UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff,
v.
LUMICORE TECHNOLOGIES, INC.,
Defendant.
Case No. 2:24-cv-00319-JRG
Judge James R. Gilstrap
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S NOTICE OF DEPOSITION PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 30(b)(6) DIRECTED TO LUMICORE TECHNOLOGIES, INC.
I. NOTICE OF DEPOSITION
TO: LUMICORE TECHNOLOGIES, INC., a Delaware corporation, by and through its counsel of record, Catherine "Kate" Rourke, Hawthorne Vega & Cruz LLP, 600 Congress Avenue, Suite 2400, Austin, TX 78701, and Maria Garza, Trask Eddington LLP, 425 East Front Street, Suite 300, Tyler, TX 75701.
PLEASE TAKE NOTICE that Plaintiff Optiwave Semiconductor Corp. ("OWS"), by and through its undersigned counsel, Calderwood & Harkness LLP and local counsel Whitmore & Callahan LLP, hereby provides notice pursuant to Federal Rule of Civil Procedure 30(b)(6) that it will take the deposition of Lumicore Technologies, Inc. ("Lumicore"), a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, TX 78759, by one or more officers, directors, managing agents, or other persons designated by Lumicore to testify on its behalf regarding the topics set forth in Section III herein.
The deposition shall be taken on oral examination before a certified court reporter and videographer at a date, time, and location to be agreed upon by counsel for the parties or, absent agreement, at the offices of Whitmore & Callahan LLP, 110 North College Avenue, Suite 800, Tyler, TX 75702, commencing at 9:00 a.m. local time on a date no fewer than fourteen (14) days from service of this Notice, with proposed dates of November 4, 2024, November 5, 2024, or November 6, 2024. Counsel for OWS is amenable to discussing alternative dates, times, and locations, and respectfully requests that counsel for Lumicore contact the undersigned within seven (7) days of receipt of this Notice to confer regarding mutually convenient scheduling.
The deposition shall be taken in accordance with the Federal Rules of Civil Procedure, the Local Rules of the Eastern District of Texas, and any applicable orders of the Court, including the Scheduling Order entered on August 12, 2024 (D.E. 27), the Stipulated Protective Order entered by the Court on August 20, 2024 (D.E. 30), and the ESI Protocol Agreement dated August 15, 2024. The deposition shall be recorded by both stenographic and videographic means. OWS reserves the right to record the deposition by any other means permitted under the Federal Rules of Civil Procedure and the Local Rules of this Court.
The deposition shall continue from day to day until completed, subject to the limitations of Fed. R. Civ. P. 30(d)(1). OWS reserves the right to continue the deposition of any designee as permitted by the Federal Rules and applicable Court orders. In the event that Lumicore designates multiple witnesses to testify on the topics enumerated below, OWS reserves the right to depose each such designee on his or her designated topics, and the time spent examining each designee shall be allocated in accordance with the Federal Rules and any applicable orders of this Court.
II. DEFINITIONS AND INSTRUCTIONS
A. Definitions. As used in this Notice, including the topics set forth in Section III and the Document Request Schedule attached as Exhibit A, the following terms shall have the meanings set forth below:
1. "OWS" or "Plaintiff" means Optiwave Semiconductor Corp., including its current and former officers, directors, employees, agents, representatives, subsidiaries, affiliates, predecessors, and successors, including but not limited to the Photonics Division of Optiwave Semiconductor Corp.
2. "Lumicore" or "Defendant" means Lumicore Technologies, Inc., including its current and former officers, directors, employees, agents, representatives, subsidiaries, affiliates, predecessors, and successors.
3. "Asserted Patents" means the following United States Patents, each of which is asserted against Lumicore in this litigation:
(a) U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Waveguide Multiplexer Architecture for Silicon Photonic Transceivers," issued on March 19, 2019;
(b) U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "Coherent Optical Transceiver with Integrated Waveguide Multiplexing," issued on January 12, 2021;
(c) U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Micro-Channel Thermal Management Structure for Photonic Integrated Circuits," issued on June 13, 2017; and
(d) U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for High-Bandwidth Silicon Photonic Systems," issued on August 2, 2022.
4. "Accused Products" means the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules, including all versions, variants, configurations, sub-assemblies, and components thereof, and any products substantially similar thereto, whether sold under the same or different product designations.
5. "Accused Instrumentalities" is synonymous with "Accused Products" as defined above.
6. "Document" shall have the broadest meaning permitted under Fed. R. Civ. P. 34(a) and Federal Rule of Evidence 1001, and includes, without limitation, electronically stored information ("ESI"), emails, memoranda, correspondence, reports, presentations, design files, CAD/layout files, GDS-II or OASIS mask files, source code, firmware, specifications, datasheets, financial records, spreadsheets, accounting records, meeting minutes, notes (whether handwritten or electronic), calendars, scheduling entries, instant messages (including Meridian Solutions, Northgate Data Systems, or similar platform messages), text messages, voice recordings, video recordings, photographs, and any other tangible or electronic record of any kind.
7. "Communication" means any oral, written, or electronic exchange of information between two or more persons, including but not limited to emails, letters, text messages, instant messages, video calls, telephone calls, voicemail messages, and in-person conversations.
8. "Person" means any natural person, corporation, partnership, limited liability company, joint venture, association, trust, government entity, or other legal entity of any kind.
9. "You," "Your," or "Yours" refers to Lumicore Technologies, Inc., as defined in paragraph 2 above.
10. "Identify" when used with respect to a person means to state the person's full name, title or position, employer or business affiliation, and last known address and telephone number. When used with respect to a document, "identify" means to provide sufficient information to locate and identify the document, including its title or subject line, author(s), date of creation, recipient(s), and Bates number (if the document has been produced in this litigation). When used with respect to a communication, "identify" means to state the date, method of communication (e.g., email, telephone, in-person), participants, and the subject matter discussed.
11. "Relate to" or "Relating to" means referring to, pertaining to, concerning, describing, reflecting, evidencing, constituting, mentioning, discussing, embodying, supporting, contradicting, or having any logical connection with, directly or indirectly.
12. "FairPoint Letters" means the licensing/notice letters dated January 15, 2023 and May 15, 2023, sent by FairPoint Licensing Group, LLC on behalf of OWS to Lumicore's General Counsel, Raymond Bautista, at Lumicore's Austin, Texas headquarters, together with any attachments, enclosures, or exhibits thereto, including claim charts, patent summaries, and proposed licensing terms.
13. "April 2023 Meeting" means the in-person licensing meeting held on or about April 20, 2023, at Lumicore's headquarters or another location in Austin, Texas, between representatives of OWS, FairPoint Licensing Group, LLC, and Lumicore, including but not limited to Angela Reeves (FairPoint), Rebecca Tanaka (OWS), Raymond Bautista (Lumicore), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP).
14. "Opinion Letters" or "Opinion of Counsel" means any written opinions, memoranda, analyses, advice, or other legal work product obtained by Lumicore from any attorney, law firm, patent counsel, or other legal professional regarding the validity, enforceability, or infringement (or non-infringement) of any of the Asserted Patents, or any claims thereof, with respect to any of the Accused Products or any other Lumicore product.
15. "Relevant Time Period" means from January 1, 2015 through the date of deposition testimony, unless otherwise specified in a particular topic below.
16. "Non-Infringing Alternatives" means any product, process, method, design, architecture, or technology that Lumicore contends could serve as a substitute for any feature, element, structure, or method step in any Accused Product that is alleged to infringe any claim of the Asserted Patents, regardless of whether such alternative was actually developed, implemented, or commercialized.
B. Instructions.
1. Lumicore is required, pursuant to Fed. R. Civ. P. 30(b)(6), to designate one or more persons to testify on its behalf as to matters known or reasonably available to Lumicore regarding each of the topics set forth in Section III below. Lumicore must prepare each designee so that the designee can provide complete, knowledgeable, and binding testimony on behalf of Lumicore on each designated topic, regardless of the personal knowledge of the individual designee. The obligation to prepare a designee extends to reviewing documents, consulting with knowledgeable personnel, and obtaining all information reasonably available to the organization. See, e.g., Brazos River Auth. v. GE Ionics, Inc., 469 F.3d 416, 433 (5th Cir. 2006).
2. If Lumicore believes it is necessary to designate more than one person to testify as to a single topic, it may do so, but must identify in advance — no later than seven (7) calendar days before the first scheduled day of deposition — each person designated and the specific topic(s) for which each person will testify. This identification shall be made in writing to undersigned counsel by email.
3. Lumicore shall produce at the deposition any documents identified in the attached Document Request Schedule (Exhibit A) to the extent such documents have not already been produced in discovery. All such documents shall be produced in the form specified in the ESI Protocol Agreement dated August 15, 2024, or in native format where applicable.
4. This Notice does not limit OWS's right to depose individually any current or former officer, director, employee, or agent of Lumicore as a fact witness under Fed. R. Civ. P. 30(a). OWS expressly reserves its right to take such individual depositions.
5. All testimony shall be subject to the terms of the Stipulated Protective Order entered by the Court (D.E. 30), and any testimony relating to information designated as "Confidential," "Highly Confidential — Attorneys' Eyes Only," or "Highly Confidential — Source Code" shall be treated in accordance with that Order. Counsel for OWS will make arrangements with the court reporter and videographer to comply with the Protective Order's provisions regarding handling of confidential testimony.
6. OWS reserves the right to supplement or amend the topics set forth herein upon further discovery, motion practice, or order of the Court, including any ruling on OWS's pending Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 40), in accordance with Fed. R. Civ. P. 30(b)(6) and the Local Rules of this Court.
