ATTORNEY WORK PRODUCT / PRIVILEGED AND CONFIDENTIAL
DEPOSITION SUMMARY
Raymond Bautista
General Counsel, Lumicore Technologies, Inc.
Internal Deposition Digest
December 6, 2024
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I. EXECUTIVE SUMMARY
Raymond Bautista was deposed on December 3, 2024, at the offices of Lumicore's outside litigation counsel, Hawthorne Vega & Cruz LLP, in Austin, Texas. The deposition lasted approximately six hours and forty-two minutes, including breaks, and produced a transcript of approximately 287 pages. Bautista was examined by Alan Ngo and Wendy Schultz on behalf of Optiwave Semiconductor Corp.; he was defended by Kate Rourke and Samantha Briggs of Hawthorne Vega & Cruz LLP.
Overall Assessment. Bautista was guarded and well-prepared throughout the examination. His testimony was generally limited and cautious, with frequent objections and privilege invocations by Kate Rourke. Bautista is an experienced in-house lawyer who understood the stakes of the deposition and was careful to avoid volunteering information beyond the scope of the questions asked. He was polite and measured in his responses, rarely displaying any visible frustration, and appeared to have been extensively prepared by defense counsel in the days leading up to the deposition. His answers were often qualified with phrases such as "to the best of my recollection," "I can't speak to that," and "I'd have to check my records." Despite this caution, several significant admissions were obtained.
Key Admissions.
1. Receipt of First FairPoint Letter. Bautista confirmed that he personally received FairPoint Licensing Group, LLC's first licensing letter dated January 15, 2023, addressed to him in his capacity as General Counsel of Lumicore Technologies, Inc. He estimated that the letter arrived at Lumicore's Austin headquarters approximately two to three business days after its date. This testimony establishes actual notice of the asserted patents as of no later than January 18, 2023.
2. Forwarding to Outside Counsel. Bautista confirmed that he forwarded the January 15, 2023 FairPoint letter to outside counsel at Hawthorne Vega & Cruz LLP — specifically to Kate Rourke — within three business days of its receipt.
3. Receipt of Second FairPoint Letter. Bautista confirmed receipt of FairPoint's second licensing letter dated May 15, 2023, which added U.S. Patent No. 11,402,015 (the "'015 Patent") to the assertion and expanded the scope of accused products to include the LumiLink 800G-DR8.
4. Attendance at April 20, 2023 Licensing Meeting. Bautista confirmed that he attended the in-person licensing meeting held on April 20, 2023, at the HVC offices in Austin, Texas. He attended alongside Kate Rourke, and the OWS/FairPoint side was represented by Angela Reeves (FairPoint) and Rebecca Tanaka (OWS General Counsel). He further confirmed that no counter-offer or alternative licensing proposal was made by Lumicore at that meeting.
5. No Formal Design-Around Analysis Before LumiEdge 1600G-LR Launch. Bautista admitted that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR in Q4 2023. This product was launched after both FairPoint licensing letters and after Lumicore's own declination letter of July 10, 2023.
6. Refusal to Disclose Opinion-of-Counsel Letters. When questioned regarding the substance, authorship, scope, and timing of the "competent legal opinions" referenced in Lumicore's July 10, 2023 declination letter, Bautista refused to answer on every occasion, and Rourke instructed the witness not to answer on privilege and work-product grounds. This pattern of refusal was noted on the record for purposes of the pending Motion to Compel.
Significance for the Case. Bautista's testimony materially advances OWS's willful infringement case. The testimony establishes actual notice of the asserted patents through the FairPoint letters; demonstrates a failure to meaningfully engage in licensing negotiations (no counter-offer at the April 20, 2023 meeting); reveals the absence of any formal design-around effort before launching a new accused product (the LumiEdge 1600G-LR); and highlights Lumicore's refusal to disclose the legal opinions it simultaneously relies upon as a defense. The repeated privilege invocations by Rourke, particularly as to the opinion-of-counsel letters, strengthen OWS's pending Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 25/pending) and corroborate the inference that the opinions may not fully support Lumicore's non-infringement position. Bautista's testimony should be integrated into the Willful Infringement Memorandum, the Timeline of Notice and Willfulness Evidence, and the Read factor analysis for enhanced damages.
II. BACKGROUND AND ROLE
A. Professional Background
Bautista testified that he holds the title of General Counsel at Lumicore Technologies, Inc. He was hired by Lumicore in 2017, approximately two years after the company's founding in 2015. He reports directly to Thomas "Tom" Kessler, Lumicore's Chief Executive Officer.
Bautista described his responsibilities as encompassing all legal affairs for Lumicore, including intellectual property matters, licensing, litigation management, corporate governance, SEC compliance (which became relevant following Lumicore's initial public offering), and employment matters. He confirmed that Lumicore is a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, TX 78759.
When asked about Lumicore's corporate history, Bautista confirmed that the company completed its initial public offering on the Nasdaq exchange in March 2022 at an offering price of $24 per share. He stated that the IPO was a significant milestone for the company and that his responsibilities expanded to include SEC reporting and public company compliance obligations following that event.
With respect to intellectual property matters specifically, Bautista testified that he oversees patent prosecution, which is handled by outside patent counsel. He manages incoming IP licensing inquiries and coordinates IP litigation with outside counsel. He stated that he is the primary internal point of contact for all IP-related legal matters and that any patent licensing correspondence directed to Lumicore would typically be routed to him or his office.
