UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
SUBPOENA TO PRODUCE DOCUMENTS, ELECTRONICALLY STORED INFORMATION, OR OBJECTS AND TO PERMIT INSPECTION, AND SUBPOENA FOR DEPOSITION
(SUBPOENA DUCES TECUM AND DEPOSITION NOTICE)
Issued Pursuant to Federal Rule of Civil Procedure 45
Date of Issuance: January 22, 2025
I. SUBPOENA COVER PAGE
(Form AO 88A / 88B Equivalent)
A. Court of Issuance
This subpoena is issued from the United States District Court for the Eastern District of Texas, marshall Division, in accordance with Federal Rule of Civil Procedure 45(a)(2).
B. Identification of the Case
This subpoena is issued in connection with the civil action styled Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc., Case No. 2:24-cv-00319-JRG, pending before the Honorable James R. Gilstrap, United States District Judge.
C. Identification of Recipient of Subpoena
TO: Melissa Chen
Current Employer: Veridian Photonics, Inc.
Former Employer: Lumicore Technologies, Inc. (employed at Lumicore approximately 2020–2024)
Current Title/Role: Engineer, Veridian Photonics, Inc. Ms. Chen is a former engineer of Lumicore Technologies, Inc., where she served in various engineering capacities within the photonic integrated circuit design group during her tenure from approximately 2020 through 2024.
Address for Service: c/o Veridian Photonics, Inc., 2700 Augustine Drive, Suite 150, Santa Clara, CA 95054
D. Issuing Party Information
This subpoena is issued at the request of Plaintiff Optiwave Semiconductor Corp. through its undersigned attorneys of record:
Alan Ngo (CA Bar No. 247819; admitted pro hac vice E.D. Tex.) Responsible Partner Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 555-4200 Facsimile: (213) 555-4201
Email: ango@calderwoodharkness.com
Wendy Schultz (CA Bar No. 301445; admitted pro hac vice E.D. Tex.) Lead Associate Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 555-4200
Email: wschultz@calderwoodharkness.com
Local Counsel: James "Jim" Callahan (TX Bar No. 03982145) Whitmore & Callahan LLP 110 North College Avenue, Suite 800 Tyler, TX 75702 Telephone: (903) 555-7100 Facsimile: (903) 555-7101
Email: jcallahan@whitmorecallahan.com
E. Command to Appear for Deposition
YOU ARE COMMANDED to appear at the time, date, and place set forth below to testify at a deposition under oath:
Date of Deposition: February 12, 2025 (proposed; no sooner than fourteen (14) days from the date of service of this subpoena, in compliance with Federal Rule of Civil Procedure 45(b)(1))
Time: 9:00 a.m. (local time)
Location: Offices of Calderwood & Harkness LLP, 350 South Grand Avenue, 48th Floor, Los Angeles, CA 90071, or such other location as may be agreed upon by the parties and Ms. Chen, consistent with Federal Rule of Civil Procedure 45(c)(1). Pursuant to Rule 45(c)(1), the deposition will be conducted at a place within 100 miles of where Ms. Chen resides, is employed, or regularly transacts business in person.
Estimated Duration: Up to seven (7) hours of testimony on the record, pursuant to Federal Rule of Civil Procedure 30(d)(1). The parties reserve the right to seek leave of the Court to extend the duration should circumstances warrant.
Recording Method: The deposition will be recorded by stenographic transcription and videographic recording simultaneously. A court reporter qualified under applicable law and a certified videographer will be present to record the proceedings. The stenographic transcript shall serve as the official record of the deposition.
F. Command to Produce Documents
YOU ARE FURTHER COMMANDED to produce documents and electronically stored information ("ESI") responsive to the document requests set forth in the attached Schedule A at or before the time of the deposition.
Production of documents may be made in advance of the deposition date but in no event later than ten (10) calendar days before the deposition date (i.e., no later than February 2, 2025, assuming a February 12, 2025 deposition date). Advance production shall be delivered to:
Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071
Attn: Wendy Schultz
Production Format: All ESI shall be produced in its native format, including all associated metadata. Paper documents shall be produced in TIFF format (Group IV, single-page, 300 dpi minimum) with associated load files (Ashgrove Technologies DAT and Opticon OPT) and extracted or OCR text, consistent with the ESI Protocol Agreement dated August 15, 2024, entered as a stipulated order in this action at Docket Entry No. 27. To the extent any responsive documents consist of email communications, such documents shall be produced in their native format (e.g., .MSG or .PST format) with all metadata intact, including custodian information, sent/received dates, To/From/CC/BCC fields, subject lines, and attachment identifiers.
