draft-discovery-dispute-letter.docx

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PRIVILEGED & CONFIDENTIAL — ATTORNEY WORK PRODUCT DRAFT — HELD IN RESERVE PENDING SUPPLEMENTAL DEPOSITION; CONTINGENCY USE ONLY Prepared by: Wendy Schultz, Lead Associate, Calderwood & Harkness LLP Reviewed by: Alan Ngo, Responsible Partner, Calderwood & Harkness LLP

CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071

1201 F Street NW, Suite 700 Washington, DC 20004

Alan Ngo, Partner Direct: (213) 555-4820

Email: ango@calderwoodharkness.com

Local Counsel: WHITMORE & CALLAHAN LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702

James "Jim" Callahan, Partner Direct: (903) 555-7140

Email: jcallahan@whitmorecallahan.com

[DATE — to be inserted when sent]

The Honorable James R. Gilstrap United States District Judge United States District Court for the Eastern District of Texas 211 West Ferguson Street Tyler, Texas 75702

Re: Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc., Case No. 2:24-cv-00319-JRG

Subject: Plaintiff Optiwave Semiconductor Corp.'s Letter Regarding discovery Dispute — Deficient Rule 30(b)(6) Designee Preparation on Deposition Topic 14 (Non-Infringing Alternatives)

Dear Judge Gilstrap:

Plaintiff Optiwave Semiconductor Corp. ("OWS"), by and through its counsel of record, Calderwood & Harkness LLP, and its local counsel, Whitmore & Callahan LLP, respectfully submits this letter to bring to the Court's attention a discovery dispute arising from Defendant Lumicore Technologies, Inc.'s ("Lumicore") failure to adequately prepare its Rule 30(b)(6) corporate designee to testify on Topic 14 of OWS's 30(b)(6) Deposition Notice. Topic 14 concerns non-infringing alternatives to the accused products — specifically, the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules — and encompasses the identification, technical description, commercial feasibility, customer acceptability, cost, and timeline to implement such alternatives, as well as any design-around analysis conducted by or on behalf of Lumicore. This topic lies at the heart of OWS's damages case, implicating both the lost-profits analysis under the Panduit framework and the reasonable-royalty analysis under the Georgia-Pacific factors.

OWS respectfully requests that the Court enter an order: (a) directing Lumicore to designate and produce a properly prepared 30(b)(6) witness to testify on Topic 14 within fourteen (14) days of the Court's order; (b) requiring that the supplemental deposition be conducted at Lumicore's expense, including all reasonable costs and attorney's fees incurred by OWS in connection with the supplemental deposition and this letter; and (c) if warranted, precluding Lumicore from presenting evidence of non-infringing alternatives at trial to the extent it failed to make its designee available with adequate preparation. OWS further requests an award of reasonable attorney's fees and costs incurred in connection with this letter and any resulting motion practice.

Pursuant to the Court's standing orders and Local Rule CV-7(h), undersigned counsel certifies that counsel for the parties have met and conferred in good faith but have been unable to resolve this dispute. The parties' respective positions are summarized below.

I. FACTUAL BACKGROUND

A. The 30(b)(6) Deposition Notice

On October 1, 2024, OWS served a Rule 30(b)(6) Deposition Notice on Lumicore pursuant to Federal Rule of Civil Procedure 30(b)(6), designating eighteen (18) topics for corporate representative testimony. A true and correct copy of the Deposition Notice is attached hereto as Exhibit A. The topics range from Lumicore's corporate structure and the development history of the accused products to Lumicore's licensing practices, revenue and cost data, and — critically — non-infringing alternatives to the accused products.

Topic 14 provides, in full:

"All non-infringing alternatives to the Accused Products, including but not limited to: (a) identification of each alternative; (b) technical description of how each alternative avoids infringement of each claim of each asserted patent; (c) the commercial availability, feasibility, and acceptability to customers of each alternative; (d) the cost and timeline to implement each alternative; and (e) any analysis, study, or evaluation performed by or on behalf of Lumicore regarding non-infringing alternatives."

Topic 14 is critical to OWS's damages case for two independent reasons. First, under the Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978), framework — which is widely applied in patent damages cases in this District and throughout the Federal Circuit — a patentee seeking lost profits must establish, among other things, the absence of acceptable non-infringing substitutes. See Panduit, 575 F.2d at 1156 (factor 2). Whether such substitutes exist is a factual question that depends on corporate-level knowledge within the accused infringer's organization. The availability or absence of non-infringing alternatives is therefore squarely within Lumicore's corporate knowledge, and Topic 14 was designed to elicit that knowledge.

Second, non-infringing alternatives are independently relevant to the reasonable-royalty analysis under Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). Georgia-Pacific factor 9 considers "[t]he utility and advantages of the patent property over the old modes or devices, if any, that had been used for working out similar results." Id. at 1120. The presence or absence of acceptable non-infringing alternatives bears directly on the incremental value attributable to the patented technology and, consequently, on the appropriate royalty rate in the hypothetical negotiation.

B. Lumicore's Designation and the Deposition

In response to the Deposition Notice, Lumicore designated Dr. Eric Dalmqvist, its Vice President of Product Development, as the corporate representative for Topic 14, among several other noticed topics. Dr. Dalmqvist has been employed by Lumicore since 2018 and, according to Lumicore's corporate disclosures, oversees the engineering teams responsible for the design and development of all LumiLink and LumiEdge product lines, including the three accused transceiver modules at issue in this case.

The 30(b)(6) deposition was conducted on [DATE — to be confirmed based on case schedule] at the offices of Whitmore & Callahan LLP in Tyler, Texas. The deposition was attended in person by OWS's counsel, Wendy Schultz of Calderwood & Harkness LLP, and Jim Callahan of Whitmore & Callahan LLP. Lumicore's counsel of record, Catherine "Kate" Rourke and Samantha Briggs of Hawthorne Vega & Cruz LLP, defended the deposition; Maria Garza of Trask Eddington LLP also appeared as local counsel for Lumicore. The deposition was videographically recorded and transcribed by a certified court reporter.

C. The Deficient Testimony

During the portion of the deposition addressing Topic 14, Dr. Dalmqvist was unable to provide substantive testimony on virtually any aspect of the noticed topic. His testimony was deficient in the following material respects:

Identification of Non-Infringing Alternatives. When asked whether Lumicore had identified any non-infringing alternative to any of the accused products — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, or the LumiEdge 1600G-LR — Dr. Dalmqvist testified that he was "not prepared to answer that question at this time" and that he had "no specific knowledge" of any such alternative. He could not identify a single non-infringing alternative design or product, either by reference to a specific design concept, an existing competitor product, or a theoretical design-around approach.

Design-Around Analysis. When asked whether Lumicore or any person or entity acting on Lumicore's behalf had ever conducted a formal design-around study or analysis with respect to OWS's asserted patents — U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), 9,678,562 (the "'562 Patent"), and 11,402,015 (the "'015 Patent") — Dr. Dalmqvist testified that he was "not aware of any such study" and had not been informed of the existence of any such study during his preparation for the deposition. This testimony is consistent with, and corroborated by, the separate deposition testimony of Raymond Bautista, Lumicore's General Counsel, taken on December 3, 2024. During that deposition, Mr. Bautista admitted that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR in Q4 2023. See Exhibit C (relevant excerpts from Bautista Deposition Transcript at 147:8–148:22).

Technical Feasibility and Customer Acceptability. Dr. Dalmqvist could not testify to the technical feasibility of any purported non-infringing alternative, including whether any alternative design could achieve the same signal integrity, power efficiency, and data throughput performance characteristics as the accused products. He likewise could not testify to whether any alternative design would be acceptable to Lumicore's customers, including major hyperscale data center operators that are among Lumicore's principal customers for the accused transceiver modules.

Cost and Timeline Estimates. Despite Lumicore's own prior representations — made in opposition to OWS's preliminary-injunction arguments — that a redesign of the accused products to avoid OWS's patents would require approximately 18 to 24 months, Dr. Dalmqvist could not testify to any cost or timeline estimates for implementing a redesign. This is a particularly striking deficiency, as Lumicore itself has placed the redesign timeline at issue by relying on it as a basis for arguing that an injunction would cause disproportionate harm.

Extent of the Deficiency. OWS's counsel asked approximately [number] questions directed to Topic 14 over approximately [duration] of deposition time. The vast majority of these questions were met with responses indicating a lack of preparation rather than a genuine lack of information within Lumicore's corporate knowledge. The pattern of the testimony — in which Dr. Dalmqvist repeatedly acknowledged that Lumicore would have information relevant to the questions but stated that he was not prepared to provide it — makes clear that the deficiency is one of preparation, not of substance. Relevant excerpts from the deposition transcript are attached hereto as Exhibit B.

D. The Meet-and-Confer Efforts

Following the deposition, OWS's counsel promptly contacted defense counsel to raise the deficiency and attempt to resolve the dispute informally. Specifically, on [DATE(s) — to be confirmed], Wendy Schultz of Calderwood & Harkness LLP contacted Samantha Briggs of Hawthorne Vega & Cruz LLP by telephone to discuss the inadequacy of Dr. Dalmqvist's preparation on Topic 14 and to request that Lumicore produce a properly prepared designee for a supplemental deposition limited to Topic 14. Ms. Schultz and Ms. Briggs thereafter exchanged written correspondence on [DATE(s) — to be confirmed], memorializing the parties' respective positions. In total, counsel engaged in at least [number] telephonic and written communications in an effort to resolve this dispute without Court intervention. Copies of the meet-and-confer correspondence are attached hereto as Exhibit D.

Lumicore's Position. Lumicore, through Ms. Briggs, contends that its designee was adequately prepared and that the questions posed by OWS's counsel during the deposition went beyond the scope of Topic 14 as noticed or sought information protected by the attorney-client privilege and/or the work-product doctrine to the extent any design-around analysis was prepared at the direction of or in consultation with counsel. Lumicore further contends that it has no obligation to identify specific non-infringing alternatives and that any such obligation, if it exists, would arise only at the expert stage.

OWS's Position. OWS disagrees with Lumicore's characterization on each point. The questions posed during the deposition fell squarely within the scope of Topic 14 as noticed, which expressly encompasses the identification of non-infringing alternatives, the technical description of how each alternative avoids infringement, commercial availability and feasibility, customer acceptability, cost and timeline, and any analysis or evaluation performed by or on behalf of Lumicore. OWS further notes that factual information about non-infringing alternatives — as distinct from legal advice regarding patent claim interpretation — is not privileged. A corporation's knowledge of whether alternative designs exist, what those designs entail, and whether they are technically and commercially feasible constitutes factual information that must be disclosed through a properly prepared 30(b)(6) witness. Finally, OWS notes that to the extent Lumicore intends to rely on non-infringing alternatives as part of its damages defense — whether to reduce or eliminate lost-profit damages under Panduit factor 2 or to argue for a lower reasonable royalty under Georgia-Pacific factor 9 — it cannot simultaneously withhold the foundational facts supporting such alternatives from corporate representative testimony.

The parties were unable to reach agreement, necessitating this letter to the Court.

II. LEGAL STANDARD

A. Rule 30(b)(6) Obligations

Under Federal Rule of Civil Procedure 30(b)(6), when a party serves a deposition notice describing with reasonable particularity the matters for examination, the noticed organization "must then designate one or more officers, directors, or managing agents, or designate other persons who consent to testify on its behalf" and must "set out the matters on which each person designated will testify." Fed. R. Civ. P. 30(b)(6). Critically, the persons so designated "must testify about information known or reasonably available to the organization." Id.

This obligation imposes an affirmative duty of preparation that goes beyond the personal knowledge of the individual designee. The designee speaks for the corporation, not for himself, and the corporation must prepare its designee to testify fully, completely, and unevasively as to all information known or reasonably available to it on the noticed topics. See QBE Ins. Corp. v. Jorda Enters., Inc., 277 F.R.D. 676, 688 (S.D. Fla. 2012) ("The duty to prepare a Rule 30(b)(6) witness goes beyond matters personally known to that designee or to matters in which that designee was personally involved."); Brazos River Auth. v. GE Ionics, Inc., 469 F.3d 416, 432 (5th Cir. 2006) (the corporate designee is expected to give answers representing the corporation's position); Sprint Commc'ns Co. v. Theglobe.com, Inc., 236 F.R.D. 524, 528 (D. Kan. 2006) ("The deponent must prepare the designee to the extent matters are reasonably available, whether from documents, past employees, or other sources.").

The duty to prepare includes, at a minimum, a duty to review documents, interview current and former employees with relevant knowledge, and consult with other persons within the organization who possess information bearing on the noticed topics. See Calixto v. Watson Bowman Acme Corp., No. 07-60077, 2009 WL 10667082, at 4 (S.D. Fla. Jan. 16, 2009); United States v. Taylor, 166 F.R.D. 356, 361 (M.D.N.C. 1996) ("The designee does not need to have personal knowledge of the facts, but the corporation must prepare the witness so that he or she can give complete, knowledgeable, and binding answers on behalf of the corporation."). Where a corporation fails to adequately prepare its designee, such failure is "tantamount to a failure to appear" and may be treated as a discovery violation subject to sanctions under Rule 37. See Resolution Tr. Corp. v. S. Union Co., 985 F.2d 196, 197 (5th Cir. 1993); Black Horse Lane Assoc., L.P. v. Dow Chem. Corp.*, 228 F.3d 275, 304 (3d Cir. 2000).

Courts in this District have consistently enforced these obligations. See, e.g., EDTEX LED Holdings, LLC v. Cree, Inc., No. 2:18-cv-00094-JRG, 2019 WL 3802525 (E.D. Tex. Aug. 13, 2019) (ordering supplemental 30(b)(6) deposition where designee was inadequately prepared on damages-related topics); Invensas Corp. v. Ashbury Group Elecs. Corp., No. 2:17-cv-00561-JRG, 2019 WL 1367030 (E.D. Tex. Mar. 26, 2019) (same). A corporation may not shield itself behind an unprepared witness to avoid producing unfavorable testimony on topics central to the litigation. See Great Plains Tr. Co. v. Meridian Financial, 313 F.3d 305, 314 (5th Cir. 2002); Starlight Int'l Inc. v. Herlihy, 186 F.R.D. 626, 639 (D. Kan. 1999) ("If [a party's] agents are unable to answer particular questions, the party has a duty to designate additional agents who can.").

B. Remedies for Deficient 30(b)(6) Testimony

The Court has broad discretion under Federal Rules of Civil Procedure 37(a) and 37(b) to remedy deficient discovery responses, including inadequate 30(b)(6) testimony. Available remedies are well established and include: (1) ordering a supplemental deposition with a properly prepared designee, at the producing party's expense; (2) drawing adverse inferences against the non-complying party based on the deficiency; (3) precluding the non-complying party from introducing evidence at trial on the topic for which its designee was inadequately prepared; and (4) awarding the moving party its reasonable attorney's fees and costs incurred in connection with the motion to compel. See Fed. R. Civ. P. 37(a)(5)(A) (mandatory fee shifting where motion to compel is granted); Fed. R. Civ. P. 37(b)(2)(A) (sanctions for failure to comply with discovery orders); Black Horse Lane, 228 F.3d at 304; Ierardi v. Lorillard, Inc., No. 90-7049, 1991 WL 158911, at *3 (E.D. Pa. Aug. 13, 1991) (precluding party from offering corporate testimony at trial on topics for which 30(b)(6) designee was unprepared).

Judge Gilstrap's standing orders emphasize the importance of meaningful compliance with discovery obligations and the expectation that counsel will prepare their witnesses in accordance with the requirements of the Federal Rules. See Standing Order Regarding discovery Disputes, Docket Procedures for Judge Gilstrap (rev. 2023) (requiring good-faith conference before raising discovery disputes and reserving the right to impose sanctions, including fee shifting, for non-compliance).

III. ARGUMENT

A. Lumicore's Designee Was Not Adequately Prepared on Topic 14

The record of the 30(b)(6) deposition demonstrates, beyond any reasonable dispute, that Dr. Dalmqvist was not adequately prepared to testify on behalf of Lumicore on Topic 14. His repeated inability to identify any non-infringing alternative, describe any design-around analysis, or testify to the technical feasibility, customer acceptability, cost, or timeline of any redesign constitutes a wholesale failure of Lumicore's obligation to prepare its corporate designee on a noticed topic of central importance.

This is not a case in which the designee testified to the limits of the corporation's knowledge and those limits happened to be narrow. To the contrary, the deposition transcript demonstrates that Dr. Dalmqvist was simply not prepared to address Topic 14 at all. He testified repeatedly that he was "not prepared to answer" or had "no knowledge," and his demeanor and responses made clear that he had not been briefed on the topic, had not reviewed relevant documents, and had not consulted with the individuals within Lumicore's organization who would possess the relevant information.

Non-infringing alternatives are squarely within Lumicore's corporate knowledge. Lumicore is a sophisticated semiconductor company with approximately 870 employees, including large engineering teams dedicated to the design, development, and manufacture of optical transceiver modules. Its Chief Technology Officer, Dr. Sandra Michaud, and its Vice President of Product Development, Dr. Dalmqvist himself, lead the engineering organization responsible for the accused products. It is inconceivable that a company of Lumicore's size and technical sophistication — which designs and manufactures the very products accused of infringement — would lack corporate knowledge about whether alternative designs could achieve the same function without infringing OWS's patents. The deficiency lies in Lumicore's failure to convey that knowledge to its designee, not in the absence of the knowledge itself.

Moreover, Lumicore has itself placed non-infringing alternatives squarely at issue in this case. In its Answer and Counterclaims (D.E. 12, filed June 17, 2024), Lumicore denies infringement of each asserted claim and asserts affirmative non-infringement defenses. In its invalidity contentions, served October 14, 2024, Lumicore identifies no fewer than twenty-three (23) prior-art references, many of which describe alternative approaches to the technological problems addressed by OWS's patents. And in the context of OWS's preliminary-injunction briefing, Lumicore has represented that a redesign of the accused products to avoid OWS's patents would require approximately 18 to 24 months — a representation that necessarily implies the existence of at least a conceptual non-infringing design that Lumicore's engineers have evaluated at some level of detail.

Yet when asked to testify on behalf of the corporation about these very topics — topics that Lumicore itself has injected into the case — Lumicore's corporate designee could not provide responsive answers. This is precisely the kind of deficient 30(b)(6) preparation that courts routinely find to be sanctionable. See Resolution Tr. Corp., 985 F.2d at 197; EDTEX LED Holdings, 2019 WL 3802525, at *2.

B. Lumicore's Privilege Objections Are Unfounded as to Factual Information

Lumicore's assertion that information about non-infringing alternatives is shielded from disclosure by the attorney-client privilege or the work-product doctrine is overbroad and legally untenable as applied to the factual information sought through Topic 14.

It is well established that the attorney-client privilege protects communications between a client and its attorney made for the purpose of seeking or providing legal advice. Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). The privilege does not extend to underlying facts merely because those facts were communicated to an attorney. Id. at 395 ("The protection of the privilege extends only to communications and not to facts."). Similarly, while the work-product doctrine protects documents and tangible things prepared in anticipation of litigation or for trial, it does not shield underlying facts from discovery. See Hickman v. Taylor, 329 U.S. 495, 511 (1947); Fed. R. Civ. P. 26(b)(3).

Applying these principles here, factual information about whether non-infringing alternatives exist, what those alternative designs entail, their technical specifications, their feasibility, their cost, and their timeline to implement is not privileged — regardless of whether that information was at some point communicated to or evaluated by Lumicore's attorneys. To the extent Lumicore commissioned a design-around study through counsel, the underlying facts — including the existence of alternative designs, their technical parameters, and their commercial feasibility — remain discoverable even if the legal analysis or opinion overlaying those facts may be privileged. See In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000) (addressing opinion-of-counsel privilege in the patent context); Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1344–45 (Fed. Cir. 2004).

Lumicore cannot use the privilege as both a sword and a shield. In its July 10, 2023 declination letter to FairPoint Licensing Group, LLC — a letter that was produced in discovery and is the subject of OWS's pending Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 40, filed October 21, 2024) — Lumicore stated that it had obtained "competent legal opinions" supporting its position that the accused products do not infringe OWS's patents and that alternative designs are available. See Exhibit E. Having invoked the existence of legal opinions and alternative designs as a basis for declining a license, Lumicore cannot now refuse to provide corporate testimony about the factual foundations of those very representations. See Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162 (9th Cir. 1992) (party cannot selectively disclose privileged communications while asserting privilege over related communications); Frontier Refining, Inc. v. Gorman-Rupp Co., 136 F.3d 695, 700 (10th Cir. 1998).

Furthermore, Lumicore's suggestion that it has no obligation to identify specific non-infringing alternatives until the expert stage is without merit. Rule 30(b)(6) requires corporate designee testimony on noticed topics, and OWS's Topic 14 plainly encompasses the identification and description of non-infringing alternatives. This obligation exists independently of, and in advance of, expert discovery. Indeed, the purpose of corporate designee testimony on non-infringing alternatives is to provide the factual foundation upon which both parties' experts will rely in formulating their damages opinions. Deferring this obligation to the expert stage would deprive OWS of the factual record needed to prepare its own expert reports and would effectively allow Lumicore to ambush OWS with non-infringing-alternative evidence at the expert stage without having been subjected to corporate-level discovery on the topic.

C. The Deficiency Is Prejudicial to OWS

Lumicore's failure to prepare its corporate designee on Topic 14 is not a harmless or technical deficiency. It causes concrete and substantial prejudice to OWS's ability to prepare its damages case.

Lost-Profits Analysis Under Panduit. Non-infringing alternatives are directly relevant to OWS's lost-profits damages analysis under the Panduit framework. Under Panduit factor 2, OWS must demonstrate the absence of acceptable non-infringing substitutes for the patented technology embodied in the accused products. See Panduit, 575 F.2d at 1156; Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1545 (Fed. Cir. 1995) (en banc). As the accused infringer, Lumicore bears the burden of production with respect to identifying any non-infringing substitutes that it contends are available. See Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1392 (Fed. Cir. 2003). If Lumicore cannot or will not identify such substitutes through its corporate designee — the mechanism specifically designed to elicit the corporation's knowledge — OWS is entitled to proceed on the assumption that no acceptable non-infringing substitutes exist, thereby satisfying Panduit factor 2.

Reasonable-Royalty Analysis Under Georgia-Pacific. The deficiency also impacts OWS's reasonable-royalty analysis. Under Georgia-Pacific factor 9, the availability of non-infringing alternatives directly affects the hypothetical negotiation between a willing licensor and a willing licensee. Georgia-Pacific, 318 F. Supp. at 1120. If no acceptable non-infringing alternatives exist, the patented technology possesses greater incremental value, and the reasonable royalty rate would be correspondingly higher. Lumicore's refusal to identify alternatives through its corporate designee supports OWS's proposed 8.5% royalty rate by suggesting that the patented technology is uniquely valuable and that Lumicore had no practical alternative to practicing OWS's inventions.

Expert Report Deadline. The prejudice is particularly acute in light of the case schedule. Dr. Lawrence Keating, OWS's damages expert at Meridian Economic Consulting Group, LLC, must finalize his expert report by the June 15, 2025 deadline set forth in the Court's Docket Control Order. Dr. Keating's analysis under both the Panduit and Georgia-Pacific frameworks requires him to address non-infringing alternatives — either to demonstrate their absence (under Panduit factor 2) or to evaluate their impact on the hypothetical negotiation (under Georgia-Pacific factor 9). Without Lumicore's corporate testimony on Topic 14, Dr. Keating lacks the factual record necessary to complete a thorough and defensible damages analysis. Moreover, if Lumicore later identifies non-infringing alternatives through its own experts — Dr. Rajesh Sundaram of Pacific Western University (technical expert) or Dr. Natasha Volkov of Pinnacle Analytics Partners LLP (damages expert) — without having first subjected those alternatives to corporate-level discovery and cross-examination, OWS will be materially prejudiced.

Fact discovery Deadline. Fact discovery in this case closes on May 1, 2025. Absent Court intervention, Lumicore's deficient corporate testimony will carry through to the close of fact discovery, infecting the expert phase and ultimately trial. The Court's timely intervention is necessary to prevent this result and to ensure that OWS has the benefit of the corporate-level discovery to which it is entitled under the Federal Rules.

IV. RELIEF REQUESTED

For the foregoing reasons, OWS respectfully requests that the Court enter an order providing the following relief:

1. Supplemental Deposition. Directing Lumicore to designate and produce a properly prepared Rule 30(b)(6) witness to testify on Topic 14 (non-infringing alternatives) within fourteen (14) days of the Court's order. The designee must be prepared to testify fully and completely, on behalf of the corporation, regarding all matters encompassed by Topic 14, including but not limited to the identification of non-infringing alternatives, the technical description of how each alternative avoids infringement, commercial availability and feasibility, customer acceptability, cost and timeline to implement, and any analysis, study, or evaluation performed by or on behalf of Lumicore regarding non-infringing alternatives.

2. Costs and Fees for Supplemental Deposition. Requiring that the supplemental deposition be conducted at Lumicore's expense, including all reasonable costs and attorney's fees incurred by OWS in connection with the supplemental deposition, including travel costs, court reporter fees, videographer fees, and attorney time for preparation and attendance.

3. Preclusion Sanction (In the Alternative). In the alternative, if Lumicore fails to produce an adequately prepared designee within the time ordered by the Court, precluding Lumicore from presenting any evidence of non-infringing alternatives at trial, whether through fact witnesses, its technical expert Dr. Rajesh Sundaram (Pacific Western University), or its damages expert Dr. Natasha Volkov (Pinnacle Analytics Partners LLP). This preclusion should extend to any argument or evidence that non-infringing alternatives were available as a basis for reducing OWS's lost-profit damages under Panduit factor 2 or for reducing the reasonable royalty rate under Georgia-Pacific factor 9.

4. Attorney's Fees and Costs. Awarding OWS its reasonable attorney's fees and costs incurred in connection with this letter, the meet-and-confer efforts, and any resulting motion practice, pursuant to Federal Rule of Civil Procedure 37(a)(5)(A).

V. CERTIFICATION OF CONFERENCE

Pursuant to Local Rule CV-7(h) and the Court's standing orders regarding discovery disputes, undersigned counsel hereby certifies that counsel for the parties have conferred in good faith in an effort to resolve this dispute without Court intervention but have been unable to do so.

Specifically, counsel for OWS (Wendy Schultz, Calderwood & Harkness LLP) and counsel for Lumicore (Samantha Briggs, Hawthorne Vega & Cruz LLP) conferred by telephone on [DATE(s) — to be confirmed] and exchanged written correspondence on [DATE(s) — to be confirmed]. The substance of these communications and the parties' respective positions are summarized in Section I.D above, and copies of the relevant meet-and-confer correspondence are attached as Exhibit D.

Despite these good-faith efforts, the parties remain at an impasse. OWS contends that Lumicore's designee was inadequately prepared on Topic 14 and that a supplemental deposition with a properly prepared designee is necessary and appropriate. Lumicore contends that its designee was adequately prepared, that OWS's questions exceeded the scope of Topic 14, and that certain information sought is protected by the attorney-client privilege and/or work-product doctrine.

VI. CLOSING

OWS respectfully requests that the Court address this dispute at its earliest convenience, whether by scheduling a telephone conference with the parties or by ruling on the papers. OWS is mindful of the Court's time and has endeavored to present this dispute concisely and with the specificity that the Court's standing orders require.

OWS is prepared to provide the Court with the complete 30(b)(6) deposition transcript, the complete deposition transcript of Raymond Bautista, the full Rule 30(b)(6) Deposition Notice, all meet-and-confer correspondence, and any other materials the Court may find helpful, either as formal exhibits to this letter or as supplemental filings if the Court directs further briefing.

OWS appreciates the Court's attention to this matter and its continued commitment to the efficient administration of discovery in this case.

Respectfully submitted,

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (CA Bar No. [XXXXX]; admitted pro hac vice) Responsible Partner 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4820

Email: ango@calderwoodharkness.com

Wendy Schultz (CA Bar No. [XXXXX]; admitted pro hac vice) Lead Associate 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4837

Email: wschultz@calderwoodharkness.com

WHITMORE & CALLAHAN LLP

By: ________

James "Jim" Callahan (TX Bar No. [XXXXX]) Partner 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-7140

Email: jcallahan@whitmorecallahan.com

Attorneys for Plaintiff Optiwave Semiconductor Corp.

CERTIFICATE OF SERVICE

I hereby certify that on [DATE — to be inserted when filed], a true and correct copy of the foregoing Plaintiff Optiwave Semiconductor Corp.'s Letter Regarding discovery Dispute — Deficient Rule 30(b)(6) Designee Preparation on Deposition Topic 14 (Non-Infringing Alternatives), together with all exhibits, was served on all counsel of record via the Court's CM/ECF electronic filing system and/or by electronic mail to the following:

Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701

Email: krourke@hvczlaw.com; dcho@hvczlaw.com; sbriggs@hvczlaw.com; riyer@hvczlaw.com

Maria Garza Trask Eddington LLP 425 East Front Street, Suite 300 Tyler, Texas 75701

Email: mgarza@traskeddington.com

Counsel for Defendant Lumicore Technologies, Inc.

________________________________________

Wendy Schultz

EXHIBITS

The following exhibits are to be compiled and attached when this letter is finalized for filing. Placeholder descriptions are provided below for reference.

Exhibit A: OWS's Rule 30(b)(6) Deposition Notice, served October 1, 2024 (complete copy, with Topic 14 highlighted among the 18 designated deposition topics).

Exhibit B: Relevant excerpts from the Rule 30(b)(6) Deposition Transcript of Dr. Eric Dalmqvist, Lumicore Technologies, Inc.'s corporate designee, reflecting deficient testimony on Topic 14 (non-infringing alternatives). [Specific transcript pages to be identified and excerpted upon finalization.]

Exhibit C: Relevant excerpts from the Deposition Transcript of Raymond Bautista, General Counsel of Lumicore Technologies, Inc., taken December 3, 2024, confirming that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR in Q4 2023. [Transcript pages 147:8–148:22 and surrounding context to be excerpted.]

Exhibit D: Meet-and-confer correspondence between Wendy Schultz (Calderwood & Harkness LLP) and Samantha Briggs (Hawthorne Vega & Cruz LLP) regarding the Topic 14 deficiency, including all telephonic conference summaries and written communications exchanged between the parties in connection with this dispute.

Exhibit E: Lumicore Technologies, Inc.'s July 10, 2023 declination letter to FairPoint Licensing Group, LLC, referencing "competent legal opinions" supporting Lumicore's non-infringement position and the availability of alternative designs. [Previously produced in discovery and submitted in connection with OWS's Motion to Compel Production of Opinion-of-Counsel Letters, D.E. 40, filed October 21, 2024.]

PRIVILEGED & CONFIDENTIAL — ATTORNEY WORK PRODUCT DRAFT — HELD IN RESERVE PENDING SUPPLEMENTAL DEPOSITION; CONTINGENCY USE ONLY Prepared by: Wendy Schultz, Lead Associate, Calderwood & Harkness LLP Reviewed by: Alan Ngo, Responsible Partner, Calderwood & Harkness LLP
CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071
1201 F Street NW, Suite 700 Washington, DC 20004
Alan Ngo, Partner Direct: (213) 555-4820
Email: ango@calderwoodharkness.com
Local Counsel: WHITMORE & CALLAHAN LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702
James "Jim" Callahan, Partner Direct: (903) 555-7140
Email: jcallahan@whitmorecallahan.com
[DATE — to be inserted when sent]
The Honorable James R. Gilstrap United States District Judge United States District Court for the Eastern District of Texas 211 West Ferguson Street Tyler, Texas 75702
Re: Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc., Case No. 2:24-cv-00319-JRG
Subject: Plaintiff Optiwave Semiconductor Corp.'s Letter Regarding discovery Dispute — Deficient Rule 30(b)(6) Designee Preparation on Deposition Topic 14 (Non-Infringing Alternatives)
Dear Judge Gilstrap:
Plaintiff Optiwave Semiconductor Corp. ("OWS"), by and through its counsel of record, Calderwood & Harkness LLP, and its local counsel, Whitmore & Callahan LLP, respectfully submits this letter to bring to the Court's attention a discovery dispute arising from Defendant Lumicore Technologies, Inc.'s ("Lumicore") failure to adequately prepare its Rule 30(b)(6) corporate designee to testify on Topic 14 of OWS's 30(b)(6) Deposition Notice. Topic 14 concerns non-infringing alternatives to the accused products — specifically, the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules — and encompasses the identification, technical description, commercial feasibility, customer acceptability, cost, and timeline to implement such alternatives, as well as any design-around analysis conducted by or on behalf of Lumicore. This topic lies at the heart of OWS's damages case, implicating both the lost-profits analysis under the Panduit framework and the reasonable-royalty analysis under the Georgia-Pacific factors.
OWS respectfully requests that the Court enter an order: (a) directing Lumicore to designate and produce a properly prepared 30(b)(6) witness to testify on Topic 14 within fourteen (14) days of the Court's order; (b) requiring that the supplemental deposition be conducted at Lumicore's expense, including all reasonable costs and attorney's fees incurred by OWS in connection with the supplemental deposition and this letter; and (c) if warranted, precluding Lumicore from presenting evidence of non-infringing alternatives at trial to the extent it failed to make its designee available with adequate preparation. OWS further requests an award of reasonable attorney's fees and costs incurred in connection with this letter and any resulting motion practice.
Pursuant to the Court's standing orders and Local Rule CV-7(h), undersigned counsel certifies that counsel for the parties have met and conferred in good faith but have been unable to resolve this dispute. The parties' respective positions are summarized below.
I. FACTUAL BACKGROUND
A. The 30(b)(6) Deposition Notice
On October 1, 2024, OWS served a Rule 30(b)(6) Deposition Notice on Lumicore pursuant to Federal Rule of Civil Procedure 30(b)(6), designating eighteen (18) topics for corporate representative testimony. A true and correct copy of the Deposition Notice is attached hereto as Exhibit A. The topics range from Lumicore's corporate structure and the development history of the accused products to Lumicore's licensing practices, revenue and cost data, and — critically — non-infringing alternatives to the accused products.
Topic 14 provides, in full:
"All non-infringing alternatives to the Accused Products, including but not limited to: (a) identification of each alternative; (b) technical description of how each alternative avoids infringement of each claim of each asserted patent; (c) the commercial availability, feasibility, and acceptability to customers of each alternative; (d) the cost and timeline to implement each alternative; and (e) any analysis, study, or evaluation performed by or on behalf of Lumicore regarding non-infringing alternatives."
Topic 14 is critical to OWS's damages case for two independent reasons. First, under the Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978), framework — which is widely applied in patent damages cases in this District and throughout the Federal Circuit — a patentee seeking lost profits must establish, among other things, the absence of acceptable non-infringing substitutes. See Panduit, 575 F.2d at 1156 (factor 2). Whether such substitutes exist is a factual question that depends on corporate-level knowledge within the accused infringer's organization. The availability or absence of non-infringing alternatives is therefore squarely within Lumicore's corporate knowledge, and Topic 14 was designed to elicit that knowledge.
Second, non-infringing alternatives are independently relevant to the reasonable-royalty analysis under Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). Georgia-Pacific factor 9 considers "[t]he utility and advantages of the patent property over the old modes or devices, if any, that had been used for working out similar results." Id. at 1120. The presence or absence of acceptable non-infringing alternatives bears directly on the incremental value attributable to the patented technology and, consequently, on the appropriate royalty rate in the hypothetical negotiation.
B. Lumicore's Designation and the Deposition
In response to the Deposition Notice, Lumicore designated Dr. Eric Dalmqvist, its Vice President of Product Development, as the corporate representative for Topic 14, among several other noticed topics. Dr. Dalmqvist has been employed by Lumicore since 2018 and, according to Lumicore's corporate disclosures, oversees the engineering teams responsible for the design and development of all LumiLink and LumiEdge product lines, including the three accused transceiver modules at issue in this case.
The 30(b)(6) deposition was conducted on [DATE — to be confirmed based on case schedule] at the offices of Whitmore & Callahan LLP in Tyler, Texas. The deposition was attended in person by OWS's counsel, Wendy Schultz of Calderwood & Harkness LLP, and Jim Callahan of Whitmore & Callahan LLP. Lumicore's counsel of record, Catherine "Kate" Rourke and Samantha Briggs of Hawthorne Vega & Cruz LLP, defended the deposition; Maria Garza of Trask Eddington LLP also appeared as local counsel for Lumicore. The deposition was videographically recorded and transcribed by a certified court reporter.
C. The Deficient Testimony
During the portion of the deposition addressing Topic 14, Dr. Dalmqvist was unable to provide substantive testimony on virtually any aspect of the noticed topic. His testimony was deficient in the following material respects:
Identification of Non-Infringing Alternatives. When asked whether Lumicore had identified any non-infringing alternative to any of the accused products — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, or the LumiEdge 1600G-LR — Dr. Dalmqvist testified that he was "not prepared to answer that question at this time" and that he had "no specific knowledge" of any such alternative. He could not identify a single non-infringing alternative design or product, either by reference to a specific design concept, an existing competitor product, or a theoretical design-around approach.
Design-Around Analysis. When asked whether Lumicore or any person or entity acting on Lumicore's behalf had ever conducted a formal design-around study or analysis with respect to OWS's asserted patents — U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), 9,678,562 (the "'562 Patent"), and 11,402,015 (the "'015 Patent") — Dr. Dalmqvist testified that he was "not aware of any such study" and had not been informed of the existence of any such study during his preparation for the deposition. This testimony is consistent with, and corroborated by, the separate deposition testimony of Raymond Bautista, Lumicore's General Counsel, taken on December 3, 2024. During that deposition, Mr. Bautista admitted that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR in Q4 2023. See Exhibit C (relevant excerpts from Bautista Deposition Transcript at 147:8–148:22).
Technical Feasibility and Customer Acceptability. Dr. Dalmqvist could not testify to the technical feasibility of any purported non-infringing alternative, including whether any alternative design could achieve the same signal integrity, power efficiency, and data throughput performance characteristics as the accused products. He likewise could not testify to whether any alternative design would be acceptable to Lumicore's customers, including major hyperscale data center operators that are among Lumicore's principal customers for the accused transceiver modules.
Cost and Timeline Estimates. Despite Lumicore's own prior representations — made in opposition to OWS's preliminary-injunction arguments — that a redesign of the accused products to avoid OWS's patents would require approximately 18 to 24 months, Dr. Dalmqvist could not testify to any cost or timeline estimates for implementing a redesign. This is a particularly striking deficiency, as Lumicore itself has placed the redesign timeline at issue by relying on it as a basis for arguing that an injunction would cause disproportionate harm.
Extent of the Deficiency. OWS's counsel asked approximately [number] questions directed to Topic 14 over approximately [duration] of deposition time. The vast majority of these questions were met with responses indicating a lack of preparation rather than a genuine lack of information within Lumicore's corporate knowledge. The pattern of the testimony — in which Dr. Dalmqvist repeatedly acknowledged that Lumicore would have information relevant to the questions but stated that he was not prepared to provide it — makes clear that the deficiency is one of preparation, not of substance. Relevant excerpts from the deposition transcript are attached hereto as Exhibit B.
D. The Meet-and-Confer Efforts
Following the deposition, OWS's counsel promptly contacted defense counsel to raise the deficiency and attempt to resolve the dispute informally. Specifically, on [DATE(s) — to be confirmed], Wendy Schultz of Calderwood & Harkness LLP contacted Samantha Briggs of Hawthorne Vega & Cruz LLP by telephone to discuss the inadequacy of Dr. Dalmqvist's preparation on Topic 14 and to request that Lumicore produce a properly prepared designee for a supplemental deposition limited to Topic 14. Ms. Schultz and Ms. Briggs thereafter exchanged written correspondence on [DATE(s) — to be confirmed], memorializing the parties' respective positions. In total, counsel engaged in at least [number] telephonic and written communications in an effort to resolve this dispute without Court intervention. Copies of the meet-and-confer correspondence are attached hereto as Exhibit D.
Lumicore's Position. Lumicore, through Ms. Briggs, contends that its designee was adequately prepared and that the questions posed by OWS's counsel during the deposition went beyond the scope of Topic 14 as noticed or sought information protected by the attorney-client privilege and/or the work-product doctrine to the extent any design-around analysis was prepared at the direction of or in consultation with counsel. Lumicore further contends that it has no obligation to identify specific non-infringing alternatives and that any such obligation, if it exists, would arise only at the expert stage.
OWS's Position. OWS disagrees with Lumicore's characterization on each point. The questions posed during the deposition fell squarely within the scope of Topic 14 as noticed, which expressly encompasses the identification of non-infringing alternatives, the technical description of how each alternative avoids infringement, commercial availability and feasibility, customer acceptability, cost and timeline, and any analysis or evaluation performed by or on behalf of Lumicore. OWS further notes that factual information about non-infringing alternatives — as distinct from legal advice regarding patent claim interpretation — is not privileged. A corporation's knowledge of whether alternative designs exist, what those designs entail, and whether they are technically and commercially feasible constitutes factual information that must be disclosed through a properly prepared 30(b)(6) witness. Finally, OWS notes that to the extent Lumicore intends to rely on non-infringing alternatives as part of its damages defense — whether to reduce or eliminate lost-profit damages under Panduit factor 2 or to argue for a lower reasonable royalty under Georgia-Pacific factor 9 — it cannot simultaneously withhold the foundational facts supporting such alternatives from corporate representative testimony.
The parties were unable to reach agreement, necessitating this letter to the Court.
II. LEGAL STANDARD
A. Rule 30(b)(6) Obligations
Under Federal Rule of Civil Procedure 30(b)(6), when a party serves a deposition notice describing with reasonable particularity the matters for examination, the noticed organization "must then designate one or more officers, directors, or managing agents, or designate other persons who consent to testify on its behalf" and must "set out the matters on which each person designated will testify." Fed. R. Civ. P. 30(b)(6). Critically, the persons so designated "must testify about information known or reasonably available to the organization." Id.
This obligation imposes an affirmative duty of preparation that goes beyond the personal knowledge of the individual designee. The designee speaks for the corporation, not for himself, and the corporation must prepare its designee to testify fully, completely, and unevasively as to all information known or reasonably available to it on the noticed topics. See QBE Ins. Corp. v. Jorda Enters., Inc., 277 F.R.D. 676, 688 (S.D. Fla. 2012) ("The duty to prepare a Rule 30(b)(6) witness goes beyond matters personally known to that designee or to matters in which that designee was personally involved."); Brazos River Auth. v. GE Ionics, Inc., 469 F.3d 416, 432 (5th Cir. 2006) (the corporate designee is expected to give answers representing the corporation's position); Sprint Commc'ns Co. v. Theglobe.com, Inc., 236 F.R.D. 524, 528 (D. Kan. 2006) ("The deponent must prepare the designee to the extent matters are reasonably available, whether from documents, past employees, or other sources.").
The duty to prepare includes, at a minimum, a duty to review documents, interview current and former employees with relevant knowledge, and consult with other persons within the organization who possess information bearing on the noticed topics. See Calixto v. Watson Bowman Acme Corp., No. 07-60077, 2009 WL 10667082, at 4 (S.D. Fla. Jan. 16, 2009); United States v. Taylor, 166 F.R.D. 356, 361 (M.D.N.C. 1996) ("The designee does not need to have personal knowledge of the facts, but the corporation must prepare the witness so that he or she can give complete, knowledgeable, and binding answers on behalf of the corporation."). Where a corporation fails to adequately prepare its designee, such failure is "tantamount to a failure to appear" and may be treated as a discovery violation subject to sanctions under Rule 37. See Resolution Tr. Corp. v. S. Union Co., 985 F.2d 196, 197 (5th Cir. 1993); Black Horse Lane Assoc., L.P. v. Dow Chem. Corp.*, 228 F.3d 275, 304 (3d Cir. 2000).
Courts in this District have consistently enforced these obligations. See, e.g., EDTEX LED Holdings, LLC v. Cree, Inc., No. 2:18-cv-00094-JRG, 2019 WL 3802525 (E.D. Tex. Aug. 13, 2019) (ordering supplemental 30(b)(6) deposition where designee was inadequately prepared on damages-related topics); Invensas Corp. v. Ashbury Group Elecs. Corp., No. 2:17-cv-00561-JRG, 2019 WL 1367030 (E.D. Tex. Mar. 26, 2019) (same). A corporation may not shield itself behind an unprepared witness to avoid producing unfavorable testimony on topics central to the litigation. See Great Plains Tr. Co. v. Meridian Financial, 313 F.3d 305, 314 (5th Cir. 2002); Starlight Int'l Inc. v. Herlihy, 186 F.R.D. 626, 639 (D. Kan. 1999) ("If [a party's] agents are unable to answer particular questions, the party has a duty to designate additional agents who can.").
B. Remedies for Deficient 30(b)(6) Testimony
The Court has broad discretion under Federal Rules of Civil Procedure 37(a) and 37(b) to remedy deficient discovery responses, including inadequate 30(b)(6) testimony. Available remedies are well established and include: (1) ordering a supplemental deposition with a properly prepared designee, at the producing party's expense; (2) drawing adverse inferences against the non-complying party based on the deficiency; (3) precluding the non-complying party from introducing evidence at trial on the topic for which its designee was inadequately prepared; and (4) awarding the moving party its reasonable attorney's fees and costs incurred in connection with the motion to compel. See Fed. R. Civ. P. 37(a)(5)(A) (mandatory fee shifting where motion to compel is granted); Fed. R. Civ. P. 37(b)(2)(A) (sanctions for failure to comply with discovery orders); Black Horse Lane, 228 F.3d at 304; Ierardi v. Lorillard, Inc., No. 90-7049, 1991 WL 158911, at *3 (E.D. Pa. Aug. 13, 1991) (precluding party from offering corporate testimony at trial on topics for which 30(b)(6) designee was unprepared).
Judge Gilstrap's standing orders emphasize the importance of meaningful compliance with discovery obligations and the expectation that counsel will prepare their witnesses in accordance with the requirements of the Federal Rules. See Standing Order Regarding discovery Disputes, Docket Procedures for Judge Gilstrap (rev. 2023) (requiring good-faith conference before raising discovery disputes and reserving the right to impose sanctions, including fee shifting, for non-compliance).
