EXPERT RETENTION AGREEMENT
Technical Expert — Infringement and Validity
Agreement Date: August 1, 2024
This Expert Retention Agreement (this "Agreement") is entered into as of August 1, 2024 (the "Effective Date"), by and between:
Calderwood & Harkness LLP ("C&H" or the "Firm"), a limited liability partnership organized under the laws of the State of California, with principal offices at 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071, and a Washington, D.C. office at 1201 F Street NW, Suite 700, Washington, DC 20004, acting on behalf of and with the express authorization of Optiwave Semiconductor Corp. ("OWS" or the "Client"), 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, California 95054;
and
Dr. Caroline Ashford (the "Expert"), an individual residing in Evanston, Illinois, currently serving as Professor of Electrical Engineering & Photonics at the Northfield Institute of Technology, Evanston, Illinois.
C&H and the Expert are each referred to herein individually as a "Party" and collectively as the "Parties."
Reference Matter: Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc., Case No. 2:24-cv-00319-JRG, United States District Court for the Eastern District of Texas.
RECITALS
WHEREAS:
A. The Litigation. Optiwave Semiconductor Corp. ("OWS" or "Client"), a corporation organized and existing under the laws of the State of Delaware, with its principal headquarters located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054, filed a civil action on April 22, 2024 against Lumicore Technologies, Inc. ("Lumicore"), a corporation organized and existing under the laws of the State of Delaware, with its principal headquarters located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. The action was filed in the United States District Court for the Eastern District of Texas, and has been assigned Case No. 2:24-cv-00319-JRG before the Honorable Judge James R. Gilstrap (the "Litigation"). The Litigation concerns allegations of patent infringement of four (4) United States utility patents, specifically: U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent," and collectively with the '847 Patent, the '193 Patent, and the '562 Patent, the "Asserted Patents"). The Asserted Patents relate to silicon photonics technologies, including optical transceiver architectures, waveguide multiplexing configurations for data-center interconnects, thermal management solutions for photonic integrated circuits, and polarization-diverse grating coupler designs. The products accused of infringement in the Litigation are the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR optical transceiver modules manufactured, marketed, and sold by Lumicore (collectively, the "Accused Products").
B. Representation by Counsel. Calderwood & Harkness LLP ("C&H" or the "Firm"), a limited liability partnership organized under the laws of the State of California, with offices at 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071 and 1201 F Street NW, Suite 700, Washington, DC 20004, serves as lead litigation counsel for OWS in the Litigation. The responsible partner for the Litigation is Alan Ngo (IP Litigation); the billing partner is Marcus Delgado (IP Litigation); the lead associate is Wendy Schultz (IP Litigation); and the working associate is Omar Siddiqui (IP Litigation). Local counsel for OWS in the Eastern District of Texas is Whitmore & Callahan LLP, located at 110 North College Avenue, Suite 800, Tyler, Texas 75702, with local counsel partner James "Jim" Callahan serving as principal local counsel. C&H is authorized to retain expert witnesses and consultants on behalf of OWS in connection with the Litigation pursuant to the terms of the engagement letter between C&H and OWS dated March 18, 2024, and OWS has specifically approved the retention of the Expert contemplated by this Agreement.
C. The Expert. Dr. Caroline Ashford is a Professor of Electrical Engineering & Photonics at the Northfield Institute of Technology, Evanston, Illinois. Dr. Ashford possesses specialized knowledge, training, and extensive professional and academic experience in the fields of silicon photonics, photonic integrated circuits ("PICs"), optical transceivers, waveguide multiplexing, grating coupler design, and thermal management of photonic integrated circuits. Dr. Ashford's qualifications are more fully described in Exhibit A attached hereto and incorporated herein by reference. Dr. Ashford has been identified by C&H and OWS as a qualified expert to provide technical opinions on both infringement and validity matters in the Litigation.
D. Purpose of Retention. C&H, on behalf of OWS, desires to retain Dr. Ashford to serve as a technical expert witness in the Litigation regarding patent infringement and patent validity issues. The Expert's work in this capacity will include, but not be limited to, detailed analysis of the Accused Products, comprehensive review of prior art references, preparation and signing of expert reports, testimony at deposition, testimony at trial, and such other consulting and advisory services as are described more fully below. This Agreement sets forth the complete terms and conditions governing the Expert's engagement.
NOW, THEREFORE, in consideration of the mutual covenants and agreements set forth herein, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:
ARTICLE 1 — SCOPE OF ENGAGEMENT
Section 1.1 — Engagement
C&H, acting on behalf of and with the express authorization of OWS, hereby retains Dr. Caroline Ashford as a technical expert witness in the matter of Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc., Case No. 2:24-cv-00319-JRG, pending in the United States District Court for the Eastern District of Texas (the "Litigation"). The Expert hereby accepts such retention and agrees to perform the Services described in this Agreement, subject to and in accordance with the terms and conditions set forth herein. The Expert's engagement shall encompass the preparation and delivery of expert opinions, expert reports, deposition testimony, trial testimony, and consulting services, all as more fully described in Section 1.2 below.
Section 1.2 — Scope of Services
The Expert shall provide the following services in connection with the Litigation (collectively, the "Services"):
(a) Infringement Analysis.
(i) Patent Review. The Expert shall review and analyze each of the four Asserted Patents, including the patent specifications, claims, prosecution histories, and any related continuation or divisional applications. The Asserted Patents and their relevant particulars are as follows:
(A) The '847 Patent — U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," filed September 14, 2016, issued March 19, 2019. The '847 Patent is directed to a multi-channel waveguide multiplexer architecture for silicon photonic platforms, featuring reduced insertion loss and improved channel isolation characteristics for use in high-bandwidth data-center interconnect applications.
(B) The '193 Patent — U.S. Patent No. 10,891,193, entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," filed April 7, 2017, issued January 12, 2021. The '193 Patent is directed to a coherent optical transceiver architecture monolithically integrated on a silicon substrate, incorporating modulator, photodetector, and waveguide components to achieve high-bandwidth data transmission with reduced form factor.
(C) The '562 Patent — U.S. Patent No. 9,678,562, entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," filed November 22, 2014, issued June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc. and was acquired by OWS pursuant to an Asset Purchase Agreement dated June 15, 2018. The '562 Patent is directed to a method of thermal management for photonic integrated circuits through the use of embedded micro-channel heat sink structures fabricated within or adjacent to the photonic IC substrate.
(D) The '015 Patent — U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," filed August 30, 2019, issued August 2, 2022. The '015 Patent is directed to a polarization-diverse grating coupler design for silicon photonic transceivers, enabling efficient coupling of both transverse electric (TE) and transverse magnetic (TM) polarization modes from a single-mode fiber into on-chip waveguides.
(ii) Literal Infringement Analysis. The Expert shall analyze each of the Accused Products — specifically, the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR transceiver modules — for literal infringement of each asserted claim of each of the four Asserted Patents. The Expert shall conduct an element-by-element comparison of the structure, function, and operation of each Accused Product against the limitations recited in each asserted claim.
(iii) Doctrine of Equivalents Analysis. The Expert shall analyze infringement under the doctrine of equivalents for Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent. Such analysis shall include a function-way-result assessment for each claim limitation at issue, identifying (a) whether the corresponding element of the Accused Product performs substantially the same function, (b) in substantially the same way, and (c) to achieve substantially the same result as the claimed limitation. The Expert shall also consider prosecution history estoppel and the impact of any narrowing amendments made during prosecution.
(iv) Teardown Data Review. The Expert shall review the teardown reports, data packages, die photographs, cross-sectional SEM images, EDAX spectral analyses, and related technical documentation prepared by Benchmark Semiconductor Analysis, LLC ("Benchmark"), whose lead engineer is Kevin Ng. Benchmark is located at 2244 Mission College Boulevard, Santa Clara, California 95054. The Expert may request supplemental teardown analysis from Benchmark through C&H as needed to support her opinions.
(v) Design Document Review. The Expert shall review Lumicore design documents, CAD/layout files, RTL schematics, GDSII and OASIS photonic-IC layout files, simulation data, and process-design-kit (PDK) specifications produced by Lumicore in discovery, including materials designated as "Highly Confidential — Source Code" under the Stipulated Protective Order entered in the Litigation. The Expert shall handle all such materials in strict accordance with the requirements of Article 3 below and the Protective Order.
(vi) Claim Charts. The Expert shall prepare detailed claim charts mapping specific elements, structures, and features of each Accused Product to each limitation of each asserted claim of the Asserted Patents. These claim charts shall reference and incorporate data from the Benchmark teardown reports, Lumicore design files, Lumicore product specifications, and relevant deposition testimony.
(vii) Element-by-Element Infringement Analysis. The Expert shall prepare a comprehensive element-by-element infringement analysis for each asserted claim, setting forth in detail the technical basis for her opinion as to whether each limitation is met by each Accused Product, and referencing the specific evidentiary support (Benchmark teardown data, Lumicore design files, product documentation, deposition testimony, and published technical literature) for each mapping.
(b) Validity Analysis.
(i) Review of Invalidity Contentions. The Expert shall review and analyze Lumicore's invalidity contentions served on or about October 14, 2024, including all prior-art references, claim charts, and supporting materials identified therein.
(ii) Prior Art Evaluation. The Expert shall evaluate each of the twenty-three (23) prior-art references cited by Lumicore in its invalidity contentions. These references include, but are not limited to, the following:
(A) Takahashi et al., "Dense WDM Silicon Photonic MUX," published in IEEE Photonics Technology Letters, March 2014;
(B) U.S. Patent No. 8,412,007 (Bergmann), issued April 2, 2013, directed to wavelength-division multiplexing architectures on silicon-on-insulator platforms;
(C) International Application PCT/EP2015/071234 (Simonsen), filed September 17, 2015, directed to integrated optical transceiver packaging;
(D) Dr. Li Wei, "Thermal Solutions for PICs," paper presented at the Optical Fiber Communications Conference (OFC 2013), March 2013; and
(E) Lumicore internal design documents and engineering notebooks dated 2016–2017, produced in discovery and designated as confidential under the Protective Order.
(iii) Anticipation and Obviousness Opinions. The Expert shall opine on whether any asserted claim of any of the four Asserted Patents is anticipated under 35 U.S.C. § 102 by any single prior-art reference, or rendered obvious under 35 U.S.C. § 103 by any combination of prior-art references, as contended by Lumicore. The Expert shall provide a detailed technical analysis of why, in her opinion, the asserted claims are or are not anticipated or obvious in view of the cited prior art.
(iv) Secondary Considerations of Non-Obviousness. The Expert shall analyze and, where supported by the evidence, provide opinions regarding secondary considerations (objective indicia) of non-obviousness, including but not limited to: (a) the commercial success of products embodying the patented inventions, including OWS's OptiWave OX-Series transceivers; (b) long-felt but unsolved need in the industry for the solutions provided by the Asserted Patents; (c) the failure of others, including Lumicore and its competitors, to achieve the claimed inventions prior to the priority dates; and (d) evidence of copying by Lumicore, including any design-around efforts or the lack thereof.
(c) Claim Construction Support.
