CALDERWOOD & HARKNESS LLP Attorneys at Law
One Embarcadero Center, 34th Floor San Francisco, California 94111
Telephone: (415) 982-7400 Facsimile: (415) 982-7401 www.calderwoodharkness.com
August 15, 2022
VIA ELECTRONIC MAIL AND U.S. MAIL
Sandra Ellison, Esq. General Counsel Optiwave Semiconductor Corp. 2775 Augustine Drive, Suite 400 San Jose, CA 95054
Re: Retainer Replenishment Request — Q3 2022 Matter: Optiwave Semiconductor Corp. v. Lumos Photonics, Inc. Case No.: 5:22-cv-03417-EJD (N.D. Cal.) C&H Matter No.: 1014-00003
Dear Sandra:
I am writing in connection with the engagement letter dated May 12, 2022 (the "Engagement Letter"), executed between Calderwood & Harkness LLP ("C&H") and Optiwave Semiconductor Corp. ("OWS"), pursuant to which C&H was retained to represent OWS in the above-referenced patent infringement matter. As you will recall, Section 6(b) of the Engagement Letter provides for an evergreen retainer in the amount of One Hundred Thousand Dollars ($100,000.00), to be maintained on deposit in C&H's client trust account and replenished on a quarterly basis as fees and costs are drawn against the retainer balance. The initial retainer deposit of $100,000.00 was received by this office on or about May 18, 2022, and was promptly deposited into C&H's Interest on Lawyers' Trust Account ("IOLTA") maintained at Westvale Securities in accordance with the California Rules of Professional Conduct.
During the period from commencement of the engagement through July 31, 2022, fees and costs have been drawn against the initial retainer deposit in accordance with the terms of the Engagement Letter. Specifically, the initial retainer has been substantially drawn down as a result of work performed in the following areas: (a) drafting and filing of the Complaint for Patent Infringement, which was filed on June 3, 2022; (b) effectuating service of process on Lumos Photonics, Inc. through its registered agent, Ashgrove Services Inc., with service completed on June 28, 2022; (c) initial review and analysis of Lumos's Answer and Counterclaims, which were filed on July 29, 2022; and (d) preparation for and attendance at the Initial Case Management Conference held before the Honorable Edward J. Torvelis on August 15, 2022, including preparation of the Joint Case Management Statement filed in advance of the conference. Detailed billing information has been and will continue to be provided to OWS via monthly billing summaries transmitted to your office and to Ted Marchetti.
Pursuant to the quarterly replenishment provision set forth in the Engagement Letter, I am writing to formally request replenishment of the evergreen retainer to the full $100,000.00 amount for the Q3 2022 quarter. The amount due for replenishment, which, when combined with any remaining retainer balance, will restore the total retainer on deposit to $100,000.00, is set forth in the enclosed retainer reconciliation statement. We respectfully request that payment be submitted within fifteen (15) business days of the date of this letter.
I also want to take this opportunity to provide a brief overview of the significant work we anticipate undertaking during the balance of Q3 2022 and into the early part of Q4 2022. As set forth in the Scheduling Order and the Patent Local Rules, the following key deadlines are approaching: (i) exchange of Preliminary Claim Construction Contentions pursuant to Patent Local Rule 4-1, due September 12, 2022; (ii) exchange of Responsive Claim Construction Contentions pursuant to Patent Local Rule 4-2, due October 3, 2022; (iii) claim construction discovery, including depositions of the named inventors on the four patents-in-suit; and (iv) filing of the Joint Claim Construction and Prehearing Statement pursuant to Patent Local Rule 4-3, due October 14, 2022. This work will require substantial attorney time across the engagement team. For your reference, billing rates for the matter remain as set forth in Section 5 of the Engagement Letter: Alan Ngo at $1,150.00/hr, Marcus Delgado at $1,050.00/hr, Priya Siddiqui at $785.00/hr, and Jacob Bauer at $625.00/hr. Each of these standard rates is subject to the 10% volume discount extended to OWS under the Engagement Letter, yielding effective rates of $1,035.00/hr, $945.00/hr, $706.50/hr, and $562.50/hr, respectively.
For your convenience, payment may be made by wire transfer using the instructions previously provided to your office in connection with the initial retainer deposit. Alternatively, checks should be made payable to "Calderwood & Harkness LLP Client Trust Account" and mailed to the address shown on the letterhead above, Attention: Accounts Receivable. Please do not hesitate to contact me if you require the wire transfer instructions to be re-transmitted.
