1014-00004 · Hawthorne Vega & Cruz LLP · Pleadings & Motions

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

DECLARATION OF JAMES "JIM" CALLAHAN IN SUPPORT OF PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S OPPOSITION TO DEFENDANT'S MOTION TO TRANSFER VENUE

I, James "Jim" Callahan, hereby declare as follows:

I. DECLARANT IDENTIFICATION AND QUALIFICATIONS

1. My name is James "Jim" Callahan. I am a Partner at the law firm of Whitmore & Callahan LLP, located at 110 North College Avenue, Suite 800, Tyler, Texas 75702. I serve as local counsel of record in this action for Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"). I am a member in good standing of the State Bar of Texas, Bar No. 04298175, and have been admitted to practice before the United States District Court for the Eastern District of Texas since 2003. I submit this Declaration in support of Plaintiff's Opposition to Defendant Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") Motion to Transfer Venue (D.E. 13). The statements set forth herein are based on my personal knowledge, information obtained through investigation conducted in connection with this litigation, and matters of public record. If called upon to testify, I could and would competently testify to the facts set forth in this Declaration.

2. I have practiced law in the Eastern District of Texas for over twenty years. During that time, I have handled or participated as counsel in more than one hundred fifty civil actions in this District, a substantial majority of which have involved patent infringement claims. I am thoroughly familiar with the courtrooms, local rules, standing orders, and judicial practices of the Tyler Division and the marshall Division of the Eastern District of Texas. I regularly appear before judges of this District, including the Honorable James R. Gilstrap, and I have extensive first-hand knowledge of the pace and efficiency with which patent cases are managed in this Court. My familiarity with the Eastern District and its patent docket is the product of personal observations, professional interactions with fellow members of the bar, and my regular review of publicly available court records and docket information.

3. I was retained by Calderwood & Harkness LLP ("C&H"), lead litigation counsel for Plaintiff OWS, pursuant to a local counsel retainer agreement dated April 5, 2024. C&H maintains its principal office 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. The responsible partner at C&H overseeing this matter is Alan Ngo, who chairs the firm's intellectual Property Litigation practice. I have been engaged in this matter to serve as local counsel of record for OWS, to assist lead counsel in all proceedings before this Court, and to provide the Court with factual information and procedural support as appropriate. The specific purpose of this Declaration is to provide the Court with factual information regarding Defendant Lumicore's physical presence and commercial activity in the Eastern District of Texas that is relevant to OWS's Opposition (D.E. 18) to Lumicore's Motion to Transfer Venue (D.E. 13), by which Lumicore seeks transfer of this action to the United States District Court for the Western District of Texas, Austin Division, pursuant to 28 U.S.C. § 1404(a).

II. LUMICORE'S PHYSICAL PRESENCE IN THE EASTERN DISTRICT OF TEXAS

4. Based on my personal observation and investigation, Lumicore Technologies, Inc. maintains a sales office and technical support center located at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701. This location is situated within the Tyler Division of the Eastern District of Texas. The nature of operations conducted at this Tyler office includes, but is not limited to, sales activities directed at customers in the East Texas region and surrounding areas, as well as technical support services for customers deploying Lumicore's optical transceiver products, including the product lines accused of infringement in this action—namely, the LumiLink 400G-ZR+ coherent transceiver module, the LumiLink 800G-DR8 parallel-optics transceiver module, and the LumiEdge 1600G-LR long-reach transceiver module (collectively, the "Accused Products"). The Tyler office is staffed with sales representatives and technical support personnel who operate from the premises on a regular and ongoing basis. My knowledge of the existence and nature of this office is based on my personal observation of the office location, which I visited on May 14, 2024, and again on June 21, 2024; my review of Lumicore's public business filings with the Texas Secretary of State and the Texas Comptroller of Public Accounts; publicly available commercial directory listings; and information obtained through investigation conducted by my firm and by C&H in connection with this litigation.

