Contract analysis

I. INTRODUCTION Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully submits this Reply in Support of its Motion to Compel Production of Defendant Lumicore Technologies, Inc.'s ("Lumicore") Opinion-of-Counsel Letters, responding to Lumicore's Opposition (D.E. 48, filed November 4, 2024). This Reply is supported by the entire record before this Court, including OWS's original Motion to Compel (D.

II. FACTUAL BACKGROUND The relevant facts, most of which are undisputed, are set forth in detail in OWS's Memorandum in Support (D.E. 41) and the Schultz Declaration (D.E. 42). OWS summarizes them here for the Court's convenience and supplements them with developments that have occurred since the filing of the original Motion. A. Pre-Suit Notice and Lumicore's Invocation of Counsel Opinions On January 15, 2023, FairP

III. LEGAL ARGUMENT A. Lumicore Has Waived Attorney-Client Privilege by Placing the Opinion Letters at Issue

1. The "At Issue" Waiver Doctrine Governs This Dispute It is well established under both Fifth Circuit law and Federal Circuit precedent — which controls on patent-specific issues, including willful infringement — that a party waives the attorney-client privilege when it injects privileged communications into the litigation as a sword while simultaneously attempting to maintain the privilege as a shield. See Conkling

2. Lumicore's July 10, 2023 Letter Constitutes Affirmative Reliance Lumicore's Opposition attempts to minimize the significance of the July 10, 2023 letter, characterizing it as a "routine business communication" that merely acknowledged the existence of legal advice without disclosing its substance. (Opp. at 10–11.) This characterization is untenable. The July 10, 2023 letter was not routine. It was authored by or a

3. Lumicore's Pleaded Advice-of-Counsel Defense Compels Disclosure Independent of the July 10, 2023 letter, Lumicore's assertion of an advice-of-counsel defense in its Answer and Counterclaims (D.E. 12) constitutes an unambiguous waiver of the attorney-client privilege as to the opinion letters. Paragraph 87 of Lumicore's Answer states that "Lumicore relied in good faith on the legal analysis and advice of qualified

1. Waiver of Work-Product Protection Is Coextensive with Privilege Waiver Lumicore's Opposition argues that even if the attorney-client privilege has been waived, the opinion letters remain shielded by the work-product doctrine because they were prepared in anticipation of litigation and reflect counsel's mental impressions and legal theories. (Opp. at 15–17.) This argument fails. When a party affirmatively places co

2. OWS Has Demonstrated Substantial Need as an Alternative Basis for Production Even if this Court were to conclude that work-product protection applies independently — and it should not — OWS has demonstrated substantial need for the opinion letters and cannot obtain their substantial equivalent by other means, as required by Federal Rule of Civil Procedure 26(b)(3)(A). The opinion letters are uniquely relevant to s

1. Subject-Matter Waiver Applies Lumicore's Opposition argues, in the alternative, that even if waiver is found, it should be limited to communications with a single attorney or to a single opinion letter. (Opp. at 19–20.) This argument ignores the well-established subject-matter waiver doctrine. Under Federal Circuit and Fifth Circuit law, when a party waives the attorney-client privilege by placing privileged commu

2. The Waiver Extends to Both Infringement and Validity Opinions Lumicore's July 10, 2023 letter referenced opinions that "its products do not infringe" OWS's patents. Lumicore's earlier February 28, 2023 response through HVC also "question[ed] validity." And Paragraph 87 of Lumicore's Answer references reliance on advice of counsel "in concluding that its products do not infringe the asserted patents and that the as

3. The Temporal Scope of Waiver Covers the Entire Post-Notice Period The waiver should encompass all opinion letters and related communications from January 15, 2023 — the date on which Lumicore first received notice of potential infringement through FairPoint's first licensing letter — through the present. This temporal scope is appropriate and necessary for several reasons. First, OWS's willful infringement theory

IV. RESPONSE TO SPECIFIC ARGUMENTS IN LUMICORE'S OPPOSITION A. Lumicore's Characterization of the July 10, 2023 Letter as a "Routine Business Communication" Is Unsupported Lumicore argues that the July 10, 2023 letter was merely a "routine business communication" in which Lumicore declined a license without placing privileged information at issue. (Opp. at 10.) This characterization is contradicted by the letter itse

V. PROPOSED SCOPE OF PRODUCTION OWS respectfully requests that the Court order Lumicore to produce the following categories of documents:

1. Opinion Letters and Memoranda. All opinion-of-counsel letters, memoranda, or similar communications (whether from Hawthorne Vega & Cruz LLP, in-house counsel, or any other legal advisor retained by Lumicore) addressing the infringement, validity, enforceability, or design-around analysis of any of the four asserted patents — U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 — with respect to any o

2. Transmittal and Summary Documents. All documents reflecting, summarizing, or transmitting the substance of such opinions, including but not limited to cover letters, transmittal emails, and summaries prepared for Lumicore's management, executives, or board of directors.

3. Documents Reflecting Reliance. All documents reflecting Lumicore's receipt, review, consideration, or reliance upon such opinions, including but not limited to minutes of meetings, presentations, memoranda, emails, or other communications to or among Lumicore's CEO Thomas Kessler, CTO Dr. Sandra Michaud, General Counsel Raymond Bautista, Vice President of Product Development Dr. Eric Dalmqvist, or CFO Janet Moreno

4. Temporal Scope. The temporal scope of the production shall be from January 15, 2023 (the date of FairPoint's first notice and licensing letter) through the date of the Court's order.

5. Timing and Designation. Production shall be made within fourteen (14) calendar days of the Court's order, under the "Highly Confidential — Attorneys' Eyes Only" tier of the Stipulated Protective Order (D.E. 23).

VI. CONCLUSION For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that this Court grant its Motion to Compel and order Defendant Lumicore Technologies, Inc. to produce all opinion-of-counsel letters and related communications as described in Section V above within fourteen (14) calendar days of the Court's order. OWS further requests that the Court award OWS its reasonable attorne

1. On September 18, 2024, Wendy Schultz (Calderwood & Harkness LLP) and Samantha Briggs (Hawthorne Vega & Cruz LLP) held a telephonic meet-and-confer conference during which OWS raised the issue of the opinion letters and Lumicore asserted attorney-client privilege and work-product protection.

2. On October 2, 2024, Ms. Schultz and Ms. Briggs held a second telephonic meet-and-confer conference during which OWS explained its waiver arguments in detail and requested voluntary production. Lumicore declined to produce the opinion letters.

3. On October 14, 2024, Ms. Schultz sent a detailed meet-and-confer letter to Ms. Briggs setting forth OWS's legal position and offering to accept production under the "Highly Confidential — Attorneys' Eyes Only" tier of the Protective Order. Lumicore did not agree to produce the opinion letters.

4. On October 30, 2024, following the filing of OWS's Motion to Compel, the parties held a supplemental telephonic meet-and-confer conference at Lumicore's request. Lumicore again maintained its privilege objection and declined to produce the opinion letters.

5. On November 8, 2024, Ms. Schultz and Ms. Briggs held a final telephonic meet-and-confer conference. Lumicore maintained its position that no waiver has occurred and that the opinion letters are shielded by both attorney-client privilege and work-product protection. The parties were unable to resolve the dispute. /s/ Wendy Schultz Wendy Schultz OPTIWAVE SEMICONDUCTOR CORP., Plaintiff, v. | Case No. 2:24-cv-00319-JR