IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`RFCYBER CORP.,
`
`
`v.
`
`GOOGLE LLC,
`
`
`
`RFCYBER CORP.,
`
`
`Plaintiff,
`
`
`Defendant.
`
`Plaintiff,
`
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS
`AMERICA, INC.
`
`
`Defendants.
`
`
`Civil Action No. 2:20-cv-00274-JRG
`(Lead Case)
`
`
`Jury Trial Demanded
`
`Civil Action No. 2:20-cv-00335-JRG
`(Member Case)
`
`
`Jury Trial Demanded
`
`
`
`
`
`
`
`
`
`
`
`GOOGLE’S NOTICE OF INTENT TO SERVE SUBPOENAS
`ON NXP USA, INC.
`
`PLEASE TAKE NOTICE that, pursuant to Rules 30(b)(6) and 45 of the Federal Rules
`
`of Civil Procedure, Defendant Google LLC will cause the subpoenas attached hereto as Exhibit 1
`
`to be served on third party NXP USA, Inc. (“NXP”).
`
`The document subpoena requires NXP to produce documents on or before July 21, 2021,
`
`at the offices of Munger, Tolles & Olson LLP, 350 South Grand Avenue, 50th Floor,
`
`Los Angeles, California 90071, or at such other time and place as may be mutually agreed upon
`
`by counsel.
`
`RFCyber's Exhibit No. 2007, IPR2021-00956
`Page 001
`
`

`

`DATED: July 8, 2021
`
`
`By:
`
`/s/ Heather E. Takahashi
`HEATHER E. TAKAHASHI
`
`
`Michael E. Jones
`Texas Bar No. 10929400
`POTTER MINTON, PC
`110 North College, Suite 500
`Tyler, TX 75702
`Telephone: (903) 597-8311
`Facsimile: (903) 993-0846
`mikejones@potterminton.com
`
`OF COUNSEL:
`
`Zachary M. Briers (pro hac vice)
`Heather E. Takahashi (pro hac vice)
`Vincent Y. Ling (pro hac vice)
`Robin S. Gray (pro hac vice)
`Mica L. Moore (pro hac vice)
`MUNGER, TOLLES & OLSON LLP
`350 South Grand Avenue, Fiftieth Floor
`Los Angeles, California 90071-3426
`Telephone: (213) 683-9100
`Facsimile: (213) 687-3702
`zachary.briers@mto.com
`heather.takahashi@mto.com
`vinny.ling@mto.com
`robin.gray@mto.com
`mica.moore@mto.com
`
`ATTORNEYS FOR
`DEFENDANT GOOGLE LLC
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing document was served by email on counsel for all
`
`parties on July 8, 2021.
`
`
`
`
`
`/s/ Heather E. Takahashi
`By: Heather E. Takahashi
`
`
`
`RFCyber's Exhibit No. 2007, IPR2021-00956
`Page 002
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`
`
`
`
`RFCyber's Exhibit No. 2007, IPR2021-00956
`Page 003
`
`RFCyber's Exhibit No. 2007, IPR2021-00956
`Page 003
`
`

`

`AO 88B (Rev. 02/14) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action
`
`UNITED STATES DISTRICT COURT
`for the
` Eastern District of Texas
`__________ District of __________
`
`Civil Action No.
`
`2:20-cv-00274-JRG
`
`))))))
`
`RFCYBER CORP.
`Plaintiff
`v.
`GOOGLE LLC
`
`Defendant
`
`To:
`
`SUBPOENA TO PRODUCE DOCUMENTS, INFORMATION, OR OBJECTS
`OR TO PERMIT INSPECTION OF PREMISES IN A CIVIL ACTION
`NXP USA, INC., 6501 William Cannon Drive West, Austin, TX 78735 USA
`c/o Corporation Service Company, 211 E. 7th Street, Suite 620, Austin, TX 78701-3218 USA
`(Name of person to whom this subpoena is directed)
`✔
`(cid:117) Production: YOU ARE COMMANDED to produce at the time, date, and place set forth below the following
`documents, electronically stored information, or objects, and to permit inspection, copying, testing, or sampling of the
`material:
`
`SEE ATTACHMENT A
`
`Place:
`
`Munger, Tolles & Olson LLP
`350 S. Grand Ave., 50th Fl. Los Angeles, CA 90071
`Attn: Heather E. Takahashi
`
`Date and Time:
`
`07/21/2021 5:00 pm
`
`(cid:117) Inspection of Premises: YOU ARE COMMANDED to permit entry onto the designated premises, land, or
`other property possessed or controlled by you at the time, date, and location set forth below, so that the requesting party
`may inspect, measure, survey, photograph, test, or sample the property or any designated object or operation on it.
`
`Place:
`
`Date and Time:
`
`The following provisions of Fed. R. Civ. P. 45 are attached – Rule 45(c), relating to the place of compliance;
`Rule 45(d), relating to your protection as a person subject to a subpoena; and Rule 45(e) and (g), relating to your duty to
`respond to this subpoena and the potential consequences of not doing so.
`07/08/2021
`Date:
`
`CLERK OF COURT
`
`Signature of Clerk or Deputy Clerk
`
`OR
`
`/s/ Heather E. Takahashi
`Attorney’s signature
`
`The name, address, e-mail address, and telephone number of the attorney representing (name of party)
`, who issues or requests this subpoena, are:
`Defendant GOOGLE LLC
`Heather E. Takahashi, 350 S. Grand Ave., 50th Fl., Los Angeles, CA 90071 Heather.takahashi@mto.com 213-638-9531
`Notice to the person who issues or requests this subpoena
`If this subpoena commands the production of documents, electronically stored information, or tangible things or the
`inspection of premises before trial, a notice and a copy of the subpoena must be served on each party in this case before
`it is served on the person to whom it is directed. Fed. R. Civ. P. 45(a)(4).
`
`RFCyber's Exhibit No. 2007, IPR2021-00956
`Page 004
`
`

`

`AO 88B (Rev. 02/14) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action (Page 2)
`
`Civil Action No.
`
`2:20-cv-00274-JRG
`
`PROOF OF SERVICE
`(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)
`
`I received this subpoena for (name of individual and title, if any)
`.
`
`on (date)
`
`(cid:117) I served the subpoena by delivering a copy to the named person as follows:
`
`(cid:117) I returned the subpoena unexecuted because:
`
`on (date)
`
`; or
`
`Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, I have also
`tendered to the witness the fees for one day’s attendance, and the mileage allowed by law, in the amount of
`$
`.
`
`My fees are $
`
`for travel and $
`
`for services, for a total of $
`
`0.00
`
`.
`
`.
`
`I declare under penalty of perjury that this information is true.
`
`Date:
`
`Additional information regarding attempted service, etc.:
`
`Server’s signature
`
`Printed name and title
`
`Server’s address
`
`RFCyber's Exhibit No. 2007, IPR2021-00956
`Page 005
`
`

`

`AO 88B (Rev. 02/14) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action(Page 3)
`
`(c) Place of Compliance.
`
`Federal Rule of Civil Procedure 45 (c), (d), (e), and (g) (Effective 12/1/13)
`(ii) disclosing an unretained expert’s opinion or information that does
`not describe specific occurrences in dispute and results from the expert’s
`study that was not requested by a party.
`(C) Specifying Conditions as an Alternative. In the circumstances
`described in Rule 45(d)(3)(B), the court may, instead of quashing or
`modifying a subpoena, order appearance or production under specified
`conditions if the serving party:
`(i) shows a substantial need for the testimony or material that cannot be
`otherwise met without undue hardship; and
`(ii) ensures that the subpoenaed person will be reasonably compensated.
`
` (1) For a Trial, Hearing, or Deposition. A subpoena may command a
`person to attend a trial, hearing, or deposition only as follows:
` (A) within 100 miles of where the person resides, is employed, or
`regularly transacts business in person; or
` (B) within the state where the person resides, is employed, or regularly
`transacts business in person, if the person
` (i) is a party or a party’s officer; or
` (ii) is commanded to attend a trial and would not incur substantial
`expense.
`
` (2) For Other Discovery. A subpoena may command:
` (A) production of documents, electronically stored information, or
`tangible things at a place within 100 miles of where the person resides, is
`employed, or regularly transacts business in person; and
` (B) inspection of premises at the premises to be inspected.
`
`(d) Protecting a Person Subject to a Subpoena; Enforcement.
`
` (1) Avoiding Undue Burden or Expense; Sanctions. A party or attorney
`responsible for issuing and serving a subpoena must take reasonable steps
`to avoid imposing undue burden or expense on a person subject to the
`subpoena. The court for the district where compliance is required must
`enforce this duty and impose an appropriate sanction—which may include
`lost earnings and reasonable attorney’s fees—on a party or attorney who
`fails to comply.
`
` (2) Command to Produce Materials or Permit Inspection.
`(A) Appearance Not Required. A person commanded to produce
`documents, electronically stored information, or tangible things, or to
`permit the inspection of premises, need not appear in person at the place of
`production or inspection unless also commanded to appear for a deposition,
`hearing, or trial.
`(B) Objections. A person commanded to produce documents or tangible
`things or to permit inspection may serve on the party or attorney designated
`in the subpoena a written objection to inspecting, copying, testing, or
`sampling any or all of the materials or to inspecting the premises—or to
`producing electronically stored information in the form or forms requested.
`The objection must be served before the earlier of the time specified for
`compliance or 14 days after the subpoena is served. If an objection is made,
`the following rules apply:
`(i) At any time, on notice to the commanded person, the serving party
`may move the court for the district where compliance is required for an
