1014-00003 · Optiwave Semiconductor Corp · Case Management

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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

Pursuant to Civil Local Rule 16-2 and the Court's Standing Order for Initial Case Management Conferences, Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") and Defendant Lumos Photonics, Inc. ("Lumos" or "Defendant") (collectively, the "Parties") hereby jointly submit this Case Management Statement in advance of the Initial Case Management Conference scheduled for August 15, 2022, before the Honorable Edward J. Torvelis.

This Joint Case Management Statement is submitted by:

For Plaintiff Optiwave Semiconductor Corp.:

Alan Ngo (USPTO Reg. No. 52,871) and Omar Siddiqui, Calderwood & Harkness LLP, One Embarcadero Center, 34th Floor, San Francisco, CA 94111 — Counsel for Plaintiff Optiwave Semiconductor Corp.

For Defendant Lumos Photonics, Inc.:

Victoria Ashworth and Daniel Kowalski, Brannick Howell & Stein LLP, 555 California Street, Suite 2800, San Francisco, CA 94104 — Counsel for Defendant Lumos Photonics, Inc.

1. DESCRIPTION OF THE CASE AND RELIEF SOUGHT

1.1 Plaintiff's Description

Optiwave Semiconductor Corp. ("OWS") is a Delaware corporation headquartered at 2775 Augustine Drive, Suite 400, San Jose, California 95054. OWS is a fabless semiconductor design company specializing in the design and development of silicon photonics integrated circuits for data center interconnects and telecommunications applications. Since its founding in 2009, OWS has invested hundreds of millions of dollars in research and development and has assembled a substantial portfolio of United States and international patents directed to innovations in silicon photonics, including waveguide structures, photodetectors, optical transceivers, and associated driver circuit architectures.

OWS is the assignee and current owner by assignment of four United States utility patents asserted in this action (collectively, the "Patents-in-Suit"):

(a) U.S. Patent No. 10,234,567 ("the '567 Patent"), titled "Integrated Waveguide Coupler with Tapered Mode Converter for Silicon Photonics Platforms," filed March 14, 2017, and issued March 19, 2019. The '567 Patent is directed to novel waveguide coupler designs incorporating an adiabatically tapered mode converter that enables highly efficient optical coupling between silicon waveguides and external fibers on silicon photonics platforms, with particular application to reducing insertion losses in high-density interconnect environments.

(b) U.S. Patent No. 10,891,234 ("the '234 Patent"), titled "Germanium-on-Silicon Photodetector with Graded Buffer Layer for Enhanced Responsivity," filed September 8, 2017, and issued January 14, 2021. The '234 Patent is directed to a germanium-on-silicon photodetector architecture employing a graded buffer layer with a continuously varying germanium concentration profile, yielding enhanced responsivity and reduced dark current at telecommunications wavelengths relevant to high-speed data center applications.

(c) U.S. Patent No. 11,045,678 ("the '678 Patent"), titled "Multi-Channel Optical Transceiver with Integrated Wavelength-Division Multiplexing on Silicon," filed June 22, 2018, and issued June 29, 2021. The '678 Patent is directed to a multi-channel optical transceiver employing an integrated wavelength-division multiplexing element monolithically formed on a single silicon die, enabling compact, high-bandwidth optical transceiver modules suitable for 400G and 800G data center applications.

(d) U.S. Patent No. 11,312,890 ("the '890 Patent"), titled "Driver Circuit Architecture for High-Speed Silicon Photonic Mach-Zehnder Modulators," filed November 15, 2018, and issued April 26, 2022. The '890 Patent is directed to a driver circuit architecture incorporating a pre-emphasis equalization stage electrically co-integrated with a Mach-Zehnder modulator on a common substrate, enabling high-speed modulation at data rates exceeding 100 Gbaud per channel with reduced power consumption and improved signal fidelity.

OWS alleges that Lumos Photonics, Inc. ("Lumos") directly infringes and has induced and contributed to the infringement of these patents through its manufacture, use, sale, offer for sale, and/or importation into the United States of at least the following accused products: (1) the LumosBridge™ 800G Optical Engine (the "LumosBridge Product") and (2) the LumosEdge™ 400ZR+ Pluggable Transceiver (the "LumosEdge Product"). OWS contends that these products, and all substantially similar products, embody and practice the inventions claimed in the Patents-in-Suit.

OWS seeks the following relief:

(i) A judgment that Lumos has infringed and continues to infringe the Patents-in-Suit, both directly and indirectly;

(ii) Compensatory damages adequate to compensate OWS for Lumos's infringement, including a reasonable royalty under 35 U.S.C. § 284, in an amount to be proven at trial but believed to exceed $75,000,000;

(iii) Enhanced damages up to three times the amount of compensatory damages for Lumos's willful infringement pursuant to 35 U.S.C. § 284;

(iv) A permanent injunction prohibiting Lumos from further infringement of the Patents-in-Suit;

(v) Pre-judgment and post-judgment interest on any damages award;

(vi) A finding that this is an exceptional case and an award of attorneys' fees and costs pursuant to 35 U.S.C. § 285; and

(vii) Such other and further relief as this Court deems just and proper.

1.2 Defendant's Description

Lumos Photonics, Inc. ("Lumos") is a Delaware corporation headquartered at 9400 McNeil Drive, Building 7, Austin, Texas 78758. Lumos is an integrated device manufacturer of silicon photonics components for hyperscale data centers, co-packaged optics, and high-performance computing interconnects. Lumos designs, fabricates, tests, and sells a range of photonic integrated circuits and transceiver modules that are the product of Lumos's own independent research and development, which Lumos has conducted since its founding in 2014.

Lumos denies that it infringes any valid and enforceable claim of the Patents-in-Suit. Lumos denies that its LumosBridge™ 800G Optical Engine or LumosEdge™ 400ZR+ Pluggable Transceiver products practice any properly construed claim of the asserted patents, either literally or under the doctrine of equivalents. Lumos's products were independently developed by Lumos's engineering teams and incorporate proprietary architectures and designs that do not fall within the scope of any asserted claim.

Lumos has filed counterclaims in this action seeking declaratory judgments of non-infringement and invalidity of all four asserted patents under 35 U.S.C. §§ 102, 103, and 112. Lumos contends that the asserted patent claims are invalid as anticipated and/or obvious in light of the prior art, including published academic literature, issued patents, and publicly available industry standards pre-dating the filing dates of the Patents-in-Suit. Lumos further contends that certain claims of the Patents-in-Suit are invalid under 35 U.S.C. § 112 for failure to satisfy the written description and enablement requirements.

Lumos denies that any alleged infringement was willful and disputes OWS's entitlement to enhanced damages, injunctive relief, or attorneys' fees. Lumos further contends that OWS's damages theories are unsupported and grossly inflated, and Lumos will present its own evidence regarding the proper measure of any damages should liability be established, which Lumos denies.

2. JURISDICTIONAL STATEMENT

2.1 Subject Matter Jurisdiction

This Court has original subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338(a) because this action arises under the patent laws of the United States, Title 35 of the United States Code. Plaintiff's Complaint asserts claims for patent infringement under 35 U.S.C. § 271. Defendant's counterclaims for declaratory judgments of non-infringement and invalidity likewise arise under 35 U.S.C. § 1 et seq. Neither party disputes that this Court possesses subject matter jurisdiction over this dispute.

2.2 Personal Jurisdiction

Defendant Lumos Photonics, Inc. is subject to personal jurisdiction in California. Lumos is registered to transact business in the State of California and has maintained, at all times relevant to this action, a permanent sales office and engineering center at 4750 Great America Parkway, Suite 320, Santa Clara, California 95054, which is located within this judicial District. Lumos employs approximately forty-five (45) full-time personnel at this Santa Clara facility, including sales engineers, applications engineers, and field application support staff. Lumos generates approximately twenty-two percent (22%) of its total U.S. revenue from sales to customers headquartered in this District, including multiple hyperscale data center operators and cloud service providers with principal offices in Santa Clara County and San Mateo County.

For purposes of this Joint Case Management Statement, Lumos does not contest personal jurisdiction. However, Lumos expressly reserves any jurisdictional arguments not specifically waived in its Answer to the Complaint filed on July 29, 2022.

2.3 Venue. Venue is proper in this District under 28 U.S.C. § 1400(b). Lumos maintains a regular and established place of business in this District at 4750 Great America Parkway, Suite 320, Santa Clara, California 95054, where it conducts ongoing business operations, including sales activities, customer support, and engineering work related to silicon photonics products. Lumos has committed acts of alleged infringement in this District, including but not limited to the sale and offer for sale of the accused products to hyperscale data center customers headquartered in this District, as well as the demonstration and promotion of accused products at industry events held in this District. Neither party contests venue in this District.

3. FACTS NOT IN DISPUTE

The Parties agree on the following facts, which are not in dispute for purposes of this Joint Case Management Statement:

1. Plaintiff Optiwave Semiconductor Corp. is the assignee and current owner of the four United States utility patents asserted in this action: U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890.

2. Defendant Lumos Photonics, Inc. manufactures and sells the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver.

3. The LumosEdge™ 400ZR+ Pluggable Transceiver has been in commercial production and available for sale to customers since the third quarter of 2021 (Q3 2021).

4. The LumosBridge™ 800G Optical Engine was first shipped to customers in the first quarter of 2022 (Q1 2022).

5. Defendant Lumos Photonics, Inc. is a publicly traded company whose common stock is listed and traded on the Nasdaq Stock Market under the ticker symbol "LMPH."

6. Each of the four Patents-in-Suit is currently in force and has not expired. All required maintenance fees have been timely paid to the United States Patent and Trademark Office.

The foregoing stipulated facts are without prejudice to either Party's right to assert additional undisputed facts at later stages of this litigation, including in connection with any motion for summary judgment.

4. PRINCIPAL ISSUES IN DISPUTE

4.1 Claim Construction

The Parties anticipate that the construction of multiple claim terms across all four Patents-in-Suit will be dispositive or will significantly affect the merits of the Parties' infringement, invalidity, and damages positions. Claim construction is expected to be a central and contested aspect of this litigation.

Based on preliminary analysis conducted by both Parties, the Parties have identified the following as principal categories of disputed claim terms, without limitation and subject to the Parties' rights to identify additional disputed terms through the claim construction process set forth in the Patent Local Rules:

(a) '567 Patent: The term "adiabatically coupled" as used in the independent claims of the '567 Patent, and related terms describing the taper geometry and mode conversion characteristics of the claimed waveguide coupler structure.

(b) '234 Patent: The term "graded buffer layer having a continuously varying germanium concentration" as used in the independent claims of the '234 Patent, and related terms describing the compositional profile of the germanium-silicon transition layer in the claimed photodetector architecture.

(c) '678 Patent: The term "integrated wavelength-division multiplexing element monolithically formed on a single silicon die" as used in the independent claims of the '678 Patent, and related terms describing the integration methodology and optical demultiplexing functionality of the claimed multi-channel transceiver.

(d) '890 Patent: The term "pre-emphasis equalization stage electrically co-integrated with the modulator on a common substrate" as used in the independent claims of the '890 Patent, and related terms describing the electrical integration of the driver circuit and modulator components in the claimed high-speed modulator architecture.

The Parties anticipate a total of approximately eleven (11) disputed claim terms across the four Patents-in-Suit that may require construction by the Court. The Parties will identify and exchange their respective proposed claim constructions in accordance with the Patent Local Rules and the schedule set forth in Section 6.3 below. The Parties expect that both intrinsic evidence (patent claims, specifications, and prosecution histories) and extrinsic evidence (including expert testimony, technical dictionaries, and learned treatises) will be relevant to the construction of the disputed terms.

4.2 Infringement. Plaintiff OWS contends that Defendant Lumos's LumosBridge™ 800G Optical Engine and LumosEdge™ 400ZR+ Pluggable Transceiver products literally infringe, and in the alternative infringe under the doctrine of equivalents, the asserted claims of all four Patents-in-Suit. OWS intends to present detailed infringement analyses, including element-by-element claim charts, technical expert testimony, and product testing and teardown evidence, demonstrating that the accused products satisfy each and every limitation of the asserted claims.

Defendant Lumos denies that its accused products infringe any valid and enforceable claim of the Patents-in-Suit, either literally or under the doctrine of equivalents. Lumos contends that its products were independently developed and that they do not practice any properly construed claim of the asserted patents. Lumos intends to present detailed non-infringement analyses, technical evidence, and expert testimony in support of its defenses.

4.3 Invalidity. Defendant Lumos contends that the asserted claims of all four Patents-in-Suit are invalid under one or more of 35 U.S.C. §§ 102, 103, and 112. Lumos has asserted counterclaims for declaratory judgment of invalidity and intends to identify prior art references and present evidence demonstrating that the asserted claims are anticipated by and/or would have been obvious in light of the prior art, including published academic papers, issued United States and international patents, and publicly available industry standards and specifications that pre-date the priority dates of the Patents-in-Suit. Lumos further contends that certain claims are invalid for failure to meet the written description and/or enablement requirements of 35 U.S.C. § 112.

Plaintiff OWS denies that any claim of the Patents-in-Suit is invalid. OWS contends that each of the asserted claims is valid and enforceable and that the patents are entitled to a presumption of validity under 35 U.S.C. § 282. OWS will present evidence, including expert testimony, demonstrating that the prior art cited by Lumos does not anticipate or render obvious the asserted claims and that the patent specifications fully satisfy the requirements of 35 U.S.C. § 112.

4.4 Damages. Plaintiff OWS intends to seek compensatory damages based on a reasonable royalty theory under 35 U.S.C. § 284, utilizing a hypothetical negotiation framework consistent with Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), and its progeny. OWS also intends to seek enhanced damages under 35 U.S.C. § 284 for Lumos's alleged willful infringement, as well as pre-judgment and post-judgment interest. OWS believes that its total compensatory damages exceed $75,000,000, based on the volume of Lumos's infringing sales, the value of the patented technology to the accused products, and comparable license agreements in the silicon photonics industry.

Defendant Lumos disputes OWS's damages theories in their entirety. Lumos contends that OWS has not established any entitlement to damages because Lumos does not infringe any valid patent claim. In the alternative, Lumos contends that OWS's damages calculations are unsupported and grossly overstated, that the royalty base and royalty rate proposed by OWS fail to properly apportion the value attributable to the patented features (if any) as compared to the non-patented features of the accused products, and that the comparable licenses relied upon by OWS are distinguishable and unreliable. Lumos denies any entitlement to enhanced damages.

4.5 Willfulness. Plaintiff OWS alleges that Lumos's infringement has been willful and deliberate. OWS contends that Lumos had knowledge of the Patents-in-Suit prior to the filing of this action, including through OWS's cease-and-desist letter sent on March 15, 2022, and that Lumos continued to manufacture and sell the accused products despite such knowledge. OWS intends to seek enhanced damages up to three times the amount of compensatory damages based on the willfulness of Lumos's infringement, as authorized by 35 U.S.C. § 284 and the factors set forth in Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992).

Defendant Lumos denies that any alleged infringement was willful. Lumos contends that it had and continues to have a good-faith belief that it does not infringe any valid claim of the Patents-in-Suit and that this belief is objectively reasonable. Lumos further contends that OWS cannot establish the type of egregious, wanton, or bad-faith conduct necessary to support a finding of willfulness under Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), and its progeny.

5. RELATED CASES

The Parties have conducted a reasonable inquiry and are not aware of any related cases currently pending in this Court or in any other federal or state court that involve the same or substantially similar parties, claims, patents, or accused products as those at issue in this action. Neither Party is aware of any proceeding currently pending before the United States Patent and Trademark Office involving any of the four Patents-in-Suit, including any inter partes review, post-grant review, or ex parte reexamination proceeding.

The Parties will promptly notify the Court and opposing counsel if any related case or administrative proceeding is filed or otherwise comes to the attention of either Party during the pendency of this action.

6. PATENT LOCAL RULES COMPLIANCE AND CLAIM CONSTRUCTION SCHEDULE

6.1 Patent Local Rules

The Parties agree that the Northern District of California Patent Local Rules (effective January 1, 2017, as amended) apply to this action and govern the procedures for patent-specific disclosures, claim construction proceedings, and related matters. Both Parties are familiar with and will comply with the requirements of the Patent Local Rules, including without limitation Patent Local Rules 3-1 through 3-7 (relating to disclosure of asserted claims, infringement contentions, invalidity contentions, and document production) and Patent Local Rules 4-1 through 4-6 (relating to claim construction proceedings).

