1014-00004 · Hawthorne Vega & Cruz LLP · Discovery

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S FIRST SET OF INTERROGATORIES TO DEFENDANT LUMICORE TECHNOLOGIES, INC.

Date Served: August 26, 2024

Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure and the Local Rules of the United States District Court for the Eastern District of Texas, Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its undersigned counsel, Calderwood & Harkness LLP and local counsel Whitmore & Callahan LLP, hereby propounds its First Set of Interrogatories (Nos. 1 through 25) to Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant"). Responses are due within thirty (30) days of service, on or before September 25, 2024.

These Interrogatories are directed to counsel for Defendant: Hawthorne Vega & Cruz LLP, 600 Congress Avenue, Suite 2400, Austin, TX 78701, and local counsel Trask Eddington LLP, 425 East Front Street, Suite 300, Tyler, TX 75701.

Defendant is requested to answer each Interrogatory separately and fully, in writing and under oath, in accordance with the Instructions and Definitions set forth below.

INSTRUCTIONS

INSTRUCTION NO. 1 — Governing Rules. These Interrogatories are propounded pursuant to Rule 33 of the Federal Rules of Civil Procedure and the Local Rules of the United States District Court for the Eastern District of Texas. Responses must be made under oath and signed by the responding party or its duly authorized representative, as required by Federal Rule of Civil Procedure 33(b)(1) and 33(b)(3). Each Interrogatory shall be answered separately and fully in writing, unless it is objected to, in which event the grounds for the objection shall be stated with specificity as required by Rule 33(b)(4). An objection to part of an Interrogatory does not relieve Defendant of the obligation to answer the remainder of the Interrogatory to the extent it is not objectionable.

INSTRUCTION NO. 2 — Time for Response. Responses to these Interrogatories are due within thirty (30) days of service, pursuant to Federal Rule of Civil Procedure 33(b)(2). If Defendant objects to any Interrogatory, in whole or in part, the specific grounds for each objection must be stated, and the Interrogatory must be answered to the extent it is not objectionable. A general or blanket objection, without more, is insufficient and will be treated as a failure to respond.

INSTRUCTION NO. 3 — Continuing Obligation. These Interrogatories impose a continuing obligation upon Defendant to supplement its responses in accordance with Federal Rule of Civil Procedure 26(e)(1). Defendant must timely supplement or correct any response if information subsequently learned or discovered renders a prior response incomplete or incorrect in any material respect. Supplementation must be made in a timely manner and in no event later than the time required by Rule 26(e) or any scheduling order entered in this action.

INSTRUCTION NO. 4 — Identification of Persons. Whenever an Interrogatory asks Defendant to "identify" a person, Defendant shall state: (a) the person's full legal name; (b) the person's present or last known home and business address; (c) the person's present or last known telephone number(s); (d) the person's present employer and job title; and (e) the person's relationship, if any, to any party in this action, including the dates and nature of any employment or consulting relationship with Lumicore or OWS.

INSTRUCTION NO. 5 — Identification of Documents. Whenever an Interrogatory asks Defendant to "identify" a document, Defendant shall provide: (a) the type or nature of the document (e.g., letter, memorandum, email, report, spreadsheet, presentation, instant message, text message); (b) the date of the document; (c) the author(s) or sender(s) of the document; (d) the recipient(s), addressee(s), or person(s) copied on the document; (e) the subject matter of the document; (f) the Bates number range, if the document has been produced in this litigation; and (g) the present location and custodian of the document.

INSTRUCTION NO. 6 — Identification of Communications. Whenever an Interrogatory asks Defendant to "describe" or "identify" a communication, Defendant shall state: (a) the date of the communication; (b) the form of the communication (i.e., oral, written, or electronic, and the specific medium used); (c) the identity of all participants in the communication, including all persons present during an oral communication and all persons to whom a written or electronic communication was addressed or copied; (d) the substance of the communication, described in sufficient detail to convey its content; and (e) any documents generated, exchanged, or referenced as a result of or in connection with the communication.

INSTRUCTION NO. 7 — Time Period. Unless otherwise specifically stated in a particular Interrogatory, these Interrogatories cover the period from January 1, 2014 to the present. To the extent any Interrogatory specifies a different time period, the time period stated in that Interrogatory shall govern.

INSTRUCTION NO. 8 — Documents in Lieu of Answers. Pursuant to Federal Rule of Civil Procedure 33(d), if the answer to any Interrogatory may be derived or ascertained from the business records of Defendant, including electronically stored information, and the burden of deriving or ascertaining the answer is substantially the same for either party, Defendant may answer by specifying the records from which the answer may be derived or ascertained and by making those records available for inspection and copying. In such event, Defendant must identify the records from which the answer may be obtained with sufficient specificity to permit Plaintiff to locate and identify the information as readily as if the Interrogatory had been directly answered. A general reference to Defendant's files, records, or database, without more, is insufficient.

INSTRUCTION NO. 9 — Privilege Claims. If Defendant withholds any information responsive to any Interrogatory on the basis of any claim of privilege, including the attorney-client privilege, work-product protection, or any other privilege or protection, Defendant must: (a) identify the specific Interrogatory or portion thereof as to which the privilege is claimed; (b) identify the privilege or protection being asserted; (c) provide sufficient factual information to enable Plaintiff and the Court to assess the validity of the claim, including the date of the communication or document, the author or speaker, the recipient(s) or listener(s), the general subject matter, and the identity of all persons to whom the information has been disclosed; and (d) comply with the requirements of the Stipulated Protective Order entered in this action (D.E. 30, filed July 8, 2024). Nothing in this Instruction shall be construed as a concession by Plaintiff that any claim of privilege is validly asserted.

INSTRUCTION NO. 10 — Scope of "You," "Your," "Defendant," and "Lumicore." As used in these Interrogatories, the terms "You," "Your," "Defendant," and "Lumicore" refer to Defendant Lumicore Technologies, Inc., and encompass its present and former officers, directors, employees, agents, consultants, independent contractors, subsidiaries, affiliates, divisions, predecessors-in-interest, successors-in-interest, and any other persons or entities acting or purporting to act on its behalf or under its direction or control.

DEFINITIONS

As used in these Interrogatories, the following terms shall have the meanings set forth below:

DEFINITION NO. 1 — "Accused Products." "Accused Products" means the LumiLink 400G-ZR+ transceiver module, the LumiLink 800G-DR8 transceiver module, and the LumiEdge 1600G-LR transceiver module, including all versions, variants, revisions, prototypes, engineering samples, and derivative products thereof, whether sold, offered for sale, imported into, made in, or used in the United States.

DEFINITION NO. 2 — "Asserted Patents" or "Patents-in-Suit." "Asserted Patents" or "Patents-in-Suit" means the following United States patents, which are asserted in this action: U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Silicon Photonic Integrated Circuit with Multi-Channel Waveguide Multiplexing," issued March 19, 2019; U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "Thermal Management Architecture for High-Density Photonic Transceiver Modules," issued January 12, 2021; U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Grating Coupler with Apodized Diffractive Elements for Fiber-Chip Optical Interface," issued June 13, 2017; and U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Coherent Optical Signal Processing Engine with Integrated Digital Signal Processor," issued August 2, 2022.

DEFINITION NO. 3 — "Person." "Person" means any natural person, corporation, partnership, joint venture, limited liability company, association, trust, unincorporated organization, governmental entity, or any other legal entity, and includes the plural as well as the singular.

DEFINITION NO. 4 — "Document" or "Documents." "Document" or "Documents" shall have the broadest meaning ascribed to that term under Federal Rule of Civil Procedure 34(a), and as further described and defined in the parties' ESI Protocol Agreement dated August 15, 2024 (D.E. 28), and includes all electronically stored information ("ESI"), writings, drawings, graphs, charts, photographs, sound recordings, images, and other data or data compilations stored in any medium from which information can be obtained, either directly or after translation by Defendant into a reasonably usable form.

DEFINITION NO. 5 — "Communication." "Communication" means any exchange of information, whether oral, written, or electronic, between two or more persons, and includes without limitation emails, text messages, instant messages (including messages sent via Meridian Solutions, Northgate Data Systems, or similar platforms), letters, memoranda, facsimiles, telephone calls, video conferences, in-person conversations, and any other mode of conveying information.

DEFINITION NO. 6 — "Relate to" or "Relating to." "Relate to," "Relating to," "Related to," or "Relates to" means concerning, referring to, describing, evidencing, constituting, reflecting, pertaining to, mentioning, embodying, discussing, analyzing, supporting, contradicting, or having any connection with, in whole or in part, directly or indirectly.

DEFINITION NO. 7 — "OWS" or "Plaintiff." "OWS" or "Plaintiff" means Optiwave Semiconductor Corp., and encompasses its present and former officers, directors, employees, agents, subsidiaries, affiliates, predecessors-in-interest (including Solara Optics, Inc., from which OWS acquired certain patent assets in 2016), successors-in-interest, and any other persons or entities acting or purporting to act on its behalf or under its direction or control.

DEFINITION NO. 8 — "FairPoint Letters." "FairPoint Letters" means: (a) the letter dated January 15, 2023, sent by FairPoint Licensing Group, LLC to Lumicore's General Counsel, Raymond Bautista, Esq., identifying the '847 Patent, the '193 Patent, and the '562 Patent and inviting Lumicore to discuss a license; and (b) the letter dated May 15, 2023, sent by FairPoint Licensing Group, LLC to Lumicore, adding the '015 Patent to the discussion and expanding the scope of accused products to include the LumiLink 800G-DR8 transceiver module. Each of the FairPoint Letters relates to one or more of the Asserted Patents.

DEFINITION NO. 9 — "Non-Infringing Alternatives." "Non-Infringing Alternatives" means any product, design, method, technology, component, architecture, or technical approach that Lumicore contends could serve as a substitute for any feature, element, or aspect of the Accused Products that OWS contends infringes any claim of any Asserted Patent.

DEFINITION NO. 10 — "Prior Art." "Prior Art" means any patent, published patent application, printed publication, evidence of public use, evidence of prior sale or offer for sale, evidence of prior public knowledge, or any other prior-art reference of any kind that Lumicore has relied upon, considered, identified, or intends to rely upon in connection with the validity, invalidity, or enforceability of any claim of any Asserted Patent, whether in the prosecution history, in inter partes review proceedings, or in this litigation.

