1014-00003 · Optiwave Semiconductor Corp · Settlement & Dismissal

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SETTLEMENT AGREEMENT AND MUTUAL RELEASE

Dated as of April 5, 2023

This SETTLEMENT AGREEMENT AND MUTUAL RELEASE (this "Agreement") is entered into as of April 5, 2023 (the "Effective Date"), by and between:

OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation with its principal place of business at 2775 Augustine Drive, Suite 400, San Jose, California 95054 ("OWS" or "Optiwave"),

and

LUMOS PHOTONICS, INC., a Delaware corporation with its principal place of business at 9400 McNeil Drive, Building 7, Austin, Texas 78758 ("Lumos" or "LPI").

OWS and Lumos are each referred to herein individually as a "Party" and collectively as the "Parties."

RECITALS

WHEREAS:

A. OWS is a fabless semiconductor design company specializing in silicon photonics integrated circuits for data center interconnects and telecommunications applications, duly incorporated and existing under the laws of the State of Delaware and headquartered in San Jose, California. OWS is the owner by valid assignment of, among other patents, the following United States patents: U.S. Patent No. 10,234,567 ("the '567 Patent"), entitled "Integrated Waveguide Coupler with Tapered Mode Converter for Silicon Photonics Platforms," issued on March 19, 2019; U.S. Patent No. 10,891,234 ("the '234 Patent"), entitled "Germanium-on-Silicon Photodetector with Graded Buffer Layer for Enhanced Responsivity," issued on January 14, 2021; U.S. Patent No. 11,045,678 ("the '678 Patent"), entitled "Multi-Channel Optical Transceiver with Integrated Wavelength-Division Multiplexing on Silicon," issued on June 29, 2021; and U.S. Patent No. 11,312,890 ("the '890 Patent"), entitled "Driver Circuit Architecture for High-Speed Silicon Photonic Mach-Zehnder Modulators," issued on April 26, 2022 (collectively, the "Patents-in-Suit").

B. Lumos is an integrated device manufacturer of silicon photonics components designed for hyperscale data center applications, duly incorporated and existing under the laws of the State of Delaware and headquartered in Austin, Texas. Lumos maintains a fabrication facility located at 3500 NW Aloclek Drive, Hillsboro, Oregon 97124, and a sales office and engineering center located at 4750 Great America Parkway, Suite 320, Santa Clara, California 95054. Lumos is a publicly traded company, with its common stock listed and traded on the Nasdaq Stock Market under the ticker symbol "LMPH."

C. On June 3, 2022, OWS filed a Complaint for Patent Infringement against Lumos in the United States District Court for the Northern District of California, San Jose Division, captioned Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD, assigned to the Honorable Edward J. Torvelis (the "Action" or the "Litigation"). In the Action, OWS asserted that certain products manufactured, marketed, sold, offered for sale, and/or imported by Lumos, specifically Lumos's LumosBridge™ 800G Optical Engine and LumosEdge™ 400ZR+ Pluggable Transceiver products (collectively, the "Accused Products"), infringe one or more claims of the Patents-in-Suit. OWS sought, among other relief, compensatory damages, enhanced damages for alleged willful infringement pursuant to 35 U.S.C. § 284, permanent injunctive relief, attorneys' fees pursuant to 35 U.S.C. § 285, and costs.

D. On July 29, 2022, Lumos filed its Answer to OWS's Complaint, denying the material allegations of infringement and asserting various affirmative defenses thereto. Lumos also filed Counterclaims seeking declaratory judgments of non-infringement and invalidity of each of the Patents-in-Suit under, inter alia, 35 U.S.C. §§ 102, 103, and 112 (the "Counterclaims").

E. On January 30, 2023, the Court conducted a claim construction hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (the "Markman Hearing"), and on February 17, 2023, the Court issued a thirty-four (34) page Claim Construction Order construing eleven (11) disputed claim terms across all four Patents-in-Suit (the "Markman Order").

F. Following the issuance of the Markman Order, the Parties engaged in good-faith settlement discussions, including a full-day mediation conducted on March 17, 2023, and subsequent follow-up negotiations between counsel. The Parties now desire to resolve all disputes arising from or related to the Litigation without any admission of liability, infringement, validity, or invalidity by either Party, and without the continued expenditure of resources associated with further prosecution and defense of the Action.

G. The Parties desire to fully, finally, and forever settle, compromise, and resolve all claims, counterclaims, defenses, and disputes between them arising out of or relating to the Litigation, on the terms and conditions set forth herein, and to avoid the expense, burden, distraction, and uncertainty of continued litigation.

NOW, THEREFORE, in consideration of the mutual covenants, agreements, releases, and promises contained herein, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties, intending to be legally bound, agree as follows:

ARTICLE I — DEFINITIONS

As used in this Agreement, the following terms shall have the meanings set forth below. Capitalized terms used but not otherwise defined in this Article I shall have the meanings ascribed to them elsewhere in this Agreement.

Section 1.1 "Action" or "Litigation" means the civil action captioned Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD, pending in the United States District Court for the Northern District of California, San Jose Division, before the Honorable Edward J. Torvelis, including all claims, counterclaims, motions, proceedings, discovery, and other matters arising therein.

Section 1.2 "Accused Products" means the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver products manufactured, marketed, sold, offered for sale, used, and/or imported by Lumos, together with all variants, configurations, versions, revisions, updates, and successors thereof that were accused of infringement in the Action.

Section 1.3 "Affiliate(s)" means, with respect to a Party, any entity that directly or indirectly controls, is controlled by, or is under common control with such Party. For purposes of this definition, "control" means the direct or indirect ownership of fifty percent (50%) or more of the outstanding voting securities of an entity, or the equivalent ownership interest in an entity that does not have outstanding voting securities, or the power to direct or cause the direction of the management and policies of an entity, whether through the ownership of voting securities, by contract, or otherwise.

Section 1.4 "Counterclaims" means Lumos's counterclaims for declaratory judgment of non-infringement and invalidity of the Patents-in-Suit, as filed in the Action on July 29, 2022, including all amendments and supplements thereto.

Section 1.5 "Effective Date" means the date on which this Agreement has been fully executed by both Parties, which the Parties agree is April 5, 2023.

Section 1.6 "Markman Order" means the Court's Claim Construction Order issued on February 17, 2023, in the Action, construing eleven (11) disputed claim terms across the Patents-in-Suit.

Section 1.7 "Patents-in-Suit" means U.S. Patent No. 10,234,567; U.S. Patent No. 10,891,234; U.S. Patent No. 11,045,678; and U.S. Patent No. 11,312,890; together with all continuations, continuations-in-part, divisionals, reissues, reexaminations, inter partes reviews, and foreign counterparts thereof, in each case solely to the extent such patents or patent applications were asserted or at issue in the Action.

Section 1.8 "Protective Order" means the Stipulated Protective Order entered by the Court in the Action on or about September 12, 2022, as amended, governing the treatment of confidential information exchanged by the Parties during the course of the Litigation.

Section 1.9 "Releasees" has the meaning set forth in Section 3.1 of this Agreement.

Section 1.10 "Releasors" has the meaning set forth in Section 3.1 of this Agreement.

Section 1.11 "Released Claims" has the meaning set forth in Section 3.2 of this Agreement.

ARTICLE II — SETTLEMENT TERMS

Section 2.1 No Payment. No monetary payment shall be made by either Party to the other Party in connection with this Agreement, the resolution of the Action, or the settlement of any claims or counterclaims asserted or that could have been asserted in the Action. Each Party acknowledges and agrees that the sole and exclusive consideration for this Agreement is the mutual releases and covenants set forth herein, the dismissal of the Action with prejudice, and the avoidance of the expense, burden, distraction, and uncertainty of continued litigation. Each Party further acknowledges that such consideration is adequate and sufficient to support this Agreement.

Section 2.2 No License Granted. Nothing in this Agreement shall be construed as granting to either Party any license, whether express, implied, by estoppel, or otherwise, under any patent, patent application, trade secret, copyright, mask work right, trademark, or other intellectual property right of the other Party. Without limiting the generality of the foregoing:

(a) This Agreement does not grant OWS any license under any intellectual property right owned or controlled by Lumos or any of its Affiliates.

(b) This Agreement does not grant Lumos any license under any intellectual property right owned or controlled by OWS or any of its Affiliates, including without limitation the Patents-in-Suit or any other patent or patent application in OWS's portfolio, whether now existing or hereafter acquired or filed.

