PRIVILEGED & CONFIDENTIAL ATTORNEY-CLIENT COMMUNICATION ATTORNEY WORK PRODUCT
CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071
March 22, 2024
MEMORANDUM
FROM: Alan Ngo, Responsible Partner, IP Litigation, Calderwood & Harkness LLP Wendy Schultz, Lead Associate, IP Litigation, Calderwood & Harkness LLP
TO: Rebecca Tanaka, General Counsel Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, California 95054
CC: Dr. Priya Ramaswamy, Chief Executive Officer, Optiwave Semiconductor Corp. David Leitner, Chief Financial Officer, Optiwave Semiconductor Corp. OWS Information Technology Department (Attention: Director of IT)
RE: LITIGATION HOLD DIRECTIVE — Preservation of Documents, Electronically Stored Information (ESI), and Communications Related to Anticipated Patent Infringement Litigation Against Lumicore Technologies, Inc.
CONFIDENTIALITY NOTICE: This memorandum is a privileged and confidential attorney-client communication and constitutes attorney work product prepared in anticipation of litigation. It must not be disclosed to any third party without the prior written consent of Calderwood & Harkness LLP. Any unauthorized disclosure of this memorandum or its contents may constitute a waiver of privilege and could materially prejudice Optiwave Semiconductor Corp.'s legal position. If you have received this memorandum in error, please contact Wendy Schultz at Calderwood & Harkness LLP immediately.
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I. PURPOSE AND LEGAL OBLIGATION
1.1 Nature of This Directive
Calderwood & Harkness LLP ("C&H") has been retained by Optiwave Semiconductor Corp. ("OWS" or the "Company") as lead litigation counsel in connection with anticipated patent infringement litigation against Lumicore Technologies, Inc. ("Lumicore"). The anticipated action will be filed in the United States District Court for the Eastern District of Texas, marshall Division; a case number will be assigned upon filing. The engagement letter between C&H and OWS was fully executed on March 18, 2024, and sets forth the terms and scope of C&H's representation in this matter.
This memorandum constitutes a formal litigation hold notice — also referred to as a preservation directive or legal hold — directing OWS and all of its officers, directors, employees, agents, and consultants to immediately preserve all documents, electronically stored information ("ESI"), and tangible items potentially relevant to the claims and defenses in this anticipated action. The obligation to preserve extends to all individuals and departments identified herein, and to all data sources, systems, and repositories described in this memorandum.
This memorandum must be treated with the utmost seriousness. The preservation obligations described herein are not optional and are not subject to individual judgment regarding the relevance or importance of particular documents. Any failure to comply with this directive may expose OWS to severe judicial sanctions and may result in internal disciplinary action against the individuals responsible.
1.2 Legal Basis for Preservation
Under well-established federal law, a party has a duty to preserve relevant evidence once litigation is reasonably anticipated. This duty arises from the Federal Rules of Civil Procedure, including Rules 26(a), 34, and 37(e), as well as from the inherent power of the federal courts to manage the integrity of litigation proceedings. The duty to preserve attaches before a lawsuit is filed — it arises at the point when litigation becomes reasonably foreseeable, regardless of whether a complaint has yet been drafted or served.
OWS's duty to preserve relevant materials in connection with the anticipated Lumicore litigation attached no later than October 2022, when OWS's internal engineering team, led by Dr. Jian-Wei Huang (Chief Technology Officer), first identified potential infringement of OWS's patents by Lumicore's LumiLink 400G-ZR+ coherent transceiver module and referred the matter to Rebecca Tanaka, General Counsel. At that point, OWS's leadership was on notice that a patent infringement dispute with Lumicore was reasonably foreseeable, and the duty to preserve relevant documents and information crystallized.
The duty to preserve was further confirmed and reinforced by the following subsequent events:
• In November 2022, OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark") to conduct reverse-engineering and teardown analysis of Lumicore's LumiLink 400G-ZR+ module, which constituted an affirmative investigative step in anticipation of potential litigation.
