1014-00004 · Hawthorne Vega & Cruz LLP · Willful Infringement & Enhanced Damages

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DRAFT — ATTORNEY WORK PRODUCT / PRIVILEGED

UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

OPTIWAVE SEMICONDUCTOR CORP.,

Plaintiff,

LUMICORE TECHNOLOGIES, INC.,

Defendant.

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

DECLARATION OF ANGELA REEVES IN SUPPORT OF PLAINTIFF'S MOTION FOR FINDING OF WILLFUL INFRINGEMENT AND ENHANCED DAMAGES UNDER 35 U.S.C. § 284

I, Angela Reeves, hereby declare the following:

I. INTRODUCTION AND IDENTITY OF DECLARANT

1. My name is Angela Reeves. I am over the age of eighteen (18) and am competent to testify to the matters set forth in this Declaration. I make this Declaration based upon my personal knowledge of the facts stated herein and upon my review of business records maintained by FairPoint Licensing Group, LLC ("FairPoint") in the ordinary course of its business. If called as a witness, I could and would testify competently to the matters set forth below.

2. I am the Managing Director of FairPoint Licensing Group, LLC, a patent licensing advisory firm headquartered at 500 Sansome Street, Suite 1400, San Francisco, California 94111. My business address is the same.

3. I submit this Declaration in support of Plaintiff Optiwave Semiconductor Corp.'s ("OWS" or "Plaintiff") Motion for a Finding of Willful Infringement by Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant") and for Enhanced Damages Under 35 U.S.C. § 284. The purpose of this Declaration is to set forth, in detail, the pre-suit licensing outreach that FairPoint conducted on behalf of OWS directed at Lumicore, the substance and chronology of communications and meetings between FairPoint and Lumicore's representatives, and the nature and extent of Lumicore's actual knowledge of OWS's asserted patents and infringement theories prior to the filing of this action.

II. BACKGROUND AND QUALIFICATIONS OF ANGELA REEVES

4. I have served as Managing Director of FairPoint Licensing Group, LLC since its founding in 2015. FairPoint is a patent licensing advisory firm headquartered in San Francisco, California. FairPoint advises technology companies and patent holders on the monetization and licensing of intellectual property portfolios, with a particular focus on the semiconductor, photonics, and telecommunications sectors. In this capacity, FairPoint conducts market analysis, identifies potential licensees, performs initial infringement assessments, and manages pre-suit licensing outreach campaigns on behalf of its clients.

5. Prior to founding FairPoint, I served as Vice President of Licensing at Photon Bridge Ventures, LLC, a patent acquisition and licensing firm based in Menlo Park, California, from 2010 to 2015. Before that, I held positions in intellectual property licensing and business development at Integrated Photonics, Inc. and at Lux Semiconductor Group, both of which are companies engaged in the design and manufacture of silicon photonic devices and optical transceiver modules. Over the course of my career, I have accumulated more than eighteen (18) years of direct, hands-on experience in patent licensing and technology licensing, with specialized expertise in intellectual property related to semiconductor fabrication processes, silicon photonics, waveguide architectures, optical transceiver design, and integrated photonic circuit technologies.

6. In my capacity as Managing Director of FairPoint, I have led or overseen licensing campaigns involving more than forty (40) patent portfolios and directed outreach to more than two hundred (200) potential licensees across the semiconductor and photonics industries. I am thoroughly familiar with industry-standard licensing practices, including the preparation of notice letters, claim charts, and licensing proposals, as well as the conduct of in-person licensing meetings and negotiations.

7. In or around September 2022, OWS retained FairPoint to serve as its licensing agent for the purpose of conducting pre-suit licensing outreach to potential licensees of OWS's silicon photonics patent portfolio. The scope of FairPoint's engagement encompassed identifying potential infringers of OWS's patents, conducting outreach to those potential infringers, presenting OWS's infringement theories and licensing position, and facilitating licensing discussions with a view toward reaching commercially reasonable license agreements. Lumicore Technologies, Inc. was among the targets identified for licensing outreach.

8. In connection with this engagement, I became thoroughly familiar with the patents at issue in this litigation, including: U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss"; U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate"; U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks"; and U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers" (collectively, the "Asserted Patents"). I reviewed these patents, their prosecution histories, and the claim charts prepared in connection with FairPoint's licensing outreach to Lumicore.

III. OWS'S IDENTIFICATION OF POTENTIAL INFRINGEMENT BY LUMICORE

9. In approximately October 2022, OWS's internal engineering team, led by its Chief Technology Officer, Dr. Jian-Wei Huang, identified potential infringement of OWS's patents by Lumicore Technologies, Inc.'s LumiLink 400G-ZR+ transceiver module. The LumiLink 400G-ZR+ is a coherent optical transceiver module designed for data center interconnect and metro networking applications. Lumicore publicly launched the LumiLink 400G-ZR+ in the third quarter of 2022, and the product was commercially available for purchase at the time of OWS's initial identification of potential infringement.

10. Following OWS's internal engineering team's preliminary identification of potential infringement, OWS's General Counsel, Rebecca Tanaka, referred the matter to FairPoint for licensing outreach. Ms. Tanaka and I conferred regarding the scope of the potential infringement, the relevant patents, and the appropriate strategy for initiating licensing discussions with Lumicore.

11. In November 2022, at OWS's direction and in furtherance of the licensing outreach effort, OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent reverse-engineering laboratory located in Santa Clara, California, to perform a teardown and technical analysis of the LumiLink 400G-ZR+ product. Benchmark is a well-known firm in the semiconductor industry that specializes in physical teardown, imaging, and analysis of semiconductor devices, photonic integrated circuits, and optical modules.

12. On December 12, 2022, Benchmark delivered its teardown report to OWS and FairPoint (the "Benchmark Report"). The Benchmark Report was prepared under the direction of Lead Engineer Kevin Ng. The Benchmark Report included detailed photographic images, cross-sectional analysis, and component-level descriptions of the LumiLink 400G-ZR+ transceiver module. Critically, the Benchmark Report confirmed the presence of accused waveguide multiplexer structures within the LumiLink 400G-ZR+ that corresponded to specific claim elements recited in the '847 Patent. The Benchmark Report also confirmed the presence of thermal management micro-channel heat sink structures within the LumiLink 400G-ZR+ that corresponded to specific claim elements recited in the '562 Patent. Additionally, the Benchmark Report identified integrated coherent optical transceiver architectures on a silicon substrate consistent with the claim limitations of the '193 Patent.

13. I personally reviewed the Benchmark Report in its entirety. Following my review, I conferred with Ms. Tanaka regarding the scope of the licensing outreach to Lumicore. Based on the Benchmark Report and the preliminary infringement analysis conducted by OWS's engineering team, I determined that FairPoint was in a position to send a detailed licensing and notice letter to Lumicore identifying the relevant patents, the accused product, and specific claim-to-product mappings.

IV. FIRST LICENSING / NOTICE LETTER — JANUARY 15, 2023

14. On January 15, 2023, I caused FairPoint Licensing Group, LLC to send a detailed licensing and notice letter (the "First Notice Letter") to Raymond Bautista, General Counsel of Lumicore Technologies, Inc., at Lumicore's corporate headquarters address: 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. The First Notice Letter was sent via Severin Partners LLC overnight delivery, tracking number 7742 8310 4695, and was simultaneously sent via email to Mr. Bautista's corporate email address.

15. The First Notice Letter was a comprehensive, nine-page letter that set forth, in substantial detail, OWS's patent rights and its infringement contentions with respect to Lumicore's LumiLink 400G-ZR+ product. The contents of the First Notice Letter included the following:

(a) The letter identified Optiwave Semiconductor Corp. as the owner of a portfolio of United States patents relating to silicon photonics transceiver and waveguide multiplexing technologies. The letter described OWS's history as a pioneer in the development of silicon photonic integrated circuits and its substantial investment in research and development in this field.

(b) The letter specifically identified three patents by number and title: (i) U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss" (the '847 Patent); (ii) U.S. Patent No. 10,891,193, entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate" (the '193 Patent); and (iii) U.S. Patent No. 9,678,562, entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks" (the '562 Patent).

(c) The letter identified Lumicore's LumiLink 400G-ZR+ transceiver module as a product that FairPoint believed practiced one or more claims of each of the three identified patents. The letter described the LumiLink 400G-ZR+ with reference to Lumicore's own publicly available product datasheets and technical specifications.

(d) The letter included detailed claim charts mapping specific claim limitations of each of the three identified patents to specific features of the LumiLink 400G-ZR+ as identified in the Benchmark teardown report. These claim charts identified, on a claim-by-claim and limitation-by-limitation basis, the correspondence between the claim language of the asserted patent claims and the physical structures, components, and design features observed in the LumiLink 400G-ZR+ product.

(e) The letter invited Lumicore to enter into licensing discussions with OWS on commercially reasonable terms. The letter expressed OWS's preference for resolving the matter through a negotiated license rather than through litigation.

(f) The letter stated that OWS was prepared to pursue all available legal remedies, including the filing of a patent infringement action in federal court, if a license could not be agreed upon within a reasonable time frame.

16. A true and correct copy of the January 15, 2023 First Notice Letter is attached hereto as Exhibit 1.

17. Severin Partners LLC delivery confirmation records reflect that the First Notice Letter was delivered to Lumicore's corporate headquarters at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759 on January 17, 2023, and was signed for by an individual at Lumicore's reception desk. A true and correct copy of the Severin Partners LLC delivery confirmation for the First Notice Letter is attached hereto as Exhibit 2.

V. LUMICORE'S RESPONSE — FEBRUARY 28, 2023

18. On February 28, 2023, I received a written response to the First Notice Letter. The response was sent not by Raymond Bautista, General Counsel of Lumicore, directly, but rather by Catherine "Kate" Rourke, a partner at the law firm of Hawthorne Vega & Cruz LLP, located at 600 Congress Avenue, Suite 2400, Austin, Texas 78701. Ms. Rourke's letter identified her as outside litigation counsel for Lumicore Technologies, Inc. and stated that she had been engaged by Lumicore to respond to FairPoint's January 15, 2023 correspondence on Lumicore's behalf.

19. The response letter from Ms. Rourke disputed, in general terms, that any Lumicore product infringed any valid claim of the identified OWS patents. The letter stated that Lumicore's technical team had reviewed FairPoint's correspondence and that Lumicore disagreed with OWS's infringement contentions. The response letter also questioned the validity of the identified patents, asserting that there existed prior art that would render the claims of the identified patents invalid. However, the response letter did not identify any specific prior art references, did not specify which claims it contended were invalid, and did not articulate any specific invalidity theory.

20. Critically, the response letter did not deny that Lumicore had received and reviewed the January 15, 2023 First Notice Letter, the identified patents, or the accompanying claim charts. To the contrary, the response letter's substantive engagement with OWS's infringement contentions — including its statement that Lumicore's "technical team" had reviewed the correspondence — confirmed that Lumicore had, in fact, received and reviewed the First Notice Letter and its enclosures.

21. The response letter did not request any additional technical information from FairPoint or OWS. The response letter did not express any interest in entering into licensing discussions or in exploring the possibility of a negotiated license agreement. The tone and substance of the response letter suggested that Lumicore had no intention of engaging in good-faith licensing negotiations.

22. A true and correct copy of the February 28, 2023 response letter from Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP is attached hereto as Exhibit 3.

VI. IN-PERSON LICENSING MEETING — APRIL 20, 2023

23. Despite Lumicore's initial response disputing infringement, I continued to pursue licensing discussions on behalf of OWS. I communicated with Ms. Rourke by email and by telephone on several occasions in March 2023 and proposed that an in-person meeting be held to discuss the patents and accused products in greater detail. I believed that a face-to-face meeting would afford both parties the opportunity to engage substantively with the technical and legal issues and potentially advance licensing discussions.

24. Ms. Rourke agreed, on behalf of Lumicore, to participate in an in-person licensing meeting. The meeting was scheduled for April 20, 2023 and was held in Austin, Texas, at the offices of Hawthorne Vega & Cruz LLP, located at 600 Congress Avenue, Suite 2400, Austin, Texas 78701. The meeting took place in a conference room at the firm's offices and lasted approximately two and a half hours, commencing at approximately 10:00 a.m. Central Time and concluding at approximately 12:30 p.m. Central Time.

25. The following individuals attended the April 20, 2023 meeting:

On behalf of OWS and FairPoint:

• Angela Reeves, Managing Director, FairPoint Licensing Group, LLC

• Rebecca Tanaka, General Counsel, Optiwave Semiconductor Corp.

On behalf of Lumicore:

• Raymond Bautista, General Counsel, Lumicore Technologies, Inc.

• Catherine "Kate" Rourke, Partner, Hawthorne Vega & Cruz LLP (outside counsel for Lumicore)

26. During the April 20, 2023 meeting, I presented a detailed technical overview of OWS's patent portfolio, with a focus on the three patents that had been identified in the January 15, 2023 First Notice Letter: the '847 Patent, the '193 Patent, and the '562 Patent. My presentation included a discussion of the technology described and claimed in each patent, the scope of the asserted claims, and the significance of the inventions in the context of the silicon photonics transceiver industry.

27. I walked through representative claim charts in detail during the meeting, showing how specific claim limitations of each of the three identified patents mapped to specific features and structures of the LumiLink 400G-ZR+ transceiver module as observed and documented in the Benchmark teardown report. I provided hard copies of the claim charts to Mr. Bautista and Ms. Rourke during the meeting, and I addressed questions from both attendees regarding the claim-to-product mappings.

28. During the meeting, I also discussed the LumiLink 800G-DR8 product, which Lumicore had publicly launched in the first quarter of 2023. I expressed OWS's belief, based on publicly available product datasheets and technical specifications, that the LumiLink 800G-DR8 also practiced claims of the same three patents identified in the First Notice Letter. I informed Mr. Bautista and Ms. Rourke that OWS's infringement contentions extended to the LumiLink 800G-DR8 in addition to the LumiLink 400G-ZR+.

29. I proposed, on behalf of OWS, a royalty-bearing license on commercially reasonable terms that would cover the full portfolio of asserted patents and all accused products, including both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. I indicated that OWS was willing to engage in a structured negotiation process to arrive at mutually agreeable licensing terms and that OWS was open to discussing various licensing structures, including per-unit royalties, lump-sum payments, or a combination thereof.

30. During the meeting, Mr. Bautista made a statement that I found significant and that I recorded in my contemporaneous notes. Specifically, Mr. Bautista acknowledged that the patents and claim charts from the January 15, 2023 First Notice Letter had been circulated internally at Lumicore. Mr. Bautista stated words to the effect that "our technical people have looked at these" and that Lumicore's engineering team had reviewed the identified patents and the claim charts. This acknowledgment confirmed that Lumicore had, in fact, disseminated the substance of OWS's infringement contentions to its internal technical personnel.

