MEMORANDUM
PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT
TO: Alan Ngo, Responsible Partner, intellectual Property Group, San Francisco Office
FROM: Office of the General Counsel, Calderwood & Harkness LLP (Conflicts Department)
DATE: May 9, 2022
RE: Conflict Check Results — Proposed New Engagement: Optiwave Semiconductor Corp. v. Lumos Photonics, Inc. — Patent Infringement Litigation
PROPOSED MATTER NUMBER: 1014-00003
REQUESTING ATTORNEY: Alan Ngo
BILLING PARTNER: Marcus Delgado
PRIORITY: Expedited (engagement letter target execution date: May 12, 2022)
1. Purpose and Scope of Conflict Check
This memorandum documents the results of the comprehensive conflicts check conducted by the Office of the General Counsel of Calderwood & Harkness LLP ("C&H" or the "Firm") in connection with the proposed representation of Optiwave Semiconductor Corp. ("OWS" or the "Proposed Client") as plaintiff in a patent infringement action to be filed against Lumos Photonics, Inc. ("Lumos" or "LPI"), a Delaware corporation publicly traded on the Nasdaq Stock Market under the ticker symbol LMPH.
The conflicts check was initiated on May 6, 2022, upon receipt of the Conflict Check Request Form submitted by Alan Ngo, a partner in the Firm's intellectual Property Group in the San Francisco office. A copy of the submitted request form is attached hereto as Appendix A. The engagement team, as currently identified, consists of Alan Ngo (Responsible Partner), Marcus Delgado (Billing Partner), Omar Siddiqui (Senior Associate), and Christy Bauer (Associate).
In conducting this check, the Firm's conflict check system (IntegriCheck™) was queried against all parties, related entities, affiliates, parent companies, subsidiaries, significant shareholders, key individuals (including officers, directors, general counsel, and named inventors), opposing counsel, potential expert witnesses and consultants, third-party litigation funders, lending institutions, and other persons and entities identified by the requesting attorney as having a potential connection to the proposed engagement. A comprehensive list of all names, entities, and search variations queried is set forth in Appendix B attached hereto.
The analysis contained in this memorandum is governed by the applicable rules of professional conduct, including, without limitation:
• California Rules of Professional Conduct, Rule 1.7 (Conflict of Interest: Current Clients) — governing concurrent conflicts of interest arising from the representation of one client that is directly adverse to another client, or where there is a significant risk that the representation of one or more clients will be materially limited by the lawyer's responsibilities to another client, a former client, a third person, or by a personal interest of the lawyer.
• California Rules of Professional Conduct, Rule 1.9 (Duties to Former Clients) — governing the obligations owed by a lawyer to former clients, including the prohibition on representing a person in the same or a substantially related matter in which the person's interests are materially adverse to the interests of the former client, absent informed written consent.
• ABA Model Rules of Professional Conduct, Rules 1.7, 1.9, and 1.10 — as applied in jurisdictions where the litigation may be filed or where related proceedings may take place, including with respect to imputed disqualification of affiliated lawyers within a firm.
In addition, this analysis takes into account the Firm's internal Conflicts and Ethics Policy (revised January 2022), including its provisions regarding ethical screens, de minimis financial interest thresholds for publicly traded adverse parties, and precautionary notifications to relationship partners.
Summary Conclusion: Based on the analysis set forth in detail below, all potential conflicts have been identified, analyzed, and cleared. There is no impediment to the Firm's proposed engagement by Optiwave Semiconductor Corp. to prosecute patent infringement litigation against Lumos Photonics, Inc. One precautionary ethical screen has been implemented as described in Section 5 below.
2. Identification of Parties and Related Entities Searched
The following parties, entities, and individuals were identified by the requesting attorney and supplemented by the Conflicts Department through independent research, including review of publicly available corporate filings, SEC disclosures, USPTO assignment records, and the Firm's own internal databases. All entities and individuals listed below were searched against the Firm's IntegriCheck™ conflict database, which encompasses all current and former client engagements, matter records, attorney personal disclosure forms, lateral hire questionnaires, and financial interest declarations.