Failure to comply with this subpoena may subject you to the penalties and sanctions provided by Federal Rule of Civil Procedure 45(g) and 28 U.S.C. § 1826, including contempt of court.
II. NOTICE OF DEPOSITION OF MELISSA CHEN (NON-PARTY WITNESS)
NOTICE OF DEPOSITION OF NON-PARTY WITNESS MELISSA CHEN PURSUANT TO FED. R. CIV. P. 30 AND 45
Date: January 22, 2025
A. Notice to All Parties
TO ALL PARTIES AND THEIR COUNSEL OF RECORD:
PLEASE TAKE NOTICE that Plaintiff Optiwave Semiconductor Corp. ("Optiwave" or "Plaintiff"), by and through its undersigned attorneys of record, will take the oral deposition of Melissa Chen, a non-party fact witness, on the date, at the time, and at the location specified in Section I.E of this subpoena, or at such other date, time, and location as may be agreed upon by the parties and Ms. Chen.
This Notice is directed to the following counsel of record for Defendant Lumicore Technologies, Inc.:
Counsel for Defendant Lumicore Technologies, Inc.:
Catherine "Kate" Rourke (TX Bar No. 17895321) Lead Trial Partner Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701 Telephone: (512) 555-9800
Email: krourke@hvclegal.com
Darren Cho (TX Bar No. 18440067) Second Chair Partner Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701 Telephone: (512) 555-9800
Email: dcho@hvclegal.com
Samantha Briggs (TX Bar No. 24102398) Lead Associate Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701 Telephone: (512) 555-9800
Email: sbriggs@hvclegal.com
Rohan Iyer (TX Bar No. 24118845) Working Associate Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701 Telephone: (512) 555-9800
Email: riyer@hvclegal.com
Local Counsel for Defendant:
Maria Garza (TX Bar No. 07893201) Trask Eddington LLP 425 East Front Street, Suite 300 Tyler, TX 75701 Telephone: (903) 555-2200
Email: mgarza@traskeddington.com
B. Deposition Particulars
The deposition of Melissa Chen will be taken before a duly qualified notary public or other officer authorized to administer oaths pursuant to 28 U.S.C. § 1746 and applicable state law. The deposition will be conducted under oath and will be recorded both stenographically and by videography, in accordance with Federal Rule of Civil Procedure 30(b)(3). The videographic recording will be conducted by a certified legal videographer. The stenographic transcript, when prepared and certified, shall constitute the official record of the deposition for all purposes in this litigation.
Plaintiff reserves the right to continue the deposition from day to day until completed, as provided by applicable rules. All parties and their counsel are invited to attend and cross-examine the witness as permitted under the Federal Rules of Civil Procedure.
C. Subject Matter of Examination
The areas of inquiry at Ms. Chen's deposition will include, but are not limited to, the following:
1. Employment History at Lumicore Technologies, Inc. — Ms. Chen's employment at Lumicore Technologies, Inc. from approximately 2020 through 2024, including her positions held, titles, job descriptions, responsibilities, and reporting relationships within the engineering department. This includes, without limitation, her relationship to and interactions with members of Lumicore's senior management, including Dr. Sandra Michaud (Chief Technology Officer), Dr. Eric Dalmqvist (Vice President of Product Development), and Raymond Bautista (General Counsel).
2. Role on the LumiLink 400G-ZR+ Design and Development Team — Ms. Chen's role on the LumiLink 400G-ZR+ design and development team at Lumicore, including her specific technical contributions to the design, engineering, testing, and validation of the accused product. This area of inquiry will encompass the timeline of development, the design methodologies employed, the allocation of engineering tasks among team members, and the technical decision-making process by which key architectural and design choices were made.
3. Knowledge of Optiwave Patents and Patent Applications — Ms. Chen's knowledge of, access to, and review of published patent applications and issued patents owned by or assigned to Optiwave Semiconductor Corp., including but not limited to Published Application No. 2018/0123456 (corresponding to U.S. Patent No. 10,891,193, the '193 Patent), U.S. Patent No. 10,234,847 (the '847 Patent), U.S. Patent No. 9,678,562 (the '562 Patent), and U.S. Patent No. 11,402,015 (the '015 Patent). This includes when, how, and under what circumstances Ms. Chen first became aware of any Optiwave patent or patent application, and any actions taken in response to such awareness.
4. Internal Communications Regarding Optiwave's Patent Portfolio — Communications, meetings, or discussions within Lumicore's engineering team, management, or legal department regarding Optiwave Semiconductor Corp.'s patent portfolio, individual patent applications, or issued patents during the design phase of the LumiLink 400G-ZR+ in 2021–2022. This includes formal meetings, informal discussions, email exchanges, and messages sent through internal collaboration platforms such as Meridian Solutions, Northgate Data Systems, or similar tools.
5. Design-Around and Freedom-to-Operate Analyses — Ms. Chen's knowledge of any design-around analyses, freedom-to-operate studies, infringement risk assessments, patent clearance studies, or similar evaluations conducted by or on behalf of Lumicore Technologies, Inc. in connection with the LumiLink 400G-ZR+ or any other Accused Product. This includes the identity of the individuals or outside counsel who conducted or participated in such analyses, the timing of such analyses, the conclusions reached, and any actions taken in response thereto.
6. Instructions or Directives from Lumicore Management Regarding Optiwave IP — Ms. Chen's knowledge of any instructions, directives, policies, or guidance from Lumicore management—including Dr. Sandra Michaud (CTO), Dr. Eric Dalmqvist (VP of Product Development), and Raymond Bautista (General Counsel)—regarding Optiwave Semiconductor Corp.'s intellectual property, including any instructions to review, avoid, design around, or otherwise address Optiwave's patents during the development of the Accused Products.
7. Prior-Art References and Technical Literature — Ms. Chen's knowledge of prior-art references, published scientific literature, conference papers, technical standards documents, or other technical literature reviewed during the LumiLink 400G-ZR+ design process, including the sources of such materials and the purposes for which they were reviewed.
8. Departure from Lumicore and Transition to Veridian Photonics — The circumstances of Ms. Chen's departure from Lumicore Technologies, Inc. and her subsequent transition to employment at Veridian Photonics, Inc., including the reasons for her departure, any exit procedures followed, the retention or return of documents and materials, and any post-employment obligations or restrictions imposed by Lumicore.
9. Documents and Materials in Ms. Chen's Possession — Any documents, engineering notebooks, lab notebooks, design journals, electronic files, personal technical notes, or other materials currently in Ms. Chen's possession, custody, or control that relate to any of the foregoing topics, including materials retained from her employment at Lumicore Technologies, Inc.
The foregoing description of anticipated areas of inquiry is provided for notice purposes and is not intended to limit the scope of examination at the deposition. Plaintiff reserves the right to inquire into any topic relevant to the claims and defenses in this action or reasonably calculated to lead to the discovery of admissible evidence.
D. Stipulated Protective Order
The parties in this action have entered into a Stipulated Protective Order, which was approved and entered by the Court on approximately August 19, 2024, and is filed at Docket Entry No. 30 (the "Protective Order"). The Protective Order establishes a three-tier confidentiality framework for the treatment of confidential information exchanged in discovery:
• Tier 1: CONFIDENTIAL — Information that a designating party believes in good faith constitutes confidential business or technical information.
• Tier 2: HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY — Information that a designating party believes in good faith constitutes highly sensitive confidential business, technical, or financial information, the disclosure of which to persons other than outside counsel and designated experts would cause competitive harm.
• Tier 3: HIGHLY CONFIDENTIAL — SOURCE CODE — Source code, firmware, FPGA design files, RTL code, and related proprietary programming or design information.
