IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACODIVISION
`
`NEONODE SMARTPHONE LLC,
`
`Plaintiff,
`
`Vv.
`
`SAMSUNGELECTRONICS CO. LTD.,
`and SAMSUNG ELECTRONICS
`AMERICA,INC.,
`:
`
`Defendant.
`
`
`
`
`
`
`
`
`Civil Action No. 6:20-cv-00507-ADA
`
`JURY TRIAL DEMANDED
`
`TO THE APPROPRIATE AUTHORITY IN SWEDEN:
`
`SAMSUNG ELECTRONICS CO. LTD. AND SAMSUNG ELECTRONICS AMERICA,
`INC.’S REQUEST FOR INTERNATIONALJUDICIAL ASSISTANCE PURSUANT TO
`THE HAGUE CONVENTION OF 18 MARCH1970 ON THE TAKING OF EVIDENCE
`ABROAD IN CIVIL OR COMMERCIAL MATTERS
`
`WEST\292978371.6
`
`

`

`
`
`The United States District Court for the Western District ofTexas respectfully requests the
`assistance described herein as necessary in theinterests ofjustice,
`
` Sender 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
`
`
`
`
`Central Authority of the
`Division for Criminal Cases andInternational Judicial Co-
`Requested State
`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
`
`
`
`
`
`
`
` the
`Persons
`to whom
`John M. Guaragna
`
`is to be
`executed request
`DLA PIPER LLP (US)
`
`
`
`
`returned
`401 Congress Avenue, Suite 2500
`
`
`Austin, TX 78701-3799
`Tel: 512.457.7125
`Fax: 512.457.7001
`john.guaragna@dlapiper.com
`
`
`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
`
`
`
` h
`
`
`whic
`Date
`by
`the
`Assoonas reasonably practicable.
`
`requesting
`authority
`
`requires receipt
`
`of
`the
`
`
`
`
`
`
`In conformity with Article 3 ofthe Convention, the United States District Court for the Western
`
`District of Texas, Waco Division, honorably submits the following request:
`
`
`
`
`
`WEST\292978371.6
`
`

`

`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-
`b. To the competent
`authority of Sweden(article|operation
`3, a)
`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 vy. Samsung Electronics Co.
`Ltd., et al., Civil Action File Number 6:20-cv-507-ADA
`
`and
`parties
`representatives
`representatives
`
`their
`(including
`in
`the
`
`Yeongtong-gu, Suwon, 443-742, South Korea
`
`Jakob Falkman
`Advokatfirman Hammarskiéld & 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
`SamsungElectronics Co. Ltd.
`129 Samsung-Ro, Maetan-3dong,
`
`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
`Telephone: (213) 330-7147
`Facsimile: (213) 330-7152
`Email: philipg@hbsslaw.com
`
`Defendant
`
`WEST\292978371.6
`
`

`

`SamsungElectronics America, Inc.
`85 Challenger Rd.
`Ridgefield Park, NJ 07660
`
`
`
`
`John M. Guaragna
`Representatives
`
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`
`Austin, TX 78701-3799
`Tel: 512.457.7125
`
`
`Fax: 512.457.7001
`
`john.guaragna@dlapiper.com
`
`
`Karl-Oscar Dalin
`
`Advokatfirma DLA Piper Sweden KB
`Sveavagen 4
`
`PO Box 7315
`
`SE - 103 90
`
`Stockholm
`
`Sweden
`
`+46 8 701 78 00
`
`Karl-Oscar.Dalin@se.dlapiper.com
`
`
`
`The nature of the litigation from which the Requests
`a.
`Nature
`of
`the
`stem is a complaint of patent
`infringement
`in the
`proceedings (article 3, c)
`
`
`
`
`Western District of Texas involving U.S. Patent Nos.
`8,095,879 and 8,812,993 (“the Patents-in-Suit”).
`
`
`
`
`b. Summary of complaint
`The complaint alleges that Samsung has infringed and
`continues to infringe the Patents in Suit by making,
`using, selling, offering for sale and importing into the
`
`United States certain mobile devices including certain
`
`user interface elements.
`
`
`
`
`Samsung’s defenses include that the alleged invention
`
`of the Patents-in-Suit was not conceived or reduced to
`
`practice prior to the filing date of each patent, and
`inequitable conduct on behalf of the applicant of the
`Patents-in-Suit due to failure to disclose proper
`inventorship of the Patents-in-Suit.
`
`
`
`
`The nature ofthe proceeding being requested atthis time
`a. Evidence to be obtained
`is
`or other judicial act to be
`
`
`
`
`to Compel Testimony from Magnus
`(1) a Request
`performed(article 3, d)
`
`
`
`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
`
`c. Summary of defense
`
`WEST\292978371.6
`
`