2.1 Proposed Client and Affiliates
Optiwave Semiconductor Corp. ("OWS")
• Entity type: Corporation
• Jurisdiction of incorporation: State of Delaware
• Headquarters: 2775 Augustine Drive, Suite 400, San Jose, CA 95054
• Employer Identification Number (EIN): 47-3918264
• Principal business: Design, development, and commercialization of silicon photonics semiconductor devices, including integrated optical transceivers for data center and telecommunications applications
• Status: Privately held
• Role in proposed matter: Plaintiff / Proposed Client
Vantage Point Capital Partners Fund IV, LP
• Entity type: Limited Partnership
• Jurisdiction of formation: State of Delaware
• Headquarters: 2600 Sand Hill Road, Suite 200, Menlo Park, CA 94025
• Relationship to OWS: Majority shareholder, holding an approximately 62% equity stake in OWS
• Principal business: Venture capital / growth equity fund focused on semiconductor, photonics, and advanced electronics sectors
• Role in proposed matter: Not a party; searched as significant affiliate of the Proposed Client
Vantage Point Capital GP IV, LLC
• Entity type: Limited Liability Company
• Jurisdiction of formation: State of Delaware
• Headquarters: 2600 Sand Hill Road, Suite 200, Menlo Park, CA 94025
• Relationship to OWS: General partner of Vantage Point Capital Partners Fund IV, LP, which in turn is the majority shareholder of OWS
• Role in proposed matter: Not a party; searched as related entity of the Proposed Client's majority shareholder
Key Individuals at OWS:
• Dr. Priya Ramanathan — Chief Executive Officer and Co-Founder
• Dr. Kevin Fong — Chief Technology Officer and Co-Founder; named inventor on several of the patents-in-suit
• Sandra Ellison — General Counsel
• Theodore "Ted" Marchetti — Vice President of intellectual Property; USPTO Registration No. 58,304
Key Individuals at Vantage Point Capital:
• Douglas Fairbanks III — Managing Partner, Vantage Point Capital GP IV, LLC
• Rebecca Torres — Operating Partner, Semiconductor Sector, Vantage Point Capital GP IV, LLC; member of OWS Board of Directors
2.2 Adverse Party and Affiliates
Lumos Photonics, Inc. ("Lumos" or "LPI")
• Entity type: Corporation
• Jurisdiction of incorporation: State of Delaware
• Headquarters: 9400 McNeil Drive, Building 7, Austin, TX 78758
• Public company: Nasdaq Stock Market, ticker symbol LMPH
• Employer Identification Number (EIN): 81-2743056
• Additional offices and facilities:
• Santa Clara office: 4750 Great America Parkway, Suite 320, Santa Clara, CA 95054
• Fabrication facility: 3200 NE Shute Road, Hillsboro, OR 97124
• Principal business: Design, manufacture, and sale of photonic integrated circuits (PICs) and optical networking components
• Role in proposed matter: Defendant / Adverse Party
Key Individuals at Lumos:
• James "Jim" Harrelson — Chief Executive Officer
• Dr. Mei-Lin Chen — Chief Technology Officer
• Richard Talbot — General Counsel
• Dr. Nikolai Petrov — Vice President of Engineering, Photonics Division
Ridgeline Asset Management, LLC
• Entity type: Limited Liability Company
• Jurisdiction of formation: State of Delaware
• Headquarters: 281 Tresser Boulevard, Suite 600, Stamford, CT 06901
• Relationship to Lumos: Largest institutional shareholder, holding an approximately 9.2% equity stake in Lumos (per Lumos's most recent Schedule 14A proxy statement and Ridgeline's Schedule 13G/A filed with the SEC on February 14, 2022)
• Principal business: Institutional asset management, with a focus on technology-sector equities
• Role in proposed matter: Not a party; searched as significant shareholder of the Adverse Party
Opposing Counsel: Brannick Howell & Stein LLP ("BHS")
• Entity type: Limited Liability Partnership
• Headquarters: 300 West 6th Street, Suite 1900, Austin, TX 78701
• San Francisco office: 555 California Street, Suite 2800, San Francisco, CA 94104
• Role in proposed matter: Outside counsel retained by Lumos Photonics to defend the proposed patent infringement action
• Lead partner: Victoria "Tori" Ashworth, Partner, Patent Litigation Group, Austin office
2.3 Other Related Entities Searched
The following additional entities and individuals were identified by the requesting attorney or through independent research by the Conflicts Department as having a potential connection to the proposed engagement, and were accordingly queried against the Firm's conflict database:
First Pacific Commerce Bank, N.A. ("FPCB")
• Entity type: National banking association
• Headquarters: 345 Montgomery Street, San Francisco, CA 94104
• Relationship to OWS: Primary lender to OWS; provider of a $40 million revolving credit facility secured by, among other collateral, a first-priority lien on OWS's intellectual property assets, including the patents-in-suit
• Role in proposed matter: Not a party; searched as entity with a financial interest in the outcome of the litigation by virtue of its lien on OWS's IP portfolio
Pinnacle Semiconductor Foundry Co., Ltd.
