Contract analysis

1. My name is Dr. Caroline Ashford. I am a Professor of Electrical Engineering & Photonics at the Northfield Institute of Technology ("NIT") in Evanston, Illinois, where I have been a member of the faculty since 2002. I have been retained by the law firm of Calderwood & Harkness LLP on behalf of Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") as a technical expert in connection with this patent infringe

2. This declaration is based on my personal knowledge, my education, training, and more than twenty-five years of professional and academic experience in the field of silicon photonics and photonic integrated circuit ("PIC") design. In forming the opinions set forth herein, I have reviewed the Asserted Patents, including their specifications, claims, and drawings; the complete prosecution histories for all four Asser

II. QUALIFICATIONS AND BACKGROUND A. Educational Background

3. I received my Bachelor of Science degree in Electrical Engineering, summa cum laude, from the Northfield Institute of Technology in 1994. During my undergraduate studies, I concentrated in solid-state electronics and was elected to Tau Beta Pi and Eta Kappa Nu engineering honor societies. I received the Northfield Distinguished Undergraduate Research Award for my senior thesis on fiber-optic coupling efficiency in

4. I received my Master of Science degree in Electrical Engineering from the Massachusetts Institute of Technology in 1996. My master's research, conducted under the supervision of Professor Harold K. Richardson, focused on photonics and optoelectronics, with particular emphasis on the design and characterization of III-V semiconductor optical amplifiers for wavelength-division multiplexed communication systems.

5. I received my Doctor of Philosophy degree in Electrical Engineering from the Massachusetts Institute of Technology in 1999. My doctoral dissertation, titled "Design, Optimization, and Fabrication of Integrated Silicon Photonic Waveguide Structures for High-Density Wavelength-Division Multiplexing," addressed the development of novel silicon photonic waveguide geometries for low-loss, high-channel-count multiplexin

6. Following the completion of my doctoral degree, I held a post-doctoral research fellowship at the Westmark Group in Yorktown Heights, New York, from 1999 to 2002. During this fellowship, my research focused on silicon-on-insulator ("SOI") photonic circuits for telecommunications applications, including the design and experimental validation of compact ring-resonator-based wavelength filters and their integration w

7. I joined the faculty of the Northfield Institute of Technology in 2002 as an Assistant Professor of Electrical Engineering. I was promoted to Associate Professor with tenure in 2007 and to full Professor in 2012. Since 2014, I have additionally served as the Director of NIT's Silicon Photonics Research Center ("SPRC"), which is one of the leading academic research centers in the United States devoted to silicon ph

8. In my capacity as a professor at NIT, I have taught graduate and undergraduate courses in a wide range of subjects relevant to the technologies at issue in this case, including Photonic Integrated Circuits, Optical Communications Systems, Semiconductor Device Physics, Electromagnetic Theory, Waveguide Design and Simulation, Silicon Photonics Fabrication, and Advanced Topics in Optoelectronics. I have supervised th

9. I am the author or co-author of over 180 peer-reviewed journal articles and conference papers in the fields of silicon photonics, optical transceivers, waveguide multiplexing, thermal management of photonic integrated circuits, grating coupler design, coherent optical receiver architectures, and related subjects. My work has been published in leading technical journals, including IEEE Photonics Technology Letters,

10. I hold fourteen (14) United States patents in the field of photonic integrated circuit design. These patents cover a range of technologies including silicon waveguide structures, wavelength-selective filters, grating coupler architectures, and optical modulator designs. A complete list of my patents is included in my curriculum vitae, which is attached hereto as Exhibit A. D. Industry Experience and Consulting

11. In addition to my academic work, I have served as a technical consultant to multiple semiconductor and photonics companies on matters relating to silicon photonic integrated circuit design and optical transceiver development. My consulting engagements have involved subjects including waveguide multiplexer design, coherent optical transceiver architecture, thermal management of photonic integrated circuits, gratin

