EXHIBIT G 

 

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 1 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

1

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS

WACO DIVISION

NEONODE SMARTPHONE, LLC ) Docket No. WA 20-CA-505 ADA

)

vs. ) Waco, Texas

)

APPLE, INC. ) October 23, 2020

__________________________________________________________

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS

WACO DIVISION

NEONODE SMARTPHONE, LLC ) Docket No. WA 20-CA-507 ADA

)

vs. ) Waco, Texas

)

SAMSUNG ELECTRONICS CO., )

LTD., SAMSUNG ELECTRONICS )

AMERICA, INC. ) October 23, 2020

TRANSCRIPT OF TELEPHONIC CONFERENCE

BEFORE THE HONORABLE ALAN D. ALBRIGHT

APPEARANCES:

For the Plaintiff: Mr. Philip J. Graves

Hagens, Berman, Sobol,

Shapiro, LLP

301 North Lake Avenue, Suite 920

Pasadena, California 91101

Mr. Craig D. Cherry

Haley & Olson, P.C.

100 North Ritchie Road, Suite 200

Waco, Texas 76712

For Apple, Inc.: Ms. Betty H. Chen

Fish & Richardson, PC

111 Congress Avenue, Suite 810

Austin, Texas 78701

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 2 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

2

(Appearances Continued:)

For Samsung Electronics: Mr. John M. Guaragna

DLA Piper, LLP

401 Congress Avenue, Suite 2500

Austin, Texas 78701

Court Reporter: Ms. Lily Iva Reznik, CRR, RMR

501 West 5th Street, Suite 4153

Austin, Texas 78701

(512)391-8792

Proceedings reported by computerized stenography,

transcript produced by computer-aided transcription.

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 3 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:29:54

13:30:00

13:30:02

13:30:03

13:30:05

13:30:10

13:30:17

13:30:20

13:30:25

13:30:26

13:30:27

13:30:31

13:30:33

13:30:35

13:30:39

13:30:43

13:30:43

13:30:49

13:30:50

13:30:53

13:30:58

13:30:59

13:31:02

13:31:03

13:31:07

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

3

THE COURT: Good afternoon. It's Alan Albright.

Ms. Miles, would you call the case, please.

THE CLERK: Sure.

Telephonic scheduling conference in Civil Action

6:20-CV-505, styled, Neonode Smartphone, LLC vs. Apple,

Incorporated; and Case No. 6:20-CV-507, styled, Neonode

Smartphone, LLC vs. Samsung Electronics Company, Limited

and Samsung Electronics America, Incorporated.

THE COURT: Welcome, everyone.

If I could hear announcements from counsel,

please, starting with the plaintiff.

MR. CHERRY: Your Honor, this is Craig Cherry

with Haley & Olson on behalf of plaintiff, and Philip

Graves of the Hagens Berman law firm. And Mr. Graves will

be speaking on behalf on all points this afternoon, your

Honor.

THE COURT: Welcome. Thank you.

MR. GRAVES: Good afternoon, your Honor.

This is Philip Graves on behalf of plaintiffs.

THE COURT: And for defendant?

MS. CHEN: Good afternoon, your Honor --

MR. GUARAGNA: John Guaragna --

MS. CHEN: Hi, John.

This is Betty Chen of Fish & Richardson on behalf

of Apple.

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 4 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:31:08

13:31:10

13:31:13

13:31:15

13:31:18

13:31:23

13:31:25

13:31:27

13:31:30

13:31:33

13:31:35

13:31:40

13:31:44

13:31:47

13:31:49

13:31:50

13:31:53

13:32:00

13:32:04

13:32:10

13:32:14

13:32:18

13:32:20

13:32:24

13:32:26

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

4

THE COURT: Okay. And are there any issues we

need to take up?

MR. GUARAGNA: Your Honor, John Guaragna, just in

case I was cut off there, for Samsung Defendants.

THE COURT: Okay.

MR. GUARAGNA: At least from the defendants, your

Honor, we do have a couple of issues we'd like to take up

with respect to some pre-Markman items.

