1014-00003 · Optiwave Semiconductor Corp · Settlement & Dismissal

letter-ows-return-confidential-materials.docx DOCUMENT Litigation

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CALDERWOOD & HARKNESS LLP Attorneys at Law

One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 773-6200 Facsimile: (415) 773-6201 www.calderwoodharkness.com

April 20, 2023

VIA ELECTRONIC MAIL AND FedEx

Sandra Ellison, Esq. General Counsel Optiwave Semiconductor Corp. 2775 Augustine Drive, Suite 400 San Jose, California 95054

Re: Return or Destruction of Confidential Materials — Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD (N.D. Cal.)

Calderwood & Harkness Matter No. 1014-00003

Dear Sandra:

I. Purpose and Background

I am writing on behalf of Calderwood & Harkness LLP ("C&H") in connection with the obligations arising under the Stipulated Protective Order (Dkt. No. 47) entered by the Honorable Edward J. Torvelis on September 12, 2022 (the "Protective Order") in the above-referenced matter. As you are aware, the Court entered its Order of Dismissal with Prejudice on April 18, 2023, dismissing with prejudice all claims asserted by Optiwave Semiconductor Corp. ("OWS") against Lumos Photonics, Inc. ("Lumos") and all counterclaims asserted by Lumos against OWS, in accordance with the terms of the Settlement Agreement and Mutual Release executed by the parties on April 5, 2023 (the "Settlement Agreement").

With the entry of the Order of Dismissal with Prejudice, the litigation has reached its final disposition, and the post-termination provisions of the Protective Order are now triggered. The purpose of this letter is to set forth the steps that must be taken by OWS, C&H, and our retained experts to comply with the Protective Order's requirements regarding the return or destruction of all confidential materials received from Lumos during the course of discovery. We write to ensure that OWS and all individuals who had access to protected materials during the litigation are fully apprised of their obligations and can take the necessary actions within the time frame specified by the Protective Order.

We ask that you review this letter carefully and coordinate with the relevant personnel at OWS to ensure timely compliance. The remainder of this letter describes the categories of protected materials at issue, the specific obligations imposed by the Protective Order, the actions required of OWS, the steps C&H is independently undertaking, the continuing confidentiality obligations that survive the conclusion of the litigation, and the certification process we have established to document compliance.

II. Categories of Protected Materials Received from Lumos

As you will recall, the Protective Order established two tiers of protection for materials produced during discovery in this action:

"Confidential" materials: Documents and information designated by the producing party as containing confidential business information, including but not limited to proprietary commercial data, business strategies, customer lists, supplier agreements, and other non-public business information that the producing party reasonably believed could cause competitive harm if disclosed beyond the terms of the Protective Order.

"Highly Confidential — Attorneys' Eyes Only" materials: Documents and information designated by the producing party as containing highly sensitive technical, financial, or trade secret information, access to which was restricted under the Protective Order to outside counsel of record, their staff, retained experts approved under the Protective Order's expert access provisions, and the Court and its personnel. This designation was reserved for the most sensitive categories of information, including core trade secrets, proprietary engineering methodologies, and detailed financial data.

Over the course of discovery in this matter, OWS and C&H received substantial volumes of documents and information from Lumos bearing one or both of these designations. The categories of Lumos protected materials received during discovery include, but are not limited to, the following:

1. Technical Design Documents and Product Specifications. Lumos produced detailed technical design documents and product specifications for the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver products, which were the accused products in OWS's patent infringement claims. These materials were central to the claim construction and infringement analyses conducted in the litigation and included detailed descriptions of the architecture, performance characteristics, and manufacturing processes for those products.

2. Engineering Schematics and Process Documents. Lumos produced engineering schematics and detailed process documentation related to several proprietary technologies and fabrication processes, including: (a) Lumos's segmented taper coupler design, which was at the heart of OWS's infringement contentions regarding U.S. Patent No. 10,XXX,XXX; (b) the step-graded SiGe buffer photodetector architecture employed in the accused products, which utilizes discrete germanium composition steps at fractions of 0.25, 0.50, 0.75, and 1.0 to achieve lattice matching between silicon and germanium layers; (c) Lumos's micro-transfer-printed III-V gain element integration process, a proprietary heterogeneous integration technique used in the fabrication of the LumosBridge™ 800G Optical Engine; and (d) documentation regarding Lumos's CMOS driver die flip-chip bonding process via copper pillar micro-bumps, which was relevant to certain asserted claims relating to electronic-photonic integration. These materials were overwhelmingly designated as "Highly Confidential — Attorneys' Eyes Only" given their trade secret sensitivity.

3. Revenue and Financial Data for Accused Products. Lumos produced detailed revenue, cost, and financial data for the LumosBridge™ and LumosEdge™ product lines, including the data underlying the approximately $148.6 million in combined accused product revenue reported by Lumos for calendar year 2022. This financial data was provided in connection with the damages phase of the litigation and included unit sales data, average selling prices, bill-of-materials costs, gross margin analyses, and customer-specific revenue breakdowns. The vast majority of this financial information was designated "Highly Confidential — Attorneys' Eyes Only."

