Contract analysis

I. INDIVIDUALS LIKELY TO HAVE DISCOVERABLE INFORMATION — Rule 26(a)(1)(A)(i) Pursuant to Federal Rule of Civil Procedure 26(a)(1)(A)(i), OWS identifies the following individuals as likely to have discoverable information that OWS may use to support its claims or defenses. For each individual identified below, OWS provides the individual's name, address (or last known address), and a general description of the subject

1. Dr. Priya Ramaswamy Chief Executive Officer, Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054 Dr. Ramaswamy is likely to have discoverable information concerning the following subjects: OWS's corporate history, organizational structure, and business strategy; OWS's competitive positioning in the silicon-photonics transceiver market, including its position as the third-l

2. Dr. Jian-Wei Huang Chief Technology Officer, Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054 Dr. Huang is likely to have discoverable information concerning the following subjects: the conception, design, and development of the inventions claimed in U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), and 11,402,015 (the "'015 Patent"); the

3. Rebecca Tanaka General Counsel, Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054 Ms. Tanaka is likely to have discoverable information concerning the following subjects: chain of title for each of the four asserted patents; the Asset Purchase Agreement dated June 15, 2018 between OWS and Solara Optics, Inc. for acquisition of U.S. Patent No. 9,678,562 (the "'562 Patent"

4. Dr. Nikolai Petrov Vice President of Engineering, Photonics Division, Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054 Dr. Petrov is likely to have discoverable information concerning the following subjects: the design, development, testing, and manufacturing of OWS's transceiver products that practice the asserted patents, including the OWS-400ZR, OWS-800XR, and OWS-16

5. David Leitner Chief Financial Officer, Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054 Mr. Leitner is likely to have discoverable information concerning the following subjects: OWS's financial performance, including FY 2023 revenue of $487.3 million and FY 2023 net income of $61.4 million; revenue, costs of goods sold, and gross margins for OWS products competing with

6. Karen Whitfield Vice President of Sales, Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054 Ms. Whitfield is likely to have discoverable information concerning the following subjects: OWS's customer relationships in the hyperscale data-center market; lost sales attributable to Lumicore's accused products, including specific instances of customer diversion; lost design-in

7. Regional Sales Directors (Names to Be Supplemented) Three regional sales directors employed by Optiwave Semiconductor Corp. at various OWS offices, whose names and contact information will be supplemented pursuant to Federal Rule of Civil Procedure 26(e) as soon as practicable. These individuals are likely to have discoverable information concerning specific instances of customer diversion and lost business opport

8. Franklin Osei Managing Partner, Ridgeline Capital Partners, LP, and Board Chair, Optiwave Semiconductor Corp. 200 Clarendon Street, 40th Floor Boston, MA 02116 Mr. Osei is likely to have discoverable information concerning the following subjects: Ridgeline Capital Partners' acquisition of a 55% equity stake in OWS in 2019 for approximately $780 million; the investment thesis underlying Ridgeline's investment in OW

9. Gregory Falk Formerly Vice President of Engineering, Solara Optics, Inc. (dissolved 2020); currently an independent consultant. Last known address to be provided upon confirmation. Mr. Falk is likely to have discoverable information concerning the following subjects: the conception and development of the inventions claimed in U.S. Patent No. 9,678,562 (the "'562 Patent"); Solara Optics' silicon-photonics research

10. Dr. Martin Chu Lead Patent Prosecution Attorney, Cascade IP Advisors, LLC 1550 Crystal Drive, Suite 600 Arlington, VA 22202 Dr. Chu is likely to have discoverable information concerning the following subjects: the prosecution of all four asserted patents before the United States Patent and Trademark Office, including the preparation and filing of patent applications and the prosecution of those applications throu

11. Angela Reeves Managing Director, FairPoint Licensing Group, LLC 500 Sansome Street, Suite 1400 San Francisco, CA 94111 Ms. Reeves is likely to have discoverable information concerning the following subjects: pre-suit licensing outreach to Lumicore Technologies, Inc. conducted on behalf of OWS; the preparation and transmission of the January 15, 2023 licensing and notice letter addressed to Raymond Bautista, Gener

12. Kevin Ng Lead Engineer, Benchmark Semiconductor Analysis, LLC 2244 Mission College Boulevard Santa Clara, CA 95054 Mr. Ng is likely to have discoverable information concerning the following subjects: the reverse engineering and teardown analysis of Lumicore's accused products, including the LumiLink 400G-ZR+ (teardown report delivered December 12, 2022), the LumiLink 800G-DR8 (follow-on teardown report delivered

13. Melissa Chen Formerly employed by Lumicore Technologies, Inc. (2020–2024); currently employed at Veridian Photonics, Inc. Contact information to be confirmed; last known employer address: Veridian Photonics, Inc., 1800 Gateway Boulevard, San Jose, CA 95110. Ms. Chen is likely to have discoverable information concerning the following subjects: her work as a member of Lumicore's LumiLink 400G-ZR+ design team during

14. Thomas "Tom" Kessler Chief Executive Officer, Lumicore Technologies, Inc. 9200 Spectrum Boulevard, Building C Austin, TX 78759 Mr. Kessler is likely to have discoverable information concerning the following subjects: Lumicore's corporate history, organizational structure, and business strategy; Lumicore's decision to enter the silicon-photonics transceiver market; Lumicore's knowledge of OWS and OWS's patent port

15. Dr. Sandra Michaud Chief Technology Officer, Lumicore Technologies, Inc. 9200 Spectrum Boulevard, Building C Austin, TX 78759 Dr. Michaud is likely to have discoverable information concerning the following subjects: the design and development of Lumicore's accused products, including the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR; the review of OWS's published patent applications during t

16. Raymond Bautista General Counsel, Lumicore Technologies, Inc. 9200 Spectrum Boulevard, Building C Austin, TX 78759 Mr. Bautista is likely to have discoverable information concerning the following subjects: receipt and handling of FairPoint Licensing Group's January 15, 2023 and May 15, 2023 licensing and notice letters; Mr. Bautista's participation in the April 20, 2023 in-person licensing meeting in Austin, Texa

17. Dr. Eric Dalmqvist Vice President of Product Development, Lumicore Technologies, Inc. 9200 Spectrum Boulevard, Building C Austin, TX 78759 Dr. Dalmqvist is likely to have discoverable information concerning the following subjects: the development timeline and technical specifications of Lumicore's accused products; Lumicore's product roadmap and development processes for the LumiLink and LumiEdge product lines; D

18. Janet Moreno Chief Financial Officer, Lumicore Technologies, Inc. 9200 Spectrum Boulevard, Building C Austin, TX 78759 Ms. Moreno is likely to have discoverable information concerning the following subjects: Lumicore's financial data, including revenue, cost of goods sold, and profit margin data for the accused product lines; FY 2023 revenue data for the accused products, including LumiLink 400G-ZR+ revenue of ap

I. Expert Witnesses (Identified for Completeness; Expert Disclosures to Follow Under Rule 26(a)(2)) The following individuals are identified for completeness. OWS anticipates retaining these individuals as expert witnesses in this action. Full expert disclosures, including expert reports, will be served in accordance with Federal Rule of Civil Procedure 26(a)(2) and the Court's Scheduling Order, which sets the deadli

19. Dr. Caroline Ashford Professor of Electrical Engineering & Photonics Northfield Institute of Technology Evanston, IL 60208 Dr. Ashford is anticipated to serve as OWS's technical and infringement expert. She is expected to provide expert testimony regarding claim construction, infringement analysis, validity, and the technology at issue in this case. Dr. Ashford's expert report is due June 15, 2025, in accordance

20. Dr. Lawrence Keating Managing Director, Meridian Economic Consulting Group, LLC 233 South Wacker Drive, Suite 4400 Chicago, IL 60606 Dr. Keating is anticipated to serve as OWS's damages expert. He is expected to provide expert testimony regarding the computation of damages, including lost profits under the Panduit framework, reasonable royalty under the Georgia-Pacific framework, and enhanced damages for willful

21. Gregory Falk Independent Consultant (also identified above as a fact witness) Mr. Falk is anticipated to serve as OWS's industry expert. He is expected to provide expert testimony regarding the silicon-photonics industry, including the state of the art, commercial significance of the patented innovations, long-felt need, and failure of others. Mr. Falk's expert report is due June 15, 2025, in accordance with the

II. DOCUMENTS, ELECTRONICALLY STORED INFORMATION, AND TANGIBLE THINGS — Rule 26(a)(1)(A)(ii) Pursuant to Federal Rule of Civil Procedure 26(a)(1)(A)(ii), OWS provides the following description, by category, of documents, electronically stored information ("ESI"), and tangible things in the possession, custody, or control of OWS that OWS may use to support its claims or defenses, unless the use would be solely for imp

1. Certified copies of U.S. Patent Nos. 10,234,847 (the "'847 Patent"); 10,891,193 (the "'193 Patent"); 9,678,562 (the "'562 Patent"); and 11,402,015 (the "'015 Patent"), including all claims, specifications, abstracts, and drawings for each patent.

2. Complete prosecution histories (file wrappers) for each of the four asserted patents, including all provisional applications (including Provisional Application No. 62/499,117, filed April 7, 2017, from which the '847 Patent claims priority), nonprovisional applications, continuation applications, and continuation-in-part applications; all office actions issued by the United States Patent and Trademark Office ("USP

3. Prosecution histories of related patent family members, including continuation and continuation-in-part applications in the '562 Patent/'847 Patent family and any other related applications sharing common priority or disclosure.

4. Assignment records recorded at the USPTO evidencing the chain of title for each asserted patent from the original inventor(s) to OWS, including assignments from individual inventors to the original assignees (Optiwave Semiconductor Corp. and Solara Optics, Inc., as applicable) and the assignment from Solara Optics, Inc. to OWS for the '562 Patent, recorded pursuant to the Asset Purchase Agreement dated June 15, 20

5. Maintenance fee payment records for all four asserted patents, confirming that all maintenance fees are current and that each patent remains in full force and effect. B. Patent Acquisition Documents

1. The Asset Purchase Agreement ("APA") between Optiwave Semiconductor Corp. and Solara Optics, Inc. dated June 15, 2018, pursuant to which OWS acquired the '562 Patent and eleven other patents and patent applications for a total purchase price of $34.5 million.

2. All schedules and exhibits to the APA, including the schedule identifying each of the transferred patents and patent applications by number, title, filing date, and issue date.

3. Assignment documents executed in connection with the APA, including executed patent assignments recorded at the USPTO.

4. Due diligence materials relating to the Solara Optics patent portfolio reviewed or prepared in connection with the APA, including patent valuation analyses, technical assessments, and freedom-to-operate evaluations, to the extent not subject to attorney-client privilege or work-product protection. C. OWS Product and Technical Documents

1. Technical specifications, design documents, engineering records, and development histories for OWS's OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families, which are the OWS products that practice the asserted patents and compete directly with Lumicore's accused products.

2. Documents showing the relationship between the claimed inventions in the asserted patents and the specific features embodied in OWS's commercial transceiver products, including internal engineering analyses, claim mapping exercises, and design-to-patent correlation documents.

3. Marketing materials, product datasheets, application notes, white papers, and customer-facing documentation for OWS's transceiver products, including materials used in competitive evaluations against Lumicore's accused products.

4. Documents evidencing OWS's manufacturing capacity and marketing capability to serve the demand displaced by Lumicore's accused products, including manufacturing capacity utilization reports, production line specifications, and supply-chain documentation. D. Infringement Analysis and Teardown Reports

1. Benchmark Semiconductor Analysis, LLC teardown reports for Lumicore's accused products: (a) LumiLink 400G-ZR+ teardown report, delivered December 12, 2022; (b) LumiLink 800G-DR8 follow-on teardown report, delivered June 2023; and (c) LumiEdge 1600G-LR teardown report, delivered February 2024.

2. Physical samples and photographic, optical, and scanning electron microscopy images of accused product components obtained during the Benchmark teardowns, including die-level images, cross-sectional photographs, and annotated micrographs.

