letter-to-whitfield-escalation-critical-deadlines.docx

1014-00005 · Optiwave Semiconductor Corp · Correspondence/External

letter-to-whitfield-escalation-critical-deadlines.docx DOCUMENT IP / Technology

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CALDERWOOD & HARKNESS LLP 555 California Street, 42nd Floor San Francisco, CA 94104 Telephone: (415) 392-7800 Facsimile: (415) 392-7801 www.calderwoodharkness.com

intellectual Property Group

January 8, 2025

VIA EMAIL AND Sundial Data Systems

PRIVILEGED & CONFIDENTIAL — ATTORNEY-CLIENT COMMUNICATION

Marcus Whitfield, Esq. General Counsel Optiwave Semiconductor Corp. 4710 Ridgeview Parkway, Suite 300 Santa Clara, CA 95054

Re: Escalation — Imminent Critical Patent Prosecution Deadlines C&H Matter No. 1014-00005 Optiwave Semiconductor Corp. Patent Application Family (12 Pending Applications)

Dear Marcus:

1. Purpose and Urgency of This Letter

I write in my capacity as Responsible Partner for Calderwood & Harkness LLP's patent prosecution engagement with Optiwave Semiconductor Corp. ("OWS"), which was opened on February 14, 2022. The purpose of this letter is to escalate, at the General Counsel level, the increasingly urgent situation regarding imminent, irrevocable patent prosecution deadlines that will result in the permanent loss of patent rights for OWS if budget authorization is not obtained in the very near term.

This letter follows, and builds upon, the December 2, 2024 deadline warning letter sent by Christy Bauer, Lead Associate in our intellectual Property Group, to Sandra Koh, OWS's IP Manager and In-House Patent Counsel, regarding U.S. Application No. 17/672,204 ("Application A1"). As of the date of this letter, C&H has not received a substantive response to that communication authorizing resumed prosecution of A1, nor have we received any indication that authorization is forthcoming.

As you are aware, this matter has been effectively dormant since the Harborview Partners "Project Lighthouse" budget freeze took effect on August 11, 2023, which capped discretionary intellectual property spending at $25,000 per quarter. C&H's last billable activity on this engagement was September 6, 2023, when we filed a two-month extension of time for A1 with the United States Patent and Trademark Office. Since that date, no substantive prosecution work has been authorized, funded, or performed on any of the twelve pending applications in the OWS patent application family.

The situation has now reached a critical inflection point where continued inaction will cause irreversible and permanent harm to OWS's patent portfolio, its competitive position in the silicon-photonic modulator market, and potentially its compliance with material covenants under OWS's senior secured credit facility with Meridian National Bank, N.A. As detailed below, the most critical deadline — the absolute statutory bar for responding to the non-final Office Action in Application A1 — falls on March 9, 2025, approximately sixty (60) days from the date of this letter. No further extensions of time are available, and failure to respond by that date will result in permanent abandonment of the foundational application in OWS's core modulator architecture patent sub-family.

I am sending this letter directly to you as General Counsel because the gravity of the situation warrants executive-level attention and because the authorization required to resume prosecution exceeds the scope of authority that has been delegated to Sandra Koh under the Project Lighthouse framework. I urge you to treat this communication with the highest priority.

2. Summary of Imminent Critical Deadlines

The following is a summary of the most critical prosecution deadlines facing OWS's pending patent application portfolio. These are organized in order of urgency and severity.

2.1 Application A1 — U.S. App. No. 17/672,204 (HIGHEST PRIORITY)

Title: "Multi-Channel Silicon-Photonic Mach-Zehnder Modulator with Segmented Traveling-Wave Electrode Architecture"

Status: Non-final Office Action response due.

Absolute Deadline: March 9, 2025 — approximately sixty (60) days from the date of this letter.

This deadline represents a hard statutory bar under 35 U.S.C. § 133 and 37 C.F.R. § 1.136. All available extensions of time have been exhausted. As noted above, a two-month extension of time was purchased on September 6, 2023 for $640 in USPTO fees. Under the USPTO's rules, a maximum of six months of total response time is available for responding to a non-final Office Action (the initial three-month shortened statutory period plus a maximum of three additional months of extensions). By purchasing the two-month extension, two months of the available three-month extension period were consumed. The remaining one month of available extension time, combined with the passage of time since the extension was filed, yields a final absolute deadline of March 9, 2025. No further extensions are available under USPTO rules. This is a hard statutory bar that cannot be moved by any means.

Consequence of Missing This Deadline: Abandonment of the foundational U.S. non-provisional application in the core modulator architecture sub-family (Sub-Family A). Abandonment under these circumstances is permanent; the application cannot be revived through a petition because the failure to respond is not "unintentional" where the client has been repeatedly warned and has elected not to act due to budgetary constraints.

Priority Chain: Application A1 claims priority to Provisional Application No. 63/297,841, which was filed on January 10, 2022, and expired on January 10, 2023. Priority to the provisional application was preserved through the timely filing of the non-provisional Application A1 on January 9, 2023, one day before expiration of the twelve-month provisional filing period. This application is the parent application from which Application A2 (a continuation application) and Application A3 (a continuation-in-part application) depend for their respective priority dates and prosecution strategies. The loss of A1 would therefore have cascading consequences across the entire Sub-Family A prosecution effort.

Estimated Cost to Respond: The preparation and filing of a substantive response to the outstanding non-final Office Action in A1 is estimated to require between 40 and 55 attorney hours, translating to approximately $22,000 to $30,000 at the discounted hourly rates established in our engagement letter. In addition, depending on the prosecution strategy selected, USPTO fees of up to $2,000 may be required if a Request for Continued Examination ("RCE") is determined to be necessary based on the scope of amendments needed.

Status of Draft Response: A draft response to the non-final Office Action was in progress through August 2023, prepared by Christy Bauer under my supervision, but was incomplete at the time the Project Lighthouse budget freeze took effect. The draft had not yet undergone partner review and was left in an intermediate state. The existence of this draft partially reduces the total work needed to prepare and file the response; however, the draft must be thoroughly updated to account for intervening developments in the prosecution record, finalized, and subjected to full partner review before it can be filed. In addition, several of the arguments outlined in the draft require further refinement in light of newly cited prior art references identified in our preliminary review of recent Pinnacle Optics prosecution activity.

Key Substantive Issue: The response to the non-final Office Action involves critical claim amendments emphasizing OWS's tapered impedance-matching feature, which is the principal design-around feature that distinguishes OWS's modulator architecture over Pinnacle Optics, Inc.'s U.S. Patent No. 10,823,417 (issued November 3, 2020) and U.S. Patent No. 11,105,662. The claim amendments and supporting arguments are essential to securing allowable claims that provide OWS with both a defensive patent position and freedom-to-operate clearance for its commercial products. The strategic importance of this response is discussed in further detail in Section 3 below.

