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

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CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071

ATTORNEY WORK PRODUCT — PRIVILEGED AND CONFIDENTIAL This document is protected by the attorney-client privilege and/or the work product doctrine. It was prepared by counsel in anticipation of litigation and reflects the mental impressions, conclusions, opinions, and legal theories of the attorneys. This document is not to be disclosed to any person outside the case team without the express written consent of Alan Ngo, Partner, Calderwood & Harkness LLP.

TIMELINE OF NOTICE AND WILLFULNESS EVIDENCE

Purpose: This memorandum provides a chronological compilation and analysis of all evidence supporting Optiwave Semiconductor Corp.'s ("OWS") willful infringement allegations against Lumicore Technologies, Inc. ("Lumicore") under the framework established by Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016). It is intended to serve as a working reference document for complaint drafting, discovery planning, and eventual motion practice on willful infringement and enhanced damages under 35 U.S.C. § 284. This document should be read in conjunction with the Willful Infringement Memorandum (internal, April 10, 2024), the Willful Infringement Damages Scenario Analysis (internal, April 15, 2024), and the forthcoming Read Factor Analysis for Enhanced Damages (target May 2025).

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I. EXECUTIVE SUMMARY

OWS's willful infringement theory against Lumicore rests on a straightforward factual narrative: Lumicore had actual knowledge of OWS's patents, was put on repeated formal notice of infringement through multiple channels and over an extended period, and nevertheless continued to manufacture, sell, and launch new infringing products — including entirely new product lines — without conducting any meaningful design-around analysis and without ever engaging in good-faith licensing discussions. This is precisely the type of egregious, culpable conduct that the Supreme Court identified in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), as warranting enhanced damages under 35 U.S.C. § 284.

Under the Halo standard, the inquiry into willful infringement focuses on subjective willfulness and is governed by a totality-of-the-circumstances analysis. The Supreme Court rejected the rigid two-part test of In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), and held that enhanced damages are reserved for egregious cases of culpable behavior — willful, wanton, or in bad faith. The relevant question is whether the infringer acted despite an objectively high likelihood that its actions constituted patent infringement, and whether this risk was either known or so obvious that it should have been known. District courts retain broad discretion in awarding enhanced damages, and the applicable standard of proof is preponderance of the evidence.

The evidence timeline assembled in this memorandum spans from OWS's initial identification of infringement in October 2022 through the filing of the complaint on April 22, 2024, and includes subsequent deposition testimony and discovery developments through early 2025. The timeline encompasses the following key elements:

Asserted Patents: OWS has asserted four United States patents against Lumicore:

• U.S. Patent No. 10,234,847 (the "'847 Patent")

• U.S. Patent No. 10,891,193 (the "'193 Patent")

• U.S. Patent No. 9,678,562 (the "'562 Patent")

• U.S. Patent No. 11,402,015 (the "'015 Patent")

Accused Product Lines: Three Lumicore transceiver product lines are accused of infringement:

• LumiLink 400G-ZR+

• LumiLink 800G-DR8

• LumiEdge 1600G-LR

Financial Magnitude: The total accused-product revenue through the projected trial date (covering the period from Q3 2022 through Q4 2025) is approximately $714.6 million. Post-notice lost profits, calculated from the operative notice date of January 15, 2023 forward, are approximately $109.2 million. The enhanced damages component of OWS's case is a critical driver of the overall $210 million damages demand stated in the complaint. As detailed in Section VII below, enhancement scenarios ranging from 1.5× to 3× the post-notice lost profits yield additional damages exposure of between $54.6 million and $218.4 million. The complaint's aggregate $210 million demand incorporates a blended, conservative view of the willful enhancement component (approximately $43.6 million in selected enhancement), reflecting litigation risk and the need for a defensible demand figure at the pleading stage.

The strength of OWS's willfulness case is built on multiple, mutually reinforcing categories of evidence, including: (1) two formal notice letters identifying all four patents and two of three accused products; (2) a face-to-face licensing meeting at which Lumicore's General Counsel and outside counsel were personally confronted with the infringement allegations; (3) Lumicore's deliberate refusal to license, accompanied by a reference to undisclosed "competent legal opinions"; (4) the launch of two new accused products after receipt of formal notice; (5) the absence of any design-around analysis before the launch of the LumiEdge 1600G-LR; and (6) evidence — from both a former Lumicore engineer and Lumicore's own CTO — that the LumiLink 400G-ZR+ design team reviewed OWS's published patent applications during the product design phase in 2021–2022, establishing pre-notice knowledge of OWS's intellectual property.

II. LEGAL FRAMEWORK FOR WILLFUL INFRINGEMENT

A. The *Halo Electronics* Standard

In Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), the Supreme Court fundamentally reshaped the law governing enhanced damages for patent infringement. The Court rejected the two-part test established by the Federal Circuit in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), which had required a patent holder to prove both (1) an "objectively high likelihood" of infringement and (2) that the objective risk was "known or so obvious that it should have been known to the accused infringer." Seagate, 497 F.3d at 1371. Under Seagate, the burden of proof was clear and convincing evidence, and the objective prong was assessed on a purely objective basis without reference to the infringer's subjective knowledge.

The Supreme Court in Halo held that the Seagate test was unduly rigid and inconsistent with the broad discretion that Section 284 vests in district courts. The Court confirmed that 35 U.S.C. § 284 authorizes the court to "increase the damages up to three times the amount found or assessed," and that this provision gives district courts discretion to award enhanced damages in cases of egregious infringement behavior. Halo, 579 U.S. at 103–04. The Court emphasized that enhanced damages are "not to be meted out in a typical infringement case" but rather are "designed as a punitive or vindictive sanction for egregious infringement behavior." Id. at 103 (quoting Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014)).

Under the Halo framework, the standard of proof for willful infringement was reduced from clear and convincing evidence to preponderance of the evidence. Id. at 112. The inquiry is now a totality-of-the-circumstances analysis that focuses on the culpability of the infringer's conduct. The Court identified willful, wanton, and bad-faith infringement as the paradigmatic cases warranting enhanced damages, and it emphasized that the "subjective willfulness of a patent infringer, intentional or knowing," is the focus of the inquiry. Id. at 105. At the same time, the Court cautioned that "none of this is to say that enhanced damages must follow a finding of egregious misconduct" — the decision remains within the district court's discretion. Id. at 110.

Critically, the Halo decision also eliminated the Seagate requirement that the objective recklessness inquiry be conducted without reference to the infringer's subjective state of mind. Under Halo, courts may consider all relevant evidence — including the infringer's knowledge, notice, and post-notice conduct — in assessing whether enhanced damages are warranted.

B. Key Factors Courts Consider

In the wake of Halo, district courts have continued to apply a multi-factor analysis in assessing willful infringement and enhanced damages. While the precise formulation varies by circuit and district, courts in the Eastern District of Texas and elsewhere have consistently identified the following categories of evidence as relevant to the willfulness inquiry:

1. Notice of the patent(s) and specific infringement allegations. Whether the infringer was put on notice of the asserted patents and the specific basis for the infringement allegations — through cease-and-desist letters, licensing correspondence, published patent applications, or other communications — is among the most important factors in the analysis. Actual notice of the patents is often treated as a threshold requirement for a finding of willfulness, though constructive notice through marking or publication may also be relevant.

2. Investigation and advice of counsel. Whether the infringer investigated the matter upon receiving notice, or obtained competent legal advice regarding infringement, validity, and enforceability, is a significant factor. An infringer that receives notice and takes no steps to evaluate the allegations acts at its peril.

3. Continued or expanded infringing activity after notice. Courts view post-notice continuation or expansion of infringing activity as strong evidence of willfulness. The launch of new infringing products after notice is particularly probative, as it demonstrates an affirmative, deliberate decision to proceed with infringing conduct rather than merely a failure to cease existing activity.

4. Design-around efforts. Whether the infringer made good-faith efforts to design around the asserted patents is relevant to the question of culpability. The absence of any design-around analysis — particularly before launching new products — supports an inference of willful disregard.

5. Concealment or destruction of evidence. Spoliation, concealment, or deliberate destruction of evidence bearing on the infringer's knowledge and intent is a significant aggravating factor. While not alleged in this case at present, the ongoing document review may reveal evidence of concealment or selective production.

6. Closeness of the case on the merits. Where the infringement case is strong and the defenses are weak, willfulness is more readily established. Conversely, a close case on the merits — particularly on validity — may weigh against a finding of willfulness. The strength of OWS's infringement case and the weakness of Lumicore's invalidity defenses are addressed in separate memoranda.

7. The nine *Read* factors. Many district courts, including courts in the Eastern District of Texas, continue to apply the nine factors identified in Read Corp. v. Portec, Inc., 970 F.2d 816, 826–27 (Fed. Cir. 1992), as a framework for analyzing enhanced damages. These factors include: (i) whether the infringer deliberately copied the patented invention; (ii) whether the infringer investigated the scope of the patent and formed a good-faith belief of invalidity or non-infringement; (iii) the infringer's behavior as a party to the litigation; (iv) the infringer's size and financial condition; (v) the closeness of the case; (vi) the duration of the infringement; (vii) the infringer's remedial action; (viii) the infringer's motivation for harm; and (ix) whether the infringer attempted to conceal its misconduct. A detailed Read factor analysis will be prepared in a separate memorandum (target: May 2025).

C. Relevance of Advice of Counsel

In the post-Halo landscape, the failure to obtain an opinion of counsel is not dispositive of willfulness. The Supreme Court specifically rejected the notion that the absence of an opinion letter creates an automatic presumption of willfulness. Halo, 579 U.S. at 108–09. Nevertheless, the existence (or absence) of opinions of counsel remains a relevant — and often significant — factor in the totality-of-the-circumstances analysis.

In this case, Lumicore referenced "competent legal opinions" in its July 10, 2023 declination letter to FairPoint, but it has asserted attorney-client privilege over the substance of those opinions and has declined to produce them in discovery. OWS filed a Motion to Compel production of the opinion letters on October 21, 2024 (Docket Entry pending), arguing that Lumicore waived the privilege by affirmatively referencing the opinions in its correspondence and by potentially relying on an advice-of-counsel defense. The outcome of this motion will materially affect the strength of OWS's willfulness case.

If Lumicore produces the opinion letters and they reflect a reasonable, good-faith basis for non-infringement, the willfulness case becomes more difficult — though not impossible — to prove. Under Halo, opinions of counsel are considered but are not dispositive, and an opinion letter that is cursory, formulaic, or obtained post hoc may actually strengthen the willfulness case by demonstrating that the infringer sought to create a paper trail rather than genuinely investigate the merits.

If Lumicore maintains its privilege assertion and does not affirmatively rely on an advice-of-counsel defense at trial, OWS may argue that a negative inference is appropriate — i.e., that the jury should be permitted to infer that the opinions either do not exist or do not support a credible non-infringement position. The availability of such an inference is contested in the case law, but the better-reasoned authorities support the inference in circumstances where, as here, the infringer has affirmatively referenced the opinions in pre-suit correspondence. See, e.g., Westvale Holdings. v. Pemberton Corporation, 543 F.3d 683, 699 (Fed. Cir. 2008) (noting that the failure to obtain competent legal advice "tends to show that its infringement was willful").

III. CHRONOLOGICAL TIMELINE OF EVIDENCE

The following timeline sets forth, in chronological order, each material event, communication, product launch, and deposition admission bearing on OWS's willful infringement theory against Lumicore. Each entry identifies the date, the event, the relevant evidence, and the significance of the event for the willfulness analysis. Cross-references to the evidentiary sources compiled in Section V are provided where appropriate.

A. Pre-Notice Period: Background and OWS's discovery of Infringement

Entry 1: Q3 2022 — Lumicore Launches LumiLink 400G-ZR+. In the third quarter of 2022, Lumicore Technologies, Inc. (headquartered at 9200 Spectrum Boulevard, Building C, Austin, TX 78759) launched its LumiLink 400G-ZR+ coherent transceiver module. This product represented Lumicore's first commercial entry into the high-bandwidth coherent transceiver market and was positioned as a competitor to OWS's existing coherent transceiver product line. The launch occurred approximately six months after Lumicore's initial public offering on the Nasdaq exchange in March 2022, at an offering price of $24.00 per share. The LumiLink 400G-ZR+ generated fiscal year 2023 revenue of approximately $94.8 million, making it a significant commercial product for Lumicore during the relevant infringement period.

The LumiLink 400G-ZR+ is accused of infringing three of the four asserted patents: the '847 Patent, the '193 Patent, and the '562 Patent. The infringement allegations relate to the product's use of waveguide multiplexer structures (relevant to the '847 Patent), coherent transceiver architecture integrated on a silicon substrate (relevant to the '193 Patent), and thermal management micro-channel heat-sink configurations (relevant to the '562 Patent).

Significance for willfulness: The launch of the LumiLink 400G-ZR+ in Q3 2022 establishes the beginning of the infringement period. While Lumicore had not yet received formal notice of OWS's patents at the time of the commercial launch, this entry must be read in conjunction with Entry 12 below (regarding the design-phase awareness evidence from Melissa Chen and Dr. Sandra Michaud), which supports the argument that infringement was knowing from the outset. Combined with the later evidence of design-phase awareness, the Q3 2022 launch date is significant because it demonstrates that the infringement was not merely inadvertent but rather the product of a deliberate design process undertaken with knowledge of OWS's published patent applications.

Entry 2: October 2022 — OWS Engineering Team Identifies Potential Infringement. In October 2022, OWS's internal engineering team, under the direction of Dr. Nikolai Petrov (Vice President of Engineering, Photonics Division), identified potential infringement of OWS's patent portfolio by Lumicore's LumiLink 400G-ZR+ transceiver module. Dr. Petrov's team conducted an initial technical evaluation of the LumiLink 400G-ZR+ based on publicly available product specifications, datasheets, and marketing materials. Upon identifying structural and functional similarities between the LumiLink 400G-ZR+ and the inventions claimed in OWS's patent portfolio, the matter was referred to Rebecca Tanaka, OWS General Counsel, at OWS's headquarters located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, CA 95054.

The internal OWS communications documenting this initial identification of potential infringement were produced in discovery. These communications include email exchanges between Dr. Petrov and Ms. Tanaka, as well as internal technical memoranda summarizing the preliminary infringement analysis. While these documents reflect OWS's own internal processes rather than Lumicore's knowledge, they establish the factual predicate for OWS's subsequent investigation and the retention of Benchmark Semiconductor Analysis for a formal teardown.

Entry 3: November 2022 — OWS Retains Benchmark Semiconductor Analysis for Teardown. In November 2022, following the October 2022 internal identification of potential infringement, OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark") (located at 2244 Mission College Boulevard, Santa Clara, CA 95054) to perform a detailed teardown and reverse-engineering analysis of a commercially purchased LumiLink 400G-ZR+ unit. The engagement was managed by Kevin Ng, Lead Engineer at Benchmark, who has over fifteen years of experience in semiconductor device characterization and reverse engineering. The purpose of the teardown was to confirm whether the LumiLink 400G-ZR+ incorporates structures and methods covered by OWS's patent portfolio, with a specific focus on the claims of the '847 Patent and the '562 Patent.

The teardown analysis involved the physical decapsulation of a commercially purchased LumiLink 400G-ZR+ unit, cross-sectional imaging using scanning electron microscopy (SEM) and focused ion beam (FIB) techniques, and detailed mapping of the internal structures to the claim limitations of the asserted patents. The Benchmark engagement was conducted under the direction and supervision of OWS's in-house counsel and outside patent counsel, and the resulting report was prepared at the direction of counsel in anticipation of licensing discussions and potential litigation.

Entry 4: December 12, 2022 — Benchmark Teardown Report Delivered. On December 12, 2022, Benchmark delivered its completed teardown report to OWS. The report confirmed that the LumiLink 400G-ZR+ incorporates the accused waveguide multiplexer structures relevant to the '847 Patent and the thermal management micro-channel heat-sink configurations relevant to the '562 Patent. Specifically, the report identified structural correlations between the LumiLink 400G-ZR+'s internal components and the following claim limitations:

• '847 Patent (U.S. 10,234,847): Claims 1, 3, 5, 9, and 14 — waveguide multiplexer structures incorporating arrayed waveguide grating (AWG) elements with specific dimensional and material composition characteristics as claimed.

• '562 Patent (U.S. 9,678,562): Claims 1, 4, 6, and 11 — thermal management micro-channel heat-sink configurations with integrated silicon-based microfluidic cooling channels meeting the claimed dimensional and thermal conductivity parameters.

The Benchmark report forms the technical foundation for OWS's pre-suit licensing outreach and subsequent infringement contentions. Kevin Ng confirmed the teardown methodology, chain of custody, and structural identifications in his deposition taken on January 7, 2025. Mr. Ng testified that the teardown was conducted in accordance with Benchmark's standard protocols for semiconductor device characterization and that the structural identifications set forth in the report were based on his independent professional analysis of the physical evidence.

B. First Formal Notice Period

Entry 5: January 15, 2023 — FairPoint Licensing Group Sends First Licensing/Notice Letter.

— CRITICAL NOTICE EVENT —

On January 15, 2023, FairPoint Licensing Group, LLC ("FairPoint") (located at 500 Sansome Street, Suite 1400, San Francisco, CA 94111), acting as OWS's authorized licensing agent, sent the first formal licensing and notice letter to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. The letter was sent via certified mail, return receipt requested, and via email to Mr. Bautista's direct email address at Lumicore. The letter was authored by Angela Reeves, Managing Director of FairPoint, who has managed OWS's patent licensing program since 2019.

The January 15, 2023 letter specifically identified three of the four asserted patents:

• U.S. Patent No. 10,234,847 (the '847 Patent)

• U.S. Patent No. 10,891,193 (the '193 Patent)

• U.S. Patent No. 9,678,562 (the '562 Patent)

The letter identified the LumiLink 400G-ZR+ as an infringing product. It attached copies of the relevant patent claims and provided a summary of the infringement basis, including references to specific claim elements and their correspondence to features of the LumiLink 400G-ZR+ as identified through publicly available product specifications and the Benchmark teardown analysis. The letter invited Lumicore to enter into licensing discussions and proposed a meeting to discuss the scope of the patents, the basis for the infringement allegations, and the terms of a potential license.

Significance: This letter is the operative date for "actual notice" for purposes of OWS's willful infringement analysis. From January 15, 2023 forward, Lumicore had undeniable, documented knowledge of three of the four asserted patents and the specific allegations of infringement against its flagship LumiLink 400G-ZR+ product. Post-notice damages begin accruing from this date. The post-notice lost profits from January 15, 2023 through the projected trial date are approximately $109.2 million. This figure forms the base for enhanced damages calculations under the various multiplier scenarios modeled in the Willful Infringement Damages Scenario Analysis.

Deposition confirmation: Raymond Bautista confirmed receipt of this letter in his December 3, 2024 deposition, testifying that he received the letter on or about January 17, 2023 and that he forwarded it to Lumicore's outside counsel at Hawthorne Vega & Cruz LLP within three business days. Angela Reeves confirmed sending the letter in her December 10, 2024 deposition and testified regarding the contents of the letter and the attachments included. Both depositions establish an unbroken chain of custody and receipt for the first notice letter.

Entry 6: February 28, 2023 — Lumicore Responds Through Outside Counsel. On February 28, 2023, approximately six weeks after the first notice letter, Lumicore responded to FairPoint's January 15, 2023 letter through its outside counsel, Hawthorne Vega & Cruz LLP ("HVC") (located at 600 Congress Avenue, Suite 2400, Austin, TX 78701). The response was authored by Catherine "Kate" Rourke, the lead partner responsible for Lumicore's patent matters at HVC.

The February 28, 2023 response letter disputed infringement and questioned the validity of the three identified patents. However, the response did not provide any detailed technical analysis or legal opinion supporting its position of non-infringement. The letter did not identify specific claim limitations that were allegedly absent from the accused product, nor did it provide any invalidity prior art references or arguments. The letter did not request further technical information from FairPoint or OWS, and it did not propose a meeting or any further discussion of the licensing terms offered by FairPoint.

Significance: Lumicore's response demonstrates that the company and its outside counsel were actively engaged with the infringement allegations as early as February 2023. The response — disputing infringement and questioning validity without any detailed supporting analysis — demonstrates awareness of the patents and a deliberate choice to challenge OWS's position rather than investigate the allegations or explore design-around alternatives. The cursory nature of the response, devoid of any substantive non-infringement analysis, supports an inference that Lumicore's response was a pro forma rejection rather than a product of genuine investigation. The failure to request additional technical information or propose a meeting further supports this inference.

C. Continued Infringement and Expansion of Accused Products

Entry 7: Q1 2023 — Lumicore Launches LumiLink 800G-DR8.

— CRITICAL POST-NOTICE PRODUCT LAUNCH —

In the first quarter of 2023, Lumicore launched its second accused product, the LumiLink 800G-DR8 transceiver module. This product was launched after Lumicore received the January 15, 2023 notice letter identifying three of the four asserted patents and the LumiLink 400G-ZR+ as an infringing product. The LumiLink 800G-DR8 generated fiscal year 2023 revenue of approximately $128.4 million, making it the highest-revenue accused product in the case.

The LumiLink 800G-DR8 is accused of infringing all four asserted patents: the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent. It incorporates the same waveguide multiplexer structures, coherent transceiver architecture, and thermal management configurations accused of infringement in the LumiLink 400G-ZR+, as well as additional polarization-diverse grating coupler technology accused of infringing the '015 Patent.

Significance: The launch of the LumiLink 800G-DR8 after receipt of the January 15, 2023 formal notice letter is strong evidence of willful disregard of OWS's patent rights. The launch of a new product incorporating allegedly infringing technology — at a time when Lumicore's General Counsel had already received and forwarded the notice letter to outside counsel — demonstrates an affirmative decision to proceed with the commercial introduction of additional infringing products notwithstanding known infringement risk. This is not a case of mere inertia or failure to act; it is an act of deliberate expansion.

Raymond Bautista admitted in his December 3, 2024 deposition that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR (Entry 11 below). It remains to be confirmed whether the same is true for the LumiLink 800G-DR8. This is an open investigative item (see Section VI.A.3) and should be pursued through a follow-up deposition or supplemental 30(b)(6) notice on the topic of design-around efforts for each accused product.

D. In-Person Licensing Meeting

Entry 8: April 20, 2023 — In-Person Licensing Meeting in Austin, TX.

— CRITICAL MEETING —

On April 20, 2023, an in-person licensing meeting was held in Austin, Texas. The meeting was arranged following further correspondence between FairPoint and HVC, in which FairPoint reiterated its request for a face-to-face meeting to discuss the infringement allegations and licensing terms. The attendees included:

• Angela Reeves, Managing Director, FairPoint Licensing Group, LLC (representing OWS as licensing agent)

• Rebecca Tanaka, General Counsel, Optiwave Semiconductor Corp.

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

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

During the meeting, OWS's representatives presented a detailed infringement analysis covering the three patents then identified in the notice correspondence ('847, '193, and '562 Patents), as well as the LumiLink 400G-ZR+ and the recently launched LumiLink 800G-DR8. The presentation included claim charts mapping the accused product features to the asserted patent claims, technical illustrations derived from the Benchmark teardown report, and a summary of the proposed licensing terms.

Per Angela Reeves's testimony in her December 10, 2024 deposition, Lumicore's representatives showed "no interest in negotiating" during the meeting. Ms. Reeves testified that Mr. Bautista and Ms. Rourke listened to the presentation but did not engage substantively with the infringement analysis, did not ask technical questions about the claim charts, did not propose alternative licensing terms, and did not suggest any follow-up technical discussions. Ms. Reeves characterized the meeting as "essentially a one-way conversation" in which Lumicore's side was "polite but entirely non-responsive."

Significance: The April 20, 2023 in-person meeting is significant because it demonstrates that Lumicore's decision-makers and their outside counsel were personally and directly confronted with the infringement allegations in a face-to-face setting. This is not a case where notice was received and lost in a mailroom or buried in a stack of correspondence. Lumicore's General Counsel and lead patent counsel sat across the table from OWS's representatives, received a detailed infringement presentation, and walked away without engaging. Their refusal to negotiate, ask questions, or propose alternative terms supports a strong inference of willful disregard — they knew the allegations, understood the basis, and chose not to engage.

E. Second Formal Notice — Expansion of Patent and Product Scope

Entry 9: May 15, 2023 — FairPoint Sends Second Licensing Letter.

— SECOND NOTICE EVENT —

On May 15, 2023, approximately four weeks after the in-person meeting, FairPoint sent a supplemental licensing letter to Lumicore. This second letter expanded the scope of the asserted patents and accused products in two significant respects.

First, the letter added the '015 Patent (U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," issued August 2, 2022) to the list of asserted patents. The '015 Patent covers a polarization-diverse grating coupler design that OWS's analysis confirmed is incorporated into the LumiLink 800G-DR8 and the subsequently launched LumiEdge 1600G-LR.

