UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff,
v.
LUMICORE TECHNOLOGIES, INC.,
Defendant.
Civil Action No. 2:24-cv-00319-JRG
JURY TRIAL DEMANDED
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS TO DEFENDANT LUMICORE TECHNOLOGIES, INC.
(Request Nos. 1–85)
August 26, 2024
PRELIMINARY STATEMENT
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 Requests for Production of Documents and Things (Nos. 1–85) to Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant"), pursuant to Rules 26 and 34 of the Federal Rules of Civil Procedure, the Local Rules of the United States District Court for the Eastern District of Texas, and the Patent Rules adopted by the Court.
These Requests relate to the claims and defenses asserted in OWS's Original Complaint (D.E. 1), filed on April 22, 2024, alleging that Lumicore has infringed and continues to infringe U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent") (collectively, the "Asserted Patents"). The Asserted Patents cover, among other things, advanced waveguide multiplexer architectures for silicon-photonic transceivers, micro-channel heat-sink structures integrated with photonic integrated circuits, polarization-diverse grating coupler designs, and coherent optical transceiver architectures employing heterogeneous integration on silicon substrates.
The accused products include the LumiLink 400G-ZR+ transceiver module, the LumiLink 800G-DR8 transceiver module, and the LumiEdge 1600G-LR transceiver module (collectively, the "Accused Products"). OWS's Complaint alleges that each of the Accused Products infringes one or more claims of the Asserted Patents, and that Lumicore's infringement has been willful.
OWS notes that the Court entered a Stipulated Protective Order on or about August 19, 2024 (D.E. 38), establishing a three-tier confidentiality framework consisting of "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code" designations. That Protective Order governs the production and handling of all confidential and proprietary materials exchanged in this litigation, and OWS expects Lumicore to produce responsive documents in accordance with its terms.
OWS reserves its right to propound additional requests for production, interrogatories, and requests for admission as discovery progresses and as permitted under the Federal Rules and the Court's Scheduling Order (D.E. 27).
INSTRUCTIONS
Instruction No. 1: Time Period. Unless otherwise specified in a particular Request, these Requests cover the period from January 1, 2014 to the present. Where a specific Request specifies a different or more limited time period, that specification controls over this general instruction.
Instruction No. 2: Compliance with Federal Rules. Lumicore's responses to these Requests shall comply fully with Federal Rules of Civil Procedure 26 and 34, with the Local Rules of the United States District Court for the Eastern District of Texas, and with the Patent Rules adopted by the Court. All documents shall be produced in the form specified in the ESI Protocol Agreement dated August 15, 2024, as agreed upon by the parties, including native-format production for source code, CAD files, mask layout files, RTL schematics, and firmware, and TIFF plus load file production with Relativity-compatible metadata for all other documents and electronically stored information.
Instruction No. 3: Possession, Custody, or Control. As used herein, "documents" includes all documents and electronically stored information ("ESI") in Lumicore's possession, custody, or control. The phrase "possession, custody, or control" is to be construed broadly and includes documents held by Lumicore's officers, directors, employees, agents, consultants, outside counsel, and any other person or entity acting on Lumicore's behalf or subject to Lumicore's legal right to obtain documents upon demand. Without limiting the generality of the foregoing, Lumicore's obligation to search for and produce responsive documents extends to documents held by or in the possession of Hawthorne Vega & Cruz LLP, Trask Eddington LLP, Marlowe Asset Management Patent Analytics, Inc., Brennan Kellogg & Associates LLP, Silverstone Capital Markets LLC, and any contract manufacturers, foundry partners, outsourced semiconductor assembly and test ("OSAT") providers, or design houses that have performed work on behalf of Lumicore in connection with the Accused Products or the subject matter of this litigation.
Instruction No. 4: Non-Privileged Documents and Privilege Log. If any document responsive to these Requests is withheld in whole or in part, or redacted, on the basis of any claim of privilege—including, without limitation, the attorney-client privilege, the work-product doctrine, or any other privilege or immunity from disclosure—Lumicore shall provide a privilege log in compliance with Federal Rule of Civil Procedure 26(b)(5)(A) and any applicable orders of the Court, identifying each such document with sufficient detail to permit OWS to assess the validity of the claimed privilege. Such identification shall include, at a minimum, the date of the document, its author(s) and recipient(s), the general subject matter of the document, and the specific privilege or protection claimed.
Instruction No. 5: Continuing Obligation to Supplement. These Requests impose a continuing obligation upon Lumicore to supplement its responses and productions in a timely manner pursuant to Federal Rule of Civil Procedure 26(e). If Lumicore learns that any prior response is incomplete or incorrect, Lumicore shall promptly supplement or correct its response.
