Contract analysis

I.A. Scope of Appendix A This Appendix A accompanies and supports the Expert Report of Dr. Caroline Ashford on the validity of the four patents asserted by Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") in this action: U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent") (c

I.B. Asserted Patents and Claims Addressed The following table summarizes the Asserted Patents and the specific claims at issue in this litigation, as identified in OWS's P.R. 3-1 Asserted Claims Identification served on September 15, 2024: Table I-1: Asserted Patents and Claims The Asserted Patents are related through two distinct family groupings. First, the '562 Patent and the '847 Patent are in the same patent fa

I.C. Person of Ordinary Skill in the Art (POSITA) Throughout this Appendix, the prior-art analysis is conducted from the perspective of a person of ordinary skill in the art ("POSITA") as of the relevant priority date of each Asserted Patent. Consistent with the declaration I filed on November 15, 2024 in support of OWS's Opening Claim Construction Brief, I define the POSITA as follows: A person with a Master of Scie

I.D. Claim Constructions Applied The claim charts in this Appendix apply the claim constructions proposed by OWS in the Joint Claim Construction Chart (Final) filed on January 15, 2025, and as set forth in OWS's Opening Claim Construction Brief filed on November 15, 2024. I understand that the Markman hearing in this case is scheduled for March 14, 2025, before Judge Gilstrap, and that the Court has not yet issued it

I.E. Methodology Each prior-art reference is analyzed to determine whether it discloses every limitation of the asserted claim under either of the two statutory theories advanced by Lumicore: Anticipation (35 U.S.C. § 102): A claim is anticipated if a single prior-art reference discloses every element and limitation of the claim, arranged as in the claim, either expressly or inherently. Anticipation requires that the

1. I reproduce the full text of each asserted claim.

2. I identify each discrete limitation within the claim.

3. For each limitation, I identify the specific disclosure (if any) in the prior-art reference that Lumicore contends teaches or suggests the limitation.

4. I analyze whether the reference actually discloses the limitation as claimed, applying the applicable claim constructions.

5. I identify all limitations that are missing from the reference, and explain why the reference fails to disclose those limitations.

6. For obviousness combinations, I analyze whether a POSITA would have had a reason or motivation to combine the cited references and whether a POSITA would have had a reasonable expectation of success in achieving the claimed invention through such a combination.

7. I provide a conclusion as to whether the reference, alone or in combination, anticipates or renders obvious the asserted claim. Throughout the analysis, I consider whether a reference "teaches away" from the claimed invention — that is, whether the reference discourages or criticizes the approach taken by the patentee, which weighs against a finding of obviousness. I also note, where relevant, whether the claimed

I.F. Summary of References Lumicore's P.R. 3-3 Invalidity Contentions, served on October 14, 2024, identify a total of twenty-three (23) prior-art references asserted against the four Asserted Patents. These references include issued U.S. patents, published U.S. and foreign patent applications, journal articles, conference papers, and internal corporate documents. The Master Reference Table in Section II, below, prov

II. MASTER REFERENCE TABLE The following table provides a comprehensive listing of all twenty-three (23) prior-art references cited in Lumicore's P.R. 3-3 Invalidity Contentions, served October 14, 2024. The table identifies each reference by a reference number (assigned for convenience), the full citation, the type of reference, its publication or priority date, the Asserted Patent(s) and claim(s) against which it i

III. PRIOR ART CLAIM CHARTS — '847 PATENT (U.S. Patent No. 10,234,847) "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss" Patent Information: • Filing Date: September 14, 2016 • Issue Date: March 19, 2019 • Inventors: Dr. James M. Harrington, Dr. Priya S. Venkataraman • Original and Current Assignee: Optiwave Semiconductor Corp. • Family Relationship: The '847 Patent is a continuation of t

III.A. Reference R-1: Takahashi et al., "Dense WDM Silicon Photonic MUX," IEEE Photonics Technology Letters (March 2014) Full Citation: Takahashi et al., "Dense WDM Silicon Photonic MUX with Arrayed Waveguide Grating Architecture," IEEE Photonics Technology Letters, Vol. 26, No. 5, pp. 473-476 (March 1, 2014). Theory Asserted by Lumicore: Anticipation under 35 U.S.C. § 102. Date of Reference: March 2014. The publicat

III.A.1. Claim 1 of the '847 Patent Full Claim Text:

1. A multi-channel silicon photonic waveguide multiplexer, comprising: (a) at least eight optical input waveguides, each configured to receive an optical signal at a distinct wavelength within the C-band, the at least eight optical input waveguides having an inter-channel wavelength spacing of no more than 200 GHz; (b) a waveguide combining region formed on a silicon-on-insulator substrate, the silicon-on-insulator s

III.A.2. Claim 3 of the '847 Patent Full Claim Text:

3. The multi-channel silicon photonic waveguide multiplexer of claim 1, wherein each of the at least eight optical input waveguides has a rib waveguide cross-section with a rib height of between 150 nm and 220 nm, a slab height of between 50 nm and 90 nm, and a rib width of between 400 nm and 600 nm. Claim 3 depends from Claim 1 and adds further structural limitations specifying the cross-sectional geometry of the op

III.A.3. Claim 5 of the '847 Patent Full Claim Text:

5. The multi-channel silicon photonic waveguide multiplexer of claim 1, further comprising a plurality of thermal tuning elements, each thermal tuning element disposed in thermal contact with a respective one of the at least eight optical input waveguides, each thermal tuning element configured to adjust the effective refractive index of its respective optical input waveguide to tune the wavelength of the optical sig

III.A.4. Claim 9 of the '847 Patent Full Claim Text:

9. A multi-channel silicon photonic waveguide multiplexer, comprising: (a) means for receiving at least eight optical signals at distinct wavelengths within the C-band; (b) means for combining the at least eight optical signals onto a single output waveguide on a silicon-on-insulator substrate with an insertion loss of less than 1.5 dB per channel; and (c) means for mode-matching at each waveguide interface within th

III.A.5. Claim 14 of the '847 Patent Full Claim Text:

14. A method of manufacturing a multi-channel silicon photonic waveguide multiplexer, comprising: (a) providing a silicon-on-insulator wafer having a silicon device layer with a thickness between 200 nm and 280 nm on a buried oxide layer with a thickness between 1 μm and 3 μm; (b) patterning, by electron-beam lithography or deep-ultraviolet photolithography, the silicon device layer to define at least eight optical i

III.A.6. Summary — Takahashi Does Not Anticipate Any Asserted Claim of the '847 Patent The following table summarizes the missing limitations for each asserted claim of the '847 Patent with respect to Takahashi (R-1): At a minimum, the low insertion loss requirement, the channel count and spacing requirement, and the adiabatic waveguide taper/mode-matching structure are missing across every asserted claim. Takahashi

III.B. Reference R-3: PCT/EP2015/071234 (Simonsen) (September 17, 2015) Full Citation: International Patent Application PCT/EP2015/071234 (Simonsen et al.), "Wavelength Division Multiplexing Device for Optical Communication Systems," published March 23, 2016 (WO 2016/044238 A1). Filed September 17, 2015. Theory Asserted by Lumicore: Obviousness under 35 U.S.C. § 103, both alone and in combination with Takahashi (R-1)

III.B.1. Claim 1 of the '847 Patent Obviousness Analysis — Simonsen Alone: Simonsen alone does not render Claim 1 obvious because Simonsen fails to disclose the SOI substrate, the specific taper geometry, and the insertion loss performance. The mere existence of a WDM device on a different material platform does not render obvious a specifically designed SOI-based device with the claimed structural and performance pa

III.B.2–III.B.5. Claims 3, 5, 9, 14 The analysis of Simonsen against Claims 3, 5, 9, and 14 of the '847 Patent follows the same framework as Claim 1, with additional deficiencies identified for each claim's specific limitations. Claim 3: Simonsen does not disclose the rib waveguide cross-section geometry required by Claim 3 (rib height 150–220 nm, slab height 50–90 nm, rib width 400–600 nm). Simonsen's InP waveguides

III.B.6. Summary — Simonsen (Alone or in Combination) Does Not Render Any Asserted Claim Obvious Simonsen is an InP-based reference that operates in a fundamentally different material system from the silicon-on-insulator platform of the '847 Patent. The reference fails to disclose the SOI substrate, the claimed taper geometry, the claimed insertion loss, and numerous other limitations. The proposed combination of Tak

III.C. Reference R-6: Ohtani et al., "Low-Loss Silicon Photonic Wavelength Multiplexer for Datacenter Interconnects," Japanese Journal of Applied Physics (January 2015) Theory Asserted by Lumicore: Anticipation under 35 U.S.C. § 102. Date of Reference: January 2015. Pre-dates the '847 Patent's filing date of September 14, 2016. Summary of Ohtani: Ohtani et al. describe a silicon photonic cascaded Mach-Zehnder interfe

III.D. Reference R-7: U.S. Patent No. 8,947,013 (Ranganath) (February 2015) Theory Asserted by Lumicore: Obviousness under 35 U.S.C. § 103 (asserted in combination with R-1 and R-6). Date of Reference: February 3, 2015. Summary of Ranganath: Ranganath discloses a silicon photonic multiplexer with integrated thin-film heaters for thermal tuning. The device has four channels with 200 GHz spacing on an SOI platform. Ran

III.E. Reference R-8: Chang & Patel, ECOC 2014 Conference Paper (September 2014) Theory Asserted by Lumicore: Obviousness under 35 U.S.C. § 103 (in combination with R-1). Date of Reference: September 2014. Summary of Chang & Patel: This conference paper discusses broadband waveguide coupler designs for photonic integration, including tapered mode-size converters for coupling between dissimilar waveguide sections. The

III.F. Reference R-9: JP 2015-048221 (Yamamoto) (March 2015) Theory Asserted by Lumicore: Anticipation under 35 U.S.C. § 102. Date of Reference: March 16, 2015. Summary of Yamamoto: This Japanese patent application describes a silicon photonic device with a "wavelength combining function" using a planar concave grating (PCG) architecture on an SOI platform. The device combines four wavelength channels onto a single o

III.G. Claim Differentiation Considerations for '847 Patent Lumicore has argued in its invalidity contentions that independent Claim 1 of the '847 Patent should be construed more narrowly in light of dependent Claims 3 and 5. Specifically, Lumicore contends that because Claim 3 adds a rib waveguide cross-section and Claim 5 adds thermal tuning elements, Claim 1 should be read as broadly as possible to exclude these f

IV. PRIOR ART CLAIM CHARTS — '193 PATENT (U.S. Patent No. 10,891,193) "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate" Patent Information: • Filing Date: April 7, 2017 • Priority: Provisional Application No. 62/499,117, filed April 7, 2017 • Issue Date: January 12, 2021 • Inventors: Dr. James M. Harrington, Dr. Priya S. Venkataraman, Dr. Michael T. Reeves • Original and Current Assignee:

IV.A. Reference R-1 (Takahashi) — Applied to '193 Patent Theory Asserted by Lumicore: Anticipation under 35 U.S.C. § 102 (Lumicore asserts Takahashi against both the '847 Patent and the '193 Patent). As noted above, Takahashi describes a silicon photonic AWG multiplexer — a single passive component — not a coherent optical transceiver system. The application of Takahashi to the '193 Patent is even less apt than its a

IV.A.1. Claim 1 of the '193 Patent Full Claim Text:

1. A high-bandwidth coherent optical transceiver integrated on a silicon substrate, comprising: (a) a coherent modulator section formed on the silicon substrate, the coherent modulator section comprising a nested Mach-Zehnder modulator configured to generate a dual-polarization quadrature phase-shift keying (DP-QPSK) modulated optical signal at a symbol rate of at least 64 Gbaud; (b) a coherent detection module forme

IV.A.2. Claim 3 of the '193 Patent Full Claim Text:

3. The high-bandwidth coherent optical transceiver of claim 1, wherein the coherent detection module further comprises a polarization rotator formed on the silicon substrate, the polarization rotator configured to rotate the TM polarization component to a TE polarization before mixing in the 90-degree optical hybrid, the polarization rotator comprising a bi-level taper structure with a first taper section and a secon

IV.A.3. Claim 7 of the '193 Patent Full Claim Text:

7. The high-bandwidth coherent optical transceiver of claim 1, wherein the nested Mach-Zehnder modulator comprises: (a) a pair of parent Mach-Zehnder interferometers, each parent Mach-Zehnder interferometer comprising a pair of child Mach-Zehnder interferometers; (b) wherein each child Mach-Zehnder interferometer includes a carrier-depletion phase shifter formed in a reverse-biased p-n junction in the silicon wavegui

IV.A.4–IV.A.6. Claims 10, 15, 18 Claim 10 is a dependent claim that adds a transimpedance amplifier (TIA) integration requirement, specifying that the balanced photodetector pairs are wire-bonded or flip-chip bonded to a TIA chip co-packaged on the silicon substrate. Takahashi does not disclose any photodetectors or TIAs. Claim 15 contains a potentially means-plus-function term: "means for distributing a local oscill

IV.B–IV.H. References R-10 through R-16 The remaining seven prior-art references asserted against the '193 Patent are analyzed in detail below. Each is analyzed on a claim-by-claim, limitation-by-limitation basis following the same methodology described above.

IV.B. Reference R-10: U.S. Patent No. 9,124,383 (Doerr) (September 2015) Theory: Anticipation (§ 102). Summary of Doerr: Doerr discloses a coherent optical receiver on a silicon photonic platform. The device includes a polarization beam splitter, 90-degree optical hybrids, and germanium photodetectors integrated on an SOI substrate. However, Doerr describes only the receiver portion of a transceiver — it does not inc

IV.C. Reference R-11: Secondini et al. (JLT, June 2016) Theory: Obviousness (§ 103), alone and in combination with R-10 or R-1. Summary: Secondini et al. is a system-level design paper discussing coherent silicon photonic transceiver architectures. The paper presents block diagrams and theoretical analyses but does not describe a fabricated device or provide detailed structural disclosures at the component level. Mis

IV.D. Reference R-12: U.S. Patent App. Pub. No. 2016/0047983 (Nagarajan) (February 2016) Theory: Anticipation (§ 102). Summary: Nagarajan describes an integrated coherent transceiver on an InP platform, not silicon. Nagarajan discloses a complete transceiver with modulator, receiver, and LO distribution. However, the device is fabricated using InP-based photonic integration, not silicon, and does not satisfy the "int