• In January 2023, OWS engaged FairPoint Licensing Group, LLC ("FairPoint") for pre-suit licensing outreach to Lumicore, and FairPoint transmitted a formal licensing and notice letter to Lumicore's General Counsel, Raymond Bautista, on January 15, 2023, identifying three of the four asserted patents ('847, '193, and '562 Patents) and notifying Lumicore of OWS's infringement contentions.
• The subsequent exchange of licensing correspondence between FairPoint and Lumicore (through Lumicore's counsel, Hawthorne Vega & Cruz LLP), culminating in Lumicore's declination letter dated July 10, 2023, made it clear that a negotiated resolution was unlikely and that litigation would be necessary to enforce OWS's patent rights.
Consequences of Failure to Preserve. Federal Rule of Civil Procedure 37(e) provides that if electronically stored information that should have been preserved in the anticipation or conduct of litigation is lost because a party failed to take reasonable steps to preserve it, and the lost information cannot be restored or replaced through additional discovery, the court may impose sanctions. Specifically:
• Under Rule 37(e)(1), the court may order measures no greater than necessary to cure the prejudice resulting from the loss of information.
• Under Rule 37(e)(2), if the court finds that the party acted with the intent to deprive another party of the information's use in the litigation, the court may presume that the lost information was unfavorable to the party that lost it, instruct the jury that it may or must presume the information was unfavorable, or dismiss the action or enter a default judgment.
Beyond Rule 37(e), courts retain inherent authority to impose sanctions for spoliation, including adverse inference instructions, issue preclusion, monetary penalties, fee-shifting, and in egregious cases, case-dispositive sanctions including default judgment or dismissal. Individual custodians whose actions cause spoliation may also face personal sanctions or contempt proceedings.
OWS must take every reasonable step to ensure that no relevant materials are lost, deleted, destroyed, or modified from this point forward.
1.3 Scope of Anticipated Litigation
OWS anticipates filing suit against Lumicore Technologies, Inc. alleging infringement of four United States utility patents. The following is a summary of the asserted patents, the accused products, and the anticipated scope of relief:
Asserted Patents. 1. U.S. Patent No. 10,234,847 (the "'847 Patent")
• Title: "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss"
• Filed: September 14, 2016
• Issued: March 19, 2019
• Original Assignee: Optiwave Semiconductor Corp.
• Status: Active; all maintenance fees current.
2. U.S. Patent No. 10,891,193 (the "'193 Patent")
• Title: "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate"
• Filed: April 7, 2017
• Issued: January 12, 2021
• Original Assignee: Optiwave Semiconductor Corp.
• Status: Active; all maintenance fees current.
3. U.S. Patent No. 9,678,562 (the "'562 Patent")
• Title: "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks"
• Filed: November 22, 2014
• Issued: June 13, 2017
• Original Assignee: Solara Optics, Inc.
• Acquired by OWS: Via Asset Purchase Agreement dated June 15, 2018, pursuant to which OWS acquired twelve (12) patents from Solara Optics, Inc. (including the '562 Patent) for a total purchase price of $34.5 million.
• Status: Active; all maintenance fees current.
4. U.S. Patent No. 11,402,015 (the "'015 Patent")
• Title: "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers"
• Filed: August 30, 2019
• Issued: August 2, 2022
• Original Assignee: Optiwave Semiconductor Corp.
• Status: Active; all maintenance fees current.
Patent Family Relationships
The '562 Patent and the '847 Patent are members of the same patent family, sharing a continuation relationship. The '193 Patent and the '015 Patent share a common provisional application, U.S. Provisional Application No. 62/499,117, filed April 7, 2017. These family relationships are relevant to claim construction, prosecution history, and potential prosecution history estoppel issues, and all related applications and filings must be preserved.
Accused Products. OWS will allege that the following Lumicore products infringe one or more claims of each of the four asserted patents:
• LumiLink 400G-ZR+ — a coherent pluggable transceiver module for data center interconnect applications. Launched by Lumicore in Q3 2022.
• LumiLink 800G-DR8 — a short-reach data center transceiver module. Launched by Lumicore in Q1 2023.
• LumiEdge 1600G-LR — a next-generation long-reach optical transceiver module. Launched by Lumicore in Q4 2023.
Each of the accused products incorporates silicon-photonic integrated circuit technology that OWS believes practices the claimed inventions of the asserted patents.
Anticipated Relief. OWS will seek the following relief in the anticipated litigation:
• Compensatory damages in the amount of approximately $210 million, consisting of lost profits attributable to sales diverted from OWS to Lumicore, and reasonable royalties on infringing sales for which lost profits cannot be proven.
• Enhanced damages under 35 U.S.C. § 284 for willful infringement, based on Lumicore's continued infringement after receiving actual notice of the asserted patents via FairPoint's January 15, 2023 licensing letter, and Lumicore's stated reliance on unidentified "competent legal opinions" that its products do not infringe.
• A permanent injunction under 35 U.S.C. § 283 prohibiting Lumicore from making, using, selling, offering for sale, or importing the accused products in the United States.
• Attorneys' fees under 35 U.S.C. § 285, if the case is determined to be exceptional.
• Pre-judgment and post-judgment interest.
II. EFFECTIVE DATE AND DURATION
2.1 Immediate Effect
This litigation hold is effective immediately upon distribution of this memorandum, which shall be deemed to have occurred on March 22, 2024. The hold shall remain in full force and effect until Calderwood & Harkness LLP provides express written notice that the hold has been released. No oral communication, informal statement, or implied understanding shall be sufficient to terminate or modify this hold.
From this moment forward, no documents, ESI, or tangible items within the scope of this hold may be deleted, destroyed, discarded, overwritten, modified, altered, or otherwise disposed of, regardless of any existing document retention or destruction schedule, automatic deletion policy, routine data-management practice, or individual preference. This prohibition applies to all forms of information in all media and formats, whether maintained in physical or electronic form, and whether located on OWS premises, on personal devices used for business purposes, in cloud-hosted environments, or at the premises of third-party service providers.
The hold applies retroactively to all materials within its scope, regardless of when such materials were created. The fact that a document was created before the date of this memorandum does not exempt it from the preservation obligation. To the contrary, historical materials — including materials pre-dating the earliest patent filing date — may be critically important to the prosecution or defense of claims in this litigation.
2.2 Suspension of Routine Destruction
All routine and automated document retention and destruction policies that are applicable to the custodians, data sources, and subject matter identified in this memorandum must be immediately suspended for all materials falling within the scope of this hold. This suspension applies enterprise-wide to the extent necessary to ensure complete preservation and specifically includes, without limitation, the following:
• Email auto-deletion policies: Any policies that automatically delete email messages after a specified retention period (e.g., 90-day, 180-day, or one-year auto-purge) must be suspended for all custodians identified in Section IV. Messages in deleted-items folders and recoverable-items folders must not be purged.
• Cloud storage cleanup routines: Any scheduled or automated processes that delete or archive files from Aldermere Systems, Cobalt Ridge Systems, Hollowell Health IT, box, Larkspur Technologies, or other cloud storage platforms must be suspended for all custodian accounts and for all departmental repositories containing materials within the scope of this hold.
• Meridian Solutions and Northgate Data Systems message retention settings: Any policies that automatically delete messages or files from Meridian Solutions channels, Northgate Data Systems channels, or direct-message conversations after a specified period must be suspended. This includes both corporate-wide retention policies and channel-specific settings.
• Backup tape recycling schedules: Any schedules under which backup tapes, disk images, or snapshots are overwritten, degaussed, or physically destroyed must be suspended. All backup media containing data from the custodians and time periods identified in this memorandum must be identified, segregated, and preserved.
• Hardware decommissioning and device refresh programs: Any programs under which company-issued laptops, desktops, smartphones, tablets, or other devices are collected, wiped, and redeployed or disposed of must be suspended for all custodian devices. No custodian device may be wiped or reassigned without prior written approval from C&H.
• Server decommissioning: Any planned decommissioning of servers, network-attached storage devices, or other infrastructure components that may contain relevant data must be halted pending further consultation with C&H.
If there is any question regarding whether a particular destruction or retention policy should be suspended, the answer is that it should be suspended. When in doubt, preserve.
III. SCOPE OF PRESERVATION
3.1 Subject Matter Categories
The litigation hold encompasses all documents, electronically stored information, and tangible items relating to, referring to, or concerning any of the following subject matter categories. Each category is described in detail below. The categories are not mutually exclusive, and a single document may be responsive to multiple categories. The descriptions below are illustrative and are not intended to be exhaustive; if a document or item of ESI is reasonably related to any of the subject matter categories below, it must be preserved.
A. The Asserted Patents
All documents, ESI, and tangible items relating to the four asserted patents: the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent. This category includes, without limitation:
• The patent instruments themselves and all file histories.
• All patent prosecution files, including applications (utility, provisional, and continuation), office actions from the United States Patent and Trademark Office, responses to office actions, amendments, claim charts submitted during prosecution, declarations (including inventor declarations, Rule 132 declarations, and expert declarations), records of examiner interviews, Information Disclosure Statements (IDSs) and all references cited therein, terminal disclaimers, notices of allowance, issue fee receipts, and all correspondence with Cascade IP Advisors, LLC (lead prosecution attorney: Dr. Martin Chu, 1550 Crystal Drive, Suite 600, Arlington, VA 22202).
• The file history for U.S. Provisional Application No. 62/499,117, filed April 7, 2017, which is the common provisional application for the '193 and '015 Patents.
• All patent family members, including related applications, divisional applications, continuation applications, and continuations-in-part, whether issued or pending.
• Assignment records and chain-of-title documentation for all four asserted patents, including but not limited to the original assignment from inventors to OWS (for the '847, '193, and '015 Patents), the assignment from Solara Optics, Inc. to OWS (for the '562 Patent) executed in connection with the Asset Purchase Agreement dated June 15, 2018, and all documents relating to the twelve (12) patents acquired under that agreement.
• Maintenance fee records for all four asserted patents, including payment receipts, maintenance fee reminders, and correspondence with the USPTO regarding maintenance fee status.
• Any reexamination or post-grant review filings or proceedings, although none are currently pending.
• Any opinions of counsel regarding the validity, enforceability, or scope of any of the asserted patents.
B. OWS Products Practicing the Asserted Patents
All documents, ESI, and tangible items relating to OWS's products that practice or embody the inventions claimed in the asserted patents, including the following transceiver module product families:
• OWS-400ZR coherent pluggable transceiver module family.
• OWS-800XR next-generation coherent transceiver module family.
• OWS-1600DR long-reach transceiver module family.
This category includes, without limitation:
• All engineering specifications, design documents, product requirements documents, functional specifications, and technical architecture documents for the above products.
• All computer-aided design (CAD) files, photonic-IC layout files (including GDS and OASIS format files), mask data, simulation results, fabrication process records, and design-rule check reports.
• All testing data, qualification data, performance characterization data, reliability data, and failure analysis reports.
• Product datasheets, application notes, and white papers.
• Revenue, cost of goods sold (COGS), gross margin, and net margin data for each of the above product families. As context, OWS's gross margin on its competing transceiver products is approximately 47.3%, which is a key input for the lost-profits damages analysis.
• All sales records, including purchase orders, invoices, shipping records, and return/credit records.
• Customer lists and customer correspondence for each product family.
• Marketing materials, trade show presentations, press releases, and promotional materials.
• Design-in records and customer correspondence showing competitive bids against Lumicore, including records of customer evaluations in which OWS and Lumicore products were directly compared or in which customers switched from OWS to Lumicore products (or vice versa).
C. Lumicore Technologies, Inc. and Its Products
All documents, ESI, and tangible items referencing, relating to, or concerning Lumicore Technologies, Inc. (a Delaware corporation with headquarters at 9200 Spectrum Boulevard, Building C, Austin, TX 78759), including but not limited to:
• All internal OWS documents and communications that reference Lumicore or any of its officers, directors, or key personnel, including: Thomas Kessler (CEO), Dr. Sandra Michaud (CTO), Raymond Bautista (General Counsel), Dr. Eric Dalmqvist (VP of Product Development), and Janet Moreno (CFO).
• All documents and communications referencing the accused product lines: LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR modules.
• Competitive intelligence reports, market analysis, industry analyst reports, and any internal OWS assessments of Lumicore's products, technology, market position, pricing, customer base, or competitive strategy.
• Any publicly available materials collected or maintained by OWS regarding Lumicore, including but not limited to: SEC filings (Forms 10-K, 10-Q, 8-K, and proxy statements), press releases, earnings call transcripts, marketing materials, product specifications and datasheets, trade show presentations, published technical papers, and patent filings.
• Any correspondence or communications between OWS personnel and Lumicore personnel, whether relating to the infringement dispute or otherwise (e.g., industry conferences, standards-body participation, or customer-facing interactions).
D. Pre-Suit Infringement Analysis and Reverse Engineering
All documents, ESI, and tangible items relating to OWS's investigation and analysis of potential patent infringement by Lumicore, including:
• All internal communications and documents relating to the initial identification of potential Lumicore infringement by OWS's engineering team in October 2022, including any emails, memoranda, meeting notes, presentations, or technical analyses prepared by or circulated among Dr. Jian-Wei Huang, Dr. Nikolai Petrov, and members of the Photonics Division engineering team.
• All documents relating to OWS's retention of Benchmark Semiconductor Analysis, LLC (2244 Mission College Boulevard, Santa Clara, CA 95054; Lead Engineer: Kevin Ng) in November 2022, including the engagement letter, scope of work, and all communications with Benchmark personnel.
• The teardown report for the LumiLink 400G-ZR+ module, delivered by Benchmark on December 12, 2022, including all photographs, scanning electron microscope (SEM) images, cross-section analyses, die photographs, and technical commentary.
• The subsequent teardown report for the LumiLink 800G-DR8 module, completed by Benchmark in June 2023, including all associated data and analyses.
• The teardown report for the LumiEdge 1600G-LR module, completed by Benchmark in February 2024, including all associated data and analyses.
• All physical samples of Lumicore products acquired by OWS or by Benchmark on OWS's behalf for purposes of teardown analysis. These physical samples must be preserved in their current condition, with chain-of-custody documentation maintained at all times.
• All internal infringement analyses, claim charts, element-by-element comparisons, and technical assessments prepared by or for OWS, whether prepared by OWS engineers, by C&H, or by any other advisor.
E. Pre-Suit Licensing Contacts
All documents, ESI, and tangible items relating to OWS's pre-suit licensing outreach to Lumicore, conducted through FairPoint Licensing Group, LLC (500 Sansome Street, Suite 1400, San Francisco, CA 94111; Managing Director: Angela Reeves), including but not limited to:
• The first licensing and notice letter dated January 15, 2023, sent by FairPoint on behalf of OWS to Lumicore's General Counsel, Raymond Bautista, identifying the '847, '193, and '562 Patents and setting forth OWS's infringement contentions.
• Lumicore's written response dated February 28, 2023, transmitted through its outside counsel, Hawthorne Vega & Cruz LLP, in which Lumicore disputed infringement and questioned the validity of OWS's patents.
• All documents and communications relating to the in-person licensing meeting held in Austin, Texas on April 20, 2023, attended by Angela Reeves (FairPoint), Rebecca Tanaka (OWS General Counsel), Raymond Bautista (Lumicore General Counsel), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP, Lumicore's outside patent counsel). This includes meeting agendas, presentation materials, handouts, notes taken during or after the meeting, and any follow-up correspondence.
• The second licensing letter dated May 15, 2023, sent by FairPoint on behalf of OWS, adding the '015 Patent to the asserted patent portfolio and expanding the accused product list to include the LumiLink 800G-DR8 module.
• 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 OWS's patents, and declining to enter into a license agreement.
• All internal OWS communications analyzing, discussing, or responding to the licensing negotiations and Lumicore's responses, including communications among Rebecca Tanaka, Dr. Priya Ramaswamy, Dr. Jian-Wei Huang, David Leitner, and Franklin Osei (Ridgeline Capital Partners).
• FairPoint's internal analyses, recommendations, and status reports provided to OWS regarding the licensing campaign.
F. Patent Licensing Program
All documents, ESI, and tangible items relating to OWS's patent licensing program, to the extent they involve any of the four asserted patents or the broader OWS silicon-photonics patent portfolio:
• All patent license agreements entered into by OWS relating to any of the four asserted patents, or to any other patents in OWS's silicon-photonics portfolio that cover technology related to the claimed inventions.
• Specifically, any license agreements with third parties that may serve as comparable licenses for purposes of damages analysis under the Georgia-Pacific framework, including but not limited to agreements with:
• Terralink Semiconductor
• NovaWave Corp.
• Helix Integrated Photonics
• All licensing revenue data, royalty rate schedules, rate calculations, and lump-sum payment records associated with any such license agreements.
• All negotiation correspondence, term sheets, draft agreements, and internal analyses relating to the negotiation of any such license agreements.
• Any documents reflecting OWS's established licensing practices, licensing policies, or standard royalty rate structures.
G. Financial and Business Records
All documents, ESI, and tangible items relating to OWS's financial performance and business operations, to the extent relevant to the anticipated damages claims:
• OWS audited financial statements for fiscal years 2022, 2023, and 2024 year-to-date, as prepared or audited by Gresham & Whitfield LLP. For context, OWS's FY 2023 revenue was $487.3 million, and FY 2023 net income was $61.4 million, per Gresham & Whitfield's audited financials.
• Product-level revenue, cost of goods sold, and margin data for the OWS-400ZR, OWS-800XR, and OWS-1600DR product families, broken down by quarter and by customer to the extent available.
• Market share data for the silicon-photonic transceiver market, including OWS's share, Lumicore's share, and the shares of other competitors.
• Customer diversion analyses, including any internal assessments of sales lost to Lumicore, customer defection data, and win/loss reports from the sales team.
• Pricing impact assessments, including any data or analyses showing price erosion in the transceiver market attributable to Lumicore's entry or competitive conduct.
• Documents relating to OWS's manufacturing capacity at its foundry partners, including capacity agreements, production schedules, yield data, and any capacity constraints that may bear on OWS's ability to have served additional demand absent Lumicore's infringement (relevant to the Panduit factor analysis).
• Budgets, financial forecasts, strategic plans, and board presentations that reference competition with Lumicore, market dynamics in the transceiver market, or OWS's product roadmap for the next generation of silicon-photonic products.
H. OWS Patent Portfolio
All documents, ESI, and tangible items relating to OWS's broader patent portfolio, to the extent they relate to the asserted patents, the accused products, or the silicon-photonics field:
• Records relating to OWS's portfolio of 142 issued U.S. patents and 58 pending U.S. patent applications, including patent docket information, prosecution status reports, and portfolio-level analyses.
• Any inter partes review ("IPR") monitoring and analysis, including any OWS assessments of the risk that Lumicore may petition the Patent Trial and Appeal Board for IPR of any of the asserted patents. As of the date of this memorandum, no IPR petitions have been filed against any of the four asserted patents, but Lumicore has reserved the right to petition in its July 10, 2023 declination letter.
• Any patent landscape analyses, freedom-to-operate opinions, or competitive patent assessments prepared by or for OWS that relate to the silicon-photonic transceiver field.
I. Ridgeline Capital Partners, LP
All documents, ESI, and tangible items relating to OWS's communications and interactions with Ridgeline Capital Partners, LP (200 Clarendon Street, 40th Floor, Boston, MA 02116; Managing Partner: Franklin Osei), the private equity sponsor that holds approximately 55% of OWS's equity (acquired in 2019 for approximately $780 million), to the extent such materials relate to:
• The Lumicore dispute, including any discussions of the infringement allegations, licensing negotiations, and litigation strategy.
• Patent enforcement strategy, including any Ridgeline-directed analyses of the value of OWS's patent portfolio, the expected return on investment from patent litigation, or the impact of the Lumicore dispute on OWS's enterprise value.
• Litigation authorization, including OWS Board Resolution No. 2024-07, which authorized a litigation spend of $18.5 million for the Lumicore matter.
• Investment in intellectual property development, including any Ridgeline-directed investments in OWS's R&D program, patent prosecution budget, or IP acquisition strategy.
