Nichia Corporation v. Feit Electric Company, Inc Case No. CV 20-359-GW-Ex United States District Court, C.D. California Filed December 29, 2022 Counsel William S. O'Hare, Jr., Elizabeth M. Weldon, Jing Hua, Snell and Wilmer LLP, Costa Mesa, CA, D. Lawson Allen, Pro Hac Vice, Mark T. Rawls, Pro Hac Vice, Martin M. Zoltick, Pro Hac Vice, Nicole M. DeAbrantes, Pro Hac Vice, Jenny L. Colgate, Pro Hac Vice, Michael H. Jones, Pro Hac Vice, Robert P. Parker, Pro Hac Vice, Rothwell Figg Ernst and Manbeck, P.C., Washington, DC, David C. Gurnick, Jeffrey A. Kobulnick, Jessica Wynette Rosen, Lewitt Hackman Shapiro Marshall and Harlan, Encino, CA, for Nichia Corporation. Kalpesh K. Shah, Pro Hac Vice, Louis Constantinou, Pro Hac Vice, Samuel J. Ruggio, Pro Hac Vice, Mircea A. Tipescu, Pro Hac Vice, Simeon G. Papacostas, Pro Hac Vice, Theresa L. Starck, Pro Hac Vice, Benesch Friedlander Coplan and Aronoff LLP, Chicago, IL, Katherine A. Smith, Benesch Friedlander Coplan and Aronoff LLP, Cleveland, OH, Matthew Robert Stephens, Salil Bali, Stradling Yocca Carlson and Rauth APC, Newport Beach, CA, for Feit Electric Company, Inc. Wu, George H., United States District Judge PROCEEDINGS: IN CHAMBERS - ORDER *1 Nichia Corporation v. Feit Electric Company, Inc., Case No. 2:20-cv-00359-GW-(Ex) Final Ruling on Joint Reports Re Deposition Designation and Exhibit Disputes I. INTRODUCTION In this patent infringement action, Plaintiff Nichia Corp. (“Plaintiff”) accuses Defendant Feit Electric Company, Inc. (“Defendant”) of infringing U.S. Patent No. 9,752,734 (“the '734 Patent”). Complaint, Docket No. 1. On October 12, 2022, the Court issued its final order on the parties' various summary judgment and related motions, including Daubert motions. See Docket Nos. 564, 565 (sealed). After holding a final pretrial conference, on December 2, 2022, the Court issued its final ruling on the parties' motions in limine. Docket No. 654. After holding a further pretrial conference, on December 9, 2022, the Court issued a further order concerning Plaintiff's Motion in Limine No. 1. Docket No. 669. At the Final Pretrial Conference, the Court stated it would allow the parties to file certain Joint Reports concerning objections to exemplar exhibit categories and deposition designations on which the parties require a ruling. See Docket No. 658. The parties have now filed their Joint Reports. See Docket Nos. 673, 682 (sealed) (Joint Report Re Objections to Deposition Designations); Docket Nos. 676, 683 (sealed) (Joint Report Re Objections to Exhibits). The Court held a hearing concerning these disputes on December 19, 2022. Docket No. 688. The Court took the disputes under submission to consider further information submitted regarding one category of exhibits, as discussed further below. The Court rules on the categorical objections as stated herein. II. JOINT REPORTS RE DEPOSITION DESIGNATIONS AND EXHIBITS The Court allowed the parties to select up to ten categories of disputes concerning (1) the deposition designations and counter-designations and (2) the exhibit list, whereby the parties would provide exemplars to illustrate the nature of each dispute. This Order provides rulings based on the specific exemplars provided, which the parties should construe as providing advisory rulings applicable to the disputed categories generally. This will allow the parties to determine through further review what similar testimony and exhibits are admissible or inadmissible. As stated, the Court will not review every line of every deposition-designated testimony or every exhibit in a category to resolve repetitive disputes. It is incumbent on the parties to crystallize the substance of their actual disputes. Thus, the rulings in this Order control what is admissible or excluded by category unless otherwise noted. A. Deposition Designation Disputes 1. Plaintiff's Deposition Designation Exemplar Categories Category 1. 30(b)(6) testimony on undesignated topics or irrelevant counter-designations 2. Testimony discussing unproduced evidence 3. 30(b)(6) testimony that is beyond the scope for witnesses available at trial 4. Plaintiff's Counter-designations to Defendant's designations 5. Testimony from Dr. Wetzel Plaintiff's Position The corporate witnesses are available to testify, so only their 30(b)(6) testimony, as opposed to fact-witness testimony, can come in via deposition designation, and the counter-designations are overbroad. Alan Feit testified regarding a study not produced in discovery, which is also hearsay and substantially prejudicial. Defendant cannot introduce deposition testimony for a trial witness that falls outside the 30(b)(6) topics, and cannot ask a lay witness for a legal conclusion under FRE 611 (e.g., asking inventor about understanding of patent claims). The counter-designations should be included for completeness under Rule 32(a)(6). Defendant should not be able to call Plaintiff's pre-Markman expert concerning stricken § 112 defenses and already-decided claim construction issues. Wetzel did not opine concerning plain and ordinary meaning of unconstrued terms, which is the relevant issue remaining at trial. Defendant's Position The testimony is within the scope of 30(b)(6) topics, e.g., pricing (Topic 13) and design (Topic 30), and they are responsive to Plaintiff's designations. The