6.2 Initial Disclosures Under Patent Local Rules

The Parties exchanged initial disclosures pursuant to Federal Rule of Civil Procedure 26(a)(1) on August 22, 2022, in accordance with the requirements of the Federal Rules and the Court's Standing Order.

Plaintiff OWS will serve its Disclosure of Asserted Claims and Preliminary Infringement Contentions pursuant to Patent Local Rule 3-1 in accordance with the schedule set forth below. Defendant Lumos will serve its Preliminary Invalidity Contentions pursuant to Patent Local Rule 3-3 within the time prescribed by the Patent Local Rules following receipt of OWS's infringement contentions. The Parties will comply with the document production obligations set forth in Patent Local Rules 3-2 and 3-4 in accordance with the applicable deadlines.

6.3 Proposed Claim Construction Schedule

The Parties have met and conferred regarding a proposed schedule for claim construction proceedings and jointly propose the following dates for the Court's consideration and approval:

The Parties believe this proposed schedule provides adequate time for the exchange of claim construction positions, limited claim-construction-related discovery, and thorough briefing on the approximately eleven (11) disputed claim terms anticipated across the four Patents-in-Suit. The Parties request that the Court adopt this proposed schedule or, in the alternative, set an appropriate claim construction schedule that accommodates the complexity of the technical subject matter at issue.

7. DISCOVERY PLAN

7.1 Fact discovery

The Parties propose the following general framework for the conduct of fact discovery in this action, subject to further refinement through the meet-and-confer process and the Court's scheduling order:

Document discovery. The Parties anticipate that document requests pursuant to Federal Rule of Civil Procedure 34 will be served beginning in November 2022. The Parties expect that document discovery in this case will be extensive, given the technical nature of the subject matter, the number of patents asserted, and the range of issues in dispute (including infringement, invalidity, damages, and willfulness). Document requests are expected to encompass, among other categories, product design documentation, fabrication process records, testing data, engineering communications, sales and revenue data, licensing agreements, prior art references, and documents relating to the prosecution and acquisition of the Patents-in-Suit.

Interrogatories. The Parties anticipate that interrogatories pursuant to Federal Rule of Civil Procedure 33 will be served beginning in November 2022, addressing standard patent-case topics including the identification of prior art, the basis for infringement and non-infringement contentions, the identification of damages evidence, and the identification of relevant witnesses.

Depositions. Claim construction discovery depositions, including depositions of named inventors of the Patents-in-Suit, will be completed by October 31, 2022, in advance of claim construction briefing. Merits fact depositions, including depositions of party witnesses, corporate designees under Federal Rule of Civil Procedure 30(b)(6), and relevant third-party witnesses, will commence after the Markman hearing and will be conducted in accordance with the schedule to be set by the Court post-Markman.

Electronically Stored Information. The Parties anticipate that fact discovery will involve the collection, review, and production of substantial volumes of electronically stored information ("ESI"). The Parties will meet and confer in good faith regarding the development of an ESI protocol, including but not limited to the identification of custodians, the selection and application of search terms and technology-assisted review methodologies, the format of document production (including native file format and load file specifications), the handling of metadata, and the treatment of de-duplication. The Parties intend to submit any agreed-upon ESI protocol to the Court for approval.

7.2 Claim Construction discovery

The Parties agree that limited claim construction discovery will be conducted in advance of claim construction briefing. This discovery will include, at a minimum, depositions of the named inventors of the Patents-in-Suit and may include depositions of prosecution counsel, to the extent warranted and not barred by privilege. Claim construction discovery will close on October 31, 2022, as reflected in the proposed schedule set forth in Section 6.3 above.

The Parties will make reasonable efforts to coordinate the scheduling of inventor depositions and to minimize the burden on non-party inventor witnesses, to the extent any named inventors are no longer employed by OWS or Lumos. Both Parties reserve the right to present extrinsic evidence, including expert declarations, at the Markman hearing.

7.3 Expert discovery

Expert discovery will follow the schedule to be established by the Court after the Markman hearing. The Parties anticipate that expert discovery will include the following phases:

(a) Opening Expert Reports. Each Party will serve opening expert reports on issues for which that Party bears the burden of proof, including infringement (Plaintiff), invalidity (Defendant), and damages (both Parties).

(b) Rebuttal Expert Reports. Each Party will serve rebuttal expert reports responsive to the opposing Party's opening expert reports.

(c) Expert Depositions. Each Party will have the opportunity to depose the opposing Party's experts after the completion of expert report exchanges.

The Parties have identified the following retained experts and consulting experts to date:

Plaintiff OWS:

• Technical Expert: Whitfield Technical Consulting Group, Inc. OWS has retained Dr. Harold Whitfield, Ph.D., Professor Emeritus of Electrical and Computer Engineering at the University of California, Santa Barbara, as a technical expert on issues of infringement, validity, and claim construction. Dr. Whitfield has over thirty years of experience in silicon photonics research and has published extensively in the fields of integrated waveguide design, photodetector architectures, and optical transceiver systems.

• Damages Expert: Apex Claim Analytics LLC. OWS has retained Dr. Lawrence Kessler, Ph.D. in Economics, as a damages expert. Dr. Kessler specializes in the economic valuation of intellectual property, reasonable royalty calculations, and patent damages analysis.

Defendant Lumos:

• Damages Expert: Compass Forensic Accounting LLP. Lumos has retained Dr. Patricia Moreno, CPA, ABV, as a damages expert. Dr. Moreno specializes in forensic accounting, intellectual property valuation, and patent damages analysis.

• Technical Consultant: Lumos has engaged Dr. Raymond Ng as a technical consultant. Dr. Ng is expected to serve as a testifying expert on issues of non-infringement, invalidity, and claim construction. A formal retention as a testifying expert is anticipated following the Markman ruling.

The Parties will supplement their expert disclosures in accordance with Federal Rule of Civil Procedure 26(a)(2) and the Court's scheduling order.

7.4 Protective Order

The Parties recognize that this litigation will involve the disclosure of confidential and proprietary business information, trade secrets, technical data, and other sensitive materials belonging to both Parties and potentially to third parties. The Parties are currently preparing a Joint Stipulation and Proposed Order Regarding Stipulated Protective Order, which the Parties expect to finalize and submit to the Court for approval in September 2022.

The proposed protective order will include at least two tiers of confidentiality designation: (1) "CONFIDENTIAL" for information that is commercially sensitive or proprietary; and (2) "HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY" for the most sensitive information, including trade secrets, detailed product design specifications, source code, detailed financial data, and other information warranting the highest level of protection, which will be accessible only to outside counsel of record, their staff, and retained experts who have signed the appropriate undertaking.

The proposed protective order will also include a prosecution bar provision restricting individuals who receive access to HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY information from participating in the prosecution of patents or patent applications relating to the technology at issue in this litigation for a specified period of time. The Parties are in the process of negotiating the specific terms of the prosecution bar, including its scope and duration, and will present any unresolved disputes to the Court if necessary.

8. PROPOSED SCHEDULE FOR REMAINING PRETRIAL PROCEEDINGS

The Parties jointly propose the following overall case schedule for the Court's consideration and adoption, subject to modification by the Court as it deems appropriate:

The Parties respectfully request that the Court set the post-Markman schedule after issuance of the Court's claim construction order. The Parties believe this approach is appropriate because the Markman ruling may significantly affect the scope of remaining discovery, the Parties' infringement and invalidity positions, and the overall trajectory of the litigation. In the experience of counsel, it is common and efficient in patent cases of this complexity for the Court to establish the post-Markman schedule after the claim construction order issues, at which point the Parties will be better positioned to propose realistic and efficient deadlines for the remaining phases of the case.

The Parties will promptly confer following the issuance of the claim construction order and will submit a joint proposed post-Markman schedule for the Court's consideration within fourteen (14) days of the date the Court issues its claim construction ruling.

9. CONSENT TO MAGISTRATE JUDGE

The Parties do not consent to having this case tried before a United States Magistrate Judge pursuant to 28 U.S.C. § 636(c). The Parties request that this case remain assigned to the Honorable Edward J. Torvelis for all purposes, including trial.

10. ADR CONSIDERATIONS

10.1 Prior Settlement Discussions

Prior to the filing of this action, Plaintiff OWS, through its outside counsel Calderwood & Harkness LLP, sent a detailed cease-and-desist letter to Lumos on March 15, 2022, identifying the four Patents-in-Suit, providing preliminary infringement analyses for the accused LumosBridge™ and LumosEdge™ products, and demanding that Lumos cease its infringing activities and enter into a licensing arrangement with OWS. Defendant Lumos, through its outside counsel Brannick Howell & Stein LLP, responded to OWS's letter on April 4, 2022, denying infringement and asserting that the Patents-in-Suit are invalid in light of the prior art.

No settlement discussions, negotiations, or offers of compromise have taken place between the Parties beyond this pre-suit exchange of correspondence. No licensing proposals have been exchanged by the Parties.

10.2 ADR Willingness

Both Parties are willing to participate in alternative dispute resolution at an appropriate stage of the litigation. The Parties believe that the most productive time for settlement discussions, mediation, or a settlement conference would be after the Markman hearing and the issuance of the Court's claim construction order, when the Parties will be better positioned to evaluate the relative strengths and weaknesses of their respective positions on infringement and invalidity in light of the Court's construction of the disputed claim terms.

The Parties are amenable to participating in a settlement conference before a Magistrate Judge of this Court or, alternatively, in a private mediation before a mutually agreed-upon mediator with experience in patent litigation and familiarity with the silicon photonics or semiconductor technology sector. The Parties will confer regarding the selection of a mediator and proposed timing for mediation following the Markman hearing.

The Parties note that, under the Northern District of California's ADR program, this case is eligible for referral to a Magistrate Judge for a settlement conference. The Parties will comply with any ADR requirements established by the Court in its case management order.

11. OTHER MATTERS

11.1 Corporate Disclosure

Plaintiff Optiwave Semiconductor Corp. has filed a Corporate Disclosure Statement pursuant to Federal Rule of Civil Procedure 7.1. OWS discloses that Vantage Point Capital Partners Fund IV, LP holds approximately sixty-two percent (62%) of OWS's outstanding equity interests. No publicly held corporation owns ten percent (10%) or more of OWS's stock. OWS is a privately held Delaware corporation, and its shares are not listed or traded on any public stock exchange.

Defendant Lumos Photonics, Inc. has filed its own Corporate Disclosure Statement pursuant to Federal Rule of Civil Procedure 7.1. Lumos is a publicly traded Delaware corporation whose common stock is listed and traded on the Nasdaq Stock Market under the ticker symbol "LMPH." The largest institutional shareholder of Lumos is Ridgeline Asset Management, LLC, which holds approximately nine and two-tenths percent (9.2%) of Lumos's outstanding shares of common stock as of Lumos's most recent proxy statement. No other entity is known to hold ten percent (10%) or more of Lumos's outstanding shares.

11.2 Preservation of Evidence

Both Parties represent that they have issued litigation hold notices to all relevant custodians and are taking appropriate steps to identify, preserve, and collect potentially relevant documents and electronically stored information. Plaintiff OWS issued its initial litigation hold on or about January 10, 2022, in anticipation of this litigation. Defendant Lumos issued its initial litigation hold on or about April 1, 2022, following receipt of OWS's cease-and-desist letter. Both Parties have instructed their respective information technology departments and document custodians to suspend routine document destruction protocols with respect to materials potentially relevant to this action.

The Parties will cooperate in good faith to address any preservation issues that may arise during the course of discovery and will promptly notify the Court and opposing counsel of any material preservation concerns.

11.3 Number of Patents and Accused Products

Four (4) United States utility patents are asserted in this action: U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890.

Two (2) accused product lines are at issue: (1) the LumosBridge™ 800G Optical Engine, and (2) the LumosEdge™ 400ZR+ Pluggable Transceiver. To the extent Lumos manufactures, sells, or offers for sale other products that are substantially similar to the accused products and that practice the claims of the Patents-in-Suit, OWS reserves the right to identify such additional accused products in its infringement contentions pursuant to the Patent Local Rules.

11.4 Estimated Length of Trial

Based on the number of patents asserted, the number of accused products, and the range of issues in dispute (including claim construction, infringement, invalidity, damages, willfulness, and equitable defenses), the Parties estimate that trial of this matter would require approximately seven to ten (7–10) court days, inclusive of jury selection (if applicable), opening statements, presentation of evidence by both Parties, closing arguments, and jury instructions. This estimate is subject to revision as the case develops and the scope of trial issues becomes more defined following the Markman hearing and any dispositive motion practice.

The Parties respectfully submit this Joint Case Management Statement and request that the Court consider the proposals set forth herein at the Initial Case Management Conference scheduled for August 15, 2022.

Dated: August 12, 2022

For Plaintiff Optiwave Semiconductor Corp.:

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (State Bar No. 248316; USPTO Reg. No. 52,871) Omar Siddiqui (State Bar No. 291704) One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 773-5800 Facsimile: (415) 773-5801

Email: ango@calderwoodharkness.com

Email: osiddiqui@calderwoodharkness.com

Attorneys for Plaintiff Optiwave Semiconductor Corp.

For Defendant Lumos Photonics, Inc.:

BRANNICK HOWELL & STEIN LLP

By: ________

Victoria Ashworth (State Bar No. 264589) Daniel Kowalski (State Bar No. 278143) 555 California Street, Suite 2800 San Francisco, California 94104 Telephone: (415) 421-3200 Facsimile: (415) 421-3201

Email: vashworth@brannickhowell.com

Email: dkowalski@brannickhowell.com

Attorneys for Defendant Lumos Photonics, Inc.

CERTIFICATE OF SERVICE

I hereby certify that on August 12, 2022, I caused the foregoing JOINT CASE MANAGEMENT STATEMENT to be filed with the Clerk of the Court using the CM/ECF system, which will send notification of such filing to all counsel of record who are registered CM/ECF users. All counsel of record in this action are registered CM/ECF users, and service was accomplished by the electronic filing of this document.

By: ________

Alan Ngo CALDERWOOD & HARKNESS LLP Attorneys for Plaintiff Optiwave Semiconductor Corp.

OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation,	Case No. 5:22-cv-03417-EJD
Plaintiff,	JOINT CASE MANAGEMENT STATEMENT
v.	Filed pursuant to Civil Local Rule 16-2
LUMOS PHOTONICS, INC., a Delaware corporation,	Date: August 15, 2022

Time: 10:00 a.m.

Defendant.

Judge: Hon. Edward J. Torvelis

Event	Proposed Date
Exchange of Preliminary Claim Construction Contentions (Patent L.R. 4-1)	September 12, 2022
Exchange of Responsive Claim Construction Contentions (Patent L.R. 4-2)	October 3, 2022
Joint Claim Construction and Prehearing Statement (Patent L.R. 4-3)	October 14, 2022
Close of Claim-Construction-Related discovery	October 31, 2022
Opening Claim Construction Briefs	December 5, 2022
Responsive Claim Construction Briefs	December 19, 2022
Reply Claim Construction Briefs	January 9, 2023
Markman Hearing	January 30, 2023
Event	Proposed Date
Initial Disclosures (FRCP 26(a)(1))	August 22, 2022 (completed)
Disclosure of Asserted Claims and Infringement Contentions (Patent L.R. 3-1)	Per Patent Local Rules
Preliminary Invalidity Contentions (Patent L.R. 3-3)	Per Patent Local Rules
Claim Construction Schedule	Per Section 6.3 above
Markman Hearing	January 30, 2023
Close of Fact discovery	To be set by the Court post-Markman
Service of Opening Expert Reports	To be set by the Court post-Markman
Service of Rebuttal Expert Reports	To be set by the Court post-Markman
Completion of Expert Depositions	To be set by the Court post-Markman
Deadline for Filing Dispositive Motions	To be set by the Court post-Markman
Pretrial Conference	To be set by the Court
Trial	To be set by the Court

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
Pursuant to Civil Local Rule 16-2 and the Court's Standing Order for Initial Case Management Conferences, Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") and Defendant Lumos Photonics, Inc. ("Lumos" or "Defendant") (collectively, the "Parties") hereby jointly submit this Case Management Statement in advance of the Initial Case Management Conference scheduled for August 15, 2022, before the Honorable Edward J. Torvelis.
This Joint Case Management Statement is submitted by:
For Plaintiff Optiwave Semiconductor Corp.:
Alan Ngo (USPTO Reg. No. 52,871) and Omar Siddiqui, Calderwood & Harkness LLP, One Embarcadero Center, 34th Floor, San Francisco, CA 94111 — Counsel for Plaintiff Optiwave Semiconductor Corp.
For Defendant Lumos Photonics, Inc.:
Victoria Ashworth and Daniel Kowalski, Brannick Howell & Stein LLP, 555 California Street, Suite 2800, San Francisco, CA 94104 — Counsel for Defendant Lumos Photonics, Inc.
1. DESCRIPTION OF THE CASE AND RELIEF SOUGHT
1.1 Plaintiff's Description
Optiwave Semiconductor Corp. ("OWS") is a Delaware corporation headquartered at 2775 Augustine Drive, Suite 400, San Jose, California 95054. OWS is a fabless semiconductor design company specializing in the design and development of silicon photonics integrated circuits for data center interconnects and telecommunications applications. Since its founding in 2009, OWS has invested hundreds of millions of dollars in research and development and has assembled a substantial portfolio of United States and international patents directed to innovations in silicon photonics, including waveguide structures, photodetectors, optical transceivers, and associated driver circuit architectures.
OWS is the assignee and current owner by assignment of four United States utility patents asserted in this action (collectively, the "Patents-in-Suit"):
(a) U.S. Patent No. 10,234,567 ("the '567 Patent"), titled "Integrated Waveguide Coupler with Tapered Mode Converter for Silicon Photonics Platforms," filed March 14, 2017, and issued March 19, 2019. The '567 Patent is directed to novel waveguide coupler designs incorporating an adiabatically tapered mode converter that enables highly efficient optical coupling between silicon waveguides and external fibers on silicon photonics platforms, with particular application to reducing insertion losses in high-density interconnect environments.
(b) U.S. Patent No. 10,891,234 ("the '234 Patent"), titled "Germanium-on-Silicon Photodetector with Graded Buffer Layer for Enhanced Responsivity," filed September 8, 2017, and issued January 14, 2021. The '234 Patent is directed to a germanium-on-silicon photodetector architecture employing a graded buffer layer with a continuously varying germanium concentration profile, yielding enhanced responsivity and reduced dark current at telecommunications wavelengths relevant to high-speed data center applications.
(c) U.S. Patent No. 11,045,678 ("the '678 Patent"), titled "Multi-Channel Optical Transceiver with Integrated Wavelength-Division Multiplexing on Silicon," filed June 22, 2018, and issued June 29, 2021. The '678 Patent is directed to a multi-channel optical transceiver employing an integrated wavelength-division multiplexing element monolithically formed on a single silicon die, enabling compact, high-bandwidth optical transceiver modules suitable for 400G and 800G data center applications.
(d) U.S. Patent No. 11,312,890 ("the '890 Patent"), titled "Driver Circuit Architecture for High-Speed Silicon Photonic Mach-Zehnder Modulators," filed November 15, 2018, and issued April 26, 2022. The '890 Patent is directed to a driver circuit architecture incorporating a pre-emphasis equalization stage electrically co-integrated with a Mach-Zehnder modulator on a common substrate, enabling high-speed modulation at data rates exceeding 100 Gbaud per channel with reduced power consumption and improved signal fidelity.
OWS alleges that Lumos Photonics, Inc. ("Lumos") directly infringes and has induced and contributed to the infringement of these patents through its manufacture, use, sale, offer for sale, and/or importation into the United States of at least the following accused products: (1) the LumosBridge™ 800G Optical Engine (the "LumosBridge Product") and (2) the LumosEdge™ 400ZR+ Pluggable Transceiver (the "LumosEdge Product"). OWS contends that these products, and all substantially similar products, embody and practice the inventions claimed in the Patents-in-Suit.
OWS seeks the following relief:
(i) A judgment that Lumos has infringed and continues to infringe the Patents-in-Suit, both directly and indirectly;
(ii) Compensatory damages adequate to compensate OWS for Lumos's infringement, including a reasonable royalty under 35 U.S.C. § 284, in an amount to be proven at trial but believed to exceed $75,000,000;
(iii) Enhanced damages up to three times the amount of compensatory damages for Lumos's willful infringement pursuant to 35 U.S.C. § 284;
(iv) A permanent injunction prohibiting Lumos from further infringement of the Patents-in-Suit;
(v) Pre-judgment and post-judgment interest on any damages award;
(vi) A finding that this is an exceptional case and an award of attorneys' fees and costs pursuant to 35 U.S.C. § 285; and
(vii) Such other and further relief as this Court deems just and proper.
1.2 Defendant's Description
Lumos Photonics, Inc. ("Lumos") is a Delaware corporation headquartered at 9400 McNeil Drive, Building 7, Austin, Texas 78758. Lumos is an integrated device manufacturer of silicon photonics components for hyperscale data centers, co-packaged optics, and high-performance computing interconnects. Lumos designs, fabricates, tests, and sells a range of photonic integrated circuits and transceiver modules that are the product of Lumos's own independent research and development, which Lumos has conducted since its founding in 2014.
Lumos denies that it infringes any valid and enforceable claim of the Patents-in-Suit. Lumos denies that its LumosBridge™ 800G Optical Engine or LumosEdge™ 400ZR+ Pluggable Transceiver products practice any properly construed claim of the asserted patents, either literally or under the doctrine of equivalents. Lumos's products were independently developed by Lumos's engineering teams and incorporate proprietary architectures and designs that do not fall within the scope of any asserted claim.
Lumos has filed counterclaims in this action seeking declaratory judgments of non-infringement and invalidity of all four asserted patents under 35 U.S.C. §§ 102, 103, and 112. Lumos contends that the asserted patent claims are invalid as anticipated and/or obvious in light of the prior art, including published academic literature, issued patents, and publicly available industry standards pre-dating the filing dates of the Patents-in-Suit. Lumos further contends that certain claims of the Patents-in-Suit are invalid under 35 U.S.C. § 112 for failure to satisfy the written description and enablement requirements.
Lumos denies that any alleged infringement was willful and disputes OWS's entitlement to enhanced damages, injunctive relief, or attorneys' fees. Lumos further contends that OWS's damages theories are unsupported and grossly inflated, and Lumos will present its own evidence regarding the proper measure of any damages should liability be established, which Lumos denies.
2. JURISDICTIONAL STATEMENT
2.1 Subject Matter Jurisdiction
This Court has original subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338(a) because this action arises under the patent laws of the United States, Title 35 of the United States Code. Plaintiff's Complaint asserts claims for patent infringement under 35 U.S.C. § 271. Defendant's counterclaims for declaratory judgments of non-infringement and invalidity likewise arise under 35 U.S.C. § 1 et seq. Neither party disputes that this Court possesses subject matter jurisdiction over this dispute.
2.2 Personal Jurisdiction
Defendant Lumos Photonics, Inc. is subject to personal jurisdiction in California. Lumos is registered to transact business in the State of California and has maintained, at all times relevant to this action, a permanent sales office and engineering center at 4750 Great America Parkway, Suite 320, Santa Clara, California 95054, which is located within this judicial District. Lumos employs approximately forty-five (45) full-time personnel at this Santa Clara facility, including sales engineers, applications engineers, and field application support staff. Lumos generates approximately twenty-two percent (22%) of its total U.S. revenue from sales to customers headquartered in this District, including multiple hyperscale data center operators and cloud service providers with principal offices in Santa Clara County and San Mateo County.
For purposes of this Joint Case Management Statement, Lumos does not contest personal jurisdiction. However, Lumos expressly reserves any jurisdictional arguments not specifically waived in its Answer to the Complaint filed on July 29, 2022.
2.3 Venue. Venue is proper in this District under 28 U.S.C. § 1400(b). Lumos maintains a regular and established place of business in this District at 4750 Great America Parkway, Suite 320, Santa Clara, California 95054, where it conducts ongoing business operations, including sales activities, customer support, and engineering work related to silicon photonics products. Lumos has committed acts of alleged infringement in this District, including but not limited to the sale and offer for sale of the accused products to hyperscale data center customers headquartered in this District, as well as the demonstration and promotion of accused products at industry events held in this District. Neither party contests venue in this District.
3. FACTS NOT IN DISPUTE
The Parties agree on the following facts, which are not in dispute for purposes of this Joint Case Management Statement:
1. Plaintiff Optiwave Semiconductor Corp. is the assignee and current owner of the four United States utility patents asserted in this action: U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890.
2. Defendant Lumos Photonics, Inc. manufactures and sells the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver.
3. The LumosEdge™ 400ZR+ Pluggable Transceiver has been in commercial production and available for sale to customers since the third quarter of 2021 (Q3 2021).
4. The LumosBridge™ 800G Optical Engine was first shipped to customers in the first quarter of 2022 (Q1 2022).
5. Defendant Lumos Photonics, Inc. is a publicly traded company whose common stock is listed and traded on the Nasdaq Stock Market under the ticker symbol "LMPH."
6. Each of the four Patents-in-Suit is currently in force and has not expired. All required maintenance fees have been timely paid to the United States Patent and Trademark Office.
The foregoing stipulated facts are without prejudice to either Party's right to assert additional undisputed facts at later stages of this litigation, including in connection with any motion for summary judgment.
4. PRINCIPAL ISSUES IN DISPUTE
4.1 Claim Construction
The Parties anticipate that the construction of multiple claim terms across all four Patents-in-Suit will be dispositive or will significantly affect the merits of the Parties' infringement, invalidity, and damages positions. Claim construction is expected to be a central and contested aspect of this litigation.
Based on preliminary analysis conducted by both Parties, the Parties have identified the following as principal categories of disputed claim terms, without limitation and subject to the Parties' rights to identify additional disputed terms through the claim construction process set forth in the Patent Local Rules:
(a) '567 Patent: The term "adiabatically coupled" as used in the independent claims of the '567 Patent, and related terms describing the taper geometry and mode conversion characteristics of the claimed waveguide coupler structure.
(b) '234 Patent: The term "graded buffer layer having a continuously varying germanium concentration" as used in the independent claims of the '234 Patent, and related terms describing the compositional profile of the germanium-silicon transition layer in the claimed photodetector architecture.
(c) '678 Patent: The term "integrated wavelength-division multiplexing element monolithically formed on a single silicon die" as used in the independent claims of the '678 Patent, and related terms describing the integration methodology and optical demultiplexing functionality of the claimed multi-channel transceiver.
(d) '890 Patent: The term "pre-emphasis equalization stage electrically co-integrated with the modulator on a common substrate" as used in the independent claims of the '890 Patent, and related terms describing the electrical integration of the driver circuit and modulator components in the claimed high-speed modulator architecture.
The Parties anticipate a total of approximately eleven (11) disputed claim terms across the four Patents-in-Suit that may require construction by the Court. The Parties will identify and exchange their respective proposed claim constructions in accordance with the Patent Local Rules and the schedule set forth in Section 6.3 below. The Parties expect that both intrinsic evidence (patent claims, specifications, and prosecution histories) and extrinsic evidence (including expert testimony, technical dictionaries, and learned treatises) will be relevant to the construction of the disputed terms.
4.2 Infringement. Plaintiff OWS contends that Defendant Lumos's LumosBridge™ 800G Optical Engine and LumosEdge™ 400ZR+ Pluggable Transceiver products literally infringe, and in the alternative infringe under the doctrine of equivalents, the asserted claims of all four Patents-in-Suit. OWS intends to present detailed infringement analyses, including element-by-element claim charts, technical expert testimony, and product testing and teardown evidence, demonstrating that the accused products satisfy each and every limitation of the asserted claims.
Defendant Lumos denies that its accused products infringe any valid and enforceable claim of the Patents-in-Suit, either literally or under the doctrine of equivalents. Lumos contends that its products were independently developed and that they do not practice any properly construed claim of the asserted patents. Lumos intends to present detailed non-infringement analyses, technical evidence, and expert testimony in support of its defenses.
4.3 Invalidity. Defendant Lumos contends that the asserted claims of all four Patents-in-Suit are invalid under one or more of 35 U.S.C. §§ 102, 103, and 112. Lumos has asserted counterclaims for declaratory judgment of invalidity and intends to identify prior art references and present evidence demonstrating that the asserted claims are anticipated by and/or would have been obvious in light of the prior art, including published academic papers, issued United States and international patents, and publicly available industry standards and specifications that pre-date the priority dates of the Patents-in-Suit. Lumos further contends that certain claims are invalid for failure to meet the written description and/or enablement requirements of 35 U.S.C. § 112.
Plaintiff OWS denies that any claim of the Patents-in-Suit is invalid. OWS contends that each of the asserted claims is valid and enforceable and that the patents are entitled to a presumption of validity under 35 U.S.C. § 282. OWS will present evidence, including expert testimony, demonstrating that the prior art cited by Lumos does not anticipate or render obvious the asserted claims and that the patent specifications fully satisfy the requirements of 35 U.S.C. § 112.
4.4 Damages. Plaintiff OWS intends to seek compensatory damages based on a reasonable royalty theory under 35 U.S.C. § 284, utilizing a hypothetical negotiation framework consistent with Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), and its progeny. OWS also intends to seek enhanced damages under 35 U.S.C. § 284 for Lumos's alleged willful infringement, as well as pre-judgment and post-judgment interest. OWS believes that its total compensatory damages exceed $75,000,000, based on the volume of Lumos's infringing sales, the value of the patented technology to the accused products, and comparable license agreements in the silicon photonics industry.
Defendant Lumos disputes OWS's damages theories in their entirety. Lumos contends that OWS has not established any entitlement to damages because Lumos does not infringe any valid patent claim. In the alternative, Lumos contends that OWS's damages calculations are unsupported and grossly overstated, that the royalty base and royalty rate proposed by OWS fail to properly apportion the value attributable to the patented features (if any) as compared to the non-patented features of the accused products, and that the comparable licenses relied upon by OWS are distinguishable and unreliable. Lumos denies any entitlement to enhanced damages.
4.5 Willfulness. Plaintiff OWS alleges that Lumos's infringement has been willful and deliberate. OWS contends that Lumos had knowledge of the Patents-in-Suit prior to the filing of this action, including through OWS's cease-and-desist letter sent on March 15, 2022, and that Lumos continued to manufacture and sell the accused products despite such knowledge. OWS intends to seek enhanced damages up to three times the amount of compensatory damages based on the willfulness of Lumos's infringement, as authorized by 35 U.S.C. § 284 and the factors set forth in Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992).
Defendant Lumos denies that any alleged infringement was willful. Lumos contends that it had and continues to have a good-faith belief that it does not infringe any valid claim of the Patents-in-Suit and that this belief is objectively reasonable. Lumos further contends that OWS cannot establish the type of egregious, wanton, or bad-faith conduct necessary to support a finding of willfulness under Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), and its progeny.
5. RELATED CASES
The Parties have conducted a reasonable inquiry and are not aware of any related cases currently pending in this Court or in any other federal or state court that involve the same or substantially similar parties, claims, patents, or accused products as those at issue in this action. Neither Party is aware of any proceeding currently pending before the United States Patent and Trademark Office involving any of the four Patents-in-Suit, including any inter partes review, post-grant review, or ex parte reexamination proceeding.
The Parties will promptly notify the Court and opposing counsel if any related case or administrative proceeding is filed or otherwise comes to the attention of either Party during the pendency of this action.
6. PATENT LOCAL RULES COMPLIANCE AND CLAIM CONSTRUCTION SCHEDULE
6.1 Patent Local Rules
The Parties agree that the Northern District of California Patent Local Rules (effective January 1, 2017, as amended) apply to this action and govern the procedures for patent-specific disclosures, claim construction proceedings, and related matters. Both Parties are familiar with and will comply with the requirements of the Patent Local Rules, including without limitation Patent Local Rules 3-1 through 3-7 (relating to disclosure of asserted claims, infringement contentions, invalidity contentions, and document production) and Patent Local Rules 4-1 through 4-6 (relating to claim construction proceedings).
6.2 Initial Disclosures Under Patent Local Rules
The Parties exchanged initial disclosures pursuant to Federal Rule of Civil Procedure 26(a)(1) on August 22, 2022, in accordance with the requirements of the Federal Rules and the Court's Standing Order.
Plaintiff OWS will serve its Disclosure of Asserted Claims and Preliminary Infringement Contentions pursuant to Patent Local Rule 3-1 in accordance with the schedule set forth below. Defendant Lumos will serve its Preliminary Invalidity Contentions pursuant to Patent Local Rule 3-3 within the time prescribed by the Patent Local Rules following receipt of OWS's infringement contentions. The Parties will comply with the document production obligations set forth in Patent Local Rules 3-2 and 3-4 in accordance with the applicable deadlines.
6.3 Proposed Claim Construction Schedule
The Parties have met and conferred regarding a proposed schedule for claim construction proceedings and jointly propose the following dates for the Court's consideration and approval:
The Parties believe this proposed schedule provides adequate time for the exchange of claim construction positions, limited claim-construction-related discovery, and thorough briefing on the approximately eleven (11) disputed claim terms anticipated across the four Patents-in-Suit. The Parties request that the Court adopt this proposed schedule or, in the alternative, set an appropriate claim construction schedule that accommodates the complexity of the technical subject matter at issue.
7. DISCOVERY PLAN
7.1 Fact discovery
The Parties propose the following general framework for the conduct of fact discovery in this action, subject to further refinement through the meet-and-confer process and the Court's scheduling order:
Document discovery. The Parties anticipate that document requests pursuant to Federal Rule of Civil Procedure 34 will be served beginning in November 2022. The Parties expect that document discovery in this case will be extensive, given the technical nature of the subject matter, the number of patents asserted, and the range of issues in dispute (including infringement, invalidity, damages, and willfulness). Document requests are expected to encompass, among other categories, product design documentation, fabrication process records, testing data, engineering communications, sales and revenue data, licensing agreements, prior art references, and documents relating to the prosecution and acquisition of the Patents-in-Suit.
Interrogatories. The Parties anticipate that interrogatories pursuant to Federal Rule of Civil Procedure 33 will be served beginning in November 2022, addressing standard patent-case topics including the identification of prior art, the basis for infringement and non-infringement contentions, the identification of damages evidence, and the identification of relevant witnesses.
Depositions. Claim construction discovery depositions, including depositions of named inventors of the Patents-in-Suit, will be completed by October 31, 2022, in advance of claim construction briefing. Merits fact depositions, including depositions of party witnesses, corporate designees under Federal Rule of Civil Procedure 30(b)(6), and relevant third-party witnesses, will commence after the Markman hearing and will be conducted in accordance with the schedule to be set by the Court post-Markman.
Electronically Stored Information. The Parties anticipate that fact discovery will involve the collection, review, and production of substantial volumes of electronically stored information ("ESI"). The Parties will meet and confer in good faith regarding the development of an ESI protocol, including but not limited to the identification of custodians, the selection and application of search terms and technology-assisted review methodologies, the format of document production (including native file format and load file specifications), the handling of metadata, and the treatment of de-duplication. The Parties intend to submit any agreed-upon ESI protocol to the Court for approval.
7.2 Claim Construction discovery
The Parties agree that limited claim construction discovery will be conducted in advance of claim construction briefing. This discovery will include, at a minimum, depositions of the named inventors of the Patents-in-Suit and may include depositions of prosecution counsel, to the extent warranted and not barred by privilege. Claim construction discovery will close on October 31, 2022, as reflected in the proposed schedule set forth in Section 6.3 above.
The Parties will make reasonable efforts to coordinate the scheduling of inventor depositions and to minimize the burden on non-party inventor witnesses, to the extent any named inventors are no longer employed by OWS or Lumos. Both Parties reserve the right to present extrinsic evidence, including expert declarations, at the Markman hearing.
7.3 Expert discovery
Expert discovery will follow the schedule to be established by the Court after the Markman hearing. The Parties anticipate that expert discovery will include the following phases:
(a) Opening Expert Reports. Each Party will serve opening expert reports on issues for which that Party bears the burden of proof, including infringement (Plaintiff), invalidity (Defendant), and damages (both Parties).
(b) Rebuttal Expert Reports. Each Party will serve rebuttal expert reports responsive to the opposing Party's opening expert reports.
(c) Expert Depositions. Each Party will have the opportunity to depose the opposing Party's experts after the completion of expert report exchanges.
The Parties have identified the following retained experts and consulting experts to date:
Plaintiff OWS:
• Technical Expert: Whitfield Technical Consulting Group, Inc. OWS has retained Dr. Harold Whitfield, Ph.D., Professor Emeritus of Electrical and Computer Engineering at the University of California, Santa Barbara, as a technical expert on issues of infringement, validity, and claim construction. Dr. Whitfield has over thirty years of experience in silicon photonics research and has published extensively in the fields of integrated waveguide design, photodetector architectures, and optical transceiver systems.
• Damages Expert: Apex Claim Analytics LLC. OWS has retained Dr. Lawrence Kessler, Ph.D. in Economics, as a damages expert. Dr. Kessler specializes in the economic valuation of intellectual property, reasonable royalty calculations, and patent damages analysis.
Defendant Lumos:
• Damages Expert: Compass Forensic Accounting LLP. Lumos has retained Dr. Patricia Moreno, CPA, ABV, as a damages expert. Dr. Moreno specializes in forensic accounting, intellectual property valuation, and patent damages analysis.
• Technical Consultant: Lumos has engaged Dr. Raymond Ng as a technical consultant. Dr. Ng is expected to serve as a testifying expert on issues of non-infringement, invalidity, and claim construction. A formal retention as a testifying expert is anticipated following the Markman ruling.
The Parties will supplement their expert disclosures in accordance with Federal Rule of Civil Procedure 26(a)(2) and the Court's scheduling order.
7.4 Protective Order
The Parties recognize that this litigation will involve the disclosure of confidential and proprietary business information, trade secrets, technical data, and other sensitive materials belonging to both Parties and potentially to third parties. The Parties are currently preparing a Joint Stipulation and Proposed Order Regarding Stipulated Protective Order, which the Parties expect to finalize and submit to the Court for approval in September 2022.
The proposed protective order will include at least two tiers of confidentiality designation: (1) "CONFIDENTIAL" for information that is commercially sensitive or proprietary; and (2) "HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY" for the most sensitive information, including trade secrets, detailed product design specifications, source code, detailed financial data, and other information warranting the highest level of protection, which will be accessible only to outside counsel of record, their staff, and retained experts who have signed the appropriate undertaking.
The proposed protective order will also include a prosecution bar provision restricting individuals who receive access to HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY information from participating in the prosecution of patents or patent applications relating to the technology at issue in this litigation for a specified period of time. The Parties are in the process of negotiating the specific terms of the prosecution bar, including its scope and duration, and will present any unresolved disputes to the Court if necessary.
8. PROPOSED SCHEDULE FOR REMAINING PRETRIAL PROCEEDINGS
The Parties jointly propose the following overall case schedule for the Court's consideration and adoption, subject to modification by the Court as it deems appropriate:
The Parties respectfully request that the Court set the post-Markman schedule after issuance of the Court's claim construction order. The Parties believe this approach is appropriate because the Markman ruling may significantly affect the scope of remaining discovery, the Parties' infringement and invalidity positions, and the overall trajectory of the litigation. In the experience of counsel, it is common and efficient in patent cases of this complexity for the Court to establish the post-Markman schedule after the claim construction order issues, at which point the Parties will be better positioned to propose realistic and efficient deadlines for the remaining phases of the case.