• Entity type: Corporation (Taiwan)
• Headquarters: Hsinchu Science Park, Hsinchu, Taiwan
• Relationship to OWS: Contract foundry partner fabricating OWS's silicon photonics integrated circuits using a 45nm silicon-on-insulator (SOI) process
• Role in proposed matter: Not a party; searched as a potentially relevant third party in the supply chain for accused products
Clearpath IP Valuation Services, Inc.
• Entity type: Corporation
• Headquarters: 100 Summer Street, Suite 1500, Boston, MA 02110
• Relationship to OWS: Patent portfolio valuation firm retained by OWS prior to the commencement of litigation to assess the value of OWS's patent portfolio, including the patents-in-suit
• Role in proposed matter: Not a party; potential testifying or consulting expert
Apex Claim Analytics LLC
• Entity type: Limited Liability Company
• Headquarters: 150 North Michigan Avenue, Suite 2400, Chicago, IL 60601
• Relationship to OWS: Potential damages expert firm under consideration by the OWS litigation team for engagement as a damages expert in the proposed litigation
• Role in proposed matter: Not a party; potential testifying or consulting expert
Whitfield Technical Consulting Group, Inc.
• Entity type: Corporation
• Headquarters: 530 Lytton Avenue, Suite 210, Palo Alto, CA 94301
• Relationship to OWS: Potential technical expert firm under consideration by the OWS litigation team for engagement as a technical expert in the proposed litigation (infringement and validity analyses)
• Role in proposed matter: Not a party; potential testifying or consulting expert
Resolute Litigation Finance, LP
• Entity type: Limited Partnership
• Headquarters: 399 Park Avenue, 18th Floor, New York, NY 10022
• Relationship to OWS: Third-party litigation funder that may be approached to provide litigation financing for the proposed action; no engagement has been entered into as of the date of this memorandum
• Role in proposed matter: Not a party; potential litigation funder
Compass Forensic Accounting LLP
• Entity type: Limited Liability Partnership
• Headquarters: 2711 North Haskell Avenue, Suite 1200, Dallas, TX 75204
• Relationship to Lumos: Potential defendant's expert firm; identified through review of Lumos's prior litigation filings as a firm Lumos has retained in previous intellectual property disputes
• Role in proposed matter: Not a party; potential adverse expert
Nordlicht Photonische GmbH
• Entity type: Gesellschaft mit beschränkter Haftung (Germany)
• Headquarters: Munich, Germany
• Relationship to proposed matter: Applicant on European Patent Application EP 3,234,567 A1, which has been identified as a potentially relevant prior art reference in connection with the validity of one or more of the patents-in-suit
• Role in proposed matter: Not a party; referenced entity in prior art
Named Inventors and Key Individuals:
• Hideo Tanaka — Former OWS engineer (employed 2016–2019); named inventor on U.S. Patent No. 10,237,567 (the "'567 Patent," one of the patents-in-suit) and also inventor of U.S. Patent No. 9,456,012 (a prior art reference); current affiliation unknown
• Dr. Amara Osei — Named inventor on one or more of the patents-in-suit; current OWS employee
• Liwei Zhang — Named inventor on one or more of the patents-in-suit; current OWS employee
• Rajesh Iyer — Named inventor on one or more of the patents-in-suit; current OWS employee
3. Conflict Check Results
The Firm's IntegriCheck™ conflict database was queried on May 6, 2022, and supplemental queries were run on May 7 and May 8, 2022, following the identification of additional related entities through independent research. The results of the comprehensive search are set forth below, organized by the entity or individual searched. Where a potential conflict was identified, a detailed analysis follows the search result.
3.1 Search Against Proposed Client — Optiwave Semiconductor Corp.
Search Result: No prior or current representation of OWS identified in the Firm's conflict database. No prior or current adverse representation against OWS identified in the Firm's conflict database. This would be a new client relationship for the Firm.
The database was queried under the following search terms and variations: "Optiwave," "Optiwave Semiconductor," "Optiwave Semiconductor Corp.," "Optiwave Semiconductor Corporation," "OWS," and EIN 47-3918264. All queries returned zero matches against current client records, former client records, matter descriptions, and adverse party fields.
In addition, the Firm's annual personal disclosure questionnaires for all attorneys in the intellectual Property Group and the San Francisco office were reviewed. No individual attorney at C&H has reported any personal, financial, familial, or social relationship with OWS or any of its officers, directors, or key personnel, including Dr. Priya Ramanathan, Dr. Kevin Fong, Sandra Ellison, and Theodore Marchetti.
Disposition: Cleared — no conflict.
3.2 Search Against Adverse Party — Lumos Photonics, Inc.
Search Result: No current client relationship with Lumos Photonics, Inc. identified in the Firm's conflict database.
Historical Check: A thorough search of the Firm's records, including all archived matter files dating back to the founding of the Firm's conflict database in 1998, reveals no prior representation of Lumos Photonics, Inc. in any capacity — whether in litigation, transactional, regulatory, advisory, or any other matter. The database was queried under the following search terms and variations: "Lumos," "Lumos Photonics," "Lumos Photonics Inc.," "LPI," "LMPH," and EIN 81-2743056. All queries returned zero matches against current client records and former client records.
A supplemental search was conducted against all known subsidiaries and affiliated entities of Lumos Photonics as disclosed in Lumos's most recent Annual Report on Form 10-K filed with the SEC. No representation of any Lumos subsidiary or affiliate was identified.
The Firm's annual personal disclosure questionnaires were reviewed for all attorneys in the intellectual Property Group, the San Francisco office, and the Austin and Dallas offices (given Lumos's Texas headquarters and the presence of potential Texas-based proceedings). No individual attorney at C&H has reported a personal, financial, familial, or social relationship with Lumos or any of its officers, directors, or key personnel, including James Harrelson, Dr. Mei-Lin Chen, Richard Talbot, or Dr. Nikolai Petrov.
The Firm further notes that Lumos Photonics is a publicly traded company listed on the Nasdaq Stock Market under the ticker symbol LMPH. Pursuant to the Firm's Conflicts and Ethics Policy, Section 4.3(b) (Financial Interests in Adverse Parties), attorneys may hold incidental positions in publicly traded adverse parties only where such holdings fall below the Firm's de minimis threshold (currently defined as holdings with a market value not exceeding $10,000 or constituting less than 0.01% of the outstanding shares of the company, whichever is less). A targeted inquiry was directed to all members of the proposed engagement team — Alan Ngo, Marcus Delgado, Omar Siddiqui, and Christy Bauer — and each has confirmed in writing that he or she does not hold any shares, options, warrants, or other securities of Lumos Photonics (LMPH), either directly or through any managed brokerage account, retirement account, or immediate family member's account.
Disposition: Cleared — no conflict.
3.3 Search Against Vantage Point Capital Partners Fund IV, LP / Vantage Point Capital GP IV, LLC
Search Result: Potential conflict identified and analyzed.
The Firm's conflict database returned a match for Vantage Point Capital GP IV, LLC. Specifically, the Firm's New York corporate and M&A group, under the direction of partner Helen Zhao, represented Vantage Point Capital GP IV, LLC in 2019 in connection with the negotiation and execution of an amendment to the limited partnership agreement of Vantage Point Capital Partners Fund III, LP (a predecessor fund vehicle unrelated to Fund IV). That engagement was opened under matter number NY-CORP-2019-1247, was concluded and formally closed on December 15, 2019, and involved only transactional fund documentation work. The Firm billed approximately $87,000 in fees for that engagement.
