Contract analysis

I. PURPOSE AND OBJECTIVES A. Overview This outline has been prepared to assist in the substantive preparation of Dr. Kevin Fong for his deposition during the claim construction phase of Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD (N.D. Cal.). The deposition is being taken by counsel for Lumos Photonics, Inc. ("Lumos") as part of claim-construction-related discovery permitted unde

1. Elicit testimony consistent with OWS's proposed claim constructions. Dr. Fong, as a named inventor on three of the four asserted patents and a recognized expert in silicon photonics, is uniquely positioned to provide testimony about how a POSITA would understand the disputed claim terms. His testimony should affirmatively support the claim constructions set forth in OWS's Preliminary Claim Construction Contentions

2. Prepare Dr. Fong for anticipated cross-examination on prosecution history. Brannick Howell & Stein will attempt to use prosecution history — particularly claim amendments and applicant remarks made during prosecution of the '567 and '890 Patents — to narrow the scope of the disputed terms. Dr. Fong must be prepared to address prosecution history questions without conceding that amendments were made to impose struc

3. Ensure consistency with OWS's claim construction positions. Dr. Fong's testimony will in all likelihood be quoted extensively in the parties' opening and responsive claim construction briefs and may be cited at the Markman hearing. It is therefore essential that his testimony be precise, consistent with OWS's legal positions, and not susceptible to being taken out of context to support Lumos's narrower proposed co

II. WITNESS BACKGROUND AND CREDENTIALS A. Education and Professional History Dr. Kevin Fong received his Ph.D. in Electrical Engineering from Stanford University, with a dissertation focused on integrated photonic devices and waveguide design for silicon-on-insulator platforms. His doctoral work, conducted under the supervision of Professor David A.B. Miller in the Ginzton Laboratory, included pioneering research on

1. Document Review: Confirm that Dr. Fong has reviewed the complete patent specifications, all asserted claims, and the full prosecution file histories (including all office actions, responses, amendments, applicant remarks, examiner interviews, and notices of allowance) for each of the three patents on which he is a named inventor.

2. POSITA vs. Personal Understanding: Confirm that Dr. Fong understands the distinction between his personal understanding of the claim terms and the legally relevant standard — i.e., the understanding of a person of ordinary skill in the art. His testimony should be framed in terms of POSITA understanding whenever possible, while acknowledging that his personal understanding is informed by his extensive expertise.

3. General Deposition Conduct: Remind Dr. Fong of the following standard deposition guidelines: • Answer only the question asked. Do not volunteer additional information. • Listen carefully to the full question before answering. If a question is unclear or compound, ask for clarification. • Do not guess or speculate. If he does not know the answer to a question, he should say so. • Do not discuss litigation strategy,

4. Protective Order Compliance: Remind Dr. Fong of the Stipulated Protective Order entered by the Court in September 2022, which governs the treatment of confidential information produced by both parties. Dr. Fong should not disclose or discuss any materials designated as "CONFIDENTIAL" or "HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY" by Lumos during the deposition, except in accordance with the terms of the Protectiv

III. U.S. PATENT NO. 10,234,567 ('567 PATENT) — INTEGRATED WAVEGUIDE COUPLER A. Background of the Invention The '567 Patent is titled "Integrated Waveguide Coupler with Tapered Mode Converter for Silicon Photonics Platforms." The application was filed on March 14, 2017, and the patent issued on March 19, 2019. The named inventors are Dr. Kevin Fong, Dr. Priya Ramanathan, and Hideo Tanaka. Hideo Tanaka was employed at

1. Claim Language Claim 1 of the '567 Patent (independent) 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 principal disputed claim term in the '567 Patent. The parties' proposed constructions are as follows:

2. Competing Constructions OWS's Proposed Construction: "Coupled such that optical mode transitions occur without significant power loss." Lumos's Proposed Construction: "Coupled through a gradual, continuous taper that prevents excitation of higher-order modes throughout the entire transition region." The difference between these two constructions is significant. OWS's construction defines "adiabatically coupled" in

3. Preparation of Dr. Fong's Testimony Dr. Fong should be prepared to testify as follows: (a) His understanding of "adiabatically coupled" as used in the specification: Dr. Fong should testify that the '567 Patent specification describes the adiabatic coupling concept in functional terms — i.e., as a coupling mechanism that achieves mode transitions without significant power loss. While the specification includes emb

4. Anticipated BHS Attack Lines Counsel should prepare Dr. Fong for the following anticipated lines of attack from BHS: (a) Continuous taper argument: BHS will attempt to pin Dr. Fong to a definition of "adiabatic" that requires a "continuous" taper geometry. They may ask questions designed to elicit testimony such as: "Isn't it true that an adiabatic transition, by definition, requires that the waveguide geometry ch

5. Redirect Topics If Dr. Fong's cross-examination testimony on this point requires rehabilitation on redirect, the following topics should be addressed: • The specification's language describing the adiabatic principle in functional terms, with specific citations to column and line numbers; • Representative technical literature from the 2016–2017 period demonstrating that "adiabatic" was used in the field to describ

