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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

Judge James R. Gilstrap

JURY TRIAL DEMANDED

PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MOTION TO COMPEL PRODUCTION OF DEFENDANT LUMICORE TECHNOLOGIES, INC.'S OPINION-OF-COUNSEL LETTERS PURSUANT TO FEDERAL RULES OF CIVIL PROCEDURE 26 AND 37

I. INTRODUCTION

Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully moves this Court for an order compelling Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant") to produce all opinion-of-counsel letters, memoranda, and related communications concerning the non-infringement and/or invalidity of U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent") (collectively, the "Asserted Patents") that Lumicore obtained in connection with OWS's pre-suit licensing outreach and the present litigation.

This motion is necessitated by Lumicore's steadfast refusal to produce these critical documents despite having affirmatively referenced "competent legal opinions" in its July 10, 2023 letter declining to take a license from OWS. That letter, signed by Lumicore's General Counsel Raymond Bautista, was sent in response to licensing outreach initiated by FairPoint Licensing Group, LLC ("FairPoint"), OWS's licensing agent, through its Managing Director Angela Reeves. In that letter, Mr. Bautista expressly stated that Lumicore had obtained "competent legal opinions" confirming that Lumicore's products do not infringe any valid claim of the Asserted Patents. Lumicore thus voluntarily disclosed to an adversary the existence, subject matter, and favorable conclusion of its opinion-of-counsel letters — yet now seeks to prevent OWS from examining the very opinions upon which Lumicore claims to have relied.

OWS's Complaint in this action asserts willful infringement of all four Asserted Patents (Count VII), and seeks enhanced damages pursuant to 35 U.S.C. § 284. Lumicore's reliance on opinion-of-counsel letters as a basis for its purported good-faith belief in non-infringement and invalidity — and its intention to deploy that reliance as a shield against OWS's willful infringement claim — constitutes a waiver of the attorney-client privilege and work-product protection as to the subject matter of those opinions. A party cannot selectively disclose the favorable conclusion of privileged communications while simultaneously shielding the underlying analysis from adversarial scrutiny. The "sword and shield" doctrine squarely forecloses Lumicore's position.

Despite multiple good-faith meet-and-confer efforts — including three telephonic conferences between Wendy Schultz of Calderwood & Harkness LLP, counsel for OWS, and Samantha Briggs of Hawthorne Vega & Cruz LLP, counsel for Lumicore, as memorialized in counsel's October 14, 2024 meet-and-confer correspondence (attached hereto as Exhibit 5 to the Declaration of Wendy Schultz) — Lumicore has maintained its blanket refusal to produce any opinion-of-counsel letters or related materials. The parties are at an impasse, and Court intervention is required.

OWS respectfully requests that the Court order Lumicore to produce all responsive opinion-of-counsel letters and related materials within fourteen (14) days of the Court's order, or, in the alternative, to irrevocably disclaim any reliance on advice of counsel as a defense to willful infringement.

II. FACTUAL BACKGROUND

A. The Asserted Patents

OWS is the owner by assignment of four United States utility patents directed to silicon photonics transceiver and waveguide multiplexing technologies — technologies that are foundational to next-generation optical interconnect systems for data centers, telecommunications networks, and high-performance computing platforms. The Asserted Patents are as follows:

U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," filed on September 14, 2016, and issued on March 19, 2019. The '847 Patent was originally assigned to Optiwave Semiconductor Corp. and claims priority to a series of provisional and non-provisional applications directed to advanced waveguide multiplexer architectures that achieve significantly lower insertion loss than prior-art designs while maintaining high channel density.

U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," filed on April 7, 2017, and issued on January 12, 2021. The '193 Patent was originally assigned to Optiwave Semiconductor Corp. and claims priority to Provisional Application No. 62/499,117, filed April 7, 2017. The '193 Patent covers the integration of coherent optical transceiver functionality on a monolithic silicon substrate, enabling high-bandwidth, low-cost optical communication systems.

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," filed on November 22, 2014, and issued on June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc., a pioneer in photonic integrated circuit thermal management. OWS acquired the '562 Patent, along with other assets of Solara Optics, through an Asset Purchase Agreement dated June 15, 2018, for a total consideration of $34.5 million. The '562 Patent addresses a critical limitation in photonic integrated circuit design — the dissipation of heat generated by densely integrated photonic components — through the use of embedded micro-channel heat sink structures.

U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," filed on August 30, 2019, and issued on August 2, 2022. The '015 Patent was originally assigned to Optiwave Semiconductor Corp. and claims priority to Provisional Application No. 62/499,117, filed April 7, 2017, the same provisional application underlying the '193 Patent. The '015 Patent covers novel grating coupler designs that enable polarization-diverse optical coupling in silicon photonic transceiver systems.

The '562 and '847 Patents share a continuation relationship, reflecting OWS's longstanding investment in silicon photonics platform technologies. The '193 and '015 Patents share a common provisional application, Provisional Application No. 62/499,117, reflecting OWS's integrated approach to coherent transceiver design and grating coupler architecture. Together, the Asserted Patents represent a core portfolio of silicon photonics innovations that are fundamental to the design and manufacture of modern optical transceiver modules.

B. Pre-Suit Licensing Outreach and Lumicore's Notice of the Asserted Patents

In the third quarter of 2022, Lumicore launched its LumiLink 400G-ZR+ transceiver module, a product that Lumicore has marketed extensively as incorporating "breakthrough silicon photonics integration" and "industry-leading thermal management." Shortly after the product's commercial introduction, OWS's engineering team, led by Chief Technology Officer Dr. Jian-Wei Huang and Vice President of Engineering Dr. Nikolai Petrov, identified potential infringement of the Asserted Patents based on publicly available product specifications, marketing materials, and technical presentations made by Lumicore at industry conferences.

In November 2022, OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark"), a semiconductor reverse engineering firm headquartered at 2244 Mission College Boulevard, Santa Clara, California 95054, and led by Lead Engineer Kevin Ng, to perform a detailed teardown and reverse engineering analysis of the LumiLink 400G-ZR+ transceiver module. Benchmark's teardown report, delivered on December 12, 2022, confirmed the presence of accused waveguide multiplexer structures bearing the hallmarks of the architectures claimed in the '847 Patent, as well as embedded micro-channel heat sink structures consistent with the thermal management methods claimed in the '562 Patent. The Benchmark report further identified coherent transceiver integration features and grating coupler designs relevant to the '193 and '015 Patents.

Armed with the Benchmark analysis, OWS commenced its licensing outreach. On January 15, 2023, FairPoint Licensing Group, LLC ("FairPoint"), acting as OWS's exclusive licensing agent through its Managing Director Angela Reeves (500 Sansome Street, Suite 1400, San Francisco, California 94111), sent a detailed licensing and notice letter (the "First Licensing Letter") to Raymond Bautista, General Counsel of Lumicore Technologies, Inc., at Lumicore's principal place of business at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. The First Licensing Letter identified the '847, '193, and '562 Patents, described the relevant claims, identified the LumiLink 400G-ZR+ as an accused product, and invited Lumicore to discuss a licensing arrangement. A copy of the First Licensing Letter is attached as Exhibit 2 to the Declaration of Wendy Schultz.

On February 28, 2023, Lumicore responded through its outside counsel, Hawthorne Vega & Cruz LLP ("HVC"), specifically through lead partner Catherine "Kate" Rourke. In its response, Lumicore disputed infringement and raised questions regarding the validity of the identified patents, but did not provide any substantive analysis or identify any specific prior art.

On April 20, 2023, an in-person licensing meeting was held in Austin, Texas. The meeting was attended by Angela Reeves (FairPoint), Rebecca Tanaka (OWS General Counsel), Raymond Bautista (Lumicore General Counsel), and Kate Rourke (HVC). During the meeting, the parties discussed the Asserted Patents and Lumicore's products at a high level, but no resolution was reached. Lumicore's representatives indicated that they would review the matter further and respond in due course.

On May 15, 2023, FairPoint sent a second licensing letter (the "Second Licensing Letter") to Mr. Bautista, adding the '015 Patent — which had issued on August 2, 2022 — to the portfolio under discussion, and expanding the accused products to include the LumiLink 800G-DR8 transceiver module, which Lumicore had launched in the first quarter of 2023. A copy of the Second Licensing Letter is attached as Exhibit 3 to the Declaration of Wendy Schultz.

On July 10, 2023, Lumicore declined to take a license. In its declination letter (the "Declination Letter"), signed by Raymond Bautista, Lumicore stated:

"Lumicore has carefully evaluated your client's patent portfolio in consultation with experienced patent counsel. Having obtained competent legal opinions confirming that Lumicore's products do not infringe any valid claim of the patents identified in your correspondence, Lumicore respectfully declines to enter into a licensing arrangement at this time."

(Emphasis added.) A copy of the Declination Letter is attached as Exhibit 1 to the Declaration of Wendy Schultz.

The Declination Letter is of central importance to this motion. By voluntarily disclosing to OWS and its licensing agent that Lumicore had obtained "competent legal opinions" of non-infringement and invalidity, Lumicore placed the existence, subject matter, and favorable conclusion of those opinions squarely at issue.

C. Lumicore's Post-Notice Conduct

Despite having received detailed notice of all four Asserted Patents through the January 15, 2023 and May 15, 2023 FairPoint letters — and despite having declined to take a license based on purported "competent legal opinions" — Lumicore launched a third accused product, the LumiEdge 1600G-LR transceiver module, in the fourth quarter of 2023. The LumiEdge 1600G-LR is Lumicore's next-generation silicon photonics transceiver, designed for long-reach data center interconnect applications, and it incorporates the same core silicon photonics platform technologies as the LumiLink 400G-ZR+ and LumiLink 800G-DR8.

Significantly, no formal design-around analysis was commissioned or undertaken before the launch of the LumiEdge 1600G-LR. This fact was confirmed during the deposition of Raymond Bautista, taken on December 3, 2024, at which Mr. Bautista admitted under oath that no formal design-around analysis was performed prior to the commercial launch of the LumiEdge 1600G-LR. (Bautista Dep. Tr. at 147:8–148:3, attached as Exhibit 4 to the Declaration of Wendy Schultz.) Lumicore's decision to launch a new product line built on the same accused technology — without any effort to design around OWS's patents, and after having received detailed notice of those patents — is powerful evidence of willful infringement and underscores the centrality of the opinion-of-counsel letters to the willfulness inquiry.

D. Evidence from Lumicore's Own Personnel Regarding Patent Awareness

The evidence further demonstrates that Lumicore's awareness of OWS's patent portfolio predates the January 2023 FairPoint letter. Former Lumicore engineer Melissa Chen, who is now employed by Veridian Photonics, Inc., has indicated that Lumicore's LumiLink 400G-ZR+ design team accessed and reviewed OWS's published patent applications — specifically Published Application No. 2018/0123456, which corresponds to the '193 Patent — during the product design phase in 2021 and 2022. OWS served a third-party subpoena on Ms. Chen on January 22, 2025, seeking her testimony regarding this matter.