THE COURT: Okay.

MR. GUARAGNA: And speaking for Samsung, your

Honor, there are a couple of areas of third-party

discovery that we'd like leave to commence prior to the

Markman hearing. And I'm going to address one of those

issues, and I think Ms. Chen's going to address another

one.

With respect to the first issue, your Honor, we

believe that there are material prior art references

located with Sony, and we would like leave to commence

that third-party discovery of Sony to identify and

hopefully obtain the evidence with respect to those

third-party products that we think are going to be

important pieces of prior art in this case. We'd like to

commence that discovery as soon as possible.

We're hopeful but, unfortunately, we think there

may be a need to seek some of the discovery from Sony

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 5 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:32:31

13:32:36

13:32:39

13:32:43

13:32:45

13:32:47

13:32:51

13:32:53

13:32:56

13:32:59

13:33:01

13:33:03

13:33:05

13:33:09

13:33:12

13:33:15

13:33:20

13:33:22

13:33:26

13:33:32

13:33:37

13:33:41

13:33:44

13:33:52

13:33:55

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

5

overseas. And as your Honor obviously has experience,

that can take some time and will take likely even longer

during the pandemic. So with your Honor's permission,

we'd like to commence that discovery of Sony. Hopefully

we won't need to go through the Hague and go overseas, but

it looks like that is probably the case; but we'll avoid

it if we can.

But, in essence, we'd just like to get those

documents, no deposition. Just simply documents and get

that perhaps started now so we'll have it because it will

matter in the litigation.

THE COURT: Yeah. Let me tell you what I'm

trying -- and, Mr. Guaragna, as part of my committee, this

is an issue I think we're going to try and address on a

more permanent basis because it's coming up a good bit,

especially worse with the COVID situation and the

inability to travel.

So I am absolutely fine with you commencing

anything that is going to make the case go more smoothly.

If you are subpoenaing things for -- I'm not sure exactly

what format you're using to try and obtain what it is

you're trying to obtain from Sony, the only thing I would

suggest that you do is, make sure that the plaintiffs are

given a chance to -- if there's something they also need

from Sony or anyone else you're going to be sending a

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 6 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:33:59

13:34:03

13:34:07

13:34:10

13:34:14

13:34:15

13:34:19

13:34:24

13:34:27

13:34:31

13:34:35

13:34:37

13:34:37

13:34:41

13:34:48

13:34:53

13:35:00

13:35:04

13:35:09

13:35:10

13:35:16

13:35:19

13:35:22

13:35:25

13:35:27

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

6

request to, that they be able to cross-subpoena -- or if

they choose to. They can do whatever they want. But

we've got a couple of cases recently where one side was

concerned because the other side had subpoenaed some

things, but not everything.

So I'm actually fine for you to do that. Also,

just at a more macro level that may or may not apply to

what y'all are doing here, I think what I'm going to start

doing is -- and encouraging, actually. And, of course,

with lawyers of y'all's caliber, I probably don't need to

encourage, that you're probably going to do it without

that.

But, you know, anything that you can do in terms

of either documents, possible art, or inventors for sure

that are foreign, I'm going to allow those efforts to take

place immediately in terms of trying to get them arranged.

But I don't think I'm going to allow the discovery, for

example, the deposition to take place until, you know,

after the Markman.

But anything that a party wants to do to

accelerate the process of getting discovery done once the

Markman has taken place, I'm probably going to be okay

with.

MR. GUARAGNA: Thank you, your Honor.

I think to your point about collaboratively

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 7 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:35:33

13:35:35

13:35:38

13:35:42

13:35:44

13:35:48

13:35:51

13:35:53

13:35:56

13:35:59

13:36:05

13:36:07

13:36:10

13:36:13

13:36:13

13:36:16

13:36:21

13:36:26

13:36:31

13:36:34

13:36:41

13:36:42

13:36:44

13:36:48

13:36:50

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

7

approaching this, I think the parties have already agreed

to coordinate discovery in this case generally. And so,

we would certainly welcome an opportunity to make it as

easy as possible on Sony. And to the extent the plaintiff

has any issues it intends to seek doing that in

conjunction or doing that collaboratively, I think, is

certainly fine with us and makes a lot of sense. So we

appreciate that, your Honor.

