UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS TO DEFENDANT LUMOS PHOTONICS, INC. (Nos. 1–112)
Date Served: November 21, 2022
Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its counsel of record, Calderwood & Harkness LLP, hereby propounds this First Set of Requests for Production of Documents upon Defendant Lumos Photonics, Inc. ("Lumos" or "Defendant"), pursuant to Rules 26 and 34 of the Federal Rules of Civil Procedure and the Local Rules of the United States District Court for the Northern District of California. OWS requests that Lumos produce for inspection and copying all documents and electronically stored information ("ESI") described in Requests Nos. 1 through 112 below within thirty (30) days of service of these Requests, or as otherwise agreed by the parties or ordered by the Court. Production shall be made at the offices of Calderwood & Harkness LLP, One Embarcadero Center, 34th Floor, San Francisco, California 94111, or at such other place as may be mutually agreed upon by the parties, or by electronic production in a mutually agreed format. All documents produced in response to these Requests shall be subject to the Stipulated Protective Order entered by the Court on September 12, 2022 (Dkt. No. 47), governing the designation and handling of materials designated as "Confidential" or "Highly Confidential — Attorneys' Eyes Only."
DEFINITIONS
As used herein, the following terms shall have the meanings set forth below:
1. "Accused Products" means the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver, and all versions, models, configurations, prototypes, development samples, engineering samples, and successor products thereof, including but not limited to all co-packaged optics engines and pluggable transceiver modules designed, developed, manufactured, offered for sale, sold, imported, or used by Lumos during the Relevant Period.
2. "Asserted Patents" or "Patents-in-Suit" means U.S. Patent No. 10,234,567 ("the '567 Patent"), U.S. Patent No. 10,891,234 ("the '234 Patent"), U.S. Patent No. 11,045,678 ("the '678 Patent"), and U.S. Patent No. 11,312,890 ("the '890 Patent").
3. "Asserted Claims" means Claims 1, 4, 7, 12, and 15 of the '567 Patent; Claims 1, 3, 5, 8, and 11 of the '234 Patent; Claims 1, 2, 6, 9, and 14 of the '678 Patent; and Claims 1, 5, 8, and 13 of the '890 Patent.
4. "Communication" means any oral, written, or electronic transmission of information, including but not limited to letters, memoranda, emails, text messages, instant messages, Meridian Solutions or Teams messages, voicemails, telephone calls, video conferences, and any other form of correspondence or exchange of information between two or more persons.
5. "Concerning" or "Relating to" means referring to, regarding, describing, evidencing, constituting, mentioning, pertaining to, reflecting, or having any logical connection to the subject matter referenced in each Request.
6. "Document" or "Documents" shall be given the broadest meaning permitted under Rule 34(a) of the Federal Rules of Civil Procedure and shall include, without limitation, all writings, drawings, graphs, charts, photographs, sound recordings, images, electronically stored information, and other data compilations from which information can be obtained, translated, or otherwise made usable, in any medium, whether paper, electronic, magnetic, optical, or otherwise.
7. "You," "Your," "Lumos," or "Defendant" means Lumos Photonics, Inc. and all of its past and present officers, directors, employees, agents, representatives, consultants, contractors, subsidiaries, affiliates, divisions, predecessors, and successors, including but not limited to the Photonics Division of Lumos Photonics, Inc.
8. "Person" means any natural person, corporation, partnership, limited liability company, association, governmental entity, or any other legal entity.
9. "OWS" or "Plaintiff" means Optiwave Semiconductor Corp.
10. "Identify" (with respect to a document) means to state the date, author, recipient(s), type of document, subject matter, and current location or custodian of such document with sufficient specificity to permit it to be located and retrieved.
11. "LumosBridge" means the LumosBridge™ 800G Optical Engine platform, including all versions, configurations, and engineering iterations thereof.
12. "LumosEdge" means the LumosEdge™ 400ZR+ Pluggable Transceiver module, including all versions in QSFP-DD form factor and all configurations thereof.
13. "Relevant Period" means January 1, 2016 through the date of Lumos's production of documents in response to these Requests.
14. "Third Party" or "Third Parties" means any person or entity other than OWS or Lumos.
INSTRUCTIONS
The following instructions apply to each Request for Production set forth below:
Instruction No. 1 — Scope of Production. These Requests extend to all documents in Lumos's possession, custody, or control, including documents held by Lumos's agents, consultants, attorneys (to the extent not privileged), accountants, representatives, contractors, and any other persons or entities acting on Lumos's behalf or subject to Lumos's direction.
Instruction No. 2 — Form of Production. Documents shall be produced in their native format, or, for paper documents, in single-page TIFF format with searchable text (OCR) and all accompanying metadata, together with load files compatible with standard litigation review platforms (e.g., Relativity, Ashgrove Technologies, or equivalent), as may be further agreed in the parties' ESI protocol. Spreadsheets, presentations, and other dynamic file types shall be produced in native format with extracted metadata.
Instruction No. 3 — Privilege Log. To the extent Lumos withholds or redacts any responsive document on the basis of attorney-client privilege, work product protection, or any other privilege or immunity from disclosure, Lumos shall provide a privilege log in accordance with Federal Rule of Civil Procedure 26(b)(5) and the applicable Local Rules of this Court, identifying as to each withheld or redacted document: (a) the date of the document; (b) the author(s); (c) each recipient and any persons copied; (d) the general subject matter of the document, described with sufficient specificity to permit assessment of the claimed privilege; and (e) the specific basis for the claimed privilege or protection.
Instruction No. 4 — Continuing Obligation. These Requests are continuing in nature. Lumos is required to supplement its responses if additional responsive documents come into Lumos's possession, custody, or control after its initial production, consistent with the obligations imposed by Federal Rule of Civil Procedure 26(e) and any applicable orders of this Court.
Instruction No. 5 — Organizational Documents. Documents that are maintained in the ordinary course of business in file folders, binders, or other organizational groupings shall be produced in such groupings or with metadata or unitization preserving such organization, so as to identify the file or folder in which such documents were maintained.
Instruction No. 6 — Construction of Terms. The terms "and" and "or" shall be construed both conjunctively and disjunctively to bring within the scope of each Request all documents that might otherwise be construed to be outside its scope. The singular includes the plural and vice versa. The term "including" means "including but not limited to." Use of the term "any" shall be construed to mean "each and every" as well as "any one or more."
Instruction No. 7 — Objections. If Lumos objects to any Request in whole or in part, Lumos shall state the specific grounds for each objection with particularity and shall produce all non-objectionable responsive documents. An objection to part of a Request shall not be deemed an objection to the remainder of the Request, and Lumos shall produce all responsive documents as to the non-objectionable portions.
Instruction No. 8 — Protective Order. Documents designated as "Confidential" or "Highly Confidential — Attorneys' Eyes Only" shall be produced and handled in accordance with the Stipulated Protective Order entered by the Court on September 12, 2022 (Dkt. No. 47) in this action.
REQUESTS FOR PRODUCTION
A. Accused Products — Design, Development, and Technical Documentation
REQUEST FOR PRODUCTION NO. 1:
All documents concerning the design and development of the LumosBridge 800G Optical Engine, including but not limited to design specifications, design review documents, design change orders, engineering notebooks, simulation results, layout files (including GDS-II and OASIS files), design rule check (DRC) reports, and any other documents reflecting the conception, development, iteration, or finalization of the design of the LumosBridge platform.
REQUEST FOR PRODUCTION NO. 2:
All documents concerning the design and development of the LumosEdge 400ZR+ Pluggable Transceiver, including but not limited to design specifications, design review documents, design change orders, engineering notebooks, simulation results, layout files (including GDS-II and OASIS files), design rule check (DRC) reports, and any other documents reflecting the conception, development, iteration, or finalization of the design of the LumosEdge platform.
REQUEST FOR PRODUCTION NO. 3:
All technical specifications, product datasheets, application notes, user guides, and technical manuals for the LumosBridge 800G Optical Engine and all configurations thereof, including any such documents prepared for internal use, for distribution to customers or potential customers, or for publication on Lumos's website or at industry conferences.
REQUEST FOR PRODUCTION NO. 4:
All technical specifications, product datasheets, application notes, user guides, and technical manuals for the LumosEdge 400ZR+ Pluggable Transceiver and all configurations thereof, including any such documents prepared for internal use, for distribution to customers or potential customers, or for publication on Lumos's website or at industry conferences.
REQUEST FOR PRODUCTION NO. 5:
All documents concerning the waveguide coupling architecture used in the Accused Products, including any tapered mode converters, segmented taper couplers, fiber-to-chip coupling structures, and any adiabatic or non-adiabatic optical mode transition structures, including design documents, simulation reports, test results, and any internal or external communications discussing the selection, optimization, or performance of such waveguide coupling architectures.
REQUEST FOR PRODUCTION NO. 6:
All documents concerning the design, simulation, fabrication, and testing of any segmented (non-continuous) taper structures, discrete coupling sections, or other waveguide coupling elements used in the Accused Products, including documents comparing segmented taper approaches to continuous taper approaches, documents evaluating coupling efficiency, insertion loss, polarization sensitivity, or other performance metrics, and any presentations or reports analyzing the relative advantages and disadvantages of different taper geometries.
REQUEST FOR PRODUCTION NO. 7:
All documents concerning the germanium-on-silicon photodetector architecture used in the Accused Products, including the design, fabrication, and characterization of any germanium photodetectors, silicon-germanium buffer layers, and absorber layers, and all documents relating to the responsivity, bandwidth, dark current, and other performance characteristics of such photodetectors.
REQUEST FOR PRODUCTION NO. 8:
All documents concerning the step-graded SiGe buffer layer used in the Accused Products' photodetectors, including documents identifying the germanium atomic fraction at each step (including but not limited to compositions of approximately 0.25, 0.50, 0.75, and 1.0), the number of discrete composition steps, the thickness of each layer, the growth conditions, and the rationale for selecting a step-graded versus continuously graded design, including any documents evaluating the impact of the step-graded buffer on threading dislocation density, dark current, or overall photodetector performance.
REQUEST FOR PRODUCTION NO. 9:
All documents concerning the wavelength-division multiplexing (WDM) elements used in the Accused Products, including any integrated WDM components, arrayed waveguide gratings (AWGs), echelle gratings, ring resonator multiplexers, and related optical filtering structures, and all documents relating to the channel spacing, passband shape, insertion loss, crosstalk, and other performance characteristics of such WDM elements.
REQUEST FOR PRODUCTION NO. 10:
All documents concerning the integration approach used in the LumosBridge 800G platform for combining III-V gain elements with the silicon photonic integrated circuit (PIC), including documents relating to micro-transfer printing, heterogeneous bonding, flip-chip bonding, or any other integration technique, and all documents evaluating the suitability, yield, cost, and scalability of each integration approach considered.
REQUEST FOR PRODUCTION NO. 11:
All documents concerning the distinction between monolithic integration and heterogeneous integration as applied to the design and fabrication of the Accused Products, including any internal analyses, presentations, white papers, or communications discussing the relative merits and drawbacks of monolithic and heterogeneous approaches to photonic integration, and any documents addressing whether the integration approach used in the Accused Products constitutes monolithic integration, heterogeneous integration, or a hybrid approach.
REQUEST FOR PRODUCTION NO. 12:
All documents concerning the driver circuit architecture used in the Accused Products for driving silicon photonic Mach-Zehnder modulators, including pre-emphasis equalization circuits, driver amplifier designs, modulator bias control circuitry, and any other circuit elements associated with the electrical driving of the optical modulators, including circuit schematics, simulation results, layout files, and test data.
REQUEST FOR PRODUCTION NO. 13:
All documents concerning the integration of the driver circuit and the silicon photonic Mach-Zehnder modulator in the Accused Products, including whether the driver and modulator are fabricated on a common substrate or on separate dies, and the interconnection method employed (e.g., flip-chip bonding, copper pillar micro-bumps, wire bonding, interposer routing, or any other method), and all documents evaluating the performance implications of the chosen integration and interconnection approach.
REQUEST FOR PRODUCTION NO. 14:
All documents concerning the CMOS driver die used in the Accused Products, including its fabrication process (including process node and foundry identity), doping profiles, process layers, metallization stack, and connection to the silicon photonic modulator die via copper pillar micro-bumps or other packaging-level interconnects, and all documents describing the electrical and thermal performance of the CMOS driver die.
REQUEST FOR PRODUCTION NO. 15:
All fabrication process flow documents, process of record (POR) documents, and process integration documents for the Accused Products, including documents describing front-end-of-line (FEOL) and back-end-of-line (BEOL) processing sequences, lithography steps, etch recipes, deposition steps, implantation steps, chemical mechanical polishing (CMP) steps, and any other process steps used in the fabrication of the silicon photonic integrated circuits in the Accused Products.
