1014-00003 · Optiwave Semiconductor Corp · Settlement & Dismissal

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UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

JOINT STIPULATION AND [PROPOSED] ORDER RE: STAY OF DISCOVERY PENDING SETTLEMENT DISCUSSIONS

Filed: March 10, 2023

JOINT STIPULATION OF THE PARTIES

Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its counsel of record, Calderwood & Harkness LLP, and Defendant Lumos Photonics, Inc. ("Lumos" or "Defendant"), by and through its counsel of record, Brannick Howell & Stein LLP (collectively, the "Parties"), hereby jointly stipulate and respectfully request that this Court enter an order staying all discovery deadlines and obligations in this action for a period of thirty (30) days to facilitate good-faith settlement discussions between the Parties. This Joint Stipulation is made pursuant to the Court's inherent authority to manage its docket, Federal Rule of Civil Procedure 29, and in the interests of judicial economy. In support of this Joint Stipulation, the Parties state as follows:

1. BACKGROUND.

1.1 Nature of the Action. On June 3, 2022, Plaintiff OWS filed this patent infringement action against Defendant Lumos, asserting infringement of four (4) United States patents: U.S. Patent No. 10,234,567 (the "'567 Patent"), U.S. Patent No. 10,891,234 (the "'234 Patent"), U.S. Patent No. 11,045,678 (the "'678 Patent"), and U.S. Patent No. 11,312,890 (the "'890 Patent") (collectively, the "Patents-in-Suit"). The Patents-in-Suit generally relate to semiconductor photonic integrated circuit architectures for high-speed optical data transmission. Plaintiff alleges that certain of Defendant Lumos's photonic transceiver products, including components used in data-center interconnect applications, infringe one or more claims of each of the Patents-in-Suit.

On July 29, 2022, Defendant Lumos filed its Answer to Plaintiff's Complaint and asserted Counterclaims for declaratory judgment of non-infringement and invalidity with respect to each of the four Patents-in-Suit. (Dkt. No. 24.) The Counterclaims assert, inter alia, that the asserted claims of each patent are invalid under 35 U.S.C. §§ 102 and 103 in light of certain prior art references and that Lumos's accused products do not infringe any valid claim of the Patents-in-Suit. Plaintiff OWS filed its Answer to Lumos's Counterclaims on August 19, 2022. (Dkt. No. 29.)

Since the filing of the initial pleadings, the Parties have engaged in substantial pretrial activity, including the exchange of infringement and invalidity contentions pursuant to Patent Local Rules 3-1 and 3-3, the service and partial completion of written discovery, and the joint preparation of a claim construction brief and related filings.

1.2 Markman Hearing and Claim Construction Order. On January 30, 2023, the Court held a Markman hearing addressing the construction of eleven (11) disputed claim terms across the four Patents-in-Suit. The hearing lasted approximately five hours and included presentations by counsel for both Parties with respect to the proper construction of each disputed term, supported by the Parties' previously filed claim construction briefs and expert declarations. (Dkt. Nos. 78, 82, 87, 91.)

On February 17, 2023, the Court issued its Claim Construction Order (Dkt. No. 98), construing all eleven disputed claim terms. The Court's constructions addressed, among other things, key terms relating to the architecture, composition, and functionality of the photonic integrated circuits claimed in the Patents-in-Suit, including the terms "waveguide coupling region," "monolithically integrated laser source," and "dynamically reconfigurable optical multiplexer."

The Court's claim constructions have materially informed each Party's assessment of the merits of its respective claims and defenses, and the likely course of the remaining litigation. Both Parties acknowledge that the Claim Construction Order is a significant development in this case that bears directly on the strength and scope of the infringement and invalidity positions asserted by each side.

1.3 Settlement Discussions Initiated. Following the Court's issuance of the Claim Construction Order, the Parties have engaged in preliminary settlement discussions. On March 6, 2023, lead counsel for the Parties — Alan Ngo of Calderwood & Harkness LLP, on behalf of Plaintiff OWS, and Victoria Ashworth of Brannick Howell & Stein LLP, on behalf of Defendant Lumos — held a telephonic conference to discuss the possibility of a negotiated resolution of this action. During that conference, counsel discussed the general framework and logistics of potential settlement negotiations and agreed to pursue settlement discussions in good faith over a defined period.

