Contract analysis

I. INTRODUCTION This Joint Claim Construction Statement is filed by Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") and Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant") (collectively, the "Parties") pursuant to the Court's Scheduling Order (Dkt. No. 27, entered August 12, 2024) and the Patent Rules for the Eastern District of Texas. The Parties submit this Statement in accordance with P

II. THE ASSERTED PATENTS The following four (4) United States patents are at issue in this litigation. Each patent is owned by Plaintiff OWS and is asserted against one or more of Defendant Lumicore's accused products. A. U.S. Patent No. 10,234,847 (the "'847 Patent") B. U.S. Patent No. 10,891,193 (the "'193 Patent") C. U.S. Patent No. 9,678,562 (the "'562 Patent") D. U.S. Patent No. 11,402,015 (the "'015 Patent")

III. THE ASSERTED CLAIMS The following claims of the asserted patents are at issue in this litigation. For each patent, the Parties identify the specific claims asserted by Plaintiff, the accused products against which such claims are asserted, and any claims for which Plaintiff asserts infringement under the doctrine of equivalents in addition to literal infringement. A. U.S. Patent No. 10,234,847 (the "'847 Patent"

IV. THE ACCUSED PRODUCTS The following table identifies the accused products in this litigation, together with the patents asserted against each accused product. Each of the foregoing accused products is a silicon photonic transceiver module designed and sold by Defendant Lumicore Technologies, Inc. for use in data center interconnect and telecommunications applications. Plaintiff's Infringement Contentions (served S

V. AGREED CLAIM CONSTRUCTIONS The Parties have met and conferred and have reached agreement on the construction of the following two (2) claim terms. The Parties respectfully request that the Court adopt the agreed constructions set forth below. Term 1: "optical signal" This term appears across multiple asserted claims of both the '847 Patent and the '193 Patent. The Parties agree that the term "optical signal" shoul

VI. DISPUTED CLAIM TERMS The Parties have been unable to reach agreement on the construction of the following twelve (12) claim terms, notwithstanding the good-faith meet-and-confer efforts described in Section XI below. For each disputed term, the chart below identifies: (a) the claim term at issue; (b) the patent(s) and claim(s) in which the term appears; (c) Plaintiff's proposed construction; (d) Defendant's propo

VII. CLAIM CONSTRUCTION BRIEFING SCHEDULE Pursuant to the Court's Scheduling Order (Dkt. No. 27, entered August 12, 2024), the following claim construction briefing schedule governs this case: The Parties understand that the Court may modify the foregoing schedule upon motion or sua sponte. The Parties further understand that claim construction briefs shall comply with the page limitations set forth in the Court's Pa

VIII. IDENTIFICATION OF INTRINSIC AND EXTRINSIC EVIDENCE In accordance with the Court's Patent Rules, the Parties identify below the categories of intrinsic and extrinsic evidence that each Party anticipates relying upon in its claim construction briefing. The identification of evidence below is not exhaustive, and each Party reserves the right to supplement its evidence in accordance with the Court's rules and order

1. Intrinsic Evidence Plaintiff OWS anticipates relying on the following intrinsic evidence in support of its proposed claim constructions: (a) The claims, specification (including all figures and drawings), and abstracts of each of the four asserted patents: U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015. (b) The complete prosecution histories of each of the four asserted patents, including all o

2. Extrinsic Evidence Plaintiff OWS anticipates relying on the following extrinsic evidence in support of its proposed claim constructions: (a) A declaration of Dr. Caroline Ashford, Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, who will serve as Plaintiff's technical expert on claim construction. Dr. Ashford is expected to offer opinions regarding the understanding of a

1. Intrinsic Evidence Defendant Lumicore anticipates relying on the following intrinsic evidence in support of its proposed claim constructions: (a) The claims, specification (including all figures and drawings), and abstracts of each of the four asserted patents: U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015. Defendant notes that the intrinsic evidence of the asserted patents is common to both P

2. Extrinsic Evidence Defendant Lumicore anticipates relying on the following extrinsic evidence in support of its proposed claim constructions: (a) A declaration of Dr. Rajesh Sundaram, Professor of Electrical and Computer Engineering at Pacific Western University, who will serve as Defendant's technical expert on both claim construction and validity. Dr. Sundaram is expected to offer opinions regarding the understa

IX. IDENTIFICATION OF POTENTIALLY APPLICABLE CLAIM CONSTRUCTION DOCTRINES The Parties identify the following legal doctrines as potentially applicable to the construction of the disputed claim terms identified in Section VI above. The identification of these doctrines is not exhaustive, and each Party reserves the right to raise additional legal arguments and doctrines in its claim construction briefing. A. Means-Plu

X. RESERVATION OF RIGHTS A. Plaintiff's Reservation of Rights Plaintiff OWS expressly reserves the following rights:

1. OWS reserves its rights to assert infringement under the doctrine of equivalents as to Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent, regardless of how the disputed claim terms are construed by the Court. OWS contends that, even if the Court adopts Defendant's proposed construction for any disputed term, the accused products infringe the asserted claims under the doctrine of equivalents because

2. OWS reserves the right to supplement its claim construction positions based on evidence obtained during ongoing fact discovery. Fact discovery in this case closes on May 1, 2025, pursuant to the Court's Scheduling Order (Dkt. No. 27). OWS notes that certain discovery remains outstanding, including depositions of Lumicore's engineers and technical witnesses, and that information obtained through such discovery may

3. OWS reserves all rights, claims, and defenses not expressly waived herein, including without limitation all rights under the Parties' respective discovery obligations and the Federal Rules of Civil Procedure. B. Defendant's Reservation of Rights Defendant Lumicore expressly reserves the following rights:

1. Lumicore reserves its right to file one or more petitions for inter partes review (IPR) with the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office with respect to any or all of the asserted patents. No IPR petitions have been filed to date. The one-year statutory deadline for filing IPR petitions under 35 U.S.C. § 315(b), running from the date of service of the complaint in this

2. Lumicore reserves the right to supplement its invalidity contentions and to seek modification of its claim construction positions based on evidence obtained during ongoing fact and expert discovery. Lumicore notes that expert discovery does not close until August 15, 2025, and that additional evidence bearing on claim construction may come to light during the expert phase of the case.

3. Lumicore reserves all rights, claims, and defenses not expressly waived herein, including without limitation its defenses of non-infringement, invalidity (under 35 U.S.C. §§ 101, 102, 103, and 112), unenforceability, and its counterclaim for declaratory judgment of non-infringement and invalidity.

XI. CERTIFICATION OF MEET AND CONFER The undersigned counsel for Plaintiff Optiwave Semiconductor Corp. and Defendant Lumicore Technologies, Inc. hereby certify, pursuant to the Court's Patent Rules and Scheduling Order (Dkt. No. 27), that they have met and conferred in good faith in an effort to narrow the number of disputed claim terms and to attempt to reach agreement on the construction of all claim terms identif

XII. SIGNATURES AND COUNSEL INFORMATION Respectfully submitted, For Plaintiff Optiwave Semiconductor Corp.: CALDERWOOD & HARKNESS LLP By: ________ Alan Ngo (CA Bar No. 287412; admitted pro hac vice) Marcus Delgado (TX Bar No. 24098731) Wendy Schultz (CA Bar No. 301894; admitted pro hac vice) Omar Siddiqui (CA Bar No. 314507; admitted pro hac vice) 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (2

XIII. CERTIFICATE OF SERVICE I hereby certify that on October 28, 2024, a true and correct copy of the foregoing Joint Claim Construction Statement was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to all registered participants. By: ________ Alan Ngo CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Teleph

XIV. PROPOSED APPENDICES The following Appendices will be filed separately or with the Parties' respective claim construction briefs, as directed by the Court. Appendix A — Asserted Claims in Full Text Appendix A will contain the full text of each asserted claim of each of the four asserted patents, reproduced verbatim from the patent documents, including all claim dependencies. Specifically, Appendix A will include: