UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff,
v.
LUMOS PHOTONICS, INC.,
Defendant.
Case No. 5:22-cv-03417-EJD
Hon. Edward J. Torvelis
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S RESPONSES AND OBJECTIONS TO DEFENDANT LUMOS PHOTONICS, INC.'S FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS (NOS. 1–98)
C&H Matter No. 1014-00003
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I. INTRODUCTORY STATEMENT
Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its attorneys of record, Calderwood & Harkness LLP, hereby responds and objects to Defendant Lumos Photonics, Inc.'s ("Lumos" or "Defendant") First Set of Requests for Production of Documents (Nos. 1–98), served on Plaintiff on November 7, 2022, pursuant to Rules 26 and 34 of the Federal Rules of Civil Procedure.
OWS serves these Responses and Objections within the time permitted by Federal Rule of Civil Procedure 34(b)(2)(A), as extended by the parties' stipulation entered by the Court on November 21, 2022 (Dkt. No. 47).
All documents produced by OWS in connection with these Responses and Objections shall be subject to the terms and conditions of the Stipulated Protective Order Governing Confidential and Highly Confidential — Attorneys' Eyes Only Materials, entered by the Court on September 16, 2022 (Dkt. No. 32) (the "Protective Order"). OWS reserves the right to designate any documents produced herein as "Confidential" or "Highly Confidential — Attorneys' Eyes Only" in accordance with the Protective Order. OWS further reserves all rights and objections with respect to the admissibility, authenticity, relevance, and use of any documents produced in response to these Requests.
These Responses and Objections are made without prejudice to OWS's right to rely on subsequently discovered facts or information. OWS's investigation and discovery in this matter are continuing, and OWS expressly reserves the right to amend, modify, supplement, or otherwise revise any of its responses herein as additional facts and information are discovered.
II. GENERAL OBJECTIONS
The following General Objections apply to each and every one of Lumos's Requests for Production of Documents, Nos. 1 through 98, and are incorporated by reference into each specific response set forth below as if stated in full therein. The assertion of these General Objections shall not be deemed a waiver of any other objection, whether general or specific, that OWS may assert.
General Objection No. 1 — Attorney-Client Privilege and Attorney Work Product
OWS objects to each Request to the extent it seeks documents or communications protected by the attorney-client privilege, the work product doctrine, and/or any other applicable privilege or protection, including but not limited to the common-interest privilege, the joint-defense privilege, and the protections afforded to trial preparation materials under Federal Rule of Civil Procedure 26(b)(3) and to expert-related communications under Federal Rule of Civil Procedure 26(b)(4). OWS will not produce any documents that are protected by the attorney-client privilege or that constitute attorney work product, whether such documents were prepared by attorneys at Calderwood & Harkness LLP, by OWS's patent prosecution counsel, or by any other attorney acting on behalf of OWS. To the extent that documents responsive to any Request are withheld on the basis of privilege or work product protection, OWS will provide a privilege log on a rolling basis in accordance with Federal Rule of Civil Procedure 26(b)(5)(A), identifying such documents and the basis for their withholding.
General Objection No. 2 — Overbreadth and Undue Burden
OWS objects to each Request to the extent it is overly broad, unduly burdensome, or disproportionate to the needs of the case, as required by Federal Rule of Civil Procedure 26(b)(1). Many of Lumos's Requests use sweeping language (such as "all documents relating to") without reasonable limitation as to time period, subject matter, or custodian, and would, if answered as literally written, require OWS to conduct an unreasonably expensive, time-consuming, and burdensome review of vast quantities of documents, many of which are unlikely to yield relevant, non-duplicative information. OWS will construe overly broad Requests in a reasonable manner, consistent with the proportionality principles of Rule 26(b)(1), and will produce responsive, non-privileged documents that are reasonably accessible and within the scope as so construed. OWS's decision to respond to any Request notwithstanding this objection does not constitute a waiver of this objection or a concession that the Request is reasonably tailored.
General Objection No. 3 — Relevance
OWS objects to each Request to the extent it seeks documents that are neither relevant to any party's claim or defense nor proportional to the needs of the case. In evaluating proportionality, OWS has considered the factors enumerated in Federal Rule of Civil Procedure 26(b)(1), including: the importance of the issues at stake in this action (which involves OWS's claims of patent infringement and Lumos's asserted defenses of non-infringement and invalidity); the amount in controversy; the parties' relative access to relevant information; the parties' resources; the importance of the discovery in resolving the issues; and whether the burden or expense of the proposed discovery outweighs its likely benefit. To the extent that any Request seeks information that is irrelevant, collateral, or unrelated to the patent claims, defenses, and damages theories at issue in this case, OWS objects to such Request and will not produce documents responsive thereto.
General Objection No. 4 — Vagueness and Ambiguity
OWS objects to each Request to the extent it is vague, ambiguous, or uses undefined or unclear terms that render it susceptible to multiple interpretations or otherwise fail to describe with reasonable particularity the documents sought, as required by Federal Rule of Civil Procedure 34(b)(1)(A). Where OWS elects to respond to such Requests notwithstanding this objection, OWS will interpret such vague or ambiguous terms according to their plain and ordinary meaning as understood by a reasonable person and respond accordingly. OWS's interpretation of any such term shall not be deemed a binding admission as to the meaning of that term for any other purpose in this litigation.
