Contract analysis

I. INTRODUCTION Pursuant to Patent Local Rule 4-3, the Parties submit this Joint Claim Construction and Prehearing Statement to assist the Court in resolving the claim construction disputes in this action. The Parties have complied with the requirements of the Patent Local Rules as follows: On September 12, 2022, both Parties exchanged their respective Preliminary Claim Construction Contentions pursuant to Patent Loc

II. IDENTIFICATION OF THE PARTIES A. Plaintiff Optiwave Semiconductor Corp. Plaintiff Optiwave Semiconductor Corp. ("OWS") is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 2775 Augustine Drive, Suite 400, San Jose, California 95054. OWS is a fabless semiconductor design company that specializes in the design and development of silicon pho

III. ACCUSED PRODUCTS Plaintiff OWS alleges that the following Lumos products infringe one or more claims of the patents-in-suit:

1. LumosBridge™ 800G Optical Engine. The LumosBridge™ 800G Optical Engine is a co-packaged optics ("CPO") engine designed for integration with hyperscale data center switch ASICs. The LumosBridge™ 800G Optical Engine provides 800 Gbps aggregate bandwidth using eight lanes of 100G-per-lambda PAM4 signaling, and incorporates silicon photonics transmit and receive optical elements on a single silicon die, including sili

2. LumosEdge™ 400ZR+ Pluggable Transceiver. The LumosEdge™ 400ZR+ Pluggable Transceiver is a QSFP-DD form factor pluggable optical transceiver module designed for metro and data center interconnect ("DCI") applications. The LumosEdge™ 400ZR+ Pluggable Transceiver provides 400 Gbps aggregate bandwidth using four wavelength channels of coherent DP-16QAM signaling, and incorporates silicon photonics transmit and receive

IV. AGREED CLAIM CONSTRUCTIONS The Parties have met and conferred in good faith regarding the construction of claim terms in the asserted claims of the four patents-in-suit. Despite extensive negotiations, the Parties were unable to reach agreement on the construction of any of the eleven disputed claim terms identified in Section V below. The Parties do, however, agree that all claim terms in the asserted claims tha

V. DISPUTED CLAIM TERMS The Parties dispute the construction of eleven (11) claim terms across the four patents-in-suit. The disputed terms are organized below patent-by-patent. For each disputed term, the Parties present: (1) the claim term at issue; (2) the claim or claims in which the term appears; (3) the context of the term within the relevant claim language; (4) Plaintiff OWS's proposed construction; (5) Defend

VI. PLAINTIFF'S IDENTIFICATION OF EXTRINSIC EVIDENCE Pursuant to Patent Local Rule 4-3, Plaintiff OWS identifies the following extrinsic evidence that it intends to rely upon in support of its proposed claim constructions. A. Expert Testimony OWS intends to rely on the testimony of Dr. Harold Whitfield in support of its proposed claim constructions. Dr. Whitfield holds a Ph.D. in Electrical Engineering with a special

1. L. Chrostowski & M. Hochberg, Silicon Photonics Design: From Devices to Systems (Cambridge University Press, 2015).

2. G.T. Predding & A.P. Knights, Silicon Photonics: An Introduction (Crowne Albany Industries, 2004).

3. T. Baehr-Jones et al., "Myths and Rumours of Silicon Photonics," Nature Photonics, Vol. 6, pp. 206–208 (2012).

4. A. Yariv & P. Yeh, Photonics: Optical Electronics in Modern Communications (Oxford University Press, 6th ed. 2007) (particularly Chapter 13, discussing adiabatic mode coupling and mode transition in waveguide structures).

5. IEEE Standard Dictionary of Electrical and Electronics Terms (7th ed., IEEE, 2000).

6. R. Soref, "The Past, Present, and Future of Silicon Photonics," IEEE Journal of Selected Topics in Quantum Electronics, Vol. 12, No. 6, pp. 1678–1687 (2006).

7. J. Michel, J. Liu & L.C. Kimerling, "High-Performance Ge-on-Si Photodetectors," Nature Photonics, Vol. 4, pp. 527–534 (2010) (discussing germanium-on-silicon photodetector architectures, epitaxial growth techniques, and buffer layer designs).

8. D. Thomson et al., "Roadmap on Silicon Photonics," Journal of Optics, Vol. 18, 073003 (2016).

9. S. Rumley et al., "Silicon Photonics for Exascale Systems," Journal of Lightwave Technology, Vol. 33, No. 3, pp. 547–562 (2015).

10. J.S. Orcutt et al., "Monolithic Silicon Photonics," in Optical Fiber Communication Conference (2012) (discussing the meaning and scope of "monolithic integration" in the context of silicon photonics).

11. M. Asghari & A.V. Krishnamoorthy, "Silicon Photonics: Energy-Efficient Communication," Nature Photonics, Vol. 5, pp. 268–270 (2011). OWS reserves the right to identify additional technical references and treatises in its Opening Claim Construction Brief. C. Prosecution History OWS intends to rely upon the complete file histories of all four patents-in-suit, including all office actions, applicant responses, amend

1. Tanaka et al., U.S. Patent No. 9,456,012, "Segmented Waveguide Coupler for Photonic Integration," issued September 6, 2016. This reference is relevant to understanding the scope of "adiabatically coupled" in the context of the '567 Patent prosecution, as it was the primary prior art reference over which the applicants amended the claims.

2. 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). This reference discusses segmented taper coupler designs and distinguishes them from adiabatic taper couplers, providing context for the technical distinction between these approaches.

3. European Patent Application EP 3,234,567 A1, "Graded Germanium Buffer for Infrared Photodetection," published August 2, 2017 (applicant: Nordlicht Photonische GmbH). This reference is relevant to the understanding of "continuously varying" germanium concentration in the context of the '234 Patent.

4. Iyer & Patel, "Co-Design of Modulator Drivers and Silicon Photonic Mach-Zehnder Structures," IEEE Transactions on Circuits and Systems, Vol. 65, No. 8, pp. 2701–2713 (2018). This reference discusses the concept of co-integration of driver circuits with silicon photonic modulators and is relevant to the understanding of "co-integrated" and "common substrate" in the context of the '890 Patent. OWS reserves the right

VII. DEFENDANT'S IDENTIFICATION OF EXTRINSIC EVIDENCE Pursuant to Patent Local Rule 4-3, Defendant Lumos identifies the following extrinsic evidence that it intends to rely upon in support of its proposed claim constructions. A. Expert Testimony Lumos intends to rely on the testimony of Dr. Raymond Ng in support of its proposed claim constructions. Dr. Ng holds a Ph.D. in Photonics from the University of Colorado Bou

1. K. Okamoto, Fundamentals of Optical Waveguides (Academic Press, 2nd ed. 2006) (particularly Chapter 9, discussing adiabatic mode coupling and the conditions for adiabatic mode transition, including the requirement of gradual, continuous transitions that prevent higher-order mode excitation).

2. R. Adar et al., "Adiabatic 3-dB Couplers, Filters, and Multiplexers Made with Silica Waveguides on Silicon," Journal of Lightwave Technology, Vol. 10, No. 1, pp. 46–50 (1992) (defining "adiabatic" coupling in the waveguide context as requiring gradual transitions that maintain single-mode operation).

3. A. Novack et al., "Germanium Photodetector with 60 GHz Bandwidth Using Thin Film Transfer," Optics Express, Vol. 21, No. 23, pp. 28387–28393 (2013) (distinguishing epitaxially grown germanium-on-silicon from wafer-bonded germanium, supporting the distinction relevant to Disputed Term 6).

4. D. Liang & J.E. Bowers, "Recent Progress in Lasers on Silicon," Nature Photonics, Vol. 4, pp. 511–517 (2010) (defining the terms "monolithic" and "heterogeneous" integration in the context of photonics on silicon, supporting a narrow construction of "monolithically formed").

5. M. Streshinsky et al., "Monolithically Integrated High-Speed CMOS Photonic Transceivers," in Proceedings of the 5th International Conference on Group IV Photonics (2008) (discussing monolithic integration as fabrication within a single process flow on a single substrate, as distinguished from heterogeneous integration techniques).

6. P. Dong et al., "Silicon Photonic Devices and Integrated Circuits," Nanophotonics, Vol. 3, No. 4–5, pp. 215–228 (2014).

7. T.H. Lee, The Design of CMOS Radio-Frequency Integrated Circuits (Cambridge University Press, 2nd ed. 2004) (discussing the meaning of "co-integrated" in the context of circuit design as referring to fabrication in the same process flow with shared process layers).

8. Sterling Reach Industries Dictionary of Scientific and Technical Terms (6th ed., Sterling Reach Industries, 2003) (defining relevant terms including "adiabatic," "monolithic," and "substrate"). Lumos reserves the right to identify additional technical references and treatises in its Responsive Claim Construction Brief. C. Prosecution History Lumos intends to rely upon the same complete file histories of all four p

1. Tanaka et al., U.S. Patent No. 9,456,012 (issued September 6, 2016). Lumos will rely on this reference to demonstrate the scope of subject matter disclaimed during prosecution of the '567 Patent. The Tanaka reference discloses a segmented waveguide taper coupler, and the applicants distinguished the '567 Patent claims from Tanaka by adding the "adiabatically coupled" limitation and arguing that the Tanaka coupler

2. European Patent Application EP 3,234,567 A1 (published August 2, 2017; applicant: Nordlicht Photonische GmbH). Lumos will rely on this reference to support its understanding of "continuously varying" in the context of germanium buffer layers, as the Nordlicht reference distinguishes between "continuously varying" (smooth gradient) and "step-graded" (discrete steps) germanium concentration profiles. Lumos reserves

1. Dr. Kevin Fong — Dr. Fong is the Chief Technology Officer and co-founder of OWS and is a named inventor on the '567, '234, and '890 Patents. Dr. Fong's deposition was taken on October 11, 2022, in San Jose, California. Lumos intends to rely on Dr. Fong's testimony regarding the meaning and scope of the disputed claim terms, the circumstances of the inventions, and the prosecution of the patents-in-suit.

2. Hideo Tanaka — Mr. Tanaka is a former OWS engineer and is a named inventor on the '567 Patent. Mr. Tanaka is also the inventor of the cited prior art reference, U.S. Patent No. 9,456,012. Mr. Tanaka's deposition was taken on October 18, 2022, in San Jose, California. Lumos intends to rely on Mr. Tanaka's testimony regarding the technical distinctions between the '567 Patent claims and his own prior art, and regard

3. Dr. Amara Osei — Dr. Osei is a Principal Engineer at OWS and is a named inventor on the '234 and '678 Patents. Dr. Osei's deposition was taken on October 20, 2022, in San Jose, California. Lumos intends to rely on Dr. Osei's testimony regarding the meaning and scope of the disputed claim terms, including "continuously varying germanium concentration," "monolithically formed," and "single silicon die." Plaintiff OW

VIII. THE PERSON OF ORDINARY SKILL IN THE ART The Parties have not reached agreement on the definition of a person of ordinary skill in the art ("POSITA") at the time of the inventions claimed in the patents-in-suit. The Parties' respective proposed definitions are set forth below. A. OWS's Proposed Definition of a POSITA Plaintiff OWS contends that a person of ordinary skill in the art at the time of the inventions