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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

DECLARATION OF WENDY SCHULTZ IN SUPPORT OF PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MOTION TO COMPEL PRODUCTION OF OPINION-OF-COUNSEL LETTERS

I, Wendy Schultz, hereby declare as follows:

I. DECLARANT IDENTIFICATION AND QUALIFICATIONS

1. I am a Lead Associate at the law firm of Calderwood & Harkness LLP, with offices located at 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071. I am a member in good standing of the State Bar of California. On April 18, 2024, I filed an application for admission pro hac vice to practice before the United States District Court for the Eastern District of Texas in connection with the above-captioned action. My pro hac vice application was granted, and I am admitted to practice in this Court for purposes of this matter, with local counsel designation of James "Jim" Callahan of Whitmore & Callahan LLP, 110 North College Avenue, Suite 800, Tyler, Texas 75702.

2. I serve as Lead Associate for Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") in this patent infringement action against Lumicore Technologies, Inc. ("Lumicore" or "Defendant"). In this capacity, I have been personally and substantively involved in all aspects of the discovery process in this matter, including the drafting and service of discovery requests, the review of discovery responses and objections from Lumicore, the review of documents produced in discovery, and the preparation and conduct of meet-and-confer communications with defense counsel regarding disputed discovery issues.

3. I have personal knowledge of the facts set forth in this declaration, and if called as a witness, I could and would competently testify thereto. I make this declaration under penalty of perjury pursuant to 28 U.S.C. § 1746.

II. PURPOSE OF THE DECLARATION

4. I submit this declaration in support of Plaintiff OWS's Motion to Compel Production of Opinion-of-Counsel Letters (the "Motion to Compel") and the accompanying Memorandum of Law in Support thereof, both filed concurrently herewith on October 21, 2024.

5. The purpose of this declaration is threefold. First, this declaration serves to authenticate the exhibit documents attached to OWS's Motion to Compel and Memorandum in Support, each of which is identified and described in Section VII below. Second, this declaration describes in detail the meet-and-confer efforts undertaken by OWS prior to filing the instant Motion to Compel, in compliance with this Court's Local Rules, including Local Rule CV-7(h), and the parties' ESI Protocol Agreement dated August 15, 2024. Third, this declaration sets forth the factual basis for OWS's position that Lumicore has waived the attorney-client privilege as to its opinion-of-counsel letters by: (a) affirmatively referencing "competent legal opinions" in its July 10, 2023 declination letter sent to OWS's licensing agent, FairPoint Licensing Group, LLC ("FairPoint"); and (b) placing the advice-of-counsel defense at issue in its responsive pleadings and litigation conduct in the context of OWS's willful infringement allegations set forth in Count VII of the Complaint.

III. BACKGROUND: THE PRE-SUIT LICENSING CORRESPONDENCE AND LUMICORE'S REFERENCE TO OPINION LETTERS

A. FairPoint Licensing Group's First Licensing Letter (January 15, 2023)

6. On January 15, 2023, FairPoint Licensing Group, LLC ("FairPoint"), OWS's duly authorized licensing agent, sent a notice and licensing letter to Raymond Bautista, General Counsel of Lumicore Technologies, Inc., at Lumicore's corporate headquarters located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. The letter was sent by both certified U.S. mail and electronic mail to Mr. Bautista's attention.

7. The January 15, 2023 letter identified three United States patents owned by OWS: U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), and U.S. Patent No. 9,678,562 (the "'562 Patent") (collectively, the "Initially Identified Patents"). The letter provided Lumicore with specific claim charts mapping representative claims from each of the three identified patents to Lumicore's LumiLink 400G-ZR+ coherent optical transceiver product. The letter notified Lumicore of OWS's belief that Lumicore's manufacture, use, sale, offer for sale, and importation of the LumiLink 400G-ZR+ product infringed one or more claims of each of the Initially Identified Patents, and it invited Lumicore to engage in good-faith licensing discussions with OWS through its agent FairPoint.

8. A true and correct copy of the January 15, 2023 letter from Angela Reeves of FairPoint to Raymond Bautista of Lumicore is attached as Exhibit 1 to the Motion to Compel.

B. Lumicore's Response (February 28, 2023)

9. On February 28, 2023, counsel for Lumicore—Catherine "Kate" Rourke of the law firm Hawthorne Vega & Cruz LLP, 600 Congress Avenue, Suite 2400, Austin, Texas 78701—responded in writing on Lumicore's behalf to FairPoint's January 15, 2023 licensing letter. In her response, Ms. Rourke disputed that Lumicore's LumiLink 400G-ZR+ product infringed any valid claim of the Initially Identified Patents. Ms. Rourke further questioned the validity of the identified patents, raising general assertions regarding the existence of prior art that allegedly anticipated or rendered obvious the claimed inventions. However, the February 28, 2023 letter did not reference any formal opinion-of-counsel letters or analyses that Lumicore had obtained, nor did it identify any specific prior art references by name, date, or publication number.

10. A true and correct copy of the February 28, 2023 response letter from Kate Rourke of Hawthorne Vega & Cruz LLP on behalf of Lumicore is attached as Exhibit 2 to the Motion to Compel.

C. In-Person Licensing Meeting (April 20, 2023)

11. On April 20, 2023, an in-person licensing meeting was held in Austin, Texas. The meeting was attended by Angela Reeves, Managing Director of FairPoint Licensing Group, LLC, and Rebecca Tanaka, General Counsel of OWS, on behalf of OWS, and by Raymond Bautista, General Counsel of Lumicore, and Kate Rourke of Hawthorne Vega & Cruz LLP, on behalf of Lumicore. During the meeting, the parties discussed the scope and applicability of OWS's patent portfolio to Lumicore's products, the parties' respective positions on infringement and validity, and potential licensing terms. While the parties engaged in substantive discussions, no resolution was reached at this meeting, and the parties did not agree on licensing terms or a framework for further negotiations.

D. FairPoint's Second Licensing Letter (May 15, 2023)

12. On May 15, 2023, FairPoint sent a second notice and licensing letter to Raymond Bautista at Lumicore. This second letter expanded both the scope of the asserted patent portfolio and the universe of accused products. Specifically, the May 15, 2023 letter added U.S. Patent No. 11,402,015 (the "'015 Patent," which had issued on August 2, 2022) to the previously identified patents, bringing the total number of asserted patents to four. In addition, the May 15, 2023 letter expanded the identified accused products to include Lumicore's LumiLink 800G-DR8 optical transceiver, which OWS contended infringed one or more claims of the '015 Patent and the '193 Patent. The letter included updated claim charts addressing the LumiLink 800G-DR8 product.

13. A true and correct copy of the May 15, 2023 second licensing letter from Angela Reeves of FairPoint to Raymond Bautista of Lumicore is attached as Exhibit 3 to the Motion to Compel.

E. Lumicore's Declination Letter (July 10, 2023)

14. On July 10, 2023, Lumicore, through its counsel Kate Rourke of Hawthorne Vega & Cruz LLP, sent a letter to FairPoint declining to take a license under OWS's patent portfolio. In the declination letter, Lumicore reaffirmed its position that its products did not infringe any valid claim of any of the four asserted patents and that it saw no basis for a licensing arrangement with OWS.

15. Critically, in the same July 10, 2023 declination letter, Lumicore affirmatively stated that it had obtained "competent legal opinions" concluding that its products do not infringe OWS's patents. The specific language referencing "competent legal opinions" appears at page 2, paragraph 3 of that letter. Lumicore did not, however, produce or attach copies of these opinion-of-counsel letters. Nor did Lumicore identify the counsel or law firm that rendered the opinions, the dates on which the opinions were rendered, or the specific patents or products addressed by those opinions. The declination letter thus placed the existence of purported exculpatory legal analysis squarely before OWS while simultaneously refusing to disclose the substance, scope, or source of that analysis.

