Contract analysis

I. DECLARANT IDENTIFICATION AND QUALIFICATIONS

1. I am a Lead Associate at the law firm of Calderwood & Harkness LLP, with offices located at 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071. I am a member in good standing of the State Bar of California. On April 18, 2024, I filed an application for admission pro hac vice to practice before the United States District Court for the Eastern District of Texas in connection with the above-captioned a

2. I serve as Lead Associate for Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") in this patent infringement action against Lumicore Technologies, Inc. ("Lumicore" or "Defendant"). In this capacity, I have been personally and substantively involved in all aspects of the discovery process in this matter, including the drafting and service of discovery requests, the review of discovery responses and objec

3. I have personal knowledge of the facts set forth in this declaration, and if called as a witness, I could and would competently testify thereto. I make this declaration under penalty of perjury pursuant to 28 U.S.C. § 1746.

II. PURPOSE OF THE DECLARATION

4. I submit this declaration in support of Plaintiff OWS's Motion to Compel Production of Opinion-of-Counsel Letters (the "Motion to Compel") and the accompanying Memorandum of Law in Support thereof, both filed concurrently herewith on October 21, 2024.

5. The purpose of this declaration is threefold. First, this declaration serves to authenticate the exhibit documents attached to OWS's Motion to Compel and Memorandum in Support, each of which is identified and described in Section VII below. Second, this declaration describes in detail the meet-and-confer efforts undertaken by OWS prior to filing the instant Motion to Compel, in compliance with this Court's Local R

III. BACKGROUND: THE PRE-SUIT LICENSING CORRESPONDENCE AND LUMICORE'S REFERENCE TO OPINION LETTERS A. FairPoint Licensing Group's First Licensing Letter (January 15, 2023)

6. On January 15, 2023, FairPoint Licensing Group, LLC ("FairPoint"), OWS's duly authorized licensing agent, sent a notice and licensing letter to Raymond Bautista, General Counsel of Lumicore Technologies, Inc., at Lumicore's corporate headquarters located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. The letter was sent by both certified U.S. mail and electronic mail to Mr. Bautista's attention.

7. The January 15, 2023 letter identified three United States patents owned by OWS: U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), and U.S. Patent No. 9,678,562 (the "'562 Patent") (collectively, the "Initially Identified Patents"). The letter provided Lumicore with specific claim charts mapping representative claims from each of the three identified patents to Lumicor

8. A true and correct copy of the January 15, 2023 letter from Angela Reeves of FairPoint to Raymond Bautista of Lumicore is attached as Exhibit 1 to the Motion to Compel. B. Lumicore's Response (February 28, 2023)

9. On February 28, 2023, counsel for Lumicore—Catherine "Kate" Rourke of the law firm Hawthorne Vega & Cruz LLP, 600 Congress Avenue, Suite 2400, Austin, Texas 78701—responded in writing on Lumicore's behalf to FairPoint's January 15, 2023 licensing letter. In her response, Ms. Rourke disputed that Lumicore's LumiLink 400G-ZR+ product infringed any valid claim of the Initially Identified Patents. Ms. Rourke further q

10. A true and correct copy of the February 28, 2023 response letter from Kate Rourke of Hawthorne Vega & Cruz LLP on behalf of Lumicore is attached as Exhibit 2 to the Motion to Compel. C. In-Person Licensing Meeting (April 20, 2023)

11. On April 20, 2023, an in-person licensing meeting was held in Austin, Texas. The meeting was attended by Angela Reeves, Managing Director of FairPoint Licensing Group, LLC, and Rebecca Tanaka, General Counsel of OWS, on behalf of OWS, and by Raymond Bautista, General Counsel of Lumicore, and Kate Rourke of Hawthorne Vega & Cruz LLP, on behalf of Lumicore. During the meeting, the parties discussed the scope and ap

12. On May 15, 2023, FairPoint sent a second notice and licensing letter to Raymond Bautista at Lumicore. This second letter expanded both the scope of the asserted patent portfolio and the universe of accused products. Specifically, the May 15, 2023 letter added U.S. Patent No. 11,402,015 (the "'015 Patent," which had issued on August 2, 2022) to the previously identified patents, bringing the total number of assert

13. A true and correct copy of the May 15, 2023 second licensing letter from Angela Reeves of FairPoint to Raymond Bautista of Lumicore is attached as Exhibit 3 to the Motion to Compel. E. Lumicore's Declination Letter (July 10, 2023)

14. On July 10, 2023, Lumicore, through its counsel Kate Rourke of Hawthorne Vega & Cruz LLP, sent a letter to FairPoint declining to take a license under OWS's patent portfolio. In the declination letter, Lumicore reaffirmed its position that its products did not infringe any valid claim of any of the four asserted patents and that it saw no basis for a licensing arrangement with OWS.

