EXPERT RETENTION AGREEMENT
Industry Expert Consulting Services
August 8, 2024
THIS EXPERT RETENTION AGREEMENT (this "Agreement") is entered into as of August 8, 2024 (the "Effective Date"), by and between the following parties:
CALDERWOOD & HARKNESS LLP ("Firm" or "C&H"), a California limited liability partnership, with offices at 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071, acting as lead litigation counsel on behalf of its client, Optiwave Semiconductor Corp., a Delaware corporation ("OWS" or "Client");
and
GREGORY FALK ("Expert" or "Consultant"), an individual and independent consultant, formerly Vice President of Engineering at Solara Optics, Inc. (now dissolved), residing at an address to be supplied under separate cover, currently operating as an independent consultant under his own name.
Matter Reference:
Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc. Case No. 2:24-cv-00319-JRG United States District Court for the Eastern District of Texas Before the Honorable James R. Gilstrap, United States District Judge
The Firm and the Expert are each referred to herein individually as a "Party" and collectively as the "Parties."
RECITALS
WHEREAS, Optiwave Semiconductor Corp. ("OWS") is the plaintiff in the above-captioned patent infringement action filed against Lumicore Technologies, Inc. ("Lumicore"), in which OWS asserts infringement of the following United States patents: 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") (collectively, the "Asserted Patents");
WHEREAS, Calderwood & Harkness LLP represents OWS as lead litigation counsel in the above-captioned action pursuant to an engagement letter dated March 18, 2024, and is authorized by OWS to retain experts and consultants as necessary in connection with the prosecution of the above-captioned litigation;
WHEREAS, Gregory Falk is a recognized expert in the silicon-photonics transceiver industry, possessing extensive experience acquired during his tenure as Vice President of Engineering at Solara Optics, Inc. ("Solara Optics"), the original assignee of the '562 Patent, which patent was subsequently acquired by OWS, together with eleven (11) related patents, pursuant to an Asset Purchase Agreement dated June 15, 2018, for aggregate consideration of Thirty-Four Million Five Hundred Thousand Dollars ($34,500,000.00);
WHEREAS, Solara Optics, Inc. was dissolved in 2020 following the disposition of its remaining assets and the wind-down of its business operations, and Mr. Falk has since that time operated as an independent consultant providing advisory services to participants in the silicon-photonics and optical networking industries;
WHEREAS, C&H desires to retain Mr. Falk as an industry expert to provide consulting services, and potentially testifying expert services, in connection with the above-captioned litigation, and Mr. Falk desires to accept such engagement, in each case upon the terms and conditions set forth herein;
WHEREAS, C&H has conducted a conflicts check and confirmed that Mr. Falk has no conflicts of interest with Lumicore Technologies, Inc., its affiliates, or its counsel of record, Hawthorne Vega & Cruz LLP and Trask Eddington LLP, and has further confirmed that Mr. Falk has no financial interest, direct or indirect, in any party to the above-captioned litigation; and
WHEREAS, Mr. Falk has represented to C&H that he is willing and available to serve as an expert in this matter and that he possesses no obligations, contractual or otherwise, that would prevent him from performing the services described herein.
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:
SECTION 1: SCOPE OF ENGAGEMENT
1.1 General Scope
Expert is retained to provide industry expert services in connection with 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"). Expert's services shall encompass analysis, consultation, report preparation, and potential testimony relating to the silicon-photonics transceiver market, the competitive landscape among participants in that market, the evolution of relevant technologies over time, and the commercial significance of OWS's patented innovations as embodied in the Asserted Patents. Expert's engagement is intended to support OWS's claims of patent infringement and to provide the factual and analytical foundation necessary for the Firm's presentation of secondary considerations of non-obviousness, damages evidence, and market-context testimony at trial.
1.2 Specific Tasks
Without limiting the generality of Section 1.1, Expert shall perform the following specific tasks as directed by C&H:
(a) Market Background Analysis. Provide background analysis on the silicon-photonics transceiver market, with particular emphasis on applications in hyperscale data centers and telecommunications infrastructure, including market size, growth trends, principal market participants, and the role of silicon-photonics technology in displacing legacy optical transceiver architectures.
(b) Competitive Landscape Analysis. Analyze the competitive landscape between OWS's product lines — specifically, the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver modules — and Lumicore's accused product lines — specifically, the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR (collectively, the "Accused Products"). This analysis shall address direct competition for design wins, customer overlap, pricing dynamics, feature-by-feature comparisons, and the extent to which the parties compete head-to-head for the same customer contracts and deployment opportunities.
(c) Technology Evolution Assessment. Assess the evolution of key technologies relevant to the Asserted Patents, including without limitation: waveguide multiplexing architectures, coherent optical transceiver design and performance, thermal management of photonic integrated circuits (including micro-channel heat sink technology), and polarization-diverse grating couplers. Expert shall place the patented innovations in the context of the state of the art at the time of invention and explain the technical significance of the advances claimed in the Asserted Patents.