`order compelling production or inspection.
` (ii) These acts may be required only as directed in the order, and the
`order must protect a person who is neither a party nor a party’s officer from
`significant expense resulting from compliance.
`
` (3) Quashing or Modifying a Subpoena.
`(A) When Required. On timely motion, the court for the district where
`compliance is required must quash or modify a subpoena that:
` (i) fails to allow a reasonable time to comply;
`(ii) requires a person to comply beyond the geographical limits
`specified in Rule 45(c);
`(iii) requires disclosure of privileged or other protected matter, if no
`exception or waiver applies; or
`(iv) subjects a person to undue burden.
`(B) When Permitted. To protect a person subject to or affected by a
`subpoena, the court for the district where compliance is required may, on
`motion, quash or modify the subpoena if it requires:
`(i) disclosing a trade secret or other confidential research,
`development, or commercial information; or
`
`(e) Duties in Responding to a Subpoena.
`
` (1) Producing Documents or Electronically Stored Information. These
`procedures apply to producing documents or electronically stored
`information:
`(A) Documents. A person responding to a subpoena to produce documents
`must produce them as they are kept in the ordinary course of business or
`must organize and label them to correspond to the categories in the demand.
`(B) Form for Producing Electronically Stored Information Not Specified.
`If a subpoena does not specify a form for producing electronically stored
`information, the person responding must produce it in a form or forms in
`which it is ordinarily maintained or in a reasonably usable form or forms.
`(C) Electronically Stored Information Produced in Only One Form. The
`person responding need not produce the same electronically stored
`information in more than one form.
`(D) Inaccessible Electronically Stored Information. The person
`responding need not provide discovery of electronically stored information
`from sources that the person identifies as not reasonably accessible because
`of undue burden or cost. On motion to compel discovery or for a protective
`order, the person responding must show that the information is not
`reasonably accessible because of undue burden or cost. If that showing is
`made, the court may nonetheless order discovery from such sources if the
`requesting party shows good cause, considering the limitations of Rule
`26(b)(2)(C). The court may specify conditions for the discovery.
`
`(2) Claiming Privilege or Protection.
`(A) Information Withheld. A person withholding subpoenaed information
`under a claim that it is privileged or subject to protection as trial-preparation
`material must:
`(i) expressly make the claim; and
`(ii) describe the nature of the withheld documents, communications, or
`tangible things in a manner that, without revealing information itself
`privileged or protected, will enable the parties to assess the claim.
`(B) Information Produced. If information produced in response to a
`subpoena is subject to a claim of privilege or of protection as
`trial-preparation material, the person making the claim may notify any party
`that received the information of the claim and the basis for it. After being
`notified, a party must promptly return, sequester, or destroy the specified
`information and any copies it has; must not use or disclose the information
`until the claim is resolved; must take reasonable steps to retrieve the
`information if the party disclosed it before being notified; and may promptly
`present the information under seal to the court for the district where
`compliance is required for a determination of the claim. The person who
`produced the information must preserve the information until the claim is
`resolved.
`
`(g) Contempt.
`The court for the district where compliance is required—and also, after a
`motion is transferred, the issuing court—may hold in contempt a person
`who, having been served, fails without adequate excuse to obey the
`subpoena or an order related to it.
`
`For access to subpoena materials, see Fed. R. Civ. P. 45(a) Committee Note (2013).
`
`RFCyber's Exhibit No. 2007, IPR2021-00956
`Page 006
`
`

