Contract analysis

From: Wendy Schultz <wschultz@calderwoodharkness.com> To: Alan Ngo <ango@calderwoodharkness.com> Date: Mon, 20 Jan 2025 09:42:00 -0000 Subject: Markman Preparation Timeline & Assignments — OWS v. Lumicore (Case No. 2:24-cv-00319-JRG)

Happy Monday. Now that all claim construction briefing is complete, I want to lay out our preparation timeline and assignments for the March 14, 2025 Markman hearing before Judge Gilstrap in marshall.

Here's where we stand procedurally: The final Joint Claim Construction Chart was filed on January 15 (D.E. 58), consolidating all 14 disputed terms — 12 remain in dispute, with 2 agreed upon. Lumicore's Sur-Reply Claim Construction Brief was filed January 10 (D.E. 56, by leave of Court), closing out the briefing cycle (OWS Opening Brief — November 15, 2024; Lumicore Responsive Brief — December 6, 2024; OWS Reply Brie

We now have two major deliverables to prepare: (1) the Claim Construction Tutorial submission and (2) the Markman Hearing Presentation slides. I'm also flagging a few other preparation items below. This is a tight timeline, so please review the assignments carefully.

**1. CLAIM CONSTRUCTION TUTORIAL — PLAINTIFF'S SUBMISSION**

The Court's scheduling order requires submission of claim construction tutorials in February 2025. I need to confirm the exact due date with Jim Callahan at Whitmore & Callahan and will circulate that as soon as I have it.

The purpose of the tutorial is to educate Judge Gilstrap on the underlying technology at issue. The content should cover:

- Silicon photonics fundamentals - Waveguide multiplexing technology (relevant to the '847 Patent, U.S. 10,234,847) - Coherent optical transceivers integrated on silicon substrate (relevant to the '193 Patent, U.S. 10,891,193) - Thermal management in photonic integrated circuits using embedded micro-channel heat sinks (relevant to the '562 Patent, U.S. 9,678,562) - Polarization-diverse grating couplers for silicon ph

Format should be Northgate Services Inc. or keynote, targeting 25–35 slides. This needs to be accessible to a non-specialist audience — clear, clean, and visual. I've been coordinating with Dr. Caroline Ashford's team at Northfield Institute of Technology on diagrams and animations, and they can provide technical illustrations to incorporate.

**Omar** — I'd like you to take the first draft. Please target completion by **February 7, 2025**. Work primarily from Dr. Ashford's November 15, 2024 declaration (filed in support of the Opening Brief) and her December 20, 2024 supplemental declaration (filed in support of the Reply Brief). Also draw from the Appendix of Intrinsic Evidence and Appendix of Extrinsic Evidence filed with the Opening Brief — the IEEE st

I will review and provide comments by **February 14, 2025**. Alan, I'd appreciate your final review by **February 21, 2025**. Filing target is the last week of February.

**2. MARKMAN HEARING PRESENTATION SLIDES**

These are our slides for oral argument on March 14. I'm targeting 60+ slides covering each of the 12 disputed claim terms. For each term, we should include:

- The claim language in context (with the relevant claim element highlighted) - OWS's proposed construction - Lumicore's proposed construction (from the Joint Claim Construction Chart) - Key specification excerpts supporting our position - Prosecution history excerpts (office actions, responses, amendments, examiner interviews) - Visual aids and diagrams where helpful

The four terms I expect to receive the most attention — and where I plan to build out the most detailed slide sequences — are:

**(a) "waveguide multiplexer" ('847 Patent):** OWS proposes: "an optical device that combines multiple optical signals of different wavelengths onto a single waveguide." Lumicore proposes an unduly narrow construction requiring "an arrayed waveguide grating" with "a slab coupler and phase-shifted waveguide array." Their construction reads in structural limitations from preferred embodiments and excludes ring-resonato

**(b) "integrated on a silicon substrate" ('193 Patent):** OWS proposes: "formed on or within a silicon-based wafer using semiconductor fabrication processes." Lumicore proposes: "monolithically fabricated on a single silicon die without hybrid bonding or heterogeneous integration." Their construction would effectively read out the hybrid integration embodiments described in the specification itself.

**(c) "micro-channel heat sink" ('562 Patent):** OWS proposes: "a heat-dissipating structure containing channels with a hydraulic diameter of less than 1 mm." Lumicore proposes: "a closed-loop liquid-cooling system with channels having a hydraulic diameter between 10 µm and 200 µm." Lumicore's construction imports both a system-level limitation (closed-loop liquid cooling) and an arbitrarily narrow dimensional range

**(d) "polarization-diverse grating coupler" ('015 Patent):** OWS proposes: "a grating coupler capable of coupling light of two orthogonal polarization states." Lumicore proposes: "a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes." Again, their construction improperly imports structural limitations from a single embodiment.

**I will prepare the first draft**, targeting completion by **February 14, 2025**. I'll incorporate content from the Opening Brief, Reply Brief, and both Ashford declarations.

**Omar** — I'll need your help on two fronts:

- **Prosecution history excerpts:** Please pull and organize the relevant prosecution history for each disputed term, with particular attention to the means-plus-function terms (Claim 9 of the '847 Patent and Claim 15 of the '193 Patent). Use our internal means-plus-function analysis memo dated October 5, 2024 as your roadmap. - **Claim-differentiation arguments:** Please also flag any claim-differentiation arguments

**Marcus** — please review the slides for consistency with the Reply Brief arguments by **February 21, 2025**. I want to make sure we're not inadvertently departing from any positions we've staked out in the briefing.

**Alan** — final review and approval by **February 28, 2025**, please.

**3. MARKMAN HEARING PREPARATION MEMORANDUM (INTERNAL)**

I will separately prepare an internal Markman Hearing Preparation Memorandum for the team, targeting completion by **February 28, 2025**. This will include:

- Anticipated questions from Judge Gilstrap, based on his prior Markman hearings in E.D. Tex. - Suggested sound-bite answers for each of the 12 disputed terms - Fallback positions on each term

I'll circulate a draft to Alan and Marcus for input before finalizing by March 7.

I plan to touch base with Jim Callahan at Whitmore & Callahan LLP (110 North College Avenue, Suite 800, Tyler, TX 75702) this week to:

- Confirm the exact due date for the tutorial submission - Confirm any courtroom technology or presentation format preferences for Judge Gilstrap's courtroom (screen size, file format requirements, whether we can use animations, etc.) - Discuss logistics for the March 14 hearing (courtroom setup, attorney seating, podium arrangements)

I'll report back once I've connected with Jim.

**5. PROSECUTION HISTORY ESTOPPEL CONSIDERATIONS**

A reminder as we build the hearing presentation: we need to be very careful in how we handle the prosecution history estoppel issues that will directly affect our doctrine of equivalents contentions post-Markman.

Two internal memos are essential reading here:

- **PHE analysis for the '193 Patent (October 10, 2024):** This addresses the narrowing of "coherent detection module" during prosecution in response to the § 102 rejection over Takahashi et al. - **PHE analysis for the '015 Patent (October 12, 2024):** This addresses the narrowing amendment to "two-dimensional sub-wavelength grating" made to overcome the § 103 rejection combining Bergmann with Simonsen (PCT/EP2015/0

The constructions adopted at Markman will directly impact the viability of our DOE contentions for Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent. Alan — it's worth considering now whether we want to address any DOE implications during oral argument or reserve those issues entirely for trial. Happy to discuss.

**6. SUMMARY OF DEADLINES AND ASSIGNMENTS**

| Deliverable | Responsible | First Draft Due | Review By | Final Due | |---|---|---|---|---| | Claim Construction Tutorial (25–35 slides) | Omar Siddiqui (first draft) | Feb 7, 2025 | Wendy (Feb 14); Alan (Feb 21) | Last week of Feb 2025 | | Markman Hearing Slides (60+ slides) | Wendy Schultz (first draft) | Feb 14, 2025 | Marcus (Feb 21); Alan (Feb 28) | Mar 7, 2025 | | Markman Hearing Prep Memo (internal) | Wendy

Please flag any scheduling conflicts with the deadlines above as soon as possible so we can adjust if needed.

A few items on the horizon beyond Markman:

- **Fact discovery closes May 1, 2025.** We still have approximately 12 fact depositions to take, and we should be mapping those out now. Additionally, the Melissa Chen third-party deposition subpoena is being issued January 22, 2025 — Omar, please keep an eye on that for service confirmation. - **IPR filing deadline:** The one-year bar under 35 U.S.C. § 315(b) falls on **May 1, 2025** (one year from service of the c

Finally, Alan — would you like to schedule a team prep session the week of **March 3** for a Markman dry run? I think a full walk-through of the presentation with mock questioning would be very valuable given the number of disputed terms.

Thanks, everyone. Let me know if you have questions on any of the above.

--- Wendy Schultz Associate Calderwood Harkness LLP wschultz@calderwoodharkness.com