B. Reporting Structure and Decision-Making Authority
Bautista confirmed that he has the authority to engage outside counsel for intellectual property matters and to make recommendations to the CEO and the Board of Directors regarding licensing decisions. He characterized his role in licensing decisions as advisory, stating that the ultimate decision-making authority rests with the CEO and, for matters of sufficient magnitude, the Board.
When asked about the specific decision-making process behind Lumicore's decision to decline OWS's licensing demand, Bautista stated that the decision was made collectively by himself, Tom Kessler (CEO), and Dr. Sandra Michaud (CTO), with input from outside counsel at Hawthorne Vega & Cruz LLP. He confirmed that the decision was not made unilaterally by any single individual within the company.
Bautista further confirmed that Janet Moreno, Lumicore's Chief Financial Officer, was consulted regarding financial exposure analysis related to potential licensing costs. He stated that Moreno's involvement was limited to evaluating the financial dimensions of the potential licensing arrangement and that she did not participate in the legal analysis underlying the decision to decline.
III. RECEIPT AND HANDLING OF FAIRPOINT LICENSING LETTERS
A. First FairPoint Letter — January 15, 2023
Bautista was shown Exhibit 3, a copy of the FairPoint Licensing Group, LLC letter dated January 15, 2023, sent by Angela Reeves, Managing Director of FairPoint, to Raymond Bautista at Lumicore's Austin headquarters address.
Bautista confirmed that he received this letter. When asked to identify the date on which he first received and reviewed the letter, he estimated that it arrived at Lumicore's offices approximately two to three business days after the letter date, placing the receipt date at approximately January 17 or 18, 2023. He stated that the letter was routed to him through Lumicore's mail room and that he believed he read it on the day it was placed on his desk, though he could not recall the precise date with certainty.
The January 15, 2023 letter identified three OWS patents that FairPoint alleged were infringed by Lumicore's products: U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), and U.S. Patent No. 9,678,562 (the "'562 Patent"). The letter specifically accused the LumiLink 400G-ZR+ product of infringement. Bautista confirmed that the letter set forth claim charts or at least references to specific patent claims and product features, and that the letter proposed licensing negotiations.
Bautista confirmed that he read the letter in full upon receipt. He acknowledged that the letter was directed to him personally, by name and title, and that he understood it to be a formal licensing demand on behalf of OWS.
Bautista confirmed that he forwarded the letter to outside counsel at Hawthorne Vega & Cruz LLP within three business days of receipt. He specifically recalled forwarding it to Kate Rourke, whom he identified as the lead partner handling Lumicore's intellectual property matters at HVC. He stated that this was consistent with Lumicore's standard practice of routing IP licensing inquiries to outside counsel for evaluation.
When asked whether he also forwarded the January 15, 2023 FairPoint letter to Dr. Sandra Michaud (CTO) or Dr. Eric Dalmqvist (VP of Product Development) at that time, Bautista stated that he "may have" but could not be certain. He did not recall discussing the letter with any member of Lumicore's engineering team before forwarding it to outside counsel. This response is notable in that it leaves open the question of whether Lumicore's technical personnel were promptly informed of the infringement allegations or whether the matter was initially treated as a purely legal issue to be handled by outside counsel.
B. Lumicore's February 28, 2023 Response
Bautista was shown Exhibit 4, a copy of Lumicore's response letter dated February 28, 2023, sent via outside counsel at Hawthorne Vega & Cruz LLP to Angela Reeves at FairPoint Licensing Group, LLC.
Bautista confirmed that the response was drafted by HVC with his input and approval. He stated that he reviewed the letter before it was sent and authorized its transmission. The response letter disputed infringement and questioned the validity of the three asserted patents ('847, '193, and '562). Bautista confirmed these general characterizations of the letter's content but declined to provide additional detail.
When asked to describe the specific analyses or legal advice that underpinned the response letter, Bautista refused to testify, citing attorney-client privilege. Kate Rourke objected and instructed the witness not to answer on privilege and work-product grounds, stating that the preparation and substance of the response letter involved privileged attorney-client communications between Lumicore and HVC. Alan Ngo noted the objection and instruction on the record and preserved OWS's right to seek Court intervention on this issue.
C. Second FairPoint Letter — May 15, 2023
Bautista was shown Exhibit 5, a copy of FairPoint Licensing Group, LLC's second licensing letter dated May 15, 2023, sent by Angela Reeves to Raymond Bautista at Lumicore.
Bautista confirmed receipt of this letter. The May 15, 2023 letter expanded the scope of FairPoint's licensing demand in two significant respects. First, it added U.S. Patent No. 11,402,015 (the "'015 Patent," issued August 2, 2022) to the portfolio of patents asserted against Lumicore. Second, it expanded the list of accused products to include the LumiLink 800G-DR8, which Lumicore had launched in Q1 2023, after the date of the first FairPoint letter but before the date of the second.
Bautista confirmed that he forwarded this second letter to Hawthorne Vega & Cruz LLP. He also confirmed that he forwarded it to Tom Kessler, Lumicore's CEO, recognizing the escalating nature of the licensing demand. When asked whether he understood that the second letter represented an expansion of the licensing demand, Bautista stated that he understood that the second letter "increased the scope of the licensing demand," both in terms of the number of patents asserted and the number of products accused.
Bautista did not volunteer any information about his reaction to the second letter or any actions taken in response to it beyond forwarding it to outside counsel and the CEO. When pressed for additional detail regarding internal communications or decision-making processes prompted by the second letter, Rourke objected on privilege grounds, and Bautista did not provide further testimony on this point.
IV. APRIL 20, 2023 IN-PERSON LICENSING MEETING
A. Attendees and Setting
Bautista confirmed that an in-person licensing meeting took place on April 20, 2023, at the offices of Hawthorne Vega & Cruz LLP, located at 600 Congress Avenue, Suite 2400, Austin, Texas. The meeting was held in a conference room at HVC's offices.
Bautista identified the attendees as follows:
OWS / FairPoint:
• Angela Reeves, Managing Director, FairPoint Licensing Group, LLC
• Rebecca Tanaka, General Counsel, Optiwave Semiconductor Corp.
Lumicore / HVC:
• Raymond Bautista, General Counsel, Lumicore Technologies, Inc.
• Catherine "Kate" Rourke, Lead Partner, Hawthorne Vega & Cruz LLP
Bautista confirmed that the meeting lasted approximately two hours. He stated that the meeting had been scheduled in advance through correspondence between counsel and that it was understood by all parties to be a licensing discussion. He did not recall whether a formal agenda was circulated in advance.
B. Substance of Meeting
Bautista confirmed that OWS/FairPoint representatives presented infringement allegations and licensing terms during the meeting. He acknowledged that Angela Reeves and Rebecca Tanaka made a presentation regarding the asserted patents and Lumicore's accused products, and that they proposed terms for a patent license.
However, when asked to describe the specific licensing terms proposed by FairPoint — including the proposed royalty rate, the proposed royalty base, or any lump-sum payment — Bautista was evasive. He stated that he was "not sure of the exact numbers discussed" and that "any discussions were part of settlement negotiations." Although Bautista did not formally invoke FRE 408, the implication of his answer was that he viewed the licensing discussions as settlement negotiations subject to some form of protection. Rourke did not explicitly object on FRE 408 grounds at this point but was visibly prepared to do so.
Bautista stated that Lumicore's position at the meeting was that its products did not infringe the asserted OWS patents. He characterized Lumicore's stance as consistent with the position set forth in the February 28, 2023 response letter prepared by HVC.
When asked whether Lumicore presented any technical analysis, claim construction arguments, or non-infringement positions at the meeting, Bautista refused to describe any specific technical or legal analysis discussed at the meeting. Rourke objected on attorney-client privilege grounds and instructed the witness not to answer, stating that any legal or technical analysis presented at the meeting was prepared by counsel and constituted privileged attorney work product.
A critical admission was obtained when Bautista was asked directly whether Lumicore made any counter-offer or proposed alternative licensing terms at the April 20, 2023 meeting. Bautista stated clearly: "We did not make a counter-proposal at that meeting." This admission is significant because it demonstrates that Lumicore did not engage in good-faith licensing negotiations, a factor relevant to both the willful infringement analysis under Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), and the Read factor analysis for enhanced damages.
Bautista confirmed that no agreement was reached at the meeting and that the parties left the meeting without a resolution. When asked to characterize the meeting, Bautista described it as "professional" but "unproductive." He did not elaborate further on why he considered it unproductive.
V. LUMICORE'S JULY 10, 2023 DECLINATION LETTER
A. The Letter Itself
Bautista was shown Exhibit 6, a copy of Lumicore's letter dated July 10, 2023, sent from Raymond Bautista to Angela Reeves at FairPoint Licensing Group, LLC, formally declining to take a license under the asserted OWS patents.
Bautista confirmed that he drafted this letter with input from outside counsel at HVC. He stated that the letter was sent on his authority as General Counsel and represented Lumicore's final position on the FairPoint licensing demand. The letter is written on Lumicore letterhead and bears Bautista's signature.
The July 10, 2023 letter contains the following key statement, which is central to OWS's pending privilege dispute: the letter states that Lumicore has obtained "competent legal opinions" that its products do not infringe the asserted patents. The letter does not identify the author or authors of the opinions, does not describe the scope of the opinions, and does not attach the opinions as enclosures.
Bautista confirmed that the letter was authorized by Tom Kessler before it was sent. He stated that Kessler was aware of the contents of the letter and approved its transmission. Bautista did not recall whether the letter was also reviewed by Dr. Michaud or any other member of Lumicore's executive team before it was sent.
B. Opinion-of-Counsel Letters — Privilege Dispute
The examination of Bautista regarding the "competent legal opinions" referenced in the July 10, 2023 declination letter was the most contentious segment of the deposition. Alan Ngo pursued a methodical line of questioning designed to elicit any information about the nature, authorship, scope, and timing of the opinions. Kate Rourke objected and instructed the witness not to answer on each occasion, asserting attorney-client privilege and attorney work-product protection.
The specific exchanges were as follows:
Question: Who authored the "competent legal opinions" referenced in the July 10, 2023 letter? Rourke: Objection. Attorney-client privilege. I instruct the witness not to answer. Bautista: On the advice of counsel, I will not answer that question.
Question: Were the opinions rendered by Hawthorne Vega & Cruz LLP, or by a separate firm? Rourke: Same objection. Privilege. Instruction not to answer. Bautista: I'm not going to answer that.
Question: How many opinion letters did Lumicore obtain? Rourke: Same objection. Privilege. Instruction not to answer. Bautista: I can't answer that.