15. Critically, in the same July 10, 2023 declination letter, Lumicore affirmatively stated that it had obtained "competent legal opinions" concluding that its products do not infringe OWS's patents. The specific language referencing "competent legal opinions" appears at page 2, paragraph 3 of that letter. Lumicore did not, however, produce or attach copies of these opinion-of-counsel letters. Nor did Lumicore identi

16. A true and correct copy of the July 10, 2023 declination letter from Kate Rourke of Hawthorne Vega & Cruz LLP on behalf of Lumicore is attached as Exhibit 4 to the Motion to Compel.

IV. DISCOVERY REQUESTS SEEKING THE OPINION-OF-COUNSEL LETTERS A. OWS's First Set of Requests for Production (August 26, 2024)

17. On August 26, 2024, OWS served its First Set of Requests for Production of Documents and Things to Lumicore, consisting of eighty-five (85) individually numbered requests for production. The requests were served in accordance with Federal Rules of Civil Procedure 26 and 34, and in accordance with the parties' ESI Protocol Agreement dated August 15, 2024 and the Court's Scheduling Order (Docket Entry 22).

18. Request for Production No. 47 of OWS's First Set sought the following: "All opinion-of-counsel letters, memoranda, or analyses obtained by Lumicore relating to the infringement, validity, or enforceability of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015, including but not limited to any opinions referenced in Lumicore's July 10, 2023 correspondence to FairPoint Licensing Group, LLC."

19. Request for Production No. 48 of OWS's First Set sought the following: "All communications between Lumicore and any attorney or law firm concerning the risk of infringement of the Asserted Patents, including communications concerning the design, development, and launch of the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR products."

20. A true and correct copy of OWS's First Set of Requests for Production, with RFP Nos. 47 and 48 specifically highlighted, is attached as Exhibit 6 to the Motion to Compel. B. OWS's First Set of Interrogatories (August 26, 2024)

21. On the same date, August 26, 2024, OWS also served its First Set of Interrogatories to Lumicore, consisting of twenty-five (25) individually numbered interrogatories served pursuant to Federal Rule of Civil Procedure 33.

22. Interrogatory No. 14 of OWS's First Set asked Lumicore to: Identify all opinion-of-counsel letters or analyses obtained by Lumicore relating to the Asserted Patents, including the identity of the attorney or law firm that rendered each opinion, the date on which each opinion was rendered, and the specific patents and products addressed therein.

23. A true and correct copy of the relevant excerpts from OWS's First Set of Interrogatories, with Interrogatory No. 14 specifically highlighted, is attached as Exhibit 8 to the Motion to Compel. C. Lumicore's Responses and Objections

24. Lumicore served its responses and objections to OWS's First Set of Requests for Production on or about September 30, 2024. In its response to RFP No. 47, Lumicore asserted objections on the grounds of attorney-client privilege and work-product protection under Federal Rule of Civil Procedure 26(b)(3). Lumicore declined to produce any opinion-of-counsel letters, memoranda, or analyses responsive to this request. I

25. A true and correct copy of the relevant excerpts from Lumicore's Responses and Objections to OWS's First Set of Requests for Production, specifically including Lumicore's responses to RFP Nos. 47 and 48, is attached as Exhibit 7 to the Motion to Compel.

26. Lumicore served its responses and objections to OWS's First Set of Interrogatories on or about September 30, 2024. In its response to Interrogatory No. 14, Lumicore similarly objected on grounds of attorney-client privilege and work-product protection, declining to identify any opinion-of-counsel letters, the authors thereof, the dates on which they were rendered, or the subject matter addressed therein.

27. A true and correct copy of the relevant excerpts from Lumicore's Responses and Objections to OWS's First Set of Interrogatories, specifically including Lumicore's response to Interrogatory No. 14, is attached as Exhibit 9 to the Motion to Compel.

28. As of the date of this declaration and the filing of the Motion to Compel, Lumicore has not yet served its initial privilege log. During our meet-and-confer discussions, as described in greater detail in Section V below, Lumicore's counsel Samantha Briggs represented that documents in the categories corresponding to the opinion-of-counsel letters and related communications would be identified and logged when Lumi

29. In accordance with this Court's Local Rules, including Local Rule CV-7(h), and the parties' ESI Protocol Agreement dated August 15, 2024, OWS undertook extensive and good-faith meet-and-confer efforts to resolve the opinion-of-counsel letter dispute with Lumicore prior to filing the instant Motion to Compel. These efforts included three separate telephonic meet-and-confer conferences and a written letter memorial

30. On September 18, 2024, I participated in a telephonic meet-and-confer conference with Samantha Briggs, Lead Associate at Hawthorne Vega & Cruz LLP, counsel for Lumicore. The conference addressed multiple outstanding discovery issues between the parties, including, among others, the scope of Lumicore's document searches, the identification of Lumicore's custodians for ESI collection purposes, and the opinion-of-co

31. During this call, I raised OWS's position that Lumicore had placed the substance of its opinion-of-counsel letters at issue, and had thereby waived the attorney-client privilege with respect to those documents, in two distinct ways. First, I explained that Lumicore had affirmatively referenced "competent legal opinions" in its July 10, 2023 declination letter to FairPoint, thereby injecting the existence and conc

32. Ms. Briggs responded that Lumicore had not waived the attorney-client privilege with respect to any opinion-of-counsel letters. Ms. Briggs characterized the July 10, 2023 declination letter as a "business communication" that merely acknowledged, in general terms, that Lumicore had consulted with legal counsel regarding OWS's patent assertions. Ms. Briggs took the position that the declination letter did not discl

33. On October 2, 2024, I participated in a second telephonic meet-and-confer conference with Ms. Briggs, again addressing the opinion-of-counsel letter dispute among other discovery issues.

34. During this conference, I reiterated OWS's position regarding waiver and further elaborated on the relevance of the opinion-of-counsel letters to OWS's willful infringement claim. I referenced the upcoming deposition of Raymond Bautista, Lumicore's General Counsel, which at that time had not yet been taken but was scheduled for December 3, 2024. I noted that OWS intended to explore at Mr. Bautista's deposition Lu

35. I further stated that if Lumicore intended to assert—at any stage of this litigation, including at trial—that it relied in good faith on legal opinions in continuing to sell the accused LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR products after receiving notice of OWS's patents, then the substance of those opinions was necessarily at issue. The opinions were directly relevant to whether Lumicore's

36. Ms. Briggs maintained Lumicore's privilege position and stated that Lumicore had not yet made a final determination as to whether it would assert an advice-of-counsel defense at trial. Ms. Briggs characterized the question as premature, given the early stage of discovery. I responded by noting that the question was not premature, as the discovery requests at issue had already been served and the discovery period

37. On October 10, 2024, I participated in a third telephonic meet-and-confer conference with Ms. Briggs. This conference was dedicated primarily to the opinion-of-counsel letter dispute.

38. During this conference, I again pressed for either production of the opinion-of-counsel letters or a commitment from Lumicore to waive any advice-of-counsel defense. Ms. Briggs stated unequivocally that Lumicore would maintain its privilege objections and would not produce the opinion-of-counsel letters. Ms. Briggs also elaborated on Lumicore's position that the July 10, 2023 declination letter's reference to "co

39. I informed Ms. Briggs that I disagreed with Lumicore's legal position and that, in the absence of resolution, OWS would seek Court intervention by filing a motion to compel production of the opinion-of-counsel letters. I stated that OWS would file its motion no later than October 21, 2024. Ms. Briggs acknowledged OWS's stated intention and reiterated that Lumicore would oppose any such motion. No resolution was r

40. On October 14, 2024, I sent a written letter via electronic mail to Samantha Briggs at Hawthorne Vega & Cruz LLP. The letter memorialized in detail the substance of the three telephonic meet-and-confer conferences held on September 18, October 2, and October 10, 2024. The letter set forth the parties' respective positions on the opinion-of-counsel letter dispute and confirmed the failure to reach resolution. The

41. The October 14, 2024 written meet-and-confer correspondence was sent in satisfaction of the meet-and-confer requirements set forth in Local Rule CV-7(h) of this Court's Local Rules, as well as the requirements of the parties' ESI Protocol Agreement dated August 15, 2024, which requires the parties to engage in good-faith meet-and-confer efforts, including a written memorialization of positions, before filing any

42. A true and correct copy of the October 14, 2024 meet-and-confer correspondence from Wendy Schultz to Samantha Briggs is attached as Exhibit 5 to the Motion to Compel.