Sandra, thank you for your continued attention to this matter and for OWS's confidence in Calderwood & Harkness. We are pleased with the progress of the case to date and look forward to the claim construction phase ahead. Should you have any questions regarding the retainer, billing, or any other aspect of the engagement, please do not hesitate to contact me directly at (415) 982-7418 or at mdelgado@calderwoodharkness.com.
Very truly yours,
CALDERWOOD & HARKNESS LLP
By: ________
Marcus Delgado Partner, intellectual Property Group Calderwood & Harkness LLP One Embarcadero Center, 34th Floor San Francisco, CA 94111 Tel: (415) 982-7418
Email: mdelgado@calderwoodharkness.com
cc: Alan Ngo, Calderwood & Harkness LLP
Ted Marchetti, Optiwave Semiconductor Corp.
Encl: Retainer Reconciliation Statement (Q3 2022)
CALDERWOOD & HARKNESS LLP Attorneys at Law
One Embarcadero Center, 34th Floor San Francisco, California 94111
Telephone: (415) 982-7400 Facsimile: (415) 982-7401 www.calderwoodharkness.com
November 14, 2022
VIA ELECTRONIC MAIL AND U.S. MAIL
Sandra Ellison, Esq. General Counsel Optiwave Semiconductor Corp. 2775 Augustine Drive, Suite 400 San Jose, CA 95054
Re: Retainer Replenishment Request — Q4 2022 Matter: Optiwave Semiconductor Corp. v. Lumos Photonics, Inc. Case No.: 5:22-cv-03417-EJD (N.D. Cal.) C&H Matter No.: 1014-00003
Dear Sandra:
I am writing with respect to the engagement letter dated May 12, 2022 (the "Engagement Letter") between Calderwood & Harkness LLP ("C&H") and Optiwave Semiconductor Corp. ("OWS") to request the quarterly replenishment of the evergreen retainer as provided for in Section 6(b) of the Engagement Letter. At the outset, I wish to acknowledge and confirm receipt of the Q3 2022 retainer replenishment, which was received by this office and deposited into C&H's client trust account. That deposit constituted the second retainer deposit of $100,000.00, bringing cumulative retainer deposits over the life of the engagement to $200,000.00. Retainer funds continue to be held in C&H's IOLTA client trust account maintained at Westvale Securities and are drawn against as professional fees and reimbursable costs accrue, in accordance with the terms of the Engagement Letter.
The Q3 2022 and early Q4 2022 period has involved substantial and critically important work on the matter, resulting in significant draws against the retainer. The principal activities during this period included the following: (a) preparation and exchange of OWS's Preliminary Claim Construction Contentions pursuant to Patent Local Rule 4-1, which were served on Lumos's counsel at Brannick Howell & Stein LLP on September 12, 2022; (b) preparation and exchange of OWS's Responsive Claim Construction Contentions pursuant to Patent Local Rule 4-2, served on October 3, 2022; (c) preparation and filing of the Joint Claim Construction and Prehearing Statement pursuant to Patent Local Rule 4-3, filed with the Court on October 14, 2022, which identified eleven (11) disputed claim terms across the four patents-in-suit (U.S. Patent Nos. 9,847,231; 10,112,694; 10,589,003; and 10,971,445); (d) claim construction discovery depositions of three named inventors — Dr. Kevin Fong (deposed October 11, 2022), Hideo Tanaka (deposed October 18, 2022), and Dr. Amara Osei (deposed October 25, 2022) — all of which were completed by the October 31, 2022 close of claim-construction discovery; (e) initial review and analysis of Lumos's First Set of Requests for Production of Documents, comprising ninety-eight (98) individual requests, which were served on OWS on November 7, 2022; and (f) preparation and service of OWS's First Set of Requests for Production of Documents to Lumos, consisting of one hundred twelve (112) requests, together with OWS's First Set of Interrogatories, both of which were served on November 21, 2022. As a consequence of this intensive discovery and claim construction activity, the Q3 retainer has been substantially drawn down. As always, detailed breakdowns of all fees and costs are provided in the monthly billing summaries transmitted to your office.
In light of the foregoing, I am writing to formally request replenishment of the evergreen retainer to the full $100,000.00 amount for the Q4 2022 quarter. This will constitute the third retainer deposit of $100,000.00, bringing cumulative retainer deposits over the life of the engagement to $300,000.00. We respectfully request that payment be remitted within fifteen (15) business days of the date of this letter.
