Neonode Smartphone LLC v. Apple Inc

Background

Neonode Smartphone LLC sued Apple Inc. for allegedly infringing two patents concerning user interfaces for certain mobile handheld devices. The court addressed a discovery-dispute letter brief concerning two nonparty witnesses: Magnus Goertz, the named inventor of both patents, and Thomas Eriksson, who was described as the CEO of Neonode Technologies AB and Neonode, Inc. and as a consultant retained by Neonode. Swedish depositions of Goertz and Eriksson were scheduled for May 11 and May 13, 2022.

Apple requested: (1) documents Neonode or its counsel obtained from Goertz or Eriksson; (2) communications between Neonode or its counsel and those witnesses; and (3) documents Neonode intended to use during the Swedish depositions. Neonode raised five objections.

Court’s analysis

The court explained that federal discovery generally covers nonprivileged information relevant to a claim or defense. It also explained that attorney-client privilege protects confidential communications made to obtain or provide legal advice, while the work-product doctrine provides qualified protection for materials prepared in anticipation of litigation. Work-product protection may be overcome when the requesting party shows substantial need and an inability to obtain the equivalent materials without undue hardship.

The court overruled Neonode’s first objection, which argued that Apple had not served formal document requests. The court found that requiring formal requests under the circumstances would impose an unnecessary delay because Neonode knew what Apple sought and had already objected.

The court overruled the second objection, which challenged the breadth of Apple’s request for communications. Because Goertz was the named inventor, the court found Apple’s stated reasons for seeking the materials persuasive. The court identified possible relevance to conception and reduction of practice of the alleged inventions, validity, and witness credibility. The court noted that Neonode had not argued that production would be burdensome or disproportionate.

The court also overruled Neonode’s third and fourth objections concerning work-product protection. It rejected Neonode’s categorical approach and stated that any work-product claims should be raised for specific documents or communications in a privilege log. The court said it could review particular disputes through an in-camera review, meaning a private examination by the court. It further found that Apple’s preparation for cross-examination supported access to documents and communications Neonode’s counsel intended to use during the witnesses’ direct examinations.

Finally, the court overruled Neonode’s fifth objection, which asserted that the requested materials had already been produced or did not exist. The court found that this position did not address documents intended for use at the depositions, communications between counsel and the witnesses, or documents Eriksson provided after entering the consulting agreement.

Order

Judge Robert M. Illman ordered Neonode to produce, by 12:00 noon on May 4, 2022: (1) all documents Neonode or its counsel obtained from Goertz or Eriksson, including Eriksson’s consulting agreement; (2) all communications between Neonode or its counsel and the two witnesses; (3) all documents Neonode might use at their depositions; and (4) a privilege log identifying any of those documents or communications withheld based on privilege or the work-product doctrine. The order granted Apple’s request to compel production and overruled all five of Neonode’s objections.