1014-00004 · Hawthorne Vega & Cruz LLP · Discovery

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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

OPTIWAVE SEMICONDUCTOR CORP.,

Plaintiff,

LUMICORE TECHNOLOGIES, INC.,

Defendant.

Civil Action No. 2:24-cv-00319-JRG

Hon. James R. Gilstrap

PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S RESPONSES AND OBJECTIONS TO DEFENDANT LUMICORE TECHNOLOGIES, INC.'S FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS (NOS. 1–85)

Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its undersigned counsel of record, Calderwood & Harkness LLP and local counsel Whitmore & Callahan LLP, hereby serves its Responses and Objections to Defendant Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") First Set of Requests for Production of Documents (Nos. 1–85), which were served on or about August 26, 2024. These responses are served pursuant to the Federal Rules of Civil Procedure, Rules 26 and 34, the Local Rules of the United States District Court for the Eastern District of Texas, and the Court's Scheduling Order entered August 12, 2024 (D.E. 27). OWS's responses and objections are further subject to the terms and conditions of the Stipulated Protective Order entered in this action (D.E. 34, entered on or about August 19, 2024), which establishes three tiers of confidentiality designation: "Confidential," "Highly Confidential – Attorneys' Eyes Only," and "Highly Confidential – Source Code."

OWS's responses are made without waiving and subject to the General Objections set forth below, each of which is incorporated by reference into every specific response as though stated in full therein.

I. GENERAL OBJECTIONS

OWS asserts the following General Objections to Lumicore's First Set of Requests for Production of Documents. These General Objections are incorporated by reference into each of OWS's specific responses below, and the failure to restate a particular General Objection in any specific response shall not be deemed a waiver of that objection.

A. Scope and Relevance Objections

1. OWS objects to each and every Request to the extent it seeks documents that are not relevant to any party's claim or defense or that are not proportional to the needs of the case, considering the importance of the issues at stake in this action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit, as required by Federal Rule of Civil Procedure 26(b)(1).

2. OWS objects to each and every Request to the extent it is overly broad, unduly burdensome, or not reasonably limited in time, subject matter, or scope. OWS will endeavor to respond to each Request as reasonably construed and will identify the basis for any narrowing construction applied.

B. Privilege and Work-Product Objections

3. OWS objects to each and every Request to the extent it calls for documents or information protected from disclosure by the attorney-client privilege, the work-product doctrine (as set forth in Federal Rule of Civil Procedure 26(b)(3) and Hickman v. Taylor, 329 U.S. 495 (1947)), the common-interest privilege, the joint-defense privilege, or any other applicable privilege, protection, or immunity from discovery recognized under federal or state law. No production of any document shall be construed as a waiver of any applicable privilege or protection, and any inadvertent disclosure of privileged material is subject to the protections of Federal Rule of Evidence 502 and the Stipulated Protective Order.

4. OWS has prepared, and will continue to supplement, a privilege log in accordance with Federal Rule of Civil Procedure 26(b)(5)(A), the Local Rules of the Eastern District of Texas, and the Court's Scheduling Order. OWS's initial privilege log was served on October 31, 2024, and identifies 1,247 documents that have been withheld in whole or redacted in part on the basis of privilege or work-product protection. OWS's supplemental privilege log, served December 15, 2024, adds an additional 318 entries, bringing the total number of privilege-log entries to 1,565. OWS reserves the right to further supplement its privilege log as additional document review is completed and as supplemental productions are made.

5. Without limiting the foregoing, OWS specifically asserts the attorney-client privilege with respect to its prior and ongoing communications with Calderwood & Harkness LLP (litigation counsel), Whitmore & Callahan LLP (local litigation counsel), Cascade IP Advisors, LLC (patent prosecution counsel, with Dr. Martin Chu serving as lead prosecution attorney), and FairPoint Licensing Group, LLC (licensing agent, with Managing Director Angela Reeves acting under the direction and supervision of OWS's General Counsel, Rebecca Tanaka), to the extent such communications convey, request, reflect, or embody legal advice, legal analysis, or litigation strategy. OWS further asserts the work-product doctrine with respect to all documents prepared by or at the direction of counsel in anticipation of this litigation, including but not limited to claim charts, infringement analyses, invalidity assessments, damages analyses, and related memoranda and correspondence.

C. Confidentiality Objections

6. OWS objects to each and every Request to the extent compliance would require the disclosure of trade secrets, proprietary business information, competitively sensitive financial data, or other confidential information without the protections afforded by the Stipulated Protective Order entered in this action (D.E. 34). OWS will designate documents produced in response to Lumicore's Requests at the appropriate tier of confidentiality under the Protective Order — "Confidential," "Highly Confidential – Attorneys' Eyes Only," or "Highly Confidential – Source Code" — as warranted by the nature of the information contained therein. OWS reserves the right to challenge any Request that seeks to compel production of confidential information beyond the scope of what is relevant and proportional under Rule 26(b)(1).

D. "All Documents" / "Each and Every" Objections

7. OWS objects to each and every Request that utilizes the phrases "all documents," "each and every," "any and all," or similar language of universal scope to the extent such language purports to impose an obligation beyond what is reasonable and proportional under the circumstances of this case. OWS will interpret such Requests as requiring a reasonable search for and production of responsive documents, consistent with its obligations under the Federal Rules of Civil Procedure, and will not construe such language as requiring the identification and production of every conceivable document regardless of accessibility, cost, or marginal relevance.

E. Electronically Stored Information (ESI) Objections

8. OWS objects to each and every Request to the extent it purports to require the production of electronically stored information ("ESI") in forms, formats, or from sources not agreed upon in the ESI Protocol Agreement dated August 15, 2024 (the "ESI Protocol"). The ESI Protocol specifies, among other things, that Relativity shall serve as the document review platform; that general documents shall be produced in TIFF image format with associated load files (including extracted text, metadata fields, and Bates numbering); and that source code and related technical files shall be produced in native format at a designated secure facility pursuant to the "Highly Confidential – Source Code" tier of the Stipulated Protective Order.

9. OWS has conducted reasonable searches of relevant custodial and non-custodial data sources, consistent with the ESI Protocol and the parties' agreements as reflected in the Joint discovery Plan and Report (Rule 26(f) Report) filed on July 29, 2024 (D.E. 22). OWS's custodial data sources include the email accounts, local and network drives, and cloud-based repositories of the agreed-upon custodians. OWS's non-custodial data sources include relevant shared drives, document management systems, and financial and engineering databases. OWS objects to the extent any Request seeks ESI from backup tapes, disaster-recovery systems, or other sources that are not reasonably accessible under Federal Rule of Civil Procedure 26(b)(2)(B).

F. Continuing Obligation

10. OWS's responses are based upon information and documents reasonably available to OWS and its counsel as of the date of service of these responses, September 30, 2024. OWS's investigation and document review are ongoing. OWS reserves the right to supplement, amend, or correct its responses as additional information becomes available through continuing investigation, document review, fact and expert depositions, third-party discovery, and other proceedings in this action, consistent with the requirements of Federal Rule of Civil Procedure 26(e) and the Court's Scheduling Order.

G. Reservation of Rights

11. The assertion of any specific objection in response to a particular Request shall not be deemed a waiver of any other objection, whether or not specifically stated, that OWS may assert with respect to that Request or any other Request. The production of documents in response to any Request shall not constitute an admission that any such document is relevant to any claim or defense, authentic, or admissible in evidence at trial or in any other proceeding. OWS expressly incorporates these General Objections by reference into each specific response set forth below.

II. SPECIFIC RESPONSES AND OBJECTIONS

Request for Production No. 1

REQUEST: Produce all documents constituting or relating to the prosecution history of U.S. Patent No. 10,234,847 (the "'847 Patent"), including but not limited to the patent application as filed, all office actions issued by the United States Patent and Trademark Office ("USPTO"), all responses to office actions, all amendments, all declarations, all examiner interview summaries, and all correspondence with the USPTO.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS further objects to this Request to the extent that the phrase "relating to" is vague and overbroad, as it could be construed to encompass documents far beyond the prosecution history itself, including internal analyses, strategic memoranda, and attorney-client communications that do not constitute part of the official prosecution record. OWS further objects to this Request to the extent it seeks documents protected by the attorney-client privilege or the work-product doctrine, including communications between OWS and its prosecution counsel, Cascade IP Advisors, LLC, that reflect legal strategy, legal analysis, or mental impressions of counsel in connection with the prosecution of the '847 Patent.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged documents constituting the prosecution history of U.S. Patent No. 10,234,847, including the application as filed (filing date: September 14, 2016), all office actions, applicant responses, amendments, declarations filed during prosecution, and examiner interview summaries that form part of the official prosecution record before the USPTO. The '847 Patent was prosecuted by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as the lead prosecution attorney. The '847 Patent was issued by the USPTO on March 19, 2019. The original assignee of the '847 Patent is Optiwave Semiconductor Corp. OWS notes that the '847 Patent is in the same patent family as the '562 Patent (U.S. Patent No. 9,678,562), with the '847 Patent being a continuation of the '562 Patent. Responsive, non-privileged documents are produced at Bates range OWS-000001 through OWS-002847.

Request for Production No. 2

REQUEST: Produce all documents constituting or relating to the prosecution history of U.S. Patent No. 10,891,193 (the "'193 Patent"), including but not limited to the patent application as filed, all office actions issued by the USPTO, all responses to office actions, all amendments, all declarations, all examiner interview summaries, and all correspondence with the USPTO.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS interposes the same objections as stated in response to Request for Production No. 1, which are incorporated herein by reference.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged documents constituting the prosecution history of U.S. Patent No. 10,891,193, including the application as filed (filing date: April 7, 2017), all office actions, applicant responses, amendments, declarations, and examiner interview summaries that form part of the official prosecution record before the USPTO. The '193 Patent was issued by the USPTO on January 12, 2021. The original assignee is Optiwave Semiconductor Corp. The '193 Patent claims the benefit of priority to U.S. Provisional Application No. 62/499,117, filed April 7, 2017, which is shared with the '015 Patent (U.S. Patent No. 11,402,015). The '193 Patent was prosecuted by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as the lead prosecution attorney. OWS notes that the prosecution history includes amendments narrowing the "coherent detection module" limitation, which were made in response to a rejection under 35 U.S.C. § 102 over the Takahashi et al. prior art reference. These prosecution history amendments and the corresponding office action and applicant response are included in the production. Responsive, non-privileged documents are produced at Bates range OWS-002848 through OWS-005412.

