UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
SUBPOENA TO PRODUCE DOCUMENTS, INFORMATION, OR OBJECTS
OR TO PERMIT INSPECTION OF PREMISES IN A CIVIL ACTION
(Issued Pursuant to Federal Rule of Civil Procedure 45)
TO: Gregory Falk
c/o Falk Photonics Consulting LLC 2841 Camino Del Rio South, Suite 210 San Diego, CA 92108
Capacity: Former Vice President of Engineering, Solara Optics, Inc. (a California corporation, dissolved approximately 2020); current custodian of archived corporate records of Solara Optics, Inc.
I. COMMAND TO PRODUCE
YOU ARE HEREBY COMMANDED to produce, at the date, time, and place set forth below, the documents and electronically stored information ("ESI") designated in Schedule A attached hereto, or to permit inspection and copying of said documents and ESI, in accordance with the instructions set forth below and in compliance with Federal Rule of Civil Procedure 45.
Date of Production: October 9, 2024 (thirty (30) calendar days from the date of issuance of this subpoena)
Time: 10:00 a.m. (Central Time)
Place of Production: Offices of Calderwood & Harkness LLP, 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071. Alternatively, documents and ESI may be produced electronically to a secure file transfer site designated by Calderwood & Harkness LLP, details and login credentials for which will be provided upon request to the contact persons identified below.
Alternative Inspection: If the recipient prefers that documents be inspected at the location where records are currently maintained, the recipient shall notify issuing counsel no later than September 23, 2024 to arrange for inspection at a mutually convenient date and time.
Manner of Production
Documents and ESI shall be produced in accordance with the following requirements:
1. Documents originally created or maintained in electronic form shall be produced in their native electronic format, including all associated metadata. Where native production is not feasible, documents shall be produced as single-page TIFF images (300 dpi minimum) with associated load files (Ashgrove Technologies .DAT and Opticon .OPT files) and extracted or OCR text files, consistent with the ESI Protocol Agreement entered by the parties in this action on August 15, 2024.
2. Paper documents, or documents for which no electronic original exists, shall be produced as single-page TIFF images with Bates numbering, organized to correspond to the categories set forth in Schedule A.
3. All metadata associated with electronically stored information, including but not limited to date created, date modified, date sent, date received, author, recipient(s), file path, file name, and file size, shall be preserved and produced in a metadata load file.
4. Documents or ESI withheld on the basis of any applicable privilege shall be identified on a privilege log consistent with Federal Rule of Civil Procedure 45(e)(2) and the requirements set forth in Section VII.D of this subpoena.
5. The producing party shall preserve the document family relationships of all documents produced (i.e., parent emails and their attachments shall be produced together and identified as a document family).
II. ISSUING ATTORNEY INFORMATION
This subpoena is issued on behalf of Plaintiff Optiwave Semiconductor Corp. by and through its counsel of record:
Wendy Schultz (SBN 298741) Lead Associate Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-0147
Email: wschultz@calderwoodharkness.com
Admitted pro hac vice, Eastern District of Texas
Responsible Partner: Alan Ngo (SBN 187622) Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-0100
Email: ango@calderwoodharkness.com
Local Counsel: James "Jim" Callahan (TX Bar No. 03847219) Whitmore & Callahan LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-0264
Email: jcallahan@whitmorecallahan.com
III. NOTICE AND PROOF OF SERVICE
A. Notice to Other Parties
In accordance with Federal Rule of Civil Procedure 45(a)(4), notice of this subpoena and a copy thereof have been served on all parties to this action, including counsel for Defendant Lumicore Technologies, Inc., as follows:
Catherine "Kate" Rourke Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Telephone: (512) 555-0388
Email: krourke@hvclegal.com
Lead Counsel for Defendant Lumicore Technologies, Inc.
Maria Garza Trask Eddington LLP 425 East Front Street, Suite 300 Tyler, Texas 75701 Telephone: (903) 555-0419
Email: mgarza@traskeddington.com
Local Counsel for Defendant Lumicore Technologies, Inc.
Date of Notice to Parties: September 9, 2024 (contemporaneous with issuance of this subpoena).
B. Proof of Service
IV. FEDERAL RULE OF CIVIL PROCEDURE 45 ADVISEMENTS
The following advisements are provided to the recipient of this subpoena in accordance with Federal Rule of Civil Procedure 45:
A. Duty to Respond
You must respond to this subpoena by producing the documents and ESI designated in Schedule A by the date specified above (October 9, 2024), subject to any objections timely served in accordance with Rule 45(d)(2)(B). Your obligation to respond runs to the court that issued this subpoena, and compliance is not excused by the fact that the underlying litigation is pending in a different district from your place of residence or business.
B. Right to Object
You may serve written objections to this subpoena on the issuing attorney, Wendy Schultz, at Calderwood & Harkness LLP, 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071, within fourteen (14) days after service of this subpoena, or before the date of production (October 9, 2024) if that date is less than fourteen (14) days after service. Written objections must state the specific grounds for each objection. If objections are served, the serving party shall not be entitled to production except pursuant to a court order. See Fed. R. Civ. P. 45(d)(2)(B).
C. Obligations Regarding Privileged Materials
If you withhold any subpoenaed document or ESI on the basis of privilege, you must, within the time for producing the documents, provide a privilege log that: (i) expressly makes the claim of privilege; and (ii) describes the nature of the withheld documents, communications, or tangible things in a manner that, without revealing information itself privileged or protected, will enable the issuing party to assess the claim. See Fed. R. Civ. P. 45(e)(2)(A). If you produce documents that you later determine are privileged, you must promptly notify the issuing party, who must then promptly return, sequester, or destroy the specified information and any copies. See Fed. R. Civ. P. 45(e)(2)(B).
D. Contempt Warning
NOTICE: Failure by any person without adequate excuse to obey a subpoena served upon that person may be deemed a contempt of the court from which the subpoena issued. See Fed. R. Civ. P. 45(g). An adequate cause for failure to obey exists when a subpoena purports to require a non-party to attend or produce at a place outside the geographic limits specified in Rule 45(c).
E. Protection of Persons Subject to Subpoena
You have the right to file a motion to quash or modify this subpoena under Federal Rule of Civil Procedure 45(d)(3). A motion to quash or modify must be filed in the court for the district where compliance is required (i.e., the United States District Court for the Southern District of California, if compliance is required in San Diego, or the United States District Court for the Central District of California, if compliance is required in Los Angeles), and must be timely filed before the date of production.
Compliance with this subpoena does not require you to travel more than 100 miles from the place where you reside, are employed, or regularly transact business in person, except that, if the subpoena commands attendance at a trial, compliance may require travel to any place within the state where you reside, are employed, or regularly transact business. See Fed. R. Civ. P. 45(c). Because this subpoena commands only the production of documents and ESI (and does not command testimony), production may be made at the place of production designated above, by mail, or by electronic transmission.
F. Confidentiality and Protective Order
A Stipulated Protective Order was entered in this action on August 19, 2024 (Dkt. No. 34). The Protective Order provides three tiers of confidentiality protection for documents and information produced or disclosed in the litigation:
(i) "Confidential" — restricts access to outside counsel, in-house counsel, and authorized individuals;
(ii) "Highly Confidential — Attorneys' Eyes Only" — restricts access to outside counsel and designated experts only; and
(iii) "Highly Confidential — Source Code" — restricts access to outside counsel and designated source-code review experts at a secure facility.
Any documents produced by the recipient that contain trade secrets, confidential business information, or other sensitive proprietary information may be designated by the recipient under the applicable tier of the Protective Order. Calderwood & Harkness LLP will provide the recipient with a complete copy of the Stipulated Protective Order upon request. Any documents so designated will be treated in accordance with the restrictions set forth therein, and all parties and their counsel are bound by the terms of the Protective Order with respect to any materials produced by third parties.
SCHEDULE A
DOCUMENTS AND ELECTRONICALLY STORED INFORMATION TO BE PRODUCED
PREAMBLE AND DEFINITIONS
For purposes of this Schedule A, the following definitions shall apply:
1. "Solara Optics" means Solara Optics, Inc., a California corporation organized under the laws of the State of California, having maintained its principal place of business at 7700 Irvine Center Drive, Suite 800, Irvine, California 92618, and dissolved in approximately 2020.
2. "OWS" means Optiwave Semiconductor Corp., a Delaware corporation with its principal place of business at 4200 Semiconductor Drive, Plano, Texas 75024, which is the Plaintiff in this action.
3. "'562 Patent" means United States Patent No. 9,678,562, titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," filed November 22, 2014, issued June 13, 2017, originally assigned to Solara Optics, Inc., and now assigned to Optiwave Semiconductor Corp. pursuant to the Asset Purchase Agreement dated June 15, 2018.
4. "APA" means the Asset Purchase Agreement dated June 15, 2018 between Optiwave Semiconductor Corp. (as purchaser) and Solara Optics, Inc. (as seller), pursuant to which OWS acquired a portfolio of twelve (12) United States patents, including the '562 Patent, for a total purchase price of $34.5 million.
5. "Continuation Applications" means any continuation, continuation-in-part, or divisional patent applications claiming priority to or sharing a common specification with the '562 Patent, including but not limited to United States Patent No. 10,234,847 (the "'847 Patent"), titled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," filed September 14, 2016, issued March 19, 2019, which is in the same patent family as the '562 Patent through a continuation relationship.
6. "Document" and "ESI" shall have the broadest meaning permitted under the Federal Rules of Civil Procedure, including Rules 26 and 34, and shall include, without limitation, all writings, correspondence, memoranda, notes, reports, studies, analyses, evaluations, emails, text messages, instant messages, electronic files of any type or format, presentations, drawings, schematics, specifications, photographs, videos, laboratory notebooks, test data, spreadsheets, databases, metadata, and all other tangible and intangible records, whether in paper or electronic form, and including all drafts, revisions, and non-identical copies thereof.
7. "Communication" means the transmittal of information by any means, whether orally, in writing, electronically, or otherwise, including but not limited to letters, emails, facsimiles, text messages, instant messages, telephone calls (including voicemails), video conferences, and in-person conversations to the extent memorialized in any Document.
8. "You" or "Your" means Gregory Falk, individually and in his capacity as custodian of archived corporate records of Solara Optics, Inc., and includes any documents or ESI within his possession, custody, or control, whether held personally, at any business premises, in storage facilities, on electronic devices, or in cloud-based or other remote storage services.
9. "Relating to" means referring to, regarding, concerning, evidencing, reflecting, describing, constituting, mentioning, pertaining to, or having any logical connection with the subject matter referenced.
10. Time Period: Unless otherwise specified, the requests set forth below cover the period from January 1, 2012 through the date of dissolution of Solara Optics, Inc. (approximately 2020), and any period thereafter during which You have maintained custody of, or had access to, Solara Optics records. Where a request calls for documents created after the dissolution of Solara Optics, the request is limited to documents within Your possession, custody, or control as custodian of Solara Optics' archived records.
CATEGORY 1 — '562 PATENT PROSECUTION AND DEVELOPMENT RECORDS
All documents and ESI relating to the conception, development, reduction to practice, and prosecution of the invention or inventions claimed in the '562 Patent, including but not limited to:
(a) Inventor notebooks, laboratory journals, research logs, and any other contemporaneous records documenting the research, experimentation, and development work leading to the invention claimed in the '562 Patent, including records relating to the thermal management of photonic integrated circuits using embedded micro-channel heat sinks;
(b) Internal memoranda, presentations, technical reports, white papers, and analyses prepared by or for Solara Optics personnel relating to the subject matter of the '562 Patent, including the design, fabrication, and testing of micro-channel heat sink structures for photonic integrated circuits;
(c) All correspondence and communications with Cascade IP Advisors, LLC (patent prosecution counsel, located at 1550 Crystal Drive, Suite 600, Arlington, Virginia 22202; lead prosecution attorney: Dr. Martin Chu) regarding the preparation, filing, and prosecution of U.S. Patent Application No. 14/550,891 (which issued as the '562 Patent), including instructions to counsel, draft patent applications, responses to office actions, examiner interview summaries, amendments to claims or specification, and all related communications;
(d) Draft and final versions of the patent application, including the specification, abstract, claims (both as originally filed and as amended during prosecution), and drawings, in all versions and iterations;
(e) Records of prior art searches conducted in connection with the development or prosecution of the '562 Patent, including search reports prepared by Cascade IP Advisors, LLC, by any other outside patent search firm, or by Solara Optics personnel internally;
(f) Invention disclosure forms submitted by the named inventors of the '562 Patent to Solara Optics' legal or intellectual property department, including any evaluations or assessments of the invention disclosure by Solara Optics management or counsel;
(g) Records of any internal patent review committee meetings, invention review board proceedings, or similar processes at which the '562 Patent invention was presented, discussed, or approved for patent filing; and
(h) Any prosecution history documents not available from the USPTO's Public PAIR system, including internal attorney work product shared with Solara Optics regarding prosecution strategy for the '562 Patent.
CATEGORY 2 — CONTINUATION AND RELATED PATENT FAMILY RECORDS
All documents and ESI relating to any continuation, continuation-in-part, or divisional applications filed from, or claiming priority to, the '562 Patent, including the '847 Patent (U.S. Patent No. 10,234,847), including but not limited to:
(a) All prosecution correspondence and communications with Cascade IP Advisors, LLC or any other patent prosecution counsel regarding the preparation, filing, and prosecution of the '847 Patent and any other Continuation Applications, including instructions to counsel, draft applications, responses to office actions, examiner interview summaries, and claim amendments;
(b) Internal communications, memoranda, and presentations within Solara Optics regarding the decision to file continuation, continuation-in-part, or divisional applications from the '562 Patent, including any strategic assessments of the scope of patent protection available through continuation practice;
(c) Claim charts, claim mapping documents, or comparative analyses showing the relationship between the claims of the '562 Patent and the claims of the '847 Patent or any other Continuation Applications;
(d) Examiner interview summaries, examiner search strategies, and records of any telephone or in-person interviews with USPTO examiners during prosecution of the Continuation Applications;
(e) Records documenting the relationship between the specifications of the '562 Patent and the '847 Patent, including any new matter added in continuation-in-part applications, if applicable; and
(f) Any records relating to the maintenance, renewal, or abandonment of the Continuation Applications, including patent maintenance fee payment records.
CATEGORY 3 — PRIOR ART AND STATE-OF-THE-ART RECORDS
All documents and ESI reflecting or relating to prior art considered, identified, or evaluated during the development or prosecution of the '562 Patent and any Continuation Applications, including but not limited to:
(a) Prior art search reports prepared by or for Solara Optics, Cascade IP Advisors, LLC, or any third-party search firm, relating to the subject matter of the '562 Patent or Continuation Applications;
(b) Analyses, evaluations, or assessments of third-party publications, patents, patent applications, conference papers, technical articles, and other prior art references, including but not limited to:
(i) Dr. Li Wei, "Thermal Solutions for PICs," presented at the Optical Fiber Communication Conference and Exhibition (OFC 2013), held March 17–21, 2013, in Anaheim, California; and
(ii) U.S. Patent No. 8,412,007 (Bergmann et al.), titled "Integrated Thermal Dissipation Structure for Optical Components," issued April 2, 2013;
(c) Information Disclosure Statements (IDS) filed with the USPTO during prosecution of the '562 Patent and Continuation Applications, together with all references cited therein and any accompanying explanations or characterizations of the cited references;
(d) Internal assessments of patentability, novelty, and non-obviousness of the claims of the '562 Patent over the identified prior art, including any opinions of counsel regarding the validity or enforceability of the '562 Patent;
(e) Records of any technical literature reviews, competitive intelligence analyses, or landscape analyses performed by Solara Optics relating to the field of thermal management of photonic integrated circuits during the period from January 1, 2012 through the filing date of the '562 Patent (November 22, 2014); and
(f) Any records documenting the state of the art in thermal management of photonic integrated circuits as understood by Solara Optics personnel at the time of the conception and reduction to practice of the '562 Patent invention.
CATEGORY 4 — ASSIGNMENT AND CHAIN-OF-TITLE RECORDS
All documents and ESI relating to the assignment, ownership, and chain of title of the '562 Patent and any Continuation Applications during the period of Solara Optics' ownership, including but not limited to:
(a) Original assignment agreements, executed by the named inventors of the '562 Patent, transferring their rights, title, and interest in the '562 Patent invention and application to Solara Optics, Inc.;
(b) Employment agreements, offer letters, consulting agreements, or independent contractor agreements between Solara Optics and any named inventor of the '562 Patent or Continuation Applications, to the extent such agreements contain invention-assignment provisions, intellectual property assignment clauses, work-for-hire provisions, or obligations to assign patent rights;
(c) Records of any licenses, sublicenses, encumbrances, liens, security interests, or other third-party rights granted in or affecting the '562 Patent or Continuation Applications prior to the execution of the APA on June 15, 2018;
(d) Documents relating to the negotiation, execution, and closing of the Asset Purchase Agreement dated June 15, 2018 between OWS and Solara Optics, including:
(i) The executed APA and all schedules, exhibits, amendments, and ancillary agreements;
(ii) Schedules identifying the twelve (12) patents transferred under the APA, including the '562 Patent;
(iii) Representations and warranties regarding patent ownership, validity, enforceability, and freedom from encumbrances;
(iv) Due diligence materials provided by Solara Optics to OWS in connection with the APA, including patent portfolios, summaries, and analyses;
(v) Correspondence and communications between Solara Optics and OWS (or their respective counsel) regarding the patent assets being transferred; and
(vi) Documents relating to the allocation of the $34.5 million purchase price among the twelve (12) patents acquired, including any valuations, appraisals, or assessments of the relative value of the '562 Patent;
(e) Patent assignment documents recorded with the USPTO reflecting the transfer of the '562 Patent and Continuation Applications from Solara Optics to OWS; and
(f) Any other documents reflecting or relating to the chain of title of the '562 Patent from its filing date through the present, including any interim assignments, nunc pro tunc assignments, or corrective assignments.
CATEGORY 5 — TECHNICAL DEVELOPMENT AND PRODUCT IMPLEMENTATION RECORDS
All documents and ESI relating to the technical development, testing, prototyping, or commercial implementation of the micro-channel heat sink technology described in the '562 Patent, including but not limited to:
(a) Engineering specifications, design files (including CAD files, GDSII files, or equivalent), schematics, drawings, and layout files relating to the micro-channel heat sink structures or photonic integrated circuits incorporating such structures;
(b) Test reports, performance data, experimental results, characterization data, thermal simulation results, and any other quantitative or qualitative data relating to the development and testing of the patented micro-channel heat sink technology;
(c) Prototype fabrication records, including foundry run sheets, wafer lot records, and fabrication process documents;
(d) Records of any products manufactured, offered for sale, sold, or commercially distributed by Solara Optics that embodied, practiced, or implemented one or more claims of the '562 Patent, including product specifications, datasheets, and technical documentation;
(e) Marketing materials, product brochures, press releases, website content, trade show presentations, and customer-facing communications relating to products practicing or embodying the '562 Patent claims;
(f) Sales data, revenue records, customer lists, and purchase orders relating to products that practiced or embodied the '562 Patent claims, to the extent relevant to demonstrating commercial success;
(g) Records of industry recognition, awards, or third-party validation of the patented technology, including published reviews, customer testimonials, and industry analyst reports; and
(h) Any documents demonstrating long-felt but unresolved need in the industry for the thermal management solution described in the '562 Patent, or the failure of others to achieve the results described in the '562 Patent prior to its invention.
CATEGORY 6 — COMMUNICATIONS REGARDING THE '562 PATENT
All correspondence and communications (including emails, letters, memoranda, instant messages, and any other form of communication) between or among Solara Optics personnel, officers, directors, consultants, and outside advisors regarding the '562 Patent and Continuation Applications, including but not limited to:
(a) Communications with Dr. Martin Chu and other attorneys or staff at Cascade IP Advisors, LLC regarding prosecution strategy, claim drafting, prior art analysis, and any other matters relating to the '562 Patent and Continuation Applications;
(b) Communications regarding any third-party inquiries, licensing requests, cease-and-desist letters, or infringement concerns relating to the '562 Patent during Solara Optics' period of ownership, including any assessments of potential infringers or licensing targets;
(c) Board of Directors minutes, resolutions, presentations, and reports regarding Solara Optics' patent portfolio, including the '562 Patent, and including any discussions regarding the strategic value of the patent portfolio, decisions to seek patent protection, and the decision to sell patent assets to OWS;
(d) Executive-level communications (including communications among or between the CEO, CTO, Vice President of Engineering, General Counsel, and other senior management of Solara Optics) regarding the '562 Patent, the Continuation Applications, or the patent portfolio generally; and
(e) Communications with any potential acquirers, licensees, or business partners regarding the '562 Patent or the patent portfolio, other than communications with OWS that are covered under Category 4.
CATEGORY 7 — CORPORATE RECORDS RELATING TO DISSOLUTION
All documents and ESI relating to the dissolution of Solara Optics, Inc. (approximately 2020) that pertain to the disposition, retention, or transfer of intellectual property assets or corporate records, including but not limited to:
(a) Board of Directors resolutions, shareholder resolutions, or other corporate governance documents authorizing or relating to the dissolution of Solara Optics, Inc.;
(b) Certificates of dissolution, winding-up statements, or other filings made with the California Secretary of State in connection with the dissolution of Solara Optics;
(c) Winding-up plans, asset distribution plans, or other documents describing the process by which Solara Optics' remaining assets (including records and intellectual property) were disposed of, distributed, or retained following dissolution;
(d) Records identifying Gregory Falk (or any other person) as the custodian of corporate records of Solara Optics post-dissolution, including any custodianship agreements, board resolutions, or informal understandings regarding the retention and custody of corporate records;
(e) Inventories, indices, or catalogs of records retained by Solara Optics post-dissolution, to the extent they identify documents relating to the '562 Patent, Continuation Applications, or the patent portfolio generally; and
(f) Any correspondence or communications regarding the retention, storage, or disposition of Solara Optics' technical records, patent files, or other intellectual property-related documentation following dissolution.
CATEGORY 8 — PERSONNEL RECORDS OF NAMED INVENTORS
To the extent within Your custody, possession, or control, documents identifying or relating to the named inventors on the '562 Patent and any Continuation Applications, including but not limited to:
(a) Employment records, including offer letters, employment agreements, and records of hire and separation dates for each named inventor;
(b) Consulting agreements or independent contractor agreements with any named inventor, including any agreements entered into after the termination of employment;
(c) Invention assignment agreements, proprietary information and inventions agreements, or any similar agreements executed by named inventors in favor of Solara Optics;
(d) Records of departures, terminations, resignations, or transfers of named inventors, including exit interviews (to the extent documented), separation agreements, and any post-employment restrictive covenants; and
(e) Records of subsequent employment of named inventors at other companies, to the extent known to You or reflected in Solara Optics' records, that are relevant to the chain of inventorship or ownership of the '562 Patent.
VII. INSTRUCTIONS FOR PRODUCTION
The following instructions shall govern the production of documents and ESI responsive to this subpoena:
A. Bates Numbering
All documents produced in response to this subpoena shall be Bates-numbered sequentially, using the prefix "SOLARA-FALK-" followed by sequential numbering beginning with 000001 (e.g., SOLARA-FALK-000001, SOLARA-FALK-000002, etc.). Each page of each document shall bear a unique Bates number. For documents produced in native format, the Bates number shall be reflected in the metadata load file associated with the production.
B. Organization. Documents shall be produced in an order corresponding to the categories set forth in Schedule A. Each document or group of documents shall be identified as responsive to the specific category or categories in Schedule A to which it is responsive. A production index or cover sheet identifying the documents produced and the categories to which they are responsive shall accompany the production.
C. Duplicates. Exact duplicate documents need only be produced once. However, if a document is responsive to multiple categories in Schedule A, it should be identified in the production index as responsive to each applicable category. Non-identical copies (e.g., documents bearing handwritten annotations, different metadata, or different file paths) are not considered duplicates and should each be produced.
D. Privilege Log
Any documents or ESI withheld from production on the grounds of attorney-client privilege, work product protection, or any other applicable privilege or immunity must be identified in a privilege log to be provided concurrently with the production. The privilege log shall contain, at a minimum, the following information for each document withheld:
(a) The date of the document or communication;
(b) The author(s) or sender(s) of the document or communication;
(c) The recipient(s) and any persons copied on the document or communication;
(d) A general description of the subject matter of the document or communication, described in sufficient detail to permit assessment of the privilege claim without revealing privileged information;
(e) The specific privilege(s) or protection(s) asserted (e.g., attorney-client privilege, work product doctrine); and
(f) The factual and legal basis for the privilege or protection claim.
E. Contact Information
Any questions, concerns, or communications regarding compliance with this subpoena, including requests for clarification of any document request, arrangements for inspection, requests for a copy of the Stipulated Protective Order, or discussions regarding the scope of the requests, should be directed to:
Wendy Schultz Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-0147
Email: wschultz@calderwoodharkness.com
Alternative Contact: Omar Siddiqui Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-0153
Email: osiddiqui@calderwoodharkness.com
Dated: September 9, 2024
CALDERWOOD & HARKNESS LLP
By: ________
Wendy Schultz (SBN 298741) Lead Associate 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-0147
Email: wschultz@calderwoodharkness.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
COVER LETTER
September 9, 2024
CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071
VIA PERSONAL DELIVERY AND ELECTRONIC MAIL
Mr. Gregory Falk Falk Photonics Consulting LLC 2841 Camino Del Rio South, Suite 210 San Diego, California 92108
Re: Subpoena Duces Tecum — Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc., Case No. 2:24-cv-00319-JRG (E.D. Tex.)
Dear Mr. Falk:
Introduction. We write on behalf of our client, Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), in connection with the above-referenced patent infringement action currently pending before Judge James R. Gilstrap in the United States District Court for the Eastern District of Texas, marshall Division. This action was filed on April 22, 2024, and asserts claims of patent infringement against Lumicore Technologies, Inc. ("Lumicore" or "Defendant").
Enclosed with this letter is a Subpoena to Produce Documents, Information, or Objects, issued pursuant to Federal Rule of Civil Procedure 45, together with Schedule A setting forth the specific categories of documents and electronically stored information ("ESI") sought. The subpoena is directed to you in your capacity as the former Vice President of Engineering of Solara Optics, Inc. ("Solara Optics"), and as the individual we understand to have retained custody of certain archived corporate and technical records of Solara Optics following its dissolution in approximately 2020.
Background and Relevance of the Requested Documents
The '562 Patent (U.S. Patent No. 9,678,562), titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," is one of four United States patents asserted in this litigation. The '562 Patent was originally assigned to Solara Optics, Inc. and was subsequently acquired by OWS pursuant to an Asset Purchase Agreement dated June 15, 2018, under which OWS purchased a portfolio of twelve (12) patents from Solara Optics for $34.5 million. The '562 Patent is in the same patent family as the '847 Patent (U.S. Patent No. 10,234,847, titled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss") through a continuation relationship, and both patents are of central importance to OWS's infringement claims in this action.
We anticipate that Lumicore will raise invalidity defenses challenging the '562 Patent, and we expect that such defenses may rely on prior art references including, among others, U.S. Patent No. 8,412,007 (Bergmann et al.) and Dr. Li Wei's conference paper, "Thermal Solutions for PICs," presented at OFC 2013. The archived records of Solara Optics maintained in your custody are directly relevant to establishing the conception and reduction to practice of the '562 Patent invention, the prosecution history of the '562 Patent and related Continuation Applications, the chain of title from the named inventors through Solara Optics to OWS, and secondary considerations of non-obviousness such as commercial success, long-felt need, and failure of others. Additionally, these records are relevant to OWS's affirmative claims of infringement, as they will provide the foundational technical and historical context necessary to construe the claims and demonstrate infringement.
Given the importance of these records to both parties' positions, it is essential that the relevant Solara Optics archives be preserved and produced in a timely manner.
Willingness to Discuss Scope and Burden
We recognize that responding to a document subpoena of this scope can involve meaningful time and effort, particularly when the records in question are archived materials of a dissolved entity. We want to assure you that Calderwood & Harkness LLP is committed to working cooperatively with you to minimize the burden of compliance while ensuring that all relevant materials are produced.
To that end, we are willing to discuss the scope of the document requests set forth in Schedule A and to narrow or clarify any requests that you believe are unduly broad, duplicative, or burdensome. If you prefer, we are also willing to arrange for an inspection at the location where you maintain the archived Solara Optics records, rather than requiring you to copy and produce the documents at our offices. We will work with you to identify a mutually convenient time for any such inspection.
Additionally, OWS will reimburse you for reasonable copying, scanning, and production costs incurred in connection with your compliance with this subpoena. If you anticipate that the costs of compliance will be significant, please contact us in advance so that we can discuss arrangements.
Protective Order. A Stipulated Protective Order was entered in this action on August 19, 2024 (Dkt. No. 34). The Protective Order provides robust protections for confidential and proprietary information, including three tiers of designation: "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code." Any documents produced by you that contain confidential business information, trade secrets, or other proprietary information of Solara Optics may be designated under the applicable tier of the Protective Order, and all parties and their counsel will be bound by the restrictions on use and disclosure set forth therein.
We are enclosing a copy of the Stipulated Protective Order with this letter for your review. If you have any questions about the Protective Order or the designation process, please do not hesitate to contact us.
Engagement Context. We wish to acknowledge, for the avoidance of any confusion, that you have been separately retained by OWS (through Calderwood & Harkness LLP) as an industry expert in this litigation, pursuant to the Expert Retention Agreement dated August 8, 2024 (rate: $650 per hour; estimated engagement budget: $375,000). Your engagement as an expert is a separate matter from this subpoena, which is directed to you solely in your capacity as the custodian of archived corporate records of Solara Optics, Inc.
We emphasize this distinction because the documents produced by you in response to this subpoena will be treated as third-party productions under Rule 45, not as expert materials subject to the disclosure requirements of Federal Rule of Civil Procedure 26(a)(2). All documents produced in response to this subpoena will be separately Bates-numbered with the prefix "SOLARA-FALK-" and will be maintained in the litigation document database as a distinct third-party production, separate and apart from any materials generated in connection with your expert engagement.
If you have any questions or concerns about the interaction between your role as a third-party records custodian and your role as a retained expert, we encourage you to consult with independent counsel.
Response Deadline and Objections
The subpoena requires production of the requested documents and ESI by October 9, 2024 (thirty (30) calendar days from the date of issuance). If you wish to serve written objections to any of the document requests, such objections must be served within fourteen (14) days after service of this subpoena, or before the production date, whichever is earlier, in accordance with Federal Rule of Civil Procedure 45(d)(2)(B). Objections should be served on the undersigned at the address set forth below.
We strongly encourage you to contact us before the objection deadline if you have any concerns about the scope, relevance, or burden of the document requests, so that we may attempt to resolve any issues informally and avoid the need for motion practice.