12. I have been retained as an expert witness in eight (8) prior patent infringement matters involving photonic technologies. In five (5) of those matters, I provided testimony at deposition, at trial, or at both. The subject matter of these prior engagements has included disputes over silicon photonic transceiver designs, optical modulator architectures, wavelength-selective switching technologies, and photonic pack

13. I am a Fellow of the Institute of Electrical and Electronics Engineers ("IEEE"), an honor recognizing extraordinary accomplishment in the field. I am a member of the Optical Society ("Optica," formerly the Optical Society of America) and a member of SPIE, the International Society for Optics and Photonics. I have served on the technical program committees for the Optical Fiber Communications Conference ("OFC"), t

14. In forming the opinions expressed in this declaration, I reviewed the following categories of materials, which are listed in full in Exhibit B attached hereto: (a) The full text, including specifications, claims, and drawings, of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015. (b) The complete prosecution histories for all four Asserted Patents, including all office actions, applicant response

III. DEFINITION OF A PERSON OF ORDINARY SKILL IN THE ART

15. It is my opinion that a person of ordinary skill in the art ("POSITA") relevant to the Asserted Patents, at the time of each patent's effective filing date, would have had: (a) A Master of Science (M.S.) or Doctor of Philosophy (Ph.D.) degree in electrical engineering, photonics, optical engineering, physics, or a closely related technical field; AND (b) At least three (3) years of professional or academic experi

16. A person with less formal education but correspondingly more extensive practical experience in silicon photonics could also qualify as a POSITA, and conversely, a person with more advanced educational credentials but somewhat less practical experience could also qualify. For instance, a person with a Bachelor of Science degree in electrical engineering and seven or more years of relevant industry experience in si

17. I base this definition on the nature and content of the Asserted Patents and the prior art of record. The Asserted Patents address specific and technically sophisticated challenges in silicon photonic IC design for optical communications applications. The '847 Patent is directed to low-insertion-loss waveguide multiplexing architectures that require a detailed understanding of optical waveguide theory, diffractio

18. This POSITA definition is consistent with the level of skill that I have observed in my experience as an educator, researcher, and consultant in the silicon photonics field. The engineers and scientists who work in this area, and who would be the primary readers and users of the Asserted Patents, overwhelmingly hold graduate degrees and have several years of specialized experience. This definition is also consist

IV. LEGAL FRAMEWORK FOR CLAIM CONSTRUCTION

19. I understand that, as a general principle, the words of a patent claim are to be given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the patent's effective filing date. I further understand that this ordinary and customary meaning is determined in light of the intrinsic record, which consists of the claim language itself, the patent specification (inclu

20. I have been advised by counsel at Calderwood & Harkness LLP regarding these legal principles and their application to claim construction. However, the opinions expressed in this declaration reflect my independent technical judgment as to how a POSITA would understand the disputed claim terms in the context of the Asserted Patents. I have not been asked by counsel to adopt any particular construction, and my opini

21. I understand that the Joint Claim Construction Statement filed on October 28, 2024, initially identified fourteen (14) disputed claim terms across the four Asserted Patents. The parties have since agreed on the construction of two (2) of those terms, leaving twelve (12) claim terms in dispute. This declaration addresses all twelve (12) remaining disputed terms. I address four (4) of these terms in substantial det

V. OPINIONS ON DISPUTED CLAIM TERMS A. "Waveguide Multiplexer" — U.S. Patent No. 10,234,847

1. Claims in Which the Term Appears.

22. The term "waveguide multiplexer" appears in Claims 1, 3, 5, 9, and 14 of U.S. Patent No. 10,234,847 (the "'847 Patent"). The '847 Patent is titled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss." It was filed on September 14, 2016, and issued on March 19, 2019. The '847 Patent is a continuation of the '562 Patent. The '847 Patent generally discloses and claims silicon photonic waveg

23. Independent Claim 1 of the '847 Patent recites, in relevant part: "A silicon photonic device comprising: a waveguide multiplexer formed on a silicon-on-insulator substrate, the waveguide multiplexer configured to receive a plurality of input optical signals, each input optical signal having a distinct center wavelength, and to combine the plurality of input optical signals onto a common output waveguide; …" The t

2. The Parties' Proposed Constructions.

24. OWS proposes that "waveguide multiplexer" should be construed to mean: "An optical device that combines multiple optical signals of different wavelengths onto a single waveguide."

25. Lumicore proposes that "waveguide multiplexer" should be construed to mean: "An arrayed waveguide grating that combines optical signals using a slab coupler and phase-shifted waveguide array."

26. It is my opinion that a POSITA would understand the term "waveguide multiplexer" as used in the '847 Patent to mean "an optical device that combines multiple optical signals of different wavelengths onto a single waveguide," consistent with OWS's proposed construction. I hold this opinion based on the claim language, the specification, the prosecution history, and the ordinary meaning of this term in the silicon

27. The ordinary meaning of "waveguide multiplexer" is broad. In the silicon photonics field, the term "waveguide multiplexer" is a well-understood, generic term that refers to any integrated optical device that performs the function of wavelength-division multiplexing — that is, combining multiple optical signals, each at a different wavelength (or channel), onto a single output waveguide. A POSITA at the time of th

28. All of these architectures are properly characterized as "waveguide multiplexers" in the silicon photonics literature. Technical textbooks confirm this understanding. For example, Fundamentals of Silicon Photonics by Vivien and Pavesi (2d ed., Aldermere Partners LLC, 2016) describes "waveguide multiplexers" as a broad class of devices and discusses AWGs, Echelle gratings, and ring-resonator approaches as alternat

29. The '847 Patent specification describes multiple multiplexer architectures. The specification of the '847 Patent itself uses the term "waveguide multiplexer" broadly and discloses multiple different architectural implementations. At column 3, lines 14–28, the specification states: "The present invention relates generally to waveguide multiplexers for silicon photonic applications. As used herein, a 'waveguide mul

30. The specification then goes on to describe, in detail, particular embodiments utilizing AWG architectures (described at columns 5–8) and Echelle grating architectures (described at columns 9–11). The specification further discusses cascaded MZI and ring-resonator approaches as alternative implementations, noting their respective advantages and trade-offs in terms of channel count, insertion loss, footprint, and f

31. Lumicore's construction improperly narrows the term to a single embodiment. Lumicore proposes to construe "waveguide multiplexer" to mean "an arrayed waveguide grating that combines optical signals using a slab coupler and phase-shifted waveguide array." This construction would limit the term to a single architecture — the AWG — and would exclude all other waveguide multiplexer architectures that the specificatio

32. Claim differentiation supports OWS's construction. The claim structure of the '847 Patent provides independent confirmation that the term "waveguide multiplexer" in the independent claims is not limited to AWG architectures. Dependent Claim 5, which depends from independent Claim 1, recites: "The silicon photonic device of claim 1, wherein the waveguide multiplexer comprises an arrayed waveguide grating." Under t

33. Similarly, dependent Claim 3, which also depends from Claim 1, recites: "The silicon photonic device of claim 1, wherein the waveguide multiplexer comprises an Echelle grating." The existence of this claim further confirms that "waveguide multiplexer" in Claim 1 is broad enough to encompass at least both AWG and Echelle grating architectures, and in my opinion, the full range of multiplexer architectures that a P

34. If the patentee had intended to limit the claim to AWGs, it could have and would have used the specific term. The '847 Patent specification and claims demonstrate that the patentee was well aware of the specific term "arrayed waveguide grating" and used it precisely when it intended to refer to that particular architecture. The patentee's deliberate use of the broader term "waveguide multiplexer" in the independe

4. Prosecution History Analysis.

35. The prosecution history of the '847 Patent further supports OWS's broad construction and undermines Lumicore's narrow construction. During prosecution, the term "waveguide multiplexer" was present in Claim 1 as originally filed. The examiner issued a non-final office action on May 3, 2018, rejecting the claims under 35 U.S.C. § 103 based on a combination of Takahashi et al. ("Dense WDM Silicon Photonic MUX," IEEE

36. The examiner thereafter allowed the claims in a Notice of Allowance dated November 28, 2018. The examiner's reasons for allowance referenced the combination of features recited in the independent claims, including the specific input coupler geometry, the waveguide taper profile, and the low insertion loss performance characteristics. Notably, the examiner did not require the applicant to narrow the term "waveguid

37. There is nothing in the prosecution history that constitutes a clear and unmistakable disavowal or disclaimer of any particular multiplexer architecture from the scope of the term "waveguide multiplexer." Lumicore's proposed construction finds no support in the prosecution history.

38. Accordingly, it is my opinion that "waveguide multiplexer" as used in the '847 Patent means "an optical device that combines multiple optical signals of different wavelengths onto a single waveguide," consistent with OWS's proposed construction. B. "Integrated on a Silicon Substrate" — U.S. Patent No. 10,891,193

1. Claims in Which the Term Appears.

39. The term "integrated on a silicon substrate" appears in Claims 1, 3, 7, 10, 15, and 18 of U.S. Patent No. 10,891,193 (the "'193 Patent"). The '193 Patent is titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate." It was filed on April 7, 2017, and issued on January 12, 2021. The '193 Patent claims priority to U.S. Provisional Application No. 62/499,117, filed April 7, 2017, which als

40. Independent Claim 1 of the '193 Patent recites, in relevant part: "A coherent optical transceiver comprising: a transmitter photonic circuit and a receiver photonic circuit, each integrated on a silicon substrate, the transmitter photonic circuit comprising a tunable laser source, a plurality of optical modulators, and a multiplexer; the receiver photonic circuit comprising a polarization beam splitter, a plurali

2. The Parties' Proposed Constructions.

41. OWS proposes that "integrated on a silicon substrate" should be construed to mean: "Formed on or within a silicon-based wafer using semiconductor fabrication processes."

42. Lumicore proposes that "integrated on a silicon substrate" should be construed to mean: "Monolithically fabricated on a single silicon die without hybrid bonding or heterogeneous integration."

43. It is my opinion that a POSITA would understand the term "integrated on a silicon substrate" as used in the '193 Patent to mean "formed on or within a silicon-based wafer using semiconductor fabrication processes," consistent with OWS's proposed construction. This construction encompasses all forms of integration on a silicon-based platform, including both monolithic integration (in which all components are fabri

44. The ordinary meaning of "integrated on" is broad. The phrase "integrated on a silicon substrate" would be understood by a POSITA as a general description of the physical relationship between the photonic components and the underlying silicon platform. The word "integrated" in the context of semiconductor and photonic circuit technology broadly refers to the incorporation of multiple functional components onto a c

45. The '193 Patent specification describes both monolithic and heterogeneous integration. The specification of the '193 Patent is explicit that the claimed transceiver may be implemented using either monolithic or heterogeneous integration approaches. At column 4, lines 32–45, the specification states: "In one embodiment, the transmitter photonic circuit is integrated on a silicon substrate using a monolithic CMOS-c

46. At column 5, lines 8–19, the specification further states: "As used herein, the term 'integrated on a silicon substrate' encompasses any fabrication approach in which the described photonic components are formed on or attached to a silicon-based wafer as part of a unified photonic circuit, including but not limited to monolithic silicon processing, heterogeneous bonding of III-V materials, micro-transfer printing

47. This explicit definitional language in the specification directly addresses the scope of the term "integrated on a silicon substrate" and confirms that the term is not limited to monolithic fabrication. Under well-established claim construction principles, when a patentee acts as its own lexicographer and provides a clear definition of a claim term in the specification, that definition controls. Here, the specifi

48. Heterogeneous integration was a widely practiced and commercially important technique at the time of filing. As of the '193 Patent's filing date in April 2017, heterogeneous integration of III-V semiconductor materials onto silicon photonic platforms was a well-established and commercially important approach in the silicon photonics field. Multiple companies, including Intel, Greaves Holdings (formerly Crestline