Contract analysis

I. Purpose and Scope This memorandum sets forth the proposed custodian list and electronically stored information ("ESI") search methodology for OWS's document collection, review, and production in the above-captioned patent infringement action. The recommendations contained herein are intended to facilitate a comprehensive, defensible, and cost-effective approach to OWS's discovery obligations under the Federal Rule

II. Factual Background Relevant to ESI Scope To provide context for the custodian selections and search term formulations discussed below, we briefly summarize the key factual and technical background of this case. A. The Patents-in-Suit OWS has asserted four United States utility patents against Lumos in this action. Each patent relates to a different aspect of silicon photonics technology used in high-speed optical

1. U.S. Patent No. 10,234,567 (the "'567 Patent") — Entitled "Integrated Waveguide Coupler with Tapered Mode Converter for Silicon Photonics Platforms." The '567 Patent was filed on March 14, 2017, and issued on March 19, 2019. The named inventors are Dr. Kevin Fong, Dr. Priya Ramanathan, and Hideo Tanaka. This patent claims an integrated waveguide coupling structure featuring an adiabatically tapered mode converter

2. U.S. Patent No. 10,891,234 (the "'234 Patent") — Entitled "Germanium-on-Silicon Photodetector with Graded Buffer Layer for Enhanced Responsivity." The '234 Patent was filed on September 8, 2017, and issued on January 14, 2021. The named inventors are Dr. Kevin Fong and Dr. Amara Osei. This patent claims a germanium photodetector structure fabricated on a silicon substrate using a graded buffer layer with a continu

3. U.S. Patent No. 11,045,678 (the "'678 Patent") — Entitled "Multi-Channel Optical Transceiver with Integrated Wavelength-Division Multiplexing on Silicon." The '678 Patent was filed on June 22, 2018, and issued on June 29, 2021. The named inventors are Dr. Priya Ramanathan, Dr. Amara Osei, and Liwei Zhang. This patent claims a multi-channel optical transceiver in which the wavelength-division multiplexing (WDM) com

4. U.S. Patent No. 11,312,890 (the "'890 Patent") — Entitled "Driver Circuit Architecture for High-Speed Silicon Photonic Mach-Zehnder Modulators." The '890 Patent was filed on November 15, 2018, and issued on April 26, 2022. The named inventors are Dr. Kevin Fong and Rajesh Iyer. This patent claims a driver circuit architecture for Mach-Zehnder modulators (MZMs) in which a pre-emphasis equalization stage is electric

III. Proposed Custodian List A. Overview and Selection Criteria The proposed custodian list reflects a careful evaluation of OWS personnel (and one former employee) whose files are most likely to contain documents responsive to the anticipated scope of discovery in this action. Custodians were identified based on the following criteria: • Named inventors: Individuals listed as inventors on one or more of the four pat

1. Dr. Priya Ramanathan — Chief Executive Officer & Co-Founder, OWS Dr. Ramanathan is the CEO and Co-Founder of Optiwave Semiconductor Corp. She holds a Ph.D. in Electrical Engineering with a specialization in photonics from Stanford University. Dr. Ramanathan is a named inventor on the '567 Patent and the '678 Patent. Custodial Relevance: Dr. Ramanathan's files are expected to contain documents relating to the conce

2. Dr. Kevin Fong — Chief Technology Officer & Co-Founder, OWS Dr. Fong is the CTO and Co-Founder of Optiwave Semiconductor Corp. Prior to co-founding OWS, Dr. Fong served as a principal engineer at a major semiconductor foundry, where he gained extensive experience in silicon photonics process development. Dr. Fong is a named inventor on three of the four patents-in-suit: the '567 Patent, the '234 Patent, and the '8

3. Dr. Amara Osei — Principal Engineer, OWS Dr. Osei is a Principal Engineer at OWS, where she leads the photodetector and receiver design team. She is a named inventor on the '234 Patent and the '678 Patent. Custodial Relevance: Dr. Osei's files are expected to contain documents relating to the design and development of germanium photodetector architectures, including the graded buffer layer technology claimed in th

4. Theodore "Ted" Marchetti — Vice President of intellectual Property, OWS Mr. Marchetti is the VP of intellectual Property at OWS. He is a registered patent attorney (USPTO Registration No. 58,304) and a former patent examiner at the United States Patent and Trademark Office (Art Unit 2828, which examines applications in the field of semiconductor devices and photonics). Custodial Relevance: Mr. Marchetti managed th

5. Sandra Ellison — General Counsel, OWS Ms. Ellison serves as the General Counsel of Optiwave Semiconductor Corp. She holds a J.D. from the University of California, Berkeley School of Law, and oversees all legal affairs of the company, including intellectual property, corporate governance, compliance, and litigation management. Custodial Relevance: Ms. Ellison provides legal oversight of this infringement action an

6. Rajesh Iyer — Circuit Designer, OWS Mr. Iyer is a Circuit Designer in OWS's electronic design group. He is a named inventor on the '890 Patent. Custodial Relevance: Mr. Iyer designed and developed the driver circuit architecture for MZM modulators that is claimed in the '890 Patent. His files are expected to contain detailed circuit design files, simulation data, and invention disclosures relating to the "pre-emph

7. Liwei Zhang — Design Engineer, OWS Mr. Zhang is a Design Engineer at OWS specializing in integrated photonic transceiver design. He is a named inventor on the '678 Patent. Custodial Relevance: Mr. Zhang was involved in the design and development of the multi-channel optical transceiver with integrated WDM on silicon that is claimed in the '678 Patent. His files are expected to contain engineering design files, sim

8. Hideo Tanaka — Former OWS Engineer (2016–2019) Mr. Tanaka is a former engineer at OWS who was employed by the company from 2016 to 2019. He is a named inventor on the '567 Patent. Notably, Mr. Tanaka is also an inventor of prior art — specifically, U.S. Patent No. 9,456,012, which was issued on September 6, 2016, and was co-invented by Mr. Tanaka before he joined OWS. The '9,456,012 patent was cited as a primary r

IV. Proposed ESI Search Terms A. Search Methodology We propose the application of Boolean search term strings to the collected custodial data following standard processing steps, including de-duplication (both exact and near-duplicate identification), de-NISTing (removal of system files using the National Institute of Standards and Technology's National Software Reference Library hash sets), and filtering of non-resp

I. Category 8: Prior Art and Publications The following terms are designed to capture documents discussing specific prior art references and publications identified in the prosecution histories and Lumos's preliminary invalidity contentions: • "Chen & Liu" OR "segmented taper coupler" OR "Journal of Photonic Integration" — referencing the Chen & Liu 2016 article cited against the '567 Patent under 35 U.S.C. § 103 in

V. ESI Collection Protocol A. Data Sources to be Collected The following data sources should be collected for all eight primary custodians within the specified date range (January 1, 2015, through June 3, 2022, with rolling supplementation): Corporate Email (Strathmore Data Systems / Ashbury Software): Full mailboxes for all eight primary custodians should be collected, including inbox, sent items, deleted items (to

1. Confirm preservation of archived data: We must confirm with Sandra Ellison and OWS IT that Mr. Tanaka's archived corporate email and file server data from his 2016–2019 employment period have been identified, located, and preserved pursuant to the June 1, 2022 litigation hold notice. If any of this data resides on backup tapes or other archival media, arrangements should be made to restore and collect it.

2. Review separation agreement: We should review Mr. Tanaka's separation agreement and any related employment agreements to determine whether they contain provisions regarding (a) the return or retention of company documents and materials, (b) cooperation obligations with respect to intellectual property matters or litigation, or (c) IP assignment confirmations. Any cooperation clause may facilitate Mr. Tanaka's avai

3. Personal copies of documents: If Mr. Tanaka retained any personal copies of documents relating to the '567 Patent invention — such as personal lab notebooks, personal email containing work-related discussions, or personal files containing design data — OWS's counsel may need to request their voluntary production or, depending on Mr. Tanaka's cooperation, take other appropriate steps. Given Mr. Tanaka's dual status

4. Lab notebooks: We should confirm whether OWS retains copies of Mr. Tanaka's lab notebooks from the 2016–2019 period. These notebooks may be in electronic format (if OWS used an electronic lab notebook system during that period) or in physical format (if paper lab notebooks were in use). If physical notebooks are located, they should be scanned and made available for review.

VI. Search Term Refinement and Quality Control We propose an iterative refinement process to ensure that the proposed search terms achieve an appropriate balance between comprehensiveness (recall) and precision:

1. Initial search term application: The search terms set forth in Section IV will be applied to the processed custodial data set, and the resulting hit counts per search term (and per custodian) will be tabulated.

2. Sample review: For each search term or search term group producing a significant number of hits, a random sample of approximately 200 documents from the hit set will be reviewed by a member of the review team to assess the precision rate (i.e., the proportion of documents in the hit set that are actually responsive to one or more anticipated discovery topics) and to identify any systemic false-positive patterns.

3. Precision and recall assessment: Based on the sample review results, we will assess whether any search terms are generating unacceptably high rates of false positives (low precision) or whether any significant categories of responsive documents appear to be missed by the current search terms (low recall). We will also compare the search term hit sets against the anticipated categories of Lumos's document requests

4. Refinement: Search terms that are identified as overbroad will be refined using proximity connectors, additional Boolean limiters, or other techniques to improve precision without materially sacrificing recall. Search terms that appear to miss significant categories of responsive documents will be supplemented or expanded. We have already identified several terms that are likely to generate high volumes of false p

VII. Coordination with Lumos's discovery Requests The search terms proposed in this memorandum have been designed to anticipate the likely scope of Lumos's document requests. Based on our experience in similar patent infringement cases and our understanding of Lumos's litigation positions as reflected in its preliminary claim construction contentions, we expect Lumos's requests to cover the following principal catego

VIII. Estimated Volume and Timeline Based on our preliminary assessment of the custodial data environment — informed by discussions with OWS IT and initial data mapping — we estimate the following volumes and propose the following timeline: These estimates are preliminary and will be refined once actual collections are processed. The wide range of the review population estimate (40,000–70,000 documents) reflects unce