16. A true and correct copy of the July 10, 2023 declination letter from Kate Rourke of Hawthorne Vega & Cruz LLP on behalf of Lumicore is attached as Exhibit 4 to the Motion to Compel.

IV. DISCOVERY REQUESTS SEEKING THE OPINION-OF-COUNSEL LETTERS

A. OWS's First Set of Requests for Production (August 26, 2024)

17. On August 26, 2024, OWS served its First Set of Requests for Production of Documents and Things to Lumicore, consisting of eighty-five (85) individually numbered requests for production. The requests were served in accordance with Federal Rules of Civil Procedure 26 and 34, and in accordance with the parties' ESI Protocol Agreement dated August 15, 2024 and the Court's Scheduling Order (Docket Entry 22).

18. Request for Production No. 47 of OWS's First Set sought the following:

"All opinion-of-counsel letters, memoranda, or analyses obtained by Lumicore relating to the infringement, validity, or enforceability of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015, including but not limited to any opinions referenced in Lumicore's July 10, 2023 correspondence to FairPoint Licensing Group, LLC."

19. Request for Production No. 48 of OWS's First Set sought the following:

"All communications between Lumicore and any attorney or law firm concerning the risk of infringement of the Asserted Patents, including communications concerning the design, development, and launch of the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR products."

20. A true and correct copy of OWS's First Set of Requests for Production, with RFP Nos. 47 and 48 specifically highlighted, is attached as Exhibit 6 to the Motion to Compel.

B. OWS's First Set of Interrogatories (August 26, 2024)

21. On the same date, August 26, 2024, OWS also served its First Set of Interrogatories to Lumicore, consisting of twenty-five (25) individually numbered interrogatories served pursuant to Federal Rule of Civil Procedure 33.

22. Interrogatory No. 14 of OWS's First Set asked Lumicore to:

Identify all opinion-of-counsel letters or analyses obtained by Lumicore relating to the Asserted Patents, including the identity of the attorney or law firm that rendered each opinion, the date on which each opinion was rendered, and the specific patents and products addressed therein.

23. A true and correct copy of the relevant excerpts from OWS's First Set of Interrogatories, with Interrogatory No. 14 specifically highlighted, is attached as Exhibit 8 to the Motion to Compel.

C. Lumicore's Responses and Objections

24. Lumicore served its responses and objections to OWS's First Set of Requests for Production on or about September 30, 2024. In its response to RFP No. 47, Lumicore asserted objections on the grounds of attorney-client privilege and work-product protection under Federal Rule of Civil Procedure 26(b)(3). Lumicore declined to produce any opinion-of-counsel letters, memoranda, or analyses responsive to this request. In its response to RFP No. 48, Lumicore similarly asserted objections on the grounds of attorney-client privilege and work-product protection, and declined to produce any communications between Lumicore and any attorney or law firm concerning the risk of infringement of the Asserted Patents.

25. A true and correct copy of the relevant excerpts from Lumicore's Responses and Objections to OWS's First Set of Requests for Production, specifically including Lumicore's responses to RFP Nos. 47 and 48, is attached as Exhibit 7 to the Motion to Compel.

26. Lumicore served its responses and objections to OWS's First Set of Interrogatories on or about September 30, 2024. In its response to Interrogatory No. 14, Lumicore similarly objected on grounds of attorney-client privilege and work-product protection, declining to identify any opinion-of-counsel letters, the authors thereof, the dates on which they were rendered, or the subject matter addressed therein.

27. A true and correct copy of the relevant excerpts from Lumicore's Responses and Objections to OWS's First Set of Interrogatories, specifically including Lumicore's response to Interrogatory No. 14, is attached as Exhibit 9 to the Motion to Compel.

28. As of the date of this declaration and the filing of the Motion to Compel, Lumicore has not yet served its initial privilege log. During our meet-and-confer discussions, as described in greater detail in Section V below, Lumicore's counsel Samantha Briggs represented that documents in the categories corresponding to the opinion-of-counsel letters and related communications would be identified and logged when Lumicore produced its privilege log. As of October 21, 2024, no such privilege log has been produced.

V. MEET-AND-CONFER EFFORTS

29. In accordance with this Court's Local Rules, including Local Rule CV-7(h), and the parties' ESI Protocol Agreement dated August 15, 2024, OWS undertook extensive and good-faith meet-and-confer efforts to resolve the opinion-of-counsel letter dispute with Lumicore prior to filing the instant Motion to Compel. These efforts included three separate telephonic meet-and-confer conferences and a written letter memorializing the parties' positions and the failure to reach resolution. Each of these communications is described in detail below.

A. First Meet-and-Confer Telephone Conference (September 18, 2024)

30. On September 18, 2024, I participated in a telephonic meet-and-confer conference with Samantha Briggs, Lead Associate at Hawthorne Vega & Cruz LLP, counsel for Lumicore. The conference addressed multiple outstanding discovery issues between the parties, including, among others, the scope of Lumicore's document searches, the identification of Lumicore's custodians for ESI collection purposes, and the opinion-of-counsel letter dispute that is the subject of the instant Motion to Compel.

31. During this call, I raised OWS's position that Lumicore had placed the substance of its opinion-of-counsel letters at issue, and had thereby waived the attorney-client privilege with respect to those documents, in two distinct ways. First, I explained that Lumicore had affirmatively referenced "competent legal opinions" in its July 10, 2023 declination letter to FairPoint, thereby injecting the existence and conclusion of those opinions into the pre-suit correspondence between the parties. I noted that this affirmative reference was not a passive or inadvertent disclosure, but rather a deliberate and strategic invocation of legal analysis in support of Lumicore's refusal to take a license under OWS's patents. Second, I explained that Lumicore had placed the advice-of-counsel defense at issue by the manner in which it had responded to OWS's willful infringement allegations as set forth in Count VII of the Complaint (filed April 8, 2024, Docket Entry 1).

32. Ms. Briggs responded that Lumicore had not waived the attorney-client privilege with respect to any opinion-of-counsel letters. Ms. Briggs characterized the July 10, 2023 declination letter as a "business communication" that merely acknowledged, in general terms, that Lumicore had consulted with legal counsel regarding OWS's patent assertions. Ms. Briggs took the position that the declination letter did not disclose the substance of any specific opinion and that the mere acknowledgment of having obtained legal advice did not constitute a waiver of privilege. Ms. Briggs further stated that Lumicore had not affirmatively asserted reliance on opinion of counsel as a formal defense in this action. No resolution was reached during this first meet-and-confer conference.

B. Second Meet-and-Confer Telephone Conference (October 2, 2024)

33. On October 2, 2024, I participated in a second telephonic meet-and-confer conference with Ms. Briggs, again addressing the opinion-of-counsel letter dispute among other discovery issues.

34. During this conference, I reiterated OWS's position regarding waiver and further elaborated on the relevance of the opinion-of-counsel letters to OWS's willful infringement claim. I referenced the upcoming deposition of Raymond Bautista, Lumicore's General Counsel, which at that time had not yet been taken but was scheduled for December 3, 2024. I noted that OWS intended to explore at Mr. Bautista's deposition Lumicore's receipt of OWS's pre-suit notice letters, Lumicore's internal response to those letters, and Lumicore's decision-making process regarding its continued manufacture and sale of the accused products after receiving notice of OWS's patent rights.

35. I further stated that if Lumicore intended to assert—at any stage of this litigation, including at trial—that it relied in good faith on legal opinions in continuing to sell the accused LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR products after receiving notice of OWS's patents, then the substance of those opinions was necessarily at issue. The opinions were directly relevant to whether Lumicore's post-notice conduct constituted subjective willfulness, recklessness, or deliberate indifference to OWS's patent rights.

36. Ms. Briggs maintained Lumicore's privilege position and stated that Lumicore had not yet made a final determination as to whether it would assert an advice-of-counsel defense at trial. Ms. Briggs characterized the question as premature, given the early stage of discovery. I responded by noting that the question was not premature, as the discovery requests at issue had already been served and the discovery period was finite. I then made a specific proposal to Ms. Briggs: I requested that Lumicore either (a) produce the opinion-of-counsel letters referenced in and related to the July 10, 2023 declination letter, or (b) provide a binding commitment that Lumicore would not rely on the existence or substance of any opinion-of-counsel letters as a defense to OWS's willful infringement claim at any stage of this litigation, including at trial. Ms. Briggs declined to make either commitment at that time. No resolution was reached during this second meet-and-confer conference.

C. Third Meet-and-Confer Telephone Conference (October 10, 2024)

37. On October 10, 2024, I participated in a third telephonic meet-and-confer conference with Ms. Briggs. This conference was dedicated primarily to the opinion-of-counsel letter dispute.

38. During this conference, I again pressed for either production of the opinion-of-counsel letters or a commitment from Lumicore to waive any advice-of-counsel defense. Ms. Briggs stated unequivocally that Lumicore would maintain its privilege objections and would not produce the opinion-of-counsel letters. Ms. Briggs also elaborated on Lumicore's position that the July 10, 2023 declination letter's reference to "competent legal opinions" did not constitute a waiver of the attorney-client privilege. Ms. Briggs asserted that the declination letter did not disclose the content of any specific legal opinion, did not identify the attorneys who rendered any such opinions, and was not a litigation filing or court submission. Ms. Briggs further contended that a party's mere statement that it has obtained legal advice—without disclosing the substance of that advice—does not effect a waiver of the attorney-client privilege.

39. I informed Ms. Briggs that I disagreed with Lumicore's legal position and that, in the absence of resolution, OWS would seek Court intervention by filing a motion to compel production of the opinion-of-counsel letters. I stated that OWS would file its motion no later than October 21, 2024. Ms. Briggs acknowledged OWS's stated intention and reiterated that Lumicore would oppose any such motion. No resolution was reached during this third and final meet-and-confer conference.

D. Written Correspondence Memorializing Meet-and-Confer Efforts

40. On October 14, 2024, I sent a written letter via electronic mail to Samantha Briggs at Hawthorne Vega & Cruz LLP. The letter memorialized in detail the substance of the three telephonic meet-and-confer conferences held on September 18, October 2, and October 10, 2024. The letter set forth the parties' respective positions on the opinion-of-counsel letter dispute and confirmed the failure to reach resolution. The letter also documented OWS's proposal that Lumicore either produce the opinions or commit to not relying on them as a defense, and Lumicore's refusal to accept either alternative.

41. The October 14, 2024 written meet-and-confer correspondence was sent in satisfaction of the meet-and-confer requirements set forth in Local Rule CV-7(h) of this Court's Local Rules, as well as the requirements of the parties' ESI Protocol Agreement dated August 15, 2024, which requires the parties to engage in good-faith meet-and-confer efforts, including a written memorialization of positions, before filing any discovery-related motion.

42. A true and correct copy of the October 14, 2024 meet-and-confer correspondence from Wendy Schultz to Samantha Briggs is attached as Exhibit 5 to the Motion to Compel.

VI. DEPOSITION TESTIMONY OF RAYMOND BAUTISTA (ANTICIPATED REFERENCE)

43. The deposition of Raymond Bautista, General Counsel of Lumicore, was not taken until December 3, 2024—a date subsequent to the filing of this declaration and the instant Motion to Compel on October 21, 2024. Accordingly, the Memorandum of Law in Support of the Motion to Compel, filed concurrently herewith, references the anticipated Bautista deposition and reserves Plaintiff's right to supplement the record with deposition testimony once obtained.

44. However, based on Lumicore's Answer and Counterclaims filed on June 17, 2024 (Docket Entry 12), Lumicore has raised defenses of non-infringement and invalidity under 35 U.S.C. §§ 102 and 103. Lumicore has also denied OWS's allegations of willful infringement as set forth in Count VII of the Complaint. The declination letter's affirmative reference to "competent legal opinions" is directly relevant to whether Lumicore acted with subjective recklessness or deliberate indifference to OWS's patent rights, as those concepts are understood under the standard set forth by the Supreme Court of the United States in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016). In Halo, the Supreme Court held that enhanced damages under 35 U.S.C. § 284 are appropriate in cases of "egregious" infringement, including those involving "willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, [or] flagrant" behavior, or conduct representing "the sort of willfulness that the award of enhanced damages was designed to punish." Id. at 103–04. Whether an infringer obtained and relied upon a competent legal opinion is directly relevant to this inquiry.

45. I am informed and believe, and based thereon state, that the Memorandum in Support of the Motion to Compel was subsequently supplemented, with leave of Court, to include excerpts from the December 3, 2024 deposition of Raymond Bautista. During that deposition, Mr. Bautista confirmed receipt of the FairPoint January 15, 2023 licensing letter. Mr. Bautista further testified that he forwarded the January 15, 2023 letter to outside counsel within three business days of receipt. Mr. Bautista refused, however, to answer questions about the substance of any opinion-of-counsel letters or analyses obtained by Lumicore, asserting the attorney-client privilege as the basis for his refusal. Mr. Bautista also admitted during his deposition that no formal design-around analysis was commissioned by Lumicore before the launch of the LumiEdge 1600G-LR product in the fourth quarter of 2023—a product launch that occurred well after Lumicore had received notice of OWS's patent rights through the FairPoint correspondence.

VII. AUTHENTICATION OF EXHIBITS

46. In my capacity as Lead Associate for Plaintiff OWS in this matter, I am familiar with the documents identified and described below. I have reviewed each of these documents and can authenticate them for purposes of the Motion to Compel. Each of the following documents is a true and correct copy of what it purports to be, and each is attached to OWS's Motion to Compel and Memorandum in Support:

47. Exhibit 1: A true and correct copy of the letter dated January 15, 2023, from Angela Reeves of FairPoint Licensing Group, LLC, to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. This letter identified U.S. Patent Nos. 10,234,847; 10,891,193; and 9,678,562, and the LumiLink 400G-ZR+ product as an accused infringing product.

48. Exhibit 2: A true and correct copy of the response letter dated February 28, 2023, from Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP, on behalf of Lumicore Technologies, Inc. This letter disputed infringement and questioned the validity of the identified patents.

49. Exhibit 3: A true and correct copy of the second licensing letter dated May 15, 2023, from Angela Reeves of FairPoint Licensing Group, LLC, to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. This letter added U.S. Patent No. 11,402,015 and the LumiLink 800G-DR8 product to the scope of the licensing discussion.

50. Exhibit 4: A true and correct copy of Lumicore's declination letter dated July 10, 2023, from Kate Rourke of Hawthorne Vega & Cruz LLP on behalf of Lumicore Technologies, Inc., declining to take a license. This is the letter in which Lumicore stated that it had obtained "competent legal opinions" concluding that its products do not infringe OWS's patents. The specific language referencing "competent legal opinions" appears at page 2, paragraph 3 of the letter.

51. Exhibit 5: A true and correct copy of the written meet-and-confer correspondence dated October 14, 2024, from Wendy Schultz of Calderwood & Harkness LLP to Samantha Briggs of Hawthorne Vega & Cruz LLP, memorializing the three telephonic meet-and-confer conferences held on September 18, October 2, and October 10, 2024, the parties' respective positions, and the failure to reach resolution.

52. Exhibit 6: A true and correct copy of OWS's First Set of Requests for Production of Documents and Things to Lumicore Technologies, Inc., served August 26, 2024. Request for Production Nos. 47 and 48 are specifically highlighted.

53. Exhibit 7: True and correct copies of relevant excerpts from Lumicore's Responses and Objections to OWS's First Set of Requests for Production, served on or about September 30, 2024, specifically including Lumicore's responses to RFP Nos. 47 and 48.

54. Exhibit 8: A true and correct copy of relevant excerpts from OWS's First Set of Interrogatories to Lumicore Technologies, Inc., served August 26, 2024. Interrogatory No. 14 is specifically highlighted.

55. Exhibit 9: True and correct copies of relevant excerpts from Lumicore's Responses and Objections to OWS's First Set of Interrogatories, served on or about September 30, 2024, specifically including Lumicore's response to Interrogatory No. 14.

VIII. PREJUDICE TO OWS FROM NON-PRODUCTION

56. OWS is materially and substantially prejudiced by Lumicore's refusal to produce the opinion-of-counsel letters and related documents sought in RFP Nos. 47 and 48 and Interrogatory No. 14. The prejudice arises from several distinct but related factors.

57. First, the existence and content of the opinion-of-counsel letters are directly relevant to OWS's claim of willful infringement, as alleged in Count VII of the Complaint. Whether Lumicore obtained a competent opinion of counsel concluding that its products did not infringe OWS's patents—and, if so, whether Lumicore actually relied upon that opinion in good faith in making its decision to continue manufacturing and selling the accused products—is a central factual question bearing on the willfulness of Lumicore's conduct. The content of the opinions is probative of whether any such opinion was well-reasoned and based on a thorough analysis of the asserted patent claims and Lumicore's products, or whether it was superficial, conclusory, or obtained after the fact merely as a litigation shield.

58. Second, the stakes at issue in this case are substantial. OWS seeks approximately $210 million in damages, including enhanced damages for willful infringement under 35 U.S.C. § 284. Under Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), and the Federal Circuit's subsequent jurisprudence applying Halo, a finding of willful infringement would support an award of up to treble damages. The opinion-of-counsel letters, if they exist in the form described in Lumicore's July 10, 2023 declination letter, are among the most probative categories of evidence bearing on the willfulness determination. Depriving OWS of access to these documents materially impairs OWS's ability to prosecute its willful infringement claim.

59. Third, OWS's willful infringement theory is well-supported by the existing factual record and would be further supported or undermined by the content of the opinion letters. The factual basis for OWS's willfulness claim includes the following: (a) FairPoint's January 15, 2023 licensing letter, which placed Lumicore on actual notice of OWS's patents and provided specific claim charts identifying infringement by the LumiLink 400G-ZR+ product; (b) FairPoint's May 15, 2023 follow-up letter, which expanded the notice to include the '015 Patent and the LumiLink 800G-DR8 product; (c) the April 20, 2023 in-person licensing meeting in Austin, Texas, at which the parties discussed OWS's patents and Lumicore's products at length; (d) Lumicore's continued launch of a new accused product—the LumiEdge 1600G-LR—in the fourth quarter of 2023, well after receiving notice of OWS's patent rights through the FairPoint correspondence; and (e) evidence from a former Lumicore engineer, Melissa Chen (who is now employed by Veridian Photonics, Inc.), that Lumicore's engineering team reviewed OWS's published patent applications during the design phase of the LumiLink 400G-ZR+ product, suggesting that Lumicore had knowledge of OWS's patent portfolio even before the FairPoint correspondence.

60. Fourth, Lumicore's refusal to produce the opinion-of-counsel letters, while simultaneously referencing the existence of those very opinions in its July 10, 2023 declination letter, creates an asymmetry that is unfairly prejudicial to OWS. Lumicore has selectively invoked the existence of "competent legal opinions" when it served its strategic interest to do so—namely, to bolster its refusal to take a license—while now withholding the substance of those opinions from OWS and this Court. This selective invocation of privilege, commonly referred to as using privilege as both a "sword and a shield," is precisely the type of conduct that courts have found to constitute waiver. Lumicore should not be permitted to benefit from the favorable inference created by claiming it has obtained exculpatory legal opinions while simultaneously preventing OWS from testing the adequacy, thoroughness, and conclusions of those opinions.

61. Finally, the timing of this dispute is of critical importance. Fact discovery in this matter closes on May 1, 2025. Plaintiff's expert reports—including the damages report of Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC—are due on June 15, 2025. Dr. Keating's damages report must address the question of enhanced damages for willful infringement, which in turn requires a thorough understanding of the factual record bearing on Lumicore's state of mind. Delay in resolving this dispute will materially impede OWS's ability to prepare its willful infringement case and will prejudice Dr. Keating's ability to render a well-supported opinion on the appropriateness of enhanced damages.

IX. CONFIDENTIALITY PROTECTIONS

62. The Court has entered a Stipulated Protective Order in this action (filed August 19, 2024, Docket Entry 28). The Stipulated Protective Order establishes three tiers of confidentiality designations: "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code." The Protective Order contains robust provisions governing the handling, use, and disclosure of confidential discovery materials, and restricts access to such materials to qualified persons as defined therein.

63. OWS is mindful of the sensitive nature of opinion-of-counsel letters, which may contain attorney mental impressions and legal analysis. To address any legitimate confidentiality concerns that Lumicore may have, OWS proposes that any opinion-of-counsel letters, memoranda, or analyses produced by Lumicore in response to the Motion to Compel be designated at minimum as "Highly Confidential — Attorneys' Eyes Only" under the existing Stipulated Protective Order. This designation would limit access to the opinion letters to outside counsel for OWS and their designated support staff, and would prohibit disclosure to OWS's in-house personnel or any third parties, except as expressly permitted under the Protective Order.

64. The existing Stipulated Protective Order provides more than adequate safeguards against public disclosure of Lumicore's confidential legal opinions, and Lumicore's generalized assertions of privilege should not override OWS's right discover evidence that is directly relevant and material to a core claim in this action.

X. CONCLUSION AND PRAYER

65. For the reasons set forth in this declaration, and as more fully argued in the accompanying Memorandum of Law in Support of OWS's Motion to Compel, I respectfully request that the Court grant Plaintiff OWS's Motion to Compel and order Lumicore Technologies, Inc. to produce all opinion-of-counsel letters, memoranda, and analyses referenced in or relating to Lumicore's July 10, 2023 declination letter, as well as all documents responsive to RFP Nos. 47 and 48 and Interrogatory No. 14 of OWS's First Set, within fourteen (14) days of the date of the Court's order.

66. In the alternative, should the Court decline to order production of the opinion-of-counsel letters, I respectfully request that the Court enter an order precluding Lumicore from relying on the existence or substance of any opinion-of-counsel letters as a defense to OWS's willful infringement claim at any stage of this litigation, including at trial. Such an order is necessary to prevent the unfair asymmetry created by Lumicore's selective invocation of its legal opinions while shielding them from discovery.

XI. VERIFICATION

I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.

Executed on October 21, 2024, at Los Angeles, California.

________________________________________

Wendy Schultz Lead Associate Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801

Email: wschultz@calderwoodharkness.com

Counsel for Plaintiff Optiwave Semiconductor Corp.

EXHIBIT LIST

The following exhibits are attached to the Motion to Compel and are authenticated by this declaration:

Exhibit No.	Description	Date
1	FairPoint Licensing Group, LLC first licensing letter (Angela Reeves to Raymond Bautista)	January 15, 2023
2	Hawthorne Vega & Cruz LLP response letter (Kate Rourke on behalf of Lumicore)	February 28, 2023
3	FairPoint Licensing Group, LLC second licensing letter (Angela Reeves to Raymond Bautista)	May 15, 2023
4	Lumicore Technologies, Inc. declination letter referencing "competent legal opinions" (Kate Rourke on behalf of Lumicore)	July 10, 2023
5	Meet-and-confer correspondence (Wendy Schultz to Samantha Briggs)	October 14, 2024
6	OWS's First Set of Requests for Production of Documents and Things (RFP Nos. 47–48 highlighted)	August 26, 2024
7	Lumicore's Responses and Objections to RFP Nos. 47–48 (excerpts)	September 30, 2024
8	OWS's First Set of Interrogatories (Interrogatory No. 14 highlighted)	August 26, 2024
9	Lumicore's Responses and Objections to Interrogatory No. 14 (excerpts)	September 30, 2024

