1014-00003 · Optiwave Semiconductor Corp · Fact Discovery

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MEMORANDUM

PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT

TO: Document Review Team — Matter 1014-00003

FROM: Christy Bauer, Associate; Omar Siddiqui, Lead Associate

REVIEWED BY: Alan Ngo, Responsible Partner

DATE: November 14, 2022

RE: Document Review Protocol for Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD (N.D. Cal.)

MATTER NUMBER: 1014-00003

CLIENT: Optiwave Semiconductor Corp.

CLASSIFICATION: Internal Work Product — Not for Distribution Outside Calderwood & Harkness LLP

This memorandum sets forth the controlling document review protocol for all members of the review team assigned to Matter 1014-00003. All reviewers must read this memorandum in its entirety, confirm receipt, and direct any questions to Christy Bauer or Omar Siddiqui before commencing review. This memorandum and all communications regarding this document review constitute attorney work product and must be treated as such.

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I. Purpose and Scope

The purpose of this memorandum is to establish a uniform and comprehensive document review protocol governing the review, coding, privilege analysis, confidentiality designation, and production of all documents collected from Optiwave Semiconductor Corp. ("OWS") custodians in connection with the above-captioned litigation. This protocol is designed to ensure consistency, accuracy, and defensibility in the document review process, and to protect the interests of our client throughout the discovery phase of this matter.

This protocol governs the review of documents to be produced in response to Lumos Photonics, Inc.'s ("Lumos") First Set of Requests for Production of Documents (Nos. 1–98), which was served on OWS on November 7, 2022. Lumos's requests are broad in scope, covering the full range of issues typically at play in a multi-patent infringement case, including the development and prosecution of the asserted patents, the accused products, prior art, licensing, damages, and related technical and business matters. A copy of Lumos's First Set of Requests for Production is referenced as Appendix A to this memorandum and should be consulted by all reviewers as part of their preparation for commencing review.

In addition to Lumos's document requests, this protocol also governs the review of documents to be produced in connection with OWS's affirmative document obligations under Federal Rule of Civil Procedure 26(a)(1). OWS's initial disclosures were exchanged on August 22, 2022, and OWS has continuing obligations to supplement those disclosures as additional responsive information is identified. Any supplemental productions arising from ongoing disclosure obligations are subject to the procedures outlined herein.

This protocol further applies to the preparation and review of documents that OWS may produce in connection with OWS's own First Set of Requests for Production of Documents to Lumos (112 requests, served November 21, 2022), to the extent that the review team identifies documents in OWS's collection that are relevant to those requests or that bear upon the sufficiency of Lumos's anticipated productions.

Applicability. This protocol applies to all reviewers at Calderwood & Harkness LLP who are assigned to Matter 1014-00003, whether as first-level reviewers, second-level reviewers, or quality control reviewers. All review must be conducted in accordance with the procedures, coding categories, and escalation protocols described in this memorandum. Deviations from this protocol are not permitted without the prior approval of Omar Siddiqui or Alan Ngo.

Compliance with the Stipulated Protective Order. All review and production activities must comply with the Stipulated Protective Order entered by the Honorable Edward J. Torvelis on September 2022 in Case No. 5:22-cv-03417-EJD. The Protective Order establishes two tiers of confidentiality designation — "Confidential" and "Highly Confidential — Attorneys' Eyes Only" — and sets forth specific procedures for the handling, use, and disclosure of designated materials. Reviewers must familiarize themselves with the terms of the Protective Order, which is referenced as Appendix C to this memorandum, and must apply confidentiality designations in accordance with the guidelines set forth in Section V below.

Reference Documents. The following reference documents should be consulted as needed during the review process. Copies of these documents are available on the matter's secure review platform workspace or may be requested from Christy Bauer:

1. Lumos Photonics, Inc.'s First Set of Requests for Production of Documents (Nos. 1–98), served November 7, 2022 (Appendix A);

2. OWS's First Set of Requests for Production of Documents to Lumos (Nos. 1–112), served November 21, 2022;

3. Stipulated Protective Order, entered September 2022 (Appendix C);

4. Litigation Hold Notice, dated June 1, 2022 (Appendix D);

5. ESI Search Terms and Custodian List Memorandum, dated September 2022 (Appendix B);

6. Privilege Log Template (Appendix E); and

7. Decision Log Template (Appendix F).

Reviewers are expected to have read and understood the Lumos document requests, the Protective Order, and this memorandum before beginning any review work.

II. Document Collection Summary

This section describes the custodians from whom documents have been collected, the data sources from which documents have been extracted, and the ESI processing parameters that have been applied to the collected data.

A. Custodian List

Documents have been collected from eight key custodians, as identified in the ESI Search Terms and Custodian List Memorandum dated September 2022. The custodians were selected based on their involvement in the development, prosecution, and commercialization of the four asserted patents, their roles in OWS's business operations relevant to this litigation, and their likely possession of documents responsive to Lumos's document requests. The custodians and their relevant roles are as follows:

1. Dr. Priya Ramanathan — Chief Executive Officer and Co-Founder of OWS. Dr. Ramanathan is a named inventor on U.S. Patent Nos. 10,234,567 (the "'567 Patent") and 11,045,678 (the "'678 Patent"). As CEO, Dr. Ramanathan has broad visibility into OWS's business operations, strategic direction, licensing activities, and investor communications. Her files are expected to contain both technical and business documents relevant to the asserted patents and to OWS's damages theories.

2. Dr. Kevin Fong — Chief Technology Officer and Co-Founder of OWS. Dr. Fong is a named inventor on U.S. Patent Nos. 10,234,567 (the "'567 Patent"), 10,891,234 (the "'234 Patent"), and 11,312,890 (the "'890 Patent"). As CTO, Dr. Fong has led OWS's technology development efforts in silicon photonics and is expected to have extensive technical documents, design files, and engineering communications relevant to the patented technologies and the accused Lumos products.

3. Dr. Amara Osei — Principal Engineer at OWS. Dr. Osei is a named inventor on U.S. Patent Nos. 10,891,234 (the "'234 Patent") and 11,045,678 (the "'678 Patent"). Dr. Osei's files are expected to contain detailed technical design documents, simulation results, lab notebooks, and engineering team communications related to the development of the patented technologies.

4. Theodore "Ted" Marchetti — Vice President of intellectual Property at OWS. Mr. Marchetti is a registered patent attorney with the United States Patent and Trademark Office (USPTO Reg. No. 58,304). In his role as VP of IP, Mr. Marchetti oversees OWS's patent portfolio, patent prosecution activities, and IP strategy. His files are expected to include patent prosecution records, licensing correspondence, IP strategy documents, and communications with outside patent prosecution counsel. As discussed further in Section IV below, Mr. Marchetti's dual role as a business executive and registered patent attorney requires careful privilege analysis.

5. Sandra Ellison — General Counsel of OWS. Ms. Ellison serves as OWS's chief legal officer and is responsible for all legal matters, including litigation oversight, regulatory compliance, and corporate governance. Her files are expected to contain privileged communications related to the litigation, communications with outside counsel, board communications regarding litigation authorization, and general legal correspondence. Documents from Ms. Ellison's files will require heightened privilege scrutiny.

6. Rajesh Iyer — Circuit Designer at OWS. Mr. Iyer is a named inventor on U.S. Patent No. 11,312,890 (the "'890 Patent"), which relates to driver circuit architecture for high-speed silicon photonic Mach-Zehnder modulators. Mr. Iyer's files are expected to contain circuit design documents, simulation files, and engineering communications related to the '890 Patent and OWS's driver circuit technology.

7. Liwei Zhang — Design Engineer at OWS. Mr. Zhang is a named inventor on U.S. Patent No. 11,045,678 (the "'678 Patent"), which relates to multi-channel optical transceiver technology with integrated wavelength division multiplexing. Mr. Zhang's files are expected to include design documents, schematics, and engineering correspondence related to the '678 Patent and OWS's transceiver products.

8. Hideo Tanaka — Former OWS Engineer (employed 2016–2019). Mr. Tanaka is a named inventor on U.S. Patent No. 10,234,567 (the "'567 Patent"). Notably, Mr. Tanaka is also the named inventor on U.S. Patent No. 9,456,012, which is prior art cited by Lumos in its invalidity contentions against the '567 Patent. Mr. Tanaka's files are expected to contain documents relevant to both the development of the '567 Patent and the relationship between the '567 Patent and Tanaka's prior art patent. These documents are potentially of significant importance to both the infringement and invalidity analyses.

Special Note Regarding Hideo Tanaka. Mr. Tanaka is no longer employed by OWS. Documents have been collected from OWS's systems that were created or maintained during Mr. Tanaka's tenure at OWS (2016–2019). However, it is possible that Mr. Tanaka retained personal copies of documents related to his work at OWS or to his prior art patent (U.S. Patent No. 9,456,012) that are not captured in OWS's systems. The review team should be alert to any references in the collected documents to materials that may exist only in Mr. Tanaka's personal possession. Any such references should be flagged for Omar Siddiqui, who will coordinate with Sandra Ellison regarding the potential need for supplemental collection efforts directed at Mr. Tanaka. Reviewers should note that Mr. Tanaka's cooperation in any supplemental collection effort is voluntary, as he is no longer an employee of OWS.

B. Data Sources

Documents have been collected from the following data sources within OWS's information systems:

1. OWS Email System. Email communications for all eight custodians have been collected from OWS's Strathmore Data Systems-based email system. The collection covers the date range of January 1, 2016 through the present. Email collections include all messages in each custodian's inbox, sent items, deleted items (to the extent recoverable), and any archived folders. Email attachments have been collected as family members and will be produced together with their parent emails.

2. OWS Shared Drives and Document Management System. Documents have been collected from OWS's networked shared drives and document management system ("DMS"), including departmental shared folders for the Engineering, R&D, IP, Legal, Finance, and Business Development departments. These collections capture documents that may not have been communicated via email but that are stored on OWS's centralized file servers and are accessible to multiple OWS personnel.

3. Patent Prosecution Files. Complete patent prosecution files have been collected for the four asserted patents, as maintained by Ted Marchetti and the OWS IP department. These files include the complete file histories for the following patents:

• U.S. Patent No. 10,234,567 — "Integrated Waveguide Coupler with Tapered Mode Converter" (the "'567 Patent");

• U.S. Patent No. 10,891,234 — "Germanium-on-Silicon Photodetector with Graded Buffer Layer" (the "'234 Patent");

• U.S. Patent No. 11,045,678 — "Multi-Channel Optical Transceiver with Integrated WDM" (the "'678 Patent"); and

• U.S. Patent No. 11,312,890 — "Driver Circuit Architecture for High-Speed Silicon Photonic MZM" (the "'890 Patent").

The prosecution files include issued patents, published applications, office actions, applicant responses and amendments, declarations, information disclosure statements, examiner interview summaries, continuation and divisional application filings, and all other documents maintained in the USPTO file wrappers. These files are critical to Lumos's document requests directed at prosecution history and to OWS's prosecution history estoppel analysis.

4. Engineering and R&D Files. Technical engineering and research and development files have been collected from the custodians and from OWS's engineering shared drives. These files include design documents, laboratory notebooks (both physical notebooks that have been scanned and digitized and electronic lab notebooks), circuit schematics, simulation files (including FDTD, TCAD, and SPICE simulation outputs), layout files, test and characterization data, and other technical records related to the patented technologies. These documents are relevant to claim construction, infringement analysis, and the development history of the asserted patents.

5. Business Records. Business records have been collected from relevant custodians and shared drives, including documents related to licensing discussions (both inbound and outbound), competitive intelligence reports and analyses, market analysis and sizing reports, product roadmaps, customer communications, and sales and marketing materials. These documents are relevant to Lumos's document requests directed at licensing, damages, and the commercial significance of the patented technologies.