It is important to note that the prior representation involved Vantage Point Capital GP IV, LLC in its capacity as general partner of Fund III — not Fund IV — and the work concerned amendments to the Fund III limited partnership agreement related to management fee provisions and extension of the fund's investment period. The current proposed engagement involves the representation of Optiwave Semiconductor Corp., a portfolio company of Fund IV, in a patent infringement action. Fund III and Fund IV are separate legal entities with distinct limited partner investor bases, although they share a common general partner entity (Vantage Point Capital GP IV, LLC).
Analysis under Rule 1.7 (Current Client): The representation of Vantage Point Capital GP IV, LLC was concluded and the matter was closed in 2019. There is no ongoing engagement, no open matter, and no continuing obligations to the GP entity that would give rise to a current-client conflict under California Rule of Professional Conduct 1.7. Accordingly, Rule 1.7 is not implicated.
Analysis under Rule 1.9 (Former Client): Under California Rule of Professional Conduct 1.9(a), a lawyer who has formerly represented a client in a matter shall not thereafter represent another person in the same or a substantially related matter in which that person's interests are materially adverse to the interests of the former client unless the former client gives informed written consent. The key inquiry is whether the proposed patent infringement litigation on behalf of OWS against Lumos Photonics is the "same or substantially related matter" as the prior transactional representation of the GP entity in connection with the Fund III limited partnership agreement amendment.
The answer is clearly no. The prior representation involved transactional fund documentation work — specifically, the amendment of management fee and investment period provisions in a limited partnership agreement for a venture capital fund (Fund III) that is entirely distinct from the fund (Fund IV) that holds the equity interest in OWS. The proposed engagement involves the prosecution of a patent infringement action in the semiconductor and silicon photonics technology space. There is no factual overlap, no common legal issues, and no common subject matter between the two engagements. No confidential information obtained during the course of the prior representation of the GP entity in connection with the Fund III limited partnership agreement amendment could reasonably be relevant to the prosecution of patent infringement claims against Lumos Photonics on behalf of OWS.
Moreover, the proposed representation of OWS is not adverse to Vantage Point Capital GP IV, LLC. To the contrary, Vantage Point — through Fund IV — is the majority shareholder of OWS and has a direct interest in the successful prosecution of the patent infringement claims. The proposed representation is aligned with, not adverse to, the interests of the former client.
Disposition: Cleared — no conflict; no consent required.
3.4 Search Against Ridgeline Asset Management, LLC
Search Result: Potential conflict identified and analyzed.
The Firm's conflict database returned a match for Ridgeline Asset Management, LLC. Ridgeline Asset Management is the largest institutional shareholder of Lumos Photonics, Inc., holding an approximately 9.2% equity stake in Lumos as reported in Ridgeline's most recent Schedule 13G/A amendment filed with the SEC on February 14, 2022.
The Firm's San Francisco office currently advises Ridgeline Asset Management on two active regulatory compliance matters related to SEC reporting obligations. These engagements are handled by a separate client team under the direction of Catherine Park, a partner in the Firm's Securities Regulation and Compliance Group. The matters are identified in the Firm's system under matter numbers SF-SEC-2021-0834 and SF-SEC-2022-0112. The first matter involves ongoing advice regarding Ridgeline's obligations under Sections 13(d) and 13(g) of the Securities Exchange Act of 1934 in connection with Ridgeline's various portfolio holdings. The second matter involves advice on amendments to Ridgeline's Form ADV filings with the SEC. Both matters are ongoing, and Ridgeline is a current client of the Firm.
Analysis under Rule 1.7 (Current Client — Direct Adversity): California Rule of Professional Conduct 1.7(a) provides that a lawyer shall not, without informed written consent from each affected client, represent a client if the representation is directly adverse to another client. The threshold question is whether the proposed representation of OWS in patent infringement litigation against Lumos Photonics is "directly adverse" to Ridgeline Asset Management.
The proposed representation involves the assertion of patent infringement claims by OWS against Lumos Photonics. Ridgeline is not a party to the proposed litigation, is not named as a defendant, and is not alleged to have participated in, contributed to, directed, or otherwise been involved in any infringing conduct by Lumos. Ridgeline is a passive institutional investor that holds a minority stake in Lumos — specifically, an approximately 9.2% equity position. Ridgeline does not, based on available information, hold a seat on Lumos's board of directors, and there is no indication that Ridgeline exercises control over Lumos's business operations, litigation strategy, or intellectual property practices.
Under well-established authority, a suit against a corporation is not the same as a suit against its shareholders, and the representation of a plaintiff against a corporation does not constitute direct adversity to a minority institutional investor in the defendant corporation. See, e.g., ABA Formal Op. 95-390 (1995) (a lawyer's representation of a client against a corporation does not constitute representation adverse to a shareholder of the corporation for purposes of the conflict-of-interest rules, absent special circumstances); GSI Commerce Solutions, Inc. v. BabyCenter, LLC, 618 F.3d 204, 211 (2d Cir. 2010) (recognizing the general principle that corporate shareholders are distinct from the corporation itself for conflict-of-interest purposes). Accordingly, the proposed representation of OWS does not involve direct adversity to Ridgeline.
Analysis under Rule 1.7 (Current Client — Material Limitation): Even where direct adversity is not present, California Rule of Professional Conduct 1.7(b) provides that a lawyer shall not represent a client if there is a significant risk that the lawyer's representation of the client will be materially limited by the lawyer's responsibilities to another client, a former client, or a third person, or by a personal interest of the lawyer. The question is whether the Firm's concurrent representation of Ridgeline on SEC regulatory compliance matters creates a significant risk that the Firm's representation of OWS in the patent litigation against Lumos would be materially limited.
The Firm has carefully considered whether its obligations to Ridgeline as a current client could constrain, compromise, or otherwise impair the Firm's ability to vigorously prosecute patent infringement claims against Lumos on behalf of OWS. After thorough analysis, the Firm concludes that no such material limitation exists, for the following reasons:
(a) Unrelated subject matter. The Firm's engagement for Ridgeline involves SEC regulatory compliance matters (Schedule 13D/13G reporting and Form ADV amendments) that are entirely unrelated to the subject matter of the proposed patent infringement litigation. There is no overlap in legal issues, factual predicates, or the technical subject matter at issue.
(b) No conflicting obligations. The Firm's representation of Ridgeline does not require the Firm to advance any position or take any action that would be inconsistent with the vigorous prosecution of OWS's patent infringement claims against Lumos. The regulatory compliance advice provided to Ridgeline does not touch upon Lumos's patent practices, OWS's intellectual property portfolio, or the silicon photonics technology at issue in the proposed litigation.
(c) No aligned interests. Ridgeline's interest as a minority institutional shareholder in Lumos is an economic interest in the overall financial performance of Lumos stock. While a significant adverse judgment against Lumos in the patent infringement litigation could, in theory, have a negative impact on the market price of Lumos shares and thus on the value of Ridgeline's investment, this economic exposure does not create an identity or alignment of legal interests between Ridgeline and Lumos in the patent dispute. Ridgeline is not a guarantor of Lumos's liabilities, does not indemnify Lumos against patent infringement claims, and has no legal obligation to fund Lumos's defense. Ridgeline's investment interest is diversified across a broad portfolio of technology-sector equities, and its stake in Lumos represents only a fraction of its total assets under management.
(d) No information barrier concern. The Firm's regulatory compliance work for Ridgeline does not involve access to Ridgeline's investment theses, trading strategies, or internal assessments regarding any particular portfolio company, including Lumos. Even if such information were incidentally available, it would not be relevant to the prosecution of patent infringement claims and would not confer any advantage or create any disadvantage in the patent litigation.
Based on the foregoing analysis, the Firm concludes that the proposed representation of OWS in patent litigation against Lumos does not create a material limitation on the Firm's ability to represent either OWS or Ridgeline.
Recommended Precautionary Measure: Notwithstanding the conclusion that no conflict of interest exists under Rules 1.7 or 1.9, and consistent with the Firm's best practices for the management of concurrent representations involving related parties, the Conflicts Department recommends the implementation of an ethical wall (information screen) between the OWS/Lumos litigation team and the Ridgeline regulatory compliance team. The details of this ethical screen are set forth in Section 5 below. In addition, the Ridgeline relationship partner, Catherine Park, has been notified of the proposed engagement and has confirmed that she concurs with the analysis set forth herein and does not object to the implementation of the ethical screen.