DEFINITION NO. 11 — "Design-Around." "Design-Around" means any effort, analysis, study, evaluation, experiment, modification, redesign, or re-engineering undertaken, considered, proposed, or contemplated by Lumicore to redesign the Accused Products or any feature, component, or element thereof to avoid infringement of any claim of any Asserted Patent.

INTERROGATORIES

INTERROGATORY NO. 1:

Identify each Person who was involved in the conception, design, development, testing, qualification, or engineering of the LumiLink 400G-ZR+ transceiver module, including but not limited to engineers, scientists, technicians, project managers, program directors, and any outside consultants, contractors, or third-party design firms retained by Lumicore in connection therewith.

For each Person so identified, state: (a) the Person's full name, current address, current employer, and current job title; (b) the Person's role and specific responsibilities with respect to the LumiLink 400G-ZR+ transceiver module; (c) the time period during which the Person was involved in the conception, design, development, testing, or engineering of the LumiLink 400G-ZR+; (d) whether the Person is currently employed by Lumicore, and if not, the date the Person's employment or engagement with Lumicore ended and the Person's current employer; and (e) any reporting relationships relevant to the Person's work on the LumiLink 400G-ZR+, including any supervision by or direction from Lumicore's Chief Technology Officer, Dr. Sandra Michaud, Vice President of Product Development, Dr. Eric Dalmqvist, or any other member of Lumicore's senior management or technical leadership.

This Interrogatory encompasses, but is not limited to, all members of the LumiLink 400G-ZR+ design team, including but not limited to Melissa Chen (believed to be now employed by Veridian Photonics, Inc.) and all persons who reported to or received direction from Dr. Sandra Michaud or Dr. Eric Dalmqvist regarding the LumiLink 400G-ZR+ program.

INTERROGATORY NO. 2:

Identify each Person who was involved in the conception, design, development, testing, qualification, or engineering of the LumiLink 800G-DR8 transceiver module, which Plaintiff understands was launched commercially in or about the first quarter of 2023, including but not limited to engineers, scientists, technicians, project managers, program directors, and any outside consultants, contractors, or third-party design firms retained by Lumicore in connection therewith.

For each Person so identified, state: (a) the Person's full name, current address, current employer, and current job title; (b) the Person's role and specific responsibilities with respect to the LumiLink 800G-DR8 transceiver module; (c) the time period during which the Person was involved in the conception, design, development, testing, or engineering of the LumiLink 800G-DR8; (d) whether the Person is currently employed by Lumicore, and if not, the date the Person's employment or engagement with Lumicore ended and the Person's current employer; and (e) any reporting relationships relevant to the Person's work on the LumiLink 800G-DR8, including any supervision by or direction from Lumicore's senior management or technical leadership.

INTERROGATORY NO. 3:

Identify each Person who was involved in the conception, design, development, testing, qualification, or engineering of the LumiEdge 1600G-LR transceiver module, which Plaintiff understands was launched commercially in or about the fourth quarter of 2023, including but not limited to engineers, scientists, technicians, project managers, program directors, and any outside consultants, contractors, or third-party design firms retained by Lumicore in connection therewith.

For each Person so identified, state: (a) the Person's full name, current address, current employer, and current job title; (b) the Person's role and specific responsibilities with respect to the LumiEdge 1600G-LR transceiver module; (c) the time period during which the Person was involved in the conception, design, development, testing, or engineering of the LumiEdge 1600G-LR; (d) whether the Person is currently employed by Lumicore, and if not, the date the Person's employment or engagement with Lumicore ended and the Person's current employer; and (e) any reporting relationships relevant to the Person's work on the LumiEdge 1600G-LR, including any supervision by or direction from Lumicore's senior management or technical leadership.

INTERROGATORY NO. 4:

Identify each Person at Lumicore who, at any time from January 1, 2014 to the present, has had knowledge of, reviewed, analyzed, evaluated, discussed, or been made aware of any of the Asserted Patents — specifically, U.S. Patent No. 10,234,847, U.S. Patent No. 10,891,193, U.S. Patent No. 9,678,562, and U.S. Patent No. 11,402,015 — or any published patent application related thereto, including but not limited to Published Application No. US 2018/0123456 (corresponding to the '193 Patent).

For each such Person, state: (a) the date on which the Person first became aware of each Asserted Patent or published application; (b) the circumstances under which the Person became aware, including whether awareness arose from the FairPoint Letters, from independent searching, from review of patent databases, from attendance at industry conferences, from communications with OWS or its representatives, or from any other source; (c) whether the Person reviewed the claims, specification, drawings, or prosecution history of any Asserted Patent, and if so, which portions were reviewed and on what date(s); and (d) any actions taken by the Person or by Lumicore as a result of such awareness, including but not limited to requesting opinions of counsel, commissioning prior-art searches, initiating Design-Around efforts, modifying product designs, or communicating with management or legal counsel regarding the Asserted Patents.

INTERROGATORY NO. 5:

Describe in detail Lumicore's receipt of and response to the FairPoint Letters, specifically: (a) the letter dated January 15, 2023, from FairPoint Licensing Group, LLC, addressed to Lumicore's General Counsel, Raymond Bautista, Esq., identifying the '847 Patent, the '193 Patent, and the '562 Patent and inviting Lumicore to discuss a license to those patents; and (b) the letter dated May 15, 2023, from FairPoint Licensing Group, LLC, addressed to Lumicore, adding the '015 Patent to the discussion and expanding the scope of accused products to include the LumiLink 800G-DR8 transceiver module.

For each FairPoint Letter, identify: (i) the Person(s) at Lumicore who received the letter, including the date and manner of receipt; (ii) all Persons to whom the letter was forwarded, distributed, or with whom it was discussed, and the date(s) of such forwarding or discussion; (iii) the substance of any discussions within Lumicore regarding the letter; (iv) all actions taken by Lumicore in response to each letter, including any internal analyses, reviews, meetings, or communications; and (v) all Communications with outside counsel regarding each letter, including the identity of the outside counsel consulted, the dates of such Communications, and the substance thereof to the extent not privileged (and to the extent privilege is claimed, provide all information required by Instruction No. 9 above).

INTERROGATORY NO. 6:

Describe in detail the in-person meeting held on or about April 20, 2023, in Austin, Texas, between representatives of Lumicore and representatives of OWS and FairPoint Licensing Group, LLC, relating to a potential license to the Asserted Patents.

Specifically, identify all Persons who attended the meeting on behalf of Lumicore, including but not limited to Raymond Bautista, Esq. (Lumicore General Counsel) and Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP, and describe: (a) the subjects discussed at the meeting, including any claim charts, technical presentations, or licensing proposals presented by either party; (b) any licensing proposals, term sheets, royalty rate proposals, or other offers or counteroffers made by either party during or in connection with the meeting; (c) any Documents presented, exchanged, distributed, or referenced during the meeting; (d) the duration of the meeting and any breaks or side conversations; and (e) any follow-up actions taken by Lumicore after the meeting, including internal discussions, reports to management, analyses commissioned, or Communications with OWS or FairPoint Licensing Group, LLC.

INTERROGATORY NO. 7:

Describe in detail the process by which Lumicore decided to decline a license to the Asserted Patents, as communicated in Lumicore's letter to OWS and FairPoint Licensing Group, LLC dated July 10, 2023.

Specifically, identify: (a) all Persons involved in the decision to decline the license, including all officers, directors, managers, in-house counsel, and outside counsel who participated in or were consulted regarding the decision; (b) the factors considered by Lumicore in reaching the decision, including any assessment of litigation risk, financial considerations, competitive implications, or business strategy considerations; (c) any analyses, studies, evaluations, or assessments conducted in connection with the decision, including but not limited to any non-infringement analyses, invalidity analyses, freedom-to-operate analyses, or risk assessments, and for each such analysis, the identity of the Person(s) who conducted it, the date(s) it was conducted, and its conclusions; (d) all Documents created, generated, or reviewed in connection with the decision, including internal memoranda, presentations, emails, meeting minutes, or board materials; and (e) the factual and legal basis for the statement in the July 10, 2023 letter that Lumicore had obtained "competent legal opinions" that its products do not infringe the Asserted Patents, including the identity of the attorney(s) or firm(s) who provided such opinions and the date(s) on which such opinions were rendered.

INTERROGATORY NO. 8:

Identify all opinion-of-counsel letters, memoranda, analyses, reports, or oral advice (whether formal or informal) obtained, commissioned, or received by Lumicore relating to any of the Asserted Patents, including but not limited to opinions addressing non-infringement, invalidity, unenforceability, freedom-to-operate, or any other issue relating to the Asserted Patents.

For each such opinion or analysis, state: (a) the date on which the opinion or analysis was rendered, provided, or communicated; (b) the identity of the attorney or law firm providing the opinion or analysis; (c) the specific Asserted Patent(s) addressed in the opinion or analysis; (d) the specific Accused Product(s) addressed in the opinion or analysis; (e) the general subject matter of the opinion or analysis and its principal conclusions (to the extent such disclosure does not reveal privileged communications); and (f) whether Lumicore intends to assert an advice-of-counsel defense in response to OWS's claim of willful infringement in this action, and if so, whether Lumicore has waived or intends to waive the attorney-client privilege and/or work-product protection with respect to any such opinion or analysis.

If Lumicore claims privilege over any opinion or analysis responsive to this Interrogatory, Lumicore must provide all of the information required by Instruction No. 9 above, including a privilege log entry for each withheld communication or document.

INTERROGATORY NO. 9:

Describe all prior-art searches conducted by or on behalf of Lumicore relating to any of the Asserted Patents, whether conducted before or after the filing of this action on May 13, 2024.

