engagement-scope-amendment-letter.docx

1014-00005 · Optiwave Semiconductor Corp · Engagement & Administrative

engagement-scope-amendment-letter.docx DOCUMENT IP / Technology

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

June 1, 2023

Sandra Koh IP Manager / In-House Patent Counsel Optiwave Semiconductor Corp. 4710 Ridgeview Parkway, Suite 300 Santa Clara, CA 95054

Re: Amendment to Engagement Letter dated February 10, 2022 — Expansion of Patent Prosecution Scope to Include Sub-Family C (Packaging & Thermal Management) Applications C&H Matter No. 1014-00005

Dear Sandra:

1. Purpose and Reference to Original Engagement

This letter amends and supplements the engagement letter dated February 10, 2022 (the "Original Engagement Letter"), executed by Calderwood & Harkness LLP ("C&H") and countersigned by Marcus Whitfield, General Counsel of Optiwave Semiconductor Corp. ("OWS" or the "Company"), pursuant to which C&H was retained as outside intellectual property counsel to OWS for patent prosecution, portfolio strategy, and freedom-to-operate analysis. The Original Engagement Letter was assigned C&H Matter No. 1014-00005, and all work performed under this amendment shall continue to be administered under that same matter number.

As you are aware, the Original Engagement Letter defined the scope of C&H's representation to encompass a family of patent applications organized into two sub-families: Sub-Family A (Core Modulator Architecture) and Sub-Family B (Electrode Fabrication Process). All applications within Sub-Families A and B claim priority, directly or through one or more intermediate applications, ultimately to U.S. Provisional Application No. 63/297,841, filed January 10, 2022. C&H has been actively prosecuting the applications within these two sub-families since the inception of the engagement, and the prosecution of those applications remains ongoing.

OWS now wishes to expand the scope of C&H's representation to include a third group of related applications designated as Sub-Family C (Packaging & Thermal Management). The purpose of this amendment letter is to memorialize the terms under which C&H will undertake the prosecution of the Sub-Family C applications, to identify the specific applications encompassed by the expanded scope, and to confirm that all other terms and conditions of the Original Engagement Letter remain in full force and effect with respect to the entirety of the engagement. Except as expressly modified or supplemented herein, all capitalized terms used in this amendment letter shall have the meanings ascribed to them in the Original Engagement Letter.

2. Description of Sub-Family C Applications

2.1 Overview. Sub-Family C covers innovations in packaging and thermal management for OWS's next-generation silicon-photonics modulator architecture. These inventions are closely related to, and complement, the core modulator architecture inventions covered by Sub-Family A and the electrode fabrication process inventions covered by Sub-Family B. Specifically, the Sub-Family C inventions address the challenges of thermal dissipation, thermo-mechanical reliability, and compact packaging that arise in the context of integrating OWS's high-performance silicon-photonic modulators into commercially viable integrated circuit modules. The inclusion of Sub-Family C within the scope of C&H's representation will enable a unified prosecution strategy across all three sub-families, ensuring consistent claim scope, coordinated prosecution histories, and strategic alignment with OWS's broader patent portfolio objectives.

2.2 Named Inventors

The named inventors common to the Sub-Family C applications are as follows:

• Dr. Rajan Menon, Chief Executive Officer

• Dr. Lena Strickland, Vice President of Engineering

• Dr. Feng-Yi Chen, Principal Engineer

• Dr. Arjun Dasgupta, Senior Design Engineer

Each of the foregoing inventors has executed or will execute the requisite inventor declarations and assignment documents in favor of OWS, consistent with OWS's standard intellectual property assignment policies and as required by the applicable patent offices.

2.3 Applications Added to the Scope of the Engagement

The following three applications are hereby added to the scope of C&H's engagement with OWS. Together, these applications constitute Sub-Family C:

Application C1 — U.S. Non-Provisional Utility Application

• Application Number: U.S. Non-Provisional Application No. 18/102,776 (to be filed; currently in preparation as of the date of this letter)

• Jurisdiction: United States Patent and Trademark Office (USPTO)

• Application Type: U.S. Non-Provisional utility application under 35 U.S.C. § 111(a)

• Subject Matter: Packaging and thermal management for silicon-photonic integrated circuit modules, including novel approaches to heat-spreader integration, thermal interface materials, and module-level thermal design for high-bandwidth optical interconnects

• Status: As of the date of this letter, Application C1 is being prepared by C&H in coordination with OWS's engineering team. Filing is anticipated in the near term. Budget for the preparation and filing of Application C1 has been authorized under OWS's existing pre-freeze allocation for the 2023 fiscal year. For the avoidance of ambiguity, we note that Application C1 was ultimately filed on January 29, 2024, and all prosecution activities following such filing are encompassed within the scope of this amendment.

Application C2 — European Regional-Phase Application

• Application Number: EP 23 765 901.7

• Jurisdiction: European Patent Office (EPO)

• Application Type: European regional-phase entry derived from PCT Application No. PCT/US2023/010612, which corresponds to Application A5 in the existing docket maintained under the Original Engagement Letter

• Filing/Entry Date: July 8, 2023 (entry into the European regional phase is imminent as of the date of this letter; the national/regional-phase deadline has been calculated as thirty-one (31) months from the earliest priority date, in accordance with the applicable EPO timeline)

• Subject Matter: Corresponding European claims directed to packaging and thermal management innovations for silicon-photonic integrated circuit modules, as derived from the PCT application

• Foreign Associate: Breitenfeld & Vogt Patentanwälte PartGmbB ("B&V"), Leopoldstrasse 44, 80802 Munich, Germany. The lead attorney at B&V responsible for this matter is Dr. Matthias Vogt. C&H will serve as coordinating counsel and will oversee all EPO prosecution activities related to Application C2 in coordination with B&V. All substantive prosecution instructions to B&V will be issued by or through C&H, following consultation with OWS's in-house IP team as appropriate.

Application C3 — Japanese National-Phase Application

• Application Number: JP 2024-542305

• Jurisdiction: Japan Patent Office (JPO)

• Application Type: Japanese national-phase entry derived from PCT Application No. PCT/US2023/010612, which corresponds to Application A5 in the existing docket

• Filing/Entry Date: July 8, 2023 (entry into the Japanese national phase is imminent as of the date of this letter; the national-phase deadline has been calculated in accordance with applicable JPO rules and the Patent Cooperation Treaty)

• Subject Matter: Corresponding Japanese claims directed to packaging and thermal management innovations for silicon-photonic integrated circuit modules, as derived from the PCT application

• Foreign Associate: Nakashima & Togawa Patent Professional Corporation ("N&T"), 2-4-16 Toranomon, Minato-ku, Tokyo 105-0001, Japan. The lead attorney at N&T responsible for this matter is Kenji Nakashima. C&H will serve as coordinating counsel and will oversee all JPO prosecution activities related to Application C3 in coordination with N&T. All substantive prosecution instructions to N&T will be issued by or through C&H, following consultation with OWS's in-house IP team as appropriate.

Additional applications within Sub-Family C — including any continuation, continuation-in-part, or divisional applications that may arise from Applications C1, C2, or C3, and any further foreign filings derived from the same inventive subject matter — may be added to the scope of the engagement by mutual agreement between C&H and OWS, which agreement may be confirmed by email between Sandra Koh (or her designee) and Catherine Bloom (or her designee) without the necessity of a further formal amendment letter, unless OWS prefers otherwise.

3. Scope of Amended Representation

C&H's representation with respect to Sub-Family C will encompass the same categories of patent prosecution services as set forth in Section 3 of the Original Engagement Letter for Sub-Families A and B. For the avoidance of doubt, the scope of representation for the Sub-Family C applications includes, without limitation, the following:

(a) Preparation, Filing, and Prosecution of U.S. Utility Patent Applications. C&H will prepare, file, and prosecute U.S. utility patent applications before the USPTO on behalf of OWS, including Application C1 and any continuation, continuation-in-part, or divisional applications that may be filed in connection with the Sub-Family C subject matter.

(b) Coordination with Foreign Associates. C&H will coordinate with Breitenfeld & Vogt Patentanwälte PartGmbB (B&V) for European prosecution of Application C2 before the EPO, and with Nakashima & Togawa Patent Professional Corporation (N&T) for Japanese prosecution of Application C3 before the JPO. Such coordination will include the preparation and review of prosecution instructions, the review of search reports and examination opinions, and the strategic alignment of foreign prosecution with U.S. prosecution.

(c) Responding to Office Actions and Official Communications. C&H will prepare and file responses to office actions, examination reports, restriction requirements, and other official communications issued by the USPTO, and will coordinate with B&V and N&T for the preparation and filing of analogous responses before the EPO and JPO, respectively.

(d) Claim Drafting, Amendment, and Strategy. C&H will draft and amend claims for the Sub-Family C applications in coordination with OWS's in-house IP team (Sandra Koh, IP Manager / In-House Patent Counsel) and OWS's engineering team (Dr. Lena Strickland, VP Engineering), consistent with OWS's overall portfolio strategy and commercial objectives.

(e) Prosecution Strategy and Claim Differentiation. C&H will develop and implement prosecution strategy for the Sub-Family C applications consistent with the overarching patent prosecution plan outlined in C&H's Patent Prosecution Strategy Memorandum dated March 28, 2022 (the "Strategy Memo"), as that plan may be updated from time to time by mutual agreement. In particular, C&H will continue to pursue claim differentiation vis-à-vis Pinnacle Optics, Inc.'s U.S. Patent Nos. 10,823,417 and 11,105,662, which have been identified as potentially relevant prior art references in the silicon-photonics packaging and thermal management space.

(f) Docket Management. C&H will coordinate docket management for the Sub-Family C applications with Trident intellectual Property Services, LLC ("Trident IPS"), OWS's third-party docketing and annuity-payment service provider. The primary account manager at Trident IPS is Lisa Cheng. C&H will ensure that all filing dates, deadlines, and prosecution milestones for the Sub-Family C applications are accurately communicated to Trident IPS for inclusion in OWS's centralized docketing system.

Limitations on Scope. The scope of representation set forth in this amendment letter does not expand to include patent litigation, patent licensing negotiations, transactional intellectual property matters (including due diligence in connection with mergers, acquisitions, or financing transactions), post-grant proceedings (including inter partes review, post-grant review, or ex parte reexamination), or any other matter not specifically described in this Section 3 or in Section 3 of the Original Engagement Letter. Any such additional representation would require a separate engagement letter or a further amendment to the Original Engagement Letter, executed by both parties.

4. Engagement Team

The C&H engagement team for the expanded scope remains as designated in Section 4 of the Original Engagement Letter. The following individuals will be principally responsible for the prosecution of the Sub-Family C applications:

• Catherine Bloom — Responsible Partner, intellectual Property Group (USPTO Registration No. 58,412). Ms. Bloom serves as the relationship partner for the OWS engagement and maintains overall responsibility for all work product and strategic direction.

• Alan Ngo — Billing Partner, intellectual Property Group (USPTO Registration No. 61,877). Mr. Ngo serves as the billing partner for the engagement and is available to address any questions regarding invoicing, fee arrangements, or engagement administration.

• Christy Bauer — Lead Associate, intellectual Property Group (USPTO Registration No. 74,329). Ms. Bauer serves as the primary drafter for the OWS application family, including Sub-Family C. Ms. Bauer will have day-to-day responsibility for the preparation and prosecution of Application C1 and will coordinate with foreign associates on Applications C2 and C3.

• Peter Vassiliev — Working Associate, intellectual Property Group (USPTO Registration No. 79,514). Mr. Vassiliev is responsible for handling international filings and coordination with foreign associates. For the Sub-Family C applications, Mr. Vassiliev will serve as the primary point of contact for B&V and N&T with respect to Applications C2 and C3, under the supervision of Ms. Bauer and Ms. Bloom.

C&H reserves the right to assign additional attorneys or patent agents to the engagement as workload and staffing considerations may require, consistent with the terms of the Original Engagement Letter. OWS will be notified of any material changes to the engagement team.

5. Fee Arrangements

All fee terms set forth in Section 5 of the Original Engagement Letter dated February 10, 2022 shall continue to apply to the expanded scope of representation encompassed by this amendment letter, without modification. For reference, the applicable standard hourly rates and discounted rates for the 2023 calendar year are as set forth below.

Standard Hourly Rates (2023):

The ten percent (10%) volume discount negotiated in the Original Engagement Letter remains in full force and effect for all work performed under C&H Matter No. 1014-00005, including work performed in connection with the Sub-Family C applications. Application of the volume discount yields the following discounted rates:

discounted Hourly Rates (2023):

Disbursements. Government filing fees (including fees payable to the USPTO, EPO, and JPO), foreign associate fees (including fees of B&V and N&T), translation costs, and other out-of-pocket costs incurred by C&H in connection with the prosecution of the Sub-Family C applications will continue to be billed at cost, without markup, consistent with Section 5(c) of the Original Engagement Letter.

Foreign Associate Fees. With respect to Applications C2 and C3, the professional fees and disbursements of B&V and N&T, respectively, will be billed separately by those firms. Depending on the preference of OWS and the coordination arrangements established with Trident IPS and Sandra Koh, such fees may be invoiced through C&H or directly to OWS. C&H will provide estimated ranges for EPO and JPO prosecution costs in advance of significant filing milestones, including regional/national-phase entry, responses to examination reports, and grant/issuance fees, so that OWS may budget accordingly. Any questions regarding the billing arrangements for foreign associate fees should be directed to Alan Ngo or Sandra Koh.

Matter Number. All time, costs, and disbursements incurred in connection with the Sub-Family C applications will be billed under the existing C&H Matter No. 1014-00005. No separate matter number is required for Sub-Family C. Should OWS prefer sub-matter codes for internal tracking purposes, C&H is happy to accommodate that request upon notification.