4. Internal Lumos Communications. Lumos produced internal email communications, memoranda, presentations, and other business records responsive to OWS's First Set of Requests for Production of Documents (comprising 112 individual requests served on November 21, 2022). These productions included communications among Lumos engineering, product management, and executive personnel regarding the design, development, and commercialization of the accused products, as well as communications reflecting Lumos's awareness of OWS's patent portfolio.

5. Interrogatory Responses. Lumos served interrogatory responses containing contention-related technical detail regarding its non-infringement and invalidity positions, as well as financial detail relevant to damages. These responses contained detailed narrative descriptions of Lumos's proprietary technologies and were designated under the Protective Order.

6. Source Code and Firmware Documentation. Lumos produced source code and firmware documentation for the driver circuit architecture used in the accused products. Access to this source code was governed by the source code inspection protocol set forth in Paragraphs 18 through 24 of the Protective Order, which imposed additional restrictions on the manner of review and the individuals permitted to access this material.

A summary inventory of the categories of Lumos protected materials that are known to have been distributed to OWS personnel during the litigation is attached hereto as Enclosure 2 for OWS's reference and use in conducting its compliance review.

III. Obligations Under the Protective Order — Return or Destruction

The Protective Order contains express post-termination provisions that govern the handling of protected materials following the conclusion of the litigation. Paragraph 15 of the Protective Order provides, in relevant part, that within sixty (60) days following the final conclusion of the litigation — including the exhaustion of all appeals or the expiration of the time for filing an appeal — each receiving party must take one of the following actions with respect to all Confidential and Highly Confidential — Attorneys' Eyes Only materials received from the producing party:

(a) Return all such materials to the producing party. In the case of materials produced by Lumos, return is to be made to Lumos Photonics, Inc., care of its counsel of record, Brannick Howell & Stein LLP, 555 California Street, Suite 2800, San Francisco, California 94104, Attention: Victoria Ashworth; or

(b) Destroy all such materials and provide a written certification of destruction to the producing party's counsel, signed by an attorney of record or a responsible officer of the receiving party, confirming that all protected materials have been destroyed.

This obligation encompasses all forms in which protected materials exist, including originals, copies (whether in paper or electronic form), and any summaries, abstracts, compilations, analyses, notes, or other derivative documents or work product that contain, reflect, or are derived from the substance of protected information.

The Protective Order does contain one limited exception to the return-or-destroy requirement. Paragraph 15(c) of the Protective Order provides that outside counsel of record — in this case, Calderwood & Harkness LLP — may retain one archival copy of all pleadings, motion papers, expert reports, deposition transcripts, and other court filings that contain or reference protected materials, solely for the purpose of maintaining its litigation files. This archival retention right is expressly subject to the continuing confidentiality obligations imposed by the Protective Order, and the retained materials may not be used for any purpose other than reference to the concluded litigation. This exception does not extend to the underlying discovery materials themselves; it applies only to court filings and litigation work product of the type described.

Given the entry of the Order of Dismissal with Prejudice on April 18, 2023, the sixty-day compliance period runs through June 17, 2023. All protected materials must be returned or destroyed, and all certifications of compliance must be provided to Brannick Howell & Stein LLP, no later than that date.

IV. Actions Required of Optiwave Semiconductor Corp.

In order to ensure OWS's timely compliance with the Protective Order's post-termination provisions, we respectfully request that OWS undertake the following actions:

A. Identification of Custodians and Repositories.

OWS should promptly identify all custodians and repositories within the company that hold or may hold Lumos Confidential or Highly Confidential — Attorneys' Eyes Only materials. Based on C&H's records, the following OWS personnel received or had authorized access to Lumos protected materials during the course of the litigation:

• Dr. Priya Ramanathan, Chief Executive Officer — received certain Confidential materials in connection with settlement discussions and strategic oversight of the litigation;

• Dr. Kevin Fong, Chief Technology Officer — received Confidential and Highly Confidential — Attorneys' Eyes Only materials (to the extent authorized under the Protective Order) in connection with providing technical assistance to the litigation team on claim construction and infringement matters;

• Ted Marchetti, Vice President of intellectual Property — received Confidential materials in connection with his coordination of the patent infringement claims and related IP strategy;

• Sandra Ellison, General Counsel — received Confidential materials in connection with legal oversight of the litigation and settlement negotiations; and

• Any other OWS personnel who may have been authorized to access protected materials under the terms of the Protective Order during the litigation.

We ask that you confirm whether any additional OWS employees, contractors, or agents received or accessed Lumos protected materials during the case, and ensure that all such individuals are included in the compliance sweep.

B. Return or Destruction of Materials.

Once all custodians and repositories have been identified, OWS has two options for disposing of the Lumos protected materials:

Option 1 — Return. OWS may collect all Lumos Confidential and Highly Confidential — Attorneys' Eyes Only materials from all custodians and repositories and deliver them to Calderwood & Harkness LLP. C&H will then consolidate these materials with any materials in C&H's own possession that are subject to return, and arrange for a single, consolidated return shipment to Brannick Howell & Stein LLP on behalf of Lumos.

Option 2 — Destruction. Alternatively, OWS may destroy all such materials — including all electronic copies, printouts, working copies, handwritten or typed notes reflecting the substance of protected information, and any derivative work product that contains or is derived from Lumos's protected information — and provide a written certification of destruction to Calderwood & Harkness LLP. C&H will then include this certification as part of the unified certification package submitted to Brannick Howell & Stein LLP.

