Case 6:20-cv-00420-ADA Document 185-21 Filed 10/28/22 Page 1 of 24
`Case 6:20-cv-00420-ADA Document 185-21 Filed 10/28/22 Page 1 of 24
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`EXHIBIT 21
`EXHIBIT 21
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`Case 6:20-cV-00420-ADA Document 177
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`Filed 10/21/22
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`IN THE UNIIED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`EPISTAR CORPORATION，
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`Plaintiff，
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`V。
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`LOWE”S COMPANIES, INC.，
`LOWE”S HOME CENTERS,LLC,
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`Defendants.
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`$
`S
`$
`8
`8
`$
`$
`$
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`$
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`CASE NO. 6:20-cv-00420-
`ADA
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`DEFENDANTS OMNIBUS MOIIONS /AW 了 7477 人 到
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`Case 6:20-cv-00420-ADA Document 177
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`TABLE OF CONTENTS
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`INTRODUCTION,,
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`Page
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`1
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`RELEVANT LEGAL STANDARDS .ee 1
`
`IHHL
`
`ARGUMIENTT..... sssssssessssnsessnsnsessssnsensnsnnessnsnnessnssssnsnnnnensnsnnessnsnssnsnsonnsnsnsoososossosooosoosns 1
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`1
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`2.
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`3.
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`4.
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`S.
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`6.
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`7.
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`8.
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`9.
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`一 To Exclude References to the Result of the Prior
`77 Zi7tizze Topic No. 1
`Litigation Between Epistar and LOoWe7?S .see 1
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`了 了 ce Topic No. 2 - To Preclude Epistar from Suggesting or Implying
`that Lowe's Was Required to Obtain an Opinion of Counsel .ve。 3
`
`772 Zi7zi1ie Topic No. 3 - To Preclude Testimony or Opinions Directed to
`the Philips Licensing Program and Purported Industry Practices .…………。 6
`
`- To Exclude Testimony Regarding Induced
`77 Zi1t1i1ze Topic No. 4
`Infringememnt......
`.seesese sssnsessnsnsnssnsnsnsessnsessnsnsnnensnsnnessnsessnsnnnsnsnsosessesessosososese 8
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`一 To Preclude Epistar from Asserting or Eliciting
`17 Zi7tize Topic No. 5
`Testimony that the Patents or Claims are Addressed to“Filaments” or
`“Filament-Style BulipS? .ss ss sssss ssessssse ssssessssssssessssssessssesesssssssssososeesssesossosns 9
`
`一 To Exclude Comparisons 人 Against Incandescent
`77 Zi1tie Topic No. 6
`Bulbs, Fluorescent Bulbs, or Heat-Sink-Style Bulbs .ee 10
`
`一 To Exclude Optical Testing Performed on
`77 Zi1ti1ie Topic No. 7
`Intentionally Broken Bulbps .ssesssssnsesessnsnsesessssessnsosessnsosessesoseosososese 11
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`一 TO Exclude Testimony and Evidence Referencing
`No. 8
`77 Zi71t11e Topic
`Irrelevant Financial Information Related to the Litigants .ee 12
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`- To Exclude Redundant Testimony from
`9
`了 Zizti1ie Topic No.
`Mr Yo 13
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`10.
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`二 了 zze Topic No. 10 一 To Exclude References to the Presumption of
`Validity .sse see se seesssessssssessssesessssssessssssessssesesssssssssesssessssessssososessososeesosesess 14
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`TV .
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`CONCLUSION .ses ss sseessssssesessssssessssssessssnsssessssesssssssssesssesesssssssssssessssossseesssessssososeose 1S
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`

