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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
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`AMERICA, INC. AND APPLE, INC.,
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`Petitioners
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`v.
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`NEONODE SMARTPHONE LLC,
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`Patent Owner
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`____________
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`Case IPR2021-00145
`U.S. Patent No. 8,812,993
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`DECLARATION OF JAKOB FALKMAN
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`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2010
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`
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`Declaration of Jakob Falkman
`IPR2021-00145
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`1.
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`2.
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`I, Jakob Falkman, declare as follows:
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`I am over 18 years of age and, if I am called upon to do so, I would be
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`competent to do testify as to the matters set forth herein.
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`3.
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`I am a lawyer admitted to practice in the courts of Sweden, and a
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`partner at the law firm of Advokatfirman Hammarskiöld & Co in Stockholm,
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`Sweden.
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`4.
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`I have 28 years of experience as a practicing lawyer, whereof three
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`years practice at court as law clerk, between 1993-1995 at Södra Roslags District
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`Court in Stockholm, and during two sessions of in total one year with Svea Court
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`of Appeal in Stockholm. I have had employments with law firms in Stockholm
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`since 1997, including a secondment with Clifford Chance in London.
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`5.
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`I am knowledgeable and experienced regarding the practice and
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`procedures involved with the enforcement in Sweden of discovery sought by
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`parties to litigation in United States District Court. I have served as local counsel
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`for U.S. parties or law firms in connection with such matters on at least five
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`occasions and have in other professional roles (e.g. as counsel to Swedish parties
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`being involved in or otherwise concerned by such matters) closely followed such
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`matters on at least five occasions. I have in this particular case also made detailed
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`investigations into the current status of dealings with these matters and the
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`IPR2021-00145
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`applicable waiting times for decisions as it currently stands at the relevant district
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`court,
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`6.
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`Sweden is a party to the Hague Convention on the Taking of Evidence
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`Abroad in Civil and Commercial Matters (the “Convention”). Swedish courts will
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`not enforce discovery served by parties to U.S. civil and commercial disputes
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`unless a proper request for the enforcement of such discovery has been submitted
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`to the Division for Criminal Cases and International Judicial Cooperation of the
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`Ministry of Justice of Sweden pursuant to the Convention.
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`7.
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`Typically, requests by parties to U.S. litigation for enforcement of
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`discovery in Sweden pursuant to the Convention are submitted to the Ministry of
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`Justice by means of a Letter of Request.
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`8.
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`The contents of a Letter of Request are governed by the Convention,
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`and include such items as the names of the persons to be examined, the questions
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`to be put to the persons to be examined or a statement of the subject matter about
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`which they are to be examined, and the documents or other property to be
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`inspected, as well as relevant themes of proof.
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`9.
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`Typically, after a Letter of Request has been received by the Ministry
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`of Justice, the Letter of Request will be forwarded to the Swedish judicial authority
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`with jurisdiction over the matter, typically being the district court with jurisdiction
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`over the particular witness person or the person otherwise to provide evidence.
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`IPR2021-00145
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`The judicial authority will examine the Letter or Request and determine whether it
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`appears to comply with the Convention and with all declarations and reservations
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`filed by Sweden in connection with the Convention.
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`10.
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`Sweden has, pursuant to Article 23 of the Convention, filed a
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`declaration stating that “Letters of Request issued for the purpose of obtaining pre-
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`trial discovery of documents as known in common law countries will not be
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`executed.”
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`11.
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`Further, Sweden has, again pursuant to Article 23 of the Convention,
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`filed a declaration stating:
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`The Swedish Government understands “Letters of Request issued for the
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`purpose of pre-trial discovery of documents” for the purposes of the
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`foregoing Declaration as including any Letter of Request which requires a
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`person:
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`a. to state what documents relevant to the proceedings to which the Letter
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`of Request relates are, or have been, in his possession, custody or power;
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`or
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`b. to produce any documents other than particular documents specified in
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`the Letter of Request, which are likely to be in his possession, custody or
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`power.
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`12. Accordingly, if the competent Swedish judicial authority determines
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`that a request for production of documents attached to a Letter of Request was
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`“issued for the purpose of pre-trial discovery of documents,” the judicial authority
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`will not execute the Letter of Request.
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`13.
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`In addition, even if the Letter of Request is determined to be proper
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`under Sweden’s declarations to the Convention, Swedish procedural rules apply to
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`the execution of the request. Pursuant to those rules, someone who is in possession
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`of a document that can be assumed to be of importance as evidence is obliged to
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`produce the document (Chapter 38, §2 of the Swedish Code on Judicial Procedure
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`[Sw: rättegångsbalken]). This requires that the party seeking to obtain the
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`documents specify (i) which documents are to be produced, and (ii) what is to be
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`proven with each document. To the extent a document cannot be precisely
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`specified, it can suffice to request a certain category of documents or all documents
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`of relevance to a closely described theme of proof.
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`14.
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`If the competent Swedish judicial authority determines that a request
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`for production of documents attached to a Letter of Request fails to specify
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`precisely the documents to be produced, or to identify precise themes of proof or a
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`narrowly-defined category or documents, the judicial authority will not execute the
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`Letter of Request.
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`Neonode Ex. 2010
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`Declaration of Jakob Falkman
`IPR2021-00145
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`15.
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`This process of review typically takes at least one to two months.
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`Upon completion of the process, a response will be sent by letter to the requesting
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`U.S. court explaining the judicial authority’s determination and, if the
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`determination is adverse to execution of the Letter of Request, sometimes the
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`judicial authority will provide the requesting U.S. court with an opportunity to
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`submit a statement responding to the matters referenced in the determination.
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`16.
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`If the Letter of Request is determined to be enforceable, the
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`examination of a witness or production of documents will be scheduled to take
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`place at the Swedish court and the U.S. court will be notified hereof in advance.
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`The time for the examination of a witness or production of documents depends on
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`the individual circumstances but is likely to be at least 1-2 months after the
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`Swedish court’s determination on enforceability.
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`17.
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`As a result of Sweden’s declarations concerning common law
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`document discovery, it may sometimes be necessary to submit multiple Letters of
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`Request in order to try to obtain document discovery as broad as that sought by
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`parties to U.S. litigation. For example, in order to obtain discovery of a broad
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`category of documents (such as, for example, all emails in the possession of a
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`witness relevant to a particular issue), it may be necessary first to submit a Letter
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`of Request seeking an examination of the witness in order to obtain testimony
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`concerning specific documents or categories of documents that are in the witness’
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`Neonode Ex. 2010
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`IPR2021-00145
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`possession. In the event that the witness testifies with sufficient specificity
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`concerning such documents, a second Letter of Request may then be submitted
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`requesting production of those specifically-defined documents or categories of
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`documents, with a greater likelihood that the Letter of Request will be determined
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`to be enforceable by the pertinent Swedish judicial authority.
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`18.
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`The practical result of this process is that it may take more than six
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`months, excluding any time expended obtaining the issuance of a Letter of Request
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`from a U.S. court or other authority, to obtain discovery of broad categories of
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`documents from a witness in Sweden. Even then, with the benefit of prior
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`testimony of a witness, enforcement of broad “U.S.-style” document discovery in
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`Sweden is very rare.
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`19.
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`I declare that all statements made herein of my knowledge are true,
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`and that all statements made on information and belief are believed to be true, and
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`that these statements were made with the knowledge that willful false statements
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`and the like so made are punishable by fine or imprisonment, or both, under
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`Section 1001 of Title 18 of the United States Code.
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`Dated: March 5, 2021
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`________________________________
`Jakob Falkman
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