2.2 Application B1 — U.S. App. No. 17/814,057

Status: Restriction Requirement response due.

Extended Deadline: April 21, 2025 — approximately 103 days from the date of this letter.

A four-month emergency extension of time was filed by C&H on October 18, 2024, at a USPTO fee of $2,560. This extension was authorized by Sandra Koh as an emergency exception to the Project Lighthouse quarterly spending cap, recognizing the urgency of preserving this application. While this deadline is slightly less imminent than the March 9, 2025 deadline for A1, it is also approaching rapidly, and the response requires advance preparation and client decision-making regarding claim election.

Consequence of Missing This Deadline: Abandonment of the electrode fabrication process application, which is the lead application in Sub-Family B of OWS's pending patent portfolio. If B1 is abandoned, the planned divisional application B2 (U.S. Application No. 17/814,103), which is intended to cover the non-elected claims from the restriction requirement, cannot be filed because B2 depends entirely on B1 remaining a pending, non-abandoned application. The loss of B1 would therefore eliminate OWS's ability to obtain patent protection for both the elected and non-elected claim groups in the electrode fabrication process technology.

Estimated Cost to Respond: The preparation and filing of a response to the restriction requirement in B1 is estimated to require between 8 and 12 attorney hours, translating to approximately $4,500 to $6,750 at the engagement's discounted rates. No USPTO fee is required for a restriction response. However, it should be noted that additional work will be necessary after the restriction response is filed, including the preparation and filing of the divisional application B2 to preserve rights in the non-elected claim group, which will involve additional attorney time and USPTO filing fees.

2.3 Additional Near-Term Deadlines (Context)

Beyond the two highest-priority deadlines described above, OWS faces a series of additional prosecution deadlines that, while not as immediately imminent, will arrive in sequence over the coming months and require advance planning and budget authorization. These include:

• Application B3 (EP 23 741 682.3): Response to the European Patent Office ("EPO") extended European search report is due May 17, 2025. The estimated cost to prepare and file the response is $15,000 to $22,000, inclusive of fees payable to C&H's European foreign associate, Breitenfeld & Vogt (Munich), and EPO official fees.

• Applications A4 and A5 (PCT/US2023/010584 and PCT/US2023/010612): The deadline for national-phase entry under the Patent Cooperation Treaty is July 9, 2025, which is thirty (30) months from the January 10, 2022 priority date. This deadline applies to entry into any jurisdictions beyond Japan and Europe, which have already been entered. If OWS intends to pursue patent protection in additional jurisdictions — such as South Korea, China, Taiwan, or other commercially significant markets for silicon-photonic semiconductor components — the national-phase entry filings and associated government fees must be authorized and funded before this date. National-phase entry fees vary by jurisdiction but can be substantial when multiple countries are at issue.

• Applications B4 (JP 2024-542197) and C3 (JP 2024-542305): The deadline for filing examination requests with the Japan Patent Office ("JPO") is January 9, 2026. While this deadline is approximately twelve months away, JPO examination requests require strategic decisions regarding claim scope and prosecution approach, and the associated government fees must be budgeted in advance.

C&H will provide a comprehensive docket status report and deadline triage memorandum under separate cover, targeted for delivery on or about January 15, 2025. That memorandum will catalogue all pending deadlines across the twelve-application family, provide estimated costs for each action, and propose prioritization tiers to assist OWS and Veltrano Capital Partners in allocating available budget resources.

3. Strategic Consequences of Abandonment — Application A1

The loss of Application A1 would be particularly devastating to OWS's competitive position and intellectual property strategy, and I wish to ensure that the full implications are understood at the executive level before any decision — whether active or by default through inaction — is made.

As you may recall, C&H delivered a comprehensive freedom-to-operate ("FTO") analysis to OWS on October 14, 2022, in which we concluded that OWS's commercial silicon-photonic modulator products face a "moderate-to-high" risk of infringement of Pinnacle Optics, Inc.'s U.S. Patent No. 10,823,417 (issued November 3, 2020) absent the incorporation of specific design-around features. The FTO analysis identified Pinnacle's electrode-segmentation geometry claims as the primary source of infringement risk and recommended that OWS pursue a design-around strategy centered on the tapered impedance-matching feature that is unique to OWS's modulator architecture.

Application A1's pending claims are specifically drafted to claim around Pinnacle's electrode-segmentation geometry by specifying the distinct tapered impedance-matching feature as a critical claim limitation. These claims, if allowed, would provide OWS with a granted patent covering its design-around architecture, thereby establishing both a defensive patent position against Pinnacle and an affirmative intellectual property right in OWS's proprietary technology.

If Application A1 is abandoned, OWS permanently loses the ability to obtain patent claims covering the tapered-impedance design-around feature. This would leave OWS in the worst of both worlds: exposed to a potential infringement assertion by Pinnacle Optics with respect to the electrode-segmentation geometry, while simultaneously lacking any defensive patent position of its own in the relevant technology space. It is worth noting that Pinnacle Optics is represented by Cavanaugh Holt & Sayer LLP, a firm known for aggressive patent enforcement, and that Pinnacle's Vice President of intellectual Property, Howard Raines, has overseen an aggressive prosecution and enforcement campaign in the silicon-photonic modulator space. OWS's pending claims in A1 serve as a critical counterweight to Pinnacle's portfolio and provide OWS with meaningful leverage in the event of any future licensing negotiation, cross-licensing discussion, or litigation scenario.

Furthermore, Application A3 (the continuation-in-part, U.S. Application No. 17/672,489) depends on A1 for its priority chain and prosecution strategy. A3 incorporates additional disclosure relating to OWS's second-generation modulator architecture while relying on A1's earlier priority date for the foundational claim elements. The loss of A1 would therefore undermine A3's prosecution posture, potentially depriving A3's claims of their earliest priority date and exposing those claims to prior art that would otherwise be antedated.

In sum, the abandonment of A1 would create a cascading failure across OWS's most strategically important patent sub-family, with ramifications for competitive positioning, freedom-to-operate risk, licensing leverage, and the defensibility of related pending applications.

4. Portfolio Valuation Impact

The financial implications of allowing critical applications to go abandoned are significant and well-documented. Graystone Valuation Advisors, LLC, which was retained by Harborview Partners in connection with its investment in OWS, issued a comprehensive patent portfolio valuation report dated April 28, 2023. The report was prepared under the direction of Rebecca Thornton, the lead engagement partner at Graystone, and employed a combination of income-approach and market-comparable methodologies consistent with standard intellectual property valuation practices.