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
DECLARATION OF WENDY SCHULTZ IN SUPPORT OF PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MOTION TO COMPEL PRODUCTION OF OPINION-OF-COUNSEL LETTERS
I, Wendy Schultz, hereby declare as follows:
I. DECLARANT IDENTIFICATION AND QUALIFICATIONS
1. I am a Lead Associate at the law firm of Calderwood & Harkness LLP, with offices located at 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071. I am a member in good standing of the State Bar of California. On April 18, 2024, I filed an application for admission pro hac vice to practice before the United States District Court for the Eastern District of Texas in connection with the above-captioned action. My pro hac vice application was granted, and I am admitted to practice in this Court for purposes of this matter, with local counsel designation of James "Jim" Callahan of Whitmore & Callahan LLP, 110 North College Avenue, Suite 800, Tyler, Texas 75702.
2. I serve as Lead Associate for Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") in this patent infringement action against Lumicore Technologies, Inc. ("Lumicore" or "Defendant"). In this capacity, I have been personally and substantively involved in all aspects of the discovery process in this matter, including the drafting and service of discovery requests, the review of discovery responses and objections from Lumicore, the review of documents produced in discovery, and the preparation and conduct of meet-and-confer communications with defense counsel regarding disputed discovery issues.
3. I have personal knowledge of the facts set forth in this declaration, and if called as a witness, I could and would competently testify thereto. I make this declaration under penalty of perjury pursuant to 28 U.S.C. § 1746.
II. PURPOSE OF THE DECLARATION
4. I submit this declaration in support of Plaintiff OWS's Motion to Compel Production of Opinion-of-Counsel Letters (the "Motion to Compel") and the accompanying Memorandum of Law in Support thereof, both filed concurrently herewith on October 21, 2024.
5. The purpose of this declaration is threefold. First, this declaration serves to authenticate the exhibit documents attached to OWS's Motion to Compel and Memorandum in Support, each of which is identified and described in Section VII below. Second, this declaration describes in detail the meet-and-confer efforts undertaken by OWS prior to filing the instant Motion to Compel, in compliance with this Court's Local Rules, including Local Rule CV-7(h), and the parties' ESI Protocol Agreement dated August 15, 2024. Third, this declaration sets forth the factual basis for OWS's position that Lumicore has waived the attorney-client privilege as to its opinion-of-counsel letters by: (a) affirmatively referencing "competent legal opinions" in its July 10, 2023 declination letter sent to OWS's licensing agent, FairPoint Licensing Group, LLC ("FairPoint"); and (b) placing the advice-of-counsel defense at issue in its responsive pleadings and litigation conduct in the context of OWS's willful infringement allegations set forth in Count VII of the Complaint.
III. BACKGROUND: THE PRE-SUIT LICENSING CORRESPONDENCE AND LUMICORE'S REFERENCE TO OPINION LETTERS
A. FairPoint Licensing Group's First Licensing Letter (January 15, 2023)
6. On January 15, 2023, FairPoint Licensing Group, LLC ("FairPoint"), OWS's duly authorized licensing agent, sent a notice and licensing letter to Raymond Bautista, General Counsel of Lumicore Technologies, Inc., at Lumicore's corporate headquarters located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. The letter was sent by both certified U.S. mail and electronic mail to Mr. Bautista's attention.
7. The January 15, 2023 letter identified three United States patents owned by OWS: U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), and U.S. Patent No. 9,678,562 (the "'562 Patent") (collectively, the "Initially Identified Patents"). The letter provided Lumicore with specific claim charts mapping representative claims from each of the three identified patents to Lumicore's LumiLink 400G-ZR+ coherent optical transceiver product. The letter notified Lumicore of OWS's belief that Lumicore's manufacture, use, sale, offer for sale, and importation of the LumiLink 400G-ZR+ product infringed one or more claims of each of the Initially Identified Patents, and it invited Lumicore to engage in good-faith licensing discussions with OWS through its agent FairPoint.
8. A true and correct copy of the January 15, 2023 letter from Angela Reeves of FairPoint to Raymond Bautista of Lumicore is attached as Exhibit 1 to the Motion to Compel.
B. Lumicore's Response (February 28, 2023)
9. On February 28, 2023, counsel for Lumicore—Catherine "Kate" Rourke of the law firm Hawthorne Vega & Cruz LLP, 600 Congress Avenue, Suite 2400, Austin, Texas 78701—responded in writing on Lumicore's behalf to FairPoint's January 15, 2023 licensing letter. In her response, Ms. Rourke disputed that Lumicore's LumiLink 400G-ZR+ product infringed any valid claim of the Initially Identified Patents. Ms. Rourke further questioned the validity of the identified patents, raising general assertions regarding the existence of prior art that allegedly anticipated or rendered obvious the claimed inventions. However, the February 28, 2023 letter did not reference any formal opinion-of-counsel letters or analyses that Lumicore had obtained, nor did it identify any specific prior art references by name, date, or publication number.
10. A true and correct copy of the February 28, 2023 response letter from Kate Rourke of Hawthorne Vega & Cruz LLP on behalf of Lumicore is attached as Exhibit 2 to the Motion to Compel.
C. In-Person Licensing Meeting (April 20, 2023)
11. On April 20, 2023, an in-person licensing meeting was held in Austin, Texas. The meeting was attended by Angela Reeves, Managing Director of FairPoint Licensing Group, LLC, and Rebecca Tanaka, General Counsel of OWS, on behalf of OWS, and by Raymond Bautista, General Counsel of Lumicore, and Kate Rourke of Hawthorne Vega & Cruz LLP, on behalf of Lumicore. During the meeting, the parties discussed the scope and applicability of OWS's patent portfolio to Lumicore's products, the parties' respective positions on infringement and validity, and potential licensing terms. While the parties engaged in substantive discussions, no resolution was reached at this meeting, and the parties did not agree on licensing terms or a framework for further negotiations.
D. FairPoint's Second Licensing Letter (May 15, 2023)
12. On May 15, 2023, FairPoint sent a second notice and licensing letter to Raymond Bautista at Lumicore. This second letter expanded both the scope of the asserted patent portfolio and the universe of accused products. Specifically, the May 15, 2023 letter added U.S. Patent No. 11,402,015 (the "'015 Patent," which had issued on August 2, 2022) to the previously identified patents, bringing the total number of asserted patents to four. In addition, the May 15, 2023 letter expanded the identified accused products to include Lumicore's LumiLink 800G-DR8 optical transceiver, which OWS contended infringed one or more claims of the '015 Patent and the '193 Patent. The letter included updated claim charts addressing the LumiLink 800G-DR8 product.
13. A true and correct copy of the May 15, 2023 second licensing letter from Angela Reeves of FairPoint to Raymond Bautista of Lumicore is attached as Exhibit 3 to the Motion to Compel.
E. Lumicore's Declination Letter (July 10, 2023)
14. On July 10, 2023, Lumicore, through its counsel Kate Rourke of Hawthorne Vega & Cruz LLP, sent a letter to FairPoint declining to take a license under OWS's patent portfolio. In the declination letter, Lumicore reaffirmed its position that its products did not infringe any valid claim of any of the four asserted patents and that it saw no basis for a licensing arrangement with OWS.
15. Critically, in the same July 10, 2023 declination letter, Lumicore affirmatively stated that it had obtained "competent legal opinions" concluding that its products do not infringe OWS's patents. The specific language referencing "competent legal opinions" appears at page 2, paragraph 3 of that letter. Lumicore did not, however, produce or attach copies of these opinion-of-counsel letters. Nor did Lumicore identify the counsel or law firm that rendered the opinions, the dates on which the opinions were rendered, or the specific patents or products addressed by those opinions. The declination letter thus placed the existence of purported exculpatory legal analysis squarely before OWS while simultaneously refusing to disclose the substance, scope, or source of that analysis.
16. A true and correct copy of the July 10, 2023 declination letter from Kate Rourke of Hawthorne Vega & Cruz LLP on behalf of Lumicore is attached as Exhibit 4 to the Motion to Compel.
IV. DISCOVERY REQUESTS SEEKING THE OPINION-OF-COUNSEL LETTERS
A. OWS's First Set of Requests for Production (August 26, 2024)
17. On August 26, 2024, OWS served its First Set of Requests for Production of Documents and Things to Lumicore, consisting of eighty-five (85) individually numbered requests for production. The requests were served in accordance with Federal Rules of Civil Procedure 26 and 34, and in accordance with the parties' ESI Protocol Agreement dated August 15, 2024 and the Court's Scheduling Order (Docket Entry 22).
18. Request for Production No. 47 of OWS's First Set sought the following:
"All opinion-of-counsel letters, memoranda, or analyses obtained by Lumicore relating to the infringement, validity, or enforceability of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015, including but not limited to any opinions referenced in Lumicore's July 10, 2023 correspondence to FairPoint Licensing Group, LLC."
19. Request for Production No. 48 of OWS's First Set sought the following:
"All communications between Lumicore and any attorney or law firm concerning the risk of infringement of the Asserted Patents, including communications concerning the design, development, and launch of the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR products."
20. A true and correct copy of OWS's First Set of Requests for Production, with RFP Nos. 47 and 48 specifically highlighted, is attached as Exhibit 6 to the Motion to Compel.
B. OWS's First Set of Interrogatories (August 26, 2024)
21. On the same date, August 26, 2024, OWS also served its First Set of Interrogatories to Lumicore, consisting of twenty-five (25) individually numbered interrogatories served pursuant to Federal Rule of Civil Procedure 33.
22. Interrogatory No. 14 of OWS's First Set asked Lumicore to:
Identify all opinion-of-counsel letters or analyses obtained by Lumicore relating to the Asserted Patents, including the identity of the attorney or law firm that rendered each opinion, the date on which each opinion was rendered, and the specific patents and products addressed therein.
23. A true and correct copy of the relevant excerpts from OWS's First Set of Interrogatories, with Interrogatory No. 14 specifically highlighted, is attached as Exhibit 8 to the Motion to Compel.
C. Lumicore's Responses and Objections
24. Lumicore served its responses and objections to OWS's First Set of Requests for Production on or about September 30, 2024. In its response to RFP No. 47, Lumicore asserted objections on the grounds of attorney-client privilege and work-product protection under Federal Rule of Civil Procedure 26(b)(3). Lumicore declined to produce any opinion-of-counsel letters, memoranda, or analyses responsive to this request. In its response to RFP No. 48, Lumicore similarly asserted objections on the grounds of attorney-client privilege and work-product protection, and declined to produce any communications between Lumicore and any attorney or law firm concerning the risk of infringement of the Asserted Patents.
25. A true and correct copy of the relevant excerpts from Lumicore's Responses and Objections to OWS's First Set of Requests for Production, specifically including Lumicore's responses to RFP Nos. 47 and 48, is attached as Exhibit 7 to the Motion to Compel.
26. Lumicore served its responses and objections to OWS's First Set of Interrogatories on or about September 30, 2024. In its response to Interrogatory No. 14, Lumicore similarly objected on grounds of attorney-client privilege and work-product protection, declining to identify any opinion-of-counsel letters, the authors thereof, the dates on which they were rendered, or the subject matter addressed therein.
27. A true and correct copy of the relevant excerpts from Lumicore's Responses and Objections to OWS's First Set of Interrogatories, specifically including Lumicore's response to Interrogatory No. 14, is attached as Exhibit 9 to the Motion to Compel.
28. As of the date of this declaration and the filing of the Motion to Compel, Lumicore has not yet served its initial privilege log. During our meet-and-confer discussions, as described in greater detail in Section V below, Lumicore's counsel Samantha Briggs represented that documents in the categories corresponding to the opinion-of-counsel letters and related communications would be identified and logged when Lumicore produced its privilege log. As of October 21, 2024, no such privilege log has been produced.
V. MEET-AND-CONFER EFFORTS
29. In accordance with this Court's Local Rules, including Local Rule CV-7(h), and the parties' ESI Protocol Agreement dated August 15, 2024, OWS undertook extensive and good-faith meet-and-confer efforts to resolve the opinion-of-counsel letter dispute with Lumicore prior to filing the instant Motion to Compel. These efforts included three separate telephonic meet-and-confer conferences and a written letter memorializing the parties' positions and the failure to reach resolution. Each of these communications is described in detail below.
A. First Meet-and-Confer Telephone Conference (September 18, 2024)
30. On September 18, 2024, I participated in a telephonic meet-and-confer conference with Samantha Briggs, Lead Associate at Hawthorne Vega & Cruz LLP, counsel for Lumicore. The conference addressed multiple outstanding discovery issues between the parties, including, among others, the scope of Lumicore's document searches, the identification of Lumicore's custodians for ESI collection purposes, and the opinion-of-counsel letter dispute that is the subject of the instant Motion to Compel.
31. During this call, I raised OWS's position that Lumicore had placed the substance of its opinion-of-counsel letters at issue, and had thereby waived the attorney-client privilege with respect to those documents, in two distinct ways. First, I explained that Lumicore had affirmatively referenced "competent legal opinions" in its July 10, 2023 declination letter to FairPoint, thereby injecting the existence and conclusion of those opinions into the pre-suit correspondence between the parties. I noted that this affirmative reference was not a passive or inadvertent disclosure, but rather a deliberate and strategic invocation of legal analysis in support of Lumicore's refusal to take a license under OWS's patents. Second, I explained that Lumicore had placed the advice-of-counsel defense at issue by the manner in which it had responded to OWS's willful infringement allegations as set forth in Count VII of the Complaint (filed April 8, 2024, Docket Entry 1).
32. Ms. Briggs responded that Lumicore had not waived the attorney-client privilege with respect to any opinion-of-counsel letters. Ms. Briggs characterized the July 10, 2023 declination letter as a "business communication" that merely acknowledged, in general terms, that Lumicore had consulted with legal counsel regarding OWS's patent assertions. Ms. Briggs took the position that the declination letter did not disclose the substance of any specific opinion and that the mere acknowledgment of having obtained legal advice did not constitute a waiver of privilege. Ms. Briggs further stated that Lumicore had not affirmatively asserted reliance on opinion of counsel as a formal defense in this action. No resolution was reached during this first meet-and-confer conference.
B. Second Meet-and-Confer Telephone Conference (October 2, 2024)
33. On October 2, 2024, I participated in a second telephonic meet-and-confer conference with Ms. Briggs, again addressing the opinion-of-counsel letter dispute among other discovery issues.
34. During this conference, I reiterated OWS's position regarding waiver and further elaborated on the relevance of the opinion-of-counsel letters to OWS's willful infringement claim. I referenced the upcoming deposition of Raymond Bautista, Lumicore's General Counsel, which at that time had not yet been taken but was scheduled for December 3, 2024. I noted that OWS intended to explore at Mr. Bautista's deposition Lumicore's receipt of OWS's pre-suit notice letters, Lumicore's internal response to those letters, and Lumicore's decision-making process regarding its continued manufacture and sale of the accused products after receiving notice of OWS's patent rights.
35. I further stated that if Lumicore intended to assert—at any stage of this litigation, including at trial—that it relied in good faith on legal opinions in continuing to sell the accused LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR products after receiving notice of OWS's patents, then the substance of those opinions was necessarily at issue. The opinions were directly relevant to whether Lumicore's post-notice conduct constituted subjective willfulness, recklessness, or deliberate indifference to OWS's patent rights.
36. Ms. Briggs maintained Lumicore's privilege position and stated that Lumicore had not yet made a final determination as to whether it would assert an advice-of-counsel defense at trial. Ms. Briggs characterized the question as premature, given the early stage of discovery. I responded by noting that the question was not premature, as the discovery requests at issue had already been served and the discovery period was finite. I then made a specific proposal to Ms. Briggs: I requested that Lumicore either (a) produce the opinion-of-counsel letters referenced in and related to the July 10, 2023 declination letter, or (b) provide a binding commitment that Lumicore would not rely on the existence or substance of any opinion-of-counsel letters as a defense to OWS's willful infringement claim at any stage of this litigation, including at trial. Ms. Briggs declined to make either commitment at that time. No resolution was reached during this second meet-and-confer conference.
C. Third Meet-and-Confer Telephone Conference (October 10, 2024)
37. On October 10, 2024, I participated in a third telephonic meet-and-confer conference with Ms. Briggs. This conference was dedicated primarily to the opinion-of-counsel letter dispute.
38. During this conference, I again pressed for either production of the opinion-of-counsel letters or a commitment from Lumicore to waive any advice-of-counsel defense. Ms. Briggs stated unequivocally that Lumicore would maintain its privilege objections and would not produce the opinion-of-counsel letters. Ms. Briggs also elaborated on Lumicore's position that the July 10, 2023 declination letter's reference to "competent legal opinions" did not constitute a waiver of the attorney-client privilege. Ms. Briggs asserted that the declination letter did not disclose the content of any specific legal opinion, did not identify the attorneys who rendered any such opinions, and was not a litigation filing or court submission. Ms. Briggs further contended that a party's mere statement that it has obtained legal advice—without disclosing the substance of that advice—does not effect a waiver of the attorney-client privilege.
39. I informed Ms. Briggs that I disagreed with Lumicore's legal position and that, in the absence of resolution, OWS would seek Court intervention by filing a motion to compel production of the opinion-of-counsel letters. I stated that OWS would file its motion no later than October 21, 2024. Ms. Briggs acknowledged OWS's stated intention and reiterated that Lumicore would oppose any such motion. No resolution was reached during this third and final meet-and-confer conference.
D. Written Correspondence Memorializing Meet-and-Confer Efforts
40. On October 14, 2024, I sent a written letter via electronic mail to Samantha Briggs at Hawthorne Vega & Cruz LLP. The letter memorialized in detail the substance of the three telephonic meet-and-confer conferences held on September 18, October 2, and October 10, 2024. The letter set forth the parties' respective positions on the opinion-of-counsel letter dispute and confirmed the failure to reach resolution. The letter also documented OWS's proposal that Lumicore either produce the opinions or commit to not relying on them as a defense, and Lumicore's refusal to accept either alternative.
41. The October 14, 2024 written meet-and-confer correspondence was sent in satisfaction of the meet-and-confer requirements set forth in Local Rule CV-7(h) of this Court's Local Rules, as well as the requirements of the parties' ESI Protocol Agreement dated August 15, 2024, which requires the parties to engage in good-faith meet-and-confer efforts, including a written memorialization of positions, before filing any discovery-related motion.
42. A true and correct copy of the October 14, 2024 meet-and-confer correspondence from Wendy Schultz to Samantha Briggs is attached as Exhibit 5 to the Motion to Compel.
VI. DEPOSITION TESTIMONY OF RAYMOND BAUTISTA (ANTICIPATED REFERENCE)
43. The deposition of Raymond Bautista, General Counsel of Lumicore, was not taken until December 3, 2024—a date subsequent to the filing of this declaration and the instant Motion to Compel on October 21, 2024. Accordingly, the Memorandum of Law in Support of the Motion to Compel, filed concurrently herewith, references the anticipated Bautista deposition and reserves Plaintiff's right to supplement the record with deposition testimony once obtained.
44. However, based on Lumicore's Answer and Counterclaims filed on June 17, 2024 (Docket Entry 12), Lumicore has raised defenses of non-infringement and invalidity under 35 U.S.C. §§ 102 and 103. Lumicore has also denied OWS's allegations of willful infringement as set forth in Count VII of the Complaint. The declination letter's affirmative reference to "competent legal opinions" is directly relevant to whether Lumicore acted with subjective recklessness or deliberate indifference to OWS's patent rights, as those concepts are understood under the standard set forth by the Supreme Court of the United States in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016). In Halo, the Supreme Court held that enhanced damages under 35 U.S.C. § 284 are appropriate in cases of "egregious" infringement, including those involving "willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, [or] flagrant" behavior, or conduct representing "the sort of willfulness that the award of enhanced damages was designed to punish." Id. at 103–04. Whether an infringer obtained and relied upon a competent legal opinion is directly relevant to this inquiry.
45. I am informed and believe, and based thereon state, that the Memorandum in Support of the Motion to Compel was subsequently supplemented, with leave of Court, to include excerpts from the December 3, 2024 deposition of Raymond Bautista. During that deposition, Mr. Bautista confirmed receipt of the FairPoint January 15, 2023 licensing letter. Mr. Bautista further testified that he forwarded the January 15, 2023 letter to outside counsel within three business days of receipt. Mr. Bautista refused, however, to answer questions about the substance of any opinion-of-counsel letters or analyses obtained by Lumicore, asserting the attorney-client privilege as the basis for his refusal. Mr. Bautista also admitted during his deposition that no formal design-around analysis was commissioned by Lumicore before the launch of the LumiEdge 1600G-LR product in the fourth quarter of 2023—a product launch that occurred well after Lumicore had received notice of OWS's patent rights through the FairPoint correspondence.
VII. AUTHENTICATION OF EXHIBITS
46. In my capacity as Lead Associate for Plaintiff OWS in this matter, I am familiar with the documents identified and described below. I have reviewed each of these documents and can authenticate them for purposes of the Motion to Compel. Each of the following documents is a true and correct copy of what it purports to be, and each is attached to OWS's Motion to Compel and Memorandum in Support:
47. Exhibit 1: A true and correct copy of the letter dated January 15, 2023, from Angela Reeves of FairPoint Licensing Group, LLC, to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. This letter identified U.S. Patent Nos. 10,234,847; 10,891,193; and 9,678,562, and the LumiLink 400G-ZR+ product as an accused infringing product.
48. Exhibit 2: A true and correct copy of the response letter dated February 28, 2023, from Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP, on behalf of Lumicore Technologies, Inc. This letter disputed infringement and questioned the validity of the identified patents.
49. Exhibit 3: A true and correct copy of the second licensing letter dated May 15, 2023, from Angela Reeves of FairPoint Licensing Group, LLC, to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. This letter added U.S. Patent No. 11,402,015 and the LumiLink 800G-DR8 product to the scope of the licensing discussion.
50. Exhibit 4: A true and correct copy of Lumicore's declination letter dated July 10, 2023, from Kate Rourke of Hawthorne Vega & Cruz LLP on behalf of Lumicore Technologies, Inc., declining to take a license. This is the letter in which Lumicore stated that it had obtained "competent legal opinions" concluding that its products do not infringe OWS's patents. The specific language referencing "competent legal opinions" appears at page 2, paragraph 3 of the letter.
51. Exhibit 5: A true and correct copy of the written meet-and-confer correspondence dated October 14, 2024, from Wendy Schultz of Calderwood & Harkness LLP to Samantha Briggs of Hawthorne Vega & Cruz LLP, memorializing the three telephonic meet-and-confer conferences held on September 18, October 2, and October 10, 2024, the parties' respective positions, and the failure to reach resolution.
52. Exhibit 6: A true and correct copy of OWS's First Set of Requests for Production of Documents and Things to Lumicore Technologies, Inc., served August 26, 2024. Request for Production Nos. 47 and 48 are specifically highlighted.
53. Exhibit 7: True and correct copies of relevant excerpts from Lumicore's Responses and Objections to OWS's First Set of Requests for Production, served on or about September 30, 2024, specifically including Lumicore's responses to RFP Nos. 47 and 48.
54. Exhibit 8: A true and correct copy of relevant excerpts from OWS's First Set of Interrogatories to Lumicore Technologies, Inc., served August 26, 2024. Interrogatory No. 14 is specifically highlighted.