1. Overview of Prosecution The original claims as filed on March 14, 2017, did not include the term "adiabatically coupled." The claims recited an integrated optical coupler with a tapered silicon waveguide coupled to a silicon nitride waveguide layer, but without the "adiabatically" qualifier. The first office action rejected the claims over Tanaka, U.S. Patent No. 9,456,012, under 35 U.S.C. § 102(a)(1). The applica

2. Dr. Fong's Involvement in Prosecution Decisions Dr. Fong should be prepared to discuss his involvement in the prosecution of the '567 Patent, to the extent such discussion does not implicate privileged attorney-client communications. Specifically, BHS may ask whether Dr. Fong consulted with Ted Marchetti (VP of IP, Reg. Pat. Atty. No. 58,304) regarding the claim amendments made during prosecution. Dr. Fong may tes

3. Key Points for Testimony Dr. Fong should be prepared to testify that: • The distinction made during prosecution between the claimed invention and Tanaka's prior art was focused on the functional adiabatic coupling characteristic of the claimed coupler — i.e., the ability to achieve low-loss mode transitions — as distinguished from the prior art coupler, which did not achieve adiabatic performance; • The amendment

4. Coordination with Internal Analysis The testimony to be elicited from Dr. Fong on prosecution history should be coordinated with the internal memorandum on rebuttal of prosecution history estoppel arguments currently being prepared by Christy Bauer for the December 2022 briefing deadline. Any positions taken by Dr. Fong in deposition testimony should be consistent with the legal arguments that will be advanced in

5. Review of Applicant's Remarks Prior to the deposition, the team should carefully review the applicant's remarks filed during prosecution for any statements that could be used against OWS under the doctrine of prosecution history estoppel. In particular, the team should identify any language in which the applicant characterized the "adiabatic" limitation in structural terms (e.g., by reference to a "continuous" or

1. Background. U.S. Patent No. 9,456,012 (hereinafter "Tanaka") issued on September 6, 2016. Hideo Tanaka is the sole inventor of this patent, which he conceived and developed before joining OWS. Tanaka subsequently joined OWS as an engineer in approximately 2016 and became a co-inventor on the '567 Patent, which was filed on March 14, 2017. The chronology here is important and will be of significant interest to BHS:

2. Preparation of Dr. Fong's Testimony Dr. Fong should be prepared to testify about the following: (a) When OWS first became aware of Tanaka's prior patent: Dr. Fong should provide a clear answer about when he and OWS became aware of U.S. Patent No. 9,456,012. This may have occurred during the hiring process, as part of OWS's standard prior art review, or during the course of developing the '567 Patent invention. (b)

3. Anticipated BHS Arguments on Obviousness Although the deposition is limited to claim construction topics, BHS may attempt to probe the relationship between the '567 Patent and Tanaka's prior art in a manner designed to lay the groundwork for later obviousness arguments. In particular, BHS may ask whether the '567 Patent is an obvious modification of Tanaka's U.S. 9,456,012, especially when combined with Chen & Liu

2. Additional Disputed Terms Dr. Fong should be familiar with any other disputed terms from the '567 Patent identified in the Joint Claim Construction and Prehearing Statement filed on October 14, 2022. As of the preparation of this outline, the primary disputed term from the '567 Patent is "adiabatically coupled." However, the team should review the Joint Statement for any additional terms and prepare Dr. Fong accor

IV. U.S. PATENT NO. 10,891,234 ('234 PATENT) — GERMANIUM-ON-SILICON PHOTODETECTOR A. Background of the Invention The '234 Patent is titled "Germanium-on-Silicon Photodetector with Graded Buffer Layer for Enhanced Responsivity." The application was filed on September 8, 2017, and the patent issued on January 14, 2021. The named inventors are Dr. Kevin Fong and Dr. Amara Osei, who is a principal engineer at OWS. The as

1. Claim Language Claim 1 of the '234 Patent recites, in relevant part, a photodetector structure including a "graded buffer layer having a continuously varying germanium concentration" disposed between the silicon substrate and the germanium absorber layer.

2. Competing Constructions OWS's Proposed Construction: "A buffer layer in which the germanium concentration changes across the layer thickness." Lumos's Proposed Construction: "A buffer layer in which the germanium atomic fraction increases monotonically and without step changes from the silicon substrate interface to the absorber layer."

