Contract analysis

I. EXECUTIVE SUMMARY The purpose of this memorandum is to evaluate Lumicore Technologies, Inc.'s ("Lumicore") invalidity contentions as set forth in its P.R. 3-3 Invalidity Contentions served on October 14, 2024, as they pertain specifically to U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers." This memorandum analyzes each invalidity the

II. BACKGROUND ON THE '015 PATENT A. Patent Overview U.S. Patent No. 11,402,015 is entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers." The patent discloses and claims a grating coupler architecture designed to address one of the persistent challenges in silicon photonics: efficiently coupling light of both transverse electric ("TE") and transverse magnetic ("TM") polarization states int

III. SUMMARY OF LUMICORE'S INVALIDITY CONTENTIONS FOR THE '015 PATENT A. Overview of Theories Asserted Lumicore's P.R. 3-3 Invalidity Contentions, served on October 14, 2024, assert invalidity of the '015 Patent on three separate grounds:

1. Prior conception and reduction to practice by Lumicore (primary theory). Lumicore contends that the subject matter of the asserted claims of the '015 Patent was conceived by Lumicore engineers prior to OWS's April 7, 2017 provisional filing date. Lumicore identifies a collection of internal design documents purportedly dated between late 2016 and early 2017 as evidence of this prior conception. Lumicore further co

2. Obviousness under 35 U.S.C. § 103 — Bergmann combined with Simonsen. Lumicore contends that the asserted claims would have been obvious in view of the Bergmann patent (U.S. Patent No. 8,412,007) in combination with the Simonsen PCT application (PCT/EP2015/071234), and potentially in further combination with other references. This is the same combination that was considered and rejected by the examiner during prose

3. Obviousness under 35 U.S.C. § 103 — Academic publications combined with known design principles. Lumicore contends that certain academic publications on grating coupler design, when combined with known grating coupler design principles and the general state of the art, render the asserted claims obvious. The specific academic references are identified in Section V.B below. Notably, Lumicore does not assert anticip

IV. ANALYSIS OF PRIOR-CONCEPTION DEFENSE A. Legal Framework — Prior Conception and Reduction to Practice Under the AIA The legal framework applicable to Lumicore's prior-conception defense requires careful analysis, because this defense raises a threshold statutory question under the AIA that Lumicore's contentions do not adequately address. The '015 Patent has an effective filing date of August 30, 2019 (the non-pro

1. Design Notebook Entries (Dr. Eric Dalmqvist, November 2016 – February 2017) Lumicore produced copies of notebook pages attributed to Dr. Eric Dalmqvist, Lumicore's Vice President of Product Development, during discovery. These pages purportedly span from November 2016 through February 2017 and contain handwritten notes and sketches relating to polarization-diverse coupler design concepts. Our review of the produce

2. Internal Northgate Services Inc. Presentation ("Next-Gen Grating Coupler Architecture," January 2017) The second category of evidence is a 22-slide Northgate Services Inc. presentation marked "Lumicore Technologies — Confidential" and titled "Next-Gen Grating Coupler Architecture." Lumicore claims this presentation was created in January 2017 by Lumicore's photonics design group. Our review of this document and it

3. Email Chain (December 2016) The third category of evidence is an email chain among Lumicore engineering staff, including Dr. Sandra Michaud (who was then a senior engineer at Lumicore and has since been promoted to Chief Technology Officer). The email chain is dated December 2016 and discusses polarization-diverse coupler concepts. The email chain was produced from Lumicore's email archives, and the email metadata

4. Annotated Schematic Drawings (Undated, Claimed Q4 2016) The fourth and final category of evidence consists of hand-drawn schematics of a grating structure with annotations. Lumicore's contentions assert that these drawings were "created in Q4 2016," but the drawings themselves are completely undated. The evidentiary deficiencies of these drawings are extensive. No date appears anywhere on the drawings. No authorsh

V. ANALYSIS OF OBVIOUSNESS CONTENTIONS (35 U.S.C. § 103) A. Bergmann (U.S. Patent No. 8,412,007) Combined with Simonsen (PCT/EP2015/071234)

1. Summary of References Bergmann (U.S. Patent No. 8,412,007). Issued April 2, 2013, the Bergmann patent is directed to grating coupler structures for optical interconnects. Bergmann discloses a one-dimensional grating coupler designed to optimize coupling efficiency between an optical fiber and a silicon waveguide on a photonic integrated circuit. The patent teaches specific design techniques for the grating period,

2. Examiner's Prior Consideration This exact combination of Bergmann and Simonsen was raised by the USPTO examiner during prosecution of the '015 Patent. The examiner issued a rejection under 35 U.S.C. § 103, asserting that the combination of Bergmann's grating coupler structure with Simonsen's polarization management teaching would have rendered the claimed polarization-diverse grating coupler obvious to a person of

3. Analysis. Lumicore's obviousness contentions based on the Bergmann-Simonsen combination essentially ask the Court and, ultimately, the jury to second-guess the examiner's decision to allow the claims after considering this very combination. While it is well-established that an examiner's decision during prosecution is not preclusive and that invalidity may be proven at trial even for prior art that was before the