
`interest in Neonode Smartphone LLC, and any current or former employee, officer, director,
`
`principal, agent, consultant, representative, or attorney thereof, or anyone acting on their behalf.
`
`4.
`
`5.
`
`“Apple” or “Defendant” means Apple Inc.
`
`“This Litigation” shall mean Neonode Smartphone LLC v. Apple Inc., Case No.
`
`6:20-cv-00505-ADA, United States District Court, Western District of Texas.
`
`6.
`
`“Asserted Patents” or “Patents-in-Suit” shall mean United States Patent Nos.
`
`8,068,879 and 8,812,993. “Asserted Patent” means any one of the Asserted Patents.
`
`7.
`
`The “’879 Patent” shall mean United States Patent No. 8,095,879 and all
`
`underlying patent applications.
`
`8.
`
`The “’993 Patent” shall mean United States Patent No. 8,812,993 and all
`
`underlying patent applications.
`
`9.
`
`“Related Application(s)” shall mean (a) any United States patent applications that
`
`claim priority to any of the Asserted Patents, (b) any United States patent applications or United
`
`States provisional applications from which priority is claimed by any of the Asserted Patents,
`
`and/or (c) any United States patent applications that claim priority to a patent application or
`
`provisional application identified in (a) and/or (b). The term “United States patent applications”
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 13
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 10 of 30
`
`as used in (a), (b), and (c) includes, without limitation, all issued, abandoned, and pending patent
`
`applications.
`
`10.
`
`“Related Patent(s)” means (1) any United States or foreign patent or patent
`
`application related to any Asserted Patent by way of subject matter or claimed priority date, (2)
`
`all parent, grandparent or earlier, divisional, continuation, continuation-in-part, provisionals,
`
`reissue, reexamination, and foreign counterpart patents and applications of thereof, and/or (3)
`
`any patent or patent application filed by one of more of the same applicant(s) (or his or her
`
`assignees) that refers to any of (1) or (2) herein. “Related Patent” means one of the related
`
`patents.
`
`11.
`
`“Neo5 AB” means Neo5 AB and its officers, directors, current and former
`
`employees, counsel, agents, consultants, representatives, and any other Persons acting on behalf
`
`of any of the foregoing, and Neo5 AB’s affiliates, parents, divisions, joint ventures, licensees,
`
`franchisees, assigns, predecessors and successors in interest, and any other legal entities, whether
`
`foreign or domestic, that are owned or controlled by Neo5 AB, and all predecessors and
`
`successors in interest to such entities.
`
`12.
`
`“Neonode Sweden AB” means Neonode Sweden AB and its officers, directors,
`
`current and former employees, counsel, agents, consultants, representatives, and any other
`
`Persons acting on behalf of any of the foregoing, and Neonode Sweden AB’s affiliates, parents,
`
`divisions, joint ventures, licensees, franchisees, assigns, predecessors and successors in interest,
`
`and any other legal entities, whether foreign or domestic, that are owned or controlled by
`
`Neonode Sweden AB, and all predecessors and successors in interest to such entities.
`
`13.
`
`“Neonode AB” means Neonode AB and its officers, directors, current and former
`
`employees, counsel, agents, consultants, representatives, and any other Persons acting on behalf
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 14
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 11 of 30
`
`of any of the foregoing, and Neonode AB’s affiliates, parents, divisions, joint ventures,
`
`licensees, franchisees, assigns, predecessors and successors in interest, and any other legal
`
`entities, whether foreign or domestic, that are owned or controlled by Neonode AB, and all
`
`predecessors and successors in interest to such entities.
`
`14.
`
`“Neonode Inc.” means Neonode Inc. and its officers, directors, current and former
`
`employees, counsel, agents, consultants, representatives, and any other Persons acting on behalf
`
`of any of the foregoing, and Neonode Inc.’s affiliates, parents, divisions, joint ventures,
`
`licensees, franchisees, assigns, predecessors and successors in interest, and any other legal
`
`entities, whether foreign or domestic, that are owned or controlled by Neonode Inc., and all
`
`predecessors and successors in interest to such entities.
`
`15.
`
`“Aequitas” means Aequitas Technologies LLC and its officers, directors, current
`
`and former employees, counsel, agents, consultants, representatives, and any other Persons
`
`acting on behalf of any of the foregoing, and Aequitas Technologies LLC’s affiliates, parents,
`
`divisions, joint ventures, licensees, franchisees, assigns, predecessors and successors in interest,
`
`and any other legal entities, whether foreign or domestic, that are owned or controlled by
`
`Aequitas Technologies LLC, and all predecessors and successors in interest to such entities.
`
`16.