31. Despite this acknowledgment, Mr. Bautista and Ms. Rourke maintained throughout the meeting that Lumicore's products did not infringe any valid claims of the identified patents. However, neither Mr. Bautista nor Ms. Rourke provided any specific non-infringement positions during the meeting. They did not identify any specific claim limitations that they contended were not met by the accused products. They did not present any claim construction arguments. They did not identify any specific prior art references or articulate any specific invalidity theories. Their position throughout the meeting remained a blanket denial of infringement and a general assertion of invalidity, without any substantive support.

32. Perhaps most significantly, Lumicore's representatives showed no interest in negotiating a license. Mr. Bautista and Ms. Rourke did not propose any counter-terms to OWS's licensing proposal. They did not suggest an alternative royalty rate or licensing structure. They did not request additional time to evaluate the patents or the infringement contentions. They did not suggest a follow-up meeting. They did not identify any additional technical information or analysis that they would need in order to evaluate OWS's licensing proposal. Based on my extensive experience in patent licensing negotiations, I characterized Lumicore's approach as reflecting "no interest in negotiating." It was my assessment that Lumicore's representatives had already formed their position prior to the meeting and attended the meeting solely as a formality, with no genuine intention of engaging in good-faith licensing discussions.

33. On April 21, 2023, the day after the in-person meeting, I prepared a contemporaneous memorandum summarizing the substance of the April 20, 2023 meeting, including the statements made by all participants, the materials presented, and my observations regarding Lumicore's apparent position and level of interest in licensing. I circulated this memorandum to Rebecca Tanaka, OWS's General Counsel, on the same day.

34. A true and correct copy of my April 21, 2023 meeting memorandum is attached hereto as Exhibit 4.

VII. SECOND LICENSING / NOTICE LETTER — MAY 15, 2023

35. Following the in-person meeting and OWS's continued technical analysis of Lumicore's products, on May 15, 2023, I caused FairPoint Licensing Group, LLC to send a second detailed licensing and notice letter (the "Second Notice Letter") to Raymond Bautista, General Counsel of Lumicore Technologies, Inc., at Lumicore's corporate headquarters address: 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. As with the First Notice Letter, the Second Notice Letter was sent via Severin Partners LLC overnight delivery, tracking number 7742 8310 5829, and was simultaneously sent via email to Mr. Bautista's corporate email address.

36. The Second Notice Letter was a twelve-page letter that expanded upon the First Notice Letter in several important respects. The contents of the Second Notice Letter included the following:

(a) The letter reiterated the three patents that had been identified in the January 15, 2023 First Notice Letter: the '847 Patent, the '193 Patent, and the '562 Patent. The letter incorporated by reference the claim charts that had been provided with the First Notice Letter and that had been presented in detail during the April 20, 2023 in-person meeting.

(b) The letter identified a fourth patent: U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers" (the '015 Patent). The '015 Patent had issued on August 2, 2022, and OWS had completed its analysis of the applicability of the '015 Patent to Lumicore's products following the April 20, 2023 meeting. The letter described the technology claimed in the '015 Patent and the relevance of the '015 Patent to Lumicore's transceiver products.

(c) The letter expanded the list of accused products to include the LumiLink 800G-DR8 transceiver module, which Lumicore had launched in the first quarter of 2023 and which had been discussed during the April 20, 2023 in-person meeting. The letter identified the LumiLink 800G-DR8 as a product that OWS believed infringed claims of all four identified patents — the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent.

(d) The letter included updated and expanded claim charts mapping specific claim limitations of the '015 Patent to specific features of both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. These claim charts were based on publicly available product specifications and datasheets, as well as on the technical analysis performed by OWS's engineering team.

(e) The letter again invited Lumicore to enter into licensing discussions with OWS on commercially reasonable terms. The letter reiterated OWS's preference for resolving the dispute through a negotiated license rather than through litigation and expressed OWS's continued willingness to engage in good-faith negotiations.

(f) The letter again stated that OWS was prepared to pursue all available legal remedies, including the filing of a patent infringement action in federal court seeking damages and injunctive relief, if a license could not be agreed upon.

37. A true and correct copy of the May 15, 2023 Second Notice Letter is attached hereto as Exhibit 5.

38. Severin Partners LLC delivery confirmation records reflect that the Second Notice Letter was delivered to Lumicore's corporate headquarters at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759 on May 17, 2023. A true and correct copy of the Severin Partners LLC delivery confirmation for the Second Notice Letter is attached hereto as Exhibit 6.

VIII. LUMICORE'S FINAL DECLINATION — JULY 10, 2023

39. On July 10, 2023, I received a letter from Raymond Bautista, General Counsel of Lumicore Technologies, Inc., addressed to me at FairPoint's San Francisco office (the "Declination Letter"). Unlike Lumicore's February 28, 2023 response, which had been sent by outside counsel, the July 10, 2023 Declination Letter was sent directly by Mr. Bautista on Lumicore letterhead.

40. The Declination Letter stated that Lumicore had "carefully considered" the patents and infringement contentions set forth in FairPoint's January 15, 2023 and May 15, 2023 correspondence and in the April 20, 2023 in-person meeting. The Declination Letter stated that Lumicore had obtained "competent legal opinions" concluding that Lumicore's products do not infringe any valid claim of the OWS patents. The Declination Letter stated that, on the basis of these opinions, Lumicore declined to take a license to any of the identified OWS patents.

41. Despite referencing "competent legal opinions," the Declination Letter did not identify the substance of those opinions. It did not state which claims had been analyzed or what conclusions had been reached on a claim-by-claim basis. It did not identify the counsel or firm that had provided the opinions. It did not set forth any specific non-infringement positions, claim construction arguments, or invalidity theories. The Declination Letter was, in substance, a bare assertion that Lumicore did not infringe, coupled with a refusal to engage in further licensing discussions.

42. The Declination Letter did not propose any alternative licensing terms. It did not suggest a royalty rate or licensing structure that Lumicore might find acceptable. It did not request further discussion or negotiation. It did not propose a design-around or any modification to Lumicore's products that might address OWS's infringement contentions. The Declination Letter effectively terminated the licensing dialogue between FairPoint (on behalf of OWS) and Lumicore.

43. I understood the July 10, 2023 Declination Letter as a definitive and unequivocal refusal by Lumicore to engage in licensing negotiations and as a deliberate decision by Lumicore to continue manufacturing and selling the accused products without a license to OWS's patents.

44. A true and correct copy of the July 10, 2023 Declination Letter from Raymond Bautista is attached hereto as Exhibit 7.

IX. POST-DECLINATION DEVELOPMENTS KNOWN TO DECLARANT

45. Following Lumicore's July 10, 2023 Declination Letter, I promptly reported the outcome of the pre-suit licensing process to Rebecca Tanaka, OWS's General Counsel. I recommended that OWS consider litigation to enforce its patent rights against Lumicore, in light of Lumicore's refusal to engage in good-faith licensing negotiations despite extensive notice of OWS's patent portfolio and detailed infringement contentions.

46. I subsequently became aware, through publicly available product announcements and industry trade press, that in the fourth quarter of 2023, Lumicore launched a third product line — the LumiEdge 1600G-LR module — a next-generation long-reach optical transceiver module. Lumicore launched this product despite having been on actual notice of OWS's silicon photonics patent portfolio and of OWS's specific infringement claims since at least January 15, 2023. At the time of the launch of the LumiEdge 1600G-LR, Lumicore had been on notice of four specific OWS patents, had received detailed claim charts mapping those patents to its existing products, and had participated in an in-person licensing meeting at which OWS's infringement theories were presented and discussed in detail.