Disposition: Cleared — no conflict requiring consent, but ethical screen implemented as a precautionary measure. See Section 5 below.
3.5 Search Against First Pacific Commerce Bank, N.A.
Search Result: Potential conflict identified and analyzed.
The Firm's conflict database returned a match for First Pacific Commerce Bank, N.A. ("FPCB"). FPCB is OWS's primary lender and has extended a $40 million revolving credit facility to OWS, secured by a first-priority lien on OWS's intellectual property assets, including the patents-in-suit, as well as OWS's accounts receivable and general intangibles.
The Firm represented FPCB as borrower's counsel in two prior syndicated loan transactions: (i) a $150 million syndicated term loan facility for FPCB in 2017 (matter number NY-FIN-2017-0632, closed March 2018), and (ii) a $200 million syndicated revolving credit facility for FPCB in 2020 (matter number NY-FIN-2020-0291, closed September 2020). Both engagements were handled by the Firm's New York Financial Institutions Group, under the direction of partner James Whitfield. Both matters have been concluded and formally closed. There are no ongoing engagements with FPCB.
FPCB is not a party to the proposed litigation and will not be named as a plaintiff, defendant, or third party in the action. FPCB's interests, as OWS's secured lender, are aligned with, rather than adverse to, OWS's interests in the proposed litigation. The successful enforcement of OWS's patent portfolio against Lumos would preserve and potentially enhance the value of the collateral securing FPCB's credit facility. There is no adversity to FPCB in the proposed representation.
Analysis under Rule 1.9 (Former Client): The prior representations of FPCB in syndicated loan transactions involved the negotiation and documentation of bank credit facilities — matters that are entirely distinct from, and bear no factual or legal resemblance to, patent infringement litigation in the semiconductor and silicon photonics technology space. The matters are not the "same or substantially related" within the meaning of Rule 1.9. No confidential information obtained during the course of the Firm's prior representation of FPCB in the syndicated loan transactions could reasonably be relevant to the proposed patent litigation against Lumos. There is no overlap in subject matter, legal theories, factual predicates, or witnesses.
Furthermore, as noted above, the proposed representation of OWS is not adverse to FPCB. The patent litigation, if successful, would inure to FPCB's benefit by strengthening the value of its collateral.
Disposition: Cleared — no conflict.
3.6 Search Against Brannick Howell & Stein LLP (Opposing Counsel)
Search Result: No current client relationship with Brannick Howell & Stein LLP ("BHS") identified in the Firm's conflict database. BHS has not engaged C&H to provide legal services in any capacity, and C&H has not engaged BHS as outside counsel or co-counsel on any matter.
The Firm further reviewed its lateral hire records for the preceding 24 months to determine whether any attorney who laterally joined C&H from BHS during that period may have worked on matters adverse to OWS or related to silicon photonics patent litigation. No lateral hires from BHS were identified within the past 24 months.
Additionally, the Conflicts Department confirmed that Victoria "Tori" Ashworth, the identified lead partner for Lumos at BHS, is known to attorneys in the Firm's intellectual Property Group as a regular opposing counsel in patent litigation matters. No personal conflicts, disqualifying relationships, or prior attorney-client relationships with Ms. Ashworth have been identified. Alan Ngo has confirmed that he has appeared opposite Ms. Ashworth in prior proceedings and that no personal animosity, financial entanglement, or other disqualifying circumstance exists.
Disposition: Cleared — no conflict.
3.7 Search Against Other Related Entities
The following entities and individuals were searched against the Firm's conflict database, and in each case, no prior or current relationship was identified:
Pinnacle Semiconductor Foundry Co., Ltd.: No prior or current client relationship identified. No prior or current adverse representation. No individual attorney at C&H has reported any personal or financial relationship with Pinnacle or its principals. Cleared.
Clearpath IP Valuation Services, Inc.: No prior or current client relationship identified. No prior or current adverse representation. No individual attorney at C&H has reported any personal or financial relationship with Clearpath or its principals. Cleared.
Apex Claim Analytics LLC: No prior or current client relationship identified. No prior or current adverse representation. No individual attorney at C&H has reported any personal or financial relationship with Apex or its principals. Cleared.
