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

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

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

I. INTRODUCTION

Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully submits this Reply in Support of its Motion to Compel Production of Defendant Lumicore Technologies, Inc.'s ("Lumicore") Opinion-of-Counsel Letters, responding to Lumicore's Opposition (D.E. 48, filed November 4, 2024). This Reply is supported by the entire record before this Court, including OWS's original Motion to Compel (D.E. 40, filed October 21, 2024), the Memorandum in Support (D.E. 41), and the Declaration of Wendy Schultz (D.E. 42) with attached exhibits.

Lumicore's Opposition raises three principal arguments in defense of its refusal to produce the opinion-of-counsel letters that OWS seeks: first, that Lumicore has not waived the attorney-client privilege attaching to the opinion letters; second, that the work-product doctrine independently shields the opinion letters from disclosure; and third, that even if waiver is found, the scope of any such waiver should be narrowly circumscribed. None of these arguments withstands scrutiny under the governing law, and each is contradicted by Lumicore's own conduct in this litigation and in the pre-suit correspondence that gave rise to it.

The core factual predicate is undisputed. On July 10, 2023, in a letter declining to take a license to OWS's patents, Lumicore expressly represented to OWS and its licensing agent that it had obtained "competent legal opinions" confirming that its products do not infringe the asserted patents. That representation was not casual, inadvertent, or incidental. It was a deliberate, strategic communication designed to insulate Lumicore from a willful infringement claim while it continued to manufacture, sell, and profit from accused products — including a new product line launched after receiving notice of infringement.

Then, in its Answer and Counterclaims (D.E. 12, filed June 17, 2024), Lumicore went further still: it formally asserted that it did not willfully infringe because it relied in good faith on the advice of counsel. Lumicore has thus deployed the opinions as both a sword and a shield — invoking their existence and favorable conclusions to justify its continued infringing conduct and to defend against OWS's willfulness allegations, while simultaneously refusing to produce the opinions themselves for OWS to evaluate. This Court should not countenance such gamesmanship.

This Reply demonstrates that the Court should compel production of the opinion letters and all related communications for three independent reasons: (a) Lumicore affirmatively placed the opinions at issue by invoking them as a basis for its continued infringement in the July 10, 2023 declination letter; (b) Lumicore's pleaded advice-of-counsel defense in its Answer and Counterclaims constitutes an unambiguous waiver of any privilege that might otherwise attach to the opinions; and (c) fundamental fairness — the animating principle of the "at issue" waiver doctrine — requires that Lumicore not be permitted to use the favorable conclusions of its counsel's advice while hiding the underlying analysis from OWS and from this Court.

II. FACTUAL BACKGROUND

The relevant facts, most of which are undisputed, are set forth in detail in OWS's Memorandum in Support (D.E. 41) and the Schultz Declaration (D.E. 42). OWS summarizes them here for the Court's convenience and supplements them with developments that have occurred since the filing of the original Motion.

A. Pre-Suit Notice and Lumicore's Invocation of Counsel Opinions

On January 15, 2023, FairPoint Licensing Group, LLC ("FairPoint"), acting as OWS's exclusive licensing agent, sent a detailed notice and licensing letter to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. (Schultz Decl. ¶ 3, Ex. A.) That letter identified three OWS patents — U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), and 9,678,562 (the "'562 Patent") — and provided Lumicore with claim charts mapping specific claims of each patent to Lumicore's LumiLink 400G-ZR+ and LumiLink 800G-DR8 optical transceiver modules. The letter put Lumicore on actual notice of potential infringement and invited Lumicore to enter into licensing discussions.

On February 28, 2023, Lumicore responded through its outside counsel, Hawthorne Vega & Cruz LLP ("HVC"). (Schultz Decl. ¶ 5, Ex. B.) In that response, HVC disputed infringement on behalf of Lumicore and also questioned the validity of the asserted patents. The letter did not reference any opinion-of-counsel analysis, but its substantive engagement with the infringement and validity questions demonstrates that Lumicore's counsel was actively analyzing the OWS patent portfolio at that time.

On April 20, 2023, the parties held an in-person licensing meeting at FairPoint's offices in Austin, Texas. (Schultz Decl. ¶ 7.) The meeting was attended by Angela Reeves (FairPoint Managing Director), Rebecca Tanaka (OWS General Counsel), Raymond Bautista (Lumicore General Counsel), and Catherine "Kate" Rourke (HVC Lead Partner). At that meeting, OWS presented detailed technical infringement analyses. No resolution was reached, and the parties agreed to continue discussions.

On May 15, 2023, FairPoint sent a second licensing letter, this time adding a fourth patent — U.S. Patent No. 11,402,015 (the "'015 Patent") — and expanding the scope of accused products to include Lumicore's LumiLink 800G-DR8. (Schultz Decl. ¶ 8, Ex. C.) The letter included updated claim charts and reiterated OWS's invitation to negotiate a license.

On July 10, 2023, Lumicore sent the letter that lies at the heart of this dispute. (Schultz Decl. ¶ 9, Ex. D.) In that letter, Lumicore formally declined to take a license to OWS's patents. Critically, the letter stated:

"Lumicore has obtained competent legal opinions confirming that its products do not infringe the patents identified in your correspondence. Accordingly, Lumicore respectfully declines the proposed license and considers this matter closed."

This statement was not a throwaway line or a formulaic pleasantry. It was a calculated, strategic communication — authored by or at the direction of Lumicore's General Counsel and/or HVC — designed to create a contemporaneous record that Lumicore had investigated the infringement allegations and concluded, on the basis of legal advice, that its products were non-infringing. The July 10, 2023 letter served no purpose other than to establish a defense to a future willful infringement claim.

Despite this asserted belief in non-infringement, Lumicore proceeded to launch a new product — the LumiEdge 1600G-LR optical module — in the fourth quarter of 2023. OWS alleges that the LumiEdge 1600G-LR infringes the '193 and '015 Patents. Lumicore launched this product after receiving notice of infringement, after engaging in licensing discussions with OWS, and after purportedly obtaining "competent legal opinions" — yet, as discussed below, Lumicore's own General Counsel admitted at deposition that no formal design-around analysis was commissioned before the LumiEdge 1600G-LR launch.

B. Lumicore's Assertion of Advice-of-Counsel Defense

OWS filed this action on May 6, 2024. (D.E. 1.) The Complaint asserts claims for infringement of the '847, '193, '562, and '015 Patents and alleges that Lumicore's infringement is willful.

On June 17, 2024, Lumicore filed its Answer and Counterclaims. (D.E. 12.) Among its affirmative defenses, Lumicore asserted that it did not willfully infringe OWS's patents because it acted in good faith reliance on the advice of legal counsel. Specifically, Paragraph 87 of Lumicore's Answer states:

"Lumicore denies that its conduct was willful. At all relevant times, Lumicore relied in good faith on the legal analysis and advice of qualified patent counsel in concluding that its products do not infringe the asserted patents and that the asserted patents are invalid."

By asserting this defense, Lumicore placed the substance, completeness, and reasonableness of its counsel's opinions directly at issue in this litigation. The defense is intelligible only if the Court and OWS are able to evaluate the actual opinions on which Lumicore claims to have relied. Lumicore cannot have it both ways.

C. Deposition Testimony of Raymond Bautista

On December 3, 2024, OWS deposed Lumicore's General Counsel, Raymond Bautista. (Schultz Suppl. Decl. ¶ 3, Ex. E.) During his deposition, Mr. Bautista confirmed receipt of FairPoint's January 15, 2023 licensing letter and stated that he forwarded the letter to outside counsel at HVC within three business days of receipt. (Bautista Dep. Tr. 47:8–48:2.) Mr. Bautista further confirmed that he was involved in the preparation of the July 10, 2023 declination letter. (Bautista Dep. Tr. 63:14–64:5.)

However, when OWS's counsel inquired about the substance, scope, and timing of the opinion letters referenced in the July 10, 2023 letter, Lumicore's counsel instructed Mr. Bautista not to answer, asserting attorney-client privilege. (Bautista Dep. Tr. 72:3–73:19; 78:11–79:8; 84:2–85:14.) Mr. Bautista refused to identify the number of opinions obtained, the dates on which they were rendered, the patents they addressed, the products they covered, or the identity of the attorneys who prepared them.

Despite these broad privilege assertions, Mr. Bautista made one critical admission: he confirmed that no formal design-around analysis was commissioned before Lumicore launched the LumiEdge 1600G-LR module in Q4 2023. (Bautista Dep. Tr. 91:7–92:3.) This admission raises serious questions about the scope and adequacy of the "competent legal opinions" that Lumicore claims to have obtained. If the opinions addressed only the earlier LumiLink products and did not cover the LumiEdge 1600G-LR — a product launched after notice and after the purported opinions were obtained — then Lumicore's reliance defense is, at best, incomplete.

D. Meet-and-Confer Efforts

As detailed in the Declaration of Wendy Schultz (D.E. 42) and the supplemental declaration filed herewith, the parties engaged in extensive meet-and-confer efforts before OWS filed its Motion to Compel and have continued those efforts since the Motion was filed. Specifically:

• On September 18, 2024, Wendy Schultz (Calderwood & Harkness) and Samantha Briggs (HVC) held a telephonic meet-and-confer in which OWS first raised the issue of the opinion letters and Lumicore asserted privilege.

• On October 2, 2024, Ms. Schultz and Ms. Briggs held a second telephonic meet-and-confer, during which OWS explained its waiver arguments and requested voluntary production. Lumicore refused.

