Contract analysis

I. INTRODUCTION Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully moves this Court for an order compelling Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant") to produce all opinion-of-counsel letters, memoranda, and related communications concerning the non-infringement and/or invalidity of U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Pa

II. FACTUAL BACKGROUND A. The Asserted Patents OWS is the owner by assignment of four United States utility patents directed to silicon photonics transceiver and waveguide multiplexing technologies — technologies that are foundational to next-generation optical interconnect systems for data centers, telecommunications networks, and high-performance computing platforms. The Asserted Patents are as follows: U.S. Patent

III. LEGAL STANDARD A. Motion to Compel Under Federal Rule of Civil Procedure 37(a) Under Federal Rule of Civil Procedure 37(a)(3)(B), a party seeking discovery may move for an order compelling production of documents when the responding party fails to produce documents as requested under Rule 34 or asserts improper objections to such requests. The movant must demonstrate that the discovery sought is relevant to any

IV. ARGUMENT A. Lumicore Has Waived Attorney-Client Privilege by Affirmatively Placing Its Reliance on Counsel's Opinions at Issue

1. The July 10, 2023 Declination Letter Constitutes an Affirmative Disclosure. The analysis of Lumicore's privilege waiver begins with Lumicore's own words. In its July 10, 2023 Declination Letter, Lumicore — through its General Counsel Raymond Bautista — expressly represented to OWS and its licensing agent that Lumicore had obtained "competent legal opinions" confirming that Lumicore's products do not infringe any v

2. Lumicore's Defense to Willful Infringement Places the Opinions at Issue. Independent of the July 10, 2023 Declination Letter, Lumicore's litigation position separately triggers an implied waiver of the privilege. OWS's Complaint asserts willful infringement of all four Asserted Patents (Count VII) and seeks enhanced damages under 35 U.S.C. § 284. Under the Supreme Court's decision in Halo Electronics, Inc. v. Puls

3. The Waiver Extends to All Opinions Addressing Non-Infringement and Invalidity of the Asserted Patents. The scope of Lumicore's waiver is coextensive with the scope of the opinions it has placed at issue. Lumicore's July 10, 2023 Declination Letter did not limit the referenced "competent legal opinions" to a single patent, a single accused product, or a specific date range. Rather, Lumicore broadly represented that

1. The "Sword and Shield" Doctrine Prohibits Selective Invocation of Privilege. The fundamental unfairness of Lumicore's position is manifest. Lumicore has sought to benefit from the favorable conclusion of its opinion letters in two distinct ways: first, by citing them to OWS in the July 10, 2023 Declination Letter as a reason not to take a license, and second, by asserting good-faith reliance on legal advice as a d

2. Lumicore's Blanket Privilege Objection Is Inconsistent with Its Litigation Position. The inconsistency in Lumicore's position is stark. If Lumicore has elected to rely on advice of counsel as a defense to willfulness — as its pleadings, discovery conduct, and counsel's representations during meet-and-confer conferences suggest — then the privilege has been waived, and the opinion letters must be produced. If, on t

1. Temporal Scope. The waiver extends from the date Lumicore first sought or received opinion-of-counsel advice regarding the Asserted Patents through the present date, and continuing through the conclusion of this litigation. This temporal scope is appropriate because Lumicore's July 10, 2023 Declination Letter referenced opinions without any temporal limitation, and because the willfulness inquiry encompasses the e

2. Subject-Matter Scope. The subject-matter scope of the waiver extends to all communications between Lumicore and opinion counsel — whether opinion counsel is Hawthorne Vega & Cruz LLP or any other law firm retained for this purpose — regarding the infringement, non-infringement, validity, invalidity, and enforceability of the '847, '193, '562, and '015 Patents as applied to the LumiLink 400G-ZR+, LumiLink 800G-DR8,

3. Distinction Between Trial Counsel and Opinion Counsel. OWS recognizes the distinction drawn by the Federal Circuit in In re Seagate between trial counsel and opinion counsel. In Seagate, the Federal Circuit held that waiver of privilege with respect to opinion counsel's work "does not extend waiver to trial counsel" in most circumstances, noting that "the waiver of the attorney-client privilege . . . does not auto

V. RELIEF REQUESTED For the foregoing reasons, OWS respectfully requests that the Court enter an order:

1. Compelling production of all opinion-of-counsel letters and related materials. Specifically, ordering Lumicore to produce, within fourteen (14) days of the Court's order, all opinion-of-counsel letters, memoranda, and related communications and materials concerning the non-infringement, invalidity, and/or unenforceability of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 as applied to the LumiL

2. Compelling production of all underlying materials considered by opinion counsel. Specifically, ordering Lumicore to produce all underlying materials considered or relied upon by opinion counsel in the preparation of the opinion letters, including but not limited to prior-art search results, claim charts, technical analyses, reverse engineering reports, and communications between Lumicore's engineering, technical,

3. In the alternative, if the Court determines that the scope of waiver should be limited, ordering Lumicore to produce the specific opinion-of-counsel letters referenced in its July 10, 2023 Declination Letter signed by Raymond Bautista, together with any supplements, updates, or revisions to those specific opinions.

4. In the further alternative, if the Court determines that Lumicore has not waived the privilege, ordering Lumicore to affirmatively and irrevocably disclaim any reliance on advice of counsel as a defense to OWS's willful infringement claim and precluding Lumicore from introducing any evidence or argument at trial that it relied on legal opinions, held a good-faith belief in non-infringement or invalidity informed b

5. Awarding OWS its reasonable expenses. Awarding OWS its reasonable expenses, including attorneys' fees, incurred in connection with this motion, pursuant to Federal Rule of Civil Procedure 37(a)(5).

VI. CERTIFICATION OF CONFERENCE Pursuant to Local Rule CV-7(h) and Federal Rule of Civil Procedure 37(a)(1), counsel for Plaintiff Optiwave Semiconductor Corp. hereby certifies that it has conferred in good faith with counsel for Defendant Lumicore Technologies, Inc. in an effort to resolve this discovery dispute without Court intervention. Specifically, Wendy Schultz of Calderwood & Harkness LLP, counsel for OWS, an

VII. CONCLUSION For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court grant its Motion to Compel and order Defendant Lumicore Technologies, Inc. to produce all opinion-of-counsel letters, memoranda, and related communications and materials, together with all underlying materials considered or relied upon by opinion counsel, within fourteen (14) days of the Court's orde