Contract analysis

From: Wendy Schultz <wschultz@calderwoodharkness.com> To: Samantha Briggs <sbriggs@hawthornvegacruz.com> Cc: Alan Ngo <ango@calderwoodharkness.com> Date: Mon, 14 Oct 2024 04:47:00 -0000 Subject: Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc., Case No. 2:24-cv-00319-JRG (E.D. Tex.) — Meet-and-Confer Summary re: Opinion-of-Counsel Letters

I write to memorialize the substance of the three meet-and-confer conferences held between counsel for Plaintiff Optiwave Semiconductor Corp. ("OWS") and counsel for Defendant Lumicore Technologies, Inc. ("Lumicore") regarding OWS's request for the production of opinion-of-counsel letters referenced by Lumicore during pre-suit licensing discussions and implicated by Lumicore's defense posture in this litigation. This

As detailed below, despite good-faith efforts over three separate conferences, the parties have been unable to resolve this dispute. Accordingly, if the dispute is not resolved within seven days of the date of this correspondence — i.e., by October 21, 2024 — OWS intends to file a Motion to Compel Production of the opinion-of-counsel letters before Judge Gilstrap.

**I. Background — The Opinion Letters at Issue**

On August 26, 2024, OWS served its First Set of Requests for Production of Documents to Lumicore. Request Nos. 71 through 74 sought production of all opinion-of-counsel letters, memoranda, and related communications concerning the validity, enforceability, or infringement of U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), a

Lumicore served its responses and objections to OWS's First Set of Requests for Production on or about October 7, 2024. In response to RFP Nos. 71–74, Lumicore objected on the grounds of attorney-client privilege and work-product protection and withheld all responsive documents in their entirety.

The existence of responsive opinion letters is not speculative. In a letter dated July 10, 2023, addressed to FairPoint Licensing Group, LLC (attention: Angela Reeves) and to Rebecca Tanaka, General Counsel of OWS, Lumicore declined to take a license under OWS's patents and affirmatively stated that it had obtained "competent legal opinions" concluding that its products do not infringe OWS's asserted patents. That le

The relevance of these opinion letters is further underscored by Lumicore's litigation posture. Lumicore's Answer and Counterclaims, filed June 17, 2024 (D.E. 12), assert non-infringement and include affirmative defenses related to non-infringement that place the substance of any such opinions directly at issue. Moreover, Lumicore's post-notice conduct — including the launch of the LumiEdge 1600G-LR product in Q4 202

**II. Summary of Meet-and-Confer Conference No. 1 — September 25, 2024**

On September 25, 2024, counsel for the parties participated in a telephonic meet-and-confer conference. Participating on behalf of OWS were the undersigned and Omar Siddiqui of Calderwood & Harkness LLP. Participating on behalf of Lumicore were Samantha Briggs and Rohan Iyer of Hawthorne Vega & Cruz LLP.

*OWS's Position.* OWS argued that Lumicore's affirmative reference to "competent legal opinions" in its July 10, 2023 declination letter constitutes a classic sword-and-shield use of privilege. Specifically, OWS contended that Lumicore cannot invoke the existence of favorable legal opinions to resist a willful infringement finding — as it effectively did in the July 10, 2023 letter by communicating to OWS and its lic

OWS cited the relevance of the opinion letters to OWS's willful infringement claims, particularly in light of the Supreme Court's framework in *Halo Electronics, Inc. v. Pulse Electronics, Inc.*, 579 U.S. 93 (2016), which permits consideration of the accused infringer's subjective state of mind, including whether it acted despite a known risk of infringement. OWS noted that FairPoint Licensing Group's January 15, 202

OWS requested that Lumicore either produce the opinion-of-counsel letters responsive to RFP Nos. 71–74 or withdraw any reliance on the existence of those opinions as part of its defense to willful infringement.

*Lumicore's Position.* Lumicore, through Ms. Briggs, maintained that the opinion-of-counsel letters are protected by attorney-client privilege and the work-product doctrine. Lumicore asserted that the mere reference to "competent legal opinions" in the July 10, 2023 letter was not an affirmative assertion of an advice-of-counsel defense and therefore did not constitute a waiver of privilege. Lumicore stated that it h

*Outcome.* The parties were unable to reach a resolution. OWS requested a follow-up conference.

**III. Summary of Meet-and-Confer Conference No. 2 — October 3, 2024**

On October 3, 2024, the same counsel participated in a second telephonic meet-and-confer conference.

*OWS's Position.* OWS reiterated its request for production and added that Lumicore's failure to include the opinion letters on its privilege log — which had not yet been served as of that date — would compound the dispute if the opinion letters were omitted or described in insufficient detail. OWS noted that under Federal Circuit precedent, including the *In re Seagate Technology, LLC* framework as modified by *Halo

OWS argued that Lumicore's July 10, 2023 letter was a deliberate, strategic communication directed to OWS and its licensing agent that invoked the existence and conclusions of legal opinions to bolster Lumicore's refusal to take a license. This was not a passing or inadvertent reference; it was a considered statement made in the context of an adversarial licensing negotiation, and it placed the opinions at issue and

In an effort to resolve the dispute, OWS proposed a compromise: production of the opinion-of-counsel letters to outside counsel only, subject to the three-tier Stipulated Protective Order entered by the Court on August 19, 2024, under the "Highly Confidential — Attorneys' Eyes Only" designation. OWS noted that this protocol would fully protect Lumicore's legitimate confidentiality interests while permitting OWS to ev

*Lumicore's Position.* Lumicore rejected OWS's proposed compromise. Ms. Briggs maintained that no waiver had occurred and that the confidentiality designation under which the documents would be produced was irrelevant to the threshold privilege question. Ms. Briggs stated that Lumicore's reference to "competent legal opinions" in the July 10, 2023 letter was made in a pre-litigation licensing context and was intended

*Outcome.* No resolution was reached. The parties agreed to conduct one final conference before OWS would consider motion practice.