The Graystone report estimated the fair market value of OWS's entire patent portfolio — comprising thirty-one (31) issued U.S. utility patents plus the twelve (12) pending applications that are the subject of this engagement — at $38.5 million. Of that total valuation, approximately $12.2 million, or roughly 31.7% of the total portfolio value, was attributed to the pending application family that is the subject of this docket. The pending applications, particularly those in Sub-Family A (the core modulator architecture claims) and Sub-Family B (the electrode fabrication process claims), were identified in the Graystone report as key value drivers for OWS's portfolio due to their direct alignment with OWS's commercial product roadmap and their role in establishing freedom-to-operate relative to Pinnacle Optics' patent holdings.

Allowing Applications A1 and B1 to go abandoned would directly destroy a significant portion of that $12.2 million in assessed portfolio value. While a precise recalculation of the portfolio's value would require an updated appraisal, the qualitative conclusion is clear: the loss of the foundational applications in both Sub-Family A and Sub-Family B would substantially impair the value of the overall pending application family, both because of the intrinsic value of the claims at issue and because of the dependency of downstream applications (A2, A3, B2) on the continued viability of A1 and B1.

This destruction of portfolio value is strikingly disproportionate to the cost of preserving the applications. As detailed in Section 2, the combined immediate cost to respond to the outstanding Office Actions in A1 and B1 is estimated at approximately $26,500 to $36,750 in attorney fees and USPTO charges. Measured against millions of dollars in portfolio value at risk — to say nothing of the competitive and covenant-compliance consequences discussed elsewhere in this letter — the cost of resuming prosecution is modest by any reasonable standard. The ratio of preservation cost to value at risk is approximately 1:330 at the midpoint estimates, underscoring the extraordinary imprudence of allowing these applications to lapse for want of a comparatively small budget authorization.

5. Lender Covenant Compliance Concerns

I also wish to bring to your attention a concern that falls outside the scope of C&H's patent prosecution engagement but that, in our judgment, warrants immediate attention from OWS's corporate and finance counsel: the potential impact of patent application abandonment on OWS's compliance with the intellectual property covenants in its senior secured revolving credit facility.

As you know, OWS is party to a $55 million senior secured revolving credit facility with Meridian National Bank, N.A. (the "Credit Facility"), originally dated September 30, 2020, as amended and restated March 15, 2022. Section 5.15 of the Credit Agreement (Intellectual Property Covenants) requires OWS to "maintain, preserve, and protect all Material intellectual Property, including by timely prosecuting all pending patent applications and paying all required maintenance fees." This covenant imposes an affirmative obligation on OWS to take all steps necessary to preserve its patent portfolio, including through the timely filing of responses to USPTO Office Actions and restriction requirements.

In addition, the Security Agreement executed as Exhibit C to the Credit Agreement grants Meridian National Bank a first-priority security interest in all "Intellectual Property Collateral," defined to include "all patents, patent applications, and patent rights, whether now existing or hereafter acquired." Schedule 5.15(a) to the Credit Agreement was last updated on March 15, 2022, in connection with the amendment and restatement, and lists the patent portfolio as it existed at that time. While the twelve pending applications that are the subject of this engagement post-date the schedule update, they may fall within the general covenant language regarding "hereafter acquired" Intellectual property and the broad definition of "Material intellectual Property" set forth in Section 1.01 of the Credit Agreement. A determination of whether the pending applications constitute "Material intellectual Property" under the Credit Agreement would require analysis by OWS's corporate counsel, but given the Graystone valuation attributing $12.2 million in fair market value to these applications, the argument that they are "Material" is, in our judgment, strong.

As of December 31, 2024, the outstanding balance on the Revolving Credit Facility is $32.5 million, with $22.5 million in undrawn availability. Allowing pending patent applications to go abandoned may constitute a breach of Section 5.15 of the Credit Agreement and could trigger a default under the Credit Facility, with potentially severe consequences including acceleration of the outstanding balance, loss of further borrowing availability, and cross-default provisions that may affect other OWS financing arrangements.

C&H is preparing a more detailed lender covenant compliance analysis for OWS's review, but we are not OWS's corporate counsel and this analysis should be treated as preliminary and informational only. We strongly recommend that OWS's corporate counsel — or, if appropriate, outside corporate/finance counsel with expertise in credit facility compliance — evaluate the covenant implications promptly and in parallel with any decisions regarding the patent prosecution budget.

Additionally, C&H recommends that OWS consider proactive disclosure to Meridian National Bank regarding the status of the pending patent portfolio and the budget constraints affecting prosecution. OWS's relationship manager at Meridian, Brian Hartwell, should be consulted regarding the appropriate form and timing of any such disclosure. Proactive communication with lenders is generally advisable in situations where potential covenant compliance issues are identified, as it demonstrates good faith and may provide OWS with an opportunity to negotiate a waiver or amendment before a technical default occurs.

6. Budget Context and Authorization Request

C&H fully recognizes the financial pressures underlying the Project Lighthouse budget freeze, and we appreciate the difficult operating environment that OWS has navigated over the past eighteen months. We are aware that OWS's revenue declined from $68.1 million in fiscal year 2022 to $47.3 million in fiscal year 2023, and we understand that Veltrano Capital Partners, as majority equity holder, has implemented cost discipline measures across all portfolio company spending categories, including outside counsel fees.

However, the quarterly intellectual property spending cap of $25,000 imposed under Project Lighthouse is insufficient to address even the most critical of the upcoming prosecution deadlines. The estimated cost for the Application A1 response alone is $22,000 to $30,000, which would consume substantially all of a quarter's allocated budget even before accounting for the B1 response, the forthcoming EPO deadline on B3, or any other docket activity. The cap was presumably set based on assumptions about a steady-state, low-activity patent maintenance posture, but the accumulation of deferred deadlines over seventeen months of dormancy has created a compressed timeline in which multiple significant actions must be taken in rapid succession.

For context, C&H's average quarterly spend on this engagement prior to the budget freeze was approximately $87,400, which reflected an active prosecution posture across the twelve-application family. A full reactivation of the docket through mid-2026, encompassing all pending deadlines, is estimated at $220,000 to $295,000 in total, inclusive of C&H attorney fees, USPTO government fees, and foreign associate fees payable to Breitenfeld & Vogt and other international agents. We recognize that a full reactivation at pre-freeze spending levels may not be feasible under current financial conditions, and we are prepared to work with OWS and Veltrano Capital Partners to develop phased or selective prosecution approaches that prioritize the most critical filings within a more constrained budget framework. Not every pending application necessarily requires the same level of investment, and strategic triage can be employed to maximize portfolio preservation while managing costs.

That said, at an absolute minimum, OWS must authorize and fund the Application A1 response before March 9, 2025. This is not a deadline that can be deferred, managed, or worked around. It is a hard statutory bar, and the consequences of missing it are permanent and irreversible.