6. Communications with Pinnacle Semiconductor Foundry Co., Ltd. Documents reflecting communications between OWS personnel and Pinnacle Semiconductor Foundry Co., Ltd. ("Pinnacle"), OWS's contract foundry located in Hsinchu, Taiwan, have been collected. Pinnacle fabricates OWS's silicon photonics chips on a 45nm silicon-on-insulator ("SOI") process. These communications are relevant to the manufacturing process comparisons that may arise in the infringement analysis, particularly with respect to claims directed at fabrication methods and structural features of the patented devices. Reviewers should be alert to the fact that Pinnacle communications may contain highly sensitive process details that warrant AEO designation.

7. Communications with Clearpath IP Valuation Services, Inc. Documents reflecting communications between OWS personnel and Jennifer Armitage of Clearpath IP Valuation Services, Inc. ("Clearpath") regarding a pre-litigation patent portfolio valuation have been collected. Clearpath conducted a valuation of OWS's patent portfolio, assigning an aggregate value of approximately $215 million to the portfolio and a value of approximately $42.8 million to the four asserted patents. These communications are likely privileged to the extent they were undertaken at the direction of counsel in anticipation of litigation, and they must be flagged for privilege review. See Section IV.C below for detailed guidance.

8. Communications with First Pacific Commerce Bank, N.A. Documents reflecting communications between OWS personnel and First Pacific Commerce Bank, N.A. ("FPCB"), OWS's primary lender, have been collected. OWS maintains a $40 million revolving credit facility with FPCB, secured by a lien on OWS's intellectual property assets, including the four asserted patents. These communications may be responsive to Lumos's document requests directed at financial matters and the value of the asserted patents, but they must also be reviewed for potential privilege (to the extent they reference or convey legal advice regarding the litigation or the IP portfolio). Reviewers should code these documents for both responsiveness and privilege as appropriate.

C. ESI Processing Parameters

The collected data has been processed in accordance with the ESI processing parameters established in the ESI Search Terms and Custodian List Memorandum dated September 2022. Reviewers should be aware of the following processing parameters that affect the universe of documents appearing in the review platform:

• Search Terms. The search terms developed and agreed upon in the ESI Search Terms and Custodian List Memorandum (Appendix B) have been applied to the collected data to identify potentially responsive documents. Reviewers should consult Appendix B for the complete list of search terms. The search terms were designed to be inclusive and to capture documents relevant to the asserted patents, the accused Lumos products, prior art, licensing, damages, and other key topics in this litigation. Documents that did not hit on any search term have been excluded from the review population, subject to any subsequent expansion of the search term list.

• De-Duplication. De-duplication has been performed at the family level, meaning that duplicate email families (an email and its attachments) have been identified and removed so that only one copy of each unique family appears in the review set. De-duplication was performed across all custodians, with the custodian who is the author or primary recipient of the document being designated as the primary custodian. If a document appears in multiple custodians' files, the duplicate copies are tracked and available for review if needed, but only the primary copy appears in the active review queue.

• Native File Preservation. All native file formats have been preserved during processing. Documents appear in the review platform in their near-native or image formats for review purposes, but the underlying native files are maintained and available for production in native format where required (e.g., spreadsheets and databases). Email threading has been enabled in the review platform to allow reviewers to view email conversations in threaded format, which facilitates efficient review and consistent coding of related messages.

• Date Filter. The primary date range for the review population is January 1, 2015 through June 3, 2022 (the date the complaint was filed in this action). This date range captures the relevant period of patent development, prosecution, and commercialization, as well as the pre-litigation period during which the dispute between OWS and Lumos arose. For documents relating to OWS's ongoing disclosure obligations and any post-filing responsive documents, the date range has been expanded through the present. Reviewers should be aware that documents falling outside the January 1, 2015 to June 3, 2022 primary date range may still appear in the review queue if they are responsive to specific Lumos document requests that are not date-limited or if they relate to continuing obligations.

III. Responsiveness Coding Categories

This section describes the coding categories that reviewers must apply to each document during the first-level review. The coding scheme consists of two components: (1) a primary responsiveness code, which classifies the document's overall responsiveness to Lumos's document requests and OWS's disclosure obligations; and (2) subject matter coding tags, which identify the specific topics and issues to which the document relates. Both components must be applied to every document reviewed.

A. Primary Responsiveness Codes

Each document must be assigned one — and only one — of the following primary responsiveness codes:

• Responsive. This code should be applied to any document that falls within the scope of one or more of Lumos's 98 document requests or OWS's affirmative initial disclosure obligations under FRCP 26(a)(1). A document is responsive if it contains information that is relevant to any claim or defense in this litigation and that is within the scope of a specific document request. Reviewers should construe the document requests broadly, consistent with the Federal Rules of Civil Procedure and Northern District of California practice, and should err on the side of coding a document as responsive where there is a reasonable argument that it falls within the scope of a request.

• Not Responsive. This code should be applied to any document that does not relate to any of Lumos's 98 document requests or to OWS's disclosure obligations. Documents that address topics entirely unrelated to this litigation — such as unrelated HR matters, non-patent-related corporate governance issues, or personal communications — should be coded as Not Responsive. Documents that reference the asserted patents, the accused products, or other key topics in this litigation in only a trivial or passing manner (e.g., an email signature block that lists the patent numbers) may be coded as Not Responsive, but reviewers should exercise caution and escalate borderline cases.

• Potentially Responsive — Needs Second-Level Review. This code should be applied to any borderline document where the reviewer is uncertain whether the document falls within the scope of a Lumos document request or OWS disclosure obligation. This code is intended to be used judiciously — it is not a substitute for the reviewer's exercise of professional judgment, but rather a mechanism for escalating genuinely ambiguous documents for assessment by a more senior reviewer. Documents coded as "Potentially Responsive — Needs Second-Level Review" will be reviewed by Omar Siddiqui or Christy Bauer, who will make a final responsiveness determination.

• Responsive — Hot Document. This code should be applied to any document that is not only responsive but is of particular significance to the substantive issues in this litigation and should be flagged for immediate attorney attention. Hot documents are those that are likely to have a material impact on the case — either positively or negatively for OWS — and that the case team needs to be aware of as early as possible. Examples of hot documents include, but are not limited to: documents in which OWS personnel discuss Lumos's products (LumosBridge™ 800G or LumosEdge™ 400ZR+); documents in which OWS personnel acknowledge differences between OWS's patented designs and Lumos's accused products; internal assessments of patent scope or claim coverage; documents that may undermine OWS's infringement theories or strengthen Lumos's invalidity defenses; and any document that a reviewer believes could be used as an exhibit at deposition or trial. The hot document escalation protocol is described in detail in Section VI.C below.

B. Subject Matter Coding Tags (Non-Exclusive; Multiple Tags May Apply)

In addition to the primary responsiveness code, each responsive or potentially responsive document must be tagged with one or more of the following subject matter coding tags. These tags are non-exclusive — a single document may be tagged with multiple subject matter codes if it relates to more than one topic. The purpose of subject matter tagging is to facilitate efficient retrieval of documents by topic during case preparation, deposition preparation, expert work, and trial preparation.

The following subject matter coding tags are available:

• PAT-567 — Apply this tag to any document that relates to U.S. Patent No. 10,234,567, titled "Integrated Waveguide Coupler with Tapered Mode Converter." This includes documents discussing the invention, its development, its prosecution before the USPTO, its claims, its commercial embodiment, or its relationship to the accused Lumos products.

• PAT-234 — Apply this tag to any document that relates to U.S. Patent No. 10,891,234, titled "Germanium-on-Silicon Photodetector with Graded Buffer Layer." This includes documents discussing the invention, its development, its prosecution, its claims, its commercial embodiment, or its relationship to the accused Lumos products.

• PAT-678 — Apply this tag to any document that relates to U.S. Patent No. 11,045,678, titled "Multi-Channel Optical Transceiver with Integrated WDM." This includes documents discussing the invention, its development, its prosecution, its claims, its commercial embodiment, or its relationship to the accused Lumos products.

• PAT-890 — Apply this tag to any document that relates to U.S. Patent No. 11,312,890, titled "Driver Circuit Architecture for High-Speed Silicon Photonic MZM." This includes documents discussing the invention, its development, its prosecution, its claims, its commercial embodiment, or its relationship to the accused Lumos products.

• PROS-HIST — Apply this tag to any document that constitutes or relates to the patent prosecution history of any of the four asserted patents. This includes office actions, amendments, applicant remarks, examiner interviews, information disclosure statements, declarations, and any internal communications discussing prosecution strategy or the substance of prosecution proceedings.

• PRIOR-ART — Apply this tag to any document that discusses or references prior art, whether cited during prosecution or identified in connection with this litigation. Key prior art references to be alert for include:

• Tanaka, U.S. Patent No. 9,456,012 (inventor: Hideo Tanaka; assigned to OWS during Tanaka's employment);

• Chen & Liu, "Low-Loss Silicon Photonic Waveguide Couplers Using Inverse Taper Design" (2016 journal article);

• EP 3,234,567 A1 (Nordlicht Photonische GmbH, European patent application);

• Iyer & Patel, "High-Bandwidth Silicon Photonic MZM Driver Design for Next-Generation Data Centers" (2018 IEEE conference paper).

Documents referencing other prior art — whether patents, publications, or products — should also be tagged with PRIOR-ART.

• LUMOS-PROD — Apply this tag to any document that references Lumos Photonics, Inc.'s products, including the LumosBridge™ 800G coherent optical transceiver and the LumosEdge™ 400ZR+ pluggable module. This tag should also be applied to documents that reference Lumos's technology generally, even if specific product names are not used, provided the context makes clear that the discussion relates to Lumos's products or technology.

• LICENSING — Apply this tag to any document that relates to patent licensing discussions, licensing strategy, royalty rates, or comparable license agreements. This includes both inbound licensing (licenses granted to OWS by third parties) and outbound licensing (licenses granted by OWS to third parties). Documents discussing potential licensing negotiations with Lumos should also be tagged with LICENSING.

• DAMAGES — Apply this tag to any document that is relevant to damages theories in this litigation. This includes documents containing revenue data, product pricing, market share information, competitive analysis, lost profits calculations or projections, reasonable royalty analysis, cost data, and any other financial or economic information that could be used by a damages expert.

• TECH-DESIGN — Apply this tag to any document that constitutes a technical design document, schematic, circuit layout, simulation result, lab notebook entry, test or characterization data, or other engineering or R&D record related to the patented technologies or OWS's products. This tag captures the core technical documentation relevant to infringement and validity analysis.

• FOUNDRY — Apply this tag to any document that relates to Pinnacle Semiconductor Foundry Co., Ltd. or to the fabrication processes used to manufacture OWS's silicon photonics products. This includes process specifications, design rule manuals, process characterization data, yield reports, and any communications between OWS engineers and Pinnacle regarding fabrication on the 45nm SOI process. These documents may be relevant to manufacturing process comparisons in the infringement analysis.

• VALUATION — Apply this tag to any document that relates to the valuation of OWS's patent portfolio or the asserted patents specifically. This includes documents generated by or in connection with Clearpath IP Valuation Services, Inc.'s analysis of OWS's patent portfolio (aggregate valuation of approximately $215 million; valuation of the four asserted patents at approximately $42.8 million). These documents are relevant to damages analysis and may also implicate privilege issues, as discussed in Section IV.C below.

• FINANCE — Apply this tag to any document that constitutes a financial record, including revenue reports, cost analyses, budgets, financial projections, tax records, and communications with First Pacific Commerce Bank, N.A. regarding the $40 million revolving credit facility. Financial documents are relevant to damages analysis and to Lumos's document requests directed at OWS's financial condition and the economic value of the asserted patents.

• INVESTOR — Apply this tag to any document that constitutes or relates to communications with Vantage Point Capital Partners Fund IV, LP ("Vantage Point"), which holds an approximately 62% ownership interest in OWS, or with other investors, regarding the asserted patents, the litigation, or OWS's IP monetization strategy. These documents may implicate common interest privilege issues and are relevant to Lumos's document requests directed at the value and commercialization of the patented technologies. Reviewers should also flag these documents for privilege review, as discussed in Section IV.C below.

If a reviewer encounters a document that does not fit neatly into any of the above coding categories but is nonetheless responsive, the reviewer should apply the most closely analogous tag(s) and escalate the document to Omar Siddiqui for consideration of whether a supplemental coding tag should be created.

IV. Privilege Review Workflow

The protection of OWS's privileged communications is of paramount importance. An inadvertent production of privileged material could result in waiver of privilege and cause significant harm to OWS's position in this litigation. Accordingly, all reviewers must exercise heightened care in identifying and coding potentially privileged documents. This section describes the applicable privilege categories, the tiered review workflow for privilege determinations, special privilege considerations unique to this matter, and the format for the privilege log.

A. Privilege Categories

The following categories of privilege may be asserted with respect to documents in OWS's collection. Reviewers should be familiar with the general principles underlying each privilege category and should consult with Christy Bauer or Omar Siddiqui if there is any uncertainty about whether a particular privilege applies.

Attorney-Client Privilege (ACP). The attorney-client privilege protects confidential communications between a client and its attorney (or the attorney's agents) that are made for the purpose of obtaining or providing legal advice. For purposes of this review, the following individuals are attorneys whose communications with OWS personnel may be privileged:

• In-House Counsel:

• Sandra Ellison, General Counsel of OWS. Communications between Ms. Ellison and OWS personnel are presumptively privileged to the extent they involve the seeking or providing of legal advice. However, communications in which Ms. Ellison is acting in a purely business capacity (e.g., general corporate management) may not be privileged. Reviewers should evaluate the content and context of each communication to determine whether it reflects legal advice or business judgment.

• Ted Marchetti, Vice President of intellectual Property and Registered Patent Attorney (USPTO Reg. No. 58,304). Mr. Marchetti occupies a dual role as both a business executive and a registered patent attorney. This dual role presents unique privilege challenges, as discussed in detail in Section IV.C below. As a general matter, communications in which Mr. Marchetti is providing legal advice in his capacity as a patent attorney — for example, advising on patentability, claim scope, prosecution strategy, or freedom-to-operate issues — are privileged. Communications in which Mr. Marchetti is acting in his business capacity as VP of IP — for example, making decisions about IP budget, portfolio management priorities, or business strategy — may not be privileged, even if they touch upon patent-related topics.

• Outside Counsel:

• Calderwood & Harkness LLP, the firm's own attorneys, in their capacity as current litigation counsel for OWS. All communications between Calderwood & Harkness attorneys and OWS personnel regarding this litigation are privileged.

• Prior Outside Patent Prosecution Counsel. OWS may have retained outside patent prosecution counsel in connection with the prosecution of the asserted patents before the USPTO. Communications between OWS personnel and any such outside counsel regarding patent prosecution matters are privileged. Reviewers should be alert to communications referencing outside prosecution counsel by name or firm and should flag such documents for privilege review.

Attorney Work Product (AWP). The work product doctrine protects documents and tangible things prepared in anticipation of litigation or for trial by or for a party or its representative. The work product protection applies to materials that were created because of the prospect of litigation, as opposed to materials that would have been created in the ordinary course of business regardless of any litigation threat.

For purposes of this review, the relevant anticipation-of-litigation date is no earlier than March 15, 2022, which is the date of OWS's cease-and-desist letter to Lumos. The cease-and-desist letter reflects OWS's first formal assertion of its patent rights against Lumos and marks the point at which litigation became reasonably foreseeable. A more conservative anticipation-of-litigation date — and the date that should be used for borderline work product determinations — is April 4, 2022, which is the date of Lumos's response letter denying infringement and declining to take a license. Upon receipt of Lumos's denial, litigation became not merely foreseeable but probable, and documents created after that date in connection with the dispute are more clearly within the scope of work product protection.

Documents created before March 15, 2022 are generally not protected as work product, even if they are relevant to the litigation, unless there is evidence that the specific document was created in anticipation of litigation with Lumos or another party. Reviewers should not apply the AWP code to pre-March 15, 2022 documents absent a clear indication that the document was litigation-motivated.

Joint Defense / Common Interest Privilege. Communications between OWS and Vantage Point Capital Partners Fund IV, LP ("Vantage Point") may be protected under the common interest doctrine to the extent that OWS and Vantage Point share a common legal interest in the outcome of this litigation. The common interest doctrine permits parties with a shared legal interest to exchange privileged communications without waiving the attorney-client privilege.

It is critical that the common interest be a legal interest, not merely a commercial or financial interest. Vantage Point's interest in OWS's litigation outcome must be analyzed to determine whether it rises to the level of a common legal interest. As Vantage Point is OWS's majority shareholder (holding approximately 62% of OWS's equity), it has a significant financial stake in the litigation outcome, but that alone is insufficient to establish a common legal interest. Reviewers should flag all communications involving Vantage Point for third-level review by Alan Ngo, who will make the common interest determination.

Patent Agent Privilege. Communications between OWS personnel and Ted Marchetti in his capacity as a registered patent attorney regarding patent prosecution matters before the USPTO may be protected by the patent agent privilege. Under In re Queen's University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016), the scope of the patent agent privilege is limited to communications reasonably necessary and incident to the prosecution of patents before the USPTO. The privilege does not extend to communications regarding litigation strategy, licensing negotiations, or other matters outside the scope of patent prosecution. Reviewers should be mindful of this distinction when reviewing Marchetti communications that involve patent prosecution topics.

B. Privilege Review Tiers

To ensure thorough and accurate privilege determinations, the privilege review process is structured in three tiers:

First-Level Review. All reviewers participating in the first-level document review are responsible for identifying and coding documents that are potentially privileged. During first-level review, each document that may implicate any privilege should be flagged using one of the following privilege codes:

• PRIV-ACP — The document is a confidential communication between OWS and counsel (in-house or outside) made for the purpose of seeking or providing legal advice, and the attorney-client privilege applies.

• PRIV-AWP — The document was prepared in anticipation of litigation or for trial and is protected by the work product doctrine.

• PRIV-BOTH — Both the attorney-client privilege and the work product doctrine apply to the document.

• PRIV-POSSIBLE — The document may be privileged, but the reviewer is uncertain whether a privilege applies or is unable to make a definitive determination. Documents coded as PRIV-POSSIBLE will be escalated to second-level review.

First-level reviewers should apply the PRIV-POSSIBLE code liberally. It is far preferable to over-flag documents for privilege review than to fail to identify a privileged document that is subsequently produced. If there is any doubt about whether a privilege applies, the document should be coded PRIV-POSSIBLE and escalated.

Second-Level Review. Omar Siddiqui or Christy Bauer will review all documents flagged as PRIV-POSSIBLE during the first-level review. The second-level reviewer will make a definitive determination as to whether a privilege applies and will either confirm the privilege coding (upgrading PRIV-POSSIBLE to PRIV-ACP, PRIV-AWP, or PRIV-BOTH) or override the privilege coding (removing the privilege flag if no privilege applies). The second-level reviewer will also review a random sample of documents that were not flagged for privilege during first-level review to identify any potentially privileged documents that may have been missed.

Third-Level Review. Alan Ngo will review the following categories of documents, which present the most complex and consequential privilege issues in this matter:

• Any document for which the privilege determination is contested or unclear after second-level review;

• All documents involving communications with Vantage Point Capital Partners, which require analysis under the common interest doctrine;

• All documents involving Ted Marchetti in his dual legal/business role, where the distinction between legal advice and business judgment is particularly difficult to draw; and

• Any other documents escalated by the second-level reviewer for partner-level determination.

Alan Ngo's privilege determinations are final and binding on the review team.

C. Special Privilege Considerations

This matter presents several recurring privilege issues that require heightened attention from all reviewers. The following guidance is intended to assist reviewers in identifying and properly handling these issues.

Marchetti Dual-Role Documents. As noted above, Ted Marchetti serves OWS in a dual capacity: as Vice President of intellectual Property (a business role) and as a registered patent attorney (a legal role). This dual role means that not all of Marchetti's communications are privileged, even though he is a licensed attorney. The privilege analysis for Marchetti documents depends on the capacity in which Marchetti was acting at the time of the communication.

Communications in which Marchetti provides legal advice in his capacity as a patent attorney — such as advice on patentability, claim scope, prosecution strategy, freedom-to-operate, or infringement opinions — are privileged. Communications in which Marchetti exercises business judgment regarding IP strategy — such as decisions about which patents to pursue, how to allocate the IP budget, or how to prioritize the patent portfolio from a business perspective — may not be privileged, even if they incidentally reference legal concepts.

Because the distinction between Marchetti's legal and business communications can be subtle and context-dependent, all Marchetti documents should be escalated to second-level review. First-level reviewers should code Marchetti documents as PRIV-POSSIBLE at a minimum, with a brief notation in the reviewer comments field indicating the nature of the communication.

Clearpath IP Valuation Communications. Communications between OWS personnel and Jennifer Armitage of Clearpath IP Valuation Services, Inc. regarding the pre-litigation patent portfolio valuation present a potentially complex privilege issue. Clearpath conducted a valuation of OWS's entire patent portfolio (resulting in an aggregate portfolio valuation of approximately $215 million) and a separate valuation of the four asserted patents (valued at approximately $42.8 million). Whether these communications are privileged depends on the purpose for which the valuation was undertaken.

If the Clearpath valuation was commissioned at the direction of counsel in anticipation of litigation — for example, to assist counsel in evaluating damages theories or assessing the merits of the case — the communications and the resulting valuation report are likely protected as attorney work product, and possibly as attorney-client privileged communications if they reflect legal advice or strategy.

If, however, the Clearpath valuation was undertaken for business purposes — for example, at the request of Vantage Point Capital Partners for portfolio valuation or investment analysis purposes, or for financial reporting or credit facility purposes — the communications and valuation report are likely not privileged.

The determination of the purpose of the Clearpath valuation requires factual investigation that is beyond the scope of first-level or second-level review. Accordingly, all documents involving Clearpath IP Valuation Services or Jennifer Armitage must be escalated to Alan Ngo for third-level review. Reviewers should code these documents as PRIV-POSSIBLE and tag them with the VALUATION subject matter tag.

Resolute Litigation Finance Communications. The review team may encounter communications between OWS personnel and Resolute Litigation Finance, LP regarding a potential litigation funding arrangement. OWS considered a term sheet from Resolute for third-party litigation funding but ultimately declined the arrangement. Any such communications should be flagged for privilege review and coded as PRIV-POSSIBLE.

The privilege analysis for litigation finance communications is unsettled. Some courts have recognized a common interest privilege between a litigant and a potential litigation funder, on the theory that the funder and the litigant share a common legal interest in the outcome of the litigation. Other courts have applied a Kovel-type analysis, treating the litigation funder as a functional agent of the attorney for purposes of the attorney-client privilege. The applicability of either theory depends on the specific facts and the governing law. All Resolute-related documents should be escalated to Alan Ngo for determination.