III. ARGUMENT
A. Lumicore's Designee Was Not Adequately Prepared on Topic 14
The record of the 30(b)(6) deposition demonstrates, beyond any reasonable dispute, that Dr. Dalmqvist was not adequately prepared to testify on behalf of Lumicore on Topic 14. His repeated inability to identify any non-infringing alternative, describe any design-around analysis, or testify to the technical feasibility, customer acceptability, cost, or timeline of any redesign constitutes a wholesale failure of Lumicore's obligation to prepare its corporate designee on a noticed topic of central importance.
This is not a case in which the designee testified to the limits of the corporation's knowledge and those limits happened to be narrow. To the contrary, the deposition transcript demonstrates that Dr. Dalmqvist was simply not prepared to address Topic 14 at all. He testified repeatedly that he was "not prepared to answer" or had "no knowledge," and his demeanor and responses made clear that he had not been briefed on the topic, had not reviewed relevant documents, and had not consulted with the individuals within Lumicore's organization who would possess the relevant information.
Non-infringing alternatives are squarely within Lumicore's corporate knowledge. Lumicore is a sophisticated semiconductor company with approximately 870 employees, including large engineering teams dedicated to the design, development, and manufacture of optical transceiver modules. Its Chief Technology Officer, Dr. Sandra Michaud, and its Vice President of Product Development, Dr. Dalmqvist himself, lead the engineering organization responsible for the accused products. It is inconceivable that a company of Lumicore's size and technical sophistication — which designs and manufactures the very products accused of infringement — would lack corporate knowledge about whether alternative designs could achieve the same function without infringing OWS's patents. The deficiency lies in Lumicore's failure to convey that knowledge to its designee, not in the absence of the knowledge itself.
Moreover, Lumicore has itself placed non-infringing alternatives squarely at issue in this case. In its Answer and Counterclaims (D.E. 12, filed June 17, 2024), Lumicore denies infringement of each asserted claim and asserts affirmative non-infringement defenses. In its invalidity contentions, served October 14, 2024, Lumicore identifies no fewer than twenty-three (23) prior-art references, many of which describe alternative approaches to the technological problems addressed by OWS's patents. And in the context of OWS's preliminary-injunction briefing, Lumicore has represented that a redesign of the accused products to avoid OWS's patents would require approximately 18 to 24 months — a representation that necessarily implies the existence of at least a conceptual non-infringing design that Lumicore's engineers have evaluated at some level of detail.
Yet when asked to testify on behalf of the corporation about these very topics — topics that Lumicore itself has injected into the case — Lumicore's corporate designee could not provide responsive answers. This is precisely the kind of deficient 30(b)(6) preparation that courts routinely find to be sanctionable. See Resolution Tr. Corp., 985 F.2d at 197; EDTEX LED Holdings, 2019 WL 3802525, at *2.
B. Lumicore's Privilege Objections Are Unfounded as to Factual Information
Lumicore's assertion that information about non-infringing alternatives is shielded from disclosure by the attorney-client privilege or the work-product doctrine is overbroad and legally untenable as applied to the factual information sought through Topic 14.
It is well established that the attorney-client privilege protects communications between a client and its attorney made for the purpose of seeking or providing legal advice. Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). The privilege does not extend to underlying facts merely because those facts were communicated to an attorney. Id. at 395 ("The protection of the privilege extends only to communications and not to facts."). Similarly, while the work-product doctrine protects documents and tangible things prepared in anticipation of litigation or for trial, it does not shield underlying facts from discovery. See Hickman v. Taylor, 329 U.S. 495, 511 (1947); Fed. R. Civ. P. 26(b)(3).
Applying these principles here, factual information about whether non-infringing alternatives exist, what those alternative designs entail, their technical specifications, their feasibility, their cost, and their timeline to implement is not privileged — regardless of whether that information was at some point communicated to or evaluated by Lumicore's attorneys. To the extent Lumicore commissioned a design-around study through counsel, the underlying facts — including the existence of alternative designs, their technical parameters, and their commercial feasibility — remain discoverable even if the legal analysis or opinion overlaying those facts may be privileged. See In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000) (addressing opinion-of-counsel privilege in the patent context); Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1344–45 (Fed. Cir. 2004).
Lumicore cannot use the privilege as both a sword and a shield. In its July 10, 2023 declination letter to FairPoint Licensing Group, LLC — a letter that was produced in discovery and is the subject of OWS's pending Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 40, filed October 21, 2024) — Lumicore stated that it had obtained "competent legal opinions" supporting its position that the accused products do not infringe OWS's patents and that alternative designs are available. See Exhibit E. Having invoked the existence of legal opinions and alternative designs as a basis for declining a license, Lumicore cannot now refuse to provide corporate testimony about the factual foundations of those very representations. See Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162 (9th Cir. 1992) (party cannot selectively disclose privileged communications while asserting privilege over related communications); Frontier Refining, Inc. v. Gorman-Rupp Co., 136 F.3d 695, 700 (10th Cir. 1998).
Furthermore, Lumicore's suggestion that it has no obligation to identify specific non-infringing alternatives until the expert stage is without merit. Rule 30(b)(6) requires corporate designee testimony on noticed topics, and OWS's Topic 14 plainly encompasses the identification and description of non-infringing alternatives. This obligation exists independently of, and in advance of, expert discovery. Indeed, the purpose of corporate designee testimony on non-infringing alternatives is to provide the factual foundation upon which both parties' experts will rely in formulating their damages opinions. Deferring this obligation to the expert stage would deprive OWS of the factual record needed to prepare its own expert reports and would effectively allow Lumicore to ambush OWS with non-infringing-alternative evidence at the expert stage without having been subjected to corporate-level discovery on the topic.
C. The Deficiency Is Prejudicial to OWS
Lumicore's failure to prepare its corporate designee on Topic 14 is not a harmless or technical deficiency. It causes concrete and substantial prejudice to OWS's ability to prepare its damages case.
Lost-Profits Analysis Under Panduit. Non-infringing alternatives are directly relevant to OWS's lost-profits damages analysis under the Panduit framework. Under Panduit factor 2, OWS must demonstrate the absence of acceptable non-infringing substitutes for the patented technology embodied in the accused products. See Panduit, 575 F.2d at 1156; Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1545 (Fed. Cir. 1995) (en banc). As the accused infringer, Lumicore bears the burden of production with respect to identifying any non-infringing substitutes that it contends are available. See Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1392 (Fed. Cir. 2003). If Lumicore cannot or will not identify such substitutes through its corporate designee — the mechanism specifically designed to elicit the corporation's knowledge — OWS is entitled to proceed on the assumption that no acceptable non-infringing substitutes exist, thereby satisfying Panduit factor 2.
Reasonable-Royalty Analysis Under Georgia-Pacific. The deficiency also impacts OWS's reasonable-royalty analysis. Under Georgia-Pacific factor 9, the availability of non-infringing alternatives directly affects the hypothetical negotiation between a willing licensor and a willing licensee. Georgia-Pacific, 318 F. Supp. at 1120. If no acceptable non-infringing alternatives exist, the patented technology possesses greater incremental value, and the reasonable royalty rate would be correspondingly higher. Lumicore's refusal to identify alternatives through its corporate designee supports OWS's proposed 8.5% royalty rate by suggesting that the patented technology is uniquely valuable and that Lumicore had no practical alternative to practicing OWS's inventions.
