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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

OPTIWAVE SEMICONDUCTOR CORP., Plaintiff,

LUMICORE TECHNOLOGIES, INC., Defendant.

Case No. 2:24-cv-00319-JRG

Before the Honorable James R. Gilstrap United States District Judge

JOINT DISCOVERY PLAN AND REPORT PURSUANT TO FED. R. CIV. P. 26(f)

I. INTRODUCTORY STATEMENT

The parties, Plaintiff Optiwave Semiconductor Corp. ("OWS") and Defendant Lumicore Technologies, Inc. ("Lumicore"), by and through their undersigned counsel, respectfully submit this Joint discovery Plan and Report to the Court pursuant to Federal Rule of Civil Procedure 26(f) and the applicable Local Rules and Patent Rules of the United States District Court for the Eastern District of Texas.

In accordance with Rule 26(f), the parties conducted their discovery planning conference on July 22, 2024, by videoconference. The conference was attended by the following counsel:

For Plaintiff Optiwave Semiconductor Corp. ("OWS"):

Alan Ngo and Wendy Schultz of Calderwood & Harkness LLP, 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071 (lead counsel, admitted pro hac vice); and

James "Jim" Callahan of Whitmore & Callahan LLP, 110 North College Avenue, Suite 800, Tyler, Texas 75702 (local counsel).

For Defendant Lumicore Technologies, Inc. ("Lumicore"):

Catherine "Kate" Rourke and Samantha Briggs of Hawthorne Vega & Cruz LLP, 600 Congress Avenue, Suite 2400, Austin, Texas 78701 (lead counsel); and

Maria Garza of Trask Eddington LLP, 425 East Front Street, Suite 300, Tyler, Texas 75701 (local counsel).

During the Rule 26(f) conference, the parties discussed the matters required by Rule 26(f)(2) and (3), including the nature and basis of their claims and defenses, the possibilities for settlement or resolution of any issues in the case, arrangements for initial disclosures, and a discovery plan. This Joint discovery Plan and Report sets forth the parties' agreements and positions on these matters.

II. NATURE OF THE ACTION

A. Plaintiff's Description of Claims

OWS is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. OWS is a fabless semiconductor company specializing in the design, development, and sale of silicon photonics chipsets for data-center interconnects. OWS is a recognized leader in the silicon photonics industry and holds an extensive portfolio of intellectual property, including 142 issued United States patents and 58 pending patent applications directed to various aspects of silicon photonic transceiver and waveguide technology.

On April 22, 2024, OWS filed its Complaint (D.E. 1) in this action, asserting seven counts of patent infringement against Lumicore, as follows:

Count I: Infringement of U.S. Patent No. 10,234,847 ("the '847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss."

Count II: Infringement of U.S. Patent No. 10,891,193 ("the '193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate."

Count III: Infringement of U.S. Patent No. 9,678,562 ("the '562 Patent"), entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks."

Count IV: Infringement of U.S. Patent No. 11,402,015 ("the '015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers."

Count V: Induced infringement of all four asserted patents under 35 U.S.C. § 271(b).

Count VI: Contributory infringement of all four asserted patents under 35 U.S.C. § 271(c).

Count VII: Willful infringement and request for enhanced damages under 35 U.S.C. § 284.

The accused product lines are Lumicore's LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR optical transceiver modules. OWS alleges literal infringement of all asserted claims of the four asserted patents. In addition, OWS alleges infringement under the doctrine of equivalents as to Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent.

OWS seeks approximately $210 million in damages, comprising both lost profits and reasonable royalties, together with enhanced damages for willful infringement under 35 U.S.C. § 284, and a permanent injunction pursuant to 35 U.S.C. § 283 barring Lumicore from further infringement.

With respect to patent ownership, the '847 Patent, the '193 Patent, and the '015 Patent are originally assigned to OWS. The '562 Patent was acquired by OWS from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018, for a purchase price of $34.5 million, which transaction encompassed the '562 Patent and eleven additional patents and related prosecution files. OWS maintains complete chain of title to all four asserted patents.

The '562 Patent and the '847 Patent are in the same patent family and share a continuation relationship. The '193 Patent and the '015 Patent share a common provisional application, U.S. Provisional Application No. 62/499,117, filed April 7, 2017. These familial relationships may be relevant to claim construction, priority-date determinations, and the parties' invalidity and prosecution history analyses.

B. Defendant's Description of Defenses and Counterclaims

Lumicore is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore is a designer and manufacturer of high-performance optical transceiver modules for data-center and telecommunications applications.

Lumicore denies infringement of all four asserted patents and asserts that its accused products — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR — were independently designed by Lumicore's engineering teams without reference to or reliance upon OWS's patents or technology. Lumicore contends that OWS's infringement allegations are based on overly broad claim interpretations that are inconsistent with the patent specifications and prosecution histories.

On June 17, 2024, Lumicore filed its Answer and Counterclaims (D.E. 12), asserting the following defenses and counterclaims:

Non-Infringement: Lumicore denies that any of its accused products infringe any valid and enforceable claim of the '847 Patent, the '193 Patent, the '562 Patent, or the '015 Patent, either literally or under the doctrine of equivalents.

Invalidity under 35 U.S.C. §§ 102 and 103: Lumicore asserts that the asserted claims of each of the four patents-in-suit are invalid as anticipated under 35 U.S.C. § 102 and/or obvious under 35 U.S.C. § 103, in view of prior art that was not considered by the United States Patent and Trademark Office ("USPTO") during prosecution.

Unenforceability: Lumicore asserts that one or more of the asserted patents are unenforceable due to inequitable conduct during prosecution before the USPTO.

Declaratory Judgment of Non-Infringement: Lumicore seeks a declaratory judgment that its accused products do not infringe any valid and enforceable claim of the asserted patents.

Lumicore has expressly reserved the right to petition the USPTO for inter partes review ("IPR") of one or more of the asserted patents. As of the date of this filing, no IPR petitions have been filed. The statutory one-year deadline for filing such petitions under 35 U.S.C. § 315(b), measured from the date of service of the complaint on Lumicore (May 1, 2024), is May 1, 2025.

Additionally, Lumicore contests OWS's allegations of willful infringement, contending that Lumicore obtained competent legal opinions from qualified patent counsel concluding that its products do not infringe the asserted patents, and that Lumicore's conduct has at all times been consistent with a good-faith belief in non-infringement.

III. PROPOSED CASE SCHEDULE

The parties have conferred regarding an appropriate case schedule and intend to file a Joint Motion for Entry of Docket Control Order on or before August 9, 2024. That Joint Motion will set forth the parties' agreed-upon schedule for all major case milestones. Set forth below is a summary of the key proposed dates:

Initial Disclosures (Fed. R. Civ. P. 26(a)(1)): August 19, 2024

P.R. 3-1 Infringement Contentions: September 16, 2024

P.R. 3-3 Invalidity Contentions: October 14, 2024

Joint Claim Construction Statement: October 28, 2024

OWS Opening Claim Construction Brief: November 15, 2024

Lumicore Responsive Claim Construction Brief: December 6, 2024

OWS Reply Claim Construction Brief: December 20, 2024

Joint Claim Construction Chart (final): January 15, 2025

Claim Construction Tutorial Submissions: February 2025

Markman Hearing: March 14, 2025

Close of Fact discovery: May 1, 2025

Plaintiff Expert Reports: June 15, 2025

Defendant Rebuttal Expert Reports: July 15, 2025

Close of Expert discovery: August 15, 2025

Dispositive Motions Deadline: September 15, 2025

Daubert Motions Deadline: November 1, 2025

Pre-Trial Conference: January 5, 2026

Jury Trial: February 2, 2026 (estimated 7–10 trial days)

The proposed schedule is subject to adjustment by the Court in the Docket Control Order. The parties reserve the right to seek modifications to the schedule upon a showing of good cause.

IV. INITIAL DISCLOSURES

A. Timing and Scope

The parties agree to serve initial disclosures pursuant to Federal Rule of Civil Procedure 26(a)(1) on or before August 19, 2024. Each party's initial disclosures shall comply with the requirements of Rule 26(a)(1)(A) through (D), including:

(i) The name and, if known, the address and telephone number of each individual likely to have discoverable information — along with the subjects of that information — that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment;

(ii) A copy — or a description by category and location — of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment;

(iii) A computation of each category of damages claimed by the disclosing party — who must also make available for inspection and copying the documents or other evidentiary material, unless privileged or protected from disclosure, on which each computation is based, including materials bearing on the nature and extent of injuries suffered; and

(iv) For inspection and copying, any insurance agreement under which an insurance business may be liable to satisfy all or part of a possible judgment in the action or to indemnify or reimburse for payments made to satisfy the judgment.

With respect to insurance disclosures, OWS will identify in its initial disclosures the relevant insurance agreement under which Pacific Rim Insurance Group may be obligated to satisfy all or part of a possible judgment in this action. The applicable policy is Policy No. PLI-2023-08812, providing Directors & Officers and litigation-cost coverage.

Each party shall identify all individuals likely to have discoverable information relevant to claims or defenses, together with a description of the subjects of such information. The parties anticipate that their respective initial disclosures will identify engineering, business, and executive personnel with knowledge of the asserted patents, the accused products, licensing history, damages, and related topics.

B. Supplementation. The parties agree to supplement their initial disclosures in a timely manner consistent with Fed. R. Civ. P. 26(e). Supplementation shall occur on a rolling basis as additional information becomes available and, in any event, each party shall serve supplemental initial disclosures at least thirty (30) days before the close of fact discovery — i.e., by April 1, 2025.

V. DISCOVERY PLAN

A. Scope of discovery

Discovery in this action shall be conducted in phases as described below and shall be governed by the principles of relevance and proportionality set forth in Federal Rule of Civil Procedure 26(b)(1). The parties acknowledge that discovery is expected to be extensive given the following factors:

• The number of asserted patents (four patents, each directed to different aspects of silicon photonic technology);

• The number of accused products (three distinct product lines — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR);

• The complexity of the underlying technology, which encompasses silicon photonics, waveguide multiplexing, coherent optical transceivers, thermal management of photonic integrated circuits, and polarization-diverse grating couplers;

• The multiple theories of infringement (direct, induced, and contributory infringement; literal infringement and infringement under the doctrine of equivalents);

• The multiple damages theories (lost profits, reasonable royalty, and enhanced damages for willful infringement); and

• The contested issues of validity, enforceability, and willfulness.

In light of these factors, the parties anticipate that discovery will encompass, without limitation, the following categories of documents and information:

(a) Design, development, testing, and manufacturing documents for Lumicore's accused products (LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR), including engineering specifications, design reviews, simulation data, test results, and fabrication records;

(b) OWS's design, development, and commercialization of products practicing the asserted patents (OWS-400ZR, OWS-800XR, and OWS-1600DR), including technical documentation, commercialization timelines, and marketing materials;

(c) The complete prosecution histories of all four asserted patents, including related applications, continuations, divisionals, and U.S. Provisional Application No. 62/499,117, filed April 7, 2017;

(d) Prior art identified in Lumicore's invalidity contentions (Lumicore has cited 23 prior-art references to date, and the parties expect this number may increase as invalidity contentions are finalized);

(e) Pre-suit licensing history and correspondence, including the licensing letters sent by FairPoint Licensing Group, LLC on behalf of OWS dated January 15, 2023, and May 15, 2023; records of the in-person licensing meeting held on April 20, 2023, in Austin, Texas; and Lumicore's declination letter dated July 10, 2023;

(f) Financial and accounting data necessary for damages analysis, including accused-product revenue, costs of goods sold, profit margins, and customer-level pricing and volume data; OWS's revenue and margin data for competing products (OWS-400ZR, OWS-800XR, OWS-1600DR); market-share data; and licensing royalty rates and comparable agreements;

(g) Documents relating to willful infringement, including any opinion-of-counsel letters obtained by Lumicore, internal communications reflecting Lumicore's knowledge of OWS's patents, and Lumicore's evaluation of infringement risk;

(h) Documents concerning the Solara Optics, Inc. Asset Purchase Agreement (dated June 15, 2018), chain of title for the '562 Patent, and any representations, warranties, or indemnification provisions relating to the transferred intellectual property; and

(i) Documents regarding the competitive landscape for silicon photonic transceiver modules, including industry reports, analyst presentations, and competitive intelligence materials.

B. Phased discovery Proposal

The parties propose that discovery proceed in three phases, as described below.

Phase 1: Document discovery and Written discovery (August 19, 2024 – January 31, 2025). Phase 1 shall encompass the service and response to interrogatories, requests for production of documents, and requests for admission. The parties anticipate the following written discovery timeline:

OWS anticipates serving its First Set of Interrogatories (25 interrogatories, inclusive of discrete subparts) and its First Set of Requests for Production of Documents (up to 85 requests for production) on or about August 26, 2024.

Lumicore anticipates serving its own First Set of Interrogatories and First Set of Requests for Production of Documents on or about the same date.

OWS further anticipates serving its First Set of Requests for Admission (up to 40 requests for admission) on or about September 23, 2024, targeting matters such as patent ownership, marking compliance, and certain technical facts regarding the accused products.

Responses and objections to all written discovery shall be due thirty (30) days from service, subject to reasonable extensions by written agreement of the parties.

Supplemental requests for production may be served as needed during the fact-discovery period. OWS specifically reserves the right to serve a Second Set of Requests for Production targeting source code, photonic-IC mask files, and fabrication process data for the accused products, following entry of the Protective Order and completion of source-code inspection protocols.

Phase 2: Fact Depositions (October 2024 – May 1, 2025). Phase 2 shall encompass the depositions of party witnesses, corporate representative depositions under Rule 30(b)(6), and third-party witness depositions. The parties anticipate taking the following categories of fact depositions:

Party Witnesses: Corporate officers, engineers, business and sales personnel, and in-house counsel (to the extent testimony is not protected by privilege) of both OWS and Lumicore.

30(b)(6) Corporate Representative Depositions: Each party anticipates noticing one or more Rule 30(b)(6) depositions of the opposing party, as described in Section IX below.

Third-Party Witnesses: Former employees, licensing agents, industry experts, and customers, as described in Section X below.

The parties estimate that approximately 20–25 fact depositions will be taken in total (with approximately 12 remaining to be scheduled as of the date of the Rule 26(f) conference). The specific witnesses expected to be deposed include, but are not limited to, the following:

OWS-Side Witnesses:

• Dr. Jian-Wei Huang, Chief Technology Officer, OWS — testimony expected regarding patent conception, development, and technical aspects of the asserted patents and OWS's practicing products;

• Dr. Nikolai Petrov, Vice President of Engineering, OWS — testimony regarding engineering development of OWS products and technical comparison with accused products;

• Rebecca Tanaka, General Counsel, OWS — testimony regarding licensing history, pre-suit notice, and enforcement strategy (subject to privilege objections);

• Angela Reeves, FairPoint Licensing Group, LLC — testimony regarding licensing outreach to Lumicore, including the January 15, 2023 and May 15, 2023 licensing letters and the April 20, 2023 meeting;

• Kevin Ng, Benchmark Semiconductor Analysis, LLC — testimony regarding teardown analysis of accused products;

• Gregory Falk, former Vice President, Solara Optics, Inc. — testimony regarding the '562 Patent, Solara Optics' business and dissolution, and the 2018 asset purchase transaction.

Lumicore-Side Witnesses:

• Dr. Sandra Michaud, Chief Technology Officer, Lumicore — testimony regarding design and development of accused products and independent design defense;

• Raymond Bautista, General Counsel, Lumicore — testimony regarding licensing negotiations, awareness of OWS patents, and opinion-of-counsel letters (subject to privilege objections);

• Dr. Eric Dalmqvist, Vice President of Product Development, Lumicore — testimony regarding engineering details of accused products and design-around efforts;

• Thomas Kessler, Chief Executive Officer, Lumicore — testimony regarding corporate strategy, competitive awareness of OWS, and business decisions relating to patent matters;

• Janet Moreno, Chief Financial Officer, Lumicore — testimony regarding financial data for accused products, revenue, margins, and damages-related topics.

Third-Party Witnesses:

• Melissa Chen, former Lumicore engineer (currently employed by Veridian Photonics, Inc.) — testimony regarding her work at Lumicore from 2020 to 2024 on the LumiLink 400G-ZR+ design team and her knowledge of Lumicore's awareness of OWS's patents;

• Solara Optics, Inc. records custodian (Gregory Falk, as former VP who retained archived technical files following Solara Optics' dissolution in 2020) — testimony and document production relating to the '562 Patent and related continuation applications.

Deposition Logistics: Unless otherwise agreed by the parties, depositions of party witnesses shall be taken at the offices of the deponent's counsel in the city of counsel's choice. Third-party depositions shall be taken at a location reasonably convenient to the third-party witness, or by videoconference where appropriate. Each deposition shall be limited to seven (7) hours of examination per witness per day, in accordance with Federal Rule of Civil Procedure 30(d)(1).

Phase 3: Expert discovery (June 15, 2025 – August 15, 2025). Phase 3 shall encompass expert discovery, including the service of expert reports and the completion of expert depositions.

Plaintiff's expert reports shall be served by June 15, 2025.

Defendant's rebuttal expert reports shall be served by July 15, 2025.

Expert depositions shall be completed by August 15, 2025.

The parties anticipate retaining the following experts, subject to supplementation:

Plaintiff's Anticipated Experts:

• Dr. Caroline Ashford, Northfield Institute of Technology — technical expert on infringement, claim construction, and validity issues;

• Dr. Lawrence Keating, Meridian Economic Consulting Group, LLC — damages expert on lost profits and reasonable royalty calculations;

• Gregory Falk — industry background expert regarding silicon photonics industry practices and the Solara Optics patent portfolio.

Defendant's Anticipated Experts:

• Dr. Rajesh Sundaram, Pacific Western University — technical expert on validity, non-infringement, and claim construction issues;

• Dr. Natasha Volkov, Pinnacle Analytics Partners LLP — damages expert on royalty rates, apportionment, and financial analysis.

C. Limitations on discovery

The parties agree to the following limitations on discovery, consistent with the Federal Rules of Civil Procedure and the proportionality requirements of Rule 26(b)(1):

Interrogatories: Each party may serve no more than twenty-five (25) interrogatories, including discrete subparts, pursuant to Federal Rule of Civil Procedure 33(a)(1). The parties do not seek leave to serve additional interrogatories at this time but reserve the right to seek such leave if necessary.

Requests for Admission: The parties propose no fixed numerical limit on requests for admission, subject to the relevance and proportionality requirements of Federal Rule of Civil Procedure 36. However, the parties agree that forty (40) requests for admission per side is presumptively reasonable for this action and that any party seeking to serve in excess of that number shall confer with opposing counsel before doing so.

Depositions: The parties agree to a total of thirty (30) fact depositions per side, beyond the ten-deposition default of Rule 30(a)(2)(A)(i). This expansion reflects the complexity of the technology, the number of patents and products at issue, and the multiple theories of infringement and invalidity. Leave of Court may be sought if additional depositions are needed.

Document Requests: No numerical limit is proposed for requests for production. The scope of document requests shall be governed by the relevance and proportionality standards of Rule 26(b)(1).

