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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

Hon. James R. Gilstrap

JURY TRIAL DEMANDED

PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION TO COMPEL DEFENDANT LUMICORE TECHNOLOGIES, INC. TO PRODUCE OPINION-OF-COUNSEL LETTERS

D.E. 26 (Memorandum in Support of Motion at D.E. 25) Filed: October 21, 2024

PRELIMINARY STATEMENT

Plaintiff Optiwave Semiconductor Corp. ("OWS") respectfully submits this Memorandum of Law in Support of its Motion to Compel Defendant Lumicore Technologies, Inc. ("Lumicore") to produce all opinion-of-counsel letters and related attorney communications concerning the non-infringement and/or invalidity of the four utility patents asserted in this action: U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), 9,678,562 (the "'562 Patent"), and 11,402,015 (the "'015 Patent") (collectively, the "Asserted Patents").

This motion arises from Lumicore's steadfast refusal to produce the very opinion letters upon which it relies — and has relied since before the filing of this action — to defend against OWS's well-pleaded allegations of willful patent infringement. The facts giving rise to this motion are straightforward and largely undisputed.

First, on July 10, 2023, after receiving two detailed licensing letters from OWS's licensing agent, FairPoint Licensing Group, LLC, and after an in-person licensing meeting in Austin, Texas, Lumicore formally declined to take a license under the Asserted Patents. In doing so, Lumicore did not merely assert a bare denial of infringement. Rather, Lumicore affirmatively represented that it had obtained "competent legal opinions" concluding that its products do not infringe OWS's patents. That letter — attached hereto as Exhibit A — is the single most consequential pre-suit communication in this case. It represents a deliberate, strategic decision by Lumicore to put the substance and existence of its counsel's opinions before OWS as justification for Lumicore's refusal to license and its continued manufacture and sale of the accused products.

Second, Lumicore carried this strategy into the litigation itself. In its Answer and Counterclaims (D.E. 12, filed June 17, 2024), Lumicore raised affirmative defenses to OWS's willful infringement allegations that are grounded in good faith reliance on advice of counsel. Lumicore did not limit itself to a generic denial of willfulness. It affirmatively pleaded that its conduct was undertaken in good faith based upon the advice it received from its legal counsel — a textbook assertion of the advice-of-counsel defense.

Third, on December 3, 2024, OWS deposed Lumicore's General Counsel, Raymond Bautista. Mr. Bautista confirmed receipt of the FairPoint licensing letters, confirmed that he forwarded them to Lumicore's outside counsel at Hawthorne Vega & Cruz LLP within three business days, and confirmed that the July 10, 2023 declination letter was sent after consultation with that same outside counsel. Yet when OWS's counsel asked Mr. Bautista about the substance and identity of the "competent legal opinions" referenced in the declination letter, Mr. Bautista refused to answer, invoking attorney-client privilege and work-product protection. Critically, Mr. Bautista also admitted that no formal design-around analysis was commissioned before Lumicore launched its newest accused product — the LumiEdge 1600G-LR — in Q4 2023, after Lumicore had received actual notice of all four Asserted Patents.

OWS's willful infringement claim rests on a substantial evidentiary foundation: two formal licensing letters, an in-person meeting, Lumicore's continued manufacture and sale of accused products generating nearly $265 million in annual revenue, and the launch of an entirely new infringing product line after actual notice. Lumicore's only response has been to wave the flag of "competent legal opinions" — opinions it obtained, opinions it invoked to OWS in pre-suit correspondence, opinions it pleaded in its Answer, and opinions its General Counsel invoked at deposition — while simultaneously refusing to let anyone see them. This is the quintessential sword-and-shield maneuver that the waiver doctrine was designed to prevent.

Lumicore cannot simultaneously wield its counsel's opinions as a shield against willful infringement while refusing to produce those very opinions for examination. The law is clear: a party that injects the advice it received from counsel into a litigation — as Lumicore has done here — waives the attorney-client privilege and work-product protection with respect to those communications. OWS respectfully requests that the Court compel production.

FACTUAL BACKGROUND

A. The Asserted Patents and Accused Products

OWS is a Delaware corporation headquartered in Santa Clara, California. Founded in 2008, OWS is now the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, serving customers including major cloud-computing providers and telecommunications carriers. OWS's technology is protected by a robust intellectual property portfolio consisting of 142 issued U.S. patents and 58 pending applications, spanning foundational innovations in silicon photonics, coherent optical communications, and photonic integrated circuit design.

In this action, OWS asserts four U.S. utility patents:

U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss." The '847 Patent was filed on September 14, 2016, and issued on March 19, 2019. It was originally assigned to OWS. The '847 Patent claims a novel waveguide multiplexer architecture that enables high-density, low-loss optical signal multiplexing on a silicon photonic chip — a critical component in modern data-center transceivers. The '847 Patent has 24 claims, including 3 independent claims, and has never been the subject of an inter partes review or other post-grant proceeding.

U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate." The '193 Patent was filed on April 7, 2017, and issued on January 12, 2021. It was originally assigned to OWS. The '193 Patent addresses the integration of coherent optical transceiver functionality onto a single silicon substrate, enabling dramatically higher data throughput while reducing power consumption and module size. The '193 Patent has 32 claims, including 4 independent claims.

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." The '562 Patent was filed on November 22, 2014, and issued on June 13, 2017. It was originally assigned to Solara Optics, Inc., a former OWS competitor that specialized in thermal management solutions for photonic devices. OWS acquired the '562 Patent, along with Solara's broader patent portfolio and related assets, pursuant to an Asset Purchase Agreement dated June 15, 2018. The total consideration for the Solara acquisition was $34.5 million. The '562 Patent claims a method for embedding micro-channel heat sinks directly within a photonic integrated circuit to dissipate thermal energy, a technique critical to maintaining signal integrity and extending device lifespan at high data rates. The '562 Patent has 18 claims, including 2 independent claims.

U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers." The '015 Patent was filed on August 30, 2019, and issued on August 2, 2022. It was originally assigned to OWS. The '015 Patent claims a grating coupler design that efficiently couples light of diverse polarization states into a silicon photonic waveguide, enabling improved sensitivity and throughput in transceiver modules. The '015 Patent has 28 claims, including 3 independent claims.

Defendant Lumicore Technologies, Inc. is a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore designs, manufactures, and sells silicon photonic transceiver modules for data-center and telecommunications applications. Lumicore went public on the Nasdaq stock exchange in March 2022 at an initial public offering price of $24 per share. As of the April 22, 2024 filing date of this action, Lumicore had approximately 91.8 million shares outstanding and a market capitalization of approximately $3.4 billion (based on a closing price of approximately $37 per share).

OWS accuses three Lumicore product lines of infringing the Asserted Patents:

LumiLink 400G-ZR+. Lumicore launched the LumiLink 400G-ZR+ coherent transceiver module in Q3 2022. The LumiLink 400G-ZR+ is designed for metro and long-haul data-center interconnect applications and supports 400 Gbps data rates over distances of up to 120 kilometers. OWS alleges that the LumiLink 400G-ZR+ infringes the '847, '193, and '562 Patents. Lumicore reported fiscal year 2023 revenue of $94.8 million for the LumiLink 400G-ZR+ product family.

LumiLink 800G-DR8. Lumicore launched the LumiLink 800G-DR8 short-reach transceiver module in Q1 2023. The LumiLink 800G-DR8 is designed for intra-data-center connectivity and supports 800 Gbps aggregate data rates using eight lanes of 100 Gbps each. OWS alleges that the LumiLink 800G-DR8 infringes all four Asserted Patents — the '847, '193, '562, and '015 Patents. Lumicore reported fiscal year 2023 revenue of $128.4 million for the LumiLink 800G-DR8 product family, making it Lumicore's highest-revenue transceiver product.

LumiEdge 1600G-LR. Lumicore launched the LumiEdge 1600G-LR long-reach transceiver module in Q4 2023 — critically, after Lumicore had received actual notice of all four Asserted Patents through FairPoint's two licensing letters and the April 2023 in-person meeting. The LumiEdge 1600G-LR is designed for next-generation data-center interconnect applications and supports 1.6 Tbps data rates. OWS alleges that the LumiEdge 1600G-LR infringes the '193 and '015 Patents. Lumicore reported fiscal year 2023 revenue of $41.7 million for the LumiEdge 1600G-LR product family (reflecting a partial year of sales following its Q4 2023 launch).

Total accused-product revenue for fiscal year 2023 was $264.9 million. The accused products represent a substantial and growing share of Lumicore's overall revenue.

B. Pre-Suit Notice and Licensing Negotiations

The factual record establishes that Lumicore received extensive, actual notice of OWS's patent rights well before the filing of this action and well before the launch of the LumiEdge 1600G-LR product.

October 2022: Internal Identification and Teardown Analysis. In October 2022, OWS's internal engineering team, under the direction of OWS's Chief Technology Officer, Dr. Jian-Wei Huang, identified potential infringement by Lumicore's then-recently-launched LumiLink 400G-ZR+ product. Upon identifying the potential infringement, OWS retained Benchmark Semiconductor Analysis, LLC, a leading semiconductor reverse-engineering firm, to perform a comprehensive teardown and reverse-engineering analysis of the LumiLink 400G-ZR+. The teardown was led by Benchmark's lead engineer, Kevin Ng, and involved detailed physical and optical characterization of the LumiLink 400G-ZR+ transceiver module's internal components, including its silicon photonic integrated circuit die.

December 12, 2022: Benchmark Teardown Report. On December 12, 2022, Benchmark delivered its teardown report to OWS. The report confirmed the use of accused waveguide multiplexer structures that map to the claims of the '847 Patent, coherent transceiver integration on silicon substrates corresponding to the '193 Patent claims, and thermal management micro-channel heat sink structures corresponding to the '562 Patent claims. The Benchmark report provided the technical foundation for OWS's subsequent licensing outreach to Lumicore.

January 15, 2023: First FairPoint Licensing Letter. On January 15, 2023, FairPoint Licensing Group, LLC, acting as OWS's authorized licensing agent, sent a formal licensing and notice letter to Lumicore's General Counsel, Raymond Bautista. The letter was sent by Angela Reeves, FairPoint's Managing Director, a former patent licensing executive with over 20 years of experience in semiconductor IP licensing. The January 15 letter identified three of the four Asserted Patents — the '847, '193, and '562 Patents — and specifically accused the LumiLink 400G-ZR+ of infringement. The letter included a detailed claim chart mapping the relevant patent claims to the accused product's features, as identified in the Benchmark teardown report. The letter invited Lumicore to enter into good-faith licensing discussions and offered to schedule a meeting to discuss terms. A copy of the January 15, 2023 letter is attached hereto as Exhibit C. This letter constituted actual notice of OWS's patent rights.

February 28, 2023: Lumicore's Initial Response. On February 28, 2023, Lumicore responded to the FairPoint letter through its outside counsel, Hawthorne Vega & Cruz LLP. The response was authored by Catherine "Kate" Rourke, the lead partner at Hawthorne Vega & Cruz handling Lumicore's patent matters. The response disputed infringement of the identified patents and questioned the validity of the asserted patents, raising prior art arguments. The response did not reference any opinion-of-counsel letters at that time.

April 20, 2023: In-Person Licensing Meeting. On April 20, 2023, representatives of OWS and Lumicore met in person in Austin, Texas, to discuss the licensing dispute. The meeting was attended by Angela Reeves (FairPoint), Rebecca Tanaka (OWS's General Counsel), Raymond Bautista (Lumicore's General Counsel), and Kate Rourke (Hawthorne Vega & Cruz LLP). The meeting lasted approximately three hours. During the meeting, FairPoint and OWS presented detailed technical analyses demonstrating infringement of the '847, '193, and '562 Patents by the LumiLink 400G-ZR+. No resolution was reached. Per Ms. Reeves's deposition testimony taken on December 10, 2024, Lumicore's representatives showed "no interest in negotiating" and indicated that Lumicore intended to continue selling the accused products.

May 15, 2023: Second FairPoint Licensing Letter. On May 15, 2023, FairPoint sent a second licensing letter to Mr. Bautista. This supplemental letter added the '015 Patent — which had issued on August 2, 2022 — to the list of asserted patents and expanded the accused products to include the LumiLink 800G-DR8, which Lumicore had launched in Q1 2023. The May 15 letter included additional claim charts and reiterated OWS's invitation to negotiate a license. A copy of the May 15, 2023 letter is attached hereto as Exhibit D.

C. The July 10, 2023 Declination Letter Referencing "Competent Legal Opinions"

On July 10, 2023, Lumicore formally declined to take a license under any of the Asserted Patents. The declination letter was authored by Raymond Bautista, Lumicore's General Counsel, and addressed to FairPoint Licensing Group, LLC and OWS. The letter is attached hereto as Exhibit A and is the central document at issue in this motion.

The July 10, 2023 letter does not merely deny infringement in general terms. Rather, it affirmatively states that Lumicore has obtained "competent legal opinions" concluding that Lumicore's products do not infringe OWS's patents. The letter further states that Lumicore is "confident in its freedom to operate" in view of the Asserted Patents and that Lumicore considers the matter closed. The letter references both the January 15, 2023 and May 15, 2023 FairPoint licensing letters and identifies Lumicore's position that the '847, '193, '562, and '015 Patents are either not infringed or invalid.

The significance of this letter cannot be overstated. By voluntarily and affirmatively representing to OWS that Lumicore had obtained "competent legal opinions" of non-infringement, Lumicore made a strategic decision to invoke the substance and existence of its counsel's advice as justification for its refusal to negotiate and its continued manufacture and sale of the accused products. This voluntary disclosure was not compelled. It was a deliberate choice by Lumicore to deploy its counsel's opinions as a commercial and legal tool.

Despite this declination and asserted reliance on counsel opinions, Lumicore proceeded to launch a new accused product — the LumiEdge 1600G-LR — in Q4 2023. OWS's Complaint (D.E. 1, filed April 22, 2024) alleges that the LumiEdge 1600G-LR infringes the '193 and '015 Patents. The launch of a new accused product after receipt of actual notice of all four Asserted Patents, and after Lumicore's own invocation of "competent legal opinions," raises serious questions about the scope and adequacy of those opinions — questions that can only be answered through production.

D. Lumicore's Assertion of Advice-of-Counsel Defense in This Litigation

OWS filed its Complaint on April 22, 2024 (D.E. 1), alleging infringement of the four Asserted Patents by the three accused product lines. The Complaint includes a count for willful infringement, seeking enhanced damages under 35 U.S.C. § 284. The willfulness allegations are based on Lumicore's actual knowledge of the Asserted Patents (established through the FairPoint licensing letters and in-person meeting), Lumicore's continued manufacture and sale of the accused products after receiving such notice, and Lumicore's launch of the LumiEdge 1600G-LR after actual notice.

In its Answer and Counterclaims (D.E. 12, filed June 17, 2024), Lumicore raised numerous affirmative defenses, including defenses directed to OWS's willful infringement allegations. Relevant excerpts from D.E. 12 are attached as Exhibit E. Among its affirmative defenses, Lumicore asserts that it acted in good faith based on advice of counsel in defending against OWS's willful infringement allegations. Lumicore further asserts counterclaims for: (i) declaratory judgment of non-infringement of each of the Asserted Patents; (ii) invalidity of the Asserted Patents under 35 U.S.C. §§ 102 and 103; and (iii) unenforceability of the Asserted Patents based on inequitable conduct.

Despite asserting an advice-of-counsel defense in its Answer and despite Lumicore's pre-suit invocation of "competent legal opinions" in the July 10, 2023 declination letter, Lumicore has refused to produce the opinion letters or any related communications. In its objections and responses to OWS's First Set of Requests for Production (served August 5, 2024), Lumicore asserted attorney-client privilege and work-product protection over all responsive documents, including opinion-of-counsel letters, drafts, and related communications.

E. The December 3, 2024 Deposition of Raymond Bautista

On December 3, 2024, OWS deposed Lumicore's General Counsel, Raymond Bautista, pursuant to Federal Rule of Civil Procedure 30(b)(1). The deposition was taken at the offices of Hawthorne Vega & Cruz LLP in Austin, Texas. Relevant excerpts from the deposition transcript are attached hereto as Exhibit B.

Mr. Bautista's testimony established the following:

Confirmation of receipt of FairPoint's January 15, 2023 letter. Mr. Bautista confirmed that he received FairPoint's January 15, 2023 licensing letter, which identified the '847, '193, and '562 Patents and accused the LumiLink 400G-ZR+ of infringement. (Ex. B, Bautista Dep. Tr. 34:8–35:2.)

Forwarding to outside counsel. Mr. Bautista confirmed that he forwarded the FairPoint letter to Lumicore's outside counsel at Hawthorne Vega & Cruz LLP within three business days of receipt. (Ex. B, Bautista Dep. Tr. 37:14–38:6.) This testimony establishes that Lumicore's outside counsel was aware of OWS's patent assertions no later than January 2023.

Privilege invocation regarding substance of opinions. When asked about the substance and identity of the "competent legal opinions" referenced in the July 10, 2023 declination letter, Mr. Bautista refused to answer on privilege grounds, invoking both attorney-client privilege and work-product protection. (Ex. B, Bautista Dep. Tr. 52:3–54:19.) Specifically, Mr. Bautista refused to identify the author(s) of the opinion letters, the date(s) the opinions were rendered, the patents addressed by the opinions, the specific products addressed by the opinions, or the conclusions reached by the opinions. Counsel for Lumicore, Samantha Briggs, instructed Mr. Bautista not to answer each of these questions, asserting privilege as to each.

No formal design-around analysis before LumiEdge 1600G-LR launch. In a particularly significant admission, Mr. Bautista testified that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR product in Q4 2023. (Ex. B, Bautista Dep. Tr. 71:5–72:18.) This admission raises a serious inference that Lumicore did not seek or obtain any opinion of counsel before launching its newest accused product, even though Lumicore had received actual notice of all four Asserted Patents by May 2023.

Consultation with outside counsel regarding the declination letter. Mr. Bautista confirmed that the July 10, 2023 declination letter was sent after consultation with Hawthorne Vega & Cruz LLP. (Ex. B, Bautista Dep. Tr. 58:9–59:3.) This confirms that outside counsel was involved in the decision to reference "competent legal opinions" in the declination letter — further demonstrating the deliberate nature of Lumicore's strategy.

Continued sales after notice. Mr. Bautista acknowledged that Lumicore continued to sell all three accused product lines after receiving FairPoint's licensing letters. (Ex. B, Bautista Dep. Tr. 74:12–75:8.)

Mr. Bautista's deposition testimony underscores the urgent need for the Court to rule on whether Lumicore has waived privilege by placing the opinions at issue. Lumicore's privilege assertions at deposition cannot stand in the face of its affirmative reliance on those same opinions in its pre-suit communications and in its pleadings.

F. Meet-and-Confer Efforts

Consistent with the Local Rules of the Eastern District of Texas and the Court's Docket Control Order (D.E. 27, issued August 12, 2024), counsel for OWS and Lumicore engaged in extensive meet-and-confer efforts regarding Lumicore's refusal to produce the opinion-of-counsel letters.

Wendy Schultz, lead associate at Calderwood & Harkness LLP, and Samantha Briggs, the Hawthorne Vega & Cruz associate responsible for discovery matters, participated in three separate telephonic meet-and-confer conferences: September 30, 2024; October 4, 2024; and October 10, 2024. During these conferences, OWS's counsel explained the legal basis for OWS's position that Lumicore had waived privilege by asserting an advice-of-counsel defense and by referencing "competent legal opinions" in its July 10, 2023 declination letter. OWS's counsel also requested that Lumicore produce a privilege log identifying the withheld opinion letters with sufficient particularity to allow the Court to evaluate the privilege claims; Lumicore produced a privilege log on October 7, 2024, but the entries were generic and did not provide meaningful detail regarding the number, authorship, date, or subject matter of the withheld documents.

Lumicore's counsel maintained that the opinion letters are protected by attorney-client privilege and the work-product doctrine and that Lumicore has not waived either protection. Lumicore further indicated that it might produce the opinion letters at a later stage in the litigation (i.e., the expert report phase) but refused to commit to a timeline or scope of production.

The parties' meet-and-confer efforts are memorialized in correspondence dated October 14, 2024 from Wendy Schultz to Samantha Briggs. That letter is referenced in the Declaration of Wendy Schultz (D.E. 27) and is attached hereto as Exhibit F. The parties were unable to reach agreement, necessitating this motion.

LEGAL STANDARD

Under Federal Rule of Civil Procedure 37(a)(3)(B), a party may move for an order compelling discovery when the responding party has failed to produce documents or has withheld documents based on an objection, including a claim of privilege. Fed. R. Civ. P. 37(a)(3)(B)(iv). A motion to compel is the proper procedural vehicle for challenging a party's assertion of privilege over documents that the moving party contends are subject to waiver. See In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000).

The Court has broad discretion under Federal Rule of Civil Procedure 26(b)(1) to order the production of any matter that is relevant to a party's claim or defense and proportional to the needs of the case. Fed. R. Civ. P. 26(b)(1). The relevance of opinion-of-counsel letters to OWS's willful infringement claim and Lumicore's advice-of-counsel defense is beyond dispute. The proportionality factors — including the importance of the issues at stake in this action, the amount in controversy, and the importance of the discovery in resolving the issues — all favor production. The accused products generated nearly $265 million in revenue in fiscal year 2023 alone, and OWS seeks enhanced damages for willful infringement under 35 U.S.C. § 284 — potentially tripling any damages award.

The party asserting privilege bears the burden of establishing each element of the claimed privilege. United States v. El-Sayegh, 131 F.3d 158, 160 (D.C. Cir. 1997); see also In re Grand Jury Subpoena, 561 F.3d 408, 411 (5th Cir. 2009) (applying federal common law of privilege and placing the burden on the party asserting privilege). Similarly, the party claiming privilege bears the burden of demonstrating that no waiver has occurred. Conoco Inc. v. U.S. Dep't of Justice, 687 F.2d 724, 730 (3d Cir. 1982). Where, as here, the responding party has affirmatively injected privileged communications into the litigation, the burden falls squarely on that party to establish that the privilege remains intact notwithstanding its own conduct.

In patent cases, the Federal Circuit's law governs the scope and application of the attorney-client privilege as it relates to advice-of-counsel defenses and willful infringement. In re Queen's Univ. at Kingston, 820 F.3d 1287, 1294 (Fed. Cir. 2016); In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1298 (Fed. Cir. 2006). Regional circuit law governs general discovery disputes, but where the privilege issue is "intertwined with substantive issues of patent law unique to the Federal Circuit," Federal Circuit law controls. Id.

In the Eastern District of Texas, discovery disputes are resolved under the Local Rules and the Court's Docket Control Order. The Docket Control Order in this case (D.E. 27, issued August 12, 2024) requires the parties to engage in good-faith meet-and-confer efforts before filing any discovery motion. As detailed above, OWS has satisfied this requirement.

ARGUMENT

I. Lumicore Has Waived the Attorney-Client Privilege by Placing Its Counsel's Opinions "At Issue"

A. Lumicore Affirmatively Injected Its Counsel's Opinions into This Litigation. The "at issue" waiver doctrine provides that a party waives the attorney-client privilege when it places the substance of privileged communications directly at issue in the litigation. The Federal Circuit has recognized this principle in the patent context, holding that "[w]hen a party relies on the advice it received from its counsel as a factual issue in the litigation, the party does so at the cost of waiving the attorney-client privilege as to those communications." Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1344–46 (Fed. Cir. 2004) (en banc). In Knorr-Bremse, the Federal Circuit overruled the prior inference that a defendant's failure to produce an opinion of counsel could be used as evidence of willful infringement, but it simultaneously reinforced the principle that a party who does invoke an opinion of counsel waives the privilege. Id. at 1344 ("The assertion of an 'advice of counsel' defense to a charge of willful infringement… places the advice received at issue.").

The Fifth Circuit, whose law governs general privilege disputes in this district, applies the same principle. See Conkling v. Turner, 883 F.2d 431, 435 (5th Cir. 1989) (implied waiver of privilege occurs where the party "has injected into the case an issue that in fairness requires an examination of otherwise privileged communications"); see also Rhone-Poulenc Rorer Inc. v. Home Indem. Co., 32 F.3d 851, 863 (3d Cir. 1994) (party waives privilege when it "makes a testimonial use of privileged communications or places the privileged communications at issue in the litigation").

Here, Lumicore has injected its counsel's opinions into this litigation through at least three independent acts:

First, the July 10, 2023 declination letter. Lumicore's July 10, 2023 letter to FairPoint and OWS explicitly states that Lumicore obtained "competent legal opinions" concluding that its products do not infringe OWS's patents. (Ex. A.) By affirmatively communicating this to OWS, Lumicore voluntarily disclosed both the fact of its reliance on counsel advice and its characterization of the substance of that advice (i.e., that the opinions concluded non-infringement). This was not a passing reference or inadvertent disclosure. It was a deliberate, strategic communication crafted in consultation with outside counsel. Mr. Bautista confirmed at deposition that the declination letter was sent after consultation with Hawthorne Vega & Cruz LLP. (Ex. B, Bautista Dep. Tr. 58:9–59:3.)

Second, Lumicore's Answer and Counterclaims (D.E. 12). In its Answer, Lumicore asserts affirmative defenses to OWS's willful infringement allegations based on good faith reliance on advice of counsel. (Ex. E.) This pleading puts the advice-of-counsel defense squarely before the Court and the jury. It is a classic invocation of the defense described in Knorr-Bremse, Seagate, and Halo. A party cannot assert in its Answer that it relied on counsel's advice in good faith and then refuse to produce the advice on which it claims to have relied. To do so would render the privilege a tool of obstruction rather than protection.

Third, the Bautista deposition. At his December 3, 2024 deposition, Mr. Bautista was asked about the substance of the "competent legal opinions" referenced in the July 10, 2023 declination letter. Although Mr. Bautista refused to provide the substance of the opinions, he did not disclaim reliance on the opinions. To the contrary, his invocation of privilege presupposed the existence and relevance of the opinions — he was protecting something. Moreover, Mr. Bautista confirmed the factual predicate for the at-issue waiver: the opinions exist, they were obtained from outside counsel, and Lumicore relied on them in deciding to decline a license and continue selling the accused products. (Ex. B, Bautista Dep. Tr. 52:3–54:19.)

Each of these acts, standing alone, would be sufficient to trigger at-issue waiver. Taken together, they constitute an overwhelming case for disclosure. Lumicore cannot claim it relied on "competent legal opinions" to rebut willfulness and then refuse to produce those opinions. The privilege does not exist to facilitate gamesmanship. See In re Grand Jury Proceedings, 219 F.3d 175, 182 (2d Cir. 2000) ("The privilege was intended as a shield, not a sword.").

B. The Sword-and-Shield Doctrine Compels Disclosure. The "sword and shield" doctrine is a corollary of the at-issue waiver principle. It provides that a party may not use the privilege as both a sword and a shield — that is, a party may not use privileged communications offensively (as a sword) to support a claim or defense while simultaneously invoking the privilege defensively (as a shield) to prevent the opposing party from examining those same communications. See, e.g., Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162 (9th Cir. 1992) ("The quintessential example is the situation in which the privilege holder asserts a claim or defense, and then attempts to prove that claim or defense by disclosing or describing an attorney-client communication, while asserting the privilege to bar the opponent's access to the communication."); In re Lott, 424 F.3d 446, 453 (6th Cir. 2005).

Lumicore's conduct in this case is a textbook illustration of the sword-and-shield maneuver:

• As a sword, Lumicore deploys its counsel's opinions to defend against willful infringement. It told OWS it had "competent legal opinions" of non-infringement. It pleaded good-faith reliance on counsel in its Answer. It will inevitably seek to use the existence and substance of those opinions at trial to persuade the jury that its infringement was not willful.

• As a shield, Lumicore invokes attorney-client privilege and work-product protection to prevent OWS from obtaining the opinions and testing their adequacy, scope, timing, and completeness.

The unfairness of this posture is manifest. If Lumicore is permitted to withhold the opinion letters, it will be free to present a sanitized, self-serving narrative of its good-faith reliance at trial — a narrative that OWS will have no means of challenging. The adequacy and completeness of the opinions are critical to the willful infringement inquiry, and numerous questions must be answered through production and examination of the opinions themselves:

• Did the opinions address all four Asserted Patents, or only the three identified in FairPoint's first letter (January 15, 2023)?

• Were the opinions updated after FairPoint's second letter (May 15, 2023) added the '015 Patent and the LumiLink 800G-DR8 as an accused product?

• Were the opinions obtained before or after each accused product's launch? In particular, was any opinion obtained before the launch of the LumiEdge 1600G-LR in Q4 2023?

• Did the opinions consider the specific claim limitations at issue in this case — including the 14 disputed claim terms that remain in controversy as of the January 15, 2025 Joint Claim Construction Chart?

• Were the opinions based on a complete and accurate understanding of the accused products' technical architecture? Were teardown analyses or product specifications provided to opinion counsel?

• Did the opinions address both non-infringement and invalidity, or only one of these grounds?

• Who prepared the opinions? Were they prepared by litigation counsel (which would raise separate concerns) or by independent opinion counsel?

These questions go to the very heart of the willful infringement inquiry. The Court should not permit Lumicore to shield the answers while simultaneously relying on the opinions as a defense. The sword-and-shield doctrine compels production.

II. Under *Halo* and *Seagate*, Lumicore's Reliance on Advice of Counsel as a Defense to Willful Infringement Triggers Waiver

A. The *Halo* Framework for Willful Infringement. In Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), the Supreme Court articulated the standard for enhanced damages under 35 U.S.C. § 284 in patent infringement cases. The Court held that enhanced damages are reserved for "egregious cases typified by willful misconduct" and that the relevant inquiry focuses on the infringer's subjective knowledge and intent at the time of the challenged conduct. Id. at 103–04. The Court rejected the Federal Circuit's prior two-part test from In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), which had required proof of both objective recklessness and subjective bad faith, and replaced it with a more flexible, totality-of-the-circumstances approach. Halo, 579 U.S. at 103.

Under Halo, the critical question is whether the infringer's conduct was sufficiently culpable to warrant enhancement — i.e., whether the infringer "knew of the patent, knew it was infringing, and nonetheless continued to infringe." WCM Indus., Inc. v. IPS Corp., 721 F. App'x 959, 970 (Fed. Cir. 2018). Advice of counsel is a key factual issue in this inquiry. A defendant may seek to show that it relied on competent counsel's advice that its products did not infringe or that the asserted patents were invalid, thereby negating the subjective intent required for willfulness. See SiOnyx, LLC v. Hamamatsu Photonics K.K., 330 F. Supp. 3d 574, 609 (D. Mass. 2018); Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1244–45 (Fed. Cir. 2017).

Prior to Halo, the Federal Circuit in Seagate directly addressed the interplay between the advice-of-counsel defense and the attorney-client privilege. The Seagate court held that "when an alleged infringer asserts its advice-of-counsel defense regarding willful infringement of a particular patent, this constitutes a waiver of the attorney-client privilege" for communications "pertaining to the subject matter of the opinion." Seagate, 497 F.3d at 1373. Although Halo abrogated Seagate's two-part willfulness test, the underlying waiver principle survives. Post-Halo, courts continue to hold that a defendant who invokes advice of counsel to rebut willfulness waives the attorney-client privilege as to the relevant communications. See, e.g., WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016); Ostrander Enterprises, Inc. v. Alstom Grid, Inc., No. 15-224, 2016 WL 4009913, at *4 (W.D. Pa. July 27, 2016).

The rationale is straightforward: the advice-of-counsel defense places the substance of counsel's advice at the center of the willfulness inquiry. The patent holder is entitled to examine the advice to test its adequacy and to determine whether the defendant's reliance was genuine. Without access to the opinion letters, the patent holder cannot meaningfully challenge the defense, and the factfinder cannot properly evaluate it. Waiver is therefore a necessary incident of the defense.

B. The Scope of Waiver Extends to All Opinion Letters Concerning the Asserted Patents and Accused Products. The waiver triggered by assertion of an advice-of-counsel defense is not limited to the final opinion letter itself. The Federal Circuit has held that the waiver extends to "all communications between the client and counsel concerning the subject matter of the opinion." In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1302 (Fed. Cir. 2006). In EchoStar, the Federal Circuit explained that "when a party defends its actions by disclosing an exculpatory opinion of counsel, [it] waives the attorney-client privilege with respect to all communications with counsel regarding the same subject matter." Id. at 1299.

Applied here, the scope of the waiver extends to:

1. All opinion-of-counsel letters prepared by Hawthorne Vega & Cruz LLP or any other counsel for Lumicore concerning the infringement, validity, and/or enforceability of the '847, '193, '562, and '015 Patents as applied to the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR product lines.

2. Drafts of opinion letters and communications between Lumicore and its counsel regarding the preparation, scope, and substance of the opinions. Drafts are within the scope of the waiver because they reflect the evolution of counsel's analysis and may reveal whether the final opinions omitted or glossed over material issues. See EchoStar, 448 F.3d at 1303 ("[T]he advice itself and the potential ramifications of that advice must be available to both parties.").

3. Underlying analyses provided to or prepared by opinion counsel, including technical analyses, claim charts, product specifications, and any materials used to form the basis of the opinions.

4. Updates, supplements, and follow-up analyses to the opinions, including — critically — any opinions or analyses obtained in connection with the launch of the LumiEdge 1600G-LR product in Q4 2023. Mr. Bautista's deposition admission that no formal design-around analysis was commissioned before the LumiEdge launch raises the distinct possibility that no opinion was obtained for this product. That fact, in itself, is highly relevant to willfulness and can only be confirmed through compelled production.

OWS is entitled to examine whether Lumicore obtained opinions covering all four Asserted Patents or only the three identified in FairPoint's first letter (January 15, 2023). The '015 Patent was not identified until FairPoint's second letter (May 15, 2023). If Lumicore's "competent legal opinions" were limited to the '847, '193, and '562 Patents, then Lumicore launched the LumiEdge 1600G-LR — which OWS accuses of infringing the '193 and '015 Patents — without any opinion of counsel regarding the '015 Patent. This would dramatically undermine Lumicore's advice-of-counsel defense as to that product and patent.

Similarly, OWS is entitled to examine whether the opinions addressed only the LumiLink 400G-ZR+ (the only product accused in FairPoint's first letter) or also covered the LumiLink 800G-DR8 and LumiEdge 1600G-LR products. An opinion limited to one product does not provide a basis for good-faith reliance as to different products with potentially different technical architectures.

The scope of the waiver is not punitive; it is necessary to ensure that the willfulness inquiry is conducted on a complete factual record.

III. The Work-Product Doctrine Does Not Shield the Opinion Letters from Production

In addition to asserting attorney-client privilege, Lumicore has invoked the work-product doctrine, codified in Federal Rule of Civil Procedure 26(b)(3), to resist production of the opinion letters. This assertion fails for multiple independent reasons.

First, the opinion letters are not work product. The work-product doctrine protects "documents and tangible things that are prepared in anticipation of litigation or for trial by or for another party or its representative." Fed. R. Civ. P. 26(b)(3)(A). The critical question is whether the opinion letters were prepared "in anticipation of litigation" or for a different purpose. Here, the record demonstrates that the opinion letters were obtained for business and commercial purposes — specifically, to determine whether Lumicore's products infringed OWS's patents and to evaluate Lumicore's options for responding to FairPoint's licensing outreach (including whether to design around the patents, take a license, or continue selling the products). Opinion-of-counsel letters obtained for such purposes are not prepared "in anticipation of litigation" and do not qualify as work product. See In re Seagate, 497 F.3d at 1376 (distinguishing between opinion letters obtained for business purposes and trial-preparation materials); Electro Scientific Indus., Inc. v. Dynamic Details, Inc., 307 F. Supp. 2d 1343, 1345–46 (N.D. Ga. 2004) (pre-suit freedom-to-operate opinion not work product).

The opinion letters at issue were obtained in 2023 — well before the April 22, 2024 filing of this action. They were referenced in Lumicore's pre-suit declination letter of July 10, 2023, confirming that they were not prepared in anticipation of this specific litigation. Indeed, when Lumicore obtained the opinions, no litigation was pending or even threatened. The FairPoint letters were licensing letters, not cease-and-desist letters or complaints. Lumicore was free to take a license, design around, or refuse to engage — as it ultimately did. The opinions were obtained to inform that commercial decision, not to prepare for trial.

Second, even if the opinion letters constitute work product, the protection has been waived. The same waiver analysis that applies to attorney-client privilege applies with equal force to work-product protection when the party relies on the substance of counsel's mental impressions and legal conclusions. The Federal Circuit has squarely addressed this issue. In EchoStar, the court held that assertion of an advice-of-counsel defense waives work-product protection as well as attorney-client privilege:

"[A] party asserting the advice of counsel defense to a charge of willful infringement waives the attorney-client privilege and work product immunity with respect to all communications on the same subject between the client and the attorney." In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1302–03 (Fed. Cir. 2006).

The EchoStar court reasoned that when a party places counsel's advice at issue, both the attorney-client privilege and the work-product doctrine must yield to the opposing party's need to examine the advice. The party cannot selectively disclose favorable aspects of counsel's advice while invoking work-product protection to shield unfavorable aspects. Id. at 1303.

Third, OWS can demonstrate substantial need and undue hardship. Even if work-product protection applied and had not been waived, OWS could overcome the protection by demonstrating "substantial need" for the materials and that it "cannot, without undue hardship, obtain their substantial equivalent by other means." Fed. R. Civ. P. 26(b)(3)(A)(ii). The opinion letters are uniquely in Lumicore's possession and reflect Lumicore's counsel's analysis of the Asserted Patents as applied to the accused products. There is no other means by which OWS can obtain the substance of that analysis. Moreover, the opinions are directly relevant to the central issue in OWS's willful infringement claim — Lumicore's subjective state of mind and the adequacy of any precautions it took before continuing to sell the accused products. OWS cannot prepare its case on willfulness without examining the opinions on which Lumicore claims to have relied.

IV. Lumicore's Stated Justifications for Withholding Are Meritless

During the parties' meet-and-confer conferences, Lumicore advanced several justifications for withholding the opinion letters. None has merit.

Lumicore's Argument 1: Lumicore contends that it has not formally "asserted" an advice-of-counsel defense. Lumicore takes the position that merely referencing counsel's opinions in a pre-suit letter and pleading good faith in its Answer do not constitute a formal assertion of the advice-of-counsel defense. According to Lumicore, until it affirmatively tenders the opinion letters as evidence at trial, no waiver occurs.

This argument is wrong as a matter of law. A party need not use "magic words" or formally designate its defense as the "advice of counsel defense" to trigger waiver. The waiver is functional, not formal. When a party's conduct demonstrates reliance on counsel's advice to rebut willfulness, the waiver is triggered — regardless of whether the party uses the precise label "advice of counsel defense." See Westvale Holdings. v. Pemberton Corporation, 543 F.3d 683, 699 (Fed. Cir. 2008) (finding waiver where party "relied on advice of counsel to rebut the charge of willful infringement, even though it did not formally invoke the 'advice of counsel' defense"); Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305, 1313 (Fed. Cir. 2010).

Here, the evidence of reliance is overwhelming: (a) Lumicore's July 10, 2023 letter expressly cited "competent legal opinions" of non-infringement; (b) Lumicore's Answer (D.E. 12) pleaded good faith reliance on advice of counsel as a defense to willful infringement; and (c) Mr. Bautista's deposition testimony asserted privilege over the substance of the opinions while simultaneously maintaining that Lumicore's conduct was in good faith. The functional assertion of reliance on counsel advice has been made. Waiver has occurred.

Lumicore's Argument 2: Lumicore contends that the July 10, 2023 letter was a pre-litigation communication, not an in-court assertion, and therefore cannot trigger waiver. Lumicore argues that a pre-suit letter referencing counsel's opinions, standing alone, is insufficient to waive the privilege because the waiver doctrine applies only to in-court assertions.

This argument ignores the broader record. The July 10, 2023 letter was not a standalone communication. It was part of a course of conduct that continued into this litigation through Lumicore's Answer and through Mr. Bautista's deposition testimony. The pre-litigation/in-litigation distinction is irrelevant where, as here, the party has brought the pre-suit communication and the opinions referenced therein into the litigation by pleading reliance on counsel advice and by invoking privilege over the opinions at deposition.

Moreover, courts routinely hold that a pre-suit communication referencing counsel's opinions, combined with in-suit reliance on that communication, effects waiver. See In re Seagate, 497 F.3d at 1373 (waiver applies to "communications pertaining to the subject matter of the opinion"); Brightwater Industries Pharms. Corp. v. Eon Labs Mfg., Inc., 206 F.R.D. 396, 399 (D. Del. 2002) (pre-suit opinion letter subject to production where party relied on counsel's advice in defense of willfulness). The July 10, 2023 letter is itself relevant evidence that Lumicore is relying on in this litigation. Lumicore's attempt to compartmentalize the pre-suit letter from its in-suit defenses is artificial and unavailing.

Lumicore's Argument 3: Lumicore contends that compelled production would chill attorney-client communications. Lumicore argues that ordering production of the opinion letters would have a chilling effect on attorney-client communications, discouraging companies from seeking legal advice about potential patent infringement.

The chilling-effect argument does not override the waiver doctrine. The Federal Circuit has considered and rejected this argument. In Knorr-Bremse, the Federal Circuit specifically addressed the concern that waiver might deter companies from obtaining opinion letters and held that the "proper balance" is to allow companies to obtain opinions without fear of an adverse inference if they choose not to rely on them — but to require disclosure if they do choose to rely on them. Knorr-Bremse, 383 F.3d at 1344–46. The waiver doctrine does not punish companies for seeking legal advice; it prevents companies from selectively deploying that advice as a litigation weapon while shielding it from scrutiny. A party that chooses to deploy counsel's opinions as part of its litigation strategy must accept the consequences of that choice, including disclosure. Lumicore was free to decline to reference its counsel's opinions in the July 10, 2023 letter and to refrain from pleading reliance on counsel in its Answer. Having chosen to do both, Lumicore cannot now complain that production of the opinions would chill future attorney-client communications.

Lumicore's Argument 4: Lumicore contends that the opinion letters may be produced at the expert-report stage. Lumicore has suggested that it may produce the opinion letters at a later stage, specifically at or near the deadline for expert reports. This suggestion is both inadequate and untimely.

There is no legal basis for deferring production. The opinion letters are responsive to OWS's discovery requests and are discoverable now. Fed. R. Civ. P. 26(b)(1). Deferral would prejudice OWS in multiple respects:

(i) Fact discovery. Fact discovery in this case closes on May 1, 2025. OWS is entitled to the opinion letters during fact discovery so that it can depose the author(s) of the opinions, examine the factual premises on which the opinions were based, and investigate whether Lumicore's reliance on the opinions was genuine and informed. If the opinions are not produced until the expert-report stage, OWS will have lost the opportunity to conduct this critical fact discovery.

(ii) Expert reports. OWS's expert reports are due on June 15, 2025. OWS's infringement expert, Dr. Caroline Ashford, must address the technical adequacy of Lumicore's non-infringement positions. OWS's damages expert, Dr. Lawrence Keating, must address willful infringement enhancement under the Read factors, which include the infringer's behavior as a party to the litigation, the defendant's size and financial condition, the closeness of the case, and the duration of the defendant's misconduct. See Read Corp. v. Portec, Inc., 970 F.2d 816, 827 (Fed. Cir. 1992). Both experts need access to the opinion letters well in advance of the expert-report deadline to prepare adequate reports.

(iii) Markman hearing. The Court has scheduled a Markman (claim construction) hearing for March 14, 2025. There are 14 disputed claim terms as of the January 15, 2025 Joint Claim Construction Chart. The opinion letters may reveal how Lumicore's own counsel interpreted the disputed claim terms — interpretations that could be highly relevant to the claim construction debate. OWS is entitled to that evidence before the Markman hearing.

For all of these reasons, deferral of production is unwarranted and would cause substantial prejudice to OWS.

V. The Relief Requested Is Narrowly Tailored and Subject to the Existing Protective Order

OWS's request is narrowly tailored to the four Asserted Patents and the three accused product lines. OWS does not seek Lumicore's general litigation strategy, trial-preparation materials, or communications between Lumicore and its litigation counsel regarding the prosecution of this case. OWS seeks only the opinion-of-counsel letters and related communications that Lumicore has placed at issue through its own conduct.

Specifically, OWS requests an order compelling Lumicore to produce:

1. All opinion-of-counsel letters, memoranda, and analyses prepared by or at the direction of Lumicore's counsel concerning the infringement, validity, and/or enforceability of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 as applied to the LumiLink 400G-ZR+, LumiLink 800G-DR8, and/or LumiEdge 1600G-LR product lines.

2. All drafts of such opinion letters, memoranda, and analyses, and all communications between Lumicore and its counsel relating to the preparation, scope, and substance of such opinion letters.

3. Any updates, supplements, or follow-up analyses to such opinion letters, including any opinions or analyses obtained in connection with the launch of the LumiEdge 1600G-LR product in Q4 2023, and any opinions or analyses obtained after Lumicore received FairPoint's second licensing letter on May 15, 2023.

The requested production is limited in scope and bounded by the subject matter of the waiver — the Asserted Patents and the accused products. It does not extend to communications on unrelated topics or to Lumicore's broader patent portfolio.

All documents produced pursuant to the Court's order may be designated under the Court's three-tier Stipulated Protective Order, entered in August 2024. That Protective Order provides for three levels of designation: "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code." Lumicore is free to designate the opinion letters at the level of protection it deems appropriate, thereby safeguarding any legitimate confidentiality interests. The Protective Order provides a well-established mechanism for protecting sensitive documents while ensuring that discovery proceeds in an orderly fashion. The existence of the Protective Order eliminates any argument that production would expose Lumicore to competitive harm.

OWS requests that production be completed within fourteen (14) days of the date of the Court's order. Given that the opinion letters and related communications are already in Lumicore's possession and have been identified on Lumicore's privilege log, there is no basis for additional delay.

CONCLUSION

For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court grant its Motion to Compel (D.E. 25) and enter an order directing Defendant Lumicore Technologies, Inc. to produce, within fourteen (14) days of the Court's order, all opinion-of-counsel letters, memoranda, analyses, drafts, and related communications concerning the infringement, validity, and/or enforceability of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 as applied to the LumiLink 400G-ZR+, LumiLink 800G-DR8, and/or LumiEdge 1600G-LR product lines.

OWS further respectfully requests that the Court award OWS its reasonable expenses, including attorneys' fees, incurred in connection with this motion pursuant to Federal Rule of Civil Procedure 37(a)(5)(A), which provides that the Court "must" award reasonable expenses, including attorneys' fees, incurred in making a motion to compel if the motion is granted, unless the opposing party's nondisclosure was "substantially justified" or other circumstances make an award of expenses unjust. Lumicore's withholding of the opinion letters in the face of its affirmative reliance on those very opinions is not substantially justified, and no circumstances render an award of expenses unjust.

Respectfully submitted,

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (CA Bar No. 247891; admitted pro hac vice E.D. Tex.)

Marcus Delgado (TX Bar No. 05738290) Wendy Schultz (CA Bar No. 301456; admitted pro hac vice E.D. Tex.) Omar Siddiqui (CA Bar No. 315782; admitted pro hac vice E.D. Tex.)

350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 426-7800 Facsimile: (213) 426-7801

and

1201 F Street NW, Suite 700 Washington, DC 20004

Of Counsel:

James "Jim" Callahan (TX Bar No. 03691445) WHITMORE & CALLAHAN LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 592-4200

Attorneys for Plaintiff Optiwave Semiconductor Corp.

CERTIFICATE OF SERVICE

I hereby certify that on October 21, 2024, the foregoing Plaintiff Optiwave Semiconductor Corp.'s Memorandum of Law in Support of Its Motion to Compel Defendant Lumicore Technologies, Inc. to Produce Opinion-of-Counsel Letters and all exhibits attached thereto were served via the Court's CM/ECF electronic filing system on all counsel of record, including:

Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer HAWTHORNE VEGA & CRUZ LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Attorneys for Defendant Lumicore Technologies, Inc.

Maria Garza TRASK EDDINGTON LLP 425 East Front Street, Suite 300 Tyler, Texas 75701 Local Counsel for Defendant Lumicore Technologies, Inc.

________________________________________

Alan Ngo

EXHIBITS LIST

The following exhibits are attached hereto and filed herewith:

Exhibit A: Lumicore Technologies, Inc.'s July 10, 2023 Declination Letter

Letter from Raymond Bautista, General Counsel of Lumicore Technologies, Inc., to FairPoint Licensing Group, LLC and Optiwave Semiconductor Corp., dated July 10, 2023, formally declining to take a license under OWS's patents. The letter contains the following key language: Lumicore states that it has obtained "competent legal opinions" that its products do not infringe OWS's patents and that Lumicore is "confident in its freedom to operate" in view of the Asserted Patents. The letter references both the January 15, 2023 and May 15, 2023 FairPoint licensing letters and identifies Lumicore's position that the '847, '193, '562, and '015 Patents are either not infringed or invalid.

Exhibit B: Excerpts from Deposition of Raymond Bautista (December 3, 2024)

Selected excerpts from the deposition transcript of Raymond Bautista, General Counsel of Lumicore Technologies, Inc., taken on December 3, 2024 in Austin, Texas. The excerpts include:

• Excerpt 1 (Tr. 34:8–35:2): Mr. Bautista confirms receipt of FairPoint's January 15, 2023 letter identifying the '847, '193, and '562 Patents and accusing the LumiLink 400G-ZR+ of infringement.

• Excerpt 2 (Tr. 37:14–38:6): Mr. Bautista confirms that he forwarded the FairPoint letter to Hawthorne Vega & Cruz LLP (outside counsel) within three business days of receipt.

• Excerpt 3 (Tr. 52:3–54:19): Mr. Bautista invokes attorney-client privilege and work-product protection when asked about the substance, identity, authorship, da

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
Hon. James R. Gilstrap
JURY TRIAL DEMANDED
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION TO COMPEL DEFENDANT LUMICORE TECHNOLOGIES, INC. TO PRODUCE OPINION-OF-COUNSEL LETTERS
D.E. 26 (Memorandum in Support of Motion at D.E. 25) Filed: October 21, 2024
PRELIMINARY STATEMENT
Plaintiff Optiwave Semiconductor Corp. ("OWS") respectfully submits this Memorandum of Law in Support of its Motion to Compel Defendant Lumicore Technologies, Inc. ("Lumicore") to produce all opinion-of-counsel letters and related attorney communications concerning the non-infringement and/or invalidity of the four utility patents asserted in this action: U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), 9,678,562 (the "'562 Patent"), and 11,402,015 (the "'015 Patent") (collectively, the "Asserted Patents").
This motion arises from Lumicore's steadfast refusal to produce the very opinion letters upon which it relies — and has relied since before the filing of this action — to defend against OWS's well-pleaded allegations of willful patent infringement. The facts giving rise to this motion are straightforward and largely undisputed.
First, on July 10, 2023, after receiving two detailed licensing letters from OWS's licensing agent, FairPoint Licensing Group, LLC, and after an in-person licensing meeting in Austin, Texas, Lumicore formally declined to take a license under the Asserted Patents. In doing so, Lumicore did not merely assert a bare denial of infringement. Rather, Lumicore affirmatively represented that it had obtained "competent legal opinions" concluding that its products do not infringe OWS's patents. That letter — attached hereto as Exhibit A — is the single most consequential pre-suit communication in this case. It represents a deliberate, strategic decision by Lumicore to put the substance and existence of its counsel's opinions before OWS as justification for Lumicore's refusal to license and its continued manufacture and sale of the accused products.
Second, Lumicore carried this strategy into the litigation itself. In its Answer and Counterclaims (D.E. 12, filed June 17, 2024), Lumicore raised affirmative defenses to OWS's willful infringement allegations that are grounded in good faith reliance on advice of counsel. Lumicore did not limit itself to a generic denial of willfulness. It affirmatively pleaded that its conduct was undertaken in good faith based upon the advice it received from its legal counsel — a textbook assertion of the advice-of-counsel defense.
Third, on December 3, 2024, OWS deposed Lumicore's General Counsel, Raymond Bautista. Mr. Bautista confirmed receipt of the FairPoint licensing letters, confirmed that he forwarded them to Lumicore's outside counsel at Hawthorne Vega & Cruz LLP within three business days, and confirmed that the July 10, 2023 declination letter was sent after consultation with that same outside counsel. Yet when OWS's counsel asked Mr. Bautista about the substance and identity of the "competent legal opinions" referenced in the declination letter, Mr. Bautista refused to answer, invoking attorney-client privilege and work-product protection. Critically, Mr. Bautista also admitted that no formal design-around analysis was commissioned before Lumicore launched its newest accused product — the LumiEdge 1600G-LR — in Q4 2023, after Lumicore had received actual notice of all four Asserted Patents.
OWS's willful infringement claim rests on a substantial evidentiary foundation: two formal licensing letters, an in-person meeting, Lumicore's continued manufacture and sale of accused products generating nearly $265 million in annual revenue, and the launch of an entirely new infringing product line after actual notice. Lumicore's only response has been to wave the flag of "competent legal opinions" — opinions it obtained, opinions it invoked to OWS in pre-suit correspondence, opinions it pleaded in its Answer, and opinions its General Counsel invoked at deposition — while simultaneously refusing to let anyone see them. This is the quintessential sword-and-shield maneuver that the waiver doctrine was designed to prevent.
Lumicore cannot simultaneously wield its counsel's opinions as a shield against willful infringement while refusing to produce those very opinions for examination. The law is clear: a party that injects the advice it received from counsel into a litigation — as Lumicore has done here — waives the attorney-client privilege and work-product protection with respect to those communications. OWS respectfully requests that the Court compel production.
FACTUAL BACKGROUND
A. The Asserted Patents and Accused Products
OWS is a Delaware corporation headquartered in Santa Clara, California. Founded in 2008, OWS is now the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, serving customers including major cloud-computing providers and telecommunications carriers. OWS's technology is protected by a robust intellectual property portfolio consisting of 142 issued U.S. patents and 58 pending applications, spanning foundational innovations in silicon photonics, coherent optical communications, and photonic integrated circuit design.
In this action, OWS asserts four U.S. utility patents:
U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss." The '847 Patent was filed on September 14, 2016, and issued on March 19, 2019. It was originally assigned to OWS. The '847 Patent claims a novel waveguide multiplexer architecture that enables high-density, low-loss optical signal multiplexing on a silicon photonic chip — a critical component in modern data-center transceivers. The '847 Patent has 24 claims, including 3 independent claims, and has never been the subject of an inter partes review or other post-grant proceeding.
U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate." The '193 Patent was filed on April 7, 2017, and issued on January 12, 2021. It was originally assigned to OWS. The '193 Patent addresses the integration of coherent optical transceiver functionality onto a single silicon substrate, enabling dramatically higher data throughput while reducing power consumption and module size. The '193 Patent has 32 claims, including 4 independent claims.
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." The '562 Patent was filed on November 22, 2014, and issued on June 13, 2017. It was originally assigned to Solara Optics, Inc., a former OWS competitor that specialized in thermal management solutions for photonic devices. OWS acquired the '562 Patent, along with Solara's broader patent portfolio and related assets, pursuant to an Asset Purchase Agreement dated June 15, 2018. The total consideration for the Solara acquisition was $34.5 million. The '562 Patent claims a method for embedding micro-channel heat sinks directly within a photonic integrated circuit to dissipate thermal energy, a technique critical to maintaining signal integrity and extending device lifespan at high data rates. The '562 Patent has 18 claims, including 2 independent claims.
U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers." The '015 Patent was filed on August 30, 2019, and issued on August 2, 2022. It was originally assigned to OWS. The '015 Patent claims a grating coupler design that efficiently couples light of diverse polarization states into a silicon photonic waveguide, enabling improved sensitivity and throughput in transceiver modules. The '015 Patent has 28 claims, including 3 independent claims.
Defendant Lumicore Technologies, Inc. is a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore designs, manufactures, and sells silicon photonic transceiver modules for data-center and telecommunications applications. Lumicore went public on the Nasdaq stock exchange in March 2022 at an initial public offering price of $24 per share. As of the April 22, 2024 filing date of this action, Lumicore had approximately 91.8 million shares outstanding and a market capitalization of approximately $3.4 billion (based on a closing price of approximately $37 per share).
OWS accuses three Lumicore product lines of infringing the Asserted Patents:
LumiLink 400G-ZR+. Lumicore launched the LumiLink 400G-ZR+ coherent transceiver module in Q3 2022. The LumiLink 400G-ZR+ is designed for metro and long-haul data-center interconnect applications and supports 400 Gbps data rates over distances of up to 120 kilometers. OWS alleges that the LumiLink 400G-ZR+ infringes the '847, '193, and '562 Patents. Lumicore reported fiscal year 2023 revenue of $94.8 million for the LumiLink 400G-ZR+ product family.
LumiLink 800G-DR8. Lumicore launched the LumiLink 800G-DR8 short-reach transceiver module in Q1 2023. The LumiLink 800G-DR8 is designed for intra-data-center connectivity and supports 800 Gbps aggregate data rates using eight lanes of 100 Gbps each. OWS alleges that the LumiLink 800G-DR8 infringes all four Asserted Patents — the '847, '193, '562, and '015 Patents. Lumicore reported fiscal year 2023 revenue of $128.4 million for the LumiLink 800G-DR8 product family, making it Lumicore's highest-revenue transceiver product.
LumiEdge 1600G-LR. Lumicore launched the LumiEdge 1600G-LR long-reach transceiver module in Q4 2023 — critically, after Lumicore had received actual notice of all four Asserted Patents through FairPoint's two licensing letters and the April 2023 in-person meeting. The LumiEdge 1600G-LR is designed for next-generation data-center interconnect applications and supports 1.6 Tbps data rates. OWS alleges that the LumiEdge 1600G-LR infringes the '193 and '015 Patents. Lumicore reported fiscal year 2023 revenue of $41.7 million for the LumiEdge 1600G-LR product family (reflecting a partial year of sales following its Q4 2023 launch).
Total accused-product revenue for fiscal year 2023 was $264.9 million. The accused products represent a substantial and growing share of Lumicore's overall revenue.
B. Pre-Suit Notice and Licensing Negotiations
The factual record establishes that Lumicore received extensive, actual notice of OWS's patent rights well before the filing of this action and well before the launch of the LumiEdge 1600G-LR product.
October 2022: Internal Identification and Teardown Analysis. In October 2022, OWS's internal engineering team, under the direction of OWS's Chief Technology Officer, Dr. Jian-Wei Huang, identified potential infringement by Lumicore's then-recently-launched LumiLink 400G-ZR+ product. Upon identifying the potential infringement, OWS retained Benchmark Semiconductor Analysis, LLC, a leading semiconductor reverse-engineering firm, to perform a comprehensive teardown and reverse-engineering analysis of the LumiLink 400G-ZR+. The teardown was led by Benchmark's lead engineer, Kevin Ng, and involved detailed physical and optical characterization of the LumiLink 400G-ZR+ transceiver module's internal components, including its silicon photonic integrated circuit die.
December 12, 2022: Benchmark Teardown Report. On December 12, 2022, Benchmark delivered its teardown report to OWS. The report confirmed the use of accused waveguide multiplexer structures that map to the claims of the '847 Patent, coherent transceiver integration on silicon substrates corresponding to the '193 Patent claims, and thermal management micro-channel heat sink structures corresponding to the '562 Patent claims. The Benchmark report provided the technical foundation for OWS's subsequent licensing outreach to Lumicore.
January 15, 2023: First FairPoint Licensing Letter. On January 15, 2023, FairPoint Licensing Group, LLC, acting as OWS's authorized licensing agent, sent a formal licensing and notice letter to Lumicore's General Counsel, Raymond Bautista. The letter was sent by Angela Reeves, FairPoint's Managing Director, a former patent licensing executive with over 20 years of experience in semiconductor IP licensing. The January 15 letter identified three of the four Asserted Patents — the '847, '193, and '562 Patents — and specifically accused the LumiLink 400G-ZR+ of infringement. The letter included a detailed claim chart mapping the relevant patent claims to the accused product's features, as identified in the Benchmark teardown report. The letter invited Lumicore to enter into good-faith licensing discussions and offered to schedule a meeting to discuss terms. A copy of the January 15, 2023 letter is attached hereto as Exhibit C. This letter constituted actual notice of OWS's patent rights.
February 28, 2023: Lumicore's Initial Response. On February 28, 2023, Lumicore responded to the FairPoint letter through its outside counsel, Hawthorne Vega & Cruz LLP. The response was authored by Catherine "Kate" Rourke, the lead partner at Hawthorne Vega & Cruz handling Lumicore's patent matters. The response disputed infringement of the identified patents and questioned the validity of the asserted patents, raising prior art arguments. The response did not reference any opinion-of-counsel letters at that time.
April 20, 2023: In-Person Licensing Meeting. On April 20, 2023, representatives of OWS and Lumicore met in person in Austin, Texas, to discuss the licensing dispute. The meeting was attended by Angela Reeves (FairPoint), Rebecca Tanaka (OWS's General Counsel), Raymond Bautista (Lumicore's General Counsel), and Kate Rourke (Hawthorne Vega & Cruz LLP). The meeting lasted approximately three hours. During the meeting, FairPoint and OWS presented detailed technical analyses demonstrating infringement of the '847, '193, and '562 Patents by the LumiLink 400G-ZR+. No resolution was reached. Per Ms. Reeves's deposition testimony taken on December 10, 2024, Lumicore's representatives showed "no interest in negotiating" and indicated that Lumicore intended to continue selling the accused products.
May 15, 2023: Second FairPoint Licensing Letter. On May 15, 2023, FairPoint sent a second licensing letter to Mr. Bautista. This supplemental letter added the '015 Patent — which had issued on August 2, 2022 — to the list of asserted patents and expanded the accused products to include the LumiLink 800G-DR8, which Lumicore had launched in Q1 2023. The May 15 letter included additional claim charts and reiterated OWS's invitation to negotiate a license. A copy of the May 15, 2023 letter is attached hereto as Exhibit D.
C. The July 10, 2023 Declination Letter Referencing "Competent Legal Opinions"
On July 10, 2023, Lumicore formally declined to take a license under any of the Asserted Patents. The declination letter was authored by Raymond Bautista, Lumicore's General Counsel, and addressed to FairPoint Licensing Group, LLC and OWS. The letter is attached hereto as Exhibit A and is the central document at issue in this motion.
The July 10, 2023 letter does not merely deny infringement in general terms. Rather, it affirmatively states that Lumicore has obtained "competent legal opinions" concluding that Lumicore's products do not infringe OWS's patents. The letter further states that Lumicore is "confident in its freedom to operate" in view of the Asserted Patents and that Lumicore considers the matter closed. The letter references both the January 15, 2023 and May 15, 2023 FairPoint licensing letters and identifies Lumicore's position that the '847, '193, '562, and '015 Patents are either not infringed or invalid.
The significance of this letter cannot be overstated. By voluntarily and affirmatively representing to OWS that Lumicore had obtained "competent legal opinions" of non-infringement, Lumicore made a strategic decision to invoke the substance and existence of its counsel's advice as justification for its refusal to negotiate and its continued manufacture and sale of the accused products. This voluntary disclosure was not compelled. It was a deliberate choice by Lumicore to deploy its counsel's opinions as a commercial and legal tool.
Despite this declination and asserted reliance on counsel opinions, Lumicore proceeded to launch a new accused product — the LumiEdge 1600G-LR — in Q4 2023. OWS's Complaint (D.E. 1, filed April 22, 2024) alleges that the LumiEdge 1600G-LR infringes the '193 and '015 Patents. The launch of a new accused product after receipt of actual notice of all four Asserted Patents, and after Lumicore's own invocation of "competent legal opinions," raises serious questions about the scope and adequacy of those opinions — questions that can only be answered through production.
D. Lumicore's Assertion of Advice-of-Counsel Defense in This Litigation
OWS filed its Complaint on April 22, 2024 (D.E. 1), alleging infringement of the four Asserted Patents by the three accused product lines. The Complaint includes a count for willful infringement, seeking enhanced damages under 35 U.S.C. § 284. The willfulness allegations are based on Lumicore's actual knowledge of the Asserted Patents (established through the FairPoint licensing letters and in-person meeting), Lumicore's continued manufacture and sale of the accused products after receiving such notice, and Lumicore's launch of the LumiEdge 1600G-LR after actual notice.
In its Answer and Counterclaims (D.E. 12, filed June 17, 2024), Lumicore raised numerous affirmative defenses, including defenses directed to OWS's willful infringement allegations. Relevant excerpts from D.E. 12 are attached as Exhibit E. Among its affirmative defenses, Lumicore asserts that it acted in good faith based on advice of counsel in defending against OWS's willful infringement allegations. Lumicore further asserts counterclaims for: (i) declaratory judgment of non-infringement of each of the Asserted Patents; (ii) invalidity of the Asserted Patents under 35 U.S.C. §§ 102 and 103; and (iii) unenforceability of the Asserted Patents based on inequitable conduct.
Despite asserting an advice-of-counsel defense in its Answer and despite Lumicore's pre-suit invocation of "competent legal opinions" in the July 10, 2023 declination letter, Lumicore has refused to produce the opinion letters or any related communications. In its objections and responses to OWS's First Set of Requests for Production (served August 5, 2024), Lumicore asserted attorney-client privilege and work-product protection over all responsive documents, including opinion-of-counsel letters, drafts, and related communications.
E. The December 3, 2024 Deposition of Raymond Bautista
On December 3, 2024, OWS deposed Lumicore's General Counsel, Raymond Bautista, pursuant to Federal Rule of Civil Procedure 30(b)(1). The deposition was taken at the offices of Hawthorne Vega & Cruz LLP in Austin, Texas. Relevant excerpts from the deposition transcript are attached hereto as Exhibit B.
Mr. Bautista's testimony established the following:
Confirmation of receipt of FairPoint's January 15, 2023 letter. Mr. Bautista confirmed that he received FairPoint's January 15, 2023 licensing letter, which identified the '847, '193, and '562 Patents and accused the LumiLink 400G-ZR+ of infringement. (Ex. B, Bautista Dep. Tr. 34:8–35:2.)
Forwarding to outside counsel. Mr. Bautista confirmed that he forwarded the FairPoint letter to Lumicore's outside counsel at Hawthorne Vega & Cruz LLP within three business days of receipt. (Ex. B, Bautista Dep. Tr. 37:14–38:6.) This testimony establishes that Lumicore's outside counsel was aware of OWS's patent assertions no later than January 2023.
Privilege invocation regarding substance of opinions. When asked about the substance and identity of the "competent legal opinions" referenced in the July 10, 2023 declination letter, Mr. Bautista refused to answer on privilege grounds, invoking both attorney-client privilege and work-product protection. (Ex. B, Bautista Dep. Tr. 52:3–54:19.) Specifically, Mr. Bautista refused to identify the author(s) of the opinion letters, the date(s) the opinions were rendered, the patents addressed by the opinions, the specific products addressed by the opinions, or the conclusions reached by the opinions. Counsel for Lumicore, Samantha Briggs, instructed Mr. Bautista not to answer each of these questions, asserting privilege as to each.
No formal design-around analysis before LumiEdge 1600G-LR launch. In a particularly significant admission, Mr. Bautista testified that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR product in Q4 2023. (Ex. B, Bautista Dep. Tr. 71:5–72:18.) This admission raises a serious inference that Lumicore did not seek or obtain any opinion of counsel before launching its newest accused product, even though Lumicore had received actual notice of all four Asserted Patents by May 2023.
Consultation with outside counsel regarding the declination letter. Mr. Bautista confirmed that the July 10, 2023 declination letter was sent after consultation with Hawthorne Vega & Cruz LLP. (Ex. B, Bautista Dep. Tr. 58:9–59:3.) This confirms that outside counsel was involved in the decision to reference "competent legal opinions" in the declination letter — further demonstrating the deliberate nature of Lumicore's strategy.
Continued sales after notice. Mr. Bautista acknowledged that Lumicore continued to sell all three accused product lines after receiving FairPoint's licensing letters. (Ex. B, Bautista Dep. Tr. 74:12–75:8.)
Mr. Bautista's deposition testimony underscores the urgent need for the Court to rule on whether Lumicore has waived privilege by placing the opinions at issue. Lumicore's privilege assertions at deposition cannot stand in the face of its affirmative reliance on those same opinions in its pre-suit communications and in its pleadings.
F. Meet-and-Confer Efforts
Consistent with the Local Rules of the Eastern District of Texas and the Court's Docket Control Order (D.E. 27, issued August 12, 2024), counsel for OWS and Lumicore engaged in extensive meet-and-confer efforts regarding Lumicore's refusal to produce the opinion-of-counsel letters.
Wendy Schultz, lead associate at Calderwood & Harkness LLP, and Samantha Briggs, the Hawthorne Vega & Cruz associate responsible for discovery matters, participated in three separate telephonic meet-and-confer conferences: September 30, 2024; October 4, 2024; and October 10, 2024. During these conferences, OWS's counsel explained the legal basis for OWS's position that Lumicore had waived privilege by asserting an advice-of-counsel defense and by referencing "competent legal opinions" in its July 10, 2023 declination letter. OWS's counsel also requested that Lumicore produce a privilege log identifying the withheld opinion letters with sufficient particularity to allow the Court to evaluate the privilege claims; Lumicore produced a privilege log on October 7, 2024, but the entries were generic and did not provide meaningful detail regarding the number, authorship, date, or subject matter of the withheld documents.
Lumicore's counsel maintained that the opinion letters are protected by attorney-client privilege and the work-product doctrine and that Lumicore has not waived either protection. Lumicore further indicated that it might produce the opinion letters at a later stage in the litigation (i.e., the expert report phase) but refused to commit to a timeline or scope of production.
The parties' meet-and-confer efforts are memorialized in correspondence dated October 14, 2024 from Wendy Schultz to Samantha Briggs. That letter is referenced in the Declaration of Wendy Schultz (D.E. 27) and is attached hereto as Exhibit F. The parties were unable to reach agreement, necessitating this motion.
LEGAL STANDARD
Under Federal Rule of Civil Procedure 37(a)(3)(B), a party may move for an order compelling discovery when the responding party has failed to produce documents or has withheld documents based on an objection, including a claim of privilege. Fed. R. Civ. P. 37(a)(3)(B)(iv). A motion to compel is the proper procedural vehicle for challenging a party's assertion of privilege over documents that the moving party contends are subject to waiver. See In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000).
The Court has broad discretion under Federal Rule of Civil Procedure 26(b)(1) to order the production of any matter that is relevant to a party's claim or defense and proportional to the needs of the case. Fed. R. Civ. P. 26(b)(1). The relevance of opinion-of-counsel letters to OWS's willful infringement claim and Lumicore's advice-of-counsel defense is beyond dispute. The proportionality factors — including the importance of the issues at stake in this action, the amount in controversy, and the importance of the discovery in resolving the issues — all favor production. The accused products generated nearly $265 million in revenue in fiscal year 2023 alone, and OWS seeks enhanced damages for willful infringement under 35 U.S.C. § 284 — potentially tripling any damages award.
The party asserting privilege bears the burden of establishing each element of the claimed privilege. United States v. El-Sayegh, 131 F.3d 158, 160 (D.C. Cir. 1997); see also In re Grand Jury Subpoena, 561 F.3d 408, 411 (5th Cir. 2009) (applying federal common law of privilege and placing the burden on the party asserting privilege). Similarly, the party claiming privilege bears the burden of demonstrating that no waiver has occurred. Conoco Inc. v. U.S. Dep't of Justice, 687 F.2d 724, 730 (3d Cir. 1982). Where, as here, the responding party has affirmatively injected privileged communications into the litigation, the burden falls squarely on that party to establish that the privilege remains intact notwithstanding its own conduct.
In patent cases, the Federal Circuit's law governs the scope and application of the attorney-client privilege as it relates to advice-of-counsel defenses and willful infringement. In re Queen's Univ. at Kingston, 820 F.3d 1287, 1294 (Fed. Cir. 2016); In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1298 (Fed. Cir. 2006). Regional circuit law governs general discovery disputes, but where the privilege issue is "intertwined with substantive issues of patent law unique to the Federal Circuit," Federal Circuit law controls. Id.
In the Eastern District of Texas, discovery disputes are resolved under the Local Rules and the Court's Docket Control Order. The Docket Control Order in this case (D.E. 27, issued August 12, 2024) requires the parties to engage in good-faith meet-and-confer efforts before filing any discovery motion. As detailed above, OWS has satisfied this requirement.
ARGUMENT
I. Lumicore Has Waived the Attorney-Client Privilege by Placing Its Counsel's Opinions "At Issue"
A. Lumicore Affirmatively Injected Its Counsel's Opinions into This Litigation. The "at issue" waiver doctrine provides that a party waives the attorney-client privilege when it places the substance of privileged communications directly at issue in the litigation. The Federal Circuit has recognized this principle in the patent context, holding that "[w]hen a party relies on the advice it received from its counsel as a factual issue in the litigation, the party does so at the cost of waiving the attorney-client privilege as to those communications." Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1344–46 (Fed. Cir. 2004) (en banc). In Knorr-Bremse, the Federal Circuit overruled the prior inference that a defendant's failure to produce an opinion of counsel could be used as evidence of willful infringement, but it simultaneously reinforced the principle that a party who does invoke an opinion of counsel waives the privilege. Id. at 1344 ("The assertion of an 'advice of counsel' defense to a charge of willful infringement… places the advice received at issue.").
The Fifth Circuit, whose law governs general privilege disputes in this district, applies the same principle. See Conkling v. Turner, 883 F.2d 431, 435 (5th Cir. 1989) (implied waiver of privilege occurs where the party "has injected into the case an issue that in fairness requires an examination of otherwise privileged communications"); see also Rhone-Poulenc Rorer Inc. v. Home Indem. Co., 32 F.3d 851, 863 (3d Cir. 1994) (party waives privilege when it "makes a testimonial use of privileged communications or places the privileged communications at issue in the litigation").
Here, Lumicore has injected its counsel's opinions into this litigation through at least three independent acts:
First, the July 10, 2023 declination letter. Lumicore's July 10, 2023 letter to FairPoint and OWS explicitly states that Lumicore obtained "competent legal opinions" concluding that its products do not infringe OWS's patents. (Ex. A.) By affirmatively communicating this to OWS, Lumicore voluntarily disclosed both the fact of its reliance on counsel advice and its characterization of the substance of that advice (i.e., that the opinions concluded non-infringement). This was not a passing reference or inadvertent disclosure. It was a deliberate, strategic communication crafted in consultation with outside counsel. Mr. Bautista confirmed at deposition that the declination letter was sent after consultation with Hawthorne Vega & Cruz LLP. (Ex. B, Bautista Dep. Tr. 58:9–59:3.)
Second, Lumicore's Answer and Counterclaims (D.E. 12). In its Answer, Lumicore asserts affirmative defenses to OWS's willful infringement allegations based on good faith reliance on advice of counsel. (Ex. E.) This pleading puts the advice-of-counsel defense squarely before the Court and the jury. It is a classic invocation of the defense described in Knorr-Bremse, Seagate, and Halo. A party cannot assert in its Answer that it relied on counsel's advice in good faith and then refuse to produce the advice on which it claims to have relied. To do so would render the privilege a tool of obstruction rather than protection.
Third, the Bautista deposition. At his December 3, 2024 deposition, Mr. Bautista was asked about the substance of the "competent legal opinions" referenced in the July 10, 2023 declination letter. Although Mr. Bautista refused to provide the substance of the opinions, he did not disclaim reliance on the opinions. To the contrary, his invocation of privilege presupposed the existence and relevance of the opinions — he was protecting something. Moreover, Mr. Bautista confirmed the factual predicate for the at-issue waiver: the opinions exist, they were obtained from outside counsel, and Lumicore relied on them in deciding to decline a license and continue selling the accused products. (Ex. B, Bautista Dep. Tr. 52:3–54:19.)
Each of these acts, standing alone, would be sufficient to trigger at-issue waiver. Taken together, they constitute an overwhelming case for disclosure. Lumicore cannot claim it relied on "competent legal opinions" to rebut willfulness and then refuse to produce those opinions. The privilege does not exist to facilitate gamesmanship. See In re Grand Jury Proceedings, 219 F.3d 175, 182 (2d Cir. 2000) ("The privilege was intended as a shield, not a sword.").
B. The Sword-and-Shield Doctrine Compels Disclosure. The "sword and shield" doctrine is a corollary of the at-issue waiver principle. It provides that a party may not use the privilege as both a sword and a shield — that is, a party may not use privileged communications offensively (as a sword) to support a claim or defense while simultaneously invoking the privilege defensively (as a shield) to prevent the opposing party from examining those same communications. See, e.g., Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162 (9th Cir. 1992) ("The quintessential example is the situation in which the privilege holder asserts a claim or defense, and then attempts to prove that claim or defense by disclosing or describing an attorney-client communication, while asserting the privilege to bar the opponent's access to the communication."); In re Lott, 424 F.3d 446, 453 (6th Cir. 2005).
Lumicore's conduct in this case is a textbook illustration of the sword-and-shield maneuver:
• As a sword, Lumicore deploys its counsel's opinions to defend against willful infringement. It told OWS it had "competent legal opinions" of non-infringement. It pleaded good-faith reliance on counsel in its Answer. It will inevitably seek to use the existence and substance of those opinions at trial to persuade the jury that its infringement was not willful.
• As a shield, Lumicore invokes attorney-client privilege and work-product protection to prevent OWS from obtaining the opinions and testing their adequacy, scope, timing, and completeness.
The unfairness of this posture is manifest. If Lumicore is permitted to withhold the opinion letters, it will be free to present a sanitized, self-serving narrative of its good-faith reliance at trial — a narrative that OWS will have no means of challenging. The adequacy and completeness of the opinions are critical to the willful infringement inquiry, and numerous questions must be answered through production and examination of the opinions themselves:
• Did the opinions address all four Asserted Patents, or only the three identified in FairPoint's first letter (January 15, 2023)?
• Were the opinions updated after FairPoint's second letter (May 15, 2023) added the '015 Patent and the LumiLink 800G-DR8 as an accused product?
• Were the opinions obtained before or after each accused product's launch? In particular, was any opinion obtained before the launch of the LumiEdge 1600G-LR in Q4 2023?
• Did the opinions consider the specific claim limitations at issue in this case — including the 14 disputed claim terms that remain in controversy as of the January 15, 2025 Joint Claim Construction Chart?
• Were the opinions based on a complete and accurate understanding of the accused products' technical architecture? Were teardown analyses or product specifications provided to opinion counsel?
• Did the opinions address both non-infringement and invalidity, or only one of these grounds?
• Who prepared the opinions? Were they prepared by litigation counsel (which would raise separate concerns) or by independent opinion counsel?
These questions go to the very heart of the willful infringement inquiry. The Court should not permit Lumicore to shield the answers while simultaneously relying on the opinions as a defense. The sword-and-shield doctrine compels production.
II. Under *Halo* and *Seagate*, Lumicore's Reliance on Advice of Counsel as a Defense to Willful Infringement Triggers Waiver
A. The *Halo* Framework for Willful Infringement. In Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), the Supreme Court articulated the standard for enhanced damages under 35 U.S.C. § 284 in patent infringement cases. The Court held that enhanced damages are reserved for "egregious cases typified by willful misconduct" and that the relevant inquiry focuses on the infringer's subjective knowledge and intent at the time of the challenged conduct. Id. at 103–04. The Court rejected the Federal Circuit's prior two-part test from In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), which had required proof of both objective recklessness and subjective bad faith, and replaced it with a more flexible, totality-of-the-circumstances approach. Halo, 579 U.S. at 103.
Under Halo, the critical question is whether the infringer's conduct was sufficiently culpable to warrant enhancement — i.e., whether the infringer "knew of the patent, knew it was infringing, and nonetheless continued to infringe." WCM Indus., Inc. v. IPS Corp., 721 F. App'x 959, 970 (Fed. Cir. 2018). Advice of counsel is a key factual issue in this inquiry. A defendant may seek to show that it relied on competent counsel's advice that its products did not infringe or that the asserted patents were invalid, thereby negating the subjective intent required for willfulness. See SiOnyx, LLC v. Hamamatsu Photonics K.K., 330 F. Supp. 3d 574, 609 (D. Mass. 2018); Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1244–45 (Fed. Cir. 2017).
Prior to Halo, the Federal Circuit in Seagate directly addressed the interplay between the advice-of-counsel defense and the attorney-client privilege. The Seagate court held that "when an alleged infringer asserts its advice-of-counsel defense regarding willful infringement of a particular patent, this constitutes a waiver of the attorney-client privilege" for communications "pertaining to the subject matter of the opinion." Seagate, 497 F.3d at 1373. Although Halo abrogated Seagate's two-part willfulness test, the underlying waiver principle survives. Post-Halo, courts continue to hold that a defendant who invokes advice of counsel to rebut willfulness waives the attorney-client privilege as to the relevant communications. See, e.g., WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016); Ostrander Enterprises, Inc. v. Alstom Grid, Inc., No. 15-224, 2016 WL 4009913, at *4 (W.D. Pa. July 27, 2016).
The rationale is straightforward: the advice-of-counsel defense places the substance of counsel's advice at the center of the willfulness inquiry. The patent holder is entitled to examine the advice to test its adequacy and to determine whether the defendant's reliance was genuine. Without access to the opinion letters, the patent holder cannot meaningfully challenge the defense, and the factfinder cannot properly evaluate it. Waiver is therefore a necessary incident of the defense.
B. The Scope of Waiver Extends to All Opinion Letters Concerning the Asserted Patents and Accused Products. The waiver triggered by assertion of an advice-of-counsel defense is not limited to the final opinion letter itself. The Federal Circuit has held that the waiver extends to "all communications between the client and counsel concerning the subject matter of the opinion." In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1302 (Fed. Cir. 2006). In EchoStar, the Federal Circuit explained that "when a party defends its actions by disclosing an exculpatory opinion of counsel, [it] waives the attorney-client privilege with respect to all communications with counsel regarding the same subject matter." Id. at 1299.
Applied here, the scope of the waiver extends to:
1. All opinion-of-counsel letters prepared by Hawthorne Vega & Cruz LLP or any other counsel for Lumicore concerning the infringement, validity, and/or enforceability of the '847, '193, '562, and '015 Patents as applied to the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR product lines.
2. Drafts of opinion letters and communications between Lumicore and its counsel regarding the preparation, scope, and substance of the opinions. Drafts are within the scope of the waiver because they reflect the evolution of counsel's analysis and may reveal whether the final opinions omitted or glossed over material issues. See EchoStar, 448 F.3d at 1303 ("[T]he advice itself and the potential ramifications of that advice must be available to both parties.").
3. Underlying analyses provided to or prepared by opinion counsel, including technical analyses, claim charts, product specifications, and any materials used to form the basis of the opinions.
4. Updates, supplements, and follow-up analyses to the opinions, including — critically — any opinions or analyses obtained in connection with the launch of the LumiEdge 1600G-LR product in Q4 2023. Mr. Bautista's deposition admission that no formal design-around analysis was commissioned before the LumiEdge launch raises the distinct possibility that no opinion was obtained for this product. That fact, in itself, is highly relevant to willfulness and can only be confirmed through compelled production.
OWS is entitled to examine whether Lumicore obtained opinions covering all four Asserted Patents or only the three identified in FairPoint's first letter (January 15, 2023). The '015 Patent was not identified until FairPoint's second letter (May 15, 2023). If Lumicore's "competent legal opinions" were limited to the '847, '193, and '562 Patents, then Lumicore launched the LumiEdge 1600G-LR — which OWS accuses of infringing the '193 and '015 Patents — without any opinion of counsel regarding the '015 Patent. This would dramatically undermine Lumicore's advice-of-counsel defense as to that product and patent.
Similarly, OWS is entitled to examine whether the opinions addressed only the LumiLink 400G-ZR+ (the only product accused in FairPoint's first letter) or also covered the LumiLink 800G-DR8 and LumiEdge 1600G-LR products. An opinion limited to one product does not provide a basis for good-faith reliance as to different products with potentially different technical architectures.
The scope of the waiver is not punitive; it is necessary to ensure that the willfulness inquiry is conducted on a complete factual record.
III. The Work-Product Doctrine Does Not Shield the Opinion Letters from Production
In addition to asserting attorney-client privilege, Lumicore has invoked the work-product doctrine, codified in Federal Rule of Civil Procedure 26(b)(3), to resist production of the opinion letters. This assertion fails for multiple independent reasons.
First, the opinion letters are not work product. The work-product doctrine protects "documents and tangible things that are prepared in anticipation of litigation or for trial by or for another party or its representative." Fed. R. Civ. P. 26(b)(3)(A). The critical question is whether the opinion letters were prepared "in anticipation of litigation" or for a different purpose. Here, the record demonstrates that the opinion letters were obtained for business and commercial purposes — specifically, to determine whether Lumicore's products infringed OWS's patents and to evaluate Lumicore's options for responding to FairPoint's licensing outreach (including whether to design around the patents, take a license, or continue selling the products). Opinion-of-counsel letters obtained for such purposes are not prepared "in anticipation of litigation" and do not qualify as work product. See In re Seagate, 497 F.3d at 1376 (distinguishing between opinion letters obtained for business purposes and trial-preparation materials); Electro Scientific Indus., Inc. v. Dynamic Details, Inc., 307 F. Supp. 2d 1343, 1345–46 (N.D. Ga. 2004) (pre-suit freedom-to-operate opinion not work product).
The opinion letters at issue were obtained in 2023 — well before the April 22, 2024 filing of this action. They were referenced in Lumicore's pre-suit declination letter of July 10, 2023, confirming that they were not prepared in anticipation of this specific litigation. Indeed, when Lumicore obtained the opinions, no litigation was pending or even threatened. The FairPoint letters were licensing letters, not cease-and-desist letters or complaints. Lumicore was free to take a license, design around, or refuse to engage — as it ultimately did. The opinions were obtained to inform that commercial decision, not to prepare for trial.
Second, even if the opinion letters constitute work product, the protection has been waived. The same waiver analysis that applies to attorney-client privilege applies with equal force to work-product protection when the party relies on the substance of counsel's mental impressions and legal conclusions. The Federal Circuit has squarely addressed this issue. In EchoStar, the court held that assertion of an advice-of-counsel defense waives work-product protection as well as attorney-client privilege:
"[A] party asserting the advice of counsel defense to a charge of willful infringement waives the attorney-client privilege and work product immunity with respect to all communications on the same subject between the client and the attorney." In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1302–03 (Fed. Cir. 2006).
The EchoStar court reasoned that when a party places counsel's advice at issue, both the attorney-client privilege and the work-product doctrine must yield to the opposing party's need to examine the advice. The party cannot selectively disclose favorable aspects of counsel's advice while invoking work-product protection to shield unfavorable aspects. Id. at 1303.
Third, OWS can demonstrate substantial need and undue hardship. Even if work-product protection applied and had not been waived, OWS could overcome the protection by demonstrating "substantial need" for the materials and that it "cannot, without undue hardship, obtain their substantial equivalent by other means." Fed. R. Civ. P. 26(b)(3)(A)(ii). The opinion letters are uniquely in Lumicore's possession and reflect Lumicore's counsel's analysis of the Asserted Patents as applied to the accused products. There is no other means by which OWS can obtain the substance of that analysis. Moreover, the opinions are directly relevant to the central issue in OWS's willful infringement claim — Lumicore's subjective state of mind and the adequacy of any precautions it took before continuing to sell the accused products. OWS cannot prepare its case on willfulness without examining the opinions on which Lumicore claims to have relied.
IV. Lumicore's Stated Justifications for Withholding Are Meritless
During the parties' meet-and-confer conferences, Lumicore advanced several justifications for withholding the opinion letters. None has merit.
Lumicore's Argument 1: Lumicore contends that it has not formally "asserted" an advice-of-counsel defense. Lumicore takes the position that merely referencing counsel's opinions in a pre-suit letter and pleading good faith in its Answer do not constitute a formal assertion of the advice-of-counsel defense. According to Lumicore, until it affirmatively tenders the opinion letters as evidence at trial, no waiver occurs.
This argument is wrong as a matter of law. A party need not use "magic words" or formally designate its defense as the "advice of counsel defense" to trigger waiver. The waiver is functional, not formal. When a party's conduct demonstrates reliance on counsel's advice to rebut willfulness, the waiver is triggered — regardless of whether the party uses the precise label "advice of counsel defense." See Westvale Holdings. v. Pemberton Corporation, 543 F.3d 683, 699 (Fed. Cir. 2008) (finding waiver where party "relied on advice of counsel to rebut the charge of willful infringement, even though it did not formally invoke the 'advice of counsel' defense"); Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305, 1313 (Fed. Cir. 2010).
Here, the evidence of reliance is overwhelming: (a) Lumicore's July 10, 2023 letter expressly cited "competent legal opinions" of non-infringement; (b) Lumicore's Answer (D.E. 12) pleaded good faith reliance on advice of counsel as a defense to willful infringement; and (c) Mr. Bautista's deposition testimony asserted privilege over the substance of the opinions while simultaneously maintaining that Lumicore's conduct was in good faith. The functional assertion of reliance on counsel advice has been made. Waiver has occurred.
Lumicore's Argument 2: Lumicore contends that the July 10, 2023 letter was a pre-litigation communication, not an in-court assertion, and therefore cannot trigger waiver. Lumicore argues that a pre-suit letter referencing counsel's opinions, standing alone, is insufficient to waive the privilege because the waiver doctrine applies only to in-court assertions.
This argument ignores the broader record. The July 10, 2023 letter was not a standalone communication. It was part of a course of conduct that continued into this litigation through Lumicore's Answer and through Mr. Bautista's deposition testimony. The pre-litigation/in-litigation distinction is irrelevant where, as here, the party has brought the pre-suit communication and the opinions referenced therein into the litigation by pleading reliance on counsel advice and by invoking privilege over the opinions at deposition.
Moreover, courts routinely hold that a pre-suit communication referencing counsel's opinions, combined with in-suit reliance on that communication, effects waiver. See In re Seagate, 497 F.3d at 1373 (waiver applies to "communications pertaining to the subject matter of the opinion"); Brightwater Industries Pharms. Corp. v. Eon Labs Mfg., Inc., 206 F.R.D. 396, 399 (D. Del. 2002) (pre-suit opinion letter subject to production where party relied on counsel's advice in defense of willfulness). The July 10, 2023 letter is itself relevant evidence that Lumicore is relying on in this litigation. Lumicore's attempt to compartmentalize the pre-suit letter from its in-suit defenses is artificial and unavailing.
Lumicore's Argument 3: Lumicore contends that compelled production would chill attorney-client communications. Lumicore argues that ordering production of the opinion letters would have a chilling effect on attorney-client communications, discouraging companies from seeking legal advice about potential patent infringement.
The chilling-effect argument does not override the waiver doctrine. The Federal Circuit has considered and rejected this argument. In Knorr-Bremse, the Federal Circuit specifically addressed the concern that waiver might deter companies from obtaining opinion letters and held that the "proper balance" is to allow companies to obtain opinions without fear of an adverse inference if they choose not to rely on them — but to require disclosure if they do choose to rely on them. Knorr-Bremse, 383 F.3d at 1344–46. The waiver doctrine does not punish companies for seeking legal advice; it prevents companies from selectively deploying that advice as a litigation weapon while shielding it from scrutiny. A party that chooses to deploy counsel's opinions as part of its litigation strategy must accept the consequences of that choice, including disclosure. Lumicore was free to decline to reference its counsel's opinions in the July 10, 2023 letter and to refrain from pleading reliance on counsel in its Answer. Having chosen to do both, Lumicore cannot now complain that production of the opinions would chill future attorney-client communications.
Lumicore's Argument 4: Lumicore contends that the opinion letters may be produced at the expert-report stage. Lumicore has suggested that it may produce the opinion letters at a later stage, specifically at or near the deadline for expert reports. This suggestion is both inadequate and untimely.
There is no legal basis for deferring production. The opinion letters are responsive to OWS's discovery requests and are discoverable now. Fed. R. Civ. P. 26(b)(1). Deferral would prejudice OWS in multiple respects:
(i) Fact discovery. Fact discovery in this case closes on May 1, 2025. OWS is entitled to the opinion letters during fact discovery so that it can depose the author(s) of the opinions, examine the factual premises on which the opinions were based, and investigate whether Lumicore's reliance on the opinions was genuine and informed. If the opinions are not produced until the expert-report stage, OWS will have lost the opportunity to conduct this critical fact discovery.
(ii) Expert reports. OWS's expert reports are due on June 15, 2025. OWS's infringement expert, Dr. Caroline Ashford, must address the technical adequacy of Lumicore's non-infringement positions. OWS's damages expert, Dr. Lawrence Keating, must address willful infringement enhancement under the Read factors, which include the infringer's behavior as a party to the litigation, the defendant's size and financial condition, the closeness of the case, and the duration of the defendant's misconduct. See Read Corp. v. Portec, Inc., 970 F.2d 816, 827 (Fed. Cir. 1992). Both experts need access to the opinion letters well in advance of the expert-report deadline to prepare adequate reports.
(iii) Markman hearing. The Court has scheduled a Markman (claim construction) hearing for March 14, 2025. There are 14 disputed claim terms as of the January 15, 2025 Joint Claim Construction Chart. The opinion letters may reveal how Lumicore's own counsel interpreted the disputed claim terms — interpretations that could be highly relevant to the claim construction debate. OWS is entitled to that evidence before the Markman hearing.
For all of these reasons, deferral of production is unwarranted and would cause substantial prejudice to OWS.
V. The Relief Requested Is Narrowly Tailored and Subject to the Existing Protective Order
OWS's request is narrowly tailored to the four Asserted Patents and the three accused product lines. OWS does not seek Lumicore's general litigation strategy, trial-preparation materials, or communications between Lumicore and its litigation counsel regarding the prosecution of this case. OWS seeks only the opinion-of-counsel letters and related communications that Lumicore has placed at issue through its own conduct.
Specifically, OWS requests an order compelling Lumicore to produce:
1. All opinion-of-counsel letters, memoranda, and analyses prepared by or at the direction of Lumicore's counsel concerning the infringement, validity, and/or enforceability of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 as applied to the LumiLink 400G-ZR+, LumiLink 800G-DR8, and/or LumiEdge 1600G-LR product lines.
2. All drafts of such opinion letters, memoranda, and analyses, and all communications between Lumicore and its counsel relating to the preparation, scope, and substance of such opinion letters.
3. Any updates, supplements, or follow-up analyses to such opinion letters, including any opinions or analyses obtained in connection with the launch of the LumiEdge 1600G-LR product in Q4 2023, and any opinions or analyses obtained after Lumicore received FairPoint's second licensing letter on May 15, 2023.
The requested production is limited in scope and bounded by the subject matter of the waiver — the Asserted Patents and the accused products. It does not extend to communications on unrelated topics or to Lumicore's broader patent portfolio.
All documents produced pursuant to the Court's order may be designated under the Court's three-tier Stipulated Protective Order, entered in August 2024. That Protective Order provides for three levels of designation: "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code." Lumicore is free to designate the opinion letters at the level of protection it deems appropriate, thereby safeguarding any legitimate confidentiality interests. The Protective Order provides a well-established mechanism for protecting sensitive documents while ensuring that discovery proceeds in an orderly fashion. The existence of the Protective Order eliminates any argument that production would expose Lumicore to competitive harm.
OWS requests that production be completed within fourteen (14) days of the date of the Court's order. Given that the opinion letters and related communications are already in Lumicore's possession and have been identified on Lumicore's privilege log, there is no basis for additional delay.
CONCLUSION
For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court grant its Motion to Compel (D.E. 25) and enter an order directing Defendant Lumicore Technologies, Inc. to produce, within fourteen (14) days of the Court's order, all opinion-of-counsel letters, memoranda, analyses, drafts, and related communications concerning the infringement, validity, and/or enforceability of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 as applied to the LumiLink 400G-ZR+, LumiLink 800G-DR8, and/or LumiEdge 1600G-LR product lines.
OWS further respectfully requests that the Court award OWS its reasonable expenses, including attorneys' fees, incurred in connection with this motion pursuant to Federal Rule of Civil Procedure 37(a)(5)(A), which provides that the Court "must" award reasonable expenses, including attorneys' fees, incurred in making a motion to compel if the motion is granted, unless the opposing party's nondisclosure was "substantially justified" or other circumstances make an award of expenses unjust. Lumicore's withholding of the opinion letters in the face of its affirmative reliance on those very opinions is not substantially justified, and no circumstances render an award of expenses unjust.
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (CA Bar No. 247891; admitted pro hac vice E.D. Tex.)
Marcus Delgado (TX Bar No. 05738290) Wendy Schultz (CA Bar No. 301456; admitted pro hac vice E.D. Tex.) Omar Siddiqui (CA Bar No. 315782; admitted pro hac vice E.D. Tex.)
350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 426-7800 Facsimile: (213) 426-7801
and
1201 F Street NW, Suite 700 Washington, DC 20004
Of Counsel:
James "Jim" Callahan (TX Bar No. 03691445) WHITMORE & CALLAHAN LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 592-4200
Attorneys for Plaintiff Optiwave Semiconductor Corp.
CERTIFICATE OF SERVICE
I hereby certify that on October 21, 2024, the foregoing Plaintiff Optiwave Semiconductor Corp.'s Memorandum of Law in Support of Its Motion to Compel Defendant Lumicore Technologies, Inc. to Produce Opinion-of-Counsel Letters and all exhibits attached thereto were served via the Court's CM/ECF electronic filing system on all counsel of record, including:
Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer HAWTHORNE VEGA & CRUZ LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Attorneys for Defendant Lumicore Technologies, Inc.
Maria Garza TRASK EDDINGTON LLP 425 East Front Street, Suite 300 Tyler, Texas 75701 Local Counsel for Defendant Lumicore Technologies, Inc.
________________________________________
Alan Ngo
EXHIBITS LIST
The following exhibits are attached hereto and filed herewith:
Exhibit A: Lumicore Technologies, Inc.'s July 10, 2023 Declination Letter
Letter from Raymond Bautista, General Counsel of Lumicore Technologies, Inc., to FairPoint Licensing Group, LLC and Optiwave Semiconductor Corp., dated July 10, 2023, formally declining to take a license under OWS's patents. The letter contains the following key language: Lumicore states that it has obtained "competent legal opinions" that its products do not infringe OWS's patents and that Lumicore is "confident in its freedom to operate" in view of the Asserted Patents. The letter references both the January 15, 2023 and May 15, 2023 FairPoint licensing letters and identifies Lumicore's position that the '847, '193, '562, and '015 Patents are either not infringed or invalid.
Exhibit B: Excerpts from Deposition of Raymond Bautista (December 3, 2024)
Selected excerpts from the deposition transcript of Raymond Bautista, General Counsel of Lumicore Technologies, Inc., taken on December 3, 2024 in Austin, Texas. The excerpts include:
• Excerpt 1 (Tr. 34:8–35:2): Mr. Bautista confirms receipt of FairPoint's January 15, 2023 letter identifying the '847, '193, and '562 Patents and accusing the LumiLink 400G-ZR+ of infringement.
• Excerpt 2 (Tr. 37:14–38:6): Mr. Bautista confirms that he forwarded the FairPoint letter to Hawthorne Vega & Cruz LLP (outside counsel) within three business days of receipt.
• Excerpt 3 (Tr. 52:3–54:19): Mr. Bautista invokes attorney-client privilege and work-product protection when asked about the substance, identity, authorship, da