Contract analysis

From: Alan Ngo <ango@calderwoodharkness.com> To: James Callahan <jcallahan@whitmorecallahan.com> Cc: Wendy Schultz <wschultz@calderwoodharkness.com> Date: Mon, 12 Aug 2024 04:47:00 -0000 Subject: Optiwave Semi v. Lumicore — Scheduling Order Issued Today [Case No. 2:24-cv-00319-JRG]

I hope your Monday is going well. I'm writing to let you know that Judge Gilstrap entered the Scheduling Order and Docket Control Order this afternoon (D.E. 27) in Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc., Case No. 2:24-cv-00319-JRG (E.D. Tex.). The order largely tracks the Joint Motion for Entry of Docket Control Order that the parties submitted on August 9, so no real surprises. I've attached a c

Below are the critical dates from the order, in chronological sequence:

- **September 16, 2024** — P.R. 3-1 Infringement Contentions (OWS). We are already finalizing these for service. - **October 14, 2024** — P.R. 3-3 Invalidity Contentions (Lumicore). - **October 28, 2024** — Joint Claim Construction Statement (we anticipate approximately 14 disputed terms). - **November 15, 2024** — Opening Claim Construction Brief (OWS). - **December 6, 2024** — Responsive Claim Construction Brief (L

This gives us a roughly 22-month runway from complaint filing (April 22, 2024) to trial, which is consistent with Judge Gilstrap's typical pace in patent cases in the Eastern District. A few observations:

First, the claim construction phase is going to be intensive. We need to begin preparing Dr. Caroline Ashford's supporting declaration and the technology tutorial well in advance of the November 15 opening brief deadline. The sooner we can get Dr. Ashford engaged on the key disputed terms, the better positioned we'll be.

Second, fact discovery will run in parallel with claim construction, so we'll need to stay disciplined about scheduling depositions. We still have several key fact depositions to get on the calendar, including Dr. Sandra Michaud, Raymond Bautista, Angela Reeves, and Kevin Ng. I'll have Omar begin coordinating dates with Lumicore's counsel.

Third, the Markman hearing on March 14, 2025 will be pivotal. The constructions of terms like "waveguide multiplexer," "integrated on a silicon substrate," "micro-channel heat sink," and "polarization-diverse grating coupler" will largely determine the scope of both our infringement and their validity arguments. We need to put our best foot forward on the briefs and the tutorial.

1. **Calendar all deadlines** in the order and confirm receipt when you get a chance.

2. **Protective Order** — The three-tier Stipulated Protective Order (Confidential / Highly Confidential – Attorneys' Eyes Only / Highly Confidential – Source Code) was submitted on August 9 and is pending entry. Please keep an eye on the docket for that and let me know when it hits.

3. **Initial Disclosures** — OWS's Initial Disclosures under Rule 26(a)(1) are being finalized for service on August 19. The Rule 26(f) Joint discovery Plan and Report was filed on July 29, so the discovery framework is in place.

4. **Markman Hearing Local Practice** — Could you flag any local practice considerations we should be aware of for the Markman hearing? Specifically, I'm wondering whether Judge Gilstrap has any current preferences on tutorial format or length that differ from what we've seen in our prior E.D. Tex. matters. Any intel from recent hearings before him would be helpful.

5. **Venue** — As you know, the motion to transfer was denied on August 5, so venue is settled. Lumicore's Tyler sales/support office at 2700 Earl Campbell Parkway and the E.D. Tex. customer base — Pinnacle Data Systems in Longview, Frontier Cloud Services in marshall, and CrossPoint Networking in Plano (Tyler Division) — provided strong venue support. Your declaration was a big part of that result.

On the administrative side, the $18.5 million litigation budget approved by Ridgeline Capital Partners covers us through trial. The current burn rate is on track, though as expected, the claim construction and discovery phases will be the most resource-intensive stretch. Please continue to submit your time under the agreed local counsel rates ($575/hr for you, $400/hr for associate support, $275/hr for paralegal) on

Thank you again for your excellent work on the transfer opposition and for the Callahan declaration supporting venue — that made a real difference. I'm going to set up a call with the full team (Wendy, Omar, and Marcus) later this week to map out the discovery and claim construction work plan in light of the schedule. I'll send around a few time options tomorrow.

Please don't hesitate to reach out in the meantime if anything comes up on the docket.

**Alan Ngo** Partner Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 T: (213) 555-4100 E: ango@calderwoodharkness.com

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