testimony does not reference a “study,” but rather is based on observations from decades of industry experience. Plaintiff can cross-examine him on this. The testimony falls within the inventor's 30(b)(6) designated topics, including conception, reduction to practice, research and development (Topic 1); novelty (Topic 2); design arounds (Topic 17), and other technical issues (Topics 27 & 29). This is a broad category for which the exemplars cannot stand in for every counter-designation. In any event, the exemplar passages do not counter Defendant's designated testimony. The Court's ruling on Plaintiff's MIL No. 1 should control this issue. Further, the designated testimony is relevant because it relates to the state of the art and nature of the invention. Ruling Plaintiff's objection is OVERRULED. Based on the exemplars provided, the counter-designations fall within 30(b)(6) Topics 13 and 30. The 30(b)(6) topics are broad and should be construed in that manner. Plaintiff's objection is OVERRULED. Plaintiff's deposition questions used the term “study,” and the answers clarify the witness is talking about “market research,” which is relevant to pricing and design, and which Defendant represents was produced. Plaintiff has not demonstrated the testimony is excludable under Rules 403, 801, or 802. Plaintiff's objection is OVERRULED. The questions are within the scope of the designated topics and are framed in the context of the witness's understanding (not seeking a legal conclusion). Additionally, the objections are waived for not being raised during the deposition. Plaintiff's request is GRANTED. Unless otherwise stated, each party's counter-designations are admissible to provide context and completeness under Rule 32(a)(6). Plaintiff's objection is SUSTAINED. This issue is now ripe because it refers to specific proposed trial testimony. The proposed testimony is excluded because it relates to issues already decided; “the claim constructions in the Markman Order stand.” Docket No. 654 at 4. No citations were provided regarding supposed background testimony (e.g., state of the art), which might be admissible to provide background only, not to argue already-decided § 112 issues. 2. Defendant's Deposition Designation Exemplar Categories *2 Category 1. Technical or expert testimony from non-technical witnesses 2. Testimony from third-party former component provider 3. Testimony offering legal conclusions on non-infringing alternatives and infringement 4. Inventor's 30(b)(6) testimony regarding understanding of application/invention Defendant's Position Non-technical corporate witnesses should not be allowed to offer technical opinions (e.g., Feit's COO was designated regarding operations and finances, but pricing information does not prove similarity for infringement purposes; Feit's director of supply chain was not designated on non-infringing alternatives). The underlying exhibits that this testimony seeks to admit are hearsay and lack foundation. It is also irrelevant because none of it is tied to an accused product and thus is overly prejudicial if used to argue a single filament manufacturer shows representativeness. Plaintiff should not be allowed to offer non-30(b)(6) testimony from witnesses within the Court's subpoena power, especially where it is offered for legal conclusions (e.g., asking CEO whether accused products have “a support portion,” and he was not designated on non-infringing alternatives). 30(b)(6) deposition testimony is admissible at trial regardless of whether the witness also testifies live as a fact witness. Plaintiff's outside-the-scope objections are waived. Plaintiff's Position Neither witness summarized by Defendant offers technical testimony (e.g., model number is the same regardless of whether it's a 4-pack or 8-pack of bulbs). This third-party witness was subpoenaed to authenticate the exhibits as business records. The designations relate only to topics for which the CEO was designated as a 30(b)(6) witness (e.g., “the research, design, development, and testing of each Accused Product”). The questions relate to whether the accused products are the same as the alleged design arounds. The inventor serving as a 30(b)(6) witness is not controversial, but the exemplar citations are outside the scope of the designation. Fact questions must be asked at trial, and in any event the questions are overly prejudicial because they pose an improper hypothetical (i.e., to modify Fig. 15 and apply the patent claims). Ruling The testimony is ADMISSIBLE because it is not technical. For example, Defendant's COO is competent to testify that the same product can be sold in packs of various sizes and this information is captured in a spreadsheet he created. This falls within the scope of his 30(b)(6) designation and it is not prejudicial. **Plaintiff does not address this category as to Ms. Mullane's testimony and should do so at the hearing.