Whitfield Technical Consulting Group, Inc.: No prior or current client relationship identified. No prior or current adverse representation. No individual attorney at C&H has reported any personal or financial relationship with Whitfield Technical or its principals. The Conflicts Department notes that the name "Whitfield" also matches the surname of James Whitfield, a partner in the Firm's New York Financial Institutions Group; however, the Conflicts Department has confirmed that James Whitfield has no ownership interest, employment relationship, or other affiliation with Whitfield Technical Consulting Group, Inc., and the name match is coincidental. Cleared.
Resolute Litigation Finance, LP: No prior or current client relationship identified. No prior or current adverse representation. No individual attorney at C&H has reported any personal or financial relationship with Resolute or its principals. The Conflicts Department notes that if OWS elects to engage Resolute as a litigation funder, a supplemental conflict check should be conducted at that time to confirm that no new conflicts have arisen. Cleared.
Compass Forensic Accounting LLP: No prior or current client relationship identified. No prior or current adverse representation. No individual attorney at C&H has reported any personal or financial relationship with Compass or its principals. Cleared.
Nordlicht Photonische GmbH: No prior or current client relationship identified. No prior or current adverse representation. No individual attorney at C&H has reported any personal or financial relationship with Nordlicht or its principals. Cleared.
Hideo Tanaka (former OWS engineer, named inventor): No prior or current individual representation by C&H identified. No adverse representation against Mr. Tanaka identified. No individual attorney at C&H has reported any personal or financial relationship with Mr. Tanaka. The Conflicts Department notes that Mr. Tanaka is a former OWS engineer (2016–2019) who is a named inventor on the '567 Patent (one of the patents-in-suit) and is also listed as an inventor on U.S. Patent No. 9,456,012, which has been identified as a potentially relevant prior art reference. Mr. Tanaka's current affiliation is unknown. Should Mr. Tanaka be identified as a potential witness or should any adversity to Mr. Tanaka arise during the course of the litigation, a supplemental conflict check should be conducted at that time. Cleared.
4. Summary of Findings
The following table summarizes the results of the conflicts check for all entities and individuals searched:
Three areas required detailed analysis:
1. Vantage Point Capital GP IV, LLC — The Firm's New York corporate/M&A group previously represented this entity in connection with a limited partnership agreement amendment for an unrelated fund vehicle (Vantage Point Capital Partners Fund III, LP) in 2019. That engagement was concluded and closed. The proposed patent infringement litigation on behalf of OWS (a portfolio company of Fund IV) is not the same or substantially related matter as the prior transactional work on Fund III documentation. No confidential information from the prior representation is relevant. Cleared — no consent required.
2. Ridgeline Asset Management, LLC — Ridgeline is a current client of the Firm (SEC regulatory compliance matters) and is also the largest institutional shareholder of Lumos Photonics, the adverse party. After thorough analysis, the Firm concluded that the proposed representation does not involve direct adversity to Ridgeline and does not create a material limitation on the Firm's ability to represent either OWS or Ridgeline. As a precautionary measure, an ethical screen has been implemented between the OWS litigation team and the Ridgeline regulatory compliance team. Cleared — ethical screen implemented.
3. First Pacific Commerce Bank, N.A. — The Firm previously represented FPCB as borrower's counsel in two unrelated syndicated loan transactions (2017 and 2020, both closed). FPCB is OWS's primary lender and has a lien on OWS's IP assets. The proposed patent litigation is not the same or substantially related matter as the prior loan documentation work. FPCB's interests are aligned with OWS's in the proposed litigation, and no adversity exists. Cleared under Rule 1.9 — no substantial relationship.
5. Ethical Screen Implementation (Ridgeline Precaution)
Notwithstanding the determination that no conflict of interest exists with respect to the Firm's concurrent representation of Ridgeline Asset Management, LLC on SEC regulatory compliance matters and the proposed representation of Optiwave Semiconductor Corp. in patent infringement litigation against Lumos Photonics, Inc., the Conflicts Department has determined that it is appropriate, as a precautionary measure and consistent with the Firm's best practices, to implement a formal ethical wall (information screen) between the two engagement teams.
The ethical screen shall be governed by the following terms: