Contract analysis

I. INTRODUCTION Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully moves this Court for partial summary judgment under Federal Rule of Civil Procedure 56(a) on the issue of literal infringement of Claims 1, 4, and 6 of United States Patent No. 9,678,562 (the "'562 Patent") by two of Defendant Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") accused products: the LumiLink 400G-ZR+ cohe

II. STATEMENT OF THE ISSUES PRESENTED This motion presents the following two issues for resolution by the Court:

1. Whether Lumicore's LumiLink 400G-ZR+ coherent transceiver module literally infringes Claims 1, 4, and 6 of U.S. Patent No. 9,678,562.

2. Whether Lumicore's LumiLink 800G-DR8 direct-detect transceiver module literally infringes Claims 1, 4, and 6 of U.S. Patent No. 9,678,562.

III. STATEMENT OF UNDISPUTED MATERIAL FACTS The following material facts are undisputed and are supported by the evidence cited herein and in the concurrently filed appendices. A. The '562 Patent — Background and Prosecution History

1. United States Patent No. 9,678,562 is titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks." See Appendix 8 (Certified Copy of U.S. Patent No. 9,678,562).

2. The '562 Patent was filed on November 22, 2014, as U.S. Application No. 14/551,203. Id.

3. The '562 Patent was duly examined by the USPTO and issued on June 13, 2017. Id.

4. The named inventors of the '562 Patent are Dr. James Okada, Dr. Lisa Hartmann, and Dr. Vincent Pratt. Id. at col. 1.

5. The original assignee of the '562 Patent was Solara Optics, Inc. ("Solara"), a California corporation. Id. Solara was subsequently dissolved in 2020.

6. On June 15, 2018, OWS and Solara Optics executed an Asset Purchase Agreement (the "Solara APA") pursuant to which OWS acquired the '562 Patent along with eleven other patents in Solara's photonics and semiconductor portfolio for a total purchase price of $34.5 million. See Appendix 9 (Assignment Records / Chain of Title, including relevant excerpts of the Solara APA and USPTO assignment recordation).

7. The assignment was duly recorded at the USPTO. OWS is the sole and current assignee of record of the '562 Patent. See Appendix 9.

8. All maintenance fees required to keep the '562 Patent in force have been timely paid. The patent remains in full force and effect as of the date of this filing.

9. The '562 Patent is a member of a patent family that includes U.S. Patent No. 10,234,847 (the "'847 Patent"). The '562 Patent and the '847 Patent share a continuation relationship; specifically, the application that matured into the '847 Patent was filed as a continuation of the application that matured into the '562 Patent. Both patents are asserted in this action.

10. The '562 Patent was prosecuted before the USPTO by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as lead prosecution attorney.

11. To date, no petition for inter partes review ("IPR") has been filed against the '562 Patent before the Patent Trial and Appeal Board. B. The Asserted Claims (Claims 1, 4, and 6)

12. Independent Claim 1 of the '562 Patent recites:

1. A method for thermal management of a photonic integrated circuit, the method comprising: (a) providing a photonic circuit substrate having at least one active photonic component disposed thereon; (b) forming a plurality of micro-channels within or adjacent to the photonic circuit substrate, the micro-channels defining a micro-channel heat sink, the forming comprising using a semiconductor fabrication process to cr

13. Dependent Claim 4 of the '562 Patent recites:

4. The method of claim 1, wherein the plurality of micro-channels are arranged in a substantially parallel array, each micro-channel having a width of between approximately 20 µm and approximately 500 µm, a depth of between approximately 50 µm and approximately 800 µm, and a center-to-center spacing of between approximately 40 µm and approximately 1000 µm. See Appendix 8 ('562 Patent, col. 14, ll. 50–58).

14. Dependent Claim 6 of the '562 Patent recites:

6. The method of claim 1, wherein the micro-channel heat sink is positioned in direct thermal communication with the at least one active photonic component such that the micro-channel heat sink provides localized cooling to the active photonic component, the active photonic component comprising at least one of a laser diode, a modulator, a photodetector, or a wavelength multiplexer integrated on the photonic circuit

15. Claims 4 and 6 each depend from independent Claim 1. Accordingly, each of Claims 4 and 6 incorporates all of the limitations of Claim 1 and adds further limitations as recited therein. C. Claim Construction — Relevant Constructions

16. On October 28, 2024, the parties filed their Joint Claim Construction Statement (D.E. 40), identifying fourteen disputed claim terms across the four patents asserted in this action, including terms appearing in the '562 Patent.

17. Following the Joint Claim Construction Statement, the parties submitted claim construction briefing. OWS filed its Opening Claim Construction Brief on November 15, 2024 (D.E. 44). Lumicore filed its Responsive Claim Construction Brief on December 6, 2024 (D.E. 48). OWS filed its Reply Claim Construction Brief on December 20, 2024 (D.E. 52). Lumicore filed a Sur-Reply on January 10, 2025 (D.E. 56), by leave of Cou

18. The Court held a Markman hearing on March 14, 2025, at which the Court received argument and testimony on the disputed claim terms. See D.E. 62 (Minute Entry).

19. Of particular relevance to this motion, the parties disputed the construction of the term "micro-channel heat sink" as it appears in the '562 Patent. (a) OWS proposed the following construction: "a heat-dissipating structure containing channels with a hydraulic diameter of less than 1 mm." (b) Lumicore proposed the following construction: "a closed-loop liquid-cooling system with channels having a hydraulic diame

20. The Court issued its Claim Construction Order (the "Markman Order") on [DATE TO BE INSERTED UPON ISSUANCE]. See Appendix 10 (Court's Claim Construction Order). The Court adopted the following construction for the term "micro-channel heat sink": [CONSTRUCTION TO BE INSERTED UPON ISSUANCE OF MARKMAN ORDER].

21. As demonstrated below in the argument section, the accused products satisfy the "micro-channel heat sink" limitation under either party's proposed construction and, accordingly, under any construction the Court has adopted or may adopt. The motion is strongest under OWS's proposed construction, but infringement is established even under Lumicore's narrower proposal.

22. All other claim terms relevant to Claims 1, 4, and 6 of the '562 Patent that were not identified as disputed in the Joint Claim Construction Statement were agreed by the parties to carry their plain and ordinary meaning as would be understood by a person of ordinary skill in the art ("POSITA") at the time of the invention. D. The Accused Products

23. The LumiLink 400G-ZR+ is Lumicore's 400-gigabit coherent optical transceiver module. The product was commercially launched in the third quarter of 2022. According to Lumicore's publicly filed segment disclosures, the LumiLink 400G-ZR+ generated revenue of approximately $94.8 million in fiscal year 2023. See Declaration of Dr. Caroline Ashford ("Ashford Decl.") ¶ 14; Appendix 6 (Lumicore Design Documents, Exhibit

24. The LumiLink 800G-DR8 is Lumicore's 800-gigabit direct-detect optical transceiver module. The product was commercially launched in the first quarter of 2023. According to Lumicore's publicly filed segment disclosures, the LumiLink 800G-DR8 generated revenue of approximately $128.4 million in fiscal year 2023. See Ashford Decl. ¶ 15; Appendix 6 (Lumicore Design Documents, Exhibit 6-B).

25. Both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 are silicon-photonics-based transceiver modules. Each product incorporates a photonic integrated circuit ("PIC") fabricated on a silicon substrate. Each product further incorporates embedded thermal management structures within or adjacent to the PIC substrate. These facts are undisputed.

26. The LumiLink 400G-ZR+ and the LumiLink 800G-DR8 are among the accused products identified in OWS's P.R. 3-1 Infringement Contentions served on September 16, 2024 (D.E. 32). OWS's infringement contentions include a detailed claim chart for the '562 Patent (covering Claims 1, 4, 6, and 11), mapping each limitation to specific structures and processes in the accused products with supporting evidence. See Appendix 7

27. OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent semiconductor reverse-engineering and analysis firm located at 2244 Mission College Boulevard, Santa Clara, California 95054, to perform physical teardown and reverse-engineering analysis of the accused products. Benchmark was engaged in November 2022 pursuant to a consulting agreement between Benchmark and OWS.

28. The teardown analyses were conducted under the direction and supervision of Kevin Ng, Benchmark's lead analytical engineer. Mr. Ng has over fifteen years of experience in semiconductor device reverse engineering, failure analysis, and physical characterization. See Appendix 2 (Declaration of Kevin Ng in Support of Motion for Partial Summary Judgment) ("Ng Decl.").

29. Benchmark delivered its teardown report on the LumiLink 400G-ZR+ on December 12, 2022. The report confirmed the presence of embedded micro-channel heat-sink structures within the silicon substrate of the LumiLink 400G-ZR+ PIC, as well as waveguide multiplexer structures and other features corresponding to the asserted claim limitations. See Ng Decl. ¶¶ 7–12; Ashford Decl., Appendix A (Annotated Teardown Photograp

30. Benchmark delivered its teardown report on the LumiLink 800G-DR8 in June 2023. The report reached the same conclusions regarding the presence of micro-channel heat-sink structures embedded within the silicon substrate of the LumiLink 800G-DR8 PIC, and additionally identified thermal coupling between the micro-channel structures and active photonic components including laser diodes and modulators. See Ng Decl. ¶¶

31. Mr. Ng was deposed on January 7, 2025. During his deposition, Mr. Ng confirmed the teardown methodology employed by Benchmark, including the use of focused ion beam ("FIB") cross-sectioning, scanning electron microscopy ("SEM"), and energy-dispersive X-ray spectroscopy ("EDS") to characterize the micro-channel structures. Mr. Ng also confirmed the chain of custody for all accused product samples from procurement

32. Annotated teardown photographs cross-referenced to each claim limitation of Claims 1, 4, and 6 are included as Appendix A to the Declaration of Dr. Caroline Ashford. See Ashford Decl., Appendix A. F. Lumicore's Own Design Documents

33. In the course of fact discovery, Lumicore produced approximately 147,000 documents comprising approximately 980,000 pages. A substantial portion of these documents were designated by Lumicore as "Highly Confidential — Attorneys' Eyes Only" under the three-tier Stipulated Protective Order entered by the Court on July 15, 2024 (D.E. 22).

34. Among the documents produced by Lumicore, several categories of documents are directly relevant to the infringement analysis and independently confirm the presence of the claimed structures and methods in the accused products: (a) Engineering Specification Documents for the LumiLink 400G-ZR+ Thermal Management Subsystem (Bates Nos. LUMI-00045678 through LUMI-00045712): These documents expressly describe and depic

35. These documents are produced by Lumicore itself and constitute admissions by a party-opponent. They independently corroborate the findings of the Benchmark teardown analysis and the deposition testimony of Lumicore's CTO. G. Deposition Testimony of Dr. Sandra Michaud (Lumicore CTO)

36. Dr. Sandra Michaud is the Chief Technology Officer of Lumicore Technologies, Inc. Dr. Michaud holds a Ph.D. in Electrical Engineering from the Massachusetts Institute of Technology and has served as Lumicore's CTO since 2019. She was identified by Lumicore as a person most knowledgeable regarding the design and engineering of the accused products.

37. Dr. Michaud was deposed on November 19, 2024. See Appendix 3 (Excerpts of Deposition Transcript — Dr. Sandra Michaud (November 19, 2024)).

38. During her deposition, Dr. Michaud made the following key admissions: (a) Dr. Michaud acknowledged that the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 both incorporate micro-channel heat-sink structures formed in the silicon substrate of the photonic integrated circuit. See Appendix 3, Michaud Dep. Tr. at 87:14–88:9 ("Q: Does the LumiLink 400G-ZR+ incorporate micro-channel heat-sink structures formed within the

39. Raymond Bautista, General Counsel of Lumicore Technologies, Inc., was deposed on December 3, 2024. See Appendix 4 (Excerpts of Deposition Transcript — Raymond Bautista (December 3, 2024)). (a) Mr. Bautista confirmed that he received a licensing letter from FairPoint Licensing Group, LLC dated January 15, 2023, which identified the '562 Patent (among others) and alleged that Lumicore's products infringed OWS's pat

40. Kevin Ng, Lead Engineer at Benchmark Semiconductor Analysis, LLC, was deposed on January 7, 2025. See Appendix 5 (Excerpts of Deposition Transcript — Kevin Ng (January 7, 2025)). (a) Mr. Ng confirmed the physical presence of micro-channel structures in the teardown samples of both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. See Appendix 5, Ng Dep. Tr. at 28:3–29:14. (b) Mr. Ng confirmed the correspondence of

I. Pre-Suit Notice and Chain of Events

41. FairPoint Licensing Group, LLC ("FairPoint"), OWS's authorized licensing agent (Managing Director: Angela Reeves), sent its first licensing and notice letter to Raymond Bautista, General Counsel of Lumicore Technologies, on January 15, 2023. The letter identified the '562 Patent along with the '847 Patent and the '193 Patent, attached claim charts for each patent, and informed Lumicore that OWS believed certain L

42. FairPoint sent a second licensing letter to Lumicore on May 15, 2023. This letter added the '015 Patent to the list of asserted patents and expanded the list of accused products to include the LumiLink 800G-DR8, which had been commercially launched by Lumicore in Q1 2023.

43. An in-person licensing meeting was held on April 20, 2023, in Austin, Texas. The meeting was attended by Angela Reeves (FairPoint, on behalf of OWS), Rebecca Tanaka (General Counsel, OWS), Raymond Bautista (General Counsel, Lumicore), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP, outside patent litigation counsel for Lumicore). The parties were unable to reach a resolution.

44. By letter dated July 10, 2023, Lumicore, through outside counsel Kate Rourke of Hawthorne Vega & Cruz LLP, declined to take a license to OWS's patents, stating that Lumicore had obtained "competent legal opinions" that its products did not infringe the identified patents.

45. OWS filed the Complaint in this action on April 22, 2024 (D.E. 1), asserting claims of infringement of the '562 Patent, the '847 Patent, the '193 Patent, and the '015 Patent.

IV. LEGAL STANDARD A. Summary Judgment Under Rule 56(a) Summary judgment is appropriate where "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). In making this determination, the Court must view the evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in the nonmoving party's favor. Anderson

V. ARGUMENT A. Claim-by-Claim, Limitation-by-Limitation Analysis — Claim 1 of the '562 Patent Independent Claim 1 of the '562 Patent is a method claim comprising a preamble and three method steps (limitations 1(a), 1(b), and 1(c)). The undisputed evidence establishes that both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 literally satisfy each and every element of Claim 1.

1. Preamble of Claim 1 The preamble of Claim 1 recites: "A method for thermal management of a photonic integrated circuit." As an initial matter, the preamble of Claim 1 is not limiting because it merely states the intended purpose or use of the claimed method and does not provide any additional structural or methodological limitation beyond what is recited in the body of the claim. See Catalina Mktg., 289 F.3d at 80

2. Limitation 1(a): Providing a Photonic Circuit Substrate Having at Least One Active Photonic Component Disposed Thereon Limitation 1(a) recites: "providing a photonic circuit substrate having at least one active photonic component disposed thereon." This limitation requires two elements: (i) a photonic circuit substrate, and (ii) at least one active photonic component disposed on that substrate. LumiLink 400G-ZR+.

3. Limitation 1(b): Forming a Plurality of Micro-Channels Within or Adjacent to the Photonic Circuit Substrate Using a Semiconductor Fabrication Process Limitation 1(b) recites: "forming a plurality of micro-channels within or adjacent to the photonic circuit substrate, the micro-channels defining a micro-channel heat sink, the forming comprising using a semiconductor fabrication process to create the plurality of mi

4. Limitation 1(c): Circulating a Thermal Transfer Medium Through the Micro-Channels Limitation 1(c) recites: "circulating a thermal transfer medium through the plurality of micro-channels to transfer heat generated by the at least one active photonic component away from the photonic circuit substrate." This limitation requires that a thermal transfer medium (i.e., a coolant or other heat-transfer fluid) is circulate