Request for Production No. 3

REQUEST: Produce all documents constituting or relating to the prosecution history of U.S. Patent No. 9,678,562 (the "'562 Patent"), including but not limited to the patent application as filed, all office actions issued by the USPTO, all responses to office actions, all amendments, all declarations, all examiner interview summaries, and all correspondence with the USPTO.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS interposes the same objections as stated in response to Request for Production No. 1, which are incorporated herein by reference.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged documents constituting the prosecution history of U.S. Patent No. 9,678,562, including the application as filed (original filing date: November 22, 2014), all office actions, applicant responses, amendments, declarations, and examiner interview summaries that form part of the official prosecution record before the USPTO. The '562 Patent was issued by the USPTO on June 13, 2017. The original assignee of the '562 Patent was Solara Optics, Inc. The '562 Patent was subsequently assigned to Optiwave Semiconductor Corp. pursuant to the Asset Purchase Agreement dated June 15, 2018, as part of a portfolio of twelve (12) patents acquired from Solara Optics, Inc. for a total purchase price of $34.5 million. The '562 Patent is in the same patent family as the '847 Patent, with the '847 Patent being a continuation of the '562 Patent. The prosecution file for the '562 Patent was obtained from Cascade IP Advisors, LLC and from Solara Optics records maintained by OWS following the acquisition. Responsive, non-privileged documents are produced at Bates range OWS-005413 through OWS-007890.

Request for Production No. 4

REQUEST: Produce all documents constituting or relating to the prosecution history of U.S. Patent No. 11,402,015 (the "'015 Patent"), including but not limited to the patent application as filed, all office actions issued by the USPTO, all responses to office actions, all amendments, all declarations, all examiner interview summaries, and all correspondence with the USPTO.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS interposes the same objections as stated in response to Request for Production No. 1, which are incorporated herein by reference.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged documents constituting the prosecution history of U.S. Patent No. 11,402,015, including the application as filed (filing date: August 30, 2019), all office actions, applicant responses, amendments, declarations, and examiner interview summaries that form part of the official prosecution record before the USPTO. The '015 Patent was issued by the USPTO on August 2, 2022. The original assignee is Optiwave Semiconductor Corp. The '015 Patent claims the benefit of priority to U.S. Provisional Application No. 62/499,117 (shared with the '193 Patent). The '015 Patent was prosecuted by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as the lead prosecution attorney. OWS notes that the prosecution history includes a narrowing amendment to the "two-dimensional sub-wavelength grating" limitation, which was made in response to a rejection under 35 U.S.C. § 103 combining the references Bergmann (U.S. Patent No. 8,412,007) and Simonsen (PCT/EP2015/071234). These prosecution history amendments and the corresponding office action and applicant response are included in the production. Responsive, non-privileged documents are produced at Bates range OWS-007891 through OWS-010234.

Request for Production No. 5

REQUEST: Produce all documents relating to U.S. Provisional Application No. 62/499,117, filed April 7, 2017, including the provisional application as filed, all supporting documentation, and any communications with the USPTO concerning the provisional application.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to the phrase "relating to" as overbroad to the extent it is construed to encompass documents beyond the provisional application itself and its supporting materials. OWS further objects to this Request to the extent it seeks communications between OWS and its prosecution counsel, Cascade IP Advisors, LLC, that are protected by the attorney-client privilege and relate to legal strategy, claim drafting, or prosecution planning for applications claiming the benefit of this provisional application.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce the U.S. Provisional Application No. 62/499,117 as filed with the USPTO on April 7, 2017, together with any non-privileged supporting documentation, including inventor declarations, technical disclosures, and drawings filed as part of the provisional application. This provisional application is the common parent application from which both the '193 Patent (U.S. Patent No. 10,891,193) and the '015 Patent (U.S. Patent No. 11,402,015) claim the benefit of priority. Responsive, non-privileged documents are produced at Bates range OWS-010235 through OWS-010498.

Request for Production No. 6

REQUEST: Produce all documents evidencing the ownership, assignment, transfer, license, or other disposition of any interest in the asserted patents, from the date of original filing to the present, including but not limited to assignment agreements, recordation documents filed with the USPTO, inventor assignment agreements, and any documents reflecting encumbrances, liens, or security interests.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks documents protected by the attorney-client privilege, including communications between OWS and its legal counsel regarding the acquisition of the '562 Patent from Solara Optics, Inc., to the extent such communications reflect legal advice concerning the transaction, due diligence, or the structuring of the patent assignment.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce assignment records, inventor assignment agreements, recordation documents filed with the USPTO, and other chain-of-title documents for the four asserted patents. Specifically, OWS's production includes the following categories of documents:

(a) Assignment records for the '847 Patent (U.S. Patent No. 10,234,847), the '193 Patent (U.S. Patent No. 10,891,193), and the '015 Patent (U.S. Patent No. 11,402,015), reflecting assignments from the named inventors to Optiwave Semiconductor Corp. as the original assignee;

(b) Assignment of the '562 Patent (U.S. Patent No. 9,678,562) from Solara Optics, Inc. to Optiwave Semiconductor Corp. pursuant to the Asset Purchase Agreement dated June 15, 2018, under which OWS acquired a portfolio of twelve (12) patents from Solara Optics, Inc. for a total purchase price of $34.5 million, with the '562 Patent being among the patents transferred;

(d) Documents confirming that all four asserted patents are currently assigned to and owned by Optiwave Semiconductor Corp., that all maintenance fees are current, and that there are no outstanding liens, encumbrances, or security interests affecting any of the asserted patents.

Responsive, non-privileged documents are produced at Bates range OWS-010499 through OWS-011102.

Request for Production No. 7

REQUEST: Produce all documents relating to OWS's acquisition of patents from Solara Optics, Inc., including but not limited to the Asset Purchase Agreement, all schedules, exhibits, and attachments thereto, closing documents, due diligence materials, post-closing correspondence, and any documents reflecting the negotiation of the transaction.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks attorney-client privileged communications between OWS and its legal counsel regarding the negotiation, structuring, due diligence, and closing of the Solara Optics transaction. OWS further objects to the phrase "relating to" as overbroad to the extent it is construed to encompass every document that tangentially references the Solara Optics acquisition, rather than documents that directly constitute or are part of the transaction itself. OWS will produce the transaction documents themselves and related non-privileged closing and assignment records.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce the following categories of non-privileged documents:

(a) The Asset Purchase Agreement dated June 15, 2018, between Optiwave Semiconductor Corp. and Solara Optics, Inc., together with all schedules, exhibits, and attachments thereto;

(b) The schedule of patents transferred pursuant to the Asset Purchase Agreement, which identifies twelve (12) patents, including the '562 Patent (U.S. Patent No. 9,678,562);

(d) The total purchase price for the portfolio was $34.5 million.

OWS notes that Solara Optics, Inc. was a California corporation that was dissolved in approximately 2020. Remaining archival records of Solara Optics are in the custody of Gregory Falk, who served as Vice President of Engineering at Solara Optics and is currently an independent consultant. Mr. Falk has been identified as one of Plaintiff's industry experts in this case, and OWS has produced the non-privileged Solara Optics records that are in OWS's possession, custody, or control.

Responsive, non-privileged documents are produced at Bates range OWS-011103 through OWS-012456.

Request for Production No. 8

REQUEST: Produce all documents evidencing the payment of maintenance fees for U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015, including receipts, payment records, and correspondence with the USPTO.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS interposes no additional specific objections to this Request beyond the General Objections.

RESPONSE: Subject to and without waiving the General Objections, OWS responds as follows: OWS will produce USPTO maintenance fee payment records and receipts for U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015. OWS confirms that all maintenance fees are current on all four asserted patents as of the date of this response. Responsive documents are produced at Bates range OWS-012457 through OWS-012598.

Request for Production No. 9

REQUEST: Produce all correspondence between OWS (or its agents, representatives, licensors, or other persons or entities acting on its behalf) and Lumicore (or its agents, representatives, or counsel) regarding the licensing, assertion, notice, or enforcement of any of the asserted patents, including but not limited to licensing demand letters, responses, counter-proposals, meeting notes, and related communications.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks documents protected by the attorney-client privilege or the work-product doctrine, including internal communications between OWS, its counsel at Calderwood & Harkness LLP and Whitmore & Callahan LLP, and its licensing agent, FairPoint Licensing Group, LLC, that reflect legal strategy, legal analysis, or the mental impressions of counsel regarding the licensing campaign directed at Lumicore. OWS notes that FairPoint Licensing Group, LLC acted as OWS's licensing agent under the direction and supervision of OWS's General Counsel, Rebecca Tanaka, and in coordination with OWS's outside legal counsel, and that certain communications between FairPoint and OWS reflect or convey privileged legal advice and strategy.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged correspondence between OWS and/or its licensing agent, FairPoint Licensing Group, LLC, on the one hand, and Lumicore and/or its counsel, on the other hand, regarding the licensing and assertion of the asserted patents. Specifically, OWS's production includes:

(a) The initial licensing/notice letter from FairPoint Licensing Group, LLC, dated January 15, 2023, addressed to Raymond Bautista, General Counsel of Lumicore Technologies, Inc., identifying the '847 Patent, the '193 Patent, and the '562 Patent as patents believed to be infringed by Lumicore's products;

(b) Lumicore's response, dated February 28, 2023, transmitted via Lumicore's outside counsel at Hawthorne Vega & Cruz LLP, disputing infringement and questioning the validity of the identified patents;

(c) Non-privileged correspondence regarding the scheduling and logistics of the in-person licensing meeting held on April 20, 2023, in Austin, Texas. That meeting was attended by Angela Reeves (FairPoint Licensing Group, LLC), Rebecca Tanaka (OWS General Counsel), Raymond Bautista (Lumicore General Counsel), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP);

(d) The second licensing letter from FairPoint Licensing Group, LLC, dated May 15, 2023, addressed to Lumicore, which added the '015 Patent (issued August 2, 2022) to the licensing discussion and expanded the list of accused products to include the LumiLink 800G-DR8 transceiver module;

(e) Lumicore's declination letter, dated July 10, 2023, in which Lumicore stated that it had obtained "competent legal opinions" concluding that its products do not infringe the asserted patents and declining to enter into a license agreement.

OWS withholds as privileged all internal communications between OWS, Calderwood & Harkness LLP, and FairPoint Licensing Group, LLC reflecting legal strategy, legal analysis, or the mental impressions of counsel regarding the licensing campaign directed at Lumicore. These withheld documents are identified on OWS's privilege log served October 31, 2024, and the supplemental privilege log served December 15, 2024.

Responsive, non-privileged documents are produced at Bates range OWS-012599 through OWS-013024.

Request for Production No. 10

REQUEST: Produce all documents constituting, reflecting, or relating to OWS's analyses of whether Lumicore's products infringe the asserted patents, including but not limited to claim charts, technical comparisons, reverse-engineering reports, teardown analyses, and internal memoranda.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks documents protected by the attorney-client privilege and/or the work-product doctrine. OWS's internal infringement analyses and claim charts prepared at the direction of counsel, or in anticipation of litigation, are protected attorney work product and are not subject to discovery. OWS specifically objects that claim charts, infringement contentions drafts, and analytical memoranda prepared by or at the direction of Calderwood & Harkness LLP, Whitmore & Callahan LLP, and/or Cascade IP Advisors, LLC constitute opinion work product reflecting the mental impressions, conclusions, opinions, and legal theories of OWS's counsel. These documents are categorically protected from disclosure under Federal Rule of Civil Procedure 26(b)(3)(B).

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce the following categories of non-privileged documents:

(a) Non-privileged portions of OWS's internal engineering team's initial identification of potential Lumicore infringement, which occurred in or about October 2022, to the extent such documents were created in the ordinary course of OWS's business operations (i.e., competitive product monitoring and analysis) and were not prepared at the direction of counsel or in anticipation of litigation;

(b) Teardown reports prepared by Benchmark Semiconductor Analysis, LLC (2244 Mission College Boulevard, Santa Clara, CA 95054; Lead Engineer: Kevin Ng), as follows:

(i) LumiLink 400G-ZR+ teardown report, delivered to OWS on December 12, 2022, which confirmed the presence of accused waveguide multiplexer structures and thermal management micro-channels in the Lumicore product;

(ii) LumiLink 800G-DR8 follow-on teardown report, completed in June 2023;

(iii) LumiEdge 1600G-LR teardown report, completed in February 2024.

OWS withholds as privileged attorney work product all claim charts, draft infringement contentions, and analytical memoranda prepared by or at the direction of counsel in anticipation of this litigation. These withheld documents are identified on OWS's privilege log.

Responsive, non-privileged documents are produced at Bates range OWS-013025 through OWS-015678. Privileged documents are listed on OWS's privilege log.

Request for Production No. 11

REQUEST: Produce all documents relating to OWS's retention of Benchmark Semiconductor Analysis, LLC, including but not limited to engagement letters, statements of work, invoices, purchase orders, all reports and deliverables, and all communications between OWS and Benchmark.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks communications between Benchmark Semiconductor Analysis, LLC and OWS's counsel at Calderwood & Harkness LLP that were made at the direction of counsel in anticipation of litigation, as such communications constitute protected attorney work product. OWS further objects to this Request to the extent the Benchmark engagement was directed, structured, and supervised by OWS's counsel, and documents reflecting counsel's direction to Benchmark constitute protected work product.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged engagement documents reflecting OWS's retention of Benchmark Semiconductor Analysis, LLC (2244 Mission College Boulevard, Santa Clara, CA 95054; Lead Engineer: Kevin Ng). OWS initially retained Benchmark in November 2022 to perform reverse-engineering and teardown analysis of the LumiLink 400G-ZR+ transceiver module. Benchmark's final teardown reports for the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR are included in the production in response to Request for Production No. 10, as cross-referenced above. OWS withholds as privileged communications between Benchmark and OWS's counsel at Calderwood & Harkness LLP to the extent such communications were made at the direction of counsel in anticipation of litigation.

Responsive, non-privileged documents are produced at Bates range OWS-015679 through OWS-016012.

Request for Production No. 12

REQUEST: Produce all documents reflecting OWS's revenue, costs, cost of goods sold, margins, and profitability for products that compete with the accused Lumicore products, including but not limited to the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families, on a product-by-product and quarter-by-quarter basis, from fiscal year 2020 through the present.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to the temporal scope of this Request as overbroad to the extent it seeks financial data predating the earliest launch of the accused Lumicore products in the third quarter of 2022 (Q3 2022). Financial data from periods prior to Q3 2022 has limited relevance to OWS's damages claims. OWS further objects to this Request to the extent it seeks competitively sensitive financial data beyond what is relevant and proportional to the claims and defenses in this action. OWS will produce responsive financial data subject to the "Highly Confidential – Attorneys' Eyes Only" designation under the Stipulated Protective Order.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce product-level financial data for the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families from fiscal year 2021 through the present, including the following categories of information:

(a) Revenue by product line, reported on a quarterly basis;

(b) Cost of goods sold ("COGS") and gross margin data for each product line. OWS's blended gross margin on competing products during the relevant period is approximately 47.3%;

(d) Summary profitability information by product line.

OWS notes that its total revenue for fiscal year 2023 was $487.3 million, and its net income for fiscal year 2023 was $61.4 million, as reflected in OWS's audited financial statements prepared by Gresham & Whitfield LLP. Approximately $310 million of OWS's fiscal year 2023 revenue is attributable to products that practice the asserted patents.

All documents produced in response to this Request are designated HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY under the Stipulated Protective Order.

Responsive documents are produced at Bates range OWS-016013 through OWS-018456.

Request for Production No. 13

REQUEST: Produce all documents reflecting OWS's market share in the silicon-photonics transceiver market, including competitive analyses, market studies, market share assessments, and competitive intelligence reports.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request as overbroad to the extent it seeks all competitive analyses and market studies in OWS's possession regardless of their relevance to the asserted patents or the accused Lumicore products. OWS will produce market analyses and competitive intelligence documents that relate to the specific product categories at issue in this litigation — namely, the 400G-ZR, 800G-DR, and 1600G transceiver module markets.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce market analyses, competitive assessments, and market share data relating to the 400G-ZR, 800G-DR, and 1600G transceiver module markets, including OWS's internal market share assessments for those product segments. OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data-center applications. OWS and Lumicore compete head-to-head for business at twelve (12) of the top twenty (20) hyperscale data-center operators in the United States.

All documents produced in response to this Request are designated HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY under the Stipulated Protective Order.

Responsive documents are produced at Bates range OWS-018457 through OWS-019234.

Request for Production No. 14

REQUEST: Produce all documents identifying OWS's customers for the OWS-400ZR, OWS-800XR, and OWS-1600DR products, including customer names, contract terms, purchase order volumes, and unit volumes shipped, by customer and by quarter.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request on the basis that it seeks the disclosure of highly competitively sensitive customer information. OWS will produce responsive documents under the "Highly Confidential – Attorneys' Eyes Only" designation of the Stipulated Protective Order. OWS further objects to this Request as overbroad to the extent it seeks customer information beyond what is relevant to the parties' damages theories in this litigation, including lost-profits and reasonable-royalty analyses.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce customer-level sales data for its OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module product families for the period from Q3 2022 through the present, in sufficient detail to support the parties' respective damages analyses. The production includes information sufficient to identify customer overlap between OWS and Lumicore in the relevant product markets.

All documents produced in response to this Request are designated HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY under the Stipulated Protective Order.

Responsive documents are produced at Bates range OWS-019235 through OWS-020478.

Request for Production No. 15

REQUEST: Produce all documents reflecting instances in which OWS lost sales or customer opportunities to Lumicore, or in which customers switched from OWS products to Lumicore products, including but not limited to internal sales reports, CRM records, customer feedback, competitive win/loss analyses, and related communications.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks documents protected by the attorney-client privilege or the work-product doctrine, including litigation-related analyses of customer diversion and lost profits prepared at the direction of counsel in anticipation of this litigation. OWS further objects to this Request as overbroad to the extent it is not limited to lost sales and customer-switching instances involving the accused Lumicore product categories (i.e., 400G-ZR, 800G-DR, and 1600G transceiver modules).

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged business records, including internal sales reports, CRM data extracts, sales team communications, and competitive win/loss analyses created in the ordinary course of business, reflecting identified instances of customer diversion, lost design-in opportunities, or lost sales attributable to Lumicore's accused products. OWS's production includes documents showing price erosion in the relevant markets: the average selling price of 400G-ZR transceiver modules declined by approximately 18.7% from Q3 2022 to Q4 2023, which OWS attributes in significant part to Lumicore's entry into the market with infringing products offered at below-market pricing.

All documents produced in response to this Request are designated HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY under the Stipulated Protective Order.

Responsive documents are produced at Bates range OWS-020479 through OWS-021567.

Request for Production No. 16

REQUEST: Produce all patent license agreements, settlement agreements, and related correspondence pursuant to which OWS has licensed any of the asserted patents or any patents in the same family or technology area to third parties.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to the phrase "same family or technology area" as vague and overbroad, as it could be construed to encompass license agreements for patents that are not technically comparable to the asserted patents and that would have no probative value in a Georgia-Pacific reasonable royalty analysis. OWS will limit its production to license agreements that involve one or more of the asserted patents, or patents in the same patent families as the asserted patents, and that are relevant to the Georgia-Pacific reasonable royalty analysis. OWS further objects on the basis of confidentiality, as certain license agreements contain proprietary terms of third-party licensees. OWS will produce responsive license agreements under the "Highly Confidential – Attorneys' Eyes Only" designation of the Stipulated Protective Order.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce the following comparable license agreements:

(a) License Agreement between OWS and Terralink Semiconductor (2020): This agreement provides for a running royalty of 6.5% on licensed revenue of approximately $45 million during the term of the license;

(b) License Agreement between OWS and NovaWave Corp. (2021): This agreement provides for a running royalty of 9.0% on licensed revenue of approximately $22 million during the term of the license;

(c) License Agreement between OWS and Helix Integrated Photonics (2022): This agreement provides for a running royalty of 7.75% plus an upfront lump-sum payment of $2.5 million, on licensed revenue of approximately $68 million during the term of the license;

(d) Any additional license agreements involving one or more of the asserted patents or patents in the same patent families as the asserted patents.

OWS will produce these license agreements with third-party proprietary information redacted or designated under the Protective Order as appropriate, and in consultation with the third-party licensees to the extent required by the terms of any applicable confidentiality provisions.

All documents produced in response to this Request are designated HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY under the Stipulated Protective Order.

Responsive documents are produced at Bates range OWS-021568 through OWS-022345.

Request for Production No. 17

REQUEST: Produce all documents relating to OWS's engagement of FairPoint Licensing Group, LLC, including but not limited to engagement letters, reports, communications, and all documents reflecting FairPoint's licensing outreach to Lumicore or any other third party on OWS's behalf.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks communications between OWS, its counsel, and FairPoint Licensing Group, LLC that reflect legal strategy, legal analysis, or the mental impressions of counsel regarding OWS's licensing campaign and enforcement strategy. FairPoint Licensing Group, LLC (500 Sansome Street, Suite 1400, San Francisco, CA 94111; Managing Director: Angela Reeves) acted as OWS's licensing agent under the direction and supervision of OWS's General Counsel, Rebecca Tanaka, and in coordination with OWS's outside legal counsel. As such, certain communications between FairPoint and OWS were made for the purpose of obtaining or acting upon legal advice and are protected by the attorney-client privilege. Other communications were prepared in anticipation of litigation and are protected by the work-product doctrine.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged engagement documents reflecting OWS's retention of FairPoint Licensing Group, LLC, together with the licensing correspondence between FairPoint and Lumicore that has already been produced or identified in response to Request for Production No. 9, as cross-referenced above. OWS withholds as privileged all internal FairPoint-OWS strategy communications, internal FairPoint analyses, and FairPoint reports prepared at the direction of OWS's counsel or in anticipation of litigation. Withheld documents are identified on OWS's privilege log.

