Contract analysis

1. U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," filed September 14, 2016, and issued March 19, 2019. The '847 Patent is a continuation of the '562 Patent.

2. U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," filed April 6, 2018, and issued January 12, 2021. The '193 Patent claims priority to Provisional Application No. 62/499,117, filed April 7, 2017.

3. U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," filed November 22, 2014, and issued June 13, 2017. The '562 Patent is the parent application in the continuation family that includes the '847 Patent.

4. U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," filed August 30, 2019, and issued August 2, 2022. The '015 Patent claims priority to Provisional Application No. 62/499,117, filed April 7, 2017, which is the same provisional application from which the '193 Patent claims priority. Patent Family Relationships The four asserted patents

Section I.A: Claims of the '847 Patent Tab A (AIE-0001–0018) The complete text of all claims of U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," is reproduced at Tab A of this Appendix. The '847 Patent contains twenty-two (22) claims, including four (4) independent claims (Claims 1, 9, 14, and 19) and eighteen (18) dependent claims. Asserted Claims.

Section I.B: Specification of the '847 Patent Tabs B, C, and D (AIE-0019–0098) General Information. • Title: Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss • Filing Date: September 14, 2016 • Issue Date: March 19, 2019 • Application No.: 15/265,841 • Assignee: Optiwave Semiconductor Corp. • Named Inventors: Dr. Jian-Wei Huang; Dr. Christine Nakamura; Rajesh Patel • Examiner: Teresa Kim (

Section I.C: Prosecution History of the '847 Patent

I.C.1: Application as Filed Tab E (AIE-0099–0134) The application that matured into the '847 Patent was filed on September 14, 2016, as U.S. Application No. 15/265,841. The application was filed as a continuation of U.S. Application No. 14/550,312 (which matured into the '562 Patent, issued June 13, 2017). The application as filed contained twenty-four (24) original claims, including four independent claims. The orig

I.C.2: First Office Action Tab F (AIE-0135–0156) The first Office Action in the prosecution of the '847 Patent was mailed on March 22, 2017 by Examiner Teresa Kim (Art Unit 2874). The Examiner rejected Claims 1–8 and 14–18 under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No. 7,539,362 to Doerr et al. ("Doerr," issued May 26, 2009) in view of U.S. Patent Application Publication No. 2014/0153882 to Chen

I.C.3: Applicant's Response to First Office Action Tab G (AIE-0157–0189) The Applicant's Response to the first Office Action was filed on June 22, 2017 by Dr. Martin Chu of Cascade IP Advisors, LLC. The response included minor amendments to Claims 19–22 (not at issue in this litigation) but did not amend the term "waveguide multiplexer" in any claim. The response traversed the § 103 rejection over Doerr and Chen by a

I.C.4: Subsequent Office Actions and Responses Tabs H, I, J, and K (AIE-0190–0286) Second Office Action (September 8, 2017). The Examiner issued a second (non-final) Office Action on September 8, 2017. The Examiner maintained the § 103 rejection over Doerr and Chen, finding the applicant's arguments regarding "low insertion loss" unpersuasive. The Examiner additionally cited U.S. Patent Application Publication No. 20

I.C.5: Examiner Interview Summaries Tab L (AIE-0287–0292) An Examiner Interview was conducted on May 3, 2018, between Dr. Martin Chu and Examiner Teresa Kim. The Examiner Interview Summary (filed May 7, 2018) reflects the following relevant discussion: "The applicant's representative discussed the Declaration of Dr. Jian-Wei Huang and the unexpected insertion-loss results achieved by the claimed multi-channel device.

I.C.6: Declarations Filed During Prosecution Tab N (AIE-0305–0318) A Declaration under 37 C.F.R. § 1.132 by Dr. Jian-Wei Huang, the lead named inventor of the '847 Patent, was submitted on April 16, 2018, in connection with the Applicant's response to the Final Rejection. In the Declaration, Dr. Huang attested to the following:

1. Dr. Huang is a named inventor on the '847 Patent and has worked in the field of silicon photonics for over fifteen years.

2. Dr. Huang reviewed the prior art references cited by the Examiner (Doerr, Chen, and Watanabe) and provided his expert opinion that the combination proposed by the Examiner would not have been obvious to one of ordinary skill in the art.

3. Dr. Huang presented experimental data showing that the multi-channel silicon photonic device of the '847 Patent achieves insertion losses of less than 0.8 dB per channel across the C-band — a result that Dr. Huang described as "unexpected" and significantly superior to the prior art.

4. Dr. Huang confirmed that the term "waveguide multiplexer" as used in the patent application and claims is intended to encompass multiple multiplexer architectures, including but not limited to arrayed waveguide gratings, Echelle gratings, and cascaded Mach-Zehnder interferometers. Dr. Huang stated: "The invention is directed to achieving low insertion loss in silicon photonic wavelength division multiplexing devic

I.C.7: Notice of Allowance Tab M (AIE-0293–0304) The Notice of Allowance was mailed on October 2, 2018. In the Examiner's Statement of Reasons for Allowance, Examiner Kim stated: "The prior art of record, taken alone or in combination, does not teach or suggest a multi-channel silicon photonic device comprising a waveguide multiplexer configured to combine a plurality of optical signals of different wavelengths onto

Section I.D: Related-Patent Filings for the '847 Patent Tab O (AIE-0319–0328) Continuation Relationship with the '562 Patent The '847 Patent is a continuation of U.S. Application No. 14/550,312, which matured into U.S. Patent No. 9,678,562 (the '562 Patent). The continuity data is as follows: Because the '847 Patent is a continuation of the '562 Patent, the two patents share a common specification. Terms used in the

Section II.A: Claims of the '193 Patent Tab P (AIE-0329–0350) The complete text of all claims of U.S. Patent No. 10,891,193, entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," is reproduced at Tab P of this Appendix. The '193 Patent contains twenty-four (24) claims, including three (3) independent claims (Claims 1, 10, and 18) and twenty-one (21) dependent claims. Asserted Claims.

Section II.B: Specification of the '193 Patent Tabs Q, R, and S (AIE-0351–0448) General Information. • Title: High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate • Filing Date: April 6, 2018 • Issue Date: January 12, 2021 • Application No.: 15/946,782 • Assignee: Optiwave Semiconductor Corp. • Named Inventors: Dr. Jian-Wei Huang; Dr. Christine Nakamura; Dr. Amir Farzaneh • Examiner: David Lam

Section II.C: Prosecution History of the '193 Patent

II.C.1: Provisional Application No. 62/499,117 Tab T (AIE-0449–0488) Provisional Application No. 62/499,117 was filed on April 7, 2017. This provisional application is the common priority document for both the '193 Patent and the '015 Patent. The provisional application is included at Tab T and is cross-referenced at Tab WW for its relevance to the '015 Patent. The provisional application discloses the core concepts

II.C.2: Non-Provisional Application as Filed Tab U (AIE-0489–0530) The non-provisional application that matured into the '193 Patent was filed on April 6, 2018, as U.S. Application No. 15/946,782, claiming the benefit of Provisional Application No. 62/499,117 under 35 U.S.C. § 119(e). The application as filed contained twenty-six (26) original claims, including three independent claims. The original claims included t

II.C.3: First Office Action Tab V (AIE-0531–0558) The first Office Action in the prosecution of the '193 Patent was mailed on November 15, 2018 by Examiner David Lam (Art Unit 2883). The Examiner rejected Claims 1–9 and 18–24 under 35 U.S.C. § 102(a)(1) as being anticipated by Takahashi et al., "Dense WDM Silicon Photonic MUX," IEEE Photonics Technology Letters, vol. 26, no. 5, pp. 473–476 (March 2014) ("Takahashi").