6. Client Contacts and Communication Protocol

The primary client contact for the expanded engagement, including all matters relating to the Sub-Family C applications, shall be:

Sandra Koh IP Manager / In-House Patent Counsel Optiwave Semiconductor Corp. 4710 Ridgeview Parkway, Suite 300 Santa Clara, CA 95054

The following additional contacts may be consulted as needed in connection with the engagement:

• Marcus Whitfield, General Counsel, Optiwave Semiconductor Corp. — for engagement-level matters, including scope modifications, conflict issues, and overall engagement administration.

• Dr. Lena Strickland, Vice President of Engineering, Optiwave Semiconductor Corp. — for technical consultations regarding the packaging and thermal management subject matter covered by the Sub-Family C applications. Dr. Strickland (who is also a named inventor on the Sub-Family C applications) will be the primary technical resource for C&H's engagement team in connection with claim drafting, prior art analysis, and inventor-declaration matters for Sub-Family C.

• Daniel Everhart, Chief Financial Officer, Optiwave Semiconductor Corp. — for billing inquiries, invoice disputes, and payment-related matters.

All formal correspondence and invoices related to the engagement shall be directed to OWS at the following address:

Optiwave Semiconductor Corp. 4710 Ridgeview Parkway, Suite 300 Santa Clara, CA 95054

The communication protocols set forth in the Original Engagement Letter, including protocols for privileged and confidential communications, shall continue to apply to all communications relating to the Sub-Family C applications.

7. Conflict of Interest Confirmation

C&H confirms that it has conducted the requisite conflict-of-interest analysis in connection with the expansion of the engagement scope to include the Sub-Family C applications. Based on this analysis, C&H confirms that the expansion of scope to Sub-Family C does not raise any new conflict-of-interest issues beyond those that were previously cleared and disclosed in connection with the Original Engagement Letter and the internal conflict check memorandum dated February 7, 2022.

In particular, C&H confirms that it does not currently represent, and has not at any time during the period of the engagement represented, Pinnacle Optics, Inc. or any other party adverse to OWS in any matter relating to silicon-photonics intellectual property. C&H further confirms that no member of the engagement team identified in Section 4 above has any personal conflict of interest with respect to the Sub-Family C applications or the subject matter thereof.

Should any new conflict of interest arise during the course of the expanded engagement, C&H will promptly notify Sandra Koh and Marcus Whitfield and will address the conflict in accordance with the applicable Rules of Professional Conduct and the conflict-resolution procedures set forth in the Original Engagement Letter.

8. General Terms

All other terms and conditions of the Original Engagement Letter dated February 10, 2022, including without limitation provisions regarding confidentiality obligations, document retention and destruction policies, governing law (California), dispute resolution, professional liability limitations, and termination of the engagement, remain in full force and effect and are incorporated herein by reference as though set forth in full. This amendment letter is intended to supplement, and not to supersede, the Original Engagement Letter, except to the extent expressly provided herein.

In the event of any conflict or inconsistency between the provisions of this amendment letter and the provisions of the Original Engagement Letter, the provisions of this amendment letter shall control with respect to the expanded scope of representation (i.e., the Sub-Family C applications). For all other matters, the Original Engagement Letter shall continue to govern.

This amendment is effective as of the date first written above, June 1, 2023, and shall remain in effect until the conclusion or termination of the engagement in accordance with the terms of the Original Engagement Letter, as amended hereby.

We look forward to continuing our work with OWS on this important patent portfolio. The Sub-Family C applications represent a significant and commercially valuable extension of OWS's silicon-photonics intellectual property, and we are pleased to assist the Company in securing robust patent protection across the United States, Europe, and Japan. Please do not hesitate to contact me or Christy Bauer with any questions regarding this amendment or the prosecution of the Sub-Family C applications.

Very truly yours,

CALDERWOOD & HARKNESS LLP

By: ________

Catherine Bloom Responsible Partner, intellectual Property Group Calderwood & Harkness LLP

cc: Marcus Whitfield, General Counsel, Optiwave Semiconductor Corp. cc: Alan Ngo, Billing Partner, Calderwood & Harkness LLP

ACKNOWLEDGED AND AGREED

By signing below, the undersigned acknowledges and agrees to the terms set forth in this amendment letter, on behalf of Optiwave Semiconductor Corp., as authorized signatory per delegation from Marcus Whitfield, General Counsel.

OPTIWAVE SEMICONDUCTOR CORP.