III. TOPICS FOR EXAMINATION
Lumicore is hereby required to designate one or more persons to testify on its behalf regarding the following topics:
Topic 1: Corporate Organization and Structure of Lumicore Technologies, Inc.
Lumicore's corporate organization, structure, and governance during the Relevant Time Period, including but not limited to: the formation and incorporation of Lumicore as a Delaware corporation; the date and circumstances of its incorporation; its principal place of business and headquarters located at 9200 Spectrum Boulevard, Building C, Austin, TX 78759; its organizational chart and reporting relationships, including any changes to the organizational structure during the Relevant Time Period; the identity, function, and location of all subsidiaries, affiliates, divisions, and business units of Lumicore; the identity of its registered agent in the State of Delaware, including National Agent Services Corp., 850 New Burton Road, Suite 201, Dover, DE 19904; the roles, responsibilities, and reporting relationships of its senior officers, including Chief Executive Officer Thomas Kessler, Chief Technology Officer Dr. Sandra Michaud, General Counsel Raymond Bautista, Vice President of Product Development Dr. Eric Dalmqvist, and Chief Financial Officer Janet Moreno; the composition and membership of its board of directors; the circumstances of its initial public offering ("IPO") on the Nasdaq Stock Market in March 2022, including the offering price of $24.00 per share and the role of Silverstone Capital Markets LLC as its lead investment bank; its approximate number of employees (approximately 870 as of the most recent available data); its Employer Identification Number (EIN: 81-2547639); the existence and function of any advisory boards, technology committees, or patent review committees; and any material corporate transactions, reorganizations, or changes in ownership during the Relevant Time Period.
Topic 2: Design, Development, and Engineering of the Accused Products
The conception, design, development, engineering, testing, prototyping, qualification, and commercialization of each Accused Product, including but not limited to:
(a) The LumiLink 400G-ZR+ transceiver module, commercially launched in the third quarter of calendar year 2022 (Q3 2022);
(b) The LumiLink 800G-DR8 transceiver module, commercially launched in the first quarter of calendar year 2023 (Q1 2023); and
(c) The LumiEdge 1600G-LR transceiver module, commercially launched in the fourth quarter of calendar year 2023 (Q4 2023).
This topic encompasses: the identification of all persons involved in the design, development, and engineering of each Accused Product, including engineers, scientists, project managers, product managers, and executive sponsors; all design specifications, design review documents, design verification test procedures, and engineering change orders for each Accused Product; any design-around considerations, engineering trade-offs, or alternative design approaches evaluated during the development of each Accused Product; the use of waveguide multiplexer structures (including arrayed waveguide gratings, Mach-Zehnder interferometers, and echelle gratings) in each Accused Product; the use of thermal management structures, including any micro-channel heat sinks, thermoelectric coolers, or other active or passive thermal management elements, in each Accused Product; the use of coherent optical transceiver architectures (including coherent detection, modulation, and digital signal processing elements) in each Accused Product; the use of grating coupler structures, including polarization-diverse grating couplers, in each Accused Product; all internal project names, code names, or identifiers used for each product development effort; the decision-making process for each product launch, including any go/no-go reviews, management approval processes, and launch readiness assessments; and the specific involvement or role of Dr. Sandra Michaud, Dr. Eric Dalmqvist, and any other engineer, scientist, or manager in the design, development, and engineering of each Accused Product.
Topic 3: Revenue, Cost, and Financial Performance of the Accused Products
The revenue, cost of goods sold, gross margin, net profit, average selling prices, unit volumes, and other financial performance metrics for each Accused Product during the Relevant Time Period, including but not limited to:
(a) Fiscal year 2023 revenue attributable to each Accused Product, including LumiLink 400G-ZR+ revenue of approximately $94.8 million, LumiLink 800G-DR8 revenue of approximately $128.4 million, LumiEdge 1600G-LR revenue of approximately $41.7 million, and total accused-product revenue of approximately $264.9 million;
(b) Revenue for each Accused Product for the period from Q3 2022 through Q1 2024, including total accused-product revenue of approximately $378.2 million for that period;
(c) Projected revenue for each Accused Product through Q4 2025, including any internal forecasts, budgets, or financial plans;
(d) Gross margins by product, including margins reported to range from approximately 52.1% to 58.3% per Lumicore's produced financial data;
(e) Customer-by-customer revenue breakdowns for each Accused Product, including identification of the top customers by revenue for each product;
(f) The accounting methodology and cost-allocation methodology used by Lumicore to allocate revenues, costs, and profits to each product line, including any shared or overhead cost allocations;
(g) Any segment disclosures, revenue disclosures, or product-line disclosures contained in Lumicore's SEC filings, including its Form 10-K, Form 10-Q, and Form 8-K filings; and
(h) Lumicore's overall fiscal year 2023 revenue of approximately $312.6 million and the proportion thereof attributable to the Accused Products.
Topic 4: Customers for the Accused Products
The identification of all customers who have purchased, ordered, evaluated, sampled, or received quotations for any Accused Product during the Relevant Time Period, including but not limited to hyperscale data-center operators, telecommunications service providers, cloud service providers, enterprise networking companies, and other end users or resellers. This topic encompasses: the identity and location of each customer; the volume and dollar amount of sales, orders, and shipments to each customer for each Accused Product; whether any of those customers are also customers of OWS or purchasers of OWS products, including the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families; specific sales of Accused Products to customers with facilities or operations in the Eastern District of Texas, including but not limited to Pinnacle Data Systems, LLC (1800 Judson Road, Longview, TX 75601), Frontier Cloud Services, Inc. (400 East Houston Street, marshall, TX 75670), and CrossPoint Networking Corp. (7500 Dallas Parkway, Suite 200, Plano, TX 75024); any competitive displacement of OWS products by Lumicore Accused Products at shared customers; and any competitive displacement or win/loss analyses, sales pipeline reports, or opportunity tracking data comparing Lumicore Accused Products to OWS products or other competitors' products.
Topic 5: Marketing, Sales, and Promotion of the Accused Products
All marketing, advertising, promotional, trade-show, and sales activities relating to each Accused Product during the Relevant Time Period, including but not limited to: marketing materials, product briefs, datasheets, white papers, application notes, press releases, analyst presentations (including presentations to Penmark Consulting Group, Dunmore Consulting Group, or similar industry analysts), investor presentations, earnings call scripts and transcripts, customer presentations, trade-show demonstrations (including demonstrations at OFC, ECOC, Photonics West, or similar industry conferences), and website content; any representations made to customers or prospective customers regarding the technical capabilities, performance specifications, or advantages of the Accused Products, including representations regarding waveguide multiplexing capability, coherent transceiver performance metrics, thermal management performance, or grating coupler design and efficiency; the internal sales organization, sales quotas, compensation plans, and go-to-market strategy for each Accused Product; the role and operations of Lumicore's Tyler, Texas sales and technical support office located at 2700 Earl Campbell Parkway, Suite 150, Tyler, TX 75701 in the marketing and sale of the Accused Products; and any channel partner, distributor, or value-added reseller arrangements for the Accused Products.
Topic 6: Awareness of OWS's Patents and Published Patent Applications
Lumicore's awareness, knowledge, or notice of any of the Asserted Patents or OWS's published patent applications, at any time during the Relevant Time Period, including but not limited to:
(a) Awareness of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015, whether through independent discovery, receipt of the FairPoint Letters, review of patent databases, citation in prior art, identification in patent landscape searches, or any other means;
(b) Awareness of OWS Published Application No. 2018/0123456, which corresponds to the '193 Patent, including the date and circumstances of any such awareness;
(c) Any review, analysis, discussion, or evaluation of any Asserted Patent or any OWS patent application by any Lumicore employee, officer, consultant, or outside counsel, including but not limited to any review by the LumiLink 400G-ZR+ design team during the 2021–2022 timeframe;
(d) The involvement of Dr. Sandra Michaud, Dr. Eric Dalmqvist, Melissa Chen (a former Lumicore engineer now employed at Veridian Photonics, Inc.), or any other current or former Lumicore personnel in accessing, reviewing, downloading, printing, discussing, or analyzing any OWS patent or patent application;
(e) Any patent landscape searches, freedom-to-operate analyses, right-to-use analyses, clearance studies, or similar patent-related investigations conducted by or on behalf of Lumicore relating to silicon photonics transceiver technology, waveguide multiplexer technology, thermal management of photonic integrated circuits, or grating coupler technology, including any work performed by Marlowe Asset Management Patent Analytics, Inc. or any other patent search or analytics firm; and
(f) The dates on which any of the foregoing awareness, knowledge, or analyses first arose or were first obtained.
Topic 7: Receipt and Handling of Pre-Suit Licensing Correspondence
Lumicore's receipt, review, and handling of all pre-suit licensing correspondence from OWS or its licensing agent FairPoint Licensing Group, LLC, including but not limited to:
(a) The FairPoint letter dated January 15, 2023, identifying the '847, '193, and '562 Patents and providing claim charts mapping claims of those patents to the LumiLink 400G-ZR+ module, addressed to Raymond Bautista, General Counsel, Lumicore Technologies, Inc.;
(b) The internal distribution, routing, review, and discussion of the January 15, 2023 FairPoint letter within Lumicore, including identification of all persons who received, reviewed, or discussed the letter;
(c) Lumicore's response letter dated February 28, 2023, prepared and sent by or through outside counsel Hawthorne Vega & Cruz LLP, disputing infringement and questioning the validity of the Asserted Patents;
(d) The in-person licensing meeting held on or about April 20, 2023, in Austin, Texas, involving Angela Reeves (FairPoint Licensing Group, LLC), Rebecca Tanaka (OWS), Raymond Bautista (Lumicore), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP), including the subjects discussed, proposals exchanged, and any follow-up actions taken;
(e) The FairPoint supplemental letter dated May 15, 2023, adding the '015 Patent to the licensing demand and expanding the scope of the accused products to include the LumiLink 800G-DR8 transceiver module;
(f) Lumicore's declination letter dated July 10, 2023, in which Lumicore, through counsel, declined OWS's licensing offer and stated that it had obtained "competent legal opinions" that its products do not infringe the Asserted Patents; and
(g) All internal communications, memoranda, analyses, assessments, presentations, or board materials prepared or circulated within Lumicore in response to the FairPoint Letters, the April 2023 Meeting, or OWS's licensing demands at any time.
Topic 8: Decision to Decline License and Continue Sales
The facts, circumstances, and decision-making process by which Lumicore decided to decline a patent license from OWS and to continue manufacturing, selling, offering for sale, and importing the Accused Products following receipt of the FairPoint Letters and the April 2023 Meeting, including but not limited to:
(a) The identity of all persons involved in, consulted about, or informed of the decision to decline a license from OWS;
(b) The business considerations, technical considerations, and legal considerations evaluated in connection with the decision to decline a license;
(c) Any risk assessments, cost-benefit analyses, litigation-risk evaluations, or financial modeling conducted by or on behalf of Lumicore relating to the potential consequences of declining a license;
(d) Any board-of-directors discussions, executive-committee discussions, officer-level deliberations, or management-team meetings regarding the licensing demand from OWS and the decision to decline;
(e) Any input or advice received from outside counsel, in-house counsel, business advisors, or investment bankers regarding the licensing demand;
(f) The decision to proceed with the launch of the LumiEdge 1600G-LR transceiver module in Q4 2023 notwithstanding the pending licensing dispute and OWS's notice letters identifying the Asserted Patents and accusing the LumiLink product family of infringement; and
(g) Any consideration given to the potential exposure to enhanced damages for willful patent infringement in connection with the decision to decline a license and continue sales.
Topic 9: Opinion-of-Counsel Letters and Advice of Counsel
Without waiving any privilege not already waived by Lumicore's affirmative assertion or disclosure, Lumicore's retention, commissioning, receipt, and reliance on any opinion-of-counsel letter, memorandum, or legal advice regarding the validity, enforceability, or infringement (or non-infringement) of the Asserted Patents, including but not limited to:
(a) The identity of the attorney(s), law firm(s), or patent counsel retained to provide such opinions;
(b) The date(s) on which such opinions were requested, commissioned, and received;
(c) The scope and subject matter of each opinion, including whether each opinion addressed infringement, non-infringement, validity, invalidity, enforceability, or unenforceability;
(d) The specific patents and claims addressed in each opinion;
(e) The specific Lumicore products analyzed in each opinion;
(f) The persons within Lumicore who reviewed, relied upon, or were made aware of such opinions;
(g) The factual basis for the reference to "competent legal opinions" in Lumicore's July 10, 2023 declination letter, including whether such opinions had been obtained as of that date and, if so, from whom;
(h) Whether Lumicore has asserted or intends to assert an advice-of-counsel defense to willful infringement in this litigation;
(i) Any facts relevant to whether Lumicore has waived attorney-client privilege or work-product protection with respect to such opinions, including any voluntary disclosure or reliance on such opinions in discovery, in pleadings, or in communications with third parties; and
(j) Any subsequent supplementation, updating, or withdrawal of any opinion previously obtained.
Topic 10: Prior Art Awareness and Invalidity Contentions
Lumicore's awareness, identification, search for, and reliance on prior art asserted or potentially assertable against any of the Asserted Patents, including but not limited to:
(a) The twenty-three (23) prior-art references cited in Lumicore's P.R. 3-3 Invalidity Contentions served on October 14, 2024, including the factual and technical basis for each asserted invalidity theory;
(b) The following specific references and the basis for their assertion:
(i) Takahashi et al., "Dense WDM Silicon Photonic MUX," IEEE Photonics Technology Letters, published March 2014;
(ii) U.S. Patent No. 8,412,007 (Bergmann), entitled "Optical Multiplexer Device," issued April 2, 2013;
(iii) PCT/EP2015/071234 (Simonsen), entitled "Integrated Photonic Transceiver Module," filed September 17, 2015;
(iv) Dr. Li Wei, "Thermal Solutions for PICs," presented at the Optical Fiber Communication Conference (OFC 2013), March 2013; and
(v) Lumicore's own internal design documents dated 2016–2017, asserted as evidence of prior conception;
(c) Any prior-art search efforts conducted by Marlowe Asset Management Patent Analytics, Inc. or any other prior-art search firm, patent analytics company, or individual, including the scope, date, and results of each such search;
(d) The factual basis for each invalidity theory asserted by Lumicore, including anticipation under 35 U.S.C. § 102, obviousness under 35 U.S.C. § 103, and any other statutory basis; and
(e) The factual basis for Lumicore's prior-conception defense against the '015 Patent, including the identity of the persons who conceived of the allegedly prior designs, the dates and locations of conception, all documentation of conception, and all corroborating evidence, including laboratory notebooks, design files, emails, presentations, and witness testimony.
Topic 11: Inequitable Conduct and Unenforceability Counterclaim
The factual basis for Lumicore's counterclaim of inequitable conduct and unenforceability as pleaded in Lumicore's Answer, Affirmative Defenses, and Counterclaims (D.E. 18), including but not limited to:
(a) The specific information, references, prior art, or other material that Lumicore contends were withheld from or misrepresented to the United States Patent and Trademark Office ("USPTO") during prosecution of any of the Asserted Patents;
(b) The specific allegation that Dr. Jian-Wei Huang, a named inventor on the '193 Patent, failed to disclose a prior publication during prosecution of the '193 Patent before the USPTO;
(c) The identity, title, date, and content of the prior publication or reference allegedly withheld by Dr. Jian-Wei Huang;
(d) The basis for any contention that such omission was material to the patentability of the claims of the '193 Patent, including the specific claims and claim limitations to which the allegedly withheld reference is relevant;
(e) The basis for any contention that the omission was made with the specific intent to deceive the USPTO, including any evidence of Dr. Huang's or any other individual's knowledge, motive, or intent;
(f) Any communications with or analyses by Marlowe Asset Management Patent Analytics, Inc. or any other entity relating to this counterclaim; and
(g) Any additional facts supporting or relating to Lumicore's inequitable conduct or unenforceability defense or counterclaim as to any of the Asserted Patents.
Topic 12: Non-Infringing Alternatives and Design-Around Efforts
Lumicore's identification, evaluation, development, or implementation of any non-infringing alternatives to the features, structures, or methods accused of infringing the Asserted Patents, including but not limited to:
(a) Any alternative waveguide multiplexer designs, thermal management structures (including alternatives to micro-channel heat sinks), coherent transceiver architectures, or grating coupler designs (including alternatives to polarization-diverse grating couplers) considered, evaluated, or developed by Lumicore at any time during the Relevant Time Period;
(b) The technical feasibility, performance impact, cost impact, and timeline associated with any proposed design-around for any feature or element accused of infringing any claim of the Asserted Patents;
(c) Whether any formal design-around analysis was commissioned or undertaken before the commercial launch of any Accused Product, including the LumiEdge 1600G-LR module launched in Q4 2023, in light of the testimony of Raymond Bautista indicating that no formal design-around analysis was commissioned before the LumiEdge 1600G-LR launch;
(d) Any estimate of the time required to complete a redesign of the Accused Products, including Lumicore's estimate of 18–24 months for redesign in the event that an injunction is entered by the Court;
(e) The financial impact of any redesign, including estimated engineering costs, tooling costs, qualification costs, revenue interruption, and potential revenue loss, noting that OWS's analysis indicates approximately 42% of Lumicore's total product revenue is attributable to the Accused Products and would be at risk; and
(f) The identity of all persons involved in any design-around efforts, evaluations, or studies, including engineers, managers, and any outside consultants retained for such purposes.
Topic 13: Lumicore's Relationship with Third-Party Fabrication and Supply Chain
Lumicore's relationships with third-party semiconductor foundries, packaging houses, component suppliers, and subcontractors involved in the manufacture, fabrication, assembly, packaging, or testing of the Accused Products or any component thereof, including but not limited to:
(a) The identity and location of each foundry, fabrication facility, or manufacturing facility used to fabricate photonic integrated circuits ("PICs"), electronic integrated circuits ("EICs"), or other semiconductor components of the Accused Products;
(b) The identity of component suppliers for the waveguide multiplexer sub-system, thermal management sub-system, coherent detection sub-system, and grating coupler sub-system of each Accused Product;
(c) Any agreements, purchase orders, work orders, specifications, process-design kits, or technical instructions provided to third-party foundries, packaging houses, or subcontractors that describe, incorporate, or require the implementation of any of the structures, methods, or architectures accused of infringing the Asserted Patents; and
(d) The geographic locations from which Accused Products or components thereof are imported into the United States.
Topic 14: Lumicore's Patent Portfolio and Cross-Licensing History
Lumicore's own patent portfolio, cross-licensing history, and licensing practices, including but not limited to: the number and subject matter of any patents or patent applications owned by or assigned to Lumicore in the fields of silicon photonics, optical transceivers, waveguide technology, thermal management of photonic integrated circuits, or grating couplers; the number and subject matter of any patents or patent applications licensed to Lumicore by third parties in those fields; any licenses Lumicore has granted to third parties relating to these technologies; any cross-license agreements, settlement agreements, or covenants not to sue entered into by Lumicore with any third party relating to silicon photonics, optical transceiver, or related technologies; the financial terms and structure of any such agreements, to the extent relevant to damages or a reasonable royalty analysis in this litigation; and Lumicore's general licensing practices, policies, and decision-making processes regarding inbound and outbound patent licensing.
Topic 15: Lumicore's Knowledge of OWS's Products and Competitive Position
Lumicore's knowledge of, familiarity with, and analysis of OWS's products and competitive position during the Relevant Time Period, including but not limited to: Lumicore's awareness of OWS's product lines, including the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families; any teardown, reverse-engineering, benchmarking, or competitive technical analysis of OWS products conducted by or on behalf of Lumicore; any competitive intelligence reports, win/loss analyses, market-share assessments, or competitive positioning documents comparing Lumicore to OWS; Lumicore's awareness of OWS's position as the third-largest U.S.-headquartered supplier of silicon-photonics transceiver modules for hyperscale data-center applications; any assessment of the overlap in customer base, target market segments, or geographic coverage between OWS and Lumicore; and any internal discussions, presentations, or strategic analyses identifying OWS as a competitor or potential licensor.
Topic 16: Impact of the Accused Products on the Market and Pricing
The impact of the Accused Products on market pricing and competitive dynamics in the relevant product markets during the Relevant Time Period, including but not limited to: any effect of the Accused Products on the average selling prices of silicon-photonics transceiver modules in the 400G-ZR, 800G-DR, and 1600G-LR market segments; any price erosion experienced by OWS, Lumicore, or other competitors in those market segments, including the approximately 18.7% decline in the average selling price of 400G-ZR transceiver modules from Q3 2022 to Q4 2023; Lumicore's pricing strategy, pricing models, and pricing decision-making process for the Accused Products; any analysis of price competition, price sensitivity, or price elasticity in the relevant market segments; any analysis of the role of the accused patented features in customer purchasing decisions; and any evidence of a price-cost relationship between Lumicore's products and OWS's products.
Topic 17: Document Retention, Preservation, and Collection Practices
Lumicore's document retention policies, litigation hold procedures, and ESI collection and preservation practices as applied to this litigation, including but not limited to:
(a) The date on which Lumicore first anticipated this litigation and the date on which Lumicore implemented a litigation hold, including whether the litigation hold was implemented in response to the FairPoint Letters, the filing of the Complaint, or some other triggering event;
(b) The scope of the litigation hold, including the subject matter covered, the data sources covered, and the systems or applications subject to the hold;
(c) The custodians identified for preservation and collection, including the names, titles, and functional roles of each custodian;
(d) The data sources searched and collected, including email systems, file servers, Aldermere Systems sites, cloud storage, Meridian Solutions or Teams workspaces, engineering databases, ERP systems, CRM systems, and any other repositories;
(e) Any loss, destruction, alteration, or spoliation of potentially relevant documents or ESI, whether intentional or inadvertent, including any documents or data that were lost, overwritten, or deleted after Lumicore's duty to preserve attached;
(f) The use of any third-party vendors for ESI processing, hosting, review, or production, including the identity of such vendors; and
(g) Lumicore's compliance with the ESI Protocol Agreement dated August 15, 2024, including any deviations from or disputes regarding the agreed-upon protocol.
Topic 18: Venue-Related Facts
Facts relating to Lumicore's presence, operations, and commercial activity in the Eastern District of Texas during the Relevant Time Period, including but not limited to:
(a) The establishment, staffing, operations, and function of Lumicore's sales and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, TX 75701, including the date on which the office was established and the reasons for selecting that location;
(b) The number of employees, contractors, or other personnel stationed at or regularly working from the Tyler, TX office at any time during the Relevant Time Period;
(c) The functions performed at the Tyler, TX office, including whether those functions encompass sales, marketing, technical support, field application engineering, customer relationship management, or any other business activities;
(d) Sales of Accused Products to customers located in or with facilities, data centers, or operations in the Eastern District of Texas, including but not limited to:
(i) Pinnacle Data Systems, LLC, located at 1800 Judson Road, Longview, TX 75601;
(ii) Frontier Cloud Services, Inc., located at 400 East Houston Street, marshall, TX 75670; and
(iii) CrossPoint Networking Corp., located at 7500 Dallas Parkway, Suite 200, Plano, TX 75024;
(e) The volume and dollar amount of Accused Product sales into the Eastern District of Texas, by customer and by product, for each fiscal year or quarter during the Relevant Time Period;
(f) Any installation, deployment, technical support, or servicing of Accused Products at customer sites within the Eastern District of Texas; and
(g) Any other contacts, operations, activities, or relationships by Lumicore in the Eastern District of Texas, including attendance at trade shows, conferences, or customer events held within the district.
EXHIBIT A: DOCUMENT REQUEST SCHEDULE
Pursuant to Fed. R. Civ. P. 30(b)(6), Lumicore Technologies, Inc. is requested to produce at the deposition the following categories of documents, to the extent such documents have not already been produced in discovery in this action. All documents shall be produced in accordance with the ESI Protocol Agreement dated August 15, 2024, and the Stipulated Protective Order (D.E. 30).
Document Request No. 1: All organizational charts reflecting the reporting structure for persons involved in the design, development, engineering, testing, qualification, and commercialization of the Accused Products at any time during the Relevant Time Period, including organizational charts for the engineering, product development, product management, and sales organizations.
Document Request No. 2: All design review documents, engineering specifications, design verification test plans, design validation test plans, project plans, project schedules, and project status reports for each Accused Product, including documents maintained in any project management system, product lifecycle management system, or engineering document management system.
Document Request No. 3: All documents reflecting Lumicore's awareness of the Asserted Patents or any OWS patent application, including any freedom-to-operate analyses, right-to-use analyses, clearance opinions, patent landscape searches, patent watch reports, or other patent-related analyses or investigations, including any such work performed by or on behalf of Marlowe Asset Management Patent Analytics, Inc. or any other firm.
Document Request No. 4: All documents relating to the receipt, review, and handling of the FairPoint Letters dated January 15, 2023 and May 15, 2023, and the April 20, 2023 licensing meeting, including all internal communications (emails, instant messages, memoranda), meeting notes, presentations, board materials, and analyses prepared or circulated within Lumicore in response thereto.
Document Request No. 5: All documents reflecting the decision-making process regarding Lumicore's July 10, 2023 declination of a patent license from OWS, including any risk assessments, cost-benefit analyses, board presentations, executive-level memoranda, and correspondence with outside counsel relating to the decision.
Document Request No. 6: All documents relating to any opinion-of-counsel letter, memorandum, or legal advice regarding the Asserted Patents, to the extent that privilege has been waived by Lumicore or the Court orders production, including the opinion(s) referenced in Lumicore's July 10, 2023 declination letter.
Document Request No. 7: All documents reflecting design-around analyses, non-infringing alternative evaluations, redesign studies, or alternative design feasibility assessments for any feature, structure, or method of any Accused Product that is accused of infringing any claim of the Asserted Patents.
Document Request No. 8: All financial documents, including revenue reports, cost of goods sold reports, gross margin analyses, pricing schedules, average selling price data, unit volume data, and profit-and-loss statements for each Accused Product on a customer-by-customer basis for the period from Q3 2022 through the present, including any financial projections or forecasts through Q4 2025.
Document Request No. 9: All documents relating to Lumicore's prior-conception defense against the '015 Patent, including any internal design documents dated 2016–2017, laboratory notebooks, CAD files, simulation files, design reviews, emails, presentations, and all other corroborating evidence of the alleged prior conception.
Document Request No. 10: All documents relating to Lumicore's operations, sales, personnel, and activities in the Eastern District of Texas, including lease agreements, employment records, sales reports, customer visit logs, and any other records of Lumicore's physical presence and commercial activity within the district.
IV. RESERVATION OF RIGHTS
OWS reserves the right to examine Lumicore's designee(s) on any matters reasonably related to the above-listed topics and to examine during the deposition any documents produced by Lumicore, whether produced in response to this Notice, in response to prior discovery requests, or at the deposition itself.
OWS further reserves the right to supplement or amend the topics listed herein upon receipt of additional discovery, upon the outcome of pending motion practice, or upon order of the Court, including any ruling on OWS's pending Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 40), filed September 15, 2024. In the event additional topics are identified, OWS will serve a supplemental notice providing reasonable advance notice to Lumicore.
Nothing in this Notice limits OWS's right to take individual depositions of Lumicore's current or former officers, directors, employees, agents, or other witnesses under Fed. R. Civ. P. 30(a). OWS specifically reserves its right to take such individual depositions, including but not limited to the individual depositions of Dr. Sandra Michaud (scheduled for November 19, 2024), Raymond Bautista (scheduled for December 3, 2024), and other individuals whose testimony may be relevant to the claims, defenses, and counterclaims in this action.
All testimony taken pursuant to this Notice shall be subject to the three-tier Stipulated Protective Order entered by the Court (D.E. 30), which provides for the designation of information and testimony as "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code." Any testimony relating to information so designated shall be treated in accordance with the terms and procedures set forth in the Protective Order.
V. SERVICE AND NOTICE
This Notice is being served on counsel for Defendant Lumicore Technologies, Inc. as follows:
Catherine "Kate" Rourke Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701
Samantha Briggs Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701
Maria Garza Trask Eddington LLP 425 East Front Street, Suite 300 Tyler, TX 75701
Service is made by electronic means via the Court's CM/ECF electronic filing system and by email to all counsel of record, in accordance with the Federal Rules of Civil Procedure and the Local Rules of the Eastern District of Texas.
VI. SIGNATURE
Dated: October 1, 2024
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (admitted pro hac vice) California State Bar No. 298174 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 891-6200
Email: ango@calderwoodharkness.com
Marcus Delgado Texas State Bar No. 24087653 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 891-6200
Email: mdelgado@calderwoodharkness.com