`

`B,
`(3) a Request to Compel Testimony from Bjérn Thomas
`Eriksson on the topics set forth in Attachment A; and
`(4) a Request for Production of Documents and Physical
`Evidence by Bjérn Thomas Eriksson as set forth in
`Attachment B.
`
`b. Purpose of the judicial
`act sought
`
`is requested in the interests of
`The evidence sought
`justice, to establish at trial information in the possession
`of the witnesses relating to (i) the conception and
`reduction to practice of the alleged inventions claimed
`in the Patents-in-Suit, (ii) inventorship and prosecution
`of the Patents-in-Suit, (iii) ownership of the Patents-in-
`Suit, (iv) commercialization of products that allegedly
`embody certain aspects of the alleged inventions
`claimed in the Patents-in-Suit, (v) the development of
`
`Neno and_(vi)user interface technology,
`
`
`
`communications and licensing concerning Plaintiff,
`Defendants, and/ortheir related entities.
`
`Stockholm
`
`By way of background,the earliest priority date for the
`Patents-in-Suit that
`is supported on the -face of the
`patents is December 10, 2002. Neonode Smartphone
`has asserted that both Patents-in-Suit are entitled to a
`prior date of May 5, 2000. Magnus Goertz is a co-
`founder of NeonodeInc. and the sole named inventor of
`the patents at issue in this litigation, U.S. Patent Nos.
`8,095,879 and 8,812,993 (“the Patents-in-Suit”). Bjorn
`Thomas Eriksson, a co-founder of Neonode Inc., may
`also have information relevant
`to conception and
`reduction to practice,
`inventorship of the Patents-in-
`Suit, as well as commercialization efforts before
`December 10, 2002 of Neonode Inc. products that
`allegedly embody certain aspects of the claimed subject
`matter of the Patents-in-Suit.
`
`Identity and address of any
`person to
`be
`examined
`(Article 3, e)
`
`WEST\292978371.6
`
`Magnus Goertz
`Personal id. No. 690626-0077
`Valhallavagen 5
`Lidingd
`181 32 SWEDEN
`
`Bjérn ThomasEriksson
`Personalid. No. 700414-0054
`Narvavagen 20
`
`

`

`the
`that
`Requirement
`Evidence be Given on Oath
`or Affirmation (Art. 3(h
`
`Special methods—or
`This Letter of Request includes the following requests:
`procedure to be’ followed
`(Art. 3(i) and 9)
`
`The witnesses should be examined under oath or
`affirmation as permissible under Swedish law.
`
`Psi 22 SWEDEN
`Questions to be put to the
`See Attachment A
`persons to be examined or
`statement of the subject
`matter about whichthey are
`to be examined (Article 3,
`Documents or other
`property to be inspected
`
`See Attachment B
`
`to complete the taking of evidence soughtin
`
`That this Letter of Request be granted and the
`e
`evidence-taking proceeding be performed;
`°
`That copies of the documents and materials
`requested in Attachment B be provided to the
`representatives of the parties prior to scheduling the
`examination of the requested witnesses;
`°
`That attorneys for the Defendant 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;
`°
`That representatives of the parties be permitted
`to examine and/or cross-examinethe witness;
`°
`That the testimony be taken remotely via video
`link via a videoconferencing application, and recorded
`as allowed under Swedish law;
`°
`That
`an
`authorized shorthand writer/court
`reporter shall attend the examination who shall record
`the oral
`testimony spoken in English verbatim (in
`English) and prepare a transcript of the evidence;
`.
`That
`an
`authorized
`shorthand writer/court
`reporter attend the examination whoshall recordtheoral
`testimony spoken in Swedish verbatim (in Swedish) and
`prepare a transcript of the evidence;
`°
`That an authorized interpreter for each side be
`present for the examination who shall
`translate the
`questions and oral
`testimony between Swedish and
`English; and
`°
`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
`
`WEST\292978371.6
`
`