Responsive, non-privileged documents are produced at Bates range OWS-022346 through OWS-022789.

Request for Production No. 18

REQUEST: Produce all documents reflecting OWS's compliance or non-compliance with the patent marking statute, 35 U.S.C. § 287, including but not limited to whether OWS marks its products with the asserted patent numbers, the manner of marking, the dates on which marking commenced, and any decisions regarding whether to mark or not to mark particular products.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS interposes no additional specific objections to this Request beyond the General Objections.

RESPONSE: Subject to and without waiving the General Objections, OWS responds as follows: OWS will produce documents reflecting its patent marking practices for products embodying the asserted patents, including product packaging, product labels, datasheets, and website disclosures for the OWS-400ZR, OWS-800XR, and OWS-1600DR product families. OWS's production is sufficient to show OWS's compliance with the marking requirements of 35 U.S.C. § 287(a).

Responsive documents are produced at Bates range OWS-022790 through OWS-023198.

Request for Production No. 19

REQUEST: Produce all inventor notebooks, laboratory records, meeting minutes, design documents, and technical presentations related to the conception, development, and reduction to practice of the inventions claimed in the asserted patents.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks documents beyond what is relevant to the claims and defenses asserted in this action. OWS further objects to this Request to the extent it seeks communications between the named inventors and patent prosecution counsel at Cascade IP Advisors, LLC, as such communications are protected by the attorney-client privilege.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged inventor notebooks, laboratory records, and technical documents relating to the conception and reduction to practice of the inventions claimed in the asserted patents. The named inventors of the asserted patents include Dr. Jian-Wei Huang (Chief Technology Officer, OWS), Dr. Nikolai Petrov (Vice President of Engineering, Photonics Division, OWS), and other OWS engineers. With respect to the '562 Patent, the original inventor records derive from Solara Optics, Inc. and are included in the production to the extent such records are in OWS's possession, custody, or control, including records obtained by OWS pursuant to the Asset Purchase Agreement dated June 15, 2018.

Responsive, non-privileged documents are produced at Bates range OWS-023199 through OWS-026567.

Request for Production No. 20

REQUEST: Produce all documents reflecting OWS's knowledge of prior art relating to the subject matter of the asserted patents, including but not limited to prior art search reports, prior art references considered during prosecution, Information Disclosure Statements filed with the USPTO, and any post-issuance prior art assessments or analyses.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks work-product analyses of prior art prepared in anticipation of litigation or at the direction of counsel. Post-issuance prior art analyses prepared by or at the direction of Calderwood & Harkness LLP and/or Cascade IP Advisors, LLC in connection with this litigation constitute protected attorney work product and are not subject to discovery.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce the following categories of non-privileged documents:

(a) References of record cited or considered during the prosecution of the asserted patents, which are already included in the prosecution history documents produced in response to Requests for Production Nos. 1 through 4;

(b) Non-privileged prior art search reports that were obtained in the ordinary course of patent prosecution, to the extent such reports are not protected by the attorney-client privilege;

(c) Information Disclosure Statements ("IDS") filed with the USPTO for each of the asserted patents, together with the references cited therein.

OWS withholds as privileged any post-filing or post-issuance prior art analyses prepared by or at the direction of counsel, including analyses prepared by Calderwood & Harkness LLP, Whitmore & Callahan LLP, or Cascade IP Advisors, LLC in connection with this litigation. These withheld documents are identified on OWS's privilege log.

Responsive, non-privileged documents are produced at Bates range OWS-026568 through OWS-027345.

Request for Production No. 21

REQUEST: Produce all communications between OWS (or its agents) and the USPTO regarding the asserted patents, beyond what is contained in the published prosecution histories.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects that this Request is largely duplicative of Requests for Production Nos. 1 through 5, which already seek the complete prosecution histories of the asserted patents.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce any non-privileged communications with the USPTO regarding the asserted patents that are not already included in the prosecution history productions made in response to Requests for Production Nos. 1 through 5. This includes any petitions, post-issuance correspondence, Terminal Disclaimer filings, and other communications with the USPTO, to the extent such documents exist and are in OWS's possession, custody, or control.

Responsive documents are produced at Bates range OWS-027346 through OWS-027698.

Request for Production No. 22

REQUEST: Produce all documents relating to patent applications that are continuations, continuations-in-part, divisionals, or otherwise related to the asserted patents, including the applications as filed, prosecution histories, and any correspondence with the USPTO.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to the phrase "relating to" as overbroad. OWS will produce application records and prosecution files for patent applications that are continuations, continuations-in-part, divisionals, or are otherwise directly related to the asserted patents by virtue of being in the same patent family.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce prosecution files for continuation and related patent applications in the patent families of the asserted patents. As described in prior responses, the '562 Patent (U.S. Patent No. 9,678,562) and the '847 Patent (U.S. Patent No. 10,234,847) are in the same patent family, with the '847 Patent being a continuation of the '562 Patent. The '193 Patent (U.S. Patent No. 10,891,193) and the '015 Patent (U.S. Patent No. 11,402,015) share a common provisional application, U.S. Provisional Application No. 62/499,117. OWS notes that it holds a total of 142 issued U.S. patents and 58 pending U.S. patent applications across its full portfolio; OWS limits this production to those applications that are in the patent families of the four asserted patents.

Responsive documents are produced at Bates range OWS-027699 through OWS-030012.

Request for Production No. 23

REQUEST: Produce all documents relating to any inter partes review, reexamination, covered business method review, post-grant review, or other post-issuance proceeding before the USPTO or the Patent Trial and Appeal Board involving any of the asserted patents.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS interposes no additional specific objections beyond the General Objections.

RESPONSE: Subject to and without waiving the General Objections, OWS responds as follows: As of the date of this response, no petitions for inter partes review have been filed against any of the four asserted patents. No reexamination requests, post-grant review petitions, covered business method review petitions, or any other post-issuance proceedings have been instituted with respect to any of the asserted patents. Accordingly, OWS has no documents responsive to this Request.

OWS notes for the record that Lumicore has reserved its right to petition for inter partes review of one or more of the asserted patents. The one-year statutory deadline for filing such petitions under 35 U.S.C. § 315(b), measured from the date of service of the complaint in this action, is May 1, 2025.

Request for Production No. 24

REQUEST: Produce all documents identifying OWS products that practice or embody the asserted patents, including but not limited to technical specifications, design documents, product datasheets, and claim-coverage analyses.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks claim-coverage analyses prepared at the direction of counsel or in anticipation of litigation, as such analyses are protected by the attorney-client privilege and/or the work-product doctrine.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce product specifications, datasheets, and design summaries for the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families. These product families represent OWS's key product lines in the silicon-photonics transceiver market and embody the innovations claimed in the asserted patents. OWS withholds as privileged any internal claim-coverage analyses prepared by or at the direction of counsel that map the claims of the asserted patents to OWS's products. Withheld documents are identified on OWS's privilege log.

Responsive, non-privileged documents are produced at Bates range OWS-030013 through OWS-032456.

Request for Production No. 25

REQUEST: Produce all documents relating to OWS's manufacturing capacity, manufacturing processes, and supply chain for products that compete with the accused Lumicore products, including but not limited to foundry agreements, capacity utilization reports, and production planning documents.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request as overbroad to the extent it seeks all supply-chain documents without limitation as to time, scope, or relevance. OWS will produce documents relevant to OWS's capacity to serve the demand allegedly displaced by Lumicore's infringing products, consistent with the Panduit factor analysis for lost-profits damages (Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978)).

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce documents sufficient to demonstrate OWS's manufacturing and marketing capability to serve the demand allegedly diverted by Lumicore's infringing products, including foundry partner agreements, capacity utilization reports, and production planning documents for the relevant time period. OWS notes that it is a fabless semiconductor company that utilizes foundry partners for wafer fabrication, packaging, and testing. OWS's production includes documents sufficient to show that OWS had the manufacturing capacity and the marketing ability to make the sales that were allegedly diverted to Lumicore.

All documents produced in response to this Request are designated HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY under the Stipulated Protective Order.

Responsive documents are produced at Bates range OWS-032457 through OWS-033890.

Request for Production No. 26

REQUEST: Produce all documents reflecting OWS's analysis of non-infringing alternatives to the accused Lumicore products, including but not limited to technical comparisons, product evaluations, and market analyses of alternative products or technologies.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request in its entirety on the grounds of attorney-client privilege and work-product protection. OWS's analyses of the availability of acceptable non-infringing substitutes to the accused Lumicore products were prepared at the direction of Calderwood & Harkness LLP in connection with the Panduit lost-profits analysis and constitute protected attorney work product under Federal Rule of Civil Procedure 26(b)(3). Such analyses reflect the mental impressions, conclusions, opinions, and legal theories of OWS's counsel and are therefore protected as opinion work product.

RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS objects and withholds documents responsive to this Request on the grounds of attorney-client privilege and work-product protection, as stated above. To the extent non-privileged product comparisons available in the marketplace — such as published third-party market reports and industry analyses — are responsive to this Request and are in OWS's possession, custody, or control, OWS will produce them. Privileged documents are listed on OWS's privilege log.

Responsive, non-privileged documents (consisting of publicly available market analyses and industry reports) are produced at Bates range OWS-033891 through OWS-034234.

Request for Production No. 27

REQUEST: Produce all documents relating to Ridgeline Capital Partners, LP's investment in OWS, including but not limited to the acquisition agreement, stockholder agreements, board minutes reflecting discussions or decisions regarding this litigation, and any communications between Ridgeline Capital Partners, LP and OWS regarding the instant litigation.

OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request as overbroad and not proportional to the needs of the case to the extent it seeks all investment and governance documents between OWS and Ridgeline Capital Partners, LP, the vast majority of which have no relevance to any claim or defense in this patent infringement action. OWS will produce documents relevant to standing, real-party-in-interest status, and damages issues. OWS further objects to this Request to the extent it seeks board minutes, internal communications, and presentations reflecting legal advice regarding this litigation, as such documents are protected by the attorney-client privilege.

UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff,
v.
LUMICORE TECHNOLOGIES, INC.,
Defendant.
Civil Action No. 2:24-cv-00319-JRG
Hon. James R. Gilstrap
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S RESPONSES AND OBJECTIONS TO DEFENDANT LUMICORE TECHNOLOGIES, INC.'S FIRST SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS (NOS. 1–85)
Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its undersigned counsel of record, Calderwood & Harkness LLP and local counsel Whitmore & Callahan LLP, hereby serves its Responses and Objections to Defendant Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") First Set of Requests for Production of Documents (Nos. 1–85), which were served on or about August 26, 2024. These responses are served pursuant to the Federal Rules of Civil Procedure, Rules 26 and 34, the Local Rules of the United States District Court for the Eastern District of Texas, and the Court's Scheduling Order entered August 12, 2024 (D.E. 27). OWS's responses and objections are further subject to the terms and conditions of the Stipulated Protective Order entered in this action (D.E. 34, entered on or about August 19, 2024), which establishes three tiers of confidentiality designation: "Confidential," "Highly Confidential – Attorneys' Eyes Only," and "Highly Confidential – Source Code."
OWS's responses are made without waiving and subject to the General Objections set forth below, each of which is incorporated by reference into every specific response as though stated in full therein.
I. GENERAL OBJECTIONS
OWS asserts the following General Objections to Lumicore's First Set of Requests for Production of Documents. These General Objections are incorporated by reference into each of OWS's specific responses below, and the failure to restate a particular General Objection in any specific response shall not be deemed a waiver of that objection.
A. Scope and Relevance Objections
1. OWS objects to each and every Request to the extent it seeks documents that are not relevant to any party's claim or defense or that are not proportional to the needs of the case, considering the importance of the issues at stake in this action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit, as required by Federal Rule of Civil Procedure 26(b)(1).
2. OWS objects to each and every Request to the extent it is overly broad, unduly burdensome, or not reasonably limited in time, subject matter, or scope. OWS will endeavor to respond to each Request as reasonably construed and will identify the basis for any narrowing construction applied.
B. Privilege and Work-Product Objections
3. OWS objects to each and every Request to the extent it calls for documents or information protected from disclosure by the attorney-client privilege, the work-product doctrine (as set forth in Federal Rule of Civil Procedure 26(b)(3) and Hickman v. Taylor, 329 U.S. 495 (1947)), the common-interest privilege, the joint-defense privilege, or any other applicable privilege, protection, or immunity from discovery recognized under federal or state law. No production of any document shall be construed as a waiver of any applicable privilege or protection, and any inadvertent disclosure of privileged material is subject to the protections of Federal Rule of Evidence 502 and the Stipulated Protective Order.
4. OWS has prepared, and will continue to supplement, a privilege log in accordance with Federal Rule of Civil Procedure 26(b)(5)(A), the Local Rules of the Eastern District of Texas, and the Court's Scheduling Order. OWS's initial privilege log was served on October 31, 2024, and identifies 1,247 documents that have been withheld in whole or redacted in part on the basis of privilege or work-product protection. OWS's supplemental privilege log, served December 15, 2024, adds an additional 318 entries, bringing the total number of privilege-log entries to 1,565. OWS reserves the right to further supplement its privilege log as additional document review is completed and as supplemental productions are made.
5. Without limiting the foregoing, OWS specifically asserts the attorney-client privilege with respect to its prior and ongoing communications with Calderwood & Harkness LLP (litigation counsel), Whitmore & Callahan LLP (local litigation counsel), Cascade IP Advisors, LLC (patent prosecution counsel, with Dr. Martin Chu serving as lead prosecution attorney), and FairPoint Licensing Group, LLC (licensing agent, with Managing Director Angela Reeves acting under the direction and supervision of OWS's General Counsel, Rebecca Tanaka), to the extent such communications convey, request, reflect, or embody legal advice, legal analysis, or litigation strategy. OWS further asserts the work-product doctrine with respect to all documents prepared by or at the direction of counsel in anticipation of this litigation, including but not limited to claim charts, infringement analyses, invalidity assessments, damages analyses, and related memoranda and correspondence.
C. Confidentiality Objections
6. OWS objects to each and every Request to the extent compliance would require the disclosure of trade secrets, proprietary business information, competitively sensitive financial data, or other confidential information without the protections afforded by the Stipulated Protective Order entered in this action (D.E. 34). OWS will designate documents produced in response to Lumicore's Requests at the appropriate tier of confidentiality under the Protective Order — "Confidential," "Highly Confidential – Attorneys' Eyes Only," or "Highly Confidential – Source Code" — as warranted by the nature of the information contained therein. OWS reserves the right to challenge any Request that seeks to compel production of confidential information beyond the scope of what is relevant and proportional under Rule 26(b)(1).
D. "All Documents" / "Each and Every" Objections
7. OWS objects to each and every Request that utilizes the phrases "all documents," "each and every," "any and all," or similar language of universal scope to the extent such language purports to impose an obligation beyond what is reasonable and proportional under the circumstances of this case. OWS will interpret such Requests as requiring a reasonable search for and production of responsive documents, consistent with its obligations under the Federal Rules of Civil Procedure, and will not construe such language as requiring the identification and production of every conceivable document regardless of accessibility, cost, or marginal relevance.
E. Electronically Stored Information (ESI) Objections
8. OWS objects to each and every Request to the extent it purports to require the production of electronically stored information ("ESI") in forms, formats, or from sources not agreed upon in the ESI Protocol Agreement dated August 15, 2024 (the "ESI Protocol"). The ESI Protocol specifies, among other things, that Relativity shall serve as the document review platform; that general documents shall be produced in TIFF image format with associated load files (including extracted text, metadata fields, and Bates numbering); and that source code and related technical files shall be produced in native format at a designated secure facility pursuant to the "Highly Confidential – Source Code" tier of the Stipulated Protective Order.
9. OWS has conducted reasonable searches of relevant custodial and non-custodial data sources, consistent with the ESI Protocol and the parties' agreements as reflected in the Joint discovery Plan and Report (Rule 26(f) Report) filed on July 29, 2024 (D.E. 22). OWS's custodial data sources include the email accounts, local and network drives, and cloud-based repositories of the agreed-upon custodians. OWS's non-custodial data sources include relevant shared drives, document management systems, and financial and engineering databases. OWS objects to the extent any Request seeks ESI from backup tapes, disaster-recovery systems, or other sources that are not reasonably accessible under Federal Rule of Civil Procedure 26(b)(2)(B).
F. Continuing Obligation
10. OWS's responses are based upon information and documents reasonably available to OWS and its counsel as of the date of service of these responses, September 30, 2024. OWS's investigation and document review are ongoing. OWS reserves the right to supplement, amend, or correct its responses as additional information becomes available through continuing investigation, document review, fact and expert depositions, third-party discovery, and other proceedings in this action, consistent with the requirements of Federal Rule of Civil Procedure 26(e) and the Court's Scheduling Order.
G. Reservation of Rights
11. The assertion of any specific objection in response to a particular Request shall not be deemed a waiver of any other objection, whether or not specifically stated, that OWS may assert with respect to that Request or any other Request. The production of documents in response to any Request shall not constitute an admission that any such document is relevant to any claim or defense, authentic, or admissible in evidence at trial or in any other proceeding. OWS expressly incorporates these General Objections by reference into each specific response set forth below.
II. SPECIFIC RESPONSES AND OBJECTIONS
Request for Production No. 1
REQUEST: Produce all documents constituting or relating to the prosecution history of U.S. Patent No. 10,234,847 (the "'847 Patent"), including but not limited to the patent application as filed, all office actions issued by the United States Patent and Trademark Office ("USPTO"), all responses to office actions, all amendments, all declarations, all examiner interview summaries, and all correspondence with the USPTO.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS further objects to this Request to the extent that the phrase "relating to" is vague and overbroad, as it could be construed to encompass documents far beyond the prosecution history itself, including internal analyses, strategic memoranda, and attorney-client communications that do not constitute part of the official prosecution record. OWS further objects to this Request to the extent it seeks documents protected by the attorney-client privilege or the work-product doctrine, including communications between OWS and its prosecution counsel, Cascade IP Advisors, LLC, that reflect legal strategy, legal analysis, or mental impressions of counsel in connection with the prosecution of the '847 Patent.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged documents constituting the prosecution history of U.S. Patent No. 10,234,847, including the application as filed (filing date: September 14, 2016), all office actions, applicant responses, amendments, declarations filed during prosecution, and examiner interview summaries that form part of the official prosecution record before the USPTO. The '847 Patent was prosecuted by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as the lead prosecution attorney. The '847 Patent was issued by the USPTO on March 19, 2019. The original assignee of the '847 Patent is Optiwave Semiconductor Corp. OWS notes that the '847 Patent is in the same patent family as the '562 Patent (U.S. Patent No. 9,678,562), with the '847 Patent being a continuation of the '562 Patent. Responsive, non-privileged documents are produced at Bates range OWS-000001 through OWS-002847.
Request for Production No. 2
REQUEST: Produce all documents constituting or relating to the prosecution history of U.S. Patent No. 10,891,193 (the "'193 Patent"), including but not limited to the patent application as filed, all office actions issued by the USPTO, all responses to office actions, all amendments, all declarations, all examiner interview summaries, and all correspondence with the USPTO.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS interposes the same objections as stated in response to Request for Production No. 1, which are incorporated herein by reference.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged documents constituting the prosecution history of U.S. Patent No. 10,891,193, including the application as filed (filing date: April 7, 2017), all office actions, applicant responses, amendments, declarations, and examiner interview summaries that form part of the official prosecution record before the USPTO. The '193 Patent was issued by the USPTO on January 12, 2021. The original assignee is Optiwave Semiconductor Corp. The '193 Patent claims the benefit of priority to U.S. Provisional Application No. 62/499,117, filed April 7, 2017, which is shared with the '015 Patent (U.S. Patent No. 11,402,015). The '193 Patent was prosecuted by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as the lead prosecution attorney. OWS notes that the prosecution history includes amendments narrowing the "coherent detection module" limitation, which were made in response to a rejection under 35 U.S.C. § 102 over the Takahashi et al. prior art reference. These prosecution history amendments and the corresponding office action and applicant response are included in the production. Responsive, non-privileged documents are produced at Bates range OWS-002848 through OWS-005412.
Request for Production No. 3
REQUEST: Produce all documents constituting or relating to the prosecution history of U.S. Patent No. 9,678,562 (the "'562 Patent"), including but not limited to the patent application as filed, all office actions issued by the USPTO, all responses to office actions, all amendments, all declarations, all examiner interview summaries, and all correspondence with the USPTO.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS interposes the same objections as stated in response to Request for Production No. 1, which are incorporated herein by reference.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged documents constituting the prosecution history of U.S. Patent No. 9,678,562, including the application as filed (original filing date: November 22, 2014), all office actions, applicant responses, amendments, declarations, and examiner interview summaries that form part of the official prosecution record before the USPTO. The '562 Patent was issued by the USPTO on June 13, 2017. The original assignee of the '562 Patent was Solara Optics, Inc. The '562 Patent was subsequently assigned to Optiwave Semiconductor Corp. pursuant to the Asset Purchase Agreement dated June 15, 2018, as part of a portfolio of twelve (12) patents acquired from Solara Optics, Inc. for a total purchase price of $34.5 million. The '562 Patent is in the same patent family as the '847 Patent, with the '847 Patent being a continuation of the '562 Patent. The prosecution file for the '562 Patent was obtained from Cascade IP Advisors, LLC and from Solara Optics records maintained by OWS following the acquisition. Responsive, non-privileged documents are produced at Bates range OWS-005413 through OWS-007890.
