EXPERT RETENTION AGREEMENT
Dated as of August 15, 2022
This Expert Retention Agreement (this "Agreement") is entered into as of August 15, 2022 (the "Effective Date"), by and among:
CALDERWOOD & HARKNESS LLP, a limited liability partnership organized under the laws of the State of California, with offices at One Embarcadero Center, 34th Floor, San Francisco, California 94111 ("Retaining Counsel" or the "Firm"), acting on behalf of its client Optiwave Semiconductor Corp., a Delaware corporation with its principal place of business at 2775 Augustine Drive, Suite 400, San Jose, California 95054 (the "Client" or "OWS");
WHITFIELD TECHNICAL CONSULTING GROUP, INC., a California corporation with its principal place of business at 530 Lytton Avenue, Suite 210, Palo Alto, California 94301 (the "Consultant"); and
DR. HAROLD WHITFIELD, an individual residing in the State of California, as the designated expert providing services under this Agreement (the "Expert").
Retaining Counsel, Consultant, and Expert are each referred to herein individually as a "Party" and collectively as the "Parties."
RECITALS
WHEREAS:
A. Retaining Counsel represents Optiwave Semiconductor Corp. ("OWS"), a Delaware corporation headquartered in San Jose, California, as plaintiff in patent infringement litigation captioned Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD, pending in the United States District Court for the Northern District of California, San Jose Division, before the Honorable Edward J. Torvelis (the "Litigation");
B. The Litigation involves claims of infringement of four United States patents owned by OWS: U.S. Patent No. 10,234,567 (the "'567 Patent"); U.S. Patent No. 10,891,234 (the "'234 Patent"); U.S. Patent No. 11,045,678 (the "'678 Patent"); and U.S. Patent No. 11,312,890 (the "'890 Patent") (collectively, the "Patents-in-Suit"). The Patents-in-Suit relate generally to integrated photonics technologies, including waveguide coupling structures, germanium-on-silicon photodetector architectures, wavelength-division multiplexing on silicon platforms, and driver circuit architectures for silicon photonic Mach-Zehnder modulators;
C. The products accused of infringement in the Litigation are the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver, each manufactured and sold by Lumos Photonics, Inc. ("Lumos" or "Defendant"), a Delaware corporation headquartered in Austin, Texas, and publicly traded on the Nasdaq Stock Market under the ticker symbol LMPH;
D. Consultant is a California corporation duly organized and in good standing, providing technical consulting and expert witness services in the field of integrated photonics, semiconductor devices, optical communications systems, and related technologies;
E. Dr. Harold Whitfield holds a Doctor of Philosophy degree in Electrical Engineering, with a specialization in photonics, from the University of California, Berkeley, is Professor Emeritus in the Department of Electrical and Computer Engineering at the University of California, Santa Barbara, has authored or co-authored over 200 peer-reviewed publications in the fields of integrated photonics, silicon photonics, waveguide design, germanium photodetector architectures, and optical transceiver technologies, and possesses specialized technical expertise directly relevant to the technologies at issue in the Litigation; and
F. Retaining Counsel wishes to retain Consultant and Expert to provide technical expert services in connection with the Litigation, including claim construction analysis, infringement analysis, expert report preparation, and testimony, and Consultant and Expert wish to accept such retention, all on the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the mutual covenants and agreements set forth herein, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:
SECTION 1: ENGAGEMENT AND SCOPE OF SERVICES
1.1 Retention. Retaining Counsel, acting on behalf of Client, hereby retains Consultant and Expert to provide technical expert services in connection with the Litigation as described in this Agreement. Expert shall be the individual designated to perform all expert services and provide testimony under this Agreement. Consultant shall serve as the entity through which Expert's services are engaged and through which compensation shall be paid. This retention is effective as of the Effective Date and shall remain in effect subject to the terms of Section 2 below.
1.2 Scope of Services
The services to be performed by Expert under this Agreement (the "Services") shall include, but are not limited to, the following:
(a) Claim Construction Support. Expert shall provide analysis and expert opinions regarding the proper construction of disputed claim terms in the Patents-in-Suit. Expert's claim construction analysis shall encompass, at a minimum, the following key disputed terms, as identified in the Parties' Joint Claim Construction and Prehearing Statement filed with the Court:
(i) "adiabatically coupled" as recited in Claim 1 of the '567 Patent;
(ii) "graded buffer layer having a continuously varying germanium concentration" as recited in Claim 1 of the '234 Patent;
(iii) "integrated wavelength-division multiplexing element monolithically formed on a single silicon die" as recited in Claim 1 of the '678 Patent;
(iv) "pre-emphasis equalization stage electrically co-integrated with the modulator on a common substrate" as recited in Claim 1 of the '890 Patent; and
(v) such other claim terms as may be identified as disputed during the claim construction process by the Parties, the Court, or through discovery in the Litigation.
Expert's claim construction analysis shall consider the intrinsic evidence (claim language, specification, prosecution history) and, where appropriate, extrinsic evidence (technical dictionaries, treatises, and scientific literature), consistent with the framework established by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and related precedent.