(i) Claim Term Interpretation. The Expert shall provide opinions on the ordinary and customary meaning of disputed claim terms as understood by a person of ordinary skill in the art ("POSITA") at the relevant time. There are currently fourteen (14) disputed claim terms; the parties have reached agreement on the construction of two (2) terms, leaving twelve (12) terms in active dispute. Key disputed terms include, without limitation: "waveguide multiplexer," "integrated on a silicon substrate," "micro-channel heat sink," and "polarization-diverse grating coupler."
(ii) POSITA Definition. The Expert shall define the person of ordinary skill in the art for purposes of claim construction and validity analysis. Based on preliminary discussions, the POSITA is anticipated to be defined as a person with a Master of Science (M.S.) or Doctor of Philosophy (Ph.D.) degree in electrical engineering, photonics, optical engineering, or a closely related discipline, with at least three (3) years of professional or research experience in silicon-photonic integrated circuit design, fabrication, or characterization.
(iii) Declarations and Briefing Support. The Expert shall prepare declarations in support of OWS's claim construction briefing, including both opening and reply claim construction briefs. The Expert shall work with the C&H litigation team to ensure that the technical content and opinions presented in the declarations are accurate, clear, and supported by the intrinsic record (patent claims, specifications, and prosecution history) and relevant extrinsic evidence.
(iv) Markman Hearing Support. The Expert shall assist in the preparation of a claim construction tutorial and presentation for the Markman hearing currently scheduled for March 14, 2025 before Judge Gilstrap. This may include preparation of visual aids, annotated patent figures, technology tutorials, and other demonstrative materials suitable for presentation to the Court. The claim construction tutorial submission is anticipated to be due in February 2025.
(d) Expert Reports.
(i) Opening Expert Report on Infringement. The Expert shall prepare and sign an opening expert report setting forth her opinions on infringement (the "Infringement Report"). The Infringement Report is due on June 15, 2025 pursuant to the Court's Scheduling Order entered on August 12, 2024.
(ii) Opening Expert Report on Validity. The Expert shall prepare and sign an opening expert report setting forth her opinions on validity, rebutting Lumicore's invalidity contentions (the "Validity Report"). The Validity Report is due on June 15, 2025 pursuant to the Court's Scheduling Order.
(iii) Rebuttal Expert Reports. The Expert shall prepare and sign one or more rebuttal expert reports responding to the opinions set forth in the report(s) of Lumicore's technical and validity expert, Dr. Rajesh Sundaram, Professor of Electrical & Computer Engineering at Pacific Western University, San Diego, California. The rebuttal expert report(s) are due on July 15, 2025 pursuant to the Court's Scheduling Order.
(iv) Compliance with Federal Rules. All expert reports prepared by the Expert shall comply with the requirements of Federal Rule of Civil Procedure 26(a)(2)(B), including the requirement to disclose all facts and data considered, all exhibits used, the Expert's qualifications, her compensation, a listing of cases in which she has testified as an expert in the preceding four years, and a complete statement of all opinions to be expressed and the bases and reasons therefor.
(e) Deposition Testimony.
(i) Deposition Appearance. The Expert shall appear for and provide truthful testimony at her deposition, which is anticipated to be scheduled during the period of July through August 2025, within the expert discovery period closing on August 15, 2025, as set forth in the Court's Scheduling Order.
(ii) Deposition Preparation. The Expert shall participate in deposition preparation sessions with C&H attorneys in advance of her deposition. Such preparation sessions shall be scheduled at mutually convenient times and shall include a thorough review of the Expert's reports, anticipated lines of cross-examination, and applicable rules governing expert depositions. The Expert understands that her preparation with counsel is protected by the work-product doctrine and attorney-client privilege, to the extent permitted by law.
(f) Trial Testimony.
(i) Trial Appearance. The Expert shall appear at and provide truthful testimony at the jury trial in this matter, which is currently scheduled to commence on February 2, 2026, with an estimated duration of seven (7) to ten (10) days. The trial will be held at the United States District Court for the Eastern District of Texas, marshall Division or Tyler Division, as designated by the Court.
(ii) Trial Preparation. The Expert shall participate in trial preparation sessions with C&H attorneys, including preparation of direct examination testimony, anticipated cross-examination, and any redirect or sur-rebuttal testimony as may be required.
(iii) Trial Demonstratives. The Expert shall assist in the preparation of trial demonstrative exhibits, including but not limited to: annotated teardown photographs and SEM images, side-by-side comparison exhibits mapping Accused Product features to claim limitations, animated three-dimensional (3D) models illustrating the structure and operation of the patented inventions and the Accused Products, and claim-chart summary boards for presentation to the jury. The Expert shall work with C&H's trial graphics team and any retained demonstrative exhibit vendors to ensure the accuracy and clarity of all demonstrative materials.
(g) Consultation and Advisory Services.
(i) General Technical Consultation. The Expert shall provide general technical consultation to C&H regarding silicon photonics technology, industry practices, design and fabrication methodologies, and relevant technical standards as needed throughout the course of the Litigation. This consultation may include background briefings for C&H attorneys, review of technical deposition transcripts, and guidance on technical issues arising during fact and expert discovery.
(ii) Review of Other Experts' Work. The Expert shall, upon request by C&H, review and provide input on documents, reports, and opinions prepared by other experts retained by OWS in the Litigation, including the damages expert, Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC, and industry expert Gregory Falk, an independent consultant and former executive of Solara Optics, Inc. Such review shall be limited to the technical accuracy and consistency of the materials reviewed, and the Expert shall not be asked to render opinions outside her areas of expertise.
(iii) Meetings and Conference Calls. The Expert shall attend meetings and participate in conference calls with the C&H litigation team as reasonably requested, at mutually agreeable times, including periodic status calls, strategy sessions related to claim construction and expert discovery, and pre-trial preparation meetings.
