UNITED STATES DISTRICT COURT 

SOUTHERN DISTRICT OF FLORIDA 

Miami Division 

Case No.: 20-22051-CIV-GAYLES 

SISVEL INTERNATIONAL S.A., 3G 

LICENSING S.A., and SISVEL S.p.A., 

Plaintiffs, 

v. 

HMD AMERICA, INC. and 

HMD GLOBAL OY, 

Defendants. 

NOTICE OF HEARING

Defendants HMD AMERICA, INC. and HMD GLOBAL OY (“HMD”) provide notice of 

a discovery calendar hearing before MAGISTRATE JUDGE ALICIA OTAZO-REYES on 

December 15, 2020, at 3:30pm ET, wherein HMD will seek to compel Plaintiffs SISVEL 

INTERNATIONAL S.A., 3G LICENSING S.A. and SISVEL S.p.A. (“Sisvel”) to provide 

supplemental answers to certain Interrogatories and supplemental responses to a Request for 

Production of Documents. 

On October 9, 2020, HMD served Plaintiffs with HMD’s Second Set of Interrogatories 

and Second Set of Requests for Production. Plaintiffs propounded responses to HMD’s Second 

Set of Interrogatories and HMD’s Second Set of Requests for Production on November 9, 2020, 

but some of Plaintiffs’ responses were deficient. Pursuant to correspondence between the 

parties, Plaintiffs served a supplemental response to Interrogatories Nos. 11, 12, and 14 on 

November 24, 2020, but refused to supplement others, and Plaintiffs refused to supplement their 

Case 1:20-cv-22051-DPG Document 39 Entered on FLSD Docket 12/10/2020 Page 1 of 4
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Responses to HMD’s Second Set of Requests for Production. Plaintiffs’ responses to 

Interrogatories Nos. 11, 12, 13, and 16 and Request for Production No. 21 remain deficient.1 

HMD seeks intervention of this Court to remedy the deficiencies in Plaintiffs’ responses, 

and thus seeks the entry of an Order Compelling Better Responses and All Responsive 

Documents to the following requests. 

DISCOVERY MATTERS TO BE HEARD BY THE HONORABLE MAGISTRATE 

JUDGE ALICIA OTAZO-REYES 

Interrogatory 11: For each Asserted Patent, identify all Persons who have held any 

interest in the patent by ownership, assignment, license, financial interest, security interest, or 

otherwise, including an identification of the nature, extent, and title of any such interest in the 

patent. 

Interrogatory 12: For each Asserted Patent and for each Person who has held any 

interest in the patent by ownership, assignment, license, financial interest, security interest, or 

otherwise, describe the consideration or value given by the Person to obtain the interest. 

Interrogatory 13: For each Asserted Patent, describe the consideration or value given 

by or on behalf of Plaintiffs to become the assignee and owner of the right, title, and interest in 

and to the patent, as alleged in the Complaint. 

Interrogatory 16: For each Accused Instrumentality, explain all facts and circumstances 

surrounding any purchase, use, test, investigation, or examination of that Accused 

Instrumentality by Plaintiffs, including but not limited to acts Plaintiffs took to form a belief that 

such Accused Instrumentality practiced an Asserted Claim and an identification of all person(s) 

who performed such purchase, use, test, investigation, or examination, and all Documents or 

Things reviewed. 

Request for Production 21: All documents that refer or relate to any inventor of any 

Asserted Patent. 

 

1

 Plaintiffs’ counsel has marked Plaintiffs’ responses to HMD’s Second Set of Interrogatories 

(served on November 9, 2020) and supplemental response to Interrogatories Nos. 11, 12, and 14 

(served on November 24, 2020) as HIGHLY CONFIDENTIAL - ATTORNEYS’ EYES ONLY. 

In addition, HMD’s counsel letter dated December 2, 2020 (the “Letter”) outlines the disputes 

between the parties but reflects information in such responses. HMD’s counsel will confer with 

Plaintiffs’ counsel regarding appropriate redactions and will file such redacted responses and the 

Letter when the parties reach agreement. Contemporaneously, HMD’s counsel will also file 

Plaintiffs’ responses to HMD’s Second Set of Requests for Production served on November 9, 

2020. 

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CERTIFICATIONS 

Pursuant to Local Rule 7.1(a)(3)(A), the undersigned hereby certifies that counsel for 

HMD has conferred by telephone and by correspondence with Sisvel’s counsel in a good faith 

effort to resolve this matter, but that the parties have been unable to do so as of the last meet and 

confer telephone conference on December 1, 2020. The above-mentioned issues are those 

remaining. Defendants will notify the Court should the Parties resolve any disputes prior to the 

Hearing. The Undersigned also certifies that he has confirmed the time and date of this hearing, 

and that Sisvel’s counsel is available at the date and time listed above. 

Dated: December 10, 2020 

WILLIAM J. MCCABE, Esq. 

Pro hac vice 

wmccabe@perkinscoie.com 

GENE W. LEE, Esq. 

Pro hac vice 

glee@perkinscoie.com 

MATTHEW J. MOFFA, Esq. 

Pro hac vice

mmoffa@perkinscoie.com 

SHYAM PALAIYANUR, Esq. 

Pro hac vice 

spalaiyanur@perkinscoie.com 

PERKINS COIE LLP 

1155 Avenue of the Americas, 22nd floor 

New York, NY 10036 

Telephone: (212) 262-6900 

Facsimile: (212) 977-1649 

Respectfully submitted, 

/s/ Joseph W. Bain 

JOSEPH W. BAIN, ESQ. 

Florida Bar No. 860360 

Email Address: jbain@shutts.com 

SHUTTS & BOWEN LLP 

1100 CityPlace Tower 

525 Okeechobee Boulevard 

West Palm Beach, Florida 33401 

Telephone: (561) 835-8500 

Facsimile: (561) 650-8530 

ATTORNEYS FOR DEFENDANTS 

HMD AMERICA, INC., AND 

HMD GLOBAL OY

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CERTIFICATE OF SERVICE 

I HEREBY CERTIFY that on this 10th day of December, 2020, I electronically filed the 

foregoing with the Clerk of Court by using the CM/ECF system which served a copy on the following: 

Francesca Russo-Di Staulo, Esq. 

Robert Ralph Jimenez, Esq. 

Jorge Tadeo Espinosa, Esq. 

GrayRobinson, P.A. 

333 S.E. 2nd Avenue, Suite 3200 

Miami, FL 33131 

Telephone: 305-416-6880 

Fax: 305-416-6887 

Email: francesca.russo@gray-robinson.com 

Email: robert.jimenez@gray-robinson.com

Email: jorge.espinosa@gray-robinson.com 

Attorneys for Plaintiffs, Sisvel International S.A., 3g Licensing S.A., and Sisvel S.p.A. 

By: /s/ Joseph W. Bain

Joseph W. Bain 

Florida Bar No. 860360 

jbain@shutts.com

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