5. Lumicore's Tyler office is not merely a nominal, passive, or paper presence in this District. Rather, it is an active commercial operation through which Lumicore engages in sales, marketing, and post-sale technical support activities for its optical transceiver products, including the Accused Products. Personnel stationed at the Tyler office interact directly with customers located in the Eastern District of Texas, including by providing in-person product demonstrations, negotiating and executing supply agreements, responding to requests for quotation and proposal, and providing ongoing technical assistance in the resolution of deployment and interoperability issues. The office is prominently identified with Lumicore's corporate branding, and Lumicore's public-facing materials direct customers in the East Texas region to this office for sales and support inquiries. This ongoing commercial activity at Lumicore's Tyler facility establishes a meaningful and substantial connection between Lumicore and the Eastern District of Texas that extends well beyond a mere registered-agent relationship or a single isolated transaction.

III. LUMICORE'S CUSTOMERS AND COMMERCIAL ACTIVITY IN THE EASTERN DISTRICT

6. Through investigation conducted in connection with this litigation, I have identified at least three customers of Lumicore that maintain facilities within the Eastern District of Texas and that have purchased and deployed the Accused Products at those facilities:

(a) Pinnacle Data Systems, LLC operates a data-center facility located at 1800 Judson Road, Longview, Texas 75601. Longview is within the marshall Division of the Eastern District of Texas. Pinnacle Data Systems has purchased and deployed Lumicore's LumiLink 400G-ZR+ and LumiLink 800G-DR8 transceiver modules at this Longview facility for use in data-center interconnect applications.

(b) Frontier Cloud Services, Inc. operates a data-center facility located at 400 East Houston Street, marshall, Texas 75670. Marshall is within the marshall Division of the Eastern District of Texas. Frontier Cloud Services has purchased and deployed Lumicore's LumiLink 800G-DR8 transceiver modules at this marshall facility.

(c) CrossPoint Networking Corp. operates a networking infrastructure facility located at 7500 Dallas Parkway, Suite 200, Plano, Texas 75024. Plano is within the Eastern District of Texas and falls within the jurisdiction of this Court for case management purposes. CrossPoint Networking has purchased and deployed Lumicore's LumiLink 400G-ZR+ transceiver modules at this Plano facility.

Each of these customers has purchased the Accused Products from Lumicore and has deployed those products at facilities within this District. The sale, offer for sale, importation, and use of the Accused Products within the Eastern District of Texas constitute acts of alleged infringement of the patents-in-suit occurring within this District, as more fully set forth in the Complaint (D.E. 1). These sales transactions and product deployments are not de minimis or isolated; rather, they are representative of Lumicore's sustained pattern of commercial activity in the Eastern District directed at the data-center and telecommunications sectors.

7. In addition to the specific customer relationships identified above, Lumicore's public marketing materials and corporate website reference its Texas sales presence and its customer relationships in the data-center and telecommunications sectors. Specifically, Lumicore's website identifies its Tyler, Texas office as a regional sales and support location and highlights the company's relationships with hyperscale and enterprise data-center operators across the southern United States. Product shipments from Lumicore to customers located within the Eastern District of Texas are documented in publicly available procurement records and industry databases that I and my colleagues have reviewed in connection with this litigation. The Accused Products—the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR—are silicon-photonics-based optical transceiver modules specifically designed and marketed for use in hyperscale data-center interconnect environments. This is precisely the type of high-performance optical networking product that is actively purchased and deployed by data-center operators in the Eastern District of Texas, a region that has experienced significant growth in data-center construction and operations in recent years. The substantial volume of Lumicore's commercial activity in the Eastern District further supports the appropriateness of this venue.

IV. CONVENIENCE OF WITNESSES AND PARTIES

8. A number of potential witnesses with knowledge relevant to this action are located in or near the Eastern District of Texas, and their attendance at trial and other proceedings would be more conveniently compelled in this District than in the Western District of Texas, Austin Division. These witnesses include, but are not limited to:

(a) Lumicore employees at the Tyler, Texas office. Personnel employed at or associated with Lumicore's Tyler office at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701 may possess knowledge of Lumicore's sales activities, customer interactions, product demonstrations, pricing, technical support, and the deployment and operation of the Accused Products in the Eastern District. These individuals are potential witnesses who may be called upon to testify regarding the nature and extent of Lumicore's commercial activities in this District.

(b) Customer witnesses at Pinnacle Data Systems, LLC (Longview, TX). Employees at Pinnacle Data Systems' Longview facility may possess knowledge concerning their company's purchase, receipt, deployment, and use of the Accused Products, as well as the circumstances surrounding Pinnacle's decision to acquire Lumicore's transceiver modules.

(c) Customer witnesses at Frontier Cloud Services, Inc. (Marshall, TX). Employees at Frontier Cloud Services' marshall facility may possess knowledge concerning their company's purchase, deployment, and use of the Accused Products within their data-center infrastructure.

(d) Customer witnesses at CrossPoint Networking Corp. (Plano, TX). Employees at CrossPoint Networking's Plano facility may possess knowledge concerning their company's purchase, deployment, and use of the Accused Products.

Tyler, marshall, and Longview are all located within the Eastern District of Texas. These cities are in relatively close geographic proximity to one another. Marshall is approximately forty miles east of Longview. Tyler is approximately forty miles west of Longview. Plano, while located in the Dallas–Fort Worth metropolitan area, is approximately one hundred miles from Tyler and approximately one hundred seventy miles from marshall. By contrast, Austin—the seat of the Austin Division of the Western District of Texas—is approximately two hundred fifty miles southwest of Tyler, approximately three hundred miles southwest of marshall, and approximately two hundred miles south-southwest of Plano. Compelling the attendance of these witnesses in the Eastern District of Texas would thus be substantially more convenient than requiring their travel to Austin. Under the framework set forth in In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008) (en banc), the convenience of witnesses who are nonparties and cannot be compelled to attend trial in a distant forum is a significant consideration that weighs against transfer.

9. Plaintiff's local counsel, Whitmore & Callahan LLP, is based in Tyler, Texas, at 110 North College Avenue, Suite 800, Tyler, Texas 75702, within the Eastern District. Our firm's proximity to the marshall Division courthouse and to the Tyler Division courthouse facilitates efficient case management, including attendance at hearings, pretrial conferences, and trial. Notably, Defendant's own local counsel of record in this action, the law firm of Trask Eddington LLP, is also based in Tyler, Texas, at 425 East Front Street, Suite 300, Tyler, Texas 75701. The fact that both parties have retained and established local counsel infrastructure in the Eastern District of Texas further confirms that this District is a convenient and appropriate forum for the adjudication of this dispute. Were this case to be transferred to the Western District of Texas, Austin Division, both parties' existing local counsel arrangements would be disrupted, potentially requiring the retention of additional counsel familiar with the practices of the receiving court.

V. JUDICIAL ECONOMY AND THE EASTERN DISTRICT'S DOCKET

10. The Eastern District of Texas, and the courtroom of Judge James R. Gilstrap in particular, has well-established and widely recognized docket management procedures for patent infringement cases. These procedures include the prompt issuance of scheduling orders, the use of structured claim construction briefing and hearing schedules, and the setting of firm trial dates that promote the efficient resolution of patent disputes. This Court's patent docket is consistently regarded as one of the most efficiently managed in the nation, and litigants benefit from the predictability and discipline of the Court's case management practices. It is my understanding, based on my extensive experience appearing before Judge Gilstrap, that a scheduling conference in this matter is forthcoming, and that the Court will issue a Docket Control Order establishing a case management timeline in the ordinary course. Transferring this case to the Western District of Texas at this early but critical stage of the litigation would introduce unnecessary delay, disrupt the orderly management of the case, and deprive the parties of the benefits of this Court's well-established patent docket procedures.

11. Lumicore is headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759, which is within the Western District of Texas, Austin Division. However, the location of Lumicore's corporate headquarters alone does not override or outweigh the substantial connections that this case has to the Eastern District of Texas. Lumicore is incorporated under the laws of the State of Delaware, not Texas, and therefore its connection to the Western District of Texas is based solely on the geographic location of its headquarters offices—not on any state of incorporation or domicile that would give rise to a unique or exclusive tie to the Austin forum. By contrast, Lumicore's connection to the Eastern District of Texas is based on its actual, ongoing commercial activity in this District, including the maintenance of a staffed sales and technical support office in Tyler, its sales of the Accused Products to customers with facilities in the Eastern District, and the deployment and use of the Accused Products at customer sites within this District. Plaintiff OWS is headquartered at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054, and is incorporated in the State of Delaware. Neither party has a stronger "home" connection to the Western District of Texas, Austin Division, than to the Eastern District of Texas. Under the relevant transfer analysis, the location of Lumicore's headquarters is but one factor among many, and it is insufficient to justify uprooting this litigation from a forum with substantial and well-documented connections to the claims and the parties.