Inventor Communications with Former Employees. As noted in Section II.A, Hideo Tanaka is a former OWS employee who departed the company in 2019. Communications between OWS personnel and Mr. Tanaka that occurred during his employment (2016–2019) are treated like any other intra-company communications and may be privileged if they involve the seeking or providing of legal advice.

Communications with Mr. Tanaka after his departure from OWS (post-2019) require a different analysis. If post-departure communications with Mr. Tanaka were initiated at the direction of counsel for purposes of gathering factual information in anticipation of litigation, such communications may be protected as attorney work product. If, however, the communications were independent of any counsel direction — for example, casual or personal communications between former colleagues — they are not privileged. Reviewers should flag all post-2019 Tanaka communications for second-level review and note in the reviewer comments field whether there is any indication that the communication was at counsel's direction.

Board and Investor Communications. Communications between OWS personnel and the OWS Board of Directors, and between OWS personnel and Vantage Point Capital Partners, regarding the authorization and pursuit of this litigation may be privileged if they convey or seek legal advice. OWS's Board of Directors authorized the filing of this lawsuit on April 28, 2022, and it is expected that the Board received legal advice from counsel in connection with that authorization.

Board and investor communications that convey legal advice, legal strategy, or counsel's assessment of the merits, risks, or costs of the litigation are privileged. Board and investor communications that reflect purely business decisions — such as the commercial rationale for pursuing litigation, the expected impact on OWS's competitive position, or the financial implications of the litigation — are generally not privileged, even if they were made in the context of a discussion about the litigation. Reviewers should be attentive to this distinction and should flag all Board and investor communications for privilege review.

D. Privilege Log Format

All documents that are withheld from production in whole or redacted in part on the basis of privilege must have a corresponding entry in the privilege log. The privilege log is a critical component of OWS's discovery obligations, and incomplete or inaccurate privilege log entries could expose OWS to a motion to compel or an adverse inference. The privilege log must be maintained on a rolling basis and will be consolidated and finalized in connection with each production.

Each privilege log entry must include the following fields:

1. Bates Range or Document ID. The unique document identifier assigned to the withheld or redacted document. For documents withheld in their entirety, the Bates range that would have been assigned is used. For redacted documents, the Bates range of the produced (redacted) version is used.

2. Date. The date of the document. For undated documents, enter "Undated" and provide an estimated date range if possible.

3. Author(s) / From. The author of the document or the sender of the communication, identified by name and title/role.

4. Recipient(s) / To / CC. All recipients of the communication, including To, CC, and BCC recipients, identified by name and title/role. For documents that are not communications (e.g., memoranda, notes), identify the intended audience if known.

5. Document Type. The type of document (e.g., email, memorandum, letter, handwritten notes, presentation, report).

6. General Subject Matter Description. A description of the general subject matter of the document that is sufficient to support the privilege claim without revealing privileged content. The description should be specific enough to allow the opposing party and the Court to evaluate the privilege assertion but should not disclose the substance of the legal advice or work product.

7. Privilege(s) Asserted. Identification of the specific privilege(s) asserted: Attorney-Client Privilege (ACP), Attorney Work Product (AWP), or both (ACP/AWP).

8. Basis for Privilege Assertion. A brief statement of the basis for the privilege assertion, including identification of the attorney involved, the nature of the legal advice or work product, and any other relevant facts supporting the privilege claim.

The privilege log template is attached as Appendix E. Christy Bauer is responsible for maintaining the rolling privilege log and for ensuring that all privilege log entries are complete and accurate. The current consolidated version of the privilege log will be maintained and updated through March 2023, and thereafter on a rolling basis in connection with each supplemental production.

V. Confidentiality Designation Guidelines

This section provides guidance on the application of confidentiality designations to OWS documents in accordance with the Stipulated Protective Order entered by the Court in September 2022. Proper designation of documents is essential to protecting OWS's confidential business information and trade secrets while also complying with the Protective Order's requirement that designations be made in good faith and not used to impede legitimate discovery.

A. Designations Under the Stipulated Protective Order

The Stipulated Protective Order establishes two tiers of confidentiality designation:

CONFIDENTIAL. Information that the producing party in good faith believes constitutes confidential business information, the disclosure of which to unauthorized persons would cause competitive harm to the producing party. Documents designated as CONFIDENTIAL may be disclosed to outside counsel for the receiving party, the receiving party's experts and consultants, and the Court, but may not be disclosed to the receiving party's in-house counsel or business personnel without the producing party's consent or a court order, except as otherwise permitted by the Protective Order.

HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY ("AEO"). Information of an extremely sensitive nature, including trade secrets, highly sensitive technical information, or competitively sensitive financial data, the disclosure of which to in-house counsel or business personnel of the opposing party would cause significant competitive harm to the producing party. Documents designated as AEO may be disclosed only to outside counsel for the receiving party, and to experts and consultants who have signed the Protective Order's undertaking, but may not be disclosed to any in-house counsel, officer, director, or employee of the receiving party.

B. Designation Criteria for OWS Documents

The following guidelines should be applied when determining the appropriate confidentiality designation for OWS documents. These guidelines are intended to ensure that designations are applied consistently and in good faith, in accordance with the standards set forth in the Protective Order.

Documents to be Designated as CONFIDENTIAL:

• General business communications regarding OWS products, including the OWS-400ZR, OWS-800LR chipsets, and OWS's silicon photonics engine product line, to the extent they contain non-public business information but do not reveal trade secrets or highly sensitive technical or financial details;

• Non-public revenue figures, including OWS's fiscal year 2022 revenue of approximately $187.4 million, to the extent such figures are referenced in documents that do not also contain more granular or sensitive financial data;

• General patent portfolio information, including references to OWS's portfolio of 87 issued U.S. patents and 14 pending applications, to the extent such references do not reveal prosecution strategy or other privileged information;

• Communications with customers that do not involve pricing, contract terms, or other highly sensitive commercial information; and

• General licensing strategy discussions that do not reveal specific royalty rates, licensing terms, or damages-related analysis.

Documents to be Designated as HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY:

• Detailed technical design documents and schematics for OWS products, including circuit layouts, device cross-sections, waveguide geometries, and other design specifications that constitute trade secrets or proprietary technical information;

• Source code, firmware, and proprietary algorithms embedded in or used in connection with OWS's silicon photonics products;

• Manufacturing process specifications and Pinnacle Semiconductor Foundry process details, including process flows, design rule parameters, yield data, and other 45nm SOI process information that OWS is obligated to maintain in confidence under its foundry agreement with Pinnacle;

• Detailed financial data, including product-level profit margins, cost structures, bill-of-materials data, and customer-specific pricing information;

• Patent prosecution strategy documents that reflect counsel's legal advice or strategic assessments regarding claim scope, prosecution tactics, or anticipated office action responses;

• Licensing agreements and royalty rate information, including the specific terms and rates of any license agreements that would inform the damages analysis in this litigation;

• Documents reflecting litigation strategy, case assessment, settlement analysis, or other attorney work product (to the extent such documents are produced, which would occur only if privilege is not applicable or has been waived);

• Clearpath IP Valuation Services reports and related communications reflecting the patent portfolio valuation (aggregate value of $215 million; four asserted patents valued at $42.8 million), to the extent such documents are determined to be non-privileged and responsive;

• Communications with Vantage Point Capital Partners Fund IV, LP regarding investment valuation, IP monetization strategy, or other matters reflecting OWS's confidential corporate strategy, to the extent such documents are determined to be non-privileged and responsive.

C. Designation Review

Confidentiality designations will be subject to the following review process:

First-level reviewers are responsible for applying initial confidentiality designations to each responsive document based on the criteria set forth above. When applying a designation, the reviewer should consider the nature and sensitivity of the information contained in the document and select the designation that most appropriately reflects the level of protection warranted.

Omar Siddiqui or Christy Bauer will conduct a second-level review of all documents designated as HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY to ensure that the AEO designation is supportable under the Protective Order's good-faith standard. AEO designations should be reserved for documents that genuinely warrant the highest level of protection; they should not be applied as a default designation for all responsive documents.

Over-designation must be avoided. The Protective Order and Northern District of California practice counsel against blanket or indiscriminate use of the AEO designation. Over-designation can undermine the credibility of the producing party's designations, invite challenges and motions to de-designate, and result in adverse rulings from the Court. Reviewers should apply the AEO designation only where the document contains information that, if disclosed to Lumos's in-house counsel or business personnel, would cause significant competitive harm to OWS.

VI. Quality Control Procedures

The quality and consistency of the document review are essential to the defensibility of OWS's discovery responses and to the efficient prosecution of this case. This section describes the quality control procedures that will be implemented throughout the review process, including sampling, consistency checks, and the hot document escalation protocol.

A. Sampling Protocol

Random quality control sampling will be performed on at least ten percent (10%) of documents reviewed at each level of the review process. The purpose of QC sampling is to identify and correct coding errors, ensure consistent application of the coding categories, and verify that privileged documents are being properly identified and flagged.

• Christy Bauer will perform the first QC pass on responsiveness coding. This involves reviewing a random sample of documents that have been coded as "Responsive," "Not Responsive," and "Potentially Responsive — Needs Second-Level Review" to verify that the primary responsiveness codes are being applied correctly and consistently.

• Omar Siddiqui will perform QC on privilege coding and confidentiality designations. This involves reviewing a random sample of documents that have been flagged for privilege (PRIV-ACP, PRIV-AWP, PRIV-BOTH, PRIV-POSSIBLE) and a random sample of documents that have been designated as CONFIDENTIAL or AEO to verify accuracy and consistency.

• Alan Ngo will perform spot-check QC on hot documents and privilege calls on a weekly basis. This involves reviewing a selection of documents coded as "Responsive — Hot Document" and a selection of privilege determinations to ensure that the review team's judgments are aligned with the case team's expectations and the applicable legal standards.

If QC sampling reveals an error rate exceeding five percent (5%) for any reviewer on any coding dimension, the affected reviewer's work will be subjected to a comprehensive re-review, and Omar Siddiqui will conduct a recalibration session with the reviewer before the reviewer resumes independent review work.

B. Consistency Checks

Consistency in coding is essential, particularly in a review involving multiple reviewers working across a large document population. The following consistency measures will be implemented:

• Weekly Reviewer Calibration Sessions. The review team will hold weekly calibration sessions of approximately 15 to 30 minutes each. During these sessions, Omar Siddiqui or Christy Bauer will present examples of borderline documents encountered during the review, discuss the proper coding for those documents, and address any questions or inconsistencies that have arisen. These sessions are mandatory for all active reviewers.

• Decision Log. A "Decision Log" will be maintained throughout the review process, documenting all significant coding decisions and their rationale. The Decision Log serves as a reference for all reviewers and ensures that coding decisions made early in the review are applied consistently to similar documents encountered later. The Decision Log template is attached as Appendix F. Christy Bauer is responsible for maintaining the Decision Log, and all reviewers are expected to consult it regularly.

• New Document Types and Categories. If a reviewer encounters a new document type or category during the review that does not fit within the existing coding categories described in this memorandum, the reviewer should not attempt to create ad hoc coding categories. Instead, the reviewer should escalate the document to Omar Siddiqui, who will evaluate the document, determine whether a supplemental coding tag or revised guidance is warranted, and issue supplemental coding instructions to the full review team if appropriate.

C. Hot Document Escalation Protocol

The timely identification and escalation of hot documents is critical to the case team's ability to prepare for depositions, develop case strategy, and respond to developments in the litigation. The following escalation protocol applies to all documents coded as "Responsive — Hot Document":

1. Any document coded as "Responsive — Hot Document" must be immediately forwarded to Omar Siddiqui, along with a brief summary (two to three sentences) explaining why the document has been coded as a hot document and identifying the specific issue or concern that the document

MEMORANDUM
PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT
TO: Document Review Team — Matter 1014-00003
FROM: Christy Bauer, Associate; Omar Siddiqui, Lead Associate
REVIEWED BY: Alan Ngo, Responsible Partner
DATE: November 14, 2022
RE: Document Review Protocol for Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD (N.D. Cal.)
MATTER NUMBER: 1014-00003
CLIENT: Optiwave Semiconductor Corp.
CLASSIFICATION: Internal Work Product — Not for Distribution Outside Calderwood & Harkness LLP
This memorandum sets forth the controlling document review protocol for all members of the review team assigned to Matter 1014-00003. All reviewers must read this memorandum in its entirety, confirm receipt, and direct any questions to Christy Bauer or Omar Siddiqui before commencing review. This memorandum and all communications regarding this document review constitute attorney work product and must be treated as such.
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I. Purpose and Scope
The purpose of this memorandum is to establish a uniform and comprehensive document review protocol governing the review, coding, privilege analysis, confidentiality designation, and production of all documents collected from Optiwave Semiconductor Corp. ("OWS") custodians in connection with the above-captioned litigation. This protocol is designed to ensure consistency, accuracy, and defensibility in the document review process, and to protect the interests of our client throughout the discovery phase of this matter.
This protocol governs the review of documents to be produced in response to Lumos Photonics, Inc.'s ("Lumos") First Set of Requests for Production of Documents (Nos. 1–98), which was served on OWS on November 7, 2022. Lumos's requests are broad in scope, covering the full range of issues typically at play in a multi-patent infringement case, including the development and prosecution of the asserted patents, the accused products, prior art, licensing, damages, and related technical and business matters. A copy of Lumos's First Set of Requests for Production is referenced as Appendix A to this memorandum and should be consulted by all reviewers as part of their preparation for commencing review.
In addition to Lumos's document requests, this protocol also governs the review of documents to be produced in connection with OWS's affirmative document obligations under Federal Rule of Civil Procedure 26(a)(1). OWS's initial disclosures were exchanged on August 22, 2022, and OWS has continuing obligations to supplement those disclosures as additional responsive information is identified. Any supplemental productions arising from ongoing disclosure obligations are subject to the procedures outlined herein.
This protocol further applies to the preparation and review of documents that OWS may produce in connection with OWS's own First Set of Requests for Production of Documents to Lumos (112 requests, served November 21, 2022), to the extent that the review team identifies documents in OWS's collection that are relevant to those requests or that bear upon the sufficiency of Lumos's anticipated productions.
Applicability. This protocol applies to all reviewers at Calderwood & Harkness LLP who are assigned to Matter 1014-00003, whether as first-level reviewers, second-level reviewers, or quality control reviewers. All review must be conducted in accordance with the procedures, coding categories, and escalation protocols described in this memorandum. Deviations from this protocol are not permitted without the prior approval of Omar Siddiqui or Alan Ngo.
Compliance with the Stipulated Protective Order. All review and production activities must comply with the Stipulated Protective Order entered by the Honorable Edward J. Torvelis on September 2022 in Case No. 5:22-cv-03417-EJD. The Protective Order establishes two tiers of confidentiality designation — "Confidential" and "Highly Confidential — Attorneys' Eyes Only" — and sets forth specific procedures for the handling, use, and disclosure of designated materials. Reviewers must familiarize themselves with the terms of the Protective Order, which is referenced as Appendix C to this memorandum, and must apply confidentiality designations in accordance with the guidelines set forth in Section V below.
Reference Documents. The following reference documents should be consulted as needed during the review process. Copies of these documents are available on the matter's secure review platform workspace or may be requested from Christy Bauer:
1. Lumos Photonics, Inc.'s First Set of Requests for Production of Documents (Nos. 1–98), served November 7, 2022 (Appendix A);
2. OWS's First Set of Requests for Production of Documents to Lumos (Nos. 1–112), served November 21, 2022;
3. Stipulated Protective Order, entered September 2022 (Appendix C);
4. Litigation Hold Notice, dated June 1, 2022 (Appendix D);
5. ESI Search Terms and Custodian List Memorandum, dated September 2022 (Appendix B);
6. Privilege Log Template (Appendix E); and
7. Decision Log Template (Appendix F).
Reviewers are expected to have read and understood the Lumos document requests, the Protective Order, and this memorandum before beginning any review work.
II. Document Collection Summary
This section describes the custodians from whom documents have been collected, the data sources from which documents have been extracted, and the ESI processing parameters that have been applied to the collected data.
A. Custodian List
Documents have been collected from eight key custodians, as identified in the ESI Search Terms and Custodian List Memorandum dated September 2022. The custodians were selected based on their involvement in the development, prosecution, and commercialization of the four asserted patents, their roles in OWS's business operations relevant to this litigation, and their likely possession of documents responsive to Lumos's document requests. The custodians and their relevant roles are as follows:
1. Dr. Priya Ramanathan — Chief Executive Officer and Co-Founder of OWS. Dr. Ramanathan is a named inventor on U.S. Patent Nos. 10,234,567 (the "'567 Patent") and 11,045,678 (the "'678 Patent"). As CEO, Dr. Ramanathan has broad visibility into OWS's business operations, strategic direction, licensing activities, and investor communications. Her files are expected to contain both technical and business documents relevant to the asserted patents and to OWS's damages theories.
2. Dr. Kevin Fong — Chief Technology Officer and Co-Founder of OWS. Dr. Fong is a named inventor on U.S. Patent Nos. 10,234,567 (the "'567 Patent"), 10,891,234 (the "'234 Patent"), and 11,312,890 (the "'890 Patent"). As CTO, Dr. Fong has led OWS's technology development efforts in silicon photonics and is expected to have extensive technical documents, design files, and engineering communications relevant to the patented technologies and the accused Lumos products.
3. Dr. Amara Osei — Principal Engineer at OWS. Dr. Osei is a named inventor on U.S. Patent Nos. 10,891,234 (the "'234 Patent") and 11,045,678 (the "'678 Patent"). Dr. Osei's files are expected to contain detailed technical design documents, simulation results, lab notebooks, and engineering team communications related to the development of the patented technologies.
4. Theodore "Ted" Marchetti — Vice President of intellectual Property at OWS. Mr. Marchetti is a registered patent attorney with the United States Patent and Trademark Office (USPTO Reg. No. 58,304). In his role as VP of IP, Mr. Marchetti oversees OWS's patent portfolio, patent prosecution activities, and IP strategy. His files are expected to include patent prosecution records, licensing correspondence, IP strategy documents, and communications with outside patent prosecution counsel. As discussed further in Section IV below, Mr. Marchetti's dual role as a business executive and registered patent attorney requires careful privilege analysis.
5. Sandra Ellison — General Counsel of OWS. Ms. Ellison serves as OWS's chief legal officer and is responsible for all legal matters, including litigation oversight, regulatory compliance, and corporate governance. Her files are expected to contain privileged communications related to the litigation, communications with outside counsel, board communications regarding litigation authorization, and general legal correspondence. Documents from Ms. Ellison's files will require heightened privilege scrutiny.
6. Rajesh Iyer — Circuit Designer at OWS. Mr. Iyer is a named inventor on U.S. Patent No. 11,312,890 (the "'890 Patent"), which relates to driver circuit architecture for high-speed silicon photonic Mach-Zehnder modulators. Mr. Iyer's files are expected to contain circuit design documents, simulation files, and engineering communications related to the '890 Patent and OWS's driver circuit technology.
7. Liwei Zhang — Design Engineer at OWS. Mr. Zhang is a named inventor on U.S. Patent No. 11,045,678 (the "'678 Patent"), which relates to multi-channel optical transceiver technology with integrated wavelength division multiplexing. Mr. Zhang's files are expected to include design documents, schematics, and engineering correspondence related to the '678 Patent and OWS's transceiver products.
8. Hideo Tanaka — Former OWS Engineer (employed 2016–2019). Mr. Tanaka is a named inventor on U.S. Patent No. 10,234,567 (the "'567 Patent"). Notably, Mr. Tanaka is also the named inventor on U.S. Patent No. 9,456,012, which is prior art cited by Lumos in its invalidity contentions against the '567 Patent. Mr. Tanaka's files are expected to contain documents relevant to both the development of the '567 Patent and the relationship between the '567 Patent and Tanaka's prior art patent. These documents are potentially of significant importance to both the infringement and invalidity analyses.
Special Note Regarding Hideo Tanaka. Mr. Tanaka is no longer employed by OWS. Documents have been collected from OWS's systems that were created or maintained during Mr. Tanaka's tenure at OWS (2016–2019). However, it is possible that Mr. Tanaka retained personal copies of documents related to his work at OWS or to his prior art patent (U.S. Patent No. 9,456,012) that are not captured in OWS's systems. The review team should be alert to any references in the collected documents to materials that may exist only in Mr. Tanaka's personal possession. Any such references should be flagged for Omar Siddiqui, who will coordinate with Sandra Ellison regarding the potential need for supplemental collection efforts directed at Mr. Tanaka. Reviewers should note that Mr. Tanaka's cooperation in any supplemental collection effort is voluntary, as he is no longer an employee of OWS.
B. Data Sources
Documents have been collected from the following data sources within OWS's information systems:
1. OWS Email System. Email communications for all eight custodians have been collected from OWS's Strathmore Data Systems-based email system. The collection covers the date range of January 1, 2016 through the present. Email collections include all messages in each custodian's inbox, sent items, deleted items (to the extent recoverable), and any archived folders. Email attachments have been collected as family members and will be produced together with their parent emails.
2. OWS Shared Drives and Document Management System. Documents have been collected from OWS's networked shared drives and document management system ("DMS"), including departmental shared folders for the Engineering, R&D, IP, Legal, Finance, and Business Development departments. These collections capture documents that may not have been communicated via email but that are stored on OWS's centralized file servers and are accessible to multiple OWS personnel.
3. Patent Prosecution Files. Complete patent prosecution files have been collected for the four asserted patents, as maintained by Ted Marchetti and the OWS IP department. These files include the complete file histories for the following patents:
• U.S. Patent No. 10,234,567 — "Integrated Waveguide Coupler with Tapered Mode Converter" (the "'567 Patent");
• U.S. Patent No. 10,891,234 — "Germanium-on-Silicon Photodetector with Graded Buffer Layer" (the "'234 Patent");
• U.S. Patent No. 11,045,678 — "Multi-Channel Optical Transceiver with Integrated WDM" (the "'678 Patent"); and
• U.S. Patent No. 11,312,890 — "Driver Circuit Architecture for High-Speed Silicon Photonic MZM" (the "'890 Patent").
The prosecution files include issued patents, published applications, office actions, applicant responses and amendments, declarations, information disclosure statements, examiner interview summaries, continuation and divisional application filings, and all other documents maintained in the USPTO file wrappers. These files are critical to Lumos's document requests directed at prosecution history and to OWS's prosecution history estoppel analysis.
4. Engineering and R&D Files. Technical engineering and research and development files have been collected from the custodians and from OWS's engineering shared drives. These files include design documents, laboratory notebooks (both physical notebooks that have been scanned and digitized and electronic lab notebooks), circuit schematics, simulation files (including FDTD, TCAD, and SPICE simulation outputs), layout files, test and characterization data, and other technical records related to the patented technologies. These documents are relevant to claim construction, infringement analysis, and the development history of the asserted patents.
5. Business Records. Business records have been collected from relevant custodians and shared drives, including documents related to licensing discussions (both inbound and outbound), competitive intelligence reports and analyses, market analysis and sizing reports, product roadmaps, customer communications, and sales and marketing materials. These documents are relevant to Lumos's document requests directed at licensing, damages, and the commercial significance of the patented technologies.
6. Communications with Pinnacle Semiconductor Foundry Co., Ltd. Documents reflecting communications between OWS personnel and Pinnacle Semiconductor Foundry Co., Ltd. ("Pinnacle"), OWS's contract foundry located in Hsinchu, Taiwan, have been collected. Pinnacle fabricates OWS's silicon photonics chips on a 45nm silicon-on-insulator ("SOI") process. These communications are relevant to the manufacturing process comparisons that may arise in the infringement analysis, particularly with respect to claims directed at fabrication methods and structural features of the patented devices. Reviewers should be alert to the fact that Pinnacle communications may contain highly sensitive process details that warrant AEO designation.
7. Communications with Clearpath IP Valuation Services, Inc. Documents reflecting communications between OWS personnel and Jennifer Armitage of Clearpath IP Valuation Services, Inc. ("Clearpath") regarding a pre-litigation patent portfolio valuation have been collected. Clearpath conducted a valuation of OWS's patent portfolio, assigning an aggregate value of approximately $215 million to the portfolio and a value of approximately $42.8 million to the four asserted patents. These communications are likely privileged to the extent they were undertaken at the direction of counsel in anticipation of litigation, and they must be flagged for privilege review. See Section IV.C below for detailed guidance.
8. Communications with First Pacific Commerce Bank, N.A. Documents reflecting communications between OWS personnel and First Pacific Commerce Bank, N.A. ("FPCB"), OWS's primary lender, have been collected. OWS maintains a $40 million revolving credit facility with FPCB, secured by a lien on OWS's intellectual property assets, including the four asserted patents. These communications may be responsive to Lumos's document requests directed at financial matters and the value of the asserted patents, but they must also be reviewed for potential privilege (to the extent they reference or convey legal advice regarding the litigation or the IP portfolio). Reviewers should code these documents for both responsiveness and privilege as appropriate.
C. ESI Processing Parameters
The collected data has been processed in accordance with the ESI processing parameters established in the ESI Search Terms and Custodian List Memorandum dated September 2022. Reviewers should be aware of the following processing parameters that affect the universe of documents appearing in the review platform:
• Search Terms. The search terms developed and agreed upon in the ESI Search Terms and Custodian List Memorandum (Appendix B) have been applied to the collected data to identify potentially responsive documents. Reviewers should consult Appendix B for the complete list of search terms. The search terms were designed to be inclusive and to capture documents relevant to the asserted patents, the accused Lumos products, prior art, licensing, damages, and other key topics in this litigation. Documents that did not hit on any search term have been excluded from the review population, subject to any subsequent expansion of the search term list.
• De-Duplication. De-duplication has been performed at the family level, meaning that duplicate email families (an email and its attachments) have been identified and removed so that only one copy of each unique family appears in the review set. De-duplication was performed across all custodians, with the custodian who is the author or primary recipient of the document being designated as the primary custodian. If a document appears in multiple custodians' files, the duplicate copies are tracked and available for review if needed, but only the primary copy appears in the active review queue.
• Native File Preservation. All native file formats have been preserved during processing. Documents appear in the review platform in their near-native or image formats for review purposes, but the underlying native files are maintained and available for production in native format where required (e.g., spreadsheets and databases). Email threading has been enabled in the review platform to allow reviewers to view email conversations in threaded format, which facilitates efficient review and consistent coding of related messages.
• Date Filter. The primary date range for the review population is January 1, 2015 through June 3, 2022 (the date the complaint was filed in this action). This date range captures the relevant period of patent development, prosecution, and commercialization, as well as the pre-litigation period during which the dispute between OWS and Lumos arose. For documents relating to OWS's ongoing disclosure obligations and any post-filing responsive documents, the date range has been expanded through the present. Reviewers should be aware that documents falling outside the January 1, 2015 to June 3, 2022 primary date range may still appear in the review queue if they are responsive to specific Lumos document requests that are not date-limited or if they relate to continuing obligations.
III. Responsiveness Coding Categories
This section describes the coding categories that reviewers must apply to each document during the first-level review. The coding scheme consists of two components: (1) a primary responsiveness code, which classifies the document's overall responsiveness to Lumos's document requests and OWS's disclosure obligations; and (2) subject matter coding tags, which identify the specific topics and issues to which the document relates. Both components must be applied to every document reviewed.
A. Primary Responsiveness Codes
Each document must be assigned one — and only one — of the following primary responsiveness codes:
• Responsive. This code should be applied to any document that falls within the scope of one or more of Lumos's 98 document requests or OWS's affirmative initial disclosure obligations under FRCP 26(a)(1). A document is responsive if it contains information that is relevant to any claim or defense in this litigation and that is within the scope of a specific document request. Reviewers should construe the document requests broadly, consistent with the Federal Rules of Civil Procedure and Northern District of California practice, and should err on the side of coding a document as responsive where there is a reasonable argument that it falls within the scope of a request.
• Not Responsive. This code should be applied to any document that does not relate to any of Lumos's 98 document requests or to OWS's disclosure obligations. Documents that address topics entirely unrelated to this litigation — such as unrelated HR matters, non-patent-related corporate governance issues, or personal communications — should be coded as Not Responsive. Documents that reference the asserted patents, the accused products, or other key topics in this litigation in only a trivial or passing manner (e.g., an email signature block that lists the patent numbers) may be coded as Not Responsive, but reviewers should exercise caution and escalate borderline cases.
• Potentially Responsive — Needs Second-Level Review. This code should be applied to any borderline document where the reviewer is uncertain whether the document falls within the scope of a Lumos document request or OWS disclosure obligation. This code is intended to be used judiciously — it is not a substitute for the reviewer's exercise of professional judgment, but rather a mechanism for escalating genuinely ambiguous documents for assessment by a more senior reviewer. Documents coded as "Potentially Responsive — Needs Second-Level Review" will be reviewed by Omar Siddiqui or Christy Bauer, who will make a final responsiveness determination.
• Responsive — Hot Document. This code should be applied to any document that is not only responsive but is of particular significance to the substantive issues in this litigation and should be flagged for immediate attorney attention. Hot documents are those that are likely to have a material impact on the case — either positively or negatively for OWS — and that the case team needs to be aware of as early as possible. Examples of hot documents include, but are not limited to: documents in which OWS personnel discuss Lumos's products (LumosBridge™ 800G or LumosEdge™ 400ZR+); documents in which OWS personnel acknowledge differences between OWS's patented designs and Lumos's accused products; internal assessments of patent scope or claim coverage; documents that may undermine OWS's infringement theories or strengthen Lumos's invalidity defenses; and any document that a reviewer believes could be used as an exhibit at deposition or trial. The hot document escalation protocol is described in detail in Section VI.C below.
B. Subject Matter Coding Tags (Non-Exclusive; Multiple Tags May Apply)
In addition to the primary responsiveness code, each responsive or potentially responsive document must be tagged with one or more of the following subject matter coding tags. These tags are non-exclusive — a single document may be tagged with multiple subject matter codes if it relates to more than one topic. The purpose of subject matter tagging is to facilitate efficient retrieval of documents by topic during case preparation, deposition preparation, expert work, and trial preparation.
The following subject matter coding tags are available:
• PAT-567 — Apply this tag to any document that relates to U.S. Patent No. 10,234,567, titled "Integrated Waveguide Coupler with Tapered Mode Converter." This includes documents discussing the invention, its development, its prosecution before the USPTO, its claims, its commercial embodiment, or its relationship to the accused Lumos products.
• PAT-234 — Apply this tag to any document that relates to U.S. Patent No. 10,891,234, titled "Germanium-on-Silicon Photodetector with Graded Buffer Layer." This includes documents discussing the invention, its development, its prosecution, its claims, its commercial embodiment, or its relationship to the accused Lumos products.
• PAT-678 — Apply this tag to any document that relates to U.S. Patent No. 11,045,678, titled "Multi-Channel Optical Transceiver with Integrated WDM." This includes documents discussing the invention, its development, its prosecution, its claims, its commercial embodiment, or its relationship to the accused Lumos products.
• PAT-890 — Apply this tag to any document that relates to U.S. Patent No. 11,312,890, titled "Driver Circuit Architecture for High-Speed Silicon Photonic MZM." This includes documents discussing the invention, its development, its prosecution, its claims, its commercial embodiment, or its relationship to the accused Lumos products.
• PROS-HIST — Apply this tag to any document that constitutes or relates to the patent prosecution history of any of the four asserted patents. This includes office actions, amendments, applicant remarks, examiner interviews, information disclosure statements, declarations, and any internal communications discussing prosecution strategy or the substance of prosecution proceedings.
• PRIOR-ART — Apply this tag to any document that discusses or references prior art, whether cited during prosecution or identified in connection with this litigation. Key prior art references to be alert for include:
• Tanaka, U.S. Patent No. 9,456,012 (inventor: Hideo Tanaka; assigned to OWS during Tanaka's employment);
• Chen & Liu, "Low-Loss Silicon Photonic Waveguide Couplers Using Inverse Taper Design" (2016 journal article);
• EP 3,234,567 A1 (Nordlicht Photonische GmbH, European patent application);
• Iyer & Patel, "High-Bandwidth Silicon Photonic MZM Driver Design for Next-Generation Data Centers" (2018 IEEE conference paper).
Documents referencing other prior art — whether patents, publications, or products — should also be tagged with PRIOR-ART.
• LUMOS-PROD — Apply this tag to any document that references Lumos Photonics, Inc.'s products, including the LumosBridge™ 800G coherent optical transceiver and the LumosEdge™ 400ZR+ pluggable module. This tag should also be applied to documents that reference Lumos's technology generally, even if specific product names are not used, provided the context makes clear that the discussion relates to Lumos's products or technology.
• LICENSING — Apply this tag to any document that relates to patent licensing discussions, licensing strategy, royalty rates, or comparable license agreements. This includes both inbound licensing (licenses granted to OWS by third parties) and outbound licensing (licenses granted by OWS to third parties). Documents discussing potential licensing negotiations with Lumos should also be tagged with LICENSING.
• DAMAGES — Apply this tag to any document that is relevant to damages theories in this litigation. This includes documents containing revenue data, product pricing, market share information, competitive analysis, lost profits calculations or projections, reasonable royalty analysis, cost data, and any other financial or economic information that could be used by a damages expert.
• TECH-DESIGN — Apply this tag to any document that constitutes a technical design document, schematic, circuit layout, simulation result, lab notebook entry, test or characterization data, or other engineering or R&D record related to the patented technologies or OWS's products. This tag captures the core technical documentation relevant to infringement and validity analysis.
• FOUNDRY — Apply this tag to any document that relates to Pinnacle Semiconductor Foundry Co., Ltd. or to the fabrication processes used to manufacture OWS's silicon photonics products. This includes process specifications, design rule manuals, process characterization data, yield reports, and any communications between OWS engineers and Pinnacle regarding fabrication on the 45nm SOI process. These documents may be relevant to manufacturing process comparisons in the infringement analysis.
• VALUATION — Apply this tag to any document that relates to the valuation of OWS's patent portfolio or the asserted patents specifically. This includes documents generated by or in connection with Clearpath IP Valuation Services, Inc.'s analysis of OWS's patent portfolio (aggregate valuation of approximately $215 million; valuation of the four asserted patents at approximately $42.8 million). These documents are relevant to damages analysis and may also implicate privilege issues, as discussed in Section IV.C below.
• FINANCE — Apply this tag to any document that constitutes a financial record, including revenue reports, cost analyses, budgets, financial projections, tax records, and communications with First Pacific Commerce Bank, N.A. regarding the $40 million revolving credit facility. Financial documents are relevant to damages analysis and to Lumos's document requests directed at OWS's financial condition and the economic value of the asserted patents.
• INVESTOR — Apply this tag to any document that constitutes or relates to communications with Vantage Point Capital Partners Fund IV, LP ("Vantage Point"), which holds an approximately 62% ownership interest in OWS, or with other investors, regarding the asserted patents, the litigation, or OWS's IP monetization strategy. These documents may implicate common interest privilege issues and are relevant to Lumos's document requests directed at the value and commercialization of the patented technologies. Reviewers should also flag these documents for privilege review, as discussed in Section IV.C below.
If a reviewer encounters a document that does not fit neatly into any of the above coding categories but is nonetheless responsive, the reviewer should apply the most closely analogous tag(s) and escalate the document to Omar Siddiqui for consideration of whether a supplemental coding tag should be created.
IV. Privilege Review Workflow
The protection of OWS's privileged communications is of paramount importance. An inadvertent production of privileged material could result in waiver of privilege and cause significant harm to OWS's position in this litigation. Accordingly, all reviewers must exercise heightened care in identifying and coding potentially privileged documents. This section describes the applicable privilege categories, the tiered review workflow for privilege determinations, special privilege considerations unique to this matter, and the format for the privilege log.
A. Privilege Categories
The following categories of privilege may be asserted with respect to documents in OWS's collection. Reviewers should be familiar with the general principles underlying each privilege category and should consult with Christy Bauer or Omar Siddiqui if there is any uncertainty about whether a particular privilege applies.
Attorney-Client Privilege (ACP). The attorney-client privilege protects confidential communications between a client and its attorney (or the attorney's agents) that are made for the purpose of obtaining or providing legal advice. For purposes of this review, the following individuals are attorneys whose communications with OWS personnel may be privileged:
• In-House Counsel:
• Sandra Ellison, General Counsel of OWS. Communications between Ms. Ellison and OWS personnel are presumptively privileged to the extent they involve the seeking or providing of legal advice. However, communications in which Ms. Ellison is acting in a purely business capacity (e.g., general corporate management) may not be privileged. Reviewers should evaluate the content and context of each communication to determine whether it reflects legal advice or business judgment.
• Ted Marchetti, Vice President of intellectual Property and Registered Patent Attorney (USPTO Reg. No. 58,304). Mr. Marchetti occupies a dual role as both a business executive and a registered patent attorney. This dual role presents unique privilege challenges, as discussed in detail in Section IV.C below. As a general matter, communications in which Mr. Marchetti is providing legal advice in his capacity as a patent attorney — for example, advising on patentability, claim scope, prosecution strategy, or freedom-to-operate issues — are privileged. Communications in which Mr. Marchetti is acting in his business capacity as VP of IP — for example, making decisions about IP budget, portfolio management priorities, or business strategy — may not be privileged, even if they touch upon patent-related topics.
• Outside Counsel:
• Calderwood & Harkness LLP, the firm's own attorneys, in their capacity as current litigation counsel for OWS. All communications between Calderwood & Harkness attorneys and OWS personnel regarding this litigation are privileged.
• Prior Outside Patent Prosecution Counsel. OWS may have retained outside patent prosecution counsel in connection with the prosecution of the asserted patents before the USPTO. Communications between OWS personnel and any such outside counsel regarding patent prosecution matters are privileged. Reviewers should be alert to communications referencing outside prosecution counsel by name or firm and should flag such documents for privilege review.
Attorney Work Product (AWP). The work product doctrine protects documents and tangible things prepared in anticipation of litigation or for trial by or for a party or its representative. The work product protection applies to materials that were created because of the prospect of litigation, as opposed to materials that would have been created in the ordinary course of business regardless of any litigation threat.
For purposes of this review, the relevant anticipation-of-litigation date is no earlier than March 15, 2022, which is the date of OWS's cease-and-desist letter to Lumos. The cease-and-desist letter reflects OWS's first formal assertion of its patent rights against Lumos and marks the point at which litigation became reasonably foreseeable. A more conservative anticipation-of-litigation date — and the date that should be used for borderline work product determinations — is April 4, 2022, which is the date of Lumos's response letter denying infringement and declining to take a license. Upon receipt of Lumos's denial, litigation became not merely foreseeable but probable, and documents created after that date in connection with the dispute are more clearly within the scope of work product protection.
Documents created before March 15, 2022 are generally not protected as work product, even if they are relevant to the litigation, unless there is evidence that the specific document was created in anticipation of litigation with Lumos or another party. Reviewers should not apply the AWP code to pre-March 15, 2022 documents absent a clear indication that the document was litigation-motivated.
Joint Defense / Common Interest Privilege. Communications between OWS and Vantage Point Capital Partners Fund IV, LP ("Vantage Point") may be protected under the common interest doctrine to the extent that OWS and Vantage Point share a common legal interest in the outcome of this litigation. The common interest doctrine permits parties with a shared legal interest to exchange privileged communications without waiving the attorney-client privilege.
It is critical that the common interest be a legal interest, not merely a commercial or financial interest. Vantage Point's interest in OWS's litigation outcome must be analyzed to determine whether it rises to the level of a common legal interest. As Vantage Point is OWS's majority shareholder (holding approximately 62% of OWS's equity), it has a significant financial stake in the litigation outcome, but that alone is insufficient to establish a common legal interest. Reviewers should flag all communications involving Vantage Point for third-level review by Alan Ngo, who will make the common interest determination.
Patent Agent Privilege. Communications between OWS personnel and Ted Marchetti in his capacity as a registered patent attorney regarding patent prosecution matters before the USPTO may be protected by the patent agent privilege. Under In re Queen's University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016), the scope of the patent agent privilege is limited to communications reasonably necessary and incident to the prosecution of patents before the USPTO. The privilege does not extend to communications regarding litigation strategy, licensing negotiations, or other matters outside the scope of patent prosecution. Reviewers should be mindful of this distinction when reviewing Marchetti communications that involve patent prosecution topics.
B. Privilege Review Tiers
To ensure thorough and accurate privilege determinations, the privilege review process is structured in three tiers:
First-Level Review. All reviewers participating in the first-level document review are responsible for identifying and coding documents that are potentially privileged. During first-level review, each document that may implicate any privilege should be flagged using one of the following privilege codes:
• PRIV-ACP — The document is a confidential communication between OWS and counsel (in-house or outside) made for the purpose of seeking or providing legal advice, and the attorney-client privilege applies.
• PRIV-AWP — The document was prepared in anticipation of litigation or for trial and is protected by the work product doctrine.
• PRIV-BOTH — Both the attorney-client privilege and the work product doctrine apply to the document.
• PRIV-POSSIBLE — The document may be privileged, but the reviewer is uncertain whether a privilege applies or is unable to make a definitive determination. Documents coded as PRIV-POSSIBLE will be escalated to second-level review.
First-level reviewers should apply the PRIV-POSSIBLE code liberally. It is far preferable to over-flag documents for privilege review than to fail to identify a privileged document that is subsequently produced. If there is any doubt about whether a privilege applies, the document should be coded PRIV-POSSIBLE and escalated.
Second-Level Review. Omar Siddiqui or Christy Bauer will review all documents flagged as PRIV-POSSIBLE during the first-level review. The second-level reviewer will make a definitive determination as to whether a privilege applies and will either confirm the privilege coding (upgrading PRIV-POSSIBLE to PRIV-ACP, PRIV-AWP, or PRIV-BOTH) or override the privilege coding (removing the privilege flag if no privilege applies). The second-level reviewer will also review a random sample of documents that were not flagged for privilege during first-level review to identify any potentially privileged documents that may have been missed.
Third-Level Review. Alan Ngo will review the following categories of documents, which present the most complex and consequential privilege issues in this matter:
• Any document for which the privilege determination is contested or unclear after second-level review;
• All documents involving communications with Vantage Point Capital Partners, which require analysis under the common interest doctrine;
• All documents involving Ted Marchetti in his dual legal/business role, where the distinction between legal advice and business judgment is particularly difficult to draw; and
• Any other documents escalated by the second-level reviewer for partner-level determination.
Alan Ngo's privilege determinations are final and binding on the review team.
C. Special Privilege Considerations
This matter presents several recurring privilege issues that require heightened attention from all reviewers. The following guidance is intended to assist reviewers in identifying and properly handling these issues.
Marchetti Dual-Role Documents. As noted above, Ted Marchetti serves OWS in a dual capacity: as Vice President of intellectual Property (a business role) and as a registered patent attorney (a legal role). This dual role means that not all of Marchetti's communications are privileged, even though he is a licensed attorney. The privilege analysis for Marchetti documents depends on the capacity in which Marchetti was acting at the time of the communication.
Communications in which Marchetti provides legal advice in his capacity as a patent attorney — such as advice on patentability, claim scope, prosecution strategy, freedom-to-operate, or infringement opinions — are privileged. Communications in which Marchetti exercises business judgment regarding IP strategy — such as decisions about which patents to pursue, how to allocate the IP budget, or how to prioritize the patent portfolio from a business perspective — may not be privileged, even if they incidentally reference legal concepts.
Because the distinction between Marchetti's legal and business communications can be subtle and context-dependent, all Marchetti documents should be escalated to second-level review. First-level reviewers should code Marchetti documents as PRIV-POSSIBLE at a minimum, with a brief notation in the reviewer comments field indicating the nature of the communication.
Clearpath IP Valuation Communications. Communications between OWS personnel and Jennifer Armitage of Clearpath IP Valuation Services, Inc. regarding the pre-litigation patent portfolio valuation present a potentially complex privilege issue. Clearpath conducted a valuation of OWS's entire patent portfolio (resulting in an aggregate portfolio valuation of approximately $215 million) and a separate valuation of the four asserted patents (valued at approximately $42.8 million). Whether these communications are privileged depends on the purpose for which the valuation was undertaken.
If the Clearpath valuation was commissioned at the direction of counsel in anticipation of litigation — for example, to assist counsel in evaluating damages theories or assessing the merits of the case — the communications and the resulting valuation report are likely protected as attorney work product, and possibly as attorney-client privileged communications if they reflect legal advice or strategy.
If, however, the Clearpath valuation was undertaken for business purposes — for example, at the request of Vantage Point Capital Partners for portfolio valuation or investment analysis purposes, or for financial reporting or credit facility purposes — the communications and valuation report are likely not privileged.
The determination of the purpose of the Clearpath valuation requires factual investigation that is beyond the scope of first-level or second-level review. Accordingly, all documents involving Clearpath IP Valuation Services or Jennifer Armitage must be escalated to Alan Ngo for third-level review. Reviewers should code these documents as PRIV-POSSIBLE and tag them with the VALUATION subject matter tag.
Resolute Litigation Finance Communications. The review team may encounter communications between OWS personnel and Resolute Litigation Finance, LP regarding a potential litigation funding arrangement. OWS considered a term sheet from Resolute for third-party litigation funding but ultimately declined the arrangement. Any such communications should be flagged for privilege review and coded as PRIV-POSSIBLE.
The privilege analysis for litigation finance communications is unsettled. Some courts have recognized a common interest privilege between a litigant and a potential litigation funder, on the theory that the funder and the litigant share a common legal interest in the outcome of the litigation. Other courts have applied a Kovel-type analysis, treating the litigation funder as a functional agent of the attorney for purposes of the attorney-client privilege. The applicability of either theory depends on the specific facts and the governing law. All Resolute-related documents should be escalated to Alan Ngo for determination.
Inventor Communications with Former Employees. As noted in Section II.A, Hideo Tanaka is a former OWS employee who departed the company in 2019. Communications between OWS personnel and Mr. Tanaka that occurred during his employment (2016–2019) are treated like any other intra-company communications and may be privileged if they involve the seeking or providing of legal advice.
Communications with Mr. Tanaka after his departure from OWS (post-2019) require a different analysis. If post-departure communications with Mr. Tanaka were initiated at the direction of counsel for purposes of gathering factual information in anticipation of litigation, such communications may be protected as attorney work product. If, however, the communications were independent of any counsel direction — for example, casual or personal communications between former colleagues — they are not privileged. Reviewers should flag all post-2019 Tanaka communications for second-level review and note in the reviewer comments field whether there is any indication that the communication was at counsel's direction.
Board and Investor Communications. Communications between OWS personnel and the OWS Board of Directors, and between OWS personnel and Vantage Point Capital Partners, regarding the authorization and pursuit of this litigation may be privileged if they convey or seek legal advice. OWS's Board of Directors authorized the filing of this lawsuit on April 28, 2022, and it is expected that the Board received legal advice from counsel in connection with that authorization.
Board and investor communications that convey legal advice, legal strategy, or counsel's assessment of the merits, risks, or costs of the litigation are privileged. Board and investor communications that reflect purely business decisions — such as the commercial rationale for pursuing litigation, the expected impact on OWS's competitive position, or the financial implications of the litigation — are generally not privileged, even if they were made in the context of a discussion about the litigation. Reviewers should be attentive to this distinction and should flag all Board and investor communications for privilege review.
D. Privilege Log Format
All documents that are withheld from production in whole or redacted in part on the basis of privilege must have a corresponding entry in the privilege log. The privilege log is a critical component of OWS's discovery obligations, and incomplete or inaccurate privilege log entries could expose OWS to a motion to compel or an adverse inference. The privilege log must be maintained on a rolling basis and will be consolidated and finalized in connection with each production.
Each privilege log entry must include the following fields:
1. Bates Range or Document ID. The unique document identifier assigned to the withheld or redacted document. For documents withheld in their entirety, the Bates range that would have been assigned is used. For redacted documents, the Bates range of the produced (redacted) version is used.
2. Date. The date of the document. For undated documents, enter "Undated" and provide an estimated date range if possible.
3. Author(s) / From. The author of the document or the sender of the communication, identified by name and title/role.
4. Recipient(s) / To / CC. All recipients of the communication, including To, CC, and BCC recipients, identified by name and title/role. For documents that are not communications (e.g., memoranda, notes), identify the intended audience if known.
5. Document Type. The type of document (e.g., email, memorandum, letter, handwritten notes, presentation, report).
6. General Subject Matter Description. A description of the general subject matter of the document that is sufficient to support the privilege claim without revealing privileged content. The description should be specific enough to allow the opposing party and the Court to evaluate the privilege assertion but should not disclose the substance of the legal advice or work product.
7. Privilege(s) Asserted. Identification of the specific privilege(s) asserted: Attorney-Client Privilege (ACP), Attorney Work Product (AWP), or both (ACP/AWP).
8. Basis for Privilege Assertion. A brief statement of the basis for the privilege assertion, including identification of the attorney involved, the nature of the legal advice or work product, and any other relevant facts supporting the privilege claim.
The privilege log template is attached as Appendix E. Christy Bauer is responsible for maintaining the rolling privilege log and for ensuring that all privilege log entries are complete and accurate. The current consolidated version of the privilege log will be maintained and updated through March 2023, and thereafter on a rolling basis in connection with each supplemental production.
V. Confidentiality Designation Guidelines
This section provides guidance on the application of confidentiality designations to OWS documents in accordance with the Stipulated Protective Order entered by the Court in September 2022. Proper designation of documents is essential to protecting OWS's confidential business information and trade secrets while also complying with the Protective Order's requirement that designations be made in good faith and not used to impede legitimate discovery.
A. Designations Under the Stipulated Protective Order
The Stipulated Protective Order establishes two tiers of confidentiality designation:
CONFIDENTIAL. Information that the producing party in good faith believes constitutes confidential business information, the disclosure of which to unauthorized persons would cause competitive harm to the producing party. Documents designated as CONFIDENTIAL may be disclosed to outside counsel for the receiving party, the receiving party's experts and consultants, and the Court, but may not be disclosed to the receiving party's in-house counsel or business personnel without the producing party's consent or a court order, except as otherwise permitted by the Protective Order.
HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY ("AEO"). Information of an extremely sensitive nature, including trade secrets, highly sensitive technical information, or competitively sensitive financial data, the disclosure of which to in-house counsel or business personnel of the opposing party would cause significant competitive harm to the producing party. Documents designated as AEO may be disclosed only to outside counsel for the receiving party, and to experts and consultants who have signed the Protective Order's undertaking, but may not be disclosed to any in-house counsel, officer, director, or employee of the receiving party.
B. Designation Criteria for OWS Documents
The following guidelines should be applied when determining the appropriate confidentiality designation for OWS documents. These guidelines are intended to ensure that designations are applied consistently and in good faith, in accordance with the standards set forth in the Protective Order.
Documents to be Designated as CONFIDENTIAL:
• General business communications regarding OWS products, including the OWS-400ZR, OWS-800LR chipsets, and OWS's silicon photonics engine product line, to the extent they contain non-public business information but do not reveal trade secrets or highly sensitive technical or financial details;
• Non-public revenue figures, including OWS's fiscal year 2022 revenue of approximately $187.4 million, to the extent such figures are referenced in documents that do not also contain more granular or sensitive financial data;
• General patent portfolio information, including references to OWS's portfolio of 87 issued U.S. patents and 14 pending applications, to the extent such references do not reveal prosecution strategy or other privileged information;
• Communications with customers that do not involve pricing, contract terms, or other highly sensitive commercial information; and
• General licensing strategy discussions that do not reveal specific royalty rates, licensing terms, or damages-related analysis.
Documents to be Designated as HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY:
• Detailed technical design documents and schematics for OWS products, including circuit layouts, device cross-sections, waveguide geometries, and other design specifications that constitute trade secrets or proprietary technical information;
• Source code, firmware, and proprietary algorithms embedded in or used in connection with OWS's silicon photonics products;
• Manufacturing process specifications and Pinnacle Semiconductor Foundry process details, including process flows, design rule parameters, yield data, and other 45nm SOI process information that OWS is obligated to maintain in confidence under its foundry agreement with Pinnacle;
• Detailed financial data, including product-level profit margins, cost structures, bill-of-materials data, and customer-specific pricing information;
• Patent prosecution strategy documents that reflect counsel's legal advice or strategic assessments regarding claim scope, prosecution tactics, or anticipated office action responses;
• Licensing agreements and royalty rate information, including the specific terms and rates of any license agreements that would inform the damages analysis in this litigation;
• Documents reflecting litigation strategy, case assessment, settlement analysis, or other attorney work product (to the extent such documents are produced, which would occur only if privilege is not applicable or has been waived);
• Clearpath IP Valuation Services reports and related communications reflecting the patent portfolio valuation (aggregate value of $215 million; four asserted patents valued at $42.8 million), to the extent such documents are determined to be non-privileged and responsive;
• Communications with Vantage Point Capital Partners Fund IV, LP regarding investment valuation, IP monetization strategy, or other matters reflecting OWS's confidential corporate strategy, to the extent such documents are determined to be non-privileged and responsive.
C. Designation Review
Confidentiality designations will be subject to the following review process:
First-level reviewers are responsible for applying initial confidentiality designations to each responsive document based on the criteria set forth above. When applying a designation, the reviewer should consider the nature and sensitivity of the information contained in the document and select the designation that most appropriately reflects the level of protection warranted.
Omar Siddiqui or Christy Bauer will conduct a second-level review of all documents designated as HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY to ensure that the AEO designation is supportable under the Protective Order's good-faith standard. AEO designations should be reserved for documents that genuinely warrant the highest level of protection; they should not be applied as a default designation for all responsive documents.
Over-designation must be avoided. The Protective Order and Northern District of California practice counsel against blanket or indiscriminate use of the AEO designation. Over-designation can undermine the credibility of the producing party's designations, invite challenges and motions to de-designate, and result in adverse rulings from the Court. Reviewers should apply the AEO designation only where the document contains information that, if disclosed to Lumos's in-house counsel or business personnel, would cause significant competitive harm to OWS.
VI. Quality Control Procedures
The quality and consistency of the document review are essential to the defensibility of OWS's discovery responses and to the efficient prosecution of this case. This section describes the quality control procedures that will be implemented throughout the review process, including sampling, consistency checks, and the hot document escalation protocol.
A. Sampling Protocol
Random quality control sampling will be performed on at least ten percent (10%) of documents reviewed at each level of the review process. The purpose of QC sampling is to identify and correct coding errors, ensure consistent application of the coding categories, and verify that privileged documents are being properly identified and flagged.
• Christy Bauer will perform the first QC pass on responsiveness coding. This involves reviewing a random sample of documents that have been coded as "Responsive," "Not Responsive," and "Potentially Responsive — Needs Second-Level Review" to verify that the primary responsiveness codes are being applied correctly and consistently.
• Omar Siddiqui will perform QC on privilege coding and confidentiality designations. This involves reviewing a random sample of documents that have been flagged for privilege (PRIV-ACP, PRIV-AWP, PRIV-BOTH, PRIV-POSSIBLE) and a random sample of documents that have been designated as CONFIDENTIAL or AEO to verify accuracy and consistency.
• Alan Ngo will perform spot-check QC on hot documents and privilege calls on a weekly basis. This involves reviewing a selection of documents coded as "Responsive — Hot Document" and a selection of privilege determinations to ensure that the review team's judgments are aligned with the case team's expectations and the applicable legal standards.
If QC sampling reveals an error rate exceeding five percent (5%) for any reviewer on any coding dimension, the affected reviewer's work will be subjected to a comprehensive re-review, and Omar Siddiqui will conduct a recalibration session with the reviewer before the reviewer resumes independent review work.
B. Consistency Checks
Consistency in coding is essential, particularly in a review involving multiple reviewers working across a large document population. The following consistency measures will be implemented:
• Weekly Reviewer Calibration Sessions. The review team will hold weekly calibration sessions of approximately 15 to 30 minutes each. During these sessions, Omar Siddiqui or Christy Bauer will present examples of borderline documents encountered during the review, discuss the proper coding for those documents, and address any questions or inconsistencies that have arisen. These sessions are mandatory for all active reviewers.
• Decision Log. A "Decision Log" will be maintained throughout the review process, documenting all significant coding decisions and their rationale. The Decision Log serves as a reference for all reviewers and ensures that coding decisions made early in the review are applied consistently to similar documents encountered later. The Decision Log template is attached as Appendix F. Christy Bauer is responsible for maintaining the Decision Log, and all reviewers are expected to consult it regularly.
• New Document Types and Categories. If a reviewer encounters a new document type or category during the review that does not fit within the existing coding categories described in this memorandum, the reviewer should not attempt to create ad hoc coding categories. Instead, the reviewer should escalate the document to Omar Siddiqui, who will evaluate the document, determine whether a supplemental coding tag or revised guidance is warranted, and issue supplemental coding instructions to the full review team if appropriate.
C. Hot Document Escalation Protocol
The timely identification and escalation of hot documents is critical to the case team's ability to prepare for depositions, develop case strategy, and respond to developments in the litigation. The following escalation protocol applies to all documents coded as "Responsive — Hot Document":
1. Any document coded as "Responsive — Hot Document" must be immediately forwarded to Omar Siddiqui, along with a brief summary (two to three sentences) explaining why the document has been coded as a hot document and identifying the specific issue or concern that the document

MEMORANDUM

MATTER NUMBER: 1014-00003

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