For the avoidance of doubt, neither Party acquires by virtue of this Agreement any rights to practice, make, have made, use, sell, offer for sale, import, or otherwise exploit any technology or intellectual property of the other Party.

Section 2.3 Attorneys' Fees and Costs. Each Party shall bear its own attorneys' fees, costs, expert witness fees, consultant fees, and all other expenses incurred in connection with the prosecution, defense, or settlement of the Action and the negotiation, preparation, and execution of this Agreement. Neither Party shall seek, petition for, or accept any award of attorneys' fees, costs, or expenses from the other Party in connection with the Action or this Agreement.

Section 2.4 No Admission. This Agreement and the settlement of the Action shall not be construed as, and do not constitute, an admission by either Party, or by any Affiliate, officer, director, employee, agent, or attorney of either Party, of:

(a) infringement or non-infringement of any patent, including the Patents-in-Suit;

(b) the validity or invalidity of any patent, including the Patents-in-Suit;

(d) the merit or lack of merit of any claim, counterclaim, defense, or position asserted or that could have been asserted in the Action; or

(e) any liability, wrongdoing, or fault of any kind or nature whatsoever.

This Agreement shall not be offered or received in evidence in any action or proceeding as an admission or concession of any fact, issue, or liability, except as may be necessary to enforce the terms of this Agreement or to support a defense of res judicata, collateral estoppel, release, or other defense or counterclaim based upon this Agreement.

Section 2.5 Dismissal with Prejudice.

(a) Within five (5) business days following the Effective Date, the Parties, through their respective counsel of record in the Action, shall jointly file a Joint Stipulation of Dismissal with Prejudice in the Action, providing for the dismissal with prejudice of all claims asserted by OWS against Lumos and all counterclaims asserted by Lumos against OWS, with each Party bearing its own costs and attorneys' fees. The Joint Stipulation of Dismissal shall be substantially in the form attached hereto as Exhibit A and incorporated herein by reference.

(b) Concurrently with the filing of the Joint Stipulation of Dismissal, the Parties shall submit to the Court a Proposed Order of Dismissal with Prejudice for the signature of the Honorable Edward J. Torvelis, substantially in the form attached hereto as Exhibit B and incorporated herein by reference.

(c) The Parties acknowledge and agree that the Joint Stipulation of Dismissal with Prejudice was filed on April 10, 2023, and that the Court entered the Order of Dismissal with Prejudice on April 18, 2023.

ARTICLE III — MUTUAL RELEASES

Section 3.1 Definition of Releasors and Releasees.

(a) "OWS Releasors" means OWS, its Affiliates, and each of their respective past, present, and future officers, directors, members, managers, partners, shareholders, employees, agents, attorneys, representatives, successors, and assigns, including without limitation Vantage Point Capital Partners Fund IV, LP, and its general partner, Vantage Point Capital GP IV, LLC.

(b) "Lumos Releasors" means Lumos, its Affiliates, and each of their respective past, present, and future officers, directors, members, managers, partners, shareholders, employees, agents, attorneys, representatives, successors, and assigns.

(c) "OWS Releasees" means OWS, its Affiliates, and each of their respective past, present, and future officers, directors, members, managers, partners, shareholders, employees, agents, attorneys, representatives, successors, and assigns, including without limitation Vantage Point Capital Partners Fund IV, LP, and its general partner, Vantage Point Capital GP IV, LLC.

(d) "Lumos Releasees" means Lumos, its Affiliates, and each of their respective past, present, and future officers, directors, members, managers, partners, shareholders, employees, agents, attorneys, representatives, successors, and assigns.

(e) The OWS Releasors release the Lumos Releasees, and the Lumos Releasors release the OWS Releasees, as further set forth in Section 3.2 below.

Section 3.2 Scope of Released Claims. "Released Claims" means any and all claims, demands, actions, causes of action, suits, damages, losses, liabilities, obligations, judgments, liens, costs, expenses, and attorneys' fees, of every kind and nature whatsoever, whether at law or in equity, whether known or unknown, suspected or unsuspected, asserted or unasserted, foreseen or unforeseen, matured or unmatured, accrued or unaccrued, liquidated or unliquidated, that any Releasor ever had, now has, or hereafter can, shall, or may have against any Releasee, arising out of, relating to, or in connection with:

(a) the Action, including all claims, counterclaims, affirmative defenses, and other contentions asserted therein, or that could have been asserted therein based on the facts and circumstances existing as of the Effective Date;

(b) the Patents-in-Suit, to the extent relating to the Accused Products;

(d) the cease-and-desist letter sent by OWS to Lumos dated March 15, 2022, and Lumos's response letter dated April 4, 2022, and all communications, negotiations, and correspondence between the Parties relating thereto; and

(e) any alleged infringement, non-infringement, validity, invalidity, enforceability, or unenforceability of the Patents-in-Suit with respect to the Accused Products.

Notwithstanding the foregoing, the Released Claims shall not include: (i) any claims arising under or relating to this Agreement itself (including claims for breach of this Agreement); (ii) any claims, rights, or causes of action unrelated to the Action, the Patents-in-Suit, or the Accused Products; or (iii) any claims by OWS against Lumos or any third party relating to products other than the Accused Products, or any claims by OWS relating to patents other than the Patents-in-Suit. For the avoidance of doubt, OWS expressly reserves all rights to assert any of its patents (including the Patents-in-Suit) against Lumos with respect to any Lumos products that are not Accused Products, and Lumos expressly reserves all rights to challenge the validity, enforceability, or scope of any OWS patents in connection with any such assertion.

Section 3.3 California Civil Code Section 1542 Waiver.

Each Party, on behalf of itself and its respective Releasors, expressly waives and relinquishes, to the fullest extent permitted by law, all rights and benefits afforded by Section 1542 of the California Civil Code, which provides:

"A general release does not extend to claims that the creditor or releasing party does not know or suspect to exist in his or her favor at the time of executing the release and that, if known by him or her, would have materially affected his or her settlement with the debtor or released party."

Each Party acknowledges that it is aware that it may discover facts different from, or in addition to, those facts that it now knows or believes to be true with respect to the subject matter of the Released Claims. Each Party nonetheless agrees that this Agreement and the releases contained herein shall be and remain effective in all respects notwithstanding such different or additional facts or the discovery thereof. Each Party expressly assumes the risk of such unknown facts and agrees that this Agreement applies to all Released Claims, including those arising from facts that are presently unknown, unanticipated, or unsuspected. Each Party further waives and relinquishes any comparable right or provision under the laws of any other jurisdiction that may be applicable.

Section 3.4 Covenant Not to Sue (Limited).

Each Party covenants and agrees, on behalf of itself and its respective Releasors, that it shall not institute, prosecute, maintain, participate in, or assist in the institution or prosecution of any action, suit, proceeding, claim, or demand, whether at law, in equity, or before any administrative body, asserting any Released Claims against any Releasee. Any breach of this covenant not to sue shall entitle the aggrieved Party to seek injunctive relief and to recover its reasonable attorneys' fees and costs incurred in defending against any such action, suit, proceeding, claim, or demand, in addition to any other remedies available at law or in equity.

ARTICLE IV — CONFIDENTIAL INFORMATION AND PROTECTIVE ORDER

Section 4.1 Return or Destruction of Confidential Materials.

Within thirty (30) days following the entry of the Order of Dismissal with Prejudice in the Action, each Party and its outside counsel of record shall comply with the provisions of the Stipulated Protective Order entered in the Action regarding the return or destruction of all documents, materials, and information designated as "CONFIDENTIAL" or "HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY" that were produced by the other Party or any third party during the course of the Action. Without limiting the generality of the foregoing, each receiving Party shall, at the election of the producing Party, either: (a) return all such materials (including all copies, summaries, abstracts, and compilations thereof) to the producing Party or its counsel; or (b) destroy all such materials (including all copies, summaries, abstracts, and compilations thereof) and certify such destruction. Each Party's outside counsel of record shall provide written certification of compliance with this Section 4.1 to the producing Party's counsel within the thirty (30) day period specified herein. Notwithstanding the foregoing, outside counsel for each Party may retain one (1) archival copy of all pleadings, briefs, and correspondence filed with the Court or exchanged between counsel in the Action, solely for the purpose of establishing compliance with ethical and professional obligations, subject to the continuing confidentiality obligations of the Protective Order.

Section 4.2 Survival of Protective Order Obligations.