The Parties will promptly confer following the issuance of the claim construction order and will submit a joint proposed post-Markman schedule for the Court's consideration within fourteen (14) days of the date the Court issues its claim construction ruling.
9. CONSENT TO MAGISTRATE JUDGE
The Parties do not consent to having this case tried before a United States Magistrate Judge pursuant to 28 U.S.C. § 636(c). The Parties request that this case remain assigned to the Honorable Edward J. Torvelis for all purposes, including trial.
10. ADR CONSIDERATIONS
10.1 Prior Settlement Discussions
Prior to the filing of this action, Plaintiff OWS, through its outside counsel Calderwood & Harkness LLP, sent a detailed cease-and-desist letter to Lumos on March 15, 2022, identifying the four Patents-in-Suit, providing preliminary infringement analyses for the accused LumosBridge™ and LumosEdge™ products, and demanding that Lumos cease its infringing activities and enter into a licensing arrangement with OWS. Defendant Lumos, through its outside counsel Brannick Howell & Stein LLP, responded to OWS's letter on April 4, 2022, denying infringement and asserting that the Patents-in-Suit are invalid in light of the prior art.
No settlement discussions, negotiations, or offers of compromise have taken place between the Parties beyond this pre-suit exchange of correspondence. No licensing proposals have been exchanged by the Parties.
10.2 ADR Willingness
Both Parties are willing to participate in alternative dispute resolution at an appropriate stage of the litigation. The Parties believe that the most productive time for settlement discussions, mediation, or a settlement conference would be after the Markman hearing and the issuance of the Court's claim construction order, when the Parties will be better positioned to evaluate the relative strengths and weaknesses of their respective positions on infringement and invalidity in light of the Court's construction of the disputed claim terms.
The Parties are amenable to participating in a settlement conference before a Magistrate Judge of this Court or, alternatively, in a private mediation before a mutually agreed-upon mediator with experience in patent litigation and familiarity with the silicon photonics or semiconductor technology sector. The Parties will confer regarding the selection of a mediator and proposed timing for mediation following the Markman hearing.
The Parties note that, under the Northern District of California's ADR program, this case is eligible for referral to a Magistrate Judge for a settlement conference. The Parties will comply with any ADR requirements established by the Court in its case management order.
11. OTHER MATTERS
11.1 Corporate Disclosure
Plaintiff Optiwave Semiconductor Corp. has filed a Corporate Disclosure Statement pursuant to Federal Rule of Civil Procedure 7.1. OWS discloses that Vantage Point Capital Partners Fund IV, LP holds approximately sixty-two percent (62%) of OWS's outstanding equity interests. No publicly held corporation owns ten percent (10%) or more of OWS's stock. OWS is a privately held Delaware corporation, and its shares are not listed or traded on any public stock exchange.
Defendant Lumos Photonics, Inc. has filed its own Corporate Disclosure Statement pursuant to Federal Rule of Civil Procedure 7.1. Lumos is a publicly traded Delaware corporation whose common stock is listed and traded on the Nasdaq Stock Market under the ticker symbol "LMPH." The largest institutional shareholder of Lumos is Ridgeline Asset Management, LLC, which holds approximately nine and two-tenths percent (9.2%) of Lumos's outstanding shares of common stock as of Lumos's most recent proxy statement. No other entity is known to hold ten percent (10%) or more of Lumos's outstanding shares.
11.2 Preservation of Evidence
Both Parties represent that they have issued litigation hold notices to all relevant custodians and are taking appropriate steps to identify, preserve, and collect potentially relevant documents and electronically stored information. Plaintiff OWS issued its initial litigation hold on or about January 10, 2022, in anticipation of this litigation. Defendant Lumos issued its initial litigation hold on or about April 1, 2022, following receipt of OWS's cease-and-desist letter. Both Parties have instructed their respective information technology departments and document custodians to suspend routine document destruction protocols with respect to materials potentially relevant to this action.
The Parties will cooperate in good faith to address any preservation issues that may arise during the course of discovery and will promptly notify the Court and opposing counsel of any material preservation concerns.
11.3 Number of Patents and Accused Products
Four (4) United States utility patents are asserted in this action: U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890.
Two (2) accused product lines are at issue: (1) the LumosBridge™ 800G Optical Engine, and (2) the LumosEdge™ 400ZR+ Pluggable Transceiver. To the extent Lumos manufactures, sells, or offers for sale other products that are substantially similar to the accused products and that practice the claims of the Patents-in-Suit, OWS reserves the right to identify such additional accused products in its infringement contentions pursuant to the Patent Local Rules.
11.4 Estimated Length of Trial
Based on the number of patents asserted, the number of accused products, and the range of issues in dispute (including claim construction, infringement, invalidity, damages, willfulness, and equitable defenses), the Parties estimate that trial of this matter would require approximately seven to ten (7–10) court days, inclusive of jury selection (if applicable), opening statements, presentation of evidence by both Parties, closing arguments, and jury instructions. This estimate is subject to revision as the case develops and the scope of trial issues becomes more defined following the Markman hearing and any dispositive motion practice.
The Parties respectfully submit this Joint Case Management Statement and request that the Court consider the proposals set forth herein at the Initial Case Management Conference scheduled for August 15, 2022.
Dated: August 12, 2022
For Plaintiff Optiwave Semiconductor Corp.:
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (State Bar No. 248316; USPTO Reg. No. 52,871) Omar Siddiqui (State Bar No. 291704) One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 773-5800 Facsimile: (415) 773-5801
Email: ango@calderwoodharkness.com
Email: osiddiqui@calderwoodharkness.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
For Defendant Lumos Photonics, Inc.:
BRANNICK HOWELL & STEIN LLP
By: ________
Victoria Ashworth (State Bar No. 264589) Daniel Kowalski (State Bar No. 278143) 555 California Street, Suite 2800 San Francisco, California 94104 Telephone: (415) 421-3200 Facsimile: (415) 421-3201
Email: vashworth@brannickhowell.com
Email: dkowalski@brannickhowell.com
Attorneys for Defendant Lumos Photonics, Inc.
CERTIFICATE OF SERVICE
I hereby certify that on August 12, 2022, I caused the foregoing JOINT CASE MANAGEMENT STATEMENT to be filed with the Clerk of the Court using the CM/ECF system, which will send notification of such filing to all counsel of record who are registered CM/ECF users. All counsel of record in this action are registered CM/ECF users, and service was accomplished by the electronic filing of this document.
By: ________
Alan Ngo CALDERWOOD & HARKNESS LLP Attorneys for Plaintiff Optiwave Semiconductor Corp.
OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation, | Case No. 5:22-cv-03417-EJD
Plaintiff, | JOINT CASE MANAGEMENT STATEMENT
v. | Filed pursuant to Civil Local Rule 16-2
LUMOS PHOTONICS, INC., a Delaware corporation, | Date: August 15, 2022
Time: 10:00 a.m.
Defendant. | Courtroom: 4, 5th Floor
Judge: Hon. Edward J. Torvelis
Event | Proposed Date
Exchange of Preliminary Claim Construction Contentions (Patent L.R. 4-1) | September 12, 2022
Exchange of Responsive Claim Construction Contentions (Patent L.R. 4-2) | October 3, 2022
Joint Claim Construction and Prehearing Statement (Patent L.R. 4-3) | October 14, 2022
Close of Claim-Construction-Related discovery | October 31, 2022
Opening Claim Construction Briefs | December 5, 2022
Responsive Claim Construction Briefs | December 19, 2022
Reply Claim Construction Briefs | January 9, 2023
Markman Hearing | January 30, 2023
Event | Proposed Date
Initial Disclosures (FRCP 26(a)(1)) | August 22, 2022 (completed)
Disclosure of Asserted Claims and Infringement Contentions (Patent L.R. 3-1) | Per Patent Local Rules
Preliminary Invalidity Contentions (Patent L.R. 3-3) | Per Patent Local Rules
Claim Construction Schedule | Per Section 6.3 above
Markman Hearing | January 30, 2023
Close of Fact discovery | To be set by the Court post-Markman
Service of Opening Expert Reports | To be set by the Court post-Markman
Service of Rebuttal Expert Reports | To be set by the Court post-Markman
Completion of Expert Depositions | To be set by the Court post-Markman
Deadline for Filing Dispositive Motions | To be set by the Court post-Markman
Pretrial Conference | To be set by the Court
Trial | To be set by the Court

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

CALDERWOOD & HARKNESS LLP

BRANNICK HOWELL & STEIN LLP

CERTIFICATE OF SERVICE

Record

Parties

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