By: ________

Name: Sandra Koh

Title: IP Manager / In-House Patent Counsel

Date: ________

Timekeeper Level	Standard Rate
Partner	$895.00/hour
Senior Associate	$625.00/hour
Associate	$475.00/hour
Timekeeper Level	Discounted Rate
Partner	$805.50/hour
Senior Associate	$562.50/hour
Associate	$427.50/hour

CALDERWOOD & HARKNESS LLP Attorneys at Law 555 California Street, 42nd Floor San Francisco, CA 94104 Telephone: (415) 392-7800 Facsimile: (415) 392-7801 www.calderwoodharkness.com
June 1, 2023
Sandra Koh IP Manager / In-House Patent Counsel Optiwave Semiconductor Corp. 4710 Ridgeview Parkway, Suite 300 Santa Clara, CA 95054
Re: Amendment to Engagement Letter dated February 10, 2022 — Expansion of Patent Prosecution Scope to Include Sub-Family C (Packaging & Thermal Management) Applications C&H Matter No. 1014-00005
Dear Sandra:
1. Purpose and Reference to Original Engagement
This letter amends and supplements the engagement letter dated February 10, 2022 (the "Original Engagement Letter"), executed by Calderwood & Harkness LLP ("C&H") and countersigned by Marcus Whitfield, General Counsel of Optiwave Semiconductor Corp. ("OWS" or the "Company"), pursuant to which C&H was retained as outside intellectual property counsel to OWS for patent prosecution, portfolio strategy, and freedom-to-operate analysis. The Original Engagement Letter was assigned C&H Matter No. 1014-00005, and all work performed under this amendment shall continue to be administered under that same matter number.
As you are aware, the Original Engagement Letter defined the scope of C&H's representation to encompass a family of patent applications organized into two sub-families: Sub-Family A (Core Modulator Architecture) and Sub-Family B (Electrode Fabrication Process). All applications within Sub-Families A and B claim priority, directly or through one or more intermediate applications, ultimately to U.S. Provisional Application No. 63/297,841, filed January 10, 2022. C&H has been actively prosecuting the applications within these two sub-families since the inception of the engagement, and the prosecution of those applications remains ongoing.
OWS now wishes to expand the scope of C&H's representation to include a third group of related applications designated as Sub-Family C (Packaging & Thermal Management). The purpose of this amendment letter is to memorialize the terms under which C&H will undertake the prosecution of the Sub-Family C applications, to identify the specific applications encompassed by the expanded scope, and to confirm that all other terms and conditions of the Original Engagement Letter remain in full force and effect with respect to the entirety of the engagement. Except as expressly modified or supplemented herein, all capitalized terms used in this amendment letter shall have the meanings ascribed to them in the Original Engagement Letter.
2. Description of Sub-Family C Applications
2.1 Overview.  Sub-Family C covers innovations in packaging and thermal management for OWS's next-generation silicon-photonics modulator architecture. These inventions are closely related to, and complement, the core modulator architecture inventions covered by Sub-Family A and the electrode fabrication process inventions covered by Sub-Family B. Specifically, the Sub-Family C inventions address the challenges of thermal dissipation, thermo-mechanical reliability, and compact packaging that arise in the context of integrating OWS's high-performance silicon-photonic modulators into commercially viable integrated circuit modules. The inclusion of Sub-Family C within the scope of C&H's representation will enable a unified prosecution strategy across all three sub-families, ensuring consistent claim scope, coordinated prosecution histories, and strategic alignment with OWS's broader patent portfolio objectives.
2.2 Named Inventors
The named inventors common to the Sub-Family C applications are as follows:
•  Dr. Rajan Menon, Chief Executive Officer
•  Dr. Lena Strickland, Vice President of Engineering
•  Dr. Feng-Yi Chen, Principal Engineer
•  Dr. Arjun Dasgupta, Senior Design Engineer
Each of the foregoing inventors has executed or will execute the requisite inventor declarations and assignment documents in favor of OWS, consistent with OWS's standard intellectual property assignment policies and as required by the applicable patent offices.
2.3 Applications Added to the Scope of the Engagement
The following three applications are hereby added to the scope of C&H's engagement with OWS. Together, these applications constitute Sub-Family C:
Application C1 — U.S. Non-Provisional Utility Application
•  Application Number: U.S. Non-Provisional Application No. 18/102,776 (to be filed; currently in preparation as of the date of this letter)
•  Jurisdiction: United States Patent and Trademark Office (USPTO)
•  Application Type: U.S. Non-Provisional utility application under 35 U.S.C. § 111(a)
•  Subject Matter: Packaging and thermal management for silicon-photonic integrated circuit modules, including novel approaches to heat-spreader integration, thermal interface materials, and module-level thermal design for high-bandwidth optical interconnects
•  Status: As of the date of this letter, Application C1 is being prepared by C&H in coordination with OWS's engineering team. Filing is anticipated in the near term. Budget for the preparation and filing of Application C1 has been authorized under OWS's existing pre-freeze allocation for the 2023 fiscal year. For the avoidance of ambiguity, we note that Application C1 was ultimately filed on January 29, 2024, and all prosecution activities following such filing are encompassed within the scope of this amendment.