Second, the letter expanded the list of accused products to include the LumiLink 800G-DR8, which had been launched in Q1 2023 after Lumicore received the first notice letter. The second letter provided claim charts and infringement analysis for the newly identified patent and product, and it reiterated OWS's invitation to enter into licensing discussions.

As of the date of this second letter, all four asserted patents ('847, '193, '562, and '015) and two of the three accused products (LumiLink 400G-ZR+ and LumiLink 800G-DR8) had been specifically identified in formal correspondence from OWS's licensing agent.

Significance: After the May 15, 2023 letter, Lumicore was on formal notice of all four asserted patents and two of the three accused product lines. Any subsequent infringement — including the Q4 2023 launch of the LumiEdge 1600G-LR — was undertaken with full knowledge of the complete scope of OWS's patent portfolio. The May 15, 2023 letter eliminates any argument by Lumicore that it was not aware of the '015 Patent or the expanded scope of OWS's infringement contentions.

F. Lumicore's Formal Declination

Entry 10: July 10, 2023 — Lumicore Declines to Take a License.

— CRITICAL DECLINATION —

On July 10, 2023, Lumicore formally declined to take a license from OWS. The declination letter was sent by Hawthorne Vega & Cruz LLP on behalf of Lumicore and was addressed to Angela Reeves at FairPoint Licensing Group. The letter stated that Lumicore had obtained "competent legal opinions" confirming that its products do not infringe OWS's asserted patents. However, the letter did not produce or disclose the substance of these opinions, did not identify the law firm or attorneys who prepared the opinions, and did not provide any detailed non-infringement analysis or discussion of specific claim limitations.

The letter also did not propose any design-around alternatives, did not request additional time to evaluate the allegations, and did not suggest any further licensing discussions. The tone of the letter was definitive: Lumicore considered the matter closed and did not intend to engage in further licensing negotiations.

Significance: Lumicore's July 10, 2023 declination letter is a critical document in the willfulness analysis, and it operates as a double-edged sword for Lumicore.

On the one hand, the reference to "competent legal opinions" may be intended to suggest that Lumicore acted in good faith by seeking and obtaining legal advice before making its decision. If those opinions are credible and substantive, they could weigh against a finding of willfulness — though they would not be dispositive under Halo.

On the other hand, the declination letter affirmatively demonstrates that Lumicore was fully aware of all four asserted patents and the infringement allegations, that it made a deliberate and documented decision to continue its allegedly infringing conduct, and that it refused to engage in licensing discussions. The reference to "competent legal opinions" without any disclosure of their substance raises serious questions about whether those opinions actually exist, whether they support a credible non-infringement position, or whether they were obtained merely as a litigation shield. The failure to provide even a summary of the non-infringement basis — at a time when licensing discussions were active — supports an inference that Lumicore's position was not grounded in a genuine good-faith analysis.

OWS's Motion to Compel production of these opinion letters was filed on October 21, 2024 (Docket Entry pending). The motion argues that Lumicore waived the attorney-client privilege by affirmatively referencing the opinions in its July 10, 2023 letter and by potentially relying on an advice-of-counsel defense in this litigation. The outcome of this motion is a significant variable in the willfulness analysis (see Section VI.B). If the opinions are not produced and Lumicore does not assert an advice-of-counsel defense at trial, the inference is that the opinions either do not exist or do not support a credible non-infringement position.

G. Post-Declination Product Launches and Continued Infringement

Entry 11: Q4 2023 — Lumicore Launches LumiEdge 1600G-LR.

— THIRD POST-NOTICE PRODUCT LAUNCH —

In the fourth quarter of 2023, Lumicore launched the LumiEdge 1600G-LR module, a new product in an entirely new product line. The LumiEdge 1600G-LR is a next-generation transceiver module targeting the emerging 1600G market segment. FY 2023 revenue for this product (partial year, Q4 only) was approximately $41.7 million, reflecting rapid commercial adoption and substantial market demand.

The LumiEdge 1600G-LR is accused of infringing the '193 Patent and the '015 Patent. OWS's infringement analysis for this product was developed based on publicly available product specifications, a subsequent Benchmark teardown of a commercially purchased LumiEdge unit, and technical analysis by OWS's in-house engineering team.

This launch occurred after the following cumulative sequence of notice events and interactions:

1. FairPoint's first licensing/notice letter (January 15, 2023), identifying three patents and the LumiLink 400G-ZR+;

2. Lumicore's response through HVC (February 28, 2023), disputing infringement without detailed analysis;

3. The in-person licensing meeting in Austin, TX (April 20, 2023), at which Lumicore showed "no interest in negotiating";

4. FairPoint's second licensing letter (May 15, 2023), adding the '015 Patent and the LumiLink 800G-DR8; and

5. Lumicore's formal declination (July 10, 2023), referencing "competent legal opinions" without disclosure.

Raymond Bautista admitted in his December 3, 2024 deposition that no formal design-around analysis was commissioned before the LumiEdge 1600G-LR launch. This admission is critical: it establishes that Lumicore launched an entirely new product line incorporating allegedly infringing technology without taking even the most basic step to determine whether the product could be redesigned to avoid OWS's patents.

Significance: The Q4 2023 launch of the LumiEdge 1600G-LR is among the strongest individual pieces of evidence supporting OWS's willful infringement theory. The launch of an entirely new product line — not merely the continuation of sales of existing products — incorporating allegedly infringing technology, after extensive formal notice, a face-to-face meeting, and a deliberate refusal to license, demonstrates an affirmative, calculated decision to continue and expand infringing activity. The absence of any design-around analysis before the launch eliminates any argument that Lumicore made good-faith efforts to respect OWS's intellectual property. Under Halo, this is precisely the type of egregious, culpable conduct that warrants enhanced damages.

H. Evidence of Pre-Notice Knowledge: Melissa Chen Testimony

Entry 12: 2021–2022 (Design Phase) — Lumicore Engineering Team Reviews OWS Published Patent Applications.

— CRITICAL PRE-NOTICE KNOWLEDGE EVIDENCE —

OWS anticipates testimony from Melissa Chen, a former Lumicore engineer who was a member of the LumiLink 400G-ZR+ design team during 2021–2022 and who is now employed at Veridian Photonics, Inc. A subpoena duces tecum and deposition notice were issued to Ms. Chen on January 22, 2025 and served at her current employer, Veridian Photonics, Inc. The deposition has not yet been taken as of the date of this memorandum.

Ms. Chen is expected to testify that, during the LumiLink 400G-ZR+ product design phase in 2021–2022, Lumicore's design team accessed and reviewed OWS's published patent applications, including specifically Published Application No. 2018/0123456, which corresponds to the '193 Patent (U.S. Patent No. 10,891,193, entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate"). Ms. Chen is further expected to testify that the design team discussed the OWS published applications in the context of evaluating competitive approaches to coherent transceiver integration, and that the OWS applications informed certain design choices made in the development of the LumiLink 400G-ZR+.

The basis for this anticipated testimony is information obtained through informal witness interviews conducted by OWS's counsel. The formal deposition testimony will be essential to confirming and developing this evidence for use at trial and in motion practice.

Significance: If confirmed through deposition testimony, this evidence establishes that Lumicore's engineers were aware of OWS's patent claims — through OWS's published patent applications — before the first formal notice letter was sent in January 2023, and before the LumiLink 400G-ZR+ was commercially launched in Q3 2022. The significance of this evidence cannot be overstated. It transforms the willfulness narrative from one of "post-notice disregard" to one of "knowing design-phase adoption" — that is, Lumicore's design team reviewed OWS's patent applications, understood the scope of OWS's claimed inventions, and nevertheless designed the LumiLink 400G-ZR+ in a manner that incorporated the claimed technology. Combined with Dr. Michaud's deposition admissions (Entry 13 below), this evidence establishes a pattern of awareness within the Lumicore engineering organization that predates the formal notice correspondence.

I. Deposition Evidence: Dr. Sandra Michaud Admissions

Entry 13: November 19, 2024 — Deposition of Dr. Sandra Michaud (Lumicore CTO).

— CRITICAL DEPOSITION TESTIMONY —

Dr. Sandra Michaud, Lumicore's Chief Technology Officer, was deposed on November 19, 2024. Dr. Michaud has served as Lumicore's CTO since the company's founding and was directly responsible for overseeing the development of all three accused product lines. Her testimony provided several key admissions relevant to the willfulness analysis.

Key admissions:

1. Review of OWS Published Application. Dr. Michaud admitted that she reviewed OWS's Published Application No. 2018/0123456 (corresponding to the '193 Patent, U.S. Patent No. 10,891,193, "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate") during the LumiLink 400G-ZR+ design phase. She testified that she reviewed the published application as part of a competitive landscape analysis conducted by the engineering team, and that she was familiar with the technical disclosures in the application, including the integration architecture for coherent optical transceivers on a silicon substrate.

2. Denial of Knowledge of Issued Patents. Dr. Michaud denied knowledge of the issued '193 Patent (as opposed to the published application) until Lumicore received the FairPoint letter dated January 15, 2023. This denial is undermined by the fact that the published application she admitted reviewing contains substantially the same claim language as the issued '193 Patent. The progression from published application to issued patent is a routine and predictable process, and a CTO with knowledge of the published application would reasonably be expected to monitor the prosecution status and any resulting patent grants — particularly for a direct competitor's application in a field directly relevant to the company's own product development.

3. Inability to Identify Non-Infringing Alternatives. When questioned about non-infringing design alternatives, Dr. Michaud could not identify any specific non-infringing alternatives to the accused features in any of the three accused product lines. She testified that the accused structures were selected based on performance optimization and industry best practices, but she could not articulate any alternative approaches that would achieve comparable performance without incorporating the features claimed in OWS's patents.

Significance: The CTO's admission of having reviewed OWS's published patent application during the design phase is direct evidence of knowledge of OWS's intellectual property at the highest technical levels of Lumicore's organization. Combined with Melissa Chen's anticipated testimony regarding the broader design team's awareness, Dr. Michaud's admission establishes a pattern of knowledge within Lumicore's engineering leadership. Her denial of knowledge of the issued patents is factually weak — the published application she admitted reviewing contains the same claim language — and it may be further undermined by additional documentary evidence uncovered in the ongoing document review (see Section VI.A.4). Her inability to identify non-infringing alternatives supports the inference that Lumicore knew its design implicated OWS's patents and that no practical design-around was available, making the decision to proceed with the infringing design all the more culpable.

J. Deposition Evidence: Raymond Bautista Testimony

Entry 14: December 3, 2024 — Deposition of Raymond Bautista (Lumicore GC). Raymond Bautista, General Counsel of Lumicore Technologies, Inc., was deposed on December 3, 2024. Mr. Bautista has served as Lumicore's General Counsel since 2020 and was the primary recipient of OWS's pre-suit licensing correspondence. His testimony addressed the notice chain, the decision-making process regarding licensing, and the existence of opinion-of-counsel letters.

Key testimony:

1. Receipt of Notice. Mr. Bautista confirmed receipt of FairPoint's January 15, 2023 letter. He testified that he received the letter on or about January 17, 2023 and confirmed forwarding it to Lumicore's outside counsel at Hawthorne Vega & Cruz LLP within three business days of receipt.

2. Privilege Assertion over Opinion Letters. Mr. Bautista refused to answer questions about the substance of the opinion-of-counsel letters referenced in Lumicore's July 10, 2023 declination letter, asserting attorney-client privilege. He would not confirm the identity of the attorneys who prepared the opinions, the date the opinions were received, or the scope of the analysis conducted. This blanket privilege assertion is the subject of OWS's pending Motion to Compel (D.E. filed October 21, 2024).

3. No Design-Around before LumiEdge Launch. Mr. Bautista admitted that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR in Q4 2023. He testified that the product development process proceeded on its normal timeline and that the pending patent dispute was not a factor in the product launch decision. This admission is particularly damaging because it demonstrates that Lumicore did not merely fail to redesign an existing product — it launched an entirely new product line without any formal consideration of whether the product infringed OWS's patents.

Significance: Mr. Bautista's testimony confirms the notice chain and establishes that Lumicore's senior decision-makers — the General Counsel and outside patent counsel — were personally involved in receiving and evaluating the infringement allegations from the earliest stages. His privilege assertion over the opinion letters, while legally permissible, raises the inference that the opinions either do not support a credible non-infringement position or were not obtained until after the litigation was filed. His admission regarding the absence of a design-around analysis before the LumiEdge launch undercuts any claim that Lumicore acted in good faith in developing and launching new products during the notice period. The privilege assertion remains under challenge via the Motion to Compel, and the outcome of that motion will materially affect the strength of this evidence.