`

`Attachment A to Document Subpoena
`
`INSTRUCTIONS
`The following instructions apply to the discovery requests below and should be
`considered as a part of each such request.
`Each request below under the heading “DOCUMENTS AND THINGS TO BE
`1.
`PRODUCED” shall be answered pursuant to and in the manner prescribed by Rules 26, 34, and
`45 of the Federal Rules of Civil Procedure.
`In construing these requests: (i) the singular shall include the plural and the plural
`2.
`shall include the singular; (ii) masculine or feminine pronouns shall not exclude the other gender;
`(iii) the conjunctions “and” and “or” shall be read either disjunctively or conjunctively so as to
`bring within the scope of this request all information that might otherwise be construed to be
`outside its scope; (iv) each of the words “all,” “each,” “any,” and “every” shall be deemed to
`include each of the other functional words; (v) the definition of each term defined above shall be
`used regardless of whether the term is capitalized; (vi) the word “including” is non-limiting; and
`(vii) the past tense of a verb used herein includes the present tense and the present tense includes
`the past tense.
`If You object to any subpart or portion of a request or objects to providing certain
`3.
`information requested, state Your objection and answer the unobjectionable subpart(s) of the
`request and/or supply the unobjectionable information requested. If You object to any subpart or
`portion of a request or objects to providing certain information requested, state whether any
`responsive materials are being withheld on the basis of that objection.
`If any of the following requests cannot be responded to in full after exercising
`4.
`reasonable diligence to secure the information, please state so, supply the information for those
`portions Plaintiff is able to answer, and supply whatever information Plaintiff has concerning the
`portion of the request that cannot be answered in full. If Plaintiff’s response is qualified in any
`particular request, set forth the details of such qualification.
`
`
`
`1
`
`
`RFCyber's Exhibit No. 2007, IPR2021-00956
`Page 007
`
`

`

`For each of the requests contained herein, a request for a document shall be
`5.
`deemed to include a request for any and all transmittal sheets, cover letters, exhibits, enclosures,
`or attachments to such document, in addition to the document. Each requested document or thing
`shall be produced in its entirety and with all attachments, without deletions or excisions,
`regardless of whether You consider the entire document or any attachment thereto to be relevant
`to this case or responsive to these requests. If any document or thing cannot be produced in full,
`it shall be produced to the extent possible and accompanied by an explanation that states why
`production of the remainder is not possible.
`For each of the requests contained herein, the information sought is that which is
`6.
`current to the date of Your response. All the requests contained herein are of a continuing nature
`and require You in accordance with Fed. R. Civ. P. 26(e)(1) to promptly produce for inspection
`and copying any documents or things that You reasonably may acquire, obtain, locate or
`identify.
`For those produced documents that require other documents to render the
`7.
`produced documents either comprehensible or not misleading, produce all such other documents.
`If no document or thing exists that is responsive to a particular request, state that
`8.
`no responsive materials exist.
`If any information, document, or thing is withheld from production on the basis of
`9.
`privilege, work product, immunity, third-party confidentiality requirements, or any similar claim,
`then You shall produce a log within a reasonable time as agreed by the parties or as ordered by
`the Court.
`Unless otherwise stated, these requests require the production of documents and
`10.
`things that were prepared, created, written, sent, dated, or received at any time.
`DEFINITIONS
`The term “You,” “Your,” or “NXP” refers to NXP USA, Corp., together with its
`1.
`successors, predecessors, divisions, wholly or partially owned subsidiaries, domestic or foreign
`
`
`
`2
`
`
`RFCyber's Exhibit No. 2007, IPR2021-00956
`Page 008
`
`

`

`parents, affiliates, partnerships, and joint ventures; and any and all the directors, officers,
`employees, attorneys, consultants, agents, and representatives of the foregoing.
`The term “RFCyber” refers to RFCyber Corp., and any parent, subsidiary
`2.
`(whether direct or indirect), affiliate, successor, predecessor, division, partnership, and joint
`venture; and any director, officer, employee, attorney, consultant, agent, representative, and
`persons acting or purporting to act on behalf of the foregoing, including without limitation
`RFCyber Corp (Texas), RFCyber Corp. (California), Rich House Global Technology Ltd., and
`Shenzhen RFCyber Asset Management.
`“RFCyber’s Patents” means U.S. Patent Nos. 8,118,218; 8,448,855; 9,189,787;
`3.
`9,240,009; and 10,600,046, as well as all applications and patents that share a common priority
`claim to any of the foregoing.
`“Document” or “documents” means documents and things as broadly defined in
`4.
`Rule 34 of the Federal Rules of Civil Procedure and includes papers of all kinds and non-paper
`information storage means, including by way of example and without limitation, originals, and
`copies, however made, of letters, memoranda, notes, computer generated data, source code,
`calendars, records, minutes, studies, reports, white papers, presentation materials, notebooks,
`messages, telegrams, ledgers, legal instruments, agreements, drawings, sketches, graphs, prints,
`hand-written notes, rough drafts, secretarial notes, work pads, diaries, films, tapes, videotapes,
`pictures, photographs, books, pamphlets, publications, advertisements, sales literature, brochures,
`manuals, price lists, announcements, electronic mail messages, or any other writings, records, or
`tangible objects produced or reproduced mechanically, electrically, electronically,
`photographically, or chemically, whether or not in Your possession or under Your control, no
`matter how prepared or by whom, and all drafts or copies prepared in connection with such
`documents whether used or not.
`“Communication” or “communications” means any transmission of information
`5.
`between persons, whether written or oral, and whether transmitted in person, electronically, via
`
`
`
`3
`
`
`RFCyber's Exhibit No. 2007, IPR2021-00956
`Page 009
`
`