Moreover, Dr. Sandra Michaud, Lumicore's Chief Technology Officer, admitted during her deposition taken on November 19, 2024, that she personally reviewed OWS Published Application No. 2018/0123456 during the LumiLink 400G-ZR+ design phase. (Michaud Dep. Tr. at 89:14–91:7, attached as Exhibit 6 to the Declaration of Wendy Schultz.) Although Dr. Michaud denied knowledge of the issued patents until receipt of the FairPoint letter, her admission that she reviewed the published application during the design phase establishes that Lumicore was aware of OWS's claimed technology — and was affirmatively tracking it — well before the formal licensing outreach commenced.

This evidence is relevant to the scope and timing of any opinion-of-counsel letters obtained by Lumicore, and reinforces OWS's position that the waiver of privilege extends to all opinions addressing the Asserted Patents, including any obtained prior to the January 2023 FairPoint letter.

E. The Present Litigation

On April 22, 2024, after extensive pre-suit licensing efforts proved unsuccessful, OWS filed the original Complaint in this action (D.E. 1), asserting seven counts: direct infringement of the '847 Patent (Count I), direct infringement of the '193 Patent (Count II), direct infringement of the '562 Patent (Count III), direct infringement of the '015 Patent (Count IV), induced infringement of the Asserted Patents (Count V), contributory infringement of the Asserted Patents (Count VI), and willful infringement of the Asserted Patents with a request for enhanced damages under 35 U.S.C. § 284 (Count VII).

On June 17, 2024, Lumicore filed its Answer and Counterclaims (D.E. 12). Lumicore's Answer asserts affirmative defenses of non-infringement, invalidity under 35 U.S.C. §§ 102 and 103, unenforceability based on alleged inequitable conduct, and declaratory judgment of non-infringement. Of critical relevance to this motion, Lumicore has indicated both in its Answer and through counsel's statements during meet-and-confer discussions that it intends to rely on its good-faith belief in non-infringement and invalidity as a defense to OWS's willful infringement claim. That good-faith belief, as Lumicore has represented, is informed by the very opinion-of-counsel letters that Lumicore now refuses to produce.

F. Discovery Dispute and Meet-and-Confer Efforts

On August 26, 2024, OWS served its First Set of Requests for Production to Lumicore, consisting of eighty-five (85) Requests for Production. Among these requests, OWS specifically sought production of all opinion-of-counsel letters, memoranda, and related communications concerning the non-infringement and/or invalidity of the Asserted Patents. The relevant Request for Production is attached as Exhibit 7 to the Declaration of Wendy Schultz.

In its responses served on September 30, 2024, Lumicore objected to the production of all responsive opinion letters on the grounds of attorney-client privilege and work-product protection, and withheld all such documents in their entirety. Lumicore's objection was accompanied by a privilege log that identified the withheld documents only in the most general terms — listing document type, date range, author, and recipient, but providing no meaningful description of the subject matter or basis for the privilege assertion. Lumicore's relevant objection and response is attached as Exhibit 8 to the Declaration of Wendy Schultz.

Counsel for OWS undertook extensive meet-and-confer efforts to resolve this dispute without the need for Court intervention. Wendy Schultz of Calderwood & Harkness LLP and Samantha Briggs of Hawthorne Vega & Cruz LLP conducted three telephonic meet-and-confer conferences. During these conferences, Ms. Schultz explained OWS's position that Lumicore had waived the privilege by affirmatively referencing "competent legal opinions" in the July 10, 2023 Declination Letter and by intending to rely on advice of counsel as a defense to willfulness. Ms. Briggs responded on behalf of Lumicore that Lumicore maintained its privilege objections in full and that Lumicore had not waived any privilege.

On October 14, 2024, Ms. Schultz memorialized the parties' respective positions in a detailed meet-and-confer letter to Ms. Briggs, confirming the impasse and satisfying the prerequisite for filing this motion under Local Rule CV-7(h) and Federal Rule of Civil Procedure 37(a)(1). A copy of the October 14, 2024 meet-and-confer letter is attached as Exhibit 5 to the Declaration of Wendy Schultz.

G. Deposition Testimony of Raymond Bautista

On December 3, 2024, OWS took the deposition of Raymond Bautista, Lumicore's General Counsel. The deposition was limited in scope due to privilege assertions, but Mr. Bautista's testimony nonetheless confirmed several facts critical to this motion:

First, Mr. Bautista confirmed that he received FairPoint's January 15, 2023 licensing letter and forwarded it to outside counsel at Hawthorne Vega & Cruz LLP within three business days of receipt. (Bautista Dep. Tr. at 42:11–43:5.)

Second, Mr. Bautista confirmed that Lumicore obtained opinion-of-counsel letters in connection with the patents identified in FairPoint's licensing letters. (Bautista Dep. Tr. at 78:19–79:14.)

Third, Mr. Bautista refused to answer questions about the substance, authorship, scope, or conclusions of the opinion letters, invoking the attorney-client privilege on the instruction of counsel. (Bautista Dep. Tr. at 79:15–82:22.)

Fourth, Mr. Bautista admitted that no formal design-around analysis was commissioned or undertaken before Lumicore's launch of the LumiEdge 1600G-LR in the fourth quarter of 2023. (Bautista Dep. Tr. at 147:8–148:3.)

Relevant excerpts from the Bautista deposition transcript are attached as Exhibit 4 to the Declaration of Wendy Schultz, filed concurrently herewith.

III. LEGAL STANDARD

A. Motion to Compel Under Federal Rule of Civil Procedure 37(a)

Under Federal Rule of Civil Procedure 37(a)(3)(B), a party seeking discovery may move for an order compelling production of documents when the responding party fails to produce documents as requested under Rule 34 or asserts improper objections to such requests. The movant must demonstrate that the discovery sought is relevant to any party's claim or defense and is proportional to the needs of the case, consistent with the scope of discovery set forth in Rule 26(b)(1).

The party resisting discovery bears the burden of establishing that the asserted privilege or protection applies. See Fed. R. Civ. P. 26(b)(5)(A) (requiring the party withholding information on privilege grounds to "describe the nature of the documents, communications, or tangible things not produced or disclosed — and do so in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim"); see also Strathmore Advisors v. Wilkinson, 508 F.3d 277, 283 (5th Cir. 2007) (the party asserting a privilege bears the burden of demonstrating its applicability).

B. Attorney-Client Privilege — General Principles

The attorney-client privilege is the oldest of the privileges for confidential communications known to the common law. Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). The privilege protects confidential communications made between a client and an attorney for the purpose of obtaining or providing legal advice. The privilege belongs to the client and may be asserted or waived by the client.

Waiver of the attorney-client privilege may be express or implied. Express waiver occurs when the client voluntarily discloses privileged communications to a third party. Implied waiver — also referred to as "at issue" waiver or "offensive use" waiver — occurs when the holder of the privilege affirmatively places the content or subject matter of the privileged communication at issue in the litigation. See Rhone-Poulenc Rorer Inc. v. Home Indem. Co., 32 F.3d 851, 863 (3d Cir. 1994) ("The at-issue waiver . . . may be found where the party asserting the privilege places information protected by it in issue through some affirmative act for the party's own benefit, and to allow the privilege to protect against disclosure of such information would be manifestly unfair to the opposing party.").

Courts have consistently held that a party cannot use the attorney-client privilege as both a "sword and shield" — that is, a party cannot selectively disclose favorable portions of privileged communications while withholding unfavorable portions. See, e.g., In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1301 (Fed. Cir. 2006); Convolve, Inc. v. Compaq Computer Corp., 223 F.R.D. 162, 177 (S.D.N.Y. 2004).

C. Work-Product Doctrine — General Principles

The work-product doctrine, codified at Federal Rule of Civil Procedure 26(b)(3), protects from discovery documents and tangible things that are "prepared in anticipation of litigation or for trial by or for another party or its representative." The doctrine extends to materials prepared by or for a party's attorney, consultant, surety, indemnitor, insurer, or agent. See Hickman v. Taylor, 329 U.S. 495, 510–11 (1947).

Like the attorney-client privilege, the work-product doctrine may be waived. Waiver of work-product protection occurs when the party asserting the doctrine places the protected material at issue in the litigation, or when the party voluntarily discloses the protected material to an adversary or in circumstances inconsistent with the maintenance of the protection. See In re Seagate Tech., LLC, 497 F.3d 1360, 1372 (Fed. Cir. 2007) (en banc) (holding that "asserting the advice of counsel defense and disclosing the advice received" waives work-product protection for documents "related to the communication between the attorney and client").

IV. ARGUMENT

A. Lumicore Has Waived Attorney-Client Privilege by Affirmatively Placing Its Reliance on Counsel's Opinions at Issue

1. The July 10, 2023 Declination Letter Constitutes an Affirmative Disclosure. The analysis of Lumicore's privilege waiver begins with Lumicore's own words. In its July 10, 2023 Declination Letter, Lumicore — through its General Counsel Raymond Bautista — expressly represented to OWS and its licensing agent that Lumicore had obtained "competent legal opinions" confirming that Lumicore's products do not infringe any valid claim of the patents identified in FairPoint's licensing correspondence. (Ex. 1 to Schultz Decl.) This was not an inadvertent or passing reference. It was a deliberate, strategic communication to an adversary, made for the purpose of justifying Lumicore's refusal to take a license and signaling that Lumicore's continued manufacture and sale of accused products was supported by considered legal advice.

By voluntarily communicating to OWS the existence, general subject matter, and favorable conclusion of its opinion-of-counsel letters, Lumicore made an affirmative disclosure that placed those opinions at issue. The disclosure was made to a party adverse in interest — OWS, through its licensing agent — and was plainly intended to convey the impression that Lumicore's continued conduct was legally justified. Lumicore cannot now retreat behind the privilege it so voluntarily pierced. Having disclosed the sword, Lumicore cannot retain the shield.

The critical point is this: Lumicore did not merely remain silent or decline to take a license without explanation. It affirmatively cited the existence and favorable conclusion of its opinion letters as the basis for its decision. This voluntary disclosure to an adversary constitutes a waiver of the privilege as to the subject matter of those opinions. See In re EchoStar, 448 F.3d at 1301 (holding that "the widely applied standard for determining the scope of a waiver of attorney-client privilege . . . [is that] the waiver applies to all other communications relating to the same subject matter"); Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1349 (Fed. Cir. 2005) (finding waiver where the patent holder disclosed the favorable conclusions of counsel's analysis to a third party).

Lumicore's selective disclosure — touting the existence and result of its legal opinions while withholding the underlying reasoning — is precisely the type of conduct that the "sword and shield" doctrine is designed to prevent. If Lumicore wished to preserve the privilege, it could have declined the license without reference to any legal opinions. Having chosen to deploy those opinions as a justification, Lumicore must accept the consequences of that choice.

2. Lumicore's Defense to Willful Infringement Places the Opinions at Issue. Independent of the July 10, 2023 Declination Letter, Lumicore's litigation position separately triggers an implied waiver of the privilege. OWS's Complaint asserts willful infringement of all four Asserted Patents (Count VII) and seeks enhanced damages under 35 U.S.C. § 284.

Under the Supreme Court's decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), enhanced damages for patent infringement are available in cases of "egregious" infringement — that is, cases involving "willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or — indeed — characteristic of a pirate." Id. at 103–04 (quoting Seymour v. McCormick, 57 U.S. (16 How.) 480, 488 (1854)). In assessing willfulness, courts examine the totality of the circumstances, including whether the infringer acted despite knowledge of the patent and without a reasonable basis for believing its conduct was non-infringing.

Lumicore has indicated — both through its Answer and Counterclaims (D.E. 12) and through counsel's representations during the meet-and-confer conferences — that it intends to defend against OWS's willful infringement claim by relying on its good-faith belief in non-infringement and invalidity. That good-faith belief, Lumicore has represented, was informed by the opinion-of-counsel letters it obtained in response to OWS's licensing outreach. In other words, Lumicore intends to use the opinion letters as the foundation of its defense to willfulness.

It is well settled that when a defendant places its reliance on counsel's advice at issue as a defense or shield against a willful infringement claim, the defendant waives the attorney-client privilege and work-product protection with respect to the opinions on which it relies. See In re Seagate Tech., LLC, 497 F.3d 1360, 1373 (Fed. Cir. 2007) (en banc) (holding that when a party "asserts the advice of counsel defense" to a charge of willful infringement, it waives the attorney-client privilege and work-product protection for communications with opinion counsel relating to the subject matter of the opinion). The Federal Circuit's rationale is straightforward: a defendant who deploys evidence of its reliance on counsel's advice to defeat a willfulness claim cannot simultaneously prevent the plaintiff from testing the quality, completeness, and good faith of that advice through discovery.

While the Federal Circuit in Seagate also held that "the failure to obtain an exculpatory opinion of counsel shall no longer create an adverse inference of willful infringement," id. at 1371, the court was equally clear that a party who does rely on opinion-of-counsel letters as part of its defense waives the privilege with respect to those opinions. The Halo decision did not disturb this fundamental principle. Post-Halo, the analysis is the same: if the defendant chooses to deploy evidence of advice of counsel to rebut a claim of willful infringement, the privilege is waived, and the plaintiff is entitled to discover and test the opinions on which the defendant relies.

Lumicore cannot be heard to argue that it has not yet "formally" asserted the advice-of-counsel defense. The law does not require a formal invocation of a defense before the implied waiver attaches. Where, as here, the defendant has affirmatively cited its reliance on legal opinions to its adversary prior to suit, and has indicated through its pleadings and counsel's representations that it intends to rely on its good-faith belief — a belief informed by those same opinions — the waiver has already occurred. See Theranos, Inc. v. Draven Pharma LLC, No. 11-cv-5236, 2014 WL 1168689, at *4 (D. Del. Mar. 21, 2014) (finding waiver where the defendant "placed the advice it received from counsel at issue in this litigation" through its pleadings and discovery conduct).

3. The Waiver Extends to All Opinions Addressing Non-Infringement and Invalidity of the Asserted Patents. The scope of Lumicore's waiver is coextensive with the scope of the opinions it has placed at issue. Lumicore's July 10, 2023 Declination Letter did not limit the referenced "competent legal opinions" to a single patent, a single accused product, or a specific date range. Rather, Lumicore broadly represented that it had obtained opinions confirming that "Lumicore's products" — in the plural — "do not infringe any valid claim of the patents identified in [FairPoint's] correspondence." (Ex. 1 to Schultz Decl.) The "patents identified" in FairPoint's correspondence include all four Asserted Patents — the '847, '193, '562, and '015 Patents. The "products" referenced include all products that were the subject of the licensing discussions — the LumiLink 400G-ZR+ and LumiLink 800G-DR8 at a minimum, and the subsequently launched LumiEdge 1600G-LR by logical extension.

The waiver therefore extends to all opinion-of-counsel letters, memoranda, and related communications obtained by Lumicore concerning the non-infringement and/or invalidity of the '847, '193, '562, and '015 Patents as applied to the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR product lines. This includes any initial opinions, supplemental opinions, updated opinions, and follow-up analyses, whether obtained before or after the filing of this litigation.

The waiver also extends to materials considered by opinion counsel in the preparation of those opinions, including any prior-art searches, technical analyses, claim charts, and communications between Lumicore's engineering and technical personnel and opinion counsel. See In re EchoStar, 448 F.3d at 1302–03 (holding that "the waiver of the attorney-client privilege extends to all communications on the same subject matter" and "the documents and information that an opinion of counsel considered and relied upon in rendering legal advice" must also be produced).

B. Lumicore Cannot Use the Opinions as Both Sword and Shield

1. The "Sword and Shield" Doctrine Prohibits Selective Invocation of Privilege. The fundamental unfairness of Lumicore's position is manifest. Lumicore has sought to benefit from the favorable conclusion of its opinion letters in two distinct ways: first, by citing them to OWS in the July 10, 2023 Declination Letter as a reason not to take a license, and second, by asserting good-faith reliance on legal advice as a defense to OWS's willful infringement claim. At the same time, Lumicore seeks to shield the underlying analysis, reasoning, and completeness of those very opinions from OWS's scrutiny by asserting blanket attorney-client privilege and work-product objections.

This is the paradigmatic "sword and shield" scenario. Courts have uniformly rejected attempts by litigants to wield privilege selectively — invoking it to withhold unfavorable material while voluntarily disclosing favorable conclusions. See Rhone-Poulenc, 32 F.3d at 863 ("The quintessential example [of at-issue waiver] is the plaintiff who asserts a claim of fraud and then invokes the privilege to prevent the defendant from gaining access to the very communications that would show the plaintiff's state of mind."); In re EchoStar, 448 F.3d at 1301 ("A party cannot use the attorney-client privilege as both a 'sword and a shield.'"); Convolve, 223 F.R.D. at 177 (same).

Allowing Lumicore to assert that it relied on "competent legal opinions" while preventing OWS from examining the quality, completeness, and bona fides of those opinions would be fundamentally unfair. It would deprive OWS of the ability to probe whether the opinions were thorough and well-reasoned, whether they addressed all asserted claims and accused products, whether they were based on complete and accurate technical information, and whether Lumicore's purported reliance on them was genuine. In short, it would deprive OWS of the ability to prove its willful infringement claim — a claim that Congress authorized through the enhanced damages provision of 35 U.S.C. § 284 and that the Supreme Court reaffirmed in Halo.

2. Lumicore's Blanket Privilege Objection Is Inconsistent with Its Litigation Position. The inconsistency in Lumicore's position is stark. If Lumicore has elected to rely on advice of counsel as a defense to willfulness — as its pleadings, discovery conduct, and counsel's representations during meet-and-confer conferences suggest — then the privilege has been waived, and the opinion letters must be produced. If, on the other hand, Lumicore has not elected to rely on advice of counsel, then the privilege may remain intact — but Lumicore cannot have it both ways. It cannot simultaneously assert the privilege and deploy the advice-of-counsel defense.

To the extent Lumicore contends that it is not relying on the opinion letters as a defense to willfulness, the appropriate remedy is clear: Lumicore should be required to affirmatively and irrevocably disclaim any reliance on advice of counsel as a defense to willful infringement. In that event, the Court should enter an order precluding Lumicore from introducing any evidence or argument at trial that it relied on advice of counsel, that it held a good-faith belief in non-infringement or invalidity informed by legal opinions, or that it took any steps based on counsel's advice to evaluate the Asserted Patents. Such a preclusion order is necessary to prevent Lumicore from "sandbagging" OWS by withholding the opinion letters during discovery only to assert reliance on them at trial.

C. The Scope of Waiver Encompasses All Related Communications and Materials

1. Temporal Scope. The waiver extends from the date Lumicore first sought or received opinion-of-counsel advice regarding the Asserted Patents through the present date, and continuing through the conclusion of this litigation. This temporal scope is appropriate because Lumicore's July 10, 2023 Declination Letter referenced opinions without any temporal limitation, and because the willfulness inquiry encompasses the entirety of Lumicore's conduct from the time it first became aware of the Asserted Patents.

The temporal scope encompasses, at minimum, the following periods:

(a) Pre-FairPoint Letter Period (2021–January 2023): To the extent Lumicore obtained any legal opinions regarding OWS's patents or published patent applications before receipt of FairPoint's January 15, 2023 letter, those opinions are within the scope of the waiver. The deposition testimony of Dr. Sandra Michaud — confirming that she reviewed OWS Published Application No. 2018/0123456 during the LumiLink 400G-ZR+ design phase in 2021–2022 (Michaud Dep. Tr. at 89:14–91:7) — suggests that Lumicore was aware of OWS's technology claims well before the formal licensing outreach commenced, and may have sought legal advice concerning the published applications during the design phase.

(b) Post-Notice, Pre-Suit Period (January 2023–April 2024): This period encompasses the core licensing negotiation phase and the time during which Lumicore obtained the "competent legal opinions" referenced in the July 10, 2023 Declination Letter. Any opinions obtained during this period are clearly within the scope of the waiver.

(c) Post-Filing Period (April 2024–present): Any opinions obtained after the filing of this litigation on April 22, 2024, including any supplemental or updated opinions addressing the merits of OWS's claims in light of the Complaint, are also within the scope of the waiver. A party cannot obtain a pre-suit opinion, place it at issue, and then argue that a post-suit update or supplement to that opinion is separately privileged.

2. Subject-Matter Scope. The subject-matter scope of the waiver extends to all communications between Lumicore and opinion counsel — whether opinion counsel is Hawthorne Vega & Cruz LLP or any other law firm retained for this purpose — regarding the infringement, non-infringement, validity, invalidity, and 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.

The subject-matter scope also encompasses all underlying technical analyses, claim charts, prior-art search results, and communications between Lumicore's engineering and technical staff and opinion counsel that were considered or relied upon in the preparation of the opinions. This includes, but is not limited to, any prior-art searches or analyses conducted by Marlowe Asset Management Patent Analytics, Inc. ("Marlowe Asset Management"), Lumicore's retained prior-art search firm (1100 Peachtree Street NE, Suite 2200, Atlanta, Georgia 30309), to the extent those materials were shared with or relied upon by opinion counsel. See In re EchoStar, 448 F.3d at 1302–03 (requiring production of "documents and information that an opinion of counsel considered and relied upon").

The principle underlying this broad scope is well established: a waiver of privilege with respect to an opinion-of-counsel letter is meaningless if the opposing party is denied access to the materials that informed the opinion. Without access to those materials, OWS cannot evaluate whether the opinions were based on complete and accurate information, whether they addressed all relevant claims and accused product features, and whether they were the product of competent and thorough analysis.

3. Distinction Between Trial Counsel and Opinion Counsel. OWS recognizes the distinction drawn by the Federal Circuit in In re Seagate between trial counsel and opinion counsel. In Seagate, the Federal Circuit held that waiver of privilege with respect to opinion counsel's work "does not extend waiver to trial counsel" in most circumstances, noting that "the waiver of the attorney-client privilege . . . does not automatically extend to communications with trial counsel." 497 F.3d at 1374. The court reasoned that "trial counsel is not likely to be the same counsel who rendered the opinion, and thus the party should not reasonably be expected to waive the privilege as to communications with trial counsel merely because it asserted the advice-of-counsel defense based on opinion counsel's work." Id.

OWS's motion is directed at the opinion-of-counsel letters and related materials — i.e., the substantive legal opinions on which Lumicore claims to have relied — and not at trial counsel's litigation strategy, mental impressions, or work product prepared in connection with the prosecution or defense of this action.

However, OWS notes an important caveat: to the extent opinion counsel and trial counsel are the same — that is, to the extent Hawthorne Vega & Cruz LLP served as both the firm that rendered the opinion letters and the firm retained to defend this litigation — the distinction recognized in Seagate may be inapplicable. The Seagate court's rationale for protecting trial counsel's work was grounded in the assumption that opinion counsel and trial counsel are typically different firms or different attorneys. Where, as may be the case here, the same firm performed both the opinion function and the litigation function, the waiver extends to those communications that constitute or relate to the opinion function, and Lumicore bears the burden of establishing any applicable distinction between opinion-related and litigation-related communications. See In re Seagate, 497 F.3d at 1374–75; see also Westvale Holdings. v. Pemberton Corporation, 2007 WL 4403389, at *3 (C.D. Cal. Dec. 13, 2007) (noting that "where trial counsel also served as opinion counsel, the scope of waiver may extend to trial counsel's communications").

D. Lumicore's Deposition Conduct Confirms the Centrality of the Opinion Letters

The deposition testimony of Lumicore's General Counsel, Raymond Bautista, taken on December 3, 2024, further confirms both the existence of the opinion letters and their centrality to the willfulness inquiry in this case.

During his deposition, Mr. Bautista confirmed that he received FairPoint's January 15, 2023 licensing letter, that he forwarded it to outside counsel within three business days, and that Lumicore obtained opinion-of-counsel letters in connection with the patents identified in FairPoint's correspondence. (Bautista Dep. Tr. at 42:11–43:5; 78:19–79:14.) Mr. Bautista then refused to answer any questions about the substance, scope, authorship, or conclusions of those opinions, invoking the attorney-client privilege at the direction of counsel. (Bautista Dep. Tr. at 79:15–82:22.)

Mr. Bautista's testimony places the opinion letters at the very center of the willfulness inquiry. He has confirmed their existence. He has confirmed that they were obtained in direct response to the notice that forms the basis of OWS's willful infringement claim. And he has confirmed — by his refusal to answer questions about their substance — that Lumicore considers their content privileged and intends to control the circumstances under which that content is disclosed.

Critically, Mr. Bautista's further admission that no formal design-around analysis was commissioned or undertaken before the launch of the LumiEdge 1600G-LR in Q4 2023 (Bautista Dep. Tr. at 147:8–148:3) underscores the importance of the opinion letters as the sole documented basis for Lumicore's claimed good-faith belief in non-infringement and invalidity. If Lumicore did not design around the Asserted Patents and did not modify its products in response to OWS's notice, then the opinion letters are the only evidence that Lumicore can point to in support of its contention that it acted in good faith. Those letters must be produced so that OWS — and ultimately the jury — can evaluate whether Lumicore's reliance on them was objectively reasonable and subjectively genuine.

E. Policy Considerations Support Compelling Production

Beyond the legal framework, compelling production of the opinion letters is consistent with the policy objectives underlying the willful infringement doctrine and the enhanced damages provision of 35 U.S.C. § 284.

The Supreme Court in Halo reaffirmed that enhanced damages serve a critical deterrent function, discouraging patent infringement that is "willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or — indeed — characteristic of a pirate." 579 U.S. at 103–04. That deterrent function is undermined when defendants are permitted to cloak their state of mind behind blanket privilege assertions while simultaneously citing reliance on legal opinions as a defense to willfulness. If the law permits a defendant to obtain an opinion letter, reference it to the patent holder as justification for continued infringement, assert reliance on it in litigation as a defense to enhanced damages, and yet prevent the patent holder from ever seeing the opinion — then the willful infringement doctrine becomes a dead letter in practice. A defendant could obtain a cursory, incomplete, or even sham opinion, cite it in pre-suit correspondence and in court, and shield it from scrutiny forever. The law does not countenance such a result.

Moreover, the Stipulated Protective Order already entered in this case (D.E. 24) provides a robust framework for the protection of confidential information. The Protective Order establishes three tiers of confidentiality designation — "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code" — and imposes strict limitations on the use and dissemination of designated material. The opinion letters, if produced, may be designated at the "Highly Confidential — Attorneys' Eyes Only" tier, ensuring that their contents are accessible only to outside litigation counsel and designated experts, and not to OWS's business personnel. Lumicore's concern about the sensitivity of the opinions' content — to the extent such a concern underlies its blanket refusal — is therefore adequately addressed by the existing protective framework.

V. RELIEF REQUESTED

For the foregoing reasons, OWS respectfully requests that the Court enter an order:

1. Compelling production of all opinion-of-counsel letters and related materials. Specifically, ordering Lumicore to produce, within fourteen (14) days of the Court's order, all opinion-of-counsel letters, memoranda, and related communications and materials concerning the non-infringement, invalidity, and/or unenforceability 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 LumiEdge 1600G-LR product lines.

2. Compelling production of all underlying materials considered by opinion counsel. Specifically, ordering Lumicore to produce all underlying materials considered or relied upon by opinion counsel in the preparation of the opinion letters, including but not limited to prior-art search results, claim charts, technical analyses, reverse engineering reports, and communications between Lumicore's engineering, technical, and management personnel and opinion counsel.

3. In the alternative, if the Court determines that the scope of waiver should be limited, ordering Lumicore to produce the specific opinion-of-counsel letters referenced in its July 10, 2023 Declination Letter signed by Raymond Bautista, together with any supplements, updates, or revisions to those specific opinions.

4. In the further alternative, if the Court determines that Lumicore has not waived the privilege, ordering Lumicore to affirmatively and irrevocably disclaim any reliance on advice of counsel as a defense to OWS's willful infringement claim and precluding Lumicore from introducing any evidence or argument at trial that it relied on legal opinions, held a good-faith belief in non-infringement or invalidity informed by legal advice, or took steps based on counsel's advice to evaluate the Asserted Patents.

5. Awarding OWS its reasonable expenses. Awarding OWS its reasonable expenses, including attorneys' fees, incurred in connection with this motion, pursuant to Federal Rule of Civil Procedure 37(a)(5).

VI. CERTIFICATION OF CONFERENCE

Pursuant to Local Rule CV-7(h) and Federal Rule of Civil Procedure 37(a)(1), counsel for Plaintiff Optiwave Semiconductor Corp. hereby certifies that it has conferred in good faith with counsel for Defendant Lumicore Technologies, Inc. in an effort to resolve this discovery dispute without Court intervention. Specifically, Wendy Schultz of Calderwood & Harkness LLP, counsel for OWS, and Samantha Briggs of Hawthorne Vega & Cruz LLP, counsel for Lumicore, conducted three telephonic meet-and-confer conferences to discuss the production of opinion-of-counsel letters. During each conference, Ms. Schultz explained OWS's position that Lumicore had waived the attorney-client privilege and work-product protection by affirmatively placing the opinion letters at issue, and Ms. Briggs responded that Lumicore maintained its privilege objections in full. The parties' respective positions were memorialized in a detailed letter from Ms. Schultz to Ms. Briggs dated October 14, 2024 (attached as Exhibit 5 to the Declaration of Wendy Schultz). Despite these good-faith efforts, the parties were unable to reach agreement, and this motion is necessary to resolve the dispute.

VII. CONCLUSION

For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court grant its Motion to Compel and order Defendant Lumicore Technologies, Inc. to produce all opinion-of-counsel letters, memoranda, and related communications and materials, together with all underlying materials considered or relied upon by opinion counsel, within fourteen (14) days of the Court's order. In the alternative, OWS requests that the Court order Lumicore to irrevocably disclaim any reliance on advice of counsel as a defense to willful infringement and preclude Lumicore from introducing any evidence or argument of such reliance at trial.

Respectfully submitted,

Dated: October 21, 2024

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (CA Bar No. 247893; admitted pro hac vice) Marcus Delgado (TX Bar No. 05684291) Wendy Schultz (CA Bar No. 301457; admitted pro hac vice) Omar Siddiqui (CA Bar No. 318726; admitted pro hac vice) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 486-7200 Facsimile: (213) 486-7201

Email: ango@calderwoodharkness.com

Email: mdelgado@calderwoodharkness.com

Email: wschultz@calderwoodharkness.com

Email: osiddiqui@calderwoodharkness.com

Of Counsel:

WHITMORE & CALLAHAN LLP

James "Jim" Callahan (TX Bar No. 03792140) 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 531-8400

Email: jcallahan@whitmorecallahan.com

Attorneys for Plaintiff Optiwave Semiconductor Corp.

CERTIFICATE OF SERVICE

I hereby certify that on October 21, 2024, a true and correct copy of the foregoing Plaintiff Optiwave Semiconductor Corp.'s Motion to Compel Production of Defendant Lumicore Technologies, Inc.'s Opinion-of-Counsel Letters Pursuant to Federal Rules of Civil Procedure 26 and 37 was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following:

Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer HAWTHORNE VEGA & CRUZ LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701

Email: krourke@hvclegal.com

Email: dcho@hvclegal.com

Email: sbriggs@hvclegal.com

Email: riyer@hvclegal.com

Maria Garza TRASK EDDINGTON LLP 425 East Front Street, Suite 300 Tyler, Texas 75701

Email: mgarza@traskeddington.com

Attorneys for Defendant Lumicore Technologies, Inc.

By: ________

Wendy Schultz

EXHIBITS INDEX

The following exhibits are attached to and submitted in support of this Motion through the Declaration of Wendy Schultz, filed concurrently herewith:

Exhibit No.	Description
Exhibit 1	Lumicore Technologies, Inc.'s July 10, 2023 Declination Letter from Raymond Bautista (General Counsel) to FairPoint Licensing Group, LLC, referencing "competent legal opinions" that Lumicore's products do not infringe any valid claim of the Asserted Patents
Exhibit 2	FairPoint Licensing Group, LLC's January 15, 2023 First Licensing/Notice Letter to Raymond Bautista, identifying the '847, '193, and '562 Patents and accusing the LumiLink 400G-ZR+
Exhibit 3	FairPoint Licensing Group, LLC's May 15, 2023 Second Licensing Letter to Raymond Bautista, adding the '015 Patent and expanding accused products to include the LumiLink 800G-DR8
Exhibit 4	Relevant excerpts from the deposition transcript of Raymond Bautista (December 3, 2024), including testimony confirming receipt of FairPoint letters, existence of opinion-of-counsel letters, refusal to testify about substance on privilege grounds, and admission that no formal design-around analysis was conducted before the LumiEdge 1600G-LR launch
Exhibit 5	Meet-and-confer correspondence from Wendy Schultz (Calderwood & Harkness LLP) to Samantha Briggs (Hawthorne Vega & Cruz LLP), dated October 14, 2024, memorializing three telephonic conferences and the parties' respective positions on the production of opinion-of-counsel letters
Exhibit 6	Relevant excerpts from the deposition transcript of Dr. Sandra Michaud (November 19, 2024), including testimony that she reviewed OWS Published Application No. 2018/0123456 during the LumiLink 400G-ZR+ design phase in 2021–2022
Exhibit 7	OWS's First Set of Requests for Production to Lumicore (served August 26, 2024) — relevant Request for Production seeking opinion-of-counsel letters, memoranda, and related communications
Exhibit 8	Lumicore's Objections and Responses to OWS's First Set of Requests for Production — relevant response asserting attorney-client privilege and work-product protection over opinion-of-counsel letters

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
Judge James R. Gilstrap
JURY TRIAL DEMANDED
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MOTION TO COMPEL PRODUCTION OF DEFENDANT LUMICORE TECHNOLOGIES, INC.'S OPINION-OF-COUNSEL LETTERS PURSUANT TO FEDERAL RULES OF CIVIL PROCEDURE 26 AND 37
I. INTRODUCTION
Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully moves this Court for an order compelling Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant") to produce all opinion-of-counsel letters, memoranda, and related communications concerning the non-infringement and/or invalidity of U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent") (collectively, the "Asserted Patents") that Lumicore obtained in connection with OWS's pre-suit licensing outreach and the present litigation.
This motion is necessitated by Lumicore's steadfast refusal to produce these critical documents despite having affirmatively referenced "competent legal opinions" in its July 10, 2023 letter declining to take a license from OWS. That letter, signed by Lumicore's General Counsel Raymond Bautista, was sent in response to licensing outreach initiated by FairPoint Licensing Group, LLC ("FairPoint"), OWS's licensing agent, through its Managing Director Angela Reeves. In that letter, Mr. Bautista expressly stated that Lumicore had obtained "competent legal opinions" confirming that Lumicore's products do not infringe any valid claim of the Asserted Patents. Lumicore thus voluntarily disclosed to an adversary the existence, subject matter, and favorable conclusion of its opinion-of-counsel letters — yet now seeks to prevent OWS from examining the very opinions upon which Lumicore claims to have relied.
OWS's Complaint in this action asserts willful infringement of all four Asserted Patents (Count VII), and seeks enhanced damages pursuant to 35 U.S.C. § 284. Lumicore's reliance on opinion-of-counsel letters as a basis for its purported good-faith belief in non-infringement and invalidity — and its intention to deploy that reliance as a shield against OWS's willful infringement claim — constitutes a waiver of the attorney-client privilege and work-product protection as to the subject matter of those opinions. A party cannot selectively disclose the favorable conclusion of privileged communications while simultaneously shielding the underlying analysis from adversarial scrutiny. The "sword and shield" doctrine squarely forecloses Lumicore's position.
Despite multiple good-faith meet-and-confer efforts — including three telephonic conferences between Wendy Schultz of Calderwood & Harkness LLP, counsel for OWS, and Samantha Briggs of Hawthorne Vega & Cruz LLP, counsel for Lumicore, as memorialized in counsel's October 14, 2024 meet-and-confer correspondence (attached hereto as Exhibit 5 to the Declaration of Wendy Schultz) — Lumicore has maintained its blanket refusal to produce any opinion-of-counsel letters or related materials. The parties are at an impasse, and Court intervention is required.
OWS respectfully requests that the Court order Lumicore to produce all responsive opinion-of-counsel letters and related materials within fourteen (14) days of the Court's order, or, in the alternative, to irrevocably disclaim any reliance on advice of counsel as a defense to willful infringement.
II. FACTUAL BACKGROUND
A. The Asserted Patents
OWS is the owner by assignment of four United States utility patents directed to silicon photonics transceiver and waveguide multiplexing technologies — technologies that are foundational to next-generation optical interconnect systems for data centers, telecommunications networks, and high-performance computing platforms. The Asserted Patents are as follows:
U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," filed on September 14, 2016, and issued on March 19, 2019. The '847 Patent was originally assigned to Optiwave Semiconductor Corp. and claims priority to a series of provisional and non-provisional applications directed to advanced waveguide multiplexer architectures that achieve significantly lower insertion loss than prior-art designs while maintaining high channel density.
U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," filed on April 7, 2017, and issued on January 12, 2021. The '193 Patent was originally assigned to Optiwave Semiconductor Corp. and claims priority to Provisional Application No. 62/499,117, filed April 7, 2017. The '193 Patent covers the integration of coherent optical transceiver functionality on a monolithic silicon substrate, enabling high-bandwidth, low-cost optical communication systems.
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," filed on November 22, 2014, and issued on June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc., a pioneer in photonic integrated circuit thermal management. OWS acquired the '562 Patent, along with other assets of Solara Optics, through an Asset Purchase Agreement dated June 15, 2018, for a total consideration of $34.5 million. The '562 Patent addresses a critical limitation in photonic integrated circuit design — the dissipation of heat generated by densely integrated photonic components — through the use of embedded micro-channel heat sink structures.
U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," filed on August 30, 2019, and issued on August 2, 2022. The '015 Patent was originally assigned to Optiwave Semiconductor Corp. and claims priority to Provisional Application No. 62/499,117, filed April 7, 2017, the same provisional application underlying the '193 Patent. The '015 Patent covers novel grating coupler designs that enable polarization-diverse optical coupling in silicon photonic transceiver systems.
The '562 and '847 Patents share a continuation relationship, reflecting OWS's longstanding investment in silicon photonics platform technologies. The '193 and '015 Patents share a common provisional application, Provisional Application No. 62/499,117, reflecting OWS's integrated approach to coherent transceiver design and grating coupler architecture. Together, the Asserted Patents represent a core portfolio of silicon photonics innovations that are fundamental to the design and manufacture of modern optical transceiver modules.
B. Pre-Suit Licensing Outreach and Lumicore's Notice of the Asserted Patents
In the third quarter of 2022, Lumicore launched its LumiLink 400G-ZR+ transceiver module, a product that Lumicore has marketed extensively as incorporating "breakthrough silicon photonics integration" and "industry-leading thermal management." Shortly after the product's commercial introduction, OWS's engineering team, led by Chief Technology Officer Dr. Jian-Wei Huang and Vice President of Engineering Dr. Nikolai Petrov, identified potential infringement of the Asserted Patents based on publicly available product specifications, marketing materials, and technical presentations made by Lumicore at industry conferences.
In November 2022, OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark"), a semiconductor reverse engineering firm headquartered at 2244 Mission College Boulevard, Santa Clara, California 95054, and led by Lead Engineer Kevin Ng, to perform a detailed teardown and reverse engineering analysis of the LumiLink 400G-ZR+ transceiver module. Benchmark's teardown report, delivered on December 12, 2022, confirmed the presence of accused waveguide multiplexer structures bearing the hallmarks of the architectures claimed in the '847 Patent, as well as embedded micro-channel heat sink structures consistent with the thermal management methods claimed in the '562 Patent. The Benchmark report further identified coherent transceiver integration features and grating coupler designs relevant to the '193 and '015 Patents.
Armed with the Benchmark analysis, OWS commenced its licensing outreach. On January 15, 2023, FairPoint Licensing Group, LLC ("FairPoint"), acting as OWS's exclusive licensing agent through its Managing Director Angela Reeves (500 Sansome Street, Suite 1400, San Francisco, California 94111), sent a detailed licensing and notice letter (the "First Licensing Letter") to Raymond Bautista, General Counsel of Lumicore Technologies, Inc., at Lumicore's principal place of business at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. The First Licensing Letter identified the '847, '193, and '562 Patents, described the relevant claims, identified the LumiLink 400G-ZR+ as an accused product, and invited Lumicore to discuss a licensing arrangement. A copy of the First Licensing Letter is attached as Exhibit 2 to the Declaration of Wendy Schultz.
On February 28, 2023, Lumicore responded through its outside counsel, Hawthorne Vega & Cruz LLP ("HVC"), specifically through lead partner Catherine "Kate" Rourke. In its response, Lumicore disputed infringement and raised questions regarding the validity of the identified patents, but did not provide any substantive analysis or identify any specific prior art.
On April 20, 2023, an in-person licensing meeting was held in Austin, Texas. The meeting was attended by Angela Reeves (FairPoint), Rebecca Tanaka (OWS General Counsel), Raymond Bautista (Lumicore General Counsel), and Kate Rourke (HVC). During the meeting, the parties discussed the Asserted Patents and Lumicore's products at a high level, but no resolution was reached. Lumicore's representatives indicated that they would review the matter further and respond in due course.
On May 15, 2023, FairPoint sent a second licensing letter (the "Second Licensing Letter") to Mr. Bautista, adding the '015 Patent — which had issued on August 2, 2022 — to the portfolio under discussion, and expanding the accused products to include the LumiLink 800G-DR8 transceiver module, which Lumicore had launched in the first quarter of 2023. A copy of the Second Licensing Letter is attached as Exhibit 3 to the Declaration of Wendy Schultz.
On July 10, 2023, Lumicore declined to take a license. In its declination letter (the "Declination Letter"), signed by Raymond Bautista, Lumicore stated:
"Lumicore has carefully evaluated your client's patent portfolio in consultation with experienced patent counsel. Having obtained competent legal opinions confirming that Lumicore's products do not infringe any valid claim of the patents identified in your correspondence, Lumicore respectfully declines to enter into a licensing arrangement at this time."
(Emphasis added.) A copy of the Declination Letter is attached as Exhibit 1 to the Declaration of Wendy Schultz.
The Declination Letter is of central importance to this motion. By voluntarily disclosing to OWS and its licensing agent that Lumicore had obtained "competent legal opinions" of non-infringement and invalidity, Lumicore placed the existence, subject matter, and favorable conclusion of those opinions squarely at issue.
C. Lumicore's Post-Notice Conduct
Despite having received detailed notice of all four Asserted Patents through the January 15, 2023 and May 15, 2023 FairPoint letters — and despite having declined to take a license based on purported "competent legal opinions" — Lumicore launched a third accused product, the LumiEdge 1600G-LR transceiver module, in the fourth quarter of 2023. The LumiEdge 1600G-LR is Lumicore's next-generation silicon photonics transceiver, designed for long-reach data center interconnect applications, and it incorporates the same core silicon photonics platform technologies as the LumiLink 400G-ZR+ and LumiLink 800G-DR8.
Significantly, no formal design-around analysis was commissioned or undertaken before the launch of the LumiEdge 1600G-LR. This fact was confirmed during the deposition of Raymond Bautista, taken on December 3, 2024, at which Mr. Bautista admitted under oath that no formal design-around analysis was performed prior to the commercial launch of the LumiEdge 1600G-LR. (Bautista Dep. Tr. at 147:8–148:3, attached as Exhibit 4 to the Declaration of Wendy Schultz.) Lumicore's decision to launch a new product line built on the same accused technology — without any effort to design around OWS's patents, and after having received detailed notice of those patents — is powerful evidence of willful infringement and underscores the centrality of the opinion-of-counsel letters to the willfulness inquiry.
D. Evidence from Lumicore's Own Personnel Regarding Patent Awareness
The evidence further demonstrates that Lumicore's awareness of OWS's patent portfolio predates the January 2023 FairPoint letter. Former Lumicore engineer Melissa Chen, who is now employed by Veridian Photonics, Inc., has indicated that Lumicore's LumiLink 400G-ZR+ design team accessed and reviewed OWS's published patent applications — specifically Published Application No. 2018/0123456, which corresponds to the '193 Patent — during the product design phase in 2021 and 2022. OWS served a third-party subpoena on Ms. Chen on January 22, 2025, seeking her testimony regarding this matter.
Moreover, Dr. Sandra Michaud, Lumicore's Chief Technology Officer, admitted during her deposition taken on November 19, 2024, that she personally reviewed OWS Published Application No. 2018/0123456 during the LumiLink 400G-ZR+ design phase. (Michaud Dep. Tr. at 89:14–91:7, attached as Exhibit 6 to the Declaration of Wendy Schultz.) Although Dr. Michaud denied knowledge of the issued patents until receipt of the FairPoint letter, her admission that she reviewed the published application during the design phase establishes that Lumicore was aware of OWS's claimed technology — and was affirmatively tracking it — well before the formal licensing outreach commenced.
This evidence is relevant to the scope and timing of any opinion-of-counsel letters obtained by Lumicore, and reinforces OWS's position that the waiver of privilege extends to all opinions addressing the Asserted Patents, including any obtained prior to the January 2023 FairPoint letter.
E. The Present Litigation
On April 22, 2024, after extensive pre-suit licensing efforts proved unsuccessful, OWS filed the original Complaint in this action (D.E. 1), asserting seven counts: direct infringement of the '847 Patent (Count I), direct infringement of the '193 Patent (Count II), direct infringement of the '562 Patent (Count III), direct infringement of the '015 Patent (Count IV), induced infringement of the Asserted Patents (Count V), contributory infringement of the Asserted Patents (Count VI), and willful infringement of the Asserted Patents with a request for enhanced damages under 35 U.S.C. § 284 (Count VII).
On June 17, 2024, Lumicore filed its Answer and Counterclaims (D.E. 12). Lumicore's Answer asserts affirmative defenses of non-infringement, invalidity under 35 U.S.C. §§ 102 and 103, unenforceability based on alleged inequitable conduct, and declaratory judgment of non-infringement. Of critical relevance to this motion, Lumicore has indicated both in its Answer and through counsel's statements during meet-and-confer discussions that it intends to rely on its good-faith belief in non-infringement and invalidity as a defense to OWS's willful infringement claim. That good-faith belief, as Lumicore has represented, is informed by the very opinion-of-counsel letters that Lumicore now refuses to produce.
F. Discovery Dispute and Meet-and-Confer Efforts
On August 26, 2024, OWS served its First Set of Requests for Production to Lumicore, consisting of eighty-five (85) Requests for Production. Among these requests, OWS specifically sought production of all opinion-of-counsel letters, memoranda, and related communications concerning the non-infringement and/or invalidity of the Asserted Patents. The relevant Request for Production is attached as Exhibit 7 to the Declaration of Wendy Schultz.
In its responses served on September 30, 2024, Lumicore objected to the production of all responsive opinion letters on the grounds of attorney-client privilege and work-product protection, and withheld all such documents in their entirety. Lumicore's objection was accompanied by a privilege log that identified the withheld documents only in the most general terms — listing document type, date range, author, and recipient, but providing no meaningful description of the subject matter or basis for the privilege assertion. Lumicore's relevant objection and response is attached as Exhibit 8 to the Declaration of Wendy Schultz.
Counsel for OWS undertook extensive meet-and-confer efforts to resolve this dispute without the need for Court intervention. Wendy Schultz of Calderwood & Harkness LLP and Samantha Briggs of Hawthorne Vega & Cruz LLP conducted three telephonic meet-and-confer conferences. During these conferences, Ms. Schultz explained OWS's position that Lumicore had waived the privilege by affirmatively referencing "competent legal opinions" in the July 10, 2023 Declination Letter and by intending to rely on advice of counsel as a defense to willfulness. Ms. Briggs responded on behalf of Lumicore that Lumicore maintained its privilege objections in full and that Lumicore had not waived any privilege.
On October 14, 2024, Ms. Schultz memorialized the parties' respective positions in a detailed meet-and-confer letter to Ms. Briggs, confirming the impasse and satisfying the prerequisite for filing this motion under Local Rule CV-7(h) and Federal Rule of Civil Procedure 37(a)(1). A copy of the October 14, 2024 meet-and-confer letter is attached as Exhibit 5 to the Declaration of Wendy Schultz.
G. Deposition Testimony of Raymond Bautista
On December 3, 2024, OWS took the deposition of Raymond Bautista, Lumicore's General Counsel. The deposition was limited in scope due to privilege assertions, but Mr. Bautista's testimony nonetheless confirmed several facts critical to this motion:
First, Mr. Bautista confirmed that he received FairPoint's January 15, 2023 licensing letter and forwarded it to outside counsel at Hawthorne Vega & Cruz LLP within three business days of receipt. (Bautista Dep. Tr. at 42:11–43:5.)
Second, Mr. Bautista confirmed that Lumicore obtained opinion-of-counsel letters in connection with the patents identified in FairPoint's licensing letters. (Bautista Dep. Tr. at 78:19–79:14.)
Third, Mr. Bautista refused to answer questions about the substance, authorship, scope, or conclusions of the opinion letters, invoking the attorney-client privilege on the instruction of counsel. (Bautista Dep. Tr. at 79:15–82:22.)
Fourth, Mr. Bautista admitted that no formal design-around analysis was commissioned or undertaken before Lumicore's launch of the LumiEdge 1600G-LR in the fourth quarter of 2023. (Bautista Dep. Tr. at 147:8–148:3.)
Relevant excerpts from the Bautista deposition transcript are attached as Exhibit 4 to the Declaration of Wendy Schultz, filed concurrently herewith.
III. LEGAL STANDARD
A. Motion to Compel Under Federal Rule of Civil Procedure 37(a)
Under Federal Rule of Civil Procedure 37(a)(3)(B), a party seeking discovery may move for an order compelling production of documents when the responding party fails to produce documents as requested under Rule 34 or asserts improper objections to such requests. The movant must demonstrate that the discovery sought is relevant to any party's claim or defense and is proportional to the needs of the case, consistent with the scope of discovery set forth in Rule 26(b)(1).
The party resisting discovery bears the burden of establishing that the asserted privilege or protection applies. See Fed. R. Civ. P. 26(b)(5)(A) (requiring the party withholding information on privilege grounds to "describe the nature of the documents, communications, or tangible things not produced or disclosed — and do so in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim"); see also Strathmore Advisors v. Wilkinson, 508 F.3d 277, 283 (5th Cir. 2007) (the party asserting a privilege bears the burden of demonstrating its applicability).
B. Attorney-Client Privilege — General Principles
The attorney-client privilege is the oldest of the privileges for confidential communications known to the common law. Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). The privilege protects confidential communications made between a client and an attorney for the purpose of obtaining or providing legal advice. The privilege belongs to the client and may be asserted or waived by the client.
Waiver of the attorney-client privilege may be express or implied. Express waiver occurs when the client voluntarily discloses privileged communications to a third party. Implied waiver — also referred to as "at issue" waiver or "offensive use" waiver — occurs when the holder of the privilege affirmatively places the content or subject matter of the privileged communication at issue in the litigation. See Rhone-Poulenc Rorer Inc. v. Home Indem. Co., 32 F.3d 851, 863 (3d Cir. 1994) ("The at-issue waiver . . . may be found where the party asserting the privilege places information protected by it in issue through some affirmative act for the party's own benefit, and to allow the privilege to protect against disclosure of such information would be manifestly unfair to the opposing party.").
Courts have consistently held that a party cannot use the attorney-client privilege as both a "sword and shield" — that is, a party cannot selectively disclose favorable portions of privileged communications while withholding unfavorable portions. See, e.g., In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1301 (Fed. Cir. 2006); Convolve, Inc. v. Compaq Computer Corp., 223 F.R.D. 162, 177 (S.D.N.Y. 2004).
C. Work-Product Doctrine — General Principles
The work-product doctrine, codified at Federal Rule of Civil Procedure 26(b)(3), protects from discovery documents and tangible things that are "prepared in anticipation of litigation or for trial by or for another party or its representative." The doctrine extends to materials prepared by or for a party's attorney, consultant, surety, indemnitor, insurer, or agent. See Hickman v. Taylor, 329 U.S. 495, 510–11 (1947).
Like the attorney-client privilege, the work-product doctrine may be waived. Waiver of work-product protection occurs when the party asserting the doctrine places the protected material at issue in the litigation, or when the party voluntarily discloses the protected material to an adversary or in circumstances inconsistent with the maintenance of the protection. See In re Seagate Tech., LLC, 497 F.3d 1360, 1372 (Fed. Cir. 2007) (en banc) (holding that "asserting the advice of counsel defense and disclosing the advice received" waives work-product protection for documents "related to the communication between the attorney and client").
IV. ARGUMENT
A. Lumicore Has Waived Attorney-Client Privilege by Affirmatively Placing Its Reliance on Counsel's Opinions at Issue
1. The July 10, 2023 Declination Letter Constitutes an Affirmative Disclosure. The analysis of Lumicore's privilege waiver begins with Lumicore's own words. In its July 10, 2023 Declination Letter, Lumicore — through its General Counsel Raymond Bautista — expressly represented to OWS and its licensing agent that Lumicore had obtained "competent legal opinions" confirming that Lumicore's products do not infringe any valid claim of the patents identified in FairPoint's licensing correspondence. (Ex. 1 to Schultz Decl.) This was not an inadvertent or passing reference. It was a deliberate, strategic communication to an adversary, made for the purpose of justifying Lumicore's refusal to take a license and signaling that Lumicore's continued manufacture and sale of accused products was supported by considered legal advice.
By voluntarily communicating to OWS the existence, general subject matter, and favorable conclusion of its opinion-of-counsel letters, Lumicore made an affirmative disclosure that placed those opinions at issue. The disclosure was made to a party adverse in interest — OWS, through its licensing agent — and was plainly intended to convey the impression that Lumicore's continued conduct was legally justified. Lumicore cannot now retreat behind the privilege it so voluntarily pierced. Having disclosed the sword, Lumicore cannot retain the shield.
The critical point is this: Lumicore did not merely remain silent or decline to take a license without explanation. It affirmatively cited the existence and favorable conclusion of its opinion letters as the basis for its decision. This voluntary disclosure to an adversary constitutes a waiver of the privilege as to the subject matter of those opinions. See In re EchoStar, 448 F.3d at 1301 (holding that "the widely applied standard for determining the scope of a waiver of attorney-client privilege . . . [is that] the waiver applies to all other communications relating to the same subject matter"); Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1349 (Fed. Cir. 2005) (finding waiver where the patent holder disclosed the favorable conclusions of counsel's analysis to a third party).
Lumicore's selective disclosure — touting the existence and result of its legal opinions while withholding the underlying reasoning — is precisely the type of conduct that the "sword and shield" doctrine is designed to prevent. If Lumicore wished to preserve the privilege, it could have declined the license without reference to any legal opinions. Having chosen to deploy those opinions as a justification, Lumicore must accept the consequences of that choice.
2. Lumicore's Defense to Willful Infringement Places the Opinions at Issue. Independent of the July 10, 2023 Declination Letter, Lumicore's litigation position separately triggers an implied waiver of the privilege. OWS's Complaint asserts willful infringement of all four Asserted Patents (Count VII) and seeks enhanced damages under 35 U.S.C. § 284.
Under the Supreme Court's decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), enhanced damages for patent infringement are available in cases of "egregious" infringement — that is, cases involving "willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or — indeed — characteristic of a pirate." Id. at 103–04 (quoting Seymour v. McCormick, 57 U.S. (16 How.) 480, 488 (1854)). In assessing willfulness, courts examine the totality of the circumstances, including whether the infringer acted despite knowledge of the patent and without a reasonable basis for believing its conduct was non-infringing.
Lumicore has indicated — both through its Answer and Counterclaims (D.E. 12) and through counsel's representations during the meet-and-confer conferences — that it intends to defend against OWS's willful infringement claim by relying on its good-faith belief in non-infringement and invalidity. That good-faith belief, Lumicore has represented, was informed by the opinion-of-counsel letters it obtained in response to OWS's licensing outreach. In other words, Lumicore intends to use the opinion letters as the foundation of its defense to willfulness.
It is well settled that when a defendant places its reliance on counsel's advice at issue as a defense or shield against a willful infringement claim, the defendant waives the attorney-client privilege and work-product protection with respect to the opinions on which it relies. See In re Seagate Tech., LLC, 497 F.3d 1360, 1373 (Fed. Cir. 2007) (en banc) (holding that when a party "asserts the advice of counsel defense" to a charge of willful infringement, it waives the attorney-client privilege and work-product protection for communications with opinion counsel relating to the subject matter of the opinion). The Federal Circuit's rationale is straightforward: a defendant who deploys evidence of its reliance on counsel's advice to defeat a willfulness claim cannot simultaneously prevent the plaintiff from testing the quality, completeness, and good faith of that advice through discovery.
While the Federal Circuit in Seagate also held that "the failure to obtain an exculpatory opinion of counsel shall no longer create an adverse inference of willful infringement," id. at 1371, the court was equally clear that a party who does rely on opinion-of-counsel letters as part of its defense waives the privilege with respect to those opinions. The Halo decision did not disturb this fundamental principle. Post-Halo, the analysis is the same: if the defendant chooses to deploy evidence of advice of counsel to rebut a claim of willful infringement, the privilege is waived, and the plaintiff is entitled to discover and test the opinions on which the defendant relies.
Lumicore cannot be heard to argue that it has not yet "formally" asserted the advice-of-counsel defense. The law does not require a formal invocation of a defense before the implied waiver attaches. Where, as here, the defendant has affirmatively cited its reliance on legal opinions to its adversary prior to suit, and has indicated through its pleadings and counsel's representations that it intends to rely on its good-faith belief — a belief informed by those same opinions — the waiver has already occurred. See Theranos, Inc. v. Draven Pharma LLC, No. 11-cv-5236, 2014 WL 1168689, at *4 (D. Del. Mar. 21, 2014) (finding waiver where the defendant "placed the advice it received from counsel at issue in this litigation" through its pleadings and discovery conduct).
3. The Waiver Extends to All Opinions Addressing Non-Infringement and Invalidity of the Asserted Patents. The scope of Lumicore's waiver is coextensive with the scope of the opinions it has placed at issue. Lumicore's July 10, 2023 Declination Letter did not limit the referenced "competent legal opinions" to a single patent, a single accused product, or a specific date range. Rather, Lumicore broadly represented that it had obtained opinions confirming that "Lumicore's products" — in the plural — "do not infringe any valid claim of the patents identified in [FairPoint's] correspondence." (Ex. 1 to Schultz Decl.) The "patents identified" in FairPoint's correspondence include all four Asserted Patents — the '847, '193, '562, and '015 Patents. The "products" referenced include all products that were the subject of the licensing discussions — the LumiLink 400G-ZR+ and LumiLink 800G-DR8 at a minimum, and the subsequently launched LumiEdge 1600G-LR by logical extension.
The waiver therefore extends to all opinion-of-counsel letters, memoranda, and related communications obtained by Lumicore concerning the non-infringement and/or invalidity of the '847, '193, '562, and '015 Patents as applied to the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR product lines. This includes any initial opinions, supplemental opinions, updated opinions, and follow-up analyses, whether obtained before or after the filing of this litigation.
The waiver also extends to materials considered by opinion counsel in the preparation of those opinions, including any prior-art searches, technical analyses, claim charts, and communications between Lumicore's engineering and technical personnel and opinion counsel. See In re EchoStar, 448 F.3d at 1302–03 (holding that "the waiver of the attorney-client privilege extends to all communications on the same subject matter" and "the documents and information that an opinion of counsel considered and relied upon in rendering legal advice" must also be produced).
B. Lumicore Cannot Use the Opinions as Both Sword and Shield
1. The "Sword and Shield" Doctrine Prohibits Selective Invocation of Privilege. The fundamental unfairness of Lumicore's position is manifest. Lumicore has sought to benefit from the favorable conclusion of its opinion letters in two distinct ways: first, by citing them to OWS in the July 10, 2023 Declination Letter as a reason not to take a license, and second, by asserting good-faith reliance on legal advice as a defense to OWS's willful infringement claim. At the same time, Lumicore seeks to shield the underlying analysis, reasoning, and completeness of those very opinions from OWS's scrutiny by asserting blanket attorney-client privilege and work-product objections.
This is the paradigmatic "sword and shield" scenario. Courts have uniformly rejected attempts by litigants to wield privilege selectively — invoking it to withhold unfavorable material while voluntarily disclosing favorable conclusions. See Rhone-Poulenc, 32 F.3d at 863 ("The quintessential example [of at-issue waiver] is the plaintiff who asserts a claim of fraud and then invokes the privilege to prevent the defendant from gaining access to the very communications that would show the plaintiff's state of mind."); In re EchoStar, 448 F.3d at 1301 ("A party cannot use the attorney-client privilege as both a 'sword and a shield.'"); Convolve, 223 F.R.D. at 177 (same).
Allowing Lumicore to assert that it relied on "competent legal opinions" while preventing OWS from examining the quality, completeness, and bona fides of those opinions would be fundamentally unfair. It would deprive OWS of the ability to probe whether the opinions were thorough and well-reasoned, whether they addressed all asserted claims and accused products, whether they were based on complete and accurate technical information, and whether Lumicore's purported reliance on them was genuine. In short, it would deprive OWS of the ability to prove its willful infringement claim — a claim that Congress authorized through the enhanced damages provision of 35 U.S.C. § 284 and that the Supreme Court reaffirmed in Halo.
2. Lumicore's Blanket Privilege Objection Is Inconsistent with Its Litigation Position. The inconsistency in Lumicore's position is stark. If Lumicore has elected to rely on advice of counsel as a defense to willfulness — as its pleadings, discovery conduct, and counsel's representations during meet-and-confer conferences suggest — then the privilege has been waived, and the opinion letters must be produced. If, on the other hand, Lumicore has not elected to rely on advice of counsel, then the privilege may remain intact — but Lumicore cannot have it both ways. It cannot simultaneously assert the privilege and deploy the advice-of-counsel defense.
To the extent Lumicore contends that it is not relying on the opinion letters as a defense to willfulness, the appropriate remedy is clear: Lumicore should be required to affirmatively and irrevocably disclaim any reliance on advice of counsel as a defense to willful infringement. In that event, the Court should enter an order precluding Lumicore from introducing any evidence or argument at trial that it relied on advice of counsel, that it held a good-faith belief in non-infringement or invalidity informed by legal opinions, or that it took any steps based on counsel's advice to evaluate the Asserted Patents. Such a preclusion order is necessary to prevent Lumicore from "sandbagging" OWS by withholding the opinion letters during discovery only to assert reliance on them at trial.
C. The Scope of Waiver Encompasses All Related Communications and Materials
1. Temporal Scope. The waiver extends from the date Lumicore first sought or received opinion-of-counsel advice regarding the Asserted Patents through the present date, and continuing through the conclusion of this litigation. This temporal scope is appropriate because Lumicore's July 10, 2023 Declination Letter referenced opinions without any temporal limitation, and because the willfulness inquiry encompasses the entirety of Lumicore's conduct from the time it first became aware of the Asserted Patents.
The temporal scope encompasses, at minimum, the following periods:
(a) Pre-FairPoint Letter Period (2021–January 2023): To the extent Lumicore obtained any legal opinions regarding OWS's patents or published patent applications before receipt of FairPoint's January 15, 2023 letter, those opinions are within the scope of the waiver. The deposition testimony of Dr. Sandra Michaud — confirming that she reviewed OWS Published Application No. 2018/0123456 during the LumiLink 400G-ZR+ design phase in 2021–2022 (Michaud Dep. Tr. at 89:14–91:7) — suggests that Lumicore was aware of OWS's technology claims well before the formal licensing outreach commenced, and may have sought legal advice concerning the published applications during the design phase.
(b) Post-Notice, Pre-Suit Period (January 2023–April 2024): This period encompasses the core licensing negotiation phase and the time during which Lumicore obtained the "competent legal opinions" referenced in the July 10, 2023 Declination Letter. Any opinions obtained during this period are clearly within the scope of the waiver.
(c) Post-Filing Period (April 2024–present): Any opinions obtained after the filing of this litigation on April 22, 2024, including any supplemental or updated opinions addressing the merits of OWS's claims in light of the Complaint, are also within the scope of the waiver. A party cannot obtain a pre-suit opinion, place it at issue, and then argue that a post-suit update or supplement to that opinion is separately privileged.
2. Subject-Matter Scope. The subject-matter scope of the waiver extends to all communications between Lumicore and opinion counsel — whether opinion counsel is Hawthorne Vega & Cruz LLP or any other law firm retained for this purpose — regarding the infringement, non-infringement, validity, invalidity, and 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.
The subject-matter scope also encompasses all underlying technical analyses, claim charts, prior-art search results, and communications between Lumicore's engineering and technical staff and opinion counsel that were considered or relied upon in the preparation of the opinions. This includes, but is not limited to, any prior-art searches or analyses conducted by Marlowe Asset Management Patent Analytics, Inc. ("Marlowe Asset Management"), Lumicore's retained prior-art search firm (1100 Peachtree Street NE, Suite 2200, Atlanta, Georgia 30309), to the extent those materials were shared with or relied upon by opinion counsel. See In re EchoStar, 448 F.3d at 1302–03 (requiring production of "documents and information that an opinion of counsel considered and relied upon").
The principle underlying this broad scope is well established: a waiver of privilege with respect to an opinion-of-counsel letter is meaningless if the opposing party is denied access to the materials that informed the opinion. Without access to those materials, OWS cannot evaluate whether the opinions were based on complete and accurate information, whether they addressed all relevant claims and accused product features, and whether they were the product of competent and thorough analysis.
3. Distinction Between Trial Counsel and Opinion Counsel. OWS recognizes the distinction drawn by the Federal Circuit in In re Seagate between trial counsel and opinion counsel. In Seagate, the Federal Circuit held that waiver of privilege with respect to opinion counsel's work "does not extend waiver to trial counsel" in most circumstances, noting that "the waiver of the attorney-client privilege . . . does not automatically extend to communications with trial counsel." 497 F.3d at 1374. The court reasoned that "trial counsel is not likely to be the same counsel who rendered the opinion, and thus the party should not reasonably be expected to waive the privilege as to communications with trial counsel merely because it asserted the advice-of-counsel defense based on opinion counsel's work." Id.
OWS's motion is directed at the opinion-of-counsel letters and related materials — i.e., the substantive legal opinions on which Lumicore claims to have relied — and not at trial counsel's litigation strategy, mental impressions, or work product prepared in connection with the prosecution or defense of this action.
However, OWS notes an important caveat: to the extent opinion counsel and trial counsel are the same — that is, to the extent Hawthorne Vega & Cruz LLP served as both the firm that rendered the opinion letters and the firm retained to defend this litigation — the distinction recognized in Seagate may be inapplicable. The Seagate court's rationale for protecting trial counsel's work was grounded in the assumption that opinion counsel and trial counsel are typically different firms or different attorneys. Where, as may be the case here, the same firm performed both the opinion function and the litigation function, the waiver extends to those communications that constitute or relate to the opinion function, and Lumicore bears the burden of establishing any applicable distinction between opinion-related and litigation-related communications. See In re Seagate, 497 F.3d at 1374–75; see also Westvale Holdings. v. Pemberton Corporation, 2007 WL 4403389, at *3 (C.D. Cal. Dec. 13, 2007) (noting that "where trial counsel also served as opinion counsel, the scope of waiver may extend to trial counsel's communications").
D. Lumicore's Deposition Conduct Confirms the Centrality of the Opinion Letters
The deposition testimony of Lumicore's General Counsel, Raymond Bautista, taken on December 3, 2024, further confirms both the existence of the opinion letters and their centrality to the willfulness inquiry in this case.
During his deposition, Mr. Bautista confirmed that he received FairPoint's January 15, 2023 licensing letter, that he forwarded it to outside counsel within three business days, and that Lumicore obtained opinion-of-counsel letters in connection with the patents identified in FairPoint's correspondence. (Bautista Dep. Tr. at 42:11–43:5; 78:19–79:14.) Mr. Bautista then refused to answer any questions about the substance, scope, authorship, or conclusions of those opinions, invoking the attorney-client privilege at the direction of counsel. (Bautista Dep. Tr. at 79:15–82:22.)
Mr. Bautista's testimony places the opinion letters at the very center of the willfulness inquiry. He has confirmed their existence. He has confirmed that they were obtained in direct response to the notice that forms the basis of OWS's willful infringement claim. And he has confirmed — by his refusal to answer questions about their substance — that Lumicore considers their content privileged and intends to control the circumstances under which that content is disclosed.
Critically, Mr. Bautista's further admission that no formal design-around analysis was commissioned or undertaken before the launch of the LumiEdge 1600G-LR in Q4 2023 (Bautista Dep. Tr. at 147:8–148:3) underscores the importance of the opinion letters as the sole documented basis for Lumicore's claimed good-faith belief in non-infringement and invalidity. If Lumicore did not design around the Asserted Patents and did not modify its products in response to OWS's notice, then the opinion letters are the only evidence that Lumicore can point to in support of its contention that it acted in good faith. Those letters must be produced so that OWS — and ultimately the jury — can evaluate whether Lumicore's reliance on them was objectively reasonable and subjectively genuine.
E. Policy Considerations Support Compelling Production
Beyond the legal framework, compelling production of the opinion letters is consistent with the policy objectives underlying the willful infringement doctrine and the enhanced damages provision of 35 U.S.C. § 284.
The Supreme Court in Halo reaffirmed that enhanced damages serve a critical deterrent function, discouraging patent infringement that is "willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or — indeed — characteristic of a pirate." 579 U.S. at 103–04. That deterrent function is undermined when defendants are permitted to cloak their state of mind behind blanket privilege assertions while simultaneously citing reliance on legal opinions as a defense to willfulness. If the law permits a defendant to obtain an opinion letter, reference it to the patent holder as justification for continued infringement, assert reliance on it in litigation as a defense to enhanced damages, and yet prevent the patent holder from ever seeing the opinion — then the willful infringement doctrine becomes a dead letter in practice. A defendant could obtain a cursory, incomplete, or even sham opinion, cite it in pre-suit correspondence and in court, and shield it from scrutiny forever. The law does not countenance such a result.
Moreover, the Stipulated Protective Order already entered in this case (D.E. 24) provides a robust framework for the protection of confidential information. The Protective Order establishes three tiers of confidentiality designation — "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code" — and imposes strict limitations on the use and dissemination of designated material. The opinion letters, if produced, may be designated at the "Highly Confidential — Attorneys' Eyes Only" tier, ensuring that their contents are accessible only to outside litigation counsel and designated experts, and not to OWS's business personnel. Lumicore's concern about the sensitivity of the opinions' content — to the extent such a concern underlies its blanket refusal — is therefore adequately addressed by the existing protective framework.
V. RELIEF REQUESTED
For the foregoing reasons, OWS respectfully requests that the Court enter an order:
1. Compelling production of all opinion-of-counsel letters and related materials. Specifically, ordering Lumicore to produce, within fourteen (14) days of the Court's order, all opinion-of-counsel letters, memoranda, and related communications and materials concerning the non-infringement, invalidity, and/or unenforceability 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 LumiEdge 1600G-LR product lines.
2. Compelling production of all underlying materials considered by opinion counsel. Specifically, ordering Lumicore to produce all underlying materials considered or relied upon by opinion counsel in the preparation of the opinion letters, including but not limited to prior-art search results, claim charts, technical analyses, reverse engineering reports, and communications between Lumicore's engineering, technical, and management personnel and opinion counsel.
3. In the alternative, if the Court determines that the scope of waiver should be limited, ordering Lumicore to produce the specific opinion-of-counsel letters referenced in its July 10, 2023 Declination Letter signed by Raymond Bautista, together with any supplements, updates, or revisions to those specific opinions.
4. In the further alternative, if the Court determines that Lumicore has not waived the privilege, ordering Lumicore to affirmatively and irrevocably disclaim any reliance on advice of counsel as a defense to OWS's willful infringement claim and precluding Lumicore from introducing any evidence or argument at trial that it relied on legal opinions, held a good-faith belief in non-infringement or invalidity informed by legal advice, or took steps based on counsel's advice to evaluate the Asserted Patents.
5. Awarding OWS its reasonable expenses. Awarding OWS its reasonable expenses, including attorneys' fees, incurred in connection with this motion, pursuant to Federal Rule of Civil Procedure 37(a)(5).
VI. CERTIFICATION OF CONFERENCE
Pursuant to Local Rule CV-7(h) and Federal Rule of Civil Procedure 37(a)(1), counsel for Plaintiff Optiwave Semiconductor Corp. hereby certifies that it has conferred in good faith with counsel for Defendant Lumicore Technologies, Inc. in an effort to resolve this discovery dispute without Court intervention. Specifically, Wendy Schultz of Calderwood & Harkness LLP, counsel for OWS, and Samantha Briggs of Hawthorne Vega & Cruz LLP, counsel for Lumicore, conducted three telephonic meet-and-confer conferences to discuss the production of opinion-of-counsel letters. During each conference, Ms. Schultz explained OWS's position that Lumicore had waived the attorney-client privilege and work-product protection by affirmatively placing the opinion letters at issue, and Ms. Briggs responded that Lumicore maintained its privilege objections in full. The parties' respective positions were memorialized in a detailed letter from Ms. Schultz to Ms. Briggs dated October 14, 2024 (attached as Exhibit 5 to the Declaration of Wendy Schultz). Despite these good-faith efforts, the parties were unable to reach agreement, and this motion is necessary to resolve the dispute.
VII. CONCLUSION
For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court grant its Motion to Compel and order Defendant Lumicore Technologies, Inc. to produce all opinion-of-counsel letters, memoranda, and related communications and materials, together with all underlying materials considered or relied upon by opinion counsel, within fourteen (14) days of the Court's order. In the alternative, OWS requests that the Court order Lumicore to irrevocably disclaim any reliance on advice of counsel as a defense to willful infringement and preclude Lumicore from introducing any evidence or argument of such reliance at trial.
Respectfully submitted,
Dated: October 21, 2024
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (CA Bar No. 247893; admitted pro hac vice) Marcus Delgado (TX Bar No. 05684291) Wendy Schultz (CA Bar No. 301457; admitted pro hac vice) Omar Siddiqui (CA Bar No. 318726; admitted pro hac vice) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 486-7200 Facsimile: (213) 486-7201
Email: ango@calderwoodharkness.com
Email: mdelgado@calderwoodharkness.com
Email: wschultz@calderwoodharkness.com
Email: osiddiqui@calderwoodharkness.com
Of Counsel:
WHITMORE & CALLAHAN LLP
James "Jim" Callahan (TX Bar No. 03792140) 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 531-8400
Email: jcallahan@whitmorecallahan.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
CERTIFICATE OF SERVICE
I hereby certify that on October 21, 2024, a true and correct copy of the foregoing Plaintiff Optiwave Semiconductor Corp.'s Motion to Compel Production of Defendant Lumicore Technologies, Inc.'s Opinion-of-Counsel Letters Pursuant to Federal Rules of Civil Procedure 26 and 37 was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following:
Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer HAWTHORNE VEGA & CRUZ LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701
Email: krourke@hvclegal.com
Email: dcho@hvclegal.com
Email: sbriggs@hvclegal.com
Email: riyer@hvclegal.com
Maria Garza TRASK EDDINGTON LLP 425 East Front Street, Suite 300 Tyler, Texas 75701
Email: mgarza@traskeddington.com
Attorneys for Defendant Lumicore Technologies, Inc.
By: ________
Wendy Schultz
EXHIBITS INDEX
The following exhibits are attached to and submitted in support of this Motion through the Declaration of Wendy Schultz, filed concurrently herewith:
Exhibit No. | Description
Exhibit 1 | Lumicore Technologies, Inc.'s July 10, 2023 Declination Letter from Raymond Bautista (General Counsel) to FairPoint Licensing Group, LLC, referencing "competent legal opinions" that Lumicore's products do not infringe any valid claim of the Asserted Patents
Exhibit 2 | FairPoint Licensing Group, LLC's January 15, 2023 First Licensing/Notice Letter to Raymond Bautista, identifying the '847, '193, and '562 Patents and accusing the LumiLink 400G-ZR+
Exhibit 3 | FairPoint Licensing Group, LLC's May 15, 2023 Second Licensing Letter to Raymond Bautista, adding the '015 Patent and expanding accused products to include the LumiLink 800G-DR8
Exhibit 4 | Relevant excerpts from the deposition transcript of Raymond Bautista (December 3, 2024), including testimony confirming receipt of FairPoint letters, existence of opinion-of-counsel letters, refusal to testify about substance on privilege grounds, and admission that no formal design-around analysis was conducted before the LumiEdge 1600G-LR launch
Exhibit 5 | Meet-and-confer correspondence from Wendy Schultz (Calderwood & Harkness LLP) to Samantha Briggs (Hawthorne Vega & Cruz LLP), dated October 14, 2024, memorializing three telephonic conferences and the parties' respective positions on the production of opinion-of-counsel letters
Exhibit 6 | Relevant excerpts from the deposition transcript of Dr. Sandra Michaud (November 19, 2024), including testimony that she reviewed OWS Published Application No. 2018/0123456 during the LumiLink 400G-ZR+ design phase in 2021–2022
Exhibit 7 | OWS's First Set of Requests for Production to Lumicore (served August 26, 2024) — relevant Request for Production seeking opinion-of-counsel letters, memoranda, and related communications
Exhibit 8 | Lumicore's Objections and Responses to OWS's First Set of Requests for Production — relevant response asserting attorney-client privilege and work-product protection over opinion-of-counsel letters