Samantha,
I hope this finds you well. I am writing regarding Lumicore Technologies, Inc.'s ("Lumicore") document production to date in the above-captioned matter. This email is intended to identify specific deficiencies we have observed in the production and to facilitate their resolution consistent with the parties' obligations under the Scheduling Order issued by Judge Gilstrap on August 12, 2024, the agreed-upon ESI Protocol (dated August 15, 2024), and the Stipulated Protective Order (filed August 19, 2024). We raise these issues in the spirit of the good-faith meet-and-confer process contemplated by the Local Rules of the Eastern District of Texas and Fed. R. Civ. P. 37(a)(1).
As you know, Optiwave Semiconductor Corp. ("OWS") served its First Set of Requests for Production (85 RFPs) on August 26, 2024. To date, Lumicore has produced approximately 147,000 documents (approximately 980,000 pages) in response. Our review team at Calderwood & Harkness has been working through this production on a rolling basis and has identified significant gaps in several critical categories of documents. We have outlined these deficiencies below.
**1. Source-Code Repositories for the Accused Product Lines**
Lumicore has not produced source-code repositories for the three accused product lines: the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR. These materials are directly responsive to RFP Nos. 14, 22, and 37, which requested, among other things, all design documents, engineering specifications, and CAD/layout files for the accused products. The ESI Protocol Agreement specifically provides for native-format production of source code under the "Highly Confidential — Source Code" tier of the Stipulated Protective Order, and OWS has the infrastructure in place to receive and review such a production in accordance with the agreed-upon procedures.
These materials are critical to OWS's infringement analysis. OWS's technical expert, Dr. Caroline Ashford of the Northfield Institute of Technology, needs access to the source-code repositories to map the accused products' internal architecture against the limitations of the asserted patent claims — U.S. Patent Nos. 10,234,847 ("the '847 Patent"); 10,891,193 ("the '193 Patent"); 9,678,562 ("the '562 Patent"); and 11,402,015 ("the '015 Patent") — on a limitation-by-limitation basis.
We note that Lumicore's responses to OWS's First Set of Interrogatories (also served August 26, 2024) identify engineering personnel involved in the design of the accused products and reference internal design repositories maintained by Lumicore's engineering teams. Yet no such repositories have appeared in the production to date. We ask that Lumicore explain this omission and produce these materials promptly.
**2. Photonic Integrated Circuit (PIC) Mask Layout Files**
Lumicore has not produced photonic integrated circuit mask layout files for the accused transceiver modules. These files are responsive to RFP Nos. 22 and 31, which requested layout files, fabrication specifications, and design data for the accused products.
The mask files are essential to OWS's infringement case because they reveal the physical structures of the accused waveguide multiplexer, micro-channel heat sinks, and grating coupler elements — features that are directly at issue under the asserted patents. Teardown reports prepared by Benchmark Semiconductor Analysis, LLC — covering the LumiLink 400G-ZR+ (teardown delivered December 12, 2022), the LumiLink 800G-DR8 (June 2023), and the LumiEdge 1600G-LR (February 2024) — identified physical structures corresponding to specific claim limitations. However, the mask files are necessary to complete the element-by-element mapping and to support OWS's infringement claim charts, including the doctrine of equivalents analysis for Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent. Without these files, OWS cannot fully develop its infringement theories for trial.
**3. Fabrication Run Data**
Lumicore has not produced fabrication run data — including fab run sheets, process control records, and wafer lot data — for the accused product families. These materials are responsive to RFP Nos. 26 and 33 and are necessary to understand the manufacturing processes used in producing the accused products, particularly the thermal management structures covered by the '562 Patent (micro-channel heat sinks) and the waveguide structures covered by the '847 Patent.
Additionally, fabrication run data bears directly on damages. This data provides insight into Lumicore's cost structure for the accused products, which is information that OWS's damages expert, Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC, requires to conduct his lost-profits analysis under the *Panduit* framework and his reasonable-royalty analysis under the *Georgia-Pacific* framework. Without this data, Dr. Keating cannot prepare a complete and reliable damages report.
**4. Forthcoming Second Set of Requests for Production**
Due to the gaps identified above, OWS is preparing a Second Set of Requests for Production (30 supplemental RFPs) specifically targeting these categories. We intend to serve these supplemental requests by November 4, 2024. That said, we would welcome the opportunity to resolve some or all of these issues through voluntary supplemental production, which would conserve both parties' resources and avoid unnecessary motion practice. To the extent Lumicore is willing to supplement its production to address the deficiencies outlined in this email, we would be happy to narrow the scope of the Second Set accordingly.
**5. Production Format**
As a reminder, the ESI Protocol Agreement dated August 15, 2024 requires that source code be produced in native format and designated under the "Highly Confidential — Source Code" tier of the Stipulated Protective Order. Other design documents, including mask layout files and fabrication run data, should be produced in native format to the extent they are maintained electronically. To the extent any responsive materials exist only in hard copy, they should be produced as TIFF images with accompanying load files consistent with the protocol. All load files should conform to the agreed-upon Relativity specifications.
**6. Proposed Timeline and Meet-and-Confer**
We respectfully request that Lumicore confirm by November 4, 2024 whether it will produce the identified categories of documents and, if so, provide an estimated production timeline. We also propose a telephonic meet-and-confer for the week of November 4, 2024 to discuss these deficiencies and any objections Lumicore may wish to raise. We are available on the following dates and would be happy to accommodate your schedule:
- Tuesday, November 5, 2024 - Wednesday, November 6, 2024 - Thursday, November 7, 2024
Please let us know what date and time work best for you and Rohan.
As you are aware, the fact discovery close date in this matter is May 1, 2025, and plaintiff expert reports are due June 15, 2025. Given the complexity of the technical analysis required, it is essential that OWS have these materials in hand well in advance of those deadlines to allow for proper analysis, expert report preparation, and deposition planning for the remaining fact and Rule 30(b)(6) depositions. We trust Lumicore shares our interest in keeping discovery on track with the Court's schedule.
If the parties are unable to resolve these issues through the meet-and-confer process, OWS reserves the right to seek relief from the Court, including filing a motion to compel under Fed. R. Civ. P. 37 and the applicable Local Rules.
Samantha, this email is sent in the spirit of good-faith cooperation, consistent with the Court's expectation that the parties make every effort to resolve discovery disputes informally before seeking judicial intervention. I am happy to discuss any of the foregoing by phone at your convenience. Please do not hesitate to reach out.
Best regards,
**Wendy Schultz** Senior Associate, intellectual Property Litigation Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 T: (213) 555-4718 E: wschultz@calderwoodharkness.com Admitted in California
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