Contract analysis

From: Omar Siddiqui <osiddiqui@calderwoodharkness.com> To: Wendy Schultz <wschultz@calderwoodharkness.com> Date: Fri, 18 Oct 2024 04:47:00 -0000 Subject: Re: Invalidity Contentions Review — Initial Analysis & Takahashi Observations

I've finished my first pass through Lumicore's invalidity contentions (served Monday under P.R. 3-3) covering all four asserted patents. They cite 23 prior-art references in total across the four patents — a pretty aggressive kitchen-sink approach, but I think there's real daylight on a number of the theories. I've attached my working notes organized patent by patent. Take a look when you get a chance and flag anythi

Having gone through the contentions against each patent alongside the prosecution histories we pulled together in September and OWS's infringement contentions from the 16th, my overall read is that Lumicore's invalidity case is aggressive but has meaningful vulnerabilities — particularly on the anticipation theories. Their strongest arguments are (1) the Bergmann + Li Wei obviousness combination against the '562 Pate

**'193 Patent — Takahashi Anticipation (Detailed Analysis)**

This is the one I spent the most time on because I think it's the most vulnerable piece of Lumicore's case and potentially a strong candidate for summary judgment.

Lumicore contends that Takahashi et al., "Dense WDM Silicon Photonic MUX," published in IEEE Photonics Technology Letters in March 2014, anticipates Claims 1, 3, 7, 10, 15, and 18 of U.S. Patent No. 10,891,193 under § 102. I have several concerns with their mapping:

*1. Missing "coherent detection module" limitation.* This is the fundamental gap. Takahashi describes a wavelength multiplexer structure, but it does not disclose or teach a coherent detection module integrated on a silicon substrate as required by independent Claim 1. Takahashi's system uses direct detection — not coherent detection. Anticipation requires disclosure of every element, and this one simply isn't there.

*2. No integration on a silicon substrate as claimed.* Takahashi demonstrates a discrete component approach. The '193 Patent requires integration "on a silicon substrate" — and regardless of which side's claim construction prevails on that term, Takahashi falls short. Under Lumicore's narrower proposed construction (monolithic fabrication on a single silicon die), Takahashi fails because it uses separate optical chip

*3. Claims 3 and 7 — prosecution history is directly on point.* Even if Lumicore could somehow stretch Takahashi to cover the independent claim (which I seriously doubt), Claims 3 and 7 contain the "coherent detection module" limitation that was narrowed during prosecution in direct response to a § 102 rejection over Takahashi itself. This is significant and, frankly, a little surprising that Lumicore is pressing it.

*4. Recommendation.* I think this is one of our strongest validity positions. I'd suggest that Dr. Ashford specifically address the Takahashi gaps in her validity report (draft due June 15, 2025) and walk through the element-by-element failures in detail. The prosecution history showing the examiner's consideration and ultimate allowance over Takahashi should be featured prominently in any summary judgment briefing o

Lumicore asserts six prior-art references against U.S. Patent No. 10,234,847. Takahashi is cited here as well for anticipation, but the "waveguide multiplexer" term is at the center of our claim construction dispute. Under OWS's broader proposed construction ("an optical device that combines multiple optical signals of different wavelengths onto a single waveguide"), I think Takahashi still fails to anticipate becaus

The Simonsen PCT application (PCT/EP2015/071234, published September 17, 2015) is cited in an obviousness combination. The combination requires significant hindsight reconstruction, and I'm not seeing a clear motivation to combine in the contentions — I'll flesh this out in the dedicated '847 analysis memo.

One broader point to keep in mind: the '562 and '847 Patents are in the same family (continuation relationship), which may create shared prior-art exposure. I need to map the priority chains carefully to make sure we're not overlooking any vulnerabilities that carry across both patents.

This is where Lumicore's invalidity case has the most teeth. The Bergmann (U.S. Patent No. 8,412,007, issued April 2, 2013) + Li Wei ("Thermal Solutions for PICs," OFC 2013, March 2013) obviousness combination under § 103 is well put together and will need a serious response. Lumicore also asserts Li Wei independently as an anticipation reference under § 102, which I think is weaker than the combination but warrants

A few other notes on the '562: the patent was originally assigned to Solara Optics and acquired by OWS via the June 15, 2018 APA for $34.5M (along with 11 other patents). Chain of title looks clean based on the prosecution history review. Gregory Falk — former Solara VP, now serving as OWS's industry expert — could be a useful witness on the state of the art at the time of invention, particularly to rebut the motivat

I also want to examine whether we have any swearing-behind evidence — pre-filing-date conception and reduction to practice by Solara — that could knock out any of the close-in-time prior art like Li Wei. I'll coordinate with you on that once I've dug into the Solara records more carefully.

Lumicore's prior-conception defense based on its own internal design documents dated 2016–2017 has an appealing narrative, but the corroboration problem is severe. Under the well-established rule requiring independent corroboration of inventor testimony regarding prior conception, Lumicore's supporting documents appear to be internal engineering notebooks and design files created and maintained solely by Lumicore emp

The timing is also very tight. The '015 Patent (U.S. 11,402,015) claims priority to Provisional App. No. 62/499,117 filed April 7, 2017, with a non-provisional filing date of August 30, 2019 and issue date of August 2, 2022. Lumicore's documents are dated 2016–2017 — if they're trying to establish prior conception before the April 7, 2017 provisional priority date, the window is extremely narrow and the absence of in

One additional point: the "two-dimensional sub-wavelength grating" limitation in Claim 12 was narrowed during prosecution to overcome a § 103 rejection combining Bergmann with Simonsen. This is relevant to prosecution history estoppel for DOE purposes (covered in the PHE memos from October 10 and 12), but it also means the examiner found those references insufficient standing alone, which supports our validity positi

I'd recommend targeting the prior-conception defense for summary judgment, which aligns with the partial SJ strategy we've been discussing for the '015 Patent.

1. **Your review.** Please take a look at the attached notes and let me know if you want me to expand any section before we present to Alan.

2. **Patent-by-patent memos.** I'd like to start drafting the individual invalidity analysis memos for each patent — targeting completion in early November. I'll build them out from the attached working notes.

3. **Dr. Ashford call.** I think we should schedule a call with Dr. Ashford soon to walk through the Takahashi analysis in particular and start framing her validity rebuttal opinions. The sooner she's engaged on this, the better positioned we'll be.

4. **IPR time-bar.** One thing to keep on our radar: under § 315(b), Lumicore's deadline to file any IPR petitions is one year from service of the complaint — that's May 1, 2025 (complaint served May 1, 2024). As we assess which of Lumicore's invalidity arguments are strongest, we should be thinking about which ones might get channeled to IPR vs. district court and how that affects our strategy.

5. **discovery timeline.** Fact discovery closes May 1, 2025, and plaintiff expert reports are due June 15, 2025. The invalidity analysis needs to be substantially complete well before those deadlines to support Dr. Ashford's report drafting.

Happy to discuss any of this over the weekend if you have time, or we can sync up Monday morning. Have a good weekend either way.

**Omar Siddiqui** Associate, intellectual Property Litigation Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 D: (213) 555-4187 osiddiqui@calderwoodharkness.com

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