Contract analysis

I. Purpose and Executive Summary The purpose of this memorandum is to compile and assess the evidence supporting secondary considerations of non-obviousness — also referred to as "objective indicia" of non-obviousness — for each of the four Asserted Patents in the above-referenced litigation. This memorandum is prepared in anticipation of three critical milestones in this case: (a) Dr. Caroline Ashford's expert valid

II. Legal Framework A. Standard for Secondary Considerations The Supreme Court established the foundational framework for evaluating obviousness under 35 U.S.C. § 103 in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). Under Graham, the obviousness determination involves a four-step inquiry: (1) determining the scope and content of the prior art; (2) ascertaining the differences between the prior art and t

1. Commercial Success. Evidence that products embodying the claimed invention have achieved significant commercial success in the marketplace is probative of non-obviousness because it suggests that the marketplace values the innovation and that the invention filled a demand that the prior art had failed to address. See Ashbury Enterprises v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005). The commercial

2. Long-Felt but Unsolved Need. Evidence that a long-felt need existed in the art for the solution provided by the claimed invention, and that the need went unsolved despite efforts by persons skilled in the art, is probative of non-obviousness because it indicates that the solution was not readily apparent to those working in the field. See Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356, 1369 (Fed. Cir. 2017)

3. Failure of Others. Evidence that others in the field attempted to solve the same problem addressed by the claimed invention but failed to do so is strongly probative of non-obviousness. See Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279 (1944). Failure of others evidence is closely related to long-felt need evidence but focuses on the specific unsuccessful attempts by competitors, which demonstrate

4. Copying by the Infringer. Evidence that the accused infringer deliberately copied the patented invention, rather than independently developing its own solution, is among the most persuasive forms of secondary considerations evidence. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) ("Copying is additional evidence of non-obviousness, for it is reasonable to conclude that one woul

III. Commercial Success A. Overview of OWS Products Practicing the Asserted Patents OWS is a practicing entity that designs, manufactures (through foundry partners), and commercially sells silicon-photonic transceiver modules for hyperscale data-center and telecommunications applications. OWS operates under a fabless semiconductor model, with its design, engineering, and sales operations headquartered in Santa Clara,

IV. Long-Felt but Unsolved Need A. The Technical Problem Addressed by the Patented Inventions Each of the four Asserted Patents addresses a specific, long-recognized technical problem in the field of silicon-photonic integrated circuits that had resisted solution despite sustained efforts by the industry. The following provides a detailed description of each technical problem and the manner in which the Asserted Pate

V. Failure of Others A. Competitors Who Attempted Similar Solutions Evidence of the failure of others to solve the technical problems addressed by the Asserted Patents provides further support for non-obviousness. If the claimed inventions were obvious, one would expect that other skilled practitioners in the field — facing the same problems and possessed of the same general knowledge — would have arrived at the same

1. Competitor A (name to be identified in Gregory Falk's industry expert report). This competitor attempted to develop an arrayed-waveguide-grating ("AWG")-based multiplexer for dense WDM on silicon during the 2013–2015 time frame. Despite significant investment in research and development, this competitor was unable to achieve the low insertion-loss levels that the '847 Patent's claimed structure subsequently achiev

2. Competitor B (name to be identified in Gregory Falk's industry expert report). This competitor developed a thermal management approach for photonic integrated circuits using conventional fin-based heat sinks during the 2012–2014 time frame. While the conventional fin-based approach provided adequate thermal performance for lower-power-density transceiver modules, it was unable to achieve adequate heat dissipation

3. Competitor C (name to be identified in Gregory Falk's industry expert report). This competitor attempted to integrate a coherent transceiver on a silicon platform during the 2015–2016 time frame. However, the competitor's approach required hybrid bonding of III-V semiconductor materials (such as InP) onto the silicon substrate to provide the optical gain and modulation functions necessary for coherent operation. T

VI. Copying by Lumicore Technologies, Inc. A. Overview of Copying Evidence Evidence of deliberate copying by the accused infringer is among the most persuasive categories of secondary considerations, as it reflects a real-world judgment by the infringer that the patented invention represents a superior solution — one worth adopting rather than designing around. As the Federal Circuit has explained, "[o]ne of the stro

1. Melissa Chen Anticipated Testimony Melissa Chen is a former Lumicore engineer who was a member of the LumiLink 400G-ZR+ design team at Lumicore from 2020 to 2024. Ms. Chen left Lumicore in early 2024 and is now employed as a senior design engineer at Veridian Photonics, Inc. Because Ms. Chen is no longer a Lumicore employee, she is beyond OWS's ability to obtain her testimony through party discovery, and a third-p

2. Dr. Sandra Michaud Deposition Testimony (November 19, 2024) Dr. Sandra Michaud, Lumicore's Chief Technology Officer, was deposed on November 19, 2024. During her deposition, Dr. Michaud made several admissions that are highly relevant to the copying analysis. First, Dr. Michaud admitted that she personally reviewed OWS's Published Application No. 2018/0123456 — corresponding to the '193 Patent — during the LumiLin