(d) Commercial Significance of Patented Innovations. Evaluate the commercial significance of the innovations claimed in the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent, including the degree to which these innovations have driven commercial adoption of OWS's products, have conferred competitive advantages, and have been recognized within the industry as meaningful technological contributions.
(e) Secondary Considerations of Non-Obviousness. Support the infringement and validity analysis by providing evidence of commercial success, copying, long-felt but unsolved need, failure of others, and competitive impact, each as it relates to the secondary considerations of non-obviousness under 35 U.S.C. § 103 and applicable Federal Circuit precedent.
(f) Damages Support — Market Context. Support the damages analysis being conducted by Plaintiff's damages expert, Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC, by providing market context regarding market share, pricing dynamics, customer overlap, competitive positioning, and available alternatives in the silicon-photonics transceiver market. This information shall be used by Dr. Keating in connection with his Panduit lost-profits analysis and Georgia-Pacific reasonable royalty analysis.
(g) Hyperscale Data-Center Customer Overlap. Assess the competitive overlap between OWS and Lumicore at major hyperscale data-center customers, including but not limited to publicly identifiable customers, and provide analysis of head-to-head competition for customer deployments and the impact of Lumicore's accused products on OWS's market position.
(h) Expert Report Preparation. Prepare a written expert report for service pursuant to Federal Rule of Civil Procedure 26(a)(2)(B), due June 15, 2025, per the Court's Scheduling Order (Docket Entry 27, entered August 12, 2024). The report shall contain all elements required by Rule 26(a)(2)(B), as further described in Section 7 of this Agreement.
(i) Rebuttal Expert Report. Prepare a potential rebuttal expert report, due July 15, 2025, if required to respond to opinions offered by Lumicore's expert witnesses, as directed by C&H.
(j) Deposition Testimony. Appear for deposition by defendant's counsel (Hawthorne Vega & Cruz LLP) during the expert discovery period, which closes August 15, 2025, per the Court's Scheduling Order. Expert shall cooperate fully with C&H in preparing for deposition.
(k) Trial Testimony. Provide trial testimony, if called, at the jury trial currently scheduled to commence on February 2, 2026, with an estimated duration of seven (7) to ten (10) trial days. Expert shall cooperate fully with C&H in preparing for direct and cross-examination.
(l) Trial Demonstratives and Presentations. Provide consultation and assistance with the preparation of trial demonstratives, presentations, and jury tutorials as needed, including visual aids, charts, and other materials that will assist the jury in understanding the silicon-photonics transceiver market, the competitive landscape, and the significance of the Asserted Patents.
(m) Prior-Art and Prosecution History Analysis. Assist with analysis of prior-art references and prosecution histories relating to Expert's personal knowledge of Solara Optics' technology and the '562 Patent, including the state of the art in thermal management of photonic integrated circuits at the time the '562 Patent was filed.
1.3 Solara Optics-Related Services
In connection with Expert's former role as Vice President of Engineering at Solara Optics, Inc., Expert shall provide testimony, records, and other assistance relating to the following matters:
(a) Development and Prosecution of the '562 Patent. Expert shall provide testimony and supporting documentation regarding the development and prosecution of 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, and issued June 13, 2017. Expert was personally involved in directing the engineering team that developed the technology underlying the '562 Patent and is expected to testify regarding the conception, development, and reduction to practice of the claimed inventions.
(b) Asset Purchase Agreement and Patent Assignment. Expert shall provide testimony regarding the original assignment of the '562 Patent and related patents from Solara Optics to OWS under the Asset Purchase Agreement dated June 15, 2018, pursuant to which OWS acquired a portfolio of twelve (12) patents, including the '562 Patent, for aggregate consideration of $34,500,000.00. Expert shall provide background on the circumstances surrounding the sale, the valuation of the patent portfolio, and the significance of the '562 Patent within the broader portfolio.
(c) Solara Optics Archived Technical Files. Expert retained custody of certain archived technical files of Solara Optics following the company's dissolution in 2020, including engineering notebooks, design files, test data, meeting minutes, and correspondence. Expert shall make such files available to C&H as reasonably requested and shall provide testimony regarding the contents and significance of such files.
(d) Third-Party Subpoena Compliance. Expert acknowledges that he has been served with a third-party subpoena dated September 9, 2024, issued by Lumicore's counsel, Hawthorne Vega & Cruz LLP, seeking production of Solara Optics corporate records in Expert's possession. Expert shall cooperate with such subpoena in coordination with C&H, and C&H shall provide guidance regarding any objections, privilege assertions, or protective order designations applicable to the subpoenaed materials.
1.4 Coordination with Other Experts
Expert shall coordinate his work, as directed by C&H, with the following members of OWS's expert team:
(a) Dr. Caroline Ashford — Plaintiff's Technical/Infringement Expert, Professor of Electrical Engineering & Photonics, Northfield Institute of Technology. Dr. Ashford has been retained to provide claim-construction testimony, infringement analysis, and technical invalidity-rebuttal opinions. Expert shall coordinate with Dr. Ashford on matters of technology context, industry practice, and the technical significance of the patented innovations.