K. Engagement of Litigation Counsel and Filing of Complaint

Entry 15: March 18, 2024 — Calderwood & Harkness LLP Engagement. On March 18, 2024, OWS formally engaged Calderwood & Harkness LLP (located at 350 South Grand Avenue, 48th Floor, Los Angeles, CA 90071) as lead litigation counsel for the enforcement action against Lumicore. The engagement was structured with Alan Ngo as the responsible partner and Marcus Delgado as the billing partner. The engagement letter was executed with a blended cap rate of $925 per hour and a success fee of 5% of net recovery above $150 million. Calderwood & Harkness's mandate includes responsibility for all aspects of the litigation, including complaint drafting, discovery management, motion practice, and trial preparation.

Entry 16: April 22, 2024 — Complaint Filed. On April 22, 2024, the Complaint in Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc. was filed in the United States District Court for the Eastern District of Texas, marshall Division, and assigned Case No. 2:24-cv-00319-JRG before the Honorable James R. Gilstrap.

The Complaint asserts seven counts:

1. Count I: Direct infringement of the '847 Patent (U.S. 10,234,847)

2. Count II: Direct infringement of the '193 Patent (U.S. 10,891,193)

3. Count III: Direct infringement of the '562 Patent (U.S. 9,678,562)

4. Count IV: Direct infringement of the '015 Patent (U.S. 11,402,015)

5. Count V: Induced infringement under 35 U.S.C. § 271(b)

6. Count VI: Contributory infringement under 35 U.S.C. § 271(c)

7. Count VII: Willful infringement and enhanced damages under 35 U.S.C. § 284

The Complaint seeks approximately $210 million in damages, including enhanced damages for willful infringement, as well as a permanent injunction against continued infringement. Local counsel for OWS is James "Jim" Callahan of Whitmore & Callahan LLP, located at 110 North College Avenue, Suite 800, Tyler, TX 75702.

IV. SUMMARY OF NOTICE CHAIN AND WILLFULNESS INDICATORS

A. Consolidated Notice Timeline Table

The following table consolidates the critical events in the notice chain and identifies the willfulness significance of each event:

B. Categories of Willfulness Evidence

The evidence supporting OWS's willful infringement allegations against Lumicore falls into seven distinct but mutually reinforcing categories:

1. Actual Notice via Formal Correspondence. OWS, through its licensing agent FairPoint, sent two detailed licensing/notice letters to Lumicore's General Counsel — the first on January 15, 2023 and the second on May 15, 2023. Together, these letters identified all four asserted patents ('847, '193, '562, and '015) and two of the three accused products (LumiLink 400G-ZR+ and LumiLink 800G-DR8). The letters attached relevant patent claims and provided summaries of the infringement basis, including claim-by-claim mapping of the accused product features to the patent claims. Receipt of the first letter was confirmed by Lumicore's General Counsel in his December 3, 2024 deposition. This correspondence establishes actual, documented notice of the patents and the infringement allegations at the earliest stage.

2. In-Person Confrontation. On April 20, 2023, OWS's General Counsel and licensing agent met face-to-face with Lumicore's General Counsel and outside patent counsel in Austin, Texas. OWS presented a detailed infringement analysis, and Lumicore's representatives showed "no interest in negotiating." This in-person meeting elevates the notice beyond mere written correspondence — Lumicore's decision-makers and their counsel were personally and directly confronted with the infringement allegations and chose not to engage.

3. Deliberate Declination with Opaque Shield. On July 10, 2023, Lumicore formally declined to take a license, referencing "competent legal opinions" that its products do not infringe. However, Lumicore has refused to disclose the substance of these opinions, has not produced them in discovery, and has asserted privilege over their contents. The reference to "competent legal opinions" without disclosure or detailed basis raises the inference that the opinions either do not exist, were obtained post hoc as a litigation shield, or do not support a credible non-infringement position. This is a deliberate, documented decision to continue infringing, made with full awareness of the patent rights at issue.

4. Post-Notice Product Launches. Two of the three accused products — the LumiLink 800G-DR8 (Q1 2023) and the LumiEdge 1600G-LR (Q4 2023) — were launched after Lumicore received formal notice of OWS's patents and infringement allegations. The launch of new products incorporating allegedly infringing technology after notice demonstrates an affirmative decision to expand infringing activity rather than merely continue existing conduct. The LumiEdge 1600G-LR is particularly significant because it represents an entirely new product line, launched after two notice letters, an in-person meeting, and a formal declination.

5. Absence of Design-Around Efforts. Raymond Bautista admitted in deposition that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR. This admission eliminates any argument that Lumicore made good-faith efforts to design around OWS's patents before introducing new products into the market. The absence of design-around efforts is particularly significant in light of the extensive notice that Lumicore had received before the LumiEdge launch.

6. Pre-Notice Knowledge of OWS IP. Dr. Sandra Michaud (Lumicore CTO) admitted in deposition that she reviewed OWS's Published Application No. 2018/0123456 (corresponding to the '193 Patent) during the LumiLink 400G-ZR+ design phase in 2021–2022. Melissa Chen (former Lumicore engineer) is expected to testify that the broader design team also reviewed OWS's published applications during the design phase. This evidence establishes that Lumicore's engineering team was aware of OWS's intellectual property before the formal notice letters were sent, and that the design of the accused products proceeded with knowledge of OWS's claimed inventions.

7. Inability to Identify Non-Infringing Alternatives. Dr. Michaud could not identify any specific non-infringing design alternatives when questioned in deposition. This supports the inference that Lumicore knew its designs implicated OWS's patents and that no practical alternative existed — making the decision to proceed without a license all the more culpable.

V. EVIDENTIARY SOURCES AND DOCUMENT REFERENCES

A. Documentary Evidence

The following documents have been identified as the principal documentary evidence supporting OWS's willful infringement theory. Each document is listed with its date, source or custodian, and its relevance to the timeline:

1. FairPoint Licensing Group first licensing letter, dated January 15, 2023. Sent by Angela Reeves (Managing Director, FairPoint) to Raymond Bautista (General Counsel, Lumicore). This letter is the operative notice document and will be authenticated by a declaration of Angela Reeves (draft initiated, see Document 105 in the case management system).

2. FairPoint Licensing Group second licensing letter, dated May 15, 2023. Sent by Angela Reeves to Raymond Bautista. This letter expanded the scope of asserted patents (adding the '015 Patent) and accused products (adding the LumiLink 800G-DR8). Authentication will follow the same chain as the first letter.

3. Lumicore's February 28, 2023 response letter via Hawthorne Vega & Cruz LLP. Authored by Catherine "Kate" Rourke. Disputes infringement and questions validity without detailed analysis. Produced by Lumicore in discovery.

4. Lumicore's July 10, 2023 declination letter. Authored by HVC on behalf of Lumicore. Formally declines to license and references "competent legal opinions" of non-infringement. Produced by Lumicore in discovery. The opinion letters referenced in this correspondence are the subject of OWS's pending Motion to Compel (D.E. filed October 21, 2024).

5. Benchmark Semiconductor Analysis teardown report, dated December 12, 2022. Prepared by Kevin Ng, Lead Engineer, Benchmark Semiconductor Analysis, LLC. Confirms structural correlations between the LumiLink 400G-ZR+ and the claims of the '847 Patent and '562 Patent. Authenticated by Kevin Ng in his January 7, 2025 deposition.

6. Internal OWS communications (October 2022). Email exchanges and internal memoranda between Dr. Nikolai Petrov (VP of Engineering, Photonics Division) and Rebecca Tanaka (General Counsel) identifying potential infringement of OWS's patent portfolio by the LumiLink 400G-ZR+. Custodians: Dr. Nikolai Petrov, Rebecca Tanaka. Produced by OWS in discovery.

7. Lumicore product launch announcements and press releases. Public-facing announcements for the LumiLink 400G-ZR+ (Q3 2022), the LumiLink 800G-DR8 (Q1 2023), and the LumiEdge 1600G-LR (Q4 2023). These documents establish the launch dates and product descriptions for the accused products. Available from public sources and also produced by Lumicore in discovery.

8. Lumicore's financial disclosures and segment revenue data. Revenue data for each accused product, including quarterly and annual figures, produced by Lumicore in discovery under the three-tier confidentiality order entered in this case. These data support the damages calculations and the quantification of post-notice lost profits.

B. Deposition Testimony

The following depositions have been taken to date, and each contains testimony relevant to the willfulness timeline:

1. Dr. Sandra Michaud (CTO, Lumicore Technologies, Inc.) — Deposed November 19, 2024. Key testimony: admission of reviewing OWS Published Application No. 2018/0123456 during the LumiLink 400G-ZR+ design phase; denial of knowledge of issued patents until FairPoint's January 15, 2023 letter; inability to identify non-infringing design alternatives.

2. Raymond Bautista (General Counsel, Lumicore Technologies, Inc.) — Deposed December 3, 2024. Key testimony: confirmation of receipt of FairPoint's January 15, 2023 letter; confirmation of forwarding to outside counsel within three business days; privilege assertion over opinion-of-counsel letters; admission that no formal design-around analysis was commissioned before the LumiEdge 1600G-LR launch.

3. Angela Reeves (Managing Director, FairPoint Licensing Group, LLC) — Deposed December 10, 2024. Key testimony: confirmation of sending both licensing letters; description of the April 20, 2023 in-person meeting and Lumicore's refusal to negotiate; characterization of Lumicore's representatives as showing "no interest in negotiating."

4. Kevin Ng (Lead Engineer, Benchmark Semiconductor Analysis, LLC) — Deposed January 7, 2025. Key testimony: confirmation of teardown methodology, chain of custody for the commercially purchased LumiLink 400G-ZR+ unit, and structural identifications supporting the infringement basis for the '847 Patent and '562 Patent.

C. Anticipated Evidence (Pending or Draft)

The following evidence is anticipated but has not yet been obtained or finalized:

1. Melissa Chen subpoena duces tecum and deposition notice. Issued January 22, 2025 and served at Veridian Photonics, Inc. (Ms. Chen's current employer). Ms. Chen is expected to testify regarding the Lumicore design team's review of OWS published patent applications during the 2021–2022 design phase for the LumiLink 400G-ZR+. The deposition has not yet been taken. Scheduling is a priority (see Section VIII, Recommendation 1).

2. Opinion-of-counsel letters. Referenced in Lumicore's July 10, 2023 declination letter. Subject to OWS's pending Motion to Compel (D.E. filed October 21, 2024). If the motion is granted, these documents will be produced and analyzed. If the motion is denied, OWS will assess the availability of adverse inference arguments at trial.

3. Lumicore 30(b)(6) deposition on Topic 14 (non-infringing alternatives). Lumicore's initial 30(b)(6) designee on this topic may have been deficiently prepared; a potential supplemental deposition is under consideration, depending on the outcome of the document review and the adequacy of the testimony already obtained.

VI. GAP ANALYSIS AND OUTSTANDING INVESTIGATIVE STEPS

A. Open Items

The following items represent gaps in the current evidentiary record that must be addressed before the willfulness case can be finalized for trial or motion practice:

1. Melissa Chen Deposition. A subpoena duces tecum and deposition notice were issued to Melissa Chen on January 22, 2025. The deposition has not yet been taken. Ms. Chen's testimony is critical to establishing pre-notice knowledge of OWS's patent claims within the Lumicore engineering team. The deposition must be completed before the fact discovery close date of May 1, 2025. Counsel should coordinate with Ms. Chen's counsel (if retained) and with Veridian Photonics, Inc. to secure a deposition date in March or April 2025. If Ms. Chen's testimony is as expected, it will significantly strengthen the willfulness case by corroborating Dr. Michaud's admission and establishing a broader pattern of awareness within Lumicore's design team.

2. Opinion-of-Counsel Letters. The Motion to Compel production of the opinion letters referenced in Lumicore's July 10, 2023 declination letter was filed on October 21, 2024 and remains pending. The outcome of this m

CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071
ATTORNEY WORK PRODUCT — PRIVILEGED AND CONFIDENTIAL This document is protected by the attorney-client privilege and/or the work product doctrine. It was prepared by counsel in anticipation of litigation and reflects the mental impressions, conclusions, opinions, and legal theories of the attorneys. This document is not to be disclosed to any person outside the case team without the express written consent of Alan Ngo, Partner, Calderwood & Harkness LLP.
TIMELINE OF NOTICE AND WILLFULNESS EVIDENCE
Purpose: This memorandum provides a chronological compilation and analysis of all evidence supporting Optiwave Semiconductor Corp.'s ("OWS") willful infringement allegations against Lumicore Technologies, Inc. ("Lumicore") under the framework established by Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016). It is intended to serve as a working reference document for complaint drafting, discovery planning, and eventual motion practice on willful infringement and enhanced damages under 35 U.S.C. § 284. This document should be read in conjunction with the Willful Infringement Memorandum (internal, April 10, 2024), the Willful Infringement Damages Scenario Analysis (internal, April 15, 2024), and the forthcoming Read Factor Analysis for Enhanced Damages (target May 2025).
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I. EXECUTIVE SUMMARY
OWS's willful infringement theory against Lumicore rests on a straightforward factual narrative: Lumicore had actual knowledge of OWS's patents, was put on repeated formal notice of infringement through multiple channels and over an extended period, and nevertheless continued to manufacture, sell, and launch new infringing products — including entirely new product lines — without conducting any meaningful design-around analysis and without ever engaging in good-faith licensing discussions. This is precisely the type of egregious, culpable conduct that the Supreme Court identified in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), as warranting enhanced damages under 35 U.S.C. § 284.
Under the Halo standard, the inquiry into willful infringement focuses on subjective willfulness and is governed by a totality-of-the-circumstances analysis. The Supreme Court rejected the rigid two-part test of In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), and held that enhanced damages are reserved for egregious cases of culpable behavior — willful, wanton, or in bad faith. The relevant question is whether the infringer acted despite an objectively high likelihood that its actions constituted patent infringement, and whether this risk was either known or so obvious that it should have been known. District courts retain broad discretion in awarding enhanced damages, and the applicable standard of proof is preponderance of the evidence.
The evidence timeline assembled in this memorandum spans from OWS's initial identification of infringement in October 2022 through the filing of the complaint on April 22, 2024, and includes subsequent deposition testimony and discovery developments through early 2025. The timeline encompasses the following key elements:
Asserted Patents: OWS has asserted four United States patents against Lumicore:
• U.S. Patent No. 10,234,847 (the "'847 Patent")
• U.S. Patent No. 10,891,193 (the "'193 Patent")
• U.S. Patent No. 9,678,562 (the "'562 Patent")
• U.S. Patent No. 11,402,015 (the "'015 Patent")
Accused Product Lines: Three Lumicore transceiver product lines are accused of infringement:
• LumiLink 400G-ZR+
• LumiLink 800G-DR8
• LumiEdge 1600G-LR
Financial Magnitude: The total accused-product revenue through the projected trial date (covering the period from Q3 2022 through Q4 2025) is approximately $714.6 million. Post-notice lost profits, calculated from the operative notice date of January 15, 2023 forward, are approximately $109.2 million. The enhanced damages component of OWS's case is a critical driver of the overall $210 million damages demand stated in the complaint. As detailed in Section VII below, enhancement scenarios ranging from 1.5× to 3× the post-notice lost profits yield additional damages exposure of between $54.6 million and $218.4 million. The complaint's aggregate $210 million demand incorporates a blended, conservative view of the willful enhancement component (approximately $43.6 million in selected enhancement), reflecting litigation risk and the need for a defensible demand figure at the pleading stage.
The strength of OWS's willfulness case is built on multiple, mutually reinforcing categories of evidence, including: (1) two formal notice letters identifying all four patents and two of three accused products; (2) a face-to-face licensing meeting at which Lumicore's General Counsel and outside counsel were personally confronted with the infringement allegations; (3) Lumicore's deliberate refusal to license, accompanied by a reference to undisclosed "competent legal opinions"; (4) the launch of two new accused products after receipt of formal notice; (5) the absence of any design-around analysis before the launch of the LumiEdge 1600G-LR; and (6) evidence — from both a former Lumicore engineer and Lumicore's own CTO — that the LumiLink 400G-ZR+ design team reviewed OWS's published patent applications during the product design phase in 2021–2022, establishing pre-notice knowledge of OWS's intellectual property.
II. LEGAL FRAMEWORK FOR WILLFUL INFRINGEMENT
A. The *Halo Electronics* Standard
In Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), the Supreme Court fundamentally reshaped the law governing enhanced damages for patent infringement. The Court rejected the two-part test established by the Federal Circuit in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), which had required a patent holder to prove both (1) an "objectively high likelihood" of infringement and (2) that the objective risk was "known or so obvious that it should have been known to the accused infringer." Seagate, 497 F.3d at 1371. Under Seagate, the burden of proof was clear and convincing evidence, and the objective prong was assessed on a purely objective basis without reference to the infringer's subjective knowledge.
The Supreme Court in Halo held that the Seagate test was unduly rigid and inconsistent with the broad discretion that Section 284 vests in district courts. The Court confirmed that 35 U.S.C. § 284 authorizes the court to "increase the damages up to three times the amount found or assessed," and that this provision gives district courts discretion to award enhanced damages in cases of egregious infringement behavior. Halo, 579 U.S. at 103–04. The Court emphasized that enhanced damages are "not to be meted out in a typical infringement case" but rather are "designed as a punitive or vindictive sanction for egregious infringement behavior." Id. at 103 (quoting Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014)).
Under the Halo framework, the standard of proof for willful infringement was reduced from clear and convincing evidence to preponderance of the evidence. Id. at 112. The inquiry is now a totality-of-the-circumstances analysis that focuses on the culpability of the infringer's conduct. The Court identified willful, wanton, and bad-faith infringement as the paradigmatic cases warranting enhanced damages, and it emphasized that the "subjective willfulness of a patent infringer, intentional or knowing," is the focus of the inquiry. Id. at 105. At the same time, the Court cautioned that "none of this is to say that enhanced damages must follow a finding of egregious misconduct" — the decision remains within the district court's discretion. Id. at 110.
Critically, the Halo decision also eliminated the Seagate requirement that the objective recklessness inquiry be conducted without reference to the infringer's subjective state of mind. Under Halo, courts may consider all relevant evidence — including the infringer's knowledge, notice, and post-notice conduct — in assessing whether enhanced damages are warranted.
B. Key Factors Courts Consider
In the wake of Halo, district courts have continued to apply a multi-factor analysis in assessing willful infringement and enhanced damages. While the precise formulation varies by circuit and district, courts in the Eastern District of Texas and elsewhere have consistently identified the following categories of evidence as relevant to the willfulness inquiry:
1. Notice of the patent(s) and specific infringement allegations. Whether the infringer was put on notice of the asserted patents and the specific basis for the infringement allegations — through cease-and-desist letters, licensing correspondence, published patent applications, or other communications — is among the most important factors in the analysis. Actual notice of the patents is often treated as a threshold requirement for a finding of willfulness, though constructive notice through marking or publication may also be relevant.
2. Investigation and advice of counsel. Whether the infringer investigated the matter upon receiving notice, or obtained competent legal advice regarding infringement, validity, and enforceability, is a significant factor. An infringer that receives notice and takes no steps to evaluate the allegations acts at its peril.
3. Continued or expanded infringing activity after notice. Courts view post-notice continuation or expansion of infringing activity as strong evidence of willfulness. The launch of new infringing products after notice is particularly probative, as it demonstrates an affirmative, deliberate decision to proceed with infringing conduct rather than merely a failure to cease existing activity.
4. Design-around efforts. Whether the infringer made good-faith efforts to design around the asserted patents is relevant to the question of culpability. The absence of any design-around analysis — particularly before launching new products — supports an inference of willful disregard.
5. Concealment or destruction of evidence. Spoliation, concealment, or deliberate destruction of evidence bearing on the infringer's knowledge and intent is a significant aggravating factor. While not alleged in this case at present, the ongoing document review may reveal evidence of concealment or selective production.
6. Closeness of the case on the merits. Where the infringement case is strong and the defenses are weak, willfulness is more readily established. Conversely, a close case on the merits — particularly on validity — may weigh against a finding of willfulness. The strength of OWS's infringement case and the weakness of Lumicore's invalidity defenses are addressed in separate memoranda.
7. The nine *Read* factors. Many district courts, including courts in the Eastern District of Texas, continue to apply the nine factors identified in Read Corp. v. Portec, Inc., 970 F.2d 816, 826–27 (Fed. Cir. 1992), as a framework for analyzing enhanced damages. These factors include: (i) whether the infringer deliberately copied the patented invention; (ii) whether the infringer investigated the scope of the patent and formed a good-faith belief of invalidity or non-infringement; (iii) the infringer's behavior as a party to the litigation; (iv) the infringer's size and financial condition; (v) the closeness of the case; (vi) the duration of the infringement; (vii) the infringer's remedial action; (viii) the infringer's motivation for harm; and (ix) whether the infringer attempted to conceal its misconduct. A detailed Read factor analysis will be prepared in a separate memorandum (target: May 2025).
C. Relevance of Advice of Counsel
In the post-Halo landscape, the failure to obtain an opinion of counsel is not dispositive of willfulness. The Supreme Court specifically rejected the notion that the absence of an opinion letter creates an automatic presumption of willfulness. Halo, 579 U.S. at 108–09. Nevertheless, the existence (or absence) of opinions of counsel remains a relevant — and often significant — factor in the totality-of-the-circumstances analysis.
In this case, Lumicore referenced "competent legal opinions" in its July 10, 2023 declination letter to FairPoint, but it has asserted attorney-client privilege over the substance of those opinions and has declined to produce them in discovery. OWS filed a Motion to Compel production of the opinion letters on October 21, 2024 (Docket Entry pending), arguing that Lumicore waived the privilege by affirmatively referencing the opinions in its correspondence and by potentially relying on an advice-of-counsel defense. The outcome of this motion will materially affect the strength of OWS's willfulness case.
If Lumicore produces the opinion letters and they reflect a reasonable, good-faith basis for non-infringement, the willfulness case becomes more difficult — though not impossible — to prove. Under Halo, opinions of counsel are considered but are not dispositive, and an opinion letter that is cursory, formulaic, or obtained post hoc may actually strengthen the willfulness case by demonstrating that the infringer sought to create a paper trail rather than genuinely investigate the merits.
If Lumicore maintains its privilege assertion and does not affirmatively rely on an advice-of-counsel defense at trial, OWS may argue that a negative inference is appropriate — i.e., that the jury should be permitted to infer that the opinions either do not exist or do not support a credible non-infringement position. The availability of such an inference is contested in the case law, but the better-reasoned authorities support the inference in circumstances where, as here, the infringer has affirmatively referenced the opinions in pre-suit correspondence. See, e.g., Westvale Holdings. v. Pemberton Corporation, 543 F.3d 683, 699 (Fed. Cir. 2008) (noting that the failure to obtain competent legal advice "tends to show that its infringement was willful").
III. CHRONOLOGICAL TIMELINE OF EVIDENCE
The following timeline sets forth, in chronological order, each material event, communication, product launch, and deposition admission bearing on OWS's willful infringement theory against Lumicore. Each entry identifies the date, the event, the relevant evidence, and the significance of the event for the willfulness analysis. Cross-references to the evidentiary sources compiled in Section V are provided where appropriate.
A. Pre-Notice Period: Background and OWS's discovery of Infringement
Entry 1: Q3 2022 — Lumicore Launches LumiLink 400G-ZR+. In the third quarter of 2022, Lumicore Technologies, Inc. (headquartered at 9200 Spectrum Boulevard, Building C, Austin, TX 78759) launched its LumiLink 400G-ZR+ coherent transceiver module. This product represented Lumicore's first commercial entry into the high-bandwidth coherent transceiver market and was positioned as a competitor to OWS's existing coherent transceiver product line. The launch occurred approximately six months after Lumicore's initial public offering on the Nasdaq exchange in March 2022, at an offering price of $24.00 per share. The LumiLink 400G-ZR+ generated fiscal year 2023 revenue of approximately $94.8 million, making it a significant commercial product for Lumicore during the relevant infringement period.
The LumiLink 400G-ZR+ is accused of infringing three of the four asserted patents: the '847 Patent, the '193 Patent, and the '562 Patent. The infringement allegations relate to the product's use of waveguide multiplexer structures (relevant to the '847 Patent), coherent transceiver architecture integrated on a silicon substrate (relevant to the '193 Patent), and thermal management micro-channel heat-sink configurations (relevant to the '562 Patent).
Significance for willfulness: The launch of the LumiLink 400G-ZR+ in Q3 2022 establishes the beginning of the infringement period. While Lumicore had not yet received formal notice of OWS's patents at the time of the commercial launch, this entry must be read in conjunction with Entry 12 below (regarding the design-phase awareness evidence from Melissa Chen and Dr. Sandra Michaud), which supports the argument that infringement was knowing from the outset. Combined with the later evidence of design-phase awareness, the Q3 2022 launch date is significant because it demonstrates that the infringement was not merely inadvertent but rather the product of a deliberate design process undertaken with knowledge of OWS's published patent applications.
Entry 2: October 2022 — OWS Engineering Team Identifies Potential Infringement. In October 2022, OWS's internal engineering team, under the direction of Dr. Nikolai Petrov (Vice President of Engineering, Photonics Division), identified potential infringement of OWS's patent portfolio by Lumicore's LumiLink 400G-ZR+ transceiver module. Dr. Petrov's team conducted an initial technical evaluation of the LumiLink 400G-ZR+ based on publicly available product specifications, datasheets, and marketing materials. Upon identifying structural and functional similarities between the LumiLink 400G-ZR+ and the inventions claimed in OWS's patent portfolio, the matter was referred to Rebecca Tanaka, OWS General Counsel, at OWS's headquarters located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, CA 95054.
The internal OWS communications documenting this initial identification of potential infringement were produced in discovery. These communications include email exchanges between Dr. Petrov and Ms. Tanaka, as well as internal technical memoranda summarizing the preliminary infringement analysis. While these documents reflect OWS's own internal processes rather than Lumicore's knowledge, they establish the factual predicate for OWS's subsequent investigation and the retention of Benchmark Semiconductor Analysis for a formal teardown.
Entry 3: November 2022 — OWS Retains Benchmark Semiconductor Analysis for Teardown. In November 2022, following the October 2022 internal identification of potential infringement, OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark") (located at 2244 Mission College Boulevard, Santa Clara, CA 95054) to perform a detailed teardown and reverse-engineering analysis of a commercially purchased LumiLink 400G-ZR+ unit. The engagement was managed by Kevin Ng, Lead Engineer at Benchmark, who has over fifteen years of experience in semiconductor device characterization and reverse engineering. The purpose of the teardown was to confirm whether the LumiLink 400G-ZR+ incorporates structures and methods covered by OWS's patent portfolio, with a specific focus on the claims of the '847 Patent and the '562 Patent.
The teardown analysis involved the physical decapsulation of a commercially purchased LumiLink 400G-ZR+ unit, cross-sectional imaging using scanning electron microscopy (SEM) and focused ion beam (FIB) techniques, and detailed mapping of the internal structures to the claim limitations of the asserted patents. The Benchmark engagement was conducted under the direction and supervision of OWS's in-house counsel and outside patent counsel, and the resulting report was prepared at the direction of counsel in anticipation of licensing discussions and potential litigation.
Entry 4: December 12, 2022 — Benchmark Teardown Report Delivered. On December 12, 2022, Benchmark delivered its completed teardown report to OWS. The report confirmed that the LumiLink 400G-ZR+ incorporates the accused waveguide multiplexer structures relevant to the '847 Patent and the thermal management micro-channel heat-sink configurations relevant to the '562 Patent. Specifically, the report identified structural correlations between the LumiLink 400G-ZR+'s internal components and the following claim limitations:
• '847 Patent (U.S. 10,234,847): Claims 1, 3, 5, 9, and 14 — waveguide multiplexer structures incorporating arrayed waveguide grating (AWG) elements with specific dimensional and material composition characteristics as claimed.
• '562 Patent (U.S. 9,678,562): Claims 1, 4, 6, and 11 — thermal management micro-channel heat-sink configurations with integrated silicon-based microfluidic cooling channels meeting the claimed dimensional and thermal conductivity parameters.
The Benchmark report forms the technical foundation for OWS's pre-suit licensing outreach and subsequent infringement contentions. Kevin Ng confirmed the teardown methodology, chain of custody, and structural identifications in his deposition taken on January 7, 2025. Mr. Ng testified that the teardown was conducted in accordance with Benchmark's standard protocols for semiconductor device characterization and that the structural identifications set forth in the report were based on his independent professional analysis of the physical evidence.
B. First Formal Notice Period
Entry 5: January 15, 2023 — FairPoint Licensing Group Sends First Licensing/Notice Letter.
— CRITICAL NOTICE EVENT —
On January 15, 2023, FairPoint Licensing Group, LLC ("FairPoint") (located at 500 Sansome Street, Suite 1400, San Francisco, CA 94111), acting as OWS's authorized licensing agent, sent the first formal licensing and notice letter to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. The letter was sent via certified mail, return receipt requested, and via email to Mr. Bautista's direct email address at Lumicore. The letter was authored by Angela Reeves, Managing Director of FairPoint, who has managed OWS's patent licensing program since 2019.
The January 15, 2023 letter specifically identified three of the four asserted patents:
• U.S. Patent No. 10,234,847 (the '847 Patent)
• U.S. Patent No. 10,891,193 (the '193 Patent)
• U.S. Patent No. 9,678,562 (the '562 Patent)
The letter identified the LumiLink 400G-ZR+ as an infringing product. It attached copies of the relevant patent claims and provided a summary of the infringement basis, including references to specific claim elements and their correspondence to features of the LumiLink 400G-ZR+ as identified through publicly available product specifications and the Benchmark teardown analysis. The letter invited Lumicore to enter into licensing discussions and proposed a meeting to discuss the scope of the patents, the basis for the infringement allegations, and the terms of a potential license.
Significance: This letter is the operative date for "actual notice" for purposes of OWS's willful infringement analysis. From January 15, 2023 forward, Lumicore had undeniable, documented knowledge of three of the four asserted patents and the specific allegations of infringement against its flagship LumiLink 400G-ZR+ product. Post-notice damages begin accruing from this date. The post-notice lost profits from January 15, 2023 through the projected trial date are approximately $109.2 million. This figure forms the base for enhanced damages calculations under the various multiplier scenarios modeled in the Willful Infringement Damages Scenario Analysis.
Deposition confirmation: Raymond Bautista confirmed receipt of this letter in his December 3, 2024 deposition, testifying that he received the letter on or about January 17, 2023 and that he forwarded it to Lumicore's outside counsel at Hawthorne Vega & Cruz LLP within three business days. Angela Reeves confirmed sending the letter in her December 10, 2024 deposition and testified regarding the contents of the letter and the attachments included. Both depositions establish an unbroken chain of custody and receipt for the first notice letter.
Entry 6: February 28, 2023 — Lumicore Responds Through Outside Counsel. On February 28, 2023, approximately six weeks after the first notice letter, Lumicore responded to FairPoint's January 15, 2023 letter through its outside counsel, Hawthorne Vega & Cruz LLP ("HVC") (located at 600 Congress Avenue, Suite 2400, Austin, TX 78701). The response was authored by Catherine "Kate" Rourke, the lead partner responsible for Lumicore's patent matters at HVC.
The February 28, 2023 response letter disputed infringement and questioned the validity of the three identified patents. However, the response did not provide any detailed technical analysis or legal opinion supporting its position of non-infringement. The letter did not identify specific claim limitations that were allegedly absent from the accused product, nor did it provide any invalidity prior art references or arguments. The letter did not request further technical information from FairPoint or OWS, and it did not propose a meeting or any further discussion of the licensing terms offered by FairPoint.
Significance: Lumicore's response demonstrates that the company and its outside counsel were actively engaged with the infringement allegations as early as February 2023. The response — disputing infringement and questioning validity without any detailed supporting analysis — demonstrates awareness of the patents and a deliberate choice to challenge OWS's position rather than investigate the allegations or explore design-around alternatives. The cursory nature of the response, devoid of any substantive non-infringement analysis, supports an inference that Lumicore's response was a pro forma rejection rather than a product of genuine investigation. The failure to request additional technical information or propose a meeting further supports this inference.
C. Continued Infringement and Expansion of Accused Products
Entry 7: Q1 2023 — Lumicore Launches LumiLink 800G-DR8.
— CRITICAL POST-NOTICE PRODUCT LAUNCH —
In the first quarter of 2023, Lumicore launched its second accused product, the LumiLink 800G-DR8 transceiver module. This product was launched after Lumicore received the January 15, 2023 notice letter identifying three of the four asserted patents and the LumiLink 400G-ZR+ as an infringing product. The LumiLink 800G-DR8 generated fiscal year 2023 revenue of approximately $128.4 million, making it the highest-revenue accused product in the case.
The LumiLink 800G-DR8 is accused of infringing all four asserted patents: the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent. It incorporates the same waveguide multiplexer structures, coherent transceiver architecture, and thermal management configurations accused of infringement in the LumiLink 400G-ZR+, as well as additional polarization-diverse grating coupler technology accused of infringing the '015 Patent.
Significance: The launch of the LumiLink 800G-DR8 after receipt of the January 15, 2023 formal notice letter is strong evidence of willful disregard of OWS's patent rights. The launch of a new product incorporating allegedly infringing technology — at a time when Lumicore's General Counsel had already received and forwarded the notice letter to outside counsel — demonstrates an affirmative decision to proceed with the commercial introduction of additional infringing products notwithstanding known infringement risk. This is not a case of mere inertia or failure to act; it is an act of deliberate expansion.
Raymond Bautista admitted in his December 3, 2024 deposition that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR (Entry 11 below). It remains to be confirmed whether the same is true for the LumiLink 800G-DR8. This is an open investigative item (see Section VI.A.3) and should be pursued through a follow-up deposition or supplemental 30(b)(6) notice on the topic of design-around efforts for each accused product.
D. In-Person Licensing Meeting
Entry 8: April 20, 2023 — In-Person Licensing Meeting in Austin, TX.
— CRITICAL MEETING —
On April 20, 2023, an in-person licensing meeting was held in Austin, Texas. The meeting was arranged following further correspondence between FairPoint and HVC, in which FairPoint reiterated its request for a face-to-face meeting to discuss the infringement allegations and licensing terms. The attendees included:
• Angela Reeves, Managing Director, FairPoint Licensing Group, LLC (representing OWS as licensing agent)
• Rebecca Tanaka, General Counsel, Optiwave Semiconductor Corp.
• Raymond Bautista, General Counsel, Lumicore Technologies, Inc.
• Catherine "Kate" Rourke, Lead Partner, Hawthorne Vega & Cruz LLP (outside patent counsel for Lumicore)
During the meeting, OWS's representatives presented a detailed infringement analysis covering the three patents then identified in the notice correspondence ('847, '193, and '562 Patents), as well as the LumiLink 400G-ZR+ and the recently launched LumiLink 800G-DR8. The presentation included claim charts mapping the accused product features to the asserted patent claims, technical illustrations derived from the Benchmark teardown report, and a summary of the proposed licensing terms.
Per Angela Reeves's testimony in her December 10, 2024 deposition, Lumicore's representatives showed "no interest in negotiating" during the meeting. Ms. Reeves testified that Mr. Bautista and Ms. Rourke listened to the presentation but did not engage substantively with the infringement analysis, did not ask technical questions about the claim charts, did not propose alternative licensing terms, and did not suggest any follow-up technical discussions. Ms. Reeves characterized the meeting as "essentially a one-way conversation" in which Lumicore's side was "polite but entirely non-responsive."
Significance: The April 20, 2023 in-person meeting is significant because it demonstrates that Lumicore's decision-makers and their outside counsel were personally and directly confronted with the infringement allegations in a face-to-face setting. This is not a case where notice was received and lost in a mailroom or buried in a stack of correspondence. Lumicore's General Counsel and lead patent counsel sat across the table from OWS's representatives, received a detailed infringement presentation, and walked away without engaging. Their refusal to negotiate, ask questions, or propose alternative terms supports a strong inference of willful disregard — they knew the allegations, understood the basis, and chose not to engage.