For each such search, identify: (a) the Person(s), firm(s), or entity(ies) who conducted the search, including but not limited to Marlowe Asset Management Patent Analytics, Inc., 1100 Peachtree Street NE, Suite 2200, Atlanta, GA 30309, or any other patent search firm, consultant, or internal Lumicore personnel; (b) the date(s) on which the search was conducted; (c) the scope of the search, including the types of prior art searched (patents, published patent applications, non-patent literature, printed publications, products, public demonstrations, trade show presentations, industry standards, or other categories) and the databases, search engines, or repositories queried (e.g., USPTO, EPO, WIPO, Severin Industries Patents, IEEE Xplore, Pemberton Data Systems, or other databases); (d) the specific Asserted Patent(s) that were the target of or subject of the search; (e) all Prior Art references identified as a result of the search; and (f) all reports, memoranda, summaries, charts, or other Documents generated as a result of or in connection with the search.

INTERROGATORY NO. 10:

For each Asserted Patent, identify all bases on which Lumicore contends that the patent is invalid, unenforceable, or otherwise not entitled to the relief sought by OWS.

Specifically, identify all Prior Art references relied upon by Lumicore, including but not limited to the twenty-three (23) references cited in Lumicore's P.R. 3-3 Invalidity Contentions served on October 14, 2024, and any additional references identified thereafter. For each Prior Art reference, state: (a) whether the reference is asserted under 35 U.S.C. § 102 (anticipation), 35 U.S.C. § 103 (obviousness), or both, and the specific subsection of § 102 relied upon (e.g., § 102(a)(1) or § 102(a)(2)); (b) the specific claim(s) of the Asserted Patent against which the reference is asserted; (c) if the reference is asserted under 35 U.S.C. § 103, the combination(s) of references relied upon, and for each combination, the motivation, suggestion, or reason to combine the references, including any evidence of a teaching, suggestion, or motivation in the references themselves or in the knowledge of a person of ordinary skill in the art; and (d) any other statutory or legal basis for invalidity relied upon by Lumicore, including but not limited to 35 U.S.C. § 101 (patent-eligible subject matter), 35 U.S.C. § 112(a) (written description, enablement, or best mode), 35 U.S.C. § 112(b) (definiteness), or 35 U.S.C. § 102(b) (on-sale bar or public-use bar), and the factual basis for each such contention.

INTERROGATORY NO. 11:

Describe in detail Lumicore's contention, as set forth in its P.R. 3-3 Invalidity Contentions, that internal design documents dated 2016–2017 constitute prior conception of the subject matter claimed in the '015 Patent (U.S. Patent No. 11,402,015, filed August 30, 2019, claiming priority to Provisional Application No. 62/499,117, filed April 7, 2017) and that such prior conception predates the effective priority date of the '015 Patent.

Specifically, identify: (a) each Document relied upon to support the prior conception contention, and for each such Document, state its date of creation, author(s), custodian, present location, and Bates number(s) if produced in this litigation; (b) the Person(s) who allegedly conceived the subject matter that Lumicore contends was prior to the invention claimed in the '015 Patent, and the date(s) of such alleged conception; (c) all evidence of corroboration of the alleged conception, including the identity and testimony of corroborating witnesses, laboratory notebooks or entries therein, contemporaneous emails or electronic communications, internal reports, design review meeting minutes, or any other contemporaneous records; (d) any evidence of reduction to practice of the allegedly prior-conceived invention, whether actual or constructive, and the date(s) thereof; and (e) any evidence of diligence in reducing the allegedly prior-conceived invention to practice, including a detailed chronological account of the steps taken between the date of alleged conception and the date of alleged reduction to practice.

INTERROGATORY NO. 12:

State the complete factual basis for Lumicore's counterclaim of inequitable conduct and unenforceability, as asserted in Lumicore's Answer and Counterclaims filed on June 17, 2024 (D.E. 12), including all facts supporting each element of Lumicore's inequitable-conduct defense and counterclaim.

For each alleged act of inequitable conduct, identify: (a) the specific Asserted Patent at issue; (b) the specific information, Prior Art reference(s), or other material that Lumicore contends was withheld from, misrepresented to, or otherwise not properly disclosed to the United States Patent and Trademark Office ("USPTO") during prosecution of the Asserted Patent; (c) the identity of the Person(s) who allegedly committed the inequitable conduct, including any named inventor(s), patent prosecutor(s), or other individuals who owed a duty of candor to the USPTO under 37 C.F.R. § 1.56; (d) the basis for Lumicore's contention that the withheld or misrepresented information was material to patentability, including whether Lumicore contends the information would have rendered any claim of the Asserted Patent unpatentable under the "but-for" materiality standard or constitutes affirmative egregious misconduct; (e) the specific evidence of intent to deceive the USPTO, including all facts and circumstances from which Lumicore contends an inference of deceptive intent may be drawn; and (f) all Documents supporting each allegation of inequitable conduct, including the prosecution history of the Asserted Patent(s), communications with the USPTO, prior-art references, internal communications of the named inventors or prosecuting attorneys, and any other evidence relied upon.

INTERROGATORY NO. 13:

For each asserted claim of each Asserted Patent — specifically, Claims 1, 3, 5, 9, and 14 of the '847 Patent; Claims 1, 3, 7, 10, 15, and 18 of the '193 Patent; Claims 1, 4, 6, and 11 of the '562 Patent; and Claims 1, 5, 8, 12, and 16 of the '015 Patent — state the complete factual and legal basis for Lumicore's contention of non-infringement, whether literal or under the doctrine of equivalents.

For each claim limitation of each asserted claim that Lumicore contends is not met, practiced, or infringed by each Accused Product, identify: (a) the specific claim limitation(s) at issue, quoting the relevant claim language; (b) the specific design feature(s), architecture, component(s), structure(s), method step(s), or functionality of the Accused Product that Lumicore contends do not satisfy, meet, or practice the identified claim limitation(s); (c) any design differences between the Accused Product and the claimed invention that Lumicore relies upon to support its non-infringement contention, including a technical description of each such difference; and (d) any claim construction positions or arguments relied upon to support the non-infringement contention.

INTERROGATORY NO. 14:

Identify all Non-Infringing Alternatives to the Accused Products or to any feature, element, component, or aspect of the Accused Products that Lumicore contends practices any claim of any Asserted Patent, that Lumicore contends were available at any time from the second quarter of 2022 (Q2 2022), the hypothetical negotiation date, to the present.

For each Non-Infringing Alternative identified, state: (a) the identity and source of the alternative, including the name and address of the manufacturer, supplier, or developer; (b) a technical description of the alternative and how it differs from the patented feature(s) of the Accused Products; (c) whether the alternative was commercially available during the relevant time period, and if so, when it first became commercially available; (d) the cost, performance characteristics, power consumption, form factor, and overall feasibility of the alternative as compared to the corresponding patented feature(s) of the Accused Products; (e) whether Lumicore considered, evaluated, tested, or adopted the alternative at any time, and if so, the dates and results of such consideration or evaluation; and (f) the reason(s) Lumicore did not adopt the alternative, if applicable, including any technical, commercial, customer-driven, or regulatory reasons.

INTERROGATORY NO. 15:

Describe all efforts undertaken, considered, proposed, or contemplated by Lumicore to Design Around any claim of any Asserted Patent, whether before or after receiving notice of the Asserted Patents through the FairPoint Letters or otherwise.

For each Design-Around effort, state: (a) the date(s) on which the effort was initiated, conducted, or completed; (b) the specific Asserted Patent(s) and specific claim(s) at issue in connection with the effort; (c) the specific Accused Product(s) involved in or targeted by the effort; (d) the identity of all Persons involved in the effort, including engineers, managers, consultants, and counsel; (e) the nature of the proposed modification(s), redesign(s), or alternative approaches considered, with sufficient technical detail to understand the proposed changes; (f) the current status of the effort (i.e., whether it is ongoing, completed, abandoned, or deferred); and (g) the estimated timeline, cost, and technical risk associated with implementing the Design-Around, including any impact on product performance, customer acceptance, or time-to-market.

Without limiting the generality of the foregoing, this Interrogatory specifically encompasses information regarding whether any formal Design-Around analysis was commissioned, conducted, or completed before the commercial launch of the LumiEdge 1600G-LR transceiver module in the fourth quarter of 2023.

INTERROGATORY NO. 16:

For each Accused Product — specifically, the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR — state the following information for each fiscal quarter from the product's initial commercial launch date through the most recently completed fiscal quarter as of the date of Defendant's response:

(a) the total number of units sold;

(b) total net revenue (after deduction of returns, allowances, and discounts);

(d) total cost of goods sold ("COGS"), including a breakdown of material costs, labor costs, and manufacturing overhead to the extent such breakdown is maintained;

(e) gross profit (net revenue minus COGS) and gross margin percentage;

(f) total number of units imported into the United States, and the port(s) of entry; and

(g) a breakdown of revenue by geographic region, including at a minimum: (i) domestic United States revenue and (ii) international revenue, with international revenue further broken down by major region or country to the extent such data is maintained.

For purposes of this Interrogatory, the expected data periods are as follows: the LumiLink 400G-ZR+ from Q3 2022 (approximately July 2022); the LumiLink 800G-DR8 from Q1 2023 (approximately January 2023); and the LumiEdge 1600G-LR from Q4 2023 (approximately October 2023). Plaintiff's preliminary analysis indicates that total accused-product revenue for fiscal year 2023 was approximately $264.9 million (comprised of approximately $94.8 million for the LumiLink 400G-ZR+, approximately $128.4 million for the LumiLink 800G-DR8, and approximately $41.7 million for the LumiEdge 1600G-LR), and that total accused-product revenue for the infringement period from Q3 2022 through Q1 2024 is estimated at approximately $378.2 million. Defendant is requested to confirm or correct these figures and to provide complete, accurate data responsive to this Interrogatory.

INTERROGATORY NO. 17:

Identify each customer to whom Lumicore has sold, offered for sale, licensed, leased, provided on consignment, or otherwise supplied any Accused Product, including customers located in or having facilities or operations in the Eastern District of Texas.

For each customer, state: (a) the customer's full legal name, address, and principal place of business; (b) the specific Accused Product(s) purchased, ordered, or supplied to that customer; (c) the date(s) of each purchase, order, or supply; (d) the total revenue received by Lumicore from each customer for each Accused Product, broken down by fiscal year and fiscal quarter; and (e) whether the customer has facilities, offices, data centers, or other operations located in the Eastern District of Texas, and if so, the address(es) of such facilities.

Without limiting the generality of the foregoing, this Interrogatory encompasses but is not limited to the following customers believed to have purchased Accused Products and to have operations in or near the Eastern District of Texas: Pinnacle Data Systems, LLC (1800 Judson Road, Longview, TX 75601); Frontier Cloud Services, Inc. (400 East Houston Street, marshall, TX 75670); and CrossPoint Networking Corp. (7500 Dallas Parkway, Suite 200, Plano, TX 75024).

INTERROGATORY NO. 18:

Identify all patent license agreements, cross-license agreements, settlement agreements with license provisions, or other intellectual property licensing arrangements to which Lumicore is or has been a party that relate to silicon-photonics transceiver technology, optical waveguide multiplexing technology, photonic integrated circuit thermal management technology, grating coupler technology, coherent optical signal processing technology, or any other technology relevant to the subject matter of the Asserted Patents.

For each such agreement, state: (a) the identities of all parties to the agreement; (b) the date of execution of the agreement; (c) the specific patent(s) or patent portfolio(s) licensed, including patent numbers where available; (d) the royalty rate and royalty structure (e.g., running royalty as a percentage of net sales, per-unit royalty, lump-sum payment, paid-up license, or a combination thereof); (e) the specific product(s) or product categories licensed under the agreement; (f) the term of the agreement and the geographic territory covered; and (g) any upfront payments, milestone payments, minimum royalties, most-favored-licensee provisions, or other material financial terms.

INTERROGATORY NO. 19:

State Lumicore's total revenue, cost of goods sold, gross profit, gross margin, operating expenses directly allocable, and operating income attributable to each Accused Product for each fiscal year from the product's initial commercial launch through the most recently completed fiscal year as of the date of Defendant's response.

Separately identify and quantify any research and development expenses specifically attributable to the design, development, testing, qualification, or improvement of each Accused Product, broken down by fiscal year, including both internal R&D costs (labor, materials, equipment, and facilities) and external R&D costs (consulting fees, contract research, licensing fees for design tools, and fabrication costs for prototypes or engineering samples).

INTERROGATORY NO. 20:

Identify all marketing materials, sales presentations, product brochures, data sheets, specification sheets, technical white papers, application notes, trade-show materials, press releases, webinar recordings, customer proposals, responses to requests for proposals ("RFPs"), and advertisements created, distributed, or published by or on behalf of Lumicore that relate to any Accused Product.

For each such item, describe: (a) the key features, benefits, and performance characteristics of the Accused Product highlighted or promoted in the material; (b) any comparisons, express or implied, made in the material to OWS products, including the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families, or to any other competing products; and (c) the intended audience, distribution channels, and approximate number of recipients or viewers of the material.

INTERROGATORY NO. 21:

Describe Lumicore's knowledge of, and competitive analysis regarding, OWS's product lines, including the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families, and any other silicon-photonics transceiver products manufactured or sold by OWS.

Specifically, identify: (a) all competitive intelligence reports, market analyses, industry benchmark studies, win/loss reports, or similar analyses prepared by or for Lumicore that reference OWS, its products, its technology, its market share, or its competitive positioning; (b) any teardowns, reverse-engineering analyses, or technical evaluations of OWS products conducted by or for Lumicore, including the identity of the firm or Person(s) who conducted the analysis and the date(s) thereof; (c) all Persons who participated in, reviewed, or were recipients of any such analyses or reports; and (d) the dates on which each such analysis, report, or study was conducted, completed, or distributed within Lumicore.

INTERROGATORY NO. 22:

State whether any Person at Lumicore accessed, reviewed, downloaded, printed, analyzed, or discussed any published patent application or issued patent owned by, assigned to, or exclusively licensed to OWS (including its predecessor, Solara Optics, Inc.) at any time during the design, development, testing, or qualification of any Accused Product.

For each instance of such access, review, download, or analysis, identify: (a) the specific patent application number or issued patent number accessed or reviewed; (b) the Person(s) who accessed, reviewed, or analyzed the application or patent; (c) the date(s) of access, review, or analysis; (d) the purpose of the review or analysis, including whether it was conducted for design purposes, competitive intelligence, freedom-to-operate analysis, or any other purpose; and (e) any actions taken as a result of the review, including but not limited to design modifications to any Accused Product, requests for opinions of counsel, reports to management, or Communications with other Lumicore personnel.

Without limiting the generality of the foregoing, this Interrogatory specifically encompasses Published Application No. US 2018/0123456 (corresponding to the '193 Patent), which Dr. Sandra Michaud, Lumicore's Chief Technology Officer, admitted reviewing during the LumiLink 400G-ZR+ design phase in her deposition taken on November 19, 2024.

INTERROGATORY NO. 23:

Describe in detail Lumicore's operations at its facility located at 2700 Earl Campbell Parkway, Suite 150, Tyler, TX 75701, including:

(a) the nature of the business conducted at the facility (e.g., sales, marketing, technical support, customer service, field applications engineering, distribution, warehousing, research and development, or other functions);

(b) the number of employees currently employed at the facility, and a general description of their roles and responsibilities;

(d) the identities of the customers served from or through the facility;

(e) whether any Accused Products have been demonstrated, displayed, promoted, sold, offered for sale, stored, shipped, distributed, installed, or supported from or through the facility, and if so, the dates and circumstances of each such activity; and

(f) any other Lumicore locations, offices, or facilities in the Eastern District of Texas, including the address, nature of operations, and number of employees at each.

INTERROGATORY NO. 24:

Identify all insurance policies, indemnification agreements, hold-harmless agreements, or other contractual arrangements (including but not limited to directors' and officers' liability insurance, errors and omissions insurance, commercial general liability insurance, intellectual property insurance, or patent infringement insurance) that may provide coverage, defense, or indemnification for any of the claims, counterclaims, or defenses asserted in this action.

For each such policy or agreement, state: (a) the identity of the insurer, indemnitor, or other party providing coverage or indemnification; (b) the policy number, agreement identifier, or other reference number; (c) the effective dates of coverage or the term of the agreement; (d) the coverage limits, including per-occurrence and aggregate limits, and any applicable deductibles, self-insured retentions, or co-insurance provisions; and (e) whether Lumicore has provided notice of this action to the insurer or indemnitor, and if so, the date on which notice was provided and any response received.

INTERROGATORY NO. 25:

Identify each Person, other than counsel of record in this action, whom Lumicore believes has knowledge of facts relevant to any claim, counterclaim, or defense in this action, including but not limited to knowledge relating to the following subject areas:

(a) the design, development, testing, qualification, manufacture, or sale of the Accused Products;

(b) awareness of, knowledge of, or analysis of the Asserted Patents;

(d) licensing negotiations or Communications with OWS, FairPoint Licensing Group, LLC, or any other entity regarding the Asserted Patents;

(e) sales, revenue, costs, pricing, profitability, and financial performance of the Accused Products;

(f) marketing, promotion, competitive intelligence, or market analysis relating to the Accused Products or OWS's products;

(g) opinion-of-counsel analyses, freedom-to-operate analyses, or other legal analyses relating to the Asserted Patents;

(h) Design-Around efforts, alternative designs, or non-infringing alternatives;

(i) the factual bases for Lumicore's counterclaims, including its counterclaim of inequitable conduct and unenforceability; and

(j) any other facts material to the claims, defenses, or damages issues in this action.

For each Person identified, state: (i) the Person's full name, current address, current employer, and current job title; (ii) the specific subject matter(s) about which the Person has knowledge, identified by reference to the categories listed above and any other relevant subject areas; and (iii) a brief description of the Person's relevant knowledge, sufficient to convey the nature and scope of the information the Person possesses.

VERIFICATION

Defendant Lumicore Technologies, Inc. is hereby instructed that its responses to these Interrogatories must be verified under oath by an officer or duly authorized agent of Lumicore Technologies, Inc., as required by Federal Rule of Civil Procedure 33(b)(3) and 33(b)(5). The verification shall state that the responses are true and correct to the best of the knowledge, information, and belief of the person verifying the responses, formed after a reasonable inquiry.

Respectfully submitted,

August 26, 2024

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (CA Bar No. 298114) Admitted pro hac vice, E.D. Tex. 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801

Email: anglo@calderwoodharkness.com

Marcus Delgado (TX Bar No. 24087652; CA Bar No. 310478) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801

Email: mdelgado@calderwoodharkness.com

Wendy Schultz (CA Bar No. 325891) Admitted pro hac vice, E.D. Tex. 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801

Email: wschultz@calderwoodharkness.com

Omar Siddiqui (CA Bar No. 331204) Admitted pro hac vice, E.D. Tex. 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801

Email: osiddiqui@calderwoodharkness.com

Counsel for Plaintiff Optiwave Semiconductor Corp.

LOCAL COUNSEL:

WHITMORE & CALLAHAN LLP

By: ________

James "Jim" Callahan (TX Bar No. 18904327) 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-2100 Facsimile: (903) 555-2101

Email: jcallahan@whitmorecallahan.com

Local Counsel for Plaintiff Optiwave Semiconductor Corp.

CERTIFICATE OF SERVICE

I hereby certify that on August 26, 2024, I caused a true and correct copy of the foregoing Plaintiff Optiwave Semiconductor Corp.'s First Set of Interrogatories to Defendant Lumicore Technologies, Inc. to be served on all counsel of record via the Court's CM/ECF electronic filing system, and additionally via email, to the following:

Catherine "Kate" Rourke Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701

Email: crourke@hvclegal.com

Darren Cho Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701

Email: dcho@hvclegal.com

Samantha Briggs Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701

Email: sbriggs@hvclegal.com

Rohan Iyer Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701

Email: riyer@hvclegal.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.

By: ________

Wendy Schultz CALDERWOOD & HARKNESS LLP

OPTIWAVE SEMICONDUCTOR CORP.,

Plaintiff,

v.	Civil Action No. 2:24-cv-00319-JRG
LUMICORE TECHNOLOGIES, INC.,	Judge James R. Gilstrap

Defendant.

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S FIRST SET OF INTERROGATORIES TO DEFENDANT LUMICORE TECHNOLOGIES, INC.
Date Served: August 26, 2024
Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure and the Local Rules of the United States District Court for the Eastern District of Texas, Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its undersigned counsel, Calderwood & Harkness LLP and local counsel Whitmore & Callahan LLP, hereby propounds its First Set of Interrogatories (Nos. 1 through 25) to Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant"). Responses are due within thirty (30) days of service, on or before September 25, 2024.
These Interrogatories are directed to counsel for Defendant: Hawthorne Vega & Cruz LLP, 600 Congress Avenue, Suite 2400, Austin, TX 78701, and local counsel Trask Eddington LLP, 425 East Front Street, Suite 300, Tyler, TX 75701.
Defendant is requested to answer each Interrogatory separately and fully, in writing and under oath, in accordance with the Instructions and Definitions set forth below.
INSTRUCTIONS
INSTRUCTION NO. 1 — Governing Rules. These Interrogatories are propounded pursuant to Rule 33 of the Federal Rules of Civil Procedure and the Local Rules of the United States District Court for the Eastern District of Texas. Responses must be made under oath and signed by the responding party or its duly authorized representative, as required by Federal Rule of Civil Procedure 33(b)(1) and 33(b)(3). Each Interrogatory shall be answered separately and fully in writing, unless it is objected to, in which event the grounds for the objection shall be stated with specificity as required by Rule 33(b)(4). An objection to part of an Interrogatory does not relieve Defendant of the obligation to answer the remainder of the Interrogatory to the extent it is not objectionable.
INSTRUCTION NO. 2 — Time for Response. Responses to these Interrogatories are due within thirty (30) days of service, pursuant to Federal Rule of Civil Procedure 33(b)(2). If Defendant objects to any Interrogatory, in whole or in part, the specific grounds for each objection must be stated, and the Interrogatory must be answered to the extent it is not objectionable. A general or blanket objection, without more, is insufficient and will be treated as a failure to respond.
INSTRUCTION NO. 3 — Continuing Obligation. These Interrogatories impose a continuing obligation upon Defendant to supplement its responses in accordance with Federal Rule of Civil Procedure 26(e)(1). Defendant must timely supplement or correct any response if information subsequently learned or discovered renders a prior response incomplete or incorrect in any material respect. Supplementation must be made in a timely manner and in no event later than the time required by Rule 26(e) or any scheduling order entered in this action.
INSTRUCTION NO. 4 — Identification of Persons. Whenever an Interrogatory asks Defendant to "identify" a person, Defendant shall state: (a) the person's full legal name; (b) the person's present or last known home and business address; (c) the person's present or last known telephone number(s); (d) the person's present employer and job title; and (e) the person's relationship, if any, to any party in this action, including the dates and nature of any employment or consulting relationship with Lumicore or OWS.
INSTRUCTION NO. 5 — Identification of Documents. Whenever an Interrogatory asks Defendant to "identify" a document, Defendant shall provide: (a) the type or nature of the document (e.g., letter, memorandum, email, report, spreadsheet, presentation, instant message, text message); (b) the date of the document; (c) the author(s) or sender(s) of the document; (d) the recipient(s), addressee(s), or person(s) copied on the document; (e) the subject matter of the document; (f) the Bates number range, if the document has been produced in this litigation; and (g) the present location and custodian of the document.
INSTRUCTION NO. 6 — Identification of Communications. Whenever an Interrogatory asks Defendant to "describe" or "identify" a communication, Defendant shall state: (a) the date of the communication; (b) the form of the communication (i.e., oral, written, or electronic, and the specific medium used); (c) the identity of all participants in the communication, including all persons present during an oral communication and all persons to whom a written or electronic communication was addressed or copied; (d) the substance of the communication, described in sufficient detail to convey its content; and (e) any documents generated, exchanged, or referenced as a result of or in connection with the communication.
INSTRUCTION NO. 7 — Time Period. Unless otherwise specifically stated in a particular Interrogatory, these Interrogatories cover the period from January 1, 2014 to the present. To the extent any Interrogatory specifies a different time period, the time period stated in that Interrogatory shall govern.
INSTRUCTION NO. 8 — Documents in Lieu of Answers. Pursuant to Federal Rule of Civil Procedure 33(d), if the answer to any Interrogatory may be derived or ascertained from the business records of Defendant, including electronically stored information, and the burden of deriving or ascertaining the answer is substantially the same for either party, Defendant may answer by specifying the records from which the answer may be derived or ascertained and by making those records available for inspection and copying. In such event, Defendant must identify the records from which the answer may be obtained with sufficient specificity to permit Plaintiff to locate and identify the information as readily as if the Interrogatory had been directly answered. A general reference to Defendant's files, records, or database, without more, is insufficient.
INSTRUCTION NO. 9 — Privilege Claims. If Defendant withholds any information responsive to any Interrogatory on the basis of any claim of privilege, including the attorney-client privilege, work-product protection, or any other privilege or protection, Defendant must: (a) identify the specific Interrogatory or portion thereof as to which the privilege is claimed; (b) identify the privilege or protection being asserted; (c) provide sufficient factual information to enable Plaintiff and the Court to assess the validity of the claim, including the date of the communication or document, the author or speaker, the recipient(s) or listener(s), the general subject matter, and the identity of all persons to whom the information has been disclosed; and (d) comply with the requirements of the Stipulated Protective Order entered in this action (D.E. 30, filed July 8, 2024). Nothing in this Instruction shall be construed as a concession by Plaintiff that any claim of privilege is validly asserted.
INSTRUCTION NO. 10 — Scope of "You," "Your," "Defendant," and "Lumicore." As used in these Interrogatories, the terms "You," "Your," "Defendant," and "Lumicore" refer to Defendant Lumicore Technologies, Inc., and encompass its present and former officers, directors, employees, agents, consultants, independent contractors, subsidiaries, affiliates, divisions, predecessors-in-interest, successors-in-interest, and any other persons or entities acting or purporting to act on its behalf or under its direction or control.
DEFINITIONS
As used in these Interrogatories, the following terms shall have the meanings set forth below:
DEFINITION NO. 1 — "Accused Products." "Accused Products" means the LumiLink 400G-ZR+ transceiver module, the LumiLink 800G-DR8 transceiver module, and the LumiEdge 1600G-LR transceiver module, including all versions, variants, revisions, prototypes, engineering samples, and derivative products thereof, whether sold, offered for sale, imported into, made in, or used in the United States.
DEFINITION NO. 2 — "Asserted Patents" or "Patents-in-Suit." "Asserted Patents" or "Patents-in-Suit" means the following United States patents, which are asserted in this action: U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Silicon Photonic Integrated Circuit with Multi-Channel Waveguide Multiplexing," issued March 19, 2019; U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "Thermal Management Architecture for High-Density Photonic Transceiver Modules," issued January 12, 2021; U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Grating Coupler with Apodized Diffractive Elements for Fiber-Chip Optical Interface," issued June 13, 2017; and U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Coherent Optical Signal Processing Engine with Integrated Digital Signal Processor," issued August 2, 2022.
DEFINITION NO. 3 — "Person." "Person" means any natural person, corporation, partnership, joint venture, limited liability company, association, trust, unincorporated organization, governmental entity, or any other legal entity, and includes the plural as well as the singular.
DEFINITION NO. 4 — "Document" or "Documents." "Document" or "Documents" shall have the broadest meaning ascribed to that term under Federal Rule of Civil Procedure 34(a), and as further described and defined in the parties' ESI Protocol Agreement dated August 15, 2024 (D.E. 28), and includes all electronically stored information ("ESI"), writings, drawings, graphs, charts, photographs, sound recordings, images, and other data or data compilations stored in any medium from which information can be obtained, either directly or after translation by Defendant into a reasonably usable form.
DEFINITION NO. 5 — "Communication." "Communication" means any exchange of information, whether oral, written, or electronic, between two or more persons, and includes without limitation emails, text messages, instant messages (including messages sent via Meridian Solutions, Northgate Data Systems, or similar platforms), letters, memoranda, facsimiles, telephone calls, video conferences, in-person conversations, and any other mode of conveying information.
DEFINITION NO. 6 — "Relate to" or "Relating to." "Relate to," "Relating to," "Related to," or "Relates to" means concerning, referring to, describing, evidencing, constituting, reflecting, pertaining to, mentioning, embodying, discussing, analyzing, supporting, contradicting, or having any connection with, in whole or in part, directly or indirectly.
DEFINITION NO. 7 — "OWS" or "Plaintiff." "OWS" or "Plaintiff" means Optiwave Semiconductor Corp., and encompasses its present and former officers, directors, employees, agents, subsidiaries, affiliates, predecessors-in-interest (including Solara Optics, Inc., from which OWS acquired certain patent assets in 2016), successors-in-interest, and any other persons or entities acting or purporting to act on its behalf or under its direction or control.
DEFINITION NO. 8 — "FairPoint Letters." "FairPoint Letters" means: (a) the letter dated January 15, 2023, sent by FairPoint Licensing Group, LLC to Lumicore's General Counsel, Raymond Bautista, Esq., identifying the '847 Patent, the '193 Patent, and the '562 Patent and inviting Lumicore to discuss a license; and (b) the letter dated May 15, 2023, sent by FairPoint Licensing Group, LLC to Lumicore, adding the '015 Patent to the discussion and expanding the scope of accused products to include the LumiLink 800G-DR8 transceiver module. Each of the FairPoint Letters relates to one or more of the Asserted Patents.
DEFINITION NO. 9 — "Non-Infringing Alternatives." "Non-Infringing Alternatives" means any product, design, method, technology, component, architecture, or technical approach that Lumicore contends could serve as a substitute for any feature, element, or aspect of the Accused Products that OWS contends infringes any claim of any Asserted Patent.
DEFINITION NO. 10 — "Prior Art." "Prior Art" means any patent, published patent application, printed publication, evidence of public use, evidence of prior sale or offer for sale, evidence of prior public knowledge, or any other prior-art reference of any kind that Lumicore has relied upon, considered, identified, or intends to rely upon in connection with the validity, invalidity, or enforceability of any claim of any Asserted Patent, whether in the prosecution history, in inter partes review proceedings, or in this litigation.