`

`hard copy or via any other means. For the avoidance of doubt, the term “document” includes all
`documents relating to any communication.
`The terms “concern,” “concerning,” “evidence,” “evidencing,” “relating to,”
`6.
`“relate to,” “relates to,” “related to,” “referring or relating to,” “referring to,” “regarding,” and
`“refer or relate to” shall be construed broadly to mean in whole or in part alluding to, responding
`to, concerning, relating to, connected with, involving, commenting on, in respect of, about,
`associated with, discussing, evidencing, showing describing, reflecting, analyzing, summarizing,
`memorializing, consisting of, constituting, identifying, stating, tending to support, tending to
`discredit, referring to, or in any way touching upon the subject matter of the exemplary request.
`DOCUMENTS AND THINGS TO BE PRODUCED
`Documents referring or relating to RFCyber.
`1.
`Documents and things related to work conducted for or at the request of RFCyber
`2.
`or individuals affiliated with RFCyber, including without limitation Daniel Fung, Hsin (Sean)
`Pan, Liang Seng Koh, Xiangzhen Xie, Fu-Tong (Adam) Cho, Fu-Liang (Ken) Cho, Joe Zheng,
`and Michael Letterer.
`Communications between You and Daniel Fung, Hsin (Sean) Pan, Liang Seng
`3.
`Koh, Xiangzhen Xie, Fu-Tong (Adam) Cho, Fu-Liang (Ken) Cho, Joe Zheng, and Michael
`Letterer regarding RFCyber, RFCyber’s work, or RFCyber’s Patents.
`Documents that refer or relate to RFCyber’s Patents or any patent applications
`4.
`related to RFCyber’s Patents.
`Documents sufficient to show the operation, features, and functionalities of any
`5.
`smart card or secure element, including personalization, provisioning, encryption, security, and
`use of such smart card or secure element, in a mobile phone that was in public use (including
`trials or public testing), on sale, or otherwise available to the public in the United States prior to
`September 24, 2006.
`Documents sufficient to describe the nature of any public use, sale, or other public
`6.
`availability of a mobile phone with a smart card or secure element prior to September 24, 2006,
`
`
`
`4
`
`
`RFCyber's Exhibit No. 2007, IPR2021-00956
`Page 010
`
`

`

`including the location, purpose, distribution channel, mobile phone manufacturer, mobile phone
`operator, payment card processor, credit card company, bank, and other third parties (other than
`consumers) involved in such public use, sale, or other public availability.
`Documents sufficient to show the operation, features, and functionalities of any
`7.
`smart card or secure element, including personalization, provisioning, encryption, security, and
`use of such smart card or secure element, in a mobile phone that was in public use (including
`trials or public testing), on sale, or otherwise available to the public in the United States between
`September 25, 2006, and January 16, 2012.
`Documents sufficient to describe the nature of any public use, sale, or other public
`8.
`availability of a mobile phone with a smart card or secure element between September 25, 2006,
`and January 16, 2012, including the location, purpose, distribution channel, mobile phone
`manufacturer, mobile phone operator, payment card processor, credit card company, bank, and
`other third parties (other than consumers) involved in such public use, sale, or other public
`availability.
`Documents sufficient to show the operation, features, and functionalities of any
`9.
`smart card or secure element, including personalization, provisioning, encryption, security, and
`use of such smart card or secure element, that was used for payment transactions or public
`transportation and that was in public use (including trials or public testing), on sale, or otherwise
`available to the public in the United States before September 24, 2006.
`Documents sufficient to show the operation, features, and functionalities of the
`10.
`MIFARE Secure Access Modules (SAMs) prior to January 16, 2012, including without
`limitation the use of the MIFARE SAM for personalizing, provisioning, encrypting, securing,
`and communicating with smart cards or secure elements in a mobile phone.
`
`
`
`
`
`
`5
`
`
`RFCyber's Exhibit No. 2007, IPR2021-00956
`Page 011
`
`