(b) Technical Tutorial. Expert shall prepare and deliver a technical tutorial presentation to the Court at the Markman hearing, which is currently scheduled for January 30, 2023. The technical tutorial shall provide the Court with a comprehensive yet accessible overview of the following technological subjects relevant to the Patents-in-Suit and the disputed claim terms:
(i) the fundamentals of silicon photonics, including photonic integrated circuit (PIC) design and fabrication;
(ii) waveguide coupling physics, including adiabatic coupling, evanescent coupling, and mode conversion principles;
(iii) germanium photodetector architectures, including graded buffer layer growth techniques and their impact on device responsivity and dark current;
(iv) monolithic versus heterogeneous integration approaches for photonic components on silicon substrates, including the comparative advantages and manufacturing considerations of each approach; and
(v) Mach-Zehnder modulator driver co-integration techniques, including pre-emphasis equalization circuits and the challenges associated with high-speed modulation at data rates of 100 Gbaud and above.
Expert shall work with Retaining Counsel's litigation team to develop appropriate demonstrative exhibits, diagrams, and visual aids for the tutorial presentation.
(c) Infringement Analysis. Expert shall perform a detailed technical analysis of whether the accused Lumos products — specifically, the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver — meet each limitation of the asserted claims of the Patents-in-Suit, both literally and under the doctrine of equivalents. Expert's infringement analysis shall be performed under the various proposed claim constructions advanced by the parties and shall consider technical documentation, product specifications, teardown analyses, source code (if applicable and produced), design files, and any other materials produced by Defendant in discovery.
(d) Declarations and Expert Reports. Expert shall prepare and execute declarations in support of Client's claim construction briefing, including declarations addressing the perspective of a person of ordinary skill in the art ("POSITA") regarding the meaning and scope of disputed claim terms. If the Litigation proceeds to the expert phase, Expert shall prepare a comprehensive written expert report in compliance with Federal Rule of Civil Procedure 26(a)(2)(B), setting forth Expert's opinions, the basis and reasons for each opinion, the facts or data considered, the exhibits to be used in support of the opinions, Expert's qualifications, a list of all cases in which Expert has testified as an expert at trial or by deposition within the preceding four years, and a statement of Expert's compensation for the engagement. Expert shall also prepare, if required, a rebuttal expert report in response to the report of Defendant's expert.
(e) Testimony. Expert shall provide live and/or remote testimony at hearings (including the Markman hearing), depositions, and trial as needed throughout the course of the Litigation. Expert shall testify truthfully and in a manner consistent with his independent professional opinions. Expert acknowledges that his testimony may be subject to cross-examination by opposing counsel from Brannick Howell & Stein LLP and any other counsel of record for Defendant.
(f) Consultation. Expert shall provide general technical consultation to Retaining Counsel's litigation team on an ongoing basis throughout the engagement. Such consultation shall include, without limitation, review and analysis of opposing expert materials (including reports, declarations, and deposition testimony of Defendant's experts), review of technical documents produced in discovery (including design documents, manufacturing specifications, process flow documentation, and simulation data), review and analysis of the patent prosecution histories for the Patents-in-Suit and relevant prior art references, and participation in strategy conferences with the litigation team.
(g) Additional Services. Expert shall provide such additional technical expert services as may be mutually agreed upon in writing by the Parties from time to time during the term of this Agreement. Any expansion of the scope of services beyond those described in subsections (a) through (f) above shall be documented in a written amendment or supplement to this Agreement or in a written communication (including email) between Retaining Counsel and Consultant confirming the scope and estimated cost of such additional services.
1.3 Direction and Supervision
Expert shall perform the Services under the general direction and coordination of Alan Ngo, Responsible Partner, intellectual Property Group, Calderwood & Harkness LLP, and Omar Siddiqui, Lead Associate, intellectual Property Group, Calderwood & Harkness LLP. Expert may also interact directly with other members of Retaining Counsel's litigation team, including Christy Bauer, Senior Associate, intellectual Property Group, and such other attorneys and support personnel as may be designated by Retaining Counsel from time to time. Notwithstanding the foregoing, Expert shall at all times exercise independent professional judgment in forming and expressing his opinions. Expert shall not adopt any opinion that is not genuinely held based on his own analysis and professional expertise. Retaining Counsel's role is to provide legal direction, identify the issues on which Expert's opinions are sought, and coordinate Expert's work within the litigation timeline; Retaining Counsel shall not dictate the substance of Expert's opinions or conclusions.
1.4 Patent and Technology Background
For reference and context, a brief description of each of the Patents-in-Suit and its subject matter is set forth below:
(a) The '567 Patent — U.S. Patent No. 10,234,567, titled "Integrated Waveguide Coupler with Tapered Mode Converter for Silicon Photonics Platforms." The '567 Patent was filed on March 14, 2017, and issued on March 19, 2019. The named inventors are Dr. Kevin Fong, Dr. Priya Ramanathan, and Hideo Tanaka. The '567 Patent generally relates to an integrated waveguide coupler structure that employs an adiabatic tapered mode converter to achieve low-loss optical coupling between dissimilar waveguide cross-sections on a silicon photonics platform. The disclosed invention addresses the challenge of efficient mode transition between single-mode silicon waveguides of differing dimensions, a key building block for photonic integrated circuits operating at telecommunications wavelengths.
(b) The '234 Patent — U.S. Patent No. 10,891,234, titled "Germanium-on-Silicon Photodetector with Graded Buffer Layer for Enhanced Responsivity." The '234 Patent was filed on September 8, 2017, and issued on January 14, 2021. The named inventors are Dr. Kevin Fong and Dr. Amara Osei. The '234 Patent generally relates to a germanium-on-silicon photodetector structure incorporating a graded buffer layer with a continuously varying germanium concentration profile that reduces threading dislocation density and improves device responsivity and dark current performance. The invention addresses the long-standing challenge of lattice mismatch between germanium and silicon in monolithically integrated photodetectors.