The Parties believe that a temporary stay of discovery will facilitate productive and focused settlement discussions and may obviate the need for further litigation. If the Parties are successful in reaching an agreed resolution, such a result would conserve the significant resources of both Parties and of the Court that would otherwise be devoted to extensive fact and expert discovery, dispositive motion practice, trial preparation, and trial. Both Parties are committed to engaging in these discussions promptly and in good faith, and each has designated senior representatives with settlement authority to participate in the discussions during the proposed stay period.

2. TERMS OF THE STIPULATED STAY

2.1 Scope of Stay. All deadlines, obligations, and proceedings related to fact discovery, expert discovery, and any other discovery or pretrial obligations in this action shall be stayed for a period of thirty (30) calendar days from the date of entry of the Court's Order approving this Joint Stipulation. The stay shall apply broadly to all discovery and pretrial activity, including without limitation:

(a) all pending and future document production obligations under any outstanding Requests for Production of Documents served by either Party, including OWS's First Set of Requests for Production of Documents (Nos. 1–42) and Lumos's First Set of Requests for Production of Documents (Nos. 1–38);

(b) all pending and future interrogatory response obligations, including obligations under any outstanding sets of interrogatories served by either Party;

(c) all deposition scheduling and noticed depositions, including the depositions of any fact witnesses or Rule 30(b)(6) designees currently noticed or to be noticed during the stay period;

(d) all obligations under any prior Court scheduling orders, case management orders, or Patent Local Rules deadlines that fall within the stay period, including but not limited to the deadlines set forth in the Court's Case Management Order entered on September 12, 2022 (Dkt. No. 38);

(e) any meet-and-confer obligations under the Federal Rules of Civil Procedure, the Local Rules of the Northern District of California, or the Patent Local Rules arising during the stay period; and

(f) any obligations to supplement or amend prior discovery responses, infringement contentions, or invalidity contentions during the stay period.

2.2 Duration and Expiration. The stay shall remain in effect for thirty (30) calendar days from the date of the Court's Order, unless (i) the stay is extended by further written stipulation of the Parties and approval of the Court, or (ii) the stay is terminated earlier by either Party upon five (5) business days' written notice to the opposing Party and the Court.

Upon the expiration or termination of the stay, all deadlines that were stayed shall be automatically extended by the number of calendar days the stay was in effect, calculated from the date of entry of the Court's Order through the date of expiration or termination, unless the Parties otherwise agree in writing or the Court otherwise orders. By way of illustration, if the Court enters the proposed Order on March 13, 2023, and the stay expires without early termination on April 12, 2023, any discovery deadline that fell on or after March 13, 2023 would be extended by thirty (30) days from its original date. The Parties intend and agree that this automatic extension mechanism shall preserve the relative sequencing of all deadlines as set forth in the Court's Case Management Order and any other applicable scheduling orders.

2.3 Preservation Obligations Unaffected. Nothing in this Joint Stipulation or the proposed Order shall relieve either Party of its ongoing obligations to preserve documents and electronically stored information ("ESI") relevant to this action, including obligations arising under any litigation hold notices currently in effect. Both Parties represent that they have implemented and are maintaining litigation holds with respect to documents and ESI potentially relevant to the claims and defenses in this action, and both Parties acknowledge their continuing obligation to maintain and enforce such holds during the stay period and thereafter.

All obligations under the Stipulated Protective Order entered by the Court on September 19, 2022 (Dkt. No. 41) shall remain in full force and effect during the stay period. Nothing in this Joint Stipulation or proposed Order shall modify, alter, or affect any provision of the Stipulated Protective Order, and all documents and information previously designated as "Confidential" or "Highly Confidential — Attorneys' Eyes Only" under that order shall continue to be subject to the protections and restrictions set forth therein.

2.4 No Waiver. Neither Party waives any rights, claims, defenses, or objections by entering into this Joint Stipulation or by consenting to the proposed stay. The stay shall not constitute a waiver of any discovery rights or objections, including but not limited to:

(a) any objections previously raised by either Party in any discovery responses, including objections based on relevance, proportionality, privilege, work-product protection, or burden;

(b) any objections or positions set forth in any meet-and-confer correspondence exchanged between the Parties prior to the date of this Joint Stipulation; and

(c) any right of either Party to seek modification of the Court's Case Management Order or any other scheduling order upon expiration or termination of the stay.

Entry into this Joint Stipulation and the proposed stay shall not be construed as an admission by either Party regarding the merits of any claim, counterclaim, or defense in this action. Nor shall the fact that the Parties have engaged in settlement discussions, or any statements made during such discussions, be admissible or used for any purpose in this action or any other proceeding, consistent with Federal Rule of Evidence 408.

3. GOOD CAUSE EXISTS FOR THE STAY

The Parties respectfully submit that good cause exists for the entry of the proposed stay for the following reasons:

First, the Court's Claim Construction Order, issued on February 17, 2023, has materially shaped the Parties' respective positions and created conditions that are conducive to a potential settlement. Claim construction is widely recognized as one of the most significant events in patent litigation, and the Court's resolution of eleven disputed claim terms has provided both Parties with a substantially clearer understanding of the scope of the asserted claims and the strengths and weaknesses of their respective positions. This understanding forms the necessary foundation for informed and productive settlement discussions.

Second, a temporary stay will allow the Parties to devote their full resources and attention to meaningful settlement discussions, rather than continuing to expend significant resources on ongoing discovery obligations that may prove entirely unnecessary if a resolution is reached. The Parties have each retained expert consultants and are in the process of collecting and reviewing substantial volumes of documents and technical data. A stay will conserve the considerable resources that would otherwise be required to complete these tasks during the pendency of settlement negotiations.

Third, no prejudice will result to either Party from the proposed stay. Both Parties have jointly consented to the stay and to the automatic extension of all deadlines upon its expiration. The proposed thirty-day stay period will not materially alter the overall timeline of this litigation, and the automatic deadline extension ensures that neither Party will lose any discovery rights or be disadvantaged by the passage of time during the stay period. Moreover, because either Party may terminate the stay upon five business days' written notice, neither Party is bound to the stay in the event that settlement discussions prove unproductive.

Fourth, granting the proposed stay serves the interests of judicial economy. If the Parties are able to resolve this matter through settlement, the Court and the Parties will be spared the considerable burden of further motion practice — including anticipated disputes over the scope and adequacy of discovery responses — expert discovery, Daubert motion practice, pretrial preparation, and trial. Even a temporary pause that allows the Parties a meaningful opportunity to explore resolution advances the efficient administration of justice.

Fifth, the thirty-day period proposed by the Parties is reasonable and narrowly tailored to permit focused settlement negotiations without causing undue delay in the overall progress of the litigation. The Parties are mindful of the Court's interest in the timely disposition of this action and have designed the proposed stay to be limited in duration. If settlement cannot be achieved within the thirty-day window, the Parties are prepared to resume discovery promptly and to proceed with the litigation on a schedule to be agreed upon or set by the Court.

4. PRAYER FOR RELIEF

WHEREFORE, the Parties respectfully request that the Court enter the accompanying [Proposed] Order, substantially in the form attached hereto, granting a thirty (30) day stay of all discovery deadlines and obligations in this action on the terms set forth herein, and providing that any deadlines falling within the stay period be automatically extended by the duration of the stay upon its expiration or termination. The Parties further request such other and further relief as the Court deems just and proper.

Respectfully submitted,

For Plaintiff Optiwave Semiconductor Corp.:

Dated: March 10, 2023

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (Cal. Bar No. 287415; USPTO Reg. No. 52,871) One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 773-5600 Facsimile: (415) 773-5601

Email: ango@calderwoodharkness.com

Attorneys for Plaintiff Optiwave Semiconductor Corp.

For Defendant Lumos Photonics, Inc.:

Dated: March 10, 2023

BRANNICK HOWELL & STEIN LLP

By: ________

Victoria "Tori" Ashworth (Cal. Bar No. 301892) 555 California Street, Suite 2800 San Francisco, California 94104 Telephone: (415) 438-2000 Facsimile: (415) 438-2001

Email: tashworth@brannickhowell.com

Attorneys for Defendant Lumos Photonics, Inc.

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

[PROPOSED] ORDER RE: STAY OF DISCOVERY PENDING SETTLEMENT DISCUSSIONS

The Court, having reviewed the Parties' Joint Stipulation filed on March 10, 2023 (Dkt. No. _), and the record in this action, and finding good cause therefor, hereby ORDERS as follows:

1. All discovery deadlines, obligations, and proceedings in this action — including but not limited to fact discovery, expert discovery, document production, interrogatory responses, depositions, obligations under the Court's Case Management Order and Patent Local Rules deadlines, and all meet-and-confer obligations under the Federal Rules of Civil Procedure and Local Rules — are hereby STAYED for a period of thirty (30) calendar days from the date of this Order.

