Contract analysis

I. INTRODUCTION Plaintiff Optiwave Semiconductor Corp. ("OWS") respectfully submits this Opposition to Defendant Lumicore Technologies, Inc.'s ("Lumicore") Motion for Summary Judgment seeking to preclude OWS's doctrine of equivalents ("DOE") contentions as to Claims 3 and 7 of U.S. Patent No. 10,891,193 (the "'193 Patent") and Claim 12 of U.S. Patent No. 11,402,015 (the "'015 Patent"). For the reasons set forth below

II. STATEMENT OF THE CASE A. The Parties Plaintiff Optiwave Semiconductor Corp. OWS 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 and high-speed optical communication systems. OWS is the

III. LEGAL STANDARD A. Summary Judgment Standard Under Rule 56 Summary judgment is appropriate only when "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). A dispute of material fact is "genuine" if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S.

IV. ARGUMENT A. Genuine Disputes of Material Fact Preclude Summary Judgment on OWS's Doctrine of Equivalents Contentions Before addressing the specific contentions for each patent, OWS submits that the overarching question in this motion is whether the record evidence creates genuine disputes of material fact that preclude summary judgment. The answer is unequivocally yes. The doctrine of equivalents analysis require

1. Background on the Narrowing Amendment. During prosecution of the '193 Patent before the United States Patent and Trademark Office, the examiner issued a rejection of the original claims under 35 U.S.C. § 102 over a prior-art publication: Takahashi et al., "Dense WDM Silicon Photonic MUX," published in IEEE Photonics Technology Letters in March 2014 (hereinafter "Takahashi"). The Takahashi reference disclosed a wav

2. The Tangential-Relation Exception Applies. The central question is whether the rationale underlying the narrowing amendment — distinguishing over Takahashi's direct-detection multiplexer — bears only a tangential relation to the equivalent OWS asserts against Lumicore's accused products. The answer is clearly yes. The Takahashi reference disclosed a fundamentally different detection paradigm. Takahashi's dense WDM

3. The Function-Way-Result Analysis Creates a Triable Issue. Even apart from the prosecution history estoppel question, the underlying function-way-result analysis creates genuine disputes of material fact that preclude summary judgment. Function. Both the claimed "coherent detection module" and the accused element in Lumicore's products perform substantially the same function: detecting coherent optical signals by s

4. Lumicore's Anticipated Counter-Arguments and OWS's Responses. OWS anticipates that Lumicore will advance several arguments in support of its motion. None has merit. Lumicore's likely argument: The amendment surrendered all equivalents in the "coherent detection module" space because the amendment was made specifically to distinguish over prior art relating to detection modules. OWS's response: This argument improp

1. Background on the Narrowing Amendment. During prosecution of the '015 Patent, the examiner issued a rejection of certain claims under 35 U.S.C. § 103 as obvious over a combination of two prior-art references: U.S. Patent No. 8,412,007 to Bergmann ("Bergmann"), issued April 2, 2013, and International Publication No. PCT/EP2015/071234 to Simonsen ("Simonsen"), filed September 17, 2015. Bergmann disclosed a one-dimen

2. The Tangential-Relation Exception Applies. The Bergmann/Simonsen combination presented fundamentally different deficiencies. The examiner's § 103 rejection rested on combining two references that, individually and in combination, presented deficiencies that were unrelated to the specific equivalent OWS asserts against Lumicore's products. Bergmann disclosed only a one-dimensional grating coupler — a fundamentally

3. The Function-Way-Result Analysis Creates a Triable Issue. Function. Both the claimed "two-dimensional sub-wavelength grating" and the accused element in Lumicore's products perform substantially the same function: coupling light from an optical fiber into a silicon waveguide while managing both TE and TM polarization modes. This functional identity is supported by Lumicore's own design documents, which describe th

4. Lumicore's Anticipated Counter-Arguments and OWS's Responses. Lumicore's likely argument: The amendment specifically addressed the fill-factor relationship, and Lumicore's different fill-factor ratio is precisely the territory surrendered. OWS's response: This argument conflates the subject matter of the amendment with the reason for the amendment, just as Lumicore's parallel argument does for the '193 Patent. The

V. EVIDENTIARY SUPPORT A. Declarations and Expert Opinions OWS's DOE contentions are supported by the following declarations and expert opinions, which are part of the record or will be submitted contemporaneously with this Opposition:

1. Declaration of Dr. Caroline Ashford in Support of Plaintiff's Opening Claim Construction Brief (filed November 15, 2024, D.E. 44-1). Dr. Ashford's initial declaration set forth the POSITA definition for each asserted patent, the ordinary meaning of the disputed claim terms, and the technical context in which the claimed inventions operate.

2. Supplemental Declaration of Dr. Caroline Ashford in Support of Plaintiff's Reply Claim Construction Brief (filed December 20, 2024, D.E. 52-1). Dr. Ashford's supplemental declaration responded to the opinions of Dr. Rajesh Sundaram on claim construction issues and additionally addressed the prosecution-history-estoppel implications of the narrowing amendments to the '193 Patent and '015 Patent.

3. Dr. Ashford's Anticipated Expert Report (due June 15, 2025). Dr. Ashford's forthcoming expert report will contain a full function-way-result analysis for each DOE contention and a comprehensive prosecution-history-estoppel rebuttal, including her opinions on the applicability of the Festo tangential-re