(c) The '678 Patent — U.S. Patent No. 11,045,678, titled "Multi-Channel Optical Transceiver with Integrated Wavelength-Division Multiplexing on Silicon." The '678 Patent was filed on June 22, 2018, and issued on June 29, 2021. The named inventors are Dr. Priya Ramanathan, Dr. Amara Osei, and Liwei Zhang. The '678 Patent generally relates to a multi-channel optical transceiver architecture that integrates a wavelength-division multiplexing (WDM) element — such as an arrayed waveguide grating (AWG) or echelle grating — monolithically on a single silicon die with associated modulator and photodetector arrays, thereby eliminating the need for external WDM components and reducing transceiver form factor and cost.
(d) The '890 Patent — U.S. Patent No. 11,312,890, titled "Driver Circuit Architecture for High-Speed Silicon Photonic Mach-Zehnder Modulators." The '890 Patent was filed on November 15, 2018, and issued on April 26, 2022. The named inventors are Dr. Kevin Fong and Rajesh Iyer. The '890 Patent generally relates to a driver circuit architecture in which a pre-emphasis equalization stage is electrically co-integrated with a silicon photonic Mach-Zehnder modulator on a common substrate, enabling high-speed modulation at data rates exceeding 100 Gbaud while compensating for bandwidth limitations inherent in the modulator's electro-optic response.
SECTION 2: TERM AND TERMINATION
2.1 Term. This Agreement shall be effective as of the Effective Date and shall continue in full force and effect until the earliest to occur of: (a) the completion of all Services and the final resolution of the Litigation, including the exhaustion or expiration of all rights of appeal; (b) written termination by either Party in accordance with Sections 2.2 or 2.3 below; or (c) the mutual written agreement of the Parties to terminate this Agreement.
2.2 Termination by Retaining Counsel
Retaining Counsel may terminate this Agreement at any time, with or without cause, upon thirty (30) days' prior written notice to Consultant, delivered in accordance with Section 12.4. In the event of termination by Retaining Counsel, Retaining Counsel shall remain responsible for payment of all fees for Services rendered and all expenses properly incurred by Consultant and Expert through the effective date of such termination, in accordance with Section 3. No early termination fee or penalty shall be assessed.
2.3 Termination by Consultant
Consultant may terminate this Agreement upon sixty (60) days' prior written notice to Retaining Counsel, delivered in accordance with Section 12.4. Notwithstanding the foregoing, Expert shall not withdraw from any pending testimony obligation, scheduled hearing, deposition, or trial appearance without the prior approval of Retaining Counsel and, where required, leave of the Court. If Expert's withdrawal would prejudice Client's interests in the Litigation, the Parties shall cooperate in good faith to ensure an orderly transition and to minimize any disruption to the proceedings.
2.4 Effect of Termination
Upon termination of this Agreement for any reason, Expert shall promptly return to Retaining Counsel all documents, materials, data, files, and work product that were provided to Expert by Retaining Counsel or Client, or that were created by Expert in connection with the Litigation. Such return obligation shall extend to all copies of such materials, whether in physical or electronic form, subject to any document retention obligations imposed by applicable law, by the Court's standing orders, or by the Stipulated Protective Order entered in the Litigation. Expert shall certify in writing, within fifteen (15) days of the effective date of termination, that all such materials have been returned or destroyed in accordance with this Section 2.4. Notwithstanding the termination of this Agreement, the obligations set forth in Section 4 (Confidentiality), Section 6 (Conflicts of Interest), and Section 9 (Indemnification and Limitation of Liability) shall survive such termination and shall continue in full force and effect in perpetuity (in the case of confidentiality obligations relating to trade secrets) or for a period of five (5) years from the date of termination (in the case of all other surviving obligations), unless a longer period is required by applicable law or the Court's Stipulated Protective Order.
SECTION 3: COMPENSATION
3.1 Hourly Rates
Expert's services shall be compensated at the following hourly rates:
The foregoing hourly rates shall remain in effect for the first twelve (12) months of this Agreement. Thereafter, Consultant may propose adjusted rates upon sixty (60) days' prior written notice to Retaining Counsel, such adjustments not to exceed five percent (5%) per annum. Any adjusted rates shall apply only to Services rendered after the effective date of the adjustment and shall be subject to Retaining Counsel's written approval.
3.2 Expenses. Reasonable out-of-pocket expenses incurred by Consultant and Expert in connection with the performance of Services under this Agreement shall be reimbursed by Retaining Counsel. Reimbursable expenses include, but are not limited to:
(a) travel expenses, including coach-class airfare (or equivalent rail fare), hotel accommodations at reasonable commercial rates, ground transportation (including rental cars, rideshare services, and parking), and per diem meal expenses not to exceed $75.00 per day;
(b) printing, reproduction, and binding costs associated with the preparation of expert reports, declarations, demonstrative exhibits, and related materials;
(c) costs of specialized technical resources, including access to technical databases, subscriptions to relevant scientific journals, and acquisition of prior art references not already in Expert's possession;
(d) costs of any specialized equipment, software, or testing required to perform the infringement analysis or prepare demonstrative exhibits; and
(e) overnight courier and express mail charges for materials related to the Litigation.
