Contract analysis

I. INTRODUCTION Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully moves this Court, pursuant to Federal Rule of Civil Procedure 56(a), for partial summary judgment on a discrete and well-defined issue: the legal insufficiency of Defendant Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") affirmative defense that U.S. Patent No. 11,402,015 (the "'015 Patent") is invalid based on allege

II. STATEMENT OF UNDISPUTED MATERIAL FACTS Pursuant to Local Rule CV-56(a), OWS submits the following statement of undisputed material facts. Each fact is supported by citations to the record and, where applicable, to the supporting declarations and exhibits filed concurrently with this Motion. A. The '015 Patent and Its Priority Chain

1. The '015 Patent (U.S. Patent No. 11,402,015), titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," was filed as Application No. 16/555,814 on August 30, 2019, and issued on August 2, 2022, to Optiwave Semiconductor Corp. as assignee. (Complaint Ex. D, D.E. 1-4; Ex. A hereto ('015 Patent face page).)

2. The '015 Patent expressly claims the benefit of U.S. Provisional Application No. 62/499,117, filed on April 7, 2017, pursuant to 35 U.S.C. § 119(e). (Ex. A ('015 Patent, Related Applications section); Ex. B (Provisional Application No. 62/499,117).)

3. A related patent in the OWS portfolio, U.S. Patent No. 10,891,193 (the "'193 Patent"), titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," also claims priority to the same Provisional Application No. 62/499,117 (filed April 7, 2017). ('193 Patent face page; prosecution history excerpts at Ex. H.)

4. The named inventors of the '015 Patent are Dr. Jian-Wei Huang, Chief Technology Officer of OWS, and Dr. Nikolai Petrov, Vice President of Engineering, Photonics Division, of OWS. (Ex. A ('015 Patent face page).)

5. The '015 Patent was prosecuted before the United States Patent and Trademark Office by Dr. Martin Chu of Cascade IP Advisors, LLC, located at 1550 Crystal Drive, Suite 600, Arlington, Virginia 22202. (Ex. H (Prosecution history, attorney of record).)

6. The earliest effective priority date of the '015 Patent is April 7, 2017, which is the filing date of Provisional Application No. 62/499,117. OWS's technical expert, Dr. Caroline Ashford, has opined that the Provisional Application provides full written-description and enablement support for each element of the asserted claims, including Claims 1, 5, 8, 12, and 16. (Ex. A; Ex. B; Ex. H; Declaration of Dr. Caroline

7. OWS was the original assignee of the '015 Patent and has maintained continuous ownership of the patent since the date of its filing. No assignment, transfer, license, or other conveyance has altered OWS's status as the sole owner of the '015 Patent. (USPTO Assignment Records; OWS Initial Disclosures, D.E. 32.)

8. All required maintenance fees on the '015 Patent have been paid and are current. The '015 Patent remains in force and has not been subject to any reexamination, inter partes review, or post-grant review proceeding. (USPTO Records.)

9. OWS currently holds a portfolio of 142 issued United States patents and 58 pending United States patent applications, spanning silicon photonic transceiver technology, waveguide architectures, photonic integrated circuit packaging, and related fields. (OWS Initial Disclosures, D.E. 32.) C. Lumicore's Prior-Conception Defense

10. On October 14, 2024, Lumicore served its Patent Rule 3-3 Invalidity Contentions (D.E. 36), which assert, among other defenses, that the '015 Patent is invalid based on prior conception by Lumicore engineers. (Ex. C (Lumicore Invalidity Contentions, relevant sections on prior-conception defense).)

11. Lumicore's invalidity contentions cite internal Lumicore design documents dated 2016–2017 as the sole documentary basis for its prior-conception defense with respect to the '015 Patent. No external prior art references are cited in support of this particular defense. (Ex. C (Lumicore Invalidity Contentions, '015 Patent section).)

12. Lumicore has identified three categories of internal documents purportedly supporting its prior-conception defense: (a) engineering design notebooks maintained by Lumicore photonics engineers; (b) internal presentation slides prepared for Lumicore management and engineering team meetings; and (c) internal email correspondence among Lumicore engineers concerning photonic integrated circuit design. (Ex. C; Lumicore

13. Upon careful review and cataloging of the entirety of Lumicore's document productions cited in its invalidity contentions, the internal documents produced by Lumicore and relied upon in its prior-conception defense bear dates ranging from mid-2016 through late 2017. Critically, the documents that purport to show conception of the specific polarization-diverse grating coupler structure claimed in the '015 Patent —

14. Lumicore's earliest documents, dated mid-2016 through early 2017, relate to general photonic integrated circuit ("PIC") design concepts — including generic waveguide layouts, basic grating architectures for fiber-to-chip coupling, and general system-level block diagrams for coherent optical transceivers. These documents do not contain any reference to a "polarization-diverse grating coupler," do not disclose any

15. In its responses to OWS's Interrogatory No. 14 (seeking identification of all witnesses with knowledge of the alleged prior conception and all evidence corroborating the alleged conception), Lumicore did not identify any independent witness — i.e., any witness who is not a current or former Lumicore employee — who can corroborate the conception dates or the inventive contribution allegedly reflected in the intern

16. During her deposition on November 19, 2024, Lumicore's Chief Technology Officer, Dr. Sandra Michaud, testified that she could not identify specific non-infringing design alternatives for the accused products. Relevant to this Motion, Dr. Michaud was unable to specifically recall when the grating coupler designs reflected in the internal documents were first conceived, stating that she had only a "general sense" t

17. Dr. Eric Dalmqvist, Lumicore's Vice President of Product Development, who is identified in Lumicore's invalidity contentions as one of the engineers involved in the alleged prior conception, has not been deposed on this specific topic to date. Lumicore has not proffered a declaration from Dr. Dalmqvist or any other Lumicore engineer corroborating the specific dates of conception or identifying any independent cor

18. Lumicore's Rule 30(b)(6) corporate designee, deposed on the topic of "the factual basis for Lumicore's invalidity contentions including its prior-conception defense," did not provide testimony corroborating the specific dates of conception and was unable to identify any corroborating witness independent of Lumicore. When asked to identify any third party to whom the alleged inventive concepts had been disclosed p

19. The internal documents that Lumicore relies upon are authored exclusively by Lumicore employees who are interested parties in this litigation. These authors include engineers who remain employed by Lumicore and who, as employees of the defendant accused of patent infringement, have a direct financial interest in the outcome of this case. Their documentary and testimonial evidence, standing alone, cannot satisfy t

20. No contemporaneous third-party evidence of any kind — including, without limitation, disclosures to parties outside Lumicore, academic or industry publications, customer or vendor communications, foundry design submissions, conference presentations, provisional or non-provisional patent applications, or any other external filing — corroborates Lumicore's alleged conception of the polarization-diverse grating coup

21. Lumicore Technologies, Inc. was founded in 2015 and is a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore designs, manufactures, and sells silicon photonic transceiver products for data center and telecommunications applications. (Public records; Lumicore 10-K (FY 2023).)

22. Lumicore conducted its initial public offering on the Nasdaq Stock Market in March 2022 at an offering price of $24.00 per share. At the time of the filing of the Complaint in this action on April 22, 2024, Lumicore's share price was approximately $37.00 per share, with approximately 91.8 million shares outstanding, representing an approximate market capitalization of $3.4 billion. (Public filings; Lumicore 10-K;

23. Lumicore's Chief Executive Officer is Thomas "Tom" Kessler. Its Chief Technology Officer is Dr. Sandra Michaud. Its General Counsel is Raymond Bautista. (Public filings; discovery responses.) F. The Accused Products

24. The '015 Patent is asserted in this action against two Lumicore products: (a) the LumiLink 800G-DR8 silicon photonic transceiver module, which was commercially launched in the first quarter of 2023 and generated fiscal year 2023 revenue of approximately $128.4 million; and (b) the LumiEdge 1600G-LR silicon photonic transceiver module, which was commercially launched in the fourth quarter of 2023 and generated fis

25. The asserted claims of the '015 Patent include Claims 1, 5, 8, 12, and 16. OWS asserts literal infringement of Claims 1, 5, 8, and 16 and asserts infringement of Claim 12 under both literal infringement and the doctrine of equivalents. (OWS Infringement Contentions, D.E. 32.)

III. LEGAL STANDARD A. Summary Judgment Under Federal Rule of Civil Procedure 56 A court "shall grant summary judgment if the movant shows that 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). The purpose of summary judgment is to "isolate and dispose of factually unsupported claims or defenses" and to avoid unnecessary trials on cl

IV. ARGUMENT A. Lumicore's Internal Documents Post-Date the '015 Patent's Priority Date

1. The '015 Patent's Earliest Effective Priority Date Is April 7, 2017 Under 35 U.S.C. § 119(e), a nonprovisional patent application that claims the benefit of a provisional application is entitled to the filing date of the provisional application for all claims that are supported by the provisional application's disclosure. The '015 Patent expressly claims the benefit of Provisional Application No. 62/499,117, filed

2. Lumicore's Documents Purporting to Show the Claimed Invention Are Dated After April 7, 2017 The undisputed record demonstrates that every Lumicore internal document that purports to disclose the specific polarization-diverse grating coupler structure claimed in the '015 Patent is dated after the April 7, 2017 priority date. A document-by-document analysis of Lumicore's cited references confirms this conclusion: En

3. Lumicore's Pre-Priority-Date Documents (Mid-2016) Do Not Disclose the Claimed Invention Lumicore's document productions do include certain documents that pre-date the April 7, 2017 priority date. Specifically, documents dated from mid-2016 through early 2017 appear in Lumicore's invalidity contentions. However, a careful analysis of these documents reveals that they relate to general photonic integrated circuit ("

4. Even Under Lumicore's Own Claim Construction, the Defense Fails on Timing As noted above, Lumicore has proposed a narrower construction for the term "polarization-diverse grating coupler," requiring "a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes." Under Lumicore's own construction, the threshold for establishing conception is higher — not lower

1. The Corroboration Rule and Its Rationale The Federal Circuit has long required that a party asserting prior conception must corroborate its claim through evidence independent of the alleged prior inventor. Singh v. Brake, 222 F.3d 1362, 1367 (Fed. Cir. 2000); Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993). The corroboration requirement is "not a mere formality" but a "substantive requirement" rooted in t

2. Lumicore's Documents Are Authored Exclusively by Interested-Party Employees Every document that Lumicore cites in support of its prior-conception defense was authored by employees of Lumicore Technologies, Inc. — the Defendant in this action. These authors include photonics engineers, design team leads, and managers within Lumicore's engineering organization, many of whom remain employed by Lumicore to this day. (

3. Lumicore Has Failed to Identify Any Corroborating Witness or Independent Evidence The absence of corroborating evidence in this case is not a matter of degree — it is total. Lumicore has failed to identify or produce any evidence, from any source independent of Lumicore and its employees, that corroborates its alleged prior conception of the invention claimed in the '015 Patent. Interrogatory Responses. In respons

4. Application of the Rule of Reason to Lumicore's Evidence Even under the Federal Circuit's flexible rule-of-reason analysis, Lumicore's evidence of prior conception is legally insufficient. Applying the factors set forth in Kestrel Partners LLC, 135 F.3d at 1461: (a) Relationship between the corroborating evidence and the critical facts. The critical fact that must be corroborated is the date on which Lumicore engi

5. The Interested-Party Problem Is Compounded by Lumicore's Litigation Posture The concerns animating the corroboration requirement are heightened in this case by the magnitude of Lumicore's financial interest in invalidating the '015 Patent. Lumicore is the defendant accused of infringing the '015 Patent with its two highest-revenue silicon photonic transceiver products: the LumiLink 800G-DR8 (FY 2023 revenue: $128.

1. Lumicore's Burden Is Clear and Convincing Evidence As the Supreme Court confirmed in Kestrel Partners LLC v. i4i Ltd. Partnership, 564 U.S. 91, 95 (2011), a defense of patent invalidity must be proven by clear and convincing evidence. This burden applies at trial, but it also informs the summary judgment standard: to survive summary judgment, Lumicore must present evidence from which a reasonable jury could find,

2. No Expert Opinion Supports Lumicore's Position Lumicore's technical and validity expert, Dr. Rajesh Sundaram, a Professor of Electrical and Computer Engineering at Pacific Western University, has offered opinions in support of Lumicore's invalidity contentions. With respect to the prior-conception defense, Dr. Sundaram has relied on the same uncorroborated internal Lumicore documents discussed above. (Schultz Decl

3. Eliminating This Defense Will Streamline Trial Granting this Motion will serve the interests of judicial economy and trial efficiency. Trial in this action is set for February 2, 2026, with an estimated duration of seven to ten days before a jury. The invalidity portion of the case is expected to be a significant component of the trial, involving multiple defenses across multiple patents. Eliminating the prior-con

V. RESPONSE TO ANTICIPATED COUNTERARGUMENTS OWS anticipates that Lumicore may advance several arguments in opposition to this Motion. Each is foreclosed by the undisputed record and governing law. A. Lumicore May Argue Its 2016 Documents Show Generalized Conception Lumicore may contend that its mid-2016 documents reflect the genesis of the polarization-diverse grating coupler concept and that conception is a gradual

VI. EVIDENTIARY SUPPORT In support of this Motion, OWS files concurrently the following declarations and exhibits:

1. Declaration of Wendy Schultz — Authenticating and cataloging Lumicore's internal documents relied upon in the prior-conception defense, with a date analysis demonstrating that no document disclosing the specific claimed invention pre-dates April 7, 2017; cataloging Lumicore's interrogatory responses and Rule 30(b)(6) testimony confirming the absence of any corroborating witnesses; and providing additional factual

2. Declaration of Dr. Caroline Ashford — Technical expert declaration opining that: (a) Provisional Application No. 62/499,117, filed April 7, 2017, provides full written-description and enablement support for each element of the asserted claims of the '015 Patent (Claims 1, 5, 8, 12, and 16); (b) Lumicore's pre-April 2017 documents do not disclose the specific claimed invention, as demonstrated by an element-by-elem

3. Declaration of Dr. Jian-Wei Huang — Inventor declaration confirming that the conception of the polarization-diverse grating coupler invention occurred prior to the April 7, 2017 filing of Provisional Application No. 62/499,117 and was fully disclosed therein.

4. Exhibit A: U.S. Patent No. 11,402,015 (the '015 Patent) — certified copy