Contract analysis

I. PURPOSE This memorandum outlines the scope, objectives, and parameters of Dr. Harold Whitfield's engagement as a technical expert on behalf of Optiwave Semiconductor Corp. ("OWS" or "Optiwave") in patent infringement litigation captioned Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD, currently pending before the Honorable Edward J. Torvelis in the United States District Court fo

II. BACKGROUND OF THE LITIGATION A. The Parties

1. Plaintiff — Optiwave Semiconductor Corp. ("OWS") Optiwave Semiconductor Corp. is a Delaware corporation headquartered at 2775 Augustine Drive, Suite 400, San Jose, California 95054. OWS is a fabless semiconductor design company specializing in the design and development of silicon photonics integrated circuits for high-speed data center interconnect and telecommunications applications. The company was founded in 2

2. Defendant — Lumos Photonics, Inc. ("Lumos" or "LPI") Lumos Photonics, Inc. is a Delaware corporation headquartered at 9400 McNeil Drive, Building 7, Austin, Texas 78758. Unlike OWS, Lumos is an integrated device manufacturer ("IDM") — meaning it designs, fabricates, and packages its own silicon photonics components. Lumos operates a fabrication facility located at 3200 NE Shute Road, Hillsboro, Oregon 97124, and m

III. THE PATENTS-IN-SUIT OWS's Complaint asserts infringement of four United States patents, each of which is described below. For each patent, we provide the title, filing and issuance dates, named inventors, the specific claims asserted, the key claim terms anticipated to be disputed during claim construction, and relevant highlights of the prosecution history. A. U.S. Patent No. 10,234,567 (the "'567 Patent") Titl

IV. ACCUSED PRODUCTS OWS accuses two Lumos product families of infringing the Patents-in-Suit. Both are described below, along with the specific technical features relevant to the infringement analysis for each asserted patent. A. LumosBridge™ 800G Optical Engine The LumosBridge™ 800G Optical Engine is a co-packaged optics engine designed for use in hyperscale data center switch architectures. The product provides 80

V. KEY CLAIM TERMS ANTICIPATED TO BE DISPUTED Based on our analysis of the Patents-in-Suit, the prosecution histories, the accused products, and Lumos's Answer and Counterclaims, we anticipate that the following claim terms will be the subject of dispute during claim construction proceedings. For each term, we set forth OWS's proposed construction, the construction we anticipate Lumos will advance, and a brief discus

VI. SCOPE OF DR. WHITFIELD'S ENGAGEMENT A. Phase 1: Claim Construction Support Dr. Whitfield's engagement during Phase 1 encompasses the following tasks and deliverables:

1. Review of the Intrinsic Record Dr. Whitfield will conduct a thorough review of the intrinsic record for all four Patents-in-Suit. The intrinsic record comprises the patent specifications (including the written descriptions, drawings, and abstracts), all claims (including both asserted and unasserted claims, as well as dependent claims), and the complete prosecution histories (file wrappers) for each of the four pa

2. Definition of the Person of Ordinary Skill in the Art (POSITA) Dr. Whitfield will formulate the definition of a person of ordinary skill in the art ("POSITA") for each of the four Patents-in-Suit, or a common definition across all four patents if Dr. Whitfield determines that the same definition is appropriate for the technologies at issue. The POSITA definition is a foundational element of claim construction, as

3. Declaration in Support of OWS's Opening Claim Construction Brief Dr. Whitfield will prepare and provide a declaration opining on the understanding of a person of ordinary skill in the art with respect to each disputed claim term. The declaration will be submitted in support of OWS's Opening Claim Construction Brief, which is due on December 5, 2022. The declaration should: (a) Set forth Dr. Whitfield's qualificati

4. Technical Tutorial Presentation Dr. Whitfield will prepare a technical tutorial presentation designed to educate the Court on the underlying technology at the Markman hearing, currently scheduled for January 30, 2023, before the Honorable Edward J. Torvelis. The Northern District of California's Patent Local Rules and Judge Torvelis's standing order on patent cases contemplate the use of a technical tutorial at th

5. Consultation on Rebuttal Dr. Whitfield will assist Calderwood & Harkness in analyzing and rebutting Lumos's claim construction positions, including any declaration or testimony submitted by Lumos's technical consultant, Dr. Raymond Ng. Dr. Ng is a former professor of photonics at the University of Colorado Boulder and is currently serving as Of Counsel to Brannick Howell & Stein LLP, Lumos's outside counsel. We ex

VII. BACKGROUND MATERIALS BEING PROVIDED The following materials are enclosed with or will follow this memorandum under separate cover. Dr. Whitfield should review these materials in preparation for the initial consultation call described in Section XI below.

1. Patent File Histories (Complete Prosecution Files) (a) U.S. Patent No. 10,234,567 (the '567 Patent) — "Integrated Waveguide Coupler with Tapered Mode Converter for Silicon Photonics Platforms" (b) U.S. Patent No. 10,891,234 (the '234 Patent) — "Germanium-on-Silicon Photodetector with Graded Buffer Layer for Enhanced Responsivity" (c) U.S. Patent No. 11,045,678 (the '678 Patent) — "Multi-Channel Optical Transceiver

2. Prior Art References (a) U.S. Patent No. 9,456,012 (Tanaka et al., issued September 6, 2016) (b) 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) (c) European Patent Application EP 3,234,567 A1 (Nordlicht Photonische GmbH, published August 2, 2017) (d) Iyer & Patel, "Co-Design of Modulator Drivers and Silicon Photo

3. Lumos Photonics Product Documentation (Publicly Available) (a) LumosBridge™ 800G Optical Engine — product briefs, datasheets, and white papers (b) LumosEdge™ 400ZR+ Pluggable Transceiver — product briefs and datasheets (c) Relevant Lumos Photonics presentations from industry conferences, including OFC (Optical Fiber Communication Conference) and ECOC (European Conference on Optical Communication), to the extent av

4. Pleadings. (a) Complaint for Patent Infringement (filed June 3, 2022) (b) Lumos's Answer and Counterclaims (filed July 29, 2022)

5. Lumos's Public Filings (a) Lumos Photonics, Inc. Form 10-K for fiscal year 2021 (b) Lumos Photonics, Inc. Form 10-K for fiscal year 2022 (as available; to be supplemented when filed) These public filings are provided for product and revenue information relevant to the accused products.

6. OWS Internal Technical Documents (to Be Provided Under Separate Confidential Cover) (a) OWS-400ZR and OWS-800LR coherent optical transceiver chipset design summaries (b) Pinnacle Semiconductor Foundry Co., Ltd. 45nm SOI process specifications relevant to OWS's fabrication approach These materials are being provided under separate confidential cover and are subject to the confidentiality provisions of the Expert Re

VIII. KEY DEADLINES AND TIMELINE The follow