`

`Attachment A andthe additional questionsrelated 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.
`
`Defendants have engaged the following counselto assist
`with this process, and the relevant authorities in Sweden
`are authorized and requested to communicate directly
`with them concerning this process:
`
`Karl-Oscar Dalin
`Advokatfirma DLA Piper Sweden KB
`Sveavdgen 4
`PO Box 7315
`SE - 103 90
`Stockholm
`Sweden
`+46 8 701 78 00
`Karl-Oscar.Dalin@se.dlapiper.com
`
`for the
`requested that United States counsel
`is
`It
`Defendantsat the addressset forth in paragraph 6 above,
`should be contacted for any information relating to the
`execution of this Letter of Request.
`
`No attendanceofjudicial personnel is requested.
`
`them and their respective attorneys.
`
`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
`Personnelof 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))
`
`The privilege or duty of the witness(es) to refuse to give
`evidence shall,
`in addition to what follows from the
`Swedish Procedural Code (Rdttegangsbalken),
`include
`the right to withhold evidence if giving such evidence
`would (1) subject them to a real and appreciable danger
`of criminalliability in the United States, or (2) disclose
`a confidential and privileged communication between
`
`WEST\292978371.6
`
`

`

`RsSO
`17.|Fees and costs (Art. 14 and|Plaintiff and Defendant shall bear any fees and costs
`26)
`within the scope of Articles 14 and 26.
`
`
`
`
`
`DATE OF REQUEST
`
`Pron \ 20 2021
`
`
`
`United States District Cou
`Western District of Texas
`800 Franklin Avenue, Ro
`
`Waco, Texas 76701
`
`301
`
`(signature and seal)
`
`pourw ©
`
`WEST\292978371.6
`
`

`

`ATTACHMENTA
`
`
`
`
`
`

`

`- REQUEST TO COMPEL TESTIMONY
`
`DEFINITIONS
`|
`The Local Rulesfor the United States District Court ofthe Western District
`
`I.
`
`of Texas are hereby incorporated by reference.
`2.
`“Neonode” means,
`individually and collectively, the companies named
`
`Neonode Smartphone LLC, Neo5 AB, Neonode AB, Neonode Sweden AB, NeonodeInc., and
`
`Neonode Technologies AB. and all predecessors, successors, predecessors-in-interest, successors-
`in-interest, subsidiaries, divisions, parents, and/oraffiliates, past or present, any companies that
`
`have a controlling interest in Neonode, and any current or former employee, officer, director,
`
`principal, agent, consultant, representative, or attorney thereof, or anyone acting on their behalf.
`3,
`The “Patents-in-Suit” means U.S, Patent No. 8,095,879 and U.S. Patent No.
`
`8,812,993.
`
`4.
`
`The "879 patent” means U.S. Patent No. 8,095,879 and U.S. Patent
`
`Application No. 10/315,250.
`
`5.
`The “’993 patent” means U.S. Patent No. 8,812,993 and U.S. Patent
`Application No. 10/31 5,250.
`
`6.
`“Prior Art” meansall publications, patents, physical devices, prototypes,
`public product descriptions, or products concerning the subject matter of the Patents-in-Suit
`existing and publicly available prior to December 10, 2002.
`
`7.
`
`“Person”refers to any individual, corporation, proprietorship, association,
`
`joint venture, company, partnership, or other business or legal entity, including governmental
`
`bodies and agencies.
`
`WEST\29297837 1.6
`
`

