Case 6:20-cv-00505-ADA Document 43 Filed 02/09/21 Page 1 of 6
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`NEONODE SMARTPHONE LLC,
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`APPLE INC.,
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`v.
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`Plaintiff,
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`Defendant.
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`Civil Action No. 6:20-cv-00505-ADA
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`JURY TRIAL DEMANDED
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`PLAINTIFF NEONODE SMARTPHONE LLC’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
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`Plaintiff Neonode Smartphone LLC (“Neonode”) hereby moves for issuance of a Letter of
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`Request for International Judicial Assistance (“Letter of Request”) to compel the attendance at
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`deposition of, and production of documents and physical evidence by, two witnesses residing in
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`Sweden: Magnus Goertz, the inventor named on the two patents in suit, and Björn Thomas
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`Eriksson (“Thomas Eriksson”), the co-founder (with Mr. Goertz) of the Swedish company that
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`developed and commercialized the technology claimed in the patents.
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`Neonode requests issuance of the Letter of Request pursuant to Rule 28(b) of the Federal
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`Rules of Civil Procedure, 28 U.S.C. § 1781, and the Hague Convention of 18 March 1970 on the
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`Taking of Evidence Abroad in Civil or Commercial Matters, T.I.A.S. 7444, 23 U.S.T. 2555,
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`reprinted in 28 U.S.C. § 1781 (“Hague Evidence Convention”), which is in force between the
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`United States and Sweden. A proposed Letter of Request is attached hereto as Exhibit A, following
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`the model set out in the Hague Evidence Convention.
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`Case 6:20-cv-00505-ADA Document 43 Filed 02/09/21 Page 2 of 6
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`MEMORANDUM OF POINTS AND AUTHORITIES
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`Neonode brings the present application because it believes that Magnus Goertz and
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`Thomas Eriksson possess information relevant to this litigation involving both Apple and
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`Samsung.1 Mr. Goertz is the inventor of the patents at issue in this litigation – U.S. Patent Nos.
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`8,095,879 (“the ‘879 Patent”) and 8,812,993 (“the ‘993 Patent;” collectively, “the Patents in Suit”).
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`Mr. Goertz co-founded, with Mr. Eriksson, a company in Sweden in 2000, which was later
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`renamed Neonode AB, to develop and commercialize a mobile phone that would integrate an
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`innovative gestural user interface with touch screen technology. Messrs. Goertz and Eriksson
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`referred to this user interface as the “Neno” technology, and it is the subject of the Patents in Suit.
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`Mr. Eriksson co-founded this company with Mr. Goertz, worked with him to commercialize the
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`technology, and presented a prototype of what later became the Neonode N1 mobile phone at a
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`trade show in Germany in March 2002 – evidence that Mr. Goertz had conceived of and had
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`diligently worked to reduce the patented technology to practice long before he filed the application
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`to which the Patents in Suit claim priority, on December 10, 2002.
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`This evidence is relevant to the validity of the Patents in Suit. Apple alleges in its Answer
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`that the Patents in Suit are invalid for failure to comply with the requirements of, e.g., 35 U.S.C.
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`§§ 102 and 103. (Dkt. # 14, at 33) In addition, Apple and Samsung have petitioned the Patent
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`Trial and Appeal Board (“PTAB”) for inter parties review of the asserted claims of the Patents in
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`Suit, alleging that they are obvious in light of a variety of references, including references claiming
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`priority to 2001 and 2002. Neonode has reason to believe that Mr. Goertz conceived of the
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`1 The Court has coordinated this action, Case No. 6:20-cv-00505, with Neonode Smartphone LLC’s action alleging
`infringement of the Patents in Suit by Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc., Case
`No. 6:20-cv-00507. Accordingly, Neonode seeks the testimony and documents requested pursuant to the attached
`Letter of Request for use in both of the coordinated actions.
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`Case 6:20-cv-00505-ADA Document 43 Filed 02/09/21 Page 3 of 6
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`inventions claimed in his patents by no later than the year 2000, and diligently worked to reduce
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`his inventions to practice thereafter, which would entitle the Patents in Suit to priority over at least
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`two of the references relied on by defendants in their IPR petitions. E.g., ATI Technologies ULC
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`v. Iancu, 920 F.3d 1362, 1369-75 (Fed. Cir. 2019). Accordingly, evidence such as the testimony
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`of Messrs. Goertz and Eriksson on the topics identified in Attachment A to the Letter of Request,
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`and documents and physical evidence (i.e., prototypes of the Neonode mobile phone that were
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`demonstrated at marketing events prior to the priority date of the Patents in Suit) concerning the
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`development of the user interface of the Neonode mobile phone and their work on commercializing
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`the phone as specified in Attachment B to the Letter of Request, is relevant to the validity of the
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`Patents in Suit.
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`In addition, Neonode believes that Mr. Goertz and Mr. Eriksson possess knowledge
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`pertinent to secondary considerations of nonobviousness, such as the commercial success of the
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`Neonode N1, N1m and N2 mobile phones that incorporated the patented Neno user interface, and
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`industry praise for the patented Neno user interface. Moreover, Mr. Goertz and Mr, Eriksson
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`possess knowledge concerning a (now expired) license agreement that Neonode Sweden AB
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`entered into with Samsung Electronics Co., Ltd., on or about July 13, 2005, and that Mr. Goertz
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`signed on behalf of Neonode Sweden AB, pursuant to which Samsung was licensed under the
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`patent application that later matured into the ‘879 Patent and to which the ‘993 Patent claims
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`priority. (Case No. 6:20-cv-00507, Dkt. #1, ¶ 17) Their knowledge concerning their discussions
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`and negotiation with Samsung concerning this license of the application to which the Patents in
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`Suit claim priority is relevant to, e.g., the value of a reasonable royalty for infringement of the
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`patents.
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`Case 6:20-cv-00505-ADA Document 43 Filed 02/09/21 Page 4 of 6
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`Moreover, Mr. Eriksson was involved in discussions with Samsung and its counsel over
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`the course of several years concerning the Neno user interface, the technology for which was
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`asserted by Samsung against Apple’s “swipe to unlock” patent in the Apple v. Samsung litigation.
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`(Case No. 6:20-cv-00507, Dkt. #1, ¶¶ 18, 25-26) Among other things, Mr. Eriksson signed at least
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`one affidavit and one “statement” concerning the Neno user interface technology at the request of
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`Samsung in that litigation. Mr. Eriksson’s knowledge concerning his communications with
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`Samsung and its counsel are relevant to Samsung’s knowledge of the Patents in Suit, and therefore
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`to Samsung’s potential liability for indirect infringement as well as willfulness.
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`Since the requested discovery is pertinent to the priority dates of the Patents in Suit, it is
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`pertinent to the issues to be addressed in the next few months in two Petitions for Inter Parties
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`Review, one against each of the Patents in Suit, recently filed jointly by Apple and Samsung.
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`Sweden has filed a declaration under the Hague Evidence Convention stating that “Letters of
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`Request issued for the purpose of obtaining pre-trial discovery of documents as known in common
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`law countries will not be executed,” and has clarified that such document requests include any that
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`seek
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`broad
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`categorical
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`discovery
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`of
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`the
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`type
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`common
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`in U.S.
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`litigation.
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`https://www.hcch.net/en/instruments/conventions/status-
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`table/notifications/?csid=560&disp=resdn. Accordingly, it may be necessary to serially pursue
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`multiple Letters of Request, identifying particular documents as they become known through
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`deposition testimony. Given the likely need for multiple round trips and the importance of this
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`evidence to the IPRs filed against the Patents in Suit, Neonode requests that the Court permit the
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`requested discovery to go forward at this time.
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`Although the Court has vacated all non-venue deadlines in this action pending the
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`resolution of Apple’s motion to transfer this action to the Northern District of California, (Dkt.
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`Case 6:20-cv-00505-ADA Document 43 Filed 02/09/21 Page 5 of 6
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`#40) there is no reason to delay taking this discovery. The Court’s OGP – Patent Case, v. 3.2,
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`provides that “the Court will permit limited discovery by agreement of the parties, or upon request,
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`where exceptional circumstances warrant. For example, if discovery outside the United States is
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`contemplated, the Court will be inclined to allow such discovery to commence before the Markman
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`hearing.” This is exactly such discovery.
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`Accordingly, the Court should grant Neonode’s motion and issue the attached Letter of
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`Request pursuant to the Hague Convention. In the event the Court grants the instant application,
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`Neonode requests that the Court execute the Letter of Request with the Court’s signature and seal
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`and provide an original of the executed Letter of Request to Neonode’s undersigned counsel for
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`forwarding to the appropriate authority in the Netherlands. Neonode will then transmit the
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`executed Letter of Request to the Swedish authority for execution.
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`DATED: February 9, 2021
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`Craig D. Cherry (State Bar No. 24012419)
`Email: craig@swclaw.com
`Justin W. Allen (State Bar No. 24081977)
`Email: justin@swclaw.com
`STECKLER, WAYNE, COCHRANE
`CHERRY, PLLC
`100 N. Ritchie Road, Suite 200
`Waco, Texas 76712
`913 Franklin Ave., Suite 201
`Waco, Texas 76701
`Telephone: (254) 776-3336
`Facsimile: (254) 776-6823
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`Respectfully submitted,
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`By: /s/ Philip Graves
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`Philip J. Graves (CA State Bar No. 153441)
`Telephone: (213) 330-7147
`Email: philipg@hbsslaw.com
`Greer N. Shaw (CA State Bar No. 197960)
`Telephone: (213) 330-7145
`Email: greers@hbsslaw.com
`HAGENS BERMAN SOBOL SHAPIRO LLP
`301 North Lake Avenue, Suite 920
`Pasadena, CA 91101
`Facsimile: (213) 330-7152
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`Counsel for Plaintiff Neonode Smartphone
`LLC
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`Case 6:20-cv-00505-ADA Document 43 Filed 02/09/21 Page 6 of 6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 9th day of February 2021, I electronically filed the foregoing
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`with the Clerk of Court using the CM/ECF system which will send notification of such filing to
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`the following:
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`/s/ Philip Graves
` Philip Graves
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`Betty H. Chen
`Fish & Richardson PC
`111 Congress Avenue, Suite 810
`Austin, TX 78701
`(512) 472-5070
`Fax: 512/320-8935
`Email: Bchen@fr.com
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`Benjamin C. Elacqua
`Kathryn A. Quisenberry
`Fish and Richardson PC
`1221 McKinney Street Suite 2800
`Houston, TX 77010
`713-654-5300
`Fax: 713-652-0109
`Email: Elacqua@fr.com
`Email: Quisenberry@fr.com
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`Attorneys for Defendant Apple Inc.
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`Jared A. Smith
`Fish & Richardson P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`(858) 678-5070
`Fax: (878) 678-5099
`Email: Jasmith@fr.com
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`Aamir A. Kazi
`Fish & Richardson P.C.
`1180 Peachtree Street NE, 21st Floor
`Atlanta, GA 90309
`(404) 892-5005
`Fax: (404) 892-5002
`Email: kazi@fr.com
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