Dear Samantha,
I write to memorialize the substance of the three meet-and-confer conferences held between counsel for Plaintiff Optiwave Semiconductor Corp. ("OWS") and counsel for Defendant Lumicore Technologies, Inc. ("Lumicore") regarding OWS's request for the production of opinion-of-counsel letters referenced by Lumicore during pre-suit licensing discussions and implicated by Lumicore's defense posture in this litigation. This correspondence is sent pursuant to the meet-and-confer obligations set forth in the Local Rules of the Eastern District of Texas and Federal Rule of Civil Procedure 37(a)(1).
As detailed below, despite good-faith efforts over three separate conferences, the parties have been unable to resolve this dispute. Accordingly, if the dispute is not resolved within seven days of the date of this correspondence — i.e., by October 21, 2024 — OWS intends to file a Motion to Compel Production of the opinion-of-counsel letters before Judge Gilstrap.
**I. Background — The Opinion Letters at Issue**
On August 26, 2024, OWS served its First Set of Requests for Production of Documents to Lumicore. Request Nos. 71 through 74 sought production of all opinion-of-counsel letters, memoranda, and related communications concerning the validity, enforceability, or infringement of 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"), respectively.
Lumicore served its responses and objections to OWS's First Set of Requests for Production on or about October 7, 2024. In response to RFP Nos. 71–74, Lumicore objected on the grounds of attorney-client privilege and work-product protection and withheld all responsive documents in their entirety.
The existence of responsive opinion letters is not speculative. In a letter dated July 10, 2023, addressed to FairPoint Licensing Group, LLC (attention: Angela Reeves) and to Rebecca Tanaka, General Counsel of OWS, Lumicore declined to take a license under OWS's patents and affirmatively stated that it had obtained "competent legal opinions" concluding that its products do not infringe OWS's asserted patents. That letter was sent in response to two licensing letters from FairPoint Licensing Group — the first dated January 15, 2023, which placed Lumicore on notice of the '847, '193, and '562 Patents, and the second dated May 15, 2023, which additionally identified the '015 Patent. The July 10, 2023 declination letter thus confirmed that Lumicore obtained opinion-of-counsel letters addressing some or all of the patents-in-suit after receiving actual notice of those patents.
The relevance of these opinion letters is further underscored by Lumicore's litigation posture. Lumicore's Answer and Counterclaims, filed June 17, 2024 (D.E. 12), assert non-infringement and include affirmative defenses related to non-infringement that place the substance of any such opinions directly at issue. Moreover, Lumicore's post-notice conduct — including the launch of the LumiEdge 1600G-LR product in Q4 2023, after Lumicore had received both FairPoint licensing letters and after Lumicore had purportedly obtained legal opinions — bears directly on OWS's claims of willful infringement under 35 U.S.C. § 284.
**II. Summary of Meet-and-Confer Conference No. 1 — September 25, 2024**
On September 25, 2024, counsel for the parties participated in a telephonic meet-and-confer conference. Participating on behalf of OWS were the undersigned and Omar Siddiqui of Calderwood & Harkness LLP. Participating on behalf of Lumicore were Samantha Briggs and Rohan Iyer of Hawthorne Vega & Cruz LLP.
*OWS's Position.* OWS argued that Lumicore's affirmative reference to "competent legal opinions" in its July 10, 2023 declination letter constitutes a classic sword-and-shield use of privilege. Specifically, OWS contended that Lumicore cannot invoke the existence of favorable legal opinions to resist a willful infringement finding — as it effectively did in the July 10, 2023 letter by communicating to OWS and its licensing agent that Lumicore's continued conduct was supported by legal analysis — while simultaneously refusing to produce those opinions in discovery.
OWS cited the relevance of the opinion letters to OWS's willful infringement claims, particularly in light of the Supreme Court's framework in *Halo Electronics, Inc. v. Pulse Electronics, Inc.*, 579 U.S. 93 (2016), which permits consideration of the accused infringer's subjective state of mind, including whether it acted despite a known risk of infringement. OWS noted that FairPoint Licensing Group's January 15, 2023 letter put Lumicore on actual notice of three of the four asserted patents, and the May 15, 2023 letter added the '015 Patent. Lumicore's post-notice conduct — including the Q4 2023 launch of the LumiEdge 1600G-LR — makes the substance of any opinions Lumicore obtained in that period highly relevant to the willfulness inquiry.
OWS requested that Lumicore either produce the opinion-of-counsel letters responsive to RFP Nos. 71–74 or withdraw any reliance on the existence of those opinions as part of its defense to willful infringement.
*Lumicore's Position.* Lumicore, through Ms. Briggs, maintained that the opinion-of-counsel letters are protected by attorney-client privilege and the work-product doctrine. Lumicore asserted that the mere reference to "competent legal opinions" in the July 10, 2023 letter was not an affirmative assertion of an advice-of-counsel defense and therefore did not constitute a waiver of privilege. Lumicore stated that it had not formally asserted an advice-of-counsel defense in its Answer and Counterclaims (D.E. 12) and reserved its position on whether it would do so. Lumicore declined to produce any responsive documents or to provide a privilege log entry specifically identifying the opinion letters at that time.
*Outcome.* The parties were unable to reach a resolution. OWS requested a follow-up conference.
**III. Summary of Meet-and-Confer Conference No. 2 — October 3, 2024**
On October 3, 2024, the same counsel participated in a second telephonic meet-and-confer conference.
*OWS's Position.* OWS reiterated its request for production and added that Lumicore's failure to include the opinion letters on its privilege log — which had not yet been served as of that date — would compound the dispute if the opinion letters were omitted or described in insufficient detail. OWS noted that under Federal Circuit precedent, including the *In re Seagate Technology, LLC* framework as modified by *Halo*, the question of willful infringement turns on the totality of the circumstances, including whether the accused infringer had a good-faith basis for its conduct. Opinion letters bearing directly on that good-faith basis are discoverable where, as here, the privilege has been waived through the party's own affirmative conduct.
OWS argued that Lumicore's July 10, 2023 letter was a deliberate, strategic communication directed to OWS and its licensing agent that invoked the existence and conclusions of legal opinions to bolster Lumicore's refusal to take a license. This was not a passing or inadvertent reference; it was a considered statement made in the context of an adversarial licensing negotiation, and it placed the opinions at issue and effected at least an implied waiver.
In an effort to resolve the dispute, OWS proposed a compromise: production of the opinion-of-counsel letters to outside counsel only, subject to the three-tier Stipulated Protective Order entered by the Court on August 19, 2024, under the "Highly Confidential — Attorneys' Eyes Only" designation. OWS noted that this protocol would fully protect Lumicore's legitimate confidentiality interests while permitting OWS to evaluate the substance of the opinions for purposes of its willful infringement claims.
*Lumicore's Position.* Lumicore rejected OWS's proposed compromise. Ms. Briggs maintained that no waiver had occurred and that the confidentiality designation under which the documents would be produced was irrelevant to the threshold privilege question. Ms. Briggs stated that Lumicore's reference to "competent legal opinions" in the July 10, 2023 letter was made in a pre-litigation licensing context and was intended as a general statement about the company's diligence in evaluating the patents brought to its attention — not as an assertion of an advice-of-counsel defense. Lumicore stated that it would include the opinion letters on its privilege log when that log was served but would not produce the letters themselves. Lumicore indicated it would consider whether to formally assert or disclaim an advice-of-counsel defense but was not prepared to make that election at that time.
*Outcome.* No resolution was reached. The parties agreed to conduct one final conference before OWS would consider motion practice.
**IV. Summary of Meet-and-Confer Conference No. 3 — October 10, 2024**
On October 10, 2024, the parties held a third and final telephonic meet-and-confer conference. Participating on behalf of OWS were the undersigned and Omar Siddiqui. Participating on behalf of Lumicore was Samantha Briggs; Mr. Iyer was unavailable for this call.
*OWS's Position.* OWS made a final request for production of the opinion-of-counsel letters, noting that the parties had now engaged in three good-faith conferences without resolution and that OWS considered the dispute ripe for judicial intervention.
OWS stated that it would seek an order compelling production of the opinion letters or, in the alternative, an order precluding Lumicore from relying on the existence or substance of any opinion-of-counsel letters in defense of OWS's willful infringement claims — including at any phase of this litigation and at trial.
OWS also noted additional considerations that heighten the relevance and urgency of this dispute. First, the deposition of Raymond Bautista, Lumicore's General Counsel, is scheduled for December 3, 2024. OWS intends to examine Mr. Bautista regarding the commissioning, scope, timing, and recipients of the opinion letters. Lumicore's continued assertion of privilege over the letters will necessarily constrain that testimony and prejudice OWS's ability to develop the record on willfulness. Second, Lumicore's Invalidity Contentions, served today (October 14, 2024), cite twenty-three prior-art references against the asserted patents. It is reasonable to expect that the opinion letters address some or all of these same references, rendering the letters relevant not only to willfulness but also to the substance of Lumicore's invalidity positions and to OWS's understanding of the bases for those positions.
*Lumicore's Position.* Ms. Briggs reiterated Lumicore's position that no waiver has occurred and that the opinion-of-counsel letters remain protected by attorney-client privilege and the work-product doctrine. Ms. Briggs stated that Lumicore has not asserted, and does not intend at this time to assert, an advice-of-counsel defense. However, Lumicore is not willing to make a binding disclaimer that would foreclose that defense permanently. Lumicore refused to produce the opinion letters under any confidentiality designation or protocol.
*Outcome.* The parties reached an impasse and acknowledged that motion practice is the appropriate next step.
**V. OWS's Summary of the Dispute and Legal Basis for Production**
The core dispute is whether Lumicore's affirmative reference to "competent legal opinions" in its July 10, 2023 declination letter, combined with its defense posture in this litigation, constitutes a waiver of attorney-client privilege and/or work-product protection over the opinion-of-counsel letters responsive to RFP Nos. 71–74.
OWS submits that waiver has occurred on at least two independent grounds:
First, *implied waiver by assertion*. Lumicore's July 10, 2023 letter affirmatively invoked the existence and conclusions of opinion-of-counsel letters to justify its continued accused conduct vis-à-vis OWS's patented technology. This is the paradigmatic "sword-and-shield" scenario: a party cannot wield privileged communications offensively — here, to deflect a licensing demand and signal that its conduct is legally justified — while simultaneously shielding those same communications from discovery when the opposing party seeks to test the basis for that assertion.
Second, *at-issue waiver*. To the extent Lumicore's defense to willful infringement rests on its subjective good-faith belief that its products do not infringe the asserted patents — a belief that was allegedly informed by the very opinion letters at issue — the substance of those opinions is placed "at issue" in this litigation. Under *Halo* and its progeny, OWS is entitled to explore the totality of the circumstances bearing on Lumicore's state of mind, including the advice it received and the basis for its post-notice conduct.
OWS notes that if Lumicore is prepared to disclaim reliance on the opinion letters entirely — including any argument, in any phase of this case, that it acted in good faith based on legal advice in deciding to continue its accused conduct — OWS would consider that an acceptable resolution of this dispute, subject to an appropriate order from the Court memorializing Lumicore's disclaimer.
**VI. Request for Lumicore's Final Position**
OWS respectfully requests that Lumicore provide a written response to this correspondence no later than October 18, 2024, confirming one of the following:
(a) Lumicore will produce the opinion-of-counsel letters responsive to RFP Nos. 71–74, under any agreed-upon confidentiality designation pursuant to the Stipulated Protective Order;
(b) Lumicore will make a binding representation, suitable for submission to the Court, that it will not rely on the opinion-of-counsel letters or the advice-of-counsel defense in any phase of this litigation, including in opposition to OWS's willful infringement claims under 35 U.S.C. § 284 and at trial; or
(c) Lumicore maintains its current position, in which case OWS will file its Motion to Compel.
**VII. Reservation of Rights**
OWS reserves all rights to seek relief from the Court, including an award of reasonable attorneys' fees and costs associated with the Motion to Compel under Federal Rule of Civil Procedure 37(a)(5). OWS further reserves the right to submit this correspondence to the Court in support of its demonstration that it has satisfied the meet-and-confer requirements of the Local Rules of the Eastern District of Texas and Rule 37.
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Samantha, please confirm receipt of this correspondence at your earliest convenience. If you or your colleagues at Hawthorne Vega & Cruz wish to discuss any aspect of the foregoing before responding in writing, I am happy to arrange a call. We remain willing to resolve this dispute without motion practice if a path to resolution exists.
Best regards,
Wendy Schultz Lead Associate Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Tel: (213) 555-4820 Email: wschultz@calderwoodharkness.com
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