Contract analysis

From: Alan Ngo <ango@calderwoodharkness.com> To: Rebecca Tanaka <rtanaka@optiwavesemi.com> Cc: Marcus Delgado <mdelgado@calderwoodharkness.com> Date: Mon, 05 Aug 2024 03:47:00 -0000 Subject: Lumicore's Motion to Transfer Denied — Optiwave Semi v. Lumicore, Case No. 2:24-cv-00319-JRG (E.D. Tex.)

PRIVILEGED & CONFIDENTIAL — ATTORNEY-CLIENT COMMUNICATION

I'm pleased to report that Judge Gilstrap issued an order this afternoon denying Lumicore Technologies, Inc.'s Motion to Transfer Venue (D.E. 13). The case will remain in the Eastern District of Texas, marshall Division. I've attached the Court's order (D.E. 25) for your review.

As you'll recall, Lumicore filed its Motion to Transfer on June 17, 2024, alongside its Answer and Counterclaims (D.E. 12–13), arguing that transfer to the Western District of Texas, Austin Division, was warranted because Lumicore's headquarters is located at 9200 Spectrum Boulevard, Building C, Austin, TX 78759, and that Austin would be a more convenient forum for the parties and witnesses. We filed our Opposition o

The Court credited our arguments on several key points:

- **Lumicore's own presence in the Eastern District.** The Court found it significant that Lumicore maintains a sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, TX 75701 — undermining Lumicore's characterization of the Eastern District as an inconvenient forum.

- **Accused product sales in E.D. Tex.** The Court noted that Lumicore has sold the accused products — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR — to at least three customers with facilities in the Eastern District: Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX, transferred to the Tyler Division for case manage

- **Convenience and judicial economy.** After weighing the convenience-of-witnesses and judicial-economy factors, the Court concluded that Lumicore had not carried its burden of demonstrating that the Austin Division would be "clearly more convenient." The Court also referenced its well-established docket and extensive experience managing patent cases in the Eastern District.

This is a favorable result for Optiwave. The Eastern District of Texas remains one of the premier patent venues in the country, and Judge Gilstrap's deep experience with patent matters will serve us well as we move through claim construction and toward trial. Jim Callahan and the team at Whitmore & Callahan LLP in Tyler are well-positioned for continued proceedings in this district.

Procedurally, the case will now proceed on the current track. As you know, the parties are finalizing the Joint Motion for Entry of Docket Control Order, which is set to be filed on August 9, and I anticipate the Court will issue the Scheduling Order shortly thereafter.

With the transfer issue behind us, we can turn our full attention to the merits:

1. **Joint discovery Plan and Report.** The Rule 26(f) report was filed last week. We are in good shape on the discovery framework.

2. **Initial Disclosures.** Optiwave's Initial Disclosures under Rule 26(a)(1) will be due per the forthcoming Scheduling Order. We will begin coordinating with your team on document collection and identification of key witnesses in the near term.

3. **Stipulated Protective Order.** We are finalizing the proposed three-tier Stipulated Protective Order (Confidential / Highly Confidential — Attorneys' Eyes Only / Highly Confidential — Source Code) with Lumicore's counsel at Hawthorne Vega & Cruz LLP (Kate Rourke's team). We expect to submit it to the Court for approval shortly.

4. **Written discovery.** Once the Scheduling Order issues, we plan to serve our first sets of interrogatories and requests for production on Lumicore promptly. Marcus, Wendy, and I will begin drafting those in advance so we are ready to go.

I'd suggest we schedule a brief call later this week — perhaps Thursday or Friday — to walk through the discovery plan and upcoming deadlines in more detail. Please let me know what works on your end.

Finally, please feel free to share this news with Dr. Ramaswamy and Franklin Osei as you see fit. I'm happy to join a call with Ridgeline if you or Franklin would like a direct briefing on the ruling and our path forward.

Don't hesitate to reach out if you have any questions in the meantime.

**Alan Ngo** Partner Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 T: (213) 555-4100 | D: (213) 555-4127 ango@calderwoodharkness.com Admitted in California; admitted *pro hac vice*, E.D. Tex.

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