E. Second Formal Notice — Expansion of Patent and Product Scope
Entry 9: May 15, 2023 — FairPoint Sends Second Licensing Letter.
— SECOND NOTICE EVENT —
On May 15, 2023, approximately four weeks after the in-person meeting, FairPoint sent a supplemental licensing letter to Lumicore. This second letter expanded the scope of the asserted patents and accused products in two significant respects.
First, the letter added the '015 Patent (U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," issued August 2, 2022) to the list of asserted patents. The '015 Patent covers a polarization-diverse grating coupler design that OWS's analysis confirmed is incorporated into the LumiLink 800G-DR8 and the subsequently launched LumiEdge 1600G-LR.
Second, the letter expanded the list of accused products to include the LumiLink 800G-DR8, which had been launched in Q1 2023 after Lumicore received the first notice letter. The second letter provided claim charts and infringement analysis for the newly identified patent and product, and it reiterated OWS's invitation to enter into licensing discussions.
As of the date of this second letter, all four asserted patents ('847, '193, '562, and '015) and two of the three accused products (LumiLink 400G-ZR+ and LumiLink 800G-DR8) had been specifically identified in formal correspondence from OWS's licensing agent.
Significance: After the May 15, 2023 letter, Lumicore was on formal notice of all four asserted patents and two of the three accused product lines. Any subsequent infringement — including the Q4 2023 launch of the LumiEdge 1600G-LR — was undertaken with full knowledge of the complete scope of OWS's patent portfolio. The May 15, 2023 letter eliminates any argument by Lumicore that it was not aware of the '015 Patent or the expanded scope of OWS's infringement contentions.
F. Lumicore's Formal Declination
Entry 10: July 10, 2023 — Lumicore Declines to Take a License.
— CRITICAL DECLINATION —
On July 10, 2023, Lumicore formally declined to take a license from OWS. The declination letter was sent by Hawthorne Vega & Cruz LLP on behalf of Lumicore and was addressed to Angela Reeves at FairPoint Licensing Group. The letter stated that Lumicore had obtained "competent legal opinions" confirming that its products do not infringe OWS's asserted patents. However, the letter did not produce or disclose the substance of these opinions, did not identify the law firm or attorneys who prepared the opinions, and did not provide any detailed non-infringement analysis or discussion of specific claim limitations.
The letter also did not propose any design-around alternatives, did not request additional time to evaluate the allegations, and did not suggest any further licensing discussions. The tone of the letter was definitive: Lumicore considered the matter closed and did not intend to engage in further licensing negotiations.
Significance: Lumicore's July 10, 2023 declination letter is a critical document in the willfulness analysis, and it operates as a double-edged sword for Lumicore.
On the one hand, the reference to "competent legal opinions" may be intended to suggest that Lumicore acted in good faith by seeking and obtaining legal advice before making its decision. If those opinions are credible and substantive, they could weigh against a finding of willfulness — though they would not be dispositive under Halo.
On the other hand, the declination letter affirmatively demonstrates that Lumicore was fully aware of all four asserted patents and the infringement allegations, that it made a deliberate and documented decision to continue its allegedly infringing conduct, and that it refused to engage in licensing discussions. The reference to "competent legal opinions" without any disclosure of their substance raises serious questions about whether those opinions actually exist, whether they support a credible non-infringement position, or whether they were obtained merely as a litigation shield. The failure to provide even a summary of the non-infringement basis — at a time when licensing discussions were active — supports an inference that Lumicore's position was not grounded in a genuine good-faith analysis.
OWS's Motion to Compel production of these opinion letters was filed on October 21, 2024 (Docket Entry pending). The motion argues that Lumicore waived the attorney-client privilege by affirmatively referencing the opinions in its July 10, 2023 letter and by potentially relying on an advice-of-counsel defense in this litigation. The outcome of this motion is a significant variable in the willfulness analysis (see Section VI.B). If the opinions are not produced and Lumicore does not assert an advice-of-counsel defense at trial, the inference is that the opinions either do not exist or do not support a credible non-infringement position.
G. Post-Declination Product Launches and Continued Infringement
Entry 11: Q4 2023 — Lumicore Launches LumiEdge 1600G-LR.
— THIRD POST-NOTICE PRODUCT LAUNCH —
In the fourth quarter of 2023, Lumicore launched the LumiEdge 1600G-LR module, a new product in an entirely new product line. The LumiEdge 1600G-LR is a next-generation transceiver module targeting the emerging 1600G market segment. FY 2023 revenue for this product (partial year, Q4 only) was approximately $41.7 million, reflecting rapid commercial adoption and substantial market demand.
The LumiEdge 1600G-LR is accused of infringing the '193 Patent and the '015 Patent. OWS's infringement analysis for this product was developed based on publicly available product specifications, a subsequent Benchmark teardown of a commercially purchased LumiEdge unit, and technical analysis by OWS's in-house engineering team.
This launch occurred after the following cumulative sequence of notice events and interactions:
1. FairPoint's first licensing/notice letter (January 15, 2023), identifying three patents and the LumiLink 400G-ZR+;
2. Lumicore's response through HVC (February 28, 2023), disputing infringement without detailed analysis;
3. The in-person licensing meeting in Austin, TX (April 20, 2023), at which Lumicore showed "no interest in negotiating";
4. FairPoint's second licensing letter (May 15, 2023), adding the '015 Patent and the LumiLink 800G-DR8; and
5. Lumicore's formal declination (July 10, 2023), referencing "competent legal opinions" without disclosure.
Raymond Bautista admitted in his December 3, 2024 deposition that no formal design-around analysis was commissioned before the LumiEdge 1600G-LR launch. This admission is critical: it establishes that Lumicore launched an entirely new product line incorporating allegedly infringing technology without taking even the most basic step to determine whether the product could be redesigned to avoid OWS's patents.
Significance: The Q4 2023 launch of the LumiEdge 1600G-LR is among the strongest individual pieces of evidence supporting OWS's willful infringement theory. The launch of an entirely new product line — not merely the continuation of sales of existing products — incorporating allegedly infringing technology, after extensive formal notice, a face-to-face meeting, and a deliberate refusal to license, demonstrates an affirmative, calculated decision to continue and expand infringing activity. The absence of any design-around analysis before the launch eliminates any argument that Lumicore made good-faith efforts to respect OWS's intellectual property. Under Halo, this is precisely the type of egregious, culpable conduct that warrants enhanced damages.
H. Evidence of Pre-Notice Knowledge: Melissa Chen Testimony
Entry 12: 2021–2022 (Design Phase) — Lumicore Engineering Team Reviews OWS Published Patent Applications.
— CRITICAL PRE-NOTICE KNOWLEDGE EVIDENCE —
OWS anticipates testimony from Melissa Chen, a former Lumicore engineer who was a member of the LumiLink 400G-ZR+ design team during 2021–2022 and who is now employed at Veridian Photonics, Inc. A subpoena duces tecum and deposition notice were issued to Ms. Chen on January 22, 2025 and served at her current employer, Veridian Photonics, Inc. The deposition has not yet been taken as of the date of this memorandum.
Ms. Chen is expected to testify that, during the LumiLink 400G-ZR+ product design phase in 2021–2022, Lumicore's design team accessed and reviewed OWS's published patent applications, including specifically Published Application No. 2018/0123456, which corresponds to the '193 Patent (U.S. Patent No. 10,891,193, entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate"). Ms. Chen is further expected to testify that the design team discussed the OWS published applications in the context of evaluating competitive approaches to coherent transceiver integration, and that the OWS applications informed certain design choices made in the development of the LumiLink 400G-ZR+.
The basis for this anticipated testimony is information obtained through informal witness interviews conducted by OWS's counsel. The formal deposition testimony will be essential to confirming and developing this evidence for use at trial and in motion practice.
Significance: If confirmed through deposition testimony, this evidence establishes that Lumicore's engineers were aware of OWS's patent claims — through OWS's published patent applications — before the first formal notice letter was sent in January 2023, and before the LumiLink 400G-ZR+ was commercially launched in Q3 2022. The significance of this evidence cannot be overstated. It transforms the willfulness narrative from one of "post-notice disregard" to one of "knowing design-phase adoption" — that is, Lumicore's design team reviewed OWS's patent applications, understood the scope of OWS's claimed inventions, and nevertheless designed the LumiLink 400G-ZR+ in a manner that incorporated the claimed technology. Combined with Dr. Michaud's deposition admissions (Entry 13 below), this evidence establishes a pattern of awareness within the Lumicore engineering organization that predates the formal notice correspondence.
I. Deposition Evidence: Dr. Sandra Michaud Admissions
Entry 13: November 19, 2024 — Deposition of Dr. Sandra Michaud (Lumicore CTO).
— CRITICAL DEPOSITION TESTIMONY —
Dr. Sandra Michaud, Lumicore's Chief Technology Officer, was deposed on November 19, 2024. Dr. Michaud has served as Lumicore's CTO since the company's founding and was directly responsible for overseeing the development of all three accused product lines. Her testimony provided several key admissions relevant to the willfulness analysis.
Key admissions:
1. Review of OWS Published Application. Dr. Michaud admitted that she reviewed OWS's Published Application No. 2018/0123456 (corresponding to the '193 Patent, U.S. Patent No. 10,891,193, "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate") during the LumiLink 400G-ZR+ design phase. She testified that she reviewed the published application as part of a competitive landscape analysis conducted by the engineering team, and that she was familiar with the technical disclosures in the application, including the integration architecture for coherent optical transceivers on a silicon substrate.
2. Denial of Knowledge of Issued Patents. Dr. Michaud denied knowledge of the issued '193 Patent (as opposed to the published application) until Lumicore received the FairPoint letter dated January 15, 2023. This denial is undermined by the fact that the published application she admitted reviewing contains substantially the same claim language as the issued '193 Patent. The progression from published application to issued patent is a routine and predictable process, and a CTO with knowledge of the published application would reasonably be expected to monitor the prosecution status and any resulting patent grants — particularly for a direct competitor's application in a field directly relevant to the company's own product development.
3. Inability to Identify Non-Infringing Alternatives. When questioned about non-infringing design alternatives, Dr. Michaud could not identify any specific non-infringing alternatives to the accused features in any of the three accused product lines. She testified that the accused structures were selected based on performance optimization and industry best practices, but she could not articulate any alternative approaches that would achieve comparable performance without incorporating the features claimed in OWS's patents.
Significance: The CTO's admission of having reviewed OWS's published patent application during the design phase is direct evidence of knowledge of OWS's intellectual property at the highest technical levels of Lumicore's organization. Combined with Melissa Chen's anticipated testimony regarding the broader design team's awareness, Dr. Michaud's admission establishes a pattern of knowledge within Lumicore's engineering leadership. Her denial of knowledge of the issued patents is factually weak — the published application she admitted reviewing contains the same claim language — and it may be further undermined by additional documentary evidence uncovered in the ongoing document review (see Section VI.A.4). Her inability to identify non-infringing alternatives supports the inference that Lumicore knew its design implicated OWS's patents and that no practical design-around was available, making the decision to proceed with the infringing design all the more culpable.
J. Deposition Evidence: Raymond Bautista Testimony
Entry 14: December 3, 2024 — Deposition of Raymond Bautista (Lumicore GC). Raymond Bautista, General Counsel of Lumicore Technologies, Inc., was deposed on December 3, 2024. Mr. Bautista has served as Lumicore's General Counsel since 2020 and was the primary recipient of OWS's pre-suit licensing correspondence. His testimony addressed the notice chain, the decision-making process regarding licensing, and the existence of opinion-of-counsel letters.
Key testimony:
1. Receipt of Notice. Mr. Bautista confirmed receipt of FairPoint's January 15, 2023 letter. He testified that he received the letter on or about January 17, 2023 and confirmed forwarding it to Lumicore's outside counsel at Hawthorne Vega & Cruz LLP within three business days of receipt.
2. Privilege Assertion over Opinion Letters. Mr. Bautista refused to answer questions about the substance of the opinion-of-counsel letters referenced in Lumicore's July 10, 2023 declination letter, asserting attorney-client privilege. He would not confirm the identity of the attorneys who prepared the opinions, the date the opinions were received, or the scope of the analysis conducted. This blanket privilege assertion is the subject of OWS's pending Motion to Compel (D.E. filed October 21, 2024).
