Contract analysis

I. EXECUTIVE SUMMARY The purpose of this memorandum is to evaluate the merits of defendant Lumicore Technologies, Inc.'s ("Lumicore") counterclaim, filed on June 17, 2024 (D.E. 12), alleging inequitable conduct during prosecution of U.S. Patent No. 10,891,193 ("the '193 Patent"), titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate." Lumicore's counterclaim seeks unenforceability of the

1. Oppose the counterclaim aggressively in all responsive pleadings and throughout discovery.

2. Develop the factual record through targeted discovery, including coordination with Cascade IP Advisors, LLC, the firm that prosecuted the '193 Patent, and its lead attorney, Dr. Martin Chu, to obtain a supporting declaration regarding IDS practices and the handling of the allegedly withheld reference.

3. Prepare and file a motion for summary judgment on the inequitable conduct counterclaim at the September 15, 2025 dispositive motion deadline.

4. Prepare a contingent trial strategy in the event the counterclaim survives summary judgment. The overall risk assessment for this counterclaim is LOW.

II. BACKGROUND A. The '193 Patent — Prosecution Overview U.S. Patent No. 10,891,193, titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," is one of four patents asserted by OWS in this litigation. The key prosecution details are as follows: • Patent Number: U.S. Patent No. 10,891,193 • Title: "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate" • Filing Date:

1. Dr. Huang was substantively involved in the prosecution of the '193 Patent and was an individual associated with the filing or prosecution of the application who owed a duty of candor and good faith to the USPTO under 37 C.F.R. § 1.56.

2. Dr. Huang was aware of the prior publication at issue during the pendency of the '193 Patent application before the USPTO.

3. The prior publication was material to the patentability of the '193 Patent because it disclosed concepts relevant to the claimed invention, including aspects of coherent optical transceiver integration on silicon substrates.

4. Dr. Huang failed to disclose this reference to the USPTO, either directly or through patent prosecution counsel, in any Information Disclosure Statement or other submission during prosecution.

5. Dr. Huang's failure to disclose the reference was intentional and was made with the specific intent to deceive the USPTO into granting a patent that would not otherwise have been granted.

6. As a result, the '193 Patent is unenforceable in its entirety. Lumicore seeks a declaration that the '193 Patent is unenforceable due to inequitable conduct during prosecution. If successful, this remedy would eliminate the '193 Patent from the case entirely, including all asserted claims (Claims 1, 3, 7, 10, 15, and 18) as against all three accused Lumicore products. OWS, through Calderwood & Harkness LLP, filed

III. LEGAL STANDARD A. The *Brightmoor & Co.* Framework The governing legal standard for inequitable conduct before the Federal Circuit is set forth in the en banc decision Brightmoor & Co., Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011). Prior to Brightmoor & Co., the standard for inequitable conduct had been widely criticized as too easily invoked and too loosely applied. The Federal Circuit acknow

1. Materiality — The "But-For" Standard The first element is materiality. Under Brightmoor & Co., the withheld reference must be "but-for material" to the issuance of the patent. This means that, but for the applicant's failure to disclose the reference, the PTO would not have allowed the claim. Brightmoor & Co., 649 F.3d at 1291–92. The court explained that but-for materiality requires a showing that the PTO would n

2. Specific Intent to Deceive The second element is specific intent to deceive the USPTO. Under Brightmoor & Co., the accused party must have (a) known of the reference, (b) known that the reference was material, and (c) made a deliberate decision to withhold the reference from the USPTO. Brightmoor & Co., 649 F.3d at 1290. Mere negligence, even gross negligence, in failing to disclose a reference is insufficient to

IV. MATERIALITY ANALYSIS A. Identification of the Allegedly Withheld Reference Lumicore's counterclaim identifies the allegedly withheld reference in general terms as a prior publication addressing coherent optical transceiver integration on silicon substrates. As of the date of this memorandum, Lumicore has not specified the precise reference with the level of particularity required for a fully developed analysis —

1. Integration of Coherent optical transceiver components on a silicon substrate. This is the fundamental concept disclosed in the withheld reference. However, this same concept is taught — indeed, it is the central subject — of the Takahashi et al. reference that the examiner independently identified and relied upon. Takahashi specifically describes the integration of transceiver functionality, including modulation

2. Use of coherent detection for high-bandwidth optical communication. The allegedly withheld reference discusses the use of coherent detection schemes, including homodyne and heterodyne detection architectures, for achieving high data rates. This concept, too, is addressed by references already in the prosecution record. Several of the IDS-disclosed references specifically address coherent detection in the context o

3. Integration of a local oscillator laser on the same silicon substrate. To the extent the allegedly withheld reference discusses the on-chip integration of a local oscillator laser source, this concept is addressed by multiple references in the prosecution record that discuss III-V-on-silicon laser integration and its application to coherent optical transceivers.

4. Waveguide-coupled photodetector arrays for coherent reception. This concept, while relevant to the broader field, is a well-known building block of silicon photonic receivers and is addressed in numerous references already before the examiner. In each of these categories, the teachings of the allegedly withheld reference are fully subsumed by the prior art already in the prosecution record. The withheld reference

V. SPECIFIC INTENT TO DECEIVE ANALYSIS Even if Lumicore could establish but-for materiality (which, as explained above, it cannot), the counterclaim would still fail because Lumicore cannot prove the second element of the Brightmoor & Co. test: specific intent to deceive the USPTO. As set forth below, the record does not support an inference of deceptive intent, let alone an inference that deceptive intent is the "si

1. Oversight or Inadvertent Omission. Dr. Huang may not have recognized the reference as material to the specific claims of the '193 Patent application, or he may simply have forgotten to bring it to the attention of prosecution counsel amid the demands of his role as CTO of a semiconductor company. Patent prosecution often spans several years, and it is not uncommon for inventors to fail to recall or identify every

2. Reliance on Patent Prosecution Counsel. Dr. Huang may have provided the reference — or otherwise made Dr. Chu aware of it — and Dr. Chu may have independently evaluated the reference and concluded that it was cumulative of art already before the examiner. If so, Dr. Chu's decision not to include the reference in an IDS would have been a legitimate exercise of professional judgment by a registered patent attorney.

3. Good-Faith Belief of Immateriality. Dr. Huang may have been aware of the reference but reasonably concluded that it was not material to the pending patent application because it covered the same ground as references already cited by the examiner. Given that the examiner had already identified the Takahashi reference — which teaches many of the same concepts as the allegedly withheld reference — it would have been

1. Standard IDS practices. Dr. Chu should describe his standard practice for identifying, evaluating, and disclosing prior art references in IDS submissions during patent prosecution. This will establish that a systematic process was in place and that IDS submissions were not handled carelessly.

2. Communications with Dr. Huang. Dr. Chu should describe his communications with Dr. Huang regarding prior art awareness during prosecution of the '193 Patent. Specifically, Dr. Chu should address whether Dr. Huang provided him with the allegedly withheld reference or otherwise brought it to his attention.

3. Evaluation of the reference. If Dr. Chu was aware of the allegedly withheld reference, he should describe his independent evaluation of its materiality and his reasons for concluding that it was cumulative of art already before the examiner.

4. Professional judgment regarding materiality. Dr. Chu should opine on whether, in his professional judgment as a registered patent attorney, the reference was material to the patentability of the '193 Patent's claims, or whether it was cumulative of the Takahashi reference and other cited prior art. A declaration from Dr. Chu would be powerful evidence rebutting any inference of specific intent to deceive. If Dr. C

VI. ASSESSMENT OF LUMICORE'S LITIGATION STRATEGY A. Purpose of the Counterclaim Inequitable conduct is a defense that Lumicore has likely asserted primarily as litigation leverage rather than as a theory it expects to prove at trial. The unenforceability of a patent is sometimes described as the "atomic bomb" or "nuclear option" of patent defense — if successful, it eliminates the patent entirely, not merely the asse

VII. RECOMMENDED DEFENSE STRATEGY A. Factual Development in discovery The first priority is to develop the factual record through targeted discovery, both to support our summary judgment motion and to force Lumicore to commit to the specific evidentiary basis for its counterclaim. We recommend the following discovery steps:

1. Interrogatories to Lumicore. Propound targeted interrogatories directed specifically at the inequitable conduct counterclaim. These interrogatories should require Lumicore to identify with particularity: (a) the specific reference allegedly withheld; (b) all evidence supporting Lumicore's contention that Dr. Huang was aware of the reference during prosecution; (c) all evidence supporting Lumicore's contention that

2. Document requests to Lumicore. Request all documents in Lumicore's possession, custody, or control that relate to the allegedly withheld reference, including any communications in which the reference was discussed in connection with this litigation, any expert analysis of the reference's materiality, and any documents relating to the decision to assert the inequitable conduct counterclaim.

3. Depositions. Depose Lumicore's witnesses who have knowledge of the factual basis for the inequitable conduct counterclaim. In particular, we should consider deposing any Lumicore employee or expert who identified the allegedly withheld reference and assessed its materiality.

4. Review of IDS correspondence. Obtain and review the complete correspondence between Dr. Huang and Dr. Martin Chu at Cascade IP Advisors regarding prior art disclosures during prosecution of the '193 Patent. This may require a limited waiver of attorney-client privilege with respect to communications concerning IDS submissions; however, many courts have held that the assertion of an advice-of-counsel defense or rel

5. Confirmation with Dr. Chu. Coordinate with Dr. Martin Chu to confirm whether the allegedly withheld reference was provided to him by Dr. Huang, whether he independently evaluated it, and whether he concluded that it was cumulative of art already before the examiner. If Dr. Chu confirms that the reference was considered and excluded as cumulative, this will provide a compelling factual basis for defeating the inten

6. IDS filing history. Gather and organize all IDS submissions made during prosecution of the '193 Patent to demonstrate the thoroughness of the disclosure record. A comprehensive IDS filing history showing multiple rounds of disclosure supports the inference that the prosecution was conducted in good faith. B. Expert Support We recommend retaining Dr. Caroline Ashford, OWS's technical expert, to provide opinions spe

1. No but-for materiality. The allegedly withheld reference is cumulative of prior art already before the examiner. The key teachings of the withheld reference are subsumed by the Takahashi et al. reference and other examiner-cited art. Even if the withheld reference had been disclosed, the same narrowing amendment to the "coherent detection module" limitation would have overcome any rejection based on it. The withhe

2. No clear and convincing evidence of specific intent to deceive. Multiple reasonable non-deceptive inferences exist, including oversight, reliance on prosecution counsel, and good-faith belief in immateriality. Under Brightmoor & Co., the specific intent to deceive must be the single most reasonable inference from the evidence. That standard is not met here. The motion should be supported by the following evidence:

1. Frame the counterclaim as a distraction. Present the inequitable conduct counterclaim to the jury (or the Court, if the issue is tried to the bench) as a distraction from the merits of the infringement case — an attempt by Lumicore to muddy the waters rather than defend against well-supported infringement allegations.