2. The stay ordered herein shall not affect, modify, or relieve either Party of its ongoing obligations to preserve documents and electronically stored information ("ESI") relevant to this action, including obligations arising under any litigation hold notices currently in effect. All obligations under the Stipulated Protective Order entered by the Court on September 19, 2022 (Dkt. No. 41) shall remain in full force and effect during the stay period.

3. Upon expiration of the thirty (30) day stay period, all deadlines that were stayed shall be automatically extended by thirty (30) calendar days from their original dates (or by the actual duration of the stay, if the stay is terminated earlier than thirty days), unless the Parties agree otherwise in writing or the Court otherwise orders. The relative sequencing of all deadlines under the Court's Case Management Order and any other applicable scheduling orders shall be preserved.

4. Either Party may terminate the stay upon five (5) business days' written notice to the opposing Party and the Court. Such notice shall be filed on the docket and served on opposing counsel via electronic mail. In the event of early termination, the automatic deadline extension described in Paragraph 3 above shall be calculated based on the actual number of calendar days between the date of this Order and the effective date of termination.

5. The Parties may jointly request an extension of the stay period beyond the initial thirty (30) day period by filing a further stipulation with the Court, subject to approval by the Court. Any such request shall include a brief statement of the status of settlement discussions and the reason for the requested extension.

6. This Order shall not constitute a waiver of any Party's rights, claims, defenses, or objections in this action, including any discovery rights or objections previously raised. This Order shall not be construed as an admission by either Party on any issue, including the merits of any claim, counterclaim, or defense. Nothing in this Order shall render admissible or permit the use of any settlement discussions or communications for any purpose in this action or any other proceeding, consistent with Federal Rule of Evidence 408.

7. The Parties are DIRECTED to file a Joint Status Report within five (5) business days of the expiration or termination of the stay, whichever occurs first. The Joint Status Report shall advise the Court of: (a) the current status of settlement discussions; (b) whether the Parties have reached a resolution, in whole or in part; and (c) if the case has not been fully resolved, a proposed schedule for the completion of remaining discovery and pretrial proceedings. If the Parties are unable to agree on a proposed schedule, each Party shall include its own proposed schedule in the Joint Status Report, with a brief statement of the reasons for any disagreement.

IT IS SO ORDERED.

Dated: _____

________________________________________

HON. EDWARD J. TORVELIS United States District Judge

CERTIFICATE OF SERVICE

I, Omar Siddiqui, an attorney at Calderwood & Harkness LLP, hereby certify that on March 10, 2023, I caused the foregoing Joint Stipulation and [Proposed] Order Re: Stay of discovery Pending Settlement Discussions to be electronically filed with the Clerk of the Court using the CM/ECF system for the United States District Court for the Northern District of California. The Court's CM/ECF system will automatically generate and send a Notice of Electronic Filing to all counsel of record in this action who are registered CM/ECF users, including the following counsel for Defendant Lumos Photonics, Inc.:

Victoria "Tori" Ashworth Daniel Kowalski BRANNICK HOWELL & STEIN LLP 555 California Street, Suite 2800 San Francisco, California 94104 Telephone: (415) 438-2000

Email: tashworth@brannickhowell.com

Email: dkowalski@brannickhowell.com

Counsel for Defendant Lumos Photonics, Inc.

By: ________

Omar Siddiqui CALDERWOOD & HARKNESS LLP One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 773-5600

Email: osiddiqui@calderwoodharkness.com

Attorneys for Plaintiff Optiwave Semiconductor Corp.

OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation,	Case No. 5:22-cv-03417-EJD
<!-- indent:2 -->Plaintiff,<!-- /indent -->	Hon. Edward J. Torvelis

LUMOS PHOTONICS, INC., a Delaware corporation,

Defendant.

OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation,	Case No. 5:22-cv-03417-EJD
<!-- indent:2 -->Plaintiff,<!-- /indent -->	Hon. Edward J. Torvelis

LUMOS PHOTONICS, INC., a Delaware corporation,

Defendant.