All confidential information disclosed during the deposition of Melissa Chen will be treated in accordance with the terms and provisions of the Protective Order. As a non-party witness, Ms. Chen will be required to acknowledge and agree to be bound by the terms of the Protective Order before any information designated as CONFIDENTIAL, HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY, or HIGHLY CONFIDENTIAL — SOURCE CODE is disclosed to her or she is asked questions about such information during the deposition. A copy of the Protective Order is attached hereto as Exhibit 1 for Ms. Chen's review prior to the deposition.
During the deposition, any party or the witness may designate portions of the deposition testimony as confidential under the applicable tier of the Protective Order. Pending designation, the default treatment of deposition testimony shall be governed by the terms of the Protective Order, including the thirty-day post-deposition designation period set forth therein.
III. SCHEDULE A
DOCUMENTS AND ELECTRONICALLY STORED INFORMATION TO BE PRODUCED
A. Definitions and Instructions
1. Definitions. As used in this Schedule A and throughout this subpoena, the following definitions shall apply:
a. "YOU" or "YOUR" refers to Melissa Chen, the recipient of this subpoena, individually and in her capacity as a former employee of Lumicore Technologies, Inc. and current employee of Veridian Photonics, Inc.
b. "LUMICORE" refers to Lumicore Technologies, Inc. (also referred to as "LTC"), a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at 9200 Spectrum Boulevard, Building C, Austin, TX 78759, and includes all of its officers, directors, employees, agents, subsidiaries, affiliates, predecessors, successors, and assigns.
c. "OWS" or "OPTIWAVE" refers to Optiwave Semiconductor Corp., a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, CA 95054, and includes all of its officers, directors, employees, agents, subsidiaries, affiliates, predecessors, successors, and assigns.
d. "ACCUSED PRODUCTS" refers to the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules manufactured, sold, offered for sale, used, or imported into the United States by Lumicore Technologies, Inc., and any substantially similar or successor products.
e. "PATENTS-IN-SUIT" refers to the following United States patents, which are asserted by Optiwave Semiconductor Corp. in this action:
(i) U.S. Patent No. 10,234,847 (the "'847 Patent"), titled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss";
(ii) U.S. Patent No. 10,891,193 (the "'193 Patent"), titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate";
(iii) U.S. Patent No. 9,678,562 (the "'562 Patent"), titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks"; and
(iv) U.S. Patent No. 11,402,015 (the "'015 Patent"), titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers."
f. "DOCUMENT" or "DOCUMENTS" shall be construed in the broadest sense permitted under Federal Rule of Civil Procedure 34(a) and includes, without limitation, all writings, drawings, graphs, charts, photographs, sound recordings, images, electronically stored information, and any other data or data compilations—stored in any medium from which information can be obtained—including but not limited to emails, text messages, instant messages (including messages sent via Meridian Solutions, Northgate Data Systems, Meridian Services Inc., Signal, WeChat, or any similar platform), memoranda, letters, reports, analyses, presentations, spreadsheets, databases, notes (handwritten or typed), calendars, appointment books, diaries, logs, voicemails, audio recordings, video recordings, social media posts, and metadata associated with any of the foregoing.
g. "COMMUNICATION" or "COMMUNICATIONS" means any oral, written, or electronic exchange of information between two or more persons, including but not limited to emails, text messages, instant messages (including messages via Meridian Solutions, Northgate Data Systems, or similar platforms), letters, memoranda, facsimiles, presentations, telephone calls, voicemails, video conferences, in-person conversations, and any other form of transmission of information.
h. "RELATE TO" or "RELATING TO" means referring to, concerning, describing, evidencing, constituting, reflecting, mentioning, pertaining to, supporting, contradicting, or having any logical connection with the subject matter referenced.
i. "PERSON" includes any natural person, corporation, limited liability company, partnership, joint venture, association, governmental body or agency, and any other legal or commercial entity.
j. "RELEVANT PERIOD" means the period from January 1, 2020 through and including the date of Ms. Chen's departure from Lumicore Technologies, Inc. (approximately 2024), unless a specific document request specifies a different time period. For Request Nos. 13 and 14, the Relevant Period extends through the date of compliance with this subpoena.
2. Instructions. The following instructions apply to all document requests contained in this Schedule A:
a. You are directed to produce all responsive documents and ESI in your possession, custody, or control. Documents are deemed to be in your "possession, custody, or control" if you have the legal right or practical ability to obtain them, whether they are in your physical possession, maintained on your behalf by another person or entity, stored on personal devices (including personal computers, laptops, tablets, smartphones, external hard drives, or USB drives), stored in cloud-based accounts (including personal email accounts, cloud storage services such as Hollowell Health IT, Larkspur Technologies, Meridian Systems, or Cobalt Ridge Systems), or otherwise accessible to you.
b. If any document responsive to any request in this Schedule A is withheld in whole or in part on the grounds of privilege, work-product protection, or any other applicable protection, you must provide a privilege log that describes each withheld document or portion thereof with sufficient detail to enable the parties and the Court to assess the claim of privilege. The privilege log shall include, at a minimum, the following information for each withheld document: (i) the date of the document; (ii) the author(s) of the document; (iii) the recipient(s) and any persons copied; (iv) the general subject matter of the document; (v) the privilege or protection asserted; and (vi) the factual basis for the claim of privilege or protection.
c. Documents shall be produced in native format for all ESI, with all associated metadata intact (including, for emails, the To, From, CC, BCC, Subject, Date Sent, Date Received, and attachment fields). Paper documents shall be produced in TIFF format (Group IV, single-page, 300 dpi minimum resolution) with associated Ashgrove Technologies DAT load files, Opticon OPT load files, and extracted or OCR text, consistent with the ESI Protocol Agreement dated August 15, 2024, entered as a stipulated order in this action at Docket Entry No. 27.
d. To the extent practicable, responsive documents shall be organized by request number or identified with a notation indicating the request number(s) to which the document is responsive.
e. If a document is responsive to more than one request, it need only be produced once, provided that a notation or cross-reference is included identifying all request numbers to which the document is responsive.
f. If any responsive document has been lost, destroyed, discarded, or is otherwise no longer available, you must identify the document, describe its contents to the best of your recollection, state the date on which it was lost, destroyed, or discarded, and explain the circumstances of its loss or destruction.
g. Unless a specific request provides otherwise, the applicable time period for all document requests is the Relevant Period as defined above.
h. Each document request shall be construed independently and not by reference to any other request for the purpose of limitation.
B. Document Requests
REQUEST NO. 1:
All DOCUMENTS RELATING TO YOUR employment at LUMICORE Technologies, Inc., including but not limited to offer letters, employment agreements, confidentiality agreements, non-disclosure agreements, non-compete or non-solicitation agreements, invention assignment agreements, intellectual property assignment agreements, employee handbooks or policy acknowledgments signed by YOU, performance reviews, separation agreements, severance agreements, release agreements, and any amendments, addenda, or supplements thereto.
REQUEST NO. 2:
All DOCUMENTS RELATING TO YOUR role, responsibilities, and assignments on the LumiLink 400G-ZR+ design and development team at LUMICORE, including but not limited to organizational charts, team rosters, project charters, project plans, project schedules, Gantt charts, task assignments, milestone reports, status reports, sprint or iteration reports, and any other project management documentation reflecting YOUR involvement in the design and development of the LumiLink 400G-ZR+ transceiver module.
REQUEST NO. 3:
All DOCUMENTS RELATING TO YOUR knowledge of, access to, review of, or analysis of any patents, patent applications, or published patent applications owned by or assigned to OPTIWAVE Semiconductor Corp., including but not limited to:
(a) U.S. Patent No. 10,234,847 (the '847 Patent), titled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss";
(b) U.S. Patent No. 10,891,193 (the '193 Patent), titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate";
(c) U.S. Patent No. 9,678,562 (the '562 Patent), titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks";
(d) U.S. Patent No. 11,402,015 (the '015 Patent), titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers"; and
(e) Published Application No. 2018/0123456 (corresponding to the '193 Patent).
This request encompasses all documents reflecting or referencing any analysis, review, annotation, summary, comparison, or evaluation of any of the foregoing patents or patent applications, whether performed by YOU individually or in collaboration with others.