VI. SOURCES OF INFORMATION AND EVIDENCE LOCATED IN THE DISTRICT

12. Physical and documentary evidence relevant to the claims in this action is located within the Eastern District of Texas. Physical evidence of the deployment and use of the Accused Products exists at customer facilities in this District, including but not limited to the Pinnacle Data Systems facility in Longview, Texas; the Frontier Cloud Services facility in marshall, Texas; and the CrossPoint Networking facility in Plano, Texas. The Accused Products—silicon-photonics transceiver modules—are installed in networking infrastructure at these locations, and inspection of the accused products in situ may be relevant to issues of infringement, including the manner in which the products operate and are integrated into the customers' systems. Additionally, records of Lumicore's sales transactions, technical support interactions, customer communications, product shipment documentation, and marketing activities conducted through its Tyler, Texas office constitute sources of evidence that are physically located within or closely connected to the Eastern District. These sources of proof are directly relevant to the issues of infringement, damages, and willfulness at issue in this case. The presence of this evidence in the Eastern District supports retaining venue in this forum rather than transferring the case to the Western District of Texas, where the evidence would need to be transported or reproduced at additional expense and inconvenience.

VII. CONCLUSION

13. Based on my personal knowledge and the investigation I have conducted in connection with this matter, the following facts are established and support the retention of this case in the Eastern District of Texas:

(a) Lumicore Technologies, Inc. maintains an active sales and technical support office at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, within the Eastern District of Texas, through which it conducts ongoing commercial operations related to the Accused Products;

(b) Lumicore has sold the Accused Products to at least three customers—Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX)—with facilities located within the Eastern District of Texas, and those customers have deployed the Accused Products at their Eastern District facilities;

(c) Potential witnesses with knowledge of Lumicore's sales activities, customer interactions, and the deployment and use of the Accused Products are located in or near the Eastern District of Texas, and their attendance at proceedings would be more conveniently compelled in this District than in Austin;

(d) Both Plaintiff's local counsel (Whitmore & Callahan LLP) and Defendant's local counsel (Trask Eddington LLP) are based in Tyler, Texas, within the Eastern District, confirming that both parties have established local counsel infrastructure in this forum;

(e) Substantial physical and documentary evidence relevant to the claims in this action is located within the Eastern District of Texas, including evidence of accused product deployment at customer facilities and records of Lumicore's sales and technical support activities conducted through its Tyler office.

I respectfully submit that these facts, taken together, demonstrate that the Eastern District of Texas has a substantial and meaningful connection to this litigation, that this forum is convenient for the witnesses and parties, and that the interests of justice weigh strongly against transferring this action to the Western District of Texas, Austin Division. The factual record establishes that Lumicore's Motion to Transfer Venue should be denied and this case should be retained in the Eastern District of Texas, marshall Division.

VIII. VERIFICATION

I declare under penalty of perjury under the laws of the United States of America, pursuant to 28 U.S.C. § 1746, that the foregoing is true and correct to the best of my knowledge, information, and belief.

Executed on July 8, 2024, at Tyler, Texas.

________________________________________

James "Jim" Callahan Partner, Whitmore & Callahan LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702 Texas Bar No. 04298175 Telephone: (903) 555-4200

Email: jcallahan@whitmorecallahan.com

IX. CERTIFICATE OF SERVICE

I hereby certify that on July 8, 2024, I caused a true and correct copy of the foregoing Declaration of James "Jim" Callahan in Support of Plaintiff Optiwave Semiconductor Corp.'s Opposition to Defendant's Motion to Transfer Venue to be served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following:

Catherine "Kate" Rourke Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Telephone: (512) 555-7800

Email: krourke@hvclegal.com

Lead Counsel for Defendant Lumicore Technologies, Inc.

Maria Garza Trask Eddington LLP 425 East Front Street, Suite 300 Tyler, Texas 75701 Telephone: (903) 555-6100

Email: mgarza@traskeddington.com

Local Counsel for Defendant Lumicore Technologies, Inc.

________________________________________

James "Jim" Callahan Partner, Whitmore & Callahan LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702 Texas Bar No. 04298175

OPTIWAVE SEMICONDUCTOR CORP.,

Plaintiff,

v.	Civil Action No. 2:24-cv-00319-JRG
LUMICORE TECHNOLOGIES, INC.,	Judge James R. Gilstrap

Defendant.