C&H respectfully requests that you, Marcus, in coordination with Sandra Koh (IP Manager), Daniel Everhart (Chief Financial Officer), and Veltrano Capital Partners' Christine Paulsen (Operating Partner, Technology), provide urgent written authorization to resume prosecution work on Application A1 immediately and on Application B1 in the near term. Given the complexity of the A1 response and the need for partner review of the draft, we require authorization no later than February 1, 2025, to ensure adequate time for the response to be finalized and filed before the March 9, 2025 deadline.

Finally, C&H notes that there is $56,958.50 in outstanding amounts on this matter, consisting of $34,218.50 in unbilled work-in-progress and $22,740.00 in unpaid invoices (specifically, Invoice No. 2023-07-04187 and Invoice No. 2023-08-04187, both of which are now more than sixteen months past due). While C&H is not conditioning continued service on immediate payment of the outstanding balance — and we remain committed to fulfilling our professional obligations to OWS regardless of billing status — we respectfully request that the parties address the outstanding arrears concurrently with the reactivation authorization. Our billing partner, Alan Ngo, is available to discuss payment arrangements at your convenience.

7. C&H's Ethical Obligations and Continuing Duties

I wish to be transparent about the professional obligations that compel this escalation. C&H has a continuing professional obligation to communicate to OWS the consequences of inaction on pending patent matters, regardless of the current dormancy status of the engagement or any outstanding billing disputes. This obligation exists independent of whether the client has expressly requested updates and independent of whether the engagement is considered "active" for billing or staffing purposes.

Under the California Rules of Professional Conduct, Rule 1.3 requires that a lawyer "shall not intentionally, repeatedly, or recklessly fail to act with reasonable diligence in representing a client." Rule 1.4 requires that a lawyer "reasonably consult with the client about the means by which the client's objectives are to be accomplished" and "keep the client reasonably informed about significant developments relating to the representation." The approaching abandonment of OWS's foundational patent applications is, by any measure, a significant development requiring prompt communication.

Similarly, under the USPTO rules of practice governing the conduct of registered patent practitioners, 37 C.F.R. § 11.103 requires that a practitioner "act with reasonable diligence and promptness in representing a client," and 37 C.F.R. § 11.104 requires that a practitioner "keep the client reasonably informed about the status of the matter" and "promptly comply with reasonable requests for information." These obligations apply with particular force in patent prosecution, where deadlines are statutory, absolute, and carry irreversible consequences.

This letter, and the December 2, 2024 letter from Christy Bauer to Sandra Koh, are sent in furtherance of these obligations. C&H has documented its communications regarding these deadlines and will continue to do so.

I wish to be unequivocal: if OWS does not authorize and fund prosecution of Application A1 before approximately February 15, 2025 — allowing adequate time for finalization, partner review, and filing of the response before the March 9, 2025 absolute deadline — the application will go abandoned by operation of law, and the rights cannot be recovered. The abandonment will be permanent. There is no mechanism under the patent statute or USPTO rules to revive an application that was abandoned due to a deliberate decision not to respond to an Office Action.

C&H urges OWS to treat this matter with the highest priority. I am available at any time — including evenings and weekends — to discuss the situation and to begin work immediately upon receipt of authorization.

8. Requested Next Steps

In light of the foregoing, C&H respectfully requests that OWS take the following actions on an expedited basis:

1. Immediate Written Authorization for A1 Prosecution. OWS must provide written authorization (with Veltrano Capital Partners' concurrence if required under the Project Lighthouse budget governance framework) to resume prosecution of Application A1 (U.S. Application No. 17/672,204). This authorization is needed no later than February 1, 2025, to allow adequate time for response preparation, partner review, and filing before the March 9, 2025 absolute deadline. Any delay beyond February 1 materially increases the risk that the response cannot be completed in time.

2. Authorization for B1 Prosecution. OWS should provide authorization to resume prosecution of Application B1 (U.S. Application No. 17/814,057), with the response to the restriction requirement due April 21, 2025. While less immediately urgent than A1, this authorization should be provided promptly to allow for orderly preparation and to avoid a repeat of the current emergency posture.

3. Scheduling of Conference Call. C&H requests that a conference call be scheduled among C&H (Catherine Bloom and Christy Bauer), OWS (Marcus Whitfield and Sandra Koh), and Veltrano Capital Partners (Christine Paulsen, Operating Partner, Technology) to discuss the full docket status, budget reactivation scenarios, and strategic triage across the twelve-application family. We suggest scheduling this call during the week of January 13, 2025, to ensure that discussions are well advanced before the February 1 authorization deadline for A1.

4. Resolution of Outstanding Invoices and WIP. OWS should arrange for payment or a payment plan for the $22,740.00 in outstanding invoices (Invoice Nos. 2023-07-04187 and 2023-08-04187), and should review the $34,218.50 in unbilled work-in-progress for invoicing. Alan Ngo, C&H's billing partner on this matter, is available to discuss arrangements at your or Daniel Everhart's convenience.

5. Engagement of Corporate/Finance Counsel for Covenant Analysis. OWS should promptly engage its corporate and/or finance counsel to evaluate the Meridian National Bank Credit Facility covenant implications outlined in Section 5 above, including the scope of Section 5.15, the definition of "Material intellectual Property," and the advisability of proactive disclosure to Meridian.

9. Conclusion

C&H remains fully committed to protecting OWS's valuable intellectual property portfolio and is ready to resume work promptly upon receipt of authorization. Our team — including Christy Bauer, who is intimately familiar with the prosecution history and the partially completed draft response for A1 — can mobilize on short notice to ensure that the critical deadlines are met.

The approaching deadlines are real, absolute, and carry irreversible consequences. The cost of acting is modest relative to the value at risk. The cost of inaction is permanent and incalculable.

I am available to discuss this matter at any time, and I welcome a call at your earliest convenience. You may reach me directly at (415) 392-7824 or by email at cbloom@calderwoodharkness.com. I cannot overstate the urgency of the situation: the March 9, 2025 deadline for Application A1 is an absolute statutory bar that cannot be extended, and the window for preparing an adequate response is closing rapidly.

I look forward to hearing from you.

Very truly yours,

CALDERWOOD & HARKNESS LLP

By: ________

Catherine Bloom Partner, intellectual Property Group USPTO Reg. No. 58,412 555 California Street, 42nd Floor San Francisco, CA 94104 Direct: (415) 392-7824 cbloom@calderwoodharkness.com

cc:

Sandra Koh, IP Manager / In-House Patent Counsel, Optiwave Semiconductor Corp. Alan Ngo, Billing Partner, Calderwood & Harkness LLP Christy Bauer, Lead Associate, Calderwood & Harkness LLP

Enclosures: None.