`
`“Prior Art” means all publications, patents, physical devices, prototypes, products,
`
`uses, sales, offers for sale, and other activity concerning the subject matter of the Asserted
`
`Patents, or any other related foreign patents, and existing on, and occurring at, a date such as to
`
`be relevant under any subdivision of 35 U.S.C. § 102 or 103.
`
`17.
`
`“Product(s)” means a machine, manufacture, apparatus, device, instrument,
`
`mechanism, appliance, assemblage of components/parts (either individually or collectively),
`
`process, or method which are designed to function together electrically, mechanically,
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 15
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 12 of 30
`
`chemically, or otherwise, to achieve a particular function or purpose, including those offered for
`
`sale, sold, or under development.
`
`18.
`
`“Assignee” means any owner, assignee, exclusive licensee, or non-exclusive
`
`licensee of any interest in the Asserted Patents.
`
`19.
`
`“Named Inventor” means any Person or Persons named as an inventor on the face
`
`of any Asserted Patent or Related Patent.
`
`20.
`
`“Relate to,” “Related to,” or “Relating to” means, without limitation, the
`
`following concepts: discussing, describing, reflecting, dealing with, pertaining to, analyzing,
`
`evaluating, estimating, constituting, studying, surveying, projecting, assessing, recording,
`
`summarizing, criticizing, reporting, commenting, concerning, or otherwise involving, in whole or
`
`in part.
`
`21.
`
`“Document(s)” has the broadest possible meaning permitted by Federal Rules of
`
`Civil Procedure Rules 26 and 34 and the relevant case law, and the broadest meaning consistent
`
`with the terms “writings” or “recordings” as set forth in Rule 1001 of the Federal Rules of
`
`Evidence, and specifically and without limitation include tangible Things and electronically
`
`stored information. “Document(s)” also includes all drafts or non-final versions, alterations,
`
`modifications, and amendments to any of the foregoing.
`
`22.
`
`“Person” refers to any individual, corporation, proprietorship, association, joint
`
`venture, company, partnership, or other business or legal entity, including governmental bodies
`
`and agencies.
`
`23.
`
`“Entity” refers to any individual, corporation, proprietorship, association, joint
`
`venture, company, partnership, or other business or legal entity, including governmental bodies
`
`and agencies.
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 16
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 13 of 30
`
`24.
`
`“Communication” means any written, oral, telephonic or other inquiries, and all
`
`other documents evidencing any verbal or nonverbal interaction between Persons and entities.
`
`25.
`
`“Thing(s)” is used in the broadest sense to include everything contemplated by
`
`Rule 34(a)(1)(B) of the Federal Rules of Civil Procedure.
`
`“Include” and “including” shall mean including without limitation.
`
`Use of the singular form of a word also includes the plural form of the word and
`
`26.
`
`27.
`
`vice-versa.
`
`28.
`
`The words “and” and “or” shall be construed conjunctively or disjunctively,
`
`whichever makes the request most inclusive.
`
`29.
`
`The word “ all” means “any and all” and the word including” means “ including
`
`without limitation,” as necessary, to bring within the scope of these requests Documents or
`
`Things that might otherwise be beyond their scope.
`
`30.
`
`Any pronoun shall be construed to refer to the masculine, feminine, or gender
`
`neutral as in each case is most appropriate.
`
`ATTACHMENT A TOPICS FOR EXAMINATION
`
`1.
`
`The scope and content of the subject matter described and claimed in the Asserted
`
`Patents.
`
`2.
`
`The conception of the subject matter claimed in the Asserted Patents, including,
`
`but not limited to, the conception date(s), the circumstances of conception, the identity of each
`
`Person who contributed to the conception and the specific contribution(s) made by each such
`
`Person, the first written description or depiction of the claimed subject matter in a printed
`
`publication and/or drawings; Documents relating to any of the foregoing; the types and locations
`
`of Documents relating to any of the foregoing; and the identities of Persons in possession of
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 17
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 14 of 30
`
`Documents relating to any of the foregoing.
`
`3.
`
`Diligence in the reduction to practice of the subject matter claimed in the Asserted
`
`Patents, including, but not limited to, the date(s) of such diligence, the circumstances of such
`
`diligence, the identity of each Person who participated in or has knowledge of such diligence and
`
`the role(s) of each such Person; Documents relating to any of the foregoing; the types and
`
`locations of Documents relating to any of the foregoing; and the identities of Persons in
`
`possession of Documents relating to any of the foregoing.
`
`4.
`
`The first disclosure, first written description, and first publication of the subject
`
`matter claimed in the Asserted Patents.
`
`5.
`
`The first manufacture, first demonstration, first prototype, first use, first public
`
`use, first offer for sale, first sale, and first importation into the United States of any product or
`
`device that embodies any claim of the Asserted Patents.
`
`6.
