i 

IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

NEONODE SMARTPHONE LLC,

Plaintiff, 

v. 

APPLE INC., 

Defendant. 

Civil Action No. 6:20-cv-00505-ADA 

JURY TRIAL DEMANDED 

PLAINTIFF'S EXPEDITED MOTION FOR LEAVE TO PURSE VENUE DISCOVERY 

AND TO DEFER BRIEFING SCHEDULE UNTIL COMPLETION OF DISCOVERY

Case 6:20-cv-00505-ADA Document 34 Filed 11/12/20 Page 1 of 12
i 

TABLE OF CONTENTS 

I. INTRODUCTION ................................................................................................................................ 1

II. ARGUMENT ........................................................................................................................................ 1

A. Venue Discovery Is Favored. ............................................................................................................ 1

B. The Court Should Grant Expedited Venue-Related Discovery. ....................................................... 3

C. The Court Should Defer Briefing On Apple's Motion To Transfer Venue Until Completion of 

Venue-Related Discovery. ............................................................................................................... 7

III. CONCLUSION ................................................................................................................................. 8

 

Case 6:20-cv-00505-ADA Document 34 Filed 11/12/20 Page 2 of 12
ii 

TABLE OF AUTHORITIES 

Cases

Alpine View Co. v. Atlas Copco AB, 

205 F.3d 208 (5th Cir. 2000) ..................................................................................................................... 2 

Blitzsafe Tex. LLC v. Mitsubishi Elec. Corp., 

No. 2:17-CV-00430-JRG, 2019 WL 2210686 (E.D. Tex. May 22, 2019) ....................................... 2, 3, 7 

In re Volkswagen of Am., Inc., 

545 F.3d 304 (5th Cir. 2008)................................................................................................................. 3, 7 

Kelly v. Syria Shell Petroleum Dev. B.V., 

213 F.3d 841 (5th Cir. 2000)..................................................................................................................... 2 

Moore v. CITGO Ref. & Chems. Co., L.P., 

735 F.3d 309 (5th Cir. 2013)..................................................................................................................... 2 

Oppenheimer Fund, Inc. v. Sanders, 

 437 U.S. 340 (1978) ............................................................................................................................. 1, 2 

Pudlowski v. St. Louis Rams, LLC, 

829 F.3d 963 (8th Cir. 2016)..................................................................................................................... 2 

Rozier v. Ford Motor Co., 

573 F.2d 1332 (5th Cir. 1978)............................................................................................................... 2, 3 

Wyatt v. Kaplan, 

686 F.2d 276 (5th Cir. 1982)..................................................................................................................... 2 

Case 6:20-cv-00505-ADA Document 34 Filed 11/12/20 Page 3 of 12
1 

I. INTRODUCTION 

The Court should permit Neonode Smartphone LLC ("Neonode") an opportunity to 

conduct limited and targeted discovery directed to Apple's motion to transfer this case from the 

Western District of Texas ("WDTX") to the Northern District of California ("NDCA"). The Court 

generally grants leave for the parties to conduct targeted discovery on this issue, and for good 

reason. A defendant like Apple must demonstrate that the proposed transferee court is "clearly 

more convenient" than WDTX. Apple's arguments in support of transfer rest upon a combination 

of (a) incorrect suppositions about the location of certain witnesses Apple believes to be associated 

with Neonode and (b) a selective and non-definitive presentation of facts by a declarant who 

apparently lacks personal knowledge about at least some of his testimony. Venue discovery should 

be granted unless it is impossible that the discovery could add any significant facts that might bear 

on the venue question. As discussed below, that is not the case here. Because venue discovery is 

appropriate in this case, the Court should defer briefing on Apple's motion to transfer until the 

parties have completed the discovery and are positioned to present a complete set of pertinent facts 

to the Court. Before filing this motion, counsel for Neonode contacted counsel for Apple and 

inquired whether Apple would agree to the requested relief. Neonode did not have a response 

before Neonode filed the motion. Under the circumstances, including that its opposition to Apple's 

transfer motion is currently due on November 19, 2020, Neonode did not wish to delay filing its 

expedited request for relief. 

II. ARGUMENT 

A. Venue Discovery Is Favored. 

"[W]here issues arise as to jurisdiction or venue, discovery is available to ascertain the 

facts bearing on such issues." Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 350 n.13 (1978). 