The confidentiality obligations set forth in the Stipulated Protective Order entered in the Action shall survive the termination or dismissal of the Action and the execution and delivery of this Agreement, in accordance with their terms. Nothing in this Agreement shall be construed to modify, amend, supersede, or limit the obligations of the Parties, their counsel, or any other person bound by the Protective Order, except to the extent expressly set forth herein.

ARTICLE V — REPRESENTATIONS AND WARRANTIES

Section 5.1 Authority. Each Party represents and warrants to the other Party that, as of the Effective Date:

(a) It is a corporation duly organized, validly existing, and in good standing under the laws of the State of Delaware, and has the full right, power, and authority to enter into this Agreement and to perform all of its obligations hereunder.

(b) The execution, delivery, and performance of this Agreement has been duly authorized by all necessary corporate action on the part of such Party. With respect to OWS, such authorization includes the approval of the Board of Directors of Optiwave Semiconductor Corp., including the concurrence of Vantage Point Capital Partners Fund IV, LP, as the majority shareholder of OWS. With respect to Lumos, such authorization includes the approval of such persons or bodies as are required under Lumos's certificate of incorporation, bylaws, and applicable corporate governance policies.

(c) This Agreement constitutes a valid and binding obligation of such Party, enforceable against such Party in accordance with its terms, subject only to applicable bankruptcy, insolvency, reorganization, moratorium, and similar laws affecting creditors' rights generally, and to general principles of equity (regardless of whether enforcement is sought in a proceeding at law or in equity).

(d) The person executing this Agreement on behalf of such Party has been duly authorized to do so and has the full power and authority to bind such Party to the terms and conditions of this Agreement.

(e) The execution, delivery, and performance of this Agreement does not and will not conflict with, violate, or result in a breach of or default under any provision of such Party's certificate of incorporation or bylaws, any agreement to which such Party is a party, or any applicable law, regulation, or order.

Section 5.2 No Assignment of Claims. Each Party represents and warrants to the other Party that, as of the Effective Date, it has not assigned, transferred, pledged, hypothecated, or otherwise conveyed any of the Released Claims, or any interest therein, to any third party. Each Party further represents and warrants that no third party has acquired, by operation of law or otherwise, any right to assert any of the Released Claims on behalf of such Party.

Section 5.3 Ownership of Patents (OWS). OWS represents and warrants to Lumos that, as of the Effective Date, OWS is the sole and exclusive owner of the entire right, title, and interest in and to each of the Patents-in-Suit by valid written assignment recorded with the United States Patent and Trademark Office, and that OWS has not granted any third party any license, covenant not to sue, or other right under the Patents-in-Suit that would impair or limit OWS's ability to grant the releases and covenants set forth in this Agreement.

ARTICLE VI — CONFIDENTIALITY OF SETTLEMENT

Section 6.1 Confidential Treatment. The Parties acknowledge and agree that the terms and conditions of this Agreement, including without limitation the existence and content of any specific provisions hereof, are and shall remain confidential. Each Party agrees that it shall not disclose the terms and conditions of this Agreement to any third party without the prior written consent of the other Party, except as follows:

(a) As required by applicable law, regulation, legal process, or order of a court or governmental body of competent jurisdiction, including without limitation Lumos's obligations under the Securities Act of 1933, the Securities Exchange Act of 1934, and the rules and regulations of the United States Securities and Exchange Commission ("SEC") and the Nasdaq Stock Market, as applicable to Lumos as a publicly traded company listed on the Nasdaq Stock Market under the ticker symbol "LMPH." In the event that a Party is required by law, regulation, or legal process to disclose any terms of this Agreement, such Party shall, to the extent legally permissible, provide the other Party with prompt written notice of such requirement prior to making any such disclosure and shall cooperate with the other Party to seek an appropriate protective order or other confidential treatment for the information to be disclosed.

(b) To a Party's Affiliates and to such Party's officers, directors, employees, accountants, auditors, lenders, insurers, financial advisors, and professional advisors (including outside legal counsel), in each case who have a bona fide need to know the terms of this Agreement in connection with their professional responsibilities, and who are bound by confidentiality obligations no less restrictive than those set forth in this Section 6.1.

(c) With respect to OWS: to Vantage Point Capital Partners Fund IV, LP, and Vantage Point Capital GP IV, LLC, and their respective officers, directors, members, managers, partners, employees, agents, and professional advisors, in each case who have a bona fide need to know the terms of this Agreement.

(d) With respect to OWS: to First Pacific Commerce Bank, N.A., and its officers, employees, and agents, solely as required under the covenants and reporting obligations of OWS's revolving credit facility with First Pacific Commerce Bank, N.A., provided that such disclosures are made subject to confidentiality obligations no less restrictive than those set forth in this Section 6.1.

(e) To the extent necessary to enforce or defend the terms of this Agreement in any legal, arbitral, or administrative proceeding.

Section 6.2 Public Statements. Neither Party shall issue any press release, public announcement, social media post, or other public statement regarding the settlement of the Action, or the terms and conditions of this Agreement, without the prior written consent of the other Party; provided, however, that:

(a) Either Party may publicly state, in response to inquiries from third parties, that "the litigation has been resolved" or words to substantially similar effect, without providing any additional detail regarding the terms or conditions of the settlement.

(b) Lumos may make any disclosure regarding the settlement that is required under SEC regulations, the rules of the Nasdaq Stock Market, or other applicable securities laws, subject to the notice and cooperation obligations set forth in Section 6.1(a) above.

Under no circumstances shall either Party characterize the settlement of the Action, publicly or privately, as a victory, defeat, admission, vindication, or concession by either Party. Neither Party shall make any disparaging statement, whether public or private, regarding the other Party, the other Party's counsel, or the merits of the Action.

ARTICLE VII — MISCELLANEOUS PROVISIONS

Section 7.1 Entire Agreement. This Agreement, including the exhibits attached hereto, which are incorporated herein by reference, constitutes the entire agreement and understanding between the Parties with respect to the subject matter hereof. This Agreement supersedes all prior and contemporaneous negotiations, discussions, proposals, agreements, representations, warranties, and understandings, whether written or oral, between the Parties relating to the subject matter hereof. No Party has relied on any statement, representation, warranty, or agreement of the other Party except as expressly set forth in this Agreement.

Section 7.2 Amendment and Waiver. This Agreement may not be amended, modified, or supplemented in any respect except by a written instrument duly executed by authorized representatives of both Parties. No waiver of any provision of this Agreement, or of any right or remedy hereunder, shall be effective unless set forth in a written instrument signed by the Party against whom enforcement of such waiver is sought. No waiver of any breach or default under this Agreement shall constitute a waiver of any other or subsequent breach or default. No failure or delay by any Party in exercising any right, power, or privilege under this Agreement shall operate as a waiver thereof, nor shall any single or partial exercise thereof preclude any other or further exercise thereof or the exercise of any other right, power, or privilege.

Section 7.3 Governing Law. This Agreement shall be governed by, and construed and interpreted in accordance with, the laws of the State of California, without giving effect to any choice of law or conflict of laws rules or provisions that would cause the application of the laws of any other jurisdiction.

Section 7.4 Dispute Resolution. Any dispute, controversy, or claim arising out of or relating to this Agreement, including the breach, termination, enforceability, or validity thereof, shall be resolved exclusively in the United States District Court for the Northern District of California, San Jose Division. Each Party hereby irrevocably and unconditionally consents and submits to the exclusive personal jurisdiction and venue of such court for purposes of any such dispute, controversy, or claim. Each Party irrevocably waives any objection that it may now or hereafter have to the laying of venue of any such action or proceeding in such court, and any claim that any such action or proceeding brought in such court has been brought in an inconvenient forum.

Section 7.5 Severability. If any provision of this Agreement, or the application thereof to any person or circumstance, is held by a court of competent jurisdiction to be invalid, illegal, or unenforceable in any respect, the validity, legality, and enforceability of the remaining provisions of this Agreement, and the application of such provision to other persons or circumstances, shall not in any way be affected or impaired thereby. In the event that any provision is so held to be invalid, illegal, or unenforceable, the Parties shall negotiate in good faith to modify this Agreement so as to effect the original intent of the Parties as closely as possible in a mutually acceptable manner.