`

`“Entity” refers to any individual, corporation, proprietorship, association,
`8.
`joint venture, company, partnership, or other business or legal entity, including governmental
`
`bodies and agencies.
`
`“Communication” means any written, oral, telephonic or other inquiries,
`9.
`|
`and all other documents evidencing any verbal or nonverbal interaction between Persons and
`
`entities.
`
`10.
`
`“Thing(s)”
`
`is used in the broadest
`
`sense
`
`to include
`
`everything
`
`contemplated by Rule 34(ay(! )(B) ofthe Federal Rules ofCivil Procedure.
`11.
`“Include” and “including” shall mean including without limitation.
`
`12.
`
`Use ofthe singular form of a word also includesthe plural form ofthe word
`
`and vice-versa.
`
`The words “and” and “or”shall be construed conjunctively or disjunctively,
`13.
`whichever makesthe requestmostinclusive.
`|
`
`14.
`“including without
`
`The word “all” means “any and all” and the word including” means
`limitation,” as necessary,
`to bring within the scope of these requests
`
`Documents or Things that might otherwise be beyond their scope.
`| 15.
`Any pronoun shall be construed to refer to the masculine, feminine, or
`
`genderneutralas in each case is most appropriate.
`
`16.
`
`The Requested State means Sweden.
`
`|
`
`TOPICS OF TESTIMONY
`
`A. The Alleged Conception and Reduction to Practice of the Alleged Inventions
`Claimed in the Patents-in-Suit (Letter of Request, § 8(b), Item (i))
`
`1.
`
`The scope and content of the subject matter described and claimedin the Patents-
`
`in-Suit.
`
`WEST\292978371.6
`
`

`

`
`
`
`2.
`The conception of the subject matter claimed in the Patents-in-Suit, including, but
`notlimited to, the conception date(s), the circumstances of conception including the identity of
`each Person who contributedto the conception and the specific contribution(s) made by each such
`
`Person, the specific contributions to conception made by Bjérn ThomasEriksson, the date and
`content of the first written description or depiction of the claimed subject matter in a printed
`
`publication and/or drawings; Documentsrelating 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 ofthe foregoing.
`3.
`Diligence in the reduction to practice ofthe subject matter claimed in the Patents-
`in-Suit, including, but not limited to, the date(s) of such diligence from the period of alleged
`conception and up to the filing date of the patent, the circumstances of such diligence including
`
`the identity and role of each Person who participated in or has knowledgeof such diligence, Bjérn
`|
`Thomas Eriksson’sparticipation or knowledge of suchdiligence; Documentsrelating to any ofthe
`foregoing; the types and locations ofDocumentsrelating to any ofthe foregoing; and the identities
`ofPersons in possession ofDocumentsrelating to any ofthe foregoing.
`4,
`Thefirst mantfacture, first demonstration, first disclosure, first written description,
`
`first publication, first prototype, first use, first public use, first offer for sale, first sale, and first
`|
`importation into the United States ofthe subject matter claimed in the Patents-in-Suit.
`5.
`Any perceived advantages or disadvantages, problems, features, or improvements
`over the Prior Art of any invention claimedin the Patents-in-Suit.
`
`|
`
`6.
`
`Any long-felt but unmet need for the alleged inventions claimed in the Patents-in-
`
`Suit, failure by others to develop the alleged inventions claimed in the Patents-in-Suit, skepticism
`
`by others of the alleged inventions claimed in the Patents-in-Suit, commercial success of the
`
`WEST\292978371.6
`
`
`
`

