UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`
`AMERICA, INC. AND APPLE, INC.,
`
`Petitioners
`
`v.
`
`NEONODE SMARTPHONE LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2021-00145
`U.S. Patent No. 8,812,993
`
`DECLARATION OF JAKOB FALKMAN
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2010
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`
`AMERICA, INC. AND APPLE, INC.,
`
`Petitioners
`
`v.
`
`NEONODE SMARTPHONE LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2021-00145
`U.S. Patent No. 8,812,993
`
`DECLARATION OF JAKOB FALKMAN
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2010
`
`
`
`Declaration of Jakob Falkman
`IPR2021-00145
`
`1.
`
`2.
`
`I, Jakob Falkman, declare as follows:
`
`I am over 18 years of age and, if I am called upon to do so, I would be
`
`competent to do testify as to the matters set forth herein.
`
`3.
`
`I am a lawyer admitted to practice in the courts of Sweden, and a
`
`partner at the law firm of Advokatfirman Hammarskiöld & Co in Stockholm,
`
`Sweden.
`
`4.
`
`I have 28 years of experience as a practicing lawyer, whereof three
`
`years practice at court as law clerk, between 1993-1995 at Södra Roslags District
`
`Court in Stockholm, and during two sessions of in total one year with Svea Court
`
`of Appeal in Stockholm. I have had employments with law firms in Stockholm
`
`since 1997, including a secondment with Clifford Chance in London.
`
`5.
`
`I am knowledgeable and experienced regarding the practice and
`
`procedures involved with the enforcement in Sweden of discovery sought by
`
`parties to litigation in United States District Court. I have served as local counsel
`
`for U.S. parties or law firms in connection with such matters on at least five
`
`occasions and have in other professional roles (e.g. as counsel to Swedish parties
`
`being involved in or otherwise concerned by such matters) closely followed such
`
`matters on at least five occasions. I have in this particular case also made detailed
`
`investigations into the current status of dealings with these matters and the
`
`1
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2010
`Page 1
`
`
`
`Declaration of Jakob Falkman
`IPR2021-00145
`
`applicable waiting times for decisions as it currently stands at the relevant district
`
`court,
`
`6.
`
`Sweden is a party to the Hague Convention on the Taking of Evidence
`
`Abroad in Civil and Commercial Matters (the “Convention”). Swedish courts will
`
`not enforce discovery served by parties to U.S. civil and commercial disputes
`
`unless a proper request for the enforcement of such discovery has been submitted
`
`to the Division for Criminal Cases and International Judicial Cooperation of the
`
`Ministry of Justice of Sweden pursuant to the Convention.
`
`7.
`
`Typically, requests by parties to U.S. litigation for enforcement of
`
`discovery in Sweden pursuant to the Convention are submitted to the Ministry of
`
`Justice by means of a Letter of Request.
`
`8.
`
`The contents of a Letter of Request are governed by the Convention,
`
`and include such items as the names of the persons to be examined, the questions
`
`to be put to the persons to be examined or a statement of the subject matter about
`
`which they are to be examined, and the documents or other property to be
`
`inspected, as well as relevant themes of proof.
`
`9.
`
`Typically, after a Letter of Request has been received by the Ministry
`
`of Justice, the Letter of Request will be forwarded to the Swedish judicial authority
`
`with jurisdiction over the matter, typically being the district court with jurisdiction
`
`over the particular witness person or the person otherwise to provide evidence.
`
`2
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2010
`Page 2
`
`
`
`Declaration of Jakob Falkman
`IPR2021-00145
`
`The judicial authority will examine the Letter or Request and determine whether it
`
`appears to comply with the Convention and with all declarations and reservations
`
`filed by Sweden in connection with the Convention.
`
`10.
`
`Sweden has, pursuant to Article 23 of the Convention, filed a
`
`declaration stating that “Letters of Request issued for the purpose of obtaining pre-
`
`trial discovery of documents as known in common law countries will not be
`
`executed.”
`
`11.
`
`Further, Sweden has, again pursuant to Article 23 of the Convention,
`
`filed a declaration stating:
`
`The Swedish Government understands “Letters of Request issued for the
`
`purpose of pre-trial discovery of documents” for the purposes of the
`
`foregoing Declaration as including any Letter of Request which requires a
`
`person:
`
`a. to state what documents relevant to the proceedings to which the Letter
`
`of Request relates are, or have been, in his possession, custody or power;
`
`or
`
`b. to produce any documents other than particular documents specified in
`
`the Letter of Request, which are likely to be in his possession, custody or
`
`power.
