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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 NEONODE SMARTPHONE LLC’S NOTICE OF WITHDRAWAL 

FROM STIPULATION REGARDING VENUE DISCOVERY 

I. INTRODUCTION 

Plaintiff Neonode Smartphone LLC (“Neonode”) hereby provides notice to the Court and 

to defendant Apple Inc. ("Apple") that it respectfully withdraws from the Stipulation To Stay Case 

Pending Decision On Apple’s Motion To Transfer ("Stipulation") (Dkt. #36) that the parties filed 

on November 20, 2020. As discussed below, the parties entered the Stipulation with a mistaken 

and/or superseded understanding of the Court's operative limitations on venue discovery. Those 

limitations are stated in the Court's Standing Order Regarding Venue and Jurisdictional Discovery 

Limits for Patent Cases ("Standing Order Regarding Venue Discovery"), which came to the parties' 

attention shortly after they had informed the Court of the terms of the Stipulation. Because the 

Stipulation includes limitations from a prior order that were expressly lifted by the Standing Order 

Regarding Venue Discovery, and because the Court no longer requires those limitations, Neonode 

believes that a new Stipulation and proposed order are warranted. Neonode attempted to reach 

agreement with Apple on terms for a new stipulation, but Apple refused. 

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II. ARGUMENT 

Neonode filed its Complaint in this action on June 8, 2020. (Dkt. #1) Apple answered the 

complaint on September 4 (Dkt. #14). 

On November 5, Apple filed its Motion to Transfer Venue to the Northern District of 

California ("Transfer Motion"). (Dkt. #27) On the same day, Apple moved to stay the case pending 

a ruling on the Transfer Motion ("Motion to Stay"). (Dkt. #28) 

Also on November 5, the Court published its latest Order Governing Proceedings for Patent 

Cases (OGP version 3.2) on the Court's website. OGP version 3.2 provides, among other things, 

that, "[w]ith respect to venue and jurisdictional discovery, the Court generally grants leave for the 

parties to conduct targeted discovery. The Court’s default venue/jurisdiction discovery limits are 

as follows: 1. Interrogatories: 5 per party[;] 2. Requests for Production: 5 per party[;] 3. Fact 

depositions: 4 hours for a 30(b)(6) witness per party." (OGP Version 3.2 at 2) The Court entered 

its Standing Order Regarding Updated Order Governing Proceedings – Patent Cases (Dkt. #30) on 

November 9, which informed that parties that the Court had published OGP version 3.2. 

On November 12, Neonode opposed Apple's Motion to Stay (Dkt. #33) and also filed its 

Expedited Motion for Leave to Pursue Venue Discovery and to Defer Briefing Schedule Until 

Completion of Discovery ("Expedited Motion") (Dkt. #34). Neonode requested expedited 

consideration because its response to Apple's Motion to Transfer was then due on November 19. 

After Neonode filed its Expedited Motion, respective counsel for Neonode and Apple conferred 

in an attempt to resolve by agreement the issues raised in Apple's Motion to Stay and Neonode's 

Expedited Motion. Late on November 19, the parties notified the Court (by email to Robert Earle) 

that they had reached agreement (i) to stay the case pending a decision on Apple's Motion to 

Transfer, (ii) concerning service of discovery in conformance with the Court's OGP Version 3.2, 

and (iii) on a schedule for completion of venue discovery and briefing on the Motion to Transfer. 

Case 6:20-cv-00505-ADA Document 37 Filed 11/23/20 Page 2 of 7
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[Ex. 1]1 Simultaneously, the parties conferred regarding preparation of a stipulation that would 

formalize the parties' agreement. The parties agreed that Apple would file the stipulation "first 

thing in the morning" on November 20. [Id.] 

On the morning of November 20, Neonode learned for the first time that the Court, 

sometime on November 19, had issued its Standing Order Regarding Venue Discovery. [Ex. 1] 

That order “lifts all limits on discover related to venue and jurisdiction in patent cases,” including 

“numerical discovery limits on the number of interrogatories, requests for production, requests for 

admission, depositions, and/or deposition hours, etc.” The order provides that “the parties are 

limited only by Fed. R. Civ. P. 26(b)(1).” The order further provides that venue and jurisdictional 

discovery “be completed no later than six months after the filing of the motion,” with the deadline 

for plaintiff’s response being due “two weeks after the completion of venue or jurisdictional 

discovery.” Finally, the order provides that “[t]he parties in any case affected by this order are 

directed to file an amended scheduling order consistent with this order.” 

Shortly after learning of new Standing Order Regarding Venue Discovery, Neonode 

brought it to Apple's attention and asked that Apple "hold off on filing the stipulation" until the 

parties had had an opportunity to review the new order. [Ex. 1] A few minutes later, and before 

responding to Neonode, Apple filed the parties' Stipulation To Stay Case Pending Decision On 

Apple’s Motion To Transfer ("Stipulation") (Dkt. #36) and accompanying proposed order (Dkt. 

#36-1).2

 The Stipulation documents the parties' agreement, reached before entry of the Court's 

Standing Order Regarding Venue Discovery, to permit "mutual venue discovery that initially 

conforms with this Court’s Order Governing Proceedings in Patent Cases. Each party shall serve 

 

1 Exhibit 1 is a true and correct copy of an email communication chain between respective counsel 

for Neonode and Apple. 