`

`alleged inventions claimed in the Patents-in-Suit, awards or industry recognition based on any
`
`alleged inventions claimed by the Patents-in-Suit, copying by others of the alleged inventions
`claimed in the Patents-in-Suit, or unexpected results of the alleged inventions claimed in the
`
`Patents-in-Suit.
`
`(ii)
`
`B. Inventorship and Prosecution ofthe Patents-in-Suit (Letter ofRequest, § 8(b), Item
`
`|
`
`:
`
`7.
`
`Anydifficulty or challenge in implementing the alleged inventions claimed in the
`
`Patents-in-Suit including any specific contribution of Bjér Thomas Eriksson, Magnus Goertz, or
`
`any otherparty to overcomeany suchdifficulty or challenge.
`
`8.
`
`The decision to seek patent protection for the alleged inventions claimed in the
`
`Patents-in-Suit.
`
`9.
`
`10.
`
`The decisionto identify Magnus Goertz as the only inventorfor the Patents-in-Suit.
`
`Thomas Eriksson’s contribution to the technology described in the Patents-in-Suit
`
`and the inventions claimed in the Patents-in-Suit.
`
`11.
`
`12.
`
`Anyinvestigation into the inventorship ofthe Patents-in-Suit.
`
`Any agreement between MagnusGoertz, ThomasEriksson, and/or Neonoderelated
`
`to the naming of Magnus Goertz as the sole inventorof the Patents-in-Suit.
`13.
`The circumstances surrounding the Inventors Declaration For Patent Application
`
`document, which includes a signature allegedly by Magnus Goertz, dated March 5, 2003, for a
`patent application filed December10, 2002.
`in the preparation,
`involvement
`14.
`Magnus Goertz and Thomas Eriksson’s
`submission, and prosecution ofthe ’879 Patent and the ’993 Patent, 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
`
`WEST\292978371.6
`
`4
`
`

`

`(whether abandonedornot), including, but not limited to, the identity of the Persons whodrafted,
`
`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 Documents relating to any of the foregoing; and the identities of Persons in possession of
`
`Documents relating to any ofthe foregoing.
`15.
`The prosecution ofall patents and patent applications related to the Patents-in-Suit,
`including but not limited to the identity ofthe Persons whodrafted, revised, contributed to, or were
`‘otherwise involved in the prosecution of said patents or patent applications and the decision about
`
`whatPrior 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 Documentsrelating to any of the foregoing.
`
`Any and all knowledge of Prior Art by Mr. Goertz, Mr. Eriksson, or any Persons
`16.
`|
`having duty under 37 C.FR. § 1.56 during prosecutions of any of the Patents-in-Suit.
`17.
`All writings, publications, abstracts, papers, presentations, memoranda, reports, or
`
`speeches (whether published or not) authored or given, in whole or in part, by Mr. Goertz, Mr.
`
`Eriksson, Neonode Inc., or its predecessors or successors, and that relate, in whole or in part, to
`
`the subject matter disclosed or claimed in the Patents-in-Suit; 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 Documentsrelating to any ofthe foregoing.
`18.
`The Prior Art Magnus Goertz and/or Thomas Eriksson are aware ofthat relates to
`the general subject matter of any claim ofthe Patents-in-Suit, and how and when Magnus Goertz
`
`and/or Thomas Erikssonfirst became aware of the Prior Art.
`
`WEST\292978371.6
`
`

`

`19.
`
`Anystudies, investigations, searches, analyses, or reports concerning the Patents-
`
`in-Suit,
`
`including, without
`
`limitation,
`
`those regarding the actual or alleged infringement,
`
`patentability, invalidity, validity, enforceability, unenforceability, or scope of any claim of the
`
`Patents-in-Suit; the identities of Persons involved in generating any such studies, investigations,
`
`searches,analyses, or reports concerning the Patents-in-Suit; the types and locations of Documents
`relating to any ofthe foregoing; and the identities ofPersons in possession ofDocumentsrelating
`
`to any of the foregoing. This includes, without limitation, any analyses, investigations, studies,
`reports, opinions, or contentions regarding the Patents-in-Suit, and any assertion by any Person
`
`that any ofthe Patents-in-Suit is valid, invalid, enforceable, unenforceable, and/or infringed or not
`
`infringed.
`C. Ownership ofthe Patents-in-Suit (Letter of Request, § 8(b), Item (iii))
`20.—Anypast or current relationship between Magnus Goertz and/or Thomas Eriksson
`and Neonode Smartphone, Neos AB, Neonode AB, Neonode Sweden AB, Neonode Inc., or
`
`Aequitas, or any affiliates thereof, including the terms of any contract or consulting arrangement.
`2l.
`The formation of NeoS AB, Neonode AB, Neonode Sweden AB, and Neonode,
`
`Inc. and/oranyaffiliates thereofor entities related thereto.
`
`22.
`
`The assignments of rights in the Patents-in-Suit from Magnus Goertz to Neonode
`
`Sweden AB, dated on or about December 2, 2004, including any compensation arrangements
`related to any such assignment ofrights.
`23.
`The assignment of rights in the Patents-in-Suit from Neonode Sweden AB to
`Neonode AB,dated on or about July 4, 2006, including any compensation arrangementsrelated to
`
`any such assignmentofrights.
`
`WEST\292978371.6
`
`|
`
`

`

`24.
`
`‘The assignmentofrights in the Patents-in-Suit from Neonode AB to NeonodeInc.,
`
`dated on or about December 5, 2008, including any compensation arrangements related to any
`
`such assignmentofrights.
`
`25.|Any payments or other forms of compensation or remuneration made to Magnus
`
`Goertz or ThomasEriksson in connection with the Patents-in-Suit, including, withoutlimitation,
`
`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 Documentsrelating to any of the foregoing.
`
`D. Commercialization of Products That Allegedly Embody Certain Aspects of the
`Alleged Inventions Claimed in the Patents-in-Suit (Letter of Request, § 8(b), Item
`{iv))
`
`The design ane development of the Neonode N1, Nim, and N2 mobile phones,
`26.
`including, without limitation, development of requirements, specifications, and prototypes the
`
`Neonode N1, Nim, and N2 mobile phonesincluding the specific contributions of Bjérn Thomas
`
`Eriksson.
`
`27.
`
`The commercialization and marketing of the Neonode NI, N1m, and N2 mobile
`
`phones, including, without limitation, dissemination of product literature and demonstration of
`|
`prototypes, including suchactivities at press conferences, industry conferences, and trade shows.
`
`E. The Development of Neno User Interface Technology (Letter of Request, § 8(b),
`Item(v))
`
`28.|Magnus Goertz and Thomas Eriksson’s development of the Neno user interface
`
`during the period January 1, 2000 up to and including December 10, 2002.
`
`29.
`
`The identities of, and work performed by, Neonode employees, consultants,
`
`contractors, and vendors, and others working with, for, or under the direction of Magnus Goertz
`
`WEST\292978371.6
`
`7
`
`

`

`and/or Thomas Eriksson, with respect
`
`to the development of the Neonode mobile phone
`
`incorporating the Neno user interface during the period January 1, 2000 up to and including
`December 10, 2002.
`|
`
`The development of any prototype of the Neno user interface or Neonode mobile
`30.
`phoneincorporating the Neno userinterface, during the period January 1, 2000 up to and including
`
`December 10, 2002.
`
`31.
`
`The use, display, demonstration, sale, offers for sale, or publication, of the Neno
`
`interface or Neonode Phoneorits prototypes that incorporated the Neno userinterface during the
`
`period January 1, 2000 up to and including December10, 2002.
`
`32.
`
`Identity of and work performed by third parties regarding the design and
`
`development of the Neno user interface or Neonode mobile phone incorporating the Nenouser
`
`interface during the period of January 1, 2000 until December 10, 2002.
`33.
`Magnus Goertz and/orThomas Eriksson’s activities and communications regarding
`the Neonode products incorporating the Neno user interface purportedly demonstrated at the
`
`March 2002 CeBit event in Germany.
`
`34.|Magnus Goertz and/or ThomasEriksson’s activities and communications regarding
`
`the Neonode products incorporating the Neno user interface purportedly demonstrated at the
`
`December 2002 press conference in Stockholm, Sweden.
`
`Sales and preorders of the Neonode mobile phone incorporating the Neno user
`35.
`interface during the period January 1, 2000 up to and including December10, 2002.
`
`WEST\292978371.6
`
`

`

`F. Communications and Licensing Concerning Plaintiff, Defendants, and/or Their
`
`
`Related Entities (Letter of Request,§8(b), Item (vi
`
`36.|Magnus Goertz’s and/or ThomasEriksson’s knowledge regarding the July 13, 2005
`
`Research & Development and License Agreement between Neonode Sweden AB and Samsung
`
`Electronics Co., Ltd.
`
`37.
`
`Communications between Magnus Goertz and/or Thomas Eriksson and Samsung
`
`Electronics Co., Ltd. or Samsung Electronics America, Inc. concerning the Patents-in-Suit, the
`patent applications from which the Patents-in-Suit issued, or the Neno user interface technology. .
`38.
`Communications or negotiations between Magnus Goertz and/or ThomasEriksson
`
`and any of Neo5 AB, Neonode AB, Neonode Sweden AB, Neonode Inc., or Aequitas, or any
`
`affiliates thereof relating to the Patents-in-Suit.
`
`39.|Communications between Magnus Goertz or Thomas Eriksson and any attorney
`
`representing Neonode including in-house or outside Neonode counsel.
`
`40.|Communications between Magnus Goertz and Thomas Eriksson concerning the
`
`Patents-in-Suit, the Neno user interface technology, or development or patenting of the alleged
`
`inventions claimed in the Patents-in-Suit, including but not limited to the inventorship of the
`
`Patents-in-Suit.
`
`41.
`
`Any topic raised by another party during the examination of Magnus Goertz or
`
`ThomasEriksson.
`
`WEST\292978371.6
`
`

`

`ATTACHMENTB
`
`

`

`REQUEST FOR PRODUCTION OF DOCUMENTS AND PHYSICAL EVIDENCE
`
`|
`
`DEFINITIONS
`
`1.
`
`The Local Rules forthe United States District Court of the Western District
`
`of Texas are hereby incorporated by reference.
`
`2.
`“Neonode” means,
`individually and collectively, the companies named
`Neonode Smartphone LLC, Neos AB, Neonode AB, Neonode Sweden AB, Neonode Inc., and
`Neonode Technologies AB. and all predecessors, successors, predecessors-in-interest, successors-
`
`in-interest, subsidiaries, divisions, parents, and/oraffiliates, past or present, any companies that
`
`have a controlling interest in Neonode, and any current or former employee, officer, director,
`
`principal, agent, consultant, representative, or attorney thereof, or anyoneacting ontheir behalf.
`
`8,812,993.
`
`3.
`
`4,
`
`The “Patents-in-Suit” means U.S. Patent No. 8,095,879 and U.S. Patent No.
`
`The “879 patent” means U.S. Patent No. 8,095,879 and U.S. Patent
`
`Application No. 10/315,250.
`
`5.
`The ‘993 patent” means U.S. Patent No. 8,812,993 and U.S. Patent
`Application No. 10/315,250.
`
`6.
`
`“Aequitas” means Aequitas Technologies 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, and any
`
`current or former employee, officer, director, principal, agent, consultant, representative, or
`
`attorney thereof, or anyone acting on their behalf.
`
`WEST\292978371.6
`
`

