Case 6:20-cv-00420-ADA Document 93 Filed 04/20/22 Page 1 of 3
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`IN THE UNITED 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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`CASE NO.: 6:20-cv-00420-ADA
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`ORDER REGARDING DISCOVERY DISPUTES
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`Before the Court are certain discovery disputes identified by Plaintiff Epistar Corporation
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`(“Epistar”) and listed in Appendix A attached to the Order of Limited Referral (D.I. 89).
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`After careful consideration, it is hereby ORDERED as follows:
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`Issue #1
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`Epistar’s request for permission to treat documents and deposition transcripts designated
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`under the protective order in a litigation pending in the Central District of California (Epistar
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`Corp. v. Lowe’s Home Centers, LLC, C.D. Cal. Case No. 2-17-cv-3219-JAK) (“California
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`Litigation”) as if produced in this litigation is GRANTED-IN-PART, DENIED-IN PART.
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`While the Court declines to order a “blanket reproduction” of documents from the
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`California litigation, documents produced in the California litigation which are relevant to this
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`litigation should be reproduced with appropriate production numbers. The parties shall meet and
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`confer and Epistar should identify any documents to Lowe’s that it believes to be relevant for
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`Lowe’s consideration. Documents that pertain exclusively to products accused or patents
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`asserted in the co-pending case do not need to be reproduced.
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`With respect to the documents that were shown by Epistar to the Court during the
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`hearing, the Court orders as follows:
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`Case 6:20-cv-00420-ADA Document 93 Filed 04/20/22 Page 2 of 3
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`• With respect to the letter sent from Epistar to Defendants Lowe’s Companies, Inc.
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`and Lowe’s Home Centers, LLC (collectively, “Lowe’s”) in 2016 that was shown
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`during the hearing, the Court orders the letter to be produced.
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`• With respect to a Power Point presentation that was shown during the hearing, the
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`Court orders the presentation to be produced in this litigation.
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`Issue #2
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`Epistar’s request that Lowe’s produce documents pertaining to the design of the accused
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`products is GRANTED-IN-PART, DENIED-IN PART.
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`Lowe’s must produce design documents pertaining to the accused products that Lowe’s
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`has in its possession, custody, or control, even if those documents would otherwise be publicly
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`available. Lowe’s, however, does not need to embark on a search for publicly available design
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`documents.
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`Epistar’s request for communications with GE Lighting specifically is DENIED with
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`respect to Lowe’s communications with GE Lighting after an indemnification agreement was
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`reached because those communication are subject to the common-interest privilege. For
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`documents Lowe’s claims to be subject to any common interest privilege, Lowe’s shall provide a
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`privilege log describing the nature of the documents withheld pursuant to the requirements set
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`forth in Fed. R. Civ. P. 26. Lowe’s need not log documents created after the filing of the
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`Complaint. With respect to post-filing discussions between Lowe’s and GE Lighting involving
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`litigation counsel, those communications are not discoverable and also do not need to be logged.
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`Issue #3
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`Epistar’s request that Lowe’s identify each LED filament bulb that Lowe’s contends
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`constitutes a non-infringing alternative to the accused products is GRANTED-IN-PART,
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`DENIED-IN PART. Lowe’s must identify all LED filament bulbs it contends constitute non-
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`infringing alternatives to the accused products. In addition, Lowe’s must produce the requested
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`financial information for 10 of such alleged non-infringing alternatives. With respect to those 10
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`Case 6:20-cv-00420-ADA Document 93 Filed 04/20/22 Page 3 of 3
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`products for which Lowe’s is required to provide financial information, Lowe’s can choose five
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`such products, and Epistar can choose the remaining five.
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`Issue #4
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`Epistar’s request that Lowe’s produce business plans, sales estimates, management
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`reports, sales projections, and Board of Directors reports for the accused products and LED bulb
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`market is GRANTED-IN-PART and DENIED-IN PART. Lowe’s must produce the requested
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`documents if they exist for an LED bulb category that would cover any of the accused products.
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`Likewise, summaries and reports that include information covering LED bulbs should be
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`produced. To the extent Epistar believes that any particular document exists but was not
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`produced, the Court directs Epistar to specifically identify any such documents and meet and
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`confer with Lowe’s about the same.
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`Issue #5
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`Epistar’s request that Lowe’s produce physical samples of each accused product is
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`GRANTED. Lowe’s is required to sell the requested physical samples to Epistar.
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`Lowe’s request that Epistar produce receipts for the purchase of the accused products is
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`DENIED.
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`The Court notes that the any order requiring production is not a decision on admissibility.
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`SIGNED this 20th day of April, 2022.
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`____________________________________
`DEREK T. GILLILAND
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`UNITED STATES MAGISTRATE JUDGE
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