Contract analysis

I. RESPONSES TO COUNTERCLAIM ALLEGATIONS A. Response to Jurisdictional and Venue Allegations

1. OWS admits that this action is pending before the United States District Court for the Eastern District of Texas, marshall Division, under Case No. 2:24-cv-00319-JRG.

2. OWS admits that the Court has subject-matter jurisdiction over the patent-related counterclaims asserted by Lumicore pursuant to 28 U.S.C. §§ 1331 and 1338(a), which confer original jurisdiction over civil actions arising under the patent laws of the United States.

3. OWS admits that Lumicore Technologies, Inc. is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business and headquarters located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759.

4. OWS admits that it is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054.

5. OWS admits that it filed its original Complaint in this action (D.E. 1) on April 22, 2024, asserting infringement of 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").

6. With respect to Lumicore's allegations regarding venue, OWS notes that this Court's Order dated August 5, 2024 (D.E. 25), denying Lumicore's Motion to Transfer Venue Under 28 U.S.C. § 1404(a) (D.E. 13), confirms the propriety of venue in this District. As found in the Court's Order, Lumicore maintains a sales office and technical support center located at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701,

7. OWS admits that U.S. Patent No. 10,234,847 (the "'847 Patent"), titled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," was filed on September 14, 2016, and issued on March 19, 2019, and that Optiwave Semiconductor Corp. is listed as both the original assignee and the current assignee of the '847 Patent.

8. OWS admits that U.S. Patent No. 10,891,193 (the "'193 Patent"), titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," was filed on April 7, 2017, and issued on January 12, 2021, and that Optiwave Semiconductor Corp. is listed as both the original assignee and the current assignee of the '193 Patent. OWS further admits that the '193 Patent claims priority to U.S. Provisional Applicat

9. OWS admits that U.S. Patent No. 9,678,562 (the "'562 Patent"), titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," was filed on November 22, 2014, and issued on June 13, 2017. OWS admits that the original assignee of the '562 Patent was Solara Optics, Inc., and that OWS acquired the '562 Patent, along with eleven (11) other patents and patent applications

10. OWS admits that U.S. Patent No. 11,402,015 (the "'015 Patent"), titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," was filed on August 30, 2019, and issued on August 2, 2022, and that Optiwave Semiconductor Corp. is listed as both the original assignee and the current assignee of the '015 Patent. OWS further admits that the '015 Patent claims priority to U.S. Provisional Application

11. OWS admits that the '562 Patent and the '847 Patent are in the same patent family and share a continuation relationship.

12. OWS affirmatively avers that all four Asserted Patents are valid utility patents duly issued by the United States Patent and Trademark Office. All required maintenance fees for the Asserted Patents are current. OWS is the sole owner of all four Asserted Patents and possesses the full right and standing to enforce each of them in this action.

13. To the extent the Counterclaims contain any additional allegations regarding the Asserted Patents, their prosecution histories, their scope, their validity, or their enforceability that are inconsistent with the patents themselves, their prosecution histories as maintained by the USPTO, and the public record, such allegations are denied. C. Response to Allegations Regarding Lumicore's Products

14. OWS admits that Lumicore manufactures and sells products under the product names LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR (collectively, the "Accused Products").

15. OWS admits, upon information and belief, that the LumiLink 400G-ZR+ was commercially launched in the third quarter of 2022, that the LumiLink 800G-DR8 was commercially launched in the first quarter of 2023, and that the LumiEdge 1600G-LR was commercially launched in the fourth quarter of 2023.

16. OWS denies Lumicore's allegation that the Accused Products do not infringe any valid claim of the '847, '193, '562, or '015 Patents, whether literally or under the doctrine of equivalents. OWS's Complaint (D.E. 1) sets forth detailed allegations of infringement, and OWS's Infringement Contentions served pursuant to Patent Rule 3-1 on September 16, 2024 (D.E. 32) provide the claim-by-claim, limitation-by-limitatio

17. OWS denies any characterization of Lumicore's Accused Products that is inconsistent with the evidence developed in this case, including but not limited to the teardown analyses performed by Benchmark Semiconductor Analysis, LLC. Specifically, the teardown report on the LumiLink 400G-ZR+ was delivered on December 12, 2022; the follow-on teardown report on the LumiLink 800G-DR8 was delivered in June 2023; and the t

18. OWS further avers that its Infringement Contentions (P.R. 3-1, D.E. 32) detail the basis for both literal infringement and infringement under the doctrine of equivalents for Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent. D. Response to Allegations Regarding Pre-Suit Licensing Contacts

19. OWS admits that FairPoint Licensing Group, LLC, acting as OWS's authorized licensing agent, sent an initial licensing letter to Lumicore's General Counsel, Raymond Bautista, on January 15, 2023. The January 15, 2023 letter identified the '847, '193, and '562 Patents and set forth OWS's position that certain Lumicore products, including the LumiLink 400G-ZR+, infringed those patents.

20. OWS admits that Lumicore responded to the January 15, 2023 licensing letter on February 28, 2023, through outside patent litigation counsel at Hawthorne Vega & Cruz LLP. In that response, Lumicore disputed infringement and raised questions about the validity of the identified patents.

21. OWS admits that an in-person licensing meeting took place in Austin, Texas, on April 20, 2023. The meeting was attended by Angela Reeves (FairPoint Licensing Group, LLC), Rebecca Tanaka (OWS, Vice President of intellectual Property), Raymond Bautista (Lumicore, General Counsel), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP, lead outside counsel for Lumicore). During this meeting, the parties discussed t

22. OWS admits that FairPoint Licensing Group, LLC sent a second licensing letter to Lumicore on May 15, 2023. The May 15, 2023 letter added the '015 Patent (which had issued on August 2, 2022) to the set of patents at issue and expanded the scope of accused products to include the LumiLink 800G-DR8, which Lumicore had commercially launched in the first quarter of 2023.

23. OWS admits that Lumicore, through its General Counsel Raymond Bautista, declined to take a license under the Asserted Patents on July 10, 2023. In its July 10, 2023 letter, Lumicore stated that it had obtained "competent legal opinions" concluding that its products do not infringe the Asserted Patents.

24. OWS denies that the pre-suit licensing contacts described in the Counterclaims in any way undermine, weaken, or negate OWS's claims of infringement or willful infringement. To the contrary, the extensive pre-suit notice provided to Lumicore — spanning from January 15, 2023 through July 10, 2023, and including detailed claim charts and an in-person technical presentation — strengthens OWS's position that Lumicore

25. OWS denies any characterization of the licensing negotiations that suggests OWS's licensing positions were unreasonable, made in bad faith, or otherwise improper. OWS and its licensing agent, FairPoint Licensing Group, LLC, engaged in good-faith licensing efforts, consistent with industry practice, and offered Lumicore commercially reasonable terms for a license.

II. RESPONSES TO SPECIFIC COUNTERCLAIMS Response to Counterclaim I: Declaratory Judgment of Non-Infringement of the '847 Patent

26. OWS denies each and every allegation set forth in Counterclaim I of Lumicore's Counterclaims.

27. OWS affirmatively avers that its Complaint (D.E. 1, Count I) properly alleges that the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 infringe asserted Claims 1, 3, 5, 9, and 14 of the '847 Patent, titled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss." OWS's Infringement Contentions (P.R. 3-1, D.E. 32) detail, on a claim-by-claim and limitation-by-limitation basis, how each Accused Pr

28. OWS further avers that the teardown analyses performed by Benchmark Semiconductor Analysis, LLC confirm the presence of multi-channel silicon photonic waveguide multiplexer structures with low insertion loss in the Accused Products. The die-level photomicrographs and spectral measurements contained in the Benchmark reports demonstrate that the Accused Products include waveguide multiplexer architectures that corr

29. OWS denies that Lumicore is entitled to a declaratory judgment of non-infringement of the '847 Patent and respectfully requests that Counterclaim I be dismissed in its entirety with prejudice. Response to Counterclaim II: Declaratory Judgment of Non-Infringement of the '193 Patent

30. OWS denies each and every allegation set forth in Counterclaim II of Lumicore's Counterclaims.

31. OWS affirmatively avers that its Complaint (D.E. 1, Count II) properly alleges that all three Accused Products — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR — infringe asserted Claims 1, 3, 7, 10, 15, and 18 of the '193 Patent, titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate." OWS's Infringement Contentions (P.R. 3-1, D.E. 32) provide the detailed ba

32. OWS further avers that it asserts both literal infringement and infringement under the doctrine of equivalents as to Claims 3 and 7 of the '193 Patent. Specifically, OWS contends that even if Lumicore's accused designs do not literally satisfy the "coherent detection module" limitation recited in Claims 3 and 7, the corresponding elements in the Accused Products perform substantially the same function, in substan

33. OWS denies that Lumicore is entitled to a declaratory judgment of non-infringement of the '193 Patent and respectfully requests that Counterclaim II be dismissed in its entirety with prejudice. Response to Counterclaim III: Declaratory Judgment of Non-Infringement of the '562 Patent

34. OWS denies each and every allegation set forth in Counterclaim III of Lumicore's Counterclaims.

35. OWS affirmatively avers that its Complaint (D.E. 1, Count III) properly alleges that the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 infringe asserted Claims 1, 4, 6, and 11 of the '562 Patent, titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks." OWS's Infringement Contentions (P.R. 3-1, D.E. 32) detail, on a claim-by-claim and limitation-by-limitation ba

36. OWS further avers that it acquired the '562 Patent from Solara Optics, Inc. pursuant to the Asset Purchase Agreement dated June 15, 2018, and that OWS holds clear and undisputed title to the '562 Patent. The assignment was properly executed, recorded at the USPTO, and is a matter of public record. There is no defect in OWS's chain of title to the '562 Patent, and OWS has full right and standing to assert the '562

37. OWS denies that Lumicore is entitled to a declaratory judgment of non-infringement of the '562 Patent and respectfully requests that Counterclaim III be dismissed in its entirety with prejudice. Response to Counterclaim IV: Declaratory Judgment of Non-Infringement of the '015 Patent

38. OWS denies each and every allegation set forth in Counterclaim IV of Lumicore's Counterclaims.

39. OWS affirmatively avers that its Complaint (D.E. 1, Count IV) properly alleges that the LumiLink 800G-DR8 and the LumiEdge 1600G-LR infringe asserted Claims 1, 5, 8, 12, and 16 of the '015 Patent, titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers." OWS's Infringement Contentions (P.R. 3-1, D.E. 32) detail the specific bases for these infringement allegations.

40. OWS further avers that it asserts both literal infringement and infringement under the doctrine of equivalents as to Claim 12 of the '015 Patent. Specifically, OWS contends that even if Lumicore's accused designs do not literally satisfy the "two-dimensional sub-wavelength grating" limitation recited in Claim 12, the corresponding elements in the Accused Products perform substantially the same function, in substa

41. OWS denies that Lumicore is entitled to a declaratory judgment of non-infringement of the '015 Patent and respectfully requests that Counterclaim IV be dismissed in its entirety with prejudice. Response to Counterclaim V: Invalidity of the Asserted Patents Under 35 U.S.C. §§ 102 and 103

42. OWS denies each and every allegation set forth in Counterclaim V of Lumicore's Counterclaims.

43. OWS denies that any claim of the '847, '193, '562, or '015 Patents is invalid under 35 U.S.C. § 102 (anticipation) or 35 U.S.C. § 103 (obviousness), whether based on the prior-art references cited by Lumicore or on any other basis.

44. OWS affirmatively avers that all four Asserted Patents enjoy a statutory presumption of validity under 35 U.S.C. § 282. This presumption places the burden squarely on Lumicore to prove invalidity of each asserted claim by clear and convincing evidence. See Kestrel Partners LLC v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011). Lumicore cannot carry this heavy burden.

45. OWS notes that Lumicore's Invalidity Contentions served pursuant to Patent Rule 3-3 on October 14, 2024 (D.E. 36) cite twenty-three (23) prior-art references in support of its invalidity theories. OWS contends that none of these references, individually or in any combination, anticipates or renders obvious any asserted claim of the Asserted Patents. Without limiting the generality of the foregoing, OWS specifical

46. OWS further avers that strong secondary considerations of non-obviousness support the validity of all Asserted Patents. These secondary considerations include, but are not limited to, the following: (a) Commercial Success: OWS's commercial products embodying the patented inventions — including the OWS-400ZR and OWS-800XR product lines — have achieved significant commercial success. Approximately $310 million of O

47. OWS denies that any of the twenty-three (23) prior-art references cited in Lumicore's Invalidity Contentions, individually or in any combination, invalidates any asserted claim of any Asserted Patent.

48. OWS notes that no inter partes review petitions have been filed to date against any of the Asserted Patents at the USPTO's Patent Trial and Appeal Board.

49. OWS denies that Lumicore is entitled to a declaratory judgment of invalidity of any Asserted Patent and respectfully requests that Counterclaim V be dismissed in its entirety with prejudice. Response to Counterclaim VI: Unenforceability / Inequitable Conduct

50. OWS denies each and every allegation set forth in Counterclaim VI of Lumicore's Counterclaims.

51. OWS denies that Dr. Jian-Wei Huang, OWS's Chief Technology Officer and a named inventor on certain of the Asserted Patents, or any other individual associated with OWS or involved in the prosecution of the Asserted Patents, engaged in inequitable conduct before the United States Patent and Trademark Office during the prosecution of any of the Asserted Patents.

52. OWS affirmatively avers that Lumicore's allegation — that Dr. Huang failed to disclose a prior publication to the USPTO during the prosecution of the '193 Patent — is without merit for the following reasons: (a) The reference at issue was cumulative of prior art already cited by the patent examiner and considered by the USPTO during prosecution of the '193 Patent. The prosecution history of the '193 Patent demons

53. OWS further avers that all four Asserted Patents were prosecuted by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as lead patent prosecution attorney. The prosecution of the Asserted Patents was conducted in full accordance with all applicable duties of disclosure, candor, and good faith before the United States Patent and Trademark Office, as set forth in 37 C.F.R. § 1.56. Multiple Information Disclosure

54. OWS denies that any of the Asserted Patents is unenforceable for inequitable conduct or for any other reason, and respectfully requests that Counterclaim VI be dismissed in its entirety with prejudice.

III. AFFIRMATIVE DEFENSES TO COUNTERCLAIMS Without admitting any of the allegations in Lumicore's Counterclaims, and without assuming any burden of proof that would otherwise rest with Lumicore, OWS asserts the following affirmative defenses to Lumicore's Counterclaims: First Affirmative Defense: Failure to State a Claim Lumicore's Counterclaims, individually and collectively, fail to state claims upon which relief c

IV. PRAYER FOR RELIEF WHEREFORE, Plaintiff/Counterclaim-Defendant Optiwave Semiconductor Corp. respectfully requests that the Court enter judgment as follows:

1. Deny and dismiss each of Lumicore's Counterclaims — Counterclaim I (Declaratory Judgment of Non-Infringement of the '847 Patent), Counterclaim II (Declaratory Judgment of Non-Infringement of the '193 Patent), Counterclaim III (Declaratory Judgment of Non-Infringement of the '562 Patent), Counterclaim IV (Declaratory Judgment of Non-Infringement of the '015 Patent), Counterclaim V (Invalidity Under 35 U.S.C. §§ 102

2. Enter judgment declaring that U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 are valid and enforceable;