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IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

NEONODE SMARTPHONE LLC,

Plaintiff, 

v. 

SAMSUNG ELECTRONICS CO. LTD., 

and SAMSUNG ELECTRONICS 

AMERICA, INC., 

Defendants.

Civil Action No. 6:20-cv-00507-ADA 

JURY TRIAL DEMANDED 

DEFENDANTS SAMSUNG ELECTRONICS CO. LTD. AND SAMSUNG 

ELECTRONICS AMERICA, INC.’S UNOPPOSED 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 

Defendants Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc.’s 

(“Defendants” or “Samsung”) hereby move for issuance of a Letter of Request for International 

Judicial Assistance (“Letter of Request”) to compel the attendance at deposition of, production of 

documents and physical evidence by, two witnesses residing in Sweden: Magnus Goertz, the 

inventor named on the two Patents-in-Suit, and Björn Thomas Eriksson (“Thomas Eriksson”), the 

co-founder (with Mr. Goertz) of Neonode, Inc. 

Samsung requests issuance of the Letter of Request pursuant to Rule 28(b) of the Federal 

Rules of Civil Procedure, and in conformity with the Hague Convention of 18 March 1970 on the 

Taking of Evidence Abroad in Civil or Commercial Matters, T.I.A.S. 7444, 23 U.S.T. 2555, 

reprinted in 28 U.S.C. § 1781 (“Hague Evidence Convention”), which is in force between the 

United States and Sweden. Issuance of the Letters of Request under the Hague Evidence 

Convention is a proper method for collecting documents and the taking of testimony of persons 

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residing abroad. Fed. R. Civ. P. 28(b); Pain v. United Tech. Corp., 637 F.2d 775, 788-90 (D.C. 

Cir. 1980), cert. denied, 454 U.S. 1128 (1991). 

A proposed Letter of Request is attached hereto as Exhibit A, following the model set out 

in the Hague Evidence Convention. 

STATEMENT OF THE CASE 

Samsung brings the present application because it believes that Magnus Goertz and 

Thomas Eriksson possess information relevant to this litigation involving both Neonode and 

Samsung. Mr. Goertz is the soled named inventor on the patents at issue in this litigation – U.S. 

Patent Nos. 8,095,879 (“the ‘879 Patent”) and 8,812,993 (“the ‘993 Patent;” collectively, “the 

Patents-in-Suit”). Plaintiff Neonode has alleged Mr. Goertz and Mr. Eriksson are knowledgeable 

regarding the development of the Neno user interface and the Neonode mobile phone, which 

Plaintiff Neonode alleges to be relevant to the Patents-in-Suit. 

Although the Court has stayed this action pending the resolution of Apple’s Motion to 

Transfer Venue to the Northern District of California in the Neonode v. Apple case (Case No. 6:20-

cv-00505 (see Dkt. No. 36), there is no reason to delay taking this discovery. The Court’s OGP – 

Patent Case, v. 3.2, provides that “the Court will permit limited discovery by agreement of the 

parties, or upon request, where exceptional circumstances warrant. For example, if discovery 

outside the United States is contemplated, the Court will be inclined to allow such discovery to 

commence before the Markman hearing.” Because Mr. Goertz and Mr. Eriksson are third parties 

that reside in Sweden, this is exactly such discovery. Furthermore, this Court specifically 

authorized taking Mr. Goertz’s deposition prior to Markman because of his unique knowledge 

about alleged conception and reduction to practice of the claimed inventions in the Patents-in-Suit. 

See Dkt. No. 28 at 16-19. Finally, Neonode Smartphone’s Motion for Issuance of Letter of Request 

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to Examine Persons, Inspect Documents and Inspect Property Pursuant to the Hague Convention 

on the Taking of Evidence Abroad in Civil or Commercial Matters (Dkt. No. 39) indicates that it 

too believes that discovery related to Mr. Goertz and Mr. Eriksson should occur before the 

Markman hearing in this case. 

PROCEDURE 

Samsung respectfully asks this Court to issue a Letter of Request to examine Mr. Goertz 

and Mr. Eriksson and inspect documents as set forth in Exhibit A to the Request for International 

Judicial Assistance below in order to fully develop its claims and defenses in this action. The 

evidence sought in the Letter of Request cannot be obtained by other means. 

In the event the Court grants the instant application, Samsung requests that the Court 

execute the Letter of Request with the Court’s signature and seal, and provide an original of the 

executed Letter of Request to Samsung’s undersigned counsel. Samsung will then transmit the 

executed Letter of Request to the Swedish authority for execution. 

Accordingly, Samsung requests that the Court sign under seal and issue the attached Letters 

of Request to the appropriate authority in conformity with the Hague Evidence Convention, 

including requests to compel the attendance at deposition and production of documents by Magnus 

Goertz and Björn Thomas Eriksson in the form as attached as Exhibit A. 

Dated: April 19, 2021 

Respectfully submitted, 

/s/ John M. Guaragna 

John M. Guaragna 

Texas Bar No 24043308 

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 

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Mark D. Fowler (Pro hac vice)

Bar No. 124235 

mark.fowler@dlapiper.com 

Erik Fuehrer (Pro hac vice) 

Bar No. 252578 

Erik.fuehrer@dlapiper.com 

DLA PIPER LLP (US) 

2000 University Avenue 

East Palo Alto, CA 94303-2214 

Tel: 650.833.2000 

Fax: 650.833.2001 

Tiffany Miller (Pro hac vice) 

Tiffany.miller@dlapiper.com 

Susan Acquista (Pro hac vice) 

Susan.acquista@dlapiper.com 

DLA PIPER LLP (US) 

401 B Street, Suite 1700 

San Diego, CA 92101-4297 

Tel: 619.699.2700 

Fax: 619.699.2701 

Benjamin Mueller (Pro hac vice) 

Benjamin.mueller@dlapiper.com 

DLA PIPER LLP (US) 

444 West Lake Street, Suite 900 

Chicago, IL 60606-0089 

Tel: 312.368.4000 

Fax: 312.236.7516 

ATTORNEY FOR SAMSUNG ELECTRONICS 

CO. LTD, and SAMSUNG ELECTRONICS

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CERTIFICATE OF SERVICE 

The undersigned certifies that on this 19th day of April 2021, all counsel of record who are 

deemed to have consented to electronic service are being served with a copy of this document 

through the Court’s CM/ECF system under Local Rule CV-5(b)(1). Any other counsel of record 

will be served by a facsimile transmission and/or first class mail. 

/s/ John M. Guaragna 

John M. Guaragna 

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