We will -- we do intend to issue subpoenas.

Hopefully we can issue them just to the U.S. entity and

obtain any information we need. If we don't, we will move

forward with the overseas efforts. And we will hold off

on any depositions until after the Markman hearing, as

your Honor has indicated.

THE COURT: Now, of course, if -- and that -- and

by the way, that is sort of a generic concern. If you

were to find out, for some reason, that you needed to take

some -- actually take some kind of discovery because it

might not still exist, you know, if there's a person that

might no longer be with Sony, for example, or I guess

worse situation. But if there's any need to take

discovery because there's no -- it may not be available

after the Markman, just, you know, try and work that out

yourselves. But if you can't, certainly bring it to my

attention, and on a micro level, I'm happy to deal with

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 8 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:36:54

13:36:57

13:37:01

13:37:04

13:37:08

13:37:12

13:37:17

13:37:22

13:37:26

13:37:32

13:37:37

13:37:39

13:37:43

13:37:51

13:37:53

13:37:54

13:37:59

13:38:03

13:38:07

13:38:13

13:38:13

13:38:15

13:38:20

13:38:25

13:38:29

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

8

any issues you all have of whether or not to allow

discovery. But I will probably always err on the side of

making sure that the discovery is able to be taken.

But for the generic discovery that, Mr. Guaragna,

you're talking about, hopefully my plan works. If you

find, by the way, that there is some problem that's kind

of baked in that I'm just missing, please let me know

because, as I think everyone on the call knows, my goal is

to make this as user or lawyer-friendly as possible, and

if something I'm not allowing you to do or allowing you to

do, or we need to do it some other way that's more

efficient for you all, that is my ultimate goal.

So that was Mr. Guaragna. Does Ms. Chen need to

take up anything for her client?

MS. CHEN: Yes. Thank you, your Honor.

So I think here, we have the exact situation that

you're talking about where it is a unique situation, and

we would ask to take discovery and depositions before

Markman for certain foreign entities and the foreign

inventor.

And so, if I can give you some of the facts so

you understand the situation here, we have an entity

called Neonode, Inc., and that entity was original

assignee of the patents when they were issued. Neonode,

Inc. is located in Sweden, and it still has profit-sharing

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 9 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:38:33

13:38:37

13:38:42

13:38:45

13:38:47

13:38:50

13:38:54

13:38:58

13:39:01

13:39:04

13:39:05

13:39:11

13:39:14

13:39:18

13:39:21

13:39:29

13:39:31

13:39:36

13:39:40

13:39:43

13:39:49

13:39:51

13:39:53

13:39:54

13:39:56

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

9

rights with monetization of these patents. So Neonode has

at least six foreign subsidiaries and various joint

ventures. They range from places in Japan and South

Korea, Taiwan and Sweden.

And from looking at the public documents so, for

example, Neonode, Inc.'s 10-K, it looks like some of these

entities have rights to develop and license touchscreen

technologies. But to be honest, it's just a hodgepodge of

foreign entities, and we can't figure out who does what

from just looking at the public documents.

And so, what we had is this multiple layer of

entity -- foreign entity discovery. We have to first

conduct the discovery to figure out which entities are --

have which rights. And then, we have the second layer of

foreign discovery to obtain licensing assignment and

conception, valuation documents. And so, if we were to

start in April on the depositions, I just don't think we

have enough time within a seven-month period of discovery.

So for the entities, we would ask to take the

depositions and collect documents in advance. So

separately, we also have --

THE COURT: Let me --

MS. CHEN: -- the coinventor -- okay.

THE COURT: Let me hear if there's any objection

to that from the plaintiff.