Application C2 — European Regional-Phase Application
•  Application Number: EP 23 765 901.7
•  Jurisdiction: European Patent Office (EPO)
•  Application Type: European regional-phase entry derived from PCT Application No. PCT/US2023/010612, which corresponds to Application A5 in the existing docket maintained under the Original Engagement Letter
•  Filing/Entry Date: July 8, 2023 (entry into the European regional phase is imminent as of the date of this letter; the national/regional-phase deadline has been calculated as thirty-one (31) months from the earliest priority date, in accordance with the applicable EPO timeline)
•  Subject Matter: Corresponding European claims directed to packaging and thermal management innovations for silicon-photonic integrated circuit modules, as derived from the PCT application
•  Foreign Associate: Breitenfeld & Vogt Patentanwälte PartGmbB ("B&V"), Leopoldstrasse 44, 80802 Munich, Germany. The lead attorney at B&V responsible for this matter is Dr. Matthias Vogt. C&H will serve as coordinating counsel and will oversee all EPO prosecution activities related to Application C2 in coordination with B&V. All substantive prosecution instructions to B&V will be issued by or through C&H, following consultation with OWS's in-house IP team as appropriate.
Application C3 — Japanese National-Phase Application
•  Application Number: JP 2024-542305
•  Jurisdiction: Japan Patent Office (JPO)
•  Application Type: Japanese national-phase entry derived from PCT Application No. PCT/US2023/010612, which corresponds to Application A5 in the existing docket
•  Filing/Entry Date: July 8, 2023 (entry into the Japanese national phase is imminent as of the date of this letter; the national-phase deadline has been calculated in accordance with applicable JPO rules and the Patent Cooperation Treaty)
•  Subject Matter: Corresponding Japanese claims directed to packaging and thermal management innovations for silicon-photonic integrated circuit modules, as derived from the PCT application
•  Foreign Associate: Nakashima & Togawa Patent Professional Corporation ("N&T"), 2-4-16 Toranomon, Minato-ku, Tokyo 105-0001, Japan. The lead attorney at N&T responsible for this matter is Kenji Nakashima. C&H will serve as coordinating counsel and will oversee all JPO prosecution activities related to Application C3 in coordination with N&T. All substantive prosecution instructions to N&T will be issued by or through C&H, following consultation with OWS's in-house IP team as appropriate.
Additional applications within Sub-Family C — including any continuation, continuation-in-part, or divisional applications that may arise from Applications C1, C2, or C3, and any further foreign filings derived from the same inventive subject matter — may be added to the scope of the engagement by mutual agreement between C&H and OWS, which agreement may be confirmed by email between Sandra Koh (or her designee) and Catherine Bloom (or her designee) without the necessity of a further formal amendment letter, unless OWS prefers otherwise.
3. Scope of Amended Representation
C&H's representation with respect to Sub-Family C will encompass the same categories of patent prosecution services as set forth in Section 3 of the Original Engagement Letter for Sub-Families A and B. For the avoidance of doubt, the scope of representation for the Sub-Family C applications includes, without limitation, the following:
(a) Preparation, Filing, and Prosecution of U.S. Utility Patent Applications. C&H will prepare, file, and prosecute U.S. utility patent applications before the USPTO on behalf of OWS, including Application C1 and any continuation, continuation-in-part, or divisional applications that may be filed in connection with the Sub-Family C subject matter.
(b) Coordination with Foreign Associates. C&H will coordinate with Breitenfeld & Vogt Patentanwälte PartGmbB (B&V) for European prosecution of Application C2 before the EPO, and with Nakashima & Togawa Patent Professional Corporation (N&T) for Japanese prosecution of Application C3 before the JPO. Such coordination will include the preparation and review of prosecution instructions, the review of search reports and examination opinions, and the strategic alignment of foreign prosecution with U.S. prosecution.
(c) Responding to Office Actions and Official Communications. C&H will prepare and file responses to office actions, examination reports, restriction requirements, and other official communications issued by the USPTO, and will coordinate with B&V and N&T for the preparation and filing of analogous responses before the EPO and JPO, respectively.
(d) Claim Drafting, Amendment, and Strategy. C&H will draft and amend claims for the Sub-Family C applications in coordination with OWS's in-house IP team (Sandra Koh, IP Manager / In-House Patent Counsel) and OWS's engineering team (Dr. Lena Strickland, VP Engineering), consistent with OWS's overall portfolio strategy and commercial objectives.
(e) Prosecution Strategy and Claim Differentiation. C&H will develop and implement prosecution strategy for the Sub-Family C applications consistent with the overarching patent prosecution plan outlined in C&H's Patent Prosecution Strategy Memorandum dated March 28, 2022 (the "Strategy Memo"), as that plan may be updated from time to time by mutual agreement. In particular, C&H will continue to pursue claim differentiation vis-à-vis Pinnacle Optics, Inc.'s U.S. Patent Nos. 10,823,417 and 11,105,662, which have been identified as potentially relevant prior art references in the silicon-photonics packaging and thermal management space.