Travel time shall be billed at fifty percent (50%) of Dr. Whitfield's standard hourly rate (i.e., $375.00 per hour). All individual expense items exceeding One Thousand Dollars ($1,000.00) in a single instance shall require the prior written approval of Retaining Counsel before being incurred. Consultant shall use commercially reasonable efforts to minimize expenses and to select cost-effective options for travel and other expenditures.
3.3 Invoicing. Consultant shall submit monthly invoices to Retaining Counsel within fifteen (15) days after the end of each calendar month during which Services were performed or expenses were incurred. Each invoice shall include:
(a) an itemized description of all Services rendered during the billing period, including the date on which each service was performed, the number of hours expended, and a narrative description of the work performed sufficient to permit Retaining Counsel to assess the nature and value of the services;
(b) an itemized listing of all reimbursable expenses incurred during the billing period, with supporting receipts or documentation for any individual expense item exceeding One Hundred Dollars ($100.00); and
(c) a cumulative summary of total fees and expenses billed to date under this Agreement.
All invoices shall be directed to:
Marcus Delgado Billing Partner Calderwood & Harkness LLP One Embarcadero Center, 34th Floor San Francisco, California 94111
Reference: Matter No. 1014-00003 Case Caption: *Optiwave Semiconductor Corp. v. Lumos Photonics, Inc.*
Invoices may be submitted by email to mdelgado@calderwoodharkness.com with a copy to ango@calderwoodharkness.com.
3.4 Payment Terms
Payment of all undisputed amounts set forth in each invoice shall be due within thirty (30) days of Retaining Counsel's receipt of such invoice. If Retaining Counsel disputes any portion of an invoice, Retaining Counsel shall notify Consultant in writing within fifteen (15) days of receipt of the invoice, specifying the disputed items and the basis for the dispute. Retaining Counsel shall pay all undisputed amounts within the thirty (30) day payment period. Retaining Counsel is directly responsible for payment under this Agreement; Client (OWS) is the ultimate payor responsible for funding Retaining Counsel's payment obligations, but Consultant's contractual relationship for payment purposes is solely with Retaining Counsel, and Consultant shall have no obligation to seek payment directly from Client.
3.5 No Contingency
Expert's compensation under this Agreement shall not be contingent upon, nor in any way dependent upon, the outcome of the Litigation or the content, nature, or direction of any opinions rendered by Expert. Expert's compensation is based solely on the time and effort expended by Expert and Consultant's personnel at the agreed hourly rates set forth in Section 3.1 and the reimbursement of reasonable expenses in accordance with Section 3.2. This provision is intended to ensure compliance with the requirements of Federal Rule of Civil Procedure 26(a)(2)(B)(vi) and applicable ethical and professional standards governing expert witness compensation. Expert acknowledges that any arrangement tying compensation to the outcome of the Litigation would undermine the integrity and credibility of Expert's opinions and testimony, and no such arrangement exists or shall be entered into.
SECTION 4: CONFIDENTIALITY
4.1 Confidential Information Defined
As used in this Agreement, "Confidential Information" means all information, documents, data, materials, communications, and tangible and intangible items of any nature provided to Expert by Retaining Counsel, Client, or any of their agents, employees, or representatives, or obtained by Expert in connection with the performance of Services under this Agreement, including without limitation:
(a) attorney work product and mental impressions of Retaining Counsel's litigation team relating to the Litigation;
(b) attorney-client privileged communications between Retaining Counsel and Client;
(c) technical data, design documents, manufacturing specifications, source code, process flow documentation, simulation data, and other proprietary technical information of Client or Defendant;
(d) financial information, business plans, projections, and strategic information of Client or Defendant;
(e) patent prosecution files, including prosecution histories, office actions, inventor declarations, and correspondence with the United States Patent and Trademark Office relating to the Patents-in-Suit;
(f) all documents and materials produced in discovery in the Litigation, whether produced by Client, Defendant, or any third party;
(g) all information designated as "Confidential" or "Highly Confidential — Attorneys' Eyes Only" under the Stipulated Protective Order entered by the Court in the Litigation (the "Protective Order"); and
(h) all draft and final expert reports, declarations, analyses, presentations, and work product prepared by Expert or by any other expert retained by Retaining Counsel in connection with the Litigation.
4.2 Obligations. Expert shall maintain all Confidential Information in strict confidence and shall use the same degree of care to protect Confidential Information as Expert uses to protect his own confidential information, but in no event less than a reasonable degree of care. Expert shall not disclose, publish, or otherwise disseminate Confidential Information to any person or entity not authorized to receive such information under this Agreement or under the terms of the Protective Order. Expert shall use Confidential Information solely for the purpose of performing the Services under this Agreement and for no other purpose whatsoever. Expert shall not use any Confidential Information for his own benefit, for the benefit of any third party, or in connection with any other engagement, consulting arrangement, academic research, publication, or presentation.
4.3 Protective Order Compliance
Expert acknowledges that a Stipulated Protective Order has been entered by the Court in the Litigation governing the designation, handling, disclosure, and use of confidential discovery materials and other protected information. Expert agrees to be bound by and to comply fully with the terms of the Protective Order, including but not limited to its provisions relating to the handling of materials designated "Confidential" and "Highly Confidential — Attorneys' Eyes Only." Expert agrees to execute the undertaking and acknowledgment form required by the Protective Order, substantially in the form attached hereto as Exhibit B, prior to receiving access to any materials designated under the Protective Order. Expert shall not use or disclose information designated "Highly Confidential — Attorneys' Eyes Only" except as expressly permitted by the Protective Order, and Expert shall take all measures necessary to prevent unauthorized access to such information, including storing all such materials in a secure location (whether physical or electronic) accessible only to Expert and to those persons authorized under the Protective Order.