Question: Did the opinions address all four of the asserted patents, including the '015 Patent that was added in the May 15, 2023 FairPoint letter? Rourke: Objection. Attorney-client privilege. Work product. Instruction not to answer. Bautista: I'm not in a position to answer that question.
Question: Did the opinions address the validity of the asserted patents, in addition to non-infringement? Rourke: Same objection and instruction. Bautista: I cannot answer.
Question: Were the opinions obtained before or after the first FairPoint letter of January 15, 2023? Rourke: Objection. Privilege. I instruct the witness not to answer. This calls for privileged information about the timing and scope of attorney-client communications and work product. Bautista: I'm going to follow my attorney's instruction and decline to answer.
Alan Ngo placed a standing objection on the record with respect to all privilege assertions related to the opinion-of-counsel letters. He stated on the record that the privilege assertions were being noted for purposes of the pending Motion to Compel Production of Opinion-of-Counsel Letters, filed October 21, 2024 (D.E. pending). Ngo further stated that OWS reserves all rights to seek Court intervention, including the right to file a supplement to the Motion to Compel based on the privilege assertions made during the Bautista deposition.
Analytical Note: The repeated refusals to answer any questions about the opinion letters are highly significant. Lumicore affirmatively referenced "competent legal opinions" in the July 10, 2023 declination letter and has asserted an advice-of-counsel defense in its Answer and Affirmative Defenses. By placing the existence and general nature of the opinions at issue while simultaneously refusing to disclose their substance, authorship, scope, or timing, Lumicore has created the classic "sword and shield" dynamic that courts have consistently held constitutes waiver of attorney-client privilege. See OWS's Memorandum in Support of Motion to Compel Production of Opinion-of-Counsel Letters (October 21, 2024). Bautista's deposition testimony provides additional and compelling evidence in support of that motion.
VI. AWARENESS OF OWS PATENTS WITHIN LUMICORE
A. Pre-FairPoint-Letter Knowledge
A central issue in the willful infringement analysis is the extent of Lumicore's knowledge of OWS's patents before the receipt of the January 15, 2023 FairPoint letter. Bautista was examined on this topic at length, and his testimony was carefully qualified.
Bautista stated that he was not personally aware of the specific OWS patent numbers — the '847 Patent, the '193 Patent, or the '562 Patent — before receiving the January 15, 2023 FairPoint letter. He testified that the FairPoint letter was the first time those patent numbers were brought to his attention.
When asked whether any Lumicore employee, to his knowledge, was aware of OWS's patents or published patent applications before January 2023, Bautista was notably cautious. He stated that he "could not speak to what the engineering team may or may not have been aware of." This response is significant because it does not constitute a denial. Bautista did not state that no Lumicore employee was aware of the OWS patents; rather, he disclaimed knowledge of what the engineering team may have known. This carefully worded response leaves open the possibility — indeed, the likelihood — that members of Lumicore's engineering team were aware of OWS's patent portfolio before the first FairPoint letter.
When asked specifically whether Dr. Sandra Michaud (CTO) or Dr. Eric Dalmqvist (VP of Product Development) had discussed OWS patents with him before January 2023, Bautista stated: "I don't recall any such conversations." Again, this is not a denial that such conversations took place — only that Bautista does not recall them.
Cross-Reference — Dr. Michaud Deposition (November 19, 2024): Dr. Michaud admitted during her deposition that she reviewed OWS published application No. 2018/0123456 (which corresponds to the '193 Patent) during the LumiLink 400G-ZR+ design phase in approximately 2021. Bautista's testimony does not directly contradict Michaud's admission, but it reflects either a genuine lack of knowledge about the engineering team's awareness of OWS's patent portfolio or a careful evasion designed to avoid attributing pre-notice knowledge to the company.
Cross-Reference — Anticipated Testimony of Melissa Chen: Melissa Chen, a former Lumicore engineer now employed by Veridian Photonics, Inc., is expected to testify (pursuant to a third-party subpoena issued January 22, 2025) that the LumiLink 400G-ZR+ design team accessed and reviewed OWS's published patent applications during the product design phase in 2021–2022. If this testimony materializes as expected, it will significantly undercut Bautista's professed lack of awareness and will strengthen the argument that Lumicore's pre-notice knowledge of the OWS patents was more extensive than Bautista acknowledged.
B. Post-Notice Actions
Bautista confirmed that after receiving the first FairPoint letter in January 2023, he circulated it internally "to relevant stakeholders." However, when asked to identify all recipients of the internal circulation by name, Bautista declined, citing privilege as to certain communications with counsel. He confirmed that the letter was circulated to senior management but would not specify which individuals beyond himself received it at that time.
Bautista confirmed that he "initiated a process" to evaluate the claims set forth in the FairPoint letter. When asked to describe the nature of that process — including whether it involved a review of the asserted patents, an evaluation of the accused products, or a comparison of the patent claims to the product features — Bautista refused to provide any detail. Kate Rourke objected on attorney-client privilege and work-product grounds and instructed the witness not to answer.
Bautista did state, in general terms, that Lumicore "took the allegations seriously" and that the company responded in a manner it believed was appropriate. He would not elaborate on what specific steps were taken, and Rourke interposed privilege objections each time Ngo or Schultz attempted to probe further.
VII. DESIGN-AROUND ANALYSIS AND LUMILINK / LUMIEDGE PRODUCT LAUNCHES
A. No Formal Design-Around Before LumiEdge 1600G-LR Launch
One of the most significant admissions obtained during the Bautista deposition concerned the absence of any formal design-around analysis before the launch of the LumiEdge 1600G-LR, Lumicore's most advanced accused product.
When asked directly whether Lumicore commissioned a formal design-around study or analysis before launching the LumiEdge 1600G-LR in Q4 2023, Bautista stated: "Not a formal study, no."
This answer was unequivocal and was not qualified by a privilege assertion. Rourke did not object, and Bautista did not attempt to walk back the answer or qualify it.
When pressed on whether any informal analysis was conducted — even if not reduced to a formal written study — Bautista stated: "The engineering team evaluates many factors when designing products, but I am not aware of a specific design-around project tied to the OWS patents." This response acknowledges that the engineering team considers multiple factors in design decisions but specifically disclaims awareness of any project focused on designing around the OWS patents.
Bautista confirmed that the LumiEdge 1600G-LR was launched after both FairPoint licensing letters (January 15, 2023 and May 15, 2023) and after Lumicore's own July 10, 2023 declination letter. In other words, Lumicore launched a new product into the market with full knowledge of OWS's patent assertions, without conducting a formal design-around analysis to ensure that the new product did not infringe the asserted patents.
Significance: The absence of a formal design-around analysis, coupled with the post-notice launch of a new accused product, constitutes strong evidence supporting willful infringement under Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016). This admission is a key data point for the willfulness evidence timeline and the Read factor analysis for enhanced damages. Under Read, the failure to undertake a good-faith investigation into the scope of the patent owner's rights and to implement remedial measures — such as designing around the asserted patents — weighs heavily in favor of a finding of willfulness.
B. LumiLink 400G-ZR+ and LumiLink 800G-DR8 Design Processes
Bautista was also examined regarding design-around efforts for the earlier accused products.
When asked whether any design-around analysis was conducted for the LumiLink 400G-ZR+ (launched Q3 2022), Bautista stated that the 400G-ZR+ design "predated his awareness of the OWS patents" and that he was "not involved in the technical design decisions" for that product. This response is technically accurate in that the 400G-ZR+ was launched before the first FairPoint letter, but it does not address whether the engineering team may have been aware of the OWS patents during the design phase — a point on which Dr. Michaud's deposition testimony and Melissa Chen's anticipated testimony are directly relevant.
Regarding the LumiLink 800G-DR8, which launched in Q1 2023 — after the January 15, 2023 FairPoint letter but potentially before the letter was received and processed — Bautista stated that he was "not sure whether the design was finalized before or after" the receipt of the FairPoint letter but that "the product was already deep in development." This response suggests that the 800G-DR8 design was substantially complete by the time the FairPoint letter was received, which would mitigate (though not eliminate) the relevance of the FairPoint notice to the design of that particular product.
Bautista refused to provide any detail regarding communications between the legal department and the engineering team concerning the 800G-DR8 design, citing privilege. Rourke objected and instructed the witness not to answer when Ngo asked whether any legal guidance was provided to the engineering team regarding the OWS patents during the 800G-DR8 development process.
C. Non-Infringing Alternatives
When asked to identify any non-infringing alternative designs that Lumicore considered for its accused products, Bautista stated: "I'm not an engineer. I would defer to the technical team on that." He did not identify any non-infringing alternatives and did not offer any explanation for why such alternatives were not pursued.
Cross-Reference — Dr. Michaud Deposition (November 19, 2024): Dr. Michaud was also unable to identify specific non-infringing design alternatives during her November 19, 2024 deposition. The inability of both the Chief Technology Officer and the General Counsel to identify any non-infringing alternatives supports OWS's position under Panduit Factor 2 — the absence of acceptable non-infringing substitutes — and bolsters the damages case. If Lumicore cannot identify alternative designs that could have been used in place of the patented technology, it follows that the patented technology is essential to the accused products and that Lumicore's customers would have turned to OWS's products (or OWS-licensed products) in the absence of the infringing Lumicore products.
VIII. LUMICORE'S INTERNAL IP PROCESSES
A. Patent Clearance and Freedom-to-Operate
Bautista was questioned about Lumicore's general policies and practices concerning patent clearance and freedom-to-operate ("FTO") analyses. His testimony on this topic was extremely limited and evasive.
When asked whether Lumicore has a policy or practice of conducting FTO analyses before launching new products, Bautista stated: "We have processes in place, but I can't get into the specifics because those involve communications with our attorneys." Rourke objected on privilege grounds to any follow-up questions regarding the substance of those processes.
Bautista could not confirm or deny whether an FTO analysis was conducted for any of the three accused product lines — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, or the LumiEdge 1600G-LR. Each time the question was posed for a specific product, Rourke objected on privilege and work-product grounds, and Bautista followed her instruction not to answer.
Bautista also refused to identify the firm or firms that conducted any FTO or non-infringement analyses for Lumicore, again citing privilege. This refusal, combined with Lumicore's refusal to produce the opinion-of-counsel letters referenced in the July 10, 2023 declination letter, creates a comprehensive information vacuum regarding Lumicore's legal evaluation of the OWS patents — an evaluation that Lumicore itself placed at issue by referencing "competent legal opinions" in its declination letter.
B. IP Watch and Monitoring
Bautista stated that Lumicore "monitors the competitive landscape, including the patent landscape," but he declined to describe the scope, frequency, or specifics of that monitoring program. He did not identify any particular patents or patent applications that Lumicore tracked, nor did he describe any internal reports or alerts generated by the monitoring program.