** DEFERRED. To the extent the witness authenticates exhibits as business records based on personal knowledge as a corporate representative, this is permissible. Plaintiff must establish a link between the exhibits and the accused products to demonstrate relevance, however. Otherwise, the representativeness inference could be overly prejudicial. It appears Plaintiff will do this through Mullane and/or Gershowitz. SUSTAINED-IN-PART. Plaintiff can ask the witness factual questions at trial based on his understanding of product differences. He was not designated concerning non-infringing alternatives so the deposition designations fall outside this scope. SUSTAINED-IN-PART. The deposition testimony posing an infringement-related hypothetical falls outside the scope of Topics 1 and 2. Defendant may question this witness at trial, but only as to his personal knowledge, not to offer infringement opinions. B. Exhibit Disputes 1. Plaintiff's Exhibit Exemplar Categories Category 1. Plaintiff's testing reports and data Plaintiff's Position The reports and data should be admitted because the expert designed the testing protocol, conducted some testing, and supervised all of the testing, and it is proper for him to rely on this information. Defendant's Position The reports are hearsay and were created for this litigation. The expert did not conduct the testing. No tracking sheets concerning who performed the tests were produced. Ruling Plaintiff's request is DEFERRED. Plaintiff has made a sufficient showing that Livingston oversaw the relevant tests, created reports, and kept reliable records. See Docket No. 690. Defendant's questions concerning Livingston's memory and certain record-keeping practices appear to go to weight, not admissibility. Assuming Plaintiff can lay the proper foundation at trial, the Court will consider admitting these exhibits. At the hearing, the Court permitted the parties to file supplemental briefs concerning this issue. See Docket Nos. 688 (Minutes), 690 (Plaintiff's Proffer), 691 (Defendant's Response). After considering those additional filings, the Court concludes that, at trial, Plaintiff may attempt to lay a foundation for the testing reports and data exhibits at trial. Plaintiff's proffer, and citations to Livingston's specific deposition testimony, sufficiently distinguishes this case from Seoul Semiconductor v. Bed Bath & Beyond, CV 18-3837 PSG (SKx), 2022 WL 3134456, at *2-3 (C.D. Cal. Jun. 2, 2022), in which no witness had sufficient personal knowledge of the product testing. If Plaintiff is unable to lay a sufficient foundation through direct questioning, Livingston can likely still testify regarding his opinions formed from the test results even if the documents are inadmissible. 2. Defendant's responses to Plaintiff's interrogatories 3. Annotated exhibits, including documents produced in discovery and deposition demonstratives 4. Physical exhibits of accused products Defendant should not be able to rely on its own discovery responses as substantive evidence and there is no relevant, non-hearsay purpose at trial. Further, the responses are not under oath. On the other hand, Plaintiff can use Defendant's responses for any purpose as an admission of a party opponent. For relevant documents used for a non-hearsay purpose, Defendant should be limited to the unannotated version as produced, unless Defendant establishes the bases for the annotations during cross-examination. Plaintiff purchased some accused products and received others from Defendant's counsel. Each product has been tracked and identified. Plaintiff has witnesses available to testify as to chain of custody, but requests this be done during a separate hearing so as to not waste the jury's time or count against Plaintiff's trial time. The Court has already addressed Plaintiff's objections to Defendant's unverified interrogatory responses and Defendant will adhere to that order. As to the other written responses (i.e., responses to 30(b)(6) notices, RFPs, RFAs), Defendant argues the responses were properly served and are admissible. Courts routinely allow exhibits annotated by witnesses during depositions to be admitted at trial. The relevant exhibits were authenticated and annotated under oath at the depositions. Plaintiff's expert cannot lay a foundation or authenticate the samples. Plaintiff has not provided sufficient or reliable chain of custody information to authenticate the samples. For example, the attorneys purportedly bought and opened the bulbs, but no declarations have been provided. As mentioned, the alleged tracking sheets kept by the lab were not produced. Plaintiff's objection is SUSTAINED. Defendant may not introduce its own written discovery responses for the truth of the matter asserted. To the extent any non-hearsay purpose remains relevant at trial, Defendant may proffer its intended use to the Court. Plaintiff's objection is SUSTAINED. Creating annotations during a deposition does not make the annotations self-authenticating at trial. If Defendant wants to cross-examine a witness concerning an annotated document, it may lay a foundation to do so at trial. Plaintiff's request is DEFERRED. Plaintiff has not demonstrated that the expert can lay foundation for admitting the samples. Although the expert may rely on the samples provided, this does not make them independently admissible without proper foundation. Plaintiff may proffer to the Court how it would establish chain of title foundation. 2. Defendant's Exhibit Exemplar Categories *3 Category 1. Patent family and prosecution history exhibits 2. Exhibits relating to Plaintiff's knowledge of competitors entering the LED filament-style market before the patent issued 3. Exhibits relating to industry success implying that the '734 Patent is responsible for the success of the LED filament-style bulb industry 4. Documents produced by third-party component provider Defendant's Position The parent patent and prosecution histories of the '734 Patent family, which are all part of the intrinsic record, are relevant to the doctrine of equivalents, conception, reduction to practice, and development of this line of inventions, a POSA's understanding, etc. Use of claim terms in the patent family is relevant to infringement and invalidity. Defendant is entitled to challenge Plaintiff's assertion that it foresaw a market need and created “filament-style” LED bulbs. For example, the earlier Panasonic bulb is relevant to show the state of the art, development, and market of relevant products. Plaintiff's abandonment of the underlying application and revival after studying the Panasonic bulb undermines Plaintiff's claims of ingenuity and market vision. Consistent with the Court's ruling on Defendant's MIL No. 7, Defendant objects to eight additional articles that should also be excluded. The industry accolades should be excluded so Plaintiff cannot misrepresent to the jury the scope of the patent. Plaintiff seeks to have these exhibits admitted through an employee of the producing third-party, but they are hearsay and lack foundation. They also lack relevance because Plaintiff cannot tie the exhibits to the accused products where the only evidence suggests Defendant used the relevant supplier long ago. Further, Plaintiff's expert relied on technical documents rather than actual components. Plaintiff should not be allowed to argue that a single filament manufacturer establishes representativeness. Plaintiff's Position The histories should be excluded because there is no relevant purpose at this stage besides prejudicing Plaintiff. Defendant cannot use these documents to argue to the jury about claim scope. Claim differentiation and prosecution analysis are components of claim construction, which is a matter for the Court. These materials are irrelevant and allowing documents that discuss abandonment and revival of the application would be prejudicial to Plaintiff. In the employee emails, any references to facts relating to the research and development of the technology is minimal and incidental. Any minimal value is significantly outweighed by unfair prejudice. The materials are also unauthenticated hearsay. The Court's relevant ruling provided that Plaintiff could lay a foundation linking various industry accolades to this case. Further, most of the cited exhibits will be introduced through an expert for another purpose (e.g., market conditions, industry background, Nichia's status as top manufacturer, energy efficiency), and are relevant to proving facts related to, e.g., the hypothetical negotiation and damages. Plaintiff has withdrawn the relevant email communication, so this objection relates only to product datasheets. Defendant's records demonstrate that it sources filaments from this supplier. The third-party's corporate representative has personal knowledge of the documents, and they fall under the business records exception to the rule against hearsay. The technical documents are relevant to Plaintiff's infringement claim because its expert analyzed the documents to inform his infringement opinion. Ruling Defendant's request is GRANTED-IN-PART. Defendant may not argue to the jury how Plaintiff interpreted or construed claim terms. Claim construction is for the Court, not the jury. As stated at summary judgment, the experts may explain their view of how a POSA would understand plain and ordinary meaning of unconstrued terms, but they may not offer further claim construction or interpretation. Defendant's request is DEFERRED-IN-PART and DENIED-IN-PART. If Plaintiff opens the door through a witness claiming that Plaintiff pioneered the filament-style LED bulb industry, Defendant may cross-examine the witness about the Panasonic bulb, including Plaintiff's employees' admissions, but not including the abandonment and revival of the application. Plaintiff may not argue that it was a pioneer in the industry or anything similar unless it presents evidence to support this contention. Defendant's objection is SUSTAINED-IN-PART. The Court incorporates its Order on Defendant's MIL No. 7. Docket No. 654 at 17-18. As stated, industry articles are not admissible to show industry success absent a link to Plaintiff's claims. The challenged news article exhibits, which are self-authenticating, may be admissible for other purposes (e.g., relevant to hypothetical negotiation) if proper foundation is laid. As stated, although an expert may rely on hearsay to form opinions, it does not make the documents independently admissible. Defendant's objection is DEFERRED for the reasons stated above with respect to the relevant 30(b)(6) deposition testimony. Assuming a proper link to the accused products is established, the business records may be admitted. If no link is established, Defendant can cross-examine Gershowitz concerning his reliance on the technical documents, but his reliance thereon does not make them independently admissible. III. CONCLUSION For the reasons stated, the Court rules on the objection categories as stated herein.