4.4 Return of Materials
Upon the termination of this Agreement or the conclusion of the Litigation (including any appeals), whichever is later, Expert shall promptly return to Retaining Counsel, or at Retaining Counsel's election, destroy, all Confidential Information and materials in Expert's possession, custody, or control, including all copies, summaries, excerpts, and compilations thereof, whether in physical or electronic form. Within fifteen (15) days of such return or destruction, Expert shall provide Retaining Counsel with a written certification confirming that all Confidential Information and materials have been returned or destroyed in accordance with this Section 4.4. The obligations of this Section 4.4 are subject to the terms of the Protective Order, which may impose separate or additional requirements regarding the disposition of protected materials at the conclusion of the Litigation.
SECTION 5: EXPERT QUALIFICATIONS AND REPRESENTATIONS
5.1 Qualifications. Expert represents and warrants that he possesses the following qualifications relevant to the performance of the Services:
(a) Education. Expert holds a Doctor of Philosophy (PhD) degree in Electrical Engineering, with a specialization in photonics, from the University of California, Berkeley, conferred in 1987. Expert also holds a Master of Science (MS) degree in Electrical Engineering from Stanford University (1983) and a Bachelor of Science (BS) degree in Applied Physics from the California Institute of Technology (1981).
(b) Academic Appointments. Expert currently holds the title of Professor Emeritus in the Department of Electrical and Computer Engineering at the University of California, Santa Barbara, a position he has held since 2019. Expert previously served as a full Professor at UC Santa Barbara from 2001 to 2019, as an Associate Professor from 1995 to 2001, and as an Assistant Professor from 1990 to 1995. Expert held a postdoctoral research position at Tidewater Holdings, Murray Hill, New Jersey, from 1987 to 1990.
(c) Publications. Expert has authored or co-authored over 200 peer-reviewed publications in leading scientific and engineering journals, including Nature Photonics, IEEE Journal of Lightwave Technology, IEEE Photonics Technology Letters, Optics Express, and Journal of the Optical Society of America B. Expert's publications span the fields of integrated photonics, silicon photonics, waveguide design and optimization, germanium and III-V compound semiconductor photodetector architectures, wavelength-division multiplexing devices, and high-speed optical modulator design.
(d) Prior Expert Witness Experience. Expert has extensive prior experience as a testifying expert in patent litigation involving semiconductor, photonics, and optical communications technologies. Expert has been retained as a testifying expert in approximately fifteen (15) matters over the past twelve (12) years, including engagements involving claims of patent infringement, invalidity, and trade secret misappropriation in the photonics and semiconductor industries. A complete listing of cases in which Expert has provided expert testimony, whether at trial or by deposition, within the preceding four (4) years, is included in Expert's curriculum vitae attached as Exhibit A.
(e) Professional Memberships and Honors. Expert is a Fellow of the Institute of Electrical and Electronics Engineers (IEEE), a Fellow of the Optical Society of America (Optica), and a member of the International Society for Optics and Photonics (SPIE). Expert has received the IEEE Photonics Society Distinguished Service Award (2015) and the UC Santa Barbara Faculty Research Lecturership (2012).
(f) Person of Ordinary Skill in the Art. Expert represents that he qualifies as, and exceeds the qualifications of, a person of ordinary skill in the art ("POSITA") in the fields relevant to the Patents-in-Suit, as such term is understood in patent law.
Expert's complete curriculum vitae, including a detailed list of publications, prior testimony, and professional activities, is attached hereto as Exhibit A and incorporated herein by reference.
5.2 Independence. Expert represents and warrants that his opinions in connection with the Litigation shall be based on his independent professional analysis and judgment, informed by his education, training, experience, and specialized expertise in the relevant technical fields. Expert's opinions shall be supported by established scientific and engineering principles, the relevant patent documents (including the claims, specifications, and drawings of the Patents-in-Suit), the prosecution histories of the Patents-in-Suit, applicable prior art references, the technical literature, and such factual evidence as may be developed through discovery in the Litigation. Expert shall not tailor his opinions to support any predetermined conclusion, and if Expert's independent analysis leads him to a conclusion that is unfavorable to Client's position, Expert shall promptly communicate that conclusion to Retaining Counsel.
5.3 Accuracy. Expert shall ensure that all opinions, declarations, reports, and testimony provided in connection with the Litigation are truthful, accurate, complete, and consistent with his genuine professional views. Expert acknowledges his obligation to testify truthfully under oath and to comply with all applicable ethical and professional standards governing expert witness conduct. Expert shall promptly notify Retaining Counsel if, at any time during the engagement, Expert becomes aware of any information, evidence, or development that materially affects or requires modification of any previously expressed opinion.
SECTION 6: CONFLICTS OF INTEREST
6.1 Representations. Consultant and Expert represent and warrant that, as of the Effective Date:
(a) Neither Consultant nor Expert has any current engagement, financial interest, business relationship, or personal relationship that would create a conflict of interest with respect to the engagement described in this Agreement or that would impair Expert's ability to provide objective and independent opinions in the Litigation;
(b) Expert has no current or prior consulting engagement, business relationship, employment relationship, or financial arrangement with Lumos Photonics, Inc. (or any of its subsidiaries, affiliates, or predecessors), Brannick Howell & Stein LLP (counsel of record for Defendant in the Litigation), or any expert known to have been retained by Defendant in the Litigation, including Dr. Raymond Ng, formerly of the Department of Electrical, Computer, and Energy Engineering at the University of Colorado Boulder;
(c) Expert has no ownership interest, whether direct or indirect, in Optiwave Semiconductor Corp., Lumos Photonics, Inc., Vantage Point Capital Partners Fund IV, LP (a known investor in OWS), Ridgeline Asset Management, LLC, or any other entity that could create a financial interest in the outcome of the Litigation; and
(d) Expert has no familial or personal relationship with any officer, director, employee, or agent of any of the foregoing entities that would reasonably be expected to affect Expert's objectivity or independence.
6.2 Duty to Disclose
Expert shall promptly disclose to Retaining Counsel any actual or potential conflict of interest that arises during the term of this Agreement, including but not limited to any new engagement, business opportunity, financial interest, personal relationship, or other circumstance that could reasonably be perceived to affect Expert's objectivity or independence. Upon receipt of such disclosure, Retaining Counsel and Expert shall consult in good faith to determine whether the conflict can be resolved or whether termination of this Agreement is necessary.
SECTION 7: WORK PRODUCT AND INTELLECTUAL PROPERTY
7.1 Ownership. All work product prepared by Expert in connection with this engagement, including without limitation drafts and final versions of declarations, expert reports, technical analyses, claim charts, infringement contentions charts, presentations (including the technical tutorial presentation to be delivered at the Markman hearing), demonstrative exhibits, diagrams, animations, and any other materials created specifically for the Litigation (collectively, "Work Product"), shall be and remain the sole and exclusive property of Client (OWS). Expert hereby assigns, and agrees to assign, to Client all right, title, and interest in and to the Work Product. Notwithstanding the foregoing, Expert retains all rights in and to his underlying general knowledge, skills, expertise, know-how, and pre-existing intellectual property that is not specific to the Litigation, and nothing in this Agreement shall be construed to restrict Expert's use of such general knowledge and expertise in other engagements or professional activities, provided that such use does not involve the disclosure of Confidential Information.
7.2 Non-Publication. Expert shall not publish, present at academic or professional conferences, submit for peer review, or otherwise disseminate to any third party any Work Product, analyses, data, findings, or conclusions developed in connection with this engagement without the prior written consent of Retaining Counsel. This restriction applies during the term of this Agreement and for a period of three (3) years following the conclusion of the Litigation (including any appeals), unless a longer period is required by the Protective Order or by applicable law. Nothing in this Section 7.2 shall prevent Expert from disclosing the fact of his retention as an expert in the Litigation in connection with future expert retention inquiries, to the extent required by Federal Rule of Civil Procedure 26(a)(2)(B)(v) or by applicable court rules.
SECTION 8: TESTIMONY OBLIGATIONS
8.1 Availability. Expert shall make himself reasonably available for the following activities in connection with the Litigation:
(a) Preparation Sessions. Expert shall participate in preparation sessions with Retaining Counsel's litigation team, including Alan Ngo (Responsible Partner), Omar Siddiqui (Lead Associate), and Christy Bauer (Senior Associate), as well as other members of the team as designated by Retaining Counsel. Preparation sessions may be conducted in person at the offices of Calderwood & Harkness LLP in San Francisco, at Expert's offices in Palo Alto, or by videoconference, as mutually agreed.
(b) Technical Tutorial. Expert shall prepare and deliver the technical tutorial presentation to the Court at the Markman hearing, currently scheduled for January 30, 2023, at the Robert F. Peckham Federal Building, 280 South 1st Street, San Jose, California 95113, or at such other date and location as the Court may direct.
(c) Claim Construction Declarations. Expert shall prepare, review, and execute one or more declarations in support of OWS's claim construction briefing. The deadline for OWS's Opening Claim Construction Brief is currently set for December 5, 2022, and Expert shall have his supporting declaration finalized and executed in advance of that deadline. Expert shall also prepare reply declarations, if needed, in support of OWS's Reply Claim Construction Brief.
(d) Deposition. Expert shall make himself available for deposition, if noticed by opposing counsel (Brannick Howell & Stein LLP, 401 Congress Avenue, Suite 3200, Austin, Texas 78701). Expert shall cooperate with Retaining Counsel in scheduling the deposition and in preparing for the deposition, and shall provide truthful testimony consistent with his independent professional opinions.
(e) Trial Testimony. If the Litigation proceeds to trial, Expert shall make himself available to provide testimony at trial, whether in person or by remote means as permitted by the Court. Expert shall work with Retaining Counsel to prepare demonstrative exhibits and visual aids for trial testimony.
Expert shall provide Retaining Counsel with reasonable advance notice of any scheduling conflicts that may affect his availability for the activities described above. Expert shall use his best efforts to accommodate the scheduling requirements of the Litigation, recognizing that certain dates (such as the Markman hearing date and trial date) are set by the Court and may not be within the Parties' control.
8.2 Preparation. Expert shall cooperate fully with Retaining Counsel in preparing for all testimony, hearings, and other proceedings in which Expert is expected to participate. Expert shall review and become thoroughly familiar with the relevant patents (including the claims, specifications, drawings, and file histories of the Patents-in-Suit), the applicable prior art references, the opposing party's claim construction positions and supporting materials, the opposing expert's reports and declarations, the discovery documents relevant to Expert's opinions, and such other materials as Retaining Counsel may identify as pertinent to Expert's preparation.
