Contract analysis

I. INTRODUCTION Plaintiff and Counterclaim Defendant Optiwave Semiconductor Corp. ("OWS"), by and through its attorneys of record, Calderwood & Harkness LLP, hereby answers the Counterclaims of Defendant and Counterclaim Plaintiff Lumos Photonics, Inc. ("Lumos"), as set forth in Lumos's Answer, Affirmative Defenses, and Counterclaims (Dkt. No. 18), filed on July 29, 2022 (the "Counterclaims"). Except as expressly adm

II. ANSWER TO SPECIFIC ALLEGATIONS OF THE COUNTERCLAIMS A. Response to Allegations Regarding Parties, Jurisdiction, and Venue

1. With respect to Lumos's allegations that Lumos Photonics, Inc. is a corporation organized and existing under the laws of the State of Delaware, with its corporate headquarters located at 9400 McNeil Drive, Building 7, Austin, Texas 78758, and that it maintains a fabrication facility in Hillsboro, Oregon, OWS admits that these allegations are consistent with publicly available records and filings, to the extent OWS

2. OWS admits that it is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at 2775 Augustine Drive, Suite 400, San Jose, California 95054.

3. OWS admits that this Court has subject matter jurisdiction over the Counterclaims pursuant to 28 U.S.C. §§ 1331 and 1338(a), to the extent those Counterclaims purport to arise under the federal patent laws, Title 35 of the United States Code.

4. OWS admits that venue is proper in this judicial district as to OWS under 28 U.S.C. § 1400(b).

5. OWS admits that it is subject to personal jurisdiction in this district. B. Response to Allegations Regarding the Patents-in-Suit

6. OWS admits that United States Patent No. 10,234,567 ("the '567 Patent"), entitled "Integrated Waveguide Coupler with Tapered Mode Converter for Silicon Photonics Platforms," was filed on March 14, 2017 and duly issued by the United States Patent and Trademark Office on March 19, 2019. OWS further admits that it is the owner by assignment of the '567 Patent, and that the '567 Patent is valid and enforceable.

7. OWS admits that United States Patent No. 10,891,234 ("the '234 Patent"), entitled "Germanium-on-Silicon Photodetector with Graded Buffer Layer for Enhanced Responsivity," was filed on September 8, 2017 and duly issued by the United States Patent and Trademark Office on January 14, 2021. OWS further admits that it is the owner by assignment of the '234 Patent, and that the '234 Patent is valid and enforceable.

8. OWS admits that United States Patent No. 11,045,678 ("the '678 Patent"), entitled "Multi-Channel Optical Transceiver with Integrated Wavelength-Division Multiplexing on Silicon," was filed on June 22, 2018 and duly issued by the United States Patent and Trademark Office on June 29, 2021. OWS further admits that it is the owner by assignment of the '678 Patent, and that the '678 Patent is valid and enforceable.

9. OWS admits that United States Patent No. 11,312,890 ("the '890 Patent"), entitled "Driver Circuit Architecture for High-Speed Silicon Photonic Mach-Zehnder Modulators," was filed on November 15, 2018 and duly issued by the United States Patent and Trademark Office on April 26, 2022. OWS further admits that it is the owner by assignment of the '890 Patent, and that the '890 Patent is valid and enforceable.

10. OWS denies any and all allegations in the Counterclaims asserting or implying that the patents-in-suit — the '567 Patent, the '234 Patent, the '678 Patent, and the '890 Patent — are invalid, unenforceable, or not infringed by Lumos's accused products. Each of the patents-in-suit is entitled to a statutory presumption of validity under 35 U.S.C. § 282, and OWS maintains that each patent is valid, enforceable, and

11. OWS denies that Lumos's LumosBridge™ 800G Optical Engine and/or LumosEdge™ 400ZR+ Pluggable Transceiver (collectively, the "Accused Products") do not infringe Claims 1, 4, 7, 12, and 15 of the '567 Patent, either literally or under the doctrine of equivalents. OWS affirmatively states that one or more of the Accused Products infringe one or more of the asserted claims of the '567 Patent.

12. OWS denies that Lumos is entitled to a declaratory judgment of non-infringement of any claim of the '567 Patent. The allegations contained in the Counterclaims do not provide a sufficient basis for such relief.

13. OWS denies any and all allegations that Lumos's Accused Products, which employ waveguide coupling architectures and tapered mode converter designs, do not practice one or more of the inventions claimed in the '567 Patent. OWS's investigation and analysis, including review of publicly available product documentation, technical specifications, datasheets, application notes, and promotional materials regarding the L

14. To the extent Lumos's Counterclaims describe or characterize the internal technical details, design specifications, fabrication processes, or structural configurations of Lumos's Accused Products — including the specific geometry of any waveguide coupler, taper profile, or mode converter — OWS states that it lacks sufficient knowledge or information to form a belief as to the truth of such allegations, insofar as

15. OWS admits that, in its Complaint filed in this action (Dkt. No. 1), OWS asserted Claims 1, 4, 7, 12, and 15 of the '567 Patent against the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver. D. Response to Counterclaim Count II: Declaratory Judgment of Non-Infringement of the '234 Patent

16. OWS denies that Lumos's Accused Products do not infringe Claims 1, 3, 5, 8, and 11 of the '234 Patent, either literally or under the doctrine of equivalents. OWS affirmatively states that one or more of the Accused Products infringe one or more of the asserted claims of the '234 Patent.

17. OWS denies that Lumos is entitled to a declaratory judgment of non-infringement of any claim of the '234 Patent. The allegations set forth in the Counterclaims fail to establish a basis for such relief.

18. To the extent Lumos's Counterclaims describe or characterize the specific internal germanium photodetector architecture, graded buffer layer structure, epitaxial growth parameters, or related design and fabrication details of Lumos's Accused Products, OWS states that it lacks sufficient knowledge or information to form a belief as to the truth of such allegations, insofar as such details have not been produced or

19. OWS admits that, in its Complaint filed in this action, OWS asserted Claims 1, 3, 5, 8, and 11 of the '234 Patent against Lumos's Accused Products. E. Response to Counterclaim Count III: Declaratory Judgment of Non-Infringement of the '678 Patent

20. OWS denies that Lumos's Accused Products do not infringe Claims 1, 2, 6, 9, and 14 of the '678 Patent, either literally or under the doctrine of equivalents. OWS affirmatively states that one or more of the Accused Products infringe one or more of the asserted claims of the '678 Patent.

21. OWS denies that Lumos is entitled to a declaratory judgment of non-infringement of any claim of the '678 Patent.

22. With respect to allegations regarding whether Lumos's 800G platform utilizes heterogeneous integration techniques, monolithic integration techniques, or any other specific fabrication methodology, OWS states that it lacks sufficient knowledge or information to form a belief as to the truth of such allegations, insofar as the specific design details, integration approaches, and fabrication specifications of Lumos'

23. OWS admits that, in its Complaint filed in this action, OWS asserted Claims 1, 2, 6, 9, and 14 of the '678 Patent against Lumos's Accused Products. F. Response to Counterclaim Count IV: Declaratory Judgment of Non-Infringement of the '890 Patent

24. OWS denies that Lumos's Accused Products do not infringe Claims 1, 5, 8, and 13 of the '890 Patent, either literally or under the doctrine of equivalents. OWS affirmatively states that one or more of the Accused Products infringe one or more of the asserted claims of the '890 Patent.

25. OWS denies that Lumos is entitled to a declaratory judgment of non-infringement of any claim of the '890 Patent.

26. With respect to allegations concerning the specific driver circuit architecture, modulator co-integration methodology, and related design or fabrication details of Lumos's Accused Products — including the specific topology, layout, and co-packaging arrangement of any driver circuit and any silicon photonic Mach-Zehnder modulator — OWS states that it lacks sufficient knowledge or information to form a belief as to

27. OWS admits that, in its Complaint filed in this action, OWS asserted Claims 1, 5, 8, and 13 of the '890 Patent against Lumos's Accused Products. G. Response to Counterclaim Count V: Declaratory Judgment of Invalidity of the '567 Patent Under 35 U.S.C. § 102

28. OWS denies that any claim of the '567 Patent, including Claims 1, 4, 7, 12, and 15, is invalid under 35 U.S.C. § 102 for anticipation by any prior art reference, individually or collectively.

29. OWS specifically denies that the prior art cited by Lumos, including United States Patent No. 9,456,012 to Tanaka et al. (issued September 6, 2016) (hereinafter "Tanaka"), anticipates any asserted claim of the '567 Patent. The Tanaka reference was considered by the United States Patent and Trademark Office during prosecution of the '567 Patent, and the claims were allowed over Tanaka.

30. OWS affirmatively states that the '567 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282, and that Lumos bears the heavy burden of proving invalidity by clear and convincing evidence, as established by Kestrel Partners LLC v. i4i Ltd. Partnership, 564 U.S. 91 (2011). Lumos cannot satisfy this burden.

31. OWS further notes that during prosecution of the '567 Patent, the claims underwent two office action rejections in which the Examiner cited the Tanaka reference, among others. In response, the applicant narrowed the claims to include the "adiabatically coupled" limitation, which specifies a particular coupling mechanism that is structurally and functionally distinct from the coupling approach disclosed in Tanaka.

32. OWS denies that any asserted claim of the '567 Patent is invalid as obvious under 35 U.S.C. § 103. OWS denies that any combination of prior art references renders the asserted claims of the '567 Patent obvious to a person having ordinary skill in the art at the time of the invention.

33. OWS specifically denies that the combination of United States Patent No. 9,456,012 to Tanaka et al. with the publication by 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) (hereinafter "Chen & Liu"), renders any asserted claim of the '567 Patent obvious, whether taken alone or in further combination with any othe

34. OWS affirmatively states that the '567 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282. Lumos bears the burden of proving obviousness by clear and convincing evidence, and this burden is heightened where, as here, the prior art relied upon by Lumos was considered during prosecution. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 426 (2007) (requiring an articulated reasoning w

I. Response to Counterclaim Count VII: Declaratory Judgment of Invalidity of the '234 Patent Under 35 U.S.C. § 102

35. OWS denies that any asserted claim of the '234 Patent, including Claims 1, 3, 5, 8, and 11, is invalid under 35 U.S.C. § 102 for anticipation by any prior art reference.

36. OWS specifically denies that European Patent Application EP 3,234,567 A1 (published August 2, 2017, applicant: Nordlicht Photonische GmbH) (hereinafter "Nordlicht") anticipates any asserted claim of the '234 Patent under 35 U.S.C. § 102(a)(2) or any other subsection of § 102. The Nordlicht reference does not disclose each and every limitation of any asserted claim of the '234 Patent, and Lumos cannot demonstrate

37. OWS affirmatively states that the '234 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282. Lumos bears the burden of proving anticipation by clear and convincing evidence, which requires a showing that a single prior art reference discloses each and every element of the claimed invention, arranged as in the claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fe

38. OWS denies that any asserted claim of the '234 Patent is invalid as obvious under 35 U.S.C. § 103, whether based on European Patent Application EP 3,234,567 A1 (Nordlicht) or any other combination of prior art references cited or relied upon by Lumos in its Counterclaims.

39. OWS affirmatively states that the '234 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282, and that Lumos bears the burden of proving obviousness by clear and convincing evidence. The asserted claims of the '234 Patent, including the specific combination of a germanium-on-silicon photodetector with a graded buffer layer configured for enhanced responsivity as claimed, are not render

40. OWS denies that any asserted claim of the '678 Patent, including Claims 1, 2, 6, 9, and 14, is invalid under 35 U.S.C. § 102 for anticipation or under 35 U.S.C. § 103 for obviousness, based on any prior art reference or combination of references cited or relied upon by Lumos.

41. OWS notes that during prosecution of the '678 Patent, the claims underwent three office actions in which various prior art references relating to hybrid integration techniques for multi-channel optical transceivers were cited and considered. In response to these office actions, the applicant amended the claims to include the "monolithically formed" limitation, which requires that the claimed wavelength-division m

42. OWS affirmatively states that the '678 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282, and that Lumos bears the burden of proving invalidity by clear and convincing evidence. Lumos cannot meet this burden. L. Response to Counterclaim Count X: Declaratory Judgment of Invalidity of the '890 Patent Under 35 U.S.C. § 103

43. OWS denies that any asserted claim of the '890 Patent, including Claims 1, 5, 8, and 13, is invalid as obvious under 35 U.S.C. § 103, whether based on a single prior art reference or any combination of prior art references.

44. OWS specifically denies that the publication by 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) (hereinafter "Iyer & Patel"), alone or in combination with any other prior art, renders any asserted claim of the '890 Patent obvious. Iyer & Patel describes the co-design of modulator drivers an

45. OWS notes that during prosecution of the '890 Patent, the claims underwent two office actions. In response, the applicant amended the claims to include the "co-integrated" limitation, which requires that the driver circuit and the silicon photonic Mach-Zehnder modulator be co-integrated on a common substrate through a unified fabrication process, as distinguished from approaches where the driver circuit and modul

46. OWS affirmatively states that the '890 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282, and that Lumos bears the burden of proving obviousness by clear and convincing evidence. Lumos cannot satisfy this burden. M. Response to Counterclaim Count XI: Declaratory Judgment of Invalidity Under 35 U.S.C. § 112

47. OWS denies that any asserted claim of any of the four patents-in-suit — the '567 Patent, the '234 Patent, the '678 Patent, and the '890 Patent — is invalid under 35 U.S.C. § 112 for failure to comply with the written description requirement of § 112(a), the enablement requirement of § 112(a), or the definiteness requirement of § 112(b).

48. OWS affirmatively states that the specifications of each of the patents-in-suit provide a written description of the claimed inventions that is sufficient to demonstrate to a person of ordinary skill in the art that the inventors were in possession of the claimed inventions at the time of filing. The specifications disclose detailed embodiments, structural descriptions, fabrication processes, performance data, an

49. OWS further states that the specifications of each of the patents-in-suit enable a person of ordinary skill in the art to make and use the claimed inventions without undue experimentation. The specifications include sufficient detail regarding materials, dimensions, fabrication techniques, process parameters, and operational principles to allow practice of the claimed inventions.

50. OWS further states that the claims of each of the patents-in-suit are sufficiently definite to inform those skilled in the art about the scope of the respective inventions with reasonable certainty, as required by Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). The claim terms used in the asserted claims, including but not limited to "adiabatically coupled," "graded buffer layer," "monolithically

51. OWS affirmatively asserts the presumption of validity of each of the patents-in-suit under 35 U.S.C. § 282. Lumos bears the burden of proving invalidity under § 112 by clear and convincing evidence, which it cannot meet. N. Response to Prayer for Relief in the Counterclaims

52. OWS denies that Lumos is entitled to any of the relief requested in its Counterclaims, including but not limited to declaratory judgments of non-infringement of any claim of any of the patents-in-suit, declaratory judgments of invalidity of any claim of any of the patents-in-suit, an award of costs and attorneys' fees, or any other or further relief.

53. OWS denies that Lumos is entitled to an award of its costs and attorneys' fees under 35 U.S.C. § 285 or any other provision of law. This case is not an "exceptional case" within the meaning of § 285, and Lumos has presented no basis for such an award.

54. OWS denies that Lumos is entitled to any other or further relief beyond that specifically requested in the Counterclaims, or to any relief at all.

III. AFFIRMATIVE DEFENSES TO COUNTERCLAIMS Without assuming the burden of proof on any issue for which Lumos bears the burden, and without waiving any objections, including objections as to relevance, materiality, or admissibility, OWS asserts the following affirmative defenses to the Counterclaims: FIRST AFFIRMATIVE DEFENSE: Failure to State a Claim Lumos's Counterclaims, in whole or in part, fail to state a claim u

IV. PRAYER FOR RELIEF WHEREFORE, Plaintiff and Counterclaim Defendant Optiwave Semiconductor Corp. respectfully requests that the Court enter judgment as follows:

1. That all relief sought by Lumos in its Counterclaims be denied in its entirety;