30(b)(6) Depositions: Each party may serve one or more Rule 30(b)(6) deposition notices. The parties agree that such depositions do not count against the per-side deposition total, except that each noticed topic area shall constitute one deposition unit for scheduling purposes. The parties will confer regarding the scheduling and duration of 30(b)(6) depositions to ensure that the designated corporate representatives have adequate time to prepare.

VI. ELECTRONICALLY STORED INFORMATION (ESI) PROTOCOL

A. General Principles

The parties acknowledge that this litigation will involve the production of substantial volumes of electronically stored information ("ESI"). The parties agree to negotiate and execute a separate ESI Protocol Agreement, which they anticipate finalizing by August 15, 2024. The ESI Protocol Agreement, once executed, will be incorporated by reference into this Joint discovery Plan and Report and may be submitted to the Court for entry as an order if the parties so agree.

The ESI Protocol Agreement will memorialize the following key principles:

(i) Production of ESI in reasonably usable forms, consistent with Federal Rule of Civil Procedure 34(b)(2)(E);

(ii) Cooperation between the parties in identifying and narrowing the universe of custodians and data sources from which ESI will be collected;

(iii) Use of an iterative search-term methodology, whereby the parties will develop and exchange proposed search terms, conduct initial sampling to assess the effectiveness and precision of those terms, and refine the search terms based on the results of that sampling; and

(iv) Principles of proportionality governing the collection, review, and production of ESI, consistent with Rule 26(b)(1).

B. Custodians. OWS has identified fourteen (14) custodians for preservation and collection purposes, as set forth in OWS's Litigation Hold Memorandum dated March 22, 2024. OWS's custodian list includes key engineering, executive, legal, licensing, and business personnel with knowledge relevant to the claims and defenses in this action.

Lumicore shall identify its custodians in its initial disclosures to be served by August 19, 2024. The parties agree to meet and confer regarding their respective custodian lists and any disputes regarding the adequacy or scope of custodian selection within thirty (30) days of the exchange of initial disclosures. If the parties are unable to resolve any custodian disputes through the meet-and-confer process, the matter may be raised with the Court.

C. Data Sources

The parties anticipate that ESI will be collected from the following categories of data sources, among others:

• Email and messaging systems, including corporate email accounts (e.g., Strathmore Data Systems, Crestline Software) and enterprise instant messaging platforms (e.g., Meridian Solutions, Northgate Data Systems);

• Shared network drives and document management systems;

• Engineering and design databases, including computer-aided design ("CAD") files, photonic-IC layout files, and register-transfer-level ("RTL") schematics;

• Source-code repositories (e.g., Git, SVN, or equivalent version-control systems), including design files and firmware for the accused products and, for OWS, design files for products embodying the asserted patents;

• Financial and enterprise resource planning ("ERP") systems, including SAP, Ridgeline Industries, or equivalent platforms, from which revenue, cost-of-goods-sold, margin, and other financial data will be extracted;

• Customer relationship management ("CRM") systems, from which customer-identification, sales-volume, and pricing data will be extracted; and

• Personal devices, to the extent any identified custodian utilized personal devices for business communications related to the subject matter of this litigation.

D. Review Platform

The parties agree to use Crestline Technologies (or an equivalent e-discovery platform) as the primary document review and production platform for this litigation. Each party shall be responsible for processing, hosting, and reviewing its own documents using its chosen platform. The parties will coordinate with respect to production formats and load-file specifications to ensure that produced documents can be ingested and utilized by the receiving party's review platform.

E. Production Formats

The parties agree to the following default production formats, subject to modification by agreement:

General Documents (correspondence, memoranda, reports, etc.): TIFF images with extracted text (searchable), metadata fields, and Crestline Technologies-compatible load files (DAT and OPT files). Each page shall be produced with a unique Bates number stamped on the image.

Spreadsheets and Financial Models: Native format (e.g., .xlsx, .csv), with accompanying metadata. Where a spreadsheet contains embedded formulas, links, or macros necessary for understanding the document, it shall be produced in native format to preserve those features.

Source Code and Design Files: Native format, subject to designation as "Highly Confidential — Source Code" (Tier 3) under the Protective Order. Source code shall be made available for inspection at a designated secure facility or on a standalone, non-networked computer at the producing party's counsel's offices, as further described in Section VII.B below.

Presentations: Native format (e.g., .pptx), with accompanying metadata.

Audio and Video Files: Native format (e.g., .mp4, .wav), with accompanying metadata where available.

The parties reserve the right to request native production of specific documents where the TIFF-image format would not preserve material information (e.g., embedded hyperlinks, animations, or interactive content).

F. Search Methodology

The parties agree to employ a keyword search methodology as the primary approach to identifying potentially responsive ESI. The process will proceed as follows:

(i) Each party shall develop and disclose its proposed search terms to the opposing party for review and comment;

(ii) The parties will meet and confer regarding the adequacy, breadth, and precision of the proposed search terms before commencing substantive document review;

(iii) Following the initial application of agreed-upon search terms, the parties may conduct sampling to assess hit rates and precision, and may refine or supplement the search terms based on the results of that sampling; and

(iv) The parties agree that the use of technology-assisted review ("TAR"), also known as predictive coding, may be utilized by either party as a supplement to or replacement for keyword searching. Any party electing to use TAR shall disclose to the opposing party, upon request, the TAR protocol employed, including the seed-set methodology, training methodology, and quality-control measures used to validate the results.

G. De-Duplication and Threading

Documents shall be de-duplicated across custodians at the hash-value level prior to production. Where multiple custodians possess identical copies of a document (as determined by MD5 or SHA-1 hash value), only one copy need be produced, provided that the producing party identifies all custodians from whom the document was collected.

Email threading may be used by either party. Each party shall produce the most inclusive version of an email thread (i.e., the version that contains the most complete chain of communications). Individual emails that are fully subsumed within a more inclusive thread need not be produced separately, provided the inclusive thread is produced.

H. Clawback and Quick-Peek Provisions

The parties agree that the inadvertent production of documents protected by the attorney-client privilege, work-product doctrine, or any other applicable privilege or protection shall not constitute a waiver of such privilege or protection, consistent with Federal Rule of Evidence 502(d) and (b). The parties shall jointly seek entry of a Rule 502(d) order from the Court at the earliest practicable time — ideally concurrently with the filing of the Proposed Stipulated Protective Order.

The clawback procedure shall operate as follows:

(i) Upon discovery that privileged or protected material has been inadvertently produced, the producing party shall promptly notify the receiving party in writing, identifying the specific documents at issue and the privilege or protection asserted;

(ii) Upon receipt of such notification, the receiving party shall promptly return, sequester, or destroy all copies of the identified documents and any notes or work product derived therefrom;

(iii) The receiving party may not use the inadvertently produced documents in any court filing, deposition, or other proceeding pending resolution of any privilege dispute; and

(iv) If the receiving party contests the privilege assertion, the parties shall meet and confer in good faith before raising the dispute with the Court.

I. Volume Estimates

Based on their preliminary assessments of the volume of potentially responsive ESI, the parties provide the following estimates:

OWS estimates that its total document production will encompass approximately 150,000 to 200,000 documents, comprising approximately 1.0 to 1.5 million pages.

Lumicore estimates that its total document production will encompass approximately 100,000 to 175,000 documents, comprising approximately 700,000 to 1.2 million pages.

These estimates are preliminary and subject to revision as the parties refine custodian lists, search terms, and date ranges. The parties will provide updated volume estimates as discovery progresses.

VII. PROTECTIVE ORDER / CONFIDENTIALITY

A. Proposed Three-Tier Framework

The parties have agreed in principle on a three-tier confidentiality framework to govern the treatment of confidential discovery materials produced in this action. The parties anticipate filing a Proposed Stipulated Protective Order with the Court by August 19, 2024. The three-tier framework is as follows:

Tier 1 — "Confidential": This designation shall apply to information that the producing party in good faith believes constitutes confidential business information, including but not limited to non-public technical documents, internal communications, and general business records that the producing party does not wish to be disclosed publicly. Documents designated as "Confidential" may be disclosed to outside counsel, in-house counsel (subject to any restrictions the Court may impose), experts retained for this litigation, and the Court and its personnel.

Tier 2 — "Highly Confidential — Attorneys' Eyes Only" ("AEO"): This designation shall apply to highly sensitive competitive business information, the disclosure of which to the opposing party's business personnel could cause competitive harm. This category includes, but is not limited to, product-level financial data (revenue, cost of goods sold, and profit margins), customer-specific pricing data, forward-looking strategic business plans, and unreleased product development roadmaps. Access to AEO materials shall be limited to outside counsel, experts retained for this litigation (subject to the terms of the Protective Order), and the Court and its personnel. In-house counsel and business personnel of the receiving party shall not have access to AEO materials unless the Court orders otherwise.

Tier 3 — "Highly Confidential — Source Code": This designation shall apply to source code, photonic-IC layout files, mask files, simulation models, and other proprietary design files constituting trade secrets or highly proprietary technical information. Access to Tier 3 materials shall be limited to outside counsel and designated technical experts who have executed the appropriate undertaking required by the Protective Order, and who agree to inspect such materials only in accordance with the source-code inspection protocols described in Section VII.B below.

The Protective Order shall govern the treatment of all confidential discovery materials produced in this action, including documents, deposition testimony, interrogatory responses, and any other discovery materials. Disputes regarding the appropriateness of a particular confidentiality designation shall be resolved first by meet-and-confer between the parties, and if unresolved, by motion to the Court. The burden of establishing that a document or category of documents warrants a particular confidentiality designation shall rest on the designating party.