`
`3
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2010
`Page 3
`
`
`
`Declaration of Jakob Falkman
`IPR2021-00145
`
`12. Accordingly, if the competent Swedish judicial authority determines
`
`that a request for production of documents attached to a Letter of Request was
`
`“issued for the purpose of pre-trial discovery of documents,” the judicial authority
`
`will not execute the Letter of Request.
`
`13.
`
`In addition, even if the Letter of Request is determined to be proper
`
`under Sweden’s declarations to the Convention, Swedish procedural rules apply to
`
`the execution of the request. Pursuant to those rules, someone who is in possession
`
`of a document that can be assumed to be of importance as evidence is obliged to
`
`produce the document (Chapter 38, §2 of the Swedish Code on Judicial Procedure
`
`[Sw: rättegångsbalken]). This requires that the party seeking to obtain the
`
`documents specify (i) which documents are to be produced, and (ii) what is to be
`
`proven with each document. To the extent a document cannot be precisely
`
`specified, it can suffice to request a certain category of documents or all documents
`
`of relevance to a closely described theme of proof.
`
`14.
`
`If the competent Swedish judicial authority determines that a request
`
`for production of documents attached to a Letter of Request fails to specify
`
`precisely the documents to be produced, or to identify precise themes of proof or a
`
`narrowly-defined category or documents, the judicial authority will not execute the
`
`Letter of Request.
`
`4
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2010
`Page 4
`
`
`
`Declaration of Jakob Falkman
`IPR2021-00145
`
`15.
`
`This process of review typically takes at least one to two months.
`
`Upon completion of the process, a response will be sent by letter to the requesting
`
`U.S. court explaining the judicial authority’s determination and, if the
`
`determination is adverse to execution of the Letter of Request, sometimes the
`
`judicial authority will provide the requesting U.S. court with an opportunity to
`
`submit a statement responding to the matters referenced in the determination.
`
`16.
`
`If the Letter of Request is determined to be enforceable, the
`
`examination of a witness or production of documents will be scheduled to take
`
`place at the Swedish court and the U.S. court will be notified hereof in advance.
`
`The time for the examination of a witness or production of documents depends on
`
`the individual circumstances but is likely to be at least 1-2 months after the
`
`Swedish court’s determination on enforceability.
`
`17.
`
`As a result of Sweden’s declarations concerning common law
`
`document discovery, it may sometimes be necessary to submit multiple Letters of
`
`Request in order to try to obtain document discovery as broad as that sought by
`
`parties to U.S. litigation. For example, in order to obtain discovery of a broad
`
`category of documents (such as, for example, all emails in the possession of a
`
`witness relevant to a particular issue), it may be necessary first to submit a Letter
`
`of Request seeking an examination of the witness in order to obtain testimony
`
`concerning specific documents or categories of documents that are in the witness’
`
`5
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2010
`Page 5
`
`
`
`Declaration of Jakob Falkman
`IPR2021-00145
`
`possession. In the event that the witness testifies with sufficient specificity
`
`concerning such documents, a second Letter of Request may then be submitted
`
`requesting production of those specifically-defined documents or categories of
`
`documents, with a greater likelihood that the Letter of Request will be determined
`
`to be enforceable by the pertinent Swedish judicial authority.
`
`18.
`
`The practical result of this process is that it may take more than six
`
`months, excluding any time expended obtaining the issuance of a Letter of Request
`
`from a U.S. court or other authority, to obtain discovery of broad categories of
`
`documents from a witness in Sweden. Even then, with the benefit of prior
`
`testimony of a witness, enforcement of broad “U.S.-style” document discovery in
`
`Sweden is very rare.
`
`19.
`
`I declare that all statements made herein of my knowledge are true,
`
`and that all statements made on information and belief are believed to be true, and
`
`that these statements were made with the knowledge that willful false statements
`
`and the like so made are punishable by fine or imprisonment, or both, under
`
`Section 1001 of Title 18 of the United States Code.
`
`Dated: March 5, 2021
`
`________________________________
`Jakob Falkman
`
`6
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2010
`Page 6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
