Contract analysis

I. INTRODUCTION Plaintiff Optiwave Semiconductor Corp. ("OWS") respectfully moves the Court to exclude specific portions of the expert report and anticipated trial testimony of Defendant Lumicore Technologies, Inc.'s ("Lumicore") technical and validity expert, Dr. Rajesh Sundaram, Professor of Electrical & Computer Engineering at Pacific Western University, San Diego, California. Dr. Sundaram was retained by Lumicore

II. FACTUAL AND PROCEDURAL BACKGROUND A. The Asserted Patents OWS asserts four United States utility patents in this action. Each patent relates to innovations in silicon photonic technology — the field of integrating optical components on silicon substrates to achieve high-bandwidth, low-cost optical communication: The '847 Patent. U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multip

III. LEGAL STANDARD A. Federal Rule of Evidence 702 Federal Rule of Evidence 702 governs the admissibility of expert testimony and provides: A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if the proponent demonstrates to the court that it is more likely than not that: (a) the expert's scientific, technical, or other sp

IV. ARGUMENT A. Dr. Sundaram's Prior-Conception Opinions Regarding the '015 Patent Should Be Excluded Because They Rely on Uncorroborated Lumicore Internal Documents

1. Overview of Dr. Sundaram's Prior-Conception Opinion. Dr. Sundaram opines in his expert report that the '015 Patent (U.S. Patent No. 11,402,015, "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers") is invalid because Lumicore conceived of the claimed invention before the '015 Patent's earliest effective priority date. See Ex. 1 (Sundaram Report) at ¶¶ 412–498. The '015 Patent claims priority to

2. The Legal Requirement of Corroboration. The Federal Circuit has long held that a prior-conception defense requires corroboration. This requirement reflects a deeply rooted concern that interested parties may fabricate or embellish evidence of prior invention to defeat a patent holder's rights. See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) ("The law is clear that corroboration

3. Dr. Sundaram's Failure to Address Corroboration. Dr. Sundaram's expert report does not identify any corroborating evidence beyond the Lumicore internal documents themselves. This is not a matter of Dr. Sundaram's analysis being incomplete in some minor respect. His report does not even acknowledge the existence of the corroboration requirement, let alone attempt to satisfy it. See Ex. 1 (Sundaram Report) at ¶¶ 412

4. The Unreliability of Dr. Sundaram's Methodology. Dr. Sundaram's prior-conception methodology is unreliable because it treats self-serving, uncorroborated corporate documents as conclusive evidence of prior conception without any independent verification whatsoever. His approach — accepting the face-date and face-content of interested-party documents without further inquiry — is not the methodology of a reliable ex

5. OWS's Pending Summary Judgment Motion on This Issue. OWS notes that it is separately pursuing partial summary judgment on the invalidity defense as it relates to the '015 Patent prior-conception theory. OWS's Draft Motion for Partial Summary Judgment on the Validity of the '015 Patent is due September 15, 2025, and argues that Lumicore's prior-conception defense fails as a matter of law because the internal design

1. Overview of Dr. Sundaram's Obviousness Opinions. ##### a. The '847 Patent Dr. Sundaram opines that certain claims of the '847 Patent (U.S. Patent No. 10,234,847, "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss") are invalid as obvious under 35 U.S.C. § 103. See Ex. 1 (Sundaram Report) at ¶¶ 156–287. His obviousness analysis relies on combinations of prior-art references, primarily: •

2. Dr. Sundaram's Failure to Account for Differences Between the Prior Art and the Claims. ##### a. The Obviousness Framework The Supreme Court established the analytical framework for assessing obviousness under 35 U.S.C. § 103 in Graham v. John Deere Co., 383 U.S. 1 (1966), and refined it in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). The Graham analysis requires four inquiries: (1) Determining the

3. Dr. Sundaram's Failure to Address Secondary Considerations of Non-Obviousness. A complete and reliable obviousness analysis must address the fourth Graham factor: objective indicia of non-obviousness, also known as secondary considerations. These include, but are not limited to: commercial success of products practicing the patented invention; long-felt but unsolved need in the relevant industry; failure of others

4. Dr. Sundaram's POSITA Definition Is Unreliable. The third Graham factor requires "resolving the level of ordinary skill in the pertinent art." The definition of a person of ordinary skill in the art ("POSITA") is critical to the obviousness analysis because it sets the baseline against which the differences between the prior art and the claimed invention are evaluated. A POSITA definition that is improperly calibr

V. THE CHALLENGED OPINIONS WOULD CONFUSE AND MISLEAD THE JURY If admitted, Dr. Sundaram's unreliable opinions would present the jury with a veneer of scientific authority on issues where the underlying methodology is fundamentally flawed. This risk is not hypothetical or speculative — it is inherent in the nature of expert testimony on complex technical subjects. With respect to the prior-conception defense for the '

VI. RELIEF REQUESTED For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court enter an order:

1. Excluding Dr. Rajesh Sundaram's opinions regarding the invalidity of the '015 Patent (U.S. Patent No. 11,402,015) based on Lumicore's prior-conception defense, including all testimony, demonstratives, and exhibits relying on Lumicore's uncorroborated internal design documents dated 2016–2017;

2. Excluding Dr. Rajesh Sundaram's opinions regarding the obviousness of the '847 Patent (U.S. Patent No. 10,234,847) and the '562 Patent (U.S. Patent No. 9,678,562) claims to the extent those opinions: (a) fail to identify and address the differences between the cited prior-art references and the claimed inventions; (b) fail to provide a reliable motivation-to-combine analysis; and (c) fail to meaningfully address s

3. Precluding Dr. Sundaram from offering any testimony at trial on these excluded topics, including through demonstratives, summaries, or references in other portions of his testimony; and

4. Granting such other and further relief as the Court deems just and proper.

VII. CONCLUSION Plaintiff Optiwave Semiconductor Corp. has demonstrated that two specific categories of Dr. Rajesh Sundaram's expert opinions fail to meet the reliability requirements of Federal Rule of Evidence 702 and the gatekeeping standards of Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), and Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999). First, Dr. Sundaram's prior-conception opinions r