Request for Production No. 4
REQUEST: Produce all documents constituting or relating to the prosecution history of U.S. Patent No. 11,402,015 (the "'015 Patent"), including but not limited to the patent application as filed, all office actions issued by the USPTO, all responses to office actions, all amendments, all declarations, all examiner interview summaries, and all correspondence with the USPTO.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS interposes the same objections as stated in response to Request for Production No. 1, which are incorporated herein by reference.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged documents constituting the prosecution history of U.S. Patent No. 11,402,015, including the application as filed (filing date: August 30, 2019), all office actions, applicant responses, amendments, declarations, and examiner interview summaries that form part of the official prosecution record before the USPTO. The '015 Patent was issued by the USPTO on August 2, 2022. The original assignee is Optiwave Semiconductor Corp. The '015 Patent claims the benefit of priority to U.S. Provisional Application No. 62/499,117 (shared with the '193 Patent). The '015 Patent was prosecuted by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as the lead prosecution attorney. OWS notes that the prosecution history includes a narrowing amendment to the "two-dimensional sub-wavelength grating" limitation, which was made in response to a rejection under 35 U.S.C. § 103 combining the references Bergmann (U.S. Patent No. 8,412,007) and Simonsen (PCT/EP2015/071234). These prosecution history amendments and the corresponding office action and applicant response are included in the production. Responsive, non-privileged documents are produced at Bates range OWS-007891 through OWS-010234.
Request for Production No. 5
REQUEST: Produce all documents relating to U.S. Provisional Application No. 62/499,117, filed April 7, 2017, including the provisional application as filed, all supporting documentation, and any communications with the USPTO concerning the provisional application.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to the phrase "relating to" as overbroad to the extent it is construed to encompass documents beyond the provisional application itself and its supporting materials. OWS further objects to this Request to the extent it seeks communications between OWS and its prosecution counsel, Cascade IP Advisors, LLC, that are protected by the attorney-client privilege and relate to legal strategy, claim drafting, or prosecution planning for applications claiming the benefit of this provisional application.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce the U.S. Provisional Application No. 62/499,117 as filed with the USPTO on April 7, 2017, together with any non-privileged supporting documentation, including inventor declarations, technical disclosures, and drawings filed as part of the provisional application. This provisional application is the common parent application from which both the '193 Patent (U.S. Patent No. 10,891,193) and the '015 Patent (U.S. Patent No. 11,402,015) claim the benefit of priority. Responsive, non-privileged documents are produced at Bates range OWS-010235 through OWS-010498.
Request for Production No. 6
REQUEST: Produce all documents evidencing the ownership, assignment, transfer, license, or other disposition of any interest in the asserted patents, from the date of original filing to the present, including but not limited to assignment agreements, recordation documents filed with the USPTO, inventor assignment agreements, and any documents reflecting encumbrances, liens, or security interests.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks documents protected by the attorney-client privilege, including communications between OWS and its legal counsel regarding the acquisition of the '562 Patent from Solara Optics, Inc., to the extent such communications reflect legal advice concerning the transaction, due diligence, or the structuring of the patent assignment.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce assignment records, inventor assignment agreements, recordation documents filed with the USPTO, and other chain-of-title documents for the four asserted patents. Specifically, OWS's production includes the following categories of documents:
(a) Assignment records for the '847 Patent (U.S. Patent No. 10,234,847), the '193 Patent (U.S. Patent No. 10,891,193), and the '015 Patent (U.S. Patent No. 11,402,015), reflecting assignments from the named inventors to Optiwave Semiconductor Corp. as the original assignee;
(b) Assignment of the '562 Patent (U.S. Patent No. 9,678,562) from Solara Optics, Inc. to Optiwave Semiconductor Corp. pursuant to the Asset Purchase Agreement dated June 15, 2018, under which OWS acquired a portfolio of twelve (12) patents from Solara Optics, Inc. for a total purchase price of $34.5 million, with the '562 Patent being among the patents transferred;
(c) USPTO recordation confirmations for all assignments of the four asserted patents;
(d) Documents confirming that all four asserted patents are currently assigned to and owned by Optiwave Semiconductor Corp., that all maintenance fees are current, and that there are no outstanding liens, encumbrances, or security interests affecting any of the asserted patents.
Responsive, non-privileged documents are produced at Bates range OWS-010499 through OWS-011102.
Request for Production No. 7
REQUEST: Produce all documents relating to OWS's acquisition of patents from Solara Optics, Inc., including but not limited to the Asset Purchase Agreement, all schedules, exhibits, and attachments thereto, closing documents, due diligence materials, post-closing correspondence, and any documents reflecting the negotiation of the transaction.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks attorney-client privileged communications between OWS and its legal counsel regarding the negotiation, structuring, due diligence, and closing of the Solara Optics transaction. OWS further objects to the phrase "relating to" as overbroad to the extent it is construed to encompass every document that tangentially references the Solara Optics acquisition, rather than documents that directly constitute or are part of the transaction itself. OWS will produce the transaction documents themselves and related non-privileged closing and assignment records.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce the following categories of non-privileged documents:
(a) The Asset Purchase Agreement dated June 15, 2018, between Optiwave Semiconductor Corp. and Solara Optics, Inc., together with all schedules, exhibits, and attachments thereto;
(b) The schedule of patents transferred pursuant to the Asset Purchase Agreement, which identifies twelve (12) patents, including the '562 Patent (U.S. Patent No. 9,678,562);
(c) Closing documents and assignment instruments executed in connection with the transaction;
(d) The total purchase price for the portfolio was $34.5 million.
OWS notes that Solara Optics, Inc. was a California corporation that was dissolved in approximately 2020. Remaining archival records of Solara Optics are in the custody of Gregory Falk, who served as Vice President of Engineering at Solara Optics and is currently an independent consultant. Mr. Falk has been identified as one of Plaintiff's industry experts in this case, and OWS has produced the non-privileged Solara Optics records that are in OWS's possession, custody, or control.
Responsive, non-privileged documents are produced at Bates range OWS-011103 through OWS-012456.
Request for Production No. 8
REQUEST: Produce all documents evidencing the payment of maintenance fees for U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015, including receipts, payment records, and correspondence with the USPTO.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS interposes no additional specific objections to this Request beyond the General Objections.
RESPONSE: Subject to and without waiving the General Objections, OWS responds as follows: OWS will produce USPTO maintenance fee payment records and receipts for U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015. OWS confirms that all maintenance fees are current on all four asserted patents as of the date of this response. Responsive documents are produced at Bates range OWS-012457 through OWS-012598.
Request for Production No. 9
REQUEST: Produce all correspondence between OWS (or its agents, representatives, licensors, or other persons or entities acting on its behalf) and Lumicore (or its agents, representatives, or counsel) regarding the licensing, assertion, notice, or enforcement of any of the asserted patents, including but not limited to licensing demand letters, responses, counter-proposals, meeting notes, and related communications.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks documents protected by the attorney-client privilege or the work-product doctrine, including internal communications between OWS, its counsel at Calderwood & Harkness LLP and Whitmore & Callahan LLP, and its licensing agent, FairPoint Licensing Group, LLC, that reflect legal strategy, legal analysis, or the mental impressions of counsel regarding the licensing campaign directed at Lumicore. OWS notes that FairPoint Licensing Group, LLC acted as OWS's licensing agent under the direction and supervision of OWS's General Counsel, Rebecca Tanaka, and in coordination with OWS's outside legal counsel, and that certain communications between FairPoint and OWS reflect or convey privileged legal advice and strategy.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged correspondence between OWS and/or its licensing agent, FairPoint Licensing Group, LLC, on the one hand, and Lumicore and/or its counsel, on the other hand, regarding the licensing and assertion of the asserted patents. Specifically, OWS's production includes:
(a) The initial licensing/notice letter from FairPoint Licensing Group, LLC, dated January 15, 2023, addressed to Raymond Bautista, General Counsel of Lumicore Technologies, Inc., identifying the '847 Patent, the '193 Patent, and the '562 Patent as patents believed to be infringed by Lumicore's products;
(b) Lumicore's response, dated February 28, 2023, transmitted via Lumicore's outside counsel at Hawthorne Vega & Cruz LLP, disputing infringement and questioning the validity of the identified patents;
(c) Non-privileged correspondence regarding the scheduling and logistics of the in-person licensing meeting held on April 20, 2023, in Austin, Texas. That meeting was attended by Angela Reeves (FairPoint Licensing Group, LLC), Rebecca Tanaka (OWS General Counsel), Raymond Bautista (Lumicore General Counsel), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP);
(d) The second licensing letter from FairPoint Licensing Group, LLC, dated May 15, 2023, addressed to Lumicore, which added the '015 Patent (issued August 2, 2022) to the licensing discussion and expanded the list of accused products to include the LumiLink 800G-DR8 transceiver module;
(e) Lumicore's declination letter, dated July 10, 2023, in which Lumicore stated that it had obtained "competent legal opinions" concluding that its products do not infringe the asserted patents and declining to enter into a license agreement.
OWS withholds as privileged all internal communications between OWS, Calderwood & Harkness LLP, and FairPoint Licensing Group, LLC reflecting legal strategy, legal analysis, or the mental impressions of counsel regarding the licensing campaign directed at Lumicore. These withheld documents are identified on OWS's privilege log served October 31, 2024, and the supplemental privilege log served December 15, 2024.
Responsive, non-privileged documents are produced at Bates range OWS-012599 through OWS-013024.
Request for Production No. 10
REQUEST: Produce all documents constituting, reflecting, or relating to OWS's analyses of whether Lumicore's products infringe the asserted patents, including but not limited to claim charts, technical comparisons, reverse-engineering reports, teardown analyses, and internal memoranda.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks documents protected by the attorney-client privilege and/or the work-product doctrine. OWS's internal infringement analyses and claim charts prepared at the direction of counsel, or in anticipation of litigation, are protected attorney work product and are not subject to discovery. OWS specifically objects that claim charts, infringement contentions drafts, and analytical memoranda prepared by or at the direction of Calderwood & Harkness LLP, Whitmore & Callahan LLP, and/or Cascade IP Advisors, LLC constitute opinion work product reflecting the mental impressions, conclusions, opinions, and legal theories of OWS's counsel. These documents are categorically protected from disclosure under Federal Rule of Civil Procedure 26(b)(3)(B).
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce the following categories of non-privileged documents:
(a) Non-privileged portions of OWS's internal engineering team's initial identification of potential Lumicore infringement, which occurred in or about October 2022, to the extent such documents were created in the ordinary course of OWS's business operations (i.e., competitive product monitoring and analysis) and were not prepared at the direction of counsel or in anticipation of litigation;