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`Case 6:20-cv-00420-ADA Document 177
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`TABLE OF AUITHORITIIES
`
`了 Page(Ss)
`
`CasSesS
`
`41amn v LU1ited es,
`No. 118CV821LMBMSN, 2019 WL 2113004 (上 E.D. Va. ApT. 93, 2019) .pe 14
`
`411. 7ecj1. Cea1aics Co Presidio Co11DO11e11 好 ， 1711c.，
`No. 14-CV-6544KAM-GRB,2019 WL 2330833 (上 E.D.N.Y. May 31, 2019) .pp 12
`
`41o Ma1tU1acturizg Co.
`377 U.$. 476 (1964 )
`
`vv Co1iverfipie Top Repjacee11t Co.,
`
`Dampo ME LOC，
`4Uto111atic 和 2 泡 . MB Co
`No. 8:19-CV-162, 2021 WL 4078282 (D. Neb. Sept. 8 2021)
`
`8
`
`7
`
`有 BANV Leasing 11pc.v Portapu Fuel er 了 CC,
`No. 2:19-CV-156-KS-MTP, 2022 WL 892747 ($.D. Miss. Mar.25,20222 15
`
`Co Co1D. v Ce11e11tecH，11c.，
`363 上 .3d 1247 (Fed. Cir. 2004
`
`六 CH1TJSjer CO.,
`Co/ezzg7z Motor Co.
`S23 F.2d 1338 (3d CIf. 1979S
`
`or4er，
`ES8GU1SLV OF Dep
`478 上 .3d 983 (9th CiT. 2007)
`
`E11i1aaderge111ei11scpaf UroPen GDRY ENZL1D 有 Co.，
`No. 2:13-CV-1202-WCB, 2017 WEL 939392 (上 .D. Tex. Mar. 13, 2017)
`
`22 Mg. Co.v B1iggsy 歷 人 57792 Power Prods. GO1D. ,LOLC，
`879 上 .3d 1332 (Fed. CIT. 2018
`
`Z711a12 1101c.V Be Coat 978.，111c.，
`No. 13-CV-03999-BLF, 20153 WL 4129193 (N.D. Cal. July 8, 2013 )
`
`Ciojy vv Do1azta7 2
`95 上 .3d 1320 (th CIT. 19960)
`
`15
`
`2
`
`2
`
`15
`
`7
`
`12
`
`11
`
`Clopa/-7ecn 4ppliiances 111c .vv EDFO4.，
`5363 U.S. 734 (201 1 38, 9
`
`Coldstei1 vv Cezzoco7,
`No. 05-21515 COV,2007 WL 01913 ($.D. Fla. Jan. 3$, 2007)
`
`14
`
`

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`Case 6:20-cv-00420-ADA Document 177
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`Filed 10/21/22
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`Page 4 of 23
`
`Gracev 4pple 711pc.，
`No. 17-CV-00551-LHK, 2020 WL 227404 (N.D. Cal. Jan. 19, 2020)
`
`Eapety CO7,Sg7 Diego，
`No. 07CV1607-L(WVGO), 2011 WL 13336067 ($.D. Cal. June 27,， 2011)
`
`1
`
`14
`
`Calo Electro1licy 11ic. vv Pulse Electro1ics， 11C.，
`379 U.S3. 93 (2010)] .Ne 4
`
`// FE1gipe, 11c.v 4OL 111c.，
`No. 2:11CV312, 2012 WL 12068846 (上 .D. Va. Oct 12, 2012)
`
`ZL1 7e ECer Co.,
`130 上 .3d 1362 (Fed. Cr 199 遇 )
`
`天 11O1T-B1e111se yste111e EUer NUtzjJajpjzetlge CMMB 克 v Da1pa Co17.，
`383 上 .3d 1337 (Fed. Cir. 2004) (e1z DG11C]
`
`ZUce yv LU11ited 91atesy，
`469 U.S. 38 (1984 )
`
`7
`
`10
`
`3
`
`1
`
`Meyeryv 52e77zsc7ec Motore1 所 eye 4G,
`No. C17-1218 RSM, 2022 WL 3360748 (W.D. Wash. Aug. 18,2022) 人 La 14
`
`上 MPF Gop. ECoidipgs Lid. vv PricewaternorseCoope1y ZLP，
`232 F. Supp. 3d 938 (S.D.N.Y. 201 7 14
`
`Microsofi Co1D.v 141 7 PartmersHzp，
`9304 U.3. 91 (201 1) 15
`
`josjey-Lovipngy 以 47 人 7 Co1.，
`No.3:18-CV-01145-X,2020 WL 6865787 (N.D. Tex. Aug. 12, 2020) .pe 12
`
`Pau11zaierrv Dejaria，
`88 上 .3d 136 (2d Cr. 1990
`
`1
`
`ozze22e27z 111sUiation 7ecH1. ZLCV ealed 4 Co7.,
`No. 2:13-CV-1113-JRG-RSP, 2013 WL 11027036 (上 E.D. Tex. Aug. 14, 2013) .pp 4, 12
`
`ResONetco11 111c. 六 Za1180G，111c.，
`394 上 .3d 860 (Fed. CT 2010)]. 7
`
`ECV Goldsto11e，
`No. 12-0237 JB/LFG, 2016 U.S$. Dist. LEXIS 75299, 2016 WL 3654279
`(D.N.M. June 9, 2016)
`
`0e)J11IOU V. AcCo7T11iCH
`37 U.S. 480 (18 和)
`
`3
`
`7
`
`