8.3 Compliance with Rules
Expert's testimony and reports shall comply in all respects with Federal Rule of Civil Procedure 26(a)(2)(B), Federal Rule of Evidence 702, and the requirements of Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), and its progeny, including General Electric Co. v. Joiner, 522 U.S. 136 (1997), and Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999). Expert shall ensure that his opinions are based on sufficient facts and data, are the product of reliable principles and methods, and reflect a reliable application of those principles and methods to the facts of the case. Expert shall be prepared to defend the reliability and basis of his opinions at any Daubert hearing that may be convened by the Court.
SECTION 9: INDEMNIFICATION AND LIMITATION OF LIABILITY
9.1 Indemnification by Retaining Counsel
Retaining Counsel, on behalf of Client, shall indemnify, defend, and hold harmless Consultant and Expert from and against any and all claims, demands, losses, liabilities, damages, costs, and expenses (including reasonable attorneys' fees) arising from any third-party claim or action related to Expert's performance of the Services under this Agreement, except to the extent that such claim, demand, loss, liability, damage, cost, or expense is caused by or results from Expert's gross negligence, willful misconduct, fraud, or material breach of this Agreement. This indemnification obligation shall survive the termination or expiration of this Agreement. For the avoidance of doubt, this indemnification does not extend to any claim or action brought by Retaining Counsel or Client against Consultant or Expert.
9.2 Limitation of Liability
Consultant's aggregate liability to Retaining Counsel and Client under or in connection with this Agreement, whether arising in contract, tort (including negligence), or otherwise, shall not exceed the total fees actually paid to Consultant under this Agreement as of the date on which the applicable claim arises. In no event shall Consultant or Expert be liable for any indirect, incidental, consequential, special, or punitive damages, loss of profits, or loss of business opportunity, regardless of whether such damages were foreseeable or whether Consultant or Expert was advised of the possibility of such damages.
SECTION 10: INDEPENDENT CONTRACTOR STATUS
Expert and Consultant are independent contractors. Nothing in this Agreement shall be construed to create an employer-employee relationship, partnership, joint venture, or agency relationship between, on the one hand, Retaining Counsel or Client, and on the other hand, Consultant or Expert. Expert shall not represent himself as an employee, partner, or agent of Retaining Counsel or Client, and shall have no authority to bind or commit Retaining Counsel or Client in any manner. Consultant shall be solely responsible for all federal, state, and local taxes applicable to compensation paid under this Agreement, including but not limited to self-employment taxes, income taxes, and any applicable payroll taxes. Consultant shall be responsible for maintaining all insurance, workers' compensation coverage, and employment-related obligations for Expert and any staff of Consultant who perform services in connection with this Agreement. Retaining Counsel shall report compensation paid to Consultant on IRS Form 1099-NEC or such other form as may be required by applicable law.
SECTION 11: GOVERNING LAW AND DISPUTE RESOLUTION
11.1 Governing Law
This Agreement shall be governed by and construed in accordance with the laws of the State of California, without regard to its principles of conflicts of law. The Parties agree that the Uniform Commercial Code shall not apply to this Agreement.
11.2 Dispute Resolution
Any dispute, controversy, or claim arising out of or relating to this Agreement, or the breach, termination, or invalidity thereof, shall be resolved by binding arbitration administered in San Francisco, California, in accordance with the then-current Commercial Arbitration Rules of the American Arbitration Association ("AAA"). The arbitration shall be conducted before a single arbitrator selected in accordance with the AAA's rules. The arbitrator shall have the authority to award any remedy that would be available in a court of competent jurisdiction, including injunctive relief and specific performance. The decision of the arbitrator shall be final and binding upon the Parties and may be entered and enforced in any court of competent jurisdiction. Each Party shall bear its own costs and attorneys' fees in connection with any arbitration, unless the arbitrator determines that one Party's claims or defenses were frivolous or brought in bad faith, in which case the arbitrator may award reasonable attorneys' fees and costs to the prevailing Party. Notwithstanding the foregoing, either Party may seek temporary or preliminary injunctive relief from a court of competent jurisdiction to prevent irreparable harm pending the outcome of arbitration.
SECTION 12: GENERAL PROVISIONS
12.1 Entire Agreement
This Agreement, including all exhibits and schedules attached hereto and incorporated herein by reference, constitutes the entire agreement between the Parties with respect to the subject matter hereof and supersedes all prior and contemporaneous oral or written agreements, understandings, representations, and warranties relating to such subject matter. No Party has relied upon any statement, representation, or warranty of any other Party not set forth in this Agreement.
12.2 Amendments. This Agreement may not be amended, modified, or supplemented except by a written instrument duly executed by all Parties hereto. No waiver of any provision of this Agreement shall be effective unless set forth in a writing signed by the Party granting such waiver, and no such waiver shall constitute a waiver of any other provision or a continuing waiver of the same provision.
12.3 Assignment. Neither Party may assign, delegate, or transfer this Agreement or any rights or obligations hereunder without the prior written consent of the other Parties; provided, however, that Retaining Counsel may assign this Agreement to successor counsel retained by Client in the Litigation without the consent of Consultant or Expert, upon written notice to Consultant. Any purported assignment in violation of this Section 12.3 shall be null and void.