(b) Teardown reports prepared by Benchmark Semiconductor Analysis, LLC (2244 Mission College Boulevard, Santa Clara, CA 95054; Lead Engineer: Kevin Ng), as follows:
(i) LumiLink 400G-ZR+ teardown report, delivered to OWS on December 12, 2022, which confirmed the presence of accused waveguide multiplexer structures and thermal management micro-channels in the Lumicore product;
(ii) LumiLink 800G-DR8 follow-on teardown report, completed in June 2023;
(iii) LumiEdge 1600G-LR teardown report, completed in February 2024.
OWS withholds as privileged attorney work product all claim charts, draft infringement contentions, and analytical memoranda prepared by or at the direction of counsel in anticipation of this litigation. These withheld documents are identified on OWS's privilege log.
Responsive, non-privileged documents are produced at Bates range OWS-013025 through OWS-015678. Privileged documents are listed on OWS's privilege log.
Request for Production No. 11
REQUEST: Produce all documents relating to OWS's retention of Benchmark Semiconductor Analysis, LLC, including but not limited to engagement letters, statements of work, invoices, purchase orders, all reports and deliverables, and all communications between OWS and Benchmark.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks communications between Benchmark Semiconductor Analysis, LLC and OWS's counsel at Calderwood & Harkness LLP that were made at the direction of counsel in anticipation of litigation, as such communications constitute protected attorney work product. OWS further objects to this Request to the extent the Benchmark engagement was directed, structured, and supervised by OWS's counsel, and documents reflecting counsel's direction to Benchmark constitute protected work product.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged engagement documents reflecting OWS's retention of Benchmark Semiconductor Analysis, LLC (2244 Mission College Boulevard, Santa Clara, CA 95054; Lead Engineer: Kevin Ng). OWS initially retained Benchmark in November 2022 to perform reverse-engineering and teardown analysis of the LumiLink 400G-ZR+ transceiver module. Benchmark's final teardown reports for the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR are included in the production in response to Request for Production No. 10, as cross-referenced above. OWS withholds as privileged communications between Benchmark and OWS's counsel at Calderwood & Harkness LLP to the extent such communications were made at the direction of counsel in anticipation of litigation.
Responsive, non-privileged documents are produced at Bates range OWS-015679 through OWS-016012.
Request for Production No. 12
REQUEST: Produce all documents reflecting OWS's revenue, costs, cost of goods sold, margins, and profitability for products that compete with the accused Lumicore products, including but not limited to the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families, on a product-by-product and quarter-by-quarter basis, from fiscal year 2020 through the present.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to the temporal scope of this Request as overbroad to the extent it seeks financial data predating the earliest launch of the accused Lumicore products in the third quarter of 2022 (Q3 2022). Financial data from periods prior to Q3 2022 has limited relevance to OWS's damages claims. OWS further objects to this Request to the extent it seeks competitively sensitive financial data beyond what is relevant and proportional to the claims and defenses in this action. OWS will produce responsive financial data subject to the "Highly Confidential – Attorneys' Eyes Only" designation under the Stipulated Protective Order.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce product-level financial data for the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families from fiscal year 2021 through the present, including the following categories of information:
(a) Revenue by product line, reported on a quarterly basis;
(b) Cost of goods sold ("COGS") and gross margin data for each product line. OWS's blended gross margin on competing products during the relevant period is approximately 47.3%;
(c) Pricing information, including average selling prices ("ASPs") by product line and quarter;
(d) Summary profitability information by product line.
OWS notes that its total revenue for fiscal year 2023 was $487.3 million, and its net income for fiscal year 2023 was $61.4 million, as reflected in OWS's audited financial statements prepared by Gresham & Whitfield LLP. Approximately $310 million of OWS's fiscal year 2023 revenue is attributable to products that practice the asserted patents.
All documents produced in response to this Request are designated HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY under the Stipulated Protective Order.
Responsive documents are produced at Bates range OWS-016013 through OWS-018456.
Request for Production No. 13
REQUEST: Produce all documents reflecting OWS's market share in the silicon-photonics transceiver market, including competitive analyses, market studies, market share assessments, and competitive intelligence reports.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request as overbroad to the extent it seeks all competitive analyses and market studies in OWS's possession regardless of their relevance to the asserted patents or the accused Lumicore products. OWS will produce market analyses and competitive intelligence documents that relate to the specific product categories at issue in this litigation — namely, the 400G-ZR, 800G-DR, and 1600G transceiver module markets.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce market analyses, competitive assessments, and market share data relating to the 400G-ZR, 800G-DR, and 1600G transceiver module markets, including OWS's internal market share assessments for those product segments. OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data-center applications. OWS and Lumicore compete head-to-head for business at twelve (12) of the top twenty (20) hyperscale data-center operators in the United States.
All documents produced in response to this Request are designated HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY under the Stipulated Protective Order.
Responsive documents are produced at Bates range OWS-018457 through OWS-019234.
Request for Production No. 14
REQUEST: Produce all documents identifying OWS's customers for the OWS-400ZR, OWS-800XR, and OWS-1600DR products, including customer names, contract terms, purchase order volumes, and unit volumes shipped, by customer and by quarter.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request on the basis that it seeks the disclosure of highly competitively sensitive customer information. OWS will produce responsive documents under the "Highly Confidential – Attorneys' Eyes Only" designation of the Stipulated Protective Order. OWS further objects to this Request as overbroad to the extent it seeks customer information beyond what is relevant to the parties' damages theories in this litigation, including lost-profits and reasonable-royalty analyses.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce customer-level sales data for its OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module product families for the period from Q3 2022 through the present, in sufficient detail to support the parties' respective damages analyses. The production includes information sufficient to identify customer overlap between OWS and Lumicore in the relevant product markets.
All documents produced in response to this Request are designated HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY under the Stipulated Protective Order.
Responsive documents are produced at Bates range OWS-019235 through OWS-020478.
Request for Production No. 15
REQUEST: Produce all documents reflecting instances in which OWS lost sales or customer opportunities to Lumicore, or in which customers switched from OWS products to Lumicore products, including but not limited to internal sales reports, CRM records, customer feedback, competitive win/loss analyses, and related communications.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks documents protected by the attorney-client privilege or the work-product doctrine, including litigation-related analyses of customer diversion and lost profits prepared at the direction of counsel in anticipation of this litigation. OWS further objects to this Request as overbroad to the extent it is not limited to lost sales and customer-switching instances involving the accused Lumicore product categories (i.e., 400G-ZR, 800G-DR, and 1600G transceiver modules).
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged business records, including internal sales reports, CRM data extracts, sales team communications, and competitive win/loss analyses created in the ordinary course of business, reflecting identified instances of customer diversion, lost design-in opportunities, or lost sales attributable to Lumicore's accused products. OWS's production includes documents showing price erosion in the relevant markets: the average selling price of 400G-ZR transceiver modules declined by approximately 18.7% from Q3 2022 to Q4 2023, which OWS attributes in significant part to Lumicore's entry into the market with infringing products offered at below-market pricing.
All documents produced in response to this Request are designated HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY under the Stipulated Protective Order.
Responsive documents are produced at Bates range OWS-020479 through OWS-021567.
Request for Production No. 16
REQUEST: Produce all patent license agreements, settlement agreements, and related correspondence pursuant to which OWS has licensed any of the asserted patents or any patents in the same family or technology area to third parties.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to the phrase "same family or technology area" as vague and overbroad, as it could be construed to encompass license agreements for patents that are not technically comparable to the asserted patents and that would have no probative value in a Georgia-Pacific reasonable royalty analysis. OWS will limit its production to license agreements that involve one or more of the asserted patents, or patents in the same patent families as the asserted patents, and that are relevant to the Georgia-Pacific reasonable royalty analysis. OWS further objects on the basis of confidentiality, as certain license agreements contain proprietary terms of third-party licensees. OWS will produce responsive license agreements under the "Highly Confidential – Attorneys' Eyes Only" designation of the Stipulated Protective Order.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce the following comparable license agreements:
(a) License Agreement between OWS and Terralink Semiconductor (2020): This agreement provides for a running royalty of 6.5% on licensed revenue of approximately $45 million during the term of the license;
(b) License Agreement between OWS and NovaWave Corp. (2021): This agreement provides for a running royalty of 9.0% on licensed revenue of approximately $22 million during the term of the license;
(c) License Agreement between OWS and Helix Integrated Photonics (2022): This agreement provides for a running royalty of 7.75% plus an upfront lump-sum payment of $2.5 million, on licensed revenue of approximately $68 million during the term of the license;
(d) Any additional license agreements involving one or more of the asserted patents or patents in the same patent families as the asserted patents.
OWS will produce these license agreements with third-party proprietary information redacted or designated under the Protective Order as appropriate, and in consultation with the third-party licensees to the extent required by the terms of any applicable confidentiality provisions.
All documents produced in response to this Request are designated HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY under the Stipulated Protective Order.
Responsive documents are produced at Bates range OWS-021568 through OWS-022345.
Request for Production No. 17
REQUEST: Produce all documents relating to OWS's engagement of FairPoint Licensing Group, LLC, including but not limited to engagement letters, reports, communications, and all documents reflecting FairPoint's licensing outreach to Lumicore or any other third party on OWS's behalf.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks communications between OWS, its counsel, and FairPoint Licensing Group, LLC that reflect legal strategy, legal analysis, or the mental impressions of counsel regarding OWS's licensing campaign and enforcement strategy. FairPoint Licensing Group, LLC (500 Sansome Street, Suite 1400, San Francisco, CA 94111; Managing Director: Angela Reeves) acted as OWS's licensing agent under the direction and supervision of OWS's General Counsel, Rebecca Tanaka, and in coordination with OWS's outside legal counsel. As such, certain communications between FairPoint and OWS were made for the purpose of obtaining or acting upon legal advice and are protected by the attorney-client privilege. Other communications were prepared in anticipation of litigation and are protected by the work-product doctrine.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged engagement documents reflecting OWS's retention of FairPoint Licensing Group, LLC, together with the licensing correspondence between FairPoint and Lumicore that has already been produced or identified in response to Request for Production No. 9, as cross-referenced above. OWS withholds as privileged all internal FairPoint-OWS strategy communications, internal FairPoint analyses, and FairPoint reports prepared at the direction of OWS's counsel or in anticipation of litigation. Withheld documents are identified on OWS's privilege log.
Responsive, non-privileged documents are produced at Bates range OWS-022346 through OWS-022789.
Request for Production No. 18