Looking ahead, the balance of Q4 2022 and early Q1 2023 will be dominated by the Markman claim construction briefing cycle and preparation for the Markman hearing. Specifically, we anticipate the following key activities and deadlines: (i) drafting and filing of OWS's Opening Claim Construction Brief, which is due on December 5, 2022 (the brief is expected to be approximately forty-five (45) pages in length, addressing all eleven disputed terms); (ii) review and analysis of Lumos's Responsive Claim Construction Brief, expected to be filed on December 19, 2022; (iii) preparation and filing of OWS's Reply Claim Construction Brief, due January 9, 2023 (fifteen (15) pages); (iv) preparation of the Declaration of Dr. Harold Whitfield, OWS's claim construction expert, in support of OWS's claim construction positions; (v) ongoing fact discovery responses and document review; and (vi) preparation for the Markman hearing, which is currently scheduled for January 30, 2023, before the Honorable Edward J. Torvelis. I want to be candid that this period will be among the most billing-intensive of the engagement to date, given the critical importance of the Markman phase to the trajectory of the case. All billing continues to be subject to the 10% volume discount on standard hourly rates as set forth in Section 5 of the Engagement Letter.
I also want to note that total fees and costs incurred to date remain within the Board-approved litigation budget of $4.2 million through trial. For a detailed phase-by-phase breakdown of projected expenditures against actual spend, I refer you to the Matter Budget Memorandum and Forecast Update that was circulated to your office and to Ted Marchetti in September 2022. We continue to monitor the budget closely and will promptly advise you if we anticipate any material deviation from the approved budget projections.
Sandra, thank you for your continued partnership and confidence in Calderwood & Harkness. Should you have any questions regarding the retainer replenishment, billing, or any other aspect of the engagement, I am available at your convenience. As with prior replenishments, payment may be made by wire transfer using the instructions previously provided or by check made payable to "Calderwood & Harkness LLP Client Trust Account" and directed to the address on this letterhead, Attention: Accounts Receivable.
Very truly yours,
CALDERWOOD & HARKNESS LLP
By: ________
Marcus Delgado Partner, intellectual Property Group Calderwood & Harkness LLP One Embarcadero Center, 34th Floor San Francisco, CA 94111 Tel: (415) 982-7418
Email: mdelgado@calderwoodharkness.com
cc: Alan Ngo, Calderwood & Harkness LLP
Ted Marchetti, Optiwave Semiconductor Corp.
Encl: Retainer Reconciliation Statement (Q4 2022)
CALDERWOOD & HARKNESS LLP Attorneys at Law
One Embarcadero Center, 34th Floor San Francisco, California 94111
Telephone: (415) 982-7400 Facsimile: (415) 982-7401 www.calderwoodharkness.com
February 13, 2023
VIA ELECTRONIC MAIL AND U.S. MAIL
Sandra Ellison, Esq. General Counsel Optiwave Semiconductor Corp. 2775 Augustine Drive, Suite 400 San Jose, CA 95054
Re: Retainer Replenishment Request — Q1 2023 Matter: Optiwave Semiconductor Corp. v. Lumos Photonics, Inc. Case No.: 5:22-cv-03417-EJD (N.D. Cal.) C&H Matter No.: 1014-00003
Dear Sandra:
I am writing pursuant to the engagement letter dated May 12, 2022 (the "Engagement Letter") between Calderwood & Harkness LLP ("C&H") and Optiwave Semiconductor Corp. ("OWS") to request the quarterly replenishment of the evergreen retainer as provided for in Section 6(b) of the Engagement Letter. By way of background, and for completeness of the record, the retainer deposit history for this matter is as follows: OWS remitted the initial retainer deposit of $100,000.00 in May 2022, followed by the Q3 2022 replenishment of $100,000.00 and the Q4 2022 replenishment of $100,000.00, for a total of $300,000.00 in cumulative retainer deposits over the life of the engagement to date. All retainer funds have been maintained in C&H's IOLTA client trust account at Westvale Securities and drawn against in accordance with the terms of the Engagement Letter.