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 10 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:40:02

13:40:03

13:40:05

13:40:09

13:40:15

13:40:19

13:40:25

13:40:30

13:40:33

13:40:37

13:40:38

13:40:43

13:40:45

13:40:51

13:40:54

13:40:59

13:41:04

13:41:05

13:41:08

13:41:14

13:41:17

13:41:21

13:41:23

13:41:26

13:41:31

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

10

MR. GRAVES: Yes. Thank you, your Honor.

This is Phil Graves.

We do object for several reasons. First, it's

not accurate to suggest that Neonode, Inc. is a foreign

entity. It's actually a Delaware corporation with a place

of business in San Jose, California. Second, you know,

the ownership -- it's a little unclear what bearing any

information concerning ownership or licensing would have

on any issues that need to be addressed prior to the

Markman.

We're fine with Apple commencing the process of

obtaining foreign discovery against, you know, whatever

foreign Neonode-affiliated entities they think may have

discoverable information. But we just don't think it's

efficient to conduct depositions and undertake, you know,

significant intensive discovery on these issues prior to

the Markman.

So we do object to this request, but, you know,

we're fine commencing the process as Samsung has

requested, right, but we just don't think it's efficient.

And we don't think it's going to yield anything useful for

Apple to be, you know, running all over the world, taking

depositions of a bunch of entities that really are

unlikely to have any material information or evidence in

any event.

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 11 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:41:31

13:41:37

13:41:45

13:41:52

13:41:57

13:42:03

13:42:05

13:42:09

13:42:13

13:42:19

13:42:23

13:42:26

13:42:29

13:42:33

13:42:39

13:42:41

13:42:47

13:42:48

13:42:50

13:43:00

13:43:02

13:43:05

13:43:07

13:43:12

13:43:17

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

11

THE COURT: Well, let me ask this. It sounds to

me like maybe the place to jump off on this is to allow

Apple to take a 30(b)(6) deposition of the United States

entity and we can -- and that person should be prepared to

tell us whether or not the information that they're

seeking with regard to licensing, and the other

assignments, and the other issues is available from

someone in the United States or whether or not everyone

will have to go to a foreign country to do that.

And then, it seems to me, we can make a more

informed decision at that point, the extent of dis --

whether or not we actually need to do discovery right now

or whether or not we just need to allow -- I need to allow

the defendant to lay the predicate, as it were, to get the

discovery done once the Markman takes place.

So, Ms. Chen, is there a downside to that I'm

missing?

MS. CHEN: I don't see a downside. That works

for us.

THE COURT: What is the relationship -- and I'm

not asking a legal relationship. Just if I were to allow

the deposition of that entity to take place, does the

plaintiff's counsel have the ability to coordinate that

kind of deposition or does -- or are they a pure third

party that -- what's the situation there?

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 12 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:43:19

13:43:22

13:43:25

13:43:29

13:43:33

13:43:40

13:43:45

13:43:49

13:43:51

13:43:52

13:43:55

13:43:58

13:44:03

13:44:03

13:44:05

13:44:09

13:44:10

13:44:14

13:44:20

13:44:21

13:44:25

13:44:29

13:44:34

13:44:38

13:44:42

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

12

MR. GRAVES: Yes, your Honor.

Neonode, Inc. is a third party. We are not

representing -- we are not counsel for Neonode, Inc.

THE COURT: Okay. Well, in that case, I'll allow

-- I will allow that discovery to take place. I assume

that they will cooperate with what I'm asking to be done;

if not and if Apple needs to come back to the Court for

some kind of order, I'm happy to do that, as well. Just

let me know.

So does that resolve that issue as far as

everyone's concerned?

MS. CHEN: From Apple's side, yes, your Honor.

MR. GRAVES: Yes, your Honor.

THE COURT: Okay. And, Ms. Chen, I interrupted

you earlier. What is the next issue?

MS. CHEN: Sure.

So it's similar in that the sole inventor of the

patent, someone named Magnus Goertz, is located in Sweden.

THE COURT: Okay.