Section 7.6 Counterparts. This Agreement may be executed in two (2) or more counterparts, each of which shall be deemed an original, and all of which together shall constitute one and the same instrument. Execution and delivery of this Agreement by facsimile transmission or by electronic transmission of a portable document format (PDF) copy bearing a signature, or by any other electronic signature method compliant with the Electronic Signatures in Global and National Commerce Act (E-SIGN Act), 15 U.S.C. §§ 7001 et seq., or the Uniform Electronic Transactions Act as adopted in any applicable jurisdiction, shall have the same force and effect as execution and delivery of an original signed counterpart.

Section 7.7 Successors and Assigns. This Agreement shall be binding upon and inure to the benefit of the Parties and their respective successors and assigns. Neither Party may assign or transfer this Agreement, or any of its rights or obligations hereunder, in whole or in part, whether by operation of law or otherwise, without the prior written consent of the other Party, which consent shall not be unreasonably withheld; provided, however, that either Party may assign this Agreement without the other Party's consent to a successor in interest in connection with a merger, consolidation, reorganization, or sale of all or substantially all of such Party's assets relating to the subject matter of this Agreement. Any purported assignment in violation of this Section 7.7 shall be null and void.

Section 7.8 No Third-Party Beneficiaries. Except as expressly provided herein with respect to the Releasees (including the individuals and entities identified in Section 3.1), nothing in this Agreement is intended or shall be construed to give any person or entity other than the Parties any legal or equitable right, benefit, remedy, or claim under or with respect to this Agreement. The releases and covenants set forth in Article III are intended to benefit the Releasees identified therein, and such Releasees are intended third-party beneficiaries of such provisions.

Section 7.9 Construction. This Agreement has been negotiated at arm's length by the Parties and their respective legal counsel. Each Party has had the opportunity to consult with counsel of its own choosing regarding the terms and conditions of this Agreement. Accordingly, this Agreement shall be construed fairly as to each Party, and shall not be construed more strictly against either Party as the drafter or the Party that caused this Agreement to be prepared. The recitals set forth above are incorporated herein and form a material part of this Agreement. As used in this Agreement, the words "include," "includes," and "including" shall be deemed to be followed by the phrase "without limitation." The terms "herein," "hereof," "hereunder," and similar terms shall refer to this Agreement as a whole, including all exhibits hereto.

Section 7.10 Notices. All notices, requests, demands, consents, and other communications required or permitted to be given under this Agreement shall be in writing and shall be deemed to have been duly given: (a) when delivered personally; (b) upon confirmed receipt when sent by registered or certified mail, return receipt requested, postage prepaid; (c) one (1) business day after deposit with a nationally recognized overnight courier service, with delivery charges prepaid; or (d) when sent by electronic mail, with confirmation of receipt (excluding automatic reply or out-of-office responses), addressed as follows:

If to OWS:

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

Email: sellison@optiwavesemi.com

With a copy (which shall not constitute notice) to:

Alan Ngo Calderwood & Harkness LLP One Embarcadero Center, 34th Floor San Francisco, California 94111

Email: ango@calderwoodharkness.com

If to Lumos:

Richard Talbot, General Counsel Lumos Photonics, Inc. 9400 McNeil Drive, Building 7 Austin, Texas 78758

Email: rtalbot@lumosphotonics.com

With a copy (which shall not constitute notice) to:

Victoria Ashworth Brannick Howell & Stein LLP 555 California Street, Suite 2800 San Francisco, California 94104

Email: vashworth@bhslaw.com

Either Party may change its notice address by giving written notice to the other Party in accordance with this Section 7.10.

Section 7.11 Further Assurances. Each Party agrees to execute and deliver such further documents, instruments, and agreements, and to take such further actions, as may be reasonably necessary or desirable to effectuate the purposes and intent of this Agreement, including without limitation the filing of the Joint Stipulation of Dismissal with Prejudice, the Proposed Order of Dismissal with Prejudice, and any other documents required by the Court or by applicable law to accomplish the dismissal of the Action with prejudice. Each Party shall cooperate in good faith with the other Party in connection with any such actions.

Section 7.12 Headings. The section headings and article headings contained in this Agreement are included for convenience of reference only and shall not affect in any way the meaning, interpretation, or construction of this Agreement.

IN WITNESS WHEREOF, the Parties have caused this Settlement Agreement and Mutual Release to be executed by their duly authorized representatives as of the date first written above.

OPTIWAVE SEMICONDUCTOR CORP.

By: ________

Name: Sandra Ellison

Title: General Counsel

Date: April 5, 2023

LUMOS PHOTONICS, INC.

By: ________

Name: Richard Talbot

Title: General Counsel

Date: April 5, 2023

EXHIBIT A

FORM OF JOINT STIPULATION OF DISMISSAL WITH PREJUDICE

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

Pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii), Plaintiff and Counterclaim-Defendant Optiwave Semiconductor Corp. ("OWS") and Defendant and Counterclaim-Plaintiff Lumos Photonics, Inc. ("Lumos"), by and through their respective undersigned counsel, hereby stipulate and agree as follows:

1. All claims asserted by OWS against Lumos in the Complaint filed on June 3, 2022, including all claims of patent infringement of U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890, are hereby dismissed with prejudice.

2. All counterclaims asserted by Lumos against OWS in the Answer and Counterclaims filed on July 29, 2022, including all counterclaims for declaratory judgment of non-infringement and invalidity, are hereby dismissed with prejudice.

3. Each Party shall bear its own attorneys' fees, costs, and expenses incurred in connection with this Action.

4. This Stipulation resolves all claims and counterclaims between OWS and Lumos in this Action. There are no remaining claims, counterclaims, cross-claims, or third-party claims pending in this Action.

5. The Parties respectfully request that the Court enter the Proposed Order of Dismissal with Prejudice submitted herewith.

Respectfully submitted,

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (SBN 247831) One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 555-0140

Email: ango@calderwoodharkness.com

Attorneys for Plaintiff and Counterclaim-Defendant Optiwave Semiconductor Corp.

BRANNICK HOWELL & STEIN LLP

By: ________

Victoria Ashworth (SBN 261504) 555 California Street, Suite 2800 San Francisco, California 94104 Telephone: (415) 555-0280

Email: vashworth@bhslaw.com

Attorneys for Defendant and Counterclaim-Plaintiff Lumos Photonics, Inc.

Dated: April 10, 2023

EXHIBIT B

FORM OF PROPOSED ORDER OF DISMISSAL WITH PREJUDICE

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

Having reviewed and considered the Joint Stipulation of Dismissal with Prejudice filed by Plaintiff and Counterclaim-Defendant Optiwave Semiconductor Corp. and Defendant and Counterclaim-Plaintiff Lumos Photonics, Inc., and good cause appearing therefor,

IT IS HEREBY ORDERED that:

1. All claims asserted by Plaintiff Optiwave Semiconductor Corp. against Defendant Lumos Photonics, Inc. in the above-captioned action, including all claims of patent infringement of U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890, are DISMISSED WITH PREJUDICE.

2. All counterclaims asserted by Defendant and Counterclaim-Plaintiff Lumos Photonics, Inc. against Plaintiff and Counterclaim-Defendant Optiwave Semiconductor Corp. in the above-captioned action, including all counterclaims for declaratory judgment of non-infringement and invalidity, are DISMISSED WITH PREJUDICE.

3. Each Party shall bear its own attorneys' fees, costs, and expenses incurred in connection with this Action.

4. The Clerk of Court is directed to close this case and terminate all pending motions and deadlines.

IT IS SO ORDERED.

Dated: ________

________________________________________

HON. EDWARD J. TORVELIS United States District Judge

OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation,	Case No. 5:22-cv-03417-EJD
Plaintiff and Counterclaim-Defendant,	JOINT STIPULATION OF DISMISSAL WITH PREJUDICE
v.	Hon. Edward J. Torvelis

LUMOS PHOTONICS, INC., a Delaware corporation,

Defendant and Counterclaim-Plaintiff.

OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation,	Case No. 5:22-cv-03417-EJD
Plaintiff and Counterclaim-Defendant,	[PROPOSED] ORDER OF DISMISSAL WITH PREJUDICE
v.	Hon. Edward J. Torvelis

LUMOS PHOTONICS, INC., a Delaware corporation,

Defendant and Counterclaim-Plaintiff.