General Objection No. 5 — Trade Secrets and Confidential Business Information
OWS objects to each Request to the extent it seeks OWS's trade secrets, proprietary technical information, confidential research and development materials, confidential financial data, or other confidential business information, the disclosure of which would cause competitive or commercial harm to OWS. Much of the information sought by Lumos's Requests — including OWS's product designs, manufacturing processes, revenue figures, profit margins, customer data, and patent portfolio valuations — constitutes commercially sensitive information that extends well beyond the scope of the claims and defenses in this action. To the extent OWS produces documents containing trade secret or confidential business information in response to these Requests, such documents will be designated as "Confidential" or "Highly Confidential — Attorneys' Eyes Only" in accordance with the Protective Order, and OWS reserves all rights to seek additional protections from the Court as necessary to protect such information from disclosure or misuse.
General Objection No. 6 — Third-Party Confidential Information
OWS objects to each Request to the extent it seeks confidential, proprietary, or trade secret information belonging to third parties, including but not limited to Pinnacle Semiconductor Foundry Co., Ltd. ("Pinnacle"), Vantage Point Capital Partners Fund IV, LP ("Vantage Point"), First Pacific Commerce Bank, N.A. ("FPCB"), Clearpath IP Valuation Services, Inc. ("Clearpath"), and Resolute Litigation Finance, LP ("Resolute"). OWS has contractual, legal, and/or ethical obligations to protect the confidential information of these and other third parties and cannot produce such information without appropriate safeguards. To the extent OWS produces any such third-party confidential information, it will be produced only to the extent required by applicable law and the Court's orders, and subject to designation under the Protective Order. OWS further reserves the right to notify affected third parties and, where appropriate, to seek additional protections from the Court.
General Objection No. 7 — Duplicative Requests
OWS objects to each Request to the extent it is duplicative of another Request or seeks documents that have already been produced by OWS, that are readily obtainable from public sources, or that are equally or more readily available to Lumos than to OWS. Federal Rule of Civil Procedure 26(b)(2)(C) provides that the Court may limit discovery that is unreasonably cumulative or duplicative, or that is obtainable from a more convenient, less burdensome, or less expensive source. OWS will not produce the same documents multiple times in response to overlapping Requests and will cross-reference its productions where appropriate.
General Objection No. 8 — Temporal Scope
OWS objects to each Request that lacks a reasonable temporal limitation, or that seeks documents from a time period that is disproportionate to the needs of the case. Unless otherwise specifically stated in a particular response below, OWS will construe each Request as limited to the period from January 1, 2014 (the date of OWS's incorporation) through the date of service of these Responses. To the extent any Request purports to seek documents from prior to January 1, 2014, OWS objects to such Request as temporally overbroad and disproportionate, as OWS did not exist prior to that date and no documents from such earlier periods could be within OWS's possession, custody, or control.
General Objection No. 9 — "All" and "Each"
OWS objects to each Request to the extent it uses the terms "all," "each," "every," or similar all-encompassing modifiers in a manner that is unreasonably cumulative, unduly burdensome, or that purports to require OWS to identify and produce every single document within its possession, custody, or control without any reasonable limitation. OWS interprets such terms in a manner that is consistent with the proportionality requirements of Federal Rule of Civil Procedure 26(b)(1) and the requirement of Federal Rule of Civil Procedure 26(g) that discovery requests and responses be neither unreasonable nor unduly burdensome.
General Objection No. 10 — Requests Directed to Legal Conclusions
OWS objects to each Request to the extent it calls for legal conclusions, requests the identification of documents that can only be identified through the exercise of legal judgment, or requires OWS to characterize documents in a manner that would require the application of law to facts. To the extent any Request calls upon OWS to identify documents "supporting," "relating to," or "evidencing" a particular legal position or theory, OWS objects to the extent compliance would require privileged legal analysis and reserves its objection.
General Objection No. 11 — Reservation of Rights
OWS's responses are based on information currently available to OWS and a reasonable search and investigation conducted as of the date of these Responses. Discovery and investigation in this matter are ongoing. OWS expressly reserves the right to amend, supplement, modify, or correct these Responses and Objections as additional information becomes available through the course of fact discovery, expert discovery, or otherwise, as required by Federal Rule of Civil Procedure 26(e). The inadvertent production of any privileged or work product-protected document shall not constitute a waiver of any applicable privilege or protection, and OWS reserves all rights under Federal Rule of Evidence 502 and the Stipulated Protective Order to claw back any inadvertently produced privileged material.
These General Objections are incorporated by reference into each specific response set forth below as if stated in full therein.
III. DEFINITIONS AND INTERPRETATIONS
For purposes of these Responses and Objections, OWS interprets Lumos's defined terms and instructions as follows, and responds accordingly:
1. "Document" and "Documents": OWS interprets these terms to mean any writing, recording, or electronically stored information as defined by Federal Rule of Civil Procedure 34(a)(1)(A), including correspondence, memoranda, reports, presentations, emails, text messages, spreadsheets, drawings, photographs, and any other tangible or electronically stored material.
2. "Communication" and "Communications": OWS interprets these terms to mean any transmission or exchange of information, whether oral, written, or electronic, including but not limited to emails, letters, telephone calls, text messages, instant messages, videoconferences, and in-person conversations, to the extent they have been reduced to or are evidenced by a document.
3. "Person": OWS interprets this term to include any natural person, corporation, partnership, limited liability company, association, joint venture, trust, governmental body, or any other legal entity.
4. "You," "Your," and "OWS": OWS interprets these terms to refer to Plaintiff Optiwave Semiconductor Corp., including its current and former officers, directors, employees, agents, representatives, attorneys, consultants, and any other persons acting on its behalf.