(f) Docket Management. C&H will coordinate docket management for the Sub-Family C applications with Trident intellectual Property Services, LLC ("Trident IPS"), OWS's third-party docketing and annuity-payment service provider. The primary account manager at Trident IPS is Lisa Cheng. C&H will ensure that all filing dates, deadlines, and prosecution milestones for the Sub-Family C applications are accurately communicated to Trident IPS for inclusion in OWS's centralized docketing system.
Limitations on Scope. The scope of representation set forth in this amendment letter does not expand to include patent litigation, patent licensing negotiations, transactional intellectual property matters (including due diligence in connection with mergers, acquisitions, or financing transactions), post-grant proceedings (including inter partes review, post-grant review, or ex parte reexamination), or any other matter not specifically described in this Section 3 or in Section 3 of the Original Engagement Letter. Any such additional representation would require a separate engagement letter or a further amendment to the Original Engagement Letter, executed by both parties.
4. Engagement Team
The C&H engagement team for the expanded scope remains as designated in Section 4 of the Original Engagement Letter. The following individuals will be principally responsible for the prosecution of the Sub-Family C applications:
•  Catherine Bloom — Responsible Partner, intellectual Property Group (USPTO Registration No. 58,412). Ms. Bloom serves as the relationship partner for the OWS engagement and maintains overall responsibility for all work product and strategic direction.
•  Alan Ngo — Billing Partner, intellectual Property Group (USPTO Registration No. 61,877). Mr. Ngo serves as the billing partner for the engagement and is available to address any questions regarding invoicing, fee arrangements, or engagement administration.
•  Christy Bauer — Lead Associate, intellectual Property Group (USPTO Registration No. 74,329). Ms. Bauer serves as the primary drafter for the OWS application family, including Sub-Family C. Ms. Bauer will have day-to-day responsibility for the preparation and prosecution of Application C1 and will coordinate with foreign associates on Applications C2 and C3.
•  Peter Vassiliev — Working Associate, intellectual Property Group (USPTO Registration No. 79,514). Mr. Vassiliev is responsible for handling international filings and coordination with foreign associates. For the Sub-Family C applications, Mr. Vassiliev will serve as the primary point of contact for B&V and N&T with respect to Applications C2 and C3, under the supervision of Ms. Bauer and Ms. Bloom.
C&H reserves the right to assign additional attorneys or patent agents to the engagement as workload and staffing considerations may require, consistent with the terms of the Original Engagement Letter. OWS will be notified of any material changes to the engagement team.
5. Fee Arrangements
All fee terms set forth in Section 5 of the Original Engagement Letter dated February 10, 2022 shall continue to apply to the expanded scope of representation encompassed by this amendment letter, without modification. For reference, the applicable standard hourly rates and discounted rates for the 2023 calendar year are as set forth below.
Standard Hourly Rates (2023):
The ten percent (10%) volume discount negotiated in the Original Engagement Letter remains in full force and effect for all work performed under C&H Matter No. 1014-00005, including work performed in connection with the Sub-Family C applications. Application of the volume discount yields the following discounted rates:
discounted Hourly Rates (2023):
Disbursements. Government filing fees (including fees payable to the USPTO, EPO, and JPO), foreign associate fees (including fees of B&V and N&T), translation costs, and other out-of-pocket costs incurred by C&H in connection with the prosecution of the Sub-Family C applications will continue to be billed at cost, without markup, consistent with Section 5(c) of the Original Engagement Letter.
Foreign Associate Fees. With respect to Applications C2 and C3, the professional fees and disbursements of B&V and N&T, respectively, will be billed separately by those firms. Depending on the preference of OWS and the coordination arrangements established with Trident IPS and Sandra Koh, such fees may be invoiced through C&H or directly to OWS. C&H will provide estimated ranges for EPO and JPO prosecution costs in advance of significant filing milestones, including regional/national-phase entry, responses to examination reports, and grant/issuance fees, so that OWS may budget accordingly. Any questions regarding the billing arrangements for foreign associate fees should be directed to Alan Ngo or Sandra Koh.
Matter Number. All time, costs, and disbursements incurred in connection with the Sub-Family C applications will be billed under the existing C&H Matter No. 1014-00005. No separate matter number is required for Sub-Family C. Should OWS prefer sub-matter codes for internal tracking purposes, C&H is happy to accommodate that request upon notification.
6. Client Contacts and Communication Protocol
The primary client contact for the expanded engagement, including all matters relating to the Sub-Family C applications, shall be:
