Contract analysis

I. Introduction and Purpose This memorandum sets forth the discovery plan for the claim construction phase of Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD, pending before the Honorable Edward J. Torvelis in the United States District Court for the Northern District of California, San Jose Division. The purpose of this plan is to organize and prioritize the discovery activities nec

II. Key Disputed Claim Terms Driving discovery Based on the preliminary claim construction contentions exchanged on September 12, 2022, and our analysis of the patents-in-suit and the accused products, we have identified four claim terms that will be most consequential to the claim construction phase and that should receive the highest priority in discovery planning. While the Joint Claim Construction and Prehearing

III. Deposition Plan A. Depositions of OWS Named Inventors (Preparing Our Witnesses) Three OWS named inventors are likely to be the principal witnesses for claim construction purposes. We must prepare each of them thoroughly for both our affirmative use of their testimony and for defense against depositions noticed by Lumos. The following outlines our preparation plan for each inventor witness.

1. Dr. Kevin Fong — CTO & Co-Founder Dr. Kevin Fong is the Chief Technology Officer and Co-Founder of OWS. He is a named inventor on three of the four patents-in-suit: the '567 Patent, the '234 Patent, and the '890 Patent. His role as the technical leader of OWS and his deep involvement in the inventive work underlying three of the four asserted patents makes him the single most important witness in the claim constru

2. Hideo Tanaka — Former OWS Engineer (2016–2019) Hideo Tanaka is a named inventor on the '567 Patent only. His testimony presents the most complex and sensitive issues in the claim construction phase because he is also the inventor of the Tanaka prior art patent (U.S. Patent No. 9,456,012, issued September 6, 2016), which was cited by Lumos against the '567 Patent under 35 U.S.C. § 102(a)(1) and which prompted the n

3. Dr. Amara Osei — Principal Engineer Dr. Amara Osei is a Principal Engineer at OWS and a named inventor on the '234 Patent and the '678 Patent. Her deposition should be scheduled for late October 2022. Dr. Osei's preparation must cover the following topics: • '234 Patent — "Continuously Varying Germanium Concentration." This is the critical term for the '234 Patent. Dr. Osei must be prepared to testify regarding he

IV. Prosecution History Review A. Scope of Review A thorough review of the complete file histories for all four patents-in-suit is essential to the claim construction phase. The prosecution history is the most important intrinsic evidence source after the claims and specification themselves, and under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), it constitutes part of the public record of claim sc

V. Extrinsic Evidence Identification While intrinsic evidence—the claims, specification, and prosecution history—is the primary source for claim construction, extrinsic evidence plays an important supplementary role, particularly when intrinsic evidence alone does not resolve the meaning of a disputed claim term. Under Phillips, 415 F.3d at 1317–18, courts may consider extrinsic evidence such as expert testimony, inv

VI. Prior Art Analysis (Claim Construction Relevance) While prior art bears primarily on invalidity—an issue that will be fully developed during fact discovery, expert discovery, and summary judgment—certain prior art references are relevant to claim construction insofar as they inform the POSITA's understanding of the disputed claim terms. Under Phillips, courts may consider how a term is used in prior art reference

VII. Technical Tutorial Preparation The Court has indicated that it will permit each side to present a technical tutorial at the outset of the Markman hearing on January 30, 2023. Technical tutorials are a common feature of Markman hearings in patent cases involving complex technology, and they provide the Court with the scientific and engineering background necessary to understand the claim construction disputes. Th

1. Silicon Photonics Fundamentals. An introduction to silicon photonic integrated circuits, including the basic building blocks: optical waveguides, directional couplers, photodetectors, and modulators. This section should explain why silicon is used as a platform material (compatibility with CMOS fabrication, cost advantages, scalability) and the challenges associated with integrating active optical functions on sil

2. Adiabatic vs. Non-Adiabatic Mode Transitions in Waveguide Couplers. An explanation of the physics of optical mode coupling between waveguides, including the concept of adiabatic evolution of the optical mode along a tapered transition region. This section should explain the conditions under which a transition is considered "adiabatic" (gradual changes that allow the fundamental mode to evolve without exciting high

3. Germanium-on-Silicon Photodetector Architectures. An explanation of why germanium is integrated onto silicon for infrared photodetection (germanium's narrower bandgap allows absorption at telecommunications wavelengths), including the lattice mismatch challenge and the role of buffer layers in managing strain and defect density. This section should describe both continuously graded and step-graded buffer layer app

4. Monolithic vs. Heterogeneous Integration Techniques in Silicon Photonics. An explanation of the various approaches to integrating non-silicon components (such as III-V semiconductor gain elements) onto silicon photonic platforms. This section should describe monolithic integration (fabrication of all components on a single substrate in a single process flow), hybrid integration (assembly of separately fabricated c

5. Mach-Zehnder Modulator Driver Architectures. An explanation of how silicon photonic Mach-Zehnder modulators work and the role of the driver circuit in providing the electrical signals that modulate the optical signal. This section should describe co-integrated approaches (where the driver circuitry is fabricated on the same substrate as the modulator) and multi-chip approaches (where the driver is a separate chip

VIII. Coordination with Fact discovery The claim construction phase is proceeding concurrently with the early stages of fact discovery, and certain discovery activities will overlap and inform both tracks. Fact discovery Timeline. Lumos served its first set of document requests (ninety-eight requests) on November 7, 2022. OWS's first set of document requests to Lumos (one hundred twelve requests) is to be served on N