DEFINITION NO. 11 — "Design-Around." "Design-Around" means any effort, analysis, study, evaluation, experiment, modification, redesign, or re-engineering undertaken, considered, proposed, or contemplated by Lumicore to redesign the Accused Products or any feature, component, or element thereof to avoid infringement of any claim of any Asserted Patent.
INTERROGATORIES
INTERROGATORY NO. 1:
Identify each Person who was involved in the conception, design, development, testing, qualification, or engineering of the LumiLink 400G-ZR+ transceiver module, including but not limited to engineers, scientists, technicians, project managers, program directors, and any outside consultants, contractors, or third-party design firms retained by Lumicore in connection therewith.
For each Person so identified, state: (a) the Person's full name, current address, current employer, and current job title; (b) the Person's role and specific responsibilities with respect to the LumiLink 400G-ZR+ transceiver module; (c) the time period during which the Person was involved in the conception, design, development, testing, or engineering of the LumiLink 400G-ZR+; (d) whether the Person is currently employed by Lumicore, and if not, the date the Person's employment or engagement with Lumicore ended and the Person's current employer; and (e) any reporting relationships relevant to the Person's work on the LumiLink 400G-ZR+, including any supervision by or direction from Lumicore's Chief Technology Officer, Dr. Sandra Michaud, Vice President of Product Development, Dr. Eric Dalmqvist, or any other member of Lumicore's senior management or technical leadership.
This Interrogatory encompasses, but is not limited to, all members of the LumiLink 400G-ZR+ design team, including but not limited to Melissa Chen (believed to be now employed by Veridian Photonics, Inc.) and all persons who reported to or received direction from Dr. Sandra Michaud or Dr. Eric Dalmqvist regarding the LumiLink 400G-ZR+ program.
INTERROGATORY NO. 2:
Identify each Person who was involved in the conception, design, development, testing, qualification, or engineering of the LumiLink 800G-DR8 transceiver module, which Plaintiff understands was launched commercially in or about the first quarter of 2023, including but not limited to engineers, scientists, technicians, project managers, program directors, and any outside consultants, contractors, or third-party design firms retained by Lumicore in connection therewith.
For each Person so identified, state: (a) the Person's full name, current address, current employer, and current job title; (b) the Person's role and specific responsibilities with respect to the LumiLink 800G-DR8 transceiver module; (c) the time period during which the Person was involved in the conception, design, development, testing, or engineering of the LumiLink 800G-DR8; (d) whether the Person is currently employed by Lumicore, and if not, the date the Person's employment or engagement with Lumicore ended and the Person's current employer; and (e) any reporting relationships relevant to the Person's work on the LumiLink 800G-DR8, including any supervision by or direction from Lumicore's senior management or technical leadership.
INTERROGATORY NO. 3:
Identify each Person who was involved in the conception, design, development, testing, qualification, or engineering of the LumiEdge 1600G-LR transceiver module, which Plaintiff understands was launched commercially in or about the fourth quarter of 2023, including but not limited to engineers, scientists, technicians, project managers, program directors, and any outside consultants, contractors, or third-party design firms retained by Lumicore in connection therewith.
For each Person so identified, state: (a) the Person's full name, current address, current employer, and current job title; (b) the Person's role and specific responsibilities with respect to the LumiEdge 1600G-LR transceiver module; (c) the time period during which the Person was involved in the conception, design, development, testing, or engineering of the LumiEdge 1600G-LR; (d) whether the Person is currently employed by Lumicore, and if not, the date the Person's employment or engagement with Lumicore ended and the Person's current employer; and (e) any reporting relationships relevant to the Person's work on the LumiEdge 1600G-LR, including any supervision by or direction from Lumicore's senior management or technical leadership.
INTERROGATORY NO. 4:
Identify each Person at Lumicore who, at any time from January 1, 2014 to the present, has had knowledge of, reviewed, analyzed, evaluated, discussed, or been made aware of any of the Asserted Patents — specifically, U.S. Patent No. 10,234,847, U.S. Patent No. 10,891,193, U.S. Patent No. 9,678,562, and U.S. Patent No. 11,402,015 — or any published patent application related thereto, including but not limited to Published Application No. US 2018/0123456 (corresponding to the '193 Patent).
For each such Person, state: (a) the date on which the Person first became aware of each Asserted Patent or published application; (b) the circumstances under which the Person became aware, including whether awareness arose from the FairPoint Letters, from independent searching, from review of patent databases, from attendance at industry conferences, from communications with OWS or its representatives, or from any other source; (c) whether the Person reviewed the claims, specification, drawings, or prosecution history of any Asserted Patent, and if so, which portions were reviewed and on what date(s); and (d) any actions taken by the Person or by Lumicore as a result of such awareness, including but not limited to requesting opinions of counsel, commissioning prior-art searches, initiating Design-Around efforts, modifying product designs, or communicating with management or legal counsel regarding the Asserted Patents.
INTERROGATORY NO. 5:
Describe in detail Lumicore's receipt of and response to the FairPoint Letters, specifically: (a) the letter dated January 15, 2023, from FairPoint Licensing Group, LLC, addressed to Lumicore's General Counsel, Raymond Bautista, Esq., identifying the '847 Patent, the '193 Patent, and the '562 Patent and inviting Lumicore to discuss a license to those patents; and (b) the letter dated May 15, 2023, from FairPoint Licensing Group, LLC, addressed to Lumicore, adding the '015 Patent to the discussion and expanding the scope of accused products to include the LumiLink 800G-DR8 transceiver module.
For each FairPoint Letter, identify: (i) the Person(s) at Lumicore who received the letter, including the date and manner of receipt; (ii) all Persons to whom the letter was forwarded, distributed, or with whom it was discussed, and the date(s) of such forwarding or discussion; (iii) the substance of any discussions within Lumicore regarding the letter; (iv) all actions taken by Lumicore in response to each letter, including any internal analyses, reviews, meetings, or communications; and (v) all Communications with outside counsel regarding each letter, including the identity of the outside counsel consulted, the dates of such Communications, and the substance thereof to the extent not privileged (and to the extent privilege is claimed, provide all information required by Instruction No. 9 above).
INTERROGATORY NO. 6:
Describe in detail the in-person meeting held on or about April 20, 2023, in Austin, Texas, between representatives of Lumicore and representatives of OWS and FairPoint Licensing Group, LLC, relating to a potential license to the Asserted Patents.
Specifically, identify all Persons who attended the meeting on behalf of Lumicore, including but not limited to Raymond Bautista, Esq. (Lumicore General Counsel) and Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP, and describe: (a) the subjects discussed at the meeting, including any claim charts, technical presentations, or licensing proposals presented by either party; (b) any licensing proposals, term sheets, royalty rate proposals, or other offers or counteroffers made by either party during or in connection with the meeting; (c) any Documents presented, exchanged, distributed, or referenced during the meeting; (d) the duration of the meeting and any breaks or side conversations; and (e) any follow-up actions taken by Lumicore after the meeting, including internal discussions, reports to management, analyses commissioned, or Communications with OWS or FairPoint Licensing Group, LLC.
INTERROGATORY NO. 7:
Describe in detail the process by which Lumicore decided to decline a license to the Asserted Patents, as communicated in Lumicore's letter to OWS and FairPoint Licensing Group, LLC dated July 10, 2023.
Specifically, identify: (a) all Persons involved in the decision to decline the license, including all officers, directors, managers, in-house counsel, and outside counsel who participated in or were consulted regarding the decision; (b) the factors considered by Lumicore in reaching the decision, including any assessment of litigation risk, financial considerations, competitive implications, or business strategy considerations; (c) any analyses, studies, evaluations, or assessments conducted in connection with the decision, including but not limited to any non-infringement analyses, invalidity analyses, freedom-to-operate analyses, or risk assessments, and for each such analysis, the identity of the Person(s) who conducted it, the date(s) it was conducted, and its conclusions; (d) all Documents created, generated, or reviewed in connection with the decision, including internal memoranda, presentations, emails, meeting minutes, or board materials; and (e) the factual and legal basis for the statement in the July 10, 2023 letter that Lumicore had obtained "competent legal opinions" that its products do not infringe the Asserted Patents, including the identity of the attorney(s) or firm(s) who provided such opinions and the date(s) on which such opinions were rendered.
INTERROGATORY NO. 8:
Identify all opinion-of-counsel letters, memoranda, analyses, reports, or oral advice (whether formal or informal) obtained, commissioned, or received by Lumicore relating to any of the Asserted Patents, including but not limited to opinions addressing non-infringement, invalidity, unenforceability, freedom-to-operate, or any other issue relating to the Asserted Patents.
For each such opinion or analysis, state: (a) the date on which the opinion or analysis was rendered, provided, or communicated; (b) the identity of the attorney or law firm providing the opinion or analysis; (c) the specific Asserted Patent(s) addressed in the opinion or analysis; (d) the specific Accused Product(s) addressed in the opinion or analysis; (e) the general subject matter of the opinion or analysis and its principal conclusions (to the extent such disclosure does not reveal privileged communications); and (f) whether Lumicore intends to assert an advice-of-counsel defense in response to OWS's claim of willful infringement in this action, and if so, whether Lumicore has waived or intends to waive the attorney-client privilege and/or work-product protection with respect to any such opinion or analysis.
If Lumicore claims privilege over any opinion or analysis responsive to this Interrogatory, Lumicore must provide all of the information required by Instruction No. 9 above, including a privilege log entry for each withheld communication or document.
INTERROGATORY NO. 9:
Describe all prior-art searches conducted by or on behalf of Lumicore relating to any of the Asserted Patents, whether conducted before or after the filing of this action on May 13, 2024.
For each such search, identify: (a) the Person(s), firm(s), or entity(ies) who conducted the search, including but not limited to Marlowe Asset Management Patent Analytics, Inc., 1100 Peachtree Street NE, Suite 2200, Atlanta, GA 30309, or any other patent search firm, consultant, or internal Lumicore personnel; (b) the date(s) on which the search was conducted; (c) the scope of the search, including the types of prior art searched (patents, published patent applications, non-patent literature, printed publications, products, public demonstrations, trade show presentations, industry standards, or other categories) and the databases, search engines, or repositories queried (e.g., USPTO, EPO, WIPO, Severin Industries Patents, IEEE Xplore, Pemberton Data Systems, or other databases); (d) the specific Asserted Patent(s) that were the target of or subject of the search; (e) all Prior Art references identified as a result of the search; and (f) all reports, memoranda, summaries, charts, or other Documents generated as a result of or in connection with the search.
