Contract analysis

I. PURPOSE AND SCOPE OF THIS MEMORANDUM This memorandum has been prepared by Calderwood & Harkness LLP ("C&H") to assist Dr. Caroline Ashford in preparing for her upcoming deposition in the above-referenced matter. The deposition is anticipated to be taken by Hawthorne Vega & Cruz LLP ("HVC"), counsel for Defendant Lumicore Technologies, Inc. ("Lumicore"). Based on our assessment of opposing counsel's litigation team

II. GENERAL DEPOSITION GUIDANCE A. Deposition Format and Logistics Dr. Ashford's deposition will be taken pursuant to Federal Rule of Civil Procedure 30 and the applicable local rules of the Eastern District of Texas. We anticipate that HVC will notice the deposition for the presumptive limit of seven hours of examination in a single day, although it is possible that HVC may seek leave of Court to extend the duration

III. ANTICIPATED LINES OF CROSS-EXAMINATION The following sections address, topic by topic, the lines of cross-examination we anticipate HVC will pursue during Dr. Ashford's deposition. For each topic, we identify the likely questions, the key documents that may be used, and recommended approaches and pitfalls to avoid. This analysis is based on our review of HVC's litigation strategy to date, the issues raised in th

1. Expert Credentials and Background Opposing counsel will begin, as is customary, by exploring Dr. Ashford's qualifications. While this portion of the deposition may appear routine, it serves several strategic purposes for HVC: (1) establishing the boundaries of Dr. Ashford's expertise for possible Daubert challenge purposes; (2) identifying areas where Dr. Ashford's academic background may be contrasted with real-w

2. Compensation and Engagement History HVC will inevitably explore Dr. Ashford's financial arrangement with C&H and with OWS. This line of questioning is designed to suggest that Dr. Ashford's opinions may be influenced by the compensation she receives for her work. While this is a standard line of attack against expert witnesses and is unlikely to carry significant weight with the Court or a jury on its own, it can

3. Relationship with Optiwave or Counsel HVC will ask whether Dr. Ashford has any prior consulting, research, or advisory relationship with OWS or any of its employees, including Dr. Jian-Wei Huang (OWS's Chief Technology Officer) and Dr. Nikolai Petrov (Vice President of Engineering, Photonics Division). HVC will also ask whether Dr. Ashford has any prior relationship with Cascade IP Advisors, LLC, the patent prosec

1. Dr. Ashford's POSITA Definition The definition of a person of ordinary skill in the art is foundational to both the infringement analysis and the validity analysis. Dr. Ashford has defined a POSITA consistently across her Opening Claim Construction Declaration (submitted November 15, 2024) and both of her expert reports (served June 15, 2025). Her definition provides that a POSITA in this field would be a person h

2. Impact of POSITA Definition on Claim Construction and Validity HVC will probe whether changing the POSITA definition would alter Dr. Ashford's opinions on the ordinary and customary meaning of the disputed claim terms. This line of questioning is designed to show that Dr. Ashford's infringement and validity opinions are sensitive to the POSITA definition and could change under a different definition — thereby sugg

3. POSITA Knowledge and State of the Art HVC will ask Dr. Ashford to describe what a POSITA would have known at the time of each patent's effective filing date. This line of questioning is relevant both to claim construction (the ordinary and customary meaning of claim terms is assessed from the perspective of a POSITA at the time of filing) and to validity (the obviousness inquiry is based on the state of the art at

1. Scope of DOE Contentions The doctrine of equivalents is a judicially created doctrine that extends patent protection beyond the literal scope of the claims to encompass equivalents that perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed limitation. OWS's infringement contentions include DOE claims for the following specific limitations: •

2. Function-Way-Result Analysis For each DOE contention, HVC will probe each prong of the function-way-result test in detail. We anticipate that HVC will structure this examination as follows: Function: HVC will ask Dr. Ashford to identify the function performed by the claim element (e.g., the "coherent detection module" limitation) and the function performed by the corresponding element in the accused product. HVC w

3. Prosecution History Estoppel (Festo) This is expected to be a major focus of cross-examination, and it represents one of the most significant areas of vulnerability in OWS's infringement case. Under Festo Corp. v. Fenmore & Co., 535 U.S. 722 (2002), when a patent applicant narrows a claim during prosecution to secure the patent, there is a presumption that the applicant surrendered the territory between the origin

4. Vitiation / All-Limitations Rule In addition to prosecution history estoppel, HVC may argue that applying the doctrine of equivalents to certain claim limitations would effectively "vitiate" those limitations — that is, it would render the limitation meaningless by allowing it to be satisfied by any structure, regardless of how different it is from the claimed element. This argument is related to the "all-limitati

1. Overview. Lumicore's invalidity contentions, served on October 14, 2024, cite 23 prior-art references across all four asserted patents. These references include academic journal articles, conference papers, patents, patent applications, and internal Lumicore design documents. The invalidity contentions assert both anticipation under 35 U.S.C. § 102 and obviousness under 35 U.S.C. § 103 against various claims of ea

2. Key Prior-Art References — Anticipated Focus a. Takahashi et al. — '847 Patent Anticipation (§ 102). The Takahashi reference is "Dense WDM Silicon Photonic MUX," published in IEEE Photonics Technology Letters in March 2014. HVC will argue that this reference discloses all elements of one or more of the asserted claims of the '847 Patent, rendering those claims anticipated under § 102. Dr. Ashford should be prepare