5. "Relating to" and "Concerning": OWS interprets these terms to mean referring to, describing, evidencing, constituting, mentioning, reflecting, or pertaining to the subject matter identified, construed reasonably in light of the proportionality requirements of Federal Rule of Civil Procedure 26(b)(1).
6. "Patents-in-Suit": OWS interprets this term as referring to the following four United States patents asserted by OWS in this action:
(a) U.S. Patent No. 10,234,567 ("the '567 Patent"), entitled "Adiabatically Coupled Waveguide Structure for Low-Loss Optical Interconnect," issued March 19, 2019;
(b) U.S. Patent No. 10,891,234 ("the '234 Patent"), entitled "Germanium-on-Silicon Photodetector with Continuously Varying Concentration Profile," issued January 14, 2020;
(c) U.S. Patent No. 11,045,678 ("the '678 Patent"), entitled "Monolithically Integrated Wavelength Division Multiplexed Transceiver on a Single Silicon Die," issued June 29, 2021; and
(d) U.S. Patent No. 11,312,890 ("the '890 Patent"), entitled "Co-Integrated Mach-Zehnder Modulator Driver with Pre-Emphasis Equalization," issued April 26, 2022.
7. "Accused Products": OWS interprets this term as referring to Lumos's LumosBridge™ 800G Optical Engine and LumosEdge™ 400ZR+ Pluggable Transceiver, as identified in paragraphs 48–72 of OWS's Complaint (Dkt. No. 1), as well as any other Lumos products, components, or systems that embody, incorporate, or practice the inventions claimed in the Patents-in-Suit, to the extent identified during the course of this litigation.
OWS's interpretation of these terms shall not constitute a binding admission for any purpose other than these Responses and Objections.
IV. SPECIFIC RESPONSES AND OBJECTIONS
OWS sets forth below its specific responses and objections to each of Lumos's Requests for Production of Documents, Nos. 1 through 98. The General Objections set forth in Section II above are incorporated by reference into each specific response below, and OWS's decision to respond to any individual Request notwithstanding a General Objection does not waive that or any other objection. Where OWS states that it "will produce" documents, such production is subject to and without waiver of the stated objections and shall be made on a rolling basis as set forth in Section V below.
A. Patent Prosecution and Ownership (Requests Nos. 1–12)
Request No. 1
REQUEST: Produce all documents relating to the conception, development, and reduction to practice of the inventions claimed in U.S. Patent No. 10,234,567 (the '567 Patent).
SPECIFIC OBJECTIONS: In addition to and without waiving the General Objections, OWS objects to this Request on the following grounds:
(a) General Objection No. 1 (Attorney-Client Privilege and Attorney Work Product): OWS objects to this Request to the extent it seeks documents protected by the attorney-client privilege, including communications between OWS and its patent prosecution counsel regarding the drafting, filing, and prosecution of the '567 Patent application, as well as any work product reflecting counsel's mental impressions, conclusions, or legal theories regarding the scope or validity of the '567 Patent claims.
(b) General Objection No. 2 (Overbreadth and Undue Burden): OWS objects to the use of "all documents" as overly broad and unduly burdensome. The '567 Patent relates to adiabatically coupled waveguide structures for low-loss optical interconnects, a technology area in which OWS has generated thousands of technical documents, laboratory notebooks, simulation files, and internal communications over a period of several years. A literal reading of this Request would require OWS to review and produce the entirety of its technical archives pertaining to waveguide coupling technology, much of which would be cumulative, duplicative, or marginally relevant at best.
(c) General Objection No. 5 (Trade Secrets and Confidential Business Information): OWS objects to this Request to the extent it seeks trade secrets and proprietary technical information regarding OWS's waveguide coupler designs, fabrication processes, and performance specifications that extend beyond the scope of the claimed inventions.
OWS will construe this Request reasonably to seek documents sufficient to identify the conception, development, and reduction to practice of the specific inventions claimed in the '567 Patent, as developed by the named inventors: Dr. Kevin Fong, Dr. Priya Ramanathan, and Hideo Tanaka. To the extent responsive documents contain or reflect communications with OWS's patent prosecution counsel, such documents will be withheld and identified on OWS's privilege log.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce responsive, non-privileged documents relating to the conception, development, and reduction to practice of the inventions claimed in the '567 Patent, including relevant laboratory notebooks, design documents, simulation results, test data, and internal memoranda authored by or directed to the named inventors, to the extent such documents are within OWS's possession, custody, or control. Documents will be designated under the Protective Order as appropriate.
Request No. 2
REQUEST: Produce all documents relating to the conception, development, and reduction to practice of the inventions claimed in U.S. Patent No. 10,891,234 (the '234 Patent).
SPECIFIC OBJECTIONS: OWS incorporates and reasserts the same objections set forth in response to Request No. 1 above, as applied to the '234 Patent. The '234 Patent relates to a germanium-on-silicon photodetector with a continuously varying concentration profile. The named inventors on the '234 Patent are Dr. Kevin Fong and Dr. Amara Osei. OWS objects to the breadth of this Request to the extent it seeks all documents relating to OWS's entire body of research and development concerning germanium photodetector technology, which extends well beyond the specific claimed inventions.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce responsive, non-privileged documents relating to the conception, development, and reduction to practice of the inventions claimed in the '234 Patent, including relevant laboratory notebooks, design documents, epitaxial growth records, characterization data, and internal memoranda authored by or directed to the named inventors, Dr. Kevin Fong and Dr. Amara Osei, to the extent such documents are within OWS's possession, custody, or control. Documents will be designated under the Protective Order as appropriate.