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
JOINT STIPULATION AND [PROPOSED] ORDER RE: STAY OF DISCOVERY PENDING SETTLEMENT DISCUSSIONS
Filed: March 10, 2023
JOINT STIPULATION OF THE PARTIES
Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its counsel of record, Calderwood & Harkness LLP, and Defendant Lumos Photonics, Inc. ("Lumos" or "Defendant"), by and through its counsel of record, Brannick Howell & Stein LLP (collectively, the "Parties"), hereby jointly stipulate and respectfully request that this Court enter an order staying all discovery deadlines and obligations in this action for a period of thirty (30) days to facilitate good-faith settlement discussions between the Parties. This Joint Stipulation is made pursuant to the Court's inherent authority to manage its docket, Federal Rule of Civil Procedure 29, and in the interests of judicial economy. In support of this Joint Stipulation, the Parties state as follows:
1. BACKGROUND.
1.1 Nature of the Action. On June 3, 2022, Plaintiff OWS filed this patent infringement action against Defendant Lumos, asserting infringement of four (4) United States patents: U.S. Patent No. 10,234,567 (the "'567 Patent"), U.S. Patent No. 10,891,234 (the "'234 Patent"), U.S. Patent No. 11,045,678 (the "'678 Patent"), and U.S. Patent No. 11,312,890 (the "'890 Patent") (collectively, the "Patents-in-Suit"). The Patents-in-Suit generally relate to semiconductor photonic integrated circuit architectures for high-speed optical data transmission. Plaintiff alleges that certain of Defendant Lumos's photonic transceiver products, including components used in data-center interconnect applications, infringe one or more claims of each of the Patents-in-Suit.
On July 29, 2022, Defendant Lumos filed its Answer to Plaintiff's Complaint and asserted Counterclaims for declaratory judgment of non-infringement and invalidity with respect to each of the four Patents-in-Suit. (Dkt. No. 24.) The Counterclaims assert, inter alia, that the asserted claims of each patent are invalid under 35 U.S.C. §§ 102 and 103 in light of certain prior art references and that Lumos's accused products do not infringe any valid claim of the Patents-in-Suit. Plaintiff OWS filed its Answer to Lumos's Counterclaims on August 19, 2022. (Dkt. No. 29.)
Since the filing of the initial pleadings, the Parties have engaged in substantial pretrial activity, including the exchange of infringement and invalidity contentions pursuant to Patent Local Rules 3-1 and 3-3, the service and partial completion of written discovery, and the joint preparation of a claim construction brief and related filings.
1.2 Markman Hearing and Claim Construction Order. On January 30, 2023, the Court held a Markman hearing addressing the construction of eleven (11) disputed claim terms across the four Patents-in-Suit. The hearing lasted approximately five hours and included presentations by counsel for both Parties with respect to the proper construction of each disputed term, supported by the Parties' previously filed claim construction briefs and expert declarations. (Dkt. Nos. 78, 82, 87, 91.)
On February 17, 2023, the Court issued its Claim Construction Order (Dkt. No. 98), construing all eleven disputed claim terms. The Court's constructions addressed, among other things, key terms relating to the architecture, composition, and functionality of the photonic integrated circuits claimed in the Patents-in-Suit, including the terms "waveguide coupling region," "monolithically integrated laser source," and "dynamically reconfigurable optical multiplexer."
The Court's claim constructions have materially informed each Party's assessment of the merits of its respective claims and defenses, and the likely course of the remaining litigation. Both Parties acknowledge that the Claim Construction Order is a significant development in this case that bears directly on the strength and scope of the infringement and invalidity positions asserted by each side.
1.3 Settlement Discussions Initiated. Following the Court's issuance of the Claim Construction Order, the Parties have engaged in preliminary settlement discussions. On March 6, 2023, lead counsel for the Parties — Alan Ngo of Calderwood & Harkness LLP, on behalf of Plaintiff OWS, and Victoria Ashworth of Brannick Howell & Stein LLP, on behalf of Defendant Lumos — held a telephonic conference to discuss the possibility of a negotiated resolution of this action. During that conference, counsel discussed the general framework and logistics of potential settlement negotiations and agreed to pursue settlement discussions in good faith over a defined period.
The Parties believe that a temporary stay of discovery will facilitate productive and focused settlement discussions and may obviate the need for further litigation. If the Parties are successful in reaching an agreed resolution, such a result would conserve the significant resources of both Parties and of the Court that would otherwise be devoted to extensive fact and expert discovery, dispositive motion practice, trial preparation, and trial. Both Parties are committed to engaging in these discussions promptly and in good faith, and each has designated senior representatives with settlement authority to participate in the discussions during the proposed stay period.