MS. CHEN: And Neonode in this case has claimed a

priority date of May 25th, 2000. The first patent in the

case was filed on December 10th, 2002. And as far as

we've seen so far, Neonode hasn't produced any conception

or reduction to practice documents dating back to the May

25th, 2000 date. We've asked Neonode to confirm that it's

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 13 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:44:47

13:44:50

13:44:55

13:44:59

13:45:04

13:45:08

13:45:12

13:45:16

13:45:20

13:45:22

13:45:26

13:45:29

13:45:33

13:45:38

13:45:40

13:45:44

13:45:47

13:45:48

13:45:54

13:45:57

13:46:02

13:46:06

13:46:10

13:46:13

13:46:19

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

13

produced all conception, reduction to practice documents,

and it says it has, but Mr. Goertz might have more.

So here, you know, again, we feel like we're put

in a distinct disadvantage by not being able to conduct

discovery of Mr. Goertz before the Markman, and we'd ask

to be able to take a deposition of him and be able to

collect documents because we need to prepare invalidity

contentions and understand this purported priority date

that goes back to 2000.

THE COURT: Well, I'm not sure if the plaintiffs

have given you that date and they've acted in good faith,

in other words, if you have a lawyer on their side who is

-- who has represented to you what that date is, it seems

to me that you do your invalidity contentions based on

that, and if it turns out that in -- there wasn't a

good-faith basis for that to be made, then you can raise

that with me again.

Here's the only reason I say that is basically,

you know, I think you should get -- you're going to get

one opportunity to speak through deposition to the

inventor. And so, you know, if you -- if I were to allow

you to take the deposition of the inventor now, that would

be your -- you know, your one opportunity. And that may

be fine with you, and if it is -- and it sounds to me like

you'll probably be doing it by Zoom, then I'm open to

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 14 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:46:22

13:46:24

13:46:30

13:46:32

13:46:37

13:46:38

13:46:48

13:46:50

13:46:52

13:46:55

13:46:57

13:47:00

13:47:05

13:47:10

13:47:13

13:47:16

13:47:21

13:47:28

13:47:37

13:47:41

13:47:44

13:47:48

13:47:53

13:47:56

13:48:00

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

14

hearing that, as well.

But with the understanding that this would be the

only deposition that would be allowed of the inventor,

what would -- what would your preference be?

MS. CHEN: Well, with that understanding, that

what I would ask for is for the May 25th, 2000 date to be

-- to be stricken, quite honestly, because we don't have

any of the documents, any documents at all from the

plaintiff to support that date.

And they've said that they've provided us with

all documents, but I believe the document that goes back

the farthest is May 2001. And so, without any documents

that support that early date, then it's really hard for us

to be able to prepare our case and our defense with a date

that has no support.

THE COURT: Well, how about -- how about this.

My recollection was that -- my recollection is that it was

a legitimate 30(b)(6) topic to -- a legitimate 30(b)(6)

topic for someone to ask for that they -- the plaintiff

produce someone who would testify and bind the company

with respect to the date of conception. What if I allowed

you to have a deposition of a 30(b)(6) witness -- I can't

imagine it would take longer than an hour -- of the

plaintiff who you would then have a 30(b)(6)

representative who would be telling you what they believe

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 15 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:48:03

13:48:07

13:48:09

13:48:09

13:48:12

13:48:13

13:48:18

13:48:22

13:48:25

13:48:31

13:48:36

13:48:40

13:48:45

13:48:45

13:48:52

13:48:56

13:49:03

13:49:06

13:49:11

13:49:16

13:49:22

13:49:25

13:49:30

13:49:35

13:49:39

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

15

the date of conception to be, and we would go from there.

MS. CHEN: That works for us. Thank you, your

Honor.

MR. GRAVES: Your Honor, might I respond?

THE COURT: Yes, sir.

MR. GRAVES: So the -- so, first of all, the date

that we've provided in our disclosure of preliminary

infringement contentions and priority date does have a

good-faith basis. We have informed defense counsel that

the plaintiff here, Neonode Smartphone, has produced all

materials in its possession, custody or control that

evidence conception or reduction to practice. That has

been done.