12.4 Notices. All notices, requests, demands, and other communications required or permitted under this Agreement shall be in writing and shall be deemed duly given (a) when delivered personally, (b) on the business day following deposit with a nationally recognized overnight courier service for next-business-day delivery, with proof of delivery requested, (c) on the third business day following deposit in the United States mail, postage prepaid, certified or registered mail, return receipt requested, or (d) when transmitted by email with confirmed receipt by the recipient, in each case addressed to the applicable Party at the following addresses (or at such other address as a Party may designate by written notice in accordance with this Section):
If to Retaining Counsel: Calderwood & Harkness LLP One Embarcadero Center, 34th Floor San Francisco, California 94111
Attention: Alan Ngo, Partner, intellectual Property Group
Email: ango@calderwoodharkness.com
If to Consultant or Expert: Whitfield Technical Consulting Group, Inc. 530 Lytton Avenue, Suite 210 Palo Alto, California 94301
Attention: Dr. Harold Whitfield, President
Email: hwhitfield@whitfieldtcg.com
12.5 Counterparts. This Agreement may be executed in two or more counterparts, each of which shall be deemed an original and all of which, taken together, shall constitute one and the same instrument. Signatures transmitted by facsimile or by electronic means in portable document format (.pdf) shall be deemed original signatures for all purposes.
12.6 Severability. If any provision of this Agreement is held by a court of competent jurisdiction or by an arbitrator to be invalid, illegal, or unenforceable for any reason, such provision shall be modified to the minimum extent necessary to make it valid, legal, and enforceable, and the remaining provisions of this Agreement shall continue in full force and effect and shall not be affected, impaired, or invalidated thereby.
SECTION 13: MATTER REFERENCE INFORMATION
For administrative and reference purposes, the following information pertaining to the Litigation and the engagement is set forth below:
IN WITNESS WHEREOF, the Parties have executed this Expert Retention Agreement as of the date first written above.
CALDERWOOD & HARKNESS LLP
By: ________
Name: Alan Ngo
Title: Partner, intellectual Property Group
Date: ________
WHITFIELD TECHNICAL CONSULTING GROUP, INC.
By: ________
Name: Dr. Harold Whitfield
Title: President
Date: ________
ACKNOWLEDGED AND AGREED (Individual Expert):
________________________________________
Dr. Harold Whitfield, individually
Date: ________
EXHIBIT A
CURRICULUM VITAE OF DR. HAROLD WHITFIELD
PERSONAL INFORMATION. Name: Harold R. Whitfield, PhD Address: 530 Lytton Avenue, Suite 210, Palo Alto, California 94301 Email: hwhitfield@whitfieldtcg.com Telephone: (650) 555-0192
EDUCATION.
PhD Dissertation: "Nonlinear Optical Coupling in Planar Dielectric Waveguides: Theory, Simulation, and Experimental Characterization" — Advisor: Professor William T. Rhodes
ACADEMIC APPOINTMENTS.
• Professor Emeritus, Department of Electrical and Computer Engineering, University of California, Santa Barbara (2019–present)
• Professor, Department of Electrical and Computer Engineering, University of California, Santa Barbara (2001–2019)
• Associate Professor, Department of Electrical and Computer Engineering, University of California, Santa Barbara (1995–2001)
• Assistant Professor, Department of Electrical and Computer Engineering, University of California, Santa Barbara (1990–1995)
• Postdoctoral Member of Technical Staff, Tidewater Holdings (Camberwell Enterprises), Murray Hill, New Jersey (1987–1990)
CONSULTING AND INDUSTRY EXPERIENCE
• President and Principal Consultant, Whitfield Technical Consulting Group, Inc., Palo Alto, California (2010–present)
• Technical consulting and expert witness services in the fields of integrated photonics, silicon photonics, semiconductor devices, optical communications systems, and related technologies
SELECTED PUBLICATIONS. Expert has authored or co-authored over 200 peer-reviewed publications. A representative selection includes:
1. H. R. Whitfield, "Adiabatic Mode Coupling in Tapered Silicon Waveguides: A Review," IEEE Journal of Lightwave Technology, vol. 37, no. 14, pp. 3455–3471 (2019).
2. H. R. Whitfield & A. Castellano, "Low-Loss Graded Buffer Layers for Germanium-on-Silicon Photodetectors," Nature Photonics, vol. 12, pp. 217–223 (2018).
3. H. R. Whitfield, M. Stein, & J. Kwan, "Monolithic Integration of WDM Multiplexers on Silicon Photonic Platforms," Optics Express, vol. 25, no. 11, pp. 12200–12215 (2017).
4. H. R. Whitfield & R. Varma, "High-Speed Mach-Zehnder Modulator Driver Co-Design in Silicon Photonics," IEEE Photonics Technology Letters, vol. 28, no. 19, pp. 2066–2069 (2016).
5. H. R. Whitfield, "Tutorial: Fundamentals of Photonic Integrated Circuit Design," Journal of the Optical Society of America B, vol. 30, no. 8, pp. 2033–2058 (2013).
A complete list of publications is available upon request.
PRIOR EXPERT WITNESS EXPERIENCE (PAST FOUR YEARS)
PROFESSIONAL MEMBERSHIPS AND HONORS
• Fellow, Institute of Electrical and Electronics Engineers (IEEE), elected 2008
• Fellow, The Optical Society (Optica), elected 2005
• Member, International Society for Optics and Photonics (SPIE)
• IEEE Photonics Society Distinguished Service Award (2015)
• UC Santa Barbara Faculty Research Lecturership (2012)
• National Science Foundation CAREER Award (1993)