Instruction No. 6: Document Preservation. All documents responsive to these Requests, and all documents that may be responsive, shall be preserved in their entirety, including all metadata, embedded data, and electronically stored information in native format. Such documents shall not be altered, modified, destroyed, deleted, or discarded. This instruction is intended to supplement and reinforce Lumicore's independent obligation to preserve relevant evidence, which arose no later than January 15, 2023, when FairPoint Licensing Group, LLC, sent its initial licensing letter to Lumicore on behalf of OWS.
Instruction No. 7: Organization of Production. Documents shall be produced either as they are kept in the usual course of business—maintaining their original file structure, folder organization, and custodian designations—or shall be organized and labeled to correspond to the categories and specific Request numbers set forth herein, in accordance with Federal Rule of Civil Procedure 34(b)(2)(E).
DEFINITIONS
Definition No. 1: "Lumicore," "Defendant," or "You." As used herein, "Lumicore," "Defendant," or "You" refers to Lumicore Technologies, Inc., together with its predecessors, successors, parents, subsidiaries, divisions, affiliates, and each of their present and former officers, directors, employees, agents, consultants, representatives, and any other person or entity acting or purporting to act on their behalf. Without limiting the generality of the foregoing, "Lumicore" includes but is not limited to: Chief Executive Officer Thomas "Tom" Kessler; Chief Technology Officer Dr. Sandra Michaud; General Counsel Raymond Bautista; Vice President of Product Development Dr. Eric Dalmqvist; Chief Financial Officer Janet Moreno; and all engineers, scientists, product managers, marketing personnel, sales personnel, and any other individuals involved in the design, development, testing, manufacture, marketing, sale, or distribution of the Accused Products.
Definition No. 2: "OWS" or "Plaintiff." As used herein, "OWS" or "Plaintiff" refers to Optiwave Semiconductor Corp., together with its predecessors (including Solara Optics, Inc., to the extent relevant to chain of title, prosecution history, or the technology at issue in this litigation), successors, subsidiaries, divisions, and affiliates.
Definition No. 3: "Asserted Patents." As used herein, "Asserted Patents" refers to U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent"), together with all related applications, whether provisional, non-provisional, continuation, divisional, or continuation-in-part, all prosecution histories, file wrappers, office actions, amendments, declarations, information-disclosure statements, and all documents submitted to or received from the United States Patent and Trademark Office in connection with the prosecution of any of the Asserted Patents or their related applications.
Definition No. 4: "Accused Products." As used herein, "Accused Products" refers to the LumiLink 400G-ZR+ transceiver module, the LumiLink 800G-DR8 transceiver module, and the LumiEdge 1600G-LR transceiver module product families, including all versions, variants, revisions, configurations, prototypes, engineering samples, pre-production units, and any successor, derivative, or next-generation products incorporating substantially similar technology, architecture, or design elements as the foregoing products. The term "Accused Products" also includes any subcomponents, subsystems, or modules incorporated within the foregoing products that practice or embody the claimed inventions of the Asserted Patents.
Definition No. 5: "Document" or "Documents." As used herein, "Document" or "Documents" shall be given the broadest meaning permissible under Federal Rule of Civil Procedure 34(a) and includes, without limitation, writings, drawings, graphs, charts, photographs, audio recordings, video recordings, spreadsheets, databases, emails, text messages, instant messages, Meridian Solutions messages, Northgate Data Systems messages, voicemails, presentations, memoranda, reports, studies, analyses, specifications, schematics, block diagrams, CAD files, mask layout files (including GDS-II and OASIS format files), RTL files, Verilog and VHDL source code, netlists, firmware, source code, object code, meeting minutes, agendas, notes, correspondence, contracts, agreements, invoices, purchase orders, bills of materials, and all other forms of electronically stored information, regardless of the medium on which they are stored.
Definition No. 6: "Communication" or "Communications." As used herein, "Communication" or "Communications" means every manner of transmitting, exchanging, or conveying information between two or more persons, whether oral, written, or electronic, and includes without limitation telephone calls, video conferences, in-person conversations, letters, emails, text messages, instant messages, and any other form of information exchange.
Definition No. 7: "Relating to" or "Concerning." As used herein, "relating to" or "concerning" means referring to, describing, evidencing, constituting, mentioning, reflecting, pertaining to, containing, analyzing, discussing, supporting, contradicting, or having any logical connection to the subject matter of the Request in which the phrase appears.
Definition No. 8: "Person." As used herein, "Person" means any natural person, corporation, partnership, limited liability company, association, joint venture, governmental entity, or other legal entity.
Definition No. 9: "Identify" (as to a document). When a Request asks Lumicore to "identify" a document, Lumicore shall state the document's author(s), recipient(s), date, type or nature of the document, general subject matter, and Bates or production number (if the document has been or will be produced).
Definition No. 10: "Identify" (as to a person). When a Request asks Lumicore to "identify" a person, Lumicore shall state the person's full name, job title or position, employer or organizational affiliation, and last known business address.
REQUESTS FOR PRODUCTION
Category A: Design, Engineering, and Technical Documents for Accused Products
REQUEST FOR PRODUCTION NO. 1:
All design documents, engineering specifications, design reviews, design notebooks, technical reports, and engineering change orders relating to the design, development, testing, qualification, and manufacture of the LumiLink 400G-ZR+ transceiver module, from initial concept through current production, including all versions and revisions thereof.
REQUEST FOR PRODUCTION NO. 2:
All design documents, engineering specifications, design reviews, design notebooks, technical reports, and engineering change orders relating to the design, development, testing, qualification, and manufacture of the LumiLink 800G-DR8 transceiver module, from initial concept through current production, including all versions and revisions thereof.
REQUEST FOR PRODUCTION NO. 3:
All design documents, engineering specifications, design reviews, design notebooks, technical reports, and engineering change orders relating to the design, development, testing, qualification, and manufacture of the LumiEdge 1600G-LR transceiver module, from initial concept through current production, including all versions and revisions thereof.
REQUEST FOR PRODUCTION NO. 4:
All CAD files, photonic integrated circuit ("PIC") layout files, mask layout files (in GDS-II, OASIS, or equivalent format), and photonic-IC design-rule check ("DRC") reports for the Accused Products, including all design revisions and tape-out versions. These documents shall be produced in native format pursuant to the ESI Protocol Agreement dated August 15, 2024, and shall be designated under the "Highly Confidential — Source Code" tier of the Stipulated Protective Order.
REQUEST FOR PRODUCTION NO. 5:
All RTL (register-transfer level) schematics, Verilog and/or VHDL source code, netlists, and firmware source code for any digital control circuitry, digital signal processing ("DSP") modules, or ASIC/FPGA components integrated into or used in connection with the Accused Products. These documents shall be produced in native format and designated under the "Highly Confidential — Source Code" tier of the Stipulated Protective Order.
REQUEST FOR PRODUCTION NO. 6:
All documents relating to the waveguide multiplexer or wavelength-division multiplexing ("WDM") structures used in or incorporated into the Accused Products, including without limitation arrayed waveguide gratings ("AWGs"), echelle gratings, ring resonators, Mach-Zehnder interferometers, or any other optical multiplexing or demultiplexing component. This Request encompasses design documents, simulation results, fabrication specifications, performance data, and any comparative analyses of alternative multiplexer architectures.
REQUEST FOR PRODUCTION NO. 7:
All documents relating to the thermal management structures, micro-channel heat sinks, embedded cooling channels, or thermal dissipation systems used in or incorporated into the Accused Products, including specifications for channel dimensions, hydraulic diameter, cooling fluid composition and flow rates, thermal resistance calculations, computational fluid dynamics ("CFD") simulations, and measured thermal performance data.
REQUEST FOR PRODUCTION NO. 8:
All documents relating to the grating coupler designs used in or incorporated into the Accused Products, including polarization-diverse grating couplers, two-dimensional grating couplers, sub-wavelength grating structures, and any polarization-splitting elements. This Request encompasses design specifications, fabrication process parameters, coupling-efficiency data, bandwidth measurements, and any comparative analyses of alternative coupling approaches.
REQUEST FOR PRODUCTION NO. 9:
All documents relating to the coherent optical transceiver architecture, coherent detection modules, modulation schemes (including but not limited to DP-QPSK, DP-16QAM, and probabilistic constellation shaping), and silicon-substrate integration techniques used in or incorporated into the Accused Products. This Request encompasses system-architecture specifications, optical-link budget analyses, signal-processing algorithms, and design-trade-off studies.
REQUEST FOR PRODUCTION NO. 10:
All documents relating to heterogeneous integration, hybrid bonding, wafer bonding, flip-chip bonding, or monolithic fabrication processes used in the manufacture of the Accused Products, including process-flow documents, fabrication recipes, foundry process-design kits ("PDKs"), foundry agreements, foundry specifications, and any correspondence with foundry partners regarding process development or customization for Lumicore's products.