Section 1.3 — Limitations on Scope
The Expert's engagement under this Agreement is limited to technical opinions on infringement and validity of the Asserted Patents. The Expert shall not be asked to, and shall not, render opinions on damages, willfulness, inequitable conduct, or other legal conclusions. Any opinions on the ultimate legal questions of infringement, validity, or enforceability are reserved to the Court and the jury, and the Expert's technical opinions are offered to assist the trier of fact in understanding the relevant technical issues.
The Expert's opinions shall at all times be based on her own independent analysis and professional judgment. C&H and OWS shall not direct, dictate, or control the substance of the Expert's opinions or conclusions. While C&H may provide the Expert with information, materials, and legal framework regarding the issues on which opinions are sought, the Expert retains full and sole authority over the content and conclusions of her technical opinions.
The Expert may decline any request by C&H or OWS that, in the Expert's professional judgment, would compromise the integrity, reliability, or scientific soundness of her opinions. In such event, the Expert shall promptly notify C&H of the basis for her decision, and the Parties shall discuss alternative approaches in good faith.
ARTICLE 2 — COMPENSATION
Section 2.1 — Hourly Rate
The Expert shall be compensated at the rate of Nine Hundred Fifty Dollars ($950.00) per hour for all professional services rendered under this Agreement. This hourly rate applies to all activities performed by the Expert in connection with the engagement, including but not limited to: review and analysis of documents, data, and technical materials; independent research and investigation; preparation and drafting of expert reports, declarations, and other written work product; meetings, conference calls, and video conferences with C&H attorneys and other members of the litigation team; deposition preparation sessions; deposition testimony; trial preparation sessions; trial testimony; review of and commentary on demonstrative exhibits and presentations; and travel time in connection with any of the foregoing activities.
Section 2.2 — Estimated Budget
The Parties estimate a total budget for the Expert's Services under this Agreement of One Million One Hundred Thousand Dollars ($1,100,000.00) (the "Estimated Budget"). This Estimated Budget is based on a preliminary assessment of the scope of work anticipated to be required through trial, including approximately 250–300 hours for document review and analysis, 200–250 hours for expert report preparation, 50–75 hours for deposition preparation and testimony, 100–150 hours for trial preparation and testimony, and 100–150 hours for general consultation and meetings.
The Estimated Budget for the Expert's Services is a component of the overall approved expert fee budget for all plaintiff's experts in the Litigation, which is approximately Two Million Eight Hundred Thousand Dollars ($2,800,000.00). The overall expert budget includes: (a) Dr. Caroline Ashford (technical expert — infringement and validity) at $1,100,000; (b) Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC (damages expert) at $950,000; (c) Gregory Falk, independent consultant (industry expert) at $375,000; and (d) Benchmark Semiconductor Analysis, LLC (reverse engineering and teardown analysis) at $375,000.
The Estimated Budget is provided for planning purposes and does not constitute a cap on the Expert's compensation. If the Expert reasonably anticipates that her aggregate fees will exceed the Estimated Budget, she shall promptly notify the Firm in writing, providing a revised estimate of total anticipated fees and an explanation of the basis for the projected overrun. Any expenditure exceeding the Estimated Budget by more than ten percent (10%) — that is, total fees exceeding $1,210,000 — shall require prior written approval from Alan Ngo or Marcus Delgado before the Expert incurs additional fees beyond such threshold.
The overall litigation budget approved by OWS and its board of directors (as authorized pursuant to Board Resolution No. 2024-07) and confirmed by Ridgeline Capital Partners, LP (OWS's majority institutional investor) through a letter dated April 2, 2024, is Eighteen Million Five Hundred Thousand Dollars ($18,500,000.00) through trial. The Expert acknowledges this information for context but understands that the administration and allocation of the overall litigation budget is solely within the control of C&H and OWS.
Section 2.3 — Invoicing and Payment
The Expert shall submit monthly invoices to C&H reflecting the services rendered and expenses incurred during the preceding calendar month. Each invoice shall include the following detail: (a) the date on which each service was performed; (b) the number of hours worked on each date (in increments of not less than one-tenth (0.1) of an hour); (c) a reasonably detailed description of the services performed; and (d) the total fees for the billing period, calculated as the product of hours worked and the applicable hourly rate.
All invoices shall be submitted to:
Calderwood & Harkness LLP
Attn: Marcus Delgado
350 South Grand Avenue, 48th Floor Los Angeles, California 90071
Email: m.delgado@calderwoodharkness.com
Payment of each invoice shall be made by C&H within thirty (30) days following receipt of a complete and accurate invoice. C&H shall be directly responsible for payment of all invoices submitted by the Expert. OWS is the ultimate payor of all expert fees and expenses, and C&H shall seek reimbursement from OWS in accordance with the engagement letter between C&H and OWS. In the event of any dispute regarding an invoice, C&H shall promptly notify the Expert in writing, and the Parties shall use good faith efforts to resolve the dispute. Any undisputed portion of an invoice shall be paid within the standard thirty (30) day period.
Section 2.4 — Expenses
Reasonable out-of-pocket expenses incurred by the Expert in direct connection with the performance of the Services shall be reimbursed by C&H upon submission of appropriate documentation. Reimbursable expenses include, but are not limited to:
(a) Travel expenses, including airfare, train or rail fare, automobile mileage (at the then-current IRS standard mileage rate), lodging, ground transportation (taxi, rideshare, rental car), parking, and reasonable meal expenses incurred during travel in connection with the engagement;
(b) Printing and copying costs incurred in the preparation of reports, exhibits, and other work product;
(c) Specialized software or computing resources, including licensing fees for photonic simulation software, computational processing time, or other technical tools required for analysis, to the extent not otherwise available to the Expert through her university affiliation;
(d) Costs of obtaining technical literature or reference materials, including journal article access fees, conference proceedings, patent document procurement costs, and acquisition of technical standards documents; and
(e) Other reasonable expenses incurred with the prior approval of C&H.