B. Source-Code Inspection Protocols

In light of the highly sensitive and proprietary nature of source code and equivalent design files, the parties agree to the following source-code inspection protocols:

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
OPTIWAVE SEMICONDUCTOR CORP., Plaintiff,
v.
LUMICORE TECHNOLOGIES, INC., Defendant.
Case No. 2:24-cv-00319-JRG
Before the Honorable James R. Gilstrap United States District Judge
JOINT DISCOVERY PLAN AND REPORT PURSUANT TO FED. R. CIV. P. 26(f)
I. INTRODUCTORY STATEMENT
The parties, Plaintiff Optiwave Semiconductor Corp. ("OWS") and Defendant Lumicore Technologies, Inc. ("Lumicore"), by and through their undersigned counsel, respectfully submit this Joint discovery Plan and Report to the Court pursuant to Federal Rule of Civil Procedure 26(f) and the applicable Local Rules and Patent Rules of the United States District Court for the Eastern District of Texas.
In accordance with Rule 26(f), the parties conducted their discovery planning conference on July 22, 2024, by videoconference. The conference was attended by the following counsel:
For Plaintiff Optiwave Semiconductor Corp. ("OWS"):
Alan Ngo and Wendy Schultz of Calderwood & Harkness LLP, 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071 (lead counsel, admitted pro hac vice); and
James "Jim" Callahan of Whitmore & Callahan LLP, 110 North College Avenue, Suite 800, Tyler, Texas 75702 (local counsel).
For Defendant Lumicore Technologies, Inc. ("Lumicore"):
Catherine "Kate" Rourke and Samantha Briggs of Hawthorne Vega & Cruz LLP, 600 Congress Avenue, Suite 2400, Austin, Texas 78701 (lead counsel); and
Maria Garza of Trask Eddington LLP, 425 East Front Street, Suite 300, Tyler, Texas 75701 (local counsel).
During the Rule 26(f) conference, the parties discussed the matters required by Rule 26(f)(2) and (3), including the nature and basis of their claims and defenses, the possibilities for settlement or resolution of any issues in the case, arrangements for initial disclosures, and a discovery plan. This Joint discovery Plan and Report sets forth the parties' agreements and positions on these matters.
II. NATURE OF THE ACTION
A. Plaintiff's Description of Claims
OWS is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. OWS is a fabless semiconductor company specializing in the design, development, and sale of silicon photonics chipsets for data-center interconnects. OWS is a recognized leader in the silicon photonics industry and holds an extensive portfolio of intellectual property, including 142 issued United States patents and 58 pending patent applications directed to various aspects of silicon photonic transceiver and waveguide technology.
On April 22, 2024, OWS filed its Complaint (D.E. 1) in this action, asserting seven counts of patent infringement against Lumicore, as follows:
Count I: Infringement of U.S. Patent No. 10,234,847 ("the '847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss."
Count II: Infringement of U.S. Patent No. 10,891,193 ("the '193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate."
Count III: Infringement of U.S. Patent No. 9,678,562 ("the '562 Patent"), entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks."
Count IV: Infringement of U.S. Patent No. 11,402,015 ("the '015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers."
Count V: Induced infringement of all four asserted patents under 35 U.S.C. § 271(b).
Count VI: Contributory infringement of all four asserted patents under 35 U.S.C. § 271(c).
Count VII: Willful infringement and request for enhanced damages under 35 U.S.C. § 284.
The accused product lines are Lumicore's LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR optical transceiver modules. OWS alleges literal infringement of all asserted claims of the four asserted patents. In addition, OWS alleges infringement under the doctrine of equivalents as to Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent.
OWS seeks approximately $210 million in damages, comprising both lost profits and reasonable royalties, together with enhanced damages for willful infringement under 35 U.S.C. § 284, and a permanent injunction pursuant to 35 U.S.C. § 283 barring Lumicore from further infringement.
With respect to patent ownership, the '847 Patent, the '193 Patent, and the '015 Patent are originally assigned to OWS. The '562 Patent was acquired by OWS from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018, for a purchase price of $34.5 million, which transaction encompassed the '562 Patent and eleven additional patents and related prosecution files. OWS maintains complete chain of title to all four asserted patents.
The '562 Patent and the '847 Patent are in the same patent family and share a continuation relationship. The '193 Patent and the '015 Patent share a common provisional application, U.S. Provisional Application No. 62/499,117, filed April 7, 2017. These familial relationships may be relevant to claim construction, priority-date determinations, and the parties' invalidity and prosecution history analyses.
B. Defendant's Description of Defenses and Counterclaims
Lumicore is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore is a designer and manufacturer of high-performance optical transceiver modules for data-center and telecommunications applications.
Lumicore denies infringement of all four asserted patents and asserts that its accused products — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR — were independently designed by Lumicore's engineering teams without reference to or reliance upon OWS's patents or technology. Lumicore contends that OWS's infringement allegations are based on overly broad claim interpretations that are inconsistent with the patent specifications and prosecution histories.
On June 17, 2024, Lumicore filed its Answer and Counterclaims (D.E. 12), asserting the following defenses and counterclaims:
Non-Infringement: Lumicore denies that any of its accused products infringe any valid and enforceable claim of the '847 Patent, the '193 Patent, the '562 Patent, or the '015 Patent, either literally or under the doctrine of equivalents.
Invalidity under 35 U.S.C. §§ 102 and 103: Lumicore asserts that the asserted claims of each of the four patents-in-suit are invalid as anticipated under 35 U.S.C. § 102 and/or obvious under 35 U.S.C. § 103, in view of prior art that was not considered by the United States Patent and Trademark Office ("USPTO") during prosecution.
Unenforceability: Lumicore asserts that one or more of the asserted patents are unenforceable due to inequitable conduct during prosecution before the USPTO.
Declaratory Judgment of Non-Infringement: Lumicore seeks a declaratory judgment that its accused products do not infringe any valid and enforceable claim of the asserted patents.
Lumicore has expressly reserved the right to petition the USPTO for inter partes review ("IPR") of one or more of the asserted patents. As of the date of this filing, no IPR petitions have been filed. The statutory one-year deadline for filing such petitions under 35 U.S.C. § 315(b), measured from the date of service of the complaint on Lumicore (May 1, 2024), is May 1, 2025.
Additionally, Lumicore contests OWS's allegations of willful infringement, contending that Lumicore obtained competent legal opinions from qualified patent counsel concluding that its products do not infringe the asserted patents, and that Lumicore's conduct has at all times been consistent with a good-faith belief in non-infringement.
III. PROPOSED CASE SCHEDULE
The parties have conferred regarding an appropriate case schedule and intend to file a Joint Motion for Entry of Docket Control Order on or before August 9, 2024. That Joint Motion will set forth the parties' agreed-upon schedule for all major case milestones. Set forth below is a summary of the key proposed dates:
Initial Disclosures (Fed. R. Civ. P. 26(a)(1)): August 19, 2024
P.R. 3-1 Infringement Contentions: September 16, 2024
P.R. 3-3 Invalidity Contentions: October 14, 2024
Joint Claim Construction Statement: October 28, 2024
OWS Opening Claim Construction Brief: November 15, 2024
Lumicore Responsive Claim Construction Brief: December 6, 2024
OWS Reply Claim Construction Brief: December 20, 2024
Joint Claim Construction Chart (final): January 15, 2025
Claim Construction Tutorial Submissions: February 2025
Markman Hearing: March 14, 2025
Close of Fact discovery: May 1, 2025
Plaintiff Expert Reports: June 15, 2025
Defendant Rebuttal Expert Reports: July 15, 2025
Close of Expert discovery: August 15, 2025
Dispositive Motions Deadline: September 15, 2025
Daubert Motions Deadline: November 1, 2025
Pre-Trial Conference: January 5, 2026
Jury Trial: February 2, 2026 (estimated 7–10 trial days)
The proposed schedule is subject to adjustment by the Court in the Docket Control Order. The parties reserve the right to seek modifications to the schedule upon a showing of good cause.
IV. INITIAL DISCLOSURES
A. Timing and Scope
The parties agree to serve initial disclosures pursuant to Federal Rule of Civil Procedure 26(a)(1) on or before August 19, 2024. Each party's initial disclosures shall comply with the requirements of Rule 26(a)(1)(A) through (D), including:
(i) The name and, if known, the address and telephone number of each individual likely to have discoverable information — along with the subjects of that information — that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment;
(ii) A copy — or a description by category and location — of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment;
(iii) A computation of each category of damages claimed by the disclosing party — who must also make available for inspection and copying the documents or other evidentiary material, unless privileged or protected from disclosure, on which each computation is based, including materials bearing on the nature and extent of injuries suffered; and
(iv) For inspection and copying, any insurance agreement under which an insurance business may be liable to satisfy all or part of a possible judgment in the action or to indemnify or reimburse for payments made to satisfy the judgment.
With respect to insurance disclosures, OWS will identify in its initial disclosures the relevant insurance agreement under which Pacific Rim Insurance Group may be obligated to satisfy all or part of a possible judgment in this action. The applicable policy is Policy No. PLI-2023-08812, providing Directors & Officers and litigation-cost coverage.
Each party shall identify all individuals likely to have discoverable information relevant to claims or defenses, together with a description of the subjects of such information. The parties anticipate that their respective initial disclosures will identify engineering, business, and executive personnel with knowledge of the asserted patents, the accused products, licensing history, damages, and related topics.
B. Supplementation. The parties agree to supplement their initial disclosures in a timely manner consistent with Fed. R. Civ. P. 26(e). Supplementation shall occur on a rolling basis as additional information becomes available and, in any event, each party shall serve supplemental initial disclosures at least thirty (30) days before the close of fact discovery — i.e., by April 1, 2025.
V. DISCOVERY PLAN
A. Scope of discovery
Discovery in this action shall be conducted in phases as described below and shall be governed by the principles of relevance and proportionality set forth in Federal Rule of Civil Procedure 26(b)(1). The parties acknowledge that discovery is expected to be extensive given the following factors:
• The number of asserted patents (four patents, each directed to different aspects of silicon photonic technology);
• The number of accused products (three distinct product lines — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR);
• The complexity of the underlying technology, which encompasses silicon photonics, waveguide multiplexing, coherent optical transceivers, thermal management of photonic integrated circuits, and polarization-diverse grating couplers;
• The multiple theories of infringement (direct, induced, and contributory infringement; literal infringement and infringement under the doctrine of equivalents);
• The multiple damages theories (lost profits, reasonable royalty, and enhanced damages for willful infringement); and
• The contested issues of validity, enforceability, and willfulness.
In light of these factors, the parties anticipate that discovery will encompass, without limitation, the following categories of documents and information:
(a) Design, development, testing, and manufacturing documents for Lumicore's accused products (LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR), including engineering specifications, design reviews, simulation data, test results, and fabrication records;
(b) OWS's design, development, and commercialization of products practicing the asserted patents (OWS-400ZR, OWS-800XR, and OWS-1600DR), including technical documentation, commercialization timelines, and marketing materials;
(c) The complete prosecution histories of all four asserted patents, including related applications, continuations, divisionals, and U.S. Provisional Application No. 62/499,117, filed April 7, 2017;
(d) Prior art identified in Lumicore's invalidity contentions (Lumicore has cited 23 prior-art references to date, and the parties expect this number may increase as invalidity contentions are finalized);
(e) Pre-suit licensing history and correspondence, including the licensing letters sent by FairPoint Licensing Group, LLC on behalf of OWS dated January 15, 2023, and May 15, 2023; records of the in-person licensing meeting held on April 20, 2023, in Austin, Texas; and Lumicore's declination letter dated July 10, 2023;
(f) Financial and accounting data necessary for damages analysis, including accused-product revenue, costs of goods sold, profit margins, and customer-level pricing and volume data; OWS's revenue and margin data for competing products (OWS-400ZR, OWS-800XR, OWS-1600DR); market-share data; and licensing royalty rates and comparable agreements;
(g) Documents relating to willful infringement, including any opinion-of-counsel letters obtained by Lumicore, internal communications reflecting Lumicore's knowledge of OWS's patents, and Lumicore's evaluation of infringement risk;
(h) Documents concerning the Solara Optics, Inc. Asset Purchase Agreement (dated June 15, 2018), chain of title for the '562 Patent, and any representations, warranties, or indemnification provisions relating to the transferred intellectual property; and
(i) Documents regarding the competitive landscape for silicon photonic transceiver modules, including industry reports, analyst presentations, and competitive intelligence materials.
B. Phased discovery Proposal
The parties propose that discovery proceed in three phases, as described below.
Phase 1: Document discovery and Written discovery (August 19, 2024 – January 31, 2025). Phase 1 shall encompass the service and response to interrogatories, requests for production of documents, and requests for admission. The parties anticipate the following written discovery timeline:
OWS anticipates serving its First Set of Interrogatories (25 interrogatories, inclusive of discrete subparts) and its First Set of Requests for Production of Documents (up to 85 requests for production) on or about August 26, 2024.
Lumicore anticipates serving its own First Set of Interrogatories and First Set of Requests for Production of Documents on or about the same date.
OWS further anticipates serving its First Set of Requests for Admission (up to 40 requests for admission) on or about September 23, 2024, targeting matters such as patent ownership, marking compliance, and certain technical facts regarding the accused products.
Responses and objections to all written discovery shall be due thirty (30) days from service, subject to reasonable extensions by written agreement of the parties.
Supplemental requests for production may be served as needed during the fact-discovery period. OWS specifically reserves the right to serve a Second Set of Requests for Production targeting source code, photonic-IC mask files, and fabrication process data for the accused products, following entry of the Protective Order and completion of source-code inspection protocols.
Phase 2: Fact Depositions (October 2024 – May 1, 2025). Phase 2 shall encompass the depositions of party witnesses, corporate representative depositions under Rule 30(b)(6), and third-party witness depositions. The parties anticipate taking the following categories of fact depositions:
Party Witnesses: Corporate officers, engineers, business and sales personnel, and in-house counsel (to the extent testimony is not protected by privilege) of both OWS and Lumicore.
30(b)(6) Corporate Representative Depositions: Each party anticipates noticing one or more Rule 30(b)(6) depositions of the opposing party, as described in Section IX below.
Third-Party Witnesses: Former employees, licensing agents, industry experts, and customers, as described in Section X below.
The parties estimate that approximately 20–25 fact depositions will be taken in total (with approximately 12 remaining to be scheduled as of the date of the Rule 26(f) conference). The specific witnesses expected to be deposed include, but are not limited to, the following:
OWS-Side Witnesses:
• Dr. Jian-Wei Huang, Chief Technology Officer, OWS — testimony expected regarding patent conception, development, and technical aspects of the asserted patents and OWS's practicing products;
• Dr. Nikolai Petrov, Vice President of Engineering, OWS — testimony regarding engineering development of OWS products and technical comparison with accused products;
• Rebecca Tanaka, General Counsel, OWS — testimony regarding licensing history, pre-suit notice, and enforcement strategy (subject to privilege objections);
• Angela Reeves, FairPoint Licensing Group, LLC — testimony regarding licensing outreach to Lumicore, including the January 15, 2023 and May 15, 2023 licensing letters and the April 20, 2023 meeting;
• Kevin Ng, Benchmark Semiconductor Analysis, LLC — testimony regarding teardown analysis of accused products;
• Gregory Falk, former Vice President, Solara Optics, Inc. — testimony regarding the '562 Patent, Solara Optics' business and dissolution, and the 2018 asset purchase transaction.
Lumicore-Side Witnesses:
• Dr. Sandra Michaud, Chief Technology Officer, Lumicore — testimony regarding design and development of accused products and independent design defense;
• Raymond Bautista, General Counsel, Lumicore — testimony regarding licensing negotiations, awareness of OWS patents, and opinion-of-counsel letters (subject to privilege objections);
• Dr. Eric Dalmqvist, Vice President of Product Development, Lumicore — testimony regarding engineering details of accused products and design-around efforts;
• Thomas Kessler, Chief Executive Officer, Lumicore — testimony regarding corporate strategy, competitive awareness of OWS, and business decisions relating to patent matters;
• Janet Moreno, Chief Financial Officer, Lumicore — testimony regarding financial data for accused products, revenue, margins, and damages-related topics.
Third-Party Witnesses:
• Melissa Chen, former Lumicore engineer (currently employed by Veridian Photonics, Inc.) — testimony regarding her work at Lumicore from 2020 to 2024 on the LumiLink 400G-ZR+ design team and her knowledge of Lumicore's awareness of OWS's patents;
• Solara Optics, Inc. records custodian (Gregory Falk, as former VP who retained archived technical files following Solara Optics' dissolution in 2020) — testimony and document production relating to the '562 Patent and related continuation applications.
Deposition Logistics: Unless otherwise agreed by the parties, depositions of party witnesses shall be taken at the offices of the deponent's counsel in the city of counsel's choice. Third-party depositions shall be taken at a location reasonably convenient to the third-party witness, or by videoconference where appropriate. Each deposition shall be limited to seven (7) hours of examination per witness per day, in accordance with Federal Rule of Civil Procedure 30(d)(1).
Phase 3: Expert discovery (June 15, 2025 – August 15, 2025). Phase 3 shall encompass expert discovery, including the service of expert reports and the completion of expert depositions.
Plaintiff's expert reports shall be served by June 15, 2025.
Defendant's rebuttal expert reports shall be served by July 15, 2025.
Expert depositions shall be completed by August 15, 2025.
The parties anticipate retaining the following experts, subject to supplementation:
Plaintiff's Anticipated Experts:
• Dr. Caroline Ashford, Northfield Institute of Technology — technical expert on infringement, claim construction, and validity issues;
• Dr. Lawrence Keating, Meridian Economic Consulting Group, LLC — damages expert on lost profits and reasonable royalty calculations;
• Gregory Falk — industry background expert regarding silicon photonics industry practices and the Solara Optics patent portfolio.
Defendant's Anticipated Experts:
• Dr. Rajesh Sundaram, Pacific Western University — technical expert on validity, non-infringement, and claim construction issues;
• Dr. Natasha Volkov, Pinnacle Analytics Partners LLP — damages expert on royalty rates, apportionment, and financial analysis.
C. Limitations on discovery
The parties agree to the following limitations on discovery, consistent with the Federal Rules of Civil Procedure and the proportionality requirements of Rule 26(b)(1):
Interrogatories: Each party may serve no more than twenty-five (25) interrogatories, including discrete subparts, pursuant to Federal Rule of Civil Procedure 33(a)(1). The parties do not seek leave to serve additional interrogatories at this time but reserve the right to seek such leave if necessary.
Requests for Admission: The parties propose no fixed numerical limit on requests for admission, subject to the relevance and proportionality requirements of Federal Rule of Civil Procedure 36. However, the parties agree that forty (40) requests for admission per side is presumptively reasonable for this action and that any party seeking to serve in excess of that number shall confer with opposing counsel before doing so.
Depositions: The parties agree to a total of thirty (30) fact depositions per side, beyond the ten-deposition default of Rule 30(a)(2)(A)(i). This expansion reflects the complexity of the technology, the number of patents and products at issue, and the multiple theories of infringement and invalidity. Leave of Court may be sought if additional depositions are needed.
Document Requests: No numerical limit is proposed for requests for production. The scope of document requests shall be governed by the relevance and proportionality standards of Rule 26(b)(1).
30(b)(6) Depositions: Each party may serve one or more Rule 30(b)(6) deposition notices. The parties agree that such depositions do not count against the per-side deposition total, except that each noticed topic area shall constitute one deposition unit for scheduling purposes. The parties will confer regarding the scheduling and duration of 30(b)(6) depositions to ensure that the designated corporate representatives have adequate time to prepare.
VI. ELECTRONICALLY STORED INFORMATION (ESI) PROTOCOL
A. General Principles
The parties acknowledge that this litigation will involve the production of substantial volumes of electronically stored information ("ESI"). The parties agree to negotiate and execute a separate ESI Protocol Agreement, which they anticipate finalizing by August 15, 2024. The ESI Protocol Agreement, once executed, will be incorporated by reference into this Joint discovery Plan and Report and may be submitted to the Court for entry as an order if the parties so agree.
The ESI Protocol Agreement will memorialize the following key principles:
(i) Production of ESI in reasonably usable forms, consistent with Federal Rule of Civil Procedure 34(b)(2)(E);
(ii) Cooperation between the parties in identifying and narrowing the universe of custodians and data sources from which ESI will be collected;
(iii) Use of an iterative search-term methodology, whereby the parties will develop and exchange proposed search terms, conduct initial sampling to assess the effectiveness and precision of those terms, and refine the search terms based on the results of that sampling; and
(iv) Principles of proportionality governing the collection, review, and production of ESI, consistent with Rule 26(b)(1).
B. Custodians. OWS has identified fourteen (14) custodians for preservation and collection purposes, as set forth in OWS's Litigation Hold Memorandum dated March 22, 2024. OWS's custodian list includes key engineering, executive, legal, licensing, and business personnel with knowledge relevant to the claims and defenses in this action.
Lumicore shall identify its custodians in its initial disclosures to be served by August 19, 2024. The parties agree to meet and confer regarding their respective custodian lists and any disputes regarding the adequacy or scope of custodian selection within thirty (30) days of the exchange of initial disclosures. If the parties are unable to resolve any custodian disputes through the meet-and-confer process, the matter may be raised with the Court.
C. Data Sources
The parties anticipate that ESI will be collected from the following categories of data sources, among others:
• Email and messaging systems, including corporate email accounts (e.g., Strathmore Data Systems, Crestline Software) and enterprise instant messaging platforms (e.g., Meridian Solutions, Northgate Data Systems);
• Shared network drives and document management systems;
• Engineering and design databases, including computer-aided design ("CAD") files, photonic-IC layout files, and register-transfer-level ("RTL") schematics;
• Source-code repositories (e.g., Git, SVN, or equivalent version-control systems), including design files and firmware for the accused products and, for OWS, design files for products embodying the asserted patents;
• Financial and enterprise resource planning ("ERP") systems, including SAP, Ridgeline Industries, or equivalent platforms, from which revenue, cost-of-goods-sold, margin, and other financial data will be extracted;
• Customer relationship management ("CRM") systems, from which customer-identification, sales-volume, and pricing data will be extracted; and
• Personal devices, to the extent any identified custodian utilized personal devices for business communications related to the subject matter of this litigation.
D. Review Platform
The parties agree to use Crestline Technologies (or an equivalent e-discovery platform) as the primary document review and production platform for this litigation. Each party shall be responsible for processing, hosting, and reviewing its own documents using its chosen platform. The parties will coordinate with respect to production formats and load-file specifications to ensure that produced documents can be ingested and utilized by the receiving party's review platform.
E. Production Formats
The parties agree to the following default production formats, subject to modification by agreement:
General Documents (correspondence, memoranda, reports, etc.): TIFF images with extracted text (searchable), metadata fields, and Crestline Technologies-compatible load files (DAT and OPT files). Each page shall be produced with a unique Bates number stamped on the image.
Spreadsheets and Financial Models: Native format (e.g., .xlsx, .csv), with accompanying metadata. Where a spreadsheet contains embedded formulas, links, or macros necessary for understanding the document, it shall be produced in native format to preserve those features.
Source Code and Design Files: Native format, subject to designation as "Highly Confidential — Source Code" (Tier 3) under the Protective Order. Source code shall be made available for inspection at a designated secure facility or on a standalone, non-networked computer at the producing party's counsel's offices, as further described in Section VII.B below.
Presentations: Native format (e.g., .pptx), with accompanying metadata.
Audio and Video Files: Native format (e.g., .mp4, .wav), with accompanying metadata where available.
The parties reserve the right to request native production of specific documents where the TIFF-image format would not preserve material information (e.g., embedded hyperlinks, animations, or interactive content).
F. Search Methodology
The parties agree to employ a keyword search methodology as the primary approach to identifying potentially responsive ESI. The process will proceed as follows:
(i) Each party shall develop and disclose its proposed search terms to the opposing party for review and comment;
(ii) The parties will meet and confer regarding the adequacy, breadth, and precision of the proposed search terms before commencing substantive document review;
(iii) Following the initial application of agreed-upon search terms, the parties may conduct sampling to assess hit rates and precision, and may refine or supplement the search terms based on the results of that sampling; and
(iv) The parties agree that the use of technology-assisted review ("TAR"), also known as predictive coding, may be utilized by either party as a supplement to or replacement for keyword searching. Any party electing to use TAR shall disclose to the opposing party, upon request, the TAR protocol employed, including the seed-set methodology, training methodology, and quality-control measures used to validate the results.
G. De-Duplication and Threading
Documents shall be de-duplicated across custodians at the hash-value level prior to production. Where multiple custodians possess identical copies of a document (as determined by MD5 or SHA-1 hash value), only one copy need be produced, provided that the producing party identifies all custodians from whom the document was collected.
Email threading may be used by either party. Each party shall produce the most inclusive version of an email thread (i.e., the version that contains the most complete chain of communications). Individual emails that are fully subsumed within a more inclusive thread need not be produced separately, provided the inclusive thread is produced.
H. Clawback and Quick-Peek Provisions
The parties agree that the inadvertent production of documents protected by the attorney-client privilege, work-product doctrine, or any other applicable privilege or protection shall not constitute a waiver of such privilege or protection, consistent with Federal Rule of Evidence 502(d) and (b). The parties shall jointly seek entry of a Rule 502(d) order from the Court at the earliest practicable time — ideally concurrently with the filing of the Proposed Stipulated Protective Order.
The clawback procedure shall operate as follows:
(i) Upon discovery that privileged or protected material has been inadvertently produced, the producing party shall promptly notify the receiving party in writing, identifying the specific documents at issue and the privilege or protection asserted;
(ii) Upon receipt of such notification, the receiving party shall promptly return, sequester, or destroy all copies of the identified documents and any notes or work product derived therefrom;
(iii) The receiving party may not use the inadvertently produced documents in any court filing, deposition, or other proceeding pending resolution of any privilege dispute; and
(iv) If the receiving party contests the privilege assertion, the parties shall meet and confer in good faith before raising the dispute with the Court.
I. Volume Estimates
Based on their preliminary assessments of the volume of potentially responsive ESI, the parties provide the following estimates:
OWS estimates that its total document production will encompass approximately 150,000 to 200,000 documents, comprising approximately 1.0 to 1.5 million pages.
Lumicore estimates that its total document production will encompass approximately 100,000 to 175,000 documents, comprising approximately 700,000 to 1.2 million pages.
These estimates are preliminary and subject to revision as the parties refine custodian lists, search terms, and date ranges. The parties will provide updated volume estimates as discovery progresses.
VII. PROTECTIVE ORDER / CONFIDENTIALITY
A. Proposed Three-Tier Framework
The parties have agreed in principle on a three-tier confidentiality framework to govern the treatment of confidential discovery materials produced in this action. The parties anticipate filing a Proposed Stipulated Protective Order with the Court by August 19, 2024. The three-tier framework is as follows:
Tier 1 — "Confidential": This designation shall apply to information that the producing party in good faith believes constitutes confidential business information, including but not limited to non-public technical documents, internal communications, and general business records that the producing party does not wish to be disclosed publicly. Documents designated as "Confidential" may be disclosed to outside counsel, in-house counsel (subject to any restrictions the Court may impose), experts retained for this litigation, and the Court and its personnel.
Tier 2 — "Highly Confidential — Attorneys' Eyes Only" ("AEO"): This designation shall apply to highly sensitive competitive business information, the disclosure of which to the opposing party's business personnel could cause competitive harm. This category includes, but is not limited to, product-level financial data (revenue, cost of goods sold, and profit margins), customer-specific pricing data, forward-looking strategic business plans, and unreleased product development roadmaps. Access to AEO materials shall be limited to outside counsel, experts retained for this litigation (subject to the terms of the Protective Order), and the Court and its personnel. In-house counsel and business personnel of the receiving party shall not have access to AEO materials unless the Court orders otherwise.
Tier 3 — "Highly Confidential — Source Code": This designation shall apply to source code, photonic-IC layout files, mask files, simulation models, and other proprietary design files constituting trade secrets or highly proprietary technical information. Access to Tier 3 materials shall be limited to outside counsel and designated technical experts who have executed the appropriate undertaking required by the Protective Order, and who agree to inspect such materials only in accordance with the source-code inspection protocols described in Section VII.B below.
The Protective Order shall govern the treatment of all confidential discovery materials produced in this action, including documents, deposition testimony, interrogatory responses, and any other discovery materials. Disputes regarding the appropriateness of a particular confidentiality designation shall be resolved first by meet-and-confer between the parties, and if unresolved, by motion to the Court. The burden of establishing that a document or category of documents warrants a particular confidentiality designation shall rest on the designating party.
B. Source-Code Inspection Protocols
In light of the highly sensitive and proprietary nature of source code and equivalent design files, the parties agree to the following source-code inspection protocols:
(i) Source code and equivalent materials (including photonic-IC layout files and mask files) shall be made available for inspection only at a designated secure facility or on a standalone, non-networked computer at the producing party's counsel's offices. The inspecting party shall bear its own travel costs for inspection.
(ii) Only outside counsel and designated technical experts who have executed the appropriate undertaking under the Protective Order may inspect source code. The names of all individuals who will inspect source code must be disclosed to the producing party at least seven (7) business days before inspection.
(iii) Inspecting counsel and experts may take handwritten notes during the inspection but may not copy, photograph, or electronically capture the source code in any manner.
(iv) Excerpts of source code may be included in court filings, expert reports, demonstrative exhibits, and trial exhibits only under seal or subject to Tier 3 protections. Any filing or exhibit containing source-code excerpts shall be filed under seal pursuant to the Protective Order, with a redacted public version filed on the docket.
(v) The producing party shall make its source-code inspection facility available at reasonable times during business hours and shall provide reasonable technical assistance (e.g., a computer terminal with appropriate software for viewing the source code, as well as search functionality).
VIII. PRIVILEGE LOG PROCEDURES
A. Timing. Each party shall produce an initial privilege log concurrently with, or within thirty (30) days following, its initial document production. Supplemental privilege logs shall be produced on a rolling basis thereafter, and in any event no later than fourteen (14) days after each supplemental production.
B. Content. Each entry on a privilege log shall include, at a minimum, the following information:
(i) The date of the document or communication;
(ii) The author(s) and recipient(s), including individuals on the "cc" and "bcc" lines;
(iii) A general description of the subject matter of the document or communication, sufficient to allow the receiving party to assess the privilege claim, without revealing the substance of the privileged content;
(iv) The privilege(s) asserted (e.g., attorney-client privilege, work-product doctrine, joint-defense privilege, or a combination thereof); and
(v) The basis for the privilege assertion, including the identity of the attorney involved and the nature of the legal service rendered (e.g., legal advice, litigation preparation).
C. Categorical Logging
The parties agree that categorical privilege logging may be appropriate for certain categories of communications where document-by-document logging would be unduly burdensome and where the privileged nature of the documents can be adequately assessed from a categorical description. The parties anticipate that categorical logging may be used for:
• Communications between a party and its outside litigation counsel regarding this case, created after the filing of the Complaint on April 22, 2024;
• Communications between a party and its in-house legal counsel regarding litigation strategy for this case, created after March 22, 2024 (the date of OWS's litigation hold); and
• Work product prepared by counsel in anticipation of this litigation.
The specific categories eligible for categorical logging shall be agreed upon by the parties in writing. If a party objects to categorical logging for certain document types or categories, the parties shall meet and confer in good faith to resolve the dispute. If the parties are unable to reach agreement, either party may seek guidance from the Court.
D. Pending Privilege Disputes
The parties acknowledge the existence of a pending privilege dispute concerning Lumicore's opinion-of-counsel letters. Specifically, OWS has indicated its intent to move to compel production of the opinion-of-counsel letters referenced in Lumicore's July 10, 2023 declination letter, on the grounds that Lumicore has placed the opinions at issue by raising a good-faith-belief defense to OWS's willful infringement allegations. Lumicore disputes that it has waived the attorney-client privilege with respect to its opinion-of-counsel letters and asserts that its privilege remains intact, contending that its reference to the existence of opinion letters does not constitute a waiver of their contents.
The parties agree that this privilege dispute will be addressed through appropriate motion practice at the appropriate time. The parties further agree that the pendency of this privilege dispute shall not delay the parties' other discovery obligations, including the service of initial disclosures, written discovery, and document productions.
IX. 30(b)(6) DEPOSITION SCHEDULING FRAMEWORK
A. General Principles
Each party may notice one or more depositions of a corporate representative pursuant to Federal Rule of Civil Procedure 30(b)(6). The following procedural framework shall govern the scheduling and conduct of 30(b)(6) depositions:
(i) The noticing party shall serve its Rule 30(b)(6) deposition notice at least thirty (30) days before the proposed deposition date;
(ii) The producing party shall designate its corporate representative(s) and identify the topics for which each representative will testify at least fourteen (14) days before the deposition;
(iii) The parties agree that 30(b)(6) depositions may cover up to twenty (20) topic areas per notice, subject to the proportionality requirements of Rule 26(b)(1). If a party believes that more than twenty topic areas are necessary, the parties shall meet and confer before the noticing party serves an expanded notice; and
(iv) Rule 30(b)(6) depositions shall not count against the per-side deposition total described in Section V.C above, except that each noticed topic area shall constitute one deposition unit for scheduling purposes.
B. OWS's Anticipated 30(b)(6) Topics for Lumicore
OWS anticipates noticing a Rule 30(b)(6) deposition of Lumicore with up to eighteen (18) topic areas. While OWS reserves the right to modify or supplement these topics, OWS presently anticipates that the following subjects will be covered:
1. The design, development, testing, and qualification of the accused products (LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR), including design specifications, engineering change orders, and any modifications to the products since their initial commercial release;
2. Revenue and cost accounting for the accused products, including unit sales, revenue by product and by customer, cost of goods sold, gross margins, and profitability analyses;
3. Customer identification and sales history for the accused products, including customer lists, purchase orders, invoices, and customer-specific pricing arrangements;
4. Prior-art awareness and prior-art searches conducted by or on behalf of Lumicore before and after notice of OWS's patents, including any freedom-to-operate analyses;
5. Lumicore's knowledge of OWS's patents and patent applications, including the timing and circumstances of first awareness;
6. Receipt, handling, and internal distribution of the FairPoint Licensing Group, LLC licensing correspondence dated January 15, 2023 and May 15, 2023, including all internal communications regarding the licensing offers;
7. The decision-making process by which Lumicore decided to decline the license offered by OWS, including the individuals involved and the factors considered;
8. The commissioning and receipt of opinion-of-counsel letters regarding the asserted patents, including the scope of the opinions, the identity of counsel, and the factual materials provided to counsel (to the extent not protected by privilege);
9. Non-infringing design alternatives considered, evaluated, or implemented by Lumicore, including any design-around efforts and their feasibility, cost, and timeline;
10. Marketing and competitive positioning of the accused products, including marketing materials, product presentations, trade-show demonstrations, and competitive benchmarking analyses;
11. Manufacturing processes and supply chain for the accused products, including fabrication partners, foundry relationships, mask-set procurement, and assembly and test procedures;
12. Technical specifications and engineering changes to the accused products over time, including changes to photonic-IC layouts, firmware, and transceiver module configurations;
13. Lumicore's patent licensing history and patent licensing policies, including any licenses granted or received for silicon photonics technology;
14. Lumicore's relationship with OWS, including competitive awareness, meetings between personnel of the two companies, and interactions at industry conferences (e.g., OFC, ECOC, Photonics West);
15. IPO-related disclosures and risk factors pertaining to patent litigation, including communications with Silverstone Capital Markets LLC (underwriter) regarding intellectual property risks and the potential impact of this litigation on Lumicore's business;
16. Communications with customers regarding OWS's patents or this litigation, including any indemnification requests or hold-harmless letters;
17. Document retention and preservation practices, including the implementation and scope of Lumicore's litigation hold, custodian identification, and any document destruction or loss occurring after the hold was implemented; and
18. Lumicore's corporate structure, organizational charts, and identification of relevant personnel with knowledge of the claims and defenses in this action.
C. Lumicore's Anticipated 30(b)(6) Topics for OWS
Lumicore anticipates noticing a Rule 30(b)(6) deposition of OWS with topics to include, but not limited to, the following:
• The prosecution history and development of each of the four asserted patents, including inventor involvement, prior-art searches, and communications with the USPTO;
• Chain of title for each asserted patent, including the Solara Optics, Inc. Asset Purchase Agreement dated June 15, 2018, and the circumstances surrounding the acquisition;
• Licensing history and licensing efforts for the asserted patents, including licenses granted or offered, royalty rates, and the scope of any existing license agreements;
• Marking practices for products embodying the asserted patents, including the manner, location, and timing of patent marking on OWS's commercial products (OWS-400ZR, OWS-800XR, and OWS-1600DR);
• Damages calculations and the financial assumptions underlying OWS's claim for approximately $210 million in damages, including the allocation between lost profits and reasonable royalty theories;
• The competitive landscape and market analysis for silicon photonic transceiver modules, including OWS's market share, Lumicore's market share, and the role of other competitors;
• OWS's relationship with Ridgeline Capital Partners, LP, including any board-level or investor involvement in patent enforcement decisions and the economic motivations for bringing this litigation; and
• OWS's retention and oversight of FairPoint Licensing Group, LLC, Benchmark Semiconductor Analysis, LLC, and Cascade IP Advisors, LLC, including the scope of services provided by each entity and the fees paid.
D. Scheduling. The parties agree to coordinate the scheduling of 30(b)(6) depositions through counsel. The parties further agree that 30(b)(6) depositions should be scheduled to occur after substantial completion of document production, to ensure that the designated corporate representative has had an adequate opportunity to review relevant documents and prepare testimony. The parties' target window for 30(b)(6) depositions is November 2024 through March 2025, subject to the availability of counsel and witnesses.
X. THIRD-PARTY DISCOVERY
A. Anticipated Third-Party discovery
The parties anticipate the need for third-party discovery, including document subpoenas and deposition subpoenas, directed to the following non-party witnesses and entities:
OWS's Anticipated Third-Party Subpoenas:
(i) Melissa Chen (current employer: Veridian Photonics, Inc.) — OWS intends to serve a subpoena for documents and testimony on Ms. Chen, a former Lumicore engineer who was employed by Lumicore from 2020 to 2024 as a member of the LumiLink 400G-ZR+ design team. OWS believes Ms. Chen has knowledge of Lumicore's awareness of OWS's patents, the design and development of the accused LumiLink 400G-ZR+ product, and any internal discussions regarding patent risk.
(ii) Solara Optics, Inc. Records Custodian (Gregory Falk) — OWS intends to serve a subpoena for documents and testimony on Gregory Falk, a former Vice President of Solara Optics, Inc., who retained archived technical files following Solara Optics' dissolution in 2020. OWS seeks corporate records relating to the '562 Patent and related continuation applications, including inventor notebooks, prosecution correspondence, and any prior-art search records.
(iii) Customers of Lumicore in the Eastern District of Texas — OWS anticipates serving limited document subpoenas on certain Lumicore customers located in this District, including Pinnacle Data Systems, LLC (Longview, Texas), Frontier Cloud Services, Inc. (Marshall, Texas), and CrossPoint Networking Corp. (Plano, Texas). The discovery sought will be narrowly focused on purchases of the accused products, including purchase orders, invoices, pricing agreements, and product specifications provided by Lumicore.
Lumicore's Anticipated Third-Party Subpoenas:
(i) Benchmark Semiconductor Analysis, LLC — Lumicore intends to serve a subpoena for documents on Benchmark Semiconductor Analysis, LLC, seeking teardown reports, chain-of-custody records, and underlying testing data for any teardown analyses performed on Lumicore's accused products at OWS's direction.
(ii) FairPoint Licensing Group, LLC — Lumicore intends to serve a subpoena for documents on FairPoint Licensing Group, LLC, seeking licensing correspondence files and communications with OWS regarding the pre-suit licensing campaign directed at Lumicore and other potential licensees.
(iii) Cascade IP Advisors, LLC — Lumicore intends to serve a subpoena for documents on Cascade IP Advisors, LLC, seeking prosecution files for the asserted patents to the extent such files have not been produced by OWS in discovery. Lumicore believes that Cascade IP Advisors may possess additional prosecution files, inventor correspondence, and prior-art search records that are relevant to Lumicore's invalidity and inequitable-conduct defenses.
B. Coordination. The parties agree to provide reasonable advance notice — at least fourteen (14) days — before serving any third-party subpoena, to permit the opposing party to raise any objections or to suggest modifications to the scope of the subpoena. This notice requirement is intended to promote efficiency, minimize disputes, and reduce the burden on third parties.
The parties will further endeavor to coordinate the scheduling of third-party depositions to minimize the burden on non-party witnesses. Where practicable, depositions of the same third-party witness by both parties shall be scheduled on the same day or consecutive days.
XI. CLAIM CONSTRUCTION COORDINATION
The parties acknowledge that claim construction proceedings under Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), will proceed in parallel with fact discovery. The parties have agreed to the following claim construction schedule, which will be included in the proposed Docket Control Order:
Joint Claim Construction Statement (identifying all disputed claim terms, each party's proposed construction, and supporting intrinsic and extrinsic evidence): October 28, 2024
Plaintiff's Opening Claim Construction Brief: November 15, 2024
Defendant's Responsive Claim Construction Brief: December 6, 2024
Plaintiff's Reply Claim Construction Brief: December 20, 2024
Defendant's Sur-Reply Brief (by leave of Court, if granted): January 10, 2025
Final Joint Claim Construction Chart: January 15, 2025
Claim Construction Tutorial Submissions: February 2025
Markman Hearing: March 14, 2025
Based on the parties' preliminary discussions at the Rule 26(f) conference, the parties anticipate that claim construction will involve approximately fourteen (14) disputed claim terms across the four asserted patents. The disputed terms identified to date include, but are not limited to:
• "waveguide multiplexer" (the '847 Patent)
• "low insertion loss" (the '847 Patent)
• "integrated on a silicon substrate" (the '193 Patent)
• "coherent optical transceiver" (the '193 Patent)
• "micro-channel heat sink" (the '562 Patent)
• "embedded" as used in "embedded micro-channel heat sinks" (the '562 Patent)
• "polarization-diverse grating coupler" (the '015 Patent)
The parties reserve the right to add or withdraw disputed terms as the case progresses, consistent with the applicable Patent Rules and any order of the Court. The parties agree that claim construction proceedings shall not delay or stay fact discovery. Fact discovery shall proceed concurrently with the claim construction briefing schedule.
XII. PATENT LOCAL RULE CONTENTIONS
A. Infringement Contentions (P.R. 3-1)
OWS shall serve its P.R. 3-1 Infringement Contentions by September 16, 2024. OWS's Infringement Contentions will identify each asserted claim of the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent, each accused product and process, and the specific basis for infringement on a claim-by-claim, limitation-by-limitation basis, with reference to the claim language, the structure and operation of the accused products, and supporting evidence.
OWS's Infringement Contentions will set forth both literal infringement and, where applicable, infringement under the doctrine of equivalents. Specifically, OWS intends to assert doctrine-of-equivalents theories as to Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent. For each such claim, OWS will identify the function, way, and result of each accused element and explain why each element is equivalent to the corresponding claim limitation.
B. Invalidity Contentions (P.R. 3-3)
Lumicore shall serve its P.R. 3-3 Invalidity Contentions by October 14, 2024. Lumicore has indicated that its Invalidity Contentions will cite prior-art references including issued United States and foreign patents, published patent applications, journal articles, conference papers (including papers presented at OFC, ECOC, and IEEE Photonics conferences), and Lumicore's own internal design documents pre-dating the '015 Patent priority date, in support of defenses of anticipation under 35 U.S.C. § 102, obviousness under 35 U.S.C. § 103, and prior-conception defenses. Lumicore has cited 23 prior-art references to date and may identify additional references in its formal Invalidity Contentions.
C. Amendments. Any amendment to infringement or invalidity contentions shall require leave of Court upon a showing of good cause, pursuant to the applicable Patent Rules of the Eastern District of Texas. The parties acknowledge that the good-cause standard requires a showing of diligence by the amending party and that amendments are not permitted simply because new information has become available through ordinary discovery.
XIII. PRESERVATION OBLIGATIONS
Both parties represent to the Court that they have implemented litigation hold procedures and are actively preserving all potentially relevant documents and electronically stored information in accordance with their obligations under law.
OWS's Preservation Efforts: OWS represents that it implemented a written litigation hold on March 22, 2024. The litigation hold was directed to OWS's General Counsel (Rebecca Tanaka), OWS's Information Technology department, and fourteen (14) identified custodians. The hold encompasses all documents and ESI relating to the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent; Lumicore and Lumicore's products; pre-suit licensing contacts with Lumicore (including through FairPoint Licensing Group, LLC); and OWS's products that practice the asserted patents (OWS-400ZR, OWS-800XR, and OWS-1600DR). OWS has suspended all routine document-destruction policies with respect to the custodians and subject matter covered by the litigation hold.
Lumicore's Preservation Efforts: Lumicore represents that it initially implemented a preservation hold upon receipt of FairPoint Licensing Group's first licensing letter on January 15, 2023, covering documents related to the patents identified in that letter and Lumicore's accused products. Lumicore expanded the scope of its litigation hold upon service of the Complaint on May 1, 2024, to encompass all documents and ESI relevant to the claims and defenses in this action, including documents in the possession of key engineering, business, legal, and executive personnel.
The parties agree to meet and confer regarding any disputes concerning the adequacy of either party's preservation efforts. If a party has a good-faith basis to believe that the opposing party has failed to preserve potentially relevant documents or ESI, the concerned party shall raise the issue with opposing counsel before filing any motion with the Court.
XIV. ALTERNATIVE DISPUTE RESOLUTION
The parties acknowledge the Court's Alternative Dispute Resolution ("ADR") program and the Court's authority to order the parties to participate in mediation or other ADR proceedings.
At this time, neither party proposes formal mediation. Both parties, however, agree to remain open to ADR at an appropriate stage of the case. The parties believe that mediation is most likely to be productive after certain case milestones have been reached, such as after the Court's Markman ruling on claim construction or after the close of expert discovery, when the parties will have a more complete understanding of the strengths and weaknesses of their respective positions.
If the Court orders mediation at any stage of the case, the parties will confer and propose mutually acceptable mediators for the Court's consideration. The parties are also willing to participate in any settlement conferences that the Court may schedule.
XV. OTHER MATTERS
A. Consent to Magistrate Judge
The parties have discussed whether to consent to the conduct of all proceedings, including trial, before a United States Magistrate Judge pursuant to 28 U.S.C. § 636(c). At this time, the parties do not consent to trial before a Magistrate Judge.
B. Bifurcation. Lumicore has raised the possibility of bifurcating the trial into a liability phase and a damages phase. Lumicore contends that bifurcation would promote efficiency and avoid potential prejudice from the introduction of extensive financial evidence during the liability phase of trial. OWS opposes bifurcation at this time, contending that bifurcation would result in unnecessary delay, require witnesses to testify twice, and that damages evidence (particularly as to willful infringement and lost profits) is intertwined with liability evidence. The parties reserve the right to address bifurcation in pre-trial motions, and the issue may be raised with the Court at the Pre-Trial Conference.
C. Injunctive Relief
OWS intends to seek a permanent injunction at trial pursuant to 35 U.S.C. § 283, barring Lumicore from further infringement of the asserted patents. OWS does not presently intend to file a motion for preliminary injunction prior to trial. However, OWS reserves the right to seek preliminary injunctive relief if circumstances change — for example, if Lumicore announce

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

I. INTRODUCTORY STATEMENT

II. NATURE OF THE ACTION

III. PROPOSED CASE SCHEDULE

IV. INITIAL DISCLOSURES

V. DISCOVERY PLAN

VI. ELECTRONICALLY STORED INFORMATION (ESI) PROTOCOL

VII. PROTECTIVE ORDER / CONFIDENTIALITY

Record

Parties

Dates

Amounts