REQUEST FOR PRODUCTION NO. 11:
All product datasheets, technical specifications sheets, application notes, reference designs, and white papers for the Accused Products, whether published externally (including on Lumicore's website, at trade shows, or through distributor channels) or maintained solely for internal use.
REQUEST FOR PRODUCTION NO. 12:
All test reports, characterization data, performance benchmarking data, and qualification test results for the Accused Products, including without limitation optical insertion loss measurements, polarization-dependent loss ("PDL") data, thermal performance measurements, junction-temperature data, bit-error-rate ("BER") testing results, signal-to-noise ratio ("SNR") measurements, optical signal-to-noise ratio ("OSNR") data, and compliance testing for MSA (multi-source agreement) standards and Telcordia/GR-468 reliability requirements.
REQUEST FOR PRODUCTION NO. 13:
All documents relating to prototypes, engineering samples, alpha versions, beta versions, or pre-production units of the Accused Products, including all design iterations, test results, failure analyses, and internal evaluations or reports discussing the readiness of such prototypes for production release.
REQUEST FOR PRODUCTION NO. 14:
All fabrication run data, wafer-level test data, die-sort data, yield data, and manufacturing records for the Accused Products, including records from any contract foundry, outsourced semiconductor assembly and test ("OSAT") provider, or third-party manufacturing partner. This Request also encompasses wafer-acceptance test criteria, known-good-die specifications, and packaging/module assembly records.
REQUEST FOR PRODUCTION NO. 15:
All documents identifying or describing any differences between successive design revisions of each Accused Product, including but not limited to the reasons for each design change, engineering change notices ("ECNs"), engineering change requests ("ECRs"), and any analysis of whether any design change was made in whole or in part to avoid, work around, or address any patent—including the Asserted Patents or any other OWS patent or patent application.
REQUEST FOR PRODUCTION NO. 16:
All documents relating to any design-around efforts, redesign analyses, or alternative designs considered, evaluated, or implemented for the Accused Products or any component thereof, including any such analysis undertaken in response to OWS's patents, the Asserted Patents, or FairPoint Licensing Group, LLC's correspondence on behalf of OWS. This Request includes documents reflecting the technical feasibility, cost, timeline, and performance impact of any proposed design-around approach.
REQUEST FOR PRODUCTION NO. 17:
All block diagrams, system-level architecture diagrams, functional block diagrams, and optical-link-budget analyses for each Accused Product, including all versions and revisions of such diagrams and analyses.
REQUEST FOR PRODUCTION NO. 18:
All documents identifying the bill of materials ("BOM") for each Accused Product, including component suppliers, vendor part numbers, Lumicore internal part numbers, per-unit costs for each component, and any cost-reduction initiatives or value-engineering changes to the BOM.
REQUEST FOR PRODUCTION NO. 19:
All documents relating to Lumicore's selection, evaluation, licensing, or use of any third-party intellectual property, IP cores, design libraries, or licensed technology incorporated into the Accused Products, including license agreements, evaluation reports, royalty schedules, and correspondence with IP licensors.
REQUEST FOR PRODUCTION NO. 20:
All R&D meeting minutes, engineering team meeting minutes, design review meeting agendas and notes, technical advisory board meeting records, and project management documentation—including Jira tickets, confluence pages, Sterling Reach Services Inc. tasks, or records from any equivalent project-tracking or collaboration system—relating to the development of the Accused Products.
Category B: Prior Art and Patent Awareness
REQUEST FOR PRODUCTION NO. 21:
All documents relating to Lumicore's awareness of, knowledge of, review of, or analysis of OWS's patents or patent applications, including but not limited to the Asserted Patents, any published applications related thereto (including Published Application No. US 2018/0123456), and any other OWS patents or applications that Lumicore identified, reviewed, or considered in connection with its product development, competitive intelligence, or intellectual property strategy.
REQUEST FOR PRODUCTION NO. 22:
All documents relating to any prior-art searches conducted by or on behalf of Lumicore relating to waveguide multiplexing, silicon photonic transceivers, micro-channel heat sinks for photonic integrated circuits, polarization-diverse grating couplers, coherent optical transceiver architectures, or heterogeneous integration on silicon substrates, including searches conducted by Marlowe Asset Management Patent Analytics, Inc. or any other prior-art search firm, patent analyst, or patent attorney.
REQUEST FOR PRODUCTION NO. 23:
All documents relating to any freedom-to-operate ("FTO") analyses, patent clearance studies, patent landscape studies, patent-risk assessments, or right-to-practice studies conducted by or on behalf of Lumicore relating to the Accused Products or the technologies embodied therein, including any such analyses conducted by Hawthorne Vega & Cruz LLP, Trask Eddington LLP, Marlowe Asset Management Patent Analytics, Inc., or any other law firm, consultancy, or advisor.