But Neonode Smartphone does not control the

inventor, Mr. Goertz. So we've also informed defense

counsel, Mr. Goertz may have additional materials that

bear on conception or reduction to practice and obviously

has information along those lines. But again, since

Neonode Smartphone does not control Mr. Goertz and can't

necessarily obtain information from him, complete or

otherwise, that would enable it to respond to an inquiry

at a 30(b)(6) deposition, you know, it doesn't appear to

me that that would be, you know, the most effective way to

get at these issues. I mean, we're --

THE COURT: Well, don't you have -- you just said

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 16 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:49:43

13:49:48

13:49:51

13:49:56

13:50:01

13:50:04

13:50:07

13:50:09

13:50:13

13:50:15

13:50:21

13:50:25

13:50:28

13:50:33

13:50:36

13:50:42

13:50:48

13:50:49

13:50:51

13:50:53

13:50:57

13:50:59

13:51:03

13:51:06

13:51:06

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

16

you had provided to defendants a good-faith basis. And my

sense of what you would be saying, if I were in your

shoes, is that we've given them the best date we have, but

it could very well be that they get -- that when the

inventor talks, it could be an even earlier date because

he might be able to say -- to have additional information.

Is that what you're saying?

MR. GRAVES: That's certainly one aspect of what

I'm saying. Yes, your Honor.

THE COURT: Well, in that case, you know, it

seems to me that we probably ought to allow the defendant

to take a deposition, if they could get one arranged, with

the inventor to find out what he's going to say about the

invention date. Because if the only thing the plaintiff

is able to do is give a good-faith effort and I'm forcing

the defendants to give invalidity contentions, it seems to

me that they ought to have the benefit of that information

from the inventor.

And by the way, I understand what you're saying

about the 30(b)(6) and I wouldn't want someone -- I

wouldn't want to force you to have a 30(b)(6) from a

witness who, you know, really would feel uncomfortable

because he doesn't have any better information than what

y'all have.

So what is your proposal for a solution to this

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 17 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:51:10

13:51:16

13:51:19

13:51:25

13:51:27

13:51:30

13:51:33

13:51:37

13:51:42

13:51:45

13:51:48

13:51:51

13:51:57

13:52:01

13:52:04

13:52:06

13:52:07

13:52:10

13:52:12

13:52:15

13:52:23

13:52:29

13:52:34

13:52:36

13:52:42

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

17

before I tell you what mine is?

MR. GRAVES: Well, your Honor, so -- you know,

it's plaintiff's perspective that, you know, that

testimony regarding the conception and reduction to

practice doesn't really bear on the issues to be addressed

at claim construction. The claim construction should just

go forward, construing the claims based on the intrinsic

and whatever extrinsic evidence bears on those issues.

But with respect to, you know, the issue of a

30(b)(6) versus a declaration or a deposition, rather, of

Mr. Goertz, you know, it would be our position that a

30(b)(6) would be fundamentally unfair to the plaintiffs

due to constraints on the plaintiff's ability to obtain

complete information regarding the evidence --

THE COURT: Well, let me interrupt you because

maybe I wasn't clear.

I'm not going to make -- I get that. I'm not

going to make you do a 30(b)(6). So I'm trying to figure

out -- I'm trying to figure out what an alternate method

is because I do think that -- I do think that the

defendants ought to have a reliable date. And if you've

given them a date, but you can't provide them in good

faith -- I'm going to assume it is. But if you can't

provide to them any information -- unless you have and you

could tell me if you have -- that backs that date up, then

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 18 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:52:46

13:52:50

13:52:53

13:52:57

13:53:00

13:53:02

13:53:08

13:53:12

13:53:19

13:53:20

13:53:23

13:53:26

13:53:31

13:53:35

13:53:40

13:53:44

13:53:48

13:53:52

13:53:56

13:54:01

13:54:04

13:54:06

13:54:07

13:54:12

13:54:16

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

18

it seems to me that the person -- only person that really

has that information is the inventor, and we might need to

have him -- if he will make himself available, we might

need to have him deposed.