INTERROGATORY NO. 10:
For each Asserted Patent, identify all bases on which Lumicore contends that the patent is invalid, unenforceable, or otherwise not entitled to the relief sought by OWS.
Specifically, identify all Prior Art references relied upon by Lumicore, including but not limited to the twenty-three (23) references cited in Lumicore's P.R. 3-3 Invalidity Contentions served on October 14, 2024, and any additional references identified thereafter. For each Prior Art reference, state: (a) whether the reference is asserted under 35 U.S.C. § 102 (anticipation), 35 U.S.C. § 103 (obviousness), or both, and the specific subsection of § 102 relied upon (e.g., § 102(a)(1) or § 102(a)(2)); (b) the specific claim(s) of the Asserted Patent against which the reference is asserted; (c) if the reference is asserted under 35 U.S.C. § 103, the combination(s) of references relied upon, and for each combination, the motivation, suggestion, or reason to combine the references, including any evidence of a teaching, suggestion, or motivation in the references themselves or in the knowledge of a person of ordinary skill in the art; and (d) any other statutory or legal basis for invalidity relied upon by Lumicore, including but not limited to 35 U.S.C. § 101 (patent-eligible subject matter), 35 U.S.C. § 112(a) (written description, enablement, or best mode), 35 U.S.C. § 112(b) (definiteness), or 35 U.S.C. § 102(b) (on-sale bar or public-use bar), and the factual basis for each such contention.
INTERROGATORY NO. 11:
Describe in detail Lumicore's contention, as set forth in its P.R. 3-3 Invalidity Contentions, that internal design documents dated 2016–2017 constitute prior conception of the subject matter claimed in the '015 Patent (U.S. Patent No. 11,402,015, filed August 30, 2019, claiming priority to Provisional Application No. 62/499,117, filed April 7, 2017) and that such prior conception predates the effective priority date of the '015 Patent.
Specifically, identify: (a) each Document relied upon to support the prior conception contention, and for each such Document, state its date of creation, author(s), custodian, present location, and Bates number(s) if produced in this litigation; (b) the Person(s) who allegedly conceived the subject matter that Lumicore contends was prior to the invention claimed in the '015 Patent, and the date(s) of such alleged conception; (c) all evidence of corroboration of the alleged conception, including the identity and testimony of corroborating witnesses, laboratory notebooks or entries therein, contemporaneous emails or electronic communications, internal reports, design review meeting minutes, or any other contemporaneous records; (d) any evidence of reduction to practice of the allegedly prior-conceived invention, whether actual or constructive, and the date(s) thereof; and (e) any evidence of diligence in reducing the allegedly prior-conceived invention to practice, including a detailed chronological account of the steps taken between the date of alleged conception and the date of alleged reduction to practice.
INTERROGATORY NO. 12:
State the complete factual basis for Lumicore's counterclaim of inequitable conduct and unenforceability, as asserted in Lumicore's Answer and Counterclaims filed on June 17, 2024 (D.E. 12), including all facts supporting each element of Lumicore's inequitable-conduct defense and counterclaim.
For each alleged act of inequitable conduct, identify: (a) the specific Asserted Patent at issue; (b) the specific information, Prior Art reference(s), or other material that Lumicore contends was withheld from, misrepresented to, or otherwise not properly disclosed to the United States Patent and Trademark Office ("USPTO") during prosecution of the Asserted Patent; (c) the identity of the Person(s) who allegedly committed the inequitable conduct, including any named inventor(s), patent prosecutor(s), or other individuals who owed a duty of candor to the USPTO under 37 C.F.R. § 1.56; (d) the basis for Lumicore's contention that the withheld or misrepresented information was material to patentability, including whether Lumicore contends the information would have rendered any claim of the Asserted Patent unpatentable under the "but-for" materiality standard or constitutes affirmative egregious misconduct; (e) the specific evidence of intent to deceive the USPTO, including all facts and circumstances from which Lumicore contends an inference of deceptive intent may be drawn; and (f) all Documents supporting each allegation of inequitable conduct, including the prosecution history of the Asserted Patent(s), communications with the USPTO, prior-art references, internal communications of the named inventors or prosecuting attorneys, and any other evidence relied upon.
INTERROGATORY NO. 13:
For each asserted claim of each Asserted Patent — specifically, Claims 1, 3, 5, 9, and 14 of the '847 Patent; Claims 1, 3, 7, 10, 15, and 18 of the '193 Patent; Claims 1, 4, 6, and 11 of the '562 Patent; and Claims 1, 5, 8, 12, and 16 of the '015 Patent — state the complete factual and legal basis for Lumicore's contention of non-infringement, whether literal or under the doctrine of equivalents.
For each claim limitation of each asserted claim that Lumicore contends is not met, practiced, or infringed by each Accused Product, identify: (a) the specific claim limitation(s) at issue, quoting the relevant claim language; (b) the specific design feature(s), architecture, component(s), structure(s), method step(s), or functionality of the Accused Product that Lumicore contends do not satisfy, meet, or practice the identified claim limitation(s); (c) any design differences between the Accused Product and the claimed invention that Lumicore relies upon to support its non-infringement contention, including a technical description of each such difference; and (d) any claim construction positions or arguments relied upon to support the non-infringement contention.
INTERROGATORY NO. 14:
Identify all Non-Infringing Alternatives to the Accused Products or to any feature, element, component, or aspect of the Accused Products that Lumicore contends practices any claim of any Asserted Patent, that Lumicore contends were available at any time from the second quarter of 2022 (Q2 2022), the hypothetical negotiation date, to the present.
For each Non-Infringing Alternative identified, state: (a) the identity and source of the alternative, including the name and address of the manufacturer, supplier, or developer; (b) a technical description of the alternative and how it differs from the patented feature(s) of the Accused Products; (c) whether the alternative was commercially available during the relevant time period, and if so, when it first became commercially available; (d) the cost, performance characteristics, power consumption, form factor, and overall feasibility of the alternative as compared to the corresponding patented feature(s) of the Accused Products; (e) whether Lumicore considered, evaluated, tested, or adopted the alternative at any time, and if so, the dates and results of such consideration or evaluation; and (f) the reason(s) Lumicore did not adopt the alternative, if applicable, including any technical, commercial, customer-driven, or regulatory reasons.
INTERROGATORY NO. 15:
Describe all efforts undertaken, considered, proposed, or contemplated by Lumicore to Design Around any claim of any Asserted Patent, whether before or after receiving notice of the Asserted Patents through the FairPoint Letters or otherwise.
For each Design-Around effort, state: (a) the date(s) on which the effort was initiated, conducted, or completed; (b) the specific Asserted Patent(s) and specific claim(s) at issue in connection with the effort; (c) the specific Accused Product(s) involved in or targeted by the effort; (d) the identity of all Persons involved in the effort, including engineers, managers, consultants, and counsel; (e) the nature of the proposed modification(s), redesign(s), or alternative approaches considered, with sufficient technical detail to understand the proposed changes; (f) the current status of the effort (i.e., whether it is ongoing, completed, abandoned, or deferred); and (g) the estimated timeline, cost, and technical risk associated with implementing the Design-Around, including any impact on product performance, customer acceptance, or time-to-market.
Without limiting the generality of the foregoing, this Interrogatory specifically encompasses information regarding whether any formal Design-Around analysis was commissioned, conducted, or completed before the commercial launch of the LumiEdge 1600G-LR transceiver module in the fourth quarter of 2023.
INTERROGATORY NO. 16:
For each Accused Product — specifically, the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR — state the following information for each fiscal quarter from the product's initial commercial launch date through the most recently completed fiscal quarter as of the date of Defendant's response:
(a) the total number of units sold;
(b) total net revenue (after deduction of returns, allowances, and discounts);
(c) the average selling price per unit;
(d) total cost of goods sold ("COGS"), including a breakdown of material costs, labor costs, and manufacturing overhead to the extent such breakdown is maintained;
(e) gross profit (net revenue minus COGS) and gross margin percentage;
(f) total number of units imported into the United States, and the port(s) of entry; and
(g) a breakdown of revenue by geographic region, including at a minimum: (i) domestic United States revenue and (ii) international revenue, with international revenue further broken down by major region or country to the extent such data is maintained.
For purposes of this Interrogatory, the expected data periods are as follows: the LumiLink 400G-ZR+ from Q3 2022 (approximately July 2022); the LumiLink 800G-DR8 from Q1 2023 (approximately January 2023); and the LumiEdge 1600G-LR from Q4 2023 (approximately October 2023). Plaintiff's preliminary analysis indicates that total accused-product revenue for fiscal year 2023 was approximately $264.9 million (comprised of approximately $94.8 million for the LumiLink 400G-ZR+, approximately $128.4 million for the LumiLink 800G-DR8, and approximately $41.7 million for the LumiEdge 1600G-LR), and that total accused-product revenue for the infringement period from Q3 2022 through Q1 2024 is estimated at approximately $378.2 million. Defendant is requested to confirm or correct these figures and to provide complete, accurate data responsive to this Interrogatory.
INTERROGATORY NO. 17:
Identify each customer to whom Lumicore has sold, offered for sale, licensed, leased, provided on consignment, or otherwise supplied any Accused Product, including customers located in or having facilities or operations in the Eastern District of Texas.
For each customer, state: (a) the customer's full legal name, address, and principal place of business; (b) the specific Accused Product(s) purchased, ordered, or supplied to that customer; (c) the date(s) of each purchase, order, or supply; (d) the total revenue received by Lumicore from each customer for each Accused Product, broken down by fiscal year and fiscal quarter; and (e) whether the customer has facilities, offices, data centers, or other operations located in the Eastern District of Texas, and if so, the address(es) of such facilities.
Without limiting the generality of the foregoing, this Interrogatory encompasses but is not limited to the following customers believed to have purchased Accused Products and to have operations in or near the Eastern District of Texas: Pinnacle Data Systems, LLC (1800 Judson Road, Longview, TX 75601); Frontier Cloud Services, Inc. (400 East Houston Street, marshall, TX 75670); and CrossPoint Networking Corp. (7500 Dallas Parkway, Suite 200, Plano, TX 75024).
INTERROGATORY NO. 18:
Identify all patent license agreements, cross-license agreements, settlement agreements with license provisions, or other intellectual property licensing arrangements to which Lumicore is or has been a party that relate to silicon-photonics transceiver technology, optical waveguide multiplexing technology, photonic integrated circuit thermal management technology, grating coupler technology, coherent optical signal processing technology, or any other technology relevant to the subject matter of the Asserted Patents.
For each such agreement, state: (a) the identities of all parties to the agreement; (b) the date of execution of the agreement; (c) the specific patent(s) or patent portfolio(s) licensed, including patent numbers where available; (d) the royalty rate and royalty structure (e.g., running royalty as a percentage of net sales, per-unit royalty, lump-sum payment, paid-up license, or a combination thereof); (e) the specific product(s) or product categories licensed under the agreement; (f) the term of the agreement and the geographic territory covered; and (g) any upfront payments, milestone payments, minimum royalties, most-favored-licensee provisions, or other material financial terms.
INTERROGATORY NO. 19:
State Lumicore's total revenue, cost of goods sold, gross profit, gross margin, operating expenses directly allocable, and operating income attributable to each Accused Product for each fiscal year from the product's initial commercial launch through the most recently completed fiscal year as of the date of Defendant's response.
Separately identify and quantify any research and development expenses specifically attributable to the design, development, testing, qualification, or improvement of each Accused Product, broken down by fiscal year, including both internal R&D costs (labor, materials, equipment, and facilities) and external R&D costs (consulting fees, contract research, licensing fees for design tools, and fabrication costs for prototypes or engineering samples).
INTERROGATORY NO. 20:
Identify all marketing materials, sales presentations, product brochures, data sheets, specification sheets, technical white papers, application notes, trade-show materials, press releases, webinar recordings, customer proposals, responses to requests for proposals ("RFPs"), and advertisements created, distributed, or published by or on behalf of Lumicore that relate to any Accused Product.
For each such item, describe: (a) the key features, benefits, and performance characteristics of the Accused Product highlighted or promoted in the material; (b) any comparisons, express or implied, made in the material to OWS products, including the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families, or to any other competing products; and (c) the intended audience, distribution channels, and approximate number of recipients or viewers of the material.
INTERROGATORY NO. 21:
Describe Lumicore's knowledge of, and competitive analysis regarding, OWS's product lines, including the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families, and any other silicon-photonics transceiver products manufactured or sold by OWS.
Specifically, identify: (a) all competitive intelligence reports, market analyses, industry benchmark studies, win/loss reports, or similar analyses prepared by or for Lumicore that reference OWS, its products, its technology, its market share, or its competitive positioning; (b) any teardowns, reverse-engineering analyses, or technical evaluations of OWS products conducted by or for Lumicore, including the identity of the firm or Person(s) who conducted the analysis and the date(s) thereof; (c) all Persons who participated in, reviewed, or were recipients of any such analyses or reports; and (d) the dates on which each such analysis, report, or study was conducted, completed, or distributed within Lumicore.
INTERROGATORY NO. 22:
State whether any Person at Lumicore accessed, reviewed, downloaded, printed, analyzed, or discussed any published patent application or issued patent owned by, assigned to, or exclusively licensed to OWS (including its predecessor, Solara Optics, Inc.) at any time during the design, development, testing, or qualification of any Accused Product.
For each instance of such access, review, download, or analysis, identify: (a) the specific patent application number or issued patent number accessed or reviewed; (b) the Person(s) who accessed, reviewed, or analyzed the application or patent; (c) the date(s) of access, review, or analysis; (d) the purpose of the review or analysis, including whether it was conducted for design purposes, competitive intelligence, freedom-to-operate analysis, or any other purpose; and (e) any actions taken as a result of the review, including but not limited to design modifications to any Accused Product, requests for opinions of counsel, reports to management, or Communications with other Lumicore personnel.
Without limiting the generality of the foregoing, this Interrogatory specifically encompasses Published Application No. US 2018/0123456 (corresponding to the '193 Patent), which Dr. Sandra Michaud, Lumicore's Chief Technology Officer, admitted reviewing during the LumiLink 400G-ZR+ design phase in her deposition taken on November 19, 2024.
INTERROGATORY NO. 23:
Describe in detail Lumicore's operations at its facility located at 2700 Earl Campbell Parkway, Suite 150, Tyler, TX 75701, including:
(a) the nature of the business conducted at the facility (e.g., sales, marketing, technical support, customer service, field applications engineering, distribution, warehousing, research and development, or other functions);
(b) the number of employees currently employed at the facility, and a general description of their roles and responsibilities;
(c) the date on which the facility was opened or commenced operations;
(d) the identities of the customers served from or through the facility;
(e) whether any Accused Products have been demonstrated, displayed, promoted, sold, offered for sale, stored, shipped, distributed, installed, or supported from or through the facility, and if so, the dates and circumstances of each such activity; and
(f) any other Lumicore locations, offices, or facilities in the Eastern District of Texas, including the address, nature of operations, and number of employees at each.
INTERROGATORY NO. 24:
Identify all insurance policies, indemnification agreements, hold-harmless agreements, or other contractual arrangements (including but not limited to directors' and officers' liability insurance, errors and omissions insurance, commercial general liability insurance, intellectual property insurance, or patent infringement insurance) that may provide coverage, defense, or indemnification for any of the claims, counterclaims, or defenses asserted in this action.
For each such policy or agreement, state: (a) the identity of the insurer, indemnitor, or other party providing coverage or indemnification; (b) the policy number, agreement identifier, or other reference number; (c) the effective dates of coverage or the term of the agreement; (d) the coverage limits, including per-occurrence and aggregate limits, and any applicable deductibles, self-insured retentions, or co-insurance provisions; and (e) whether Lumicore has provided notice of this action to the insurer or indemnitor, and if so, the date on which notice was provided and any response received.
INTERROGATORY NO. 25:
Identify each Person, other than counsel of record in this action, whom Lumicore believes has knowledge of facts relevant to any claim, counterclaim, or defense in this action, including but not limited to knowledge relating to the following subject areas:
(a) the design, development, testing, qualification, manufacture, or sale of the Accused Products;
(b) awareness of, knowledge of, or analysis of the Asserted Patents;
(c) prior-art searches, prior-art identification, or invalidity analyses relating to the Asserted Patents;
(d) licensing negotiations or Communications with OWS, FairPoint Licensing Group, LLC, or any other entity regarding the Asserted Patents;
(e) sales, revenue, costs, pricing, profitability, and financial performance of the Accused Products;
(f) marketing, promotion, competitive intelligence, or market analysis relating to the Accused Products or OWS's products;
(g) opinion-of-counsel analyses, freedom-to-operate analyses, or other legal analyses relating to the Asserted Patents;
(h) Design-Around efforts, alternative designs, or non-infringing alternatives;
(i) the factual bases for Lumicore's counterclaims, including its counterclaim of inequitable conduct and unenforceability; and
(j) any other facts material to the claims, defenses, or damages issues in this action.
For each Person identified, state: (i) the Person's full name, current address, current employer, and current job title; (ii) the specific subject matter(s) about which the Person has knowledge, identified by reference to the categories listed above and any other relevant subject areas; and (iii) a brief description of the Person's relevant knowledge, sufficient to convey the nature and scope of the information the Person possesses.
VERIFICATION
Defendant Lumicore Technologies, Inc. is hereby instructed that its responses to these Interrogatories must be verified under oath by an officer or duly authorized agent of Lumicore Technologies, Inc., as required by Federal Rule of Civil Procedure 33(b)(3) and 33(b)(5). The verification shall state that the responses are true and correct to the best of the knowledge, information, and belief of the person verifying the responses, formed after a reasonable inquiry.
Respectfully submitted,
August 26, 2024
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (CA Bar No. 298114) Admitted pro hac vice, E.D. Tex. 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801
Email: anglo@calderwoodharkness.com
Marcus Delgado (TX Bar No. 24087652; CA Bar No. 310478) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801
Email: mdelgado@calderwoodharkness.com
Wendy Schultz (CA Bar No. 325891) Admitted pro hac vice, E.D. Tex. 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801
Email: wschultz@calderwoodharkness.com
Omar Siddiqui (CA Bar No. 331204) Admitted pro hac vice, E.D. Tex. 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801
Email: osiddiqui@calderwoodharkness.com
Counsel for Plaintiff Optiwave Semiconductor Corp.
LOCAL COUNSEL:
WHITMORE & CALLAHAN LLP
By: ________
James "Jim" Callahan (TX Bar No. 18904327) 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-2100 Facsimile: (903) 555-2101
Email: jcallahan@whitmorecallahan.com
Local Counsel for Plaintiff Optiwave Semiconductor Corp.
CERTIFICATE OF SERVICE
I hereby certify that on August 26, 2024, I caused a true and correct copy of the foregoing Plaintiff Optiwave Semiconductor Corp.'s First Set of Interrogatories to Defendant Lumicore Technologies, Inc. to be served on all counsel of record via the Court's CM/ECF electronic filing system, and additionally via email, to the following:
Catherine "Kate" Rourke Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701
Email: crourke@hvclegal.com
Darren Cho Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701
Email: dcho@hvclegal.com
Samantha Briggs Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701
Email: sbriggs@hvclegal.com
Rohan Iyer Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701
Email: riyer@hvclegal.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.
By: ________
Wendy Schultz CALDERWOOD & HARKNESS LLP
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff,
v. | Civil Action No. 2:24-cv-00319-JRG
LUMICORE TECHNOLOGIES, INC., | Judge James R. Gilstrap
Defendant.

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

INSTRUCTIONS

DEFINITIONS

INTERROGATORIES

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VERIFICATION

CALDERWOOD & HARKNESS LLP

LOCAL COUNSEL:

WHITMORE & CALLAHAN LLP

CERTIFICATE OF SERVICE

OPTIWAVE SEMICONDUCTOR CORP.,

Record

Parties

Dates

Amounts