A comprehensive docket status memorandum and budget reactivation proposal will follow under separate cover, targeted for delivery on or about January 15, 2025.

CALDERWOOD & HARKNESS LLP 555 California Street, 42nd Floor San Francisco, CA 94104 Telephone: (415) 392-7800 Facsimile: (415) 392-7801 www.calderwoodharkness.com
intellectual Property Group
January 8, 2025
VIA EMAIL AND Sundial Data Systems
PRIVILEGED & CONFIDENTIAL — ATTORNEY-CLIENT COMMUNICATION
Marcus Whitfield, Esq. General Counsel Optiwave Semiconductor Corp. 4710 Ridgeview Parkway, Suite 300 Santa Clara, CA 95054
Re: Escalation — Imminent Critical Patent Prosecution Deadlines C&H Matter No. 1014-00005 Optiwave Semiconductor Corp. Patent Application Family (12 Pending Applications)
Dear Marcus:
1. Purpose and Urgency of This Letter
I write in my capacity as Responsible Partner for Calderwood & Harkness LLP's patent prosecution engagement with Optiwave Semiconductor Corp. ("OWS"), which was opened on February 14, 2022. The purpose of this letter is to escalate, at the General Counsel level, the increasingly urgent situation regarding imminent, irrevocable patent prosecution deadlines that will result in the permanent loss of patent rights for OWS if budget authorization is not obtained in the very near term.
This letter follows, and builds upon, the December 2, 2024 deadline warning letter sent by Christy Bauer, Lead Associate in our intellectual Property Group, to Sandra Koh, OWS's IP Manager and In-House Patent Counsel, regarding U.S. Application No. 17/672,204 ("Application A1"). As of the date of this letter, C&H has not received a substantive response to that communication authorizing resumed prosecution of A1, nor have we received any indication that authorization is forthcoming.
As you are aware, this matter has been effectively dormant since the Harborview Partners "Project Lighthouse" budget freeze took effect on August 11, 2023, which capped discretionary intellectual property spending at $25,000 per quarter. C&H's last billable activity on this engagement was September 6, 2023, when we filed a two-month extension of time for A1 with the United States Patent and Trademark Office. Since that date, no substantive prosecution work has been authorized, funded, or performed on any of the twelve pending applications in the OWS patent application family.
The situation has now reached a critical inflection point where continued inaction will cause irreversible and permanent harm to OWS's patent portfolio, its competitive position in the silicon-photonic modulator market, and potentially its compliance with material covenants under OWS's senior secured credit facility with Meridian National Bank, N.A. As detailed below, the most critical deadline — the absolute statutory bar for responding to the non-final Office Action in Application A1 — falls on March 9, 2025, approximately sixty (60) days from the date of this letter. No further extensions of time are available, and failure to respond by that date will result in permanent abandonment of the foundational application in OWS's core modulator architecture patent sub-family.
I am sending this letter directly to you as General Counsel because the gravity of the situation warrants executive-level attention and because the authorization required to resume prosecution exceeds the scope of authority that has been delegated to Sandra Koh under the Project Lighthouse framework. I urge you to treat this communication with the highest priority.
2. Summary of Imminent Critical Deadlines
The following is a summary of the most critical prosecution deadlines facing OWS's pending patent application portfolio. These are organized in order of urgency and severity.
2.1 Application A1 — U.S. App. No. 17/672,204 (HIGHEST PRIORITY)
Title: "Multi-Channel Silicon-Photonic Mach-Zehnder Modulator with Segmented Traveling-Wave Electrode Architecture"
Status: Non-final Office Action response due.
Absolute Deadline: March 9, 2025 — approximately sixty (60) days from the date of this letter.
This deadline represents a hard statutory bar under 35 U.S.C. § 133 and 37 C.F.R. § 1.136. All available extensions of time have been exhausted. As noted above, a two-month extension of time was purchased on September 6, 2023 for $640 in USPTO fees. Under the USPTO's rules, a maximum of six months of total response time is available for responding to a non-final Office Action (the initial three-month shortened statutory period plus a maximum of three additional months of extensions). By purchasing the two-month extension, two months of the available three-month extension period were consumed. The remaining one month of available extension time, combined with the passage of time since the extension was filed, yields a final absolute deadline of March 9, 2025. No further extensions are available under USPTO rules. This is a hard statutory bar that cannot be moved by any means.
Consequence of Missing This Deadline: Abandonment of the foundational U.S. non-provisional application in the core modulator architecture sub-family (Sub-Family A). Abandonment under these circumstances is permanent; the application cannot be revived through a petition because the failure to respond is not "unintentional" where the client has been repeatedly warned and has elected not to act due to budgetary constraints.
Priority Chain: Application A1 claims priority to Provisional Application No. 63/297,841, which was filed on January 10, 2022, and expired on January 10, 2023. Priority to the provisional application was preserved through the timely filing of the non-provisional Application A1 on January 9, 2023, one day before expiration of the twelve-month provisional filing period. This application is the parent application from which Application A2 (a continuation application) and Application A3 (a continuation-in-part application) depend for their respective priority dates and prosecution strategies. The loss of A1 would therefore have cascading consequences across the entire Sub-Family A prosecution effort.
Estimated Cost to Respond: The preparation and filing of a substantive response to the outstanding non-final Office Action in A1 is estimated to require between 40 and 55 attorney hours, translating to approximately $22,000 to $30,000 at the discounted hourly rates established in our engagement letter. In addition, depending on the prosecution strategy selected, USPTO fees of up to $2,000 may be required if a Request for Continued Examination ("RCE") is determined to be necessary based on the scope of amendments needed.
Status of Draft Response: A draft response to the non-final Office Action was in progress through August 2023, prepared by Christy Bauer under my supervision, but was incomplete at the time the Project Lighthouse budget freeze took effect. The draft had not yet undergone partner review and was left in an intermediate state. The existence of this draft partially reduces the total work needed to prepare and file the response; however, the draft must be thoroughly updated to account for intervening developments in the prosecution record, finalized, and subjected to full partner review before it can be filed. In addition, several of the arguments outlined in the draft require further refinement in light of newly cited prior art references identified in our preliminary review of recent Pinnacle Optics prosecution activity.
Key Substantive Issue: The response to the non-final Office Action involves critical claim amendments emphasizing OWS's tapered impedance-matching feature, which is the principal design-around feature that distinguishes OWS's modulator architecture over Pinnacle Optics, Inc.'s U.S. Patent No. 10,823,417 (issued November 3, 2020) and U.S. Patent No. 11,105,662. The claim amendments and supporting arguments are essential to securing allowable claims that provide OWS with both a defensive patent position and freedom-to-operate clearance for its commercial products. The strategic importance of this response is discussed in further detail in Section 3 below.
2.2 Application B1 — U.S. App. No. 17/814,057
Status: Restriction Requirement response due.