All travel shall be at coach or economy class for domestic flights and business class for international flights or domestic flights exceeding five (5) hours in duration. Hotel accommodations shall not exceed Three Hundred Fifty Dollars ($350.00) per night without prior written approval from C&H. All expense reimbursement requests shall be submitted concurrently with the monthly invoice for the applicable billing period and shall be accompanied by itemized receipts for any individual expense item exceeding Fifty Dollars ($50.00).
Section 2.5 — No Contingency
The Expert's compensation under this Agreement is not contingent upon the outcome of the Litigation, the substance or content of the Expert's opinions or testimony, the amount of any recovery by OWS, or any other factor other than the time spent and expenses incurred in performing the Services. The Expert's hourly rate shall remain constant regardless of whether the Expert's opinions are favorable or unfavorable to OWS's litigation positions, and regardless of whether the Litigation results in a verdict, settlement, or other disposition in favor of or against OWS.
The Expert acknowledges for the record that C&H's own fee arrangement with OWS includes a success fee component, specifically a fee equal to five percent (5%) of net recovery above One Hundred Fifty Million Dollars ($150,000,000.00), as set forth in the engagement letter between C&H and OWS dated March 18, 2024. However, this arrangement is solely between C&H and OWS, does not affect or apply to the Expert's compensation, and does not create any contingency in the Expert's engagement.
ARTICLE 3 — CONFIDENTIALITY
Section 3.1 — Confidential Information
The Expert acknowledges that in the course of performing the Services under this Agreement, she will receive, review, and have access to confidential, proprietary, and privileged information belonging to OWS, Lumicore, and various third parties (collectively, "Confidential Information"). Confidential Information includes, but is not limited to: (a) patent prosecution files, including office action responses, inventor declarations, and inter partes review filings; (b) internal engineering documents, technical memoranda, design specifications, and test data of OWS and Lumicore; (c) design files, including CAD drawings, GDSII mask files, OASIS layout files, RTL schematics, and photonic-IC layout files; (d) source code and firmware associated with the Accused Products and OWS's products; (e) financial data, including revenue figures, cost data, pricing information, and profit margins; (f) trade secrets and proprietary manufacturing processes; (g) attorney-client privileged communications between C&H and OWS; and (h) attorney work product, including legal memoranda, strategy documents, draft pleadings, and litigation analyses.
Section 3.2 — Protective Order Compliance
The Expert shall comply fully with the Stipulated Protective Order entered in the Litigation (the "Protective Order"), which was filed with the Court on August 19, 2024. The Protective Order establishes a three-tier confidentiality framework for discovery materials and other documents produced in the Litigation, as follows:
Tier 1: "Confidential." Information designated as "Confidential" may be disclosed to outside counsel of record, their staff, retained experts and consultants, court personnel, and other individuals identified in the Protective Order.
Tier 2: "Highly Confidential — Attorneys' Eyes Only." Information designated as "Highly Confidential — Attorneys' Eyes Only" is subject to more restrictive access limitations and may be disclosed only to outside counsel of record and specifically authorized individuals, including retained experts who have signed the Acknowledgment and Agreement to Be Bound form appended to the Protective Order.
Tier 3: "Highly Confidential — Source Code." Information designated as "Highly Confidential — Source Code" is subject to the most restrictive access provisions and may be reviewed only at a designated secure facility, in accordance with the source-code review protocols specified in the Protective Order. No copies of source-code materials may be retained by the Expert except as expressly permitted by the Protective Order.
The Expert acknowledges that she may receive access to materials at all three tiers, including Lumicore's source-code repositories, photonic-IC mask files, fabrication run data, process-design-kit specifications, and related materials. The Expert agrees to handle all such materials in strict accordance with the terms and conditions of the Protective Order. Prior to receiving any Confidential Information at Tier 2 or Tier 3 levels, the Expert shall execute the Acknowledgment and Agreement to Be Bound form attached to the Protective Order, acknowledging her obligation to comply with the Protective Order as if she were a party thereto.
Section 3.3 — Non-Disclosure Obligations
The Expert shall not disclose any Confidential Information to any person other than: (a) authorized attorneys at C&H, specifically Alan Ngo, Marcus Delgado, Wendy Schultz, and Omar Siddiqui, and their authorized support staff; (b) authorized personnel of OWS, as identified in writing by C&H; and (c) other individuals expressly authorized to receive such information under the Protective Order.
The Expert shall not use any Confidential Information for any purpose other than providing the Services under this Agreement. Without limiting the generality of the foregoing, the Expert shall not use Confidential Information for personal benefit, academic research, publication, or any purpose unrelated to the Litigation, regardless of whether such use would result in disclosure to third parties.
The Expert shall maintain all Confidential Information in a secure manner. Physical documents containing Confidential Information shall be stored in a locked office, cabinet, or other secure location when not in active use. Electronic files and data containing Confidential Information shall be stored on password-protected devices with encryption, and the Expert shall employ reasonable cybersecurity measures to prevent unauthorized access, including the use of multi-factor authentication where available. The Expert shall not store Confidential Information on shared or publicly accessible networks, cloud storage platforms without encryption, or personal devices that are not adequately secured.
The obligations set forth in this Section 3.3 shall survive the termination or expiration of this Agreement and shall continue in effect for so long as the Protective Order remains in force, and in any event for a period of not less than five (5) years following the conclusion of the Litigation (including all appeals).
Section 3.4 — Attorney-Client Privilege and Work Product
The Expert understands and acknowledges that her communications with C&H attorneys and her work performed at the direction of counsel may be protected by the attorney-client privilege and/or the work-product doctrine. The Expert shall take all reasonable steps to preserve these protections and shall not disclose to any third party: (a) the content of her communications with C&H attorneys, including legal advice received, litigation strategy discussions, or case assessments; (b) the nature of instructions or guidance received from C&H regarding the scope, focus, or methodology of her analysis; or (c) any draft work product, including draft reports, draft declarations, preliminary analyses, or internal memoranda prepared in connection with the engagement, except as required by law, court order, or the Federal Rules of Civil Procedure.
The Expert acknowledges that certain materials provided to her and relied upon in forming her opinions may be discoverable under the Federal Rules of Civil Procedure, including Rule 26(a)(2)(B) and Rule 26(b)(4). The Expert further acknowledges that her final expert reports will be produced to opposing counsel — specifically, Hawthorne Vega & Cruz LLP (lead partner Catherine "Kate" Rourke; lead associate Samantha Briggs; and additional attorneys Darren Cho and Rohan Iyer), and local counsel Trask Eddington LLP (Maria Garza) — and filed with the Court. The Expert shall work with C&H to ensure that her final reports accurately and completely disclose all information required by Rule 26(a)(2)(B) while appropriately protecting privileged communications and work product to the extent permitted by applicable law.
ARTICLE 4 — INDEPENDENCE AND OBJECTIVITY
Section 4.1 — Independent Expert
The Expert shall form her opinions independently, based on her own professional analysis, specialized expertise, and sound scientific and engineering judgment. C&H and OWS shall not direct, control, or influence the substance of the Expert's opinions or conclusions. While C&H may identify the issues on which expert opinions are needed, provide factual and legal context, and supply the Expert with relevant documents and materials, the Expert retains sole and absolute authority over the content, methodology, and conclusions of her technical opinions.
The Expert shall provide honest, objective, and scientifically sound opinions regardless of whether those opinions are favorable or unfavorable to OWS's litigation positions. If the Expert's independent analysis leads to conclusions that do not support OWS's claims with respect to any particular patent, claim, product, or issue, the Expert shall so inform C&H promptly and candidly. The Parties acknowledge that the Expert's credibility before the Court and jury depends upon the integrity and objectivity of her opinions, and both Parties share an interest in ensuring that the Expert's work meets the highest standards of professional and scientific rigor.
Section 4.2 — Conflicts of Interest
The Expert represents and warrants that, as of the date of this Agreement:
(a) She has no financial interest — including equity ownership, stock options, warrants, debt instruments, or any other direct or indirect financial interest — in OWS, Lumicore Technologies, Inc., Ridgeline Capital Partners, LP, or any other party to the Litigation;
(b) She has no prior consulting, employment, advisory, or academic relationship with Lumicore Technologies, Inc., its parent companies, subsidiaries, or affiliates that would create a conflict of interest or impair her objectivity;
(c) She has no prior consulting, employment, or professional relationship with Lumicore's counsel of record, including Hawthorne Vega & Cruz LLP or Trask Eddington LLP, that would create a conflict of interest or impair her objectivity;
(d) She has no personal, professional, or academic relationship with Lumicore's identified technical expert, Dr. Rajesh Sundaram of Pacific Western University, or Lumicore's damages expert, Dr. Natasha Volkov of Pinnacle Analytics Partners LLP, that would create a conflict of interest, bias, or appearance of impropriety; and
(e) She is not aware of any other fact or circumstance that would create a conflict of interest or reasonably call into question her ability to serve as an objective and impartial expert witness in the Litigation.
The Expert shall promptly disclose to C&H any potential conflict of interest, or any fact or circumstance that could reasonably give rise to an appearance of a conflict of interest, that arises at any time during the engagement. Upon such disclosure, the Parties shall confer in good faith to determine whether the conflict can be resolved or whether termination of the engagement is appropriate.
Section 4.3 — Other Engagements
The Expert is free to accept other consulting, expert witness, and academic engagements during the pendency of this Agreement, provided that no such engagement creates a conflict of interest with this matter or materially impairs the Expert's ability to perform the Services in a timely manner. The Expert shall exercise reasonable professional judgment in managing her commitments to ensure that her obligations under this Agreement are met in accordance with the litigation schedule set forth in Section 9.1.
During the pendency of the Litigation, the Expert shall not accept any engagement, consulting arrangement, or advisory role from or on behalf of Lumicore Technologies, Inc., Hawthorne Vega & Cruz LLP, Trask Eddington LLP, or any entity affiliated with the defense of this action. This restriction shall remain in effect until the conclusion of the Litigation, including all post-trial motions and appeals, or until this Agreement is terminated in accordance with Section 6.3.
ARTICLE 5 — DOCUMENT RETENTION AND RETURN
Section 5.1 — Retention During Engagement
The Expert shall retain all documents, data, notes, analyses, communications, drafts, and materials created or received in connection with this engagement for the duration of the engagement and in accordance with her obligations under the Protective Order, the Federal Rules of Civil Procedure, and any applicable preservation orders or directives issued by the Court. The Expert shall implement and maintain a reasonable system for organizing and preserving such materials, and shall not delete, destroy, or dispose of any such materials during the pendency of the Litigation without the prior written consent of C&H.
The Expert acknowledges that she is subject to the litigation hold and document preservation obligations applicable to OWS and its agents, and that the intentional or negligent destruction of relevant documents or data could result in sanctions, adverse inferences, or other remedies imposed by the Court.
