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Contract analysis / markman-prep-memo.docx
markman-prep-memo.docx
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I. EXECUTIVE SUMMARY
I. EXECUTIVE SUMMARY This memorandum provides a comprehensive preparation guide for the upcoming Markman hearing scheduled for March 14, 2025, before Judge James R. Gilstrap in the Eastern District of Texas, marshall Division. Procedural Posture. Fourteen total disputed claim terms were identified in the Joint Claim Construction Statement filed on October 28, 2024, pursuant to the Court's Scheduling Order. Following
1. U.S. Patent No. 10,234,847 (the "'847 Patent") — "Multi-Channel Silicon Photonic Waveg
1. U.S. Patent No. 10,234,847 (the "'847 Patent") — "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," filed September 14, 2016, issued March 19, 2019.
2. U.S. Patent No. 10,891,193 (the "'193 Patent") — "High-Bandwidth Coherent Optical Tran
2. U.S. Patent No. 10,891,193 (the "'193 Patent") — "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," filed April 7, 2017, issued January 12, 2021.
3. U.S. Patent No. 9,678,562 (the "'562 Patent") — "Method for Thermal Management of Phot
3. U.S. Patent No. 9,678,562 (the "'562 Patent") — "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," filed November 22, 2014, issued June 13, 2017 (originally assigned to Solara Optics, Inc.; acquired by OWS via Asset Purchase Agreement dated June 15, 2018, for $34.5 million).
4. U.S. Patent No. 11,402,015 (the "'015 Patent") — "Polarization-Diverse Grating Coupler
4. U.S. Patent No. 11,402,015 (the "'015 Patent") — "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," filed August 30, 2019, issued August 2, 2022. Stakes of the Markman Ruling. The claim constructions adopted by the Court will directly and materially impact every aspect of this case going forward. On the infringement side, constructions of the four primary disputed terms — "waveguide multiple
II. JUDGE GILSTRAP — BENCH PROFILE AND MARKMAN HEARING TENDENCIES
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II. JUDGE GILSTRAP — BENCH PROFILE AND MARKMAN HEARING TENDENCIES A. General Approach to Claim Construction Judge James R. Gilstrap of the Eastern District of Texas is among the most experienced patent trial judges in the country, having presided over hundreds of patent cases and conducted an extraordinary number of Markman hearings during his tenure on the bench. His claim construction methodology is well-establishe
III. DISPUTED TERM-BY-TERM ANALYSIS
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III. DISPUTED TERM-BY-TERM ANALYSIS The following analysis covers each of the twelve remaining disputed claim terms. For each term, we provide: (A) the claim language and patent(s) at issue; (B) OWS's proposed construction; (C) Lumicore's proposed construction; (D) key intrinsic and extrinsic evidence supporting OWS's position; (E) Lumicore's best arguments; (F) anticipated questions from the Court; (G) recommended r