WEST\292978371.6

EXHIBIT A 

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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., 

Defendant.

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

JURY TRIAL DEMANDED 

TO THE APPROPRIATE AUTHORITY IN SWEDEN: 

SAMSUNG ELECTRONICS CO. LTD. AND SAMSUNG ELECTRONICS AMERICA, 

INC.’S REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE PURSUANT TO 

THE HAGUE CONVENTION OF 18 MARCH 1970 ON THE TAKING OF EVIDENCE 

ABROAD IN CIVIL OR COMMERCIAL MATTERS 

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The United States District Court for the Western District of Texas respectfully requests the 

assistance described herein as necessary in the interests of justice. 

1. Sender Office of the Clerk 

United States District Court for the Western District of 

Texas, Waco Division 

800 Franklin Avenue, Room 301 

Waco, Texas 76701 

United States of America 

Phone: (254) 750-1510 

2. Central Authority of the 

Requested State 

Division for Criminal Cases and International Judicial Cooperation 

Ministry of Justice 

SE-103 33 Stockholm, Sweden 

Telephone: +46 8 405 45 00 

Facsimile: +46 8 405 46 76 

ju.birs@gov.se

3. Persons to whom the 

executed request is to be 

returned 

John M. Guaragna 

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

On Behalf Of: 

Office of the Clerk 

United States District Court for the Western District of 

Texas, Waco Division 

800 Franklin Avenue, Room 301 

Waco, Texas 76701 

United States of America 

Phone: (254) 750-1510 

4. Date by which the 

requesting authority 

requires receipt of the 

response to the Letter of 

Request:

As soon as reasonably practicable. 

In conformity with Article 3 of the Convention, the United States District Court for the Western 

District of Texas, Waco Division, honorably submits the following request: 

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5. a. Requesting judicial 

authority (article 3, a) 

United States District Court for the Western District of 

Texas, Waco Division 

800 Franklin Avenue, Room 301 

Waco, Texas 76701 

United States of America 

Phone: (254) 750-1510 

b. To the competent 

authority of Sweden (article 

3, a) 

Division for Criminal Cases and International Judicial Cooperation 

Ministry of Justice 

SE-103 33 Stockholm, Sweden 

Telephone: +46 8 405 45 00 

Facsimile: +46 8 405 46 76 

ju.birs@gov.se 

c. Name of the case and 

any identifying number 

Neonode Smartphone LLC v. Samsung Electronics Co. 

Ltd., et al., Civil Action File Number 6:20-cv-507-ADA

6. Name and addresses of the 

parties and their 

representatives (including 

representatives in the 

requested state)

Plaintiff Neonode Smartphone LLC 

30 N. Gould Street, Suite R 

Sheridan, WY 82801 

a. Representatives Philip J. Graves (CA State Bar No. 153441)

HAGENS BERMAN SOBOL SHAPIRO LLP 

301 North Lake Avenue, Suite 920 

Pasadena, CA 91101 

Telephone: (213) 330-7147 

Facsimile: (213) 330-7152 

Email: philipg@hbsslaw.com

Jakob Falkman 

Advokatfirman Hammarskiöld & Co 

Skeppsbron 42, P.O. Box 2278, 

103 17 Stockholm 

Phone +46 8 578 450 26 

Mobile +46 708 145 481 

jakob.falkman@hammarskiold.se

b. Defendant Samsung Electronics Co. Ltd. 

129 Samsung-Ro, Maetan-3dong, 

Yeongtong-gu, Suwon, 443-742, South Korea 

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Samsung Electronics America, Inc. 

85 Challenger Rd. 

Ridgefield Park, NJ 07660 

Representatives John M. Guaragna 

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

Karl-Oscar Dalin 

Advokatfirma DLA Piper Sweden KB 

Sveavägen 4 

PO Box 7315 

SE - 103 90 

Stockholm 

Sweden 

+46 8 701 78 00 

Karl-Oscar.Dalin@se.dlapiper.com

7. a. Nature of the 

proceedings (article 3, c) 

The nature of the litigation from which the Requests 

stem is a complaint of patent infringement in the 

Western District of Texas involving U.S. Patent Nos. 

8,095,879 and 8,812,993 (“the Patents-in-Suit”). 

b. Summary of complaint The complaint alleges that Samsung has infringed and 

continues to infringe the Patents in Suit by making, 

using, selling, offering for sale and importing into the 

United States certain mobile devices including certain 

user interface elements. 

c. Summary of defense Samsung’s defenses include that the alleged invention 

of the Patents-in-Suit was not conceived or reduced to 

practice prior to the filing date of each patent, and 

inequitable conduct on behalf of the applicant of the 

Patents-in-Suit due to failure to disclose proper 

inventorship of the Patents-in-Suit. 

8. a. Evidence to be obtained 

or other judicial act to be 

performed (article 3, d) 

The nature of the proceeding being requested at this time 

is 

(1) a Request to Compel Testimony from Magnus 

Goertz on the topics set forth in Attachment A, 

(2) a Request for Production of Documents and Physical 

Evidence by Magnus Goertz as set forth in Attachment 

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B, 

(3) a Request to Compel Testimony from Björn Thomas 

Eriksson on the topics set forth in Attachment A; and 

(4) a Request for Production of Documents and Physical 

Evidence by Björn Thomas Eriksson as set forth in 

Attachment B. 

b. Purpose of the judicial 

act sought 

The evidence sought is requested in the interests of 

justice, to establish at trial information in the possession 

of the witnesses relating to (i) the conception and 

reduction to practice of the alleged inventions claimed 

in the Patents-in-Suit, (ii) inventorship and prosecution 

of the Patents-in-Suit, (iii) ownership of the Patents-inSuit, (iv) commercialization of products that allegedly 

embody certain aspects of the alleged inventions 

claimed in the Patents-in-Suit, (v) the development of 

Neno user interface technology, and (vi) 

communications and licensing concerning Plaintiff, 

Defendants, and/or their related entities. 

By way of background, the earliest priority date for the 

Patents-in-Suit that is supported on the face of the 

patents is December 10, 2002. Neonode Smartphone 

has asserted that both Patents-in-Suit are entitled to a 

prior date of May 5, 2000. Magnus Goertz is a cofounder of Neonode Inc. and the sole named inventor of 

the patents at issue in this litigation, U.S. Patent Nos. 

8,095,879 and 8,812,993 (“the Patents-in-Suit”). Björn 

Thomas Eriksson, a co-founder of Neonode Inc., may 

also have information relevant to conception and 

reduction to practice, inventorship of the Patents-inSuit, as well as commercialization efforts before 

December 10, 2002 of Neonode Inc. products that 

allegedly embody certain aspects of the claimed subject 

matter of the Patents-in-Suit. 

9. Identity and address of any 

person to be examined 

(Article 3, e) 

Magnus Goertz 

Personal id. No. 690626-0077 

Valhallavägen 5 

Lidingö 

181 32 SWEDEN 

Björn Thomas Eriksson 

Personal id. No. 700414-0054 

Narvavägen 20 

Stockholm

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115 22 SWEDEN

10. Questions to be put to the 

persons to be examined or 

statement of the subject 

matter about which they are 

to be examined (Article 3, f)

See Attachment A 

11. Documents or other 

property to be inspected 

(Article 3, (g))

See Attachment B 

12. Requirement that the 

Evidence be Given on Oath 

or Affirmation (Art. 3(h))

The witnesses should be examined under oath or 

affirmation as permissible under Swedish law. 

13. Special methods or 

procedure to be followed 

(Art. 3(i) and 9) 

This Letter of Request includes the following requests: 

 That this Letter of Request be granted and the 

evidence-taking proceeding be performed; 

 That copies of the documents and materials 

requested in Attachment B be provided to the 

representatives of the parties prior to scheduling the 

examination of the requested witnesses; 

 That attorneys for the Defendant be permitted to 

ask the witness questions set forth in Attachment A 

including additional questions that are related to the 

subject matter set forth in Attachment A; 

 That representatives of the parties be permitted 

to examine and/or cross-examine the witness; 

 That the testimony be taken remotely via video 

link via a videoconferencing application, and recorded 

as allowed under Swedish law; 

 That an authorized shorthand writer/court 

reporter shall attend the examination who shall record 

the oral testimony spoken in English verbatim (in 

English) and prepare a transcript of the evidence; 

 That an authorized shorthand writer/court 

reporter attend the examination who shall record the oral 

testimony spoken in Swedish verbatim (in Swedish) and 

prepare a transcript of the evidence; 

 That an authorized interpreter for each side be 

present for the examination who shall translate the 

questions and oral testimony between Swedish and 

English; and 

 That the examinations take place at dates and 

times as may be agreed upon between the witness and 

counsel for the parties; and 

 That, to the extent that multiple hearing dates are 

necessary to complete the taking of evidence sought in 

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Attachment A and the additional questions related to the 

subject matter set forth in Attachment A, the hearings 

are scheduled on consecutive days or as close to each 

other as reasonably practicable. 

In the event the evidence cannot be taken in the manner 

or location requested, it is to be taken in such a manner 

or location as provided by local law. To the extent any 

request in this section is deemed incompatible with 

Swedish principles of procedural law, it is to be 

disregarded. 

Defendants have engaged the following counsel to assist 

with this process, and the relevant authorities in Sweden 

are authorized and requested to communicate directly 

with them concerning this process: 

Karl-Oscar Dalin 

Advokatfirma DLA Piper Sweden KB 

Sveavägen 4 

PO Box 7315 

SE - 103 90 

Stockholm 

Sweden 

+46 8 701 78 00 

Karl-Oscar.Dalin@se.dlapiper.com

14. Request for information of 

time and place for the 

execution of the Request 

pursuant to Article 7 of the 

Convention

It is requested that United States counsel for the 

Defendants at the address set forth in paragraph 6 above, 

should be contacted for any information relating to the 

execution of this Letter of Request. 

15. Request for Attendance of 

Participation of Judicial 

Personnel of the Requesting 

Authority at the Execution 

of the Letter of Request 

(Art. 8)

No attendance of judicial personnel is requested. 

16. Specification of Privilege 

or Duty to Refuse to Give 

Evidence Under the Law of 

the State of Origin (Art. 11 

(b)) 

The privilege or duty of the witness(es) to refuse to give 

evidence shall, in addition to what follows from the 

Swedish Procedural Code (Rättegångsbalken), include 

the right to withhold evidence if giving such evidence 

would (1) subject them to a real and appreciable danger 

of criminal liability in the United States, or (2) disclose 

a confidential and privileged communication between 

them and their respective attorneys.

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17. Fees and costs (Art. 14 and 

26) 

Plaintiff and Defendant shall bear any fees and costs 

within the scope of Articles 14 and 26. 

DATE OF REQUEST ___________________ 2021

_______________________________________

United States District Court 

Western District of Texas 

800 Franklin Avenue, Room 301 

Waco, Texas 76701

(signature and seal)

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ATTACHMENT A 

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REQUEST TO COMPEL TESTIMONY 

DEFINITIONS

1. The Local Rules for the United States District Court of the Western District 

of Texas are hereby incorporated by reference. 

2. “Neonode” means, individually and collectively, the companies named 

Neonode Smartphone LLC, Neo5 AB, Neonode AB, Neonode Sweden AB, Neonode Inc., and 

Neonode Technologies AB. and all predecessors, successors, predecessors-in-interest, successorsin-interest, subsidiaries, divisions, parents, and/or affiliates, past or present, any companies that 

have a controlling interest in Neonode, and any current or former employee, officer, director, 

principal, agent, consultant, representative, or attorney thereof, or anyone acting on their behalf. 

3. The “Patents-in-Suit” means U.S. Patent No. 8,095,879 and U.S. Patent No. 

8,812,993. 

4. The “’879 patent” means U.S. Patent No. 8,095,879 and U.S. Patent 

Application No. 10/315,250. 

5. The “’993 patent” means U.S. Patent No. 8,812,993 and U.S. Patent 

Application No. 10/315,250. 

6. “Prior Art” means all publications, patents, physical devices, prototypes, 

public product descriptions, or products concerning the subject matter of the Patents-in-Suit 

existing and publicly available prior to December 10, 2002. 

7. “Person” refers to any individual, corporation, proprietorship, association, 

joint venture, company, partnership, or other business or legal entity, including governmental 

bodies and agencies. 

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8. “Entity” refers to any individual, corporation, proprietorship, association, 

joint venture, company, partnership, or other business or legal entity, including governmental 

bodies and agencies.

9. “Communication” means any written, oral, telephonic or other inquiries, 

and all other documents evidencing any verbal or nonverbal interaction between Persons and 

entities.

10. “Thing(s)” is used in the broadest sense to include everything 

contemplated by Rule 34(a)(1)(B) of the Federal Rules of Civil Procedure.

11. “Include” and “including” shall mean including without limitation.

12. Use of the singular form of a word also includes the plural form of the word 

and vice-versa.

13. The words “and” and “or” shall be construed conjunctively or disjunctively, 

whichever makes the request most inclusive.

14. The word “all” means “any and all” and the word including” means 

“including without limitation,” as necessary, to bring within the scope of these requests 

Documents or Things that might otherwise be beyond their scope.

15. Any pronoun shall be construed to refer to the masculine, feminine, or 

gender neutral as in each case is most appropriate.

16. The Requested State means Sweden. 

TOPICS OF TESTIMONY 

A. The Alleged Conception and Reduction to Practice of the Alleged Inventions 

Claimed in the Patents-in-Suit (Letter of Request, § 8(b), Item (i)) 

1. The scope and content of the subject matter described and claimed in the Patentsin-Suit. 

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2. The conception of the subject matter claimed in the Patents-in-Suit, including, but 

not limited to, the conception date(s), the circumstances of conception including the identity of 

each Person who contributed to the conception and the specific contribution(s) made by each such 

Person, the specific contributions to conception made by Björn Thomas Eriksson, the date and 

content of the first written description or depiction of the claimed subject matter in a printed 

publication and/or drawings; Documents relating to any of the foregoing; the types and locations 

of Documents relating to any of the foregoing; and the identities of Persons in possession of 

Documents relating to any of the foregoing. 

3. Diligence in the reduction to practice of the subject matter claimed in the Patentsin-Suit, including, but not limited to, the date(s) of such diligence from the period of alleged 

conception and up to the filing date of the patent, the circumstances of such diligence including 

the identity and role of each Person who participated in or has knowledge of such diligence, Björn 

Thomas Eriksson’s participation or knowledge of such diligence; Documents relating to any of the 

foregoing; the types and locations of Documents relating to any of the foregoing; and the identities 

of Persons in possession of Documents relating to any of the foregoing. 

4. The first manufacture, first demonstration, first disclosure, first written description, 

first publication, first prototype, first use, first public use, first offer for sale, first sale, and first 

importation into the United States of the subject matter claimed in the Patents-in-Suit. 

5. Any perceived advantages or disadvantages, problems, features, or improvements 

over the Prior Art of any invention claimed in the Patents-in-Suit. 

6. Any long-felt but unmet need for the alleged inventions claimed in the Patents-inSuit, failure by others to develop the alleged inventions claimed in the Patents-in-Suit, skepticism 

by others of the alleged inventions claimed in the Patents-in-Suit, commercial success of the 

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alleged inventions claimed in the Patents-in-Suit, awards or industry recognition based on any 

alleged inventions claimed by the Patents-in-Suit, copying by others of the alleged inventions 

claimed in the Patents-in-Suit, or unexpected results of the alleged inventions claimed in the 

Patents-in-Suit. 

B. Inventorship and Prosecution of the Patents-in-Suit (Letter of Request, § 8(b), Item 

(ii)) 

7. Any difficulty or challenge in implementing the alleged inventions claimed in the 

Patents-in-Suit including any specific contribution of Björn Thomas Eriksson, Magnus Goertz, or 

any other party to overcome any such difficulty or challenge. 

8. The decision to seek patent protection for the alleged inventions claimed in the 

Patents-in-Suit. 

9. The decision to identify Magnus Goertz as the only inventor for the Patents-in-Suit. 

10. Thomas Eriksson’s contribution to the technology described in the Patents-in-Suit 

and the inventions claimed in the Patents-in-Suit. 

11. Any investigation into the inventorship of the Patents-in-Suit. 

12. Any agreement between Magnus Goertz, Thomas Eriksson, and/or Neonode related 

to the naming of Magnus Goertz as the sole inventor of the Patents-in-Suit. 

13. The circumstances surrounding the Inventors Declaration For Patent Application 

document, which includes a signature allegedly by Magnus Goertz, dated March 5, 2003, for a 

patent application filed December 10, 2002. 

14. Magnus Goertz and Thomas Eriksson’s involvement in the preparation, 

submission, and prosecution of the ’879 Patent and the ’993 Patent, including, without limitation, 

any and all parent applications, divisionals, continuations, continuations-in-part, foreign 

equivalents, and applications claiming the benefit of the filing date of any of the foregoing 

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(whether abandoned or not), including, but not limited to, the identity of the Persons who drafted, 

revised, contributed to, or were otherwise involved in the prosecution of said patent applications 

and the decision about what Prior Art to disclose or not disclose to the PTO; the types and locations 

of Documents relating to any of the foregoing; and the identities of Persons in possession of 

Documents relating to any of the foregoing. 

15. The prosecution of all patents and patent applications related to the Patents-in-Suit, 

including but not limited to the identity of the Persons who drafted, revised, contributed to, or were 

otherwise involved in the prosecution of said patents or patent applications and the decision about 

what Prior Art to disclose or not disclose to the PTO or other patent office or agency; the types 

and locations of Documents relating to any of the foregoing; and the identities of Persons in 

possession of Documents relating to any of the foregoing. 

16. Any and all knowledge of Prior Art by Mr. Goertz, Mr. Eriksson, or any Persons 

having duty under 37 C.F.R. § 1.56 during prosecutions of any of the Patents-in-Suit. 

17. All writings, publications, abstracts, papers, presentations, memoranda, reports, or 

speeches (whether published or not) authored or given, in whole or in part, by Mr. Goertz, Mr. 

Eriksson, Neonode Inc., or its predecessors or successors, and that relate, in whole or in part, to 

the subject matter disclosed or claimed in the Patents-in-Suit; the identities of Persons involved in 

the generation of such writings, publications, abstracts, papers, presentations, memoranda, reports, 

or speeches; the types and locations of Documents relating to any of the foregoing; and the 

identities of the Persons in possession of Documents relating to any of the foregoing. 

18. The Prior Art Magnus Goertz and/or Thomas Eriksson are aware of that relates to 

the general subject matter of any claim of the Patents-in-Suit, and how and when Magnus Goertz 

and/or Thomas Eriksson first became aware of the Prior Art. 

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19. Any studies, investigations, searches, analyses, or reports concerning the Patentsin-Suit, including, without limitation, those regarding the actual or alleged infringement, 

patentability, invalidity, validity, enforceability, unenforceability, or scope of any claim of the 

Patents-in-Suit; the identities of Persons involved in generating any such studies, investigations, 

searches, analyses, or reports concerning the Patents-in-Suit; the types and locations of Documents 

relating to any of the foregoing; and the identities of Persons in possession of Documents relating 

to any of the foregoing. This includes, without limitation, any analyses, investigations, studies, 

reports, opinions, or contentions regarding the Patents-in-Suit, and any assertion by any Person 

that any of the Patents-in-Suit is valid, invalid, enforceable, unenforceable, and/or infringed or not 

infringed. 

C. Ownership of the Patents-in-Suit (Letter of Request, § 8(b), Item (iii)) 

20. Any past or current relationship between Magnus Goertz and/or Thomas Eriksson 

and Neonode Smartphone, Neo5 AB, Neonode AB, Neonode Sweden AB, Neonode Inc., or 

Aequitas, or any affiliates thereof, including the terms of any contract or consulting arrangement. 

21. The formation of Neo5 AB, Neonode AB, Neonode Sweden AB, and Neonode, 

Inc. and/or any affiliates thereof or entities related thereto. 

22. The assignments of rights in the Patents-in-Suit from Magnus Goertz to Neonode 

Sweden AB, dated on or about December 2, 2004, including any compensation arrangements 

related to any such assignment of rights. 

23. The assignment of rights in the Patents-in-Suit from Neonode Sweden AB to 

Neonode AB, dated on or about July 4, 2006, including any compensation arrangements related to 

any such assignment of rights. 

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24. The assignment of rights in the Patents-in-Suit from Neonode AB to Neonode Inc., 

dated on or about December 5, 2008, including any compensation arrangements related to any 

such assignment of rights. 

25. Any payments or other forms of compensation or remuneration made to Magnus 

Goertz or Thomas Eriksson in connection with the Patents-in-Suit, including, without limitation, 

the form of such payment, the amount of such payment, the date such payment was made; the 

identity of each Person with knowledge of such payment, the reason for such payment; the types 

and locations of Documents relating to any of the foregoing; and the identities of persons in 

possession of Documents relating to any of the foregoing. 

D. Commercialization of Products That Allegedly Embody Certain Aspects of the 

Alleged Inventions Claimed in the Patents-in-Suit (Letter of Request, § 8(b), Item 

(iv)) 

26. The design and development of the Neonode N1, N1m, and N2 mobile phones, 

including, without limitation, development of requirements, specifications, and prototypes the 

Neonode N1, N1m, and N2 mobile phones including the specific contributions of Björn Thomas 

Eriksson. 

27. The commercialization and marketing of the Neonode N1, N1m, and N2 mobile 

phones, including, without limitation, dissemination of product literature and demonstration of 

prototypes, including such activities at press conferences, industry conferences, and trade shows. 

E. The Development of Neno User Interface Technology (Letter of Request, § 8(b), 

Item (v)) 

28. Magnus Goertz and Thomas Eriksson’s development of the Neno user interface 

during the period January 1, 2000 up to and including December 10, 2002. 

29. The identities of, and work performed by, Neonode employees, consultants, 

contractors, and vendors, and others working with, for, or under the direction of Magnus Goertz 

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and/or Thomas Eriksson, with respect to the development of the Neonode mobile phone 

incorporating the Neno user interface during the period January 1, 2000 up to and including 

December 10, 2002. 

30. The development of any prototype of the Neno user interface or Neonode mobile 

phone incorporating the Neno user interface, during the period January 1, 2000 up to and including 

December 10, 2002. 

31. The use, display, demonstration, sale, offers for sale, or publication, of the Neno 

interface or Neonode Phone or its prototypes that incorporated the Neno user interface during the 

period January 1, 2000 up to and including December 10, 2002. 

32. Identity of and work performed by third parties regarding the design and 

development of the Neno user interface or Neonode mobile phone incorporating the Neno user 

interface during the period of January 1, 2000 until December 10, 2002. 

33. Magnus Goertz and/or Thomas Eriksson’s activities and communications regarding 

the Neonode products incorporating the Neno user interface purportedly demonstrated at the 

March 2002 CeBit event in Germany. 

34. Magnus Goertz and/or Thomas Eriksson’s activities and communications regarding 

the Neonode products incorporating the Neno user interface purportedly demonstrated at the 

December 2002 press conference in Stockholm, Sweden. 

35. Sales and preorders of the Neonode mobile phone incorporating the Neno user 

interface during the period January 1, 2000 up to and including December 10, 2002. 

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F. Communications and Licensing Concerning Plaintiff, Defendants, and/or Their 

Related Entities (Letter of Request, § 8(b), Item (vi)) 

36. Magnus Goertz’s and/or Thomas Eriksson’s knowledge regarding the July 13, 2005 

Research & Development and License Agreement between Neonode Sweden AB and Samsung 

Electronics Co., Ltd. 

37. Communications between Magnus Goertz and/or Thomas Eriksson and Samsung 

Electronics Co., Ltd. or Samsung Electronics America, Inc. concerning the Patents-in-Suit, the 

patent applications from which the Patents-in-Suit issued, or the Neno user interface technology. 

38. Communications or negotiations between Magnus Goertz and/or Thomas Eriksson 

and any of Neo5 AB, Neonode AB, Neonode Sweden AB, Neonode Inc., or Aequitas, or any 

affiliates thereof relating to the Patents-in-Suit. 

39. Communications between Magnus Goertz or Thomas Eriksson and any attorney 

representing Neonode including in-house or outside Neonode counsel. 

40. Communications between Magnus Goertz and Thomas Eriksson concerning the 

Patents-in-Suit, the Neno user interface technology, or development or patenting of the alleged 

inventions claimed in the Patents-in-Suit, including but not limited to the inventorship of the 

Patents-in-Suit. 

41. Any topic raised by another party during the examination of Magnus Goertz or 

Thomas Eriksson.

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ATTACHMENT B 

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REQUEST FOR PRODUCTION OF DOCUMENTS AND PHYSICAL EVIDENCE 

DEFINITIONS

1. The Local Rules for the United States District Court of the Western District 

of Texas are hereby incorporated by reference. 

2. “Neonode” means, individually and collectively, the companies named 

Neonode Smartphone LLC, Neo5 AB, Neonode AB, Neonode Sweden AB, Neonode Inc., and 

Neonode Technologies AB. and all predecessors, successors, predecessors-in-interest, successorsin-interest, subsidiaries, divisions, parents, and/or affiliates, past or present, any companies that 

have a controlling interest in Neonode, and any current or former employee, officer, director, 

principal, agent, consultant, representative, or attorney thereof, or anyone acting on their behalf. 

3. The “Patents-in-Suit” means U.S. Patent No. 8,095,879 and U.S. Patent No. 

8,812,993. 

4. The “’879 patent” means U.S. Patent No. 8,095,879 and U.S. Patent 

Application No. 10/315,250. 

5. The “’993 patent” means U.S. Patent No. 8,812,993 and U.S. Patent 

Application No. 10/315,250. 

6. “Aequitas” means Aequitas Technologies LLC and all predecessors, 

successors, predecessors-in-interest, successors-in-interest, subsidiaries, divisions, parents, and/or 

affiliates, past or present, any companies that have a controlling interest in Neonode, and any 

current or former employee, officer, director, principal, agent, consultant, representative, or 

attorney thereof, or anyone acting on their behalf. 

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7. “Prior Art” means all publications, patents, physical devices, prototypes, 

public product descriptions, or products concerning the subject matter of the Patents-in-Suit 

existing and publicly available prior to December 10, 2002. 

8. “Person” refers to any individual, corporation, proprietorship, association, 

joint venture, company, partnership, or other business or legal entity, including governmental 

bodies and agencies. 

REQUESTS FOR PRODUCTION OF DOCUMENTS

1. All Documents produced or otherwise provided by Magnus Goertz and Thomas 

Eriksson to Neonode’s legal counsel. 

2. A copy of Mr. Goertz’s most recent resume and/or curriculum vitae, and a copy of 

Mr. Eriksson’s most recent resume and/or curriculum vitae. 

3. The purchase orders, vendor invoices, statements of work, and commercial 

contracts generated by or provided to Magnus Goertz and/or Thomas Eriksson relating to the 

Neonode mobile phone incorporating the Neno interface before December 10, 2001. 

4. The product literature describing the Neonode mobile phone incorporating the 

Neno interface distributed before December 10, 2002. 

5. The Neonode mobile phone incorporating the Neno interface purportedly 

demonstrated at the March 2002 CeBit event in Germany. 

6. The Neonode mobile phone incorporating the Neno interface purportedly 

demonstrated at the December 2002 Stockholm press conference. 

7. Communications before December 10, 2001 between Magnus Goertz or Thomas 

Eriksson relating to the Neonode mobile phone incorporating the Neno interface or 

implementation of the alleged inventions claimed in the Patents-in-Suit. 

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8. All Documents and communications related to the preparation, submission, and 

prosecution of the applications for the Patents-in-Suit. 

9. All Prior Art of which Magnus Goertz or Thomas Eriksson are or were aware that 

relates to the general subject matter of any claim of the Patents-in-Suit, including all Documents 

or events whether or not it was deemed prior art at the time. 

10. All Documents and/or communications regarding any advantages or disadvantages, 

problems, features, or improvements over the prior art of any invention claimed in the Patents-inSuit. 

11. All Documents and/or communications regarding the use, display, sales, offers for 

sale, or making available to the public, the Neonode mobile phone incorporating the Neno interface 

prior to December 10, 2002. 

12. All Documents and communications related to efforts by Mr. Goertz or Mr. 

Eriksson, or on their behalf, to commercialize any of the inventions of the Patents-in-Suit. 

13. Communications between Mr. Goertz or Mr. Eriksson and Samsung Electronics 

Co., Ltd. or Samsung Electronics America, Inc. concerning the ’879 Patent, the ’993 Patent, or the 

Neno user interface technology. 

14. Communications between Mr. Goertz or Mr. Eriksson and any attorney 

representing Neonode or Aequitas including in-house or outside Neonode counsel. 

15. Communications between Magnus Goertz and Thomas Eriksson concerning the 

Patents-in-Suit or the Neno user interface technology. 

16. Documents sufficient to show the creation or registration of any legal business 

entities by or for Magnus Goertz or Thomas Eriksson in connection with their efforts to develop 

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or commercialize the Neonode mobile phone incorporating the Neno interface, including Neo5 

AB, Neonode AB, Neonode Sweden AB, and Neonode Inc. 

17. All Documents and Communications between Magnus Goertz and/or Thomas 

Eriksson and any other Person, including, without limitation, Neonode Smartphone or its 

attorneys, Neonode Inc. or its attorneys, or Aequitas or its attorneys, that refer or relate to any 

compensation, both monetary and nonmonetary, that Magnus Goertz, Thomas Eriksson, Neonode 

Inc., or any other Person paid or received in connection with the invention, assignment, license, 

sale, or transfer of any rights in or to the Patents-in-Suit. 

18. Documents provided to all other parties related to the current litigation. 

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