Extended Deadline: April 21, 2025 — approximately 103 days from the date of this letter.
A four-month emergency extension of time was filed by C&H on October 18, 2024, at a USPTO fee of $2,560. This extension was authorized by Sandra Koh as an emergency exception to the Project Lighthouse quarterly spending cap, recognizing the urgency of preserving this application. While this deadline is slightly less imminent than the March 9, 2025 deadline for A1, it is also approaching rapidly, and the response requires advance preparation and client decision-making regarding claim election.
Consequence of Missing This Deadline: Abandonment of the electrode fabrication process application, which is the lead application in Sub-Family B of OWS's pending patent portfolio. If B1 is abandoned, the planned divisional application B2 (U.S. Application No. 17/814,103), which is intended to cover the non-elected claims from the restriction requirement, cannot be filed because B2 depends entirely on B1 remaining a pending, non-abandoned application. The loss of B1 would therefore eliminate OWS's ability to obtain patent protection for both the elected and non-elected claim groups in the electrode fabrication process technology.
Estimated Cost to Respond: The preparation and filing of a response to the restriction requirement in B1 is estimated to require between 8 and 12 attorney hours, translating to approximately $4,500 to $6,750 at the engagement's discounted rates. No USPTO fee is required for a restriction response. However, it should be noted that additional work will be necessary after the restriction response is filed, including the preparation and filing of the divisional application B2 to preserve rights in the non-elected claim group, which will involve additional attorney time and USPTO filing fees.
2.3 Additional Near-Term Deadlines (Context)
Beyond the two highest-priority deadlines described above, OWS faces a series of additional prosecution deadlines that, while not as immediately imminent, will arrive in sequence over the coming months and require advance planning and budget authorization. These include:
• Application B3 (EP 23 741 682.3): Response to the European Patent Office ("EPO") extended European search report is due May 17, 2025. The estimated cost to prepare and file the response is $15,000 to $22,000, inclusive of fees payable to C&H's European foreign associate, Breitenfeld & Vogt (Munich), and EPO official fees.
• Applications A4 and A5 (PCT/US2023/010584 and PCT/US2023/010612): The deadline for national-phase entry under the Patent Cooperation Treaty is July 9, 2025, which is thirty (30) months from the January 10, 2022 priority date. This deadline applies to entry into any jurisdictions beyond Japan and Europe, which have already been entered. If OWS intends to pursue patent protection in additional jurisdictions — such as South Korea, China, Taiwan, or other commercially significant markets for silicon-photonic semiconductor components — the national-phase entry filings and associated government fees must be authorized and funded before this date. National-phase entry fees vary by jurisdiction but can be substantial when multiple countries are at issue.
• Applications B4 (JP 2024-542197) and C3 (JP 2024-542305): The deadline for filing examination requests with the Japan Patent Office ("JPO") is January 9, 2026. While this deadline is approximately twelve months away, JPO examination requests require strategic decisions regarding claim scope and prosecution approach, and the associated government fees must be budgeted in advance.
C&H will provide a comprehensive docket status report and deadline triage memorandum under separate cover, targeted for delivery on or about January 15, 2025. That memorandum will catalogue all pending deadlines across the twelve-application family, provide estimated costs for each action, and propose prioritization tiers to assist OWS and Veltrano Capital Partners in allocating available budget resources.
3. Strategic Consequences of Abandonment — Application A1
The loss of Application A1 would be particularly devastating to OWS's competitive position and intellectual property strategy, and I wish to ensure that the full implications are understood at the executive level before any decision — whether active or by default through inaction — is made.
As you may recall, C&H delivered a comprehensive freedom-to-operate ("FTO") analysis to OWS on October 14, 2022, in which we concluded that OWS's commercial silicon-photonic modulator products face a "moderate-to-high" risk of infringement of Pinnacle Optics, Inc.'s U.S. Patent No. 10,823,417 (issued November 3, 2020) absent the incorporation of specific design-around features. The FTO analysis identified Pinnacle's electrode-segmentation geometry claims as the primary source of infringement risk and recommended that OWS pursue a design-around strategy centered on the tapered impedance-matching feature that is unique to OWS's modulator architecture.
Application A1's pending claims are specifically drafted to claim around Pinnacle's electrode-segmentation geometry by specifying the distinct tapered impedance-matching feature as a critical claim limitation. These claims, if allowed, would provide OWS with a granted patent covering its design-around architecture, thereby establishing both a defensive patent position against Pinnacle and an affirmative intellectual property right in OWS's proprietary technology.
If Application A1 is abandoned, OWS permanently loses the ability to obtain patent claims covering the tapered-impedance design-around feature. This would leave OWS in the worst of both worlds: exposed to a potential infringement assertion by Pinnacle Optics with respect to the electrode-segmentation geometry, while simultaneously lacking any defensive patent position of its own in the relevant technology space. It is worth noting that Pinnacle Optics is represented by Cavanaugh Holt & Sayer LLP, a firm known for aggressive patent enforcement, and that Pinnacle's Vice President of intellectual Property, Howard Raines, has overseen an aggressive prosecution and enforcement campaign in the silicon-photonic modulator space. OWS's pending claims in A1 serve as a critical counterweight to Pinnacle's portfolio and provide OWS with meaningful leverage in the event of any future licensing negotiation, cross-licensing discussion, or litigation scenario.
Furthermore, Application A3 (the continuation-in-part, U.S. Application No. 17/672,489) depends on A1 for its priority chain and prosecution strategy. A3 incorporates additional disclosure relating to OWS's second-generation modulator architecture while relying on A1's earlier priority date for the foundational claim elements. The loss of A1 would therefore undermine A3's prosecution posture, potentially depriving A3's claims of their earliest priority date and exposing those claims to prior art that would otherwise be antedated.
In sum, the abandonment of A1 would create a cascading failure across OWS's most strategically important patent sub-family, with ramifications for competitive positioning, freedom-to-operate risk, licensing leverage, and the defensibility of related pending applications.
4. Portfolio Valuation Impact
The financial implications of allowing critical applications to go abandoned are significant and well-documented. Graystone Valuation Advisors, LLC, which was retained by Harborview Partners in connection with its investment in OWS, issued a comprehensive patent portfolio valuation report dated April 28, 2023. The report was prepared under the direction of Rebecca Thornton, the lead engagement partner at Graystone, and employed a combination of income-approach and market-comparable methodologies consistent with standard intellectual property valuation practices.
The Graystone report estimated the fair market value of OWS's entire patent portfolio — comprising thirty-one (31) issued U.S. utility patents plus the twelve (12) pending applications that are the subject of this engagement — at $38.5 million. Of that total valuation, approximately $12.2 million, or roughly 31.7% of the total portfolio value, was attributed to the pending application family that is the subject of this docket. The pending applications, particularly those in Sub-Family A (the core modulator architecture claims) and Sub-Family B (the electrode fabrication process claims), were identified in the Graystone report as key value drivers for OWS's portfolio due to their direct alignment with OWS's commercial product roadmap and their role in establishing freedom-to-operate relative to Pinnacle Optics' patent holdings.
Allowing Applications A1 and B1 to go abandoned would directly destroy a significant portion of that $12.2 million in assessed portfolio value. While a precise recalculation of the portfolio's value would require an updated appraisal, the qualitative conclusion is clear: the loss of the foundational applications in both Sub-Family A and Sub-Family B would substantially impair the value of the overall pending application family, both because of the intrinsic value of the claims at issue and because of the dependency of downstream applications (A2, A3, B2) on the continued viability of A1 and B1.
This destruction of portfolio value is strikingly disproportionate to the cost of preserving the applications. As detailed in Section 2, the combined immediate cost to respond to the outstanding Office Actions in A1 and B1 is estimated at approximately $26,500 to $36,750 in attorney fees and USPTO charges. Measured against millions of dollars in portfolio value at risk — to say nothing of the competitive and covenant-compliance consequences discussed elsewhere in this letter — the cost of resuming prosecution is modest by any reasonable standard. The ratio of preservation cost to value at risk is approximately 1:330 at the midpoint estimates, underscoring the extraordinary imprudence of allowing these applications to lapse for want of a comparatively small budget authorization.
5. Lender Covenant Compliance Concerns
I also wish to bring to your attention a concern that falls outside the scope of C&H's patent prosecution engagement but that, in our judgment, warrants immediate attention from OWS's corporate and finance counsel: the potential impact of patent application abandonment on OWS's compliance with the intellectual property covenants in its senior secured revolving credit facility.
As you know, OWS is party to a $55 million senior secured revolving credit facility with Meridian National Bank, N.A. (the "Credit Facility"), originally dated September 30, 2020, as amended and restated March 15, 2022. Section 5.15 of the Credit Agreement (Intellectual Property Covenants) requires OWS to "maintain, preserve, and protect all Material intellectual Property, including by timely prosecuting all pending patent applications and paying all required maintenance fees." This covenant imposes an affirmative obligation on OWS to take all steps necessary to preserve its patent portfolio, including through the timely filing of responses to USPTO Office Actions and restriction requirements.
In addition, the Security Agreement executed as Exhibit C to the Credit Agreement grants Meridian National Bank a first-priority security interest in all "Intellectual Property Collateral," defined to include "all patents, patent applications, and patent rights, whether now existing or hereafter acquired." Schedule 5.15(a) to the Credit Agreement was last updated on March 15, 2022, in connection with the amendment and restatement, and lists the patent portfolio as it existed at that time. While the twelve pending applications that are the subject of this engagement post-date the schedule update, they may fall within the general covenant language regarding "hereafter acquired" Intellectual property and the broad definition of "Material intellectual Property" set forth in Section 1.01 of the Credit Agreement. A determination of whether the pending applications constitute "Material intellectual Property" under the Credit Agreement would require analysis by OWS's corporate counsel, but given the Graystone valuation attributing $12.2 million in fair market value to these applications, the argument that they are "Material" is, in our judgment, strong.
As of December 31, 2024, the outstanding balance on the Revolving Credit Facility is $32.5 million, with $22.5 million in undrawn availability. Allowing pending patent applications to go abandoned may constitute a breach of Section 5.15 of the Credit Agreement and could trigger a default under the Credit Facility, with potentially severe consequences including acceleration of the outstanding balance, loss of further borrowing availability, and cross-default provisions that may affect other OWS financing arrangements.
C&H is preparing a more detailed lender covenant compliance analysis for OWS's review, but we are not OWS's corporate counsel and this analysis should be treated as preliminary and informational only. We strongly recommend that OWS's corporate counsel — or, if appropriate, outside corporate/finance counsel with expertise in credit facility compliance — evaluate the covenant implications promptly and in parallel with any decisions regarding the patent prosecution budget.
Additionally, C&H recommends that OWS consider proactive disclosure to Meridian National Bank regarding the status of the pending patent portfolio and the budget constraints affecting prosecution. OWS's relationship manager at Meridian, Brian Hartwell, should be consulted regarding the appropriate form and timing of any such disclosure. Proactive communication with lenders is generally advisable in situations where potential covenant compliance issues are identified, as it demonstrates good faith and may provide OWS with an opportunity to negotiate a waiver or amendment before a technical default occurs.
6. Budget Context and Authorization Request
C&H fully recognizes the financial pressures underlying the Project Lighthouse budget freeze, and we appreciate the difficult operating environment that OWS has navigated over the past eighteen months. We are aware that OWS's revenue declined from $68.1 million in fiscal year 2022 to $47.3 million in fiscal year 2023, and we understand that Veltrano Capital Partners, as majority equity holder, has implemented cost discipline measures across all portfolio company spending categories, including outside counsel fees.
However, the quarterly intellectual property spending cap of $25,000 imposed under Project Lighthouse is insufficient to address even the most critical of the upcoming prosecution deadlines. The estimated cost for the Application A1 response alone is $22,000 to $30,000, which would consume substantially all of a quarter's allocated budget even before accounting for the B1 response, the forthcoming EPO deadline on B3, or any other docket activity. The cap was presumably set based on assumptions about a steady-state, low-activity patent maintenance posture, but the accumulation of deferred deadlines over seventeen months of dormancy has created a compressed timeline in which multiple significant actions must be taken in rapid succession.
For context, C&H's average quarterly spend on this engagement prior to the budget freeze was approximately $87,400, which reflected an active prosecution posture across the twelve-application family. A full reactivation of the docket through mid-2026, encompassing all pending deadlines, is estimated at $220,000 to $295,000 in total, inclusive of C&H attorney fees, USPTO government fees, and foreign associate fees payable to Breitenfeld & Vogt and other international agents. We recognize that a full reactivation at pre-freeze spending levels may not be feasible under current financial conditions, and we are prepared to work with OWS and Veltrano Capital Partners to develop phased or selective prosecution approaches that prioritize the most critical filings within a more constrained budget framework. Not every pending application necessarily requires the same level of investment, and strategic triage can be employed to maximize portfolio preservation while managing costs.
That said, at an absolute minimum, OWS must authorize and fund the Application A1 response before March 9, 2025. This is not a deadline that can be deferred, managed, or worked around. It is a hard statutory bar, and the consequences of missing it are permanent and irreversible.