REQUEST: Produce all documents reflecting OWS's compliance or non-compliance with the patent marking statute, 35 U.S.C. § 287, including but not limited to whether OWS marks its products with the asserted patent numbers, the manner of marking, the dates on which marking commenced, and any decisions regarding whether to mark or not to mark particular products.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS interposes no additional specific objections to this Request beyond the General Objections.
RESPONSE: Subject to and without waiving the General Objections, OWS responds as follows: OWS will produce documents reflecting its patent marking practices for products embodying the asserted patents, including product packaging, product labels, datasheets, and website disclosures for the OWS-400ZR, OWS-800XR, and OWS-1600DR product families. OWS's production is sufficient to show OWS's compliance with the marking requirements of 35 U.S.C. § 287(a).
Responsive documents are produced at Bates range OWS-022790 through OWS-023198.
Request for Production No. 19
REQUEST: Produce all inventor notebooks, laboratory records, meeting minutes, design documents, and technical presentations related to the conception, development, and reduction to practice of the inventions claimed in the asserted patents.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks documents beyond what is relevant to the claims and defenses asserted in this action. OWS further objects to this Request to the extent it seeks communications between the named inventors and patent prosecution counsel at Cascade IP Advisors, LLC, as such communications are protected by the attorney-client privilege.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce non-privileged inventor notebooks, laboratory records, and technical documents relating to the conception and reduction to practice of the inventions claimed in the asserted patents. The named inventors of the asserted patents include Dr. Jian-Wei Huang (Chief Technology Officer, OWS), Dr. Nikolai Petrov (Vice President of Engineering, Photonics Division, OWS), and other OWS engineers. With respect to the '562 Patent, the original inventor records derive from Solara Optics, Inc. and are included in the production to the extent such records are in OWS's possession, custody, or control, including records obtained by OWS pursuant to the Asset Purchase Agreement dated June 15, 2018.
Responsive, non-privileged documents are produced at Bates range OWS-023199 through OWS-026567.
Request for Production No. 20
REQUEST: Produce all documents reflecting OWS's knowledge of prior art relating to the subject matter of the asserted patents, including but not limited to prior art search reports, prior art references considered during prosecution, Information Disclosure Statements filed with the USPTO, and any post-issuance prior art assessments or analyses.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks work-product analyses of prior art prepared in anticipation of litigation or at the direction of counsel. Post-issuance prior art analyses prepared by or at the direction of Calderwood & Harkness LLP and/or Cascade IP Advisors, LLC in connection with this litigation constitute protected attorney work product and are not subject to discovery.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce the following categories of non-privileged documents:
(a) References of record cited or considered during the prosecution of the asserted patents, which are already included in the prosecution history documents produced in response to Requests for Production Nos. 1 through 4;
(b) Non-privileged prior art search reports that were obtained in the ordinary course of patent prosecution, to the extent such reports are not protected by the attorney-client privilege;
(c) Information Disclosure Statements ("IDS") filed with the USPTO for each of the asserted patents, together with the references cited therein.
OWS withholds as privileged any post-filing or post-issuance prior art analyses prepared by or at the direction of counsel, including analyses prepared by Calderwood & Harkness LLP, Whitmore & Callahan LLP, or Cascade IP Advisors, LLC in connection with this litigation. These withheld documents are identified on OWS's privilege log.
Responsive, non-privileged documents are produced at Bates range OWS-026568 through OWS-027345.
Request for Production No. 21
REQUEST: Produce all communications between OWS (or its agents) and the USPTO regarding the asserted patents, beyond what is contained in the published prosecution histories.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects that this Request is largely duplicative of Requests for Production Nos. 1 through 5, which already seek the complete prosecution histories of the asserted patents.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce any non-privileged communications with the USPTO regarding the asserted patents that are not already included in the prosecution history productions made in response to Requests for Production Nos. 1 through 5. This includes any petitions, post-issuance correspondence, Terminal Disclaimer filings, and other communications with the USPTO, to the extent such documents exist and are in OWS's possession, custody, or control.
Responsive documents are produced at Bates range OWS-027346 through OWS-027698.
Request for Production No. 22
REQUEST: Produce all documents relating to patent applications that are continuations, continuations-in-part, divisionals, or otherwise related to the asserted patents, including the applications as filed, prosecution histories, and any correspondence with the USPTO.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to the phrase "relating to" as overbroad. OWS will produce application records and prosecution files for patent applications that are continuations, continuations-in-part, divisionals, or are otherwise directly related to the asserted patents by virtue of being in the same patent family.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce prosecution files for continuation and related patent applications in the patent families of the asserted patents. As described in prior responses, the '562 Patent (U.S. Patent No. 9,678,562) and the '847 Patent (U.S. Patent No. 10,234,847) are in the same patent family, with the '847 Patent being a continuation of the '562 Patent. The '193 Patent (U.S. Patent No. 10,891,193) and the '015 Patent (U.S. Patent No. 11,402,015) share a common provisional application, U.S. Provisional Application No. 62/499,117. OWS notes that it holds a total of 142 issued U.S. patents and 58 pending U.S. patent applications across its full portfolio; OWS limits this production to those applications that are in the patent families of the four asserted patents.
Responsive documents are produced at Bates range OWS-027699 through OWS-030012.
Request for Production No. 23
REQUEST: Produce all documents relating to any inter partes review, reexamination, covered business method review, post-grant review, or other post-issuance proceeding before the USPTO or the Patent Trial and Appeal Board involving any of the asserted patents.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS interposes no additional specific objections beyond the General Objections.
RESPONSE: Subject to and without waiving the General Objections, OWS responds as follows: As of the date of this response, no petitions for inter partes review have been filed against any of the four asserted patents. No reexamination requests, post-grant review petitions, covered business method review petitions, or any other post-issuance proceedings have been instituted with respect to any of the asserted patents. Accordingly, OWS has no documents responsive to this Request.
OWS notes for the record that Lumicore has reserved its right to petition for inter partes review of one or more of the asserted patents. The one-year statutory deadline for filing such petitions under 35 U.S.C. § 315(b), measured from the date of service of the complaint in this action, is May 1, 2025.
Request for Production No. 24
REQUEST: Produce all documents identifying OWS products that practice or embody the asserted patents, including but not limited to technical specifications, design documents, product datasheets, and claim-coverage analyses.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request to the extent it seeks claim-coverage analyses prepared at the direction of counsel or in anticipation of litigation, as such analyses are protected by the attorney-client privilege and/or the work-product doctrine.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce product specifications, datasheets, and design summaries for the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families. These product families represent OWS's key product lines in the silicon-photonics transceiver market and embody the innovations claimed in the asserted patents. OWS withholds as privileged any internal claim-coverage analyses prepared by or at the direction of counsel that map the claims of the asserted patents to OWS's products. Withheld documents are identified on OWS's privilege log.
Responsive, non-privileged documents are produced at Bates range OWS-030013 through OWS-032456.
Request for Production No. 25
REQUEST: Produce all documents relating to OWS's manufacturing capacity, manufacturing processes, and supply chain for products that compete with the accused Lumicore products, including but not limited to foundry agreements, capacity utilization reports, and production planning documents.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request as overbroad to the extent it seeks all supply-chain documents without limitation as to time, scope, or relevance. OWS will produce documents relevant to OWS's capacity to serve the demand allegedly displaced by Lumicore's infringing products, consistent with the Panduit factor analysis for lost-profits damages (Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978)).
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce documents sufficient to demonstrate OWS's manufacturing and marketing capability to serve the demand allegedly diverted by Lumicore's infringing products, including foundry partner agreements, capacity utilization reports, and production planning documents for the relevant time period. OWS notes that it is a fabless semiconductor company that utilizes foundry partners for wafer fabrication, packaging, and testing. OWS's production includes documents sufficient to show that OWS had the manufacturing capacity and the marketing ability to make the sales that were allegedly diverted to Lumicore.
All documents produced in response to this Request are designated HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY under the Stipulated Protective Order.
Responsive documents are produced at Bates range OWS-032457 through OWS-033890.
Request for Production No. 26
REQUEST: Produce all documents reflecting OWS's analysis of non-infringing alternatives to the accused Lumicore products, including but not limited to technical comparisons, product evaluations, and market analyses of alternative products or technologies.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request in its entirety on the grounds of attorney-client privilege and work-product protection. OWS's analyses of the availability of acceptable non-infringing substitutes to the accused Lumicore products were prepared at the direction of Calderwood & Harkness LLP in connection with the Panduit lost-profits analysis and constitute protected attorney work product under Federal Rule of Civil Procedure 26(b)(3). Such analyses reflect the mental impressions, conclusions, opinions, and legal theories of OWS's counsel and are therefore protected as opinion work product.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS objects and withholds documents responsive to this Request on the grounds of attorney-client privilege and work-product protection, as stated above. To the extent non-privileged product comparisons available in the marketplace — such as published third-party market reports and industry analyses — are responsive to this Request and are in OWS's possession, custody, or control, OWS will produce them. Privileged documents are listed on OWS's privilege log.
Responsive, non-privileged documents (consisting of publicly available market analyses and industry reports) are produced at Bates range OWS-033891 through OWS-034234.
Request for Production No. 27
REQUEST: Produce all documents relating to Ridgeline Capital Partners, LP's investment in OWS, including but not limited to the acquisition agreement, stockholder agreements, board minutes reflecting discussions or decisions regarding this litigation, and any communications between Ridgeline Capital Partners, LP and OWS regarding the instant litigation.
OBJECTIONS: OWS incorporates its General Objections by reference. OWS objects to this Request as overbroad and not proportional to the needs of the case to the extent it seeks all investment and governance documents between OWS and Ridgeline Capital Partners, LP, the vast majority of which have no relevance to any claim or defense in this patent infringement action. OWS will produce documents relevant to standing, real-party-in-interest status, and damages issues. OWS further objects to this Request to the extent it seeks board minutes, internal communications, and presentations reflecting legal advice regarding this litigation, as such documents are protected by the attorney-client privilege.
RESPONSE: Subject to and without waiving the foregoing objections and the General Objections, OWS responds as follows: OWS will produce the following categories of non-privileged documents:
(a) Non-privileged documents reflecting Ridgeline Capital Partners, LP's acquisition of a 55% equity stake in OWS in 2019 for a purchase price of $780 million;
(b) Organizational documents sufficient to establis

UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

OPTIWAVE SEMICONDUCTOR CORP.,

LUMICORE TECHNOLOGIES, INC.,

I. GENERAL OBJECTIONS

II. SPECIFIC RESPONSES AND OBJECTIONS

Record

Parties

Dates

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