**IV. Summary of Meet-and-Confer Conference No. 3 — October 10, 2024**

On October 10, 2024, the parties held a third and final telephonic meet-and-confer conference. Participating on behalf of OWS were the undersigned and Omar Siddiqui. Participating on behalf of Lumicore was Samantha Briggs; Mr. Iyer was unavailable for this call.

*OWS's Position.* OWS made a final request for production of the opinion-of-counsel letters, noting that the parties had now engaged in three good-faith conferences without resolution and that OWS considered the dispute ripe for judicial intervention.

OWS stated that it would seek an order compelling production of the opinion letters or, in the alternative, an order precluding Lumicore from relying on the existence or substance of any opinion-of-counsel letters in defense of OWS's willful infringement claims — including at any phase of this litigation and at trial.

OWS also noted additional considerations that heighten the relevance and urgency of this dispute. First, the deposition of Raymond Bautista, Lumicore's General Counsel, is scheduled for December 3, 2024. OWS intends to examine Mr. Bautista regarding the commissioning, scope, timing, and recipients of the opinion letters. Lumicore's continued assertion of privilege over the letters will necessarily constrain that test

*Lumicore's Position.* Ms. Briggs reiterated Lumicore's position that no waiver has occurred and that the opinion-of-counsel letters remain protected by attorney-client privilege and the work-product doctrine. Ms. Briggs stated that Lumicore has not asserted, and does not intend at this time to assert, an advice-of-counsel defense. However, Lumicore is not willing to make a binding disclaimer that would foreclose tha

*Outcome.* The parties reached an impasse and acknowledged that motion practice is the appropriate next step.

**V. OWS's Summary of the Dispute and Legal Basis for Production**

The core dispute is whether Lumicore's affirmative reference to "competent legal opinions" in its July 10, 2023 declination letter, combined with its defense posture in this litigation, constitutes a waiver of attorney-client privilege and/or work-product protection over the opinion-of-counsel letters responsive to RFP Nos. 71–74.

OWS submits that waiver has occurred on at least two independent grounds:

First, *implied waiver by assertion*. Lumicore's July 10, 2023 letter affirmatively invoked the existence and conclusions of opinion-of-counsel letters to justify its continued accused conduct vis-à-vis OWS's patented technology. This is the paradigmatic "sword-and-shield" scenario: a party cannot wield privileged communications offensively — here, to deflect a licensing demand and signal that its conduct is legally

Second, *at-issue waiver*. To the extent Lumicore's defense to willful infringement rests on its subjective good-faith belief that its products do not infringe the asserted patents — a belief that was allegedly informed by the very opinion letters at issue — the substance of those opinions is placed "at issue" in this litigation. Under *Halo* and its progeny, OWS is entitled to explore the totality of the circumstanc

OWS notes that if Lumicore is prepared to disclaim reliance on the opinion letters entirely — including any argument, in any phase of this case, that it acted in good faith based on legal advice in deciding to continue its accused conduct — OWS would consider that an acceptable resolution of this dispute, subject to an appropriate order from the Court memorializing Lumicore's disclaimer.

**VI. Request for Lumicore's Final Position**

OWS respectfully requests that Lumicore provide a written response to this correspondence no later than October 18, 2024, confirming one of the following:

(a) Lumicore will produce the opinion-of-counsel letters responsive to RFP Nos. 71–74, under any agreed-upon confidentiality designation pursuant to the Stipulated Protective Order;

(b) Lumicore will make a binding representation, suitable for submission to the Court, that it will not rely on the opinion-of-counsel letters or the advice-of-counsel defense in any phase of this litigation, including in opposition to OWS's willful infringement claims under 35 U.S.C. § 284 and at trial; or

(c) Lumicore maintains its current position, in which case OWS will file its Motion to Compel.

OWS reserves all rights to seek relief from the Court, including an award of reasonable attorneys' fees and costs associated with the Motion to Compel under Federal Rule of Civil Procedure 37(a)(5). OWS further reserves the right to submit this correspondence to the Court in support of its demonstration that it has satisfied the meet-and-confer requirements of the Local Rules of the Eastern District of Texas and Rule

Samantha, please confirm receipt of this correspondence at your earliest convenience. If you or your colleagues at Hawthorne Vega & Cruz wish to discuss any aspect of the foregoing before responding in writing, I am happy to arrange a call. We remain willing to resolve this dispute without motion practice if a path to resolution exists.

Wendy Schultz Lead Associate Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Tel: (213) 555-4820 Email: wschultz@calderwoodharkness.com

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