(b) Dr. Lawrence Keating — Plaintiff's Damages Expert, Managing Director, Meridian Economic Consulting Group, LLC. Dr. Keating has been retained to provide damages opinions, including lost-profits analysis under Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978), and reasonable royalty analysis under Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). Expert shall coordinate with Dr. Keating on matters of commercial success data, market context for damages models, competitive analysis, pricing dynamics, and available alternatives.
The scope and substance of all inter-expert communications shall be directed by C&H, and Expert acknowledges that certain communications among experts may be discoverable under Federal Rule of Civil Procedure 26(b)(4)(C).
SECTION 2: COMPENSATION
2.1 Hourly Rate
Expert shall be compensated at the rate of Six Hundred Fifty Dollars ($650.00) per hour for all services rendered under this Agreement. The hourly rate shall apply to all categories of work performed by Expert, including but not limited to: document review, research, analysis, consultation with counsel and other members of OWS's litigation team, report drafting and revision, deposition preparation and attendance, trial preparation and attendance, travel time, and any other services reasonably related to the Litigation. The hourly rate shall remain in effect for the duration of this Agreement unless modified by written amendment executed by both Parties.
2.2 Estimated Budget
The total estimated budget for Expert's services through trial is Three Hundred Seventy-Five Thousand Dollars ($375,000.00). This estimate is based on the following approximate allocation of hours and fees across the principal phases of Expert's engagement:
The foregoing budget is an estimate only and shall not be construed as a cap on Expert's compensation. The actual fees may be higher or lower depending on the scope and duration of the Litigation, changes in the case schedule, and the volume of work required. Expert shall notify C&H promptly if, at any point during the engagement, Expert reasonably expects that his fees are likely to exceed the estimated budget, and the Parties shall discuss any adjustments in good faith. Any material increase in the estimated budget shall require the prior approval of C&H and OWS.
Expert acknowledges that the estimated budget for his services is part of the overall expert fee budget of approximately Two Million Eight Hundred Thousand Dollars ($2,800,000.00) for the Litigation, which has been approved by OWS and Ridgeline Capital Partners, LP, OWS's majority shareholder. Expert shall exercise reasonable efforts to perform his services in a cost-effective manner consistent with the quality and thoroughness required.
2.3 Expenses. Reasonable out-of-pocket expenses incurred by Expert in connection with services rendered under this Agreement shall be reimbursed by C&H. Reimbursable expenses include, without limitation, the following:
(a) Travel Expenses. Coach-class airfare (or equivalent), hotel accommodations at reasonable market rates, meals, and ground transportation for travel to C&H offices (in Los Angeles, California, or Washington, D.C.), OWS headquarters (located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054), the courthouse for the Eastern District of Texas (Marshall or Tyler divisions), or other locations as reasonably necessary for the performance of Expert's services.
(b) Copying, Printing, and Document-Production Costs. Reasonable costs incurred for copying, printing, scanning, and producing documents in connection with Expert's review and analysis of case materials.
(c) Specialized Research Materials or Databases. Reasonable costs for access to industry databases, research publications, market reports, or other specialized materials necessary for Expert's analysis, provided that such costs are approved by C&H in advance if exceeding Five Hundred Dollars ($500.00) per item.
Expenses exceeding Two Thousand Five Hundred Dollars ($2,500.00) in the aggregate per calendar month shall require the advance written approval of the Firm before such expenses are incurred. Expert shall provide receipts or other reasonable documentation for all expenses submitted for reimbursement.
2.4 Invoicing and Payment
Expert shall submit monthly invoices to C&H describing in reasonable detail the services rendered, hours worked (recorded in increments of one-tenth (0.1) of an hour), and expenses incurred during the preceding calendar month. Each invoice shall include a brief narrative description of each task performed, the date on which the task was performed, the number of hours expended, and the applicable rate.
Invoices shall be directed to:
Alan Ngo, Partner Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071
With a copy to:
Marcus Delgado, Billing Partner Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071
Payment shall be made within thirty (30) days of receipt of a properly submitted invoice. C&H shall be directly responsible for the payment of all fees and expenses under this Agreement. OWS, as C&H's client, shall be the ultimate payor of such fees and expenses, but Expert shall look solely to C&H for payment. Expert acknowledges that his compensation under this Agreement is not contingent upon the outcome of the Litigation, the substance of his opinions, or the satisfaction of OWS or any other party with Expert's work product.
2.5 Non-Contingency. Expert's compensation under this Agreement is in no way contingent upon the substance of Expert's opinions, the outcome of the Litigation, any settlement, verdict, or judgment entered in the Litigation, or any other result or consequence of Expert's services. Expert shall be compensated at the stated hourly rate regardless of the outcome of the Litigation. Expert further acknowledges that this provision is included in compliance with the disclosure requirements of Federal Rule of Civil Procedure 26(a)(2)(B)(vi), and that Expert's compensation arrangement shall be fully disclosed in Expert's Rule 26 expert report and, if called upon, in Expert's testimony at deposition and trial.
SECTION 3: QUALIFICATIONS AND REPRESENTATIONS OF EXPERT
3.1 Professional Background
Expert represents and warrants that he possesses the following qualifications and experience relevant to the services to be performed under this Agreement:
(a) Expert served as Vice President of Engineering at Solara Optics, Inc. from approximately 2008 through the company's dissolution in 2020, a period of approximately twelve (12) years. In that capacity, Expert was responsible for directing the engineering organization, overseeing product development, managing the company's intellectual property strategy, and leading the design, development, and commercialization of silicon-photonics transceiver products for data-center and telecommunications applications.
(b) Expert possesses extensive hands-on experience in the design, development, testing, and commercialization of silicon-photonics transceiver products, including products incorporating waveguide multiplexing architectures, coherent optical receivers, photonic integrated circuits, and thermal management subsystems.
(c) Expert was directly involved in the development of thermal management technologies for photonic integrated circuits, including the embedded micro-channel heat sink technology that forms the basis of U.S. Patent No. 9,678,562 (the '562 Patent). Expert directed the engineering team responsible for conceiving, reducing to practice, and demonstrating the technology underlying the '562 Patent, and Expert is personally familiar with the prosecution history of the '562 Patent before the United States Patent and Trademark Office.
(d) Expert possesses deep industry knowledge of the competitive landscape among silicon-photonics transceiver suppliers, including OWS (as successor to Solara Optics), Lumicore Technologies, and other competitors in the hyperscale data-center and telecom transceiver markets. Expert is familiar with industry trends, customer requirements, pricing dynamics, and the technical and commercial factors that drive purchasing decisions in these markets.
(e) Since Solara Optics' dissolution in 2020, Expert has operated as an independent consultant, providing advisory services to companies and investors in the silicon-photonics and optical networking industries. Expert's curriculum vitae is attached hereto as Exhibit A and incorporated herein by reference.
3.2 No Conflicts of Interest
Expert represents and warrants as follows:
(a) Expert has no financial, employment, consulting, advisory, or other relationship of any kind with Lumicore Technologies, Inc. or any of its officers, directors, employees, or affiliates, including without limitation: Thomas "Tom" Kessler (Chief Executive Officer), Dr. Sandra Michaud (Chief Technology Officer), Raymond Bautista (General Counsel), Dr. Eric Dalmqvist (Vice President of Product Development), and Janet Moreno (Chief Financial Officer).
(b) Expert has no financial, employment, consulting, advisory, or other relationship of any kind with Lumicore's counsel of record in the Litigation, including Hawthorne Vega & Cruz LLP and Trask Eddington LLP, or any partner, associate, or employee of such firms.
(c) Expert has no financial interest, direct or indirect, in the outcome of the Litigation, other than his right to compensation under this Agreement at the stated hourly rate.
(d) Expert has not previously been retained by, provided consulting services to, or had any advisory relationship with Lumicore Technologies, Inc. or any of its predecessors, successors, subsidiaries, or affiliates.
(e) Expert is not aware of any other facts, relationships, or circumstances that could give rise to a conflict of interest or an appearance of bias in connection with his engagement under this Agreement.
3.3 Prior Retention History
In accordance with Federal Rule of Civil Procedure 26(a)(2)(B)(v), Expert shall disclose a complete list of all cases in which he has been retained as an expert witness, testified as an expert at trial, or testified as an expert by deposition during the preceding four (4) years. This disclosure shall be prepared by Expert and incorporated into Expert's Rule 26 expert report. Expert shall promptly notify C&H of any additional expert engagements that arise during the term of this Agreement.
SECTION 4: CONFIDENTIALITY
4.1 Confidential Information
Expert acknowledges that in the course of his engagement under this Agreement, he will have access to, and will be entrusted with, confidential, proprietary, and legally privileged information from multiple sources. For purposes of this Agreement, "Confidential Information" includes, without limitation, the following categories of information:
(a) Attorney-Client Privileged Communications. Communications between C&H and OWS that are protected by the attorney-client privilege, including legal strategies, case assessments, litigation plans, and other privileged communications shared with Expert in furtherance of the legal representation.
(b) Attorney Work Product. Documents, analyses, memoranda, research, and other materials prepared by C&H or at C&H's direction in anticipation of litigation or in preparation for trial, including legal theories, draft briefs, research memoranda, and internal case assessments.
(c) OWS Proprietary Information. OWS's proprietary technical information (including product specifications, design files, test data, and engineering documentation), financial information (including revenue data, cost data, margin data, customer information, and pricing information), and business strategy information.
(d) Lumicore discovery Materials. Lumicore's confidential business information produced in discovery in the Litigation, including documents designated under the three-tier Stipulated Protective Order entered by the Court (the "Protective Order"), which establishes the following confidentiality tiers:
(i) "Confidential" — Information designated as confidential business information entitled to protection from public disclosure.
(ii) "Highly Confidential — Attorneys' Eyes Only" — Highly sensitive information, the disclosure of which is restricted to outside counsel, retained experts who have executed the appropriate undertaking, and other persons specifically authorized by the Protective Order.
(iii) "Highly Confidential — Source Code" — Source code and related technical materials, access to which is subject to additional restrictions as set forth in the Protective Order, including limitations on the manner and location of review.
(e) Lumicore Product-Level Financial Data. Lumicore's product-level financial data produced in discovery, including revenue, cost of goods sold, gross margin, and net margin data for the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR product lines, which data has been designated "Highly Confidential — Attorneys' Eyes Only" under the Protective Order.
4.2 Obligations. Expert shall maintain the strict confidentiality of all Confidential Information received in connection with this Agreement and shall not disclose any Confidential Information to any third party, whether orally, in writing, or by any other means, without the prior written consent of C&H. Expert shall comply with all terms, conditions, and obligations imposed by the Court's Stipulated Protective Order (entered on or about August 19, 2024, as approved by Judge Gilstrap), as such order may be amended or supplemented from time to time. Expert shall execute any separate acknowledgment, undertaking, or certification required by the Protective Order as a condition of his access to materials designated "Highly Confidential — Attorneys' Eyes Only" or "Highly Confidential — Source Code." Expert acknowledges that any breach of the Protective Order may subject him to sanctions by the Court, including contempt of court. Expert shall use Confidential Information solely in connection with the services described in this Agreement and for no other purpose whatsoever. Expert shall not use Confidential Information for any personal benefit, for the benefit of any other client or engagement, or in connection with any business activity unrelated to the Litigation.
4.3 Return or Destruction of Materials
Upon the termination of this Agreement, or upon the conclusion of the Litigation (including all post-trial motions and any appeals), whichever occurs later, Expert shall promptly return to C&H or destroy all Confidential Information in his possession, custody, or control, including all copies, summaries, excerpts, notes, and derivative works. Expert shall provide C&H with a written certification confirming that all Confidential Information has been returned or destroyed, as applicable, within thirty (30) days following the triggering event. Expert's obligations under this Section 4.3 shall be subject to any document-retention obligations imposed by the Protective Order or by applicable law.
SECTION 5: PRIVILEGE AND WORK PRODUCT
5.1 Consulting vs. Testifying Expert Designation
Expert is initially retained as a testifying expert under Federal Rule of Civil Procedure 26(a)(2). As a testifying expert, Expert will be identified in OWS's Rule 26(a)(2) disclosures, will prepare a written expert report, and may be deposed and called to testify at trial. Expert acknowledges that, as a testifying expert, certain categories of his communications with C&H may be discoverable under Federal Rule of Civil Procedure 26(b)(4)(C), including communications relating to: (a) the compensation to be paid to Expert for his study and testimony, (b) the facts and data provided by counsel that Expert considered in forming his opinions, and (c) the assumptions provided by counsel that Expert relied upon in forming his opinions.
To the extent Expert provides purely consulting advice that is not reflected in his expert report and is unrelated to his testifying role — for example, informal strategic assessments or background guidance on litigation approach — C&H may, in its discretion, designate such work as non-testifying consulting work protected from disclosure under Federal Rule of Civil Procedure 26(b)(4)(D). Any such redesignation shall be communicated to Expert in writing, and Expert shall maintain appropriate records to facilitate the identification and segregation of testifying and non-testifying work.
5.2 Draft Reports
Expert acknowledges that under Federal Rule of Civil Procedure 26(b)(4)(B), draft expert reports are protected from discovery as attorney work product, regardless of the form in which the draft is recorded. Expert shall maintain all drafts of his expert report(s) as directed by C&H's document preservation protocol and shall not produce, disclose, or destroy any draft without the express written authorization of C&H.
SECTION 6: EXPERT REPORT REQUIREMENTS
6.1 Report Obligations
Expert shall prepare a written expert report in compliance with Federal Rule of Civil Procedure 26(a)(2)(B). The report shall contain the following elements:
(a) A complete statement of all opinions the Expert will express at trial and the basis and reasons for each such opinion.
(b) The facts or data considered by the Expert in forming those opinions, including all materials reviewed, information relied upon, and data analyzed.
(c) Any exhibits that will be used to summarize or support Expert's opinions, including charts, graphs, tables, timelines, market analyses, and other demonstrative materials.
(d) Expert's qualifications, including a complete curriculum vitae and a list of all publications authored by Expert in the preceding ten (10) years.
(e) A list of all other cases in which, during the preceding four (4) years, Expert has testified as an expert at trial or by deposition, including the case caption, court, and the party on whose behalf Expert testified.
(f) A statement of the compensation to be paid for Expert's study and testimony in this case — specifically, that Expert is compensated at a rate of $650.00 per hour, that such compensation is non-contingent, and that Expert has no financial interest in the outcome of the Litigation.
6.2 Report Deadlines
The following deadlines apply to Expert's report obligations:
(a) Affirmative Expert Report: Expert's affirmative expert report shall be due for service on or before June 15, 2025, as set forth in the Court's Scheduling Order / Docket Control Order (Docket Entry 27, entered August 12, 2024).
(b) Rebuttal Expert Report (if needed): If a rebuttal expert report is required to respond to opinions offered by Lumicore's expert witnesses, such rebuttal report shall be due for service on or before July 15, 2025, as set forth in the Court's Scheduling Order.
(c) Draft Report Review. Expert shall provide a complete draft of his affirmative expert report to C&H no later than four (4) weeks prior to the applicable service deadline (i.e., no later than May 18, 2025) for review and comment by C&H. Expert shall incorporate any comments and revisions directed by C&H and shall finalize the report in sufficient time to meet the service deadline.
6.3 Report Content Areas
Expert's report shall address the following substantive areas, as applicable, and such other areas as C&H may direct:
(a) Silicon-Photonics Transceiver Market Overview. A comprehensive overview of the silicon-photonics transceiver market, including total addressable market size (global and by region), historical and projected growth rates, key market participants (including OWS, Lumicore, and other competitors), principal market segments (hyperscale data centers, enterprise data centers, telecommunications), and the technological and commercial factors driving market growth.
(b) Competitive Landscape — OWS vs. Lumicore. A detailed analysis of the competitive landscape between OWS and Lumicore in the hyperscale data-center and telecommunications segments, including a comparison of product offerings, market positioning, customer base, pricing strategies, technological capabilities, and competitive wins and losses.
(c) Technology Evolution. An assessment of the evolution of key technologies relevant to the Asserted Patents, including waveguide multiplexing, coherent transceiver design, thermal management of photonic integrated circuits, and polarization-diverse grating couplers. Expert shall place the patented innovations in the context of the prior art and explain why the innovations represented meaningful advances over the state of the art.
(d) Commercial Significance of the Asserted Patents. An evaluation of the commercial significance of the innovations embodied in the '847, '193, '562, and '015 Patents, including the degree to which these innovations are incorporated in OWS's commercially successful products and the extent to which they have driven customer adoption.
(e) Commercial Success. Evidence of the commercial success of OWS's products that practice the Asserted Patents, including the OWS-400ZR and OWS-800XR transceiver modules. Expert shall provide data and analysis demonstrating that OWS achieved fiscal year 2023 revenue of approximately $487.3 million, of which approximately $310 million is attributable to products practicing the Asserted Patents. Expert shall establish the nexus between the patented features and the commercial success of these products.
(f) Long-Felt but Unsolved Need. Evidence of long-felt but unsolved need in the silicon-photonics transceiver industry for low-insertion-loss waveguide multiplexing and effective thermal management of photonic integrated circuits, including the history of industry efforts to address these needs prior to the patented innovations.
(g) Failure of Others. Evidence of the failure of others — specifically, at least three (3) competitors who attempted similar designs or approaches before OWS's innovations but were unable to achieve comparable performance, reliability, or commercial viability.
(h) Copying by Lumicore. Evidence of copying by Lumicore, drawing on publicly available product data, technical publications, industry presentations, and information from the deposition record. Expert shall reference, among other sources, the deposition testimony of Dr. Sandra Michaud (Lumicore's Chief Technology Officer), taken on November 19, 2024, in which Dr. Michaud acknowledged that Lumicore's engineering team reviewed OWS's published patent applications during the design of the Accused Products.
(i) Market-Share Dynamics and Pricing Competition. An analysis of market-share dynamics and pricing competition between OWS and Lumicore, including an assessment of how Lumicore's entry into the market with the Accused Products has affected OWS's market share, pricing, and profitability.
SECTION 7: DEPOSITION AND TRIAL TESTIMONY
7.1 Deposition. Expert shall make himself available for deposition by defendant's counsel during the expert discovery period established by the Court's Scheduling Order, which closes on August 15, 2025. Expert's deposition will be conducted by Hawthorne Vega & Cruz LLP, whose lead partner on this matter is Catherine "Kate" Rourke and whose lead associate is Samantha Briggs. The deposition will be conducted in accordance with the Federal Rules of Civil Procedure and any applicable local rules of the Eastern District of Texas.
C&H shall prepare Expert for his deposition, including a thorough review of Expert's report, the anticipated lines of cross-examination, and the key factual and legal issues likely to be addressed during the deposition. Expert shall cooperate fully with C&H's preparation efforts and shall make himself available for one or more preparation sessions at times mutually convenient to Expert and C&H.
Expert's hourly rate of $650.00 per hour shall apply to all time expended in connection with deposition preparation and attendance, including travel time.
7.2 Trial Testimony
Expert shall make himself available for live testimony at trial, currently scheduled to commence on February 2, 2026, before a jury, in the United States District Court for the Eastern District of Texas. The trial is estimated to last seven (7) to ten (10) trial days. Expert shall cooperate with C&H in all aspects of trial preparation, including the preparation of direct examination outlines, cross-examination preparation, and the development of trial demonstratives and visual presentations.
Expert's hourly rate of $650.00 per hour shall apply to all time expended in connection with trial preparation, testimony, and attendance, including travel time. Travel expenses incurred in connection with trial attendance shall be reimbursed in accordance with Section 2.3 of this Agreement.
SECTION 8: TERM AND TERMINATION
8.1 Effective Date
This Agreement is effective as of August 8, 2024 (the "Effective Date").
8.2 Term. This Agreement shall remain in full force and effect until the earlier of: (a) the conclusion of the Litigation, including all post-trial motions and any appeals; or (b) the termination of this Agreement by either Party in accordance with Section 8.3.
8.3 Termination. Either Party may terminate this Agreement at any time, with or without cause, upon thirty (30) days' prior written notice to the other Party. Upon termination, Expert shall be compensated for all services rendered and expenses properly incurred through the effective date of termination, and C&H shall pay any outstanding invoices within thirty (30) days of the effective date of termination. Notwithstanding any termination of this Agreement, the following provisions shall survive and remain in full force and effect: (a) Expert's confidentiality obligations under Section 4; (b) the privilege and work-product provisions of Section 5; (c) the indemnification provisions of Section 10; and (d) any other provisions that by their nature are intended to survive termination.
SECTION 9: INDEPENDENT CONTRACTOR STATUS
Expert is and shall remain an independent contractor with respect to all services performed under this Agreement. Nothing in this Agreement shall be construed to create a relationship of employment, agency, partnership, joint venture, or any other fiduciary relationship between Expert, on the one hand, and C&H or OWS, on the other hand. Expert shall have no authority to bind C&H or OWS to any contract, obligation, or commitment, and shall not represent himself to any third party as an employee, agent, or representative of C&H or OWS.
As an independent contractor, Expert shall be solely responsible for the payment of all applicable federal, state, and local income taxes, self-employment taxes, Social Security taxes, and any other taxes or contributions arising from the compensation paid under this Agreement. Expert shall be solely responsible for obtaining and maintaining any insurance (including, without limitation, professional liability insurance, health insurance, and workers' compensation insurance) that Expert deems necessary or appropriate. C&H and OWS shall not provide Expert with any employee benefits, including but not limited to health insurance, retirement benefits, paid leave, or workers' compensation coverage.
Expert shall furnish to C&H a completed IRS Form W-9, or such other tax documentation as C&H may reasonably request, prior to the payment of any fees under this Agreement.
SECTION 10: INDEMNIFICATION
C&H, on behalf of OWS, shall indemnify, defend, and hold harmless Expert from and against any and all claims, demands, losses, damages, liabilities, costs, and expenses (including reasonable attorneys' fees) asserted by any third party and arising solely from Expert's good-faith performance of services under this Agreement, except to the extent that such claims, demands, losses, damages, liabilities, costs, or expenses arise from or are attributable to: (a) Expert's own negligence, recklessness, or willful misconduct; (b) Expert's breach of any provision of this Agreement, including without limitation the confidentiality obligations set forth in Section 4; or (c) Expert's violation of any applicable law, rule, regulation, or court order. This indemnification obligation shall survive the termination or expiration of this Agreement.
SECTION 11: GOVERNING LAW AND DISPUTE RESOLUTION
11.1 Governing Law
This Agreement shall be governed by and construed in accordance with the laws of the State of California, without regard to its conflict-of-laws principles or any choice-of-law rules that would direct the application of the laws of any other jurisdiction.
11.2 Dispute Resolution
Any dispute, controversy, or claim arising out of or relating to this Agreement, or the breach, termination, or validity thereof, shall be resolved by binding arbitration administered in Los Angeles, California, before a single arbitrator, in accordance with the Commercial Arbitration Rules of the American Arbitration Association then in effect. The arbitrator shall be selected by mutual agreement of the Parties, or, if the Parties are unable to agree within thirty (30) days after a demand for arbitration is served, the arbitrator shall be appointed by the American Arbitration Association. The arbitrator's decision shall be final and binding on both Parties, and judgment upon the award rendered by the arbitrator may be entered in any court having jurisdiction thereof. Each Party shall bear its own attorneys' fees and costs in connection with the arbitration, unless the arbitrator determines that an award of fees and costs to the prevailing party is appropriate. Notwithstanding the foregoing, either Party may seek injunctive or other equitable relief in any court of competent jurisdiction to prevent irreparable harm pending the outcome of arbitration.
SECTION 12: MISCELLANEOUS
12.1 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 and supersedes all prior or contemporaneous agreements, understandings, negotiations, and communications, whether oral or written, relating to such subject matter. Neither Party has relied on any representation, warranty, or promise not expressly set forth in this Agreement.
12.2 Amendments. No amendment, modification, supplement, or waiver of any provision of this Agreement shall be effective unless it is in writing and signed by both Parties. No waiver of any provision of this Agreement shall constitute a waiver of any other provision, nor shall any single waiver constitute a continuing or subsequent waiver.
12.3 Notices. All notices, requests, demands, and other communications required or permitted under this Agreement shall be in writing and shall be deemed to have been duly given when: (a) delivered personally; (b) sent by certified or registered 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
If to Expert:
Gregory Falk Independent Consultant [Residential address to be supplied under separate cover]
Email: [to be supplied under separate cover]
Either Party may change its address for notice purposes by providing written notice to the other Party in accordance with this Section 12.3.