55. Exhibit 9: True and correct copies of relevant excerpts from Lumicore's Responses and Objections to OWS's First Set of Interrogatories, served on or about September 30, 2024, specifically including Lumicore's response to Interrogatory No. 14.
VIII. PREJUDICE TO OWS FROM NON-PRODUCTION
56. OWS is materially and substantially prejudiced by Lumicore's refusal to produce the opinion-of-counsel letters and related documents sought in RFP Nos. 47 and 48 and Interrogatory No. 14. The prejudice arises from several distinct but related factors.
57. First, the existence and content of the opinion-of-counsel letters are directly relevant to OWS's claim of willful infringement, as alleged in Count VII of the Complaint. Whether Lumicore obtained a competent opinion of counsel concluding that its products did not infringe OWS's patents—and, if so, whether Lumicore actually relied upon that opinion in good faith in making its decision to continue manufacturing and selling the accused products—is a central factual question bearing on the willfulness of Lumicore's conduct. The content of the opinions is probative of whether any such opinion was well-reasoned and based on a thorough analysis of the asserted patent claims and Lumicore's products, or whether it was superficial, conclusory, or obtained after the fact merely as a litigation shield.
58. Second, the stakes at issue in this case are substantial. OWS seeks approximately $210 million in damages, including enhanced damages for willful infringement under 35 U.S.C. § 284. Under Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), and the Federal Circuit's subsequent jurisprudence applying Halo, a finding of willful infringement would support an award of up to treble damages. The opinion-of-counsel letters, if they exist in the form described in Lumicore's July 10, 2023 declination letter, are among the most probative categories of evidence bearing on the willfulness determination. Depriving OWS of access to these documents materially impairs OWS's ability to prosecute its willful infringement claim.
59. Third, OWS's willful infringement theory is well-supported by the existing factual record and would be further supported or undermined by the content of the opinion letters. The factual basis for OWS's willfulness claim includes the following: (a) FairPoint's January 15, 2023 licensing letter, which placed Lumicore on actual notice of OWS's patents and provided specific claim charts identifying infringement by the LumiLink 400G-ZR+ product; (b) FairPoint's May 15, 2023 follow-up letter, which expanded the notice to include the '015 Patent and the LumiLink 800G-DR8 product; (c) the April 20, 2023 in-person licensing meeting in Austin, Texas, at which the parties discussed OWS's patents and Lumicore's products at length; (d) Lumicore's continued launch of a new accused product—the LumiEdge 1600G-LR—in the fourth quarter of 2023, well after receiving notice of OWS's patent rights through the FairPoint correspondence; and (e) evidence from a former Lumicore engineer, Melissa Chen (who is now employed by Veridian Photonics, Inc.), that Lumicore's engineering team reviewed OWS's published patent applications during the design phase of the LumiLink 400G-ZR+ product, suggesting that Lumicore had knowledge of OWS's patent portfolio even before the FairPoint correspondence.
60. Fourth, Lumicore's refusal to produce the opinion-of-counsel letters, while simultaneously referencing the existence of those very opinions in its July 10, 2023 declination letter, creates an asymmetry that is unfairly prejudicial to OWS. Lumicore has selectively invoked the existence of "competent legal opinions" when it served its strategic interest to do so—namely, to bolster its refusal to take a license—while now withholding the substance of those opinions from OWS and this Court. This selective invocation of privilege, commonly referred to as using privilege as both a "sword and a shield," is precisely the type of conduct that courts have found to constitute waiver. Lumicore should not be permitted to benefit from the favorable inference created by claiming it has obtained exculpatory legal opinions while simultaneously preventing OWS from testing the adequacy, thoroughness, and conclusions of those opinions.
61. Finally, the timing of this dispute is of critical importance. Fact discovery in this matter closes on May 1, 2025. Plaintiff's expert reports—including the damages report of Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC—are due on June 15, 2025. Dr. Keating's damages report must address the question of enhanced damages for willful infringement, which in turn requires a thorough understanding of the factual record bearing on Lumicore's state of mind. Delay in resolving this dispute will materially impede OWS's ability to prepare its willful infringement case and will prejudice Dr. Keating's ability to render a well-supported opinion on the appropriateness of enhanced damages.
IX. CONFIDENTIALITY PROTECTIONS
62. The Court has entered a Stipulated Protective Order in this action (filed August 19, 2024, Docket Entry 28). The Stipulated Protective Order establishes three tiers of confidentiality designations: "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code." The Protective Order contains robust provisions governing the handling, use, and disclosure of confidential discovery materials, and restricts access to such materials to qualified persons as defined therein.
63. OWS is mindful of the sensitive nature of opinion-of-counsel letters, which may contain attorney mental impressions and legal analysis. To address any legitimate confidentiality concerns that Lumicore may have, OWS proposes that any opinion-of-counsel letters, memoranda, or analyses produced by Lumicore in response to the Motion to Compel be designated at minimum as "Highly Confidential — Attorneys' Eyes Only" under the existing Stipulated Protective Order. This designation would limit access to the opinion letters to outside counsel for OWS and their designated support staff, and would prohibit disclosure to OWS's in-house personnel or any third parties, except as expressly permitted under the Protective Order.
64. The existing Stipulated Protective Order provides more than adequate safeguards against public disclosure of Lumicore's confidential legal opinions, and Lumicore's generalized assertions of privilege should not override OWS's right discover evidence that is directly relevant and material to a core claim in this action.
X. CONCLUSION AND PRAYER
65. For the reasons set forth in this declaration, and as more fully argued in the accompanying Memorandum of Law in Support of OWS's Motion to Compel, I respectfully request that the Court grant Plaintiff OWS's Motion to Compel and order Lumicore Technologies, Inc. to produce all opinion-of-counsel letters, memoranda, and analyses referenced in or relating to Lumicore's July 10, 2023 declination letter, as well as all documents responsive to RFP Nos. 47 and 48 and Interrogatory No. 14 of OWS's First Set, within fourteen (14) days of the date of the Court's order.
66. In the alternative, should the Court decline to order production of the opinion-of-counsel letters, I respectfully request that the Court enter an order precluding Lumicore from relying on the existence or substance of any opinion-of-counsel letters as a defense to OWS's willful infringement claim at any stage of this litigation, including at trial. Such an order is necessary to prevent the unfair asymmetry created by Lumicore's selective invocation of its legal opinions while shielding them from discovery.
XI. VERIFICATION
I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.
Executed on October 21, 2024, at Los Angeles, California.
________________________________________
Wendy Schultz Lead Associate Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801
Email: wschultz@calderwoodharkness.com
Counsel for Plaintiff Optiwave Semiconductor Corp.
EXHIBIT LIST
The following exhibits are attached to the Motion to Compel and are authenticated by this declaration:
Exhibit No. | Description | Date
1 | FairPoint Licensing Group, LLC first licensing letter (Angela Reeves to Raymond Bautista) | January 15, 2023
2 | Hawthorne Vega & Cruz LLP response letter (Kate Rourke on behalf of Lumicore) | February 28, 2023
3 | FairPoint Licensing Group, LLC second licensing letter (Angela Reeves to Raymond Bautista) | May 15, 2023
4 | Lumicore Technologies, Inc. declination letter referencing "competent legal opinions" (Kate Rourke on behalf of Lumicore) | July 10, 2023
5 | Meet-and-confer correspondence (Wendy Schultz to Samantha Briggs) | October 14, 2024
6 | OWS's First Set of Requests for Production of Documents and Things (RFP Nos. 47–48 highlighted) | August 26, 2024
7 | Lumicore's Responses and Objections to RFP Nos. 47–48 (excerpts) | September 30, 2024
8 | OWS's First Set of Interrogatories (Interrogatory No. 14 highlighted) | August 26, 2024
9 | Lumicore's Responses and Objections to Interrogatory No. 14 (excerpts) | September 30, 2024