3. Internal OWS engineering analyses identifying potential infringement by Lumicore's accused products, originating in October 2022, including preliminary technical comparisons prepared by OWS's engineering staff.

4. Claim charts mapping the accused features of Lumicore's LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR products to the asserted claims of the '847, '193, '562, and '015 Patents. E. Pre-Suit Licensing Correspondence

1. FairPoint Licensing Group, LLC's first licensing and notice letter to Lumicore's General Counsel, Raymond Bautista, dated January 15, 2023, identifying the '847, '193, and '562 Patents and including detailed claim charts mapping Lumicore's LumiLink 400G-ZR+ product to the asserted patent claims.

2. Lumicore's response to the January 15, 2023 letter, transmitted via outside counsel Hawthorne Vega & Cruz LLP (Catherine "Kate" Rourke), dated February 28, 2023, in which Lumicore disputed infringement and questioned the validity of the asserted patents.

3. Records and notes relating to the April 20, 2023 in-person licensing meeting held in Austin, Texas, attended by Angela Reeves (FairPoint Licensing Group), Rebecca Tanaka (OWS General Counsel), Raymond Bautista (Lumicore General Counsel), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP), including meeting agendas, presentation materials, and contemporaneous notes.

4. FairPoint Licensing Group's second licensing letter, dated May 15, 2023, adding the '015 Patent (which issued on August 2, 2022) and expanding the scope of accused products to include the LumiLink 800G-DR8, with accompanying supplemental claim charts.

5. Lumicore's July 10, 2023 declination letter, stating that Lumicore had obtained "competent legal opinions" that its products do not infringe OWS's asserted patents and declining to continue license negotiations.

6. Internal OWS and FairPoint Licensing Group communications relating to the licensing outreach to Lumicore, including strategy memoranda, correspondence, and internal analyses, to the extent not subject to attorney-client privilege or work-product protection. F. Comparable License Agreements

1. License agreement between OWS and Terralink Semiconductor (2020), providing for a 6.5% running royalty on approximately $45 million in licensed revenue.

2. License agreement between OWS and NovaWave Corp. (2021), providing for a 9.0% running royalty on approximately $22 million in licensed revenue.

3. License agreement between OWS and Helix Integrated Photonics (2022), providing for a 7.75% running royalty plus a $2.5 million upfront payment on approximately $68 million in licensed revenue.

4. To the extent in OWS's possession, custody, or control, information concerning industry-comparable license agreements in the silicon-photonics transceiver field, including the Stratos Photonics v. ArcLight Systems settlement (2019, 8.0% royalty rate) and the Coreline Technologies v. Prisma Semiconductor cross-license (2021, 10.2% effective royalty rate). G. Financial and Damages-Related Documents

1. OWS's audited financial statements for fiscal years 2021, 2022, and 2023, as audited by Gresham & Whitfield LLP (San Jose office), including balance sheets, income statements, statements of cash flows, and accompanying notes.

2. Product-level revenue, cost of goods sold, and gross margin data for OWS products competing with Lumicore's accused products, specifically the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families.

3. Internal OWS sales reports, customer-by-customer revenue data, and sales pipeline data reflecting competition with Lumicore's accused products, including reports identifying specific customer accounts and procurement opportunities.

4. Pricing data and analyses showing average selling price ("ASP") trends for OWS's transceiver products, including documentation of the approximately 18.7% decline in 400G-ZR transceiver ASPs from Q3 2022 to Q4 2023.

5. Documents relating to OWS's market position as the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, including market-share analyses and industry rankings.

6. Market research reports and competitive intelligence analyses relating to the silicon-photonics transceiver market, including reports prepared by or for OWS and third-party industry reports.

7. Documents concerning the 12 hyperscale data-center operators where OWS and Lumicore compete head-to-head, including customer relationship histories, bid records, and competitive win/loss analyses.

8. Documents relating to lost design-in opportunities attributable to Lumicore's entry into the market with the accused products, including records of customer design-in processes from which OWS was displaced. H. Corporate and Organizational Documents

1. OWS's Certificate of Incorporation filed with the State of Delaware, corporate bylaws, and certificates of good standing from the State of Delaware and the State of California.