When asked whether Lumicore uses a third-party patent monitoring or prior-art search service, Bautista stated: "I'd prefer not to get into those details." Rourke objected on relevance and work-product grounds. Bautista did not deny that such a service was used.
Note: Based on documents produced in discovery, OWS has identified Marlowe Asset Management Patent Analytics, Inc. (Atlanta, GA) as Lumicore's prior-art search firm. Documents from Marlowe Asset Management were produced in the Lumicore document collection, although their content may be subject to separate privilege or work-product claims. The fact that Lumicore retained a third-party patent monitoring service while its General Counsel professes not to have been aware of the OWS patents before January 2023 raises questions about the effectiveness of Lumicore's monitoring program or the completeness of Bautista's testimony on this point.
IX. LICENSING HISTORY AND THIRD-PARTY IP
A. Lumicore's Licensing-In History
Bautista confirmed that Lumicore holds inbound licenses from third parties for certain technology incorporated into its products. However, he refused to identify the licensors, the licensed technology, or the terms of the license agreements, citing confidentiality obligations under those agreements. Rourke also objected on relevance grounds, arguing that the terms of Lumicore's licenses with third parties are not relevant to the damages analysis in this case.
This information may be highly relevant to the Georgia-Pacific analysis for purposes of determining a reasonable royalty. In particular, evidence of Lumicore's established practice of licensing in third-party technology is relevant to Georgia-Pacific Factor 4 (the licensor's established policy and marketing program to maintain its patent monopoly by not licensing others to use the invention or by granting licenses under special conditions designed to preserve that monopoly) and Factor 12 (the portion of the profit or of the selling price that may be customary in the particular business or in comparable businesses to allow for the use of the invention or analogous inventions). OWS should consider pursuing this discovery through additional motion practice if Lumicore continues to withhold this information.
B. Lumicore's Licensing-Out Activity
Bautista stated that Lumicore does not currently have any active outbound patent licensing programs. He testified that Lumicore's patent portfolio is maintained for defensive purposes and to protect its competitive position, not for generating licensing revenue.
Bautista confirmed that Lumicore holds "approximately 75 to 80" U.S. patents as of the deposition date. He did not provide a precise count and stated he would need to consult internal records for an exact figure. He did not identify any of the patents by number or subject matter, and he was not asked to do so during the examination.
X. INVOLVEMENT OF SENIOR MANAGEMENT
A. CEO Tom Kessler
Bautista confirmed that he briefed Tom Kessler on the FairPoint licensing letters and on the April 20, 2023 in-person licensing meeting. He stated that Kessler was kept informed of developments in the FairPoint licensing matter throughout the period from January 2023 through July 2023 and beyond. Bautista confirmed that Kessler authorized the July 10, 2023 declination letter before it was sent.
However, Bautista refused to testify as to the substance of his briefings to Kessler, invoking attorney-client privilege. Rourke objected on the basis that Bautista's communications with Kessler regarding the FairPoint licensing demand were made for the purpose of seeking or providing legal advice and therefore fell within the scope of the privilege. This objection was interposed each time Ngo attempted to probe the content of the Bautista-Kessler communications.
B. CTO Dr. Sandra Michaud
Bautista confirmed that he communicated with Dr. Sandra Michaud regarding the FairPoint letters. He acknowledged that Michaud, as CTO, had relevant technical knowledge regarding the accused products and the asserted patents. However, he declined to state the content of his communications with Michaud, citing attorney-client privilege.
When asked whether Michaud participated in any assessment of the OWS patents or of the accused products' potential infringement, Bautista refused to answer. Rourke objected on privilege grounds, asserting that any assessment involving both legal and technical personnel conducted at the direction of counsel was protected.
C. CFO Janet Moreno
Bautista confirmed that Janet Moreno, Lumicore's Chief Financial Officer, was "made aware" of the licensing demand for purposes of financial contingency planning. He stated that Moreno's involvement was limited to the financial dimensions of the licensing inquiry and that she was consulted regarding the potential financial exposure associated with entering into a license or facing litigation.
Bautista refused to describe any financial analysis conducted in connection with the licensing demand, including whether Lumicore modeled the cost of taking a license versus the cost of litigation, or whether Lumicore evaluated the potential impact of an adverse judgment on its financial statements. Rourke objected on privilege and work-product grounds.
XI. DISCOVERY AND DOCUMENT PRESERVATION
A. Litigation Hold
Bautista confirmed that Lumicore implemented a litigation hold upon receiving the complaint in this action, which was served on or about May 1, 2024. He stated that the litigation hold was implemented promptly after service and that Lumicore took its preservation obligations seriously.
However, when asked whether a litigation hold or any form of document preservation directive was implemented earlier — for example, upon receipt of the first FairPoint letter in January 2023 or at any point during the licensing negotiations in 2023 — Bautista gave a carefully worded response: "I believe we implemented preservation measures at the appropriate time." He did not specify whether "the appropriate time" was January 2023, May 2024, or some other date. He did not deny that preservation measures should have been implemented earlier, nor did he confirm that they were.
Bautista could not confirm the exact date of the initial preservation notice or identify all custodians covered by the litigation hold. He stated that the litigation hold was coordinated with outside counsel and that he would need to consult his records for precise details.
Note: The timing of Lumicore's litigation hold may be relevant if OWS identifies gaps in Lumicore's document production that suggest spoliation. If preservation measures were not implemented until May 2024 — more than sixteen months after the first FairPoint letter and approximately ten months after the LumiEdge 1600G-LR launch — documents from the critical period of January 2023 through April 2024 may have been lost in the ordinary course of business.
B. Document Collection
Bautista stated that he coordinated document collection for the litigation with Lumicore's IT department and outside counsel at HVC. He confirmed that the document collection process involved the identification of custodians, the collection of electronic and hard-copy documents, and the processing and review of those documents for responsiveness and privilege.
Bautista confirmed that Lumicore has produced approximately 147,000 documents (approximately 980,000 pages) in this litigation as of the deposition date. He did not provide a breakdown of the documents by custodian or by subject matter.
When asked about source-code production, Bautista stated that production of source code for the accused products was "ongoing" and was subject to the Highly Confidential — Source Code tier of the Stipulated Protective Order entered by the Court. He did not provide a timeline for completion of the source-code production.
XII. EXHIBITS MARKED DURING DEPOSITION
The following exhibits were marked during the deposition of Raymond Bautista on December 3, 2024:
XIII. OBJECTIONS AND PRIVILEGE LOG
A. Summary of Privilege Assertions
Kate Rourke instructed the witness not to answer on approximately thirty-four (34) occasions throughout the deposition. These instructions not to answer were based on assertions of attorney-client privilege, attorney work-product doctrine, or both.
The privilege assertions covered the following subject-matter categories:
• Substance, authorship, timing, and scope of opinion-of-counsel letters referenced in the July 10, 2023 declination letter;
• Communications between Bautista and Hawthorne Vega & Cruz LLP regarding the FairPoint licensing demand, the asserted patents, and the accused products;
• Communications between Bautista and Lumicore's engineering and management teams regarding the legal implications of the OWS patents;
• Freedom-to-operate analyses and non-infringement analyses conducted by or at the direction of counsel;
• Substance of legal advice given in connection with the July 10, 2023 declination letter and the February 28, 2023 response letter;
• Details of Lumicore's internal "process" for evaluating the FairPoint licensing claims;
• Communications with the engineering team regarding design considerations for the accused products in light of the OWS patents.
Alan Ngo noted each privilege assertion on the record and reserved OWS's rights to seek Court intervention on each occasion. Ngo stated on the record that OWS does not accept the privilege assertions as valid, particularly with respect to the opinion-of-counsel letters, and that OWS will pursue appropriate relief.
B. Form Objections
Standard form objections — including objections based on the assertion that questions assumed facts not in evidence, called for legal conclusions, were compound, were vague or ambiguous, or lacked foundation — were made throughout the deposition. These form objections were routine and did not warrant extended discussion on the record. In most instances, Bautista answered the questions notwithstanding the form objections.
C. Relevance to Pending Motion to Compel
The privilege assertions made during the Bautista deposition directly implicate OWS's pending Motion to Compel Production of Opinion-of-Counsel Letters, filed on October 21, 2024 (D.E. 25/pending). Bautista's refusal to identify the authors, scope, timing, or substance of the "competent legal opinions" referenced in the July 10, 2023 declination letter — while Lumicore simultaneously relies on those opinions as a defense to willful infringement — exemplifies the "sword and shield" dynamic that courts in this and other districts have consistently held constitutes waiver of the attorney-client privilege.
Lumicore cannot place the existence and general nature of the opinions at issue as a shield against willfulness, while using the privilege as a sword to prevent OWS from examining whether those opinions actually support the non-infringement position that Lumicore claims they reflect. The Bautista deposition testimony provides concrete, on-the-record evidence of this dynamic and should be cited in any supplement or reply brief filed in connection with the Motion to Compel.
Cross-References:
• Declaration of Wendy Schultz in Support of Motion to Compel Production of Opinion-of-Counsel Letters (October 21, 2024);
• Meet-and-Confer Correspondence re: Opinion Letters (October 14, 2024, from Wendy Schultz to Samantha Briggs, HVC);
• OWS's Memorandum in Support of Motion to Compel (October 21, 2024).
XIV. KEY TESTIMONY EXCERPTS (PAGE/LINE REFERENCES)
Note: Exact page and line references will be added upon receipt and review of the final certified transcript from the court reporter. The preliminary references below are based on the real-time transcript feed viewed during the deposition and notes taken by the examining team. All references are approximate and subject to confirmation.
The following excerpts have been identified as key testimony for potential trial use, briefing, and cross-reference in expert reports:
1. Confirmation of receipt of January 15, 2023 FairPoint letter and forwarding to HVC within three business days. Bautista's testimony on this point establishes actual notice and the promptness of Lumicore's internal escalation to outside counsel. This excerpt will be used to establish the starting date for the willfulness analysis.
2. Statement that no counter-offer was made at the April 20, 2023 licensing meeting. Bautista's unequivocal statement — "We did not make a counter-proposal at that meeting" — demonstrates Lumicore's failure to engage in good-faith licensing negotiations and supports the Read factor analysis.
3. Admission that no formal design-around analysis was commissioned before the LumiEdge 1600G-LR launch. Bautista's statement — "Not a formal study, no" — is the single most damaging admission obtained during the deposition and is central to the willfulness case.
4. Statement that the July 10, 2023 declination letter was authorized by CEO Tom Kessler. This excerpt establishes that the decision to reject the licensing demand was a deliberate corporate decision made at the highest level of management.
5. Reference to "competent legal opinions" followed by refusal to disclose any details. The series of exchanges in which Bautista referenced the declination letter's invocation of "competent legal opinions" but then refused, on instruction of counsel, to provide any details about those opinions, will be used in the pending privilege dispute and at trial on the issue of willfulness.
6. Statement regarding pre-notice awareness of OWS patents: "could not speak to what the engineering team may or may not have been aware of." This carefully worded non-denial leaves open the inference that Lumicore's engineering team had knowledge of the OWS patents before the FairPoint letter, an inference that is supported by Dr. Michaud's deposition testimony and the anticipated testimony of Melissa Chen.
XV. AREAS FOR FOLLOW-UP
A. Supplemental Deposition Considerations
If the Court grants OWS's pending Motion to Compel and orders Lumicore to produce the opinion-of-counsel letters referenced in the July 10, 2023 declination letter, OWS should promptly seek a supplemental deposition of Bautista. At that supplemental deposition, Bautista should be re-examined on the substance, timing, and scope of the opinions, including the following topics:
• The identity of the firm or firms that rendered the opinions;
• The specific patents and products addressed in the opinions;
• Whether the opinions addressed validity as well as non-infringement;
• Whether the opinions were obtained before or after the first FairPoint letter, and whether they were updated after the second FairPoint letter added the '015 Patent;
• Whether Bautista or any other Lumicore executive relied on the opinions in making the decision to decline the license and to launch the LumiEdge 1600G-LR;
• Whether the opinions were shared with the engineering team and, if so, whether the engineering team was instructed to implement any design modifications in response to the opinions.
Additionally, if Lumicore's Rule 30(b)(6) designee is found to have been deficiently prepared on Topic 14 (non-infringing alternatives) during the corporate deposition, Bautista's testimony may provide additional grounds for inclusion in the draft discovery Dispute Letter to the Court. Bautista's inability to identify non-infringing alternatives, while deferring to the "technical team," may indicate that Lumicore has failed to adequately prepare its corporate designee on this topic.
B. Cross-Reference to Other Depositions
Bautista's deposition testimony should be cross-referenced against the following depositions and anticipated testimony:
Dr. Sandra Michaud Deposition (November 19, 2024). Michaud's admission that she reviewed OWS published application No. 2018/0123456 (corresponding to the '193 Patent) during the LumiLink 400G-ZR+ design phase should be compared with Bautista's claim that he was not personally aware of the OWS patents before January 2023 and that he does not "recall any such conversations" with Michaud about OWS patents. The inconsistency — or at minimum, the significant gap — between Michaud's admission and Bautista's testimony suggests that Lumicore's engineering team had awareness of OWS's patent portfolio that was not fully communicated to, or not fully acknowledged by, the General Counsel. This gap may be exploited at trial to argue either that Bautista was deliberately kept uninformed (creating an inference of willful blindness) or that he is being less than candid in his testimony.
Angela Reeves Deposition (December 10, 2024). Reeves's characterization of the April 20, 2023 licensing meeting — including her expected testimony that Lumicore showed "no interest in negotiating" — is consistent with Bautista's admission that no counter-offer was made at the meeting. The alignment of these two witnesses' testimony on this point strengthens the inference that Lumicore's participation in the meeting was performative rather than substantive.
Melissa Chen Subpoena (Issued January 22, 2025). Chen's anticipated testimony regarding the LumiLink 400G-ZR+ design team's review of OWS published patent applications in 2021–2022 will be critical to testing Bautista's professed lack of awareness of the OWS patents before the FairPoint letter. If Chen confirms that the design team accessed and reviewed OWS's published applications, and if further evidence shows that this information was shared with or accessible to the legal department, Bautista's testimony will be significantly undermined.
C. Implications for Willful Infringement Case
Bautista's testimony strengthens the willful infringement narrative on multiple fronts and should be integrated into the Willful Infringement Memorandum, the Timeline of Notice and Willfulness Evidence, and the Read Factor Analysis for Enhanced Damages. The key contributions of the Bautista deposition to the willfulness case are as follows:
1. Actual notice established. The FairPoint letters of January 15, 2023 and May 15, 2023, were both received and acknowledged by Bautista. He confirmed that he read the letters in full, forwarded them to outside counsel, and understood that they constituted formal licensing demands based on specific, identified patents. There is no dispute as to actual notice.
2. No meaningful response. Lumicore did not make a counter-offer at the April 20, 2023 licensing meeting and did not propose alternative licensing terms. Lumicore's sole substantive response was the February 28, 2023 letter disputing infringement (the substance of which is shielded by privilege) and the July 10, 2023 declination letter referencing undisclosed "competent legal opinions."
3. Post-notice launch of new infringing product. The LumiEdge 1600G-LR was launched in Q4 2023, after both the January 15, 2023 and May 15, 2023 FairPoint letters and after Lumicore's own July 10, 2023 declination letter. No formal design-around analysis was conducted before this launch. Lumicore introduced a new product into the market with full knowledge of OWS's patent assertions and without taking any documented steps to ensure that the new product did not infringe.
4. Concealment of legal basis. Lumicore's refusal to produce or to allow testimony about the "competent legal opinions" that purportedly support its non-infringement position — while simultaneously relying on those opinions as a defense — creates a powerful inference that the opinions may not fully support Lumicore's position or may contain qualifications, caveats, or adverse analyses that Lumicore does not wish to disclose.
D. Implications for Damages Case
Bautista's deposition testimony also has significant implications for OWS's damages case: