Contract analysis

I. Witness Background and Biographical Information This section sets forth the background information we have been able to assemble regarding Hideo Tanaka from publicly available sources, patent records, employment records produced in discovery, and internal OWS documents. A significant portion of this information remains subject to confirmation at the deposition itself, and the questioning outlined below is designed

1. Full name, current address (for service purposes), and current employer.

2. Complete employment history from the completion of his education to the present, including dates, titles, and principal responsibilities at each position.

3. The identity of his employer at the time the '456,012 patent was filed and issued, and the nature of his work there.

4. The circumstances under which he joined OWS in 2016, including whether he was recruited by any specific individual (e.g., Dr. Kevin Fong or Dr. Priya Ramanathan).

5. The circumstances under which he departed OWS in 2019, including whether the departure was voluntary or involuntary, and whether there were any disputes related to his departure.

6. Any current or prior relationship, communication, or engagement with Lumos Photonics, Inc. or any of its officers, directors, employees, or agents.

7. Any current or prior relationship, communication, or engagement with Brannick Howell & Stein LLP or any of its attorneys, including Victoria Ashworth, Daniel Kowalski, and Dr. Raymond Ng. B. Educational Background Tanaka's academic credentials should be confirmed to establish his qualifications as a person of ordinary skill in the art ("POSITA") and to lay the foundation for his testimony regarding the meaning of

1. Undergraduate institution, degree, major, and year of graduation.

2. Graduate institution(s), degree(s), area(s) of specialization, thesis or dissertation topic(s), and year(s) of graduation.

3. Any postdoctoral research or visiting researcher positions.

4. Any continuing education, professional certifications, or industry training relevant to silicon photonics or integrated circuit design.

5. The names of any academic advisors or mentors whose work is relevant to the technologies at issue in this litigation. Establishing Tanaka's educational background serves a dual purpose. First, it confirms his qualifications to testify regarding the meaning of technical claim terms as understood by a POSITA at the time of the invention. Second, it may reveal connections to other researchers or institutions whose wo

II. Tanaka's Role in the Invention of the '567 Patent This section addresses Tanaka's involvement in the conception and reduction to practice of the invention claimed in U.S. Patent No. 10,234,567, which is at the center of this litigation. Understanding Tanaka's specific contributions, the timeline of the inventive process, and the relationship between the '567 Patent and Tanaka's prior art patent is essential to th

III. Understanding of Key Claim Terms — '567 Patent The primary purpose of this deposition within the claim construction discovery phase is to elicit Tanaka's understanding of the disputed claim terms in the '567 Patent, particularly the term "adiabatically coupled" as used in Claim 1. The parties' competing proposed constructions present starkly different visions of the scope of the patent claims, and Tanaka's testi

1. The Claim Language Claim 1 of the '567 Patent is the sole independent claim among those asserted by OWS. It recites, in relevant part: An integrated optical coupler comprising a tapered silicon waveguide having a tip width of less than 200 nanometers adiabatically coupled to a silicon nitride waveguide layer… The term "adiabatically coupled" is the most significant disputed claim term in this litigation. The parti

2. Tanaka's Understanding of "Adiabatically Coupled" The deposition should elicit Tanaka's understanding of the term "adiabatically coupled" as of the time of the invention (circa 2016–2017) and explore the basis for that understanding. The following lines of questioning should be pursued: General understanding. How does Tanaka define or understand the term "adiabatic" as used in the context of optical waveguide coup

3. Anticipated Opposing Counsel Strategy We anticipate that Lumos's counsel — likely Victoria Ashworth, who is lead BHS partner on the claim construction issues, and potentially Daniel Kowalski, who serves as associate — will seek to elicit testimony from Tanaka that supports Lumos's narrow construction of "adiabatically coupled." Specifically, we expect the following lines of attack: • Ashworth will attempt to estab

4. Preparation Points In preparation for the deposition, the following points should be emphasized with Tanaka (to the extent his honest recollection is consistent with these positions): • The term "adiabatic" in the silicon photonics field refers to a functional characteristic of the mode transition — specifically, that the transition is sufficiently slow and gradual (in terms of the optical mode profile) that optic