For electronic materials, destruction should include permanent deletion from all devices, email accounts, shared network drives, cloud storage repositories, local hard drives, and portable media (such as USB drives or external hard drives), followed by the emptying of any recycle bins or trash folders. For paper materials, destruction should be accomplished through shredding or other secure means of physical destruction.

C. Deadline.

As noted above, the overall deadline for compliance with the Protective Order's return-or-destroy provisions is June 17, 2023. However, in order to allow C&H sufficient time to consolidate OWS's certification with C&H's own certification and those of our retained experts, and to transmit a unified compliance package to Brannick Howell & Stein LLP, we respectfully request that OWS complete its return or destruction of materials and provide its signed certification to C&H no later than June 10, 2023. The Certification of Compliance form is attached as Enclosure 1 to this letter.

V. Actions Being Taken by Calderwood & Harkness LLP

In parallel with OWS's compliance efforts, Calderwood & Harkness is independently undertaking the following steps to ensure full compliance with the Protective Order:

1. Internal Repository Sweep. C&H is conducting a comprehensive sweep of all electronic repositories, litigation databases (including our Relativity document review platform and internal case management systems), email archives, and physical files maintained in connection with this matter to identify all Lumos Confidential and Highly Confidential — Attorneys' Eyes Only materials.

2. Engagement Team Coordination. The members of the C&H engagement team who handled Lumos protected materials during the litigation — Alan Ngo, Marcus Delgado, Omar Siddiqui, and Christy Bauer — are individually reviewing their electronic and physical files to identify and segregate all protected materials in their possession. Each team member will confirm in writing to the undersigned that he or she has completed this process and that all protected materials have been collected for return or destruction.

3. Archival Copy Segregation. C&H is segregating the archival copy of pleadings, motion papers, expert reports, deposition transcripts, and other court filings that C&H is permitted to retain under the exception set forth in Paragraph 15(c) of the Protective Order. This archival set will be clearly marked as subject to the continuing confidentiality obligations of the Protective Order and will be maintained in a restricted-access section of C&H's closed-matter files.

4. Return or Destruction of Remaining Materials. Following completion of the sweep and segregation process, C&H will prepare all remaining Lumos protected materials for either consolidated return to Brannick Howell & Stein LLP or certified destruction, as appropriate. C&H intends to complete this process and transmit its certification to Brannick Howell & Stein LLP in advance of the June 17, 2023 deadline.

In addition, Calderwood & Harkness will coordinate with the two retained expert firms that received Lumos protected materials during the litigation to ensure their compliance:

Dr. Harold Whitfield — Whitfield Technical Consulting Group, Inc. Dr. Whitfield (Whitfield Technical Consulting Group, Inc., 530 Lytton Avenue, Suite 210, Palo Alto, California 94301) served as OWS's technical expert in connection with the claim construction and infringement analysis phases of the litigation. In that capacity, Dr. Whitfield received substantial volumes of Lumos Confidential and Highly Confidential — Attorneys' Eyes Only materials, including the engineering schematics and process documents described in Section II above. C&H has notified Dr. Whitfield of the Protective Order's post-termination obligations and has requested that he return or destroy all Lumos protected materials in his possession and provide a written certification of compliance to C&H.

Dr. Lawrence Kessler — Apex Claim Analytics LLC. Dr. Kessler (Apex Claim Analytics LLC, 150 North Michigan Avenue, Suite 2400, Chicago, Illinois 60601) served as OWS's damages expert. In that capacity, Dr. Kessler received Lumos's revenue, cost, and financial data for the accused products, including the detailed financial information described in Section II above. C&H has likewise notified Dr. Kessler of the Protective Order's post-termination obligations and has requested that he return or destroy all Lumos protected materials in his possession and provide a written certification of compliance to C&H.

Calderwood & Harkness will obtain written certifications of compliance from both Dr. Whitfield and Dr. Kessler, and will include those certifications in the unified compliance package transmitted to Brannick Howell & Stein LLP.

VI. Continuing Confidentiality Obligations

We take this opportunity to remind OWS, and all individuals at OWS who had access to Lumos protected materials during the litigation, that the confidentiality obligations imposed by the Stipulated Protective Order survive the termination of the litigation. The return or destruction of physical and electronic copies of protected materials does not extinguish the obligation to maintain the confidentiality of the information learned from those materials.

Specifically, all information learned from Lumos's Confidential and Highly Confidential — Attorneys' Eyes Only materials may not be used for any purpose other than the now-concluded litigation, Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD (N.D. Cal.). Without limiting the generality of the foregoing, protected information received from Lumos may not be used in:

(a) Any future competitive business activities, including product design, product development, marketing strategies, pricing decisions, customer solicitation, or any other commercial activities that could benefit from knowledge of Lumos's proprietary technical or business information;

(b) Any future patent prosecution or patent-related proceedings, including the drafting or amendment of patent claims, the preparation of patent applications, or advocacy in inter partes review, post-grant review, or ex parte reexamination proceedings before the United States Patent and Trademark Office; and

(c) Communications with any third parties, including but not limited to representatives of Vantage Point Capital Partners Fund IV, LP, or any other investors, board members, advisors, or consultants, beyond those individuals who were specifically authorized to receive such materials under the terms of the Protective Order during the pendency of the litigation.