REQUEST FOR PRODUCTION NO. 16:
All documents concerning the bill of materials (BOM) for the Accused Products, including component lists, supplier identification, part numbers, quantities, and cost breakdowns for each component, subassembly, and finished product.
REQUEST FOR PRODUCTION NO. 17:
All documents relating to the foundry or fabrication facility used to manufacture the Accused Products, including agreements with fabrication partners, process development agreements, shuttle run documentation, multi-project wafer (MPW) run records, and any other documents reflecting the terms and conditions under which the Accused Products or their components are fabricated.
REQUEST FOR PRODUCTION NO. 18:
All documents concerning the testing, qualification, and reliability characterization of the Accused Products, including wafer-level testing data, package-level testing data, system-level testing data, accelerated life testing results, temperature cycling results, humidity testing results, and any other qualification or reliability data generated during the development or production of the Accused Products.
REQUEST FOR PRODUCTION NO. 19:
All documents concerning prototypes, engineering samples, alpha and beta units, and pre-production versions of the Accused Products, including documents reflecting the design, fabrication, testing, and evaluation of such units, and any documents comparing the performance of prototype or pre-production units to final production units.
REQUEST FOR PRODUCTION NO. 20:
All block diagrams, system architecture diagrams, optical schematics, and electrical schematics for the Accused Products, including any diagrams or schematics prepared at any stage of the design and development process, and any diagrams or schematics provided to customers, partners, or potential customers.
REQUEST FOR PRODUCTION NO. 21:
All documents concerning any changes, revisions, or modifications to the design of the Accused Products made at any time during the Relevant Period, including the reason for each change, the engineering change notice (ECN) or equivalent documentation authorizing the change, and any documents assessing the impact of such changes on product performance, cost, or schedule.
REQUEST FOR PRODUCTION NO. 22:
All documents concerning any design-around efforts, redesign efforts, or alternative design approaches considered or implemented for the Accused Products at any time, including efforts taken in response to or in anticipation of OWS's patent portfolio or any of the Asserted Patents, and all documents evaluating the feasibility, cost, performance impact, and schedule impact of any such design-around or redesign effort.
REQUEST FOR PRODUCTION NO. 23:
All source code, firmware, and HDL (hardware description language) code, including Verilog and VHDL files, for the driver circuits and control circuitry of the Accused Products, including any register transfer level (RTL) descriptions, synthesis scripts, place-and-route files, and timing reports associated with such code.
REQUEST FOR PRODUCTION NO. 24:
All documents provided to or received from customers concerning the technical specifications, performance characteristics, or architecture of the Accused Products, including customer-facing presentations, evaluation reports, characterization data, and any documents reflecting customer feedback on the design or performance of the Accused Products.
REQUEST FOR PRODUCTION NO. 25:
All documents concerning the co-packaged optics engine architecture used in the LumosBridge 800G platform, including documents describing the integration of photonic and electronic components on a common package or substrate, documents evaluating the thermal management, signal integrity, power delivery, and mechanical design of the co-packaged optics engine, and any documents comparing the co-packaged optics approach to alternative transceiver form factors.
B. Sales, Revenue, and Commercial Information
REQUEST FOR PRODUCTION NO. 26:
All documents reflecting or concerning the revenue generated from sales of the LumosBridge 800G Optical Engine from its first shipment in Q1 2022 through the end of the Relevant Period, broken down by quarter, customer, geography, and product configuration, including but not limited to internal revenue tracking reports, sales summaries, and financial system extracts.
REQUEST FOR PRODUCTION NO. 27:
All documents reflecting or concerning the revenue generated from sales of the LumosEdge 400ZR+ Pluggable Transceiver from its initial production in Q3 2021 through the end of the Relevant Period, broken down by quarter, customer, geography, and product configuration, including but not limited to internal revenue tracking reports, sales summaries, and financial system extracts.
REQUEST FOR PRODUCTION NO. 28:
All documents reflecting or concerning the combined revenue of the Accused Products during calendar year 2022, including without limitation the approximately $148.6 million reported in Lumos's 10-K filing and/or discovery responses in this action, and any internal reports, worksheets, or analyses supporting or reconciling that figure.