J. Insurance. All documents, ESI, and tangible items relating to OWS's insurance coverage that may be relevant to the anticipated litigation:
• The directors and officers (D&O) and litigation-cost insurance policy issued by Pacific Rim Insurance Group, Policy No. PLI-2023-08812, including the policy declaration page, the full policy form, all endorsements and amendments, and all renewal documentation.
• All correspondence with Pacific Rim Insurance Group relating to the Lumicore matter, including any notices of claims or potential claims, reservation-of-rights letters, and coverage analyses.
• Any internal OWS analyses of insurance coverage for the Lumicore litigation.
K. Solara Optics, Inc. Acquisition
All documents, ESI, and tangible items relating to OWS's acquisition of intellectual property from Solara Optics, Inc., through which OWS acquired the '562 Patent:
• The Asset Purchase Agreement dated June 15, 2018, between OWS and Solara Optics, Inc. (a California corporation, since dissolved in 2020), pursuant to which OWS acquired twelve (12) patents for a total purchase price of $34.5 million.
• All due diligence files, including patent valuation analyses, freedom-to-operate assessments, and technical evaluations prepared in connection with the acquisition.
• All assignment documents, including the patent assignment instruments recorded with the USPTO, and all chain-of-title documentation.
• Any archived Solara Optics technical records in OWS's possession, including invention disclosures, laboratory notebooks, design files, and prosecution files for the '562 Patent and related family members.
• Any communications with Gregory Falk, former Vice President of Engineering at Solara Optics, Inc., who is now an independent consultant. Mr. Falk is a potential industry expert and fact witness, and any communications between OWS personnel and Mr. Falk relating to the Solara acquisition, the '562 Patent, or the underlying technology must be preserved.
L. Communications with Outside Counsel and Advisors
All communications with the following outside counsel and advisors retained by OWS in connection with the Lumicore matter or the asserted patents:
• Calderwood & Harkness LLP — All communications, including this memorandum, relating to the anticipated litigation against Lumicore.
• Whitmore & Callahan LLP (local counsel; 110 North College Avenue, Suite 800, Tyler, TX 75702; Jim Callahan) — All communications relating to the anticipated filing in the Eastern District of Texas.
• Cascade IP Advisors, LLC (patent prosecution counsel; 1550 Crystal Drive, Suite 600, Arlington, VA 22202; Dr. Martin Chu) — All communications relating to the prosecution of the four asserted patents and related applications.
• FairPoint Licensing Group, LLC (licensing agent; 500 Sansome Street, Suite 1400, San Francisco, CA 94111; Angela Reeves) — All communications relating to the pre-suit licensing outreach to Lumicore.
• Benchmark Semiconductor Analysis, LLC (reverse-engineering consultant; 2244 Mission College Boulevard, Santa Clara, CA 95054; Kevin Ng) — All communications relating to the teardown analyses of Lumicore's accused products.
Important Note Regarding Privilege: Communications with outside counsel and work product materials prepared in anticipation of litigation are protected by the attorney-client privilege and/or the work product doctrine. These materials must be preserved but will be logged on a privilege log and will not be produced to Lumicore or any other adverse party absent further instruction from C&H. The preservation obligation does not constitute a waiver of any applicable privilege or protection.
3.2 Types of Materials Covered
The litigation hold covers all forms and formats of information, without exception. The following is an illustrative (not exhaustive) list of the types of materials that must be preserved:
Paper Documents:
• Correspondence (letters, memoranda, faxes)
• Handwritten notes, including meeting notes, margin annotations, and sticky notes
• Laboratory notebooks and experimental records
• Printed emails
• Contracts, agreements, amendments, and related transactional documents
• Reports, analyses, and presentations in printed form
• File copies maintained in desk files, office files, or central filing systems
Electronic Mail:
• All email messages (sent, received, drafts, and deleted-but-recoverable) in any email system used by identified custodians, including but not limited to Outlook/Exchange, Crestline Software, and any personal email accounts used for OWS business communications
• All email attachments
• All calendar invitations and meeting notices transmitted via email
Instant Messaging and Collaboration Platforms:
• Northgate Data Systems messages (channel messages and direct/private messages), including any files, images, or links shared within Teams
• Meridian Solutions messages (channel messages and direct messages), including any files, images, or links shared within Meridian Solutions