We also draw your attention to the prosecution bar provisions set forth in Paragraphs 10 through 13 of the Protective Order. Those provisions prohibit certain individuals who received Highly Confidential — Attorneys' Eyes Only materials, including technical experts and patent prosecution counsel, from participating in the prosecution of patents or patent applications relating to the subject matter of the Lumos protected materials for a period of two (2) years following the conclusion of the litigation. The prosecution bar thus remains in effect through April 18, 2025, and all individuals subject to its terms must continue to comply. We encourage you to confirm with the relevant OWS personnel that they understand and will observe these continuing restrictions.

Violations of the Protective Order's confidentiality obligations — including the surviving post-termination obligations and the prosecution bar — may subject the violating party and individual to sanctions by the Court, including contempt proceedings, as the Court has retained jurisdiction to enforce the Protective Order notwithstanding the dismissal of the underlying action.

VII. Certification Request

To document OWS's compliance with the Protective Order's return-or-destroy provisions, we request that you, Sandra, execute and return to us the attached Certification of Compliance form (Enclosure 1). By executing the Certification, OWS will confirm the following:

(a) That all Lumos Confidential and Highly Confidential — Attorneys' Eyes Only materials in OWS's possession, custody, or control — including originals, copies, and derivative materials — have been returned to Calderwood & Harkness LLP for consolidated return to Brannick Howell & Stein LLP on behalf of Lumos, or have been destroyed in accordance with the Protective Order;

(b) That OWS has conducted a reasonable and diligent search of all custodians' files, email accounts, shared drives, cloud storage, local hard drives, portable media, and physical repositories to identify and collect or destroy all protected materials;

(c) That OWS understands and acknowledges the continuing confidentiality obligations, including the surviving use restrictions and the prosecution bar provisions, imposed by the Protective Order, and will continue to comply with those obligations; and

(d) That OWS will promptly notify Calderwood & Harkness LLP if any additional Lumos protected materials are discovered after the date of the Certification, and will promptly return or destroy any such materials.

Please return the executed Certification to the attention of the undersigned, Omar Siddiqui, at Calderwood & Harkness LLP, no later than June 10, 2023. This advance deadline will allow C&H one week to consolidate OWS's certification with C&H's own internal certification and the certifications received from our retained experts, and to deliver the unified compliance package to Brannick Howell & Stein LLP by the June 17, 2023 Protective Order deadline.

VIII. Coordination with Opposing Counsel

Calderwood & Harkness will communicate directly with Brannick Howell & Stein LLP — specifically, with Victoria Ashworth and Daniel Kowalski — to coordinate the logistics of the return and destruction process and the exchange of compliance certifications. This coordination will include confirming the preferred method and address for return of physical and electronic materials, agreeing on the form and content of the mutual certifications, and establishing a schedule for the exchange of those certifications in advance of the June 17, 2023 deadline.

We would also note that Lumos, through Brannick Howell & Stein LLP, has corresponding obligations under the Protective Order to return or destroy all OWS Confidential and Highly Confidential — Attorneys' Eyes Only materials that were produced by OWS during discovery. Calderwood & Harkness will monitor and confirm Lumos's compliance with those reciprocal obligations on OWS's behalf, and will notify you upon receipt of Lumos's certification of compliance.

IX. Enclosed Materials

For your reference and use, the following materials are enclosed with this letter:

Enclosure 1: Certification of Compliance Form. This is the form certification that we request Sandra Ellison execute on behalf of OWS and return to C&H no later than June 10, 2023, as described in Section VII above.

Enclosure 2: Summary Inventory of Categories of Lumos Protected Materials Distributed to OWS Personnel During the Litigation. This summary is intended to assist OWS in conducting its compliance sweep by identifying the categories and, where known, the specific documents or document ranges of Lumos protected materials that were provided to OWS custodians during the course of the litigation. Please note that this inventory is based on C&H's records and may not be exhaustive; OWS should independently confirm that all Lumos protected materials in its possession have been identified and accounted for.

Please do not hesitate to contact me or Alan Ngo with any questions regarding the procedures outlined in this letter or the requirements of the Protective Order. I can be reached directly at the contact information below, and Alan is available at (415) 773-6218 or alan.ngo@calderwoodharkness.com. We appreciate your prompt attention to this matter and look forward to working with you to bring the post-litigation compliance process to a timely and orderly conclusion.

Sincerely,

CALDERWOOD & HARKNESS LLP

By: ________

Omar Siddiqui Direct Dial: (415) 773-6244

Email: omar.siddiqui@calderwoodharkness.com

One Embarcadero Center, 34th Floor San Francisco, California 94111

cc: Alan Ngo, Calderwood & Harkness LLP Marcus Delgado, Calderwood & Harkness LLP Theodore "Ted" Marchetti, Vice President of intellectual Property, Optiwave Semiconductor Corp.