REQUEST FOR PRODUCTION NO. 29:
All documents reflecting the unit prices for each configuration of the LumosBridge 800G Optical Engine during the Relevant Period, including the range of approximately $1,200 to $1,800 per unit, and any documents reflecting price changes, pricing negotiations, or pricing approvals for the LumosBridge platform.
REQUEST FOR PRODUCTION NO. 30:
All documents reflecting the unit prices for each configuration of the LumosEdge 400ZR+ Pluggable Transceiver during the Relevant Period, including the range of approximately $600 to $900 per unit, and any documents reflecting price changes, pricing negotiations, or pricing approvals for the LumosEdge platform.
REQUEST FOR PRODUCTION NO. 31:
All documents reflecting or concerning the number of units of each Accused Product sold, offered for sale, or shipped during the Relevant Period, broken down by quarter, customer, geography, and product configuration.
REQUEST FOR PRODUCTION NO. 32:
All documents reflecting or concerning Lumos's cost of goods sold (COGS) and gross margin for the Accused Products during the Relevant Period, including without limitation standard cost reports, variance analyses, and any other documents reflecting the fully loaded manufacturing cost of each Accused Product.
REQUEST FOR PRODUCTION NO. 33:
All documents reflecting or concerning Lumos's operating expenses, including research and development expenses, sales and marketing expenses, and general and administrative expenses allocable to the Accused Products during the Relevant Period, and any documents reflecting the methodology used by Lumos to allocate such expenses to the Accused Products or to its Photonics Division.
REQUEST FOR PRODUCTION NO. 34:
All purchase orders, sales orders, invoices, and contracts for the sale of the Accused Products during the Relevant Period, including any master supply agreements, volume purchase agreements, and framework agreements with customers of the Accused Products.
REQUEST FOR PRODUCTION NO. 35:
All documents concerning customer lists, customer identities, and customer relationships for the Accused Products, including the identities of hyperscale data center customers, cloud service providers, telecommunications carriers, and any other end-users or channel partners that have purchased or evaluated the Accused Products.
REQUEST FOR PRODUCTION NO. 36:
All documents concerning sales of the Accused Products to customers located in the Northern District of California, including customers headquartered in the district, and any documents reflecting the volume, revenue, or other metrics associated with such sales.
REQUEST FOR PRODUCTION NO. 37:
All documents reflecting the approximately 22% of U.S. revenue generated from customers in the Northern District of California, including any internal analyses, reports, or data supporting that figure, and any documents reflecting the methodology used to calculate that percentage.
REQUEST FOR PRODUCTION NO. 38:
All pricing proposals, quotes, bids, and competitive analyses concerning the Accused Products prepared by or on behalf of Lumos during the Relevant Period, including any documents comparing the pricing of the Accused Products to the pricing of competing products.
REQUEST FOR PRODUCTION NO. 39:
All documents concerning marketing, advertising, promotional materials, trade show presentations, webinar materials, and press releases related to the Accused Products during the Relevant Period, including materials presented at industry conferences such as OFC, ECOC, DesignCon, or any other trade show or conference.
REQUEST FOR PRODUCTION NO. 40:
All documents concerning Lumos's forecasts, projections, and business plans relating to the Accused Products during the Relevant Period, including revenue forecasts, unit volume projections, market penetration estimates, and strategic plans.
REQUEST FOR PRODUCTION NO. 41:
All documents concerning any discounts, rebates, volume pricing arrangements, or other pricing concessions offered to customers of the Accused Products during the Relevant Period, including any agreements or policies governing such discounts or concessions.
REQUEST FOR PRODUCTION NO. 42:
All documents concerning Lumos's competitive positioning of the Accused Products relative to OWS's products, including but not limited to the OWS-400ZR and OWS-800LR coherent optical transceiver chipsets, and any competitive intelligence reports, win/loss analyses, or head-to-head product comparisons prepared by or on behalf of Lumos.
REQUEST FOR PRODUCTION NO. 43:
All documents from Lumos's 2021 Nasdaq IPO (ticker: LMPH) relating to or describing the Accused Products, their underlying technology, revenue or revenue projections, market position, or competitive landscape, including the registration statement (Form S-1), prospectus, investor presentations, and roadshow materials.
REQUEST FOR PRODUCTION NO. 44:
All quarterly and annual SEC filings (Forms 10-Q, 10-K, and 8-K) and earnings call transcripts filed or published by Lumos during the Relevant Period that discuss the Accused Products, silicon photonics technology, OWS, or the patent litigation that is the subject of this action.
REQUEST FOR PRODUCTION NO. 45:
All documents concerning the contribution of the Accused Products to Lumos's overall revenue of approximately $312.8 million for fiscal year 2022, including any internal segment reporting, product line reporting, or divisional financial analyses reflecting the revenue attributable to the Accused Products as a percentage of total company revenue.
C. Patents-in-Suit — Awareness, Analysis, and Prior Art
REQUEST FOR PRODUCTION NO. 46:
All documents concerning Lumos's knowledge of or awareness of U.S. Patent No. 10,234,567 (the '567 Patent) at any time, including but not limited to any communications, memoranda, presentations, emails, or other documents in which the '567 Patent is discussed, referenced, or analyzed.
REQUEST FOR PRODUCTION NO. 47:
All documents concerning Lumos's knowledge of or awareness of U.S. Patent No. 10,891,234 (the '234 Patent) at any time, including but not limited to any communications, memoranda, presentations, emails, or other documents in which the '234 Patent is discussed, referenced, or analyzed.
REQUEST FOR PRODUCTION NO. 48:
All documents concerning Lumos's knowledge of or awareness of U.S. Patent No. 11,045,678 (the '678 Patent) at any time, including but not limited to any communications, memoranda, presentations, emails, or other documents in which the '678 Patent is discussed, referenced, or analyzed.
REQUEST FOR PRODUCTION NO. 49:
All documents concerning Lumos's knowledge of or awareness of U.S. Patent No. 11,312,890 (the '890 Patent) at any time, including but not limited to any communications, memoranda, presentations, emails, or other documents in which the '890 Patent is discussed, referenced, or analyzed.
REQUEST FOR PRODUCTION NO. 50:
All documents concerning any analysis, evaluation, opinion, or assessment of the validity, enforceability, or scope of any of the Asserted Patents, including any opinions of counsel, freedom-to-operate analyses, invalidity analyses, non-infringement analyses, claim charts, and any other legal or technical analyses performed by or on behalf of Lumos relating to the Asserted Patents or any claim thereof.
REQUEST FOR PRODUCTION NO. 51:
All documents concerning any prior art search or investigation conducted by or on behalf of Lumos relating to the subject matter of any of the Asserted Patents, including search reports, search queries, search results, and any analysis or evaluation of the prior art identified in such searches.
REQUEST FOR PRODUCTION NO. 52:
All documents concerning U.S. Patent No. 9,456,012 (the Tanaka patent, issued September 6, 2016), including any analysis of that patent, any assessment of the Tanaka patent's teachings in relation to the Asserted Patents, any use of the Tanaka patent's teachings in the design of the Accused Products, and all documents reflecting Lumos's awareness of the relationship between Hideo Tanaka and OWS.
REQUEST FOR PRODUCTION NO. 53:
All documents concerning the publication by Chen & Liu, "Segmented Taper Coupler Design for Low-Loss Fiber-to-Chip Coupling," Journal of Photonic Integration, Vol. 14, No. 3, pp. 217–229 (2016), cited by Lumos as prior art against the '567 Patent, including any analyses evaluating the relevance of the Chen & Liu publication to the claims of the '567 Patent or any other Asserted Patent.
REQUEST FOR PRODUCTION NO. 54:
All documents concerning European Patent Application EP 3,234,567 A1 (published August 2, 2017, applicant: Nordlicht Photonische GmbH), cited by Lumos as prior art against the '234 Patent, including any analyses evaluating the relevance of the Nordlicht application to the claims of the '234 Patent or any other Asserted Patent.
REQUEST FOR PRODUCTION NO. 55:
All documents concerning the publication by Iyer & Patel, "Co-Design of Modulator Drivers and Silicon Photonic Mach-Zehnder Structures," IEEE Transactions on Circuits and Systems, Vol. 65, No. 8, pp. 2701–2713 (2018), cited by Lumos as prior art against the '890 Patent, including any analyses evaluating the relevance of the Iyer & Patel publication to the claims of the '890 Patent or any other Asserted Patent.
REQUEST FOR PRODUCTION NO. 56:
All documents concerning any prior art not yet identified in this litigation that Lumos contends anticipates or renders obvious any claim of any of the Asserted Patents under 35 U.S.C. §§ 102 or 103, including any prior art patents, printed publications, products, systems, methods, processes, or other references.
REQUEST FOR PRODUCTION NO. 57:
All documents concerning any prior art search conducted by or on behalf of Lumos in connection with Lumos's own patent prosecution activities relating to silicon photonics, waveguide coupling, germanium photodetectors, WDM integration, or modulator driver circuits, to the extent such searches identified or considered any of the Asserted Patents or the prior art references cited in this litigation.
REQUEST FOR PRODUCTION NO. 58:
All documents concerning any contention that any of the Asserted Patents are invalid under 35 U.S.C. § 112 for lack of written description, lack of enablement, or indefiniteness, including any technical analyses, expert opinions, or legal memoranda supporting such contentions.
REQUEST FOR PRODUCTION NO. 59:
All documents concerning the prosecution histories of the Asserted Patents, including any analysis of amendments made during prosecution, examiner interviews, office action responses, applicant remarks, terminal disclaimers, and any other prosecution events, and any documents reflecting Lumos's analysis of the scope or effect of such prosecution history events.
REQUEST FOR PRODUCTION NO. 60:
All documents concerning any prosecution history estoppel arguments Lumos intends to assert with respect to any of the Asserted Patents, including but not limited to arguments relating to the addition of the limitation "adiabatically coupled" to the claims of the '567 Patent during prosecution and the addition of the limitation "monolithically formed" to the claims of the '678 Patent during prosecution, and any documents analyzing the scope of equivalents surrendered by such amendments.
REQUEST FOR PRODUCTION NO. 61:
All documents concerning any opinion of counsel or legal advice received by Lumos regarding OWS's patent portfolio or any of the Asserted Patents, including but not limited to opinions relating to infringement, validity, enforceability, or freedom to operate. To the extent Lumos asserts privilege over any such documents, Lumos shall identify them on its privilege log in accordance with Instruction No. 3.
REQUEST FOR PRODUCTION NO. 62:
All documents concerning any inter partes review (IPR), post-grant review (PGR), ex parte reexamination, or other proceeding before the United States Patent and Trademark Office that Lumos has considered, investigated, or filed with respect to any of the Asserted Patents, including any petitions, preliminary analyses, prior art evaluations, and communications with counsel regarding such proceedings.
REQUEST FOR PRODUCTION NO. 63:
All documents concerning OWS, OWS's products (including the OWS-400ZR and OWS-800LR coherent optical transceiver chipsets), or OWS's patent portfolio, including any competitive intelligence reports, technology assessments, market analyses, or internal communications discussing OWS or its technology.
REQUEST FOR PRODUCTION NO. 64:
All documents concerning the cease-and-desist letter dated March 15, 2022 sent by OWS to Lumos, and Lumos's April 4, 2022 response denying infringement, including any internal analyses, discussions, or communications relating to or prompted by the receipt of such letter, and any documents reflecting Lumos's investigation of the claims raised in the letter.
REQUEST FOR PRODUCTION NO. 65:
All documents concerning any communications between Lumos and any third party regarding the Asserted Patents or OWS's patent portfolio, including but not limited to communications with customers, suppliers, investors, analysts, or industry participants.
D. Lumos's Own Patent Portfolio and Licensing
REQUEST FOR PRODUCTION NO. 66:
All documents identifying Lumos's patent portfolio, including all issued U.S. and foreign patents and pending patent applications relating to silicon photonics, waveguide coupling, germanium photodetectors, optical transceivers, WDM integration, and modulator driver architectures, including patent portfolio databases, docketing reports, and portfolio summaries.
REQUEST FOR PRODUCTION NO. 67:
All documents concerning any patents owned by or assigned to Lumos that Lumos contends cover the same or similar subject matter as any of the Asserted Patents, including any claim charts, comparisons, or analyses evaluating the overlap or relationship between Lumos's patents and the Asserted Patents.
REQUEST FOR PRODUCTION NO. 68:
All documents concerning any patent license agreements to which Lumos is a party, whether as licensor or licensee, relating to silicon photonics technology, optical transceiver technology, or any technology practiced in the Accused Products, including the fully executed agreements, amendments, and any related correspondence.
REQUEST FOR PRODUCTION NO. 69:
All documents concerning any license or cross-license negotiations between Lumos and any third party relating to silicon photonics, waveguide coupling, photodetectors, or modulator driver technology during the Relevant Period, including term sheets, draft agreements, negotiation correspondence, and summaries of negotiation positions.
REQUEST FOR PRODUCTION NO. 70:
All documents concerning royalty rates paid or received by Lumos under any patent license agreement relating to silicon photonics or optical transceiver technology, including agreements specifying running royalties, lump-sum payments, milestone payments, or any combination thereof.
REQUEST FOR PRODUCTION NO. 71:
All documents concerning any patent infringement claims or lawsuits (other than this action) asserted by or against Lumos relating to silicon photonics technology, optical transceiver technology, or any technology practiced in the Accused Products, including complaints, counterclaims, settlement agreements, and consent judgments.
REQUEST FOR PRODUCTION NO. 72:
All documents concerning the inventorship and development of any inventions by Dr. Mei-Lin Chen, Dr. Nikolai Petrov, or any other Lumos employee relating to waveguide coupling, germanium photodetectors, WDM integration, or modulator driver architectures used in the Accused Products, including invention disclosure forms, laboratory notebooks, internal presentations, and communications discussing the development of such inventions.
REQUEST FOR PRODUCTION NO. 73:
All invention disclosures, invention records, and patent applications filed by Lumos relating to waveguide coupling, germanium photodetectors, WDM integration, or modulator driver architectures used in the Accused Products, including any provisional applications, non-provisional applications, continuations, continuations-in-part, and divisional applications.
REQUEST FOR PRODUCTION NO. 74:
All documents concerning any technology transfer, assignment, or acquisition by Lumos of intellectual property rights from any third party relating to the technology practiced in the Accused Products, including assignment agreements, technology transfer agreements, and asset purchase agreements.
REQUEST FOR PRODUCTION NO. 75:
All documents concerning comparable license agreements in the silicon photonics industry, including royalty rates, lump-sum payments, and other financial terms, that Lumos may rely upon in this litigation or that Lumos has analyzed or reviewed in connection with this litigation or in connection with its own licensing activities.
REQUEST FOR PRODUCTION NO. 76:
All documents concerning Lumos's valuation or assessment of its own intellectual property portfolio, including any valuation analyses, appraisals, or assessments performed by or on behalf of Lumos in connection with the 2021 IPO, financing activities, acquisition discussions, or any other business purpose.
REQUEST FOR PRODUCTION NO. 77:
All documents concerning any discussions or negotiations between Lumos and OWS regarding a potential license, cross-license, or other intellectual property-related arrangement prior to the filing of this action, including any term sheets, proposals, correspondence, and meeting notes.
REQUEST FOR PRODUCTION NO. 78:
All documents concerning any agreements, understandings, or communications between Lumos and Ridgeline Asset Management, LLC or any other institutional shareholder regarding intellectual property strategy, patent licensing strategy, or the litigation that is the subject of this action.
REQUEST FOR PRODUCTION NO. 79:
All documents concerning any patent pledges, encumbrances, security interests, or liens on Lumos's patent portfolio, including any agreements pursuant to which Lumos has pledged or encumbered its patents as collateral for financing or other purposes.
REQUEST FOR PRODUCTION NO. 80:
All documents concerning any industry standard-essential patent (SEP) commitments or fair, reasonable, and non-discriminatory (FRAND) licensing obligations of Lumos relating to the technology practiced in the Accused Products, including any commitments made to standard-setting organizations such as IEEE, OIF, or CW-WDM MSA.
E. Lumos Personnel and Organizational Information
REQUEST FOR PRODUCTION NO. 81:
All organizational charts, reporting structures, and personnel directories for Lumos's Photonics Division, engineering groups, and product development groups responsible for the design, development, manufacture, marketing, and sale of the Accused Products during the Relevant Period.
REQUEST FOR PRODUCTION NO. 82:
All documents identifying each person involved in the conception, design, development, testing, manufacture, marketing, or sale of the Accused Products, including their roles and responsibilities, titles, reporting relationships, and dates of involvement.