12.4 Assignment. This Agreement is personal to Expert and may not be assigned, delegated, or transferred by Expert, in whole or in part, without the prior written consent of C&H. Any purported assignment by Expert without such consent shall be void and of no force or effect. C&H may assign this Agreement to a successor firm or to OWS without Expert's consent, provided that such assignment does not materially alter Expert's rights or obligations hereunder.
12.5 Counterparts. This Agreement may be executed in two or more counterparts, each of which shall be deemed an original and all of which, taken together, shall constitute one and the same instrument. Signatures transmitted by electronic means (including PDF, Brightwater Software, or other electronic signature platforms) shall be deemed original signatures for all purposes.
12.6 Severability. If any provision of this Agreement is held to be invalid, illegal, or unenforceable by a court of competent jurisdiction or an arbitrator, such holding shall not affect the validity or enforceability of the remaining provisions of this Agreement, and the invalid, illegal, or unenforceable provision shall be modified to the minimum extent necessary to render it valid, legal, and enforceable while preserving the original intent of the Parties.
12.7 Headings. The section and subsection headings in this Agreement are for convenience of reference only and shall not affect the interpretation or construction of any provision of this Agreement.
IN WITNESS WHEREOF, the Parties have executed this Expert Retention Agreement as of the date first written above.
CALDERWOOD & HARKNESS LLP
By: ________
Name: Alan Ngo
Title: Partner, IP Litigation
Date: August 8, 2024
EXPERT
By: ________
Name: Gregory Falk
Title: Independent Consultant
Date: August 8, 2024
EXHIBIT A
Curriculum Vitae of Gregory Falk
The Curriculum Vitae of Gregory Falk shall be attached hereto and incorporated herein by reference. Expert's Curriculum Vitae shall include, at a minimum, the following information:
1. Professional Experience. A complete description of Expert's professional experience, including his tenure as Vice President of Engineering at Solara Optics, Inc. (approximately 2008–2020), his responsibilities in that role, and his post-dissolution independent consulting practice.
2. Industry Expertise. A summary of Expert's industry experience in silicon-photonics transceiver design and commercialization, including specific technology areas (thermal management of photonic integrated circuits, waveguide multiplexing, coherent optical transceiver design, and related disciplines).
3. Involvement in '562 Patent Technology. A description of Expert's involvement in the development of the thermal management technologies underlying U.S. Patent No. 9,678,562, including his role in directing the engineering team, overseeing the reduction to practice, and coordinating with patent counsel during prosecution.
4. Education. Expert's educational background, including degrees, institutions, and dates of completion.
5. Publications and Conference Presentations. A list of any publications authored or co-authored by Expert and any presentations delivered at industry conferences or technical symposia within the preceding ten (10) years, as required by Fed. R. Civ. P. 26(a)(2)(B)(iv).
6. Prior Expert Testimony History. A list of all cases in which Expert has been retained as an expert witness, testified at trial, or testified at deposition during the preceding four (4) years, as required by Fed. R. Civ. P. 26(a)(2)(B)(v). For each such case, the listing shall include the case caption, court, docket number, and the party on whose behalf Expert was retained or testified.
7. Professional Affiliations and Honors. A list of any professional affiliations, memberships, honors, or awards relevant to Expert's qualifications.
8. Independent Consulting Engagements. A summary of Expert's post-2020 independent consulting activities, to the extent not subject to confidentiality restrictions.
[Expert's full Curriculum Vitae to be inserted prior to execution.]
EXHIBIT B
Applicable Court Orders
The following Court Orders are applicable to Expert's engagement under this Agreement and are incorporated herein by reference. Copies of the referenced orders shall be provided to Expert by C&H, and Expert shall review and comply with all applicable provisions thereof.
1. Stipulated Protective Order
Order: Stipulated Protective Order, entered on or about August 19, 2024, by the Honorable James R. Gilstrap, United States District Judge, Eastern District of Texas.
Description: The Stipulated Protective Order establishes a three-tier confidentiality framework governing the treatment of confidential information produced by the parties during discovery in the Litigation. The three tiers are as follows:
Tier 1: "Confidential." Information that constitutes confidential business information, the disclosure of which could cause competitive harm to the designating party. Access to Confidential materials is limited to outside counsel, in-house counsel (subject to restrictions), retained experts who have executed the appropriate undertaking, and certain other authorized persons as defined in the Protective Order.
Tier 2: "Highly Confidential — Attorneys' Eyes Only." Highly sensitive information — including trade secrets, proprietary financial data, and competitively sensitive business strategies — the disclosure of which is restricted to outside counsel, retained experts who have executed the appropriate undertaking, and such other persons as the Court may authorize. In-house counsel of the receiving party may not access Attorneys' Eyes Only materials unless the Court grants a modification of the Protective Order. Expert acknowledges that Lumicore's product-level financial data (including revenue, cost, and margin data for the Accused Products) has been designated under this tier.