Expert Report Deadline. The prejudice is particularly acute in light of the case schedule. Dr. Lawrence Keating, OWS's damages expert at Meridian Economic Consulting Group, LLC, must finalize his expert report by the June 15, 2025 deadline set forth in the Court's Docket Control Order. Dr. Keating's analysis under both the Panduit and Georgia-Pacific frameworks requires him to address non-infringing alternatives — either to demonstrate their absence (under Panduit factor 2) or to evaluate their impact on the hypothetical negotiation (under Georgia-Pacific factor 9). Without Lumicore's corporate testimony on Topic 14, Dr. Keating lacks the factual record necessary to complete a thorough and defensible damages analysis. Moreover, if Lumicore later identifies non-infringing alternatives through its own experts — Dr. Rajesh Sundaram of Pacific Western University (technical expert) or Dr. Natasha Volkov of Pinnacle Analytics Partners LLP (damages expert) — without having first subjected those alternatives to corporate-level discovery and cross-examination, OWS will be materially prejudiced.
Fact discovery Deadline. Fact discovery in this case closes on May 1, 2025. Absent Court intervention, Lumicore's deficient corporate testimony will carry through to the close of fact discovery, infecting the expert phase and ultimately trial. The Court's timely intervention is necessary to prevent this result and to ensure that OWS has the benefit of the corporate-level discovery to which it is entitled under the Federal Rules.
IV. RELIEF REQUESTED
For the foregoing reasons, OWS respectfully requests that the Court enter an order providing the following relief:
1.  Supplemental Deposition. Directing Lumicore to designate and produce a properly prepared Rule 30(b)(6) witness to testify on Topic 14 (non-infringing alternatives) within fourteen (14) days of the Court's order. The designee must be prepared to testify fully and completely, on behalf of the corporation, regarding all matters encompassed by Topic 14, including but not limited to the identification of non-infringing alternatives, the technical description of how each alternative avoids infringement, commercial availability and feasibility, customer acceptability, cost and timeline to implement, and any analysis, study, or evaluation performed by or on behalf of Lumicore regarding non-infringing alternatives.
2.  Costs and Fees for Supplemental Deposition. Requiring that the supplemental deposition be conducted at Lumicore's expense, including all reasonable costs and attorney's fees incurred by OWS in connection with the supplemental deposition, including travel costs, court reporter fees, videographer fees, and attorney time for preparation and attendance.
3.  Preclusion Sanction (In the Alternative). In the alternative, if Lumicore fails to produce an adequately prepared designee within the time ordered by the Court, precluding Lumicore from presenting any evidence of non-infringing alternatives at trial, whether through fact witnesses, its technical expert Dr. Rajesh Sundaram (Pacific Western University), or its damages expert Dr. Natasha Volkov (Pinnacle Analytics Partners LLP). This preclusion should extend to any argument or evidence that non-infringing alternatives were available as a basis for reducing OWS's lost-profit damages under Panduit factor 2 or for reducing the reasonable royalty rate under Georgia-Pacific factor 9.
4.  Attorney's Fees and Costs. Awarding OWS its reasonable attorney's fees and costs incurred in connection with this letter, the meet-and-confer efforts, and any resulting motion practice, pursuant to Federal Rule of Civil Procedure 37(a)(5)(A).
V. CERTIFICATION OF CONFERENCE
Pursuant to Local Rule CV-7(h) and the Court's standing orders regarding discovery disputes, undersigned counsel hereby certifies that counsel for the parties have conferred in good faith in an effort to resolve this dispute without Court intervention but have been unable to do so.
Specifically, counsel for OWS (Wendy Schultz, Calderwood & Harkness LLP) and counsel for Lumicore (Samantha Briggs, Hawthorne Vega & Cruz LLP) conferred by telephone on [DATE(s) — to be confirmed] and exchanged written correspondence on [DATE(s) — to be confirmed]. The substance of these communications and the parties' respective positions are summarized in Section I.D above, and copies of the relevant meet-and-confer correspondence are attached as Exhibit D.
Despite these good-faith efforts, the parties remain at an impasse. OWS contends that Lumicore's designee was inadequately prepared on Topic 14 and that a supplemental deposition with a properly prepared designee is necessary and appropriate. Lumicore contends that its designee was adequately prepared, that OWS's questions exceeded the scope of Topic 14, and that certain information sought is protected by the attorney-client privilege and/or work-product doctrine.
VI. CLOSING
OWS respectfully requests that the Court address this dispute at its earliest convenience, whether by scheduling a telephone conference with the parties or by ruling on the papers. OWS is mindful of the Court's time and has endeavored to present this dispute concisely and with the specificity that the Court's standing orders require.
OWS is prepared to provide the Court with the complete 30(b)(6) deposition transcript, the complete deposition transcript of Raymond Bautista, the full Rule 30(b)(6) Deposition Notice, all meet-and-confer correspondence, and any other materials the Court may find helpful, either as formal exhibits to this letter or as supplemental filings if the Court directs further briefing.
OWS appreciates the Court's attention to this matter and its continued commitment to the efficient administration of discovery in this case.
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (CA Bar No. [XXXXX]; admitted pro hac vice) Responsible Partner 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4820
Email: ango@calderwoodharkness.com
Wendy Schultz (CA Bar No. [XXXXX]; admitted pro hac vice) Lead Associate 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4837
Email: wschultz@calderwoodharkness.com
WHITMORE & CALLAHAN LLP
By: ________
James "Jim" Callahan (TX Bar No. [XXXXX]) Partner 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-7140
Email: jcallahan@whitmorecallahan.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
CERTIFICATE OF SERVICE
I hereby certify that on [DATE — to be inserted when filed], a true and correct copy of the foregoing Plaintiff Optiwave Semiconductor Corp.'s Letter Regarding discovery Dispute — Deficient Rule 30(b)(6) Designee Preparation on Deposition Topic 14 (Non-Infringing Alternatives), together with all exhibits, was served on all counsel of record via the Court's CM/ECF electronic filing system and/or by electronic mail to the following:
Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701
Email: krourke@hvczlaw.com; dcho@hvczlaw.com; sbriggs@hvczlaw.com; riyer@hvczlaw.com
Maria Garza Trask Eddington LLP 425 East Front Street, Suite 300 Tyler, Texas 75701
Email: mgarza@traskeddington.com
Counsel for Defendant Lumicore Technologies, Inc.
________________________________________
Wendy Schultz
EXHIBITS
The following exhibits are to be compiled and attached when this letter is finalized for filing. Placeholder descriptions are provided below for reference.
Exhibit A: OWS's Rule 30(b)(6) Deposition Notice, served October 1, 2024 (complete copy, with Topic 14 highlighted among the 18 designated deposition topics).
Exhibit B: Relevant excerpts from the Rule 30(b)(6) Deposition Transcript of Dr. Eric Dalmqvist, Lumicore Technologies, Inc.'s corporate designee, reflecting deficient testimony on Topic 14 (non-infringing alternatives). [Specific transcript pages to be identified and excerpted upon finalization.]
Exhibit C: Relevant excerpts from the Deposition Transcript of Raymond Bautista, General Counsel of Lumicore Technologies, Inc., taken December 3, 2024, confirming that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR in Q4 2023. [Transcript pages 147:8–148:22 and surrounding context to be excerpted.]
Exhibit D: Meet-and-confer correspondence between Wendy Schultz (Calderwood & Harkness LLP) and Samantha Briggs (Hawthorne Vega & Cruz LLP) regarding the Topic 14 deficiency, including all telephonic conference summaries and written communications exchanged between the parties in connection with this dispute.
Exhibit E: Lumicore Technologies, Inc.'s July 10, 2023 declination letter to FairPoint Licensing Group, LLC, referencing "competent legal opinions" supporting Lumicore's non-infringement position and the availability of alternative designs. [Previously produced in discovery and submitted in connection with OWS's Motion to Compel Production of Opinion-of-Counsel Letters, D.E. 40, filed October 21, 2024.]