`

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`Case 6:20-cv-00420-ADA Document 177
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`0o10S 11C.V DCAM PEoidijrgs 10c.，
`No. CV 14-1330-WCB, 2017 WL $633204 (D. Del. NovV. 21, 2017)
`
`277zz/ CO1111I1C 118 CO. 了 .已 Co1tcast 7P Foidipzgs LOC，
`No. CV 12-1013-RGA, 201$ WL456154 (D. Del. Jan. 30, 2015 )
`
`2
`
`7
`
`人 有 7 7 172c. vv Cisco 978.，11c.，
`930 上 .3d 1293 (Fed. Cir. 20198). 4
`
`7eva Phpar111. 71117 G111D1 TY ED 长 Co.，
`No. 18-CV-12029-ADB, 2022 WL 10489059 (D. Mass. Oct. 17; 2022 ). 15
`
`71ipodeaxx yy Great 碼 Cgs. Co.,
`No. CIV.A. 10-274, 2011 WL 11349138 (W.D. La. Oct. 31, 201] 1)
`
`Cjzited States v Be11si710711，
`172 上 .3d 1121 (9th CT 1999)
`
`Cjzited States v Gd7/ego,
`913 F. Supp. 209 (S.D.N.Y. 1996), 2 191 F.3d 156 (2dCir 1999)
`
`Cjzited tates v Gravesy，
`SF.3d 1S46 (5th Cir 1993 )
`
`14
`
`1
`
`6
`
`1
`
`記 /zzez 12c vv 42727e 11c.，
`No. 6:12-CV-855,2016 WL 4063802 (E.D. Tex. July 29, 2016) .pe 1
`
`ypev Cnordiant ojhvare, 77c.,
`No. C 08-00019 JW, 2010 WL11575579 (N.D. Cal. Apr. 22, 2010) .ps 6
`
`Statutes
`
`35 U.S.C.
`
`工 L2(BD)
`
`35 U.S.C.
`
`271(D)
`
`35 U.S.C.
`
`298
`
`Other Authorities
`
`10
`
`8
`
`3, 4
`
`1-7 Patent Case Management Judicial Guide 7.3 (201 7 15
`
`Federal Rules of Evidence 401
`
`Federal Rule of EVidence 403
`
`Pass111
`
`DaQSSI11I
`
`Federal Rule of Evidence 404 .ps 2
`
`ii
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`

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`Case 6:20-cvV-00420-ADA Document 177
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`有 H. R. 3866, 81St COng.，1St SESS
`
`丽 . R. 3988, 80th COong., 2d SeSS.
`
`8
`
`8
`
`IV
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`L
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`INTRODUCTION
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`Lowe's Companies, Inc. and Lowe's Home Centers, LLC (collectively “Lowe's) hereby
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`move 及 /zize to limit the parties” presentation of evidence and argument at the upcoming trial.
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`The evidenceto be excluded and the reasons therefor are addressed in the sections ofthe Argument
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`below.
`
`IL
`
`RELEVANT LEGAL STANDARDS
`
`A motion zi zipeallows a district court“to exclude anticipated prejudicial evidence
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`before the evidence is actually offered.”Zucev United states, 469 U.S.38,41-42 (1984). Deciding
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`“a motion 及 1ipazize is essentially a preliminary opinion that falls entirely within the discretion of
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`the district court ”Vited tates 六 Bensi1o1，172 F.3d 1121, 1127 (9th Cir. 1999); see also
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`Pa1jzieriv Delaria, 88 F.3d 136, 141 (2d Cir. 1996). Rulings on motions 六 772zpe are not final，
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`and therefore, the motions may be renewed at trial. Litea tales v Graves, 5 F.3d 15346, 1552
`
`(Sth Cir. 1993).
`
`IIU.，
`
`ARGUMUENT
`
`1
`
`一 To Exclude References to the Result of the Prior
`77 字 77ze Topic No. 1
`Litigation Between Epistar and Lowe?S
`
`As the Court is aware, the parties went to trial late last year on three patents that are
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`unrelated to the patents in Suit, and those patents were found valid and infringed (although the
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`court recently vacated the damages award and no final judgment has been entered). EDPIstar Co1D.
`
`V Zowes Cos., Inc., No. 2:17-cv-03219, Dkt. No. 499 (C.D. Cal. Oct. 4, 2022) (hereinafter the
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`California Litigation); ECF No. 172-1. Any mention of the result of that litigation here would be
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`both irrelevant and highly prejudicial, and therefore, should be excluded under Federal Rules of
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`Evidence 401 and 403. Grace v 4pplie, 11c., No. 17-CV-00551-LHK, 2020 WL 227404, at *2
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`(N.D. Cal. Jan. 15, 2020) (citing cases);
`
`aetlX 11c.v 4Pple 11c., No. 6:12-CV-855, 2016 WL
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`4063802, at *3 (E.D. Tex. July 29, 2016) (granting a new trial due to prejudice caused by
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`discussion of a prior verdictb); see also E1gquistv Or Denp
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`for4er, 478 FE.3d 985, 1009 (9th Cir.
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`2007) (“Commentators agree that most courts forbid the mention of verdicts or damage amounts
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`obtained in former or related cases.”) (citations omitted); Coie1aa1z Motor Co. v CH1rysfer Co7.,
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`525 F.2d 1338, 1351 (3d Cir. 1975) (“A Jury is likely to give a prior verdict against the same
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`defendant more weight than it warrants.”). Moreover much like evidence of other wrongs or acts
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`under Federal Rule of Evidence 404, it would be improper to infer anything about infringement
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`here from past acts of infringement of unrelated patents. That Judge Kronstadt concluded that
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`patents asserted there were not sufficiently proven invalid also has no bearing on the disputed
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`1SSues here, despite Epistar”s recent Submission asserting the opposlte (see ECF No. 174 at 2).
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`Moreover, those conclusions are not the subject of a final judgment, and therefore, cannot form
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`the basis for any estoppel.
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`In addition，Epistar has identified for potential use at trial
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`a Significant number of
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`documents related solely to Lowe'”S” relationship with Yankon as to the Utilitech and Kichler-
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`branded bulbs, which were the products at issue in the prior litigation. 9ee, e.g., Plaintiffs TIT. EX.
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`Nos. 15, 18, 19, 22-26, 78-80, 3177, 3179,
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`3185-219, 3222, 3223.1 That Lowe's had a relationship
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`with Yankon with respect to different products in the past has no relevance here. Instead, the only
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`Yankon-manufactured products at issue here are those manufactured under license from GE
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`Lighting, a Savant company.
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`Although the result of the litigation should be excluded, testimony and party admissions
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`Should be available for purposes of impeachment. ,Sozos, 1p2c.v DCHM Foldings 1pc., No. CV 14-
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`1330-WCB, 2017 WL 5633204, at *1l (D. DeL Nov. 21, 2017) (J. Bryson Sitting by designation);
`
`
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`Due to the sheer number ofexhibits on Epistar”s exhibit list many of which are duplicated,
`1
`Lowe's may not have identified all such documents.
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`2
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`SOECv Goldstonre, No. 12-0257 JB/LFG, 2016 U.S. Dist. LEXIS 75299, 2016 WL 3654279, at *9
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`(D.N.M. June 9, 2016). The specific context (Le.,
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`也 at an admission or testimony occurred during
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`a prior lawsuit between the parties), however, is irrelevant and need not be mentioned.
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`2.
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`7 了 zze Topic N0.2 一 To Preclude Epistar from Suggesting or Implying that
`Lowe's Was Required to Obtain an Opinion of Counsel
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`Epistar should be precluded from eliciting testimony or arguing that “Lowe's did nothing”
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`in reSponse to its 2016“notice”letter. Throughout fact discovery, Epistar myopically focused on
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`What Lowe's and its non-attorney employees did with respect to assessing patent issues. For
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`example, Epistar”s Request for Admission 6 asks Lowe's to “Admit that between April 2016 and
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`May 22, 2020, You did not perform any analysis to determine whether ornotthe Accused Products
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`infringe the claims of the Patents-in-Suit.”(Eisenberg Decl. Ex. Ai see also 忆 at RFA 7 (same
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`with respect to invalidity); RFA 8 (Same with respectto enforceability); RFA 23 (requiring“design
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`around information based on “nonprivileged information); RFA 24 (Same); REFA 23 (Same). Any
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`Such analyses would have been performed by in-house or outside counsel on Lowe”S”behalf.
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`Hence, as reflected in Lowe?S” Tesponses, the requests each seek to invade the attorney-client
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`privilege, the work product doctrine, and/or the common interest privllege. (CQ ).
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`By statute，“[tjhe failure of an infringer to obtain the advice of counsel with respect to any
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`allegedly infringed patent, or the failure ofthe infringer to present such advice to the court or jury，
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`may not be used to prove that the accused infringer willfully infringed the patent or that the
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`infringer intended to induce infringement ofthe patent.”35 U.S.C. $ 298. In other words, neither
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`evidence ofLowe's” decision to seek or notto seek the advice of counsel, nor Lowe”S” withholding
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`of any such advice can be used to prove willful. 1&; see also K1oj7-B1je11se yste111e Fer
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`Nutzj1ajpyrzege, GCUMB 达 Tv Dana Co 383 F.3d 1337, 1344-45 (Fed. Cir. 2004) (ez pampc) (“[N]o
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`adverse inference shall arise from invocation of the attorney-client [
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`] privilege.?); SR7 7 17c.
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`V. Cisco 9)S.，11c. ,930 上 .3d 1295, 1309 (Fed. Cir. 2019) (“[The] decision not to seek an advice-
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`of-counsel defense is legally irrelevant under 35 U.S.C. 8 298.7); see also Pro1eljea1z 1118ULatio7z
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`7ec/. ZLZLC vv Sealed 4 Co11., No. 2:13-CV-1113-JRG-RSP, 2015 WL 11027036, at *3 (E.D.
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`Tex. Aug. 14, 2015).
`
`Disregarding the restrictions imposed by Section 298, Epistar repeatedly asked former and
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`current non-attorney employees what they personally did or were aware of with respect to the
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`asserted patents from the Prior and current cases. The entire line of inquiry is irrelevant，
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`misleading, and prejudicial, and therefore, should be excluded under Federal Rules of Evidence
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`401 and 403. The implication that Lowe's acted improperly because non-lawyers were not
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`involved in or aware of the privileged activities undertaken by its lawyers or in conjunction with
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`its vendors under a common interest privVilege is baseless. As Justice Breyer's concurring opinlion
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`In Balio Electromicy 111c. 以 Pulse Ejectro1icy, 11c., 579 U.S$. 93 (2016), makes clear, the purpose
`
`of Section 298 was to preclude the inference of recklessness“simply for failing to spend
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`considerable time, effort, and money obtaining expert views about whether some or all of the
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`patents described in the letter apply to [a defendant's] activities.”1a. at 113. Inferring willfulness
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`from a lack of Independent infringement analysis by non-attorneys (instead of attorneys) cannot
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`be reconciled with that statute, and therefore, would be improper.
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`Epistar should also be precluded from introducing the answers to Epistars misleading
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`deposition questions and leveraging those answers and Lowe'”s assertion of attorney-client
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`privilegeto misdirect the jury into believing that nobody performed non-infringement or invalidity
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`analyses on Lowe”s' behalf Examples excerpts from the depositions from the previous and current
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`litigations as deslignated by Epistar for use during trial are identified below. The full set of excerpts
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`are identified in Lowe”S” objections to Eplstar'S designations.
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`With respect to the deposition of Mark Beck (a former merchandising manager)，which
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`4
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`was taken during the California Litigation，Epistar deslgnated the response to the following
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`question for use atthis trial:“did Lowe”s perform any analysis to determine whether ornot Yankon
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`light bulbs infringed the claims of the 780, :738， ”771, or 020 patents.”(Eisenberg Decl. Ex. B
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`at 85:7-16). In addition, Epistar inslsted on deposing Mr. Beck for this case despite his departure
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`years before. Epistar designated, for example, testimony regarding Mr. Beck's lack of knowledge
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`regarding common interest communication between Lowe'”s' and its Suppliers. (Elisenberg Decl.
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`Ex. C at 74:17-76:6). Such testimony from a former non-attorney employee is clearly irrelevant.
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`Similarly, Epistar designated testimony from Christopher Brown (a former merchandising
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`director), which occurred during the California Litigation. The designated testimony included
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`wphether Mr. Brown had “personally attempted to compare the claims of any the Epistar patents
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`involved in this case with the design of any of the Utilitech or Kichler LED bulbs sold by Lowe's
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`that are accused of infringement.”(Eisenberg Decl. Ex. D at 20:20-23.) And again, despite the fact
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`也 at Mr. Brown left the company years before, Epistar deposed him in this case about his personal
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`investigation ofthe patents at issue in this lawsuit. (Eisenberg Decl. Ex.E at 17:15-18:5; 19:14:21.)
`
`With respect to current Lowe's employee Brandon Abbott (the former senior merchant for
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`light bulbs)，Epistar again designated portions of his testimony from the earlier litigation. The
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`designated testimony addressed his lack of knowledge of patent infringement issues. (Elisenberg
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`Decl. EX.Fat35:6-19, 39:11-19.) And forhis deposition in this case, Epistar deslgnated testimony，
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`for example, regarding Mr. Abbott's lack of involvement in patent validity analyses. (Eisenperg
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`Decl. Ex. Gat 72:12-73:1.)
`
`Finally，Epistar designated testimony from Mark Grant (the current senior merchant for
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`lightbulbs) regarding, for example, Lowe's' investigation ofpatent infringement. (Eisenberg Decl.
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`Ex.Hat 115:7-116:15.)
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`In addition to the misleading nature of Epistar"s questioning and the improper inferences
`
`3
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`Epistar seeks to draw from the responses, the need to maintain privllege will inevitably require
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`privilege objections during trial. The potential for a jury to be prejudiced by such objections (Le.，
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`into incorrectly assuming that Lowe”S”assertions of privilege imply that evidence is being
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`withheld) would significantly outweigh any probative value of the underlying subject matter.
`
`C1zitea tales v Galiego, 913 F. Supp. 209, 215 (S.D.N.Y. 1996), ad, 191 F.3d 156 (2d Cir.
`
`1999) (holding that causing a witness to invoke a privllege before a jury would cause unfair
`
`prejudice); 五 en CHporaiant ojhware, ac No.C 08-00019 JW,2010 WL 1137S579, at *4 (N.D.
`
`Cal. Apr. 22, 2010) (“The Court finds that any presentation of evidence or line of questioning
`
`designed to show Defendant”S assertion of the attorney-client privilege would serve no relevant
`
`purpose and would unduly prejudice Defendant by allowing the jury to infer that Defendant was
`
`improperly withholding evidence.”). The need to repeatedly object to this line of inquiry during
`
`discovery confirms that exclusion is required to avoid prejudice. (See, e.g8., Eisenberg Decl. Ex.
`
`(Grant Depo.) at26:1-12; 33:2-23; 43:23-44:14; 115:7-116:15.)
`
`3.
`
`77 7111111e Topic No. 3 - To Preclude Testimony or Opinions Directed to the
`Philips Licensing Program and Purported Industry Practices
`
`Epistar"s damages expert, Drew Mooney, relies on “the Philips patent licensing programy”
`
`(also referred to as“EnabLED”) to Support his damages opinions. ECF No. 141-1 at 66-67. That
`
`“program”as described by Mr. Mooney is not relevant to the hypothetical negotiation between
`
`Epistar and Lowe'S. As an initial matter, rather than actual licenses, the information Mr. Mooney
`
`relies upon are merely hearsay descriptions of licensing terms Philips prefers. Moreover, Mr.
`
`Mooney provides no basis for comparability. Indeed, he concedes Significant differences between
`
`Philips”s patent licensing program and the hypothetical negotiation, including that the Philips
`
`program 1S“[1] worldwide and [2] includes "more than 400 patent families，with more than 2,600
`
`issued patents，and “more than 500 patents pending.”/Z. Mr. Mooney relies on the program only
`
`

`

`Case 6:20-cv-00420-ADA Document 185-21 Filed 10/28/22 Page 14 of 24
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`Case 6:20-cvV-00420-ADA Document 177
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`Filed 10/21/22
`
`Page 13 of 23
`
`to Support assertions that“Philips charges the same rate, even ifonly a single patent is being used”
`
`and "Tates of 3%0 to 5% are customary” without regard for the comparability of those terms to the
`
`relevant hypothetical license in this case. 字 at 67. Neither point should be presented to the jury.
`
`The fundamental flaw in Mr. Mooney'”s reasoning is that it intentionally ignores the nature
`
`ofthe technologybeing licensed, which is an irrelevant and misleading form of analysis. Damages
`
`are properly focused on the “patented Improvement” ee PEX11IQ1K 1g. Co. 以 B1iggsy 人 91ratio1
`
`Power Prods. G1D.，LZLC,， 879 F.3d 1332, 1348 (Fed. Cir. 2018). Indeed, the suggestion that
`
`damages can be awarded without regard to the specific patents allegedly infringed is contrary to
`
`any Teasonable view ofpatent damages. ResONelco11 111c.v ZLa11sa, 11c., 594 F.3d 860, 869 (Fed.
`
`Cir. 2010) (“this court has consistently held that 'a reasonable royalty analysis requires a court to
`
`...carefully tie proof of damages to the claimed invention's footprint in the market place.”); see
`
`?337
`
`also 9ey11olr 六 MecCormaic 57 U.S. 480 (1853) (“It must be apparent to the most Superficial
`
`observer of the immense variety of patents 1SSued every day, that there cannot, in the nature of
`
`things, be any one rule of damages which will equally apply to all cases. The mode of ascertaining
`
`actual damages must necessarily depend on_ the peculiar nature of the_monopoly_granted.?)
`
`(emphasis added). Treating damages as based solely on ownership of a patent within a field of
`
`technology, without regard for the patent's contribution to the field, is meritless.
`
`Stated differently, there is no evidence in the record that the Philips licensing program is
`
`“comparable” to the hypothetical negotiation, and therefore,， exclusion 1s warranted. 4U1o71iatic
`
`EqgU1D. M1g. Co.v Danpo Mg ZLLC, No. 8:19-CV-162, 2021 WL 4078282, at *3 (D. Neb. Sept.
`
`8, 2021) (excluding licenses related only by being in the Same“general category”); Prz2t
`
`Co1az11c 718 Co. 了 已 v Co1icast 7P Doldingy LLC, No. CV 12-1013-RGA, 2015 WL 456154, at
`
`*2 (D. Del. Jan. 30, 2015) (excluding 六 1zpzzpe “agreements [that] license a number of patents, all
`
`of which are not in Suit )) / E1pgine, 1pc.v 4OL 1jpc., No. 2:11CV312, 2012 WL 12068846, at
`
`7
`
`

`

`Case 6:20-cv-00420-ADA Document 185-21 Filed 10/28/22 Page 15 of 24
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`Case 6:20-cvV-00420-ADA Document 177
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`Filed 10/21/22
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`Page 14 of 23
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`*2 (上 E.D. Va. Oct. 12, 2012) (excluding testimony regarding non-comparable licenses).
`
`4.
`
`17， 了 zz Topic No.
`Infringement
`
`4
`
`一 To Exclude Testimony Regarding Induced
`
`The products at issue in this litigation are light bulbs. Although Epistar asserts that Lowe'”s
`
`directly infringes its patents by selling the accused bulbs, it also pleaded and evidently intends to
`
`pursue an alternate theory of infringement based on inducement under 35 U.S.C.
`
`$ 271(b).
`
`Eplstar”S pursult of that theory is at best confusing and will cause undue delay and comprise
`
`cumulative evldence, Supporting exclusion under Federal Rule of Evidence 403. In particular，
`
`induced infringement cannot be established without first proving direct infringement, for which
`
`Epistar is already pursuing its infringement claims directly against Lowe's. Indeed, there is no set
`
`of facts under which induced infringement could be found without first establishing that Lowe's
`
`itselfinfringes. In addition, Epistar does not seek anyrelieffor induced infringementthat is distinct
`
`from the relief it seeks for direct infringement, rendering 也 at theory redundant.
`
`As
`
`the Supreme Court explained in 4ro Mapnujacturing Co.
`
`vv
`
`Convertipie 7op
`
`ARe27gcezzezz Co., 377 U.S. 476, 510 (1964), the fundamental purpose of permitting liability for
`
`indirect infringement 1s“to provide for the protection of patent Tights Where enforcement against
`
`direct infringers is Impracticable.”7ad. at 511 (quoting 且 . R. 5988, 80th Cong., 2d Sess.; 瑟 . R.
`
`3866, 81st Cong., 1st Sess.). The Court further explained“where the patentee has in fact enforced
`
`the patent against so solvent and accessible a direct infringer as [defendantj, it is difficult to see
`
`Why it should then be allowed to invoke the contributory infringement doctrine 一 designed for
`
`cases“wWhere enforcement against direct infringers is impracticable. ”1a. at 512. The necessary
`
`and logical predicate of indirect infringement is that a party can be held liable even though direct
`
`infringement does not occur until subsequently used or combined in a specific way by a purchaser
`
`(see Global-Tecjp 4ppliancey Jic
`
`SBEB S4.，563 U.S. 754, 761 (2011)), an unnecessary
`
`

`

`Case 6:20-cv-00420-ADA Document 185-21 Filed 10/28/22 Page 16 of 24
`
`Case 6:20-cv-00420-ADA Document 177
`
`Filed 10/21/22
`
`Page 15 of 23
`
`complication here. /d. Rather than a true application of induced Infringement, Epistar purports to
`
`Seek redress for infringement by Lowe”s” customers. However, Eplstar has no evidence that any
`
`customer actually used the bulbs that it purchased within the United States, instead it merely
`
`assSumes that Such use must have occurred. The need for such assumption is simply unnecessary
`
`given the record of sales.
`
`4.
`
`77 7Z11t111e Topic No. S$ 一 TO Preclude Epistar from Asserting or Eliciting
`Testimony that the Patents or Claims are Addressed to“Filaments” or
`“Filament-Style Bulbs”
`
`Throughout this litigation，Epistar has sought to replace the technology claimed in the
`
`asserted patents with the generic concept of “LED filaments.”The "881 patent recites
`
`a “light
`
`emitting device package.”And the 340 and “455 patents both recite
`
`a“light emitting device.”
`
`None of the asserted claims recites
`
`a“filament.”The relevant lssues here are infringement，
`
`validity, and damages, all of which must be determined based on the asserted claims. Attempts by
`
`Epistar and its experts to repackage the technology is irrelevant, confusing, and misleading. For
`
`example, Mr. Gardner asserts that“the Accused Products” use of the Asserted Patents” claimed
`
`inventions enables the use of filament structures rather than printed circuit boards.”ECF No. 141-
`
`2 at gl81. None ofthe patents in suit claims“filament structures”or precludes the use of printed
`
`circuit boards. And no issue to be resolved in this case turns on enabling filament structures. By
`
`conflating the narrow, incremental inventions of its asserted claims with the broader, ill-defined
`
`“ED filament” technology, Epistar will seek to confuse the jurytregarding what and how valuable
`
`those inventions are. Indeed, Epistar employed this strategy during the California Litigation, where
`
`it claimed to have invented flaments in its earlier-filed Patent No. 7,560,738 (“the :738 patenft)，
`
`which is not asserted here.” For example, Epistar presented the following slide during trial:
`
`
`
`The :738 patent has an effective filing date of March 11, 2005, which is years earlier than
`“
`the effective filing dates of the 881，'340, and “455 patents. Therefore，even 这 Epistar could
`
`9
`
`

`

`Case 6:20-cv-00420-ADA Document 185-21 Filed 10/28/22 Page 17 of 24
`
`Case 6:20-cv-00420-ADA Document 177
`
`Filed 10/21/22
`
`Page 16 of 23
`
`Similarly, counsel for Epistar asserted argued that“[tjhe patented technology ofthe :738 patent is
`
`at the core ofthe modern LED filament bulb.” That Epistar is now seeking to argue that it invented
`
`the LED filament bulb in the three patents asserted here is false and confusing. Exclusion，
`
`therefore, is warranted under Federal Rules of Evidence 401 and 403. Indeed, any attempt to
`
`replace the claimed technology is inconsistent with the fundamental tenet of patent law that the
`
`Scope of protection is defined by the claims. 35 U.S.C. $112(b); see also 1 re Ziker Co., 150
`
`F.3d 1362, 1369 (Fed. Cir. 1998) (“the name of the game is the claim”).
`
`6.
`
`772 717tize Topic No.6--ToExclude Comparisons Against Incandescent Bulbs，
`Fluorescent Bulbs, or Heat-Sink-Style Bulbs
`
`The issue here is similar to that addressed in the preceding section with respect to Epistar”S
`
`false claim that the asserted patents are directed to improvements to filaments. For example，
`
`Epistar”s technical expert Robert Gardner, presents irrelevant comparisons of flament-style bulbs
`
`against incandescent bulbs (ECF No. 154-1 at 33-34), compact fluorescent bulbs (“CFL?) (zi at
`
`35), and heat-sink-style bulbs (;iQ.
`
`at 35-36). And Epistar”S other technical expert, Brent York,
`
`provides much the same. ECF No. 153-2 at 9-49. Indeed, Mr. York purported to provide
`
`quantitative comparisons among all four bulb types:
`
`
`
`colorably claim to have invented the LED filament (it cannot), Epistar has itself asserted that that
`invention occurred years prior to the filing dates ofthe patents asserted here.
`
`10
`
`

`

`Case 6:20-cv-00420-ADA Document 185-21 Filed 10/28/22 Page 18 of 24
`
`Case 6:20-cv-00420-ADA Document 177
`
`Filed 10/21/22
`
`Page 17 of 23
`
`(/Z.
`
`at 37.) Eplstar, however, cannot claim to have invented or claim ownership via patent of
`
`filament-style bulbs. Nor can Epistar claim responsibility for the Improvements provided by
`
`filament-style bulbs in comparison to incandescent, CFL, or heat-sink-style bulbs. Instead,
`
`allowing Epistar to present such testimony can only mislead the jury into crediting Epistar with far
`
`more than what the narrow claims at issue in this case encompass. The entire line of comparison
`
`can only cause confuslon.
`
`7.
`
`7
`17 了 zz Topic No.
`Intentionally Broken Bulbs
`
`一 To Exclude Optical Testing Performed on
`
`As explained in Lowe'S” Darvper Motion (ECF No. 137), Mr. Gardner purported to
`
`perform _ comparative testing of the optical properties of certain bulbs. (/Z
`
`at 23.) Before
`
`performing the testing, however, he modified the bulbs to decrease the very characteristic being
`
`compared. (/Z.) The changes that he made present clear methodological issues under Daxpert, but
`
`also present at best irrelevant, prejudicial, and misleading information, requiring exclusion. G7//oz,
`
`VDoatar 1zduy., 95 F.3d 1320, 1331 (5th Cir. 1996) (affirming exclusion where the challenged
`
`opinion“was not based upon the facts in the record but on altered facts and speculation designed
`
`11
`
`

`

`Case 6:20-cv-00420-ADA Document 185-21 Filed 10/28/22 Page 19 of 24
`
`Case 6:20-cv-00420-ADA Document 177
`
`Filed 10/21/22
`
`Page 18 of 23
`
`to bolster [the party"s] position) (emphasis added). In particular，Epistar intends to utillize that
`
`irrelevant testing to Supportb for example, Mr. Mooney”s opinions on “commercial contributions.”
`
`ECF No. 141-1 at 74. The commercial contribution opined upon, however, is to the bulbs as sold,
`
`not as modified by Mr. Gardner. The jury, therefore，would almost certainly be confused and
`
`mlsled by the irrelevant comparison .
`
`8.
`
`77 Zi71tz1e Topic No. 8 一 To Exclude Testimony and Evidence Referencing
`Irrelevant Financial Information Related to the Litigants
`
`There can belittle dispute that Lowe'”S” overall financial condition and sales ofnon-accused
`
`products or sales in general are irrelevant to any lssue for the jury”s consideration in this matter.
`
`In this patent infringement case, any Such evidence 1s lirrelevant and should be excluded under
`
`Rules 401 and 403. Courts regularly exclude financial information that could negatively influence
`
`the jury in assessing liability and damages. 9ee, e.g8.， Fi11a11 11c.v Be Coat 9
`
`,71c., No. 13-
`
`CV-03999-BLF,2015 WEL 4129193, at*4 (N.D. CaL July