IV. The Prior Art Patent — U.S. Patent No. 9,456,012 (Tanaka et al.) Tanaka's '456,012 patent is the single most important prior art reference in this litigation. It was cited by the examiner during prosecution of the '567 Patent and was the basis for the claim narrowing that gave rise to the prosecution history estoppel arguments now being advanced by Lumos. Understanding the content and scope of the '456,012 patent

V. Prosecution History and Estoppel Issues The prosecution history of the '567 Patent is central to the claim construction dispute, and Lumos has raised prosecution history estoppel as a key defense. This section outlines the deposition questions designed to address these issues through Tanaka's testimony. A. Prosecution History of the '567 Patent As noted above, the '567 Patent application underwent two office actio

VI. Tanaka's Knowledge of the Accused Lumos Products While the primary focus of this deposition is claim construction rather than infringement, Tanaka's familiarity with the accused Lumos products and his technical opinions regarding those products may shed light on the scope and meaning of the disputed claim terms. Additionally, establishing Tanaka's knowledge of the accused products during the claim construction de

VII. State of the Art at the Time of Invention Establishing the state of the art in silicon photonics waveguide coupling at the time of the '567 Patent invention (circa 2016–2017) is important for claim construction because the meaning of claim terms is assessed from the perspective of a POSITA at the time of the invention. Tanaka, as both a POSITA and a named inventor, is uniquely positioned to provide testimony on

VIII. Tanaka's Departure from OWS Tanaka's departure from OWS in 2019 and his current relationship with the company are relevant to assessing his credibility, potential biases, and willingness to cooperate with OWS's litigation efforts. This section outlines the areas of inquiry designed to explore these issues. A. Circumstances of Departure • Tanaka was employed at OWS from approximately 2016 to 2019. The precise da

IX. Anticipated Cross-Examination Topics by Lumos's Counsel This section outlines the lines of questioning we anticipate from Lumos's counsel at BHS and provides preparation points designed to equip Tanaka to respond effectively while maintaining consistency with OWS's claim construction positions. A. Expected Approach by Victoria Ashworth / Daniel Kowalski (BHS) Victoria Ashworth is the lead partner at BHS responsib

X. Documents to Be Reviewed with Witness Pre-Deposition The following documents should be reviewed with Tanaka during the pre-deposition preparation session. This review serves the dual purpose of refreshing Tanaka's recollection regarding the relevant events and technical subject matter, and enabling counsel to assess the likely substance and tone of Tanaka's deposition testimony.

1. U.S. Patent No. 10,234,567 (the '567 Patent) — full specification, drawings, and claims, with particular attention to the description of the claimed waveguide coupler and the use of the term "adiabatically coupled" in the specification and claims.

2. U.S. Patent No. 9,456,012 (Tanaka prior art patent) — full specification, drawings, and claims, with particular attention to the disclosure of waveguide coupling structures and any use of the term "adiabatic" or related terminology.

3. File History of U.S. Patent No. 10,234,567 — complete file wrapper, including all office actions, amendments, applicant remarks, examiner interviews (if any), and the Notice of Allowance. Particular attention should be paid to the applicant's remarks submitted in connection with the Response to the Final Office Action and the RCE, which contain the representations regarding the "adiabatically coupled" limitation t

4. Chen & Liu, "Segmented Taper Coupler Design for Low-Loss Fiber-to-Chip Coupling," Journal of Photonic Integration, Vol. 14, No. 3, pp. 217–229 (2016) — the prior art publication cited by Lumos under § 103. Tanaka should be asked whether he was familiar with this publication at the time of the invention and whether he agrees or disagrees with its characterization of segmented taper couplers.

5. OWS's Preliminary Claim Construction Contentions (served September 12, 2022) — to ensure Tanaka is aware of OWS's proposed constructions and the bases therefor.

6. OWS's Responsive Claim Construction Contentions (served October 3, 2022) — to ensure Tanaka is aware of any refinements or modifications to OWS's positions.

7. Joint Claim Construction and Prehearing Statement (filed October 14, 2022) — to ensure Tanaka is aware of the agreed-upon and disputed claim terms, the parties' competing proposed constructions, and the intrinsic and extrinsic evidence each party intends to rely upon.

8. Laboratory notebooks, design files, and internal OWS memoranda reflecting Tanaka's contributions to the '567 Patent invention — to the extent such documents have been identified and produced in discovery. These documents will be essential for establishing th