The Q4 2022 and early Q1 2023 period has been, as I anticipated in my November 14, 2022 correspondence, the most billing-intensive period of the engagement to date. The Markman claim construction briefing and hearing consumed substantial resources across the team. The principal activities during this period included the following:
(a) Drafting and filing of OWS's Opening Claim Construction Brief (filed December 5, 2022; forty-five (45) pages), addressing all eleven disputed claim terms across the four patents-in-suit;
(b) Preparation and submission of the Declaration of Dr. Harold Whitfield of Whitfield Technical Consulting Group, Inc. in Support of OWS's Claim Construction, filed in December 2022;
(c) Review and detailed analysis of Lumos's Responsive Claim Construction Brief (filed December 19, 2022; forty-five (45) pages), which raised prosecution history estoppel arguments with respect to three of the eleven disputed terms;
(d) Preparation of an internal memorandum analyzing and rebutting Lumos's prosecution history estoppel arguments, circulated to the OWS litigation team in late December 2022;
(e) Drafting and filing of OWS's Reply Claim Construction Brief (filed January 9, 2023; fifteen (15) pages);
(f) Review and analysis of Lumos's Sur-Reply, which was filed by leave of Court on January 19, 2023 (fifteen (15) pages);
(g) Preparation of demonstrative exhibits for the Markman hearing, including annotated claim charts, prosecution history timelines, and technical diagrams;
(h) Preparation of Dr. Whitfield's technical tutorial presentation for delivery at the Markman hearing;
(i) Attendance at and participation in the Markman hearing held on January 30, 2023, before the Honorable Edward J. Torvelis, which lasted approximately six and one-half (6.5) hours — Dr. Whitfield testified as the technical tutorial witness on behalf of OWS, and Dr. Raymond Ng testified as Lumos's technical tutorial witness; and
(j) Ongoing fact discovery, including preparation of OWS's responses to Lumos's outstanding document requests and meet-and-confer correspondence with Lumos's counsel at Brannick Howell & Stein LLP regarding claimed deficiencies in Lumos's document productions.
As a consequence of the foregoing activity, and in particular the extensive briefing and hearing preparation associated with the Markman phase, the Q4 retainer has been substantially drawn down. Detailed information regarding all fees and costs incurred during this period is set forth in the monthly billing summaries previously transmitted to your office and to Ted Marchetti.
In light of the foregoing, I am writing to formally request replenishment of the evergreen retainer to the full $100,000.00 amount for the Q1 2023 quarter. This will constitute the fourth retainer deposit of $100,000.00, bringing cumulative retainer deposits over the life of the engagement to $400,000.00. We respectfully request that payment be remitted within fifteen (15) business days of the date of this letter, using the wire transfer instructions previously provided to your office or by check made payable to "Calderwood & Harkness LLP Client Trust Account."
Turning to anticipated near-term activity, we note that the Court's Order on Claim Construction (the "Markman Order") is expected to be issued in the coming weeks. Once the Markman Order is received, the team's immediate focus will include the following: (i) a thorough analysis of the Court's constructions for each of the eleven disputed terms; (ii) an assessment of the viability of OWS's infringement theories under the Court's adopted claim constructions; and (iii) preparation of strategic recommendations regarding the path forward for presentation to the OWS Board of Directors and the litigation steering committee. As you are aware, the outcome of the Markman ruling may have a material impact on the litigation trajectory and associated cost projections. Depending on how the Court construes the disputed terms, we may wish to discuss whether any reassessment of litigation strategy is warranted. I want to confirm that total litigation spend to date remains within the Board-approved budget of $4.2 million through trial, and detailed financial tracking continues to be provided in the monthly billing summaries and the updated Matter Budget Memorandum.
On a related note, I want to provide an update regarding expert fees. Expert fees for Whitfield Technical Consulting Group, Inc. (Dr. Harold Whitfield, claim construction and technical expert) and Apex Claim Analytics LLC (Dr. Lawrence Kessler, damages expert) are tracked separately from attorney fees and costs in our billing system but are included in the overall matter financial reporting provided to OWS. I am pleased to report that expert fees to date remain consistent with the projections set forth in the initial Matter Budget Memorandum, and no material variance is anticipated at this time.
Sandra, thank you for your continued confidence in Calderwood & Harkness and for the consistently productive working relationship between our respective teams. I know the past several months have been particularly demanding given the pace and significance of the Markman phase, and I appreciate OWS's responsiveness and collaboration throughout. Alan Ngo will be in touch promptly to discuss the Markman Order and our recommendations for next steps once the Court issues its ruling. In the meantime, please do not hesitate to contact me directly at (415) 982-7418 or at mdelgado@calderwoodharkness.com if you have any questions regarding the retainer replenishment, billing, or any other matter.
Very truly yours,
CALDERWOOD & HARKNESS LLP
By: ________
Marcus Delgado Partner, intellectual Property Group Calderwood & Harkness LLP One Embarcadero Center, 34th Floor San Francisco, CA 94111 Tel: (415) 982-7418
Email: mdelgado@calderwoodharkness.com
cc: Alan Ngo, Calderwood & Harkness LLP
Ted Marchetti, Optiwave Semiconductor Corp.
Encl: Retainer Reconciliation Statement (Q1 2023)