Case 6:20-cv-00505-ADA Document 34 Filed 11/12/20 Page 4 of 12
2 

Because broad discovery is generally favored, "jurisdictional discovery should only be denied 

where it is impossible that the discovery 'could ... add[] any significant facts' that might bear on 

the jurisdictional determination." Blitzsafe Tex. LLC v. Mitsubishi Elec. Corp., No. 2:17-CV00430-JRG, 2019 WL 2210686, at *3 (E.D. Tex. May 22, 2019) (emphasis in original) (quoting 

Alpine View Co. v. Atlas Copco AB, 205 F.3d 208, 221 (5th Cir. 2000)).1 Accordingly, such 

discovery should be granted unless "no amount of information ... would strengthen" the movant's 

jurisdictional claims. Id. (quoting Wyatt v. Kaplan, 686 F.2d 276, 284 (5th Cir. 1982)). 

Moreover, since evidence of relevant jurisdictional facts is "often largely or wholly in the 

possession of an adverse party, broad jurisdictional discovery also ensures that jurisdictional 

disputes will be 'fully and fairly' presented and decided." Blitzsafe at *3-4 (citing Rozier v. Ford 

Motor Co., 573 F.2d 1332, 1345 (5th Cir. 1978)); see also Pudlowski v. St. Louis Rams, LLC, 829 

F.3d 963, 964-65 (8th Cir. 2016) ("[Discovery] as to jurisdiction or venue ... makes good sense 

given that jurisdiction is (1) important, (2) often fact-intensive, and (3) only required to be alleged 

plausibly ... A court has an independent obligation to ensure that the case is properly before it. 

Discovery is often necessary because jurisdictional requirements rest on facts that can be disputed 

... .") (quoting Oppenheimer, 437 U.S. at 340 n.13)). 

"A district court has broad discretion in all discovery matters, and such discretion will not 

be disturbed ordinarily unless there are unusual circumstances showing a clear abuse." Moore v. 

CITGO Ref. & Chems. Co., L.P., 735 F.3d 309, 315 (5th Cir. 2013) (quoting Kelly v. Syria Shell 

Petroleum Dev. B.V., 213 F.3d 841, 855 (5th Cir. 2000)). 

As stated in the Court's standing Order Governing Proceedings for Patent Cases, Version 

3.2 ("OGP"), "the Court generally grants leave for the parties to conduct targeted discovery." 

 

1 As the Blitzsafe court explained, the term "jurisdictional discovery" includes "the venue inquiry." 

Blitzsafe, 2019 WL 2210686, at *3 n.2. 

Case 6:20-cv-00505-ADA Document 34 Filed 11/12/20 Page 5 of 12
3 

B. The Court Should Grant Expedited Venue-Related Discovery. 

Apple has moved to transfer venue from WDTX to the NDCA. (Doc. 27) As Apple 

concedes, it "must show 'good cause' by demonstrating that the 'transferee venue is clearly more 

convenient' than the transferor district." (Doc. 27 at 5 (emphasis added) (quoting In re Volkswagen 

of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008)). Neonode desires to ensure that the venue issue is 

"fully and fairly" presented and decided on a complete and accurate set of pertinent facts. See

Blitzsafe at *4; Rozier, 573 F.2d at 1345. Neonode can, without discovery from Apple, correct 

certain material inaccuracies in Apple's transfer motion. For example, Apple states that Joseph 

Shain, "who initiated contact with Apple and who is Neonode Inc.'s Vice President of Intellectual 

Property, appears to be located in [NDCA]." (Doc. 27 at 6) Neonode can and will present evidence 

that Mr. Shain neither works nor resides in California. As another example, Apple asserts that the 

prosecution firm for the patents in suit, Soquel Group, is located in NDCA. (Doc. 27 at 10-11) But 

Neonode will present evidence that the Soquel Group attorney who actually did the work, Marc 

Berger, neither works nor resides in California. That neither Mr. Shain nor Mr. Berger reside or 

work in NDCA undermines Apple's contention that NDCA is a "clearly more convenient" venue 

than WDTX. 

But much of the evidence relevant to determining whether NDCA is the "clearly more 

convenient" venue than WDTX is in Apple's possession. Apple's presentation of that evidence is 

selective and not definitive. For example, Apple's declarant, Mark Rollins, testifies that "nearly all 

of Apple's engineers who participated in or are knowledgeable about the research, design, and 

development of the Accused Features have a primary place of work in the NDCA" and that he is 

"not aware of any Apple employees located in the WDTX who worked on the research, design, or 

development of the Accused Features." (Doc. 27-3, ¶ 7) But this is only "[t]o the best of [his] 

Case 6:20-cv-00505-ADA Document 34 Filed 11/12/20 Page 6 of 12
4 

knowledge" (id.), and it is unclear what efforts Mr. Rollins made to research these issue and to 

ensure that his "knowledge" is correct. Mr. Rollins testifies that he is a "Finance Manager" at 

Apple, which suggests that he has no personal knowledge about Apple's engineering, research, and 

development of the Accused Features. Similarly, Mr. Rollins testifies that "[t]o [his] knowledge, 

Apple does not have any unique working files or documents relevant to this case located in the 

WDTX" (Doc. 27-3, ¶ 7) and that he is "not aware of any unique Apple working files or documents 

located in the WDTX that are relevant to this case" (id. at ¶ 13) It is not clear what efforts Mr. 

