Contract analysis

I. INTRODUCTION AND QUALIFICATIONS A. Identity and Role

1. My name is Dr. Caroline Ashford. I am a Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology ("NIT"), located in Evanston, Illinois, where I have held a tenured faculty appointment since 2008. I have been retained by Calderwood & Harkness LLP, through responsible partner Alan Ngo, on behalf of Plaintiff Optiwave Semiconductor Corp. ("OWS"), to serve as a technical expert on v

2. My retention agreement with Calderwood & Harkness LLP is dated August 1, 2024. Pursuant to that agreement, I am compensated at a rate of $950 per hour for all time spent on this engagement, including but not limited to document review, analysis, report preparation, deposition preparation, deposition testimony, and trial testimony. The estimated engagement budget for both infringement and validity opinions is appro

3. The purpose of this report is to provide my expert opinions rebutting the invalidity contentions asserted by Defendant Lumicore Technologies, Inc. ("Lumicore") regarding 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") (collectively, the "Asserted Patents"). Specifically,

4. I have also been asked to address Lumicore's prior-conception defense under 35 U.S.C. § 102(g) against the '015 Patent and to evaluate secondary considerations of non-obviousness relevant to all four Asserted Patents. This report sets forth my opinions and the bases therefor in compliance with Federal Rule of Civil Procedure 26(a)(2)(B). B. Professional Qualifications

5. I hold a Doctor of Philosophy (Ph.D.) degree in Electrical Engineering with a concentration in Photonic Integrated Circuits from the Massachusetts Institute of Technology, a Master of Science (M.S.) degree in Electrical Engineering from Stanford University, and a Bachelor of Science (B.S.) degree in Physics from the University of Michigan, Ann Arbor.

6. I have over twenty years of experience in research and development in the field of silicon photonics. My research has spanned a broad range of topics central to this litigation, including waveguide design and optimization, optical transceiver architecture and integration, thermal management of photonic integrated circuits ("PICs"), grating coupler technology, dense wavelength-division multiplexing ("DWDM") systems

7. Throughout my career, I have authored or co-authored over 130 peer-reviewed journal articles and conference papers in the fields of silicon photonics, integrated optics, and optical communication systems. My work has been published in leading venues including IEEE Journal of Lightwave Technology, IEEE Photonics Technology Letters, Optics Express, Optica, Nature Photonics, and the Proceedings of the Optical Fiber C

8. I am a named inventor on 14 issued United States patents related to photonic integrated circuit design, covering innovations in waveguide coupling, modulator design, photodetector integration, and thermal management of silicon-photonic devices. These patents have been assigned to NIT and, in certain cases, licensed to commercial entities in the photonics industry.

9. I have previously served as a testifying expert witness in eight patent cases involving semiconductor and photonics technologies. These engagements have included matters in the United States District Courts for the Northern District of California, the District of Delaware, and the Eastern District of Texas, as well as proceedings before the Patent Trial and Appeal Board of the United States Patent and Trademark Of

10. I am a Fellow of the IEEE and a Fellow of the Optical Society of America. I am also a member of SPIE (The International Society for Optics and Photonics) and the American Physical Society. I have received numerous awards and honors for my research contributions, including the IEEE Photonics Society Young Investigator Award (2010), the NIT Distinguished Research Prize (2015), and the Optical Society of America's J

11. My full curriculum vitae, including a complete list of publications, patents, prior testimony, and professional activities, is attached as Appendix E to this report. C. Compensation

12. As noted above, I am compensated at a rate of $950 per hour for all time spent in connection with this engagement. My compensation is in no way contingent upon the outcome of this litigation, the content of my testimony, or the nature of the opinions I express. I have no financial interest in OWS or in the outcome of this case. D. Summary of Opinions

13. Based on my review of the materials identified in Section IV of this report, my education and experience in the field of silicon photonics, and the analysis set forth in detail below, I hold the following opinions to a reasonable degree of scientific and engineering certainty: (a) Each of the 23 prior-art references cited by Lumicore in its October 14, 2024 P.R. 3-3 Invalidity Contentions fails to anticipate or r

14. The bases for each of these opinions are set forth in detail in the remainder of this report.

15. I am not a lawyer, and I do not offer legal opinions. However, I have been informed by counsel of the legal standards applicable to patent validity, and I have applied those standards in forming my technical opinions. The legal standards I understand to be applicable are summarized below. A. Presumption of Validity

16. I understand that each of the Asserted Patents is presumed valid under 35 U.S.C. § 282. This statutory presumption means that a party challenging the validity of a patent bears the burden of proving invalidity. I further understand that this burden must be met by clear and convincing evidence, which is a heightened standard requiring that the evidence make it highly probable that the patent claims are invalid. I

17. I understand that the presumption of validity applies on a claim-by-claim basis and that each asserted claim is independently entitled to the presumption. Accordingly, I have analyzed each asserted claim of each Asserted Patent separately in evaluating Lumicore's prior-art references. B. Anticipation Under 35 U.S.C. § 102

18. I understand that a patent claim is anticipated under 35 U.S.C. § 102 only if a single prior-art reference discloses each and every limitation of the claimed invention, arranged or combined in the same way as recited in the claim. Anticipation is a question of fact and requires an exact correspondence between the claim limitations and the disclosures of the prior-art reference. If even a single limitation of a cl

19. I further understand that, to serve as an anticipatory reference, the prior-art disclosure must be enabling — that is, it must contain sufficient information to enable a person of ordinary skill in the art to make and use the claimed invention without undue experimentation. A reference that merely mentions a concept or describes it at a high level of abstraction, without providing sufficient technical detail to e

20. I have applied these principles in my analysis of each prior-art reference that Lumicore asserts as anticipating any asserted claim of any of the Asserted Patents. C. Obviousness Under 35 U.S.C. § 103

21. I understand that a patent claim is invalid as obvious under 35 U.S.C. § 103 only if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person of ordinary skill in the art at the time of the invention. Obviousness is a question of law based on underlying factual determinations.

22. I understand that the framework for analyzing obviousness was established by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1 (1966), and requires consideration of four factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations of non-obviousness, such as com

23. I understand that, under KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), there must be some articulated reason, suggestion, or motivation to combine prior-art references in the manner proposed, and there must be a reasonable expectation that the combination would succeed. The analysis must guard against the use of impermissible hindsight reconstruction — that is, using the patent itself as a roadmap

24. I further understand that the analysis of obviousness must consider the claimed invention as a whole, not merely individual limitations in isolation. The question is whether the overall combination of features recited in a claim would have been obvious to a person of ordinary skill in the art, not whether each feature independently existed somewhere in the prior art.

25. I have applied these principles in my analysis of each combination of prior-art references that Lumicore asserts as rendering any asserted claim of any of the Asserted Patents obvious. D. Prior Conception Under 35 U.S.C. § 102(g)

26. I understand that Lumicore has asserted a prior-conception defense under 35 U.S.C. § 102(g) against the '015 Patent. I understand that, to establish prior conception, a party must demonstrate: (1) a definite and permanent idea of the complete and operative invention, as it is subsequently claimed, formed in the mind of the inventor prior to the patentee's date of invention; and (2) corroboration of the conception

27. I further understand that conception without reduction to practice — either actual or constructive (i.e., the filing of a patent application) — is insufficient unless the conceiving party can also demonstrate reasonable diligence toward reduction to practice from a time just prior to the patentee's date of invention to the conceiving party's own date of reduction to practice.

28. I have applied these principles in my analysis of Lumicore's prior-conception defense against the '015 Patent.

III. PERSON OF ORDINARY SKILL IN THE ART (POSITA) A. Definition

29. In forming my opinions, I have considered the perspective of a person of ordinary skill in the art ("POSITA") at the time of each Asserted Patent's relevant filing date. Based on my experience in the field, my review of the technical literature, and my understanding of the level of skill reflected in the Asserted Patents and the cited prior art, I have determined that a POSITA at the time of each patent's filing

30. Alternatively, a person with less formal education — such as a Bachelor of Science (B.S.) degree in electrical engineering, physics, or a related field — but with correspondingly greater practical experience in silicon photonic integrated circuit design, fabrication, or testing (e.g., five or more years of direct industry experience) could also qualify as a POSITA. The key requirement is that the individual posse

31. This definition reflects the highly specialized nature of the technology at issue. Silicon photonics is a distinct sub-field within semiconductor engineering that draws upon principles of optics, electromagnetics, materials science, and semiconductor fabrication. While it shares certain foundational knowledge with broader semiconductor engineering, the design challenges and optimization criteria specific to photo

32. The POSITA definition I have adopted is consistent with the definition I used in my companion expert report on infringement in this matter, as well as the definition I set forth in my declaration submitted in connection with OWS's Opening Claim Construction Brief on November 15, 2024. It is also consistent with the level of skill reflected in the Asserted Patents' specifications and the cited prior art, both of w

33. I understand that Lumicore's technical expert, Dr. Rajesh Sundaram of Pacific Western University, San Diego, California, has offered a broader POSITA definition in his declaration submitted in support of Lumicore's Responsive Claim Construction Brief on December 6, 2024. Dr. Sundaram's definition encompasses general semiconductor engineers without photonics-specific experience, which in my opinion improperly lowe

34. Dr. Sundaram's improperly broad POSITA definition has significant implications for the obviousness analysis. By lowering the level of skill attributed to the hypothetical person of ordinary skill, Dr. Sundaram's definition makes it appear that a wider range of prior-art references would be relevant and combinable, and that the differences between the prior art and the claimed inventions are smaller than they actu

35. In forming the opinions expressed in this report, I have reviewed and considered the materials identified below. A complete enumerated list of all materials considered is attached as Appendix F. A. Patent Documents

36. I have reviewed the complete specifications, claims, and drawings of each of the four Asserted Patents: (a) U.S. Patent No. 10,234,847 ("the '847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," filed September 14, 2016, issued March 19, 2019; (b) U.S. Patent No. 10,891,193 ("the '193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Si

37. I have also reviewed the complete prosecution histories for all four Asserted Patents, including all office actions, applicant responses, claim amendments, declarations and affidavits submitted during prosecution, examiner interview summaries, and all papers related to the continuation and provisional-application relationships among the patents. In particular, I have reviewed Provisional Application No. 62/499,11

38. I have reviewed Lumicore's P.R. 3-3 Invalidity Contentions, served on October 14, 2024, in their entirety. These contentions cite a total of 23 prior-art references and assert anticipation under 35 U.S.C. § 102, obviousness under 35 U.S.C. § 103, and/or prior conception under 35 U.S.C. § 102(g) against the Asserted Patents. I have reviewed all 23 prior-art references in their entirety, including the full text of

39. I am informed that Lumicore's technical expert, Dr. Rajesh Sundaram, is expected to submit his expert report on invalidity on or about July 15, 2025. I have not yet received Dr. Sundaram's report but have reviewed the positions taken by Lumicore and Dr. Sundaram in the invalidity contentions and in the claim construction briefing. I reserve the right to supplement this report upon receipt and analysis of Dr. Sund

40. I have reviewed the following deposition transcripts: (a) Deposition of Dr. Jian-Wei Huang, Chief Technology Officer of OWS, taken November 5, 2024, including all exhibits marked at the deposition; (b) Deposition of Dr. Sandra Michaud, Chief Technology Officer of Lumicore Technologies, Inc., taken November 19, 2024, including all exhibits marked at the deposition; and (c) Deposition of Kevin Ng of Benchmark Semic

41. I have reviewed a substantial body of technical literature and industry standards relevant to the technologies at issue in this case, including but not limited to: IEEE standards applicable to optical transceiver modules and silicon photonic devices; technical dictionaries and reference works in the fields of photonics and optical engineering; university-level textbooks on silicon photonics, integrated optics, an

42. I have reviewed a substantial volume of discovery documents produced by both parties in this litigation. OWS has produced approximately 182,000 documents comprising approximately 1.4 million pages, and Lumicore has produced approximately 147,000 documents comprising approximately 980,000 pages. While I have not reviewed every individual document in these productions, I have reviewed, with the assistance of counse

43. Specifically, I have reviewed the following categories of discovery documents: (a) Lumicore internal design documents dated 2016–2017, cited by Lumicore in support of its prior-conception defense against the '015 Patent, including engineering notebook entries, design presentations, and internal memoranda; (b) Benchmark Semiconductor Analysis, LLC teardown reports for the LumiLink 400G-ZR+ module (dated December 1

44. I have also reviewed the following additional materials: (a) The Solara Optics, Inc. Asset Purchase Agreement ("APA") dated June 15, 2018, pursuant to which OWS acquired the '562 Patent and eleven other patents from Solara Optics, Inc. for a total consideration of $34.5 million; (b) The complete claim construction briefing in this matter, including the Joint Claim Construction Statement (October 28, 2024), OWS's

V. OVERVIEW OF THE ASSERTED PATENTS

45. This section provides an overview of each of the four Asserted Patents, including their subject matter, filing and issue dates, assignee history, asserted claims, and the key innovations they embody. A thorough understanding of the Asserted Patents is essential to evaluating whether the cited prior art anticipates or renders obvious the asserted claims. A. The '847 Patent (U.S. Patent No. 10,234,847)

46. Title: "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss."

47. Filing and Issue Dates: The '847 Patent was filed on September 14, 2016, and issued on March 19, 2019.

48. Assignee: The '847 Patent was originally assigned to Optiwave Semiconductor Corp. and remains assigned to OWS.

49. Related Applications: The '847 Patent shares a continuation relationship with the '562 Patent. Both patents belong to the same patent family, which traces back to the '562 Patent's November 22, 2014 filing date. This family relationship is significant because it reflects the interconnected nature of OWS's innovations in silicon photonic multiplexer design and thermal management — the '847 Patent builds upon the f

50. Asserted Claims: OWS asserts Claims 1, 3, 5, 9, and 14 of the '847 Patent against Lumicore.

51. Summary of the Invention: The '847 Patent discloses and claims a multi-channel waveguide multiplexer architecture on a silicon photonic platform that achieves exceptionally low insertion loss for dense wavelength-division multiplexed (DWDM) optical signals. In conventional silicon photonic multiplexers, insertion loss — the loss of optical signal power as light passes through the multiplexer — is a significant pe

52. The significance of the '847 Patent's innovations can be appreciated in the context of the broader trend toward higher-bandwidth optical interconnects in hyperscale data centers. As data rates have increased from 100 Gbps to 400 Gbps and beyond, the number of wavelength channels that must be multiplexed onto a single fiber has correspondingly increased, placing ever-greater demands on multiplexer performance. The

53. Title: "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate."

54. Filing and Issue Dates: The '193 Patent was filed on April 7, 2017, and issued on January 12, 2021.

55. Assignee: The '193 Patent was originally assigned to Optiwave Semiconductor Corp. and remains assigned to OWS.