Contract analysis

I. EXECUTIVE SUMMARY This memorandum sets forth the three-pronged damages strategy that forms the backbone of Optiwave Semiconductor Corp.'s ("OWS" or "Optiwave") affirmative case against Lumicore Technologies, Inc. ("Lumicore") in the above-captioned matter. The three prongs consist of: (1) lost profits under the Panduit framework; (2) a reasonable royalty under the Georgia-Pacific framework, applied to the subset o

II. BACKGROUND AND CASE OVERVIEW A. The Parties

1. Plaintiff: Optiwave Semiconductor Corp. (OWS) Optiwave Semiconductor Corp. is a Delaware corporation headquartered at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. OWS is a fabless semiconductor company specializing in the design, development, and commercialization of silicon photonics chipsets for data-center interconnects. The company was founded in 2011 and has grown to approximatel

2. Defendant: Lumicore Technologies, Inc. Lumicore Technologies, Inc. is a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore is a fast-growing entrant in the silicon-photonics transceiver market, having been founded in 2015 and rapidly expanded to approximately 870 employees. Lumicore's estimated fiscal year 2023 revenue was approximately $312.6 million, a figure

III. THEORY 1 — LOST PROFITS (PANDUIT ANALYSIS) A. Legal Framework Under 35 U.S.C. § 284, a patent holder is entitled to "damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer." The statute provides the floor (a reasonable royalty) but not the ceiling; where a patentee can demonstrate that it would have made the infringer

IV. THEORY 2 — REASONABLE ROYALTY (GEORGIA-PACIFIC ANALYSIS) A. Legal Framework Where lost profits cannot be shown — either because the patentee cannot satisfy the Panduit factors or because a portion of the infringer's sales would not have been captured by the patentee — the patent statute provides that the patentee is entitled to "in no event less than a reasonable royalty for the use made of the invention by the i

V. THEORY 3 — ENHANCED DAMAGES FOR WILLFUL INFRINGEMENT A. Legal Framework Under 35 U.S.C. § 284, the Court "may increase the damages up to three times the amount found or assessed." Enhanced damages are a discretionary remedy available to the Court upon a finding of willful infringement, and they serve the dual purposes of compensating the patentee for litigation costs and deterring egregious infringement conduct. I

1. Pre-Suit Notice (FairPoint Letters): FairPoint Licensing Group, LLC, acting on behalf of OWS, sent the first licensing and notice letter to Lumicore's General Counsel, Raymond Bautista, on January 15, 2023. This letter identified the '847, '193, and '562 Patents, described specific infringement indicators identified in the Benchmark teardown of the LumiLink 400G-ZR+, and invited Lumicore to engage in licensing dis

2. In-Person Licensing Meeting: On April 20, 2023, an in-person licensing meeting was held in Austin, Texas. Representing OWS were Angela Reeves of FairPoint Licensing Group and Rebecca Tanaka, OWS's General Counsel. Representing Lumicore were Raymond Bautista and Kate Rourke of Hawthorne Vega & Cruz. According to the deposition testimony of Angela Reeves, taken on December 10, 2024, Lumicore's representatives showed

3. Continued Infringement After Notice: After receiving both FairPoint letters and attending the in-person licensing meeting, Lumicore launched the LumiEdge 1600G-LR transceiver module in Q4 2023. This launch occurred approximately six months after the in-person meeting and expanded the scope of infringement to a third product line, implicating the '193 and '015 Patents. The launch of a new infringing product after e

4. Design-Phase Awareness: We anticipate testimony from Melissa Chen, a former Lumicore engineer now employed at Veridian Photonics, Inc., that Lumicore's LumiLink 400G-ZR+ design team accessed and reviewed OWS's published patent application No. 2018/0123456 (which corresponds to the '193 Patent) during the product design phase in 2021–2022. This testimony has been confirmed in part by the deposition of Dr. Sandra Mi

5. Refusal to Produce Opinion-of-Counsel Letters: In Lumicore's July 10, 2023 declination letter, Lumicore stated that it had obtained "competent legal opinions" concluding that its products do not infringe the asserted patents. However, Lumicore has refused to produce these opinion letters in discovery, asserting attorney-client privilege and work product protection. Calderwood & Harkness filed a Motion to Compel pr