Rollins made to research these issues and to ensure that his understanding is complete and correct. 

Mr. Rollins testifies that he "understand[s] that working files, electronic documents 

concerning the Accused Features reside on local computers and/or servers either located in or 

around the NDCA or accessible in the NDCA." (Doc. 27-3, ¶ 7) It is not clear what efforts Mr. 

Rollins made to research these issues and to ensure that his understanding is correct. But even 

accepting his assertions as accurate, they do not rule out the possibility that the pertinent working 

files and electronic documents concerning the Accused Features do not reside on computers and/or 

servers located in or around the NDCA, but instead reside on computers and/or servers that are 

merely "accessible in the NDCA." Nor does his testimony rule out the possibility that the pertinent 

electronic files and documents are equally "accessible" in both the NDCA and the Western District 

of Texas. Evidence of either possibility would tend to undermine Apple's contention that NDCA 

is a "clearly more convenient" venue than WDTX. 

Mr. Rollins testifies that he "understand[s] that the relevant source code associated with 

the Accused Features was developed and tested in California." (Doc. 27-3, ¶ 7) It is not clear what 

efforts Mr. Rollins made to research this issue and to ensure that his understanding is correct. Mr. 

Rollins' position as a "Finance Manager" suggests that he has no personal knowledge about 

Case 6:20-cv-00505-ADA Document 34 Filed 11/12/20 Page 7 of 12
5 

development and testing of Apple's source code. He further states his "understanding" that "access 

to this source code is controlled on a need-to-know basis, and that the source code can be accessed 

by Apple employees working on the Accused Products in the NDCA." (Id.) Even accepted as true, 

this testimony does not rule out the possibility that the source code is not located in NDCA. Nor 

does it rule out the possibility that the code can be equally conveniently accessed outside of NDCA, 

including in the Western District of Texas. Evidence of either possibility would tend to undermine 

Apple's contention that NDCA is a "clearly more convenient" venue than WDTX. Mr. Rollins 

testifies that he is "not aware of any relevant source code relating to the Accused Products that was 

developed, coded or tested in Texas." It is not clear what efforts Mr. Rollins made to research this 

issue and to ensure that his understanding is correct. 

Mr. Rollins testifies that "[t]o the best of [his] knowledge, nearly all Apple employees who 

have knowledge relevant to marketing, licensing, and financial records related to the Accused 

Products work in or near the NDCA." (Doc. 27-3, ¶ 13) It is not clear what efforts Mr. Rollins 

made to research this issue and to ensure that his understanding is correct. His testimony does not 

rule out the possibility that there are Apple employees with pertinent knowledge on these topics 

who do not work in NDCA. Evidence of that possibility would tend to undermine Apple's 

contention that NDCA is a "clearly more convenient" venue than WDTX. Mr. Rollins testifies that 

he is "not aware of any Apple employee who has unique information [regarding marketing, 

licensing, and financial records related to the Accused Products] relevant to this case and are 

located in the WDTX" (id.), but it is not evident what efforts Mr. Rollins made to research these 

issues and to ensure that his understanding is accurate. 

Mr. Rollins states that he is "knowledgeable about Apple's sales and financial information 

concerning the Accused Products" and that "[d]ocuments concerning sales and financial 

Case 6:20-cv-00505-ADA Document 34 Filed 11/12/20 Page 8 of 12
6 

information for the Accused Products reside on local computers and/or servers either located in or 

around the NDCA or accessible in the NDCA." (Doc. 27-3, ¶ 17) This testimony does not rule out 

the possibility that such documents reside on computers and/or servers located outside of the 

NDCA but that are merely "accessible in the NDCA." Nor does it rule out the possibility that the 

documents are equally accessible outside the NDCA, including in the Western District of Texas. 

Evidence of either possibility would tend to undermine Apple's contention that NDCA is a "clearly 

more convenient" venue than WDTX. 

Mr. Rollins states that Apple has retail stores located in the WDTX, but he is "not aware 

of any retail employee in these retail stores who was ever involved in the research, design, 

development, or marketing of the Accused Features." (Doc. 27-3, ¶ 18) It is not evident what 

efforts Mr. Rollins made to research these issues and to ensure that his understanding is accurate. 

Beyond that, the conduct that constitutes Apple's alleged infringement includes both selling 

products with the Accused Features and making infringing products by combining hardware and 

software (e.g., creating an infringing device by adding software to an existing device). Mr. Rollins 

does not rule out the possibility that Apple employees in WDTX have sold or made infringing 

products. In addition, Neonode alleges, among other things, that Apple infringes when Apple 

delivers software from an Apple server to a user's Apple device. (Doc. 1, ¶¶ 43, 48, 57, 82, 83, 86, 

87) Mr. Rollins does not rule out the possibility that Apple facilities (e.g., servers) located in 

WDTX have facilitated such infringement in WDTX and elsewhere. Evidence of either possibility 

would tend to undermine Apple's contention that NDCA is a "clearly more convenient" venue than 

WDTX. Mr. Rollins also states that Apple has "non-retail offices" in the WDTX and that, "[t]o the 

best of [his] knowledge ... Apple employees with relevant information relating to the Accused 

Features and Accused Products are located in the NDCA." (Doc. 27-3, ¶ 18) Mr. Rollins does not 

Case 6:20-cv-00505-ADA Document 34 Filed 11/12/20 Page 9 of 12
7 

rule out the possibility that Apple employees at the "non-retail offices" in the WDTX also have 

relevant information. Of course, evidence that they do would tend to undermine Apple's contention 

that NDCA is a "clearly more convenient" venue than WDTX. 

* * * * * 

To prevail on its motion, Apple must show "good cause" by demonstrating that the NDCA 

is "clearly more convenient" than WDTX as a venue for this litigation. In re Volkswagen, Inc., 545 

F.3d at 315. Some of the "facts" Apple argues in support of transfer are wrong and will be proven 

so. On other issues, Apple's evidence is selective and not determinative. Certainly, the Court 

cannot determine on the current record that "it is impossible that [venue-related] discovery 'could 

... add[] any significant facts' that might bear on" Apple's motion. Blitzsafe, 2019 WL 2210686, 

at *3 (emphasis in original). 

C. The Court Should Defer Briefing On Apple's Motion To Transfer Venue 

Until Completion of Venue-Related Discovery. 

Under the applicable rules, Neonode's opposition to Apple's transfer motion is currently 

due on November 19, 2020. That does not allow sufficient time for Neonode to conduct 

jurisdictional discovery and to present a complete set of pertinent facts to the Court. If the Court 

grants Neonode's request to conduct limited discovery targeted to the venue issue, the Court should 

defer briefing on Apple's transfer motion until that discovery is completed. Pursuant to the OGP, 

Neonode's jurisdictional discovery will be limited to five interrogatories, five requests for 

production, and four hours of deposition time for a Rule 30(b)(6) witness (who presumably will 

be Mr. Rollins). Neonode will serve that discovery promptly upon grant of this motion and will 

work cooperatively with Apple to complete the discovery as quickly and efficiently as possible. 

Case 6:20-cv-00505-ADA Document 34 Filed 11/12/20 Page 10 of 12
8 

Upon completion of discovery, the parties will be positioned to complete briefing on the venue 

issue and present the full scope of pertinent facts to the Court. 

III. CONCLUSION 

For the foregoing reasons, Neonode respectfully requests that the Court grant Neonode's 

Expedited Motion For Leave To Purse Venue Discovery And To Defer Briefing Schedule Until 

Completion Of Discovery. 

Date: November 12, 2020 Respectfully submitted, 

By: /s/ Greer N. Shaw 

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 

Craig D. Cherry 

State Bar No. 24012419 

ccherry@haleyolson.com 

Justin W. Allen 

State Bar No. 24081977 

jallen@haleyolson.com 

HALEY & OLSON, P.C. 

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 

Counsel for Plaintiff Neonode Smartphone LLC 

Case 6:20-cv-00505-ADA Document 34 Filed 11/12/20 Page 11 of 12
CERTIFICATE OF SERVICE 

I hereby certify that on the 12th day of November 2020, I electronically filed the foregoing with the 

Clerk of Court using the CM/ECF system which will send notification of such filing to the following: 

/s/ Greer N. Shaw 

 Greer N. Shaw 

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 

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 

Attorneys for Defendant Apple Inc.

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 

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 

Case 6:20-cv-00505-ADA Document 34 Filed 11/12/20 Page 12 of 12