3. Significance of the Construction Dispute The difference between these constructions has direct implications for infringement. Lumos's LumosEdge and LumosBridge photodetector products use a step-graded SiGe buffer layer with four discrete composition steps, at germanium atomic fractions of 0.25, 0.50, 0.75, and 1.0 (i.e., pure germanium). Under OWS's broader construction, which encompasses buffer layers where the g

4. Preparation of Dr. Fong's Testimony Dr. Fong should be prepared to testify on the following points: (a) Understanding of "continuously varying germanium concentration" as used in the specification: Dr. Fong should testify that the term "continuously varying germanium concentration" as used in the '234 Patent specification describes a buffer layer in which the germanium concentration changes as a function of positi

5. Anticipated BHS Attack Lines (a) Specification vs. claim language distinction: BHS will press on the distinction between the specification, which describes both continuously graded and step-graded embodiments, and the claim language, which uses only the term "continuously varying." BHS will argue that the applicants deliberately chose "continuously varying" over a broader term (such as "graded") to distinguish the

6. Redirect Topics If Dr. Fong's cross-examination testimony requires rehabilitation: • Point to the specification's description of both continuously graded and step-graded embodiments, arguing that the specification is the best evidence of the meaning of the claim terms; • Explain that the inventors' intent, as reflected in the specification, was to cover the functional benefit of graded buffers generally; • Explain

1. Overview. The '234 Patent was allowed on the first office action after an examiner interview. No narrowing amendments were made during prosecution. This prosecution history is notable for what it does not contain: there is no prosecution history estoppel argument available to Lumos with respect to the '234 Patent claims.

2. Examiner Interview The examiner interview is potentially significant. Dr. Fong should be prepared to discuss what was communicated to the examiner during the interview, to the extent he was involved. In particular: • Who participated in the interview from OWS's side (e.g., Ted Marchetti, Dr. Fong, Dr. Osei)? • What technical arguments were presented to the examiner? • Were any representations made about the meanin

3. Absence of Narrowing Amendments The absence of narrowing amendments means that BHS cannot rely on prosecution history estoppel to narrow the claims. However, as noted above, this also means that BHS may argue that the claim language should be given its plain meaning, without any basis for broadening the interpretation beyond what the words "continuously varying" would naturally convey to a POSITA. E. Prior Art Cit

1. Nordlicht EP Application European Patent Application EP 3,234,567 A1, published August 2, 2017, by applicant Nordlicht Photonische GmbH, has been cited by Lumos under 35 U.S.C. § 102(a)(2) as prior art against the '234 Patent. Dr. Fong should be prepared to: • Describe the disclosures of the Nordlicht EP application at a high level; • Explain how the '234 Patent is distinguished from the Nordlicht EP application,

2. General State of the Art Dr. Fong should be prepared to provide POSITA-level testimony about the state of the art in germanium-on-silicon photodetector design circa September 2017, including the various approaches known in the field for managing lattice mismatch (continuously graded buffers, step-graded buffers, thermal cycling approaches, selective area growth), and the performance tradeoffs associated with each

V. U.S. PATENT NO. 11,312,890 ('890 PATENT) — DRIVER CIRCUIT ARCHITECTURE A. Background of the Invention The '890 Patent is titled "Driver Circuit Architecture for High-Speed Silicon Photonic Mach-Zehnder Modulators." The application was filed on November 15, 2018, and the patent issued on April 26, 2022. The named inventors are Dr. Kevin Fong and Rajesh Iyer, a circuit designer at OWS. The timing of the '890 Patent'

1. Prior art status: Whether the Iyer & Patel paper qualifies as prior art under § 102(a)(1) or falls within the § 102(b)(1) grace period exception. Under § 102(b)(1)(A), a disclosure made within one year before the effective filing date of a claimed invention is not prior art under § 102(a)(1) if the disclosure was made by the inventor or a joint inventor. If the paper was published within the one-year grace period

2. Differences between the paper and the patent: Even if the paper qualifies as prior art, the '890 Patent claims must be distinguished from the paper's disclosures. Dr. Fong should be prepared to articulate the specific differences between the co-design approach described in the paper and the co-integration architecture claimed in the patent.

3. Dr. Fong's awareness of the paper: Dr. Fong should be prepared to testify about whether he was aware of the Iyer & Patel paper at the time of filing the '890 Patent application, and what consideration, if any, was given to the paper's disclosures during the patent drafting and prosecution process. C. Key Disputed Claim Term: "pre-emphasis equalization stage electrically co-integrated with the modulator on a common

1. Claim Language Claim 1 of the '890 Patent recites, in relevant part, a driver circuit architecture comprising "a pre-emphasis equalization stage electrically co-integrated with the modulator on a common substrate."

2. Competing Constructions OWS's Proposed Construction: "An equalization circuit located on the same substrate as the modulator." Lumos's Proposed Construction: "An equalization circuit fabricated in the same semiconductor process as the modulator, sharing the same doping profiles and process layers, and electrically connected without bond wires, interposers, or package-level routing."

3. Significance of the Construction Dispute As with the '234 Patent, the construction dispute has direct infringement implications. Lumos's LumosBridge and LumosEdge products use a separate CMOS driver die that is flip-chip bonded to the silicon photonic modulator die via copper pillar micro-bumps. The driver and modulator are fabricated in separate semiconductor processes on separate substrates, and are then assembl

4. Preparation of Dr. Fong's Testimony Dr. Fong should be prepared to testify on the following points: (a) Understanding of "co-integrated" as used in the specification and claims: Dr. Fong should testify that the term "co-integrated" as used in the '890 Patent specification and claims means that the pre-emphasis equalization circuit and the Mach-Zehnder modulator are fabricated on a common substrate — i.e., they sha