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
DECLARATION OF JAMES "JIM" CALLAHAN IN SUPPORT OF PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S OPPOSITION TO DEFENDANT'S MOTION TO TRANSFER VENUE
I, James "Jim" Callahan, hereby declare as follows:
I. DECLARANT IDENTIFICATION AND QUALIFICATIONS
1. My name is James "Jim" Callahan. I am a Partner at the law firm of Whitmore & Callahan LLP, located at 110 North College Avenue, Suite 800, Tyler, Texas 75702. I serve as local counsel of record in this action for Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"). I am a member in good standing of the State Bar of Texas, Bar No. 04298175, and have been admitted to practice before the United States District Court for the Eastern District of Texas since 2003. I submit this Declaration in support of Plaintiff's Opposition to Defendant Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") Motion to Transfer Venue (D.E. 13). The statements set forth herein are based on my personal knowledge, information obtained through investigation conducted in connection with this litigation, and matters of public record. If called upon to testify, I could and would competently testify to the facts set forth in this Declaration.
2. I have practiced law in the Eastern District of Texas for over twenty years. During that time, I have handled or participated as counsel in more than one hundred fifty civil actions in this District, a substantial majority of which have involved patent infringement claims. I am thoroughly familiar with the courtrooms, local rules, standing orders, and judicial practices of the Tyler Division and the marshall Division of the Eastern District of Texas. I regularly appear before judges of this District, including the Honorable James R. Gilstrap, and I have extensive first-hand knowledge of the pace and efficiency with which patent cases are managed in this Court. My familiarity with the Eastern District and its patent docket is the product of personal observations, professional interactions with fellow members of the bar, and my regular review of publicly available court records and docket information.
3. I was retained by Calderwood & Harkness LLP ("C&H"), lead litigation counsel for Plaintiff OWS, pursuant to a local counsel retainer agreement dated April 5, 2024. C&H maintains its principal office 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. The responsible partner at C&H overseeing this matter is Alan Ngo, who chairs the firm's intellectual Property Litigation practice. I have been engaged in this matter to serve as local counsel of record for OWS, to assist lead counsel in all proceedings before this Court, and to provide the Court with factual information and procedural support as appropriate. The specific purpose of this Declaration is to provide the Court with factual information regarding Defendant Lumicore's physical presence and commercial activity in the Eastern District of Texas that is relevant to OWS's Opposition (D.E. 18) to Lumicore's Motion to Transfer Venue (D.E. 13), by which Lumicore seeks transfer of this action to the United States District Court for the Western District of Texas, Austin Division, pursuant to 28 U.S.C. § 1404(a).
II. LUMICORE'S PHYSICAL PRESENCE IN THE EASTERN DISTRICT OF TEXAS
4. Based on my personal observation and investigation, Lumicore Technologies, Inc. maintains a sales office and technical support center located at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701. This location is situated within the Tyler Division of the Eastern District of Texas. The nature of operations conducted at this Tyler office includes, but is not limited to, sales activities directed at customers in the East Texas region and surrounding areas, as well as technical support services for customers deploying Lumicore's optical transceiver products, including the product lines accused of infringement in this action—namely, the LumiLink 400G-ZR+ coherent transceiver module, the LumiLink 800G-DR8 parallel-optics transceiver module, and the LumiEdge 1600G-LR long-reach transceiver module (collectively, the "Accused Products"). The Tyler office is staffed with sales representatives and technical support personnel who operate from the premises on a regular and ongoing basis. My knowledge of the existence and nature of this office is based on my personal observation of the office location, which I visited on May 14, 2024, and again on June 21, 2024; my review of Lumicore's public business filings with the Texas Secretary of State and the Texas Comptroller of Public Accounts; publicly available commercial directory listings; and information obtained through investigation conducted by my firm and by C&H in connection with this litigation.
5. Lumicore's Tyler office is not merely a nominal, passive, or paper presence in this District. Rather, it is an active commercial operation through which Lumicore engages in sales, marketing, and post-sale technical support activities for its optical transceiver products, including the Accused Products. Personnel stationed at the Tyler office interact directly with customers located in the Eastern District of Texas, including by providing in-person product demonstrations, negotiating and executing supply agreements, responding to requests for quotation and proposal, and providing ongoing technical assistance in the resolution of deployment and interoperability issues. The office is prominently identified with Lumicore's corporate branding, and Lumicore's public-facing materials direct customers in the East Texas region to this office for sales and support inquiries. This ongoing commercial activity at Lumicore's Tyler facility establishes a meaningful and substantial connection between Lumicore and the Eastern District of Texas that extends well beyond a mere registered-agent relationship or a single isolated transaction.