MR. GRAVES: And, your Honor, we or plaintiff

would not oppose, you know, efforts to obtain a deposition

of Mr. Goertz, of course, as long as, you know, all

parties are provided an opportunity to ask some questions

at that deposition.

THE COURT: Well, I think that's -- you know,

maybe I've been off the bench too long, but that's my

recollection of how these things work. So -- unless they

changed the rules and I missed it. So yes. If we're

going to go the deposition route, yes, everyone would get

to ask questions.

So it sounds to me like we have a suggestion from

the defendant and no opposition from the plaintiff. And

so, that being said, I'm not sure exactly, Ms. Chen, how

you go about arranging this deposition of the inventor,

but I will tell you that, as far as I'm concerned, you are

free to do so.

MS. CHEN: Thank you, your Honor.

One clarification. So with that, are we still

limited to just the one deposition of the inventor?

THE COURT: You know, number one, I'm not sure

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 19 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:54:18

13:54:21

13:54:29

13:54:34

13:54:35

13:54:39

13:54:43

13:54:46

13:54:50

13:54:54

13:55:00

13:55:03

13:55:08

13:55:12

13:55:15

13:55:18

13:55:24

13:55:26

13:55:28

13:55:29

13:55:33

13:55:37

13:55:38

13:55:41

13:55:43

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

19

that you'll be able to persuade this guy to give you one,

to begin with. And so, what I would suggest you do is

make this a full deposition of him, since he's -- unless

-- let me start over.

If you could get in agreement that you think you

could trust and rely on that he would make himself

available again -- I'm assuming this will be by Zoom. If

you can get an agreement from him that you're sanguine

with that he would appear again, then I would limit the

deposition to just the issues of -- you're worried about

with the date of conception.

If you have a legitimate concern that he might

not voluntarily appear again, then you are free to ask him

whatever questions you can ask, and then, we'll just deal

-- I will not say right now that I'm going to prohibit you

from taking the deposition. All I'm saying is, you know,

you may or may not -- you know, he may or may not agree to

do it. But I would allow in this situation another

deposition.

MS. CHEN: Thank you, your Honor.

THE COURT: Any other issues we need to take up?

MS. CHEN: Yes, your Honor. Sorry. If I could

indulge you with one more issue.

So --

THE COURT: Okay.

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 20 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:55:44

13:55:46

13:55:50

13:55:58

13:56:01

13:56:04

13:56:07

13:56:11

13:56:12

13:56:14

13:56:18

13:56:22

13:56:28

13:56:32

13:56:33

13:56:35

13:56:40

13:56:44

13:56:48

13:56:50

13:56:54

13:56:58

13:57:03

13:57:05

13:57:09

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

20

MS. CHEN: -- the issue is this. So these

patents in the suit are user interface patents. So, for

example, one of the patents, the 879 patent, Neonode has

accused glide or swipe typing, and the Apple iPhone, the

feature's called QuickPath. And what happens is when you

open up the keyboard, you can create words by moving your

finger across the keyboard without ever lifting your

finger up.

So that's a feature that Apple developed and

created. It's native to the phones when you buy them.

Neonode has accused and allegedly charted this. But what

Neonode has also done is it's accused ten apps that are

entirely created by third parties, and it hasn't charted a

single one of them.

So all it's done is, it's included one screen

shot for one app keyboard, and that's for one single

limitation; and then, it just concludes that the program

code for all third parties' swipe-typing apps cause the

accused devices -- and I'm reading here -- to function in

the same manner. And that's really just not enough for us

to understand what they're accusing here.

Before this call, I downloaded one of the

third-party apps that's called FancyKey, and it gives me

all these cute-colored keyboards with emojis, but they're

twelve keyboards and I can't tell how Neonode would accuse

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 21 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:57:13

13:57:15

13:57:17

13:57:21

13:57:25

13:57:27

13:57:30

13:57:36

13:57:39

13:57:42

13:57:46

13:57:49

13:57:58

13:58:02

13:58:07

13:58:12

13:58:17

13:58:19

13:58:24

13:58:26

13:58:29

13:58:34

13:58:37

13:58:40

13:58:43

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

21

this at all without any charts.