47. I note that at no point during the entire pre-suit licensing process — from the January 15, 2023 First Notice Letter through the July 10, 2023 Declination Letter — did Lumicore or any of its representatives, including its General Counsel Raymond Bautista and its outside counsel Catherine Rourke of Hawthorne Vega & Cruz LLP, offer to take a license to any OWS patent on any terms. At no point did Lumicore propose a royalty rate, a licensing structure, or any alternative commercial arrangement. At no point did Lumicore suggest a design-around for any of its accused products. At no point did Lumicore indicate any willingness whatsoever to negotiate in good faith toward a license agreement.

48. The entire pre-suit licensing effort conducted by FairPoint on behalf of OWS spanned approximately six months, from January 15, 2023 through July 10, 2023. During this period, FairPoint sent two detailed licensing letters with accompanying claim charts, participated in one in-person licensing meeting, and engaged in multiple follow-up communications with Lumicore's representatives. Throughout this period, OWS acted in good faith and made every reasonable effort to resolve the dispute through a negotiated license. Lumicore, by contrast, showed no interest in engaging substantively with OWS's licensing proposals or in negotiating a commercially reasonable license.

X. SUMMARY OF LUMICORE'S ACTUAL NOTICE

49. Based on my personal knowledge and direct involvement in the pre-suit licensing process described above, and based on my review of business records maintained by FairPoint in the ordinary course of its business, I attest to the following regarding Lumicore's notice and knowledge of OWS's patents and infringement contentions:

(1) Lumicore received and reviewed the January 15, 2023 First Notice Letter, which specifically identified the '847, '193, and '562 Patents by number and title, identified the LumiLink 400G-ZR+ as an accused infringing product, and included detailed claim charts mapping specific claim limitations to specific features of the accused product.

(2) Lumicore retained outside counsel — specifically, the law firm of Hawthorne Vega & Cruz LLP, and partner Catherine "Kate" Rourke — in response to the January 15, 2023 First Notice Letter. The retention of outside litigation counsel demonstrates that Lumicore took OWS's infringement contentions seriously and recognized the significance of the notice it had received, as evidenced by the February 28, 2023 response letter sent by Ms. Rourke on Lumicore's behalf.

(3) Lumicore's General Counsel, Raymond Bautista, and its outside counsel, Catherine "Kate" Rourke, attended an in-person licensing meeting on April 20, 2023, at which I presented detailed claim charts and infringement theories for the '847, '193, and '562 Patents as applied to the LumiLink 400G-ZR+, and at which I identified the LumiLink 800G-DR8 as an additional accused product.

(4) During the April 20, 2023 in-person meeting, Mr. Bautista acknowledged that the patents and claim charts from the January 15, 2023 First Notice Letter had been circulated internally at Lumicore, including to Lumicore's technical personnel. This acknowledgment confirms that Lumicore's knowledge of OWS's patents and infringement contentions was not limited to its legal department but extended to the engineering and product development functions within the company.

(5) Lumicore received and reviewed the May 15, 2023 Second Notice Letter, which identified a fourth patent — the '015 Patent — and expanded the list of accused products to include the LumiLink 800G-DR8. The Second Notice Letter included updated and expanded claim charts mapping the '015 Patent to both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8.

(6) Despite all of the foregoing notice — two detailed licensing letters, an in-person meeting, and the internal circulation of OWS's patents and claim charts — Lumicore continued to manufacture, market, and sell the LumiLink 400G-ZR+ and LumiLink 800G-DR8 transceiver modules without a license to OWS's patents. Furthermore, Lumicore launched a new product, the LumiEdge 1600G-LR, in the fourth quarter of 2023, after having been on notice of OWS's patent portfolio and infringement contentions for approximately nine months.

(7) Lumicore declined to take a license on July 10, 2023, referencing unspecified "competent legal opinions" that purportedly concluded that Lumicore's products do not infringe any valid claim of the OWS patents. Lumicore has refused to produce these opinions in this litigation, and the July 10, 2023 Declination Letter did not identify the substance of the opinions, the identity of the counsel who provided them, or any specific non-infringement or invalidity positions.

XI. AUTHENTICATION OF EXHIBITS

50. The following documents are attached as exhibits to this Declaration. Each exhibit is a true and correct copy of the original document as maintained in FairPoint Licensing Group, LLC's ordinary course of business files. I have personal knowledge of each of these documents, as I either authored them, received them, or caused them to be created or sent in connection with my duties as Managing Director of FairPoint and as licensing agent for OWS.

Exhibit 1: FairPoint Licensing Group, LLC letter to Raymond Bautista, General Counsel, Lumicore Technologies, Inc., dated January 15, 2023 (First Notice Letter).

Exhibit 2: Severin Partners LLC delivery confirmation for Exhibit 1, reflecting delivery to Lumicore Technologies, Inc., 9200 Spectrum Boulevard, Building C, Austin, TX 78759, on January 17, 2023.

Exhibit 3: Hawthorne Vega & Cruz LLP (Catherine "Kate" Rourke) response letter to Angela Reeves, FairPoint Licensing Group, LLC, dated February 28, 2023.

Exhibit 4: Angela Reeves memorandum of the April 20, 2023 in-person licensing meeting, prepared and circulated on April 21, 2023.

Exhibit 5: FairPoint Licensing Group, LLC second letter to Raymond Bautista, General Counsel, Lumicore Technologies, Inc., dated May 15, 2023 (Second Notice Letter).

Exhibit 6: Severin Partners LLC delivery confirmation for Exhibit 5, reflecting delivery to Lumicore Technologies, Inc., 9200 Spectrum Boulevard, Building C, Austin, TX 78759, on May 17, 2023.

Exhibit 7: Raymond Bautista, General Counsel, Lumicore Technologies, Inc., declination letter to Angela Reeves, FairPoint Licensing Group, LLC, dated July 10, 2023.

XII. DECLARATION UNDER PENALTY OF PERJURY

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

Executed at San Francisco, California.

Dated: ________

________________________________________

Angela Reeves Managing Director FairPoint Licensing Group, LLC 500 Sansome Street, Suite 1400 San Francisco, California 94111

EXHIBIT LIST

The following exhibits are appended to the Declaration of Angela Reeves:

Prepared by Calderwood & Harkness LLP (Alan Ngo, Wendy Schultz, Omar Siddiqui) — DRAFT — ATTORNEY WORK PRODUCT / PRIVILEGED

Exhibit No.	Description
Exhibit 1	January 15, 2023 FairPoint Licensing Group, LLC letter to Raymond Bautista, Lumicore Technologies, Inc. (First Notice Letter)
Exhibit 2	Severin Partners LLC Delivery Confirmation — Exhibit 1
Exhibit 3	February 28, 2023 Hawthorne Vega & Cruz LLP (Catherine "Kate" Rourke) Response Letter
Exhibit 4	April 21, 2023 Angela Reeves Meeting Memorandum (re: April 20, 2023 In-Person Licensing Meeting)
Exhibit 5	May 15, 2023 FairPoint Licensing Group, LLC letter to Raymond Bautista, Lumicore Technologies, Inc. (Second Notice Letter)
Exhibit 6	Severin Partners LLC Delivery Confirmation — Exhibit 5
Exhibit 7	July 10, 2023 Raymond Bautista (Lumicore Technologies, Inc.) Declination Letter

DRAFT — ATTORNEY WORK PRODUCT / PRIVILEGED
UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff,
v.
LUMICORE TECHNOLOGIES, INC.,
Defendant.
Case No. 2:24-cv-00319-JRG
DECLARATION OF ANGELA REEVES IN SUPPORT OF PLAINTIFF'S MOTION FOR FINDING OF WILLFUL INFRINGEMENT AND ENHANCED DAMAGES UNDER 35 U.S.C. § 284
I, Angela Reeves, hereby declare the following:
I. INTRODUCTION AND IDENTITY OF DECLARANT
1. My name is Angela Reeves. I am over the age of eighteen (18) and am competent to testify to the matters set forth in this Declaration. I make this Declaration based upon my personal knowledge of the facts stated herein and upon my review of business records maintained by FairPoint Licensing Group, LLC ("FairPoint") in the ordinary course of its business. If called as a witness, I could and would testify competently to the matters set forth below.
2. I am the Managing Director of FairPoint Licensing Group, LLC, a patent licensing advisory firm headquartered at 500 Sansome Street, Suite 1400, San Francisco, California 94111. My business address is the same.
3. I submit this Declaration in support of Plaintiff Optiwave Semiconductor Corp.'s ("OWS" or "Plaintiff") Motion for a Finding of Willful Infringement by Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant") and for Enhanced Damages Under 35 U.S.C. § 284. The purpose of this Declaration is to set forth, in detail, the pre-suit licensing outreach that FairPoint conducted on behalf of OWS directed at Lumicore, the substance and chronology of communications and meetings between FairPoint and Lumicore's representatives, and the nature and extent of Lumicore's actual knowledge of OWS's asserted patents and infringement theories prior to the filing of this action.
II. BACKGROUND AND QUALIFICATIONS OF ANGELA REEVES
4. I have served as Managing Director of FairPoint Licensing Group, LLC since its founding in 2015. FairPoint is a patent licensing advisory firm headquartered in San Francisco, California. FairPoint advises technology companies and patent holders on the monetization and licensing of intellectual property portfolios, with a particular focus on the semiconductor, photonics, and telecommunications sectors. In this capacity, FairPoint conducts market analysis, identifies potential licensees, performs initial infringement assessments, and manages pre-suit licensing outreach campaigns on behalf of its clients.
5. Prior to founding FairPoint, I served as Vice President of Licensing at Photon Bridge Ventures, LLC, a patent acquisition and licensing firm based in Menlo Park, California, from 2010 to 2015. Before that, I held positions in intellectual property licensing and business development at Integrated Photonics, Inc. and at Lux Semiconductor Group, both of which are companies engaged in the design and manufacture of silicon photonic devices and optical transceiver modules. Over the course of my career, I have accumulated more than eighteen (18) years of direct, hands-on experience in patent licensing and technology licensing, with specialized expertise in intellectual property related to semiconductor fabrication processes, silicon photonics, waveguide architectures, optical transceiver design, and integrated photonic circuit technologies.
6. In my capacity as Managing Director of FairPoint, I have led or overseen licensing campaigns involving more than forty (40) patent portfolios and directed outreach to more than two hundred (200) potential licensees across the semiconductor and photonics industries. I am thoroughly familiar with industry-standard licensing practices, including the preparation of notice letters, claim charts, and licensing proposals, as well as the conduct of in-person licensing meetings and negotiations.
7. In or around September 2022, OWS retained FairPoint to serve as its licensing agent for the purpose of conducting pre-suit licensing outreach to potential licensees of OWS's silicon photonics patent portfolio. The scope of FairPoint's engagement encompassed identifying potential infringers of OWS's patents, conducting outreach to those potential infringers, presenting OWS's infringement theories and licensing position, and facilitating licensing discussions with a view toward reaching commercially reasonable license agreements. Lumicore Technologies, Inc. was among the targets identified for licensing outreach.
8. In connection with this engagement, I became thoroughly familiar with the patents at issue in this litigation, including: U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss"; U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate"; U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks"; and U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers" (collectively, the "Asserted Patents"). I reviewed these patents, their prosecution histories, and the claim charts prepared in connection with FairPoint's licensing outreach to Lumicore.
III. OWS'S IDENTIFICATION OF POTENTIAL INFRINGEMENT BY LUMICORE
9. In approximately October 2022, OWS's internal engineering team, led by its Chief Technology Officer, Dr. Jian-Wei Huang, identified potential infringement of OWS's patents by Lumicore Technologies, Inc.'s LumiLink 400G-ZR+ transceiver module. The LumiLink 400G-ZR+ is a coherent optical transceiver module designed for data center interconnect and metro networking applications. Lumicore publicly launched the LumiLink 400G-ZR+ in the third quarter of 2022, and the product was commercially available for purchase at the time of OWS's initial identification of potential infringement.
10. Following OWS's internal engineering team's preliminary identification of potential infringement, OWS's General Counsel, Rebecca Tanaka, referred the matter to FairPoint for licensing outreach. Ms. Tanaka and I conferred regarding the scope of the potential infringement, the relevant patents, and the appropriate strategy for initiating licensing discussions with Lumicore.
11. In November 2022, at OWS's direction and in furtherance of the licensing outreach effort, OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent reverse-engineering laboratory located in Santa Clara, California, to perform a teardown and technical analysis of the LumiLink 400G-ZR+ product. Benchmark is a well-known firm in the semiconductor industry that specializes in physical teardown, imaging, and analysis of semiconductor devices, photonic integrated circuits, and optical modules.
12. On December 12, 2022, Benchmark delivered its teardown report to OWS and FairPoint (the "Benchmark Report"). The Benchmark Report was prepared under the direction of Lead Engineer Kevin Ng. The Benchmark Report included detailed photographic images, cross-sectional analysis, and component-level descriptions of the LumiLink 400G-ZR+ transceiver module. Critically, the Benchmark Report confirmed the presence of accused waveguide multiplexer structures within the LumiLink 400G-ZR+ that corresponded to specific claim elements recited in the '847 Patent. The Benchmark Report also confirmed the presence of thermal management micro-channel heat sink structures within the LumiLink 400G-ZR+ that corresponded to specific claim elements recited in the '562 Patent. Additionally, the Benchmark Report identified integrated coherent optical transceiver architectures on a silicon substrate consistent with the claim limitations of the '193 Patent.
13. I personally reviewed the Benchmark Report in its entirety. Following my review, I conferred with Ms. Tanaka regarding the scope of the licensing outreach to Lumicore. Based on the Benchmark Report and the preliminary infringement analysis conducted by OWS's engineering team, I determined that FairPoint was in a position to send a detailed licensing and notice letter to Lumicore identifying the relevant patents, the accused product, and specific claim-to-product mappings.
IV. FIRST LICENSING / NOTICE LETTER — JANUARY 15, 2023
14. On January 15, 2023, I caused FairPoint Licensing Group, LLC to send a detailed licensing and notice letter (the "First Notice Letter") to Raymond Bautista, General Counsel of Lumicore Technologies, Inc., at Lumicore's corporate headquarters address: 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. The First Notice Letter was sent via Severin Partners LLC overnight delivery, tracking number 7742 8310 4695, and was simultaneously sent via email to Mr. Bautista's corporate email address.
15. The First Notice Letter was a comprehensive, nine-page letter that set forth, in substantial detail, OWS's patent rights and its infringement contentions with respect to Lumicore's LumiLink 400G-ZR+ product. The contents of the First Notice Letter included the following:
(a) The letter identified Optiwave Semiconductor Corp. as the owner of a portfolio of United States patents relating to silicon photonics transceiver and waveguide multiplexing technologies. The letter described OWS's history as a pioneer in the development of silicon photonic integrated circuits and its substantial investment in research and development in this field.
(b) The letter specifically identified three patents by number and title: (i) U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss" (the '847 Patent); (ii) U.S. Patent No. 10,891,193, entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate" (the '193 Patent); and (iii) U.S. Patent No. 9,678,562, entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks" (the '562 Patent).
(c) The letter identified Lumicore's LumiLink 400G-ZR+ transceiver module as a product that FairPoint believed practiced one or more claims of each of the three identified patents. The letter described the LumiLink 400G-ZR+ with reference to Lumicore's own publicly available product datasheets and technical specifications.
(d) The letter included detailed claim charts mapping specific claim limitations of each of the three identified patents to specific features of the LumiLink 400G-ZR+ as identified in the Benchmark teardown report. These claim charts identified, on a claim-by-claim and limitation-by-limitation basis, the correspondence between the claim language of the asserted patent claims and the physical structures, components, and design features observed in the LumiLink 400G-ZR+ product.
(e) The letter invited Lumicore to enter into licensing discussions with OWS on commercially reasonable terms. The letter expressed OWS's preference for resolving the matter through a negotiated license rather than through litigation.
(f) The letter stated that OWS was prepared to pursue all available legal remedies, including the filing of a patent infringement action in federal court, if a license could not be agreed upon within a reasonable time frame.
16. A true and correct copy of the January 15, 2023 First Notice Letter is attached hereto as Exhibit 1.
17. Severin Partners LLC delivery confirmation records reflect that the First Notice Letter was delivered to Lumicore's corporate headquarters at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759 on January 17, 2023, and was signed for by an individual at Lumicore's reception desk. A true and correct copy of the Severin Partners LLC delivery confirmation for the First Notice Letter is attached hereto as Exhibit 2.
V. LUMICORE'S RESPONSE — FEBRUARY 28, 2023
18. On February 28, 2023, I received a written response to the First Notice Letter. The response was sent not by Raymond Bautista, General Counsel of Lumicore, directly, but rather by Catherine "Kate" Rourke, a partner at the law firm of Hawthorne Vega & Cruz LLP, located at 600 Congress Avenue, Suite 2400, Austin, Texas 78701. Ms. Rourke's letter identified her as outside litigation counsel for Lumicore Technologies, Inc. and stated that she had been engaged by Lumicore to respond to FairPoint's January 15, 2023 correspondence on Lumicore's behalf.
19. The response letter from Ms. Rourke disputed, in general terms, that any Lumicore product infringed any valid claim of the identified OWS patents. The letter stated that Lumicore's technical team had reviewed FairPoint's correspondence and that Lumicore disagreed with OWS's infringement contentions. The response letter also questioned the validity of the identified patents, asserting that there existed prior art that would render the claims of the identified patents invalid. However, the response letter did not identify any specific prior art references, did not specify which claims it contended were invalid, and did not articulate any specific invalidity theory.
20. Critically, the response letter did not deny that Lumicore had received and reviewed the January 15, 2023 First Notice Letter, the identified patents, or the accompanying claim charts. To the contrary, the response letter's substantive engagement with OWS's infringement contentions — including its statement that Lumicore's "technical team" had reviewed the correspondence — confirmed that Lumicore had, in fact, received and reviewed the First Notice Letter and its enclosures.
21. The response letter did not request any additional technical information from FairPoint or OWS. The response letter did not express any interest in entering into licensing discussions or in exploring the possibility of a negotiated license agreement. The tone and substance of the response letter suggested that Lumicore had no intention of engaging in good-faith licensing negotiations.
22. A true and correct copy of the February 28, 2023 response letter from Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP is attached hereto as Exhibit 3.
VI. IN-PERSON LICENSING MEETING — APRIL 20, 2023
23. Despite Lumicore's initial response disputing infringement, I continued to pursue licensing discussions on behalf of OWS. I communicated with Ms. Rourke by email and by telephone on several occasions in March 2023 and proposed that an in-person meeting be held to discuss the patents and accused products in greater detail. I believed that a face-to-face meeting would afford both parties the opportunity to engage substantively with the technical and legal issues and potentially advance licensing discussions.
24. Ms. Rourke agreed, on behalf of Lumicore, to participate in an in-person licensing meeting. The meeting was scheduled for April 20, 2023 and was held in Austin, Texas, at the offices of Hawthorne Vega & Cruz LLP, located at 600 Congress Avenue, Suite 2400, Austin, Texas 78701. The meeting took place in a conference room at the firm's offices and lasted approximately two and a half hours, commencing at approximately 10:00 a.m. Central Time and concluding at approximately 12:30 p.m. Central Time.
25. The following individuals attended the April 20, 2023 meeting:
On behalf of OWS and FairPoint:
• Angela Reeves, Managing Director, FairPoint Licensing Group, LLC
• Rebecca Tanaka, General Counsel, Optiwave Semiconductor Corp.
On behalf of Lumicore:
• Raymond Bautista, General Counsel, Lumicore Technologies, Inc.
• Catherine "Kate" Rourke, Partner, Hawthorne Vega & Cruz LLP (outside counsel for Lumicore)
26. During the April 20, 2023 meeting, I presented a detailed technical overview of OWS's patent portfolio, with a focus on the three patents that had been identified in the January 15, 2023 First Notice Letter: the '847 Patent, the '193 Patent, and the '562 Patent. My presentation included a discussion of the technology described and claimed in each patent, the scope of the asserted claims, and the significance of the inventions in the context of the silicon photonics transceiver industry.
27. I walked through representative claim charts in detail during the meeting, showing how specific claim limitations of each of the three identified patents mapped to specific features and structures of the LumiLink 400G-ZR+ transceiver module as observed and documented in the Benchmark teardown report. I provided hard copies of the claim charts to Mr. Bautista and Ms. Rourke during the meeting, and I addressed questions from both attendees regarding the claim-to-product mappings.
28. During the meeting, I also discussed the LumiLink 800G-DR8 product, which Lumicore had publicly launched in the first quarter of 2023. I expressed OWS's belief, based on publicly available product datasheets and technical specifications, that the LumiLink 800G-DR8 also practiced claims of the same three patents identified in the First Notice Letter. I informed Mr. Bautista and Ms. Rourke that OWS's infringement contentions extended to the LumiLink 800G-DR8 in addition to the LumiLink 400G-ZR+.
29. I proposed, on behalf of OWS, a royalty-bearing license on commercially reasonable terms that would cover the full portfolio of asserted patents and all accused products, including both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. I indicated that OWS was willing to engage in a structured negotiation process to arrive at mutually agreeable licensing terms and that OWS was open to discussing various licensing structures, including per-unit royalties, lump-sum payments, or a combination thereof.