2 Apple's counsel explained that she had not seen the Standing Order Regarding Venue Discovery 

prior to instructing her assistant to file the Stipulation. [Ex. 1]

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five interrogatories, five requests for production, and four hours of 30(b)(6) deposition time related 

to Apple’s Motion to Transfer Venue." (Dkt. #36 at 1) The parties agreed to a February 19, 2021 

deadline for Neonode to complete venue discovery, a March 5, 2021 deadline for Neonode to 

respond to Apple's Motion to Transfer, an April 2, 2021 deadline for Apple to complete venue 

discovery, and an April 9, 2021 deadline for Apple to file its reply in support of its Motion to 

Transfer. (Dkt. #36 at 1-2) The parties further stipulated that "all other deadlines provided in the 

Amended Agreed Scheduling Order [Dkt. #35] shall be vacated, subject to this Court’s approval." 

(Id.) 

Because the Stipulation was premised upon the limitations of OGP Version 3.2 as to venue 

discovery, which the Standing Order Regarding Venue Discovery expressly lifted in favor of 

Fed. R. Civ. P. 26(b)(1), Neonode contacted Apple on the afternoon of November 20 concerning 

preparation of a new stipulation and proposed order. [Ex. 1] As Neonode explained, "[a]mong 

other things, the limits of five interrogatories, five requests for production, and four hours of 

30(b)(6) deposition time, and the phasing of discovery, are not required by FRCP 26(b)(1), are not 

consistent with the [Standing Order Regarding Venue Discovery], and so will need to be removed." 

[Id.] Neonode proposed that the parties retain the February 19, 2021 deadline to complete venue 

discovery, with the caveat that, if either party perceives a need to exceed that limit, the parties will 

confer and attempt to resolve the issue before contacting the Court. [Id.] Neonode's proposal of a 

three month discovery period was well within the six month limit imposed by the Standing Order 

Regarding Venue Discovery. Neonode further proposed that Neonode’s response to Apple's 

Motion to Transfer be due on March 5, 2021 and Apple’s reply be due on March 19, 2021. [Id.] 

Neonode's proposal was consistent with the Standing Order Regarding Venue Discovery, which 

provides that the deadline for a plaintiff's response for a defendant's motion to transfer venue is 

Case 6:20-cv-00505-ADA Document 37 Filed 11/23/20 Page 4 of 7
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two weeks after completion of venue discovery. Finally, Neonode proposed that the stay pending 

resolution of the Motion to transfer would remain until resolution of Apple's Motion to Transfer. 

[Id.] Neonode made this proposal to reduce or eliminate the risk that the parties and the Court 

might devote resources to substantive litigation in the Western District of Texas only to have the 

case transferred to the Northern District of California. 

Apple responded on November 23. [Ex. 1] Apple disagreed that the parties should prepare 

a new stipulation and proposed order. [Id.] Apple contended that the Standing Order Regarding 

Venue Discovery "should be no reason for Neonode to backtrack following an extended discussion 

that resulted in the agreement," although Apple did not address the fact that the parties filed the 

Stipulation on November 20 without knowing that the Court on November 19 had lifted all 

limitations on venue discovery other than those provided in Rule 26(b)(1). Apple contended that 

"[d]espite having the motion to transfer for over two weeks now, Neonode still has not served any 

discovery whatsoever," although Apple did not address the fact that Neonode could not serve 

venue discovery until either the Court granted leave, which has not occurred, or Apple allowed it, 

which did not occur before November 19. 

Because the Stipulation and proposed order – both premised upon a mistaken or superseded 

understanding of the Court's limitations on venue discovery – remain pending before the Court, 

and because Apple refuses to enter into a new stipulation that accords with the Standing Order 

Regarding Venue Discovery, Neonode reluctantly determined that it has no choice but to file this 

Notice Of Withdrawal From Stipulation Regarding Venue Discovery. That said, Neonode agrees 

that certain provisions of the Stipulation are sensible and should be included in an order from the 

Court. In particular, Neonode proposes that the Court order that (i) the parties have until February 

19, 2021 to complete venue discovery; (ii) venue discovery is limited only by Fed. R. Civ. P. 

Case 6:20-cv-00505-ADA Document 37 Filed 11/23/20 Page 5 of 7
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26(b)(1); (iii) Neonode shall have until March 5, 2021 to file its response to Apple's Motion to 

Transfer; (iv) Apple shall have fourteen days from filing and service of Neonode's response to file 

its reply brief in support of the Motion to Transfer; and (v) all other deadlines provided in the 

Amended Agreed Scheduling Order [Dkt. #35] are vacated pending resolution of the Motion to 

Transfer. Neonode submits with this notice a proposed order containing these terms. 

III. CONCLUSION 

For the foregoing reasons, Neonode withdraws from the parties' November 20 Stipulation, 

aspects of which were based upon an understanding of the Court's limitations on venue discovery 

that was either mistaken or was superseded by the Standing Order Regarding Venue Discovery. 

Neonode proposes that the Court enter an order that includes the terms set forth above. 

DATED: November 23, 2020 

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 

Respectfully submitted, 

By: /s/ Greer 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 

Counsel for Plaintiff Neonode Smartphone 

LLC

Case 6:20-cv-00505-ADA Document 37 Filed 11/23/20 Page 6 of 7
CERTIFICATE OF SERVICE 

 I hereby certify that on the 23rd 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 Shaw 

 Greer 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 37 Filed 11/23/20 Page 7 of 7