2. TERMS OF THE STIPULATED STAY
2.1 Scope of Stay. All deadlines, obligations, and proceedings related to fact discovery, expert discovery, and any other discovery or pretrial obligations in this action shall be stayed for a period of thirty (30) calendar days from the date of entry of the Court's Order approving this Joint Stipulation. The stay shall apply broadly to all discovery and pretrial activity, including without limitation:
(a) all pending and future document production obligations under any outstanding Requests for Production of Documents served by either Party, including OWS's First Set of Requests for Production of Documents (Nos. 1–42) and Lumos's First Set of Requests for Production of Documents (Nos. 1–38);
(b) all pending and future interrogatory response obligations, including obligations under any outstanding sets of interrogatories served by either Party;
(c) all deposition scheduling and noticed depositions, including the depositions of any fact witnesses or Rule 30(b)(6) designees currently noticed or to be noticed during the stay period;
(d) all obligations under any prior Court scheduling orders, case management orders, or Patent Local Rules deadlines that fall within the stay period, including but not limited to the deadlines set forth in the Court's Case Management Order entered on September 12, 2022 (Dkt. No. 38);
(e) any meet-and-confer obligations under the Federal Rules of Civil Procedure, the Local Rules of the Northern District of California, or the Patent Local Rules arising during the stay period; and
(f) any obligations to supplement or amend prior discovery responses, infringement contentions, or invalidity contentions during the stay period.
2.2 Duration and Expiration. The stay shall remain in effect for thirty (30) calendar days from the date of the Court's Order, unless (i) the stay is extended by further written stipulation of the Parties and approval of the Court, or (ii) the stay is terminated earlier by either Party upon five (5) business days' written notice to the opposing Party and the Court.
Upon the expiration or termination of the stay, all deadlines that were stayed shall be automatically extended by the number of calendar days the stay was in effect, calculated from the date of entry of the Court's Order through the date of expiration or termination, unless the Parties otherwise agree in writing or the Court otherwise orders. By way of illustration, if the Court enters the proposed Order on March 13, 2023, and the stay expires without early termination on April 12, 2023, any discovery deadline that fell on or after March 13, 2023 would be extended by thirty (30) days from its original date. The Parties intend and agree that this automatic extension mechanism shall preserve the relative sequencing of all deadlines as set forth in the Court's Case Management Order and any other applicable scheduling orders.
2.3 Preservation Obligations Unaffected. Nothing in this Joint Stipulation or the proposed Order shall relieve either Party of its ongoing obligations to preserve documents and electronically stored information ("ESI") relevant to this action, including obligations arising under any litigation hold notices currently in effect. Both Parties represent that they have implemented and are maintaining litigation holds with respect to documents and ESI potentially relevant to the claims and defenses in this action, and both Parties acknowledge their continuing obligation to maintain and enforce such holds during the stay period and thereafter.
All obligations under the Stipulated Protective Order entered by the Court on September 19, 2022 (Dkt. No. 41) shall remain in full force and effect during the stay period. Nothing in this Joint Stipulation or proposed Order shall modify, alter, or affect any provision of the Stipulated Protective Order, and all documents and information previously designated as "Confidential" or "Highly Confidential — Attorneys' Eyes Only" under that order shall continue to be subject to the protections and restrictions set forth therein.
2.4 No Waiver. Neither Party waives any rights, claims, defenses, or objections by entering into this Joint Stipulation or by consenting to the proposed stay. The stay shall not constitute a waiver of any discovery rights or objections, including but not limited to:
(a) any objections previously raised by either Party in any discovery responses, including objections based on relevance, proportionality, privilege, work-product protection, or burden;
(b) any objections or positions set forth in any meet-and-confer correspondence exchanged between the Parties prior to the date of this Joint Stipulation; and
(c) any right of either Party to seek modification of the Court's Case Management Order or any other scheduling order upon expiration or termination of the stay.
Entry into this Joint Stipulation and the proposed stay shall not be construed as an admission by either Party regarding the merits of any claim, counterclaim, or defense in this action. Nor shall the fact that the Parties have engaged in settlement discussions, or any statements made during such discussions, be admissible or used for any purpose in this action or any other proceeding, consistent with Federal Rule of Evidence 408.
3. GOOD CAUSE EXISTS FOR THE STAY
The Parties respectfully submit that good cause exists for the entry of the proposed stay for the following reasons:
First, the Court's Claim Construction Order, issued on February 17, 2023, has materially shaped the Parties' respective positions and created conditions that are conducive to a potential settlement. Claim construction is widely recognized as one of the most significant events in patent litigation, and the Court's resolution of eleven disputed claim terms has provided both Parties with a substantially clearer understanding of the scope of the asserted claims and the strengths and weaknesses of their respective positions. This understanding forms the necessary foundation for informed and productive settlement discussions.
Second, a temporary stay will allow the Parties to devote their full resources and attention to meaningful settlement discussions, rather than continuing to expend significant resources on ongoing discovery obligations that may prove entirely unnecessary if a resolution is reached. The Parties have each retained expert consultants and are in the process of collecting and reviewing substantial volumes of documents and technical data. A stay will conserve the considerable resources that would otherwise be required to complete these tasks during the pendency of settlement negotiations.
Third, no prejudice will result to either Party from the proposed stay. Both Parties have jointly consented to the stay and to the automatic extension of all deadlines upon its expiration. The proposed thirty-day stay period will not materially alter the overall timeline of this litigation, and the automatic deadline extension ensures that neither Party will lose any discovery rights or be disadvantaged by the passage of time during the stay period. Moreover, because either Party may terminate the stay upon five business days' written notice, neither Party is bound to the stay in the event that settlement discussions prove unproductive.
Fourth, granting the proposed stay serves the interests of judicial economy. If the Parties are able to resolve this matter through settlement, the Court and the Parties will be spared the considerable burden of further motion practice — including anticipated disputes over the scope and adequacy of discovery responses — expert discovery, Daubert motion practice, pretrial preparation, and trial. Even a temporary pause that allows the Parties a meaningful opportunity to explore resolution advances the efficient administration of justice.
Fifth, the thirty-day period proposed by the Parties is reasonable and narrowly tailored to permit focused settlement negotiations without causing undue delay in the overall progress of the litigation. The Parties are mindful of the Court's interest in the timely disposition of this action and have designed the proposed stay to be limited in duration. If settlement cannot be achieved within the thirty-day window, the Parties are prepared to resume discovery promptly and to proceed with the litigation on a schedule to be agreed upon or set by the Court.
4. PRAYER FOR RELIEF
WHEREFORE, the Parties respectfully request that the Court enter the accompanying [Proposed] Order, substantially in the form attached hereto, granting a thirty (30) day stay of all discovery deadlines and obligations in this action on the terms set forth herein, and providing that any deadlines falling within the stay period be automatically extended by the duration of the stay upon its expiration or termination. The Parties further request such other and further relief as the Court deems just and proper.
Respectfully submitted,
For Plaintiff Optiwave Semiconductor Corp.:
Dated: March 10, 2023
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (Cal. Bar No. 287415; USPTO Reg. No. 52,871) One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 773-5600 Facsimile: (415) 773-5601
Email: ango@calderwoodharkness.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
For Defendant Lumos Photonics, Inc.:
Dated: March 10, 2023
BRANNICK HOWELL & STEIN LLP
By: ________
Victoria "Tori" Ashworth (Cal. Bar No. 301892) 555 California Street, Suite 2800 San Francisco, California 94104 Telephone: (415) 438-2000 Facsimile: (415) 438-2001
Email: tashworth@brannickhowell.com
Attorneys for Defendant Lumos Photonics, Inc.
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
[PROPOSED] ORDER RE: STAY OF DISCOVERY PENDING SETTLEMENT DISCUSSIONS
The Court, having reviewed the Parties' Joint Stipulation filed on March 10, 2023 (Dkt. No. _), and the record in this action, and finding good cause therefor, hereby ORDERS as follows:
1. All discovery deadlines, obligations, and proceedings in this action — including but not limited to fact discovery, expert discovery, document production, interrogatory responses, depositions, obligations under the Court's Case Management Order and Patent Local Rules deadlines, and all meet-and-confer obligations under the Federal Rules of Civil Procedure and Local Rules — are hereby STAYED for a period of thirty (30) calendar days from the date of this Order.
2. The stay ordered herein shall not affect, modify, or relieve either Party of its ongoing obligations to preserve documents and electronically stored information ("ESI") relevant to this action, including obligations arising under any litigation hold notices currently in effect. All obligations under the Stipulated Protective Order entered by the Court on September 19, 2022 (Dkt. No. 41) shall remain in full force and effect during the stay period.
3. Upon expiration of the thirty (30) day stay period, all deadlines that were stayed shall be automatically extended by thirty (30) calendar days from their original dates (or by the actual duration of the stay, if the stay is terminated earlier than thirty days), unless the Parties agree otherwise in writing or the Court otherwise orders. The relative sequencing of all deadlines under the Court's Case Management Order and any other applicable scheduling orders shall be preserved.
4. Either Party may terminate the stay upon five (5) business days' written notice to the opposing Party and the Court. Such notice shall be filed on the docket and served on opposing counsel via electronic mail. In the event of early termination, the automatic deadline extension described in Paragraph 3 above shall be calculated based on the actual number of calendar days between the date of this Order and the effective date of termination.
5. The Parties may jointly request an extension of the stay period beyond the initial thirty (30) day period by filing a further stipulation with the Court, subject to approval by the Court. Any such request shall include a brief statement of the status of settlement discussions and the reason for the requested extension.
6. This Order shall not constitute a waiver of any Party's rights, claims, defenses, or objections in this action, including any discovery rights or objections previously raised. This Order shall not be construed as an admission by either Party on any issue, including the merits of any claim, counterclaim, or defense. Nothing in this Order shall render admissible or permit the use of any settlement discussions or communications for any purpose in this action or any other proceeding, consistent with Federal Rule of Evidence 408.
7. The Parties are DIRECTED to file a Joint Status Report within five (5) business days of the expiration or termination of the stay, whichever occurs first. The Joint Status Report shall advise the Court of: (a) the current status of settlement discussions; (b) whether the Parties have reached a resolution, in whole or in part; and (c) if the case has not been fully resolved, a proposed schedule for the completion of remaining discovery and pretrial proceedings. If the Parties are unable to agree on a proposed schedule, each Party shall include its own proposed schedule in the Joint Status Report, with a brief statement of the reasons for any disagreement.
IT IS SO ORDERED.
Dated: _____
________________________________________
HON. EDWARD J. TORVELIS United States District Judge
CERTIFICATE OF SERVICE
I, Omar Siddiqui, an attorney at Calderwood & Harkness LLP, hereby certify that on March 10, 2023, I caused the foregoing Joint Stipulation and [Proposed] Order Re: Stay of discovery Pending Settlement Discussions to be electronically filed with the Clerk of the Court using the CM/ECF system for the United States District Court for the Northern District of California. The Court's CM/ECF system will automatically generate and send a Notice of Electronic Filing to all counsel of record in this action who are registered CM/ECF users, including the following counsel for Defendant Lumos Photonics, Inc.:
Victoria "Tori" Ashworth Daniel Kowalski BRANNICK HOWELL & STEIN LLP 555 California Street, Suite 2800 San Francisco, California 94104 Telephone: (415) 438-2000
Email: tashworth@brannickhowell.com
Email: dkowalski@brannickhowell.com
Counsel for Defendant Lumos Photonics, Inc.
By: ________
Omar Siddiqui CALDERWOOD & HARKNESS LLP One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 773-5600
Email: osiddiqui@calderwoodharkness.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation, | Case No. 5:22-cv-03417-EJD
Plaintiff, | Hon. Edward J. Torvelis
v.
LUMOS PHOTONICS, INC., a Delaware corporation,
Defendant.
OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation, | Case No. 5:22-cv-03417-EJD
Plaintiff, | Hon. Edward J. Torvelis
v.
LUMOS PHOTONICS, INC., a Delaware corporation,
Defendant.

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

JOINT STIPULATION OF THE PARTIES

CALDERWOOD & HARKNESS LLP

BRANNICK HOWELL & STEIN LLP

IT IS SO ORDERED.

CERTIFICATE OF SERVICE

Record

Parties

Dates

Amounts