C&H respectfully requests that you, Marcus, in coordination with Sandra Koh (IP Manager), Daniel Everhart (Chief Financial Officer), and Veltrano Capital Partners' Christine Paulsen (Operating Partner, Technology), provide urgent written authorization to resume prosecution work on Application A1 immediately and on Application B1 in the near term. Given the complexity of the A1 response and the need for partner review of the draft, we require authorization no later than February 1, 2025, to ensure adequate time for the response to be finalized and filed before the March 9, 2025 deadline.
Finally, C&H notes that there is $56,958.50 in outstanding amounts on this matter, consisting of $34,218.50 in unbilled work-in-progress and $22,740.00 in unpaid invoices (specifically, Invoice No. 2023-07-04187 and Invoice No. 2023-08-04187, both of which are now more than sixteen months past due). While C&H is not conditioning continued service on immediate payment of the outstanding balance — and we remain committed to fulfilling our professional obligations to OWS regardless of billing status — we respectfully request that the parties address the outstanding arrears concurrently with the reactivation authorization. Our billing partner, Alan Ngo, is available to discuss payment arrangements at your convenience.
7. C&H's Ethical Obligations and Continuing Duties
I wish to be transparent about the professional obligations that compel this escalation. C&H has a continuing professional obligation to communicate to OWS the consequences of inaction on pending patent matters, regardless of the current dormancy status of the engagement or any outstanding billing disputes. This obligation exists independent of whether the client has expressly requested updates and independent of whether the engagement is considered "active" for billing or staffing purposes.
Under the California Rules of Professional Conduct, Rule 1.3 requires that a lawyer "shall not intentionally, repeatedly, or recklessly fail to act with reasonable diligence in representing a client." Rule 1.4 requires that a lawyer "reasonably consult with the client about the means by which the client's objectives are to be accomplished" and "keep the client reasonably informed about significant developments relating to the representation." The approaching abandonment of OWS's foundational patent applications is, by any measure, a significant development requiring prompt communication.
Similarly, under the USPTO rules of practice governing the conduct of registered patent practitioners, 37 C.F.R. § 11.103 requires that a practitioner "act with reasonable diligence and promptness in representing a client," and 37 C.F.R. § 11.104 requires that a practitioner "keep the client reasonably informed about the status of the matter" and "promptly comply with reasonable requests for information." These obligations apply with particular force in patent prosecution, where deadlines are statutory, absolute, and carry irreversible consequences.
This letter, and the December 2, 2024 letter from Christy Bauer to Sandra Koh, are sent in furtherance of these obligations. C&H has documented its communications regarding these deadlines and will continue to do so.
I wish to be unequivocal: if OWS does not authorize and fund prosecution of Application A1 before approximately February 15, 2025 — allowing adequate time for finalization, partner review, and filing of the response before the March 9, 2025 absolute deadline — the application will go abandoned by operation of law, and the rights cannot be recovered. The abandonment will be permanent. There is no mechanism under the patent statute or USPTO rules to revive an application that was abandoned due to a deliberate decision not to respond to an Office Action.
C&H urges OWS to treat this matter with the highest priority. I am available at any time — including evenings and weekends — to discuss the situation and to begin work immediately upon receipt of authorization.
8. Requested Next Steps
In light of the foregoing, C&H respectfully requests that OWS take the following actions on an expedited basis:
1. Immediate Written Authorization for A1 Prosecution. OWS must provide written authorization (with Veltrano Capital Partners' concurrence if required under the Project Lighthouse budget governance framework) to resume prosecution of Application A1 (U.S. Application No. 17/672,204). This authorization is needed no later than February 1, 2025, to allow adequate time for response preparation, partner review, and filing before the March 9, 2025 absolute deadline. Any delay beyond February 1 materially increases the risk that the response cannot be completed in time.
2. Authorization for B1 Prosecution. OWS should provide authorization to resume prosecution of Application B1 (U.S. Application No. 17/814,057), with the response to the restriction requirement due April 21, 2025. While less immediately urgent than A1, this authorization should be provided promptly to allow for orderly preparation and to avoid a repeat of the current emergency posture.
3. Scheduling of Conference Call. C&H requests that a conference call be scheduled among C&H (Catherine Bloom and Christy Bauer), OWS (Marcus Whitfield and Sandra Koh), and Veltrano Capital Partners (Christine Paulsen, Operating Partner, Technology) to discuss the full docket status, budget reactivation scenarios, and strategic triage across the twelve-application family. We suggest scheduling this call during the week of January 13, 2025, to ensure that discussions are well advanced before the February 1 authorization deadline for A1.
4. Resolution of Outstanding Invoices and WIP. OWS should arrange for payment or a payment plan for the $22,740.00 in outstanding invoices (Invoice Nos. 2023-07-04187 and 2023-08-04187), and should review the $34,218.50 in unbilled work-in-progress for invoicing. Alan Ngo, C&H's billing partner on this matter, is available to discuss arrangements at your or Daniel Everhart's convenience.
5. Engagement of Corporate/Finance Counsel for Covenant Analysis. OWS should promptly engage its corporate and/or finance counsel to evaluate the Meridian National Bank Credit Facility covenant implications outlined in Section 5 above, including the scope of Section 5.15, the definition of "Material intellectual Property," and the advisability of proactive disclosure to Meridian.
9. Conclusion
C&H remains fully committed to protecting OWS's valuable intellectual property portfolio and is ready to resume work promptly upon receipt of authorization. Our team — including Christy Bauer, who is intimately familiar with the prosecution history and the partially completed draft response for A1 — can mobilize on short notice to ensure that the critical deadlines are met.
The approaching deadlines are real, absolute, and carry irreversible consequences. The cost of acting is modest relative to the value at risk. The cost of inaction is permanent and incalculable.
I am available to discuss this matter at any time, and I welcome a call at your earliest convenience. You may reach me directly at (415) 392-7824 or by email at cbloom@calderwoodharkness.com. I cannot overstate the urgency of the situation: the March 9, 2025 deadline for Application A1 is an absolute statutory bar that cannot be extended, and the window for preparing an adequate response is closing rapidly.
I look forward to hearing from you.
Very truly yours,
CALDERWOOD & HARKNESS LLP
By: ________
Catherine Bloom Partner, intellectual Property Group USPTO Reg. No. 58,412 555 California Street, 42nd Floor San Francisco, CA 94104 Direct: (415) 392-7824 cbloom@calderwoodharkness.com
cc:
Sandra Koh, IP Manager / In-House Patent Counsel, Optiwave Semiconductor Corp. Alan Ngo, Billing Partner, Calderwood & Harkness LLP Christy Bauer, Lead Associate, Calderwood & Harkness LLP
Enclosures: None.
A comprehensive docket status memorandum and budget reactivation proposal will follow under separate cover, targeted for delivery on or about January 15, 2025.

CALDERWOOD & HARKNESS LLP

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