• On October 14, 2024, Ms. Schultz sent a detailed meet-and-confer letter to Ms. Briggs setting forth OWS's position and offering to accept production under the "Highly Confidential — Attorneys' Eyes Only" tier of the existing Protective Order. Lumicore did not agree to produce the opinion letters.

• On October 30, 2024, following the filing of OWS's Motion to Compel, the parties held a supplemental telephonic meet-and-confer at Lumicore's request. Lumicore again maintained its privilege objection.

• On November 8, 2024, Ms. Schultz and Ms. Briggs held a final telephonic meet-and-confer. Lumicore maintained its position that no waiver has occurred and that the opinion letters are shielded by both attorney-client privilege and work-product protection.

Despite these good-faith efforts, the parties have been unable to resolve this dispute. OWS files this Reply to bring the matter to resolution before the Court.

III. LEGAL ARGUMENT

A. Lumicore Has Waived Attorney-Client Privilege by Placing the Opinion Letters at Issue

1. The "At Issue" Waiver Doctrine Governs This Dispute

It is well established under both Fifth Circuit law and Federal Circuit precedent — which controls on patent-specific issues, including willful infringement — that a party waives the attorney-client privilege when it injects privileged communications into the litigation as a sword while simultaneously attempting to maintain the privilege as a shield. See Conkling v. Turner, 18 F.3d 1285, 1295 (5th Cir. 1994) (holding that privilege is waived when the party asserting it "places the protected information at issue by making it relevant to the case"); In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1299 (Fed. Cir. 2006) (applying "at issue" waiver doctrine in patent context). The doctrine rests on the fundamental principle of fairness: a litigant may not use the privilege "both as a sword and a shield." United States v. Bilzerian, 926 F.2d 1285, 1292 (2d Cir. 1991); accord Rhone-Poulenc Rorer Inc. v. Home Indem. Co., 32 F.3d 851, 863 (3d Cir. 1994).

The Supreme Court's decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), reinforced the centrality of the infringer's subjective state of mind to the willful infringement inquiry. Under Halo, enhanced damages under 35 U.S.C. § 284 are available where the infringer's conduct is "willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or — indeed — characteristic of a pirate." Id. at 103 (quoting Seagate, 497 F.3d at 1371). The inquiry focuses on the infringer's subjective knowledge and intent at the time of the challenged conduct. Where, as here, the accused infringer affirmatively asserts that it relied on counsel's opinions in forming its belief that its conduct was non-infringing, those opinions become the most relevant — and, indeed, the only direct — evidence of the infringer's subjective state of mind.

The Federal Circuit's en banc decision in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), while eliminating the negative inference that previously arose from an accused infringer's failure to produce an opinion of counsel, did not disturb the well-established principle that affirmative reliance on counsel's advice constitutes a waiver of the privilege. See id. at 1373 ("We note . . . that the assertion of an advice of counsel defense . . . and the potential waiver that may follow from such an assertion, remain undisturbed."); see also Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1345 (Fed. Cir. 2004) (en banc) (holding that affirmative advice-of-counsel defense waives privilege as to all communications on the same subject matter).

Lumicore's Opposition fundamentally mischaracterizes this framework. Lumicore argues that "mere possession" of an opinion letter does not constitute waiver, and that an accused infringer is free to obtain opinions without disclosing them. (Opp. at 8–9.) OWS agrees with this general proposition — and it is irrelevant here, because mere possession is not what occurred. Lumicore did not quietly obtain opinions and set them aside. Instead, Lumicore took three affirmative steps that individually and collectively constitute waiver:

First, Lumicore affirmatively invoked the opinions in its July 10, 2023 declination letter, voluntarily disclosing their existence and favorable conclusions to a third party.

Second, Lumicore asserted an advice-of-counsel defense in its Answer and Counterclaims (D.E. 12), placing the opinions directly at issue in this litigation.

Third, Lumicore has relied on the existence of the opinions — through Mr. Bautista's deposition testimony and through its litigation posture generally — as a basis to resist OWS's willful infringement allegations.

Each of these actions independently triggers the "at issue" waiver doctrine. Taken together, they compel the conclusion that Lumicore has waived any privilege that might otherwise attach to the opinion letters.

2. Lumicore's July 10, 2023 Letter Constitutes Affirmative Reliance

Lumicore's Opposition attempts to minimize the significance of the July 10, 2023 letter, characterizing it as a "routine business communication" that merely acknowledged the existence of legal advice without disclosing its substance. (Opp. at 10–11.) This characterization is untenable.

The July 10, 2023 letter was not routine. It was authored by or at the direction of Lumicore's General Counsel, Raymond Bautista, in direct response to a series of licensing demands that explicitly identified four patents, provided detailed claim charts, and warned of potential infringement liability. The letter was the culmination of a six-month correspondence and negotiation process that included multiple written exchanges and an in-person meeting. In that context, Lumicore's statement that it had obtained "competent legal opinions" confirming non-infringement was a deliberate and calculated assertion — not a casual aside.

Moreover, the statement was not merely an acknowledgment of the existence of legal advice. Lumicore disclosed both the existence and the conclusions of the opinions: namely, that the opinions confirmed that Lumicore's products "do not infringe" OWS's patents. This selective disclosure — revealing the favorable bottom-line conclusion while withholding the analysis underlying that conclusion — is precisely the type of conduct that the "at issue" waiver doctrine is designed to prevent.

The authorities are clear that a party cannot selectively disclose favorable portions of privileged communications while withholding the remainder. See Nguyen v. Excel Corp., 197 F.3d 200, 207 (5th Cir. 1999) ("When a party . . . reveals part of a privileged communication . . . the privilege is waived as to the remainder of the communication."); In re EchoStar, 448 F.3d at 1301 (holding that waiver extends to all communications on the same subject matter once a party selectively discloses); Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1349 (Fed. Cir. 2005) ("[A]n advice-of-counsel defense to willful infringement triggers a waiver of the attorney-client privilege for all communications with counsel relating to the same subject matter.").

By voluntarily disclosing the existence and conclusions of the opinion letters to FairPoint and OWS in a pre-litigation setting, Lumicore waived any privilege that might otherwise attach. Lumicore's characterization of the letter as "routine" does not alter this analysis. The letter served a clear strategic purpose: to inoculate Lumicore against a future willful infringement claim by establishing a contemporaneous record that Lumicore had obtained and relied upon legal opinions. Having used the letter for that purpose, Lumicore cannot now shield the very opinions it invoked.

3. Lumicore's Pleaded Advice-of-Counsel Defense Compels Disclosure

Independent of the July 10, 2023 letter, Lumicore's assertion of an advice-of-counsel defense in its Answer and Counterclaims (D.E. 12) constitutes an unambiguous waiver of the attorney-client privilege as to the opinion letters.

Paragraph 87 of Lumicore's Answer states that "Lumicore relied in good faith on the legal analysis and advice of qualified patent counsel in concluding that its products do not infringe the asserted patents and that the asserted patents are invalid." This is an advice-of-counsel defense. It is not ambiguous. It does not require interpretation. It places the substance, completeness, and reasonableness of counsel's advice directly at issue in this litigation.

Lumicore's Opposition argues that it has not "formally" asserted an advice-of-counsel defense because it has not designated the defense by that specific label or produced a privilege log identifying the opinions. (Opp. at 12–13.) This argument elevates form over substance. The question is not whether Lumicore used magic words; the question is whether Lumicore placed the privileged communications at issue. See Aspex Eyewear, Inc. v. Strathmore Industries, 955 F. Supp. 2d 346, 351 (S.D.N.Y. 2013) (rejecting defendant's argument that it had not "formally" asserted advice-of-counsel defense where its pleading referenced reliance on legal analysis). Lumicore's pleading specifically references good-faith reliance on the legal analysis and advice of qualified patent counsel as a basis for its non-willfulness position. This constitutes assertion of the defense regardless of the label Lumicore elects to apply.

Moreover, if Lumicore genuinely does not intend to assert an advice-of-counsel defense, the remedy is simple: Lumicore should amend its Answer to withdraw Paragraph 87 and stipulate that it will not rely on the opinions at trial. Lumicore has not done so. Instead, Lumicore seeks to maintain the defense in its pleading while refusing to produce the very opinions on which it claims to have relied. This Court should not permit such gamesmanship.

The governing authorities are uniform: assertion of an advice-of-counsel defense waives the attorney-client privilege as to all communications relating to the same subject matter. See In re EchoStar, 448 F.3d at 1299; Fort James, 412 F.3d at 1349; Brightwater Industries Pharms. Corp. v. Actavis Inc., No. 12-1138, 2013 WL 2149742, at *3 (D. Del. May 16, 2013).

B. Work-Product Protection Does Not Independently Shield the Opinion Letters

1. Waiver of Work-Product Protection Is Coextensive with Privilege Waiver

Lumicore's Opposition argues that even if the attorney-client privilege has been waived, the opinion letters remain shielded by the work-product doctrine because they were prepared in anticipation of litigation and reflect counsel's mental impressions and legal theories. (Opp. at 15–17.) This argument fails.

When a party affirmatively places counsel's mental impressions, conclusions, and opinions at issue — as Lumicore has done here — any work-product protection that might otherwise apply is also waived. The Federal Circuit has so held. See In re EchoStar, 448 F.3d at 1303 ("When a party asserts the advice of counsel defense . . . [it] waives work product protection for documents that embody a communication between the attorney and client concerning the subject matter of the case." (quotation marks omitted)). The Fifth Circuit is in accord. See Conkling, 18 F.3d at 1295; see also In re Grand Jury Subpoena, 220 F.3d 406, 409 (5th Cir. 2000) (noting that both privilege and work-product protections yield to fairness concerns when the protected material is placed at issue).