Enclosures: (1) Certification of Compliance Form (2) Summary Inventory of Lumos Protected Materials Distributed to OWS

CALDERWOOD & HARKNESS LLP Attorneys at Law
One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 773-6200 Facsimile: (415) 773-6201 www.calderwoodharkness.com
April 20, 2023
VIA ELECTRONIC MAIL AND FedEx
Sandra Ellison, Esq. General Counsel Optiwave Semiconductor Corp. 2775 Augustine Drive, Suite 400 San Jose, California 95054
Re: Return or Destruction of Confidential Materials — Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD (N.D. Cal.)
Calderwood & Harkness Matter No. 1014-00003
Dear Sandra:
I. Purpose and Background
I am writing on behalf of Calderwood & Harkness LLP ("C&H") in connection with the obligations arising under the Stipulated Protective Order (Dkt. No. 47) entered by the Honorable Edward J. Torvelis on September 12, 2022 (the "Protective Order") in the above-referenced matter. As you are aware, the Court entered its Order of Dismissal with Prejudice on April 18, 2023, dismissing with prejudice all claims asserted by Optiwave Semiconductor Corp. ("OWS") against Lumos Photonics, Inc. ("Lumos") and all counterclaims asserted by Lumos against OWS, in accordance with the terms of the Settlement Agreement and Mutual Release executed by the parties on April 5, 2023 (the "Settlement Agreement").
With the entry of the Order of Dismissal with Prejudice, the litigation has reached its final disposition, and the post-termination provisions of the Protective Order are now triggered. The purpose of this letter is to set forth the steps that must be taken by OWS, C&H, and our retained experts to comply with the Protective Order's requirements regarding the return or destruction of all confidential materials received from Lumos during the course of discovery. We write to ensure that OWS and all individuals who had access to protected materials during the litigation are fully apprised of their obligations and can take the necessary actions within the time frame specified by the Protective Order.
We ask that you review this letter carefully and coordinate with the relevant personnel at OWS to ensure timely compliance. The remainder of this letter describes the categories of protected materials at issue, the specific obligations imposed by the Protective Order, the actions required of OWS, the steps C&H is independently undertaking, the continuing confidentiality obligations that survive the conclusion of the litigation, and the certification process we have established to document compliance.
II. Categories of Protected Materials Received from Lumos
As you will recall, the Protective Order established two tiers of protection for materials produced during discovery in this action:
"Confidential" materials: Documents and information designated by the producing party as containing confidential business information, including but not limited to proprietary commercial data, business strategies, customer lists, supplier agreements, and other non-public business information that the producing party reasonably believed could cause competitive harm if disclosed beyond the terms of the Protective Order.
"Highly Confidential — Attorneys' Eyes Only" materials: Documents and information designated by the producing party as containing highly sensitive technical, financial, or trade secret information, access to which was restricted under the Protective Order to outside counsel of record, their staff, retained experts approved under the Protective Order's expert access provisions, and the Court and its personnel. This designation was reserved for the most sensitive categories of information, including core trade secrets, proprietary engineering methodologies, and detailed financial data.
Over the course of discovery in this matter, OWS and C&H received substantial volumes of documents and information from Lumos bearing one or both of these designations. The categories of Lumos protected materials received during discovery include, but are not limited to, the following:
1. Technical Design Documents and Product Specifications. Lumos produced detailed technical design documents and product specifications for the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver products, which were the accused products in OWS's patent infringement claims. These materials were central to the claim construction and infringement analyses conducted in the litigation and included detailed descriptions of the architecture, performance characteristics, and manufacturing processes for those products.
2. Engineering Schematics and Process Documents. Lumos produced engineering schematics and detailed process documentation related to several proprietary technologies and fabrication processes, including: (a) Lumos's segmented taper coupler design, which was at the heart of OWS's infringement contentions regarding U.S. Patent No. 10,XXX,XXX; (b) the step-graded SiGe buffer photodetector architecture employed in the accused products, which utilizes discrete germanium composition steps at fractions of 0.25, 0.50, 0.75, and 1.0 to achieve lattice matching between silicon and germanium layers; (c) Lumos's micro-transfer-printed III-V gain element integration process, a proprietary heterogeneous integration technique used in the fabrication of the LumosBridge™ 800G Optical Engine; and (d) documentation regarding Lumos's CMOS driver die flip-chip bonding process via copper pillar micro-bumps, which was relevant to certain asserted claims relating to electronic-photonic integration. These materials were overwhelmingly designated as "Highly Confidential — Attorneys' Eyes Only" given their trade secret sensitivity.
3. Revenue and Financial Data for Accused Products. Lumos produced detailed revenue, cost, and financial data for the LumosBridge™ and LumosEdge™ product lines, including the data underlying the approximately $148.6 million in combined accused product revenue reported by Lumos for calendar year 2022. This financial data was provided in connection with the damages phase of the litigation and included unit sales data, average selling prices, bill-of-materials costs, gross margin analyses, and customer-specific revenue breakdowns. The vast majority of this financial information was designated "Highly Confidential — Attorneys' Eyes Only."
4. Internal Lumos Communications. Lumos produced internal email communications, memoranda, presentations, and other business records responsive to OWS's First Set of Requests for Production of Documents (comprising 112 individual requests served on November 21, 2022). These productions included communications among Lumos engineering, product management, and executive personnel regarding the design, development, and commercialization of the accused products, as well as communications reflecting Lumos's awareness of OWS's patent portfolio.
5. Interrogatory Responses. Lumos served interrogatory responses containing contention-related technical detail regarding its non-infringement and invalidity positions, as well as financial detail relevant to damages. These responses contained detailed narrative descriptions of Lumos's proprietary technologies and were designated under the Protective Order.
6. Source Code and Firmware Documentation. Lumos produced source code and firmware documentation for the driver circuit architecture used in the accused products. Access to this source code was governed by the source code inspection protocol set forth in Paragraphs 18 through 24 of the Protective Order, which imposed additional restrictions on the manner of review and the individuals permitted to access this material.
A summary inventory of the categories of Lumos protected materials that are known to have been distributed to OWS personnel during the litigation is attached hereto as Enclosure 2 for OWS's reference and use in conducting its compliance review.
III. Obligations Under the Protective Order — Return or Destruction
The Protective Order contains express post-termination provisions that govern the handling of protected materials following the conclusion of the litigation. Paragraph 15 of the Protective Order provides, in relevant part, that within sixty (60) days following the final conclusion of the litigation — including the exhaustion of all appeals or the expiration of the time for filing an appeal — each receiving party must take one of the following actions with respect to all Confidential and Highly Confidential — Attorneys' Eyes Only materials received from the producing party:
(a) Return all such materials to the producing party. In the case of materials produced by Lumos, return is to be made to Lumos Photonics, Inc., care of its counsel of record, Brannick Howell & Stein LLP, 555 California Street, Suite 2800, San Francisco, California 94104, Attention: Victoria Ashworth; or
(b) Destroy all such materials and provide a written certification of destruction to the producing party's counsel, signed by an attorney of record or a responsible officer of the receiving party, confirming that all protected materials have been destroyed.
This obligation encompasses all forms in which protected materials exist, including originals, copies (whether in paper or electronic form), and any summaries, abstracts, compilations, analyses, notes, or other derivative documents or work product that contain, reflect, or are derived from the substance of protected information.
The Protective Order does contain one limited exception to the return-or-destroy requirement. Paragraph 15(c) of the Protective Order provides that outside counsel of record — in this case, Calderwood & Harkness LLP — may retain one archival copy of all pleadings, motion papers, expert reports, deposition transcripts, and other court filings that contain or reference protected materials, solely for the purpose of maintaining its litigation files. This archival retention right is expressly subject to the continuing confidentiality obligations imposed by the Protective Order, and the retained materials may not be used for any purpose other than reference to the concluded litigation. This exception does not extend to the underlying discovery materials themselves; it applies only to court filings and litigation work product of the type described.
Given the entry of the Order of Dismissal with Prejudice on April 18, 2023, the sixty-day compliance period runs through June 17, 2023. All protected materials must be returned or destroyed, and all certifications of compliance must be provided to Brannick Howell & Stein LLP, no later than that date.
IV. Actions Required of Optiwave Semiconductor Corp.
In order to ensure OWS's timely compliance with the Protective Order's post-termination provisions, we respectfully request that OWS undertake the following actions:
A. Identification of Custodians and Repositories.
OWS should promptly identify all custodians and repositories within the company that hold or may hold Lumos Confidential or Highly Confidential — Attorneys' Eyes Only materials. Based on C&H's records, the following OWS personnel received or had authorized access to Lumos protected materials during the course of the litigation:
• Dr. Priya Ramanathan, Chief Executive Officer — received certain Confidential materials in connection with settlement discussions and strategic oversight of the litigation;
• Dr. Kevin Fong, Chief Technology Officer — received Confidential and Highly Confidential — Attorneys' Eyes Only materials (to the extent authorized under the Protective Order) in connection with providing technical assistance to the litigation team on claim construction and infringement matters;
• Ted Marchetti, Vice President of intellectual Property — received Confidential materials in connection with his coordination of the patent infringement claims and related IP strategy;
• Sandra Ellison, General Counsel — received Confidential materials in connection with legal oversight of the litigation and settlement negotiations; and
• Any other OWS personnel who may have been authorized to access protected materials under the terms of the Protective Order during the litigation.
We ask that you confirm whether any additional OWS employees, contractors, or agents received or accessed Lumos protected materials during the case, and ensure that all such individuals are included in the compliance sweep.
B. Return or Destruction of Materials.
Once all custodians and repositories have been identified, OWS has two options for disposing of the Lumos protected materials:
Option 1 — Return. OWS may collect all Lumos Confidential and Highly Confidential — Attorneys' Eyes Only materials from all custodians and repositories and deliver them to Calderwood & Harkness LLP. C&H will then consolidate these materials with any materials in C&H's own possession that are subject to return, and arrange for a single, consolidated return shipment to Brannick Howell & Stein LLP on behalf of Lumos.