REQUEST FOR PRODUCTION NO. 24:
All documents relating to any opinion-of-counsel letters, attorney opinion letters, or legal opinions obtained by Lumicore concerning infringement, validity, enforceability, or scope of the Asserted Patents, including any drafts of such opinions and all communications relating to the commissioning, preparation, review, and dissemination of such opinions. OWS asserts that Lumicore has waived any claim of privilege over such opinion letters by virtue of its reference to "competent legal opinions" in its July 10, 2023 declination letter and by its assertion of an advice-of-counsel defense in this litigation. OWS reserves all arguments regarding the scope of any such waiver and refers the Court to its pending Motion to Compel (D.E. 40).
REQUEST FOR PRODUCTION NO. 25:
All documents relating to Lumicore's internal discussions, analyses, or assessments of the validity, enforceability, or claim scope of the Asserted Patents, including any memoranda, presentations, emails, or other communications among Lumicore's officers, directors, employees, engineers, or technical staff discussing the Asserted Patents' claims, specification, or prosecution history.
REQUEST FOR PRODUCTION NO. 26:
All documents relating to the prior-art references identified in Lumicore's Patent Rule 3-3 Invalidity Contentions served on October 14, 2024, including but not limited to the following references and all documents relating thereto:
(a) Takahashi et al., "Dense WDM Silicon Photonic MUX," IEEE Photonics Technology Letters, March 2014;
(b) U.S. Patent No. 8,412,007 to Bergmann;
(c) International Publication No. PCT/EP2015/071234 to Simonsen;
(d) Dr. Li Wei, "Thermal Solutions for PICs," Optical Fiber Communication Conference (OFC) 2013, conference paper;
(e) All other prior-art references cited in Lumicore's P.R. 3-3 Invalidity Contentions (totaling twenty-three references); and
(f) All analyses, claim charts, expert reports, or internal memoranda discussing or evaluating the applicability of any of the foregoing prior-art references to the Asserted Patents.
REQUEST FOR PRODUCTION NO. 27:
All documents relating to Lumicore's prior-conception defense as to the '015 Patent, including all internal design documents, laboratory notebooks, engineering records, prototype specifications, test data, and any other documents dated 2016–2017 or any other period that Lumicore contends evidence prior conception of the inventions claimed in U.S. Patent No. 11,402,015. This Request also encompasses all documents corroborating such prior conception, including documents signed, witnessed, or reviewed by any person other than the alleged inventor(s), and all documents reflecting diligence toward reduction to practice.
REQUEST FOR PRODUCTION NO. 28:
All documents reflecting or relating to any communications between Lumicore employees—including but not limited to Dr. Sandra Michaud, Dr. Eric Dalmqvist, and Melissa Chen—and any third parties regarding OWS's patents, patent applications, or patented technologies.
REQUEST FOR PRODUCTION NO. 29:
All documents relating to the circumstances under which any Lumicore employee accessed, downloaded, printed, or reviewed any OWS patent or published patent application, including logs from patent databases (e.g., USPTO PAIR, Severin Industries Patents, Espacenet, Pemberton Data Systems), browser history records, internal email communications, and any reports or summaries generated in connection with such access or review.
REQUEST FOR PRODUCTION NO. 30:
All documents reflecting or relating to any analysis by Lumicore—whether conducted internally or by outside counsel, consultants, or experts—of differences or similarities between the Accused Products (or any component thereof) and the inventions claimed in the Asserted Patents, including any claim-mapping exercises, feature-by-feature comparisons, or element-by-element analyses.
REQUEST FOR PRODUCTION NO. 31:
All documents relating to any inter partes review ("IPR") petitions, post-grant review ("PGR") petitions, or ex parte reexamination requests that Lumicore has considered filing, prepared, or filed (or had prepared or filed on its behalf) against any of the Asserted Patents, including all communications with counsel, draft petitions, prior-art analyses, and any strategic assessments regarding the advisability of filing such proceedings. This Request is subject to Lumicore's privilege assertions, which OWS disputes to the extent that any such privilege has been waived.
REQUEST FOR PRODUCTION NO. 32:
All documents relating to the prosecution history of any Lumicore-owned patents or patent applications covering technology similar to, overlapping with, or derived from the technologies claimed in the Asserted Patents, including file wrappers, office actions, amendments, declarations, information disclosure statements, and any references cited during prosecution.