Request No. 3
REQUEST: Produce all documents relating to the conception, development, and reduction to practice of the inventions claimed in U.S. Patent No. 11,045,678 (the '678 Patent).
SPECIFIC OBJECTIONS: OWS incorporates and reasserts the same objections set forth in response to Request No. 1 above, as applied to the '678 Patent. The '678 Patent relates to a monolithically integrated wavelength division multiplexed transceiver on a single silicon die. The named inventors on the '678 Patent are Dr. Priya Ramanathan, Dr. Amara Osei, and Liwei Zhang. OWS objects to the breadth of this Request to the extent it seeks all documents relating to OWS's entire WDM integration program without limitation to the specific claimed inventions. OWS will construe this Request to encompass documents relating to the monolithic integration approach specifically claimed in the '678 Patent, rather than the entirety of OWS's WDM research activities.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce responsive, non-privileged documents relating to the conception, development, and reduction to practice of the inventions claimed in the '678 Patent, including relevant design files, fabrication run data, optical test results, and internal memoranda authored by or directed to the named inventors, Dr. Priya Ramanathan, Dr. Amara Osei, and Liwei Zhang, to the extent such documents are within OWS's possession, custody, or control. Documents will be designated under the Protective Order as appropriate.
Request No. 4
REQUEST: Produce all documents relating to the conception, development, and reduction to practice of the inventions claimed in U.S. Patent No. 11,312,890 (the '890 Patent).
SPECIFIC OBJECTIONS: OWS incorporates and reasserts the same objections set forth in response to Request No. 1 above, as applied to the '890 Patent. The '890 Patent relates to a co-integrated Mach-Zehnder modulator driver with pre-emphasis equalization. The named inventors on the '890 Patent are Dr. Kevin Fong and Rajesh Iyer. OWS objects to the breadth of this Request to the extent it seeks all documents relating to OWS's MZM driver design program without limitation to the co-integration and pre-emphasis features specifically claimed in the '890 Patent.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce responsive, non-privileged documents relating to the conception, development, and reduction to practice of the inventions claimed in the '890 Patent, including relevant circuit design files, simulation data, test results, and internal memoranda authored by or directed to the named inventors, Dr. Kevin Fong and Rajesh Iyer, to the extent such documents are within OWS's possession, custody, or control. Documents will be designated under the Protective Order as appropriate.
Request No. 5
REQUEST: Produce the complete file histories (prosecution histories) for each of the Patents-in-Suit, including all papers filed with or received from the United States Patent and Trademark Office.
SPECIFIC OBJECTIONS: OWS objects to this Request pursuant to General Objection No. 1 to the extent it seeks communications between OWS and its patent prosecution counsel that are protected by the attorney-client privilege and that are not part of the official file histories maintained by the United States Patent and Trademark Office. OWS further notes that the prosecution file histories for each of the Patents-in-Suit are publicly available through the USPTO's Patent Application Information Retrieval (PAIR) system and are thus equally accessible to Lumos.
RESPONSE: Without waiving the foregoing objections, OWS will produce the prosecution file histories for U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890 as maintained in the official USPTO records. For Lumos's reference, OWS notes the following regarding the prosecution history of each patent:
(a) The '567 Patent (U.S. Patent No. 10,234,567): The application underwent two Office Action rejections. During prosecution, the claims were narrowed to include the limitation "adiabatically coupled" to distinguish over the prior art of record, including U.S. Patent No. 9,456,012 (Tanaka et al.), which was cited under 35 U.S.C. § 102(a)(1). The claims as issued recite a specific taper geometry and coupling length that were added by amendment to overcome the Examiner's rejections.
(b) The '234 Patent (U.S. Patent No. 10,891,234): The application was allowed after the first Office Action following an Examiner Interview conducted on or about June 14, 2019. The Examiner's initial rejection was based on European Patent Application EP 3,234,567 A1 (Nordlicht Photonische GmbH, published August 2, 2017) under 35 U.S.C. § 102(a)(2). The Examiner was persuaded during the interview that the "continuously varying germanium concentration" limitation distinguished the claimed invention over the prior art.
(c) The '678 Patent (U.S. Patent No. 11,045,678): The application underwent three Office Actions. The limitation "monolithically formed on a single silicon die" was added by amendment during prosecution to distinguish over the prior art, which disclosed hybrid integration approaches but not the claimed monolithic integration. The claims as issued require that the WDM transceiver components be formed on a single silicon die without heterogeneous bonding.
(d) The '890 Patent (U.S. Patent No. 11,312,890): The application underwent two Office Actions. The limitation "co-integrated" (referring to the electrical co-integration of the pre-emphasis equalization stage with the modulator on a common substrate) was added by amendment to overcome rejections based on prior art disclosing discrete driver and modulator components. The reference Iyer & Patel (2018 IEEE article), co-authored by named inventor Rajesh Iyer, was disclosed to the Examiner and considered during prosecution.
OWS's production of the prosecution file histories is without prejudice to OWS's objections and is not a waiver of any privilege with respect to communications with prosecution counsel that are not part of the official file history.
Request No. 6
REQUEST: Produce all documents relating to the assignment, transfer, or licensing of any rights in the Patents-in-Suit.
SPECIFIC OBJECTIONS: OWS objects to this Request pursuant to General Objection No. 1 to the extent it seeks privileged communications between OWS and its counsel regarding the assignment, licensing, or other disposition of patent rights. OWS further objects pursuant to General Objection No. 5 to the extent this Request seeks the terms and conditions of confidential third-party license agreements, if any, that contain trade secrets or competitively sensitive commercial terms.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce assignment records reflecting the chain of title for each of the Patents-in-Suit, including inventor assignment agreements recorded with the USPTO. To the extent OWS has entered into any license agreements pertaining to the Patents-in-Suit, OWS will identify such agreements and produce them subject to appropriate confidentiality designations under the Protective Order.
Request No. 7
REQUEST: Produce all documents relating to any obligation to assign or license the Patents-in-Suit, including any agreements with employees, contractors, or third parties.
SPECIFIC OBJECTIONS: In addition to the General Objections, OWS objects to this Request pursuant to General Objections Nos. 1, 2, 5, and 6. OWS objects to the use of "third parties" without limitation as overly broad. OWS further objects to this Request to the extent it seeks employment agreements of OWS employees who are not named inventors on any of the Patents-in-Suit, as such agreements are not relevant to any claim or defense in this action and would involve the confidential personal information of individuals who are not parties to this litigation.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce the invention assignment agreements (or relevant provisions thereof) for each of the named inventors on the Patents-in-Suit: Dr. Kevin Fong, Dr. Priya Ramanathan, Hideo Tanaka, Dr. Amara Osei, Liwei Zhang, and Rajesh Iyer. OWS will also produce any other agreements in its possession, custody, or control that create an obligation to assign or license the specific Patents-in-Suit, to the extent such agreements exist and are not privileged.
Requests Nos. 8–12
REQUESTS: Requests Nos. 8 through 12 seek the following categories of documents:
Request No. 8: All documents relating to any continuation, divisional, or continuation-in-part applications filed in connection with the Patents-in-Suit.
Request No. 9: All documents relating to any related patent applications or patents in the same family as the Patents-in-Suit.
Request No. 10: All documents relating to any inter partes review ("IPR"), post-grant review, or reexamination proceedings involving any of the Patents-in-Suit.
Request No. 11: All documents relating to prior art cited or considered during the prosecution of the Patents-in-Suit, including prior art identified in Information Disclosure Statements.
Request No. 12: All documents relating to any patent applications or patents owned by OWS that claim priority to or share a common specification with any of the Patents-in-Suit.
SPECIFIC OBJECTIONS: OWS objects to Requests Nos. 8 through 12 pursuant to General Objections Nos. 1 and 2. OWS objects to the extent these Requests seek privileged attorney-client communications or attorney work product relating to patent prosecution strategy, continuation practice, or prior art analysis. OWS further objects to the extent these Requests are overbroad in seeking "all documents" relating to prior art without any reasonable limitation. The prior art cited during prosecution of the four Patents-in-Suit is identified in the prosecution file histories produced in response to Request No. 5.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce responsive, non-privileged documents relating to continuation and divisional applications, related patent applications, and prior art cited or considered during prosecution. OWS notes that the following prior art references of particular relevance have already been identified in the prosecution file histories:
(a) U.S. Patent No. 9,456,012, entitled "Tapered Waveguide Coupling Structure for Optical Fiber Interconnection" (Tanaka et al., issued September 6, 2016), cited against the '567 Patent under 35 U.S.C. § 102(a)(1);
(b) Chen & Liu, "Segmented Taper Coupler Design for Low-Loss Fiber-to-Chip Coupling," Journal of Photonic Integration, Vol. 14, No. 3, pp. 245–258 (2016), cited during prosecution of the '567 Patent;
(c) European Patent Application EP 3,234,567 A1 (Nordlicht Photonische GmbH, published August 2, 2017), cited against the '234 Patent under 35 U.S.C. § 102(a)(2); and
(d) Iyer & Patel, "Co-Design of Modulator Drivers and Silicon Photonic Mach-Zehnder Structures," IEEE Transactions on Circuits and Systems, Vol. 65, No. 8, pp. 2614–2627 (2018), cited during prosecution of the '890 Patent.
With respect to Request No. 10, OWS states that, as of the date of these Responses, no inter partes review, post-grant review, or reexamination proceeding has been instituted with respect to any of the four Patents-in-Suit. To the extent any such proceeding is initiated during the pendency of this litigation, OWS will supplement this response.
B. Infringement Contentions and Claim Construction (Requests Nos. 13–22)
Request No. 13
REQUEST: Produce all documents supporting OWS's infringement contentions for each asserted claim of each Patent-in-Suit.
SPECIFIC OBJECTIONS: In addition to the General Objections, OWS objects to this Request on the following grounds:
(a) General Objection No. 1 (Attorney-Client Privilege and Attorney Work Product): OWS objects to this Request to the extent it seeks attorney work product embodying OWS's litigation strategy, legal theories, and counsel's mental impressions, conclusions, and opinions regarding infringement.
(b) General Objection No. 2 (Overbreadth and Undue Burden): OWS objects to this Request as overly broad. The phrase "all documents supporting" infringement contentions is not reasonably limited and could encompass virtually any technical document in OWS's possession relating to the patented technologies.
(c) General Objection No. 10 (Legal Conclusions): OWS objects to this Request to the extent that identification of documents "supporting" infringement contentions requires the exercise of legal judgment regarding the application of patent claims to Lumos's products.
OWS further objects to this Request as premature to the extent that discovery is ongoing and OWS's infringement contentions may be supplemented or refined as additional technical information regarding the Accused Products is obtained through Lumos's document production and depositions.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce non-privileged technical documents supporting its infringement theories for the following asserted claims:
(a) '567 Patent: Claims 1, 4, 7, 12, and 15;
(b) '234 Patent: Claims 1, 3, 5, 8, and 11;
(c) '678 Patent: Claims 1, 2, 6, 9, and 14; and
(d) '890 Patent: Claims 1, 5, 8, and 13.
Such documents will include, to the extent they are non-privileged and within OWS's possession, custody, or control, technical analyses, product datasheets, publicly available specifications, tear-down reports, and test results relating to the Accused Products. OWS's infringement contentions are set forth in its Preliminary Infringement Contentions served on September 12, 2022, and OWS will supplement its document production as its investigation of the Accused Products continues.
Request No. 14
REQUEST: Produce all documents relating to OWS's proposed claim constructions for each disputed term in the Patents-in-Suit.
SPECIFIC OBJECTIONS: In addition to the General Objections, OWS objects to this Request pursuant to General Objections Nos. 1 and 10. This Request improperly seeks attorney work product, including counsel's legal analysis, research, and mental impressions regarding the construction of patent claims. OWS's claim construction positions are set forth in the following pleadings and filings, which are part of the Court record:
(a) OWS's Preliminary Claim Construction Contentions, served September 12, 2022;
(b) OWS's Responsive Claim Construction Contentions, served October 3, 2022; and
(c) The parties' Joint Claim Construction and Prehearing Statement, filed October 14, 2022 (Dkt. No. 39).
RESPONSE: OWS objects to this Request to the extent it seeks privileged analysis and work product relating to claim construction. Without waiving these objections, OWS will produce non-privileged technical references, dictionaries, treatises, and intrinsic evidence (prosecution history documents, patent specifications, and prior art) relied upon in support of OWS's proposed constructions for the eleven (11) disputed claim terms identified in the Joint Claim Construction and Prehearing Statement filed October 14, 2022.
Request No. 15
REQUEST: Produce all documents relating to the meaning of the claim term "adiabatically coupled" as used in the '567 Patent.
SPECIFIC OBJECTIONS: OWS objects to this Request pursuant to General Objections Nos. 1 and 2. OWS objects to the extent this Request seeks privileged communications with counsel regarding claim construction strategy, as well as to the extent it calls for "all documents" relating to a well-known term of art in the field of integrated photonics, which could encompass an enormous volume of scientific and technical literature.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce non-privileged documents in its possession, custody, or control that reflect the understanding and usage of the term "adiabatically coupled" among persons of ordinary skill in the art of silicon photonics at the time of the '567 Patent's filing date. Such documents include relevant technical literature, textbooks, and the declaration of Dr. Harold Whitfield of Whitfield Technical Consulting Group, Inc., who has been retained by OWS as its technical expert on claim construction. Dr. Whitfield's expert declaration and report will be produced in accordance with the Court's claim construction briefing schedule.
Requests Nos. 16–22
REQUESTS: Requests Nos. 16 through 22 seek documents relating to the meaning of the following additional disputed claim terms and related claim construction issues:
Request No. 16: Documents relating to the meaning of the claim term "continuously varying germanium concentration" as used in the '234 Patent.
Request No. 17: Documents relating to the meaning of the claim term "monolithically formed on a single silicon die" as used in the '678 Patent.
Request No. 18: Documents relating to the meaning of the claim term "pre-emphasis equalization stage electrically co-integrated with the modulator on a common substrate" as used in the '890 Patent.
Request No. 19: Documents relating to the meaning of additional disputed claim terms in the '567 Patent, including "tapered mode converter region" and "coupling length of at least 200 micrometers."
Request No. 20: Documents relating to the meaning of additional disputed claim terms in the '234 Patent, including "graded absorption layer" and "responsivity of at least 1.0 A/W at 1310 nm."
Request No. 21: Documents relating to the meaning of additional disputed claim terms in the '678 Patent, including "arrayed waveguide grating multiplexer" and "optically connected without heterogeneous bonding."
Request No. 22: Documents relating to the identity and qualifications of a "person of ordinary skill in the art" for each Patent-in-Suit.
SPECIFIC OBJECTIONS: OWS objects to Requests Nos. 16 through 22 pursuant to General Objections Nos. 1, 2, and 10, on the same grounds set forth in response to Requests Nos. 14 and 15 above. These Requests seek attorney work product and privileged analysis to the extent they call for documents reflecting counsel's claim construction theories and legal judgments. OWS further objects to the breadth of these Requests to the extent they would require the production of the entirety of the scientific and engineering literature relating to the disputed claim terms.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce non-privileged technical documents, references, and evidence relied upon in support of its proposed constructions for each of the eleven (11) disputed claim terms identified across the four Patents-in-Suit, as set forth in the Joint Claim Construction and Prehearing Statement filed October 14, 2022 (Dkt. No. 39). Such documents will include relevant excerpts from technical dictionaries, textbooks, peer-reviewed journal articles, industry standards, and the patent specifications themselves. OWS's expert declaration(s) supporting its proposed claim constructions will be served in accordance with the Court's briefing schedule.
C. OWS Products and Technology (Requests Nos. 23–35)
Request No. 23
REQUEST: Produce all documents relating to the design, development, manufacture, and testing of OWS's OWS-400ZR coherent optical transceiver chipset.
SPECIFIC OBJECTIONS: In addition to the General Objections, OWS objects to this Request on the following grounds:
(a) General Objection No. 2 (Overbreadth and Undue Burden): This Request is overly broad and unduly burdensome. The OWS-400ZR coherent optical transceiver chipset is one of OWS's principal commercial products, and the design, development, manufacture, and testing of this product have generated tens of thousands of technical documents, engineering drawings, fabrication records, test reports, and internal communications spanning several years. A literal response to this Request would impose an extraordinary burden on OWS that is disproportionate to any legitimate discovery need.