Option 2 — Destruction. Alternatively, OWS may destroy all such materials — including all electronic copies, printouts, working copies, handwritten or typed notes reflecting the substance of protected information, and any derivative work product that contains or is derived from Lumos's protected information — and provide a written certification of destruction to Calderwood & Harkness LLP. C&H will then include this certification as part of the unified certification package submitted to Brannick Howell & Stein LLP.
For electronic materials, destruction should include permanent deletion from all devices, email accounts, shared network drives, cloud storage repositories, local hard drives, and portable media (such as USB drives or external hard drives), followed by the emptying of any recycle bins or trash folders. For paper materials, destruction should be accomplished through shredding or other secure means of physical destruction.
C. Deadline.
As noted above, the overall deadline for compliance with the Protective Order's return-or-destroy provisions is June 17, 2023. However, in order to allow C&H sufficient time to consolidate OWS's certification with C&H's own certification and those of our retained experts, and to transmit a unified compliance package to Brannick Howell & Stein LLP, we respectfully request that OWS complete its return or destruction of materials and provide its signed certification to C&H no later than June 10, 2023. The Certification of Compliance form is attached as Enclosure 1 to this letter.
V. Actions Being Taken by Calderwood & Harkness LLP
In parallel with OWS's compliance efforts, Calderwood & Harkness is independently undertaking the following steps to ensure full compliance with the Protective Order:
1. Internal Repository Sweep. C&H is conducting a comprehensive sweep of all electronic repositories, litigation databases (including our Relativity document review platform and internal case management systems), email archives, and physical files maintained in connection with this matter to identify all Lumos Confidential and Highly Confidential — Attorneys' Eyes Only materials.
2. Engagement Team Coordination. The members of the C&H engagement team who handled Lumos protected materials during the litigation — Alan Ngo, Marcus Delgado, Omar Siddiqui, and Christy Bauer — are individually reviewing their electronic and physical files to identify and segregate all protected materials in their possession. Each team member will confirm in writing to the undersigned that he or she has completed this process and that all protected materials have been collected for return or destruction.
3. Archival Copy Segregation. C&H is segregating the archival copy of pleadings, motion papers, expert reports, deposition transcripts, and other court filings that C&H is permitted to retain under the exception set forth in Paragraph 15(c) of the Protective Order. This archival set will be clearly marked as subject to the continuing confidentiality obligations of the Protective Order and will be maintained in a restricted-access section of C&H's closed-matter files.
4. Return or Destruction of Remaining Materials. Following completion of the sweep and segregation process, C&H will prepare all remaining Lumos protected materials for either consolidated return to Brannick Howell & Stein LLP or certified destruction, as appropriate. C&H intends to complete this process and transmit its certification to Brannick Howell & Stein LLP in advance of the June 17, 2023 deadline.
In addition, Calderwood & Harkness will coordinate with the two retained expert firms that received Lumos protected materials during the litigation to ensure their compliance:
Dr. Harold Whitfield — Whitfield Technical Consulting Group, Inc. Dr. Whitfield (Whitfield Technical Consulting Group, Inc., 530 Lytton Avenue, Suite 210, Palo Alto, California 94301) served as OWS's technical expert in connection with the claim construction and infringement analysis phases of the litigation. In that capacity, Dr. Whitfield received substantial volumes of Lumos Confidential and Highly Confidential — Attorneys' Eyes Only materials, including the engineering schematics and process documents described in Section II above. C&H has notified Dr. Whitfield of the Protective Order's post-termination obligations and has requested that he return or destroy all Lumos protected materials in his possession and provide a written certification of compliance to C&H.
Dr. Lawrence Kessler — Apex Claim Analytics LLC. Dr. Kessler (Apex Claim Analytics LLC, 150 North Michigan Avenue, Suite 2400, Chicago, Illinois 60601) served as OWS's damages expert. In that capacity, Dr. Kessler received Lumos's revenue, cost, and financial data for the accused products, including the detailed financial information described in Section II above. C&H has likewise notified Dr. Kessler of the Protective Order's post-termination obligations and has requested that he return or destroy all Lumos protected materials in his possession and provide a written certification of compliance to C&H.
Calderwood & Harkness will obtain written certifications of compliance from both Dr. Whitfield and Dr. Kessler, and will include those certifications in the unified compliance package transmitted to Brannick Howell & Stein LLP.
VI. Continuing Confidentiality Obligations
We take this opportunity to remind OWS, and all individuals at OWS who had access to Lumos protected materials during the litigation, that the confidentiality obligations imposed by the Stipulated Protective Order survive the termination of the litigation. The return or destruction of physical and electronic copies of protected materials does not extinguish the obligation to maintain the confidentiality of the information learned from those materials.
Specifically, all information learned from Lumos's Confidential and Highly Confidential — Attorneys' Eyes Only materials may not be used for any purpose other than the now-concluded litigation, Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD (N.D. Cal.). Without limiting the generality of the foregoing, protected information received from Lumos may not be used in:
(a) Any future competitive business activities, including product design, product development, marketing strategies, pricing decisions, customer solicitation, or any other commercial activities that could benefit from knowledge of Lumos's proprietary technical or business information;
(b) Any future patent prosecution or patent-related proceedings, including the drafting or amendment of patent claims, the preparation of patent applications, or advocacy in inter partes review, post-grant review, or ex parte reexamination proceedings before the United States Patent and Trademark Office; and
(c) Communications with any third parties, including but not limited to representatives of Vantage Point Capital Partners Fund IV, LP, or any other investors, board members, advisors, or consultants, beyond those individuals who were specifically authorized to receive such materials under the terms of the Protective Order during the pendency of the litigation.
We also draw your attention to the prosecution bar provisions set forth in Paragraphs 10 through 13 of the Protective Order. Those provisions prohibit certain individuals who received Highly Confidential — Attorneys' Eyes Only materials, including technical experts and patent prosecution counsel, from participating in the prosecution of patents or patent applications relating to the subject matter of the Lumos protected materials for a period of two (2) years following the conclusion of the litigation. The prosecution bar thus remains in effect through April 18, 2025, and all individuals subject to its terms must continue to comply. We encourage you to confirm with the relevant OWS personnel that they understand and will observe these continuing restrictions.
Violations of the Protective Order's confidentiality obligations — including the surviving post-termination obligations and the prosecution bar — may subject the violating party and individual to sanctions by the Court, including contempt proceedings, as the Court has retained jurisdiction to enforce the Protective Order notwithstanding the dismissal of the underlying action.
VII. Certification Request
To document OWS's compliance with the Protective Order's return-or-destroy provisions, we request that you, Sandra, execute and return to us the attached Certification of Compliance form (Enclosure 1). By executing the Certification, OWS will confirm the following:
(a) That all Lumos Confidential and Highly Confidential — Attorneys' Eyes Only materials in OWS's possession, custody, or control — including originals, copies, and derivative materials — have been returned to Calderwood & Harkness LLP for consolidated return to Brannick Howell & Stein LLP on behalf of Lumos, or have been destroyed in accordance with the Protective Order;
(b) That OWS has conducted a reasonable and diligent search of all custodians' files, email accounts, shared drives, cloud storage, local hard drives, portable media, and physical repositories to identify and collect or destroy all protected materials;
(c) That OWS understands and acknowledges the continuing confidentiality obligations, including the surviving use restrictions and the prosecution bar provisions, imposed by the Protective Order, and will continue to comply with those obligations; and
(d) That OWS will promptly notify Calderwood & Harkness LLP if any additional Lumos protected materials are discovered after the date of the Certification, and will promptly return or destroy any such materials.
Please return the executed Certification to the attention of the undersigned, Omar Siddiqui, at Calderwood & Harkness LLP, no later than June 10, 2023. This advance deadline will allow C&H one week to consolidate OWS's certification with C&H's own internal certification and the certifications received from our retained experts, and to deliver the unified compliance package to Brannick Howell & Stein LLP by the June 17, 2023 Protective Order deadline.
VIII. Coordination with Opposing Counsel
Calderwood & Harkness will communicate directly with Brannick Howell & Stein LLP — specifically, with Victoria Ashworth and Daniel Kowalski — to coordinate the logistics of the return and destruction process and the exchange of compliance certifications. This coordination will include confirming the preferred method and address for return of physical and electronic materials, agreeing on the form and content of the mutual certifications, and establishing a schedule for the exchange of those certifications in advance of the June 17, 2023 deadline.
We would also note that Lumos, through Brannick Howell & Stein LLP, has corresponding obligations under the Protective Order to return or destroy all OWS Confidential and Highly Confidential — Attorneys' Eyes Only materials that were produced by OWS during discovery. Calderwood & Harkness will monitor and confirm Lumos's compliance with those reciprocal obligations on OWS's behalf, and will notify you upon receipt of Lumos's certification of compliance.
IX. Enclosed Materials
For your reference and use, the following materials are enclosed with this letter:
Enclosure 1: Certification of Compliance Form. This is the form certification that we request Sandra Ellison execute on behalf of OWS and return to C&H no later than June 10, 2023, as described in Section VII above.
Enclosure 2: Summary Inventory of Categories of Lumos Protected Materials Distributed to OWS Personnel During the Litigation. This summary is intended to assist OWS in conducting its compliance sweep by identifying the categories and, where known, the specific documents or document ranges of Lumos protected materials that were provided to OWS custodians during the course of the litigation. Please note that this inventory is based on C&H's records and may not be exhaustive; OWS should independently confirm that all Lumos protected materials in its possession have been identified and accounted for.
Please do not hesitate to contact me or Alan Ngo with any questions regarding the procedures outlined in this letter or the requirements of the Protective Order. I can be reached directly at the contact information below, and Alan is available at (415) 773-6218 or alan.ngo@calderwoodharkness.com. We appreciate your prompt attention to this matter and look forward to working with you to bring the post-litigation compliance process to a timely and orderly conclusion.
Sincerely,
CALDERWOOD & HARKNESS LLP
By: ________
Omar Siddiqui Direct Dial: (415) 773-6244
Email: omar.siddiqui@calderwoodharkness.com
One Embarcadero Center, 34th Floor San Francisco, California 94111
cc: Alan Ngo, Calderwood & Harkness LLP Marcus Delgado, Calderwood & Harkness LLP Theodore "Ted" Marchetti, Vice President of intellectual Property, Optiwave Semiconductor Corp.
Enclosures: (1) Certification of Compliance Form (2) Summary Inventory of Lumos Protected Materials Distributed to OWS

CALDERWOOD & HARKNESS LLP Attorneys at Law

CALDERWOOD & HARKNESS LLP

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