Contract analysis

I. INTRODUCTION Plaintiff Optiwave Semiconductor Corp. ("OWS") respectfully opposes any motion by Defendant Lumicore Technologies, Inc. ("Lumicore") to stay this action pending inter partes review ("IPR") proceedings before the Patent Trial and Appeal Board ("PTAB"). A stay at this advanced stage of litigation would be unjustified, would waste the substantial judicial and party resources already invested in this case

II. STATEMENT OF RELEVANT FACTS AND PROCEDURAL HISTORY A. The Asserted Patents and OWS's Innovation OWS's complaint asserts four utility patents, each directed to aspects of silicon-photonics transceiver technology: The '847 Patent (U.S. Patent No. 10,234,847). Titled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," the '847 Patent was filed on September 14, 2016, and issued on March 19

1. Dr. Jian-Wei Huang (OWS CTO and named inventor) — November 5, 2024.

2. Dr. Sandra Michaud (Lumicore CTO) — November 19, 2024.

3. Raymond Bautista (Lumicore General Counsel) — December 3, 2024 (limited in scope due to privilege issues that are the subject of ongoing motion practice).

4. Angela Reeves (Managing Director, FairPoint Licensing Group, LLC) — December 10, 2024.

5. Kevin Ng (Lead Engineer, Benchmark Semiconductor Analysis, LLC) — January 7, 2025. Approximately twelve additional fact depositions remain, in addition to all expert depositions. The parties have actively litigated discovery disputes, including OWS's Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 38), which remains pending before the Court, and Lumicore's Motion for Protective Order regarding fina

III. LEGAL STANDARD A district court possesses inherent authority to manage its docket, including discretion to stay proceedings pending IPR before the PTAB. See Murata Mach. USA, Inc. v. Daifuku Co., No. 6:20-cv-00505-ADA, 2021 WL 1206388 (W.D. Tex. Mar. 31, 2021); Kestrel Partners LLC, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988). However, a stay pending IPR is not automatic and is never granted as a matt

IV. ARGUMENT A. The Advanced Stage of This Litigation Weighs Heavily Against a Stay

1. Extensive Claim Construction Proceedings Are Complete or Nearly Complete. The parties have devoted months of intensive effort to claim construction proceedings that are now substantially complete. The parties identified 14 disputed claim terms across the four asserted patents, filed a Joint Claim Construction Statement (D.E. 40), and fully briefed their respective positions over the course of four rounds of briefi

2. Fact discovery Is Substantially Complete. Fact discovery in this case is well advanced. As of January 2025, the parties have exchanged over 329,000 documents totaling approximately 2.38 million pages — with OWS having produced approximately 182,000 documents (1.4 million pages) and Lumicore having produced approximately 147,000 documents (980,000 pages). These productions include technical documents, engineering d

3. A Firm Trial Date Has Been Set. This case has a firm trial date of February 2, 2026, set by Judge Gilstrap in the Court's Scheduling Order of August 12, 2024. Trial is estimated to last 7 to 10 days before a jury. The pre-trial conference is scheduled for January 5, 2026. The case is on a clear and orderly path to trial, with all remaining deadlines established and approaching: Expert reports are due June 15, 2025

1. Lumicore's Invalidity Contentions Are Already Fully Joined in This Court. The invalidity issues that Lumicore would raise in any IPR petition are already being fully litigated in this Court. On October 14, 2024, Lumicore served its P.R. 3-3 Invalidity Contentions (D.E. 36), identifying 23 prior-art references across the four asserted patents. These references include prior patents, international publications, acad

2. IPR Cannot Resolve the Entirety of This Case. Even if the PTAB were to institute review of some or all of the asserted patents, the IPR would address only a narrow subset of the issues in this case. IPR proceedings are limited to validity challenges based on patents and printed publications under 35 U.S.C. §§ 102 and 103. The following issues — each of which is central to this case — fall entirely outside the PTAB

3. Institution of IPR Is Not Guaranteed. Lumicore's anticipated motion to stay rests on the assumption that the PTAB will institute IPR on any petition it may file. But institution is discretionary and far from certain. The PTAB declines to institute IPR in a substantial percentage of petitions, and the rate of discretionary denial is particularly elevated where, as here, the parallel district-court litigation is wel

1. OWS and Lumicore Are Direct Competitors. OWS and Lumicore are direct, head-to-head competitors in the silicon-photonics transceiver market for hyperscale data centers. This is not a case involving a non-practicing entity or a patent holder operating in a different market segment. OWS's key products — the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families — compete directly with Lumicore's accused pro

2. OWS Is Suffering Ongoing Irreparable Harm During the Pendency of This Action. The harm OWS is suffering from Lumicore's continued sale of accused products is ongoing and, in significant respects, irreparable: Price erosion. Since Lumicore launched the LumiLink 400G-ZR+ in Q3 2022, the average selling price of 400G-ZR transceiver modules in the relevant market has declined by 18.7% through Q4 2023. While price decl

3. Lumicore's Delay Compounds the Prejudice. Lumicore's failure to timely file any IPR petition substantially compounds the prejudice that a stay would inflict on OWS. Lumicore has known about OWS's patents since at least January 15, 2023, when FairPoint Licensing Group, LLC sent its first detailed licensing and notice letter. It was put on notice of all four asserted patents no later than May 15, 2023. It was served

4. Financial Prejudice. Beyond the competitive harm detailed above, a stay would impose substantial financial prejudice on OWS. OWS has already invested significant resources in this litigation. Calderwood & Harkness LLP has incurred approximately $3.2 million in attorney fees through January 2025, plus approximately $198,400 in costs (including document review vendors, deposition transcription, travel, and technical

V. ALTERNATIVE ARGUMENT: IF THE COURT IS INCLINED TO CONSIDER A PARTIAL STAY, IT SHOULD IMPOSE STRICT CONDITIONS OWS submits that no stay of any kind is warranted under the circumstances of this case. However, if the Court is inclined to consider any stay, OWS respectfully requests that the stay be limited in scope and duration and subject to the following conditions:

1. No stay of injunction proceedings. OWS should be permitted to continue pursuing preliminary or permanent injunctive relief notwithstanding any stay. OWS is a practicing entity and direct competitor suffering ongoing irreparable harm from Lumicore's continued infringement. The right to seek injunctive relief — which is distinct from the validity issues that would be addressed in an IPR — should not be suspended.

2. No stay of discovery on willful infringement. Because the PTAB has no jurisdiction to address willful infringement, and because the willfulness inquiry is necessarily fact-intensive and time-sensitive (involving evidence of Lumicore's state of mind, its knowledge of OWS's patents, and its post-notice conduct), discovery and motion practice on willful infringement and enhanced damages under 35 U.S.C. § 284 should c

3. Time limit. Any stay should be strictly limited in duration — no longer than 90 to 120 days — and should automatically lift if: (a) the PTAB does not institute IPR on any petition within six months of filing; or (b) Lumicore fails to file an IPR petition within 30 days of the Court's order granting the stay. These conditions are necessary to prevent Lumicore from using a stay as an indefinite delay tactic.

4. Bond. Lumicore should be required to post a bond or other adequate security to compensate OWS for the ongoing competitive and financial harm it will suffer during any stay period. Given the magnitude of Lumicore's accused-product revenue — approximately $264.9 million in fiscal year 2023, with projected revenue through trial of approximately $714.6 million — the bond should be set at a level sufficient to provide

5. Preservation of trial date. The February 2, 2026 trial date should not be vacated. Any stay should expire no later than a date that preserves the trial schedule, permitting the parties sufficient time to complete any remaining pre-trial proceedings and proceed to trial as originally scheduled by the Court. If the stay would require vacatur of the trial date, it should not be granted. These conditions are necessary

VI. CONCLUSION For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court deny Defendant Lumicore Technologies, Inc.'s motion to stay this action pending inter partes review. The advanced stage of these proceedings weighs decisively against a stay. The parties have fully briefed claim construction on 14 disputed terms across four patents, supported by expert declarations an

VII. SIGNATURE BLOCK Respectfully submitted, CALDERWOOD & HARKNESS LLP By: ________ Alan Ngo (CA Bar No. 287415; admitted pro hac vice E.D. Tex.) 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 443-7800 Email: alan.ngo@calderwoodharkness.com Marcus Delgado (TX Bar No. 24098712; CA Bar No. 301288) Wendy Schultz (CA Bar No. 312476; admitted pro hac vice E.D. Tex.) Omar Siddiqui (CA Bar No. 318

VIII. CERTIFICATE OF SERVICE I hereby certify that on ____, 2025, a true and correct copy of the foregoing Plaintiff Optiwave Semiconductor Corp.'s Brief in Opposition to Defendant Lumicore Technologies, Inc.'s Motion to Stay Pending Inter Partes Review was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following: Catherine "Kate" Ro

IX. APPENDICES / EXHIBITS The following exhibits are to be attached upon filing: Exhibit 1. Scheduling Order / Docket Control Order (D.E. 27, August 12, 2024) This exhibit contains the Court's Scheduling Order entered on August 12, 2024, establishing the following key dates and deadlines for this action: Markman hearing on March 14, 2025; fact discovery close on May 1, 2025; plaintiff expert reports due June 15, 2025