(b) General Objection No. 5 (Trade Secrets and Confidential Business Information): This Request seeks OWS's most sensitive trade secrets and proprietary technical information, including detailed product designs, process specifications, performance data, and yield information that constitute the core of OWS's competitive advantage in the silicon photonics market. OWS's own products are not accused of infringement in this action, and there is no basis for requiring OWS to disclose the entirety of its product design and manufacturing information.
OWS further objects that its own products and technology are relevant in this action only to the limited extent that they demonstrate how OWS practices the claimed inventions of the Patents-in-Suit, which may bear on issues of claim construction, damages, and marking. OWS's internal product development documents are not relevant to whether Lumos's Accused Products infringe the asserted claims.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce documents sufficient to show how OWS practices the asserted claims of the Patents-in-Suit in its OWS-400ZR coherent optical transceiver chipset. Such documents will be limited to information necessary to establish the practice of the claimed inventions and will be designated as Highly Confidential — Attorneys' Eyes Only under the Protective Order. OWS will not produce the entirety of its product development files for the OWS-400ZR product.
Request No. 24
REQUEST: Produce all documents relating to the design, development, manufacture, and testing of OWS's OWS-800LR coherent optical transceiver chipset.
SPECIFIC OBJECTIONS: OWS incorporates and reasserts the same objections set forth in response to Request No. 23 above, as applied to the OWS-800LR coherent optical transceiver chipset. The OWS-800LR is OWS's next-generation 800 Gbps coherent transceiver product, and the detailed design and performance information for this product constitutes OWS's most closely guarded trade secret information.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce documents sufficient to show how OWS practices the asserted claims of the Patents-in-Suit in its OWS-800LR coherent optical transceiver chipset. Such documents will be designated as Highly Confidential — Attorneys' Eyes Only under the Protective Order.
Request No. 25
REQUEST: Produce all documents relating to OWS's silicon photonics engines for co-packaged optics.
SPECIFIC OBJECTIONS: OWS objects to this Request pursuant to General Objections Nos. 2 and 5 on the same grounds set forth in response to Request No. 23. OWS further objects that this Request is overly broad in that it is not limited to silicon photonics engines that practice any of the claims of the Patents-in-Suit, and instead sweeps in the entirety of OWS's co-packaged optics program, which encompasses multiple product lines, development stages, and engineering efforts that have no bearing on any claim or defense in this litigation.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce documents sufficient to show the relevance of its co-packaged optics products to the practice of the claimed inventions of the Patents-in-Suit, to the extent such products embody the patented technology. Such documents will be designated as Highly Confidential — Attorneys' Eyes Only under the Protective Order.
Request No. 26
REQUEST: Produce all documents relating to the manufacturing process used by Pinnacle Semiconductor Foundry Co., Ltd. to fabricate OWS's silicon photonics chips.
SPECIFIC OBJECTIONS: In addition to the General Objections, OWS objects to this Request on the following grounds:
(a) General Objection No. 2 (Overbreadth and Undue Burden): This Request is overly broad in seeking "all documents" relating to the entirety of Pinnacle's manufacturing process without limitation to the specific process steps or features relevant to the claimed inventions. Pinnacle's 45nm silicon-on-insulator ("SOI") process involves hundreds of individual process steps, and the complete process documentation would fill thousands of pages, the vast majority of which have no relevance to any claim or defense in this action.
(b) General Objection No. 5 (Trade Secrets and Confidential Business Information): Pinnacle's fabrication process specifications constitute OWS's and Pinnacle's most sensitive trade secret information.
(c) General Objection No. 6 (Third-Party Confidential Information): The detailed specifications of Pinnacle's 45nm SOI fabrication process are the proprietary and confidential information of Pinnacle Semiconductor Foundry Co., Ltd., a third party. OWS is subject to non-disclosure obligations with respect to Pinnacle's process technology and cannot produce Pinnacle's proprietary process documents without appropriate safeguards and, potentially, Pinnacle's consent.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce documents sufficient to describe the relevant manufacturing process steps and features as they relate to the specific inventions claimed in the asserted patent claims, to the extent such documents are within OWS's possession, custody, or control and are not subject to non-disclosure restrictions that would prohibit production. Such documents will be designated as Highly Confidential — Attorneys' Eyes Only under the Protective Order, subject to any additional confidentiality obligations owed to Pinnacle. OWS reserves the right to notify Pinnacle of this Request and to seek additional protections if necessary.
Request No. 27
REQUEST: Produce all documents relating to OWS's waveguide coupler designs, including tapered mode converters.
SPECIFIC OBJECTIONS: OWS objects to this Request pursuant to General Objections Nos. 2 and 5. This Request is overly broad to the extent it seeks all documents relating to the entirety of OWS's waveguide coupler design portfolio, which includes numerous coupler architectures, design variants, and optimization studies that are unrelated to the specific "adiabatically coupled" waveguide structure claimed in the '567 Patent. OWS will construe this Request narrowly to seek documents relating to waveguide coupler designs that are relevant to the claims of the '567 Patent.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce responsive documents relating to OWS's waveguide coupler designs that are relevant to the adiabatically coupled waveguide structure and tapered mode converter technology claimed in the '567 Patent. Such documents will be designated under the Protective Order as appropriate.
Requests Nos. 28–35
REQUESTS: Requests Nos. 28 through 35 seek the following additional categories of documents relating to OWS's products and technology:
Request No. 28: All documents relating to OWS's germanium-on-silicon photodetector designs.