VI. DEPOSITION TESTIMONY OF RAYMOND BAUTISTA (ANTICIPATED REFERENCE)

43. The deposition of Raymond Bautista, General Counsel of Lumicore, was not taken until December 3, 2024—a date subsequent to the filing of this declaration and the instant Motion to Compel on October 21, 2024. Accordingly, the Memorandum of Law in Support of the Motion to Compel, filed concurrently herewith, references the anticipated Bautista deposition and reserves Plaintiff's right to supplement the record with

44. However, based on Lumicore's Answer and Counterclaims filed on June 17, 2024 (Docket Entry 12), Lumicore has raised defenses of non-infringement and invalidity under 35 U.S.C. §§ 102 and 103. Lumicore has also denied OWS's allegations of willful infringement as set forth in Count VII of the Complaint. The declination letter's affirmative reference to "competent legal opinions" is directly relevant to whether Lumi

45. I am informed and believe, and based thereon state, that the Memorandum in Support of the Motion to Compel was subsequently supplemented, with leave of Court, to include excerpts from the December 3, 2024 deposition of Raymond Bautista. During that deposition, Mr. Bautista confirmed receipt of the FairPoint January 15, 2023 licensing letter. Mr. Bautista further testified that he forwarded the January 15, 2023 le

VII. AUTHENTICATION OF EXHIBITS

46. In my capacity as Lead Associate for Plaintiff OWS in this matter, I am familiar with the documents identified and described below. I have reviewed each of these documents and can authenticate them for purposes of the Motion to Compel. Each of the following documents is a true and correct copy of what it purports to be, and each is attached to OWS's Motion to Compel and Memorandum in Support:

47. Exhibit 1: A true and correct copy of the letter dated January 15, 2023, from Angela Reeves of FairPoint Licensing Group, LLC, to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. This letter identified U.S. Patent Nos. 10,234,847; 10,891,193; and 9,678,562, and the LumiLink 400G-ZR+ product as an accused infringing product.

48. Exhibit 2: A true and correct copy of the response letter dated February 28, 2023, from Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP, on behalf of Lumicore Technologies, Inc. This letter disputed infringement and questioned the validity of the identified patents.

49. Exhibit 3: A true and correct copy of the second licensing letter dated May 15, 2023, from Angela Reeves of FairPoint Licensing Group, LLC, to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. This letter added U.S. Patent No. 11,402,015 and the LumiLink 800G-DR8 product to the scope of the licensing discussion.

50. Exhibit 4: A true and correct copy of Lumicore's declination letter dated July 10, 2023, from Kate Rourke of Hawthorne Vega & Cruz LLP on behalf of Lumicore Technologies, Inc., declining to take a license. This is the letter in which Lumicore stated that it had obtained "competent legal opinions" concluding that its products do not infringe OWS's patents. The specific language referencing "competent legal opinion

51. Exhibit 5: A true and correct copy of the written meet-and-confer correspondence dated October 14, 2024, from Wendy Schultz of Calderwood & Harkness LLP to Samantha Briggs of Hawthorne Vega & Cruz LLP, memorializing the three telephonic meet-and-confer conferences held on September 18, October 2, and October 10, 2024, the parties' respective positions, and the failure to reach resolution.

52. Exhibit 6: A true and correct copy of OWS's First Set of Requests for Production of Documents and Things to Lumicore Technologies, Inc., served August 26, 2024. Request for Production Nos. 47 and 48 are specifically highlighted.

53. Exhibit 7: True and correct copies of relevant excerpts from Lumicore's Responses and Objections to OWS's First Set of Requests for Production, served on or about September 30, 2024, specifically including Lumicore's responses to RFP Nos. 47 and 48.