REQUEST NO. 4:
All COMMUNICATIONS (including emails, instant messages, text messages, and internal chat platform messages such as Meridian Solutions or Northgate Data Systems) between YOU and any other LUMICORE employee, contractor, consultant, or agent RELATING TO any patent, patent application, or published patent application owned by or assigned to OPTIWAVE Semiconductor Corp., including but not limited to the PATENTS-IN-SUIT and Published Application No. 2018/0123456.
REQUEST NO. 5:
All COMMUNICATIONS between YOU and Dr. Sandra Michaud (LUMICORE Chief Technology Officer) RELATING TO the design, development, engineering, testing, validation, or commercialization of any ACCUSED PRODUCT, including the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules.
REQUEST NO. 6:
All COMMUNICATIONS between YOU and Dr. Eric Dalmqvist (LUMICORE Vice President of Product Development) RELATING TO the design, development, engineering, testing, validation, or commercialization of any ACCUSED PRODUCT, including the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules.
REQUEST NO. 7:
All DOCUMENTS RELATING TO any design-around analysis, freedom-to-operate analysis, infringement risk assessment, patent clearance study, right-to-practice analysis, invalidity analysis, or similar evaluation conducted by or on behalf of LUMICORE in connection with the LumiLink 400G-ZR+ or any other ACCUSED PRODUCT, to the extent such DOCUMENTS are in YOUR possession, custody, or control. This request includes any opinions of counsel, memoranda, reports, charts, claim charts, or presentations prepared in connection with any such analysis, to the extent not protected by applicable privilege.
REQUEST NO. 8:
All DOCUMENTS RELATING TO any meetings, presentations, discussions, reviews, or briefings at LUMICORE during which OPTIWAVE Semiconductor Corp.'s patent portfolio, specific OWS patents, individual OWS published patent applications, or OWS intellectual property strategy were discussed, referenced, displayed, or analyzed, including but not limited to meeting agendas, meeting invitations, meeting minutes, attendance lists, presentation slides, screen captures, handouts, whiteboard photographs, follow-up emails, action items, and related COMMUNICATIONS.
REQUEST NO. 9:
All engineering notebooks, lab notebooks, design journals, personal technical notes, or similar records maintained by YOU during YOUR employment at LUMICORE RELATING TO the design, development, testing, characterization, or validation of any ACCUSED PRODUCT, including but not limited to sketches, block diagrams, circuit schematics, layout drawings, calculations, simulation parameters, simulation results, measurement data, test data, characterization reports, and design review comments.
REQUEST NO. 10:
All DOCUMENTS RELATING TO YOUR access to or use of any prior-art databases, patent search tools, patent analytics platforms, or patent monitoring services during YOUR employment at LUMICORE, including but not limited to Severin Industries Patents, USPTO PAIR, Espacenet, Pemberton Data Systems, Marlowe Solutions, Orbit intelligence, or any similar tool or service. This request includes search queries, search results, saved searches, alert configurations, alert notifications, and any reports or summaries generated from such tools RELATING TO OWS patents, OWS patent applications, or technologies relevant to the ACCUSED PRODUCTS.
REQUEST NO. 11:
All DOCUMENTS RELATING TO the following technical subsystems and components as designed, implemented, or incorporated in the LumiLink 400G-ZR+ transceiver module, to the extent such DOCUMENTS are in YOUR possession, custody, or control:
(a) Waveguide multiplexer architecture, including arrayed waveguide gratings, echelle gratings, or Mach-Zehnder interferometer-based multiplexer designs;
(b) coherent optical transceiver design, including modulator driver circuits, transimpedance amplifier integration, digital signal processing architecture, and silicon photonic integration methodology;
(c) Thermal management structures, including micro-channel heat sinks, thermoelectric cooler integration, heat spreader designs, and thermal simulation models; and
(d) Grating coupler designs, including polarization-diverse grating couplers, fiber-to-chip coupling structures, and associated design optimization data.
REQUEST NO. 12:
All DOCUMENTS RELATING TO YOUR departure from LUMICORE Technologies, Inc. and YOUR transition to employment at Veridian Photonics, Inc., including but not limited to resignation letters, resignation emails, exit interview records, exit checklists, COMMUNICATIONS with LUMICORE human resources personnel or management regarding YOUR departure, any DOCUMENTS YOU retained or were permitted to retain from LUMICORE upon YOUR departure, any DOCUMENTS YOU returned to LUMICORE, and any certifications or representations made by YOU regarding the return or destruction of LUMICORE confidential information or intellectual property.
REQUEST NO. 13:
All COMMUNICATIONS between YOU and any current or former LUMICORE employee, officer, director, contractor, or agent, from the date of YOUR departure from LUMICORE through the date of compliance with this subpoena, RELATING TO this litigation, the PATENTS-IN-SUIT, the ACCUSED PRODUCTS, or OPTIWAVE Semiconductor Corp.
REQUEST NO. 14:
All DOCUMENTS RELATING TO any COMMUNICATIONS between YOU and OPTIWAVE Semiconductor Corp., Calderwood & Harkness LLP, Whitmore & Callahan LLP, or any PERSON acting on behalf of OPTIWAVE, regarding this litigation, the PATENTS-IN-SUIT, the ACCUSED PRODUCTS, or any subject matter at issue in this action.
REQUEST NO. 15:
All DOCUMENTS RELATING TO any instructions, directives, policies, guidelines, or guidance YOU received from Raymond Bautista (LUMICORE General Counsel) or any other LUMICORE in-house or outside attorney regarding intellectual property owned by third parties, including OPTIWAVE Semiconductor Corp., during the design and development of the LumiLink 400G-ZR+ or any other ACCUSED PRODUCT. This request includes any written policies or training materials regarding patent awareness, patent clearance obligations, or patent risk management provided to LUMICORE engineering personnel.
REQUEST NO. 16:
All DOCUMENTS reflecting or RELATING TO the timing and circumstances under which LUMICORE's LumiLink 400G-ZR+ design team—including YOU—first accessed, reviewed, or became aware of Published Application No. 2018/0123456 (corresponding to the '193 Patent) or any other OWS published patent application or issued patent, during the product design phase in approximately 2021–2022. This request includes DOCUMENTS identifying who brought the relevant patent or application to the team's attention, how it was disseminated, what analysis was performed upon discovery, and what actions, if any, were taken in response.
IV. ADDITIONAL NOTICES AND ADVISEMENTS
A. Duty to Preserve
You are hereby directed to preserve all documents and electronically stored information responsive to this subpoena and the document requests set forth in Schedule A. You must immediately take all reasonable steps to prevent the deletion, destruction, alteration, modification, overwriting, or other disposal of any documents or ESI that may be responsive to this subpoena, regardless of where such documents or ESI are stored. This preservation obligation extends to all documents and ESI in your possession, custody, or control, including materials stored on personal devices, in cloud-based accounts, on external storage media, and in any other location. This preservation obligation is ongoing and continues through the final resolution of this litigation.
You are further directed to suspend any automatic deletion programs, document retention schedules, or similar protocols that may result in the destruction of responsive documents or ESI, and to take affirmative steps to ensure that all responsive materials are preserved in their current form.
B. Rights of the Recipient Under Rule 45
Pursuant to Federal Rule of Civil Procedure 45(d) and (e), you are advised of the following rights:
1. Right to Object. You have the right to serve written objections to this subpoena within fourteen (14) days after service of the subpoena, or before the time specified for compliance if that time is less than fourteen (14) days. Objections must be served on the party or attorney designated in the subpoena before the earlier of the time specified for compliance or fourteen (14) days after the subpoena is served. See Fed. R. Civ. P. 45(d)(2)(B). If you serve timely written objections, the serving party may not compel compliance except by obtaining an order from the court that issued the subpoena after notice to you.
2. Right to Move to Quash or Modify. You have the right to move to quash or modify this subpoena under Federal Rule of Civil Procedure 45(d)(3) if the subpoena:
(a) fails to allow a reasonable time to comply;
(b) requires a person to comply beyond the geographical limits specified in Rule 45(c);
(c) requires disclosure of privileged or other protected matter, if no exception or waiver applies;
(d) subjects you to undue burden; or
(e) requires disclosure of a trade secret or other confidential research, development, or commercial information.
Any motion to quash or modify must be filed in the court for the district where compliance is required, in accordance with Rule 45(d)(3). Given that compliance with the document production and deposition attendance commands of this subpoena is required at a location within the Central or Northern District of California, any motion to quash or modify should be filed in the appropriate district. Alternatively, if the parties agree, such motion may be made in the United States District Court for the Eastern District of Texas.
3. Privilege and Work-Product Protection. If you withhold any document or ESI on the basis of a claim of privilege or protection as trial-preparation material, you must, before the time for compliance, provide a privilege log describing each withheld document with sufficient specificity to enable the parties and the Court to evaluate the claim. The privilege log must include the information described in Section III.A.2(b) above. See Fed. R. Civ. P. 45(e)(2)(A).
4. Inadvertent Production. If you inadvertently produce information that is subject to a claim of privilege or protection as trial-preparation material, you may notify the party that received the information of the claim and the basis for it. After being notified, a party must promptly return, sequester, or destroy the specified information and any copies; must not use or disclose the information until the claim is resolved; and must take reasonable steps to retrieve the information if the party disclosed it before being notified. See Fed. R. Civ. P. 45(e)(2)(B).
C. Compliance with Rule 45(c) — Place of Compliance
Pursuant to Federal Rule of Civil Procedure 45(c)(2), production of documents and ESI in response to this subpoena may be made at a place within 100 miles of where you reside, are employed, or regularly transact business in person. The documents may be produced by mail, courier, or electronic transmission to the address and attention specified in Section I.F above, or at such other location as may be agreed upon.
Pursuant to Federal Rule of Civil Procedure 45(c)(1), your deposition testimony will be taken at a place within 100 miles of where you reside, are employed, or regularly transact business in person, as specified in Section I.E above. If the proposed location is not within the permissible geographic range, the parties will work with you and your counsel, if any, to identify a mutually agreeable location that satisfies the requirements of Rule 45(c)(1).
D. Witness Fees and Mileage
In accordance with 28 U.S.C. § 1821, Plaintiff will tender to you at the time of service of this subpoena, or promptly thereafter, the witness attendance fee and mileage allowance required by law. The current witness attendance fee is $40.00 per day, and the mileage reimbursement rate is $0.67 per mile (or such rate as is in effect at the time of travel) for travel to and from the place of attendance. Plaintiff will also reimburse reasonable parking fees and tolls incurred in connection with your attendance.
E. Obligation to Respond Even if Represented by Counsel
This subpoena is directed to you personally as a non-party witness and requires your personal compliance. If you retain counsel to represent you in connection with this subpoena, all objections, motions, or other communications regarding this subpoena should be directed to:
Wendy Schultz Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 555-4200
Email: wschultz@calderwoodharkness.com
The retention of counsel does not relieve you of your obligation to comply with this subpoena. If you have any questions regarding the scope of the subpoena, the production of documents, or the scheduling of the deposition, you or your counsel may contact Ms. Schultz at the contact information provided above.
V. PROOF OF SERVICE
A. Certificate of Service on Subpoena Recipient
I, the undersigned, hereby certify that I served the foregoing Subpoena to Produce Documents, Electronically Stored Information, or Objects and to Permit Inspection, and Subpoena for Deposition (Subpoena Duces Tecum and Deposition Notice), including all attachments, schedules, and exhibits, upon the following individual:
Name: Melissa Chen
Address: c/o Veridian Photonics, Inc., 2700 Augustine Drive, Suite 150, Santa Clara, CA 95054
Date of Service: ________
Time of Service: ________
Manner of Service: Personal service upon Melissa Chen pursuant to Fed. R. Civ. P. 45(b)(1) Service at dwelling or usual place of abode by leaving a copy with a person of suitable age and discretion residing therein Other: ________
Tender of Witness Fees and Mileage:
Witness attendance fee tendered in the amount of $__ pursuant to 28 U.S.C. § 1821
Mileage allowance tendered in the amount of $__ pursuant to 28 U.S.C. § 1821
Check / Money order enclosed
Other form of tender: ________
________________________________________
Name of Process Server (Print)
________________________________________
Signature of Process Server
________________________________________
Date of Certificate
________________________________________
Address of Process Server
________________________________________
Telephone Number of Process Server
B. Certificate of Service on Counsel for All Parties