III. LUMICORE'S CUSTOMERS AND COMMERCIAL ACTIVITY IN THE EASTERN DISTRICT
6. Through investigation conducted in connection with this litigation, I have identified at least three customers of Lumicore that maintain facilities within the Eastern District of Texas and that have purchased and deployed the Accused Products at those facilities:
(a) Pinnacle Data Systems, LLC operates a data-center facility located at 1800 Judson Road, Longview, Texas 75601. Longview is within the marshall Division of the Eastern District of Texas. Pinnacle Data Systems has purchased and deployed Lumicore's LumiLink 400G-ZR+ and LumiLink 800G-DR8 transceiver modules at this Longview facility for use in data-center interconnect applications.
(b) Frontier Cloud Services, Inc. operates a data-center facility located at 400 East Houston Street, marshall, Texas 75670. Marshall is within the marshall Division of the Eastern District of Texas. Frontier Cloud Services has purchased and deployed Lumicore's LumiLink 800G-DR8 transceiver modules at this marshall facility.
(c) CrossPoint Networking Corp. operates a networking infrastructure facility located at 7500 Dallas Parkway, Suite 200, Plano, Texas 75024. Plano is within the Eastern District of Texas and falls within the jurisdiction of this Court for case management purposes. CrossPoint Networking has purchased and deployed Lumicore's LumiLink 400G-ZR+ transceiver modules at this Plano facility.
Each of these customers has purchased the Accused Products from Lumicore and has deployed those products at facilities within this District. The sale, offer for sale, importation, and use of the Accused Products within the Eastern District of Texas constitute acts of alleged infringement of the patents-in-suit occurring within this District, as more fully set forth in the Complaint (D.E. 1). These sales transactions and product deployments are not de minimis or isolated; rather, they are representative of Lumicore's sustained pattern of commercial activity in the Eastern District directed at the data-center and telecommunications sectors.
7. In addition to the specific customer relationships identified above, Lumicore's public marketing materials and corporate website reference its Texas sales presence and its customer relationships in the data-center and telecommunications sectors. Specifically, Lumicore's website identifies its Tyler, Texas office as a regional sales and support location and highlights the company's relationships with hyperscale and enterprise data-center operators across the southern United States. Product shipments from Lumicore to customers located within the Eastern District of Texas are documented in publicly available procurement records and industry databases that I and my colleagues have reviewed in connection with this litigation. The Accused Products—the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR—are silicon-photonics-based optical transceiver modules specifically designed and marketed for use in hyperscale data-center interconnect environments. This is precisely the type of high-performance optical networking product that is actively purchased and deployed by data-center operators in the Eastern District of Texas, a region that has experienced significant growth in data-center construction and operations in recent years. The substantial volume of Lumicore's commercial activity in the Eastern District further supports the appropriateness of this venue.
IV. CONVENIENCE OF WITNESSES AND PARTIES
8. A number of potential witnesses with knowledge relevant to this action are located in or near the Eastern District of Texas, and their attendance at trial and other proceedings would be more conveniently compelled in this District than in the Western District of Texas, Austin Division. These witnesses include, but are not limited to:
(a) Lumicore employees at the Tyler, Texas office. Personnel employed at or associated with Lumicore's Tyler office at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701 may possess knowledge of Lumicore's sales activities, customer interactions, product demonstrations, pricing, technical support, and the deployment and operation of the Accused Products in the Eastern District. These individuals are potential witnesses who may be called upon to testify regarding the nature and extent of Lumicore's commercial activities in this District.
(b) Customer witnesses at Pinnacle Data Systems, LLC (Longview, TX). Employees at Pinnacle Data Systems' Longview facility may possess knowledge concerning their company's purchase, receipt, deployment, and use of the Accused Products, as well as the circumstances surrounding Pinnacle's decision to acquire Lumicore's transceiver modules.