`
`Any past or current relationship between You and Neonode Smartphone, Neo5
`
`AB, Neonode AB, Neonode Sweden AB, Neonode Inc., or Aequitas, or any affiliates thereof,
`
`including the terms of any agreements, contract, or consulting arrangement.
`
`7.
`
`The decision to seek patent protection for the alleged inventions claimed in the
`
`Asserted Patents.
`
`8.
`
`The prosecution of the Asserted Patents, including, without limitation, any and all
`
`parent applications, divisionals, continuations, continuations-in-part, foreign equivalents, and
`
`applications claiming the benefit of the filing date of any of the foregoing (whether abandoned or
`
`not), including, but not limited to, the identity of the Persons who drafted, revised, contributed
`
`to, or were otherwise involved in the prosecution of said patent applications and the decision
`
`about what Prior Art to disclose or not disclose to the PTO; the types and locations of
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 18
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 15 of 30
`
`Documents relating to any of the foregoing; and the identities of Persons in possession of
`
`Documents relating to any of the foregoing.
`
`9.
`
`The prosecution of all patents and patent applications related to the Asserted
`
`Patents, including but not limited to the identity of the Persons who drafted, revised, contributed
`
`to, or were otherwise involved in the prosecution of said patents or patent applications and the
`
`decision about what Prior Art to disclose or not disclose to the PTO or other patent office or
`
`agency; the types and locations of Documents relating to any of the foregoing; and the identities
`
`of Persons in possession of Documents relating to any of the foregoing.
`
`10.
`
`Any and all knowledge of Prior Art by You or any Persons having duty under 37
`
`C.F.R. § 1.56 during prosecutions of any of the Asserted Patents.
`
`11.
`
`The formation of Neo5 AB, Neonode AB, Neonode Sweden AB, and Neonode,
`
`Inc. and/or any affiliates thereof or entities related thereto.
`
`12.
`
`Any and all ownership, financial interest, and assignment of rights in the Asserted
`
`Patents and Related Patents, including any assignments from Mr. Goertz and Björn Thomas
`
`Eriksson to Neonode Sweden AB, from Neonode Sweden AB to Neonode AB, from Neonode
`
`AB to Neonode Inc., from Neonode Inc. to Aequitas, and from Aequitas to Neonode
`
`Smartphone, including any compensation arrangements related to any such assignment of rights.
`
`13.
`
`The design and development of the Neonode N1, N1m, and N2 mobile phones,
`
`including, without limitation, development of requirements, specifications, and prototypes the
`
`Neonode N1, N1m, and N2 mobile phones.
`
`14.
`
`The commercialization and marketing of the Neonode N1, N1m, and N2 mobile
`
`phones, including, without limitation, dissemination of product literature and demonstration of
`
`prototypes, including such activities at press conferences, industry conferences, and trade shows.
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 19
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 16 of 30
`
`15.
`
`Any design or development work relating to the Neonode N1, N1m, and N2
`
`mobile phones performed by any Person or entity other than You or Neonode Inc, including,
`
`without limitation, No Picnic AB or Note AB.
`
`16.
`
`Any long-felt but unmet need for the alleged inventions claimed in the Asserted
`
`Patents, failure by others to develop the alleged inventions claimed in the Asserted Patents,
`
`skepticism by others of the alleged inventions claimed in the Asserted Patents, commercial
`
`success of the alleged inventions claimed in the Asserted Patents, awards or industry recognition
`
`based on any alleged inventions claimed by the Asserted Patents, copying by others of the
`
`alleged inventions claimed in the Asserted Patents, or unexpected results of the alleged
`
`inventions claimed in the Asserted Patents.
`
`17.
`
`Any payments or other forms of compensation or remuneration made to You in
`
`connection with the Asserted Patents or This Litigation, including, without limitation, the form
`
`of such payment, the amount of such payment, the date such payment was made; the identity of
`
`each Person with knowledge of such payment, the reason for such payment; the types and
`
`locations of Documents relating to any of the foregoing; and the identities of persons in
`
`possession of Documents relating to any of the foregoing.
`
`18.
`
`All writings, publications, abstracts, papers, presentations, memoranda, reports, or
`
`speeches (whether published or not) authored or given, in whole or in part, by You, Neonode
`
`Inc., or its predecessors or successors, and that relate, in whole or in part, to the subject matter
`
`disclosed or claimed in the Asserted Patents; the identities of Persons involved in the generation
`
`of such writings, publications, abstracts, papers, presentations, memoranda, reports, or speeches;
`
`the types and locations of Documents relating to any of the foregoing; and the identities of the
`
`Persons in possession of Documents relating to any of the foregoing.
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2008
`Page 20
`
`

`

`Case 6:20-cv-00505-ADA Document 48-1 Filed 03/09/21 Page 17 of 30
`
`19.
`
`Any studies, investigations, searches, analyses, or