Category C: Financial and Revenue Documents
REQUEST FOR PRODUCTION NO. 33:
All documents sufficient to show Lumicore's total revenue, broken down by product line and by fiscal quarter, for fiscal years 2021, 2022, 2023, and 2024 (year-to-date through the most recently completed fiscal quarter), including without limitation revenue attributable to each of the Accused Products as a distinct line item.
REQUEST FOR PRODUCTION NO. 34:
All documents sufficient to show the unit sales volume, average selling price ("ASP"), and total revenue for the LumiLink 400G-ZR+ transceiver module, broken down by fiscal quarter, from its commercial launch in the third quarter of 2022 (Q3 2022) through the present.
REQUEST FOR PRODUCTION NO. 35:
All documents sufficient to show the unit sales volume, average selling price, and total revenue for the LumiLink 800G-DR8 transceiver module, broken down by fiscal quarter, from its commercial launch in the first quarter of 2023 (Q1 2023) through the present.
REQUEST FOR PRODUCTION NO. 36:
All documents sufficient to show the unit sales volume, average selling price, and total revenue for the LumiEdge 1600G-LR transceiver module, broken down by fiscal quarter, from its commercial launch in the fourth quarter of 2023 (Q4 2023) through the present.
REQUEST FOR PRODUCTION NO. 37:
All documents sufficient to show the cost of goods sold ("COGS"), gross profit, and gross margin for each Accused Product, broken down by fiscal quarter, from each product's commercial launch through the present.
REQUEST FOR PRODUCTION NO. 38:
All documents sufficient to show Lumicore's operating expenses allocable to the Accused Products, including without limitation research and development expenses, sales and marketing expenses, and general and administrative expenses, broken down by fiscal quarter.
REQUEST FOR PRODUCTION NO. 39:
All documents sufficient to show Lumicore's net profit or net income attributable to the Accused Products, after allocation of all direct costs, indirect costs, and operating expenses, broken down by fiscal quarter.
REQUEST FOR PRODUCTION NO. 40:
All documents relating to Lumicore's pricing strategies, price lists, discount schedules, volume-pricing agreements, promotional pricing programs, and any other pricing structures applicable to the Accused Products, including internal analyses of pricing competitiveness and price-elasticity studies.
REQUEST FOR PRODUCTION NO. 41:
All documents relating to Lumicore's revenue projections, sales forecasts, budget plans, business plans, and financial models for the Accused Products, including projections and forecasts for fiscal years 2024 and 2025, as well as any long-range strategic plans extending beyond 2025.
REQUEST FOR PRODUCTION NO. 42:
All documents relating to the financial impact or projected financial impact of any injunction, exclusion order, product withdrawal, or product redesign relating to the Accused Products, including any analysis of the eighteen-to-twenty-four-month redesign timeline that Lumicore has estimated in its filings, and any assessment of the costs, revenue losses, customer attrition, or competitive harm that would result from such an injunction or redesign.
REQUEST FOR PRODUCTION NO. 43:
All documents sufficient to show the customer-by-customer revenue breakdown for each Accused Product, including the identity of each customer, the total revenue received from each customer, the volume of units sold to each customer, and the geographic location of each customer's facility or point of delivery. This Request is not limited to customers within the Eastern District of Texas but encompasses all customers worldwide.
REQUEST FOR PRODUCTION NO. 44:
All documents relating to Lumicore's initial public offering on the Nasdaq Stock Market in March 2022, including without limitation the prospectus, the S-1 registration statement (and all amendments thereto), and any risk-factor disclosures relating to intellectual property, patent infringement, patent-infringement litigation, the Asserted Patents, OWS, or FairPoint Licensing Group, LLC.
REQUEST FOR PRODUCTION NO. 45:
All analyst reports, investor presentations, earnings call transcripts, quarterly earnings releases, and SEC filings—including Annual Reports on Form 10-K, Quarterly Reports on Form 10-Q, and Current Reports on Form 8-K—in which Lumicore discussed the Accused Products, OWS, FairPoint Licensing Group, any patent-infringement risk, or any patent-infringement litigation, including this action.
REQUEST FOR PRODUCTION NO. 46:
All documents relating to any insurance policies held by Lumicore that may provide coverage for damages, defense costs, or other expenses arising from this litigation, including without limitation directors' and officers' liability insurance policies, comprehensive general liability policies, errors and omissions policies, and any intellectual-property-specific insurance or litigation-risk insurance policies.
REQUEST FOR PRODUCTION NO. 47:
All documents relating to Lumicore's engagement of Silverstone Capital Markets LLC or any other investment bank, financial advisor, or valuation firm in connection with the valuation, financing, strategic assessment, merger, acquisition, or disposition of the Accused Products, Lumicore's silicon-photonics business unit, or Lumicore as a whole.
Category D: Marketing, Sales, and Customer Communications
REQUEST FOR PRODUCTION NO. 48:
All marketing materials, advertising materials, trade-show presentations, trade-show booth materials, press releases, blog posts, social media posts, webinars, and promotional content relating to the Accused Products, including materials prepared for or presented at OFC (Optical Fiber Communication Conference), ECOC (European Conference on Optical Communication), Photonics West, DesignCon, or any other industry event.
REQUEST FOR PRODUCTION NO. 49:
All customer-facing communications—including emails, letters, proposals, quotations, statements of work, slide presentations, and meeting notes—relating to the Accused Products, including without limitation communications with Pinnacle Data Systems, LLC; Frontier Cloud Services, Inc.; CrossPoint Networking Corp.; and all other customers located in or conducting business within the Eastern District of Texas.
REQUEST FOR PRODUCTION NO. 50:
All documents relating to customer evaluations, design-in engagements, qualification processes, and product-selection decisions in which one or more Accused Products competed against, was compared to, or displaced an OWS product, including but not limited to the OWS-400ZR, the OWS-800XR, and the OWS-1600DR transceiver modules. This Request encompasses competitive-analysis reports, win/loss analyses, customer feedback, and any documents discussing the technical or commercial advantages of the Accused Products over OWS products.
REQUEST FOR PRODUCTION NO. 51:
All documents relating to customer complaints, product returns, warranty claims, field-failure reports, root-cause analyses, corrective-action reports, and customer-satisfaction surveys for the Accused Products.
REQUEST FOR PRODUCTION NO. 52:
All documents relating to Lumicore's market share, competitive positioning, or competitive intelligence analyses for silicon-photonic transceiver modules, including any comparisons with OWS, OWS's products, or other competitors such as Drayton Group, Calderon Partners LLC, Tarrant Enterprises, Brightwater Enterprises, or any other company active in the silicon-photonics transceiver market.
REQUEST FOR PRODUCTION NO. 53:
All documents identifying Lumicore's top twenty customers by revenue for the Accused Products and identifying which of those customers also purchase, have purchased, or have evaluated OWS products or products of any OWS predecessor (including Solara Optics, Inc.).
REQUEST FOR PRODUCTION NO. 54:
All documents relating to any exclusive supply agreements, preferred-vendor agreements, sole-source agreements, or long-term purchase commitments between Lumicore and any customer for the Accused Products, including the terms, duration, volume commitments, and pricing provisions of such agreements.
REQUEST FOR PRODUCTION NO. 55:
All documents relating to Lumicore's sales operations, sales team structure, sales-territory assignments, and sales-compensation plans for the Accused Products, including any sales activities conducted from or directed by Lumicore's Tyler, Texas office located at 2700 Earl Campbell Parkway, Suite 150, Tyler, TX 75701, and any sales activities directed at customers within the Eastern District of Texas.
REQUEST FOR PRODUCTION NO. 56:
All documents relating to any requests for proposal ("RFPs"), requests for quotation ("RFQs"), requests for information ("RFIs"), or competitive-bid processes in which the Accused Products were offered, considered, shortlisted, or selected.
REQUEST FOR PRODUCTION NO. 57:
All documents relating to Lumicore's distribution channels, resellers, value-added resellers, distributors, or channel partners for the Accused Products, including distribution agreements, reseller agreements, and any geographic-territory restrictions or exclusivity provisions.
REQUEST FOR PRODUCTION NO. 58:
All documents relating to any next-generation, successor, or derivative products currently in development, under evaluation, or in planning stages that incorporate technology substantially similar to the technology used in the Accused Products, including product roadmaps, development timelines, and any assessments of how such products relate to the Asserted Patents.
Category E: Licensing, Agreements, and IP Transactions
REQUEST FOR PRODUCTION NO. 59:
All documents relating to any patent license agreements to which Lumicore is a party, whether as licensor or licensee, involving patents relating to silicon photonics, optical transceivers, waveguide multiplexers, micro-channel heat sinks, grating couplers, coherent detection, or photonic integrated circuits, including the terms, royalty rates, lump-sum payments, and scope of any such license.
REQUEST FOR PRODUCTION NO. 60:
All documents relating to any communications between Lumicore and FairPoint Licensing Group, LLC, including without limitation:
(a) The January 15, 2023 initial licensing letter from FairPoint Licensing Group to Lumicore;
(b) The February 28, 2023 response letter from Lumicore to FairPoint Licensing Group;
(c) All documents relating to the April 20, 2023 in-person meeting between representatives of Lumicore and FairPoint Licensing Group in Austin, Texas, including meeting agendas, presentation materials, attendee lists, and notes;
(d) The May 15, 2023 supplemental licensing letter from FairPoint Licensing Group to Lumicore, including any claim charts, technical analyses, or other enclosures;
(e) The July 10, 2023 declination letter from Lumicore to FairPoint Licensing Group; and
(f) All other correspondence, communications, or documents exchanged between Lumicore and FairPoint Licensing Group at any time.
REQUEST FOR PRODUCTION NO. 61:
All documents relating to any internal discussions, analyses, meetings, or assessments conducted by Lumicore in response to FairPoint Licensing Group's licensing overtures, including internal memoranda, presentations, analyses, recommendations, and communications among Lumicore's officers, directors, employees, in-house counsel, and outside counsel regarding the licensing offer, the Asserted Patents, and the decision whether to accept or decline the license.
REQUEST FOR PRODUCTION NO. 62:
All documents relating to Lumicore's July 10, 2023 letter declining to take a license from OWS and referencing "competent legal opinions" that Lumicore's products do not infringe the Asserted Patents, including all drafts of that letter, all communications leading to the preparation and issuance of that letter, and all documents reflecting the identity and substance of the "competent legal opinions" referenced therein.
REQUEST FOR PRODUCTION NO. 63:
All documents relating to any cross-license agreements, settlement agreements, consent judgments, or covenant-not-to-sue agreements to which Lumicore is a party that relate to silicon-photonics technology, optical-transceiver patents, or any of the technologies at issue in this litigation.
REQUEST FOR PRODUCTION NO. 64:
All documents relating to any royalty payments made or received by Lumicore under any patent license relating to the technologies at issue in this case, including royalty statements, payment records, accounting entries, and any calculations of royalty amounts.
REQUEST FOR PRODUCTION NO. 65:
All documents relating to Lumicore's acquisition, assignment, purchase, or licensing of any third-party patents or patent applications relating to the technologies at issue, including any agreements with universities, research institutions, national laboratories, or former employers of Lumicore's founders or key engineers.
REQUEST FOR PRODUCTION NO. 66:
All documents relating to any joint-development agreements, collaboration agreements, cooperative research and development agreements ("CRADAs"), or research partnerships between Lumicore and any foundry, design house, university, or research partner relating to the technologies used in the Accused Products.
REQUEST FOR PRODUCTION NO. 67:
All documents relating to any indemnification obligations that Lumicore has assumed toward, or received from, customers, suppliers, foundries, distributors, or partners in connection with intellectual-property-infringement claims relating to the Accused Products, including the terms, scope, and any invocations of such indemnification obligations.
Category F: Non-Infringing Alternatives and Design-Around Analysis
REQUEST FOR PRODUCTION NO. 68:
All documents relating to any non-infringing alternative designs, workaround designs, or substitute technologies for the waveguide multiplexer structures used in the Accused Products, including any alternative WDM architectures, multiplexer designs, or demultiplexer designs that Lumicore evaluated, prototyped, or implemented as potential alternatives to the structures accused of infringing the Asserted Patents.
REQUEST FOR PRODUCTION NO. 69:
All documents relating to any non-infringing alternative designs, workaround designs, or substitute technologies for the thermal management or micro-channel heat-sink structures used in the Accused Products, including any alternative cooling architectures, heat-dissipation approaches, or thermal-management solutions that Lumicore evaluated, prototyped, or implemented.
REQUEST FOR PRODUCTION NO. 70:
All documents relating to any non-infringing alternative designs, workaround designs, or substitute technologies for the grating coupler structures used in the Accused Products, including any alternative fiber-to-chip coupling approaches, edge couplers, or other optical-coupling architectures that Lumicore evaluated, prototyped, or implemented.
REQUEST FOR PRODUCTION NO. 71:
All documents relating to any non-infringing alternative designs, workaround designs, or substitute technologies for the coherent optical transceiver architecture used in the Accused Products, including any alternative coherent-detection schemes, modulation architectures, or integration approaches that Lumicore evaluated, prototyped, or implemented.
REQUEST FOR PRODUCTION NO. 72:
All documents relating to any cost analysis, timeline analysis, or feasibility analysis for redesigning the Accused Products to avoid the Asserted Patents, including documents relating to the eighteen-to-twenty-four-month redesign timeline referenced in Lumicore's filings, the estimated engineering costs, the anticipated performance impacts, and any assessment of customer acceptance of a redesigned product.
Category G: Personnel and Witness-Related Documents