Contract analysis

I. Lumicore Has Waived the Attorney-Client Privilege by Placing Its Counsel's Opinions "At Issue" A. Lumicore Affirmatively Injected Its Counsel's Opinions into This Litigation. The "at issue" waiver doctrine provides that a party waives the attorney-client privilege when it places the substance of privileged communications directly at issue in the litigation. The Federal Circuit has recognized this principle in the

II. Under *Halo* and *Seagate*, Lumicore's Reliance on Advice of Counsel as a Defense to Willful Infringement Triggers Waiver A. The *Halo* Framework for Willful Infringement. In Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), the Supreme Court articulated the standard for enhanced damages under 35 U.S.C. § 284 in patent infringement cases. The Court held that enhanced damages are reserved for

1. All opinion-of-counsel letters prepared by Hawthorne Vega & Cruz LLP or any other counsel for Lumicore concerning the infringement, validity, and/or enforceability of the '847, '193, '562, and '015 Patents as applied to the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR product lines.

2. Drafts of opinion letters and communications between Lumicore and its counsel regarding the preparation, scope, and substance of the opinions. Drafts are within the scope of the waiver because they reflect the evolution of counsel's analysis and may reveal whether the final opinions omitted or glossed over material issues. See EchoStar, 448 F.3d at 1303 ("[T]he advice itself and the potential ramifications of that

3. Underlying analyses provided to or prepared by opinion counsel, including technical analyses, claim charts, product specifications, and any materials used to form the basis of the opinions.

4. Updates, supplements, and follow-up analyses to the opinions, including — critically — any opinions or analyses obtained in connection with the launch of the LumiEdge 1600G-LR product in Q4 2023. Mr. Bautista's deposition admission that no formal design-around analysis was commissioned before the LumiEdge launch raises the distinct possibility that no opinion was obtained for this product. That fact, in itself, is

III. The Work-Product Doctrine Does Not Shield the Opinion Letters from Production In addition to asserting attorney-client privilege, Lumicore has invoked the work-product doctrine, codified in Federal Rule of Civil Procedure 26(b)(3), to resist production of the opinion letters. This assertion fails for multiple independent reasons. First, the opinion letters are not work product. The work-product doctrine protects

IV. Lumicore's Stated Justifications for Withholding Are Meritless During the parties' meet-and-confer conferences, Lumicore advanced several justifications for withholding the opinion letters. None has merit. Lumicore's Argument 1: Lumicore contends that it has not formally "asserted" an advice-of-counsel defense. Lumicore takes the position that merely referencing counsel's opinions in a pre-suit letter and pleadin

V. The Relief Requested Is Narrowly Tailored and Subject to the Existing Protective Order OWS's request is narrowly tailored to the four Asserted Patents and the three accused product lines. OWS does not seek Lumicore's general litigation strategy, trial-preparation materials, or communications between Lumicore and its litigation counsel regarding the prosecution of this case. OWS seeks only the opinion-of-counsel le

1. All opinion-of-counsel letters, memoranda, and analyses prepared by or at the direction of Lumicore's counsel concerning the infringement, validity, and/or enforceability of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 as applied to the LumiLink 400G-ZR+, LumiLink 800G-DR8, and/or LumiEdge 1600G-LR product lines.

2. All drafts of such opinion letters, memoranda, and analyses, and all communications between Lumicore and its counsel relating to the preparation, scope, and substance of such opinion letters.

3. Any updates, supplements, or follow-up analyses to such opinion letters, including any opinions or analyses obtained in connection with the launch of the LumiEdge 1600G-LR product in Q4 2023, and any opinions or analyses obtained after Lumicore received FairPoint's second licensing letter on May 15, 2023. The requested production is limited in scope and bounded by the subject matter of the waiver — the Asserted Pa