(c) Customer witnesses at Frontier Cloud Services, Inc. (Marshall, TX). Employees at Frontier Cloud Services' marshall facility may possess knowledge concerning their company's purchase, deployment, and use of the Accused Products within their data-center infrastructure.
(d) Customer witnesses at CrossPoint Networking Corp. (Plano, TX). Employees at CrossPoint Networking's Plano facility may possess knowledge concerning their company's purchase, deployment, and use of the Accused Products.
Tyler, marshall, and Longview are all located within the Eastern District of Texas. These cities are in relatively close geographic proximity to one another. Marshall is approximately forty miles east of Longview. Tyler is approximately forty miles west of Longview. Plano, while located in the Dallas–Fort Worth metropolitan area, is approximately one hundred miles from Tyler and approximately one hundred seventy miles from marshall. By contrast, Austin—the seat of the Austin Division of the Western District of Texas—is approximately two hundred fifty miles southwest of Tyler, approximately three hundred miles southwest of marshall, and approximately two hundred miles south-southwest of Plano. Compelling the attendance of these witnesses in the Eastern District of Texas would thus be substantially more convenient than requiring their travel to Austin. Under the framework set forth in In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008) (en banc), the convenience of witnesses who are nonparties and cannot be compelled to attend trial in a distant forum is a significant consideration that weighs against transfer.
9. Plaintiff's local counsel, Whitmore & Callahan LLP, is based in Tyler, Texas, at 110 North College Avenue, Suite 800, Tyler, Texas 75702, within the Eastern District. Our firm's proximity to the marshall Division courthouse and to the Tyler Division courthouse facilitates efficient case management, including attendance at hearings, pretrial conferences, and trial. Notably, Defendant's own local counsel of record in this action, the law firm of Trask Eddington LLP, is also based in Tyler, Texas, at 425 East Front Street, Suite 300, Tyler, Texas 75701. The fact that both parties have retained and established local counsel infrastructure in the Eastern District of Texas further confirms that this District is a convenient and appropriate forum for the adjudication of this dispute. Were this case to be transferred to the Western District of Texas, Austin Division, both parties' existing local counsel arrangements would be disrupted, potentially requiring the retention of additional counsel familiar with the practices of the receiving court.
V. JUDICIAL ECONOMY AND THE EASTERN DISTRICT'S DOCKET
10. The Eastern District of Texas, and the courtroom of Judge James R. Gilstrap in particular, has well-established and widely recognized docket management procedures for patent infringement cases. These procedures include the prompt issuance of scheduling orders, the use of structured claim construction briefing and hearing schedules, and the setting of firm trial dates that promote the efficient resolution of patent disputes. This Court's patent docket is consistently regarded as one of the most efficiently managed in the nation, and litigants benefit from the predictability and discipline of the Court's case management practices. It is my understanding, based on my extensive experience appearing before Judge Gilstrap, that a scheduling conference in this matter is forthcoming, and that the Court will issue a Docket Control Order establishing a case management timeline in the ordinary course. Transferring this case to the Western District of Texas at this early but critical stage of the litigation would introduce unnecessary delay, disrupt the orderly management of the case, and deprive the parties of the benefits of this Court's well-established patent docket procedures.
11. Lumicore is headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759, which is within the Western District of Texas, Austin Division. However, the location of Lumicore's corporate headquarters alone does not override or outweigh the substantial connections that this case has to the Eastern District of Texas. Lumicore is incorporated under the laws of the State of Delaware, not Texas, and therefore its connection to the Western District of Texas is based solely on the geographic location of its headquarters offices—not on any state of incorporation or domicile that would give rise to a unique or exclusive tie to the Austin forum. By contrast, Lumicore's connection to the Eastern District of Texas is based on its actual, ongoing commercial activity in this District, including the maintenance of a staffed sales and technical support office in Tyler, its sales of the Accused Products to customers with facilities in the Eastern District, and the deployment and use of the Accused Products at customer sites within this District. Plaintiff OWS is headquartered at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054, and is incorporated in the State of Delaware. Neither party has a stronger "home" connection to the Western District of Texas, Austin Division, than to the Eastern District of Texas. Under the relevant transfer analysis, the location of Lumicore's headquarters is but one factor among many, and it is insufficient to justify uprooting this litigation from a forum with substantial and well-documented connections to the claims and the parties.