So in our meet-and-confer and in the papers that

we filed this morning, Neonode'a saying that even if it

supplements, the charts would all be the exact same for

all the various apps. But all the various apps have

different keyboards, different user interfaces. And so,

if Neonode is saying that even if it supplements, it would

still be the same, then we would argue that the

supplementation would be futile, and we'd ask to strike

the contentions accusing the third-party apps.

THE COURT: Well, let me say -- let me address

that. It's rare -- it's rare that I ever, in advance, say

that I'm going to strike something that hasn't been seen

yet. So if the plaintiff has offered to provide you with

those infringement contentions and as officers of the

court, they are going to rely on them, they can send you

those infringement contentions.

If we get further down the road in the litigation

and, for some reason, you have -- you have -- if you

develop some reason to believe those infringement

contentions were not done in good faith, then we'll take

it up at that point.

The point here being this is one where I do agree

with the plaintiff, which is, these are, number one,

preliminary claim constructions and, number two, they

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 22 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

13:58:47

13:58:53

13:58:58

13:59:02

13:59:08

13:59:11

13:59:15

13:59:18

13:59:22

13:59:28

13:59:33

13:59:35

13:59:37

13:59:42

13:59:45

13:59:48

13:59:48

13:59:51

13:59:51

13:59:54

13:59:59

14:00:04

14:00:07

14:00:10

14:00:13

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

22

don't have anything really to do with the Markman process.

I mean, whether or not something infringes, I know the

lawyers like to have it so that they can cobble together

issues to be taken up at the Markman so they can come up

with possible claim constructions that might or might not

get them out of infringement. That's all fine, but that's

really not the reason we do Markmans.

But if the plaintiff has volunteered to give you

infringement contentions for the accused apps, I'm going

to let them, and then, we'll see what happens, whether or

not they're done in good faith or not. At this time, I'm

certainly going to assume that they will be.

Is there anything else?

MR. GUARAGNA: Not from Samsung, your Honor.

MS. CHEN: Not from Apple --

MR. GRAVES: Not from --

THE COURT: I just had a --

MR. GRAVES: Not from the plaintiff.

THE COURT: I heard someone give a very loud

sigh, so that must mean we're close to being done.

So it sounds like we're done. For purposes of

the people who I'm currently talking to, I hope you have a

wonderful weekend. Be safe out there. I'm going to stay

on this call because I think we have another call at 2:00.

But everyone who has been involved in this current hearing

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 23 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

14:00:17

14:00:21

14:00:25

14:00:26

14:00:27

14:00:27

14:00:27

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

23

is welcome to drop off. And I hope I get to see at least

some of you in person in the very near future. Take care.

MR. GRAVES: Thank you, Judge.

MS. CHEN: Thank you, your Honor.

MR. GUARAGNA: Thank you, your Honor.

(Proceedings concluded.)

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 24 of 25
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

LILY I. REZNIK, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)

24

* * * * * *

UNITED STATES DISTRICT COURT )

WESTERN DISTRICT OF TEXAS )

I, LILY I. REZNIK, Certified Realtime Reporter,

Registered Merit Reporter, in my capacity as Official

Court Reporter of the United States District Court,

Western District of Texas, do certify that the foregoing

is a correct transcript from the record of proceedings in

the above-entitled matter.

I certify that the transcript fees and format comply

with those prescribed by the Court and Judicial Conference

of the United States.

WITNESS MY OFFICIAL HAND this the 30th day of October,

2020.

/s/Lily I. Reznik

LILY I. REZNIK, CRR, RMR

Official Court Reporter

United States District Court

Austin Division

501 W. 5th Street,

Suite 4153

Austin, Texas 78701

(512)391-8792

SOT Certification No. 4481

Expires: 1-31-21

Case 6:20-cv-00505-ADA Document 27-7 Filed 11/05/20 Page 25 of 25