Sandra Koh IP Manager / In-House Patent Counsel Optiwave Semiconductor Corp. 4710 Ridgeview Parkway, Suite 300 Santa Clara, CA 95054
The following additional contacts may be consulted as needed in connection with the engagement:
•  Marcus Whitfield, General Counsel, Optiwave Semiconductor Corp. — for engagement-level matters, including scope modifications, conflict issues, and overall engagement administration.
•  Dr. Lena Strickland, Vice President of Engineering, Optiwave Semiconductor Corp. — for technical consultations regarding the packaging and thermal management subject matter covered by the Sub-Family C applications. Dr. Strickland (who is also a named inventor on the Sub-Family C applications) will be the primary technical resource for C&H's engagement team in connection with claim drafting, prior art analysis, and inventor-declaration matters for Sub-Family C.
•  Daniel Everhart, Chief Financial Officer, Optiwave Semiconductor Corp. — for billing inquiries, invoice disputes, and payment-related matters.
All formal correspondence and invoices related to the engagement shall be directed to OWS at the following address:
Optiwave Semiconductor Corp. 4710 Ridgeview Parkway, Suite 300 Santa Clara, CA 95054
The communication protocols set forth in the Original Engagement Letter, including protocols for privileged and confidential communications, shall continue to apply to all communications relating to the Sub-Family C applications.
7. Conflict of Interest Confirmation
C&H confirms that it has conducted the requisite conflict-of-interest analysis in connection with the expansion of the engagement scope to include the Sub-Family C applications. Based on this analysis, C&H confirms that the expansion of scope to Sub-Family C does not raise any new conflict-of-interest issues beyond those that were previously cleared and disclosed in connection with the Original Engagement Letter and the internal conflict check memorandum dated February 7, 2022.
In particular, C&H confirms that it does not currently represent, and has not at any time during the period of the engagement represented, Pinnacle Optics, Inc. or any other party adverse to OWS in any matter relating to silicon-photonics intellectual property. C&H further confirms that no member of the engagement team identified in Section 4 above has any personal conflict of interest with respect to the Sub-Family C applications or the subject matter thereof.
Should any new conflict of interest arise during the course of the expanded engagement, C&H will promptly notify Sandra Koh and Marcus Whitfield and will address the conflict in accordance with the applicable Rules of Professional Conduct and the conflict-resolution procedures set forth in the Original Engagement Letter.
8. General Terms
All other terms and conditions of the Original Engagement Letter dated February 10, 2022, including without limitation provisions regarding confidentiality obligations, document retention and destruction policies, governing law (California), dispute resolution, professional liability limitations, and termination of the engagement, remain in full force and effect and are incorporated herein by reference as though set forth in full. This amendment letter is intended to supplement, and not to supersede, the Original Engagement Letter, except to the extent expressly provided herein.
In the event of any conflict or inconsistency between the provisions of this amendment letter and the provisions of the Original Engagement Letter, the provisions of this amendment letter shall control with respect to the expanded scope of representation (i.e., the Sub-Family C applications). For all other matters, the Original Engagement Letter shall continue to govern.
This amendment is effective as of the date first written above, June 1, 2023, and shall remain in effect until the conclusion or termination of the engagement in accordance with the terms of the Original Engagement Letter, as amended hereby.
We look forward to continuing our work with OWS on this important patent portfolio. The Sub-Family C applications represent a significant and commercially valuable extension of OWS's silicon-photonics intellectual property, and we are pleased to assist the Company in securing robust patent protection across the United States, Europe, and Japan. Please do not hesitate to contact me or Christy Bauer with any questions regarding this amendment or the prosecution of the Sub-Family C applications.
Very truly yours,
CALDERWOOD & HARKNESS LLP
By: ________
Catherine Bloom Responsible Partner, intellectual Property Group Calderwood & Harkness LLP
cc: Marcus Whitfield, General Counsel, Optiwave Semiconductor Corp. cc: Alan Ngo, Billing Partner, Calderwood & Harkness LLP
ACKNOWLEDGED AND AGREED
By signing below, the undersigned acknowledges and agrees to the terms set forth in this amendment letter, on behalf of Optiwave Semiconductor Corp., as authorized signatory per delegation from Marcus Whitfield, General Counsel.
OPTIWAVE SEMICONDUCTOR CORP.
By: ________
Name: Sandra Koh
Title: IP Manager / In-House Patent Counsel
Date: ________
Timekeeper Level | Standard Rate
Partner | $895.00/hour
Senior Associate | $625.00/hour
Associate | $475.00/hour
Timekeeper Level | Discounted Rate
Partner | $805.50/hour
Senior Associate | $562.50/hour
Associate | $427.50/hour

CALDERWOOD & HARKNESS LLP

ACKNOWLEDGED AND AGREED

OPTIWAVE SEMICONDUCTOR CORP.

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