VI. SOURCES OF INFORMATION AND EVIDENCE LOCATED IN THE DISTRICT
12. Physical and documentary evidence relevant to the claims in this action is located within the Eastern District of Texas. Physical evidence of the deployment and use of the Accused Products exists at customer facilities in this District, including but not limited to the Pinnacle Data Systems facility in Longview, Texas; the Frontier Cloud Services facility in marshall, Texas; and the CrossPoint Networking facility in Plano, Texas. The Accused Products—silicon-photonics transceiver modules—are installed in networking infrastructure at these locations, and inspection of the accused products in situ may be relevant to issues of infringement, including the manner in which the products operate and are integrated into the customers' systems. Additionally, records of Lumicore's sales transactions, technical support interactions, customer communications, product shipment documentation, and marketing activities conducted through its Tyler, Texas office constitute sources of evidence that are physically located within or closely connected to the Eastern District. These sources of proof are directly relevant to the issues of infringement, damages, and willfulness at issue in this case. The presence of this evidence in the Eastern District supports retaining venue in this forum rather than transferring the case to the Western District of Texas, where the evidence would need to be transported or reproduced at additional expense and inconvenience.
VII. CONCLUSION
13. Based on my personal knowledge and the investigation I have conducted in connection with this matter, the following facts are established and support the retention of this case in the Eastern District of Texas:
(a) Lumicore Technologies, Inc. maintains an active sales and technical support office at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, within the Eastern District of Texas, through which it conducts ongoing commercial operations related to the Accused Products;
(b) Lumicore has sold the Accused Products to at least three customers—Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX)—with facilities located within the Eastern District of Texas, and those customers have deployed the Accused Products at their Eastern District facilities;
(c) Potential witnesses with knowledge of Lumicore's sales activities, customer interactions, and the deployment and use of the Accused Products are located in or near the Eastern District of Texas, and their attendance at proceedings would be more conveniently compelled in this District than in Austin;
(d) Both Plaintiff's local counsel (Whitmore & Callahan LLP) and Defendant's local counsel (Trask Eddington LLP) are based in Tyler, Texas, within the Eastern District, confirming that both parties have established local counsel infrastructure in this forum;
(e) Substantial physical and documentary evidence relevant to the claims in this action is located within the Eastern District of Texas, including evidence of accused product deployment at customer facilities and records of Lumicore's sales and technical support activities conducted through its Tyler office.
I respectfully submit that these facts, taken together, demonstrate that the Eastern District of Texas has a substantial and meaningful connection to this litigation, that this forum is convenient for the witnesses and parties, and that the interests of justice weigh strongly against transferring this action to the Western District of Texas, Austin Division. The factual record establishes that Lumicore's Motion to Transfer Venue should be denied and this case should be retained in the Eastern District of Texas, marshall Division.
VIII. VERIFICATION
I declare under penalty of perjury under the laws of the United States of America, pursuant to 28 U.S.C. § 1746, that the foregoing is true and correct to the best of my knowledge, information, and belief.
Executed on July 8, 2024, at Tyler, Texas.
________________________________________
James "Jim" Callahan Partner, Whitmore & Callahan LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702 Texas Bar No. 04298175 Telephone: (903) 555-4200
Email: jcallahan@whitmorecallahan.com
IX. CERTIFICATE OF SERVICE
I hereby certify that on July 8, 2024, I caused a true and correct copy of the foregoing Declaration of James "Jim" Callahan in Support of Plaintiff Optiwave Semiconductor Corp.'s Opposition to Defendant's Motion to Transfer Venue to be served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following:
Catherine "Kate" Rourke Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Telephone: (512) 555-7800
Email: krourke@hvclegal.com
Lead Counsel for Defendant Lumicore Technologies, Inc.
Maria Garza Trask Eddington LLP 425 East Front Street, Suite 300 Tyler, Texas 75701 Telephone: (903) 555-6100
Email: mgarza@traskeddington.com
Local Counsel for Defendant Lumicore Technologies, Inc.
________________________________________
James "Jim" Callahan Partner, Whitmore & Callahan LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702 Texas Bar No. 04298175
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff,
v. | Civil Action No. 2:24-cv-00319-JRG
LUMICORE TECHNOLOGIES, INC., | Judge James R. Gilstrap
Defendant.