SETTLEMENT AGREEMENT AND MUTUAL RELEASE
Dated as of April 5, 2023
This SETTLEMENT AGREEMENT AND MUTUAL RELEASE (this "Agreement") is entered into as of April 5, 2023 (the "Effective Date"), by and between:
OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation with its principal place of business at 2775 Augustine Drive, Suite 400, San Jose, California 95054 ("OWS" or "Optiwave"),
and
LUMOS PHOTONICS, INC., a Delaware corporation with its principal place of business at 9400 McNeil Drive, Building 7, Austin, Texas 78758 ("Lumos" or "LPI").
OWS and Lumos are each referred to herein individually as a "Party" and collectively as the "Parties."
RECITALS
WHEREAS:
A. OWS is a fabless semiconductor design company specializing in silicon photonics integrated circuits for data center interconnects and telecommunications applications, duly incorporated and existing under the laws of the State of Delaware and headquartered in San Jose, California. OWS is the owner by valid assignment of, among other patents, the following United States patents: U.S. Patent No. 10,234,567 ("the '567 Patent"), entitled "Integrated Waveguide Coupler with Tapered Mode Converter for Silicon Photonics Platforms," issued on March 19, 2019; U.S. Patent No. 10,891,234 ("the '234 Patent"), entitled "Germanium-on-Silicon Photodetector with Graded Buffer Layer for Enhanced Responsivity," issued on January 14, 2021; U.S. Patent No. 11,045,678 ("the '678 Patent"), entitled "Multi-Channel Optical Transceiver with Integrated Wavelength-Division Multiplexing on Silicon," issued on June 29, 2021; and U.S. Patent No. 11,312,890 ("the '890 Patent"), entitled "Driver Circuit Architecture for High-Speed Silicon Photonic Mach-Zehnder Modulators," issued on April 26, 2022 (collectively, the "Patents-in-Suit").
B. Lumos is an integrated device manufacturer of silicon photonics components designed for hyperscale data center applications, duly incorporated and existing under the laws of the State of Delaware and headquartered in Austin, Texas. Lumos maintains a fabrication facility located at 3500 NW Aloclek Drive, Hillsboro, Oregon 97124, and a sales office and engineering center located at 4750 Great America Parkway, Suite 320, Santa Clara, California 95054. Lumos is a publicly traded company, with its common stock listed and traded on the Nasdaq Stock Market under the ticker symbol "LMPH."
C. On June 3, 2022, OWS filed a Complaint for Patent Infringement against Lumos in the United States District Court for the Northern District of California, San Jose Division, captioned Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD, assigned to the Honorable Edward J. Torvelis (the "Action" or the "Litigation"). In the Action, OWS asserted that certain products manufactured, marketed, sold, offered for sale, and/or imported by Lumos, specifically Lumos's LumosBridge™ 800G Optical Engine and LumosEdge™ 400ZR+ Pluggable Transceiver products (collectively, the "Accused Products"), infringe one or more claims of the Patents-in-Suit. OWS sought, among other relief, compensatory damages, enhanced damages for alleged willful infringement pursuant to 35 U.S.C. § 284, permanent injunctive relief, attorneys' fees pursuant to 35 U.S.C. § 285, and costs.
D. On July 29, 2022, Lumos filed its Answer to OWS's Complaint, denying the material allegations of infringement and asserting various affirmative defenses thereto. Lumos also filed Counterclaims seeking declaratory judgments of non-infringement and invalidity of each of the Patents-in-Suit under, inter alia, 35 U.S.C. §§ 102, 103, and 112 (the "Counterclaims").
E. On January 30, 2023, the Court conducted a claim construction hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (the "Markman Hearing"), and on February 17, 2023, the Court issued a thirty-four (34) page Claim Construction Order construing eleven (11) disputed claim terms across all four Patents-in-Suit (the "Markman Order").
F. Following the issuance of the Markman Order, the Parties engaged in good-faith settlement discussions, including a full-day mediation conducted on March 17, 2023, and subsequent follow-up negotiations between counsel. The Parties now desire to resolve all disputes arising from or related to the Litigation without any admission of liability, infringement, validity, or invalidity by either Party, and without the continued expenditure of resources associated with further prosecution and defense of the Action.
G. The Parties desire to fully, finally, and forever settle, compromise, and resolve all claims, counterclaims, defenses, and disputes between them arising out of or relating to the Litigation, on the terms and conditions set forth herein, and to avoid the expense, burden, distraction, and uncertainty of continued litigation.
NOW, THEREFORE, in consideration of the mutual covenants, agreements, releases, and promises contained herein, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties, intending to be legally bound, agree as follows:
ARTICLE I — DEFINITIONS
As used in this Agreement, the following terms shall have the meanings set forth below. Capitalized terms used but not otherwise defined in this Article I shall have the meanings ascribed to them elsewhere in this Agreement.
Section 1.1 "Action" or "Litigation" means the civil action captioned Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD, pending in the United States District Court for the Northern District of California, San Jose Division, before the Honorable Edward J. Torvelis, including all claims, counterclaims, motions, proceedings, discovery, and other matters arising therein.
Section 1.2 "Accused Products" means the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver products manufactured, marketed, sold, offered for sale, used, and/or imported by Lumos, together with all variants, configurations, versions, revisions, updates, and successors thereof that were accused of infringement in the Action.
Section 1.3 "Affiliate(s)" means, with respect to a Party, any entity that directly or indirectly controls, is controlled by, or is under common control with such Party. For purposes of this definition, "control" means the direct or indirect ownership of fifty percent (50%) or more of the outstanding voting securities of an entity, or the equivalent ownership interest in an entity that does not have outstanding voting securities, or the power to direct or cause the direction of the management and policies of an entity, whether through the ownership of voting securities, by contract, or otherwise.
Section 1.4 "Counterclaims" means Lumos's counterclaims for declaratory judgment of non-infringement and invalidity of the Patents-in-Suit, as filed in the Action on July 29, 2022, including all amendments and supplements thereto.
Section 1.5 "Effective Date" means the date on which this Agreement has been fully executed by both Parties, which the Parties agree is April 5, 2023.
Section 1.6 "Markman Order" means the Court's Claim Construction Order issued on February 17, 2023, in the Action, construing eleven (11) disputed claim terms across the Patents-in-Suit.
Section 1.7 "Patents-in-Suit" means U.S. Patent No. 10,234,567; U.S. Patent No. 10,891,234; U.S. Patent No. 11,045,678; and U.S. Patent No. 11,312,890; together with all continuations, continuations-in-part, divisionals, reissues, reexaminations, inter partes reviews, and foreign counterparts thereof, in each case solely to the extent such patents or patent applications were asserted or at issue in the Action.
Section 1.8 "Protective Order" means the Stipulated Protective Order entered by the Court in the Action on or about September 12, 2022, as amended, governing the treatment of confidential information exchanged by the Parties during the course of the Litigation.
Section 1.9 "Releasees" has the meaning set forth in Section 3.1 of this Agreement.
Section 1.10 "Releasors" has the meaning set forth in Section 3.1 of this Agreement.
Section 1.11 "Released Claims" has the meaning set forth in Section 3.2 of this Agreement.
ARTICLE II — SETTLEMENT TERMS
Section 2.1 No Payment. No monetary payment shall be made by either Party to the other Party in connection with this Agreement, the resolution of the Action, or the settlement of any claims or counterclaims asserted or that could have been asserted in the Action. Each Party acknowledges and agrees that the sole and exclusive consideration for this Agreement is the mutual releases and covenants set forth herein, the dismissal of the Action with prejudice, and the avoidance of the expense, burden, distraction, and uncertainty of continued litigation. Each Party further acknowledges that such consideration is adequate and sufficient to support this Agreement.
Section 2.2 No License Granted. Nothing in this Agreement shall be construed as granting to either Party any license, whether express, implied, by estoppel, or otherwise, under any patent, patent application, trade secret, copyright, mask work right, trademark, or other intellectual property right of the other Party. Without limiting the generality of the foregoing:
(a) This Agreement does not grant OWS any license under any intellectual property right owned or controlled by Lumos or any of its Affiliates.
(b) This Agreement does not grant Lumos any license under any intellectual property right owned or controlled by OWS or any of its Affiliates, including without limitation the Patents-in-Suit or any other patent or patent application in OWS's portfolio, whether now existing or hereafter acquired or filed.
For the avoidance of doubt, neither Party acquires by virtue of this Agreement any rights to practice, make, have made, use, sell, offer for sale, import, or otherwise exploit any technology or intellectual property of the other Party.
Section 2.3 Attorneys' Fees and Costs. Each Party shall bear its own attorneys' fees, costs, expert witness fees, consultant fees, and all other expenses incurred in connection with the prosecution, defense, or settlement of the Action and the negotiation, preparation, and execution of this Agreement. Neither Party shall seek, petition for, or accept any award of attorneys' fees, costs, or expenses from the other Party in connection with the Action or this Agreement.
Section 2.4 No Admission. This Agreement and the settlement of the Action shall not be construed as, and do not constitute, an admission by either Party, or by any Affiliate, officer, director, employee, agent, or attorney of either Party, of:
(a) infringement or non-infringement of any patent, including the Patents-in-Suit;
(b) the validity or invalidity of any patent, including the Patents-in-Suit;
(c) the enforceability or unenforceability of any patent, including the Patents-in-Suit;
(d) the merit or lack of merit of any claim, counterclaim, defense, or position asserted or that could have been asserted in the Action; or
(e) any liability, wrongdoing, or fault of any kind or nature whatsoever.
This Agreement shall not be offered or received in evidence in any action or proceeding as an admission or concession of any fact, issue, or liability, except as may be necessary to enforce the terms of this Agreement or to support a defense of res judicata, collateral estoppel, release, or other defense or counterclaim based upon this Agreement.
Section 2.5 Dismissal with Prejudice.
(a) Within five (5) business days following the Effective Date, the Parties, through their respective counsel of record in the Action, shall jointly file a Joint Stipulation of Dismissal with Prejudice in the Action, providing for the dismissal with prejudice of all claims asserted by OWS against Lumos and all counterclaims asserted by Lumos against OWS, with each Party bearing its own costs and attorneys' fees. The Joint Stipulation of Dismissal shall be substantially in the form attached hereto as Exhibit A and incorporated herein by reference.
(b) Concurrently with the filing of the Joint Stipulation of Dismissal, the Parties shall submit to the Court a Proposed Order of Dismissal with Prejudice for the signature of the Honorable Edward J. Torvelis, substantially in the form attached hereto as Exhibit B and incorporated herein by reference.
(c) The Parties acknowledge and agree that the Joint Stipulation of Dismissal with Prejudice was filed on April 10, 2023, and that the Court entered the Order of Dismissal with Prejudice on April 18, 2023.
ARTICLE III — MUTUAL RELEASES
Section 3.1 Definition of Releasors and Releasees.
(a) "OWS Releasors" means OWS, its Affiliates, and each of their respective past, present, and future officers, directors, members, managers, partners, shareholders, employees, agents, attorneys, representatives, successors, and assigns, including without limitation Vantage Point Capital Partners Fund IV, LP, and its general partner, Vantage Point Capital GP IV, LLC.
(b) "Lumos Releasors" means Lumos, its Affiliates, and each of their respective past, present, and future officers, directors, members, managers, partners, shareholders, employees, agents, attorneys, representatives, successors, and assigns.
(c) "OWS Releasees" means OWS, its Affiliates, and each of their respective past, present, and future officers, directors, members, managers, partners, shareholders, employees, agents, attorneys, representatives, successors, and assigns, including without limitation Vantage Point Capital Partners Fund IV, LP, and its general partner, Vantage Point Capital GP IV, LLC.
(d) "Lumos Releasees" means Lumos, its Affiliates, and each of their respective past, present, and future officers, directors, members, managers, partners, shareholders, employees, agents, attorneys, representatives, successors, and assigns.
(e) The OWS Releasors release the Lumos Releasees, and the Lumos Releasors release the OWS Releasees, as further set forth in Section 3.2 below.
Section 3.2 Scope of Released Claims. "Released Claims" means any and all claims, demands, actions, causes of action, suits, damages, losses, liabilities, obligations, judgments, liens, costs, expenses, and attorneys' fees, of every kind and nature whatsoever, whether at law or in equity, whether known or unknown, suspected or unsuspected, asserted or unasserted, foreseen or unforeseen, matured or unmatured, accrued or unaccrued, liquidated or unliquidated, that any Releasor ever had, now has, or hereafter can, shall, or may have against any Releasee, arising out of, relating to, or in connection with:
(a) the Action, including all claims, counterclaims, affirmative defenses, and other contentions asserted therein, or that could have been asserted therein based on the facts and circumstances existing as of the Effective Date;
(b) the Patents-in-Suit, to the extent relating to the Accused Products;
(c) the Accused Products, to the extent relating to the Patents-in-Suit;
(d) the cease-and-desist letter sent by OWS to Lumos dated March 15, 2022, and Lumos's response letter dated April 4, 2022, and all communications, negotiations, and correspondence between the Parties relating thereto; and
(e) any alleged infringement, non-infringement, validity, invalidity, enforceability, or unenforceability of the Patents-in-Suit with respect to the Accused Products.
Notwithstanding the foregoing, the Released Claims shall not include: (i) any claims arising under or relating to this Agreement itself (including claims for breach of this Agreement); (ii) any claims, rights, or causes of action unrelated to the Action, the Patents-in-Suit, or the Accused Products; or (iii) any claims by OWS against Lumos or any third party relating to products other than the Accused Products, or any claims by OWS relating to patents other than the Patents-in-Suit. For the avoidance of doubt, OWS expressly reserves all rights to assert any of its patents (including the Patents-in-Suit) against Lumos with respect to any Lumos products that are not Accused Products, and Lumos expressly reserves all rights to challenge the validity, enforceability, or scope of any OWS patents in connection with any such assertion.
Section 3.3 California Civil Code Section 1542 Waiver.
Each Party, on behalf of itself and its respective Releasors, expressly waives and relinquishes, to the fullest extent permitted by law, all rights and benefits afforded by Section 1542 of the California Civil Code, which provides:
"A general release does not extend to claims that the creditor or releasing party does not know or suspect to exist in his or her favor at the time of executing the release and that, if known by him or her, would have materially affected his or her settlement with the debtor or released party."
Each Party acknowledges that it is aware that it may discover facts different from, or in addition to, those facts that it now knows or believes to be true with respect to the subject matter of the Released Claims. Each Party nonetheless agrees that this Agreement and the releases contained herein shall be and remain effective in all respects notwithstanding such different or additional facts or the discovery thereof. Each Party expressly assumes the risk of such unknown facts and agrees that this Agreement applies to all Released Claims, including those arising from facts that are presently unknown, unanticipated, or unsuspected. Each Party further waives and relinquishes any comparable right or provision under the laws of any other jurisdiction that may be applicable.
Section 3.4 Covenant Not to Sue (Limited).
Each Party covenants and agrees, on behalf of itself and its respective Releasors, that it shall not institute, prosecute, maintain, participate in, or assist in the institution or prosecution of any action, suit, proceeding, claim, or demand, whether at law, in equity, or before any administrative body, asserting any Released Claims against any Releasee. Any breach of this covenant not to sue shall entitle the aggrieved Party to seek injunctive relief and to recover its reasonable attorneys' fees and costs incurred in defending against any such action, suit, proceeding, claim, or demand, in addition to any other remedies available at law or in equity.
ARTICLE IV — CONFIDENTIAL INFORMATION AND PROTECTIVE ORDER
Section 4.1 Return or Destruction of Confidential Materials.
Within thirty (30) days following the entry of the Order of Dismissal with Prejudice in the Action, each Party and its outside counsel of record shall comply with the provisions of the Stipulated Protective Order entered in the Action regarding the return or destruction of all documents, materials, and information designated as "CONFIDENTIAL" or "HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY" that were produced by the other Party or any third party during the course of the Action. Without limiting the generality of the foregoing, each receiving Party shall, at the election of the producing Party, either: (a) return all such materials (including all copies, summaries, abstracts, and compilations thereof) to the producing Party or its counsel; or (b) destroy all such materials (including all copies, summaries, abstracts, and compilations thereof) and certify such destruction. Each Party's outside counsel of record shall provide written certification of compliance with this Section 4.1 to the producing Party's counsel within the thirty (30) day period specified herein. Notwithstanding the foregoing, outside counsel for each Party may retain one (1) archival copy of all pleadings, briefs, and correspondence filed with the Court or exchanged between counsel in the Action, solely for the purpose of establishing compliance with ethical and professional obligations, subject to the continuing confidentiality obligations of the Protective Order.
Section 4.2 Survival of Protective Order Obligations.
The confidentiality obligations set forth in the Stipulated Protective Order entered in the Action shall survive the termination or dismissal of the Action and the execution and delivery of this Agreement, in accordance with their terms. Nothing in this Agreement shall be construed to modify, amend, supersede, or limit the obligations of the Parties, their counsel, or any other person bound by the Protective Order, except to the extent expressly set forth herein.
ARTICLE V — REPRESENTATIONS AND WARRANTIES
Section 5.1 Authority. Each Party represents and warrants to the other Party that, as of the Effective Date:
(a) It is a corporation duly organized, validly existing, and in good standing under the laws of the State of Delaware, and has the full right, power, and authority to enter into this Agreement and to perform all of its obligations hereunder.
(b) The execution, delivery, and performance of this Agreement has been duly authorized by all necessary corporate action on the part of such Party. With respect to OWS, such authorization includes the approval of the Board of Directors of Optiwave Semiconductor Corp., including the concurrence of Vantage Point Capital Partners Fund IV, LP, as the majority shareholder of OWS. With respect to Lumos, such authorization includes the approval of such persons or bodies as are required under Lumos's certificate of incorporation, bylaws, and applicable corporate governance policies.
(c) This Agreement constitutes a valid and binding obligation of such Party, enforceable against such Party in accordance with its terms, subject only to applicable bankruptcy, insolvency, reorganization, moratorium, and similar laws affecting creditors' rights generally, and to general principles of equity (regardless of whether enforcement is sought in a proceeding at law or in equity).
(d) The person executing this Agreement on behalf of such Party has been duly authorized to do so and has the full power and authority to bind such Party to the terms and conditions of this Agreement.
(e) The execution, delivery, and performance of this Agreement does not and will not conflict with, violate, or result in a breach of or default under any provision of such Party's certificate of incorporation or bylaws, any agreement to which such Party is a party, or any applicable law, regulation, or order.
Section 5.2 No Assignment of Claims. Each Party represents and warrants to the other Party that, as of the Effective Date, it has not assigned, transferred, pledged, hypothecated, or otherwise conveyed any of the Released Claims, or any interest therein, to any third party. Each Party further represents and warrants that no third party has acquired, by operation of law or otherwise, any right to assert any of the Released Claims on behalf of such Party.
Section 5.3 Ownership of Patents (OWS). OWS represents and warrants to Lumos that, as of the Effective Date, OWS is the sole and exclusive owner of the entire right, title, and interest in and to each of the Patents-in-Suit by valid written assignment recorded with the United States Patent and Trademark Office, and that OWS has not granted any third party any license, covenant not to sue, or other right under the Patents-in-Suit that would impair or limit OWS's ability to grant the releases and covenants set forth in this Agreement.
ARTICLE VI — CONFIDENTIALITY OF SETTLEMENT
Section 6.1 Confidential Treatment. The Parties acknowledge and agree that the terms and conditions of this Agreement, including without limitation the existence and content of any specific provisions hereof, are and shall remain confidential. Each Party agrees that it shall not disclose the terms and conditions of this Agreement to any third party without the prior written consent of the other Party, except as follows:
(a) As required by applicable law, regulation, legal process, or order of a court or governmental body of competent jurisdiction, including without limitation Lumos's obligations under the Securities Act of 1933, the Securities Exchange Act of 1934, and the rules and regulations of the United States Securities and Exchange Commission ("SEC") and the Nasdaq Stock Market, as applicable to Lumos as a publicly traded company listed on the Nasdaq Stock Market under the ticker symbol "LMPH." In the event that a Party is required by law, regulation, or legal process to disclose any terms of this Agreement, such Party shall, to the extent legally permissible, provide the other Party with prompt written notice of such requirement prior to making any such disclosure and shall cooperate with the other Party to seek an appropriate protective order or other confidential treatment for the information to be disclosed.
(b) To a Party's Affiliates and to such Party's officers, directors, employees, accountants, auditors, lenders, insurers, financial advisors, and professional advisors (including outside legal counsel), in each case who have a bona fide need to know the terms of this Agreement in connection with their professional responsibilities, and who are bound by confidentiality obligations no less restrictive than those set forth in this Section 6.1.
(c) With respect to OWS: to Vantage Point Capital Partners Fund IV, LP, and Vantage Point Capital GP IV, LLC, and their respective officers, directors, members, managers, partners, employees, agents, and professional advisors, in each case who have a bona fide need to know the terms of this Agreement.
(d) With respect to OWS: to First Pacific Commerce Bank, N.A., and its officers, employees, and agents, solely as required under the covenants and reporting obligations of OWS's revolving credit facility with First Pacific Commerce Bank, N.A., provided that such disclosures are made subject to confidentiality obligations no less restrictive than those set forth in this Section 6.1.
(e) To the extent necessary to enforce or defend the terms of this Agreement in any legal, arbitral, or administrative proceeding.
Section 6.2 Public Statements. Neither Party shall issue any press release, public announcement, social media post, or other public statement regarding the settlement of the Action, or the terms and conditions of this Agreement, without the prior written consent of the other Party; provided, however, that:
(a) Either Party may publicly state, in response to inquiries from third parties, that "the litigation has been resolved" or words to substantially similar effect, without providing any additional detail regarding the terms or conditions of the settlement.
(b) Lumos may make any disclosure regarding the settlement that is required under SEC regulations, the rules of the Nasdaq Stock Market, or other applicable securities laws, subject to the notice and cooperation obligations set forth in Section 6.1(a) above.
Under no circumstances shall either Party characterize the settlement of the Action, publicly or privately, as a victory, defeat, admission, vindication, or concession by either Party. Neither Party shall make any disparaging statement, whether public or private, regarding the other Party, the other Party's counsel, or the merits of the Action.
ARTICLE VII — MISCELLANEOUS PROVISIONS
Section 7.1 Entire Agreement. This Agreement, including the exhibits attached hereto, which are incorporated herein by reference, constitutes the entire agreement and understanding between the Parties with respect to the subject matter hereof. This Agreement supersedes all prior and contemporaneous negotiations, discussions, proposals, agreements, representations, warranties, and understandings, whether written or oral, between the Parties relating to the subject matter hereof. No Party has relied on any statement, representation, warranty, or agreement of the other Party except as expressly set forth in this Agreement.
Section 7.2 Amendment and Waiver. This Agreement may not be amended, modified, or supplemented in any respect except by a written instrument duly executed by authorized representatives of both Parties. No waiver of any provision of this Agreement, or of any right or remedy hereunder, shall be effective unless set forth in a written instrument signed by the Party against whom enforcement of such waiver is sought. No waiver of any breach or default under this Agreement shall constitute a waiver of any other or subsequent breach or default. No failure or delay by any Party in exercising any right, power, or privilege under this Agreement shall operate as a waiver thereof, nor shall any single or partial exercise thereof preclude any other or further exercise thereof or the exercise of any other right, power, or privilege.
Section 7.3 Governing Law. This Agreement shall be governed by, and construed and interpreted in accordance with, the laws of the State of California, without giving effect to any choice of law or conflict of laws rules or provisions that would cause the application of the laws of any other jurisdiction.
Section 7.4 Dispute Resolution. Any dispute, controversy, or claim arising out of or relating to this Agreement, including the breach, termination, enforceability, or validity thereof, shall be resolved exclusively in the United States District Court for the Northern District of California, San Jose Division. Each Party hereby irrevocably and unconditionally consents and submits to the exclusive personal jurisdiction and venue of such court for purposes of any such dispute, controversy, or claim. Each Party irrevocably waives any objection that it may now or hereafter have to the laying of venue of any such action or proceeding in such court, and any claim that any such action or proceeding brought in such court has been brought in an inconvenient forum.
Section 7.5 Severability. If any provision of this Agreement, or the application thereof to any person or circumstance, is held by a court of competent jurisdiction to be invalid, illegal, or unenforceable in any respect, the validity, legality, and enforceability of the remaining provisions of this Agreement, and the application of such provision to other persons or circumstances, shall not in any way be affected or impaired thereby. In the event that any provision is so held to be invalid, illegal, or unenforceable, the Parties shall negotiate in good faith to modify this Agreement so as to effect the original intent of the Parties as closely as possible in a mutually acceptable manner.
Section 7.6 Counterparts. This Agreement may be executed in two (2) or more counterparts, each of which shall be deemed an original, and all of which together shall constitute one and the same instrument. Execution and delivery of this Agreement by facsimile transmission or by electronic transmission of a portable document format (PDF) copy bearing a signature, or by any other electronic signature method compliant with the Electronic Signatures in Global and National Commerce Act (E-SIGN Act), 15 U.S.C. §§ 7001 et seq., or the Uniform Electronic Transactions Act as adopted in any applicable jurisdiction, shall have the same force and effect as execution and delivery of an original signed counterpart.
Section 7.7 Successors and Assigns. This Agreement shall be binding upon and inure to the benefit of the Parties and their respective successors and assigns. Neither Party may assign or transfer this Agreement, or any of its rights or obligations hereunder, in whole or in part, whether by operation of law or otherwise, without the prior written consent of the other Party, which consent shall not be unreasonably withheld; provided, however, that either Party may assign this Agreement without the other Party's consent to a successor in interest in connection with a merger, consolidation, reorganization, or sale of all or substantially all of such Party's assets relating to the subject matter of this Agreement. Any purported assignment in violation of this Section 7.7 shall be null and void.
Section 7.8 No Third-Party Beneficiaries. Except as expressly provided herein with respect to the Releasees (including the individuals and entities identified in Section 3.1), nothing in this Agreement is intended or shall be construed to give any person or entity other than the Parties any legal or equitable right, benefit, remedy, or claim under or with respect to this Agreement. The releases and covenants set forth in Article III are intended to benefit the Releasees identified therein, and such Releasees are intended third-party beneficiaries of such provisions.
Section 7.9 Construction. This Agreement has been negotiated at arm's length by the Parties and their respective legal counsel. Each Party has had the opportunity to consult with counsel of its own choosing regarding the terms and conditions of this Agreement. Accordingly, this Agreement shall be construed fairly as to each Party, and shall not be construed more strictly against either Party as the drafter or the Party that caused this Agreement to be prepared. The recitals set forth above are incorporated herein and form a material part of this Agreement. As used in this Agreement, the words "include," "includes," and "including" shall be deemed to be followed by the phrase "without limitation." The terms "herein," "hereof," "hereunder," and similar terms shall refer to this Agreement as a whole, including all exhibits hereto.
Section 7.10 Notices. All notices, requests, demands, consents, and other communications required or permitted to be given under this Agreement shall be in writing and shall be deemed to have been duly given: (a) when delivered personally; (b) upon confirmed receipt when sent by registered or certified mail, return receipt requested, postage prepaid; (c) one (1) business day after deposit with a nationally recognized overnight courier service, with delivery charges prepaid; or (d) when sent by electronic mail, with confirmation of receipt (excluding automatic reply or out-of-office responses), addressed as follows:
If to OWS:
Sandra Ellison, General Counsel Optiwave Semiconductor Corp. 2775 Augustine Drive, Suite 400 San Jose, California 95054
Email: sellison@optiwavesemi.com
With a copy (which shall not constitute notice) to:
Alan Ngo Calderwood & Harkness LLP One Embarcadero Center, 34th Floor San Francisco, California 94111
Email: ango@calderwoodharkness.com
If to Lumos:
Richard Talbot, General Counsel Lumos Photonics, Inc. 9400 McNeil Drive, Building 7 Austin, Texas 78758
Email: rtalbot@lumosphotonics.com
With a copy (which shall not constitute notice) to:
Victoria Ashworth Brannick Howell & Stein LLP 555 California Street, Suite 2800 San Francisco, California 94104
Email: vashworth@bhslaw.com
Either Party may change its notice address by giving written notice to the other Party in accordance with this Section 7.10.
Section 7.11 Further Assurances. Each Party agrees to execute and deliver such further documents, instruments, and agreements, and to take such further actions, as may be reasonably necessary or desirable to effectuate the purposes and intent of this Agreement, including without limitation the filing of the Joint Stipulation of Dismissal with Prejudice, the Proposed Order of Dismissal with Prejudice, and any other documents required by the Court or by applicable law to accomplish the dismissal of the Action with prejudice. Each Party shall cooperate in good faith with the other Party in connection with any such actions.
Section 7.12 Headings. The section headings and article headings contained in this Agreement are included for convenience of reference only and shall not affect in any way the meaning, interpretation, or construction of this Agreement.
IN WITNESS WHEREOF, the Parties have caused this Settlement Agreement and Mutual Release to be executed by their duly authorized representatives as of the date first written above.
OPTIWAVE SEMICONDUCTOR CORP.
By: ________
Name: Sandra Ellison
Title: General Counsel
Date: April 5, 2023
LUMOS PHOTONICS, INC.
By: ________
Name: Richard Talbot
Title: General Counsel
Date: April 5, 2023
EXHIBIT A
FORM OF JOINT STIPULATION OF DISMISSAL WITH PREJUDICE
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
Pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii), Plaintiff and Counterclaim-Defendant Optiwave Semiconductor Corp. ("OWS") and Defendant and Counterclaim-Plaintiff Lumos Photonics, Inc. ("Lumos"), by and through their respective undersigned counsel, hereby stipulate and agree as follows:
1.  All claims asserted by OWS against Lumos in the Complaint filed on June 3, 2022, including all claims of patent infringement of U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890, are hereby dismissed with prejudice.
2.  All counterclaims asserted by Lumos against OWS in the Answer and Counterclaims filed on July 29, 2022, including all counterclaims for declaratory judgment of non-infringement and invalidity, are hereby dismissed with prejudice.
3.  Each Party shall bear its own attorneys' fees, costs, and expenses incurred in connection with this Action.
4.  This Stipulation resolves all claims and counterclaims between OWS and Lumos in this Action. There are no remaining claims, counterclaims, cross-claims, or third-party claims pending in this Action.
5.  The Parties respectfully request that the Court enter the Proposed Order of Dismissal with Prejudice submitted herewith.
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (SBN 247831) One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 555-0140
Email: ango@calderwoodharkness.com
Attorneys for Plaintiff and Counterclaim-Defendant Optiwave Semiconductor Corp.
BRANNICK HOWELL & STEIN LLP
By: ________
Victoria Ashworth (SBN 261504) 555 California Street, Suite 2800 San Francisco, California 94104 Telephone: (415) 555-0280
Email: vashworth@bhslaw.com
Attorneys for Defendant and Counterclaim-Plaintiff Lumos Photonics, Inc.
Dated: April 10, 2023
EXHIBIT B
FORM OF PROPOSED ORDER OF DISMISSAL WITH PREJUDICE
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
Having reviewed and considered the Joint Stipulation of Dismissal with Prejudice filed by Plaintiff and Counterclaim-Defendant Optiwave Semiconductor Corp. and Defendant and Counterclaim-Plaintiff Lumos Photonics, Inc., and good cause appearing therefor,
IT IS HEREBY ORDERED that:
1.  All claims asserted by Plaintiff Optiwave Semiconductor Corp. against Defendant Lumos Photonics, Inc. in the above-captioned action, including all claims of patent infringement of U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890, are DISMISSED WITH PREJUDICE.
2.  All counterclaims asserted by Defendant and Counterclaim-Plaintiff Lumos Photonics, Inc. against Plaintiff and Counterclaim-Defendant Optiwave Semiconductor Corp. in the above-captioned action, including all counterclaims for declaratory judgment of non-infringement and invalidity, are DISMISSED WITH PREJUDICE.
3.  Each Party shall bear its own attorneys' fees, costs, and expenses incurred in connection with this Action.
4.  The Clerk of Court is directed to close this case and terminate all pending motions and deadlines.
IT IS SO ORDERED.
Dated: ________
________________________________________
HON. EDWARD J. TORVELIS United States District Judge
OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation, | Case No. 5:22-cv-03417-EJD
Plaintiff and Counterclaim-Defendant, | JOINT STIPULATION OF DISMISSAL WITH PREJUDICE
v. | Hon. Edward J. Torvelis
LUMOS PHOTONICS, INC., a Delaware corporation,
Defendant and Counterclaim-Plaintiff.
OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation, | Case No. 5:22-cv-03417-EJD
Plaintiff and Counterclaim-Defendant, | [PROPOSED] ORDER OF DISMISSAL WITH PREJUDICE
v. | Hon. Edward J. Torvelis
LUMOS PHOTONICS, INC., a Delaware corporation,
Defendant and Counterclaim-Plaintiff.

SETTLEMENT AGREEMENT AND MUTUAL RELEASE

RECITALS

WHEREAS:

OPTIWAVE SEMICONDUCTOR CORP.

LUMOS PHOTONICS, INC.

EXHIBIT A

FORM OF JOINT STIPULATION OF DISMISSAL WITH PREJUDICE

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

CALDERWOOD & HARKNESS LLP

BRANNICK HOWELL & STEIN LLP

EXHIBIT B

FORM OF PROPOSED ORDER OF DISMISSAL WITH PREJUDICE

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

IT IS SO ORDERED.

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