The policies underlying both the attorney-client privilege and the work-product doctrine yield to the same overriding fairness principle: a party cannot use privileged or protected materials offensively while shielding them defensively. See Halo, 579 U.S. at 105 ("The subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages."). Where the infringer's state of mind is the central inquiry and the infringer has asserted that its state of mind was informed by counsel's advice, both privilege and work-product protection are waived as to the materials that informed that state of mind.

Lumicore's argument that the opinion letters constitute "opinion work product" entitled to heightened protection under Hickman v. Taylor, 329 U.S. 495 (1947), and Federal Rule of Civil Procedure 26(b)(3)(B), is unpersuasive. Even assuming the opinion letters were prepared in anticipation of litigation — which is contested, as many pre-suit opinion letters are prepared for business purposes, including to inform product launch decisions — once Lumicore affirmatively injected the substance of the opinions into this case, the heightened protection afforded to opinion work product was waived. See In re EchoStar, 448 F.3d at 1303–04; see also Pittman v. Frazer, 129 F.3d 983, 988 (8th Cir. 1997) (holding that opinion work product protection is waived when party places protected material at issue). The heightened protection for opinion work product guards against discovery by an adversary who has not overcome the threshold showing of substantial need; it does not protect a party who has voluntarily disclosed the substance of the protected material and injected it into the case.

2. OWS Has Demonstrated Substantial Need as an Alternative Basis for Production

Even if this Court were to conclude that work-product protection applies independently — and it should not — OWS has demonstrated substantial need for the opinion letters and cannot obtain their substantial equivalent by other means, as required by Federal Rule of Civil Procedure 26(b)(3)(A).

The opinion letters are uniquely relevant to several critical issues in this case:

(a) Whether Lumicore had a good-faith basis for believing its products did not infringe. The opinion letters are the only direct evidence of the analysis Lumicore claims to have relied upon in forming its belief of non-infringement.

(b) The scope and thoroughness of any non-infringement analysis. OWS is entitled to evaluate whether the opinions were thorough and competent — or whether they were superficial or outcome-driven documents obtained solely to create a defense to willfulness.

(c) Whether the opinions addressed all four asserted patents or only a subset. If the opinions addressed only the '847, '193, and '562 Patents identified in FairPoint's January 15, 2023 letter, but not the '015 Patent added in the May 15, 2023 letter, Lumicore's reliance defense may be incomplete.

(d) Whether the opinions addressed all accused products or only a subset. Mr. Bautista's deposition admission that no formal design-around analysis was commissioned before the LumiEdge 1600G-LR launch in Q4 2023 raises the question of whether the opinions addressed only the LumiLink 400G-ZR+ (launched Q3 2022) and LumiLink 800G-DR8 (launched Q1 2023), and not the later-launched LumiEdge 1600G-LR.

(e) Whether the opinions were obtained before or after the launch of each accused product. The timing of the opinions relative to Lumicore's product launches is directly relevant to whether Lumicore acted in good faith or recklessly disregarded OWS's patent rights.

OWS cannot obtain the substance of these opinions through any other discovery mechanism. Lumicore has asserted privilege at every turn. Mr. Bautista was instructed not to answer any questions about the opinions at his deposition. Lumicore objected to interrogatories seeking the identity, scope, and conclusions of the opinions. The only remedy is compelled production of the opinion letters themselves.

C. Lumicore's Proposed Limitation on the Scope of Waiver Is Improper

1. Subject-Matter Waiver Applies

Lumicore's Opposition argues, in the alternative, that even if waiver is found, it should be limited to communications with a single attorney or to a single opinion letter. (Opp. at 19–20.) This argument ignores the well-established subject-matter waiver doctrine.

Under Federal Circuit and Fifth Circuit law, when a party waives the attorney-client privilege by placing privileged communications at issue, the waiver extends to all communications on the same subject matter. See Fort James, 412 F.3d at 1349 ("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."); In re EchoStar, 448 F.3d at 1299, 1302–03 (applying subject-matter waiver to require production of all communications relating to the asserted patents); see also Nguyen, 197 F.3d at 207 (holding that waiver extends to "the remainder of the communication" and all "related communications").

Here, the relevant subject matter encompasses non-infringement and invalidity opinions relating to the four asserted patents: U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015. All opinion letters, memoranda, or related communications from any counsel — whether HVC, in-house counsel Raymond Bautista, or any other legal advisor retained by Lumicore — addressing infringement, validity, or enforceability of any of the four asserted patents fall within the scope of the waiver.

Lumicore's proposal to limit waiver to communications with a single attorney would frustrate the purpose of the subject-matter waiver doctrine. If Lumicore obtained one favorable opinion from HVC and a less favorable opinion from a different firm — or if Lumicore's in-house counsel reached different conclusions than outside counsel — fairness requires that all such opinions be produced. Selective disclosure of favorable opinions while withholding unfavorable ones is the paradigmatic abuse that the subject-matter waiver doctrine addresses.

2. The Waiver Extends to Both Infringement and Validity Opinions

Lumicore's July 10, 2023 letter referenced opinions that "its products do not infringe" OWS's patents. Lumicore's earlier February 28, 2023 response through HVC also "question[ed] validity." And Paragraph 87 of Lumicore's Answer references reliance on advice of counsel "in concluding that its products do not infringe the asserted patents and that the asserted patents are invalid." If Lumicore obtained opinions addressing both non-infringement and invalidity — as is standard practice when an accused infringer commissions opinion-of-counsel letters — both categories fall within the scope of the waiver.

The willfulness inquiry under Halo encompasses the totality of the infringer's knowledge and conduct. An infringer's state of mind is informed not only by non-infringement opinions but also by validity opinions. See Read Corp. v. Portec, Inc., 970 F.2d 816, 828–29 (Fed. Cir. 1992) (listing factors relevant to willfulness, including whether the infringer obtained an opinion of counsel and what that opinion concluded regarding both infringement and validity); see also Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 989 (Fed. Cir. 2021) (considering both infringement and validity opinions in assessing willfulness). Lumicore cannot parse its opinions to disclose only those portions favorable to its position while withholding opinions that may undermine its defense.

3. The Temporal Scope of Waiver Covers the Entire Post-Notice Period

The waiver should encompass all opinion letters and related communications from January 15, 2023 — the date on which Lumicore first received notice of potential infringement through FairPoint's first licensing letter — through the present. This temporal scope is appropriate and necessary for several reasons.

First, OWS's willful infringement theory spans the entire post-notice period. From the date of first notice through the present, Lumicore has continued to manufacture, sell, and offer for sale accused products with knowledge of OWS's patents. The opinion letters and related communications generated throughout this period are directly relevant to Lumicore's subjective state of mind at each stage of its conduct.

Second, the temporal scope captures critical inflection points in the factual narrative:

(a) any opinions obtained before or after the February 28, 2023 response letter, which would shed light on whether Lumicore had already obtained opinions before engaging in the licensing discussion or obtained them only afterward;

(b) any opinions obtained before the April 20, 2023 in-person meeting, which would reveal whether Lumicore participated in the meeting in good faith or as a delaying tactic;

(c) any opinions obtained before the July 10, 2023 declination letter, which would confirm or refute the letter's representation that "competent legal opinions" had been obtained;

(d) any opinions obtained before the LumiEdge 1600G-LR launch in Q4 2023, which would reveal whether Lumicore analyzed the new product's potential infringement before bringing it to market; and

(e) any opinions obtained during the pendency of this litigation, which would reveal whether Lumicore has updated its legal analysis in light of the claims asserted in this case.

Third, limiting the temporal scope to any narrower period — such as the period before the July 10, 2023 letter — would permit Lumicore to withhold opinions that may be critical to the willfulness inquiry. For example, if Lumicore obtained an updated opinion in 2024 that reached a different conclusion than the original opinions, that updated opinion would be highly relevant to Lumicore's current state of mind and to the reasonableness of its continued infringement.

D. Lumicore's Policy Arguments Are Unavailing

Lumicore's Opposition concludes with a policy argument: that compelling production of opinion-of-counsel letters will chill the ability of accused infringers to obtain candid legal advice. (Opp. at 22–23.) This argument has been considered and rejected by the highest authorities.

The Supreme Court's decision in Halo and the Federal Circuit's en banc decision in Seagate together establish a balanced framework that fully protects the legitimate interests of accused infringers. Under Seagate, no adverse inference arises from an accused infringer's failure to obtain or produce an opinion of counsel. 497 F.3d at 1371. An accused infringer is free to obtain opinions, keep them confidential, and defend against willfulness on other grounds. The Seagate/Halo framework thus eliminates any chilling effect on the procurement of legal advice: an accused infringer need not fear that failure to disclose an opinion will be used against it.

But the framework also recognizes an important corollary: once the accused infringer affirmatively relies on counsel's advice — by disclosing the opinions to the patent holder, by asserting an advice-of-counsel defense in litigation, or by otherwise placing the opinions at issue — fairness demands disclosure. The infringer has made a strategic choice. It has elected to invoke the opinions as a sword. It must accept the consequences of that choice, including the obligation to produce the opinions for evaluation by the opposing party and the Court.

Lumicore had every option available to it. It could have obtained opinions, kept them confidential, and defended against willfulness by arguing that the asserted patents are invalid, that its products do not infringe, or that its infringement was at most negligent. Instead, Lumicore chose to reference its "competent legal opinions" in its July 10, 2023 letter and to plead reliance on counsel in its Answer. Having made that strategic choice, Lumicore is not in a position to invoke the very policy considerations that the Seagate/Halo framework was designed to address.

IV. RESPONSE TO SPECIFIC ARGUMENTS IN LUMICORE'S OPPOSITION

A. Lumicore's Characterization of the July 10, 2023 Letter as a "Routine Business Communication" Is Unsupported

Lumicore argues that the July 10, 2023 letter was merely a "routine business communication" in which Lumicore declined a license without placing privileged information at issue. (Opp. at 10.) This characterization is contradicted by the letter itself and by the circumstances in which it was sent.

The July 10, 2023 letter was not routine by any measure. It was the culmination of a six-month correspondence and negotiation process involving multiple written exchanges between counsel, the exchange of detailed claim charts, and an in-person licensing meeting. The letter was authored by or at the direction of Lumicore's General Counsel and/or outside counsel at HVC — legal professionals who understood the significance of the language they chose. The reference to "competent legal opinions" was not inadvertent or casual; it was a deliberate assertion designed to establish a record of good-faith conduct in anticipation of the very litigation that followed.

Moreover, the letter was a "litigation-aware" communication. By July 2023, both parties understood that litigation was a likely outcome if licensing negotiations failed. FairPoint's letters had expressly identified OWS's patent portfolio, provided claim charts mapping specific claims to specific Lumicore products, and invited Lumicore to negotiate a license — a standard precursor to patent infringement litigation. In that context, Lumicore's decision to invoke "competent legal opinions" was a strategic act designed to create a favorable litigation record. Lumicore cannot now disclaim the consequences of its own strategy.

B. Lumicore's Suggestion That OWS Should Use Alternative discovery Methods Is Unavailing

Lumicore argues that OWS should seek the substance of the opinion letters through interrogatories, depositions, or other discovery mechanisms, rather than through direct production. (Opp. at 14.) This argument ignores reality. OWS has attempted to obtain the relevant information through every available discovery tool, and Lumicore has blocked each effort by asserting privilege:

• Interrogatories: OWS propounded interrogatories seeking the identity of the attorneys who prepared the opinions, the dates on which they were rendered, the patents and products they addressed, and a summary of their conclusions. Lumicore objected on privilege grounds and refused to provide substantive responses.

• Deposition: OWS's counsel questioned Mr. Bautista about the substance, scope, and timing of the opinions during his December 3, 2024 deposition. Lumicore's counsel instructed Mr. Bautista not to answer, asserting attorney-client privilege. Mr. Bautista refused to answer no fewer than fourteen separate questions about the opinions.

• Document Requests: OWS served document requests seeking production of the opinion letters. Lumicore objected on privilege grounds and produced nothing.

Lumicore cannot simultaneously block all alternative means of obtaining the information and then argue that OWS should use alternative means rather than seeking direct production. The only remedy is compelled production of the opinion letters themselves.

C. Production Under the Existing Protective Order Addresses Any Confidentiality Concerns

Lumicore raises concerns about the confidentiality of the opinion letters. (Opp. at 23–24.) OWS takes these concerns seriously and has proposed a practical solution: production under the "Highly Confidential — Attorneys' Eyes Only" tier of the three-tier Stipulated Protective Order entered by this Court on July 29, 2024 (D.E. 23).

Under the Protective Order, documents designated "Highly Confidential — Attorneys' Eyes Only" may be viewed only by outside litigation counsel, retained experts who have signed the appropriate undertaking, and the Court and its staff. The designation precludes disclosure to any Lumicore or OWS employee, officer, or director (except with further Court order) and provides robust protections against public disclosure. OWS does not object to this designation. It adequately protects any legitimate confidentiality concerns while ensuring that OWS's counsel can evaluate the opinions for purposes of the willfulness inquiry and case preparation.

V. PROPOSED SCOPE OF PRODUCTION

OWS respectfully requests that the Court order Lumicore to produce the following categories of documents:

1. Opinion Letters and Memoranda. All opinion-of-counsel letters, memoranda, or similar communications (whether from Hawthorne Vega & Cruz LLP, in-house counsel, or any other legal advisor retained by Lumicore) addressing the infringement, validity, enforceability, or design-around analysis of any of the four asserted patents — U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 — with respect to any of the three accused product lines (LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR) or any related or successor products.

2. Transmittal and Summary Documents. All documents reflecting, summarizing, or transmitting the substance of such opinions, including but not limited to cover letters, transmittal emails, and summaries prepared for Lumicore's management, executives, or board of directors.

3. Documents Reflecting Reliance. All documents reflecting Lumicore's receipt, review, consideration, or reliance upon such opinions, including but not limited to minutes of meetings, presentations, memoranda, emails, or other communications to or among Lumicore's CEO Thomas Kessler, CTO Dr. Sandra Michaud, General Counsel Raymond Bautista, Vice President of Product Development Dr. Eric Dalmqvist, or CFO Janet Moreno.

4. Temporal Scope. The temporal scope of the production shall be from January 15, 2023 (the date of FairPoint's first notice and licensing letter) through the date of the Court's order.

5. Timing and Designation. Production shall be made within fourteen (14) calendar days of the Court's order, under the "Highly Confidential — Attorneys' Eyes Only" tier of the Stipulated Protective Order (D.E. 23).

VI. CONCLUSION

For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that this Court grant its Motion to Compel and order Defendant Lumicore Technologies, Inc. to produce all opinion-of-counsel letters and related communications as described in Section V above within fourteen (14) calendar days of the Court's order.

OWS further requests that the Court award OWS its reasonable attorneys' fees and costs incurred in connection with this discovery dispute, including the fees and costs incurred in the preparation and filing of OWS's original Motion to Compel (D.E. 40, filed October 21, 2024), the Memorandum in Support (D.E. 41), the Declaration of Wendy Schultz (D.E. 42), and this Reply, pursuant to Federal Rule of Civil Procedure 37(a)(5)(A). Rule 37(a)(5)(A) provides that when a motion to compel is granted, "the court must, after giving an opportunity to be heard, require the party . . . whose conduct necessitated the motion . . . to pay the movant's reasonable expenses incurred in making the motion, including attorney's fees." Lumicore's refusal to produce the opinion letters, despite having placed them squarely at issue through its own affirmative conduct, was not substantially justified and necessitated the filing of this Motion and Reply.

Respectfully submitted,

CALDERWOOD & HARKNESS LLP

By: /s/ Alan Ngo

Alan Ngo (CA Bar No. 247891; admitted pro hac vice) Marcus Delgado (TX Bar No. 05738294) Wendy Schultz (CA Bar No. 302154; admitted pro hac vice) Omar Siddiqui (CA Bar No. 318762; admitted pro hac vice) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801

Email: ango@calderwoodharkness.com

Email: mdelgado@calderwoodharkness.com

Email: wschultz@calderwoodharkness.com

Email: osiddiqui@calderwoodharkness.com

LOCAL COUNSEL:

James "Jim" Callahan (TX Bar No. 03841726) WHITMORE & CALLAHAN LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-2100

Email: jcallahan@whitmorecallahan.com

Attorneys for Plaintiff Optiwave Semiconductor Corp.

CERTIFICATE OF SERVICE

I hereby certify that on November 18, 2024, the foregoing Plaintiff Optiwave Semiconductor Corp.'s Reply in Support of Its Motion to Compel Production of Defendant Lumicore Technologies, Inc.'s Opinion-of-Counsel Letters 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@hvclaw.com

Email: dcho@hvclaw.com

Email: sbriggs@hvclaw.com

Email: riyer@hvclaw.com

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

Email: mgarza@traskeddington.com

Counsel for Defendant Lumicore Technologies, Inc.

/s/ Alan Ngo Alan Ngo

CERTIFICATE OF CONFERENCE

Pursuant to Local Rule CV-7(h) of the Eastern District of Texas, the undersigned counsel hereby certifies that counsel for Plaintiff Optiwave Semiconductor Corp. conferred with counsel for Defendant Lumicore Technologies, Inc. regarding the subject matter of this Motion and was unable to resolve the dispute without Court intervention. Specifically:

1. On September 18, 2024, Wendy Schultz (Calderwood & Harkness LLP) and Samantha Briggs (Hawthorne Vega & Cruz LLP) held a telephonic meet-and-confer conference during which OWS raised the issue of the opinion letters and Lumicore asserted attorney-client privilege and work-product protection.

2. On October 2, 2024, Ms. Schultz and Ms. Briggs held a second telephonic meet-and-confer conference during which OWS explained its waiver arguments in detail and requested voluntary production. Lumicore declined to produce the opinion letters.

3. On October 14, 2024, Ms. Schultz sent a detailed meet-and-confer letter to Ms. Briggs setting forth OWS's legal position and offering to accept production under the "Highly Confidential — Attorneys' Eyes Only" tier of the Protective Order. Lumicore did not agree to produce the opinion letters.

4. On October 30, 2024, following the filing of OWS's Motion to Compel, the parties held a supplemental telephonic meet-and-confer conference at Lumicore's request. Lumicore again maintained its privilege objection and declined to produce the opinion letters.

5. On November 8, 2024, Ms. Schultz and Ms. Briggs held a final telephonic meet-and-confer conference. Lumicore maintained its position that no waiver has occurred and that the opinion letters are shielded by both attorney-client privilege and work-product protection. The parties were unable to resolve the dispute.

/s/ Wendy Schultz Wendy Schultz

OPTIWAVE SEMICONDUCTOR CORP.,

Plaintiff,

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

Defendant.

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S REPLY IN SUPPORT OF ITS MOTION TO COMPEL PRODUCTION OF DEFENDANT LUMICORE TECHNOLOGIES, INC.'S OPINION-OF-COUNSEL LETTERS
I. INTRODUCTION
Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully submits this Reply in Support of its Motion to Compel Production of Defendant Lumicore Technologies, Inc.'s ("Lumicore") Opinion-of-Counsel Letters, responding to Lumicore's Opposition (D.E. 48, filed November 4, 2024). This Reply is supported by the entire record before this Court, including OWS's original Motion to Compel (D.E. 40, filed October 21, 2024), the Memorandum in Support (D.E. 41), and the Declaration of Wendy Schultz (D.E. 42) with attached exhibits.
Lumicore's Opposition raises three principal arguments in defense of its refusal to produce the opinion-of-counsel letters that OWS seeks: first, that Lumicore has not waived the attorney-client privilege attaching to the opinion letters; second, that the work-product doctrine independently shields the opinion letters from disclosure; and third, that even if waiver is found, the scope of any such waiver should be narrowly circumscribed. None of these arguments withstands scrutiny under the governing law, and each is contradicted by Lumicore's own conduct in this litigation and in the pre-suit correspondence that gave rise to it.
The core factual predicate is undisputed. On July 10, 2023, in a letter declining to take a license to OWS's patents, Lumicore expressly represented to OWS and its licensing agent that it had obtained "competent legal opinions" confirming that its products do not infringe the asserted patents. That representation was not casual, inadvertent, or incidental. It was a deliberate, strategic communication designed to insulate Lumicore from a willful infringement claim while it continued to manufacture, sell, and profit from accused products — including a new product line launched after receiving notice of infringement.
Then, in its Answer and Counterclaims (D.E. 12, filed June 17, 2024), Lumicore went further still: it formally asserted that it did not willfully infringe because it relied in good faith on the advice of counsel. Lumicore has thus deployed the opinions as both a sword and a shield — invoking their existence and favorable conclusions to justify its continued infringing conduct and to defend against OWS's willfulness allegations, while simultaneously refusing to produce the opinions themselves for OWS to evaluate. This Court should not countenance such gamesmanship.
This Reply demonstrates that the Court should compel production of the opinion letters and all related communications for three independent reasons: (a) Lumicore affirmatively placed the opinions at issue by invoking them as a basis for its continued infringement in the July 10, 2023 declination letter; (b) Lumicore's pleaded advice-of-counsel defense in its Answer and Counterclaims constitutes an unambiguous waiver of any privilege that might otherwise attach to the opinions; and (c) fundamental fairness — the animating principle of the "at issue" waiver doctrine — requires that Lumicore not be permitted to use the favorable conclusions of its counsel's advice while hiding the underlying analysis from OWS and from this Court.
II. FACTUAL BACKGROUND
The relevant facts, most of which are undisputed, are set forth in detail in OWS's Memorandum in Support (D.E. 41) and the Schultz Declaration (D.E. 42). OWS summarizes them here for the Court's convenience and supplements them with developments that have occurred since the filing of the original Motion.
A. Pre-Suit Notice and Lumicore's Invocation of Counsel Opinions
On January 15, 2023, FairPoint Licensing Group, LLC ("FairPoint"), acting as OWS's exclusive licensing agent, sent a detailed notice and licensing letter to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. (Schultz Decl. ¶ 3, Ex. A.) That letter identified three OWS patents — U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), and 9,678,562 (the "'562 Patent") — and provided Lumicore with claim charts mapping specific claims of each patent to Lumicore's LumiLink 400G-ZR+ and LumiLink 800G-DR8 optical transceiver modules. The letter put Lumicore on actual notice of potential infringement and invited Lumicore to enter into licensing discussions.
On February 28, 2023, Lumicore responded through its outside counsel, Hawthorne Vega & Cruz LLP ("HVC"). (Schultz Decl. ¶ 5, Ex. B.) In that response, HVC disputed infringement on behalf of Lumicore and also questioned the validity of the asserted patents. The letter did not reference any opinion-of-counsel analysis, but its substantive engagement with the infringement and validity questions demonstrates that Lumicore's counsel was actively analyzing the OWS patent portfolio at that time.
On April 20, 2023, the parties held an in-person licensing meeting at FairPoint's offices in Austin, Texas. (Schultz Decl. ¶ 7.) The meeting was attended by Angela Reeves (FairPoint Managing Director), Rebecca Tanaka (OWS General Counsel), Raymond Bautista (Lumicore General Counsel), and Catherine "Kate" Rourke (HVC Lead Partner). At that meeting, OWS presented detailed technical infringement analyses. No resolution was reached, and the parties agreed to continue discussions.
On May 15, 2023, FairPoint sent a second licensing letter, this time adding a fourth patent — U.S. Patent No. 11,402,015 (the "'015 Patent") — and expanding the scope of accused products to include Lumicore's LumiLink 800G-DR8. (Schultz Decl. ¶ 8, Ex. C.) The letter included updated claim charts and reiterated OWS's invitation to negotiate a license.
On July 10, 2023, Lumicore sent the letter that lies at the heart of this dispute. (Schultz Decl. ¶ 9, Ex. D.) In that letter, Lumicore formally declined to take a license to OWS's patents. Critically, the letter stated:
"Lumicore has obtained competent legal opinions confirming that its products do not infringe the patents identified in your correspondence. Accordingly, Lumicore respectfully declines the proposed license and considers this matter closed."
This statement was not a throwaway line or a formulaic pleasantry. It was a calculated, strategic communication — authored by or at the direction of Lumicore's General Counsel and/or HVC — designed to create a contemporaneous record that Lumicore had investigated the infringement allegations and concluded, on the basis of legal advice, that its products were non-infringing. The July 10, 2023 letter served no purpose other than to establish a defense to a future willful infringement claim.
Despite this asserted belief in non-infringement, Lumicore proceeded to launch a new product — the LumiEdge 1600G-LR optical module — in the fourth quarter of 2023. OWS alleges that the LumiEdge 1600G-LR infringes the '193 and '015 Patents. Lumicore launched this product after receiving notice of infringement, after engaging in licensing discussions with OWS, and after purportedly obtaining "competent legal opinions" — yet, as discussed below, Lumicore's own General Counsel admitted at deposition that no formal design-around analysis was commissioned before the LumiEdge 1600G-LR launch.
B. Lumicore's Assertion of Advice-of-Counsel Defense
OWS filed this action on May 6, 2024. (D.E. 1.) The Complaint asserts claims for infringement of the '847, '193, '562, and '015 Patents and alleges that Lumicore's infringement is willful.
On June 17, 2024, Lumicore filed its Answer and Counterclaims. (D.E. 12.) Among its affirmative defenses, Lumicore asserted that it did not willfully infringe OWS's patents because it acted in good faith reliance on the advice of legal counsel. Specifically, Paragraph 87 of Lumicore's Answer states:
"Lumicore denies that its conduct was willful. At all relevant times, Lumicore relied in good faith on the legal analysis and advice of qualified patent counsel in concluding that its products do not infringe the asserted patents and that the asserted patents are invalid."
By asserting this defense, Lumicore placed the substance, completeness, and reasonableness of its counsel's opinions directly at issue in this litigation. The defense is intelligible only if the Court and OWS are able to evaluate the actual opinions on which Lumicore claims to have relied. Lumicore cannot have it both ways.
C. Deposition Testimony of Raymond Bautista
On December 3, 2024, OWS deposed Lumicore's General Counsel, Raymond Bautista. (Schultz Suppl. Decl. ¶ 3, Ex. E.) During his deposition, Mr. Bautista confirmed receipt of FairPoint's January 15, 2023 licensing letter and stated that he forwarded the letter to outside counsel at HVC within three business days of receipt. (Bautista Dep. Tr. 47:8–48:2.) Mr. Bautista further confirmed that he was involved in the preparation of the July 10, 2023 declination letter. (Bautista Dep. Tr. 63:14–64:5.)
However, when OWS's counsel inquired about the substance, scope, and timing of the opinion letters referenced in the July 10, 2023 letter, Lumicore's counsel instructed Mr. Bautista not to answer, asserting attorney-client privilege. (Bautista Dep. Tr. 72:3–73:19; 78:11–79:8; 84:2–85:14.) Mr. Bautista refused to identify the number of opinions obtained, the dates on which they were rendered, the patents they addressed, the products they covered, or the identity of the attorneys who prepared them.
Despite these broad privilege assertions, Mr. Bautista made one critical admission: he confirmed that no formal design-around analysis was commissioned before Lumicore launched the LumiEdge 1600G-LR module in Q4 2023. (Bautista Dep. Tr. 91:7–92:3.) This admission raises serious questions about the scope and adequacy of the "competent legal opinions" that Lumicore claims to have obtained. If the opinions addressed only the earlier LumiLink products and did not cover the LumiEdge 1600G-LR — a product launched after notice and after the purported opinions were obtained — then Lumicore's reliance defense is, at best, incomplete.
D. Meet-and-Confer Efforts
As detailed in the Declaration of Wendy Schultz (D.E. 42) and the supplemental declaration filed herewith, the parties engaged in extensive meet-and-confer efforts before OWS filed its Motion to Compel and have continued those efforts since the Motion was filed. Specifically:
• On September 18, 2024, Wendy Schultz (Calderwood & Harkness) and Samantha Briggs (HVC) held a telephonic meet-and-confer in which OWS first raised the issue of the opinion letters and Lumicore asserted privilege.
• On October 2, 2024, Ms. Schultz and Ms. Briggs held a second telephonic meet-and-confer, during which OWS explained its waiver arguments and requested voluntary production. Lumicore refused.
• On October 14, 2024, Ms. Schultz sent a detailed meet-and-confer letter to Ms. Briggs setting forth OWS's position and offering to accept production under the "Highly Confidential — Attorneys' Eyes Only" tier of the existing Protective Order. Lumicore did not agree to produce the opinion letters.
• On October 30, 2024, following the filing of OWS's Motion to Compel, the parties held a supplemental telephonic meet-and-confer at Lumicore's request. Lumicore again maintained its privilege objection.
• On November 8, 2024, Ms. Schultz and Ms. Briggs held a final telephonic meet-and-confer. Lumicore maintained its position that no waiver has occurred and that the opinion letters are shielded by both attorney-client privilege and work-product protection.
Despite these good-faith efforts, the parties have been unable to resolve this dispute. OWS files this Reply to bring the matter to resolution before the Court.
III. LEGAL ARGUMENT
A. Lumicore Has Waived Attorney-Client Privilege by Placing the Opinion Letters at Issue
1. The "At Issue" Waiver Doctrine Governs This Dispute
It is well established under both Fifth Circuit law and Federal Circuit precedent — which controls on patent-specific issues, including willful infringement — that a party waives the attorney-client privilege when it injects privileged communications into the litigation as a sword while simultaneously attempting to maintain the privilege as a shield. See Conkling v. Turner, 18 F.3d 1285, 1295 (5th Cir. 1994) (holding that privilege is waived when the party asserting it "places the protected information at issue by making it relevant to the case"); In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1299 (Fed. Cir. 2006) (applying "at issue" waiver doctrine in patent context). The doctrine rests on the fundamental principle of fairness: a litigant may not use the privilege "both as a sword and a shield." United States v. Bilzerian, 926 F.2d 1285, 1292 (2d Cir. 1991); accord Rhone-Poulenc Rorer Inc. v. Home Indem. Co., 32 F.3d 851, 863 (3d Cir. 1994).
The Supreme Court's decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), reinforced the centrality of the infringer's subjective state of mind to the willful infringement inquiry. Under Halo, enhanced damages under 35 U.S.C. § 284 are available where the infringer's conduct is "willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or — indeed — characteristic of a pirate." Id. at 103 (quoting Seagate, 497 F.3d at 1371). The inquiry focuses on the infringer's subjective knowledge and intent at the time of the challenged conduct. Where, as here, the accused infringer affirmatively asserts that it relied on counsel's opinions in forming its belief that its conduct was non-infringing, those opinions become the most relevant — and, indeed, the only direct — evidence of the infringer's subjective state of mind.
The Federal Circuit's en banc decision in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), while eliminating the negative inference that previously arose from an accused infringer's failure to produce an opinion of counsel, did not disturb the well-established principle that affirmative reliance on counsel's advice constitutes a waiver of the privilege. See id. at 1373 ("We note . . . that the assertion of an advice of counsel defense . . . and the potential waiver that may follow from such an assertion, remain undisturbed."); see also Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1345 (Fed. Cir. 2004) (en banc) (holding that affirmative advice-of-counsel defense waives privilege as to all communications on the same subject matter).
Lumicore's Opposition fundamentally mischaracterizes this framework. Lumicore argues that "mere possession" of an opinion letter does not constitute waiver, and that an accused infringer is free to obtain opinions without disclosing them. (Opp. at 8–9.) OWS agrees with this general proposition — and it is irrelevant here, because mere possession is not what occurred. Lumicore did not quietly obtain opinions and set them aside. Instead, Lumicore took three affirmative steps that individually and collectively constitute waiver:
First, Lumicore affirmatively invoked the opinions in its July 10, 2023 declination letter, voluntarily disclosing their existence and favorable conclusions to a third party.
Second, Lumicore asserted an advice-of-counsel defense in its Answer and Counterclaims (D.E. 12), placing the opinions directly at issue in this litigation.
Third, Lumicore has relied on the existence of the opinions — through Mr. Bautista's deposition testimony and through its litigation posture generally — as a basis to resist OWS's willful infringement allegations.
Each of these actions independently triggers the "at issue" waiver doctrine. Taken together, they compel the conclusion that Lumicore has waived any privilege that might otherwise attach to the opinion letters.
2. Lumicore's July 10, 2023 Letter Constitutes Affirmative Reliance
Lumicore's Opposition attempts to minimize the significance of the July 10, 2023 letter, characterizing it as a "routine business communication" that merely acknowledged the existence of legal advice without disclosing its substance. (Opp. at 10–11.) This characterization is untenable.
The July 10, 2023 letter was not routine. It was authored by or at the direction of Lumicore's General Counsel, Raymond Bautista, in direct response to a series of licensing demands that explicitly identified four patents, provided detailed claim charts, and warned of potential infringement liability. The letter was the culmination of a six-month correspondence and negotiation process that included multiple written exchanges and an in-person meeting. In that context, Lumicore's statement that it had obtained "competent legal opinions" confirming non-infringement was a deliberate and calculated assertion — not a casual aside.
Moreover, the statement was not merely an acknowledgment of the existence of legal advice. Lumicore disclosed both the existence and the conclusions of the opinions: namely, that the opinions confirmed that Lumicore's products "do not infringe" OWS's patents. This selective disclosure — revealing the favorable bottom-line conclusion while withholding the analysis underlying that conclusion — is precisely the type of conduct that the "at issue" waiver doctrine is designed to prevent.
The authorities are clear that a party cannot selectively disclose favorable portions of privileged communications while withholding the remainder. See Nguyen v. Excel Corp., 197 F.3d 200, 207 (5th Cir. 1999) ("When a party . . . reveals part of a privileged communication . . . the privilege is waived as to the remainder of the communication."); In re EchoStar, 448 F.3d at 1301 (holding that waiver extends to all communications on the same subject matter once a party selectively discloses); Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1349 (Fed. Cir. 2005) ("[A]n advice-of-counsel defense to willful infringement triggers a waiver of the attorney-client privilege for all communications with counsel relating to the same subject matter.").
By voluntarily disclosing the existence and conclusions of the opinion letters to FairPoint and OWS in a pre-litigation setting, Lumicore waived any privilege that might otherwise attach. Lumicore's characterization of the letter as "routine" does not alter this analysis. The letter served a clear strategic purpose: to inoculate Lumicore against a future willful infringement claim by establishing a contemporaneous record that Lumicore had obtained and relied upon legal opinions. Having used the letter for that purpose, Lumicore cannot now shield the very opinions it invoked.
3. Lumicore's Pleaded Advice-of-Counsel Defense Compels Disclosure
Independent of the July 10, 2023 letter, Lumicore's assertion of an advice-of-counsel defense in its Answer and Counterclaims (D.E. 12) constitutes an unambiguous waiver of the attorney-client privilege as to the opinion letters.
Paragraph 87 of Lumicore's Answer states that "Lumicore relied in good faith on the legal analysis and advice of qualified patent counsel in concluding that its products do not infringe the asserted patents and that the asserted patents are invalid." This is an advice-of-counsel defense. It is not ambiguous. It does not require interpretation. It places the substance, completeness, and reasonableness of counsel's advice directly at issue in this litigation.
Lumicore's Opposition argues that it has not "formally" asserted an advice-of-counsel defense because it has not designated the defense by that specific label or produced a privilege log identifying the opinions. (Opp. at 12–13.) This argument elevates form over substance. The question is not whether Lumicore used magic words; the question is whether Lumicore placed the privileged communications at issue. See Aspex Eyewear, Inc. v. Strathmore Industries, 955 F. Supp. 2d 346, 351 (S.D.N.Y. 2013) (rejecting defendant's argument that it had not "formally" asserted advice-of-counsel defense where its pleading referenced reliance on legal analysis). Lumicore's pleading specifically references good-faith reliance on the legal analysis and advice of qualified patent counsel as a basis for its non-willfulness position. This constitutes assertion of the defense regardless of the label Lumicore elects to apply.
Moreover, if Lumicore genuinely does not intend to assert an advice-of-counsel defense, the remedy is simple: Lumicore should amend its Answer to withdraw Paragraph 87 and stipulate that it will not rely on the opinions at trial. Lumicore has not done so. Instead, Lumicore seeks to maintain the defense in its pleading while refusing to produce the very opinions on which it claims to have relied. This Court should not permit such gamesmanship.
The governing authorities are uniform: assertion of an advice-of-counsel defense waives the attorney-client privilege as to all communications relating to the same subject matter. See In re EchoStar, 448 F.3d at 1299; Fort James, 412 F.3d at 1349; Brightwater Industries Pharms. Corp. v. Actavis Inc., No. 12-1138, 2013 WL 2149742, at *3 (D. Del. May 16, 2013).
B. Work-Product Protection Does Not Independently Shield the Opinion Letters
1. Waiver of Work-Product Protection Is Coextensive with Privilege Waiver
Lumicore's Opposition argues that even if the attorney-client privilege has been waived, the opinion letters remain shielded by the work-product doctrine because they were prepared in anticipation of litigation and reflect counsel's mental impressions and legal theories. (Opp. at 15–17.) This argument fails.
When a party affirmatively places counsel's mental impressions, conclusions, and opinions at issue — as Lumicore has done here — any work-product protection that might otherwise apply is also waived. The Federal Circuit has so held. See In re EchoStar, 448 F.3d at 1303 ("When a party asserts the advice of counsel defense . . . [it] waives work product protection for documents that embody a communication between the attorney and client concerning the subject matter of the case." (quotation marks omitted)). The Fifth Circuit is in accord. See Conkling, 18 F.3d at 1295; see also In re Grand Jury Subpoena, 220 F.3d 406, 409 (5th Cir. 2000) (noting that both privilege and work-product protections yield to fairness concerns when the protected material is placed at issue).
