Contract analysis

1. This is a patent infringement action brought by Optiwave Semiconductor Corp. against Lumicore Technologies, Inc. for infringement of four United States utility patents: U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), 9,678,562 (the "'562 Patent"), and 11,402,015 (the "'015 Patent") (collectively, the "Asserted Patents" or the "Patents-in-Suit").

2. The Asserted Patents cover fundamental innovations in silicon-photonics transceiver technology used in hyperscale data-center interconnects. Specifically, the Asserted Patents relate to: (a) multi-channel waveguide multiplexing enabling the combination of multiple optical signals at different wavelengths onto a single waveguide with low insertion loss; (b) coherent optical transceiver integration on silicon substr

3. These innovations are at the heart of modern hyperscale data-center interconnect technology, a rapidly growing market driven by escalating demand for cloud computing, artificial intelligence workloads, and high-bandwidth networking. OWS pioneered these technologies through years of dedicated research and development, substantial capital investment, and the contributions of its world-class engineering team.

4. Plaintiff seeks compensatory damages of approximately $210 million, comprising lost profits and reasonable royalties. Plaintiff further seeks enhanced damages for willful infringement pursuant to 35 U.S.C. § 284, a permanent injunction pursuant to 35 U.S.C. § 283, attorneys' fees and costs pursuant to 35 U.S.C. § 285, and prejudgment and post-judgment interest.

5. This First Amended Complaint supersedes the Original Complaint filed April 22, 2024 (D.E. 1) in its entirety. This First Amended Complaint adds expanded allegations regarding Lumicore's LumiEdge 1600G-LR product line, which was launched in Q4 2023, and provides further detail on infringement under the doctrine of equivalents as to the '015 Patent. This First Amended Complaint also incorporates updated willfulness

II. THE PARTIES A. Plaintiff Optiwave Semiconductor Corp.

6. Plaintiff Optiwave Semiconductor Corp. is a corporation organized and existing under the laws of the State of Delaware. OWS's registered agent in Delaware is Capitol Statutory Services, Inc., located at 1209 Orange Street, Wilmington, Delaware 19801. OWS's principal place of business and corporate headquarters is located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. OWS's Employer I

7. OWS was founded in 2011 and is a fabless semiconductor company specializing in silicon photonics chipsets for data-center interconnects. OWS's Chief Executive Officer is Dr. Priya Ramaswamy. OWS's Chief Technology Officer is Dr. Jian-Wei Huang. OWS's General Counsel is Rebecca Tanaka. OWS's Vice President of Engineering, Photonics Division, is Dr. Nikolai Petrov. OWS's Chief Financial Officer is David Leitner.

8. OWS currently employs approximately 1,250 employees. For its fiscal year ended December 31, 2023 ("FY 2023"), OWS reported revenue of $487.3 million (as audited by Gresham & Whitfield LLP) and net income of $61.4 million.

9. OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers. OWS holds 142 issued U.S. patents and 58 pending patent applications. OWS's key product families include the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families, which practice the inventions claimed in the Asserted Patents.

10. OWS's majority owner is Ridgeline Capital Partners, LP, a private equity sponsor that acquired a 55% ownership stake in OWS in 2019 for approximately $780 million. OWS's Board Chair is Franklin Osei, a designee of Ridgeline Capital Partners. B. Defendant Lumicore Technologies, Inc.

11. Defendant Lumicore Technologies, Inc. is a corporation organized and existing under the laws of the State of Delaware. Lumicore's registered agent in Delaware is National Agent Services Corp., located at 850 New Burton Road, Suite 201, Dover, Delaware 19904. Lumicore's principal place of business and corporate headquarters is located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore's Employer

12. Lumicore was founded in 2015. Lumicore's Chief Executive Officer is Thomas "Tom" Kessler. Lumicore's Chief Technology Officer is Dr. Sandra Michaud. Lumicore's General Counsel is Raymond Bautista. Lumicore's Vice President of Product Development is Dr. Eric Dalmqvist. Lumicore's Chief Financial Officer is Janet Moreno.

13. Lumicore currently employs approximately 870 employees. For FY 2023, Lumicore reported estimated revenue of approximately $312.6 million.

14. Lumicore completed an initial public offering on the Nasdaq Stock Market in March 2022 at a price of $24.00 per share. As of the date of filing the Original Complaint in this action, Lumicore's common stock was trading at approximately $37.00 per share, with approximately 91.8 million shares outstanding, resulting in a market capitalization of approximately $3.4 billion.

15. The accused product lines in this action are Lumicore's LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules, each of which is described in detail below.

16. Lumicore maintains a sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, within this judicial district.

III. JURISDICTION A. Subject Matter Jurisdiction

17. This Court has original subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338(a). This action arises under the patent laws of the United States, Title 35 of the United States Code, including 35 U.S.C. §§ 271, 281, 283, 284, and 285. B. Personal Jurisdiction

18. This Court has personal jurisdiction over Lumicore. Lumicore is registered to do business in the State of Texas. Lumicore maintains a permanent sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, located within the Eastern District of Texas.

19. Lumicore has committed and continues to commit acts of infringement in this judicial district, including making, using, selling, offering to sell, and/or importing into the United States accused products that are thereafter distributed and used in this district.

20. Lumicore has sold accused products to customers with facilities in the Eastern District of Texas, including but not limited to: (a) Pinnacle Data Systems, LLC, which operates a data-center facility in Longview, Texas; (b) Frontier Cloud Services, Inc., which operates a data-center facility in marshall, Texas; and (c) CrossPoint Networking Corp., which maintains offices in Plano, Texas (transferred to the Tyler Di

21. Lumicore has purposefully availed itself of the privileges and protections of the laws of the State of Texas by, among other things, establishing and maintaining a regular and established place of business in this district, employing personnel in this district, conducting commercial activities in this district, and deriving substantial revenue from the sale of products to customers in this district. The exercise

22. Venue is proper in this District under 28 U.S.C. § 1400(b). Lumicore has committed acts of infringement in this judicial district, as set forth herein. Additionally, Lumicore has a regular and established place of business in this district, specifically its sales and technical support office at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701. Lumicore employs multiple full-time employees at this locatio

23. On August 5, 2024, this Court denied Lumicore's Motion to Transfer Venue to the Western District of Texas (Austin Division) pursuant to 28 U.S.C. § 1404(a) (D.E. 25, Order by the Honorable James R. Gilstrap), confirming the propriety of venue in this District. In denying the motion, the Court found, among other things, that Lumicore's Tyler office constituted a regular and established place of business in this di

V. THE PATENTS-IN-SUIT A. U.S. Patent No. 10,234,847 — The '847 Patent

24. On March 19, 2019, the United States Patent and Trademark Office ("USPTO") duly and legally issued U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss" (the "'847 Patent"). The '847 Patent issued from an application filed on September 14, 2016. The '847 Patent is a utility patent.

25. The '847 Patent was originally assigned to Optiwave Semiconductor Corp. OWS remains the current owner by assignment of all right, title, and interest in and to the '847 Patent. The named inventors of the '847 Patent include Dr. Jian-Wei Huang and Dr. Nikolai Petrov, among others.

26. The '847 Patent and the '562 Patent (described below) are in the same patent family and share a continuation relationship.

27. All maintenance fees required to maintain the '847 Patent have been paid, and the '847 Patent is currently in full force and effect.

28. The '847 Patent claims cover multi-channel silicon photonic waveguide multiplexer technology that enables combining multiple optical signals of different wavelengths onto a single waveguide with low insertion loss. This capability is critical for high-bandwidth data-center interconnects, where the ability to multiplex multiple wavelengths onto a single silicon waveguide with minimal signal degradation represents

29. A true and correct copy of the '847 Patent is attached hereto as Exhibit A and is incorporated by reference as if fully set forth herein. B. U.S. Patent No. 10,891,193 — The '193 Patent

30. On January 12, 2021, the USPTO duly and legally issued U.S. Patent No. 10,891,193, entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate" (the "'193 Patent"). The '193 Patent issued from an application filed on April 7, 2017. The '193 Patent claims priority to Provisional Application No. 62/499,117, filed April 7, 2017.

31. The '193 Patent was originally assigned to Optiwave Semiconductor Corp. OWS remains the current owner by assignment of all right, title, and interest in and to the '193 Patent.

32. The '193 Patent and the '015 Patent (described below) share a common provisional application, Provisional Application No. 62/499,117, filed April 7, 2017.

33. All maintenance fees required to maintain the '193 Patent have been paid, and the '193 Patent is currently in full force and effect.

34. The '193 Patent claims cover a high-bandwidth coherent optical transceiver integrated on a silicon substrate. The inventions claimed in the '193 Patent enable high-performance optical data transmission—including the recovery of both amplitude and phase information from coherent optical signals—using standard semiconductor fabrication processes. Prior to OWS's innovations, coherent optical transceivers required co

35. A true and correct copy of the '193 Patent is attached hereto as Exhibit B and is incorporated by reference as if fully set forth herein. C. U.S. Patent No. 9,678,562 — The '562 Patent

36. On June 13, 2017, the USPTO duly and legally issued U.S. Patent No. 9,678,562, entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks" (the "'562 Patent"). The '562 Patent issued from an application filed on November 22, 2014. The '562 Patent is a utility patent.

37. The '562 Patent was originally assigned to Solara Optics, Inc. On June 15, 2018, OWS acquired all right, title, and interest in and to the '562 Patent, along with eleven additional patents, from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018 (the "Solara APA"). The total consideration paid by OWS under the Solara APA for the portfolio of twelve patents was $34.5 million. The assig

38. OWS is the current owner by assignment of all right, title, and interest in and to the '562 Patent.

39. All maintenance fees required to maintain the '562 Patent have been paid, and the '562 Patent is currently in full force and effect.

40. The '562 Patent claims cover a method for thermal management of photonic integrated circuits using embedded micro-channel heat sinks. The inventions claimed in the '562 Patent address critical thermal dissipation challenges inherent in high-density photonic integrated circuits ("PICs"). As data rates increase and photonic components are packed more densely onto a single chip, managing heat generation becomes a li

41. A true and correct copy of the '562 Patent is attached hereto as Exhibit C and is incorporated by reference as if fully set forth herein.

42. Assignment records for the '562 Patent, reflecting the assignment from Solara Optics, Inc. to Optiwave Semiconductor Corp. dated June 15, 2018, are attached hereto as Exhibit E and are incorporated by reference as if fully set forth herein. D. U.S. Patent No. 11,402,015 — The '015 Patent

43. On August 2, 2022, the USPTO duly and legally issued U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers" (the "'015 Patent"). The '015 Patent issued from an application filed on August 30, 2019. The '015 Patent claims priority to Provisional Application No. 62/499,117, filed April 7, 2017, which is the same provisional application from which the '193 Paten

44. The '015 Patent was originally assigned to Optiwave Semiconductor Corp. OWS remains the current owner by assignment of all right, title, and interest in and to the '015 Patent.

45. All maintenance fees required to maintain the '015 Patent have been paid, and the '015 Patent is currently in full force and effect.

46. The '015 Patent claims cover a polarization-diverse grating coupler for silicon photonic transceivers. The inventions claimed in the '015 Patent enable efficient coupling of light of two orthogonal polarization states—transverse electric ("TE") and transverse magnetic ("TM") polarization modes—from an optical fiber into the silicon photonic waveguide. This capability represents a key advance enabling polarization

47. No inter partes review ("IPR") petitions have been filed against any of the Asserted Patents as of the date of this First Amended Complaint, although counsel for Lumicore has reserved the right to petition for IPR in correspondence and at the parties' Rule 26(f) conference.

48. A true and correct copy of the '015 Patent is attached hereto as Exhibit D and is incorporated by reference as if fully set forth herein.

VI. OPTIWAVE'S INNOVATIONS AND MARKET POSITION

49. OWS is a fabless semiconductor company specializing in silicon photonics chipsets for data-center interconnects. Since its founding in 2011, OWS has been at the forefront of silicon-photonics innovation, developing and commercializing breakthrough technologies that have become essential to modern hyperscale data-center infrastructure.

50. OWS has invested hundreds of millions of dollars in research and development of silicon-photonics transceiver technology. OWS's R&D investments have been directed toward solving some of the most challenging problems in photonic integrated circuit design, including waveguide multiplexing, coherent optical detection on silicon substrates, thermal management of high-density photonic ICs, and polarization-diverse lig

51. OWS currently holds 142 issued U.S. patents and 58 pending patent applications, reflecting the breadth and depth of its innovation in the silicon-photonics space. The Asserted Patents represent some of OWS's most important and commercially significant intellectual property.

52. OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, competing with both larger, diversified semiconductor companies and specialized photonics firms. OWS's key product families—the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families—practice the inventions claimed in the Asserted Patents and are designed and marketed to meet the demanding requir

53. OWS's FY 2023 revenue was $487.3 million. Approximately $310 million of OWS's FY 2023 revenue was attributable to products that practice one or more of the Asserted Patents. OWS's gross margin on its products that compete directly with Lumicore's accused products is 47.3%.

54. OWS's innovations, as embodied in the Asserted Patents, represent significant advances over the prior art. These innovations have achieved commercial success, as demonstrated by OWS's substantial and growing revenue from products practicing the Asserted Patents. OWS's innovations have also met long-felt but unsolved needs in the silicon-photonics industry, including the need for low-loss multi-channel waveguide m