Section 5.2 — Disclosure Obligations
The Expert acknowledges that under Federal Rule of Civil Procedure 26(a)(2)(B), her expert report(s) must contain a complete statement of all opinions the Expert will express and the basis and reasons for them, as well as the following disclosures:
(a) The facts or data considered by the Expert in forming her opinions;
(b) Any exhibits that will be used to summarize or support her opinions;
(c) The qualifications of the Expert, including a list of all publications authored in the previous ten (10) years;
(d) A list of all other cases in which, during the previous four (4) years, the Expert has testified as an expert at trial or by deposition;
(e) A statement of the compensation to be paid for the Expert's study and testimony; and
(f) Such other information as may be required by the Federal Rules, the Court's Scheduling Order, or the Local Rules of the Eastern District of Texas.
The Expert shall cooperate fully with C&H in ensuring that her expert reports comply with all applicable disclosure requirements, and she shall maintain accurate records sufficient to support such disclosures.
Section 5.3 — Return or Destruction
Upon the conclusion of the Litigation (including all post-trial motions and appeals) or upon the termination of this Agreement, whichever occurs first, the Expert shall, at C&H's direction, either: (a) return all Confidential Information, including all documents, data, copies, extracts, notes, and summaries thereof, to C&H; or (b) destroy all such Confidential Information in a manner consistent with the requirements of the Protective Order, including secure shredding of physical documents and permanent deletion of electronic files using commercially reasonable data destruction methods.
Within thirty (30) days following the return or destruction of Confidential Information, the Expert shall provide C&H with a written certification confirming that all Confidential Information in her possession, custody, or control has been returned or destroyed in accordance with this Section 5.3 and the Protective Order. The Expert may retain one (1) archival copy of her own work product (excluding Confidential Information of OWS, Lumicore, or third parties) for her professional records, to the extent permitted by the Protective Order.
ARTICLE 6 — TERM AND TERMINATION
Section 6.1 — Effective Date
This Agreement shall be effective as of August 1, 2024 (the "Effective Date").
Section 6.2 — Term
This Agreement shall remain in full force and effect from the Effective Date until the conclusion of the Litigation, including any post-trial motions, appeals, remands, and related proceedings, or until terminated by either Party in accordance with Section 6.3, whichever occurs first.
Section 6.3 — Termination
Either Party may terminate this Agreement upon thirty (30) days' prior written notice to the other Party, delivered in accordance with Section 10.5. No cause or reason need be stated for a termination under this provision, and neither Party shall be liable to the other for damages arising solely from the exercise of this termination right.
C&H may terminate this Agreement immediately, without the thirty (30) day notice period, upon the occurrence of any of the following events: (a) the Litigation is settled between OWS and Lumicore; (b) the Litigation is dismissed with or without prejudice, whether voluntarily or by order of the Court; (c) the Litigation is otherwise resolved by final judgment, consent decree, or other dispositive event; or (d) the Expert commits a material breach of this Agreement, including a breach of the confidentiality obligations set forth in Article 3. In the event of any such immediate termination, C&H shall provide written notice to the Expert as promptly as practicable.
In the event of termination of this Agreement for any reason, the Expert shall be entitled to compensation for all Services rendered and all expenses properly incurred through the effective date of termination, in accordance with the compensation terms set forth in Article 2. C&H shall pay all outstanding invoices within thirty (30) days following the effective date of termination, and the Expert shall submit a final invoice covering all unbilled Services and expenses within fifteen (15) days following the effective date of termination.
Upon termination of this Agreement, the Expert's obligations under Article 3 (Confidentiality), Article 4 (Independence and Objectivity), Section 5.3 (Return or Destruction), and Article 7 (Liability and Indemnification) shall survive and continue in full force and effect in accordance with their respective terms.
ARTICLE 7 — LIABILITY AND INDEMNIFICATION
Section 7.1 — Limitation of Liability
The Expert's total aggregate liability to C&H and OWS arising out of or in connection with this Agreement, whether in contract, tort (including negligence), strict liability, or otherwise, shall not exceed the total fees actually paid to the Expert under this Agreement as of the date of any claim. This limitation of liability reflects the Parties' allocation of risk and is an essential element of the bargain between the Parties.
Notwithstanding the foregoing, this limitation of liability shall not apply to: (a) liability arising from the Expert's breach of the confidentiality obligations set forth in Article 3; (b) liability arising from the Expert's intentional misconduct, fraud, or willful violation of law; or (c) any liability that cannot be limited by applicable law.
Section 7.2 — Indemnification
C&H, on behalf of OWS, shall indemnify, defend, and hold harmless the Expert from and against any and all third-party claims, demands, actions, losses, damages, liabilities, costs, and expenses (including reasonable attorneys' fees and costs of defense) arising out of or in connection with the Expert's performance of the Services under this Agreement, including but not limited to claims arising from the Expert's testimony, opinions, or analysis rendered in the Litigation, except to the extent that such claims, losses, or liabilities are caused by or result from the Expert's gross negligence, willful misconduct, fraud, or material breach of this Agreement.
The indemnification obligations set forth in this Section 7.2 shall survive the termination or expiration of this Agreement. In the event that any indemnifiable claim is asserted against the Expert, the Expert shall promptly notify C&H in writing, and C&H shall have the right to assume control of the defense of such claim. The Expert shall cooperate fully with C&H in the defense of any indemnifiable claim and shall not settle or compromise any such claim without C&H's prior written consent.
ARTICLE 8 — RELATIONSHIP OF THE PARTIES
Section 8.1 — Independent Contractor
The Expert is and shall remain at all times an independent contractor with respect to C&H and OWS. Nothing in this Agreement shall be construed to create an employer-employee relationship, agency, partnership, joint venture, or any other relationship between the Expert and C&H or OWS other than the independent contractor relationship expressly established herein.
As an independent contractor, the Expert shall be solely responsible for all federal, state, and local tax obligations arising from compensation received under this Agreement, including self-employment taxes, estimated tax payments, and any applicable state income tax obligations. C&H shall not withhold federal income taxes, Social Security taxes, Medicare taxes, state income taxes, or any other taxes from payments made to the Expert. C&H shall issue Internal Revenue Service Form 1099-NEC (or such successor form as may be applicable) to the Expert for compensation paid in excess of Six Hundred Dollars ($600.00) in any calendar year.
The Expert shall not be entitled to participate in any employee benefit plan, program, or arrangement maintained by C&H or OWS, including health insurance, retirement plans, disability insurance, or any other fringe benefit.
Section 8.2 — No Authority to Bind
The Expert shall not have authority to bind C&H, OWS, or any other party to any agreement, contract, obligation, or commitment. The Expert shall not make any representations, warranties, promises, or commitments on behalf of C&H or OWS to any person or entity. Nothing in this Agreement authorizes the Expert to act as an agent, representative, or spokesperson for C&H or OWS in any capacity other than as an expert witness providing testimony in the Litigation as expressly contemplated herein.
ARTICLE 9 — SCHEDULING AND AVAILABILITY
Section 9.1 — Key Deadlines
The Expert acknowledges the following key litigation deadlines established by the Court's Scheduling Order of August 12, 2024 and other applicable orders, and agrees to use her best efforts to ensure her availability for, and timely completion of deliverables in advance of, each such deadline:
The Expert understands that the foregoing deadlines are subject to modification by order of the Court, and C&H shall promptly inform the Expert of any changes to the litigation schedule. In the event of any scheduling conflict, the Expert shall notify C&H as soon as reasonably practicable so that alternative arrangements may be made, including, if necessary, seeking a modification of applicable deadlines from the Court.
Section 9.2 — Availability for Preparation
The Expert shall make herself reasonably available for meetings, conference calls, video conferences, and in-person preparation sessions with the C&H litigation team at mutually agreed-upon times throughout the engagement. The Expert acknowledges that the preparation of expert reports, declarations, and trial testimony will require sustained periods of intensive collaboration with C&H attorneys, and shall plan her schedule accordingly, particularly in the weeks preceding the expert report deadlines and the trial date.
For depositions and trial, the Expert shall confirm her availability at least thirty (30) days in advance of the anticipated date of the proceeding. In the event that the Expert has a scheduling conflict with a deposition or trial date, she shall notify C&H immediately so that C&H may take appropriate steps, including requesting a date change from opposing counsel or the Court.
ARTICLE 10 — GENERAL PROVISIONS
Section 10.1 — Governing Law
This Agreement shall be governed by and construed in accordance with the laws of the State of California, without regard to principles of conflict of laws that would require the application of the laws of any other jurisdiction. Any dispute arising out of or relating to this Agreement that cannot be resolved by mutual agreement of the Parties shall be submitted to the exclusive jurisdiction of the state or federal courts located in Los Angeles County, California.
Section 10.2 — Entire Agreement
This Agreement, together with the Exhibits attached hereto and incorporated herein by reference, constitutes the entire agreement between the Parties with respect to the subject matter hereof. This Agreement supersedes all prior or contemporaneous oral or written agreements, understandings, representations, negotiations, and discussions between the Parties relating to the Expert's engagement in the Litigation. There are no oral or written agreements, understandings, or representations between the Parties other than as set forth in this Agreement.
Section 10.3 — Amendments
This Agreement may not be amended, modified, supplemented, or otherwise changed except by a written instrument duly executed by both Parties. No oral modification of this Agreement shall be effective for any purpose. Any amendment shall specifically reference this Agreement and identify the provisions being amended.
Section 10.4 — Assignment
The Expert may not assign, transfer, delegate, or subcontract this Agreement, or any rights or obligations hereunder, to any third party without the prior written consent of C&H. Any attempted assignment or transfer in violation of this Section shall be void and of no force or effect. C&H may assign this Agreement to a successor law firm or to OWS without the Expert's consent, provided that the assignee agrees in writing to be bound by the terms of this Agreement.
Section 10.5 — Notices
All notices, requests, demands, and other communications required or permitted under this Agreement shall be in writing and shall be deemed duly given when: (a) delivered personally; (b) sent by certified or registered United States mail, return receipt requested, postage prepaid; (c) sent by nationally recognized overnight courier service; or (d) sent by electronic mail with confirmation of receipt. Notices shall be addressed as follows:
If to C&H:
Alan Ngo, Partner Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071
Email: a.ngo@calderwoodharkness.com
with a copy to:
Marcus Delgado, Partner Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071
Email: m.delgado@calderwoodharkness.com
If to the Expert:
Dr. Caroline Ashford Department of Electrical Engineering & Photonics Northfield Institute of Technology 2145 Sheridan Road Evanston, Illinois 60208
Email: c.ashford@northfield.edu
Either Party may change its address for purposes of notice by providing written notice to the other Party in accordance with this Section 10.5.
Section 10.6 — Severability
If any provision of this Agreement, or the application thereof to any person, entity, or circumstance, is held invalid, illegal, or unenforceable by a court of competent jurisdiction, the remaining provisions of this Agreement shall continue in full force and effect, and the invalid, illegal, or unenforceable provision shall be modified to the minimum extent necessary to make it valid, legal, and enforceable while preserving the original intent of the Parties. If such modification is not possible, the invalid provision shall be severed from this Agreement, and the remaining provisions shall be enforced as if the invalid provision had never been included.
Section 10.7 — Waiver
No waiver of any provision of this Agreement shall be effective unless made in writing and signed by the Party granting the waiver. No failure or delay by either Party in exercising any right, power, or remedy under this Agreement shall operate as a waiver thereof, nor shall any single or partial exercise of any right, power, or remedy preclude any other or further exercise thereof or the exercise of any other right, power, or remedy.
Section 10.8 — Counterparts