3. No Design-Around before LumiEdge Launch. Mr. Bautista admitted that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR in Q4 2023. He testified that the product development process proceeded on its normal timeline and that the pending patent dispute was not a factor in the product launch decision. This admission is particularly damaging because it demonstrates that Lumicore did not merely fail to redesign an existing product — it launched an entirely new product line without any formal consideration of whether the product infringed OWS's patents.
Significance: Mr. Bautista's testimony confirms the notice chain and establishes that Lumicore's senior decision-makers — the General Counsel and outside patent counsel — were personally involved in receiving and evaluating the infringement allegations from the earliest stages. His privilege assertion over the opinion letters, while legally permissible, raises the inference that the opinions either do not support a credible non-infringement position or were not obtained until after the litigation was filed. His admission regarding the absence of a design-around analysis before the LumiEdge launch undercuts any claim that Lumicore acted in good faith in developing and launching new products during the notice period. The privilege assertion remains under challenge via the Motion to Compel, and the outcome of that motion will materially affect the strength of this evidence.
K. Engagement of Litigation Counsel and Filing of Complaint
Entry 15: March 18, 2024 — Calderwood & Harkness LLP Engagement. On March 18, 2024, OWS formally engaged Calderwood & Harkness LLP (located at 350 South Grand Avenue, 48th Floor, Los Angeles, CA 90071) as lead litigation counsel for the enforcement action against Lumicore. The engagement was structured with Alan Ngo as the responsible partner and Marcus Delgado as the billing partner. The engagement letter was executed with a blended cap rate of $925 per hour and a success fee of 5% of net recovery above $150 million. Calderwood & Harkness's mandate includes responsibility for all aspects of the litigation, including complaint drafting, discovery management, motion practice, and trial preparation.
Entry 16: April 22, 2024 — Complaint Filed. On April 22, 2024, the Complaint in Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc. was filed in the United States District Court for the Eastern District of Texas, marshall Division, and assigned Case No. 2:24-cv-00319-JRG before the Honorable James R. Gilstrap.
The Complaint asserts seven counts:
1. Count I: Direct infringement of the '847 Patent (U.S. 10,234,847)
2. Count II: Direct infringement of the '193 Patent (U.S. 10,891,193)
3. Count III: Direct infringement of the '562 Patent (U.S. 9,678,562)
4. Count IV: Direct infringement of the '015 Patent (U.S. 11,402,015)
5. Count V: Induced infringement under 35 U.S.C. § 271(b)
6. Count VI: Contributory infringement under 35 U.S.C. § 271(c)
7. Count VII: Willful infringement and enhanced damages under 35 U.S.C. § 284
The Complaint seeks approximately $210 million in damages, including enhanced damages for willful infringement, as well as a permanent injunction against continued infringement. Local counsel for OWS is James "Jim" Callahan of Whitmore & Callahan LLP, located at 110 North College Avenue, Suite 800, Tyler, TX 75702.
IV. SUMMARY OF NOTICE CHAIN AND WILLFULNESS INDICATORS
A. Consolidated Notice Timeline Table
The following table consolidates the critical events in the notice chain and identifies the willfulness significance of each event:
B. Categories of Willfulness Evidence
The evidence supporting OWS's willful infringement allegations against Lumicore falls into seven distinct but mutually reinforcing categories:
1. Actual Notice via Formal Correspondence. OWS, through its licensing agent FairPoint, sent two detailed licensing/notice letters to Lumicore's General Counsel — the first on January 15, 2023 and the second on May 15, 2023. Together, these letters identified all four asserted patents ('847, '193, '562, and '015) and two of the three accused products (LumiLink 400G-ZR+ and LumiLink 800G-DR8). The letters attached relevant patent claims and provided summaries of the infringement basis, including claim-by-claim mapping of the accused product features to the patent claims. Receipt of the first letter was confirmed by Lumicore's General Counsel in his December 3, 2024 deposition. This correspondence establishes actual, documented notice of the patents and the infringement allegations at the earliest stage.
2. In-Person Confrontation. On April 20, 2023, OWS's General Counsel and licensing agent met face-to-face with Lumicore's General Counsel and outside patent counsel in Austin, Texas. OWS presented a detailed infringement analysis, and Lumicore's representatives showed "no interest in negotiating." This in-person meeting elevates the notice beyond mere written correspondence — Lumicore's decision-makers and their counsel were personally and directly confronted with the infringement allegations and chose not to engage.
3. Deliberate Declination with Opaque Shield. On July 10, 2023, Lumicore formally declined to take a license, referencing "competent legal opinions" that its products do not infringe. However, Lumicore has refused to disclose the substance of these opinions, has not produced them in discovery, and has asserted privilege over their contents. The reference to "competent legal opinions" without disclosure or detailed basis raises the inference that the opinions either do not exist, were obtained post hoc as a litigation shield, or do not support a credible non-infringement position. This is a deliberate, documented decision to continue infringing, made with full awareness of the patent rights at issue.
4. Post-Notice Product Launches. Two of the three accused products — the LumiLink 800G-DR8 (Q1 2023) and the LumiEdge 1600G-LR (Q4 2023) — were launched after Lumicore received formal notice of OWS's patents and infringement allegations. The launch of new products incorporating allegedly infringing technology after notice demonstrates an affirmative decision to expand infringing activity rather than merely continue existing conduct. The LumiEdge 1600G-LR is particularly significant because it represents an entirely new product line, launched after two notice letters, an in-person meeting, and a formal declination.
5. Absence of Design-Around Efforts. Raymond Bautista admitted in deposition that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR. This admission eliminates any argument that Lumicore made good-faith efforts to design around OWS's patents before introducing new products into the market. The absence of design-around efforts is particularly significant in light of the extensive notice that Lumicore had received before the LumiEdge launch.
6. Pre-Notice Knowledge of OWS IP. Dr. Sandra Michaud (Lumicore CTO) admitted in deposition that she reviewed OWS's Published Application No. 2018/0123456 (corresponding to the '193 Patent) during the LumiLink 400G-ZR+ design phase in 2021–2022. Melissa Chen (former Lumicore engineer) is expected to testify that the broader design team also reviewed OWS's published applications during the design phase. This evidence establishes that Lumicore's engineering team was aware of OWS's intellectual property before the formal notice letters were sent, and that the design of the accused products proceeded with knowledge of OWS's claimed inventions.
7. Inability to Identify Non-Infringing Alternatives. Dr. Michaud could not identify any specific non-infringing design alternatives when questioned in deposition. This supports the inference that Lumicore knew its designs implicated OWS's patents and that no practical alternative existed — making the decision to proceed without a license all the more culpable.
V. EVIDENTIARY SOURCES AND DOCUMENT REFERENCES
A. Documentary Evidence
The following documents have been identified as the principal documentary evidence supporting OWS's willful infringement theory. Each document is listed with its date, source or custodian, and its relevance to the timeline:
1. FairPoint Licensing Group first licensing letter, dated January 15, 2023. Sent by Angela Reeves (Managing Director, FairPoint) to Raymond Bautista (General Counsel, Lumicore). This letter is the operative notice document and will be authenticated by a declaration of Angela Reeves (draft initiated, see Document 105 in the case management system).
2. FairPoint Licensing Group second licensing letter, dated May 15, 2023. Sent by Angela Reeves to Raymond Bautista. This letter expanded the scope of asserted patents (adding the '015 Patent) and accused products (adding the LumiLink 800G-DR8). Authentication will follow the same chain as the first letter.
3. Lumicore's February 28, 2023 response letter via Hawthorne Vega & Cruz LLP. Authored by Catherine "Kate" Rourke. Disputes infringement and questions validity without detailed analysis. Produced by Lumicore in discovery.
4. Lumicore's July 10, 2023 declination letter. Authored by HVC on behalf of Lumicore. Formally declines to license and references "competent legal opinions" of non-infringement. Produced by Lumicore in discovery. The opinion letters referenced in this correspondence are the subject of OWS's pending Motion to Compel (D.E. filed October 21, 2024).
5. Benchmark Semiconductor Analysis teardown report, dated December 12, 2022. Prepared by Kevin Ng, Lead Engineer, Benchmark Semiconductor Analysis, LLC. Confirms structural correlations between the LumiLink 400G-ZR+ and the claims of the '847 Patent and '562 Patent. Authenticated by Kevin Ng in his January 7, 2025 deposition.
6. Internal OWS communications (October 2022). Email exchanges and internal memoranda between Dr. Nikolai Petrov (VP of Engineering, Photonics Division) and Rebecca Tanaka (General Counsel) identifying potential infringement of OWS's patent portfolio by the LumiLink 400G-ZR+. Custodians: Dr. Nikolai Petrov, Rebecca Tanaka. Produced by OWS in discovery.
7. Lumicore product launch announcements and press releases. Public-facing announcements for the LumiLink 400G-ZR+ (Q3 2022), the LumiLink 800G-DR8 (Q1 2023), and the LumiEdge 1600G-LR (Q4 2023). These documents establish the launch dates and product descriptions for the accused products. Available from public sources and also produced by Lumicore in discovery.
8. Lumicore's financial disclosures and segment revenue data. Revenue data for each accused product, including quarterly and annual figures, produced by Lumicore in discovery under the three-tier confidentiality order entered in this case. These data support the damages calculations and the quantification of post-notice lost profits.
B. Deposition Testimony
The following depositions have been taken to date, and each contains testimony relevant to the willfulness timeline:
1. Dr. Sandra Michaud (CTO, Lumicore Technologies, Inc.) — Deposed November 19, 2024. Key testimony: admission of reviewing OWS Published Application No. 2018/0123456 during the LumiLink 400G-ZR+ design phase; denial of knowledge of issued patents until FairPoint's January 15, 2023 letter; inability to identify non-infringing design alternatives.
2. Raymond Bautista (General Counsel, Lumicore Technologies, Inc.) — Deposed December 3, 2024. Key testimony: confirmation of receipt of FairPoint's January 15, 2023 letter; confirmation of forwarding to outside counsel within three business days; privilege assertion over opinion-of-counsel letters; admission that no formal design-around analysis was commissioned before the LumiEdge 1600G-LR launch.
3. Angela Reeves (Managing Director, FairPoint Licensing Group, LLC) — Deposed December 10, 2024. Key testimony: confirmation of sending both licensing letters; description of the April 20, 2023 in-person meeting and Lumicore's refusal to negotiate; characterization of Lumicore's representatives as showing "no interest in negotiating."
4. Kevin Ng (Lead Engineer, Benchmark Semiconductor Analysis, LLC) — Deposed January 7, 2025. Key testimony: confirmation of teardown methodology, chain of custody for the commercially purchased LumiLink 400G-ZR+ unit, and structural identifications supporting the infringement basis for the '847 Patent and '562 Patent.
C. Anticipated Evidence (Pending or Draft)
The following evidence is anticipated but has not yet been obtained or finalized:
1. Melissa Chen subpoena duces tecum and deposition notice. Issued January 22, 2025 and served at Veridian Photonics, Inc. (Ms. Chen's current employer). Ms. Chen is expected to testify regarding the Lumicore design team's review of OWS published patent applications during the 2021–2022 design phase for the LumiLink 400G-ZR+. The deposition has not yet been taken. Scheduling is a priority (see Section VIII, Recommendation 1).
2. Opinion-of-counsel letters. Referenced in Lumicore's July 10, 2023 declination letter. Subject to OWS's pending Motion to Compel (D.E. filed October 21, 2024). If the motion is granted, these documents will be produced and analyzed. If the motion is denied, OWS will assess the availability of adverse inference arguments at trial.
3. Lumicore 30(b)(6) deposition on Topic 14 (non-infringing alternatives). Lumicore's initial 30(b)(6) designee on this topic may have been deficiently prepared; a potential supplemental deposition is under consideration, depending on the outcome of the document review and the adequacy of the testimony already obtained.
VI. GAP ANALYSIS AND OUTSTANDING INVESTIGATIVE STEPS
A. Open Items
The following items represent gaps in the current evidentiary record that must be addressed before the willfulness case can be finalized for trial or motion practice:
1. Melissa Chen Deposition. A subpoena duces tecum and deposition notice were issued to Melissa Chen on January 22, 2025. The deposition has not yet been taken. Ms. Chen's testimony is critical to establishing pre-notice knowledge of OWS's patent claims within the Lumicore engineering team. The deposition must be completed before the fact discovery close date of May 1, 2025. Counsel should coordinate with Ms. Chen's counsel (if retained) and with Veridian Photonics, Inc. to secure a deposition date in March or April 2025. If Ms. Chen's testimony is as expected, it will significantly strengthen the willfulness case by corroborating Dr. Michaud's admission and establishing a broader pattern of awareness within Lumicore's design team.
2. Opinion-of-Counsel Letters. The Motion to Compel production of the opinion letters referenced in Lumicore's July 10, 2023 declination letter was filed on October 21, 2024 and remains pending. The outcome of this m

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TIMELINE OF NOTICE AND WILLFULNESS EVIDENCE

I. EXECUTIVE SUMMARY

II. LEGAL FRAMEWORK FOR WILLFUL INFRINGEMENT

III. CHRONOLOGICAL TIMELINE OF EVIDENCE

IV. SUMMARY OF NOTICE CHAIN AND WILLFULNESS INDICATORS

V. EVIDENTIARY SOURCES AND DOCUMENT REFERENCES

VI. GAP ANALYSIS AND OUTSTANDING INVESTIGATIVE STEPS

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