30. During the meeting, Mr. Bautista made a statement that I found significant and that I recorded in my contemporaneous notes. Specifically, Mr. Bautista acknowledged that the patents and claim charts from the January 15, 2023 First Notice Letter had been circulated internally at Lumicore. Mr. Bautista stated words to the effect that "our technical people have looked at these" and that Lumicore's engineering team had reviewed the identified patents and the claim charts. This acknowledgment confirmed that Lumicore had, in fact, disseminated the substance of OWS's infringement contentions to its internal technical personnel.
31. Despite this acknowledgment, Mr. Bautista and Ms. Rourke maintained throughout the meeting that Lumicore's products did not infringe any valid claims of the identified patents. However, neither Mr. Bautista nor Ms. Rourke provided any specific non-infringement positions during the meeting. They did not identify any specific claim limitations that they contended were not met by the accused products. They did not present any claim construction arguments. They did not identify any specific prior art references or articulate any specific invalidity theories. Their position throughout the meeting remained a blanket denial of infringement and a general assertion of invalidity, without any substantive support.
32. Perhaps most significantly, Lumicore's representatives showed no interest in negotiating a license. Mr. Bautista and Ms. Rourke did not propose any counter-terms to OWS's licensing proposal. They did not suggest an alternative royalty rate or licensing structure. They did not request additional time to evaluate the patents or the infringement contentions. They did not suggest a follow-up meeting. They did not identify any additional technical information or analysis that they would need in order to evaluate OWS's licensing proposal. Based on my extensive experience in patent licensing negotiations, I characterized Lumicore's approach as reflecting "no interest in negotiating." It was my assessment that Lumicore's representatives had already formed their position prior to the meeting and attended the meeting solely as a formality, with no genuine intention of engaging in good-faith licensing discussions.
33. On April 21, 2023, the day after the in-person meeting, I prepared a contemporaneous memorandum summarizing the substance of the April 20, 2023 meeting, including the statements made by all participants, the materials presented, and my observations regarding Lumicore's apparent position and level of interest in licensing. I circulated this memorandum to Rebecca Tanaka, OWS's General Counsel, on the same day.
34. A true and correct copy of my April 21, 2023 meeting memorandum is attached hereto as Exhibit 4.
VII. SECOND LICENSING / NOTICE LETTER — MAY 15, 2023
35. Following the in-person meeting and OWS's continued technical analysis of Lumicore's products, on May 15, 2023, I caused FairPoint Licensing Group, LLC to send a second detailed licensing and notice letter (the "Second Notice Letter") to Raymond Bautista, General Counsel of Lumicore Technologies, Inc., at Lumicore's corporate headquarters address: 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. As with the First Notice Letter, the Second Notice Letter was sent via Severin Partners LLC overnight delivery, tracking number 7742 8310 5829, and was simultaneously sent via email to Mr. Bautista's corporate email address.
36. The Second Notice Letter was a twelve-page letter that expanded upon the First Notice Letter in several important respects. The contents of the Second Notice Letter included the following:
(a) The letter reiterated the three patents that had been identified in the January 15, 2023 First Notice Letter: the '847 Patent, the '193 Patent, and the '562 Patent. The letter incorporated by reference the claim charts that had been provided with the First Notice Letter and that had been presented in detail during the April 20, 2023 in-person meeting.
(b) The letter identified a fourth patent: U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers" (the '015 Patent). The '015 Patent had issued on August 2, 2022, and OWS had completed its analysis of the applicability of the '015 Patent to Lumicore's products following the April 20, 2023 meeting. The letter described the technology claimed in the '015 Patent and the relevance of the '015 Patent to Lumicore's transceiver products.
(c) The letter expanded the list of accused products to include the LumiLink 800G-DR8 transceiver module, which Lumicore had launched in the first quarter of 2023 and which had been discussed during the April 20, 2023 in-person meeting. The letter identified the LumiLink 800G-DR8 as a product that OWS believed infringed claims of all four identified patents — the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent.
(d) The letter included updated and expanded claim charts mapping specific claim limitations of the '015 Patent to specific features of both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. These claim charts were based on publicly available product specifications and datasheets, as well as on the technical analysis performed by OWS's engineering team.
(e) The letter again invited Lumicore to enter into licensing discussions with OWS on commercially reasonable terms. The letter reiterated OWS's preference for resolving the dispute through a negotiated license rather than through litigation and expressed OWS's continued willingness to engage in good-faith negotiations.
(f) The letter again stated that OWS was prepared to pursue all available legal remedies, including the filing of a patent infringement action in federal court seeking damages and injunctive relief, if a license could not be agreed upon.
37. A true and correct copy of the May 15, 2023 Second Notice Letter is attached hereto as Exhibit 5.
38. Severin Partners LLC delivery confirmation records reflect that the Second Notice Letter was delivered to Lumicore's corporate headquarters at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759 on May 17, 2023. A true and correct copy of the Severin Partners LLC delivery confirmation for the Second Notice Letter is attached hereto as Exhibit 6.
VIII. LUMICORE'S FINAL DECLINATION — JULY 10, 2023
39. On July 10, 2023, I received a letter from Raymond Bautista, General Counsel of Lumicore Technologies, Inc., addressed to me at FairPoint's San Francisco office (the "Declination Letter"). Unlike Lumicore's February 28, 2023 response, which had been sent by outside counsel, the July 10, 2023 Declination Letter was sent directly by Mr. Bautista on Lumicore letterhead.
40. The Declination Letter stated that Lumicore had "carefully considered" the patents and infringement contentions set forth in FairPoint's January 15, 2023 and May 15, 2023 correspondence and in the April 20, 2023 in-person meeting. The Declination Letter stated that Lumicore had obtained "competent legal opinions" concluding that Lumicore's products do not infringe any valid claim of the OWS patents. The Declination Letter stated that, on the basis of these opinions, Lumicore declined to take a license to any of the identified OWS patents.
41. Despite referencing "competent legal opinions," the Declination Letter did not identify the substance of those opinions. It did not state which claims had been analyzed or what conclusions had been reached on a claim-by-claim basis. It did not identify the counsel or firm that had provided the opinions. It did not set forth any specific non-infringement positions, claim construction arguments, or invalidity theories. The Declination Letter was, in substance, a bare assertion that Lumicore did not infringe, coupled with a refusal to engage in further licensing discussions.
42. The Declination Letter did not propose any alternative licensing terms. It did not suggest a royalty rate or licensing structure that Lumicore might find acceptable. It did not request further discussion or negotiation. It did not propose a design-around or any modification to Lumicore's products that might address OWS's infringement contentions. The Declination Letter effectively terminated the licensing dialogue between FairPoint (on behalf of OWS) and Lumicore.
43. I understood the July 10, 2023 Declination Letter as a definitive and unequivocal refusal by Lumicore to engage in licensing negotiations and as a deliberate decision by Lumicore to continue manufacturing and selling the accused products without a license to OWS's patents.
44. A true and correct copy of the July 10, 2023 Declination Letter from Raymond Bautista is attached hereto as Exhibit 7.
IX. POST-DECLINATION DEVELOPMENTS KNOWN TO DECLARANT
45. Following Lumicore's July 10, 2023 Declination Letter, I promptly reported the outcome of the pre-suit licensing process to Rebecca Tanaka, OWS's General Counsel. I recommended that OWS consider litigation to enforce its patent rights against Lumicore, in light of Lumicore's refusal to engage in good-faith licensing negotiations despite extensive notice of OWS's patent portfolio and detailed infringement contentions.
46. I subsequently became aware, through publicly available product announcements and industry trade press, that in the fourth quarter of 2023, Lumicore launched a third product line — the LumiEdge 1600G-LR module — a next-generation long-reach optical transceiver module. Lumicore launched this product despite having been on actual notice of OWS's silicon photonics patent portfolio and of OWS's specific infringement claims since at least January 15, 2023. At the time of the launch of the LumiEdge 1600G-LR, Lumicore had been on notice of four specific OWS patents, had received detailed claim charts mapping those patents to its existing products, and had participated in an in-person licensing meeting at which OWS's infringement theories were presented and discussed in detail.
47. I note that at no point during the entire pre-suit licensing process — from the January 15, 2023 First Notice Letter through the July 10, 2023 Declination Letter — did Lumicore or any of its representatives, including its General Counsel Raymond Bautista and its outside counsel Catherine Rourke of Hawthorne Vega & Cruz LLP, offer to take a license to any OWS patent on any terms. At no point did Lumicore propose a royalty rate, a licensing structure, or any alternative commercial arrangement. At no point did Lumicore suggest a design-around for any of its accused products. At no point did Lumicore indicate any willingness whatsoever to negotiate in good faith toward a license agreement.
48. The entire pre-suit licensing effort conducted by FairPoint on behalf of OWS spanned approximately six months, from January 15, 2023 through July 10, 2023. During this period, FairPoint sent two detailed licensing letters with accompanying claim charts, participated in one in-person licensing meeting, and engaged in multiple follow-up communications with Lumicore's representatives. Throughout this period, OWS acted in good faith and made every reasonable effort to resolve the dispute through a negotiated license. Lumicore, by contrast, showed no interest in engaging substantively with OWS's licensing proposals or in negotiating a commercially reasonable license.
X. SUMMARY OF LUMICORE'S ACTUAL NOTICE
49. Based on my personal knowledge and direct involvement in the pre-suit licensing process described above, and based on my review of business records maintained by FairPoint in the ordinary course of its business, I attest to the following regarding Lumicore's notice and knowledge of OWS's patents and infringement contentions:
(1) Lumicore received and reviewed the January 15, 2023 First Notice Letter, which specifically identified the '847, '193, and '562 Patents by number and title, identified the LumiLink 400G-ZR+ as an accused infringing product, and included detailed claim charts mapping specific claim limitations to specific features of the accused product.
(2) Lumicore retained outside counsel — specifically, the law firm of Hawthorne Vega & Cruz LLP, and partner Catherine "Kate" Rourke — in response to the January 15, 2023 First Notice Letter. The retention of outside litigation counsel demonstrates that Lumicore took OWS's infringement contentions seriously and recognized the significance of the notice it had received, as evidenced by the February 28, 2023 response letter sent by Ms. Rourke on Lumicore's behalf.
(3) Lumicore's General Counsel, Raymond Bautista, and its outside counsel, Catherine "Kate" Rourke, attended an in-person licensing meeting on April 20, 2023, at which I presented detailed claim charts and infringement theories for the '847, '193, and '562 Patents as applied to the LumiLink 400G-ZR+, and at which I identified the LumiLink 800G-DR8 as an additional accused product.
(4) During the April 20, 2023 in-person meeting, Mr. Bautista acknowledged that the patents and claim charts from the January 15, 2023 First Notice Letter had been circulated internally at Lumicore, including to Lumicore's technical personnel. This acknowledgment confirms that Lumicore's knowledge of OWS's patents and infringement contentions was not limited to its legal department but extended to the engineering and product development functions within the company.
(5) Lumicore received and reviewed the May 15, 2023 Second Notice Letter, which identified a fourth patent — the '015 Patent — and expanded the list of accused products to include the LumiLink 800G-DR8. The Second Notice Letter included updated and expanded claim charts mapping the '015 Patent to both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8.
(6) Despite all of the foregoing notice — two detailed licensing letters, an in-person meeting, and the internal circulation of OWS's patents and claim charts — Lumicore continued to manufacture, market, and sell the LumiLink 400G-ZR+ and LumiLink 800G-DR8 transceiver modules without a license to OWS's patents. Furthermore, Lumicore launched a new product, the LumiEdge 1600G-LR, in the fourth quarter of 2023, after having been on notice of OWS's patent portfolio and infringement contentions for approximately nine months.
(7) Lumicore declined to take a license on July 10, 2023, referencing unspecified "competent legal opinions" that purportedly concluded that Lumicore's products do not infringe any valid claim of the OWS patents. Lumicore has refused to produce these opinions in this litigation, and the July 10, 2023 Declination Letter did not identify the substance of the opinions, the identity of the counsel who provided them, or any specific non-infringement or invalidity positions.
XI. AUTHENTICATION OF EXHIBITS
50. The following documents are attached as exhibits to this Declaration. Each exhibit is a true and correct copy of the original document as maintained in FairPoint Licensing Group, LLC's ordinary course of business files. I have personal knowledge of each of these documents, as I either authored them, received them, or caused them to be created or sent in connection with my duties as Managing Director of FairPoint and as licensing agent for OWS.
Exhibit 1: FairPoint Licensing Group, LLC letter to Raymond Bautista, General Counsel, Lumicore Technologies, Inc., dated January 15, 2023 (First Notice Letter).
Exhibit 2: Severin Partners LLC delivery confirmation for Exhibit 1, reflecting delivery to Lumicore Technologies, Inc., 9200 Spectrum Boulevard, Building C, Austin, TX 78759, on January 17, 2023.
Exhibit 3: Hawthorne Vega & Cruz LLP (Catherine "Kate" Rourke) response letter to Angela Reeves, FairPoint Licensing Group, LLC, dated February 28, 2023.
Exhibit 4: Angela Reeves memorandum of the April 20, 2023 in-person licensing meeting, prepared and circulated on April 21, 2023.
Exhibit 5: FairPoint Licensing Group, LLC second letter to Raymond Bautista, General Counsel, Lumicore Technologies, Inc., dated May 15, 2023 (Second Notice Letter).
Exhibit 6: Severin Partners LLC delivery confirmation for Exhibit 5, reflecting delivery to Lumicore Technologies, Inc., 9200 Spectrum Boulevard, Building C, Austin, TX 78759, on May 17, 2023.
Exhibit 7: Raymond Bautista, General Counsel, Lumicore Technologies, Inc., declination letter to Angela Reeves, FairPoint Licensing Group, LLC, dated July 10, 2023.
XII. DECLARATION UNDER PENALTY OF PERJURY
I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.
Executed at San Francisco, California.
Dated: ________
________________________________________
Angela Reeves Managing Director FairPoint Licensing Group, LLC 500 Sansome Street, Suite 1400 San Francisco, California 94111
EXHIBIT LIST
The following exhibits are appended to the Declaration of Angela Reeves:
Prepared by Calderwood & Harkness LLP (Alan Ngo, Wendy Schultz, Omar Siddiqui) — DRAFT — ATTORNEY WORK PRODUCT / PRIVILEGED
Exhibit No. | Description
Exhibit 1 | January 15, 2023 FairPoint Licensing Group, LLC letter to Raymond Bautista, Lumicore Technologies, Inc. (First Notice Letter)
Exhibit 2 | Severin Partners LLC Delivery Confirmation — Exhibit 1
Exhibit 3 | February 28, 2023 Hawthorne Vega & Cruz LLP (Catherine "Kate" Rourke) Response Letter
Exhibit 4 | April 21, 2023 Angela Reeves Meeting Memorandum (re: April 20, 2023 In-Person Licensing Meeting)
Exhibit 5 | May 15, 2023 FairPoint Licensing Group, LLC letter to Raymond Bautista, Lumicore Technologies, Inc. (Second Notice Letter)
Exhibit 6 | Severin Partners LLC Delivery Confirmation — Exhibit 5
Exhibit 7 | July 10, 2023 Raymond Bautista (Lumicore Technologies, Inc.) Declination Letter