Request No. 29: All documents relating to OWS's wavelength division multiplexing ("WDM") integration approaches, including arrayed waveguide grating designs.
Request No. 30: All documents relating to OWS's Mach-Zehnder modulator ("MZM") driver circuit architectures, including pre-emphasis equalization circuits.
Request No. 31: All documents relating to the performance specifications, characterization data, and test results for OWS's commercial products that embody the inventions of the Patents-in-Suit.
Request No. 32: All documents relating to technical presentations, conference papers, or publications authored by OWS employees relating to the technologies claimed in the Patents-in-Suit.
Request No. 33: All documents relating to OWS's product roadmap or technology development plans for silicon photonics products.
Request No. 34: All documents relating to OWS's design-for-manufacturability analyses for products embodying the Patents-in-Suit.
Request No. 35: All documents relating to reliability testing, qualification testing, or failure analysis for OWS products embodying the Patents-in-Suit.
SPECIFIC OBJECTIONS: OWS objects to Requests Nos. 28 through 35 pursuant to General Objections Nos. 1, 2, and 5. Each of these Requests is overly broad to the extent it seeks "all documents" relating to entire categories of OWS's technical work product without limitation to the specific features or elements claimed in the Patents-in-Suit. OWS's germanium photodetector designs (Request No. 28), WDM integration approaches (Request No. 29), and MZM driver architectures (Request No. 30) each represent years of intensive research and development effort encompassing numerous design iterations, variants, and approaches that extend far beyond the specific inventions claimed in the '234, '678, and '890 Patents, respectively. OWS further objects to Request No. 33 (product roadmap) as seeking highly confidential forward-looking business strategy information that is not relevant to any claim or defense. OWS objects to the extent any of these Requests seeks OWS's internal technical publications or conference papers that were prepared by or at the direction of counsel in anticipation of litigation.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce responsive, non-privileged documents for each of Requests Nos. 28 through 35 to the extent such documents are relevant to the specific inventions claimed in the asserted patent claims of the Patents-in-Suit. OWS will construe each Request to be limited to documents relating to the particular patented features at issue (e.g., the "continuously varying germanium concentration" feature for Request No. 28; the "monolithically formed on a single silicon die" feature for Request No. 29; the "co-integrated" pre-emphasis equalization feature for Request No. 30). Technical publications and conference papers by OWS employees that have been published or publicly presented will be produced. Documents will be designated as Highly Confidential — Attorneys' Eyes Only under the Protective Order as appropriate.
D. OWS's Knowledge of Lumos's Products (Requests Nos. 36–42)
Request No. 36
REQUEST: Produce all documents relating to OWS's analysis, evaluation, or investigation of Lumos's LumosBridge™ 800G Optical Engine.
SPECIFIC OBJECTIONS: In addition to the General Objections, OWS objects to this Request pursuant to General Objections Nos. 1 and 10. OWS objects to this Request to the extent it seeks documents and analyses that were prepared by, at the direction of, or for the benefit of OWS's counsel in anticipation of litigation or in preparation for trial. OWS's investigation and analysis of the LumosBridge™ 800G Optical Engine has been conducted, in substantial part, under the direction and at the request of OWS's litigation counsel at Calderwood & Harkness LLP, and the resulting analyses, memoranda, and communications constitute protected attorney work product. OWS will identify such privileged documents on its privilege log.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce non-privileged documents relating to OWS's awareness and analysis of Lumos's LumosBridge™ 800G Optical Engine, including publicly available product specifications, datasheets, marketing materials, and any non-privileged internal memoranda or communications concerning this product that were created outside the scope of the attorney-client relationship and not in anticipation of litigation.
Request No. 37
REQUEST: Produce all documents relating to OWS's analysis, evaluation, or investigation of Lumos's LumosEdge™ 400ZR+ Pluggable Transceiver.
SPECIFIC OBJECTIONS: OWS incorporates and reasserts the same objections set forth in response to Request No. 36 above, as applied to the LumosEdge™ 400ZR+ Pluggable Transceiver.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce non-privileged documents relating to OWS's awareness and analysis of Lumos's LumosEdge™ 400ZR+ Pluggable Transceiver, including publicly available product specifications, datasheets, marketing materials, and any non-privileged internal memoranda or communications concerning this product that were created outside the scope of the attorney-client relationship and not in anticipation of litigation.
Request No. 38
REQUEST: Produce all documents relating to the reverse engineering, teardown, or testing of any Lumos product.
SPECIFIC OBJECTIONS: OWS objects to this Request pursuant to General Objections Nos. 1 and 2. To the extent OWS conducted any reverse engineering, teardown analysis, or testing of Lumos products at the direction of counsel in anticipation of this litigation, the resulting reports, analyses, and communications are protected attorney work product. OWS further objects to the extent this Request is overbroad in seeking documents relating to "any Lumos product" rather than the specific Accused Products identified in this action.
RESPONSE: Subject to and without waiving the foregoing objections, OWS will produce non-privileged documents responsive to this Request, including any teardown or reverse engineering reports that were not prepared at the direction of counsel in anticipation of litigation. To the extent any such analyses were conducted at the direction of counsel, the resulting documents will be identified on OWS's privilege log.
Requests Nos. 39–42
REQUESTS: Requests Nos. 39 through 42 seek the following additional categories of documents relating to OWS's knowledge of Lumos and its products:
Request No. 39: All documents relating to OWS's awareness of Lumos's patent portfolio.