The policies underlying both the attorney-client privilege and the work-product doctrine yield to the same overriding fairness principle: a party cannot use privileged or protected materials offensively while shielding them defensively. See Halo, 579 U.S. at 105 ("The subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages."). Where the infringer's state of mind is the central inquiry and the infringer has asserted that its state of mind was informed by counsel's advice, both privilege and work-product protection are waived as to the materials that informed that state of mind.
Lumicore's argument that the opinion letters constitute "opinion work product" entitled to heightened protection under Hickman v. Taylor, 329 U.S. 495 (1947), and Federal Rule of Civil Procedure 26(b)(3)(B), is unpersuasive. Even assuming the opinion letters were prepared in anticipation of litigation — which is contested, as many pre-suit opinion letters are prepared for business purposes, including to inform product launch decisions — once Lumicore affirmatively injected the substance of the opinions into this case, the heightened protection afforded to opinion work product was waived. See In re EchoStar, 448 F.3d at 1303–04; see also Pittman v. Frazer, 129 F.3d 983, 988 (8th Cir. 1997) (holding that opinion work product protection is waived when party places protected material at issue). The heightened protection for opinion work product guards against discovery by an adversary who has not overcome the threshold showing of substantial need; it does not protect a party who has voluntarily disclosed the substance of the protected material and injected it into the case.
2. OWS Has Demonstrated Substantial Need as an Alternative Basis for Production
Even if this Court were to conclude that work-product protection applies independently — and it should not — OWS has demonstrated substantial need for the opinion letters and cannot obtain their substantial equivalent by other means, as required by Federal Rule of Civil Procedure 26(b)(3)(A).
The opinion letters are uniquely relevant to several critical issues in this case:
(a) Whether Lumicore had a good-faith basis for believing its products did not infringe. The opinion letters are the only direct evidence of the analysis Lumicore claims to have relied upon in forming its belief of non-infringement.
(b) The scope and thoroughness of any non-infringement analysis. OWS is entitled to evaluate whether the opinions were thorough and competent — or whether they were superficial or outcome-driven documents obtained solely to create a defense to willfulness.
(c) Whether the opinions addressed all four asserted patents or only a subset. If the opinions addressed only the '847, '193, and '562 Patents identified in FairPoint's January 15, 2023 letter, but not the '015 Patent added in the May 15, 2023 letter, Lumicore's reliance defense may be incomplete.
(d) Whether the opinions addressed all accused products or only a subset. Mr. Bautista's deposition admission that no formal design-around analysis was commissioned before the LumiEdge 1600G-LR launch in Q4 2023 raises the question of whether the opinions addressed only the LumiLink 400G-ZR+ (launched Q3 2022) and LumiLink 800G-DR8 (launched Q1 2023), and not the later-launched LumiEdge 1600G-LR.
(e) Whether the opinions were obtained before or after the launch of each accused product. The timing of the opinions relative to Lumicore's product launches is directly relevant to whether Lumicore acted in good faith or recklessly disregarded OWS's patent rights.
OWS cannot obtain the substance of these opinions through any other discovery mechanism. Lumicore has asserted privilege at every turn. Mr. Bautista was instructed not to answer any questions about the opinions at his deposition. Lumicore objected to interrogatories seeking the identity, scope, and conclusions of the opinions. The only remedy is compelled production of the opinion letters themselves.
C. Lumicore's Proposed Limitation on the Scope of Waiver Is Improper
1. Subject-Matter Waiver Applies
Lumicore's Opposition argues, in the alternative, that even if waiver is found, it should be limited to communications with a single attorney or to a single opinion letter. (Opp. at 19–20.) This argument ignores the well-established subject-matter waiver doctrine.
Under Federal Circuit and Fifth Circuit law, when a party waives the attorney-client privilege by placing privileged communications at issue, the waiver extends to all communications on the same subject matter. See Fort James, 412 F.3d at 1349 ("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."); In re EchoStar, 448 F.3d at 1299, 1302–03 (applying subject-matter waiver to require production of all communications relating to the asserted patents); see also Nguyen, 197 F.3d at 207 (holding that waiver extends to "the remainder of the communication" and all "related communications").
Here, the relevant subject matter encompasses non-infringement and invalidity opinions relating to the four asserted patents: U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015. All opinion letters, memoranda, or related communications from any counsel — whether HVC, in-house counsel Raymond Bautista, or any other legal advisor retained by Lumicore — addressing infringement, validity, or enforceability of any of the four asserted patents fall within the scope of the waiver.
Lumicore's proposal to limit waiver to communications with a single attorney would frustrate the purpose of the subject-matter waiver doctrine. If Lumicore obtained one favorable opinion from HVC and a less favorable opinion from a different firm — or if Lumicore's in-house counsel reached different conclusions than outside counsel — fairness requires that all such opinions be produced. Selective disclosure of favorable opinions while withholding unfavorable ones is the paradigmatic abuse that the subject-matter waiver doctrine addresses.
2. The Waiver Extends to Both Infringement and Validity Opinions
Lumicore's July 10, 2023 letter referenced opinions that "its products do not infringe" OWS's patents. Lumicore's earlier February 28, 2023 response through HVC also "question[ed] validity." And Paragraph 87 of Lumicore's Answer references reliance on advice of counsel "in concluding that its products do not infringe the asserted patents and that the asserted patents are invalid." If Lumicore obtained opinions addressing both non-infringement and invalidity — as is standard practice when an accused infringer commissions opinion-of-counsel letters — both categories fall within the scope of the waiver.
The willfulness inquiry under Halo encompasses the totality of the infringer's knowledge and conduct. An infringer's state of mind is informed not only by non-infringement opinions but also by validity opinions. See Read Corp. v. Portec, Inc., 970 F.2d 816, 828–29 (Fed. Cir. 1992) (listing factors relevant to willfulness, including whether the infringer obtained an opinion of counsel and what that opinion concluded regarding both infringement and validity); see also Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 989 (Fed. Cir. 2021) (considering both infringement and validity opinions in assessing willfulness). Lumicore cannot parse its opinions to disclose only those portions favorable to its position while withholding opinions that may undermine its defense.
3. The Temporal Scope of Waiver Covers the Entire Post-Notice Period
The waiver should encompass all opinion letters and related communications from January 15, 2023 — the date on which Lumicore first received notice of potential infringement through FairPoint's first licensing letter — through the present. This temporal scope is appropriate and necessary for several reasons.
First, OWS's willful infringement theory spans the entire post-notice period. From the date of first notice through the present, Lumicore has continued to manufacture, sell, and offer for sale accused products with knowledge of OWS's patents. The opinion letters and related communications generated throughout this period are directly relevant to Lumicore's subjective state of mind at each stage of its conduct.
Second, the temporal scope captures critical inflection points in the factual narrative:
(a) any opinions obtained before or after the February 28, 2023 response letter, which would shed light on whether Lumicore had already obtained opinions before engaging in the licensing discussion or obtained them only afterward;
(b) any opinions obtained before the April 20, 2023 in-person meeting, which would reveal whether Lumicore participated in the meeting in good faith or as a delaying tactic;
(c) any opinions obtained before the July 10, 2023 declination letter, which would confirm or refute the letter's representation that "competent legal opinions" had been obtained;
(d) any opinions obtained before the LumiEdge 1600G-LR launch in Q4 2023, which would reveal whether Lumicore analyzed the new product's potential infringement before bringing it to market; and
(e) any opinions obtained during the pendency of this litigation, which would reveal whether Lumicore has updated its legal analysis in light of the claims asserted in this case.
Third, limiting the temporal scope to any narrower period — such as the period before the July 10, 2023 letter — would permit Lumicore to withhold opinions that may be critical to the willfulness inquiry. For example, if Lumicore obtained an updated opinion in 2024 that reached a different conclusion than the original opinions, that updated opinion would be highly relevant to Lumicore's current state of mind and to the reasonableness of its continued infringement.
D. Lumicore's Policy Arguments Are Unavailing
Lumicore's Opposition concludes with a policy argument: that compelling production of opinion-of-counsel letters will chill the ability of accused infringers to obtain candid legal advice. (Opp. at 22–23.) This argument has been considered and rejected by the highest authorities.
The Supreme Court's decision in Halo and the Federal Circuit's en banc decision in Seagate together establish a balanced framework that fully protects the legitimate interests of accused infringers. Under Seagate, no adverse inference arises from an accused infringer's failure to obtain or produce an opinion of counsel. 497 F.3d at 1371. An accused infringer is free to obtain opinions, keep them confidential, and defend against willfulness on other grounds. The Seagate/Halo framework thus eliminates any chilling effect on the procurement of legal advice: an accused infringer need not fear that failure to disclose an opinion will be used against it.
But the framework also recognizes an important corollary: once the accused infringer affirmatively relies on counsel's advice — by disclosing the opinions to the patent holder, by asserting an advice-of-counsel defense in litigation, or by otherwise placing the opinions at issue — fairness demands disclosure. The infringer has made a strategic choice. It has elected to invoke the opinions as a sword. It must accept the consequences of that choice, including the obligation to produce the opinions for evaluation by the opposing party and the Court.
Lumicore had every option available to it. It could have obtained opinions, kept them confidential, and defended against willfulness by arguing that the asserted patents are invalid, that its products do not infringe, or that its infringement was at most negligent. Instead, Lumicore chose to reference its "competent legal opinions" in its July 10, 2023 letter and to plead reliance on counsel in its Answer. Having made that strategic choice, Lumicore is not in a position to invoke the very policy considerations that the Seagate/Halo framework was designed to address.
IV. RESPONSE TO SPECIFIC ARGUMENTS IN LUMICORE'S OPPOSITION
A. Lumicore's Characterization of the July 10, 2023 Letter as a "Routine Business Communication" Is Unsupported
Lumicore argues that the July 10, 2023 letter was merely a "routine business communication" in which Lumicore declined a license without placing privileged information at issue. (Opp. at 10.) This characterization is contradicted by the letter itself and by the circumstances in which it was sent.
The July 10, 2023 letter was not routine by any measure. It was the culmination of a six-month correspondence and negotiation process involving multiple written exchanges between counsel, the exchange of detailed claim charts, and an in-person licensing meeting. The letter was authored by or at the direction of Lumicore's General Counsel and/or outside counsel at HVC — legal professionals who understood the significance of the language they chose. The reference to "competent legal opinions" was not inadvertent or casual; it was a deliberate assertion designed to establish a record of good-faith conduct in anticipation of the very litigation that followed.
Moreover, the letter was a "litigation-aware" communication. By July 2023, both parties understood that litigation was a likely outcome if licensing negotiations failed. FairPoint's letters had expressly identified OWS's patent portfolio, provided claim charts mapping specific claims to specific Lumicore products, and invited Lumicore to negotiate a license — a standard precursor to patent infringement litigation. In that context, Lumicore's decision to invoke "competent legal opinions" was a strategic act designed to create a favorable litigation record. Lumicore cannot now disclaim the consequences of its own strategy.
B. Lumicore's Suggestion That OWS Should Use Alternative discovery Methods Is Unavailing
Lumicore argues that OWS should seek the substance of the opinion letters through interrogatories, depositions, or other discovery mechanisms, rather than through direct production. (Opp. at 14.) This argument ignores reality. OWS has attempted to obtain the relevant information through every available discovery tool, and Lumicore has blocked each effort by asserting privilege:
• Interrogatories: OWS propounded interrogatories seeking the identity of the attorneys who prepared the opinions, the dates on which they were rendered, the patents and products they addressed, and a summary of their conclusions. Lumicore objected on privilege grounds and refused to provide substantive responses.
• Deposition: OWS's counsel questioned Mr. Bautista about the substance, scope, and timing of the opinions during his December 3, 2024 deposition. Lumicore's counsel instructed Mr. Bautista not to answer, asserting attorney-client privilege. Mr. Bautista refused to answer no fewer than fourteen separate questions about the opinions.
• Document Requests: OWS served document requests seeking production of the opinion letters. Lumicore objected on privilege grounds and produced nothing.
Lumicore cannot simultaneously block all alternative means of obtaining the information and then argue that OWS should use alternative means rather than seeking direct production. The only remedy is compelled production of the opinion letters themselves.
C. Production Under the Existing Protective Order Addresses Any Confidentiality Concerns
Lumicore raises concerns about the confidentiality of the opinion letters. (Opp. at 23–24.) OWS takes these concerns seriously and has proposed a practical solution: production under the "Highly Confidential — Attorneys' Eyes Only" tier of the three-tier Stipulated Protective Order entered by this Court on July 29, 2024 (D.E. 23).
Under the Protective Order, documents designated "Highly Confidential — Attorneys' Eyes Only" may be viewed only by outside litigation counsel, retained experts who have signed the appropriate undertaking, and the Court and its staff. The designation precludes disclosure to any Lumicore or OWS employee, officer, or director (except with further Court order) and provides robust protections against public disclosure. OWS does not object to this designation. It adequately protects any legitimate confidentiality concerns while ensuring that OWS's counsel can evaluate the opinions for purposes of the willfulness inquiry and case preparation.
V. PROPOSED SCOPE OF PRODUCTION
OWS respectfully requests that the Court order Lumicore to produce the following categories of documents:
1. Opinion Letters and Memoranda. All opinion-of-counsel letters, memoranda, or similar communications (whether from Hawthorne Vega & Cruz LLP, in-house counsel, or any other legal advisor retained by Lumicore) addressing the infringement, validity, enforceability, or design-around analysis of any of the four asserted patents — U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 — with respect to any of the three accused product lines (LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR) or any related or successor products.
2. Transmittal and Summary Documents. All documents reflecting, summarizing, or transmitting the substance of such opinions, including but not limited to cover letters, transmittal emails, and summaries prepared for Lumicore's management, executives, or board of directors.
3. Documents Reflecting Reliance. All documents reflecting Lumicore's receipt, review, consideration, or reliance upon such opinions, including but not limited to minutes of meetings, presentations, memoranda, emails, or other communications to or among Lumicore's CEO Thomas Kessler, CTO Dr. Sandra Michaud, General Counsel Raymond Bautista, Vice President of Product Development Dr. Eric Dalmqvist, or CFO Janet Moreno.
4. Temporal Scope. The temporal scope of the production shall be from January 15, 2023 (the date of FairPoint's first notice and licensing letter) through the date of the Court's order.
5. Timing and Designation. Production shall be made within fourteen (14) calendar days of the Court's order, under the "Highly Confidential — Attorneys' Eyes Only" tier of the Stipulated Protective Order (D.E. 23).
VI. CONCLUSION
For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that this Court grant its Motion to Compel and order Defendant Lumicore Technologies, Inc. to produce all opinion-of-counsel letters and related communications as described in Section V above within fourteen (14) calendar days of the Court's order.
OWS further requests that the Court award OWS its reasonable attorneys' fees and costs incurred in connection with this discovery dispute, including the fees and costs incurred in the preparation and filing of OWS's original Motion to Compel (D.E. 40, filed October 21, 2024), the Memorandum in Support (D.E. 41), the Declaration of Wendy Schultz (D.E. 42), and this Reply, pursuant to Federal Rule of Civil Procedure 37(a)(5)(A). Rule 37(a)(5)(A) provides that when a motion to compel is granted, "the court must, after giving an opportunity to be heard, require the party . . . whose conduct necessitated the motion . . . to pay the movant's reasonable expenses incurred in making the motion, including attorney's fees." Lumicore's refusal to produce the opinion letters, despite having placed them squarely at issue through its own affirmative conduct, was not substantially justified and necessitated the filing of this Motion and Reply.
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: /s/ Alan Ngo
Alan Ngo (CA Bar No. 247891; admitted pro hac vice) Marcus Delgado (TX Bar No. 05738294) Wendy Schultz (CA Bar No. 302154; admitted pro hac vice) Omar Siddiqui (CA Bar No. 318762; admitted pro hac vice) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801
Email: ango@calderwoodharkness.com
Email: mdelgado@calderwoodharkness.com
Email: wschultz@calderwoodharkness.com
Email: osiddiqui@calderwoodharkness.com
LOCAL COUNSEL:
James "Jim" Callahan (TX Bar No. 03841726) WHITMORE & CALLAHAN LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-2100
Email: jcallahan@whitmorecallahan.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
CERTIFICATE OF SERVICE
I hereby certify that on November 18, 2024, the foregoing Plaintiff Optiwave Semiconductor Corp.'s Reply in Support of Its Motion to Compel Production of Defendant Lumicore Technologies, Inc.'s Opinion-of-Counsel Letters 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@hvclaw.com
Email: dcho@hvclaw.com
Email: sbriggs@hvclaw.com
Email: riyer@hvclaw.com
Maria Garza TRASK EDDINGTON LLP 425 East Front Street, Suite 300 Tyler, Texas 75701
Email: mgarza@traskeddington.com
Counsel for Defendant Lumicore Technologies, Inc.
/s/ Alan Ngo Alan Ngo
CERTIFICATE OF CONFERENCE
Pursuant to Local Rule CV-7(h) of the Eastern District of Texas, the undersigned counsel hereby certifies that counsel for Plaintiff Optiwave Semiconductor Corp. conferred with counsel for Defendant Lumicore Technologies, Inc. regarding the subject matter of this Motion and was unable to resolve the dispute without Court intervention. Specifically:
1. On September 18, 2024, Wendy Schultz (Calderwood & Harkness LLP) and Samantha Briggs (Hawthorne Vega & Cruz LLP) held a telephonic meet-and-confer conference during which OWS raised the issue of the opinion letters and Lumicore asserted attorney-client privilege and work-product protection.
2. On October 2, 2024, Ms. Schultz and Ms. Briggs held a second telephonic meet-and-confer conference during which OWS explained its waiver arguments in detail and requested voluntary production. Lumicore declined to produce the opinion letters.
3. On October 14, 2024, Ms. Schultz sent a detailed meet-and-confer letter to Ms. Briggs setting forth OWS's legal position and offering to accept production under the "Highly Confidential — Attorneys' Eyes Only" tier of the Protective Order. Lumicore did not agree to produce the opinion letters.
4. On October 30, 2024, following the filing of OWS's Motion to Compel, the parties held a supplemental telephonic meet-and-confer conference at Lumicore's request. Lumicore again maintained its privilege objection and declined to produce the opinion letters.
5. On November 8, 2024, Ms. Schultz and Ms. Briggs held a final telephonic meet-and-confer conference. Lumicore maintained its position that no waiver has occurred and that the opinion letters are shielded by both attorney-client privilege and work-product protection. The parties were unable to resolve the dispute.
/s/ Wendy Schultz Wendy Schultz
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff,
v. | Case No. 2:24-cv-00319-JRG
LUMICORE TECHNOLOGIES, INC., | Judge James R. Gilstrap
Defendant.