`

`“Prior Art” meansall publications, patents, physical devices, prototypes,
`7.
`public product descriptions, or products concerning the subject matter of the Patents-in-Suit
`existing and publicly available prior to December 10, 2002.
`
`8.
`
`“Person”refers to any individual, corporation, proprietorship, association,
`
`joint venture, company, partnership, or other business or legal entity, including governmental
`
`bodies and agencies,
`
`REQUESTS FOR PRODUCTION OF DOCUMENTS
`
`1.
`
`All Documents produced or otherwise provided by Magnus Goertz and Thomas
`
`Eriksson to Neonode’s legal counsel.
`
`2.
`
`A copy of Mr. Goertz’s most recent resume and/or curriculum vitae, and a copy of
`
`Mr. Eriksson’s most recent resume and/or curriculum vitae.
`
`3.
`
`The purchase orders, vendor invoices, statements of work, and commercial
`
`contracts generated by or provided to Magnus Goertz and/or Thomas Eriksson relating to the
`
`Neonode mobile phone incorporating the Neno interface before December10, 2001.
`
`4,
`
`The product literature describing the Neonode mobile phone incorporating the
`
`Nenointerface distributed before December10, 2002.
`
`—S.
`
`The Neonode mobile phone incorporating the Neno interface purportedly
`
`demonstrated at the March 2002 CeBit event in Germany.
`
`6.
`
`The Neonode mobile phone incorporating the Neno interface purportedly
`
`demonstrated at the December 2002 Stockholm press conference.
`
`7.
`
`Communications before December 10, 2001 between Magnus Goertz or Thomas
`
`Eriksson relating to the Neonode mobile phone incorporating the Neno interface or
`
`implementation.of the alleged inventions claimed in the Patents-in-Suit.
`
`WEST\292978371.6
`
`

`

`8.
`
`All Documents and communications related to the preparation, submission, and
`
`prosecutionofthe applications for the Patents-in-Suit.
`
`9.
`
`All Prior Art of which Magnus Goertz or Thomas Eriksson are or were awarethat
`
`relates to the general subject matter of any claim ofthe Patents-in-Suit, including all Documents
`
`or events whetheror not it was deemed priorart at the time.
`10.
`All Documents and/or communications regarding any advantages or disadvantages,
`problems, features, or improvements overthe prior art ofany invention claimed in the Patents-in-
`
`Suit.
`
`11.
`
`All Documents and/or communications regarding the use, display, sales, offers for
`
`sale, or makingavailable to the public, the Neonode mobile phone incorporating the Nenointerface
`
`prior to December10, 2002.
`
`12.
`
`All Documents and communications related to efforts by Mr. Goertz or Mr.
`
`Eriksson, or on their behalf, to commercialize any of the inventions of the Patents-in-Suit.
`
`13.
`
`Communications between Mr. Goertz or Mr. Eriksson and Samsung Electronics
`
`Co., Ltd. or Samsung Electronics America, Inc. concerning the ’879 Patent, the "993 Patent, or the
`
`Nenouserinterface technology.
`14,
`Communications between Mr. Goertz or Mr. Eriksson and any attorney
`representing Neonode or Aequitas including in-house or outside Neonode counsel.
`|
`15.|Communications between Magnus Goertz and Thomas Eriksson concerning the
`
`Patents-in-Suit or the Neno user interface technology.
`
`16.|Documents sufficient to show the creation or registration of any legal business
`
`entities by or for Magnus Goertz or Thomas Eriksson in connection with their efforts to develop
`
`WEST\292978371.6
`
`

`

`or commercialize the Neonode mobile phone incorporating the Nenointerface, including NeoS
`AB, Neonode AB, Neonode Sweden AB, and NeonodeInc.
`17.
`All Documents and Communications between Magnus Goertz and/or Thomas
`Eriksson and any other Person,
`including, without
`limitation, Neonode Smartphone orits
`attorneys, Neonode Inc. or its attorneys, or Aequitas or its attorneys, that refer or relate to any
`
`compensation, both monetary, and nonmonetary, that Magnus Goertz, Thomas Eriksson, Neonode
`Inc., or any other Person paid or received in connection with the invention, assignment, license,
`sale, or transfer of any rights in orto the Patents-in-Suit.
`
`18.
`
`Documents provided to all other parties related to the currentlitigation.
`
`WEST\292978371.6
`
`